Trademark and Unfair Competition in a Nutshell
Author:
Janis, Mark D.
Edition:
3rd
Copyright Date:
2021
21 chapters
have results for Trademark and unfair competition in a nutshell
Preface 6 results (showing 5 best matches)
- 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
- 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)
- The law of trademarks in the U.S. is usually referred to today as trademark
- 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.”
- 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
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Copyright Page 7 results (showing 5 best matches)
- Nutshell Series, In a Nutshell
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Chapter 7. Confusion-Based Trademark Liability Theories 113 results (showing 5 best matches)
- Under 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
- 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
- The views expressed in
- 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
- The Lanham Act contains no express language establishing a cause of action for indirect trademark infringement. However, courts had appeared to endorse such an action before the passage of the Lanham Act, at least in cases in which a party intentionally induced another to engage in acts of unfair competition.
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Chapter 2. Distinctiveness 103 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.”
- 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.
- In
- 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.
- Recall from Chapter 1 that the Lanham Act Section 45 definition of a trademark calls for a showing that the alleged mark “identify and distinguish” the relevant goods from those of others, and “indicate the source of the goods.” These are the core functions of a trademark. Subject matter that does not perform these functions should not be protectable under the trademark law.
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Title Page 3 results
Outline 52 results (showing 5 best matches)
Chapter 9. Permissible Uses of Another’s Trademark 81 results (showing 5 best matches)
- In a number of circumstances, 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 expressive uses of trademarks, in parody and other settings where free speech claims involving trademarks are implicated.
- Suppose that a firm
- 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
- Trademarks have become so prominent in the cultural environment that it is no surprise to discover them being used in public discourse of all kinds, as well as in artistic works. Because these usages are frequently unauthorized, and often may portray marks in an unflattering or controversial context, trademark owners may feel compelled to assert Lanham Act violations in an effort to limit or enjoin such uses. While doctrines such as nominative fair use (discussed
- A leading decision on the trademark liability of a reseller who has altered and resold genuine trademarked goods is
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Chapter 3. Functionality 62 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
- standard was rejected as unpersuasive in
- The trademark law concept of functionality must be distinguished from the concept of functionality
- In
- factors (3) and (4) would seem to go to the heart of the concerns that motivate the
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Chapter 11. Endorsement, Attribution, and the Right of Publicity 47 results (showing 5 best matches)
- 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).
- 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.
- The cause of action for violations of the right of publicity, as articulated in many jurisdictions, has five elements: defendant has (1) appropriated the value (2) of another’s identity (3) without consent (4) during a prescribed time period (5) for commercial purposes.
- By contrast, the court in
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Chapter 12. Remedies 46 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
- 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. (
- According to the Supreme Court’s general test for preliminary injunctions, “[a] plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits,
- 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
- However, equating counterfeiting with confusion may overlook some subtleties. 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. Post-sale confusion (see the discussion in Chapter 7), or (perhaps) dilution (see Chapter 8) might seem to be more appropriate theories.
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Chapter 4. Use 89 results (showing 5 best matches)
- 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). Some court presume that an agreement selling an entire business carries with it the transfer of trademarks and associated goodwill, a presumption that can be rebutted upon a showing that “(1) the contract expressly reserves some right and interest in the trademark, and (2) the seller retains some of the business’s goodwill.”
- The concept of “use” plays numerous roles in U.S. trademark law. This chapter focuses on two. First, the chapter briefly considers the link between the concept of use “in commerce” and the exercise of federal jurisdiction over trademark matters (Section A). Second, the chapter turns to the role of adoption and use in establishing trademark rights (Sections B–D). Section E addresses the issue of identifying the user, and Section F takes up the important issue of maintaining trademark rights and its connection to concepts of use (Section F).
- A related question may arise where the trademark owner licenses a trademark and subsequently enters into bankruptcy proceedings. If the mark owner were entitled to rescind the license in bankruptcy, the licensee would presumably be forced to discontinue use of the mark or face liability. In , the Court avoided this problem by ruling that in bankruptcy proceedings, a debtor-licensor cannot rescind an existing trademark license, such that the licensee’s right to continue using the mark (and its obligations to continue royalty payments and maintain quality control) remain intact.
- As we discussed in Chapter 1, the Supreme Court held in
- 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.
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Chapter 5. Registration 83 results (showing 5 best matches)
- International registration: section 66(a) extension of protection under the Madrid Protocol.
- The Supreme Court struck down the Section 2(a) disparagement bar as facially unconstitutional in
- 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...
- In its initial stages, trademark registration is an
- In
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Geographic Limits on Trademark Rights 77 results (showing 5 best matches)
- Bayer sought to have Belmora’s U.S. registration for FLANAX cancelled, invoking Lanham Act 14(3), which provides that a registrant’s mark can be cancelled if the registrant has used the mark to misrepresent the source of the goods. Bayer also sued Belmora in a separate action, alleging that Belmora’s marketing of FLANAX pain relievers in the U.S. gave rise to a claim for unfair competition under Section 43(a)(1)(A) and false advertising under Section 43(a)(1)(B).
- 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.
- Restatement (Third) of Unfair Competition
- 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.
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Chapter 8. Non-Confusion-Based Claims: Dilution and Cybersquatting 62 results (showing 5 best matches)
- 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 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 the shoes. Nonetheless, the unique connection in consumers’ minds between the term “Kodak” and the products of the camera manufacturer may be impaired. Consumers may begin to associate the term “Kodak” with a variety of products emanating
- In analyzing the bad faith intent element, courts are likely to find bad faith intent with little analysis when the facts appear to fit the standard cybersquatting narrative recounted at the beginning of this Section. A number of reported decisions deal with behavior that does not resemble that of the standard narrative. The court found bad faith in
- The law of dilution in the U.S. traces back to a proposal in an influential law review article.
- In rem
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Index 22 results (showing 5 best matches)
Chapter 10. False Advertising 43 results (showing 5 best matches)
- 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.
- The plaintiff in a Section 43(a)(1)(B) false advertising case is entitled to the same range of remedies that would be available to plaintiffs asserting other types of Section 43(a) causes of action. Accordingly, remedies in the form of both
- Section 43(a)(1)(B) specifies that only misrepresentations that are made “in commercial advertising or promotion” may trigger false advertising liability. In
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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), Ryan McDonnell (on the Second Edition), and Nick Eitsert, Lilly Huff, and Melanie Magdun (on the Third 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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Table of Cases 86 results (showing 5 best matches)
WEST ACADEMIC PUBLISHING’S EMERITUS ADVISORY BOARD 9 results (showing 5 best matches)
- Joanne and Larry Doherty Chair in Legal Ethics &
- Dean and Joseph L. Rauh, Jr. Chair of Public Interest Law University of the District of Columbia David A. Clarke School of Law
- University Professor and Chief Justice Warren E. Burger Professor of Constitutional Law and the Courts, New York University
- Professor of Law and Dean Emeritus
- Late Professor of Law, Chancellor and Dean Emeritus
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- Publication Date: September 8th, 2021
- ISBN: 9781647088583
- 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.