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Intellectual Property
Boston College Law School
March 30, 2009
TrademarkInfringement
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Advantages of Registration
Nationwide constructive use - priority
Nationwide constructive notice
Possibility of achieving incontestability
Presumption of validity at trial
Right to sue in federal court Availability of extra remedies (e.g. attorney
fees, treble damages, border exclusion )
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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 markin 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.
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1-800-Contacts v. WhenU
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Keyword Buys
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Infringement
Initial Questions
Issue of fact or issue of law?
Who must be confused?
How much confusion must there be?
Confused as to what?
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Likelihood of Confusion
Typical Factors (e.g. Polaroid, Sleekcraft, etc.)
Strength of mark
Proximity of goods
Similarity of marks
Actual confusion
Marketing channels
Types of goods and consumer care Defendants intent
Likelihood of expansion in product lines
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AMF v. Sleekcraft
AMF
SLICKCRAFT
Nescher
SLEEKCRAFT
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Examples of Similarity Sight
Squirt v. Quirst (softdrink)
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)
Apple v. Pineapple (computers
Pledge v. Promise (furniture polish)
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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)
Post-sale confusion
Reverse confusion
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Problem 5-5
Factors
Strength of mark
Proximity of goods
Similarity of marks
Actual confusion
Marketing channels
Types of goods and
consumer care Defendants intent
Likelihood of expansion in
product lines
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Private Labels
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Dilution
Classic examples
KODAK bicycles
BUICK aspirin
DUPONT shoes
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Federal Dilution
Lanham Act 43(c)
(1) [T]he owner of a famous mark that is
distinctive, inherently or through acquireddistinctiveness, shall be entitled to an
injunction against another person who
commences use of a mark in commerce that
is likely to cause dilution by blurring or
dilution by tarnishment of the famous mark
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Nabisco v. PF Brands
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Nabisco v. PF Brands
Elements of dilution claim
(1) Famous mark
(2) Distinctive mark
(3) Junior mark used in commerce
(4) Used after senior mark famous
(5) Dilutes distinctive character of seniormark
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Nabisco v. PF Brands
Dilution factors (pre-2006)
Distinctiveness
Similarity of marks Proximity of goods
Interrelationship of above elements
Shared consumers
Sophistication of consumers
Actual confusion
Adjectival or referential use
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Issues with Dilution
Standard for protection
Actual dilution or likelihood of dilution?
Tarnishment?
Marks entitled to protection
Niche fame or nationwide fame?
Inherent or acquired distinctiveness?
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Federal Dilution
Lanham Act 43(c)
(1) [T]he owner of a famous mark that is
distinctive, inherently or through acquireddistinctiveness, shall be entitled to an
injunction against another person who
commences use of a mark in commerce that
is likely to cause dilution by blurring or
dilution by tarnishment of the famous mark
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Federal Dilution
Lanham Act 43(c) (B) `dilution by blurring' is association arising from the similarity
between a mark or trade name and a famous mark that impairs thedistinctiveness of the famous mark. In determining whether a mark ortrade name is likely to cause dilution by blurring, the court may considerall relevant factors, including the following:
(i) The degree of similarity between the mark or trade name and the famousmark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging insubstantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create anassociation with the famous mark.
(vi) Any actual association between the mark or trade name and the famousmark.
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Federal Dilution
Lanham Act 43(c)
(C) `dilution by tarnishment' is association
arising from the similarity between a mark ortrade name and a famous mark that harms the
reputation of the famous mark.
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Famous?
Arthur the Aardvark
Clue (board game)
Candyland (board game) Hotmail (website)
Childrens Place (store)
The Sporting News (mag)
WaWa (grocery) Star Market (grocery)
Famous
Not famous
Famous Famous
Not famous
Famous
Famous Not famous
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Federal Dilution
Lanham Act 43(c)
(2)(A) a mark is famous if it is widely recognized bythe general consuming public of the United States as
a designation of source of the goods or services of themark's owner. In determining whether a mark possessesthe requisite degree of recognition, the court mayconsider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of
advertisingand publicity of the mark,
(ii) The amount, volume, and geographic extent of sales ofgoods or services offered under the mark.
(iii) The extent ofactual recognition of the mark.
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Mead v. Toyota
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Licensing and Franchising
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Problem 5-10
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Administrative
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