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TRADEMARKS . PROF. JANICKE JULY 2007. TO BE A “MARK”:. HAS TO SERVE AS A BRAND MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS. TO BE A “MARK”:. HAS TO BE USED PHYSICALLY ON THE GOODS (TRADEMARK) OR ON SIGNS, ADS, OR PAPERS CONNECTED TO SERVICE (SERVICE MARK).

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trademarks

TRADEMARKS

PROF. JANICKE

JULY 2007

to be a mark
TO BE A “MARK”:
  • HAS TO SERVE AS A BRAND
  • MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS

Trademarks

to be a mark1
TO BE A “MARK”:
  • HAS TO BE USED PHYSICALLY ON THE GOODS (TRADEMARK) OR ON SIGNS, ADS, OR PAPERS CONNECTED TO SERVICE (SERVICE MARK)

Trademarks

to be a mark2
TO BE A “MARK”:
  • THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE
  • LOCAL, FOR STATE RIGHTS
  • INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS

Trademarks

protection
PROTECTION
  • RIGHTS BEGIN UPON FIRST USE
  • REGISTRATION IS UNNECESSARY
  • CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK
    • DONE UNDER UNFAIR COMPETITION LAWS

Trademarks

passing failing the first requirement of a mark
PASSING/FAILING THE FIRST REQUIREMENT OF A “MARK”
  • NOT A DISTINGUISHING BRAND
  • EXAMPLES:

Trademarks

falling into the registered pit
FALLING INTO THE “REGISTERED” PIT

PROBLEM:

  • 1ST USER HAS NO REGISTRATION
  • 2ND USER GOT STATE AND FEDERAL REGISTRATIONS, TWO YEARS AGO
  • GOODS/MARKS CONFUSINGLY SIMILAR
  • WHO WINS?

Trademarks

the thorn permanent local use rights
THE THORN:PERMANENT LOCAL USE RIGHTS
  • THE ONE BIG PROBLEM FOR THE FIRST USER IN COMMERCE
  • SECOND USER CAN GET PERMANENT LOCAL RIGHTS TO USE
  • IF CONFUSION, FIRST USER MUST STAY OUT!

Trademarks

permanent use rights
PERMANENT USE RIGHTS

CONDITIONS:

  • (1) FIRST TO USE IN A LOCALE (STATE OR LESS)
  • (2) NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF ADOPTION

Trademarks

permanent use rights1
PERMANENT USE RIGHTS
  • FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS REGISTRATION DATE
  • REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2)

Trademarks

permanent use rights2
PERMANENT USE RIGHTS
  • NOW, CONGRESS HAS PROVIDED THAT A FEDERAL REGISTRATION CONSTITUTES CONSTRUCTIVE USE EVERYWHERE AS OF THE FILING DATE (§1057(c)
  • THIS KILLS CONDITION (1) AS OF THE FILING DATE

Trademarks

permanent use rights3
PERMANENT USE RIGHTS
  • ∴ REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE

Trademarks

quasi marks and non marks
QUASI-MARKS AND NON-MARKS
  • WALK THROUGH § 1052
  • THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS

Trademarks

quasi marks and non marks1
QUASI-MARKS AND NON-MARKS
  • START WITH 1052(f): TELLS US MANY PROBLEMS ARE INCURABLE
  • EXAMPLES:

Trademarks

quasi marks and non marks2
QUASI-MARKS AND NON-MARKS

THE (e) GROUP:

  • DESCRIPTIVE [EXAMPLE?]
  • MISDESCRIPTIVE [EXAMPLE?]
  • GEOGRAPHIC
  • SURNAMES

Trademarks

quasi marks and non marks3
QUASI-MARKS AND NON-MARKS
  • FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER)
  • [EXAMPLES?]

Trademarks

getting from quasi to full showing acquired distinctiveness
GETTING FROM QUASI TO FULL:SHOWING ACQUIRED DISTINCTIVENESS
  • OFTEN CALLED “SECONDARY MEANING”
  • SHOWS THE QUASI-MARK HAS ARRIVED; NOW SIGNALS SOURCE
  • FIVE YEARS EXCLUSIVE USE MAY DO

15 USC § 1052 (f)

Trademarks

less known types
LESS KNOWN TYPES
  • COLLECTIVE MARKS
    • TRADE / SERVICE MARKS
    • MEMBERSHIP MARKS
  • CERTIFICATION MARKS

§ 1054

Trademarks

confusion likelihood
CONFUSION LIKELIHOOD
  • AS TO SOURCE
  • AS TO SPONSORSHIP
  • AS TO AFFILIATION
  • AS TO APPROVAL

Trademarks

confusion likelihood1
CONFUSION LIKELIHOOD
  • SUBSTANTIAL NUMBER OF PERSONS
  • PROBLEM OF LANGUAGE TRANSLATION
    • DEPENDS HOW MANY SPEAK IT IN U.S.

Trademarks

factors in judging likelihood of confusion
FACTORS IN JUDGING LIKELIHOOD OF CONFUSION
  • NO SINGLE FACTOR CONTROLS
  • “SUNKIST” FOR FRESH FRUIT AND FOR DRIED FRUIT WERE OWNED BY UNRELATED COMPANIES
  • MARKS LIKE “ACME,” “SUPERIOR, AND “NATIONAL” HAVE MANY OWNERS
  • FAMOUS CASES HAVE CHECKLISTS

Trademarks

factors
FACTORS
  • STRENGTH OF P’S MARK
    • HOW MUCH USE; HOW ARBITRARY
  • SIMILARITY OF THE MARKS
    • SIGHT
    • SOUND
    • SCRIPT OR DESIGN
  • SIMILARITY OF PRODUCTS OF SERVICES

Trademarks

factors cont d
FACTORS (CONT’D.)
  • CHANNELS OF TRADE
  • ADVERTISING OR PROMOTION MEDIA
  • BAD FAITH ADOPTION
    • SOME COURTS GIVE THIS HEAVY WEIGHT; OTHERS DON’T
  • NATURE OF CUSTOMERS
  • PURCHASE CONDITIONS: TIME, PRICE, ETC.

Trademarks

who has the right the problem of gray goods
WHO HAS THE RIGHT? THE PROBLEM OF “GRAY GOODS”
  • ARISES FROM CORPORATE SPINOFFS [ABOUT AS FREQUENT AS MERGERS]
  • WHEN FOREIGN MARKET IS SPUN OFF, MARKS USUALLY GO WITH
  • ALSO FROM LICENSING [IP MAXIMIZATION]

Trademarks

gray goods
GRAY GOODS

U.S. RULE:

  • IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION
  • IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER

Trademarks

what is not infringement
WHAT IS NOT INFRINGEMENT
  • FAIR USE TO DESCRIBE:

JANICKE’S COMPUTER RENTAL

WE RENT ALL TYPES, INCLUDING COMPAQ®, IBM®, AND DELL®

§ 1115 (4)

JANICKE’S COMPUTER RENTAL

WE RENT ALL TYPES

INCLUDING COMPAQ® AND IBM®

Trademarks

what is not infringement1
WHAT IS NOT INFRINGEMENT
  • OWN NAME IN BUSINESS OTHER THAN AS A MARK
  • Cf: SPERA’S RESTAURANT

TONY SPERA, PROP.

TONY’S RESTAURANT

TONY SPERA, PROP.

Trademarks

slide30
N.B.
  • NO GENERAL RIGHT TO USE YOUR OWN NAME IN BUSINESS
  • MOST ATTEMPTS FAIL
  • NO POINT IN CHANGING YOUR NAME TO JOHNNY WALKER IF YOU ARE GOING TO SELL WHISKY

Trademarks

slide31
N.B.
  • STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL

Trademarks

a word about dilution
A WORD ABOUT DILUTION
  • WHEN THERE IS NO INFRINGEMENT BECAUSE NO LIKELIHOOD OF CONFUSION
  • BUT THE ACTS OF D SOMEHOW CHEAPEN OR TARNISH OR REDUCE THE VALUE OF P’S MARK

Trademarks

a word about dilution1
A WORD ABOUT DILUTION
  • EXAMPLE:
    • “CADILLAC” FOR CARS
    • FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD

Trademarks

a word about dilution2
A WORD ABOUT DILUTION
  • ONLY AVAILABLE FOR “FAMOUS” MARKS
  • NO DAMAGES NORMALLY
  • INJUNCTIVE ONLY

§ 1125 (c)

Trademarks

remedies
REMEDIES

Trademarks

injunctive
INJUNCTIVE
  • NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER
  • CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS

Trademarks

injunctive1
INJUNCTIVE
  • PRELIMINARY
  • PERMANENT
    • §1116 (a)
  • 4,000 + TRADEMARK SUITS FILED ANNUALLY
  • ABOUT 45 GO TO TRIAL

Trademarks

monetary
MONETARY
  • D’S PROFITS
  • OR P’S DAMAGES [DIFFICULT TO SHOW]
  • COURT CAN TREBLE P’S DAMAGES
  • IF D’S PROFITS AS REMEDY IS TOO SMALL/LARGE, COURT CAN ENTER A “JUST” AMOUNT

§ 1117 (a)

Trademarks

attorney s fees
ATTORNEY’S FEES
  • “EXCEPTIONAL CASES” ONLY
  • USUALLY MEANS WILLFUL INFRINGEMENT

§ 1117 (a)

Trademarks

destruction
DESTRUCTION
  • A NICE MEDIEVAL REMEDY
  • ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?]

§ 1118

Trademarks

defendant s remedies
DEFENDANT’S REMEDIES
  • ATTORNEY’S FEES IN EXCEPTIONAL CASES

§ 1117 (a)

  • ORDER TO CANCEL REGISTRATION

§ 1119

Trademarks