001 Unfair Competition Restatement: 1 - General Principles

002 Hanover Star Milling v. Metcalf (US 1916)

003 INS v. Associate Press (US 1918)

004 What does the restatement provide as necessary for proving unfair competition?

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006 Sears, Roebuck & Co. v. Stiffel Co. (US 1964)

Cheney Bros. v. Doris Silk Corp. (US 1930)

007 Compco Corp. v. Day-Brite Lighting (US 1964)

008 What can be a trademark?

009 What is never protectable as a TM?

010 Who can register a trademark and how?

011 Bell v. Streetwise Record (D. Mass. 1986)

012 What determines acquisition and use of a TM?

002 Unfair Competition: Basic holding is that trademarks are intended to protect the consuming public. Concern about behavior in market and its effect on consumers--Sounds like torts. Property: Property in a TM is not necessarily the image itself but the goodwill and reputation that is associated with it. TMs protect the goodwill established by the business. Goodwill is built up through advertising, high quality product, investment in the brand, consistency

001 unfair competition occurs when commercial actors cause harm to the commercial relations of another by engaging in a trade or business that falls under 1 of 3 things: (1) Deceptive marketing: deceiving the consumers as to who you are through false advertising or infringing on TM or indicia of identification. (2) Infringement of marks or other indicia of id (3) Appropriating intangible trade values: trade secrets, trade dress, rights of publicity, etc..

004 (2) Establishing: A person alleging injury through unfair competition must therefore establish facts sufficient to subject the actor to liability under one or more of the rules enumerated in the section.

003 Case stands for a general common law property rights against misappropriation of commercial value. News has an exchange value to which no one can misappropriate

006 Take-Away: Patent law has constitutional limits that cannot be broadened through TM law and unfair competition It is familiar doctrine that when state law touches upon the area of federal statutes, the federal policy "may not be set at naught, or its benefits denied" by the state law. So to create a right out of unfair competition law after deciding there is no patent would conflict with the purpose and intent behind patent law. 008 a) Words, names, slogans, logos, signs, symbols, designs, shapes, packaging, store layout, colors, smells, sounds, taste, feel, etc. (1) Trade Dress Refers to product packaging or a store layout (2) Sound Marks Lion roar is tm for MGM, closing bell of NYSE, NBC chimes (3) Color Color is not specifically listed in the TM definition, but the court has permitted color to be trademarked in Qualitex

005 Courts dont like to broaden TM law to the detriment of competition (narrow view of unfair competition).

007 Take-Away: Important idea to reinforce from these cases is that competition is the default, and the rights are developed and expanded as exceptions to competition. Like Sears, Compco held that state law that, in effect, duplicated the protections of the US patent laws was pre empted by federal law.

010 a) Lanham Act 1: Owner can register a mark by showing 2 things: (1) First Use: Internal use, advertising, use in local commerce (2) First Use in Commerce: Sales that cross state lines

009 Generic marks and a) b) c) d) e) f) g) h) 011 Rule - The owner of a mark is decided by who it refers to/source is in the mind of the consuming public. Deceptive Immoral Disparaging Geographical indication of Wine or spirits False association Confusion Functionality Primarily geographically deceptively descriptive

012 15 U.S.C. 1227 [Lanham Act 45] Use in Commerce a) Bona fide - use of the mark in the ordinary course of trade, and not made merely to reserve a right in a mark b) A mark is deemed to be in use in commerce when: (1) it is placed in any manner on the goods or their container or the displays associated therewith or on the tags or labels, etc, AND (2) the goods are sold or transported in commerce. c) Note - Establishing use in commerce is a heavily fact oriented analysis, so pay attention to details and determine which may have a bearing on establishing first use in commerce

013 Proctor & Gamble v. Johnson & Johnson (2d. Cir. 1980)

014 How is use in commerce satisfied for service marks?

015 How does promotional use affect the ability to get TM rights?

016 Maryland Stadium Authority v. Becker (4th Cir. 1994) Promotional Use

017 Buti v. Impressa Perosa, S.A. (2d Cir. 1998)

018 Blue Bell, Inc. v. Farah Manufacturing Co. (5th Cir. 1975) Priority of Registration

Extraterritorial Use

019 What is the rule for concurrent use of a mark?

020 What must an person satisfy to invoke the limited area exception?

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022 What is constructive use?

What is the limited area exception for concurrent use?

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Who has standing to oppose immoral/scandalous registration?

What are requirements for immoral or scandalous bar

014 a) Must show of use across state lines on regular basis b) Bozo the Clown restaurant at crossroads of 3 states is making national use-Larry Harmon Pictures v. Williams Restaurant Corp c) Good indication of being an interstate business: (1) if you are on an inter-state highway (2) you are a tourist destination: DC, Vegas, etc (3) you are on a state line

013 The use must be continuous, non-sporadic, and more than nominal

016 Advertising or promotion is sufficient to obtain rights in a mark as long as: 1) they occur within a commercially reasonable time prior to the actual rendition of service, and 2) as long as the totality of acts creates association of the goods or services and the mark with the user thereof.

015 Rule - Protection can be triggered before an actual use in commerce if there is a significant promotional use directed at the relevant consuming public, AND actual use commence in reasonable amount of time afterwards (reasonable is industry specific)

018 Take-Away: If no registration and concurrent use, priority goes to whichever actually reaches the consumer first in a meaningful way. In this case, the winner is one who sells to customers first (not internal decisions, double labels, selling 1 or 2, shipping, etc)

017 Take-Away: 2nd Cir. stressed the territorial nature of TM rights. Court said that that promotional use was not enough b/c only advertised his Milan one, no use in USA and no idea if it affected interstate or intl commerce

020 Limited area defense in 1115(b) TC must satisfy the following (1)(a) that it adopted the mark before T-RAC 1964 registration under L and (1)(b) without knowledge of T-RACs prior use (2) the extent of the trade are in which TC used the mark prior to T-RACs registration; and (3) that TC has continuously used the mark in the pre-registration trade area. (4) Good faith (no issue here) 022 a)Constructive use date, dates back to the application date. b) This amendment occurred after Thrifty, and if it had occurred at the time then the court would have granted use at the date of application, rather than issuance. However, the result for the defendant would have been the same because they were in a different region and would have had no real notice of Thrifty's actions in other states. (1) You still get nothing from the filing of the application, but once the registration issues, you obtain constructive use from the date of the filing.

019 Rule a) Two business can use the use the same mark as long as they are not geographically overlapping AND they can only do so inasmuch as it was before registration (b/c registration serves as constructive notice) b) Priority goes to the person who registers.

021 limited area exception to that general premise confers upon a jr user the right to continued use of an o/w infringing mark in a remote geographic area if that use was established prior to the other partys federal registration.

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Must be shocking to the sense of decency and offensive to moral feelings (1) Looks at if a substantial composite of the general (rather than consuming) public would be offended

Must have standing

023 (1) Offended consuming public The starting point for a standing is 13 of the LA, which provides that any person who believes that he would be damaged by the registration of the mark may file an opposition stating the grounds thereof (2) Competitors who want to limit their competitions progress (3) Examining attorneys b) Real Interest Test: The opposer must have a direct and personal stake in the outcome of the opposition. (1) The crux of the matter is not how many others share ones belief, but whether that belief is reasonable and reflects a real interest in the issue.

025 What are the requirements for opposing a disparaging claim?

026 What is the Harjo disparagement test?

027 What is the difference between deceptively misdescriptive and descriptive

028 What is the test for determining whether a mark is deceptive?

029 What is the test for creating a false association?

030 What is the test for whether a mark is primarily geographically deceptive or misdescriptive

031 Distinguish between geographically descriptive marks and geographically deceptively misdescriptive marks

032 What is the test for determining if a mark is primarily merely a surname

033 What factors are considered in determining whether a mark is primarily merely a surname?

034 What is the general rule for registrability of numerals, letters, and initials?

035 What are factors that lead to functionality that will all hurt the TM applicant

036 What is the Morton-Norwich Test for functionality of a tm?

026 (1) What is the likely meaning of the manner in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in marketplace in connection with the goods or services; and (2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group

025 2(a) Lanham Act b) Has to have been disparaging when it was registered AND disparaging to the group being disparaged (1) Its not from the general publics point of view; it matters what the concerned people think only

028 Covered under 2(a) Lanham Act Test for whether a mark is deceptive under 2(a) is the Budge Test (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods or services (2) If so, are prospective purchases likely to believe that the misdescription actually describes the goods or services? (3) If so, is the misdescription likely to affect the decision to purchase?

027 Under Budge Test, if answer to first two is yes but last is no, then it is merely descriptive. But if third is yes, then deceptively misdescriptive

030 Test: a) Is the term misdescriptive of the geographical origin of the goods? b) If so, are prospective purchasers likely to believe the geographic midescription? c) If so, is the geographical misdecription likely to affect the decision to buy?

029 Covered under 2(a) Lanham Act Considers whether the mark is: (1) The same as or a close approximation of a name or identity previously used by a person or institution, AND (2) If the mark would be recognized as such in that it points uniquely and unmistakably to that person or institution AND (3) The person or institutions fame or reputation is such that when used with the mark their association with the goods or services would be presumed AND (4) The person is not actually connected 031 a) Marks that are primarily geographically descriptive [2(e)(2)] may have acquired distinctiveness and become registrable. b) On the other hand, marks that are primarily geographically deceptively misdescriptive or primarily geographically deceptive ([2(e)(3)] are permanently denied and cannot have secondary meaning

032 In determining whether or not a TM is primarily merely a surname is its primary significance to the purchasing public (1) If PTO finds its a surname, burden shifts to applicant to show secondary meaning. (2) Secondary meaning acquired by showing that the purchasing public primarily recognizes the mark as a source identifier rather than a surname.

034 a) General Rule: A word, phrase, symbol, numeral or letter which merely differentiates between various grades, styles, colors or types of products and does not designate their source IS NOT A PROTECTABLE TM b) Grade designations are analogous to descriptive terms in that they serve the primary function of describing

033 From In re Quadrillion Publishing Ltd. (TTAB 2000) The degree of surname rareness Whether anyone connected with the applicant has the surname Whether the term has any recognized meaning other than that of a surname The structure and pronunciation or "look and sound" of the surname

036 The existence of a utility patent disclosing the utilitarian advantages of the design o Will be strong evidence of functionality and a heavy burden for applicant to overcome; however, showing that the features are arbitrary, incidental, or ornamental may help. Advertising materials in which the originator of the design touts the design's utilitarian advantages The availability to competitors of functionally equivalent designs Facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product

035 (1) Does it offer an advantage that would be disadvantageous to competitors? (2) If makes it easier or cheaper to make (3) What does advertizing say about product? Does company claim it has some special function (4) Patent application on file or attempted (5) Does design provide some enhancement to the product or make it do something better?

037 What is the test for whether a mark is generic?

038 What is de facto secondary meaning?

039 What are the two types of defacto secondary meaning?

040 For survey evidence, what are factors of proof of the consumers thinking?

041 What are the eight Polaroid Factors for likelihood of confusion

042 What is the rule for abandonment of a mark?

043 What are three types of confusion?

044 In examining the strength of Ps mark, what do courts consider?

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038 Sometimes, as in Shredded Wheat, the public may identify a term with a single source of origin, but the term is not accorded TM status. This is known as de facto secondary meaning.

037 The relevant consumers think of the word as identifying a particular class of product

040 a) Media Usage (1) If media uses term generically, that means the public is hearing it as generic very often. b) Survey Information ( Question asked can have an impact; Important part of test but often unsatisfactory; Consumer Motivation questions are now illegal) (4) Court like questions like: Chevy is a brand and car is a type. Is Teflon a brand or a type? c) Plaintiffs use: how does producer use the term? d) Dictionary usage e) Usage in the relevant industry 042 (1) When its use has been discontinued with intent not to resume such use (2) Provides that three consecutive years of nonuse is prima facie evidence of abandonment Duration comes down to use, discontinuation can lead to abandonment (3) Covers course of conduct that can result in genericide or abandonment

039 (1) Arises when public does not recognize the term at issue as a brand name, but nonetheless may know that there is a single source for the goods. Occurs when producer is single source because it enjoys patent monopoly or others are unable to compete (2) Other type arises in instances such at LITE BEER, where producer selects a term that is deemed to have been already the commonly recognized (i.e. generic) name of the goods but through advertising, use, dominance, succeeds in establishing public TM recognition.

041 (1) (2) (3) (4) (5) (6) (7) (8) The strength of the Ps mark The degree of similarity between P and Ds marks The proximity of the products or services The likelihood that P will bridge the gap Evidence of actual confusion Ds good faith in adopting the mark The quality of Ds product or service The sophistication of the buyers

044 Looks at 3 things: (1) Inherent distinctiveness / acquired disctinctiveness (2) Secondary meaning (3) Commercial strength

043 Initial interest confusion, post-sale confusion, reverse confusion

046 2(e) Merely descriptive / deceptively misdescriptive (e)(1) Primarily geographically descriptive (e)(2) Primarily geographically deceptively misdescriptive (e)(3) Merely a surname (e)(4) Functional (e)(5)

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