Introduction / Elvis Case

September 9, 2006
6:43 PM

I. Introduction
TOPICS TO BE COVERED IN CLASS

• Distinctiveness - How strong of an identity is a mark to a particular business.

• Functionality Doctrine - The intersection between trademark and patent law.
• The use requirements - In the US use of the trademark is required for it to be of
any value.
• The likelihood of confusion test - when are consumers likely to be confused.
• Dilution - if the power of a mark has become blurred
• The right of trademark enforceability (right of publicity)

II. Why we have trademark?

a. It’s more efficient to the consumer - instead of going in every time to
scrutinize. It is a relatively new argument.
b. Trademarks are intellectual property and its not fair for someone else to
profit. (Coca-Cola example).
We have to consider the rich meaning of trademark words. What does Coke
mean to the consumers (the ardent Coke drinkers)?
The NYPD and ENRON brands - meant something different 5 years ago than they
today.
Trademarks are not plenary rights - Delta. You are not going to mistakenly buy a
car wash when you go in to buy an airline tickets.
Why should Delta not e allowed to be the only company to use the word?
a. First amendment infringement.
b. People should be allowed to use the name to compare
products.
c. Minute Made example. It’s hard to communicate a product
or taste without being able to use the word.
We have to protect the right of the consumers.

Elvis Presley Enterprises, Inc. v. Capece (5th Cir. 1998)

Facts:

The court investigates whether there is a likelihood of confusion. The Court considers
the following factors:
A. The type of trademark - The court thought the Elvis brand was a strong trademark
but it did not go in favor of EPE. The court said that the strength of the brand does
not cancel in favor of EPE because of parody. The term velvet Elvis had a certain
type of meaning to it (60's retro-ness). The court thought velvet Elvis was a
parody.

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 B. Similarities of the service - the court found there was much difference between
the two. They restaurant at Graceland was a more family oriented restaurant. The
court found this went in favor of Capece because of parody
C. Similarity of the mark - the court found that the phrase velvet Elvis was
something different than Elvis. The court analyzed the whole term velvet Elvis as
against the term Elvis alone.
D. Intentions - Did Capece intend to trade off the velvet Elvis brand? The court
found they did not. The court found that because this was a parody (to make fun
of the 60's night club scene) there was no intent to trade off the Elvis brand.
E. Actual confusion - the most important factor - Courts are usually more impressed
by studies that show confusion. The court found that there was no confusion.
The two marks were co-existing for a while and there was no evidence of any
actual confusion.

Holding: They could keep the inside the same, but some things did have to change
because they were confusing: the advertisements. The parody did not cut in favor of
Capece in terms of advertisements. There was some actual confusion.

OTHER NOTES:
(1) Dilution - The lessening of the capacity of a famous mark. Was there blurring or
tarnishing of the mark?
(2) Tarnishment - When the mark becomes link to products of shabby quality.
(3) Blurring - the greatest show on earth v. the greatest show on earth.
The court found that there was not enough evidence of the tarnishment by Capece.
(4) RIGHT OF PUBLICITY - A State claim. A legal rule: the defendant has
appropriated another name and using it for their own purpose. The court found that this
was the case on the advertisement. Certain phrases traded off of Elvis' name or likeness
violating his right of publicity.

The 5th Circuit did not agree with the District Court on the infringement claim: Parody is
only a valid defense to trademark infringement when you have to use it. Capece did not
need to the use Elvis mark to have the club.
Read 49-68.

Recap & Distinctiveness

Wednesday, September 06, 2006
9:39 PM

The United States is a use-based system - You must use the trademark to get the right.
Most other countries are registration base- you need only register the trademark.

Types of marks:
(1) Trade marks
(2) Service marks
(3) Certification marks

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(4) Collective marks

Four classes of trademark protection:

1. Generic
2. Descriptive
3. Suggestive
4. Arbitrary or fanciful
Generic terms are not protected
Descriptive terms with secondary meaning are.

RECAP FROM LAST CLASS

• Why we have trademarks?
o Consumer efficiency
o Fairness
o Promote/Increase competition
• Have to be careful of the line where we start to harm competition
o Product quality - incentive to have good quality product and preserve good
will

• The trademark regime gives Judges have a lot of discretion in trademark cases. It
gives people an incentive to litigate because the standards are flexible, most of the
times.

Unfair Competition Claims

Any suite for trademark infringement, false advertising and false sponsorship, these
claims fall under unfair competition laws.

UC Claims are not really defined. In general they are very similar to trademark
infringement laws. In EU unfair competition laws are a lot more robust. In the US the
principle to caveat emptor - let t he buyer be ware - is a basis of US capitalism.

Two types of suites:

REGISTERED TRADEMARKS - Sec 32 of Lanham Act
UNREGISTERED TRADEMARK - Sec. 43 of Lanham Act

In the US you do not have to register a trademark to bring a suite. They are often called
unfair competition suites.

AP v. INS - the court found it was unfair for INS to profit off the hard work of AP.
You should always file a trademark infringement claim first but also an unfair
competition claim (this is good if it is disturbed by the equity and you can appeal to the
courts sense of fairness).

If you make a claim for unfair competition -

• It must not conflict with copy write laws

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 • It must not be in the public domain (ex. Cannot sue someone for using Beethoven
because it is in the public domain).
• It cannot be something that has long been around
o Descriptive terms need secondary meaning.
o Color - the supreme court said that anytime there is a color there has to be
secondary meaning because colors are too valuable.
o Fanciful terms do not need secondary meaning because they are unique
enough to the manufacturer ex. Orbitz.

Certain marks are not allowed to be registered if they are scandalous - the moral
component of trademarks and unfair competition.

CONSTITUTIONAL BASIS FOR TRADEMARK LAW

THE TRADEMARK CASES FROM TODAY'S READING

• The Supreme Court found that congress did not specify its actions well enough to
fall under the commerce clause and made the trademark laws unconstitutional.
• The government has two constitutional basis to regulate trademark:
o Commerce clause
• At the time the 1870 SC said that congress cannot regulate
interstate. That may be a little different today.
o IP clause
• The 1870 SC said it does not fit the test. p.5 - it must not be a
sudden invention. Has to be creative and intellectual discovery ex.
Light bulb inventor and not like Paris Hilton's THAT'S HOT
trademark.
o The SC said the trademark act of 1870 was unconstitutional.
o Read the two clauses and see if trademark falls under them. Should the
court have read them more broadly?

• We want to give people legal protection but not too much - to promote
competition.
o Ex. Music, generic form or patent drugs, parody or satire, to promote
social good (providing valuable service or information to the public).

DIFFERENCES BETWEEN COPYRIGHT - PATENT - TRADEMARK

COPYRIGHT
PATENT
TRADEMARK

------
--------------------
-------------

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(A) WHAT CAN BE PROTECTED?
Original works
Novel or non-obvious
Symbols or devices that distinguish goods.
(B) EXCLUDED
Ideas
Abstract ideas, products of nature
Marks that are not distinctive, functional

(C) LENGTH
Life + 70 years
20 years
Forever - as long as you use it

(D) ACQUISITION
Fixation
Registration at patent office
Use in commerce

(E) EXTENT OF RIGHTS

Exclusive right to make copies
Right to exclude others from making, using or selling invention
Right to prevent uses that are confusing to consumers.

TODAY'S READING - DISTINCTIVENESS

Definition - the strength of a mark - sets in the consumers mind a certain association with
a particular business or person that produced that mark.

Types of trademark
1. Arbitrary or fanciful - ex. Kodak - fanciful / Apple - arbitrary.
2. Suggestive - Coppertone - suggest rather than describe - requires a little
imagination to think what the product is.
3. Descriptive - identify a characteristic or quality of the product ex. Aloe or vision
center.
4. Generic - whole wheat

1 and 2 does not require secondary meaning; 3 and 4 requires secondary meaning.
1 and 2 are INHERENTLY DISTINCTIVE 3 can have ACQUIRED
DISTINCTIVENESS 4 can never acquire distinctiveness.
Always have to think in terms of not having any imagination to decide which category it
falls into.

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Supplement - trademark statute sec. 45 p.41-42.
Definition of trademark -

Distinctiveness Spectrum & Secondary Meaning / Generic Terms

Tuesday, September 12, 2006
8:47 AM

• Descriptive v. Distinctive
Descriptive - the one you don’t really want to use. Description of product or service.

Descending order of terms

1. Arbitrary/ fanciful e.g. Orbitz, Expedia
2. Suggestive
3. Descriptive - must prove secondary meaning
4. Generic - not entitled to protection at all. They are per se never protected.

Zatarain's v. Oak Grove

Facts: Z had a registered trademark in both fish-fry and chick-fry. Filed infringement
claim against OG. OG counter-sued to have the trademark cancelled because its not
suggestive.

Holding: The court held the CHICK FRY should be cancelled because it was merely
descriptive. The FISH FRI mark was entitled to "fair use".
They did not have CHICK FRI as long and did not spend as much on it.

**What evidence does the court look at to see if there is secondary meaning in CHICK-
FRY?
1. Conducted surveys - 23%
2. Advertising - 400k
3. Volume of sales - 20,000 cases These two tests hurt the little guy. Because they
don’t have the resources to spend as much on advertising etc.
4. Length and manner of use - Zatarain's has been around for a while.

Rules of thumb to use when deciding when a term is descriptive:

1. Competitive need
a. There were not many synonymous for fish and fry.
2. Imagination test
a. A descriptive mark does not really require imagination.
3. Dictionary definition
a. If the term describes something in the dictionary meaning then it falls
under the dictionary side of the test.
b. Not everything is there.
c. Want to look at what's your general market, which may have an industry
dictionary.

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 d. Example Window OS -
4. Evidence of actual use
a. Court found that a lot of people are already using the term.
b. Encourages litigation because if they had sued early on before other were
using it then there would be no evidence of actual use.
c. There is a game of a plastic fish in a pan fish called fish fry. Is it
descriptive or suggestive?
i. The dictionary definition should be matched to the description of the
actual product. The dictionary definition will not match so well. This is
one way to get it to be more suggestive.

• Restatement (Third) of unfair competition

• Lanham Act section 45

Abercrombie & Fitch Co. v. Hunting World, Inc.

Problem 2-4: Word Mark Distinctiveness

CITIBANK - when you look at it as a whole it is more suggestive than descriptive. You
should look at the term as a whole and not each word separately. (re: Filipino Yellow
Pages case). Citibank is not only found in cities.

AMERICA'S BEST CHEW - more suggestive.

ROACH MOTEL - more suggestive.

YOU'RE FIRED - more arbitrary or fanciful

THAT'S HOT - this is more suggestive because the dictionary test would not find that
this is about clothing. It takes a bit of imagination to know that this is about clothing.

IM - more generic since a lot of other companies use it to describe the service.

YOU HAVE MAIL - This is more generic or descriptive. Used by a lot of competitors.
There is not really any other way for companies to communicate that you have mail.

For Thursday think about whether color should be trademark-able.

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Source of Trademark Law/ Non-Verbal Marks
Thursday, September 14, 2006
9:49 AM

Sources of Trademark Law

1. Primary Source
a. Statutory
i. Lanham Act (1942)
b. International Treaties
c. State statutes

2. Secondary sources
Statutory
Case law
Restatements

Registering a trademark
I. PTO - if rejected...
II. TTAB - gives out public opinion. If rejected …
III. Federal Court
a. You can appeal a decision to Federal Circuit Court or your local District
Court.
b. The Federal Circuit is an appellate body and you cannot offer new
evidence.
i. Can appeal to Supreme Court
c. The District Court reviews de novo and can bring in new evidence.
i. Can appeal to local Circuit Court then to Supreme Court. (see
p.46 )

Key factors to registration:

• National customer notice
• Prima Facie evidence that your mark is distinct. - This was very important in the
Filipino Yellow Pages case. Because Filipino Yellow pages did not register they
had the burden of proving non-genericness. If it was registered, the burden would
have been on the competitor to prove.
• When things are more of a close call, the test is: whether the primary significance
of the trade name is of the type of goods being sold.

Examples:
1. E-Ticket - generic mark. Adding the E does not make it merely descriptive. The
E simply means electronic and if it was Electronic Ticket, this is generic because
there is no other way to really describe this type of service.

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 2. THAT'S HOT - suggestive or arbitrary/fanciful. Requires a thrust of the
imagination.

NON-VERBAL MARKS

Two Pesos v. Taco Cabana (The tradedress case)

Tradedress for Taco Cabana was a festive atmosphere with bright colors decorated with
artifacts, paintings and murals.

Tradedress - the total image of the business.

Holding - the court said the tradedress could be "inherently distinctive". It works just like
a word-mark so it should be protected.

Can we still keep the Abercrombie spectrum?

Phillip Bobbet - Constitutional Fate - Book on how to take exams.

Qualitex v. Jacobson Products (The Color Case)

Jacobson wants their gold-green pads to be protected.

No color was trademarkable, it had to have secondary meaning.

Types of arguments:
A. Prudential Argument
o Functionality Doctrine - as soon as we start protecting too many colors the
doctrine will step in and say they are have become functional and will not
be protected.
o Looks at the political and economic consequences.
o Congress, the people we elect, are the ones who are suppose to decide
these things.
B. Textual Argument
o Said the definition was broad and may include colors. They read symbol
and device very broadly.
o On the split side, one could say there is no color in the text.
C. Historical Argument
o The amendments to the Lanham act were seen as wanting to include
protection of colors.
D. Ethical
o If he spent all his time on it should he not be allowed to protect it. He put
a lot of had work into it.

**Can we trademark a smell of Manny's Pizzeria?

o Customer recognition

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Think about Walmart and Scalia' some tertium quid

Distinctiveness Cont'd
Thursday, September 21, 2006
9:45 AM

I. Recap of Typology of Legal Arguments

• Textual- The present meaning of the words of the article - Lanham Act.
• Historical - The meaning of the words according to those who drafted the article.
• Prudential - the probable effects - how is it going to impact people: smells should
not be trademarkeable because it would be too difficult for the courts to
distinguish between smells. Looks at the real world effects.
• Doctrinal - Asserts principles derived from precedent.
• Ethical - Judges are usually uncomfortable with this. Because of a particular idea
or principle embedded in American ethos, then they will rule a certain way…
example - should not be able to reap what you did not sow. Its just not fair. (basic
Judea-Christian values).
• Structural - this is about balancing the rights of the different branches of
government. (One of the trademark case says - Congress need to have express
authority if they are going to regulate interstate use of trademark, because that is
traditionally left to the states).

II. Difficulties in Applying Old Distinctiveness Tests to Product Design

• What is special about Zatarain's Jambalya?

o The colors, picture, script etc.
• Where does it fall on the Abercrombie spectrum?
o If you are trying to sell makeup in a black square box - that’s just generic
if it has no insignia etc.
o If you are selling lemon lime soda in a green can - generic cause everyone
sells lemon lime soda in green cans.
o When you look at the gofer-radio by itself you do not see the source of the
product. Its at best descriptive by its design. Its not suggestive or
arbitrary/fanciful.

• The 3d Cir. Test for product design [p.111]:

o Duraco Prod. test
1. Unusual & memorable
2. Conceptually separable from the product
3. Likely to serve primarily as a designator of origin.
o What happens if we apply this test to the penguin shape cocktail shaker
a. It is unusual and memorable

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 b. It is probably not conceptually separable from a cocktail shaker.
People who are looking at this for the time will probably identify
more what the product is and not who the maker is.
1. Is the product capable of serving as a signal of source by
itself (without advertising etc.)
III. SAMARA Case
a. You have to prove secondary meaning of product designs because designs
can never be inherently distinctive. Wal-Mart says product design
could never be inherently distinctive. This clashes with two Pesos,
which said the some tradedress is inherently distinctive.
b. "Some Tertium Quid" - have something that kind of seem like packaging
but not quite.
c. The rule of thumb when a court encounter 'some tertium quid' - err on the
side of caution which means labeling it a design.
IV. What about the collegeprowler.com website.
a. Its more a design (not inherently distinctive) than packaging.
b. Its more like the Wal-Mart clothing design - it is needs to acquire
secondary meaning.
c. It you want to argue that it is more like packaging you would talk about it
being like a store front, and compare it to Taco Cabaña. STQ jus like the
store front in two pesos - making it inherently distinctive like the store
front.
d. But, without College Prowler on the site would you be able to associate
the two.
e. Do readings for next class pay attention to Mortin case and problem 3.1.

V. Dastar Corp. v. Twentieth Century Fox

Normally when we looking at a trademark case what is being argues is passing off.
Reverse-passing off is when you take someone's product and try to pass it off as your
own. Fox used to own the rights to the product and argue that Dastar is passing it off as
their own. Dastar won. The court said it was not reverse passing because:
o The look to the Lahnam Act - look to origin/first creator of the
product. The first creator was Eisenhower, not FOX.
o The court looked at who the manufacturer is.
o The boundaries between copyright and trademark laws.
o Public domain
When TV series fall into the public domain FOX took it in and put in
under copyright law. But, there is a danger to allow them to trademark it
cause you can have trademark rights forever.
o Scalia thought if they ruled that there was reverse passing off it
would effectively overrule Samara. If we allowed that claim then Samara
could have said that they were the original creator, instead of the
manufacturer like Wal-Mart.
We know word mark can be protected, now we know sounds, smell and gopher radios
can be protected. Now let's look at the boundaries of trademark law.

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Introduction of Functionality
Tuesday, September 26, 2006
10:01 AM

• The functionality doctrine prevents trademark law from inhibiting legitimate

competition by allowing a producer to control a useful product feature.

I. Functionality - this is related to patent law.

• Remember the Qualitex case where they tried to trademark color.
• How did the court use functionality to say that color could be trademark?
o It was used as a safety valve.
• Functionality is common law (judge made).

In re Morton-Norwich Products, Inc.

• Issue: Whether the configuration of the container is functional and therefore
unregisterable, despite any de facto secondary meaning.
• Rule: A design that is functional will not get trademark protection.
• Application: The Court looked at three factors:
1. The existence of an expired utility patent which disclosed the utilitarian
advantage o the design is evidence that it was functional.
2. The originator of the design touts its utilitarian advantages through
advertising.
3. Are there available alternative designs.
4. The particular design results from a comparatively simple or cheap
method of manufacturing.

• Case in front of the CCPA (Circuit Court of Customs & Patent)

• PTO --> TTAB --> Dis. Or Fed. Cir.
ο MNP is contesting their TTAB decision.
ο CCPA agreed with the board that the design was not one of the best and it
was not functional.
• Defined functionality - something that's utilitarian - essential for
effective competition.
• Looked at whether other
a. manufacturers were using the design,
b. if there was a utility patent involved
c. The cost
d. Advertisements
ο Where does the court get its idea of functionality?
• Sets up a balance:

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  on one side we have patent law (purpose to protect new
and useful inventions to give inventors an incentive to
keep creating new products)
 on the other side we have trademark law (prevents
consumer confusion, fairness [reap what you sew],
efficiency, promotes competitions)
 TM Law harm competition when it prevents competition
• The utility patent - even if you have a patent, even if its expired,
its good evidence that the design you are trying to patent is
functional.
• Cost - if your way is the cheapest way to produce the product then
it will harm competition if you are allow to TM it and no one else
can use it.
• Advertisement - they were touting the functional advantage of
their product - they were saying its easy spray top nice easy
comfortable hold design. When you speak about the functional
aspects the courts may hold that against you.
• Availability of Alternative Design - the court said there were a lot
of alternative ways to design the product there was nothing special
about the grip design. The court was not limited to designs already
in the market place - they did look at competitors model but also
could think about alternative designs that are out there even if they
are not yet in use.
• Should they be allowed to think up alternative designs? Maybe...
not experts it’s a bit technical.
• Court found that Fantastic bottle was not functional therefore it
could not register the bottle under trademark. The court said it
should be remanded to determine distinctiveness.
• Distinctiveness is not the same as functionality -
 Something can be distinctive and still be functional.
• If a design is not functional and has secondary meaning it can be
protected.
• What if MN has sought tradedress protection of all spray bottles?
• Should I be able to register a heart shape box to sell candy in it if we were the
first?
o Everyone already uses them - use by competitor.
• Defining the market -
o The court defined the market as Baroque Silverware.
o You want a broad definition if your design is not functional.
• If Manny wants to trademark the smell is it functional?
o Yes - there are not many alternate design, many already use
o No - there are a lot of smells and its not unique.
o If you are Manny you want to show there are many other smells out there
for nice pizza. Also that its important for many to have this smell to
attract customers.
• What about the green Listerine?

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 o Competitor would say consumers like it because

• Post-it notes problem

o Define the market - people buying sticky notes.
o Competitors would want to make it smaller - mostly business women
buying canary yellow sticky notes.
o The OSHA regulation is important in aesthetic function analysis.
o Criteria listed in problem to consider for functionality:
• Cost
• Legibility - competitor would see we need canary yellow because
of it functionality - it’s the most legible. If you say consumer use
them mostly to flag pages then legibility is not as important.
• Shape - valid thing to look at but may not be that convincing.
• Aesthetic preference - its obvious that people like the color - but,
you would need a survey or some evidence to prove it.. The court
should not assume.
 ex. Pepto-Bismol tried to trademark their pink - court said
they need proof of aesthetic preference.
• Gender neutrality -

• Read Travis.

Functionality Doctrine
Thursday, September 28, 2006
9:50 AM

Qualitex Co. v. Jacobson Prods. Co., Inc. (1995) and Functionality Doctrine
• Rule: Another test is for functionality: The design to be protected is essential to
the use or purpose of the article OR it will impact the cost or quality of the
product.
o This is the traditional test. It does not consider the competitor's need.
• Issue: Whether the color pads are functional.

• The definition in the Brunswick case:

THE DESIGN MUST NOT EXCLUDE COMPETITION FROM A

SUBSTANTIAL MARKET

In a trademark case the moving party has the burden of proving that the design is non-
functional.
In trademark you have to show that there is no competitive harm.
Functionality is the balance between trademark and patent law.
The Tenth Circuit said: An expired patent cannot be protected by trademark. If the
configuration is a significant event of the configuration, such configuration enters the

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public domain regardless of functionality. The other Circuits disagreed. It was up to the
Supreme Court to decide in Traffix.

Traffix Devices v. Market Display

Proc His. - The District Court said there can be no trade dress protection. The 6th Cir. -
The Spring design could have trade-dress protection because there are alternative design
that could be used. The Supreme Court reversed the 6th Cir.
Issue: Are the spring design in the signs functional or non-functional.
Rule: (Test for functionality) Is the design essential to the use of purpose of impacts the
cost or quality? If functional, that not trademarkeable, however, patentability of the
product may be considered
Application: The springs make the sign work better. To use another design would
increase the cost of the product. The Court said that there was no need to look at
alternative designs.
The Court also looked at the mechanical functionality of the product and not the aesthetic
function. The Court said it was relevant that the design was patented - which is evidence
that it was functional.

AFTER TRAFFIX
After Traffix you only evaluate the competitive need if there is an aesthetic functionality
at issue.
If the Traffix test is unclear in a particular case then the competitive need may be used a a
secondary test for all cases.

VALU-Engineering, Inc. v. Rexnord Corp.

Completely Significant
a. Abandoned utility patent - since they filed one the evidence can be
used to show functionality
b. Advertising the utilitarian advantage of the product
c. Cost was cheaper with design.
d. [Limited number of other alternatives]

Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH

Said there alternative design should not be looked at. So they looked at essential to use
or purpose of the product or if the design affects cost or quality. They Court said that the
design was essential, but it could be designed other ways… but Supreme Court said not
to consider alternatives so the design is functional.

Abercrombie
Trying to protect their catalog and some of the word they use on the clothes as trade-dress
and also their store display.
On the catalog they were trying to protect -
a. usually naked people

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 b. Athletic
c. Collegiate white people
d. Thicker paper - Couger vellum
e. Special display
The Court applied the significant non-reputational disadvantage test
1. Competitive need
2. Available alternatives
1. Why did they use this test if Traffix said not to consider
alternatives?
a. They said there was not sufficient alternatives for
the use of the words "authentic" and "genuine".
The court said that as a whole the catalog should be protected. Also that there were other
ways to sell clothes without using exactly the same catalog - the catalog was deemed
non-functional.

Focus on problem 4-1 and 4-5 try to argue the Z used its mark as early as possible on
behalf of brother bill in 4-5.

A specific non-reputational disadvantage - 7th circuit test - look at whether a

functional feature is one that competitors would have to spend money to design around,
not to copy around. Something that is prohibitively expensive for competitors to design
around. Those things that are easy to design around would not be tripped up under the
functionality doctrine.
Traffix makes it unclear when and how to look at competitive analysis. Maybe as a
secondary test.

"Use" Requirements
Thursday, October 05, 2006
9:52 AM

Two requirements for trademark use:

I. Use as a Jurisdictional Prerequisite
II. Use as a Prerequisite for gaining rights
a. Totality of circumstances test
b. Tacking
c. Analogous use

In the United States, use is what activates your rights, not registration.
a. "Use in Commerce" - The Lanhman Act makes reference to use in
commerce because of the commerce clause in the constitution (section 34
of Lanham Act).
b. "Use in Commerce" - in 1870 is different from 2006. Almost any
use of trademark is going to satisfy the "use in commerce" part of the
Lanham Act requirement. If you use your trademark in a foreign country
it is somewhat good enough to satisfy the use in commerce requirement.

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 In the Monte Carlo case the advertised in NYC but the trademark was
registered overseas. Advertising in the United States can satisfy the
Lanham Act.
i. Pg. 43 in back of supplement. Definition of use in
commerce:
1. Use or display in sale or advertising
2. Rendered in commerce.
c. What do you need to do gain your rights in trademark?
i. Bona fide use in the ordinary course of trade. This is
subject to judge made law (common law).
Problem 4-1 Manly Moose Pizza
Advertising put consumers and competitors on notice. You do not need sale to trigger
use. Advertising alone also does not trigger use. Sale is highly persuasive. Have to take
the totality of the circumstances analysis. The court in Planetary Motion looked at the
Mendes test. Newspaper advertising reaches more consumers and competitors.

Planetary Motion
De minimis use may not establish trademark ownership rights.

The priority rule - the first person to use that trademark is the one who gets the rights to
it.

Tacking
Have to think about consumer confusion if the design is fundamentally different. It
would also discourage competitors. Would be creating too powerful of a right to
trademark.

Brookfield
West Coast
1986 The movie buff's movie store
1993 Software

1996 registers moviebuff.com

1997 Online database

1998 PR for moviebuff.com website

The court found that movie buff's movie store was too dissimilar from moviebuff.com.
They convey something different to the consumer. The court said West Coast could not
tack back all the way to 1986.
THE TEST: The trademark has to create the same continuing commercial
impression.
The court said it was only in 1997 when Brookfield used it as an online database not the
software use. It was not until West Coast did its PR move in 1998 that it established use.
Domain registration by itself is not good enough. E-mail correspondence to lawyers and
a few others was not public enough. It was too internal to trigger use.

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Analogous Use
Requirement - you have to identify the product with manufacturer.

US Mega
Brother Billy
Jan 2002 Superbowl commercials

Early Feb Selling CD's

Mid Feb2002 Selling Product

Three part test:

1. Open and notorious public use
2. Directed to the segment of the purchasing public for whom the services are
intended.
3. Sufficient to convey present or future availability
This is really about perception in the consumer market place. Intent to use does not
necessarily matter. Its all about consumers.
Why do we need this doctrine?
US Mega did never used NLIFE as a trademark before. This allows tacking back of
things that are not necessarily being used as a mark. If US Mega succeeds what happens?
Look at section 2-d. It would stop Brother Billy but it would not necessarily give US
mega trademark rights. They still have to establish use.

Read 4-11

Geographic Scope of Trademark Rights

Tuesday, October 17, 2006
1:41 PM

I. The Tea Rose Doctrine

II. The Effect of Geographical Limits on Registration
III. Foreign Use

Senior User & Junior User

• The rational behind the exception to the priority rule is that people are not going
to be confused.

• United Drug v. Theodore Rectanus Co.

o Ellen - Senior User - 1877 - Massachusetts - Sold to United Drugs
o Rectanus - Junior User - 1883 - Kentucky

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 o Good faith
• Rex was a nickname
• Had no intention to copy someone else's mark.
• Invested a lot in building up his good-will through priority.
o Rationale
• It would seem cruel to have a junior user end the good-will of
another person.
• Consumer confusion.
o Trademark is not a property right in gross
• Its not fair to give a senior user a right to estopped a junior user
that has built the name in good faith in another region.
o In general the good faith junior user can block the senior from coming into
the market.

• Zone of Natural Expansion

o Have to think about the product involved. In an inherently local business
it would not have much of a zone. If you are making air parts engine then
you would have a much wider zone of natural expansion.

• Hard Blues Lounge

o Chicago is senior user. San Fran is junior user.
o San Fran is a boni-fide good faith user.
o It's local because it’s a service not a good.
o T-shirts make the name not so local.
o Services are more localized than goods.
o The harm with the internet is that it may now result in people putting up
web pages of catchy slogans to get priority use.
• Dawn Donut
o As long as there is no likelihood of confusion then there is no real reason
to prevent use by a junior user.
o One conducted in wholesale while the other was retail.
o If Dawn Donut does expand then they could stop Hart's Food from using
that mark.

Foreign Use

Person's Co. Ltd. v. Christman

• The guy who went to Japan and stole the Person's name and brought it back to the
U.S.
• The territoriality rule - knowledge of use in a foreign country does not by itself
prevent you from sing a mark. Foreign use does not provide priority rights in the
United States.

Grupo Gigante

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A Mexican company started using the mark in 1962. the Dallo brothers started in 1991.
There was evidence of knowledge in the US of the use of the mark in evidence.
The Famous Mark Doctrine
Fame is an exception to the territoriality rule. It has to known to a substantial percentage
of the market - the concurrence suggests is 50%.
Secondary meaning was not enough because it would destroy the territoriality rule.
The Internet
Globalization
Travel
Reasons why this doctrine makes more sense in the modern era.

Think about why we have use requirement at all and think about pop up ads and Google
case. Are people actually being confused.

Likelihood of Confusion
Thursday, October 19, 2006
9:44 AM

• Evolution of Likelihood of Confusion Std.

o Borden Ice Cream v. Borden's Condensed Milk Co. (1912)
• Senior user Borden made an argument that people are likely to be
confused by this.
• They also said they were in direct competition because they sold a
malt type of ice cream. They actually sold ice cream to hospitals.
They sell the type of dairy products that people would think they
are in the ice cream business.
• The court rejected this saying that they were not in direct
competition because the products were not the same.
• The court was disregarded the effect on consumer and said the
issue whether or not there was a cognizable harm to the senior
user's use. They did not think the senior user would be harmed
because unless there is direct competition in the same product there
really is not any harm to the good will of the senior user.
• Bridging the gap - if there senior user could show that they
eventually intend to bridge the gap and sell ice cream in the future.
The Court rejected this bridging the gap the rule because the court
will not speculate to what the business will do in the future. This
would stifle innovation and competition. The law is based on acts
and not intentions.
• The said its too speculative to award damages.
o Fleischmann Distilling Corp. v. Maier Brewing Co. (1963)
• The Black & White whiskey case.
• The Borden court would have found in favor of Maier - because
Whiskey and Beer is different.

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 • The Fleischmann court however held that both were similar
because they were both alcoholic beverages, they may be
marketing to the same customers. They made a textual argument
that the Lanham Act has changed - the modern day language is that
the Act prohibits sale that is likely to be confusing to consumer,
even without the same descriptive quality.
• This court focused on consumers and whether they would be
confused by the use.
• It started to become less of a personal property right and more of a
general public right.
• The court also spoke about intent (of the defendant) - the court
believed they named it Black & White to be able to profit off the
plaintiff's good will.
• Why is this important if this is supposed to be about consumer
confusion?
 If someone does this they are probably doing it to confuse
consumers.
• What is the harm here?
 Dilution - the power of the Black & White whiskey mark is
weekend.

Use Requirement
a. Use as Promotion
b. Use as Source Identifier
c. Use as Competition
• Google Inc. v. American Blind and Wallpaper Factory (2005)
o Should Google be liable for trademark infringement because of confusing
link the show up in its search results?
• Google plays a part because they get paid.

• Holiday Inn case

o Defendant used the 1800 Holiday number by putting a zero instead of 'O'
o They argued that they didn’t actually used it because they never promoted
the number.
o Rule - The Court looked at use as promotion. There was no use
because there was no promotion.
o The travel agency did not promote its number.
• 1800 CONTACTS case - The pop-up cases
o Sued the pop-up add manufacturer.
o Rule - The Court said use has to be as a source identifier… the use of
a trademark has to falsely identify the source of that product.
o Without use there is not likelihood of confusion test.

• Bosley Medical v. Kremer (2005)

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 o There has to be some sort of commercial use of the park. He was simply
posting his problems with Bosley Medical. This was not seen as
competition.
o There were no direct links to competitors (there was indirect links) - this
was not sufficient to establish competition.
o There has to be real competition between the plaintiff and the defendant
before there can be use.

• Why have a use requirement?

o The statute said there has to be use in commerce.
o We don’t define use by in commerce for the most part. We just define use
itself.

• The likelihood of confusion is incredibly factual intensive which is why the court
looks to use first before going there and if there is no use they will not have to get
to the confusion issue.

• The confusion standard - the court employs a lot of test.

o What the cognitive abilities of consumers are, acceptable marketing
practices and the type of society we want?

Likelihood of Confusion
Tuesday, October 24, 2006
9:45 AM

• Recap of Unauthorized Use Requirement

• Likelihood of Confusion Factors
o Mark Strength
o Similarity of Marks
o Intent

Unauthorized Use
Two issues:
a. Junior user's use of the mark is unauthorized
b. Junior user's use of the mark is likely to cause confusion
1. Think about what sort of definition of use would I like? Does it make sense under
trademark law and likelihood of confusion test?

Defining use:
What Google does is infringing use. But its only what we see (a visible source
identifier) therefore Google gets off free.
• Bosley Case - says the use must somehow be commercial.
• How does this fit in the goal of trademark law?

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 o Me selling knock off Nike shoes and me standing outside Nike store
handing out fliers for my own brand of shoes. The law is in between these
two extremes.

Virgin Enterprise v. Nawab (2003)

• Virgin did not sell cell phones
• Nawab sold cell phones
• Virgin cell wireless products in England and say they are getting ready to sell
them in the United States. This meets the bridging the gap requirement.
• Factors the court thought were not relevant in Nawab:
o Good or bad faith - Intent
• It doesn’t have to do with the confusion of the consumer.
• Intent could be used for remedy to punish bad actors more than
innocent actors who are just negligence.
o Quality of the junior users product
• Went more towards hurting the mark, making it less powerful in
the future - Dilution.
• Not affect confusion of the consumer.
• Mark strength
o Said the Virgin's mark was inherently distinctive and had acquired
secondary meaning.
• Inherent distinction - fit into the Abercrombie spectrum. It was
an arbitrary mark that is inherently distinctive. Virgin has nothing
to do with running an airline.
• Defendant's are more likely to steal arbitrary marks because they
have such signaling power.
• Acquired distinctiveness
 Virgin had secondary meaning because of its worldwide
famousness.
 Marks that are famous are stronger and therefore there is
greater likelihood of confusion.
• Counter argument is that marks that are famous should then lend to less
confusion.
• Mark Similarities
o In favor of Virgin
o Nawab said they used different type font and color
o Court didn’t buy it.
o Virgin is just Virgin on the radio
o Based on how people learn about trademark from word of mouth.. They
just say Virgin they don’t describe Virgin.
• Actual confusion -
o There was testimony from guy in in mall who ran a kiosk for Nawab and
he said people were actually confused
• Sophistication of consumers - people purchasing cell phones took more care than
the average grocery store consumer. It was neutral.
o We make decisions in two ways

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 • Affective decision making - decision based more on emotions.
How do we feel about the particular brand. We most often use
affective decision. We have a warm feeling about snickers we will
buy it.
• Attributional decision - looking at cost benefit analysis a more
thoughtful decision about what to buy.

All the Circuit Court pretty much look for the following factors:
1. Actual Confusion:
The evidence they look for is:
a. consumer surveys
b. Sophistication of consumers- Anecdotal evidence - someone on the
ground saying yes people are confused.
2. Intent
a. Did they intend to confuse
3. Market Factors
a. The strength of the senior user's mark
b. The similarities of the senior and junior mark.

Supplement 103-104
Kellogg, Toucan Golf (2003)
Actual confusion - there was no actual confusion because the birds were very different.

Likelihood of Confusion fact patter hand out.

Factors:
Degree of Similarities
Quality of product
Mark strength
Intent
Proximate - bridging the gap.
Actual
Confusion
Sophistication of consumers

Confusion on the Internet/ Store Brands

Thursday, October 26, 2006
9:48 AM

I. Finishing Confusion Factors

a. Relatedness of goods
b. Actual confusion
c. Consumer sophistication
II. Confusion on the Internet
III. "Store" Brands
IV. Promotional Goods

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The Polaroid factors test for likelihood of confusion is very flexible - the court goes
through the factors and see if more of these factors tip in one way or another:
1. Strength of senior mark
a. GALLO is a stronger mark.
2. Proximity/relatedness of good
a. Both are selling wine --> cuts in favor of GALLO
b. They compete directly and the marks are similar - this is enough for the
6th Circuit to say that there is likelihood of confusion.
3. Similarity of marks
a. goes in favor of GULLO
4. Evidence of actual confusion
a. goes in favor of GULLO
i. The sample pool was very small
ii. Can't just survey anyone - have to find an appropriate universe
iii. Must have an accurate control in the survey.
iv. Survey does not accurately replicate real world shopping
conditions.
v. Attack the expert's credentials - how do they know etc.
5. Convergence of marketing channels
a. The are both advertising on the radio. The $45 wine probably will not be
sold in the same store. - GALLO
6. Type of goods/ consumer 'degree of care'
a. GULLO - people who are buying expensive wine are a bit more
sophisticated buyers of wine. The court said its pretty much an impulse
product with a low degree of sophistication.
7. Intent
a. GULLO
8. Likelihood of expansion
a. GALLO'S favor. Was interested in expanding to the fine wine market.

Brennan's v. Terrence Brennan's Steak & Chop House in New York

• Are people likely to think of a brand by its whole name or more simply by a
shorter version of the name.
• The general rule:
o We need to look at similarities of mark as consumers conceive it.
o The anti-dissection principle only holds so far as how consumers will see
the mark.
o Should think about how consumer conceive things before applying the
anti-dissection mark principle.

Confusion on Internet
GoTo.com, Inc. v. Walt Disney Company
• Only three of the factors were important on the web:
1. Proximity/relatedness of goods
2. Similarity of the marks

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 3. Convergence of marketing channels

• On the web we see marks side-by-side.

• Ex. Getting sued by own law school

o Both websites are pretty similar - lsu.law.com / law.lsu.edu
• The mark is not distinctive itself but it has acquired a lot of
distinctiveness.
o Intent
• Was it a money maker or was it just an informational website.

Likelihood of Confusion- Initial Interest

Tuesday, October 31, 2006
9:46 AM

I. Private Label Selling

II. "Initial Interest" Confusion
III. Post-Sale Confusion

• PTO rulings on trademark are not binding precedent on the Court.

• Private Label Selling / Store Brand
• Problem 7-5 Vaseline case p.511
o Similarities of Marks - Vaseline
o Relatedness of good - Vaseline
o Channels of marketing - Vaseline
o Mark strength of senior mark - Vaseline
o Intent - Vaseline
o Consumer sophistication - Store brand

• The alternative argument:

o We only have a general impression because they are side by side and there
may actually not be confusion.
o "Compare and save" - shows that they are not the same brand
o Kellogg's will not sue Tops because they are a distributor of the cereal and
they would not want to make enemies with them.

• Initial Interest Confusion & Post-Sale Confusion

a. Others appropriates the good will of the senior user.
b. Is the intent of the store brand to confuse consumers or is it just to give
consumers a choice to spend less for a similar brand.
c. On the one hand there is a need to protect the senior user and on the other
hand there is need to promote competition.
d. How likely are they to be confused post-sale i.e. would they have to
purchase the product before realizing it is not the same.

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Brookfield Communications, Inc. v. West Coast Ent. Corp. (1999) - Initial Interest

• The court found that there was some confusion - being distracted on the web is
similar to a "bait and switch". Court gave Blockbuster analogy - telling people to
get off at exit 7 for Movie Buff when it is really at exit 8 and Blockbuster is at
exit 7.
• Court found that there is initial interest confusion because West Coast used
moviebuff.com to divert people from looking for moviebuff to its website and
they improperly benefit from the goodwill that Brookfield developed in its mark.

Playboy Enterprise, Inc. v. Netscape Communications Corp. (2004)

• Netscape search engine brought up competing banners that were not labeled when
people searched for playboy or playmate.
• The court focused on the Intent factor - Netscape profited from it, they failed to
take precautions to prevent confusion. Customer sophistication was in favor of
playboy because people search for such materials were easily diverted.
• The likelihood of confusion test adapts over times with how society changes.

Use v. Likelihood of confusion

• Use is dispositive - if there is no use then there is no trademark infringement.

Post-sale confusion
We are not worried so much about people buying things at check out its confusion down
the road that this deals with.

Ferrari v. Roberts (1992)

The concern is that the kit cars will make Ferrari a more common looking car and people
will no longer see them as being all that exclusive. The marks are being weakened -
dilution is the remedy for this. But there is not much confusion. Do we want to protect
the value of trademarks in their exclusivity that makes people pay so much?

Contributory & Vicarious Liability

Wednesday, November 01, 2006
9:14 PM

I. Finish up Confusion Away from Point of Sale

II. Secondary Liability
a. Vicarious Liability
b. Contributory Liability
c. Grokster

Confusion away from point of sale

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 a. Even if it does not lead to a mistake in purchase there is still some
cognizable injury - initial interest confusion--> the momentary confusion
is enough to have a claim for trademark infringement.

Post sale confusion

a. Ferrari case
i. There is no point of sale confusion but the court was
worried about confusion after the fact.
ii. People would see all these Ferraris on the road and think
they are no longer so exclusive. But, do we want to have
trademark protect against the exclusive nature of trademark.
iii. People would think that the quality is not so great if they
saw one of these cars in the stream of commerce somewhere and
mistake it for a Ferrari.
1. This reason is somewhat more acceptable for
recognizing post sale confusion.
Secondary liability
There are two types of secondary infringement:
1. Vicarious
2. Contributory
• Vicarious liability [More of a social insurance component of infringement
liability]
o Because of a particular relationship, the principal in that relationship is
going to be responsible for the actions of the agent (ex. Agency Theory -
Principal & Agent / Master & Servant)
• The employer has a responsibility to supervisor and can be held
liable even if they had no knowledge.
• Induces the employer to supervise and allows the plaintiff to go
after the deeper pocket --> a social insurance policy.
o NO KNOWLEDGE OF THE TORTIOUS ACT IS REQUIRED
o There has to be some direct financial benefit from the infringement.
• Contributory liability - [More of a moral component of infringement
liability]
o A substantial/material contribution
• The accused secondary infringer has to do something that
contributes to the infringement.
• Ex. You offer the machinery that does the infringing or the
advertising service.
o There has to be knowledge
• You have to know or should have known that the infringement was
taking place.
• These are judge made laws and are not in any statute.
• Example:
o An ad agency that prepares ads for infringing products such as Nike.
o They have some sort of knowledge since Nike is such a famous brand.

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 o Since they are printing then they are substantially contributing to the
fraud.

o Yao Ming advertises for an infringing product. Yao cannot be held

liable even though he is rich the company who hires him is the principal
agent so there is no special relationship. Yao cannot be held vicariously
liable. But, he can be held contributorily liable, even though he is an
employee of a large company. He substantially contributed to the
infringement and he had knowledge of the infringement.

Coca-Cola v. Snow Crest

Snow Crest was selling there Cola to bars. The bars sold the Cola as Coca-Cola. The
bars were the direct infringers and Snow Crest was the indirect infringement.
The court look at knowledge this way:
1. Intentionally - efforts to make someone infringe OR
2. Reasonable person standard - when is it reasonable to know
i. If you usually you supplied 10 cases a month and all of a
sudden your sale spike - this should be taken as a signal that
something is going on.
1. Yao Ming would have met the reasonable person
standard for knowledge.

Inwood Laboratories, Inc. v. Ives Laboratories, Inc. (1982)

Facts:
• Ives received patent from 1955-1972 to market drug which was trademarked
under CYCLOPASMOL.
• After the patent expired Inwood and others intentionally copied the appearance
and dosage of the capsules.
• The manufacturer of a generic product was indirectly infringing off Ives capsules.

• The pharmacist are the direct infringers and the distributor is the indirect
infringer.
• The argument was that the generic manufacturers where sending out trade
materials advertising their product and this induced the pharmacist to swap the
capsules.
• There was no evidence that they intentionally told them to swap or that they knew
what was going on but they inferred it.
• The Second Circuit looks at factors to establish knowledge:
o Inferred knowledge from the fact that people will cheat if they are given
the opportunity to do so.
• Court said there can be contributory liability when:
o There is inducement
o When the manufacture continues to supply to one who it knows or has
reason to know is engaging in trademark infringement.

29
 o Said society has an incentive to encourage the production of
encouragement - prevent customer confusion.
• The court said if it is willful blindness can lead to an inference of knowledge.

Dilution
Tuesday, November 07, 2006
9:48 AM

I. Origins of Dilution
II. Victoria Secret & TBRA
III. The Fame Requirement

• If no one is being confused then what is the danger in using the senior user's
mark?
o The dilution doctrine treats the mark more as a piece of property and the
interest of the mark holder is what is being protected.
o 2 types of dilution - blurring & tarnishment
o Does it protect the public as well?
• People get emotionally attached to a trademarks.
• Efficiency argument - if there is one Tony the tiger people can
associate it with the cereal and not with 10 other things.
• It becomes embedded in our language example Google.
o People should not reap where they have not sowed.
• Elements of Dilution
o Fame
o Actual dilution (v. likelihood of dilution)
• Impairing distinctiveness - blurring
• Harming reputation - tarnishment
o Similarities of the mark
• Court say - there has to be some mental association between the mark holders use
of the mark and the defendant's use.
• How does the court define dilution.
o Requiring evidence of product-driven diversion --> same as likelihood of
confusion.
o The presumed dilution when the marks are similar enough.
• Is seeing two identical marks really going to cause dilution?
o Contextual factors
• Similarities of the mark
• Products
• Consumer sophistication
• Intent
• The fame of the senior mark.
• On the EXAM have to show how dilution is different from likelihood of
confusion. Have to go through and prove the contextual factors. Have to show
evidence of lessening the value of the mark.

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VICTORIA'S SECRET CASE

• The Supreme Court said there has to be actual dilution for a successful claim
because:
o A mental association doesn’t necessarily mean there is going to be
economic harm to the plaintiff
• Whatever negative feelings people had - they were directed at the
infringer and not at the good senior mark.
o The court made a textual argument -
• There has to be actual lessening of the capacity of the mark… it
also says likelihood of confusion and likelihood of dilution is not
enough for successful dilution claim.
• Congress would have said so if they wanted that.
o The court said a successful claim can get injunctive relief.
• Unless there is proof of willful intent to dilute then you cannot get
damages.
• If you are trying to proof dilution in a court what sort of evidence might be
relevant?
o Survey evidence
o Similarity of the marks
o Intent etc. --> the contextual factors.
o The court says you have to have actual dilution but you can use
circumstantial evidence.
• The Tea Rose Doctrine would not have helped in this case. It if from the Rectanus
case.
• 1877 Regis - Mass.
• 1883 Doc. Rectanus - Kent.
• 1913 - Regis - Kent --> see doc using the mark in Kentucky.
• Court said when you are a good faith junior user in a geographically remote area
you cannot be sued for infringement.
• Doesn’t help because Star Market was the senior user so they could not use the
Tea Rose doctrine to block Texaco. Tea Rose doctrine is to help the good faith
junior user.

CHANGES IN THE STATUTE REGARDING DILUTION

• Likelihood of Dilution --> The new statute says likelihood of dilution if now
OK
• Tarnishment --> Now a valid reason for filing dilution claim.

• What are the limiting factor which means that every mark holder can sue for
dilution?
o Has to be a FAMOUS mark --> higher threshold than distinctiveness.

Star Market v. Texaco, Inc.

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 • Fame in Hawaii alone was not sufficient because being famous in one small
geographic area was not enough to prevent the use of the mark by other
elsewhere. It had to be a national fame. The court said no one has construed
famous as being for one state alone - doctrinal argument.
• Star Markets did not register the mark federally, only state wide.
• Because other people use stars etc. in their mark then this particular mark is not
that famous.
• The have to be famous before the alleged infringing use before you can bring a
claim. If your fame came only after someone else has used the mark you have no
case.

• Page 113-114 is the new law of dilution.

Forms of Dilution
Tuesday, November 07, 2006
11:08 AM

I. Tarnishment
II. Blurring
III. Dilution in the Registration Context

Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) Find Case on Westlaw or Lexis

Two main types of dilution:

1. Tarnishment
2. Blurring

Nissan clip about Uzi Nissan and Nissan Motors.

o Who is the more sympathetic? Nissan or Ms. Sambucks…
Sambucks had not used her maiden name since 1993 and it was the same
line of business.
o Is there any other harm besides the initial interest confusion?
• There is a blurring that comes up - if you have Nissan
everything then there is going to be a wildling away of the strength
of that mark.
• You may not buy the wrong thing but it will take longer.
• The District Court found dilution at least for the automotive
links he had on his website. He would make them pay each time it
was clicked on.

Tarnishment
• 2 cases form Toys R' US
• Toys R Us sued both companies for dilution. There were successful against
Adults R Us but not against Guns are Us.

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 • How is tarnishment defined?
o The similarities between two marks that harms the reputation of the
famous mark.
• The reputation of Toys R Us is wholeness (good).
 What kind of advertising ads they had.
 Where they actually advertised.
 Have witnesses, do a survey, brand expert etc.
o There has to be an association. So how did the court go about saying that
Adults R Us triggered an association of Toys R Us.
o The disparagement or diminishing of the mark.
• In GunareUs.com the court said domain names are less likely trigger dilution
because
o Consumer expectations of domain name are different. They are less likely
to form that association…. Its different than having a store sign up.
o They also spoke about who was actually likely to use gunsareus.com. The
gun dealers are the ones using the gun site and they are mostly sold in
Massachusetts. Only people in that limited geographic area are going to
the site so there is less likelihood of an association in the mind of the
consumer.

• What is the reputation of the Pink Diva's (XXX) Club that is being protected?
o The statute does not say anything about morality. It only says damage
reputation.
o The doctrinal argument is that every case is about porn or alcohol or drugs
etc. Therefore it would be hard to find a rape counseling service guilty of
infringement.
o But, should the court regulate morality.

The exceptions for dilution:

Comparative commercial advertising… when the commercial entity is a competitor then
the court is a little less sympathetic. Has to be an unadulterated use of the competitors
mark.
Have to think about who is doing it…. There less is respect for satyr and parody.

Have to remember that federal dilution law does not pre-empt state dilution law.

Dilution & Cyber Squatting

Tuesday, November 14, 2006
9:49 AM

I. Dilution & Cyber-squatting

II. The ACPA
a. Commercial Use
b. Bad Faith

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 c. Gripe Sites

Problems with cyber squatting?

o Protect consumers from the type of confusion that will arise.
Consumers will be re routed to other sites when they are trying to get to
another site.
• What do you have to do to register a domain name?
o Just have to pay a small fee and acknowledge that you are not registering a
name that is already in use and they registrar will check to make sure it is
not particularly offensive.

Panavision International v. Toeppen (1998)

• Toeppen had no spiritual connection to the city. The court thought he was just
engaging in some extortion of Panavision.
• For dilution cause of action you have to show:
o Commercial use of the mark
• The internet is almost always use in commerce.
o Have to show bad faith
• What was his intent - to sell the mark to the trademark holder. His
history paid a factor - he did it with Delta and other mark - taking
them and extorting them for money.
o Dilution - blurring or tarnishing
• The court said the traditional definition was not necessary - but
infer that the existence of the website weakens the strength of the
mark. The purpose of the domain name is to identify the entity
that owns that trademark.
• Toeppen said a domain name is just an address and it is not being used in
commerce.
• The court said he is acting as a spoiler - it had a real commercial impact on
Panavision and this was sufficient to satisfy commercial use.
• (In general the courts will find that the use on the internet is use in commerce).
• Policy argument - the court does not want to put the trademark holder at the
mercy of the domain name holder - this is expanding what dilution means.
• In Rem - you can sue the domain name itself and have the court make the remedy
of transferring the domain name to you.
• Type of relief:
o You can only get injunctive relief.
o Under the ACPA -
• You can get statutory damages (don’t have to prove damages) p.
31 Supp.
• The domain name
• Congress pass the ACPA because injunctive relief alone may not be enough to
stop cyber-squatting.
• What do you have to do for a cause of action under the ACPA?
o Registration of domain name
o Identical to a mark

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 o Bad faith intent to profit
o Mark has to be distinctive or famous

• Sporty's Farm v. Sportsman's Market (2000)

• People for the Ethical Treatment of Animals v. Doughney (2001)

• PETA sued Doughney for infringement and cyber squatting.

• The court found the people where likely to be confused by Doughney use of the
PETA.org.
• Doughney's defense was that this was just a parody and there should be no
infringement.
• The court did not agree that there was parody.
o The court looked at how people are going to see the domain name.
Though the site might be neurotic the website itself does not show the
joke.

Lamparello v. Falwell (2005)

• Likelihood of Confusion Claim -

o The court did not recognize the initial interest confusion doctrine. They
said it was obviously a critical site therefore people are not likely to be
confused.

• Cyber Squatting Claim -

o The courts have found that gripe sites are not infringement ex.
UBLawsucks.com --> only a gripe site.

Fair Use/First Sale Defense

Thursday, November 16, 2006
9:49 AM

I. Fair Use Defense

a. Rationale & Requirements
b. Classic Fair Use
c. Nominative Fair use
II. First Sale Defense

RG Smith v. Chanel, Inc. (1968)

• Defendant was using the Chanel brand to compare their own product - Second
Chance.
• They were not saying we are selling Chanel No.5, they were saying our product is
comparable to Chanel No.5.

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 • The court did not want to simply protect the emotional value of brands. The
Court saw an advantage to allowing the defendant to use the trademark to
promote his brand because of its benefit to society.
• Example FISH FRI & FISH FRY - the court said this is fair use because how else
is other company going to be able to describe their product. That was the fair use
defense.
• For a successful fair use defense do we need to show that no one is confused by
what we are doing?
o NO!
o In the Micro Color Case the Supreme Court said there can be a little
confusion and there is still fair-use.
• The classic fair-use defense is on 1115 Section 4
• Have to show:
o The mark is being used in its primary descriptive sense
o Good Faith
o Cant use it otherwise than as a mark
• If the mark is incontestable you still have to prove that what the defendant is
doing is confusing.

KP Marketing says:
o If you are using the mark in its descriptive sense then people
should not be confused. But if people are confused then maybe its not
descriptive but the signaling power is being used.
o You don’t have to show an absence of confusion but it is still
relevant.

NOMINATIVE FAIR USE

Not using the mark in its primary descriptive sense but you are using it to refer to
the plaintiff's brand. e.g. when you use KFC brand or Chanel No.5.

Jardine case:
• Jardine was one of the original member of the band but he did not own control of
the mark. They could not work together anymore so they created a separate
organization that would own the mark.
• Jardine's defense was fair use.
• He was performing under the name Beach Boys Family and Friends.
• The court looked for the classic fair use and said it was not there:
o Court said it was not being used in its primary descriptive sense.
o The classic fair use defense is designed to protect language from being
locked up e.g. Fish-Fry … so that defense doesn’t work.
o He is not describing boy's on the beach.
• The court looked at nominative fair-use:
o Factors:
1. The product must not be readily identifiable without use of the
trademark.
 This was satisfied.

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 2. Defendant must use only minimum amount of the mark.
 This was satisfied.
3. Junior user must not suggest sponsorship or endorsement by
plaintiff.
 This was not satisfied.
 There was confusion.
• Classic fair use pays less attention on confusion than nominative fair use.

Half Price Books v. Barns & Noble Case

• First have to ask whether the books are actually half price.
• Barnes & Noble should use the classic fair use defense because they are using the
half price books in its descriptive sense.
• For good faith you would have to look if Barnes & Noble used it to suck in Half
Price Books customers.

Problem 9-1
Playboy Case
• Defendant is using the term playboy and playmate.
• The defendant uses the following:
a. Metatags
b. Masthead on top of Website
c. PMOY '81 as wallpaper
• This is a case of nominative fair use.
• If you looked up playmate in the dictionary it might say a friend that you play
with. This is not the meaning that she was trying to convey here.
• If this was a case only about the likelihood of confusion she would get smoked.
o Similarity of the mark
o Sophistication of the user
o Similarity of the goods or service.
• So she needs the nominative fair use test.
o She satisfies the three prong test on the mastheads
o The Metatags
• The court said people should be able to use terms like playboy and
playmate if they want to find a playmate for a particular year.
• It is more than what is necessary to identify her as playmate '81.
• So, the court found that she didn’t satisfy nominative fair use
because of the wallpaper.
• Must look at each use distinctly and analyze each separately.
• Playboy then tried to sue her for dilution.
o Nominative use do not dilute trademark.
o She is referring back to the original mark of playboy.
o Since the mark has to be famous for dilution PMOY is not a famous mark.
o She would beat the dilution claim.

• FIRST SALE DEFENSE

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Parody
Thursday, November 16, 2006
11:12 AM

I. Parody: Introduction & Rational

II. Parody Rules of Thumb
a. Title
b. Choice of medium
c. Parody vs. Satire
d. Commercial vs. Noncommercial

Parody Problem 9-5 "Diary Queens" p.755

• They are only using a similar name they are not using anything else associated
with Diary Queen. There are not selling ice cream or anything of the sort, they
are not using any mark similar to the Diary Queen mark. They use this to show
that there is no confusion.
• But, if Diary Queens have no relevance to the movie then they fails the first prong
of the Rogers test.

Rogers v. Grimaldi
Rogers Test:
1. No artistic relevance to the underlying work whatsoever.
2. Some relevance, but explicitly misleads to the source or the
content of the work.
i. There is nothing in the Dairy Queens movie that is
EXPLICITYLY misleading.
The Rogers test only applies to the title.

Anheuser-Busch v. Balducci Publications

• The Court did not consider the survey study to be strong evidence of confusion
because this is a parody case and first amendment trumps that trademark
protection.

Have to look at the strength of the mark

Similarity
Sophistication of the consumer

Maybe if the Disney example was in a child's magazine then it is more likely to be
confusing.

Parody - Self referential - use the mark to mock the product itself. The mark is the target
of your joke.
Satire - using the mark to mock a social condition. It uses the mark to get the point
across but it is not essential.

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Court are more likely to find satire more objectionable - it is not essential for the user to
use the mark.

The court said dilution more dangerous to free speech than infringement cases because
there is less or no likelihood of confusion.
The Barbie song will now become associated with the Barbie doll and that is blurring.
They court also said that this image of Barbie is not good for young girls and that’s
tarnishing.

Aberzombie - they are selling t-shirt… the mark is very close. Certainly more parody
because it is commenting directly on Abercrombie.

Problem 11-2
Think about it as buffalo bulls sports team they won and the UB president wants to
promote the image of the team. Does he have a right to use this image or should he get
permission.

I represent that star football player.

False Endorsement and Right of Publicity

Monday, November 27, 2006
2:43 PM

I. Lanham Act Claims

a. False Endorsement
b. False Attribution
[Both require likelihood of confusion factors]
II. Right of Publicity
a. Rationale for
b. Statutory vs. Common Law

Likelihood of confusion factors

1. Strength of plaintiff's mark
2. Relatedness of goods
3. Similarity of marks
4. Evidence of actual confusion
5. Marketing channel used
6. Consumer sophistication
7. Defendant's intent in selecting mark
8. Likelihood of expansion

• Why should the athletes have rights over their own image?
o The worked hard to develop their image.
o This seems to be a moral argument.

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False Endorsement

Waits v. Frito-Lay, Inc. (1993)

Facts:
Waits is a professional artiste of some renown. Frito-Lay makes chips and their
advertising agency is Tracy Locke Inc. The agency used an imitation of Waits' song Step
Right Up in one of their commercial for a new product. Waits sued for right of publicity
violation and won jury trial.
Issue:
Whether false endorsement claims are properly cognizable under 43a.
Rule:
Yes. The amended language codifies the case law interpreting 43a to include false
endorsement claims.

Court cites other cases - doctrinal argument.

Court said that it was
Does it fall under the Lanham Act? YES
Symbol or device can be construed very broadly and can include someone's voice
- therefore it falls under the Lanham Act.
• Then the court look at the likelihood of confusion test.
• Have to tweak the first 3 factors to fit into false endorsement claim.
o The level of recognition that the plaintiff's have to a certain segment of
society.
o The relatedness of the fame of the plaintiff to the product.
o The similar of the likeness used by the defendant to the likeness of the
plaintiff.

• If they are simply using the pictures of the surfers then the marks are actually
similar.
• Tiger Woods' Photos - selling pictures of Tiger Woods.
o Title could be confusing - may think he was endorsing the photos.
o But, just taking a picture of Tiger Woods is not.

Stephen King v. Innovation Books

• Stephen King was upset about the possessory credit and the based upon credit.
• The movie was entitled - Stephen King's The Lawnmower Man.
• The court said likelihood of confusion was not necessary because the possessory
credit was false on its face.

• The statutory and common law and they are not mutually exclusive. NY has both.

Right of Publicity
Thursday, November 30, 2006
9:48 AM

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 I. Vanna White Case - What is an Appropriation?
II. Balancing Rt. Of Publicity with 1st Amendment
a. Transformation Test
b. Predominant Use Test

What is need for a Right of Publicity Claim?

1. Use of Identity
2. Appropriation of Identity
3. Lack of Consent
4. Injury - Commercial Value

Vanna White Case

• The court said the robot did not fall under the characteristics of name or likeness.
• Common law is construed more broadly than statute.
• The injury is:
o Well if they are allowed to continue then everyone else may simply start
to do that.
o Vanna White has commercial value because she has marketed her
celebrity already so there is some injury from someone else appropriating
her identity.
• Samsung appropriated her identity by having a robot looking very similar to
Vanna White and positioning it to turn the letters.
• The court looked at the following:
o The holistic approach - the blond wig, the wheel of fortune background,
• The dissent said just invoking someone's identity in the mind of other was just too
broad.

• The court construed parody very narrowly:

o The choice of medium is important. Its in a magazine and not in a play or
humorous magazine.
o The court said the joke is that it is not actually Vanna White, but a robot -
the joke is that Vanna White will be replaced by a robot in the future.
• They are not actually using her likeness but a robot instead.
• The majority said Vanna has a valid claim because:
o The people who are most famous, there persona can easily be captured or
appropriated without actually using their picture or their name.
• There is something very personal about someone taking someone's picture or
voice and using it.

• Elvis Case
• The action was tribute act. Only problem is t h I

• Factional Characters:
`Wow
•
The actors inideitiy must be inextricable from their

41
 It’s the public view that is important.

• Once you show these things for right of publicity there still is a first amendment
issue.
• The court selling the image on t short was expressive
• Two purposes to the first amendment:
o Add to the Marketplace of ideas
o Individual development.
• These things tend to but head with the right of publicity:
o Market place/right of publicity
o Test:
o Transformative work - adding something new to the look. In this case the
court said there was no change.

Tony Twist Case

• The court said the transformative test was no good in this case.
The adopted a new test because:
They were really piggy backing on the persons celebrity.

The new test - The Predominant Use Test:

Outkast had Rosa Parks song

Review section 35 of Act

Remedies
Tuesday, December 05, 2006
9:46 AM

I. Final Exam
II. Remedies
a. Injunctive Relief
i. Irreparable Injury
ii. Scope of Injunction
b. Monetary Damages

• 3 questions
• 1 long fact pattern
• 1 short one
• 1 open ended policy question
• Spot the issues we spoke about in class.
• Be able to address them.
• Marshall evidentiary support - use case law to analogize or distinguish.
• Use statutory language
• Don’t care about blue booking

42
 • Being tested on the current law as of today. So no old doctrine.
• Trademark revision dilution act on page 113-115 of supplement.
• If the question specify circuit then follow that. If it doesn’t then point out a split in
circuit etc.
• No page limit.
• Have to type it.

REMEDIES
I. Trademark litigation is mostly about injunctive relief - getting some sort of
remedy that stops short of monetary relief.
• Why is this the case?
o Trademark law is primarily about protecting the consumer. So a damages
award that pays the trademark holder that does not help the consumer.
o Damages are too speculative in trademark.
o Once the consumer is confused you have potentially lost them for ever.
Paying the mark holder
II. Crafting an injunction:
a. The courts want to tailor the injunction in a fair way that does not damage
the defendant.
i. Can change the name of the product.
ii. A person can take a domain name and take it hostage which is
quite easy - this counts more in favor of statutory damages. People
will think before cyber squatting because they can just shut down
which is different than an actual business who has infringed a
trademark. Unless they have to pay money it wont be a big deal
for them.

GoTo Case
Both websites used GoTo in domain name.
When did the court say that injunctive relief should be granted? Two prong test
o There is a combination of probable success on the merits
o The possibility that someone is going to suffer an irreparable
injury.
• Is there going to be a likelihood of confusions
• The court does not require evidence of actual confusion.
o The court does not want to wait and see if confusion is going to occur they
want to prevent it before it happens. Once they have gone to Disney they
are never going to come back.
• The court said you don’t have to show proof of actual damage or injury for the
same reason.
• What is the scope of the injunction?
o Status quo ante litem

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 • But the plaintiff back in the position he was before Disney started
using the GoTo website. Return the parties back to the period of
time before there was any infringe.

_______________________________________

• What qualities does an injunction need to have to pass muster?

o Have to let the defendant know what they are supposed to do.
o Specific enough to protect the client's interest - have to actually help the
plaintiff so that these conduct don’t continue to happen.
• When may it be considered too broad?
o It may over step the bounds of trademark law.
o The defendant may come back into court and want to know about
comparative advertising. This is expensive and the court should lay it all
out in specific terms. The court does not want to step on free-speech for
example.
• When may it be too specific?
o It may be too easy for the defendant to get around an injunction saying the
court never ruled on certain activities while ruling on others.

• Why have monetary damages at all?

o Don’t have to worry about going into separate court for injunctive and
damages.
o Maybe the defendant has profited and should repay for the loss of the
defendant.
o Compensatory damages to stop people for doing this - cant use the word
punish.
o Section 35 says in specific language that damages for trademark
infringement should not constitute punishment.
• The statute says this is not criminal law.
o IT IS AN EQUITABLE DECISION BY THE COURT TO AWARD
DAMAGES

Lindy Pen Company v. Bic Pen Corporation

Three types of damages:

1. Unjust infringement - disgorgement of defendant's profits.
2. Plaintiff's lost profits - type of consequential damages
3. Direct injuries - used to make the plaintiff whole
4. The Cost of the action - cost of litigation

Lindy was not able to proof lost profits because:

o She could not show telephone order sales. That was the only area
where the infringement was found.
Then the court turned to unjust enrichment

44
 o They could not show unjust enrichment because now they could
not show Bic sales of the auditor pen. The court said Bic gave them
enough account data for them to have done it.
o But, Bic did not provide very clear record.
o They should have gotten the records from discovery -
interrogatories, depositions etc.
o The court say they were looking for a prima facie case that Bic
made money on the sale for the auditor pens. They could not show that
they made any profits etc.
Then to Attorney's fees:
o Lindy told them years ago not to sell auditor's pen and they still
went ahead and did it so it was intentional. The court did not give them
attorney's fees because infringement needs to be malicious, fraudulent and
willful and it is hard to do for a company whose brand name is in decline.
Said there was other company's using the name and it is more descriptive
now.
• Proof of actual damages and willful intent are important elements.
• It helps your case to show these 2 elements.
• If Lindy is letting other people use their mark then there it is less of signifying
source.

Distinctiveness spectrum
Functionality
Confusion likelihood
Right of publicity

[Even if a trademark is registered the court is going to wait to stop the defendant until
they are sure the defendant is going to enter that market in another location - especially if
there is no evidence of willful infringement. Constructive notice alone is not sufficient.]

Statutory damages are available for cyber squatting.

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