Trademark – Abblegon

What are trademarks - ? a primer 1/19/10- a mark + use on specific goods and service- -Mark can be word, logo, trade dress, etc.

o Use has to be in connection w/ specific services or products- If you want a mark on a product, have to put it on the product or its

packagingo E.g. oil – can’t put it on the oil itself

- Marks can be almost anything – can be a wordo Can register w/ ‘regular characters’ – no consideration of fonto Can also be a logo – e.g. the Coke mark

- Trade dress – might be the actual shape of the coke bottleo Can get marks for colors, e.g. fink on fiberglass insulationo Campbell’s soup label – the soup’s name changes, but the overall

packaging is roughly the same- Sound

o Harley wanted to get a mark, but they finally were unsuccessfulo The NBC ding

- 99% are words or logos or both- Invoices and letterhead won’t get you a trademark

o Have to show packaging or website where you can buy the software- In the U.S. first-to-use has superior rights on the mark

o E.g. the blue note in NYC, and another bar opens and registers the mark

o Won’t be able to stop blue note in NYC b/c it existed first- The old set of categories for mark strength

o Coined, arbitrary, suggestive, descriptive, generico Arbitrary

E.g. ‘apple’ for computers, or ‘apple’ for record labelo Suggestive – ‘amazon’ describes vastnesso Descriptive – pretty weak

- Distinctiveness – how much does the mark indicate the source of the producto E.g. how much does pink color on insulation indicate the source

- Disputes tend to be resolved unpredictablyo Especially w/ clients oversees or if they involve a surname or a

common wordo So settlement agreements and co-existence agreements are important

- Confusion:o Must be some evidence of actual confusion

The simple act of using a mark as a mark creates rights- Federal registration gives you additional rights beyond the use itself- Is there a way to get the mark without actually using it?

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o You can only do it if you’re not from America, and you have a registration in a foreign company, you can use those rights to get trademark, but can’t renew it without showing use

- Difference between a trademark and a service mark?o Trademark used on a producto Service mark is used on a serviceo Not unusual for mark to be used as a trademark and as a service marko Service mark rules are different

You can use an advertisement that identifies the services as a specimen, where in a trademark, you can’t use just an advertisement

In some examples, you can use POS displays – like a header on a display in a big box store

- How long does it take to get a mark ? Under a year these days- What if you want to register the mark on another product?

o You have to declare which items it’s used ono And if you lie about what you’re using it on, they’ll invalidate youo Need to be actually using it on those thingso So you may have to file a new application – one of the rules is that you

can’t expand the original list of products. You’d have to re-file- Can you apply for > 1 mark in an application? No.

o You could apply for a composite mark though (TWA w/ a globe)o You might not be able to stop others from using a globeo So you have to think about what exactly you want to protecto You can get marks for each individual component as long as they all

convey source- What happens if you find out if someone else has already used it after you

registered it?o You have to try and talk your clients out of using descriptive markso You’ll want a co-existence agreement

- Why bother doing a trademark search beforehand?o You pay for a TM app., which is $275-325 varying by classo So if it’s a dead end, you’re out $$o You also want to make sure there aren’t senior users

- What’s a common law trademark, what rights?o Anything you haven’t actually registered that you aren’t usingo Why bother registering?

You get nationwide priority Need

- Most of the time people can do their own app., but they often screw it upo Most attorneys charge between $500 - $1000 not including

government fees- What about identical marks?

o Just because they’re identical similar doesn’t rule out the mark

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o The question is how close the marks are related- Domain names? Yes, as long as you’re using it to register goods or services- State vs. federal trademark – you can register in state of WI

o Maybe you might just seek WI state registration to protect your rights in this state

- What about if the owner is no longer in business or it’s dead or abandoned?o Sometimes you can if the mark has actually been abandonedo Turns on the intent to abandon

- Change of font? Not enough - What should you search ? Google, commercial searching outfits

o CCH core searcho Practically speaking, USPTO, some international in WIPO.int, Google

- What’s the official gazette? o Where they publish the latest announcements, rules, pending

applicationso Once the examiner blesses the app., the trademark gets published and

can be contestedo You might use a watch service for marks that use a similar

- Does the PTO remind you that you need to renew? No.o There are 3rd party outfits that will remind you

- Applications are always done on the web:- How about an international trademark registration?

o No such thing. Can go to individual countries – TW, CN, KR, etc.o Also the Madrid protocol – single application ends up maturing into

rights in all the countries – still costs $$, but don’t need to hire attorneys in all the countries as in the individual applications

o Costs about $5k, compared w/ same per country in other instances- Requirements

o Need a mark (drawing or typed) plus evidence of use (specimen) to complete

It’s a picture of - Benefits of registration

o Nationwide exclusivity, notice to other users, presumption of ownership

o Not a shield against superior rights- Make sure you get the client to sign the declaration

o The declaration includes assertion about the state of mind of the applicant

o Only need to submit a specimen for one type of goodo Although as a best practice, you should submit for each specimen

type.- How do we correct ethical problems?

o Disclosure – always disclosure

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1/26/09o Make sure you and potential client are on the same pageo Conflict

Reduce likelihood of conflicts of interest Get client name & affiliated parties, also potential adverse

parties Compare adverse parties to existing, fmr. Clients Get client & affiliated parties on list of clients Ongoing responsibility to watch for conflicts

I.e. keep watching throughout the duration of the representation

State bar ethics hotlineo Pre-filing deadlines / reminders

Followup reminders for US filing Deadline for foreign filing claiming priority to US case

Say something’s filed in France on Feb. 1, 2010, you’ll have to file w/in a certain deadline in the US

Deadlines for US filing under § 44 (d): filing date (priority) from foreign app or (e): priority and basis for registration

Why not file immediately internationally after you file in the US?

The trademark might be rejected If some of your app gets rejected, you’ll have to amend Practically speaking, wait about 4 months If you know the mark is going to go through and the list

of goods & services are routine, then you can file right away and not worry about it

Absolute deadline for the Paris convention is 6 monthso Prosecution deadlines / reminderso Office action responses

SIX MONTH INEXTENDIBLE DEADLINE That is whenever USPTO sends something to you, you have 6

months to respond § 44 foreign priority claim deadlines (TEMP 1000) Usually have multiple reminders Opposition period end

Monitor pending trademark apps. For opposition for marks similar to client’s mark

Say client is McD’s, you’d look for any mark that starts w/ ‘Mc’ or ‘Donald’

You can still file a petition to cancel a mark even after opposition ends

Periodic status checks You’ll want to check on your applications periodically

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Statement of use filing after allowance in § 1(B) intent to use applications

Have to show you’re using the trademark w/in 6 months

You can pay a penalty and submit it later nowo Post-registration deadlines / reminders

Between 5th & 6th year after registration, file §8 Declaration of use and § 15 Declaration of incontestability

Between 9 and 10 years after registration file §8 Declaration of Use and §9 Renewal

Six month grace periods available for fee- Trademark primer

o Trademark policy goals: Protect consumers? Protect trademark owners?

o Trademarks identify source of products and / or serviceso Any word, design, slogan, sound, symbolo Ordinary trademarks / service markso Less common:

Certifiaction marks (Good Housekeeping) Collective membership (ILGWU)

o Mark Subject Matter types Logo

Can often register logo’s as words or logo’s Word (“standard characters”) Trade dress – product / packaging

(non-functional, distinctiveness) Color (distinctiveness)

o Law sources Fed. , state statutes, & case law Fed. Lanham Act uSCA §§1051-1129 aka §§1-47 43(a) unfair trade practices Mostly federal law in practice[

o Basic Principles First to use has superior rights Must indicate source: “distinctive” – inherent vs. acquired

distinctiveness Does it indicate source or not Two different types: inherent and acquired Acquired – you show other forms of evidence that the

mark has been use for a long time and now the consuming public does thing that indicates source

The more distinctive, the bettero Strength

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o Strong marks are distinctiveo Strong marks are protectable

Coined> Arbitrary>

o Suggestive > Descriptive >

Generic Any of the top 3 get in

o Requirement of Use Actual use – common law rights, basis to acquire nationwide

federal rights Intent to use – basis for priority of federal app, still need to

show actual use for registrationo Conflicts

Likelihood of confusion? Similarity of marks Distinctiveness of marks Similarity of goods and services Actual confusion

o Famous Marks Treated differently Likelihood of confusion N/A – you don’t need to show actual

confusion Only need to show “dilution”: Blurring – detract from uniqueness Tarnishment – harm reputation

o Protecting TM Rights Self-policing – must be proactive Federal court action – can file a complaint or DJ (Declaratory

judgment) Choose your words carefully in that

Cancellation / opposition via TTAB (Trademark Trial & appeal board)

This is arbitration proceedings Can go to try and cancel their registration or if it’s still

pending, you can oppose it Very popular to enter into coexistence agreements w/ 3rd

parties Say your client uses a surname

Federal registration not required but helpfulo Federal Register

Principal Register Actual Use Distinctive Not confusingly similar

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Supplemental Register Not distinctive enough Can amend to Principal after 5 years of use Can still use the ® symbol

o Trade Names v. Trademarks Often coincide Trade name registration via state agency (www.wisconsin.gov - CRIS) Need trade name particulars when researching company for

business or a lawsuit (agent for service of process) Can be hard to figure out home state

o Trade Dress Product trade dress

Shape and appearance of product must e distinctive (inherent or acquired)

Functional not protectable Packaging trade dress

Easier to protect- Domain names and the internet

o Clear, register, transfer domain nameso Domain name registrars – manyo Foreign language domain names coming onlineo Example registrar: network solutionso www.networksolutions.com o Demonstrationo If domain name is available, still need to clear the trademark itself to

make sure no one has the trademark name- Domain name conflicts and transfer

o Negotiation often the best optiono Federal Anticybersquatting Protection Acto (civil lawsuit in federal court)o Uniform Domain Name Dispute Resolution Policy (“UDRP”) at WIPO

- Choosing a trademarko Trademarks (goods) vs. service markso Picture marks vs. word markso Strong vs. weak markso Coined / arbitrary / suggestive = inherently distinctiveo First use (in a market) wins

- Federal Registrationo Not required, but usually worth ito Benefits: nationwide exclusivity, notice to other users, presumption of

ownershipo Not a shield against superior rights held by prior unregistered users

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o Need mark (drawing or typed) plus evidence of use (specimen to complete

o Principal vs. supplemental register (supplemental if not distinctive enough)

- Difference between a drawing and a specimen- Choosing a good mark

o Distinctive marks are registerableo Marks unlikely to cause confusion are registerableo Brainstorming / searching a list after educating client on principles

and before use of the mark is preferred approach- Marks w/ common terms

o Distinctive in aggregate is enougho Aggregate of ordinary words not enougho Usually have to disclaim common terms

I.e. say they’re not really part of the mark but you get rights on the composite

o Generic name is not a trademark by itself, but generic can be used in a mark

o Can overcome lack of distinctiveness through §2(f) declaration of 5 years continuous use (signed by client)

- Mark Strength (Distinctiveness)o Coined / composite marks (Kodak)o Business people often don’t like coined marks (need to build brand,

lack meaning)o Suggestive, not descriptive (Obsession perfume)o Fanciful or arbitrary – common word that does not describe (Bugle

Boy, Amazon)o Ordinary word w/ novel design / pictureo Marks other people are using

These are the worst because other people are using them - Bad Marks

o TMEP 1200 deals w/ strength of marks – substantive examinationo Subject matter trade name, trade dress 1202o Immoral or scandalous matter, deceptive 1203o Miscellaneous 1204-06o Confusion 1207 (typical rejection)

- Fixing Bad Markso Amend the good / services to avoid conflicts, argue no confusion

You can’t add, only limito Acquired distinctiveness through useo Consent agreement (no likelihood of confusion – they take your word

for it apparently if you say there’s not a conflict)o Disclaim elements in the mark (descriptive terms)

- Business people like bad marks

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o Often choose mark and commence use before searching or seeking advice

o Descriptive especially popularo Pro-se filings often have problemso (some non-fixable, e.g. applicant or mark)

Notes 2/2/2010

U.S. Registration Review- Actual use “in commerce”Distinctive (inherent or acquired)Not confusingly similar (in context)Misc barriers – see TMEP § 1200 Distinctive + Unlikely to cause confusion probably registerableNot a shield against prior unreg’d users

- Let’s say you’ve got 20 different types of goods- You could submit 20 different specimens- Or you could use the mark on a POS display, a header on an end cap- File intent to use apps on possible marks before commencing actual use

Some things can’t be fixed:- wrong applicant, wrong mark- If there’s confusion, you may be able to file a coexistence agreement

Giving Bad News- Best to deliver news promptly, verifiably- Written vs. verbal have pros and cons- Advice to client can create liability for client (e.g. atty. Recommend sufll

search or discontinue use of mark, ignored advice can mean bad faith and enhanced damages for client)

Why Search?- Avoid future conflicts with superior rights- Avoid dead-end applications- Avoid investments in dead-end mark- How much? – value, plans for mark- Judgment call – too little is bad, but too much can get in way and be problem

too- Inevitably uncertain – advise client of this

Similarity of Goods / services

-Same international class = similar

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Chapter 140 in TMEP – ClassificationAcceptable identification of goods & services Manual indicate IC too- Marketing channels – wholesale, distributors, retailers, etc.- Literal similarity of words

Infringement risko How clean are your hands? Prior knowledge of adverse rights, intent,

enhaced liability (15 USC 1117)o Profits + damages + costs (+ fees & 3x?)

What to do before filing- Applicant (client name, address, entity- Goods and services generally- Classes, identification of goods for filing

o Teas vs. TEAS Plus- Filing basis for each class (actual use vs. ITU)- Who will sign declaration for entity? Why?- What manner of signing?- Mark itself – exact spelling, drawings if stylized- Suitable specimen of use if § 1(A) actual use- TEAS Plus goes through quicker- Why use TEAS ? sometimes it’s a good or service no one’s ever sold beforeMore Filing Prep- Verify actual legal name of applicant- May not be fixable, so get it right!- Each class incurs a separate filing fee – let your client know this. It’s $275 or

$325 per class- Best to have a person who can bind the corporation bind it – NOT the

attorney- Signing the form indicates that the person knows what’s going on in the

company and they attest to it’s fact- You’ll probably sign when you submit the application, but not as

How to sign the application- 1: sign directly (typed)- 2: email to second party for signature (his favorite)- 3: print out and handwrite signature

Actual Use applications – only go one way- Intent to use – you can divide the goods – have to show each individual good- The statement of use is sufficient – one per each class?

Notes 2/23/2010- You can get damages + lost profits, says Abbeglon- Can’t trademark something that looks like the U.S. flag- Can’t be scandalous- Would be worth reading through TMEP 1200

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- Want the persons signing it to have firsthand knowledge and you want to protect yourself

- Signing declaration vs. signing applicationo Declaration = firsthand knowledgeo Application = attorney

- Make sure you get the mark itself right- Make sure you’ve got a suitable specimen- It’s good practice to use a specimen for each good- You need at one specimen for at least each listed good per category- Can use labels or packaging or POS display- Can use a new specimen, but must have been in use at time of filing if based

on actual use- If specimen not accepted, amend to §1(b) , get new specimen- Blackout period – can’t submit specimen between publication and allowance- Once you get notice of allowance you get 6 mos. - Then you can extend out if you haven’t shown use out until three years, then

it’s abandonedo 2nd and subsequent extensions you need to provide reasons. They’re

not hard to find- He recommends sending out a trademark guidelines document

Between 5th and 6th years file declaration of use- You want the firsthand person to do this- Optionally can file a § 15 decl. of incontestability

o Only have to do this once

Office Actions- Identifies any confusingly similar marks- Lists other problems – description of goods, classes, specimen, mark, etc.- Examiner will generally tell you what your options are to fix- Sometimes Examiner will call you before office action- No LOC – argue marks differ

o Points of comparison for a word mark are appearance, sound, meaning, and commercial impression

o Contrast appearance (e.g. spelling)o Contrast soundo Contrast meaning

- You can get a consent agreement to help buoy your case- Objection – not distinctive

o Just show it’s been in use for five years substantially exclusiveo Or submit evidence of prior registration

You have to submit a PDF of printout from PTO web site, not just a reference to registration #

- Responding to a final actiono Second office action usually final

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o Three options to respond: Appeal to TTAB Comply w/ examiner’s instruction Appeal to commissioner

o File a request for reconsideration – does not stop 6 month deadline

Divisional Applications- Divides one application into two or more- Divides goods / services, can divide out entire class or divide within one class- Keeps original filing date- Two or more serial #’s (original + new ones)- Electronic forms – ITU vs. ad-hoc- Useful for when some of your goods hit a road block- Say you’re only using on apples, you can divide out and leave the other two

goods pending- Costs $100 per application- Additional per-calss cost to divide depend on whether:

o You’re dividing the goods in the classo Future maintenance class will multiply if goods in one class are split

between applicationso Attorney fees will also multiply – more cases to deal with

Appeal to the TTAB- After final office action refusing registration- Based on substantive refusal- Notice of appeal and fee due within 6 months from date of Final Office Action- Appeal brief due within 60 days of Notice- Research similar cases (examples)- See TMEP § 1500

International Filing- In the U.S. there are two real choices: direct filing

o You could use the Paris conventiono The only route in some countries (those not party to Madrid)o Canada, Mexico, Taiwano Need a foreign associate in the countryo Quality of foreign associate varieso Expense varies by country and FAo Can be quite expensiveo Paris Convention issues:

Timing (6 months), availability (Taiwan) Paris Convention

National treatment No domicile requirement Right of Priority

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No mechanism for multinational application Covers nearly all countries of interest (not Taiwan) If you file w/ the Paris convention, you get the same

priority dateo

- Madrid Agreement (not US)o Based on registration only (U.S. requires use)

Registration more difficult in U.S. 12 month refusal window too short U.S. registration easier to attack Must be filed in French

- Madrid Protocol (US)o Simplified prosecutiono Single international registrationo Creates bundle of national apps / regso Simplified maintenance

Single point renewal Single point changes (name, owner, etc.)

o Flexibility Country splits to transfer OK Good / services splits to transfer OK Country-specific limits on goods / services OK

o Who can use it? Natural person or legal entity with “connection” to Madrid

system countryo Some countries are party to the agreement and the protocol

Madrid Agreement “cascade” in order: (1) industrial or commercial establishment (2) if none, then domicile (3) if none, then nationality

o Choosing where to file under Madrid Agreement or Protocol or both

Available designations, now & later Basic application or registration

Scope of good / services National law and circumstances

Vulnerability to central attacko Madrid Protocol is default allow system

Madrid Protocol Roadmap- File based on US app. or registration- Intl. Bureau at WIPO checks formalities- Mark published in Gazette, placed on Intl. Register- Like app filed direct in designated country (NOT registered, examined like

others)

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- If no refusal within time limit (e.g. 18 mos.) then like registered in designated country

- Can designate additional countries later- Basic Fee: CHF 654 = US $503- Plus per-country fees (vary greatly)

o Japan has 2nd part fees- “Central Attack”

o If someone cancels your U.S. case, it’ll cancel your Madrid caseo Intl. registration loses protection to same extento You do have the opportunity to convert the Intl. to Nat’l. apps.o 5 year limitation on this

- You can also replace a nat’l. registration with intl. registration - You can designate new Madrid countries later- Easiest form is the App. For Intl. Registration- They have a fee calculator

Trademarks – Class 7: 03/02/101. Review:

a. Effect of using TM vs. ® symbol? No bright line rule, but obviously better to give notice of TM correctly. 15 USC 1072 says that registration itself is constructive notice. So better to register sooner than later.

b. Substantive Examination – Office Actions: Identifies any confusingly similar TMs if any, list other technical problems (description of goods, class, specimen, TM, etc.), examiner will generally tell you what your options are to fix it, sometimes examiner will call you before office action and offer examiner’s amendment.

c. Responding to an Office Action: If examiner instructions make sense, then comply. Consider calling examiner to discuss options. Can and should respond electronically. 6 MONTH RESPONSE DEADLINE.

i. Typical Objection:

ii. LOC (likelihood of confusion). Examiner will cite other TM.

1. TMEP 1207.01 LOC.

2. Argue: 1) TM are different, 2) Goods are sufficient different, 3) Secondary considerations

iii. TM not distinctive enough (descriptive, surname).

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1. Argue that TM has been in use for 5 years (substantially and exclusively). The client with first-hand knowledge should do this.

2. Submit evidence of prior registrations (PDF from PTO site, not just reference.

iv. Final Office Action Response: (Typically Second Office Actions)

1. Appeal to TTAB

2. Comply with Examiner’s instructions

3. Petition director of PTO

v. Can file an appeal along with request for reconsideration, does not stop the 6 month clock, though.

d. Divisional Applications: TMEP 1110 – Divide out applications into 2 or more. Divide goods/services, entire class/within a class. Keeps original filing date. You get 2 or more serial numbers.

i. Reasons: Ready to register some but not all of the goods (not in use, conflict with prior rights, TM is descriptive of some, not all, objection to identification of some but not all goods.

ii. Fee to divide is $100. Future maintenance costs apply as well if you divide per-class.

e. Appeal to TTAB: TM Trial & Appeal Board – One option after getting Final Office Action

i. File notice of appeal with fee within 6 months, along with brief within 60 days of notice of appeal.

f. International Filing – Direct & Madrid

i. Direct: Only route in some countries, requires foreign associate, quality of whom varies, expense varies by country and associate, and can be expensive.

ii. Madrid: Available in US since Nov. 2003, easy and inexpensive, can be done electronically, no foreign associate is needed unless case gets into trouble, it is a default “allow” system that grants TM absent objections, and is based on US application or registration

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(either a “base” application or “base” registration). You want to choose your base app./reg. to be “durable” or incontestable. They must also have good identification of goods.

1. Madrid Protocol vs. Agreement: Some countries are party to one or another. US is protocol, Libya to agreement. When you file you base your filing on a “base” application where you have an effective industrial establishment. This allows you to choose in which country you file.

2. Madrid Protocol Roadmap : File based on US app./reg. or based on rights in other country; Intl. Bureau at WIPO checks formalities; TM published in Gazette, placed on Int’l Register; Like app filed direct in designated country (Not yet registered); If no refusal within time limit occurs (e.g. 18 months), then TM is registered in designated country; can designate in additional countries later.

2. Today: Last Session of “Practical Training.” After today we will do cases

a. Legal Strength of TM:

i. How well does the TM identify the source of goods/services (how distinctive is the TM?)

ii. What rights does client hold in the TM by virtue of their use and/or registration (duration and extent of use vs. opponent)

iii. So the questions are: How distinctive is the TM, and how strong are your rights in it vs. opponent.

b. Analysis:

i. Identify distinctive portion of TM (the part that can be protected)

ii. Classify distinctive portion as 1) coined, 2) fanciful/arbitrary, or 3) suggestive

1. Coined TMs: Fairly easy to identify – Made up words without any meaning except as source identifier (Kodak).

a. Scope of protection: Can’t be used by others as TM even for unrelated goods and with no competition.

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b. Uniqueness of TM implies all uses come from the same source (LOC from multiple users)

c. Coined TMs that are formed as composites: Weaker to the extent they may be suggestive (Accuride = accurate ride)

2. Fanciful/arbitrary TMs: Blur a bit with suggestive. Common words with meaning, but not relating to the goods. (Amazon books).

a. Scope of protection: Concurrent use may be allowed if sufficiently unrelated goods, not famous (Delta faucets v. Delta Airlines)

i. Famous TMs are protected against dilution even for unrelated goods.

3. Suggestive TMs: Ordinary words that don’t describe but invoke an impression

a. Scope of Protection: Lower than Coined, Fanciful/Arbitrary.

4. Ordinary TMs: Common words not inherently distinctive, often relating to goods services.

a. Descriptive/laudatory: Not an indicator of source. Acquired distinctiveness might apply . Fair use will be available to others.

b. Geographic: Literal and accurate use – generally unprotectable against other accurate users. Acquired distinctiveness might apply . Fair use will be available to others. Stronger versions are indirect geographic TMs (Chicago Pizza vs. State St. Brats). Non-descriptive use of geographic terms (AmExpress not directed to America)

c. Personal Names: Generally weak TMs because not distinctive, memorable or unique names may be stronger, acquired distinctiveness applies. Strong TMs are those non-recognizable as name. Even stronger are well-known historical names.

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5. Generic TMs: Name of product or service no matter who is the source. Sometimes TMs start out distinctive and end up being generic (Aspirin, Thermos). Example: If you have a patented product and refer to it with its Trade Name, people will refer to it by its Trade Name, and the TM becomes generic.

3. Scope of protection available depends on classification and strength of TM

4. Fair Use Generally:

a. Not as a TM: Not used as a TM!

b. Descriptive: Used as an adjective to describe your goods/services literally. Affirmative defense even for Sec. 15 Incontestability per Sec. 33. “Use, other than as a mark” exempts. This is the case even if the TM is incontestable – in use for 5 years and user files with the PTO to show continuous use – the TM may not be challenged under validity, registration, or ownership. The TM may still be challenged as abandoned, having become “generic,” or obtained fraudulently.

c. Nominative: Non-confusing use to refer to describe others’ product (“Will work with Panasonic products”). Put a disclaimer on it to make sure Panasonic’s TM isn’t confused with your goods/services.

d. Comparative: Non-confusing use to accurately compare your product to others’ products. (Perfume business). If you compare to show advantage of your product, be accurate and disclaim to avoid confusion of your relationship with other TM.

5. Avoiding/Resolving Disputes Short of Litigation:

a. Coexistence Agreements – Can resolve registration conflicts, but only in some countries (US ok, not in China). You can work around this – assign the TM to the same local entity, and they prosecute it to issuance to get registration and China allows it (they have the same TM for produce and construction equipment, for example), and then assign it back to you.

i. See example coexistence agreement: Resolve pending dispute, provide for future cooperation. This should not be filed with the registrar. Instead, boil the agreement terms down to non-confidential basic terms and file that.

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ii. The agreement may be limited and less invasive to only prevent parties to register in certain classes, as opposed to never using in certain classes.

b. License Agreements – Cheaper than continued litigation. These are used when one party has superior rights (one party is likely to win a case). Infringement cases are treated as if the licensor was using the TM. Scope of license is therefore limited. Licensor tells licensee how to use TM with restrictions. Agreement must be recorded in some countries. It may ask for sales report, audit rights.

i. Avoid Franchise Surprise: Under some circumstances a license may be considered a franchise agreement, and franchises are highly regulated: Franchisee sells goods under Franchisor’s TM. Review state law that governs franchise formation.

c. See INTA www.inta.org

6. TM Dispute Types:

a. Infringement:

b. Dilution: Wrongful use of famous TMs by weakening/tarnishing TM. FTDA (Dilution Act) Elements: 1) Famous and distinctive? 2) Junior use commercial and after TM became famous? 3) lessens ability of TM to identify source?

c. Cybersquatting: Buying domain name with intent to sell to actual TM owner with no intent to use it themselves (Bad Faith). ACPA (Anti-Cybersquatting Protection Act) Elements: 1) Bad faith intent to profit, 2) Distinctive TM, 3) Identical or LOC with domain name, 4) Protectable under US Federal TM laws.

7. Main Issues:

a. Consumer confusion likely? – Do we have a case?

i. Similarity (Class similarity, not a factor in dilution, zone of expansion re: future confusion)

ii. Actual completion

iii. Other lesser factors

b. Who has priority? – Who was the first to start using?

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i.

c. Intent of junior user? – Right to keep using?

i. Deliberate/bad faith or coincidence? If not in bad faith and TM unknown in the area, TM use may continue. If TM is registered, use is never in good faith (Registration=Constructive Use)

Historical Overview of Trademark & Trade Dress

- The old common law doctrine of passing off- What is functional?

Inwood Laboratories v. Ives Laboratories

- Product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article

- This is still the primary test- They were dealing with the color of pills

o And they said the color of pills were functional

Qualitex

- Tried to trademark the color of laundry press pads- The court enlarged the Inwood definition to include:- … that is if excessive use of the feature would put competitors at a significant

non-reputation-related disadvantageo (thereby allowing color)

- The court in TrafFix Devices clarified that they meant for the Qualitex test to be used only when the Inwood test was not satisfied

- Even if aspect is non-functional, copying of that aspect may still be permissible if competitive necessity, e.g. aesthetic functionality applies

o Meant to stop you from extending your utility patent through trademark

o

Traffix Devices

- they tried to extend their patent through trademark- The court says you have to bear the heavy burden that the trademark is non-

functional

Deere v. Farmhand

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- Despite secondary meaning, color use OK – farming equipment colors should match

- H: competitors can use that exact same color even though there was secondary meaning b/c the color is functional

- Farmers like their equipment to match and you can’t get into the market w/o the same colored stuff

Similar – Brunswick

- Color black on outboard engines in functional- Competitive necessity test: if features is the best design or one of a few

superior designs, exclusivity of feature would hinder competition so not protectable as a trademark

-

De Jure vs. De Facto Functionality

- The court allows de facto functional features to be trademarkedo E.g. the shape a of a bottle that’s an artistic choice even though it holds

liquido Vs. de jure functional where the shape is the best form of the product

No protection- 4 factor test from In re Morton-Norwich Products

o (1) existence of a utility patent disclosing the utilitarian advantages of the design – that’s a big factor

o (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages;

o (3) the availability to competitors of functionally equivalent designso And (4) facts indicating that the design results in a comparatively

simple or cheap method of manufacturing the producto

Confusion - Similarity of Goods / services- Same international class = similar- Dissimilar goods = confusion unlikely- Similarity not a factor in dilution

o Doesn’t depend on consumer confusion

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- Zone of expansion = future confusion so coexistence may not be allowed- Where can you file complaint as plaintiff, or declaratory judgment action if

defendant?- Significant advantages for home field- Can determine success / failure

Review Intent: Good or Bad Faith- Did junior user choose mark deliberately because of similarity with senior

user’s mark?- Good faith (when junior user adopted):

o Senior mark unknown to junior user & o Senior mark unknown in junior user’s territory

- NO GOOD FAITH use of something put in the federal register

Defenses- Unclean hands- Estoppel- Laches (slept on rights)- Fnctionality- Parody- Fair Use

Comparative Fair Use- you’re comparing your product to theirs- Non

Purpose of TM Law- Provide confirmation to consumers:

o Source identifying function- Prevents consumers from being confused - Protects goodwill of merchants, encourages accountability- Unfair competition broader than TM infringement

o § 43(A) – two different kinds of confusion that can be a cause of actiono (1) where you’re confused about sourceo (2) where somebody gives a false or misleading description of fact

about their goods or someone else’so Can be brought by anyone who feels they’ve been damaged

Benefits of Registration- Exclusive nationwide ownership- Official notice to all later users- Right to put ® after- Right to immunize mark from certain challenges if the mark is kept in

continuous use for five years after the registration date- Legal presumption that the registrant is the owner of the mark

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- Supplemental register is for marks w/ less distinctiveness, get to use ® easy to apply for the principal register after 5 years of use

Foreign Use- What sort of foreign use counts for U.S. registration?- If they’re promoted in the U.S. but are offered exclusively overseas- Where it’s exclusively used for services offered outside the United States, it’s

not enough - It didn’t matter the fact that the operator of a restaurant in Italy had

distributed - A recent broader decision, International Bancorp

o Court held that a mark was used in commerce where it identified the source of services that a foreign casino operator offered to United States citizens

Test: (1) “united states citizens went to and gambled at the casino” which was a “subject of a foreign nation” and (2) the casino used its mark in its United States advertisements for the casino.

The casino’s gambling services therefore constituted “foreign trade,” which fell under the commerce clause

- Fourth Circuit emphasized that the owner must both engage in qualifying commerce and use or display its mark in the sale or advertising of these services to the consumers that engage in qualifying commerce

- One exception:o If the mark has become famous in the U.S. it may be treated as “used

in commerce” for purposes of establishing a right of priority even thought the services associated with the mark are only available overseas

- Some authorities have questioned the validity of this doctrineo Ninth circuit held that proof of secondary meaning w/o more was

insufficient o Instead a substantial portion of consumers in that territory would

have to be familiar w/ the foreign mark

Secondary Meaning- Secondary meaning:

o In that trade and to that branch of the purchasing public, the word or phrase had come to mean the article was his product –the trademark

o Varies by jurisdiction- Personal names generally treated as descriptive marks

Personal Names- Things like “Howard Johnson”, “Bacardi”, “Liz Claiborne” etc.- Must be associated with goods or services- What if two people use the same name?

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o Two bros. have businesses w/ Findlay in the nameo The “primary” significance of the mark is determinative

Trade Dress- Must be distinctive by reason of the shape or color or texture …- If you’re seeking protection, you must prove that:

o (1) the trade dress of the two products is confusingly similaro (2) the features of the trade dress are primarily nonfunctionalo (3) the trade dress is inherently distinctive or has acquired secondary

meaning- Product configuration vs. design

o Product configuration / design protection may not be obtained on the basis of inherent distinctiveness

o Whereas product packaging can be inherently distinctive Two Pesos

o Buttresses the Qualitex decision where color can’t be inherently distinctive

o Must also be consistent- Sound, Scent Color

o Cannot be inherently distinctiveo But secondary meaning and you’re a goo E.g. law & order “doink doink”

Works of Art, Celebrity Likenesses, Fictional Characters- Stylistic elements of artwork can’t be used

o Infringes on the doctrines of copyright- And also provides additional ways to extend copyright past when they’d

ordinarily be in the public domain- Literary works, publications can be trademarked if they acquire secondary

meaning

Foreign Words- Doctrine of foreign equivalents – figure out the translation

o Idiomatic uses are sufficient – doesn’t have to be a perfect translation- Also international comity – generic English words not protected in other

jurisdictions and vice versa- Registration has been refused on the grounds that English mark & foreign

have the same meaning even w/ different sound- W/ unregistered marks, most courts have treated similarity of meaning as

just one part a three-part test, which considers sight, sound and meaning

Benefits of Foreign Registration- Presumption of validity, constructive notice

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- Can become incontestable after 5 years- Improves owner’s ability to block the importation of infringing goods

Disclaiming Words, Immoral, Scandalous, etc…- Some debate as to whether you can register a mark if it’s entirely disclaimed- Also can’t register wildcards, e.g. LIVING XXXX where XXXX is another likely

disclaimed term- Can’t have marks that are deceptive, scandalous, disparaging, false

geographic indications for wine and spirits that are false- Deceptive marks

o (1) must falsely describe the goods or serviceso (2) must be one that the prospective purchaser is likely to believe is

trueo (3) that mistaken belief must be likely to materially affect the

consumer’s purchasing decision- Flags, municipalities, etc. unregisterable

o Statute of Liberty was found registerable- Living individuals’ signatures are barred- Former Presidents’ signature while wife still alive

Opposition- Period limited to 30 days after the mark is published

Effects of Incontestability- In essence, descriptiveness is not grounds for cancellation or defense for

infringement

- Only things like abandonment, fraudulent obtainment, becoming generic, etc.

Effect of Registration in the Supplemental Register- Still subject to cancellation, no real protections- Can help if you’re trying to get acquired distinctiveness

Seabrook Factors for Packaging Trade Dress- (1) a common basic shape or design- (2) unique or unusual in the field of use- (3) mere refinement of ornamentation for a particular class of goods viewed

as such by public- (4) capable of creating a commercial impression distinct…

Artistic, Musical, Expressive Works- Musical expression OK if indicates source- Problematic: normally subject of copyright, so you get a conflict

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- Can’t register single work - Numbers and Alphanumberics: inherent or 2ndary meaning- If it started out as a model or part #, then it’s descriptive so 2ndary meaning

only

Foreign Words- Translate foreign term to English for comparison- Do the same thing for descriptiveness or genericness- Same thing for geographic significance

Deceptive Not eligible- falsely describes- Person is likely to believe- Official seals & flags not allowed- Signatures of living person, deceased US president while spouse alive

DuPont Factors – for ??- Conditions under which sales are made i.e. impulse v. careful- # of goods and nature of similar marks in use on similar goods- A valid consent agreement between the applicant and the owner of the

previously registered mark

The Geographic, vulgar, signatures of people, flags, function can all be overcome by 2ndary meaning

Surnames not eligible - registerable w/ 2ndary significance- You can overcome of course w/ 5 years of substantially exclusive and

continuous use

The Paris Convention- If you file in the U.S. w/in 6 mos. Of a foreign application, you get the original

(foreign filing date)- However, you can’t file infringement actions unless the registration is based

on use in commerce- Can maintain the mark up to 6 years even without use in commerce

Madrid Protocol- U.S. is not a signatory on the Madrid Agreement, but joined the Madrid

Protocol in 2003- 12 or 18 month time limit in refusing registration

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o Registrations last for 10 years, may be renewed in a single application- But will be canceled if the home country registration lapses- If cancellation applies only to certain categories, then only those categories of

goods will be invalidated

State Registration- state common law and legislation are generally not preempted by the

Lanham Act

Assignments & Licensing- Transfers of a mark must contain the accompanying good will otherwise it’s

an “assignment in gross”- Licensing - you can’t license outside the business it was previously used

Infringement & Unfair Competition- Two-step analysis:

o (1) P must establish mark is valid and enforceable, that plaintiff is owner of the mark, with a right of priority over the D with respect to that mark

o (2) P must establish that D used the mark in connection with goods or services in a way that’s likely to cause confusion

o The 2nd step is the same under state v. fed., 1st is not- If registered in the principal register:

o Prima facie evidence of validity and its registration If the mark has become incontestable, the registration is

conclusive evidence of the validity of the mark - Supplemental register

o P must establish that it has used the mark in connection with the offering of goods or services to the public

- If the mark changes over time, the previously used mark is “the legal equivalent of the mark in question or indistinguishable therefrom” then you can get the original priority date

o The standard is described as “extremely strict” for tacking- In Federal Trade Dress infringement actions w/ unregistered dress, have to

show the dress is non-functional- “Likelihood of confusion test”:

o whether “an appreciable number of ordinarily prudent consumers” are likely to be misled or confusion into believing that the junior user’s product or service either originated with the senior user, or had some connection to the senior user

o Considerable debate over this “objective standard”o Confusion must be “probable”

- Factors in judging confusion – the Polaroid factorso (1) strength of the senior marko (2) degree of similarity between the two marks;

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o (3) the proximity of the products or serviceso (4) the likelihood that the prior owner will “bridge the gap”o (5) evidence of actual confusion;o (6) the defendant’s good faith in adopting the mark in questiono (7) quality of the defendant’s product; and o (8) sophistication of the buyers

- Marks can be “formative” that is, an owner can have an entire family of marks that are protected

o “Mc” in McDonald’s is a good exampleo McXXX was protected even though “Mc” itself was not registeredo Also must be recognition among the purchasing public of the family

- Competitive Proximityo Courts are to consider: “content, geographic distribution, market

position and audience appeal”o A restaurant, Liederman presumably did not conflict with Lederman o Wine cheese & salami found to be competitive products because they

were often served together (E & J Gallo Winery )- Strength of Plaintiff’s mark

o Measured by: (1) degree to which it is inherently distinctiveo (2) the degree to which it is distinctive in the marketplaceo Composite marks: examine the mark as a whole

- Consumer sophisticationo Often times based on the type of good (Expensive, complicated, etc.)

- Actual confusiono Often times has no impact on the case b/c holders bring suit before a

mark can be brought into the marketo Otherwise, anecdotal evidence or surveys

- Bridging the Gapo Likelihood that a competitor will enter the junior user’s market

Reverse Confusion- Where the junior user’s mark leads the consumer to believe a product comes

from the junior user- Courts have held the Lanham act to encompass these claims- Claims typically involve the loss of goodwill, not diversion of profits

Reverse Passing Off- Occurs when a defendant offers the public goods or services produced by

another person, but represents them as the defendant’s own goods or services

o Think: Dastar- Express – D uses own origin indicator- Or implied where the D omits the plaintiff’s origin indicator but does not

substitute its own

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- Test:o (1) the defendant misbranded plaintiff’s goods;o (2) such misbranding was “material”; o (3) the defendant caused the plaintiff’s goods to enter interstate

commerce;o (4) the defendant’s misbranding caused a likelihood of confusiono False or omitted authorships are actionable under § 43(a)

- Remember:o Dastar held that it’s the producer of the goods who must be

discredited, not the original conceiver of those ideas (Eisenhower)

False Advertising- 43(a)(1)(B) permits bringing federal claims for false advertising- These claims arise when D uses in connection with any goods or services in

commerce, “any false designation of origin, false or misleading description of fact, or false or misleading representation of fact… which , in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another perons’s goods, services, or commercial activities.”

- To prevail you must prove (by preponderance)o (1) D has made false or misleading statements as to his own product

or another’so (2) that there is actual deception of, or at least a tendency to deceive, a

substantial portion of the intended audience;o (3) that the deception is material in that it is likely to influence

purchasing decisionso (4) that the advertised goods travelled in interstate commerce;o and (5) that there is likelihood of injury to the plaintiff

- To establish (1) – that statements are false:o Must establish either that: (1) the advertisement is literally false, or

(2) although the advertisement is literally true or ambiguous, it is likely to deceive or confuse consumers

- When an ad is literally false, the court can give an injunction w/o proof of customer deception

o Absent that, have to prove public actually misled- Puffery not covered- Examples of literal falsity

o BreathAsure capsules that said they’d fight bad breath at its core- Mylanta Night time strength – false b/c not formulated for work at night time- What about “tests prove” cases?

o P voices a challenge to D’s tests, then D bears the burden of identifying the tests on which it relied

Antidilution- Meant to protect particularly strong marks

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o E.g. using “Rolls Royce” on hot chocolate – you’d be capitalizing on another producer’s goodwill

o Meant to defend against “blurring” and “tarnishment”o Blurring:

The whittling away of an established trademark’s selling power through its unauthorized use by others upon dissimilar products

E.g. “DuPont” shoes, “Buick” Aspirin , etc.o Tarnishment:

When P’s mark is linked to products of shoddy quality Found routinely when P’s mark used with pornographic

material

State Antidilution Laws- Most states have them and they’re legislation, not common law typically- Some states require the mark to be “highly distinctive”, “strong,” or “famous”;

Federal Trademark Antidilution Act- 43© of Lanham Act- Supplemented in 2006 by FTDRA

o Overturned a SCOTUS case o You don’t have to prove actual dilution only that dilution is likelyo But the universe of marks is narrower – they now have to be

nationally knowno And famous mark holders are entitled to injunctive relief

- Covers registered and unregistered marks

Dilution under 43©- Requires distinctive and famous- TDRA Famous” widely recognized by general consuming public of the U.S. as

a designation of source…”

Exceptions- nominative fair use or facilitation thereof- Noncommercial use- News reporting

Anticybersquatting Consumer Protection Act- § 43(d) of the Lanham Act- Cause of action against anyone who, with a bad faith intent o profit form the

marko Registers, traffics in or uses a domain name thato (1) is identical or confusingly similar to a mark that was distinctive at

the time the defendant’s domain name was registered; or (2) is

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identical or confusingly similar to, or dilutive of, a mark that was famous at the time the defendant’s domain name was registered

- Owners must establish:o (1) it has a valid trademark entitled to protection;o (2) its mark is distinctive or famous;o (3) the defendnat’s domain name is identical or confusingly similar to,

or in the case of famous marks, dilute of, the owner’s mark; and o (4) the defendant used, registered, or trafficked in the domain name;o (5) with bad faith intent to profit.

- Liability may only be imposed on the domain name registrant or an authorized licensee of the registrant

- Associated bad acts:o Selling domain name to trademark ownero Using name to divert business o Or tarnishment

- “confusingly similar” not analyzed under traditional likelihood of confusion analysis

o Looks only at the senior user’s mark and the junior user’s domain name.

o Courts hold a domain name is confusingly similar to a senior user’s trademark if consumers might think that the domain name is used, approved, or permitted b the senior user

o They disregard the .org, .net, etc.o Also violation if they’re dilutive, e.g. pornographic sites that use the

marko “traffics in” means just about anything for consideration or receipt in

exchange for considerationo Bad faith analysis:

(1) the defendant’s intellectual property rights if any in the domain name

(2) the extent to which the domain name constitutes the defendant’s legal name or a name commonly used to identify the defendant; (3) the defendant’s prior use of the domain name in connection with the bona fide offering of goods or services

(4) the defendant’s bona fide noncommercial use or fair use of the mark in a site accessible under the domain name; (%) the defendant’s intent to divert customers…

- Courts haven’t found bad faith where the domain name incorporates the trademark as part of a gripe site, e.g. mcd’s sucks.com

- If D thought he had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful, there’s a safe harbor provision

- You can get in rem jurisdiction over a domain name even when there’s no in personam jurisdiction

- Personal Names

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o To bring an action, the other person has to register the domain name with intent to profit from the sale or transfer of the domain name

o Use the personal name in bad faith with malicious intent to harm the reputation of the individual or the goodwill associated with the individual’s name or

o (3) use that is intended or likely to confuse or deceive the consumer as to the affiliation, connection, or association of the domain name registrant, or the domain name site with the individual

- Remedieso When a violation is establishedo The court may order the forfeiture or cancellation of the domain

name, or may order that it be transferred to the owner of the mark.o § 43(d)(2) remedies are exclusive, but § 43(d)(1) offers the full array

of Lanham Act remedieso 35(d) permits bringing a claim under 43(d)(1) to elect statutory

damages in place of actual damages and profits; a court may award damages between $1k and $100k per domain name, as the court considers just

o Domain name registrars not held liable generallyo Same with some types of editing of family movies

- Subject Matter Jurisdiction (does this go here?)o In rem jurisdiction should only be brought in Fed. Ct.o Standing to cancel or oppose federal registration

Generally you have to have some business interest Relaxed for genericness

o

- Secondary Liability- Courts (not Lanham Act) has provision for imposing liabilities on secondary

infringerso More recently 43( c ) applied for secondary liability b/c it’s a species

of tort lawo Examples: drug manufacturer liable for actively encouraging

pharmacists to pass off the defendant’s medicine as a competitor’s more expensive

o One who induces another to commit a fraud and provides the means is equally guilty

o Warner v. Eli Lily Drug manufacturer makes equivalent, urges pharmacists to

passOffice 2004 Test Drive User Pharmacists not confused, just consumers

- Contributory Liability

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o When defendant actively induces another to infringe or (2) continues to supply a product to a party that it knows or has reason to know is using the product in an infringing activity

o Has been extended to services as wello Inwood Labs v. Ives

Drug mfg. sells generics to pharmacist, mislabeled, and Inwood knows he mislabeled

Capsule colors held functional Supplier liable if (1) intentionally induces or (2) continued to

supply pharmacists who are known to mislabelo No duty upon franchisor to diligently prevent the independent acts of

trademark infringement that may be committed by a single franchisee Franchisor accountable only if intentionally induced its

franchisees to infringe … or if it knowingly participated in a scheme … carried out by franchisees

No duty to prevent the independent trademark infringement by a franchisee

E.g. flea market caseo Tiffany v. eBay

Has to be more than general knowledge there’s infringement. They have to have contemporary knowledge of particular current or future infringing listings is necessary

Pretty unsettled area- Vicarious Liability

o Most courts use vicarious liability via agency lawo Joint tortfeasor standard

May bear vicarious liability for trademark infringement by another. This theory requires a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with thid parties or exercise joint ownership or control over the infringing product

If D and infringer have (1) actual or apparent partnership AND (2) can bind each other w/ third parties

o Hard Rock Sued operator of a flea market for infringement of individual

vendors of a flea market Flea market operator did not meet the test

1st Amendment Defenses- Parodies – good faith, strength of mark, likelihood of confusion, etc. are

factors- 1st amendment not really a defense- In commercial context

o Lanham Act applies

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o Parodies affect LOC analysis – if they know it’s not from the actual source, then no confusion

o Expressive merchandise (coffee cup, T-shirt)- Defensive issue vs. Lanham Act not applicable- Artistic works – balances public interest of having artistic works against

consumer confusiono Pretty rare – Rogers v. Grimaldi

Lanham covers artistic works only when public interest in avoiding confusion outweighs public interest in free speech

Unless title has no artistic relevance, Lanham Act is n/a Cliff Notes – expands to all artistic works and parodies, not just

titleso Barbie Girl song

Pure artistic expression – allowed b/c cultural icon Especially true when assumes non-source meanings

o Distinguish Dr. Seuss v. Penguin Books Commentary about O.J. trial in style of Dr. Seuss books Dr. Seuss not target of commentary, less justification in using

o It’s public interest in avoiding consumer confusion would outweigh he public interest in free expression

o Velvet Elvis != parody o Subtle parody – LOC (Bud v. Balducci)

Michelob Oily No disclaimer, used altered strong marks, plausible

advertisement, more than “conjure up” original, actual confusion

To be a true parody, it has to make fun of the actual product- Also expressive merchandise (coffee cup, T-shirt)- In a commercial setting, parody not an affirmative defense

o But if the parody is obvious, then it affects LOC analysis- Dilution

o Parody not affirmative defense, but affects blurring or tarnishment, (no LOC)

o Deere & Co. vs. MTD Prods. Deere TM depicted as cowardly No blurring (no use on other products) Tarnished from depiction of cowardly deer (undesirable

association) Use by competitor – dilution more likely

Incentive to tarnisho Hormel v. Henson

No blurring by using Spa’am character (not related to expressive movie use) Parody obvious – would strengthen association of SPAM with

Hormel’s goods

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Marks dissimilar Spa’am not used as mark

o Free speech issues – little weight in ordinary commercial ads or sales of non-expressive goods – more weight in expressive context

Affirmative defenseso Abandonment

Requires an intent to abandon If you resume use of an abandoned mark, it’s like starting all

over again Burden of showing differs from court to court (voluntary) – bona fide use discontinued w/ intent not to

resume or express abandonment (involuntary) Conduct of owner (act or failure ot act) causes

mark to become generico Voluntary Cessation of Use

Nonuse for 3 consecutive use constitutes prima facie evidence that the mark has been abandoned

Prima facie showing of intent Owner must then produce evidence showing intent to

resume If prima facie showing can’t be made, challenger must show

non-use and no intention to resume in foreseeable future Over 3 shifts the burden of production Defenses include reasonable grounds and must produce

evidence of an intent to resume use of the mark “within the reasonably foreseeable future.”

o Must demonstrate there were reasonable grounds for suspending use

of the mark and must be more than sporadic evidence of an intent to resume use of the mark “within the reasonably foreseeable” future

A bare statement, assertion, etc., won’t doo Other causes of abandonment:

- Naked Licensing:o If the owner allows the licensees to depart from quality standards, the

public will be misledo Need to put in K the restrictions on the mark so it doesn’t run willy-

nilly So, write a consent agreement

Sets boundaries of use b/w parties Intended to avoid confusion No control either party

- Assignment in gross:o When the mark is transferred separately from the goodwill that it

represents – basically keep it in the same family of products- First sale doctrine

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o Usually you’re OK from infringemento But the goods can’t be materially altered

Also called trademark exhaustion- Use, Altered, or Refurbished Goods – falls under first sale

o Generally OK, but it all depends on how they’re alteredo Reconditioned spark plugs repaired, but not labeled accurately

enough were found to be infringingo Likelihood of confusion still importanto Davidoff v. PLD

Not OK to remove perfume labels – don’t want goods diverted from one channel to another

They removed the batch codes – it would influence the purchase decision

o Nitro Leisure Prods v. Acushnet Reconditioned golf balls, repainted and marked w/ original TM

Clearly marked as refurbished New goods: material diff. threshold low

Used goods: higher threshold, are refurb goods so different that using original TM would be a misnomer?

- Gray Market Goodso Goods made outside the U.S. that can’t be imported, so if they are, is it

trademark infringement?o Lanham act and Tariff Act both have remedieso Basically the test is if the gray market goods are materially different in

their characteristics or not E.g. Spanish cabbage patch kids w/ Spanish birth cert.’s caused

consumer confusion- Laches

o Equitable doctrine – estoppels by Lacheso Happens when a plaintiff has failed to act diligently in asserting its

rights – those who sleep on their rights, lose them.o Turns on whether P knew of infringement (either actual or

constructive)o Is a defense under the Lanham Acto Can be negated if the Plaintiff establishes “progressive encroachment”o Where enough of an infringing use to invoke laches, but P does not

bring suit b/c nature of infringement is such that P’s claim has yet to ripen into sufficiently colorable to justify litigation

- Acquiescenceo If P gave D an express or implied assurance that P would not assert its

trademark rights against the D- Unclean Hands

o Any willful act concerning the cause of action which rightfully can be said to transgress equitable standards of conduct

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- “Classic” Fair Useo Use of a the term… is otherwise than as a mark – descriptive of and

used fairly and in good faith only to describe the goods or services of such party, or their geographic origin

o E.g. “VCR-2 for second video inputo Fish-Fry for breading fisho Safari for boots imported from Africa

Applies even if mark incontestableo Key here is that it’s other than as a marko Distinguish from: Brew-Nuts

Used prominently w/ big characterso Must establish:

(1) its use of the p’s mark was not as a trademark or servicemark,

(2) it is using the mark “fairly and in good faith” (3) it is using the mark only to describe its goods or services KP Permanent Make-Up v. Lasting Impression:

P has burden of demonstrating likelihood of confusion Some likelihood of confusion is OK

- Nominative Fair use

o Used in competitive advertising where you have to talk about the competitor’s product

o D must establish: (1) the P’s goods or services at issue are not readily identifiable

without use of the P’s trademark (2) D used only as much of the mark as was reasonably

necessary to identify the plaintiff’s goods or services and (3) D did nothing that would, in conjunction with the mark,

suggest sponsorship or endorsement by the trademark owner.o New Kids on the block

D newspaper ran a popularity contest re band members, refers to band

Used to identify plaintiff’s band Ex:

Barbie in satirical photos Reference to Lad Diana on commemorative goods

Not fair use: Images of Porsche on car wax ads

- Comparative Advertisingo Competitive advertising. – widely accepted

Nominative is more about when no other term can describe the product, I guess

o Compare to: xyz product in a Walgreenso “knock-off perfume” – compare to CK1

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- Federal Preemptiono Fed. Statutes preempt any sort of state rulingo E.g. where a state law would confer a sort of patent monopolyo Sears v. Stiffel

Copied unpatented lamp Claim under IL unfair comp. law SCOTUS says no claim, can’t get patent protection via state law

claim- Eleventh Amendment

o § 40 of Lanham says it’s o Can’t sue stateso Very unclear area of law

- SOLo ‘nuff said

Remedies:- Injunctions (nuff said)- Seizure and destruction

o 34(d) authorizes seizure of goods bearing counterfeit marks as well as the means for making such counterfeit marks, any records related to such counterfeiting

- Destruction of Infringing Articles- Cancellation of Federal Registration- Disclaimers- Monetary Awards

o Actual Damages, Defendant’s profits, and costso (duplicate recovery prohibited though)o Enhanced Damages and Prejudgment Interesto Can get up to treble damages (willful infringement)o If the court finds that the amount of profits is inadequate or excessive

to compensate the plaintiff, the court may award any amount that is just, based on the circumstances, as long as it is compensatory and not punitive

o Attorneys’ fees – when there’s willful, malicious, or fraudulent infringement,

o Statutory damages $500-$100k per mark per type of goods $1,000-$100,000 per domain name

o Requirement of Marking or Actual Notice If you have the ® symbol, it’s constructive notice Otherwise you need actual notice

- Limitations on Remedieso Federal Dilution Law

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Ordinarily, only injunctive relief available, unless willful intention to trade on the owner’s reputation

o Innocent Infringement by Printers & Publishers Printers and publishers can be enjoined from printing

infringing material, but they aren’t subject to damages unless they knew they were infringing

Remedies- Non-monetary

o Injunctions Harder to get after ebay

o Seizure & destruction under 34(d)o

- Monetary Awardso P’s dmaes, Def’s profits, costs 35(a)

43(a)Tm infringe or false advertising 43(b) Dilution if willful 43( c)Cybersquatting

o Enhanced Damages, Prejudgment Interest Up to 3x actual damages (lost sales, etc) “any amount that’s just”

o Attorney’s fees under 35(a) Exxceptional cases only 35(b) atty. Fees mandatory (counterfeiting)

prejudgment interest tooo Statutory damages

Counterfeit ($1K-200k per type of good) Cybersquatting ($1-$100k per domain) Notice – marking or actual

Use of ® symbol - Criminal Penalties

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- TODO: read up on abandonment, international territorial stuff

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