**Trademark Law** William Fisher (2016.12.2)
  IV. Rights
    Unfair Competition
      Passing Off
        D misleads consumers into thinking D's products were produced by P
        when customers ask for product A, D serves them product B
          e.g., Coca-Cola (SDCal. 1958)
          e.g., Murphy Door (1989)
          for contributory passing off, see Warner (US 1924)
      Reverse Passing Off
        D misleads consumers into thinking P's products were produced by D
        Dastar (2003) limits the scope of this doctrine with respect to 43(a)
      Misappropriation
        INS v. AP (1918)
        Radio Broadcast Cases
          Plaintiff radio company acquires (by contract) exclusive right to broadcast sporting event
          Defendant radio company listens to plaintiff’s broadcast and posts “spotters” to view the event illicitly
          Held: misappropriation
            Mayer (1932); Madison (1938); 20th c. Sporting (1937); Pittsburgh (1940); Mutual Broadcast (1941); National Exhibition (1955)
        Metropolitan Opera (1950)
          Met gives ABC exclusive broadcast rights and Columbia Records exclusive right to make records
          Defendant makes “bootleg” records from ABC radio broadcasts
        Pottstown News (PA 1963)
        NFL v. Delaware (1977)
        Dow Jones (IL 1983)
        US Sporting Products (TX 1993)
        NBA (1997)
        FlyontheWall (2011)
        Pattern of cases
      Grab bag of unfair practices
        publishing answers to questions in a physics test
        soliciting trade from customers of former employer
        inserting commercials in a film in a way that threatens artistic integrity
    Consumer Confusion
      Statutory Provisions
        LA §32
          key provision
            (1) Any person who shall, without the consent of the registrant—
            (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
            (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of 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.
          full text
        LA §43(a)
          key provision
            (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
            (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
            (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
            shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
          full text
          History (from Stevens in Two Pesos)
            For many years after 1946 enactment of Lanham Act, the provision was narrowly construed -- to cover only:
              false designation of geographic origin
              false advertising
              passing off
                Passing off was deemed to require proof of secondary meaning
            Gradual expansion of coverage by Circuit Courts
              e.g., extension of “origin” from geography to source of product
            State of the law in the federal circuits by late 1980s:
              §43(a) creates general federal cause of action for trademark and trade-dress infringement -- available to the owners of unregistered marks
              test = likelihood of confusion
              all circuits except CA2 agree that secondary meaning is not necessary if there is a finding of inherent distinctiveness
            In 1988 Amendments to Lanham Act, Congress implicitly approved this judicial expansion
              expansion is also consistent with dual goals of Lanham Act: protect consumers and competitors
        EU TM Directive (1988 & 2008), Arts. 5(1)(a) & 5(1)(b)
          1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
            (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
            (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
          2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
      Contexts
        Initial Interest Confusion
          inconsistent case law concerning metatags
          e.g., Steinway (CA2 1975)
            Grotrain-Steinweg pianos
        Point-of-Sale Confusion
          the large majority of cases fall into this category
          types
            confusion as to source
            confusion as to sponsorship or affiliation
          Store brands
            Defense of the system by trade association
            Conopco (CAFC 1994) suggests broad exemption for highly similar trade dress in this special context, so long as the TM of the store is visibly displayed on the package
            McNeil (CA3 2007) says no categorical exemption; just a factor to be considered along with all others in gauging likelihood of confusion
          Resales
            Purchaser of lawfully trademarked goods is free to offer and sell them under their original trademarks
            Exceptions
              Exception 1: D sells the goods in a way that misleads consumers into thinking that D is a member of P’s authorized sales force or is one of P’s franchisees
              Exception 2: Goods are materially different
                If goods are used and have been refurbished by D, must clearly mark them as such
                  Champion Spark Plugs (US 1947)
                  Nitro Leisure Products, 341 F.3d 1356 (CAFC 2003)
                Some goods may have been altered sufficiently that no amount of disclosure is sufficient; they cannot be sold with their original TMs
                  Dictum in Champion
                  Watch cases:
                    Rolex, 179 F.3d 704 (CA9 1999)
                    Rolex, 158 F.3d 816 (CA5 1998)
                    Bulova, 328 F.2d 20 (CA7 1964)
                  Karl Storz Endoscopy, 285 F.3d 848 (CA9 2002)
              Exception 3: Goods have been repackaged
                D must provide notice of the repackaging
        Post-Sale Confusion
          e.g., Atmos Clocks
          e.g., Ferrari
      Test: Likelihood of Confusion
        LA §32 and LA §43(a) governed by same test
        Procedure
          LOC is question of fact (or “mixed law and fact”)
          but most cases are resolved on motions for preliminary injunction or motions for summary judgment
          Overwhelming majority of courts assess LOC by reviewing a non exhaustive list of "factors"
            e.g., Polaroid (CA2 1961)
            Exception: Top Tobacco
        Factors vary slightly by Circuit
        Typical Factors
          Similarity of the two marks
            a plaintiff who does not prevail in this factor has little hope of winning
            types of similarity
              similarity of appearance
              similarity of sound
              similarity of meaning
                "doctrine of foreign equivalents"
                  e.g. Sutter Home (2005)
          Strength of the plaintiff’s mark
            "inherent distinctiveness"
              a.k.a. conceptual strength
              position of P's mark on the Abercrombie hierarchy
            "acquired distinctiveness"
              a.k.a. strength in the marketplace
              cf. secondary meaning
          Proximity of the two products
          Likelihood of the plaintiff “bridging the gap”
          Marketing Environment
            dimensions
              are the products sold in the same stores?
                Greater likelihood of confusion
              how close are the products on the shelf?
                the closer they are, the greater the likelihood of confusion [?]
            correlates closely with "proximity" factor
          Quality of the defendant’s product
            only CA2 and DCCir
            ambiguity concerning relevance
              tarnishment theory
                if D's goods are inferior to P's goods, confusion will damage P more severely
              similarity theory
                if D's goods are not inferior to P's goods, confusion is more likely
          Defendant’s “good faith” or “bad faith”
            a finding of bad faith almost always results in a victory for P, but a finding of good faith is not so decisive
            sometimes inferred from D's knowledge of P's mark prior to D's adoption of a similar mark
            other courts require proof of intent to deceive consumers concerning source of D's products
              "purposeful manipulation of the junior mark to resemble the senior's" A&H Sportswear (CA3 2000)
          Sophistication and/or attention of buyers of the products
            for exploration, see Lee et al, Trademarks & Consumer Psychology
            Lee schema
          Evidence of actual confusion
            surveys
              not often used
                expensive
                majority of cases resolved at preliminary injunction stage
              credible survey can trump all of the other factors
              but in only aprx. 50% of the cases do the courts consider the surveys credible
            direct testimony
              from consumers who were confused
              usually given little weight
      Reform Proposals
        1. Require proof of <u>actual</u> confusion
          abandon factor-based effort to *predict* confusion
          require P to submit credible evidence of actual confusion
        2. Eliminate factors unrelated to consumer confusion
          D's good faith
          strength of P's mark
          tarnishment theory of quality of D's product
        3. Beebe Proposal
          In determining whether a mark is likely to cause confusion, or to cause mistake, or to deceive, the court may consider all relevant factors, including the following:
            (i) the degree of similarity of the marks as perceived by the relevant consumer population;
            (ii) the degree of proximity of the goods as perceived by the relevant consumer population, including the degree of proximity of marketing methods and channels of distribution and sale;
            (iii) evidence of actual confusion, mistake, or deception, including survey evidence;
            (iv) the marketplace strength of the mark allegedly infringed; and
            (v) the purpose of the alleged infringer in adopting and using its mark and if the purpose is to cause confusion, or to cause mistake, or to deceive, then the likelihood that the alleged infringer will accomplish that purpose.
        4. Limit analysis to point-of-sale confusion
          initial-interest confusion should not be actionable
            Gibson
            at least in context of trade dress or product-shape trademarks
          Post-sale confusion should not be actionable
            at least in the context of repaired products
    Dilution
      History in USA
        Before 1925, courts are unreceptive to such claims
          Borden (CA7 1912)
        1925-1935: State and Federal courts begin to reach dilution
          Rolls-Royce (CA3 1925)
          Dunhill (SDNY 1929)
          Tiffany (NY 1933)
        State Anti-Dilution Statutes have largely displaced the common law
          e.g., Mead (CA2 1989)
        Federal Anti-Dilution Statute of 1995
        Nabisco (CA2 1999)
          Facts
          Holding
        Victoria’s Secret (SCOTUS 2003)
          Facts
          Tarnishment and Sexuality
        Trademark Dilution Revision Act (2006)
          resolves debate concerning proof of injury
          adjusts factors relevant to proof of blurring
      Current Statutory Provisions
        LA 43(c)
          Causes of Action
            (1) Injunctive relief:
Subject to the principles of equity, the owner of a <u>famous</u> mark that is <u>distinctive</u>, inherently or through acquired distinctiveness, shall be entitled to an <u>injunction</u> against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause <u>dilution by blurring or dilution by tarnishment</u> of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
            (5) Additional Remedies: In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117 (a) and 1118 of this title, subject to the discretion of the court and the principles of equity if—
              (A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought <u>after October 6, 2006</u>; and
              (B) in a claim arising under this subsection—
                (i) by reason of dilution by blurring, the person against whom the injunction is sought <u>willfully</u> intended to trade on the recognition of the famous mark; or
                (ii) by reason of dilution by tarnishment, the person against whom the injunction is sought <u>willfully</u> intended to harm the reputation of the famous mark.
          Definitions
            (2)(A) For purposes of paragraph (1), a mark is <u>famous</u> if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:
              (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
              (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
              (iii) The extent of actual recognition of the mark.
              (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
            (2)(B) For purposes of paragraph (1), “dilution by <u>blurring</u>” is association arising from the similarity between a mark or trade name and a famous mark that <u>impairs the distinctiveness</u> of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
              (i) The degree of similarity between the mark or trade name and the famous mark.
              (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 in substantially 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 an association with the famous mark.
              (vi) Any actual association between the mark or trade name and the famous mark.
            (2)(C) For purposes of paragraph (1), “dilution by <u>tarnishment</u>” is association arising from the similarity between a mark or trade name and a famous mark that <u>harms the reputation</u> of the famous mark.
          Defenses
            (3) Exclusions. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
              (A) Any <u>fair use</u>, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—
                (i) advertising or promotion that permits consumers to compare goods or services; or
                (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
              (B) All forms of <u>news</u> reporting and news commentary.
              (C) Any <u>noncommercial</u> use of a mark.
          Burden of Proof for unregistered trade dress
            (4) Burden of Proof: In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that—
              (A) the claimed trade dress, taken as a whole, is not functional and is famous; and
              (B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
          Preemption of some state claims
            (6) Ownership of valid registration a complete bar to action. The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that—
              (A) is brought by another person under the common law or a statute of a State; and
              (B)
                (i) seeks to prevent dilution by blurring or dilution by tarnishment; or
                (ii) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.
          Conflicts with Patent Statute
            (7) Savings clause. Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.
        State statutes
          e.g., NY Gen. Bus. Law 360-1
            § 360-l. Injury to business reputation; dilution. Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.
        EU
          EU TM Directive (1988 & 2008), Art. 5(2)
            Any member state may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark [in relation to goods or services which are not similar to those for which the trade mark is registered], where the latter has a reputation in the Member State and where use of that sign without due cause takes <u>unfair advantage of, or is detrimental to, the distinctive character or the repute</u> of the trade mark.
          Davidoff v. Gofkid (ECJ 2003)
            tacitly delete the restrictive phrase: "in relation to goods or services which are not similar to those for which the trade mark is registered"
      Requirements
        P's mark is famous
          e.g., Top Tobacco
        P's mark is distinctive
        D uses its mark in commerce
        D's usage began after P's mark became famous
        D's use is likely to cause dilution
          Blurring
            (1) Degree of similarity between the marks
            (2) Degree of distinctiveness of P’s mark
            (3) Extent to which P’s use is exclusive
            (4) Degree of recognition of P’s mark
            (5) Whether D intended to create association
            (6) Any actual association
          Tarnishing
            harm to the reputation of P’s mark
    Territoriality
      General Principle: trademark rights are nation-specific
        a trademark gives its holder rights only in the nation that issued in the mark
          prior to Lanham Act, the territorial principle operated at the level of individual states in the US
            Hanover Star Milling (US 1916) (Holmes, J., concurring)
          now operates at the level of the nation
          e.g., Bourjois (U.S. 1923)
            holder of the French ™ "Bourjois" sold the US mark and associated business to the plaintiff, a US company
            Plaintiff continued to import the French face powder and sell it in the US
            Plaintiff can prevent an arbitrageur from buying packages of the powder in France and importing them into the US
              the French mark, though valid in France, does not give the arbitrageur rights to import into the US
        priority of use depends entirely upon use in the US
          '[P]riority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world."
            McCarthy 29:2
          Earlier use in another country doesn't count.
            Person's Co., Ltd. v. Christman (Fed. Cir. 1990)
            Buti v. Perosa (2d Cir. 1998)
      Exceptions
        1. Extraterritorial application of US trademark law
          Steele v. Bulova (SCOTUS 1952)
            Facts
              Plaintiff held Bulova mark in US, but not Mexico
                plaintiff's US advertising spilled into Mexico
              Defendant (a resident of Texas) later registered Bulova in Mexico
              Defendant in Mexico applied Bulova mark to watches imported from Switzerland (including some parts imported from US) and sold those watches in Mexico
              some of the purchasers were US citizens, returned to the US with the watches
              by the time the case gets to SCOTUS, plaintiff had secured cancellation of the Defendant's Mexican TM
            Held: District Court had jurisdiction to issue injunction against the use of "Bulova" on watches in Mexico
          Courts of Appeals disagree concerning which combinations of special circumstances are sufficient to support extraterritorial reach
            Vanity Fair Mills (CA2 1956)
              extraterritorial reach requires at least 2 of 3 factors
                1. D's conduct has "substantial effect" on US commerce
                2. D is US citizen
                3. extraterritorial reach would not conflict with TM rights established under foreign law
            Wells Fargo (CA9 1977)
              apply "rule of reason"
                precondition: D's conduct has "some effect" on US commerce
                if so, then consider:
                  degree of conflict with foreign law or policy
                  nationalities of parties
                  likelihood of compliance
                  relative magnitudes of effect on domestic and foreign commerce
                  bad faith
            McBee (CA1 2005)
              when D is not a US citizen, extraterritorial reach is possible only if D's conduct affects US sufficiently extensively to give US "a reasonably strong interest in the litigation"
              not satisfied by a Japanese website offering adolescent clothing under mark "Cecil McBee"
                plaintiff
                defendant
        2. 6-month priority right under Paris Convention, Art. 4
        3. Obligation to protect "well known marks"
          Treaty Obligations
            Paris Convention Art. 6bis
            TRIPS Arts. 16(2-3)
          Slow US Reception
            Grupo Gigante (CA9 2004)
            see "Foreign Use" in Part II
      Importation
        Statutory Provisions
          Lanham Act 32, 42, 43
          Tariff Act (1930)
            Section 1526
              § 1526. Merchandise bearing American trademark (a) Importation prohibited. Except as provided in subsection (d) of this section, it shall be unlawful to import into the United States any merchandise of foreign manufacture if such merchandise, or the label, sign, print, package, wrapper, or receptacle, bears a trade-mark owned by a citizen of, or by a corporation or association created or organized within, the United States, and registered in the Patent Office [Patent and Trademark Office] by a person domiciled in the United States, under the provisions of the Act entitled "An Act to authorize the registration of trade-marks used in commerce with foreign nations or among the several States or with Indian tribes, and to protect the same," approved February 20, 1905, as amended, and if a copy of the certificate of registration of such trade-mark is filed with the Secretary of the Treasury, in the manner provided in section 27 of such Act, unless written consent of the owner of such trade-mark is produced at the time of making entry.
              Regulations construing 1526
            Section 337
              § 1337. Unfair practices in import trade (a) Unfair methods of competition declared unlawful. (1) Subject to paragraph (2), the following are unlawful, and when found by the Commission to exist shall be dealt with, in addition to any other provision of law, as provided in this section:
                (A) Unfair methods of competition and unfair acts in the importation of articles (other than articles provided for in subparagraphs (B), (C), (D), and (E)) into the United States, or in the sale of such articles by the owner, importer, or consignee, the threat or effect of which is-- (i) to destroy or substantially injure an industry in the United States; (ii) to prevent the establishment of such an industry; or (iii) to restrain or monopolize trade and commerce in the United States.
                (B) The importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that-- (i) infringe a valid and enforceable United States patent or a valid and enforceable United States copyright registered under title 17, United States Code; or (ii) are made, produced, processed, or mined under, or by means of, a process covered by the claims of a valid and enforceable United States patent.
                (C) *The importation into the United States*, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, *of articles that infringe a valid and enforceable United States trademark registered under the Trademark Act of 1946*.
              As construed by CAFC in Bordeau, gives ITC the power to prevent the importation of goods that, if sold in US, would violate LA
        Right to prevent importation by unaffiliated defendant
          If P holds a US TM, and a company unaffiliated with D seeks to import goods marked with the same or similar TM, P has lots of remedies
        Grey-Market Goods
          defined:
            Bordeau (CAFC 2006): products produced by or with the consent of the US TM holder, but not authorized for sale in US
          USA system
            Importation is lawful if US and foreign TM holders have common interest or control (parent, subsidiary, or same) and goods bearing the TM are the same
              Kmart (US 1988) upholds Customs Service regulations, construing 1526, that refuse to ban the importation of foreign-made goods in cases of common control
              Variations
                US firm U sets up a plant in France to manufacture goods; plant ships goods to US for sale here; also sells goods in France; T buys goods in France and sells in US: OK
                US firm U sets up foreign subsidiary (U-France) to manufacture goods; U-France ships goods to US for sale here; U-France also sells goods in France; T buys goods in France and sells in US: OK
                Foreign firm (FF) makes and sells goods in France; sets up US subsidiary F-US); FF has foreign TM; F-US has US TM on identical mark; T buys goods abroad and imports to US: OK
              Effect: Limit opportunities for differential pricing and control of marketing channels
            Importation is unlawful if the two firms, though affiliated, lack common interest or control
              Classic example: F-France sells to US firm (U) the right to register Mark and to sell FF’s goods in US; T buys goods in France and imports to US. Not OK
              Variation: US Firm authorizes foreign Firm (F) to sell goods bearing the mark abroad, requires F to agree not to sell in US; T buys goods in France and sells in US. Not OK
                Until 1988, Customs Service permitted importation under these conditions,
                But SCt in K Mart struck this interpretation down
            Importation is unlawful even if the US and foreign TM owners have common interest or control if US and foreign goods bearing identical marks differ materially in substance
              Theory: generates consumer confusion because consumers will not know which set of characteristics to associate with the product
              Statutory bases
                Under 1526, material-difference standard applies only to goods manufactured abroad – K Mart
                Under 1337, material-difference standard applies both to goods manufactured in US and sold overseas, and to goods manufactured overseas (Bordeau)
              Determining “material difference”
                Not necessary that D’s product be inferior, just different
                Modest differences suffice
                  Martin Herend Imports (CA5 1997) -- slight difference sufficient
                  Bourdeau Bros. (CAFC 2006) GLK 996: Low threshold; only necessary that consumers would consider the features significant when deciding whether to buy
                    Different lighting systems, safety features, wagon hitches, instruction manuals on US and European tractors easily fit the bill
                  Nestle, 982 F.2d 639: different amounts of ingredients in chocolate
                  Original Appalachian, 816 F.2d 68 (CA2 1987): Cabbage Patch dolls sold in Spain have “adoption papers” in Spanish
                  Kia: differences in warranties sufficient
                Procedure: Kia Motors (2009):
                  “Therefore, courts have adopted a simpler, two-part test to determine if likelihood of confusion exists in a gray market goods context:
                    (1) were the goods not intended to be sold in the United States; and
                    (2) are they materially different from the goods typically sold in the United States?
                    Once a plaintiff establishes a material difference, the burden shifts to the accused infringer to establish by a preponderance of evidence that the difference is not the kind that consumers, on average, would likely consider in purchasing a product.
                Overriding with notice
                  “This product is not a product authorized by the United States trademark owner for importation and is physically and materially different from the authorized product”
                  notice must be “designed to remain on the product until the first point of sale to a retail customer in the United States”
                  Customs and Border Protection Regulation, 19 CFR 133.2-133.27
              P loses the benefit of the doctrine if it sells some goods within US with the same characteristics of the goods whose importation it’s challenging
                Bordeau Bros. (CAFC 2006)
          Systems used by regional TM regimes
    Domain Names
      History
        History of Domain Names
        Types of dispute
        late 1990s: Courts in various countries apply traditional trademark law to domain-name disputes in divergent ways
          Examples
            Amadeus Marketing (Italy 1997): TM owner must prove operation of similar DN is directly confusing or damaging to TM
            British Telecommunications (UK 1998): A DN incorporating a TM “shows an inherent tendency to confuse” consumers
            Champagne Céréales (France 1998): A DN mimicking an unregistered TM creates excessive likelihood of confusion
            Braunschweig (Germany 1997): DN incorporating name of a city creates likelihood of confusion
          Poor fit
            “Use in Commerce”?
            Consumer Confusion?
            Federal Dilution Doctrine only applies to “famous” marks
            Judicial proceedings are slow and expensive
          Pressure increases to develop sui generis system
      UDRP
        Coverage
          all gTLDs
          aprx. 1/3 of cc TLDs
        Requirements
          1. the domain name is identical or misleadingly similar to a trademark in which someone else has rights.
            cf. Initial interest confusion
            Applies to both registered and unregistered trademarks
          2. the holder of the domain name has no rights or legitimate interests in that domain name
            e.g., Pre-dispute use or demonstrable preparations to use the DN in bona fide offering of goods or services
            e.g., Defendant was commonly known by the name
            e.g., Legitimate, noncommercial or fair use of the DN without intent to misleadingly divert or tarnish
          3. the domain name has been
registered and is used in bad faith.
            e.g., Circumstances indicate that defendant’s main purpose was to sell DN to TM owner for more than the direct costs of registration
            e.g., History of registering DNs to prevent TM owners from registering
            e.g., Registering a DN in order to disrupt the business of a competitor
            e.g., Attempting to divert Internet users to Defendant’s site for commercial gain by creating confusion concerning source or sponsorship
        Procedure
          Complainant picks forum
          Respondent has 20 days to respond
          No additional submissions typically are permitted
          Decision within 14 days of appointment of panelist(s)
          Respondents default 50% of the time
          Remedies:
            Cancellation of the registration
            Transfer of the DN to the complainant
          Losing respondent can postpone remedy by filing suit within 20 days
        Approved Providers
          Asian Domain Name Dispute Resolution Centre
          Arab Center for Domain Name Dispute Resolution
          Czech Arbitration Court
          National Arbitration Forum
          WIPO
        Usage
      ACPA
        Requirements
          TM owners have civil cause of action against defendants who, with bad faith intent to profit from the goodwill of a TM, register or use a DN that is:
            identical or confusingly similar to a distinctive mark, or
              confusion assessed through comparison of the 2 names, not through evaluation of surrounding circumstances
              differences in suffixes or minor differences in spelling will not prevent a finding of confusion
            dilutive of a famous mark
          Factors used to determine bad faith
            1. Does D have IP rights in the DN?
            2. Is the DN D’s legal or customary name?
            3. D’s prior use of DN to offer goods/services
            4. D’s prior noncommercial or fair use of DN
            5. D‘s intent to divert business from P and harm P's good will by causing likelihood of confusion
            6. D's offer to sell DN – or habit of doing so
            7. Did D provide false contact information
            8. Did D acquire multiple DNs similar to TMs
            9. How distinctive or famous is P’s mark?
          Safe Harbor:
            “Bad faith intent” shall not be found where the defendant “believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful”
        Remedies
          Injunctive Relief (retroactive)
          Damages (nonretroactive)
          Statutory Damages (nonretroactive)
            $1000 - $100,000 per domain name
          In rem jurisdiction
            Fourth Circuit construes to reach suits brought under sections 32, 43(a) and 43(c), as well as suits under section 43(d)
          Registrars may sua sponte refuse to register marks that they deem to violate the rules
        Cases
          Sporty's
          Lucas Nursery
          PETA
          Mattel
    Secondary Liability
      Principles
        Bases of liability
          unfair competition
          LA 32
          LA 43(a)
          LA 43(c)
        contributory liability (classic version)
          D actively induces TM infringement
          D sells products or supplies services to a party that D knows or has reason to know is using them to infringe
        vicarious liability
          defendant and direct infringer must have an apparent or actual partnership
      Applications
        William Warner v. Eli Lilly (1924)
          pharmacists passing off "Coco-quinine"
        Inwood Labs (USSCt 1982)
          generic drug manufacturer supplies drugs to pharmacist known to be mislabeling them
        Mini Maid Services (CA11 1992)
          Franchisor has no duty to supervise diligently the activities of franchisees
          But franchisor is liable if it knew of infringements by franchisees and failed to exercise contractual power to stop
        Hard Rock Cafe (CA7 1992)
          contributory liability
            "willfully blindness" would give rise to liability
            but flea market operator is not obliged to seek out and prevent acts of infringement
          vicarious liability
            flea market operator is not vicariously liable where it did not exercise joint ownership or control over the infringing products
        Fonovisa (CA9 1996)
          flea market operator liable for "supplying the necessary marketplace" for infringing sales
        Lockheed Martin (CA9 1999)
          Domain name registrar (NSI) not liable for registering and refusing to cancel infringing domain names
          no "direct control and monitoring"
        GEICO v. Google (EDVa 2004)
          purchasers of banner ads incorporate in those ads P's TMs in ways that cause consumer confusion
          held: Google is secondarily liable because it exercises significant control over the content of the ads
        Perfect 10 (CA9 2007)(2/1)
          credit card companies processes payments made by customers to websites selling images that infringe P's TMs
          contributory liability
            held: insufficient "direct control and monitoring of the instrumentality" to support secondary liability
          vicarious liability
            no VL where defendant credit card companies and infringing websites did not have a symbiotic relationship and were not under joint ownership and control
        Ebay cases
          France
            legal principles:
              Civil Code, arts 1382-1383 impose general duty to avoid causing harm to another
              Art. 6 of Law on Confidence in Digital Economy grants safe harbor to internet hosts
            case law
              Louis Vuitton (2008)
                ebay liable; as broker receiving commissions, doesn't qualify as host
              Hermes (2008)
                same
              Christian Dior (2008)
                same
              L'Oreal (2009)
                eBay not liable; had taken sufficient precautions
                parties urged to undergo mediation
          Germany
            Internet Auction II (2007)
              eBay liable as an intermediary for sales of counterfeit Rolex watches
              however, liability dependent upon capacity to detect and halt infringing sales with reasonably affordable filtering technology
          UK
            L'Oreal (2009)
              eBay liable only if it "procured or induced [the primary infringer's behavior], or joined in the common design pursuant to which the [infringement] was committed."
          Belgium
            Lancome (2008)
              eBay qualifies as a host under Article 14 of the EU Directive on Electronic Commerce
          USA
            Tiffany v. eBay
              Facts
                Tiffany products routinely sold on eBay; some are counterfeit
                Ebay removes auction items whenever Tiffany identifies them as counterfeit
                But Ebay refuses to monitor auctions to ensure that no one seller offers more than five items
              decision
                SDNY 2008: eBay not liable; no "specific knowledge" of infringement; duty to monitor does not run this far
                CA2 2010: No liability in absence of either:
                  failure to respond after receiving specific notice of infringing works
                  willful blindness
              eBay’s current policies
                Vero
                Notice of claimed infringement
                eBay Against Counterfeits
  V. Defenses
    Fraud
      Substantive Standard
        2003-2009, TTAB adopted an easy-to-satisfy standard: X commits fraud if it knew or should have known that a statement was false or misleading
          Medinol (2003)
          Standard Knitting (2006)
        In Bose (2009), CAFC reinstated traditional standard: applicant *knowingly* makes a *false*, *material* representation to PTO with *intent to deceive*
          Neither negligence nor gross negligence is
sufficient; need scienter
          Proof must be by clear and convincing evidence
          But intent may be inferred from objective evidence
          Applied: General Counsel’s belief that repairing old tape recorders sold under the Wave label was sufficient to establish continuing use is enough to negate scienter
        Since then, findings of fraud have been rare
          e.g., Melodrama Publishing (SDNY 2013) (multiple clear-cut lies)
          e.g., Nationstar Mortgage (TTAB 2014) (registrant’s testimony found to be “so lacking in conviction and credibility as to be virtually incapable of corroboration.”
      Penalty
        Effect: Cancellation
          Can be asserted to cancel any registration
          Even apply to incontestable marks
        Severity of the penalty arises from the fact that cancellation covers the mark as a whole, not just uses of the mark to which the fraud applies
          See, e.g., Bose (2009): Bose falsely asserted that mark Wave was still used on tape recorders; TTAB decision: cancel mark even as to radios
        However, trademark owner retains common-law rights
    Fair Use
      Classic Fair Use
        Typical scenario:
          P secures protection for a descriptive mark through secondary meaning (SM)
          D uses P’s mark, *not as a TM or service mark* (i.e., not to indicate origin or source – the company from which it emanates) but rather to describe fairly and in good faith *D’s products* (i.e., their characteristics or geographic origin)
        Examples
          Zatarains (CA5 1983):
            P had valid mark in “Fish-Fri”;
            D described its coating mix for fried food as “Fish Fry”
            Held: fair use
          US Shoe (CA2 1990) (Leval)
            P’s slogan: “Looks like a Pumo, feels like a sneaker”
            D’s slogan: “And when we say if feels like a sneaker, we’re not just stringing you along”
        KP Permanent Make-up
(US 2004)
          D need not disprove likelihood of consumer confusion
            Rely on text of 33(b)(4)
            Some degree of consumer confusion is compatible with fair use
          But SCt leaves open possibility that consumer confusion is relevant to proof of the component parts of the defense:
            b. really descriptive in character
            a. “objectively fair”
          Court of Appeals on remand constructs a list of factors to determine whether D's action was "fair":
            1. likelihood of confusion
            2. strength of P’s mark
            3. descriptive nature of the term
            4. available alternatives
            5. extent of use of the term prior to registration
            6. any differences among the times and contexts in which P has used the term
      Nominative Fair Use
        Requirements
          When D (a commercial user) uses P‘s mark to describe P‘s product, fair use iff:
            1. P‘s product is not readily identifiable without use of the TM
            2. only so much of P‘s mark is used as is necessary to identify P‘s product
            3. D in no way suggests that P sponsors the reference
        Examples
          New Kids (CA9 1992)
            USA today and The Star set up 900 numbers to determine fans’ opinions as to the most attractive member of the New Kids on the Block
    Laches
      No Statute of Limitations for Lanham Act violations
        Some states have SOLs
          But don’t do much good, because continuing tort of use of an infringing mark keeps pushing the cutoff date back
        Instead, courts use doctrine of laches to penalize delay
      Equitable doctrine
        No right to trial by jury
        Lots of discretion in trail court
        Court of Appeals reviews for abuse of discretion
      Defendant must show:
        P had knowledge of D’s use of the mark
        P delayed inexcusably in taking action
          Examples of Legitimate Excuses
            Good-faith settlement negotiations
            P was litigating against other infringers
            P was waiting until moment when D’s activity posed significant threat of confusion/harm – “progressive encroachment”
              but cf. Polaroid (inequitable to wait until D’s business is well established)
        D will be prejudiced by P’s delay
      Public Interest:
        Laches may be trumped by interest of the public in not being confused
        The greater the likelihood of confusion, the greater the odds that court will refuse to recognize laches
          Where confusion is “inevitable,” court will often ignore even clear, long delay
        some courts are less likely to recognize laches as a defenses when P seeks injunctive relief
      Laches in Cancellation Proceedings
        "flipped" use of the doctrine
          i.e., employed by TM owner to repel attacks on the mark
        Harjo (DCCir 2009)
          Laches applies only to *parties* who have unjustifiably delayed
            i.e., look at issue from individual standpoint
            check age and actions of youngest challenger
          Requires proof of:
            (1) Lack of diligence
            (2) Prejudice
              (a) trial prejudice, or
                --i.e., impact D’s ability to mount effective defense
              (b) economic prejudice
                --i.e., TM owner relied to his detriment on challenger’s delay (applied generously to P)
                --continued investment in the mark in question is enough
            the more of one; the less you need of the other
    Noncommercial Activities
      "Trademark Use"
        Theory
          Some commentators (e.g., Stacy Dogan; Mark Lemley; Margreth Barrett) argue that TM liability is only possible when the mark at issue is used to mark goods or services, which are then distributed in commerce
            Liability for TM infringement should arise only where D is
              (a) selling goods or services and
              (b) using the mark at issue to designate those goods or services
                i.e., D invites consumers to regard the mark as a designation of D's goods or services, and
                Consumers are likely to regard the mark as a designation of D's goods and services
            History
              These limitations were little noticed in the past, because defendants' behavior routinely qualified
              But now novel uses of TMs are bringing them to the surface
            Scholarly Applications
              Would exempt search engine cases – where TM is used as a trigger to show an ad
              Would exempt companies selling domain names that include TMs
          Other commentators (e.g., Graeme Dinwoodie and Mark Janis) argue no such doctrine
            No support in the case law
            Would render TM Fair Use Doctrine irrelevant
            Analytically unhelpful
              Mark McKenna
        Judicial Applications
          Popup Ads
            1-800-Contacts (CA2 2005) adopts TM Use requirement
          Adwords
            Facts:
              Google sells keywords to advertisers
              when a users employs such a keyword, the advertiser's name, etc., appears as a "sponsored link"
              advertisers are permitted to register as keywords the TMs of their competitors
            US Case Law
              Longstanding disagreement among District Courts concerning whether "trademark use" doctrine exempts this conduct altogether
              Rescue.com (CA2 2009): it does not
                D's conduct satisfies "use in commerce" requirement
                "Google's utilization of Rescuecom's mark fit[] literally within the terms specified by [section 45:] Google uses and sells Rescuecom's mark "in the sale ... of [its advertising] services ... rendered in commerce.'"
              Case-by-case determination of whether it gives rise to consumer confusion
              Meanwhile, Google continues to engage in the practice
            EU Case Law
              ECJ Decision (March 2010)
                1. P must show that D used P's TM "in the course of trade"
                  a. in the context of direct liability for use of identical signs, this requires only that the use “occurs in the context of commercial activity with a view to economic advantage and not as a private matter.” (¶50).
                    the advertisers behavior fits this requirement, even if the use of P's mark is "invisible"
                  b. But Google's indirect use of the TMs does not satisfy this threshold requirement
                2. To prevail against the advertisers, P must still show that Ds' use had an adverse effect on a "protected function" of the mark
                  a. Indication of origin
                    left to national courts to decide
                    but ECJ suggests:
                      such adverse impact will arise where D's ad suggests economic link between D and P -- or where "normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor"
                  b. "advertising function"
                    “using its mark for advertising purposes designed to inform and persuade consumers.”
                    mere use of the ad will not have an adverse impact
                    but use of the ad to sell imitations of P's good will likely have an adverse impact
                3. National courts left to decide whether Google can invoke the safe harbor of Art. 14 of the TM Directive
            Australia
              Google v. ACCC (2013)
      “In connection with…”
        Ambit of TM law now roughly coterminous with commercial speech doctrine
  VI. Advertising
    Trademark Regime
      LA 43(a)(1)(B)
        (1) <u>Any person who, on or in connection with any goods or services</u>, or any container for goods, <u>uses in commerce</u> any word, term, name, symbol, or device, or any combination thereof, or <u>any false designation of origin, false or misleading description of fact, or false or misleading representation of fact</u>, which ...
(B) <u>in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities</u>,
shall be liable in a civil action <u>by any person who believes that he or she is or is likely to be damaged by such act.</u>
      Coverage
        only commercial speech
          n.a. to consumer reports
            cf. Bose
          n.a. to innocent dissemination by the media
          Test (Bolger)
            “Strong support” for finding that a particular statement is commercial if all three of the following are true:
              (1) it’s an ad;
              (2) the statement refers to a specific product or service
              (3) the speaker has commercial motive
        only statements of fact
        applies to both:
          statements about D's product
            e.g., Mutation Mink Breeders (SDNY 1959): Δ used “mink” to describe its own imitation fur
            e.g., Consumers Union (D Conn. 1970): Δ misrepresented the rating it received from Consumers Reports
          statements about P's products
            Originally covered by vague CL tort of disparagement
            Until 1988, not covered by §43(a)
              although some courts squirmed around this limitation
            1988 amendments have made it actionable -- in commercial advertising or promotion
              not consumer reporting or politics
        standing
          consumers lack standing
          direct competitors have standing
          prior to 2014, circuit split concerning how far beyond direct competitors the circle of standing extends
            "Categorical approach" (CA7, CA9, CA10)
              only actual competitors have standing
            AGC test (CA3, CA8, CA11)
              modeled on AGC v. Carpenters (SCt 1983), governing standing in antitrust private actions
              Consider 5 factors:
                (1) nature of P's injury (Is it the sort Congress in Lanham Act sought to address
                (2) directness of asserted injury
                (3) P's proximity to alleged wrongful behavior
                (4) speculativeness of damages
                (5) risk of duplicative damages or complexity in apportioning damages
            "Reasonable interest" approach (CA 2, CA6)
              P must show only:
                (1) P has a reasonable interest in being protected against the alleged false advertising; and
                (2) P has a reasonable basis of believing that that interest is likely to be damaged by the alleged false advertising
          clarified by Lexmark v. Static Controls (2014)
            P has standing to assert a claim under 43(a)(1)(B) if both:
              1. P alleges an injury to a commercial interest in reputation or sales (and thus comes within the “zone of interests” of the provision
              2. P’s injuries were *proximately caused* by the violation of 43(a)(1)(B)
      Rules
        False Advertising
          P must prove:
            (1) the defendant made a false or misleading description of fact or representation of fact in a commercial advertisement about his own or another's product;
            (2) the misrepresentation is material, in that it is likely to influence the purchasing decision;
              e.g., the statement pertains to "an inherent quality or characteristic" of the product
                NBA (CA2 1997)
              the group whose purchasing decisions are relevant = the group at whom the ad is directed
            (3) the misrepresentation actually deceives or has the tendency to deceive a substantial segment of its audience;
              (a) Literally False Statements
                Identify claims
                  Both explicit
                  And necessary implications
                    Throwing Coke can into trash bin labeled, “Keep the Arctic Pure” implies that Coke is not pure
                    Not “puffery” if makes a specific and measurable claim about product superiority
                Ascertain whether those claims are false
                  If there are two or more meanings of a term (e.g. “concentrate”), and one is not false, then no falsity
                If false, deception is presumed
                  some courts suggest that it's possible for D to overcome this presumption through proof at trial, but rarely feasible
              (b) Misleading Statements
                coverage:
                  "advertisement, though explicitly true, nonetheless conveys a misleading message to the viewing public"
                    Clorox (CA1)
                To win, P must show either:
                  (i) “substantial portion of the audience for that statement was misled”
                    Usually done by survey
                    Questions can’t be “leading”
                  (ii) D intentionally set out to mislead consumers
                    D "acted willfully with intent to deceive or bad faith"
              (c) Puffery
                "exaggerated advertising, blustering, and boasting upon which no reasonable buyer would rely"
                  Southland (CA9 1997)
            (4) the defendant placed the false or misleading statement in interstate commerce; and
            (5) Causation -- i.e., the plaintiff has been or is likely to be injured as a result of the misrepresentation, either by direct diversion of sales or by a lessening of goodwill associated with its products.
              only necessary to recover damages; for injunctive deception of the public is sufficient
        Comparative Advertising
          US
            Comparative Ads are OK if truthful
              OK to refer to someone’s TM in an ad, indicating that your product is as good or better, so long as:
                No misrepresentations
                No R likelihood of consumer confusion
              Refinements
                the fact that “ignorant or inattentive” consumers misunderstand is not fatal
                  August Stork v. Nabisco (CA7 1995), Easterbrook
                "Tests prove" claims are subject to greater scrutiny
                  If D merely assert's that D's product is better than P's, to prevail P must prove that the claim is "actually false," not merely unproven
                  If D asserts that "tests prove" D's product is better, to prevail P need only prove that the tests at issue were inadequate to support the claim
                    Rhone-Poulenc (CA8 1996)
          EU
            Comparative Advertising Directive (97/55/EC), Art. 3a(1)
              Comparative advertising is permitted if the following conditions are met:
(a) it is not misleading;
(b) it compares goods or services meeting the same needs or intended for the same purpose;
(c) it objectively compares one or more material, relevant, verifiable and representative features of those goods or services, which may include price;
(d) it does not create confusion in the market place between the advertiser and a competitor;
(e) it does not discredit or denigrate the trade marks, trade names or other distinguishing signs of a competitor;
(f) for products with designation of origin, it relates to products with the same designation;
(g) it does not take unfair advantage of the trade mark or other distinguishing sign of a competitor;
(h) it does not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name.
            Trade Mark Directive, Art. 5
              (1) ... The proprietor [of a registered trade mark] shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered ...
              (2) Any member state may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark ... where the latter has a reputation in the member state and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark ...”
            L'Oreal v. Bellure (ECJ 2009) (Case C-487/07)
              Facts
                D manufactured "smell-alike" perfumes
                D chose names and packaging that conveyed resemblance to famous perfumes
                D distributed to dealers a chart that showed exactly which famous perfumes D's perfumes imitated
              The typical kinds of TM injury were not present
                consumers were not confused as to source
                Plaintiffs' marks were not diluted
                  i.e., no injury to distinctiveness or repute
              Nevertheless, comparative advertising of this sort was held unlawful
                violates TMD Art. 5(2)
                  Free-riding is sufficient
                  "The advantage arising from the use by a third party of a sign similar to a mark with a reputation was an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party sought by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image."
                violates TMD Art. 5(1)
                  the "functions" of the mark protected by 5(1) go beyond source identification
                  include "other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising"
                violates CAD Art. 3a(1)
                  presenting oneself as an imitation or replica
                  taking unfair advantage
    Nontrademark Regimes
      Federal Trade Commission
        FTC interprets and enforces Section 5 of FTA Act, which prohibits "false and deceptive" ads
        New Rules Concerning Endorsements and Testimonials
          (a) representative results
            under old rules, advertisers could report atypical consumer experiences, provided they were accompanied by a disclaimer
              e.g., "results not typical"
            new rules: advertisers must disclose the experience that consumers generally can expect
          (b) affiliations
            nonobvious affiliations between advertisers and endorsers or testing agencies must be disclosed
              applies to celebrities, bloggers, social media, etc.
              FTC's explanation (text)
          penalties
            The guides are not regulations, and thus violations of them do not automatically give rise to civil or criminal penalties
            However, if advertisers violate them, FTC may investigate to determine if the practice is unfair or deceptive
              early investigation of Ann Taylor (2010) resulted in no sanction
              but subsequent investigation of In re Legacy Learning Systems (2011) resulted in settlement of $250K
            FTC appears not to be pursuing individual bloggers
              Richard Cleland, Asst. Director of FTC Advertising Division:
                "That $11,000 fine is not true. Worst-case scenario, someone receives a warning, refuses to comply, followed by a serious product defect; we would institute a proceeding with a cease-and-desist order and mandate compliance with the law. To the extent that I have seen and heard, people are not objecting to the disclosure requirements but to the fear of penalty if they inadvertently make a mistake. That's the thing I don't think people need to be concerned about. There's no monetary penalty, in terms of the first violation, even in the worst case. Our approach is going to be educational, particularly with bloggers. We're focusing on the advertisers: What kind of education are you providing them, are you monitoring the bloggers and whether what they're saying is true?"
          gaps
            automated "likes" and "don't likes"
            zombie "followers" on Facebook and Twitter
            faux viral recommendations of YouTube-based ads
            paid negative reviews of competitors
            "gag" consumer contracts
            celebrity endorsements
            traditional media
              e.g., restaurant reviews
      State Statutes
        e.g., Massachusetts, 93A
          prohibits unfair and deceptive trade practices
            construed to cover any material statement that has the capacity or tendency to deceive
            also covers nondisclosure of material information
          remedies
            consumers can recover actual damages or $25
            if the offense was willful, consumer can recover enhanced damages, costs, and atty fees
        e.g., Florida Unfair and Deceptive Trade Practices Act
          Used by Fla. Atty Gen to pursue Merck for false advertising of Vioxx
        e.g., California
          Unfair competition law
            provides private cause of action for any "unlawful, unfair or fraudulent business act or practice" Cal. Bus. & Prof. Code 17200
          Consumer Legal Remedies Act
            forbids "unfair methods of competition and unfair or deceptive acts or practices" Cal Civil Code 1770
          applied: Pelayo (2013)
      Council of Better Business Bureaus
        Advertising Self-Regulatory Council
        Children's Advertising Review Unit
        Appeals to National Advertising Review Board
        Interlock with FTC Enforcement
  VII. Remedies
    LA 35(a)
      When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a) or (d), or a willful violation under section 43(c), shall have been established in any civil action arising under this Act, the plaintiff shall be entitled, subject to the provisions of sections 29 and 32, and subject to the principles of equity, to recover:
        (1) defendant's profits,
        (2) any damages sustained by the plaintiff, and
        (3) the costs of the action.
      The court shall assess such profits and damages or cause the same to be assessed under its direction.
      In assessing **profits** the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed.
        If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case.
        Such sum in either of the above circumstances shall constitute compensation and not a penalty.
      In assessing **damages** the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount.
      The court in exceptional cases may award reasonable attorney fees to the prevailing party.
    Damages
      Available for:
        32(1)(a) – registered marks
          provided that D had actual or statutory notice
            statutory notice created by marking goods with ®
        43(a) – unregistered marks and false advertising
        <u>willful</u> violations of 43(c) -- dilution
          LA 43(c)(5)(B): “in a claim arising under this subsection—(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or (ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.”
        43(d) – cybersquatting
      Forms
        Plaintiff's Damages
          General principle: compensate plaintiff for all reasonably foreseeable harms caused by the defendant’s wrong
            If the infringement was intentional, courts will accept “crude” measures of damages based upon reasonable inferences (Intel 1993)
          a. Plaintiff’s lost profits
            profits that would have been made on lost sales
            “Head start” theory of Taco Cabana:
              D’s misconduct delayed P’s entry into Houston market
          b. Damage to good will
            appropriate to consider the amount P had spent on building its reputation
          c. Cost of corrective advertising
            Some courts dispense of requirement to show actual confusion by consumers
            In calculating the amount, Big O Tire (CA 10 1977) relies on FTC rule that companies who engage in misleading advertising have to spend 25% of the amount they spent on the misleading ads on corrective ads
        Defendant's Profits
          Procedure:
            P need only prove D’s gross revenue during the period
              But sometimes courts in false advertising case will require P to prove causation: that D’s revenues resulted from false statements
            D then has burden of showing which revenues were not attributable to D’s infringing conduct and the costs that should be deducted
        willfulness unnecessary except for dilution
          Until 1999, courts construed to require showing of willfulness or bad faith
          Amendment of 35(a) in 1999 to add damages for “willful" violations of 43(c) has prompted most courts to conclude that willfulness is no longer necessary for other provisions of 43
        Damage awards are “subject to principles of equity” – 35(a). Relevant factors:
          (1) intent to confuse or deceive
            (willfulness as a "factor")
          (2) whether sales were diverted
          (3) adequacy of other remedies
          (4) unreasonable delay by P
            (laches as a "factor")
          (5) public interest in making conduct unprofitable
          (6) whether there was “palming off”
        Enhanced Damages
          35(a) gives court discretion to increase, up to treble
            usually limited to willfulness
            lots of discretion, but overall goal must be compensatory, not punitive
              use to provide proper redress to otherwise undercompensated P, particularly where imprecision in actual damages is D’s fault
          35(b), governing intentional use of a mark, knowing it to be counterfeit, requires imposition of treble damages or profits + atty fees
          no punitive damages under LA, but punitive damages are available in some states
        Attorney Fees
          Available in “exceptional cases”:
            Wide range of variables considered by courts
              malicious,
              fraudulent,
              deliberate,
              willful
              bad faith,
              vexatious litigation
              litigation misconduct
            Many courts apply lower standard to defendants than to plaintiffs
            Judge Posner recently tried to clarify the doctrine in Nightingale (2010)
              We conclude that a case under the Lanham Act is "exceptional," in the sense of warranting an award of reasonable attorneys' fees to the winning party, if the losing party was the plaintiff and was guilty of abuse of process in suing, or if the losing party was the defendant and had no defense yet persisted in the trademark infringement or false advertising for which he was being sued, in order to impose costs on his opponent.
        Statutory Damages
          If D has used *counterfeit* mark, P can elect
            “A "counterfeit" is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” section 45
            amount:
              $1000-$200K per mark per type of good
              up to $2M if willful
            rationale:
              “counterfeiters’ records are frequently “nonexistent, inadequate, or deceptively kept[,] . . . making proving actual damages in these cases extremely difficult if not impossible.” S. Rep. No. 104-177, at 10 (1995).
            circuit split on whether election of statutory damages is compatible with recovery of attorneys fees
          For cybersquatting, $1000-$100K per domain name
    Injunctions
      Forms
        Simple Cease & Desist
        Tailored Injunctions
          principle: an injunction should be “narrowly tailored to fit specific legal violations" and that a court "should not impose unnecessary burdens on lawful activity."
            qualification: trend toward less “tailored” injunctions to accommodate increasingly expansive reach of Internet-based businesses
              “It does not follow from [the general principle] that a senior user who has proven entitlement to an injunction affecting one geographic area by reason of the junior user's infringement must show the same high degree of probability of harm in every further area into which the injunction might extend, thus allowing the infringer free use of the infringing mark in all areas as to which the senior user has not shown a substantial probability of confusion. "[A] party who has once infringed a trademark may be required to suffer a position less advantageous than that of an innocent party . . . and a court can frame an injunction which will keep a proven infringer safely away from the perimeter of future infringement.” Guthrie (CA2 2016)
          If both parties have plausible equitable claims, courts will try for compromise
            e.g., Thermos case: can use term “thermos,” because now generic, but can’t capitalize T, or indicate “original” thermos
        Disclaimers
          Courts sometimes rule that disclaimers are necessary and sufficient to prevent confusion
          Wide range of views
            Growing academic literature casting doubt on effectiveness of disclaimers
              Jacoby & Raskopf (1986);
              Radin (1986)
            Second Circuit, influenced by this literature, has imposed on defendants the burden of showing disclaimers will work, at least where the likelihood of confusion is substantial
              HBO v. Showtime (CA2 1987), crediting this literature, finds insufficient proof by Showtime that disclaimer would avoid misimpression of association with HBO
              But Soltex (CA2 1987) finds disclaimer adequate in light of general good faith by D and fact that Polaroid factors tilt only “minimally or moderately” toward P
            CA9 and CA10 have followed CA2
        Destruction
          For violation of 32 or 43(a) or willful violation of 43(c), court may order seizure and destruction of all offending materials in D’s possession
        Confiscation
          34(d) authorizes ex parte seizure of all goods bearing counterfeit marks
      Standard for Issuance
        Traditional Approach
          To obtain a preliminary injunction, P must prove either:
            (a) likelihood of success on merits + possibility of irreparable injury
              Once likelihood of confusion in proven, ordinarily presumed that P will suffer irreparable harm
            (b) serious questions concerning the merits have been raised + balance of hardships and public interest favor P
          In both cases, sliding scale (more of one, less you need of the other)
        Impact of eBay decision (in context of patent law)
          Ebay (2006)
            facts
              patent 5,845,265
                Abstract: A method and apparatus for creating a computerized market for used and collectible goods by use of a plurality of low cost posting terminals and a market maker computer in a legal framework that establishes a bailee relationship and consignment contract with a purchaser of a good at the market maker computer that allows the purchaser to change the price of the good once the purchaser has purchased the good thereby to allow the purchaser to speculate on the price of collectibles in an electronic market for used goods while assuring the safe and trusted physical possession of a good with a vetted bailee.
                full patent
            holding
              trial courts should apply standard rules of equity in determining whether to grant injunctions in patent cases
                (a) the plaintiff has suffered an irreparable injury;
                (b) monetary damages are inadequate to compensate for that injury;
                (c) the balance of hardships favors the plaintiff; and
                (d) the public interest would not be disserved by a permanent injunction
            concurrences
              Roberts, Scalia, Ginsburg
                exercise of discretion should take into account that injunctions traditionally had issued in vast majority of successful patent suits
              Kennedy, Stevens, Souter, Breyer
                denying injunctions may be appropriate when:
                  plaintiff is a patent troll
                  patent covers one component of complex product
                  patent in question is a business method patent, often of suspect validity
                    "In addition injunctive relief may have different consequences for the burgeoning number of patents over business methods, which were not of much economic and legal significance in earlier times. The potential vagueness and suspect validity of some of these patents may affect the calculus under the four-factor test."
          Circuits vary sharply on the degree to which eBay corrodes traditional presumption of irreparable harm in trademark cases
            CA3, CA9: complete corrosion
            CA1, CA10, CA11: partial corrosion
            CA4, CA5, CA6: presumption survives
            CA2, CA7, CA8: have not yet taken a position
          objections to the application of eBay
            (a) injures public: denial of injunction results in continued confusion
            (b) would seem to raise a problem for P of “naked licensing” – because no quality controls
    Criminal Penalties
      Statutory Provisions
        18 USC 2320
          available only for intentional trafficking in goods or services using counterfeit mark
          Penalties:
            Fine up to $2M
            Up to 10 years in prison
      Purposes
        1. “Protecting a mark-holder’s intellectual property from theft or dilution”
        2. “Protecting consumers from fraud”
        3. “Protecting the safety of non-purchasing users”
          “For example, airline passengers are victims of counterfeit airplane parts, coronary patients are victims of counterfeit heart pumps, and children are victims of counterfeit infant formula, even though in each case the counterfeit goods were purchased for those consumers’ bene t by another person.”
        4. “Enforcing market rules”
        DOJ Guidelines for Prosecutors (2015), pp. 89ff
      The government must prove:
        1. The defendant *intentionally trafficked or attempted or conspired to traffic* in goods or services (or labels, documentation or packaging for goods or services); and
        2. The defendant *knowingly used a counterfeit mark* on or in connection with those goods or services, or a counterfeit mark was applied to labels, documentation, or packaging for those goods or services.
          Narrow definition of “counterfeit mark”. Government must prove:
            1. The counterfeit mark was not genuine or authentic;
            2. The counterfeit mark was *identical to or substantially indistinguishable* from a genuine mark owned by another;
            3. The genuine mark was *registered* on the principal register in the United
States Patent and Trademark Office;
            4. The genuine mark had been *in use* by the mark-holder or its licensee;
            5. The counterfeit mark was used “*on or in connection with*” the defendant’s goods or services (or in the case of labels and packaging, the counterfeit mark was “applied to or used in connection with” the goods or services or was “applied to or consist[ed] of ” labels, documentation, or packaging “of any type or nature”);
            6. The counterfeit mark was used “in connection with” *the type of goods or services for which the protected mark was registered*, (or in the case of labels and packaging, the counterfeit labels, documentation, or packaging were “designed, marketed, or otherwise intended to be used on or in connection with the goods or services for which the mark [was] registered”); and
            7. The counterfeit mark was used in a manner *“likely to cause confusion, to cause mistake, or to deceive.”*
        DOJ Guidelines for Prosecutors (2015), pp. 89ff
  III. Losing Protection
    Abandonment
      Nonuse
        Traditional Rule:
          Abandonment requires both nonuse and intent to abandon
            See Gold Seal Associates (SDNY 1932)
            Parallels CL doctrine of abandonment for personal property
              need both deliberately leaving the object behind and intent to abandon
            lapse of time without use may be evidence from which intent to abandon may be inferred, the strength of the inference being dependent upon the period of discontinuance, the cause of it, and other factors
            But intent to relinquish must be shown
          Applied: As long as P is making efforts to keep the business going, no intent to abandon
        Current Rule:
          LA 45
            A mark shall be deemed to be "abandoned" if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark….
          Abandonment requires two things:
            Nonuse
            Intent not to resume
          3 years of nonuse (increased from 2 years per TRIPS) of federally registered mark constitutes prima facie abandonment
            but it can be rebutted by proof of intent to resume use
          Cases
            Silverman (CA2 1989)
            Exxon (CA5 1983)
            California Cedar (CA2 1984)
      Changes in Product or Service
        transferring TM to different product or service is permissible if the old and new versions are "closely related"
          test: would consumers think that the new product is coming from the same source
        sudden and substantial change in quality or composition may result in abandonment
        but gradual and incremental changes in quality or composition are acceptable
          rationale: consumers expect them
          e.g., Marilyn Neutraceuticals (CA9 2009)
    Genericide
      Test: If the principal significance of a mark to the public is to indicate the nature or class of an article, rather than its source (i.e., the person or organization that produces it), then it’s generic
        it had lost its distinctiveness
        other producers must be allowed to use it
        test refined by §1064, reversing the AntiMonopoly decision (CA9 1982)
          “A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, … (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, …. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. *The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.*”
          obscure language, but the gist is that, to be distinctive, a mark need not be attractive to consumers because they know and trust the manufacturer
      Circumstances that affect likelihood of genericide
        Things to avoid:
          TM owner uses the mark in denominative sense
          TM owner uses the mark as noun or verb, rather than as an adjective, attached to some generic term
        Names of patented goods, when the patent expires
          Kellogg (US 1938) (Shredded Wheat) seems to stand for the general proposition that they become generic automatically
          But courts do not generally so hold
            e.g., Bayer: it’s a factor, but not decisive
        Efforts of the TM owner
          trial court in the Thermos case chastises King-Seeley for not exercising “due diligence” in the period between 1923 and early 1950s to prevent generic use of Thermos in the nontrade publications
          Moore, however, suggests that it’s irrelevant
      Options for a TM holder whose mark have become generic
        no protection under §32 or §43(a)
        courts retain and frequently exercise power to craft tailored remedies
          e.g., to require Aladdin (for a while) to insert various disclaimers, to only use thermos in lower case, etc.
          see also Learned Hand’s detailed injunction in the aspirin case
        Some courts permit the TM holder to rely on unfair competition
          Intentional passing off
    Assignments
      TMs may be assigned
        cf. prior appropriation in water law
      Limitations
        to be assignable, TMs must be associated with an ongoing use in commerce
          abandoned marks may not be assigned
          ITU applications may not be assigned
            attempt to do so voids the application
        No assignments in gross
          in most countries, TMs can be assigned in gross
          in USA, transfers in gross are commonly held to constitute abandonment
        but TMs may be assigned along with other assets
          Some courts stick to older US rule: must be accompanied by transfer of physical assets -- like machines, customer lists, etc.
          Others permit assignment of the mark if accompanies transfer of "goodwill"
            goodwill = "favorable consideration shown by purchasing public to goods known to emanate from a particular source" (Rogers 1914)
              reasonable expectation of future patronage
            A few courts are satisfied by mere recitation of transfer of good will
            others construe to require maintenance of quality controls during transfer -- and reasonable time thereafter
              Platt, "Good Will Enduring" (2009)
            Some say that no “goodwill” is transferred if the assignee plans to use the mark on a new and different product
              goodwill consists of the public’s faith that the product will remain good; n.a., where the product is changed
    Licenses
      Licensing of the mark to others without controlling the quality of their products results in abandonment
        rationale: otherwise the licensees will be able to reduce the quality, and the public will be deceived
      But licensing accompanied by effective controls over quality does not result in abandonment
        Range of views concerning the necessary quality controls
          Sufficient if there’s evidence that licensor was familiar with and relied upon licensee’s quality controls
          Close working relationship is also sufficient
          Judge Hand would impose more stringent requirements re effective policing than the rest of the CA2
  II. Acquiring Protection
    Registration
      Not essential for TM protection
        unregistered marks get common-law protection
        unregistered marks are protected by LA 43(a)
      Benefits of Registration
        (a) provides others constructive notice of registrant’s claim
        (b) nationwide constructive use as of date of application
        (c) prima facie evidence of exclusive right to use the mark in connection with the goods or services named in the application
          some courts hold that this merely shifts burden to D to challenge validity
          CA2, CA4, and CA9 hold that registration creates "strong presumption of validity"
        (d) right to bring suit in federal court without regard to diversity of citizenship
        (e) right to invoke aid of Customs Service -- e.g., grey market goods
        (f) more generous remedies -- e.g., treble damages and attorneys fees
        (g) access to incontestability doctrine
      Paths to Registration
        1. Current Use in Commerce (LA 1(a))
          Registration Procedures
        2. Intent-to-Use (ITU) Applications (LA 1(b))
          applicant may secure priority date by filing ITU application, then engaging in use in commerce within 6 months, then filing certificate
            can get extensions for up to 3 years for good cause
          option available since 11/16/1989
          has led to many speculative filings
            e.g., "Seal Team 6"
        3. Foreign Applications (LA 44(d))
          nationals of treaty partners or countries providing reciprocity may file US TM application within 6 months of foreign application + intent-to-use statement
          US registration granted upon either:
            use in commerce in US, or
            foreign registration granted
              may maintain US registration for up to 6 years, even without any use in the US or elsewhere
          priority date = date of foreign application
        4. Foreign Registrations (LA 44(e))
          nationals of treaty partners or countries providing reciprocity may file US TM application based upon registration of the mark in applicant's country of origin
        5. Madrid Protocol (LA 66(a))
          see International Framework (above)
          available since Nov. 2, 2003
    Use
      General principle of US TM law: one must use a mark in the US to acquire rights to it
        Common Law
          "Use in Trade"
            Blue Bell (CA5 1975)
          bona fide use of the mark in connection with offering goods or services to the public
          publicity or solicitation *may* be sufficient if combined with intent to use
        Lanham Act
          "Use in Commerce"
            interstate commerce
            intrastate commerce that affects interstate commerce
              e.g., restaurants with interstate clientele
            commerce with other countries
            commerce with "Indian Tribes"
          Unregistered Marks (43(a))
            Common-law standards apply
            advertising and promotion is sufficient if (a) occurs within a commercially reasonable time prior to sales or service and (b) is sufficient to create an association among mark, goods/service, and user
          Requirements for Registration
            pre-1989
              "token use" was deemed sufficient for registration
                but exactly how much use was necessary was contested
              TM Registration Maintenance Programs
                division among the circuit courts concerning validity
                Influential opinion in Proctor & Gamble (SDNY 1979) adopts intermediate position
            post-1989
              The availability of the ITU option (see above) has prompted courts to tighten "actual use" requirements
              Goods
                mark must be placed on goods themselves, containers, displays, tags, or (if infeasible) documents
                goods must be sold (to customers) or transported (visibly) in commerce
                  e.g., interstate shipments of drugs to clinicians for use in clinical trials is sufficient, even though drugs are not yet approved for sale to public
                For-profit use is not necessary
                  Nonprofit sales of goods or services sufficient
              Services
                mark must be used or displayed in the advertising of services, and the services themselves rendered in commerce
                advertising for service that has not yet begun is not sufficient
                  Aycock (CAFC 2009) (interpreting both pre-1989 and post-1989 standards)
      Foreign Use
        ordinarily, use of a mark outside the US does not count, even if advertising of the goods or services spills into US
          e.g., Mother's Restaurant (CA2 1998)
        But a few courts define "use in commerce" broadly enough to encompass foreign services provided to US residents
          e.g., International Bancorp. (CA4 2003)
            sufficient if the foreign company both provides services to visitors from US and advertises in the US
        And some courts will recognize foreign use if it causes the mark to become "famous" or "well known" to US customers
          at common law
            Maison Prunier (1936)
            Vaudable (1959)
            Punchgini (NY 2007)
          under Lanham Act -- circuit split
            Grupo Gigante (CA9 2004)
            Punchgini (CA2 2008)
          unclear whether this equivocal recognition of famous marks is sufficient to comply with TRIPS article 16.2
    Priority Fights
      General Principle: First in Time, First in Right
      When priority is based on use, geographic scope of right includes:
        zone of actual use
        zone where one has established a reputation or business presence
        natural zone of expansion
          contested doctrine
          zone usually drawn narrowly
        zone in which D deliberately trades on P's reputation
      When priority is based on US registration, geographic scope includes entire nation
        Constructive notice
        Constructive nationwide use
          retroactive to date of application
        Rights of pre-registration senior users
          prevail over registrant
            registration invalid if someone else has previously used the mark in commerce
          but PTO enjoys broad discretion under LA2(d) to grant concurrent registrations when senior user's use antedates application and no consumer confusion would result
        Rights of pre-registration junior users
          junior user who has employed the mark continuously and in good faith gets "limited area" defense
            right to continue using the mark in the area where JU was using the mark at the time of registrant's application
            LA 33(b)(5)
        Rights of post-registration junior users
          post-registration innocent junior user may continue to use mark if consumer confusion is unlikely; must stop when registrant expands operations into that area
            spectrum of judicial interpretations
              leading case: Dawn Donut (CA2 1959)
                registrant had long used "Dawn" for donuts in various parts of the country, but not Rochester
                junior user adopts "Dawn" without actual knowledge of P's use
                no "present likelihood" of expansion into Rochester
                thus no consumer confusion
              initially, all circuits and some state courts follow Dawn Donut
              CA3 adopted especially strict (pro-D) interpretation
                "Holiday Inn" in Virgin Islands
                P cannot secure an injunction until P actually begins construction in the junior user's region
              A few courts are not drifting away from the rule, particularly with respect to goods marketed over the Internet
                Carmax (CA6 1999)
                  likelihood of entry is just one of eight factors to determine likelihood of confusion
                Rebel Debutante (NC 2011)
                Members First (Pa.)
                Boldface Licensing (CD Cal. 2013)
            meanings of "innocent"
              majority rule: junior user is unaware of senior user's use
              minority rule: Junior user must not have "designs inimical to the interest of the first user"
                GTE (CA10 1990)
      Tacking
        If claimant's use of mark A precedes claimant’s use of mark B, claimant can "tack" use of A to use of B iff the two marks appear indistinguishable to the public
  I. What May be Protected?
    Definitions
      Trademarks (LA 45)
        any word, name, symbol, or device, or any combination thereof
        Either:
          currently used by a person or
          a person has a bona fide intention to use it in commerce and applies for registration
        used to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown
      Service Marks (LA 45)
        any word, name, symbol, or device, or any combination thereof
        Either:
          currently used by a person or
          a person has a bona fide intention to use it in commerce and applies for registration
        used to identify and distinguish the services of one person from the services of others and to indicate the source of the services, even if that source is unknown
      Collective Marks (LA 45)
        a trademark or service mark
        Either:
          Used by members of a cooperative, association, or other collective group
          or a cooperative, association, or other collective group has a bona fide intent to use it in commerce and applies to register it
      Certification Marks (LA 45)
        any word, name, symbol, or device, or any combination thereof
        Either:
          currently used by a person other than its owner
          or its owner has a bona fide intention to permit another person to use it in commerce and applies for registration
        used to certify regional or other origin, material, mode of manufacture, quality, or accuracy of such person’s goods or services or that the goods or services were performed by members of a union or other organization
    Distinctiveness Hierarchy
      Arbitrary/Fanciful
        arbitrary = existing word applied arbitrarily to a product or service
        fanciful = newly created word, image, etc.
      Suggestive
        suggest a quality of the good or service
        examples
          Citibank
          Q-tips
      Descriptive
        Describes an ingredient, quality, or characteristic of the product
        factors used to determine
whether a mark is descriptive or suggestive
          Dictionary definition of the term
          Does it require consumers to use
their imaginations to reach a conclusion
as to the nature of the goods?
          Do competitors “need” the term to
describe their products – or would
it be “useful” to them?
          To what extent has the term
been used by competitors?
        protectable only with secondary meaning
        examples
          Fish Fri -- for frying batter
          Coca-Cola
          Alo -- for aloe cream
          Vision Center -- for optical services
          Tender Vittles -- for cat food
          Arthriticare -- for arthritis treatment
          Investacorp -- for investment services
          Custom-Blended -- for gasoline blended at the pump
      Generic
        the term is commonly used to denote the goods or services at issue
        unprotectable
        examples
          Bermuda -- for shorts
          Safari — for hats and jackets
          Kleenex
          Thermos
          Duck Tours
    Secondary Meaning
      consumers have come to recognize the mark as a source indicator
        a.k.a "acquired distinctiveness"
        the primary significance of the mark in consumers' minds is not the product, but the producer
        not essential that consumers know who the producer is
        define "consumers"
          most cases treat the the public in general as the relevant group
          but some acknowledge that the relevant group consist of buyers of the type of product or service at issue
            Harlequin Enterprises (CA2 1981)
              readers of romance novels
            Louboutin (CA2 2012)
      for purposes of federal registration
        LA 2(e) bars registration of "merely descriptive marks"
        LA 2(f) permits registration of such marks with SM
      proving secondary meaning
        direct evidence
          *consumer surveys
          consumer testimony
          retailers/dealers testimony
        circumstantial evidence
          exclusivity, duration, and manner of use
          sales volume
          amount and manner of advertising
          unsolicited press coverage
          proof of intentional copying
            in CA4, gives rise to a rebuttable presumption of SM
            includes intentional "knockoffs" by 3rd parties, not just defendant
              Louboutin (CA2 2012)
      "secondary meaning in the making"
    Permissible Forms
      Words
        e.g., Nike
        includes numbers
          e.g., 501 jeans
        words in other languages subject to the "doctrine of foreign equivalents"
          if the other language is common in the United States, the English translation will be employed in categorizing the mark
      Symbols
        e.g., Nike swoosh
      Slogans
      Names
        Personal Names
          surnames, first names, and combinations
          must be used in commerce as source indicator
          Common Law
            Majority rule: can be protected only upon a showing of SM
              Policy basis
                1. protection of a name without SM may prevent other persons with same name from using it
                2. May also deprive public of useful information: identity of provider
                3. consumers aware that some names are common will not be confused if two different persons with the same name both use it in their businesses
            Minority: if the policies underlying the traditional rule are not implicated, a name can be inherently distinctive
              Peaceable Planet (CA7 2004)
          Lanham Act
            while surnames are registrable only with SM, two-part personal names are registrable without SM
            examples of registered personal names
              Billy Joel
              Johnny Carson
              Madonna
              The artist formerly known as Prince
              DKNY
              Dan Marino’s American Sports Bar & Grill
              O.J. Simpson/ O.J./ Team O.J. Justice for All
        Names of other
living persons
          cannot be registered without their consent-- LA 2(c)
      Celebrity Likenesses
        iff consistently used as a source indicator
          Estate of Presley (DNJ 1981)
        protected features: face, voice, pose
          e.g., ETW (CA6 2003)
        cousin of state-law right of publicity
      Sounds
        examples
          light saber
          Law & Order
          MGM lion
          NBC
          Intel
          LucasFilm THX Deep Note
      Smells
      Colors
        color combinations
          Smack Apparel (2008)
        single colors
          in US, can serve as TMs if claimant can show secondary meaning
            Qualitex
          In EU, recognized as source indicators only in exceptional circumstances
      Tastes
      Invented Ingredients
      Location of Labels
        Examples
      Fictional characters
        protectable provided they have come to designate a source
          examples
            Mutt & Jeff
            Tarzan
            Mickey Mouse
            James Bond
        in rare circumstances, treated as inherently distinctive
          example
            Arthur the Aardvark
              Brown (EDNY 1999)
      Trade Dress
        Definitions
          Blue Bell (CA5 1989): trade dress of a product is essentially its total image and overall appearance
            may include such features as size, shape, color or color combinations, texture, graphics, or even particular sales techniques
          Two Pesos: includes the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve the food, the servers’ uniforms, and other features reflecting on the total image of the restaurant
          McNeil (2007):“It is "the total image or overall appearance of a product, and includes, but is not limited to, such features as size, shape, color or color combinations, texture, graphics, or even a particular sales technique." Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 171 (3d Cir. 2000).”
        Types
          product packaging
          product configuration
            evolution of legal treatment
      Buildings
        White Castle (CA6 1937)
      Geographic Terms
        Used as Ordinary TMs
          Identify a particular supplier of a good or service
          Standard distinctiveness hierarchy applies
          Standard grounds for exclusion apply (see below)
        Geographical Indications
          Geographic term used to indicate a region from which products supplied by various firms derive
          US System: Certification Marks
            example: California Milk
          French System: AOC
            example: Roquefort cheese
              images
              AOC regulations
              WIPO Registration
          International Regime
            Lisbon Agreement
              see "International Framework" above
              example: Pisco
            TRIPS Arts. 22-24
              see "International Framework" above
    Grounds for Exclusion
      Functionality
        Marks are unprotectable if functional
          LA 2(e)
        Tests
          Qualitex (US 1995)
            This Court consequently has explained that, "[i]n general terms, a product feature is functional," and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article," that is, if exclusive use of the feature would put competitors at a significant non-reputation related disadvantage. [Inwood]
          Disc Golf (CA9 1998)
            Consider 4 factors (none of which is decisive):
              (1) whether the design yields a utilitarian advantage,
              (2) whether alternative designs are available,
              (3) whether advertising touts the utilitarian advantages of the design, and
              (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.
          TrafFix (US 2001)
            Essential to use or purpose, or
            Affects cost or quality, or
            Exclusive use of it would put
competitors at non-reputation
related disadvantage
        Branches
          utilitarian functionality
            expired utility patent (whose claims cover the design feature at issue) is “strong evidence” of functionality — TrafFix (2001)
          aesthetic functionality
            Automotive Gold v. VW (CA9 2006)
              Mere fact that the mark is the benefit consumers want to purchase does not make it functional
            Louboutin (CA2 2012)
      Conflicts with Existing Marks
        Mark cannot be registered if likely to cause confusion with existing mark
          LA 2(d)
        Mark cannot be registered if it is likely to cause dilution of an existing famous mark
          essential that the existing mark became famous prior to first use of the mark in question
      Fraud
        applicant knowingly makes a false, material representation of fact in connection with application
          Hornby (2008)
      Deception
        deceptive marks cannot be registered
          LA 2(a)
          definition
            Mark misdescribes the goods to which it is attached
            Consumers are likely to believe the description is accurate
            The misdescription is likely to affect consumers’ decisions to purchase the goods
        deceptively misdescriptive marks may be registered iff have acquired SM
          LA 2(e), (f)
          definition
            Mark misdescribes the goods
to which it is attached
            Consumers are likely to believe
the description is accurate
        primarily geographically deceptively misdescriptive marks
          now cannot be registered even
if they have acquired SM
            permissible before 12/9/93 (NAFTA),
but with different definition
          current definition
(California Innovations --
CAFC 2003)
            (1) mark has as its primary significance a generally known geographic place
            (2) mark identifies products that consumers are likely to believe mistakenly are connected with that place
            (3) misdescription will likely be a significant factor in consumers' decisions
          so construed, this rule is superfluous
            because a mark that meets this definition would be considered "deceptive" in any case
        special rule for geographical indications
          LA 2(a): No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a) Consists of or comprises ... a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement enters into force with respect to the United States.
      False Suggestion of a Connection
        Hornby (TTAB 2008)
      Disparaging
        Registered Marks
          LA 2(a)
            No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises … matter which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute
          Lebanese Arak (2010)
          Blackhorse (2013)
          In re Tam (2015) eliminates this ground of exclusion
          Treatment of ethnic mascots (Clarkson)
        Unregistered Marks
          perhaps still possible to recover under 43(a) or common law?
      Immoral or Scandalous
        Registered Marks
          LA 2(a): No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral … or scandalous matter….
          Tests
            McGinley (1981): Does the mark give
offense to the conscience or moral feelings of a substantial portion of the public?
            Old Glory (1993): consider “seriousness of purpose”
            Mavety (CAFC 1994): “the PTO must demonstrate that the mark is "shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation.”
            Wilcher (TTAB 1996): Would the mark be "offensive to the conscience or moral feelings of a substantial composite of the general public"?
            Boulevard Entertainment (CAFC 2003): Consider changing social mores and sensitivities
          examples
            may not be registered
              Mark depicting a nude heterosexual couple embracing in a fashion that appeared to expose male genitals
              “Dick Heads’” for Richard Heads' Bar & Restaurant
              "Bubby Trap" for brassieres
              image of defecating dog
              "Jack-Off"
              "Madonna" for wine
            may be registered
              “Moonies” for dolls that drop their pants
              Pictorial representation of a condom decorated with Stars and Stripes
              “Black Tail” for adult entertainment magazine featuring African-American women
        Unregistered Marks
          perhaps still possible to recover under 43(a) or common law?
  International Framework
    Trends
      (1) Harmonization of the laws of separate jurisdictions
      (2) Facilitation of Filings and Management in other countries
      (3) Expanding coverage of regional trademarks
      (4) Expansion of trademark entitlements
      (5) Expansion of regional and international exhaustion doctrines
      Terminus: single, uniform, world-wide, highly protective trademark system
    Paris Convention
      No discrimination against nationals of other countries -- Art. 2
        contrast reciprocity principle
      First filing date in a member country gives applicant priority in all other countries, provided filings are made within 6 months -- Art. 4
      Marks considered “well-known” in any member country protected against use on similar goods in that country -- Art. 6bis
        (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark *considered by the competent authority of the country of registration or use to be well known in that country* as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.
        (2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.
        (3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.
      Protection of foreign nationals against “unfair competition” -- Art. 10bis
      Opportunities for “special agreements”
      176 countries
    Madrid Systems
      Madrid Agreement (1890, 1967)
      Madrid Protocol (1989)
    Trademark Law Treaty
      Procedural simplification and harmonization
      53 countries, including US
      Standard forms for applications, powers of attorney, etc.
      Countries may require only:
        name and address
        information concerning the mark
        goods and services the mark pertains to
        the mark's classification
        declaration of the intention to use the mark
      10-year initial term and renewal terms
    Nice Agreement
      Standard Set of Classes for TM registrations
        1-34 for Goods
        35-45 for services
      84 member countries (including US)
    Lisbon Agreement
      member countries must first develop domestic laws protecting appellations of origin
      private parties can then secure protection for an AO under that regime, and then register the AO with WIPO
      thereafter, all other member countries must grant (expansive) protection for the AO within their own territories
        unless within 1 year, the country declares that it cannot grant such protection
      2015 “Geneva Act,” if ratified, would expand coverage of the Agreement (e.g., to reach all GIs) without fundamentally altering its structure
      28 countries, not including USA
        map
        US Objections
          “Trademark protection is based on the fundamental tenet of first-in-time, first-in-right, which provides certainty for one who invests in a business using the mark. In some countries, GI protection ignores that tenet in favor of a later-in-time GI.
“The United States agrees that GIs can be valuable and that their legal protection is important. We protect GIs primarily as regional certification and collective trademarks. Just like other GI systems, products bearing regional trademarks must come from the geographic area named. Both approaches require adherence to quality standards – including the demarcation of the territory of production – to ensure that the good-will associated with the product is maintained. But where we differ is that *we do not believe rights in a term acquired in one country should be required to be adopted in another country with no regard for consumers’ understanding of the term in that country or already-established rights there.*”
    TRIPS
      WTO member countries (164)
        map
      Mandatory TM protections
        National Treatment and most favored nation
        Service marks must be protected -- 15
        Mandatory Procedures for Publication, Opposition, and Cancellation -- 15
        Owner of registered mark must be able to prevent others from using similar marks if it would lead to "likelihood of confusion" -- 16
          1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.
        Expansive protection for well-known marks -- 16
          2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.
          3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.
        7-year minimum term -- 18
        Cancellation for non-use only after 3 years; longer if owner has legitimate excuse -- 19
        No compulsory licensing -- 21
        No “special requirements” encumbering use -- 21
        Preliminary relief must be available
      Mandatory Protections for Geographical Indications
        GIs -- 22
          1. Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
          In respect of geographical indications, Members shall provide the legal means for interested parties to prevent:
            . the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;
            . any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).
          A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin.
          The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory.
        Wines and Spirits --23
          Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, *even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation" or the like*.
          The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Member's legislation so permits or at the request of an interested party, with respect to such wines or spirits not having this origin.
          In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled.
          In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the *establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system.*
        Exceptions --24
    Regional TM Systems
      Community TM System
        EU Membership
        Acquiring a CTM
          Open System (contrast Madrid Protocol)
          application procedure
          “Absolute” Grounds for Nonregistration
            indistinctive, descriptive, functional, deceptive, flags, etc.
          Administrative hierarchy:
            European Court of Justice
            OHIM Boards of Appeals
            OHIM
        Rights Associated with a CTM
          to exclusive use of the trade mark;
          to prevent the reproduction or imitation of a trade mark;
          to transfer a trade mark or to grant licenses for some or all of the goods or services to which the trade mark is registered, in part or the whole of the Community;
          to oppose the registration of similar Community or national trade marks which could cause confusion to the consumer.
        Enforcement
          Designated “Community TM Courts” in each country
        Losing a CTM
          Cancellation for nonuse in Europe for 5 years
        Relationship to National TM Systems
          co-existence
          Seniority for abandoned national marks preserved
          Substantive Harmonization
of national laws
            Directive 89/104
            1) definition of what can be registered as a trademark;
            2) rights conferred by a trademark;
            3) conditions on use of a trademark, especially, cancellation for lack of use;
            4) exhaustion of rights;
            5) grounds for refusal, invalidation, or revocation of a trademark
      Mercosur
      Andean Community
      OAPI
      ARIPO