QUALITEX CO.v.JACOBSON PRODUCTS CO., INC.FACTS: Petitioner Qualitex Company has for years colored the dry cleaning press pads it manufactures with a special shade of green gold. Respondent Jacobson Products (a Qualitex rival) began to use a similar shade on its own press pads, Qualitex registered its color as a trademark and added a trademark infringement count to the suit it had previously filed challenging Jacobson's use of the green-gold color. Qualitex won in the District Court, but the Ninth Circuit set aside the judgment on the infringement claim because, in its view, the Trademark Act of 1946 (Lanham Act) does not permit registration of color alone as a trademark.Issue:Whether or not the Lanham Act permits the registration of trademark that consist of simply of color.HELD:YES, the Lanham Act permits the registration of a trademark that consists, purely and simply, of a color.That color alone can meet the basic legal requirements for use as a trademark is demonstrated both by the language of the Act, which describes the universe of things that can qualify as a trademark in the broadest of terms and by the underlying principles of trademark law, including the requirements that the mark "identify and distinguish the seller's goods from those manufactured or sold by others and to indicate their source and that it not be "functional. The District Court's findings show Qualitex's green-gold color has met these requirements. It acts as a symbol. Because customers identify the color as Qualitex's, it has developed secondary meaning, and thereby identifies the press pads' source. And, the color serves no other function. (Although it is important to usesomecolor on press pads to avoid noticeable stains, the court found no competitive need in the industry for the green-gold color, since other colors are equally usable.) Accordingly, unless there is some special reason that convincingly militates against the use of color alone as a trademark, trademark law protects Qualitex's use of its green-gold color. Jacobson's various special reasons why the law should forbid the use of color alone as a trademark-that a contrary holding (1) will produce uncertainty and unresolvable court disputes about what shades of a color a competitor may lawfully use; (2) is unworkable in light of the limited supply of colors that will soon be depleted by competitors; (3) is contradicted by many older cases, including decisions of this Court interpreting pre-Lanham Act trademark law; and (4) is unnecessary because firms already may use color as part of a trademark and may rely on "trade dress" protection-are unpersuasive.Functionality doctrine - 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.

VENANCIO SAMBAR doing business as CVS Garment Enterprises, petitioner, vs. LEVI STRAUSSFACTS: Private respondent, Levi Strauss and Co. (LS&Co.), an internationally known clothing manufacturer, owns the arcuate design trademark which was registered under U.S. Trademark Registration No. 404, 248 and in the Principal Register of trademarks with the Philippine Patent Office under Certificate of Registration No. 20240 that through a Trademark Technical Data and Technical Assistance Agreement with Levi Strauss (Phil.) Inc. (LSPI) in 1972, LS&Co. granted LSPI a non-exclusive license to use the arcuate trademark in its manufacture and sale of Levis pants, jackets and shirts in the Philippines. Sometime in 1987, CVSGIC and Venancio Sambar, without the consent and authority of private respondents and in infringement and unfair competition, sold and advertised, and despite demands to cease and desist, continued to manufacture, sell and advertise denim pants under the brand name Europress with back pockets bearing a design similar to the arcuate trademark of private respondents, thereby causing confusion on the buying public, prejudicial to private respondents goodwill and property right. CVSGIC claimed that it had its own original arcuate design, as evidenced by Copyright Registration No. 1-1998, which was very different and distinct from Levis design. Issue: Whether there is an infringement of respondents arcuate mark?Whether or not cancellation of COPYRIGHT REGISTRATION NO. 1-1998 is justifiedHELD:YES, there was infringement in this case. The backpocket design of Europress jeans, a double arc intersecting in the middle was the same as Levis mark, also a double arc intersecting at the center. Although they found differences in the two designs, these differences were not noticeable. Further, infringement of trademark did not require exact similarity. Colorable imitation enough to cause confusion among the public, was sufficient for a trademark to be infringed. Levis Strauss explained that in a market research they conducted with 600 respondents, the result showed that the public was confused by Europress trademark vis the Levis trademark.YES, the cancellation of petitioners copyright was justified because petitioners copyright cannot prevail over respondents registration in the Principal Register of Bureau of Patents, Trademarks, and Technology Transfer. According to Levis, the essence of copyright registration is originality and a copied design is inherently non-copyrightable. They insist that registration does not confer originality upon a copycat version of a prior design.

Park N' Fly Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985)FACTS:Petitioner operates long-term parking lots near airports in St. Louis Cleveland, Houston, Boston, Memphis, and San Francisco. In 1969, petitioner applied to the United States Patent and Trademark Office to register a service mark consisting of the logo of an airplane and the words "Park 'N Fly." The registration issued in 1971, and nearly six years later petitioner filed an affidavit with the Patent and Trademark Office to establish the incontestable status of the mark under 33(b) of the Trademark Act of 1946 (Lanham Act), which provides that "registration shall be conclusive evidence of the registrant's exclusive right to use the registered mark," subject to the provisions of 15 and 33(b) itself. Respondent provides long-term airport parking services called "Dollar Park and Fly," but only operates in Portland, Ore. Petitioner filed an infringement action in Federal District Court seeking to enjoin respondent from using the words "Park and Fly" in connection with its business. The District Court granted the injunction, rejecting,inter alia,respondent's defense that petitioner's mark is unenforceable because it is merely descriptive. The Court of Appeals reversed, holding that incontestability provides a defense against the cancellation of a mark but may not be used offensively to enjoin another's use, that, under this analysis, petitioner could obtain an injunction only if its mark would be entitled to continued registration without regard to its incontestable status, and that therefore respondent could defend by showing that the mark was merely descriptive. The court then determined that petitioner's mark is merely descriptive and respondent should not be enjoined from using the words "Park and Fly."ISSUE: Whether or not a registered mark may rely on incontestability to enjoin infringement?HELD:The holder of a registered mark may rely on incontestability to enjoin infringement, and an infringement action may not be defended on the grounds that the mark is merely descriptive. (a) The Lanham Act nowhere distinguishes between a registrant's offensive and defensive use of an incontestable mark, but, on the contrary, 33(b)'s declaration that the registrant has an "exclusive right" to use the mark indicates that incontestable status may be used to enjoin infringement. The Act's language also refutes any conclusion that an incontestable mark may be challenged as merely descriptive. (b) Nothing in the Lanham Act's legislative history supports a departure from the plain language of the provisions concerning incontestability. Indeed, a conclusion that incontestable status may provide the basis for enforcement of the registrant's exclusive right to use a mark promotes the Act's goals in providing national protection of trademarks in order to secure to the mark's owner the goodwill of his business and to protect the ability of consumers to distinguish among competing producers. (c) There is no merit to respondent's argument that the Court of Appeals' decision should be upheld because trademark registrations are issued after anex parte proceeding and generally without inquiry into the merits of an application. The facts of this case belie the suggestion that registration is virtually automatic, and respondent is simply wrong to suggest that third parties do not have an opportunity to challenge applications for trademark registration. The power of courts under the Lanham Act to grant injunctions "according to principles of equity" does not encompass a substantive challenge to the validity of an incontestable mark on the grounds that it lacks secondary meaning. Otherwise, the meaning of "equity" would be expanded to the point of vitiating the Act's more specific provisions. Similarly, the power of courts to cancel registrations and "otherwise rectify the register" of the Act must be subject to the specific provisions concerning incontestability.CONCEPT OF SECONDARY MEANING recognizes that words with an ordinary and primary meaning of their own "may by long use with a particular product, come to be known by the public as specifically designating that product."Burden of proof: is with the plaintiffProof of secondary meaning with respect to descriptive marks in order to be protected.Defense : fair use and in good faithSuggestive term suggests, rather than describes, some particular characteristic of the goods or services to which it applies and requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the goods and servicesEx. CoppertoneArbitrary or fanciful terms bear no relationship to the products or services to which they are applied. Like suggestive terms, arbitrary and fanciful marks are protectable without proof of secondary meaning.Ex. Kodak

COFFEE PARTNERS, INC vs. SAN FRANCISCO COFFEE & ROASTERY, INC.FACTS:Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. It has a franchise agreement with Coffee Partners Ltd. (CPL), a business entity organized and existing under the laws of British Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using trademarks designed by CPL such as "SAN FRANCISCO COFFEE."Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It registered the business name "SAN FRANCISCO COFFEE & ROASTERY, INC." with the (DTI).Respondent discovered that petitioner was about to open a coffee shop under the name "SAN FRANCISCO COFFEE" in Libis, Quezon City. According to respondent, petitioners shop caused confusion in the minds of the public as it bore a similar name and it also engaged in the business of selling coffee.Respondent filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition with claims for damages.BLA-IPO held that petitioners trademark infringed on respondents trade name. Since respondent registered its business name with the DTI in 1995 and petitioner registered its trademark with the IPO in 2001 in the Philippines and in 1997 in other countries, then respondent must be protected from infringement of its trade name.The BLA-IPO held that petitioners use of the trademark "SAN FRANCISCO COFFEE" will likely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial impression of the words "SAN FRANCISCO" which is the dominant portion of respondents trade name and petitioners trademark. It held that no significant difference resulted even with a diamond-shaped figure with a cup in the center in petitioner's trademark because greater weight is given to words the medium consumers use in ordering coffee products.The ODG-IPO reversed the BLA-IPO. It ruled that petitioners use of the trademark "SAN FRANCISCO COFFEE" did not infringe on respondent's trade name. The ODG-IPO found that respondent had stopped using its trade name after it entered into a joint venture with Boyd Coffee USA in 1998 while petitioner continuously used the trademark since June 2001 when it opened its first coffee shop in Libis, Quezon City.ISSUE: Whether petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not registered with the Intellectual Property Office (IPO).HELD:Yes, a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines.Applying either the dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SAN FRANCISCO COFFEE" are precisely the dominant features of respondents trade name. Petitioner and respondent are engaged in the same business of selling coffee, whether wholesale or retail. The likelihood of confusion is higher in cases where the business of one corporation is the same or substantially the same as that of another corporation. In this case, the consuming public will likely be confused as to the source of the coffee being sold at petitioners coffee shops. Petitioners argument that "San Francisco" is just a proper name referring to the famous city in California and that "coffee" is simply a generic term, is untenable. Respondent has acquired an exclusive right to the use of the trade name "SAN FRANCISCO COFFEE & ROASTERY, INC." since the registration of the business name with the DTI in 1995. Thus, respondents use of its trade name from then on must be free from any infringement by similarity. Of course, this does not mean that respondent has exclusive use of the geographic word "San Francisco" or the generic word "coffee." Geographic or generic words are not, per se, subject to exclusive appropriation. It is only the combination of the words "SAN FRANCISCO COFFEE," which is respondents trade name in its coffee business, that is protected against infringement on matters related to the coffee business to avoid confusing or deceiving the public.DOMINANCY TEST - focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception, thus constituting infringement. If the competing trademark contains the main, essential, and dominant features of another, and confusion or deception is likely to result, infringement occurs. Exact duplication or imitation is not required. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive consumers.HOLISTIC TEST - entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both marks in order that the observer may draw his conclusion whether one is confusingly similar to the other.

Zatarains, Inc., Plaintiff-appellant v. Oak Grove Smokehouse, Inc. and Visko's Fish Fry, Inc. defendants-appelleesFACTS:Zatarain's is the manufacturer and distributor of these products, "Fish-Fri" and "Chick-Fri," are coatings or batter mixes used to fry foods. The term "Fish-Fri" has been used by Zatarain's or its predecessor since 1950 and has been registered as a trademark since 1962. Zatarain's began to use the term "Chick-Fri" in 1968 and registered the term as a trademark in 1976.Zatarain's products are not alone in the marketplace. At least four other companies market coatings for fried foods that are denominated "fish fry" or "chicken fry." Appellee Oak Grove Smokehouse, Inc. ("Oak Grove") began marketing a "fish fry" and a "chicken fry" in March 1979. Appellee Visko's Fish Fry, Inc. ("Visko's") entered the batter mix market in March 1980 with its "fish fry."Zatarin filed against Oak Grove complaint alleged trademark infringement and unfair competition and later amended to add Viskos as defendant.The district court held that the alleged infringers had a "fair use" defense to any asserted infringement of the term "Fish-Fri" and that the registration of the term "Chick-Fri" should be cancelled.ISSUE: Whether the word or phrase is initially registerable or protectable.HELD:YES, Fish-Fri is a descriptive mark which acquire secondary meaning therefore registrable.A number of tests are used in classifying a mark as descriptive.First, A suitable starting place is the dictionary, definitions for the term "fish fry": "1. a picnic at which fish are caught, fried, and eaten; .... 2. fried fish." Thus, the basic dictionary definitions of the term refer to the preparation and consumption of fried fish. This is at least preliminary evidence that the term "Fish-Fri" is descriptive of Zatarain's product in the sense that the words naturally direct attention to the purpose or function of the product.Second, imagination test, this test seeks to measure the relationship between the actual words of the mark and the product to which they are applied. If a term "requires imagination, thought and perception to reach a conclusion as to the nature of goods, it is considered a suggestive term. Alternatively, a term is descriptive if standing alone it conveys information as to the characteristics of the product.In this case, mere observation compels the conclusion that a product branded "Fish-Fri" is a prepackaged coating or batter mix applied to fish prior to cooking.Third, to classify descriptive marks is "whether competitors would be likely to need the terms used in the trademark in describing their products. Common sense indicates that in this case merchants other than Zatarain's might find the term "fish fry" useful in describing their own particular batter mixes.Fourth, examines the extent to which a term actually has been used by others marketing a similar service or product.Having applied the four prevailing tests of descriptiveness to the term "Fish-Fri has affirmed it as descriptive. Descriptive terms are not protectable by trademark absent a showing of secondary meaning in the minds of the consuming publicZatarain's term "Fish-Fri" has acquired a secondary meaning in the New Orleans geographical area, Zatarain's does not now prevail automatically on its trademark infringement claim, for it cannot prevent the fair use of the term by Oak Grove and Visko's. The "fair use" defense applies only to descriptive terms and requires that the term be "used fairly and in good faith only to describe to users the goods or services of such party, or their geographic origin."Chick-Fri" is a descriptive term lacking in secondary meaning, are therefore not protected and order that the registration of the term "Chick-Fri" should be cancelled.Potential trademark may be classified as: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful.Generic - "the name of a particular genus or class of which an individual article or service is but a member. Basic nature of article or service Descriptive term - identifies a characteristic or quality of an article or service such as its color, odor, function, dimensions, or ingredientsOrdinarily not protected but when it acquire secondary meaning in the mind of consuming public it become protected as trademark