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TRADEMARKS

TRADEMARKS . PROF. JANICKE JULY 2007. TO BE A “MARK”:. HAS TO SERVE AS A BRAND MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS. TO BE A “MARK”:. HAS TO BE USED PHYSICALLY ON THE GOODS (TRADEMARK) OR ON SIGNS, ADS, OR PAPERS CONNECTED TO SERVICE (SERVICE MARK).

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TRADEMARKS

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  1. TRADEMARKS PROF. JANICKE JULY 2007

  2. TO BE A “MARK”: • HAS TO SERVE AS A BRAND • MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS Trademarks

  3. TO BE A “MARK”: • HAS TO BE USED PHYSICALLY ON THE GOODS (TRADEMARK) OR ON SIGNS, ADS, OR PAPERS CONNECTED TO SERVICE (SERVICE MARK) Trademarks

  4. TO BE A “MARK”: • THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE • LOCAL, FOR STATE RIGHTS • INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS Trademarks

  5. PROTECTION • RIGHTS BEGIN UPON FIRST USE • REGISTRATION IS UNNECESSARY • CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK • DONE UNDER UNFAIR COMPETITION LAWS Trademarks

  6. PASSING/FAILING THE FIRST REQUIREMENT OF A “MARK” • NOT A DISTINGUISHING BRAND • EXAMPLES: Trademarks

  7. PASSING/FAILING SECOND REQUIREMENT OF A “MARK” • EXAMPLES: § 1127 Trademarks

  8. PASSING/FAILING THIRD REQUIREMENT OF A “MARK” • EXAMPLES: Trademarks

  9. FALLING INTO THE “REGISTERED” PIT PROBLEM: • 1ST USER HAS NO REGISTRATION • 2ND USER GOT STATE AND FEDERAL REGISTRATIONS, TWO YEARS AGO • GOODS/MARKS CONFUSINGLY SIMILAR • WHO WINS? Trademarks

  10. THE THORN:PERMANENT LOCAL USE RIGHTS • THE ONE BIG PROBLEM FOR THE FIRST USER IN COMMERCE • SECOND USER CAN GET PERMANENT LOCAL RIGHTS TO USE • IF CONFUSION, FIRST USER MUST STAY OUT! Trademarks

  11. PERMANENT USE RIGHTS CONDITIONS: • (1) FIRST TO USE IN A LOCALE (STATE OR LESS) • (2) NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF ADOPTION Trademarks

  12. PERMANENT USE RIGHTS • FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS REGISTRATION DATE • REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2) Trademarks

  13. PERMANENT USE RIGHTS • NOW, CONGRESS HAS PROVIDED THAT A FEDERAL REGISTRATION CONSTITUTES CONSTRUCTIVE USE EVERYWHERE AS OF THE FILING DATE (§1057(c) • THIS KILLS CONDITION (1) AS OF THE FILING DATE Trademarks

  14. PERMANENT USE RIGHTS • ∴ REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE Trademarks

  15. QUASI-MARKS AND NON-MARKS • WALK THROUGH § 1052 • THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS Trademarks

  16. QUASI-MARKS AND NON-MARKS • START WITH 1052(f): TELLS US MANY PROBLEMS ARE INCURABLE • EXAMPLES: Trademarks

  17. QUASI-MARKS AND NON-MARKS THE (e) GROUP: • DESCRIPTIVE [EXAMPLE?] • MISDESCRIPTIVE [EXAMPLE?] • GEOGRAPHIC • SURNAMES Trademarks

  18. QUASI-MARKS AND NON-MARKS • FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER) • [EXAMPLES?] Trademarks

  19. GETTING FROM QUASI TO FULL:SHOWING ACQUIRED DISTINCTIVENESS • OFTEN CALLED “SECONDARY MEANING” • SHOWS THE QUASI-MARK HAS ARRIVED; NOW SIGNALS SOURCE • FIVE YEARS EXCLUSIVE USE MAY DO 15 USC § 1052 (f) Trademarks

  20. LESS KNOWN TYPES • COLLECTIVE MARKS • TRADE / SERVICE MARKS • MEMBERSHIP MARKS • CERTIFICATION MARKS § 1054 Trademarks

  21. CONFUSION LIKELIHOOD • AS TO SOURCE • AS TO SPONSORSHIP • AS TO AFFILIATION • AS TO APPROVAL Trademarks

  22. CONFUSION LIKELIHOOD • SUBSTANTIAL NUMBER OF PERSONS • PROBLEM OF LANGUAGE TRANSLATION • DEPENDS HOW MANY SPEAK IT IN U.S. Trademarks

  23. FACTORS IN JUDGING LIKELIHOOD OF CONFUSION • NO SINGLE FACTOR CONTROLS • “SUNKIST” FOR FRESH FRUIT AND FOR DRIED FRUIT WERE OWNED BY UNRELATED COMPANIES • MARKS LIKE “ACME,” “SUPERIOR, AND “NATIONAL” HAVE MANY OWNERS • FAMOUS CASES HAVE CHECKLISTS Trademarks

  24. FACTORS • STRENGTH OF P’S MARK • HOW MUCH USE; HOW ARBITRARY • SIMILARITY OF THE MARKS • SIGHT • SOUND • SCRIPT OR DESIGN • SIMILARITY OF PRODUCTS OF SERVICES Trademarks

  25. FACTORS (CONT’D.) • CHANNELS OF TRADE • ADVERTISING OR PROMOTION MEDIA • BAD FAITH ADOPTION • SOME COURTS GIVE THIS HEAVY WEIGHT; OTHERS DON’T • NATURE OF CUSTOMERS • PURCHASE CONDITIONS: TIME, PRICE, ETC. Trademarks

  26. WHO HAS THE RIGHT? THE PROBLEM OF “GRAY GOODS” • ARISES FROM CORPORATE SPINOFFS [ABOUT AS FREQUENT AS MERGERS] • WHEN FOREIGN MARKET IS SPUN OFF, MARKS USUALLY GO WITH • ALSO FROM LICENSING [IP MAXIMIZATION] Trademarks

  27. GRAY GOODS U.S. RULE: • IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION • IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER Trademarks

  28. WHAT IS NOT INFRINGEMENT • FAIR USE TO DESCRIBE: JANICKE’S COMPUTER RENTAL WE RENT ALL TYPES, INCLUDING COMPAQ®, IBM®, AND DELL® § 1115 (4) JANICKE’S COMPUTER RENTAL WE RENT ALL TYPES INCLUDING COMPAQ® AND IBM® Trademarks

  29. WHAT IS NOT INFRINGEMENT • OWN NAME IN BUSINESS OTHER THAN AS A MARK • Cf: SPERA’S RESTAURANT TONY SPERA, PROP. TONY’S RESTAURANT TONY SPERA, PROP. Trademarks

  30. N.B. • NO GENERAL RIGHT TO USE YOUR OWN NAME IN BUSINESS • MOST ATTEMPTS FAIL • NO POINT IN CHANGING YOUR NAME TO JOHNNY WALKER IF YOU ARE GOING TO SELL WHISKY Trademarks

  31. N.B. • STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL Trademarks

  32. A WORD ABOUT DILUTION • WHEN THERE IS NO INFRINGEMENT BECAUSE NO LIKELIHOOD OF CONFUSION • BUT THE ACTS OF D SOMEHOW CHEAPEN OR TARNISH OR REDUCE THE VALUE OF P’S MARK Trademarks

  33. A WORD ABOUT DILUTION • EXAMPLE: • “CADILLAC” FOR CARS • FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD Trademarks

  34. A WORD ABOUT DILUTION • ONLY AVAILABLE FOR “FAMOUS” MARKS • NO DAMAGES NORMALLY • INJUNCTIVE ONLY § 1125 (c) Trademarks

  35. REMEDIES Trademarks

  36. INJUNCTIVE • NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER • CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS Trademarks

  37. INJUNCTIVE • PRELIMINARY • PERMANENT • §1116 (a) • 4,000 + TRADEMARK SUITS FILED ANNUALLY • ABOUT 45 GO TO TRIAL Trademarks

  38. MONETARY • D’S PROFITS • OR P’S DAMAGES [DIFFICULT TO SHOW] • COURT CAN TREBLE P’S DAMAGES • IF D’S PROFITS AS REMEDY IS TOO SMALL/LARGE, COURT CAN ENTER A “JUST” AMOUNT § 1117 (a) Trademarks

  39. ATTORNEY’S FEES • “EXCEPTIONAL CASES” ONLY • USUALLY MEANS WILLFUL INFRINGEMENT § 1117 (a) Trademarks

  40. DESTRUCTION • A NICE MEDIEVAL REMEDY • ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?] § 1118 Trademarks

  41. DEFENDANT’S REMEDIES • ATTORNEY’S FEES IN EXCEPTIONAL CASES § 1117 (a) • ORDER TO CANCEL REGISTRATION § 1119 Trademarks

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