Trademark Outline Professor: Wilson Fall 2011 INTRODUCTION *three ways to get TM protection 1.

Use the mark and get it registered as TM (Lanham Act) 2. File TM application with intent to use and later use it (Lanham Act) 3. Use it first, and show distinctiveness through secondary meaning (common law) I. Introduction 1. What is TM a. Lanham Act s45: The term TM includes any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown b. a symbol used in commerce to indicate the source of g/s to distinguish them from the g/s sold or offered by others c. Restatement (Third) of Unfair Competition: A TM is a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a persons goods and services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others. d. Sign for the company e. Marketing method f. Way of getting revenue g. Make good will with the customers with trust h. The triadic structure of the TM: 1) the signifier (the perceptible form of the mark; symbol), 2) the signified (the semantic content of the mark, such as the goodwill or affect to which the signifier refers; the good will, the reputation, the source of identification), 3) the referent (g/s, the actual product that the mark refers to) i. The signified and referent dont always go together, as a company sometimes want to get rid of a product because the product has bad response and dont want the consumers to associate the product with the company anymore ii. Sometimes, people buy a product without even knowing who the producer is, but because they like the product *Case: Mishawaka Rubber & Woolen MFG. Co. v. S. S. Kresge Co. (1942) (p.8) -law recognizes TM because consumers purchase goods based on the symbols -TM is a merchandising short-cut *Case: Yale Electric Corp.v. Robertson (2d Cir. 1928) (p.8) -a TM is the owners authentic seal that carries good will. If another uses the seal, he borrows the owners reputation, while the owner cant control the quality of the product sold under his name 2. What can be a TM a. It depends on the circumstances, but can be.. b. Logos (ex: Nike swoosh) c. Words (ex: droid) d. Containers (ex: Pepsi bottle) e. Sound (ex: NBC) f. Colors (ex: UPS) g. Fonts h. Fragrances i. Designs (ex: A&Fs fish pocket design) 3. Values of TM

a. TM can last indefinitely and often are a companys most valuable assets i. Compared to copyright and patent, which are not indefinite ii. In todays society, brand name has enormous power b. Each case is highly fact-specific, but the general rule is first in time, first in right (within the relevant geographic scope) c. The use and/or registration of a TM creates an exclusive right i. Size of right depends on how consistently and how effectively owner police and enforce its rights ii. Methods of dilution includes blurring, tarnishing, etc. if owner doesnt try to stop dilution and start doing so only years later, might be too late 4. TM timeline a. 1870: 1st federal statute providing TM registration b. 1879: the TM Act is struck down by The TM cases case c. 1905: TM used for interstate commerce d. 1946: enactment of the Lanham Act, later revised many times e. 1988: enacted Trademark Law Revision Act (TLRA) i. Introduces intent to use (ITU) for the first time, thus expanding section 43(a), which gives the owner of the unregistered TM to sue under the Lanham Act ii. Without ITU, company has to have already used the mark to register as TM. Now, bona fide intent to someday use the mark is okay iii. This gives companies more time to develop their product line f. 1995: enacted the Dilution Protection Act, now section 43(c) of the Lanham Act g. 2003: US joins the Madrid Protocol h. Enacted the Trademark Dilution Revision Act (TDRA), revising section 43(c) of the Lanham Act 5. The Lanham Act a. Section 1 i. Application of TM ii. Concept of use (s1a) and intent to use (s1b) iii. s1a3: statement of verification 1. Statement verifies that the owner is using the mark and that nobody else can iv. s1b: bona fide intent to use 1. owner is entitled to the mark if intend to use the mark, and nobody else can b. section 2 i. possible reasons for rejection of registration 1. s2a: immoral, scandalous 2. s2b: flag or coat of arms 3. s2c: name of a real person without his/her consent 4. s2d a. resembles a TM already registered, and therefore may cause confusion 5. s2e a. merely mis/descriptive b. primarily geographically mis/descriptive c. merely a surname i. have to show acquired distinctiveness over time (ex: McDonalds) d. functional 6. 2ef a. Can still register if can show that mark has become distinctive through investment of the mark (ex: marketing and advertising), or years of use in commerce (min of 5 years) c. Section 3: service marks d. Section 32: remedies

e. Section 43 i. s43a: civil action 1. not registered as TM 2. still protected as unfair competition ii. s43b: dilution iii. s43c: counterfeit f. section 45: definitions 6. Sources of TM Rights a. Long been recognized as common law, now recognized in fed law *Case: The TM cases (1879) (p.3) -issue: can Congress make legislation on TM under the US Constitution? (NO) -no authority under the Constitution -Article 1, Section 8, Clause 8 -to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries -not a discovery because any mark, including those that are not original and did not happen accidentally, can be a TM -rather, mark is TM when it has been used for a long time -commerce clause -to regulate commerce with foreign nations, and among the several States, and with the Indian tribes -apply strictly, so only authority if it applies on its face -no requirement under TM law that the owner must be engaged in commerce with foreign nations, among several States, or with the Indian tribes -TM law is common law, not statutory *Case: Hanover Star Milling Co. v. Metcalf (1916) (p.7) -TM is a property right -TM right grows out of use, not mere adoption -TM is treated for the protection of good will 7. Purposes of TM law a. 1)protect consumers: to protect the public so that it may be confident that, in purchasing a product bearing a particular TM which it favorably knows, it will get the product which it asks for and which it wants to get. Consumers are interested in the quality and characteristics associated with the source of the product. With TM infringement, consumers may be confused or deceived about the source of the goods. i. Today, TM shows not just the producer of the product, but other messages, personality, purpose, performance, preparation, properties, price, position and panache. TM helps consumers avoid risk in buying the wrong product, and assist the consumer in satisfying emotional, social and self-expressive needs, reduce the consumers economic and emotional costs of finding a product he wants, and provide a wider array of both product points and reasonable price points b. 2) protect rights owners: to ensure that where the owner of a TM has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its appropriation by pirates and cheats c. 3) economic efficiency d. Therefore, the primary interest of TM law is to make sure there is no likely confusion between two marks so that it confuses the consumers and lets one take the benefit out of anothers hard work (avoid free riders) e. This doesnt give the owner monopoly over the industry, because the mark must be distinctive to leave other options for the competitors f. TM is now a part of pop culture

i. Product placement: TM is a part of TV shows, they appear physically, made references to in the dialogue, woven into the story line, etc. ii. Presumptive placement: making people in the audience wear TM-marked clothes where theyre gonna be on TV a lot iii. Reality branding: using marketing device in a way that incorporates into real life experience. (ex: red bench with kit-kat logo all over) g. TM is now beyond source identification, it makes the good look better if its associated with a TM (ex: ring in Tiffanys box) II. Unfair Competition 1. Protected under s43a of the Lanham Act, even if not federally registered 2. Is a claim thrown in in almost all infringement cases *Case: International News Service v. Associated Press (1918) (p.12) -press company D cant take the works of another press company P just because the work was already published and is therefore now public information -because press company P has put labor, skill, and money to publish the work and D cant sell the information without doing any extra work -the use of the property should go to the one that fairly paid the price to produce it III. Copyright, Patent, vs. TM Copyright Protectable subject Works of authorship matter

Primary threshold for protection

Originality (but low standard)

Principal exclusions from protection How to acquire rights

Ideas, facts Automatic, once fixation in a tangible medium of expression Life of the author plus 70 years None

Utility Patent Any process, machine, manufacture, or composition of matter, or improvement thereof Novelty (high standard), nonobviousness, utility, and adequate disclosure Abstract ideas, products of nature Obtaining a patent from the PTO 20 years from filing

TM Any symbol or device that is capable of identifying the source of goods Distinctiveness

Functional matter, generic terms Using the mark in commerce As long as the mark is used and is distinctive None or Reg. U.S. Pat.& Tm. Off. (after registration), or TM or SM (before registration) Notice affects remedies

Duration Required formalities Form of notice

No rights prior to grant of patent (c) with year of patent or pat. And publication and name of patent number (after owner grant of patent)

Benefits of complying with optional formalities

Scope of principal rights acquired

Registration required to sue for infringement of U.S. works: notice and registration affect remedies Exclusive right to make copies of the work

Notice affects remedies

Right to exclude others from making, using,

Right to stop the unauthorized use of the

offering for sale, selling, or importing the invention International protection Protected without formalities in most countries (under the laws of the country in question) Obtained by securing rights on a country-bycountry basis, or through a centralized mechanism such as the Patent Cooperation Treaty or the European Patent Convention Specifically given authority (innovative conduct)

same or similar mark in ways that are likely to cause consumer confusion Rights obtained on a country-by-country basis, or through a centralized registration mechanism such as the Madrid Protocol

Authority of Congress under Constitution

Specifically given authority (innovative conduct)

Not specifically given authority, since is not innovative

IV. TM Registration and Infringement Processes 1. Registration Examiner (US Patent Trade Office, PTO) Trademark Trial & Appeal Board (TTAB) Court of Appeals for the Federal Circuit (CAFC) District Court Regional Circuit Court Cert. US Supreme Court *TMEP: describes the application of the Lanham Act, acts as guide for TTAB to determine registration 2. Infringement District Court Regional Circuit Court Cert. US Supreme Court

REGISTRATION I. federal registration 1. Before application a. Search if the mark or a similar mark has been registered already b. Go to TEAS online to determine basis i. s1a: use-based ii. s1b: intent to use based

iii. s 44 or 66: based on foreign application or registration 2. Procedure a. review done by examiners, to determine whether application is allowable i. genericness ii. functionality iii. use iv. s2 bars b. if pass, PTO publishes the application for the public, in the Official Gazette c. interested members of the public may initiate an administrative opposition before the PTO within 30 days of publication (with possible extensions) i. oppose if person believes he/she will be damaged by registration, or that the registration of the mark will cause damage as a result of trademark dilution ii. must provide concise statement of the reasons and the grounds for opposition d. if no opposition or pass, registered on principal register 3. after registration a. may display the mark with or equivalent words b. duration is 10 years c. on the 6th year, registrant must file s8b affidavit i. grace period of 6 months ii. confirming that the mark is in use iii. if not in use, affidavit must provide explanation, that it is because of special circumstances, and not because its abandoned iv. if not filed, is considered abandoned and registration is cancelled d. on the 10th year, registrant must file s9 renewal e. Members of the public may petition to cancel the mark later, under s14 i. Can be filed at any time after registration ii. If believe there is damage, including as a result of dilution iii. Basis can be genericness, functionality, abandonment, fraud in obtaining the registration, violation of Section 4, or Section 2a, b, or c 4. principle register a. provides notice to the public of the existence and nature of the claim of rights b. constitute a prima facie evidence of i. the validity of the registered mark and the validity of the registration ii. the registrants ownership of the mark iii. the registrants exclusive right to use the registered mark in commerce on or in connection with the products specified in the registration c. owners dont have to prove nonfunctionality 5. supplemental register: s23 a. marks that are more than generic, and therefore capable of distinguishing the applicants products from those of competitors b. but not enough secondary meaning to go onto the principle register 6. the application a. each mark must have its own application b. provide list of the particular products the owner uses the mark c. drawing of the mark d. filing bases i. actual use ii. bona fide intention to use iii. claim of priority iv. registration of a mark in the applicants country of origin v. request for extension of protection (from Madrid Protocol)

e. specimen showing the use of the mark i. specimen must be a label, tag, or container of the goods, or a display associated with the goods. Must be evidence of how the mark is presented to consumers and verification that the mark is in use 7. disclaimer a. Lanham Act s6 b. Unregistrable components of an otherwise registrable mark c. To allow registration of the composite mark without creating false impression that the applicant is claiming exclusive right in any of the nonregistrable components in isolation 8. Duty of candor a. When file application, owe the Office duty of candor b. Violation may lead to fraudulent procurement, and registration may be cancelled II. Exclusions 1. 2a: scandalous, disparaging a. consists of or comprises immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute b. Definitions i. Scandalous means giving offense, shocking, disgraceful, offensive, disruptable ii. Disparaging means dishonor, degrade, affect, or injure persons, living or dead, institutions, beliefs, or national symbols c. Consider whether a mark fits the definition i. Consider 1. The relationship between the prohibited matter and the mark in its entirety 2. The product and the manner in which the mark is used in the marketplace ii. Intent does not matter either way iii. Possible evidences 1. The affected peoples opinions and surveys 2. Linguists testimony on the origin, use, etc. of the word 3. Dictionary definition 4. Historians testimony iv. Look whether the prohibited matter fits the words meaning at the time of registration, not now d. Standard i. Easier standard for disparaging than scandalous for the oppose because its may disparage e. Exception: having secondary meaning does not make it registrable *Case: Harjo v. Pro-Football Inc. (TTAB 1999) (p.328) -applying the definition to the mark -consider whether substantial composite of Native Americans see the mark as offensive, not the general public 2. 2a: deceptive marks a. 3 prong test i. Is the term misdescriptive of the character, quality, function, composition or use of the goods? ii. Is so, are prospective purchasers likely to believe that the misdescription actually describes the goods? iii. If so, is the misdescription likely to affect the decision to purchase? b. Burden of proof i. First on PTO to prove that the mark falls under the 3 prong test ii. Next on the registrant to overcome unregistrability c. Deceptive (2a) vs. descriptive (2e) i. Misdescriptive is not always deceptive d. Exception: having secondary meaning does not make it registrable

*Case: In Re Budge Manufacturing Co., Inc. (Fed. Cir. 1988) (p.343) -deceptive mark looks at the mark, not the explanatory statements in advertising or labels on the product 3. 2e: geographic marks a. Basis i. 2e2: primarily geographically descriptive 1. Because it would be difficult for competitors to accurately describe goods and services from the same origin 2. The origin is not the source. Origin is the geographic region. Source is the manufacturer ii. 2e3: primarily geographically deceptively misdescriptive 1. Because the good doesnt really come from that geographic region b. 3 prong test (for both) i. The primary significance of the mark is geographic 1. Not if the geographic term is obscure or remote ii. Purchasers would be likely to make a goods/place or services/ place association, i.e., to think that the goods or services originate in the geographic place identified in the mark iii. The mark identifies the geographic origin of the goods or services c. Exception i. For 2e2, if mark has secondary meaning, it can still be registered ii. There is no such exception for 2e3. Its a permanent bar *Case: Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc. (6th Cir. 1989) (p.348) -primarily geographically descriptive -most geographical names or terms are generic or descriptive -will be unfair to make it TM, and preclude other producers of the same product in the same region from indicating the products origin -is okay if the term is minor, obscure, remote, or unconnected with the goods -ex: World, European, etc. *Case: In Re California Innovations, Inc. (Fed. Cir. 2003) (p.353) -primarily geographically descriptively misdescriptive -goods-place association requirement -public associate the good in question with the place identified by the mark -need more than merely primary geographic connotation -not based on the fame or exclusivity of the place name -focus on public deception 4. 2e4: name marks a. Excluded if is primarily merely a surname i. Rationale: the primary significance of a surname is to identify an individuals family name, not the source of a product b. Factors (not surname if..) i. Surname is rare 1. Look at phone books to see how rare/common ii. Anyone connected with applicant has the involved term as a surname iii. The term has other recognized meaning 1. Look at dictionary and other documents iv. Term has the look and feel of a surname c. Exception i. If acquire secondary meaning ii. Not surname if the term consists of two surnames (ex: Abercrombie & Fitch) 5. 2a: living/dead individual a. 4 prong test i. Mark is same as or has close approximation of the persons previously used name or identity ii. The mark (or a part of it) would be recognized as such

iii. Person in question is not connected with the goods or services of the applicant iv. Persons name or identity is of sufficient fame that when it is used as part or all of the mark on applicants goods, a connection with that person is likely to be made by someone considering purchasing the goods b. If under 2a, must have consent (2c) c. No exception, having secondary meaning will not help *Case: In Re Sauer (TTAB 1993) (p.366) 6. 2f: secondary meaning exception a. If excluded under 2a, b, c, d, e3, e5, cant be registered even with acquiring secondary meaning b. If excluded under other subsections, can be registered if acquire secondary meaning later i. This is done if the mark is distinct for the applicant in the goods in commerce III. incontestability 1. Purpose: to encourage owners to cultivate goodwill in building their TM and to protect marks that are vulnerable to cancellation due to being insufficiently distinctive to maintain registration 2. When? s14 a. Registered mark has been in continuous use for 5 years since registration b. AND remains to be in use at the time when incontestability is being claimed 3. How? s15 a. 1) there is no final adverse decision to the registrants claim of ownership of the TM, b. 2) there is no pending proceeding involving the rights of the TM, c. 3) affidavit is filed to PTO director verifying 5 years of continuous use, d. 4) TM is not generic 4. Incontestability means..: s33b a. TM is valid b. Registrants ownership is proved c. Owner has exclusive right to use the TM 5. If incontestable, cant be challenged on the basis of a. Being descriptive b. For lacking secondary meaning c. Being Primarily geographically descriptive d. Being primarily geographically deceptively misdescriptive e. Not an exclusive list 6. Exceptions: 3rd party can still cancel an incontestable mark if a. s14(3), (5), and still contestable prior use b. s14(3): is generic, functional, abandoned, and fraudulently obtained i. fraudulently obtained means that the registrant lied to the PTO during registration. It doesnt include the error on the part of the PTO or that the mark is primarily geographically deceptively misdescriptive c. s2a, b, c i. immoral, deceptive, or scandalous ii. false connection with person, living or dead iii. adversarial to beliefs *Case: Park N Fly, Inc. v. Dollar Park and Fly, Inc. (1985) (p.372) -incontestability -encourages owners to cultivate good will with the mark *Problems. After a mark becomes incontestable, can you still challenge it.. 1. as primarily geographically descriptive? No 2. as primarily geographically deceptively misdescriptive? No 3. as falsely suggesting a connection to a dead person? yes (based on sec2c, names of an individual, not because its fraud)

4. as primarily merely a surname? No (this is 2e4, not on the list) 5. as scandalous mark? Yes (2a)

DISTINCTIVENESS I. spectrum of distinctiveness 1. distinctiveness: the tendency to identify the goods sold as emanating from a particular, though anonymous, source 2. The Abercrombie Test a. Abercrombie & Fitch Co. v. Hunting World, Inc. (2d Cir. 1976) (p.47) b. (not distinctive) Generic - descriptive suggestive arbitrary or fanciful (distinctive) c. Two ways to be distinctive i. Inherently distinctive: its intrinsic nature serves to identify a particular source (suggestive, arbitrary, fanciful) ii. Acquired distinctiveness: descriptive mark can acquire distinctiveness through secondary meaning (descriptive + secondary meaning) d. When is it used i. When mark is not registered but P asserts TM protection ii. Registered mark owner sues D, and D challenges Ps marks distinctiveness in defense iii. When applying strength of mark factor from the likelihood of confusion test Abercr Definition TM protection? Examples ombie Test Generi -s2f: a term that is the No. nylon, c essence, or the basic nature -Can be cancelled later if becomes generic later. yoyo, of the particular product Its a weird situation because a company wants aspirin -s14c: genericide a mark to be popular and famous so that you get TM right, but you dont want the people to use the term too much as a common term for the type of product so that it makes the mark generic and thus you lose the TM right. Descri s2e: describes some feature -Yes, ONLY if acquire distinctiveness by getting All ptive or aspect of the product secondary meaning, which means that the surnames, primary significant of the mark is to link the visioncente product with the source, rather than the r product itself -may only be registered on the supplemental register. This gives notice to others of your intent to acquire secondary meaning or distinctiveness later -balance the hardships to a competitor in hampering the use of an appropriate words, and those of the owner who has invested money and energy to endow a word with the good will adhering to his enterprise, would be deprived of the fruits of his efforts sugges The term suggests, rather Yes, inherently distinctive Kleenex, tive than describes the walmart, characteristic of the good, tide and thus requires imagination to link the TM to

the good Arbitr There is no association Yes, inherently distinctive Adidas, ary between TM and product, apple for fancif and the term is applied computer ul unfamiliarly. 3. Generic a. 1) ab initio: generic inherently, by virtue of the relationship between product and mark b. 2) genericide: A term becomes very famous and later generic due to widespread use or common use by a substantial majority of the public c. anti-dissection rule: look at the mark as a whole, not its individual parts. Generic words can combine with generic words to become non-generic *Case: In Re Oppedahl & Larson, LLP (fed. cir. 2004) (p.52) -top level domain indicator (TLD) -ex: .com -serve no source-indicating function. Just adding it to an otherwise unregistrable mark typically does not make it registrable - consider whether the mark as a whole has a source-indicating function *Case: Filipino Yellow Pages, Inc. v. Asian Journal Pubs, Inc. (9th Cir. 1999) (p.68) -tests for generic -who-are-you/what-are-you test: if the mark answers the question who are you, then is not generic, if answers what are you, then generic -primary significance test: does the mark identify the source (not generic) or the product (generic) -anti-dissection rule: words which could not individually become a TM may become one when taken together (from Surgicenters case) -generic + generic = maybe non-generic -less generic if two words are combined into one (ex: surgicenter) -less generic if the mark is a phrase than a compound word (ex: American Society for Reproductive Medicine) d. why no TM protection? i. They are incapable of indicating a particular source. So registering them would grant the TM owner monopoly over the product because competitors cant label goods as what they actually are e. evidences taken into consideration i. survey, online search results, or other direct evidence showing how the term is understood by the consuming public (ex: newspapers, magazines) ii. dictionary definitions iii. use of the term by competitors to refer to the g/s iv. decisions of PTO and TTAB f. burden of proof i. if the mark is registered, D has the burden of proving genericness ii. if the mark is not registered, and D argues genericide, P has the burden of proving nongenericness iii. but if the mark is not registered, and the term that was invented by P is used by the public and became generic, the burden is on D (from case below) *Case: Haughton Elevator Company v. Seeberger (Commr. Pat. 1950) (p.74) -genericide -look at how the company treats the term in documents and advertisements -if used in lower case letters, more evidence that the term is now generic *Case: Murphy Door Bed Co. v. Interior Sleep Systems, Inc. (2d Cir. 1989) (p.75) -burden of proof -as general rule, if mark is unregistered, P has burden of proving that mark is not generic. But if P invented the term and it is used by the public, then the burden shifts to D to prove that mark is generic

-unfair competition -provides more protection to mark owner than TM infringement -even if not TM infringement, if the mark is likely to cause confusion regarding sponsorship and affiliation, then owner can be recovered -if D used the term intentionally to attract consumers, then unfair competition *Case: Mil-Mar Shoes Co., Inc. v. Shonac Corp. (7th Cir. 1996) (p.71) -generic -dictionary definitions -when looking up the term in the dictionary, the meaning that the term is used for does not have to be the primary definition to be generic -the question is whether the term is being used in a common and generic sense, not whether the particular use represents the most common use of the term -if term is widely used by competitors, it means the public commonly recognizes the term to refer to the type of products -doesnt matter if the term is spelled uniquely as long as the term retains the meaning (ex: light vs. lite) -doesnt matter if the term is used as a noun or an adjective, can both be generic (ex: Shoes Warehouse vs. Warehouse Shoes) 4. Descriptive *Case: Zatarains, Inc. v. Oak Grove Smokehouse, Inc. (5th Cir. 1983) (p.56) -distinguishing suggestive from descriptive -tests -1) dictionary: look up definition of the word -misspelling of a word is irrelevant -2) imagination test: measure relationship between the actual words of the mark and the product. If term required imagination, thought and perception to reach a conclusion, its suggestive. If term is so close and direct that even a consumer unfamiliar with the product would have an idea of its function, its descriptive -3) competitors need test: whether competitors would likely need the term to describe their product as well -4) competitors use test: actual use by others to market a similar product -secondary meaning -descriptive terms need secondary meaning to be TM -means that the mark has become distinct as a result of its use and prospective purchasers have come to perceive it as a TM that identifies the goods or service of a single source -look at the consumers attitude toward the mark -direct evidence: survey -circumstantial evidence: amount and manner of advertisements, volume of sales, etc. II. Nonverbal identifiers 1. role as source-identifier a. decorative features dont identify sources b. mark can be a source-identifier if i. 1) inherently distinct, or ii. 2) by acquired distinctiveness 1. for ornaments, this can be done by 1) secondary meaning or 2) by acquired distinctiveness. These two usually means the same thing, but not for ornaments) 2. tests a. Seabrook test (from Seabrook Foods, Inc. v. Bar-Well Foods (C.C.P.A. 1977) i. Inherent distinctiveness if unique or unusual in a particular market, but not if of common basic shape or design ii. Applies to non-verbal marks b. TEMP 1202.03: refusal on basis of ornamentation

i. Applies to words, designs, trade dress, etc. ii. Not TM if merely decorative iii. Consider the size, location, and prominence on the goods 1. Ex: strawberry in the front of a shirt is ornamental and so not TM, but strawberry on the edge of pocket may be TM 3. trade dress a. definition: the total image of a product, plus may include features such as size, shape, color, color combination, texture, graphics, or even particular sales techniques b. s43(a): P seeking to protect trade dress must prove that i. the trade dress of the two products is confusingly similar ii. the features of the trade dress are primarily non-functional iii. the trade dress is inherently distinctive or has acquired secondary meaning (not both) 4. Continuum for ornamental matter and registration a. Identify a secondary meaning (registrable on Principle Register) b. Has acquired distinctiveness (registrable on Principle Register) c. Capable of obtaining TM significance (registrable on Supplemental Register, and after 4-5 years of use, can apply again to be on Principle Register with acquired distinctiveness) d. Purely ornamental and incapable of TM significance (unregistrable on either Register) 5. Special treatment a. Logos, letters, trade dress, product packaging: Seabrook test i. If something is at the border of product packaging and product design, err on being product design and require secondary meaning b. Color, product design: cant be inherently distinct, so requires secondary meaning c. Product packaging vs. product design i. Product packaging can be registered if inherently distinct or have acquired distinctiveness, but product design can never be inherently distinct and therefore have to have secondary meaning to be registrable ii. Why? The purpose of product packaging is to identify the source. Product design is not, its to make the product itself more useful or more appealing iii. Sometimes, its not clear whether something is product packaging or product design. If so, court should err on the side of caution and classify as product design, thereby requiring secondary meaning *Case: Star Indus., Inc. v. Bacardi & Co., Ltd. (2d Cir. 2005) (p.94) -shape or letters -not inherently distinct if is of common basic shape -is inherently distinct if is stylized, and so not commonplace but rather unique or unusual in the relevant market -can be stylized on the basis re: shading, border, thickness, font, etc. -may separately be a TM, apart from other parts of the logo -even if a mark is registrable, if it barely passes the threshold, then there can be less protection. For example, could be that the mark is registrable as TM but theres less right to recover from infringement *Case: Two Pesos, Inc. v. Taco Cabana, Inc. (1992) (p.98) (trade dress) -trade dress is the same as trademark -if inherently distinctive, then dont need to show secondary meaning *Case: Qualitex Co. v. Jacobson Products Co., Inc. (1995) (p.105) (color) -color only can be TM but not by being inherently distinctive -scope of TM protection is broad, it includes color -color can act as a source-identifier like other marks -however, color cant be inherently distinctive, and therefore must show secondary meaning or acquired distinctiveness *Case:Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000) (p.114) (product design) -product design can be TM but not inherently distinctive

-like color, product design is never inherently distinctive -product design is never just a source-identifier, it has a function, being more appealing to customers, as well -needs to have secondary meaning to be TM

FUNCTIONALITY I. functionality (Lanham Act s2e5, 2f, 23c, 14(3), 33b8) 1. Purpose a. Prevent inhibition of legitimate competition b. Better products c. Economical for competitors to make products 2. Source a. Started in the courts b. Lanham Act doesnt have a definition or test, but s2e5 c. Courts and PTO require that the mark is nonfunctional 3. General rule a. Primary/Traditional test: functional if is essential to the use or purpose of the article or affects the cost or quality of the article (focus on necessity) (from Inwood Laboratories, Inc. v. Ives Laboratories, (1982)) b. Secondary test: look at Qualitex 3 factors and then Morton-Norwich 4 factors (focus on alternatives) (they are consistent with each other) c. If functional under the primary test, dont even get to apply the secondary test, its functional. But if not functional under primary test, still have to be not functional under the secondary test 4. Burden of proof a. When making an opposition before the TM office i. Initial burden on opposer to show prima facie functionality ii. Burden shifts to applicant to show nonfunctionality, namely that its ornamental, incidental, or arbitrary aspect of the device b. When TM infringement case for unregistered mark i. TM owner has burden to show nonfunctionality c. When TM infringement case for registered mark i. D has burden to show functionality *Case: In Re Morton-Norwich Products, Inc. (C.C.P.A. 1982) (p.158) -mark must be nonfunctional -theres a fundamental right to compete through imitation of a competitors product, which can only be temporarily denied by the patent or copyright laws -nonfunctional -means not having a utility. Often, the question is how much utility -utility means superior in function or economy of manufacture where superiority is determined in light of competitive necessity to copy -basic idea is whether protection against imitation will hinder competitor in competition -factors that determine functionality -1) is there a utility patent disclosing the utilitarian advantages of the design? -2) are there advertising materials in which the originator of the design touts the designs utilitarian advantages? -3) are there a number of comparable alternatives to the product in question? -4) is the design manufactured in a simple or cheap method? -if the answer is yes, then hint of being functional *Case: Qualitex Co. v. Jacobson Prods. Co., Inc. (1995) (p.176) (color) (secondary/competitive necessity test) -functionality -TM is not like patent where the law provides monopoly. TM lasts forever

-color can be functional or nonfunctional -factors that determine functionality -1) essential to use or purpose of the article -2) affects cost or quality of the article -3) exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage (e.g., aesthetics, increased cost for manufacture) *Case: Traffix Devices, Inc. v. Marketing Displays, Inc. (2001) (p.195) -effect of expired patent on functionality -prior patent is strong evidence of functionality and the P has heavy burden of proof -functionality -once deemed functional, then doesnt matter if there are other alternatives available -alternatives available is one of the factors when determining functionality, but not the dispositive one *Case: Valu Engineering, Inc. v. Rexnord Corp. (Fed. Cir. 2002) (p.202) -applies 4 M-N factors, Traffix, Inwood -utility -if feature is functional in one significant application, but not functional in other applications, still functional *Case: Eppendorf-Netheler-Hinz GmbH v. Ritter GmbH (5th cir. 2002) (p.208) -start with the traditional test (essential?) and then go to the secondary test (alternatives) -so, if is essential for the product, then is functional and so not TM even if there are alternatives available *Case: Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters (6th Cir. 2002) (p.214) -applying the traditional test -whether trade dress protection for a products feature would hinder the ability of another manufacturer to compete effectively in the market for the product -applying the secondary test -whether trade dress protection of certain features would nevertheless leave a variety of comparable alternative features that competitors may use to compete in the market *Case: Au-tomotive Gold, Inc. v. Volkswagen Of America, Inc. (9th Cir. 2006) (p.217) -applying primary and secondary tests -normally, if functional after primary test because the feature is essential to the product, then the court doesnt apply the secondary test and its still functional. But if the function is aesthetic, then you do apply the secondary test

Use I. use in commerce 1. Role a. So TM is under Congresss Commerce Clause b. Determines the owner by looking at who used it first c. Matters not just in creation of TM right, but loss of right if there was absence or neglect 2. Purpose a. Doesnt protect the purpose of TM, which is to protect the consumers, if a mark is registered but not used b. The focus is therefore on whether the consumer recognize the use 3. Commerce Clause a. Construed broadly b. Is under the Congress authority under the Commerce Clause not only when the good physically crossed state borders, but has an impact on interstate commerce c. Listing of a business on Internet website is interstate 4. First to Use a. For common law, actual use was required

b. For registered rights under Lanham Act, actual use or constructive use is required 5. Lanham Act a. s1a1: use in commerce b. s1b1: intent to use and then later use i. Show bona fide intent to use the mark with signed declaration included in the application to PTO ii. Then eventually use it iii. After use, register it iv. When A files intent to use, and later B uses it, A gets the mark only if A actually uses the mark eventually c. Types of uses: s45 i. Actual use: bona fide use of the mark in the ordinary course of trade/actual use by person ii. Constructive use: a person has a bona fide intention to use in commerce to identify her goods from those manufactured or sold and to indicate the source of good, even if that source is unknown II. actual use 1. When is there actual use? s45 (1) and (2) a. Goods i. (A) if the mark placed on a good or otherwise associated with the good 1. On the good, on the container, displaced with, on tag or label, or on documents associated with the goods ii. (B) when goods are sold or transported in commerce 1. Ex: transported to 3rd party distributor, promotions or market testing to 3rd parties, dont have to have profit to be sold 2. Not: intra company transport, advertising without more, de minimis b. Service i. Displayed in the sale or advertising of services, and the service is rendered in commerce c. Why different? i. Advertising is use for service, but not goods. For goods, the mark has to be associated with the good in a more direct way than advertisement 2. Test to establish prior use (Mendes test) a. First, adoption of the mark b. Second, use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark i. Use totality of circumstances analysis ii. Actual sales is not necessary 1. Could be distributed for free, transported to a 3rd party distributor, used for promotions, market testing 2. But cannot be intracompany transport 3. Franchiser-franchisee transport is probably OK iii. Dont need wide public recognition. Secret, undisclosed internal shipment is okay *Case: Planetary Motion, Inc. v. Techsplosion, Inc. (11th Cir. 2001) (p.238) -Applies the Mendes test III. Intent to Use 1. Why a. Sometimes, providing actual use is a burdensome precondition for acquiring TM rights b. Congress wanted to eliminate the requirement that future TM-holders must use the mark in commerce before even filing for an application for the PTO

c. Congress changed the rule so that applications to file for registration based on an intent to use a mark in commerce and providing that registration would be contingent on the intent to use maturing into actual use 2. Lanham Act, s1b a. the ITU filing date establishes priority date for use if i. registration is later perfected by a person with verified statement of use ii. used within 6 months from date of PTOs notice of allowance (can be extended for up to 2.5 more years for good cause) b. ultimately, have to start using within 4 years after submitting file i. filing takes 9 months-1 year ii. have up to 3 years to show use (6 months + 2.5year extension) c. if fail to use later, can refile ITU (where the priority date starts all over again) or just let it go d. go on principal registration if later fulfill the use requirement e. s7(c): before fulfilling the use requirement, the mark is considered constructive use , conferring a nationwide right of priority in connection with the goods and services specified i. this means that if you filed ITU and another person starts using it and tries to register before you fulfill the use requirement, you get to stop the other person from using and registering, but only if you do later get to register by using *Case: Warnervision Entertainment Inc. v. Empire of Carolina, Inc. (2d Cir. 1996) (p.261) -if A has filed intent to use and hasnt used the mark yet, and B uses it first, B cant stop A from using the mark later because that would defeat the whole purpose of having the ITU privilege 3. effects of being on the supplemental register a. does not serve as nationwide constructive notice of registrants claim of ownership b. does not constitute prima facie evidence of the validity of the registered mark, or the registration of the mark, or the registrants ownership of the mark, or the registrants exclusive right to use the mark c. but does allow the registrant to sue in federal court under s32 d. can be cited by an examiner against the registration of a similar mark for a related product e. still better to sue under supplemental register than under common law 4. ITU application for a descriptive term a. Double the trouble because no use and descriptive and therefore requires secondary meaning b. Can be amended from ITU to registration on the supplemental register after use, by submitting verified statement of use i. The priority date will then be changed from the ITU filing date to the statement of use filing date c. Can be refilled to be on the principal register after proof of secondary meaning i. The priority date will then change back to the ITU filing date *Problem 4-1 -Z uses the mark in January 2002, Y in November 2002. In January 2002, court says the mark is descriptive -since the mark is descriptive, whichever one that acquires secondary meaning first gets the right IV. Surrogate Use 1. Becomes an issue when the TM creator and user are not the same entity or person 2. s5 related companies a. if first used by A where A is controlled by B, the registrant or applicant for registration ,B gets the benefit too b. s45 has definition of related company, which requires showing of a substantial relationship between using the entity and the controlling entity c. in licensor and licensee relationships, if the license agreement provides for adequate quality control on the part of the licensor, licensee usually also gets to use it 3. Creator cant use TM if he doesnt own it *Case: The Boogie Kings v. Guillory (La. Ct. App. 1966) (p.279) -creator of a band leaves the band later and gives the right to someone else to start a new group with the name

-even if the creator made the band and the band name, he abandoned it when he left the band -the TM was with the band, not the creator -unincorporated organizations can have TM rights 4. Surrogate use by the public a. When the public uses a variation of the name of TM, the variation is protected as if it was the TM itself b. Rationale: surrogate use is justifiable when the public can identify or recognize a variation of the TM as a source identifier. If the source is not recognized with the variation, then the surrogate use of TM is not justified *Case: Coca-Cola Co. v. Busch (E.D. Pa. 1942) (p.283) -company never advertised or used the word Coke, but it is referred to as Coke by consumers -the burden of proof is on Coca-Cola, to show, by preponderance of evidence, that the use of the word Coke by the purchasing consumers entitled the company exclusive use, that the term Coke is used solely for Coca-Colas products -since the right arose out of the consumers wide use and the purpose of TM is to protect the consumers, see if the consumers use it to refer to the companys products only V. Abandonment 1. TM owner must continue to demonstrate use or at least control over use to keep the right 2. Abandonment is an affirmative defense for TM infringement or cancellation, even if the original owner resumes use in commerce later. Once abandonment happens, it enters public domain and can be registered by anyone, including the original owner or someone else 3. Two types, s45 a. Non-use: use has been discontinued with intent not to resume such use b. Uncontrolled use: when the owner cause the mark to become generic by not controlling the general publics use of the mark 4. Non-use abandonment a. Burden of proof i. First on the non-owner to show prima facie case of abandonment 1. 1) Show non-use of the name by the legal owner and a. Non-use of 3 consecutive years alone is enough 2. 2) no intent to resume use in the reasonably foreseeable future ii. Then shift to the owner to produce evidence of either 1. Actual use during the relevant period 2. Or intent to resume use in a reasonably foreseeable future *Case: Emergency One, Inc. v. American Fireeagle, Ltd. (4th Cir. 2000) -actual use -repair and recycling services of the product counts only if the documents produced because of the service had the TM mark -intent to reuse -depends on the products life (ex: long for fire trucks) 5. Uncontrolled use abandonment a. Happens often in franchising or licensing relationships b. Naked licensing is one of the types 6. naked licensing a. when licensor allows licensee to use the mark on any quality or type of good the licensee chooses. Licensor fails to exercise reasonable control over the use of the mark by the licensee that the TM no longer identifies products under the control of the mark and the mark stops providing a meaningful assurance of quality b. rationale: if a TM owner allows licensee to depart from his quality standards, the public will be misled and the TM will cease to have utility as proper source identifier c. test for whether naked licensing = abandonment i. look at the terms of the license for any quality control provisions

ii. look at the licensors actual actions to police the licensees use 1. licensor must have taken reasonable steps to prevent misuse by licensee (contracting for a 3rd party to do the policing also counts) iii. defense: licensor justifiably relied on licensee for quality control if there is some special relationship between the parties 1. special relationship exists when there is a close working relationship between the two parties or where the licensor is familiar with the quality control practices of the licensee *Case: Stanfield v. Osborne Industries, Inc. (10th Cir. 1995) (p.302) -naked licensing -because licensor did not make any contact with licensee for awhile *Case: University Book Store v. University of Wisconsin Board of Regents (TTAB 1994) (p.309) -naked licensing -University gets to register the logo even though it didnt prohibit others from using it for awhile because there is no evidence that the logo was being used on poor quality merchandises and therefore harming the reputation -special in this case because University has interest in supporting the college-town community

GEOGRAPHIC LIMITS I. under common law rights (apply both this and fed law) 1. Tea Rose Doctrine (From Hanover Milling case) a. good faith remote junior user i. A starts business first in area a. B starts business later in area b. B has TM in area b over A if A later enters market b. ii. A is senior user and B is junior user in the national level, but B gets TM over A in its established area and can stop A from using the mark in that area iii. But only if Bs use was in good faith 1. Majority of courts say knowledge of As existence negates good faith of junior user. This rule creates a duty on B to investigate and does not allow willful ignorance 2. Minority of courts say knowledge is just one factor to consider good faith. It is possible that B knew about A but A has been doing business in a remote locale for years without expansion *Case: United Drug Co. v. Theodore Rectanus Co. (1918) (p.383) -geographic limits -TM right doesnt extend to areas with no trade -because it is possible that two manufacturers in different markets separately used the same mark without knowing about each other and in good faith -each gets TM right in its own market/region II. Under Federal Law 1. Territoriality rule a. First use for US registration looks at use in US only i. May be a problem if two companies start using the mark in different regions of the country b. Well-known mark exception i. From Paris Convention, which US is a member ii. Art 6bis: no TM if liable to create confusion because the mark is well known in another member country iii. 2-prong test 1. Secondary meaning 2. Substantial percentage of consumers in the relevant American market is familiar with the foreign mark

a. Factors i. Intentional copying ii. Consumer confusion iii. None are dispositive iv. Some courts accept this exception, some dont. the trend is not to accept *Case: Persons Co., Ltd. v. Christman (Fed. Cir. 1990) (p.399) -geographic limits -foreign use has no effect on US registration -junior users knowledge of prior use of a similar mark in a foreign country is not enough to establish bad faith. There is bad faith if -1)the foreign mark is famous -2) or the use is a nominal one made solely to block the prior foreign users planned expansion into the US 2. Market penetration test a. In order for senior user to establish priority use over junior users good faith use in junior users region, senior user must prove that it has penetrated the junior users geographic market i. The penetration must be significant enough to confuse the consumers of that area. more than de minis b. Factors i. Number of senior users customers in the region compared to the population of the whole region ii. Relative and potential growth sales iii. Length of time since significant sales iv. Extensive advertising v. Consumer recognition *Case: Down Donut Co., Inc. v. Harts Food Stores, Inc. (2d Cir. 1959) (p.389) -geographic limits -senior user cant prohibit junior user from using the mark until senior user actually expands business into junior users established area -not overruled, but having less and less influence *Case: Grupo Gigante v. Dallo & Co., Inc. (9th Cir. 2004) (p.403) -geographic limits -territorial principle: priority of use in US depends on first use in US, not anywhere else -exception: well-known mark -if foreign mark is famous in US -to prevent consumer confusion and fraud -rule: need evidence that substantial percentage of consumers in the relevant US market (where D uses the alleged infringing mark) is familiar with the foreign mark and whether customers of America are likely to think they are patronizing the same firm that uses the mark in another country -also under Article 10bis of Paris Convention *Case: ITC Limited v. Punchgini, Inc. (2d Cir. 2007) (p.410) -no such thing as well-known exception -origin of the exception is state common law, not federal law -there is no such exception in the Lanham Act -doesnt matter that the exception is in TRIPS because the treaty is not self-executing and doesnt have direct influence in US 3. reasonable zone of expansion a. Senior users established area is not limited strictly to the customers in the territory, but a zone of expansion where the customer base can reasonable expend to b. Accepted by majority, but not all, jurisdictions c. Factors i. How close are the two geographic regions?

ii. Is it reasonable that senior user will expand its business to the junior users industry?

III. Extraterritoriality 1. Authority of Congress controlling the trade activities outside US a. Depends on whether the activity is done by US citizen or not 2. Congress have extraterritoriality jurisdiction only if Ds use of the mark has substantial effect on foreign or interstate commerce of the US *Case: Steele v. Bulova Watch Co. (1952) (p.438) -extraterritoriality -Congress has power to regulate trade activities by US citizens, even if the activity is outside US -activity of US citizen right outside the border of US-Mexico can flow into the US and have effect in US commerce *Case: Vanity Fair Mills, Inc. v. T. Eaton Co. Ltd. (2nd Cir. 1956) (p.440) -extraterritoriality -trade activity occurs not where the deceptive labels are affixed to the goods or wrapped, but where the deceived customer buys the good -different from Steele case because here, the D is a foreign nationale and in Steele, it was a US citizen *Case: Sterling Drug, Inc. v. Bayer AG (2d Cir. 1994) (p.446) -apply Steele if the Ps claim is modest: for limiting foreign uses that reach US -apply Vanity Fair if Ps claim is an absolute bar against a corporation *Case: McBee v. Delica Co. (1st Cir. 2005) (p.448) -US court has jurisdiction only if the infringement creates confusion in US, and sufficient effect on US commerce -that the company has a website and that the website is accessible in US doesnt make it effect -need more interaction

Ps TM INFRINGEMENT CLAIMS CONFUSION I. trademark infringement claim 1. Basis a. If TM is registered, under s32 i. Not just confusion to source, but also confusion, mistake, or deception b. If not registered, under s43a i. Also confusion, mistake, deception as to affiliation, connection, association, approval, origin, sponsorship c. The theory is the same for both 2. Basis for TM registration a. PTO and TTAB: s2d i. Narrower than standard used in court b. Court: give PTOs findings based on s2d substantial weight, unless new evidence is presented 3. Claim a. P must prove i. It owns the asserted mark ii. D used the TM in commerce iii. Ds use of the mark to identify goods or services is likely to create confusion b. If TM is registered, proving validity of the mark is easy *Case: Borden Ice Cream Co. v. Borden Condensed Milk Co. (7th Cir. 1912) (p.460) -confusion -the purpose is not consumer protection, but TM right owner protection

-therefore, have to consider whether the property right of the company is jeopardized -there is no confusion if the two companies dont deal with the same kind of goods and therefore there is no competition *Case: Fleischmann Distilling Corp. v. Maier Brewing Co. (9th Cir. 1963) (p.463) -confusion -there may be infringement even if there is no overlap of products between the two companies -on the basis of Lanham Act -confusion is not just whether the consumers will be confused about the source of the product, but also the connection, association, sponsorship -look whether the Ds products are likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods and services -focus on probable confusion, not actual confusion -look at the average purchaser who only has general impressions to guide purchasing decisions -P doesnt have to prove that D had the intent to confuse the consumers. But if the D did have such intent, then there is inference of likelihood of confusion since Ds act was done expecting confusion and therefore profit II. use requirement: s45 1. Commercial use only a. Not if its a website to criticize or comment on Ps products 2. Must have been the actual TM *Case: Holiday Inns, Inc. v. 800 Reservations, Inc. (6th Cir. 1997) (p.470) -use -requires Ds use of protected mark, not a term that resembles protected mark -no confusion if D used already existing confusion to get profit, not produce confusion *Case: 1-800 Contacts, Inc. v. WhenU.Com, Inc. (2d Cir. 2005) (p.475) -use -not use if TM wasnt on the website anywhere *Case: Rescuecom Corp. v. Google Inc. (2d Cir. 2009) (p.480) -use -different from 1800 Contacts case -can purchase a competitors TM as a keyword -D is suggesting to competitors that they purchase the TM of another to generate traffic for their mark -under Lanham Act, use in commerce means use of someone elses TM *Case: Bosley Medical Institute, Inc. v. Kremer (9th Cir. 2005) (p.498) -commercial use -no infringement claim if D didnt use mark in commerce -because the purpose of infringement claims is for consumer protection and source identification and if there was no commercial use, there is no harm -the standard is whether the mark was used in connection with the sale of goods, not whether it was used in commerce -use in commerce is for the Commerce Clause -no commercial use -no good/services sold through the website -no links to competitors FACTORS ANALYSIS FOR LIKELIHOOD OF CONFUSION 1. different test for different circuits a. general pattern i. strength of Ps mark 1. conceptual strength: arbitrary, fanciful 2. market strength: developed over time, ex: fame

ii. similarity 1. look at sight, sound, meaning 2. identify how consumers would encounter the marks. If mark is said on radio, doesnt matter how the word is spelled 3. dont compare side by side unless thats how exactly the consumers will see the product in the store iii. alleged infringers intent iv. actual confusion 1. not a dispositive factor, but a substantial one 2. typically, required if damages are sought 3. could be direct (testimony) or circumstantial (survey: very difficult to make a good survey, 8.5%~15% is a good result) v. Ps likelihood of bridging gap 1. Look at Ps perception vi. variety of factors that might be lumped together as market factors b. each circuit First Circuit: Boston Athletic Assn v. Sullivan 1. the similarity of the marks (1989), Keds Corp. v. Renee International Trading 2. the similarity of the goods Corp. (1989) 3. the relationship between the parties channels of trade 4. the relationship between the parties advertising 5. the class of prospective purchasers 6. evidence of actual confusion 7. the Ds intent in adopting the mark 8. the strength of the Ps mark Second Circuit: Polaroid Factors, Polaroid Copr. 1. the strength of the senior users mark V. Polarad Electronics Corp. (1961), Playtex 2. the degree of similarity between the two Products, Inc. v. Georgia-Pacific Corp. (2004) marks 3. the proximity of the products 4. the likelihood that the prior owner will bridge the gap 5. actual confusion 6. the junior users good faith in adopting its own mark 7. the quality of Ds product 8. sophistication of buyers Third Circuit: Lapp Factors, Interpace Corp. v. 1. the degree of similarity between the owners Lapp, Inc. (1983), KOS Pharmaceuticals, Inc. v. mark and the alleged infringing mark Andrx Corp. (2004) 2. the strength of the owners mark 3. the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase 4. the length of time the D has used the mark without evidence of actual confusion arising 5. the intent of the D in adopting the mark 6. the evidence of actual confusion 7. whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media 8. the extent to which the targets of the parties

Fourth Circuit: Pizzeria Uno Factors: Pizzeria Uno Corp. v. Temple (1984), CareFirst of Maryland, Inc. v. First Care (2006)

Fifth Circuit: Roto-Rooter Corp. v. ONeal (1975), Scott Fetzer Co. v. House of Vacuums Inc. (2004)

Sixth Circuit: Frischs Factors: Frischs Restaurants v. Elbys Big Boy (1982), AutoZone, Inc. v. Tandy Corp. (2004)

Seventh Circuit: Helene Curtis Industries, Inc. v. Church & Dwight Co. (1977), Sullivan v. CBS Corp. (2004)

Eighth Circuit: SquirtCo Factors, SquirtCo v. Seven-Up Co. (1980), Frosty Treats Inc. v. Sony Computer Entertainment America Inc. (2005)

sales efforts are the same 9. the relationship of the goods in the minds of consumers because of the similarity of function 10. other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the Ds market, or that he is likely to expand into that market 1. the strength or distinctiveness of the mark 2. the similarity of the two marks 3. the similarity of the goods/services the marks identify 4. the similarity of the facilities the two parties use in their business 5. the similarity of the advertising used by the two parties 6. the Ds intent 7. actual confusion 1. the type of mark allegedly infringed 2. the similarity between the two marks 3. the similarity of the products or services 4. the identity of the retail outlets and purchasers 5. the identity of the advertising media used 6. the Ds intent 7. any evidence of actual confusion 1. the strength of the Ps mark 2. the relatedness of the goods or services offered by the parties 3. the similarity of the marks 4. any evidence of actual confusion 5. the marketing channels used by the parties 6. the probable degree of purchaser care and sophistication 7. the Ds intent 8. the likelihood of either party expanding its product line using the marks 1. the degree of similarity between the marks in appearance and suggestion 2. the similarity of the products for which the name is used 3. the area and manner of concurrent use 4. the degree of care likely to be exercised by consumers 5. the strength of the complainants mark 6. actual confusion 7. an intent on the part of the alleged infringer to palm off his products as those of another 1. the strength of the owners mark 2. the similarity between the owners mark and the alleged infringers mark 3. the degree to which the products compete with each other

Ninth Circuit: Sleekcraft Factors, AMF, Inc. v. Sleekcraft Boats (1979)

Tenth Circuit: Sally Beauty Co. v. Beautyco, Inc. (2002), Australian Gold, Inc. v. Hatfield (2006)

Eleventh Circuit: AmBrit, Inc. v. Kraft, Inc. (1986), DIppin Dots, Inc. v. Frosty Bites Distribution (2004)

D.C. Circuit: Partido Revolucionario Dominicano Seccional Metropolitana de Washington-DC, Maryland y Virginia v. Partido Revolucionario Dominicano, Seccional de Maryland y Virginia (2004)

Federal Circuit: DuPont Factors, In Re E.I. Du Pont de Nemours & Co (1973) Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En (2005)

4. the alleged infringers intent to pass of its goods as those of the TM owner 5. incidents of actual confusion 6. the type of products, its costs, and conditions of purchase 1. the strength of the mark 2. the proximity of the goods 3. the similarity of the marks 4. the evidence of actual confusion 5. the marketing channels used 6. the type of goods and the degree of care likely to be exercised by the purchaser 7. the Ds intent in selecting the mark 8. the likelihood of expansion of the product lines 1. the degree of similarity between the marks 2. the intent of the alleged infringer in adopting its mark 3. evidence of actual confusion 4. the relation in the use and the manner of marketing between the goods or services marketed by the competing parties 5. the degree of care likely to be exercised by purchasers 6. the strength or weakness of the marks 1. the strength of the marks 2. the similarity of the marks 3. the similarity of the products 4. the similarity of retail outlets and purchasers 5. the similarity of advertising media used 6. the Ds intent 7. actual confusion 1. the strength of the senior users mark 2. the degree of similarity between the two marks 3. the proximity of the products 4. the likelihood that the prior owner will bridge the gap 5. actual confusion, the sophistication of buyers 6. the junior users good faith in adopting its own mark 7. the quality of Ds product 1. the similarity or dissimilarity of the marks in the entireties as to appearance, sound, connotation and commercial impression 2. the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use 3. the similarity or dissimilarity of established, likely-to-continue trade channels 4. the conditions under which and buyers to whom sales are made, i.e., impulse vs. careful,

sophisticated purchasing 5. the fame of the prior mark (Sales, advertising, length of use) 6. the number and nature of similar marks in use on similar goods 7. the nature and extent of any actual confusion 8. the length of time during and conditions under which there has been concurrent use without evidence of actual confusion 9. the variety of goods on which a mark is or is not used (house mark, family mark, product mark) 10. the market interface between applicant and the owner of a prior mark 11. the extent to which applicant has a right to exclude others from use of its mark on its goods 12. the extent of potential confusion, i.e., whether de minimis or substantial 13. any other established fact probative of the effect of use *Case: Virgin Enterprises Ltd. v. Nawab (2d Cir. 2003) (p.509) (typical case) -2d Cir Polaroid Factors -six of them are directly related to likelihood of consumer confusion (strength of the Ps mark, similarity of Ds mark to Ps, proximity of the products sold under Ds mark to those sold under Ps, where the products are different the likelihood that P will bridge the gap by selling the products being sold by D, the existence of actual confusion among consumers, sophistication of consumers) -strength of the mark -an important factor -two types -inherent distinctiveness: if arbitrary or fanciful, then strong -acquired distinctiveness: if has been used long, prominently and notoriously, then strong -similarity of marks -an important factor -doesnt matter that the marks are stylized in a different way if the word is still the same -if the name is being said out loud, then the stylized mark doesnt have an influence -proximity of the products and likelihood of bridging the gap -dont sell the same products, but in the same category of consumer electronic equipment -consumers have expectation that a company that sells CD players will sell telephones too -actual confusion -if there is evidence, has a strong influence -usually, one persons testimony doesnt do much. But it does if the person is an employee who dealt with actual customers -sophistication of consumers -bad faith intent of D -if strongly bad faith, can have big influence -quality of Ds product -unique to the Polaroid test -to get preliminary injunction, P has to show -1) likelihood of success on the merits -OR 2) serious questions going to the merits AND balance of hardships tipping decidedly in its favor

*Case: McDonalds Corp. v. Druck and Gerner, D.D.S., P.C., d/b/a McDental (N.D.N.Y. 1993) (p.514) (unique case) -family of marks -def: a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the TM owner. Must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods. -P has family of marks with Mc prefix for food items -D has less argument if the part other than the prefix is generic (McDentist) -strength of the mark -look from the time of the lawsuit, not when D started using the mark -can be very famous even if descriptive after acquired distinctiveness -evidence of confusion -survey -30% indicating confusion is very high -usually, 15% is the threshold -deposition from former employees -similarity between the two marks -both start with McD -proximity of the products and the likelihood that P will bridge the gap -depends on how much stretch is required. Relating food services with dental services is too much -sophistication of buyers -not on whether the people who buy the goods are sophisticated, but whether people act sophisticatedly when buying the goods -intent and good faith -D have to give good explanation of why chose the mark, and not just cause it looks cool -when talked to a lawyer about the possibility of having the mark, means you were concerned *Case: Libman Company v. Vining Industries, Inc. (7th Cir. 1995) (p.520) -actual confusion -no evidence provided of actual confusion. No survey done -criticism that the court focuses too much on just actual confusion 2. applying multi-factor test for promotional goods a. 5 factors, s32 i. substantial duplications of the marks ii. without Ps consent iii. in interstate commerce iv. infringing use was in connection with the sale, offering for sale, distribution or advertising of any goods v. infringing use is likely to cause confusion, or to cause mistake or to deceive *Case: Boston Professional Hockey Association, Inc. v. Dallas CAP & Emblem MFG., Inc. (5th Cir. 1975) (p.549) -applying 5 factors for promotional goods -4) in connection with the sale, offering for sale, distribution or advertising of any goods -for promotional goods, the registered mark is the product itself -so even if sell just the mark and not something with mark attached, factor satisfied -5) likely to cause confusion, mistake, or to deceive -is satisfied of D duplicated the protected TM and sold to public knowing public will be able to identify the mark as the Ps TM -if public recognizes the origin of the mark is Ps, then satisfied CONFUSION AWAY FROM POINT OF SALE I. initial interest confusion *Case: Playboy Enters., Inc. v. Netscape Commcs Corp. (9th Cir. 2004) (p.558)

-why protect from initial interest confusion -because even if directed to a wrong website on the internet and realize its the wrong one, consumer might be okay with the wrong website and stay there. Even if not, the harm is already done -D impermissibly capitalizes on good will associated with Ps mark -if consumer never finds out that its the wrong website, might harm the reputation of Ps mark -multi-factor confusion test -marketing channel -equivocal because so many use internet now -degree of consumer care? -if Ds website provides graphic, provocative pictures, then likely to attract consumers and divert them from the Ps -intent -look at Ds effort to prevent consumers who didnt intend to visit Ds website *Case: Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP (6th Cir. 2006) (p.567) -initial interest confusion -if the TM is a shape of a product, doesnt apply broadly because many goods look similar from far -since theres only a limited number of ways to shape a product, protecting shapes from those that may seem similar from far is too broad. It will eliminate competition II. Post-Sale Confusion *Case: Ferrari S.P.A. Esercizio v. Roberts (6th Cir. 1992) (p.574) -why protect against post-sale confusion -purchaser may know that the good is not real. But when the good is out in public, others might not know, and may be discouraged to by a real one because the good is too common and is not as prestigious -post-sale confusion -when doing survey, do it on the public, not the potential purchasers III. Reverse Confusion 1. consumer mistake senior users mark for junior users because junior use is more well known 2. the harm on the senior user is that although it might get more sales, it loses the ability to develop its own goodwill *Case: A&H Sportswear, Inc. v. Victorias Secret Stores, Inc. (3d Cir. 2000) (p.581) -reverse confusion -TM disclaimers have little effect in reverse confusion -adjusted multi-factor test -1) degree of similarity between the owners mark and the alleged infringing mark -applied the same way, except junior users disclaimer will have less effect because the consumers are not seeing the disclaimer -2) strength of the two marks -reversed -tailor commercial strength, but not conceptual distinctiveness -consider -the commercial strength of the junior user as compared to the senior user - advertising or marketing campaigns junior used that has resulted in the public awareness of junior users mark -3) price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase -same -4) length of time the defendant has used the mark without evidence of actual confusion arising -same -5) the intent of the defendant in adopting the mark -same, but unlikely -6) evidence of actual confusion

-count actual confusion of senior users mark for junior users mark AND junior users mark for senior users mark -7) whether the goods, competing or not competing, are marketed through the same channels of trade and advertised through the same media -same -8) the extent to which the targets of the parties sales efforts are the same -9) the relationship of the goods in the minds of consumers, whether because of the near-identity of the products, the similarity of function, or other factors -10) other facts suggesting that the consuming public might expect the larger, more powerful company to manufacture both products, or expect the larger company to manufacture a product in the plaintiffs market, or expect that the larger company is likely to expand into the plaintiffs market IV. Vicarious/Contributory Infringement Liability-not a big issue on exam *Case: Inwood Laboratories, Inc. v. Ives Laboratories, Inc. (1982) (p.590) -vicarious infringement liability -liability can extend beyond those who mislabel the goods with the mark of another, to the manufacturer of the goods -even if the manufacturer does not directly control others in the chain of distribution -how to prove -1) intentionally induce TM infringement OR -2) continue to supply product to one you know or have reason to know is engaging in TM infringement *Case: Tiffany Inc. v. eBay Inc. (2d Cir. 2010) (p.594) -vicarious infringement liability -Inwood test applies if the service provider exercises sufficient control over the means of the infringing conduct -if no intentional inducement, need more than general knowledge or reason to know TM infringement. Need some contemporary knowledge -manufacturer/service provider is not allowed willful blindness though

DILUTION I. dilution 1. types a. blurring i. more common ii. impairs the distinctiveness of the mark iii. protect because consumer search cost will rise b. tarnishment i. harms the reputation of the protected mark through negative association ii. protect because of the inveterate tendency of the human mind to proceed by association 2. major difference from likelihood of confusion based claims is that it does not require confusion at all 3. the two goods dont have to be related 4. only need likelihood of dilution, not actual dilution 5. history a. developed first in state law b. 1995: Federal Trademark Dilution Act (FTDA) c. 2003: Victorias Secret case: must prove actual dilution d. 2006: Trademark Dilution Revision Act (TDRA) i. Overrules Victorias Secret case ii. Sufficient to prove only likelihood of dilution *Case: Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development (4th Cir. 1999) (p.610)

-why protect from dilution -because even without confusion, TM can lose uniqueness, after having had put hard-earned advertising value and selling power -different approaches -1) have to show evidence of some form of product-diverting consumer confusion (hardest to prove) -2) have to show through process of fat-finding by inference from contextual factors -3) can be presumed from the identity or sufficient similarity of the marks (easiest to prove) -commonality of the different approaches -all require some form of harm to the protected marks selling power II. Federal Trademark Dilution Act of 1995 (FTDA) (old) vs. Trademark Dilution Revision Act of 2006 (TDRA) (new) FTDA TDRA Time line Oct. 6, 2006 similarity Use in commerce Famous mark (for TDRA, covers those distinctive, inherently or through acquired distinctiveness) After mark became famous scope Cause dilution of the distinctive Likely to cause dilution by quality of the mark blurring (impair the distinctiveness of the famous mark) or tarnishment (impair the reputation of the famous mark) Likelihood or actual only? Doesnt say likelihood injunction injunction Damages are available for willful violation Fame factors 1. distinctiveness of Ps mark widely recognized by general 2. duration and extent of use consuming public of the United 3. duration and extent of States as a designation of advertising and publicity source 4. geographical extent of the 1. duration, extent, and trading area geographic reach of advertising 5. channels of trade and publicity 6. degree of recognition in the 2. amount, volume, and trading areas and channels of geographic extent of the goods trade by P and D 3. extent of actual recognition of 7. nature and extent of similar the mark marks by 3rd parties 4. mark is TMed? 8. mark is TMed? III. Tarnishment *Case: Toys R Us, Inc. v. Akkaoui (N.D. Cal. 1996) (p.625) -is famous -advertised through a variety of channels both locally and nationally -have various marks registered as TM -both P and D use internet to advertise -once a TM has become diluted, it has lost the strength it once possessed *Case: Toys R Us, Inc. v. Feinberg (S.D.N.Y. 1998) (p.626) -no likelihood of association, so no dilution -theres a trend in cases that sex is offensive, and therefore a high possibility of being tarnishment. Other controversial things like guns are more difficult to prove *Case: V Secret Catalogue, Inc. v. Moseley (6th Cir. 2010) (p.627

-Ds product involving sexual activities -there is rebuttable presumption that Ds goods disparage and defiles the famous mark and reduce the commercial power -so D has the burden of proof, that there is no likelihood or probability of tarnishment IV. Blurring *Case: Starbucks Corp. v. Wolfes Borough Coffee, Inc. (2nd Cir. 2009) (p.635) -6 factors for blurring -1) the degree of similarity between the mark or trade name and the famous mark -2) the degree of inherent or acquired distinctiveness of the famous mark -3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark -4) the degree of recognition of the famous mark -5) whether the user of the mark or trade name intended to create an association with the famous mark -6) any actual association between the mark or trade name and the famous mark -the similarity factor -FTDA used to require very or substantially similar mark -now, TDRA requires just similarity -the intent factor -does not require bad faith CYBERSQUATTING I. domain names 1. TM owners dont get preference in getting domain names similar to the mark 2. Initially on a pure 1st come, 1st serve basis II. cybersquatting 1. Because 1st come 1st serve basis, individuals register for domain name before the TM owners, and can exploit the value that TM owners attach to the domain name registrations by demanding large sums of money for the transfer of the domain name registration to the TM owner 2. Before ACPA, cybersquatting claims used to be based on dilution *Case: Panavision International v. Toeppen (9th Cir. 1998) (p.647) (pre ACPA) -dilution -famous and distinctive -requires use in commerce -even if the Ds website does not associate itself with P in anyway, still use in commerce because the Ds business here is registering TMs as domain names and selling them to TM owners -D is doing business on the internet to the TM users -D trade on the value of Ps marks -harm the distinctiveness of Ps mark -a website address that mirrors Ps TM is Ps valuable corporate asset, and its used by D -a customer who doesnt know much about P might believe Ds website is Ps -if customer cant find Ps website easily because Ds website comes up first, then will be discouraged to buy Ps products III. Anticybersquatting Consumer Protection Act (ACPA) (1999) 1. Now codified in Lanham Act 2. Causes of action a. s43(d) (1): action in personam against cybersquatter, grounded in bad faith registration or use of the domain name b. s43(d) (2): action in rem against the domain name itself where there is no personal jurisdiction 3. standard a. Ds bona fide intent to profit b. Domain name is

i. Distinctive ii. Famous (like dilution) c. No use in commerce is required *Case: Sportys Farm L.L.C. v. Sportsmans Market, Inc. (2d Cir. 2000) (p.651) -distinctive or famous -identical or confusingly similar -bad faith intent to profit -9 factors in the statute -1) TM or other IP rights of the person are in the domain name -2) the extent to which the domain name consist of the legal name of the person or name that is used to identify that person -3) the persons prior use, if any, of the domain name in connection with bona fide offering of any goods or services -4) persons bona fide noncommercial or fair use of the mark in a site accessible under the domain name -5) the persons intent to divert consumers from the mark owners online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with intent to tarnish or disparage the mark by creating likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site -6) persons attempt to transfer or sell the name for financial gain to mark owner or 3rd party without having used, or having an intent to use, it for their own purpose -7) the persons provision of material and misleading false contact info when applied for registration of the domain name, the persons intentional failure to maintain accurate contact information, or the persons prior conduct indicating a pattern of such conduct -8) the persons registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names -9)the extent to which the mark incorporated in the persons domain name registration is or is not distinctive and famous -need more than enough evidence of bad faith intent -remedy -s1(c): forefeitures, cancellation -s35(d): statutory damages *Case: Lamparello v. Falwell (4th Cir. 2005) (p.656) -bad faith intent? -even if Ds website was created to criticize P, not bad faith intent to cybersquat -even if done to make profit -purpose of ACPA is to protect consumers from domain name holders who trade on names and reputations of established brands. This is not the case with such gripe sites -other factors -Ds website is spelled wrong, so not an attempt to block P from registering -D did not have bona fide intent to sell the domain name -D only had one domain name *Case: Harrods Ltd. v. Sixty Internet Domain Names (4th Cir. 2002) (p.662) -prof. didnt go through this case -in rem cybersquatting -apply the same 9 factors IV. Uniform Domain Resolution Protocol (UDRP) 1. One way for TM owner to pull down Ds domain 2. Cheap and popular procedure for TM owners a. Cookie-cutter procedure

b. More of an administrative proceeding than judicial 3. 1 or 3 member panels decide on the issue 4. Developed by ICANN a. Anyone who registers for a domain name agrees to be subject to UDRP b. ICANN will send a user a letter to the address on the whois registration COUNTERFEIT I. Trademark Counterfeiting Act of 1984 1. Lanham Act s45 a. A spurious mark which is identical with or substantially indistinguishable from a registered mark i. Covers marks more similar to than under infringement and dilution claims *Case: United States of America v. Foote (10th Cir. 2005) (p.696) -s3430(a) of TM Counterfeiting Act -def of counterfeit mark: the use of which is likely to cause confusion, to cause mistake, or to deceive -counterfeit -look at whether the members of the public will be confused/mistaken/deceived -post-sale confusion applies to counterfeit

Ds Defenses Fair Use I. types 1. descriptive or classic a. P use the term as source-identifier, D use the term to describe its goods b. Is not illegal because giving TM rights should not result in removal of words from the language c. s33(b)(4) i. Ds use of Ps was not for trade or service mark purposes ii. Mark is being used in a descriptive sense iii. Mark is being used in good faith, it wasnt with intent to profit or capitalize on Ps fame, good will, etc. d. Relationship between descriptive fair use and likelihood of confusion i. 9th cir (2002, 2003) said fair use cannot be a defense if there is likelihood of customer confusion ii. Other circuits see it differently iii. US SC left the issue grey in KP Permanent (2004), but fair use still can be a defense, and D doesnt have to negate likelihood of confusion 2. nominative a. Not under Lanham Act b. D using Ps TM on Ds product to refer to Ps product c. Ps mark is the only practical way to refer to the particular subject matter because there is no generic term for it d. General test: New Kids on the Block (9th cir) or Century 21 (3rd cir) 3. Not a bright line between the two types *Case: KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004) (p.705) -issue: relationship between prescriptive fair use and likelihood of confusion -there can be fair use and some degree of confusion at the same time, but likelihood of confusion is still relevant to the assessment of whether Ds use is fair -P has the burden of proving likelihood of confusion to establish prima facie case of TM infringement -D doesnt have to negate likelihood of confusion when asserting defense of fair use, just have to show the elements of fair use

-the court doesnt give definite answer *Case: International Stamp Art, Inc. v. United States Postal Service (11th Cir. 2006) (p.712) -fair-use defense -requirements -1) the use is other than as a mark -2) was used in a descriptive sense -3) was done in good faith -standard -likelihood of confusion is relevant because the focus is the same, which is, whether D intended to capitalize on Ps good will by using the mark -mere knowledge of Ps TM is insufficient to establish bad faith. Good faith is judged only by the subjective purpose in using the mark -if alternatives were available other than the mark, then may indicate bad faith -if packaging and labeling was done in a different way intentionally to minimize confusion, then shows good faith *Case: R.G. Smith v. Chanel, Inc. (9th Cir. 1968) (p.721) -nominative fair use -in the absence of misrepresentation or confusion as to source or sponsorship, a seller in promoting his own goods may use the TM of another to identify its own goods *Case: Century 21 Real Estate Corp. v. Lendingtree, Inc. (3d Cir. 2005) (p.726) -issue: relationship between likelihood of confusion and nominative fair use defense -likelihood of confusion factors -P must still prove likelihood of confusion -but only 4 factors are relevant -care and attention of consumers -length of use without confusion -intent of D -evidence of actual confusion -New Kids on the Block test (9th Cir.) -1. Ps product is not readily identifiable without the use of Ps TM -2. Only so much of Ps mark is used to readily identify Ps product -3. User did nothing that would, in conjunction with mark, suggest Ps sponsorship or endorsement -3rd Circuit test -why dont follow New Kids on the Block test -nominative fair use is the same as fair use, no different treatment -nominative fair use can still potentially confuse the consumers -follow SCs burden of proof in KP Permanent -1. Ps mark is necessary to describe its own and Ps products -2. D used only so much of Ps mark as is necessary to describe Ps product -same as 9th circuit -3. Ds conduct or language reflect true and accurate relationship between Ps and Ds products -broader than 9th circuit test. Not just sponsorship and endorsement, but any relationship

First Sale Doctrine I. first sale doctrine/exhaustion of rights doctrine 1. D reselling genuine goods of P 2. Can put Ps TM on it, but have to say that it was repackaged, is used and repaired, etc. *Case: Champion Spark Plug Co. v. Sanders (1947) (p.742)

-Ps genuine goods are still Ps goods, although used -consumers know that used Ps goods wont be as good as Ps new goods, so it wont hurt Ps reputation -inferiority of second-hand articles is immaterial so long as the article is clearly and distinctively sold as repaird or reconditioned rather than as new -full disclosure of repair -so manufacturer is not identified with the inferior qualities of the product -but ONLY if the reconditioning or repair was not so extensive or so basic to be a misnomer to call the good by its original name anymore *Case: Nitro Leisure Products, L.L.C. v. Acushnet Co. (Fed. Cir. 2003) (p.744) -Davidoff Case (11th Cir.) -material differences test -limits using TM by resellers even on new, genuine trademarked goods -this court refuses to apply Davidoff -first sale -for new goods repackaged by D -because new, even a modest change will be seen by consumers as material differences and will be confused as to what the good is -for used goods refurbished by D -customers dont expect the goods to be of Ps quality -Davidoff case doesnt apply to used goods, only new ones -correct test -1) the refurbishing is expected of used products -2) it is not a misnomer to call them under Ps mark -3) there is no likelihood of confusion by the customers

Parody I. parody test 1. Two messages test a. 1) it is the original b. 2) it is not the original, and instead a parody c. Different circuits have different specific tests, but this is the main idea 2. 8th Circuit a. Do a two prong test, first likelihood of confusion, and then 1st A protection b. For 1st A protection, do a balancing test 3. 5th, 7th, 9th, 10th Circuits a. Analyze parody within likelihood of confusion *Case: Anheuser-Busch, Inc. v. Balducci Publications (8th Cir. 1994) (p.764) -two step parody test -1) likelihood of confusion -whether the buying public will reasonably think that Ds product comes from the same source, or thought to be affiliated with, or sponsored by, P -apply the factors -2) 1st A protection -no absolute protection against parody, but because parody in obvious editorial context is not going to cause confusion -balancing test between public interest in free expression and public interest in avoiding consumer confusion -different for each circuit -the two messages test consistent across circuits

-parody must show that it is the original, but also that it is not the original and is instead a parody *Case: Mattel, Inc. v. MCA Records, Inc. (9th Cir. 2002) (p.769) -Rogers test for titles -instead of likelihood of confusion factors -use of mark in literary titles are OK unless the title has.. -1) no artistic relevance to the underlying work whatsoever, OR -2) some artistic relevance but explicitly misleads to source or content of work -look at what the consumers expect from the title -also consider whether the mark is adopted by society so widely that it has more than a source-identification function -a title is designed to catch the eye and to promote the value of the underlying work. Consumers expect a title to communicate a message about the book or movie, but they do not expect it to identify the publisher or producer -parody as defense to claim of dilution -even if the literary work is for profit, the message in the work that is connected with the TM is not, its noncommercial *Case: Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC (4th Cir. 2007) (p.785) -parody as defense to claim of dilution -s43(c)(A) (ii) includes parodying, criticizing as a complete defense to dilution -likelihood of confusion factors -incorporate parody when examining the factors -effective parody test -1) Ds good is an irreverent, and intentional, representation of Ps goods? -2) No one can doubt that Ds goods is not the idealized image of the mark created by P? -3) the image that justaposition of the similar and dissimilar conveys.. joking and amusing parody?

REMEDIES I. possible remedies 1. s34(a) injunction a. (d) for counterfeits 2. s35 damages a. subject to equity b. for what i. Ds profits ii. Damages sustained by P iii. Cost of action iv. Treble damages and attorneys fees under s35b 3. Damages are harder to get than injunction 4. District courts have lots of discretion regarding remedies *Case: Goto.com, Inc. v. Walt Disney Company (9th Cir. 2000) (p.897) -test for preliminary injunction -1) probable success on the merits AND the possibility of irreparable injury OR -2) the existence of serious questions on merits AND the balance of hardships tips sharply in favor of the party seeking injunction -proof of actual confusion for damages -most courts require proof of actual confusion to get damages, but this court does not -surveys often can suffice as proof *Case: Lindy Pen Co., Inc. v. Bic Pen Corp. (9th Cir. 1993) (p.908) -if TM infringement was deliberate and willful, grant accounting of profit

-for damages -P has to prove that there were damages and the amount of damage, in gross (direct injury only) -cant prove by showing Ds total sales, have to show which portion of that was earned from infringement -then burden shifts to D to show which part of that is not attributable to the infringing activity, and other deductions for overhead -treble damages, only in extreme circumstances -attorneys fees, only in extreme circumstances when the infringement was malicious, fraudulent, deliberate, or willful *Case: George Basch Co., Inc. v. Blue Coral, Inc. (2d Cir. 1992) (p.914) -prof skipped this -for damages, P has to show actual confusion or intentional deception -for profits, need willful deception, and that without Ds infringement, Ds profits would have gone to P *Case: Synergistic Intl LLC v. Korman (4th Cir. 2006) (p.920) -3rd, 5th Circuit factors for rewarding damages -1) intent to confuse or deceive, 2) whether sales have been diverted, 3) adequacy of other remedies, 4) unreasonable delay by P in asserting his rights, 5) public interest, 6) palming off *Case: Green v. Fornario (3d Cir. 2007) (p.922) -prof. skipped this -attorneys fees -in exceptional circumstances, but still possible -is exceptional if -1) D engaged in any culpable conduct (ex: bad faith, fraud, malice, knowing infringement) -2) whether the circumstances are exceptional enough to warrant a fee award *Case: K & N Engineering, Inc. v. Bulat (9th Cir. 2007) (p.925) -prof. skipped this -treble fees and attorneys fees under s35 (b) -possible if counterfeit marks are involved -3 times the actual damages plus reasonable attorneys fees -no attorneys fees under s35(c)