Trademarks Rowe Fall '10

7/16/2019 Trademarks Rowe Fall '10

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Trademarks Outline (Rowe)Lauren Millcarek

As of: December 2, 2010

I. Table of Contentsa. Distinctiveness

i. Distinctiveness vs. Descriptivenessii. Generic Terms

iii. Trade Dressiv. Other Source Identifiers

b. Functionalityi. Functionality Doctrine

ii. Utilitarian Functionalityiii. Aesthetic Functionality

c. Use i. Use in Commerce Requirementii. Actual Use

iii. Constructive Useiv. Surrogate Usev. Dual Use

vi. Abandonmentd. Exclusions from Registration

i. Scandalous and Disparaging Marksii. Deceptive Marks

iii. Name Marks

iv. Geographic Markse. Geographic Limits on Trademark Rightsi. Geographic Limits

ii. Extraterritorial Enforcementf. Confusion

i. Actionable Use Prerequisiteii. Likelihood of Confusion

iii. Initial Interest Confusioniv. Post-Sale Confusionv. Indirect Liability for Confusion

g. Dilutioni. TDRA

ii. Tarnishmentiii. Blurring

h. Cybersquattingi. Counterfeiting j. Defenses

i. Fair Useii. Parody



II. Distinctivenessa. Distinctiveness vs. Descriptiveness

i. Purposes of trademark law1. Protect the public from confusion as to:

a. Source

b. Affiliationc. Sponsorship2. Protect the trademark owner

ii. Elvis v. Capece (1998)1. Facts: VELVET ELVIS for a bar parodying ‘60s2. Held: for P on bar name, for D on ads

a. Trademark infringement std:i. Likely to cause confusion

ii. In the mind of ordinary consumer iii. As to source, affiliation, or sponsorship

b. Confusion

i. Mark very strongii. Marks are very similar iii. Marks not in direct competitioniv. D intended to use mark, but as a parody, not to

confusev. No actual confusion

c. Ads were confusing, thoughi. Overemphasis of ELVIS

iii. Abercrombie v. Hunting World (1976)1. Facts: SAFARI brand for clothing2. Held: for P on boots, for D on clothes

a. Abercrombie Factors (from least to most distinctive)i. Generic

1. No protection ever 2. Describes a class of products

ii. Descriptive1. Not inherently distinctive2. Needs secondary meaning to acquire

distinctivenessa. A substantial segment of public has

come to view mark as denoting asingle and unique source of goods – primary significance of mark is producer, not product

b. Single thing from a single source

c. Proof can be direct or circumstantial3. Provides info about good

iii. Suggestive1. Inherently distinctive, no need for secondary

meaning



2. Requires imaginationiv. Arbitrary or Fanciful

1. Inherently distinctive2. Can be registered based on first use3. Arbitrary: actual word w/no connection to

product4. Fanciful: completely made-up word b. Use of SAFARI generic for clothes but not for boots

iv. In re Oppedahl (2004)1. Facts: PATENTS.COM2. Held: mark not registrable

a. .com is top level domain indicator (TLD) b. Adding TLD to descriptive term usu does not create

distinctive mark v. Zatarain’s v. Oak Grove (1983)

1. Facts: FISH-FRI and CHICK-FRI for mixes

2. Held: for D, mark cancelleda. FISH-FRI descriptive but has secondary meaning b. CHICK-FRI has no secondary meaningc. Std of review: clearly erroneousd. Is mark descriptive?

i. Dictionary definition testii. Imagination test

1. If a term requires imagination to concludeabout the nature of the goods, then it issuggestive

iii. Necessary terms test1. Do competitors need to use word mark to

describe their products?iv. Actual use of terms test

1. How often do competitors use word mark inmarketing their products?

e. Does descriptive mark have secondary meaning?i. Direct evidence

1. Surveyii. Circumstantial evidence

1. Ads2. Sales volume3. Length and manner of use4. Actual consumer confusion5. Physical manner of mark on good6. Lack of concurrent use by competitors7. Nature of use in newspapers, magazines, and

dictionaries8. Proof that competing seller intentionally

copied mark



f. Infringement Analysis i. Is the mark valid and protectable?

1. Abercrombieii. Was the mark infringed?

1. Likelihood of confusion

b. Generic Termsi. 2 common situations:1. Brand new product that quickly catches on and signifies both brand

and class of product2. Genericide

ii. Mil-Mar v. Shonac (1996)1. Facts: WAREHOUSE for shoe store2. Held: for D

a. Is term generic in retail store context?i. Yes – even though a warehouse has several

meanings, we use the one that is relevant to this

context, ie a certain class of retail storesiii. Haughton Elevator v. Seeberger (1950)1. Facts: ESCALATOR 2. Held: for D

a. Escalator is now generic b. P used term generically – plural and non-capitalized

iv. Murphy Door Bed v. Interior Sleep Systems (1989)1. Facts: MURPHY BED for hidden wall beds, competitor filled

order for Murphy beds with other hidden wall beda. When a consumer ordered “Murphy beds” from ISS, ISS

filled the order with other different hidden wall beds b. TC found that mark was descriptive w/secondary meaning,

not generici. P has original burden to prove mark is protectable

ii. Once they do that, burden shifts to D to show thatmark is in fact generic

2. Held: for D on trademark infringement, for P on unfair competitiona. No trademark infringement

i. P has original BOP to show mark is protectable,then BOP shifts to D to show genericide

ii. MURPHY BED now generic1. Registration applications rejected2. Dictionary said Murphy bed = wall bed3. Newspapers and mags referred to it

genericallyiii. Once a mark has become generic, it cannot become

protected again b. Unfair competition

i. D’s conduct was misleading bc ads marketed“Original” Murphy beds



v. BVA v. BAVF (1989)1. Facts: BLINDED VETERANS for group2. Held: for D

a. No trademark infringementi. BLINDED and VETERANS for group that supports

blinded veterans are generic terms b. Possible unfair competition claimi. P cannot prevent use of generic terms, but can

prevent D from passing off itself as P1. Competitor must not fail to ID itself as

distinct from P so as to cause confusion or likelihood of confusion in public

2. Intent to deceive relevant but not dispositiveii. Factors increasing risk of confusion:

1. Similar label2. Similar packaging

3. Misleading ads4. Failure to state product’s sourceiii. Precedent: Kellogg v. Natl Biscuit

1. SHREDDED WHEAT generic, but publicstill associated term with Natl Biscuit

2. Kellogg had to use rzble care to inform public of source of product

c. Trade Dressi. Trade dress defined

1. Product or packaging attributes that help ID a good or servicea. Overall visual image that is presented to consumers b. Combination of many elementsc. Consistent, specific image of product

2. 43(a) protectable dress test:a. Confusingly similar b. Primarily nonfunctionalc. Inherently distinctive or has acquired secondary meaning

3. Generics and trade dressa. Generics imitating brand labels is OK bc intent to confuse

is actionable, intent to copy is not4. 2 categories:

a. Product packagingi. Can be taken off

ii. Labelsiii. Restaurant décor

b. Product designi. Cannot be taken off

ii. Trade dress analysis 1. Packaging or design?

a. If ambiguous, treat as design



2. Packaging can be protected if either:a. Inherently distinctive OR

i. Abercrombie factorsii. Seabrook test

b. Secondary meaning

3. Design can only be protected if it has secondary meaningiii. Star v. Bacardi (2005)1. Facts: GEORGI O for orange vodka, Bacardi O used similar “O”2. Held: for P

a. O is protectable bc it is stylized and unique b. But it only gets thin protection bc it would be easy to

design something slightly differentiv. Two Pesos v. Taco Cabana (1992)

1. Facts: trade dress for Mexican restaurant – style, paint, menu,design, etc.

2. Held:

a. Can trade dress be inherently distinctive?i. Yes, P does not have to show secondary meaning if dress is inherently distinctive

ii. BUT this rule only applies to product packaging(like restaurant) not product design

3. Stevens’ Concurrence: thinks that federal COA for infringement of unregistered mark is made up, but agrees w/it

4. Thomas’ Concurrence: thinks 43(a) gives COA for unregisteredmarks

v. Qualitex v. Jacobson (1995)1. Facts: gold-green color of dry cleaning bag2. Held: for P

a. Color alone can be protectable b. However, it must be nonfunctional and have acquired

secondary meaningi. Color alone cannot be inherently distinctive

vi. Walmart v. Samara (2000)1. Facts: trade dress of seersucker outfits decorated with hearts and

stuff, Walmart saw Samara Bros. outfits and told designers to copythem

2. Held: for Walmarta. Product’s design is distinctive only upon a showing of

secondary meaningi. Product design alone can never be inherently

distinctivevii. In re Slokevage (2006)

1. Facts: dress is FLASH DARE on cut out of jeans2. Held: secondary meaning is required

a. Courts should classify ambiguous dress as design



b. Cut out here could be either design or packaging – but italso makes product more desirable to consumers (design)than indicating source (packaging)

viii. Yankee Candle v. Bridgewater (2001)1. Facts: dress of labels, styles of candles, vertical design layout,

catalog2. Held: for Da. Labels are packaging and can be inherently distinctive b. Seabrook test for dress distinctiveness

i. Is the dress so unique, so unusual, that it willautomatically be perceived by the consumer asidentifying the source of the product?

ii.iii. Common practice in the industry

c. Yankee Candle’s labels are not distinctive though – toodifferent from one another

d. Also do not meet burden of secondary meaningix. In re GE Broadcasting 1. Sounds can function as source indicators if:

a. Definitive shape/arrangement b. Used to create an association bt sound and productc. Nonfunctional

d. Other Source Identifiersi. In re Clarke (1990)

1. Facts: FRESH FLORAL FRAGRANCE for yarn2. Held: mark is registrable

a. Scent can be protected i. ONLY if there is no need for the product to smell

goodii. Ie could not trademark scent for soap, but can for

plastic b. However, mark is protected only exactly as registered, not

for broader “scented yarn”ii. Comedy III v. New Line (2000)

1. Facts: 3 Stooges clip in movie2. Held: for D

a. Cannot use trademark law to circumventing an expired copyright

b. Copyrighted character or work must have acquiredtrademark significance

i. IDs productii. Distinguishes product from others

iii. In re First Draft (2005)1. Facts: FERN MICHAELS as mark on book as part of series

written by that author 2. Held: mark not registrable



a. Author’s name not registrable for single book b. May be registrable for series if there are other indicia that

mark serves as more than just the writer’s identifier i. Author controls quality of work

ii. Promotion and recognition of author’s name

c. Here, insufficient evidence as to quality control and promoand recognitionIII. Functionality

a. Functionality Doctrinei. Trademarks cannot be functional

1. Burden competition2. Undermine patent system

ii. Economic/useful designs are never protectable, ie anything that makes product:

1. Easier to use2. Easier to ship

3. Easier to market4. Lower costiii. BOP

1. Unregistered dress – P has burden of proving nonfunctionality2. Registered dress – D has burden of proving functionality3. Evidence:

a. How feature improves product b. How it affects performancec. How it is marketed

iv. Functionality analysis:1. Is there utilitarian functionality?

a. Inwood Test2. Is there aesthetic functionality?

a. Qualitex Test b. Utilitarian Functionality

i. Inwood Test for Utilitarian Functionality1. Feature is functional if:

a. Essential to use or purpose of article OR b. Affects cost or quality of article

2. Inquiry is whether all elements taken together are functionalii. Traffix v. MDI (2001)

1. Facts: dual spring design for road signs, patent expired2. Held: for Traffix

a. Patent on design feature creates almost irrebutable presumption of functionality

b. Where the design is essential to use or purpose, analysisstops

c. Aesthetic Functionality



i. If the look of product is one of only a few superior designs for making the product acceptable to consumers, then it is aesthetically functional andtherefore non-protectable

ii. Qualitex v. Jacobson (1995)1. Facts: gold-green color of dry cleaning bag

2. Held:a. A design’s aesthetic value lies in its ability to confer asignificant benefit that cannot practically be duplicated bythe use of alternate designs

b. Qualitex Test for Aesthetic Functionality:i. Item must be purchased for aesthetic reasons

1. If no, then do utilitarian functionalityanalysis

ii. Specific product/package design must havesignificant appeal to customers

iii. Must be a paucity of viable design alternatives that

would have similar aesthetic appeal to customers(competitive necessity)iii. A&F v. AE (2002)

1. Facts: dress of clothing design, catalog, hot young ppl2. Held: for AE

a. Design and store layout are aesthetically functional, so not protected

b. Catalog could be non-functional, but A&F fails to provelikelihood of confusion

iv. Hooters v. Winghouse 1. Facts: dress of waitresses wearing tank tops and shorts, Hooters

argues the waitresses are essentially non-functional2. Held: for Winghouse

a. Hooters had admitted in earlier litigation that the Hootersgirl was functional as part of a legitimate business purpose,so could not argue non-functionality here

v. Auto Gold v. VW (2006)1. Facts: keychains with VW car logos2. Held: for D

a. Logos have no function apart from association withtrademark

b. If only “function” of feature (logo) is source identification,then feature is non-functional

c. Logos are not functional part of P’s product, so protectableIV. Use

a. Use in Commerce Requirementi. Mark has to be used in commerce

1. Bona fide use of mark in ordinary course of trade, not made merelyto reserve mark

2. Mark does not have to be affixed to goods (old CL rule)



3. Use establishes priority4. Must be sufficient kind and amount of use5. Must be continuous

ii. Does not count as use:1. Sporadic

2. Inconsequential3. De minimis4. Trivial5. Warehousing

b. Actual Usei. Blue Bell v. Farah

1. Facts: TIME OUT for men’s clothes2. Held:

a. In-house shipment to managers does not count as use b. Use must be of actual final merchandise, or sale does not

count

c. Only genuine sales to actual end users of the actual goodsdestined to bear the mark count as use for priority purposesii. Planetary Motion v. Techsplosion (2001)

1. Facts: COOLMAIL for email service, Techsplosion claims use didnot count bc product was free

2. Held: for P, use counteda. Totality of circumstances test

i. Widespread distributionii. Mark IDed source of software

iii. Others noticed that mark IDed softwareiv. Software incorporated into another product which

was sold worldwidev. Customary practice of industry

c. Constructive Usei. ITU Application (1b)

1. Can file for notice of allowance (not actual registration) before use providing there is bona fide intent to use mark in future

2. Evidence:a. Sales in test market b. Infrequent sales of lg or expensive itemsc. But single isolated sale that bears no rel to genuine plan for

commercially exploiting the mark does not count3. Public has 30 days to oppose4. Applicant gets 6 months after NOA to register statement of use –

can be extended 6 mo. at a time for up to 2 yrsii. Warnervision v. Empire (1996)

1. Facts: D filed ITU for REAL WHEELS before P started actuallyusing mark

2. Held: for D



a. ITU counts as constructive use – applicant gets the time tomake the necessary use, cannot be barred by later actualuser if w/i time limits

d. Surrogate Usei. Trademark rights go to user, not creator

1. If subsidiary creates mark, parent can use it2. Nicknamesa. Once a nickname has acquired secondary meaning, it is

protectable under unfair competition law, but not trademark law

b. Owner gets benefit of public’s surrogate use – but only if actually used on product

ii. Boogie Kings v. Guillory (1966)1. Facts: band started under name BOOGIE KINGS, member then

left and tried to use it2. Held: for P

a. Band operated by majority vote, so is an unincorpassociation – has proprietary interest in name b. Member can use “formerly of”

iii. Coca-Cola v. Busch (1942)1. Facts: D tried to use KOKE-UP2. Held: for P

a. Use of nickname likely to cause confusion b. Recovery under unfair competition, not trademark law

e. Dual Usei. IL HS v. GTE

1. Facts: MARCH MADNESS used by high school basketball2. Held: for both

a. Dual use – both users now have trademark rightsf. Abandonment

i. Consequences1. Extinguishes exclusive rights in mark 2. Complete defense to trademark infringement3. Grounds for cancelling federal registration

ii. Through Non-Use1. Non-use + intent to relinquish = abandonment2. E-One v. AFE (2000)

a. Facts: E-One owned AMERICAN EAGLE for fire trucks, but it had not used it for 3 years, then American Fire Eagletried to use

b. Held: for Pi. Presumption that mark is abandoned when use has

been discontinued for 3 yrsii. Rebutted by:

1. Showing that non-use is due to specialcircumstances, not intent to abandon OR



2. Intent to resume in the rzbly foreseeablefuture and use in connection with product

iii. Evidence showing intent to resume:1. Goods with mark 2. Business plan detailing when resuming

would happen3. Spending money on mark iii. Through Uncontrolled Use

1. Mark ceases to function as source indicator a. Does not require a showing that mark owner intended to

relinquish legal rights2. 3 situations:

a. Naked licensing b. Genericidec. Failure to take action against infringers

3. Stanfield v. Osborne (1995)

a. Facts: P invented fiberglass pad for baby pigs, D used P’sname but failed to pay royalties b. Held: for D

i. Licensor must take rzble steps to prevent misuseii. P relinquished right to mark when he allowed naked

licensing w/no quality control4. Dawn Donut v. Hart’s (1959)

a. Facts: D used DAWN for donuts, D claimed P failed tocontrol licensees’ goods

b. Held: ??i. Quality control crucial

5. UBS v. UW (1994)a. Facts: BUCKY BADGER logo, UBS opposes UW’s

attempted registration claiming naked licensing b. Held: for D, no abandonment

i. Quality remained at acceptable level1. Even though D had no role in ensuring

quality2. Tacit acquiescence to prior uncontrolled use

did not support claim of abandonmentii. Abandonment difficult to prove against sports

teams, bc continuing to play shows intent tocontinue using mark

V. Exclusions from Registrationa. Scandalous and Disparaging Marks

i. 1052(a) 1. Excluded from registration:

a. Immoral, deceptive, or scandalous matter



b. Matter which may disparage or falsely suggest connectionw/persons, institutions, beliefs, or national symbols or bringthem into contempt or disrepute

ii. Scandalousness Test 1. Is mark scandalous from the standpoint of substantial composite

of general public, in the context of contemporary attitudes?2. When in doubt, allow it – public can choose to opposeiii. Ritchie v. Simpson

1. Facts: post-OJ murder trial, OJ tried to register OJ and THEJUICE, member of public opposed

2. Held:a. Anyone has standing to oppose a scandalous mark b. Need not have commercial interest

iv. Harjo v. Pro Football (2003)1. Fact: Native Americans tried to get REDSKINS cancelled2. Held: for D

a. Test:i. Likely meaning of matter ii. Matter scandalous to substantial composite of

general public b. Here, mark is likely disparaging, but not so scandalous and

outrageous to public, which accepted team’s name b. Deceptive Marks

i. 3 levels:1. Deceptive – never registrable2. Deceptively misdescriptive – registrable on secondary meaning3. Merely misdescriptive – registrable if meets Abercrombie

ii. 2(a) – deceptive marks1. Marks that are completely deceptive can never be registered2. Deception Test

a. Misdescriptivei. Of character, quality, function, composition, or use

of goods b. Purchaser must be likely to believe misdescription is truec. Misdescription must be likely to materially affect

purchaser’s decisioniii. 2(e)(1) – deceptively misdescriptive marks

1. Marks that are deceptively misdescriptive can be registered on proof of secondary meaning

a. Misdescriptive b. Purchaser likely to believec. BUT not likely to materially affect decision

2. Marks that are merely misdescriptive (w/o purchaser being likelyto believe) may be immediately registrable, depending onAbercrombie factors

c. Name Marks



i. Name marks are only registrable on secondary meaning1. 2(e)(4)

a. Mere surnames not registrable2. 2(f)

a. Distinctive surnames are registrable

3. Surnames in a compound mark with other words are registrable,even without secondary meaning4. Junior users with a similar name as senior users may get a qualified

right to use mark ii. Word is a surname if that is its primary significance to public

1. Surnames of famous historical ppl are treated differently bc publicdoes not believe they are connected w/actual person

iii. In re United Distillers (2000)1. Facts: HACKLER, a surname, for alcohol2. Held: name is valid mark

a. Test:

i. Rareii. Anyone connected w/applicant has surnameiii. Whether term has any other meaningiv. Look and feel of surname

iv. In re Sauer (1993)1. Facts: BO BALL for foot/baseball2. Held: mark not registrable

a. 2(a) claim – falsely suggested connection w/personi. Mark a close approx of person’s name

ii. Mark recognized as person’s nameiii. Person not connected w/goodsiv. Person’s name of sufficient fame so that connection

w/person is likely to be made b. 2(c) claim – name IDed a particular living individual

d. Geographic Marksi. 3 levels:

1. Deceptive – no registration2. Primarily geographically deceptively misdescriptive (PGDM) – no

registration3. Primarily geographically descriptive (PGD) – registrable on

secondary meaningii. 2(a) – deceptive marks

1. Absolute bar to deceptive marks – ie, false assertion intended todeceive public of geographical origin of goods

2. Wine/spirits exceptiona. Absolute bar to any geographic indicator on wines/spirits

that ID a place other than originiii. 2(e)(3) – primarily geographically deceptively misdescriptive marks

1. Geographic designator is inaccurate but plausiblea. Ie FL OJ for juice from ID



2. Not registrable3. Test:

a. Primary significance is generally known place b. IDs product that purchaser likely to mistakenly believe is

connected w/origin

c. Misrepresentation is material factor in decision to purchaseiv. 2(e)(2) – primarily geographically descriptive marks1. Registrable on secondary meaning2. Geographically descriptive – goods-place association

VI. Geographic Limits on Trademark Rightsa. Geographic Limits

i. CL v. LA1. CL

a. Mark owned only in actual area of trade – region wherereputation and goodwill have spread

b. Senior user may not be able to prevent junior user from

using the mark in junior user’s AOTc. Good faith rule – if junior user adopted mark w/oknowledge of senior user, then junior user is adopter in

good faith and can use the mark 2. LA

a. Does not deal with AOTsii. Dawn Donut v. Hart’s (1959)

1. Facts: junior user started using DAWN for donuts in Rochester after senior user had been using mark in other parts of NY

2. Held: nominally for P, but no injunctiona. Who owns the mark?

i. D claims he is a good faith remote junior user

ii. But LA says that registration provides constructive

notice, so P is natl mark owner b. What is remedy?

i. No injunctionii. Even though P is mark owner, there was no

likelihood of confusion in Rochester bc P did not do business there

1. Likelihood of confusion based on likelihoodof P expanding into area

iii. Whataburger VA v. Whataburger TX (2004)1. Facts: TX registers first, but didn’t do business in VA, dec action2. Held: TX owner of mark, but no remedy

a. TX is rightful owner of mark, but infringement action willnot ripen until TX becomes likely to enter VA market

iv. BK v. Hoots 1. Facts: BK uses mark in FL, then Hoots uses mark in IL (no

knowledge) and registers in state, then BK registers federally andopens IL restaurant



2. Held: for Da. Junior user has right to use mark in its AOT if junior user

starts using mark prior to senior user and has used itcontinuously

b. BK is registered in all but junior user’s market in certain

city in IL b. Extraterritorial Enforcementi. US trademark does not provide protection in other countries

1. Foreign use does not create US trademark rights2. Exception for famous marks

a. Once you have made the determination that your mark isworld famous, no one else in the world can use it

ii. Steele v. Bulova Watch (1952)1. Facts: D imported parts into US to make counterfeit Bulova

watches, then sold them in Mexico, and the watches come back into US for repair

2. Held: court did have jurisdictiona. LA applies to all commerce lawfully regulated by Congress b. Effects of D’s activities felt in US commerce – purchase,

repair c. Bulova Test:

i. Substantial effect on US commerceii. D must be US citizen

iii. Absence of conflict w/foreign lawiii. Vanity Fair v. T. Eaton (1956)

1. Facts: P sold underwear in US under VANITY FAIR mark, D soldwomen’s clothing under same mark in Canada

2. Held: for D, no jurisdictiona. Substantial effect on US commerce b. D was not a US citizenc. Absence of conflict w/foreign law – no, there is conflictd. 2/3 failed, so no extraterritorial application

iv. Sterling v. Bayer (1994)1. Facts: P trying to enjoin D’s use of STERLING outside US2. Held: for P, but narrow injunction

a. Weight of test is on factor 1 (substantial effect on UScommerce)

b. Substantial effect, but D not a US citizen and there is aforeign conflict

c. P may enjoin D’s foreign uses, but only to extent that usesare likely to have significant trademark-impairing effectson US commerce

VII. Confusiona. Actionable Use Prerequisite

i. Holiday Inns v. 800 Reservations (1997)



1. Facts: P’s mark was 1-800-HOLIDAY phone number, D used 1-800-H0LIDAY, the complementary number, to advertise a travelservice

2. Held: for Da. D was using its own number, not P’s mark, so there was no

threshold finding of use needed to do a confusionanalysis

b. Also, D was not creating the customers’ confusion, justcapitalizing on it

ii. DaimlerChrysler v. Bloom 1. Facts: D registered 1-800-637-2333 (which could spell out

MERCEDES) and licensed it to Mercedes dealers2. Held: for D

a. No infringement on MERCEDES mark bc the phonenumber could have a different translation – D was not using1-800-MERCEDES, but rather his own number

iii. Rescuecom v. Google (2009)1. Facts: D sold P’s mark to others for use as a keyword thru itsAdWords and KeyWord Suggestion Tool programs

2. Held: for Pa. Use of a keyword may constitute use b. D is using P’s mark to sell its own ad services, and

encouraging competitors’ purchase of P’s mark b. Likelihood of Confusion

i. Likelihood of confusion ≠ actual confusionii. Confusion analysis:

1. Appreciable/substantial # of consumers likely to be confused2. Likely confusion as to source or sponsorship of goods

a. Factors (slightly different in each circuit):i. Similarity of marks

1. Look alike – overall impression2. Sound alike – depends on purchasing

context3. Mean roughly the same thing – mental

impacta. Picture marks and word marks can

be confusingly similar in mentalimpression

ii. Sophistication of consumers1. Low priced products have greater risk of

confusion2. Less educated consumers are more likely to

be confuseda. Except children

iii. Strength of P’s mark



1. Stronger the mark on Abercrombie scale,more likely the confusion

iv. D’s intent1. Intent is not an element of infringement, but

bad faith is relevant bc it shows intent to

confuse2. Intent to copy is irrelevantv. Actual confusion

vi. Proximity of goodsvii. Marketing channels used

viii. Likelihood of expansion into same area (either geographically or product area)

b. Important circuit testsi. Sleekcraft

ii. Polaroidiii. McDonald’s v. McDental (1993)

1. Facts: dentist used MCDENTAL2. Held: for Pa. Mc is part of McDonald’s family of marks b. P’s mark very strongc. Actual confusion – substantial percentage of surveyed

associated Mc with McDonald’sd. Bad faith on part of D was relevant but not dispositive

iv. Libman v. Vining (1995)1. Facts: D used vertical contrasting color band on bristles of broom,

which P had registered (but for different colors)2. Held: for D

a. Court focused only on lack of evidence of actual confusion b. Prof. thinks this decision is incorrect bc actual confusion is

just one of many factors3. Dissent: this cheap type of product makes it likely that consumers

would not bother to complain; many other factors are relevant(Prof.’s view)

v. Goto.com v. Disney (2000)1. Facts: D used a stoplight logo on its new website that was very

similar to P’s logo2. Held: for P

a. Sleekcraft Test (9th Cir.)i. Marks are very similar (favors P)

ii. Products are direct competitors, both search engines(favors P)

iii. Both used internet as marketing channel (favors P)iv. Disregards strength of P’s mark v. Sophistication of web surfer may be high, but

surfing the web is an unsophisticated activity bc of ease of clicking around (favors P)



c. Initial Interest Confusioni. Initial interest confusion is when a consumer goes to the wrong website

accidentally, but once there, just uses the service anyway1. Only applies in internet cases2. Misappropriation of goodwill

ii. Brookfield v. West Coast (1999)1. Facts: P owns MOVIEBUFF and tries to register MOVIEBUFF.COM but D already owns it and is usingMOVIEBUFF in its metatags

2. Held: for Pa. Use of P’s trademark in D’s metatags are likely to cause

initial interest confusion bc surfers looking for P are takento D’s site

i. D is improperly benefiting from P’s goodwillw/public

b. But, D can use ordinary descriptive terms in metatags

iii. Lamparello v. Falwell (2005)1. Facts: Lamparello registers FALLWELL.COM2. Held: for Lamparello

a. 4th Cir. does not adopt initial interest confusioni. But court notes that theory only applies in cases

where D makes a business use of P’s mark for D’sown financial gain, which is not the case here

iv. Playboy v. Netscape (2004)1. Facts: D was keying searches P’s marks PLAYBOY and

PLAYMATE to ads for P’s competitors’ sites2. Held: for P

a. Initial interest confusion based on Brookfield test b. Also likelihood of confusion based on user surveys

indicating actual confusion and strength of P’s mark 3. Concurrence: thinks that there is no initial interest confusion when

trademarks are only used in metatags, it is when the keyword labelon the search results page is misleading that there is confusion

v. Gibson v. PRS (2005)1. Facts: D started making cutout guitars just like P, P argued that

initial interest confusion applied bc a consumer might walk into astore, see the shape of the guitar, and be momentarily confused thatthe guitar was P’s

2. Held: for Da. First attempt to apply initial interest confusion theory

outside the interneti. Court finds that doctrine does not apply outside

internet b. P’s concession of lack of POS confusion is dispositive



c. Also, giving P protection from initial interest confusionover dress would allow trademark owners dominion over too many similar shapes

3. Dissent: thinks trademark holders of product shapes should beallowed to use evidence to show initial interest confusion

d. Post-Sale Confusioni. Ferrari v. Roberts (1992)1. Facts: D sold fiberglass kits that replicated P’s cars2. Held: for P

a. Post-sale confusion is when direct purchasers may not beconfused, but others who see those goods later might be

i. No reason to limit focus to POS consumers rather than larger public

ii. Lower the quality of brand in eyes of publiciii. Lowers exclusivity of brand if knockoffs are

everywhere

b. Product must be one on which the trademark is normallyvisible after purchase3. Dissent: thinks this fits better as a dilution case

e. Indirect Liability for Confusioni. Inwood Labs v. Ives Labs

1. Facts: D is the generic MF of P’s brand drug CYCLOSPASMOL, pharmacists sell the generic drug under P’s brand name, P arguesthat D’s design contributed to pharmacists’ infringement

2. Held:a. Indirect Liability Test:

i. Intentionally induces another to infringe atrademark OR

ii. Continues to supply product to one whom it knows

or has reason to know is engaging in trademark infringement

ii. Hard Rock v. Concessions Services 1. Facts: flea market operator was sued for activity of counterfeiters2. Held: for D

a. D did not know or have reason to know of the counterfeitsales

b. Even if D did know, D has no affirmative duty to police theflea market

iii. Lockheed v. Network Solutions 1. Facts: P sued domain name registrar for selling skunkworks.com to

someone other than P, the SKUNK WORKS trademark owner 2. Held: for D

a. Level of control between domain name registrar over registrant (one-time transaction) is lower than even a fleamarket over stalls (continuing)

iv. Tiffany v. eBay (2008)



1. Facts: P sued D for allowing counterfeit sales of P’s products,arguing that D was in the best position to monitor the sales

2. Held: for Da. Burden always on P to police its own mark b. No intentional inducement

c. D knows of counterfeiting, but only knows generallyi. General knowledge not enough to meet std of knowledge of specific acts of infringement

ii. Specific knowledge of each specific act is requiredVIII. Dilution

a. Trademark Dilution Revision Act (2006)i. Owners of famous, distinctive marks can sue for dilution, regardless of

confusion, competition, or economic injuryii. 2 types of dilution:

1. Blurring – association impairs distinctiveness of mark, causes lossof public association with famous mark

2. Tarnishment – association harms reputation of mark iii. Fame – mark must be widely recognized by general consuming public

1. Actual recognition counts as evidence of famea. Recognition surveys – if the same or higher percentage of

people recognize the mark as compared to the control, thenthe mark is famous

2. Recognition by limited audience not enough (Mead v. Toyota)iv. Dilution Test:

1. Fame2. Distinctiveness of senior mark 3. Either:

a. Loss of public association w/famous mark (blurring) OR b. Harm to reputation of famous mark (tarnishment)

b. Tarnishmenti. Toys R Us v. Akkaoui (1996)

1. Facts: D’s adult website ADULTS R US tarnishes P’s wholesomeimage

2. Held: for Pa. P’s family of marks are famous and distinctive b. P’s marks are tarnished by negative association w/D’s site

ii. Toys R Us v. Feinberg (1998)1. Facts: GunsAreUs.com, P does not want to be associated

w/weapons2. Held: for D

a. No blurring bc no association – GunsAreUs.com doesn’tuse “R”

c. Blurringi. Nabisco v. PF (1999)

1. Facts: PF Goldfish sued Catdog crackers for trade dress dilution by blurring



2. Held: factors determining whether blurring is present are notexhaustive

a. Fame and distinctiveness are different b. Some factors relevant in dilution analysis:

i. Similarity of marks

ii. Similarity of productsiii. Sophistication of consumersiv. Predatory intentv. Fame of senior mark

vi. Renown of junior mark vii. Actual confusion

viii. Likelihood of confusionix. Shared consumers and geographic locationx. Duration of junior use and harm to junior user

xi. Delay in bringing suitii. Lund v. Kohler

1. Facts: similarly shaped water faucets, both infringement anddilution claims brought2. Held:

a. It is very unlikely that there would be no confusion in a blurring case

i. With blurring, the customer already knows there ismore than one source

iii. Visa v. JSL (2010)1. Facts: Visa (for financial services) vs. eVisa (for an internet based

business that provides multilingual education and info)2. Held: for P

a. Mark is famous and distinctive b. eVisa’s use of mark jeopardizes public’s free association

w/Visac. Prof. disagrees w/this decision, feels it does not take TDRA

into accountIX. Cybersquatting

a. Cybersquatting is the process of registering the domain name of a well-knowncompany and then selling it back to them

b. Previous ways to treat cybersquatting:i. Dilution theory

1. Panavision v. Toeppen a. Facts: Toeppen registered panavision.com b. Held: for P

i. Dilution analysis1. Mark is famous2. Registering the domain as part of a business

of cybersquatting constituted commercialuse

3. Commercial use diluted mark by blurring



4. Panavision wins2. Why dilution theory does not work:

a. Fame req very limiting b. Commercial use finding is tenuous on case by case basis

ii. Likelihood of confusion theory

1. PETA v. Doughney a. Facts: Doughney registered peta.org, claimed defense was parody

b. Held: for Pi. Confusion analysis

1. Mark used in connection with goods or services – even though D wasn’t sellinganything, he prevented people from gettingto PETA’s real site

2. There was a likelihood of confusion here, based on the actual domain name – the

parody was on the site, not in the domainnamec. Anti cybersquatting statute (ACPA)

i. ACPA establishes COA for any trademark owner who can show:1. D has bad faith intent to profit from use of mark AND2. D’s mark is identical or confusingly similar to P’s mark

ii. Related COAs1. In personam action against person for bad faith registration of

domain name2. In rem action against domain name itself

iii. Sporty’s Farm v. Sportsman’s (2000)1. Facts: P registered sportys.com even though D used SPORTY’S,

then filed dec action against D, the mark owner 2. Held: for D, on 2 theories

a. Likelihood of confusion theoryi. Mark distinctive

ii. Sportys.com confusingly similar to SPORTY’S b. ACPA analysis

i. Domain name owner acted w/bad faith intent to profit from the mark – P had no interest in Sporty’sat the time of registration

ii. Mark identicaliv. Lamparello v. Falwell (2005)

1. Facts: Lamparello registered fallwell.com for criticism of JerryFalwell

2. Held: for Lamparelloa. Falwell did not show bad faith intent to profit – used site

for criticism and commentary b. Lamparello made no attempt to sell domain back to Falwell

d. ICANN – Internet Corporation for Assigned Names and Numbers



i. All domain name registrants must adopt a Uniform Dispute ResolutionPolicy (UDRP)

ii. UDRP is an alternative to courts – however, it only permits domain namecancellation, not damages

X. Counterfeiting

a. A counterfeit is a spurious mark identical to/substantially indistinguishable froma registered mark i. Public health issue

ii. Civil and criminal penalties b. Sources of law

i. Customs Act (1978)1. Counterfeits will be seized at border and destroyed

ii. Trademark Counterfeiting Act (1984, amended 1996)1. Criminalized trademark counterfeiting2. $2M/10 yrs – first offense, $5M/20 yrs – second offense3. Judges can grant civil ex parte seizure orders against trademark

counterfeiters4. Treble damages and attys fees5. 2320 Test:

a. Spurious mark b. Used in connection w/goodsc. Identical to/substantially indistinguishable from registered

mark d. Use of which is likely to cause confusion

c. US v. Torkington (1987)i. Facts: criminal charges filed against vendor at flea market for selling fake

Rolexesii. Held: for P

1. Can violate this section by confusing the purchasing public post-sale (not just the direct purchaser)

2. Even though people buying the fake Rolexes would not be likely tothink they are actually Rolexes, other people seeing them down theline may think poorly of the brand

d. Rolex v. Michel (1999)i. Facts: D refurbished Rolex watches with new bands and stuff

ii. Held: for P1. Duplication of mark not necessary precondition to counterfeit2. D’s changes go to basic performance of watch – changes are so

elemental that they result in a new producta. So just stamping the new parts with D’s own mark is not

good enough3. Precedent: Champion Spark Plug Case

a. As long as the new part has been stamped used or repaired,that is not counterfeiting bc the consumer is on notice

b. However, if changes are so basic, elemental, or extensive,that might still be counterfeiting



XI. Defensesa. Fair Use

i. Types1. Classic

a. Use of a trademarked word as its common primary

meaning is classic fair use b. Classic fair use test:i. Use of mark is not as P’s trademark

ii. Fair/good faith useiii. Mark used only to describe D’s own goods

2. Nominativea. Use of trademarked word as its secondary trademarked

meaning for the purpose of describing one’s own goods(not the trademarked goods) is nominative fair use

b. Nominative fair use test:i. D’s goods not readily identifiable w/o use of

trademark ii. Only so much of trademark is used as is rzblynecessary to ID good

iii. Trademark not used to suggestsponsorship/endorsement by trademark owner

c. Aka comparative advertisingi. Use of someone else’s trademark in advertising

your own goods is permitted, as long as there istruthful disclosure and no likelihood of confusion

ii. Playboy v. Welles 1. Facts: sed the term “playmate” on porn site bc she actually was

playmate of the year 2. Readily identifiable? not w/o her use bc that’s what she actually

was3. Rzbly necessary? no – she used too much bc that was the

wallpaper bgiii. Brother Records v. Jardine

1. D is a former member of Beach Boys and wanted to tour under name “Beach Boys Family and Friends”

2. Nominative fair use arg faileda. Actual confusion b. Beach Boys featured more prominently than Family and

Friendsc. Enjoined from using Beach Boys Family and Friends, but

can use Formerly of Beach Boysiv. NKOTB v. News America

1. Case produced the nominative fair use testv. KP Permanent v. Lasting Impression

1. Party claiming fair use does not bear burden of negating likelihoodof confusion



2. Burden always belongs to Pvi. Toyota v. Tabari (2010)

1. Domain names that usu suggest sponsorship:a. Trademark.com b. Trademark-USA.com

c. Official-trademark-site.com2. Domain names that are eligible for nominative use:a. Buyatrademark.com

3. Court finds that injunction barring all use of domain name was too broad

4. This court thinks that nominative fair use test replaces likelihoodof confusion test

a. So that when D asserts nominative fair use defensesuccessfully, then there is no confusion and the trademark owner has the burden of proving unfair use and confusion

5. Concurrence: does not think internet users are particularly

sophisticated b. Parodyi. A truly successful parody dispels any confusion as to sponsorship

ii. What is the target of the parody?1. If target is trademark itself, then parody is OK under 1st Am2. If target is about selling own product, then parody is not OK

iii. Successful parody can be a defense to both confusion and dilution1. But mark can still be diluted by blurring when parodied

iv. Cat in the Hat v. Cat Not in the Hat 1. Facts: parody of Dr. Seuss book 2. Held: for P on confusion theory

a. Target of parody is OJ Simpson, not Cat in the Hat – unsuccessful parody

b. There is still likelihood of confusion present bc Dr. Seussmay be affiliated w/parody

v. Dallas Cowboy Cheerleaders v. Pussycat Cinema 1. Facts: girls in pornos wore Cowboy outfits2. Held: for P on dilution theory

a. Target of parody is not trademark itself – target iscommentary on sexuality and athleticism

b. Parody unsuccessful bc that target could be accomplishedw/o use of mark

vi. Hormel v. Jim Henson 1. Facts: Muppets made a character named SPAM2. Held: for D

a. No blurring, no tarnishmentvii. Rogers v. Grimaldi

1. Facts: Ginger Rogers sued film titled, “Ginger and Fred”2. Held:

a. Rogers Test:



i. LA not violated by literary titlesii. Unless title has no artistic relevance to underlying

work (ie if the work is actually about the title) OR iii. Even if has artistic relevance, title explicitly

misleads as to source/content of work

viii. Mattel v. MCA (2002)1. Facts: Mattel sues for BARBIE GIRL song, claims blurring andtarnishment

2. Held: for Da. Infringement issue

i. Where artistic work targets original, not merely borrowing another’s property to get attention, then1st Am concerns weigh heavily in favor of D

ii. Song does not suggest that it was produced by P b. Dilution issue

i. D’s use of mark is blurring bc consumers may now

hear BARBIE and think of both P and Dii. But, noncommercial uses are exempted – use thatrefers to entirely constitutionally protected speech

1. Speech whose commercial purpose isinextricably intertwined with expressinghumor and editorial commentary is protected

c. Rogers Test:i. Song is artistically relevant bc it is about Barbie

ii. Song is not explicitly misleading bc it is clear Mattel did not sponsor it

1. Successful parodyix. Parks v. LaFace (2003)

1. Facts: back of the bus song2. Held: for P

a. Court finds that there could be no artistic relevance, so casemust move past SJ

b. Rzble ppl could conclude that there is no rel bt Rosa Parks’name and the content of the song

x. ETW v. Jireh Publishing 1. Facts: painting “Masters of Augusta”2. Held: for D

a. Defense: fair use b. Rogers Test applies to artistic expression in general, not

just titlesxi. LV v. Haute Diggity Dog (2007)

1. Facts: Chewy Vuiton2. Held: for D

a. Court finds that this was a successful parody which reducedlikelihood of confusion



b. Prof. says this is not a true 1st Am. parody – it may betweaking the mark, but is doing so to sell its own good

Documents

Trademarks Rowe Fall '10