TRADEMARKS

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TRADEMARKS

• PROF. JANICKE
• FALL 2014

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TO BE A MARK

• WORDS OR SYMBOL HAS TO SERVE AS A BRAND
• MEANING IT HAS TO DISTINGUISH ONES 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

• 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

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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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• 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 ITS 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
• 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-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

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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

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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 WONT
  ADOPT SIMILAR MARK
• CHEAP POLICING

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CASE

• SLOPPY JOES

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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 THORNPERMANENT 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 USERS 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 DOESNT
  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

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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
• CANNOT BE CURED

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GETTING FROM QUASI TO FULLSHOWING 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
• JANICKES COMPUTER RENTAL
• WE RENT ALL TYPES, INCLUDING COMPAQ, IBM, AND
  DELL
• 1115 (4)

JANICKES COMPUTER RENTAL WE 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 SPERAS RESTAURANT
• TONY SPERA, PROP.
• TONYS RESTAURANT
• TONY 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

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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 PS 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

• DS PROFITS
• OR PS DAMAGES DIFFICULT TO SHOW
• COURT CAN TREBLE PS DAMAGES
• IF DS PROFITS AS REMEDY IS TOO SMALL/LARGE,
  COURT CAN ENTER A JUST AMOUNT
• 1117 (a)

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ATTORNEYS 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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DEFENDANTS REMEDIES

• ATTORNEYS FEES IN EXCEPTIONAL CASES
• 1117 (a)
• ORDER TO CANCEL REGISTRATION
• 1119

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• CASES
• KELLOGG
• XTREME PART 2