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81 Cards in this Set
- Front
- Back
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Types of Marks
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Trademark=Mark for Goods
Servicemark=Marks for Services Certification Mark=certifies origin, material, mode Collective Mark=Trademark or service mark used by the members of a collective group |
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Valid Trademark
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A trademark is a word, name, symbol, device, or other designation, that is distinctive of a person’s goods or services and is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others.
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Distinctiveness
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In order to be a protectable mark/registerable under the Lanham act the mark must be distinctive of the mark owner’s/applicants goods in commerce.
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Generic
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a term that has come to be understood as referring to the genus or type of product, as oppose to a particular product.
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Generic Test
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If the primary significance of the mark is to describe the type of product rather than the producer the trademark is generic
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Descriptive
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conveys an immediate idea of the ingredients, qualities, or characteristic of the goods and are not protectable marks unless acquiring secondary meaning
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Lanham Act Secondary Meaning
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• For Lanham Act purposes, proof of substantially exclusive and continuous use of the mark applied to the applicants goods for five years preceding the application will be considered prima facie evidence that the mark has become distinctive
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3 Tests of descriptiveness
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o If standing alone it conveys information as to the characteristics of the product
o If competitors would be likely to need the term used in the mark in describing their products o Extent to which a term actually has been used by others marketing a similar service or product |
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Passing Off Relative to Genericness
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Even if generic, can be held for unfair competition if a competitior fails to adequately identify itself as distinct from the fir organization causes a likelihood of confusion
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Personal Names
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• Generally, you must have secondary meaning to TM a personal name, unless none of the reasons for not affording names protection is present and would impeded competition
1) Want people to be able to use their own names 2) Some names are generic and people will not know the difference (if it is rare, it might be confused) 3) Can deny consumers valuable information (Peaceable Planet) |
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Suggestive
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A term is suggestive if it requires imagination, thought, and perception to reach a conclusion as to the nature of the goods.
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Arbitrary
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common word applied in an unfamiliar way.
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Fanciful
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words invented solely for their use as trademarks
• Exxon |
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Secondary Meaning
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The primary significance of the term in the minds of the consuming public is not the product but the producer. Courts will look at both circumstantial and Direct eEvidence
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Circumstantial Evidence Considered for secondary meaning
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• Amount of advertising
• Volume of sales • Length and Manner of Use • Conspicuousness of use (the more prominent the better) • Concurrent use by its competitors negates the existing of secondary meaning • Intentional copying by another (likely secondary meaning due to the intent to profit) o None alone is enough, but may be in combination o Question is the effectiveness in altering the meaning of the term to the consuming public |
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Direct Evidence Considered
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• Survey evidence
o 23-28% was enough for Zatarains when combined with other factors • Proof of actual consumer confusion caused by another’s use of the mark |
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Seabrook Test
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In determining whether a design is distinctive, the court will look to see whether it is
1) a common basic shape or design a. if it is common then it is not inherently b. stylized shape may qualify as inherently distinctive…really easy to meet (Georgi-O) i. may be only given limited protection 2) unique or unusual in a particular field 3) a mere refinement of a commonly adopted and well-known form of ornamentation for the goods 4) OR it is capable of creating a commercial impression distinct from the accompanying words |
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Trade Dress
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Visual characteristics of a product that may designate its source or origin
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Product Packaging
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1) Is it product packaging (Taco Cabana—décor of the restaurant…not the actual product)
a. Can be inherently distinctive b. Some apply Abercrombie, some apply Seabrook…ultimatel whether the dress is so unique, unusual or unexpected in this market that it will automatically be perceived by customers as an indicator of origin c. Tertium quid=akin to product packaging (Wal Mart) |
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Distinctiveness of Product Packaging
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whether the dress is so unique, unusual or unexpected in this market that it will automatically be perceived by customers as an indicator of origin
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Product Design
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it product design (Wal Mart—Dresses…actual bought and used the décor)... features inherent in the actual physical product
a. Needs secondary meaning (Wal-Mart Stores, Inc.) i. This is because product design (unlike packageing or label) is not meant primarily as a source identifier in the eyes of the consumer |
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Wal Mart
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In close cases courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning
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Qualitex
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Can TM a color as long as there is secondary meaning
• Specifies the language of the Lanham Act being broad, to include any symbol or device |
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In re Clarke
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allows for the scent of yarn to be registered as a valid mark (source identifier)
• Scent is not regularly used in the industry • Advertised the scent as part of the product |
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Functionality
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Functional feature is one the exclusive use of which would put competitors at a significant non reputational disadvantage
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Utilitarian Functionality
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A feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device
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Traffix--Effect of an expired patent
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• If trade dress protection is sought for the claimed in the patent, it serves as strong evidence that those features are functional
o The one claiming TD protection carries a HEAVY BURDEN by showing that the TD is not fuctional by showing it is merely an ORNAMENTAL, INCIDENTAL, or ARBITRARY aspect of the device |
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Aesthetic Functionality
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Trade dress will be considered aesthetically functional and not be protected if it is an ornamental feature of and TM protection would significantly hinder competition by limiting the range of adequate alternative designs
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Aesthetic functionality Test
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1) Comparable Alternatives: Would the protection of certain features leave a variety of comparable alternative features that competitors may use to compete in the market?
2) Effective Competition: Would the protection of the products feature hinder the ability of another manufacturer to compete effectively in the market for the product? |
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Family Marks
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Protection may be granted for a family mark if a group of marks are used and promoted together in such a way that the public associates the common feature with the mark owner, and that common feature is distinctive.
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Actual Use
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1) Used in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark (totality of the circumstances)
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Related companies doctrine
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If a registrant is not the first to use a mark, a substantial relationship between the using entity and the controlling entity must be shown in order for the benefit of use to inure to the controlling entity
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Public surrogate use
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public use by others inures to the claimant’s benefit and, where this occurs, public use can reasonably be deemed use by that party in the sense of the use on its behalf
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Effect of Foreign Use (Majority Rule)
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Priority use is determined by use in the United States
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Minority Rule (9th Circuit)
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Generally the territoriality principle applies, however, when foreign use of a mark is well known within the United States, the foreign user will no longer be denied priority based on a lack of use in the United States.
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Sufficiently Well Known in Order to be an exception to the territoriality principle
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1) The mark acquires a connection to the goods that is greater than that of secondary meaning
2) AND if never used in the American marked a SUBSTANTIAL percentage of consumers in the relevant AMERICAN market are faliar with the mark a. This is the geographic area where the defendant uses the alleged infringing mark i. Consider the intentional copying of the mark ii. Are customers of the American firm likely to think that they are patronizing the same firm that uses the mark in their home country |
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NY State Law Effect of International Use
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When a business possesss goodwill through renown in NY, that good will is protected
• How famous? o The mark must call to mind the goodwill o Primarily associate the mark with the foreign plaintiff Look at intentional use Surveys |
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Foreign Services (Int'l Bancorp)
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The use in commerce required in order to be a protectable mark is based on commercial uses that may be regulated by Congress, thus including foreign trade. In order for services to be consider used in commerce, mere advertising is not enough, but services must be rendered as well. The court in International Bancorp found that the use requirement could be met if the advertising was done in the United States, and the services were rendered abroad.
• This is just the fourth circuit test, many still stick to the pure territoriality rule (TTAB) |
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Abandonment
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A mark will be considered abandoned and will lose any rights of protection when:
1) It has been discontinued with intent not to resume its use in the reasonably foreseeable future 2) When any course of conduct, either omission or commission, causes the mark to be generic or lose its significance as a mark (failure to control use) |
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Advantages of Principal Registration
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• Provides notice to the public of the existence and nature of the claim rights
o Helps reduce cost to public by avoiding infringement • Prima facia evidence of : o The validity of the restered mark and the validity of the registrations o Registrant’s ownership of the mark o The registrant’s exclusive right to use the resigetered mark in commerce on or in connection with the goods or services specified in the registration • Owners of registered trade dress do not bear the burden of establishing nonfunctionaliy (unregistered TD owners do have this burden) • Presumptions of validity, ownership, and exclusive right to use become conclusive if the registration attains incontestable status |
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Scandalous Marks (Bar)
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No mark shall be registered if it consists of immoral, deceptive, or scandalous matter OR matter whcich may disparage
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Test for Scandolousness
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1) What is the likely meaning of the matter in question
2) Whether in view of the likely meaning the matter is scandalous to a substantial composite of the general public |
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Test for Disparagement
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1) What is the likely meaning of the matter in question
2) Whether in view of the likely meaning the matter is scandalous to a substantial composite of the targeted group, living or dead, institutions, beliefs, or national symbols |
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Deceptive Marks
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Under section 2a, if a mark is misdescrptive of the character, quality, function, or composition of the goods, the purchasers are likely to believe the misdescripteive, and this is material to their decision to purchase the good, the TM cannot be registered.
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Deceptively Misdescriptive
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• Met if meeting the first two prongs of the deceptive test
• Registerable with secondary meaning |
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Primarily Geographically Descriptive
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• Not registerable per 2e2
1) The primary significance of the mark is geographic 2) Purchasers would be likely to make a goods/place or services/place association..would they think the goods came from the area a. More than a geographical name is needed but does not need to be noted for the goods b. Where there is no genuine issue that the geographical significance of a term is its primary significance, and where the geographical term is neither obscure nor remote then a goods place association may be presumed c. Is there an association between the goods and place 3) The mark identifies the geographic origin of thee goods or services |
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Primarily Geographically Deceptively Misdescriptive
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• Not registerable without secondary meaning
• In Re California eliminates this category of mark post NAFTA (Dec. 8, 1993) o Puts emphasis on the deceptiveness of the mark, not worrying so much about anything else otherwise o Only applies to the federal circuit o The rub: Now marks that would previously have been PGDM, and not registerable without secondary meaning, may now be if not rising to the level of deceptive marks 1) Prove that the primary significance of the term is geographice 2) Is there a goods/place in the minds of the consumers Not necessarily noted for, but there is a connection Is there an association between the place and the goods 3) Do the goods come from that place…NO |
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Geographically Deceptive
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• The primary significance of the term is geographical
• There is a goods/place in the minds of the consumers. Not necessarily noted for, but there is a connection Is there an association between the place and the goods • The goods DO NOT come from that place • The goods coming from that place WOULD materially effect their decision to purchase the goods |
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Primarily Merely a Surname
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A mark is not registerable if it is primarily merely a surname absent secondary meaning. In order to determine if it is primarily merely a surname, courts will consider
1) Whether the surname is rare a. Look at phonebook (phonedisc) 2) Whether anyone connected with the applicant has the involved term as a surname 3) Whether the term has any other recognized meaning a. Look at dictionary 4) Whether the term has the look and feel of a surname a. Often derived from jobs such as cooper |
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Tea Rose Doctrine
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Generally, the first to use a mark in commerce is the owner of the trademark rights therein. However, a junior user may still acquire trademark protections despite subsequent use to the senior user if acting in good faith in a geographically remote location.
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Dawn Donut Rule
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Registration of a TM serves as nationwide constructive notice of the registrant’s claim of ownership. Such constructive notice, in effect eliminates the good faith defense found at common law affording nationwide protection to registered marks irrespective of the areas in which the registrant actually uses the mark. HOWEVER, in order to be awarded injunctive relief the defendant’s use of the mark must be in the same geographic area as the registrant or in the likely zone of expansion.
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Prior Use, but failure to register
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Under the Lanham Act, if an unregistered user uses a mark prior to the registration of a register user, then the unregistered user will not be liable for infringement in the area of its continuous use prior to the registrants registration date.
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Laches
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Under the Lanham Act, if an unregistered user uses a mark prior to the registration of a register user, then the unregistered user will not be liable for infringement in the area of its continuous use prior to the registrants registration date.
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Extraterritorial Enforcement
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The intent of the Lanham Act is to regulate commerce within the control of commerce by making actionable the deceptive and misleading use of marks in such commerce. The extent of enforcement of such actions will depend on whether the court considers that congress intended the Lanham Act to apply to such actions.
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Steele
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The court was willing to assert JN due to a sufficient effect on US commerce.
-The infringer was a citizen -Bought component parts of the infringing goods in the US -Goods filtered into the US -Fake goods could affect the reputation of the TM’ed good in US -No TM protection in Mexico, so not conflict of law |
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Vanity Fair
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Interpreted Steele as comprising three factors:
1) Did the D’s conduct have substantial effect on United States Commerce? 2) Was the D a US citizen? a. Heavy emphasis 3) Was tehere a conflict of laws? |
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McBee
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1) Are they a United States citizen?
a. If so, then there is likely JN and it is less necessary to show domestic activity b. Court rest the power of congress to regulate the activities of its own citizens 2) If not, is there a substantial effect of the activity on commerce United Commerce a. YesJN i. Must be sufficient to give the US an interest and in light of consumer protection and to assure a TM owner to reap the rewards associated with the goodwill and product it has developed b. NoNo JN HOWEVER, the court can then decline JN due to comity o Court could enjoin the sale of McBee into the united state o Court could not reach the internet site….it was written in a foreign language so there would be no confusion with American consumers or effect reputation o did not sell anything… o Sites turned up both the TM holder’s site and their sit o Also tried to say sales in Japan, hurt in US o American consumers did not see the product SOME Circuits like the 9th do a SOME effects test…more assertive |
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Infringement
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Registered Marks
Under Section 32 of the Lanham Act, X will be liable for infringement if his or her use of the mark would likely cause confusion or mistake, or deceive. Unregistered Marks Under Section 43 of the Lanham Act, X will be liable for unfair competition (common law infringement) if his or her use of the mark will result in a likelihood of confusion as to the origin, sponsorship, or approval of his or her goods. |
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Internal Use
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a company’s internal use of a mark in a way that does not communicate it to the public is analogous to an individual’s private thoughts about the Trademark….and thus does not violate the Lanham act which is concerned with use in connection with the sale of those goods that is likely to cause confusion as to the source.
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1-800 Contacts
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Pop Up Ads & Databases
1-800 Contacts, Inc.—Alleged infringer causes pop ups of the TM holder’s competitors to appear by using the company’s domain name that is identical to its TM in a directory listing Save now database was NOT an infringement (it was more like an individual’s internal thoughts |
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Ad words--JG Wentworth
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Google’s ad word program AS USED BY THE PURCHASER OF THE WORD and meta tags were a use in commerce relative to the Lanham Act” by establishing an opportunity to reach consumers via alleged purchase and/or use of a protected mark
• In commerce=Commercial transaction in which the TM was purchased • In connection with goods or services and in commerce=used to trigger commercial advertising which included a link to defendant’s furniture retailing website so they could purchase goods Note: circuits are split on this one…it is not used to identify the source of any goods Sellers Rescuecom: Not a use because it did not place the TM on any goods or use the TM in anyway to indicate origin |
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Using TM in Domain Name
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Bosley Medical: Gripe site regarding baldness was not a use for TM purposes…
• Did not sell anything • Only linked through to advertisement for sales • Some courts will find use if preventing consumers from getting to goods such as the PETA case…Didn’t prevent in getting the goods, because there was no offer to toeher people’s goods…additionally, this is an expansive view of the Lanham Act that not all courts adopt |
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Likelihood of Confusion Factors
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Strength of the Mark
Proximity of the Goods Similarity of the Marks Evidence of Actual Confusion Marketing Channels Used Types of Goods and the Degree of Care Likely to be Used by the Purchaser Defendent's Intent in selecting the mark Likelihood of expansion |
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Initial interest confusion
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Infringement may still be found if a TM is used in a manner calculated to capture initial consumer attention even though no actual confusion exists as to the point of sale.
Playboy multi factor initial confusion (banner ads keyed to a specific set of terms)…. • Actual confusion examined • Both used the internet was equivocal because countless companies use the internet • Looked at sophistication • Intent…profiting from confusion is strong evidence of intent |
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Descriptive Fair Use
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Despite X’s mark resulting in a likelihood of confusion X will not be liable for infringement if the use was fair and in good faith only to describe the goods or services
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Factors considered in fairness
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• Degree of likely confusion
• The strength of the trademark o Not clear that if a mark becomes so strong that it can never can be considered descriptive • The descriptive nature of the term of the product or service being offered • Availability of alternate descriptive terms • Extent of the use of the term prior to the registration of the mark • Differences among the times and contexts in which the term was used |
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Nominative Fair Use (9th Circuit)
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In the case where D has used P’s mark to describe P’s product, even if the goal is to describe his own product the use may be considered nominative and not an infringement if:
1. The product or service in question was one not readily identifiable without the use of the TM 2. The only so much of the mark or marks was used as reasonably necessary to identify the product 3. The user did nothing that would suggest sponsorship or endorsement by the TM holde Nominative fair use supplants likelihood of confusion analysis because it is clear that it is the Plaintiff and Defendant that is the source of the TM’ed goods, therefore there is no need to analyze confusion o Takes away P’s burden of showing any confusion |
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Nominative Fair Use (3rd Circuit)
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o First: P must prove confusion is likely due to the defendant’s use of P’s mark
Factors to consider are limited to • The price of the goods and other factors that are indicative of the care and attention of consumers when making the purchase • The length of time the D had used the mark with evidence of actual confusion • The intent of the D in adopting the mark • AND the evidence of actual confusion o Second: If met the burden shifts to D to show that its nominative use is fair based on whether The use of the P’s mark is necessary to describe both the P’s product or service by the D and the D’s product or service The D uses only so much of the P’s mark as necessary to describe P’s product The D’s conduct or language reflect the true and accurate relationship between P and D’s products or services |
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TMs in a title (Rogers test)
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A title is designed to catch the eye and promote the value of an underlying work and is expected to tell little about the work’s origin, thus in such cases the Lanham Act is not violated unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work.
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False Advertising
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In order to be liable for a claim of false advertising the defendant must
1. Make a false statement about their or another’s product in commercial advertising 2. that has a tendency to deceive a substantial segment of its audience 3. is material to the purchasing decision 4. caused the false statement to enter into commerce 5. the plaintiff has been injured by the false statement through a loss of goodwill or diversion of sales |
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Dillution
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Irrespective any confusion caused by the Defendant’s use, under the TDRA, the owner of a distinctive and famous mark is entitled to injunctive relief against anyone who, after the mark has become famous, uses a mark in commerce that is likely to cause dilution by blurring or tarnishment.
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Famous (TDRA)
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A mark is considered famous if it is widely recognized by the gerneal consuming public of the US as a designation of source of the goods or services of the mark’s owner
• Duration, extent, and geographic, and geographic reach of advertising • Amount, volume, and geographic extent of the sales with the mark • Extent of the actual recognition of the mark • If it was registered under one of the hell of old acts |
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Blurring
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The association arising from the similarity between a mark and a famous mark that impairs the distinctiveness of the famous mark
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Things courts will look at for blurring
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• Degree of similarity between the mark or trade name and the famous mark
• Distinctiveness of the mark (inherent or acquired) • Any third party use of the mark, or is it substantially exclusive • Intent of association with the famous mark • Any actual association between the TM and the famous mark |
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Tarnishment
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Association arising from the similarity between a mark and a famous mark that harms the reputation of the mark
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Defenses to dillution
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• Fair use…bomative and descriptive in connection with advertizing or parody
• Noncommercial use • News reporting |
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Cybersquatting
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An individual may be liable for cybersquatting if he or she registers a domain name that is identical or similarly confusing to a distinctive mark at the time of registration with the bad faith intent to profit from the mark.
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Things to look in bad faith
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• Does it cause a likelihood of confusion
• Any attempt to offer sell • Did they register multiple domain names |
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Publicity (CA)
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Any person who knowingly uses another’s name, voice, signature, photograph, or likeness in any manner for purposes of advertising or selling, without such persons prior consent shall be liable for any damages sustained by the person or persons injured as a result thereof.
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Common Law
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An individual may be liable for violating the common law right of publicity if appropriating the P’s identity, name, or likeness to their commercial advantage without the P’s consent.
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Preliminary Injunction
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A P is entitled to a preliminary injunction when it demonstrates a combination of
1) probable success on the merits and the possibility of irreparable injury OR 2) The existence of serious questions regarding the merits and hardships timps sharply in his favor |
