TRADEMARKS 2002-03 Lingerie to Lawn Care Austin Intellectual Property Law Association May 14, 2003 Steve Meleen Fulbright & Jaworski

TRADEMARKS 2002-03TRADEMARKS 2002-03Lingerie to Lawn CareLingerie to Lawn Care

Austin Intellectual Property Law AssociationAustin Intellectual Property Law Association

May 14, 2003May 14, 2003

Steve MeleenSteve Meleen

Fulbright & JaworskiFulbright & Jaworski

2002 Trademark Cases2002 Trademark CasesAn OverviewAn Overview

Another Busy YearAnother Busy Year Over 40 Cases Discussed in TIPLJ Article Over 40 Cases Discussed in TIPLJ Article

Special thanks to Susan Hightower and Martin Special thanks to Susan Hightower and Martin HernandezHernandez

Supreme Court Continues to Show Interest in Supreme Court Continues to Show Interest in Trademark CasesTrademark Cases

Victoria’s SecretVictoria’s Secret decision (March 4, 2003) decision (March 4, 2003) DastarDastar oral arguments held April 2, 2003 oral arguments held April 2, 2003

Lots of Dilution and Trade Dress CasesLots of Dilution and Trade Dress Cases Internet Cases Down Overall, But Still Some Internet Cases Down Overall, But Still Some

Important DevelopmentsImportant Developments

The Cases … Why Should You Care The Cases … Why Should You Care About This Particular Case?About This Particular Case?

Well-known, or Someone Might Well-known, or Someone Might Ask You About ItAsk You About It

Helpful Analysis or Part of a TrendHelpful Analysis or Part of a Trend Interesting FactsInteresting Facts Most Importantly, What Can You Most Importantly, What Can You

Cite It For?Cite It For?

Moseley v. V Secret Catalogue, Inc.Moseley v. V Secret Catalogue, Inc.537 U.S. 537 U.S. (2003) (2003)

This Just In: FTDA Requires Actual DilutionThis Just In: FTDA Requires Actual Dilution VICTORIA’S SECRET vs. “Victor’s Little VICTORIA’S SECRET vs. “Victor’s Little

Secret” for a store selling adult productsSecret” for a store selling adult products District court found tarnishment and Sixth District court found tarnishment and Sixth

Circuit affirmed, without requiring a showing Circuit affirmed, without requiring a showing that dilution had occurredthat dilution had occurred

Circuit Split:Circuit Split:Actual Dilution - 4th, 5thActual Dilution - 4th, 5thLikelihood of Dilution - 2nd, 6th, othersLikelihood of Dilution - 2nd, 6th, others


Without much discussion, the Court determines Without much discussion, the Court determines that the FTDA requires “actual dilution”that the FTDA requires “actual dilution” FTDA provides relief against a use that “FTDA provides relief against a use that “causes causes

dilutiondilution of the distinctive quality” of the famous of the distinctive quality” of the famous mark (emphasis by the Court)mark (emphasis by the Court)

Contrasts with state dilution statutes, which Contrasts with state dilution statutes, which “repeatedly refer to a ‘likelihood’ of harm, rather “repeatedly refer to a ‘likelihood’ of harm, rather than to a completed harm.”than to a completed harm.”

““This text unambiguously requires a showing of This text unambiguously requires a showing of actual dilution, rather than a likelihood of dilution.”actual dilution, rather than a likelihood of dilution.”


Court explicitly stops short of the 4th Circuit Court explicitly stops short of the 4th Circuit Ringling Bros.Ringling Bros. standard standard ““Of course, that does not mean that the Of course, that does not mean that the

consequences of dilution, such as an actual loss of consequences of dilution, such as an actual loss of sales or profits, must also be proved.”sales or profits, must also be proved.”

Also makes clear that “mental association” is Also makes clear that “mental association” is not sufficient to establish actionable dilution not sufficient to establish actionable dilution (“at least where the marks are not identical”)(“at least where the marks are not identical”) ““such mental association will not necessarily reduce such mental association will not necessarily reduce

the capacity of the famous mark to identify the the capacity of the famous mark to identify the goods of its owner”goods of its owner”


Reversed and remandedReversed and remanded ““There is a complete lack of evidence of any lessening of the There is a complete lack of evidence of any lessening of the

capacity of the VICTORIA’S SECRET mark to identify capacity of the VICTORIA’S SECRET mark to identify goods or services”goods or services”

Court is unsympathetic to the difficulty of obtaining Court is unsympathetic to the difficulty of obtaining evidence of actual dilutionevidence of actual dilution ““Whatever difficulties of proof may be entailed, they are not Whatever difficulties of proof may be entailed, they are not

an acceptable reason for dispensing with proof of an essential an acceptable reason for dispensing with proof of an essential element of a statutory violation.”element of a statutory violation.”

But, “direct evidence of dilution such as consumer surveys” But, “direct evidence of dilution such as consumer surveys” may not be necessary if “actual dilution can be reliably proven may not be necessary if “actual dilution can be reliably proven through circumstantial evidence--the obvious case is one through circumstantial evidence--the obvious case is one where the junior and senior marks are identical.”where the junior and senior marks are identical.”


Intriguing dicta - language arguably supporting Intriguing dicta - language arguably supporting contentions that:contentions that: 1) FTDA protection is confined to identical uses of famous 1) FTDA protection is confined to identical uses of famous

marks; and marks; and

2) The FTDA only covers blurring, not tarnishment (because 2) The FTDA only covers blurring, not tarnishment (because it refers only to “dilution of the distinctive quality of a it refers only to “dilution of the distinctive quality of a trade name or trademark” and omits “injury to business trade name or trademark” and omits “injury to business reputation”)reputation”)

3) The dilution doctrine should only protect arbitrary, coined, 3) The dilution doctrine should only protect arbitrary, coined, or fanciful marks (based on Schecter article)or fanciful marks (based on Schecter article)

Note to Congress: When you fix “causes dilution,” Note to Congress: When you fix “causes dilution,” take a look at these issues also.take a look at these issues also.


Why You Care:Why You Care: Another Supreme Court trademark decision Another Supreme Court trademark decision

(remember when that used to be a big deal?)(remember when that used to be a big deal?) 39,000 copies of Victoria’s Secret catalog 39,000 copies of Victoria’s Secret catalog

distributed each year in Elizabethtown, distributed each year in Elizabethtown, Kentucky (population 22,000)Kentucky (population 22,000)

Just My Opinion:Just My Opinion: A temporary setback for trademark protection, A temporary setback for trademark protection,

a victory for statutory interpretation, and a victory for statutory interpretation, and probably good for everyone in the long runprobably good for everyone in the long run

Dastar Corp. v. Twentieth Century Fox Dastar Corp. v. Twentieth Century Fox Film Corp.Film Corp.No. 02-428 (S.Ct.)No. 02-428 (S.Ct.)

From an unpublished Ninth Circuit opinion in From an unpublished Ninth Circuit opinion in a reverse passing off casea reverse passing off case 20th Century Fox owns rights to “Crusades In Europe” 20th Century Fox owns rights to “Crusades In Europe”

TV series, based on Dwight Eisenhower’s bookTV series, based on Dwight Eisenhower’s book Dastar essentially repackaged (with minor additions) the Dastar essentially repackaged (with minor additions) the

series and sold it as “Campaigns in Europe”series and sold it as “Campaigns in Europe”

Ninth Circuit: Ninth Circuit: This was a “bodily appropriation,” without proper This was a “bodily appropriation,” without proper

attribution, so no need to show likelihood of confusion attribution, so no need to show likelihood of confusion The Lanham Act permits doubling the profit award “to The Lanham Act permits doubling the profit award “to

deter future infringing conduct”deter future infringing conduct”


Questions Presented (abridged):Questions Presented (abridged):

1. Does Section 43(a) of the Lanham Act require 1. Does Section 43(a) of the Lanham Act require an independent showing that consumers will an independent showing that consumers will likely be confused by a defendant’s false likely be confused by a defendant’s false designation of origin?designation of origin?

2. Does Section 35(a) authorize enhancement of 2. Does Section 35(a) authorize enhancement of a monetary award solely for deterrent purposes? a monetary award solely for deterrent purposes?


AIPLA and INTA amicus briefs agreed:AIPLA and INTA amicus briefs agreed:

(1) likelihood of confusion is required(1) likelihood of confusion is required Likelihood of confusion is an explicit requirement of Likelihood of confusion is an explicit requirement of

Section 43(a)(1)(a). That requirement also prevents Section 43(a)(1)(a). That requirement also prevents the constitutional problem that could arise from a the constitutional problem that could arise from a potentially perpetual copyrightpotentially perpetual copyright

(2) a profits award cannot be enhanced for (2) a profits award cannot be enhanced for solely deterrent purposessolely deterrent purposes

A sum awarded under Section 35(a) “shall constitute A sum awarded under Section 35(a) “shall constitute compensation and not a penalty.” Thus, while an compensation and not a penalty.” Thus, while an award may have a deterrent effect, it must have some award may have a deterrent effect, it must have some compensatory purpose as well.compensatory purpose as well.

Toro Co. v. ToroHead, Inc.Toro Co. v. ToroHead, Inc.61 USPQ2d 1164 (TTAB 2001)61 USPQ2d 1164 (TTAB 2001)

First Substantive TTAB Decision on DilutionFirst Substantive TTAB Decision on Dilution Sets high standard for showing fameSets high standard for showing fame

““In effect, an owner of a famous mark is attempting to In effect, an owner of a famous mark is attempting to demonstrate that the English language has changed.”demonstrate that the English language has changed.”

Also looks at uniquenessAlso looks at uniquenessThe term must be “now primarily associated with the The term must be “now primarily associated with the

owner of the mark even . . . outside the context of the owner of the mark even . . . outside the context of the owners goods or services.owners goods or services.

TORO not a famous markTORO not a famous markDespite $1.3 billion annual sales and much advertisingDespite $1.3 billion annual sales and much advertising

Toro Co. v. ToroHead, Inc.Toro Co. v. ToroHead, Inc.61 USPQ2d 1164 (TTAB 2001)61 USPQ2d 1164 (TTAB 2001)

Why You Care:Why You Care: TTAB’s first substantive dilution caseTTAB’s first substantive dilution case Citable for: Defending a dilution claim, where Citable for: Defending a dilution claim, where

the fame or uniqueness of plaintiff’s mark is the fame or uniqueness of plaintiff’s mark is questionablequestionable

Bose Corp. v. QSC Audio ProductsBose Corp. v. QSC Audio Products293 F.3d 1367, 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002)293 F.3d 1367, 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002)

Federal Circuit reverses TTAB finding of Federal Circuit reverses TTAB finding of no likelihood of confusionno likelihood of confusion Unlike TTAB in Unlike TTAB in ToroToro, relies on evidence of , relies on evidence of

sales volume, advertising, and critical acclaim sales volume, advertising, and critical acclaim as evidence of strength and fame of Bose’s as evidence of strength and fame of Bose’s WAVE marksWAVE marks

Why You Care:Why You Care: Citable for proving fame through indirect Citable for proving fame through indirect evidenceevidence

Te-Ta-Ma Truth Foundation - Family of Te-Ta-Ma Truth Foundation - Family of Uri, Inc. v. World Church of the CreatorUri, Inc. v. World Church of the Creator

297 F.3d 662 (7th Cir. 2002)297 F.3d 662 (7th Cir. 2002)

CHURCH OF THE CREATOR is CHURCH OF THE CREATOR is descriptive (with secondary meaning), not descriptive (with secondary meaning), not genericgeneric

Why You Care:Why You Care: This is the trademark case where the defendant This is the trademark case where the defendant

was arrested for trying to have the judge killed.was arrested for trying to have the judge killed.

Karl Storz Endoscopy-America v. Karl Storz Endoscopy-America v. Surgical Technologies Inc.Surgical Technologies Inc.

285 F.3d 848, 62 U.S.P.Q. 2d 1273 (9th Cir. 2002)285 F.3d 848, 62 U.S.P.Q. 2d 1273 (9th Cir. 2002)

Repaired/rebuilt surgical endoscopesRepaired/rebuilt surgical endoscopes If rebuilding is so significant that it’s really a If rebuilding is so significant that it’s really a

new product, it is an infringing use of the new product, it is an infringing use of the product’s original markproduct’s original mark

Includes a four-part test to determine whether a Includes a four-part test to determine whether a different product resultsdifferent product results

Why You Care:Why You Care: Really only if you have a case involving Really only if you have a case involving

remanufactured goodsremanufactured goods Also citable for post-sale confusionAlso citable for post-sale confusion

Herbko Int’l, Inc. v. Kappa Books, Inc.Herbko Int’l, Inc. v. Kappa Books, Inc.38 F.3d 1156, 64 USPQ 1375 (Fed. Cir. 2002)38 F.3d 1156, 64 USPQ 1375 (Fed. Cir. 2002)

““Analogous Use” may support a priority Analogous Use” may support a priority date, but a book title is still not a mark date, but a book title is still not a mark Single use may create priority, if (1) designed Single use may create priority, if (1) designed

to create an association with goods or services to create an association with goods or services and (2) timely followed by trademark useand (2) timely followed by trademark use

Here, no priority because the first use was for a Here, no priority because the first use was for a book titlebook title

Reiterates Federal Circuit law that the title of a Reiterates Federal Circuit law that the title of a single book is never source-identifyingsingle book is never source-identifying

Why You Care:Why You Care: Good discussion of analogous use doctrineGood discussion of analogous use doctrine

Promatek Indus. v. Equitrac Corp.Promatek Indus. v. Equitrac Corp.300 F.3d 808 (7th Cir. 2002)300 F.3d 808 (7th Cir. 2002)

Servicer of COPITRAK equipment used Servicer of COPITRAK equipment used that mark in metatags on its websitethat mark in metatags on its website 7th Cir. Affirms preliminary injunction 7th Cir. Affirms preliminary injunction

requiring disclaimer and hyperlink to plaintiff’s requiring disclaimer and hyperlink to plaintiff’s websitewebsite

Why You Care:Why You Care: Citable for a plaintiff alleging initial-interest Citable for a plaintiff alleging initial-interest

confusion (with good quotes)confusion (with good quotes) Injunction requires hyperlink to plaintiff’s site Injunction requires hyperlink to plaintiff’s site

(somewhat unusual)(somewhat unusual)

Mattel Inc. v. MCA Records Inc.Mattel Inc. v. MCA Records Inc.296 F.3d 894, 63 U.S.P.Q. 2d 1715 (9th Cir. 2002)296 F.3d 894, 63 U.S.P.Q. 2d 1715 (9th Cir. 2002)

““Barbie Girl” song parodying the doll was Barbie Girl” song parodying the doll was not actionablenot actionable Barbie doll was the target of the parody, unlike Barbie doll was the target of the parody, unlike

Dr. SuessDr. Suess 9th Cir. found use was not “commercial”9th Cir. found use was not “commercial”

Analysis under First Amendment doctrine, even Analysis under First Amendment doctrine, even though “Barbie” was used to sell copies of the songthough “Barbie” was used to sell copies of the song

““inextricably intertwined with expressive elements”inextricably intertwined with expressive elements”

Why You Care:Why You Care: Citable for a significant expansion of Citable for a significant expansion of

“noncommercial use” exemption to FTDA“noncommercial use” exemption to FTDA Free lyrics sheet included!Free lyrics sheet included!

Playboy Enters., Inc. v. WellesPlayboy Enters., Inc. v. Welles279 F.3d 796 (9th Cir. 2002)279 F.3d 796 (9th Cir. 2002)

““Nominative fair use”Nominative fair use” Terri Welles really was “Playmate of the Year” Terri Welles really was “Playmate of the Year”

in 1981in 1981 Did not imply any current sponsorshipDid not imply any current sponsorship Had to remove stylized “PMOY ‘81” wallpaper Had to remove stylized “PMOY ‘81” wallpaper

from sitefrom site

Why You Care:Why You Care: Playboy, a relatively new trademark doctrine, Playboy, a relatively new trademark doctrine,

… people are going to talk… people are going to talk

Cohn v. Petsmart Inc.Cohn v. Petsmart Inc.281 F.3d 837 (9th Cir. 2002)281 F.3d 837 (9th Cir. 2002)

Same mark + same services = summary Same mark + same services = summary judgment for Defendantjudgment for Defendant Local veterinarian: “Where Pets are Family”Local veterinarian: “Where Pets are Family” Petsmart: “Where Pets are Family” (national Petsmart: “Where Pets are Family” (national

pet supply store with an in-store animal clinic)pet supply store with an in-store animal clinic) 9th Circuit affirms summary judgment 9th Circuit affirms summary judgment

Similarity of the marks favors defendant, because Similarity of the marks favors defendant, because both parties use with their house markboth parties use with their house mark

Pet owners are selective in choosing vetPet owners are selective in choosing vet Six years without actual confusion*Six years without actual confusion*

Why You Care:Why You Care: So you can explain to me how this can be right So you can explain to me how this can be right

(looks like classic reverse confusion to me)(looks like classic reverse confusion to me)

Could it be another . . . Could it be another . . .

? ? ?? ? ?Or just another 9th Circuit Trademark Case?Or just another 9th Circuit Trademark Case?

New York Stock Exchange Inc. v. New York, New York Stock Exchange Inc. v. New York, New York Hotel LLCNew York Hotel LLC

293 F.3d 550,293 F.3d 550, 62 U.S.P.Q.2d 1260 (2d Cir. 2002)62 U.S.P.Q.2d 1260 (2d Cir. 2002)

New York, New York casino in Las Vegas used replica New York, New York casino in Las Vegas used replica of NYSE building façade - “New York $lot Exchange”of NYSE building façade - “New York $lot Exchange”

NYSE claimed infringement, blurring and tarnishmentNYSE claimed infringement, blurring and tarnishment Summary Judgment for defendant mostly affirmedSummary Judgment for defendant mostly affirmed

obvious pun, no confusionobvious pun, no confusion most NYSE marks not inherently distinctive, so no most NYSE marks not inherently distinctive, so no

FTDA protection (exception: registered logo w/ FTDA protection (exception: registered logo w/ façade - that part remanded)façade - that part remanded)

NY State tarnishment claims remanded as wellNY State tarnishment claims remanded as well

Why You Care:Why You Care: Pretty widely publicizedPretty widely publicized Vegas, baby, Vegas.Vegas, baby, Vegas.

Deere & Co. v. MTD Products, Inc. Deere & Co. v. MTD Products, Inc. 2002 WL 1837402 (S.D.N.Y. 2002)2002 WL 1837402 (S.D.N.Y. 2002)

““The Second Circuit Two-Step”The Second Circuit Two-Step” Equal parts Equal parts Wal-MartWal-Mart (color mark is never (color mark is never

inherently distinctive) and inherently distinctive) and TCPIPTCPIP (in 2nd Cir., (in 2nd Cir., mark must be inherently distinctive for FTDA)mark must be inherently distinctive for FTDA)

Thus, Deere’s green and yellow color mark is not Thus, Deere’s green and yellow color mark is not eligible for dilution protectioneligible for dilution protection

But thanks for playing - lovely parting giftsBut thanks for playing - lovely parting gifts

Why You Care:Why You Care: You probably don’t want to bring a color-based You probably don’t want to bring a color-based

dilution case in the Second Circuitdilution case in the Second Circuit

Eppendorf-Netheler-Hinz HMBH v. Eppendorf-Netheler-Hinz HMBH v. Ritter HMBHRitter HMBH

289 F.3d 351, 62 U.S.P.Q.2d 1534 (5th Cir. 2002)289 F.3d 351, 62 U.S.P.Q.2d 1534 (5th Cir. 2002)

Fifth Circuit applies Fifth Circuit applies TrafFixTrafFix Alleged trade dress of plaintiff’s pipette tips Alleged trade dress of plaintiff’s pipette tips

was functionalwas functional Reverses $1.75 million awardReverses $1.75 million award Availability of alternative designs is irrelevant Availability of alternative designs is irrelevant

after after TrafFixTrafFix

Why You Care:Why You Care: It’s the Fifth Circuit - you need to know this It’s the Fifth Circuit - you need to know this

stuffstuff

Abercrombie & Fitch Stores Inc. v. Abercrombie & Fitch Stores Inc. v. American Eagle Outfitters Inc.American Eagle Outfitters Inc.


Abercrombie’s alleged store trade dress is Abercrombie’s alleged store trade dress is functionalfunctional included the A&F clothing designs, advertising included the A&F clothing designs, advertising

displays, and the use of college students as sales displays, and the use of college students as sales associatesassociates

Why You Care:Why You Care: So you don’t argue that using college students as So you don’t argue that using college students as

sales associates is part of protectible trade dresssales associates is part of protectible trade dress

Porsche Cars North America, Inc. v. Porsche Cars North America, Inc. v. Porsche.netPorsche.net


Ongoing saga of Porsche domain namesOngoing saga of Porsche domain names After ACPA enacted, Porsche re-filed in rem After ACPA enacted, Porsche re-filed in rem

action against 128 domain namesaction against 128 domain names British citizen who owned two names British citizen who owned two names

consented, on eve of trial, to jurisdiction in CAconsented, on eve of trial, to jurisdiction in CA District Court said this destroyed in rem District Court said this destroyed in rem

juisdictionjuisdiction

Fourth Circuit: in rem jurisdiction Fourth Circuit: in rem jurisdiction determined at time of filingdetermined at time of filing Also, challenge to in rem jurisdiction waivedAlso, challenge to in rem jurisdiction waived

Harrods Ltd. v. Sixty Internet Domain Harrods Ltd. v. Sixty Internet Domain NamesNames


ACPA in rem jurisdiction is available not ACPA in rem jurisdiction is available not only for ACPA claims, but any Lanham Act only for ACPA claims, but any Lanham Act violationviolation ACPA: may file in rem action if domain name ACPA: may file in rem action if domain name

violates “any right” of the owner of a mark violates “any right” of the owner of a mark registered or protected under 43(a) or (c).registered or protected under 43(a) or (c).

Why You Care:Why You Care: very helpful if you need to rely on in rem very helpful if you need to rely on in rem

jurisdiction, but are concerned about ability of jurisdiction, but are concerned about ability of prove “bad faith” element of ACPAprove “bad faith” element of ACPA

Nissan Motor Co., Ltd. v. Nissan Computer Nissan Motor Co., Ltd. v. Nissan Computer 231 F. Supp.2d 977 (C.D. Cal. 2002)231 F. Supp.2d 977 (C.D. Cal. 2002)

Another ongoing sagaAnother ongoing saga Uzi Nissan registered nissan.com for his computer Uzi Nissan registered nissan.com for his computer

company in 1994. In prior decision, court found for company in 1994. In prior decision, court found for Nissan Motor on dilution claim.Nissan Motor on dilution claim.

No transfer of domain names - noncommercial speech No transfer of domain names - noncommercial speech on site does not violate FTDAon site does not violate FTDA

But, no “disparaging remarks or negative commentary” But, no “disparaging remarks or negative commentary” about Nissan Motor -- that use is “sufficiently about Nissan Motor -- that use is “sufficiently commercial” to invoke FTDAcommercial” to invoke FTDA

So, Uzi keeps his sites but must be niceSo, Uzi keeps his sites but must be nice

Why You Care:Why You Care: Citable for (controversial) proposition that criticism Citable for (controversial) proposition that criticism

may be commercial speechmay be commercial speech

Barcarmerica International USA Trust v. Barcarmerica International USA Trust v. Tyfield Importers Inc.Tyfield Importers Inc.


LEONARDO DA VINCI wineLEONARDO DA VINCI wine Plaintiff licensed mark to a third partyPlaintiff licensed mark to a third party

no quality control provision in license, and plaintiff no quality control provision in license, and plaintiff not familiar with quality control effortsnot familiar with quality control efforts

Summary judgment of abandonment affirmedSummary judgment of abandonment affirmed whether licensee’s wine was objectively “good” is whether licensee’s wine was objectively “good” is

irrelevant - Barcamerica had no roleirrelevant - Barcamerica had no role

Why You Care:Why You Care: Good reminder of the dangers of licensing with Good reminder of the dangers of licensing with

no quality controlno quality control

Tamko Roofing Products, Inc. v. Ideal Tamko Roofing Products, Inc. v. Ideal Roofing Co., Ltd.Roofing Co., Ltd.

282 F.3d 23 (1st Cir. 2002)282 F.3d 23 (1st Cir. 2002)

First Circuit affirms award of over First Circuit affirms award of over $700,000 in profits and attorney fees$700,000 in profits and attorney fees Willful infringement is sufficient, rejecting Willful infringement is sufficient, rejecting

defendant’s argument that fraud or bad faith is defendant’s argument that fraud or bad faith is required for a case to be “exceptional”required for a case to be “exceptional”

““willfulness short of bad faith or fraud will suffice willfulness short of bad faith or fraud will suffice when equitable considerations justify an award and when equitable considerations justify an award and the district court supportably finds the case the district court supportably finds the case exceptional”exceptional”

Why You Care:Why You Care: Damages and attorney fees awardedDamages and attorney fees awarded

Quick Technologies, Inc. v. The Sage Quick Technologies, Inc. v. The Sage Group PLCGroup PLC

313 F.3d 338 (5th Cir. 2002)313 F.3d 338 (5th Cir. 2002)

Willful infringement is not a prerequisite to Willful infringement is not a prerequisite to an award of profitsan award of profits Contrary jury instruction was erroneousContrary jury instruction was erroneous But, harmless error because equity did not weigh But, harmless error because equity did not weigh

in favor of awardin favor of award Why You Care:Why You Care:

Citable to show that you can get monetary relief Citable to show that you can get monetary relief without willful infringementwithout willful infringement

But … cite it somewhere outside the 5th Circuit But … cite it somewhere outside the 5th Circuit because you’re not likely to get any $$ herebecause you’re not likely to get any $$ here

R.C. Bigelow, Inc. v. Liberty Mutual R.C. Bigelow, Inc. v. Liberty Mutual Insurance Co.Insurance Co.

287 F.3d 242, 62 U.S.P.Q.2d 1529 (2d Cir. 2002)

Second Circuit: TSecond Circuit: Trade dress infringement rade dress infringement claim covered under “advertising injury” claim covered under “advertising injury” policy provisionpolicy provision Based on specific policy definition: “copying” Based on specific policy definition: “copying”

advertising ideas or advertising styleadvertising ideas or advertising style Also based on Connecticut duty-to-defend lawAlso based on Connecticut duty-to-defend law Your mileage may vary (based on State and Your mileage may vary (based on State and

policy provisions)policy provisions) Why You Care:Why You Care:

Coverage cases have gone both ways - chalk Coverage cases have gone both ways - chalk this one up for the insuredthis one up for the insured

Waco International Inc. v. KHK Waco International Inc. v. KHK Scaffolding Houston Inc. Scaffolding Houston Inc.


Be careful what you seizeBe careful what you seize Fifth Circuit affirms award of over $1 million Fifth Circuit affirms award of over $1 million

for wrongful seizure under § 34(d)(11)for wrongful seizure under § 34(d)(11) Products themselves bore no mark (infringement Products themselves bore no mark (infringement

claim based on invoices and promotional material)claim based on invoices and promotional material) KHK’s reference to Waco in claiming compatibility KHK’s reference to Waco in claiming compatibility

is a fair useis a fair use

Why You Care:Why You Care: If you plan to seize counterfeit goods, be sure If you plan to seize counterfeit goods, be sure

you’re rightyou’re right

Barcelona.com, Inc. v. Excelentisimo Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De BarcelonaAyuntamiento De Barcelona

189 F. Supp. 2d 367, 63 U.S.P.Q. 2d 1189 (E.D. Va. 2002)189 F. Supp. 2d 367, 63 U.S.P.Q. 2d 1189 (E.D. Va. 2002)

ACPA protection extended to foreign marksACPA protection extended to foreign marks City Council of Barcelona awarded City Council of Barcelona awarded

“barcelona.com” under ACPA, based on “barcelona.com” under ACPA, based on Spanish trademarks incorporating “Barcelona”Spanish trademarks incorporating “Barcelona”

““It is untenable to suppose that Congress, aware of It is untenable to suppose that Congress, aware of the fact that the internet is so international in nature, the fact that the internet is so international in nature, only intended for U.S. trademarks to be protected.”only intended for U.S. trademarks to be protected.”

Why You Care:Why You Care: Also received a lot of publicityAlso received a lot of publicity Interesting twist on extraterritorial application Interesting twist on extraterritorial application

of the Lanham Actof the Lanham Act

Fashion Boutique of Short Hills, Inc. v. Fashion Boutique of Short Hills, Inc. v. Fendi USA, Inc.Fendi USA, Inc.314 F.3d 48 (2d Cir. 2002)314 F.3d 48 (2d Cir. 2002)

Second Circuit adopts test for what Second Circuit adopts test for what constitutes “commercial advertising or constitutes “commercial advertising or promotion”promotion” must be (1) commercial speech; (2) for the must be (1) commercial speech; (2) for the

purpose of influencing consumers to buy purpose of influencing consumers to buy defendant’s goods or services; and (3) although defendant’s goods or services; and (3) although representations less formal than those made as representations less formal than those made as part of a classic advertising campaign may part of a classic advertising campaign may suffice, they must be disseminated sufficiently suffice, they must be disseminated sufficiently to the relevant public.to the relevant public.

Fashion Boutique of Short Hills, Inc. v. Fashion Boutique of Short Hills, Inc. v. Fendi USA, Inc.Fendi USA, Inc.314 F.3d 48 (2d Cir. 2002)314 F.3d 48 (2d Cir. 2002)

One store’s employees bad-mouthing One store’s employees bad-mouthing another’s (up to 27 incidents) is not another’s (up to 27 incidents) is not “advertising”“advertising”

Why You Care:Why You Care: Issue of first impression for 2nd CircuitIssue of first impression for 2nd Circuit

Scotts Co. v. United Industries Corp.Scotts Co. v. United Industries Corp.315 F.3d 264 (4th Cir. 2002)315 F.3d 264 (4th Cir. 2002)

Fourth Circuit vacates preliminary Fourth Circuit vacates preliminary injunction based on false advertisinginjunction based on false advertising File under “Helpful life information I learned File under “Helpful life information I learned

from trademark cases”:from trademark cases”: chemical crabgrass chemical crabgrass killers only work before crabgrass sprouts, or killers only work before crabgrass sprouts, or within four weeks after, not on mature plantswithin four weeks after, not on mature plants

Defendant’s package had a picture of mature Defendant’s package had a picture of mature crabgrass and claimed it “prevents” crabgrasscrabgrass and claimed it “prevents” crabgrass

Scotts said that conveyed false messagesScotts said that conveyed false messages

Scotts Co. v. United Industries Corp.Scotts Co. v. United Industries Corp.315 F.3d 264 (4th Cir. 2002)315 F.3d 264 (4th Cir. 2002)

Fourth Circuit disagreed: it does “prevent” Fourth Circuit disagreed: it does “prevent” mature crabgrass, it just doesn’t kill it.mature crabgrass, it just doesn’t kill it.

Scotts’ survey evidence (two focus groups plus Scotts’ survey evidence (two focus groups plus survey of 40 customers) were “utterly survey of 40 customers) were “utterly unreliable” on the relevant questionunreliable” on the relevant question

Emphasizes importance of balancing harms; not Emphasizes importance of balancing harms; not discounting defendant’s harm as “self-inflicted”discounting defendant’s harm as “self-inflicted”

Why you care:Why you care: Good for defendant resisting preliminary injunctionGood for defendant resisting preliminary injunction If you want to prevent crabgrass, try again next yearIf you want to prevent crabgrass, try again next year

TRADEMARKS 2002-03TRADEMARKS 2002-03Lingerie to Lawn CareLingerie to Lawn Care

Austin Intellectual Property Law AssociationAustin Intellectual Property Law Association

May 14, 2003May 14, 2003

Steve MeleenSteve Meleen

Fulbright & JaworskiFulbright & Jaworski

Documents

TRADEMARKS 2002-03 Lingerie to Lawn Care Austin Intellectual Property Law Association May 14, 2003 Steve Meleen Fulbright & Jaworski