TRADEMARKS PROF JANICKE FALL 2012 TO BE A

TRADEMARKS PROF. JANICKE FALL 2012

TO BE A “MARK”: • HAS TO SERVE AS A BRAND • MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS 2011 IP Survey -- Trademarks 2

TO BE A “MARK”: HAS TO BE USED PHYSICALLY: – ON THE GOODS, or – ON GOODS’ CONTAINERS, or – ON POINT-OF-SALE DISPLAYS OF GOODS, or – ON INVOICES OR SHIPPING DOCUMENTS, IF THE ABOVE METHODS OF USE ARE IMPRACTICAL, or – IN CATALOGS OR WEBSITES ADVERTISING THE GOODS 2011 IP Survey -- Trademarks 3

FOR A SERVICE MARK, USE CAN BE: – ON SIGNS, – ADS, OR – PAPERS CONNECTED TO THE SERVICE 2011 IP Survey -- Trademarks 4

TO BE A “MARK”: • THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE • LOCAL, FOR STATE RIGHTS • INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS 2011 IP Survey -- Trademarks 5

PROTECTION • RIGHTS BEGIN UPON FIRST USE • REGISTRATION IS UNNECESSARY • CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK – DONE UNDER UNFAIR COMPETITION LAWS 2011 IP Survey -- Trademarks 6

BENEFITS OF REGISTRATION • WHILE NOT NEEDED FOR OWNING EXCLUSIVE RIGHT TO USE A MARK, OR FOR SUING INFRINGERS, THERE ARE MANY BENEFITS TO A FEDERAL REGISTRATION: – CAN RESERVE A MARK PRIOR TO USE – EXCLUSIVE RIGHT TO USE THE MARK IS PRESUMED FROM REGISTRATION – “INCONTESTABLE” AFTER 5 YEARS 2011 IP Survey -- Trademarks 7

(MORE BENEFITS OF FED. REGISTRATION) – VALIDITY OF MARK IS PRESUMED – U. S. CUSTOMS SERVICE WILL ASSIST AGAINST INFRINGING IMPORTATIONS 2011 IP Survey -- Trademarks 8

• CASES: – QUILL – AMBASSADOR EAST 2011 IP Survey -- Trademarks 9

“RESERVING” A MARK • CAN NOW FILE APPL. TO REGISTER BASED ON INTENT TO USE • PROVIDES CONSTRUCTIVE USE AS OF FILING DATE • MUST ACTUALLY USE IN COMMERCE PRIOR TO REGISTRATION 2011 IP Survey -- Trademarks 10

MARKS THAT ARE EASY TO PROTECT • COINED: KODAK; PURELL • ARBITRARY: APPLE; SUN • SUGGESTIVE: MILKY WAY COPPERTONE 2011 IP Survey -- Trademarks 11

HARDER TO PROTECT • DESCRIPTIVE: • A SURNAME: TASTEE STEINWAY WATERMAN • GEOGRAPHIC: MID-ATLANTIC; SOUTHWEST • THESE WERE NOT PROTECTED AT FIRST USE • NEED TO DEVELOP ACQUIRED DISTINCTIVENESS OVER TIME, SOMETIMES CALLED “SECONDARY MEANING” 2011 IP Survey -- Trademarks 12

WHAT IS NOT A MARK: • GENERIC NAME OF A THING – “BREAD” FOR BREAD • SOME CLOSE ISSUES: – ASPIRIN – SHREDDED WHEAT – Cf. : KLEENEX; PING-PONG; XEROX 2011 IP Survey -- Trademarks 13

EXAMPLES OF MARKS 2011 IP Survey -- Trademarks 14

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NATURE OF RIGHTS IN MARKS • PREVENT OTHERS FROM USING SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY • NOT A RIGHT TO PREVENT ALL USES: – “CADILLAC” FOR CARS AND DOG FOOD – “CHAMPION” FOR PAPER AND BOXING GLOVES AND SPARK PLUGS 2011 IP Survey -- Trademarks 25

DURATION OF EXCLUSIVE RIGHT • AS LONG AS YOU ARE USING IT IN COMMERCE, PROVIDED - – IT DOES NOT BECOME GENERIC – IT DOES NOT LOSE ITS CHARACTER AS SINGLE-SOURCE INDICATOR 2011 IP Survey -- Trademarks 26

REITERATING THE LEGAL BENEFITS OF REGISTRATION • PRIMA FACIE EVIDENCE OF EXCLUSIVE RIGHT TO USE • CONSTRUCTIVE USE EVERYWHERE, AS OF THE FILING DATE • STARTS FIVE-YEAR CLOCK TO INCONTESTABILITY 2011 IP Survey -- Trademarks 27

PRACTICAL BENEFIT OF REGISTRATION • OTHERS WILL FIND OUT ABOUT YOUR RIGHTS, AND WON’T ADOPT SIMILAR MARK • CHEAP POLICING 2011 IP Survey -- Trademarks 28

PASSING/FAILING THE FIRST REQUIREMENT OF A “MARK” • NOT A DISTINGUISHING BRAND 2011 IP Survey -- Trademarks 29

• CASES: – SLOPPY JOE’S – QUALITEX 2011 IP Survey -- Trademarks 30

PASSING/FAILING SECOND REQUIREMENT OF A “MARK” • NON-USE IN ACTUAL COMMERCE § 1127 2011 IP Survey -- Trademarks 31

PASSING/FAILING THIRD REQUIREMENT OF A “MARK” • NON-USE ON GOODS OR CONNECTED TO SERVICES 2011 IP Survey -- Trademarks 32

• CASE: – BLUE BELL 2011 IP Survey -- Trademarks 33

FALLING INTO THE “REGISTERED” PIT PROBLEM: • 1 ST USER HAS NO REGISTRATION • 2 ND USER GOT STATE AND FEDERAL REGISTRATIONS, TWO YEARS AGO • GOODS/MARKS CONFUSINGLY SIMILAR • WHO WINS? 2011 IP Survey -- Trademarks 34

THE THORN: PERMANENT LOCAL USE RIGHTS • THE ONE BIG PROBLEM FOR THE FIRST USER IN COMMERCE • SECOND USER CAN GET PERMANENT LOCAL RIGHTS TO USE • IF CONFUSION, FIRST USER MUST STAY OUT! 2011 IP Survey -- Trademarks 35

PERMANENT USE RIGHTS LEGAL REQUIREMENTS: (1) 2 ND USER IS FIRST TO USE IN A LOCALE (STATE OR LESS) (2) 2 ND USER HAS NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF 2 ND USER’S ADOPTION 2011 IP Survey -- Trademarks 36

PERMANENT USE RIGHTS • FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS THE FEDERAL REGISTRATION DATE • REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2) 2011 IP Survey -- Trademarks 37

PERMANENT USE RIGHTS • NOW, CONGRESS HAS PROVIDED THAT A FEDERAL REGISTRATION CONSTITUTES CONSTRUCTIVE USE EVERYWHERE AS OF THE FILING DATE (§ 1057(c)) • THIS KILLS CONDITION (1) AS OF THE FILING DATE 2011 IP Survey -- Trademarks 38

PERMANENT USE RIGHTS • REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE • THE POSSIBILITY OF CREATING NEW INNOCENT LOCAL RIGHTS ENDED AT THE FILING DATE – i. e. , 1 ST USER IS DEEMED TO BE EVERYWHERE 2011 IP Survey -- Trademarks 39

• CASE: – MISTER DONUT 2011 IP Survey -- Trademarks 40

QUASI-MARKS AND NON-MARKS • WALK THROUGH § 1052 • THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS 2011 IP Survey -- Trademarks 41

QUASI-MARKS AND NON-MARKS • START WITH 1052 (a) - (d): TELLS US MANY PROBLEMS ARE INCURABLE 2011 IP Survey -- Trademarks 42

QUASI-MARKS AND NON-MARKS THE (e) GROUP – SOME ARE CURABLE: • DESCRIPTIVE • GEOGRAPHIC • SURNAMES SOME NOT CURABLE: DECEPTIVELY MISDESCRIPTIVE 2011 IP Survey -- Trademarks 43

QUASI-MARKS AND NON-MARKS • FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER) • EXAMPLE: SHAPE OF A DESK LAMP • CANNOT BE CURED 2011 IP Survey -- Trademarks 44

GETTING FROM QUASI TO FULL: SHOWING ACQUIRED DISTINCTIVENESS • OFTEN CALLED “SECONDARY MEANING” • SHOWS THE QUASI-MARK HAS ARRIVED; NOW SIGNALS SOURCE • FIVE YEARS EXCLUSIVE USE MAY DO 15 USC § 1052 (f) 2011 IP Survey -- Trademarks 45

LESS KNOWN TYPES • COLLECTIVE MARKS – TRADE / SERVICE MARKS – MEMBERSHIP MARKS • CERTIFICATION MARKS § 1054 2011 IP Survey -- Trademarks 46

CONFUSION LIKELIHOOD • • 2011 AS TO SOURCE AS TO SPONSORSHIP AS TO AFFILIATION AS TO APPROVAL IP Survey -- Trademarks 47

CONFUSION LIKELIHOOD • SUBSTANTIAL NUMBER OF PERSONS • PROBLEM OF LANGUAGE TRANSLATION – DEPENDS HOW MANY SPEAK IT IN U. S. 2011 IP Survey -- Trademarks 48

STRONG-WEAK MARKS • COINED -- e. g. , KODAK: STRONGEST OF ALL – ENTITLED TO THE WIDEST SCOPE OF PROTECTION – MODAK, DODAK, KODAR, FOR FILM WILL BE HELD INFRINGING • ARBITRARY – e. g. APPLE: – ALSO VERY STRONG 2011 IP Survey -- Trademarks 49

• SUGGESTIVE (e. g. MILKY WAY; COPPERTONE) – OK, BUT WEAKER – “CREAMY WAY, ” “BRONZETONE” MIGHT BE HELD NONINFRINGING • DESCRIPTIVE (e. g. TASTEE BREAD, SUPERIOR WATERBEDS), and SURNAMES (WATERMAN FOR PENS, FORD FOR CARS) – ARE NOT PROTECTED RIGHT AWAY – ARE PROTECTED WHEN THEY HAVE ACQUIRED DISTINCTIVENESS 2011 IP Survey -- Trademarks 50

• “DESCRIPTIVE” INCLUDES GEOG. DESCRIPTIVE (e. g. SOUTHWEST FOR AIRLINE SERVICES, HOUSTON CHRONICLE FOR NEWSPAPERS) – NOT PROTECTED AT FIRST • GENERIC NAME OF ARTICLE (e. g. ASPIRIN) – CANNOT SERVE AS A MARK – CANNOT ACQUIRE DISTINCTIVENESS – IT’S PART OF THE LANGUAGE 2011 IP Survey -- Trademarks 51

FACTORS IN JUDGING LIKELIHOOD OF CONFUSION • NO SINGLE FACTOR CONTROLS • “SUNKIST” FOR FRESH FRUIT AND FOR DRIED FRUIT WERE OWNED BY UNRELATED COMPANIES • MARKS LIKE “ACME, ” “SUPERIOR, AND “NATIONAL” HAVE MANY OWNERS • FAMOUS CASES HAVE CHECKLISTS 2011 IP Survey -- Trademarks 52

FACTORS • STRENGTH OF P’S MARK – HOW ARBITRARY? – HOW MUCH USE? • SIMILARITY OF THE MARKS – SIGHT – SOUND – MEANING – SCRIPT OR DESIGN • SIMILARITY OF PRODUCTS OF SERVICES 2011 IP Survey -- Trademarks 53

FACTORS (CONT’D. ) • SIMILAR CHANNELS OF TRADE • SIMILAR ADVERTISING OR PROMOTION MEDIA • BAD FAITH ADOPTION – SOME COURTS GIVE THIS HEAVY WEIGHT; OTHERS DON’T • SIMILAR TARGET CUSTOMERS • SIMILAR PURCHASE CONDITIONS: TIME, PRICE, ETC. 2011 IP Survey -- Trademarks 54

• COURTS HAVE TO WEIGH ALL THE FACTORS • THEY REACH A DECISION THAT IS TO SOME DEGREE SUBJECTIVE 2011 IP Survey -- Trademarks 55

WHO HAS THE RIGHT? THE PROBLEM OF “GRAY GOODS” • ARISES FROM CORPORATE SPINOFFS [ABOUT AS FREQUENT AS MERGERS] • WHEN FOREIGN MARKET IS SPUN OFF, MARKS USUALLY GO WITH • ALSO FROM LICENSING [IP MAXIMIZATION] 2011 IP Survey -- Trademarks 56

GRAY GOODS U. S. RULE: • IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION • IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER 2011 IP Survey -- Trademarks 57

WHAT IS NOT INFRINGEMENT • FAIR USE TO DESCRIBE: JANICKE’S COMPUTER RENTAL WE RENT ALL INCLUDING WETYPES, RENT ALL TYPES COMPAQ®, IBM®, AND DELL® INCLUDING COMPAQ® AND IBM® § 1115 (4) 2011 IP Survey -- Trademarks 58

WHAT IS NOT INFRINGEMENT • OWN NAME IN BUSINESS OTHER THAN AS A MARK • Cf: SPERA’S RESTAURANT TONY SPERA, PROP. TONY’S RESTAURANT TONY SPERA, PROP. 2011 IP Survey -- Trademarks 59

N. B. • NO GENERAL RIGHT TO USE YOUR OWN NAME IN BUSINESS • MOST ATTEMPTS FAIL • NO POINT IN CHANGING YOUR NAME TO JOHNNY WALKER IF YOU ARE GOING TO SELL WHISKY 2011 IP Survey -- Trademarks 60

N. B. • STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL 2011 IP Survey -- Trademarks 61

A WORD ABOUT DILUTION • WHEN THERE IS NO INFRINGEMENT BECAUSE NO LIKELIHOOD OF CONFUSION • BUT THE ACTS OF D SOMEHOW CHEAPEN OR TARNISH OR REDUCE THE VALUE OF P’S MARK 2011 IP Survey -- Trademarks 62

A WORD ABOUT DILUTION • EXAMPLE: – “CADILLAC” FOR CARS – FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD 2011 IP Survey -- Trademarks 63

A WORD ABOUT DILUTION • ONLY AVAILABLE FOR “FAMOUS” MARKS • NO DAMAGES NORMALLY

REMEDIES 2011 IP Survey -- Trademarks 65

INJUNCTIVE • NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER • CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS 2011 IP Survey -- Trademarks 66

INJUNCTIVE • PRELIMINARY • PERMANENT – § 1116 (a) • 4, 000 + TRADEMARK SUITS FILED ANNUALLY • ABOUT 45 GO TO TRIAL 2011 IP Survey -- Trademarks 67

MONETARY • D’S PROFITS • OR P’S DAMAGES [DIFFICULT TO SHOW] • COURT CAN TREBLE P’S DAMAGES • IF D’S PROFITS AS REMEDY IS TOO SMALL/LARGE, COURT CAN ENTER A “JUST” AMOUNT § 1117 (a) 2011 IP Survey -- Trademarks 68

ATTORNEY’S FEES • “EXCEPTIONAL CASES” ONLY • USUALLY MEANS WILLFUL INFRINGEMENT § 1117 (a) 2011 IP Survey -- Trademarks 69

DESTRUCTION • A NICE MEDIEVAL REMEDY • ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS? ] § 1118 2011 IP Survey -- Trademarks 70