Trademark Law Prof. Madison University of Pittsburgh School of Law
A growing glossary of trademark law terms and concepts: 1. The mark, as a general concept (vs. symbol, vs. brand) 2. The mark in a particular instance (define the mark) 3. Mark X for Product or Service Y 4. Distinctiveness ( distinctive of source or distinctive as to source ) 5. Goodwill (trademark law is intended to protect which interests?) 6. Confusion (what is the harm associated with unauthorized use of a mark?) 7. Search costs and free riding 8. Lanham Act of 1946 (federal statutory scheme) 9. Common law of unfair competition (and common law basis of TM rights) 10. Abercrombie spectrum 11. Inherent distinctiveness 12. Acquired distinctiveness and secondary meaning 13. Trademarks; service marks; word marks; design marks; sound marks (smell, texture, taste marks); color marks; combination marks; trade dress 14. Product packaging v. product configuration trade dress; tertium quid 15. A cocktail shaker shaped like a penguin 16. Proving distinctiveness: Abercrombie spectrum and the Seabrook Foods factors 17. mere ornamentation as an argument against TM protection and/or as a conclusion supporting the denial of TM protection 18. Strong marks and weak marks
A growing glossary of trademark law terms and concepts: 19. Bars to protection 20. Utilitarian functionality and aesthetic functionality 21. Protecting competition. Competition in what products or services / features? 22. Deceptive and deceptively misdescriptive marks 23. Geographically deceptive and geographically deceptively misdescriptive marks 24. Implications of Matal v. Tam freedom of expression holding for immoral, scandalous marks and for dilution law 25. Use in commerce, as a mark [compare warehousing marks and reserving rights in a mark 26. Filing bases; 1(a) or use-based registrations; 1(b) or ITU registrations 27. Registration offers nationwide constructive use priority under 7(c) as of date of application 28. Senior users and junior users 29. Tea Rose/Rectanus principle of territoriality 30. Good faith remote junior users 31. The Dawn Donut rule 32. International territoriality and well-known marks, or famous foreign marks 33. Use in commerce / commercial use as a pre-requisite for infringement liability 34. Forward confusion (passing off) and reverse confusion (reverse passing off)
A growing glossary of trademark law terms and concepts: 35. Merchandising right (Boston Hockey) 36. Dastar 37. Classic or descriptive fair use 38. Initial interest confusion 39. Post-sale confusion 40. Dilution (blurring, tarnishment)
The Typical Trademark Infringement Lawsuit The plaintiff alleges (the prima facie case): 1. Trademark validity (distinctiveness) 2. Trademark ownership (use by the owner, and priority) 3. Infringing acts (use by the accused infringer, and likelihood of confusion) 4. Harm (confusion? Loss of goodwill?) (The necessary harm may consist of likelihood of confusion itself!) The defendant counters (in addition to contesting 1-4 above): 1. The affirmative defense of fair use.
Permissible Uses of Another s Trademark(s) 1. Classic Fair Use (unlike fair use in copyright): the defendant/accused infringer uses the mark owner s mark to refer to the deft s own product or service 2. (New / relatively well-established) Nominative Use: the deft/accused infringer refers to the mark owner s product or service 3. (New / unclear standards) First Amendment / Parody: referring to something else entirely (or nothing at all) (perhaps combined with (1) or (2)) Recall different public policies behind trademark protection & infringement Protect mark owner s goodwill from appropriation and/or free-riding (the unfair competition rationale). Consumer confusion is evidence of misappropriation. Protect consumers themselves (from inaccurate / misleading information) (the protect consumer interests in quality and source rationale) (which consumers count?). Consumer confusion may be a harm in itself. Do the defenses reflect failure of the prima facie case (no likelihood of confusion), or independent interests in free competition and/or free speech?
Dessert Beauty, Inc. v. Fox (S.D.N.Y. 2008) Use Other than as a mark? LOVE POTION Descriptively? In good faith?
Nominative Fair Use of a Mark
The distinction between classic and nominative fair use is important for two reasons: (1) classic and nominative fair use are governed by different analyses; and (2) the classic fair use analysis only complements the likelihood of customer confusion analysis set forth in Sleekcraft, whereas the nominative fair use analysis replaces the Sleekcraft analysis. Princess Diana is the [plaintiff's] product and Princess Diana s name and likeness are the [plaintiff's] marks. Cairns v. Franklin Mint Co. (9 th Cir. 2002) Franklin Mint used the Princess Diana mark to describe Princess Diana, even though Franklin Mint s ultimate goal was to describe its own products. one might refer to the English princess who died in a car crash in 1997, but it is far simpler (and more likely to be understood) to refer to Princess Diana.
R.G. Smith v. Chanel, Inc. (9th Cir. 1968) Accurate use of a mark in good faith comparative advertising: "We dare you to try to detect any difference between Chanel #5 (25.00) and Ta'Ron's 2nd Chance. $7.00."
R.G. Smith v. Chanel, Inc. (9th Cir. 1968) To drive home the tight connection between the perfume and its creator, bottles of Chanel No. 5 were the first items ever to display the initial logo that Coco designed herself the interlocking double Cs, which remains the company s trademark to this day. To wear Chanel No. 5 was to enter into Chanel s famous life, to take on her very essence, to be branded with, signed by, those interlocking Cs. The Cs represented the first use of a designer s own initials as an aesthetic motif in its own right. The logo soon eclipsed all of Chanel s other motifs, appearing on jacket buttons, belts, shoes, and purses and acquiring enough cachet to turn into an abstract, impersonal status symbol, while still conjuring the person behind the initials. It became inextricable from the identity of the Chanel brand, appearing somewhere on nearly every accessory and all perfume packages. The double-c logo crystallizes the paradoxical brilliance at the heart of Chanel s empire: It granted prestige through uniformity, through mass identification with one idealized individual. Nearly everyone could own something with a Chanel logo, and nearly everyone wanted to. Coco had invented the cult of Chanel. (Rhonda Garelick, Mademoiselle: Coco Chanel and the Pulse of History (2014))
R.G. Smith v. Chanel, Inc. (9th Cir. 1968)
R.G. Smith v. Chanel, Inc. (9th Cir. 1968) [Chanel is] not entitled to monopolize the public s desire for the unpatented product, even though they themselves created that desire at great effort and expense. [T]he most effective way (and in some cases the only practical way) in which others may compete in satisfying the demand for the product is to product it and tell the public they have done so, and if they could be barred from this effort appellees would have found a way to acquire a practical monopoly in the unpatented product to which they are not legally entitled. By taking his free ride, the copyist serves an important public service by offering comparable goods at lower prices.
New Kids on the Block v. News Am. Publ g Inc. (9 th Cir. 1992) Nominative fair use: Use of the plaintiff s mark to refer to the plaintiff s product or service. Is the use necessary? Avoidable? Are there alternative ways to refer to it? No more of the mark than necessary. Not misleading re: sponsorship / endorsement? Burden on plaintiff to overcome nominative fair use argument [Compare Century 21 Real Estate Corp. v. LendingTree, Inc. (3d Cir. 2005): plaintiff must first prove LoC (on a modified list of Lapp factors), then defendant may prove nominative fair use.] [Compare Int l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC (2d Cir. 2016): nominative use concerns should be addressed by additional factors in LoC analysis, not by substituting nominative fair use analysis for LoC.]
New Kids on the Block v. News Am. Publ g Inc. (9 th Cir. 1992) Nominative fair use: Use of the plaintiff s mark to refer to the plaintiff s product or service. Is the use necessary? Avoidable? Are there alternative ways to refer to it? No more of the mark than necessary. Not misleading re: sponsorship / endorsement? Burden on plaintiff to overcome nominative fair use argument
New Kids on the Block v. News Am. Publ g Inc. (9 th Cir. 1992) Nominative fair use: Use of the plaintiff s mark to refer to the plaintiff s product or service. Is the use necessary? Avoidable? Are there alternative ways to refer to it? No more of the mark than necessary. Not misleading re: sponsorship / endorsement? Burden on plaintiff to overcome nominative fair use argument
Jordan and Jonathan Knight, Joey McIntyre, Donny Wahlberg, Danny Wood
Toyota Motor Sales, U.S.A., Inc. v. Tabari (9th Cir. 2010) buy-a-lexus.com and buyorleaselexus.com In a case of nominative fair use in the Ninth Circuit, the Sleek-craft analysis doesn't apply where a defendant uses the mark to refer to the trademarked good itself. Consumers online are generally smart enough to know that domain names that incorporate trademarks do not automatically suggest sponsorship or endorsement by the mark owner. True?
Liquid Glass Enterprises, Inc. v. Dr. Ing. h.c.f. Porsche AG (D.N.J. 1998) Is the PORSCHE mark and trade dress necessary to promotion of the Liquid Glass products? (If so), has Liquid Glass used only so much of the marks as is reasonably necessary? (LoC): Could use of the marks mislead the public into believing that Porsche endorsed Liquid Glass's products or at least approved of their use on Porsche automobiles?