Trademark and Unfair Comp.

Trademark and Unfair Comp. Boston College Law School February 6, 2008 Intent to Use

Bases for Registration • Lanham Act §1 (15 U.S.C. 1051): • (a) (1) The owner of a trademark used in commerce may request registration ... • (b) • (1) A person who has a bona fide intention … to use a trademark in commerce may apply to register the trademark … • (3) … no mark shall be registered until the applicant has met the requirements for subsection[] … (d) of this section.

Intent to Use • Lanham Act §1 (15 U.S.C. 1051): • (d) (1) Within six months after the date on which the notice of allowance … is issued … , the applicant shall file … a verified statement that the mark is in use in commerce …

Intent to Use Procedure ITU Application Filed Initial PTO Review PTO Publishes 30-Day Period for Opposition Notice of Allowance 6-Month Period (Extendable) Actual Use in Commerce Statement of Use Filed Second PTO Review Trademark Registered

Lanham Act • Lanham Act §7(c) (15 U.S.C. 1057(c)): • Contingent on the registration of a mark …, the filing of the application … shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect

Notice of Allowance 6-Month Period (Extendable) Actual Use in Commerce Statement of Use Filed Second PTO Review Trademark Registered WarnerVision v. Empire Empire WarnerVision Sep. 23, 1994: TLV Files ITU App. For REAL WHEELS Actual Use of REAL WHEELS Jan. 3, 1995: Files Use App. For REAL WHEELS Sues to Enjoin Empire from Using Term

Notice of Allowance 6-Month Period (Extendable) Actual Use in Commerce Statement of Use Filed Second PTO Review Trademark Registered Eastman Kodak v. B&H B&H Kodak Oct. 12, 1990: Files ITU App. For 6200, 6800, 8100 Initial PTO Review PTO Publishes Kodak Opposes: Descriptive

Advantages of Registration • Nationwide constructive use - priority • Nationwide constructive notice • Possibility of achieving incontestability • Presumption of validity at trial • Right to sue in federal court • Availability of extra remedies (e.g. attorney fees, treble damages, border exclusion …)

Registration Process • Clearing the trademark • Start use or have bona fide intent to use • File application • Examination by PTO • Publication in Official Gazette • Registration • Or if intent to use, notice of allowance and later filing of statement of use; then registration

Additional Issues • Principal v. Supplemental Register • Foreign registrations • Trademark registration maintenance

Bars to Registration • Lanham Act §2: • (a) Immoral, scandalous, deceptive; disparages • (b) Flag, coat of arms, insignia of U.S., state, etc. • (c) Name, portrait, signature of living individual • (d) Likely to cause confusion with other mark • (e) Consists of mark that is: • (1) merely descriptive or deceptively misdescriptive • (2) primarily geographically descriptive • (3) primarily geographically deceptively misdescriptive • (4) primarily a surname • (5) functional

Bars - Immoral, Scandalous • Lanham Act §2: • Shall register mark unless it: • “(a) Consists of or comprises immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute”

In re Bad Frog Brewery

Yes MADDONA (wine) MESSIAS (wine) BUBBY TRAP (bras) BULLSHIT (briefcase) Picture of defecating dog (t-shirts) No BUDDA (beachwear) BIG PECKER (t-shirt) WEEK-END SEX (magazine) BLACK TAIL (adult magazine) Scandalous or Immoral?

Harjo v. Pro-Football, Inc.

Other Examples

Bars - Flags, Individuals • Lanham Act §2: • Shall register mark unless it: • “(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation … • “(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent …”

Bars - Likely to Cause Confusion • Lanham Act §2: • Shall register mark unless it: • “(d) consists of or comprises a mark which so resembles a mark registered … or a mark or trade name previously used in the United States by another and not abandoned, as to be likely … to cause confusion, or to cause mistake, or to deceive.”

Bars to Registration • Lanham Act §2: • (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive … upon proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made ….

Descriptive “ORGANIC” for organically grown oranges Deceptive “ORGANIC” for non-organic oranges Deceptively misdescriptive “JOE’S FAVORITE” for oranges that aren’t Joe’s favorite Nondeceptively misdescriptive (arbitrary) “ATOMIC” for oranges Geographically descriptive “FLORIDA” for Florida oranges Geographically deceptive “FLORIDA” for Georgia oranges Geographically deceptively misdescriptive “FLORIDA” for auto parts from New Jersey Geographically nondeceptively misdescriptive (arbitrary) “ANTARCTIC” for Georgia oranges Lanham Act §2(e)

§2(e)(2) - Can register if Secondary Meaning Arbitrary or suggestive - Can register Descriptive Misdescriptive Florida (Florida Oranges) Nondeceptively Deceptively §2(e)(3) - Cannot register Antarctic (Florida Oranges) Florida (Georgia Oranges) (NJ Auto Parts) Examples, Redux Geographic

Examples • ARIZONA (ice tea, not made in Arizona) • NANTUCKET (fruit drinks made in Nantucket) • CORNING (glassware products made in Corning, NY) • HERSHEY (chocolate made in Hershey, PA and elsewhere) • PARK AVENUE (luxury car, not made on Park Avenue) • SWISS ARMY KNIFE (pocket knife, not made in Switz.)

Administrative Details • Next Assignment • V.A – Genericity • V.B – Abandonment

Trademark and Unfair Comp.