trademarks prof. janicke july 2008. f2008trademarks2 to be a “mark”: has to serve as a brand...
TRANSCRIPT
TRADEMARKS
PROF. JANICKEJULY 2008
F2008 Trademarks 2
TO BE A “MARK”:
• HAS TO SERVE AS A BRAND
• MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS
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TO BE A “MARK”:
HAS TO BE USED PHYSICALLY:– ON THE GOODS, or– ON GOODS’ CONTAINERS, or– ON POINT-OF-SALE DISPLAYS OF
GOODS, or– ON INVOICES OR SHIPPING
DOCUMENTS, IF THE ABOVE METHODS OF USE ARE IMPRACTICAL, or
– IN CATALOGS OR WEBSITES ADVERTISING THE GOODS
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FOR A SERVICE MARK, USE CAN BE:
– ON SIGNS, ADS, OR PAPERS CONNECTED TO THE SERVICE
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TO BE A “MARK”:
• THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE
• LOCAL, FOR STATE RIGHTS
• INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS
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PROTECTION
• RIGHTS BEGIN UPON FIRST USE
• REGISTRATION IS UNNECESSARY
• CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK – DONE UNDER UNFAIR COMPETITION
LAWS
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BENEFITS OF REGISTRATION
• WHILE NOT NEEDED FOR OWNING EXCLUSIVE RIGHT TO USE A MARK, OR FOR SUING INFRINGERS, THERE ARE MANY BENEFITS TO A FEDERAL REGISTRATION:– CAN RESERVE A MARK PRIOR TO USE– EXCLUSIVE RIGHT TO USE THE MARK IS
PRESUMED FROM REGISTRATION– “INCONTESTABLE” AFTER 5 YEARS
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(MORE BENEFITS OF FED. REGISTRATION)
– CAN SUE INFRINGERS IN FEDERAL COURT, REGARDLESS OF DIVERSITY
– VALIDITY OF MARK IS PRESUMED– PROTECTION AGAINST INFRINGEMENT
IS NATIONWIDE– U.S. CUSTOMS SERVICE WILL ASSIST
AGAINST INFRINGING IMPORTATIONS
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“RESERVING” A MARK
• CAN NOW FILE APPL. TO REGISTER
BASED ON INTENT TO USE
• PROVIDES CONSTRUCTIVE USE AS OF FILING DATE
• MUST ACTUALLY USE IN COMMERCE PRIOR TO REGISTRATION
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MARKS THAT ARE EASY TO PROTECT
• COINED: KODAK; PURELL
• ARBITRARY: APPLE; SUN
• SUGGESTIVE: MILKY WAY COPPERTONE
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HARDER TO PROTECT
• DESCRIPTIVE: TASTEE
• A SURNAME: STEINWAY WATERMAN
• GEOGRAPHIC: MID-ATLANTIC; SOUTHWEST
• THESE WERE NOT PROTECTED AT FIRST USE
• NEED TO DEVELOP ACQUIRED DISTINCTIVENESS OVER TIME, SOMETIMES CALLED “SECONDARY MEANING”
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WHAT IS NOT A MARK:
• GENERIC NAME OF A THING– “BREAD” FOR BREAD
• SOME CLOSE ISSUES:– ASPIRIN– SHREDDED WHEAT– Cf.: KLEENEX; PING-PONG; XEROX
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EXAMPLES OF MARKS
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NATURE OF RIGHTS IN MARKS
• PREVENT OTHERS FROM USING SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY
• NOT A RIGHT TO PREVENT ALL USES:– “CADILLAC” FOR CARS AND DOG
FOOD
– “CHAMPION” FOR PAPER AND BOXING GLOVES AND SPARK PLUGS
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DURATION OF EXCLUSIVE RIGHT
• AS LONG AS YOU ARE USING IT IN COMMERCE, PROVIDED - -
– IT DOES NOT BECOME GENERIC
– IT DOES NOT LOSE ITS CHARACTER
AS SINGLE-SOURCE INDICATOR
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REITERATING THE LEGAL BENEFITS OF REGISTRATION
• PRIMA FACIE EVIDENCE OF EXCLUSIVE RIGHT TO USE
• CONSTRUCTIVE USE
EVERYWHERE, AS OF THE FILING
DATE
• STARTS FIVE-YEAR CLOCK TO
INCONTESTABILITY
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PRACTICAL BENEFIT OF REGISTRATION
• OTHERS WILL FIND OUT ABOUT YOUR RIGHTS, AND WON’T ADOPT SIMILAR MARK
• CHEAP POLICING
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PASSING/FAILING THE FIRST REQUIREMENT OF A
“MARK”
• NOT A DISTINGUISHING BRAND
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PASSING/FAILING SECOND REQUIREMENT OF A
“MARK”
• NON-USE IN ACTUAL COMMERCE
§ 1127
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PASSING/FAILING THIRD REQUIREMENT OF A
“MARK”
• NON-USE ON GOODS OR CONNECTED TO SERVICES
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FALLING INTO THE “REGISTERED” PIT
PROBLEM:
• 1ST USER HAS NO REGISTRATION• 2ND USER GOT STATE AND FEDERAL
REGISTRATIONS, TWO YEARS AGO
• GOODS/MARKS CONFUSINGLY SIMILAR
• WHO WINS?
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THE THORN:PERMANENT LOCAL USE
RIGHTS
• THE ONE BIG PROBLEM FOR THE FIRST USER IN COMMERCE
• SECOND USER CAN GET PERMANENT LOCAL RIGHTS TO USE
• IF CONFUSION, FIRST USER MUST STAY OUT!
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PERMANENT USE RIGHTS
CONDITIONS:
• (1) FIRST TO USE IN A LOCALE (STATE OR LESS)
• (2) NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF ADOPTION
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PERMANENT USE RIGHTS
• FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS REGISTRATION DATE
• REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2)
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PERMANENT USE RIGHTS
• NOW, CONGRESS HAS PROVIDED THAT A FEDERAL REGISTRATION CONSTITUTES CONSTRUCTIVE USE EVERYWHERE AS OF THE FILING DATE (§1057(c)
• THIS KILLS CONDITION (1) AS OF THE FILING DATE
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PERMANENT USE RIGHTS
• ∴ REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE
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QUASI-MARKS AND NON-MARKS
• WALK THROUGH § 1052
• THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS
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QUASI-MARKS AND NON-MARKS
• START WITH 1052 (a) - (d): TELLS US MANY PROBLEMS ARE INCURABLE
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QUASI-MARKS AND NON-MARKS
THE (e) GROUP – SOME ARE CURABLE:
• DESCRIPTIVE
• GEOGRAPHIC
• SURNAMES
SOME NOT CURABLE: DECEPTIVELY MISDESCRIPTIVE
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QUASI-MARKS AND NON-MARKS
• FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER)
• EXAMPLE: SHAPE OF A DESK LAMP
• CANNOT BE CURED
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GETTING FROM QUASI TO FULL:SHOWING ACQUIRED
DISTINCTIVENESS
• OFTEN CALLED “SECONDARY MEANING”
• SHOWS THE QUASI-MARK HAS ARRIVED; NOW SIGNALS SOURCE
• FIVE YEARS EXCLUSIVE USE MAY DO
15 USC § 1052 (f)
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LESS KNOWN TYPES
• COLLECTIVE MARKS– TRADE / SERVICE MARKS– MEMBERSHIP MARKS
• CERTIFICATION MARKS
§ 1054
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CONFUSION LIKELIHOOD
• AS TO SOURCE
• AS TO SPONSORSHIP
• AS TO AFFILIATION
• AS TO APPROVAL
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CONFUSION LIKELIHOOD
• SUBSTANTIAL NUMBER OF PERSONS
• PROBLEM OF LANGUAGE TRANSLATION– DEPENDS HOW MANY SPEAK IT IN U.S.
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STRONG-WEAK MARKS
• COINED -- e.g., KODAK: STRONGEST OF ALL– ENTITLED TO THE WIDEST SCOPE OF
PROTECTION– MODAK, DODAK, KODAR, FOR FILM
WILL BE HELD INFRINGING
• ARBITRARY – e.g. APPLE:– ALSO VERY STRONG
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• SUGGESTIVE (e.g. MILKY WAY; COPPERTONE) – OK, BUT WEAKER– “CREAMY WAY,” “BRONZETONE” MIGHT BE
HELD NONINFRINGING
• DESCRIPTIVE (e.g. TASTEE BREAD, SUPERIOR WATERBEDS), and SURNAMES (WATERMAN FOR PENS, FORD FOR CARS)– ARE NOT PROTECTED RIGHT AWAY– ARE PROTECTED WHEN THEY HAVE
ACQUIRED DISTINCTIVENESS
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• “DESCRIPTIVE” INCLUDES GEOG. DESCRIPTIVE (e.g. SOUTHWEST FOR AIRLINE SERVICES, HOUSTON CHRONICLE FOR NEWSPAPERS)– NOT PROTECTED AT FIRST
• GENERIC NAME OF ARTICLE (e.g. ASPIRIN)– CANNOT SERVE AS A MARK– CANNOT ACQUIRE DISTINCTIVENESS –
IT’S PART OF THE LANGUAGE
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FACTORS IN JUDGING LIKELIHOOD OF
CONFUSION
• NO SINGLE FACTOR CONTROLS• “SUNKIST” FOR FRESH FRUIT AND FOR
DRIED FRUIT WERE OWNED BY UNRELATED COMPANIES
• MARKS LIKE “ACME,” “SUPERIOR, AND “NATIONAL” HAVE MANY OWNERS
• FAMOUS CASES HAVE CHECKLISTS
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FACTORS• STRENGTH OF P’S MARK
– HOW ARBITRARY?– HOW MUCH USE?
• SIMILARITY OF THE MARKS– SIGHT– SOUND– MEANING– SCRIPT OR DESIGN
• SIMILARITY OF PRODUCTS OF SERVICES
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FACTORS (CONT’D.)
• SIMILAR CHANNELS OF TRADE• SIMILAR ADVERTISING OR PROMOTION
MEDIA• BAD FAITH ADOPTION
– SOME COURTS GIVE THIS HEAVY WEIGHT; OTHERS DON’T
• SIMILAR TARGET CUSTOMERS• SIMILAR PURCHASE CONDITIONS: TIME,
PRICE, ETC.
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• COURTS HAVE TO WEIGH ALL THE FACTORS
• THEY REACH A DECISION THAT IS TO SOME DEGREE SUBJECTIVE
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WHO HAS THE RIGHT? THE PROBLEM OF “GRAY
GOODS”
• ARISES FROM CORPORATE SPINOFFS [ABOUT AS FREQUENT AS MERGERS]
• WHEN FOREIGN MARKET IS SPUN OFF, MARKS USUALLY GO WITH
• ALSO FROM LICENSING [IP MAXIMIZATION]
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GRAY GOODS
U.S. RULE:
• IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION
• IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER
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WHAT IS NOT INFRINGEMENT
• FAIR USE TO DESCRIBE:
JANICKE’S COMPUTER RENTALWE RENT ALL TYPES, INCLUDING COMPAQ®,
IBM®, AND DELL®
§ 1115 (4)
JANICKE’S COMPUTER RENTALWE RENT ALL TYPES
INCLUDING COMPAQ® AND IBM®
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WHAT IS NOT INFRINGEMENT
• OWN NAME IN BUSINESS OTHER THAN AS A MARK
• Cf: SPERA’S RESTAURANTTONY SPERA, PROP.
TONY’S RESTAURANTTONY SPERA, PROP.
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N.B.
• NO GENERAL RIGHT TO USE YOUR OWN NAME IN BUSINESS
• MOST ATTEMPTS FAIL
• NO POINT IN CHANGING YOUR NAME TO JOHNNY WALKER IF YOU ARE GOING TO SELL WHISKY
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N.B.
• STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL
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A WORD ABOUT DILUTION
• WHEN THERE IS NO INFRINGEMENT BECAUSE NO LIKELIHOOD OF CONFUSION
• BUT THE ACTS OF D SOMEHOW CHEAPEN OR TARNISH OR REDUCE THE VALUE OF P’S MARK
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A WORD ABOUT DILUTION
• EXAMPLE:
– “CADILLAC” FOR CARS
– FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD
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A WORD ABOUT DILUTION
• ONLY AVAILABLE FOR “FAMOUS” MARKS
• NO DAMAGES NORMALLY
• INJUNCTIVE ONLY
§ 1125 (c)
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REMEDIES
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INJUNCTIVE
• NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER
• CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS
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INJUNCTIVE
• PRELIMINARY
• PERMANENT– §1116 (a)
• 4,000 + TRADEMARK SUITS FILED ANNUALLY
• ABOUT 45 GO TO TRIAL
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MONETARY
• D’S PROFITS
• OR P’S DAMAGES [DIFFICULT TO SHOW]
• COURT CAN TREBLE P’S DAMAGES
• IF D’S PROFITS AS REMEDY IS TOO SMALL/LARGE, COURT CAN ENTER A “JUST” AMOUNT
§ 1117 (a)
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ATTORNEY’S FEES
• “EXCEPTIONAL CASES” ONLY
• USUALLY MEANS WILLFUL INFRINGEMENT
§ 1117 (a)
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DESTRUCTION
• A NICE MEDIEVAL REMEDY
• ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?]
§ 1118
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DEFENDANT’S REMEDIES
• ATTORNEY’S FEES IN EXCEPTIONAL CASES
§ 1117 (a)
• ORDER TO CANCEL REGISTRATION
§ 1119