Trademark and Unfair Comp.

1
Trademark and Unfair Comp.

• Boston College Law School
• October 19, 2004
• Likelihood of Confusion

2
Causes of Action

• Trademark Causes of Action
• Infringement
• Dilution
• False Advertising
• Cybersquatting

3
Infringement

• Lanham Act 32(1) (15 U.S.C. 1114)
• Any person who shall, without the consent of the
  registrant -
• (a) use in commerce any reproduction,
  counterfeit, copy or colorable imitation of a
  registered mark in connection with the sale,
  offering for sale, distribution, or advertising
  of any goods or services on or in connection with
  which such use is likely to cause confusion, or
  to cause mistake, or to deceive shall be liable
  in a civil action by the registrant for the
  remedies hereinafter provided.

4
Infringement

• Initial Questions
• Issue of fact or issue of law?
• Who must be confused?
• How much confusion must there be?
• Confused as to what?

5
Infringement

• Types of confusion
• Product (e.g. Mike shoes)
• Source (e.g. Nike mittens)
• Sponsorship (e.g. Nike on soup can)
• Initial interest (e.g. buy Nikes here)
• Reverse confusion

6
Polaroid v. Polarad287 F.2d 492 (2d Cir. 1961)

• Polaroid Factors
• (1) Strength of plaintiffs mark
• (2) Degree of similarity of marks
• (3) Proximity of products or services
• (4) Likelihood of plaintiff bridging the gap
• (5) Evidence of actual confusion
• (6) Defendants good faith
• (7) Quality of defendants products
• (8) Sophistication of buyers

7
Examples of Mark Similarity

• Sight
• Squirt v. Quirst (soft drinks)
• Cartier v. Cattier (cosmetics)
• Tornado v. Vornado (appliances)
• Sound
• Cygon v. Phygon (insecticide)
• Huggies v. Dougies (diapers)
• Bonamine v. Dramamine (drugs)
• Meaning
• Cyclone v. Tornado (link fencing)
• Pledge v. Promise (furniture polish)
• Mountain King v. Alpine Emperor (christmas trees)

8
EG Gallo v. Gallo Nero
9
Banfi v. Kendall-Jackson
10
Hypothetical
Nescher SLEEKCRAFT
AMF SLICKCRAFT

• Recreational boats
• Used for waterskiing, fishing, etc
• Local retail boat stores
• 50 million annual sales

• Power boats
• Used for racing, etc.
• Local retail boat stores
• 6 million annual sales

11
Trade Dress Infringement

• Lanham Act 43(a) (15 U.S.C. 1125(a))
• (a) (1) Any person who, on or in connection with
  any goods or services, or any container for
  goods, uses in commerce any word, term, name,
  symbol, or device, or any combination thereof, or
  any false designation of origin which --
• (A) is likely to cause confusion, or to cause
  mistake, or to deceive as to the affiliation,
  connection, or association of such person or with
  another person shall be liable in a civil
  action .

12
Private Labels
13
Problem
14
Administrative Details

• Next Assignment
• Read VI.A.2 through p. 440
• Up to, but not including, Mastercrafters