Trademark

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Trademark- A trademark is a brand name that can be a word, a symbol or a device used by a business to distinguish its goods or services from those of others. A patent and copyright are physical things, but a trademark can only exist in connection to some good or service. Infringement Test- Likelihood of confusion. Creation- Trademarks rights are arise from 1) use of the mark or 2) a bona fide intention to use a mark, along with the filing of an application to federally register that mark. Tenure- Trademarks can theoretically last forever as long as they are used to distinguish goods. Priority- Ownership of a mark is established by priority of appropriation. Priority is established not by conception but by bona fide usage. So if a group first uses a name and their record company sell their name in interstate commerce, the group has priority New Edition. Something of importance also is what the public associates with the trademark. Miscellaneous- Selling- Cannot simply give a trademark away. If you want to sell it you have to provide something else with it to pass legal scrutiny because the law cares more about the public beign confused than the individual owner. Destruction- 1) Nonuse of a mark, combined with an intent not to resume use, can lead to a determination of abandonment of the mark that results in a loss of trademark protection. A mark designating a disbanded musical group is deemed to remain in use if the group’s recordings continue to be played and sold, and the group continues to collect royalties. 2) When the word becomes part of the American diction. The courts strike a balance between the trademark owner’s property rights and the public’s expressive interests. The First Amendment may offer little protection for a competitor who labels its commercial goodwith a confusingly similar mark, but trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view Barbie. Parody is OK when using the trademark.

Dilution (Likelyhood of confusion, LOOK AT THIS)- 2 Ways- 1) Blurring; 2) Tarnishing (If it harms the product, if it’s a good product then maybe not but may blur). You can argue that someone is trying to dilute your name. Dilution law is the antithesis of trademark law because it seeks to protect the mark from association in the public’s mind with wholly unrelated goods and services. Example: Tylenol Snowboards. Exemptions 1) comparative advertising; 2) news reporting and commentary; and 3) non-commercial use (parody perhaps, you can make money on it, but used for 1st Amendment criticizing). 4) Normative Fair Use Defense- A use which the infringement laws imply do not apply, just as videotaping television shows for private home use does not implicate the copyright holder’s exclusive right to reproduction. These situations are where the only word reasonably available to describe a particular thing is pressed into service because it does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder. Example: When the Ds use the mark to refer to the product itself New Kids on the Block.

Trademark Registration- There is a registration system, but you are not required to register a trademark to establish your right to use it. Process- When an application has been filed, an examining attorney in the patent and trademark office will review the application and decide whether the mark may be registered. The office will make an initial determination about three months after the application has been filed. The applicant must respond to any objections within six months or the application will be deemed abandoned. Once the examining attorney approves a mark, the mark is published. Benefits- 1) the right to sue in federal court for trademark infringement; 2) the right to recover profits, damages and attorneys’ fees; 3) Gives other constructive notice of your mark; 4) Allows the use of the federal registration symbol ®; 5) Allows one to deposit copies of the registration with the customs service to stop importation of goods bearing an infringing mark; 6) Permits one to sue for counterfeiting the mark, providing civil and criminal penalties; 7) Enables one to file a corresponding application in many foreign countries. Reasons for Refusal- 1) It is scandalous or disparaging; 2) it is an insignia of a governmental entity; 3) Without consent it identifies a living individual or a deceased president during the life of his widow; 4) It is confusingly similar to a previously registered mark, or to a mark previously used in the US and not abandoned; 5) It is merely descriptive or deceptively misdescriptive of goods or services; 6) Or it is primarily a surname and is not distinctive of such goods or services. Requirements- Likeness- Must contain either; 1) a drawing of the trademark which shall be a substantially exact representation of the mark or 2) an adequate description of the mark. To register an image of likeness you have to obtain a registration covering every likeness and image of the person from birth until death Elvis Presley.

Trademark Term- To be protected by trademark law, a term must be primarily understood as a source identifier. Some terms, such as those that are coined, arbitrary or suggestive, are inherently distinctive and may be used as trademarks immediately upon adoption. Secondary Meaning Necessary- Other terms such as those that are descriptive, laudatory, geophraic or surnames, are not inherently distinctive and must acquire distinctiveness through proof of secondary meaning.

Trade Dress (packaging)- Trademark protection of packaging, the arrangement of things. To prevail on this claim a P would have to establish that its trade dress is protectable and that D’s use of the same or similar trade dress is likely to confuse consumers. Trade Dress is protectable if it is nonfunctional and has acquired secondary meaning and if its imitation creates a likelihood of consumer confusion. Morgan Creek. Elements- 1) Nonfunctionality (Is it necessary for the success of the product or is it superfluous? Is it one package put together in such a way as to make it unique?); 2) Secondary Meaning (When movie purchasing public associates the dress with a single producer or source rather than just the product itself) and; 3) Likelihood of Confusion.

Contents

Trademark law is about Source

  • indicating the source of something, it lets you know from where something came
  • source is used to develop reputation
    • Functional product configuration is not protectable as a trademark

Reputation

  • is the second most important word in trademark law
    • There are no tenants in common in a trademark

TEST

  • The test for trademark infringement is likelihood of confusion.
    • Source and reputation, if someone is likely to be confused as to the source of goods and services than the reputational interest in a product will suffer (if you don’t always know coke comes from coke, then their reputation is damaged)
      • A coke bottle has the curved shape that functions to show the source of the product.

Background

  • you get a trademark by using it NOT by creating it
  • current statute is the Lanham Act of 1946
    • Registration isn’t mandatory to receive protection (but those in the federal register receive stronger protection)
    • you need either federal registration or a violation of the Lanham Act’s false advertising or unfair competition provisions in order to enforce trademarks in US federal courts
  • To get a federal trademark you must have a mark which can be words, names symbols or devices
    • mark must be used in interstate commerce
    • but not be immoral, deceptive or scandalous
    • not disparage or falsely suggest a connection with persons, institutions, beliefs or national symbols
    • may not merely be descriptive, unless there is a secondary use shown
    • not deceptively misdescriptive
    • not primarily geographically misdescriptive
    • not merely functional
  • Classes of Marks
    • Trademark – distinguishes one person’s goods from another
    • Service Mark – distinguishes one person’s service from another
    • Trade Name – used to identify a business (must identify the source of product or service)
    • Certification Mark – used to certify the good in some way (Good Housekeeping)
    • Collective Mark – held by a group for use by its members
    • Trade Dress – distinctive packaging of a product (décor of a restaurant); must be inherently distinctive
    • Product Configuration – distinctive design and shape of a product (Coke bottle)
  • Classifications of Marks as Words
    • Arbitrary, fanciful and suggestive
      • arbitrary – no meaning other than as a trademark (Xerox and Lego)
      • fanciful – another meaning but one that has nothing to do with the mark (Apple computers)
      • suggestive – suggest a characteristic of the good or service (Coppertone sunblock)
    • Descriptive - one that identifies a characteristic of the article or service is marks
      • geographic (American Airlines)
      • surname (Dell Computers)
    • Generic – these cannot receive trademark protection even if they have a secondary meaning
      • genericide (aspirine)
    • Non-verbal Marks – dress and product configuration, sounds, colors, fragrances and other distinctive features of a product
      • must have a secondary meaning and not just be functional
        • function is a term of art in trademark law
          • it has some function other than the reputational trademark function (other than calling to mind source and reputation of source)


  • If a mark is not registered, the test is priority and then protection only extends to that area of the market where it is used
  • Registered marks receive nationwide protection
  • If both registered and unregistered marks are used in a region, the unregistered mark can prevail it if was used first and only in the areas where it was used

Defenses

Genericide

  • Bayer used to own Aspirin as a trademark, but it was then declared generic because it gave Bayer an unfair advantage over the marketplace having nothing to do with source or reputation, just the fact that the general public did not know any other term to define aspirin other than aspirin.

Functionality

  • Common in trade dress and product configuration

Abandonment

  • 3 consecutive years of non-use = prima facie evidence
  • nonuse of a mark combined with intent not to use is abandonment
  • a mark of a disbanded musical group is still deemed to remain in use if the group’s recordings continue to be played and sold, and the group continues to collect royalties

Non-Trademark Use

  • you are not using the mark as a mark

Nominative Fair Use Defense

  • The product or service must not be identifiable by any other means other then using the trademark
  • Use only enough of the trademark so that you can ID the product i.e. reasonably necessary to id the product
  • Must not use it in a way that will suggest sponsorship or endorsement by the trademark holder.

Remedies

  1. Injunction
  2. Damages

It Makes a Difference Whom you Pick a Fight With

  • Elvis
  • Three Stooges
  • Lego
  • NFL(Super Bowl)
  • Marilyn Monroe
  • Rosa Parks
  • Martin Luther King Junior
  • Disney (the BIG one)

Priority Battle

  • it’s not the first to create it or fix it or write it down, it’s the first to take it to the marketplace because that’s where the source and reputation are created


Multiple trademarks can indicate a single (same) source; one trademark cannot denote multiple sources


Grounds for a Claim

Confusion

AMF v. Sleekcraft Boats

599 F.2d 341 (9th Cir. 1979) Basic Inquiry:

  • How strong is the mark being defended?
  • How similar are the products in question?
  • How similar are the marks in question?
  • Have consumers actually been confused?
  • Which marketing channels have been used?
  • How likely is the consumer to exercise care when purchasing the products in question?
  • What was the defendant’s intent in selecting the mark?
  • How likely are the product lines to expand?

Dilution

  • only applies to famous trademarks.
    • To determine if a mark is famous look at:
  1. the duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties
  2. the amount, volume, and geographic extent of sales of goods and services offered under the mark
  3. the extent of actual recognition of the mark
  4. whether the mark was registered under the Act of March 3, 1881 or the Act of February 20, 1905 or the principle register
  • It is a trademark cause of action that is new and entirely separate from a regular trademark infringement
  • It acts to devalue the trademark
  • The idea that when you use a trademark, you may not be confusing customers, but you may be diluting the trademark value
    • Kodak ice-cream is taking away the relation between the work Kodak and cameras
Eastman Photographic Materials v. Kodak Cycle=

maker of Kodak cameras sued a company making Kodak bicycles

Two ways to Dilute a trademark=
  1. Tarnishment - association arising from the similarity between the mark or trade name and a famous mark that harms the reputation of the famous mark
  • But this is limited by First Amendment protection
  1. Blurring - Impairing the distinctiveness of the famous mark

To determine whether a use is likely to cause confusion look at:

  • The degree of similarity between the marks
  • The degree of inherent or acquired distinctiveness of the famous mark
  • The extent degree to which the owner of the famous mark engages in substantially exclusive use of the mark
  • The degree of recognition of the famous mark
  • Whether the user of a mark intended to create an association with the famous mark
  • Any actual association between the mark and the famous mark
What do you have to show for dilution?
Moseley v. V. Secret Catalogue (SUPCO 2002)

said you had to show actual dilution

Congress overruled this with the 2006 Amendment to the Lanham Act

Contributory Infringement

comes up in cybersquatting and landlords whose tenants sell counterfeit goods

Cases

In re Elvis Presley Enterprises, Inc. (1999)

(Trademark Trial and Appeals Board 1999) Administrative Trademark Judge Hanak The limits of trademark…

  • a famous person’s likeness may be used as a trademark when a particular pictorial representation indicates a source of origin, but a trademark cannot be claimed on all images of a person
    • Babe Ruth’s heirs tried to do this
  • Elvis Presley is the titan of trademark infringement
  • The estate is trying to register a trademark on anything that looks like Elvis Presley
    • They are trying to get right of publicity through trademark
  • Source and reputation are not about the right of publicity
  • You know Elvis should lose because rights of publicity and trademark doctrine are completely separate
  • Likeness and images of Elvis are vastly different from one another
    • Applicant’s sample photographs show Elvis at different ages and in different clothing and show how different he looked at different times in his life
  • Court rejects claim that the likeness and image of Elvis in general serves as a mark
    • Not supported by evidence

Court decides to affirm the refusal of registration on a procedural question – they can only register one trademark at a time and they are trying to register multiple

  • all trademark applications must contain:
    • a drawing of the trademark which shall be a substantially exact representation of the mark
  • OR
    • an adequate description of the mark
  • in this case, each pose of Elvis is a trademark

The Star v. 20th Century Fox

Something that has fallen into the public domain of copyright cannot be claimed as a trademark


Registering a single title of a book or movie is allowed only upon a showing of a secondary meaning Registration of a series of books, periodicals, newspapers, television programs may be protected without a secondary meaning if inherently distinctive

Fictional characters are entitled to trademark only if there is a secondary meaning

Morgan Creek Productions, Inc. v Capital Cities/ABC, Inc. (1991)

(C.D. Cal. 1991) District Judge Lew Trade dress analysis…

FACTS: Plaintiffs movie studio sue television studio for trademark and trade dress infringement, claiming that defendant copied its movie poster for "Young Guns" and used it to promote a television program

  • the promotional poster for the television show (used since 1989) was similar to movie promo poster (1988)
  • the Young Guns people sued for two trademark infringement and one copyright infringement claims
  • defendants moved for summary judgment on the trade dress claim

Ct said to prevail on Trade Dress, the plaintiff’s have to prove:(Plaintiff's burden to prove each element)\

  1. That the trade dress is protectable:
    1. nonfunctional and (functional means that it is essential to the product’s use or if it affects the cost and quality of the product)
    2. has acquired secondary meaning (when the purchasing public associates the dress with a single producer or source rather than just the product itself)
  2. That the defendant’s use of the same or similar trade dress is likely to confuse consumers (evidence of actual buyer confusion is not necessary)
  • prove this element through surveys or EJ thinks the Patent Trademark Office will give you the benefit if you’ve spent a lot of money on advertising

Ct. said summary judgment isn’t appropriate:

  • Functionality: the plaintiff is seeking to protect the total combination of the photograph, slogan and title and this has merit = combined this is distinctive
    • plaintiff seeks to protect the whole of the poster, including the words (wild and west), photograph, title; though elements alone not necessarily protectable, as a whole they are distinctive
  • Secondary Meaning: this was pervasively used, enjoyed sales success and unsolicited media coverage
    • advertising for the movie relied heavily on the infringed artwork and the sales success and unsolicited media coverage are sufficient evidence of secondary meaning to create genuine issue of material fact
  • Likelihood of Confusion: there is sufficient evidence upon which a jury could conclude there is a likelihood of confusion
    • actual evidence of buyer confusion not required to show trade dress infringement


  • This is more the playground conception of trademark law – “stop copying me”

Bell v. Streetwise Records, Ltd.

(D. Mass 1986) Who owns the mark…

FACTS: plaintiffs are five members of singing group New Edition who are seeking their exclusive right to appear, perform and record under that mark; defendants who marketed, produced and recorded the first New Edition album and singles from the album claim that they hired the plaintiffs for a concept that they developed and is identified by the recordings and not the group members and that they are the owners of the mark

  • Maurice Starr wanted New Edition to be the new Jackson Five
  • New Edition wanted to go its separate ways but Starr wanted the name
  • Starr says New Edition is a mark which identifies the concept and not the group members
  • each side is asking for an injunction

ISSUE: Whether Plaintiffs have the right to continue to use the New Edition mark

HOLDING: Plaintiffs own the mark and have demonstrated likelihood of success on the merits and defendants have failed to do so

DISCUSSION: Plaintiffs had formed a group and had performed under the mark prior to defendants being involved; defendants did take plaintiffs under their wing and taught them and cultivated their talents; plaintiffs signed contract acknowledging that defendants own the mark, but priority for ownership is established by usage

  • Plaintiffs acquired legal rights to the mark through their use of it in intrastate commerce; even if the use was simultaneous, plaintiffs were first to use mark in interstate commerce
  • Though defendants’ contributions were extensive, work was consistent with producing functions and functions of recording company

Court looks at priority of use and how the public viewed the name

  • To Establish Ownership
    • Priority of Use in Interstate Commerce
      • Court said the plaintiff must demonstrate this his use of the mark has been deliberate and continuous, not sporadic, casual or transitory
    • Court finds:
      • only one relevant market = the entertainment market
      • plaintiffs called themselves New Edition starting in 1981
    • when they recorded Starr ran the show and the studio
  • Control
    • the legal task is to determine which party controls or determines the nature and quality of the goods which have been marketed under the mark in question
      • plaintiffs claim their entertainment services are the goods
      • defense says it is the recordings
    • Two Steps:
  1. Determine that quality or characteristic for which the group is known to the public
  2. Determine who controls that quality or characteristic
  • Court finds the quality is the individual people in the group and the goods are the entertainment services they provide
  • No one but them controlled the quality of that service
    • Starr acted as a producer
    • the plaintiffs were known as New Edition long before Starr

Ct. finds that the plaintiffs get a preliminary injunction

  • failure to issue the injunction will weaken the mark and do irreparable harm to the plaintiffs
  • the injunction will cause minor injury to the defendants

Comments on the case:

  • the court didn’t focus on the fact that the contract said the company owned the name
  • this is because SOURCE and Consumer Protection trump the contract

The New Kids on the Block v. News America Publishing, Inc.

(9th Cir. 1992) Circuit Judge Kozinski Media Defending itself from trademark problems (next two cases - New Kids and Mattel)

  • start with likelihood of confusion = Infringement Test
  • then go to the nominative fair use (some case law says you have to use this)

FACTS: plaintiffs music group suing defendants (two newspapers) over their 900 number used to poll fans on the group (for which they collected fees not shared with plaintiffs); defendants granted summary judgment based upon First Amendment defense

  • the New Kids had 900 numbers where kids could call and get New Kids information
  • two newspapers had polls asking questions about the New Kids
    • USA Today – Which New Kid is More Popular?
      • proceeds went to charity
    • The Star – Now which Kid is the Sexiest?
  • The DC granted summary judgment against the defendants on First Amendment grounds


ISSUE: Whether defendants infringed upon plaintiffs' trademark

HOLDING: No

DISCUSSION: The mark is so large that it is difficult to refer to plaintiffs without using the mark; plaintiffs are protected against copycats and those falsely claiming plaintiffs’ endorsement or sponsorship, but protection does not extend to rendering newspaper articles, conversations, polls and comparative advertising impossible (fair use defense); Defendants reference mark only necessary to identify them as the subject of the polls, logo not used, and do not suggest joint sponsorship or endorsement; Plaintiffs do not have the right to control their fans’ use of their own money

  • Though the same result is reached, Court examines all issues as it is preferable to resolve the case on nonconstitutional grounds

Ct. jumps right to Fair Use Defense

  • said this isn’t the classic case where the defendant has used plaintiff’s mark describe the defendant’s product
  • the trademark is used to refer to the New Kids – in this case there is a new test:
  • Nominative Fair Use
  1. The product or service in question must be one not readily identifiable without the use of trademark
  2. Only so much of the mark or marks may be used as is reasonably necessary to identify the product or service
  3. The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder
  • Ct. finds that the use meets all of the requirements of the defense
    • to do the poll, you have to use the name
    • they only use the mark to the extent necessary to identify them as the subject of the polls
    • the announcements don’t suggest sponsorship or ownership

Comments on the Case:

  • we shouldn’t be talking about the defense if there is no infringement
  • Trademark Infringement Test is Likelihood of Confusion and NOT use of the Trademark
    • EJ says there is no infringement here

Mattel, Inc. v. MCA Records, Inc.

(9th Circuit 2002) Circuit Judge Kozinski Same judge as New Kids…10 years later

FACTS: Plaintiff toy company sues defendants over "Barbie Girl" song, claiming trademark infringement

  • Aqua produced the song Barbie Girl, which impersonates Barbie
  • Mattel sued
  • DC found this a parody and a nominative fair use, not likely to confuse or dilute the mark

ISSUE: Whether song is actual trademark infringement

HOLDING: No

DISCUSSION: Song makes fun of the values that the doll represents and targets the doll itself;Title is relevant to the song as the song is about Barbie and the values she represents and does not suggest that it was produced by Mattel; Lanham Act should only be construed to apply where there is possibility of consumer confusion

  • Title is meant to catch attention and promote value of underlying work
  • Title not expected to communicate publisher/producer’s information
    • doesn’t mislead as to source – to suggest the song was produced by Mattel

Ct. finds that MCA’s use of the mark is dilutive but that it is not purely commercial speech so it is fully protected

  • commercial speech does no more than propose a commercial transaction – if it does more than that, it is entitled to full First Amendment protection
  • Barbie Girl also makes fun of and comments on Barbie and the values she represents

Comments on the case:

  • in this case the mark is being used to make fun of the mark, so there is more First Amendment protection
  • in the Cat Not in the Hat, the mark was being used to lampoon OJ Simpson

GAF Broadcasting Co. v. Caswell-Massey Co.

FACTS: dispute over the mark “Music of the Perpetual Past” with plaintiff claiming that it had been using the service mark for several years for its radio program and that defendant is not the owner of the mark it is attempting to register

ISSUE: Whether defendant has the right to register the mark

HOLDING: No, applicant is not entitled to register the mark

DISCUSSION: Plaintiff has established that it owns the mark because right of ownership in mark arises from its use with particular product or service and not from adoption of the mark and regardless of who created the title, the actual rendering or advertising of the services under the mark created rights in the mark

  • No merit in applicant’s argument that GAF was airing the program on applicant’s behalf as GAF did the production and promotion nearly exclusively as applicant’s role was solely of an advertiser and has not been involved in the program in several years

Notes

  • Designation must be used in manner sufficiently consistent to be understood by the public as an identifying mark
  • Famous person’s likeness may be used as trademark when particular pictorial representation indicates source of origin but cannot apply to all images of that person
  • To be protected by trademark law, term must be primarily understood as a source identifier
  • Titles of series (books, periodicals, newspapers or tv programs) may be protected without showing of secondary meaning if inherently distinctive
  • Fictional characters entitled to trademark protection if secondary meaning can be proven


Alltel Commercial

  • Trademark analysis - It may be difficult to register something, but it may be easier to prove someone else’s infringement of something – do the likelihood of confusion analysis. Always start there.
    • What’s the likelihood that people will think that Sprint, Verizon or Cingular are the source behind this commercial? Probably not very likely
  • Disclaimer at the beginning? Does it take care of the liability issue? Not always, not a magic bullet – but the disclaimer is dealing with right of publicity
  • Trade Dress? The characters are not being used in the same manner, they just look like the other characters
  • Dilution claim? Can the companies claim that the value of their trademark has now been diluted by this use?
  • Fair Use? Sure – little bit of parody maybe…look at the factors


It is difficult to register the title of a single book or a single movie – different from registering a series (Star Wars, The Babysitter’s club)

  • This goes to the concept of source – the concept of source is meaningless if there’s only one work

Notes on Trade Dress

  • Trade dress is the total image, design and appearance of product or service, the overall impression created by the composition and design of its packaging, advertising or product configuration, including size, shape, color, color combinations, texture or graphics
  • Trade dress is divided into two categories: product packaging and product design, configuration or feature for determining distinctiveness
    • Packaging that is not inherently distinctive may be protected by trademark only after it has acquired distinctiveness through evidence of secondary meaning
    • Product design can never be deemed inherently distinctive; proof of secondary meaning is always required to prove distinctiveness




Notes

  • Trademark exists only when used in connection with good or service
  • Nonuse of mark can lead to determination of abandonment of mark resulting in loss of trademark protection
  • A mark designating a disbanded musical group deemed to remain in use if group’s recordings continue to be played and sold, and group continues to collect royalties


Notes

  • Test for trademark infringement: likelihood of confusion
  • Person may identify self, personal history or scope of trade by truthfully informing the public of the products serviced (e.g., Volkswagen repair shop may use mark in advertising)
  • Dilution: only available for protection of famous marks
    • Degree of similarity between mark and famous mark
    • Degree of inherent or acquired distinctiveness of famous mark
    • Extent to which owner of famous mark is engaging in substantially exclusive use of mark
    • Degree of recognition of famous mark
    • Whether user of mark/trade name intended to create association with famous mark
    • Any actual association between mark or trade name and famous mark
  • Tarnishment: harms reputation of mark
    • Association arising from similarity between mark or trade name and famous mark that harms reputation of famous mark

Secondary meaning

  • is when the consuming public now has a second understanding of what something means and they understand that as a source identifier
  • Something that is merely descriptive cannot be trademarked unless you can show secondary meaning
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