Comm law 2- trademarks

trademarks can be…

word, symbol, phrase, colors, shape, sounds, packaging, etc.

purposes of trademarks

• used to identify and distinguish goods/services and it indicated the source of the goods

• used to guarantee that the goods are constant quality

• advertise the good

other identifying marks

• service marks

• certification marks

• collective mark

service mark

airlines, hotels, etc.

certification marks can certify…

• standards of safety or quality have been met (ex: car seats)

• composition (ex: 100% wool)

• mode of manufacture (ex: handmade, machine made)

collective mark

mark a group will get and everyone will use it (ex: police officers), used to indicate either that a product, trade association, or other organization belong to a collective group

laws governing trademarks are always

federal (always goes to federal court)

if you were to sue in state court it would be referred to as

unfair competition

Lanham Act 1946

Amended in 1996- what is a trademark? what level of protection? what if someone infringes?

protection under the Lanham Act is based on

distinctiveness

inherently distinctive types

• fanciful

• arbitrary

• suggestive

fanciful

trademark that has no meaning until used in connection with a particular product/service (ex: pinterest, clorox nikon, etc.)

arbitrary

real words whose ordinary meaning has nothing to do with product or service (ex: apple, amazon, camel, etc.)

suggestive

• suggest something about the product or service without directly describing it

• have to use some exercise of the imagination to associate the word with the product/service

• ex: chipotle, netflix, coppertone, etc.

• most preferred but is risky because courts and trademark officers may deem them descriptive

not inherently distinctive

no protection under Lanham Act

descriptive marks

directly describe some portions of goods/services or the goods themselves (ex: first/surnames and geographic terms)

descriptive mark exceptions

1- if used in an arbitrary way (ex: salem cigarrettes)

2- secondary meaning: trademark owner must show the consuming public primarily associates that mark with the particular producer rather than the underlying product, takes 5 years before you can apply for it and is shown by surveys (ex:shark, windows, vision works, etc.)

generic marks

describes general category to which underlying products belong

genericide

when your trademark has been too successful (company becomes generic: kleenex, chapstick, etc.)

acquiring trademark rights and protections

1. trademark search

2. first to use in commerce

3. first to register mark

trademark search

search databases to make sure it is not already in use- record search because it is evidence of your good faith effort to determine preexisting rigths)

being the first one to use the mark in commerce

limited protection- limited to where you do business- where TM is being used and sold plus reasonable expansions

being the first to register the mark with the patent trademark office

have protection in entire U.S. except if someone else is using it in small area

process:

• file TM application and fee with PTO

• PTO reviews it

• issue TM

benefits of registering a trademark

• nationwide use of the mark

• enable trademark owner to bring infringement suit in federal court (faster and has precedent)

• fall under Lanham Act: entitled to treble (x3) damages and attorney’s fee

• protected for 10 years and is renewable forever

• right to ban/prevent importation into the U.S. articles that bare an infringing mark

trademark infringement

1. establishing infringement

2. determining what is confusing

establishing infringement

proof of TM infringement (all 3):

• a valid mark

• priority of usage

• have to show there is a likelihood of confusion in the minds of purchasers (don’t need evidence of actual confusion)

determining what is confusing

easy case: identical mark, an identical mark on an unrelated product (apple vs. apple records)

more confusing: similar marks

factors to determine confusion

• strength of senior user’s mark

• degree of similarity between the marks

• proximity of the goods, the similarity of marketing channels

• likelihood the plaintiff may “bridge the gap” (spread into that business)

• evidence of actual confusion

• junior user’s good faith/ defendant’s intent

• quality of junior user’s product

• sophistication of the purchasers (i.e. the degree of caution exercised by the typical purchaser- car vs shampoo)

• junior user’s goodwill

Virgin Enterprises v. Virgin wireless case example

Virgin enterprises sued Virgin Wireless

Legal issue of case

whether “virgin wireless” would be confusing to the consumer

Which court was this case settles in?

court of appeals (2nd circuit)

court findings-strength of mark

exceptionally strong (international use, many years), found the strength of the marek in addition to the fact that virgin was known for expanding its brand into different areas which made it distinctive/ eligible for protection

court findings- similarity of mark

identical

court findings- proximity of the goods

Virgin enterprises had not yet expanded into telecommunications in the U.S. (they had globally)- company is known to expand (would likely get into telecommunications in the U.S.)

court findings- likelihood of expansion

highly likely- stronger protection

court findings- evidence of confusion

not necessary but Virgin Enterprises had evidence

court findings- defendant good faith intent

evidence shows they chose it in bad faith (trying to gain off large company)

court findings- quality of the junior users product

neutral (weren’t inferior or superior)

court findings- sophistication of purchases

weren’t sophisticated

ruling and takeaway

ruled in favor of Virgin Enterprises, courts give favor and protection to a strong trademark

defenses against trademark infringement- first sale doctrine

provides TM owner with only protection against the 1st sale (ex: can resell old calloway used golf clubs but can’t sell new golf clubs and put calloway logo on it)

defenses against trademark infringement- fair use doctrine

allows a competitor to use the rival’s trademark to identify its product

fair use: defendant must show it used the mark…

• other than as a mark

• in a descriptive sense

• used in good faith

*all 3

defenses against trademark infringement- nominative fair use

defendant uses a mark to reference a competitor’s product even if the defendant’s goal is simply to describe their own product

for nominative fair use the defendant must prove

1. the use of the mark was necessary to describe both TM owner’s product/service and defendant’s product/service

2. used only as much of the mark as reasonably necessary to identify the TM owner’s product

3. the defendant did nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the holder of the trademark

genericity

die by genericide- become generic (ex: kleenex)

paradies

not to sell but to make fun of

first amendment

making a critique of trademark, not selling

remedies for trademark infringement are…

spelled out in lanham act

remedies- monetary relief

1. defendant’s profits

2. damages sustained by plaintiff

3. costs of the action (attorney/court fees, etc.)

4. damages tripled (trebled) upon showing bad faith

statutory damages

entitled to by law only if you are registered

Trademark Dilution

Amendment to Lanham Act

Amendment (trademark dilution) provides…

provides that famous marks are eligible for federal protection when a 3rd party’s use of the mark dilutes the famous mark’s distinctiveness even in the absence of competition/likelihood of confusion/mistake/deception (doesn’t matter why)

dilution by blurring

applies where the defendant’s use of the mark would diminish the uniqueness of the mark (ex: using “coca cola” to sell other unrelated products, or mcdonalds and prefix “mc”)

dilution by tarnishment

defendant’s use of the mark would negatively impact the reputation of the mark (ex: ben and jerry’s sued adult porn site called “ben and cherries”)

proof of dilution

show you have famous marks through the use of surveys

Tm dilution TM owner must prove…

1. Plaintiff owns a famous mark

2. Defendant is using the mark in commerce that allegedly is diluting the mark

3. the mark’s similarity gives rise to an association between the two that is is likely to impair the trademark (in distinctiveness or reputation)

remedies for dilution

only injunctive relief (equitable remedy, getting company to stop)

forms of loss of trademark rights

abandonment and genericide

abandonment

stop selling/don’t renew

genericide

TM becomes generic (ex: chapstick), can be prevented by suing companies

Trade dress is…

covered by Lanham Act

Trade Dress defn.

includes all elements making up the total visual image by which a product or service is presented to consumers (overall composition/design)

Trade dress is

treated the the same as trademark infringement

Trade dress infringement

same 10 factor test as trademarks

Trade dress infringement example

heart attack grill vs heart stoppers grill