Trademark Outline I. Introduction to Trademark and Unfair Competition Law A. The Concept of Trademark a.

The definition of Trademark (Lanham 45) 1. A trademark is a symbol (word, name, device or combination thereof) adopted and used by a merchant to identify his goods and distinguish them from articles produced by others b. The term trademark refers to a source-identifier for goods; the term service mark refers to a source-identifier for services. c. Ownership of a mark requires a combination of both appropriation and use in trade. Thus, neither conception of the mark, nor advertising alone establishes trademark rights at common law. d. Ownership of a trademark accrues when goods bearing the mark are placed on the market. The registration is not required to obtain a trademark. 1. The U.S. trademark system remains use-based. 2. Trademark is the commercial magnetism of the symbol Mishawaka v. S.S. Kresge. e. The source of Trademark law (Lanham): Constitution Commercial Clause f. Trademark rights have long been recognized and protected at common law, although most significant trademark law is now created at the federal level. See The Trade-Mark Cases and Hanover Star Milling v. Metcalf 1. Common-law trademarks classes among property rights. g. Importance of Trademark 1. To protect consumers from being confused as to the source of goods or services. 1) Authorship, Quality, or Defective 2. Advertisement 1) Trademark protection very linked to investment in advertising 3. Benefit to consumers
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1) Reduces cost good/service

of

searching

for

consumers

for

B. Definitions of Terms (Lanham 45) a. Trademark 1. The term "trademark" includes any word, name, symbol, or device, or any combination thereof used by a person, or which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. b. Trade name 1. Trade name is a name used by a person to identify his or her business or vocation 2. Trade name cannot be registered. It can be protected by common law, such as unfair competition. 3. For example 1) Baker Holster (Trade Name) v. Baker Holster LLP (Service mark) c. Certification Mark 1. A trademark used by a person other than owner to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization. 2. For example: 1) CE See the back of your laptop. 3. Regional Certification Mark: Florida Orange, Iowa Potato. d. Collective Mark 1. Is the mark used by the members of a cooperative, an association, or other collective group or organization, or which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, and includes marks indicating membership in a
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union, an association, or other organization. C. Unfair Competition a. Trademark law is a part of unfair competition law 1. Trademark protection has existed as an important aspect of a larger body of unfair competition law. 1) For example Passing off: It is unfair competition to pass off your goods as those of another producer by using a trademark confusingly similar to that of the other producer. 2. Unfair competition law extends more broadly than trademark infringement. b. INS v. Associated Press, 248 U.S. 215 (1918) 1. Facts: AP published news reports in early editions of newspapers on the East Coast. INS, a competitor in the gathering and distribution of news, copied the AP reports and relayed them to its member newspapers in the Midwest and on the West Coast. 2. Misappropriation Doctrine created 1) AP has expended time/effort/money in acquiring news, AP has a quasi-property interest in protecting the news from interference by INS, its direct competitors. 2) Transmit news for commercial us - Both of them are selling news. - Even if news is not goods, News is as quasi-property. INS substitutes misappropriation in the place of misrepresentation, and sells APs goods as its own. 3) On account of the economic value of the news, a company can have limited proprietary interest in it against a competitor (but not the public) who would attempt to take advantage of the information. 3. As between competing news agencies, AP possessed a quasi property interest in the news that it gathered; and INS could not lawfully appropriate this interest. 4. Hot News Doctrine D. Illustration Elvis Presley Enterprises v. Capece, 950 F. Supp. 783 (S.D. Tex. 1996)
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a. Facts: Elvis Presley Enterprises (EPE) is a corporation formed under the trust created by Elvis Presley. EPEs exclusive rights are marketed through a licensing program which grants licensees the right to manufacture and sell Elvis Presley merchandise worldwide. Barry Capece (Capece) opened a bar, and registered VELVET ELVIS for use in the restaurant and tavern as a service mark. EPE sued Capece for unfair competition, trademark infringement, and dilution, under both common law and the Lanham Act by Capeces using VELVET ELVIS as its service mark. b. Unfair Competition and Trademark Infringement 1. Test for a defendants use of a mark or image to create a likelihood of confusion 1) The type of trademark alleged to have been infringed 2) The similarity of design between the two marks 3) The similarity of the products or services 4) The identity of the retail outlets and purchasers 5) The identity of the advertising medium utilized 6) The defendants intent 7) Evidence of actual confusion *This list is neither exhaustive nor exclusive 2. Trademark/Service Not confusion can be proved 1) Strength of the Mark - The stronger the mark the broader the protection it is afforded. - Confusion is avoided when the defendant uses the plaintiffs mark as a part of a parody, jest, or societal commentary. - Velvet Elvis has a meaning in American pop culture that is greater than the name, image, or likeness of Elvis Presley. Despite the bars name, customers immediately realized the tacky bar they had just encountered was in no way associated or affiliated with EPE. 2) Degree of Similarity Between the Two Marks: EPEs trademarks obviously refer to the legendary singer, Elvis Presley and products of his image and likeness marketed through EPE and its licensees. The term The Velvet
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Elvis, on the other hand, is symbolic of a faddish art style that belongs to the culture that created it. 3) Similarity of Products or Service: A customer can go to Velvet Elvis to eat, drink, watch one of many television sets, or smoke a cigar in the bars smoking room. At the present time, EPE does not provide services comparable to those of the Velvet Elvis. 4) Defendants Intent - The defendants intent to use Velvet Elvis was to parody a time or concept from the sixties the Las Vegas lounge scene, the velvet painting craze and perhaps indirectly, the countrys fascination with Elvis. 5) Actual Confusion - Once inside Velvet Elvis and given an opportunity to look around, there is no doubt that the bar was not associated or in any way affiliated with EPE. 3. Advertisements: Using Elviss imagery and indicate of his persona in Defendants advertisements Confusion created 1) Pictures and images of Elvis Presley would leave the distinct impression that the bars purpose was to pay tribute to Elvis Presley or to promote the sale of EPE related products and services. 2) Without the backdrop of parodic meaning, these ads and their continued circulation will cause confusion, leading customers to wonder if they might find memorabilia of their beloved singer somewhere behind the doors of The Velvet Elvis. 3) The Velvet Elvis, is lost when the word Elvis is overemphasized and dominate and a much smaller Velvet. 4) Witnesses testified that the ads use of pictures and images of Elvis led them to believe that The Velvet Elvis was connected or otherwise affiliated with Elvis Presley and EPE. c. Dilution (Either Blurring or Tarnishment) 1. A finding of dilution by tarnishment must be supported by evidence that the plaintiffs mark will suffer negative association from the defendants use.
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2. No evidence indicates that the defendants service mark has had an actionable impact on the image cultivated by either the Elvis or Elvis Presley trademarks 1) With any evidence to the contrary, that nude portraits hung in a bar for the purpose of mocking the tasteless dcor of the sixties does not inspire negative or unsavory images of Elvis or Elvis related products or services in the minds of EPE customers. 2) The nude pictures and the bars intentional tackiness are an obvious part of the parody and are associated for purposes of the parody only, rather than for creating a permanent derogatory connection in the publics mind between the two business.

II.Distinctiveness A. For Categories Distinctiveness a. Generic Term(Also called common descriptive terms) 1. Common descriptive terms generally used as names or descriptions of the goods or services 2. Generic term can never be trademark 1) Even if this term obtain secondary meaning. 3. For example: Soap, Hand Soap
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4. In A&F v. Hunting World, safari has become a generic term for clothes, which refers to contemporary American fashion apparel. b. Descriptive Term 1. Term describes characteristic or ingredient of an article or service 2. Descriptive term is forbidden to be registered as trademark if merely descriptive. 3. Able to be trademark only upon acquiring secondary meaning 4. For example: 100% Pure c. Suggestive Term 1. Term only suggests ingredient or characteristic of goods or services; requires consumer to use imagination to determine nature of goods 1) Compared to descriptive term: a term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods. 2. Could be protectable by trademark without proof of secondary meaning d. Arbitrary or Fanciful Term 1. Terms far removed from quality of goods or services 1) Arbitrary term: A common term applied to a uncommon way 2) Fanciful term: A term which is made up 2. Able to be Protectable by trademark without proof of secondary meaning. Invulnerable to attack as merely descriptive B. Section 13 of Restatement divides protected marks (distinctive marks) into marks that are inherently distinctive and marks that have acquired distinctiveness a. Inherently distinctive b. Acquired distinctiveness: Have secondary meaning. C. Zatararains v. Oak Grove Smokehouse, 698 F.2d 786 (5th Cir. 1983) a. Fish-Fri & Chick-Fri b. For the term Fish-Fri
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1. Descriptive Term, However, it got an secondary meaning c. For the term Chick-Fri 1. Descriptive term without any secondary meaning d. Descriptive v. Suggestive 1. Dictionary 2. Imagination Test: If a term required imagination, thought and perception to reach a conclusion as to the nature of goods, it is suggestive term. 3. Whether competitors would be likely to need the terms used in the trademark in describing their products. 4. Whether a term actually has been used by others marketing a similar service or product. 1) Whether competitors would be likely to need the terms used in the trademark in describing their products and Whether a term actually has been used by others marketing a similar service or product are usually used as a bundle. e. Secondary meaning obtained: Amount and manner of use. Evidence such as amount and manner of advertising, volume of sales, and length and manner of use many serve. Also, survey evidence. 1. Survey 1) Teflon survey - That survey runs a participant through a number of terms (such as washing machine and Chevrolet), asking whether they are common names or brand names. After the participant grasps the distinction, the survey asks the participant to categorize a number of terms, including the term at issue. 2) Thermos survey - Ask the respondent how he or she would ask for the product at issue. If, to use the term under dispute in the case from which the survey gets its name, the respondents largely say the brand name (Thermos) rather than the initial product category name (Vacuum Bottle), the survey provides evidence that the brand name (Thermos) has become a generic term for the product category.
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D. Foreign evidence. In Bayer, the examiner had also cited a number of stories that resulted from a search on the term ASPIRINA on the NEXIS database. The majority found that the use of term ASPIRINA in these stories could be probative of the meaning of ASPIRINA, even if the stories appeared in foreign publication. a. This foreign information can be accessed on Internet in the U.S. Therefore, it may be relevant to discern U.S. consumers impression of a proposed mark. E. In Re Oppedahl & Larson, LLP, 373 F.3d 1171 (Fed. Cir. 2004) a. Whether patent.com as a whole can be registered as trademark? b. Holding: No c. .com is an abbreviation for company used in Internet addresses. d. Patents alone descries one feature of the goods that of tracking patent applications and issued patents. Adding .com to the mark adds a further description of the Internet feature of the identified goods. e. The combination of patents and .com does not render the mark as a whole distinctive and registrable. F. Cases regarding Generic terms a. Filipino Yellow Pages v. Asian Journal Pubs, 198 F.3d 1143 (9th Cir. 1999): Combination of terms 1. Plaintiff was the publisher of a directory called the Filipino Yellow Pages. The defendant was also the publisher of a directory, which called Filipino Consumer Pages. The plaintiff sued for trademark infringement. 2. Whether the term Filipino Yellow Pages is generic and as such incapable of trademark protection. 3. Filipino and yellow pages are generic terms. The issue become whether combining the generic terms Filipino and yellow pages to form the composite term Filipino Yellow pages creates a generic or a descriptive term? 4. In this case, the term Filipino Yellow Pages became kind of
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descriptive term rather generic. However, P had failed to establish secondary meaning for "Filipino Yellow Pages. The term: Filipino Yellow Pages, even if descriptive rather than generic, was not a valid and protectable trademark with respect to a telephone directory for the Filipino-American community. 5. A Plaintiff must prove evidence of established secondary meaning of a descriptive mark in order to win on infringement suit b. Mil-Mar Shoe v. Shonac Corp, 75 F.3d 1153 (7th Cir. 1996) 1. Plaintiff (Mil-Mar) Mark is Warehouse Shoes, argued that its term was descriptive. Defendant (Shonac) Mark is DSW Shoe Warehouse, argued that it should not be enjoined from using "DSW Shoe Warehouse" or any other trade name confusingly similar to Plaintiff's (Mil-Mar) "Warehouse Shoes," because "Warehouse Shoes" was a generic term Plaintiff argued that its trade name was descriptive rather than generic. 2. Held: Dictionary definitions of the term "warehouse" included "large retail store," and that retailers commonly used the term in store names. 3. The court also rejected the argument that it was descriptive in Plaintiff's mark, simply because it was used as an adjective, the court found that "warehouse" was a generic term. c. Haughton Elevator Company v. Seeberger, 85 U.S.P.QQ. 80 (Commr. Pat. 1950) The term escalator 1. The term escalator has become a generic term to both the general public and to engineers and architects and that, to them, the term not only does not mean a moving stairway made by the Seeberger, but rather means any moving stairway without reference to the maker thereof. 2. The term escalator is recognized by the general public as the name for a moving stairway and not the source thereof. d. Murphy Door Bed v. Interior Sleep System, 874 F.2d 95 (2d Cir. 1989) 1. Murphy Bed
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2. The PTO examining attorney and Trademark Trial and Appeal Board (TTAB) stated that Murphy bed has for a long period of time been used by a substantial segment of the public as a generic term for a bed which folds into a wall or a closet. 3. Burden of Proof 1) When a term is generic, the burden is on plaintiff to prove that its mark is a valid trademark and that its unregistered mark is not generic. 2) However, where the public is said to have expropriated a term established by a product developer, the burden is on the defendant to prove genericness Whether the term at issue is claimed to be generic by reason of common usage or by reason of expropriation. 4. The defendant in this case established the genericness of the term Murphy bed. The evidence is 1) PTO, certain the TTAB, is to be accorded great weight. 2) Dictionary 3) Newspaper and magazine G. Suggestive Term a. Peaceable Planet v. Ty, 362 F.3d 986 (7th Cir. 2004) 1. Peaceable Planet began selling a camel that it named Niles. The name was chosen to evoke Egypt, which is largely desert except for the ribbon of land bracketing the Nile. 2. The 7th Circuit Court held that Niles, is a suggestive mark at least when affixed to a toy camel. 3. The Court stated that it is like Microsoft or Business Week, or coming closer to this case like Eeyore used as the name of a donkey, rather than being a descriptive mark. 4. Suggestive marks are protected by trademark law without proof of secondary meaning. Secondary meaning is not required because there are plenty of alternative to any given suggestive mark. 5. There are many more ways of suggesting than of describing. Suggestive names for camels include Lawrence, Desert Taxi, Sopwith, Camelia, Traveling Oasis, Kamelsutra,Cameleon, and Humpy-Dumpy.
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1) The suggestion that Niles belongs to the limited class of recognized names or that Niles is the only way to name a camel is ridiculous. H. Compound words and phrases a. Burden on the POT to decide whether the claimed mark is a compound word or a phrase. b. Standard of Burden: Where a term is a compound word, the Director may satisfy his burden of proving it generic by producing evidence that each of the constituent words is generic, and that the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound. I. Trade Dress a. Trade Dress is characteristics of the visual appearance of a product or its packaging (or even the facade of a building such as a restaurant) that signify the source of the product to consumers. 1. It may be Logos, Packages, Product design, and Colors 2. Basically, trade dress simply would be treated as trademark b. Lanham 43(a)(1) 1. Establishes liability for any person who, on or in connection with any goods or services, uses in commerce any mark, any false designation of origin, any false or misleading description of fact, or any false or misleading representation of fact, which 1) is likely to cause confusion, mistake, or deceit; or, 2) in commercial advertising or promotion, misrepresents that nature, characteristics, qualities, or geographic origin of any goods, services, or commercial activities c. Star Industry v. Bacardi, 412 F3d. 373 (2d Cir. 2005) 1. General Rule: Common basic shapes or letters are not inherently distinctive. Exception: However stylized shapes or letters may qualify, provided the design is not commonplace but rather unique or unusual in the relevant market. 2. Stars O is sufficiently stylized to be inherently distinctive
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and therefore protectable as a trademark. It is stylized with respect to shading, border, and thickness, and each of these design elements distinguishes it from the simple or basic shapes and letters that have been held unprotectable. 3. However, the protection of mark O is think or week, and it will be entitled to only limited protection. 1) The extent of stylization was marginal at best. d. Atmosphere Two Pesos v. Taco Cabana, 505 U.S. 763 (1992) 1. Two chain-Mexican restaurants with very similar decoration. The defendant Mexico restaurant copied the plaintiff Mexico restaurants decoration. 2. The Court stated that the plaintiff restaurants restaurant is inherent distinctiveness, and the proof of secondary meaning is not necessary. 1) In this case, actually, the plaintiffs decoration is lack of secondary meaning. 2) Jury found that the copy is intentional and awful. 3. Atmosphere can be protected if inherently distinctive without secondary meaning. (Before, secondary meaning was always necessary) 4. If trade dress is inherently distinctive, no need secondary meaning. 5. Theory of Secondary meaning in the making 1) The theory of secondary meaning in the making is that the trade dress received protection without proving secondary meaning should receive limited protection. Such protection should be only temporary and subject to defeasance when over time the dress has failed to acquire a secondary meaning. 2) The Supreme Court rejected this doctrine. - If temporary protection is available from the earliest use of the trade dress, it must be because it is neither functional nor descriptive, but an inherently distinctive dress that is capable of identifying a particular source of the product. To terminate protection for failure to gain secondary meaning over some unspecified time could not be based on the failure of the dress to retain
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its fanciful, arbitrary, or suggestive nature, but on the failure of the user of the dress to be successful enough in the marketplace. e. Color Qualitex v. Jacobson Products, 514 U.S. 159 (1995) 1. Plaintiff company has a special shade of green-gold color on dry-cleaning pads. Defendant company uses the same color same as Plaintiff. 2. Whether color alone could be trademark? Lower courts were split on this issue. 3. Test 1) As long as color can serve to identify the source of goods, it can be protected as a trademark. - NEED TO PROVE SECONDARY MEANING: Color itself is not inherently distinctive. 2) No functional purpose f. Product Design 1. Wal-Mart v. Samara Brothers, 529 U.S. 205 (2000) 1) Plaintiff clothing designer and manufacturer (Samara Brothers). Defendant retailer (Wal-mart) sold "knockoffs" of Ps dress designs. 2) Generally speaking, fashion design is unprotectable and incapable of being inherently distinctive. However, it can be protected as trade dress if it can be proved that the design has acquired secondary meaning and is not functional. 3) The court held that a product design, like color, could not be inherently distinctive, i.e., arbitrary, fanciful, or suggestive, but that it could become distinctive if it developed a secondary meaning, which occurred when, in the minds of the public, the primary significance of the mark was to identify the source of the product rather than the product itself. 2. In Re Slokevage, 441 F.3d 957 (Fed. Cir. 2006) 1) Packages designed as a configuration on the pants, overall, shorts, culottes, dresses, skirts. 2) Trade dress as a configuration including a clothing feature, and product configuration is synonymous with
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product design. Trade dress constitutes product design and therefore cannot be inherently distinctive See WalMart Case. 3) USPTO and Court: Its a product design, and based on Wal-Mart case, secondary meaning is needed to obtain trademark protection as a trade dress. 3. Yankee Candle v. Bridgewater Candle, 259 F.3d 25 (1st Cir. 2001) 1) The manufacturer (Yankee candle) claimed the that D (i) copied Yankees method of shelving and displaying candles in its stores (ii) copied the overall look and feel of their candles (iii) copied the design of Ps merchandise catalog. The defendant (Bridgewater) had infringed its
copyright on the labels of nine candle fragrances.

2) To obtain secondary meaning, plaintiff must prove direct evidence (surveys or consumer testimony) to establish secondary meaning of trade dress. Here, Yankee has not to prove direct evidence. - Yankee provided their advertisement to prove the secondary meaning. However, it is circumstantial evidence. - The lack of any evidence that actual consumers associated the claimed trade dress with Yankee, as well as the lack of evidence as to confusion on the part of actual consumers, renders this circumstantial evidence insufficient for a reasonable juror to find that the trade dress had acquired secondary meaning. g. The tests to be applied to determine the distinctiveness of product design trade dress 1. Abercrombie Test 2. Seabrook Test 1) Whether design is common or basic shape or design 2) Whether it was unique or unusual in a particular field 3) Whether it was a mere refinement of a common form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods 4) Whether it was capable of creating a commercial impression distinct from the accompanying words
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3. Duraco Prods and Knitwaves Test 1) Unusual and memorable 2) Conceptually separable from the product 3) Likely to serve primarily as a designator of origin of the product J. Subject Matter Exclusion a. Scent 1. In re Clarke 1) Clarke has its yarn and thread with a certain scent. 2) Trademark examiner rejected the application because applicants mark does not function as trademark because it does not identify or distinguish Ps goods from those of other. Also, competitor needs access to pleasant scent. 3) TTAB - Based on the evidence in this case, scented fragrance does serve function as a trademark for her as a trademark for her thread and embroidery yarn. - Clarke is only person who used the scent in the market. - Fragrance is not an inherent attribute or natural characteristic of applicants goods but is rather a feature supplied by applicant. 2. EU does not allow to register fragrance as a trademark. b. Sounds 1. Only obtain trademark protection by obtaining secondary meaning. K. Subject Matter Protected by Copyright a. Oliveira v. Frito-lay, 251 F.3d 56 (2d Cir. 2001) 1. Gilberto recorded Ipanema in 1964, and defendant FritoLay began to market Baked Lays Potato Crisps with the background music Ipanema. 2. Lower Court: granted summary judgment to dismiss the claim 3. 3rd Circuit court: Affirm 1) Whether or not music work can serve as a trademark?
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The Circuit Court said Yes. But, it is be carefully here to distinguish the differences between the music which serve the function as identifying the goods and the music which serve the function as music itself (music servers as good itself). 2) Here, the musical composition could not server as a trademark for itself. Granting to a song the status of trademark of itself would stretch the definition of trademark too far and would cause disruptions as to reasonable commercial understandings. 3) Numerous artists who could assert claims similar to Gilbertos would bring suit against entities that had paid bona fide license fees to all known holders of rights. Indeed, artists who had licensed users under their copyrights and had received fees for the copyrights license could brings suits claiming additional compensation for infringement of trademark rights. b. Comedy III v. New Line Cinema, 200 F.3d 539 (9th Cir. 2000) 1. Facts: Plaintiff, New Line Cinema, owner of all rights and interests in The Three Stooges. Defendant, Comedy III productions, released the theatrical motion picture, "The Long Kiss Goodnight," in which a Three Stooges short film clip played on a television set in the background of an interior scene for less than thirty seconds. 2. The copyright of The three stooges has expired. Comedy III tried to use Trademark law to extend the monopoly after copyright expired. 3. The court stated that it will not entertain this expedition of trademark protection squarely into the dominion of copyright law, to allow for Lanham Act coverage of a piece of footage taken directly from a file by The Three Stooges. 4. Here is not the exception of cases that purportedly extends trademark protection to the act performed by a character/physical persona of the celebrities. For example: White v. Samsung. Had New Line used the likeness of The Three Stooges on t-shirts which it was selling, Comedy III might have an arguable claim for trademark violation.
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c. In Re First Draft, 76 U.S.P.Q 2d (BNA) 1183 (TTAB 2005) 1. Applying FERN MICHAELS, which is a name (pseudonym), as a trademark for a series of fictional books. 2. General rule, an authors name is not registrable for a single work but may be registrable for a series of written works, when there is sufficient other indicia that the name serves more than as a designation of the writer, that is, that it also functions as a mark. Evidence can be showed by two ways: 1) The author controls the quality of her distributed written works and controls use of her name, so as to indicate the quality of those works See Polar Music 2) Submitting evidence of promotion and recognition of the authors name so that prospective readers, when they see the name, know what they are getting. See Scholastic. d. Daster v. Twentieth Century Fox, 539 U.S. 23 (2003) 1. Facts: General Dwight D. Eisenhower's World War II book, Crusade in Europe, was published by Doubleday, which registered the work's copyright and granted exclusive television rights to an affiliate of respondent Twentieth Century Fox Film Corporation (Fox). Fox, in turn, arranged for Time, Inc., to produce a Crusade in Europe television series based on the book, and Time assigned its copyright in the series to Fox. The series was first broadcast in 1949. In 1975, Doubleday renewed the book's copyright, but Fox never renewed the copyright on the television series, which expired in 1977, leaving the series in the public domain. In 1988, Fox reacquired the television rights in the book, including the exclusive right to distribute the Crusade television series on video and to sublicense others to do so. In 1995, petitioner Dastar released a video set, World War II Campaigns in Europe, which it made from tapes of the original version of the Crusade television series and sold as its own product for substantially less than New Line's video set. 2. Holding: Section 43(a) of the Lanham Act does not prevent the unaccredited copying of an uncopyrighted work. 3. 43(a) of the Lanham Act, 15 U.S.C. 1125(a), is likely to
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cause confusion ... as to the origin ... of [its] goods 4. Dastar took a creative work in the public domain, copied it, made modifications (arguably minor), and produced its very own series of videotapes. 1) If origin refers only to the manufacturer or producer of the physical good that is made available to the public, Dastar was the origin. If, however, origin includes the creator of the underlying work that Dastar copied, then someone else (perhaps Fox) was the origin of Dastar's product. - 43(a) of the Lanham Act, 15 U.S.C. 1125(a), would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own. 2) At bottom, the Court must decide what 43(a) means by the origin of goods. 5. Because Dastar was the origin of the physical products it sold as its own, respondents cannot prevail on their Lanham Act claim. 1) The most natural understanding of the origin of goodsthe source of wares-is the producer of the tangible product sold in the marketplace 2) The phrase origin of goods in the Lanham Act is incapable of connoting the person or entity that originated the ideas that goods embody or contain. 3) The consumer typically does not care about such origination, and 43(a) should not be stretched to cover matters that are of no consequence to purchasers. 6. Copyright Law Consideration 1) Giving the Lanham Act special application to such products would cause it to conflict with copyright law, which is precisely directed to that subject, and which grants the public the right to copy without attribution once a copyright has expired 2) Recognizing a 43(a) cause of action here would render superfluous the provisions of the Visual Artists Rights Act that grant an artistic work's author the right ... to claim
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authorship, e. Rock Hall v. Gentile, 134 F. 3d 749 (6th Cir.) 1. Facts: Holder of trademarks in name Rock and Roll Hall of Fame and in museum's unique building design brought action against publisher of poster depicting museum, alleging trademark infringement and dilution, unfair competition, and state law claims. 2. Whether the landmark, Rock and Roll Hall of Fame and in museum's unique building design, in Cleveland could be as a trademark? 3. The district court granted preliminary injunction in favor of the holder. 4. The Circuit Court: Reversed 1) whether alleging infringement of a registered trademark, pursuant to 15 U.S.C. 1114(1), or infringement of an unregistered trademark, pursuant to 15 U.S.C. 1125(a) (1), it is clear that a plaintiff must show that it has actually used the designation at issue as a trademark, and that the defendant has also used the same or a similar designation as a trademark. In other words, the plaintiff must establish a likelihood that the defendant's designation will be confused with the plaintiff's trademark, such that consumers are mistakenly led to believe that the defendant's goods are produced or sponsored by the plaintiff. 2) The court does not readily recognize the design of the Museum's building as an indicator of source or sponsorship. Rather, the Court stated that it is a photograph of an accessible, well-known, public landmark. Stated somewhat differently, in Gentile's poster, the Museum's building strikes us not as a separate and distinct mark on the good, but, rather, as the good itself. 3) Although the plaintiffs invented the Museum, the Museum's existence as a landmark in downtown Cleveland undermines its fancifulness as a trademark. A picture or a drawing of the Museum is not fanciful in the same way that a word like Exxon is when it is coined as a
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service mark. Such a word is distinctive as a mark because it readily appears to a consumer to have no other purpose. In contrast, a picture of the Museum on a product might be more readily perceived as ornamentation than as an identifier of source. - A designation may serve both ornamental and sourceidentifying purposes - Drawings of the front of the Museum on the two Tshirts in the record are similar, but they are quite different from the photograph featured in the Museum's poster. And, although the photograph from the poster is also used on a postcard, another postcard displays various close-up photographs of the Museum which, individually and perhaps even collectively, are not even immediately recognizable as photographs of the Museum.

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III. Functionality A. To obtain trademark/trade dress protection, the trademark/trade dress must be NONFUNCTIONAL. In the other word, trademark/Trade dress cannot be protected or registered if it is FUNCTIONAL. B. Why functional mark is not protected trademark a. Patent Law existed 1. Requirements of Patent 1) Utility 2) Non-obviousness 3) Novel b. Competition c. Consumer Considerations C. Definition of Functional a. If a feature gives a producer a competitive advantage (the best or superior design) which is not related entirely to its function as a brand identifier, it cannot be trademarked. b. De Facto functional v. De Jure functional 1. De Facto (not subject to functionality bar) 1) If the configuration merely performs some function or utility but is not significantly better than other possible configurations 2) Functional in the lay sense, indicating that although the design of a product, container, or a feature of either is directed to performance of a function, it may be legally
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recognized as an indication of source. 2. De Jure function (subject to functionality bar) 1) Product configuration is de jure functional if it is a superior design essential for competition 2) Existence of alternative designs that would perform same function is irrelevant 3) For example: Product has a particular shape because it
works better in this shape

c. Two Kinds of Function Bar 1. Functionality (Utility Sense) 2. Aesthetic Functionality D. In Re Morton, 671 F2d. 1332 (C.C.P.A. 1982) a. Facts: Appellant (who owns US design patent) sought to register a certain container configuration as a trademark. Appellant wanted to register 1) shape of the bottle and 2) configuration of the trigger. b. Issues 1. Whether the subject matter to be registered configuration of the container is functional 1) If its functional, secondary meaning wont help, it is out the door, no trademark 2. Whether the configuration has the capacity to and does distinguish its goods in the marketplace from the goods of others c. Holding: The decision of the board was reversed, and the case was remanded where the United States Patent and Trademark Office failed to produce evidence to show that the useful nature of appellant's container rendered the container functional. d. Functionality is determined in light of utility which is determined in light of superiority of design and rests upon the foundation essential to effective competition e. Morton-Norwich test 1. Whether or not having alternatives 1) Here, because there can be any shaped bottle to hold the liquid, so there are other alternatives available 2. Utilitarian advantages (function better) 1) Superior to manufacture ( Superior design)
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2) Here, no on form is necessary or appears to be superior since a modeled plastic bottle can have an infinite variety of forms of designs and still function to hold liquid. 3. Cost 1) Cheaper to manufacturer/shipment/ display E. Wallace v. Godinger Silver Art, 916 F.2d 76 (2d Cir. 1990) Aesthetic Function a. Facts: Wallace filed an application for trademark registration for the GRANDE BAROQUE pattern, which was on their silver products. The application is pending. Wallace sued Godinger and alleged that Godingers ornamental design on its similar-type silverware (but cheaper) was substantially similar to Wallances design and requested a preliminary injunction. 1. The Grande Baroque pattern is fairy described as ornate, massive and flowery with indented, flowery roots and scrolls and curls along the side of the shaft, and flower arrangements along he front of the shaft. b. Holding: The court held for Godinger. c. The Court here uses Inwood Laboratories test. 1. Whether the feature of the product is Essential to Use or Purpose 1) The court said that whether it is functional as looking at whether it is generic 2. Whether the feature of the product Affects the Cost or Quality of the article *Then, considering whether it hindering competition d. The court held that Wallace failed to establish that the design affected the cost or quality of the silverware under the functionality doctrine. The court found that bestowing trade dress protection would have hindered competition. The similarities between Wallaces and Godingers design involved elements common to all baroque-style designs in the silverware market. Wallace was not able to exclude competitors from using basic design elements which were necessary to compete in the silverware market. F. Brunswick Corporation, 35 F.3d 1527 (Fed. Cir. 1994)
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a. Facts: Appellant, manufacturer of black outboard motors, applied to the Patent and Trademark Office's Trademark Trial and Appeal Board (Board) to register the color black as a mark for appellant's outboard motors under 15 U.S.C.S. 1052(f). The Board determined that the color black was de jure functional, and appellant failed to establish secondary meaning, nor was the exclusive produce of black outboard motors. b. Held: The court determined that a color could serve as a trademark as long as it did not serve a primarily utilitarian purpose. The court affirmed and held that the color black was de jure functional. The color did not improve the motor's function, but established compatibility to boat colors, thereby making it an aesthetic characteristic and establishing a competitive need. c. Color prohibits competition 1. Black serves a general purpose: Exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller G. Qualitex v. Jacobson, 514 U.S. 159 (1995) a. Facts: Plaintiff company has a special shade of green-gold color on dry-cleaning pads. Defendant company uses the same color same as Plaintiff. b. Supreme Court found that the manufacturer of pads for dry cleaning presses could enforce rights in the green-gold color of its pads against a competitor. The Court reasoned that a color, while not inherently distinctive, was capable of identifying and distinguishing the goods of particular producer, and rejected arguments that recognizing rights in color would have unacceptable anticompetitive effects. The Court said Lanham Act can be interpreted broadly: any word, name, symbol or device or any combination therefore c. The Test for Colors trademarkability 1. As long as color can serve to identify the source of goods, it can be protected as a trademark. 1) NEED TO PROVE SECONDARY MEANING: Color itself is not inherently distinctive. 2. No functional purpose
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H. Vornado Air Circulation v. Duracraft, 58 f.2d 1498 (10th Cir. 1995) Significant inventive component Test a. Facts: The product configurations at issue in this case involved two household fan grills with spiral vanes, produced by plaintiff and defendant (Plaintiffs patent expired so wanted to get protection). b. Held: Although a product configuration must be nonfunctional to be protected as trade dress under 1125(a), not every nonfunctional configuration is eligible for that protection. The appellate court held that product configuration was a significant inventive component of the invention covered by the utility patent, so that without it the invention could not fairly be said to be the same invention, therefore, patent policy required that it enter into the public domain when the utility patents on the fans expired. To ensure that result, no trade dress protection was allowed under 1125(a). c. Note 1. Significant inventive aspect test: The existence of a utility patent disclosing the utilitarian advantages of the design I. Traffix v. Marketing Displays, 532 U.S. 23 (2001) a. Facts: Patent for a dual-spring mechanism to permit signs to withstand strong winds expired, petitioner copied the design and marketed own sign stands. MDI alleged its mechanism acquired secondary meaning such that consumers associated the look of the dual-spring design with respondent, so petitioner infringed respondents trade dress. b. Any acquired secondary meaning was irrelevant, since trade dress protection was precluded by respondent's failure to sustain its burden of demonstrating that its design was not functional. Both the disclosure of the dual-spring design in the claims of the expired patents and respondent's prior patent infringement litigation indicated that the design provided a unique and useful mechanism to resist the force of the wind. Respondent's trade dress claim was thus precluded, since trade dress protection only extended to product features which were
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not functional. c. Respondent's trade dress claim was thus precluded, since trade dress protection only extended to product features which were not functional. 1. Patent protection is only 20 years, trademark can last forever they didnt want to preclude people from using the design forever 2. Patent law is all about improvement and advancement. The incentive to improve is there if trademarked, there would be a chill in innovation d. Test of Functionality 1. Inwood 1) The feature is essential to use or purpose of the article 2) The feature affects cost or quality of the article 2. Qualitex 1) The feature is one the exclusive use of which would put competitors at a significant non-reputation-related disadvantage e. Notes by the Supreme Court in Traffix 1. Alternative design is irrelevant if the product feature is satisfied under the test of Inwood. 2. The test does not mean that competitive necessity is a necessary test for functionality. Where the design is functional under the Inwood formulation there is no need to proceed further to consider competitive necessity. J. Valu Engineering v. Rexnord, 278 F.3d 1268 (Fed. Cir. 2002) a. Valu filed three applications seeking registration of crosssectional conveyer guide rail configuration designs as trademarks. For each cross-sectional design, the company asserted a claim of acquired distinctiveness. The board concluded that the designs were de jure functional and unregisterable. The board, focusing primarily on the utilitarian advantages of the designs, determined that all four MortonNorwich factors weighed in favor of a finding of functionality. On appeal, the company contended that the board erred in confining its functionality analysis to a single use.
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b. The appellate court found that the board correctly concluded that the company's cross-sectional designs of conveyor guide rails were de jure functional. The board properly limited itself to a single application. The board's decision to confine its functionality analysis to a competitively significant application of the designs was not erroneous. c. As long as its functional in one competitively significant use, then its functional, you dont need to show that other uses constitute functionality. 1. Here, the Board focused on a single application The Board focused on these materials because it found that these are the only materials suitable for use in the wet areas of bottling and canning plants. K. Eppendorf-Netheler-Hinz Gmbh v. Ritter Gmbh, 289 F.3d 351 (5th Cir. 2002) a. Facts: Eppendorf manufacture medical and laboratory equipment, and it sought trade dress protection for a line of disposable pipette tips (so-called cobitips) and dispenser syringes capable of accurate and rapid multiple dispensing of liquids. b. The court here applied TrafFix Test. c. The court concluded that alternative deisgns are not germane to the TrafFix test for functionality. Each of the eight design elements identified by Eppendorf is essential to the use or purpose of the Combitips, and is not an arbitrary or ornamental feature. L. Abercrombie v. American Eagle Outfitters, 280 F.3d 619 (6th Cir. 2002) a. Facts: Plaintiff retailer (Abercrombie) claimed that defendant retailer impermissibly copied the designs of (1) certain articles of clothing (2) a catalog, and (3) in-store advertising displays. b. For Design of clothing and in-store advertising display 1. Its clothing designs and its in-store presentation were not protectable because they were functional, despite their distinctiveness. Granting protection would prevent effective competition in the market.
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c. For catalog 1. Here, A&F has chosen to print its catalog on an unusual kind of paper, leaving competitors a variety of other paper options. The clothes offered for sale appear in clothesline or cutout form, while many catalogs show garments on a model or display them in other ways. Colors bars are a useful mechanism for communicating the available selection of colors, but the same information can be provided in a handful of other ways. 2. The court here states/assumes that the A&F catalog satisfies the distinctiveness and non-functionality conditions. M. AU-tomotive Gold v. Volkswagen, 457 F.3d 1062 (9th Cir. 2006) a. Facts: Auto Gold sold license plantes, license plates frames, and key chains bearing Volkswagens distinctive trademark and Audis distinctive trademarks. b. The court held that VW and Audis marks are not functional aspects of Auto Golds products. c. The court rejected the notion that any feature of a product which contribute to the consumer appeal and saleability of the product is, as a matter of law, a function element of that product. d. Aesthetic functionality has been limited to product feature that serve an aesthetic purpose wholly independent of any sourceidentifying function. 1. Auto Golds admission that consumers want Audi and Volkswagen accessories, not beautiful accessories. e. A feature which merely associates goods with a particular source may be, like a trade-mark or trade name, a substantial factor in increasing the marketability of the goods. But if that is the entire significance of the feature, it is non-functional; for its value then lies only in the demand for goods associated with a particular source rather than for goods for a particular design.

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IV. Use A. Use in Commerce a. Use in commerce means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. b. Use Mark on Good 1. Requirements 1) The mark is placed in any manner on the goods, their containers, or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods such placement impracticable then on documents associated with the goods or their sale 2) The goods are sold or transported in commerce Interstate requirement 2. Affixing marks to goods 1) The law of trademarks originally recognized as use only the direct physical affixation of the designation to the goods marked by the person claiming trademark rights. A designation that was not physically affixed to the goods could not be protected as a technical trademark in an action for trademark infringement. Restatement Third of
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Unfair Competition c. Use Mark on Service 1. Requirements 1) The mark is used or displaced in the sale or advertising of services 2) The services are rendered in commerce or the services are rendered in more than one state or in the US and a foreign country by a person engaged in commerce. Interstate requirement 2. Affixing marks on service 1) The evidence must show that a direct association between the mark and the service, i.e., that the mark be used in such a manner that it would readily be perceived as identifying the source of the service In re Adair, 45 U.S.P.Q 2d(BNA) B. Aycock v. Airflite, 560 F.3d 1350 (Fed. Cir. 2009) a. Facts: Aycock planned to operate as a middleman between customers and air taxi operator. He would take reservation requests from customers via a toll-free number, and then would contact an air taxi to arrange flight. He did a lot of preparations for running this business. However, his operation never got off the ground. 1. While he estimated that he needed at least 300 air service operators under contract to make his service operational, Mr. Aycock never had more than 12 (4% of his minimum goal) under contract at any time throughout his companys history. 2. While Mr. Aycock advertised to air taxi operator, he never marketed the AIRFLITE SERVICE TO THE GENERAL PUBLIC. 3. The record does not suggest that Mr. Aycock ever gave the public an opportunity to use the toll-free phone number to book reservations, or that he ever spoke with a member of the general public about making a reservation. 4. Finally, and most notably, Mr. Aycock never arranged for a single passenger to fly on a chartered flight. b. Holding: Aycook does not use the mark in commerce. c. Requirements for using in commerce 1. Aycooks AIRFLITE mark was used or displayed the mark in
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the sale of advertising of service 2. Aycooks AIRFLITE service was either rendered in commerce or rendered in more than one state or in this and a foreign country by a person engaged in commerce. d. In this case, Aycook did not render his service in commerce. He does not make an open and notorious rendering, or offering, of his service to public Aycook failed to offer his service to public. Aycook never gave anyone an opportunity to use his AIRFLITE service to make a charter flight reservation. e. Instead, he merely took sporadic steps in preparing to offer his service to the public. All of Mr. Aycocks activities, even taken together, do not constitute a service that falls within the scope the definition of the recitation of service. The service described in Mr. Aycocks service mark application covers only the arranging the flights between an air taxi operators and a passenger, and not preparatory efforts to arrange a network of air taxi operators. C. Planetary Motion v. Techsplosion, 261 F.3d 1188 (11th Cir. 2011) a. Facts: Byron Darrah developed an e-mail software, called Coolmail, and this software was widespread on the internet for free under GNU. People on internet were able to identify cool mail guy. Also, Byron Darrah licensed it to a German company in this industry software are routinely given away for free. Byron Darrah then transferred all rights in the Coolmail to plaintiff Planetary Motion. Defendant operated a business based on an email service that he developed, under CoolMail. Argued that plaintiff wasnt using it in sale. b. The court held that, in this case, free distribution without actual sale still counts as use in commerce. c. The court stated that absence of sale is not determinative; Instead, transport may be enough. 1. To warrant protection, use of a mark need not have gained wide public recognition, but secret, undisclosed internal shipments are generally inadequate. 2. Use needs to be available to public d. Customary: Software is commonly distributed without charge
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under a GNU General Public License. The sufficiency of use should be determined according to the customary practices of a particular industry. That the Software had been distributed pursuant to a GNU General Public License does not defeat trademark ownership, nor does this in any way compel a finding that Darrah abandoned his right in trademark. D. Brookfield Communications, Inc. v. West Coast Ent. Corp., 174 F.3d 1036 (9th Cir. 1999) Concept of Tacking a. Facts: Plaintiff computer company (BF) designed a program to research movies through a database, which call Moviebuff. Defendant is a movie rental store (WC), which had previously registered same name as Plaintiff/BFs product as its domain name www.moviebuff.com, decided to publicly launch its site; argues it has priority and uses tacking as its basis. 1. 1986 WC used MOVIE BUFFS MOVIE STORE (video rental services) 2. 1993 Brookfield sells software as MOVIEBUFF FIRST USE 3. 1996 WC registers the domain name moviebuff.com 4. mid-1996 WC uses moviebuff.com in emails w/ its lawyers and customers 5. 1997 Brookfield applies to register MOVIEBUFF as an online database 6. Nov 1998 WC issues press release announcing its use of domain name b. Tacking 1. The trademark holder essentially seeks to tack his first use date in the earlier mark onto the subsequent mark. 1) The previously used mark is the legal equivalent of the mark in question or indistinguishable therefrom such that consumers consider both as the same mark. 2. Standard: when the trademark holder essentially seeks to tack his first use date in the earlier mark onto the subsequent mark; standard is strict: same continuing commercial impression; standard is high. 3. Examples cited in this case 1) CLOTHES THAT WORK. FOR THE WORK YOU DO could not be tacked onto CLOTHES THAT WORK.
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Van Dyne-Crotty, 926 F.2d at 1160 (hold that the shorter phrase was not the legal equivalent of the longer mark) 2) DCI and dci were too dissimilar to support tacking Data Concepts, 150 F.3d at 623-34. 3) Trademark Board has rejected tacking in a case involving American Mobilphone with a star and stripe design and American Mobilphone Paging with the identical design. American Paging v. American Mobilphone, 13 U.S.P.Q. 2d 2036 (T.T.A.B. 1989) c. Here, WCs MOVIEBUFFS MOVIE STORE and MOVIEBUFF.COM are very different because the latter contains 3 fewer words, drops the possessive, omits a space, and adds .com to the end d. Conclusion: Since tacking doesnt apply so we must therefore conclude that Brookfield is the senior user because it marketed MovieBuff products well before WC began using moviebuff.com in commerce and therefore WCs use of MOVIEBUFFS MOVIE STORE is irrelevant. E. Lanham Act 2 (d) Bar Requires examination of the use issue a. An opposition or cancellation petitioner for a trademark application may base a Section 2(d) argument on a prior registration, prior trademark or service mark use, prior use a s a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights. b. Analogous Use 1. An analogous use opposition can succeed only where the analogous use is of such a nature and extent as to create public identification of the target term with the opposers products or service. 1) Opposer need no provide direct evidence of the consuming publics identification of the target word or phrase with the oppose as the source of a given product or service. 2) Fact finder may infer the fact of identification on the basis of indirect evidence regarding the opposers use of the word or phrase in advertising brochures, catalogs,
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newspaper ads, and articles in newspapers and trade publications. 2. Substantial Impact: To constitute analogous use, it must have substantial impact on the public. 1) The test focuses on the actual perception of potential consumers, and not merely on the intent of the would-be mark owner. 2) Three elements for substantial impact - An open and notorious public use - Direct to the segment of the purchasing public for whom the services are intended - Carried out in a mannersufficient to inform or apprise prospective purchasers of the present or future availability of the adopters service under the mark 3) The commercial availability of a service was not a legal prerequisite to a showing of analogous use. F. Constructive Use Intent to Use a. Intent to Use 1. Lanham Act 1(b) 1) A person who has a bona fide intention, under circumstance showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register 2. The ITU provisions permit the holder of an ITU application to use the mark in commerce, obtain registration, and thereby secure priority retroactive to the date of filing of the ITU application 3. This right or privilege is not indefinite; it endures only for the time allotted by the statute Lanham Act 1(d). 1) An applicant files a statement of commercial use within six months of the date on which the Commissioner's notice of allowance pursuant to 15 U.S.C. 1063(b)(2) is issued 2) The ITU applicant is entitled to an extension of another six months, and may receive further extensions
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from the Commissioner for an additional twenty four months 3) If, but only if, the mark completes the registration process and is registered, the ITU applicant is granted a constructive use date retroactive to the ITU filing date 4. As long as an ITU applicant's privilege has not expired, a court may not enjoin it from making the use necessary for registration on the grounds that another party has used the mark subsequent to the filing of the ITU application. To permit such an injunction would eviscerate the ITU provisions and defeat their very purpose. b. Requirements for Filing ITU 1. Person who has bona fide intention 1) Bona Fide Intention: Good Faith 2) Examples for NOT Bona Fide - Filing many ITU applications for the same mark on a large number of products - Filing many ITU applications for numerous marks for use on the same product - Filing many ITUs to replace prior ITUs that have lapsed 2. Application 3. Files a statement of commercial use in six months 1) Can be extended to another 6 months 2) Maximum: 3 years c. Policy Reasons for enacting ITU 1. Resolve token use problems (No more token use available) 1) Token use is technical trademark use on a small quantity of goods in commerce with the express purpose of providing the basis for an application to register the mark under the Lanham Act. 2. Problem with foreign registrants d. Warnervision Entertainment v. Empire of Carolina, 101 F.3d 295 (2d Cir. 1996) 1. Facts: Mark REAL WHEELS 1) TLV Sept. 94 ITU filed 2) WV actual use 3) WV Jan. 3 95 Application
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4) Buddy L Jan. 6 95 Application, got rejected. 5) TLV + Buddy L = Empire 6) Empire v. WV: WV sues to enjoin TLV/Empire from making actual use. The court grants injunction to TLV/Empire even though you filed ITU application before WV started using it 2. Empire/TLV argued that the filing of their "intent to use" application for the trademark "REAL WHEELS," pursuant to Lanham 1(b), was a defense against WVs motion to preliminarily enjoin use of that mark. WV argued that they had begun commercial use of the mark before appellants Empire/TLV did, and that they had priority, regardless of the filing. In the meantime, Empire/TLV filed preliminary injunctive relief from WVs using of REAL WHEELS. 3. Holding: The court vacated the preliminary injunction against Empire/TLV, but affirmed the denial of Empire/TLVs motion for injunction, holding that filing an "intent to use" application was a defense to a preliminary injunction, but it did not allow appellants to seek affirmative relief against WV. 4. Both of injunctions were denied. 1) Empire/TLVs ITU filing ITU is as a defense to WVs efforts to prevent it from completing the ITU registration process. 2) However, Empire/TLVs ITU cannot be an affirmative or offensive relief precluding WVs use of the REAL WHEELS mark. e. Trumps to ITUs priority date Exceptions to ITU 1. Former Use 1) If another party can demonstrate that it used the mark before the holder filed its ITU application or that the filing was for some reason invalid, then it may be entitled to an injunction. 2. Foreign Use Well Known Mark doctrine 1) Foreign mark becomes well known in the U.S. (despite having been used only overseas) such that U.S. consumers associate the mark with the foreign user, some courts may recognize priority in the foreign users. 2) The General Inter-American Convention for Trademark
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and Commercial Protection (the Pan-American Convention) - Article 7 of the Pan-American Convention allows nationals of a Convention country to challenge the use and registration of an interfering mark in another contracting country upon proof that the interfering party had knowledge of the existence and continuous use of the mark in the same class of goods, upon compliance with the requirements established by the domestic legislation in such country and by this Convention. f. Paris Convention Priority date for foreign filing 1. Lanham Act 1) Lanham Act 44(e): A foreign national of a Paris Convention country can acquire a U.S. registration based strictly on a foreign filed registration, even in the absence of any U.S. use, assuming that the mark is otherwise eligible for registration under U.S. standards. 2) Lanham Act 44(d): Allows a person who has filed a foreign application and who subsequently files a U.S. application to claim priority back to the earlier-filed application. 2. In re Rath, 402 F.3d 1207 (Fed. Cir. 2005) 1) Facts: Rath is a German citizen who applied to register the marks, DR. RATH and RATH, for goods and services including nutritional supplements, books, grains, and educational services. The applications were based upon ownership of a German trademark registration for the marks. The examiner refused to register the marks on the grounds that the marks were primarily merely surnames, barred by Lanham Act 2(e)(4). 2) Paris Convention - The court states that Paris Convention is not a selfexecuting treaty and requires congressional implementation. - The Convention also provides that trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: 2. When
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they are devoid of any distinctive character. 3) Lanham Act - Section 44(e) Registration on principal or supplemental register; copy of foreign registration. A mark duly registered in the country of origin of the foreign applicant may be registered on the principal registered if eligible, otherwise on the supplemental register herein provided. - Section 44(e) specifically directs issuance of registration on the Principal Register only if eligible. The language of section 44(e) itself makes clear that the reference to eligibility pertains to eligibility for registration on the principal register, rather than eligibility under the Paris Convention. In Darty, the court held that a foreign applicant who claimed priority based on a foreign filed application under section 44(d) of the Lanham Act was not excused from the surname rule. - The court held that registration of foreign marks cannot fail to meet U.S. requirements for eligibility. G. Surrogate Use Who is the user of the trademark purpose a. Concept 1. U.S. trademark law grants trademark right to the user, even to the exclusion of the creator. The creator is left to purpose alternative (non-trademark) remedies, if any are available. b. Uses by Affiliate 1. Related Companies 1) Lanham Act 5 (15 U.S. 1055): The first use of a mark by an entity that is controlled by the registrant or applicant for registration of the mark insures to the benefit of the controlling entity. 2) Definition of Related Companies: The related-companies doctrine as embodied in Lanham Act 5 requires a showing of a substantial relationship between the using entity and the controlling entity. 2. Similarly, a licensees use will ordinarily insure to the benefit
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of a licensor, where the license agreement provides for adequate quality control on the part of licensor. 3. Depends on legal of affiliation and control. 4. Boogie Kings v. Guillory, 188 So. 2d 445 (1996) Use by Affiliate 1) Facts: Facts: Plaintiff (a band association), Boogie Kings, instituted an action against Defendant (a former band member, leading singer), Guillory, to enjoin the defendant from using the trade name, "Boogie Kings." The defendant, former band member, answered and alleged that the band association had never acquired a proprietary interest in the name, and that he had the exclusive right to use the trade name, because the name had been given to him by one of the founding members of the band. 2) Holding: The court ruled that the original trade name was adopted by mutual agreement of the members of the band association, that a proprietary interest in the name, "Boogie Kings" became vested in the band, and that this interest did not become vested in any individual member of the band. The court further held that no single present or former member of the band had the right or authority to give or transfer the exclusive right to use the name. 3) Note: Manager of the associate may be the one who controls and maintain the quality. c. Public as Surrogate User 1. Coca-Cola v. Busch, 44 F. Supp. 405 (E.D. Pa. 1942) 1) Facts: Plaintiff soft drink company, Coca-Cola, alleged that defendant beverage company, Busch, would infringe its cola trademark by using Koke-Up on their soft drinks, and sought an injunction against manufacture and sale of beverages bearing a popular slang version of the trademark. The court granted the injunction. 2) Trademark Infringement - The plaintiff may not obtain under traditional trademark infringement because the plaintiff did not use the world koke (Coke) or identify its products
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with the world by sale, advertisement or otherwise. 3) Unfair Competition - Plaintiff may prevail upon an unfair competition theory because the proposed name of defendant's beverage so nearly resembled the slang version of plaintiff's trademark. - Koke(Coke) has come to be the nickname for CocaCola. Koke(Coke) is abbreviation for Coca-Cola and public has used as designating the product of Coca-Cola - The abbreviation of the trade-mark which the public has used and adopted as designating the product of the complaint is equally as much to be protected as the trademark itself and while the name of the defendants products is Koke-Up it is not to be doubted form the evidence in the case that Koke is the dominant word which is attempted to be impressed upon the public, and then public would be deceived and confused. The defendant intended to take advantage of the reputation and good will of plaintiff's product. d. Problem 4-8: Lets Roll page 288 1. Registration on Lets Roll for 1) Shirts 2) Charitable fundraising services 2. Slogans on the T-shirts are generally considered nonregistrable. Unless you can show the slogans associated with certain source. H. Abandonment a. Abandonment through Non-Use 1. Emergency One v. American Fireeagle, 288 F.3d 531 (4th Cir. 2000) 1) Facts: In 1989, Plaintiff (E-One) bought with American Eagle Fire Apparatus, which used bald eagle against American flag as its trademark. By mid-1992 E-One was no longer manufacturing any new fire trucks under the AMERICAN EAGLE brand. However, it promoted the mark
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in various way: by selling T-shirts, hats, tote bags, and nameplates bearing the AMERICAN EAGLE logo in The Fire Locker (a gift store at the factory). In 1994, only one recycled American Eagle truck left the factory bearing the truck itself. In 1999, AFE started to manufacture its fire trucks bearing a mark highly similar with AMERICAN EAGLE logo. Plaintiff alleged that defendant's trademark, a bald eagle superimposed over an American flag, infringed plaintiff's rights in its own mark, also a bald eagle superimposed over an American flag. Defendant defended on the ground that plaintiff had abandoned its mark. The issue was ultimately submitted to a jury, which found that plaintiff had not abandoned its trademark. The defendant appealed. 2) Non-use for three consecutive years alone, however, constitutes prima facie evidence of abandonment. Proof of three consecutive years of non-use thus creates a presumption a mandatory inference of intent not to resume use. Once the presumption is triggered, the legal owner of the mark has the burden of producing evidence of either actual during the relevant period of intent to resume use. The ultimate burden of proof remains always on the challenger. 3) E-One failed to rebut the presumption by showing actual use. However, E-One rebutted the presumption by producing evidence that it intended to resume use the mark on fire trucks. - Continuing to use the mark on hats, T-shirts, tote bags, and souvenir nameplates is evidence of some intent to resume use of the mark even thought these evidence is not good enough to prove actual use not using the mark on the fire trucks (Not showing the bona fide use of the mark in the ordinary course of trade, and not made merely to reserve a right in the mark). - E-One executives testified that they actively considered using AMERICAN EAGLE mark on fire truck
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between 1992 and 1995. 2. Residual Goodwill 1) Ferrari v. Mcburnie, 11 U.S.P.Q 2d (BNA) 1834 (S.D. Cal. 1989) - Ferrari produced a limited number of DAYTONA SPYDER vehicles between 1969 and 1974. Sometimes after 1974, McBurnie began selling kit cars that closely resembled the Ferrari DAYTONA SPYDER. McBurnie argued that Ferrari had abandoned trade dress rights in the vehicles. The court rejected the abandonment argument. First, Ferrari had engaged in extensive parts supply and repair activities for its DAYTONA automobile. Second, the existence of residual goodwill also cut again any conclusion of abandonment: Here, DAYTONA SPYDER design is strongly associated with Ferrari, and such association is extremely positive. In essence, Ferrari has not only achieved a strong existing good will but continues to maintain a residual goodwill in the unique design of the DAYTONA SPPYDER. 2) L & J.G. Stickley v. Canal Dover Furniture, 79 F. 3d 258 (2d Cir. 1996) - L & J.G. Stickley manufactured mission style furniture in the early twentieth century. The firm ceased production in 1920s. In 1989, the firm started to reproduce mission style furniture. 1993 Canal Dover began selling mission-style furniture. L & G Stickley sued for trade dress infringement. - Once a registered trademark has been abandoned, any subsequent user of the mark must measure its rights from the time the subsequent use begins, and cannot rely upon any residual secondary meaning in the mark from the original period of use. This is true even if it is the original mark holder that resumes use o the abandoned trademark. - Mission designs were not produced from 1920 to 1989. L & J.G. Stickley abandoned its trade dress during this
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period of time. Although L & J.G. Stickley resumed use of the trade dress in 1989 when it began to reissue the mission style furniture designs, L & J.G. Stickley was not entitled to benefit from any use of the trade dress prior to 1989. - In Ferrari case, Ferrari has the car design maintain secondary meaning in the eyes of the public because Ferrari continued to design cars with a very similar appearance and continued to manufacture parts for DAYTONA owners. 3) Notes: Whether the goodwill can overcome the presumption of 3 years non-use? Depends. b. Abandonment Through Failure to Control 1. Stanfield v. Osborne Industries, 52 F.3d 867 (10th Cir. 1995) 1) Facts: Plaintiff, Stanfield, joined the defendant, OII, business and licensed the defendant to use Stanfield on the defendants OIIs products. Later, the plaintiff resigned, and had no involvement with OII. After the license agreement expired, the plaintiff requested OII discontinue use of Stanfield trademark. 2) The trademark license agreement was a naked license, therefore, the plaintiff abandoned any rights in the trademark. 3) Naked licensing of a mark occurs when a licensor allows a licensee to use the mark on any quality or type of good the licensee chooses. Such uncontrolled licensing can cause the mark to lose its significance. 4) Exception: Reliance on the licensees quality control - A close, long term working relationship, or - The licensee maintained a successful association with no consumer complaints 5) Here, the plaintiff abandoned his trademark by naked license without exceptions. 2. University Book Store v. University of Wisconsin Board of Regents, 33 U.S.P.Q 2d (BNA) 1) Facts: The Board of Regents of the University of Wisconsin System applied to register the Bucky Badger logo, the Bucky on W logo, and the world mark WISCONSIN
44

2) 3)

4)

5)

6)

BADGERS for various clothing items, educational services, and entertainment-related services. The University Book Store and other defendants opposed, arguing that the university had abandoned rights in the marks. Numerous third parties unaffiliated with the university had used the marks for many years, and the university had admitted that it lacked exclusive rights in the marks. Holding: Rule for University of Wisconsin. University of Wisconsin has not been the first user of the subject marks for the goods and services for which registration is sought. However, the opposers has ever used such marks as its own mark to identify and distinguish the particular goods and services. Such sale and advertising by opposers and various third parties for many years prior to applicants institution of a formal licensing program in Jan. 1988 simply reflect the fact that application, over the years, tolerated sales and advertising of goods, including clothing, bearing the marks it presently seeks to register. University of Wisconsin permitted others to sell imprinted merchandise as expressions of community support and goodwill. Quality control: Even without the quality control, University of Wisconsin did not abandon the mark since the quality of the apparel imprinted with such marks sold by opposers and numerous third parties remained at an acceptable level in virtually all instances. Public associated the Bucky Badger with the University of Wisconsin. Use by other third parties of the Bucky Badger figure and/or the term BADGER is plainly meant to emphasize or underscore that those firms are based in Madison or otherwise are located in the State of Wisconsin.

V. Registration A. Registration of Trademark a. Advantages

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1. Constructive Notice 2. Scope of Protection 3. Presumption of validity 1) Ownership of the mark 2) Exclusive right to use it with good/service claimed 4. Incontestable: After 5 years registration. b. Supplemental Registration: Certain marks that do not meet the standards set out in Lanham Act 2 but are nevertheless capable of distinguishing the applicants goods or services from those of competitors, may be registered on the Supplemental Register in accordance with Lanham Act 23-38. The advantages are: 1. Giving notice 2. Assist U.S. applicants in acquiring foreign trademark registration. 1) A trademark applicant seeking to receive a registration outside its country of origin under the so-called telle quelle procedure of the Paris Convention must show that it has first acquired registered rights in its home jurisdiction. B. Registration Procedure a. Application: In the application, applicants must contain 1. A filing basis: Based on Use, ITU or foreign registration. 2. A list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. 3. A drawing of the mark, except for registration of sound, scent, or other nonvisual marks. 4. A specimen showing the user of the mark in connection with the goods or services. Use-base application must include a specimen, whereas a ITU application need not include a specimen at the time of filing, but must include one in the statement of use. 1) A specimen should be a label, tag, or container for the goods, or a display associated with the goods Evidence of the manner in which the mark is presented to consumers, and verification that the mark is in use. 5. May need to disclaim a portion of mark which one to be
46

b.

c.

d.

e.

registered. 6. Date of the use and Date of first use in commerce. 7. List the owner of the mark, which not need to be necessary the applicant. Examination 1. Two general areas of examinations 1) Procedural requirement of filing 2) Substantial requirement: Whether the mark meets the Section 2 of Lanham Act? 2. Period of time: 6 months to get respond from examiners. And has another 6 months to respond the rejections and fix the problems mentioned by examiners. 3. Fee: $300 per class. Publication 1. Basically, one year and half from application to publication. 2. Other people can take a look published mark and see whether their trademark is damaged by this published trademark. Opposition Period 1. A trademark opposition is an inter partes administrative proceeding before the Trademark Trial and Appeal Board (TTAB), in which interested members of the public may challenge the PTOs decision to register a mark. 2. Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board, and paying the required fee within 30 days after the date of publication. 3. Inter partes proceedings before the TTAB are governed by the Rules of Practice in Trademark Cases adopted by the PTO. The PTOs rules were adapted from the Federal Rules of Civil Procedure 1) Opposing proceeding is like civil procedure/action, such as discovery 4. Very rare situation to go the opposing proceeding. Post-Registration 1. Notice 1) R in a circle or write that this mark is registered in the
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U.S. or any country on the products with the trademark. - You cannot use R in circle unless the mark is registered. 2) Advance: Prevent the innocent use defense - Registrants who fail to give notice in the form of such a marking cannot collect profits or damages for infringement unless the infringement defendant had actual notice of the registration or unless the mark owner prevails on a parallel claim for damage under Lanham Act 43(a). 2. Maintain and Renew 1) Lanham Act 8(a) and (b): Need to file statement continuing use (affidavit) within the year following five years after registration or within the six-month grace period after expiration of that period. 2) Lanham 8(a) and 9(a): A trademark registration for which a proper Section 8 affidavit has been timely filed remains in force for ten years. However, a registration may be renewed for successive ten-year periods without limitation if the registrant timely files a renew application. - The renew application must be filed within one year before the expiration of the registration, or within the six month grace period after the expiration of the registration upon payment of a grace period surcharge. 3. Cancellation 1) Contestable trademark (Registration within 5 years) - The mark can be cancelled by any grounds. 2) Uncontestable (Registration after 5 years) - The grounds for challenging will be limited to specific reasons. See Section 14(3) genericness functionality abandonment fraud in obtaining the registration. Violation of Section 4 (relating to collective marks and certification marks) For example: Discrimination for using certified
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mark violation of Section 2(a), (b), or(c) - Nine defenses under Article 33(b) Obtained fraudulently Abandonment Misrepresent the source of the goods or services on or in connection with which the mark is used Name, Descriptive term or Geographic description Violate the antitrust laws of the United States That the mark is functional That equitable principles, including laches, estoppel, and acquiescence, are applicable 3) Park'n Fly v. Dollar Park and Fly, 469 U.S. 189 (1985) - Facts: Plaintiff argued that because its registered service mark "Park 'N Fly" had attained incontestable status, Defendant infringed the mark by using the words "Park and Fly." Defendant challenged the mark on the ground that it was merely descriptive (therefore no TM unless secondary meaning established) - Incontestability not only barred cancellation of Plaintiffs mark, but allowed Plaintiff to utilize that status to enjoin Defendants use of its mark. Neither the Lanham Act, nor legislative history supported this defense. - Defendant cant defend a trademark suit on the ground that Ps mark is merely descriptive if the Ps mark has reached incontestability status

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VI. Exclusions from Registrations A. Scandalous, Disparaging , and Deceptive Marks Section 2(a) a. Lanham Act 2(a) 1. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it 1) Consists of comprises immoral, deceptive, or scandalous matter 2) Matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs 3) National symbols b. Harjo v. Pro-Football, 50 U.S.P.Q 1705 (D.D.C. 2003) 1. Issue: Whether REDSKIN is a scandalous or disparaging mark? 1) REDSKIN also means the native Indians. 2. Whether a mark is scandalous? 1) Likely meaning of the mark - The dictionary definition of the term - The relationship of the term and other elements of the mark - The type of product upon which the mark
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c. d.

e.

f. g.

appears - How the mark will appear in the marketplace 2) Offensive to a substantial composite of the public 3. Whether a mark is disparaging mark? 1) Likely meaning of the mark 2) Disparaging a substantial composite of the referenced group 4. Difference between scandalous 1) Scandalous: - Look at the public - Absolutely prohibit from registration 2) Disparaging: - Look at the group who were referenced - Absolutely prohibit from registration Substantial evidence needs to be provided to support either scandalous or disparaging mark. Required for standing for cancellation proceeding 1. Real interest of the outcome, AND 1) A direct and personal stake in the outcome of the opposition 2) But not necessary means specific commercial interest, 2. A reasonable belief basis for believing that damages will accrue TTAB: When examiners analyze a mark which may be a scandalous or disparaging mark (examiners has a doubt), the examiner shall still let the mark to go and allows/lets the public to decide and do oppose. Partys intent of use is separate apart from analysis. Old Glory case 1. Facts: Using American flag in a condom shape as a mark to emphasize that Americans have a patriotic duty to fight the Aids epidemic and other sexually transmitted diseases. 2. The TTAB remarked on the importance of understanding the entire context of the marks use in applying the Section 2(a) exclusions. The TTABs context analysis revealed a redeeming purpose for the applicants use of arguably scandalous imagery namely, linking AIDS PREVENTION TO PATRIOTISM.
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3. The TTAB was suitably impressed by what it called the applicants seriousness of purpose. h. In Re Budge Manufacturing, 857 F.2d 773 (Fed. Cir. 1988) 1. Facts: Using LOVEE LAMB for automotive seat covers, which are made wholly from synthetic fibers. 2. The LOVEE LAMB is denied for registration. 3. Standard for Section 2(a) deceptiveness 1) Is the term misdescriptive of the character, quality, function, composition or use of the goods? 2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? 3) If so, is the misdescription likely to affect the decision to purchase 4. The court affirmed the denial of registration for appellant's
trademark because the mark was deceptive when the term "lamb" was applied to seat covers that were not made from sheepskin and reasonable purchasers were likely to believe that they were.

5. The court rejected the argument that corresponding advertisement cured the misdescription because the word of the mark, not the advertising, was what was sought to be registered. B. Geographic Marks a. Section 2 1. Section 2(a) deceptive 2. Section(e)(2) geographically descriptive 3. Section(e)(3) geographically deceptively misdescriptive b. Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, 871 F.2d 590 (6th Cir. 1989) Geographical Description 1. Facts: Plaintiff (BPB) applied for a registered trademark for a term, Appalachian Log Structures. As evidence of the establishment of secondary meaning, appellant informed the Patent and Trademark Office (PTO) of monies spent in advertising the name and monies received in gross sales under the name. Appellant received the certificate of registration and began advertising the name. Defendant, Applachian Log Homes, began using its name, which was
52

similar. Defendant's name represented the location of the business and the kind of product sold. 2. Held: Defendant, Appalachian Log Homes, introduced substantial evidence supporting the district court's determination that the trademark was geographically descriptive, which was not protected by the Lanham Act, The court found there was sufficient evidence to rebut the PTO finding of secondary meaning. Thus, appellant's trademark was unprotectable. 3. Test for Geographically descriptive term 1) The primary significance of the mark is geographic 2) Purchasers would be likely to make a goods/place or services/place association. - i.e. to think that the goods or services originate in the geographic place identified in the mark 3) Mark identifies the geographic origin of goods or services c. In Re California Innovation, 329 F.3d 1334 (Fed. Cir. 2003) 1. Key for Section 2(a) deceptive, Section 2(e)(2) geographically descriptive and Section 2(e)(3) geographically deceptively misdescriptive. 2. PRE-NAFTA 1) Section 2(e)(2) geographically descriptive and Section 2(e)(3) geographically deceptively misdescriptive are in the same category old Section 2(e)(2). 2) Showed secondary meaning can rebut the old section 2(e)(2) geographically deceptively misdescriptive (New: Section 2(e)(3) geographically deceptively misdescriptive) 3. POST-NAFTA 1) Separate old section 2(e)(2) geographically descriptive and Section geographically deceptively misdescriptive into Section 2(e)(2) geographically descriptive and Section 2(e)(3) geographically deceptively misdescriptive. 2) For Section 2(e)(3) geographically deceptively misdescriptive, its not allowed to show secondary meaning to rebut the denial of registration. 3) Treat Section 2(a) deceptive and Section 2(e)(3)
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geographically deceptively misdescriptive the same. C. Name Marks Either Section 2(e)(4) or Section 2(a) a. Section 2(e)(4) or Section 2(a) 1. Section 2(e)(4) 1) Primarily merely a surname 2) Can be registered by showing secondary meaning 2. Section 2(a) 1) Matter which may falsely suggest a connection with persons, living or dead. 2) Still cannot be registered even by showing secondary meaning 3. Section 2(c) 1) Prohibiting registration of a mark which consists of or comprises a nameidentifying a particular living individual except by his written consent b. In Re United Distillers, 56 U.S.P. Q. 2d 1220 (TTAB 2000) 1. Facts: Plaintiff United Distillers filed an ITU application to register the mark HACKLER on the Principal Register for alcoholic beverages, namely, distilled spirits, except Scotch whiskey, and liqueurs. 2. Primary Surname 1) IF the mark is a primary surname, no registration unless there is secondary meaning; 2) If the mark is not a primary surname, the name is - just arbitrary, fanciful, OR - go to the descriptiveness question 3. Test for primarily merely a surname 1) Whether the surname is rare? Yes favors allowing registration 2) Whether anyone connected w/ the applicant has the involved term as a surname? No favors allowing registration 3) Whether the term has any other recognized meaning? Yes favors allowing registration (b/c if the name is weaver and people might associate weaver with someone who weaves) 4) Whether the term has the look and feel of a surname?
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No favor allowing registration c. In re Sauer, 27 U.S.P.Q. 2d 1073 (TTAB 1993) 1. Issue: Does Bo Ball consists of/comprises a name? 2. Holding: Bo Ball is not protected. No trademark protection. 3. Section 2(c), it prohibits registration of a mark which consists of or comprises a nameidentifying a particular living individual except by his written consent 4. Test for the Section 2(c) Consists of or comprises a name identifying a particular living individual 1) Mark must be shown to be same as or a close approximation of the persons previously used name or identity 2) Must be established that the mark (or part of it) would be recognized as such 3) It must be shown that the person in question is not connected w/ the goods or services of the applicant 4) Persons name or identity must be of sufficient fame that when it is used as part or all of the mark on applicants goods, a connection with that person is likely to be made by someone considering purchasing the goods

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VII. Geographic Limits on Trademark Rights A. United Drug v. Theodore Rectanus, 248 U.S. 90 (1918) Tea Rose Doctrine a. Facts: Both parties had NO registration because this is before the Lanham Act. According to the appeals court, Plaintiff (Regis/senior user from Haverhill, MA, manufactured and distributed Rex (product = medical supplements) in MA, starts in 1877 did nothing to make her medicine or its trademark known outside her region and Defendant (Rectanus/junior user of Rex (product = blood purifier) from Louisville, Kentucky and sold it in Louisville and its vicinity of the Union, starts in 1883 was presumed to know that others such as D might act on the assumption that the field was open. Only in 1911 that P gets notice of D b. Issue: 1. Can Regis enjoin Rectanus in Kentucky? No 2. Can Rectanus enjoin Regis in Kentucky? Case doesnt really talk about it, but the answer is Yes c. Holding: Where Rectanuss use of its trademark for medicine was confined to a limited territory far from the territory in which Regiss contested use of the trademark took place, Regis was held to have taken the risk that an innocent party might use the same trademark for similar goods and spend money building up its trade. d. Reasoning: According to the Court, Rectanus in good faith and without notice of any prior use did build up a local trade using the name. Under those circumstances, the general rule of priority used in trademark infringement cases did not apply. e. Notice: Constructive notice v. Actual Notice 1. Constructive Notice = person or entity is legally presumed to have knowledge of something, even if they have no actual knowledge of it. 2. Actual Notice = actual knowledge f. General Rule: First in time, First in right. 1st user to acquire
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TM rights g. Exception: 2nd user adopts the same mark as the first user in geographically remote market, in good faith without notice. h. Tea Rose Doctrine 1. It applied when Geographic limits when you have 2 common law users 2. Tea Rose Doctrine: If the second users have geographically remote adoptions, and if the 2nd user adopts trademark in good faith, then 2nd user has the right to trademark 3. But T-Rose doctrine less applicable today b/c good faith is harder to establish with the information revolution B. Dawn Donut Co. v. Hart's Food Stores, 267 F.2d 358 (2d Cir. 1959) 1. Facts: Plaintiff, Dawn Donut, has used its registered trademark Dawn and Dawn Donut for its product, doughnut mix, dough mix and cake mix sold retail sales, like bakers, for many years. The defendant, Hart Food Stores, Inc., owns and operates a retail grocery chain selling doughnuts and other baked products with mark Dawn within the New York counties where there is no present likelihood that plaintiff would expand its retail use of its trade-marks into. The evidence shows that the defendant adopted the mark Dawn without any actual knowledge of plaintiff's use or federal registration of the mark. 2. The court held for the defendant. 1) The plaintiff is not entitled under Lanham Act to enjoin the defendant from using mark Dawn in specific area where defendant runs business because its business and trademark use dont expend into. 3. Although plaintiff licenses purchasers of its mixes to use its trademarks in connection with the retail sales of food products made from the mixes, it has not licensed or otherwise exploited the mark at the retail level in defendant's market area for some thirty years. 4. Moreover, because no likelihood of public confusion arises from the concurrent use of the mark in connection with retail sales of doughnuts and other baked goods in separate trading areas, and because there is no present likelihood that plaintiff will expand its retail use of the mark into defendant's market area,
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plaintiff is not now entitled to any relief under the Lanham Act, 15 U.S.C.A. 1114. 5. Using at: Different geographic areas + Different levels of markets 1) The Lanham Act, 15 U.S.C.A. 1114, sets out the standard for awarding a registrant relief against the unauthorized use of his mark by another. It provides that the registrant may enjoin only that concurrent use which creates a likelihood of public confusion as to the origin of the products in connection with which the marks are used. 2) Therefore if the use of the marks by the registrant and the unauthorized user are confined to two sufficiently distinct and geographically separate markets, with no likelihood that the registrant will expand his use into defendant's market, so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user's use of the mark. 6. Lanham Act makes clear that a federal registrant has nationwide priority but some courts will not enjoin use of the mark by a junior user (Harts) unless and until the registrant shows a likelihood of entry into the junior users (Harts) trading territory; so you can only get injunction if theres likelihood of confusion. C. National Association for Healthcare Communications v. Central Arkansas Area agency on Aging, 257 F.3d 732 (8th Cir. 2001) De Minimus Use a. Facts: Plaintiff, the association/Health Com (P/senior user/service = emergency alarm services), was the first to use the mark CareLink nationally, in Florida and other states, used since 1991. Note: one sale before 1995 in Arkansas, but no sales in 6 counties. It had a federal service mark registration pending. Federal registration pending only, so its irrelevant, and therefore this is a Tea Rose situation. Thus, even if P had obtained federal registration in 1999, that would not enjoin Ds common law rights established before 1999. Defendant, Central Arkansas Area Agency on Aging, Inc. (D/junior user/service=elder care services), was the first to use the CareLink mark in six counties in central Arkansas and had
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registered its mark under the Arkansas trademark statutes, registered since 1995, which is a state registration. b. Held: found for the D and enjoined the P from using the service mark anywhere in Arkansas. P had no TM rights in 6 counties because TM had NO sale in the 6 counties, only 1 sale in Arkansas = de minimus use. However, the agency did not establish its right to a statewide injunction. c. D can be granted of a permanent injunction barring Ps use in six countries of Arkansas since/as long as there is likelihood of confusion d. Ps De Minimus use in area does not give rights; there is permanent injunction against P in the 6 county area because P had no sale in the 6 counties, but there is no statewide injunction for D brought an action under the Lanham Act and state law to determine which party had the superior right to use the service mark CareLink in Arkansas. D. The territorial Nature of U.S. Trademark Rights Foreign Use a. Persons Co, Ltd .v Christman, 900 F.2d 1565 (Fed. Cir. 1990) 1. Facts: Plaintiff In the present case, Iwasaki (senior user/P) failed to secure protection for its mark through use in U.S. commerce; therefore, no established business or product line was in place from which trademark rights could arise. Defendant Christman (junior/D) after visiting a retail store in Japan, started a company in the United States manufacturing and selling similar merchandise under the same name and logo. Christman registered the trademark. Several years later, Iwasaki expanded to the United States and licensed another company to sell its merchandise. Upon becoming aware of the confusion, Iwasaki sued to cancel Christmans registration on the basis of likelihood of confusion, abandonment and unfair competition. 2. The court affirmed the decision denying Iwasakis request for cancellation of the trademark as its foreign use did not preclude Christmans priority in being first to file for registration. 3. In affirming the decision of the Patent and Trademark Office Board of Appeals (board), the court held that Christman
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was the first to use the mark in U.S. commerce. This use was not tainted with bad faith by the mere knowledge of Iwasakis prior foreign use in Japan Iwasaki raised no factual dispute material to the resolution of the issue of abandonment. The Board had no authority to adjudicate the unfair competition claim. 1) TM rights exist in each country according to that countrys statutory scheme; therefore, mere knowledge of use/registration in another country does not give rise to bad faith by trademark adopter b. Grupo Gigante v. Dallo, 391 F.3d 1088 (9th Cir. 2004) WellKnown Foreign Mark Doctrine. 1. Facts: Plaintiff, Group Giante, is a chain Mexican supermarket and registered Gigante as a trademark in Mexico during 1960s. Defendant, Michael Dallo, open a grocery store in San Diego in 1991. In 1998 the plaintiff decided to enter the Southern CA market. 2. A fundamental principle of trademark law is first in time equals first in right. However, a famous-mark exception to the territoriality principle. While the territoriality principle is a long-standing and important doctrine within trademark law, it cannot be absolute. 3. Famous-Mark Doctrine: When foreign use of a mark achieves a certain level of fame for that mark within the U.S. the territoriality principle o longer serves to deny priority to the earlier foreign user. 4. Whether the famous-mark exception to the territoriality rule applies 1. Secondary-Meaning Test; AND 2. A substantial percentage of consumers in the relevant U.S. market is familiar with the foreign mark 5. Because the district court did not consider the second part of test, the case was remanded. c. ITC v. Punchgini, 482 F.3d 135 (2d Cir. 2007) 1. Plaintiff ITC is an Indian restaurant and used the name The
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New Delhi BUKHARA since 1977. They had franchise restaurants in the U.S. until 1997. Defendant then open a restaurant called BUKHARA in New York. 2. The Second Circuit Court in this case denied the FamousMark Doctrine under the Federal Law claim the claim under the Lanham Act. 1) The Court acknowledges that a persuasive policy argument can be advanced in support of the famous marks doctrine. The fact that a doctrine may promote sound policy, however, is not a sufficient ground for its judicial recognition, particularly in an area regulated by statute. 2) Any policy arguments in favor of the famous marks doctrine must be submitted to Congress for it to determine whether and under what circumstance to accord federal recognition to such an exception to the basic principle of territoriality. 3. Three different standards for Famous-Mark Doctrine (Common Law Claim) 1) Secondary meaning (New York) 2) Secondary meaning PLUS (the Nine Circuit Court in Grupo Gigante v. Dallo) 3) the high standard of recognition established by section 43(c) of the Lanham Act, the federal anti-dilution statute. 4. WIPOs factors considered for Well-Known Marks 1) The degree of knowledge or recognition of the mark in the relevant sector of the public 2) The duration, extent and geographical area of any use of the mark 3) The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies 4) The duration and geographical area of any registration, and/or any application for registration, of the mark, to the extent that they reflect use or recognition of the mark 5) The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was
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recognized as well known by competent authorities 6) The value associated with the mark d. Empresa Cubana Del Tabaco v. Culbro, 587 F. Supp. 2d 622 (S.D.N.Y 2008) . 1. Facts: Cuban company manufactures Cigars called COHIBA. It has never been sold to the U.S. because of Cuban embargo. General Cigar, U.S. company, used the name COHIBA for its cigars. 2. Under Section 43(a) of Lanham Act (Federal Claim), it was denied because such a claim was barred by the federal regulations implementing the Cuban embargo. (Cuban Asserts Control Regulations) 3. Under New York unfair competition Law 1) the NY Court put forward only two elements - Appropriation - Evidence that the relevant consumer market primarily associates the mark with the foreign products. 2) The proof of intentional copying, without more, is sufficient to satisfy the first prong of the misappropriation test. 3) In this case, even if the record did not demonstrate that General Cigar believed they did not own the COHIBA mark, this record is sufficient to prove that General Cigar deliberately copied the COHIBA mark.

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VIII. Trademark Infringement A. Trademark Infringement under Lanham Act a. Lanham Act, 15 U.S.C. 1114(1)(A) 1. It provides that the registrant may enjoin only that concurrent use which creates a likelihood of public confusion as to the origin of the products in connection with which the marks are used 2. Apply to registered trademark rights 3. Sometimes labeled as a trademark infringement cause of action b. Lanham Act, 15 U.S.C. 1125(a)(1)(A) 1. 1125(a)(1) prohibits a person from using in commerce any term or false designation of origin which is likely to cause confusionas to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. 2. Likelihood of Confusion 1) Affiliation, Connection or Association with another person 2) Origin, Sponsorship, or Approval of goods or services by another person 3. Cover infringement of unregistered trademark 4. Sometimes labeled as a common law trademark infringement, unregistered trademark infringement, false
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designation of origin cause of action, or even unfair competition. c. As a practical matter, owners of registered rights frequently plead causes of action under 1114(1)(A) and 1125(a)(1) in the alternative. B. Actionable Use Prerequisite a. Holiday Inns, Inc. v. 800 Reservation, Inc, 86 F.3d 619 (6th Cir. 1996) 1. Facts: Defendants, a consulting firm, a hotel reservation firm, and a travel agency, utilized a telephone number that Plaintiff, a hotel chain operator (1-800-HOLIDAY instead of pressing 6, the customers dialed ZERO, therefore callers ended up calling the Ds) alleged infringed upon its trademark and constituted unfair competition in violation of the Lanham Act, 15 U.S.C.S. 1114 and 1125. (Holiday Inn had 1-800HOLIDAY, the D had 1-800-H0LIDAY .) 2. District Court: No actual use in commerce. No actual use of market itself. The defendant did not use the phone number to create the confusion, but took advantage of the existing consumer confusion caused by misdialed telephone number. 3. Six Circuit Court 1) Using phone number is not using trademark. - The defendants use of a protected mark or their use of misleading representation is a prerequisite to the finding of trademark violation. However, here, the defendant never used or advertised the vanity telephone number or any of Holiday Inns marks. 2) Defendant never engaged in unauthorized use in commerce, never broke the law. - never advertised anything that had Holiday Inn in it - also said directly to the customers that they werent affiliated with Holiday Inn - made it clear that HOLIDAYS ZERO was 6, instead of ZERO 4. Defendants (consulting firm) didnt put anything in commerce that capitalized on the Ps (hotel Holiday Inn) trademark and make an unauthorized use in commerce.
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b. 1-800 Contact v. Whenu.com, 414 F.3d 400 (2d Cir. 2005) 1. Facts: Facts: When people key a search term on Whenu.com, Whenu.com has software to recognize that term and selects an advertisement, which is from the corresponding product or service category to the users computer as a pop-up advertisement. Whether the user's computer should receive a pop-up or pop-under advertisement in a WhenU-branded window that is selected at random from defendant's advertising clients that match the category of the user's activity. Unlike some other pop-up providers, however, defendant did not sell URLs to its advertisers, and it did not guarantee to any advertiser that its ad will be shown when a user visits a particular site. 2. The Second Circuit Court held for Whenu.com. The defendant did not used plaintiff's registered trademark under the Lanham Act's definition of "use." 3. Internal Use: Use plaintiffs URL, 1-800Contact.com, in an "unpublished directory of terms that trigger delivery of WhenU's contextually relevant advertising to computer users" did not constitute use in the traditional infringement. 1) WhenU did not place plaintiff's trademark on any of its goods or services in order to pass them off 2) The differences between plaintiff's trademark and its URL as "used" by defendants in its directory were "quite significant" because it transformed plaintiff's mark into a word combination that functions more or less like a public key to plaintiff's website 3) WhenU reproduced plaintiff's URL only in its proprietary directory 4) Although WhenU's directory was on a computer user's directory, it was inaccessible to both computer users and the general public 5) A computer user could not trigger a WhenU pop-up ad by inputting plaintiff's mark or accessing a web page bearing the mark; this could be done only if WhenU put plaintiff's actual mark in its directory, which it did not, and 6) WhenU neither disclosed its proprietary directory to its advertising customers nor allowed them to purchase
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specific keywords and add them to the directory. 4. Pop-up Ads: The placement of branded pop-up ads on a user's screen contemporaneously with plaintiff's website or a list of search results resulting from a search for plaintiff's URL did not constitute "use." 1) WhenU's pop-up ads did not display plaintiff's mark, 2) WhenU's ads appeared in a separate window that was prominently branded with the WhenU mark and thus had "absolutely no tangible effect on the appearance or functionality of plaintiff's website 3) The appearance of WhenU's pop-up ad was not contingent upon or related to plaintiff's trademark, the trademark's appearance on plaintiff's website, or the mark's similarity to plaintiff's website address 4) Pop-up ads could also be triggered by other terms in the directory such as "contacts" or "eye care c. Resure.com v. Google, 562 F.3d 123 (2d Cir. 2009) 1. Facts: Google sold Rescuecom to plaintiffs competitors as a keyword that triggers the appearance of links to their websites among the search results when entering Rescuecom in a Google search. 2. Whether Googles use of Rescumecoms mark was a use in commerce (actionable use)? 3. Holding: Yes. Googles use of Rescumecom was a use in commerce (actionable use). 4. 1800 case v. Google case 1) Use the Trademark term - In 1800, the defendant not using the exact trademark term to generate the pop-up ad. - Google used Rescumecoms trademark term to generate the pop-up ad. 2) Display, Offer, or Sell Trademark Term - In 1800, the defendant did not display, offer, much less sell, trademarks as search terms to its advertises. - In Google, Google displays, offers, and sells Rescuecoms mark to Googles advertising customers. 3) Windows - In 1800, Pop-up ad is generated on another window,
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not including the main frame the internet user searched. - In Google, Pop-up ad is generated in the main frame the interest user searched. 4) Recommendation - In 1800, the defendant did not recommend any trademark name to its customers. - In Google, the defendant recommended and sold the Rescuecoms trademark name to its customers. 5. Regardless of whether Googles use of Rescuecoms mark in its internal search algorithm could constitute an actionable trademark use, Googles recommendation and sale of Rescuecoms mark to its advertising customers are not internal uses. Its commercial use. d. Bosley Medical v. Kremer, 403 F.3d 672 (9th cir. 2005) 1. Facts: The defendant registered to domain names, bosleymedical.com and bosleymedicalviolations.com to criticize the plaintiff, Bosley Medical, as an unsatisfied customer. Both sites prominently disclaimed any affiliation with plaintiff and provided a link to plaintiff's website. In smaller print on the sites, defendant stated that his sites were "non-profit" and "non-commercial." Plaintiff filed this action alleging cybersquatting, infringement, dilution, and unfair competition under the Lanham Act. 2. The Ninth Circuit held for the defendant. Kremers use is not commerce use. 3. Rationale 1) No Commercial Link: Kremer's site had no commercial links. When Kremers sites contained links to a discussion group that in turn contained advertising, this roundabout path to the advertising of others is too attenuated to render Kremer's site commercial. 2) No extortion scheme to profit from Bosley's mark: no evidence that Kremer was trying to sell the domain name. Although Kremer's letter threatened to expose negative information about Bosley on the Internet, it made no references to "ransoming" Bosley's mark or even using it as a domain name.
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3) No Prevention of Internet users from obtaining Bosley's services: appropriate was "whether Kremer offers competing services to the public." Here, however, Kremer was not Bosley's competition but rather a critic of Bosley, i.e., Kremer used Bosley's mark "in connection with the expression of his opinion about Bosley's goods and services." 4. The dangers that the Lanham Act was designed to address are simply not at issue here. Specifically, consumers cannot mistakenly purchase a competing product from Kremer believing it to be from Kremer, and Kremer is not capitalizing on the goodwill of Bosley's mark. Because Kremer's criticism of Bosley is not a harm the Lanham Act was designed to address, Bosley cannot use the Lanham Act either as a shield from Kremer's criticism, or as a sword to shut Kremer up. C. Likelihood of Confusion Factors and Analysis a. Different jurisdictions have slight different factors to consider the likelihood of confusion. However, overall, all includes as factors 1. The alleged infringers intent 2. Actual confusion 3. A variety of factors that might be lumped together as market factors. b. 8 factors to consider likelihood of confusion Six Circuit Frischs Factors 1. Strength of the Mark (Abercrombie), commercial distinctiveness (inherent AND acquired) & extent of 3rd party use 2. Relatedness of Goods 1) dont need direct competition anymore 3. Similarity of Mark 1) look at the overall context of mark, as encountered by potential consumers, not really considering the general public 2) Three factors may consider - Sign - Sound
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- Meaning 4. Actual Confusion 1) actual person who is confused (However, its person by person) 2) survey it is to indicate the confusion (circumstantial evidence), but not to prove confusion itself. 3) Evidence for actual confusion: Somebody returned some things to the store which are not sold by us. 5. Marketing Channels Used hotly contested 1) how to sell and advertise the products 2) In Big Dog, a motorcycle manufacturer marketed its products exclusively to motorcycle enthusiasts via its showroom and licensed dealership, though it also advertised its promotional products through a website. An apparel maker marketed its products to the general public through retail stores in malls, mail-order catalogs, and a website. These pronounced differences in the channels of trade weighed heavily against a determination of likely confusion. 6. Likely Degree of Purchaser Care (Sophistication of Consumers) 1) Need also to consider what customers you deal with? professional buyer? 7. Intent of D in Selecting Mark 1) Whether choosing this mark to confuse people? 8. Likelihood of Ps Expansion in Product Lines used in the Mark 1) Ps bridging of gap c. Similarity of Mark 1. Whether the factor of similarity alone can be enough to decide the likelihood of confusion? 1) In Top Tobacco v. North Atlantic, 509 F.3d 380 (7th Cir. 2007), Judge Easterbrook simply stated this is no way the consumers would be confused because of no similarity between two packages of two cans. 2. Frequently, courts recite the triad of sight, sound, and meaning to reflect these possible variations. 3. Anti-Dissection Rule
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1) Prohibiting dissecting a mark into component parts for purposes of analyzing the similarity factors. 4. USTPO also take looks similarity with foreign marks when examining trademark application. 5. Relationship between similarity of the marks and relatedness of goods: When marks would appears on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines. d. Strength of Mark 1. Two kind of strengths 1) Conceptual Strength - High distinctive, such as marks categorized as arbitrary or fanciful. 2) Market Strength - Mark enjoys widespread recognition in the marketplace 2. Strength to Whom: 1) Strength to customers and potential customers? Strength to general consuming public? 2) Prof.: Look for the customers on both sides of parties e. Intent Factor 1. Whether the intent is required for proving likelihood of confusion or merely a factor for showing likelihood of confusion? 1) If intent is merely a factor, plaintiff could theoretically prove infringement without any evidence whatsoever of defendants intent to confuse. Indeed, plaintiff could presumably prove infringement even in the face of defendants well-evidenced subjective good faith. 2. Prof.: Intent is a strong factor. Otherwise, why the accused party (defendant) used the same or similar to the accusing party (plaintiff) f. Buyer Sophistication 1. Reasonable Prudent Purchaser 1) Courts frequently use the price of the goods or services as a proxy for the level of prudence that the reasonably prudent purchaser is attributed in any given case. Courts assume
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A greater level of prudence and care where the goods are expensive - A lower level of care where the goods are inexpensive and/or are marketed for impulse purchases. 2. For professional buyers, courts generally assume that professional buyers are more knowledgeable and better able to discriminate among supplier, thus reducing the likelihood of confusion for any given purchase. g. Actual Confusion factors 1. In some jurisdiction, if no actual confusion, no remedy. 2. Survey is circumstantial evidence, not direct evidence. 1) Ever-Ready format (Starbucks v. Ruben Starbuck case) - Open-ended questions without leading. - Only shows the defendants name or mark to the people in the survey, and see whether they associate these name or mark with others. - Ever-Ready survey format is appropriate for marks that are highly accessible in a consumers memory, such as strong marks. 2) Squirt survey - The survey makes the plaintiffs mark available to survey respondents as part of the survey questionnaire. - Squirt survey may be more appropriate for weaker marks. 3. Courts have considered confusion levels even as low as 8.5% percent to constitute good evidence of confusion, and a number of courts would consider a 15 percent level to be strongly indicative of confusion. D. Virgin Enterprises Ltd v. Nawab, 335 F.3d 141 (2d Cir. 2003) a. Facts: Facts: Plaintiff VIRGIN which has a mark: VIRGIN + logo, sells computers and electronic apparatus. Virgin alleged that Defendant individuals and companies (collectively, company; mark: VIRGIN Wireless) infringed the Ps in its registered mark VIRGIN by operating retail stores selling wireless telephones and related accessories and services under the trade name
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VIRGIN WIRELESS. b. The court held for Virgin. c. VIRGIN was strongly favored by 1. the strength of its mark, both inherent and acquired 2. the similarity of the marks 3. the proximity of the products and services 4. the likelihood that the owner would bridge the gap 5. the existence of actual confusion. d. The factor of sophistication of consumers was neutral e. Conclusion: None of the factors favored the company/wireless telephone company. The overall assessment admitted only of a finding in the owner's favor that the defendant company's sale of telephones and related services under the mark was likely to cause substantial consumer confusion. The court also concluded that the owner could not be chargeable with laches, given the district court's finding that the owner learned of the company's use of the name only two days before instituting this action. f. Here, the court did not mention the defendants intent. 1. In the circumstance here, it may not really matter whether D intended to confuse the customers or not E. McDonalds Corp v. Druck and Gerner, 814 F. Supp. 1127 (N.D.N.Y 1993) . a. Facts: Plaintiff, McDonalds, sought to permanently enjoin Defendants McDental, neon light menu of dental services, from further use of "McDental" because of alleging trademark infringement. b. The court held for McDonald to grant permanent injunction. c. Rationale 1. Family Mark 1) Mc + generic terms 2) To prove that a mark family exists, a mark owner must show that it owns a group of marks having a recognizable common feature - The group of marks is used and promoted together in such a way that the public associates the common feature with the mark
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owner - The common feature is distinctive 2. Likelihood of Confusion 1) Strength of the Mark: McDonalds family of marks is a strong one. 2) Evidence of Confusion: 30% of the population surveyed associated Defendants name with Plaintiff. 3) Similarity between the Two Marks: Mc mark is obvious. 4) Likelihood for plaintiff to bridge the Gap: the court declined to find that Plaintiff is likely to bridge the gap to develop dental business. 5) Defendants Intent: Defendants thinks McDental is a cute name. The court does not buy this explanation and think it defy common sense and credibility. The court stated that the defendants were fully cognizant of the names similarity to McDonalds and chose to capitalize on Plaintiffs popularity. The good faith factor weight in favor of plaintiff. d. How to reconcile Anti-Dissection Rule and Family Mark F. Libman Company v. Vining Industries, 69 F.3d 1360 (7th Cir. 1995) a. Facts: Plaintiff manufactures and sells brooms, which are striped bristles with different colors. Defendant is a manufacturer and sales of brooms, which are striped bristles with shady green. The plaintiffs brooms are trademarked and the plaintiff brought suit against the defendant for infringement of a trademark on a broom. b. The court held for the defendant. c. Insufficient evidence of consumer confusion to support the verdict 1. The plaintiffs trademark is a thin one since adding a colored striped is hardly a distinctive way of marketing a product. 2. The two brooms are not packaged alike and do not have similar names. 3. The appearance of the brooms in advertising was dissimilar. 4. The court found no evidence of bad faith on the part of defendant to confuse consumers as to source.
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d. Confusion at the Point of Sale and after sale (Post-Purchase) 1. The consumers would not be confused at the point of sale. 2. Plaintiff offered no evidence that consumers might become confused as to source post-purchase, which would carry over to future purchases. G. Private-Label Goods a. Private label goods those manufactured or provided by one company for offer under another company's brand. b. For example, Ansehl manufacture location called VENTURE sold through Venture stores. c. For, private-label goods, the likelihood confusion still apply. H. Promotional Goods a. Boston Professional Hockey Association v. Dallas Cap & Emblem, 510 F.2d 1004 (5th Cir. 1975) 1. Facts: The defendant manufactured and sold the emblems depicting the plaintiffs mark without licensing and authorization. 1) The difficulty in this question is a reproduction of the trademark itself is being sold, unattached to any other goods or service. The statutory and case law of trademarks is oriented toward the use of such marks to sell something other than the mark itself. 2. The defendant here is substantial duplications of the marks without plaintiff's consent and sold in the commerce. The issue here is whether the symbols are used in connection with the sale of goods and whether such use is likely to cause confusion, mistake or deception. 3. The court held for the plaintiff. 4. The entire emblems covered by the mark are the product themselves 1) The defendant is in the business of manufacturing and marketing emblems for wearing apparel. 2) These emblems are the products, or goods, which defendant sells. 3) The fact that the symbol covers the entire face of defendants product does not alter the fact that the
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trademark symbol is used in connection with the sale of the product. 4) The conclusion is inescapable that, with plaintiffs marks, defendant would not have a market for his particular product among ice hockey fans desiring to purchase emblems embroidered with the symbols of their favorite teams. 5. Likelihood of Confusion 1) The confusion question here is conceptually difficult. - It can be said that the public buyer knew that the emblems portrayed the teams symbols. 2) The confusion or deceit requirement is met by the fact that the defendant duplicated the protected trademarks and sold them to public knowing that the public would identify them as being the teams trademarks. The certain knowledge of the buyer that the source and origin of the trademark symbols were in plaintiff satisfies the requirement of the act. 3) The trademark, originated by the team, is the triggering mechanism for the sale of the emblems. 6. The holding is against free-riding. I. Initial Interest Confusion, Reverse Confusion, Post-Sale Confusion a. Initial Interest Confusion 1. When buying the products, the consumers are not confused anymore even if the consumers were confused initially. 2. Playboy v. Netscape, 354 F.3d 1020 (9th Cir. 2004) Confusion Case regarding Search Engine 1) Facts: Netscape key various adult entertainment advertisements to a group of over 450 terms related to adult entertainment, including the terms playboy and playmate. - Keying allows advertisers to target individuals with certain interests by linking advertisements to preidentified terms. 2) Issue: Whether PEI has shown that a genuine issue of material fact exists regarding the likelihood of consumer confusion resulting from Netscapes use of PEIs marks?
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(Whether the initial confusion avoids the requirement of confusion under Trademark law.) - Economic justification: saving consumers time 3) The court held reversed the summary judgment granted for the defendant and remanded it back to the district court. 4) Initial Confusion - Because banner advertisements appear immediately after users type in PEIs marks, PEI asserts that users are likely to be confused regarding the sponsorship of unlabeled banner advertisements. - Many of the advertisements instruct users to click here. Because of their confusion, users may follow the instruction, believing they will be connected to a PEI cite. Even if they realized immediately upon accessing the competitors site that they have reached a site wholly unrelated to PEIs, the damage has been done: the competitor will still have gained a customer by appropriating the goodwill that PEI has developed in its mark. 5) Three Factors of Confusion are considered in this case - Similarity of Mark - Intent: Netscapes intent to confuse and capitalize. Probably is the most important factors in initial confusion case. - Actual Confusion Survey Consumers click the advertisement 3. In Australian Gold v. Hatfield, 436 F.3d 1228, it states three harm caused by initial confusion 1) The original diversion of the prospective customers interest to a source that he or she erroneously believes a authorized 2) The potential consequent effect of that diversion on the customers ultimate decision whether to purchase caused by an erroneous impression that two sources of a product may be associated
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3) The initial credibility that the would-be buyer may accord to the infringers products-customer consideration that otherwise may be unwarranted and that may be built on the strength of the protected mark, reputation and good will. 4. Gibson Guitar v. Paul Reed Smith Guitar, 423 F.3d 539 (6th Cir. 2005) 1) Facts: The defendant sold guitars look like one of model the plaintiff sold (solid body and single cutaway). 2) The court held for the defendant. No initial confusion applied in this case. 3) Initial confusion determination - One circuit: Whether the defendants use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties - Another circuit: Whether the consumer might be misled about the source of the relevant product or service. 4) The court held that initial-interest confusion cannot substitute for point-of-sale confusion on the facts of this case. 5) Where product shapes themselves are trademarked, initial confusion theory would prevent competitors from producing even dissimilar products which might appear, from the far end of an aisle in a warehouse store, somewhat similar to a trademarked shape. b. Post-Sale Confusion 1. Ferrari v. Roberts, 944 F.2d 1235 (6th Cir. 1991) 1) Facts: Ferrari produced Testarossa, and Roberts manufactured fiberglass kits that replicate the exterior features of Ferrari. Ferrari brought an action against Roberts for trademark infringement in connection with Ds sale of replicas of Ps sports cars. 2) The court held for Ferrari, and affirmed the judgment awarding injunctive relief for Ferrari. - The intentional copying by D of Ps automobile design, which had secondary meaning, created a likelihood of
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confusion. 3) Rationale - Ps automobiles had acquired secondary meaning in the minds of the buying public (confusion on the part of the 3rd party) - Likelihood of confusion based on Ds intentional copying of Ps design. - Unique exterior design and shape of Ps vehicles were their "mark" or "trade dress" which distinguished the vehicles' exterior shapes as more than distinctively attractive designs. - Defendant's admission that he intentionally copied plaintiff's design, along with other evidence, amounted to abundant evidence that the exterior design features of the plaintiff's vehicles were "trade dress" which had acquired secondary meaning. 2. Harm caused by post-sale confusion 1) Public could be deceived 2) Original purchase may be harm because of the value of the products they bought decrease. 3) Original manufacture may decrease investment, and then qualify of the product may be reduced in order to compete. 4) The original manufactures reputation for quality may be damaged if individuals mistake an inferior counterfeit for the original. 5) The original manufacturers reputation for rarity may be harmed by the influx of knockoffs onto the market 6) The original manufacturer may be harmed if sales decline due to the publics fear that what they are purchasing may not be the original. c. Reverse Confusion 1. What is Reverse Confusion? Senior user is SMALL, and the junior user is BIG. Public comes to assume that the senior users products are really the junior users or that the former has become somehow connected to the latter.the senior loses the value of the TM, its product identity, corporate identity, control over its goodwill and reputation, and ability
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to move into new markets. 2. A&H Sportswear v. Victorias Secret Store, 1) Facts: Miraclesuit is the senior user for control swimwear. Victorias secret use the name THE MIRACLE BRA later. Victoria Secrets had incorporated its bra into swimsuits by using MIRACLE BRA. A&H sued. 2) The district court held that had failed to show by a preponderance of the evidence that Ds miracle bra swimwear mark created a likelihood of either direct or reverse confusion with the Miraclesuit product. 3) The appellate court affirmed the district court's judgment for defendant on the direct confusion claim but vacated the judgment with respect to the reverse confusion claim. - The district court erred in requiring a threshold "economic disparity" between plaintiff and defendant before considering the reverse confusion claim. 4) Factors to consider reverse confusion - Similarity of the marks Look at sight, sound and meaning. - Strength of the mark In direct confusion claim, a plaintiff with a commercially strong mark is more likely to prevail than a plaintiff with a commercially weak mark. In a reverse confusion claim, a plaintiff with a commercially weak mark is more likely to prevail than a plaintiff with a stranger mark. - The intent of the defendant In the direct confusion, the intent of the defendant is relevant In reverse confusion, intent to confuse is unlikely to be represented. - Actual confusion In a reverse confusion, evidence of actual confusion would be as important as in a direct confusion. The consumers thought the products or the plaintiff were the products of the defendant. Whether the senior users good would be mistaken as junior users.
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Evidence The party has good return from the other. 5) The district court held that had failed to show by a preponderance of the evidence that Ds miracle bra swimwear mark created a likelihood of either direct or reverse confusion with the Miraclesuit product. 6) The appellate court affirmed the district court's judgment for defendant on the direct confusion claim but vacated the judgment with respect to the reverse confusion claim.

J. Indirect and Vicarious Theories of Infringement Liability a. Contributory or Vicarious liability 1. Inducement liability? b. Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 (1982) 1. Facts: Plaintiff manufactured and marketed the patented prescription drug cyclandelate to wholesalers, retail pharmacists, and hospitals in colored capsules under the registered trademark CYCLOSPASMOL. After plaintiff's patent expired, several generic drug manufacturers, including petitioner manufacturers, began marketing the drug, intentionally copying the appearance of the CYCLOSPASMOL capsules. Plaintiff then brought an action against manufacturers in Federal District Court under 32 of the Trademark Act of 1946, alleging that some pharmacists had dispensed generic drugs mislabeled as CYCLOSPASMOL and that defendant' use of look-alike capsules and catalog entries comparing prices and revealing the colors of generic capsules contributed to the pharmacists' mislabeling. 2. The Court held for the defendant. 3. No Conspiracy or Suggestion 1) Although the pharmacists could be held liable for mislabeling the drugs, there was no evidence that petitioners conspired with the pharmacists or suggested the pharmacists mislabel the drugs. 4. No Inducement or Knowledge 1) No sufficient fact shows that petitioners had intentionally induced the pharmacists to mislabel generic drugs or
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continued to supply cyclandelate to pharmacists who the petitioners knew or should have known (have reason to know) were mislabeling generic drugs. 2) Need Specific Intent 5. Because the trial court's findings concerning the significance of the instances of mislabeling were not clearly erroneous, they should not have been disturbed by the lower appellate court. The lower appellate court was not entitled simply to disregard the trial court's finding of functionality. c. Tiffany v. eBay, 600 F.3d 93 (2d Cir. 2010) 1. Facts: Customers can buy faked Tiffanys necklace by spending hundreds dollars on eBay. Tiffany sued eBay indirectly liability. 1) eBays defense: eBays defense is that they did their best effort to investigate counterfeit. 2. The court held for eBay. 3. Intent element for contributory liability 1) To establish eBays contributory liability, Tiffany would have to show that the eBay knew or had reason to know of specific instance of actual infringement. 2) For contributory trademark infringement liability to lie, a service provider must have more than a general or reasons to know that its service is being used to sell counterfeit goods. - Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary. 4. Willful Blindness 1) A service provider is not permitted willful blindness. Willful blindness is equivalent to actual knowledge for purposes of the Lanham Act. 2) When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself form learning of the particular infringing transaction by looking the other way. 3) However, here, eBay at most has general knowledge that counterfeit Tiffany products were listed and sold through its website. No more than that.
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IX. Trademark Dilution A. Introduction a. Essentially, its a cause of action to help people to help protect their strong marks when theres no likelihood of confusion b. Inherent dangers for such seemingly broad protection, so that is why there are statutory defenses for a dilution cause of action c. Note: the old statute required a showing by SCOTUS that the use resulted in actual dilution 1. This was found in circumstantial evidence, such as consumer surveys thus, it was not easy to quantify dilution in the mark d. One justification behind dilution claims 1. Rising consumer search costs B. Dilution Trademark Dilution Revision Act (TDRA) sec. 43(c) (15 USC 1225(c)) a. Dilution is premised on the principles of equity b. Requirements 1. Famous: if mark is widely recognized by the general consuming public 1) Can be famous, either through inherent or acquired distinctiveness
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c.

d.

e. f.

2) Four factors to determine whether famous 3) Bottom line, courts will determine themselves whether mark is famous 2. Timeline: the mark must be famous by the time dilution begins 3. Dilution 1) Blurring 2) Tarnishment: harm or tend to harm reputation of famous mark There are six blurring factors 1. Degree of similarity between marks 2. Degree of inherent or acquired distinctiveness of famous mark 3. Extent to which owner of the famous mark is engaging in substantially exclusive use of the mark 4. Degree of recognition of the famous mark 5. Whether the defendant user intended to create association with famous mark 6. Any actual association between marks Exclusions, aka non-actionable use 1. Fair use, including advertising/promotion that permits consumers to compare goods or services, and parodies, criticism, commentary, etc. (note very hard to justify commercial parody) 2. News reporting/commentary 3. Noncommercial use of mark If dilution is willful, then plaintiff can be entitled to damages (same as infringement) If defendant owns registration for mark, then defendant is protected from dilution claim.

C. Tarnishment a. Toys R Us v. Akkaoui, 40 U.S.P.Q 2d (N.D. Cal. 1996) 1. Toys R Us family of marks is famous been used continuously since the 60s, sold through local and national channels, and are inherently peculiar 2. Tarnishment: Adults R Us tarnished the R Us family of marks by associating them with a line of sexual products that
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are inconsistent with the images 3. In preliminary injunction cases, if plaintiff establishes strong likelihood that they will prevail on the merits of their dilution claim, then they also likely show that theyve been irreparably harmed b. Toys R Us v. Feinberg, 26 F. Supp. 2d 639 (S.D.N.Y 1998) . 1. Just based on the internet domain name, tarnishment was not likely 2. Additionally, there were different product areas, there was an absence of the R in the defendants mark, and the peculiarities of the domain names made association of Toys R Us products very unlikely 3. Defendant did not sell to general public outside of MA and was selling almost exclusively to firearms dealers D. Likelihood of Confusion V Secret Catalogue v. Moseley, 605 F.3d 382 (6th Cir. 2010) a. General rule: The standard for proving a dilution claim is likelihood of dilution and that both dilution by blurring and dilution by tarnishment are actionable 1. Unlike the old rule, no need to prove actual dilution b. Specific holding: There is a rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex related products is likely to tarnish a famous mark if there is a clear semantic association between the two 1. Reduce the burden for trademark holders who contest diluting users. c. The presumption/inference is overcome by evidence that rebuts the probability that some consumers will find the mark both offensive and harmful to the reputation and the favorable symbolism of the famous mark. E. Blurring Starbucks v. Wolfes Borough Coffee, 588 F.3d 97 (2nd Cir. 2009) a. Two marks 1. Starbucks (plaintiff) 2. Charbucks (defendant) b. Similarity between the marks
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1. The marks are minimally similar the packaging that contains the marks are very different 2. To the extent Charbucks is presented to the public, the dissimilarity is still present because its presented on its website, which is very different than Starbucks website 1) Starbucks has not identified any other methods by which Charbucks would be presented to public 3. Similarity need not be substantial it is only one of six factors c. Intent to associate mark 1. Good or bad faith is irrelevant only intent matters d. Evidence of actual association between the marks 1. Absence of actual confusion or likelihood of confusion doesnt undermine evidence of trademark dilution 2. Thus, even a poor showing of confusion evidence, in terms of surveys, may be sufficient as evidence of trademark dilution

X. Cybersquatting A. Anticyberquatting Consumer Protection Act of 1999 (A.C.P.A.) a. Incorporated to the Lanham Act Section 43(c) and (d) <15 U.S.C. 1125(d)>
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b. 1125(d): civil action against a person with a bad faith intent to profit from a mark who registers, traffics in, or uses a domain name that is 1. identical or confusingly similar to a mark, OR 2. identical, confusingly similar to, or dilutive of a famous mark c. Bad Faith factors Statutory list of bad faith factors 1. Is the trademark in the domain name? 2. Is the domain name is a persons legal name? 3. Has there been prior use in bona fide goods or services? 4. Is there bona fide noncommercial or fair use of the mark? 5. Is there an intent to divert consumers confusion, harm goodwill? 6. Is there an intent to sell for financial gain w/o using the domain for themselves including a pattern of such conduct 7. Was there false information given at registration? 8. Has the person registered many domain names which the person knows are identical or confusingly similar, or dilutive of famous marks of others that are famous 9. Is the incorporated mark distinctive and famous? d. Confusing by similar 1. Confusing by similar is not likelihood of confusion 2. Confusing by similar is in different level than likelihood of confusion. Just look at the name itself rather than consider other factors, such as products, market channel. e. In Rem jurisdiction 15 U.S.C. 1125(d)(2)(A) 1. The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name register, domain name registry, or other domain name authority that registered or assigned the domain name is located if 1) the domain name violate any right of the owner of a mark registered in the Patent and Trademark Office 2) the court finds that the owner is not able to obtain in personam jurisdiction over a person or through due diligence was not able to find a person. 2. In Rem jurisdiction depends on where the registrant locates f. Remedy: Injunction Relief g. Defense: If registrant believed and had reasonable grounds to
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believe that the use of the domain name was fair use or otherwise lawful B. Panavision Intl, L.P. v. Toppen, 141 F3d. 1316 (9th Cir. 1998) a. Facts: Panavision's sent a letter from CA to Toppen, the defendant (D), in IL informing him that Panavision held a trademark in the name Panavision and telling him to stop using that trademark and the domain name <Panavision.com>. D responded by mail to Panavision in CA, stating he had the right to use the name <Panavision.com> on the Internet as his domain name. D offered to "settle the matter" if Panavision would pay him $13,000 in exchange for the domain name. Additionally, D stated that if Panavision agreed to his offer, he would not "acquire any other Internet addresses which are alleged by Panavision Corporation to be its property. After Panavision refused Ds demand, he registered Panavision's other trademark as the domain name <Panaflex.com>. Ds web page for <Panaflex.com> simply displays the word "Hello." D has registered domain names for various other companies including Delta Airlines, Neiman Marcus, Eddie Bauer, Lufthansa, and over 100 other marks. D has attempted to "sell" these domain names for other trademarks. Panavision alleged claims for dilution of its trademark under the Federal Trademark Dilution Act of 1995, 15 U.S.C. 1125(c), and under the California Anti-dilution statute, California Business and Professions Code 14330. (This is pre-ACPA, UDRP) b. Holding: Toeppen diluted Panavisions marks within the meaning of the 15 U.S.C. 1125(c) and the California Antidilution statute. 1. Bad faith, exploitation 2. User confusion and discouragement c. Commerce Use: Toppens business is to register trademarks as domain names and then sell them to the rightful trademark owner. He acts as a spoiler, preventing Panavision and others from doing business on the Internet under their trademarked names unless they pay his fee. This is commercial use. d. Dilution
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1. A domain name is more than an address. A significant purpose of a domain name is to identify the entity that owns the web site. A customer who is unsure about a companys domain name will often guess that the domain name is also the companys name. A domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base. 2. Using companys name or trademark as a domain name is also the easiest way to locate that companys web site. Use of a search engine can turn up hundreds of web sites, and there is nothing equivalent to a phone book or directory assistance for the Internet. 3. Potential customers of Panavision will be discouraged if they cannot find its web page by typing in Panavision.com, but instead are forced to wade through hundreds of web sites. 4. Toeppens use of Panavision.com also puts Panavisions name and reputation at his mercy. C. Sportys Farm LLC v. Sportsmans Market, 202 F.3d 489 (2d. Cir. 2002) a. Facts: Plaintiff Omega, a mail order catalog company, that sells mainly scientific process measurement and control instruments. Omega had domain name sportys.com registered with NSI. Omega formed another wholly-owned subsidiary called Sportys Farm and sold it the rights to sportys.com for $16,200. Defendant Sportsman (TM sportys), a mail order catalog company, is quite well-known among pilots and aviation enthusiasts for selling products tailored to their needs. District Court found that Plaintiff violated the Federal Trademark Dilution Act (FTDA) and enjoined them from using the Internet domain name "sportys.com." The district court held that the Defendant's TM sportys TM was protected under the FTDA and diluted by Ps using the Internet domain name "sportys.com" to sell Christmas trees, which thereby prevented defendant from using its trademark as a domain name. b. Held: The court of appeals applied the new Anticybersquatting Consumer Protection Act (ACPA) and affirmed the judgment of the district court in all respects, but, given the new law, on
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different grounds. The court found that the "sporty's" mark was protected under the ACPA, and that there was more than enough evidence of "bad faith intent to profit" on the part of plaintiff so that no reasonable factfinder could return a verdict against defendant. Accordingly, the judgment of the district court was affirmed. D. Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) First Amendment/Criticize a. Facts: Reverned Falwell is a nationally known minister who has been active as a commentator on politics and public affairs. Lamparello registered the domain name www.fallwell.com. The site contained in-deapth criticism of Reverend Falwells views. The homepage stated This website is not affiliated with Jerry Falwell or his ministry and if you would like to visit Rev. Falwells website you may click here. b. The court held for Lamparello. c. Lamparellos website is not intent to profit. Rather, its just a forum to criticize. Lamparello lacked a bad faith intent to profit by the use of the domain name. d. No likelihood confusion as to source or affiliation. 1. The homepage stated This website is not affiliated with Jerry Falwell or his ministry and if you would like to visit Rev. Falwells website you may click here. e. Lamparello has no intent to transfer, sell, or otherwise assign the domain name to Reverend Falwell or any third party for financial gain. f. Similar to fair use defense. E. Harrods v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002) the scope of in rem provision a. A London store (Plaintiff) sued 60 internet domain names for trademark infringement under the ACPA. The domain names had been registered by a Buenos Aries store (Defendant) with the same name as the London store, and the domain names all contained some form of the name. Both stores had legitimate rights to use the name in different parts of the world. b. 15 U.S.C.S. 1125(d)(2) provides for in rem jurisdiction against
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dmain names for traditional dilution under 1114 and 1125(a) and (c) as well as for claims of bad faith registration with the intent to profit under 1125(d)(1). 1. The district court erred by dismissing the London store's infringement and dilution claims based on lack of jurisdiction. c. For the claim under 1125(d)(1), the court held that the district court properly found that 54 domain names were registered by the Buenos Aries store with a bad faith intent to profit because the evidence indicated that the Buenos Aries store intended to use the domain names to market its goods and services to nonSouth American customers in a manner calculated to divert and deceive consumers seeking to do business with the London store. The district court erred by granting summary judgment to six domain names as almost no discovery had been completed. F. ICANN (Internet Corporation for Assigned Names and Numbers) a. Introduction 1. ICANN (Internet Corporation for Assigned Names and Numbers) adopted the UDRP on October 24, 1999 2. Incorporated by contract into registration agreements for .com, .org, .net and some other domain names 1) Focus on regulating bad faith cybersquatting on trademarks 3. When violating the agreement, the domain name will be cancelled or transferred. b. Administrative Proceeding: You domain name has been registered AND is being used in bad faith. 1. Compare to A.C.P.A. 1125(d): civil action against a person with a bad faith intent to profit from a mark who registers, traffics in, OR uses a domain name c. World Wrestling Federation Entertainment v. Bosman 1. Facts: domain name is www.worldwrestlingfederation.com. And the register did not use this website. World Wrestling Federation filed a complaint to exercise administrative processing. 2. Held for the complaint 3. Complaint need prove the three elements 1) Whether the domain name is identical or confusingly
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similar to a trademark or service mark the complaint use - Here, the domain name is identical or confusingly similar to the trademark and service the complaint has. 2) The respondent has no legitimate interest in respect of the domain name - The respondent has no right or legitimate interest in respect of the domain name. 3) The domain name has been registered and used in bad faith - Registration: Respondent tried to sell the domain to the complaint three days later after registration. - Use: Respondent use the domain name in bad faith by showing that respondent offered to sell the domain name to complaint for valuable consideration in excess of any out-of-pocket costs directly related to the domain name (Using the domain by selling) d. Telstra v. Nuclear Marshmallows Bad Faith Issue 1. Facts: The respondent is the registrant of the domain name telstra.ort without doing anything on the website under this domain name or no contact with the complaint. Telstra Ltd., filed a complaint. 2. The bad faith issue: Passive holding of a domain name may also satisfy a bad faith requirement. 3. Factors to consider whether the bad faith requirement met or not when register only held the domain name without doing anything. 1) Strong reputation and of the trademark and widely known of the trademark. 2) No good faith evidence. 3) Active steps to conceal the true identity. 4) Provide or failed to correct false contract details, in breach of its registration agreement 4. In this case, the passive holding of the domain name is being used in bad faith by respondents. e. Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003) 1. Facts: Barcelona, a Delaware company and has a domain
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name Barcelona.om, sought a declaration judgment because the city, located in Spain, challenged the registrant's use of the domain name, invoking the Uniform Domain Name Dispute Resolution Policy to resolve the dispute. 2. District Court: The district court applied Spanish law rather than the U.S. law (Lanham Act). The district court held that the registrant's use of the name was confusingly similar to city's Spanish trademarks and that the registrant acted in bad faith. In addition, although the city had not filed a counterclaim, the district court stated that it was also deciding a counterclaim for relief under 15 U.S.C.S. 1125 and determined that the Spanish trademark was valid for purposes of the ACPA. 1) The registrant argued the court misapplied the Anticybersquatting Consumer Protection Act (ACPA) and that it was entitled to have its conduct judged under U.S. trademark law, that is, the Lanham Act. 3. The court of appeals reversed because the ACPA expressly required that the registrant's claim be decided under U.S. trademark law, not Spanish law, and the claim was valid under the Lanham Act. Moreover, because the city had never filed a counterclaim, it was error to grant relief as if the issue had been before the district court. 1) The judgment of the district court was reversed as to the registrant's claim, vacated as to the non-existent counterclaim, and remanded for further proceedings.

XI. Fair Use A. Introduction a. Affirmative defense to trademark 1. Defendants burden to prove the element b. Different kinds of Fair Use as defenses
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1. Descriptive use 1) Three elements - Non-trademark use - Descriptive manner - In good faith 2) Such as: Seal it With a Kiss to describe lipstick. 2. Nominative Use 1) Using others mark as a mark to identify your product 2) Requirement - That the product or service in question was one not readily identifiable without use of the trademark - That only so much of the mark or marks was used as was reasonably necessary to identify the product or service - That the users did nothing that that would suggest sponsorship or endorsement by the trademark holder 3. Parody/Speech B. Descriptive Use a. What constitute using a mark See JA Apparel v. Abbound 1. Use as a symbol to attract public attention 2. Taking into account the physical nature of the use in terms of size, location, and other characteristics in comparison with the appearance of other descriptive matter or other trademarks 3. Presence or absence of precautionary measures such as labeling or other devices designed to minimize the risk that the term will be understood in its trademark sense. b. KP Permanent Make-up v. Lasting Impression, 543 U.S. 111(2004) 1. Facts: The defendant used the term micro color to describe cosmetic makeup while MICROCOLOR is a plaintiffs trademark. 2. The Supreme Court held for the defendant. 3. A party raising the statutory affirmative defense of fair use to a claim of trademark infringement does not have a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services
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affected. 4. The burden of proving likelihood of confusion rests with the plaintiff even if the plaintiffs trademark is uncontestable. 5. Since the burden of proving likelihood of confusion rests with the plaintiff, and the fair use defendant has no freestanding need to show confusion unlikely, the Court recognizes that some possibility of consumer confusion is compatible with fair use. c. International Stamp Art v. US Postal Service, 456 F.3d 1270 (11th Cir. 2006) 1. Facts: U.S. Postal Service made Postal Service cards depicting the entire image of a stamp, which is the defendants perforated border mark. 2. The court held for the U.S. Post Office. 3. For good faith issue, the US Post Offices use of the mark as the only symbol reasonably available to indicate that the image on the card is meant to be a postage stamp, does not attempt to capitalize on consumer confusion or to appropriate the cachet of the mark holder, it fails to implicate to the source-identification function that is the purpose of trademark. C. Nominative Use a. R.G. Smith v. Chanel, 402 F.2d 562 (9th Cir. 1968) 1. Facts: The seller (Defendant) advertised a fragrance called "Second Chance" as a duplicate of the owner (Plaintiff) "Chanel No. 5." Defendants did not label their product Ta Ron Chanel No.5. AD suggested that a Blindfold Test be used on skeptical prospects, challenging them to detect any difference between a well known fragrance and the TaRon duplicate. One suggested challenge was We dare you to try to detect any difference between Chanel #5 (25.00) and TaRons 2nd Chance$7.00. The owners filed suit. 2. The court held for the defendant. 3. The seller's ad could not be enjoined under either the Lanham Act, 15 U.S.C.S. 1125(a), or the common law of unfair competition because it did not contain
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misrepresentations or create a reasonable likelihood that purchasers would be confused as to the source, identity, or sponsorship of appellants' product. 4. The owners' reputation was not directly at stake because the advertisement made it clear that the product the seller offered was his own, and if it proved to be inferior, the seller and not the owner of the trademark would bear the burden of consumer disapproval. 5. Analyze other factors 1) Sometimes theres no other way to describe product 2) Strong public interest in getting a cheaper product b. Century 21 Real Estate Corp. v. Lending Tree, Inc., 425 F.3d 211 (3d Cir. 2005) 1. Facts: Appellees, Century 21, Coldwell Banker and ERA ("CCE") complain that Appellant Lending Tree ("LT"), in the process of marketing its mortgage services, improperly referenced CCE's trademarked services. LT contends that its use was nominative and fair and permitted as a matter of law. 2. Holding: The Circuit Court reversed the district courts judgment for the plaintiff and remand. 3. For nominative use, the burden is on the plaintiff first. The four factors for test are 1) The price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; 2) The length of time the defendant has used the mark without evidence of actual confusion 3) The intent of the defendant in adopting the mark; and 4) The evidence of actual confusion. 4. Once plaintiff has met its burden of proving that confusion is likely, the burden then shifts to defendant to show that its nominative use of plaintiff's marks is nonetheless fair. A test for nominative fair use in which a court will pose three questions 1) Is the use of the plaintiff's mark necessary to describe both plaintiff's product or service and defendant's product or service?
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2) Is only so much of the plaintiff's mark used as is necessary to describe plaintiff's products or services? 3) Does the defendant's conduct or language reflect the true and accurate relationship between plaintiff and defendant's products or services? If each of these questions can be answered in the affirmative, the use will be considered a fair one, regardless of whether likelihood of confusion exists. 5. The defendant has no burden to show fairness until the plaintiff first shows confusion. Furthermore, by properly treating nominative fair use as an affirmative defense, our approach allows for the possibility that a district court could find a certain level of confusion, but still ultimately determine the use to be fair. c. Scott Fetzer v. House of Vacuums, 381 F.3d 477 (5th Cir. 2004) applying the decision of Century 21 Real Estate Corp. v. Lending Tree, Inc. 1. House of Vacuums who is not authorized KIRBY retailer sold reconditioned KIRBY vacuum cleaners. In Ads, House of Vacuums includes KIRBYs trademark in the list of the vacuums they sold. The Fifth Circuit stated that House of Vacuums truthful representation that it sold KIRBY vacuum cleaners should be analyzed as a matter of confusion, not as a matter of fair use, and the plaintiff had not even raised a fact issue as to confusion. D. Parody/Speech a. Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769 (8th Cir. 1994) 1. Facts: Facts: Balducci published a humor magazine which featured an advertisement for a fictitious product, "Michelob Oily." The ads states in bold type, ONE TASTE AND YOULL DIRNK IT ONLY immediately above MICHELOB ONLY The . plaintiff has registered trademarks Michelob, Michelob Dry, and ONE TASTE AND YOULL DRINK IT DRY 2. Holding: The court ruled for the plaintiff. 1) In deciding the reach of the Lanham Act in any case where an expressive work is alleged to infringe a
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trademark, it is appropriate to weigh the public interest in free expression against the public interest in avoiding consumer confusion." The Court held that because no measures were taken to insure that viewers adequately understood the work was an unauthorized editorial, Balducci's parody was likely to confuse consumers and thus fell subject to federal trademark law. 3. Consumer may be confused about the plaintiffs sponsorship with the defendants ads. 1) The survey shows that - Fifty-eight percent felt the creators "did have to get permission to use the Michelob name." Fifty-six percent believed permission would be required for the various symbols and logos. Six percent of the classified responses construed the Balducci ad to be an actual Anheuser-Busch advertisement. 2) Balancing the public interest and public confusion - Balducci's ad parody was likely to confuse consumers as to its origin, sponsorship or approval. This confusion might have to be tolerated if even plausibly necessary to achieve the desired commentary a question we need not decide. In this case, the confusion is wholly unnecessary to Balducci's stated purpose. By using an obvious disclaimer, positioning the parody in a lessconfusing location, altering the protected marks in a meaningful way, or doing some collection of the above, Balducci could have conveyed its message with substantially less risk of consumer confusion. b. Mattel v. MCA Records, 296 F.3d 894 (9th Cir. 2002) 1. Facts: from the 1997 Aqua song, "Barbie Girl". Mattel sued the band, saying they violated the Barbie trademark and turned Barbie into a sex object, referring to her as a "Blonde Bimbo. 2. The court held for MCA Records. 3. The Test of Rogers v. Grimaldi (Second Circuit) 1) The Lanham Act should be constructed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. 4. No Trademark Infringement 1) Judge Alex Kozinski ruled the song was protected as a
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parody under the trademark doctrine of nominative use and the First Amendment to the United States Constitution. 2) The use of Barbie in the song title clearly is relevant to the underlying work, namely the song itself. The song is about Barbie and the values Aqua claims she represents. Also, the song does not mislead the source, namely it does not explicitly or otherwise suggest that it was produced by Mattel. 5. No Dilution 1) It is artistic rather than commercial use c. E.S.S. Entertainment 2000 Inc. v. Rock Star Videos Inc., 547 F.3d 1095 (9th Cir. 2008) 1. Facts: Plaintiff E.S.S. Entertainment 2000, Inc. (ESS) operates a Los Angeles strip club called the Play Pen Gentlemens Club (PLAY PEN). Defendant Rock Star Videos, Inc. (Rock Star) manufactures and distributes the popular Grand Theft Auto video game series. Rock Stars San Andreas game allows a player to experience the gangster culture in fictional California towns, including Los Santos, which is based on Los Angeles. One such virtual strip club in the San Andreas game is the PIG PEN, which Rock Star loosely based on ESSs PLAY PEN club. 2. The court held for Rock Star Video, stating Rock Stars use of the plaintiffs mark is artistic use. 3. By using the First Amendment as defense, under Rogers v. Grimaldi, this test requires courts to construe the Lanham Act narrowly to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. 1) No artistic relevance to the underlying work whatsoever, or 2) If there is artistic relevance, only where the use explicitly misleads consumers regarding the source of the work. 4. Above Zero rule The test for artistic work 1) Whether a mark is artistically relevant to the work, could be satisfied so long as the relevance was above zero, providing a very low threshold for creators to meet. Should
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be No artistic relevance. Is more than zero, then this is artistic use. d. The difference between Parody and Satire 1. Parody: parody is an art form in which borrowing from the original is tolerated, because the art form requires that the parodist invoke the original for purposes of criticizing, commenting on, or poking fun at the original. In parody, the target is the original work. 2. Satire: Satire is an art form that may use others work as a vehicle to make a general social commentary or critique, where the original work may be used to draw attention to the satire, but is not the target of the commentary or critique. e. Louis Vuitton Malletier v. Haute Diggity, 507 F.3d 252 (4th Cir. 2007) 1. Facts: The defendant manufactured its product, dog toys, by mimicking LVs famous products in names and designs. 2. The court held for the defendant. 3. No infringement: the court held no trademark infringement even though LA is a strong mark, and similarity of LAs bag and the defendants dog toy. 1) Products are not similar 2) LV does not make dog toys and has no intent to make dog goys 3) No overlapping the product channel and marketing channel. 4) No actual confusion between LVs bags and Hautes dog toys. 4. No dilution 1) Its a parody, manufacturing dog toys by mimicking the LVs bag. 2) By making the famous mark an object of the parody, a successful parody might actually enhance the famous mark's distinctiveness by making it an icon. Therefore, it is not so similar as to be likely to impair the distinctiveness of LVM's famous marks.

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XII. First Sale Doctrine A. First-Sale tied in fair use. Applying when some sort of resell without authorizing the trademark owner. Two theories regarding First Sale Doctrine a. Implied license: When selling the product, the trademark owners also gave the buyer the implied license to resell the product with the trademark. b. Exhaustion: Upon the first authorized sale of the physical item, some or all of the intellectual property owners exclusionary rights vanish as applied to that physical item. B. Unlike Patent Law, Lanham Act include no explicit first sale doctrine. Under Patent Law, Selling abroad does not exhaust the patent right. C. Trademark Case Law First Sale Doctrine a. Repackaging Generally, the first sale doctrine applied. 1. Prestonettes v. Coty, 264 U.S. 359 (1924): 1) Facts: Prestonettes purchased Cotys powders and perfumes from authorized sources. Prestonettes rebottled and resold the perfumes. For powder, Prestonettes added binder and subjected the powders to pressure and sold the resulting products in a metal compact. 2) The court allows repacking as long as the manufacture is not identified with the inferior quality of the product resulting from wear and tear or the reconditioning by the dealer. Repacking does not really harm the trademark owner. - When the mark is used in a way that does not decive the public we see no such sanctity in the word as to prevent its being used to tell the truth. b. Refurbishing Refurbish the used product and then sell the refurbished products 1. Champion Spark Plug v. Sanders, 331 U.S. 125 (1947) 1) The defendant bought the used plaintiffs gulf ball, and refurbished these balls. Then resell the refurbished gulf ball with the plaintiffs trademark.
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2) The court held for the defendant. 3) Refurnishing and reselling the product with the plaintiffs is allowed as long as the defendants association with the inferior quality which would not be tied with the trademark owner. Therefore, the question would be whether the inferior would be tied with the trademark owner. 4) Here, inferiority is expected in most second-hand article. Therefore, inferiority is immaterial so long as the article is clearly and distinctively sold as repaired or reconditioned rather than as new. 2. Nitro Leisure Products v. Acushnet, 341 F.3d 1356 (Fed. Cir. 2003) 1) Facts: Nitro refurbished Acushnets used golf balls and sold them with the legend USED & FREFURBISHED BY SECOND CHANCE or USED AND REFURBISHED BY GOLF BALLSDIRECT.COM. 2) The second-hand dealers get some advantage from the trademark; however, the windfall is wholly permissible so long as the manufacturer is not identified with the inferior qualities of the product the dealer sells. 3) The tests regarding whether the manufacturer is not identified with the inferior qualities of the product applied focus on - the similarities and difference between the accused infringing goods and genuine trademark goods - the likelihood of confusion resulting from contemporaneous sales of those goods Whether the modifications made to the product resulted in a new product (The extent of the alterations) 4) Whether the modifications made to the product resulted in a new product (The extent of the alterations) - Nature and extent of the alternations - The nature of the device and how it is designed - Whether a market has developed for service or spare parts - Whether end users of the product are likely to be
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misled as to party responsible for the composition of the product 5) Acushnet has not presented sufficient evidence to support its claim that the golf balls are so extensively repaired that they cannot be truly labeled with the Titleist marks. The court made this judgment by considering - Performance by Nitro were not as extensive as claimed by Acushnet - Evidence of the use of disclaimer - Evidence from customers of both Acushnet and Nitro on the question of confusion. c. Gray products/Parallel imports 1. Purchasing a product abroad and resell the product in the U.S. with the trademark attached without authorization. 2. Standard of Quality Control in Gray Products case 1) Compared to domestically repackaging or refurbishing cases, for gray products case, it is not sufficient to satisfy quality control by only proving no inferior quality or defect. 2) Quality control includes procedure is established, legitimate, substantial. 3) Quality control is material to the product and constitute the material alteration to the product 3. How to control distribution of gray products? 1) Cause of Action: Interference with the contract between the trademark owner and authorized distributors torts claim 4. Gamut Trading v. USITC, 200 F.3d 775 (Fed. Cir. 1999) 1) Facts: The defendant imported used Japanese-model tractors with the Japanese manufacturers trademark to the U.S. The imported models are not sold in the U.S. and not attached with English instruction or warning. 2) The court held for the Japanese manufacturer, the trademark owner. 3) When there are material differences between the domestic product and the foreign product bearing the same mark, most of the courts that have considered
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the issue have excluded the gray goods, even when holders of the domestic and foreign trademarks are related companies, on grounds of both safeguarding the goodwill of the domestic enterprise, and protecting consumers from confusion or deception as to the quality and nature of the product bearing the mark. 4) Here the imported Japanese-model tractors and U.S.model tractors are difference on - Structure - English Label and Warning

XIII. False Advertising A. False Advertising a. Regulated by Section 43(a)(1)(B) 1. Commercial advertising or promotion 2. Misrepresents the nature, characteristics, qualities, or geographic origin of his/her or another persons goods, service, or commercial activities 3. Shall be liable in a civil action by any person who believes that he/she is or is likely to be damaged by such act b. Pre-Section 43(a)(1)(B): Requirements for False Advertising 1. False or misleading of statement of fact concerning about its own product or others property 2. Actually deceive or have the tendency to deceive a substantial segment of their audience 3. Statement is material, in that it is likely to influence the purchasing decision 4. Defendant caused its falsely advertised goods to enter interstate commerce
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5. Causing between the statement and harm of the plaintiff c. Standing 1. Reasonable interest to be protected against allegedly false or misleading advertising 2. Reasonable basis to believe the interest is like to be damaged by allegedly false or misleading advertising. B. Two kind of false advertisings a. Literally False claims 1. Literally false as a factual matter 2. No need to show the consumers deceive to establish the claim b. Implicitly False or Misleading claims 1. Claims that may literally true or ambiguous but which implicitly convey a false impression. 1) Misleading or not false on its face 2. Plaintiff need to prove the consumers deceive to establish the claim C. United Industries v. Clorox, 140 F.3d 1175 (8th Cir. 1998) a. Facts: Clorox manufactures and sells Combat, the top-selling brand of roach bait, while United Industries manufactures and sells the Maxattrax brand of roach bait, a small and relatively new participant in this market. The commercial at issue, entitled Side by Side by the ad. Firm that produced it, depicts a split-screen view of two roach bait products on two kitchen countertops. The lighting is dark. On the left, one sees the Maxattrax box; on the right, a generic Roach Bait box that is vaguely similar to the packaging of the Combat brand sold by Clorox. The statement in the advertising is Can you guess which bait kills roaches in 24 hours? b. Court held for United Industries. c. Literally False Claim 1. The ad here is not literally false. Scientist proved that United Industries products can kill cockroaches in 24 hours. d. Implicitly False or Misleading Claims 1. Evidence of consumer impact is essential. 1) Full-blown consumer surveys or market research are not
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an absolute prerequisite, and expert testimony or other evidence may at times be sufficient to obtain preliminary injunctive relief in cases involving implicitly false or misleading claims. 2. This is question of fact and remanded. D. Comparative superiority in the advertising a. My product is better than others 1. When challenging a claim of superiority that does not make express reference to testing, a plaintiff must prove that the defendants claim of superiority is actually false, not simply unproven or substantiated. b. Based on the test proof, my product is better others 1. Under a test prove claim, in which a defendant has buttressed a claim of superiority by attributing it to the results of scientific testing, a plaintiff must prove only that the tests relied upon were not sufficiently reliable to permit one to conclude with reasonable certainty that they established the proposition for what they were cited. E. Pizza Nut v. Papa Johns, 227 F.3d 489 (5th Cir. 2000) a. Facts: Papa Johns slogan Better Ingredients. Better Pizza. Pizza Hut sued for false advertising. b. Court held for Papa Johns. c. Better Ingredients. Better Pizza is just puffery. 1. Puffery as advertising that is not deceptive for no one would rely on its exaggerated claims. 2. Puffery as exaggerated advertising, blustering and boasting upon which no reasonable buyer would rely and it not actionable under 43(a) d. Puffery: not measurable and specific. 1. Less is More Puffery 2. 50% less mowing Not Puffery (Specific and Measurable) 3. Redesigned and Improved Puffery 4. The fastest commercial sort product in the world Not Puffery 5. Fastest Refund Loans Puffery
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F. Cashmere & Camel Hair Mfrs Inst. V. Saks Fifth Avenue, 284 F3d 302 (1st Cir. 2002) a. Facts: Defendant sold womens blazers with labeled as containing 70 percent wool, 20 percent nylon, and 10 percent cashmere. Also, said A luxurious Blend of Cashmere and Wool. However, the defendant used recycled Cashmere to manufacture womens blazers. b. The label is involved with quality and characteristic of product. c. The court held for the plaintiff. d. Materiality 1. The false or misleading advertising is likely to influence consumers purchasing decision. e. Consumer Deception 1. Intention of the defendant to deceive the public. Presumption that public has been deceived when defendant intended to deceive. f. Causation and Damage 1. Offering a cheaper product competing with the plaintiff in the same market of the same customers.

XIV. Right of Publicity A. The Concept of Right of Publicity a. The right of publicity has developed to protect the commercial interest of celebrities in their identities
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b. The theory of the right is that a celebrity's identity can be valuable in the promotion of products, and the celebrity has an interest that may be protected from the unauthorized commercial exploitation of that identity c. The famous have an exclusive legal right during life to control and profit from the commercial use of their name and personality B. Right of publicity originates from a Brandeis article that is based on the four privacy torts a. The right of privacy 1. Intrusion upon one's seclusion or solitude 2. Public disclosure of embarrassing private facts 3. Publicity which places one in a false light b. The right of publicity 1. Appropriation of one's name or likeness for the defendant's advantage C. Right of publicity claims were historically amorphous, but historically claims rely on three grounds a. Lanham Act 1. 43(a)(1)(A) False endorsement 2. 43(a)(1)(B) False advertisement b. Statute common law (Torts) c. State statutory 1. For example, state of Ohio. D. Two set of facts where Section 43(a) employed to protect personal identity a. Unwanted attribution (or Over-Attribution) where a persons ID is used without that persons permission for an unrelated product or service. However, the question here is: 1) what is the mark (the name or likeness of the celebrity); 2) what are the goods or services (the actual celebrity, celebritys renown)? 1. Two sections 43(a) theories might be asserted against unwanted attribution 1) Section 43(a)(1)(A): claim for Confusion or Passing off
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False Endorsement or False Association 2) Section 43(a)(1)(B): claim for False Advertising 2. 9th Circuit Likelihood of Confusion Test 1) In Waits v. Frito-Lay, in Frito-Lays advertisement, Tom Waits voice was mimicked. The 9th circuit held for Waits, and stated that court have recognized false endorsement claims brought by plaintiffs, including celebrities, for the unauthorized imitation of their distinctive attributes, where those attributes amount to an unregistered commercial trademark. Then the court asked jury to consider the likelihood of confusion for false endorsement. The court characterized Waits Section 43(a) theory as one of the false endorsement. 2) In Abdul-Jabbar v. GM, GM ran a TV advertisement, which did not obtain Lew Alcindors consent to use his name in the advertisement. The 9th Circuit court stated that there was at least a fact question for trail on the confusion issue under Section 43(a)(1)(A) False endorsement. 3. 2nd Circuit: follows a Deceptive Advertising theory 1) In King v. Innovation, Steven King was falsely associated with a movie, even though he just wrote a short story upon which movie was based, but was not involved in the movie at all. The 2nd Circuit borrowed the test of false advertising to analyze for over-attribution. Court held that the advertisement was false on its face, and therefore no evidence of confusion was required. 4. 6th Circuit: In ETW v. Jireh Publg, the 6th Circuit rejected professional golfer Tiger Woods claim to trademark rights in his likeness. In this case, limited reprints were made of an original that pictured Tiger Woods winning at Augusta National, which had the ghosts of the golf greats in the background; Tiger Woods sued artist under Lanham Act and state law. 6th Circuit rejected false endorsement claim because Tiger Woods didnt own a likeness of himself; images or likenesses cant be protected as trademarks because they dont identify and distinguish goods (as trademarks do) 5. Standing Problem: 1) For false advertising: In general rule, consumers lack
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standing to pursue Section 43(a)(1)(B) false advertising claims because Section 43(a) exists to prevent unfair competition among competitors, and consumers obviously are not in competition with advertisers. 2) For False Endorsement or False Association, that the parties be competitors in traditional sense is not required under Section 43(a)(1)(A) False Endorsement or False Association. - Such as Waits case and King case. b. False Under-Attribution (Misleading Omissions of Attribution) 1. Two Section 43(a) theories have traditionally been asserted 1) Section 43(a)(1)(A): Claim for Reverse Passing Off 2) Section 43(a)(1)(B): Claim for False Advertising 2. Passing off v. Reverse passing off 1) Passing off: passing off/palming off refers to the act in which a party seeks to represent that its own products actually originate with another by appropriating the others mark 2) Reverse passing off - Express reverse passing off: This is the opposite. party removes the name or trademark on another partys product and sells that product under a name chosen by the wrongdoer - Implied reverse passing off: accomplished by removing name of source and selling product in an unbranded state 3. 2nd Circuits test for reverse passing off; plaintiff must show 1) that the work at issue originated with a plaintiff 2) that the origin of the work was falsely designated by the defendant 3) that the false designation of origin was likely to cause consumer confusion; and 4) that the plaintiff was harmed by the defendants false designation of origin 4. Dastar v. Reverse Passing Off 1) In Dastar, the Supreme Court focused on origin, and stated that if origin refers only to the manufacturer or producer of the physical good that is made available to
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the public Dastar was the origin. And, because Dastar was the origin of the physical products it sold as its own, respondents cannot prevail on their Lanham Act claim. 2) 43(a) of the Lanham Act, 15 U.S.C. 1125(a), would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own. E. Right of Publicity a. John Carson v. Heres Johnny Portable Toilets 1. Slogan Here is Johnny is the slogan of John Carson. The defendant used this slogan to the ad of toilet. The Court held for John Carson, and stated that all you need to do is to identify the person, not necessary to use the persons likeness or image. b. White v. Samsung Electronic American, 971 F.2d 1395 (9th Cir. 1992). 1. Samsung run a advertising, which had a robot looking like and mimicking White. The Appellate Court reversed the decision of the lower court and held for White, stating that, If the celebrity's identity is commercially exploited, there has been an invasion of his right whether or not his name or likeness is used. It is not important how the defendant has appropriated the plaintiff's identity, but whether the defendant has done so. 2. The Common law right of publicity cause of action may be pleaded by alleging 1) the defendant's use of the plaintiff's identity; 2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercially or otherwise; 3) lack of consent; and 4) resulting injury. F. Limitation of Protection for Right of Publicity: First Amendment a. Comedy III Productions v. Gary Saderup 1. Plaintiffis the registered owner for the Three Stooges. Defendant is an artist in making charcoal drawings of
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celebrities. Without securing plaintiff's consent, defendant sold lithographs and T-shirts bearing a likeness of the Three Stooges reproduced from a charcoal drawing he had made. These lithographs and T-shirts did not constitute an advertisement, endorsement, or sponsorship of any product. The defendant claimed the First Amendment as a defense. 2. The court held for the plaintiff, stating that an artist depicting a celebrity must create something recognizably his or her own in order to qualify for legal protection. There was no significant transformative or creative contribution in defendants' work. b. First Amendment may be the defense against right of publicity. Four tests to balance the First Amendment and Right of Publicity. 1. Transformative Test 1) What did you add to the work, making that work artistic rather than commercial? 2) Whether the work in question add significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation. 2. Balancing Test 1) Whether the use of the identity has artistic relevance to the underlying work? 2) Whether the use explicitly misleads as to the source of the content? 3. Alternative Avenues Test 1) Whether alternative avenues for the expressive work exist that would not infringe on the celebritys interests 4. Predominant Use Test 1) If a product is being sold that predominantly exploits the commercial value of an individuals identity, that product should be held to violate the right of publicity and not be protected by the First Amendment, even if there is some expressive content in it that might qualify as speech in other circumstances. If, on the other hand, the predominant purpose of the product is to make an expressive comment on or about a celebrity, the expressive values could be given greater weight.
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c. CBC v. MLB (Fantasy Baseball): CBS used information of MLB, such as players name, likeness, record and/or biographical data for its fantasy baseball game. MLB sued CBC for right of publicity. The CBS claimed the First Amendment as a defense. The court ruled for CBC, stating CBCs First Amendment rights in offering its fantasy baseball products supersede the players rights of publicity. 1. The information used in CBSs fantasy baseball games is all available in the public domain, available for everyone. 1) Speech that entertains, like speech that informs, is protected by the First Amendment. 2. Public value of information about the game of baseball and its players, referring to baseball as the national pastime. 1) Its public interest for statistic of baseball figure. 3. Notes: Courts in the states, such as CA or NY, generally treat information and entertainment products such as biographies and novels as coming within their publicity statutes literal compass, but excuse these uses on the ground that they are protected under the First Amendments speech and press guarantees or under some states law counterpart to these guarantees. d. News and Public Affairs Exception: Right of publicity statutes commonly prohibit unauthorized uses for purposes of trade or advertising but excuse uses made in connection with news and public affairs accounts. In Stephano v. News Group Publications, courts view, the newsworthiness exception applies not only to reports of political happenings and social trends, but also to news stories and articles of consumer interest.

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