TRADEMARKS
PROF. JANICKE
FALL 2011
TO BE A “MARK”:
• HAS TO SERVE AS A BRAND
• MEANING: HAS TO DISTINGUISH
ONE’S GOODS OR SERVICES FROM
THOSE OF OTHERS
2011
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2
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
2011
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3
FOR A SERVICE MARK, USE CAN BE:
– ON SIGNS,
– ADS, OR
– PAPERS CONNECTED TO THE SERVICE
2011
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4
TO BE A “MARK”:
• THE MARKED GOODS OR SERVICES
HAVE TO PASS IN COMMERCE
• LOCAL, FOR STATE RIGHTS
• INTERSTATE OR FOREIGN, FOR
FEDERAL RIGHTS
2011
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5
PROTECTION
• RIGHTS BEGIN UPON FIRST USE
• REGISTRATION IS UNNECESSARY
• CAN SUE FOR INFRINGEMENT OF
AN UNREGISTERED MARK
– DONE UNDER UNFAIR COMPETITION
LAWS
2011
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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
2011
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(MORE BENEFITS OF FED.
REGISTRATION)
– VALIDITY OF MARK IS PRESUMED
– U.S. CUSTOMS SERVICE WILL ASSIST
AGAINST INFRINGING IMPORTATIONS
2011
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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
2011
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9
MARKS THAT ARE EASY TO
PROTECT
• COINED:
KODAK; PURELL
• ARBITRARY:
APPLE; SUN
• SUGGESTIVE:
MILKY WAY
COPPERTONE
2011
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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”
2011
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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
2011
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EXAMPLES OF MARKS
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2011
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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
2011
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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
2011
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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
2011
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PRACTICAL BENEFIT OF
REGISTRATION
• OTHERS WILL FIND OUT ABOUT
YOUR RIGHTS, AND WON’T ADOPT
SIMILAR MARK
• CHEAP POLICING
2011
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27
PASSING/FAILING THE
FIRST REQUIREMENT OF A
“MARK”
• NOT A DISTINGUISHING BRAND
2011
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PASSING/FAILING SECOND
REQUIREMENT OF A
“MARK”
• NON-USE IN ACTUAL COMMERCE
§ 1127
2011
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PASSING/FAILING THIRD
REQUIREMENT OF A
“MARK”
• NON-USE ON GOODS OR
CONNECTED TO SERVICES
2011
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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?
2011
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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!
2011
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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
2011
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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)
2011
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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
2011
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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
2011
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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
2011
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QUASI-MARKS
AND NON-MARKS
• START WITH 1052 (a) - (d): TELLS US
MANY PROBLEMS ARE INCURABLE
2011
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QUASI-MARKS
AND NON-MARKS
THE (e) GROUP – SOME ARE
CURABLE:
• DESCRIPTIVE
• GEOGRAPHIC
• SURNAMES
SOME NOT CURABLE: DECEPTIVELY
MISDESCRIPTIVE
2011
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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
2011
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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)
2011
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LESS KNOWN TYPES
• COLLECTIVE MARKS
– TRADE / SERVICE MARKS
– MEMBERSHIP MARKS
• CERTIFICATION MARKS
§ 1054
2011
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CONFUSION LIKELIHOOD
•
•
•
•
2011
AS TO SOURCE
AS TO SPONSORSHIP
AS TO AFFILIATION
AS TO APPROVAL
IP Survey -- Trademarks
43
CONFUSION LIKELIHOOD
• SUBSTANTIAL NUMBER OF
PERSONS
• PROBLEM OF LANGUAGE
TRANSLATION
– DEPENDS HOW MANY SPEAK IT IN U.S.
2011
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44
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
2011
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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
2011
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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
2011
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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
2011
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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
2011
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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.
2011
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• COURTS HAVE TO WEIGH ALL THE
FACTORS
• THEY REACH A DECISION THAT IS
TO SOME DEGREE SUBJECTIVE
2011
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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]
2011
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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
2011
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53
WHAT IS NOT
INFRINGEMENT
• FAIR USE TO DESCRIBE:
JANICKE’S COMPUTER RENTAL
JANICKE’S COMPUTER RENTAL
WE RENT ALL
TYPES,
INCLUDING
WE
RENT ALL
TYPES COMPAQ®,
IBM®,
AND DELL®
INCLUDING
COMPAQ® AND IBM®
§ 1115 (4)
2011
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WHAT IS NOT INFRINGEMENT
• OWN NAME IN BUSINESS OTHER
THAN AS A MARK
• Cf:
SPERA’S RESTAURANT
TONY SPERA, PROP.
TONY’S RESTAURANT
TONY SPERA, PROP.
2011
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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
2011
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N.B.
• STATEMENTS OF
DISCONNECTEDNESS USUALLY
FAIL
2011
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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
2011
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A WORD ABOUT DILUTION
• EXAMPLE:
– “CADILLAC” FOR CARS
– FOLLOWED MANY YEARS LATER BY:
“CADILLAC” FOR DOG FOOD
2011
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A WORD ABOUT DILUTION
• ONLY AVAILABLE FOR “FAMOUS”
MARKS
• NO DAMAGES NORMALLY
• INJUNCTIVE ONLY
§ 1125 (c)
2011
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REMEDIES
2011
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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
2011
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62
INJUNCTIVE
• PRELIMINARY
• PERMANENT
– §1116 (a)
• 4,000 + TRADEMARK SUITS FILED
ANNUALLY
• ABOUT 45 GO TO TRIAL
2011
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63
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)
2011
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64
ATTORNEY’S FEES
• “EXCEPTIONAL CASES” ONLY
• USUALLY MEANS WILLFUL
INFRINGEMENT
§ 1117 (a)
2011
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65
DESTRUCTION
• A NICE MEDIEVAL REMEDY
• ALL INFRINGING LABELS, AND THE
MEANS OF MAKING THEM
[PRINTING GEAR, INCL.
COMPUTERS?]
§ 1118
2011
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DEFENDANT’S REMEDIES
• ATTORNEY’S FEES IN
EXCEPTIONAL CASES
§ 1117 (a)
• ORDER TO CANCEL
REGISTRATION
§ 1119
2011
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67
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INTELL. PROP. SURVEY: TRADEMARK SECTION