Trademark Outline Fall 2015 PDF

Trademark – Fall 2015 –
TABLE OF CONTENTS
I. INTRODUCTION TO TRADEMARK AND UNFAIR COMPETITION .......................................................2
A. PRELUDE: MCTRADEMARKS ................................................................................................2
B. ORIGINS AND SOURCES OF TRADEMARK PROTECTION .........................................................2
C. WHAT IS A TRADEMARK? ....................................................................................................3
D. JUSTIFICATIONS FOR TRADEMARK PROTECTION ..................................................................5
II. TYPES OF MARKS ..........................................................................................................................8
III. ACQUISITION OF TRADEMARK RIGHTS .........................................................................................10
A. DISTINCTIVENESS ................................................................................................................10
B. ADOPTION AND USE .............................................................................................................17
i. TRADEMARK USE ....................................................................................................17
ii. USE IN COMMERCE ..................................................................................................17
iii. EXTRATERRITORIAL USE AND FOREIGN COMMERCE...............................................20
C. PRIORITY AND CONCURRENT USE ........................................................................................23
D. INTENT TO USE.....................................................................................................................26
E. OWNERSHIP .........................................................................................................................28
IV. REGISTRATION OF TRADEMARKS ..................................................................................................29
A. PROCEDURE FOR REGISTRATION ..........................................................................................29
B. BARS TO REGISTRATION ......................................................................................................32
i. 2(A): IMMORAL, SCANDALOUS, DISPARAGING MARKS ...........................................32
ii. 2(A) DECEPTIVE OR DECEPTIVELY MISLEADING MARKS ........................................36
iii. 2(A) FALSE SUGGESTION OF A CONNECTION ...........................................................37
iv. 2(B) & (C) INSIGNIAS, IDENTITIES, ETC ....................................................................39
v. 2(D) CONFUSING MARKS .........................................................................................40
vi. DILUTING MARKS....................................................................................................42
vii. 2(E) GEOGRAPHIC TERMS, SURNAMES, AND OTHER BARS .......................................43
viii. 2(E)FUNCTIONALITY................................................................................................46
V. LOSS OF TRADEMARK RIGHTS ......................................................................................................48
A. GENERICISM .........................................................................................................................48
B. ABANDONMENT ...................................................................................................................51
i. NON USE .................................................................................................................52
ii. ASSIGNMENT IN GROSS, NAKED LICENSING, FAILURE TO POLICE ...........................53
VI. INFRINGING USE ...........................................................................................................................54
A. INFRINGING USE (REGISTERED §32, UNREGISTERED §45) ...................................................54
B. POINT OF SALE INFRINGEMENT ............................................................................................56
C. PRE-SALE, POST-SALE, INITIAL INTEREST CONFUSION & REVERSE CONFUSION .................57
D. SECONDARY LIABILITY ........................................................................................................61
VII. OTHER THEORIES OF LIABILITY ....................................................................................................61
A. SECTION 43(A) .....................................................................................................................61
i. GENERALLY; INFRINGEMENT OF UNREGISTERED MARKS........................................61
ii. TRADE DRESS ..........................................................................................................61
iii. FALSE DESIGNATIONS AND REPRESENTATIONS .......................................................64
iv. FALSE ENDORSEMENT & AUTHOR’S AND PERFORMER’S RIGHTS OF ATTRIBUTION .65
v. FALSE AND MISLEADING ADVERTISING ..................................................................67
B. DILUTION .............................................................................................................................69
VIII. DEFENSES .....................................................................................................................................71
A. STATUTORY DEFENSES ........................................................................................................71
B. COMMON LAW, EQUITABLE, AND CONSTITUTIONAL DEFENSES ..........................................74
i. FIRST AMENDMENT AND THE ROGERS TEST ............................................................74
ii. NOMINATIVE OR REFERENTIAL FAIR USE................................................................76
iii. FIRST SALE ..............................................................................................................78
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I. INTRODUCTION TO TRADEMARK AND UNFAIR COMPETITION

A. PRELUDE: MCTRADEMARKS
i. Case: Quality Inns Intl., Inc. v. McDonald's Corp.
1. Facts: Quality Inns announced a new chain of economy hotels to
be marketed under the name "McSleep Inn." McDonalds freaked
out “McSleep” infringed on McDonald's family of marks that are
characterized by the use of the prefix "Mc" combined with a
generic word. Quality Inns sought declaratory judgment that the
mark "McSleep Inn" (1) did not infringe McDonald's federally
registered trademarks in violation of; (2) did not constitute a false
designation of origin or a false description or representation of
services as being associated with or originating with McDonald's
in violation of; and (3) did not infringe or violate any common law
rights that McDonald's may have to its marks. McDonalds
counterclaimed, adding a state dilution claim.
2. Holding: The court found that there was a likelihood of confusion
based on survey evidence submitted by McDonalds, the actual
appearance in the marketplace (where McD’s and McInns would
be), the markets were similar and related (dining and lodging, with
feasible expansion from one to the other), and that the owner
intended to use the mark to benefit off the “Mc” association (He
was an idiot and said in interviews that’s what he was trying to do).
3. The Two Marks: McSleep Inn (for lodging) vs. Mc+Generic
word (generally associated with restaurant services).
ii. The “Trademark Formula”: The mark is (mark) for (Category of
Products/Services) .
iii. Trademark Infringement Basics: Valid Mark + Likelihood of
Confusion
1. Trademark law gives the owner of a mark the right to preclude a
use by a junior owner of a mark that causes or is likely to cause
confusion
B. ORIGINS AND SOURCES OF TRADEMARK PROTECTION
i. Freedom to compete: The freedom to engage in business and compete for
the patronage of prospective customers is a fundamental premise of the
free enterprise system. Competition in marketing of goods and services
incentivizes making quality products at a reasonable price and fosters the
general welfare by promoting the efficient allocation of economic
resources. Note: INS v. AP is mentioned here, as the case hinged on unfair
competition of INS “appropriating to itself the harvest of those who have
sown…”
ii. Common Law Trademark (the origin of modern trademark): prior to
the passage of the Lanham Act, trademark law was “primarily a common
law creature”. The common law mark was acquired by use; i.e. if you used
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“ACME” as a mark for cheese in Pittsburgh, you got the mark ACME for
cheese sold in Pittsburgh. If you expanded, the mark went with you.
iii. Case: The Trade-Mark Cases (1879)
1. Facts: In a time of narrow Commerce Clause interpretation, Justice
Miller overturned Congress’ statutes that created a trademark
registration system at the federal level. The system was justified
based on the the Progress and Commerce clauses. Miller hated the
justification, stating that the statute didn’t point to interstate
commerce and the Progress clause analysis was tenuous at best.
2. Note: After the Trade-mark Cases. Congress enacted a series of
trademark registration statutes based on its Commerce Clause
authority, and eventually created the Lanham Act, which passed
constitutional muster.
C. WHAT IS A TRADEMARK?
i. Trademark (definition as per the Restatement of Unfair Competition
§9 ): A word, name, symbol, device, or other designation, or a
combination of such designations that is distinctive of a person’s goods or
services and that is sued in a manner that identifies those goods or
services and distinguishes them from the goods or services of others. A
service mark is a trademark that is used in connection with services
Trademarks include:
1. Brand Names identifying goods(Dole for pineapple)
2. Trade Dress consisting of the graphics, color, or shape of
packaging or, after sufficient use, of goods (Coca Cola Bottle for a
soft drink)
3. Service Marks identifying services (McDonald’s for restaurant
services)
4. Certification Marks identifying goods or services meeting
specified qualifications (Woolmark for apparel made of 100%
wool)
5. Collective Marks identifying goods, services, or membership of a
collective organization (The International Game Fish Association
for a game fishing organization.
ii. Case: Hanover Star Milling Co. v. Metcalf
1. Facts: Petitioner and respondent independently adopted the brand
“Tea Rose” for flour in the 1880’s. Both printed the brand name
and a rose design on their flour sacks and barrels. When one of the
manufacturers sold flour to a retailer in the other’s geographic
region, each of them filed a trademark suit enjoining the other from
selling flour there.
2. Holding: since both parties adopted the mark in good faith, they
could limit the use of the other party in the area where they were
the senior user. See Tea Rose-Rectanus Doctrine, infra.
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3. Foundational Work: the doctrine successfully laid the

groundwork for trademarks to be considered as being the “source
identifier” of the good.
iii. Case: Mishawaka Rubber and Wooolen Mfg. Co. v. S.S. Kresge Co.
1. Reason for TM: “Whatever the measure employed, the aim is the
same – to convey through the marks, in the minds of potential
customers, the desirability of the commodity upon which it
appears. Once this is attained, the trade-mark owner has something
of value. If another poaches upon the commercial magnetism of
the symbol he has created, the owner can obtain legal redress.
iv. Case: Yale Electric Corp v. Robertson
1. Reason for TM: “The law of unfair trade comes down very nearly
to this… one merchant shall not divert customers from another by
representing what he sells as emanating from the second”
v. Case: Prestonettes, Inc. v. Coty
1. Reason for TM: “a trade-mark only gives the right to prohibit the
use of it so far as to protect the owner’s good will against the sale
of another’s product as his… When the mark is used in a way that
does not deceive the public we see no such sanctity in the word as
to prevent its being used to tell the truth. It is not taboo”
vi. Lanham Act Definitions for:
1. A “mark”: a mark includes any trademark, service mark,
collective mark, or certification mark.”
2. A Trademark: includes any word, name, symbol or device, or
any combination thereof –
a. Used by a person, or
b. Which a person has a bona fide intention to use in
commerce and applies to register
c. 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 goods, even if that source is
unknown
3. A Service Mark: any word, name, symbol or device, or
combination thereof—
a. Used by a person, or
b. Which a person has a bona fide intention to use in
commerce and applies to register
c. To identify and distinguish the services of one person from
the services of others and to indicate the source of the
services, even if that source is unknown. Titles, character
names, and other distinctive features of radio or
television programs may be registered as service marks
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D. JUSTIFICATIONS FOR TRADEMARK PROTECTION

i. Case: INS v. AP
1. Facts: See INS comment, supra. The trademark takeaway was the
unfair competition that INS was creating by scooping AP’s stories
and passing them off as their own. Essentially, the doctrine of
“reaping where one has not sown”, which is a touchstone of TM
and unfair competition law.
ii. Case: Stahley v. M.H. Jacobs
1. Facts: Plaintiff sells razors under the mark “Stahley” and “Live
Blade”. Plaintiff was in bad financial shape and couldn’t purchase
all razors from a producer of them. The producer kept 45,000
razors as a result since Plaintiff wouldn’t pay, and then used them
to levy a loan. Once the producer defaulted on that loan, defendant
took the levied razors in foreclosure and attempted to sell them.
The razors were defective, but still bore plaintiff’s mark; defendant
was selling them without saying they were defective and not
actually from Plaintiff.
2. Holding: the court found that “trademark laws and the law of
unfair competition are concerned not alone with the protection of a
property right existing in an individual, but also with the protection
of the public from fraud and deceit.” The sale was deceitful, but
defendant had a right to sell the razors, as it would be silly to levy
unsellable goods in a loan. The middle ground met was that they
had to label the razors as clearly defective with a bad pawl spring
and say they were not backed by Stahley’s traditional 1 year
warranty.
iii. Case: Alfred Dunhill Ltd. v. Interstate Cigar Co.
1. Facts: Plaintiff produced tinned tobacco. Some of its tobacco got
wet on a trip from London to the U.S. and suffered water damage.
Dunhill set aside the tobacco and tried to put in an insurance claim.
As per the terms of the claim, they could get a lump sum of 25% of
the tobacco value or have the insurer salvage sell the tobacco and
collecting full face value. They opted for salvage. Defendant
bought the salvage tobacco (which had no terms or limits on it for
resale), and knew it was damaged. Plaintiff harassed defendant to
try and get them to label the tobacco as salvage but to no avail.
Eventually they became embroiled in litigation
2. Holding: The court found that Dunhill had waived its right to
complain because it had opted for cheapie insurance that didn’t
cover relabeling in the event of a salvage insurance claim. They
could have gotten the salvage labels if they hadn’t been stingy, so
they can’t try to get the same result now just because they don’t
like someone selling their salvage tobacco.
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iv. Case: Stork Restaurant, Inc. v. Sahati

1. Facts: There was a fancy club in New York called the “Stork
Club” that was described in a newsreel as the “Best and most
publicized night club in the entire world”. The café had been in
business since 1934, served expensive food and beverages, and had
music and dancing facilities, employed 240 people, and brought in
millions. They gave customers lavish gifts, were well published
and publicized nationwide, and had a movie made about them by
Paramount. Their logo was a stork on one leg in a top hat.
Defendants had a small bar in San Francisco called the Stork’s
Club. Defendants had recently bought it from the former owners,
and it had only been around since 1943. It had 10 stools at the bar,
4 employees, and only such food as necessary to keep its liquor
license. There are a few tables, no dancing, and while there used to
be a pianist and orchestra, there was no longer. They had a napkin
with a stork wearing a top had, and they used those napkins (left
over from the last owner), but never ordered new ones.
2. Holding: The court found that there was potential “confusion of
source” or “dilution of good will”. Similarly to the “reaping where
one has not sown” argument of INS, the court determined that
people could have thought that perhaps this was a more humble
branch of the NY club, and the law protected “…even the most
uncommonly naïve from deception from unfair competition.” The
court said that the defendants needed to “divest themselves of the
plumage borrowed from the Stork”, and choose a different name.
v. Case: Champion Spark Plug Co. v. Sanders
1. Facts: Plaintiff makes spark plugs it sells under the name
“Champion”. Defendants refurbish used plugs and resell them.
They keep the word “Champion” on the repaired or reconditioned
plugs. On each refurbished plug is stamped in small letters, blue on
black, “renewed”, which at times is almost illegible. The boxes
clearly say “renewed”. Plaintiff sued, saying this was confusing as
to source.
2. Holding: Invoking Prestonettes, supra, the Court found that since
the mark was used in a way that does not deceive the public, there
was no sanctity in the work to prevent it from being used to tell the
truth. Yes, Sanders got a little advantage from the mark, but it’s
permissible because first sale doctrine? Nominative fair use?
vi. The Purpose of Trademarks: Policy Perspectives
1. Brown: Advertisements exist to persuade consumers rather than
inform. However, Brown thinks all ads should inform. Some ads
contain “pseudo information”, i.e. “this soap washes cleaner” (soap
is soap). Brown thinks that the law should exist to stay consumer
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oriented and protect buyers from deceit. Trademark and

advertisement are consumer oriented, with no regards for property
rights in marks; marks have value derived from there inherent
value as marketing tools. He believes that people pay more for
products because of advertisement, and that people shouldn’t pay
more for a brand if there is a generic, because the products are
interchangeable.
2. Landes and Posner: Economic theory of Trademarks, where
marks (1) assure quality products or services by helping consumers
identify features they associate with the product so as to build an
expectation of quality with a brand; (2) save consumers search
time for the brand (i.e. Sanka instead of “the decaffeinated coffee
made by General Foods”).
3. Sheff: Trademark exists to give producesrs and exclusive right to
access the consumer goodwill that attaches to a particular work ot
symbol; this incentivizes producers to produce high and consistent
quality products associated with the marks. Secondly, trademark
lowers consumer search costs, facilitating welfare increasing
transactions. Essentially, trademark serves three purposes: (1) to
inform consumers, (2) to persuade consumers and (3) to bias
consumers.
a. Brand equity: The reason some consumers will pay more
for a branded product than an unbranded product.
4. Litman: Litman’s article focused mainly on reasons against
protecting trademark. She argues that consumers focus on the
extrinsic value of marketing, an as such create a notion that
branded products are worth “more” than unbranded products that
are identical. Litman does not agree with Landes and Posner that
focus should be on the brand because she thinkgs customers should
participate in the creation of the atmospheric value of the mark,
and customers should get latitude to use a trademark in a variety of
ways that consumers see, so long as the use isn’t unfair. Litman
thinks producers should only be able to protect the informative
content associated with the marks, but trademark law should not
protect “value” so long as the secondary connotation does not
confuse consumers (i.e. a Louis Vuitton lover should be able to set
up a fan page for all things Louis Vuitton without fear of being
sued so long as the site does not confuse consumers).
a. For example, should Kellogg’s only be allowed to use
Batman on Frosted Flakes if it provides extra “value”?
b. Should Polo Ralph Lauren be the only person that can use a
polo mark?
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vii. Case: Kellogg Co. v. National Biscuit Co.

1. Nabisco sued Kellogg’s for making and selling “shredded wheat”.
Nabisco previously had a patent on the process and devices for
making shredded wheat, but both had passed into the public
domain. The court found that Nabisco had no exclusive right to use
Shredded Wheat as a trade name, because the product is generic
and descriptive (how else do you describe shredded wheat?). Since
the patent was expired, they could not have a monopoly on the
process, name, or shape of the biscuit. Kellogg’s use was fair, as
they were not trying to “pass off” their biscuits as Nabisco’s; they
were clearly labeled “Kellogg’s”. This case was a warning about
descriptive and potentially generic trade names; court’s won’t give
them protection.
II. TYPES OF MARKS
A. Word Marks
i. Case: Coca- Cola Co. v. Koke Co. of America
1. Facts: Coca Cola sued Koke, Co., who made an imitation cola
product that it sold to soda fountains nationwide. Koke contended
that the Coca-Cola “trademark, in itself, and the advertisements
accompanying it made such fraudulent representations to the
public that the plaintiff had lost its claim to any help from the
court.”. The issue was that despite the name “Coca-Cola” the
brown beverage contained neither cocaine, nor cola nuts. The
supreme court disposed of this, saying that the use of Coca-Cola
was not deceptive because in the interim Coca Cola had acquired
secondary meaning that does not mean Coca and Cola nut, but
rather the plaintiff’s familiar product as sold in soda fountains.
Accordingly, Koke got wrecked, and Coca Cola won.
B. Slogans: Slogans can function as trademarks.
1. Examples of slogans currently in use:
a. “Open Happiness” for Coca Cola
b. “Choosy Moms Choose Jif” for peanut butter (Smucker’s)
c. “The Ultimate Driving Machine” for automobiles (BMW)
d. “Rethink Possible” for telecommunication’s services
(AT&T)
e. “P&G Proud Sponsor of Moms” for detergent, razors,
diapers, and snack food (Proctor and Gamble)
2. Descriptive Slogans: If slogans are straightforwardly descriptive,
it must acquire secondary meaning through extensive, continuous,
and substantially exclusive use.
a. i.e. Clairol’s “Hair color so natural only her hair dresser
knows for sure” for hair tinting, dyeing, and other coloring
preparations” was held to be OK, because Clairol had
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solder $50 million of the product, expended $22 million in

sales and advertising.
b. Contrast with In re Boston Beer, where TTAB failed to
register “The Best Beer In America” because it was “a
common phrase used descriptively by others; it’s nothing
more than a claim to superiority”. This was despite $85
million in sales and $10 million in ad revenue.
c. Contrast with In re Eaglecrest, where the Marine phrase
“Once a Marine, Always a Marine” was found to be a
message, and not a source identifier. The slogan must
identify the source; if it doesn’t do that, it might not be
registrable.
C. Scent Marks: fragrance that is not functional or the primary feature of the
product (i.e. Diapers or Febreeze, or perfumes, colognes, or scented household
products). The example of the registered mark given was scented embroidery
threat and yarn. No other producer made scented embroidery threads and yarn,
and people associated hers as “the yarn that smelled”, so it was indicative of
source.
D. Service Marks: Service marks are trademarks used to distinguish the source of
services rather than goods; i.e. “Stork Club” for restaurant services rather than
liquor or food or “Rethink Possible” for telecommunication services rather than
hardware. The Federal Circuit broadly defines “services” as some labor
performed fr the benefit of another. Services performed only for the benefit of the
owner of the mark, such as advertising the owner’s own goods, are not considered
a service.
E. Collective Marks: marks that indicate that the product bearing the mark belongs
to a group of products that share particular characteristics. Collective marks
communicate that a product comes from a member of the collective entity that
owns the mark, i.e. “Unilever” for personal hygiene products such as soaps and
shampoos. There are two types of collective marks
i. Collective Service Marks: used by members of an organization to
distinguish their services, i.e. REALTOR used by members of the
National Association of Realtors to identify and distinguish their property
selling trade.
ii. Collective Membership Marks: Designations used by individual
members to indicate that they are members of a group. Such marks may be
owned by collective organizations that never use the symbols of their
organization in connection with commercialization of goods or services,
such as fraternal benefit societies like the Knights of Columbus.
F. Certification Marks: a name, symbol, or device, or any combination thereof
used by any person other than its owner or which its owner has a bona fide
intention to permit a person another than the owner to use in commerce and files
an application to register on the principle register to certify regional or other
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origin, material, mode of manufacture, quality, accuracy, or other

characteristics of such person’s goods or services or that the work or labor
on the goods or services was performed by members of a union or other
organization.
G. Note: Trademark in Film Titles: Trademark protections are not extended to
titles of single creative works such as movie, television show, book, or song titles.
However, filing an ITU and applying for trademark for a series (i.e. the Walking
Dead) could get your trademark protections. For film, some people use the
MPAA’s TRB (Title Registration Bureau), which uses contract law to protect the
titles of distributed movies in the United States. One can also use unfair
competition or trademark infringement under state laws and the Lanham Act for
unregistered marks so long as they have “secondary meaning”, shown through
marketing effots, sales, surveys, and more. And example would be Warner Bros.
v. Global Asylum, Inc., where Asylum created a mockbuster called “Age of
Hobbits” about a new species of prehistoric creature found in Indonesia, slated to
be released 3 days before The Hobbit: an Unexpected Journey.
III. ACQUISITION OF TRADEMARK RIGHTS

A. DISTINCTIVENESS
i. Inherently Distinctive Marks
1. Case: In re. Quik-Print Copy Shops, Inc.
a. Facts: Applicant claimed use of the mark “Quik-Print” for
printing and duplication, which falls into the general
category of “printing”. The court found that “Quik-Print”
was the same as “Quick-Print” which simply meant fast
printing or duplication. The applicant tried to denigrate the
use of the term as something that just describe fast printing,
and that was suggestive, but there was evidence that “Quik-
Print” is used all over the United States by others.
b. Holding: A mark is merely descriptive if it immediately
conveys to one seeing or hearing it knowledge of the
ingredients, qualities, or characteristics of the goods or
services with which it is used; whereas a mark is
suggestive if imagination, thought, or perception is
required to reach a conclusion on the nature of the goods or
services.
2. Case: Qualitex Co. v. Jacobson Products Co., Inc.
a. Facts: Plaintiff Qualitex Co. had used a green-gold color
for the pads which it sold to dry cleaning firms to use in
their dry cleaning presses. Defendant Jacobson Products
Co. was a rival of Qualitex. In 1989, Jacobson began
selling their own pads to dry cleaners which were a similar
color to those of Qualitex. In response, Qualitex filed a
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lawsuit against Jacobson in the United States District Court

for the Central District of California for unfair competition.
In 1991, Qualitex registered the green-gold color of its pads
with the United States Patent and Trademark Office as a
trademark, and subsequently added a trademark
infringement count to its lawsuit.
b. Holding: The Court reasoned that colors constitute
descriptive trademarks, because while colors do not
automatically evoke a connection to any product by
themselves, they could take on secondary meaning over
time, in the course of use in the marketplace. In this way, a
color could serve the chief purpose of trademarks, that of
identifying the source of a particular product. Here there
was a functional consideration to be weighed (color lets
you see stains), but any color could work, not just green-
gold. Since it was source identifying and had been used in
commerce, etc, the court found secondary meaning. Thus,
Qualitex’s “green gold” as a color was trademarkable.
i. Functionality: a product feature is functional and
cannot serve as a trademark if it is essential to the
use or purpose of the article or if it affects the cost
or quality of the article. Essentially, if the use of
color puts a competitor at a “significant non-
reputation based disadvantage”, then the color use
could be barred.
3. Case: Christian Louboutin v. Yves Saint Laurent
a. Facts: Louboutin makes all its shoes with a red sole. Yves
Saint Laurent started making shoes in a variety of colors
with red soles, including shoes with red soles. Louboutin
sued, claiming that its “red sole” was protectable trade
dress.
b. Holding: To merit protection, a mark must show
“distinctiveness” by proving that the mark is inherently
distinctive or by showing the mark has acquired secondary
meaning in the public eye. In examining a mark for
secondary meaning, a court will ask whether “the public is
moved in any degree to buy an article because of its
source,” using such factors as
i. (1) advertising expenditures;
ii. (2) consumer studies linking the mark to a source;
iii. (3) unsolicited media coverage;
iv. (4) sales success;
v. (5) attempts to plagiarize the mark; and
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vi. (6) length and exclusivity of the mark’s use.

The Court noted Louboutin’s significant investment in the
red sole mark, media coverage of the mark, and the public’s
close association of the mark with the brand. The Court
ultimately held that “the lacquered red outsole, as applied
to a shoe with an ‘upper’ of a different color, has ‘come to
identify and distinguish’ the Louboutin brand, and is
therefore a distinctive symbol that qualifies for trademark
protection.” This also means that Yves Saint Laurent was
allowed to have an all red (sole included) shoe.
4. Case: Walmart v. Samara Brothers, Inc.
a. Facts: Samara Bros. had a popular line of clothes for
infants decorated with appliques of hearts, flowers, fruits,
etc. that it sold at certain chain stores like JCPenney. A
producer made copies, with minor modifications, and
supplied the “knockoffs” to Walmart. Samara sued
Walmart infringement of unregistered trade dress. (§43(a)).
b. Holding: The court found that essentially, so long as the
trade dress was (1) nonfunctional and (2) distinctive, a
§43(a) claim could stand. For distinctiveness, a mark can
be intrinsically distinctive (born distinctive) if its
“intrinsic nature serves to identify a particular source”.
You determine this with the Abercrombie factors,
discussed, infra. A mark may also acquire secondary
meaning, even if it is not inherently distinctive, if it has
developed secondary meaning, which occurs when “in
the minds of the public, the primary significance of a
mark is to identify the source of the product rather than
the product itself”.
However, as applied to the facts of the case, the Court
determined that trade dress and design are almost never
inherently distinctive and need to acquire secondary
meaning. Scalia wrote that “Consumers should not be
deprived of the benefits of competition with regard to the
utilitarian and esthetic purposes that product design
ordinarily serves by a rule of law that facilitates plausible
threats of suit against new entrants based upon alleged
inherent distinctiveness”.
5. Case: Two Pesos, Inc. v. Taco Cabana
a. Facts: Taco Cabana was a fast food chain in Texas that had
decorations consisting of “artifacts, bright colors, paintings,
and murals, the patio included interior and exterior areas
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with the interior patio capable of being sealed off from the
outside by overhead garage doors. The restaurant had a
“stepped exterior that was festive and vivid in color scheme
using top border paint and neon stripes with bright awnings
and umbrellas”. Two Pesos opened and had a motif very
similar to Taco Cabana, and Taco Cabana sued Two Pesos
for trade dress infringement.
b. Hodling: The court held that distinctive trade dress is
generally entitled to protection under the Lanham Act
because users of a trade dress "should be able to maintain
what competitive position it has and continue to seek wider
identification among potential customers." The Court Held
"even if not registered, remain inherently capable of
distinguishing the goods of the users of these marks.
Additionally, a business owner that copies a trade dress
"may be seen as falsely claiming that his products may for
some reason be thought of as originating from the
plaintiff." Justice White also held that the Lanham Act did
not include a secondary meaning requirement for trade
dress, concluding that "a secondary meaning requirement
for a nondescriptive trade dress would hinder improving or
maintaining the producer's competitive position."
Furthermore, he concluded that a secondary meaning
requirement would have anticompetitive effects because a
competitor could "appropriate the originator's dress in other
markets" prior to the establishment of the secondary
meaning and "deter the originator from expanding into and
competing in these areas."
6. Case: Abercrombie and Fitch Co. v. Hunting World, Inc.
a. Facts: Abercrombie sold several products under the mark
“Safari”, including men and women’s outer garments
including hats, cotton piece goods, men and women’s outer
garments, including shoes, and woven cloth, sporting
goods, apparel, etc. Hunting World sold hats and shoes
using “minisafari” and “Safariland”. A&F sued. The court
let A&F argue out the definition of Safari on shoes, as
“Safari” to describe shoes was arbitrary or suggestive and
not descriptive, and it had passed into incontestability
territory. They also let them keep “Safari Mills” for
“cotton piece goods”.
b. Holding: The court came up with the now popularly
known Abercrombie factors to classify word marks.
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c. Abercrombie Factors: descriptive words can get

trademark protection if they develop a secondary meaning.
The protection only exists for source-designating uses of
the word, not descriptive or generic uses of the word. There
are categories of trademark that can automatically qualify
for secondary meaning. All of the categories are as follows:
i. Generic: A generic term is the common name for
the products or services in connection with which it
is used, such as "salt" when used in connection with
sodium chloride. A generic term is not capable of
serving the essential trademark function of
distinguishing the products or services of a business
from the products or services of other businesses,
and therefore cannot be afforded any legal
protection. This is because there has to be some
term which may generally be used by anyone—
including other manufacturers—to refer to a product
without using some organization's proprietary
trademark. (i.e. “Shredded Wheat”).
ii. Descriptive: A descriptive mark is a term with a
dictionary meaning which is used in connection
with products or services directly related to that
meaning. An example might be Salty used in
connection with saltine crackers or anchovies. Such
terms are not registrable unless it can be shown that
distinctive character has been established in the
term through extensive use in the marketplace.
iii. Suggestive: A suggestive trademark tends to
indicate the nature, quality, or a characteristic of the
products or services in relation to which it is used,
but does not describe this characteristic, and
requires imagination on the part of the consumer to
identify the characteristic. Suggestive marks invoke
the consumer’s perceptive imagination. An example
of a suggestive mark is Greyhound for bus services.
iv. Arbitrary: An arbitrary trademark is usually a
common word which is used in a meaningless
context (e.g. "Apple" for computers). Such marks
consist of words or images which have some
dictionary meaning before being adopted as
trademarks, but which are used in connection with
products or services unrelated to that dictionary
meaning. Arbitrary marks are also immediately
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eligible for registration. Salty would be an arbitrary

mark if it used in connection with e.g. telephones
such as in Salty Telephones, as the term "salt" has
no particular connection with such products.
v. Fanciful: prima facie registrable, and comprises an
entirely invented or "fanciful" sign. For example,
"Kodak" had no meaning before it was adopted and
used as a trademark in relation to goods, whether
photographic goods or otherwise. Invented marks
are neologisms which will not previously have been
found in any dictionary.
7. Case: In re Chippendales USA, Inc.
a. Facts: Chippendales tried to register the “Cuffs and Collar
Mark”. Which is a costume that is cuffs on the wrists and a
neck collar that is a bow tie. In determinin whether the
mark was inherently distinctive at registration, the court
used the Seabrook factors.
b. Seabrook Factors: used to determine whether trade dress
was inherently distinctive at the time of registration. The
court looks at the mark and determines
i. Whether the mark is a common basic shape or
design
ii. Whether the mark is unique or unusual in the
particular field it is used in
iii. Whether the mark is a mere refinement of a
commonly adopted and well known from or
ornamentation for a particular class of goods or
services viewed by the public as a dress or
ornamentation for the goods or services
iv. Whether the mark is capable of creating a
commercial impression distinct from any
accompanying words.
c. Holding: The court found that the mark was based on the
“bunny suit” mark of Playboy, and thus it was not
inherently distinctive trade dress.
8. Case: Rock ‘n Roll Hall of Fame & Museum v. Gentile Prods.
a. Facts: Plaintiffs sought to enjoin defendants from
distributing and selling posters and other products which
infringe plaintiffs’ “ROCK AND ROLL HALL OF
FAME” and unique building design trademark. The
Museum’s “unique and distinctive” building design was
approved “for trademark and service-mark purposes” in
1996. In the same year, a professional photographer called
Page 15 of 79
Charles Gentile sold “a poster featuring a photograph of the

Museum against a colorful sunset.” The Museum filed a
trademark lawsuit contending that the photo of the building
and the title of the poster “infringes upon, dilutes, and
unfairly competes with” their trademarks and service mark.
The Museum argued that the photographer used “the
Museum’s trademarks on posters in a manner which
reflects a deliberate attempt to confuse, mislead and
deceive the public into believing that the posters are
affiliated with the Museum.
b. Holding: the court found that the museum failed to show a
likelihood of success on its merits of its infringement claim,
due to its inconsistent use of the museum's design to serve a
source-identifying function (they let people use in in quilts
and skyline illustrations of the city). The Court said not all
inherently distinctive symbols function as trademarks. To
be protected, designation must create separate and distinct
commercial impression which performs trademark function
of identifying the source of merchandise to customers. The
photograph was not a mark used to show the source of
goods or services, but rather the good or service itself.
The trademark holder had been inconsistent in its use of the
building's likeness. Further, the use of the name was fair
use.
ii. Acquisition of Secondary Meaning
1. Secondary meaning definition(As per R. 3d Unfair
Competition §13(e)): A designation that is not inherently
distinctive, such as a word that describes the nature of the product
on which it appears, nevertheless may become, as a result of its use
by a specific person, uniquely associated with that person’s goods,
services, or business. Such acquired distinctiveness is called
“Secondary meaning”, which refers to a subsequent significance
added to the original meaning of the term. It is applicable to
designations such as graphic designs, symbols, packaging features,
and product designs; in these contexts secondary meaning denotes
that the feature, although not inherently distinctive, has come
through use to be uniquely associated with a particular source.
2. Case: American Waltham Watch Co. v. United States Watch Co.
a. Facts: Plaintiff brought suit seeking an injunction against
Defendant from advertising its watches as “Waltham
Watch” or “Waltham Watches” and from marking its
watches in such a way that the word “Waltham” is
conspicuous. It was settled that “Waltham”, which once
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was only a geographical location, had acquired secondary

meaning as a designation of the watches made by Plaintiff.
b. Holding: The court found that the plaintiff, merely on the
strength of having been first in the field, may put later
comers to the trouble of taking such reasonable precautions
as are commercially practicable to prevent their lawful
names and advertisements from deceitfully diverting the
plaintiff’s custom. United States could use Waltham as a
designator, but had to distinguish his goods in some way
from American Waltham’s.
3. Case: International Kennel Club of Chicago, Inc. v. Mighty Star
Inc.
a. Facts: the IKC (Plaintiff) is an Illinois business corporation
that is a show giving member club of the American Kennel
Club. It sponsors two major dog shows a year, spent $60k
of its $231k revenue in advertising its shows and PR.
Defendant marketed a stuffed line of its “Polar Puff” toys
called “International Kennel Club” for a line of stuffed
dogs that came with certificates for membership and
pedigree. In its mark search, defendants came up with IKC,
but their lawyer said it wouldn’t be an issue because IKC
was local and they wouldn’t compete. People got confused,
and called IKC, mailed them, etc. asking if they were
related to the dogs. IKC sued for infringement and a PI
limiting defendants use of International Kennel Club. IKC
had to prove its mark had secondary meaning, and the court
used the following standard to determine:
i. Secondary meaning determining factors used by
court: amount and manner of advertising, volume
of sales, length and manner of use, direct consumer
testimony, and consumer surveys.
The court found that secondary meaning had been
established by the above, and that there might be a
likelihood of confusion. The class of people for which the
mark had secondary meaning to was a “small but very well
defined group in Chicago and elsewhere” that used specific
nationally circulated dog magazines and regeional
publications to let purebred dog breed enthusiasts keep “in
the loop”.
B. ADOPTION AND USE
i. TRADEMARK USE
ii. USE IN COMMERCE
1. Lanham Act Definitions:
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a. Commerce: all commerce which may be lawfully

regulated by Congress
b. Trademark: any word, name, symbol, phrase, or device,
or combination thereof which is:
i. Used by a person or,
ii. Which a person has a bona fide intention to use in
commerce and applies to register on the principal
register.
c. Use in Commerce: the term “use in commerce” means the
bona fide use of a mark in the ordinary course of trade, and
not made merely to reserve a right in a mark. A mark shall
be deemed to be in use in commerce
i. On goods when
1. It is placed in any manner on the goods or
their containers or the displays associated
therewith or on the tags or labels affixed
thereto, or if the nature of the goods makes
such placement impracticable, the on
documents associated with the goods or their
sale, and
2. The goods are sold or transported in
commerce
ii. On services when it is used or displayed in the sale
or advertising of services and the services are
rendered in commerce, or the services are rendered
in more than one State or in the United States and a
foreign country and the person rendering these
services is engaged in connection with the services.
iii. Note: the added definition for “use in commerce”
was to specify that the use must be made “in the
ordinary course of trade, and not made merely to
reserve right to a mark, as was done in Procter and
Gamble, infra.
d. Analogous Use: Use that isn’t statutorily “use in
commerce”, but which courts find to meet the standard, i.e.
advertising campaigns to announce the launch of a new
product, or taking orders for a product that will soon be on
the market. The analogous use can sometimes be “tacked”
onto actual use for the purposes of establishing priority.
The key is that the trademark owner must show this kind of
prior use created an association in the minds of the
purchasing public between the mark and the goods.
2. Case: Proctor and Gamble v. Johnson and Johnson
Page 18 of 79
a. Facts: P&G made a “minor brands” program to attempt to

maintain registrations of hundreds of trademarks for goods
that P&G was not selling. Under the program, P&G would
affix a label bearing the trademark to other, similar, goods
in its product lines (or even to a rival company’s goods of
the type for which the trademark would be claimed) and
then ship them for sale out of state; no advertising
accompanied these sales, and the sales were not accounted
together with P&G’s non minor brands. It let P&G have
trademarks ready when it developed a new product, but it
rarely used minor brands when they were developed. It had
the incidental, if not intentional, effect of warning
competitors away from adopting those mark for their own
relevant goods. Here, P&G had the mark “Sure” for
deodorant. Then they registered “Sure” for tampons, and
bought “Assure” from a close mark for mouthwash and
shampoo. They circulated “Sure” tampons in minor brands
since 1964. Defendants made a deodorant tampon and
named it “Assure” and tried to register the mark; USPTO
denied registration based on Plaintiff’s registration.
Plaintiff sued Defendant, and defendant counterclaimed
that the minor brands program was not a use in commerce.
b. Holding: The court invalidated “token sales” and minor
brand programs to establish use in commerce, and
Congress later amended the Lanham Act to a new
definition for use in commerce.
3. Case: In re Dell Inc.
a. Facts: Dell sought to register “QUIETCASE” as a
trademark for computer workstation hardware, and pointed
to a website printout showing its workstation with a
bulleted list of features of the workstation, one of them
being “QUIETCASE”. TTAB rejected it, saying that the
webpage was not a use in commerce.
b. Holding: The court held that web pages fit within the
definition of “use in commerce” so long as the webpage
displays a product and provides a means of ordering the
product. This counts as a “display associated with the
goods” so long as the mark appears on the webpage in a
manner in which the mark is associated with the goods.
4. Case: Larry Harmon Pictures Corp. v. Williams Restaurant Corp
a. Facts: Plaintiff, a corporation owned by Larry Harmon,
a.k.a. Bozo the Clown, opposed registration of the mark
“Bozo’s” for restaurant services on the grounds that the
Page 19 of 79
registration should be denied because operation of a single

restaurant does not constitute a “use in commerce” because
it had negligible interstate customers and wasn’t on an
interstate.
b. Holding: The court doesn’t care. “use in commerce” is
broad. Bozo’s restaurant rendered services to customers
traveling across state boundaries. It’s not required that
services be rendered in more than one state, and there is no
such thing as a minimum threshold of interstate commerce
to be met to be afforded mark protection.
5. Case: Maryland Stadium Authority v. Becker
a. Facts: MSA began to work at Camden Yards (a location
which had been a railroad center) on a new athletic facility:
Oriole Park at Camden Yards. They advertised the project,
referred to it as Camden Yards for years, had promotional
events, and promoted the historical qualities of the site.
During construction, Becker sold shirts that said “Camden
Yards means baseball”. MSA sued for trademark
infringement. Becker counterclaimed that since MSA had
not yet sold or shipped a good, there was no use in
commerce of their mark.
b. Holding: Advertising and promotion is sufficient to obtain
rights in a mark as long as they occur “within a
commercially reasonable time prior to the actual rendition
of service…” and as long as the totality of acts “create[s]
association of the goods or services and the mark with the
user thereof."
iii. EXTRATERRITORIAL USE AND FOREIGN COMMERCE
1. Note: The United states is a member of the Paris Convention for
the Protection of Intellectual Property. Essentially if someone
has their trademark registered in a Paris Convention or WTO
country. They can do so by:
a. Allege use or a bona fide intent to use in commerce and file
as a normal applicant would
b. Obtain registration in the U.S. on the basis of a prior
registration in the applicant’s country of origin, defined as
i. The country in which the applicant has a bona fide
and effective industrial or commercial
establishment or;
ii. in the absence of a business establishment the
country of which the applicant is a domiciliary or a
national.
Page 20 of 79
2. Case: Buti v. Perosa, S.R.L.

a. Facts: In 1987, Perosa opened the “Fashion Café” which
was a “bar with a cafeteria, not a restaurant” in Milan, Italy.
They registered “Fashion Café” in Italy in April 1988. It
never opened a Fashion Café or any other business in the
U.S. or advertised or did PR in the U.S. for Milan Fashion
Café. However, they did give thousands of T-Shirts, cards,
and key chains with their name and logo to people in the
modeling and fashion industry which gave them free meals
at the Milan café. At one point, they were negotiating to
open a Fashiona Café theme restaurant, and had a plan to
put fashion café’s in hotels in major cities, but never did
anything to bring this plan to fruition other than daydream.
In May 1993, Buti opened a restaurant called the Fashion
Café in Florida, in summer 1994, he commenced a plan to
open franchise locations. He did a search, and finding
nothing in the U.S. applied for the mark. In April 1995, he
opened in NY, another in New Orleans, and a couple
others. Perosa sued, claiming that they were the senior user
of the mark in the U.S. and that Buti’s restaurants infringed
on that mark.
b. Holding: The mere advertising or ptomotion of a mark in
the United States is insufficient to constitute “use” of the
mark “in commerce” within the meaning of the Lanham
Act when the advertising or promotion is unaccompanied
by any actual rendering in the United states or in commerce
which may be regulated by Congress. “…it is the restaurant
services – and not the advertising – that must have been
rendered in commerce in order for Perosa’s activities to fall
within the “advertising” of services branch of the Lanham
Act.
3. Case: International Bancorp, LLC v. Societe De Bain De Mer Et
Due Cercle Des Etrangers A Monaco (SBM)
a. Facts: SBM is the owner of the historic Casino de Monte
Carlo in Monaco. Wealthy individuals from all over the
world, including the United States, visit and gamble there.
SBM maintains a small office in New York that is
responsible for promotional activities in the United States,
and expends $1 million annually in the United States on
trade shows, advertising campaigns, charity partnerships,
direct mail solicitations, telephone marketing, and
solicitation of media coverage. SBM owns a valid
registration for the "Casino de Monte Carlo" trademark in
Page 21 of 79
Monaco, but not in the United States. SBM learned that

numerous websites devoted to online gambling utilized
domain names which incorporated the term "Casino de
Monte Carlo" and displayed pictures and renderings of the
exterior and interior of its casino. According to the majority
opinion in International Bancorp, these features implied
that International Bancorp and other web site operators
were affiliated with SBM's Casino de Monte Carlo.
b. Holding: The majority interpreted the term "commerce" as
including commerce between citizens of the United States
and those of another country. Based on this definition, the
majority concluded that SBM's activities constituted "use in
commerce" because, in addition to advertising the "Casino
de Monte Carlo" mark in the United States, SBM sold
casino services to United States citizens. According to the
majority, the fact that these services were rendered outside
the United States is irrelevant.
c. Note: If something is of incidental sale in the U.S. but with
no advertising, then it may not be considered “commerce”
in the U.S.
d. Note: Dissent.
4. Case: Grupo Gigante SA DE CV v. Dallo & Co.
a. Facts: Plaintiff operated a chain of stores called Gigante
since 1962. In 1963, it registered its mark in Mexico. By
1987, it had expanded to Baja California, Mexico. In 1991,
it had over 100 stores in Mexico, two were in Tiujana on
the border of Mexico/US in Mexico, just south of San
Diego. In 1991, Dallo opened “Gigante Market” in San
Diego, and then in 1996 opened another. In 1995, Gigante
began looking into expanding into the U.S. it learned of
Dallos’ market, but didn’t do anything. In 1998, Gigante
decided to expand into the U.S. They opened several stores
in Los Angeles. Dallo freaked out and sued.
b. Territoriality Rule: Priority of trademark rights in the
United States depends solely upon priority of use in the
United States, not on priority of use anywhere in the world.
c. Famous Mark exception: when foreign use of a mark
achieves a certain level of fame for that mark within the
United States, the territoriality principle no longer serves to
deny priority to the earlier foreign user.
d. Holding: To determine whether the famous-mark
exception to the territoriality rule applies, the district court
must first determine whether the mark has secondary
Page 22 of 79
meaning (does it trigger in the consumer’s minds a link

between a product or service and the source of the product
or service). The court determined that Gigante had
secondary meaning in San Diego prior to Dallos opening
his store. Secondly, where the mark has not before been
used in the American market, the court must be
satisfied, by a preponderance of the evidence, that a
substantial percentage of consumers in the relevant
American market is familiar with the foreign mark. The
relevant American market is the geographic area where the
defendant uses the alleged infringing mark. To determine
this, the court must look at factors such as
i. The intentional copying of the mark by the
defendant
ii. Whether customers of the American firm are likely
to think they are patronizing the same firm that uses
the mark in another country.
C. PRIORITY AND CONCURRENT USE
i. Case: Blue Bell, Inc. v. Farah Manufacturing Co.
1. Facts: In 1973, two prominent manufacturers of men’s clothing
created identical trademarks for substantially identical goods.
Though there is no evidence of bad faith, both P and D devised the
mark Time Out for new lines of men’s slacks and shirts. Both
parties were unsure who used the mark first and filed suit to figure
out. Farah conceived of the mark on May 16, two days later they
adopted an hourglass logo and authorized an extensive advertising
campaign. It presented the new slacks to sales personnel on June 5.
Top executives demonstrated samples to large customers in DC
and new York, but without tags and labels. On July 3, Farah sent
on pair of slacks to each of its managers, each personnel paying for
the pants as property in case of loss. Customers saw the goods the
following week and sample garments were sent to the sales force
on July 11 and 14. Customers did not get their first pants until
September. Blue Bell devised their mark on June 18 and
inaugurated an ad campaign. It did not sent market articles to sales
personnel. It made referee labels and instructed shipping personnel
to affix the new labels to slacks already bearing a different
trademark (Nothing else changed on the pants, resulting in several
hundred pairs leaving with 2 labels). They made intermeittend
shipments of the double-labeled slacks, and some out of state
customers got the double label even though they ordered the
original good. New Blue Bell Time Out merchandise was made in
Page 23 of 79
August, and presented in September 4-6. The new garments were

not shipped until October.
2. Holding: Farah’s shipping to 12 sales managers on July 3 did not
count as first use, as it was equivalent to a private “token” sale.
Similarly, since Blue bell merely affixed new labels to old clothes,
its July 5 shipments didn’t count as use in commerce. The
appropriate context in this case (but not all cases) was the first
shipment to customers. Farah shipped in September whereas Blue
Bell shipped in October. Thus, Farah is the senior user. The sales
constituted the first point at which the public had a chance to
associate the time out mark with a particular line of sports wear.
ii. Case: United Drug Co. v. Theodore Rectanus Co.
1. Facts: In 1877, Ellen Regis in Massachusetts made a drug called
“Rex” for stomachaches. Soon she upped production and
registered her mark with the state in 1898, and in 1900 with the
PTO. In 1911 they started opening Rexall stores throughout the
U.S. four being in Louisville. In 1883 Theodore Rectanus, a
druggist in Luoisville used “Rex” as a mark for his “blood
purifier” in Louisville. In 1906 he sold his business to respondent,
and he used the mark from 1883-1912. Since both parties were
remote good faith users, the court allowed them to enforce their
mark where they were senior users against the junior. This gave
birth to the Tea Rose – Rectanus Doctrine: a common law rule
that allows a junior user of a mark that is geographically remote
from the senior user of the mark to establish priority over a senior
user's claim to the mark in the junior user's area. The constructive
use and notice sections of the Lanham Act limit its applicability.
2. Tea Rose – Rectanus Doctrine: Priority of use in one geographic
area within the United States does not necessarily suffice to
establish priority in another area. Thus, the first user of a mark will
not necessarily be able to stop a subsequent user, where the
subsequent user is in an area of the country "remote" from the first
user's area. The practical effect is that one user may have priority
in one area, while another user has priority over the very same
mark in a different area. The point of this doctrine is that in the
remote area, where no one is likely to know of the earlier user, it is
unlikely that consumers would be confused by the second user's
use of the mark. For this doctrine to apply, the junior user must use
the mark in good faith outside of the area of the senior user.
Page 24 of 79
3. Modern applicability of Tea Rose – Rectanus: The remote,

good faith user doctrine only applies where the senior user is
relying upon common law trademark rights or has a federal
registration that post-dates the junior user's first use. A federal
registration may allow the senior user to enforce his or her rights
anywhere in the U.S., regardless of actual use in any particular
location within the country.
iii. Case: Thrifty Rent-A-Car System v. Thrift Cars, Inc.
1. Facts: Thrifty started in 1958 when its founder began renting cars
in Tulsa. Eventually, this business expanded to Wichita, Dallas,
Houston, and St. Louis. In 1962 it applied for registration to the
USPTO; it was granted in 1964. In December 1967, they opened in
Massachusetts. By trial, they had 23 locations in Massachusetts.
Thrift began in Oct. 1962 when its owner started renting cars out
of his home in East Taunton. After 1962, Thrift delivered cars to
Logan airport and various areas in Cape Cod and to Nantucket.
Prior to Thrifty’s registration of its mark it advertised in the
Taunton yellow pages, the Taunton newspaper, a Cape Cod,
Nantucket and Martha’s Vineyard newspaper. In 1970, they got a
license to operate at the Nantucket airport, and moved its business
there. This edged in on Thrifty’s business; they sued for
infringement.
2. Limited Area Exception: §33(b) of the Lanham Act lays out an
exception to incontestability. It’s basically Tea Rose – Rectanus.
To get it a party must show
a. It adopted its mark before the senior user’s registration
without knowledge of the senior user’s prior use
b. The extend of the trade area in which the junior user used
the mark prior to the seniors registration
c. The junior user has continuously used the mar in the pre-
registration trade area.
3. Holding: The only area that Tea-Rose Rectanus carves out for
Thrift is East Taunton, though it can continue to advertise in the
publications it had used prior to Thrifty’s registration.
iv. Case: Dawn Donut Co. v. Hart’s Food Stores, Inc.
1. Facts: Dawn used the mark Dawn on bags of doughnut mix which
it sold and shipped to bakers in various states from Michigan.
Plaintiff mad ad and packaging material with the trademark
“Dawn” on it and let the bakers sell goods made from the mixes to
the public under the trademark. The licensing of the mark in
connection with retail sales of doughnuts in New York was
confined to areas not less than 60 miles of its trading area of
Rochester, NY. While sales of the mix had been made to bakers in
Page 25 of 79
defendant’s trading area, the bakers had not employed the

plaintiff’s mark in connection with retail sales. The Defendant
owner a small grocery chain in New York, selling doughnuts with
the imprint “Dawn” within a 45 mile radius of Rochester.
Defendant adopted the mark subsequent to plaintiff’s registration
but without actual knowledge of plaintiff’s use. Plaintiff registered
federally in 1927 and renewed in 1947. Plaintiff sued defendant
for mark infringement.
2. Holding: If both parties use the same mark in connection with
retail sales in distinct and separate markets and there is no present
prospect that one will expand its use of the mark into the other’s
area, there is no likelihood of public confusion. Since the bakers
that purchased the mix didn’t use the plaintiff’s mark and they had
no actual retail locations in the area, there was no chance of
confusion and both could coexist in peace.
D. INTENT TO USE
i. Case: Aktieselkabet AF 21. November 2001 v. Fame Jeans Inc.
1. Facts: Bestseller made Jack and Jones jeans, which sold for $96 a
pair. They were immensely popular worldwide. Bestseller wanted
to expand into the U.S., and started selling in Canada and
registered a mark there in August 2004. While they were selling in
Canada, Fame Jeans registered their mark in the U.S. in January
2004. In December 2004 when Bestseller tried to register the mark,
the PTO denied them, since Fame already had it.
2. Holding: The court found that Bestseller may have a claim of
analogous use, and remanded the case back for new hearings.
ii. Intent to Use: Application for bona fide intention to use trademark
(Lanham Act §1(b))
1. A person who has a bona fide intention, under circumstances
showing the good faith fo such person, to use a trademark in
commerce may request registration of its trademark in commerce
and may request registration of its trademark on the principal
register hereby established by paying the prescribed fee and filing
in the Patent and Trademark Office an application and a verified
statement, in such form as may be prescribed here by the Director.
2. The application shall include specification of the applicant’s
domicile and citizenship, the goods in connection with which the
applicant has a bona fide intention to use the mark, and a drawing
of the mark
3. The statement shall be verified by the applicant and specify
a. That the person making the verification believes that he or
she, or the juristic person in whose behalf he or she makes
the verification, to be entitled to use the mark in commerce;
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b. The applicants’ bona fide intention to use the mark in

commerce
c. (d) That, to the best of the verifiers knowledge and belief,
no other person has the right to use the mark in commerce
either in the identical form thereof or in such near
resemblance thereto as to be likely, when used on or in
connection with the goods of such person, to cause
confusion, to cause mistake, or to deceive.
iii. Constructive use as of filing date: Every application receives a
constructive first use as of the date of filing. Granting constructive first
use to applications where there has been no use in U.S. commerce is
important in establishing priority.
iv. Case: Warnervision Entertainment, Inc. v. Empire of Caroline, Inc.
1. Facts: Empire argued that the filing of their "intent to use"
application for the trademark "REAL WHEELS," was a defense
against Warnervision's motion to preliminarily enjoin use of that
mark. Warnervision argued that they had begun commercial use of
the mark before Empire did, and that they had priority, regardless
of the filing. The court found that Empire filed their "intent to use"
application before Warnervision had begun to use the mark
commercially, and that under those circumstances, enjoining
Empire from future use of the mark would prevent them from
completing the registration process and terminate their rights as
holders of the "intent to use" application.
2. Holding: Empire filing an "intent to use" application was a
defense to a preliminary injunction, but it did not allow Empire to
seek affirmative relief against Warnervision.
v. Case: Eastman Kodak Co. v. Bell & Howell Document Mgmt Products
Co.
1. Facts: Kodak sought to prevent Bell & Howell from registering
numerical marks that were not yet in use under trademark laws.
The United States Patent and Trademark Office Trademark Trial
and Appeal Board granted Bell & Howell's motion for summary
judgment, holding that a presumption existed that numerical marks
were not merely descriptive in absence of evidence of actual use.
The court affirmed, holding that the presumption was a reasonable
interpretation of the agency's authority.. Neither statutes nor
legislative history plainly spoke to the issue but demonstrated
congressional intent for the agency to decide descriptiveness after
a mark was in use. Kodak's evidence that the marks were to be
used as model designators was not dispositive, because the marks
could still be inherently distinctive.
Page 27 of 79
2. Holding: Essentially, if B&H uses the marks as just model

designators, then Kodak could seek cancellation. But numbers can
be used in an inherently distinctive manner, so Kodak can’t seek
cancellation before B&H gets a chance to use the marks. Since an
ITU requires the applicant to assert a bona-fide intent to use each
number as a trademark, B&H necessarily must have asserted it was
not going to use the numbers solely as model designators.
E. OWNERSHIP
i. Case: Bell v. Streetwise Records, Ltd.
1. Facts: Plaintiffs, the singers in New Edition sought to establish
their exclusive right to appear, perform and record under that mark
(New Edition). Defendant record producer (Starr) produced,
recorded and marketed the first of their albums. Starr claimed that
he employed the boys to serve as a public front for a concept,
which he developed, and to promote musical recordings
embodying that concept (“Black bubble gum music of the 80’s).
He alleged that the mark in question identified the recordings and
not the group members.
2. Holding: The court granted plaintiffs' motion requesting a
preliminary injunction. Since the boys had been using their name
and performing as “New Edition” intrastate prior to Starr’s
involvement, they owned the mark “New Edition”. In cases like
this, courts determine ownership by identifying the quality or
characteristic for which the group is known by the public, and
then it may proceed to the second step and ask who controls
that quality or characteristic. The norm in the music industry is
that an artist or group generally owns its own name. New Editions
identified the five plaintiffs with their distinctive personalities and
style as performers; the “goods” were entertainment services they
provide. They and no one else controlled the quality of those
services. They own the mark.
ii. Case: Crystal Entertainment & Filmworks, Inc. v. Jurado
1. Facts: Crystal created and named the girl dance band “Exposé” in
1984. They hired the three original performers and hired a
songwriter to write music and lyrics and produce the group’s
songs. They released a single recording and made several live
performances, all funded by Crystal; the group wasn’t successful,
though. In 1986, Jurado and two others replaced the original
members and released an album called Exposure with Arista with
pictures of themselves on the front. Between ’86 and 2005, Arista
made 8 albums of music made by Exposé. After a while, the
members of Exposé got tired of paying licensing fees to use the
Exposé name to Crystal, and stopped paying. Crystal sued.
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2. Joint Endeavors Test (also applied in Bell v. Streetwise): The

join endeavors test requires a court to
a. Identify that quality or characteristic for which the group is
known and then to
b. Decide who controls that quality or charactaristic.
3. Holding: Applying Bell v. Streetwise, supra, the court gave
ownership of the mark to the girls. While they hadn’t performed
before Crystal made them, the girls created the goodwill associated
with the mark, they are the product denoted by the mark Exposé.
iii. Case: Lunatrex, LLC v. Cafasso
1. Facts : The parties were competing in the Google Lunar X prize
competition, which offered a large cash prize for landing a robot
on the moon. There was a falling out, and the LLC and Cafasso
each claimed ownership of the “LUNATREX” mark. Plaintiff
Bitar supplied all the initial funding and conducted fundraising.
Defendant Cafasso led the technical team and oversaw the R&D of
the rocket and robot. With the help of a marketing team hired by
Bitar, they decided on the LUNATREX mark. Bitar then used the
logo on the X prize website, on LunaTrex’s website, and on
promotional items, business cards, and other items. Bitar also
posted blog posts on the X prize website from the Lunatrex team.
Eventually, tensions between Bitar and Cafasso led to a dispute
over the mark.
2. Holding: The LunaTrex team was a joint venture between Bitar,
Cafasso, and two others. Each team member contributed
substantially to the team’s effort and reputation. Accordingly, the
trademark is treated as the asset of the joint venture. Thus, the
mark can only be used with the consent of all the other parties, or
not at all.
IV. REGISTRATION OF TRADEMARKS
A. PROCEDURE FOR REGISTRATION
i. Bases of Registration:
1. Use in commerce (As defined under §1(a) of the Lanham Act)
2. A bona fide intent to use the mark in commerce (under §1(b))
3. Ownership of a qualified foreign registration (Under section 44(d))
4. Ownership of a International Registration that has been extended
to the U.S. (under §66)
5. Foreign applicants generally can also apply under §44(d) or (e) or
can extend registration to the U.S. under the Madrid Protocol.
ii. The Process of Registration
1. Order a search report through a search company to disclose all
general trademark registrations currently in effect or which have
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been cancelled or have expired, for identical or similar marks

applied to identical or closely related goods.
2. Start using the mark in the ordinary course of trade on or in
connection with the goods or services or file an ITU (which will
not issue until the mark has been put into bona fide use). To use
the trademark one can apply it to labels or affix it to the goods or
containers for the goods. Also, you could apply it directly to the
goods themselves, show it on POS displays associated with the
goods. You cannot use the mark solely on invoices, bills of lading,
packing slips or advertisements.
a. For service marks: you may use the mark in
advertisements, brochures, letterheads, signs or any other
item used in either advertising or rendering the service.
i. In addition, the service must be actually rendered
in federal commerce to be federally registrable.
Generally this means that the service must be
performed in more than one state. But if the service
is in a location where its patrons are traveling from
state to state such as on an interstate highway, the
use in commerce requirement will be satisfied.
3. Obtain registration of the mark by
a. Applying for the mark by submitting an application
(Process outlined on CB pp184-188.)
b. Have your application processed by the PTO
c. Have the mark published for opposition. After
approximately 3 months from publication, a certificate will
be issued if no opposition is filed.
d. Apply separately for a state trademark, if so desired.
iii. Advantages of Trademark Registration on the federal Principal
Register
1. Nationwide protection from the date of the application
a. Avoids Tea Rose – Rectanus constriction.
2. Incontestability
a. if used continuously for five years
3. Warning to others
a. Keeps third parties from adopting a similar mark for similar
goods or services.
b. Sets constructive first use date for application (big plus for
priority consideration, especially for ITU)
c. Keeps TTAB from registering potentially infringing marks
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4. Barring imports
a. Goods produced abroad bearing infringing marks may be
blocked at customs if registrant is a U.S. citizen and is not
related in certain ways to the producer of the imported
goods.
5. Protection against counterfeiting
6. Evidentiary advantages
a. Registered marks are prima facie valid and enjoy
presumptions such as nonfunctionality.
7. Use of the ® symbol or “U.S. Pat. Off.” To denote federal
registration.
8. Confirms ownership and validity
9. Basis of foreign filings
10. Preemption of state regulations
iv. Note: the following marks can be registered if they acquire secondary
meaning
1. Merely descriptive and deceptively misdescriptive marks
2. Primarily geographically descriptive marks
3. Primarily surname marks
v. Supplemental Register: contains marks capable of distinguishing goods
or services.
1. Marks may not actually be distinctive, merely “capable” of
distinction
2. Terms that are descriptive or geographic or are surnames may find
a home in the Supplemental Register
3. Benefits of Supplemental Register listing:
a. Listing on search reports
i. May deter others from choosing a confusingly
similar mark.
b. PTO may deny a registration for being confusingly similar
to a listing in the Supplemental Register
c. Registrant can use the registration notice to sue in federal
court.
4. Supplemental Registrants MAY NOT:
a. use their registration as prima facie evidence of validity
b. Use their registration to provide constructive notice any
nationwide priority
c. Use their mark to stop infringing goods at Customs
vi. Maintenance and Renewal of Registration
1. §8 of the Lanham Act requires a registrant to file an affidavit that
the mark is in use for at least some of the goods or services
covered in the registration between the fifth and sixth year after the
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registration date (or within a six month grade period thereafter for
an additional fee).
a. Goods or services not included in the use affidavit will be
deleted from the registration
b. If the registrant does not file, the PTO automatically
cancels the mark.
c. The use required is actual use in commerse, not token use
d. “special circumstances” such as governmental regulation
and prohibition, illness, fire, or other catastrophe may
excuse non-use of a mark where the registrant did not
intend to abandon the mark.
2. §9 of the Lanham Act provides that “each registration may be
renewed for periods of ten years from the end of the expiring
period upon payment of the prescrived fee and filing of a verified
application therefore.
a. Registrants are now required to file an affidavit under §8
every tenth year (with a 6 month grace period) that the
mark is still in use in commerce for at least some of the
goods or services covered in the registration, and attach a
specimen or facsimile showing current use of the mark
every ten years after a registration issues.
b. Any goods or services not included in the use affidavit will
be delete from the registration
c. Failure to file the renewal and use affidavit will result in
the registration’s being automatically cancelled by the
PTO.
B. BARS TO REGISTRATION
i. 2(A): IMMORAL, SCANDALOUS, DISPARAGING MARKS
1. Lanham Act Definition for a §2(a) Bar: Section 2a will prohibit
registration of a mark that
a. consists or comprises immoral, deceptive, or scandelous
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…
Proof of distinctiveness cannot avail an applicant who is

refused registration under 2(a): it is an absolute bar.
2. Standing for ALL 2(a) claims:
a. Federal circuit allows “any person who believes that he
would be damaged” to bring a suit, as well as
b. Anyone with real interest – direct and personal stake,
regardless of how many others in the general public share
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c. Or anyone who has a reasonable belief that they will be

damaged.
3. Case: In re Fox
a. Facts: Marcia Fox had a mark consisting of the words
COCK SUCKER with a drawing of a crowing rooster. She
used the mark since 1979 to sell rooster lollipops in small
retail outlets in egg baskets to show a farm motif. She sells
primarily to fans of University of South Carolina and
Jacksonville State University, both of whose mascots are
the gamecocks. TTAB refused to register the mark under
2(a)
b. Holding: a mark that creates a double entendre falls within
the proscription of §2(a) where, as here, one of the
meanings is clearly vulgar.
4. Case: Boston Red Sox Baseball Club Limited Partnership v.
Sherman
a. Facts: Sherman filed an ITU for “SEX ROD” in a stylized
font kerned to look like the Boston Red Sox’s mark “RED
SOX” for apparel. Red Sox filed a notice of opposition,
noting 2(a)
b. Holding: 2(a) for Immoral or Scandalous Matter: a
showing that a mark is vulgar is sufficient to establish that
it consists of or comprises immoral or scandalous matter
within the meaning of §2(a). Dictionary evidence alone can
be sufficient to establish that a term has a vulgar meaning.
In this case, “Rod” meant vulgar slang for a penis.
c. Holding: 2(a) for Disparagement: An absolute bar is also
imposed for marks that may disparage institutions.
i. Definition of Disparagement: the publication of a
statement which the publisher intends to be
understood, or which the recipient reasonably
should understand, as tending to cast doubt upon the
quality of another’s land, chattels, or intangible
things. In the context of §2(a), a disparaging mark
casts doubt upon the quality of a plaintiff’s
corporate goodwill.
ii. Elements of disparagement (Greyhound Test)
1. The communication be reasonable would be
understood as referring to the plaintiff
2. That the communication would be
considered to be offensive or objectionable
by a reasonable person of ordinary
sensibilities.
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Applicant copied the form, style and structure of plaintiff’s

corporate symbol, and because the mark is so visually
similar to the original, many consumers, in particular Red
Sox fans, upon seeing the mark, will note it as referring to
the Red Sox symbol. Since the overtly sexual mark is
offensive and the public would associate the offensive
message with the opposer, the mark “may disparage” them.
5. Case: In re Lebanese Arak Corp
a. Facts: Lebanese Arak appealed a refusal to register Khoran
as a trademark for wine. Registration was refused under
2(a) as offensive to the beliefs of Muslims. Khoran means
“altar” in Armenian; that was the intended name and word.
b. Disparaging mark test: Court must consider-
i. What is the likely meaning of the matter in
question, taking into account not only dictionary
definitions, but also the relationship of the matter to
the other elements in the mark, the nature of the
goods or services and the manner in which the mark
is used in the marketplace in connection with the
goods or services; and
ii. If the meaning is found to refer to identifiable
persons, institutions, beliefs or national symbols,
whether that meaning may be disparaging to a
substantial composite of the referenced group
iii. Note: this is determined at the reference group’s
point of view (see majority holding, infra) and a
“substantial composite”, and dates back to the time
of registration.
iv. *Note: Cancellation of a mark can happen at any
time if the registration was obtained fraudulently
or contrary to 2(a), (b) or (c), [but not (d) or (e)].
c. Holding: The determination of “offensiveness” must be
made from the perspective of the disparaged group. Since
“Khoran” is phonetically identical to “Koran” and anyone
but an Armenian speaker would think it was “Koran”, it
passes both prongs.
d. Dissent: The determination of “offensiveness” must be
determined from the general population of the United
States and how they will understand the applicants mark
when it is being used in connection with the identified
goods or services. Most people will not think the work is
“Koran” because people know that Muslims do not drink,
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including Muslims. Additionally, it actually means “Altar”

in Armenian, and otherwise, as spelled, means nothing else.
6. Case: In re Bad Frog Brewery
a. Facts: Bad Frog Brewery sought registration for its mark
which was a frog flipping the viewer off. The TTAB
attorney said that the mark combined with the word “Bad
Frog” alerted the attorney to the fact that the frog was
“bad” . (Not used by the majority were ads that said such
things as “amphibian with an attitude”, “he just don’t care”,
“do it Froggy style”, “he’s mean, green, and obscene”,
“he’s nasty, naked, and insensitive”, and “flip the bird, get
a frog”, with accompanying pictures from their website
showing people wearing the applicant’s apparel in front of
a large banner bearing the mark flipping off the camera,
and an abandoned mark for a human hand flipping
someone off, and a tap handle, which is a frog hand
flipping someone off)
b. Holding: Registrable, for two reasons. (1) the applicant’s
frog is a realistic frog, not humanized, and the positioning
of its leg, while looking perhaps like flipping the bird, and
the very fact that the applicant had to educate the
consuming public that the frog is giving the finger is proof
that the frog was not meant to be perceived as giving the
finger. And (2) even if the applicant’s frog were perceived
to be giving the finger, such a gesture by a realistic looking
animal would not be scandalous or immoral, and even if the
frog was giving the finger, he’s not giving it to any
individual or group. PLUS, giving the finger isn’t even
necessarily offensive (the court went through a history of
the finger not being offensive, culminating in Nelson
Rockefeller, the VP in 1976, flipped off a bunch of college
protestors).
7. Note: Katrina: the Drink
a. Within days of hurricane Katrina decimating New Orleans,
two Louisiana lawyers filed a mark for Katrina for
alcoholic beverages with the slogan “get blown away” with
a stylized hurricane as a logo. They eventually withdrew
the application, though many New Orleans citizens loved
the mark and didn’t find it offensive at all.
8. Note: Dykes on Bikes
a. Dykes on Bikes tried to register their mark nationally after
a Wisconsin woman decided she wanted to start a clothing
line of leathers using “Dykes on Bikes” as its label. The
Page 35 of 79
USPTO denied registration of the mark under §2(a) as

vulgar, immoral, or scandalous. While TTAB had allowed
“queer” to get registered, they denied Dyke for some
reason. After recruiting the National Center for Lesbian
Rights, getting two dozen declarations of Harvard-trained
scholars, nationally recognized psychologists, and linguists,
and getting a formal municipal order from San Francisco
endorsing them, the mark was finally registered in 2005,
two years after its initial application and after two refusals
on §2(a) grounds.
ii. 2(A) DECEPTIVE OR DECEPTIVELY MISLEADING MARKS
disrepute…

damaged.
3. Case: Bayer Aktiengesellschaft v. Stamatios Mouratidis
a. Facts: Bayer filed opposition to the defendant’s application
to register ORGANIC ASPIRIN for “dietary supplements
for human consumption” for it being deceptively
misdescriptive. For note: aspirin chemically is
acetylsalicylic acid, for which aspiring is the generic term.
ORGANIC ASPIRIN did not contain acetylsalicylic acid.
It is impossible to find naturally occurring acetylsalicylic
acid, it must be synthesized from phenol (a byproduct of
coal or benzene).
b. Elements for Proving a Mark is deceptive and
deceptively misdescriptive (In re Budge Test):
i. Is the term misdescriptive of the character, quality,
function, composition, or use of the goods?
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ii. If so, are prospective purchasers likely to believe

that the description actually describes the goods?
iii. If so, is the misdescription likely to affect a
significant portion of the relevant consumers’
decision to purchase?
iv. How to apply the test: if only element (i) is met,
the mark may be arbitrary or suggestive; if (i) and
(ii) are met, but not (iii), the mark is deceptively
misdescriptive. If (i),(ii), and (iii) are met, then the
mark is deceptively misdescriptive and deceptive.
c. Holding: Reasonably prudent consumers are likely to
believe that applicant’s ORGANIC ASPIRIN contains
aspirin derived without synthetic chemicals. Applicants
own advertising materials liken it to aspirin leading
consumers to think it contains naturally occurring aspirin.
We find that the applicant’s mark Organic Aspiring is both
deceptively misdescriptive under 2(a) and 2(e)(1)
i. Note: if it was just under 2(e)(1), it could get
registered if it got secondary meaning.
4. Case: In re ALP of South Beach Inc.
a. Facts: applicant sought registration in the Supplemental
Register “CAFETERIA” for “restraurants providing full
service to sit down patrons, excluding cafeteria-style
restaurants”. TTAB refused under 2(a) for deceptive mark.
Applicant appealed.
b. Holding: Affirming the refusal to register. Using
“CAFETERIA” to describe a restaurant that specifically
does not provide cafeteria style eating misdescribes the
services. Applicant’s citation to cases where casual
observers are presumed to be able to discover the mark by
looking closely at the involved goods is misplaced, as they
covered goods, not service marks.
c. Dissent: Anyone would know its not a cafeteria. And
besides which, what is a cafeteria? People have different
meanings; is it the food? The atmosphere? The style?
iii. 2(A) FALSE SUGGESTION OF A CONNECTION
disrepute…
Page 37 of 79

damaged.
3. Case: Hornby v. TJX Companies, Inc.
a. Facts: Lesley Hornby, a.k.a. “Twiggy”, was a famous
model who went by the name Twiggy. She started as a
model in 1967, was in movies in the 70’s, appeared on
Johnny Carson and Merv Griffin, starred in TV and movies
in the 90’s, did summer theater reviewed in the New Tork
times, interviewed with magazines, had her own dictionary
entry, and her own doll. Applicant made children’s clothes
under the mark TWIGGY starting in 1999-2000. Hornby
sought cancellation of the mark under 2(a) for false
suggestion of a connection to her. TJX argued that
purchasers of children’s clothing would not be aware of her
activities in 1967-1970, when she was a phenomenon.
b. Notre Dame test for false suggestion of a connection:
The plaintiff must demonstrate
i. The defendant’s mark is the same or a close
approximation of plaintiff’s previously used name
or identity
ii. That the mark would be recognized as such
iii. That the plaintiff is not connected with the activities
performed by the defendant under the mark and
iv. That the plaintiff’s name or identity is of sufficient
fame or reputation that when the defendant’s mark
is used on its goods or services, a connection with
the plaintiff would be presumed.
c. Holding: The court found that parents in 2000 would have
been around during the height of her fame, and that the
defendant’s mark satisfied all four prongs of the Buffet test.
They accordingly did not register TWIGGY to TJX.
Page 38 of 79
iv. 2(B) & (C) INSIGNIAS, IDENTITIES, ETC

1. Lanham Act §2(b) & 2(c)
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused registration
on the principal register on account of nature unless it:
(b) Consists of or comprises the flag or coat of arms or other

insignia of the United States, or of any State or municipality, or of
any foreign nation, or any simulation thereof.
(c) Consists of or comprises a name, portrait, or signature

identifying a particular living individual except by his written
consent, or the name, signature, or portrait of a deceased President
of the United States during the life of his widow, if any, except by
the written consent of the widow.
2. 2(b) refusal: refusing to register a mark because it “consists of or

comprises the flag or coat of arms, or other insignia of the United
States, of any municipality or any foreign nation, or any simulation
thereof constitutes and absolute bar. Unlike a §2(a) claim, there is
no requirement to show any additional element, such as
disparagement or false association. It is not necessary that the
mark consist exclusively of a governmental flag, coat of arms,
or other insignia if the mark includes such an element.
a. In re Old Glory Condom Corp: applicant attempted to
register a mark that was a condom in imitation of a waving
American flag. TTAB originally barred under 2(a), but not
2(b).
3. 2(c) refusal:
a. In re Richard M. Hoefflin: a man tried to register OBAMA
BAHAMA PAJAMA in 2010. TTAB and the court said
nope.
i. If it’s unclear whether a mark refers to a
particular living person or not, TTAB considers:
1. If the person is so well known that the
public would reasonably assume the
connection or
2. If the individual is publicly connected with
the business in which the mark is being
used.
The court determined that Obama, because he was
president at the time, was so well known and famous that
other members of the purchasing public will associate the
Page 39 of 79
name Obama as used in the applicant’s marks with the

President and assume that the President is being identified.
v. 2(D) CONFUSING MARKS
1. Lanham Act §2(d): Bars registration of a mark when:
it consists of or comprises a mark which so resembles a mark
(registered or not that) as to be likely when used on or in
connection with the goods or services of the applicant to cause
confusion or to cause mistake or deceive.
2. DuPont Factors: Federal Circuit Test used to determine
whether a mark is confusing AT
REGISTRATION/APPLICATION (13 Factors)
a. The similarity of the marks (sight, sound, and meaning)
b. The similarity of the goods or services
c. The similarity of trade channels
d. The conditions under which and buyers to whom sales are
made, i.e. “impulse” vs. careful, sophisticate purchasing.
e. The fame of the prior mark (sales, advertising, length of
use)
f. The number and nature of similar marks in use on similar
goods
g. Actual confusion
h. The length of time of concurrent use without evidence of
actual confusion
i. How the mark is used (house mark, “family” mark, product
mark)
j. The market interface between applicant and the owner of a
prior mark:
i. A mere “consent” to register or use
ii. Agreement provisions designed to preclude
confusion
iii. Assignment of the mark, application, registration,
and good will of the related business
iv. Laches and estoppel
k. The extend to which applicant has a right to exclude others
from use of its mark on its goods.
l. The extent of potential confusion, i.e. whether de minimis
or substantial
m. Any other established fact probative of the effect of use.
3. Note: Differences in Likelihood of Confusion in Registration
and Infringement Claims
Because registration covers a mark in the formats and for the
goods or services applied for, while an infringement determination
focuses on how parties are actually using their marks in the
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marketplace for particular goods/services and in specific trade

channels, the analysis for the purposes of determining likelihood of
confusion differs. i.e. in registration, the focus in similarity of
goods and trade channels focus on how the goods were describe in
the applications and registrations and the channels of trade in
which such goods would normally travel. F a mark is in character
form without stylization or design, the Board looks at various
formats in which the mark might appear. Conversely in actual
infringement claims, courts look at the actual goods/services on
which the parties used their marks, the actual channels of trade
employed, etc. They also look at the party’s mark actually appear
in the marketplace, because they are trying to see if there is
likelihood of confusion in fact, not in theory.
4. Case: Nutrasweet v. K&S Foods, Inc.
a. Facts: K&S applied to register NUTRA SALT as a
trademark for salt with trace minerals. Nutrasweet opposed
under 2(d). Nutra sweet showed priority, that its good was a
sweetener used in a bunch of stuff, that it sells Equal,
which contains Nutrasweet, and that most companies that
use Nutrasweet mention it in their advertisements.
Nutrasweet made $558M annually, and Nutra sweet made
$125M annually. The product is sold in retail grocery stores
as well as to the food service industry and appears in
restaurants as well as other institutional settings. They
spent $25M advertising a year, companies using
Nutrasweet spent $243M advertising it. K&S conceded the
mark was famous. The goods are likely to be sold in the
same section of the store. Both marks share the identical
prefix, and the suffix is just a generic designation applied to
the product. Both are low-cost impulse buys.
b. Holding: There is a likelihood of confusion. Consumers in
the store would likely think Nutra Salt is a new line put out
by Nutrasweet.
5. Case: Marshall Field & Co. v. Mrs. Field’s Cookies
a. Facts: Mrs. Fields filed to register her mark for bakery
goods, namely, cookies and brownies. Use since Nov. 15,
1981 was alleged. Marshall Fields opposed under 2(d);
while they provided retail department store services, they
also used and registered the mark for baked goods and
other foods. They sought cancellation of the stylized mark
for retail bakery store services and bakery goods, namely
cookies and brownies. Marshall had in its 26 nationwide
stores a restaurant called Greener Fields and [Tree] Rooms
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that sold bakery products and candy. The first restaurant

opened in their store in 1890. The foods there used
“Field’s”, “Marshall Field’s Gourmet” or “Marshall
Field’s” as a designation. A full-line bakery has been in
their Chicago store since 1920. They sell candy in ther
nationwide catalogs. They advertise over all media, and
colloquially are known as “Field’s”. Mrs. Fields came into
being in 1977 when Debra Fields opened a cookie shop
called Mrs Fields Chocolate Chippery in Palo Alto. By
1981 there were 21 stores nationwide. The mark was used
in the store on packaging for the cookies. Due to size
constraints and landlord specifications, the name was often
abbreviated to Mrs. Fields. There are 400 stores nationwide
now. They license their name to La Petite Boulangerie,
Ambrosia Chocolate Company, and Mariott. Sales are
hundreds of millions. Debra Fields is public everywhere,
speaks, and spends 5% revenue on advertising.
b. Holding: Marshall had priority. Marshall argued that
“Fields” was the dominant part of the mark. TTAB pointed
out it was a surname, and a common surname at that, and
the designation of “Marshall” and “Mrs.” Allowed
consumers enough of a difference to make the distinction.
Plus, Marshall Fields was famous for departments stores
and just happened to have bakeries, and Mrs. Fields was
just famous as a bakery. This was two famous marks
against each other. Plus Marshall Field’s uses of its mark
are more likely to distinguish than confuse. The colors were
different (red and white v. green), as was the script. The
court also limited secondary meaning of Marshall’s mark to
department store services, not bakery stuff. The mark was
not cancelled.
vi. DILUTING MARKS
1. Note: Oppositions and cancellation claims can be brought under
§43(c), however Dilution is not a bar to registration under section
2, and an examiner cannot rely on dilution as a ground to refuse
registration. Interested third parties, however, can institute an
opposition or cancellation action on this basis…
a. “And person who believes that he would be damaged by
the registration of a mark, including as a result of dilution
may file an opposition”.
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vii. 2(E)(2)-(4) GEOGRAPHIC TERMS, SURNAMES, AND OTHER BARS

1. Lanham Act 2(e): Cannot register a mark on principal register if it
consists of a mark which
(2) when used on or in connection with the goods of the applicant

is primarily geographically misdescriptive of them(except for
collective and certification marks)
(3) when used… is primarily geographically deceptively

misdescriptive of them.
2. Case: In re Baik
a. Facts: Baik is located in Irkutsk Russia, and filed an ITU
for BAIKALSKAYA for vodka. TTAB refused registration
under 2(e)(2) for primarily geographic description.
BAIKALSKAYA literally means “from Baikal”, the name
of a lake in Russia, which is immensely famous as the
deepest lake in the world and as a tourist destination. She
said relevant purchasers, consumers of Russian vodka,
would see it as “from Baikal”. Russian speakers could
recognize this, and non-Russian speakers could infer it was
a location.
b. Test for to see if a mark is primarily deographically
descriptive: The inquiry is whether
i. The term in the mark sought to be registered is the
name of a place known generally to the public and
ii. The public would make a goods/place association,
that is, believe that the goods or services for which
the mark is sought to be registered originate in that
place.
1. Note: if the goods do in fact emenate from
the place named in the mark, the
goods/place association can be presumed
unless there is a genuine issue raised that the
place named in the mark is so obscure or
remote that purchasers would fail to
recognize the term as indicating the
geographical source of the goods.
c. Holding: BAIKALSKAYA is primarily geographically
descriptive. It’s fame and publication make it neither
remote nor obscure.
3. Case: In re Newbridge
a. Facts: Applicant was an Irish company in Newbridge
Ireland that designs, manufactures, and sells housewares,
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kitchen ware, and silverware in the U.S. and globally under

the mark NEWBRIDGE HOME. Applicant designs its
products in Newbridge an manufactures some, but not all,
of its products there. In the U.S. people can buy the
products online or at Irish store. The mark has international
registration, and applicant sought protection under the
Madrid Protocol. Disclaiming “HOME”, they applied with
just NEWBRIDGE for silverware, jewelry, desk items, and
kitchenware. TTAB denied registration under §2(e)(2) for
being primarily geographically descriptive.
b. Holding: Newbridge was too obsure and remote.
4. Case: In re Miracle Tuesday, Inc.
a. Facts: Miracle Tuesday applied to register JPK 75 asa
mark for use on sunglasses, wallets, handbags, and purses,
etc. JPK stand for Jean-Pierre Klifa, who manages Miracle
Tuesday and is the designer of the gods at issue. The Board
rejected the idea that JPK was the dominant portion of the
mark
b. 2(e)(3) bar: mark may not be registered on principal
register if the mark is primarily geographically deceptively
misdiscriptive.
c. Test for primarily geographically deceptively
misdescriptiveness: the mark is barred if:
i. The primary significance of the mark is a generally
known geographic location
ii. The consuming public is likely to believe the place
identified by the mark indicates the origin of the
goods bearing the mark when in fact the goods do
not come from that place
1. Is there an association between the goods
and the place identified?
2. Do the goods actually come from that place?
iii. The misrepresentation was a material factor in the
consumer’s decision to buy.
d. Holding: Where a case involves goods rather than services,
the goods-place association requires little more than a
showing that the consumer identifies the place as a known
source of the product. This means the law gives an
inference that the consumer associates the product with the
geographic location in the mark because that place is
known for producing the product. Paris is famous for
fashion; the goods don’t come from Paris; people would
think they did; JPK has no real significant connection with
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Paris. Note: interesting comparison to fashion that people

don’t care “where it was made” they care “who you are
wearing”. Regardless, the inquiry is about the goods and
Paris not the designer, plus he isn’t even from Paris. Barred
under 2(e)(3).
5. Case: In re California Innovations
a. Facts: CA Innovations filed an intent-to-use trademark
application for ‘thermal insulated bags for food and
beverages and thermal insulated wraps for cans’. They’re
based out of Canada, and the examining attorney barred
registration for California Innovations under 2(e)(3).
b. Holding: There is no goods/place association with
“thermal insulated bags” and California, so they can’t bar
for that.
6. Section 2(e)(4) of the Lanham Act: bars registration for a mark
which is primarily a surname (on principal register).
7. Case: in re Quadrillion
a. Facts: Quadrillion filed an ITU for the mark BRAMLEY
for books, magazines, and stationary. It was refused under
2(e)(4) for being primarily a surname.
b. Test for determining if a mark is merely a surname:
what is the primary significance of the mark to the
purchasing public? Consider:
i. The degree of surname rareness
ii. Whether anyone connected with the applicant has
the surname
iii. Whether the term has any recognized meaning other
than that of a surname, and
iv. The structure and pronunciation, or “look and
sound” of the surname.
c. Holding: Examining attorney showed 400 listing for
Bramley in the phone book, proof it does not appear in an
unabridged English dictionary. It wasn’t connected to
anyone in the application, and its only meanings were a
variety of apple (named after a man Bramley), and a small
village in England. Additionally, Bramley has the look and
sound of a surname, not an arbitrary mark. No registration.
8. Case: Peaceable Planet, Inc. v. Ty, Inc.
a. Facts: Peaceable Planet made crappy knockoff beanie
babies. They made a camel called Niles and sold a few
thousand with tags, a map, and the Egyptian flag on it.
Later, Ty began selling a camel called Niles it sold 2
million. Peaceable sued, claiming trademark infringement.
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b. Note: 2(e)’s name provision applies only to surnames, not

first names, as was the case here.
c. Holding: the personal name rule is inapplicable, because
the purpose of the rule deals with the reluctance of
forbidding a person from using his own name in business.
In this case, since 2(e) is inapplicable, the name (just a
name, neither first nor last) is suggestive, not a surname.
(Niles as affixed to a toy camel; One of Ty’s other camels
is named Lawrence [of Arabia]). Since it’s suggestive, it
doesn’t need secondary meaning to be registrable. Ty can’t
use the name
viii. 2(E)(5)FUNCTIONALITY
1. Lanham Act 2(e)(5): No trademark shall be registered on the
principal register if it consists of a mark which comprises any
matter that, as a whole, is functional.
2. Qualitex Test for Functionality: a 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 articles. That is, if exclusive use of the feature
would put competitors at a significant non-reputation-related
disadvantage.
3. Case: In re Becton, Dickinson and Co.
a. Facts: BD applied for a design for closures for medical
collection tubes with a streamlined exterior where the top is
slimmer than at the bottom with vertically elongated ribs
set out in combination sets of numerous slim ribs bordered
by fatter ribs, with a smooth area separating ribs, where the
ribs taper to a point, and where there is a flanged lip.
b. Morton-Norwich Test for functionality (Note: in Morton
Norwich, MN tried to register a spray bottle as a mark.
While initially denied, the court found that the mark was
for the bottle as a whole and not just its functional
elements. The bottle and nozzle could look a million
different ways without costing more, so they let them have
the design)
i. Are there utility patents issued for what is being
claimed as a mark?
ii. Are the features in the claimed mark advertised as
functional or as useful?
iii. The availability of alternative designs
1. Note: under current law if functionality is
found based on other considerations there is
no need to consider the availability of
alternative designs because the feature
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cannot be given trade dress protection

merely because other designs are available.
iv. Whether the design results from a comparative
simple or inexpensive method of manufacture
c. Holding: The first two factors leaned towards
functionality, which meant the third was not addressed, and
there was insufficient record evidence to deal with the
fourth. The closure was found to be functional and thus not
registrable.
4. Case: TrafFix Devices v. Marketing Displays, Inc.
a. Facts: MDI made a “dual spring” sign that could stand up
in bad wind. It got a utility patent on the springs, which
expired. MDI said the signs were recognizable because of
its “dual spring” design”. Traffix started selling signs with
a visible spring mechanism that looked like MDI’s. MDI
sued for trade dress infringement.
b. Revised Qualitex Test: A product feature is functional if:
i. It is essential to the use or purpose of the article; or
ii. It affects the cost or quality of the article; or
iii. If exclusive use of the feature would put
competitors at a significant non-reputation-related
disadvantage.
c. Holding: (not mentioned, but Morton Norwich goes way
against them) Having a utility patent proved functionality.
Functionality having been established “there is no need to
engage in speculation about other design possibilities such
as using three or four springs which might serve the same
purpose. Other designs need not be attempted.
i. Note: In a case where a manufacturer seeks to
protect arbitrary incidental, or ornamental aspects of
features of a product found in the patent claims,
such as arbitrary curves in the legs or an ornamental
pattern painted on the springs, a different result
might obtain.
5. Case: Groeneveld Transport Efficiency v. Lubecore International,
Inc.
a. Facts: Groeneveld has been making automated lubrication
systems market as the EP0 since the 80’s. They employ
thousands of people and are internationally well known.
Lubecore was founded in 2007 by an entrepreneur. It’s
located in Canada and makes a pump that looks similar to
the EP0. Groeneveld sued Lubecore, alleging violation of
its trade dress in the pump, mainly the shape, the black base
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and a clear plastic reservoir with an aluminum base and a

pump mechanism connected by wires and hoses to the rest
of the ALS.
b. Holding: Groeneveld’s own witnesses testified that almost
all the parts of the pump and its manufacture related to the
grease-pumping function of the pump. Since Groeneveld
couldn’t prove that the individual components of its grease
pump or its configuration were nonfunctional, it couldn’t
assert that the pump was nonfunctional protectable trade
dress. It failed modified Qualitex, and alternative designs
didn’t matter under Traffix.
6. Case: In re Weber-Stephen Prods. Co.
a. Facts: Weber applied for a design mark in its grills,
consisting of “ a three-dimensional pictorial representation
of the distinctive configuration of the kettle and leg
portions of Applicant's barbecue grills. The kettle portion
includes a bottom of generally semi-spherical shape having
a top of generally semi-ellipsoid shape and supported by
three downwardly and outwardly extending legs projecting
from the bottom of the bottom portion.” The designs were
rejected as functional.
b. Holding: Applying Morton Norwich, the court found that
there was a utility patent for the grill, but there were
specific disclaimers in the patent that the kettle grill was
just a preferred embodiment that served no utilitarian
function. In the second factor, advertising, there was no
benefit given or touting of functional aspects of the shape
of the grill or tripod legs. In terms of availability of
alternative designs, there are a myriad. And finally, there
was no real manufacturing cost difference, as the shape was
just made to identify the goods to the customer and not
because it is cheaper or simpler to manufacture. Weber was
allowed to register its mark.
V. LOSS OF TRADEMARK RIGHTS
A. GENERICISM
i. Lanham Act §14(3) Cancellation: can cancel a mark at any time if the
registered mark becomes the generic name for the goods or services or a
portion is functional, has been abandoned, the registration was
obtained fraudulently, or contrary to the provisions of section 4
(collective/certification marks) or if being used to misrepresent the source
of the goods or services.
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ii. Section 14 Cancellation of Generic Marks: If the registered mark

becomes the generic name for less than all of the goods or services, a
petition to cancel the registration for only those goods or services may be
filed. A registered mark shall not be deemed to be the generic name of
goods or services solely because such mark is also used as a name of or to
identify a unique product or service. The primary significance of the
registered mark to the relevant public rather than the purchaser
motivation shall be the test for determining whether the registered mark
has become the generic name.
iii. Section 15 Incontestability: No incontestable right shall be acquired in a
mark which is the generic name for goods or services for which it is
registered.
iv. Case: Bayer v. United Drug
1. Facts: Bayer had a recently expired patent for acetylsalicylic acid,
marketed by Bayer as “Aspirin”. Defendant was not only selling
acetylsalicylic acid, but was selling it as aspiring. Bayer sued, and
United Drug said that once the patent expired, the common name
for the compound went with it.
2. Bayer test for genericism: Did the buyers merely understand that
the word aspirin meant this kind of drug OR did it mean more than
than (that ti came from a single source, though, if anonymous, the
source from which they had got it before).
3. Holding: The court enjoined defendant from directly selling
"acetyl salicylic acid" under plaintiff's trademark to manufacturing
chemists, physicians, and retail druggists. However, since the word
"Aspirin" had already passed into public domain, defendant could
market "acetyl salicylic acid" as "Aspirin" without qualification to
public. Except for defendant's use of adjective "genuine," the court
rejected plaintiff's unfair trade claim. Bayer even used “aspirin” as
a noun, making it descriptive and tied to the chemical compound.
v. Common factors used to determine genericism:
1. Third-party usage
2. Plaintiff/Markholder’s usage
3. Dictionary definitions
4. Media usage
5. Trade usage
6. Functional/common meaning by consumers
7. Surveys
vi. Case: King-Seely Thermos Co. v. Aladdin Industries, Inc.
1. Facts: King-Seely owned eight trademarks for “Thermos”.
Aladdin tried to sell its vacuum insulated bottles as a thermos
bottle, which it regarded as generic. Aladdin countered seeking
cancellation for genericism.
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2. Thermos Survey: one of two survey types; the question asked is

a. “What’s the name for containers that keep items hot or
cold?”
b. “What else can you call it other than a Thermos?”
c. Favors genericism
3. Holding: “Thermos” was generic, but Aladdin had to use lower
case “thermos” and put Aladdin as a possessive as a precedent, and
it can never use the word “original” or “genuine” to describe its
product.
vii. Case: Dupont v. Yoshida
1. Facts: DuPont made Teflon. YKK made an “Eflon” easy glide
zipper. Dupont sued YKK for infringement; YKK sought
cancellation as “Teflon” was generic.
2. Teflon Survey: Two steps
a. “Protective coatings are sometimes applied by
manufacturers to pots and pans, do you know of a grand
name or trademark or brand name for one of these
coatings? What is that brand name or trademark?”
b. Prime with questions like “is refrigerator a brand or a
common name?”, “is margarine a brand or a common
name?”
c. Then ask “is Teflon a brand or a common name”
d. More brand-owner friendly.
viii. “De Facto Secondary Meaning” The Shredded Wheat scenario, where
the public identifies a term with a single source of origin, but the term is
generic and not accorded trademark status. There are two types of de facto
secondary meaning
1. Where the public does not recognize the term at issue is a brand
name, but knows that there is a single source for the goods. This is
Shredded Wheat, or when other competitors are simply too lazy to
enter into the applicant’s market
2. Where a producer selects as a trademark a term that is deemed
already to have been the commonly recognized, generic, name of
the goods, but through substantial advertising, trademark use, and
market dominance, succeeds in establishing public trademark
recognition for this otherwise common name (i.e. LITE or ICE
beer). However, courts still won’t register the mark for
genericisim.
ix. Case: Otokoyama co. v. Wine of Japan Import: Genericism in a foreign
language:
1. Facts: Otokoyama Co. wanted to register OTOKOYAMA for use
in sake.Otokoyama in Japanese signifies a type of sake.
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2. Holding: The court failed to register the mark, and gave a hypo as
a reason. If a U.S. merchant was given the exclusive right to use
that word to designate its brand of sake, then others couldn’t call
the product by the word which designates that product in Japanese.
Any Japanese speaking customers or sake fans would be misled to
believe here is only one brand of otokoyama in the U.S.
x. Note: dial 1-800-G-e-n-e-r-i-c
1. Essentially Tea Rose-Rectanus for local numbers established
before a toll free in the area where the local is a senior user. CB.
312-313.
xi. Recapturing generic terms
1. Case: Millers Ale House v. Boynton Carolina Ale House
a. Facts: Plaintiff Miller asserted trademark rights in “ale
house”. In an earlier litigation against a different
competitor, Miller’s claim failed when the court held the
term to be generic for a drinking establishment. IN its suit
against Boynton, Miller argued that in the intervening 10
years, the term had ceased to be generic thanks too Miller’s
expanded operations throughout Florida. The district court
said it was possible, but not in this case because the
evidence of genericism had not significantly changed in the
10 years.
B. ABANDONMENT
i. Lanham Act Text: A mark is considered abandoned when either:
(1) Its used has been discontinued with intent not to resume such use.
Intent not to resume may be inferred from circumstances. Nonuse for three
consecutive years shall be prima facie evidence of abandonment. “Use” of
a mark means the bona fide use of that mark made in the ordinary course
of trade and not made merely to reserve a right in a mark
(2) When any course of conduct of the owner, including actos of omission
as wel as commission causes the mark to become the geneic name for the
goods or services on or in connection with which it is used or otherwise to
lose its significance as a mark. Purchaser motivation shall not be a test for
determining abandonment under this paragraph.
ii. Ways to abandon a mark

1. Commit genericide
2. Non-use (with no intent to resume such use)
3. Assignment in Gross or Naked Licensing
4. Failure to Police (?)
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iii. NON USE

1. Case: Silverman v. CBS
a. Facts: In 1928, two people created Amos and Andy, a
blackface minstrel show, and assigned all the rights to the
characters to CBS. CBS stopped airing radio shows in ’48,
made a TV series that ran from 1951-1966. Silverman
wanted to make a musical based on the Amos and Andy
characters, but CBS wouldn’t license (duh it was racist).
Silverman sough declaratory judgement as to whether the
marks were abandoned.
b. Elements of Abandonment
i. Non use
ii. Intent not to resume use
c. Holding: The mark was abandoned. It didn’t matter that
CBS abandoned it for the “right” reasons of not being
racist, nor that it eventually planned on using it in the
future. It passed the statutory period, so it was
abandonment.
2. Case: MLB Properties v. Sed Non Olet Denarius
a. Facts: After the Dodgers left for LA, and after 1981,
defendants opened a restaurant paying homage to the
Brooklyn Dodgers (not the LA Dodgers). Plaintiffs sued,
saying that the mark was simply “Dodgers”. The court
rejected the mark saying the “Brooklyn Dodgers” was a
non-transportable cultural institution separate from the Los
Angeles Dodgers or the Dodgers in Los Angeles. The
nonuse of Brooklyn Dodgers for 32 years constituted
abandonment.
3. Case: American Association for Justice v. American Trial Lawyers
Ass’n
a. Facts: ATLA changed its name to AAJ. An old ALTA
member started his own organization called ALTA.
Charged with infringement, he said that AAJ abandoned
their old mark. AAJ argued that it was using both marks, by
saing AAJ (formerly the ALTA) on its website,
advertisements, emails, etc.
b. Holding: Such use of designation “formerly” to capitalize
on the goodwill of the previous source identifier constitutes
bona fide use; AAJ did not abandon the ALTA mark. They
also continued to license their mark throughout their
transitory period, showing bona fide use of the mark as a
whole, maintained their old domain names, and used an old
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promotional video for a time after changing to AAJ with

the ALTA mark.
iv. ASSIGNMENT IN GROSS, NAKED LICENSING, FAILURE TO POLICE
1. Assignment in Gross:
2. Case: Clark & Freeman Corp v. Heartland Co. Ltd.
a. Facts: “Heartland” was used as a mark by defendants since
1985 for shirts, sweaters, trousers, and jackets. Plaintiffs
started using it in April 1986 for boots. Even though
Plaintiffs were senior adopter, they got priority because
they got an assignment from Sears for women’s boots for
“Heartland”. Defendants claim however, that the
assignment by Sears was in gross and so the plaintiffs do
not get to “tack” sear’s prior use to defeat defendant’s
claim of priority.
b. Assignment in gross rule: If a trademark is assigned
without the accompanying goodwill, the assignment is
invalid and the assignee must instead rely on his or her own
use to establish priority. Use of the mark by the assignee in
connection with a different goodwill and product would
result in a fraud on the purchasing public who reasonably
assume that the mark signifies the same thing, whether used
by one person or another.
c. Holding: Sears sold only Women’s pixie boots under
“Heartland”, while plaintiffs immediately applied it only to
men’s shoes, then later to men’s hiking boots. The markets
are distinct; it is unlikely that men buying the “Heartland”
boots would be considering the reputation for footwear that
sears had built by selling women’s boots. Furthermore, the
fact they bought the name just to get to use it and get
priority is an example of bad faith. The assignment was
naked.
d. Case: Barcamerica International v. Tyfield:
i. Facts: The dispute was over which party had the
right to the trademark "Leonardo da Vinci" for
wines. Barcamerica federally registered its
trademark in 1984, and Tyfield pursued its first
federal registration in 1996. Issues as to actual
number of sales and use in commerce were
complex, and portended a difficult weighing of
evidence. But Tyfield cut through with a direct and
aggressive legal strategy - charging that
Barcamerica had lost, irrespective of use in
commerce, the right to the trademark by engaging
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in "naked licensing," by failing to insure that

licensees maintained quality of the product.
Testimony showed that Barcamerica had
exclusively licensed the use of the "Leonardo da
Vinci" trademark to a third party, Renaissance
Vineyards. The agreement contained no quality
control mechanism and was to continue in effect in
perpetuity. The agreement made Renaissance solely
responsible for any claims for negligence, breach of
warranty, or products liability in the sale of the
wine. All Barcamerica could muster was its belief
that Renaissance made "good wine."
ii. Naked Licensing:x`
iii. Holding: The court held that whether Renaissance
wines were objectively good or not was "simply
irrelevant." The key factor was that Barcamerica
had played no meaningful role in holding the wine
to a standard of quality. Perhaps surprisingly, even
an effort to insure that bad wine was being made
might have been better for the plaintiff. The court
reasoned that the public had a right to a consistent
expectation, high, middle, or low, and that
"customers are entitled to assume that the nature
and quality of goods and services sold under the
mark … will be consistent and predictable." The
court quoted a licensing treatise that "naked
licensing, without any control over the quality of
the goods … is inherently deceptive and constitutes
abandonment…"
VI. INFRINGING USE
A. INFRINGING USE (REGISTERED §32, §4(A) §43(C) UNREGISTERED §45)
i. Lanham Act §32: Remedies, infringement, innocent infringement by
printers and publishers for registered marks:
1. Any person who shall, without the consent of the registrant
2. Use in commerce any reproduction, counterfeit, copy or colorable
imitation of a registered mark in connection with the sale
distribution or advertising of any goods or services on or in
connection with such use is likely to cause confusion or to cause
mistake or to deceive shall be liable in a civil action…
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ii. Key Provisions of §32

1. Plaintiff must be the holder of a registered mark
2. Defendant must have used mark in colorable imitation in
commerce
a. This means using in commerce any copy, or colorable
imitation of the registered mark in connection with the
sale, offering for sale, distribution or advertising of any
goods or services with which such use is likely to cause
confusion.
3. Use must be in connection with the sale, distribution or
advertisement of goods or services
4. Use must be likely to cause confusion, mistake, or to deceive as to
source, sponsorship or affiliation.
iii. Lanham Act §43: False designation of origin, false descriptions, and
dilution forbidden
(a) a civil action against
(1) Any person who, on or in connection with any goods or services uses
in commerce any word, name, symbol or any false designation or origin,
false or misleading description of fact, or false or misleading
representation of fact which
(A)is likely to cause confusion as to the affiliation or association of such
person with another person, or as to the origin, sponsorship, or approval of
his or her goods, services, or commercial activities by another person
OR
(2) in commercial advertising or promotion misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
persons’ goods, services, or commercial activities.
iv. Lanham Act §45 Definition of “use in commerce”: the term means the
bona fide use of a mark in the ordinary course of trade, and not made
merely to reserve a right in the mark a mark shall be deemed to be in use
in commerce
(1) on goods when – (A) it is placed in any manner on the goods or their
containers or the displays or tags or associated documents and (B) the
goods are sold or transported in commerce
(2) on services when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce…
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v. Likelihood of Confusion factors

1. CB 366-368 has all of the different circuits. The following
matter for the Fall 2015 Final (compare them both):
2. Ninth Circuit Factors (Sleekcraft factors)
a. (1) strength of the mark;
b. (2) proximity of the goods;
c. (3) similarity of the marks;
d. (4) evidence of actual confusion;
e. (5) marketing channels used;
f. (6) type of goods and the degree of care likely to be
exercised by the purchaser;
g. (7) defendant’s intent in selecting the mark; and
h. (8) likelihood of expansion of the product lines.”)
3. Rothman Synthesized Factors
a. (1) Strength of the mark
i. Registration
ii. Advertising
iii. Sales
iv. Years in use
v. 3rd party use
vi. Type of mark (degree of distinctiveness)
b. (2) Similarity of the marks
i. Sight
ii. Sound
iii. Meaning (including doctrine of foreign equivalents)
c. (3) Proximity of the marks/likelihood of bridging the
gap/marketing channels
d. (4) Actual confusion
i. Years in use
ii. Misdirected mail, calls, emails, etc.
iii. Statements of confusion
iv. surveys
e. (5) Intent - Tests
i. Knowledge or
ii. To confuse
iii. To use same or similar mark
f. (6) Consumer care / Sophistication / Quality & Cost of
goods
B. POINT OF SALE INFRINGEMENT
i. Case: E&J Gallo Winery v. Consorzio Del Gallo Nero
1. Facts: Gallo brought a suit for infringement and dilution against
Nero. Gallo sells wine all over the U.S. and has used the Gallo
mark since 1933. Nero was a trade association in Florence that
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promotes Chianti, and can date back to 1924, and has used a black
rooster, or “gallo nero” on the neck seal of its bottles surrounded
by the designation “Consorzio Vino Chianti Clasico”. E&J has
sold sold over 2 billion bottles in the U.S. bearing the Gallo mark,
and has spent over 500 million in advertising. Nero has never
distributed a bottle in the U.S.
2. Holding: Looking at the strength of the plaintiffs mark, the
similarity of the marks, the similarity of the goods, the similarity of
the marketing channels, degree of care (wine is wine and an
inpulse buy), Evidence of actual confusion, Defendant’s intent in
adopting its name, there was likelihood of confusion, and Gallo got
SJ on the infringement claim.
ii. Case: Banfi Products corp. v. Kendall-Jackson Winery Ltd.
1. Facts: Banfi imports Col-Di-Sasso wine. It means “hill of stone”.
Banfi is the largest importer of Italian wines in the U.S., and it
produces a domestic chardonnay. Col-Di-Sasso’s trade dress is
distinctive with a orange yellow landscape surrounded by a green-
black marbleized background. The name is featured on the front
label as are the words Sangiovese and Cabernet. It’s a cheap wine
sold at olive garden. Jackson is the owner of Pepi winery in Napa
and he owns ROBERT PEPI COLLINE DI SASSI which means
Robert Pepi little hills of stone. His wine has an orange and cream
label saying Robert Pepi in the top left with Colline di sassi and
Napa Valley sangiovese centered on it in black print. Robert Pepi
is the brand name, and Collini di Sassi is the “fanciful” name. It
had lmited distribution from 133 cases to 1345 cases of wine. It’s a
high end limited production wine.
2. Holding: Applying Polaroid, the court found that Kendall’s mark
was not incredibly strong (Banfi). They found the marks not that
similar in sight sound or meaning (Banfi), The products don’t
compete with each other in the same marketplace (Banfi), no
likelihood of bridging the gap (Banfi), Good faith in making the
mark (Banfi), Col di Sasso isn’t of bad quality “Banfi”, and
sophistication of buyers (Banfi). No likelihood of confusion
between the two makers.
C. PRE-SALE, POST-SALE, INITIAL INTEREST CONFUSION & REVERSE CONFUSION
i. Case: Mobil Oil v. Pegasus Petroleum (initial interest)
1. Facts: Mobil oil sued Pegasus petroleum for infringement. Mobil
obviously is the oil megagiant that sells a bunch of oil all over the
U.S. with its “flying horse” symbol that is usually red but can also
be black white or blue. Pegasus, incorporated in 198a, only does
oil trading and does not sell oil to the public. Its owner said he
wanted a name with mythical qualities. He admitted he knew of
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Mobil’s flying horse symbol when he picked the name but that he
did not know the symbol represented Pegasus or that Mobil used
the name Pegasus in the business. In 1982, Mobil asked Pegasus to
stop, they didn’t Mobil brought an infringement suit.
2. Holding: Applying Polaroid, Mobil won. “Potential purchasers
would be misled into an initial interest in Pegasus Petroleum”
because they thought that Pegasus Petroleum was associated with
Mobil. Even though no sale may have occurred, such initial
confusion is sufficient trademark injury.
ii. Case: Brookfield v. West Coast Video (initial interest)
1. Facts: Brookfield was an IMDB predecessor who made a software
called “Movie Buff” that let people look up film submissions,
industry credits, professional contacts and future projects. It’s been
around since 1987. In ’93 they expanded into a consumer market
selling “Moviebuff” in 1996, they tried to register
“moviebuff.com” but found out defendants had already registered
it; instead they picked brookfieldcomm.com and
moviebuffonline.com. Soon thereafter, they began selling their
software online and letting people use their database online to
search for info. In 1997, they applied for a federal mark for Movie
Buff for “computer software providing data and information in the
field of the motion picture and television industries. Both marks
issued in 1998, and they had a mark in California since ’94.
Brookfield learned in 98 that West Coase was planning on
launching a database similar to what Brookfield had on the
moveibuff.com. West Coast claimed the mark because they called
their store “the movie buff’s store” on which they had a mark
registered federally in 1991 covering retail store services for
videocassettes/games, and they’ve used Movie buff in a variety of
ways since 1988. Brookfield asked them to cease and desist;
instead they launched the database.
2. Holding: The court found that Brookfield had priority in the mark
because their mark was “movie buff” which is the domain name
that West Coast had (rather than themoviebuff.com). the court
found that the use of that domain name is likely to be found
confusingly similar to Brookfield’s mark and constitutes trademark
infringement. Moving on, however, the court also found that they
could enjoin West Coast from using marks confusingly similar to
Moviebuff in metatags and buried code (i.e. “moviebuff” or
“moviebuff.com” in meta tags). The court found they could not
because doing so would cause people to be directed to West
coast’s website when actually looking for Brookfield’s where
they’ll find a database similar enough to Brookfield’s to just not
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bother using their site. They can use “Movie Buff” with a space,
because that’s descriptive and has a meaning, but they cannot use
“moviebuff” as a metatag, because that is Brookfield’s mark. West
coast can also use the MovieBuff mark nominatively (see
nominative fair use, infra), but that’s it.
iii. Case: Playboy Enterprises, Inc. v. Netscape Communications Corp.
1. Netscape used various lists of terms to which they keyed
advertisers' banner ads. Netscape allowed adult-oriented
companies to link their ads to the words "playboy" and "playmate."
Playboy asserted that such use infringed and diluted its trademarks.
Regarding the trademark infringement claim, the court found that
plaintiff successfully established a genuine issue regarding the
likelihood of consumer confusion that resulted from the providers'
use of plaintiff's marks. An expert study introduced by plaintiff
established a strong likelihood of initial interest confusion among
consumers (which site is a real Playboy site?). The court also
found that the district court erred in finding the providers' use
nominative.
2. Holding: the court found likelihood of initial interest confusion.
This limited Brookfield only to instances where people would be
initially confused. If banner ads were labeled and source identified,
then there would be no issue.
iv. Case: Munsingwear, Inc. v. Jockey International (pre-sale)
1. Facts: Jockey started selling horizontal fly briefs in 1992 called
the “Jockey Pouch”, which consisted of briefs with the horizontal
fly and the JOCKEY mark woven into the waistband. They were
cellophane wrapped with the JOCKEY mark on the front and the
back of the packaging. Munsingwear sued, claiming that it had
trademark rights on the H-Fly since 1946, reinforce by millions in
advertising.
2. Pre-Sale vs. Post-Sale Confusion
a. Pre-Sale Confusion: confusion that occurs with the product
as packaged and sold to the consuming public
b. Post Sale Confusion: Confusion that occurs when looking
at the actual product itself
3. Holding: Since the post-sale product isn’t really exposed to the
public, there isn’t a lot of chance for post-sale confusion (people
don’t run around in their underwear). Thus, a pre-sale approach
was appropriate. Applying Squirtco, the court found there was no
likelihood of confusion and Jockey’s underwear was fine.
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v. Case: Harlem Wizards Entertainment Basketball Inc, v. NBA Properties,

Inc.
1. Facts: Senior mark holder is the Harlem Wizards, a show
basketball team that does tricks for charity to third party
organizations, and that sells merchandise. The Junior mark holder
is the Washington Wizards, a renamed NBA team. Wizards sued
the NBA team for infringement, alleging “reverse confusion”
2. Reverse confusion: A junior user causes a likelihood of confusion
because people think that the senior mark holders goods or services
come from the junior user.
a. Reverse confusion arises when a larger more powerful
entity adopts the trademark of a smaller, less powerful
trademark user and thereby causes confusion as to the
origin of the senior trademark user’s goods or services
3. Holding: applying the Third Circuit’s test, there was no likelihood
of confusion. The services offered (trick basketball vs. pro)
weren’t the same, the channels of trade and target audiences were
different, etc. No reverse foncusion.
vi. Case: Dreamwerks Prudiction, Inc. v. SKG Studio
1. Facts: Plaintiff, a promoter of science fiction merchandise, sued
defendant, a movie production company, for trademark
infringement under the Lanham Act and state law. Plaintiff argued
that consumers were likely to be reverse confused by the two
marks. Defendant argued that science fiction merchandise
promotion and movie making were not related, and that plaintiff
targeted a specific segment of consumers, while defendant targeted
everyone. Applying a multi-factor test, the court found that
"DreamWorks" sounded exactly like "Dreamwerks," and that the
minor spelling differences were not enough to distinguish the two
marks. Noting that many movie production companies sell and
promote merchandise with their movies, the court also found that
the two businesses were related enough to create the likelihood of
confusion necessary to state a trademark infringement claim.
2. Holding: The court reversed the summary judgment grant, holding
that there was a likelihood of reverse confusion between the marks,
because "DreamWorks SKG" looked and sounded like
"Dreamwerks," and because the parties' respective businesses,
making movies and promoting science fiction merchandise, were
related.
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D. SECONDARY LIABILITY
i. Contributory Liability: occurs when there is
1. Intentional inducement of Infringement where the junior holder
2. Knew or had reason to know of infringement and facilitated
infringement in some way [ usually by being a manufacturer,
distributor, or landlord]
ii. Vicarious Liability: creates liability if “the defendant and the infringer
have an apparent or actual partnership, have authority to bind one another
in transactions with third parties or exercise joint ownership or control
over the infringing product. “
VII. OTHER THEORIES OF LIABILITY
A. SECTION 43(A)
i. GENERALLY; INFRINGEMENT OF UNREGISTERED MARKS
1. Lanham Act Section 43(a):
(1) any person who, on or in connection with any goods or services
or any container for goods, uses in commerce any word, term,
name, symbol or device, or any combination thereof, or any flase
designation of origin, false or misleading description of fact, or
false or misleading representation of fact which
(A) is likely to cause confusion or to cause mistake or to deceive as
to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his
or her goods, services, or commercial activities by another person,
shall be liable in a civil action by any person who believes that he

or she is likely to be damaged by such act.
(3) I a civil action for trade dress infringement, for trade dress not
registered on the principal register, the person who asserts trade
dress protection has the burden of proving that the matter sought to
be protected is not functional.
2. Causes of Action under §43(a)
a. Unregistered trademark or service mark infringement
b. False designation of origin
c. False endorsement (& attribution rights?)
d. False or misleading advertising
ii. TRADE DRESS
1. Case: Best Cellars v. Grape Finds
a. Facts: Best Cellars had a store in New York. Its wines
were categorized into eight taste profiles, the wines were
displayed on the outside walls on stainless steel wire
pedestals at eye height, where there was a “shelf talker”.
Below each bottle and talker are nine bottles of the same
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wine stored vertically. They are backlit and masked by

American Sycamore, and the openings in the wood are
trimmed with stainless steel. There are drawers below for
storing more wine. Grape Finds liked Best Cellar’s model,
and hired Best Cellar’s old designer to design a wine store
for him. In Grape Finds, there were eight taste categories,
wine in the permiter of the store with each wine placed
slightly above eye level on a stainless teel pedestal, at eye
level is a shelf talker with nine bottles horizontally stacked.
There is no wall, but overhead lights give the illusion of
illumination.
b. Holding: To find trade dress infringement under §43(a) the
plaintif must demonstrate that (1) its trade dress is either
inherently distinctive or acquired distinctiveness through a
secondary meaning and that (2) there is a likelihood of
confusion between defendant’s trade dress and the
plaintiffs. Best Cellars proved that its dress was inherently
distinctive, and the court found a likelihood of confusion.
But Grape Finds isn’t ruined. It just has to change the
“wall of wine” trade dress.
2. Case: Conopco Inc. v. May Dept. Store Co.
a. Facts: Conopco wanted to “relaunch” Vaseline Intensive
Care Lotion, something it had been selling for over 20
years. It developed a new bottle and shape. In 1989, the
bottle was everywhere, and they spend $37 million
advertising the new lotion. Around that time Ansehl
became aware of Conopco’s plan to relaunch VICL and
made a private label competitor that looked similar.
Conopco sued for infringement of unregistered trade dress
§43(a)
b. This is what’s OK for private label competitors: If a
retailer markets a private label product in competition to a
national brand and the retailer packages its product in a
manner to make it clear to the consumer that the product is
similar to the national brand and intended for the same
purposes while clearly marking its product with its private
logo and invites the customer to compare the product with
the national brand by name, the trade dress use is probably
OK absent evidence of actual confusion.
c. Holding: No likelihood of confusion, as the generic was
marked very clearly differently than the regular Vaseline
lotion, with a prominent Venture logo on it.
3. Case: McNiel-PPC v. Guardian Drug
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a. Facts: Plaintiff manufactured over-the-counter medications

and personal care products, including a digestive aid for
lactose-intolerant persons. Defendants manufactured
similar generic over-the-counter products. Plaintiff brought
an action for trade dress infringement and dilution pursuant
to §43(a) of the Lanham Act claiming defendants
deliberately copied the overall appearance of its packaging.
b. Holding: The court granted plaintiff's motion for a
preliminary injunction to compel defendants to recall all
packaging, labeling, and/or sales materials infringing on
plaintiff's trade dress rights in its digestive aid since there
was a strong likelihood of consumer confusion and a
showing of irreparable harm.
4. Case: McNeil v. Heartland Sweeteners
a. Facts: This appeal required the court to decide when the
trade dress on packaging of store-brand products was so
similar to that of a directly competing national-brand
product as to create a likelihood of confusion among
consumers. The seller argued that the packager's store
brand product packaging was confusingly similar to the
packaging for the seller's product, Splenda. The court noted
that, with respect to all three store brand packages at issue,
the most important difference was that the trade name
"Splenda" was not present, but the name and logo of the
respective stores was. Given the manner in which the store
name appeared on the packaging for two of the products,
the court held that the district court did not clearly err in
weighing the first Lapp factor regarding similarity in favor
of the packager. However, the court found that the district
court clearly erred in not finding a likelihood of confusion
as to the third package that merely affixed a tiny
differentiating label. As to that product only, the court
remanded for the district court to consider whether the
seller established a likelihood of success on the remaining
elements of trade dress infringement under the Lanham
Act.
b. Holding: The court affirmed the district court's decision in
part, and vacated it in part. As to one of the alleged
infringing products, the court remanded the action for the
district court to consider whether the seller established a
likelihood of success on the remaining elements of trade
dress infringement. Also, Splenda couldn’t get a monopoly
on yellow. Yellow meant sucralose, not Splenda.
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iii. FALSE DESIGNATIONS AND REPRESENTATIONS

1. Case: Dastar Corporation v. Twentieth Century Fox Film Corp.
a. Facts: Fox contended that the Dastar marketed its WWII
footage as its own product, without acknowledging reliance
on Fox’s original television series, and thus falsely
designated the origin of the video in violation of § 43(a).
Dastar maintained that its designation of itself as the origin
of the physical video product was entirely accurate. The
United States Supreme Court held that no false designation
of origin was shown since the phrase "origin of goods," as
used in § 43(a) did not connote the person or entity which
originated the ideas contained in the video, and instead
referred only to Dastar’s tangible video product. It was of
no consequence to consumers whether Dastar was the
source of the ideas in the video, and the ideas presented by
Dastar’s communicative product were protected, if at all,
through the exclusive protections of copyright. Further,
§43(a) was intended to protect consumers from misleading
designations of origin, not to protect creativity or
originality, and determining the actual originators of the
ideas expressed in the book and the television series would
pose serious practical problems.
b. Reverse-passing off: The action of a provider of goods or
services who purchases another's goods or services,
removes the latter's trademark and replaces it with its own.
c. Passing off: Passing off (or palming off, as it is sometimes
called) occurs when a producer misrepresents his own
goods or services as someone else's.
d. Holding: Reverse passing off could be sustained if Dastar
had bought some of New Line’s Crusade tapes and merely
repackaged them as its own. However, it took a creative
work in the public domain, copied it, made modifications,
and produced its very own series of videotapes. Here the
“goods” were not the Crusade tapes, but the footage shot by
the pool cameramen; Fox didn’t even originate that
footage. If §43(a) required you to attribute uncopyrighted
materials, you would have to go on a goose chase for
everyone involved, and that’s not the point of the law.
2. Case: Bretford Mfg. Inc. v. Smith System Mfg. Corp.
a. Facts: Bretford made computer tables with an easy-change
height adjustment. Smith decided to copy the leg assembly
for its own tables. When a specialized metal fabricator's
initial efforts were unsatisfactory, Smith attached
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Bretford’s leg assembly to its own table top to show to a

large school district, which ordered Smith's tables. The
tables were delivered with the subcontractor's leg
assemblies. Bretford contended the design was its product's
trade dress, which Smith infringed and that Smith engaged
in "reverse passing off" in showing the sample table to the
school district's purchasing officials. The appellate court
held that Smith had the right (so far as the Lanham Act was
concerned) to incorporate parts manufactured by others,
provided that it manufactured the finished product and did
not mislead anyone about who should be held responsible
for shortcomings. The Lanham Act focused on the
consumer rather than the trade dress owner. Because, as far
as the school district was concerned, the "origin" of the
tables it was buying was the competitor, there was no false
designation of origin.
iv. FALSE ENDORSEMENT & AUTHOR’S AND PERFORMER’S RIGHTS OF
ATTRIBUTION.
1. Case: Gillam v. American Broadcasting Co.
a. Facts: Gillam were the creators of Monty Python’s Flying
Circus, a television series. Under a contract with a British
broadcasting association, Gillam retained strict creative
control over the finished programs. The British
broadcasting association licensed the programs to ABC for
rebroadcast in America. When Gillam learned that ABC
had drastically shortened the programs and edited them for
profanity, they sued for copyright infringement and
violation of § 43(a) of the Lanham Act (misattribution).
The court held that the Lanham Act protected against
mutilation of artistic works as a false designation of origin
of goods. The court enjoined appellee from further
infringement.
2. Case: King v. Innovation Books
a. Facts: In claims under § 43(a) of the Lanham Act, Stephen
King sought to enjoin defendants, a movie production
company and distributor, from associating his name with
their movie titled after King's short story, Lawnmower
Man. The trial court granted a preliminary injunction
prohibiting defendants from any use of King's name on or
in connection with the movie, encompassing defendants'
use of either a possessory credit or a "based upon" credit
dealing with altered or derivative works. The court
affirmed in part and reversed in part, finding that King was
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entitled to enjoin defendants' use of a possessory credit, but

not their use of a "based upon" credit, because plaintiff had
failed to establish a likelihood of success in his objections
to the "based upon" credit.
3. Case: Rogers v. Grimaldi
a. Facts: Ginger Rogers sued appellees, the producers and
distributors of a motion picture, for injunctive relief and
damages, alleging that appellees' film title included her
name in violation of §43(a) the Lanham Act. On appeal
from summary judgment for appellees, the court affirmed,
finding that the use of appellant's name in appellees' film
title was artistically relevant and did not violate the
Lanham Act as false advertising or false description
because it did not indicate that appellant endorsed the film
or helped produce it, and did not mislead consumers as to
the content of the film.
b. Rogers Test: the First Amendment protects the usage of
another’s mark in the title of an expressive work if:
i. The title has artistic relevance AND
ii. The title is NOT explicitly misleading as to the
source or content of the work.
4. Case: Park v. La Face Records
a. Facts: Outkast recorded a song and used Rosa Parks's
name as the title. The appellate court applied the Rogers
test for balancing defendants' First Amendment interests
with the protections of the Lanham Act, and found that the
artistic relationship between the title and the content of the
song was not obvious and was "open to reasonable debate."
Outkast did not intend the song to be about Rosa Parks, and
the lyrics were not about her. Reasonable persons could
have concluded that there was no relationship between
Rosa Parks's name and the content of the song. Outkast’s
cries of "artist" and "symbol" as reasons for appropriating
Rosa Parks's name for a song title did not absolve them
from potential liability for filching her good name.
5. Case: ETW v. Jireh
a. Facts: ETW (a licensing agent for Tiger Woods) agent
claimed that the Jireh’s prints which showed a painting of
Woods constituted unauthorized use of a registered
trademark in violation of §43(a) of the Lanham Act The
court then addressed trademark claims under the Lanham
Act based on the unauthorized use of the famous golfer's
likeness. The court held that, as a general rule, a person's
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image or likeness could not function as a trademark. Third,

it addressed Lanham Act claims of unfair competition and
false advertising in the nature of false As to the Lanham
Act false endorsement claim, the court held that the
Lanham Act should be applied to artistic works only where
the public interest in avoiding confusion outweighed the
public interest in free expression, and the Act did not apply
to the artist's work. Finally, the golfer's right of publicity
yielded to the First Amendment right of the author to
express.
v. FALSE AND MISLEADING ADVERTISING
1. Lanham Act §43(a)(1)(B):
Any person who, on or in connection with any goods or services,
or any container for goods, uses in commerce any word, term,
name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or
false or misleading representation of fact, which--
(B) in commercial advertising or promotion, misrepresents the

nature, characteristics, qualities, or geographic origin of his or her
or another person's goods, services, or commercial activities, shall
be liable in a civil action by any person who believes that he or she
is or is likely to be damaged by such act.
2. Ninth Circuit Formulation for False Advertising
a. A false statement of fact by the defendant in a commercial
advertisement about its own or another’s product
b. The statement actually deceived or has the tendency to
deceive a substantial segment of its audience
c. The deception is material in that it is likely to influence a
purchasing decision
d. The defendant cause its false statement to enter into
interstate commerce and;
e. The plaintiff has been or is likely to be injured as a result of
the false statement, either by direct diversion of sales from
itself to defendant or by a lessening of the goodwill
associated with its products.
3. Questions to ask for False Advertising
a. (1) Was the problematic statement in commercial
advertising or promotion?
b. (2) was the problematic statement about the nature, quality,
or characteristics of the product, service, or commercial
activities?
c. (3) was the statement literally false?
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d. (4) If not, was it false by necessary implication?

e. (5) if not, is the statement misleading? If it is then you
i. Must show that a significant proportion of
consumers are likely to be deceived and
ii. Must show the deception was material to
purchasing decisions made by customers.
4. Case: Coca Cola v. Tropicana Prods, Inc.
a. Facts: Tropicana ran an advertisement stating that its
orange juice was "pure, pasteurized juice as it came from
the orange." Coca Cola brought suit against Tropicana
under § 43(a) of the Lanham Act, for false advertising,
alleging that Tropicana's commercial was false because it
incorrectly represented that Tropicana's juice contained
unprocessed, fresh-squeezed juice when, in fact,
Tropicana's juice was pasteurized and sometimes frozen
prior to packaging Coca Cola and Tropicana were leading
national competitors in the chilled juice market. If
consumers were misled by Tropicana's commercial, Coca
Cola probably would have suffered irreparable injury.
Furthermore, Tropicana's advertisement was false on its
face because pasteurized juice did not come from oranges.
The court issued a PI against Tropicana from airing the
misleading advertisement on TV
5. Case: United Industries Corp. v. Clorox Co.
a. Facts: Clorox and United manufactured competing
insecticides. United ran television advertisement asserting
that its product killed insects within 24 hours. United then
sought declaration that its claim did not constitute false
advertising under §43(a)(1)(B) of the Lanham Act. Clorox
moved for preliminary injunction barring United's use of
advertisement pending litigation of the merits of its false
advertising counterclaim. In determining likelihood of
success as to merits of Clorox's counterclaim, the court
upheld the trial court's determination that United's
marketing claims were not literally false, as sufficiently
reliable scientific evidence supported United's advertising
claims. The trial court did not clearly err in its
determination that United's advertisements were neither
deceptive nor misleading as the advertisement at issue was
subject to a variety of interpretations. Because Clorox's
likelihood of success as to its counterclaim was slim and it
had not shown irreparable harm, preliminary injunction was
not warranted.
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6. Case: Clorox Co., Puerto Rico v. Proctor and Gamble

Commercial Co.
a. Facts: Clorox appealed a district court order dismissing its
claims alleging, inter alia, that Proctor and Gamble's,
advertisements ("Compare with your detergent . . . Whiter
is not possible") were false and misleading in violation of §
43(a) of the Lanham Act. The court of appeals vacated and
remanded the district court's dismissal concluding that
Clorox had stated a claim under § 43(a) of the Lanham Act.
The court noted that the district court's dismissal was done
in the face of Proctor and Gamble's acknowledgment that
"the complaint states a claim under the federal false
advertising statute § 43(a) of the Lanham Act" and thus
Clorox had no reason to suspect that its Lanham Act claim
was in danger of dismissal. In addition the court found that
Clorox had stated a claim that Proctor and Gamble's
"Doorstep Challenge" commercials were literally false and
that the statements, ("Compare with your detergent, etc.")
were not non-actionable puffing.
7. Case: Innovation Ventures, LLC v. N.V.E., Inc.
a. Facts: Innovation is the maker of 5 Hour Energy. It won a
law suit against a third party who tried to make “6 Hour
Energy”. It sent a recall notice to retailers ordering the
return of “6 Hour” energy shots. The problem with the
recall notice is there was another shot not affected by the
litigation called “6 Hour Power” that got caught in the
crossfire and accidentally returned. During this period,
Innovation was suing NVE for its 6 Hour Power shot as
infringing as well. The language of the notice teetered on
the cusp between ambiguity and literal falsity in two main
respects—descriptive and grammatical. There was a
genuine dispute as to whether it was misleading and tended
to deceive its intended audience. Also, defendant's damages
evidence was sufficient to survive summary judgment.
B. DILUTION
i. The purpose of dilution claims: To protect trademarks from the
“gradual whittling away or dispersion of the identity and to hold upon the
public mind of the mark or name by its use upon non-competing goods”.
ii. Lanham Act §43(c): The owner of a famous mark that is distinctive,
inherently or through acquired distinctiveness, shall be entitled to an
injunction against another person who after the owner’s mark has become
famous, commences use of a mark or a trade name in commerce that is
likely to cause dilution by blurring or dilution by tarnishment
Page 69 of 79
regardless of the presence or absence of actual or likely confusion,

competition, or actual economic injury.
iii. Dilution for Dummies: Plaintiff must establish
1. They have a famous mark used in commerce before Defendant’s
mark
2. The defendant uses a mark or name that is likely to cause dilution
by
a. Blurring
b. Tarnishment
iv. Definition of a Famous Mark (Lanham Act §43(c)(2)): a mark is
famous if it is widely recognized by the general consuming public of the
U.S. as a designation of source. Relevant factors for determining “fame”
include:
1. Duration, extent and geographic reach of advertising and publicity
2. Amount, volume, and geographic extend of sales
3. Extent of the mark’s actual recognition
4. In some cases, federal registration
v. Dilution by blurring: blurring is an association arising from the similarity
between a mark or trade name and a famous mark. In determining whether
a mrk or trade name is likely to cause dilution by blurring the court may
consider all relevant factors, including
1. The degree of similarity of the marks
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 intended to create an association with the famous
mark
6. Any actual association between the marks
vi. Case: Visa International v. JSL
1. Facts: JSL did not dispute that Visa's mark was famous and
distinctive or that Visa's mark was used first in commerce, but JSL
contended that there was no indication that the eVisa mark was
likely to dilute the Visa mark. The appellate court held that dilution
of Visa's mark by blurring was likely since Visa and eVisa were
virtually identical, the common "e" prefix did not distinguish the
marks, and two products would be competing for association with
the word "Visa." Further, Visa was a strong mark which drew on
positive mental associations with travel visas, and it was
undisputed that Visa's credit card was the world's top brand in
financial services and online purchases. Also, JSL was not using
the word "visa" for its literal dictionary definition, but created a
Page 70 of 79
novel meaning for the word to identify a multilingual education

and information business.
vii. Dilution by Tarnishment (§43(c)(2))
1. Definition: Tarnishment is an association arising from the
similarity between a mark or trade name and a famous mark that
harms the reputation of the famous mark.
2. “A trademark may be tarnished when it is linked to products of
shoddy quality, or is portrayed in an unwholesome or unsavory
context with the result that the public will associate the lack of
quality or lack of prestige in the defendants goods with the
plaintiff’s unrelated goods”
viii. Case: V Secrect Catalogue, Inc. v. Moseley:
1. Facts: The store, which sold sexually oriented products, used the
name "Victor's Little Secret," and Victoria’s Secret alleged that its
"Victoria's Secret" mark was thereby tarnished. On appeal, the
court held that § 43(c) required only a likelihood of harm to a
senior mark's reputation. The change created a presumption, or
at least a very strong inference, of tarnishment where there
was a clear semantic association between a famous mark and a
new mark, and the new mark was used to sell sex products. The
store had not rebutted that presumption or inference by showing no
real probability of tarnishment. The store's arguments that it had
the right to use its proprietor's first name and that the association
between the marks was de minimis were insufficient. The word
"Secret" was used in the store's name only to create an association
with the "Victoria's Secret" mark. Victoria’s secret got injunctive
relief, and the guy changed the name to Cathy’s Secret.
VIII. DEFENSES
A. STATUTORY DEFENSES
i. Lanham Act §43(c)(3) exclusions [the following is not actionable]:
1. (A) Any Fair Use including nominative or descriptive fair use, or
facilitation of such fair use, of a famous mark by another person
other than as a designation of source for the person’s own
goods or services including those used in connection with
a. Advertising or promotion that permits consumers to
compare goods or services
b. Identifying and parodying, criticizing, or commenting upon
the famous mark owner of the goods or services of the
famous mark owner
2. (B) All forms of news reporting and news commentary
3. (C) Any noncommercial use of a mark
Page 71 of 79
ii. Case: Louis Vuitton v. Haute Diggity Dog

1. Facts: Haute Diggity Dog manufactured toys on which dogs could
chew and which parodied famous trademarks on luxury products,
including those of Louis Vuitton. At issue were chew toys that
mimicked Louis Vuitton's handbags. The district court held that
Haute Diggity Dog's products were not likely to cause confusion
with those of Louis Vuitton's. The court agreed. The court
explained that because the likelihood-of-confusion factors
substantially favored Haute Diggity Dog in that Haute Diggity
Dog's product was clearly a successful parody, summary judgment
for Haute Diggity Dog on the trademark infringement claim was
proper. Specifically, the court noted that Haute Diggity Dog's and
Louis Vuitton's products were neither sold nor advertised in the
same way, and the distinction between their marks was readily
recognized by consumers. On the trademark dilution claim,
however, the court rejected the district court's reasoning, but also
affirmed. However, court held that Haute Diggity Dog's marks
were a successful parody that would not blur the distinctiveness of
Louis Vuitton's famous mark as a unique identifier of its source.
iii. Incontestability under §15: After 5 years a mark becomes incontestable.
Someone can still challenge it if the mark is either
1. Generic
2. Falls within paragraph 3 or 5 of the cancellation provision.
iv. Case: Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc.
1. Facts: Petitioner argued that because its registered service mark
"Park 'N Fly" had attained incontestable status, respondent
infringed the mark by using the words "Park and Fly." The
Supreme Court agreed, holding that incontestability not only
barred cancellation of petitioner's mark, but allowed petitioner to
utilize that status to enjoin respondent's use of its mark. Moreover
nothing in Lanham, or in its legislative history, allowed an
incontestable mark to be challenged as merely descriptive and
nothing supported a departure from Lanham's clear language on
incontestability. That trademark registrations were issued without
inquiry into the application's merits was no basis for supporting
respondent's position as challenges were permitted following
publication of the registration.
v. Statutory Fair Use under §33(b)(4): Defense to Infringement
That the use of a name or term charged to be an infringement is a use,
otherwise than as a mark, of the party’s individual name in his own
business, or of the individual name of anyin in privity with such party or
of a term which is descriptive of and fairly and in good faith only to
describe the goods or services of such party or their geographic origin.
Page 72 of 79
vi. Note: ETW v. Jireh is an example of this. How else can you describe Tiger
Woods than as Tiger woods?
vii. Descriptive Fair use for Dummies: the descriptive fair use defense
protects your ability to use ordinary words to describe your own goods or
services, even if those words happen to be part of someone's trademark. It
also protects the use of your own name in connection with your business
or other activities. In KP Permanent Make-Up, Inc. v. Lasting Impression
I, Inc., infra the U.S. Supreme Court made clear that this defense applies
to bar liability even if some consumer confusion results.
1. Examples of descriptive fair use include using the term "sweet-
tart" to describe a cranberry drink despite a candy company's
"SweeTarts" trademark for candy; and using the domain name
samadamsformayor.com despite a beer company's "Sam Adams"
trademark for beer.
viii. Case: United States Shoe Corp. v. Brown Group Inc.
1. Facts: Plaintiff corporation trademarked the phrase "Looks Like a
Pump, Feels Like a Sneaker" to describe its shoe. Defendant
corporation's subsequent advertisements for its own shoe included
the phrase “Think of it as a sneaker with no strings attached” and
"feels like a sneaker" with its own distinct logo prominently
displayed. Plaintiff asserted unfair competition and a trademark
violation. The court found that defendant's advertisement simply
used essentially descriptive language not likely to cause confusion
between the parties in the consumer's mind, which constituted fair
use under §33(b)(4). Plaintiff also failed to demonstrate a balance
of hardships in its favor, because it showed no injury to its mark
recognition, while defendant would be required to recall its
advertising at great cost.
ix. Case: Car-Freshner Corp. v. S.C. Johnsons & Son Inc.
1. Facts: Car-Freshner sued S.C. Johnson, claiming S.C. Johnson's
sale of its pine-tree-shaped plug-in freshener violated Car-
Freshner's trademark rights in the pine-tree shape of its air
fresheners and in its mark. S.C. Johnson asserted the affirmative
defense of fair use and moved for summary judgment. The lower
court rejected S.C. Johnson's claim of fair use and granted
summary judgment to Car-Freshner on that issue. However, the
lower court granted summary judgment to S.C. Johnson on the
ground that there was no likelihood of confusion between products.
Both parties appealed. The court held that fair use permitted others
to use protected marks to describe aspects of their own goods,
provided use was in good faith and not as a mark. See 15 U.S.C.S.
§ 1115(b)(4). The court held that S.C. Johnson's use of a pine-tree
shape was clearly descriptive. There was no indication S.C.
Page 73 of 79
Johnson used its tree shape as a mark. S.C. Johnson was fully
entitled to use a pine-tree shape descriptively, notwithstanding
Car-Freshner's use of a tree shape as a mark.
x. Case: KP Permanent Make-Up v. Lasting Impression
1. Facts: KP contended that it used the term "microcolor"
continuously well before Lasting Impression registered its
trademark and that its continued use of the term to describe its
products (permanent makeup) constituted a fair use under
§33(b)(4). Lasting Impression argued that, in order to show fair
use, KP was required to show that its use of the term was unlikely
to cause consumer confusion. The United States Supreme Court
held that KP had no independent burden to negate the likelihood of
any confusion in raising the affirmative defense that the term
"microcolor" was used descriptively, not as a mark, fairly, and in
good faith under §33(b)(4). Since Lasting Impression claimed
infringement, Lasting Impression was required to prove the
likelihood of consumer confusion, but the lack of such confusion
was not an element of the statutory fair use defense. Further, while
the likelihood of confusion was one consideration in determining
whether KP's use was fair, a finding of some degree of likely
confusion by itself did not preclude the fair use defense.
xi. Ninth Circuit Postscript: Factors for Evaluating Fairness of Use
1. Degree of likelihood of confusion
2. Strength of the plaintiff’s mark
3. Descriptive nature of the term
4. Availability of alternative descriptive terms
5. Pre-registration extent of use of term
6. Difference in uses
B. COMMON LAW, EQUITABLE, AND CONSTITUTIONAL DEFENSES
i. FIRST AMENDMENT AND THE ROGERS TEST
1. Rogers Test: the First Amendment protects the usage of another’s
mark in the title of an expressive work if:
a. The title has artistic relevance AND
b. The title is NOT explicitly misleading as to the source or
content of the work.
2. First Amendment Analysis:
a. Is it commercial or noncommercial speech?
i. Commercial: defined as “does no more than
propose a commercial transaction”; consideralso the
Bolger Factors
1. Is the speech an advertisement?
2. Does the speech refer to a specific product
or service?
Page 74 of 79
3. Is there an economic motivation for the

speaker?
b. If it is commercial speech, is the speech false or
misleading?
i. If yes, then the speech gets no first Amendment
protection.
3. Case: Mutual of Omaha v. Novak
a. Facts: The court affirmed the ruling that Novaks's use of
his Mutana of Omaha design caused confusion and
infringed plaintiff's trademark. The court found that the
factors were properly weighed in finding of a likelihood of
confusion. The court held that the trademark was strong,
defendant's design was very similar to plaintiff's, defendant
put design on similar merchandise, there was little or no
direct competition, and defendant did not pass off goods as
plaintiff's goods. The court issued a permanent injunction
against Novak enjoining him from selling his shirts or
using his design.
4. Case: Anheuser-Busch v. Balducci
a. Facts: Appellant, producer of Michelob beer, sued appellee
publishers after appellees used appellant's marks in a
parody featuring fictitious product, "Michelob Oily." The
ad stated "One Taste and You'll Drink It Oily" immediately
above "Michelob Oily" The court found the mark not to be
protected speech, and identified six factors pertinent to
finding of likelihood of confusion. The court applied
balancing test, weighing public interest in free expression
against public interest in avoiding consumer confusion, and
decided that the First Amendment placed no bar on
applying Lanham Act, and that the speech diluted
Michelob’s mark.
5. Case: Mattel v. Universal Music
a. Facts: Mattel owned the trademark to and was the maker of
a Barbie, a cultural icon. A Danish rock and roll band had a
song that parodied the doll (Barbie Girl). Mattel sued the
music companies who produced, marketed, and sold the
Barbie Girl, alleging trademark infringementThe court of
appeals held that the music companies use of Barbie was
not an infringement of the toy company's trademark
because the song's title was relevant to the underlying work
and the song did not suggest that it was created by the toy
company (Contrast with Parks v. LaFace, supra). The song
Page 75 of 79
was not purely commercial speech and was fully protected

by the First Amendment.
6. Case: Dr. Seuss Enterprises v. Penguin Books
a. Facts: Plaintiff owned most of the trademarks and
copyrights to a Dr. Seuss's publications. Defendants, a pair
of book publishers, sought to distribute a book about OJ
Simpsion’s double murder trial called The Cat NOT in the
Hat! A Parody by Dr. Juice. Plaintiffs contended the book
infringed upon its trademarks and copyrights and thus
violated the Lanham On appeal, the court affirmed, holding
plaintiff demonstrated a strong likelihood of success on the
trademark infringement claims and that the district court's
ruling was not clearly erroneous nor overbroad as the
balance of Sleekcraft favored Seuss on the trademark
violations.
ii. NOMINATIVE OR REFERENTIAL FAIR USE
1. Nominative or Referential Fair Use: defense by which a person
may use the trademark of another as a reference to describe the
other product, or to compare it to their own. Elements include:
a. The Product or Service in Question must be one that is not
readily identifiable without the use of the mark
b. The defendant must use no more of the mark than is
reasonably necessary to identify the product or service
c. The user must do nothing that suggests the original owner’s
sponsorship or endorsement.
2. Case: New Kids on the Block v. News America Publishing
a. Facts: New Kids appealed the grant of summary judgment
to defendants on U.S. Const. amend. I grounds. Defendants
were newspapers that had used New Kids name to conduct
polls. After refusing to review the constitutional issue, the
appellate court stated that under trademark law, defendants
were entitled to the fair use defense to trademark
infringement because they had used the name to identify
the group and not to imply the group's endorsement. The
court noted that a competitor could even use a rival's
trademark in advertising for profit if the use was not false
or misleading and did not implicate the source-
identification function of the trademark.
3. Case: Playboy v. Welles
a. Facts: Playboy claimed that Welles' use of its marks
constituted trademark infringement, dilution, false
designation of origin, and unfair competition. The court
concluded that Welles's uses of Playboy's trademarks were
Page 76 of 79
permissible, nominative uses. The use of the phrase

"Playmate of the Year 1981" implied no current
sponsorship or endorsement by Playboy. Instead, the
appellate court agreed that the marks served to identify
Welles as a past "Playmate of the Year." The court
reasoned that Welles's use of the marks did not suggest
sponsorship or endorsement by Playboy and that Welles
affirmatively disavowed any sponsorship or endorsement
on her website. Specifically, Welles was merely identifying
herself as a one-time recipient of the title "Playmate of the
Year." Such nominal identification did not serve to
diminish or dilute the title. However, Welles's tiled use of
the abbreviation "PMOY" on the wallpaper of her site was
not nominative because the abbreviation's use was not
necessary to describe Welles.
4. Case: Toyota Motor Sales v. Tabari
a. Facts: Tabari specialized in the make of cars Toyota
carried. They had domain names that contained the name of
the cars (buy-a-lexus.com and buyorleasealexus.com). The
appellate court held that the Sleek-craft analysis did not
apply because Tabari used the mark to refer to the
trademarked good itself --a nominative fair use that was, by
definition, not infringement. Tabari' use of the mark met
the first New Kids factor. As there was no risk of confusion
as to sponsorship or endorsement, use of the mark was fair.
The court remanded for consideration of whether the
distributor could disprove fair use. The laches defense
failed, as it was not unreasonable to spend time trying to
avoid a lawsuit by actively seeking out of court resolution
and the relatively brief delay did not prejudice Tabari.
Because the distributor only sought an injunction, it was
not error to resolve the claims in a bench trial.
5. Case: Mattel v. walking Mountain Products
a. Facts: Mattel asked the court to prohibit defendant, an
artist, from producing and selling photographs containing
plaintiff's product (Barbies in strange kitchen appliances).
The court found that defendant's use of the product
qualified as nominative fair use. All three elements
weighed in favor of defendant, and defendant used only so
much as was necessary to make his parodic use of the
product readily identifiable.
Page 77 of 79
iii. FIRST SALE

1. Case: Au-Tomotive Gold Inc. v. Volkswagen of America
a. Facts: The court was asked to decide whether plaintiff's
sale of marquee license plates VW badges purchased from
a Volkswagen dealer constituted trademark infringement,
or whether the sale of the plates was protected by the "first
sale" doctrine. Plaintiff argued that because it purchased
actual badges from a dealer, the "first sale" doctrine
protected the sale of the plates. The court held that the "first
sale" doctrine did not provide a defense because the plates
created a likelihood of confusion as to their origin. The
court did not base its holding on a likelihood of confusion
among purchasers of the plates. Rather, the court based it
on the likelihood of post-purchase confusion among
observers who saw the plates on purchasers' cars.
2. First sale can actually be a trademark defense, so long as there is
not likelihood of confusion as to source of the goods. Examples
given in the book on p. 614 include:
a. A company using another company’s towels to make
handbags
b. A person using three 2D trademarked baseball cards to
make one 3D baseball card
C. CAUSES OF ACTION (IN GENERAL)
i. §32 Infringement for a registered mark (also trade dress and service
marks)
ii. §43(a) Infringement for an unregistered mark (also trade dress and service
marks)
iii. §43 False designation of origin / unfair competition / False Representation
iv. §43 False Endorsement / Sponsorship
v. §43 False Advertising
vi. §43 Trademark Dilution (blurring or tarnishment)
D. DEFENSE FLOW (IN GENERAL)
i. Attack the Affirmative Case
ii. Seek cancellation of the mark per §14
1. One can seek cancellation of a mark at any time if (see §33(b)
reasons below)
iii. Use the §33(b) statutory defenses, or attacks on presumption
1. Fraud in registration or achievement of incontestable status
2. Abandonment
3. Misuse – to misrepresent
4. Statutory fair use (descriptive fair use)
5. Limited Area Defense
6. Prior Registration
Page 78 of 79
7. Used to violate Antitrust Laws

8. Mark is Functional
9. Equitable principles: laches, estoppel, acquiescence.
iv. Fair use (nominative or Descriptive, including comparative ads & parody,
critique, and commentary) (§43(c)(3)(A))
v. News Reporting and commentary (§43(c)(3)(B)
vi. Non-commercial use (§43(c)(3)(C))
vii. Federal Registration(§43(c)(6)) – only for state dilution
viii. First Amendment?
ix. First sale doctrine
x. Conflicts with copyright and patent law
xi. Equitable Doctrines: laches, estoppel, etc.
xii. Not use as a mark or a trade name?
Page 79 of 79

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Trademark – Fall 2015 –

I. INTRODUCTION TO TRADEMARK AND UNFAIR COMPETITION

3. Foundational Work: the doctrine successfully laid the

D. JUSTIFICATIONS FOR TRADEMARK PROTECTION

iv. Case: Stork Restaurant, Inc. v. Sahati

oriented and protect buyers from deceit. Trademark and

vii. Case: Kellogg Co. v. National Biscuit Co.

solder $50 million of the product, expended $22 million in

origin, material, mode of manufacture, quality, accuracy, or other

III. ACQUISITION OF TRADEMARK RIGHTS

lawsuit against Jacobson in the United States District Court

vi. (6) length and exclusivity of the mark’s use.

c. Abercrombie Factors: descriptive words can get

eligible for registration. Salty would be an arbitrary

Charles Gentile sold “a poster featuring a photograph of the

was only a geographical location, had acquired secondary

a. Commerce: all commerce which may be lawfully

a. Facts: P&G made a “minor brands” program to attempt to

registration should be denied because operation of a single

2. Case: Buti v. Perosa, S.R.L.

Monaco, but not in the United States. SBM learned that

meaning (does it trigger in the consumer’s minds a link

August, and presented in September 4-6. The new garments were

3. Modern applicability of Tea Rose – Rectanus: The remote,

defendant’s trading area, the bakers had not employed the

b. The applicants’ bona fide intention to use the mark in

2. Holding: Essentially, if B&H uses the marks as just model

2. Joint Endeavors Test (also applied in Bell v. Streetwise): The

been cancelled or have expired, for identical or similar marks

Proof of distinctiveness cannot avail an applicant who is

c. Or anyone who has a reasonable belief that they will be

Applicant copied the form, style and structure of plaintiff’s

including Muslims. Additionally, it actually means “Altar”

USPTO denied registration of the mark under §2(a) as

Proof of distinctiveness cannot avail an applicant who is

ii. If so, are prospective purchasers likely to believe

Proof of distinctiveness cannot avail an applicant who is

iv. 2(B) & (C) INSIGNIAS, IDENTITIES, ETC

(b) Consists of or comprises the flag or coat of arms or other

(c) Consists of or comprises a name, portrait, or signature

2. 2(b) refusal: refusing to register a mark because it “consists of or

name Obama as used in the applicant’s marks with the

marketplace for particular goods/services and in specific trade

that sold bakery products and candy. The first restaurant

vii. 2(E)(2)-(4) GEOGRAPHIC TERMS, SURNAMES, AND OTHER BARS

(2) when used on or in connection with the goods of the applicant

(3) when used… is primarily geographically deceptively

kitchen ware, and silverware in the U.S. and globally under

Paris. Note: interesting comparison to fashion that people

b. Note: 2(e)’s name provision applies only to surnames, not

cannot be given trade dress protection

and a clear plastic reservoir with an aluminum base and a

ii. Section 14 Cancellation of Generic Marks: If the registered mark

2. Thermos Survey: one of two survey types; the question asked is

ii. Ways to abandon a mark

iii. NON USE

promotional video for a time after changing to AAJ with

in "naked licensing," by failing to insure that