TRADEMARKS
PROF. JANICKE
FALL 2015
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
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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
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• 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
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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
•
•
•
•
2015
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
FOR JUDGING LIKELIHOOD OF
CONFUSION
• #1 -- COINED (MEANINGLESS
WORDS) -- e.g., KODAK, OREO:
STRONGEST OF ALL
– ENTITLED TO THE WIDEST SCOPE OF
PROTECTION
– MODAK, DODAK, KODAR, FOR FILM
OR DOREO FOR COOKIES WILL BE
HELD INFRINGING
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• #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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• JACK-IN-THE-BOX
• RITZ
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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
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• #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
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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
2015
– CAN BE EXTENDED BY PETITION, UP
TO 24 MONTHS
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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-OFMIND, WITHOUT SERIOUS
EXPENDITURE [TM APPL. FILING FEE: $325
ONLINE; $375 IN PAPER]
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CASE
• PARK ’N FLY
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EXAMPLES OF MARKS
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TRADEMARK (FOR CONTAINER OF
SCOTCH)
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COLLECTIVE MARK (ALUMNI):
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SERVICE MARK (OILFIELD FIREFIGHTING):
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11965
HP
PRODUCTS,
an Ohio
company
2015
tubing and
fittings for
conveyors
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COLLECTIVE MARK:
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CERTIFICATION MARK FOR
CLOTHING:
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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
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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 and MARKS ARE 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 (STATES OR PARTS
THEREOF)
(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) FIRST LOCAL
USER AFTER THE FED. FILING DATE
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PERMANENT USE RIGHTS
• REGISTRATION AS CONSTRUCTIVE
NOTICE DOESN’T MATTER ANY
MORE, BECAUSE:
• THE POSSIBILITY OF CREATING
NEW LOCAL RIGHTS ENDED AT THE
FILING DATE
– i.e., 1ST USER IS DEEMED TO BE USING
EVERYWHERE
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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
• THIS OBSTACLE CANNOT BE
CURED
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WHO HAS THE RIGHT? THE
PROBLEM OF “GRAY GOODS”
• MEANING OF GRAY GOODS:
• GOODS THAT WERE AUTHENTIC AT
POINT OF FIRST SALE, BUT WERE
NOT INTENDED TO MOVE ACROSS
BORDERS
• PRICING CAN BE CONSIDERABLY
LOWER IN FIRST SALE
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• ATTRACTIVE TO BROKER-TYPE
BUYERS / RESELLERS, WHO BRING
THE GOODS HERE
– E.G., MERCEDES CARS BOUGHT IN
GREECE, SHIPPED HERE AND RESOLD
• COMPLAINERS:
– DISTRIBUTORS, DEALERS, AND
OTHER MIDDLEMEN CONNECTED TO
THE U.S. MARK OWNER
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• WHY DIFFERENT MARK OWNERS
SOMETIMES?
– ARISES FROM CORPORATE SELLOFFS
OF LINES OF BUSINESS IN SOME
COUNTRIES BUT NOT OTHERS
– WHEN FOREIGN BUSINESS IS SOLD
OFF, MARKS USUALLY GO WITH IT
– CAN ALSO ARISE FROM LICENSING [IP
MAXIMIZATION]
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GRAY GOODS
U.S. RULE:
• IF MARK OWNER IN SOURCE
COUNTRY AND U.S. IS SAME OR
RELATED COMPANY, NO RELIEF
AGAINST GRAY IMPORTATION
• IF MARK OWNERS ARE UNRELATED,
RELIEF IF QUALITY IS LOWER THAN IN
U.S. ORIGIN
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WHAT IS NOT
INFRINGEMENT
• FAIR USE TO DESCRIBE:
JANICKE’S COMPUTER RENTAL
JANICKE’S COMPUTER RENTAL
WE RENT ALL
INCLUDING
WETYPES,
RENT ALL
TYPES COMPAQ®,
IBM®,
AND DELL®
INCLUDING
COMPAQ® AND IBM®
§ 1115 (4)
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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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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
• A MADE-UP EXAMPLE:
– “CADILLAC” FOR CARS
– FOLLOWED MANY YEARS LATER BY:
“CADILLAC” FOR DOG FOOD
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A WORD ABOUT DILUTION
• DILUTION ACTION AVAILABLE
ONLY 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 FEECOLLECTING BUSINESS
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INJUNCTIVE
• PRELIMINARY
• PERMANENT
– §1116 (a)
• ABOUT 4,000 TRADEMARK SUITS
FILED ANNUALLY
• ABOUT 45 GO TO TRIAL
• SETTLEMENTS OFTEN INCLUDE
CONSENT INJUNCTION
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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
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• CASES:
– KELLOGG
– XTREME [PART 2]
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INTELL. PROP. SURVEY: TRADEMARK SECTION