TRADEMARKS PROF JANICKE JULY 2007 F 2007 Trademarks

TRADEMARKS PROF. JANICKE JULY 2007 F 2007 Trademarks

TO BE A “MARK”: • HAS TO SERVE AS A BRAND • MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS F 2007 Trademarks 2

TO BE A “MARK”: • HAS TO BE USED PHYSICALLY ON THE GOODS (TRADEMARK) OR ON SIGNS, ADS, OR PAPERS CONNECTED TO SERVICE (SERVICE MARK) F 2007 Trademarks 3

TO BE A “MARK”: • THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE • LOCAL, FOR STATE RIGHTS • INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS F 2007 Trademarks 4

PROTECTION • RIGHTS BEGIN UPON FIRST USE • REGISTRATION IS UNNECESSARY • CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK – DONE UNDER UNFAIR COMPETITION LAWS F 2007 Trademarks 5

PASSING/FAILING THE FIRST REQUIREMENT OF A “MARK” • NOT A DISTINGUISHING BRAND • EXAMPLES: F 2007 Trademarks 6

PASSING/FAILING SECOND REQUIREMENT OF A “MARK” • EXAMPLES: § 1127 F 2007 Trademarks 7

PASSING/FAILING THIRD REQUIREMENT OF A “MARK” • EXAMPLES: F 2007 Trademarks 8

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? F 2007 Trademarks 9

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! F 2007 Trademarks 10

PERMANENT USE RIGHTS CONDITIONS: • (1) FIRST TO USE IN A LOCALE (STATE OR LESS) • (2) NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF ADOPTION F 2007 Trademarks 11

PERMANENT USE RIGHTS • FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS REGISTRATION DATE • REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2) F 2007 Trademarks 12

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 F 2007 Trademarks 13

PERMANENT USE RIGHTS • ∴ REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE F 2007 Trademarks 14

QUASI-MARKS AND NON-MARKS • WALK THROUGH § 1052 • THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS F 2007 Trademarks 15

QUASI-MARKS AND NON-MARKS • START WITH 1052(f): TELLS US MANY PROBLEMS ARE INCURABLE • EXAMPLES: F 2007 Trademarks 16

QUASI-MARKS AND NON-MARKS THE (e) GROUP: • • DESCRIPTIVE [EXAMPLE? ] MISDESCRIPTIVE [EXAMPLE? ] GEOGRAPHIC SURNAMES F 2007 Trademarks 17

QUASI-MARKS AND NON-MARKS • FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER) • [EXAMPLES? ] F 2007 Trademarks 18

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) F 2007 Trademarks 19

LESS KNOWN TYPES • COLLECTIVE MARKS – TRADE / SERVICE MARKS – MEMBERSHIP MARKS • CERTIFICATION MARKS § 1054 F 2007 Trademarks 20

CONFUSION LIKELIHOOD • • AS TO SOURCE AS TO SPONSORSHIP AS TO AFFILIATION AS TO APPROVAL F 2007 Trademarks 21

CONFUSION LIKELIHOOD • SUBSTANTIAL NUMBER OF PERSONS • PROBLEM OF LANGUAGE TRANSLATION – DEPENDS HOW MANY SPEAK IT IN U. S. F 2007 Trademarks 22

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 F 2007 Trademarks 23

FACTORS • STRENGTH OF P’S MARK – HOW MUCH USE; HOW ARBITRARY • SIMILARITY OF THE MARKS – SIGHT – SOUND – SCRIPT OR DESIGN • SIMILARITY OF PRODUCTS OF SERVICES F 2007 Trademarks 24

FACTORS (CONT’D. ) • CHANNELS OF TRADE • ADVERTISING OR PROMOTION MEDIA • BAD FAITH ADOPTION – SOME COURTS GIVE THIS HEAVY WEIGHT; OTHERS DON’T • NATURE OF CUSTOMERS • PURCHASE CONDITIONS: TIME, PRICE, ETC. F 2007 Trademarks 25

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] F 2007 Trademarks 26

GRAY GOODS U. S. RULE: • IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION • IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER F 2007 Trademarks 27

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) F 2007 Trademarks 28

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. F 2007 Trademarks 29

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 F 2007 Trademarks 30

N. B. • STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL F 2007 Trademarks 31

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 F 2007 Trademarks 32

A WORD ABOUT DILUTION • EXAMPLE: – “CADILLAC” FOR CARS – FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD F 2007 Trademarks 33

A WORD ABOUT DILUTION • ONLY AVAILABLE FOR “FAMOUS” MARKS • NO DAMAGES NORMALLY • INJUNCTIVE ONLY § 1125 (c) F 2007 Trademarks 34

REMEDIES F 2007 Trademarks 35

INJUNCTIVE • NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER • CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS F 2007 Trademarks 36

INJUNCTIVE • PRELIMINARY • PERMANENT – § 1116 (a) • 4, 000 + TRADEMARK SUITS FILED ANNUALLY • ABOUT 45 GO TO TRIAL F 2007 Trademarks 37

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) F 2007 Trademarks 38

ATTORNEY’S FEES • “EXCEPTIONAL CASES” ONLY • USUALLY MEANS WILLFUL INFRINGEMENT § 1117 (a) F 2007 Trademarks 39

DESTRUCTION • A NICE MEDIEVAL REMEDY • ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS? ] § 1118 F 2007 Trademarks 40

DEFENDANT’S REMEDIES • ATTORNEY’S FEES IN EXCEPTIONAL CASES § 1117 (a) • ORDER TO CANCEL REGISTRATION § 1119 F 2007 Trademarks 41