760Trademarks Outline Detailed PDF

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Full outline for the Trademarks and Unfair Competition course. Use to study for exam. Contains all notes from lecture and reading. Very comprehensive; includes all concepts covered in the class. ...

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[Page 1 of 18] Miscellaneous I. Protects goodwill only for use in commerce— Hanover Star Milling II. Equity matters—Stork Restaurant III. Reconditioning and repair—Champion Spark Plug Intellectual property I. Copyright—original creative expression II. Patent—new and useful invention III. Trade secret—valuable business secret IV. Trademark [p29]—source identification A. Word mark, brand name—identifies the goods 1. Descriptive— Coca-Cola v Koke (descriptive ok if secondary meaning); Kellogg v Nabisco (SHREDDED WHEAT generic) 2. Personal name—L§2(e)(4); Peaceable Planet v Ty (“primarily merely a surname” is unregistrable) 3. Geographic location—L§2(f); Chrysler v Moda (IFD unprotectable); American Waltham Watch (“Waltham, Mass” enjoined) a. Deceptive—deceives consumers who relied on the mark to their detriment b. Misdescriptive—consumers don’t care B. Trade dress—graphics, colors, shapes of product or packaging (Cheney v Doris; Sears v Stiffel; Compco v Day-Brite; Bonito Boats) 1. Product design (presumed not inherently distinctive)—does design make product more useful? More appealing? a. Features— Wal-Mart v Samara (clothing designs that are features are unprotectable) b. Function—trumps any defense of lack of consumer confusion i. Factors—a feature is functional if it: (Bonito Boats v Thundercraft)  is essential to use or purpose of the article  affects the cost or quality of the article ii. Aesthetic functionality—if allowing TM would place competitors at significant non-reputation disadvantage iii. L§2(e)(5); Kellogg v Nabisco (pillow-shaped biscuit is functional); Traffix (dual-springs on signs is functional) c. Color—does color make product more aesthetic? Convey information? i. Qualitex (color not inherently distinctive, must be acquired); Mishawaka Rubber (burden on infringer; strict liability) ii. Louisiana S.U. v Smack Apparel (university color schemes have secondary meaning) 2. Product packaging (presumed inherently distinctive)— a. Test— i. is it unique or unusual in a particular field? and ii. is it capable of creating a commercial impression distinct from the accompanying words? 3. Consistency—Rock and Roll (consistent use of building’s likeness needed for distinctiveness) 4. Strategy—steps: (1) first file design app; (2) use design to establish use of mark; (3) register mark C. Service mark—identifies a service D. Certification mark—goods or services meeting specified qualifications E. Collective mark—goods or services or members of a collective organization V. Strength—Abercrombie & Fitch v Hunting World (“spectrum of distinctiveness”) A. ↓Generic (unregistrable)—designates type of product instead of source 1. Kellogg v Nabisco (SHREDDED WHEAT is generic) 2. Quik-Print (QUIK-PRINT generic) 3. Factors—implies genericness when the factor is “yes” a. has a dictionary meaning—but not being in dictionary doesn’t imply distinctiveness (LIGHT, LITE generic for beer); b. competitors and persons in the trade use the term generically; c. owner uses the term generically; d. media uses the term generically; e. consumer surveys indicate genericness; or f. there is a lack of commonly used alternative means to describe the product or service B. ↕Descriptive (registrable if secondary meaning)—conveys immediate idea of qualities, characteristics, effect, purpose, ingredients 1. Need not describe everything— a. One feature—Quik-Print (QUIK-PRINT generic); Zobmondo (does WOULD YOU RATHER...? imply bizarre choices) 2. No protection for “secondary meaning in the making”— 3. Even when TM acquires secondary meaning, owner can’t prevent competitor from using it as a descriptive term a. Except for geographical mark— American Waltham Watch (enjoined from printing “Waltham, Mass” on watch face) 4. Similar tests—identifies source of product rather than product itself a. Factors—Louisiana S.U. v Smack Apparel (school colors are distinctive) i. length and manner of use of the mark or trade dress; ii. volume of sales; iii. amount and manner of advertising; iv. nature of use of mark or trade dress in newspapers and magazines; v. consumer survey evidence; vi. direct consumer testimony; and vii. defendant’s intent in copying the trade dress

[Page 2 of 18] Factors—Chrysler v Moda (IMPORTED FROM DETROIT unprotectable) i. consumer testimony; ii. consumer surveys; iii. exclusivity, length, and manner of use; iv. amount and manner of advertising; v. amount of sales and number of customers; vi. established place in the market; and vii. proof of intentional copying C. ↕Suggestive—registrable even without secondary meaning 1. Alternative tests—Zobmondo (two tests applied to WOULD YOU RATHER...?) a. Imagination test—is mental leap required to reach conclusion as to nature of product/service? (“yes” = suggestive) b. Competitors’ needs test—do competitors need to use the mark to describe their products/services? (“yes” = descriptive) D. ↑Arbitrary—registrable even without secondary meaning E. ↑Fanciful—registrable even without secondary meaning b.

Mechanics I. Filing—L§7(c) (national priority as to the date of application; registration is prima facie ownership and of constructive use) II. Registration— A. L§1(a)—applicant is already making actual use of the mark in commerce 1. See Use below— B. L§1(b)—bona fide intent to use the mark in commerce in the near future (applicant has 6mo to file Statement of Use, extendable) 1. M.Z. Berger v Swatch (lacked genuine intent to commercialize IWATCH) C. L§44(d)—applicant files a foreign application to register within 6mo of its app to the PTO and claims priority date of foreign filing D. L§44(e)—applicant possesses foreign registration in the applicant’s country of origin (foreign registration) E. L§66(a)—applicant requests extension of protection of an int’l registration under Madrid System for the int’l registration of marks 1. Art4 of Paris Conv for Protection of Ind Prop—Compagnie Gervais Danone v Precision Formulations (int’l registration) III. Contesting— A. USC§1062(a)—applications must be published before issuance B. L§13—any person who believes that he would be damaged by the registration of a mark upon the principal register may… file an opposition in the PTO, stating the grounds therefore: 1. assert prior use; or 2. marketing is enough for registration, as long as followed by actual use IV. Renewal— A. L§8—affidavit of Continuing Use required at 6th year and every 10th year thereafter B. L§9—renewal Application every 10th year V. Incontestability— A. L§15—filed within 1y of any 5y period of continuous use B. L§33(b)(1)-(9)—defenses to incontestability VI. Cancellation—anyone who believes he is or will be damaged by likelihood of dilution by blurring or by tarnishment (L§43(c)) A. L§14(1)—within 5y after the date of registration on any grounds B. L§14(3)—after 5y only if mark: generic, functional, abandoned, obtained fraudulently, contrary to L§2(a)-(c) (see Registration) 1. Can’t challenge based on lack of secondary meaning, or confusingly similar to previously published mark – even if incontestable Use and ownership I. Ownership—determined by who controls or determines the quality of the good or service A. Bell v Streetwise Records (band members own NEW EDITION because their image is the “product”) B. Lunatrex v Cafasso (none of separated team members owns LUNATREX mark) II. Use— A. Use in commerce—L§45 (bona fide use in ordinary course of trade, not merely to reserve a mark) 1. Thoroughbred Legends v Walt Disney (horse owner doesn’t own RUFFIAN because never used name in commerce) 2. American Express v Goetz (ad consultant doesn’t own mark pitched to company) 3. Larry Harmon Pictures v Williams Restaurant (BOZO’s single-location restaurant considered use in commerce) 4. Factors— a. Mere adoption or advertisement isn’t enough—Blue Bell v Farah Manufacturing (parties’ extensive ad campaigns irrelevant) b. Mark must be attached to goods, associated displays, or documents of sale c. Internal sale is not enough— Blue Bell v Farah Manufacturing (that regional sales managers paid for jeans is irrelevant) d. Presenting to individuals is not enough when consumers are big chains e. Single use in trade may sustain trademark rights if followed by continuous commercial utilization f. Token sale may be sufficient to support application to register a mark B. Token use— C. Foreign use— Paris Convention Act 6bis (famous marks exception to strict territoriality if foreign mark has renown in US) 1. Grupo Gigante v Dallo (GIGANTE’s fame in Mexico precludes Dallo’s use in US) 2. ITC Ltd v Punchgini (foreign BUKHARA restaurant mark lacked fame to preclude copycat Bukhara Grill in NY) 3. ↓Paleteria v Productos (foreign PROLACTO ice cream held not famous in US, but standard should be famous in foreign country) D. Analogous use—substantial advertising isn’t use in commerce, but it’s enough for standing to challenge another’s registration

[Page 3 of 18] 1. Aktieselskabet v Fame Jeans (foreign mark holder who merely marketed in US has standing to oppose another’s US registration) E. Priority—Blue Bell v Farah (only public sale matters, internal transaction irrelevant) 1. Continuing use—City of NY v Tavern on the Green (unbroken continuum of use without significant interruption) F. Concurrent use— 1. United Drug v Theodore Rectanus (prior local user or REX can exclude others only locally) 2. Thrifty Rent-A-Car System v Thrift Cars (local user granted limited area exception only) 3. Dudley v HealthSource Chiropractic (internet isn’t “geography” amenable to limited area exception) 4. Dawn Donut v Hart’s Food Store (no likelihood of confusion for DAWN because local companies operate in different areas) Bars to registration I. Distinctiveness—presumed if mark used exclusively and continuously for 5 years (L§2(f)) II. Shady—unregistrable A. Immoral or scandalous—L§2(a) 1. Factors— a. Meaning at time of registration b. Shocks sense of truth, decency, or propriety c. Invokes vulgar meaning i. Vulgarity need not be most relevant meaning  Substantial composite of public would perceive as vulgar  That some people find it humorous is irrelevant  Dictionary evidence alone can be enough to show vulgarity 2. In re Fox (COCK SUCKER unregistrable) 3. Boston Red Sox Baseball Club v Sherman (SEX ROD unregistrable) B. Disparaging— L§2(a) 1. Test—unregistrable if both are met: a. reasonably understood as referring to a group; and b. would be offensive or objectionable to a reasonable person 2. Blackhorse v Pro-Football (REDSKINS held disparaging; but should be judged at time of reg) 3. contra In re Tam (Asian band allowed to register SLANTS because of Am1 rights) C. Deceptive—L§2(a) (likely to influence purchasing decision) 1. Bayer v Stamatios (ORGANIC ASPIRIN will fool consumers) D. Deceptively misdescriptive—L§2(e)(1) (not likely to influence purchasing decision) 1. Bayer v Stamatios (ORGANIC ASPIRIN plausibly possesses attribute but actually does not) III. Implicates a person— A. Surname— L§2(e)(4) (registrable if distinctive) 1. In re Quadrillion Publishing (BRAMLEY unregistrable because, inter alia, it fit archetype of British surname) a. Benthin Factors— supports registrability when the factor is answered as shown in parentheses: i. Is the surname rare? (yes) ii. Does someone connected with the applicant have the surname? (no) iii. Does the term have any recognizable meaning other than as a surname? (yes) iv. Does the mark have structure and pronunciation of a surname, “look and feel” (no) B. False connection with a person, living or dead—L§2(a) 1. Factors— a. Mark is the same or a close approximation of a person’s previously used name or identity b. Consumers view the mark as pointing uniquely and unmistakably to the person c. The person isn’t connected with the activities performed by the registrant under the mark d. The person’s name or identity is of sufficient fame or reputation the mark’s use implies a connection with the person i. Fame is determined at time of mark’s registration 2. Hornby v TJX Companies (TWIGGY FOR CHILDREN falsely suggested connection to Twiggy) C. Name, portrait, or signature of living person without permission—L§2(c) IV. Similar to registered mark and likely to confuse, cause mistake, or deceive—L§2(d) (unregistrable even if distinctive) A. DuPont factors (registration)— Polaroid factors (infringement)— 1. Similarity of the marks (appearance, sound, impression, connotation) 1. Strength of senior mark 2. Similarity of the goods or services 2. Similarity of the marks 3. Similarity of marketing or trade channels 3. Similarity of goods 4. Degree of purchaser care or “impulsiveness” 4. Likelihood senior will expand into junior’s market 5. Fame of the senior mark (sales, advertising, length of use) 5. Junior’s intent in adopting the mark 6. Number and nature of similar marks used on similar goods 6. Evidence of actual confusion 7. Nature and extent of actual confusion 7. Sophistication of buyers 8. Duration and conditions of concurrent use without actual confusion 8. Quality of junior’s goods (lower → greater harm) 9. Variety of goods on which the marks are used 10. Market interface between junior and senior users 11. Extent to which junior user has right to exclude others from using the mark 12. Extent of potential confusion

[Page 4 of 18] 13. Other facts B. Stone Lion Capital Partners v Lion Capital (STONE LION CAPITAL unregistrable per DuPont factors 1-4) C. Coach Services v Triumph Learning (COACH registrable per DuPont factors 2,3,4,12) D. Territoriality— 1. Person’s v Christman (mark stolen from faraway Japan is registrable) 2. First Niagara Insurance v First Niagara Financial (mark used by competitor in nearby Canada isn’t registrable) E. Registration and infringement— B&B Hardware v Hargis Industries (TTAB decision can preclude issue in court) V. Geographic— A. Geographic indication for wines or spirits that identify a place other than the origin— L§2(a) (unregistrable even if distinctive) B. Geographically descriptive— L§2(e)(2) (registrable if distinctive) 1. Test (In re Newbridge Cutlery )— a. Generally known—the term is name of place generally known to the public; b. Association—public likely to believe the goods originate in the place identified by mark; and c. Origination—goods or services originate in the place identified in the mark 2. In re Newbridge Cutlery (NEWBRIDGE HOME registrable because Newbridge, Ireland is not well known) C. Geographically deceptively misdescriptive— L§2(e)(3) (unregistrable even if distinctive unless distinctive by Dec 8, 1993 per L§2(f)) 1. Test—mark is geographically deceptively misdescriptive when all are met: a. Generally known—primary significance of the mark is as a generally known geographic location; b. Association—consuming public likely to believe the mark indicates origin; c. Falsity—the goods don’t originate from that place; and d. Materiality—the misrepresentation was a material factor in purchase decision i. Requires significant portion of population to be deceived 2. In re Miracle Tuesday (JPK PARIS 75 unregistrable because false association with Paris would induce purchase) 3. In re Spirits Int’l (MOSKOVSKAYA registrable because no materiality that Moscow inference induced purchase for gen pub) VI. Functional—L§2(e)(5) (unregistrable even if distinctive) A. Two types— 1. De facto—feature performs the function it was intended to perform; doesn’t imply unregistrable functionality 2. De jure—competitors must use the feature in order to compete effectively; implies unregistrable functionality B. In re Becton, Dickinson (design for blood tube cap unregistrable per Morton-Norwich factors) C. In re Vertex Group (warning sound for child’s bracelet unregistrable per Morton-Norwich factors) D. Test— 1. Product feature is functional if either are met: a. it is essential to the use or purpose of the article; or b. it affects the cost or quality of the article 2. Critical question is the degree of utility present in the overall design a. Even when each feature is functional, put together might not be—Morton-Norwich (spray bottle design registrable) b. Do not weigh functional and nonfunctional features against each other E. Morton-Norwich (de facto functionality didn’t prevent trade dress reg for spray bottle) 1. Morton-Norwich factors—feature or design, analyzed as a whole, is functional if most of the following are met: a. a utility patent exists; i. utility patent is strong evidence of functionality ii. design patent does not guarantee trademark protection iii. design patent shows that design isn’t de jure functional, but may still be de facto functional b. there is advertising that touts the utilitarian advantage of the design; c. the design yields a comparatively simple or inexpensive method of manufacture (improved mfg); d. alternative designs not readily available; i. if functionality is already found on other factors, availability of alternative designs is immaterial e. the design or product feature affects cost or quality of the article F. EU Trademark Directive Article 3(1)(e) 1. Signs may not be registered that consist exclusively of any of the following: a. the shape which results from the nature of the goods themselves; b. the shape of goods which is necessary to obtain a technical result; or c. the shape which gives substantial value to the goods VII. Descriptive—descriptive or deceptively misdescriptive L§2(e)(1) (registrable if distinctive) A. (See Intellectual Property section above) B. Alternative tests—Zobmondo (two tests applied to WOULD YOU RATHER...?) 1. Imagination test—is mental leap required to reach conclusion as to nature of product/service? (“yes” = suggestive) 2. Competitors’ needs test—do competitors need to use the mark to describe their products/services? (“yes” = descriptive) Loss of trademark rights I. Genericide—L§45 A. Test— 1. Mark indicates nature and class of an article rather than its source 2. Great majority of the public isn’t aware of any trademark significance B. Bayer v United Drug (ASPIRIN became generic because Bayer stopped using the term as a trademark and stopped policing its use)

[Page 5 of 18] C. King-Seeley Thermos v Aladdin (badly formed survey showed 75% said a “container that keeps liquid hot or cold” is a thermos) D. Synecdoche—indiscriminate use of mark as a verb 1. Two meanings—(1) a species of activity; and (2) the genus of services to which the species belongs a. Example “to photoshop”—activity species: use Adobe software; genus of service: image manipulation software b. Elliot v Google (Google not generic because widespread use as verb less prevalent than as source designation) 2. Primary significance of the mark to the public matters more than frequency of verb use a. DuPont v Yoshida (battle of the surveys; TEFLON’s primary significance is as a mark, not a term for non-stick coatings) E. De facto secondary meaning—two types, neither of which are registrable 1. Public doesn’t recognize the term as a brand but may know there’s a single source (e.g. patent monopoly) 2. Producer selects a generic term as a mark and creates source-designating (secondary) meaning (e.g. LITE beer) a. America Online v AT&T (YOU HAVE MAIL generic despite recognition as from AOL (actually YOU’VE GOT MAIL)) b. Harley Davidson v Grottanelli (HOG generic because used to describe motorcycles before it described Harleys) 3. Generic mark can still receive protection—Dial 1-800-[GENERIC] (generic MATTRES enjoined non-generic 1-800-MATTRES) II. Abandonment—L§45 A. Test— 1. Use has been discontinued with intent not to resume use a. Nonuse for 3 years is prima facie evidence of abandonment (same for L§44 foreign registration) i. Can be rebutted by showing intent, within the 3 years, to resume use in the reasonably foreseeable future B. Standard—clear and convincing evidence 1. Grocery Outlet v Albertson’s (LUCKY not abandoned when Albertson’s converted all Lucky’s to Albertson’s) C. Silverman v CBS (AMOS ‘N’ ANDY abandoned for lack of use and too vague an intent to resume use) D. Brooklyn Dodgers (BROOKLYN DODGERS abandoned after 32 years of nonuse) E. Wells Fargo v ABD (intent prong is not reached unless use is actually discontinued) F. Macy’s v Strategic Marks (Macy’s online heritage brands sales of shuttered dept stores is sufficient use) G. Assignment in gross—assignment of a mark without its accompanying goodwill 1. Discontinuity...