Trademark Attack Sheet:outline

TRADEMARK ATTACK SHEET
PP 21-28
Introduction
Introduction to Trademark Law

 Protected under Federal and State Law
o Federal Law – focus in this class
 Lanham Act, §§ 1 et seq. (15 U.S.C. §§ 1051 et seq.)
o State Law
 Statutes (e.g. California Business and Professions Code, §§ 14200 et seq.) and state
common law
Where does Congress get its power to regulate trademarks?

 Per the U.S. Supreme Court in The Trade-Mark Cases (U.S. 1879), Section 8, clause 8 of Article 1 of
the U.S. Constitution (on the left) does not give Congress the power to regulate trademarks; the
Commerce Clause provides this power
 Commerce Clause (§ 8, cl. 3): “The Congress shall have power to regulate commerce with foreign
nations, and among the several states, and with the Indian tribes.”
The Function(s) of Trademarks

 Identify the source of goods or services
 Other functions of trademarks?
o Advertising of the mark creates a brand image or personality
o Makes it easier to invest in the brand image
o Brands can serve the functions that fraternal, religious and service organizations serve – to help
people define who they are and then help them communicate that info to others
How to Think Like a Trademark Attorney

 Does your client or a third party have trademark rights?
o Can this subject matter be protected by trademark law?
 For each mark/trade dress, is this a “word, name, symbol, or device” (or combination of
these) used to identify and distinguish the source of goods or services?
 What type of marks/trade dress (word or stylized mark, logo, slogan, product packaging,
product configuration, décor, color, etc.) are used in connection with the goods or
services? What are the goods or services?
o What legal elements and facts must be established for this to be a valid and protectable
trademark?
 Is mark distinctive? Not functional? No bar to registration/protection?
 Does client or a third party have priority through use or registration?
 What is the geographic scope of protection?
 Is the mark registered or incontestable? If so, what are the benefits?
 Is there a violation of this trademark right?
o Does the geographic scope of trademark rights extend to this use?
o What are the elements of a claim for trademark infringement, dilution, and/or cybersquatting?
What facts support each element of the trademark claim(s)?
 Do any defenses excuse this use of the trademark?
 What remedies are available for this trademark violation?
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What Can Be Protected as a Trademark?
Lanham Act § 45, 15 U.S.C. § 1127 Definition of a “Trademark”

 “The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof –
o (1) used by a person, or
o (2) which a person has a bona fide intention to use in commerce and applies to register on the
principal register established by this Act,
 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.”
Lanham Act § 45, 15 U.S.C. § 1127 Definition of a “Service Mark”

 “The term ‘service mark’ includes any word, name, symbol, or device, or any combination thereof –
o (1) used by a person, or
o (2) which a person has a bona fide intention to use in commerce and applies to register on the
principal register established by this Act,
 to identify and distinguish the services of one person, including a unique service, from the services of
others and to indicate the source of the services, even if that source is unknown . . . .”
Ø Note the same rules usually apply to trademarks and service marks - Lanham Act § 3, 15 U.S.C. § 1053
Lanham Act § 45, 15 U.S.C. § 1127

Trademarks (aka Brand Names) vs. Trade Names
 Definition of a “trade name” or “commercial name”?
o “The terms ‘trade name’ and ‘commercial name’ mean any name used by a person to identify his
or her business or vocation.” (15 U.S.C. § 1127)
o Example: Procter & Gamble
o Example: The Coca-Cola Company
 Trade names cannot be registered under the Lanham Act unless they identify the source of goods or
services
o Coca-Cola for a beverage
o But can sue for unfair competition under Lanham Act Section 43(a), 15 U.S.C. §1125(a) based
on rights in a trade name
Certification and Collective Marks

 “The term ‘certification mark’ means any word, name, symbol, or device, or any combination thereof -
(1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a
person other than the owner to use in commerce and files an application to register on the principal
register established by this chapter, to certify regional or other origin, material, mode of manufacture,
quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on
the goods or services was performed by members of a union or other organization.” (15 U.S.C. § 1127)
 “The term ‘collective mark’ means a trademark or service mark – (1) used by the members of a
cooperative, an association, or other collective group or organization, or (2) which such cooperative,
association, or other collective group or organization has a bona fide intention to use in commerce and
applies to register on the principal register established by this chapter, and includes marks indicating
membership in a union, an association, or other organization.” (15 U.S.C. § 1127)
Types of Nonverbal (Nonword) Identifiers That May Qualify as Trademarks
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 A “symbol” or “device” protectable under the Lanham Act
 Logos (e.g., Nike Swoosh, Shell’s Shell, Starbucks’ Mermaid)
 Product packaging (e.g., Pom bottle for juice)
 Product design or shape (e.g., LEGO Minifigure product configuration for a toy figure)
 Décor (e.g., Apple’s layout for its retail store, Taco Cabana’s décor of its restaurant in Two Pesos)
 Colors (e.g., green-gold for press pads in Qualitex)
 Scents (e.g., scent of Play Doh for modeling compound)
o Per the registration, it is a “sweet, slightly musky, vanilla fragrance, with slight overtones of
cherry, combined with the smell of a salted, wheat-based dough”
 Sounds (e.g., MGM lion’s roar for entertainment services)
 Textures (e.g., leather wrapping around wine bottle)
 Flavors? Other non-traditional subject matter?
Establishment of Trademark Rights
1. Distinctiveness
a. Classification of Terms and Requirements for Protection
Abercrombie & Fitch Co. v. Hunting World, Inc. (2d Cir. 1976)
The Abercrombie Spectrum of Distinctiveness:
Is This Mark Distinctive for these Goods or Services?
Inherent vs. Acquired Distinctiveness

 Restatement (Third) of Unfair Competition (1995), § 13: a word, name, symbol, device, or other
designation (or a combination of these) is distinctive if it is either inherently distinctive or has acquired
distinctiveness
o (a) A designation is “inherently distinctive” when, “because of the nature of the designation and
the context in which it is used, prospective purchasers are likely to perceive it as a designation
that. . . identifies goods or services produced or sponsored by a particular person, whether known
or anonymous.”
 Example: fanciful, arbitrary and suggestive word marks
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o (b) A designation has “acquired distinctiveness” or “secondary meaning” when “as a result of
its use, prospective purchasers have come to perceive it as a designation that identifies goods,
services, businesses, or members. . . .”
 For certain marks, must usually establish acquired distinctiveness: descriptive terms,
geographically descriptive terms, surnames and other personal names, colors, product
configurations, and most other nontraditional marks
Zatarain’s v. Oak Grove Smokehouse (5th Cir. 1983)
Is the mark Suggestive or Descriptive?

 Dictionary Definition Test
– Does the ordinary meaning in the dictionary of the trademarked term(s) describe the goods? If
yes term is likely descriptive (or it may be generic)
 Imagination Test
– Does it require imagination, thought, or perception to reach a conclusion as to the nature of the
goods? If yes  term is likely suggestive
 Competitors’ Need Test
– Do competitors need to use the term to effectively compete with mark owner (is there a paucity
of synonyms)? If yes  term is likely descriptive (or it may be generic)
 Competitors’ Use in the Marketplace Test
– Are other companies actually using the same term to describe their similar products? If yes
term is likely descriptive (or it may be generic)
Secondary Meaning/Acquired Distinctiveness

 Secondary meaning or acquired distinctiveness is an association formed in the minds of consumers
between the word, name, or symbol and a single source of goods or services (even if that source is
unknown)
 US SCt: “secondary meaning” is acquired when “in the minds of the public, the primary significance of
a product feature . . . is to identify the source of the product rather than the product itself.” Qualitex
(quoting Inwood)
 Proof of secondary meaning or acquired distinctiveness is usually required for trademark protection of:
o Descriptive terms
o Geographically descriptive terms
o Informational messages and widely used messages (e.g., social, political, or religious messages)
not usually perceived as a trademark
o Ornamental or decorative matter that is not inherently distinctive
o Surnames and other personal names (but possibly not certain full names)
o Colors (but possibly not certain color marks for product packaging)
o Three-dimensional product designs or shapes (product configurations)
o Non-inherently distinctive logos and product packaging designs (use the Seabrook or
Abercrombie tests to determine if inherently distinctive)
o Also other types of “nontraditional” marks like scents, flavors, textures, etc. – see McCarthy on
Trademarks treatise for more examples
Proving Secondary Meaning/Acquired Distinctiveness

 Direct evidence:
o Association in minds of consumers between the mark or trade dress and a single source (even if
the source is unknown)
 E.g., consumer survey, direct consumer testimony
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 Need substantial portion of relevant consumers: 50% or higher best
 Circumstantial evidence:
o Extensive advertising and other promotion of the mark
o Extensive sales of the product under the mark
o Lengthy use of mark as a mark to identify the source of goods or services
o Exclusive use of mark as a mark (no/limited use by competitors of the term as a mark or use of
the term in a descriptive or generic manner)
 Presume secondary meaning after five years of substantially exclusive and continuous
use (see Lanham Act § 2(f), 15 U.S.C. § 1052(f))
o Use of mark as a brand name in the media, dictionaries, trade journals
o Proof of intentional copying of the mark or trade dress by others (unless descriptive term or
functional trade dress)
o Actual consumer confusion caused by another’s use of the mark
o Established place in the market or large size of the company
o Large number of customers or social media followers
o Focus on the effectiveness of advertising and sales in creating secondary meaning, not on extent
of the efforts per Zatarains
Special Rules for Classification of Certain Types of Marks

 Non-English Words: Doctrine of Foreign Equivalents - Foreign equivalent of a generic or merely
descriptive English word is no more registrable than the English word itself
o Example: In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB 2008) (AYUMI and its Japanese-
character equivalent held merely descriptive for footwear where the evidence indicated that the
primary meaning of applicant's mark is "walking")
o Issues to consider per the TTAB:
 Would an ordinary American purchaser stop and translate the foreign word into its
English equivalent?
 Is the English translation literal and direct?
 Common, modern language? A dead or obscure language?
 Is there contradictory evidence of another relevant meaning?
 Is foreign term combined with English term in a way that creates a different commercial
impression than two English terms?
- Example: In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988) (allowing
registration of LA YOGURT for yogurt)
 Acronyms – descriptive or generic if (1) wording it stands for is descriptive or generic for the goods or
services, and (2) relevant purchasers understand it is substantially synonymous with that language
 Domain names and hashtags - can register if distinctive and function as identifiers of the source of
goods or services
o Distinctiveness - classification on the Abercrombie spectrum: depends on the mark and goods or
services (e.g., Amazon.com for books and other products verses Amazon.com for river trips on
the Amazon)
 Domain names: Adding http://www., .com, .org, .edu to a generic word does not
automatically make it distinctive (e.g., patents.com or lawyers.com for info about patents
or lawyers, respectively)
- But after the recent Supreme Court’s Booking.com decision, there is also no
automatic bright-line rule that a domain name containing a generic term is
automatically generic
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 Hashtags: Adding # to a generic word also does not make it automatically distinctive –
focus on the meaning of the word, the goods or services, and the context of the use
 Popular slogans, common phrases, memes, puns, and other types of informational or ornamental
matter - can register if distinctive and used as a trademark in a manner that functions as a source-
identifying trademark
o Distinctiveness - classification on the Abercrombie spectrum: depends on the mark and goods or
services (e.g., slogan may be arbitrary mark for apparel)
o Is matter used as a mark to identify goods or services, or does it fail to function as a mark due to
its inherent nature or the manner in which it is used?
 Informational matter: provides information about the goods or services; social, political,
or religious messages or similar widely-used messages
 Ornamental matter: decorative use of the subject matter (e.g., display slogan or image on
the front of a T-shirt instead of on a hang-tag or label)
o Examples of marks refused registration on failure to function grounds (and/or lack of
distinctiveness): “Black Lives Matter” for apparel, “I ♥ DC” for apparel, “I Love You” for
jewelry, “Investing in American Jobs” for retail services, “Drive Safely” for automobiles, “Think
Green” for weather stripping, “Proudly Made in USA” for electric shavers, and an image of
Uncle Sam for games, food and beer
o Examples of registered marks: “Life is Good”, “I ♥ NY”, “Lifeguard”, and “Lettuce Turnip the
Beet” for apparel; “If you see something say something” for promoting public awareness of
public safety and security issues
 If a registrant’s right to use the mark becomes incontestable, that mark cannot be
challenged on failure to function or lack of distinctiveness grounds
b. Genericness
Elliot v. Google (9th Cir. 2017)

 Is GOOGLE a generic term for an internet search engine?
 15 U.S.C. § 1064(3) (“Cancellation of Registration”) allows petitions to cancel a mark “if the
registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is
registered…”
o “The primary significance of the registered mark to the relevant public rather than purchaser
motivation shall be the test for determining whether the registered mark has become the generic
name of goods or services on or in connection with which it has been used.”
 Ninth Circuit uses “who are you/what are you” test for determining primary significance of word to
relevant public (generic or not generic?)
o If mark describes who provides product, then mark is not generic and is valid
o If mark describes what the product is, the mark has become generic
 Burden of proof is on Elliot since mark is registered & presumed valid
 Claim of genericide must relate to a particular type of good or service (e.g., Google must be generic for
internet search engines, not just used as a verb for the act of searching on the internet)
 Relevance of use of term as a verb, noun, or adjective?
o Use as an adjective is not required to prove the mark is not generic
 Evidence: surveys, generic use vs. brand name, dictionary definition
Generic Terms
 Generic terms cannot be registered or protected under trademark law
 Two types of Generic Terms:
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o Inherently generic terms: terms that are “born generic” (e.g., COMPUTER for a computer) and
then adopted as trademarks (e.g., VIDEO BUYER’S GUIDE, SHREDDED WHEAT, YOU
HAVE MAIL, MULTISTATE BAR EXAM)
o Terms with acquired genericness (victims of “genericide”): terms that were distinctive but which
are now generic due to common usage by the public (e.g., ESCALATOR, ASPIRIN,
CELLOPHANE)
 Sub-categories of a general class or genus of goods
o Restatement of Unfair Competition § 15, cmt. a: suggests terms such as LIGHT BEER for beer
or DIET COLA for cola are also generic terms rather than descriptive terms
 What about HONEY BROWN for ale beer?
 Burden of proof on issue of genericness
o Defendant if mark is registered (registered marks presumed valid)
o Plaintiff if mark is not registered and Defendant asserts defense
o Defendant if mark was distinctive but defendant argues the term is now generic due to common
usage because of genericide
USPTO v. Booking.com (U.S. 2020)

 Test for genericness of a word is the same regardless of whether a term is allegedly born generic or has
become generic through use
o Class or type of product: a generic term names a class of goods or services, rather than any
particular feature or exemplification of the class - 15 U.S.C. §§ 1127, 1064(3), 1065(4)
o Do not dissect compound terms (marks containing more than one word): focus on the term’s
meaning as a whole (e.g., “Pretzel Crisps” for crackers) when deciding genericness, not on
individual words in isolation (e.g., “Pretzel” or “Crisps”)
o Focus on consumer perception: Relevant meaning of a term when deciding genericness is its
meaning to consumers
 Per the cancellation provision of the Lanham Act, “The primary significance of the
registered mark to the relevant public rather than purchaser motivation shall be the test
for determining whether the registered mark has become the generic name of goods or
services on or in connection with which it has been used.” 15 U.S.C. § 1064(3)
Tests for Evaluating Whether a Mark is Generic

 Ninth Circuit’s test for determining whether a term is generic – the “who-are-you/what-are-you” test in
Filipino Yellow Pages Inc. v. Asian Journal Pubs, Inc. (9th Cir. 1999) (discussed in Elliot v. Google)
o A distinctive mark answers the questions “Who are you?” “Where do you come from?” “Who
vouches for you?” (e.g. NIKE)
o A generic designation answers the question “What are you?”
 “If the primary significance of the trademark is to describe the type of product rather than
the producer, the trademark [is] a generic term and [cannot be] a valid trademark.” (e.g.,
SHOES)
 Federal Circuit’s two-step inquiry for evaluating a mark’s genericness in Princeton Vanguard, LLC v.
Frito-Lay North America (Fed. Cir. 2015) (finding PRETZEL CRISPS to be generic for pretzel
crackers):
o (1) What is the genus of the goods or services at issue?
o (2) Is the term or symbol understood by the relevant public (e.g., ordinary consumers who buy,
eat, or use it) primarily to refer to that genus of goods or services? Generic if primary
significance of term/symbol is the product type
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Evidence Relevant for Determining Whether an Alleged Mark is Generic
 Dictionary definitions – show how term is understood by the public
o Example: Mil-Mar Shoe Co. v. Shonac Corp (7th Cir. 1996) – dictionary definitions suggested
WAREHOUSE SHOES for a retail store is generic
 What about MEN’S WEARHOUSE for clothing?
 Use of the alleged mark in a generic manner (not as a brand name) by the trademark owner, competitors,
news media, trade journals, and public
o Example: Haughton Elevator Company v. Seeberger (Commr. Pat. 1950) – approving
cancellation of registration of ESCALATOR for a moving stairway because Otis used term in a
generic manner (e.g., ads said “Otis elevators and escalators”)
 Testimony of persons in the industry or trade saying term or symbol is generic rather than a brand
 Consumer surveys - e.g., Thermos survey, Teflon survey
 Trademark Examiner or TTAB finds the term to be generic
 Should use of the word as a verb matter? Google case says no
Example from a trademark case I litigated - Worldwide Travel Place v. Powermount: Is Cheap Seats generic for
discount airline travel services?
 Dictionary definitions – “cheap” (low in cost, inexpensive) and “seats” (something that may be sat upon,
such as a chair, bench or the like)
o Discount airline tickets vs. furniture, chair or bench
 Use of the alleged mark in a generic manner by
o Markholder - E.g., Email to potential customers: “If you haven’t bought your ‘Cheap Seats’ for
the spring break period, Cheap Seats still has the lowest fares available”
o Media - E.g., Wall Street Journal – “airlines control the number of available cheap seats”; CNN
broadcast used phrase “cheap seats” to refer to inexpensive airline seats not plaintiff
o Use by Competitors - Use as a brand name (Cheap Seats, Charlie Cheapseats for airline travel),
telephone number (1-800-Cheapseats), domain name (4cheapseats.com), and other uses by
competitors in promotion of travel services or as a means of describing their services
 Testimony of persons in the industry or trade – deposition testimony that the term refers generically to a
product or service rather than a particular brand or company
 Consumer Survey – consumers do not associate “cheap seats” with plaintiff
o 300 consumers, national sample in Feb. 2000, screen: recent air travelers
o Teflon Survey used: 84% said the term was generic
 Control brand names: american airlines (89%) and royal caribbean (80%)
 Control products/services: jumbo jet (86%), super saver (79%), red cap (55%)
 Court’s holding on summary judgment: Cheap Seats is generic for discount airline travel services
If term or symbol is generic, unfair competition claim may still be available

 Lanham Act § 43(a) allows a claim if the defendant is “passing off” its goods or services as those of the
plaintiff – it is causing a likelihood of confusion with regard to the source of its own goods or services
o Example: cannot falsely say products are “original” or “genuine”
 Can use the generic term in advertising and sales but must identify your own company as the source of
the goods
 Defendant must do something more that use the generic terms to be liable for unfair competition based
on passing off, such as:
o Use of similar label, designs, colors, packaging as plaintiff
o Use of words “original” or “genuine”
o Misleading advertising
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 Ways to avoid confusion
o Use own house mark or brand name before generic term
o Lower case use of generic term – thermos not Thermos
o Disclaimer clarifying that plaintiff is not source
c. Distinctiveness of Trade Dress and Product Configuration
Two Pesos v. Taco Cabana (U.S. 1992)

 Can a restaurant’s trade dress (restaurant décor) be inherently distinctive and thus be protectable without
proof of secondary meaning?
 Text of Act: Nothing in Lanham Act requires different protection of trade dress
o Intent of the Lanham Act? Intended to make actionable the deceptive and misleading use of
marks and to protect persons engaged in commerce against unfair competition (Lanham Act §
45, 15 U.S.C. § 1127)
o Lanham Act § 43, 15 U.S.C. § 1125(a) protects qualifying unregistered marks from
infringement; protection prevents deception and unfair competition
 It does not distinguish between trademarks and trade dress
 It does not suggest that inherently distinctive verbal or symbolic marks should be treated
differently from inherently distinctive trade dress
 Trademark Policy: What interpretation furthers goals of Lanham Act?
o Requiring secondary meaning for inherently distinctive trade dress would undermine purposes of
the Act (1) to protect trademark owner’s business goodwill and (2) protect the ability of
consumers to identify and distinguish among competing producers
o Requiring secondary meaning will have an anticompetitive effect on small companies and new
entrants [but protection may also harm competition!]
 Restaurant décor can be an inherently distinctive trade dress
 If décor is inherently distinctive, secondary meaning is not required
Testing Nonverbal Identifiers For Inherent Distinctiveness – the Abercrombie test

 Should courts use the Abercrombie test analysis?
o If the logo, product packaging, décor, or other “symbol” or “device” is generic for these
goods/services (e.g., an apple shape for apples), it cannot act as a mark for these goods/services
o If the symbol or device is descriptive of these goods or services (e.g., apple shape for apple-
scented candles), need proof of secondary meaning
 If there is no secondary meaning, this symbol or device cannot act as a mark for these
goods or services
 If there is secondary meaning, it can be protected under trademark law (unless it is
functional)
o Is the symbol or device suggestive, arbitrary, or fanciful for these goods or services (e.g., apple
shape for computer services)?
 If so, it is inherently distinctive and can be protected under trademark law (unless it is
functional or fails to function as a mark)
 Proof of secondary meaning is not required
Ø But remember that colors, product designs, and most nontraditional trademarks
(except sounds) cannot be inherently distinctive and need proof of secondary
meaning for protection
Testing Nonverbal Identifiers For Inherent Distinctiveness – The Seabrook test
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 Test under Seabrook (CCPA 1997) – Is this logo, product packaging design, décor, or other “symbol” or
“device” inherently distinctive? If not, need proof of acquired distinctiveness (secondary meaning) for
trademark registration and protection
1. Is it “a ‘common’ basic shape or design”? No  more likely inherently distinctive
2. Is it “unique or unusual in a particular field”? Yes  more likely inherently distinctive
3. Is it “a mere refinement of a commonly-adopted and well-known form of ornamentation” for the
goods? No  more likely inherently distinctive
4. Is it “capable of creating a commercial impression distinct from the accompanying words”? Yes
 more likely inherently distinctive
5. If not inherently distinctive and no evidence of acquired distinctiveness  not a valid trademark
d. Product Configuration, Colors, and other Nontraditional Trademarks
Qualitex v. Jacobson Products (U.S. 1995)

 Can a single color be protected as a trademark?
 Lanham Act § 45 (15 USC § 1127) describes the universe of what can qualify as a trademark “in the
broadest of terms”: “The term ‘trademark’ includes any word, name, symbol, or device, or any
combination thereof –…used…to identify and distinguish his or her goods…from those manufactured or
sold by others and to indicate the source of the goods…”
o “Since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of
carrying meaning, this language, read literally, is not restrictive.”
 Requirements for trademark protection (1) word, name, symbol, device, or combination thereof used as
a mark to identify and distinguish goods or services; (2) the mark/trade dress is distinctive; and (3) not
functional
 Color can be protected as a trademark if:
o Color is used as a mark to identify and distinguish goods or services
o The color has acquired distinctiveness or secondary meaning
 Colors are not inherently distinctive marks (like descriptive terms)
o The color is not functional
 A product feature is functional if it is essential to the use or purpose of the article or
affects its cost or quality
 Protection of non-reputation-related features can harm competition and put competitors at
a significant disadvantage
Wal-Mart Stores v. Samara Bros. (U.S. 2000)

 When is an unregistered product design considered distinctive and thus a valid and protectable trade
dress under Section 43(a)?
o Text of the Lanham Act?
 Distinctiveness is required, but it is unclear from the Act whether product design can be
inherently distinctive
o Judicial analysis of the Lanham Act?
 Colors cannot be inherently distinctive per Qualitex
o Holding: Like colors, product designs cannot be inherently distinctive – proof of secondary
meaning is required for trademark protection
 Product designs do not immediately signify source
 Designs often just render product more useful or appealing
 Possibility of protection without requiring proof of secondary meaning may harm
competition and consumer interests, so bright line rule (product designs are not inherently
distinctive, rather than Seabrook case-by-case analysis) is best here
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 Protection may be available under copyright or patent law
Trade Dress Distinctiveness

 Product Packaging, Décor
o Like words and logos, packaging and décor are capable of being inherently distinctive Is trade
dress inherently distinctive?
o Abercrombie Test: Is it suggestive, arbitrary, or fanciful for this product? Does it immediately
signify the product’s source?
o Seabrook Test: More likely inherently distinctive if
 Not “a ‘common’ basic shape or design”
 It is “unique or unusual in a particular field”
 Not “a mere refinement of a commonly adopted and well-known form of ornamentation
for the goods”
 It is “capable of creating a commercial impression distinct from [any] accompanying
words”
 Product Design / Product Configuration
o Wal-Mart: Like color, product design is not inherently distinctive - need evidence of acquired
distinctiveness for protection
o Product designs render product itself more useful or more appealing
o In close cases, err on the side of classifying as product design
o How reconcile Two Pesos holding?
 Trade dress can be inherently distinctive, but décor of a restaurant is not product design –
it is either product packaging or something else (“tertium quid”)
o Policy: Promote fair competition by requiring proof of acquired distinctiveness (just like for
descriptive terms)
Ø Need secondary meaning if trade dress is not inherently distinctive
Analysis to Use When Determining Distinctiveness of a Mark or Trade Dress

1. Is this a “word, name, symbol, or device” (or combination of these) used to identify and
distinguish the source of goods or services? See 15 USC § 1127
 What type of marks/trade dress (word mark, name, stylized word or name, logo, product
packaging, decor, color, product configuration/design, etc.)?
 What are the goods or services?
2. Is each alleged mark or trade dress distinctive?
o For descriptive terms, surnames, colors, product configurations, and most other non-traditional
marks, proof of acquired distinctiveness is generally required
o For all other marks (e.g., words, names, logos, product packaging, decor), apply Abercrombie
test and/or Seabrook test and determine if the mark is inherently distinctive or needs proof of
acquired distinctiveness
 If inherently distinctive, the mark or trade dress is distinctive and proof of acquired
distinctiveness (aka secondary meaning) is not required.
 If not inherently distinctive (e.g., descriptive terms, geographical terms, names, or marks
not inherently distinctive under Seabrook), must prove acquired distinctiveness for
protection  apply secondary meaning factors; if it has not acquired distinctiveness, it is
not distinctive
 If not distinctive (e.g., generic terms; no proof of secondary meaning for non-inherently
distinctive marks or trade dress), the mark or trade dress is not protected under trademark
law; but possible unfair competition claim
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e. Functionality
Qualitex v. Jacobson Products (U.S. 1995)

 Goal of functionality doctrine?
o Prevent inhibition of “legitimate competition by allowing a producer to control a useful product
feature”
 What is the test for functionality?
o Quoting Inwood, the Supreme Court says: “‘In general terms, a product feature is functional,’
and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it
affects the cost or quality of the article,’ that is, if exclusive use of the feature would put
competitors at a significant non-reputation-related disadvantage.”
Ø Is this one test for functionality, or two tests? Supreme Court in TrafFix says two tests, so
apply functionality law in that opinion
 Are colors always functional?
o No – sometimes color makes a product more desirable, but not always
o Thus no absolute bar to use of color alone as a mark
 Per the Restatement of Unfair Competition, the “ultimate test of aesthetic functionality” is whether
trademark protection “would significantly hinder competition”
Lanham Act Provisions Regarding Functionality

 Lanham Act § 2(e)(5), 15 U.S.C. §1052(e)(5)
o Basis to Refuse Registration: Can refuse to register mark that “comprises any matter that, as a
whole, is functional”
 Lanham Act § 14(3), 15 U.S.C. §1064(3)
o Cancellation of Registration: Can petition to cancel registration of a registered mark that “is
functional”
 Lanham Act § 43(a)(3), 15 U.S.C. §1125(a)(3)
o Plaintiff has burden of proof on functionality for unregistered trade dress: “In a civil action for
trade dress infringement under this Act for trade dress not registered on the principal register, the
person who asserts trade dress protection has the burden of proving that the matter sought to be
protected is not functional.”
 Lanham Act § 33(b)(8), 15 U.S.C. §1115(b)(8)
o Defense: The right to use the registered mark—even if it is incontestable—is subject to the
defense: “(8) That the mark is functional”
TrafFix Devices Inc. v. Marketing Displays Inc. (U.S. 2001)

TrafFix: If Features Claimed in a Patent, Does this Make the Features Functional?
 Effect of expired patent on claim of trade dress infringement?
o Expired utility patent is strong evidence the claimed features are functional, but expired utility
patent is not conclusive on issue of functionality
o Difficult to prove nonfunctional—statutory presumption that features are deemed functional
o Nonfunctional if feature is merely an ornamental, incidental, or arbitrary aspect of the device
 Application of law:
o Here dual-spring design is “central advance” in patent and “essential feature” of its trade dress
o Springs are necessary to operation of the device
o Utility patent provides “strong evidence” of functionality and adds “great weight” to Lanham
Act § 43(a)(3) presumption that features are functional
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TrafFix Analysis: Is this Trade Dress Functional?
1. TrafFix/Inwood “traditional” test: “‘In general terms, a product feature is functional,’ and cannot serve
as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of
the article’”
o May be functional if features covered in claims of a utility patent
o Utility patents can provide “strong evidence” of functionality and add “great weight” to Lanham
2. TrafFix/Qualitex “competitive necessity” test: “a functional feature is one the ‘exclusive use of [which]
would put competitors at a significant non-reputation-related disadvantage.’”
 If functional under TrafFix/Inwood test, “there is no need to proceed further to consider if there is a
competitive necessity for the feature”
o No need to apply TrafFix/Qualitex “competitive necessity” test
o No need to engage in “speculation about other design possibilities”
o If not functional under TrafFix/Inwood test (e.g., in cases of aesthetic functionality), apply the
TrafFix/Qualitex “competitive necessity” test
o If no or few alternate designs serve same purpose  likely functional because protection would
significantly disadvantage competitors
o If many alternative designs available  likely non-functional
Apple Inc. v. Samsung Electronics (Fed. Cir. 2015)

 Applies law of regional circuit: Ninth Circuit (& U.S. Supreme Court law)
 “Trade dress is the totality of elements in which a product or service is packaged or presented.” Stephen
Boney (9th Cir. 1997)
o If it identifies a product’s source, it is protected to promote competition
o Must balance trademark rights against right to compete through imitation
 U.S. Supreme Court’s Functionality test: “‘In general terms, a product feature is functional if it is
essential to the use or purpose of the article or if it affects the cost or quality of the article.’” (quoting
Inwood Labs).
 Ninth Circuit law on non-functionality–its a “high bar” per Federal Circuit
o “A product feature need only have some utilitarian advantage to be considered functional” Disc
Golf
o Trade dress is functional if it is “in its particular shape because it works better in this shape”
Leatherman
o It is “more difficult to claim product configuration trade dress than other forms of trade dress”;
U.S. Supreme Court and Ninth Circuit have “repeatedly found product configuration trade
dresses functional and therefore non-protectable”
o Note: it is easier to show functionality under Ninth Circuit approach
Apple v. Samsung (Fed. Cir. 2015)

 Ninth Circuit’s Disc Golf factors used to evaluate functionality
1. Whether the design yields a utilitarian advantage
Ø If yes  more likely functional
2. Whether alternative designs are available
Ø If no  more likely functional
3. Whether advertising touts the utilitarian advantages of the design
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4. Whether the particular design results from a comparatively simple or inexpensive method of
manufacture
Ø “However, the Supreme Court has more recently held that ‘a feature is also functional ... when it affects
the cost or quality of the device.’ See TrafFix”
Ø Federal Circuit then applies Disc Golf factors despite fact TrafFix didn’t apply or discuss all four
factors; note there is overlap in the analysis
 Burden of Proof on Non-Functionality/Functionality:
o Unregistered trade dress  Apple per 15 U.S.C. § 1125(c)(4)(A)
o Registered trade dress  Samsung since registration is prima facie evidence of non-functionality
Examples of Aesthetic Functionality

 Brunswick v. British Seagull
(Fed. Cir. 1994) – competitive need to use black for outboard motor engines
o Color black is aesthetically compatible with complementary goods (boats of different colors)
o Color black makes the engine look smaller
 In re Florists Transworld Delivery (TTAB 2013)
o Color black for boxes containing flowers and floral arrangements was functional
o Competitive need to use color in context of bereavement, Halloween, or to convey elegance or
luxury
Test for Aesthetic Functionality

 TrafFix/Qualitex competitive necessity test: a functional feature is one the exclusive use of which would
put competitors at a significant non-reputation-related disadvantage
o Ninth Circuit: Au-Tomotive Gold, Inc. v. Volkswagen (9th Cir. 2006): not aesthetically
functional if demand for products is tied to the reputation of the plaintiff (e.g., consumers want
logos displayed on license plate frames or keychains due to trademark owner’s reputation)
 Morton-Norwich test for functionality used in Federal Circuit and by TTAB & trademark examiners: Is
there a competitive necessity to copy this feature, [design, or color] to compete effectively? Factors to
consider
o Does an expired utility patent disclose the utilitarian advantages of the design? [Does design
patent disclose aesthetic advantages?
o Does advertising/promotion tout the utilitarian advantages of the design? [Do ads tout the
design’s aesthetic advantages?]
o Are there no or few alternative designs that exist which perform the function equally well? [If
many designs, less likely functional]
o Does the design result from a comparatively simple or cheap method of manufacturing the
article?
Aesthetic Functionality Defense: Defendant’s Use of Mark is Functional
2. Priority
Zazu Designs v. L’Oreal (7th Cir. 1992)

 Priority and the use requirement under common law:
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o Common law rules for priority and use:
 “use’ meant sales to the public of a product with the mark attached”
 “Only active use allows consumers to associate a mark with particular goods and notifies
other firms that the mark is so associated.”
 “one must win the race to the marketplace to establish the exclusive right to a mark”
 Priority and the use requirement if federal registration:
o “Registration modifies this system slightly, allowing slight sales plus notice in the register to
substitute for substantial sales without notice.”
 Who used the mark Zazu first for hair products?
 Dissent: ZHD used mark Zazu first for hair salon services
Priority and the “Use” Requirement

 To establish trademark rights, the plaintiff/applicant for trademark registration must prove it has priority
 Priority: plaintiff/applicant is first to use the mark to identify or distinguish the goods or services - it is
the “senior user” of the mark
Ø If mark or trade dress requires proof of acquired distinctiveness through use for protection,
priority only on date secondary meaning established
 Plaintiff/applicant can establish priority over “junior users” by
(1) actual use: being the first to use the mark or
(2) constructive use: filing an intent-to-use application before use or filing by others and then using the
mark in commerce within the statutory time period (6 months; can extend up to 3 years)
Ø Note also can get a priority if apply to register based on foreign application or registration – see
Lanham Act § 44, 15 U.S.C. 1126
n Geographic Scope of Trademark Rights
o Common Law/Unregistered Marks: right in geographic area where mark used and other areas
where there is market penetration based on sales or advertising and/or natural zone of expansion
n May be able to stop use by bad faith junior user in different regions
o Federal Registration: provides exclusive nationwide right of priority as of application date
subject to preexisting common law rights in area
Use Requirement in the Lanham Act

Lanham Act § 45, 15 U.S.C. § 1127: Definition of “Trademark”
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 Act,
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.
Priority by Actual Use

 Lanham Act § 45, 15 U.S.C. § 1127: Definition of "Use in Commerce‘” “The term ‘use in commerce’
means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a
right in a mark. “
¨ Note: Underlined language added in 1989 to eliminate token uses
 A mark “shall be deemed to be in use in commerce” when
(1) For trademarks / goods: when the mark is
(A) “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
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(B) “the goods are sold or transported in commerce”
(2) For service marks / services: when the mark
(A) “is used or displayed in the sale or advertising of services “and
(B) either (i) “the services are rendered in commerce” or (ii) the services are “rendered in more
than one State or in the United States and a foreign country and the person rendering those
services is engaged in commerce in connection with the services.”
Priority by Constructive Use

Intent-to-Use Applications - Lanham Act § 1(b), 15 U.S.C. § 1051(b)
“A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a
trademark in commerce may apply to register his or her trademark under this Act on the principal register. . . .”
Verified Statement of Actual Use - Lanham Act § 1(d), 15 U.S.C. § 1051(d)

 Within 6 months of notice of allowance (possible extension up to 36 months) must file verified
statement of actual use of the mark in commerce
Ø If not submitted, application is abandoned
3. Trademark Office Procedures
a. Principal v. Supplemental Register
Advantages of a Federal Trademark Registration

 Listing in USPTO’s online databases provides notice of claim to the mark
 Used by USPTO to refuse registration of other confusingly similar marks
 Right to use federal registration symbol ® (can use TM without registration)
 U.S. registration can help TM owner obtain registration in foreign countries
Benefits of Registration on the Principal Register
 Legal presumption of validity, ownership, and the exclusive right to use the mark nationwide for the
goods or services listed in the registration
 Constructive notice of registrant’s claim of ownership of the mark
 Confers a nationwide right of priority and constructive use date upon filing
 Ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent
importation of infringing foreign goods
 Can sue under 15 U.S.C. 1114, which has certain evidentiary advantages
 Can get statutory damages against counterfeiters
 Mark can become incontestable after five years upon application to USPTO
Benefits of Registration on the Supplemental Register (secondary register)
 Can register marks not eligible for registration on Principal Register, but which are still capable of
distinguishing the applicant’s goods or services (e.g., descriptive terms or product designs without
secondary meaning)
Ø Registration confers no substantive trademark rights in the U.S.
b. Grounds for Refusing Registration
Lanham Act § 2, 15 U.S.C. § 1052 Grounds for Refusing Registration

No trademark by which the goods of the applicant may be distinguished from the goods of others [(underlined
language is codification of prohibition against protecting generic marks)] shall be refused registration on the
principal register on account of its nature unless it --
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a) Consists of or comprises immoral*, deceptive, or scandalous* matter; or matter which may
disparage* or falsely suggest a connection to persons, living or dead, institutions, beliefs, or national
symbols, or bring them into contempt, or disrepute; or [certain false geographical indications for wine
and spirits ]
b) Consists or comprises the flag or coat of arms or other insignia of the United States, or of any State or
municipality, or of any foreign nation, or any simulation thereof.
c) Consists of or comprises a name, portrait, or signature identifying a particular living individual,
except by his written consent, or [name, signature, or portrait of deceased President of the US during life
of widow without written consent].
d) [Prior use of a confusingly similar mark:] Consists of or comprises a mark which so resembles a mark
registered in the [PTO], 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. . . .
* The U.S. Supreme Court held these provisions are unconstitutional in Matal v. Tam and Iancu v. Brunetti, and
thus they are no longer valid grounds for refusal
Ø However, hate speech, swear words, and other offensive messages have been refused registration on
failure to function &/or lack of distinctiveness grounds
Circuit’s Du Pont factors – Factors relevant to a deteFederalrmination of likelihood of confusion under Section
2(d) at the USPTO [Note: you do not need to know this test for the exam]
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and
commercial impression;
2. the similarity or dissimilarity and nature of the goods or services as described in an application or registration
or in connection with which a prior mark is in use;
3. the similarity or dissimilarity of established, likely-to-continue trade channels;
4. the conditions under which and buyers to whom sales are made, i.e., ‘‘impulse’’ vs. careful, sophisticated
purchasing;
5. the fame of the prior mark (sales, advertising, length of use);
6. the number and nature of similar marks in use on similar goods;
7. the nature and extent of any actual confusion;
8. the length of time during and conditions under which there has been concurrent use without evidence of
actual confusion;
9. the variety of goods on which a mark is or is not used (house mark, ‘‘family’’ mark, product mark);
10. the market interface between applicant and the owner of a prior mark . . . ;
11. the extent to which applicant has a right to exclude others from use of its mark on its goods;
12. the extent of potential confusion, i.e., whether de minimis or substantial; and
13. any other established fact probative of the effect of use.
For more info see Section 1207 of the Trademark Manual of Examining Procedure

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 –
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 4
of this title,
3. when used on or in connection with the goods of the applicant is primarily geographically
deceptively misdescriptive of them
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4. is primarily merely a surname
5. comprises any matter that, as a whole, is functional
f) [Secondary Meaning Rule for Certain Marks:] Except as expressly excluded in paragraphs (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 five years before the date on which the claim of
distinctiveness is made….
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under
section 43(c) of this title, may be refused registration only pursuant to [an opposition] proceeding brought under
section 13…[and] may be cancelled pursuant to a proceeding brought under section 14 [principal register]…or
section 24 [supplemental register]….
Absolute Bars to Registration vs. Marks That Can Be Registered When They “Become Distinctive”
 Lanham Act § 2(f), 15 U.S.C. § 1052(f): “Except as expressly excluded in paragraphs (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…”
 Thus, cannot register the following even with proof of secondary meaning (absolute bars to
registration):
o (a) matter falsely suggests a connection to a person, etc.
o (b) flag, coat of arms, or other insignia of U.S., state, city, or foreign nation
o (c) name, portrait, signature of living individual or of deceased President while widow alive
without written consent
o (d) mark likely to cause confusion with another previously-used mark
o (e)(3) primarily geographically deceptively misdescriptive marks
o (e)(5) comprises matter that is functional
o But can register the following marks with proof of secondary meaning:
o (e)(1) merely descriptive or deceptively misdescriptive marks
o (e)(2) primarily geographically descriptive marks
o (e)(4) marks that are primarily merely a surname
Possible First Amendment Challenges After Tam?

Lanham Act Section 2 Provisions Banning Registration of Certain Matter
 Provisions regulating fraudulent or misleading expression are probably constitutional
o Section 2(a): deceptive matter
o Section 2(a): matter which falsely suggests a connection to people, institutions, beliefs, or
national symbols
o Section 2(a): mislabeled geographical indications for wines and spirits
o Section 2(d): mark is likely to cause confusion with another mark when used with these goods or
services
o Section 2(e)(1): deceptively misdescriptive matter
o Section 2(e)(3): primarily geographically deceptively misdescriptive matter
 Provisions that promote fair competition are probably constitutional
o Section 2(e)(1): merely descriptive matter
o Section 2(e)(2): primarily geographically descriptive matter
o Section 2(e)(4): matter that is primarily merely a surname
o Section 2(e)(5): matter that, as a whole, is functional
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 Provisions regulating expression for other reasons – consider if these laws satisfy constitutional scrutiny
o Section 2(b): flags, coat of arms, or other government insignia
o Section 2(c): name, portrait, or signature of a particular living individual or deceased U.S.
President during life of his or her widow (if that person has not provided written consent)
o Section 2(f): marks likely to cause dilution by blurring or tarnishment
Descriptive Marks - Lanham Act § 2(e)(1)

(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…
(f) Except as expressly excluded in paragraphs (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….
o Descriptiveness is a ground for refusal under Lanham Act §2(e)(1), but can register mark
that has “become distinctive”(aka acquired distinctiveness or secondary meaning) under
Lanham Act § 2(f)
o Examples of descriptive marks that have become distinctive: “The Sporting News” weekly
sports publication, “Washington Speakers Bureau” lecture-booking agency, “Shift Kit”
valve body kits, “Fish fri” coating mix
Geographic Marks - Lanham Act § 2(e)(2) & (3)

refused registration on the principal register on account of its nature unless it
(e) Consists of a mark which . . .
(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 4…
(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively
misdescriptive of them…”
o Primarily geographically descriptive marks (e.g. Alaska Salmon for salmon from Alaska)
can be refused registration under Lanham Act § 2(e)(2), but can register mark that has
“become distinctive” under § 2(f)
o Cannot register marks that are primarily geographically deceptively misdescriptive per §
2(e)(3) & § 2(f)
In re Nantucket (CCPA 1982)

 Application to register NANTUCKET for men’s shirts
 How classify mark on Abercrombie distinctiveness spectrum?
o Applicant: arbitrary mark – there is no association in the public mind of men’s shirts with
Nantucket
o Examiner: geographic description, but goods not from that place, so registration of mark is
refused on grounds that it is “primarily geographically deceptively misdescriptive”
 CCPA says must consider whether the public associates the goods with the place which the mark names
o If goods do not come from the place named, and the public makes no goods-place association,
the public is not deceived and the mark is not geographically deceptively misdescriptive (e.g.,
Dutch Boy for paint—not from Holland)
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Primarily Geographically Descriptive Terms - Lanham Act §2(e)(2)
Mark is primarily geographically descriptive, and thus need proof of secondary meaning for registration,
if 3 elements are satisfied:
1. Mark sought to be registered is the name of a geographic place known generally to the public (e.g.
Alaska)
2. The public would make a goods/place association, i.e., believe the goods for which the mark is sought to
be registered originate in that place (e.g., Alaska for salmon)
3. The source of the goods is the geographic region named in the mark
Ø If (1) is satisfied but not (2) (there is no goods/place association), the mark may be arbitrary (e.g.,
Alaska for bananas or Nantucket for shirts)
Ø If (1) and (2) are satisfied but not (3) (goods are not from that place) then:
Ø If geographic origin does not matter to consumers, mark is likely “deceptively misdescriptive”
under Lanham Act §2(e)(1) and can only be protected with proof of secondary meaning per
Lanham Act § 2(f)
Ø If geographic origin is material to consumers (it influences purchasing decisions – e.g., Alaskan
salmon), mark is “primarily geographically deceptively misdescriptive” under Lanham Act §2(e)
(3), and cannot be protected regardless of secondary meaning per Lanham Act § 2(f)
Primarily Geographically Deceptively Misdescriptive Terms - Lanham Act §2(e)(3)

 Primarily geographically deceptively misdescriptive terms are absolutely barred under § 2(e)(3) – they
cannot be registered even with evidence of secondary meaning
o Compare to primarily geographically descriptive terms (barred from registration under §2(e)(2)
unless acquire secondary meaning – then registrable under § 2(f))
 A mark is “primarily geographically deceptively misdescriptive” under Lanham Act § 2(e)(3) if:
o Mark sought to be registered is the name of a geographic place known generally to the public
o The public would make a goods/place association, i.e., believe the goods for which the mark is
sought to be registered originate in that place (e.g., Alaska for salmon)
o The source of the goods is NOT the geographic region named in the mark; and
o The consumers’ belief that the goods actually originate from that place is likely to affect their
purchasing decision, i.e., the goods/place association is material.
Lanham Act § 2, 15 U.S.C. § 1052 Grounds for Refusing Registration: Deceptive matter
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or
falsely suggest a connection to persons, living or dead, institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute; or [certain false geographical indications for wine and spirits]…
(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…
Deceptive Marks (§ 2(a)) vs. Deceptively Misdescriptive Marks (§ 2(e)(1))

 Deceptive terms are absolutely barred under § 2(a)
 Deceptively misdescriptive terms are barred from registration under §2(e)(1) unless they acquire
secondary meaning – then registrable under § 2(f)
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 How decide if a misdescriptive mark is deceptive, deceptively misdescriptive, or inherently distinctive?
These three factors are relevant:
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 misdescription actually describes the
goods?
3. If so, is the misdescription likely to affect the decision to purchase? (i.e., is the misdescription is
likely to be material to that decision?)
 If (1), (2), and (3) are satisfied (e.g., ORGANIK for cotton textiles that are not from organically grown
plants): mark is deceptive under § 2(a) and cannot be registered even if it acquired secondary meaning
per § 2(f)
 If (1) and (2) are satisfied, but not (3) (the misdescription is not likely to be material) (e.g., GLASS
WAX for glass polish that contains no wax): mark is deceptively misdescriptive and can be registered if
it has secondary meaning
 If (1) is satisfied, but not (2) and (3) (e.g., COTTON COLA for beverage): mark is inherently distinctive
and there is no need to prove secondary meaning
Name Marks - Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4)

refused registration on the principal register on account of its nature unless it –…
e) Consists of a mark which:… 4. is primarily merely a surname…
f) [Secondary Meaning Rule for Certain Marks:] Except as expressly excluded in paragraphs (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.
o Names (surnames/family names and first names) can be refused registration under
Lanham Act § 2(e)(4) (e.g., McDonalds for hamburgers), but can register mark that has
“become distinctive” under § 2(f)
o If a name is rare and the public would not think it is a name (e.g., Hackler for liquor), it
may be classified as an inherently distinctive mark
Surnames (and other names) - Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4)

 A mark that “is primarily merely a surname” can be refused registration under Lanham Act § 2(e)(4),
but can register surnames that have “become distinctive” under § 2(f)
 TTAB factors to consider when evaluating whether a mark is “primarily merely a surname”:
1. How rare is the surname?
2. Does anyone connected with the applicant have the surname?
3. Does the term have any recognized meaning other than as a surname?
4. Does the term have the “look and feel” of a surname—does it sound like a surname or something else?
5. When the mark is stylized, does the stylization of lettering distinctive enough to create a separate
commercial impression?
Ø If not a surname under this test, mark may be inherently distinctive and protectable without proof
of secondary meaning
Mark Falsely Suggests a Connection to a Person (Section 2(a)) and Name, Portrait, or Signature of Living
Individual or Deceased President (Section 2(c))
refused registration on the principal register on account of its nature unless it --
(a) Consists of or comprises … matter which may ... falsely suggest a connection to persons, living or dead… ;
…
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(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 life of
his [or her] widow, if any, except by the written consent of the widow.
 Applies to full names, surnames, shortened names, pseudonyms, stage names, titles or nicknames
 Section 2(c) is more helpful in situations of niche notoriety
 Cannot register such marks – these are absolute grounds for refusal.
Ø Compare to marks that are primarily merely a surname, Lanham Act 2(e)(4), 15 U.S.C. §
1052(3)(4), which can be registered with proof of secondary meaning
Does a mark (A) falsely suggests a connection to a person or (B) consist of a living person’s name, portrait, or
signature?
 See In re Nieves & Nieves LLC (TTAB 2015) (application to register ROYAL KATE for clothing,
cosmetics, jewelry and other luxury items rejected under both grounds)
(A) Test for determining whether the mark falsely suggested a connection with a person under Section 2(a):
1. the applicant’s mark is the same as or a close approximation of the person’s previously used
name or identity;
2. the mark would be recognized as such by purchasers, in that the mark points uniquely and
unmistakably to that person;
3. the person is not connected with the goods or services that are sold or will be sold by applicant
under its mark; and
4. the person’s name or identity is of sufficient fame or reputation that when the mark is used on
applicant’s goods or services, a connection with the person would be presumed.
(B) Test for determining whether the mark identifies a particular living individual whose written consent
is required to register the mark under Section 2(c):
o Written consent is required if the individual bearing the name in the mark will be associated with
the mark as used on the goods or services, either because
1. the person is so well known that the public would reasonably assume a connection
between the person and the goods or services, or
2. the individual is publicly connected with the business in which the mark is used
3. If lesser known, may need evidence of connection with goods/services
Failure to Function Doctrine (not in CB)

 Failure to function doctrine is similar to distinctiveness and aesthetic functionality analysis, but is a
separate doctrine that can bar registration of certain subject matter that is not used or perceived as a
mark
Failure to Function Doctrine: the subject matter must be used and perceived as a trademark, and not fail to
function as a mark
Non-traditional trademarks: Applications to register flavors and scents are also rejected on failure to function
grounds (and other grounds such as functionality and lack of distinctiveness)
 In re N.V. Organon, 79 U.S.P.Q.2d (BNA) 1639 (T.T.A.B. 2006): refusing to register orange flavor for
“pharmaceuticals for human use” (antidepressants in quick-dissolving tablets and pills)
 In re Pohl-Boskamp GmbH & Co., 106 U.S.P.Q.2d (BNA) 1042 (T.T.A.B. 2013): refusing to register
peppermint flavor and scent for “medicines” (pharmaceutical formulations of nitroglycerin)
Non-traditional trademarks: Applications to register three-dimensional designs may also be rejected on failure
to function grounds (and other grounds such as functionality and lack of distinctiveness)
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c. Opposition
d. Cancellation
How May a Trademark Application or Registration Be Challenged under the Lanham Act Section 2 grounds?
 Examination at U.S. Trademark Office: examiner may object to application on any ground under
Lanham Act section 2 except dilution
 Opposition Proceedings: third party with standing can file an opposition to the application on any
ground – see Lanham Act § 13
 Cancellation Proceedings: third party with standing can petition to cancel the registration – see Lanham
Act § 14
o Within five years after registration can challenge registration on any ground
o After five years, the grounds for cancellation are limited per Lanham Act §§ 14-15: mark is
generic, the mark is functional, mark was abandoned, fraud in obtaining the registration, or a
violation of 2(a) (deceptive matter, falsely suggest a connection, etc.), 2(b) (flag and other
insignia of U.S., state, city, or foreign nation), or 2(c) (name, portrait, or signature of living
individual without written consent or deceased President with consent of widow)
 Cannot challenge on lack of distinctiveness or failure to function grounds, or argue mark
is likely to cause confusion with another mark
o Federal courts can also refuse to enforce a registered mark and order the USPTO to cancel a
registered mark
e. Concurrent Registration
Concurrent Registration - Lanham Act § 2(d), 15 U.S.C. § 1052(d)

“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—
(d) Consists of or comprises a mark which so resembles a mark … as to be likely. . to cause confusion…:
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....”
Ø Concurrent use registration is only allowed if registration is not likely to cause confusion
Concurrent Use of the Same or Similar Marks is Permitted in Certain Circumstances
4. Incontestability
Park ‘N Fly v. Dollar Park and Fly (U.S. 1985)

 Can apply to establish incontestable status of registered mark after five years – requirements set forth in
Lanham Act § 15, 15 U.S.C. § 1065
 Benefit of incontestability under Lanham Act § 33(b), 15 U.S.C. § 1115(b)?
o “To the extent that the right to use the registered mark has become incontestable. . . the
registration shall be conclusive evidence of the validity of the registered mark and of the
registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the registered mark in commerce. . . .” subject to conditions of Lanham Act
§ 15 and defenses in Lanham Act § 33(b)
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 If a descriptive mark is incontestable, can the accused infringer argue the mark is invalid because it has
no secondary meaning?
o No; such a mark is presumed valid, but plaintiff must still establish a trademark violation and the
defendant can still establish it has an affirmative defense (e.g., descriptive fair use, antitrust
violation, etc.)
 Possible grounds for challenge of an incontestable mark?
o See grounds for cancellation of a mark listed in Lanham Act § 14, 15 U.S.C. § 1064: mark is
generic, mark is functional, fraud in obtaining the registration, or a violation of 2(a), 2(b), or 2(c)
Trademark Liability Analysis
Lanham Act § 32(1), 15 U.S.C.§ 1114(1) - Infringement of a Registered Mark

“Any person who shall, without the consent of the registrant –
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in
connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit,
copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended
to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of
goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or
to deceive shall be liable in a civil action by the registrant for the remedies hereinafter provided. . . .”
Elements of a Federal Trademark Infringement Claim

Plaintiff must generally prove all of these elements for infringement under Lanham Act §32(1)(a) (registered
marks) or §43(a)(1)(A) (registered or unregistered marks)
1. Plaintiff owns a valid mark entitled to protection under the Lanham Act
2. Defendant used the Plaintiff’s mark “in commerce”
3. Defendant used the mark in connection with the sale, offering for sale, distribution, or advertising of
goods or services
4. Without the plaintiff’s consent
5. Defendant’s use of the mark is likely to cause confusion
§ Some courts have additional threshold requirements relating to “actionable use” of the mark by the
accused infringer
§ Commercial use (“use in connection with” goods/services): E.g., Ninth Circuit in Bosley. But see
Second Circuit United We Stand.
§ Trademark use: some courts require use of mark “as a mark”, “designation of source”, or brand
name for third party’s goods/services – E.g., Sixth Circuit in Interactive as discussed in Sazerac
Brands
Lanham Act § 43(a)(1), 15 U.S.C.§ 1125(a)(1) - False Designations of Origin and False Descriptions Forbidden
 Unfair competition provision that includes but is not limited to infringement of unregistered trademarks
“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce
any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading misrepresentation of fact, which –
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the origin, sponsorship, or approval of his or her
goods or services, or commercial activities by another person… shall be liable in a civil action by any
person who believes that he or she is or is likely to be damaged by such act.”
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Elements of a Federal Unfair Competition Claim
Plaintiff must generally prove all of these elements for an unfair competition claim under Lanham Act §43(a)(1)
(A)
1. Defendant used any word, term, name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false or misleading representation of fact
2. Defendant used it “in commerce”
3. Defendant used it on or in connection with goods, services, or any container for goods
4. Defendant’s use is likely to cause confusion as to its affiliation, connection, or association with others,
or as to the origin, sponsorship, or approval of Defendant’s goods, services, or commercial activities by
Plaintiff
5. Plaintiff is or is likely to be damaged by such act
Trademark Infringement Element (1) Plaintiff owns a valid trademark
Unfair Competition Element (1) Defendant used any word, term, name, symbol, or device, or combination
thereof, or any false designation of origin, false or misleading description of fact, or false or misleading
representation of fact
Is [the proposed trademark or trade dress = X ] a valid trademark or trade dress?

 Is this protectable subject matter under trademark law?
o Discuss if [X] is a word, name, symbol, or device (or combination of these) used to identify and
distinguish certain goods or services. Describe trade dress in detail. List goods/services.
 Was [X] registered with the USPTO for these goods/services? Is right incontestable?
o Discuss date of registration. Benefits of registration include presumption of validity and nation-
wide scope of rights subject to prior use of mark by others and other rules.
o If right is incontestable, validity can only be challenged on limited grounds (e.g., generic,
functional, abandoned) and not on lack of distinctiveness or failure to function grounds.
 Was [X] used in commerce in connection with these goods/services?
o Apply “use in commerce” rule in Lanham Act for the goods or services.
o Discuss date of first use and who has priority in the mark due to use or registration.
o If mark is not registered, discuss the geographic scope of the trademark rights.
o Discuss if mark was abandoned due to nonuse, naked licensing, or for other reasons.
 Is [X] distinctive for these goods/services?
o Apply Abercrombie test, generic term test, Seabrook test (for logos, product packaging, décor),
rule that colors and product designs are not inherently distinctive, or other tests.
o Discuss if [X] has secondary meaning for these goods/services (if relevant).
 Is [X] not functional for these goods/services?
o Apply tests in Traffix and Disc Golf (Ninth Circuit litigation) or Morton Norwich (at USPTO)
 Is there any other reason [X] should not be registered or protected under TM law?
o Discuss any relevant bars to registration in the Lanham Act (e.g., deceptive, falsely suggest
connection, flag, name or image of person w/o consent, likelihood of confusion or dilution).
o Consider if informational (expressive) or ornamental matter that fails to function as a mark.
1. Threshold Issues
(2) Did the Defendant use the Plaintiff’s mark “in commerce”?
 Use “in commerce” is required for protection under federal trademark law (Lanham Act) – see Trade-
Mark Cases
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o Rule applies regardless of whether mark is registered or unregistered
o But note there is an exception to the use in commerce requirement under Lanham Act § 44(e), 15
U.S.C. § 1126(e) when foreign applicants apply to register marks based on foreign registrations
 Lanham Act § 45, 15 U.S.C. § 1127: “The word “commerce” means all commerce which may lawfully
be regulated by Congress.”
 Therefore U.S. Supreme Court’s “commerce clause” jurisprudence is relevant in determining the scope
of what Congress can regulate
o Generally easy to satisfy interstate commerce requirement
 Thus most trademark cases will involve use “in commerce”
 Examples: use on an Internet website, proximity of business to highway, out-of state
customers, etc.
 What is not use “in commerce” in the United States?
o Foreign use of a mark that has no effect in the United States
(3) Did Defendant use the mark in connection with the sale, offering for sale, distribution, or advertising of
goods or services?
“Make America Great Again” is a registered mark for political action committee services, fundraising in the
field of politics, bumper stickers, stickers, advertising signs, printed publications, posters, pens, clothing, hats,
campaign buttons, political campaign services, on-line journals, online social networking services, and other
goods and services
Would such third party uses of the phrase be uses of the mark in connection with goods or services?
 Sale of T-shirts, hats, or signs displaying this political slogan?
 Use of the mark in connection with providing fundraising in the field of politics or political campaign
services?
 Use of the mark in the heading of a website that provides positive or negative information about
President Trump?
 Use of the mark on signs displayed at political rallies by supporters or opponents of President Trump?
 Use of the mark by a church group that provides free food and health care services to poor people?
2. Trademark Infringement
Different Types of Actionable Use of a Trademark

 Commercial use: Ninth Circuit in Bosley and other circuits say “in connection with the sale, offering for
sale, distribution, or advertising of any goods” language means a commercial use of the mark is required
o Includes use of the mark in commercial speech – defined by the U.S. Supreme Court as speech
which “does no more than propose a commercial transaction” (e.g., use of mark as brand name
of commercial goods; comparative advertising)
o May also include expression sold for profit (e.g., movies, songs, books) or supported by
advertising (e.g., news reporting or blogs) in some jurisdictions
o Not: Cybergripe website that only criticizes markholder (e.g., Bosley)
 Trademark use: some courts require use of the mark “as a mark”, “designation of source”, or brand
name for third party’s goods or services
o Use as mark for product (e.g., Chewy Vuitton dog toys); some domain names
o Not: Use in content of expression to refer to the markholder (e.g., a comparative advertisement)
or to describe the product (e.g., we are an American airline)
v The categories overlap but they are different--see my Brandjacking article
Lettuce Turnip the Beet v. Redbubble (9th Cir. 2021)
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 Argument similar to a trademark use requirement for infringement: Functionality is a defense to an
infringement claim, and thus the district court did not err in holding there was no likelihood of confusion
 Owner of the incontestable mark LETTUCE TURNIP THE BEET for apparel cannot prevent third
parties from displaying this phrase in an ornamental manner on T-shirts and other expressive
merchandise because the marks are functional when used in this manner
 Consumers do not buy products that display this phrase because they identify Plaintiff as the source –
the words are aesthetic features
AMF Inc. v. Sleekcraft Boats (9th Cir. 1979)
Likelihood of Confusion (LOC) Factors

1. Strength of Plaintiff’s mark: LOC more likely if plaintiff’s mark is strong – mark has (a) conceptual
strength (it is inherently distinctive) and/or (b) market strength (secondary meaning and/or is famous)
2. Proximity of the goods: LOC more likely if goods are competing or related; if goods are unrelated,
under current law LOC about affiliation, connection, sponsorship, or approval is still possible
3. Similarity of the marks: LOC more likely if marks identical or similar; consider similarity of sight,
sound, and meaning of mark as used in the marketplace; less similarity required if goods/services
identical
4. Evidence of actual confusion: LOC more likely if actual confusion by reasonable purchasers per
documentary evidence (e.g., misdirected emails), testimony by employees, consumer surveys
5. Marketing channels used: LOC more likely if parties sell and/or advertise their goods or services in the
same channels of trade
6. Type of goods and degree of purchaser care: LOC more likely if good are cheaper and/or purchasers
are less careful when shopping
7. Defendant’s intent in selecting the mark: LOC more likely if bad faith intent to confuse; can reduce
LOC with house mark, disclaimer
8. Likelihood of expansion of product lines: If good already competing, factor is irrelevant; if goods not
competing, LOC more likely if one party is likely to start selling the goods of the other party
Likelihood of Confusion Factors 1. Strength of Plaintiff’s Mark

v How strong is the Plaintiff’s trademark conceptually and commercially?
 Stronger trademarks are entitled to greater protection from infringement
 More distinctive the mark, greater likelihood use of it will cause confusion
 Conceptual strength or inherent strength of Plaintiff’s mark: How distinctive is the mark under the
Abercrombie factors?
o Fanciful or arbitrary for goods/services – inherently distinctive and strong, so unauthorized use
of the mark is more likely to confuse
o Suggestive – inherently distinctive but less strong
o Marks that require secondary meaning (descriptive terms, colors and other product features, non-
inherently distinctive logos) – weak
 Commercial strength (aka market strength): Did the mark acquire distinctiveness or secondary meaning
in the market, so that there a high degree of consumer recognition? If so, confusion is more likely
o Commercial success (high sales), extent of advertising, length of use, exclusivity of use, survey
shows high percentage of public recognition
o Federal Circuit says use of a “famous” mark is more likely to confuse, but some courts and
scholars disagree
Likelihood of Confusion Factors 2. Proximity (relatedness or similarity) of the Parties’ Goods or Services
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v What goods or services are being sold and advertised by the parties, and are they identical, related, or
unrelated?
 If goods/services are identical (directly competing) or related, consumers are more likely to assume
defendant’s goods/services are associated with plaintiff and more likely to be confused
o Even if goods/services are not competing, courts may still find likelihood of confusion regarding
source, affiliation, sponsorship, or approval of the goods/services (e.g., use mark on T-shirts)
o Identity of parties’ goods/services (competition) is not required, but if identical then less
similarity of marks is required (AMF #3)
 TRIPS Art. 16 requires nations to presume likelihood of confusion if marks and
goods/services are identical, and U.S. has this rule so argue this presumption is required
on behalf of the plaintiff
 But consumers will not always be confused where both are identical, e.g., comparative
advertising, expressive merchandise
 P usually wants broader description (alcoholic beverages, beer) because it can argue goods are identical;
D wants it narrower (beer vs. craft beer)
Likelihood of Confusion Factors 3. Similarity of the Parties’ Marks

v Are the parties’ marks similar in appearance, sound, or meaning?
o Appearance: letters, font, colors, designs, use of house mark or logo
o Sound: can submit evidence about pronunciation
SLICKCRAFT vs SLEEKCRAFT; BECKS’ BEER vs EX BIER for beer
o Meaning: consider dictionary definitions; translate foreign words
CYCLONE and TORNADO for fence wire
 Similarities weigh more heavily than differences, and confusion is more likely if parties’ marks are
identical or similar; most important factor
 Focus on how marks appear in the marketplace and whether consumers would think the marks are
identical or similar in the “real world”
o If view at different times (instead of side-by-side), confusion may be more likely since
consumers may not remember differences
 Anti-dissection rule: consider both marks in their entirety and focus on overall commercial impression
of the marks
o But dissection is ok if consumers would “dissect” the mark (e.g., focus on design not word; only
use first word of multi-word mark)
Likelihood of Confusion Factors 4. Actual Confusion

v Is there evidence of actual confusion by a significant portion of the consuming public?
o Survey evidence - important issues to consider:
 Selection of proper universe of prospective purchasers (screening)
 Simulation of actual marketplace conditions where encounter mark
 Percentage of consumers confused (25-50%)? Type of confusion? 25-30 % ok per
McCarthy, but some disagree; if low, discuss number of customers?
o Marketplace confusion evidence (e.g., social media or blog posts, emails asking whether parties
are affiliated, misdirected emails, confusion log)
o Sworn declarations, deposition, or trial testimony by customers
 Actual confusion is highly probative and persuasive evidence of likelihood of confusion if present, but it
is not required nor is it dispositive
o Required by some courts for damages (e.g., evidence of actual injury in the form of lost sales or
other injuries)
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o Consider confusion about source, affiliation, sponsorship, or approval
 Some courts say if past evidence of no actual confusion for many years, this supports a finding of no
future likelihood of confusion
 Possible adverse inference if well-funded plaintiff has no survey evidence
Likelihood of Confusion Factors 5. Marketing Channels Used

v Where do the parties sell, distribute, advertise, promote, or otherwise market their goods or services?
o Sales: retail stores (e.g., mall vs grocery store vs liquor store), websites (e.g., Amazon.com vs
company’s website), restaurants or bars, etc.
o Advertising: ads on TV, radio, or search engine websites; ads in newspapers, magazines, blogs,
or social media; social media posts, etc.
o Other marketing channels or places where consumers see the marks: sporting events, concerts,
etc.
o Are products sold or advertised side-by-side or in the same location in the store or advertisement,
or in different places on the shelf or ad?
 If the parties use identical or similar marketing channels, consumers are more likely to be confused by
this unauthorized use of the mark
 If parties’ customers overlap, confusion is also more likely
 If parties sell or advertise their products in different channels of trade, confusion is less likely
o E.g., Domino sugar vs. Domino’s pizza
Likelihood of Confusion Factors 6. Type of goods and degree of care consumers are likely to exercise in
purchasing them
v Are the parties’ goods or services expensive, are these sophisticated shoppers, or is there another reason
a reasonably prudent consumer may take more care when purchasing these goods or services?
 If consumers are less likely to exercise care in purchasing the goods or services and determine who is
actually selling this product, confusion is more likely
 Courts use the price of goods or services and sophistication of buyers as a proxy for the level of care
taken by a reasonably prudent consumer
o If cheap goods/services, products displayed side-by-side usually grabbed quickly, impulse
purchases common, or low buyer sophistication  may presume lower level of care and higher
likelihood of confusion
o If expensive goods/services, professional buyer or expert, or other reason to be more careful
when purchasing this product  may presume higher level of care and lower likelihood of
confusion
Likelihood of Confusion Factors 7. Intent of the Defendant

v Did the defendant know about the plaintiff’s mark and/or have a bad faith intent to confuse consumers
or free ride off the mark?
 If bad faith intent to confuse consumers, courts are more likely to find a likelihood of confusion, but
such evidence is not required
o Some courts say this factor is of minimal importance
o Per Prof. Beebe’s empirical work, the intent factor “is of decisive importance” when there is bad
intent - it “creates a nearly unrebuttable presumption of a likelihood of confusion”
 If have knowledge of plaintiff’s mark and marks are identical or similar, this triggers a presumption of
bad faith intent in some courts
o Other courts say knowledge of plaintiff’s mark is not sufficient evidence of bad faith
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o Use of descriptive words or product feature (e.g., color, product design) may not be in bad faith
because words provide information or features desired by consumers
 Good faith intent is not a defense, but may still be relevant
 Use of defendant’s house mark or logo, different colors
Likelihood of Confusion Factors 8. Likelihood of Expansion of Product Lines

v If the goods or services are not identical, is one of the parties likely to expand into the sale of goods or
services that directly compete with the other party?
 If the parties are likely to sell identical goods or services in the future (i.e., there is a strong possibility
they will become direct competitors), this factor weighs in favor of a likelihood of confusion
 If one party has no subjective intent to expand but consumers would perceive a likelihood of expansion,
this factor may also favor a finding of likelihood of confusion
o E.g., Scarves by Vera: Plaintiff used VERA mark for scarves, apparel, and linen and Defendant
used VERA for men’s cologne; plaintiff had no intent to expand, but consumers might think it
would sell cologne since this is common in the fashion industry
 If the parties already sell identical products (they are direct competitors), this factor is neutral or not
relevant
Ø After you review all eight factors, consider if any other factors are relevant, and then decide
whether most or all of the factors support a finding of likelihood of confusion (or not)
AMF: Likelihood of Confusion Factors

1. Strength of Plaintiff’s mark: (a) conceptual strength: Is mark weak (e.g., descriptive, color, product
design)  strong (suggestive)  very strong (arbitrary, fanciful)? (b) market strength: Does it have
secondary meaning &/or is it famous?
2. Proximity of the goods: unrelated  related  competing?
3. Similarity of the marks: dissimilar  similar  identical?
4. Evidence of actual confusion: no confusion  actual confusion?
5. Marketing channels used: different stores and advertising channels  identical stores and advertising
channels?
6. Type of goods and degree of purchaser care: expensive and more purchaser care  cheap and less
purchaser care?
7. Defendant’s intent in selecting the mark: good faith  bad faith (e.g., intentional copying of mark to
confuse consumers)?
8. Likelihood of expansion of product lines: unlikely expansion  expansion likely? Not relevant if
goods compete
Types of Confusion
 Confusion as to Source
 Confusion as to Sponsorship
 Reverse Confusion
Lanham Act § 43(a)(1), 15 U.S.C.§ 1125(a)(1) - False Designations of Origin and False Descriptions Forbidden
 Unfair competition provision that includes but is not limited to infringement of unregistered trademarks
misleading description of fact, or false or misleading misrepresentation of fact, which –
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the origin, sponsorship, or approval of his or her
30
goods or services, or commercial activities by another person… shall be liable in a civil action by any
person who believes that he or she is or is likely to be damaged by such act.”
Confusion about Sponsorship

 Trademarks and the Franchise System
o Franchisee is source of the goods
 Trademark Licensing - Merchandising
o Universities and sports teams license marks to be used on clothing, etc.
o Entertainment industries also license use of the marks (and copyrighted works) for use on
merchandise
o Licensee is the actual source of the goods
o Consumers pay more for goods with the trademark – the mark is the product
Ø Quality control is required for both, or mark may be deemed abandoned
Board of Supervisors for Louisiana State University v. Smack Apparel (5th Cir. 2008)
 Plaintiffs: universities and official licensing agent for them
 Defendant sold T-shirts with colors of universities and also words or designs referring to rivals of teams
of universities; Smack logo was also displayed on T-shirts
 What are marks here? Names or logos? Colors used by universities? Colors + other identifying indicia?
Is there secondary meaning?
 Is there a likelihood of confusion caused by use of the marks – do consumers believe these goods are
sponsored or endorsed by the trademark owner? Likelihood of confusion factors in Fifth Circuit:
(1) Strength of marks? (2) Similarity of marks?
(3) Similarity of goods? (4) Identity of retail outlets & purchasers?
(5) Identity of advertising media? (6) Intent to confuse? Free ride?
(7) Actual confusion? (8) Degree of purchaser care?
 Materiality (fact that confusion affects purchasing decisions) is not required for infringement – a
mistaken belief is sufficient
Types of Confusion
 Confusion as to Source
 Confusion as to Sponsorship
 Reverse Confusion
Reverse Confusion
 Reverse confusion arises when a larger, more powerful entity (the junior user) adopts the trademark of a
smaller, less powerful trademark user (the senior user) and thereby causes confusion as to the origin of
the senior trademark user's goods or services.
o Consumers may think senior user is infringing junior user’s mark
 Harm of reverse confusion?
o Advertising and promotion by junior user can harm senior user’s trademark value and its ability
to expand into new markets
 Examples of reverse confusion:
o Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir.1992) (finding Quaker
Oats Co.'s use of "Thirst Aid" slogan for Gatorade infringed on registered "Thirst-Aid"
trademark owned small Vermont beverage company)
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o Dreamwerks Production, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) (allowing trial on
argument mark DREAMWERKS used since 1984 in connection with science fiction conventions
infringed by DreamWorks SKG Hollywood studio)
Timing of Confusion
Initial Interest Confusion
Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F. Supp. 707 (S.D.N.Y. 1973),
aff’d, 523 F.2d 1331 (2d Cir. 1975)
People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001)
Multi Time Machine Inc. v. Amazon.com Inc. (9th Cir. 2015)

 Amazon.com: does not carry MTM watches or state this fact, but it displays similar watches sold by
competitors below the search phrase MTM special ops
 Initial interest confusion – customer confusion that creates initial interest in a competitor’s product
[note: some courts don’t limit this doctrine to competitors]
 Court says Sleekcraft factors not exhaustive and other variables can be relevant in cases involving
internet search terms and keyword advertising
o Additional Sleekcraft factor here: is the labeling and appearance of ads and products on the
screen of the results page clear? If clear labeling  no IIC
 Who is relevant reasonable consumer and what they would reasonably believe based on what they saw?
These LOC factors are most important in this context:
o Nature of the goods: expensive items result in more care by purchasers (so lower LOC), while
cheap goods subject to impulse purchases (higher LOC)
o Type of consumer: lower LOC if consumers experienced with shopping online; unreasonable,
imprudent, and inexperienced web-shoppers N/R
o Labeling and appearance of products: clear labeling can eliminate LOC
 Remaining Sleekcraft factors: Actual confusion? Defendant’s intent?
 Affirms summary judgment in favor of Amazon – no likelihood of confusion
 Bea Dissent: Unlike other search companies, Amazon does not clarify that it does not sell MTM special
ops watches; website may cause confusion
o Jury - not judges - should decide issue of likelihood of confusion
o Ninth Circuit recognizes initial interest confusion doctrine and statute says “confusion” and is
not limited to point-of-sale confusion
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP (6th Cir. 2005)
 Holding: Initial interest confusion does not apply to this trade dress
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Post-Sale Confusion
Mastercrafters Clock & Radio Co. v. Vacheron & Constatin-Le Coultre Watches, Inc., 221 F.2d 464 (2d Cir.
1955)
 Purchaser buys cheaper clock to acquire prestige
 Post-sale confusion: Visitors to purchaser’s house are confused because they assume this is an Atmos
clock sold by plaintiff
Ferrari S.p.A. Esercizio v. Roberts, 944 F.2d 1235 (6th Cir. 1992)
3. Dilution
Federal Trademark Dilution - Lanham Act § 43(c)(1), 15 U.S.C. § 1125(c)(1)

(c) Dilution by blurring; dilution by tarnishment
(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.
Elements of a Federal Dilution Claim

To prevail on a claim for dilution under Lanham Act § 43(c), 15 § USC 1125(c), in the Ninth Circuit the
plaintiff must show that:
(1) the plaintiff owns a mark that is famous and distinctive;
Ø 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; discuss the factors in Lanham Act §
43(c)(2)(A)
(2) the defendant is making use of a mark or trade name in commerce that allegedly dilutes the famous mark;
(3) the defendant’s use of that mark or trade name began after the plaintiff’s mark became famous; and
(4) the defendant’s use of the mark or trade name is likely to cause dilution by blurring or dilution by
tarnishment
Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008), cited in Visa Int’l Serv. Ass’n v. JSL Corp.,
610 F.3d 1088, 1090 (9th Cir. 2010)
 Dilution by blurring: discuss whether use is likely to impair distinctiveness of the famous mark under six
factors in Lanham Act § 43(c)(2)(B)
 Dilution by tarnishment: discuss whether this association is likely to harm the reputation of the famous
mark under Lanham Act § 43(c)(2)(C)
 Note California dilution law (Cal. Bus. & Prof. Code 14330) has similar elements
Is the Mark Famous? Definition of Famous - Lanham Act § 43(c)(2), 15 U.S.C. § 1125(c)(2)
“(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:
33
(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.”
Ø Rejects niche fame; factors similar to secondary meaning factors
Ø McCarthy: 75% of general consuming U.S. public knows of mark
Ø Famous: Just Do It, Chanel, Audi, Victoria’s Secret
Ø Not famous: UT longhorn logo, red dripping wax seal of Maker’s Mark whiskey, Coach
Dilution by Blurring - Lanham Act § 43(c)(2)(B), 15 U.S.C. § 1125(c)(2)(B)

(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 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 [fame] 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.
Ø Is this association likely to impair the distinctiveness of the famous mark – if so, there is a likelihood of
dilution by blurring
Examples of Dilution by Blurring

 Louis Vuitton Malletier, S.A. v. Hyundai Motor America, 2012 WL 1022247 (S.D.N.Y., March 22,
2012) (holding Hyundai diluted Louis Vuitton mark when it used similar logo on basketball in 2010
SuperBowl “Luxury” Ad) Watch the ad: http://www.youtube.com/watch?v=O7I4v7NYHrY
 Visa Int’l Service Corp. v. JSL Corp. (9th Cir. 2010) (holding that eVisa mark for “multilingual
education and information business that exists exclusively on the Internet” at www.evisa.com diluted the
Visa mark for credit cards)
 Nike, Inc. v. Nikepal Int’l (E.D. Cal. 2007) (NIKEPAL for various laboratory syringes, pumps, etc.
diluted Nike mark for sporting goods and apparel)
Dilution by Tarnishment - Lanham Act § 43(c)(2)(C), 15 U.S.C. § 1125(c)(2)(C)

(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.
Examples usually involve sex, drugs, or other unsavory goods:
 Victoria Secret Catalogue v. Moseley, 605 F.3d 382 (6th Cir. 2010) (“Victor’s Secret” used as a mark for
a retail shop selling sex toys and other sex related products)
 Pepsico, Inc. v. #1 Wholesale, LLC, 2007 WL 2142294 (N.D.Ga.), 84 U.S.P.Q.2d 1040 (N.D. Ga. 2007)
(“Sahni uses the marks on goods commonly associated with the concealment of illicit narcotics”)
 Coca-Cola Co. v. Gemini Rising, 346 F. Supp. 1183 (E.D.N.Y. 1972) (state law)
“(2) Definitions:…(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.”
To prove dilution by tarnishment, plaintiff must establish:
(a) an association arising from the similarity of the parties’ marks and
(b) this association harms the reputation of the famous mark
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Examples from McCarthy on Trademarks § 24:89 of uses of famous marks where courts found dilution by
tarnishment:
o X-rated movies
o Adult cartoons
o Adult content websites
o Adult entertainment
o Topless bar
o Crude humor
o Drug culture music
o Illegal drugs
o Marijuana-like tobacco product
The Exclusions: What is Not Dilution? - Lanham Act § 43(c)(3), 15 U.S.C. § 1125(c)(3)
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 [e.g., comparative
advertising]; 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
Louis Vuitton v. Haute Diggity Dog (4th Cir. 2007)

 Louis Vuitton says CHEWY VUITON dog toys violate trademark law
 Is parody an automatic defense in a trademark dispute?
o No but if this is a successful parody, it can influence the analysis of the factors establishing
infringement and dilution liability
o If non-trademark use of mark (use “other than as a designation of source”) in parody to identify
the markholder, fair use exception in Lanham Act § 43(c)(3), 15 U.S.C. § 1125(c)(3) may apply
 Did Defendant dilute the Plaintiff’s mark under the TDRA?
1. Plaintiff owns a famous mark that is distinctive
2. Defendant commenced using a mark or trade name in commerce that allegedly is diluting the famous
mark [and use is after mark is famous]
3. A similarity between the defendant’s mark and the famous mark gives rise to an association between the
marks
4. The association is likely to impair the distinctiveness of the famous mark [dilution by blurring] or likely
to harm the reputation of the famous mark [dilution by tarnishment]
Dilution under Lanham Act § 2(f)

“A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c),
may be refused registration only pursuant to a proceeding brought under section 13 [opposition]. . .[or] may be
canceled under . . .section 14 [cancellation]. . . “
o Can make Section 2(f) challenge to registration of mark due to fact it is likely to dilute another
mark during opposition and cancellation proceedings
35
o But PTO Examiner cannot reject application to register mark during initial ex parte examination
on the basis that the mark is likely to dilute another mark
4. Cybersquatting
Methods to Attack Cybersquatting or Unauthorized Registration/Use of Your Mark in a Domain Name

 Federal Trademark Law
o Infringement (15 U.S.C. §§ 1114(1), 1125(a)(1))
o Dilution (15 U.S.C. § 1125(c))
o Anticybersquatting Consumer Protection Act (15 U.S.C. § 1125(d))
 State Trademark Law
 Private Dispute Resolution Procedures
o Uniform Dispute Resolution Policy (UDRP)
o Uniform Rapid Suspension System (URS)
Anti-cybersquatting Consumer Protection Act - Lanham Act § 43(d)(1)(A), 15 U.S.C. § 1125(d)(1)(A)

 “A person shall be liable in a civil action by the owner of a mark, including a personal name which is
protected as a mark . . ., if, without regard to the goods or services of the parties, that person --
o (i) has a bad faith intent to profit from that mark …; and
o (ii) registers, traffics in, or uses a domain name that -
 (I) in the case of a mark that is distinctive at the time of registration of the domain name,
is identical or confusingly similar to that mark;
 (II) in the case of a famous mark that is famous at the time of registration of the domain
name, is identical or confusingly similar to or dilutive of that mark; or
 (III) is a trademark, word, or name protected [by a special statute, e.g., Red Cross,
Olympics]”
Elements of an ACPA Claim (15 U.S.C. §1125(d)(1)(A))

Plaintiff is required to prove:
1. Plaintiff’s mark is distinctive or famous at the time defendant registered the domain name
2. Defendant’s domain name is identical or confusingly similar to, or dilutive of, Plaintiff’s mark
3. Defendant registered, trafficked in, or used the domain name
4. Defendant did these acts with a bad faith intent to profit from the mark
 Consider the nine factors set forth in Lanham Act § 43(d)(1)(B), 15 U.S.C. § 1125(d)(1)
(B)
 If the safe harbor applies, the court should not find bad faith intent to profit – see Lanham
Act §43(d)(1)(B)(ii), 15 U.S.C. § 1125(d)(1)(B)(ii)
Anticybersquatting Consumer Protection Act

Bad Faith Intent Factors: note a yes answer to I-IV suggests good faith; a yes answer to V-VIII suggests bad
faith
Lanham Act § 43(d)(1)(B), 15 U.S.C. § 1125(d)(1)(B)
“In determining whether a person has a bad faith intent … a court may consider factors such as, but not limited
to –
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise
commonly used to identify that person;
(III) that person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods
or services;
36
(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the
domain name that could harm the goodwill represented by the mark, either for commercial gain or with the
intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, or
affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third
party for financial gain without having used, or having an intent to use, the domain name in the bona fide
offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the
registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the
person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or
confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or
dilutive of famous marks of others that are famous at the time of registration of such domain names, without
regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive
and famous within the meaning of subsection (c)(1) of section 43 [15 U.S.C. § 1125]”
Anti-cybersquatting Consumer Protection Act Safe Harbor

Lanham Act § 43(d)(1)(B)(ii), 15 U.S.C. § 1125(d)(1)(B)(ii)
 “Bad faith intent . . . shall not be found in any case in which the court determines that the person
believed and had reasonable grounds to believe that the use of the domain name was a fair use or
otherwise lawful.”
Sporty’s Farm v. Sportsman’s Market (2nd Cir. 2000) (not in your CB)
 Sportsman’s: uses registered mark SPORTY’S to identify catalogs and products in the aviation field,
and later tools and home accessories
 Omega: registered domain name sportys.com; had intent to enter aviation catalog business; later formed
subsidiary Sporty’s Farm to sell Christmas trees and Omega sold rights to domain name to Sporty’s
Farm
 Registration and use of domain name violated the Anticybersquatting Consumer Protection Act
(Lanham Act § 43(d), 15 U.S.C. § 1125(d))
Methods to Attack Cybersquatting or Unauthorized Registration/Use of Your Mark in a Domain Name

 Federal Trademark Law
o Infringement (15 U.S.C. §§ 1114(1), 1125(a)(1))
o Dilution (15 U.S.C. § 1125(c))
o Anticybersquatting Consumer Protection Act (15 U.S.C. § 1125(d))
 State Trademark Law
 Private Dispute Resolution Procedures
o Uniform Dispute Resolution Policy (UDRP)
o Uniform Rapid Suspension System (URS)
Uniform Domain Name Dispute Resolution

 Less expensive and faster than court litigation for trademark owners that want to cancel or transfer a
domain name that incorporates their trademark
 A trademark holder files a Complaint with an approved provider (e.g., WIPO) and selects a panel
 Respondent has opportunity to file a response
o Why does the dispute resolution provider have jurisdiction over the respondent?
37
 Upon registration or renewal of the domain name, the domain name registrant
contractually consented to submit to a mandatory administrative proceeding if a
Complaint is filed
 Panel reviews written submissions and rules in favor of Complainant or Respondent
 Remedies limited to transfer or cancellation of the domain name
 Appeal of decision?
o Not within ICANN/UDRP system
o Parties can file suit in a national court
5. Indirect Infringement
Inwood Labs v. Ives Labs (U.S. 1982) (not in CB)

 Plaintiff Ives Labs: trademark rights in word mark CYCLOSPASMOL and trade dress rights in color of
capsules of prescription drug cyclandelate
 Defendant Inwood (generic drug manufacturer): sells “look-alike” drugs using catalogues that compare
drugs to CYCLOSPASMOL
 Pharmacists: distribute Defendant’s generic drugs to physicians & patients (allegedly in bottles labeled
CYCLOSPASMOL)
Standard for indirect (secondary) trademark infringement?
 “[I]f a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues
to supply its product to one whom it knows or has reason to know is engaging in trademark
infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result
of the deceit.”
 Two ways to prove indirect/secondary trademark infringement:
(1) Intentional inducement of another to directly infringe a mark or
(2) Continuing to supply a product to a third party whom the supplier knows or has reason to know is
carrying out direct infringement (the “continued supply” test)
Tiffany v. eBay (2d Cir. 2010)

 Is eBay liable for direct trademark infringement?
o No – this is a nominative fair use; defendant can use another’s mark where doing so is necessary
to describe the second-hand product
 Is eBay liable for contributory trademark infringement? Second Circuit applies modified version of
Inwood’s continued supply test for services (note this test is also used in Ninth Circuit – see Lockheed v.
Network Solutions):
(a) Defendant continued to supply its service to the infringer
(b) Defendant knows or has reason to know this third party is engaging in trademark infringement (or is
willfully blind)
(c) Defendant exercised “direct control and monitoring of the instrumentality used by a third party to
infringe”
o Defendant must know or have reason to know of specific instances of actual infringement -
generalized knowledge or reason to know is not sufficient (4th Cir. agreed with this point in
Rosetta Stone v. Google)
o Upon actual notice of infringement, did eBay take down listings?
o Defendant can also be liable if willfully blind to the infringing activity – suspect wrongdoing and
fail to investigate
Ø eBay not liable because it removed infringing listings once it was notified and
took other steps to stop counterfeit sales
v Dilution? Did eBay use Tiffany as a mark for its services?
38
6. False Advertising
False Advertising - Lanham Act § 43(a)(1)(B), 15 U.S.C. § 1125(a)(1)(B)

misleading description of fact, or false or misleading representation of fact, which –
(B) [False Advertising] in commercial advertising or promotion, misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such
act.”
Elements of a False Advertising Claim in the Ninth Circuit

Lanham Act § 43(a)(1)(B), 15 U.S.C. § 1125(a)(1)(B)
Five elements to a false advertising claim under Lanham Act Section 43(a), 15 U.S.C. § 1125(a)(1)(B) per
Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105, 1110 (9th Cir. 2012):
(1) a false statement of fact by the defendant in a commercial advertisement about its own or another's product
(2) the statement actually deceived or has the tendency to deceive a substantial segment of its audience;
(3) the deception is material, in that it is likely to influence the purchasing decision;
 Although materiality in false advertising claims is typically proven through consumer surveys, nothing
in the Lanham Act, nor under Ninth Circuit precedents, requires a plaintiff to use such surveys.
(4) the defendant caused its false statement to enter interstate commerce; and
(5) the plaintiff has been or is likely to be injured as a result of the false statement, either by direct diversion of
sales from itself to defendant or by a lessening of the goodwill associated with its products
For all jurisdictions:
 Standing: Complaint must include allegations of standing (injury to commercial interest; proximate
causation) – see Lexmark Intern. v. Static Control Components, 134 S.Ct. 1377 (2014); McCarthy on
Trademarks § 27:24
 Remedies: include a preliminary and permanent injunction, corrective advertising, and monetary
recovery
7. False Endorsement and State Right of Publicity Laws
False Endorsement & Right of Publicity Laws

 Unauthorized Use of Another’s Marketable Name, Image or Persona: Certain third party uses of an
individual’s name, voice, signature, photograph, likeness, or other personal characteristics in
commercial advertising or displayed on commercial products may violate false endorsement and/or right
of publicity laws
 Laws give rights to celebrities and others to control, manage, and profit from their marketable identity
 Why protect a person’s identity from unauthorized use by others? Does it mislead consumers?
Moral/ethical reasons (right to privacy or autonomous self-definition)? Prevent misappropriation of
property? Economic incentives?
Right of Publicity & False Endorsement

 No federal right of publicity statute but trademark law has similar protection
 False Endorsement under Trademark Infringement Law - Lanham Act § 32(1), 15 U.S.C.§ 1114(1);
Lanham Act § 43(a)(1)(A), 15 U.S.C. § 1125(a)(1)(A):
o Individual’s name, image, or persona is alleged to be the trademark
39
o Use is likely to cause confusion about “affiliation, connection, or association” or person’s
sponsorship or approval of the goods, services, or commercial activities
o Courts usually apply traditional likelihood of confusion test
o Potential defenses: parody; nominative fair use; if use in title or content of artistic or literary
work, the Rogers balancing test may apply; first sale doctrine
 False Endorsement as a Form of False Advertising - Lanham Act §43(a)(1)(B), 15 U.S.C. § 1125(a)(1)
(B)
o Use of individual’s name, image, or persona in a way that is false or misleading
o False or misleading statement of fact “in commercial advertising that misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person’s goods, services,
or commercial activities”
 State Right of Publicity Laws – Statutes and common law
o Use of another’s name, image, or persona to advertise or sell commercial goods
o E.g., Cal. Civil Code §§ 3344, 3344.1; California common law; N.Y. Civil Rights Law § 51.
Action for injunction and for damages
Elements of a Federal Trademark Infringement Claim in the Ninth Circuit

1. Plaintiff owns a valid mark entitled to protection under the Lanham Act [in false endorsement cases,
the person’s name, image, or other identifying characteristics may be a registered or common law
trademark]
goods or services
6. Commercial use of the mark
Elements of a Federal Unfair Competition Claim

(A)
[in false endorsement cases, plaintiff may argue the defendant is using a word, term, name,
symbol, or device (or combination of these things) to falsely suggest plaintiff endorses the
defendant’s goods or services regardless of whether plaintiff owns trademark rights]
Plaintiff
California Statutory Right of Publicity – Living Persons

Cal. Civ. Code § 3344 Use of another’s name, voice, signature, photograph, or likeness for advertising or
selling or soliciting purposes
 “(a) Any person who knowingly uses another’s name, voice, signature, photograph, or likeness,
40
 in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or
soliciting purchases of, products, merchandise, goods or services,
 without such person’s prior consent…
 shall be liable for any damages sustained by the person or persons injured as a result thereof…”
Elements of California Statutory Right of Publicity claim Plaintiff must plead and prove the following:
1. Defendant’s use of plaintiff’s name, voice, signature, photograph, or likeness
 Note the term “photograph” in the statute includes still and moving images per Section 3344(b)
2. Defendant’s appropriation of plaintiff’s name, voice, signature, photograph, or likeness is to defendant’s
advantage, commercial or otherwise
3. Defendant’s use of plaintiff’s name, voice, signature, photograph, or likeness is a knowing use
4. There is a direct connection between the alleged use and the defendant’s commercial purpose
5. Lack of consent and
6. Resulting injury
Cal. Civ. Code § 3344 cont’d – remedies for right of publicity violations involving living persons
(a) cont’d “In addition, in any action brought under this section, the person who violated the section shall be
liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or
the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the
unauthorized use that are attributable to the use and are not taken into account in computing the actual damages.
In establishing such profits, the injured party or parties are required to present proof only of the gross revenue
attributable to such use, and the person who violated this section is required to prove his or her deductible
expenses.
Punitive damages may also be awarded to the injured party or parties.
The prevailing party in any action under this section shall also be entitled to attorney’s fees and costs….
(g) The remedies provided for in this section are cumulative and shall be in addition to any others provided for
by law.”
California Statutory Right of Publicity – Deceased Personality

Cal. Civ. Code § 3344.1 Deceased personality’s name, voice, signature, photograph, or likeness
“(a)(1) Any person who uses a deceased personality's name, voice, signature, photograph, or likeness,
in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting
purchases of, products, merchandise, goods, or services,
without prior consent from the person or persons specified in subdivision (c),
shall be liable for any damages sustained by the person or persons injured as a result thereof….”
Ø Elements of the cause of action are similar to elements for Section 3344
Ø Remedies in (a)(1) and (m) similar to (a) and (g) of Section 3344
Ø Defenses in (j), (k), and (l) similar to (d), (e), and (f) of Section 3344, but there are additional defenses
in (a) set forth in the next slide
Ø Rights are transferrable and descendible – see (b)-(f) of Section 3344.1
Ø Rights expire 70 years after person’s death per (g) of Section 3344.1
California Common Law Right of Publicity

Elements of California Common Law Right of Publicity claim: Plaintiff must plead and prove the following:
1. Defendant’s use of the plaintiff’s identity
2. Defendant’s appropriation of the plaintiff’s name, likeness, or other aspects of the plaintiff’s identity to
defendant’s advantage, commercial or otherwise
3. Lack of consent and
4. Resulting injury
41
Midler v. Ford Motor Co. (9th Cir. 1988)
Vanna White v. Samsung Electronics America, Inc. (9th Cir. 1992)
California Statutory Right of Publicity - Cal. Civ. Code § 3344 Use of another’s name, voice, signature,
photograph, or likeness for advertising or selling or soliciting purposes
1. Defendant’s use of plaintiff’s name, voice, signature, photograph, or likeness;
2. Defendant’s appropriation of plaintiff’s name, voice, signature, photograph, or likeness is to defendant’s
advantage, commercial or otherwise;
3. Defendant’s use of plaintiff’s name, voice, signature, photograph, or likeness is a knowing use;
4. There is a direct connection between the alleged use and the defendant’s commercial purpose;
5. Lack of consent; and
6. Resulting injury
False Endorsement in violation of Section 43(a) of the Lanham Act –

Ninth Circuit’s AMF v. Sleekcraft Likelihood of Confusion factors [not in CB]
1. strength of plaintiff’s mark [strength of the celebrity’s persona]: unknown to relevant public 
celebrity is well-known and enjoys strong level of recognition among relevant members of society?
2. relatedness of the goods [reasons for or source of celebrity’s fame are similar to defendant’s goods
or services]: unrelated  related  competing?
3. similarity of the marks [does defendant use the celebrity’s exact name, image, etc.]: dissimilar 
similar  identical?
4. evidence of actual confusion [confusion about whether celebrity endorses defendant’s products]:
no confusion  actual confusion by reasonable purchasers per surveys, declarations?
5. marketing channels used [portray in same way in same magazines, etc.]: different stores and
advertising channels  identical channels?
6. likely degree of purchaser care [do consumers care about who endorses product?]: more purchaser
care  less purchaser care?
7. defendant’s intent [intent to profit by confusing consumers about endorsement? parody or spoof?]
good faith  intent to confuse?
8. likelihood of expansion of the product lines [not relevant for endorsement cases]: unlikely
expansion  expansion likely?
Ø Parody defense does not apply here per the Ninth Circuit in White
Defenses to Right of Publicity Claims

Statutory Defenses
 Cal. Civil Code § 3344(d) & § 3344.1(j) : exemption for “news, public affairs, or sports broadcast or
account, or any political campaign”
 Cal. Civil Code § 3344.1(a)(2): if deceased person, exemption for “play, book, magazine, newspaper,
musical composition, audiovisual work, radio or television program, single and original work of art,
work of political or newsworthy value” or advertisement for such works
Common Law Defenses
 Transformative use: work “contains significant transformative elements” and/or “the value of the work
does not derive primarily from the celebrity’s fame”; ask if the “product containing a celebrity’s likeness
is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s
likeness.” Comedy III Prods. v. Saderup, 25 Cal.4th 387 (2001); e.g., Cardtoons v. Major League
Baseball Players’ Assoc., 95 F.3d 959 (10th Cir. 1996) (parody trading card caricatures of baseball
players transformative)
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 Public interest: “no cause of action will lie for the publication of matters in the public interest, which
rests on the right of the public to know and the freedom of the press to tell it.” Montana v. San Jose
Mercury News, Inc., 34 Cal.App.4th 790 (1995) (sale of posters featuring newspaper accounts of 49ers
Super Bowl wins with image of Joe Montana were matters in public interest)
 Rogers test: may apply in cases involving artistic and literary works – see e.g., Parks v. LaFace Records,
329 F.3d 437 (6th Cir. 2003) (applying Rogers to use of Parks’ name in song title but holding there was
a genuine issue of fact as to whether use of name was artistically relevant); some courts (e.g., Ninth
Circuit) only apply Rogers to trademark claims since goals of laws different
 Other defenses may also apply, such as the first sale doctrine
Motions to Strike a Complaint as a Strategic Lawsuit Against Public Participation (SLAPP)

 In re NCAA Student–Athlete Name & Likeness Licensing Litigation (9th Cir. 2013): EA moved to strike
right of publicity complaint under FRCP 12(f) as a strategic lawsuit against public participation
(SLAPP) under California statute, Civ. Proc. Code § 425.16 – rule discourages suits that masquerade as
ordinary lawsuits but which are brought to deter common citizens from exercising their political or legal
rights or to punish them for doing so
Ø California’s anti-SLAPP statute is available in federal courts in California
 “The hallmark of a SLAPP suit is that it lacks merit, and is brought with the goals of obtaining an
economic advantage over a citizen party by increasing the cost of litigation to the point that the citizen
party's case will be weakened or abandoned, and of deterring future litigation.” United States ex rel.
Newsham v. Lockheed Missiles & Space, 190 F.3d 963, 970–71 (9th Cir.1999) (citing Wilcox v. Sup.
Ct., 27 Cal.App.4th 809, 814–17 (1994))
 Two Steps for Evaluating an Anti-SLAPP Motion:
1. The defendant must make a prima facie showing that the plaintiff’s suit arises from an act by the
defendant made in connection with a public issue in furtherance of the defendant’s right to free speech
under the United States or California Constitution
o Example: video games qualify for First Amendment protection and lawsuit arises from EA’s
expression in its video games
2. Did the plaintiff fail to establish a reasonable probability of prevailing on his or her claim?
o “The plaintiff must demonstrate that the complaint is legally sufficient and supported by a prima
facie showing of facts to sustain a favorable judgment if the evidence submitted by plaintiff is
credited.”
Defenses
Defenses: Mark is Generic

 If the plaintiff’s mark is a generic term or symbol, the plaintiff cannot satisfy the first element of a
trademark infringement claim in litigation because it does not own a valid and protectable mark
o This rule applies even if the mark is registered and incontestable
 Incontestable Marks - Lanham Act § 15(4), 15 U.S.C. §1065(4): “no incontestable right shall be
acquired in a mark which is the generic name of the goods or services or a portion thereof, for
which it is registered.”
 Defendant can also file a counterclaim which asks the court to order the USPTO to cancel the
registration for the generic term or symbol
o Cancellation of Registration - Lanham Act § 14(3), 15 U.S.C. §1064(3): anyone with standing
can petition to cancel the registration of a mark that “becomes the generic name for the goods or
services, or a portion thereof, for which it is registered”
o How do we determine if the term is generic per the Lanham Act? “The primary significance of
the registered mark to the relevant public rather than the purchaser motivation shall be the test
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for determining whether the registered mark has become the generic name of goods or services
on or in connection with which it has been used.” Lanham Act § 14(3), 15 U.S.C. §1064(3); see
also USPTO v. Booking.com (U.S. 2020)

 “If the primary significance of the trademark is to describe the type of product rather than the
producer, the trademark [is] a generic term and [cannot be] a valid trademark.” (e.g., SHOES)
crackers):
Other Defenses in Litigation

Lanham Act § 33(b), 15 U.S.C. § 1115(b)
 “To the extent that the right to use the registered mark has become incontestable. . . the registration shall
be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the
registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in
commerce. . . .
 Such conclusive evidence of the right to use the registered mark shall be subject to proof of
infringement. . ., and shall be subject to the following defenses. . . .”
(1) [Fraud];
(2) [Abandonment];
(3) That the mark is being used, by or with the permission of the registrant. . . to misrepresent the source
of the goods or services. . . ;
(4) [Fair use defense];
(5) [Prior continuous use in certain geographic area];
(6) [Concurrent use];
(7) [Antitrust violation];
(8) That the mark is functional; or
(9) That equitable principles, including laches, estoppel, and acquiescence, are applicable.
Defenses in Lanham Act § 33(b), 15 U.S.C. § 1115(b)

Trademarks are subject to the following defenses even if they have become incontestable:
“(1) That the registration or the incontestable right to use the mark was obtained fraudulently; or
(2) That the mark has been abandoned by the registrant; or
(3) That the registered mark is being used by or with the permission of the registrant or a person in privity with
the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark
is used; or
(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark,
of the party's individual name in his own business, or of the individual name of anyone in privity with such
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party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods
or services of such party, or their geographic origin; or
(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the
registrant's prior use and has been continuously used by such party or those in privity with him from a date prior
to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the
registration of the mark under this chapter if the application for registration is filed before the effective date of
the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of
section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which
such continuous prior use is proved; or
(6) [concurrent use] That the mark whose use is charged as an infringement was registered and used prior to the
registration under this chapter or publication under subsection (c) of section 1062 of this title of the registered
mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for
the area in which the mark was used prior to such registration or such publication of the registrant's mark; or
(7) That the mark has been or is being used to violate the antitrust laws of the United States; or
(8) That the mark is functional; or
(9) That equitable principles, including laches, estoppel, and acquiescence, are applicable.”
1. Abandonment
Lanham Act Provisions Relating to Abandonment

 Affirmative defense in trademark litigation
o Lanham Act § 33(b)(2), 15 U.S.C. § 1115(b)(2): All registrations, even those that have become
incontestable, are subject to the following defenses: “(2) That the mark has been abandoned by
the registrant….”
 Grounds for cancellation of a registered mark
o Lanham Act § 14(3), 15 U.S.C. § 1064(3): A petition to cancel a registration may be filed in the
PTO: “(3) At any time if the registered mark…has been abandoned.”
Abandonment: Definition of “Abandoned”

Lanham Act § 45, 15 U.S.C. § 1127
“A mark shall be deemed to be ‘abandoned’ when either of the following occurs:
(1) [Abandonment through cessation of use:] When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years
shall be prima facie evidence of abandonment. ‘Use’ of a mark means the bona fide use of such mark made in
the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) [Abandonment through failure to control use:] When any course of conduct of the owner, including
acts of omission as well as commission, causes the mark to become the generic name for the goods or services
on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation
shall not be a test for determining abandonment under this paragraph.” (emphasis added)
Abandonment
 Can abandon a mark in various ways:
o Non-use of the mark: Defendant must prove two elements:
(1) Use of the mark has been discontinued and
(2) Intent not to resume use of the mark
Ø Non-use for three consecutive years is prima facie evidence of abandonment
o Act of omission or commission causes the mark to “lose its significance as a mark”
Ø Failure to police the mark against infringers: No or ineffective enforcement against
unauthorized use of mark by third parties
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Ø Naked licensing: license mark without sufficient quality control - can abandon mark if
fail to adequately supervise those who license your mark and ensure consistent quality
(e.g., use periodic inspections)”
Ø “Assignment in gross” of the mark: assignment of mark without assigning tangible assets,
customer lists, formulas, or other types of goodwill can cause confusion regarding quality
 Result of abandonment?
o Cancellation of mark from federal trademark register
o Mark is invalid and is not enforceable against third parties
o If use abandoned mark again later, use later date to determine priority
Major League Baseball Properties v. Sed Non Olet Denarius (S.D.N.Y. 1993)
 Plaintiff MLBP: Baseball team used mark “Brooklyn Dodgers” as a mark until 1957; became “Los
Angeles Dodgers” in 1958
o Brooklyn Dodgers used occasionally and sporadically for old timers games & historical events
but no commercial use from 1958-1981
o 1981 MLBP began licensing use of mark for apparel, novelty items
 Defendant: used mark “The Brooklyn Dodger” for restaurant services starting in 1988 and says Plaintiff
abandoned mark
 Did Plaintiff abandon its registered “Brooklyn Dodgers” mark?
o Nonuse for two consecutive years shall be prima facie abandonment – establishes a rebuttable
presumption of abandonment [note under the current trademark statute, this presumption applies
after three years]
 Defendant must prove two elements to establish abandonment due to nonuse of the mark:
(1) Use of the mark has been discontinued
Ø Failure to use mark as name of baseball team
Ø Use of mark solely to maintain TM rights not sufficient
Ø No intent to resume use of Brooklyn Dodgers
Dawn Donut v. Hart’s Food Stores (2d Cir. 1959)

 Dawn Donut licensed use of mark and had contracts with some licensees requiring use of Dawn Donut
mixes, and performed some inspections of licensees (but not all)
 Trademark owners have an affirmative duty to supervise their licensees and take reasonable measures to
detect and prevent misleading uses of their marks by licensees
 Can abandon mark if fail to adequately supervise those who license the mark
 Trademark owner must prove it exercises sufficient quality control over its licensees and does not
engage in “naked licensing”
o Periodic and thorough inspections?
o Inspections by trained personnel?
Naked Licensing
 Naked licensing: Licensing mark to third parties without adequate control over the quality of goods or
services the licensees provide under the mark
 May abandon mark if engage in naked licensing; consider:
(1) Are there express quality control provisions in the license agreement (e.g., right of inspection or supervision;
right to approve uses of mark)?
o Example: a fast food franchise agreement may include quality control provisions in the
agreement that licenses use of mark: (a) source of supplies (meat, buns, produce, etc.); (b)
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procedures for effectuating quality control (random inspections, requirements for submitting
reports, etc.); (c) other rules: hours of operation, menu choices, retail prices, and appearance of
premises
o Contractual provisions are not required to disprove naked licensing, but it is recommended to
have such provisions in the agreement
(2) Did licensor take affirmative steps to maintain actual quality control?
o Actual quality control is generally required regardless of whether there are quality control
provisions in agreement unless (3) applies
(3) Did licensor reasonably rely on licensee to maintain quality control?
o If there is a special relationship between the parties (e.g., family relationship; licensor supplies
goods sold by licensee), then may conclude this is not naked licensing, but usually not sufficient
by itself
Assignment "In Gross” of a Trademark

 Assignment “in gross” of a trademark: sell mark without transferring the business, tangible assets (e.g.,
inventory, customers lists), or good will accompanying mark – this can cause deception if
goods/services different
o Not allowed in US: Lanham Act § 10, 15 U.S.C. § 1060: “(a)(1) A registered mark or a mark for
which an application to register has been filed shall be assignable with the good will of the
business in which the mark is used, or with that part of the good will of the business connected
with the use of and symbolized by the mark....”
o Today can assign “goodwill” in contract without physical assets if preserve continuity of
consumer expectations for the goods or services
o Why require assignment of assets or good will and not just the mark?
 More likely assignee will maintain consistent quality
 If not consistent quality, this can mislead consumers who rely on mark for information
about product quality
o Cannot assign an intent-to-use application unless sell business
Can in-gross assignment of a mark cause loss of rights in the mark?
 Yes – such assignments can be invalid and thus do not transfer the assignor’s priority; this is another
“course of conduct” that gives rise to abandonment
 Assignee then has priority only based on its use, not the assignor’s use
2. Exhaustion/First Sale
First Sale Doctrine: Use of Another’s Mark on Genuine Goods

 First sale doctrine: A purchaser of genuine goods can resell those goods displaying the mark (e.g., a
Toyota car, Davidoff fragrance) and use the mark on used, repaired, restored, or repackaged goods, or
parallel imports ( “gray goods”) of new goods from other countries, if it fully discloses that the products
are used, repaired, restored, repackaged, or gray goods
o Products must be put on the market by or with authorization of the markholder to be “genuine”
goods
o Accused infringer cannot do anything to cause confusion about source or quality of the resold,
repaired, restored, repacked, or gray goods
o Also called “exhaustion” because IP rights are exhausted after first sale
o Some argue this is not infringement under an implied license theory
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 Plaintiff has burden of persuasion on infringement, and must prove first sale doctrine does not apply if
first sale argument is raised by defendant
 Material difference exception to first sale doctrine: Doctrine does not apply if the accused infringer
materially alters the goods or packaging, or products are materially different for other reasons - e.g.,
Original Appalachian Artworks v. Granada Electronics (2d Cir. 1987) (noting the “adoption papers” and
“birth certificate” for the Cabbage Patch dolls—important elements of the dolls—were in Spanish
instead of English)
First Sale Doctrine: Use of Another’s Trademark on Genuine Goods
 Doctrine may apply in various contexts if disclose information about the nature or quality of the goods
and their source:
o Resale of used goods, which may be repaired or restored - Champion Spark Plugs v. Sanders
(U.S. 1947) (can sell refurbished spark plugs with mark but must fully disclose these are used
goods)
o Resale of parallel imports (“gray goods”), which are new goods first sold in other countries and
imported into the US
o Repackaging of new goods - Prestonettes v. Coty (U.S. 1924) (use of mark on genuine goods
repackaged for resale with disclaimer)
 Doctrine may not apply in certain circumstances
o Lack of quality control over goods – e.g., Halls brand medicine sold past expiration date
o Repackage, repair, or recondition goods without disclosure of relevant information or disclaimer
about difference in goods
o Goods or packaging are materially altered
o Any other conduct that causes confusion about the source or quality of the resold goods – e.g.,
labels emphasize brand name of the trademark owner instead of the reseller
3. Fair Use
Fair Use Doctrines in Trademark Law

 Fair use doctrine can apply even where the court or jury has found infringement or dilution and
regardless of whether the mark is registered or unregistered, or is incontestable
 “Traditional” or “Classic” Fair Use - Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4) for
descriptive terms, personal names, and geographic terms : “That use of the name, term, or device
charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his
own business, or of the individual name of anyone in privity with such party, or of a term or device
which is used fairly and in good faith only to describe the goods or services of such party, or their
geographic origin.”; Example: Fish Fry for batter used for frying fish
 Nominative Fair Use (also known as “Referential” Use): Defendant used mark to refer to plaintiff or
plaintiff’s goods or services, such as in news reporting, comparative advertising, parody, criticism,
commentary; Example: “Vote for your Favorite Member of New Kids on the Block”)
Dilution Exclusions – Current Dilution Statute

Lanham Act § 43(c)(3), 15 U.S.C. § 1125(c)(3)
 (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
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¨ (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.
Descriptive Fair Use Defense

 Common law doctrine codified in Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4) – this section lists
defenses to infringement of incontestable marks, but courts apply the fair use defense in infringement
actions involving all types of marks (and also dilution actions)
 Defense can apply even where plaintiff’s mark is inherently distinctive (e.g., Apple Computers), as the
issue is whether the defendant’s use is descriptive of defendant’s product (e.g., Apple-Scented Candles)
Elements of descriptive fair use defense: Defendant must prove
(1) The defendant’s use of the trademarked term is “a use, otherwise than as a mark” (a nontrademark use)
(2) The use is “only to describe the goods or services of such party, or their geographic origin”
(3) The term is “used fairly and in good faith”
Example of descriptive fair use of a mark
o Mark: DENTIST’S CHOICE for toothbrushes
o Descriptive fair use: “Crest is the dentist’s choice for fighting cavities”
 Individual Names: Note Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4) also permits the “use, otherwise
than as a mark, of the party’s individual name in his own business, or of anyone in privity with such
party.”
KP Permanent Make-Up v. Lasting Impression (U.S. 2004)

 Trademark holder has burden of proving likelihood of confusion even for incontestable registrations –
see Lanham Act § 33(b), 15 U.S.C. § 1115(b)
 Cannot require defendants to negate a finding of likelihood of confusion when proving the affirmative
defense of descriptive fair use
o Elements of the fair use defense in Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4) do not
require proof that use of mark will cause no likelihood of confusion
 Should courts be able to find fair use if consumers are confused?
o Yes “some possibility of consumer confusion must be compatible with fair use”
o Court notes “undesirability of allowing anyone to obtain a complete monopoly on use of a
descriptive term simply by grabbing it first”
o But “the degree of customer confusion” remains one among several factors in evaluating whether
defendant’s activity is descriptive fair use
 Ninth Circuit on remand endorsed the Restatement balancing test: consider extent of likely or actual
confusion, strength of plaintiff’s mark, and surveys and other evidence showing whether the use is likely
to create substantial confusion – to the degree that confusion is likely, a use is less likely fair use
Descriptive Fair Use (DFU) under 15 U.S.C. § 1115(b)(4)?

(1) Is the defendant’s use of the trademarked term “a use, otherwise than as a mark” (a nontrademark
use)?
o Is term being used as an identification of source or to otherwise attract public attention (consider
use of TM symbol, type style, size, location, prominence of words)? If yes  more likely TM
use and not DFU
o Any precautionary measures taken to minimize risk that term will be understood in its trademark
sense (e.g., use with house mark, disclaimers, etc.)? If yes  suggests not TM use and more
likely DFU
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(2) Is the use “only to describe the goods or services” of defendant?
o Did defendant use the word in its primary, descriptive sense or for its primary descriptive
meaning? If yes  more likely DFU
o Third party use of term in descriptive sense? If yes  more likely DFU
(3) Is the term “used fairly and in good faith”?
o Did the defendant intend to trade on the plaintiff’s goodwill or create confusion? If yes  bad
faith and likely not DFU
o Knowledge of trademark? If yes  not sufficient to show bad faith
o Failure to conduct trademark search or otherwise investigate  some courts say not sufficient to
show bad faith, but others say carelessness may render use objectively unfair and can infer bad
faith
Nominative Fair Use

 Nominative fair use is use of a mark to refer to the markholder or its goods or services
 Examples of nominative or referential use:
o Comparative advertising, accessories, repair, resale of the markholder’s goods, news reporting,
etc.
 Congress included doctrine in federal dilution statute - Lanham Act § 43(c)(3)(A), 15 U.S.C. § 1125(c)
(3)(A)
Comparative Advertising
 Dilution: Dilution statute exempts comparative advertising from its scope: “advertising or promotion
that permits consumers to compare goods or services” Lanham Act § 43(c)(3)(A)(i), 15 U.S.C. §
1125(c)(3)(A)(i) – this is one type of nominative fair use of another’s mark
 Infringement: There is no statutory defense to infringement for comparative advertising, but courts have
created a common law defense to infringement for truthful comparative advertising
 Example: R.G. Smith v. Chanel, Inc. (9th Cir. 1968)
Nominative Fair Use

 Defendant used plaintiff’s mark to refer to plaintiff or its goods/services
 Ninth Circuit created doctrine in New Kids on the Block v. News Am. Publ’g (9th Cir. 1992), applied it in
Playboy v. Wells (9th Cir. 2002) and refined it in Toyota Motor Sales USA v. Tabari (9th Cir. 2010)
 Use of plaintiff’s mark is a nominative fair use if satisfy three elements:
1. Product is not readily identifiable without use of the plaintiff’s mark
2. Defendant did not use more of plaintiff’s mark than was reasonably necessary to identify the
goods or services
3. Defendant did not falsely suggest it was sponsored or endorsed by the trademark holder
 Toyota Motor Sales USA v. Tabari (9th Cir. 2010) clarified doctrine
1. Test replaces likelihood of confusion test in Ninth Circuit
2. Plaintiff has burden of proof - once defendant shows it used plaintiff’s mark to refer to plaintiff’s
trademarked goods, plaintiff must establish that defendant’s use (e.g., buy-a-lexus.com) was not
a nominative fair use, and thus is likely to cause confusion
 Important Note: “Nontrademark use” (use of a mark otherwise than as a mark/other than as a
designation of source) is different than “nominative use” (use of the mark to refer to the markholder or
its goods/services) but there is overlap
Playboy Enters., Inc. v. Welles (9th Cir. 2002)
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 Wells’ repeated use of the abbreviation “PMOY ′81” meaning “Playmate of the Year 1981” on the
background/wallpaper of her website failed to establish nominative fair use because “[t]he repeated
depiction of “PMOY ′81” is not necessary to describe [the defendant]”)
Expressive Uses of Trademarks

 Certain trademark doctrines may apply in cases involving expressive uses of trademarks which alter the
likelihood of confusion or dilution analysis, substitute for that analysis, or provide a defense to
infringement or dilution
 If trademark dispute involves parody, criticism, or commentary about the trademark owner or its goods
or services:
o If successful parody, this may influence court’s analysis of likelihood of confusion or dilution
factors (e.g., Louis Vuitton v. Haute Diggity Dog)
o This use may be a nominative fair use (e.g., Mattel v. Walking Mountain)
o The use may be protected by the First Amendment under the Rogers test in cases involving
artistic or literary works and other expressive works
o The defenses in the dilution statute may apply: non-trademark use in parody, criticism, or
commentary; news reporting; noncommercial use
 If the trademark dispute involves use of the mark to comment about something unrelated to the
trademark owner or its goods or services:
o Expressive nature of use may influence analysis of infringement or dilution, but may need
stronger justification b/c use not necessary
o The use may be protected by the First Amendment under the Rogers test in cases involving
artistic or literary works and other expressive works
o The noncommercial use defense in the dilution statute may apply
Ø Note other defenses may also apply in both situations (e.g., laches)
If expressive use of another’s mark, possible arguments to consider:

1. Plaintiff cannot prove infringement
a. Failure to prove a threshold requirement – this is not a valid mark; no use of mark with goods
or services; no “use in commerce” (2nd Cir.); no commercial use (e.g., 9th Cir.); no trademark use
(e.g., 6th Cir.)
b. Failure to prove likelihood of confusion
1) If “successful parody” of the marks or trade dress, some courts hold this should
influence how the court applies the likelihood of confusion factors (and also the dilution
by blurring factors)
- See, e.g., Louis Vuitton v. Haute Diggity Dog (4th Cir. 2007) (“Chewy
Vuiton” dog toys did not infringe or dilute marks)
o Other courts say consider likelihood of confusion first, then consider whether
parody is protected by the First Amendment
- See, e.g., Anheuser-Busch v. Balducci (8th Cir. 1995) (use of “Michelob Dry”
marks in advertisement parody for “Michelob Oily” on back of Snicker
magazine likely to cause confusion)
o No absolute First Amendment right to use another’s marks in a parody – must
balance public interest in free expression against the public interest in avoiding
consumer confusion. See Anheuser-Busch v. Balducci (8th Cir. 1995)
2) If use of mark in artistic or literary expression (e.g., a song, painting, film, book,
videogame, etc.), some courts apply balancing test first set forth in Rogers v. Grimaldi
(2nd Cir. 1989) and adopted by Ninth Circuit in Mattel v. MCA to evaluate whether “the
51
public interest in avoiding consumer confusion outweighs the public interest in free
expression.”
Ø Roger’s Balancing Test: Incorporation of another’s mark in the title or
content of an artistic or literary work is not actionable under the
Lanham Act unless this use of the mark
1. has no artistic relevance to the underlying work whatsoever
[note: more than zero relevance is sufficient], or,
2. if it has some artistic relevance, unless it explicitly misleads
as to the source or the content of the work
3. Once accused infringer proves it used mark in an expressive
work, trademark owner must prove either (1) this use has no
artistic relevance or (2) it explicitly misleads as to the source
or content of the work; and must also prove LOC under AMF
3) If use mark to refer to markholder, argue nominative fair use
c. Defenses: descriptive fair use (title or other use describes expression), first sale
doctrine
Mattel, Inc. v. MCA Records (9th Cir. 2002)

 Was defendant liable for infringement of the “Barbie” mark?
o No; Ninth Circuit applied Rogers test: (1) use is artistically relevant;
o (2) song title does not explicitly mislead as to the source or content of the work – use of mark
only in song title insufficient to prove this
 Was defendant liable for dilution under the 1995 federal dilution law, or did the “noncommercial use of
the mark” exemption apply?
o The phrase “noncommercial use” covers expression fully protected under the First Amendment,
including artistic or literary expression sold for profit and not just pure noncommercial speech
o Commercial speech is speech which does no more than propose a commercial transaction per the
USSCt in Bolger v. Youngs (1983), so exemption applies if use of mark is not pure commercial
speech
o Holding: Barbie Girl is not purely commercial speech and falls within the noncommercial use
exemption
 “Barbie” mark was used to sell song, but it also lampoons Barbie image and comments
humorously on the cultural values Aqua claims she represents
What is a “parody” for purposes of trademark law?

 A parody “is defined as a simple form of entertainment conveyed by juxtaposing the irreverent
representation of the trademark with the idealized image created by the mark’s owner”
 “A parody must convey two simultaneous – and contradictory – messages: that it is the original, but also
that it is not the original and is instead a parody.” Louis Vuitton v. Haute Diggity Dog (4th Cir. 2007)
 “[W]here an artistic work targets the original and does not merely borrow another’s property to get
attention, First Amendment interests weigh more heavily in the balance.” Mattel v. MCA (9th Cir. 2003)
Ø If borrow trademarks to get attention rather than to mock the original markholder (e.g., book The
Cat NOT in the Hat about O.J. Simpson trial borrowed Dr. Seuss’s marks to get attention rather
than to mock The Cat in the Hat), defendant may not be able to claim First Amendment
protection. See Mattel v. MCA (9th Cir. 2003) (citing Campbell and Dr. Seuss) – some courts call
this “satire” and say need a justification to use the mark
Ø Parodies can be commercial (for-profit) and noncommercial, and the right to freedom of expression can
protect both types of expression
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Gordon v. Drape Creative (9th Cir. 2018)
 Plaintiff Christopher Gordon: creator of a popular YouTube video known for its catchphrases “Honey
Badger Don’t Care” and “Honey Badger Don’t Give a Shit.”
 Rogers balancing test: once defendant makes threshold showing that its use is part of an expressive work
protected by the First Amendment, the plaintiff claiming infringement bears a heightened burden—it
must satisfy AMF’s likelihood-of-confusion test and at least one of the two prongs of the Rogers test
 If defendant is using the mark in an expressive work, plaintiff must prove:
(1) it has a valid and protectable mark, (2) this use causes a likelihood of confusion under AMF test, and
(3) this use of the mark is either not artistically relevant to the underlying work (more than zero
relevance is sufficient) or is explicitly misleading consumers as to the source or content of the work
o Affirmative statement of sponsorship or endorsement is evidence this use of the mark is explicitly
misleading, but this is not required
o Mere use of a mark alone not sufficient to prove explicitly misleading unless the junior user uses
the mark in the same way as the senior user (e.g., both use the mark in the title of the work)
o Consider extent to which junior user added its own expressive content to the work beyond the
mark itself [note: this is a new requirement]
Ø Case presents triable issue of material fact because Defendants used mark in greeting cards; other cases:
use in song, photograph, video game, TV show
VIP Products v. Jack Daniel’s (9th Cir. 2020)

 Infringement: remanded because of failure to apply Rogers test
o This holding is important because it is the first time a court suggested the Rogers test applied to
expressive merchandise, and not just artistic or literary expression; it said dog toy “is an
expressive work” like the greeting cards in Gordon
 Dilution by tarnishment: reversed because noncommercial use of mark
o Does more than propose a commercial transaction; it is protected expression
o Trade dress used to sell dog toys, but also used to convey a humorous message
 Petition for cert filed Sept. 15, 2020 but Supreme Court denied it – issues:
o (1) Whether a commercial product using humor is subject to the same likelihood-of-confusion
analysis applicable to other products under the Lanham Act, or must receive heightened First
Amendment protection from trademark-infringement claims, where the brand owner must prove
that the defendant’s use of the mark either is “not artistically relevant” or “explicitly misleads
consumers”; and
o (2) Whether a commercial product’s use of humor renders the product “noncommercial” under 15
U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under
the Lanham Act.
Louis Vuitton Malletier, S.A. v. Hyundai Motor Am. (S.D.N.Y. Mar. 22, 2012)
 Hyundai Luxury Ad: https://www.youtube.com/watch?v=5fa245vAvzA
 Louis Vuitton sued for dilution – did parody fair use defense apply?
o “(A) Any 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—…(ii) identifying and
parodying, criticizing, or commenting upon the famous mark owner or the goods or services of
the famous mark owner.”
 Louis Vuitton’s argument?
o Deposition Testimony: the intent of the spot was to portray these over-the-top overwhelming
luxury ideas, not to say anything about Louis Vuitton
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 Holding: not fair use because defendant disclaimed any intent to parody, criticize, or comment on Louis
Vuitton or its products
Louis Vuitton v. My Other Bag (SDNY 2016)

 Did parody fair use defense to dilution apply? Louis Vuitton argued bags are not a parody of Louis
Vuitton or its products, but are instead a parody of MOB itself or larger social commentary
 Holding: this use of the marks qualifies for the parody fair use defense
o Necessary to evoke a luxury handbag brand to make this point
Review: Analysis of Infringement Claim in the Ninth Circuit

 Discuss six elements of a trademark infringement claim, including whether plaintiff owns a valid
mark, AMF v. Sleekcraft likelihood of confusion factors, and whether there is commercial use by
defendant; if parody, this may influence analysis
 Discuss nominative fair use doctrine if mark used to refer to plaintiff or its products
o Accused infringer has burden of establishing it used mark to refer to trademark owner or its goods
or services (e.g., in comparative advertising; sale of used goods, accessories, repair services;
parody, criticism, other commentary)
o If this is a nominative or referential use of the mark, the trademark owner has the burden of
proving that this use of the mark is not a nominative fair use
o Is the product “readily identifiable” without use of the plaintiff’s mark?
o Did defendant use more of the mark than necessary? word marks: just words vs. stylized mark,
logos, colors; design & color marks: use may be necessary
o Did the defendant falsely suggest it was sponsored or endorsed by the TM owner? not “official”
or similar statement; disclaimer relevant, but not required; use perspective of a reasonably prudent
consumer in this context
Ø If the answer is no for all three questions, then this is a nominative fair use
Ø If answer is yes to one or more questions, this is not a nominative fair use and a
narrow injunction may be appropriate unless another defensive doctrine applies
§ Discuss Rogers balancing test if mark is used in the title or content of an artistic or
literary work, or in expression displayed on a product such as a dog toy
§ Discuss any other defensive doctrines if they are relevant, such as the first sale doctrine
(e.g., sale of used goods, parallel imports), descriptive fair use, etc.
4. Other Defenses
Equitable Defenses
 Courts will deny injunctive relief and other equitable relief if an equitable defense applies even if mark
is incontestable – see Lanham Act §33(b)(9), 15 U.S.C. §1115(b)(9)
 Common equitable defenses
o Laches – plaintiff failed to act diligently in asserting its rights
 Elements:
(1) plaintiff had sufficient knowledge of defendant’s activities concerning the mark;
(2) plaintiff delayed in bringing suit; and
(3) defendant will be prejudiced by allowing plaintiff to assert its rights at this time
o Unclean Hands – various types of misconduct by plaintiff, including fraud in obtaining a
trademark registration, trademark misuse (mark used in anti-competitive way to commit an
antitrust violation), and intentional misrepresentations
o Estoppel – bar due to past actions of plaintiff or previous litigation concerning this issue
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o Acquiescence – express or implied assurance by plaintiff that it would not assert rights against
defendant
Remedies
a. Injunctions
Injunctive Relief in Trademark Disputes

Lanham Act § 34(a), 15 U.S.C. § 1116(a)
 Courts “shall have power to grant injunctions, according to the principles of equity and upon such terms
as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark
registered in the Patent and Trademark Office or to prevent a violation under section (a), (c), or (d) of
section 43 [15 U.S.C. § 1125] of this title.
 A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm
upon a finding of a violation identified in this subsection in the case of a motion for a permanent
injunction or upon a finding of likelihood of success on the merits for a violation identified in this
subsection in the case of a motion for a preliminary injunction or temporary restraining order. . . .”
Ø After the eBay patent case, more courts were willing to deny a request for an injunction in all
intellectual property disputes without proof of irreparable harm, including in trademark disputes
– See, e.g., Herb Reed v. Florida Ent. Mgmt (9th Cir. 2013)
Ø Trademark Modernization Act of 2020: Congress revised Section 34(a) to add a rebuttable
presumption of irreparable harm in trademark disputes if plaintiff prevails on its trademark
claims (for permanent injunctions) or proves a likelihood of success on the merits (for
preliminary injunctions)
Injunctions in Trademark Disputes

 Injunctions are the principal remedy for trademark violations
 Court may enjoin use of mark in connection with certain goods or services, or prohibit other types of
conduct or expression
 Court may require use of disclaimers, destruction of infringing goods, transfer or cancellation of domain
name, or other affirmative acts such as corrective advertising by the defendant to mitigate consumer
confusion
 Preliminary injunction factors set forth by US Supreme Court in Winter:
(1) plaintiff is likely to succeed on the merits
(2) plaintiff is likely to suffer irreparable harm without preliminary relief
 Rebuttable presumption of (2) if (1) satisfied; consider trademark owner’s lost sales, loss
of control over reputation, damage to goodwill
(3) the balance of equities tips in plaintiff’s favor
 Any harm to defendant of an injunction is minimal or is justified here
(4) an injunction is in the public interest
 Consumers harmed when confused, no benefit from allowing this use
 Permanent injunction factors set forth by the US Supreme Court in eBay:
(1) irreparable injury
(2) remedies available at law, such as monetary damages, are inadequate to compensate for injury
(3) an injunction is warranted considering the balance of hardships
(4) public interest is not disserved by a permanent injunction
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b. Damages
Monetary Remedies: Recovery for Violation of Rights, Lanham Act § 35, 15 U.S.C. § 1117
(a) Profits, damages and costs; attorney fees: If finding of trademark infringement or unfair competition
(for dilution: must be willful violation, see Lanham Act § 43(c)(5), 15 U.S.C. § 1125(c)(5)), a prevailing
markholder is entitled “subject to the principles of equity, to recover (1) defendant’s profits, (2) any
damages sustained by the plaintiff [actual damages and plaintiff’s lost profits], and (3) the costs of the
action. The court shall assess such profits and damages or cause the same to be assessed under its direction.
o In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must
prove all elements of cost or deduction claimed.
o In assessing damages the court may enter judgment according to the circumstances of the case, for
any sum above the amount found as actual damages, not exceeding three times such
amount. . . .Such sum . . . shall constitute compensation and not a penalty.
o The court in exceptional cases may award reasonable attorney fees to the prevailing party.”
(b) Treble damages for use of counterfeit mark: Among other things, mandates treble damages and
reasonable attorneys’ fees for intentional infringement of a counterfeit mark “unless the court finds
extenuating circumstances.”
(c) Statutory damages for use of counterfeit marks: Instead of actual damages, can elect statutory
damages of not less than $1,000 or more than $200,000 per counterfeit mark per type of goods/services
unless willful, then not more than $2,000,000.
(d) Statutory damages for violation of section 15 U.S.C. § 1125(d)(1) [Anticybersquatting Consumer
Protection Act]: Instead of actual damages and profits, can elect statutory damages of not less than $1000
and not more than $100,000 per domain name
Monetary Remedies in Trademark Disputes

 15 U.S.C. § 1117(a): plaintiff can recover “(1) defendant’s profits, (2) any damages sustained by the
plaintiff, and (3) the costs of the action”
o Must determine with reasonable certainty the defendant’s profits or the plaintiff’s damages
attributable to the infringement
o 15 U.S.C. § 1111: not entitled to profits or damages under § 1114 until actual notice of the
registration (e.g., use ® symbol, send demand letter), but profits or damages award may be
awarded under § 1125
 Defendant’s profits: Consider defendant’s intent (willful/intent to confuse or deceive vs. innocent
infringer), extent of harm to plaintiff (sales diverted), strength of plaintiff’s mark, actual confusion
caused by defendant, public interest in making misconduct unprofitable, and whether there was no
unreasonable delay by plaintiff in asserting rights
o Proof of willful infringement not required for profits per Romag
o Most courts do not require proof of actual confusion for these profits
 Plaintiff’s damages: Consider plaintiff’s lost sales/revenues, sales at lower prices, harm to market
reputation, expenditures to reduce confusion
o Most courts require proof of actual confusion for damages
o Most courts do not require proof of willful infringement for damages
 Enhanced damages under 15 U.S.C. § 1117(a): willful infringement entitles plaintiff up to treble
damages and may include award of attorneys’ fees
o Deterrent and compensation only, not a penalty
Romag Fasteners v. Fossil (U.S. 2020)

 Fossil’s manufacturers in China used counterfeit Romag snap fasteners
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 Does the text of the statute 15 U.S.C. § 1117(a) require plaintiff to prove willful infringement to receive
an award of defendant’s profits?
o “When a violation of any right of the registrant of a mark registered in the Patent and Trademark
Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section
1125(c) of this title, shall have been established ..., the plaintiff shall be entitled, subject to the
provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to
recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of
the action.”
 Do other Lanham Act provisions discuss the defendant’s mental state?
 Does the language “subject to the principles of equity” impose a requirement that infringement must be
willful for an award of profits?
o Phrase does not refer to mental states in trademark law; not clear courts historically required
showing of willfulness before allowing profits
 Should the Court impose this requirement for reasons of public policy?
 Alito concurrence (with Breyer and Kagan): statute does not require willfulness for a profit award, but it
is highly important
 Sotomayor concurrence in judgment: 15 U.S.C. § 1117(a) does not require willfulness for profits but
historically profits rarely awarded if innocent infringement for reasons of equity; deprive wrongdoer of $
from conduct
Big O Tire Dealers v. Goodyear Tire & Rubber (10th Cir. 1977)
 Big O Tire: first to use BIG FOOT as mark for tires
 Goodyear Tire: liable for reverse confusion when it used “bigfoot” in ad campaign and saturated market;
jury held it was liable for $2.8 million compensatory damages & $16.8 million punitive damages
 Can damages include money for corrective advertising by plaintiff?
o Yes - court may award plaintiff damages to compensate plaintiff for corrective advertising
expenses to counteract consumer confusion due to infringement
o Award of compensatory damages possible even where plaintiff did not spend any money prior to
trial on corrective advertising
o Court awarded plaintiff 25% of defendant’s advertising budget to cover cost of corrective
advertising, but held it must only use advertising budget for states where plaintiff does business
(14 states or 28% of the 50 states) not entire advertising budget
o Court reduced award to $678,302 in compensatory damages and $4 million in punitive damages
c. Attorney’s Fees
Attorney’s Fees: Lanham Act § 35(a), 15 U.S.C. § 1117(a)

 “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”
o Language is similar to attorney’s fees provision in the patent act – attorney’s fees may be
awarded in “exceptional cases”
o U.S. Supreme Court in patent case Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.
Ct. 1749 (2014) adopted totality of the circumstances approach to attorney’s fees awards, and
rejected argument that bad faith, willful infringement, or malicious or vexatious conduct was
required
o Consider whether case stands out from others with respect to the substantive strength of the
party’s litigating position or whether the losing party litigated the case in an unreasonable matter
 SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179, 1181 (9th Cir. 2016) applied Octane
Fitness in the trademark context
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d. Criminal Sanctions
1. Civil Liability for Counterfeiting

o Definition of “counterfeit” in Lanham Act § 45, 15 U.S.C. §1127: “A ‘counterfeit’ is a spurious
mark which is identical with, or substantially indistinguishable from, a registered mark.”
o The trademark infringement statute Lanham Act § 32(1)(a), 15 U.S.C. §1114(1)(a), applies to
use of “any reproduction, counterfeit, copy, or colorable imitation of a registered mark….”
o “Counterfeiting” is a more serious type of infringement of a registered mark
o Identity or virtual identity of marks
o Goods are usually identical or very similar
o Intent to confuse consumers and trade off goodwill in registered mark
o Civil and criminal liability for trademark counterfeiting is possible if point-of-purchase
confusion or post-sale confusion (where purchasers know goods are counterfeit – e.g., $20 Rolex
or Gucci bag bought from vendor on street
 Remedies for counterfeiting in addition to injunction and damages
o Lanham Act § 34(d) – can obtain an ex parte seizure order
o Lanham Act § 35(b) – treble damages and reasonable attorney’s fees are mandatory unless there
are extenuating circumstances; court may also award prejudgment interest
o Lanham Act § 35(c) – can elect statutory damages in lieu of actual damages (between $1000-
$200,000; if willful up to $2,000,000 per counterfeit mark per type of goods)
2. Criminal Liability for Counterfeiting

18 U.S.C. § 2320: Trafficking in counterfeit goods or services
 Trademark Counterfeiting Act of 1984 provides for federal criminal penalties for anyone who
“intentionally traffics in goods or services and knowingly uses a counterfeit mark on or in connection
with such goods or services,” 18 U.S.C. §2320(a)(1), along with other unlawful conduct
 A “counterfeit mark” is defined as a spurious mark used in connection with trafficking identical goods
or services (or labels, packaging, etc.) that is “identical with, or substantially indistinguishable from” a
mark registered on the principal register which is likely to cause confusion. 18 U.S.C. § 2320(f)(1)(A)
 Penalties include imprisonment and fines – see 18 U.S.C. § 2320(b)
 Higher penalties if conduct results in serious injury or death; counterfeit military goods or services;
counterfeit medicine - 18 U.S.C. § 2320(b)(2)-(3)
3. Protection Against Counterfeit Imports

 15 U.S.C. § 1124: Forbids importation of goods bearing counterfeit or infringing marks registered with
the US PTO
 15 U.S.C. § 1125(b): Forbids importation of goods infringing under § 1125(a)
 Remedies include seizure & forfeiture of goods; customs must seize counterfeit products; customs may
seize infringing products
International Issues in Trademark Law
International Issues in Trademark Law
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 Major treaties and trade agreements with trademark provisions to which U.S. is a contracting party:
Paris Convention, TRIPS Agreement, Madrid Protocol, regional and bilateral trade agreements and
treaties
 Registration of trademarks in foreign countries
o Paris Convention: can get right of priority based on foreign filing date if file application in other
Paris Union members within 6 months
o Paris Conv & TRIPS: contain rules on what must be registered, etc.
o Madrid Protocol: facilitates registration of mark in foreign countries upon filing an application to
register a mark in your home country
Ø Some applicants file directly in foreign trademark offices to get benefit of their less
stringent rules instead of using Madrid Protocol
o Lanham Act § 44, 15 U.S.C. § 1126: contains provisions that satisfy US obligations under
international treaties relating to trademarks
Ø Mark first registered in another Paris Union member country may be registered in US
without use in commerce in the US if owner of foreign mark has a bona fide intent to use
mark in the US
 Enforcement of US trademarks in other countries & foreign marks in US
o Paris Conv & TRIPS obligations regarding enforcement of marks
o Principle of territoriality, and exceptions to the rule (e.g., well known marks doctrine protects
marks not registered but known in country)
Practical Advice: Examples of Vendors used by Trademark Attorneys & their Clients
 CompuMark and Corsearch: trademark searches and watch notices
 Mark Monitor: counterfeiting and infringement monitoring
 Marksmen: in-use investigations, domain acquisitions, social media acquisitions
 TrademarkBank and TMCloud: trademark docketing
 Domain Tools: advanced domain name research
 Whoisology: archival WHOIS info for domain registrations
 LexMachina: information about parties, opposing counsel, examiners, judges, and cases (i.e., does this
company sue? do their attorneys litigate?)
 Darts-IP: global look at IP litigation (e.g., where a client or competitor is litigating) or status of a
technology, patent, or industry
 BNA Convergence: tracking client news
 CapitalIQ: information on companies, markets, and people (e.g., CEOs)
 D&B Credit and D&B Hoovers: credit reports and company finances
 Clio: overall practice management
 Logikcull: discovery (redaction, tagging, sharing)
 Lexis, Westlaw, Bloomberg, Wolters Kluwer Cheetah: cases, statutes, treatises
EXAM
Trademark Law: Analysis to Use When Determining Distinctiveness of a Mark or Trade Dress
1. Is this a “word, name, symbol, or device” (or combination of these) used to identify and
distinguish the source of goods or services? See 15 USC § 1127
 What type of marks/trade dress (word mark, name, stylized word or name, logo, product
packaging, decor, color, product configuration/design, etc.)?
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 What are the goods or services?
2. Is each alleged mark or trade dress distinctive?
o For descriptive terms, surnames, colors, product configurations, and most other non-traditional
marks, proof of acquired distinctiveness is generally required
o For all other marks (e.g., words, names, logos, product packaging, decor), apply Abercrombie
test and/or Seabrook test and determine if the mark is inherently distinctive or needs proof of
acquired distinctiveness
 If inherently distinctive, the mark or trade dress is distinctive and proof of acquired
distinctiveness (aka secondary meaning) is not required.
 If not inherently distinctive (e.g., descriptive terms, geographical terms, names, or marks
not inherently distinctive under Seabrook), must prove acquired distinctiveness for
protection  apply secondary meaning factors; if it has not acquired distinctiveness, it is
not distinctive
 If not distinctive (e.g., generic terms; no proof of secondary meaning for non-inherently
distinctive marks or trade dress), the mark or trade dress is not protected under trademark
law; but possible unfair competition claim
Is the mark Suggestive or Descriptive?

• Dictionary Definition Test
– Does the ordinary meaning in the dictionary of the trademarked term(s) describe the goods? If
yes term is likely descriptive (or it may be generic)
• Imagination Test
– Does it require imagination, thought, or perception to reach a conclusion as to the nature of the
goods? If yes  term is likely suggestive
• Competitors’ Need Test
– Do competitors need to use the term to effectively compete with mark owner (is there a paucity
of synonyms)? If yes  term is likely descriptive (or it may be generic)
• Competitors’ Use in the Marketplace Test
– Are other companies actually using the same term to describe their similar products? If yes
term is likely descriptive (or it may be generic)
Proving Secondary Meaning/Acquired Distinctiveness

 Direct evidence:
o Association in minds of consumers between the mark or trade dress and a single source (even if
the source is unknown)
 E.g., consumer survey, direct consumer testimony
 Need substantial portion of relevant consumers: 50% or higher best
 Circumstantial evidence:
o Extensive advertising and other promotion of the mark
o Extensive sales of the product under the mark
o Lengthy use of mark as a mark to identify the source of goods or services
o Exclusive use of mark as a mark (no/limited use by competitors of the term as a mark or use of
the term in a descriptive or generic manner)
 Presume secondary meaning after five years of substantially exclusive and continuous
use (see Lanham Act § 2(f), 15 U.S.C. § 1052(f))
o Use of mark as a brand name in the media, dictionaries, trade journals
o Proof of intentional copying of the mark or trade dress by others (unless descriptive term or
functional trade dress)
o Actual consumer confusion caused by another’s use of the mark
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o Established place in the market or large size of the company
o Large number of customers or social media followers
 Focus on the effectiveness of advertising and sales in creating secondary meaning, not on extent
of the efforts per Zatarains
Defenses: Mark is Generic

 If the plaintiff’s mark is a generic term or symbol, the plaintiff cannot satisfy the first element of a
trademark infringement claim in litigation because it does not own a valid and protectable mark
o This rule applies even if the mark is registered and incontestable
 Incontestable Marks - Lanham Act § 15(4), 15 U.S.C. §1065(4): “no incontestable right
shall be acquired in a mark which is the generic name of the goods or services or a
portion thereof, for which it is registered.”
 Defendant can also file a counterclaim which asks the court to order the USPTO to cancel the
registration for the generic term or symbol
o Cancellation of Registration - Lanham Act § 14(3), 15 U.S.C. §1064(3): anyone with standing
can petition to cancel the registration of a mark that “becomes the generic name for the goods or
services, or a portion thereof, for which it is registered”
o How do we determine if the term is generic per the Lanham Act? “The primary significance of
the registered mark to the relevant public rather than the purchaser motivation shall be the test
for determining whether the registered mark has become the generic name of goods or services
on or in connection with which it has been used.” Lanham Act § 14(3), 15 U.S.C. §1064(3); see
also USPTO v. Booking.com (U.S. 2020)

 “If the primary significance of the trademark is to describe the type of product rather than
the producer, the trademark [is] a generic term and [cannot be] a valid trademark.” (e.g.,
SHOES)
crackers):
Special Rules for Classification of Certain Types of Marks

 Popular slogans, common phrases, memes, puns, and other types of informational or ornamental
matter - can register if distinctive and used as a trademark in a manner that functions as a source-
identifying trademark
1. Distinctiveness - classification on the Abercrombie spectrum: depends on the mark and goods or
services (e.g., slogan may be arbitrary mark for apparel)
2. Is matter used as a mark to identify goods or services, or does it fail to function as a mark due to
its inherent nature or the manner in which it is used?
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 Informational matter: provides information about the goods or services; social, political,
or religious messages or similar widely-used messages
 Ornamental matter: decorative use of the subject matter (e.g., display slogan or image on
the front of a T-shirt instead of on a hang-tag or label)
o Examples of marks refused registration on failure to function grounds (and/or lack of
distinctiveness): “Black Lives Matter” for apparel, “I ♥ DC” for apparel, “I Love You” for
jewelry, “Investing in American Jobs” for retail services, “Drive Safely” for automobiles,
“Think Green” for weather stripping, “Proudly Made in USA” for electric shavers, and an
image of Uncle Sam for games, food and beer
o Examples of registered marks: “Life is Good”, “I ♥ NY”, “Lifeguard”, and “Lettuce Turnip
the Beet” for apparel; “If you see something say something” for promoting public awareness
of public safety and security issues
 If a registrant’s right to use the mark becomes incontestable, that mark cannot be
challenged on failure to function or lack of distinctiveness grounds
TrafFix Analysis: Is this Trade Dress Functional?

1. TrafFix/Inwood “traditional” test: “‘In general terms, a product feature is functional,’ and cannot serve
as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of
the article’”
o May be functional if features covered in claims of a utility patent
o Utility patents can provide “strong evidence” of functionality and add “great weight” to Lanham
2. TrafFix/Qualitex “competitive necessity” test: “a functional feature is one the ‘exclusive use of [which]
would put competitors at a significant non-reputation-related disadvantage.’”
 If functional under TrafFix/Inwood test, “there is no need to proceed further to consider if there is a
competitive necessity for the feature”
o No need to apply TrafFix/Qualitex “competitive necessity” test
o No need to engage in “speculation about other design possibilities”
o If not functional under TrafFix/Inwood test (e.g., in cases of aesthetic functionality), apply the
TrafFix/Qualitex “competitive necessity” test
Apple v. Samsung (Fed. Cir. 2015)

 Ninth Circuit’s Disc Golf factors used to evaluate functionality
1. Whether the design yields a utilitarian advantage
2. Whether alternative designs are available
Ø If no  more likely functional
3. Whether advertising touts the utilitarian advantages of the design
4. Whether the particular design results from a comparatively simple or inexpensive method of
manufacture
Ø “However, the Supreme Court has more recently held that ‘a feature is also functional ... when it affects
the cost or quality of the device.’ See TrafFix”
Ø Federal Circuit then applies Disc Golf factors despite fact TrafFix didn’t apply or discuss all four
factors; note there is overlap in the analysis
62
 Burden of Proof on Non-Functionality/Functionality:
o Unregistered trade dress  Apple per 15 U.S.C. § 1125(c)(4)(A)
o Registered trade dress  Samsung since registration is prima facie evidence of non-functionality
Aesthetic Functionality Defense: defendant’s use of mark is functional
Priority and the “Use” Requirement

 To establish trademark rights, the plaintiff/applicant for trademark registration must prove it has priority
 Priority: plaintiff/applicant is first to use the mark to identify or distinguish the goods or services - it is
the “senior user” of the mark
Ø If mark or trade dress requires proof of acquired distinctiveness through use for protection,
priority only on date secondary meaning established
 Plaintiff/applicant can establish priority over “junior users” by
(1) actual use: being the first to use the mark or
(2) constructive use: filing an intent-to-use application before use or filing by others and then using the
mark in commerce within the statutory time period (6 months; can extend up to 3 years)
Ø Note also can get a priority if apply to register based on foreign application or registration – see
Lanham Act § 44, 15 U.S.C. 1126
 Geographic Scope of Trademark Rights
o Common Law/Unregistered Marks: right in geographic area where mark used and other areas
where there is market penetration based on sales or advertising and/or natural zone of expansion
 May be able to stop use by bad faith junior user in different regions
o Federal Registration: provides exclusive nationwide right of priority as of application date
subject to preexisting common law rights in area
Abandonment
 Can abandon a mark in various ways:
o Non-use of the mark: Defendant must prove two elements:
(1) Use of the mark has been discontinued and
Ø Non-use for three consecutive years is prima facie evidence of abandonment
o Act of omission or commission causes the mark to “lose its significance as a mark”
Ø Failure to police the mark against infringers: No or ineffective enforcement against
unauthorized use of mark by third parties
Ø Naked licensing: license mark without sufficient quality control - can abandon mark if
fail to adequately supervise those who license your mark and ensure consistent quality
(e.g., use periodic inspections)”
Ø “Assignment in gross” of the mark: assignment of mark without assigning tangible assets,
customer lists, formulas, or other types of goodwill can cause confusion regarding quality
 Result of abandonment?
o Cancellation of mark from federal trademark register
o Mark is invalid and is not enforceable against third parties
o If use abandoned mark again later, use later date to determine priority
Advantages of a federal trademark registration

 Listing in USPTO’s online databases provides notice of claim to the mark
 Used by USPTO to refuse registration of other confusingly similar marks
 Right to use federal registration symbol ® (can use TM without registration)
63
 U.S. registration can help TM owner obtain registration in foreign countries
Benefits of Registration on the Principal Register
 Legal presumption of validity, ownership, and the exclusive right to use the mark nationwide for the
goods or services listed in the registration
 Constructive notice of registrant’s claim of ownership of the mark
 Confers a nationwide right of priority and constructive use date upon filing
 Ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent
importation of infringing foreign goods
 Can sue under 15 U.S.C. 1114, which has certain evidentiary advantages
 Can get statutory damages against counterfeiters
 Mark can become incontestable after five years upon application to USPTO
Benefits of Registration on the Supplemental Register (secondary register)
 Can register marks not eligible for registration on Principal Register, but which are still capable of
distinguishing the applicant’s goods or services (e.g., descriptive terms or product designs without
secondary meaning)
Ø Registration confers no substantive trademark rights in the U.S.
Park ‘N Fly v. Dollar Park and Fly (U.S. 1985)

 Can apply to establish incontestable status of registered mark after five years – requirements set forth in
Lanham Act § 15, 15 U.S.C. § 1065
 Benefit of incontestability under Lanham Act § 33(b), 15 U.S.C. § 1115(b)?
o “To the extent that the right to use the registered mark has become incontestable. . . the
registration shall be conclusive evidence of the validity of the registered mark and of the
registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the registered mark in commerce. . . .” subject to conditions of Lanham Act
§ 15 and defenses in Lanham Act § 33(b)
 If a descriptive mark is incontestable, can the accused infringer argue the mark is invalid because it has
no secondary meaning?
o No; such a mark is presumed valid, but plaintiff must still establish a trademark violation and the
defendant can still establish it has an affirmative defense (e.g., descriptive fair use, antitrust
violation, etc.)
 Possible grounds for challenge of an incontestable mark?
o See grounds for cancellation of a mark listed in Lanham Act § 14, 15 U.S.C. § 1064: mark is
generic, mark is functional, fraud in obtaining the registration, or a violation of 2(a), 2(b), or 2(c)
Elements of a federal trademark infringement claim in the Ninth Circuit

1. Plaintiff owns a valid mark entitled to protection under the Lanham Act
goods or services
6. Commercial use of the mark
Elements of a federal unfair competition claim

(A)
64
Plaintiff
Likelihood of Confusion (LOC) Factors

1. Strength of Plaintiff’s mark: LOC more likely if plaintiff’s mark is strong – mark has (a) conceptual
strength (it is inherently distinctive) and/or (b) market strength (secondary meaning and/or is famous)
2. Proximity of the goods: LOC more likely if goods are competing or related; if goods are unrelated,
under current law LOC about affiliation, connection, sponsorship, or approval is still possible
3. Similarity of the marks: LOC more likely if marks identical or similar; consider similarity of sight,
sound, and meaning of mark as used in the marketplace; less similarity required if goods/services
identical
4. Evidence of actual confusion: LOC more likely if actual confusion by reasonable purchasers per
documentary evidence (e.g., misdirected emails), testimony by employees, consumer surveys
5. Marketing channels used: LOC more likely if parties sell and/or advertise their goods or services in the
same channels of trade
6. Type of goods and degree of purchaser care: LOC more likely if good are cheaper and/or purchasers
are less careful when shopping
7. Defendant’s intent in selecting the mark: LOC more likely if bad faith intent to confuse; can reduce
LOC with house mark, disclaimer
8. Likelihood of expansion of product lines: If good already competing, factor is irrelevant; if goods not
competing, LOC more likely if one party is likely to start selling the goods of the other party
Nominative Fair Use

 Defendant used plaintiff’s mark to refer to plaintiff or its goods/services
 Ninth Circuit created doctrine in New Kids on the Block v. News Am. Publ’g (9th Cir. 1992), applied it in
Playboy v. Wells (9th Cir. 2002) and refined it in Toyota Motor Sales USA v. Tabari (9th Cir. 2010)
 Use of plaintiff’s mark is a nominative fair use if satisfy three elements:
1. Product is not readily identifiable without use of the plaintiff’s mark
2. Defendant did not use more of plaintiff’s mark than was reasonably necessary to identify the
goods or services
3. Defendant did not falsely suggest it was sponsored or endorsed by the trademark holder
 Toyota Motor Sales USA v. Tabari (9th Cir. 2010) clarified doctrine
1. Test replaces likelihood of confusion test in Ninth Circuit
2. Plaintiff has burden of proof - once defendant shows it used plaintiff’s mark to refer to plaintiff’s
trademarked goods, plaintiff must establish that defendant’s use (e.g., buy-a-lexus.com) was not
a nominative fair use, and thus is likely to cause confusion
 Important Note: “Nontrademark use” (use of a mark otherwise than as a mark/other than as a
designation of source) is different than “nominative use” (use of the mark to refer to the markholder or
its goods/services) but there is overlap
Descriptive Fair Use (DFU) under 15 U.S.C. § 1115(b)(4)?

1) Is the defendant’s use of the trademarked term “a use, otherwise than as a mark” (a nontrademark
use)?
65
o Is term being used as an identification of source or to otherwise attract public attention (consider
use of TM symbol, type style, size, location, prominence of words)? If yes  more likely TM
use and not DFU
o Any precautionary measures taken to minimize risk that term will be understood in its trademark
sense (e.g., use with house mark, disclaimers, etc.)? If yes  suggests not TM use and more
likely DFU
(2) Is the use “only to describe the goods or services” of defendant?
o Did defendant use the word in its primary, descriptive sense or for its primary descriptive
meaning? If yes  more likely DFU
o Third party use of term in descriptive sense? If yes  more likely DFU
(3) Is the term “used fairly and in good faith”?
o Did the defendant intend to trade on the plaintiff’s goodwill or create confusion? If yes  bad
faith and likely not DFU
o Knowledge of trademark? If yes  not sufficient to show bad faith
o Failure to conduct trademark search or otherwise investigate  some courts say not sufficient to
show bad faith, but others say carelessness may render use objectively unfair and can infer bad
faith
Tips for the Exam: How to Organize Your Trademark Law Outline - Part I
Is [the proposed trademark or trade dress - X below ] a valid trademark or trade dress?
 Is this protectable subject matter under trademark law?
o Discuss if [X] is a word, name, symbol, or device (or combination of these) used to identify and
distinguish certain goods or services. Describe trade dress in detail. List goods/services.
 Was [X] registered with the USPTO for these goods/services? Is right incontestable?
o Discuss date of registration. Benefits of registration include presumption of validity and nation-
wide scope of rights subject to prior use of mark by others and other rules.
o If right is incontestable, validity can only be challenged on limited grounds (e.g., generic,
functional, abandoned) and not on lack of distinctiveness or failure to function grounds.
 Was [X] used in commerce in connection with these goods/services?
o Apply “use in commerce” rule in Lanham Act for the goods or services.
o Discuss date of first use and who has priority in the mark due to use or registration.
o If mark is not registered, discuss the geographic scope of the trademark rights.
o Discuss if mark was abandoned due to nonuse, naked licensing, or for other reasons.
 Is [X] distinctive for these goods/services?
o Apply Abercrombie test, generic term test, Seabrook test (for logos, product packaging, décor),
rule that colors and product designs are not inherently distinctive, other tests (e.g., surname).
o Discuss if [X] has secondary meaning for these goods/services (if relevant).
 Is [X] not functional for these goods/services?
o Apply tests in Traffix and Disc Golf (Ninth Circuit litigation) or Morton Norwich (at USPTO)
 Is there any other reason [X] should not be registered or protected under TM law?
o Discuss any relevant bars to registration in the Lanham Act (e.g., deceptive, falsely suggest
connection, flag, name or image of person w/o consent, likelihood of confusion or dilution).
o Consider if informational (expressive) or ornamental matter that fails to function as a mark.
Tips for Organizing Your Essay Answer (and your outline) – Part I
Heading or First topic sentence – valid mark?: Does [your client or a third party] have valid and protectable
trademark rights in [mark/trade dress: word or stylized mark, logo, slogan, product packaging, product
configuration, décor, color, etc.] for [goods/services]?
66
First paragraph – protectable trademark subject matter?: First issue is whether [mark/ trade dress] is a
[word, name, symbol, device, or combination of these] used in connection with [goods or services]. Conclusion
(e.g., This subject matter can be protected by trademark law as long as the mark is distinctive, not functional,
and satisfies the other requirements in the law).
Next paragraph(s) – priority through use or registration? The next issue is whether [X] is registered or was
used in commerce. [Discuss these issues, geographic scope, incontestable, etc.]
Next paragraph(s) – distinctive?: The next issue is whether the [mark/trade dress] is distinctive for
[goods/services]. To answer this question we apply the [Abercrombie test, Zatarains tests, or Seabrook test; rule
that colors and product designs cannot be inherently distinctive]. [Set forth law and then apply it, or combine
your legal analysis and clearly set forth the law and apply it to the facts, using mini-IRACS for each topic
(fanciful, arbitrary, etc.; common, unique, etc.) and include the best arguments of both parties.] Conclusion.
Next paragraph – secondary meaning?: Does this [mark/trade dress] for [goods/services] have secondary
meaning? Plaintiff will argue [list facts relating to sales, advertising, surveys, etc. that favor plaintiff].
Defendant will argue [list facts that favor defendant]. Conclusion.
Next paragraph – not functional? The next issue is whether the [mark/trade dress] is not functional for
[goods/services]. To answer this question we use the [Traffix two-part test, Disc Golf test, or Morton Norwich
test]. [Set forth law and then apply it, or combine your legal analysis and clearly set forth the law and apply it to
the facts, using mini-IRACS and include the best arguments of both parties]. Conclusion.
Next paragraph(s) – any other bars to registration or protection? Issue is topic sentence. Then discuss law
and apply it with best arguments on both sides. Conclusion.
Last paragraph – conclusion: The court or USPTO is/is not likely to find mark/trade dress valid.
Tips for the Exam: How to Organize Your Trademark Law Outline – Part II
Is plaintiff likely to prevail on its trademark or unfair competition claims against defendant?
 Does scope of plaintiff’s trademark rights extend to the geographic area where the mark is used by
defendant? Nationwide scope for registered marks; common law rights based on use
 Federal Trademark Infringement and/or Unfair Competition? 15 U.S.C. §§ 1114, 1125(a)
o Apply elements of infringement and/or unfair competition claim and likelihood of confusion
factors; discuss type(s) of confusion (source, affiliation, initial interest, etc.)
o If successful parody, may influence analysis; no liability if first sale doctrine applies
o If defendant uses mark to refer to trademark owner or its goods or services, apply the Ninth
Circuit’s nominative fair use doctrine
o If defendant uses mark in title or content of an artistic or literary work or in another expressive
work, apply the Ninth Circuit’s version of the Rogers balancing test
o Discuss any relevant defenses (e.g., descriptive fair use) not discussed in validity analysis
 Dilution by Blurring or Dilution by Tarnishment? 15 U.S.C. § 1125(c)
o Discuss only if the mark is famous. Is mark famous? Discuss factors proving it is famous
o Apply elements of a dilution by blurring and/or dilution by tarnishment claim and factors
for each type of dilution; if successful parody, may influence analysis
o Discuss any relevant defenses/exclusions from liability in 15 U.S.C. § 1125(c)(3)
 Anticybersquatting Consumer Protection Act Violation? 15 U.S.C. § 1125(d)
o Discuss only in disputes involving registration, trafficking in, or use of domain names
incorporating another’s mark. Does a domain name include another’s mark?
o Apply elements of an ACPA claim and the bad faith intent factors
o Discuss whether the safe harbor in 15 U.S.C. § 1125(d)(1)(B)(ii) applies
 Indirect Liability? Contributory Infringement? Vicarious Infringement? Apply elements
TM Remedies: injunction, profits, damages, costs, attorneys’ fees, criminal penalties
67
Other Theories of Liability? False Advertising? Right of Publicity? – apply elements of claim in Ninth Circuit
or California state law; relevant defenses; remedies
Tips for Answering Essay Exam Questions

 Short intro (one sentence) is sufficient; don’t summarize facts in intro—apply later
 Organization: Use a logical organization (e.g., Valid TM? Infringement? Dilution? Defenses?
Remedies?) with headings & subheadings &/or effective topic sentences
 Use “IRAC” organization; discuss law, analysis, & conclusion for each issue (distinctive mark?) before
discussing next issue (functional?) Also use several mini-IRACs for each requirement and/or element or
factor in a multi-factor test
 Use the “TM Analysis” PowerPoint Slides to spot issues and organize your answer
 Issues: Determine which issues are important (spend the most time on these issues), what issues are
uncontroversial (raise these issues but do not discuss for more than 1-2 sentences), and what is not an
issue (don’t discuss those issues)
 Do not list all potential issues in your exam – only discuss issues raised by the facts
 Rules/Law: Set forth law in accurate, concise, & organized way, including law in statutes and judge-
made common law in cases (e.g., Abercrombie spectrum, AMF v. Sleekcraft LOC factors); avoid
paragraph of all laws -> discuss laws in mini-IRACs
o Focus less on statutory language and more on the requirements or tests for an issue (e.g.,
requirements for a valid mark); Discuss all elements or factors of a multi-factor test (e.g.,
infringement elements, likelihood of confusion factors)
o Ok to combine law & analysis to save time if law clear (e.g., LLC will argue mark is arbitrary
b/c no connection between word LIFEGUARD and goods: apparel)
o Not necessary to quote statutes or cases; if quote, only quote relevant portions
o Only discuss facts of cases when comparing them to facts on exam; be brief
o First word of case name is sufficient to identify case; full cites not needed
Tips for Answering Essay Exam Questions

 Don’t cut & paste law from previous sections into new sections; just apply law
 Analysis: Apply law to all the relevant facts provided in the exam or note if you need more facts;
assume facts in exam are true; don’t make up facts
o Apply law (tests, elements, or factors) to any facts you have right after you discuss the law (e.g.,
apply Abercrombie test to facts before you discuss Seabrook test and apply it to the facts; apply
law relating to the similarity of the marks—consider appearance, sound, meaning—to the facts
before you discuss the next AMF likelihood of confusion factor)
o Do not summarize all laws in one paragraph or section, and then apply all the laws in the next
paragraph or section; use mini IRACs for each requirement, element, or factor
o Unless the answer is clear (e.g., no consent to use mark), set forth arguments on both sides for
each issue and decide which side has the best argument – this is your conclusion for that issue or
sub-issue
o Support arguments by noting whether facts are similar to or different from the cases with a
conclusion you like
 Conclusions: conclusions should be short and follow from your analysis
 Make your exam easy to read and grade: identify issues in headings or topic sentences; use many
paragraphs; number elements or factors of tests
 Pay attention to points allocated; discuss all questions for maximum points
68

Trademark Attack Sheet:outline

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TRADEMARK ATTACK SHEET

Introduction to Trademark Law

Where does Congress get its power to regulate trademarks?

The Function(s) of Trademarks

How to Think Like a Trademark Attorney

Lanham Act § 45, 15 U.S.C. § 1127 Definition of a “Trademark”

Lanham Act § 45, 15 U.S.C. § 1127 Definition of a “Service Mark”

Lanham Act § 45, 15 U.S.C. § 1127

Certification and Collective Marks

Types of Nonverbal (Nonword) Identifiers That May Qualify as Trademarks

Establishment of Trademark Rights

Inherent vs. Acquired Distinctiveness

Is the mark Suggestive or Descriptive?

Secondary Meaning/Acquired Distinctiveness

Proving Secondary Meaning/Acquired Distinctiveness

Special Rules for Classification of Certain Types of Marks

Elliot v. Google (9th Cir. 2017)

USPTO v. Booking.com (U.S. 2020)

Tests for Evaluating Whether a Mark is Generic

If term or symbol is generic, unfair competition claim may still be available

c. Distinctiveness of Trade Dress and Product Configuration

Two Pesos v. Taco Cabana (U.S. 1992)

Testing Nonverbal Identifiers For Inherent Distinctiveness – the Abercrombie test

Testing Nonverbal Identifiers For Inherent Distinctiveness – The Seabrook test

d. Product Configuration, Colors, and other Nontraditional Trademarks

Qualitex v. Jacobson Products (U.S. 1995)

Wal-Mart Stores v. Samara Bros. (U.S. 2000)

Trade Dress Distinctiveness

Ø Need secondary meaning if trade dress is not inherently distinctive

Analysis to Use When Determining Distinctiveness of a Mark or Trade Dress

Qualitex v. Jacobson Products (U.S. 1995)

Lanham Act Provisions Regarding Functionality

TrafFix Devices Inc. v. Marketing Displays Inc. (U.S. 2001)

Apple Inc. v. Samsung Electronics (Fed. Cir. 2015)

Apple v. Samsung (Fed. Cir. 2015)

Examples of Aesthetic Functionality

Test for Aesthetic Functionality

Aesthetic Functionality Defense: Defendant’s Use of Mark is Functional

Zazu Designs v. L’Oreal (7th Cir. 1992)

Priority and the “Use” Requirement

Use Requirement in the Lanham Act

Priority by Actual Use

Priority by Constructive Use

Verified Statement of Actual Use - Lanham Act § 1(d), 15 U.S.C. § 1051(d)

3. Trademark Office Procedures

a. Principal v. Supplemental Register

Advantages of a Federal Trademark Registration

b. Grounds for Refusing Registration

Lanham Act § 2, 15 U.S.C. § 1052 Grounds for Refusing Registration

Lanham Act § 2, 15 U.S.C. § 1052 Grounds for Refusing Registration

Possible First Amendment Challenges After Tam?

Descriptive Marks - Lanham Act § 2(e)(1)

Geographic Marks - Lanham Act § 2(e)(2) & (3)

In re Nantucket (CCPA 1982)

Primarily Geographically Deceptively Misdescriptive Terms - Lanham Act §2(e)(3)

Deceptive Marks (§ 2(a)) vs. Deceptively Misdescriptive Marks (§ 2(e)(1))

Name Marks - Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4)

Surnames (and other names) - Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4)

Failure to Function Doctrine (not in CB)

Concurrent Registration - Lanham Act § 2(d), 15 U.S.C. § 1052(d)

Concurrent Use of the Same or Similar Marks is Permitted in Certain Circumstances

Park ‘N Fly v. Dollar Park and Fly (U.S. 1985)

Trademark Liability Analysis