Preface 5 results
- This Nutshell addresses the major doctrines of U.S. trademark and unfair competition law, with a small section devoted to state right of publicity law. It is designed for use in conjunction with trademarks and unfair competition law courses, or with the trademark law unit of intellectual property survey courses. The book may be used alongside any trademark law casebook, although the organizational structure tracks that of the casebook Trademarks and Unfair Competition: Law and Policy (4th Edition 2013) by Graeme B. Dinwoodie and Mark D. Janis.
- There’s a rumor that trademark and unfair competition law is easier to comprehend than any other branch of intellectual property law. Don’t place too much stock in it. It’s true that trademark cases feature more accessible fact patterns than, say, patent cases, and it’s true that the trademark statute isn’t as dense as some parts of the patent or copyright statutes.
- There’s another rumor about trademark and unfair competition law: it’s more fun to study than any other branch of intellectual property law. This, of course, is true.
- Nonetheless, trademark law presents some subtle difficulties that have tripped up unsuspecting students over the years. One such difficulty is that trademark law encompasses a dual system of registered and unregistered rights—not the norm in U.S. intellectual property law. A second is that trademark law rests heavily on evidence of consumer perceptions, and consumers are notoriously fickle. A third is that trademark law is only beginning to grapple with the challenges presented by online advertising practices and global commerce. And there are others.
- The book attempts to present trademark law in a straightforward, concise way. It summarizes the leading cases and attempts to show the ways in which those cases fit together coherently. It addresses the policy debates that underlie these cases. It also explains the technical analyses that students tend to find most difficult, such as the analysis of priority and use.
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Chapter 1. Introduction to Trademark and Unfair Competition 51 results (showing 5 best matches)
- Today’s “trademark and unfair competition” law originated in the U.S. in the early nineteenth century, or arguably earlier, as unfair competition law. The concept of limited property rights in trademarks described in the preceding section developed later. Even into the early twentieth century, many courts viewed trademark law as “but a part of the broader law of unfair competition.”
- The law of trademarks in the U.S. is usually referred to today as trademark
- This chapter provides an introduction to the field of trademark and unfair competition law. It begins with a discussion of the nature and definition of trademarks (Section A). It then turns to a discussion of the relationship between unfair competition actions and trademark infringement actions (Section B). Next, it presents an overview of the U.S. trademark system (Section C). Finally, it concludes with a brief introduction to the contents of this text (Section D), explaining how the text is laid out and what each chapter covers.
- Thus, under the modern U.S. framework, the law of trademarks predominates, with the law of unfair competition usually playing a modest supplemental role. The next section explains the goals of the modern trademark system and introduces the primary sources of law, institutions, and causes of action.
- The early unfair competition cases frequently involved simple tort claims of “passing off” (or “palming off”). A typical claim of passing off arose when a defendant attempted to pass off its goods in the marketplace as those of the plaintiff, presumably to take advantage of the plaintiff’s goodwill and to divert sales away from the plaintiff. A defendant might engage in passing off by marking its goods with a mark that resembled the plaintiff’s and then selling those goods as if they emanated from the plaintiff. The passing off claim rested on the tortious nature of the defendant’s conduct (and the resulting injury to the plaintiff’s business and to competition more generally). This was arguably broader, and perhaps different from, a pure property-based cause of action such as trademark infringement, which would rest on the existence of valid trademark rights in a mark and evidence that those trademark rights were violated.
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Chapter 7. Confusion–Based Trademark Liability Theories 104 results (showing 5 best matches)
- Under the modern U.S. trademark law, likelihood of confusion is the touchstone for determining liability. This was not always the case. Under the Trademark Act of 1905, it was not clear that liability turned on consumer confusion at all. Section 16 of the 1905 Act, the primary infringement provision, imposed liability on anyone who copied another’s trademark without consent and affixed it to merchandise “of substantially the same descriptive properties” as the merchandise set forth in the registration. This language did not preclude the use of a confusion inquiry, but it certainly did not require it, either. Similarly, in cases involving unregistered marks, decided under the rules of common law unfair competition, it was not clear that consumer confusion was the dominant inquiry. The decision in ...marketing ice cream under the BORDEN name. The old company had sold many dairy products under the BORDEN name, but not ice cream. The new company was well aware of the old company and...
- A trademark infringement claim under Lanham Act Section 32(1)(a) has three elements: (1) the plaintiff owns a valid, registered mark; (2) the defendant is engaged in unauthorized use of the mark; and (3) that use causes a likelihood of confusion. A claim of unfair competition by false designation of origin under Lanham Act Section 43(a)(1)—which may be conceived of as a claim for infringement of unregistered trademark rights—has three similar elements: (1) the defendant is engaged in unauthorized use of a mark; (2) the plaintiff owns valid rights in the mark; and (3) the defendant’s use causes a likelihood of confusion. , 269 F.3d 270 (3d Cir. 2001) (providing a slightly different three-element test). This chapter deals with the unauthorized use element (element (1)) and the likelihood of confusion element (element (3)), with an emphasis on the latter.
- The views expressed in have been definitively rejected. By the time Congress enacted the Lanham Act in 1946, the fundamental inquiry in trademark infringement and unfair competition claims was whether the alleged infringer had caused a likelihood of confusion. Congress incorporated the phrase “likely to cause confusion” into Lanham Act Section 32. Courts recognized that likely confusion had become the dominant inquiry, and that, unlike the 1905 Act, the Lanham Act “made plain that infringement might be found and prohibited, though the use of the registered mark was upon goods having different descriptive properties than those set forth in the registration, and though in consequence there was no actual competition between the parties.” 374 U.S. 830 (1963). In the case, the court found that defendant’s adoption and use of BLACK & WHITE for beer infringed plaintiff’s registered mark BLACK & WHITE for Scotch whiskey because the defendant’s use would have been ...’s mark, and the...
- Most trademark cases do not involve close questions about actionable use. Suppose that Alpha, Inc. owns the mark HOOSIERS for basketballs. Beta, Inc., then introduces HOOSIER brand basketballs, and sells them in competition with Alpha, without Alpha’s authorization. The word HOOSIER is printed in large letters on Beta’s basketballs, and also appears on Beta’s packaging and advertising materials. Beta has unquestionably engaged in actionable use, because Beta is affixing the term HOOSIER to its products and selling those products in commerce. Of course, Beta’s activities go even further—they exceed what is required for actionable use, in that Beta is probably using the term HOOSIER as a brand for Beta’s own products. That is, Beta is surely engaging in the sort of use that would have qualified Beta to assert trademark rights in HOOSIER for basketballs, had Beta been able to establish that its activities preceded Alpha’s.
- Contributory infringement is the most common indirect infringement claim discussed in U.S. trademark cases, but is it not the sole route to indirect infringement liability. Courts have discussed the possibility of applying common law vicarious liability concepts to trademark infringement. In , 955 F.2d 1143 (7th Cir. 1992), the court appeared to suggest that vicarious liability for another’s trademark infringement could apply where the defendant and direct infringer have an apparent or actual partnership, the authority to bind one another in transactions with third parties, or authority to exercise joint ownership or control over the infringing product. Where the defendant and direct infringer can be shown to be in a principal/agent relationship, liability might also conceivably arise as a matter of agency law.
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Chapter 2. Distinctiveness 80 results (showing 5 best matches)
- Prior to the passage of the Lanham Act in 1946, a different set of labels prevailed in distinctiveness analysis. Pre–1946 terminology distinguished between technical trademarks (what we now would call inherently distinctive marks) and trade names. Only technical trademarks could be registered under trademark law. Descriptive marks might be protected upon a showing of secondary meaning, but only under unfair competition principles. In addition, prior to 1988, the statute did not refer to “generic” marks, but instead used the label “common descriptive names.”
- Distinctiveness in trademark law is not a synonym for novelty. The word APPLE is not new, but may be distinctive under trademark law when used in connection with computers. Likewise, distinctiveness is not simply an assessment of creativity. The phrase FROSTED FLAKES for a frosting-coated corn flake cereal may not be especially creative, but, after a period of use in the marketplace, may well be recognized as distinguishing the maker’s goods and identifying source, and thus may be deemed distinctive. The conditions for protecting trademarks differ from those for protecting patents or copyrights, respectively. Through its reliance on distinctiveness as a condition for protection, the trademark regime differs from the patent and copyright regimes, which rely on conditions such as novelty and originality, respectively.
- In light of these concerns, some courts in genericness cases have awarded mark owners some limited injunctive relief against infringers even when finding that the mark at issue is generic. For example, even though the court found that MURPHY BED was generic for a bed that folds into a wall closet, the court precluded the mark owner’s competitor from advertising its product as the “original” or “genuine” Murphy Bed. , 874 F.2d 95 (2d Cir. 1989). In the THERMOS case, the court required that when the competitor used the term “thermos,” it also used its house mark (ALADDIN’S). , 321 F.2d 577 (2d Cir. 1963). Courts have justified these awards of relief by permitting the mark owner to assert a claim for unfair competition under 15 U.S.C. § 1125(a). , 872 F.2d 1035 (D.C. Cir. 1989). Necessarily this is a variety of unfair competition theory that does not depend upon the existence of still valid trademark rights.
- The law recognizes two classes of distinctive marks: “inherently” distinctive marks and marks that have acquired distinctiveness. A mark that is inherently distinctive is one that is likely to be perceived as distinguishing goods or identifying source merely because of the nature of the mark or the context of its use. A mark that has acquired distinctiveness is one that comes to be perceived as distinguishing goods or identifying source as a result of its use in the marketplace. Restatement (3d) of Unfair Competition § 13 (1995). If a mark is inherently distinctive, no evidence of its actual reception in the marketplace is needed in order to adjudge the mark distinctive. If a mark fails to qualify as inherently distinctive, the mark owner must produce evidence of use in the marketplace in order to establish distinctiveness.
- Concerns about the trademark/copyright interface also animate the TTAB’s rules about whether to permit the author of a book to claim that his or her name serves as a mark when used in connection with the book. According to the TTAB, a writer’s name cannot be registered as the trademark for a novel, because allowing a trademark registration could “perpetuate the [copyright] monopoly,” in particular by creating a potential obstacle for those who wished to copy and market the novel after its copyright had expired (because the corresponding trademark rights in the author’s name used in connection with the novel could endure indefinitely).
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Copyright Page 4 results
- Nutshell Series, In a Nutshell
- This publication was created to provide you with accurate and authoritative information concerning the sub-ject matter covered; however, this publication was not necessarily prepared by persons licensed to practice law in a particular jurisdiction. The publisher is not engaged in rendering legal or other professional advice and this publication is not a substitute for the advice of an attorney. If you require legal or other expert advice, you should seek the services of a competent attorney or other professional.
- Printed in the United States of America
- © 2013 LEG, Inc. d/b/a West Academic Publishing
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Title Page 3 results
Chapter 9. Permissible Uses of Another’s Trademark 61 results (showing 5 best matches)
- In a number of circumstances, the trademark law permits one party to use another’s trademarks without the other’s permission. Some of these permissible uses are types of uses that typically would not give rise to a likelihood of confusion or dilution in any event. Other permissible uses do pose some threat of confusion or dilution, yet are excluded from liability in order to safeguard competition or to protect speech values. A number of loosely related doctrines, developed primarily in the courts, may be invoked to support a claim of permissible use of another’s trademark. In Section A, we consider the doctrine of trademark fair use (itself a collection of doctrines). In Section B, we then turn to cases involving the use of another’s trademark on genuine goods, where the “first sale” doctrine and related rules are relevant. We conclude in Section C with an analysis of parody and free speech claims involving trademarks.
- Suppose that a firm is in the business of purchasing and reselling goods that were originally put on the market by firm A, and bear firm A’s trademark. There are three common scenarios in which ’s resale activity could raise issues under the trademark laws. First, where the goods are new, but may incur trademark liability under some circumstances. Second, where the goods are used, and may be liable in some cases. Third, if the goods were originally manufactured for overseas markets, and has imported them for resale without A’s authorization, may risk either trademark liability or trademark-related penalties imposed under the authority of customs officials. We explore all three scenarios in the following paragraphs.
- Traditionally, speech interests have come into issue in trademark cases in which a trademark owner sues an unauthorized user and the user claims that the use should be shielded from liability as a parody or other artistic use. There is no universally accepted definition of parody for purposes of trademark law, but in general, a parody of a trademark is one that evokes the original mark while simultaneously conveying that it is in fact not the original mark. That is, a parody communicates both the “idealized image” associated with the original mark and an irreverent or mocking representation
- At common law, courts long ago developed the principle that even if a common English word became the subject of trademark rights, those rights did not extend to the use of the word in its ordinary sense to convey its original meaning. In the absence of such a limitation, trademark owners might deprive others of the use of fundamental elements of the language, and, in many cases, such uses did not give rise to a likelihood of confusion among consumers in any event. , 80 U.S. 311 (1872). Eventually, this principle came to be referred to as the “fair use” defense to trademark liability.
- United States trademark law initially embraced international exhaustion, but has since then moved to a regime of national exhaustion rules. At the turn of the twentieth century, U.S. courts had adopted a notion of the universality of trademarks, meaning that if the mark owner had authorized the placement of its mark on genuine goods, the trademark was legitimate universally, irrespective of where the goods were bought or sold. It followed that the sale of marked goods overseas exhausted the mark owner’s rights just as a domestic sale would exhaust them. However, in
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Chapter 3. Functionality 50 results (showing 5 best matches)
- The functionality doctrine may play a particularly important role in ensuring that product design trade dress protection under the Lanham Act is compatible with the protection of inventions under utility patent law. Lanham Act protection may extend indefinitely; utility patent protection subsists only for twenty years from the utility patent application filing date. If the trademark system permitted protection for functional subject matter, then a mark owner might enjoy intellectual property protection akin to a perpetual patent. At least, this is one of the primary concerns underlying the functionality doctrine, as many of the functionality cases reflect. For example, in , 514 U.S. 159 (1995), the Supreme Court explained that “the functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature.” The Court said that it was the...
- standard was rejected as unpersuasive in because under that standard, “the commercial success of an aesthetic feature automatically destroys all of the originator’s trademark interest in it,” even if there is no evidence that competitors would be foreclosed from developing equally desirable alternative designs. On the other hand, the court did not reject the concept of aesthetic functionality altogether; it merely insisted that there be a finding that allowing trademark protection would hinder competition by limiting the range of alternative designs available to rivals. A similar aesthetic functionality standard appeared in the Restatement (3d) of Unfair Competition, Section 17(c), and the standard bears a close resemblance to factor (3), which had traditionally been used in mechanical functionality cases as noted above.
- The trademark law concept of functionality must be distinguished from the concept of functionality that is used in the common lexicon. When people describe a design as being “functional,” the term may simply refer to the fact that the underlying product, or features of the product, have some use. A product design that is functional in the trademark sense is one that is so important to competing in the market for the product that even if the design is distinctive, trademark protection must be denied. To emphasize the distinction between functionality in its trademark law sense and functionality in its colloquial sense, some courts refer to the trademark law concept as “de jure functionality” and the colloquial concept as mere “de facto functionality.”
- In , the mark owner (Wallace) had appealed from the denial of a preliminary injunction motion. Wallace claimed trade dress in a design for a line of silverware; defendant Godinger produced a much less expensive line of silver-plated products. Both the Wallace and Godinger silverware included elements that the court described as “typical baroque elements” such as “scrolls, curls, and flowers.” Both the trial and appellate courts concluded that allowing Wallace to claim trademark protection would hinder competition in the silverware market, or at least in the market for baroque silverware. The court struggled with Wallace’s apparent effort to claim basic baroque elements, as opposed to claiming the precise expression of those elements in a particular design.
- factors (3) and (4) would seem to go to the heart of the concerns that motivate functionality doctrine. If a rival can adopt no alternative design that performs the function equally well (factor 3), then there would seem to be good reasons to deny trademark protection and permit protection, if at all, through the patent system lest competition be adversely affected. Similarly, if alternative designs theoretically exist, but practical considerations (such as cost) render them non-viable (factor 4), then this, too, should cut against the grant of trademark protection.
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Outline 50 results (showing 5 best matches)
- Chapter 1. Introduction to Trademarks and Unfair Competition
- B. Nature of Unfair Competition; Relationship With Trademarks
- 2. Overview of Elements; In-gross Property Right; Relationship With Copyright and Trademark
- C. Use of Another’s Trademark in Parody, Art, or Speech
- A. Nature of Trademarks
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Chapter 4. Use 71 results (showing 5 best matches)
- The concept of “use” plays numerous roles in U.S. trademark law. This chapter focuses on two. First, we briefly consider the link between the concept of use “in commerce” and the exercise of federal jurisdiction over trademark matters (Section A). Second, we consider the role of adoption and use in establishing trademark rights (Section B) and maintaining trademark rights (Section C). The concepts of use that we cover in this chapter are uses undertaken by, or with the permission of, the party claiming trademark rights. Questions may also arise about whether activities undertaken without the trademark owner’s consent constitute unauthorized “use,” or “use” that should be shielded as permissible. We cover those aspects of use in Chapters 7 and 9, respectively.
- Another trademark law concept warrants mention here because it is reminiscent of the naked licensing cases, although it does not necessarily result in abandonment. United States trademark law permits trademark rights to be assigned, but only along with “the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark.” Lanham Act § 10(a)(1). This rule reflects the traditional conception of trademark rights as limited property rights in marks—limited in the sense that the rights only exist to the extent that the marks symbolize the owner’s goodwill when used in connection with particular goods and services. An assignment unaccompanied by the goodwill that the mark represents is characterized as an “in gross” assignment and is deemed invalid. ...Cir. 1999). The most direct consequence of invalidating an assignment is that the transfer of rights that the assignment purports to effectuate...
- In the usual case, there is little need to question whether the person undertaking the use of a mark is doing so on behalf of the trademark claimant. If Ford employees manufacture a Ford nameplate and affix it to the chassis of a Ford automobile, the trademark law takes the position that Ford is using the mark, recognizing that the employment relationship between Ford and its employees removes
- The U.S. trademark system may be considered a “first-to-use” system. In principle, this means that the first to adopt and use a distinctive and non-functional mark in connection with goods or services has the superior claim to rights in the mark. Courts sometimes speak of this principle in terms of “priority”: the first user enjoys priority over others who seek to claim rights in the same or a similar mark. Most other major trademark systems in the world are first-to-register systems. These systems operate on the principle that the first to file an application for registration earns priority.
- Similarly, in , 33 U.S.P.Q.2d 1385 (TTAB 1994), the TTAB rejected abandonment arguments in an opposition proceeding, in which a number of retailers opposed the University of Wisconsin’s application to register WISCONSIN BADGERS and other marks for various products and services. There was evidence that the University had permitted scores of third-party uses over a long period of time, but the TTAB concluded that these uses should be treated as having been carried out under an implied license from the university. Satisfactory quality control under this implied license arrangement in fact had been maintained, according to the TTAB, even though it was difficult to point to affirmative steps undertaken by the University to effectuate that goal. The precedential value of this ruling outside the collegiate marks context is unclear. The TTAB’s approach may be viewed more as a pragmatic response to universities’ attempts to secure trademark rights than as a general pronouncement on the law...
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Chapter 12. Remedies 25 results (showing 5 best matches)
- Section 34 of the Lanham Act provides that the courts “shall have the power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable,” as a remedy in Lanham Act cases. The statute specifies that injunctive relief may be sought in order to prevent “the violation of any right of the registrant” (typically Section 32 trademark infringement actions), or a violation of Section 43(a) (encompassing actions to enforce unregistered marks and false advertising actions), Section 43(c) (actions against dilution), or Section 43(d) (actions against cybersquatting). Although the decision to grant injunctive relief in a Lanham Act case is a matter of the court’s equitable discretion, the grant of such relief is typical, because damages are normally regarded as inadequate to compensate for reputational injury of the type that the Lanham Act seeks to prohibit. Restatement (Third) of Unfair Competition, § 35, cmts. b, h (1995).
- test calls for the plaintiff to demonstrate “(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.” In earlier cases, courts had elaborated slightly different tests. For example, in , 202 F.3d 1199 (9th Cir. 2000), the Ninth Circuit held that a plaintiff is entitled to a preliminary injunction in a trademark case when it demonstrates either (1) a combination of “probable success on the merits” and “the possibility of irreparable injury” or (2) the existence of “serious questions going to the merits” and that “the balance of hardships tips sharply in his favor.” Some courts also had explicitly considered “the effect on the public interest.” , 807 F.2d 1136 (3d Cir. 1986). In light of the
- In , 626 F.3d 958 (7th Cir. 2010), Judge Posner exhaustively catalogued the variety of tests applied by the various circuit courts in assessing exceptionality in trademark cases. Some jurisdictions require a showing of bad faith; others do not. (For example, in , 486 F.3d 100 (3d Cir. 2007), the court called for a showing of “culpable conduct,” either connected to the Lanham Act violation itself or related to the way that the party handled the litigation.) Some jurisdictions distinguish between prevailing plaintiffs and prevailing defendants; others do not, and these generalizations do not fully capture the variations in the circuits’ tests. In , Judge Posner concluded that a Lanham Act case should be found exceptional (and attorney fees awarded) if (1) “the losing party was the plaintiff and was guilty of abuse of process in suing,” or if (2) “the losing party was the defendant and had no defense yet persisted in the trademark infringement or false advertising for which he was...
- In fashioning orders for injunctive relief, courts are likely to take into account not only the specific behavior that triggered Lanham Act liability, but also the court’s interest in avoiding fresh litigation between the same parties over very similar subject matter. In view of that interest, some courts apply a “safe distance” rule when determining the appropriate scope of injunctive relief. For example, according to the Sixth Circuit, “a competitive business, once convicted of unfair competition in a given particular, should thereafter be required to keep a safe distance from the margin line—even if that requirement involves a handicap as compared with those who have not disqualified themselves.” , 319 F.3d 770 (6th Cir. 2003). An injunction that prohibits an infringer from using a particular logo “or colorable imitations thereof” is sufficiently specific to satisfy the requirements of Rule 65(d) of the Federal Rules of Civil Procedure (which prescribes the required contents of...a
- The equitable doctrine of laches is accepted in U.S. trademark law as a limitation on Lanham Act remedies. The test for laches has two elements: (1) the plaintiff’s delay in bringing suit must be unreasonable; and (2) the defendant was prejudiced by the delay. , 603 F.3d 1133 (9th Cir. 2010). To analyze whether delay is unreasonable, courts have tended to consider the most closely analogous state law statute of limitations. 476 U.S. 1158 (1986). For example, in , the court concluded that a three-year delay was unreasonable because it exceeded the relevant state statute of limitations. The court ruled that the delay triggered a presumption of laches.
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Chapter 6. Geographic Limits on Trademark Rights 61 results (showing 5 best matches)
- As we saw in Chapter 4, to establish entitlement to United States federal trademark rights, a party must establish use in commerce, either by showing actual use or, where permitted, by relying on constructive use. The use in commerce requirement also presents a number of issues having to do with the of trademark rights—in particular, the geographic scope of those rights. In Sections A and B, we discuss the rules that dictate whether one party’s use of a mark in commerce in one geographic region of the United States is sufficient to establish trademark rights that are superior to the rights of someone who has long been using the same or a similar mark in another geographic region of the United States. The rules differ depending upon whether the marks at issue are asserted at common law (see Section A) or under a federal registration (see Section B).
- doctrine defines the geographic limits of a party’s common law trademark rights. Analogously, some courts accept the proposition that there can be a geographic dimension to a party’s abandonment of its common law trademark rights. For example, in , 399 F.3d 754 (6th Cir. 2005), the plaintiff used the TUMBLEBUS mark itself in Louisville, Kentucky, and arguably engaged in naked licensing in various other parts of the United States. The question was whether the naked licensing should result in loss of the plaintiff’s common law rights, or only a loss of rights in those areas where the naked licensing occurred. The court chose the latter, recognizing that common law rights in mark could be lost in certain geographic areas but retained in others. The court in tied this notion of “partial geographic abandonment” to the Lanham Act Section 45 definition of abandonment. That definition specifies that abandonment occurs when a term “lose[s] its significance as a mark.” In ...in... ...in the...
- Trademark rights are said to be territorial, but modern commercial activities are rarely confined within national boundaries. In the cases discussed below, a mark owner has adopted and used a mark overseas, and then subsequently has sought to enjoin a competitor who is using the mark in the United States. Disputes such as these challenge traditional notions of the territoriality of the trademark right.
- In Sections C and D, we discuss the U.S. trademark rules that govern the extent to which trademark rights can extend across national boundaries. Section C covers scenarios in which a party who has used a mark outside the U.S. seeks to prevent another party from using the mark within the United States. Finally, Section D analyzes whether it possible for a U.S. trademark holder to restrain conduct occurring abroad on the basis of his or her U.S. trademark rights.
- The Second Circuit thus turned to the Lanham Act, and found no statutory basis for a well-known marks doctrine codified there. ITC had argued that Lanham Act Section 44(b) (which guarantees foreign mark owners the benefits of certain treaty rights, including those of the Paris Convention and TRIPS Agreement) coupled with Section 44(h) (which protects foreign mark owners from unfair competition) effectively created a well-known marks doctrine. The Second Circuit rejected this construction of Section 44, saying that Section 44(b) was cabined by the principle of territoriality and Section 44(h) could afford foreign mark owners protection no greater than that conferred by Section 44(b). The absence of a Lanham Act basis for the well-known marks doctrine was fatal, because the international treaty obligations in the Paris Convention and TRIPS were not self-executing.
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Chapter 5. Registration 65 results (showing 5 best matches)
- In its initial stages, trademark registration is an process in which an applicant negotiates with an examiner, but no formal adversary to the applicant is present. It has long been understood that processes present opportunities for abuse by those applicants who are inclined to misrepresent or omit relevant facts in order to procure trademark registrations. Accordingly, the trademark laws include rules designed to deter fraudulent procurement. If a registration was procured fraudulently, the registration will be cancelled, and Lanham Act § 14(3) provides that a petition for cancellation based on fraudulent procurement may be filed at any time. In addition, even after a registration becomes incontestable (through the process discussed below in A.4), the registration is subject to challenge on the ground that the registration (or the incontestable right to use the mark) was obtained fraudulently. Lanham Act § 33(b)(1).
- A geographic indication is not quite like a trademark. Whereas a trademark identifies goods as originating from a particular producer, a geographic indication indicates that the goods originate from any of a variety of producers located in a particular geographic region—such as “Georgia” for peaches or “Idaho” for potatoes. The TRIPS agreement defines geographical indications as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.” TRIPS Art. 22(1). The TRIPS agreement does not require member states to provide for the registration of geographical indications. The U.S. trademark system does not provide a registry for geographical indications, although the EU does. The TRIPS agreement does require member states to offer protection against designations that mislead the public as to the... ...in...
- International registration: Section 66(a) Extension of Protection Under the Madrid Protocol.
- Lanham Act Section 2 provides that no trademark (or, specifically, no trademark “by which the goods of the applicant may be distinguished from the goods of others”) may be refused registration on the Principal Register unless the PTO (in ex parte examination) or the mark challenger (in oppositions, cancellations, or litigation) demonstrates that a substantive bar to registration applies. Sections 2(a)–(f) spell out those substantive bars. Some of the Section 2 bars incorporate common law concepts of distinctiveness, functionality, and priority of use, topics that we discussed in Chapters 2–4, respectively. Other Section 2 bars augment the common law.
- If the PTO determines that the mark is entitled to registration, it publishes the mark in the Official Gazette of the United States Patent and Trademark Office. Lanham Act § 12. Within thirty days of the publication date (extendable up to a total of 180 days under 37 C.F.R. § 2.102(c) (2003)), interested members of the public may file a petition opposing the PTO’s decision to register a mark. Lanham Act § 13. A trademark opposition is an inter partes administrative proceeding conducted before the Trademark Trial and Appeal Board (TTAB), which exists to “remedy oversight or error” that may have occurred in ex parte examination.
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Chapter 11. Endorsement, Attribution, and the Right of Publicity 43 results (showing 5 best matches)
- By contrast, in many states, the right of publicity is recognized as an intellectual property right independent of the rights of privacy. Similarly, the Restatement (Third) of Unfair Competition (1995) expressly recognizes the right of publicity in §§ 46–49.
- Traditional trademark law provides only limited protection for aspects of a person’s identity. One’s name and likeness can function to indicate the source of particular goods or services, and so is the type of subject matter that could qualify for trademark protection under the rules discussed above in Chapters 2–5. Lanham Act Sections 2(c) and 2(a) (through its “false connection” clause), prevent applicants from registering another’s name as a trademark without the other’s consent. See Chapter 5. Lanham Act Section 43(a) may provide limited rights against false affiliation as discussed above, although the protection is minimal after . And Lanham Act Section 47 provides liability where a person registers a domain name consisting of the
- Yet another test, advocated in the Restatement of Unfair Competition, has sometimes been called the “relatedness” test. Under this test, there is no right of publicity liability for the use of a person’s identity in a work that is “related” to the person (such as a news story about the person, an unauthorized biography, or a fictional work).
- The notion of a “right of publicity” in U.S. law is usually traced to Judge Frank’s opinion in , 202 F.2d 866 (2d Cir. 1953). In prior cases involving claims that one party had misappropriated the identity of another for commercial purposes, courts had attempted to address the claims under the law of privacy rights. Privacy rights were conceived of as personal rights, actionable because their violation gave rise to psychic damage. But privacy rights were a poor fit for typical cases in which the likenesses of well-known athletes or performers were appropriated without consent for commercial gain. The celebrities were thought to have waived their privacy interests to some degree merely by virtue of their celebrity status, and, in any event, the damage complained of was primarily commercial damage, not psychic damage. In , Judge Frank reasoned that in addition to a right of privacy, there should be a “right of publicity,” that it should be actionable because its violation gives rise...
- By contrast, the court in , 332 F.3d 915 (6th Cir. 2003) refused to analogize attribution claims to trademark claims. The court held that “as a general rule, a person’s image or likeness cannot function as a trademark” because images and likenesses of a person “do not distinguish the source of goods.” The case involved images of the professional golfer Tiger Woods, and the court reasoned that images of Woods were so ubiquitous in various forms of media that “[n]o reasonable person could believe that merely because these photographs or paintings contain Woods’s likeness or image, they all originated with Woods.” This strikes us as an unverified empirical assumption that surely should not be extrapolated to invalidate any claim of Lanham Act protection for a personal likeness.
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Chapter 8. Non–Confusion–Based Claims: Dilution, Cybersquatting, and Counterfeiting 78 results (showing 5 best matches)
- Trademark owners may also seek compensatory damages for trademark counterfeiting. There are two alternative avenues for monetary relief. First, the trademark owner may invoke the regular damages provision, Section 35(a), and prove actual damages. (See Chapter 12 for additional discussion of Section 35(a)). In this case, Section 35(b) provides that the court shall, unless “extenuating circumstances” apply, award the mark owner three times the actual damages, and a reasonable attorney’s fee, if the counterfeiting was intentional as defined in Sections 35(b)(1) and (2).
- Viewed through the prism of these provisions, trademark counterfeiting may seem to amount to little more than a relatively blatant form of trademark infringement that may warrant correspondingly more severe penalties as compared to the ordinary trademark infringement case. That is one way to understand the current Lanham Act approach to trademark counterfeiting, although it is not entirely satisfying, for several reasons. First, whereas civil liability for trademark infringement rests upon a showing of likelihood of confusion, it might be incorrect to describe trademark counterfeiting as merely an extreme and crude instance of causing likely confusion. If a street vendor is selling a watch that is marked with an exact replica of the ROLEX mark, but the watch is priced at $10 and is obviously made from inferior materials, it is unlikely that a consumer at the point of sale would be confused. One might call this post-sale confusion (see the discussion in Chapter 7), or perhaps one...
- The law of dilution in the U.S. traces back to a proposal in an influential law review article. Frank I. Schechter,
- At the end of 1995, Congress passed the Federal Trademark Dilution Act (“FTDA”), which was codified in various sections of the Lanham Act, primarily in Section 43(c). Section 43(c) provided an injunction against specified acts that “cause[d] dilution of the distinctive quality of the mark” at issue. It limited the anti-dilution action to “famous” marks and provided a multi-factor test for assessing fame. It also included a definition of dilution in Section 45, which specified that dilution referred to “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake, or deception.” The legislation also specified acts that would not be actionable, such as fair use of the mark at issue in comparative commercial advertising. Section 43(c)(4). Finally, the legislation specified that dilution could be a basis...
- The Schechter model is difficult to harmonize with traditional models of the trademark right because Schechter’s proposal would have afforded absolute property rights (property rights in gross) to trademarks. Perhaps for this reason, a proposal as extensive as Schechter’s has never been adopted either in state or federal law. However, a number of states did enact less expansive anti-dilution statutes during the twentieth century. These statutes typically prohibited the use of a mark that created a “likelihood of dilution,” of the mark’s distinctive quality, leaving it to the courts to define what “dilution” meant. , N.Y Gen. Bus. Law § 360–1. One influential approach to defining and evaluating dilution originated in Judge Sweet’s concurring opinion in
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Chapter 10. False Advertising 37 results (showing 5 best matches)
- In the 1988 Trademark Law Revision Act, Congress amended Section 43(a) to incorporate an explicit false advertising provision. The amended provision split Section 43(a) into a subsection that provided a basis for false designation of origin and other causes of action (designated Section 43(a)(1)(A)) and another subsection specifically devoted to false advertising claims (designated Section 43(a)(1)(B)). Section 43(a)(1)(B) specifies that liability results when a party’s commercial advertising or promotion makes misrepresentations about the party’s own goods, services, or commercial activities, those of another. Relevant misrepresentations are those concerning the “nature, characteristics, qualities, or geographic origin” of the good, services, or activities at issue. The provision parts from the common law, and from interpretations of the pre–1988 Section 43(a), in that it specifically extends to misrepresentations about others’ goods, services, or commercial activities.
- This chapter deals with actions for false advertising under the Lanham Act. The false advertising cause of action may apply to a wide variety of false representations in advertising, not limited to false representations involving trademarks. Accordingly, false advertising is cause of action distinct from the trademark infringement or false designation of origin causes of action discussed in Chapter 7, though false advertising is closely related to those theories.
- As noted above, all of cases in this subsection are about standing under the Lanham Act—that is, they involve plaintiffs who satisfy Article III requirements for constitutional standing, but who may nonetheless be denied standing on the basis of any additional requirements imposed by the Lanham Act and associated case law. Article III standing requires a showing of injury-in-fact, causation, and redressability. In a false advertising case, these requirements usually would be satisfied where there is at least some evidence of competition. By comparison, Lanham Act prudential standing under the cases discussed above requires a showing of a likely injury to interests of the type protected by the Lanham Act.
- The standard Lanham Act provisions on damages for trademark infringement matters also apply to false advertising claims. Chapter 12 for a full treatment of Lanham Act remedies, including an explanation of the damages provisions. Compensatory damages for acts of false advertising may be calculated in various ways. In cases involving false comparisons between competitive products, an award of the defendant’s lost profits may be relatively easy to prove. , 653 F.3d 820 (9th Cir. 2011) (asserting that in such cases “it would be reasonable to presume that every dollar defendant makes has come directly out of plaintiff’s pocket”). In cases involving a defendant’s misrepresentations about its own products, it may be much more difficult to determine the portion of defendant’s profits that is attributable to the false statements and necessary to
- Although Section 43(a)(1)(B) specifies that “any person who believes that he or she is likely to be damaged” by false advertising may sue under Section 43(a)(1)(B), courts have declined to read the language to confer standing on any person who satisfies Article III constitutional standing requirements. Instead, courts have held that Congress left courts with authority to develop prudential limitations on standing in Section 43(a)(1)(B) cases. In particular, courts have invoked the statement of Congressional intent appearing in Lanham Act Section 45, reasoning that the statement reflects a focus on regulating anti-competitive conduct in a commercial setting. , 242 F.3d 539 (5th Cir. 2001). Accordingly, courts have fashioned tests for prudential standing in Section 43(a)(1)(B) cases that all require some nexus to competition.
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Acknowledgements 1 result
- I’m grateful for help from many excellent research assistants on this book, including Leslie Prill and Emily Pence. Allison Hess provided outstanding administrative support, as usual. I’m especially indebted to Graeme Dinwoodie, who has taught me much trademark law in the course of our collaborations over many years.
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Index 24 results (showing 5 best matches)
Advisory Board 12 results (showing 5 best matches)
- Professor of Law, Chancellor and Dean Emeritus, Hastings College of the Law
- Professor of Law and Dean Emeritus,
- Professor of Law, Michael E. Moritz College of Law,
- Professor of Law Emeritus, University of San Diego Professor of Law Emeritus, University of Michigan
- Professor of Law, Yale Law School
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