TRADEMARKS PROF JANICKE FALL 2015 TO BE A

TRADEMARKS PROF. JANICKE FALL 2015

TO BE A “MARK”: • WORDS OR SYMBOL HAS TO SERVE AS A BRAND • MEANING: IT HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS 2015 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 – IF THESE METHODS ARE IMPRACTICAL, ON INVOICES OR SHIPPING DOCUMENTS, or – IN CATALOGS OR WEBSITES ADVERTISING THE GOODS 2015 IP Survey -- Trademarks 3

OWNERSHIP OF SUCH A MARK REQUIRES USE IN COMMERCE • THINKING OF THE MARK WILL NOT SUFFICE – NO USE = NO OWNERSHIP 2015 IP Survey -- Trademarks 4

FOR A SERVICE MARK, THE USE CAN BE: – ON SIGNS, – ADS, OR – PAPERS CONNECTED TO THE SERVICE 2015 IP Survey -- Trademarks 5

TO OWN A “MARK”: • THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE • LOCAL, FOR STATE RIGHTS • INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS 2015 IP Survey -- Trademarks 6

• FEDERAL USE IN COMMERCE: – CAN BE ACTUAL – CAN BE BONA FIDE INTENDED (WITH TIME LIMITS) 2015 IP Survey -- Trademarks 7

PROTECTION • RIGHTS BEGIN UPON FIRST USE [ACTUAL OR CONSTRUCTIVE BY FILING] • REGISTRATION IS NOT NECESSARY • CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK – DONE UNDER UNFAIR COMPETITION PROVISION OF THE TRADEMARK ACT 2015 IP Survey -- Trademarks 8

CASE • BLUE BELL v. FARAH 2015 IP Survey -- Trademarks 9

WHAT IS INFRINGEMENT? • USE, IN COMMERCE, OF A MARK IN SUCH MANNER, CONSIDERING THE GOODS OR SERVICES INVOLVED, AS TO CREATE A LIKELIHOOD OF CONFUSION AMONG PURCHASERS 2015 IP Survey -- Trademarks 10

CONFUSION LIKELIHOOD • • 2015 AS TO SOURCE AS TO SPONSORSHIP AS TO AFFILIATION AS TO APPROVAL IP Survey -- Trademarks 11

CONFUSION LIKELIHOOD • SUBSTANTIAL NUMBER OF PERSONS • PROBLEM OF LANGUAGE TRANSLATION – DEPENDS HOW MANY SPEAK IT IN U. S. 2015 IP Survey -- Trademarks 12

STRONG-WEAK MARKS FOR JUDGING LIKELIHOOD OF CONFUSION • #1 -- COINED (MEANINGLESS WORDS) -- e. g. , KODAK, OREO: STRONGEST OF ALL – ENTITLED TO THE WIDEST SCOPE OF PROTECTION – MODAK, DODAK, KODAR, FOR FILM OR DOREO FOR COOKIES WILL BE HELD INFRINGING 2015 IP Survey -- Trademarks 13

• #2 -- ARBITRARY – e. g. APPLE, SUN, SHELL: – ALSO VERY STRONG FOR COMMUNICATION DEVICES AND COMPUTERS (APPLE), OR FOR OIL PRODUCTS (SUN, SHELL) – NOTE: SUN ALSO ARBITRARY FOR SOFTWARE (SUN MICROSYSTEMS) 2015 IP Survey -- Trademarks 14

• JACK-IN-THE-BOX • RITZ 2015 IP Survey -- Trademarks 15

• #3 -- SUGGESTIVE (e. g. MILKY WAY; COPPERTONE) – OK, BUT WEAKER – “CREAMY WAY, ” “BRONZETONE” MIGHT BE HELD NONINFRINGING • #4 -- 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 2015 IP Survey -- Trademarks 16

• NOTE: “DESCRIPTIVE” INCLUDES GEOG. DESCRIPTIVE (e. g. SOUTHWEST FOR AIRLINE SERVICES; HOUSTON CHRONICLE FOR NEWSPAPERS) – WERE NOT PROTECTED (OWNED) AT FIRST 2015 IP Survey -- Trademarks 17

• #5 -- GENERIC NAME OF ARTICLE (e. g. ASPIRIN) – CANNOT SERVE AS A MARK – CANNOT ACQUIRE DISTINCTIVENESS – IT’S PART OF THE LANGUAGE 2015 IP Survey -- Trademarks 18

INFRINGEMENT: LIKELIHOOD OF CONFUSION • CASES – XTREME [PART 1] – STREETWISE – QUILL 2015 IP Survey -- Trademarks 19

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: – BY FILING AN APPLICATION, CAN RESERVE A MARK BASED ON INTENDED USE – IF REGISTERED, EXCLUSIVE RIGHT TO USE THE MARK IS PRESUMED – “INCONTESTABLE” AFTER 5 YEARS 2015 IP Survey -- Trademarks 20

(MORE BENEFITS OF FED. REGISTRATION) – IN ADDITION TO OWNERSHIP, VALIDITY OF THE MARK IS PRESUMED • e. g. , NOT CONFUSINGLY SIMILAR TO MARK OF AN EARLIER USER – U. S. CUSTOMS SERVICE WILL ASSIST AGAINST INFRINGING IMPORTATIONS 2015 IP Survey -- Trademarks 21

“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 2015 IP Survey -- Trademarks 22

TIME LIMITS FOR INTENT-TO-USE APPLICATIONS • APPLICATION IS EXAMINED IN THE USUAL WAY • IF O. K. , A NOTICE OF ALLOWANCE OF REGISTRATION WILL BE SENT • APPLICANT MUST ACTUALLY USE, AND FILE AFFIDAVIT OF USE, WITHIN 6 MONTHS OF THE NOTICE 2015 – CAN BE EXTENDED BY PETITION, UP TO 24 MONTHS IP Survey -- Trademarks 23

• INTENT-TO-USE IF THE FAVORED PROCEDURE FOR CLIENTS TODAY – GIVES A CLUE ABOUT REGISTRABILITY, PRIOR TO SPENDING MONEY ADVERTISING THE BRAND – GIVES A CHANCE FOR CHANGE-OFMIND, WITHOUT SERIOUS EXPENDITURE [TM APPL. FILING FEE: $325 ONLINE; $375 IN PAPER] 2015 IP Survey -- Trademarks 24

CASE • PARK ’N FLY 2015 IP Survey -- Trademarks 25

EXAMPLES OF MARKS 2015 IP Survey -- Trademarks 26

TRADEMARK (FOR CONTAINER OF SCOTCH) 2015 IP Survey -- Trademarks 27

COLLECTIVE MARK (ALUMNI): 2015 IP Survey -- Trademarks 28

SERVICE MARK (OILFIELD FIREFIGHTING): 2015 IP Survey -- Trademarks 29

11965 HP PRODUCTS, an Ohio company 2015 tubing and fittings for conveyors IP Survey -- Trademarks 30

2015 IP Survey -- Trademarks 31

2015 IP Survey -- Trademarks 32

2015 IP Survey -- Trademarks 33

COLLECTIVE MARK: 2015 IP Survey -- Trademarks 34

CERTIFICATION MARK FOR CLOTHING: 2015 IP Survey -- Trademarks 35

CASE • QUALITEX 2015 IP Survey -- Trademarks 36

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 2015 IP Survey -- Trademarks 37

DURATION OF EXCLUSIVE RIGHT IN A MARK • 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 2015 IP Survey -- Trademarks 38

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 2015 IP Survey -- Trademarks 39

PRACTICAL BENEFIT OF REGISTRATION • OTHERS WILL FIND OUT ABOUT YOUR RIGHTS, AND WON’T ADOPT SIMILAR MARK • CHEAP POLICING 2015 IP Survey -- Trademarks 40

CASE • SLOPPY JOE’S 2015 IP Survey -- Trademarks 41

FALLING INTO THE “REGISTERED” PIT PROBLEM: • 1 ST USER HAS NO REGISTRATION • 2 ND USER GOT STATE AND FEDERAL REGISTRATIONS, TWO YEARS AGO • GOODS and MARKS ARE CONFUSINGLY SIMILAR • WHO WINS? 2015 IP Survey -- Trademarks 42

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! 2015 IP Survey -- Trademarks 43

PERMANENT USE RIGHTS LEGAL REQUIREMENTS: (1) 2 ND USER IS FIRST TO USE IN A LOCALE (STATES OR PARTS THEREOF) (2) 2 ND USER HAS NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF 2 ND USER’S ADOPTION 2015 IP Survey -- Trademarks 44

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) 2015 IP Survey -- Trademarks 45

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) FIRST LOCAL USER AFTER THE FED. FILING DATE 2015 IP Survey -- Trademarks 46

PERMANENT USE RIGHTS • REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE, BECAUSE: • THE POSSIBILITY OF CREATING NEW LOCAL RIGHTS ENDED AT THE FILING DATE – i. e. , 1 ST USER IS DEEMED TO BE USING EVERYWHERE 2015 IP Survey -- Trademarks 47

CASE • MISTER DONUT 2015 IP Survey -- Trademarks 48

QUASI-MARKS AND NON-MARKS • WALK THROUGH § 1052 • THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS 2015 IP Survey -- Trademarks 49

QUASI-MARKS AND NON-MARKS • START WITH 1052 (a) - (d): TELLS US MANY PROBLEMS ARE INCURABLE 2015 IP Survey -- Trademarks 50

QUASI-MARKS AND NON-MARKS THE (e) GROUP – SOME ARE CURABLE: • DESCRIPTIVE • GEOGRAPHIC • SURNAMES SOME NOT CURABLE: DECEPTIVELY MISDESCRIPTIVE 2015 IP Survey -- Trademarks 51

QUASI-MARKS AND NON-MARKS • FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER) • EXAMPLE: SHAPE OF A DESK LAMP • THIS OBSTACLE CANNOT BE CURED 2015 IP Survey -- Trademarks 52

WHO HAS THE RIGHT? THE PROBLEM OF “GRAY GOODS” • MEANING OF GRAY GOODS: • GOODS THAT WERE AUTHENTIC AT POINT OF FIRST SALE, BUT WERE NOT INTENDED TO MOVE ACROSS BORDERS • PRICING CAN BE CONSIDERABLY LOWER IN FIRST SALE 2015 IP Survey -- Trademarks 53

• ATTRACTIVE TO BROKER-TYPE BUYERS / RESELLERS, WHO BRING THE GOODS HERE – E. G. , MERCEDES CARS BOUGHT IN GREECE, SHIPPED HERE AND RESOLD • COMPLAINERS: – DISTRIBUTORS, DEALERS, AND OTHER MIDDLEMEN CONNECTED TO THE U. S. MARK OWNER 2015 IP Survey -- Trademarks 54

• WHY DIFFERENT MARK OWNERS SOMETIMES? – ARISES FROM CORPORATE SELLOFFS OF LINES OF BUSINESS IN SOME COUNTRIES BUT NOT OTHERS – WHEN FOREIGN BUSINESS IS SOLD OFF, MARKS USUALLY GO WITH IT – CAN ALSO ARISE FROM LICENSING [IP MAXIMIZATION] 2015 IP Survey -- Trademarks 55

GRAY GOODS U. S. RULE: • IF MARK OWNER IN SOURCE COUNTRY AND U. S. IS SAME OR RELATED COMPANY, NO RELIEF AGAINST GRAY IMPORTATION • IF MARK OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER THAN IN U. S. ORIGIN 2015 IP Survey -- Trademarks 56

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) 2015 IP Survey -- Trademarks 57

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 2015 IP Survey -- Trademarks 58

N. B. • STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL >>> 2015 IP Survey -- Trademarks 59

CASE • AMBASSADOR EAST v. ORSATTI 2015 IP Survey -- Trademarks 60

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 2015 IP Survey -- Trademarks 61

A WORD ABOUT DILUTION • A MADE-UP EXAMPLE: – “CADILLAC” FOR CARS – FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD 2015 IP Survey -- Trademarks 62

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

REMEDIES 2015 IP Survey -- Trademarks 64

INJUNCTIVE • NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER • CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE FEECOLLECTING BUSINESS 2015 IP Survey -- Trademarks 65

INJUNCTIVE • PRELIMINARY • PERMANENT – § 1116 (a) • ABOUT 4, 000 TRADEMARK SUITS FILED ANNUALLY • ABOUT 45 GO TO TRIAL • SETTLEMENTS OFTEN INCLUDE CONSENT INJUNCTION 2015 IP Survey -- Trademarks 66

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) 2015 IP Survey -- Trademarks 67

ATTORNEY’S FEES • “EXCEPTIONAL CASES” ONLY • USUALLY MEANS WILLFUL INFRINGEMENT § 1117 (a) 2015 IP Survey -- Trademarks 68

DESTRUCTION • A NICE MEDIEVAL REMEDY • ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS? ] § 1118 2015 IP Survey -- Trademarks 69