Public access property law

8/13/2019 Public access property law

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The Interest in

Public Access

Assignment 4


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Overview Last assignment showed the usages of

a trademark that its owner can control

through the actions for trademarkinfringement, dilution, and unfaircompetition.

This assignment looks at the uses oftrademarks that remain within thecontrol of the public.


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Point of Law Dawn Donut- the ability to enjoin others

from using a protected mark is not

triggered by registration alone. Theability to actually stop unauthorized usemay accrue only when the registered

owner enters, or plans to enter, theunauthorized users trading region.


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Point of Law L.L. Bean - trademark law generally

recognizes a privilege for use of marks forparodic or critical purposes.

Quality Inns-

(1) Family of Marks

(2) Issues with permitting use by 3rd

parties of infringing marks: Estoppel by Acquiescence

Abandonment


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Points of Law Davidoff- Resale of a trademarked

product that is materially different can

constitute a trademark infringement.


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Dawn Donut Company, Inc.

v. Harts Food Stores, Inc.

Issue: Whether the plaintiff, under itsfederally registered trademarks, is

entitled under the Lanham Act to enjointhe defendant from using the markDawnin connection with the retail

sale of doughnuts and baked goodswithin a 6 county area of New YorkState surrounding Rochester.


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Plaintiff licenses purchasers of its mixesto use its trademarks in connection with

the retail sales of food products madefrom the mixes, but has not licensed orotherwise exploited the mark at the

retail level in defendants market area

for ~30 years.


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Since 1922 plaintiff continuously used thetrademark Dawnon bags of doughnut mix

which it sells to bakers in various states.

Plaintiff has sold mixes to bakers inRochester but none of the purchasers useplaintiffs mark in connection with retail sales.


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Defendant owns and operates a retail grocerychain in NY. Products of defendants bakeryare distributed through the stores withdistribution to an area within a 45 mile radiusof Rochester.

The bakery corporation first used the imprintDawnin packaging in 1951.

The defendant had constructive notice ofplaintiffs marks in 1947, the effective date ofthe Lanham Act.


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Lanham Act:

Registration of a trademark on the principal

register is constructive notice of theregistrants claim of ownership.

Eliminated the defense of good faith andlack of knowledge.

Affords nationwide protection to registeredmarks.


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Rule: A registrant may enjoin only that concurrentuse which creates a likelihood of public confusion asto the origin of the products in connection with which

the marks are used.***If the use of the marks by the registrant and the

unauthorized user are confined to two sufficientlydistinct and geographically separate markets,with no likelihood that the registrant will expandhis use into defendants market, so that no publicconfusion is possible, then the registrant is notentitled to enjoin the junior users use of themark.


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The district court found that in view ofPs inactivity for ~30 years in exploiting

its trademarks in Ds trading area at theretail level either by advertising directed

at retail purchasers or retail salesthrough authorized licensed users, there

was no reasonable expectation that Pwould extend its retail operations intoDs trading area.


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Holding: Because there is no likelihood of confusion and

no likelihood that plaintiff will expand its retail use

of the mark into the defendants market area =>plaintiff is not entitled to relief under the Lanham

Act.

Because of the effect of the constructive notice

provision of the Lanham Act, should the plaintiffexpand its retail activities into the six countyarea, it may enjoin defendants use of the mark.


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L.L. Bean, Inc. v.

Drake Publishers, Inc. D published a parody of Ps famous catalog.

D owned a monthly periodical featuring adulterotic entertainment. One issue contained a2-page article that displayed a facsimile ofBeans trademark and featured explicitpictures. The article was labeled in thecontents page as humorand parody.

Issue: Whether enjoining the publication ofDs parody violates the first amendmentguarantees of freedom of expression.


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L.L. Bean, Inc. v.

Drake Publishers, Inc. Holding: It was a parody and was ok.

Ds use is editorial or artistic, not commercialuse of Ps mark.

The article was labeled as humorandparody.

The article only took up 2 pages of 100.

Neither the article nor the trademark wasfeatured on the front or back cover of themagazine (did not use the mark to identify orpromote the goods).


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Quality Inns International v.

McDonalds Corp.

Quality Inns announced a new chain ofeconomy hotels to be marketed under

the name McSleep Inn. McDonalds immediately sent a letter

stating it infringed on McDonalds

family of marks that are characterizedby the use of the prefix Mccombinedwith a generic word.


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McDonalds Corp.

McDonalds started focusing on a longdistance travel market by taking over tollwayrestaurants and converting them toMcDonalds restaurants.

McDonalds created language it calledMcLanguagefrom which it developed afamily of marks including marks outside thefood area related to its business such asMcStop, McKids, and McShuttle.

These marks combining Mcand a generic wordare fanciful -> strongest protection.


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McDonalds Corp.

P established there are many otherthird-party uses of Mc:

McHappyand McDonutsfor bakedgoods and donuts in Ohio and the midwest

McMaidin midwest

McDivotsfor golf accessories in CO

McBudfor florist in the midwest, etc.


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McDonalds Corp.

Permitting use by 3rd parties of infringingmarks can be relevant to specific issues:

(1) If a trademark owner has expressly orimpliedly given an assurance to another user thathe will not assert his trademark rights, he may bebarred from enforcing his mark against that userby reason of estoppel by acquiescence.

- Acquiescence may be inferred from conduct.- Delay in enforcement of a mark against a Dmay become relevant to estoppel byacquiescence.


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McDonalds Corp.

(2) 3rd party uses permitted by the owner of amark may also be probative of abandonmentof a mark by the owner.

- Abandoned: when any course of conduct ofthe owner, including acts of omission, causesthe mark to lose its significance as anindication of origin.

- Failure to take action against an infringerhas been held to be an act of omission.

- Once it is abandoned, it is in the public

domain and free for the public to use.


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McDonalds Corp.

As long as there is no abandonment orestoppel by acquiescence, a trademarkowners tolerance of 3rd party uses of hismarks will not bar enforcement of his rightsagainst an infringing user, but it may bear onthe issue of the strength of his mark.

A mark may be weakened to the point ofnarrow scope of enforcement, whichultimately becomes a question ofabandonment.


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McDonalds Corp.

P argued that Mchas become a genericprefix meaning thrifty, consistent, orconvenient.

Court held: This case is not analogous to a circumstance where a

product is referred to so frequently by brand name thateven competitive brands are called by the one name andthe brand identity is lost.

Each use of Mccreates an express or implied allusionto McDonalds.

Holding: There is sufficient likelihood thatconsumers will be confused.


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Davidoff & Cie, S.A. v.

PLD International Corp. Issue: Reselling of products.

First sale doctrine: A trademark owners

authorized initial sale of its product exhauststhe owners right to maintain control overwho thereafter resells the product.

Exception: The unauthorized resale of a

materially different product constitutesinfringement -> may confuse consumers anderode goodwill.


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PLD International Corp. P is the manufacturer of fragrance products.

P exclusively licenses a company to distribute

its products to retailers in the U.S.

D works outside of the approvedarrangement, acquiring Ps products that are

intended for overseas sale or that are sold induty-free sales, then distributing to discountretail stores in the U.S.


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PLD International Corp. When the D acquires the product, the batch

codes on the fragrance bottles are obliteratedwith an etching tool. (D claims they areremoved so the P doesnt know who soldthem to the D because P would stop selling tothem.)

Congress sought to protect 2 groups: (1) Consumers who purchase a product and

expect to receive that product every time

(2) Trademark owners spent time, energy and $


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PLD International Corp. District court found that etching the glass to

remove the batch code degrades the

appearance of the product and creates alikelihood of confusion. The consumer maythink the product has been harmed ortampered with.

This court held the same -> could adverselyaffect the Ps goodwill => trademarkinfringement.

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Public access property law