Trademark Notes What is trademark law about?

- Start by thinking of tradmark law as a system of rules to regulate certain symbols in commerce. - Its about control of those symbols but sometimes bleeds over to control of them in communications that are not commerce. Ex. mattel suit over barbie girl song. The First Amendment in this way comes into play. - The 1st regulates the use of words and symbols. - Ex. attorney at law someone who uses this or m.d., etc. who is not autorized to do so is subject to penalty. - Ex. someone who misuses the term ibuprofen or any other pharmaceutical name can be sanctioned. Trademark law is just one of a subspecies of regulation of communications. We regulate in this way b/c we believe it increases the overall utility of the society. How does this regulation increases efficiency/utility? - TL is a form of consumer protection. o TL is the oldest form of consumer protection laws. - It is also from an economic perspective a means to maintain efficient communications. o Trademarks function tremendously to promote the differentiation in communication by calling something by its names rather than trying to describe something when there is a wide variety. - It economically motivates product differentiation. At some point trademarks became goods in and among themselves. This has occurred globally not just in the US. TL has two big spheres of influence: - Consumer protection o 3 mentioned above. More efficient communication. - Producer Protection o The interest is in protecting exclusive value in symbols. The two overlap sometimes and can lead to different results in the producer protection area. 2 principle causes of action in TL 1) Likelihood of Confusion (we focus on this the most 9095%) and 2) Dilution means to weaken the trademark and this is of the most interest to producers b/c it takes away the symbols and their value. Quality Inns International v. McDonalds Corp. (p. 1) P wanted to create Inns beginning with the name beginning with Mc and D sued claiming that would infringe the trademark using Mc in front of anything. P was a large corporation and had 3 hotel chains previous to adding McSleep to the company. It is a hotel company already with 3 trademarks (Clarion, Quality Inn, and Comfort Inn). They have already begun engaging in product differentiation. They want to expand into economy and luxury hotels but they dont expand their currents trademarks to this b/c those trademarks already have given consumers expectations about what is available at their current trademarks. Thus they want the new trademark of McSleep to do this.

Quality Inn Intenational v. McDonalds (cont.) D is already in the hotel business and has several marks. The marks are Clarion (luxury), Quality Inn (luxury budget), and Comfort (Luxury Budget). It makes sense that D doesnt want to move any of these marks into other service areas b/c it blurs what those marks represent. They want the trademark to clearly communicate a lot of information quickly. Thus they need more trademarks. Specifically the need a superluxury mark and an economy mark and for the economy they create McSleep. They get a legal opinion that this name is ok and make an announcement. McDonalds sends them a letter asking them not to use the name. D sues for declaratory relief and P countersues. Defendant CEO, Mr. Hazard, says he got an epiphony while sleeping for the name and wrote it down. He claims the name McSleep conveys exactly the types of characteristics the hotel should convey which is quality for a low price but good enough for those with low and high incomes. Page 4 at bottom. He says the Scottish surname conveys thrift and consistency. Then we see a lot of information that he did in fact have McDonalds in mind when he came up with the name and in his presentation to the board he makes a direct reference. Then on page 5-6 we see that Hazard knew about McStop idea b/c the company was already trying to enter into a joint venture to work with them on the McStops. The problem is that the regional manager sent this information to Hazard and then he sent it to his VP of franchising. Even more damning is that the survey done on page 7 done by D before they launching the hotel said that out of 120 people interviewed over 40 respondants volunteered they believe there was an association with McDonalds AND their ad agency asked for indemnity agreement which they never asked for b/c they thought there was a good chance of being sued by McDonalds. So with all of this it seems like a prima facie case that hazards intent was to in some way rely on the general meaning we all have for McDonalds. We must ask, even if we think Quality Inn is culpable just how far does McDonalds rights go? Do they get rights over MacIntosh? Mactree? Etc. Trademark doctrine gives us the doctrinal limits in terms of the core concepts of consumer protection. Top p. 12 is a big clear stmt of what trademark law is about. Very important. Likelihood of confusion is the key concept. And it refers to the source of the goods or services but as trademark law has expanded it now includes confusion as to association, affiliation, endorsement or sponsorship. These new areas includes the source of the goods and we include these new concepts b/c of the expansion of capitalism. Quality Inn raised 4 defenses on top of page 2. #2, 3, & 4 are only analytic routes to get to #1 which is in fact the real issue. Except when we talk about dilution. Thus the issue is always likelihood of confusion. Genericness What does this defense mean? The meaning has changed. It no longer means the source of the good it means the entire category of the goods. Once your word meant the source of the goods; it came from your company. But since you were so successful your trademark began to mean the entire product category and since you allowed that to happen the word has become generic by taking on this broader, general meaning. Ex. Sulofane, Aspirin (in US), escalator, thermose, etc.

The argument here was that the name Mc has become generic. The court does not embrase this argument because most of the names using Mc are allusions to McDonalds. They use the prefix in order to embrace the services the McDonalds uses and has built up over the years. Essentially they say they are literary allusions to McDonalds itself. Extensive Third Party Uses of Mc Third party extensive use is important in trademark b/c it goes to a lot of issues. There are a lot of competing uses of marks in commerce that we allow while still allowing trademarks. The defense is that a lot of other people use the word and thus there is no likelihood of confusion. Ex. Dove soap bars & Dove chocolate bars. Thus 3rd party use goes to the strength of the mark in the marketplace. Also, what happens is that a few people will use the mark and one company will become increasingly powerful in the marketplace. We are told that there are other 3rd party uses of Mc throughout the country and the cases gives examples. In fact some of the uses preceded McDonalds. The trademark exposure of McDonalds is massive. There are 3 arguments that can be raised under this heading: - Estoppel in Acquiescence Argument o Doesnt help Quality Inn here. o It doesnt help b/c McDonalds never acquiesced in their use of the name and it works individually. Even though they tolerated McMaid in the midwest but it doesnt apply to Quality Inn and McSleep and especially when they got a prompt cease and desist letter from them. - Abandonment Argument o If there is a lot of 3rd party use of your trademark you could say it isnt yours anymore. o This is similar to the genericness doctrine. Both essentially say the mark has lost its meanings as to you as the source of the goods or services. Genericness adds the step that in addition it has a new meaning and goes to the type of the good. w/ abandonment there is no second step. o The court says this is a ludicrous argument as against McDonalds. - Weakening of the Trademark Argument o 3rd party use is an important indicator as to whether the trademark has been weakened. This case doesnt analyze this argument a lot though. If there are a lot of people using the term Mc then it is harder for McDonalds to claim their use is a trademark. Likelihood of Confusion Remember that the issue is actual confusion or liklelihood of confusion. Actual confusion is one of the measures of likelihood of confusion. We cant have actual confusion in this case though b/c the product hadnt been launched yet so instead both sides held surveys to determine if there would be confusion. Survey evidence is usually taken as a proxy for actual confusion. Survey Conducted by Dr. Zeisel for McDonalds: - Phone Survey o 2 Questions are on page 10. o 31% answered McDonalds in terms of connection to McDonalds.

Mall Intercept Survey o 31% also answered McDonalds. Survey Conducted by Dr. Jacoby for Quality Inn: - Mall Intercept Survey o Used visual ads and other visual stimuli to see if there was confusion. o But he included By Quality Inn International to the signs in order to get the answers he was looking for. o About 16.3% still believed the hotel was associated with McDonalds and 21.4% even with the clarifying language believe the hotel was owned or sponsored by McDonalds. And here the court says this is the most indicting evidence of confusion. The court says that the survey by the junior member even when scewed to get the answer they wanted 20% still were confused and this is too much. Trademark law in a sense does treat all of us like Pavlovs dogs. We get a sign and are trained to think a certain way based on the stimuli. And we want to know if we are confused among them. Even if we think this is a slam dunk for McDonalds we have the question about how far their rights go. On top of p. 23 dr. Zeisel found there was confusion as to McTravel but not to McTavish b/c it sounds like a real scottish last name. Thus it would seem that if hotels were opened with a real scottish name there probably wouldnt be confusion. So the problem is that if you put Mc with any other generic word in the dictionary it seems to create some kind of reference to McDonalds and we need to know how far it can go until it causes confusion. Page 21: you see the 4th and 2nd circuits multifactor tests. KNOW THE POLAROID TEST FOR LIKELIHOOD OF CONFUSION FROM THE 2ND CIRCUIT!!!! Always keep in mind the differences when we want to protect consumers and producers. Also, keep in mind that when we refer to a service-mark we are referring to a service but a trademark is an umbrella concept covering everything in modern trademark law. Broadly speaking when we say trademark we also mean protection of trade dress. - Trade dress is tha packaging or design of a product which ends up serving the function of telling the consumer the source of the goods of consumers. o Ex. unique shape of a coke bottle. o We will get to product design where when a product is designed in a particular way the person will claim it is a trade dress and protectable under trademark. Restatement (p. 83) - notice the catchall phrase designation - very general definition - the definition doesnt say anything about meaning or signifiers. But it does say that the trademarks distinguish goods from other goods or from other producers and this is the key to trademark law. Trademarks really start as a means of denoting ownership and this made sense with simple transactions. Guilds used these marks in production and used them to denote your membership in

the guild and that the thing being sold came from your shop. This became a source of early liability laws. The trademark for the guild is an early ancestor of a certification mark. Its not a mark that says it comes from a particular producer but that it means particular standards. When we say indications of source we mean production source not geographic source in US but may be in other countries. Trademark subsumes all of this in the US. Registered certification marks: ex. Florida Oranges, washington apples, Idaho potatoes, etc. shows the source in its trademark. We have a taxonomy of trademarks: - At top (originial class) are fanciful or arbitrary words or symbols. o See page 83. o Word, name, symbol, device, or other designation. Other designation can refer to all kinds of things. o Anything that helps the consumer identify a good and indicate its source. - At Bottom (opposite end) is any generic product. o When it is an indication of good and not source. - Just above the genericness are Descriptive marks that acquire secondary meaning. o These are terms where you could make guesses about the mark even without knowing anything about the product. Kellog v. NABISCO (p. 84) Nabisco has been making Shredded Wheat cereal for many years under a patent. In fact they were making it under patent since 1930 when they acquired the company making it. Dr. perky invented and patented the shredded wheat, formed the company and sold it to Nabisco. The patent eventually expired and Kellog then begins producing shredded wheat also. So Nabisco attempts to stop Kellog from using the name Shredded Wheat and from producing it in a pillow shape. By making the pillow shape claim, you are making a trade dress claim. The DC found in favor of Kellog but the Circuit Court affirmed the DC and then strangely reversed. So the Circuit court gave the trademark and trade dress (p. 85) Page 85 shows the parties contentions. - Nabisco admits their patent expired and no longer has exclusive right to make it. But that they still have exclusive right to use name and form b/c both are trademarks. The SC holds as to the name that there is no exclusive right to the name b/c it is a generic term. Thus you cant have any trademark in this b/c its not an indication of source but the name of the generic category of products. They think shredded wheat is a generic phrase b/c they use the patents against them. The patents are supposed to be scientific explanations of the product and in the application he used shredded wheat to describe the product over and over again. BUT Nabsico then says on bottom half of p. 86 that even though this is true, it has now acquiered secondary meaning and consumers identify shredded wheat with Nabisco. Secondary meaning it means second in time and not second in importance. if it is a descriptive term with secondary meaning it can serve as a trademark. They dont win this argument either but keep in mind this is a more than adequate argument and in many cases it succeeds. But here the court says that to establish a secondary meaning it must show more than a subordinate meaning but that the meaning is attributed not to the product but the producer. The secondary meaning must become the primary meaning.

ex. American Airlines, United Airlines, United technology, United Van lines, Consolidated Freight, Raisin Bran, etc. These are all purely descriptive terms.

Nabsico also lost on the pillow shape claim. BUT Kellog doesnt get a free ride to do anything they want. On page 87 at bottom, Kellog still needs to differentiate their product enough so that they dont free ride on the notoriety Nabisco created for its product. Coca-Cola v. Koke (p. 89) Koke decided to create another product with a similar name and Koke defended its position by saying Coke didnt have a valid trademark by putting a fraud on the public. Holmes notes that Coke has a lot of goodwill and admits that there was a time when the goodwill was helped by the prescence of cocaine. But cocaine has been eliminated for some time by the time its at the SC but they still use the coca leave and put a coca leaf on the product which could suggest there might still be some in the drink. Coke defended this on the grounds that they still use coca leaves themselves although they no longer put any cocaine in the drink. And this is clearly a defense that they werent misrepresenting the product. The main argument is that the continued use of the name is a representation isnt true. Essentially it is a bad faith or unclean hands defense Koke uses against Coca Cola. Holmes doesnt think much of the defense. He says there is a secondary meaning to Coke and everyone knows there is no cocaine except for a few stupid people. He says we are dealing with a popular drink and not a medicine and increased sales since elimination of cocaine has come from advertising. The important holding for our purposes is the issue about secondary meaning. Holmes concludes that Coca Cola means to most person a familiar drink available at all fountains attributable to the producer and thus has attained secondary meaning. Notice the pattern of the case it is Coke begins as a descriptive term (cola meaning a carbonated beverage and coca referring to its cocaine content), D says the descriptive term became fraudulant when it no longer described the content, and Cokes response is Holmes conclusion that the phrase is no longer a descriptive term but a term that has become so powerful that it has overwhelmed the descriptive term. Slogans (p. 90-91) They are trademarkable. Ex. moving air is our business They are protectable. What we should get from this is that slogans question was settled quickly. Our first thought would be that this protects producers but as long as we believe in free speech companies will develop slogans and we will be conditioned to attach them to the companies. If there was misuse that could produce consumer confusion and so consumer protection might be the goal. Professor thinks slogans are past their prime now b/c most advertising campaigns are very short and go through different slogans more quickly overtime. Personal Names (p. 92) It used to be a sacred right that one could use your name on your product. Then it evolved to the idea that if the name attained a secondary meaning the second in time could be enjoined (ex. McDonalds).

Then the court retreated and wouldnt give injunctions unless there was bad faith or fraud and would require some alterations to the second name. - Waterman v. Modern Pen (p. 93) two producers making pens and the Ds name was Arthur Waterman and P is a famous pen company. The court came to a compromise to avoid consumer confusion, said you have a right to use your name but we wont let you freeride off the Waterman companies fame also so if he wants to make pens and put his full name he will also need to put a disclaimer. Now the court will only enjoin when there might be consumer confusion but the state of mind doesnt matter. A name is a descriptive phrase. Ex. if you stamp a sword McDonald you are just describing it as made by McDonald. So when you use your name as trademarks arent arbitrary or fanciful unless you used a name that isnt yours. We were starting to look at the range of things that can count as a trademark and we took sidetrack to see use of names. Now we are going back to the pure and simple question and basic understanding of the range of things that can serve the function of a trademark. Qualitex v. Jacobson Products (p. 96) Issue: can a color be registered as a trademark? Weve already seen a range of things that arent words serve as a trademark: shape of shredded wheat, color combo on can of pepsi and coke, etc. This is called trade dress. You can think of this case as, the claim that a color is a trademark as the absolute minimum of trade dress that could qualify as a trademark. P was using a green-gold color of its pads used in dry cleaners that the company has been using since the 1950s and this is a 1995 case. The D created a pad similar in color to Ps beginning in 1989. The 9th Circuit said that color alone cannot count count as a trademark. The SC said color along can count as a trademark if it attained secondary meaning. The SC also says nowhere in the statute does it say colors cant serve as trademarks. Look at the definition of a trademark and a color on page 97 toward the bottom. The court asks if a color can identify or distinguish the goods of a manufactuer The answer is yes, a color can serve this function once it has obtained secondary meaning. Youll see that this definition, section 1127, is the definition of a trademark but you will find that throughtout course other sections and specifically the Lanham Act will be referred to. The Act was passed in 1946 and had section #s in the act and in the statute they acquired different #s. frequently you will see things cited by the statutory number and sometimes by the section #s in the Lanham act. The definition above is section 45 under the Lanham Act which is the same thing. Referring back to our chart: Fanciful or Arbitrary Suggestive Marks

Descriptive (must have secondary meaning) Generic These things are always in relation to a product. But colors are never these things in relation to a product. Products can be any color, so color doesnt have this relationship that words do to products or to services. So for this reason there will never be a such thing as an arbitray or fanciful color in relation to a product for example (but we really shouldnt say never b/c it could happen). THUS, all colors fall under the descriptive category and can only serve as trademarks if they acquire secondary meaning. - the principle is stated under the definition on page 97. - Color doesnt automatically tell a consumer it refers to a brand but could obtain secondary meaning over time. - Principle: if a descritpive word can acquire secondary meaning and becomes a trademark then anything that can acquire secondary meaning indicating the source of the good then under the definition of a trademark it can be one. Functionality Issue: the doctrine is that if this aspect of the product, here color, is necessary to compete in this area of products then we wont let anyone claim it as a trademark. - ex. I manufacturer industrial site extension cords and I make them in yellow and orange. You wouldnt be able to get a trademarks b/c in worksites we want people to be able to see them for safety reasons and so a trademark would limit competition. - In this case there is no functionality to these pads. They dont need to be green-gold to work in their capacity. One argument on page 102-103 is simply older cases that pre-1946 had ruled that single colors cant be trademark. The SC simply says that in 1946 Congress re-wrote trademark law and expanded it greatly so the older cases are irrelevant. Also see an argument that Federal Circuit court allowed trademark of pink insulation and congress or courts didnt move to change that ruling. - this is a suspect argument though. There is also an argument on page 100 permitting trademarks on colors b/c of the shades of grey argument that depending on lighting and such you cant always narrow down exactly what color is being used and would create a lot of litigation based on what a color is or is not. This is clearly a losing argument b/c you are basically telling a court they are too dumb to tell the difference between colors. Argument on page 101 is the color depletion argument. If you let people trademark colors you will run out of colors to use. Remember that trademarks are category specific and apply only to particular products. Pink is for insulation from that company NOT sandwiches. The court says that if this is ever a problem it would be so rare and we shouldnt draw the inference of a rule against a whole category of activity. p. 102 (starred paragraph) the court says that when a color is an important product ingredient it may be serving some important functional role; functional could be aesthetic. Ex. maple syrup brown serves an important functional role with syrup and you wouldnt let anyone get a trademark for that. It serves an aesthetic functionality. Functionality may be a function of consumer expectations and to compete effectively you have to use those aesthetics and if thats true then you underline the functionality argument of the SC. If a color is an important ingredient to compete in a category then it cant be trademarked. This will apply to shape also.

Question 2, page 105: - No. Question 1, page 105: - if it is aesthetically functional for the category and multiple people are using it then it defeats any inference that someone themselves acquired secondary meaning. Scents:

Sounds:

In re Clarke (this will be on the exam) yes, but it has to be distinctive. In re General Electric Broadcasting (p. 107) o They werent given trademark rights over these ship sounding bells. o General Electric failed to show that the sound attained secondary meaning in relation to the stations services. (p. 108) There are some well known registered sound marks bootup sequence on microsoft systems, intel, harlem globetrotters. Bottom p. 107-108: judges always make implicit assumptions about human psychology. They say that sound marks will be different when based on aural perception of the listener when it is so distinctive or different that it attaches to the subliminal mind of the listener. o So there is a whole theory of cognition, about how people acquire associations in their heads. o They are saying sounds are different and harder to get rights over b/c they are fleeting which makes it harder than words or pictures we see all the the time to remember and associate. This is b/c it doesnt attach to a product in the same way classical trademarks do.

Differences between Generic and Descriptive Categories: - Substantive - We say as a matter of doctrine that a generic phrase is a basic word and ones we use all the time but a descriptive phrase can be adjectives that are less basic and we dont use all the time (plastic bottle with corregated sides). - Legal Difference once the court says a trademark falls under the generic category it can NEVER attain secondary meaning. It is gone forever. But if it is descriptive you can eventually claim secondary meaning. Ralph Brown Reading (p. 70) He is complaining about advertising issues and whether we are being led around by our noses. Top of page 71, the quotation from Justice Frankfurter. - this paragraph is about a set of premises of trademark law that are oriented to protecting the producer. Is this where we start in trademark law? In modern trademark law it does start with the producer many times. Then he goes into an attack on advertising. He says it really only serves one proper function informing the public (bottom p. 71). He is unhappy with the present advertising because he thinks its about persuasion and influence not informing. So he thinks most advertising is a waste. (P. 72). He says this whole theory of advertising is based on the premise of the intelligent consumer but in the middle of p. 72 he says the consumer is being overwhelmed by advertising and it overwhelms the free choices we think we are making as people. If this is true then trademark law is an evil component of this evil system b/c trademark law facilitates and enables this type of mass marketing and intoxicates people.

On page 73, however, he gives us an alternative message. He says maybe this isnt so bad b/c if people are willing to pay for these allusions then in some sense they are rational. If the creator can recoup their outlay then who is the poorer? If people want to buy these allusions then it might not be an irrational system. But at the very end he does come down against advertising as it existed then. p. 74 at the bottom advertising has two functions; to inform and persuade. He says advertising is just a way to talk ourselves into spending our income and trademark law enables this. Landes & Posner (p. 75) Much more hardheaded in the opposite direction. They give an economic justification for trademark law. The two justifications are: - It saves time (p. 76) decreases consumer search costs. o There is a communications efficiency point. o But this efficiency only works if the producer maintains a consistent quality over time and across consumers. What do they mean by over time and across consumers? Over time when you want the same thing again and again and again. Across Consumers when you tell another to eat the same thing and they have the same experience as the first consumer. o The only way you will have this efficient system is if trademark law prevents freeriding (p. 77). - Deadweight Costs: Monopoly or excessive competition. o Bottom p. 77 they admit this is one possible economic theory of trademarks which is basically the Ralph Brown argument BUT they respond on p. 78. o They say, image two products have the same formula, what value could trademarks serve? It provides greater assurance that what the product says is in there is actually in there. The trademark can provide insurance by giving the consumer the sense of an insurance policy. Borchard Article (p. 44) Patents arise by government grant but in contrast copyright rights arise through proving the originality of a work and government involvement is not required. Trademark rights are neither of those and yet both of those. They can arise b/c they are granted by the government but they can also arise without govt intervention but in this case they dont arise instantly when you create the mark but over time when it gets noticed in the marketplace. So under federal law there are two types of rights: - Rights of a Registered trademark (with circled r). - Common Law Trademarks Rights (TM or SM) o These mean you claim CL trademark rights the govt hasnt recognized yet. o They would arise simply as a function of the market place This is different than many other countries. Most you have to apply for it. If they can arise in the marketplace what does it get you to register them in the trademark office?

When you register you get national trademark rights but if you dont you only get it in your geographic area. o Trademark law can be used in different product lines without confusion. o If you apply for national status you get coverage in all areas except where there is pre-existing coverage and no likelihood of confusion b.c of different product category. Someone can claim they are the senior user in another market area from before someone else applied for a trademark and this is airtight. o If you dont have a product differentiation argument and someone else applies for a trademark you might be out of the business. National trademark gives you senior use everywhere. Four bases to apply for Federal trademark registration: (bottom 45 top 46) - Actual use in Commerce - A bona fide intention to use a mark in federally regulated commerce o This is called an intent to use application. o It allows you to apply for a tm even without using it in commerce. - Foreign owners country of origin application filed during the previous 6 months. - Registration in another country with a bona fide intention to use the mark in commerce. o Trademark from another country wants to bring it to the US so they apply now for a mark to be protected. So its like an intent to use application for a company that already introduced a product in a foreign jurisdiction. In addition to federal registration most states have their own registration systems. In this sense they are totally duplicative. The other thing we should know is that the unregistered trademarks are protected under federal law (Lanham Act) and may also be protected under state law. So theres a matrix you can be protected under. The standards of protection are the same in all situations. Since the standards are the same it emphasizes that you want to register to get nationwide seniority rights, nationwide priority. A trademark is protected indefinitly unless abandoned or generic. In order for it to be perpetual protection you cannot abandon it, allow it to become generic and importantly you have to renew it every ten years but you also have to file a stmt of use in the 6th and 10th years of the trademark. You file the stmts under penalty of perjury. If you lose your registration but you still use it in commerce it would revert to a trademark protected in common law. Page 48-49 there is a discussion about international trademarks - this is very out of date. US is now a fully functional member of the Madrid Protocal. Now a US trademark holder can go to the US PTO and apply for a trademark in foreign countries who are also members of the treaty. You can file application electronically except under Madrid Protocal under TESS and TEAS systems. Application Process - When you file your application you have to designate the classification of goods and services for which you are applying for a trademark. - It is then assigned to a trademark examiner. The examiner takes your trademark and compares it to the exisiting trademarks already registered to determine if there will be a likelihood of confusion. o If a likelihood of confusion your application is rejected.

o If no confusion then you move on. Then the trademark examiner orders the publication of your application in the Gazette. o This puts your application out there so everyone else can look at it to see if they have any objections. o If no opposition it proceeds to publication. o If this triggers an opposition if may or may not be rejected. In addition, there is a body called TTAB Trademark Trials and Appeals Board. o It is an administrative body who hears appeals from decisions made in the PTO. If there is a rejection they can hear the appeal from it. It can also make a determination from an opposition from the Gazette. If they nonetheless find it should be published the opponent may want to take that to court. o From TTAB you can get a yes or no for registration. o If there is a no for publication the applicant might want to go to court. Appeals of TTAB decisions can go to Federal Circuit or to District Court that has jurisdiction over the applicant (?). o Based on precedent you might choose one or another or if you have deep pockets you may want DC so that you can appeal after to the Circuit Court.

There are two kinds of trademark cases: - Those about Infringement o When you go after D for violating trademark for likelihood of confusion or dilution. o Most of the cases are infringment actions. - You can also have a case which is challenging a determination of the PTO. o If you have this kind of case you are fighting about whether or not the trademark will have registered federal rights. Where can these actions be brought? - If its based on state rights then you would bring it to state court. - But if you brought only a state trademark violation could you ever get into federal court? o Diversity Jurisdiction & the $75,000 amount. - If you are asserting a federal right you can assert it in federal court for registered or unregistered mark. What are the limits of trademark protection that the US Congress can give? o Congress may regulate interstate commerce. Thus the trademark must be used in interstate congress or an expression of intent to use in interstate commerce in order to file trademark registration and to get into federal court. If you want to assert CL right under Lanham Act it must be used in interstate commerce to assert federal rights. Lanham Act provides protection also for unregistered trademarks as if it were common law. Levy v. Kosher Overseers (p. 58)

Kosher Overseers attempted to register a federal trademark and it was denied on the grounds that it could be confused with Levys certification mark. Examiner denied registration but they continued to use it and Levy brought an infringment action. DC then says that the TTAB determination should get collateral estoppel effect and thus Kosher loses. Circuit court overrules and says it doesnt get collateral estoppel effect b/c the question in front of TTAB is different. They say that in the TTAB process all the people ever see are paper applications and they dont think about the marketplace context. But the DC will consider issues of overall advertising, use in the market, survey evidence, testimonial evidence, etc. they will make a much richer determination of likelihood of confusion thus no collateral estoppel effect. Hanover Star v. Metcalf (p. 58) It says trademarks is just a subcategory of a bigger field of unfair competition law. Bottom page 59 (highlighted) this stmt is that trademark law is conceived of as not property even though we think of it as property. And if it is property it is an odd sort b/c it is considered a right appurtenment to an existing business or trade. They mean by this that trademarks are considered embodiments of a business good will or reputation and if this is true then your trademark rights should be attached to your business and you shouldnt be able to sell your trademark without selling your business. This is traditional trademark law and this has been largley subverted or altered somewhat. The other thing to get is on top of page 60. Trademarks are limited to their product or service categories. Champion Spark Plug v. Sanders (p. 68) This is really about how trademarks are efficient tools of communication. D reconditions the Ps spark plugs and resells them in the same boxes but with a stamp on the boxes and plug that they are reconditioned. But it is stamped in blue ink in small letters on a background of black and is almost illegible in most instances. What happens though is that the DC and COA both agree that the plugs need to be labeled and the only issues up in front of the SC is that P wants D to remove completely the Champion name from the plugs and not that he should just stamp renewed in clearer print. SC says they wont order this. They use the analogy this to a used car. That a used car salesman can sell the cars without having to take the name Chevrolet off the car. But there could be circumstances where the secondary seller would have to take the name off of the original trademark if something was repaired or reconditioned to such an extent that it would be ridiculous to call the article by its original name. They say this isnt one of the cases b/c when you buy a used product you automatically know its inferior will be less than a new product. The changes in a reconditioned spark plug lower heat resistance and such are things people would expect. And this is all immaterial IF it clearly shows it is a used product. What is very clear although not explicitly stated is that the justices have a theory of efficient communication. They said the efficient communication theory isnt less speech, its more speech. Its their trademarks with additional language saying repaired. Thats the thing that will tell the consumer the most information. Why does champion really want their name off the plugs? - b/c they created a competitor to champion and in effect an efficient competitor b/c his product is their product just a little inferior. This is an ultimate example of protecting the consumer.

Question 2, p. 70: - The difference from Champion is that having Champion still on the box tells you something about the plug that was true. That Champion did make it and now its changed. McSleep is not and never was affiliated with McDonalds. - It may just be that in different markets we have different rules b/c we feel that certain things are unfair where others are not. Stork Restaurant v. Sahati (p. 60) We are getting mixed messages out of this case on who they are attempting to protect; the consumer or producer. P is a NY restaurant that is very popular and widely known around the country. Then 14 yrs after P the D opened a restaurant in San Francisco under the same name but much much smaller. Arguably the NY restaurants service area is NYC but its reputation is nationwide especially after the movie done about it. So this is a bit of an unusual case b/c here the reputation of the trademark holder far exceeds its service or product area. There is a lot of ambiguity in the doctrine. See page 62 at top under Confusion of Source. - This is a very bad stmt of law. - Dilution of good will is not a good concept. Its true trademark represents goodwill but dilution and confusion of source are totally different now. Our version of analysis now takes confusion of source and goes with this as likelihood of confusion. Is there any likelihood of confusion in this case? - there is no likelihood of confusion that its the same place BUT there is a small likelihood that people would think this is a NY branch of the NY Stork Club. - And they say geographic case doesnt automatically indicate no confusion. But there is also in this case a very clear kind of unfairness argument in favor of P. See Reaping Where One Has Not Sown on page 63. This is an expression of unfair competition. You should not get to harvest the consumer affection for this name that has been planted and cultivated by the NY Stork Club. This is out to protect the producer or creator and not the consumer. Then on 64-65, they say that there was no commercial necessity to use the name and there was a plethora of names available and they chose this. Although we agree with it this is a total leap of reasoning. It doesnt even have to have any negative impact on the Stork Club, there just needs to be a similarity or freeriding off the goodwill. What was the governing law in this case? - It was California State Law. This is so b/c no Lanham Act at the time and there was no registration of the Stork Club in NY. Litman Article: Breakfast with Batman (p. 78) The main argument is that trademarks have value in and of themselves. Bottom p. 78 she characterizes Ralph Browns piece as sayig trademarks and advertsiing is all about talking ourselves into paying more for the same stuff. She says we dont agree with this now. Her message is that this is ok that we want to pay more for one item over an identical other item.

She says the problem is that when the trademarks in themselves became value we suffer the consequence that people then say b/c we value them they should get protection. And she says marketing now is value and we create value without using additional resources. If society values these trademark symbols so much do we need to give them more protection? - she says no. She says that if this is where the value is in the economy they have this value b/c we have given it this value and companies can protect themselves b/c we attribute to it so much value. - She also says that you create more protections when you have market failure but we dont have market failure here and here it would be lack of symbols. But we dont have any lack of labels or symbols or batmen. (p. 81) o There is no evidence of underproduction of symbolic goods. o There is no reason for additional protection in terms of consumer confusion. - She also says that just b/c there is added value doesnt mean it should be given to someone exlcusively. Look at question 3 on page 82 about this stuff. Value is increasingly moving into intangibles and the economy is growing without an equivalent in its physical growth. Litman reading (cont.) Idea in her article is that this idea about symbols pushes our society to ask for property protection rights of these symbols. But as a result of all this, we ourselves create a lot of value in these symbols by reading it into them and why should one company have a right over all of this value in one symbol? Restatement Section 1 (p. 31) Always look for the aspects of trademark law oriented to consumers or producers. Here we have what is called the Freedom to Compete and notice it is phrased in a negative way. It gives 3 examples of exceptions from the freedom to compete. - Deceptive Marketing - Infringement of trademarks - Appropriation if intangible trade values Notice that #2 is trademark but 1 and 3 are the two sides of trademark that we look at. #1 is consumer oriented and similar to aspects of TM. #3 is protection of producers and unfair competiton is not much about consumers. This is also similar to the TM principles also. You have the trademark idea here sandwiched by the two driving forces of trademark law. What intangible values belong to something? This is what Litman was arguing about. Just b/c a symbol has value doesnt mean one company should get every single part of the value related to that symbol. What fills out the idea of what is unfair business practices is largely filled out by what the judge feels is right or wrong and less about economic factors. International News Service v. Associated Press (p. 32) INS was copying verbatim the AP reports on the east coast and sending them out to the west coast before the AP and releasing them. AP sued for infringment. The court held that INS had to wait until AP first released the news then could do this but couldnt do it before AP released their stories.

Basically what happened was, the AP had embedded journalists on the western front in WWI. INS did not do this. So AP reporters would send back wire reports and they would arrive in NY. Then INS would get them and rewrite them and send it out to the west coast first. Since they were totally rewritten there was no copyright claim b/c all they did was take the facts. Nonetheless this is a form of freeriding; they didnt have the reporters in europe yet they were taking APs work and using it to send to subscribers. What is argued whenit gets to SC, is an unfair competition claim and the SC agrees. - They say there is a quasi-property right in the information. - The majority says that the D is attempting to reap where it has no sown. This is the idea of unfair competition. - The problem is that we do allow freeriding in a lot of apects of our market and this is a policy argument you would make. So you need an economic type argument to bolster this decision. You could say that if AP doesnt have an advantage to having the reporters in europe then they have no incentive to do this and theyll bring them back and we dont want this. This freeriding idea bleeds into a second cause of action called dilution. Dilution The central cause of action in TM law is likelihood of confusion. But we will also see producer oriented cause of action called toward dilution. It is oriented to protecting the value of the trademark. Pattishall Article (p. 689) He is writing about a law review article written by Frank Shecter who wrote the article about his idea of dilution in trademark law. He was concerned about activity that caused the gradual whittling away and dispersion of the identity of the TM and its hold on the public mind. There are psychological assumptions in this that TMs can communicate to use and hold ideas in our minds. And he believes there are times when there wont be confusion but what someone is doing in the marketplace can affect these psychological aspects of TMs. The main difference between dilution protection under state and federal law, is that the federal statute only applies to a category of marks called famous marks and most state statutes dont require this. What is dilution? Look at page 690 under III. What are some of the descriptions? - Loss of Distinctiveness o This is the best way to formulate it as a legal principle. - Weakening of the marks propensity to bring to mind a particular product, service, or source. - Watering down of the potency of the mark and a gradual debilitation of its selling power. Dilution under state law falls into one of two categories: - Blurring o Ex. Toyota Shoes what you would say is that no one thinks they come from the Toyota company that theres no confusion BUT it does lead to a dilution. It blurs the TM. - Tarnishing o This is easier b/c its easier to imagine.

o Ex. Disney Cigarrettes no one would be confused and think this came from
Disney. This would be blurring but also tarnishing. Disney has a wholesome family oriented image and this tarnishes or sullies Disneys images. Ringling Bros v. Celozzi-Ettelson (p. 698) There was a used car show in Chicago that advertised itself as the Greatest Used Car Show on Earth and had it in big red type circus letters. Ringling Brothers sued for dilution. Should P have a TM in the slogan? - This was probably initially descriptive but over time it has acquired secondary meaning and it is now protectable as a TM. So the applicable law in this case is Illinois law and under their law they have an Anti-Dilution Act. Under this Act there are two prongs (p. 699): the TM needs to be distinctive AND the subsequent users use dilutes that distinctivesness. Judges always mess up the idea of dilution in their opinions and you see this in the 3rd paragraph on page 699. He makes a statement about deceptively similar and diluation is where we say there is no confusion. The D said in this cause of action that even though there doesnt need to be confusion that you still need it to find harm to the P. - This is a circular argument and doesnt work. But basically D was saying you cant prove any harm or dilution without proving confusion. - The court says the harm associated with dilution will always be extremely hard to detect. For this reason it is a kind of invidious harm to a TM and they will issue an injunction sooner rather than later. o P. 700 2nd paragraph under IV. Dilution is an infection which if allowed to spread will eventually destroy the advertising power of the mark We will come back to dilution later in the semester. Back to Likelihood of Confusion Abercrombie & Fitch v. Hunting World (p. 108) This case was about control over the world safari. This was a time when P was about hunting and fishing and safari. It was about control over the name for hats and boots and other types of hunting gear. The reason this case is here is to go through the taxonomy of TM law and the only thing this will introduce to use which we havent focused on in our chart a few classes ago is suggestive marks. Generic (p. 109) it is one that refers or is understood as referring to a particular genus of which the particular product is a species. It refers to the broad categories of goods or services. - p. 110 middle generic terms are commonly descriptive rather than just descriptive. - It cannot qualify for TM protection. The rule, although we wont say never, is that generic words cannot attain secondary meaning under any circumstances. - You can seek TM cancellation if at any time a TM becomes generic. Thus if you are a TM holder that becomes very successful with your word or phrase you have to be very careful with the mark. Descriptive you are eligible for TM protection IF you acquire secondary meaning.

Under CL before 1946, descriptive words were thought to be ineligible for TM protection and this changed now. How do you distinguish descriptive from generic? o Look at footnote 11 on page 110 is a good example. We say that descriptive words with meaning get TM protection and well take as prima facie evidence of secondary meaning proof of substantially exclusive and continuous use of the mark for 5 years proceeding the application. Immediately conveys some aspect, ingredient or characteristic of what the product is.

Suggestive it doesnt actually describe the good but requires imagineation and thought to figure out what it is. - Why arent these arbitrary or fanciful? o Because it has some connection to what the good is but requires some imagination to figure out what the connection is. - P. 111 2nd indented paragraph. o Imagination, thought and perception. - Behaviorally, what do you need to register this? o You dont need to show secondary meaning. It is like an arbitrary or fanciful mark, you can register it immediately. Arbitrary or Fanciful no connection at all. Name doesnt help you figure out what the product or service is. Exercise: Escalator. It is generic to a motorized stairway. Give products for which: - It would be suggestive o For a Helicopter o For an Upscale Dating Service o For an Energy Drink o For Basketball Shoes - Arbitrary or Fanciful o For a Car o For a Drink When we say these categories its always in relation to the products. Techinical Trademarks (p. 112) - Arbitrary and Fanciful and Suggestive are techincal TMs and we say this because they are immediately eligible for TM protection. - Why do we permit these two categories to register without proof of secondary meaning? o The word doesnt describe the thing. People will look at it and immediately recognize it as a TM or Brand Name. o By giving this one competitor exclusive use of the word or mark for a product we wont be putting other competitors at a disadvantage. It doesnt decrease the pool of words to describe their products or goods. o We want people to invest in TMs and if we want distinct identities we want them using arbitrary, fancifual or suggestive phrases then we should give them rights.

We were talking about why we have no problem granting TMs right away for anything in the top two categories overall called Technical Trademarks. The one thing that changed with the Lanham Act and common law is that purely descriptive marks can be TMed if you can prove secondary meaning. Application of Reynolds Metals Co. (p. 112) Reynolds came up with the idea of the Brown-in-bag and it is used for cooking purposes. You use it in the oven and it helps to make the meat tender and juicy without splattering the oven. Issue: Reynolds wanted a TM but the examiner denied it on the basis that it is only descriptive of what the product does. Then you take the issue to the TTAB and they affirmed the decision and say this is only descriptive. Now they appeal to the federal court and overruled the TTAB. The federal court holds that the name is suggestive rather than descriptive. Bottom of page 113: the PTO had said it was descriptive because it merely informs the housewife-purchaser of a purpose to which the bag may be put and thus ut us merely descriptive of a purpose and unregisterable. The court says that its true that the mark informs but its not fatal to it being suggestive. Professor doesnt like this decision. What are the policy reasons they give that this is suggestive and ok? - that other competitors are still free to use the same word(s) (bottom p. 113-114 highlighted part) just not in the exact format as the mark. - There are other reasons why the court could justify a techincal mark that this court didnt mention: o Consumer knows its a TM right away In this case would we think Brown-in-Bag is a TM right away? o Whats the other? In the matter of the Application of Quik-Print Copy Shops (p. 114) Ps tried to register Quik-Print as a TM but the examiner denied it saying was merely descriptive of what the product did. An argument that this is more suggestive and less desriptive than the last case is that the improper use of english spelling makes it seem coined and the intentional misspelling would make use as consumers believe it is a TM. Bottom page 114 up 10 lines Quik-Print is equated to fast print and thus are terms that everyone in the trade should be free to use to describe their services. The problem is that this rationale should be fatal to the decision in the last case. The court tells us that there was widespread use throughout the US of this name or almost exactly similar. One thing that might be interesting about this, is to think at what point in the marketing of a product does a person seek a TM? The idea is that maybe if they applied for this name before there were copy shops everywhere and everyone knew how fast technology in this area could go then they could have gotten the TM. Similarly if Brown-in-Bag waited until there were many products on the mark with the same name they couldnt have gotten the TM.

Doctrinally it may be hard to separate both cases but this could be a reason how we can separate them. PTO had said there was no secondary meaning for this name but this is only applicable if you are in the descriptive category. Look at what the opinion says about what a descriptive mark is. (look right under OPINION). Focus on this for the distinction. Bottom page 115, up 6 lines, court says this is descriptive b/c the quality or characteristic of speed immediately comes to mind by the name and it describes their services. Timing on suggestiveness or descriptiveness are definitly and important issue. Question #2 (p. 116) See above discussion Labrador Software v. Lycos (p. 117) P created software and is seeking a TM for use of a labrador retriever in its search engine software. They claim that it is suggestive. The court determines that it is merely descriptive because the use of labrador retrievers and such for search engines and programs on the internet that its no longer descriptive. This relates back to the quikprint case where the court spoke to widespread use of the marks. The lines between descriptive and suggestive are highly contextual in determining if you should have a TM. Question 3 (p. 116) a) could come to different conclusions based on youru sex and who it is being marketed too. b) c) consensus in class suggestive. Ex. we are going to try and come up with names for each category in relation to chocolate candy bars: - Generic: Chocolate Bar - Arbitrary of Fanciful: Fruity - Suggestive: Milky Way - Descriptive: Sweet Brown Bar These are things you should be able to argue about and make good arguments both ways. IMP: What constitutes prima facie evidence of secondary meaning? - actual, continuous and exclusive use for a period of 5 years. Restatement section 13 (p. 125) Technical TMs have inherent distinctiveness whereas secondary meaning means acquired distinctiveness. Secondary meaning does not connote a rare meaning. It must be widely understood to be secondary meaning and in fact only exists if a significant # of prospective purchasers understands a term to connote particular goods, services, etc. It is secondary in time but not in importance. Is plunge pool descriptive or suggestive? - a plunge pool is a body of water not big enough to swim in just to get in. - tough one to answer International Kennel Club of Chicago v. Mighty Star (p. 118)

IKC was an organization that ran dog shows, advertised pure breed dogs, etc. D is a toy company that decided to create a line of pure breed stuffed dogs and they called them by the name International Kennel Club. Their attorney attempted to see if this would be a problem and he found a couple hits in Chicago but felt by their local scope and purpose that it wasnt a problem. IKC doesnt have any federal TM registered rights and might not have in Illinois. Since they dont have a federal registration they must proceed claiming common law federal TM rights. p. 121 bottom the injunction was granted by DC under 43(a) of Lanham Act and can be referred to as section 1125. How are you going to prove you have a protectable TM? - Professor says their name was deceptive b/c the club wasnt really international at all. o But the club calls itself that b/c people from Canada as well as 38 states come to their conventions. - So they are in fact descriptive and since they are they must prove secondary meaning. o (p. 122) To do so, you can do consumer surveys, volume of sales, amount and manner of advertising, length and manner of use, and direct consumer testimony. o Gimix Factors at bottom. - Arguments from IKC for secondary meaning o $60K on advertising or 42% of budget, o Published ads in many widely read magazines, o Been using the name for over 50 years, o Many people (customers, employees, and vendors at shows) called, wrote, and asked about confusion they had when the dog line was started. - Arguments for Mighty Star o Only spent $60K per year which is not very much, o Very local market, o Publications arent that extensive, o 15,000 people on the mailing list is barely anything, o non-competing markets. - The dissent brings up a good point, do we require secondary meaning among a large market or do we just require it among the market to which it is projected? o The answer is yes that you can establish secondary meaning in a small commnity such as dog breeders. - Also, can we attack the advertising budget as too small to establish TM? o We have a one-size fits all rule scheme for creating TM and what is or is not an adequate advertising budget. o So you need a law that addresses small and medium size coompanies as well as the activities of very large corporations in establishing brands and secondary meaning. We are still talking about TM in use of commerce. First we will talk about what conditions count as use in commerce and then well move to talking about who was first in using the mark in commerce. Use in commerce a bona fide use of a mark in its regularly course of trade. - see definition on page 147.

In P&G case we really saw that at the end of the case we can say there is use (legitimate use) and token use (non-legitimate use) and they strike down their minor brands program as token use. What other characteristic must use have? - It must be used in interstate commerce or international commerce touching upon the US. Larry Harman Pictures v. Williams Restaurant Corp. (p. 147) The question here is whether Bozo the restaurant is a use in commerce given it is only present in one location? This is NOT an infringement action but an opposition action. Bozo Restaurant has filed for a TM, the trademark examiner allowed the TM and caused it to be published in the Gazette, and P came forward to oppose the granting of the TM. They oppose it on one of the grounds that this is not a bona fide application b/c Bozo restaurant is NOT engaged in interstate commerce. - They say that the restaurant in the town where its present is not engaged in interstate commerce which means they are ineligible for federal TM protection. The court says that this is near Memphis which is near Mississippi and Arkansas. Given this they serve interstate customers. - In a strict sense you can say any service industry located in one place is not engaged in interstate commerce. But this is pulling the strings very tight. o The response is get practical. The TM is known throughout the country b/c people throughout the country are coming to them and there is no difference if people come to them or they send the service to other states. - So the standard is whether you serve people from other states. o The court says they do in fact serve people from other states. o So the definition is whether youre involved in interstate commerce or touch upon it. Broad definition. They reject the Bookbinders case. (p. 148) - The test is: located on an interstate hgwy, 50% of customers are from out of state, and advertise masively out of state. o This is a tough standard. This case goes with a much looser standard. p. 149 at bottom about Gastown, - see highlighted part and the next lines. - so what counts as interstate commerce that congress can regulate and thus subject to the Lanham Act is also commerce that affects interstate commerce. Keep in mind this all came before the SC decision in Lopez where the court restricted interstate commerce powers some but there hasnt been any cases or literature about whether this restricts TM as well although professor doesnt think it changes anything. This all brings up policy questions about whether we want business like this one to qualify at all for TM. It gives nationwide priority so do we want to grant this to people only engaged in intrastate commerce. The answer is probably no.

The test is not do you have any old impact on interstate commerce like in con law, thus who your suppliers are does not matter, but the question is does your TRADEMARK affect interstate commerce? Now we know congress can regulate interstate commerce but also foreign commerce that touches upon the US. Buti v. Immpressa Perosa (p. 151) Fashion Caf Case Impressa has Milan Fashion Caf but has never opened any in the US. They did engage in significant promotional activities in the US. They gave out t-shirts, cards, keychains, and cards for free meals in the Milan Caf to people in the modeling and fashion communities. So the question is, is this a use in commerce that touches upon the US that provides them protection? Bottom page 151 talks about how much interaction a foreigner needs to have with american commerce in order to be eligible for american TM laws. - Impressa conceds that congress cannot reach the caf in milan to protect the TM. o Milan is outside the commerce clause power of the US constitution. So the crux of the matter on page 152 at top, is whether the Ds advertising and promotional activities in US on behalf of caf were sufficient to establish Impressas use in commerce of the mark in the US? - The court holds this wasnt sufficient. - They say that as they decided in Mothers Kitchen the advertising is not enough. The rule established in that case (where airwaves of advertsiing was ocming into the US) was not enough to establish protection through use in commerce. - Mere advertising of the fashion caf mark standing alone is not enough. o IMP: Remember this as a principle but we will fudge this a bit. o We do know that selling something is use in commerce for sure. The question will be, will we permit any activities before the sale to count as use in commerce. Its clear that on page 154 the Impressa group makes a test marketing argument. They say that all the promotional activity was test marketing and they were preparing to enter the american market. This failed here b/c the D gave terrible testimony when he said coming to the american market is a fantasy. So this wasnt really a way to pave the path for american fashion cafs. So it is easy for the court to come to its conclusion. Use is our primary concept. Token Use is out. We also need to look at constructive use and analgous use. The first person to use in commerce will search for these diff types of uses in order to establish TM rights. but we will also look at first dates of use in order to defeat someone else claim. Ex. sometimes we will ask who was first in commerce to establish who has rights. other times we will ask who was first under these diff uses to defeat someones claim. Blue Bell v. Farah Manufacturing (p. 162) This is a competition between two clothing manufacturers. Its not about federal registration but Texas state registration. It is in federal court however likely due to diversity. The question in this case is, who was the first one to use this TM in commerce?

The TM they are fighting about is called Time Out. They both agree they cant market it nationally so they want to know who was first. Farah TimeLine - May 16th: They conceive of the mark. - June 5th: Presented the mark to their sales personnel. - June 27th: They created tags for the clothing with the mark. - July 3rd: Distribute to sales managers (12 of them) who pay for the pants. - July 11th-July 14th: They ship out to the rest of the sales force the pants. - September: They begin shipping to regular customers. BlueBell Timeline - June 18th: They have the idea for the mark. - June 29th: They completed labels for the clothing. - July 5th: They sowed the Time Out labels onto old pants without taking off the old mark. They do this with several hundred pairs of pants and they ship them out. They shipped out the double tagged goods. - Late August: Started to produce the real Time Out merchandise. - October: Ship the goods produced in August. The question is, who was first in commerce? - The DC found for Farrah reasoning that they were first to ship the pants. This was when they shipped on July 3rd for payment to their sales managers. o According to them this was the date of priority. o They also said that the July 5th shipment by Blue Bell with the double tags was token use. This is like P&G slapping the mark on other tampons and shipping them out. Page 164 at middle rights arise from appropriation and trade. Page 164 at bottom conception of the mark nor advertising alone establishes TM rights at CL. It accrues when goods bearing the mark are placed on the market. So on appeal Blue Bell says the July 3rd date was wrong, it was not a bona fide use of the mark in the ordinary course of trade. The appeals court agrees and says that it is just an internal transaction within the company and the only reason the 12 sales managers had to pay for it was to make them responsible for the goods, an accounting move. Intracorporation sale (accounting device) (p. 165 at top) p. 165 at bottom (indented) - its not that were against selling internally. But use in commerce is when you reach the customers who its your plan to reach b/c this is all about them coming to recognize your symbol as a source of goods. Keep in mind that there are layered TMs all the time, it isnt that two were on one product. The problem is they put it on a product they didnt intend to sell with the mark and they were manufatcuring the product later. Who wins on actual shipment to customers? - Farrah wins.

- They win b/c they shipped actual goods to customers first. Take from this case, what does not count as bona fide use in trade. The court says here that you can establish priority with ONE legitimate sale. This topic comes up with the next case. Lucent Info Management v. Lucent Technologies (p. 168) P is claiming they used the mark Lucent first and have priority. AT&T is spinning off a new company and give it the name Lucent. The GC for them says they have to check make sure its not registered and they did that. Then they should file an intent to use application. They do this and the application date becomes the priority date IF it results in successful TM registration. With this as the rule, the only people who will beat ATT to use of Lucent are the people who were using it before the date of the intent to use application. P claims they made one sale of a modem before this date in 1995. They did not make any sales in 1996. According to Blue Bell rule, one sale followed by continued utilization counts. The court rejects the idea of a single use establishing priority. They replace it with a big multifactored balancing test. Four Factors: volume of sales, etc His volume sales dont look good b/c he made one sale in 1995 and none in 1996 for only $300. but if you were selling something for half a million one year and none the next year you could make an argument of bona fide sales. Shalom Childrens Wear v. In-Wear (p. 170) Whats the TM issue? The TM is body gear. Timeline

November 17th, 1989: In-Wear files an intent to use application November 29th, 1991: Shalom files an opposition application. o Normally you have 30 days to file or request an extension to file an opposition. o But the case says the opposition was timely filed which means that either the application was not published in Gazette until October 1991 or Shalom originally sought an extension. o The TM examiner took a very long time to decide on the application.

We are trying to figure out when use in commerce starts or what counts as use in commerce that will qualify you for trademark rights. under CL you were the first person to use it or first to use it in a tm registration application. Top of page 169 are factors we need to looke for on timelines in order to determine use in commerce and when it began. What comes out of Fashion Caf is that advertising alone will not count as use in commerce. But dont take this too literally because what really sinks the boat for the P in that case is that he only had a fantasy of actually opening cafs in the US.

So when we are looking for this first date as to what counts for the first date of use in commerce with the mark on the goods in a bona fide transaction we will see this is lucent to is this the beginning of a legitimate business? We look at the totality of the circumstances and in Lucent it is triggered by the first sale. Possibilities of Use Use in Commerce Token Use out and you cant use this. Constructive Use Use Analgous to TM Use Shalom Childrens Wear v. In-Wear (p. 170) Whats the TM issue? The TM is body gear. D put in an application to use BODY GEAR on their clothes but P then opposes it. Timeline November 17th, 1989: In-Wear files an intent to use application. - December 14, 1989 o P filed an intent to use application also. o Undoubtedly they filed this application not knowing what In-Wear had done the month before. o But as between the two, In-Wear would succeed on the application because they applied first. Between two competing application dates (with nothing else) the earlier date wins. The application date is the date of constructive use. th - February 26 1990: This is the date Shalom claims in its opposition was the first date of actual use by them. o Between an intent to use in November and actual use in February who prevails? In-Wear because the application date is the date of constructive use. o IMP: So far, Shalom loses under these facts. - November 29th, 1991: Shalom files an opposition application. o Normally you have 30 days to file or request an extension to file an opposition. o But the case says the opposition was timely filed which means that either the application was not published in Gazette until October 1991 b/c examiner took a long time to look at it until or Shalom originally sought an extension. o Likely, the TM examiner took a very long time to decide on the application. - May 1, 1989: Shalom then comes out and says that before the application date of InWear, Shalom had taken all steps to effect use on this date. (top of page 171) o They claim they showed drawings with the TM and took orders at this time. o Then in turn they placed orders with the manufacturers to make the goods. This is like a Boeing airplane. They showed drawings and took orders with the TM on drawings and THEN manufactured them. In-Wear says that use of drawings to solicit orders isnt enough to defeat constructive use based on the date of application. (last full paragraph on page 171) - They say this is not use in commerce and doesnt defeat constructive use.

Shaloms response show they engaged in pre-sales activity and this defeats constructive use even though they hadnt manufactured the goods yet. This is basically a policy fight. They both agree first use wins and you need a system to determine this. But the question is, does selling the good before it exists count as use in commerce such that it defeats a later intent to use application? Where does the court go with this? - The court says that presales activity is sufficient to establish priority (bottom p. 171) and this is called use analogous to trademark use. o They say that where there is a beginning of a bona fide business they will count it as use and the priority date. - In-Wear reponds with section 7(c) on page 172. o The statute says application date is constructive use and beats anyone except someone who has used the mark before you and has not abandoned it. o But what counts as use that will trump this constructive use date? The court says use analgous will count. BUT dont confuse it with token use. They say you dont need token use anymore b/c we have the intent to use application option now. So you dont need to engage in token use anymore. Page 172 (bottom) Use analogous stuff - The court is saying they recognize that at the date when you only have a drawing and are taking sales but odnt have the good you would not qualify to file a use in commerce application b/c it technically hasnt been used in commerce yet b/c you dont have the product. - But we will called this use analgous to trademark use. o So if you are taking orders and becoming a bona fide business using the mark then we will let you have priority. Constructive Use only applies to an intent to use application. If you are using it in commerce then you dont need constructive use because using it in commerce is your priority date. Would actual use defeat use analgous to trademark use? - Lets say on the same day In-Wear files an application for actual use. o Use analgous would win. Problem (p. 173-174) The question here is who gets priority of use? In June 1989 they both come up with Teletrac as marks for there goods. Mr. Chance going up against the big company coins the name in October 1989 offering a service where you put tags with serial #s on then for lost items and you call a toll free # to say you found it. Pactels product is a radio frequency system for tracking vehicles. Who started first with advertising? July 1989 Pactel advertised. Chance advertised in October 1989.

Who arguably had the first sale? February 1990 he sold it to a friend but then doesnt make sales for many months later. Pactel had its first sale April 1990 who doesnt pay until several months later. In the actual case, the first customer was then but they were giving the services for free for a few months. The court ended up ruling that they look to totality of circumstances to establish priority. If use analogous includes advertising then Pactel wins but if we go with actual use we go with Chance but then we have a Lucent issue about no sales after. The court adopts a use analogous position and the go with Pactel because they started a large publicity campaign which followed with serious sales but Chance had little advertising after with 1 sale followed by very little. If the court had gone the other way could the big company buy out the little company? Yes! Maryland Stadium Authority v. Becker (p. 174) The MSA had plans to build a large sports complex at Camden Yards. Demolition began in 1989 of the old buildings. Early 1991 the structure began to rise. As a TM matter, what TM is really in this fact pattern that we dont see at all? - The Balimore Orioles - But they are owned by someone privately and they have lobbied for a new stadium and the MSA agreed to build it. So this is about them moving to the new stadium but the MSA doesnt have the TM rights to Orioles but they want rights to the stadium. When they begin building they talk about using the name Camden Yards. In 1991, he makes t-shirts referring to Camden Yards and baseball. Later in 1991, MSA wrote him a letter demanding he cease using the name Camden Yards. Becker ignores the letter completely and MSA sues. Becker argues there is no jurisdiction b/c no goods or services are being sold in interstate commerce but they dont address this. His other argument is that he is selling these before the stadium is opened so we are not talking about a product but an entertainment service. It would not be possible to offer the entertainment services b/c it isnt opened yet. So even if it being opened counts as a service, he says they arent using any TM in commerce b/c its not even open yet. The question now becomes, did the MSA engage in use analogous sufficient to claim priority over Beckers use in commerce? The court accepts the MSA argument that there was analogous use before 1991 sufficient to claim priority. See rule on page 175 (keep in mind where it says use here it should be use analgous). - This is a totality of the circumstances test. - This is a reasonable statement of law. - Your priority date can be back that far if it follows this. Professor agrees this is a good statement of law but he thinks this is a bad case and bad decision. - He believes the DC judge was finding any way possible to find for the MSA. - Why is this a bad decision? o The evidence the judge uses to say they were using the mark prior to 1991 is that it was one of the names considered. This is crappy reasoning because if its just one in consideration then this is an admission they hadnt chosen it yet and if this is so then it cant function as a TM.

Even if you accept the judges premise the name used on bottom of page 175 is descriptive and not elegible for TM. Thus it is not a TM use, its just a descriptive use. Top of p. 176 with phrases used in newsletter. Again these are just descriptive. Whats another problem with these newsletters we get from Farrah case? o You want to know if these were reaching the intended consumer or customers? o These were probably bimonthly newsletters for politicians and business people and NOT baseball fans. o And if you dont disturbute to real customers does it really count as use in commerce. Top of page 177 o If there is controversy about what the place would be called then there are no TM rights.

Question 1 (p. 177) - Yes it seems the judge is reaching to protect the baseball teams goodwill. - Essentially he reaches to protect a landlords goodwill. Given what we know so far about TM law, what would you have done differently if you were MSAs counsel? - You would have filed an intent to use application!!! o Since you have a minimum 6 months to show a use in commerce you could have filed application for Camden Yards or anything else that doesnt infringe on Orioles TM. - OR you could recommend they start selling tix, shirts, etc in order to begin use in commerce. THEN you have a much stronger case. If this were a good case this would be an example of use analogous trumping actual use in commerce. But since he doesnt like the evidence it wasnt really analogous. United Drug v. Theodore Rectanus (p. 177) This is a very important case in trademark law. The doctrine we learn from this case is often called the white rose doctrine.

United Drug (cont.) Timeline: - 1877: Regis begins distributed Rex which is a preparation for medicinal uses for dyspepsia (acid reflux). - 1898: She gets TM rights for Rex in Massachussetts. - 1900: She gets a federal TM right. - 1904: Gets into a dispute with Rexall remedies and prevails in defending her TM. - 1911: She is bought out by United Drugs which is Rexall. o She clearly has CL rights all the way back to 1877 even though she got federal TM in 1900. o What category would Rex fall into? Arbitrary or Fanciful. Thus we dont have to worry about secondary meaning and it is easy to say she had CL rights of some sort back in 1877.

- 1912: Rexall ships two shipments of Dyspepsia tablets in Kentucky. Dr. Rectanus Timeline: - 1883: Blood Purifier was produced under Rex o the court says in Kentucky Rex meant this product. o P. 178 at bottom. - Until 1912: Use in Kentucky Lower Courts found the two companies used the same mark in good faith, in widely separate localities during this whole time. What is Rexalls argument? - The court characterizes there argument as this: we are the first user and if we have been reasonably diligent in extending the territory of our trade then we should be able to enjoin other users who started using this mark after us. Whats the courts reaction to this argument? - They say that a trademark is not a right in gross or at large. (bottom page 179) - It is a right appurtenant to an established business or trade in connection with a mark. - This is the common law rule. - The federal registration and law then gives you priority everywhere regardless of expansion. What is the most critical fact in the timeline here? - 1883 and 1900 - 17 years before registration of TM Rectanus started his business in Kentucky in good faith and prior to the priority date of the current registered holer. The issue is: what do we do when a person far before the priority date, in good faith begins a business and establishes a mark in that area? (White Rose or United Drug Doctrine) So Regis had CL rights in 1877 and Rectanus in Kentucky in 1883 and then in 1900 Regis gets federal priority rights overlapping everywhere except where a business was already established in good faith. This is the doctrine. Bottom page 180 is the general rule. Top of 181 is the exception which is this case. These are the common law rules. This is the result that makes sense for both parties. - For consumers the mark means blood purifiers and if we take away his mark this will confuse consumers when its dyspepsia medicine. - Also, when in good faith both created the mark 6 years apart finding for Rexall would hurt one of the producers. Thrifty Rent-A-Car System v. Thrift Cars (p. 182) This is a modern application of the United Drug doctrine. The court says that the question of a likelihood of confusion was stipulated to as being confusingly similar by the companies. Timeline for Thrifty: - 1958: Founded. - July 1962: Applied for Federal Registration

July 1964: Got Federal Registration 1967: opened a rental store in Massachussetts

Timeline for Thrift: - October 1962: Founded the business in East Taunton, Massachussetts - 1962-64: Advertising in local magazines, yellow pages, etc. - 1970: Received a license to operate a car rental facility in Nantucket Airport. What is the problem right off that we see from the timeline? - Between opening in 1962 in Taunton and 1970 in Nantucket is that after 1964 Thrifty has priority in all markets including Nantucket but not in areas where there were already businesses with an established mark. - The question now will be how big is the market for East Taunton? Section 22 of the Lanham Act (section 1072)(Handout) - This is Constructive Notice to a claim of nationwide priority regarding publication on the principal register. o Dont burn this into our brains because this does get modified a bit later on. The general rule on page 184: the word incontestability is a terrible word to use. It just means one or two defenses falls away but not all. One of the defenses that does fall away is one where the mark is federally registered, used continuously for 5 years and no adverse court jdugments against it. But one of the defenses that remains is the limited area exception described at bottom of page 184 which is a codification of the Hanover Star and United Drug cases. - The limited are exception has 3 components: o That you adopted the mark before the registration, o That you can establish the size of the trade area the exception should apply for, and o That you continuously used the mark in the pre-registration trade area. - How does Thrift fare in this analysis? o The Nantucket use fails right away based on the first prong. o The East Taunton area satisfies the test. How did they do regarding continuous use? He changed locations during the time but he doesnt lose on this. They had moved their headquarters to Nantucket. The court basically seems like they know its not really clear about this prong but they want to at least give then D something so they give him East Taunton. Thrifty then has a problem even if they get East Taunton. They dont like the advertising in that area which will also reach Nantucket. - The court agrees with Thrift that the area of use was the area in which they advertised and not just where they were located. So where they advertised prior to registration is where their market is. Dawn Donut v. Harts Food Stores (p. 188) Dawn is in Michigan and used Dawn on its donut mix bags. Those who buy their dough put Dawns name on the donuts if you use it to make donuts.

Harts is located in Rchester. They also make Dawn Donuts and sell them in their grocery store. They adopted this mark in good faith with a slogan. Dawn donuts licensed its donuts within 60 miles of Rochester. Dawn got registration in 1927 and renewed in 1947. The court said D was on constructive notice in 1947. How does this make sense? - 1946 was the year the Lanham Act came online and this act established the constructive notice system. - In Thrifty all the events were after the Lanham Act. The court holds that Michigan Dawn Donuts has no apparent expansion into Rocgester market thus no likelihood of confusion. But if they started shipping into Rochester then the result would have been that Hart would be enjoined from using the mark (p. 188 at bottom). From this conclusion you understand that Hart began use of Dawn donuts in their stores after federal registration. This case is criticized because they believe Dawn should have won and been able to enjoin. That there was an overstrenuous requirement to show they were going into the Rochester market. Intent to Use (p. 191) Section 1051 - First Requirement: bona fide intention to use the mark in commerce. o Very important. Threshold. - Second: you have to assert that no one else has right to use mark or a resemblence of mark to cause confusion. - Third: Registration does not issue until there is proof of actual use. o The PTO issues an allowance and it starts the clock and if you have 6 months to use the TM in commerce. o Under (d)(2) you can get one 6 month extension. This is automatic as of right. So basically you have 12 months from initial allowance. o Then under (d)(2) you can get a further extension and you can get up to 2 further 6 month extensions for cause. Ex. earthquake where the cruise ship was being built, a strike at the factory of production, etc. So you have 24 months at the very outside limit to yse the mark in commerce. o Once you use the mark in commerce you must file an affidavit of actual use and once you do this the PTO issues final registration. Pages 192-198: reasons for implementing ITU system. One being eliminating token use, others being that there are large product items (planes, boats, etc) that need time, and ITU being used in other countries put our companies at a disadvantage. Zirco v. American Telephone (p. 198) Section 7 of the Lanham Act modifies the rule and now nationwide priority is conferred on date of application if and only if TM registration actually issues. The applicant is AT&T and they file an application for the TM DATACELL. Timeline:

January 11, 1990: File application. April 15, 1990: this is the date Zirco bases its opposition on as the date it began actual use in commerce. - April 23, 1990: Zirco files opposition. o They say that as of April 15, 1990 they were actually using the mark in commerce. We will see that the priority date shifts from the date of registration to the date of filing application. If its application AT&T wins but if registration Zirco wins. The answer is that the date is not the date of application. Section 7(c) of Lanham Act (handout) so what you see now is that the priority date, the date of nationwide constructive notice, is shifted from the date of registration to the date of application. Why did we do this? - If the system said that the date of registration was the date of nationwide priority then the intent to use applicants would be screwed. They would apply and the mark would be posted in the Gazette. Then other companies would rush to the market with the mark before they got registration. This would give them priority. - See first whole paragraph on p. 200 - This was not so imp in a use based system b/c at least you have some CL rights and by the time it was published in the Gazette you are asserting that you do have some CL rights. Warner Vision v. Empire of Carolina (p. 201) If all you filed was an ITU application what do you get? You get an allowance. After that issuance you have 6 months before you have to file a statement of use by actually using the mark in commerce. Unless you are granted an extension. If you dont show use in commerce nothing happens, but youre application dies. Issue: see page 202 middle. Timeline: September 1994: ITU application submitted by TLV. o Their product was toy cars called REAL WHEELS. o Successor to Buddy who wanted to use the mark also is Empire. o Empire then bought TLV and its application. January 1995: Warner submits an application. o Their product is home videos about motorized vehicles. o These are two different products so you could imagine both companies could use the mark without confusion. 1995: Warner uses it in commerce. November 1995: Warner goes to court to enjoin Empire from using the mark. They say they know they will use it b/c of the ITU application. They want to prevent the application from maturing into registration b/c then they would lose based on the priority date.

The court says this would defeat the entire intention of ITU applications so they cannot let it happen. It makes no sense, it would defeat the system. Page 203 at bottom last paragraph. The court cannot enjoin a party with an ITU application from using the mark in commerce to get registration solely because another used the mark after the application.

But this doesnt mean the court cannot ever enjoin an ITU applicant. - ex. you create mark McSnickers and you get an ITU application. Court could enjoin them on motion from McDonalds or Snickers because of confusion and such. Eastman Kodak v. Bell & Howell (p. 205) D wants to register certain #s as marks for their products. Kodak opposes them by saying that are descriptive and only model #s thus cant be a TM. If they are descriptive they need secondary meaning and since they are model #s they dont have it and thus cannot get a TM. The problem is they havent used it in commerce yet so obviously it doesnt have secondary meaning yet. So we have two choices: either we through out the class of descriptive TMs from ITU applications OR we have to postpone the question of secondary meaning until use in commerce. The court postpones the determination of secondary meaning until use in commerce. There are two questions: - Is it descriptive or not? o Page 206 middle Board says opposition should be dismissed without prejudice if you cant determine descriptiveness when application is submitted. o The Lanham Act doesnt preclude or allow this approach page 206-207. - If its descriptive has it acquired secondary meaning? So the PTO says that if the examiner is not sure, they can let a determination of descriptiveness pass and then when used in commerce and actual use of the mark will be submitted for a determination. Also, the PTO could find it descriptive at first and postpone secondary meaning until later you can ampt up the secondary meaning through marketing until the time you have to put it on the market. See bottom of first paragraph p. 208. This seems to give an ITU application a presumption of validity. In re Trademark Application of American Psychological Association (p. 209) The examiner held this merely descriptive and the TTAB affirms. They say that you dont necessarily have to defer the determination, you can do it at first. How do we reconcile this with Eastman Kodak? - If a mark is facially decriptive it can be decided right then and there. If not then you can defer. - Here Pychological Methods was a mark about psychological methods essentially. Thus it is possible to find it facially descriptively. - If B&H had applied for an application of microfilm reader really good microfilm reader etc. then we could decide the case the same way as this one. It is facially descriptive. Racing Champions v. Mattel (p. 211) Mattel wants to register 1/64th for figurines made of common and precious metals, etc. P opposes saying that it is descriptive or generic. The board agrees with P that nothing precludes the PTO from initially examining that the mark is a generic word or descriptive of a category.

This is an opposition and this is a number which is why the decided this following the holding in American. Mattel should have argued that #s arent always descriptive such as in Eastman and so secondary meaning should be looked at later. Borchard Article (p. 214) 3 major things on application: name, address, and mark. How are you required to present a sound mark? - page 216 says you need to file it in musical notation. If you file a 3 dimensional mark you must file it in a schematic (line drawing/blue print) not a photograph. If colors are important you present them (p. 217) as where the colors appear and the nature of them. You have to show the schematic and then demonstrate where the colors are and explain them. The other critical thing you have to do is to say what category of goods or services you are applying for. There are 34 classes of TMs and 8 classes of SMs. Each classification costs $325. As of 1/1/05 the new rule it is $325 per class if you file electronically but if a paper application then $375 per class. Page 216 at bottom you have to tell two things: Date of first use of any sort (intrastate or use analagous) and date of first use in commerce. Page 218 we spoke about a lot of this. But notice the paragraph that starts out with A technical objection If you include a mark with a descriptive term, it is not unusual for the examiner to say that as a condition of granting TM of a phrase you have to disclaim rights over that word. State Registration advantage of them is that they turn up on professional search reports. There are two things you have to do when maintaining TM rights: - File affidavit of continued use. o First affidavit comes in the 6th year after registration and every 10th year. o The logic of the 6th year is that there are so many marks every year most dont continue to be used b/c the products/services fail or are discontinued. So this helps to clean out the system. - File Renewals o Renewals come every 10th year after registration. o When you do a renewal every 10 years you are also giving the affidavit. Principal register is main one. There is also a supplemental register. Registration for words or slogans which are claimed as trademarks but which do not yet function as trademarks. Largely these will be descriptive words that have not acquired secondary meaning. The list doesn't show bona fide TM rights. No priority, not constructive notice, not prima facie validity. Why be on it? Serves a signaling function. It shows up on searches and may deter others from using the name. Shows up just like state registrations. (Rock and Roll hall of fame was one). means mark is registered on principal register. (Or you can write phrase).

If you want damages, you need to have the symbol on to put people on notice. If people weren't on notice, you can't collect damages or lost profits. TM puts you on notice that person is claiming rights. It means "you think you have rights" -- puts you on notice that you have not yet achieved registration. Hacky Sack case - pg 224 - The claimed TM was design of seam itself. The must be displayed with the mark, but not clear where. Also an issue with service marks. How do you attach notice to a service? Generally, advertising does not count as use in commerce for products but does count for use in commerce in services if there is a sale. When you advertise and then sell, it is considered as if you are displaying the mark with the service. Certification marks/Collective marks Collective mark - pg 226 - trademark owned by collective or cooperative of producers. You find this among farm producers. Hidden Valley - owns TM together, all farmers can use it. Only difference is structure of ownership -- owned by entity who has ownership and members are producers. Every producer is shareholder in entity who owns TM. Certification mark - pg 227 - used to certify regional or other origin, material, mode of manufacturer, quality, accuracy, other characteristics. Must be used by a person other than its owner. Owner is called certifier. That entity certifies that users meet standards of the mark. Certification mark can be cancelled for additional reasons: if you don't control use of the mark, if certifier actually creates goods or services to which mark is applied, permits use of mark on other goods, and discriminately refuses to give certification to parties who maintain standards. Are franchises certification marks? No, but they function similarly. Company itself usually is also a producer, so it can't qualify for certification mark. Also, nondiscrimination requirement gives less control of TM. Could certification marks exist at common law? TTAB concluded as a matter of TM theory, certification marks can exist under common law if there is a supervising entity and that entity licenses use of the TM to producers on consistent quality standards and no one else is using the TM. Act on page 229. Section 2(a) - each word is interpreted as grounds for bar. In re Bad Frog Brewery 1999 BAD FROG BEER denied on grounds that frog would be immediately recognizable as giving the finger, this is obscene. It was reversed and upheld as OK. Just a frog, can't give someone the finger. Dissent says animal vs. human doesn't matter. Harjo v. Pro-Football TTAB 1999

Case went to Dist Court who reversed it, court of appeals reversed dist court. Case is still alive now. Harjo asserts that "Red Skins" is offensive, brings native Americans into contempt. They want cancellation of the marks. Section 2(a) are bars to registration in opposition, or can be used for cancellation proceeding. 2(a) words - Scandalous, disparaging, contempt or disrepute. Marks at issue: "REDSKINs" registered in 1967, Native American Profile logo and term Washington Redskins in 1974, Redskinettes in 1990. (also a different product category in 1978 for Redskin). Pro-Football says that marks have strong secondary meaning identifying them with football entertainment services. The secondary meaning has taken over, they argue, so marks cannot reasonably be understood to refer to petitioners. Survey asked whether or not words were "Offensive." Note: term isn't in statute -- dont do this. Data is noncontextual. Another problem is the date. Survey was in 1996, but TTAB must decide based on time of issue of registrations. 1996 is too late! The standard is disparagement as of time of registration so that TM owners can have certainty in the future. Harjo (cont.) What we are working on now is bars to registration and section 2 of the Lanham Act provides the list of bars to registration; reasons we wont let you register a TM. Right now we are working on 2(a) which is the moral or scandalous one. In this case we focus on scandalousness and disparagement. The opinion also tells us that contempt and disparagement are included under the standards and tests of disparagement. From scandalousness we know we seek the opinion or point of view of the general public. We seek a substantial composite of the general population and we ask whether they find the mark to be scandalous. In this case, the TTAB finds that Redskins is not scandalous. They use the reason of a lack of evidence and that no national football team would use a name that is scandalous to the public. So a general population would not find this scandalous. In terms of disparagment we dont look to the whole population but rather we ask the group that is being targeted. We see if a substantial composite of that group is being disparaged, held in contempt or disrepute. We learned from this case that we measure it to the 2(a) standard. You can use 2(a) in two kinds of proceedings: opposition proceeding and cancellation proceeding. This is a cancellation proceeding here. There is a big differenceif you file an opposition its before the pepole get the TM but here you are filing this after they got it and you want it cancelled b/c it was incorrectly issued. Thus, in a cancellation proceeding you look to disparagement, disrepute, and contempt at the time of registration and NOT at the time of cancellation proceeding. So even if the word subsequently becomes disparaging or subsequently becomes not disparaging it doesnt matter. Here, what are the 4 years of TM registrations? 1967-1990 Certainly social attitudes can change a lot in 23 years. So something that wasnt scandalous in 1967 certainly may be by 1990 or the other way around.

If you used the time of the cancellation proceeding you would put TM owners in jeopardy of their marks subsequently being cancelled whenever words changed their meanings. So we stick with time of registration. So we need to decide whether in 1967 Redskins was disparaging? Whether in 1974 the native american profile is disparaging? Whether in 1990 reskinettes is disparaging? What is some of the evidence the court discusses? - How the media used the word. o They found that the use of the word reskin was declining and almost gone by the 1960s and at that point they were in reference to the football team and not the native americans. o Around top of 240 the applicant argues that although redskin had the reference previously, now the word has a secondary meaning which only refers to the football team. They say people dont even think it refers to native american anymore and only to the football team. o The TTABs response is that they dont buy this. They say that it may refer to the football team but it unquestionably still refers to native americans. (top p. 241). They say that the fans and media use native american references all the time while referring to the football team. Ex. if team wins a huge game the headlines might say Redskings Scalpe Browns So the board says the secondary meaning is still very much attached to native americans. The important point about the secondary meaning argument is that it cant be disparaging unless it refers or alludes to a particular group. So the secondary meaning argument is that it doesnt refer to a group anymore. Is it disparaging since it refers/alludes to native americans? - P says this is per se disparaging because they believe it is. Does the board agree? (p. 242) o No they dont agree. They look at the evidence and the manner in which the marks are used. Whats the evidence as to whether this is disparaging? - Dictionaries o On page 243, they look at dictionaries from 1966 on which often say it is offensive or offensive slang. They start with the dictionary immediately preceding the registration. - Linguists (p. 243 middle) o There are negative associations; its pegorative. Also, it has been pegorative since 1699. - Survey o Two problems with survey: its not contextual (doesnt refer to team and most TM judgments are contextual) and its from 1996 which isnt useful when we try to determine what people believed in 1967. o The court mentions although its probative value is low its outcome supports the other evidence. Holding: At the end of the day the TTAB finds this disparaging from 1967 onward and cancels the TM.

The District Court then got the case and they said two things: - They ruled in favor of Redskins in terms of latches which is an equity doctrine. o That the petitioners rested on their rights too long. That they should have brought the proceeding long ago. but the Lanham Act says a cancellation proceeding can be brought at any time and so this is what the petitioners argued. But the court shut it down and said latches and estoppel is equitable and still applies. - Then they rules in favor of Redskins criticizing the TTAB for failure to make findings of fact. o They said the evidentiary record was inadequate to show it was disparaging in 1967, 1974, and 1990. Thus the analytic framework from the case is still good but the DC tore them apart for not making proper findings of fact. The court of appeals of DC affirmed them for the findings of fact part but reversed them on the latches and estoppel grounds. So there is one person still going against the redskins to cancel the mark. Page 240 standing section for who has standing to bring opposition attack under 2(a). Who can bring a claim that something is immoral? - General Standard: anyone who believes he would be damaged by registration of a mark on the principle register. o This standard is looser than the case or controversy standard in constitutional law. This is b/c TTAB is an administrative proceeding and not one in court so it can be looser. o Anyone in the public can bring a proceeding. What about in disparagment or contempt and disrepute? - this is still looser than case or controversy but you need to be a part of the group targeted. - Must have a real interest and a reasonable basis for the belief in damage. - There are no class actions but when you are part of the group any person in the group can bring the proceeding. (example at top of 251, the women) Handout of Section 2 of Lanham Act - Section two goes far past just section (a). - 2(f) is written in a convoluted way. Distinctive in commerce is another way of saying secondary meaning. So its saying nothing in section 2 bars you from registration except all the sections listed if you get secondary meanings. So basically (e)(1),(2), and (4) are only temporary bars until you get secondary meaning and the others are absolute bars. o 2(a) tells you that if it is deceptive matter it will NEVER be registered as a mark. o Now look at 2(e). (1) is a temporary bar until you get secondary meaning. o This leaves us with something strange. 2(a) says if deceptive its an absolute bar. BUT (e)(1) says if its deceptively misdescriptive its a temporary bar until secondary meanings is attained. o So how do we reconcile this?

The reason its set up like this is because we have a clash of two ideals with TMs. The most perfect TMs are those that are arbitrary and fanciful. The truth is tho that these are frequently inaccurate or somewhat deceptive. The very nature of it being arbitrary is that it is misdescriptive. If they are deceptive we dont want them to be registered but on the other hand we like arbirtrary or fanciful TMs. so we need to filter out the arbitrary ones we want as marks, those we dont b/c deceptive and those that are in the middle and well allow if they attain secondary meaning. - To deal with the issue we have a 3 question test on page 253. o For all marks if we are doing this test question 1 will be yes. o For arbitrary and fanciful question 2 will be answered no. if the answer is yes then we proceed to decide if it is deceptive or deceptively misdescriptive. o If you answer yes to question 3, then we have deceptive under 2(a) and permanently barred from registration. If no, then deceptively misdescriptive under 2(e) and temporarily barred from registration and secondary meaning can ultimately previal. - IMP: MUST understand the difference between 2(a) and 2(e). Questions (p. 253) (in order of questions above) 1. yes, no thus arbitrary 2. yes, ? - look at the date of the case. It was 1938 when the machines were basically just introduced. Now they might believe it was misdescribed. Examiner said it was deceptive but the appellate court reversed saying people wouldnt believe this. 3. 4. yes, yes, yes deceptive. The court and examiner found this deceptive and barred. Section 2(b) bars registration (absolute bar) of flag, coat of arms or other insignia of US or any foeign nation. Barred from principal and supplemental registration. - The foreign nation part is a treaty requirement under article 6 of the Paris Convention. - This bar has been construed narrowly. It doesnt apply to agencies and subagencies of the federal govt or state govts. This means that the National Park Service can get a TM but cant get one on the Presidential Seal. Section 2(c) (p. 256) gives an absolute bar on any mark that comprises a name, portrait or signature that identifies a particular living person unless with his consent or a dead president wunless consent from widow. - This bar applies not just to your legal name but to your known name. o Ex. Its not his name but we all know him as Prince Charles. So you cant register Prince Charles. - When the dead presidents spouse dies the name is up for grabs. Question (p. 257) - this question is meant to tell us that 2(c) is redundant with 2(a). - you see that in 2(a) it says its an absolute bar to any TM which falsely suggests a connections with a person(s) living or dead. o This could be used to bar either one of these without 2(c). o So 2(a) already covers what 2(c) covers. We dont know anything that would fall under 2(c) that doesnt fall under 2(a).

What if it was the actual taperecorder Nixon used? Could you call it Nixon Recorders for the same model? o So under 2(a) there is no false connection. So maybe you could construct a scenario where you could pass (a) and get to (c) but generally speaking 2(a) and (c) are duplicative.

Geographic Terms (Section 2(e)(2) & (3)) - we have two things here: o primarily geographically descriptive (2) Temporary bar, thus same standard as descriptiveness. Exception if it falls under 1054. These are certification or collective marks. If you are registering one of these you dont have to worry about this section at all. o primarily geographically deceptively misdescriptive (3) Absolute bar - We know automatically that there is an absolute bar to (3) but not to (2). In re Nantucket (p. 272) The company wants to register NANTUCKET for mens shirts but they are based in North Carolina. The PTO examiner refuses registration saying it is primarily geographically deceptively misdescriptive. (p. 272 highlighted part indicates what the PTO determined was this term at that time). They said that if the place is well known and goods of the kind emanate from that place and these dont come from there then they are primarily geographically deceptively misdescriptive. They had a very broad definition that they applied. The P argued against this standard by advocating this standard its not deceptive unless there is a public association between the product and place. Noted For Test whether the place is noted for the product in question. If its not noted for that product its not primarily geographically deceptively misdescriptive. The TTAB embraces the Ps standard. They said you should use the Noted For standard. Think of one example of where it would be primarily geographically deceptively misdescriptive because the place is noted for the good and one example why it wouldnt be because it isnt noted for. Nantucket whether or not shirts marked Nantucket as a trademark which are manufactured in NC are PGDM? PTO said PGDM: 1) 2) place is widely known to people goods and services emanate from there. This is a very broad understanding.

Instead, Nantucket argues for "public association" and "noted for" test. Language of the statute endorses this interpretation when applied to the goods of the applicant when used in relation to the goods of the applicant this is clearly contextual so we have to look at whether Nantucket is PGDM in the context of shirts. Suggests public association test. In this case, the answer is no. It might be deceptively misdescriptive upon acquiring secondary meaning, can be registered. No problems with having Dutch Boy be paint mark no association Hyde Park for clothes Bacardi trying to register marks with "Havana" in it for rum products. Examiner denied application because PGDM. 1) 2) mark sought to be registered is the name of a place known generally to the public purchasers are likely to believe mistakenly that the goods or services sold under applicant's mark have their origin in or are somehow connected with the geographic place named in the mark. You would make the arguments 1) addition of other words changes it from the name of a place to something else. This argument is rejected additional terms does not detract from the primary geographic significance. TTAB says that the words are laudatory terms. there is no public association. TTAB rejects cuba is known as a major producer of rum. The reason why we need to have a stricter standard for PGDM is because a lot of geographic terms are highly suggestive. And a lot of cases are goods that have nothing to do with the location. 1) 2) 3) Paris for perfume PGDM Paris for disposable diapers truly arbitrary and fanciful Park ave. for cigarettes Don't forget the generic doctrine Po boys associated with New Orleans but not necessarily from new Orleans Philadelphia cream cheese style of cream cheese NOT from Philadelphia. 2(e)(4) no name which are merely a surname not subject to absolute bar.

2)

p. 282 surname secondary meaning trademark you cannot register a trademark unless it has acquired a secondary meaning. Bramley name of a village and an apple If you argue it's the name of a village and it's not a place known for books and magazines, and no public association, then it is just evocative. After the examiner establishes a prima facie case (no Bramley in dictionary, went to a phone book), it is on the company to rebut the presumption. What will be our criteria to treat a registration application as a surname? 1) 2) 3) 4) degree of surname rareness public's exposure of mark as a surname TTAB refuses to quantify no magic number. Very fuzzy test. Whether anyone connected with the applicant has the surname it makes it look more like you are using it as a surname use Whether there are any recognized meaning other than surname? The structure and pronunciation or look and sound of the surname FUNCTIONALITY That, as a whole is functional absolute bar. Usually claims of 3 dimensional trademarks. Qualitex p. 96 also If we grant trademark to this person, would we put competitors at a significant non-reputation related disadvantage. In re Morton-Norwich Products it's the design of the spray bottle the body of the spray bottle has a lip that attaches to the spray head. They want all their bottles to have the same bottle. TTAB thought it was functional . We wish to make it clear that a discussion of functionality is always in reference to the design of the thing under consideration and not the thing itself whether the claimed aspects that are claimed to be the trademark are functional. Coke bottle itself is functional, but the question is whether the curve, shape of the bottle is functional? Look at the design, not the thing itself. Does this confer a design advantage that doesn't deal with reputation? Superior design for holding the bottle. Best way to contain this amount Shipping/product placement.

Cheapest manufacturing costs. We are talking about the functionality bar to trademark registration. Norwich (cont.) This case sets the standard for modern functionaility as a bar to TM registration. The important thing here is to separate the concept of: defacto functionality and a legal bar to TM registration which is de jure functionality. De jure the conferral of a nonreputational advantage such as to hinder competition if we gave someone exlucsive rights over a product design, although it could be packaging in some cases. This concept is based on the conclusion that if we gave someone exlcusive rights they would be able to throttle other competitors because they couldnt compete. Ex. the design is the cheapest, best design, etc. Babies Beat (p. 294) Babies Beat sought to registration the design of the baby bottle as a TM. The Examiner denied registration. On page 295, highlighted sentence at bottom of first paragraph. They are saying that everything has utility but what we are concerned with is whether its utility is to such a degree that it hinders competition. So the P will say that the design doesnt give a competitive advantage because other bottles are used to attain the same purpose to allow the baby to hold the bottle. They even provide a design of a bottle thats just as easy to hold. Thus there is no competitive advantage to their bottle. The TTAB though says this isnt the only way to get a competitive advantage. They say that the ability to clean the bottle can also give an advantage. Even though both bottles can be held easily, this design is more easily cleaned and thus this gives them the competitive advantage. Ex. you choose pink and blue as colors for baby bottles. How would we rule if we wanted TMs for these? - You would argue they are aesthetically functional. Thus no TM. So we have shape functionality arguments and aesthetic functionality arguments to prevent a person/company from getting a TM because it would give a competitive advantage. Weber-Stephen Products (p. 296) They are seeking a TM on the design of their product on page 297. How would we describe what they want to TM in words? - They are seeking a TM for the kettle body and legs. - They are claiming a very specific shape. This is the indented portion on page 297. What did the TM examiner find in this case? - They denied the TM based on the fact that it is de jure functional. - Bottom of page 297 says all the evidence they use to get to this conclusion. o They use the promotional materials from Weber; o A previous application for the design which denied the TM; and o 2 patents for the design. They had patents for the design aspects. Patents are for design utility and you dont get them unless you show your product has a usefulness and this in itself shows it wont be trademarkable.

Previous TM application (p. 298) - This is the 1972 conclusion that the Weber grill shape then (which was probably the same as now). - They say they felt the design was to create and new and better functioning grill and the TM was an afterthought. - This decision seem pretty powerful. What is the basis upon which we have a reversal of this decision? - One point as to why they rethought the issue is on page 302 which is the availability of alternative designs. o These alternatives wont be of any use if they dont cook as well. So for the different designs, to show the Weber design is not functional, they need to show those other designs cook as well. o What is the evidence that the other designs are just as good? Page 303 they have different testimonies. President of Weber says that the round shape isnt any better than any other design. Its just the fact that its covered not the round shape that make a difference. This is a bit disturbing considering the company promoted it as its round for a reason but now hes saying it doesnt matter. Top page 305, Mr. Karwacky from North American Products testified there is no difference based on the shape. If you were crossexamining him what would you ask? o Whats the shape of the grill you sell? If he says square then this is selfserving because you want your product to look good also and if you say there is it hurts your product. - They are also claiming a TM for the tripod leg arrangement. o Bottom page 306. o They say there is no evidence that it is functionally superior to anything, or simpler or cheaper to produce than other leg designs. o The argument against this though is that the only alternative is more than 3 legs and thus it would be more expensive. o This part of the record is definitly undeveloped and should have been sorted through more. - How do we get over the patents issue? They seem to point to the utilitarian aspects of the product so how do we get past it? o They acknowledge the patents but say that nothing in them points to any utilitarian advantage to the configuration sought for a TM. - What about a possible cost advantage in manufacturing the bowl shape? o There is a cost advantage but only because weber have the tools available to make it in this shape. But this isnt the case for everyone. o In the industry also there is no particular cost advantage to this shape. Why do we think this decision came out this way when there had been a 1972 decision in the opposite direction? - The difference is that Morton-Norwich came out in between.

That case said the PTO doesnt know what its doing when it comes to de jure functionality. They created a new standard which has its origins in Morton they will rethink their position on the Weber Grill.

Dont forget about aesthetic functionality. Ex. Nyquil blue, dark; Dayquil bright orange Section 2(d) Bar: Confusion This bar, bars registration when your mark so resembles a mark already registered as to be likely to cause confusion, mistake or to deceive. We know section 2 has absolute and bars overcome by secondary meaning. This is an absolute bar to a TM. We have talked about 2 kinds of TM actions: fights about registration and fights about infringement. Infringement rights are about likelihood of confusion. So now we are essentially taking our last piece of the bars of TM registration to move into the world of likelihood of confusion analysis. When the question is refusing to register a TM the analysis the PTO will use isnt very rich but they will use a lot of the same factors courts will use when doing an infringement analysis. We will then proceed to lawsuits about infringement where likelihood of confusion uses the Polaroid test. Nutrasweet v. K&S Foods (p. 257) D wanted to register the NUTRA SALT TM. This is a salt product with trace minerals. This would be sold in supermarkets and other grocery stores. P is opposing this mark based on their NUTRASWEET TM. They sell it as an artificial sweetener. They sell a lot of their product. There is a concession by D on bottom of page 258 that NUTRASWEET is a famous mark. The court holds that the Ds mark is likely to confuse and is unregisterable. What is the courts reasoning? - They products are sold in close proximity to each other. This can be referred to by asking, are these products sold in the same channels of commerce? o When you do this kind of analysis you can decide how fine grained you will make the analysis. If you are just look at stores then the answer is yes, they are sold in the same channel. You can go further and ask if they will be in the same place in the same stores and the answer would be yes here also. - The Price. Since they are both inexpensive products they will likely be an impulse by and you wont examine the mark as closely as other purchases. o So one of the questions on likelihood of confusion is, how much time does the consumer put into the decision to purchase? we saw this with the one minute washing machine analysis we spoke about. o The answer here is usually that the cheaper the good the less time you will put ito exmaining the good. It would be inefficient to put in a lot of time. o If youre not going to put a lot of time into purchasing the product then you are likely to snatch up Nutrasalt thinking it is a product of Nutrasweet. Page 260, Question #1: The point here is that when you make a decision like in the case above, you should ask yourself how far the penumbra of that protection should go? Its important like with the McDonalds case we did in the beginning of the semester.

Ex. when it comes to something like NutriGrain bars, do we see a difference or is it the same? Would we extend protection here? Question #2: There isnt a preclusive effect and the court will do a more full analysis. In any likelihood of confusion analysis when you are in state or federal court they will analyze the factual information to a greater extent that the PTO because they will have more information available. The PTO determination is based on a very thing record and this does not have preclusive effect for a decision in the courts with a more full record. It could be relevant to the court though. Marshall Field v. Mrs. Fields Cookies (p. 260) P is famous not only for their department store but most famous for their Frango Mints. The mints were originally called Franco Chocolates. P has a number of TM registrations (middle of p. 263). They are for department stores and for baked goods and other foods. Mrs. Fields makes baked goods but mainly chocolate chip cookies. This is a cancellation proceeding so the D already has a TM. P claims their mark will likely confuse in the baked goods area. P thoguh has a problem which is that the D has been moving towards their mark by shortening it and putting it in script. Also, in channels of commerce the D is selling their cookies and licensed them in department stores and malls.

Marshall Fields (cont.) P is a very well known TM with respect to its department stores. They have a TM for department stores and several for food and food restaurants. They started putting restaurants and bakeries in stores in 1920. They have many instore bakeries and restaurants now and this is important because they used their marks in a variety of ways to establish their baked goods and that while their mark is Marshall Fields for the stores they used Fields by itself and if they do this it increases likelihood of confusion with Mrs. Fields. They have $3 million in sales in food; but this is just a small part of their billion in sales per year. Remember that we need rules for large and small business. So remember that even though this is a small amount of revenue in their package we dont punish them for this b/c if it were a freestanding bakery we would think $3 million is a lot. D was initially called Mrs. Fields Chocolate Chippery and started in 1977. By this time they have 400 stores. Notice that if this were based on registration who is the senior mark holder? Marshall Fields because they started selling baked goods in 1920. Mrs. Fields expanded and now sells it to the general public in supermarkets by licensing the TM, by licensing to Marriot and to competitor department stores of P. This is important because it shows they are moving from their traditional channels of commerce in freestanding stores to channels more closely related to those of the P. The Ps argument is that the day they put the cookies in prepackaged boxes is the day other department stores in the same malls and areas will be able to sell them and cause confusion. So it is the packaging that moves D into the closer channels of commerce. Page 264 at top, they make an argument about Debra Fields. She is mentioned because she increased the likelihood of confusion. Bottom 264-265 P argues that when it was Mrs Fields Chocoalte Chippery in block print and fresstandng bakery they didnt think it was confusing. The

problem is that she has changed the mark to script and at the same time expanded the types of goods sold and the channels of commerce which now makes it confusing. The TTAB concludes on page 265 that because of the similar channels of trade there will likely be confusion if the marks are the same or confusingly similar. So the question becomes whether the marks are so similar as to likely cause confusion. Page 266, P makes an argument as to the dominent part of their mark. They say people recognize the words FIELDS more than Marshall Fields and when they attach that name to things people believe it belongs to them. - Most TMs are composite marks in that they consist of different components. - When you have a composite mark you can make an argument about a part of that mark being dominant. We saw this in Nutrasweet case. The court doesnt buy this argument though. - First, they say that Fields is a common surname and used often in the field of TMs. Thus it is not the dominant part. Surnames dont automatically tell you its a TM. Thus Marshall Fields is the TM not just Fields. Is Marshall Fields a famous TM? - This is important because famous marks get a wide scope of protection. o Ironically they say this but it ends up running against them in this case. o Caveat: saying a TM is extremely well known is different than saying it is famous. Here the TTAB finds that the famousness of P works against it. - This is because they find that D is also a famous mark. Since we have two famous marks battling it out it changes things. o You would say to P that they sat on their rights too long and now that theyre famous we have a harder case. - They say that they are not similar and due to both being famous there would be less likelihood of confusion. - How are they not similar? o They say the script is a bit different and enough that it would tell consumers they arent the same company. o The trade dress on the packaging is different. P uses green, while D uses red. Also, on page 267 in the middle the TTAB expresses that P is famous for department stores but not as famous for baked goods. So the question becomes once you are famous in one area are you famous in all other areas? This will be fleshed out in further cases. Remember the doctrine that if you get labeled as a famous mark you get stronger rights, that the penumbra of confusion protects it. Also, that composite marks may have a dominant component. When there is a dominant component and the D shares it it increases the likelihood of confusion. Channels of commerce are important in the discussion. Page 269, Question 2: Arguments for Uncles Bens - Famous so gets broader protection. - Bens is the most important element of the composite mark. - Both are sold in the same channels of commerce.

Arguments for Bens Bread - So well known that people know Bens doesnt make bread products. - That there is no dominant aspect to the composite mark. Actual Result: TTAB agreed with Uncle Bens and said it was likely to be confusing. Uncle Bens used to sell pasta based products so this might make a difference as to the channels they used to go through AND they make stuffing products which are made of bread so there is close proximity. There was an extremely strong dissent in this opinion. Now we move into liklihood of confusion in infringement actions. (p. 391) - when you sue in infringement actions as opposed to cancellation, you are suing under Lanham section 32 or 43. - Section 32 o This you sue under for registered TMs. - Section 43 o This you sue under for unregistered TMs and who are protected under CL and sufficiently in commerce for protection under federal TM law. - The two sections are the same in their protection and tests. So dont worry about differences in language. What are the tests? - The Polaroid Factors (or the Sleekcraft Test in 9th Circuit) - Polaroid Factor #3 Proximity of Goods o Originally these factors were developed for non-competing goods. If they were directly competing then you didnt apply these factors. But we now apply these factors for all products whether competing or not. o Page 392 at top overtime we changed our thinking about proximity totally. In Borden a court found that ice cream and milk are not proximate goods. Obiovulsy now this is a crazy result. Dairy products as a whole are proximate goods. The Borden doctrine was overturned by the Aunt Jemima doctrine. This changed it by saying pancake syrup and mix are proximate. o Remember that if goods are extremely distant we wont say they are proximate and would likely to find confusion. o In the Yale case they decided flashlights and locks and keys are proximate and the book says this is the apogee of where this would reach. But professor thinks this might not be the case since they be sold in the same place in stores. Strength of the Marks (p. 393) Nabisco v. Warner-Lambert (p. 393 bottom) This is about Ps Ice Breakers gum versys Ds Dentyne Ice gum. P is the senior markholder and they claim that Ds gum is confusingly similar. First factor is, what is the strength of Ps TM as a mark for gum? The court decides ice breakers isnt a strong mark. Why? - The advertising expenditures are very, very slim compared to competitors. - They have a very small share of the market before Ds gum was introduced. They conclude from this that Ice Breakers is not a strong mark when viewed in its commercial context. - This isnt the only way to measure the strenght of a mark though. - Think of it as having two dimensions: o Theorectical

Evidence here would be: distinctiveness of the mark as a matter of its classification (arbitrary or fanciful, suggestive, etc. b/c if arbitrary then already stronger). Court says this gum is NOT arbitrary or fanciful but suggestive. It is a double entendre (to have fresh breath to meet a stranger) and the Ice means minty breath. Commercial (or Practical) As they said, very little advertising and market presence. Not only does the company have very small sales and advertising but there is another part that goes to the practical strenghth. Ice is used often in connection with candy and gum by third parties producing these products. Lots of other people use ICE to describe mint flavored candies and gums. Why do we count candy and gum in same market? Both are used to get minty breath. Also, P itself lists gum as a subsection of confections.

The entire analysis we just looked at relies on what about ice breakers? The entire discussion is about ICE not the full name so it all assumes ICE is the dominant part of the composite mark. ICE probably conceded this mark to make out a credible argument of confusion against D but this hurt them in the end a bit. Whats the standard of likelihood of confusion? Does it mean you have to show actual confusion? (p. 395) A&H Sportswear v. Victorias Secret Dont need to show actual confession. A possibility of confusion is NOT enough but you need to show probable confusion. You need more than a mere possibility of confusion. (p. 396) Confusion as to what? Its probable confusion but confusion as to what? As to source of the goods or as to sponsorship, approval, or affiliation of goods? Medic Alert v. Corel (p. 396) D put clip art in its program and one of the clip arts was the Medic Alert TM. P sues saying they used their TM and people will have a likelihood of confusion. D says no likelihood because it is confusion as to source or approval of the goods.. P says the confusion issue is confusion as to approval of authorization to use the TM. Corel says likelihood of confusion is as to source or approval of the goods. Think about how broad the rights P is demanding. If they are right you could never ever use a persons TM because it implies they approved of you using it. Medic Alert (cont.) Remember that we are trying to get a better idea about the Polaroid factors. Here we want to know what the mental state is inside a consumers head when we look at what it means to be confused. There is a disagreement between the parties regarding, confusion as to what? - Corel says that in TM when we talk about confusion we are talking about confusion as to endorsement of their product.

Medic Alert says this is way too narrow and its confusion as to permission to use the TM. (top p. 397) o This is much broader than Corels position. o If this is the position of the law, then anytime you said the word Oscars in relation to Academy Awards they could claim confusion about permission to use the mark. Same would go for anytime it is put in print.

The court goes with a standard in between these two positions. They say you have to look at the statutory language and thus its confision as to origin, sponsorship or approval of the goods, services or activities of the plaintiff. - This is closer to Corels position. On the facts of this case, what does the court say? - The court says this is not likely to confuse. - The reasoning is that this is just one small image among 1000 in the clip art file, if there are 1000 TM images you can hardly say it causes to confusion to endorsement, origin, etc of the Ps goods, and if Corel is sponsoring Medic Alert and likely to cause confusion then the mark would be on the package, or on the CD not embedded deep inside the product. - Its theembeddedness that dissipates any likelihood of confusion. A proper showing of confusion doesnt need to show the confusion aidded the sales of the D. this is the Nike case at bottom of 397. There could be confusion that hurts the sale of the product in fact. Paragraph at top of page 398: - this is the relevant inquiry. - Are consumers, upon seeing one of the images in the clip art file, that P somehow endorsed the Ds product or offering. - The court says it would be a reach to say P endorsed Ds use of the graphic or product upon a consumer seeing it there. Similarity of the Marks This is another factor in the polaroid test. We are concerned with similarity on three fronts: similarity as to sight, sound, and meaning. - Sight is pretty obvious. - As to sound: why is this different than sight? o Ex. MikeRoweSoft.com as TM counsel you would say no similarity as to sight but there definitly is as to sound. But why would you say as a judge that Microsoft doesnt win as to similarity as to sound here? You only see it on a computer screen and the only way you will ever use it is to type it. People wont necessarily communicate with words about the name that is purely oral and sound. o There might be some but there is no execution that doesnt involve seeing it visually also. o This is usually a very legitimate issue. - Meaning: generally tougher to show than appearance or sound. o We have a bunch of examples on 399 that are very difficult. o Ex. Blue Lightening and Blue Thunder; Leaf Eater and Weed Eater

o o

These were found confusingly similar as to meaning. The most extreme similarity of meaning found on 399 is Mountain King and Alpine Emperor. You can find two marks similar in meaning although in different languages. Ex. Red Bull and Toro Rojo The weirdest finding is for Lollipops and Jellibeans for skating rinks. Remember that we are always looking at context. What good or service are we referring to are important. How can we distinguish between the examples of similarity in meaning and those where no similarity was found on 399? The fact that you choose and arbitrary and fanciful mark it would be harder to find meaning of similarity. Ex. Lollipops and Jellibeans are very arbitrary for ice rinks. BUT spice islands and spice garden for spices is not so much more confusingly similar meaning. Thus when you have a more descriptive name for a product its easier to find similar meanings among descriptive marks for same types of products.

E&J Gallo Winery v. Consorzio del Gallo Nero (p. 400) P is a well known winery from California. They spend a lot of money on advertising, sold over 2 billion bottles of wine and is a mark with intense exposure to consumers. D is an Italian Trade Association based in Italy and promotes a wine produced in that region. Prior to their formation there was another association that used a Black Rooster as their mark and when the D took them over they appropriated that mark and put it on the neck of the bottle. What you should get from all this is that the situation is kind of iffy. The D had been around a long time. But in 1987 the D changes their name to the current form with the Black Rooster on the neck. This makes the fact pattern very questionable b/c by 1987 the P has enourmous recognition among consumers. What is the estoppel/res judicata issue in this case? - There was a case based on these marks in Canada and UK. - In Canada P was senior markholder and when D applied for TM Canada rejected it based on it being confusingly similar. - In UK they said that D was senior user and thus they win on confusingly similar basis. - Thus P should have made argument that D is collaterally estopped on confusingly similar issue. But this is different laws in different countries thus res judicata doesnt apply. 1. Strenght of P Mark a. Very strong mark. b. The court says its extraordinarily strong and distinctive. They also mention that 3rd party usage of Gallo on other products doesnt diminish the strenght of their mark. c. Keep in mind that this factor is weighed on a 2 dimensional basis distinctiveness and arbitrariness and commercial strength. i. Gallo wouldnt be arbitrary because its a surname and thus you need secondary meaning b/c its descriptive.

ii. But we see that it has enourmous commercial strenght. 2. Similarity of Marks a. D makes the argument that other words are used in conjunction with Gallo. i. The P responds that the distinctive term in all of this is Gallo. 1. Basically that it is the dominant part of the TM. ii. The P also says that they use the term Gallo with other terms on other products. Thus people are used to associating other words with Gallo on their products and makes the Ds mark confusingly similar. 3. Similarity of Goods Sold a. Court says they are similar goods. Basically, wine is wine or red wine is red wine. b. The D admitted red wines all compete with each other and this is damaging to the case. 4. Similarity of Marketing Channels a. They both sell their wines through retail establishments as well as using same advertising media. b. You could draw on the NutraSweet case to say same marketing channels. 5. Consumer Sophistication a. An Alabama court said winedrinkers are a discriminating group and this sophisticated as to wines. But this California court says the Alabama court was wrong because wine isnt appreciated in the south in 1959. b. Whether as to there is a high amount of discrimination put into purchasing this wine the court says is not much and this is an impulse buy. c. When you look at degree of care by consumers you might have one very discriminating group and one thats not. So one way to place this question is to take the product and to look at the price which is the simplest way to decide this. likelihood of confusion? Gallo is dominant and people expect it to appear in conjunction with other words. Wine is an impulse purchase. Interestingly, there are two groups of people there are impulse buyers and people who are very sensitive to wine. If you have different consumer groups, we should probably be worried about the largest most vulnerable group.

Evidence of actual confusion either examples or surveys. p. 405 Gallo Nero survey showed the gallo nero and gallo bottles together. Critiques: it's not clear that consumers were seeing the trademark because of how small the black rooster was. Fundamental if we're judging confusion, we really don't like side by side confusion. This is irrelevant to the analysis. Goods alone confuse? Gallo survey took the neck seal and asked consumers where they thought the wine was. There was a much higher confusion. Focuses consumer on 's trademark. Intent? Court finds intent incriminating. Problem with intent is that it is circular. They changed their mark with knowledge of mark.

Same channels of commerce analysis is about where consumer expects to see a product. Walgreen brand v. Sudafed brand. You just know that it is there. Banfi v. Kendall Jackson Banfi importer of Italian wines col di sasso register 1992. cabernet sangiovese blend. Robert Pepi Colline Di Sassi produced in napa valley. Combination of house trademark with trademark. Labeled as containing sangiovese. 1989. were approved by bureau of alcohol in 1990. this is labeled as a sangiovese wine. Americans tend to focus on the varietal. Under American law, you can use up to 15% of other grapes and still call it 100%. Parallel system, not only is the PTO, but bureau of alcohol, tobacco and fire arms has to approve the name of wines because these are regulations concerning labeling requirements, etc. Banfi got the registration first. But Robert Pepi got federal approval to use the name first. High end limited production wine. Because it is such a high end wine, it is not sold by the glass. If you order wine by the glass, you will never see the bottle, which means you will encounter trademark 2 ways in the menu and aurally. You would not see trade dress. If it was sold only by the bottle, you would always see the wine with the trade dress. Banfi sets themselves up for a fall. Banfi complains. Banfi's first objection is that Robert Pepi's wine is primarily geographically, misdeceptive. But the Banfi finds out that Robert Pepi that they had the same mark but that Robert Pepi used it first. Banfi then added a gold mark to their label so that they can be distinguished. No evidence of actual confusion. Numerous names indicate weak mark. Court would not like to say there is no confusion otherwise he will be hearing the marks' cases. Because marks are weak, it helps junior mark use banfi.

Similarity of the marks dissimilar this is a stretch. These factors are pretty malleable. Proximity of the products difference in varietals (opposite of gallo nero) difference in price range sold in different sections of the wine store. Sophistication of buyers impulse buyers are probably buying cheaper wine (not in this case). Why does it hurt banfi if the wine is sold by the glass? Helps senior mark holder. Banfi added banfi in gold to distinguish itself from kendall Jackson, but if banfi is selling its wine under circumstances that consumers do not see the label, then it's not helpful if banfi is selling by the glass. You make the argument that with sophisticated consumers know that high end wine won't be sold by the glass if the wine is sold by the glass, it would dissipate the confusion.

Intent banfi adopted mark in good faith. Conceived of mark in the same time. Quality of the 's product whether the senior mark can suffer because of inferior quality of junior mark user. This is the weakest factor. This appears to be bad for the junior mark holder, but enormous differences can decrease the confusion. Intent be careful that the intent argument doesn't become circular. Fleishman senior mark for scotch called black and white. Fanciful and arbitrary. Court says that the adopted the name and its only purpose was to cash in on senior mark. Knowledge = bad intent. Cf stork club. This analysis is dependent on already coming to the conclusion that there is similarity in the trademarks. Holiday Out distinguish from Fleishman less arbitrary and fanciful. Knowledge and adoption of arbitrary and fanciful looks like bad intent. You have to be careful when you deploy the intent factor in the polaroid factors. You need to be careful that it doesnt become a circular issue. Is likelihood of confusion a question of fact or a question of law? (p. 418) - Most courts think it is a question of fact. - Federal Circuit says it is a question of law. o Why would they say it is a question of law? They are the ones who oversee the TTAB decisions. Thus most of the cases that come to them are the appeals from administrative decisions and the TTABs ruling isnt based upon a deep or rich analysis of facts thus they believe its a question of law. - 2nd and 6th Circuit think it is mixed. o They have a two leveled process: The factors are a process of fact finding. The ultimate determination of confusion is law. o SC does not like this process and said that you have one or the other, you cant make a heirarchy of law and fact. o The circuits reasoning for this is like in tort law. The trial first determines the facts and then makes a determination based on the fact finding, so in this sense their approach is understood. But the SC says this shouldnt be done. House mark joined to a disputed mark (p. 423) What is an example of a lawyering of TMs? - Fanta: a coca cola product - Coca Cola Blak - Apple Ibook - Ford Mustang - Chevrolet Nova These are examples of house marks and brand marks. When a brand name becomes powerful enough there is a tendency for it to migrate into a house mark because the owner of the TM tries to exploit it in many ways. - ex. Reeses

o o

Reeses pieces, cups, nutrageous, sticks, peanut butter, fastbreak This was a brand name and now its migrated into a house mark with a bunch of brand names under it.

The question we ask is, if we add the house mark does it lessen any likelihood of confusion? Ex. Banfi Case they added the house mark to the labels to decrease a likelihood of confusion. The example on page 423 in the middle is Countrytime for lemonade and County Prize for lemondade mix. - Countrytime o Added house mark General Foods - County Prize o Added house mark Bordens - How similar are these marks without the house marks? o The first words are very similar and the second words are one syllable and thus we have similar sight and sound. There is similarity as to meaning because the implications for both are the country, rural aspects of lemonade. They arent really arbitrary but are suggestive of country goodness and rural farm life. - If we added the house marks to these, does it diminish any likelihood of confusion? o The court found it still infringed and there was still likelihood of confusion. o BUT you must see that you can make an argument that addition of the house mark decreases it. This argument isnt much different from when you take apart a complex TM like with Mrs. Fields. Mobil Oil Corp. v. Pegasus Petroleum Corp. (p. 424) P brought this action for infringement based upon the flying horse symbol in Mobils mark which is Pegasus a greek mythological horse. Mobil runs its gas stations and such but also participates in the oil trading business; they are a vertically integrated company in the oil industry (they do everything basically in the oil business). They offer both products and services. There is nothing in the record or that we know of where Mobil uses the word Pegasus but they use the picture. Pegasus adopted the name of the greek mythological horse also. They confine their activities to oil trading and they dont sell directly to the public markets. They dont have an actual product but on their letterheads they have the name of the company, its parent company and their symbol. Its a service company, oil trading services. Theyve never used a symbol of the horse, they use an interlocking double P as their symbol. The first thing we need to look at is the similarity of meaning between a word and symbol. One company uses the symbol and one uses the word but the court seems to say that similarity of a word and an image is possible. Top of page 426. - The court says as a matter of law a word and pictorial representation cant necessarily be equated. But they say that it can be taken into account to determine any similarities as a matter of fact. Are we proceeding under section 32 or 43 of the Lanham Act? - 32 covers registered marks; 43 covers CL marks. - Thus we are dealing with section 32 here. - Remember though that the standards are the same but you need to know what section we are under in every case.

Factors:

Strength of Ps mark o Very strong mark and so is the flying horse which has been around since 1931. o Bottom of page 426 famous marks get stronger protection. Proximity of Goods o They are proximite in the sense that both compete in the oil trading business even though Mobil doesnt use the flying horse in the oil trading business. o So the court basically is saying the test is that you look at the oil business then it can carry over to other products as well even if you dont use it there. If we were doing this test rigorously we would look more at where the TM is being used rather than the broad range of products and category where its being used. o The court also says that because of the enourmous famousness of the marks it matters less the proximity. Defendants Intent o You want to be careful here. The court leaps from knowledge about Mobil to bad intent. o Middle paragraph of middle one on page 427. They say D didnt innocently select the potentially confusing mark. This is circular. Quality of Ds Products o This is the least important factor and courts dont always know how to deal with it. o The court here says it doesnt matter what the quality of Ds products were because P isnt required to put their reputation in Ds hands no matter how good or bad the quality is. Actual Confusion o D argued that the absense of misdirected mail or phone calls AND the fact that they have to post a letter of credit while P does not shows no confusion. They are saying that if they thought they were dealing with Mobil they wouldnt need to post a letter of credit. Thus they are saying that this is confusion at the moment the deal is closed and if theres no confusion theres no case. This goes to the issue of confusion as to when? We discussed as to what but not as to when. This is the introduction to initial interest confusion. This is a controversial idea in TM law but we should assume that properly handled it is a bona fide form of confusion. This is a fact pattern says that they acknowledge at the moment the deal is done there is no confusion BUT at some point during the process of sale they were confused. And this continued long enough for the P to make it actionable even though it was clarified before the deal was done. Part of the idea here is that a powerful TM is like a lightbulb and were all drawn to it even if were told the real deal at some point, this drawing shows there was confusion at somepoint and that company got some goodwill normally associated with the other company. (bottom p. 428)

The court says its the probability that potential purchasers will be mislead in to a potential initial interest confusion that we are concerned about. This confusion makes a sufficient TM injury. o But how much initial confusion counts? o To answer this we go to the next case.

The Network Network v. CBS (p. 431) The Nashville Network broadcasts country music and programming. They registered the network and TNN in 1987 and claim to have used it since 1981. P was formed to provide consulting and training for IT. They claim to have used the mark since 1986. Lets say TNN was registered for country and music services would you permit the same mark for IT services? - yes because they are completely different services and you could have both with no confusion. Is there any evidence of confusion off the internet between the two companies? None The P got the domain name TNN.com and along with this they got a nasty letter from CBS telling them to cease using that domain name because its confusingly similar to TNN for the tv channel. The court here says the polaroid factors are only used when goods are similar. BUT we should always apply these factors no matter what. Ignore this stmt by the court. Factors: Proximity of Goods and Services o Top p. 433 these things could not possibly be associated by a rationale buying public. o They say in same section that in the real world these channels of commerce are separate but the internet happens to bring them together. BUT the internet is not a product or service, it is an advertising medium. Thus the internet doesnt automatically make the services related. Actual Confusion o Even if you land on the wrong website a consumer wont be confused. o The court says that even if there were confusion the court would count it zero. They say the test of actual confusion is not whether anyone could possibly be confused but whether the reasonably prudent consumer would be confused. This is a narrowing of actual confusion. o Then the court speaks about landing on the wrong website. One way to say this is even if you land on the wrong site and are momentarily confused its not enough initial interest confusion for it to be actionable. This court says tehre is a difference between inadvertantly landing on a website and being confused. Youre not definitly confused.

This case spoke about cases that went the other way. - Interstellar Starship v. EPIX (p. 434)

P had the TM EPIX and used it for video imaging equipment and software. D gets EPIX.com and puts up pictures from their performances of the Rocky Horror Picture Show. The important thing is that these photos are altered and digitally manipulated. o Is there initial interest confusion in this case? The court said they got the impression that customers looking for P would have an interest in Ds photos and display and thus capitalize on Ps goodwill. So basically they are saying that because customers for P might have an interest in photo alteration they might be confused longer by photos on Ds site and this could right on the goodwill of the P. Brookfield Communications v. West Coast Entertainment (p. 435) o This was about the site moviebuff.com. P had the TM for Moviebuff and sold software with entertainment-industry databases. D is a large movie store with a comprehensive searchable database similar to Ps software. o Was there initial interest confusion? Yes. The court distinguishes the case from TNN case though. They said there is a difference because the companies competed in this case but if you dont compete it doesnt work. Thus if there is a sufficient proximity of goods or services for the D to be confused or for the D to be generally feeding off goodwill of the TM then the initial interest confusion test makes sense. o

Part of what is implicit in intiial interest confusion is that there is a friction involved. When you are actually initially confused you might just use that persons product because theyve made enough of an investment that the consumer is dissuaded from continuign the search for the real product and instead uses that persons product. Munsingwear v. Jockey International (p. 445) P never registered their TM but call it H-Fly, horizontal fly. They had been selling it since 1946. D introduces them in 1992. obviously this is an aspect of the product design which they now want to claim has TM value, that it serves as an indicator of source. So the basic profile of the case is the same as the Weber case and Rock & Roll Hall of Fame case where they didnt intend the design to be a TM but now claim it is. Jockey immitates this horizontal fly in 1992 and P brings an action under 43(a) (for an unregistered TM). The 8 factor test in the eight circuit is the 6 factor Squirtco factors. This issue is to the similarity of the marks. The faultline, what the parties argue about in this case, is whether you argue likelihood of confusion as to presale or postsale. This is why this is a bookend to initial interest confusion cases because you usually looked at this at moment of sale but then intial interest confusin was about leading into the moment of sale. This case says maybe it isnt just at the moment of sale, maybe its afterwards too. But the court holds that its just limited to the presale in this case. This is so because with this product you dont see the product afterwards and so there is no confusion after (p. 446). BUT they say that if its a product that you can encounter without the packaging after sale you can still make an argument for a confusion in postsale. You could argue your good is usually in

rich peoples houses, for example, and since your good is sold in target it will confuse and diminish my goods. Here though the court said you dont encounter underwear in a postsale situation unless you already know where it came from. But when you can encounter something where you wouldnt in presale packaged condition you could make an argument for postsale confusion. P says that even in presale condition they arent always shown in their packaging. They are displayed on maniquins all the time. The court doesnt agree because even though true when you go to buy it its in its packaging. Lets assume Ps design has some proper TM value. Ds argue is like Banfi; when packaging is put on top of the TM value there is no confusion or less confusion. When you add the house mark it dimishes the confusion. p. 447 at top when viewed side by side. Whats wrong with this sentence? In Gallo the court said you dont do a survey with a side by side comparison. The proper test is to show it to them by themselves and then see if they are confused. What does the court say about intent? - the court says that the packaging makes it clear that there was no intent to infringe on the TM. How sophisticated are the consumers? Inexpensive so low sophistication. Impulse purchase. The paradigm is confusion at moment of sale but these cases are meant to show you that there can be arguments for initial interest and post sale confusion. Reverse Confusion Harlem Wizards v. NBA Properties (p. 448) What is reverse confusion? - A large entity which either has or can quickly command enourmous marketing power adopts the same or similar TM of a smaller entity which has been in the market a long time. - Bottom 448-449 is a good definition. - So the junior user who is more powerful than the senior user. The senior comes in and complains that their mark is confused with the junior users marks. - This is a cause of action expressly oriented to protecting small and medium sized individuals who have been in commerce for a while and a larger company comes in and overwhelms them reputationally. The Washingtion Bullets wanted to change their name to Wizards. The Harlem Wizards are a show basketball team who doesnt really play games but does tricks and fun events. P has been around since 1962 and the D team wants to rename themselves in the 1990s. What factors does the court focus on? - Degree of similarity of the service o The court concludes that they are not very similar at all and that this is the most important indication of confusion.

They say that although they are in the same general category of the market it doesnt mean they are similar products. Competitive basketball is not the same service as show basketball. o This case shows that you can separate goods and services when you want to. Ex. the wine cases. Price Point (bottom p. 450) o NBA are significantly more expensive than tickets to the Harlem Wizards and this difference makes it significantly less likely there will be confusion. o The reasoning in this section is irrelevant for the court to talk about when they talk about the NBA fans and sophistication. We are talking about the Harlem Wizards consumers!! NOT the NBA fans. We need to look at how sophisticated the Ps fans are and how confused they might be. o How could you argue for more confusion here when looking at harlem wizards fans? Their tickets are cheap which makes the purchases less sophisticated and this makes it an impulse purchase. This is the transaction that should have been focused on and you would have an impulse argument in favor of the P. o

Professor has an issue with the line on top of 451 which says its unlikely a person going to NBA game would expect to see harlem wizards. - He says this is too narrow an analysis. Likelihood of confusion test is not just source but sponsorship, affiliation and endorsement (medic alert). This would be the proper scope of analysis. Dreamwerks v. SKG (Dreamworks) (p. 451) P is a convention organizer specializing in Star Trek themes. D is Spielbergs movie studio and production company. P is the senior use but smaller than D, the junior user, who is much larger. Question here is whether a reasonable consumer attending a dreamwerks convention might do so believing that it is sponsored by dreamworks. In this case, they ask, if this situation were reveresed and Dreamworks was first, would they have a claim against dreamwerks? He says the answer is yes and thus it should be the same in this instance. He says unquestionably the studio would have prevailed if they were first. What 3 factors does this case focus on? - Arbitrariness of the Mark (strenght of the mark) o The mark is very arbirtrary at least to the extent of being suggestive. (p. 452) - Similarity of Marks o Sound similar o Sight similar; court says the difference in spelling could have been made up as a variation suggesting an ancillary division of the same company. Also, he says spelling is a lost art and most people dont pay attention to misspellings anymore. Basically he proves his point by assuming both sides because he looks at the smart and the stupid consumer. o Meaning - Relatedness of the Goods or Services o Movies and science fiction are now complimentary type services and merchandising.

These are conventions are dedicated to science fiction television & movie franchise and so its easy to say there is similarity in marketing and such because its easy to see a movie studio affiliated with all of this.

Basic rule we should have is that if confusion is double digit or more the court takes it as serious likelihood of confusion and if below that the court views it as not serious likelihood of confusion. Secondary Liability Contributory Infringement Inwood Labs v. Ives Labs(P) (p. 454) P registered the TM name CYCLOSPASMOL and the patent for the product expired in 1972. Then all the generic manufacturers started making the same drug and used the same color capsules as the P. P has the drug out in 200mg and 400mg capsules. The 200mg capsules are blue labeled Ives 4124 and the 400mg capsules are blue-red and labeled Ives 4148. Ds makes the same product, in the same dosages, in the same colors. So we have the TM name and we have a claim of trade dress. The P can claim they have trade dress in this just like in Qualitex. If trade dress is an issue (direct liability issue) how does the court dispose of this issue? - p. 458. there is a functionality response by the DC to the trade dress argument. They say there is a fairly well defined group of people who are used to seeing this drug in a particular color so they dont confuse them. - Thus a functionality argument is a reasonable response to a trade dress argument. - This shuts down the direct liability claim. The main issue in the case is a claim of contributory liability. The claim is that by manufacturing the dosages the same and the color combinations in the same way, they dont have direct liability but by using the same color combinations they induce pharmacists to pass off the generic drugs as actual CYCLOSPASMAL, the actual TM. Doctors normally prescribe one of two ways: give patient the drug or its generic equivalent; OR give the drug. After the patent expired the P went to physicians asking them not to prescribe the generic drugs. So in theory when there is only a prescription for the drug the pharmacist should only give you the drug and not the generic. But otherwise you could get one or the other. Thus, the direct TM claim goes against the pharmacists for passing off generic drugs labeled as CYCLOSPASMAL. Then we have the second claim of contributory liability to the generic manufacturers because this couldnt be done if they didnt make the drug in the same color pattern. There is a layering problem in that the drug manufacturers sell pills to pharmacists and thus ths makes them the consumers. When they go to pharmacists there is no confusion because they are clearly marked by their source. But then the pills go out of this packaging and are put in other packaging. Then the end consumers will be confused. The court finds the generic drug manufacturers not liable. Whats the standard?

Whether they intentionally induced the pharmacists to mislabel the drugs or they continued to supply them with the means to carry out the infringement when you knew they were infringing. The court says on p. 457 in middle that there wasnt enough evidence that the manufacturers suggested, even by implication, that pharmacists should dispense their generics as the actual drug. And they didnt invite them to mislabel the generics. Incontestibility Defenses Section 33(b) After a TM is registered for 5 years and meets Lanham Act section 15 and subject to a few exceptions in section 15 and then once the mark is incontestible (meaning the principle defense that drops away is that the TM is merely descriptive) 33(b) describes the TM defenses that remain. The first defense is fraudulant acquisition of the trademark or incontestible mark. (p. 486) The second is abandonment of the mark. Third, use of the mark to misrepresent the source. Fourth, use of the mark in a descriptive sense other than as a TM (fair use doctrine). Fifth, limited territory defense (Thrifty Rent-a-car and United Drug). Sixth, prior registration by defendant (where D has same or similar mark that he registered first, TM office said no likelihood of confusion, and junior holder sues for likelihood of confusion, the D will say the TM registered them first and that TM office found no confusion.). Seventh, use of the mark to violate antitrust laws (very little law in this area). Eighth, equitable principles can always raise these latches, estoppel, acquiescence (with all you argue that P knew about your use and did nothing about it). Ninth, functionality. Tenth, (second paragraph on page 488) in addition to statutory defenses you can always argue that a TM has become generic. Eleventh, can always use the 2(a), (b), and (c) grounds against a TM. Fair Use Defense Remember Rock n Roll Hall of Fame case even if they had a TM in the shape of the bldg, the guy selling the shirts and photos could say he is just using a picture of the bldg which is descriptive and a fair use defense. United States Shoe v. Brown Group (p. 489) P used the slogan Looks like a pump, feels like a sneaker. D uses as part of an add feels like a sneaker. Ps TM isnt the typical TM, it is a TM slogan. This is the claimed TM though and probably wasnt registered. D has their own TMs for some products. The Ds ad agency had proposed some possible advertisements but the D rejected them b/c they were similar to the Ps slogan. (bottom p. 489) The argument from P would be that the analogized of the sneaker with the pump os the dominant part of the slogan and if they use the same words will lead to a likelihood of confusion that their pump is from our company. They are unhappy about the feels like its a sneaker in the small text on their print ads. - Based on the polaroid factors whats their best argument? o Similarity of the marks meaning You would say there is similarity as to meaning, substantial similarity as to sight and sound.

You would say they dont need to refer to sneakers to refer to the idea they were trying to convey. The best argument for the D is that the best way to describe the comfort of footwear is to refer to it as a sneaker and we are using it descriptively and not infringing on their TM. Even if they have a TM in the phrase we are using this term in a descriptive way and were not infringing on their TM. The Fair Use Defense is that you use the words to describe your product and just because another has TM rights doesnt prohibit you from using the words in a descriptive sense. This doctrine does NOT apply to completely made up names such as Kodak or Xerox although it does apply to arbitrary or fanciful names such as Dove. Middle of page 491, bottom of second paragraph when the P chooses a mark with descriptive qualities. - If you want to choose a TM with descriptive qualities then you bring yourself to this danger. No matter how powerful your TM becomes people will need to use these words to describe their product as well. Good formulation of the test is the starred sentences in 1st paragraph at top of p. 492. Car-Freshner v. SC Johnson & Son (p. 493) P made the pinetree air freshners that hang from the rearview mirror. They come in the same shapes but with different scents and colors. P says they have CL TM rights in the shape of the pine tree for flat cardboard airfreshners. D has been making pine tree shaped air freshners during the christmas season. They also have a pinetree scent. P is claiming that D infringed their TM with these pinetree shaped airfreshners. Ps argument is that this infringers on their CL TMs in the trade dress of their products and when they see the plug in they will think it comes from their company because they associate any pineshaped freshner with my company or an endorsement, affiliation or sponsorship. D raises the defense that there is no likelihood of confusion because of dissimilarity and if there is any confusion they raised the fair use defense. At trial the D won on the likelihood of confusion defense. The trial court denied the defense of fair use b/c they said it only applies to descriptive marks and this is suggestive. Thus they said D cannot raise the fair use defense. This is wrong though because the question is not whether the P has a descriptive mark but whether or not the mark has descriptive qualities. The only marks that wont are made up words or shapes. The next part of the question is, did the D use it in the descriptive sense. The court of appeals reverses and in the middle of 494 speaks about the real test in fair use defense cases. The court rules that the fair use defense can be raised and the D seems to be using the pineshape in a descriptive way. This case shows the clarrification on the question to be asked and to show that shapes, sounds, etc can be used descriptively. The second kind of fair use that develops is nominative use.

These cases raise the question about how much freeriding off a good idea we allow. In the shoe case it seems there is a bit more freeriding than in the freshner case. There is a lot of freeriding we accept but there is some we dont. We intuitively draw lines in these types of cases to where we say there is unfair competition. Trademarks as Speech The incontestibility defense and the discussion of descriptive uses leads us to the problem of the relationships of TMs and free speech. How much do we reserve the communicative, reputational, etc power to the TM holder from the TM? We get to the question of, what is the relationship of TM law to free speech? Because TM law is a restriction on free speech. So where do we draw the lines? The lines used to be very easy to draw. On page 830 he points this out, and says it was easy b/c TM law functioned only in the rhealm of commercial expression and until the 1950s or 60s and the SC extended 1st amendment protection to commercial speech there was no protection in commercial speech. San Francisco Arts & Athletics v. USOC (p. 831) Why did the give them the exclusive rights? b/c congress is too cheap to fund the olympic team and so they do this so they can raise all the $ and fund the team. They raise two arguments against this - its generic so congress couldnt create property rights in the word. - its contrary to the first amendment to give exclusive rights to a word and at a minimum you have to create a likelihood of confusion test which would protect consumers which is a legitimate interest in giving these exclusive rights. Basically they say the congress could have a legitimate purpose for doing this because they themselves could conclude there would be conclusion. They say this restriction isnt broader than necessary to protect the legitimate congressional interest. Its incidental to a legitmate governmental purposes. (p. 834 in middle) They say this isnt a big hindrance on speech b/c they doubt it hinders purely expressive uses of the word olympic. (p. 835 at top). In this sense they say the word is still out there for people to use. They also say that by giving congress the exclusive use of this word they still havent prevented them from conveying their message. The main thrust of the gay olympics case is that the majority says the P is not prevented from speaking by this restriction on the use of this word. we spoke about how this is stronger than a trademark law b/c this private law doesnt require a showing of likelihood of confusion. SC says this is ok b/c this standard is set up for an administrative system but here Congress made this determination on their own. P. 834 in middle, they say cpngress hasnt prohibited the P from conveying its message giving exclusive control to A doesnt prohibit B from conveying its message. This is how we reconcile TM law with 1st amendment. Dreyfus Article (p. 837) She attacks the holding above. She says the substitution proposed by the majority is highly inadequate and they misinterpreted the message the P was attempting to convey. She is saying

the majority was wrong in a matter of communications in saying Games is an adequate sub for Olympics. I. Trademarks Speech and Parody a. Dreyfus Article (p. 837) i. She attacks the Olympic holding She says the substitution proposed by the majority is highly inadequate and they misinterpreted the message the P was attempting to convey. ii. She is saying the majority was wrong in a matter of communications in saying Games is an adequate sub for Olympics. iii. The idea here is, are there particular words that are so rich in their meaning that we cant let anyone have exclusive control over them? iv. She ties this idea to the TM doctrine of genericness. (p. 837 bottom) 1. A TM can lose its protection when it becomes the word to define a product and not the source of a product. (ex. escalator, thermose). 2. Another way to state the doctrine is by saying, when a word becomes critical to communication there is no other easy way to convey that meaning, then we depropertize it. a. Ex. escalator has a richness of meaning as compared to a mechanical moving staircase. b. This is an argument that it is essential to having this word to convey meaning easily. 3. She says this second argument is just like Olumpics in this case. v. They wanted to use the word Olympics because it conveys a grand, respectable meaning. It intends to empower a community. This is a powerful message and her argument in this article is that this meaning cannot be captured adequately with a substituted word. b. New Kids on the Block v. News America Publishing (p. 841) i. We move into this case because adequecy of communication comes to ahead in the Gay Olympics case but reverberates into the fair use doctrine that you have to be able to use words in their descriptive sense even if they have attained secondary meaning. ii. Now we have the court giving us a different kind of fair use which is not in the statute. But everyone agrees with this and no one made accusation of legislating. iii. Facts: Newspapers are writing editorials asking fans to phone in to a 900 # to vote for who their favorite New Kid on the Block is and such. P challenged the use by saying that the fair use defense is inapplicable when used to directly challenge the TM holder. 1. Ds position is on 1st amendment grounds. They say they have the right to express their opinions about the band and that if they cant use their names they cannot gather information. This is because their name is the only way to speak of them. 2. DC was for the D on 1st amendment grounds. But at bottom of 842 the court says they can decide a case on non-constitutional grounds if they can. iv. How does he characterize the costs and benefits of TM law? 1. He says the primary cost of the TM system is the removal of words from our language or nonentrance of words to begin with. 2. Connecting this to Gay Olympics case, the SC admitted private law removed the word Olympics from language for the purpose of sale of goods and services. But they seperated words from meaning by saying there are adequate other words to convey meaning. 3. But the court says this argument isnt enough, that we should just separate words from meaning and ideas. v. The court here says that genericity is when there is a merger or fusion. Where you need the word for the idea. The meaning and idea merges into the one word. 1. But this isnt enough.

Page 843 in middle. He talks about fair use in descriptive instances. 1. What happens here is that he starts with a statutory provision on descriptive fair use but morphes it into a slightly different idea that use of the TM doesnt imply sponsorship or endorsement when mark is used to identify the thing rather than identify its source. a. He then gives a very sensical example at top of 844. 2. This fair use is different than the first one we studied which was about using descriptive words to describe something away from the TM holders product. This is the descriptive fair use defense where you are naming something in the world. 3. In this situation of nominative fair use defense, the D says yes I am using the word to describe your product or service. vii. The court sets out a 3 part test for nominative fair use and when it will be permitted: (bottom page 844) 1. The product/service in question must be one not readily identifiable without use of the TM, a. This is met most of the time. It would be hard to refer to cars made by VW without saying VW. 2. Only so much of the mark(s) may be used as is reasonably necessary to identify the product/service, and a. Ex. using the symbol, trade dress, etc. shouldnt be used if you could convey the purpose by just writing it. b. Ex. when referring to Coca Cola you could write it out in plain letters and attain your purpose without using the TMs script and such. 3. The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the TM holder. a. Very similar to 2nd condition and a wrapup of 2nd condition. b. This would be the difference between a car repairman with a sign with VWs name saying we repair and him having a wall of lights and such filled with VW logos and his name in the middle. viii. Nomnative fair use defense usually comes into play where the D is carrying out an expressive activity. ix. Holding: first, second and third conditions were met here. (p. 845) 1. Thus, nominative fair use prevailed for the newspaper. 2. Although the court tried to decide this on non-constitutional grounds it is clear that this defense is serving a buffer between 1st amendment concerns and TM law. Its very clear that we have free expression motivations that does into this defense. x. The end of the case says some nice things about TM policy. 1. The P makes the economic argument that their fans are kids and dont have much money so the money they spend on this poll is money they dont have to spend on the Ps merchandising. 2. The court responds that a TM holder doesnt have control over their customers money. 3. The question is how much do you get to channel? How much can the newspaper freeride in its 900 # off the fame of the P? a. His answer is just tough, you dont get all remnants of your fame but he doesnt say exactly how far it goes. c. Boston Athletic Assn v. Sullivan (p. 860) i. This case goes to how much does the TM holder get to control and how far do we allow freeriding.

vi.

ii. Facts: P started the Boston Marathon and has a TM registered for the names and logo of the marathon. D is selling t-shirts with the name and a picture of runners on it. He sells them in a store and at the marathon. 1. Right off the bat it should be clear this guy is freeriding off the fame of the marathon. 2. DC concludes for the D. They said the rights of P didnt extend beyond their exact service mark and there would be no confusion. It basically seems the DC believed no one knows who the BAA was so no confusion. iii. Circuit Court reverses sayign its not confusion as to knowing the name BAA but confusion as to if the sponsor of the race, whoever it is, sponsored the t-shirt. iv. Likelihood of confusion here? yes. v. Page 866 Issue; whether the purchasing public is likely to believe that the sponsor of the Boston Marathon produces, licenses or endorses the Ds shirts? 1. Whether they know the name of the sponsor is irrelevant to this. 2. This is correct and a good stmt of law. vi. Page 866-67: doctrinally they take you thru and say there is a likelihood of confusion on the factors, and then admit here that it really is an issue of protecting the producer. On 867 they admit there is a circularity, that whether or not a consumer would be confused is partly a function of whether or not a consumer believes a t-shirt has to be authorized. And this is partly a function of whether or not a consumer will be confused. 1. The court says new cases show increased concern for the markholders rights. 2. The court established a presumption that if consumers recognized a car as being from the Dukes of Hazzard then there would be a presumption as to confusion of sponsorship about the car. 3. In the next paragraph the court says they will adopt a similar presumption here; that it is fair to assume consumers will be confused as to sponsorship or source given they referred to the marathon on the shirts and that purchasers will likely buy it b/c of the reference. a. The court recognizes this gets close to the absolute right to control the phrase Boston Marathon and anything that sounds or looks similar. d. WCVB-TV(D) v. Boston Athletic Assn (P) (p. 860) i. P comes back in court and says I think you mean what you said and we have broad rights. ii. D is going to the marathon and broadcasting it without Ps permission and on the broadcast puts the name of the marathon. The identifying text permits the Boston Marathon to argue likelihood of confusion. 1. DC says no likelihood of confusion. iii. Page 870 P is just making the argument the 1st circuit told them they could make. That this creates the appearance that they have endorsed this broadcast just like the t-shirts. 1. Bottom they say channel 5 is misappropriating their goodwill. 2. This is the argument, a very broad position taken with the t-shirts is now being asserted as to the TV broadcast. iv. As a matter of policy (870-71) the court is honest and say yes this is freeriding. Sometimes you get protection from freeriding and sometimes you dont however. And that intuitively they will draw lines as they come up, this is a polcy issue. v. They say commonsense suggests that seeing the name on the screen just means that they are showing the marathon and NOT that the BAA gave them permission to do so. 1. BAA wouldnt accept disclaimers they would have put on the broadcast b/c they just want to control the marathon and get all the benefits. e. Boston Marathon Cases

i. See that the simple standard that if one is freeriding one is liable is not true. Some freeriding is allowed. ii. We see two things run up against each other: the sensical nonminative defense (use of someones TM when you are naming them) versus extended TM infringement to include not just source but also to endorsement, approval and affiliation and when we extend it to these its natural that people will be able to make claims that if someone uses your name it suggests you endoresed them. iii. So we have descriptive fair use and nominative fair use. Now we move into parody cases. f. Mutual of Omaha v. Novak (p. 874) i. P is insurance company. D makes shirts protesting nuclear war by parodying symbols of Ps. The idea is to show you just cant insure against nuclear war. Ex. Mutant of Omaha. 1. DC rules D infringed with the parodies. ii. Survey Evidence (bottom p. 876) 1. 42% surveyed said they thought of Mutual of Omaha when they saw the t-shirt. 2. 10% (25% of first group) thought Mutual goes along with their product. 3. DC thought there was some abiguity with the goes along question. This was a poor question to include in the survey b/c it is suggestive. 4. The majority accepts this actual confusion evidence however. iii. Parody Defense (1st amendment) 1. Majority says the parody doesnt work. 2. (p. 877 middle) Majority differentiates cases where the defense succeeded by saying that in those cases there was no survey evidence showing actual confusion. 3. (p. 878 middle) Parody vs. Satire the only way to comment on something is to use their expression but if you want to comment on society as a whole there are a lot of ways to do it, so parody gets more protection than satire. a. The court here says because there are other avenues of expression to comment on this there is no need to use Ps logos. b. Mutuals property rights dont have to yield to Ds 1st amendment interests where adequate altenrtivae avenues of communication exist. This is like USOC case. c. This is a thread in the cases. Property rights tend to me upheld st against 1 amendment defense when courts convinced there are adequate alternatives to this communication. iv. Page 878 they seem to say that Ds activities might be alright in a different media. This is strange. 1. Maybe this is saying that books, mags, print, films are more classic channels for public concerns. 2. Or maybe with t-shirts no matter what your line of services is there is a sense that people think you might make t-shirts. Thus no matter what if you parody on t-shirts or use them for anything then people will think it was authorized by the company. a. This would work with all lowcost promotional goods like keychains, etc. v. The dissent just believes the similarities are not very strong and the differences are very strong. The dissent does point out its t-shirts versus insurance. They legitimately focus on polaroid factors saying these are different factors but there is something weird about this when talking about promotional goods. g. Mattel v. MCA (p. 893)

i. D came up with a song Barbie Girl parodying Barbie dolls. Argument is that Ds misappropriated Ps TM by using the word Barbie. ii. Modern times sometimes makes polaroid analysis hard. A barbie doll and a rock song are very different products/services. 1. The argument they arent very different is that Mattel sells many different products that are and can be connected across categories. The barbie line centers on the doll but its so large it extends to dresses, makeup kits, songs, mirrors, etc. Thus there is likely to be confusion that the song is part of the barbie product line. (p. 897 top) iii. Question becomes: do we go into polaroid analysis or do we go into fair use if we think there is a legitimate defense? 1. By this case, we conceptualize parody as a form of nominative fair use. A parody names/referes to a product or service. Thus we look at parody as a subspecies of parody b/c you have to name it to parody it. 2. Bottom p. 897 talks about when fair use (and parody) test will be used rather than likelihood of confusion. a. They do this in cases where use of TM doesnt intend to capitalize on consumer confusion. This means the judge makes a first guess what the D was trying to do. Where the judge intuitively believes no and D raises nominative fair use defense the 9th circuit says go into this defense. iv. Was this nominative fair use under New Kids test? 1. The product/service in question must be one not readily identifiable without use of the TM, a. Need to mention name to talk about Barbie. 2. Only so much of the mark(s) may be used as is reasonably necessary to identify the product/service, and a. 3. The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the TM holder. a. D came out good here b/c in the CDs they had a disclaimer. Further they didnt want to create sponsorship or affiliation ideas for good business reasons b/c they didnt want to be a one-hit wonder. v. They could have gotten into more trouble if the performers were dressed up to look like the characters in the videos, marketing materials, etc. vi. You get the following from this: 1. Nominative fair use defense trumps the likelihood of confusion analysis if you can make out nominative fair use to judge. a. Remember that in structure of any litigation this is a defense and you really on start on them after Ps case. Thus P has to provide likelihood of confusion before Ds have to prove defense. b. Whats happening here, for jduicial economy in the beginning the D says he has this defense and judge if he believes it says lets go straight to it. i. Dont do this on test though. Talk about it all. c. This is to say that if you can prevail on this defense initially then the D can win even if there is no confusion like in the Permanent Makeup Case. h. KP Permanet Make-Up(P) v. Lasting Impression (handout) i. This is tattoo inks and the dispute is over microcolor. 1991 - KP started using the phrase microcolor and there is no distinction whether this is one or two words. They clearly use it in a descriptive way. 1992 D applies for a TM registration over microcolor and by 1999 TM becomes incontestable. 1999 KP changed their marketing materials to emphasize the phrase. Then Lasting says they have incontestable TM and KP sues for declaratory judgment.

DC ruled in favor of KP. They looked at Mattel and says this is descriptive fair use, not nominative fair use. So he goes straight to descriptive fair use like with nominative in Mattel. ii. 9th circuit decides this is wrong to do on descriptive use (p. 3 col. 2 middle) 1. It should be obvious from the underlined sentence that this is crazy. If descriptive fair use defense is not available where there is any confusion then its not a defense at all. Its only a defense after P shows a likelihood of confusion. If we go with there logic then there is no defense, it doesnt exist. iii. Page 5, column 2 under B SC slaps the 9th circuit. There is nothing in defense that says anything about likelihood of confusion and is used in an infringement action which only goes forward if P shows confusion. 1. They endorse where the 9th went on nominative fair use. 2. Rule: they say that if you show a fair use defense (bona fide descriptive use) in TM law there may be some consumer confusion and that doesnt matter. iv. When it went back to 9th they were stubborn and said nonetheless likelihood of confusion can be a factor in determining whether theres a descriptive fair use. II. Dilution a. Dilution has two main forms: i. Blurring ii. Tarnishment 1. This looks awefully close to parody. Does Mutual of Omaha look like tarnishment? Doesnt Mattel look like tarnishment? 2. if this is a bona fide action under dilution, how do we reconcile this with parody which is permitted. b. Deere & Co. v. MTD Products (p. 707) i. P has a logo showing a leaping deer and its green & yellow. D comes out with a lawn tractor and in their commercial they show a leaping deer being chased and assumes various posses. It runs being pursued by the tractor and a dog and it appears to be smaller than the dog. ii. Definition of dilution leading to this case (p. 709 middle) 1. Blurring of a marks product ID or tarnishment of affirmative associations the mark has come to convey. iii. Is this blurring? No. Is it tarnishment? No. 1. The court is troubled b/c they say theyve looked at tarnishment cases which are usual obsenity type cases and this doesnt look like those. iv. So if we dont have either of these is D off the hook in this case? 1. No. the court says there is dilution and there is another category needs to be taken into acount. (p. 711) 2. The court says this doesnt fit tarnishment but it really is tearing down the good associations of the Ps product and its very much like satire. 3. They dont say all satire (attacks of a product) is out the door but they do say it is a form of dilution when your are a competitor of the product/services and you make this satire then it is actionable tarnishment/dilution. a. Thus a parody done by a competitor to bring down your mark is dilution. b. A defensible line MCA is not a competitor of Mattel but MTD is a competitor of Deere. v. The court concludes this isnt a case of blurring but is uncomfrotable calling it tarnishment b/c at least in this case they associate tarnishment with something criminal, or sexual or obscene.

1.

BUT then there is a thin line the court accepts as actionable under NYS dilution law and parody. 1. The court draws a line between parody which is ok and dilution which is an attacking of the TM. The line drawing is even more difficult when a TM is parodied for satire and to compete against it. 2. What is key in this ruling is that the parody is being carried out by a competitor. In other words, if the same pardoy were done by SNL we probably would have gotten a different result. 3. The idea of dilution, hurting power of a mark, can be awefully close to parody so its hard to decide what to do with that. c. Hormel Foods v. Jim Henson Productions (p. 712) - Dilution i. This case says that in Deere they didnt want to call it tarnishment but it is. ii. If you buy into the idea that the deer was dilution above then its not a big leap to think there is a cause of action here. iii. D is using Spaam who is a wild boar in the muppets cartoon. P says the character has negative connotations b/c he is dirty and grotesque. iv. They tell us that the Deere case was a little too doctrinal and what they really did was tarnishment. Tarnishment can be anything unsavory, undesireable, etc. and not just obscene, sexual etc. (p. 713 at top) Its a broad category. v. Holding: no tarnishment here because it doesnt hurt the mark of the P. 1. Key difference from Deere its the practical difference that D is not a competitor for unrecognizable crushed meat products. Clearly different markets. a. This is the important aspect, line drawing between competitors and noncompetitors. 2. page 713 at bottom simple reference that spam is made from pork is unlikely to tarnish Ps mark. a. Understand that not every reference to a mark is dilution. vi. Remember dilution is NOT confusion!!! It has to be more than mental association (as Hormel tells us). Something else has to happen and the two ideas we get are blurring (loss of distinctiveness) and tarnishment (giving some unsavory connotation to the mark). d. Section 43(c) Lanham (p. 696) i. Present Dilution statute from 1995. A terrible job was done writing this. ii. (1) a lot of questions were asked about the wording here. 1. Why did they say commercial use in commerce? a. Use in commerce is already a phrase in TM law so they are trying to distinguish commercial speech activities from speech activities; the proposing of a sale or purchase from stuff that is parodies. 2. Federal cause of action applies only to marks which are famous and it is only good against a Ds activity if he began the commercial use in commerce after the Ps mark became famous. If he began before Ps mark became famous then its not going to be actionable under dilution statute. 3. It does not say blurring or tarnishment. It simply says causes dilution of the distinctive quality of the mark. iii. If it doesnt say by blurring or tarnishment, does it include tarnishment since loss of distinctiveness goes to blurring? iv. Do you have to show it actually caused dilution or a likelihood of confusion? v. Why would putting in the last sentence about in determining when a mark is distinctive and famous throw people reading it? 1. Is there such a thing as an indistinctive TM? NO

vi.

2. A mark is either inherently distinctive b/c suggestive, arbitrary or fanciful, or acquired secondary meaning. 3. Thus all TMs are distinctive or else they are not TMs. 4. This weird question troubled the court a lot in Nabsico. vi. The famousness factors caused many courts to establish niche fame. That you could be famous in the world of a particular market for a good or service and this was enough; you didnt have to be famous all over. e. Ringling Bros. v. Utah Division of Travel Development (p. 719) i. Utah wanted to promote their ski attractions by using the slogan The Greatest Snow on Earth. P brought this action claiming this diluted their TM in their slogan in the sense that it blurred their mark. ii. Right off the bat the court says they dont like this case b/c dilution is an elusive doctrine. iii. He constructs a test for dilution on page 719, middle: 1. A sufficient similarity of marks to evoke in consumer a mental assocation of the two that 2. causes 3. actual harm to the senior marks economic value as a product-identifying and advertising agent. iv. How would you prove this? (p. 719 3 Phases of Development) 1. First courts messed up and treated dilution as confusion (product diverting confusion) and they werent even gettiing a separate concept. 2. Second they got a multi-factor test which looked a lot like the multifactor test used for likelihood of confusion. 3. Third then the courts simply inferred that if there was the sameness the courts would just assume there was dilution. a. The judge says this presumption of dilution is ok for state statutes but not for the federal statutes. b. This is because (bottom p. 720) fed statute requires consummated dilution and thus you have to really show actual harm to the economic value of the TM. v. P. 721 Middle there will be some uses by junior mark holders that have no impact on the senior mark holder. And some uses may even help the senior mark holder. 1. The we get to the surveys. What does it tell us? 2. They say that the surveys actually hurt the P rather than helped them. 3. The idea is that the Utah promotion has actually increased awareness of the Ps mark. That there is a mental association but arguable it is working to the benefit of the P. vi. You should get from this case: 1. statute says actual confusion not likelihood. 2. it analyzes loss of distinctiveness as an economic loss of economic value. f. Nabisco (D) v. PF Brands (P) (p. 750) i. P produced Goldfish crackers since 1962. Goldfish crackers are definitly a famous TM. D created another mark like a goldfish for a licensing program with Nickelodeon for one of their TV shows the CatDog Show. Their fish shapped cracker is flatter and has some lines and tastes very similar to Ps. ii. This is NOT a liklihood of confusion case but a dilution. 1. DC found Ds use of their cracker would dilute the distinctive quality of Ps mark. iii. Here the mark in issue is trade dress. We should be drawing a connection to Webber Grill. The shape of the product is being claimed as the protected trade dress or TM.

1. The claim is that they are the senior markholder, that it is famous, and it is distinctive. Thus the catdog use of similar trade dress began after they became famous and thus it causes dilution of the distinctive quality of the mark. (p. 752 at bottom). iv. Page 752 captures the requirements of the current statute nicely. v. The court says the wording of the statute means more than mere descriptive TMs. they seem to say that the statutes reference to distinctiveness and famous must mean inherently distinctive and thus it doesnt covers marks that arent inherently distinctive and the standard is higher than what is required to become just any TM. (p. 754 middle) vi. Do they think before their analysis that P is sifficiently distinctive to qualify for dilution protection? Yes! Why? (p. 755 at bottom) 1. They say it is totally arbitrary to make a chedder cheese flavored cracker in a fish shape. There is no logical relationship. a. There would be a logial relationship if it were a fish flavored cracker. 2. Thus in this way it is distinctive. Its basically arbitrary and fanciful as it relates to a cracker. vii. Does this court think the present statute requires actual or liklihood of dilution? 1. they are willing to accept likelihood of dilution and they disagree with Ringling Brothers court. (p. 761 viii. What issue in Munsingwear does this relate to? - whether this is pre or post sale dilution? 1. If it were only presale we would only look at packaging. 2. we know its post sale b/c they talk about people seeing the fish out of the packaging in bowls. a. Professor thinks this is insane and psychological crap. 3. the difference from Munsingwear is that you wont see underwear out of package but cracker are out there in many circumstances without the packaging. ix. There are two groups of consumers talked about adults and children. 1. we separate them because they have different levels of sophistication. 2. Children will know its the catdog product but the adults wont. 3. You could argue that its the more sophisticated consumers who will suffer from dilution b/c even though they know the difference it will over time blur the lines and dilute the goldfish cracker. g. New Federal Statute (handout) i. Trademark Dilution Revision Act (TDRA) 1. It reformulates and clarifies TM dilution law. ii. 2(c)(1) Injunctive Relief 1. The owner of a famous mark that is distinctive, inherently of through acquired distinctivesness has protection. a. Says distincveness level can be inherent (arbitrary or fanciful or suggestive) or acquired (secondary meaning) so it covers all marks now. b. Solves a problem we had! 2. What is definition of famous? a. (2) niche fame is out! It must be widely recognized by general consuming public! i. Solves another problem we had! b. 3 factors than are giving for determining if a TM is famous! 3. Also clarifies the actual vs. likliehood confusion! a. Statute permits likleihood and actual confusion to be shown! 4. Also clarifies that its dilution by blurring AND by tarnishment.

iii.

Page 2, (C): Definition of tarnishment is association (mental association). It says here the Hormel analysis is correct and its anything that harms the reputation of the famous mark. a. Apears to embrace the broader analysis of the Hormel case that it includes any negative damage to the reputation of the TM. iv. Page 2 (B): 1. This is hard because we have been troubled by what blurring means. 2. We arent told anything more about what blurring means. Its a mental association arising from similarity that impairs distinctiveness. 3. We can infer something by looking at end of injuncitve relief definition or of actual economic injury. It addresses the 4th circuit. Dilution by blurring is broader and more ambiguous than actual economic damage. a. You dont need to show actual economic damage! It cant be required to be shown. So now blurring is a very fuzzy concept. 4. You have to think of it in terms of the statutory words as loss of distinctiveness. 5. That you have to show actual economic injury from Ringling Bros. doesnt seem to be relevant any more b/c it says regardless of this. v. Exclusions 1. (a) this seems like nominative fair use b/c it is naming the TM to identify the products. Comparative advertising is always nominative fair use. 2. (b) this seems like descriptive fair use. But then it says parodying which is nominative fair use not descriptive. It mixes up both fair use doctrines. a. fair use of a famous mark other than as a designation of source for Ds fair use this is what it seems to be saying. 3. (c) these will typically be nominative but can be descriptive. a. We want this here b/c when a news program mentions a TM in a news story we dont want them to sue b/c of any negative connotations of the news story. Loss of Trademark Rights III. Genericness a. This is one of the 3 big ways to lose a TM. i. When your TM becomes generic you can lose the protection it gets as a TM. b. The other two are: naked licensing and abandonment. c. Bayer v. United Drug (p. 312) Genericness i. P sells Aspirin and they originally had a patent but it expired (this is like the shredded wheat case). They had been marketing the drug as Aspirin and when it went off patent the D started marketing it with this name. P sued for CL TM infringement (before Lanham Act was in existence) which tells us that they never registered. ii. P. 312 near bottom the question is whetehr consumers think this is the name of the product or designation of the source? 1. The anonymous part reminds us of Boston Marathon case. They said it doesnt matter if they know the name of the BAA only that they sponsor it every year. iii. There are two different levels of customers for P: (top p. 313) 1. Doctors and Pharmacists a. These professional customers know Aspirin is the trade name. 2. General Consuming Public a. Problem is that these final consumers only receive the product in powdered form and the initial packaging is lost when pharmacist pours the powder into his own container and marks it as Aspirin.

1.

b. The way they were marketing this means no pacaging could reach the consumer and thus their only acquiantance with the drug was with the name Aspirin (p. 313 middle). iv. 1904 They started making it in tablets and it became available over the counter. 1. During this time (bottom p. 313) the bottle said the name Aspirin but no reference to its medical drug name (generic name) to distinguish the name. 2. This is a real killer for genericness doctrine. It was inviting people to think what they thought was a brand name was the name of the type of product. v. 1915 court says that its clear by this point that the P realized they might have a problem when the patent expires. (p. 314 middle) Court says they attempted to distinguish the name and get secondary meaning. 1. Ps own labels said Bayer-Tablets of Aspirin when they should have been putting the medical drug name on it. He says this shows the P recognizes the meaning the words had acquired. vi. This is a classic example of what a manufacturer does wrong with its TM. 1. always use the generic name of the type of the product AND the TM. 2. ex. Scotch Brand Adhesive Tape; Boeing Airplanes, etc. vii. Examples on p. 317 on. 1. The ads try to tell the public these are not generic names. 2. When these companies are taken to court then they get to say I never made the mistake Bayer made. I always intended to use it as my trade name and made sure people would think so, look at my ads. d. Stix Products v. United Merchants (p. 315) i. It may be evidence but its not very good b/c the competitor wants your word so he wants to make it generic. So we dont give much weight to a competitors use of it in a generic way b/c they have their own motivation. e. Thus Bayer stands out b/c they drug their own grave essentially; its their fault! IV. Abandonment/Failure to Control a. Clark & Freeman (p. 368) Naked Licensing i. Naked Licensing 1. It reverberates off the doctrine that a TM is not a property in gross. Also, that a TM is a right appurtenant to a business. 2. Because it is appurtenant it cant be transferred without transferring the goodwill associated with the TM. 3. The idea of naked licensing is that you cannot just say you are giving the right to the TM and recipe, you must say that if you use the TM you MUST use the recipe b/c the licensing must have quality control with it. 4. If you license the TM naked with nothing else, this is forbidden and you lose your TM. a. It doesnt require the TM holder to change the quality of the TM but does require him to patrol its uses with licensees. ii. Both parties are using the same TM Heartland and the P wants to expand into Ds product category. But the D has priority. So P found Sears who had the TM with a priority date before D for a pixie boot and their priority date is 1983 which beats Ds priority date of 1985. So P purchases the TM for $15K. Now P claims they have priority over D b/c they are the assignee of the TM. iii. D claims that the assignment was an assignment in gross because it doesnt include a transfer of the goodwill associated with the Sears pixie boot product and all they wanted was the TM. They didnt want the quality, reputation or goodwill, just the TM in gross. 1. p. 370 you have sell the quality and technology to produce goods of same quality when you transfer the TM or license the TM.

2. This makes a lot of sense from consumer protection perspective. This prevents a radical change of the meaning of the TM through assignment or licensing. iv. The court says this was an assignment in gross because there was a difference in the products sold. (p. 371 3rd paragraph) 1. Sears sold womens pixie boots while P applied it immediately and only to mens shoes and hiking boots. The markets arent the same and thus no reputational linkage between the two. 2. Also, Ps were using the TM before assignment which makes it obvious they only wanted the name and not the goodwill of the mark. v. Naked licensing is just that you license without any quality control obligations. This turns out to be similar to assignment in gross (naked assignment). The key element with naked licensing is that the contract have quality control in it or else its naked. b. Ex. what if you sell TM and factory but the person decides its cheaper to produce in India. If the quality is the same then this is alright and not naked licensing. If you transfer means of production with TM then its not assignment in gross even if purchaser closes the factory. c. Silverman v. CBS (p. 356) Abandonment i. Section 45 of Lanham 1. Basic Test: When a mark has been discontinued with intent not to resume such use. 2. How do you infer intent not to resume? (practical test) a. Nonuse for 3 yrs is prima facie evidence of abandonment. 3. (2) Genericness is as a matter of statute a form of abandonment. If you dont patrol your TM thru your omission not just thru what you do, you can abandon it by it becoming generic. ii. The claimed TM is the Amos and Andy characters. They were a radio and tv show featuring these characters which ended in 1966. They had copyright in these. The reason the fact pattern arises at all is b/c D still has copyright to tv show but the oldest radio scripts fell into the public domain which means the characters as they exist in those scripts are in the public domain. The D then wants to use them in a Broadway Musical featuring these characters. iii. D says they have a TM in these characters. 1. The court doesnt believe this at all. The court wont even discuss it and thinks there is nothing that is a protectable TM. iv. But assuming there is they stopped in 1966 and the argument is they abandoned these marks. If you havent used them for 21 years whats the excuse when 3 yrs is the limit for prima facie evidence of abandonment? 1. CBS says the real statutory test is intent test and the 3 years is just an evidentiary rule. 2. D says the always intended to bring back the marks. v. The court asks whether intent not to resume means never or you had no intent within the reasonably forseeable future? 1. The court says the test is reasonably forseeable future test. (bottom p. 359) vi. D says it wasnt that they never used but they were challenging other peoples use of the marks and had licensed it for documentaries. Thus they were using it a bit here and there. 1. This connects to Proctor & Gamble. 2. Court says court actions arent use in commerce and a little bit of licensing is like token use and doesnt count as use in commerce. (p. 361 middle). 3. The kind of use that forestalls abandonment is use that rekindles the connection or ID of the mark with a proprietor. This is use that fights off abandonment.