0 TRADEMARKS

1. FOUNDATIONS & PURPOSES OF TRADEMARK & UNFAIR COMPETITION LAW

1. All segments of the economy deal w/ trademarks (as opposed to other IP fields)
a. Ex: media = copyright & trademark (but not patent)
2. Differences from other IP fields:
a. Copyright is to originality as trademark is to distinctiveness
b. Copyrights & Patents both have finite time periods assigned to them, but trademark protection can exist
perpetually (as long it is used & continues to be distinctive)
c. Copyright requires exact copying, patent is monopolistic, Trademark requires copying that gives way to
confusion
d. State by state protection exists for Trademark (really: unfair competition laws that are “relatively worthless”)
3. Justification for Trademark Protections (policy):
a. Protects consumer & assures they get what they want
b. Prevents hurting a business’s reputation & goodwill
c. Encourage producer quality to remain high

A. Cases:

i. “The Trade-Mark Cases” - 100 US 82 (1879)

1. 3 cases consolidated into 1 appeal b/f SC
a. 2 involving counterfeit marks on Champagne, one involving a counterfeit mark on Whiskey
i. Criminal cases – probably only Crim cases we’ll look at in Trademark
2. Copyright Clause of Constitution gave Congress no power to protect or regulate Trademarks
a. Lead to Congress passing Trade Mark Act of 1881 (based on Commerce Clause – i.e. Constitutional)
i. Original trademark law only offered protection in international commerce, US marks
didn’t get protection until 1905
b. Copyright & Patent clause didn’t apply b/c Trademarks don’t have to be inventive or original
ii. Hanover Star Milling Co. v. Metcalf – 240 US 403 (1916)
1. Flour selling case out of Alabama
a. Hanover sold flour in AL, company who asserted infringement had not been selling in AL
2. Is a party permitted to use a mark in a specific geographic area even if that mark had been previously
used by another party in a DIFFERENT geographic area?
a. Yes
b. Function of TM = identify the origin of the item on which TM is placed
i. 2 parties are competing in same marking w/ same mark, prior application decides
rightful user
ii. BUT: no overlap in competing markets, prior app does not apply
1. Hanover is not “unfairly benefiting” from the mark, they spent time & effort to build up the mark
in that area themselves
iii. Concurrence: in cases that don’t involve interstate commerce, it is the state rather than
Congress that determines the validity of the mark. State has authority to determine
protection
iii. Mishawaka Rubber & Woolen MFG. Co. v. S. S. Kresge Co. – 316 US 203, 205 (1942)
1. When an owner of a mark is able to convey desirability through the use of their mark, they have attained
something of value & are entitled to protection to prevent others from capitalizing upon their goodwill
iv. Yale Electric Corp. v. Robertson – 26 F.2d 972, 973-74 (2d Cir. 1928)
 1. One merchant should not be able to divert customers from another by representing that what they sell is
coming from the other
a. When someone uses another’s mark, they are attempting to borrow the mark holder’s reputation &
goodwill
b. Unless the borrower’s use is “SO FOREIGN” to owner’s use as to insure against misidentification
between the 2, it is unlawful
v. Prestonettes, Inc. v. COTY – 264 US
1. Trademark does not confer a right to prohibit the use of a word or words, since it is not a Copyright
2. Trademark gives the right to prohibit the use of their mark being used as goodwill to sell an infringer’s
product as if it were the original owner’s
3. When a mark is used in a way that does not deceive the public, it does not infringe
vi. International News Service v. Associated Press – 248 US 215 (1918)
1. AP was taking INN stories & re-publishing them as their own
a. 2 competing parties in the same field = unfair competition by ∆
b. Consideration in quasi- property rights needs to be whether an agency has a property right in new s it
collected versus OTHER COLLECTING AGENCIES (i.e. – competitors) rather than against the public
2. When one party interferes w/ the normal operation of another’s legitimate business precisely at the point
where profit is to be reaped, unfair competition has taken place
a. Material profit cannot be diverted from those who have earned it to those who have not
vii. Dastar Corp. v. Twentieth Century Fox Film Corp. – 539 US 23 (2003)
1. In 1948, Fox was assigned copyright for “Crusade in Europe” TV series based on a book of the same name
a. Did not renew copyright on series b/f 1977 expiration, series therefore entered public domain
b. Copyright for book was renewed
c. 1988: Fox reacquires TV rights to book, which included right to license original TV series
2. 1995: Dastar bought copies of original TV series, repackaged, & sold copies of video to retailers under
new title
3. 1998: Fox sues
a. claims sale of video’s w/o attribution amounts to reverse passing off (violation of § 43(a))
b. District court: granted summary judgment, appeals court affirms, Dastar petitions USC
4. Issue: can a previously copyrighted work that enters the public domain be used freely w/o attribution to
the author or producer of the work?
a. YES. (Scalia opinion).
i. Lanham act exists to prevent trademark & geography-related consumer deception –
never intended to extend or bolster copyright protections
ii. If authors of works unprotected by Copyright could bring a Lanham Act claim for use
w/o attribution, effect would be “lingering” copyright protection (inconsistent w/
Federal policy)
iii. § 43(a) refers to the party that actually manufactured or produced physical goods
ultimately available in commerce
1. Here, Dastar’s copying & repackaging satisfies this requirement. Dastar was the origin of the
series under § 43(a) & therefore owes no obligation of attribution to original creators
a. Lower courts reversed & remanded
viii. Elvis Presley Enterprises, Inc. v. Capece – 950 F. Supp. 783 (S.D. Tex. 1996), rev’d, 141 F.3d 188 (5th Cir. 1998)
1. Π asserts infringement of its right of publicity by the ∆’s use of service mark “Velvet Elvis” to advertise his
bar
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 a. District court determined no infringement
i. Considered the use a parody
b. Appeals court reverses & remands
i. District court misapplied parody doctrine
1. Parody is NOT A DEFENSE to trademark infringement, but is instead a FACTOR to be considered
which weighs against a finding of likelihood of confusion
a. Must take aim at an original work while staying recognizable from the original work to be
considered a parody
ii. District court failed to consider advertisement sin their analysis of infringement
1. Π had a protectable mark used in commerce in accordance w/ 15 USC § 1114
2. A service mark is “used in commerce” when it is used or displayed in the sale OR ADVERTISING
of services
a. Ads used by alleged infringer incorporate allegedly infringing mark & are therefore relevant in
determining infringement
3. Likelihood of confusion factors used by this court:
a. Type of mark
b. Similarity of Marks
c. Similarity of products & services
d. ∆’s intent
e. Actual confusion
f. 2 Other Factors Considered Irrelevant:
i. Identity of retail outlets & purchasers
ii. Identity of advertising media
g. Court rules all 5 factors weigh in favor of Π, therefore infringement exists

2. DISTINCTIVENESS SPECTRUM & SECONDARY MEANING

1. Trademark rights come from § 45 of the Lanham Act
a. Elements of a Trademark claim:
i. Word, name, symbol, etc. must be the subject matter
ii. Distinctiveness
iii. Use
b. Registration is NOT necessary for enforcement
2. Abercrombie Spectrum:
a. Fanciful (inherently distinctive)
i. Made up mark
ii. Gains immediate protection (strongest)
iii. Ex: “Exxon” or “Kodak”
b. Arbitrary (inherently distinctive)
i. Common word marks that do not relate to product or service offered
ii. Second strongest type of mark
iii. Ex: “Apple” for computers (but not “Apple” for fruit sales)
c. Suggestive (inherently distinctive)
i. Marks that require imagination, thought, or perception to reach a conclusion as to the nature of
goods or services
ii. Requires the observer to “make a connection”
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 iii. Ex: “Microsoft” or “Android”
d. Descriptive (NOT inherently distinctive)
i. Marks describe an ingredient, quality, characteristic, function, feature, purpose, or use of a specified
good or service
ii. Weakest form of protectable marks
iii. REQUIRES SECONDARY MEANING
iv. Ex: “Cold Stone” for ice cream made on a cold stone
e. Generic (NOT inherently distinctive)
i. What the public understands as the common name for the goods or service
ii. Marks that become generic lose protection
iii. Ex: “Kleenex”, “Band-Aid”, “Velcro”
3. Types of distinctiveness (from § 45 of Lanham Act)
a. Source distinctiveness: extent that a mark is distinctive of its source
b. Differential distinctiveness: extent that to which a mark is distinctive from other trademarks
4. Registration & Protectability:
a. Registration denial criteria come from § 2 of the Lanham act
i. Unregistered marks are protected under the same standards listed for registration under § 2
b. Registration cancellation criteria come from § 14 of the Lanham act
5. Distinctiveness can be INHERENT or ACQUIRED
a. Acquired marks require secondary meaning
6. A distinctiveness analysis must always take into account the goods/services that the mark represents
a. EX: “Brilliant” for diamonds vs. “Brilliant” for garbage bags, one (diamond) would be descriptive & the other
(garbage bags) would be suggestive or even arbitrary
b. “Company A owns mark B for good/service C (but not good/service D)”
7. In Re Oppedahl & Larson, LLP – 373 F.3d 1171 (Fed. Cir. 2004)
a. “Patents.com” domain name case
i. “patents” merely describes an aspect of the firm’s practice
ii. Argument: Addition of “.com” creates a more unique mark
1. Court Rule: “.com” does not add anything to analysis of distinctiveness
2. Anti-dissection rule: look at mark as a whole in final consideration (Caveat: distinct parts can
be considered individually during analysis, as long as entirety of the mark is what is looked it
during final consideration)
iii. Argument: Amazon
1. Firm argues that “.com” adds to the mark
a. “Amazon” = jungle? River? vs. “Amazon.com” = immediately recognizable as the
online bookstore
2. Court rule: analogy fails to connect name & product
a. “Amazon FOR BOOKS” vs. “amazon.com” FOR BOOKS = same distinctiveness
analysis & answer
8. Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. – 698 F.2d 786 (5th Cir. 1983)
a. “Fish-Fri”/ “Chick-Fri” case
b. Marks were registered by Zatarains
i. “Fish-fri”
1. District court says descriptive mark w/ secondary meaning
2. Π claims suggestive mark in appeal
ii. “Chick-fri”
1. District court holds this registration should be cancelled as it is merely descriptive w/o
secondary meaning
c. Involves a “fair use” defense for descriptive marks
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 i. Different from copyright
ii. TM Fair use = Junior user is not liable of infringement of a senior user’s established trademark
meaning if the mark is being used in its “descriptive” sense. Defense only applies to infringers of
“descriptive” marks.
d. Secondary meaning
i. Descriptiveness tests (used to determine descriptiveness/suggestive line):
1. Dictionary definition
2. Imagination test
3. Usefulness of term to competitors
4. Actual use of the term by other merchants
ii. Proof of secondary meaning only applies to descriptive marks
iii. Burden of proof rests w/ Π to establish secondary meaning
iv. Geographic limitation: Π established secondary meaning in New Orleans area, but has no exclusive
right in original, descriptive sense of the term
v. Ordinary descriptive use by infringer must not confuse consumers as to the source of the goods
(court rules that in this case, it did not)
9. Descriptiveness:
a. Descriptive of what?
i. Marks will be treated as descriptive if they are descriptive of any of the features of a product in
respect of which rights are claimed
ii. Marks will be regarded as descriptive & denied registration if they are descriptive of any services for
which registration is sought
b. Misspellings are not considered when assessing descriptiveness
i. Ex: “Fish fri” was the term at issue but dictionary definition of “fish fry” was used to assess
descriptiveness; similarly the registration of “lite” for low calorie beer was cancelled after assessing
the dictionary definition of “light”
c. 9th Circuit places higher value in the imagination test (“primary criterion” for determining distinctiveness)
i. Test is that a mental leap is REQUIRED to understand the connection between the mark & the
product
d. Proving secondary meaning:
i. Circumstantial
1. Sales
2. Advertising (amount & manner)
3. Length & manner of use
a. Manner important (see RS § 2f)
4. Surveys
10. Generic terms:
a. Generic terms receive no protection as trademarks (§ 14(3))
i. True under CL, PTO practice, & Lanham Act
ii. PTO will deny registration for generic terms, & can cancel registration at any time for a term that
becomes generic
b. Can be Generic in 2 ways:
i. Inherently generic by virtue of their natural relationship to the products w/ which they are used (Ex:
“Beer” for beer.)
1. Never possess any trademark significance
ii. Becoming generic due to public usage (Ex: “Aspirin” was once protected as trademark but is now
generic)
c. Filipino Yellow Pages, Inc. v. Asian Journal Pubs., Inc. - 198 F.3d 1143 (9th Cir. 1999).
i. Is primary significance of the mark to describe the type of product rather than the producer?
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 1. Proving “primary significance” (note: very similar to descriptiveness/suggestiveness test)
a. Survey evidence
b. Dictionary definitions
c. Nature/extent of 3rd party usages
d. Nature/extent of public/media usages
e. Competitor need
d. Seabrook Test (apply to non-word marks):
i. Is a design arbitrary or distinctive? Test to determine if design is:
1. A “common” basic shape or design
2. Unique or unusual in a particular field
3. A mere refinement of a commonly adopted & well-known form of ornamentation for the
goods
4. Capable of creating a commercial impression distinct from the accompanying words
a. Only applicable when attempting to protect a small part of a larger mark
ii. Marks that pass the Seabrook are inherently distinctive, marks that are merely descriptive or generic
are not inherently distinctive
e. 2 Pesos, Inc. v. Taco Cabana – 505 US 1244 (1992)
i. “Trade Dress” = total image of the business
1. EX: includes shape & general appearance of exterior of restaurant, identifying sign, interior
kitchen floor plan, décor, menu, equipment used to serve food, servers’ uniforms & other
features reflecting “total image” of the restaurant
ii. In trade dress cases, secondary meaning is unnecessary if the overall dress is found to be inherently
distinctive
1. Inherently distinctive aspects must be non-functional
2. Secondary meaning is only necessary when the claimed mark (or dress) is not sufficiently
distinctive of itself to identify its producer
f. Qualitex Co. v. Jacobson Products Co., Inc. – 514 US 159 (1995)
i. Colors can be used as marks
1. Colors can be considered a “symbol” for purposes of trademark
2. Colors can be used as a mark
3. Colors help to identify & distinguish a seller’s goods from goods made or sold by others
4. Colors do not typically have a “functional” aspect that would preclude protection
ii. ONLY colors that have acquired secondary meaning over time are protectable as marks (i.e.
establishing secondary meaning is THE only applicable avenue for color as a mark protection)
1. Ex: Qualitex’s “green-gold” color for press-pads; Tiffany blue for jewelry boxes [Not Tiffany
blue for press-pads, h/w.]
iii. How the Court maneuvered around Jacobson’s arguments:
1. Colors cause uncertainty b/c perceptions of color differ & can cause “shade confusion”
a. Court’s answer: This is not a problem unique to color, the Court deals w/ confusion
issues in all Trademark cases
2. There is only a limited supply of colors.
a. Court’s answer: when one color is used as a mark for an industry, alt colors should
be readily available (for that industry). H/w, if there is a “color depletion” problem
that arises w/in a certain industry, the doctrine of “functionality” would be available
to prevent anticompetitive consequences.
3. Older case law (from 1800s) prevents color from being used as a mark
a. Court’s answer: Lanham Act’s adoption in 1946 significantly changed the existing CL
(i.e. pre-1946 cases carry little weight).

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 4. No need to permit color alone to function as a trademark b/c a firm can already use color as
part of its overall trade dress
a. Court’s answer: Trademark law helps the holder of a mark in ways that trade dress
protection does not, so there are reasons why the law should provide trademark
protection in addition to trade dress protection
i. Ability to prevent importation of confusingly similar goods (15 USC § 1124)
ii. Constructive notice of ownership 15 USC § 1072)
iii. Incontestable status (15 USC § 1065)
iv. Prima facie evidence of validity & ownership (15 USC § 1057[b])
g. Wal-Mart Stores, Inc. v. Samara Brothers, Inc. – 529 US 205 (2000)
i. Product DESIGN trade dress CANNOT qualify as inherently distinctive
ii. Product PACKAGING trade dress CAN qualify as inherently distinctive
iii. Did not apply Seabrook test (although subsequently Chippendales (2010) applied the test, & it is still
good law despite not being used in this particular decision).
1. Chippendales: “Trade Dress” b/c the cuffs & colors worn by dancers is part of the “packaging”
of the product: adult entertainment services for women
a. Court applied Seabrook to determine inherent distinctiveness of trade dress
i. If a mark satisfies ANY of the first three tests, it is NOT inherently
distinctive
iv. When the purchase implicates a utilitarian or aesthetic purpose, rather than a source-identifying
function, proof of acquired distinctiveness is required
v. In close cases, courts should err on the side of caution & classify ambiguous trade dress as product
design (which requires secondary meaning)
h. Remedies in genericness cases:
i. Dual usage phenomenon
ii. De facto secondary meaning
1. Secondary meaning that exists but cannot be legally defined (Kellogg’s case)
i. Dastar Corp. v. Twentieth Century Fox Film:
i. Cannot create a mutant copyright (film copied was in public domain)
ii. “Origin” in 43(a) refers to origin of physical good, not intellectual content w/in physical good
iii. Takeaway: you cannot attempt to get mutant copyright (copyright being direct copying) protection
under the Lanham Act

3. FUNCTIONALITY
A. Lanham Act § 2(e)(5): Registration will be refused for a mark that “comprises any matter that, as a whole, is
functional.”

B. Lanham Act § 43(a)(3): In a 43(a) action involving unregistered trade dress, “the person who asserts trade dress
protection has the burden of proving that the matter sought to be protected is not functional.”

C. Inwood Test (AKA “Traditional test”): design essential to the use or purpose of the article or does it affect the cost or
quality of the article?

i. If something fails this test, it is immediately considered functional & not protectable as a trademark
D. In Re Morton-Norwich Products, Inc. – 671 F.2d 1332 (C.C.P.A. 1982).

i. Is the design of the container essential?

1. THIS body, THIS handhold, THIS pump sprayer TAKEN TOGETHER
2. Keyword = essential

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 a. Essential = when using another design would be a competitive harm
b. “Best or one of a few superior designs available”
c. If competitively necessary to copy a design, design becomes “essential”
3. Evidentiary factors:
a. Existence of expired utility patent disclosing utilitarian advantages of design
i. Strong evidence that features claimed are functional
ii. Heavy burden on Π to prove non-functionality
b. Advertising/promotion touting utilitarian advantages of design
c. Existence of alt designs which perform the function equally well
d. Whether or not the design results from a comparatively simple, cheap, or superior method of
manufacturing the article
E. Wallace International Silversmiths, Inc. v. Godinger Silver Art Co., Inc. – 499 U.S. 976 (1991)

i. A design that was “an important ingredient in the commercial success” of a product was de jure functional
ii. Where an ornamental feature is claimed as a trademark & trademark protection would significantly hinder
competition by limiting the range of adequate alt designs, the aesthetic functionality doctrine denies such
protection
F. TrafFix v. Marketing Display (2011)

i. Competition: prevents trademark law from inhibiting legitimate competition by allowing a producer to control a
useful feature
ii. Integrity of patent system: patented products are given a finite time period in their right to exclude, trademarks
shouldn’t offer this same protection in perpetuity
1. Elements found anywhere in patent (i.e. not just claims) = enough to trigger functional argument for
purposes of Trademark law
iii. New test = Inwood + “that is” (aka “competitive necessity” or “non-reputation related disadvantage”) language
from Qualitex
1. If marks fails Inwood  it is functional
2. If it passes Inwood,  can still fail Qualitex & be determined functional
G. Stated Functionality purposes:

i. Competition: prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, fro
instead inhibiting legitimate competition by allowing a producer to control a useful product feature
ii. Integrity of the Patent System: if a product’s functional features could be used as trademarks, a monopoly over
such features could be obtained w/o regard to whether they qualify as patents & could be extended forever
(trademarks may be renewed in perpetuity).
iii. Disadvantage to competitors must be a significant NON REPUTATION related disadvantage
iv. “Ultimate test” = whether the recognition of trademark rights would significantly hinder competition

4. USE
A. What is “use”?

i. Lanham Act § 45: “Trademark” includes any word, name, symbol, or device, or any combination thereof –
(1) USED by a person, or
(2) which a person has a bona fide INTENTION TO USE in commerce & applies to register on the principal
register established by this chapter – to identify & distinguish his or her goods, including a unique product,

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 from those manufactured or sold by others & to indicate the source of the goods, even if that source is
unknown
1. Marks are in use:
a. On goods when:
i. It is placed in any manner on goods or their containers or displays associated therewith
or on tags or labels affixed th ereto, or if nature of the goods makes such placement
impracticable, then on documents associated w/ the goods or their sale
ii. The goods are sold or transported in commerce
b. On services when:
i. It is used or displayed in the sale or advertising of services
ii. The services are rendered in commerce or the services are rendered in more than one
State or in the US & a foreign country & the person rendering the services is engaged in
commerce in connection w/ the services
2. Totality of Circumstances Test:
a. Analysis framed by statutory definition (e.g., Planetary Motion discussion of “sold or transported”)
b. Party may establish “use in commerce” even in the absence of sales
c. Sufficiency of use should be determined according to the customary practices of a particular industry
d. Cumulative weight of uses important
e. Use must be “continuous, not sporadic, casual, or transitory” (Circuit City)
f. Focus is less on technical rules & more on whether use is “sufficiently public to identify or
distinguish” the goods in the mind of the public
g. Courts resistant to bright line rules (e.g. sales, advertising, type of marking); “factors” more
important than “technical trademark” rules
3. Use can be:
a. Actual
i. Pros:
1. Ensures at least a minimal producer investment
2. Puts competitors on notice of a claim of rights
3. Ensures at least a minimal level of public identification
4. Serves as concrete evidence of a priority date
ii. Cons:
1. Imposes costs/uncertainty on applicants
2. Delays acquisition of rights
3. May disadvantage US applicants
b. Constructive
i. Includes intent-to-use (ITU) basis for registration
1. Lanham Act § 1(b)
a. “A person who has a bona fide intention to use a trademark in commerce may apply to register
his or her trademark under this Act on the principal register”
b. § 1(d): confirmation of ACTUAL use (w/in 6 months [extendable] of notice of allowance, ITU
applicant must verify ACTUAL use
2. Priority (§ 7(c)): filing of an application, including an ITU application, constitutes constructive
use for priority purposes
a. Use in PTO:

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 i. If an ITU application is filed, & a competitor uses the mark afterwards, even b/f actual
use, ITU applicant can initiate an opposition proceeding asserting its constructive use
date as the basis of a § 2(d) bar
b. Use in Litigation:
i. If an ITU application is filed, & a competitor uses the mark afterwards, & the applicant’s
application matures into a registration, the applicant can file a trademark
infringement suit in federal district court against the competitor & enjoin competitor
from further use
4. Surrogate Users:
a. In US Trademark law, rights are granted to the mark USER, not necessarily the mark CREATOR
i. Creator can pursue other remedies (copyright, etc.) but none exist in Trademark law
b. Affiliates as surrogates:
i. Since 1930s, Courts have moved away from “source” of us e being location & supplier
identity to “source” of use being much more broad, & location & supplier identity being
merely 2 factors used to determine overall “source”
ii. Lanham Act applies doctrine of “related companies”
1. § 5: first use of a mark by an entity that is “controlled by the registrant or applicant for
registration of the mark” inures to the benefit of the controlling entity
a. Requires showing “substantial relationship” between using entity & controlling entity
b. Where a parent-subsidiary relationship exists, the subsidiary’s use will ordinarily inure to the
benefit of the parent under straightforward application of “related companies” doctrine
i. Party who controls quality is expected to be the registration applicant
c. Licensee’s use will ordinarily inure to the benefit of a licensor, where the license agreement
provides for adequate quality control on the part of the licensor (For example, think of the
Franchisor/franchisee relationship)
2. § 45: Defines “related company” to mean “any person whose use of a mark is controlled by the
owner of the mark w/ respect to the nature & quality of the goods or services or in connection
w/ which the mark is used”
c. Public As A Surrogate User:
i. Coca-Cola case: public’s use of “Coke” as a slang name for “Coca-Cola” granted trademark
protection to the term “Coke” when a competitor tried to use the mark “Koke”
5. Abandonment:
a. Lanham Act § 45:
i. “A mark shall be deemed to be “abandoned” if either of the following occurs:”
1. “Use has been discontinued w/ intent not to resume such use” (abandonment through non-use)
a. Claimant must show intent to RESUME, simply intent “not to abandon” is insufficient (Exxon v.
Humble)
b. Intended resumed usage must be “w/in the reasonably foreseeable future” (Emergency One)
c. Circumstances outside of the trademark owner’s control shall be recognized as valid reasons
for non-use, preventing the mark from being “abandoned” (Ex: Government-mandated import
restrictions)
d. Burden rests on challenger to show abandonment; w/ the standard being some circuits saying
“preponderance of evidence showing abandonment”, & others saying “clear & convincing
evidence of abandonment”

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 2. “When any course of conduct of the owner, including acts of omission as well as commission,
causes the mark to become the generic name for the goods or services on or in connection w/
which it is used or otherwise to lose its significance as a mark”
a. “Naked licensing”: licensing marks w/o any sort of quality control. To rebut a naked licensing
allegation show:
i. Quality control provisions in franchise/license agreement (appearance of premises
[including employee uniforms], sources of supplies, hours of operation, menu choices,
retail prices, procedures for effectuating quality control)
ii. Affirmative steps to maintain actual quality control
iii. Reliance on franchisee/licensee to maintain quality control

5. REGISTRATION
A. Basics - Lanham Act § 10(a)(1)

i. Advantages of registration:
1. Date of filing of registration establishes constructive use priority (§ 7(c))
2. Registration certification is prima facie evidence of validity, ownership, & registrant’s exclusive rights (§
7 (b))
3. Registration starts clock running for purposes of incontestability ( § 15 & § 33) & limits on cancellation
(§ 14)
4. Grants nationwide rights (§ 7(c))
ii. Flow of process:
1. Application
2. Examination
3. Publication
4. Opposition
5. Statement of use (only necessary under § 1(b), not § 1(a))
6. Registration
iii. Maintenance of registration:
1. Various declarations & applications:
a. § 8 Declaration of Continuing Use
b. § 15 Declaration of Incontestability
c. § 9 Renewal Application
2. During 6 th year from date of registration:
a. Registrant must file § 8 Declaration
b. Registrant may also file § 15 declaration
3. During every 10 th year from date of registration:
a. Registrant must file § 8 declaration & § 9 renewal application
B. Exclusion – Lanham Act § 2

i. “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 its nature unless it:
1. (a) consists of or comprises:
a. immoral deceptive, or scandalous matter
i. “Deceptive” marks:
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 1. Mark is misdescriptive of the goods
2. Consumers would likely believe that the misdescription is accurate
3. Misdescription is likely to affect purchase decision
b. matter which may disparage or falsely suggest a connection w/ persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt or disrepute
i. What is the likely meaning of the matter in question?
ii. May that meaning be disparaging?
1. Only the perceptions of those referred to, identified, or implicated in some recognizable manner
by the involved mark are relevant to this determination
2. Would a “substantial composite” of that group find the matter offensive (ex: Redskins)
c. Constitutionality of 2(a):
i. Matal v. Tam (2017)
ii. “Slants” case
iii. L.A. § 2(a) is unconstitutional
1. Trademark registration is government speech
2. Trademark registration is a government subsidy
3. “Government-program” doctrine
4. Trademark registration is commercial speech, triggering relaxed scrutiny
5. Clause is too broad to serve the government’s stated interest of protecting the orderly flow of
commerce
iv. Applicable first amendment tests for content -based burdens:
1. Strict scrutiny: applies whether a government statute bans or merely burdens protected speech
a. If a statute regulates speech based on its content, it must be NARROWLY TAILORED to promote
a compelling government interest
b. Less restrictive alts that serve the government’s purpose must be used if available
2. Intermediate scrutiny: statute directly advances a substantial governmental interest & the
measure is drawn to achieve that interest
a. Central Hudson:
i. Speech concerns lawful activity & is not misleading
ii. Asserted government interest is substantial
iii. Regulation directly advances government interest
iv. Whether the regulation is narrowly tailored to achieve the desired objective (though not
necessarily the LEAST restrictive means)
2. (b) consists or comprises the flag or coat of arms or other insignia of the US, or of any State or
municipality, or any simulation thereof
3. (c) Consists 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 US during the
life of his widow, if any, except by the written consent of his widow
4. (d) consists or comprises a mark which so resembles a mark registered in the PTO, or a mark or trade
name previously used in the US by another & not abandoned, as to be likely, when used on or in
connection w/ the goods of the applicant, to cause confusion, or to cause mistake, or to deceive
5. (e) consists of a mark which:
a. (1) when used on or in connection w/ the goods of the applicant is merely descriptive or deceptively
misdescriptive of them

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 i. “Deceptively Misdescriptive”:
1. Mark is misdescriptive of the goods
2. Consumers would likely believe that the misdescription is accurate
3. Note: affect on purchase decision, unlike 2(a), is not necessary here
ii. “Merely Descriptive”: describes quality or characteristics of the goods or services (Ex:
“Chick-Fri” for chicken fry coating & “Speedy” for courier services)
b. (2) when used on or in connection w/ the goods of the applicant is primarily geographically
descriptive of them
i. “Primarily geographically descriptive”: When a geographic term is used on goods &
consumers would make a goods/place association (Ex:. “Appalachian Log Structures” for
structures made of Appalachian logs)
1. Note the importance of PRIMARILY geographic (Newbridge)
2. If consumers would not make goods/place association b/c goods are unconnected to the term,
then might be arbitrary
c. (3) when used on or in connection w/ the goods of the applicant is primarily geographically
deceptively misdescriptive of them
i. Primarily geographically misdescriptive:
1. Mark is primarily of geographic significance & misdescribes goods
2. Consumers would likely believe that goods in fact originated in that place (Ex: “British” for ties
made in America)
3. Note: PRE-NAFTA
d. (4) is primarily merely a surname
e. (5) comprises any matter that, as a whole, is functional
6. (f) except as expressly excluded by the above, nothing in this § shall prevent registration of a mark used
by the applicant which has become distinctive of the applicant’s goods in com merce
ii. NAFTA Article 1712:
1. “Each party (US/Mexico/Canada) shall provide, in respect of geographical indications, the legal means
for interested persons to prevent the use of any means in the designation or presentation of a good that
indicates or suggests that the good in question originates in a territory, region, or locality other than the
true place of origin, in a manner that misleads the public as to the geographical origin of the good”
2. Impact: Post-NAFTA “geographically deceptively misdescriptive” marks (§ 2(e)(3)) are treated less
favorably than pre-NAFTA
a. Pre NAFTA focus on distinctiveness/Post NAFTA focus on deceptiveness
b. Pre NAFTA these marks could be saved by secondary meaning/ post NAFTA they cannot be saved
i. More severe consequence demands high er standard
C. Incontestability:

i. Lanham Act § 15 & § 33

1. Quiets title by making the registration presumption “conclusive” subject to the preserved defenses ( §
33(b))
2. Only triggered if registrant has complied w/ procedures for attaining incontestability (§ 15)
ii. Procedural requirements for attaining incontestable status under § 15:
1. § 15(1): no final adverse decision on registration
2. § 15(2): no pending proceeding on registration
3. § 15(3): registrant has timely filed affidavit asserting 5 years’ consecutive use

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 iii. Descriptiveness challenge is not allowable for incontestable registrations
1. Descriptiveness not expressly listed as §33(b) preserved defense
2. Expressly listed preserved defenses are the only available options ( Park ‘n fly)

6. GEOGRAPHIC LIMITS ON RIGHTS

A. CL

i. Challenge to the general priority rule (i.e. First to use has rights: Senior user can enforce rights against junior
user)
1. United Drug:
a. Timeline:
i. 1877 Regis (United Drug predecessor) uses REX on medicinal products in MA
ii. 1883: Rectanus uses REX on medicinal products in KY
iii. 1912: Lawsuit – United drug wants to use & enjoin Rectanus from using REX in KY
iv. Imposed Geographic LIMITS: Rectanus was a good faith remote junior user
b. New Rule: Senior user cannot enjoin a good faith junior user who operates in an area that is
geographically remote from the senior user
2. Dawn Donut
a. Timeline:
i. 1922: Dawn donut sells mixes for baked goods under mark DAWN in NY
1. Also sells under DAWN at retail level through licensees but not in D’s area
ii. 1927: Dawn registers mark w/ PTO (really treated as 1947 w/ introduction of Lanham
act)
iii. 1951: Hart adopts DAWN for retail baked goods in Rochester, w/o actual knowledge of
Dawn Donuts
iv. Imposed limits on geographic limits: likelihood of expansion
b. NEW new rule: Senior registrant acquires right to enjoin junior user even where junior user has
adopted in good faith in a geographically remote area BUT ONLY when senior registrant shows a
likelihood of expansion into disputed territory
B. Effect on Registration

i. Healthcom v. Central Arkansas AAA (2001)

1. Timeline:
a. 1991-92: Healthcom uses CARELINK nationally; markets in Arkansas
b. 1992: First sale of services to Arkansas customer by Healthcom
c. January 1995: Central Arkansas AAA starts using CARELINK in 6 -county area
d. March 1995: Central Arkansas registers CARELINK in Arkansas
e. September 1995: Healthcom enters into contract w/ North Arkansas Hospital
f. May 1999: Healthcom applies for federal registration (pending)
2. § 33(b)(5) Defense: the mark whose use by a party is charged as an infringement was adopted w/o
knowledge of the registrant’s prior use & has been continuously used by such party from a date prior to:
(a) the date of constructive use of the mark established pursuant to § 7(c) or (b) the registration of the
mark if the application for registration is filed b/f the effective date of the Trademark Law Revision Act
of 19888 – provided, h/w, that this defense shall apply only for the area in which such continuous prior
use is proved
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 3. Judges rule for CONCURRENT USE: Central Arkansas can use the mark in its 6 -county area & Healthcom
cannot, but Central Arkansas cannot get a statewide injunction to prevent Healthcom from using the
Mark elsewhere in the State
a. Concurrent use registrations: § 2(d)
i. Confusion, mistake, or deception is not likely to result from the continued use by more
than one party
ii. Certain conditions & limitations as to the mode or pace of use of the marks on the goods
iii. Concurrent registrations are granted when parties have become entitled to use such
marks as a result of their concurrent lawful use in commerce prior to the earliest of the
filing dates of the applications pending or of any registration issued
1. Use prior to the filing date of any pending application or a registration is not required when the
owner of such application or registration consents to the grant of a concurrent registration to the
applicant
C. International & Online Issues

i. Grupo Gigante v. Dallo:

1. Timeline:
a. 1962-63: Grupo Gigante uses GIGANTE for store in Mexico
b. 1963: Grupo Gigante registers GIGANTE in Mexico
c. PRE-1991: GIGANTE becomes well-known (“famous”) in San Diego
d. 1991: Dallo opens store under GIGANTE in San Diego
e. 1999: Grupo Gigante opens GIGANTE stores in LA
2. Well-known Standard
a. Intermediate standard
i. Secondary meaning “plus”: secondary meaning plus a showing that a “substantial”
percentage of consumers in American market is familiar w/ the foreign mark
1. Evidence of intentional copying by ∆
2. Do customers of American firm think they are patronizing the foreign firm?
ii. Famous-mark exception exists to prevent customer confusion & fraud above all else
D. Extraterritorial Enforcement

i. Steele v. Bulova Watch:

1. US Π/US ∆; infringement occurred in Mexico
2. Substantial effects on US commerce
3. No conflict w/ foreign trademark rights
4. Outcome: US can enforce Trademark rights
ii. Vanity Fair v. Eaton:
1. US Π/Canadian ∆
2. Substantial effects on US Commerce
3. ∆ owned foreign Trademark rights
4. Outcome: US cannot enforce Trademark rights that conflict w/ foreign rights
iii. Sterling Drug v. Bayer:
1. US Π/German ∆
2. Substantial effects on US commerce
3. ∆ owned foreign trademark rights

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 4. Outcome: Court could grant injunction
a. Why?
i. In Vanity fair, π sought “blanket prohibition” against Canadian retailer’s use of a mark in
connection w/ the sale of ∆’s products in Canada
ii. In Sterling Drug, π attempts to only enjoin those uses of the mark abroad that are likely
to make their way to American consumers
1. Court must still take into account the realities of the marketplace
a. In today’s global economy, it is unrealistic to prohibit EVERY activity of a foreign corporation
w/ any tendency to create some confusion for American consumers
b. Injunction should be “carefully crafted” to prohibit only those foreign uses of the mark that are
likely to have significant trademark-impairing effects on US commerce
iv. McBee v. Delica (1st Cir.)
1. Π (McBee)
a. US citizen
b. Well-known, Grammy winning jazz bass player
c. Toured world (including Japan)
2. ∆ (Delica)
a. Japanese maker of “Cecil McBee” young women’s fashion
b. Sold ONLY in Japan
c. Web site primarily in Japanese
3. Proceedings to cancel ∆’s registration in Japan failed
4. Π seeks in US court:
a. Injunction against sales in Japan
b. Damages for sales in Japan
c. Injunction against web site in US
d. Injunction against sales in US
5. Analysis:
a. ∆ is not US citizen
i. Substantial effects is first test
ii. Comity concern (i.e. international courtesy) regarding conflict w/ foreign rights
b. Enjoin sales in US?
i. No real sales in US, & no real confusion
ii. Summary judgment for D
c. Enjoin US access to website?
i. No “substantial effects” on US commerce
d. Damages for Delica’s actions in Japan?
i. No, since substantial effects test failed
v. Ninth Circuit Test: Trader Joe’s
1. Alleged violations create some effect on American foreign commerce
2. Effect is sufficiently great to present a cognizable injury to the πs under Lanham Act
3. Interest of & links to American Commerce are sufficiently strong in relation to those of other nations
a. Degree of conflict w/ foreign law or policy
b. Nationality or allegiance of the parties & the locations or principal places of business of corporations

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 c. Extent to which enforcement by either state can be expected to achieve compliance
d. Relative significance of the effects on the US as compared w/ those elsewhere
e. The extent to which there is explicit purpose to harm or affect American commerce
f. Foreseeability of such effect
g. Relative importance to the violations charged of conduct w/in the US as compared w/ conduct
abroad

7. CONFUSION-BASED CAUSES OF ACTION

A. Actionable Use

i. § 32: any person who shall, w/o consent of the registrant USE IN COMMERCE any reproduction, counterfeit, copy,
or colorable imitation of a registered mark in connection w/ the sale, offering for sale, distribution, or advertising
of any goods or services on or in connection w/ which such use is likely to cause confusion, or to cause mistake, or
to deceive shall be liable in a civil action by the registrant
ii. § 43: Any person who, or in connections w/ any goods or services, or any container for goods, USES IN
COMMERCE any word or term which is likely to cause confusion/mistake/deception/improper
association/assumption of false origin or approval of his or her goods, services or commercial activities by
another person shall be liable
iii. § 45: “use in commerce” means the bona fide use of a mark in the ordinary course of trade & not made merely to
reserve a right in a mark. For purposes of the act a mark is used in commerce:
1. On goods:
a. When 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 on documents associated w/ the goods or their sale
b. When the goods are sold or transported in commerce
2. On Services:
a. When it is used or displayed in the sale or advertising of services & the services are rendered in
commerce
b. When the services are rendered in more than one State or in the US & a foreign country & the person
rendering the services is engaged in commerce in connection w/ the services
iv. Rescuecom v. Google - 562 F.3d 123 (2d Cir. 2009)
1. Complaint: alleged harm = confusion
2. District court: granted 12(b)(6) to dismiss
a. Need to “use in commerce” to infringe
b. No use in commerce is use is purely internal
c. No action can be taken if not used in commerce, EVEN IF confusion is clear
3. CA2 reverses the 12(b)(6) dismissal
a. Second circuit has opted for analysis of confusion over nature of use as “ove rall barometer” of
liability
i. Product placement analogy
ii. Search engines are potentially liable for confusion
b. Is there still a trademark USE requirement in the Second Circuit?
i. Not sure, case settled b/f issue was resolved
ii. District court DID overlook & omit portions of statutory text which make it clear that §
45 definition was NOT intended to define/confine infringing acts

17
 iii. Congress did not intend to apply definition to infringement context but perhaps failed to
enact its intention
iv. Commerce is there for jurisdictional reasons; use is the infringing act
1. Came together in composite phrase by accident?
2. Composite phrase only applies to registration context
v. Circuit split (applies to keyword cases): CA2 v. the rest
1. On grounds of decision, not necessarily the result
a. Trademark use requirement immunizing search engines
b. Elsewhere, ∆s had still prevailed on confusion
2. Split existed both in regards to cases against advertisers as well as search engines
3. Why does it matter?
a. For search engines:
i. cost of compliance
ii. threshold question unrelated to confusion
b. For trademark owners:
i. No ability to police
ii. Costs of “buying” top billing in paid listings
c. For competitors & 3rd parties:
i. Counteracts over-aggressive enforcement
ii. Promotes socially valuable third party uses
d. For Trademark Law
i. No consideration or analysis of other issues
ii. Potential liability as means for encouraging good practices
B. Likelihood of Confusion Test

i. Polaroid Factors:
1. Strength of the mark
a. 2 forms of strength:
i. Conceptual/inherent strength
ii. Actual/acquired/marketplace strength
b. Abercrombie ranking is not as important as generally thought (Virgin Enterprises Ltd. v. Nawab)
i. “Courts failed to specify whether or not the mark at issue was inherently distinctive in
40% of the 192 preliminary injunction & bench trial opinions sampled & in 50% of the
139 summary judgment opinions sampled, for an overall failure rate of 44% in the 331
opinions examined”
ii. Marketplace strength trumps inherent strength ( Virgin Enterprises Ltd. v. Nawab)
2. Similarity between marks
a. Sound, sight, & meaning
b. No side by side comparison
c. For π, necessary but not sufficient
3. Proximity of products
a. Highly flexible analysis
4. Likelihood that prior owner will “bridge the gap”
a. Highly flexible analysis

18
 b. Relevance of “bridge the gap” to the empirical question of Likelihood of confusion
c. “Bridge the gap” ex: women’s apparel brand moving into perfume
d. If a senior user delays in enforcing its rights, a junior user may acquire a valid trademark in a related
field, enforceable against even the senior user (Patsy’s Brand, Inc. v. I.O.B. Realty, Inc.)
5. Actual confusion
a. Anecdotal evidence
b. Survey evidence
i. Questions:
1. Who do you think puts out D? What makes you think so?
2. Do you think the company that puts out D is connected or affiliated w/ any other company? What
other company?
3. Do you think the company that puts out D has/needs authorization, permission, or approval from
another company to put out D? What company?
6. ∆’s good faith in adopting its own mark
a. For π, sufficient
7. Quality of the ∆’s product
8. Sophistication of buyers
a. Sometimes the low sophistication helps, sometimes high sophistication helps (should I argue that my
consumer are dumb or smart? Depends, the higher the price point most likely the more sophisticated
consumer)
b. Standard – “ordinarily prudent” purchasers
i. “whether there exists a likelihood that an appreciable number of ordinarily prudent
purchasers will be misled, or indeed simply confused, as to the source of the goods in
questions.” (McDonalds v. McDental)
ii. Promotional Goods:
1. Boston Hockey
a. Involves essentially purchasing a trademark itself rather than a specific good or service
b. Value of the mark only comes from goodwill built by what the mark stands for (in this case
NHL/Bruins themselves)
c. 3 rd party benefitting from goodwill is unjust enrichment
d. Potential “claim for endorsement” issue: team should be the entity normally involved w/ selling the
mark
iii. Confusion during Registration:
1. PTO examiners under §2(d) apply “DuPont” likelihood of confusion factors when determining if a
potentially similar mark should get registration
2. Various applications must be considered for all possible iterations & styles of registered marks
3. Getting a registration on words allows for those word marks to be used in any style, so confusion should
be evaluated based upon the words themselves
4. “Rule of Doubt”: Applicant gets benefit of the doubt in close cases regarding §2(a) as the PTO can pass
the application on for publication & potential opposition by parties who believe that the application does
in fact violate 2(a)
5. PTO decisions are now generally preclusive to later confusion actions after B&B Hardware
iv. Post-Sale confusion:
1. Ferrari S.P.A. Eercizio v. Roberts – 505 U.S. 1219 (1992)
a. Customer confusion is not required by Lanham Act to be only at the point of sale
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 i. Can occur anytime in the “stream of commerce”
ii. Protects reputation of genuine goods
b. Goods that have achieved secondary meaning in the marketplace act as a source identifier
c. Allowing for similar trade dress to exist on the market diminishes Ferrari’s “perceived exclusivity”
v. Initial Interest Confusion:
1. Metatags (used to list websites in search results higher than others) can be tricky in Trademark law due
to initial interest confusion
a. Being diverted by a ∆ to their more highly ranked website when searching for a Π’s product is enough
to cause this confusion (Brookfield)
i. Analogy: Sign for McDonald’s at exit 7, but when you get off the exit there’s only a
Burger King. Customer is misled.
2. If a ∆ is able to clearly show they are not the confused product right away then there is no initial interest
confusion (Playboy v. Netscape – Berzon Conccurrence)
3. MTM v. Amazon – 804 F.3d 930 (9th Cir. 2015)
a. “the case will turn on the answers to the following 2 questions: (1) who is the relevant reasonable
consumer? (2) What would he reasonably believe based on what he saw on the screen?”
i. Court also looks at actual confusion, intent of ∆, & strength of marks
ii. Proximity of goods, similarity of marks, marketing channels, & likelihood of expansion
are unimportant factors in cases that involve internet search terms where the
advertisements are clearly labeled & the relevant consumers would exercise a high
degree of care
b. Degree of consumer understanding regarding the internet has changed sign ificantly since Brookfield
i. Dissent: confusion can still exist for non -educated buyers (Ex: sister looking for watch
for her brother & knows little about watches)
c. Court determines that while initial interest confusion is still a valid claim under the Lanham Act, but
relevant reasonable consumer would not reasonably believe that they were buying an MTM based on
Amazon’s “similar to” search results
i. Dissent: Other major online retailers show the message “0 results found”
1. Amazon’s results could be misconstrued as having a relationship to MTM
2. Initial interest confusion is a question of fact for a jury to determine, so summary judgment in
Amazon’s favor is inappropriate
vi. Reverse Confusion
1. Occurs when instead of a junior user freely-riding off of the reputation & good will of the senior user by
adopting a similar or identical mark, the junior user instead saturates the market w/ a similar
trademark & overwhelms the user
a. Public comes to assume the senior user’s products are really the junior users
b. The public assumes the senior user is somehow related to junior user
c. Senior user loses the value of its trademark: its product identity, corporate identity, control over its
goodwill & reputation, & ability to move into new markets
2. A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc. – 237 F.3d 198 (3d Cir. 2000)
a. Factors:
i. Degree of similarity between the owner’s mark & the alleged infringing mark
ii. Strength of the 2 marks, weighing both a commercially strong junior user’s mark & a
conceptually strong senior user’s mark in th e senior user’s favor

20
 iii. The price of the goods & other factors indicative of the care & attention expected of
consumers when making a purchase
iv. Length of time the ∆ has used the mark w/o evidence of actual confusion arising
v. Intent of ∆ in adopting the mark
vi. Evidence of actual confusion
vii. Whether the goods, competing or not competing, are marketed through the same
channels of trade & advertised through the same media
viii. Extent to which the targets of the parties’ sales efforts are the same
ix. Relationship of the goods in the minds of consumers, whether b/c of the near-identity of
the products, the similarity of function, or other factors
x. Other facts suggesting that the consuming public might expect the larger, more powerful
company to manufacture both products, or expe ct the larger company to manufacture a
product in the π’s market, or expect that the larger company is likely to expand into the
π’s market

8. NON-CONFUSION BASED TRADEMARK LIABILITY THEORIES

A. Dilution:

i. Basis:
1. What mark interest is protected: “uniqueness”
2. What marks are protected by dilution? “Coined, Arbitrary, Fanciful” (Schechter Treatise)
3. Harm prevented: whittling away identity by dilution of uniqueness
4. How to prove? Junior use of identical mark on non-competing goods (makes the mark non-unique)
5. State Statutes:
a. Standard: “likelihood of dilution of the distinctive quality of the senior user’s mark”
b. Harm: “loss of selling power”
c. Proven by:
i. Mental association
1. Some non-source confusion
2. Mead Data: contextual factors
3. Presumed from identity of marks
6. Federal Statutes:
a. Lanham Act § 43(c)(1995)
i. Owner of a famous mark shall be entitled to an injunction against another person’s
commercial use in business of a mark or trade name if such use begins AFTER THE MARK
HAS BECOME FAMOUS & CAUSES DILUTION of the distinctive quality of the mark
b. Lanham Act § 45 (1995)
i. Term “dilution” means the lessening of the capacity of a famous mark to identify &
distinguish goods or services, regardless of the presence or absence of (1) competition
between the owner of the famous mark & other parties or (2) likelihood of confusion,
mistake, or deception
c. Pre-2006: Victoria’s Secret
i. “Actual” dilution standard: case hinges on the word “causes”
d. Trademark Dilution Revision Act of 2006

21
 i. Overrules Victoria’s secret: relief does not require actua l harm or a cause of harm
ii. Rejects the notion of “niche fame” (fame in narrow cross -§ of community)
iii. Allows protection of famous marks that acquired distinctiveness through use
iv. Confirms that dilution action covers tarnishment
v. Broadens defenses
vi. “Use as a mark” debate
vii. New § 43(c)(1): Subject to the principles of equity, the owner of a famous mark that is
distinctive, INHERENTLY OR THROUGH ACQUIRED DISTINCTIVENESS, shall be entitled
to an injunction against another person who, at any time after the owner’s mark has
become famous, commences USE OF A MARK or trade name in commerce that is likely to
cause dilution BY BLURRING or dilution BY TARNISHMENT of the famous mark,
regardless of the presence of actual or likely confusion, of competition, or of actual
economic injury
1. Blurring standard: association arising from the similarity between a mark or trade name & a
famous mark that impairs the distinctiveness of the famous mark
2. Tarnishment standard: association arising from the similarity between a mark or trade name & a
famous mark that harms the reputation of the famous mark
ii. “Fame” requirement:
1. Fame Factors (1995):
a. Degree of inherent or acquired distinctiveness of the mark
b. Duration & extent of use of the mark in connection w/ the goods or services w/ which the mark is
used
c. Duration & extent of advertising & publicity of the mark
d. Geographical extent of the trading area in which the mark is used
e. Channels of trade for the goods or services w/ which the mark is used
f. Degree of recognition of the mark in the trading areas & channels of trade used by the mark’s owner
& the person against whom the injunction is sought
g. Nature & extent of use of the same or similar marks by third parties
h. Whether or not the mark was registered
2. Dilution Revision act of 2006 factors:
a. Duration, extent, & geographic reach of advertising & publicity of the mark, whether advertised or
publicized by the owner or third parties
b. The amount, volume, & geographic extent of sales of goods or services offered under the mark
c. Extent of actual recognition of the mark
d. Whether or not the mark was registered
iii. Dilution by Tarnishment:
1. Remedy: injunction against another’s commercial use in commerce of a mark or trade name, if such use
begins after the mark has become famous & causes dilution of the distinctive quality of the mark
2. Toys “R” Us v. Feinberg
a. Associating the mark w/ “a line of sexual products”
i. “inconsistent w/ the image” that mark owner has sought to foster
ii. “inferior or offensive product or service”
1. i.e. drugs, nudity, sex
3. TDRA of 2006 establishes likelihood of dilution standard

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 a. Rebuttable presumption that a new mark used to sell sex related products is likely to tarnish a
famous mark if there is a clear semantic association between the 2 (V Secret Catalogue, Inc. v.
Moseley, 605 F.3d 382 [6th Cir. 2010])
b. CA6’s Disagreement:
i. Need to show association PLUS harm?
ii. Burden?
1. What did Congress mean? Standard of harm or burden?
iii. Evidence of harm?
1. Affidavit?
2. Victoria’s Secret itself?
iv. Tam/Brunetti?
1. What governmental interests are being served?
2. Does that affect how to read the update?
iv. Dilution by Blurring:
1. Mead Data’s “Sweet” Factors:
a. Similarity of the marks
b. Similarity of goods/services
c. Consumer sophistication
d. Predatory intent
e. Renown of senior mark
f. Renown of junior mark
2. 2006 Statute Blurring factors:
a. Similarity of the marks
i. KEY FACTOR
1. Ex: Charbucks/Starbucks case: Starbucks wins on all factors except for similarity of association &
still loses the case
b. Degree of distinctiveness
c. Extent of substantially exclusive use
d. Degree of recognition
e. Intent to create an association
f. Actual association
i. KEY FACTOR
1. Highly relevant, but not necessarily a prerequisite
3. 2006 Defenses:
a. Any fair use including a 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 servies,
including use in connection w/:
i. Advertising or promotion that permits consumers to compare goods or services; or
ii. Identifying & parodying, criticizing, or commenting upon the famous mark owner or the
goods or services of the famous mark owner
b. All forms of news reporting & news commentary
c. Any noncommercial use of a mark
v. Dilution in Registration: §2(f)

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 1. A mark which would be likely to cause dilution by blurring or tarnishment under § 43(c) may be refused
registration only pursuant to a proceeding brought under § 13
2. Registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment
under § 43(c) may be canceled pursuant to a proceeding brought under § 14
B. Cybersquatting

i. Pre Anti-Cybersquatting Protection Act:

1. Weakness of existing actions
a. § 32/§ 43(a)
i. Likely confusion?
ii. Use requirement (as a mark, in connection w/ goods & services)
iii. Jurisdiction & enforcement
b. § 43(c)
i. Use requirement (in commerce)
ii. Commercial use requirement (1995 Act); use as a mark (2006 Act)
iii. Fame requirement
iv. Jurisdiction & enforcement
ii. § 43(d): Anti-Cybersquatting Protection Act (ACPA)
1. A person shall be liable in a civil action by the owner of a mark if, w/o regard to the goods or services of
the parties, that person
a. Has a bad faith intent to profit from that mark
b. Registers, traffics in, OR uses a domain name that:
i. In the case of a mark that is distinctive a t the time of registration of the domain name, is
identical or confusingly similar to that mark
ii. In the case of a famous mark that is famous at the time of registration of the domain
name, is identical or confusingly similar to or dilutive of that mark
2. Bad faith factors include:
a. TM or other IP rights of the ∆, if any, in the domain name
b. Extent to which domain name consists of ∆’s name
c. ∆’s prior use of the domain name in connection w/ a bona fide offering of goods
d. ∆’s bona fide noncommercial use or fair use
e. ∆’s intent to divert consumers
f. ∆’s offer to sell/transfer domain name
g. ∆’s provision of false contact info to domain name registrant
h. ∆’s registration of multiple domain names
i. Extent to which the mark is not distinctive or famous
3. Remedies:
a. Court may order the forfeiture or cancellation of the domain name or the transfer of the domain
name to the owner of the mark
b. Owner of a mark may file an in rem civil action against a domain name
iii. Uniform Domain Name Dispute Resolution Policy (UDRP)
1. Remedy: cancellation or transfer of domain name
2. Applicable disputes:
a. Domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights (need not be a registered mark)
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 b. You have no rights or legitimate interests in respect to the domain name
c. Your domain name has been registered & is being used in bad faith
iv. gTLDs
1. Coach v. Koko Island (“.coach” gTLD)
a. Applicant: no trademark rights; Objector: US trademark rights
b. Arguments:
i. Takes unfair advantage of the distinctive character or the repu tation of the objector’s
registered or unregistered trademark or service mark
ii. Unjustifiably impairs the distinctive character or the reputation of the objector’s mark
iii. Otherwise creates an impermissibly likelihood between the applied -for gTLD & the
objector’s mark
c. Factors:
i. Whether the applied-for gTLD is identical or similar, including appearance, phonetic
sound, or meaning to the objector’s existing mark
ii. Whether the objector’s acquisition & use of rights in the mark has been bona fide
iii. Whether & to what extent there is recognition in the relevant sector of the public of the
sign corresponding to the gTLD, as the mark of the objector, of the applicant, or of a
third party
iv. Applicant’s intent in applying for the gTLD, including whether the applicant, at the time
of application for the gTLD, had knowledge of the objector’s mark, or could not have
reasonably been unaware of that mark, & including whether the applicant has engaged in
a pattern of conduct whereby it applied for or operates TLDs or registrations in TL Ds
which are identical or confusingly similar to the marks of others
v. Whether & to what extent the applicant has used, or has made demonstrable
preparations to use the sign corresponding to the gTLD in connection w/ a bona fide
offering of goods or services or a bona fide provision of information in a way that does
not interfere w/ the legitimate exercise by the objector of its mark rights
vi. Whether the applicant has marks or other intellectual property rights in the sign
corresponding to the gTLD, &, if so, whether any acquisition of such a right in the sign, &
use of the sign, has been bona fide, & whether the purported or likely use of the opposed
string by the respondent is consistent w/ such acquisition or use
vii. Whether & to what extent the applicant has bee n commonly known by the sign
corresponding to the gTLD, & if so, whether any purported or likely use of the gTLD by
the applicant is consistent therewith & bona fide
viii. Whether the applicant’s intended use of the gTLD would create a likelihood of confusion
w/ the objector’s mark as to the source, sponsorship, affiliation, or endorsement of the
gTLD
v. Counterfeits: Enforcement under Lanham Act
1. § 34(d): ex parte seizure orders
2. § 34(b): Mandatory treble damages & attorney’s fees
3. § 34(c): statutory damages

9. PERMISSABLE USES OF ANOTHER’S TRADEMARKS

A. Statutory fair use:

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 i. Lanham Act § 33(b): Preserved defenses against incontestable registrations include:
1. Fair use exists when the use of the name, term, or device charged to be an infringement is a use,
otherwise than as a mark, of::
a. The party’s Individual name in his own business
b. The party’s individual name of anyone in privity w/ such party
c. A term or device which is descriptive of & used fairly & in good faith only to describe the goods or
services of such a party or their geographic origins
ii. Lanham Act § 43(c)(3)
1. 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, inclu ding
use in connection w/:
a. Advertising or promotion that permits consumers to compare goods or services
b. Identifying & parodying, criticizing, or commenting upon the famous mark owner or the goods or
services of the famous mark owner
B. Examples of fair use:

i. “The dentists’ choice for fighting cavities” for toothbrushes is fair use of π’s trademark “Dentist’s choice” for
toothbrushes (Wonder Labs, Inc. v. Proctor & Gamble, Co.)
ii. “Golden” describing the gold color of children’s writing slate not an infringement of π’s mark “Golden” for
children’s books & toys (Western Publishing, Co. v. Rose Art Industries, Inc.)
iii. ∆ Terri Welles identifying herself on her homepage & in advertising as 1981 “Playmate of the year”; public
persona is based on these titles & they accurately describe her. Court cannot say that she took more than was
necessary to merely identify herself or her goods. (Playboy Enterprises, Inc. v. Terri Welles, Inc.)
C. Court test of “Classic” Fair use:

i. § 33(b)(4) – relevant LA §
ii. Fair use defense requires ∆ show that their use of the phrase was:
1. Other than as a mark
2. In a descriptive sense
3. & in good faith
iii. Kelly-Brown v. Winfery
1. Use OF a mark v. Use AS a mark
a. “Designer Joseph Abboud in a 2 Button Super 120 S Charcoal Chalkstripe from His Fall 2008 Jazz
Collection” (ad in small text) = OF
b. “A new composition by JOSEPH ABBOUD (in larger text than the name of the new brand) = AS
iv. KP Permanent Factors for consideration by jury in determining descriptive fair use:
1. Degree of likely confusion
2. Strength of the trademark
3. Descriptive nature of the term for the product or service being offered & the availability of alternate
descriptive terms
4. Extent of the use of the term prior to the registration of the trademark
5. Any differences among the times & contexts in which KP has used the term
v. CL fair use Doctrines:
1. 9 th Circuit:
a. “Classic” fair use: ∆ uses π’s mark in connection w/ a description of ∆’s own product

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 b. “Nominative” fair use: ∆ uses π’s mark in reference to π’s product (sometimes in comparative
advertising)
2. New Kids on the Block (NKOTB)
a. Product or service of π must be on not readily identifiable w/o use of the trademark
b. Only so much of the mark or marks may be used as is reasonably necessary to identify the product or
service
c. User must do nothing that would, in conjunction w/ the mark, suggest sponsorship or endorsement
by the trademark holder
3. Lending Tree
a. Use of π’s mark is necessary to describe both the π’s product or service & the ∆’s product or service
b. ∆ uses only so much of the π’s mark as is necessary to describe π’s product
c. ∆’s conduct or language reflect the accurate & true relationship between π’s & ∆’s products or
services
4. Toyota Motor Sales v. Tabari
a. Applying test:
i. Scope of Nominative fair use test: applies even where the ∆’s ultimate goal is to describe
its own product (informs first NKOTB factor)
ii. Relief in Nominative use cases: If nominative use does not satisfy all the NKOTB factors,
the district court may order ∆s MODIFY their use of the mark so that all three factors are
satisfied; it may NOT enjoin nominative use of the mark altogether
iii. Burden: Π must bear the burden of establishing that ∆’s use of a mark was NOT
nominative fair use. A finding of nominative fair use is a finding that the π has failed to
show a likelihood of confusion as to sponsorship or endorse ment
1. Distinction: This is b/c unlike CLASSIC fair use, NOMINATIVE fair use is not specifically provided
for by statute, court may find classic fair use despite “proof of infringement” b/c Lanham Act
authorizes that result; Nominative fair use, on the other hand, represents a finding of no liability
under that statute’s basic prohibition of infringing use
5. International Information Systems Security Certification Consortium, Inc., v. Securiti es Universal,
LLC
a. Is there a doctrine of Nominative Fair Use in CA2?
b. Is Nominative fair use an affirmative defense?
c. Likelihood of confusion test: When considering a likelihood of confusion in nominative fair use cases,
IN ADDITION TO discussing each of the Polaroid factors, courts are to consider:
i. Whether the use of a π’s mark is necessary to describe both the π’s product or service &
the ∆’s product or service, that is, whether the product or service is not readily
identifiably w/o use of the mark
ii. Whether the ∆ uses only so much of the π’s mark as is necessary to identify the product
or service
iii. Whether the ∆ did anything that would, in conjunction w/ the mark, suggest sponsorship
or endorsement by the π, that is, whether the ∆’s conduct or language reflects the true or
accurate relationship between the π’s & ∆’s products or services
6. Circuit Splits on Nominative Fair use (See Chart on p. 43).
7. Why is Nominative use being treated differently?
a. What is it?
i. What does it identify/refer to?

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 1. Π’s Product
ii. Does it also DESCRIBE?
1. ∆’s product
iii. Policy reasons for a different rule?
1. Truthful speech/first amendment (Tobari)
2. Lack of confusion?
a. Does not implicate source-identification function of Trademarks (Tobari)
b. NKOTB test designed to address the risk that nominative use of the mark will inspire a
mistaken belief on the part of consumers that the speaker is sponsored or endorsed by the
trademark holder – third factor speaks directly to the risk of such confusion, & the others do so
indirectly (Tobari)
3. Why not Likelihood of Confusion test?
a. Nominative use “outside of the structures of Trademark Law” (NKOTB)
b. The standard likelihood of confusion test would be inaccurate (Playboy; see also Lending Tree
regarding modified likelihood of confusion test), or is not easily applied (IISSCC)
b. Routine Applications:
i. Comparative advertising
ii. Compatible goods/services
vi. First Sale Doctrine
1. When marks are used in a way that does not deceive the public, Courts say they see “no such sanct ity in
the word as to prevent its being used to tell the truth.” ( Prestonettes v. Coty)
2. Inferiority is expected in most second-hand articles (Champion Spark Plugs v. Sanders)
3. Full disclosure gives the manufacturer all the protection to which he is entitled (Champion Spark Plugs
v. Sanders)
vii. Parody:
1. Balancing approach: “we believe that in general the Act should be construed to apply to artistic works
ONLY where the public interest in avoiding consumer confusion outweighs the public interest in free
expression.” (Rogers v. Grimaldi)
2. § 43(a) of Lanham Act does not bar a “minimally relevant use” of a celebrity’s name in the title of an
artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the
celebrity or explicitly mislead as to content. (Rogers v. Grimaldi)
3. Three Prong Test (Rogers v. Grimaldi):
a. Is the ∆’s work an artistic work?
b. Is the ∆’s use artistically relevant to the ∆’s work?
c. Does the ∆’s use explicitly mislead consumers?
4. Most Modern Parody defenses come down to the 2006 Dilution Defenses; specifically, is the use a
noncommercial use of a mark
5. Trademarks & Parody/Expressive Uses:
a. Case 1: Typical trademark infringement case
i. Granting injunction does not trouble first amendmen t b/c infringing uses will be
unprotected by first amendment as confusing uses; good reason to prohibit them
b. Case 2: Parodic use of the mark
i. Unlikely to implicate trademark infringement b/c no likely confusion arising from such
uses (“built-in first amendment compass” per Mattel)

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 c. Note: both propositions may play differently in the dilution context (as in Mattel), broader first
amendment problem & weaker justification for ordering injunction

10. REMEDIES
A. Injunctions (§ 34(a))

i. The several courts vested w/ jurisdiction of civil actions arising under this chapter shall have power to grant
injunctions, according to the principles of equity & upon such terms as the court may deem reasonable, to
prevent the violation of any right of the registrant of a mark registered in the PTO or to prevent a violation
under § 43(a), (c), or (d).
1. Preliminary Injunction standard:
a. Π is entitled to a preliminary injunction in a trademark case when it demonstrates either:
i. “probable success on the merits” & “the possibility of irreparable injury” OR
ii. The existence of “serious questions going to the merits” & “the balance of hardships tips
sharply in its favor.”
b. Laches:
i. Was the π’s delay in bringing suit unreasonable?
ii. Was the ∆ prejudiced by the delay?
iii. Note: laches defense may also be defeated by an assertion of “progressive
encroachment”
c. Federal Rules of Civil Procedure, Rule 65(c)
i. Court may issue a preliminary injunction or a temporary restraining order only if the
movant gives security in an amount that the court considers proper t o pay the costs &
damages sustained by any party found to have been wrongfully enjoined or restrained
d. Irreparable Harm Presumption in Trademark Law:
i. Showing likelihood of confusion triggers presumption of irreparable harm ( GoTo.com,
Inc. v. Walt Disney Co.)
ii. Does this presumption still apply after eBay v. MercExchange?
1. Rejected “categorical” Court of Appeals for Federal Circuit approach that “as a general rule that
courts will issue permanent injunctions against patent infringement absent exceptional
circumstances”
2. Stressed that the Patent Act indicates “that injunctive relief ‘may’ issue only ‘in accordance w/
the principles of equity.’”
3. Under eBay, to secure a permanent injunction, a π must demonstrate:
a. That it has suffered an irreparable injury
b. That remedies at law, such as monetary damages, are inadequate to compensate
c. That, considering the balance of hardships between π & ∆, a remedy in equity is warranted
d. That the public interest would not be disserved by a permanent injunction
4. Short answer to “does this presumption apply?”
a. No longer applies in 3rd
b. Questioned in 1st, 2nd, & 11th
c. Still applies in 5th
d. No idea in 6th
B. Monetary Remedies (§ 35(a))

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 i. When a violation of any right of the registrant of a mark registered in the PTO, a violation under §43(a) or 43(d),
or a willful violation under § 43(c), shall have been established in any civil action arising under this chapter, the π
shall be entitled, subject to the provisions of § 1111 & 1114 of this title, & subject to the principles of equity to
recover:
1. ∆’s profits
a. In general, to win profits, a π need no longer show intentional deception, though this is an important
factor in the equitable analysis
i. 1st, 3rd, 5th, & 7th circuits have held that willfulness is not necessary
ii. 2nd circuit MAY require showing of willful intent
iii. Π need only show ∆’s gross profits
b. A showing of actual confusion is generally not necessary
i. Except in 2nd circuit according to Banff, Ltd. v. Colberts, Inc. (“a profits award, premised
on a theory of unjust enrichment, requires a showing of actual consumer confusion, or at
least proof of deceptive intent, so as to raise the rebuttable presumption of consumer
confusion”)
2. Any damages sustained by Π
a. In general, to win damages, π must show actual confusion or willful intent, the latter of which gives
rise to the presumption of actual confusion
i. 3rd/9th do not impose this requirement
3. Costs of Action
a. Only in “exceptional cases”
i. Exceptional = losing party was the π & was guilty of abuse of process in suing, or if
losing process was ∆ & had no defense yet persisted in the trademark infringement or
false advertising for which he was being sued, in order to impose costs on his opponent
C. Enhanced Remedies in Counterfeit Cases (§ 35(c))

i. Instead of actual damages under § 35(a), π can pursue statutory damages of:
1. Not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold,
offered for sale, or distributed, as the court considers just; or
2. If the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per
counterfeit mark per type of goods or services sold, offered for sale, or distributed as the court considers
just
ii. Can they also get attorneys fees under § 35(b)?
1. No statutory basis to award § 35(b) attorney’s fees when elected to proceed under § 35(c) ( K&N
Engineering v. Bulat)
a. Did not address whether π could recover them under a §35(a) general standard
D. Indirect/Secondary Liability

i. Liability for trademark infringement can extend beyond those who actually mislabel goods w/ the mark of
another (Inwood v. Ives)
ii. If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply
its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer
or distributor is contributorily responsible for any harm done as a result of the deceit
iii. For contributory trademark infringement liability to lie, a service provider must have more than a general
knowledge or reason to know that its service is being used to sell counterfeit goods. Such contemporary
knowledge of which particular listings are infringing or will infringe in the future is necessary. (Tiffany v. eBay)

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4. SEE PAGE 38:

5.

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