Trademark and Unfair Comp.

Boston College Law School

March 19, 2008

False Designation, False Advertising

Trademark Causes of Action

• Infringement– Registered Trademarks– False Designation of Origin (Unregistered)

• Dilution

• False Advertising

• Cybersquatting

False Designation of Origin

• Lanham Act §43(a) (15 U.S.C. §1125(a)):– (a) (1) Any person who, on or in connection with any

goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin … which --

• (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person or with another person … shall be liable in a civil action ….

Dastar v. Twentieth Century Fox

Bretford v. Smith

False Advertising

• Lanham Act §43(a)(1)– Any person who, on or in connection with any goods or

services … uses in commerce any word, term, name, symbol, or device … or any false designation of origin, false or misleading description of fact … which --

• (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

– shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.

Smith v. Chanel

• “We dare you to try to detect any difference between Chanel #5 and Ta’Ron’s 2nd Chance $25.

• Order form listing “Second Chance” and underneath it, “(Chanel #5)”.

Hypothetical

Crazy C

olaT

he exact sam

e formula as

Coca C

ola

®

False Advertising

• Lanham Act §43(a)(1)– Any person who, on or in connection with any goods or

services … uses in commerce any word, term, name, symbol, or device … or any false designation of origin, false or misleading description of fact … which --

• (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

– shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.

Coca Cola v. Tropicana

• “It’s pure, pasteurized juice as it comes from the orange.”

Schick v. Gillette

McNeil v. Pfizer

Hypothetical

• “Unlike Mylanta, Tums is aluminum-free”

Administrative Details

• Next Assignment– VII.C – Dilution

• No class next Wednesday