Theories of Trademark Law

Protect consumers from being confused. Protects original producer’s goodwill (bad quality of
similarly labeled products). Prevent free-riding. Search cost theory: consumers know which
product is of high quality without middlemen. Producer would have incentives to produce high-
quality products. Advertisement has two functions: to inform and to persuade. Information is
valuable to society and persuasion is not.
 Hanover Star Milling Company v. Metcalf, U.S. (1916): One party adopted a mark, then
others are barred from using the same mark. To do so, they would in effect represent their
goods to be of his production and would tend to deprive him of the profit he might make
through sale of goods which purchasers intended to buy. This is a property right grown out of
use, to the continued enjoyment of his trade reputation and goodwill that flows from it.
 Stork Restaurant, Inc. v. Sahati, 9th Cir. (1948): P is a famous restaurant in NY. They spent
huge money on advertising nation-wide. National newspaper and magazine mention it. D
later starts a bar under the name “Stork Club” in San Francisco. Court: There is no direct
competition. People are not diverted from the trademark holder. But the imitator may get
some of the goodwill, advertising and sales stimulation of the trademark. It is often referred
to as “reaping where one has not sown.” People may think that the San Francisco bar is a
branch of the NY restaurant. Mere geographical distance is not enough to preclude
confusion. The law protects not only the prudent but the ignorant and inexperienced. Actual
loss of sale is not necessary.
o Court talks about consumer confusion but their real concern is free-riding.
o In fact, trademark law protects reasonably prudent consumers.
 Champion Spark Plug Co. v. Sanders, U.S. (1947): P produces spark plugs. D collects and
repairs used plugs and resell them, retaining the mark “Champion.” Lower court held that D
must stamp “USED” or “REPAIRED” on the plugs. Court: There is no question as to the
misleading character of D’s behavior. The question is whether to remove “Champion” from
used plugs. The second-hand goods are nevertheless Champion plugs. Trademark protects
one’s goodwill. The repaired one may be of inferior quality. But inferiority is immaterial so
long as the article is clearly and distinctively labeled as repaired. The original manufacturer
is not identified with the inferior quality. Removal of the mark is not required.

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 o The second-hand dealer gets some advantage from the trademark. This is free-riding. But
free-riding is OK because otherwise consumers would have to buy brand new plugs.
 Cheney Bros. v. Doris Silk Corp., 2d Cir. (1929): P wants to protect the pattern on its silk
product for a season. That’s sort of common-law patent or copyright. Only Congress can give
that kind of monopoly.
 Sears, Roebuck & Co. v. Stiffel Co., U.S. (1964): D produces identical lamps as P’s. P sues D
for patent infringement. P also contends that D also confuses consumers as the source of the
patented product, a claim under state unfair competition law. The patent is then determined to
be invalid. Court: Under Supremacy Clause, state cannot encroach on federal patent law. So,
state cannot under state unfair competition law give protection of a kind that clashes with the
objectives of federal patent law. State law may protect consumer confusions. But it may not
prohibit copying an unpatented and uncopyrighted article itself.
 Compco Corp. v. Day-Brite Lighting, Inc., U.S. (1964): Companion case to Sears, Roebuck.
A state of course has power to impose liability on those who deceive public by palming off
copies. Relevant evidence includes: the article in unpatented, the design is nonfunctional and
essential to use, the article acquires a secondary meaning, and there is confusion. But
regardless of the copier’s motives, a state cannot prohibit the actual acts of copying.
 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., U.S. (1989): Unfair competition law has its
root in common law tort of deceit. The protection of a design under unfair competition law is
limited to one context where consumer confusion is likely to result. The state statute at issue
enters the filed of patent law. Congress left no room for states to supplement the carefully
balanced patent statute.
 International News Service v. Associated Press, U.S. (1918): D uses P’s news. There is a
property right against misappropriation of commercial value.
o This case predates Erie. Now INS claim can be brought under state unfair competition
law.
 National Basketball Association v. Motorola, 2d Cir. (1997): INS-like claim is limited to
where: (1) P generates or gathers information at a cost; (2) the information is time-sensitive;
(3) D’s use of the information is free-riding on P’s efforts; (4) D is in direct competition with
P; and (5) free-riding would threaten the existence or quality of P’s product or service.

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 Trade-Mark Cases, U.S. (1879): Congress has no power to regulate trademark under
Copyright Clause. Trademark has no relation to invention or discovery.
o Congress later enacted trademark statute under Commerce Clause, placing a
jurisdictional hook.

Protectable Marks
 Restatement of Unfair Competition § 9: A trademark is a word, name, symbol, device, or
other designation, or a combination of such designation, that is distinctive of a person’s
goods or service and that is used in a manner that identifies those good or services and
distinguishes them from the goods or services of others.
o Comment g: The definition of trademark does not incorporate any technical limitations
on the nature of the subject matter that may qualify for protection.
o Slogans can function as trademarks. Descriptive slogans need to acquire secondary
meanings. Familiar expressions that consumers are accustomed to seeing on items from
different sources cannot be trademarks, like THE BEST BEET IN AMERICA, ONCE A
MARINE ALWAYS A MARINE.
 Collective marks. Used or intended to be used by member of a cooperative, an association, or
other collective group or organization, including marks indicating membership in a union, an
association, or other organization. § 45.
o Used by members to source-identify goods or service, or to indicate membership.
o Unlike certification marks, collective marks can be used discriminately.
 Certification marks. Used or intended to be used by a person other than its owner (the
registrant), to certify regional or other origin, material, mode of manufacture, quality,
accuracy or other characteristics of the goods or services, or that the work or labor on the
goods or services was performed by members of a union or other organization. § 45.
o Owner of a certification mark cannot use it to identify the source of its own goods or
services.
o Cancellation of certification marks. The registrant doesn’t control or is not able to
legitimately exercise control over the use of the mark; engages in the production or
marketing the goods or services to which the certification mark is applied; or permits the

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 use of certification marks for purpose other than to certify; or discriminately refuses to
certify goods or services that meet the standard or conditions of certification. But
registrant can use the mark to advertise or promote recognition of its certification
program or goods or services meeting the certification standards. § 14.
o In determining genericness, if purchasers understand that the designation refers only to
products produced in a particular region, then the designation functions as a regional
certification mark. Purchasers are not required to know the certification function. It
becomes generic if it has lost significance as an indication of regional origin.
 Collective marks and certification marks are not required to be registered.
 Geographic indication. Indicating originality in a particular place. The goods must be
qualitatively different if they were from another place. Geographic term cannot be used to
mislead purchaser as to the geographical origin. Generic term, like Swiss cheese, may not
mislead as to its geographical origin.

Distinctiveness
Two ways to classify a term: 1) How close is the word connected to the goods/service? If lesser
connected, consumers are more likely to understand that the term identifies the source; if very
connected, it is hardly a source identifier. 2) How much the competitor needs to use the term?

Classification
 Abercrombie & Fitch Co. v. Hunting World, Inc., 2d Cir. (1976): Four categories of terms:
(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. A term may be in one
category for one product and another category for another product.
o A generic term refers to the genus of the product. It cannot be a trademark, under
common law or under statute. Secondary meaning does not make a difference.
Competitors must have a right to call their product by its name. Otherwise it is monopoly
on the product.
o A descriptive term can be a trademark if it has become distinctive of the goods.
 What if a descriptive term is never distinctive? Consumer can be confused.
 What if a descriptive term is inherently distinctive? Competition is impeded. Words
will be depleted.
o Suggestive, arbitrary or fanciful terms need no secondary meaning to be trademark.

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  What if these terms need secondary meaning? Competitors may steal it before it
acquires secondary meaning.
o The categories apply to all types of marks, not only words.
 Quik-Print Copy shops, C.C.P.A. (1980): Register QUIK PRINT for printing service. A mark
is merely descriptive if it conveys only knowledge of the ingredients, qualities, or
characteristics of the goods or services. A mark is suggestive is imagination, thought, or
perception is required to reach a conclusion on the nature of the goods or services. Merely
descriptive marks cannot be registered. Here, QUIK describes a quality: the speed with
which it is done. This quality comes immediately to mind, so it is merely descriptive.
o Any reasonable person would understand that this is only misspelling.
o Also, competitors need to describe their services as quick.
 Zobmondo v. Falls Media, 9th Cir. (2010): “WOULD YOU RATHER ...?” for games.
Court: A suggestive mark is one for which a consumer must use imagination or any type of
multistage reasoning to understand the mark’s significance; the mark doesn’t describe the
product’s features but suggests them. Two tests for differentiating suggestive mark and
merely descriptive mark but the tests are only guidance:
o Imagination test: Whether imagination or a mental leap is required to reach a conclusion
as the nature of the product. It doesn’t ask what information could be derived from the
term, but whether a mental leap is required. Merely descriptive mark need not to describe
the essential nature; it needs only to describe some aspects of the product. “Would you
rather ...” is a phrase used in the game. The mark is descriptive to those who know the
game, but it can be suggestive to others.
o Competitor’s needs test. Focus on the extent to which a mark is actually needed by
competitors to identify their goods or services. If suggestion made by the mark is remote
and subtle, it’s unlikely that competitors need it. The more imagination required to
associate the mark with the product, the less likely the term will be needed by
competitors. Here, others have used other terms like “would you prefer?” Defendant’s
product was marketed without using “would you rather?” Whether other terms like
“would you prefer” are inherently inferior in consumers’ mind needs factual
determination.

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Secondary Meaning
 Rest. § 13. A word, name, symbol, device, or other designation is distinctive if:
o (a) it is inherently distinctive because of the nature of the designation and the context in
which it is used, so that purchasers are likely to perceive it as a designation that identifies
goods or services; or
o (b) the designation has become distinctive as a result of its use, so that purchasers are
likely to perceive it as a designation that identifies goods or services. Such acquired
distinctiveness is referred to as secondary meaning.
 Comment e: Secondary meaning exists only if a significant number of prospective
purchasers understand the term, when used in connection with a particular kind of
good or service, as an indication of association with a particular, even if anonymous,
entity. Secondary meaning is applicable to graphic design, symbols, packaging
feature, and product design. Protection extends only to the secondary meaning, not
the original, lexicographic sense.
 American Waltham Watch Co. v. United States Watch Co., Mass (1899): Waltham initially is
only a name of a place. But “Waltham Watch” then has acquired a secondary meaning. D
makes watch at the same place. The term is protectable as a trademark.
 Chrysler Group v. Moda Group, Mich (2011): P’s advertisement shows IMPORTED FROM
DETROIT. P starts selling t-shirts with IFD logo. D also starts selling t-shirts with IFD.
Court: The mark is geographically descriptive because it simply describes that the product is
from Detroit. Therefore, P needs to show secondary meaning. To determine secondary
meaning, court looks at seven factors: 1) direct consumer testimony; 2) consumer survey; 3)
exclusivity, length, and manner of use; 4) amount and manner of advertising; 5) amount of
sales and number of consumers; 6) established place in market; 7) proof of intentional
copying. More than a short time is required to establish secondary meaning. P fails to show
IFD phrase was established before D’s use of the phrase. D began making t-shirts the day
after the ad aired and before P’s making. Secondary meaning is not established overnight. P
spent a lot of money on ad, but that might be just required to survive in the market. D might
intentionally copy the phrase, but D might want to promote a social movement, not to derive
a benefit of P’s reputation.

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 In re Vertex Group, T.T.A.B. (2009): Applicant seeks to register the sound of a personal
security alarm. Court: The sound mark must be distinctive, unique, different from
commonplace sounds. The sound here is commonplace that consumers are exposed to in
various circumstances. Many alarm sounds are similar to the one at issue. Consumers do not
associate sound with the source of alarm products.
o The sound can also be functional.
o Sound can be arbitrary or unique.

Genericness
A term can be inherently generic or become generic through time.
 Kellogg Co. v. National Biscuit Co., U.S. (1938): D produces shredded wheat, the name that
P uses, and the shredded wheat is in the same pillow-shaped form as P’s. P contends that
consumers are confused by the name and the shape. Court:
o As to name. Shredded wheat is a generic term, by which the biscuit in pillow-shaped
form is known by public. There is no basis for applying secondary meaning. P, as the
original maker, has no exclusive right to it. The expired or expiring patents on the process
of making it repeatedly uses “shredded.” So, the term as the generic designation of the
patented product is dedicated to the public along with the process. During the monopoly
granted by the patent, many people have associated the term with the product of P. But P
must show that the primary significance of the term in the minds of the consuming public
is not the product but the producer. P doesn’t show this.
o As to form. The form is the result of the patented process. The form has also a design
patent. Therefore, the form is also dedicated to the public. Like the name, the form may
be primarily associated with the article rather than a producer. The form is functional
because other forms will increase cost and lower quality.
o Fairness. D’s carton is distinctive. D’s name is prominent on the carton. D’s biscuit is
much larger than P’s (this is relevant only when biscuit is sold in hotels where no carton
is used). D uses reasonable means to prevent confusion. D is surely sharing the goodwill
of shredded wheat: sharing a market created by P. But this is not unfair but to the
interests of consumers.

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 Bayer Co. v. United Drug Co., S.D.N.Y. (1921): Bayer is the holder of “Aspirin.” Court:
The question is whether consumer understand aspirin as a kind of drug or identification of
coming from a single source. To physicians, aspirin has always signified P. The drug has a
chemical n name among physicians. But general public attribute aspirin as an ingredient in a
general compound. P itself used the term in generic way: “Bayer - Tablets of Aspirin.” This
is understood as Bayer’s make of the drug aspirin. D is enjoined from using Aspirin to sell to
physicians but is permitted to sell public.
 Elliot v. Google, Ariz. (2014): “Google” is widely used as a verb. Trademark can be used as
a verb in a discriminate sense. “I PHOTOSHOP the image” could mean that I edit the image
with trademarked Photoshop software. Trademark can also be used as a verb in an
indiscriminate sense. The sentence could also mean that I edit the image with other software
than Photoshop. Even with the second understanding, a mark is not generic merely because it
has some significance to the public as an indication of the nature or class of an article. To
become generic, the principal significance of the mark must be its indication of the nature or
class of an article, not an indication of its origin. Primary significance is determined in the
context of purchasing decisions, so casual, non-purchasing uses are not evidence of generic
usage.
 Licensee’s use of mark may make it generic.
 King-Seeley Thermos Co. v. Aladdin Industries, 2d Cir. (1963): Survey: 75% of people who
are familiar with liquid containers call such a container a “thermos”; 12% know that thermos
has a trademark significance; 11% use the term “vacuum bottle”. Court: The primary
significance is the indication of the nature and class of the article. P already enjoyed
monopoly of the term for 15 years, during which public has expropriated the term as its own.
But because some people still see it as a trademark, D must use “Aladdin” before “thermos”,
must use “thermos” with lower-case t, and must not use “original” or “genuine” before
“thermos”.
o This is Thermos survey. Critique: When people respond “thermos”, they may think of the
products they actually use which happen to be labeled as thermos, and P has monopoly in
the market. So, it doesn’t mean that people use it as the name of the product itself.
 E.I. DuPont de Nemours & Co. v. Yoshida, E.D.N.Y. (1975): TEFLON for non-stick
cookware. Survey I: 86% of who are aware of kitchen pots use TEFLON as name of these

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 pots; 79% give only TEFLON; only 7% know that DuPont is the manufacturer. Survey II:
81% of who are aware of non-stick substances call it TEFLON; 60% would only use
TEFLON to describe pots and pans; 9% identifies DuPont. Survey A: 80% of who know the
brand name of non-stick coating say that the brand name is TEFLON; among them, 32% use
non-stick to describe the coating. Survey B: explain first the difference between a brand
name and a common name by example “Chevrolet-automobile”; 68% answer that TEFLON
is a brand name. Court: Surveys I, II, A focus on suppling a name, without regard to whether
the principal significance of the name is an indication of the nature or class of the article.
Only Survey B is valid.
o Survey B is the TEFLON survey.
o Must explain first the difference between brand name and common name.
o Generally, to prove not generic, it needs at least 25% of potential purchaser to believe it
is a brand name. A bare majority thinking it is common name is not enough.
 Princeton Vanguard v. Frito-Lay, Fed. Cir. (2015): P’s Teflon survey: who said understood
the difference between a category name and a brand name proceed, three options: brand,
category, don’t know. D’s survey: only those who pass the screening Teflon type test proceed
(so that they understand the difference between a common name and a brand name), three
options: brand, common, don’t know. Court: The Board must consider surveys in deciding
genericness.
o On remand, the Board disregarded both surveys because it concluded that the Teflon
format
survey is only appropriate when testing whether a term that was initially a mark had
become generic. Where one party claims to have exclusive rights in a term that was not
previously controlled by that party as a coined term, courts have found that Teflon
surveys are ineffective at determining the true weight of public perception.
 Tiffany and Co. v. Costco Wholesale Corp., S.D.N.Y. (2015): Primary significance is the key
to a determination of genericism. A lexicographical study is not enough to contravene a
Teflon survey.
 Unique product. People use a mark to describe a unique product. This doesn’t make the mark
generic as long as they know that it denotes a source, even if they don’t know the source. §

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 14: A registered mark is not to be a common descriptive name solely because the mark is
used as a name to identify a unique product.
 Motivation of purchaser does not determine if a mark is generic. Primary significance is the
key. § 14.
o Previously, test whether purchaser buy the product because they like the producer or they
are interested in the thing itself. Overruled by Congress.
 America Online v. AT&T, 4th Cir. (2001): Generic terms cannot become trademarks by
association. “Buddy List”: District court determined it as generic. But the court must
consider PTO’s registration as prima facie evidence of validity. “You Have Mail”:
Unregistered. This phrase has been used for the common, ordinary purpose of informing
users of the arrival of emails. Its nature is functional. Other companies often use similar
phrases. AOL itself uses “You Have Mail” when user in fact receives a mail. When words
are used in a context that suggests only their common meaning, they are generic and may not
be appropriated as exclusive property. The term falls in the heartland of the common
meaning and usage. Survey suggests that some people associates the phrase with AOL. But
evidence of association may establish only de facto secondary meaning, which doesn’t entitle
AOL to exclude others from a functional use. “IM”: District court concludes that it stands for
“instant message”, the primary significance of which is just an instant message, so it is
generic. AOL argues that people would understand “IM” to denote a source but doesn’t
provide evidence.
o Acronym’s significance depends on how public perceives it.
o Two types of de facto secondary meaning. 1) Producer is the only provider of the goods.
People doesn’t recognize the term as a brand name but know that there’s a single source.
E.g., shredded wheat. 2) Producer selects a common term as brand name and then
establish recognition through advertising. Public understand the term as a brand name.
Generic terms with either type of de facto secondary meaning cannot become trademark,
otherwise monopoly of the goods results.
 Facebook v. Teachbook.com, Ill (2011): D contends that the mark is dissimilar apart from the
suffix “-book” which is a generic term. Court: Different components of a mark may have
different weight. This is a fact specific inquiry. The aggregate effect of the two components

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 of “Facebook” make it distinctive. Even looking at only the suffix, “book” is not generic in
social networking service context.
 Harley Davison v. Grottanelli, 2d Cir. (1999): “Hog” is used by public to refer to large
motorcycles. P registers “H.O.G.” as acronym of Harley Owners’ Group, for motorcycles.
Before the registration, D already uses “hog” in its motorcycle repair shop. Court:
Dictionary definition is significant evidence of genericness because it reflects public’s
perception of the word’s meaning. One dictionary indicates that “hog” refers to motorcycle
long before P’s first use, before public began using “hog” to refer to P. The public has no
more rights than P to withdraw from the language a generic term, as long as the term retains
some generic meaning.
o The next case rules that HOG is descriptive for the group because it describes the
members of the club.
 H-D Michigan v. Top Quality, 7th Cir. (2007): D advertises its event as “Hogs on the high
seas.” Court: “Hog” is generic as applied to motorcycles but not necessarily generic as
applied to motorcyclist club or motorcycle products or services. “Hog” is not commonly used
as a name for motorcyclist club. D doesn’t use the term in its generic way: “Hogs on the high
seas” doesn’t invite motorcycles but motorcyclist to travel on the ocean.
 Welding Services v. Forman, 11th Cir. (2007): Welding services Inc. is generic for welding
services. But the abbreviation “WSI” is a different issue. Abbreviations of generic terms may
become protectable if they have a meaning distinct from the underlying words in the mind of
the public. It may still convey the original generic connotation or may be not recognizable as
the original generic term. P uses “WSI” immediately next to “Welding services Inc.” So, the
abbreviation is used in association with the generic term, rather than used in a way that
would give a distinct meaning. Therefore, “WSI” is not protectable.
o NBC is now more than “national broadcast company” and therefore not generic.
 Whether a term is generic in a foreign language should be considered, because consumers
who know the foreign language may be confused.
 No trademark shall be refused registration on account of its nature. § 2. Sound (which can be
inherently distinctive), scent, and touch can be registered if they identify the source. Taste is
generally not, because consumers have no access to a product’s flavor prior to purchase. A
flavor of food is merely attribution of the food and thus functional.

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Trade Dress
Trade dress is the total image and overall appearance of a product. Trade dress is often
unregistered because the holder doesn’t know what to register.
 Two Pesos, Inc. v. Taco Cabana, Inc., U.S. (1992): The inherently distinctive trade dress of a
restaurant seeks to be protected without proof of secondary meaning. Court: The district
court found the trade dress inherently distinctive and not functional. Just like other types of
marks, a trade dress cam be inherently distinctive, and if so, no showing of secondary
meaning is necessary. There is no statutory basis for requiring secondary meaning for
inherently distinctive marks. Requiring secondary meaning will hinder improving or
maintaining the producer’s competitive position. It will also burden small regional
companies, because competitors can copy trade dress in other markets.
o Restaurant sells service, not food.
 Wal-Mart Stores v. Samara Brothers, U.S. (2000): Unregistered trade tress as clothing
design. Court: Trade dress protected under § 43 may include packaging as well as design of
a product, if the feature is distinctive and not functional. There are two ways to prove
distinctiveness: inherently distinctive if the intrinsic nature serves to identity a particular
source, or secondary meaning where the primary significance of the mark in the minds of
public is to identify the source rather than the product itself. Like color, product design
cannot be inherently distinctive. Consumers predispose work marks as source identifiers. But
they don’t predispose product designs in the same way. They understand that almost all
product designs are to render the product itself more useful or more appealing, rather than to
identify the source. If product design can be inherently distinctive, consumers are deprived of
the benefits of competition with regard to the utilitarian and esthetic purposes that product
design serves, due to lawsuit and threats of lawsuits. Test for inherent distinctiveness of
product design is not easily formulated. The harm to producers is greatly reduced because
they may get the protection by securing a design patent or a copyright.
o A point of the court: Whether consumers normally see it as indication of source.
o Product design is not product packaging. A package is not the product itself. Packaging
can be inherently distinctive.

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 o Seabrook test by PTO for inherent distinctiveness of product packaging (or of trade
dress): whether it is a common basic shape or design, whether it is unique or unusual in
the field, and whether it is a mere refinement of a commonly-adopted and well-known
form of ornamentation for the goods. In addition, whether it can create a commercial
impression distinct from accompanying words.
 It is like competitor need test for suggestive marks.
o Lanham doesn’t differentiate color and it doesn’t differentiate product design neither.
o The court says that we should err on the side of caution and classify ambiguous trade
dress as product design, thereby requiring secondary meaning.
o Why per se rule instead of case-by-case analysis? Qualitex decides whether color can be
distinctive at all; consumer confusion is at stake. Here decides whether secondary
meaning is required; only companies are affected.
o There is no rigid rule to distinguish product package from product design. But see In re
Slokevage, Fed. Cir. (2006): A phrase flanked two holes in the garment is product design.
The holes are not merely a design on the top of the garment but incorporated into the
garment. The design here serves utilitarian and aesthetic functions, so their predominant
function is not source identification. Secondary meaning is required.
 Product design doesn’t have to implicate the entire product.
 Rock and Roll Hall of Fame and Museum v. Gentile, 6th Cir. (1998): The shape of the
museum building was registered as a service mark. Court: The building itself is fanciful. But
being a landmark undermines its fancifulness as a trademark. A picture of the museum on a
product is more readily perceived as ornamentation than as source identifier. An
ornamentation can also be source identifier. Different photographs of the museum are used
on the products, some even not immediately recognizable as the museum. It fails to create a
consistent and distinct commercial impression as an indicator of a single source. The
museum’s building design is not a single entity. It is now shown that public recognizes the
building design in any form, let alone in all forms, as a trademark.
 Jeffrey Milstein v. Greger, Lawlor, Roth, 2d Cir. (1995): Greeting card design trade dress.
Alleging infringement of the general format of the entire line of cards. Court: Although each
element of a trade dress may not be distinctive or just generic, the combination of elements
should be the focus of distinctiveness inquiry. But if a trade tress is composed of exclusively

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 common, functional elements, it might suggest that the dress is unprotectable or generic.
Trade dress cannot protect an idea, a concept, or a generalized type of appearance. Only
concrete expression of an idea can be protected as a trade dress. To draw a line between an
idea and an expression, it should protect the source-identifying function, without excluding
competition from functionally similar products. Here, the alleged trade dress is “straight-on
photographic, glossy images on die cut cards that are cut without bleed.” This is only an idea:
die-cut photo greeting card. It refers only to a genus to which a product is a species. The
dress is generic.

Functionality
 Qualitex Co. v. Jacobson Products Co., Inc., U.S. (1995): Registration of a mark that consists
purely of a color. Green-gold color on press pads. Court: The broad language of Lanham Act
seems to include color. Over time, consumer may come to treat a particular color on a
product or packaging as signifying a brand, identifying the source. The source-identifying
ability, not the ontological status as color, shape, or word, permits a mark to serve its basic
purposes. Color is sometimes functional and sometimes not. Here, the green-gold color acts
as a symbol (with secondary meaning) and serve no other functions, because there is no
competitive need in the press pads industry to use green-gold color (other colors are equally
usable).
o The functionality doctrine prevents trademark law from inhibiting legitimate completion
by allowing a producer to control a useful product feature. A product feature is function if
it is essential to the use or purpose of the article or it affects the cost or quality of the
article, that is, if exclusive use of the feature would put competitors at a significant non-
reputation-related disadvantage. Competitors should be able to reasonably replicate
important non-reputation-related product features. If a design’s aesthetic value lies in its
ability to confer a significant benefit that cannot practically be duplicated by the use of
alternative designs, the design is functional. The ultimate test of aesthetic functionality is
whether a trademark would hinder competition.
o Respondent argues that color mark would produce legal uncertainty because lighting will
affect perceptions of a color and it is difficult to determine if two colors are similar. But
courts always resolve difficult questions about whether two word-marks are similar.

14
 o Respondent argues that colors are limited in supply; colors will soon be depleted. But
colors are not used up easily. If the depletion problem does arise, functionality doctrine
normally would seem available to prevent the anticompetitive consequence.
o Lanham Act permits descriptive marks with secondary meaning. The same logic applies
to colors as well.
o Court rejects a per se rule but adopts a case-by-case approach.
o Color is never inherently distinctive. Wal-Mart Stores v. Samara Brothers.
o In re General Mills IP Holdings II, T.T.A.B. (2017): Applicant seeks to register color
yellow for cereal. Court: No secondary meaning is shown. Competitors often use color
yellow on cereal package. This also suggest that yellow is intrinsically desired by
customers. Color is often ornamentation. Words and images are more important. There is
no single product that uses only color but no words or images as trademark. Consumers
do not need color to know what they are buying. Background color is unlikely to identify
the source.
 Traffix Devices v. Marketing Displays, U.S. (2001): P has a patent on dual-spring design of
road sign which expired. P sues D for infringing trade dress of the dual-spring design. Court:
Unpatented and uncopyrighted things are often allowed to be copied. A utility patent is
strong evidence that the features claimed are functional; it adds great weight to the
presumption of functionality until proved otherwise. The dual-spring is function because it
supports the sign, as disclosed in the patent specification. It affects the cost of the device as
well: three springs will increase the cost. There is no need to speculate other design
possibilities. The dual-spring design assures consumers that the device will work; that in
itself serves an important market need.
o Inwood test, “Essential to the use or purpose of the device or affecting the cost or quality
of the device” is a sufficient test. “Essential” means essential to its work, not to
competition. Qualitex test, “Putting competitors at as significant non-reputation-related
disadvantage” is particularly useful in cases of esthetic functionality. Satisfying either test
proves functionality.
o The party who asserts trade dress protection has the burden of proving that the matter is
not functional, with or without a previous utility patent.
o To obtain a patent, applicant needs to show it is useful. Then it is likely to be functional.

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 In re Becton, Dickinson and Co., Fed. Cir. (2012): Applicant seeks to register as a trademark
a closure for medical tubes. Court: When the design includes both functional and
nonfunctional features, the question is the degree of utility present in the overall design of the
mark, based on the superiority of the design as a whole rather than on whether each feature is
useful. There are two categories: de facto functionality means that a design has a function;
this is irrelevant to trademark functionality inquiry. De jure functionality means that the
product is in its particular shape because it works better in this shape. Dissent: The proper
inquiry is the degree to which the mark as a whole dictated by utilitarian concerns or is
arbitrary. Weighing individual elements is contrary to consideration of the mark as a whole.
Here, the design of the cap is not required to look the way it does, neither is it the best or a
few superior designs. Majority focused on the function of individual features.
o When features are combined, is it something more than just functional?
o PTO’s Morton-Norwich factors for determining functionality: 1) existence of utility
patent disclosing the utilitarian advantage of the design; 2) advertising by applicant that
touts the utilitarian advantages of the design; 3) whether the design results from a
comparatively simple or inexpensive method of manufacture; 4) availability of alternative
designs.
 Here, there is patent indicating functionality. Applicant advertises and highlights
functional aspects of the mark. No alternative design is found.
 1) and 4) are Inwood test; 3) is Qualitex test.
o Coca-Cola bottle example: the lip of the bottle may be functional, but the overall shape of
the bottle is nonfunctional.
 Jay Franco & Sons, Inc. v. Franek, 7th Cir (2010): Round-shaped towel as a mark. Court: A
mark is functional if consumers would pay to have it rather than be indifferent to or pay to
avoid it. But the joy of buying a marked good over an identical generic version because of
the status conferred doesn’t count. A design that produces a benefit other than source
identification is functional. There is a patent on round-shaped towel. Proving patent
infringement is helpful but not necessary. That the patent was filed after the they started
selling the towels doesn’t matter; the patent’s invalidity for reasons other than uselessness
says nothing about functionality. The round shape permits people to rotate without standing
up. Large towels of other shapes can also do that but will waste material. In addition,

16
 roundness is a fashion and fashion is a form of function. A design’s aesthetic appeal can be
functional. But the design needs to be functional enough than merely pleasing. Exclusive use
of a basic element (shape, material, color) would impoverish competitors. However, if the
design is so distinctive that the only reason to copy it is to trade on the goodwill of the
original designer, it is not functional.
o If the feature can serve another function other than what it does in this design, it also
proves functional. Otherwise, consumer of the other market wouldn’t be able to buy it.
 Christian Louboutin v. Yves St. Laurent, 2d Cir. (2012): Red outsole as trademark. Court:
The aesthetic design itself can be a mark and can be functional even if bearing no purpose of
the product or its cost or quality. If a design passes Inwood, it still needs to pass Qualitex.
The ultimate test of aesthetic functionality is whether a trademark would significantly hinder
competition or would put competitors at a significant non-reputation-related disadvantage.
Limiting the range of adequate alternative designs would hinder competition. On the other
hand, distinctive and arbitrary arrangements of aesthetic design do not hinder competition
and are not functional. Courts must weigh the benefit of protecting the source-identifying
aspects and the cost and precluding competitors from using this feature. An aesthetic feature
is not functional merely because it denotes the desirable source. Because aesthetic function
and branding success are difficult to distinguish, per se rule is improper and case-by-case
determination is needed especially in fashion industry, where color can serve as a tool. We
reject the per se rule that color in fashion industry is always functional.
o Being unable to use red color is a non-reputational disadvantage, but might not be a
significant disadvantage.
 Au-Tomotive Gold v. Volkswagen, 9th Cir. (2006): Auto Gold sells keyholders having
trademark of P. They argue that having a Volkswagen logo is an aesthetic function. Court:
People don’t buy the keyholders because of their intrinsic appeal but for the logos. The
alleged aesthetic function is indistinguishable from and tied to the mark’s source-identifying
nature and reputation-enhancing value. It cannot be the case that a trademark becomes
functional because people like it.
o People don’t see the trademark as source identifier here. What they want is brand value.
So, the “non-reputational disadvantage” extends to source-identifying significance and
brand significance.

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Acquisition
Use
 Sec. 45. The term “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 and applies to register on the principal register established by this
chapter, to identify and distinguish his or her goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the goods, even if that source is
unknown.
 Sec. 45. 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. For purposes of this
chapter, a mark shall be deemed to be in use in commerce—
o (1) on goods when—
 (A) 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, then on documents associated with the
goods or their sale, and
 (B) the goods are sold or transported in commerce, and
o (2) 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 the services is
engaged in commerce in connection with the services.
 Factors in finding token use: Maintain too many marks for goods that are not being sold; no
advertisements accompanied; sales are not accounted; sales personnel are unaware of the
mark.
 Couture v. Playdom, Fed. Cir. (2015): A service mark, used in the domain name of a website.
Offered to render service and had not begun to render service. Court: The statute is clear.
Service mark must be used or displayed in the sale or advertising of services and the services
are rendered. Rendering service requires actual provision of services. Not in use here.

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 In re Dell, T.T.A.B. (2004): Trademark used on website. Court: A website which displays a
product and provides a means of ordering the product is a display associated with the goods,
as long as the mark appears in a manner in which the mark is associated with goods.
Consumer can associate the display of the mark with the goods in deciding whether to buy
the product.
 Larry Harmon Pictures v. Williams Restaurant, Fed. Cir. (1991): Restaurant’s mark. Service
is rendered. But restaurant is in a single location. Court: Service is rendered to customers
travelling across state boundaries. It is not required that service is rendered in more than one
state.
 The sale or rendering service doesn’t have to be for money. Selling for free is enough for
sale.
 Analogous use (advertising and promotion) is sufficient to obtain rights in a mark but only if:
(1) they occur within a commercially reasonable time prior to the actual sale or rendition of
service, and (2) the totality of acts creates association of the goods or services and the mark
with the user thereof.
 Aktieselskabet af 21 November 2001 v. Fame Jeans, D.C. Cir. (2008): Registed the same
mark before international company expands to US. Court: Use can be actual or constructive,
analogous use. Analogous use may be regular business contacts, after-sales services,
advertising, and marketing etc. even before the product is ready for sale. However, analogous
use must create public identification of the target term with the products. Here, P conducted
research and marketing for use of the mark in US. It might be enough to create the awareness
of the mark among consumers.
o Special or minimal sale is not enough for use. A single sale may indicate the first use of a
mark, but it must be the beginning of continuous commercial utilization.
 Blue Bell v. Farah Manufacturing, 5th Cir. (1975): Two companies registered the same
mark. Court: Neither conception of the mark nor advertising along gives trademark rights.
Trademark rights accrue when good bearing the mark are placed on the market. Priority gives
to the one who first uses in connection with the specified goods. A single use may sustain
trademark if followed by continuous commercial utilization. Secret undisclosed internal
shipments are generally inadequate to support “use.” The sale was not made to customers,

19
 not made to the public. Who shipped the first order to customers with mark affixed to the
goods has the priority.
o A token use may be sufficient to support an application to register.
o Here, the shipment to local manager is not sale. But sale doesn’t have be sale to end
customers. Sale to retailers is sale as long as the retailers are not part of the company.
o The mark must be affixed to the goods actually intended to bear that mark. Affixing new
mark to old goods doesn’t count use.
 Hana Financial v. Hana Bank, U.S. (2015): Tacking: A new mark can get the priority of an
old mark if the new and old marks are legal equivalents in that they create the same,
continuing commercial impression in ordinary consumers.
 Thoroughbred Legends v. Walt Disney, N.D. (2008): Registered a horse’s name as a mark.
Court: Mark must be used in commerce as a trademark. It must be used to signify origin to
consumers. The other party used the horse’s name in producing a film etc. But he didn’t use
it as a mark to identify the source of any service.
o Use by licensee of a mark may establish use , but the licensee must use the mark. Mere
licensing is more like internal use and doesn’t count as use.
 Am. Express v. Goetz, 2d Cir. (2008): Someone came up a slogan and tried to sell it to a
bank. Bank didn’t buy it but then used the slogan anyway. Court: It might be protected under
copyright law but not as a trademark because it is not used as an identifier of the any goods
or service that he provides.

Geographic Limit
 Thrifty Rent-a-Car System v. Thrift Cars, 1st Cir. (1987): Registration puts all would-be users
of the mark on constructive notice. However, Sec. 33(b) provides a limited area defense for
remote users. A junior user may continue to use an otherwise infringing mark in a remote
area if the use is established prior to the other’s registration [under current statute, here
should be the other’s application date] the junior user has used the mark continuously (from
beginning of the use to now) in that location and initially in good faith without notice of the
other party’s prior use. The pre-existing good faith user’s rights are frozen to the location
where the user has established a market penetration as of the registration date [application
date]. The question here is the extent of D’s presence prior to P’s registration [application].

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 D’s advertising was limited to one area. D’s rental outside that area was only sporadic. D’s
desire to expand doesn’t confer rights. But D continuously advertised in local media in that
location. So, there is a limited concurrent use.
o P is enjoined from doing business or advertising in the place where D established
concurrent use.
o D is enjoined from doing business or advertising outside the place where D established
concurrent use. However, D can continue to advertise in those publications directed
outside there in which D had advertised prior to registration [application]. Consumer
confusion may result, but complete elimination of confusion is not required.
 In determining whether two places are one market: Do consumers treat the places the same?
Do they go from one place to another?
 In addition to limited area defense, a senior user can also oppose if he is the first one to use
or cancel within 5 years of registration.
 Dudley v. HealthSource Chiropractic, W.D.N.Y. (2012): Extent of the use of the mark where
the senior user used it on internet. Court: Internet is not a geographic territory. Senior user
cannot claim exclusive use on the internet, otherwise it would undermine federal
registration’s benefits. Similarly, federal registrant’s exclusive right on internet would
undermine the senior user’s territorial rights. Therefore, neither party will have exclusive
rights to the internet.
 Dawn Donut v. Hart’s Food Stores, 2d Cir. (1959): D is the concurrent user and had
constructive notice of the mark. There is no likelihood of confusion arising from the
concurrent use. Therefore, there is no need to issue an injunction. However, if the federal
registrant later expands to D’s markets, he can enjoin D’s use of the mark.
o But when P later enjoins D, consumers may be confused because they are used to D’s
mark and products. This holding is problematic.
 Guthrie Healthcare sys. v. Context Media, 2d. Cir. (2016): Senior user must prove likelihood
of confusion but doesn’t have to prove it in every location. The scope of injunction is
governed by equitable factors: senor user should have reasonable protection from junior user.
The burden is on the junior user to prove there is no likelihood of confusion in a particular
area.

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 Person’s Co. v. Christman, Fed. Cir. (1990): Foreign use has no effect on US commerce. It
doesn’t establish a priority. Foreign first user is not senior user. The one first to use in US is
the senior user. Senior user’s mere knowledge of the foreign mark is not bad faith.
 First Niagara v. First Niagara Financial, Fed. Cir. (2007): The foreign company’s business
has connections with US. They sell insurance through US-based company to US consumers
who seek insurance for foreign properties. They also have advertisement in US in which they
use their mark. They did not use the mark in US commerce, but they can oppose the mark
being registered.
o Purely intrastate user may oppose a mark registration.
 Grupo Gigante v. Dallo, 9th Cir. (2004): Market in Mexico near US-Mexico border. Court:
Priority in US depends solely on priority use in US. But there is a famous mark exception.
People travel across borders. To qualify the exception, foreign mark owner must show a
substantial percentage of consumers in the relevant American market is familiar with the
foreign mark. The relevant market is the area where D uses the allegedly infringing mark.
 ITC v. Punchgini, 2d Cir. (2008): Famous Indian restaurant in NY was abandoned. D copies
its trade dress. Court: Lanham Act doesn’t recognize famous mark doctrine. NY state law
doesn’t recognize famous mark doctrine as an independent theory of liability. Under state
misappropriation law, P’s foreign famous mark must have goodwill in NY, D intentionally
copies P’s mark, and D’s consumer primarily associate the mark with P. Here P provides
only evidence showing that the mark is famous in other countries.
o Factors considered under state law: evidence of intentional association by D with P;
survey evidence of association; actual overlap between consumers of the NY D and the
foreign P.
 Paleteria v. Productos Lacteos Tocumbo, D.D.C. (2014): Famous foreign mark doctrine has
been adopted only by 9th Cir. 2n Cir. explicitly reject this doctrine. Even with this doctrine,
the mark must be famous in US not merely in a foreign country.

Abandonment
 Sec. 45. When use 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.

22
 Silverman v. CBS, 2d Cir. (1989): CBS made a considered decision to take the TV program
off the air 21 year ago. They have no current plan to use the mark in foreseeable future.
Intent to resume must be within reasonably foreseeable future. Motivation not to resume
doesn’t overcome the fact of non-use and lack of intent to resume. Challenging infringing use
is not use. Sporadic licensing for non-commercial purpose is not enough to forestall
abandonment.
o Interest in avoiding public confusion in artistic expression context is diminished.
Consumer wouldn’t buy tickets just because of the source of a musical. But this point
must not be overstated. It may tip the scale when the trademark is in public domain.
o If there is a residue consumer confusion, court may require a disclaimer or issue
injunction against affirmative confusion.
 ITC v. Punchgini, 2d Cir. (2008): Maintaining the business and using the mark outside US
doesn’t give an intent to resume use in US.
 Specht v. Google, 7th Cir. (2014): To rebut the presumption of nonuse, intent to resume use
must be formulated within the 3 years of nonuse, and the use must pertain to the sale of
goods or services. Here, P discontinued use. Five years later, D began to use the same mark.
D was then the senior user, and P’s mark is was at this time permanently abandoned. P
cannot reclaim it later.
 Clark & Freeman Corp. v. Heartland, S.D.N.Y. (1993): Generally, assignment of a
trademark and its accompanying goodwill will entitle the assignee to step into the shoes of
the assignor, gaining whatever priority the assignor might have. But if a trademark is
assigned in gross (without accompanying goodwill), the assignment is invalid, and the
assignee must rely on its own use to establish priority. If the assigner produces products
substantially similar (in quality and nature) to that of the assignor and if the customers
wouldn’t be deceived or harmed, the assignment is valid. Assignor’s forbearance to produce
its own goods is not a transfer of goodwill in fact. Here is an assignment in gross: men’s
shoes and women’s shoes are distinct markets; assignee stated using the mark before
assignment and obtain the assignment after the assignor threatened to oppose assignee’s own
application for the same mark, which means assignee didn’t really want the goodwill.
o Another way to assign goodwill: sell the entire company.
o Invalid assignment doesn’t mean loss of right automatically.

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 Eva’s Bridal v. Halanick Enterprises, 7th Cir. (2011): Naked licensing is allowing others to
use the mark without excising reasonable control over the nature and quality of the goods or
service. Naked licensing amounts to abandoning the mark. Reasonable control means that the
control should be sufficient to ensure that the licensee’s goods or services would meet the
expectations created by the presence of the mark.
 Freecycle Sunnyvale v. Freecycle Network, 9th Cir. (2010): There is no express contractual
right to control in the license agreement. There is neither actual control of the quality.
Standards are never enforced. In the absence of formal agreement, to establish control,
licensor and licensee must be in close working relationship. Reliance on licensor’s own
quality control is not enough.

Registration
 Five bases for registration: use in commerce, bona fide intent to use in commerce; qualified
foreign registration; qualified foreign application; international registration.
o Filling an application sets a constructive first use date, conferring priority, nationwide in
effect.
o After registration of an intent to use (ITU) application, applicant needs to within 6
months file a statement of use, extendable to a maximum 3 years. If no statement if filed,
applicant is deemed abandoned.
o US application based on foreign application must be filed within 6 months after foreign
application and will get foreign priority date. After registration, applicant must start use
in US within 3 years.
o Federally registered mark gets incontestability after 5 years of continuous use.
o Prior use trumps later registration (in places of prior use).
 M.Z. Berger & Co v. Swatch, Fed. Cir. (2015): Under bona fide intent requirement, the intent
must be demonstratable and more than a mere subjective belief. It should be a fair, objective
determination of applicant’s intent based on all the circumstances at the time of application.
The bona fide intent in prosecuting (creating pictures for prosecution purposes etc.) a
trademark doesn’t count. After application, he never took steps to develop any actual
products. His intent at the time of application was merely to reserve a right.

24
 In re Vertex Group, T.T.A.B. (2009): Register a sound as personal alarm. Court: Using
Morton test, use of sound is essential to the purpose of the product. Applicant argued that it is
not seeking to register sound of any particular loudness. However, its description of the
sound is not limited to any volume or frequency.
 Larami Corp. v. Talk to Me Program, T.T.A.B (1995): In Board proceedings (opposition),
applicant can rely on ITU filing date to establish priority date. In an infringement case, prior
to registration, applicant cannot rely on the ITU filing date to defeat a first actual user who
used the mark after the applicant’s filing date. In addition, secondary meaning is not required
at filling date; the mark may acquire distinctiveness after application and then be registered.
 Sec. 66(b). The proper filing of the request for extension of protection under subsection (a)
shall constitute constructive use of the mark, conferring the same rights as those specified in
section 1057(c) of this title, as of the earliest of the following:
o (1) The international registration date, if the request for extension of protection was filed
in the international application.
o (2) The date of recordal of the request for extension of protection, if the request for
extension of protection was made after the international registration date.
o (3) The date of priority claimed pursuant to section 67.
 Sec. 67. The holder of an international registration with a request for an extension of
protection to the United States shall be entitled to claim a date of priority based on a right of
priority within the meaning of Article 4 of the Paris Convention for the Protection of
Industrial Property if—
o (1) the request for extension of protection contains a claim of priority; and
o (2) the date of international registration or the date of the recordal of the request for
extension of protection to the United States is not later than 6 months after the date of the
first regular national filing (within the meaning of Article 4(A)(3) of the Paris
Convention for the Protection of Industrial Property) or a subsequent application (within
the meaning of Article 4(C)(4) of the Paris Convention for the Protection of Industrial
Property).

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Bars
 Sec. 2. 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—
o (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which
may disparage or falsely suggest a connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical
indication which, when used on or in connection with wines or spirits, identifies a place
other than the origin of the goods and is first used on or in connection with wines or
spirits by the applicant on or after one year after the date on which the WTO Agreement
(as defined in section 3501(9) of title 19) enters into force with respect to the United
States.
o (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.
 Simulation is interpreted to require fairly exact copying.
o (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.
o (d) Consists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States by
another and not abandoned, as to be likely, when used on or in connection with the goods
of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if
the Director determines that confusion, mistake, or deception is not likely to result from
the continued use by more than one person of the same or similar marks under conditions
and limitations as to the mode or place of use of the marks or the goods on or in
connection with which such marks are used, concurrent registrations may be issued to
such persons when they have become entitled to use such marks as a result of their
concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the
applications pending or of any registration issued under this chapter; (2) July 5, 1947, in

26
 the case of registrations previously issued under the Act of March 3, 1881, or February
20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the
case of applications filed under the Act of February 20, 1905, and registered after July 5,
1947. Use prior to the filing date of any pending application or a registration shall not be
required when the owner of such application or registration consents to the grant of a
concurrent registration to the applicant. Concurrent registrations may also be issued by
the Director when a court of competent jurisdiction has finally determined that more than
one person is entitled to use the same or similar marks in commerce. In issuing
concurrent registrations, the Director shall prescribe conditions and limitations as to the
mode or place of use of the mark or the goods on or in connection with which such mark
is registered to the respective persons.
o (e) Consists of a mark which (1) when used on or in connection with the goods of the
applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on
or in connection with the goods of the applicant is primarily geographically descriptive of
them, except as indications of regional origin may be registrable under section 1054 of
this title [collective mark and certification mark], (3) when used on or in connection with
the goods of the applicant is primarily geographically deceptively misdescriptive of them,
(4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is
functional.
o (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this
section, nothing in this chapter shall prevent the registration of a mark used by the
applicant which has become distinctive of the applicant’s goods in commerce. The
Director may accept as prima facie evidence that the mark has become distinctive, as
used on or in connection with the applicant’s goods in commerce, proof of substantially
exclusive and continuous use thereof as a mark by the applicant in commerce for the five
years before the date on which the claim of distinctiveness is made. Nothing in this
section shall prevent the registration of a mark which, when used on or in connection
with the goods of the applicant, is primarily geographically deceptively misdescriptive of
them, and which became distinctive of the applicant’s goods in commerce before
December 8, 1993.

27
 o A mark which would be likely to cause dilution by blurring or dilution by tarnishment
under section 1125(c) of this title, may be refused registration only pursuant to a
proceeding brought under section 1063 of this title [opposition]. A registration for a mark
which would be likely to cause dilution by blurring or dilution by tarnishment under
section 1125(c) of this title, may be canceled pursuant to a proceeding brought under
either section 1064 of this title [cancelation] or section 1092 of this title.
 Immoral/scandalous/disparage bar is held unconstitutional.
 Falsely suggesting a connection bar is still good law.

False conncetion
 Hornby v. TJX Companies, T.T.A.B. (2008): Petition to cancel a mark based on false
suggestion of a connection, between the mark TWIGGY and petitioner. Court: P must
demonstrate that the name claimed to be appropriated is unmistakably associated with a
particular personality and must point uniquely to P. To show that: 1) D’s mark must be the
same or approximation of P’s name or identity; 2) the mark is recognized as such in that it
points to unmistakable to P; 3) P is not connected with D’s activities under the mark; and 4)
P’s name or identity is so famous that D’s mark would suggest a connection with P when
used on its goods.
o As to factor 4), fame or reputation of P must be determined at the time of D’s
registration. Burden of proof is on P. Here, P had enough fame at that time. So, relevant
consumers who were potential buyers at the time of registration, upon seeing the mark on
goods, would presume an association with P.
o As to factor 2), uniquely pointing to P doesn’t require the mark to be a unique term. So,
dictionary meaning of the term is not dispositive. In the context of D’s goods, P’s name
points to P herself. There is an obvious connection between P as a model and D’s goods,
clothing.
 If a mark is very disparaging, consumer may not associate it with P.
 In re City of Houston, Fed. Cir. (2013): Refused to register the city’s insignia. The city has
other means to prevent others from its city seal.
 In re Richard M. Hoefflin, T.T.A.B (2010): Refused to register OBAMA PAJAMA for
pajamas. The mark is applied during the presidency of Obama. Consumer would recognize

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 the mark as referring to the President even if it is not the entire name. In addition, when used
on goods, consumer would associate the mark with the President’ name because he is so well
known. Figures so famous doesn’t have to show that consumers connect the goods with their
names.
o 2(a) false suggestion of connection wouldn’t apply because no one would connect
OBAMA with pajama.

Surname
 In re quadrillion Publishing, T.T.A.B. (2000): ITU application to register BRAMLEY.
Court: The term is a surname but also a name of village in England and has a dictionary
meaning. The test for determining whether a mark is primarily merely a surname is the
primary significance of the mark to the purchasing pubic. There are factors: 1) the degree of
surname rareness; 2) whether the applicant (or anyone connected with applicant) has the
surname; 3) whether the term has other meanings; 4) the look and sound of the surname.
Here, examiner has made a prima facie case.
o As to one, there is no magic number for determining rareness. Even if the name is
uncommon (found 433 times in telephone directories here, or a very small portion of the
population), it can still have a measurable public exposure.
o As to two, applicant doesn’t have a surname of that. If it is the applicant’s surname, it
would indicate that public sees it as a surname. But even if it is not applicant’s surname,
it doesn’t mean that public would perceive it as a non-surname.
o As to three, the obscure or remote meanings do not mean that public would see it as a
non-surname. In particular, a place is often named after someone’s surname.
o As to four, its suffix is common in British surnames.
 In re Joint-Stock Company “Baik”, T.T.A.B. (2007): The purpose behind prohibiting
registration of surname is to keep surnames available for people who wish to use their own
surnames in their business. Therefore, the look and feel of a surname should not be a basis
for refusing registration of rare surname, because it is unlikely that others would use the same
name. PTO should show that the surname is used by a reasonable number of people.
 Common considers not only surname but also first name.

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 Peaceable Planet v. Ty, 7th Cir. (2004): Reluctance to allow personal names to be
trademarks because: reluctance to forbid a person to use his own name in his own business,
names are so common that consumers wouldn’t assume that two products bearing the same
mark have the same source, and consumers would be deprived of useful information if a
person cannot use his surname as a mark. Here the name sought to be registered is Niles. No
one named Niles is doing business. Niles is not common. No danger of depriving others of
information.
 Grade designations generally are not trademarks. But under the circumstances, grade
designation can identify the source. E.g., 747 for airplane.

Misdescription
 Deceptively misdescriptive term barred under Sec. 2(e)(1) can be overcome with secondary
meaning. Merely deceptively misdescriptive term barred under Sec. 2(e)(1) and Sec. 2(a)
cannot be overcome with secondary meaning.
 Bayer v. Stamatios, T.T.A.B. (2010): Seek to register ORNANIC ASPIRIN to dietary
supplements. Court: To decide if a mark is deceptively misdescriptive: 1) Is the term
misdescriptive of the character, quality, function, composition or use of the goods? 2) If so,
are prospective purchasers likely to believe that the description actually describes the goods?
To decides if the mark is merely deceptively misdescriptive, ask the third question: 3) If so,
is the misdescription likely to affect a significant portion of the relevant consumers’ decision
to purchase?
o Under 1), to be misdescriptive, the term must be merely descriptive of a significant aspect
of the goods which the goods could plausibly possess but in fact do not. It is plausible to
believe that a dietary supplement contains aspirin. The term ASPRIN is misdescriptive.
o Under 2), reasonable prudent consumers are likely to believe that it has aspirin. Its
website links its product to aspirin, advertising the supplement is similar to predecessor
of aspirin. Although there is no such a thing as organic aspirin, that is the commercial
impression that applicant created which leads consumers to believe otherwise, and
consumers do not necessarily know that there are no such things. Advertisement is
evidence of what consumers believe in registration context.

30
 o Under 3), the misdescription is likely to affect consumers’ decisions. The advertised
effect of organic aspirin is similar to the known benefits of aspirin, and consumers may
want organic ones to avoid problems of traditional aspirin.
o If found misdescriptive but consumers don’t believe the description, the mark is arbitrary
or suggestive.
o Under 2), initial impression deception is still deception even if consumers are undeceived
later.
 Coca-Cola Co. v. Koke Co. of America, U.S. (1920): Coca-Cola has acquired secondary
meaning. D uses Koke to reap the benefit of that. But the trademark itself is fraudulent in that
it no longer contains cocaine. Court: After the it stopped using cocaine, the trademark
continued to be used. To consumers, the mark means the product rather than a compound in
it. It has acquired secondary meaning. P has advertised that the drink no longer has cocaine.

Geographic term
 Merely geographically misdescriptive has no bar; it is suggestive or arbitrary.
 In re Newbridge Cutlery, Fed. Cir. (2015): In determining primarily geographically
descriptive terms, the work “primarily” should not be overlooked. If there is no connection
with the geographical meaning of the mark with the goods in public mind (mark is arbitrary
when applied to the goods), it is no bar. To reject, it must be shown that 1) the mark is a
name of a place known generally to public, and 2) public is likely to believe that the goods
originate in that place and 3) the goods truly originate in that place. The relevant public is the
purchasing public in US of that goods. As to 1), the number of people living in that location
and/or coming from that location preserving ties to that location is evidence that the location
is generally known; consider if the term has alternative meanings. As to 2), public may be
likely to believe that goods originate in one place even if that place is not famous for that
goods. If the goods do originate from that location, public’s association with that place can
be presumed. Then applicant may rebut by showing that public do not actually believe that
the goods are from there.
 In re Miracle Tuesday, Fed. Cir. (2012): A term is primarily geographically deceptively
misdescriptive, if 1) and 2) from above, 3) the goods do not originate from that place, and 4)
misrepresentation is a material factor in consumer’s decision to buy the goods. As to 2), if the

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 place is known for that goods, it can be presumed that consumers associate the goods with
the place. Here, Paris is famous for fashion, so it can be presumed that consumer associate
the goods with Paris. Goods originate in one place if it is manufactured, designed, developed
there, or if the company is headquartered there. The designer of the goods lived Paris doesn’t
mean that the goods are designed in Paris. The focus is the current connection between the
goods and the place.
o If the mark is a service mark, the presumption of association between the goods and the
place that is known for that goods may no apply. Having chosen to come to a place for
service, consumers know the geographic location of the service. Here, the application
designates goods. Whether consumers would see it as a service of the designer is
irrelevant.
 In re Spirits Int’l, Fed. Cir. (2009): As the factor 4), the question is whether a substantial
portion of relevant consumer is likely to be deceived, not any absolute number or particular
segment (foreign language speakers) is likely to be deceived. The relevant consumer is often
the entire US population interested in that goods. If the mark is in non-English language, it is
evidence that the product is targeted at a community who understands that language. Then,
the relevant public is that community.

Confusion
 Stone Lion Capital v. Lion Capital, Fed. Cir. (2014): ITU application for STONE LINE
CAPTIAL. Prior mark: LION CAPITAL. Court: If the term so resembles a prior used or
registered mark, likely to cause confusion, it is bared. Dominant term is lion. Addition of a
suggestive or descriptive element is generally not enough to avoid confusion. Sight, sound,
meaning and overall impression are similar. The application contains no limitations on the
channels. Therefore, it is presumed that the goods are distributed through all usual channels.
The recited service in the application is the same as the prior mark. So, the channel is the
same. The recited service, investment consultation, is not limited to high end consumers.
Their current use doesn’t determine the scope of post-grant benefits.
o A legally binding agreement limiting benefits of registration might be given weight.
 Coach Service v. Triumph Learning, Fed. Cir. (2012): COACH for handbag. COACH for
software. Court: Fame, standing alone, cannot prove likelihood of confusion. The term

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 “coach” has a common meaning. When applied to education, it creates the impression of
instruction. This commercial impression outweighs similarities in sound and appearance.
And the goods are unrelated. It is unlikely that consumer would associate educational
material with P’s Coach.

Infringement
Three elements of infringement: D’s use of the mark in commerce, in connection with sale,
offering for sale, distribution, or advertising of goods or service, is likely to cause confusion.
 B&B Hardware v. Hargis Industries, U.S. (2015): A court should give issue preclusion effect
to TTAB decisions if the ordinary elements of issue preclusion are met and the usage
adjudicated by TTAB is materially the same as those before the court. Standard of likelihood
of confusion for registration purposes is the same as in infringement.

Use
 Naked Cowboy v. CBS, S.D.N.Y. (2010): D has an episode featuring a naked cowboy. They
use the term “naked cowboy” in video title. Court: Infringement case P must establish: 1) he
has a valid mark; 2) D used the mark; 3) in commerce; 4) in connection with sale or
advertising of goods or service; 5) without P’s consent, and likelihood of confusion. A mark
is used in commerce if 1) it is placed in any manner on goods or displays or on tags affixed
thereto, or on documents; and 2) goods are sold or transported in commerce. The video’s title
is a use in commerce but not use of mark because it is only descriptive of the product and is a
fair use.
o Buying “naked cowboy” as adword is not use in commerce.
 Born to Rock Design v. CafePress.com, S.D.N.Y. (2012): D prints P’s mark on T-shirts and
sell them. This is use in commerce, since mark is displayed on goods and goods are sold.
 1-800 Contacts v. Lens.com, D. Utah (2010): D purchased an adword from Google, the
adword being similar to P’s mark. P’s mark is used to trigger a sponsored link for purposes of
advertising and selling D’s service. This is use in commerce.
 Rescuecom Corp. v. Google, 2d Cir. (2009): Google recommended P’s mark to P’s
competitors to buy as adword. Google is selling P’s mark. This is use in commerce.

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Confusion
 Polaroid factors:
o Strength of P’s mark;
 Including theoretical strength (how distinctive); market strength (how much
secondary meaning); third party’s dilution. Often market strength is more important
than theoretical strength.
o Degree of similarity between the two marks;
 Sight, sound, meaning, context.
o Proximity of products;
 Nature of the goods; channel.
o Likelihood that P will bridge the gap;
 Not if D will bridge the gap.
o Actual confusion;
 Consumer thinking of P when seeing D’s product.
o D’s good faith in adopting his own mark;
o Quality of D’s product;
o Sophistication of the buyers.
 Other factors: area and manner of concurrent use; D’s intent to deceive; Distinctiveness of
D’s mark.
 On the similarity between the two marks: overall impression as used in marketing;
pronunciation; translation of foreign words; verbal translation of pictures; suggestion or
connotation.
 Gallo v. Consorzio, N.D. Cal. (1991): D used mark “Gallo Nero.”
o Strength of P’ mark. P’s registered mark is presumed to be distinctive. Virtually universal
recognition. Many other competitors also use Gallo, but other potential infringing cases
are irrelevant to this case.
o Similarity of marks. Gallo Nero is not just Gallo. But the distinctive term is Gallo. P also
uses Julio Gallo etc. Consumers are used to combined word Gallo with other terms.
Italian-speaking people may notice more on Nero. But English-speaking people see
Gallo. Gallo is the single dominant term.

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 o Similarity of goods. Wine of all types constitute a single class of goods. D’s wine is in
competition with every red wine being sold in US.
o Similarity of marketing channels. Both through wine shops. The statement that they are
in competition with each other means that they are marketed by similar means.
o Degree of care exercised by buyers. Confusion is more likely when goods are relatively
inexpensive, unsophisticated consumer does not devote a great deal of care in purchasing.
Average consumer is unlearned in the selection of wine.
o Actual confusion. Lack of actual confusion is not dispositive. There needs only a
likelihood. The proper test for likelihood of confusion is not side-by-side comparison, but
whether confusion is likely when a consumer, familiar with one’s mark, is presented with
the other’s goods alone. Survey should replicate the market place setting in which
consumers will typically encounter the competing marks.
o D’s intent in adopting its mark. D has knowledge of P’s mark. So, court presumes that D
intents to copy. Gallo Nero is a traditional name. However, the test is not whether D has
admirable motivations when adopting the mark, but whether D had knowledge of the
potentially infringing effects.
o Balancing the factors, confusion is likely.
 Banfi Products v. Kendall-Jackson Winery, E.D.N.Y. (1999): Two companies co-existed
without evidence of actual confusion. Wine stores segregate wine according to origin with
some indication of the origin. Wine drinkers are older and better educated than average.
Court:
o P’s mark is arbitrary because it has no meaning. But an arbitrary mark is not necessarily
strong. Court should also look at the extent of advertising, volume of sale, and dilution
which might weaker the strength. Here, the mark is not very strong.
o In determining similarity between marks, we look at the overall impression and the
context in which the marks are found. Here, the two marks are dissimilar: one has three
words separated by hyphens, the other five words with no hyphen. Different syllables and
pronunciation. And English translation of them are different. Products themselves are
distinct: where the mark appears on the bottle, background, surrounding description.
 But since P’s mark is not strong, maybe people wouldn’t notice the dissimilarities.
They can be quite similar in purchasers’ perspectives.

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 o In determining proximity, court considers the nature of the products, structure of markets.
Here, the type of alcohol is different. One is affordable and the other high end. Prices are
different. One sold in glass and the other in bottles. And P has no intention to enter the
D’s market.
o Their co-existence supports there is no actual confusion.
o D was ignorant of P’s mark when adopting its own and selected its mark because of a
region’s name. D showed continued good faith in trying to resolve this infringement suit.
o D’s product is of high quality; it is not likely to jeopardize P’s fame.
o Buyers are sophisticated.
o Balancing all, there is no likelihood of confusion.
 Leelanau Wine v. Black & Red, 6th Cir. (2017): Survey should target those who is likely to
buy D’s wine: people who buy moderately priced wine produced in Michigan, who buy wine
through tasting rooms. There is limited overlap of channels. When consumers walk in D’s
tasting room, they would know it is not P’s wine.
 Kraft Foods v. Cracker Barrel, 7th Cir. (2013): When consumer is a survey respondent, this
changes the normal environment in which he encounters and reacts to marks. Unfavorable
survey will be suppressed. The focus should be whether consumer will think D’s products are
from P.

Trade Dress Confussion

 Hammerton v. Heisterman, D. Utah (2008): In trade dress infringement case, P has to
articulate the design elements that compose the trade dress, though the focus is the overall
look. Here, even looking at the picture, court doesn’t know what trade dress P describes.
 Trade-off in trade dress case: If you claim exactly the same pattern, then D’s shape is
different. If you claim the shape in broad terms, then it’s not inherently distinctive, or it’s
even an idea or functional.
 Louis Vuitton v. Dooney & Bourke, 2d Cir. (2006): Unregistered trade dress. First, we
determine if P’s mark merits protection. Second, whether D’s use is likely to cause
confusion. Here, P’s mark is inherently distinctive and strong because of inherent
distinctiveness and secondary meaning. Side-by-side comparison may tell how similar the

36
 two marks are, but it cannot be overemphasized to determine the likelihood of confusion.
Remand.
 Conopco v. May Dept. Stores, Fed. Cir. (1994): A retailer sells a national brand product and
its own private label product in direct competition, side by side, making it clear that the
products are similar. Court: D of course intends to copy. The trade dresses are very similar.
But the D put their logo on the product. And P’s product is sold by D’s private label product
for a long time without confusion. No likelihood of confusion here. We want to encourage
competition. This type of competition is commonplace, and consumers are well aware of
what brand they are buying.
 McNeil Nutritionals v. Heartland Sweeteners, 3d Cir. (2007): Store band trade dress. Court:
Store brand is not prominent on the package. It is likely to cause confusion.

Approval Confusion
 Medic Alert Foundation v. Corel Corp., N.D. (1999): The relevant confusion here is whether
consumers would believe P sponsored, endorsed or was affiliated with D. The approval is not
about approval of use of trademark, but approval of D’s product. Here, the trademark is used
inside the product. Any confusion as to perceived permission doesn’t necessarily constitute
confusion as to perceived endorsement. The question is whether consumers would perceive it
as an endorsement.
 Anheuser-Busch v. Balducci Publications, 8th Cir. (1994): Magazine parody. The parody is
published on the back cover of a magazine, a location frequently devoted to real ads. Maybe
D doesn’t intend to confuse. But D didn’t take steps to avoid confusion. The ad appears very
authentic. P’s marks are used with little change. The disclaimer is virtually undetectable.
People might believe that the ad was approved by P.
o Survey asked, “Do you think this ad needs approval?” But this is the legal conclusion that
the survey wanted to show.
 Smack Apparel, 5th Cir. (2008): D makes T-shirts with school colors and messages
associated with schools. Court: The trademark at issue is the colors combined with other
indicia referring to schools. Approval confusion.

Post-Sale Confusion
 The purchaser is not confused. Only who later sees the product is confused.

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 o If the counterfeit is of low quality, it damages the mark holder’s reputation.
o It damages the mark’s exclusivity.
o It also damages the holder’s control on its trademark.
o If none of the three ground is present, court is unlikely to find confusion.
 Mastercrafter Clock & Radio v. Vacheron, 2d Cir. (1955): Some people want to buy the
cheaper clock for the prestige gained by displaying what is regarded as a prestigious article.
Without its true manufacturer’s name on it, it is likely to cause confusion. It is reaping the
benefits of the other manufacturer.
 Munsingwear v. Jockey Int’l, 8th Cir. (1994): Underwear with mark on it. Court: Underwear
is concealed after sale. So, there is no post-sale confusion.

Initial Interest Confusion

 To make an initial interest confusion case, P usually needs to a lose of sale or an increase in
consumer research cost or a harm to the brand’s identity. The cost should be significant
enough to affect the purchasing decision. Losing a few seconds or just one click on webpage
doesn’t count.
 Mobil Oil Corp. v. Pegasus Petroleum, 2d Cir. (1987): P’s mark is a flying horse,
representing Pegasus. P doesn’t use the mark in oil trading business. D does oil trading.
Consumers would associate Pegasus with flying horse in their mind. They would find out it
was D in the end. But D would gain crucial credibility during the initial phase of a deal.
 Blockbuster Entertainment v. LayIco, E.D. Mich. (1994): The issue is the degree of
likelihood that the allegedly infringing name would attract potential consumer based on the
reputation earned by owner of the original mark.
 Network Automation v. Advance Sys., 9th Cir. (2011): D bought keyword which is P’s mark.
D’s webpage has its own mark. Users use a search engine to search for a product, they may
be confused by a result page that show a competitor’s advertisement on the same screen. A
sophisticate consumer is more likely to understand the mechanics of internet, but an un-savvy
consumer may be confused. The default degree of care is getting heightened as internet gets
common. Google partitions the search results so that advertisement appears in a separate
section.

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 Multi Time Machine v. Amazon.com, 9th Cir. (2015): When consumer search P’s mark on
Amazon, Amazon shows other products. Court: Amazon clearly labels the name and
manufacturer of each product, no reasonably prudent consumer accustomed to shopping
online would likely be confused as to the source of the product. Clear labeling can eliminate
initial confusion. Dissent: Consumers may think that the listed products are related to P,
though not produced by P.

Dilution
 Sec. 43 (c). Dilution by blurring; dilution by tarnishment.
o (1) Injunctive relief. 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 or absence of actual or likely confusion, of competition, or of actual economic
injury.
o (2) Definitions
 (A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the
general consuming public of the United States as a designation of source of the goods
or services of the mark’s owner. In determining whether a mark possesses the
requisite degree of recognition, the court may consider all relevant factors, including
the following:
 (i) The duration, extent, and geographic reach of advertising and publicity of the
mark, whether advertised or publicized by the owner or third parties.
 (ii) The amount, volume, and geographic extent of sales of goods or services
offered under the mark.
 (iii) The extent of actual recognition of the mark.
 (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act
of February 20, 1905, or on the principal register.
 (B) For purposes of paragraph (1), “dilution by blurring” is association arising from
the similarity between a mark or trade name and a famous mark that impairs the

39
 distinctiveness of the famous mark. In determining whether a mark or trade name is
likely to cause dilution by blurring, the court may consider all relevant factors,
including the following:
 (i) The degree of similarity between the mark or trade name and the famous mark.
 (ii) The degree of inherent or acquired distinctiveness of the famous mark.
 (iii) The extent to which the owner of the famous mark is engaging in
substantially exclusive use of the mark.
 (iv) The degree of recognition of the famous mark.
 (v) Whether the user of the mark or trade name intended to create an association
with the famous mark.
 (vi) Any actual association between the mark or trade name and the famous mark.
 (C) For purposes of paragraph (1), “dilution by tarnishment” is association arising
from the similarity between a mark or trade name and a famous mark that harms the
reputation of the famous mark.
o (3) Exclusions. The following shall not be actionable as dilution by blurring or dilution
by tarnishment under this subsection:
 (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 services, including use in connection with—
 (i) advertising or promotion that permits consumers to compare goods or services;
or
 (ii) identifying and 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 and news commentary.
 (C) Any noncommercial use of a mark.
o (4) Burden of proof. In a civil action for trade dress dilution under this chapter for trade
dress not registered on the principal register, the person who asserts trade dress protection
has the burden of proving that—
 (A) the claimed trade dress, taken as a whole, is not functional and is famous; and

40
  (B) if the claimed trade dress includes any mark or marks registered on the principal
register, the unregistered matter, taken as a whole, is famous separate and apart from
any fame of such registered marks.
o (5) Additional remedies. In an action brought under this subsection, the owner of the
famous mark shall be entitled to injunctive relief as set forth in [injunction]. The owner of
the famous mark shall also be entitled to the remedies set forth in [damage] and
[destruction], subject to the discretion of the court and the principles of equity if—
 (A) the mark or trade name that is likely to cause dilution by blurring or dilution by
tarnishment was first used in commerce by the person against whom the injunction is
sought after October 6, 2006; and
 (B) in a claim arising under this subsection—
 (i) by reason of dilution by blurring, the person against whom the injunction is
sought willfully intended to trade on the recognition of the famous mark; or
 (ii) by reason of dilution by tarnishment, the person against whom the injunction
is sought willfully intended to harm the reputation of the famous mark.
o (6) Ownership of valid registration a complete bar to action. The ownership by a person
of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or
on the principal register under this chapter shall be a complete bar to an action against
that person, with respect to that mark, that—
 (A) is brought by another person under the common law or a statute of a State; and
 (B)
 (i) seeks to prevent dilution by blurring or dilution by tarnishment; or
 (ii) asserts any claim of actual or likely damage or harm to the distinctiveness or
reputation of a mark, label, or form of advertisement.
 Ty Inc. v. Perryman, 7th Cir. (2002): D sells second-hand product of P, on a domain name
that contains P’s mark. Court: Under federal statute, dilution claim is limited to famous
mark. Rationale behind dilution: search cost increases if trademark is associated with
unrelated goods; consumer would have to think harder when seeing this mark. The image of
the mark may be tarnished. Others may free-ride. Here, D is selling the same products
produced by P. Aftermarket seller must free ride on the mark of original holder. P maintains

41
 their price high; so, there is certainly a secondary market which cannot operate effectively
without using the mark. Trademark holder is not the owner of its product’s secondary market.
o If a mark becomes generic, it may be beneficial to society. An addition to ordinary
language.
 Federal law doesn’t recognize famous mark in niche markets, but some state law does.
 National Pork Board v. Supreme Lobster and Seafood Co., T.T.A.B (2010): D’s slogan THE
OTHER RED MEAT is similar to P’s THE OTHER WHITE MEAT. P advertised with its
slogan intensively where the slogan was the central focus in the ad. Survey shows high
degree of recognition of the slogan. It is also used in third-party publications and business
schools. P’s mark is famous. Consumers have associated the slogan with P. Survey asks,
thinking about D’s slogan, do any other slogans come to mind? This is an appropriate
question because it is the precise question of whether D’s mark calls to mind P’s mark.
 Pinterest v. Pintrips, N.D. Cal. (2015): P’s website is a closed, invitation only website, with
monthly users less 2% of US population. P appeared on news. But the news articles began
with introducing what P is, meaning that P is not famous. P’s survey was not targeting
general public in US. So, P’s mark is not famous.
 To prove fame, the survey needs to be nation-wide and needs to show a recognition by more
than a bare majority (75% is usually enough).

Blurring
 Degree of distinctiveness means theoretical distinctiveness, arbitrary or descriptive etc.
 Exclusive use is not about a particular good, but about how many producers use the same
mark in other markets.
 If D’s use is parody, it makes people realize more the distinctiveness of P’s mark.
 Visa Int’l v. JSL Corp., 9th Cir. (2010): evisa.com for multilingual education. Court: Here is
dilution by blurring. A mark previously associated with one company now is associated with
a second. This weakens the ability of the mark to evoke the first product in consumers’ mind.
Here, the marks are nearly identical. Visa is very strong. But visa has also a dictionary
meaning, meaning that it may be not sufficiently distinctive. But visa as a mark is closely
related to its dictionary meaning and no third-party is using it so that it is not diluted yet. And
in fact, Visa is still distinctive in its particular context. D’s use creates a novel meaning of

42
 visa: multilingual education. And multiplication of meanings is the essence of dilution by
blurring. Now it is associated with two products. Dilution is an objective inquiry into whether
D’s mark is likely to contribute to the gradual whittling away of P’s mark value.
o Blurring is about how many goods are associated, not about how many dictionary
meanings there are.
 Starbucks v. Wolfe’s Borough Coffee, 2d Cir. (2009): D uses the mark “Charbucks.” Court:
In dilution analysis, it is not required that two marks are substantially similar. Similarity is
only factor listed in the statute. Only the degree of similarity is to be considered. The “intent
to associate” factor doesn’t require a bad faith. An intention to create association is enough.
Absence of confusion doesn’t undermine dilution.
o On remand: The recognition and distinctiveness of P’s mark is not informative as to
association arising from similarity of the marks. The similarity and evidence of actual
association are more important.

Tarnishment
 Point is how people feel about P’s mark, not how they feel about P’s or D’s company.
 Nordstrom v. Nomorerack Retail Group, W.D. Wash. (2013): Dilution generally arises when
P’s marks is linked to D’s product of shoddy quality, or it portrayed in an unwholesome or
unsavory context likely to evoke unflattering thoughts about the owner’s product. D’s service
is complained by its consumers. The question is then whether D’s reputation for shoddy
service places P in bad light. Here, the complaints are made on websites dedicated to
complaints. It is not discerning the overall reputation.
 Starbucks v. Wolfe’s Borough Coffee, 2d Cir. (2009): Tarnishment is the association of D’s
bad quality or lack of prestige with P’s unrelated goods. P argues that Charbuch is a negative
impression because it is bitter. But even if people associate D’s mark with P’s mark, it is not
necessarily harming the reputation of P. The question should be how D’s mark affect the
positive impression about P’s product. It may strengthen P’s mark because P’s mark doesn’t
have Char. In addition, D’s product is of high quality.

Parody
 Louis Vuitton v. Haute Diggity Dog, 4th Cir. (2007): Chewy Vuiton is a successful parody of
Louis Vuitton. Pet chew is obviously irrelevant to handbag. It clearly conveys a joking and

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 amusing parody, poking fun at the elegance of expensiveness of P’s handbag which must not
be chewed. The satire is unmistakable. Statutorily, fair use is a defense when the term is not
used as a trademark. But court can still consider parody used as a trademark as part of the
circumstances for determining whether dilution exists. Since it is a parody, it intends to
communicate that it is not the famous mark. By being a parody, it enhances P’s mark by
making it an icon. But if a parody is so similar to the famous mark, it is likely to be the actual
use of the famous mark. Here, the mimic is only imperfect.

 Starbucks v. Wolfe’s Borough Coffee, 2d Cir. (2009): D’s use cannot be a parody because it
designates the source. Even if it were a parody, it is only a subtle satire. It comes directly
from P: P truly roasts coffee more darkly. So does D. D’s mark is a beacon that D compete
with P at the same level.
 Hershey v. Art Van Furniture, E.D. Mich. (2008): For parody, the satirical message must be
clear. It must alert the public that the parody is not purveyed by the trademark owner.
 Yankees Partnership v. IET, T.T.A.B. (2015): Parody defense applies when the term is not a
source identifier. But if apply to register the term, the term must be used as an identifier. So,
the fair use exclusion doesn’t apply.
 VIP Prods. v. Jack Daniel’s Props., D. Ar. (2018): The relevant inquiry is how the junior
mark’s product affects the positive impressions about the famous mark’s product, and not
whether a consumer simply associates a negative sounding junior mark with the famous
mark. When you associate any food or beverage with defecation, you are creating disgust in
the mind of the consumer with respect to that food or beverage associated with defecation.

Domain Name

Defense
 Sec. 14 grounds for cancelling registration: fraud, abandonment, genericism, functionality.
These grounds can be used to challenge incontestable marks.
 Ownership of an incontestable mark doesn’t give right to register the same or similar marks
for different goods or services, even if closely related to goods or services in the
incontestable registration.

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 Registration is prima facie evidence of exclusive right to use the mark; incontestable
registration is “conclusive” evidence of exclusive right to use the mark.
 Sec. 33 defense to incontestability: fraudulent acquisition of trademark; abandonment of
mark; use of mark to misrepresent source (misleading designation of origin, nature or
ingredients); fair use; concurrent use prior to registration; prior registration of defendant
(defendant may continue to use only within the area where the mark was used prior to
plaintiff’s registration); violation of antitrust law; functionality; equitable principles (laches,
estoppel, acquiescence).

Incontestability
Except for Sec. 14 cancellation reasons, and except to the extent infringing a valid mark, a
registered mark which has been in continuous use for five consecutive years subsequent the
registration date and is still in use in commerce shall be incontestable, if (1) there is no final
decision adverse to the registrant’s ownership; (2) there is no such proceedings pending in PTO
or in a court; (3) an affidavit on the five-year consecutive use and matters of (1) and (2) is filed
within one year after expiration of any such five-year period; and (4) the mark is not generic.
 Park’n Fly v. Dollar Park and Fly, U.S. (1985): P filed an affidavit and got incontestability.
D counterclaims it is a generic term and merely descriptive. Court: There is no distinction
between offensive and defensive use of incontestable mark. Incontestable mark cannot be
challenged as merely descriptive. Merely descriptive mark can be canceled only within five
year of the registration date. So, producers are encouraged to cultivate the goodwill
associated with a particular mark.
o Most courts hold that incontestability says nothing about consumer confusion or the
strength of the mark. P still needs to show likelihood of confusion. On the other hand,
some courts hold that an incontestable mark is presumed to be strong.

Fair Use
To establish fair use: use the primary meaning of the word, (1) use it as a word other than as a
mark, (2) descriptive of D’s product, and (3) use fairly in good faith.
Fair use is a defense to confusion and dilution claim, and a factor in ACPA claim.
 United States Shoe Corp. v. Brown Group Inc., S.D.N.Y. (1990): P’s slogan “looks like a
pump, feels like a sneaker.” D’s ad compares its pump to a sneaker and asserts it feels like a

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 sneaker. Court: When the use is descriptive and used fairly and in good faith only to
describe to users the goods or services, it is fair use. A descriptive word may be a mark as an
identifier. But that doesn’t bar using the word in good faith for descriptive purposes pertinent
to their products. Here, “feels line a sneaker” is used in descriptive sense, claiming a virtue of
the product, not used as an identifier (D’s own logo is prominently displayed; this phrase is a
fragment of a sentence in small print). In addition, it’s not likely to cause confusion because
people understand that it is the feature of the products, not the origin.
 Car-Freshener Corp. v. S.C. Johnson & Son Inc., 2d Cir. (1995): P has a mark in pine-tree
shape of its air freshener. D sells pine-tree shaped freshener under its own mark. Court: Fair
use defense is not only against descriptive mark, though usually only descriptive marks can
be used by others in primary descriptive sense. But what matters is whether the mark is used
descriptively and not as a mark. Trademark right extends only to source significance, not to
original descriptive meanings. Holders assume the risk of confusion when they select
descriptive terms as marks. Here, D’s use describes the pine scent of the freshening agent and
refers to the Christmas season during which D sells.
 Pinterest, Inc. v. Pintrips, Inc., N.D. Cal. (2015): One P’s website, people can create pins on
“Pinboard.” Using D’s service, people can “pin” information to “Tripboard.” Court: “Pin” is
used to describe the common act pinning, which is the service offered by D, not to identify
the source. This meaning is well-known and commonly used on similar features by other
companies in software and internet fields. P suggests D use alternatives. But that is the same
as that D doesn’t have right to use common descriptive work so long as D can create its own
non-descriptive word. This is inconsistent with § 15.
 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., U.S. (2004): “micro color” used
for make-up. P concedes that D uses the term only to describe goods and not as a mark.
District court finds good faith because D started using it before P’s registration. Court: P
must make out a prima facie case of likelihood of confusion even P has an incontestable
mark. D has no burden to negate any likelihood of confusion if D’s use is fair use. It makes
no sense give D an affirmative defense that shows P fails to prove elements that P must
prove. So, consumer confusion is compatible with fair use. But P selected an originally
descriptive term as a mark. However, the extent of likelihood of confusion can be used to
assess whether D’s use is objectively fair. Some even suggest that a so identified mark cannot

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 be realistically called descriptive. Whether the descriptive term describes the goods
accurately is also a consideration in assessing fair use. Similarly, commercial justification
and strength of P’s mark may also be considered.
o On remand: the consideration of fairness of use includes: the degree of likely confusion,
the strength of the mark, the descriptive nature of the term, the availability of alternative
terms, the extent of use prior to registration, and any difference among the times and
contexts in which D used the term.

Nominative Fair Use

 Second Circuit rejected nominative fair use as a defense but integrated its factors into
Polaroid factors.
 Nominative fair use is an exception to dilution.
 New Kids on the Block v. News America Publishing, 9th Cir (1992): D conducted a poll
among fans of New Kids: which one of the New Kids is the hottest? Readers are directed to
register their vote with a fee. Court: Sometimes there is no descriptive substitute when many
goods and services are effectively identifiable only by their marks. It is impossible to refer
those goods for purposes of comparison, criticism, point of reference without using the mark.
Useful social and commercial discourse would be impossible if speakers were under threat of
trademark infringement suits every time when they refer to a product using its mark. When
there is only one word reasonable available, and D doesn’t attempt to capitalize on consumer
confusion when referring to P’s goods, it’s nominative fair use.
o Three factors of nominative fair use: (1) the product or service in question is not readily
identifiable without use of the trademark; (2) D’s use of the mark is only reasonably
necessary to identify the goods; (3) D doesn’t suggest sponsorship or endorsement. Here,
all factors are satisfied.
o P argues that D directly competes with P. When fans spend money on D, it means that
they spend less on P’s own products. But trademark law doesn’t give holders the right to
channel fans’ enthusiasm. The fact that D makes profit is beside the point. Like parody, P
has no right to prevent D.
 Int’l Info. Sys. Sec. Certification Consortium v. Security Univ., 2d Cir. (2016): P has a
certification mark CISSP. D is allowed to use the mark in its CISSP certification training

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 courses. But D also uses “Master CISSP” which is misleading. Court: A certification mark is
intended to be used by those other than the owner and is entitled to the same protection as
trademarks. Protection includes confusion as to sponsorship, affiliation, or connection. We
hold that nominative fair use is not an affirmative defense to an infringement claim. But in
nominative use cases, we should consider nominative fair use factors in addition to Polaroid
factors: (1) whether use of P’s mark is necessary to describe both P and D’s products; (2)
whether use is only so much as is necessary to identify the product; and (3) whether D
suggests sponsorship or endorsement, that is, whether D’s conduct reflects a true or accurate
relationship between P and D’s products. In step two, we consider whether D steps over the
line into a likelihood of confusion by using P’s mark too prominently or too often.
o In 9th Cir. test, nominative fair use is not a defense if there is in fact a likelihood of
confusion.
o In 3d Cir. test, nominative fair use is an affirmative defense despite a likelihood of
confusion.
 WCVB v. Boston Athletic Association, 1st Cir. (1999): P sponsors Boston Marathon. D wants
to use “Boston Marathon” on TV. Court: Consumer confusion is unlikely. When people see
“Boston Marathon” on TV, they will think it describes the event; they will think that the
channel is showing a marathon, not that the channel has special approval from P. It is not an
attention getting symbol, but primarily a description (considering the timing, meaning,
context, intent, and surrounding circumstances).
o If someone sells during the event t-shirts with “Boston Marathon” on it, people may
wrongly or confusingly think that the t-shirts are somehow official.
 Toyota Motor Sales v. Tabari, 9th Cir. (2010): D runs website “buy-a-lexus.com” where
people can buy genuine Lexus cars from authorized dealers. Court: A trademark follow by
“.com” typically suggests a sponsorship or endorsement. But far less confusion would result
when a domain name makes nominative use of a trademark including additional characters.
People may be initially uncertain what they will find. But reasonably prudent and
experienced internet consumers are accustomed to such exploration by trial and error. They
don’t have any firm expectation about sponsorship, outside the special case of
trademark.com. Producers should be able to communicate the nature of its products and the

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 consumers should have the means of receiving such information. If it is nominative fair use,
there’s no need to disprove likelihood of confusion.

Comparative Advertisement
 Smith v. Chanel, 9th Cir. (1968): The duplicate producer advertises “you wouldn’t detect any
difference between Chanel No. 5.” They copied the unpatented formula and their products
are in fact equivalents of the original. Court: In the absence of misrepresentation or
confusion as to source or sponsorship, a seller in promoting his own goods may use the
trademark of another to identify the goods he copies. We confine trademark protection to
source identification function for public policy reasons. There is a strong public interest in
copying unpatented goods. That interest will be lost if the copier cannot tell public that his
products are equivalents to the original by identifying his products with the original
trademark. That is the effective communication of claims of equivalence. It may be otherwise
difficult to tell the public the origin of the design. D has the right to tell public what it is
doing.
o P argues they spend great money in its trademark values. But expenditure doesn’t create
legally protectable rights. Even if they create public desire to buy an unpatented product,
they should not effectively extend monopoly over the goods. The copyist’s opportunism
unintentionally serves an important public interest by offering comparable goods at lower
prices. Moreover, P’s reputation is not at stake because D makes it clear that they are
selling their own goods.
o P argues that D threats the uniqueness and distinctiveness of its mark. But D doesn’t use
the mark as a generic term. D doesn’t use it as “Our Channel No. 5.”

Speech
 Rogers. v. Grimaldi, 2d Cir. (1989): P’s first name is used in D’s movie’s title, “Ginger and
Fred.” The movie is about two fictional characters who imitated P. Court: Title of artistic
work has a hybrid nature, combining artistic expression and commercial promotion.
Consumer thus have dual interests: an interest in not being misled and an interest in enjoying
the free expression, which often relies on ambiguity or irony. Therefore, expressive elements
have more protection than the labeling of ordinary commercial products. P contends that this
concern is implicated only when there is no alternative means of expressing what the work is

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 about. But this provide insufficient leeway. District court holds that trademark law doesn’t
protect all titles that are artistic expression. But this provides insufficient protection against
public deception. In general, trademark protection applies only where public interest in
avoiding confusion outweighs public interest in free expression. In the context of titles using
a celebrity’s name, trademark protection is available only if the title has no artistic relevance
to the underlying work, or if the title explicitly misleads as to the source or content of the
work when it has some artistic relevance. Here, artistic relevance is satisfied. There is a risk
of consumer confusion as to endorsement, but artistic expression interest outweighs this. The
title is entirely truthful to its content. The title has an ironic meaning that is relevant to the
content. The title is an integral element of the film’s artistic expression.
o Footnote 3: To make an infringement case, a confusingly similar title needs to have
acquired secondary meaning, even if it is arbitrary or fanciful.
o Consumers know they cannot judge a book solely by its title. So, the title doesn’t need to
unambiguously describe what the work is about.
 Mattel v. Universal Music Int’l, 9th Cir. (2002): A band has a song titled “Barbie Girl.” The
Barbie company sues. Court: We need to strike a balance between trademark right and
public’s expressive interest. Trademark cannot control public discourse whenever public
imbues the mark with a meaning beyond its source-identifying function. We adopt the
Rogers rule. The song title is clearly related to the underlying work. The song is about
Barbie. The title doesn’t explicitly mislead as to the source of the song. The only indication
that P might be associated with the song is the use of term Barbie. If this were enough,
Rogers would be a nullity.
o P alleged dilution: the song diminishes the mark’s capacity to identify its products and
tarnishes the mark because the song is inappropriate for young girls. But noncommercial
use is a defense to dilution. Noncommercial use refers to a use that consists entirely of
noncommercial, or fully constitutionally protected, speech, such as parody, satire,
editorial and other forms of expression that are not part of a commercial transaction. The
speech can involve commercial purpose. But if the speech is more than propose a
commercial transaction, it is entitled to full First Amendment protection. The title may
have served a commercial purpose-to draw attention, but it also includes protected
expression. The commercial purpose is inextricably entwined with expressive elements.

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 E.S.S Entertainment 2000 v. Rock Star Videos, 9th Cir. (2008): D created in a video game a
strip club “Pig Pen”, similar to P’s club “Play Pen,” with some characteristics the same.
Court: D doesn’t use the trademark to describe P, so nominative fair use defense doesn’t
apply. The Rogers rationale extends to the body of artistic work. D’s modification of the
mark is not explicitly misleading and protected by the First Amendment.
o In determining the first prong, for the defense to apply, the level of relevance merely
must be above zero. All the characters in the neighborhood is relevant to D’s goal to
create a parody of the real city. The most reasonable way to do it is to recreate buildings
in the neighborhood. So, to include a strip club with similar look does have some artistic
relevance.
o Under the second prong, the game is unlikely to confuse consumers. The game has only
general similarity. Game and club would not normally go together. Consumer wouldn’t
reasonably believe that D operates a club. P’s club is only generic in its setting.
Reasonable consumers would think this not well-known club produces a technologically
sophisticated game.
 MasterCard Int’l v. Nader 2000 Primary Committee, S.D.N.Y. (2004): Nader is his president
complain uses a similar advertisement as MasterCard’s. Court: Noncommercial use is
specifically mentioned as a defense to dilution. Political speech is not covered as
commercial. Public may associate the speech with the original mark, but that is insufficient to
injunct a political speech. The speech may propose a commercial contribution, but the
solicitation of contribution is much more than merely a commercial transaction.
 In confusion case, speech can be used as
o No likelihood of confusion (Polaroid factors)
o Rogers balancing test for artistic expressions
o Classic fair use
o Nominative fair use
o Not “in connection with” D’s goods or services.
 In dilution case, speech can be used as
o No dilution (§43(c)(2)(B) factors)
o Statutory dilution defenses (§ 43(c)(3)), including noncommercial speech.

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 o First Amendment defense in state dilution claim (federal dilution claim doesn’t need it
because speech is listed as a defense).

Parody
 Dr. Seuss Enterprises v. Penguin Books, 9th Cir. (1997): P has a famous book “The cat in the
hat.” D published a book “The cat NOT in the hat! A parody” on Simpson murder trial.
Court: The focus is likelihood of confusion as to the source of D’s book. D argues that the
likelihood is offset by the book’s parodic character. But the claim of parody is not really a
separate defense, but merely a way of phrasing the traditional response that customers are not
likely to be confused. An attempt at humor through the use of another’s mark, a parody can
be confusing, especially when the purpose of the similarity is to capitalize on a famous
mark’s popularity for D’s own commercial use.
o Mattel v. Universal Music Int’l, 9th Cir. (2002): The song here poles fun at Barbie
herself, not another subject. However, the “The cat NOT in the Hat!” book uses the mark
only to get attention rather than to mock the original mark. D’s use of the mark has no
critical bearing on the substance or style of P’s mark. Where an artistic work targets the
original and does not merely borrow another’s property to get attention, First Amendment
interest weighs more heavily.

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