Trademark and Unfair Competition in a Nutshell
Author:
Janis, Mark D.
Edition:
2nd
Copyright Date:
2018
20 chapters
have results for nutshell, trademark
Copyright Page 2 results
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 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.
- 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.
- 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.
- 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 3 Functionality 16 results (showing 5 best matches)
- The trademark law concept of functionality must be distinguished from the concept of functionality
- 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
- It is relatively simple to connect these factors with the core purposes of the functionality doctrine. Factors (1) and (2)—to the extent that they refer to the mark owner’s own patent and advertising documents—recognize that a mark owner’s statements about utilitarian advantages of the design should be taken as highly credible. The evidentiary value of a mark owner’s statements in a patent document should be valuable whether or not the patent is expired. However, if the design appears in an expired patent, the concern over separating the respective domains of utility patent and trademark subject matter may be implicated, because there may be a concern that the mark owner is seeking the equivalent of extended, or even perpetual, patent protection through the trademark system.
- 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 reason 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.
- Aesthetic functionality arguments have been asserted, albeit without success, in cases involving trademark merchandising. In
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Chapter 1 Introduction to Trademark and Unfair Competition 36 results (showing 5 best matches)
- In modern U.S. law, trademarks are classified as intellectual property, along with copyrights and patents, among others. Trademarks do share some similarities with other types of intellectual property, but trademarks are also different in a number of ways. The Supreme Court detailed some of the differences in an early decision known as
- 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.
- The definition of “trademark” in the U.S. trademark statute (the Lanham Act, introduced below in Section C.2), reflects and restates these principles:
- The law of trademarks in the U.S. is usually referred to today as trademark
- 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.
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Chapter 9 Permissible Uses of Another’s Trademark 32 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.
- ’s trademark. There are three common scenarios in which
- A leading decision on the trademark liability of a reseller who has altered and resold genuine trademarked goods is
- United States trademark law initially embraced international exhaustion, but has since 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
- 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
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Chapter 4 Use 24 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.
- Because trademark rights arise from adoption and use (or their legal equivalents), it follows that trademark rights may be lost if the mark owner discontinues use or fails to control it. The Lanham Act incorporates these principles, defining two forms of trademark abandonment:
- The requirement that use be bona fide and not merely to reserve rights in a mark also responds to fears about trademark warehousing. It is argued that in the absence of a use requirement, firms might amass large portfolios of trademark rights purely for the purpose of asserting them against subsequent market entrants in order to extract license fees.
- 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 any doubt that the employees are acting on behalf of Ford.
- is a manufacturer of trademarked goods and
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Chapter 6 Geographic Limits on Trademark Rights 25 results (showing 5 best matches)
- 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 is possible for a U.S. trademark holder to restrain conduct occurring abroad on the basis of his or her U.S. trademark rights.
- 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
- 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.
- (1) provides that “[t]he Countries of the Union undertake . . . to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction . . . liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country . . . and used for identical or similar goods . . . .” In addition, Article 2(2) of the TRIPS agreement requires WTO members to comply with specified Articles of the Paris Convention,
- The cases in this section deal with the circumstances under which the owner of U.S. trademark rights can enforce those rights against activities occurring abroad. This is, in a sense, the
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Chapter 8 Non-Confusion-Based Claims: Dilution, Cybersquatting, and Counterfeiting 23 results (showing 5 best matches)
- 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 (
- 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. (
- The trademark dilution theory is based on the premise that some types of unauthorized acts that do not give rise to confusion may nonetheless harm a trademark owner. For example, suppose that a firm uses KODAK in connection with shoes. Consumers might not believe that the famous film and camera manufacturer manufactures the shoes—that is, consumers might not be confused as to the source of
- Second, in the alternative to actual damages, the trademark owner in a trademark counterfeiting case may elect statutory damages under Section 35(c). The statute provides for damages ranging from $1,000 to $200,000 per counterfeit mark per type of goods sold for non-willful counterfeiting; and up to $2,000,000 per counterfeit mark per type of goods sold for willful counterfeiting. The courts have confirmed that these amounts are assessed against each
- Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927)
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Chapter 2 Distinctiveness 21 results (showing 5 best matches)
- , when a mark owner files an application to register a mark with the U.S. Patent and Trademark Office (PTO), the trademark examiner must analyze whether the mark is distinctive.
- A central requirement for the award of trademark rights is that the mark be distinctive. Without distinctiveness, there is no mark. The requirement was developed primarily through case law, which remains the main source of distinctiveness rules. The Lanham Act incorporates the concept of distinctiveness in Section 45’s definition of trademark (stating that a trademark is something that is used “to identify and distinguish” goods from those manufactured by others, and to “indicate the source of the goods”) and Section 2 (stating that an applicant may register a mark “by which the goods of the applicant may be distinguished from the goods of others” unless specified circumstances exist).
- 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
- 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.”
- , the court dealt with a claim of trademark rights in a recorded performance of a musical composition. The composition was “The Girl from Ipanema,” and recording artist Astrud Oliviera claimed that the recorded performance was her signature song and essentially served as a source identifier for her persona. The court ruled that a recorded musical composition could conceivably serve as source identifier under some instances—such as a snippet of a recording of “Sweet Georgia Brown” played in connection with performances of the Harlem Globetrotters basketball team. However, the court ruled against Oliveira, holding that a recorded performance of a composition cannot function as a trademark identifying the performer. That is, a performing artist cannot acquire trademark rights in a recording of her own performance. Extending trademark protection to recordings in such circumstances would disrupt marketplace expectations, and such an extension would be a matter for Congress.
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Chapter 5 Registration 23 results (showing 5 best matches)
- The Madrid Protocol (the “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks”) establishes a system under which trademark owners in member countries may secure trademark rights in other member countries by a single filing with their home country’s trademark office. The United States joined the Madrid Protocol system in late 2003 and added implementing provisions to the Lanham Act at
- . An applicant, the lead singer of an Asian-American rock group called THE SLANTS, was barred from registering the band’s name on the ground that the mark disparaged Asian Americans. The Federal Circuit had overturned the rejection on First Amendment grounds, and the Supreme Court granted certiorari. The Court unanimously ruled that Section 2(a)’s disparagement prohibition violated the First Amendment’s free speech clause on its face. But the Court split over the reasons for this conclusion. Justice Alito’s opinion was joined (in part) by Chief Justice Roberts and Justices Thomas and Breyer. Alito’s opinion considered and dismissed three arguments in support of the constitutionality of the disparagement provision: (1) the act of registering a trademark was not a form of government speech, because trademarks have not traditionally been used to convey government messages and trademarks are not ordinarily identified in the public mind with the government; (2) while the government can...
- In its initial stages, trademark registration is an
- 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...trademark
- Designations that do not yet function as trademarks or service marks, but are
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- 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.
- OVERVIEW OF ELEMENTS; IN-GROSS PROPERTY RIGHT; RELATIONSHIP WITH COPYRIGHT AND TRADEMARK
- 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.
- The right of publicity differs from the trademark right in that the right of publicity is an in-gross property right as normally conceptualized. The right of publicity cause of action does not require a showing of likelihood of confusion. The right of publicity is also freely alienable, at least in jurisdictions where the in-gross nature of the right has been fully elaborated. For example, the Indiana statute explicitly denominates rights of publicity as “property rights” which are “freely transferable and descendible” by ordinary means, such as contract, testamentary document, or intestate succession. Indiana IC 32–36–1–16.
- , 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 to commercial damage, and that it should be freely alienable like any other in gross property right. This last quality was particularly important in that it distinguished the right of publicity from trademark rights.
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Chapter 10 False Advertising 3 results
- 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 a 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.
- 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
- The standard Lanham Act provisions on damages for trademark infringement matters also apply to false advertising claims.
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Chapter 12 Remedies 10 results (showing 5 best matches)
- Some courts distinguish between laches and acquiescence. Whereas laches is associated with negligent or unintentional failures to protect one’s trademark rights, acquiescence connotes intent. Acquiescence is “an equitable doctrine that permits the court to deny relief in an action for trademark infringement if the evidence shows that the owner of the mark has, through his words or conduct, conveyed his consent to the defendant’s use of the mark.”
- Prohibitory permanent injunctions are perhaps the most common in trademark litigation, but, as with preliminary injunctions, permanent injunction orders may include other elements requiring the defendant to undertake various actions. For example, the defendant may be required to turn over infringing articles for destruction, or add labels or disclaimers to the defendant’s products. Especially in false advertising cases, the injunctive relief may include a requirement for the defendant to distribute corrective advertising.
- 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
- In a trademark case, this means that the injunctive relief suspends Lanham Act violations to preserve the status quo. In addition to prohibitions, injunctive relief may also include affirmative mandates. For example, the infringer may be required to turn over the infringing articles during the pendency of the litigation. The Second Circuit has suggested that if the injunction alters the status quo, it will be treated as a “mandatory injunction,” rather than a purely “prohibitory injunction,” and granted only if the plaintiff makes a higher showing, namely either (1) a clear or substantial showing of entitlement to the relief requested, or (2) a showing that extreme or very serious damage will result from the denial of preliminary relief.
- factors to assess whether to grant permanent injunctive relief in a trademark infringement case);
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Chapter 7 Confusion-Based Trademark Liability Theories 37 results (showing 5 best matches)
- 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
- Appendix analyzed whether the test for actionable use should conform to the definition of use that determines whether a party can establish trademark rights. As we saw in Chapter 4, Lanham Act Section 45 defines “use in commerce” as follows:
- The Lanham Act contains no express language establishing a cause of action for indirect trademark
- 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
- 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
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Index 8 results (showing 5 best matches)
Outline 14 results (showing 5 best matches)
Acknowledgments 1 result
- I’m grateful for help from many excellent research assistants on this book, including Leslie Prill and Emily Pence (on the First Edition) and Ryan McDonnell (on the Second Edition). Allison Hess and Casey Nemecek 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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- Publication Date: October 25th, 2017
- ISBN: 9781634609067
- Subject: Intellectual Property
- Series: Nutshells
- Type: Overviews
- Description: This text provides a comprehensive treatment of the law of trademark, unfair competition, false advertising, and the right of publicity.
