Advantages of Registration
Registration confers several key advantages to mark holders: constructive nationwide priority as of the filing date (§ 7(c)), prima facie evidence of validity, ownership, and registrant’s exclusivity rights(§ 7(b)), not bearing the burden to show non-functionality (§ 43(a)(3), limitations on cancellation (§ 14), statutory damages against counterfeiters (§§ 35(c), 34(d)(1)(B)(i), right to request customs to bar importation of infringing goods (§ 42), and starting the clock on incontestability (which is available five years post-filing and a filing of declaration of incontestability (§§ 15, 33)).
Registration is for a 10-year term (§ 8). To maintain registration, a mark holder must file an Affidavit of Continuing Use during the 6th year and the 10th year (§ 8), and a Renewal Application every 10th year (§ 9). An Affidavit of Incontestability may be filed within 1 year of any 5-year period of continuous use (§ 15).
For five years after the date of registration, a third party can petition to cancel the registration for any reason (§ 14). After 5 years, cancellation can only be based on the mark being generic, function, abandoned, fraudulently obtained, or contrary to § 2(a-c) (§14)(3))
The Madrid System is an association of 92 member countries which provides an efficient means by which trademark applicants and registrants may apply to register their marks at multiple foreign trademark offices through a single application filed at their nation’s home office.
Abercrombie Spectrum for Word Marks
To be registrable, a mark must be distinctive—inherently or by acquisition—to be protectable. For word marks, distinctiveness is based on the Abercrombie Spectrum (Abercrombie), which has five levels: Fanciful, Arbitrary, Suggestive, Descriptive, and Generic. A “generic” mark is unprotectable (National Biscuit Co.) and a “descriptive” mark requires secondary meaning for protection. (Zatarains)
Acquired Distinctiveness/Secondary Meaning
If a mark is descriptive, secondary meaning is required for trademark protection. (Zatarains) The key question regarding secondary meaning (aka acquired distinctiveness), is whether customers perceive the mark as a designation of a particular source. (See Cartier; Louboutin v. Yves St. Laurent).
In determining if there is secondary, it’s consumers who would consider purchasing the product that’re relevant. (Cartier) Thus, we would focus on ____ here.
Lanham Act § 2 bars protection of generic marks. A generic mark is one which refers, or has become to be understood as referring, to the genus of which the particular product is a species—it answers the question “who/what are you? (Apple v. Amazon) Thus, to determine if a mark is, or has become, generic, the test is whether it answers “Who-are-you/What-are-you? (Id.) In determining this, the mark will be analyzed as a whole, rather than as its separate words, under the anti-dissection principal as doing risks non-generic phrases used as marks being held generic because each word by itself is generic. (Pretzel Crisps)
Geographically Descriptive Marks
Primarily geographically descriptive and deceptively misdescriptive marks are barred by Lanham Act § 2(e)(2)-(3). Post-NAFTA, in determining if a mark is barred as geographically descriptive we first ask if the geographic term is used to signify a place? Here…
Second, we ask if consumers are likely to make a goods/place association? Here…
Next, do the goods come from that place or does the mark identify a feature of the goods? Here…
Finally, is there secondary meaning? Finally, would consumers believe the misdescription and consider it material to their purchasing decision?
Non-Geographic Deceptive Marks
Lanham Act § 2(e)(1) bars non-geographic deceptively misdescriptive marks. The In re Budge Test is used to determine if a mark is barred as such.
First, the test asks if the term misdescriptive of the character, quality, function, composition, or use of the goods? Here…
Second, are prospective purchasers likely to believe that the misdescription actually describes the goods? Here…
Finally, is the misdescription likely to affect the decision to purchase? Here…
(sub-questions on pg. 11 of outline along with results of each answer)
Lanham Act § 2 bars surnames from use as a mark, generally. However, a surname may be granted protection. To determine this, we ask whether the name is rare, if it is the name of someone connected with the applicant, whether it has recognized meaning beyond as a surname, whether it has the “look and feel” of a surname, and whether the stylization of the letter is distinctive enough to create a separate commercial impression. If all of these are answered “yes,” then the mark is protectable so long as it as secondary meaning.
Non-verbal marks such as trade dress may be protectable. (Two Pesos) First, we must determine if a mark is product packaging or configuration—only product packaging can be inherently distinctive, while configuration requires secondary meaning (Samara Bros).
The inherent distinctiveness of product packaging is best determined using the Seabrook Factors as non-verbal marks don’t fit with the Abercrombie Spectrum well (Seabrook). However, the Second Circuit does still apply Abercrombie (See FunDamental Too).
Because this mark falls under product configuration, secondary meaning is required for protection. (Qualitex; Samara Bros) Thus, we examine …
If a mark is function, it is not protectable—finding functionality will trump consumer confusion issues. (Inwood) Functionality is determined using the Trafix/Qualitex test. (Trafix) This test moves the focus off of alternative designs under the Morton-Norwich Factors and back to Inwood’s focus on a feature being “essential to the use or purpose.” (TraFix; Morton-Norwich; Inwood).
Under Qualitex/Trafix, a feature is functional if it’s (1) essential to the user or purpose of the article, (2) if it affects the cost or quality of the article, that is (3) if the exclusive use of the feature would put competitors at a significant non-reputation related disadvantage. Available alternative designs are not as important as under Morton-Norwich, except in the 9th Circuit, which still considers them, though still arguably adheres to the spirit of Qualitex/Trafix. (Talking Rain Beverage)
Lanham Act § 2(a) bars scandalous and disparaging marks. Scandalous marks are those which a “substantial composite of the general public” perceives to have a contextually vulgar meaning. (In re Marsha Fox) Disparaging marks are those which a substantial composite of the group allegedly disparaged would perceive as disparaging. (In re Heeb Media)
Allegedly scandalous marks are analyzed in the context of contemporary attitudes, in context of the marketplace as applied to only the goods described in the application, and from the standpoint of a substantial composite of the general public. (In re Marsha Fox). This group can be lower than 50% (Id.)
Allegedly disparaging marks consider the views of the referenced group. (Harjo) Further, it is the attitude contemporary with registration that’s important (see § 14(c); Blackhorse; must challenge mark within 5 years otherwise one must show the mark was obtained in contravention to § 2).
**mention Tam and 1st amendment
False Suggestion of Connection
Lanham Act § 2(a) bars marks which may falsely suggest a connection with persons living or dead. (see In re Jackson) Whether a mark is barred under this section will be determined using a four-part test. (In re Nieves & Nieves LLC)
First, whether the mark is the same as or a close approximation of a person’s previously used name or identity. (Id.)
Second, whether the mark would be recognized as such by purchasers, in that it points uniquely and unmistakably to an individual. (In re Nieves & Nieves LLC)
Third, whether this person is not connected with the activities performed by the applicant under the mark. (In re Nieves & Nieves LLC)
Finally, whether a person’s name or identify is sufficiently famous that when the mark is used with applicant’s goods, a connection with this person would be presumed. (In re Nieves & Nieves LLC)
Use in Commerce Requirement
For protection, a mark must be used in commerce (Aycock Engineering). Use in commerce means bona fide use in trade, and not made merely to reserve a right in a mark (Lanham Act § 45). Use in commerce will be determined considering the totality of the circumstances under the industry custom using six factors (Chance v. Pac Tel; § 45).
First, the genuineness/commercial character of the use.
Second, whether the mark identified/distinguished the service to the relevant consumer population.
Third, scope of non-sales activity compared to what is commercially reasonable to market the good or service.
Fourth, the degree of ongoing activity to conduct the business using the mark.
Fifth, amount of business transacted.
Finally, any other factors which might distinguish whether a service has actually been rendered in commerce.
Domestic Territoriality for UNREGISTERED USERS
For unregistered marks, territorial scope is limited to where the mark is known and recognized by potential customers under the Tea Rose-Recantus Rule. (Tea Rose-Recantus) There are four factors used to determine if a senior user was in a junior user’s market before the junior user adopted the mark (Natural Footwear): (1) volume of sales of the trademarked product; (2) growth trends in the contested region; (3) number of people actually purchasing the product compared to potential number; (4) amount of product advertising in the region.
If a senior user’s mark isn’t inherently distinctive, then the scope of the senior user’s rights is limited to where the mark has secondary meaning.
Note effect of Knowledge on rights under majority and minority/beebe.
Domestic Territoriality for REGISTERED USERS
As of November 16, 1989, constructive nationwide priority/notice is awarded as of application date, whether or not the applicant is making current nationwide use. (Lanham Act §7(c); see § 22 for notice prior to 11/16/1985)
Under the Dawn Donut Rule, a registrant must show likelihood they will be (under industry standards), or are currently, making actual use of the mark in the post-registration junior user’s area before the registrant will be entitled to enjoin that use. (Dawn Donuts; contra Circuit City (6th Cir. 1999)
Further, an important § 7(c) exception is that a registrant cannot assert priority over another who began use of a mark prior to registrant’s application date (a “common law user”). (Lanham Act §33(b)(5))
Generally, a trademark is limited by boarders: foreign use doesn’t establish U.S.-based rights. (Persons) The key exception to this regards “well-known” marks. (see Paris Convention) The 9th Circuit uses the secondary meaning “plus” test. (Groupo Gigante)
Groupo Gigante directs one to first determine secondary meaning: if there’s secondary meaning, but the mark is not yet used in the U.S., then a preponderance of the evidence must indicate a substantial percentage of consumers in the relevant market (where defendant’s infringement is alleged) are familiar with the foreign mark. Next, the factors of (a) if defendant’s customers think they are shopping at plaintiff’s location, and (b) intention copying by defendant are considered. (Groupo Gigante) Compare Groupo Gigante with Punchgini (2d Cir.) (no recognition of well-known mark for a federal cause of action, but allowing N.Y. state misappropriation protection).
Mention Circuit split re: domestic advertising
Lanham Act § 32 (registered marks) and § 43(a) (unregistered marks) provide for protection against infringement.
Because this is a registered mark, § 32 applies. Thus, we must show (1) we possess a protectable mark, (2) defendant used it in commerce in connection with sale, offering for sale, distribution, or advertising of goods or services, and (3) that defendant used it in a manner likely to cause confusion. (§ 32).
Because this isn’t a federally registered mark, § 43(a) applies. Thus, we must show that defendant’s “use in commerce” of plaintiff’s mark “in connection with any goods or services or any container for goods.” (§ 45).
Specifically, we have infringement claims based on . . .
Initial Interest (POS) Confusion
A claim for initial interest confusion will be evaluated using some version of the Polaroid Factors for likelihood of confusion. (Polaroid). Compare Polaroid (2nd Circuit) with Sally Beauty (10th Circuit), Sleekcraft (9th Circuit) and Pizzaria Uno (4th Circuit).
DO POLAROID FACTORS (or circuit you’re in) THAT ARE RELEVANT, TELL WHY OTHERS AREN’T
Post-sale confusion typically occurs where a “prestige brand” is implicated. See e.g. Mastercrafters; Ferrari. Here, the Polaroid Factors are relevant, but heightened focus is paid to protecting the reputation of manufacturers and purchasers. (Ferrari) The confusion focuses on non-purchasers, arguing the confusion affects the mark’s status and likelihood potential consumers will purchase goods under the mark. (Id.)
DO POLAROID FACTOS AND PRESTIEGE ANALYSIS
Reverse confusion occurs when a stronger junior mark is confusingly similar to a senior user’s mark such that consumers will think the senior user’s goods are those of, or related to, the junior user. (Uber Promotions). Allegations of reverse confusion are analyzed using a four-factor, modified Polaroid Factors test. (A&H Sportswear)
First the marks’ similarity is considered—with a focus on plaintiff’s mark, not defendant’s. (Id.) Here,
Second, the strength of the mark—especially helpful to a plaintiff is if its mark is commercially weaker but inherently stronger as a mark. (A&H Sportswear) Here,
Third, is there actual confusion? Here,
Finally, intent: is there bad faith intent by the junior user to push the senior user out of the market? Here,
Sponsorship or Affiliation Confusion
The Lanham Act’s language points to a recognition of confusion with respect to the plaintiff’s “sponsorship” of the defendant or at least some form of “affiliation.” (§ 43(a), Beebe) The central inquiry is whether a reasonable and prudent customer is likely to be confused about the origin of the good/service bearing one of the marks due to the similarity between the two marks. (Payless, Smack Apparel)
Dilution by Blurring
The Lanham Act allows an owner of a famous, distinctive mark to get an injunction if, after the mark has become famous, someone uses the mark in commerce that is likely to cause dilution by blurring or tarnishment of the mark—regardless of the presence of actual confusion, competition, or injury. (§ 43(c))
First, the degree of similarity.
Second, the degree of inherent and acquired distinctiveness of the mark. Beyond determining possibility for association and impairment, this is crucial as there is no niche fame after 2006 under federal law. (§ 43(c); see Top Tobacco)
Third, extent the famous mark’s owner is engaging in substantially exclusive use under the mark.
Fourth, degree of recognition of the famous mark.
Fifth, whether the defendant intended to create an association with the famous mark.
Finally, any actual association between the defendant’s mark and the famous mark. Some courts will assume impairment if there is an association (Nikepal)
Overall, these factors seem to cut in ____’s favor. However, regardless of association, some courts may not find dilution liability without a showing of likelihood the association will impair distinctiveness (“association-plus”). (Rolex; Wolfe’s Borough) Here,
Dilution by Tarnishment
The Lanham Act allows an owner of a famous, distinctive mark to get an injunction if, after the mark has become famous, someone uses the mark in commerce that is likely to cause dilution by blurring or tarnishment of the mark—regardless of the presence of actual confusion, competition, or injury. (§ 43(c)) Here, tarnishment is applicable because it is the mark’s reputation, not distinctiveness, which is likely to be harmed. (Mosely)
Tarnishment is concerned with the reputation of the mark owner. (Id.) Thus, the damage is that the positive associations of the mark are harmed by a defendant’s use linking the mark with shoddy quality products or where it portrays the mark in an unwholesome or unsavory context. (Id.) However, the actions for tarnishment often run up against First Amendment concerns. (See Radiance Foundation)
There are three ways a mark owner can seek to prevent third party unauthorized use of its mark as part of a domain name: (1) pursue traditional trademark infringement cause of action claiming the domain name creates a likelihood of confusion (§ 32, § 43(a)); (2) bring a cause of action for cybersquatting (§ 43(d)(1)(A); or (3) seek cancellation of the domain name or its transfer to the trademark’s owner under the Uniform Dispute Resolution Policy (UDRP).
Lanham Act § 43(d)(1)(A) details how a defendant may be held liable in a cybersquatting action. (do analysis in outline)
Alternatively, we could pursue a UDRP action. The advantage is that a UDRP action typically provides a faster and cheaper way to resolve a dispute regarding the registration and the use of an internet domain name than going to court. However, the UDRP only allows for injunctive relief.
Secondary infringement is not explicit under the Lanham Act, so it is an entirely judge-made doctrine. (Tiffany v. eBay) Secondary liability comes in two varieties: contributory infringement (Id.), and vicarious infringement (Hard Rock Cafe). Here,___ is applicable because .
Contributory infringement occurs if a defendant (1) intentionally induces another to infringe on a trademark (Gucci v. Frontline), or (2) continues to supply services to one whom it knows or has reason to know is engaging in trademark infringement (Tiffany).
CHOOSE ONE AND DO ANALYSIS FROM OUTLINE
Vicarious infringement “requires a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product.” (Hard Rock Café) Essentially, control plus direct financial benefit equals liability. (Id.)
DO ANALYSIS FROM OUTLINE, DON’T FORGET “PUFFING” REFERENCES≠WORK
One who “in commercial advertising or promotion, misrepresents the nature, characteristics, quality, or geographic origin of his or her or another person’s goods, services or commercial activities” risks false advertising liability. (Lanham Act § 43(a)(1)(B)) Plaintiffs may establish a prima facie false advertising claim by showing five factors exist. (Pizza Hut)
First, there was a false or misleading statement of fact about the product. (Id.) A statement of fact is one which (a) admits of being adjudged tore or false in a way that (2) admits empirical verification. (Pizza Hut quoting Presidio). Such statement may be literally false, false by necessary implication, or merely misleading (see S.C. Johnson v. Clorox (literal falsity); Time Warner Cable v. Direct TV(literal falsity by necessary implication); Pizza Hut v. Papa Johns (misleading statements and materiality).
Second, that such statement either deceived, or had the capacity to deceive a substantial segment of consumers. (Pizza Hut). Puffery, however, will not count as deceptive as no one would rely on its exaggerated claims. (Time Warner Cable)
Third, the deception must be material in that it’s likely to influence customers’ purchasing decisions. (Pizza Hut) Here,
Fourth, the product is in interstate commerce. (Pizza Hut) Here,
Finally, that plaintiff has been, or is likely to be, injured as a result of the statement at issue. (Pizza Hut) Here,
Descriptive Fair Use Defense
Descriptive fair use is applicable where a defendant uses the plaintiff’s mark to describe defendant’s own goods. (§ 33(b)(4)) The elements of descriptive fair use are that defendant (1) uses the trademark other than as a mark, (2) in a descriptive sense, (3) in good faith. (KP Permanent)
Nominative Fair Use Defense
Nominative fair use is not expressly stated in the Lanham Act, but is rather referenced in § 43(c)(3)(A), meaning it is entirely judge-created law. (New Kids) Nominative fair use applies when a defendant uses plaintiff’s mark to refer to the plaintiff’s products. (Cairns v. Franklin Mint) Jurisdictional approaches to the defense differ (compare New Kids (9th Cir.) with Century 21 (3rd Cir. and International Information Systems (2nd Cir.))
FIGURE OUT WHICH ONE YOU’RE IN, THEN WALK THORUGH ANALYSIS GENERALLY
- 43(a) will not be applied to expressive works “unless the [use of the TM or other infringing material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of mark or other identifying material] expressly misleads as to the source” (Rogers v. Grimaldi)
Under trademark law, a “‘parody’ is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” (PETA v. Doughney) A parody must simultaneously convey that it is the original and that it is not the original but instead a parody—the second message must both differentiate and communicate an aspect of “satire, ridicule, joking, or amusement.” (Haute Diggity Dog; PETA) The success or failure of parody as a defense will be analyzed using a modified likelihood of confusion test. (Haute Diggity Dog)
First, the strength of plaintiff’s mark: must be enough to recognize plaintiff’s mark, but also see differences in defendant’s use. (Haute Diggity Dog)
Second, similarity of the marks: defendant must mimic plaintiff’s mark, but distinguish it enough to see satire. (Haute Diggity Dog)
Third, similarity of the products under the mark: even similar products can have successful parody defenses (see e.g. Jorrdache).
Fourth, channels of commerce (gag toys vs. high end luxury goods). (Haute Diggity Dog)
Fifth, advertising similarity. (Haute Diggity Dog)
Next, defendant’s intent: was the parody meaning to confuse the public? (Haute Diggity Dog) Note, intent to profit by parody is not bad faith. (Id.)
Finally, actual confusion. (Haute Diggity Dog)
Unauthorized Artistic Uses
If a defendant uses a mark in an artistic way, a defense in unauthorized artistic use defense can apply. (Rogers v. Grimaldi) This is an incredibly artist-friendly defense grounded in the First Amendment, and doesn’t care about alternative avenues of communication.
Rogers v. Grimaldi is a two-pronged test asking (1) does the defendant’s use have any artistic relevance to defendant’s work, and (2) does defendant’s use explicitly misleads as to the source of the work? (Id.) Essentially, there is no liability “unless the [the mark’s use] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [the use] explicitly misleads as to the source or the content of the work.” (Id.)
Dilution Exceptions under § 43(c)(3)
- News reporting and commentary
Similar to the exception for unauthorized artistic fair uses provided under Rogers v. Grimaldi, non-commercial expression is also exempt from prosecution. (see Mattel v. Walking Mountain and Mattel v. MCA) One drop of non-commercial expression is enough to for a non-commercial use qualification under § 43(c). (Mattel v. MCA)
A mark is considered abandoned when (1) it’s discontinued without intent to resume such use, or (2) the owner causes the mark to become generic (by omission or commission) or otherwise lose its significance as a mark. (Lanham Act § 45) Purchaser motivation is not a test for determining abandonment, and prima facie abandonment is inferred from three consecutive years of non-use. (Id.)
Abandonment through failure to use is applicable here. Thus, the burden of persuasion is on the defendant to persuade the court the mark is abandoned via non-use for at least three consecutive years. (see 15 U.S.C. § 1127, Punchgini)
Here, USE ANAYLIS FROM ABANDONMENT ON OUTLINE
Abandonment through naked licensing is applicable here. Naked licensing occurs when a licensor doesn’t exercise adequate quality control over licensee’s use of the mark such that it may no longer represent the quality of the product or service the consumer has come to expect. (see Barcamerica, and Freecycle)
A mark holder’s fighting a naked licensing defense must show it (1) retained contract rights to control quality of the use of its mark, (2) actually controlled the quality of the trademark’s use, or (3) reasonably relied on the licensee to maintain the quality of the mark (which requires a “close working relationship” factoring in (a) time (b) amount of product sold by licensees (c) family relationship and (d) if licensor had a close relationship to licensee’s employees and the agreement was premised on that relationship). (Freecycle)
First Sale Doctrine
Resale of genuine trademarked goods does not generally constitute infringement—trademark protections are exhausted after owner’s first authorized sale of the product. (Champion Spark Plug) Plaintiff has the overall burden of persuading a court that consumers would be confused regarding the nature of the goods sold by the defendant. (Davidoff & CIE, S.A.)
However, the First Sale Doctrine will not apply if there is a material alteration to the good—thus, the crucial question regards materiality of any alterations made by defendant. (Beebe)
DO ANALYSIS UNDER THE TYPE OF GOODS BEING SOLD IN OUTLINE