TRADEMARKS

PROF. JANICKEJULY 2008

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TO BE A “MARK”:

• HAS TO SERVE AS A BRAND

• MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS

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TO BE A “MARK”:

HAS TO BE USED PHYSICALLY:– ON THE GOODS, or– ON GOODS’ CONTAINERS, or– ON POINT-OF-SALE DISPLAYS OF

GOODS, or– ON INVOICES OR SHIPPING

DOCUMENTS, IF THE ABOVE METHODS OF USE ARE IMPRACTICAL, or

– IN CATALOGS OR WEBSITES ADVERTISING THE GOODS

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FOR A SERVICE MARK, USE CAN BE:

– ON SIGNS, ADS, OR PAPERS CONNECTED TO THE SERVICE

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TO BE A “MARK”:

• THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE

• LOCAL, FOR STATE RIGHTS

• INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS

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PROTECTION

• RIGHTS BEGIN UPON FIRST USE

• REGISTRATION IS UNNECESSARY

• CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK – DONE UNDER UNFAIR COMPETITION

LAWS

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BENEFITS OF REGISTRATION

• WHILE NOT NEEDED FOR OWNING EXCLUSIVE RIGHT TO USE A MARK, OR FOR SUING INFRINGERS, THERE ARE MANY BENEFITS TO A FEDERAL REGISTRATION:– CAN RESERVE A MARK PRIOR TO USE– EXCLUSIVE RIGHT TO USE THE MARK IS

PRESUMED FROM REGISTRATION– “INCONTESTABLE” AFTER 5 YEARS

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(MORE BENEFITS OF FED. REGISTRATION)

– CAN SUE INFRINGERS IN FEDERAL COURT, REGARDLESS OF DIVERSITY

– VALIDITY OF MARK IS PRESUMED– PROTECTION AGAINST INFRINGEMENT

IS NATIONWIDE– U.S. CUSTOMS SERVICE WILL ASSIST

AGAINST INFRINGING IMPORTATIONS

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“RESERVING” A MARK

• CAN NOW FILE APPL. TO REGISTER

BASED ON INTENT TO USE

• PROVIDES CONSTRUCTIVE USE AS OF FILING DATE

• MUST ACTUALLY USE IN COMMERCE PRIOR TO REGISTRATION

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MARKS THAT ARE EASY TO PROTECT

• COINED: KODAK; PURELL

• ARBITRARY: APPLE; SUN

• SUGGESTIVE: MILKY WAY COPPERTONE

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HARDER TO PROTECT

• DESCRIPTIVE: TASTEE

• A SURNAME: STEINWAY WATERMAN

• GEOGRAPHIC: MID-ATLANTIC; SOUTHWEST

• THESE WERE NOT PROTECTED AT FIRST USE

• NEED TO DEVELOP ACQUIRED DISTINCTIVENESS OVER TIME, SOMETIMES CALLED “SECONDARY MEANING”

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WHAT IS NOT A MARK:

• GENERIC NAME OF A THING– “BREAD” FOR BREAD

• SOME CLOSE ISSUES:– ASPIRIN– SHREDDED WHEAT– Cf.: KLEENEX; PING-PONG; XEROX

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EXAMPLES OF MARKS

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NATURE OF RIGHTS IN MARKS

• PREVENT OTHERS FROM USING SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY

• NOT A RIGHT TO PREVENT ALL USES:– “CADILLAC” FOR CARS AND DOG

FOOD

– “CHAMPION” FOR PAPER AND BOXING GLOVES AND SPARK PLUGS

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DURATION OF EXCLUSIVE RIGHT

• AS LONG AS YOU ARE USING IT IN COMMERCE, PROVIDED - -

– IT DOES NOT BECOME GENERIC

– IT DOES NOT LOSE ITS CHARACTER

AS SINGLE-SOURCE INDICATOR

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REITERATING THE LEGAL BENEFITS OF REGISTRATION

• PRIMA FACIE EVIDENCE OF EXCLUSIVE RIGHT TO USE

• CONSTRUCTIVE USE

EVERYWHERE, AS OF THE FILING

DATE

• STARTS FIVE-YEAR CLOCK TO

INCONTESTABILITY

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PRACTICAL BENEFIT OF REGISTRATION

• OTHERS WILL FIND OUT ABOUT YOUR RIGHTS, AND WON’T ADOPT SIMILAR MARK

• CHEAP POLICING

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PASSING/FAILING THE FIRST REQUIREMENT OF A

“MARK”

• NOT A DISTINGUISHING BRAND

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PASSING/FAILING SECOND REQUIREMENT OF A

“MARK”

• NON-USE IN ACTUAL COMMERCE

§ 1127

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PASSING/FAILING THIRD REQUIREMENT OF A

“MARK”

• NON-USE ON GOODS OR CONNECTED TO SERVICES

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FALLING INTO THE “REGISTERED” PIT

PROBLEM:

• 1ST USER HAS NO REGISTRATION• 2ND USER GOT STATE AND FEDERAL

REGISTRATIONS, TWO YEARS AGO

• GOODS/MARKS CONFUSINGLY SIMILAR

• WHO WINS?

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THE THORN:PERMANENT LOCAL USE

RIGHTS

• THE ONE BIG PROBLEM FOR THE FIRST USER IN COMMERCE

• SECOND USER CAN GET PERMANENT LOCAL RIGHTS TO USE

• IF CONFUSION, FIRST USER MUST STAY OUT!

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PERMANENT USE RIGHTS

CONDITIONS:

• (1) FIRST TO USE IN A LOCALE (STATE OR LESS)

• (2) NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF ADOPTION

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PERMANENT USE RIGHTS

• FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS REGISTRATION DATE

• REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2)

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PERMANENT USE RIGHTS

• NOW, CONGRESS HAS PROVIDED THAT A FEDERAL REGISTRATION CONSTITUTES CONSTRUCTIVE USE EVERYWHERE AS OF THE FILING DATE (§1057(c)

• THIS KILLS CONDITION (1) AS OF THE FILING DATE

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PERMANENT USE RIGHTS

• ∴ REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE

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QUASI-MARKS AND NON-MARKS

• WALK THROUGH § 1052

• THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS

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QUASI-MARKS AND NON-MARKS

• START WITH 1052 (a) - (d): TELLS US MANY PROBLEMS ARE INCURABLE

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QUASI-MARKS AND NON-MARKS

THE (e) GROUP – SOME ARE CURABLE:

• DESCRIPTIVE

• GEOGRAPHIC

• SURNAMES

SOME NOT CURABLE: DECEPTIVELY MISDESCRIPTIVE

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QUASI-MARKS AND NON-MARKS

• FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER)

• EXAMPLE: SHAPE OF A DESK LAMP

• CANNOT BE CURED

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GETTING FROM QUASI TO FULL:SHOWING ACQUIRED

DISTINCTIVENESS

• OFTEN CALLED “SECONDARY MEANING”

• SHOWS THE QUASI-MARK HAS ARRIVED; NOW SIGNALS SOURCE

• FIVE YEARS EXCLUSIVE USE MAY DO

15 USC § 1052 (f)

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LESS KNOWN TYPES

• COLLECTIVE MARKS– TRADE / SERVICE MARKS– MEMBERSHIP MARKS

• CERTIFICATION MARKS

§ 1054

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CONFUSION LIKELIHOOD

• AS TO SOURCE

• AS TO SPONSORSHIP

• AS TO AFFILIATION

• AS TO APPROVAL

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CONFUSION LIKELIHOOD

• SUBSTANTIAL NUMBER OF PERSONS

• PROBLEM OF LANGUAGE TRANSLATION– DEPENDS HOW MANY SPEAK IT IN U.S.

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STRONG-WEAK MARKS

• COINED -- e.g., KODAK: STRONGEST OF ALL– ENTITLED TO THE WIDEST SCOPE OF

PROTECTION– MODAK, DODAK, KODAR, FOR FILM

WILL BE HELD INFRINGING

• ARBITRARY – e.g. APPLE:– ALSO VERY STRONG

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• SUGGESTIVE (e.g. MILKY WAY; COPPERTONE) – OK, BUT WEAKER– “CREAMY WAY,” “BRONZETONE” MIGHT BE

HELD NONINFRINGING

• DESCRIPTIVE (e.g. TASTEE BREAD, SUPERIOR WATERBEDS), and SURNAMES (WATERMAN FOR PENS, FORD FOR CARS)– ARE NOT PROTECTED RIGHT AWAY– ARE PROTECTED WHEN THEY HAVE

ACQUIRED DISTINCTIVENESS

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• “DESCRIPTIVE” INCLUDES GEOG. DESCRIPTIVE (e.g. SOUTHWEST FOR AIRLINE SERVICES, HOUSTON CHRONICLE FOR NEWSPAPERS)– NOT PROTECTED AT FIRST

• GENERIC NAME OF ARTICLE (e.g. ASPIRIN)– CANNOT SERVE AS A MARK– CANNOT ACQUIRE DISTINCTIVENESS –

IT’S PART OF THE LANGUAGE

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FACTORS IN JUDGING LIKELIHOOD OF

CONFUSION

• NO SINGLE FACTOR CONTROLS• “SUNKIST” FOR FRESH FRUIT AND FOR

DRIED FRUIT WERE OWNED BY UNRELATED COMPANIES

• MARKS LIKE “ACME,” “SUPERIOR, AND “NATIONAL” HAVE MANY OWNERS

• FAMOUS CASES HAVE CHECKLISTS

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FACTORS• STRENGTH OF P’S MARK

– HOW ARBITRARY?– HOW MUCH USE?

• SIMILARITY OF THE MARKS– SIGHT– SOUND– MEANING– SCRIPT OR DESIGN

• SIMILARITY OF PRODUCTS OF SERVICES

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FACTORS (CONT’D.)

• SIMILAR CHANNELS OF TRADE• SIMILAR ADVERTISING OR PROMOTION

MEDIA• BAD FAITH ADOPTION

– SOME COURTS GIVE THIS HEAVY WEIGHT; OTHERS DON’T

• SIMILAR TARGET CUSTOMERS• SIMILAR PURCHASE CONDITIONS: TIME,

PRICE, ETC.

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• COURTS HAVE TO WEIGH ALL THE FACTORS

• THEY REACH A DECISION THAT IS TO SOME DEGREE SUBJECTIVE

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WHO HAS THE RIGHT? THE PROBLEM OF “GRAY

GOODS”

• ARISES FROM CORPORATE SPINOFFS [ABOUT AS FREQUENT AS MERGERS]

• WHEN FOREIGN MARKET IS SPUN OFF, MARKS USUALLY GO WITH

• ALSO FROM LICENSING [IP MAXIMIZATION]

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GRAY GOODS

U.S. RULE:

• IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION

• IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER

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WHAT IS NOT INFRINGEMENT

• FAIR USE TO DESCRIBE:

JANICKE’S COMPUTER RENTALWE RENT ALL TYPES, INCLUDING COMPAQ®,

IBM®, AND DELL®

§ 1115 (4)

JANICKE’S COMPUTER RENTALWE RENT ALL TYPES

INCLUDING COMPAQ® AND IBM®

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WHAT IS NOT INFRINGEMENT

• OWN NAME IN BUSINESS OTHER THAN AS A MARK

• Cf: SPERA’S RESTAURANTTONY SPERA, PROP.

TONY’S RESTAURANTTONY SPERA, PROP.

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N.B.

• NO GENERAL RIGHT TO USE YOUR OWN NAME IN BUSINESS

• MOST ATTEMPTS FAIL

• NO POINT IN CHANGING YOUR NAME TO JOHNNY WALKER IF YOU ARE GOING TO SELL WHISKY

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N.B.

• STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL

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A WORD ABOUT DILUTION

• WHEN THERE IS NO INFRINGEMENT BECAUSE NO LIKELIHOOD OF CONFUSION

• BUT THE ACTS OF D SOMEHOW CHEAPEN OR TARNISH OR REDUCE THE VALUE OF P’S MARK

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A WORD ABOUT DILUTION

• EXAMPLE:

– “CADILLAC” FOR CARS

– FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD

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A WORD ABOUT DILUTION

• ONLY AVAILABLE FOR “FAMOUS” MARKS

• NO DAMAGES NORMALLY

• INJUNCTIVE ONLY

§ 1125 (c)

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REMEDIES

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INJUNCTIVE

• NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER

• CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS

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INJUNCTIVE

• PRELIMINARY

• PERMANENT– §1116 (a)

• 4,000 + TRADEMARK SUITS FILED ANNUALLY

• ABOUT 45 GO TO TRIAL

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MONETARY

• D’S PROFITS

• OR P’S DAMAGES [DIFFICULT TO SHOW]

• COURT CAN TREBLE P’S DAMAGES

• IF D’S PROFITS AS REMEDY IS TOO SMALL/LARGE, COURT CAN ENTER A “JUST” AMOUNT

§ 1117 (a)

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ATTORNEY’S FEES

• “EXCEPTIONAL CASES” ONLY

• USUALLY MEANS WILLFUL INFRINGEMENT

§ 1117 (a)

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DESTRUCTION

• A NICE MEDIEVAL REMEDY

• ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?]

§ 1118

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DEFENDANT’S REMEDIES

• ATTORNEY’S FEES IN EXCEPTIONAL CASES

§ 1117 (a)

• ORDER TO CANCEL REGISTRATION

§ 1119