TRADEMARKS
PROF. JANICKEFALL 2014
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TO BE A “MARK”:
• WORDS OR SYMBOL HAS TO SERVE AS A BRAND
• MEANING: IT 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– IF THESE METHODS ARE
IMPRACTICAL, ON INVOICES OR SHIPPING DOCUMENTS, or
– IN CATALOGS OR WEBSITES ADVERTISING THE GOODS
OWNERSHIP OF SUCH A MARK REQUIRES USE IN
COMMERCE
• THINKING OF THE MARK WILL NOT SUFFICE– NO USE = NO OWNERSHIP
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FOR A SERVICE MARK, THE USE CAN BE:
– ON SIGNS,
– ADS, OR
– PAPERS CONNECTED TO THE SERVICE
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TO OWN A “MARK”:
• THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE
• LOCAL, FOR STATE RIGHTS
• INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS
• FEDERAL USE IN COMMERCE:
– CAN BE ACTUAL
– CAN BE BONA FIDE INTENDED (WITH TIME LIMITS)
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PROTECTION
• RIGHTS BEGIN UPON FIRST USE [ACTUAL OR CONSTRUCTIVE BY FILING]
• REGISTRATION IS NOT NECESSARY
• CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK – DONE UNDER UNFAIR COMPETITION
PROVISION OF THE TRADEMARK ACT
CASE
• BLUE BELL v. FARAH
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WHAT IS INFRINGEMENT?
• USE, IN COMMERCE, OF A MARK IN SUCH MANNER, CONSIDERING THE GOODS OR SERVICES INVOLVED, AS TO CREATE A LIKELIHOOD OF CONFUSION AMONG PURCHASERS
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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 MARKSFOR JUDGING LIKELIHOOD OF
CONFUSION• #1 -- COINED (MEANINGLESS
WORDS) -- e.g., KODAK: STRONGEST OF ALL
– ENTITLED TO THE WIDEST SCOPE OF PROTECTION
–MODAK, DODAK, KODAR, FOR FILM WILL BE HELD INFRINGING
• #2 -- ARBITRARY – e.g. APPLE, SUN, SHELL:
–ALSO VERY STRONG FOR COMMUNICATION DEVICES AND COMPUTERS (APPLE), OR FOR OIL PRODUCTS (SUN, SHELL)
–NOTE: SUN ALSO ARBITRARY FOR SOFTWARE (SUN MICROSYSTEMS)
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• #3 -- SUGGESTIVE (e.g. MILKY WAY; COPPERTONE) – OK, BUT WEAKER– “CREAMY WAY,” “BRONZETONE” MIGHT BE
HELD NONINFRINGING
• #4 -- 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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• NOTE: “DESCRIPTIVE” INCLUDES GEOG. DESCRIPTIVE (e.g. SOUTHWEST FOR AIRLINE SERVICES; HOUSTON CHRONICLE FOR NEWSPAPERS)
–WERE NOT PROTECTED (OWNED) AT FIRST
• #5 -- 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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INFRINGEMENT: LIKELIHOOD OF CONFUSION
• CASES– XTREME [PART 1]– STREETWISE– QUILL
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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:– BY FILING AN APPLICATION, CAN RESERVE
A MARK BASED ON INTENDED USE– IF REGISTERED, EXCLUSIVE RIGHT TO USE
THE MARK IS PRESUMED– “INCONTESTABLE” AFTER 5 YEARS
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(MORE BENEFITS OF FED. REGISTRATION)
– IN ADDITION TO OWNERSHIP, VALIDITY OF THE MARK IS PRESUMED• e.g., NOT CONFUSINGLY SIMILAR TO
MARK OF AN EARLIER USER
– 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
TIME LIMITS FOR INTENT-TO-USE APPLICATIONS
• APPLICATION IS EXAMINED IN THE USUAL WAY
• IF O.K., A NOTICE OF ALLOWANCE OF REGISTRATION WILL BE SENT
• APPLICANT MUST ACTUALLY USE, AND FILE AFFIDAVIT OF USE, WITHIN 6 MONTHS OF THE NOTICE– CAN BE EXTENDED BY PETITION, UP TO
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• INTENT-TO-USE IF THE FAVORED PROCEDURE FOR CLIENTS TODAY
– GIVES A CLUE ABOUT REGISTRABILITY, PRIOR TO SPENDING MONEY ADVERTISING THE BRAND
– GIVES A CHANCE FOR CHANGE-OF-MIND, WITHOUT SERIOUS EXPENDITURE [TM APPL. FILING FEE: $325 ONLINE; $375 IN PAPER]
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MARKS THAT ARE EASY TO PROTECT
• COINED: KODAK; PURELL
• ARBITRARY: APPLE; SUN
• SUGGESTIVE: MILKY WAY COPPERTONE
• THESE ARE PROTECTED UPON FIRST USE IN COMMERCE
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HARDER TO PROTECT
• DESCRIPTIVE: TASTEE
• A SURNAME: STEINWAY WATERMAN
• GEOGRAPHIC: MID-ATLANTIC; SOUTHWEST
• THESE WERE NOT PROTECTED UPON 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
CASE
• PARK ’N FLY
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EXAMPLES OF MARKS
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TRADEMARK AND SERVICE MARK:
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TRADEMARK (FOR CONTAINER OF SCOTCH)
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SERVICE MARK (INSURANCE):
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SERVICE MARK (ENTERTAINMENT);
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COLLECTIVE MARK (ALUMNI):
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SERVICE MARK (OILFIELD FIRE-FIGHTING):
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COLLECTIVE MARK:
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CERTIFICATION MARK FOR CLOTHING:
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TRADEMARK FOR CLOTHING:
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COMPOSITE-STYLE TRADEMARK AND SERVICE MARK – SYMBOL AND WORD:
CASE
• QUALITEX
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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 IN A MARK
• 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
CASE
• SLOPPY JOE’S
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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
LEGAL REQUIREMENTS:
(1) 2ND USER IS FIRST TO USE IN A LOCALE (STATE OR LESS)
(2) 2ND USER HAS NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF 2ND USER’S ADOPTION
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PERMANENT USE RIGHTS
• FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS THE FEDERAL 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
• THE POSSIBILITY OF CREATING NEW INNOCENT LOCAL RIGHTS ENDED AT THE FILING DATE– i.e., 1ST USER IS DEEMED TO BE
EVERYWHERE
CASE
• MISTER DONUT
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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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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
CASE
• AMBASSADOR EAST v. ORSATTI
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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
• CASES:
– KELLOGG
– XTREME [PART 2]
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