trademarks prof. janicke fall 2014. 2014ip survey -- trademarks2 to be a “mark”: words or symbol...

TRADEMARKS

PROF. JANICKEFALL 2014

2014 IP Survey -- Trademarks 2

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


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

OWNERSHIP OF SUCH A MARK REQUIRES USE IN

COMMERCE

• THINKING OF THE MARK WILL NOT SUFFICE– NO USE = NO OWNERSHIP



FOR A SERVICE MARK, THE USE CAN BE:

– ON SIGNS,

– ADS, OR

– PAPERS CONNECTED TO THE SERVICE


TO OWN A “MARK”:

• THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE

• LOCAL, FOR STATE RIGHTS

• INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS

• FEDERAL USE IN COMMERCE:

– CAN BE ACTUAL

– CAN BE BONA FIDE INTENDED (WITH TIME LIMITS)



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

CASE

• BLUE BELL v. FARAH


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



CONFUSION LIKELIHOOD

• AS TO SOURCE

• AS TO SPONSORSHIP

• AS TO AFFILIATION

• AS TO APPROVAL


CONFUSION LIKELIHOOD

• SUBSTANTIAL NUMBER OF PERSONS

• PROBLEM OF LANGUAGE TRANSLATION– DEPENDS HOW MANY SPEAK IT IN U.S.


STRONG-WEAK MARKSFOR JUDGING LIKELIHOOD OF

CONFUSION• #1 -- COINED (MEANINGLESS

WORDS) -- e.g., KODAK: STRONGEST OF ALL

– ENTITLED TO THE WIDEST SCOPE OF PROTECTION

–MODAK, DODAK, KODAR, FOR FILM WILL BE HELD INFRINGING

• #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)



• #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


• NOTE: “DESCRIPTIVE” INCLUDES GEOG. DESCRIPTIVE (e.g. SOUTHWEST FOR AIRLINE SERVICES; HOUSTON CHRONICLE FOR NEWSPAPERS)

–WERE NOT PROTECTED (OWNED) AT FIRST

• #5 -- GENERIC NAME OF ARTICLE (e.g. ASPIRIN)

– CANNOT SERVE AS A MARK

– CANNOT ACQUIRE DISTINCTIVENESS – IT’S PART OF THE LANGUAGE


INFRINGEMENT: LIKELIHOOD OF CONFUSION

• CASES– XTREME [PART 1]– STREETWISE– QUILL



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


(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


“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

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– CAN BE EXTENDED BY PETITION, UP TO

24 MONTHS2014 IP Survey -- Trademarks 22

• 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-OF-MIND, WITHOUT SERIOUS EXPENDITURE [TM APPL. FILING FEE: $325 ONLINE; $375 IN PAPER]



MARKS THAT ARE EASY TO PROTECT

• COINED: KODAK; PURELL

• ARBITRARY: APPLE; SUN

• SUGGESTIVE: MILKY WAY COPPERTONE

• THESE ARE PROTECTED UPON FIRST USE IN COMMERCE


HARDER TO PROTECT

• DESCRIPTIVE: TASTEE

• A SURNAME: STEINWAY WATERMAN

• GEOGRAPHIC: MID-ATLANTIC; SOUTHWEST

• THESE WERE NOT PROTECTED UPON FIRST USE

• NEED TO DEVELOP “ACQUIRED DISTINCTIVENESS” OVER TIME, SOMETIMES CALLED “SECONDARY MEANING”


WHAT IS NOT A MARK:

• GENERIC NAME OF A THING– “BREAD” FOR BREAD

• SOME CLOSE ISSUES:– ASPIRIN– SHREDDED WHEAT– Cf.: KLEENEX; PING-PONG; XEROX

CASE

• PARK ’N FLY



EXAMPLES OF MARKS


TRADEMARK AND SERVICE MARK:


TRADEMARK (FOR CONTAINER OF SCOTCH)


SERVICE MARK (INSURANCE):


SERVICE MARK (ENTERTAINMENT);


COLLECTIVE MARK (ALUMNI):


SERVICE MARK (OILFIELD FIRE-FIGHTING):


COLLECTIVE MARK:


CERTIFICATION MARK FOR CLOTHING:


TRADEMARK FOR CLOTHING:


COMPOSITE-STYLE TRADEMARK AND SERVICE MARK – SYMBOL AND WORD:

CASE

• QUALITEX



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


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


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


PRACTICAL BENEFIT OF REGISTRATION

• OTHERS WILL FIND OUT ABOUT YOUR RIGHTS, AND WON’T ADOPT SIMILAR MARK

• CHEAP POLICING

CASE

• SLOPPY JOE’S



FALLING INTO THE “REGISTERED” PIT

PROBLEM:

• 1ST USER HAS NO REGISTRATION• 2ND USER GOT STATE AND FEDERAL

REGISTRATIONS, TWO YEARS AGO

• GOODS/MARKS CONFUSINGLY SIMILAR

• WHO WINS?


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!


PERMANENT USE RIGHTS

LEGAL REQUIREMENTS:

(1) 2ND USER IS FIRST TO USE IN A LOCALE (STATE OR LESS)

(2) 2ND USER HAS NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF 2ND USER’S ADOPTION



• 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)



• 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


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., 1ST USER IS DEEMED TO BE

EVERYWHERE

CASE

• MISTER DONUT



QUASI-MARKS AND NON-MARKS

• WALK THROUGH § 1052

• THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS



• START WITH 1052 (a) - (d): TELLS US MANY PROBLEMS ARE INCURABLE



THE (e) GROUP – SOME ARE CURABLE:

• DESCRIPTIVE

• GEOGRAPHIC

• SURNAMES

SOME NOT CURABLE: DECEPTIVELY MISDESCRIPTIVE



• FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER)

• EXAMPLE: SHAPE OF A DESK LAMP

• CANNOT BE CURED


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)


LESS KNOWN TYPES

• COLLECTIVE MARKS– TRADE / SERVICE MARKS–MEMBERSHIP MARKS

• CERTIFICATION MARKS

§ 1054


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]


GRAY GOODS

U.S. RULE:

• IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION

• IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER


WHAT IS NOT INFRINGEMENT

• FAIR USE TO DESCRIBE:

JANICKE’S COMPUTER RENTALWE RENT ALL TYPES, INCLUDING COMPAQ®,

IBM®, AND DELL®

§ 1115 (4)

JANICKE’S COMPUTER RENTALWE RENT ALL TYPES

INCLUDING COMPAQ® AND IBM®


WHAT IS NOT INFRINGEMENT

• OWN NAME IN BUSINESS OTHER THAN AS A MARK

• Cf: SPERA’S RESTAURANTTONY SPERA, PROP.

TONY’S RESTAURANTTONY SPERA, PROP.


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


N.B.

• STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL

CASE

• AMBASSADOR EAST v. ORSATTI



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



• EXAMPLE:

– “CADILLAC” FOR CARS

– FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD



• ONLY AVAILABLE FOR “FAMOUS” MARKS

• NO DAMAGES NORMALLY

• INJUNCTIVE ONLY

§ 1125 (c)


REMEDIES


INJUNCTIVE

• NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER

• CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS


INJUNCTIVE

• PRELIMINARY

• PERMANENT– §1116 (a)

• 4,000 + TRADEMARK SUITS FILED ANNUALLY

• ABOUT 45 GO TO TRIAL


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)


ATTORNEY’S FEES

• “EXCEPTIONAL CASES” ONLY

• USUALLY MEANS WILLFUL INFRINGEMENT

§ 1117 (a)


DESTRUCTION

• A NICE MEDIEVAL REMEDY

• ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?]

§ 1118


DEFENDANT’S REMEDIES

• ATTORNEY’S FEES IN EXCEPTIONAL CASES

§ 1117 (a)

• ORDER TO CANCEL REGISTRATION

§ 1119

• CASES:

– KELLOGG

– XTREME [PART 2]


trademarks prof. janicke fall 2014. 2014ip survey -- trademarks2 to be a “mark”: words or symbol...

Documents