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Trademark OutlineMurshak

Trademark Outline

I. What is a Trademark? A source identifierA. Restatement § 1: (paraphrase) “You can do whatever you want unless you do one

of the listed things:1. deceptive marketing (false advertising)2. infringement of the trademark3. appropriation of tangible trade values including trade secrets and the right of

publicity

B. The fundamental rule stated in the introductory clause promotes competition by ensuring that neither new entrants nor existing competitors will be subject to liability for harm resulting solely form the fact of their participation in the market.

C. Liability is imposed under this Section, and under this Restatement generally, only in connection with harm resulting from particular methods of competition determined to be unfair.

D. The trademark system is a system design to protect competition. We do not want to thwart competition unnecessarily. Competition protects consumers as well (e.g., source identifier, efficiency).

E. Why the trademark system? The system is designed to protect competition and protect consumers. 1. Protect consumers2. Protect producers3. Distinction4. Efficiency

F. Why do consumers buy?1. Price2. Amenities3. Reliability/Dependability4. Consistency5. Quality6. Familiarity7. Necessity/Convenience8. Marketing9. Proximity

G. Advertising informs and persuades. If advertising was just about persuasion, quality will go down. When persuasion is the key, consumer confidence drops, which lowers efficiency in the market. Persuasion would also cause costs to go up on products.

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II. Elements of a TrademarkA. Nature : commercial identifications of source such as words, designs, slogans,

symbols, trade dress

B. Scope : protects against creating likelihood of confusion, or diluting a famous mark

C. How to Obtain Rights : use mark in commerce or apply for a federal registration

D. Term of Rights : as long as used, cancellation lawsuit if you stop using it. You have to keep using it or you lose it

E. Infringement Standard : likelihood of confusion, mistake or deception as to source or sponsorship, or dilution by blurring or tarnishment

III. Subject MatterA. Restatement § 9: words, name, symbols, device, or other designation

combination. 1. Kellogg v. Nabisco: Nabisco said it owned “Shredded Wheat” and Nabisco

could sell pillow-shaped wheat and no one else. Shredded Wheat is generic. The patent for making it has expired and thus belongs to the public. The design patent was for a pillow and has become expired. Kellogg is free so long as it is not trying to pass off as Nabisco.

Word Marks 2. Coca-Cola v. Koke: Dealing with a popular drink, not medicine. Because of

advertising, the meaning of the brand has changed from something having a certain desired effect (coming from Coca leaves) to a source identifier found in any soda foundation. It obtained secondary meaning. Even though there may be a historical basis for attempting to fraud the public (use of cocaine), enough time has passed, and enough advertising has occurred to inform the public that it is no longer included in the beverage. Only matters what existed at the time of suit.

Sloganso Protectable as TM’s o Descriptive slogans must obtain secondary meaning

Personal Names 3. Peaceable Planet, Inc. v. Ty, Inc.: Plush camel toys claiming name “Niles.”

Niles is not a common name; thus it is protectable. 4. Mishawak Rubber v. SS Kresge: Red plug embedded into heel of shoes.

Burden to show infringement had no effect on profits is on the poacher. Plaintiff is not entitled to profits demonstrably not attributable to the unlawful use of his mark. If it can’t be shown, profits belong to owner of the mark.

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Trade Dress—feature can’t be “functional” 5. Qualitex Co. v. Jacobson Products Co.: Color must have secondary meaning

(associated with product). Any word, name, symbol, or device or any combination thereof. Sometimes, color can meet the standard. Secondary meaning—in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself. There was an argument about shade confusion and colors in limited supply. Functionality is determined if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.

6. Traffix Devices v. Marketing Display: Dual spring was “functional.” Utility patent is conclusive evidence that the product feature is functional. Lanham Act states that in order to gain protection for trade dress, the burden is on the party seeking protection to show it was not functional. A utility patent is conclusive evidence that the product feature is functional.

o Preamble of Section 2 of the Lanham Act— “No trademark by which the goods of the applicant maybe distinguished from the goods of others shall be refused registration on the principal register on account of its nature . . .”

Sounds—Pillsbury Dough Boy, Aflac Duck

Smells/Fragrances—For thread/yarn imparted by the applicant to be source identifier.

Taste—Experienced more difficulty. No consumer access prior to purchase. Cannot receive trade dress for taste. Difficult to qualify taste with the source of goods. One day this could become a valid trade dress category, but as of now it is not so recognized.

IV. Trademark Trial & Appeals Board (TTAB): Specific jurisdiction over TM registration issues and opposition issues

V. Distinctiveness, Secondary Meaning, and Collective Certification Marks

DistinctivenessA. The strength of a mark is based on its inherent distinctiveness. Distinctiveness is

the defining characteristic of protectable trademarks.

B. Distinctiveness refers to the extent to which a claimed designation conveys to consumers information about the source of the products or services as opposed to merely conveying product-related information. Protectable trademarks tell consumers something about who stands behind a produce or service—they are distinctive of the source of the relevant products or services.

C. Courts and the Lanham Act classify the inherent distinctiveness of marks under 4 categories:

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D. Generic Terms : The weakest marks are those that are merely generic terms for the goods or services. Generic terms are never protectable because everyone must be able to use the common name for the product or service.

E. “Merely Descriptive” Terms : Terms that are merely descriptive are ones that describe the product or service, or some aspect of the product or service are also relatively weak marks. Merely descriptive marks are not immediately protectable, again, everyone must be able to describe the features of their goods or services. Once the merely descriptive term acquires secondary meaning, the term is protectable as a mark.

F. “Suggestive” Marks : Marks that suggest something that the product or service without actually describing the product or service. Weight Watchers is an example of a suggestive mark for food products because it does not say that the products are low-calorie or low-far, but it suggests that attribute. Suggestive marks are neither descriptive, but not entirely fanciful or arbitrary. Suggestive marks involve a “mental leap;” where merely descriptive marks do not.

G. Arbitrary and Fanciful Marks : “Arbitrary” marks are regular words that have no logical connection to the product or services. “Fanciful” marks are made-up words or terms. Arbitrary or fanciful terms are the strongest marks and are immediately protectable. Kodak is a classic example of a fanciful mark—a made-up term with no connection to the products or services.

H. Abercrombie & Fitch v. Hunting World: Generic— genus of what the particular product is a species. Lanham Act makes a distinction for merely descriptive terms which have acquired secondary meaning. The Act provides for cancellation of a registered mark if at any time it “becomes descriptive name of article or substance.” § 14(c).

I. Quick-Print: A mark is merely descriptive if it immediately conveys to one seeing or hearing it knowledge of the ingredients, qualities, or characteristics of the goods or services with which it is used. Suggestive—imagination, thought, or perception is required to reach a conclusion on the nature of the goods or services. Word “Quick” describes a quality or characteristic of the service. No “mental gymnastics” necessary.

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J. Zobmondo v. Falls Media: “Would You Rather . . . . ?” There was a genuine issue as to whether or not it is “merely descriptive.” Test for suggestive (1) imagination test or (2) competitors’ needs test. The court said because it could be easy choices not as, in this case, “bizarre and humorous choices.”

K. In re Vertex Group LLC: Sound for personal security—attempt to register. “Alarm” fails to function as a trademark. Distinctive v. commonplace. A distinction must be made between unique, different, or distinctive sounds and not those that resemble or imitate ‘commonplace’ sounds or those to which listeners have been exposed under different circumstances.

L. Rock and Roll Hall of Fame v. Gentile: The issue in this case was about architectural protection. The Sixth Circuit ruled that it was not fanciful. Inconsistent use does not make it a source identifier.

M. Wal-Mart v. Samara Bros: Samara makes and sells children clothes to JC Penney and others. Wal-Mart actively sent their supplier photos of Samara line, 16 garments were copied. Samara Bros filed an action of infringement of trade dress under 43(a). Clothing design will not automatically have secondary meaning and be non-functional. The court said there was insufficient evidence that Samara clothing design could be protected as distinctive trade dress under 43(a).

o 43(a) does not explicitly require “distinctiveness, but courts have required it since without it, no confusion would result

o Distinctiveness is, moreover, an explicit prerequisite for registration under §2

o Distinctiveness can be (i) inherently distinctive or (ii) acquire secondary meaning

o Design, like color, cannot be “inherently distinctive”o Design is intended to render a product more appealing rather than identify

source…o Consumers should not be deprived of the benefits of competition…o Design must establish non-functionalityo Design MUST obtain secondary meaning

N. In re Slokevage: Product design cannot be inherently distinctive (thus requires secondary meaning). (Packing can be inherently distinctive). The holes and flaps are incorporated into the garment. The design services utilitarian or aesthetic purpose. Important to require proof of acquired distinctiveness. Courts should err on the side of caution to classify ambiguous trade dress as product design thereby requiring secondary meaning.

Secondary Meaning A. Restatement § 13: Distinctiveness; Secondary Meaning

o Distinctive if (a) inherently distinctive or (b) has acquired distinctiveness through secondary meaning.

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B. “Secondary Meaning” exists only if a significant number of prospective purchasers understand the term, when used in connection with a particular kind of good, service, or business, not merely in its lexicographic sense, but also as an indication of association with a particular, even anonymous, entity. Once secondary meaning has been acquired, protection is provided same as inherently distinctive marks. Secondary Meaning Tests Examine:

1. Consumer Testimony2. Surveys3. Exclusivity, Length & Manner4. Ads5. Sales6. Established Place in Market7. (Proof of Intentional Copying)

C. American Waltham: American Waltham was the first to make watches in Waltham and acquired great reputation. Can Defendant be stopped from using geographical distinction on the plates? YES! Geographical distinction can be acquired like color or a personal name if public associates a source; and in this case they did.

D. LSU v. Smack Apparel: Smack sold t-shirts with school color schemes and other indicia. Colors, content, and context are likely to cause confusion as to their source, sponsorship, or affiliation. Key is whether the mark is “capable of distinguishing the applicant’s goods from those of others.” Marks have been treated as descriptive—requires secondary meaning (and non-functional). Smack believed that the color scheme had secondary meaning that could influence consumers. Secondary Meaning mean that, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.

o Multi-factor test: 8. Length and Manner of Use9. Volume10. Amount and Matter of Ads11. Nature of Use in Newspapers and Magazines12. Consumer-survey evidence13. Direct consumer testimony14. Defendant’s intent in copying

E. Adidas v. Sketchers: Trade dress requires secondary meaning. An unregistered mark is not entitled to a presumption of validity but may still be protectable if holder can demonstrate (1) distinctiveness and (2) non-functional. There are various considerations including (1) whether actual purchasers associate the dress with the source; (2) the degree and manner

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of use; (3) length and manner of use; (4) exclusive use; (5) sales success; (6) attempt by others to imitate.

F. Chrysler v. Moda Group LLC: “Imported from Detroit” is descriptive because there is no mental leap. For secondary meaning there are seven factors: (1) consumer testimony; (2) surveys; (3) exclusivity, length, and manner; (4) ads; (5) sales; (6) established place in market; (7) proof of intentional copying.

VI. Collective and Certification Marks A. Product bearing the mark belongs to a group of products that share particular

characteristics.

B. Collective— product comes from a member of a collective entity that owns the mark.

C. Certification—product that has been evaluated and found to meet the standards established by the entity

D. 15 U.S.C. § 1054 (Lanham Act § 4)—Collective and Certification marks as well as indications of regional origin are registerable . . . exercising legitimate control over the use of the marks . . . entitled to protection . . .

E. 15 U.S.C. § 1127 (Lanham Act §45)—Define Collective and Certification

F. 15 U.S.C. § 1064 (Lanham Act § 14)—Cancelation of Certification mark

G. TRIPS—Geographical indication—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. (Ex. wine, food, tobacco).

VII. Trademark UseA. Thoroughbred Legends v. Disney: Legends applied for TM for RUFFIAN as a

service mark. In order to survive summary judgment, Legends has to show that (i) it had a valid trademark, and (ii) the definition adopted by a similar mark that consumers would likely find confusing. They have to show that RUFFIAN was actually used as a source identifier! Disney & ESPN made the movie about Ruffian. Legends had to show that not only was it used in commerce, but it was also used as a TM (or source identifier). Legends did not use the mark as a source of services, but instead just claimed to have rights to the name.

VIII. OwnershipA. Crystal Entertainment v. Jurado: The three singers were the product that is

denoted by the mark EXPOSE. Crystal Entertainment exercised no control over the mark and failed to show that the band’s use of the mark would cause

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confusion. In fact, to give it to Crystal would cause confusion. A mark can identify and distinguish only a single commercial source. Crystal failed to establish ownership in a way to show that it was a source identifier. The court applied the Bell test, where prior ownership by one of the several claimants cannot be established. The two-part Bell “Joint Endeavors test:” (i) identify that quality or characteristic for which the group is known to the public; (ii) then who controls that quality or characteristic.

IX. Use in Commerce A. Lanham Act § 45: bona fide intent to use

B. Couture v. Playdom: “Mark must both be used in sale or advertising of services and that the services themselves have been rendered in interstate or foreign commerce.”

C. In re Siny: Are websites enough?

D. Harmon v. Williams: Bozos restaurant had been open since 1932. There was no dispute as to whether there were “some interstate travelers” because the Memphis metro area included parts of MS and AR. Volume of interstate business is not controlling. Commerce power allows registration for single location restaurant.

X. Priority (Prior Use) A. Section 7(c) of Lanham Act B. Blue Bell v. Farah: No bad faith design adopted “Time out” for slacks and shirts.

Which party established prior use of the mark in trade. TX law states that a mark is “used” when it is affixed to the goods and the “the goods are sold, displayed for sale, or otherwise publicly distributed.” Ownership accrues when goods bearing the mark are placed on the market.

C. Hana Financial v. Hana Bank: A party may claim priority in a mark based on first use date of a similar but technically distinct mark where the previously used mark is the legal equivalent of the mark in question.

D. Tacking: TM users ought to be permitted to make certain modifications . . . over time . . . without losing priority . . . a party may “clothe a new mark with the priority position of an older mark.” Tacking applies when new mark is the “legal equivalent” of old mark in that they create the same, continuing commercial impression.

XI. Concurrent UseA. Thrifty Rent-A-Car v. Thrift Cars: Thrifty stared in 1958 in Tulsa, OK. Thrift

started in 1962 in East Taunton, Mass. 15 U.S.C. § 1072 stated that the registration puts all users on "constructive notice.” Lanham Act §33(b) “limited area” exception where a junior user (like Thrift) has a right to continued use of an otherwise infringing mark in a remote geographical area if that use was

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established prior to the other party’s federal registration. The use must be continuous. To invoke: (1) adopted mark prior to registration without knowledge; (2) extent of the trade area; (3) continuously used mark.

B. Dawn Donut v. Hart’s Food Stores: Dawn licensed its mark to bakers outside 60 miles from Rochester, NY. Hart’s owned retail grocery and distributed doughnuts “Dawn” 45 miles radius of Rochester, NY. Constructive notice as of July 5, 1947. Because the parties used marks in connection with retail sales in distinct and separate markets, and because there is no prospect to expand, no likelihood of confusion was found; however, with the Lanham Act, Dawn can later enjoin Hart’s.

XII. Registration ProcessA. Five Bases of Registration in the U.S.:

1. Section 1(a)—Actual Use2. Section 1(b)—Intent to Use, “bona fide” 3. Section 44(e)—Foreign Registration4. Section 44(d)—Foreign Application5. Section 66—International Registration under Madrid Protocol

B. Lanham Act §1(a): Actual Use Use in Commerce Paying prescribed fee Filing application with USPTO Verified Statement

1. Person believes to be the owner of the mark sought to be registered2. To the best of the verifier’s knowledge and belief, the facts recited in the

application are accurate3. The mark is in use in commerce4. To the best of the verifier’s knowledge and belief, no other person has the

right to use such mark in commerce either identical or in such near resemble thereto as to be likely . . . to cause confusion.

Specimens Domicile or citizenship Date of first use of the mark

1. Use in commerce2. Date of first use anywhere and date of first use in commerce for each class

of goods or services (see below)3. Attach specimens showing use of the mark in connection with each class

of goods or services.4. Use in commerce = lawful use in commerce (see below)

Date of first use in commerce Listing of good/services Drawing of the mark

C. Lanham Act § 1(b): Intent to Use

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Domestic Applicants

Foreign Applicants


Bona Fide Intention Paying prescribed fee Filing application with USPTO Verified Statement

1. Person believes to be entitled to use the mark in commerce2. The applicant’s bona fide intention to use the mark in commerce3. To the best of the verifier’s knowledge and belief, no other person has the

right to use such mark in commerce either identical or in such near resemblance thereto as to be likely . . . to cause confusion . . .

Domicile or citizenship Listing of goods/services Drawing of the mark

D. M.Z. Berger & Co. Inc. v. Swatch AG: Berger filed for iWatch in 2007 for over 30 goods, watches, clocks, and goods related thereto. Swatch opposed. Opposition sustained on grounds that Berger lacked a bona fide intent to use the mark in commerce, at the time of filing. Board concluded that Berger merely intended to reserve a right in the mark thus lacked the requisite intent. Testimony of Berger’s owner and CEO was considered because he said to “leave all doors open” as the reasoning for why they applied for over 30 categories. Bona fide means that under circumstances showing the good faith of such person applicants’ intent must be demonstrated, more than just subjective belief (objective determination). Must be in ordinary course of trade, not made merely to reserve the right in a mark. Bona fide intent to use the mark in commerce at the time of the application requires objective evidence of intent. The court said that, under the totality of the circumstances, “a good mark for future use” does not establish a bona fide intent to use.

E. Lanham Act §44(e): Foreign Registration Paris Convention—nondiscrimination principle. Member nationals must treat

nationals or domiciliaries of other members as they would their own citizens. Oblige member countries to grant trademark owners from other member

countries equal access to local trademark procedures. In the U.S., foreign registrations are subject to scrutiny under Lanham Act’s

statutory bars to registration. A U.S. registration based on an existing foreign registration—bona fide and

effective industrial or commercial establishment. Contract and 3rd party distributors do not count. Must submit a TRUE COPY of the registration in the country of origin.

F. Lanham Act §44(d): Foreign Application (Pending Foreign Application) Apply to register in the U.S. based on application to register in the country of

origin. U.S. application must be filed within 6 months. Must comply with Lanham Act including statement of bona fide intent to use.

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Will not issue until a foreign registration has issued and a true copy has been sent to the USPTO.

G. Lanham Act §66: Madrid Protocol International Trademark (IR)

o Allows non-U.S. applicants from member countries to extend their international registrations to the U.S. and

o Domestic mark owners to obtain international registration extending to member countries

o Governed by WIPOo Each country designated has right to accept or refuse extension

Benefits include:o Right to renew and record assignment in one place

Risk of central attack:o Attack to the IR will apply to all extensionso If IR is based on a French application which is refused or opposed, then

the IR will be refused or opposed, and this will apply to all IR extensionso In the U.S., if IR is canceled in whole or in part, under 70(c), application

can be transformed into a section 1 or 44 application (see above) within 3 months.

H. How to Obtain a Trademark?1. Clearance—through a “knockout” search or ordinary search report2. Start using the mark in the ordinary course of trade or in connection with the

goods or services Apply TM to labels or affix to the goods directly or to containers of goods;

shown at point-of-sale. Use solely on invoices, bills of landing, packing slips or ads would not be

enough. 3. Apply for registration with USPTO

Minimum Requirements: Applicant’s name Correspondence name and address Drawing Identification of goods and services Filing Fee Dates of use—anywhere and in interstate commerce Specimens of use

4. ExaminationMark unregistrable if:o Immoral, deceptive, or scandalous matter, disparaging or falsely suggest a

connection (see last cases regarding constitutionality of immoral, deceptive, or scandalous restrictions)

o A name, portrait, or signature identifying a particular living individual except by their written consent

o Confusingly similar

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o Merely descriptive o Objections like improper ID or improper class of goods

Office actions—6 months to respond1

Published for opposition—30 days 5. Once Allowed: Opposition Period

o Application is approved—published in a weekly publication entitled “Official Gazette”

o Enables anyone who believes he or she will be damaged by application of the mark to oppose its registration

o Opposition or (request for extension of time to oppose) must be filed—30 days

o Opposition before TTAB (similar to litigation: pre-trial discovery, testimony, evidence, briefs, oral arguments)

6. ITU—Notice of Allowanceo If no Opposition is filed, PTO will issue Notice of Allowanceo 6 months to file Statement of Use (Date of first use, 3 specimens of use

and filing fee) (Extensions for 6 months to file SOU, up to 36 months) (Bona fide intent must exist and fee)

7. Miscellaneous Start to finish can take 1-2 years from date of filing Certificate can take up to 3 months once matured to registration Right to start using ® (recommended to use it if client wants to enforce

rights against infringer) State Registration is relatively simple, not giving much weight in

infringement actions, quick, evidence of exclusivity to a mark within the state or part of the state.

8. Advantage of Principal Register1. Nationwide protection from date of application—filing date. Common law

protection may be geographically limited if left unregistered.2. Incontestability—five years use it become incontestable. Defenses are

limited to specified defenses in statute. 3. Warming to Others—found in searches easily, constructive date of first

use, USPTO will refuse registration of other marks4. Barring imports—Customs will block imports5. Protection against counterfeiters—Enhanced remedies are available6. Evidentiary Advantages—Prime facie valid—no burden to show

nonfunctionally7. ® symbol—Notice to public that rights exist. You cannot use ® unless

you have a registered trademark, otherwise it is a fraud on the public; however, you can use ™.

8. Confirms ownership and validity9. Foreign Filing—Basis for Madrid or Paris Convention10. Preemption of State Regulation

9. § 23 Advantages of Supplemental Register

1 Always call Examiner

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1. Marks not registerable on the PR (capable of distinguishing (distinctiveness))

2. Terms are descriptive, geographic, surnames3. §27—Shall not constitute an admission that the mark has not acquired

distinctiveness4. ITU is only for PR, alleging use can be amended to SR5. Able to use ® and sue in federal court6. §26—explicitly provides that SR do not receive same benefits as PR—no

prima facie evidence of validity; constructive notice, nationwide priority, or Customs

7. Will appear on search reports, PTO will cite it10. ®

“Registered in U.S. Patent and Trademark” “Reg. U.S. Pat. & Tm. Off.” Or ® Failure to use notice results in a bar to an award of profits or damages in

infringement suit—finding that a defendant had actual notice Hacky Sack case (Kransco v. Hayes) actual notice is not required

11. Renewal: Section 8 and 9 Section 8: File affidavit between 5th and 6th year after registration date for

at least some of goods/services covered by registration Goods/Services not included will be deleted Actual use required, not token use Excusable non-use is available Section 9: Renewed for 10 years with fee and verified application.

(Section 8 affidavit also required)12. Larami Corp. v. Talk To Me Programs, Inc.: TTMP—filed ITU application on

July 1990 for “THE TOTALLY RAD SOAKER” for toy water-guns. Larami opposed alleging it had used “SUPER SOAKER” for toy water-guns. TTMP—sued for infringement because Larami’s first use was after ITU constructive first use date (application date). Summary judgment for Larami dismissed the infringement claim because TTMP did not have a registration, cannot rely on constructive first use, could not establish common law rights, and “TOTALLY RAD SOAKER” is merely descriptive with no secondary meaning. Board ruled that even though it agreed that the mark was merely descriptive, secondary meaning still remained an open issue. Applicant should not be required to show secondary meaning prior to use by opposer. Constructive use under 7(c)—rely on date to demonstrate priority. Acquisition of secondary meaning is “present date.” Surviving opposition is different from infringement.

13. Compagnie Gervais Danone v. Precision Formulations, LLC: Precision seeks to register FRUITOLOGY for cosmetic products in classes 003, 005, and 0032. Both parties agreed that confusion existed, so the issue was regarding priority. ITU gets priority date of filing date. Precision gets Feb 21, 2007 and Danone filed May 22, 2007 under §66(a). Priority is earliest if: (1) international registration of extension was filed in the international application; (2) date of record of request for extension if request for

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extension was made after IR date; and (3) the date of priority claimed pursuant to section 67. Section 67—Applicant entitled to claim a date of priority when it hold an IR, makes a request for extension to the U.S., includes a claim of priority based on a right of priority under Article 4 of Paris Convention, and the date of the IR is within 6 months of the filing date of the application underlying the IR. Pursuant to 66(b) and 67, Danone is entitled to priority of Dec 6, 2006.

XIII. Bars to Registration A. Section 2(a)—Immoral, Scandalous, Disparaging or Deceptive Matter and False

Suggestions of Connection Deceptive Matter 1. Bayer v. Stamatios: Deceptive and deceptively misdescriptive terms. Test for

deceptiveness (In re Budge): 1) Is the term misdescriptive of character, quality, function, composition or use of the goods? 2) If so, are purchasers likely to believe? 3) If so, is the misdescription likely to affect a significant portion of decision to purchase? (The third prong separates whether the mark is deceptive vs. merely deceptively misdescriptive).

2. Deceptive matter is absolute bar to registration, 2(f) secondary meaning not applicable (not a rescue).

3. Merely Deceptively Misdescriptive is also barred from registration under 2(e)(1), however, secondary meaning under 2(f) can be demonstrated to obtain registration.

False Suggestion of a Connection1. Hornby v. TJX Companies: P must demonstrate name or equivalent must be

unmistakably associated with a particular personality or “persona” must point uniquely to the P. Buffet Test: (1) D mark is same or close of P’s name or identity; (2) recognized as such; (3) P is not connected; and (4) P’s name sufficient fame that connection is presumed.

B. Section 2(b) and 2(c)—Flags, Presidents, Living Individuals 1. 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(b) consists of or comprises the flag, coat of arms, or other insignia of the U.S.(c) consists of or comprises a name, portrait, or signature unedifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow . . .

2. 2(c) must consider: (1) so well known that public reasonably assumes a connection or (2) if individual is publicly connected with the business in which the mark is being used.

C. Section 2(d)—Likelihood of Confusion (Confusingly Similar)

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1. A mark shall be refused if it consists of comprises a mark which so resembles a mark registered in the PTO, or a mark or trade name previously used in the U.S. by another and not abandoned, as to be likely, when used on or in connection with the goods of applicant, to cause confusion, or to cause mistake, or to deceive . . .

D. Section 2(e)(2) and 2(e)(3)—Geographic Terms 1. Bars from registration a mark which is (2) primarily geographically

descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title; (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them . . .

2. In re The Newbridge Cutlery Co.: Newbridge Cutlery Co. denied registration of NEWBRIDGE HOME mark as being “primarily geographically deceptive.” The court reversed because there was not showing of an association in the public’s mind between the place and the marketed goods. To reject, an Examiner must: (1) name of a place known generally to the public, and (2) public would make a goods/place association.

E. Section 2(e)(4)—Surnames, Other Issues 1. Is primarily a surname. 2. In re Quadrillion Publishing: ITU application for BRAMLEY; rejected under

2(e)(4). Test: Primary significant of the mark to the purchasing public. Benthin Factors: (i) degree of rareness; (ii) whether anyone connected with the applicant has the surname; (iii) whether the term has any recognized meaning other than that of a surname; (iv) the structure and pronunciation or “look and sound” of the surname. Results of search of database showed 433 Bramley surnames.

3. In re Joint-Stock “Baik”: Baik is relatively rare, “look and feel” should be interpreted in assessing whether mark is primarily merely a surname. If look and feel is not of a surname, should not be refused registration even if evidence shows it is a surname.

F. Numerals, Letters, and Initials 1. As a general rule, that merely differentiates between various grades, styles,

colors or types of products, and does not designate their source, is not a protectable trademark.

2. Grade designations are analogous to descriptive terms. 3. Warrant protection as TM if in addition to specifying quality, style, or type of

product, it also designates the source of the goods. Requires “analysis of the manner of use the intent of the user, and the meaning understood by the consumer.”

G. Section 2(e)(5)—Functionality 1. . . . comprises any matter that, as a whole, is functional.

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2. Traffix: Dual spring was “functional.” Road sign with mechanical feature that is patented-two springs. Lanham Act states that protection for trade dress, burden on party seeking protection to show it was not functional. If feature is subject to patent, a “heavy burden” to show that it is merely “ornamental, incidental, or arbitrary aspect of the device.”

3. In re Becton, Dickinson, and Co.: Appeal from refusal based on functionality for design of closure cap for blood collection tubes. 4 factor test from Morton-Norwich: (1) Is there a Utility Patent; (2) Advertising that “touts utilitarian advantages of the design”; (3) Does design result from a comparatively simple or inexpensive method of manufacture; (4) availability of alternative designs.

4. In re Vertex Group: Seeking TM registration for sound to prevent child abduction. Functional if “it is essential to the use or purpose of the article or it affects the cost or quality of the article.” Also applies Morton-Norwich test.

XIV. Loss of Trademark Rights A. Genericism

1. If the name claimed as the brand becomes the “generic” name of the goods or services, principals of competition require that the name remain (or become) free for all purveyors to use.

2. Bayer v. United Drug: Aspirin marketed name by Bayer of a patented composition—acetylsalicylic acid. Evidence provided that a class of buyers where “ASPIRING” has always signified Bayer. Consumer did not know the term “acetylsalicylic acid” and instead only saw “ASPIRIN.”

3. Elliot v. Google: Google cautions not to use “Google” as a verb. “Verb use of a TM is not fundamentally incapable of identifying a producer originating a source.” Test: Primary significance of the term to the public. Over 90% of respondents to the survey identified GOOGLE as a brand name.

4. King Seeley Thermos v. Aladdin: Aladdin claimed “Thermos bottles” was a generic term. Survey showed 75% of adults call these containers “Thermos.” Certain restrictions were imposed. “The primary significance to the public is in the indication of the nature and class of an article rather than indication of source.” “The public has virtually excoriated it as its own.”

5. Dupont v. Yoshida: Principal significance must indicate if it is nature of class of an article, rather than indication of its origin.

B. Abandonment: Lanham Act § 451. Discontinued with intent not to resume such use. Intent not to resume may be

inferred. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” means bona fide use, not merely to reserve a right in a mark.

2. Silverman v. CBS: Judge ruled that Amos ‘n’ Andy name of show and characters were protectable marks. Two element test: (1) non-use and (2) intent not to resume use. CBS contends that it intends to resume when the “social climate becomes more hospitable.” 21 years, presumption of

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abandonment—but this is rebuttable. Does phrase mean intent never to resume use or does it merely mean intent not to resume use within the reasonably foreseeable future?

3. Specht v. Google: Specht owned ADC. URL lapsed in 2005. 3 years of non-use is presumption. It can be rebutted with evidence excusing nonuse or demonstrating an intent to resume. The ITR must be formulated within the 3 years of nonuse. Attempt to sell assets is not enough to show intent to resume use. Website not enough when sales of goods/services cannot be done on the website.

XV. Infringement A. 15 U.S.C. § 1114 (Lanham Act § 32(1)

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 . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided . . . .”

2. “Here we examine the scope of that protection, and what uses of a registered mark or a designation similar to a registered mark count as trademark infringement.”

B. Defendant’s Use in Commerce1. Naked Cowboy v. CBS: NC sued CBS for use in episode of Bold and the

Beautiful. NC registered mark “NAKED COWBOY.” Adword “Naked Cowboy” gave CBS top page visibility of the YouTube clip. To prevail on TM Claim, P must establish: (1) It has a valid registered mark; (2) D used the mark; (3) in commerce; (4) in connection with the sale or advertising of goods or services; and (5) without P’s consent. A mark is “used in commerce for infringement purposes when (1) it is placed in any matter on the goods . . . or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale,” and (2) the goods are sold or transported in commerce. 15 U.S.C. § 1127. Court said no use of “Naked Cowboy” in episode and inclusion of tags on YouTube is not a use. Purchase of adwords is also not a use. Only source of potential TM infringement is use in title of YouTube clip.

2. 1-800 Contacts, Inc. v. Lens. com, Inc.: Related to Google Adwords program. “use” requires proof that D used P’s service mark or a confusingly similar mark in commerce. Use of another’s mark to trigger internet ads for itself is a use in commerce.

3. Rescuecom Corp v. Google, Inc.: Is the keyword-based advertising service itself using the mark in commerce? Showing competitors ads likely to cause confusion. Product placement is not a shield—the issue is if it is designed to confuse consumers.

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C. Likelihood of Confusion 1. Polaroid v. Polarad Elects. Corp.: Court found that Polaroid is a strong mark,

marks were similar, but actual confusion was weak. Similar to “DuPont factors” for testing confusingly similarity for registration purposes, but these focus on potential confusion caused by marks as they actually appear in the marketplace. Polaroid Factors : 1. Strength of the Mark2. Degree of Similarity3. Proximity of the Products4. Likelihood that the Prior Owner will Bridge the Gap5. Actual Confusion6. Reciprocal of D’s good faith in adopting its own mark7. Quality of D’s Product8. Sophistication of the Buyers2

Different circuits have different tests but based on the Polaroid factors. Although factors are weighted differently, each has to some degree consider: degree of similarity; proximity of the products; D’s intent; evidence of actual confusion, strength of P’s mark, CAFC applies law of the regional circuit.

2. Market Factors: Consideration of all circumstances in the marketing of the respective businesses. 1. Degree of similarity between the designations

i. Overall Impressionii. Pronunciationiii. Translationiv. Verbal Translation of Pictures, etc. v. Suggestions or Meanings

2. Similarity in the marketing methods and channels of distribution3. Characteristics of the purchasers and degree of care4. Degree of distinctiveness5. Likelihood purchaser would expect expansion6. Extent to which is identified with the other in the Geographic market.

3. E.J. Gallo v. Consorzio Del Gallo Nero: The Court balanced the Likelihood of Confusion factors and found that they were all in favor of Gallo.

4. Banfi Products v. Kendall-Jackson Winery: The parties stipulate that no “actual confusion” exists. The Court found that all factors were for Banfi.

5. Leelanau Wine, Cellars v. Black & Red: The Court was critical of P’s survey, net confusion ranges between 27-31%. It did not give it weight because universe of responders was overbroad; did not replicate conditions; questions suggestive and misleading; primary distribution of BR wine is in tasting room; survey with methodological error.

6. LOC—Question of Fact or Law? If issue of fact—appellate court must adopt conclusion of trial court unless “clearly erroneous.” If issue of law,

2 Not all factors are weighed the same (see wine cases).

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review is de novo—not bound by lower courts conclusions. Restatement (3rd) suggests better approach is to treat LOC as question of fact.

7. Makers Mark v. Diageo: Maker’s Mark had iconic red wax drip on bottle and Jose Cuervo used red wax drip as well. The court balanced the Frisch factors and found that Makers Mark won.

D. Initial Interest Confusion1. Internet addresses, metatags, and keyword ads. TM owners claimed that if it

appears anywhere on a competitor’s website or as a keyword ad trigger might cause a click or link and land on another’s page.

2. Web surfers are more likely to be confused as to ownership of a website than traditional patrons because clicking is so easy.

3. Even if you type MOVIEBUFF and West Coast shows up in the search and you can tell based on the web address that there is low likelihood of confusion, there can be initial interest confusion.

4. Blockbuster v. Laylco: Dispute between “Video Busters” and “Blockbuster.” Video Busters contends not actionable if customers would not likely to be confused at the time, they actually rented the videos. Court rules that protection is not limited to confusion “at the point of sale.” The names were close, and the products were identical so the issue turned on the degree of likelihood that a name would attract potential customer based on reputation built by the original mark, Blockbusters.

5. Network Automation v. Advanced Systems: Both sell job scheduling and management software, and both advertise on the internet. Network used Auto-Mate but purchased adword “ActiveBatch,” which Systems used. Initial interest confusion “occurs when the D uses P’s TM in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.” The court applied the Sleekcraft test in a flexible way. Must demonstrate “consumer confusion” not just diversion. Must consider expertise and sophistication of buyer.

6. Multi Time Machine v. Amazon.com: Customer goes online to Amazon looking for certain military-style watch, specifically “MTM Special Op.” Amazon does not sell MTM, search produces a list with photos of other brands. Is conduct likely to confuse customers about the source. No reasonably prudent consumer accustomed to shopping online would likely be confused as to the source of the products. (1) Who is the relevant consumer? (2) What would he reasonably believe based on what he saw on the screen?

E. Reverse Confusion 1. Fortres Grand v. Warner Bros.: Clean Slate is security software. In The Dark

Knight Rises, Clean Slate is fictional software used to erase criminal record history. FG claims likely to cause confusion. Only confusion about “origin, sponsorship, or approval of . . . goods supports a TM claim.” Applies the seven LOC factors and found that FG could not support a claim.

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XVI. Derivative Liability

Courts generally recognize two different bases of derivate liability:(1) Contributory infringement, for inducing infringement or knowingly supplying

the means to infringe; and (2) Vicarious liability imposed under the principles of agency law.

*Cont. Inf. Imposed when – (a) the actor intentionally induces the third person to engage in infringing conduct; or (b) the actor fails to take reasonable precautions against the occurrence of the third person’s infringing conduct in circumstances in which the infringing conduct can be reasonably anticipated.

A. Secondary Liability 1. Inwood Labs, Inc. v. Ives. Labs, Inc.: Ives had patent on drug

cyclandelate. Inwood manufactures generic drug. Inwood and other intentionally copied colors of pill capsules and sold cyclandelate after Ives’ patent expired. Ives is claiming that the pharmacist who had dispensed generic drugs mislabeled as CYCLOSPASMOL, this caused by Inwood, contributed to infringing activities. Test: “would be liable either if they suggested, even by implication, that retailers fill bottles with generic cyclandelate and label the bottle with Ives’ TM or if the petitioners continued to sell . . . to retailer whom they knew or had reason to know were engaging in infringing practice.” SCOTUS said clearly erroneous standard and must go back and look at Section 43(a) claim (false designation.)

2. Life Alert v. LifeWatch: Life Alert sells medical alert devices and monitoring single 1989. LifeWatch markets competing devices and uses telemarketers, some used registered slogans in 2008. Can succeed on contributory infringement one of two ways— (1) intentionally induced or (2) continued to sell to a known infringer. Also liable under vicarious liability—apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product.

3. Tiffany v. eBay: Tiffany claims that sellers on eBay were offering counterfeit jewelry. Tiffany contends that principles of secondary liability impose on eBay an obligation to “preemptively refuse to post any listing offering five or more Tiffany items.” Polymer Tech citing Inwood—(i) intentionally induced) or (ii) knowingly supply/continues to supply. Court found that eBay would promptly remove counterfeit goods. P’s bear a higher burden in establishing “knowledge” of contributory infringement. A service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods.

XVII. Trade DressTM Infringement for Unregistered MarksSection 43(a)(1)(A)

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(a) Civil Action(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 . . . 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. . . .

(3) In a civil action for trade dress infringement 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 the matter sought to be protected is not functional.

A. Distinctiveness 1. Two Pesos v. Taco Cabana, Inc.: Confirming that trade dress can be

protected under 43(a) based on inherent distinctiveness without secondary meaning. Secondary meaning only required when the TM is not sufficiently distinctive and applies to trade dress. Descriptive marks can acquire distinctiveness through secondary meaning. Inherently distinctive trade dress should be treated the same as a mark and thus does not require secondary meaning.

2. Qualitex Co. v. Jacobson Products Co.: Any word, name, symbol, or device, or any combination thereof. Sometimes, color can meet the standard of a TM. Secondary meaning—in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself. The “ultimate test of aesthetical functionality,” it explains, “is whether the recognition of trademark rights would significantly hinder competition.” “In general terms, a product feature is functional,” and cannot serve as a TM, “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”

3. Wal-Mart v. Samara Bros: Is product design distinctive and thus entitled to protection? Trade dress encompasses design of a product. Alleged infringing feature must not be “functional.” “Nothing in 43(a) explicitly requires a producer to show that its trade dress is distinctive, but courts have universally imposed that requirement.” Design, like color, is not inherently distinctive. Secondary meaning is required for product design.

B. Trade Dress

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1. Hammerton v. Heisterman: P sued former employee claiming he was knocking off lighting fixtures. SJ awarded to D: “P has failed to properly articulate the design elements that comprise its alleged trade dress.” P asserted non-functionality and: (1) individually sculpted, (2) how metals are distressed, (3) how it creates its bark texture, (4) hand-modeled finish. 43(a) does not protect manufacturing process. Court does not want to “step on toes” of patent law.

2. Louis Vuitton Malletier v. Dooney & Bourke: DB used same monogram style as LV. (1) Does P’s mark merit protection, (2) D’s use likely to cause confusion. Stylized letter or shapes are not “basic” and are protectable when original within the relevant market. Original LV toile mark was original in handbag market, distinctive, and strong. It is both inherently distinctive and has acquired secondary meaning. Side by side is not enough, must evaluate confusion and identical is not required. Applied Polaroid factors; no single factor is dispositive.

3. Conopco v. May Dept. Stores Co.: Vaseline bottle issue. For monetary relief, must show “actual confusion.” For injunctive relief, only show “likelihood of confusion.” Actual confusion cannot be presumed from D’s intent to copy. No actual confusion supported.

4. McNeil Nutritionals v. Heartland Sweeteners: House brand packaging shows store name. Yellow is used on packet itself. Giant and Stop and Shop lost for not prominently showing their house brand.

XVIII. Defenses

Section 33 Section 33(a) provides that a registration is prima facie evidence of the

registrant’s right to exclusive use . . . subject to legal and equitable defenses, including those set forth in 33(b).

An “incontestable registration” is “conclusive” of the exclusive right but only to G/S covered by the incontestable registration.

33(b) lists 9 defenses—affirmative defenses—alleged infringer has burden of pleading and proving them. 1. Fraud2. Abandonment3. Misrepresent Source4. Use as a Descriptive Sense other than a TM5. Limited Territory Defense6. Prior Registration by Defendant 7. Use of mark to violate anti-trust laws8. Functionality9. Equitable Principles—laches, estoppel, acquiescence

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A. Incontestability 1. Lanham Act § 152. Continuous use for 5 consecutive years from registration3. Shall become “incontestable” provided that

1) No final decision adverse to claim of ownership2) No proceeding involving said rights3) Affidavit is filed within 1 year setting forth the G/S4) No incontestable right shall be acquired in a mark which is the

generic name for the goods or services thereof4. Park ‘N Fly v. Dollar Park and Fly, Inc.: Can an incontestable mark be

challenged as merely descriptive? Conclude that neither the language of the statues nor the legislative history supports such a defense. Can be canceled anytime if generic. Statute does not distinguish between offensive and defense use. Cannot be challenged as “merely descriptive.”

5. Courts have taken the Source Services approach—federally registered incontestable marks are conclusively valid, but not necessarily strong for determining likelihood of confusion. Incontestability does not make a weak mark strong. 6th and 11th Cir. follow—Incontestable marks are presumed strong but can be overcome by showing widespread 3rd party use.

B. Fraud1. Registration made material and knowing misrepresentation. Failure to reveal

that a mark was commonly used in a generic or descriptive sense in the industry was held to be fraud. Fraud statements made in a TM app. May not be the produce of mere error or inadvertence but must indicate a deliberate attempt to mislead the PTO. Intentionally false statements in the incontestability decision held to be fraud. Even if fraud in registration is proven, TM owner retains common law rights.

2. In re Bose: No evidence that Bose intended to deceive PTO. Fraud occurs when applicant knowingly makes false, material misrepresentations of fact. Must have clear and convincing evidence. “Should know” is higher than mere negligence standard. Fraud—objective manifestations of that intent.

3. Nationstar Mortgage v. Ahmad: Shifting from an actual use application while submitting fabricated specimens of use and then switching to an ITU application can serve as basis for fraud. Fraud cannot be cured by amending filing basis.

C. Statutory Fair Use 1. U.S. Shoe Corp. v. Brown Group: “Looks like a pump, feels like a sneaker.” D

launched ad campaign that compares pumps to a sneaker. Used in a descriptive sense, not a source identifier. Qualifies as “fair use” defense. It was used as descriptive of the product and used fairly and in good faith only to describe the shoe.

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2. Car-Freshener v. SC Johnson: Use of Pine Tree for car air freshener. Fair use of using pine tree shape to provide for smell of Christmas—descriptive. What matter is if D is using mark descriptively.

D. Nominative Fair Use 1. New Kids on the Block v. News America Publishing: First Amendment as

defense, District Court granted SJ on FA grounds. Non-trademark use of a mark—does not capitalize on consumer confusion. “Such NOMINATIVE use of a mark—where the only word reasonably available to describe a particular thing is pressed into service—lies outside the strictures of trademark law. Because it does not implicate the source-dentification function that is the purpose of trademark, it does not constitute unfair competition.” Where the D used a TM to describe the P’s product, rather than its own, we hold that a commercial user is entitled to nominative fair use defense provided her meets three requirements: (1) P/S not readily identifiable without use of TM; (2) Only so much of the mark may be used as is reasonably necessary; (3) Do nothing to suggest sponsorship or endorsement. New Kids have a limited property right in their name, that right does not entitle them to control their fans’ use of their own money. Only using their name; not associating that you have sponsorship or association.

E. Expressive Use of Trademarks 1. Rogers v. Grimaldi: Right to protect celebrated name vs. right to express

themselves. Movie was fictional and “obliquely” related to the characters. Movie characters were “Pippo and Amelia” who imitated Rogers and Astaire. First Amendment does not insulate titles of artistic works from all LA claims, but such concerns “inform” courts’ considerations. Expressive elements of titles require more protection that the label of ordinary commercial products. “No alternative” avenue test does not sufficiently accommodate the public’s interest in free expression. Test: For allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Lanham Act, unless the title has not artistic relevance to the underlying work whatsoever, or if it has some artistic relevant, unless the title explicitly mislead as to the source of the content of the work.

2. ESS v. Rock Star Videos: Rogers Test (1) Artistic relevancy “whatsoever” and (2) intended to mislead. Grand Theft Auto had “Pig Pen” strip club in it and LA really has “Play Pen” strip club. ESS Filed for TD infringement under 43(A.) Nominative Fair use does not apply because a trademark was not used. ESS argues that “Play Pen” is not about the game and “no” artistic relevance whatsoever.

3. Gordon v. Drape Creative, Inc.: Test: The plaintiff claiming infringement must show (1) that it was a valid, protectable trademark, and (2) that the mark is either not artistically relevant to the underlying work or explicitly misleading as to the source or content of the work. The Rogers test is not an automatic safe harbor. There is at least a triable issue of fact as to

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whether defendants simply used Gordon’s mark with minimal artistic expression of their own, and used it in the same way that Gordon was using it—to identify the source of humorous greeting cards in which the bottom line is “Honey Badger don’t care.”

F. Parody 1. Dr. Seuss v. Penguin Books: Poetic account of OJ trial, “The Cat NOT in the

Hat!” Issue for TM is LOC in marketplace as to the source, cause mistake, or deception as to affiliation, connection, or association. Claim of “parody” not really a separate “defense” so much, but merely a way of phrasing the traditional response that customers are not likely to be confused. The cry of “parody” does not magically fend off otherwise legitimate claims of TM infringement or dilution. A non-infringing parody is merely amusing, not confusing.

XIX. Disparagement: Section 2(a) and the First AmendmentA. Section 2(a)—bars registration of scandalous, immoral, or disparaging marks. B. In re Tam: “The Slants” band name. A bedrock principle of the First Amendment

is that gov’t may not penalize private speech because it disapproves of a message. First Amendment protects even hurtful speech. Gov’t argues it prohibits no speech, Tam is free to use “The Slants” as a mark in commerce, but without Gov’t subsidy. Gov’t speech argument fails— “chills private speech.” Unconstitutional even under Central Hudson Test (regulation of commercial speech). We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends bedrock First Amendment principle: Speech may not be banned on the ground that is expresses ideas that offend. While the government-speech doctrine is important—indeed, essential—it is a doctrine that is susceptible to dangerous misuse. If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. TM is NOT Gov’t speech. It fails under “Gov’t program” test too—relaxed scrutiny. A law found to discriminate based on viewpoint is an “egregious form of content discrimination,” which is “presumptively unconstitutional.”

C. Iancu v. Brunetti: “FUCT” TM. If the “immoral or scandalous” bar similarly discriminates on the basis of viewpoint; it must also collide with our First Amendment doctrine. The “immoral or scandalous” criterion in the Lanham Act is viewpoint-based, not viewpoint-neutral. Dissent agrees that “immoral” disagrees with the term “scandalous.” “I do interpret the term to allow the PTO to restrict (and potentially promulgate guidance to clarify) the small group of lewd words or “swear” words that cause a visceral reaction, that are not commonly used around children, and that are prohibited in comparable settings.”

XX. Dilution, Blurring, Tarnishment A. Dilution

Lanham Act § 43(c)(c) Dilution by Blurring; Dilution by Tarnishment

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(1) Injunctive relief—subject to principals of equity . . . likely to cause dilution by blurring or tarnishment . . . Regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(2) Definition(A) . . . a mark is famous if it is widely recognized by the general

consuming public of the U.S. . . . may consider all relevant factors including . . .(i) duration, extent, geographic reach of ads and publicity(ii) amount, volume, and geographic extent of sales(iii) extend of actual recognition(iv) whether mark was registered under the Act of March 3 1881, or

the Act of . . . 1905, or on the principal register. (B) Dilution by blurring—is association arising from the similarity

between a mark . . . that impairs distinctiveness . . . court may consider all relevant factors including:(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. (C) dilution by tarnishment—is association arising from the similarity

between a mark . . . that harms the reputation of the famous mark. (3) Exclusions

(A)Any fair use(B) News reporting(C) Noncommercial use of mark

(4) Burdens of Proof(A)For trade dress, nonfunctional and famous(B) . . . unregistered matter is famous . . .

1. “It is opposed to good morals to appropriate thus the fruits of another’s labor if the consciousness of that other will or may thereby be damaged.”

2. Moseley v. Secret: “The preservation of the uniqueness of a trademark should constitute the only rational basis for its protection.”

3. Rational basis—to appropriate thus the fruits of another’s labor. 4. Pepsi means a single thing coming from a single source=selling power. 5. When a mark is diluted, both associations are disturbed. 6. Wages of Ubiquity : Distinctiveness of truly unique trademarks was in danger

of being “whittled away.” Ubiquity—owners are deliberately destroying the

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uniqueness of their marks by using them to identify a diversity of products, product myths, and entire lifestyles. Schecter required marks to possess uniqueness components: 1) a level of distinctiveness in the marketplace; 2) a level of distinctiveness in the mark itself; and 3) a singularity of association between the mark and the underlying product.

B. Blurring 1. National Pork Board v. Supreme Lobster and Seafood Co.: Supreme Lobster

seeks registration for “THE OTHER RED MEAT” for salmon. Opposed by Pork Board for “THE OTHER WHITE MEAT.” Lots of survey evidence to prove fame of the mark. Results of survey probative of likelihood of dilution.

2. VISA v. JSL: Joseph Orr runs eVisa, claiming that VISA can’t stop him from using a word in the dictionary. eVisa is a multilingual education and information business that is exclusively on internet. VISA must show that it’s mark is famous and distinctive, D’s use started after it had become famous, and D’s use is likely to dilute. Dilution happens when a mark associated for one product becomes associated with another=weakens marks ability to evoke the first product in the minds of consumers. JSL not using term “visa” in its literal sense.

3. Louis Vuitton v. Haute Diggity Dog: Dog chew toy that resembled a LV bag at issue. Court found that dog toys are successful parodies of LV TM’s and designs. LV is famous, does not sell dog toys. The court found that the parody does not harm LV’s mark’s distinctiveness because parody intentionally communications that it is not the famous mark. There was no blurring in this case because it was a successful parody. LVM provided no record to support assertion of tarnishment (i.e., there was a choking hazard for some dogs).

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