============================================================= Trademark Law William Fisher version 2013.12.2 ============================================================= ------------------------------------------------------------- 1 IV. Rights ------------------------------------------------------------- 1.1 Unfair Competition 1.1.1 Passing Off 1.1.1.1 D misleads consumers into thinking D's products were produced by P 1.1.1.2 when customers ask for product A, D serves them product B 1.1.1.2.1 e.g., Coca-Cola (SDCal. 1958) 1.1.1.2.2 e.g., Murphy Door (1989) 1.1.1.2.3 for contributory passing off, see Warner (US 1924) 1.1.2 Reverse Passing Off 1.1.2.1 D misleads consumers into thinking P's products were produced by D 1.1.2.2 Dastar (2003) limits the scope of this doctrine with respect to 43(a) 1.1.3 Misappropriation 1.1.3.1 INS v. AP 1.1.3.2 Radio Broadcast Cases 1.1.3.2.1 Plaintiff radio company acquires (by contract) exclusive right to broadcast sporting event 1.1.3.2.2 Defendant radio company listens to plaintiff’s broadcast and posts “spotters” to view the event illicitly 1.1.3.2.3 Held: misappropriation 1.1.3.2.3.1 Mayer (1932); Madison (1938); 20th c. Sporting (1937); Pittsburgh (1940); Mutual Broadcast (1941); National Exhibition (1955) 1.1.3.3 Metropolitan Opera (1950) 1.1.3.3.1 Met gives ABC exclusive broadcast rights and Columbia Records exclusive right to make records 1.1.3.3.2 Defendant makes “bootleg” records from ABC radio broadcasts 1.1.3.4 Dow Jones (1983) 1.1.3.5 NBA (1997) 1.1.3.6 Pattern of cases 1.1.4 Grab bag of unfair practices 1.1.4.1 publishing answers to questions in a physics test 1.1.4.2 soliciting trade from customers of former employer 1.1.4.3 inserting commercials in a film in a way that threatens artistic integrity 1.2 Consumer Confusion 1.2.1 Statutory Provisions 1.2.1.1 LA §32 1.2.1.1.1 key provision 1.2.1.1.1.1 (1) Any person who shall, without the consent of the registrant— 1.2.1.1.1.2 (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or 1.2.1.1.1.3 (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, 1.2.1.1.1.4 shall be liable in a civil action by the registrant for the remedies hereinafter provided. 1.2.1.1.2 full text 1.2.1.2 LA §43(a) 1.2.1.2.1 key provision 1.2.1.2.1.1 (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— 1.2.1.2.1.2 (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or 1.2.1.2.1.3 (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, 1.2.1.2.1.4 shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 1.2.1.2.2 full text 1.2.1.2.3 History (from Stevens in Two Pesos) 1.2.1.2.3.1 For many years after 1946 enactment of Lanham Act, the provision was narrowly construed -- to cover only: 1.2.1.2.3.1.1 false designation of geographic origin 1.2.1.2.3.1.2 false advertising 1.2.1.2.3.1.3 passing off 1.2.1.2.3.1.3.1 Passing off was deemed to require proof of secondary meaning 1.2.1.2.3.2 Gradual expansion of coverage by Circuit Courts 1.2.1.2.3.2.1 e.g., extension of “origin” from geography to source of product 1.2.1.2.3.3 State of the law in the federal circuits by late 1980s: 1.2.1.2.3.3.1 §43(a) creates general federal cause of action for trademark and trade-dress infringement -- available to the owners of unregistered marks 1.2.1.2.3.3.2 test = likelihood of confusion 1.2.1.2.3.3.3 all circuits except CA2 agree that secondary meaning is not necessary if there is a finding of inherent distinctiveness 1.2.1.2.3.4 In 1988 Amendments to Lanham Act, Congress implicitly approved this judicial expansion 1.2.1.2.3.4.1 expansion is also consistent with dual goals of Lanham Act: protect consumers and competitors 1.2.1.3 EU TM Directive (1988 & 2008), Arts. 5(1)(a) & 5(1)(b) 1.2.1.3.1 1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: 1.2.1.3.1.1 (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; 1.2.1.3.1.2 (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark. 1.2.1.3.2 2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 1.2.2 Contexts 1.2.2.1 Point-of-Sale Confusion 1.2.2.1.1 the large majority of cases fall into this category 1.2.2.1.2 types 1.2.2.1.2.1 confusion as to source 1.2.2.1.2.2 confusion as to sponsorship or affiliation 1.2.2.2 Initial Interest Confusion 1.2.2.2.1 inconsistent case law concerning metatags 1.2.2.3 Post-Sale Confusion 1.2.2.3.1 e.g., Ferrari 1.2.2.4 Store brands 1.2.2.4.1 Defense of the system by trade association 1.2.2.4.2 Conopco (CAFC 1994) suggests broad exemption for highly similar trade dress in this special context, so long as the TM of the store is visibly displayed on the package 1.2.2.4.3 McNeil (CA3 2007) says no categorical exemption; just a factor to be considered along with all others in gauging likelihood of confusion 1.2.2.5 Resales 1.2.2.5.1 Purchaser of lawfully trademarked goods is free to offer and sell them under their original trademarks 1.2.2.5.2 Exceptions 1.2.2.5.2.1 Exception 1: D sells the goods in a way that misleads consumers into thinking that D is a member of P’s authorized sales force or is one of P’s franchisees 1.2.2.5.2.2 Exception 2: Goods are materially different 1.2.2.5.2.2.1 If goods are used and have been refurbished by D, must clearly mark them as such 1.2.2.5.2.2.1.1 Champion Spark Plugs (US 1947) 1.2.2.5.2.2.1.2 Nitro Leisure Products, 341 F.3d 1356 (CAFC 2003) 1.2.2.5.2.2.2 Some goods may have been altered sufficiently that no amount of disclosure is sufficient; they cannot be sold with their original TMs 1.2.2.5.2.2.2.1 Dictum in Champion 1.2.2.5.2.2.2.2 Watch cases: 1.2.2.5.2.2.2.2.1 Rolex, 179 F.3d 704 (CA9 1999) 1.2.2.5.2.2.2.2.2 Rolex, 158 F.3d 816 (CA5 1998) 1.2.2.5.2.2.2.2.3 Bulova, 328 F.2d 20 (CA7 1964) 1.2.2.5.2.2.2.3 Karl Storz Endoscopy, 285 F.3d 848 (CA9 2002) 1.2.2.5.2.3 Exception 3: Goods have been repackaged 1.2.2.5.2.3.1 D must provide notice of the repackaging 1.2.3 Test: Likelihood of Confusion 1.2.3.1 LA §32 and LA §43(a) governed by same test 1.2.3.2 Procedure 1.2.3.2.1 LOC is question of fact (or mixed law and fact) 1.2.3.2.2 but most cases are resolved on motions for preliminary injunction or motions for summary judgment 1.2.3.2.3 Overwhelming majority of courts assess LOC by reviewing a non exhaustive list of "factors" 1.2.3.2.3.1 e.g., Polaroid (CA2 1961) 1.2.3.2.3.2 Exception: Top Tobacco 1.2.3.3 Factors vary slightly by Circuit 1.2.3.4 Typical Factors 1.2.3.4.1 Similarity of the two marks 1.2.3.4.1.1 a plaintiff who does not prevail in this factor has little hope of winning 1.2.3.4.1.2 types of similarity 1.2.3.4.1.2.1 similarity of appearance 1.2.3.4.1.2.2 similarity of sound 1.2.3.4.1.2.3 similarity of meaning 1.2.3.4.1.2.3.1 "doctrine of foreign equivalents" 1.2.3.4.2 Strength of the plaintiff’s mark 1.2.3.4.2.1 "inherent distinctiveness" 1.2.3.4.2.1.1 position of P's mark on the Abercrombie hierarchy 1.2.3.4.2.1.2 a.k.a. conceptual strength 1.2.3.4.2.2 "acquired distinctiveness" 1.2.3.4.2.2.1 cf. secondary meaning 1.2.3.4.2.2.2 a.k.a. strength in the marketplace 1.2.3.4.3 Proximity of the two products 1.2.3.4.4 Likelihood of the plaintiff “bridging the gap” 1.2.3.4.5 Marketing Environment 1.2.3.4.5.1 dimensions 1.2.3.4.5.1.1 are the products sold in the same stores? 1.2.3.4.5.1.1.1 Greater likelihood of confusion 1.2.3.4.5.1.2 how close are the products on the shelf? 1.2.3.4.5.1.2.1 the closer they are, the greater the likelihood of confusion [?] 1.2.3.4.5.2 correlates closely with "proximity" factor 1.2.3.4.6 Quality of the defendant’s product 1.2.3.4.6.1 only CA2 and DCCir 1.2.3.4.6.2 ambiguity concerning relevance 1.2.3.4.6.2.1 tarnishment theory 1.2.3.4.6.2.1.1 if D's goods are inferior to P's goods, confusion will damage P more severely 1.2.3.4.6.2.2 similarity theory 1.2.3.4.6.2.2.1 if D's goods are not inferior to P's goods, confusion is more likely 1.2.3.4.7 Defendant’s “good faith” 1.2.3.4.7.1 a finding of bad faith almost always results in a victory for P, but a finding of good faith is not so decisive 1.2.3.4.7.2 sometimes inferred from D's knowledge of P's mark prior to D's adoption of a similar mark 1.2.3.4.7.3 other courts require proof of intent to deceive consumers concerning source of D's products 1.2.3.4.7.3.1 "purposeful manipulation of the junior mark to resemble the senior's" A&H Sportswear (CA3 2000) 1.2.3.4.8 Sophistication of buyers of the products 1.2.3.4.8.1 for exploration, see Lee et al, Trademarks & Consumer Psychology 1.2.3.4.8.2 Lee schema 1.2.3.4.9 Evidence of actual confusion 1.2.3.4.9.1 surveys 1.2.3.4.9.1.1 not often used 1.2.3.4.9.1.1.1 expensive 1.2.3.4.9.1.1.2 majority of cases resolved at preliminary injunction stage 1.2.3.4.9.1.2 credible survey can trump all of the other factors 1.2.3.4.9.1.3 but in only aprx. 50% of the cases do the courts consider the surveys credible 1.2.3.4.9.2 direct testimony 1.2.3.4.9.2.1 from consumers who were confused 1.2.3.4.9.2.2 usually given little weight 1.2.4 Reform Proposals 1.2.4.1 1. Require proof of actual confusion 1.2.4.1.1 abandon factor-based effort to predict confusion 1.2.4.1.2 require P to submit credible evidence of actual confusion 1.2.4.2 2. Eliminate factors unrelated to likelihood of confusion 1.2.4.2.1 D's good faith 1.2.4.2.2 strength of P's mark 1.2.4.2.3 tarnishment theory of quality of D's product 1.2.4.3 3. Beebe Proposal 1.2.4.3.1 In determining whether a mark is likely to cause confusion, or to cause mistake, or to deceive, the court may consider all relevant factors, including the following: 1.2.4.3.1.1 (i) the degree of similarity of the marks as perceived by the relevant consumer population; 1.2.4.3.1.2 (ii) the degree of proximity of the goods as perceived by the relevant consumer population, including the degree of proximity of marketing methods and channels of distribution and sale; 1.2.4.3.1.3 (iii) evidence of actual confusion, mistake, or deception, including survey evidence; 1.2.4.3.1.4 (iv) the marketplace strength of the mark allegedly infringed; and 1.2.4.3.1.5 (v) the purpose of the alleged infringer in adopting and using its mark and if the purpose is to cause confusion, or to cause mistake, or to deceive, then the likelihood that the alleged infringer will accomplish that purpose. 1.2.4.3.2 94 Calif. L. Rev. at 1646-47 (2006) 1.2.4.4 4. Limit analysis to point-of-sale confusion 1.2.4.4.1 initial-interest confusion should not be actionable, at least in context of trade dress 1.2.4.4.1.1 Gibson 1.2.4.4.2 Post-sale confusion should not be actionable, at least in the context of repaired products 1.3 Dilution 1.3.1 Statutory Provisions 1.3.1.1 LA 43(c) 1.3.1.1.1 Causes of Action 1.3.1.1.1.1 (1) Injunctive relief Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. 1.3.1.1.1.2 (5) Additional Remedies: In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117 (a) and 1118 of this title, subject to the discretion of the court and the principles of equity if— 1.3.1.1.1.2.1 (A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2006; and 1.3.1.1.1.2.2 (B) in a claim arising under this subsection— 1.3.1.1.1.2.2.1 (i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or 1.3.1.1.1.2.2.2 (ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark. 1.3.1.1.2 Definitions 1.3.1.1.2.1 (2)(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: 1.3.1.1.2.1.1 (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. 1.3.1.1.2.1.2 (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. 1.3.1.1.2.1.3 (iii) The extent of actual recognition of the mark. 1.3.1.1.2.1.4 (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. 1.3.1.1.2.2 (2)(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: 1.3.1.1.2.2.1 (i) The degree of similarity between the mark or trade name and the famous mark. 1.3.1.1.2.2.2 (ii) The degree of inherent or acquired distinctiveness of the famous mark. 1.3.1.1.2.2.3 (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. 1.3.1.1.2.2.4 (iv) The degree of recognition of the famous mark. 1.3.1.1.2.2.5 (v) Whether the user of the mark or trade name intended to create an association with the famous mark. 1.3.1.1.2.2.6 (vi) Any actual association between the mark or trade name and the famous mark. 1.3.1.1.2.3 (2)(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. 1.3.1.1.3 Defenses 1.3.1.1.3.1 (3) Exclusions. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection: 1.3.1.1.3.1.1 (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with— 1.3.1.1.3.1.1.1 (i) advertising or promotion that permits consumers to compare goods or services; or 1.3.1.1.3.1.1.2 (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. 1.3.1.1.3.1.2 (B) All forms of news reporting and news commentary. 1.3.1.1.3.1.3 (C) Any noncommercial use of a mark. 1.3.1.1.4 Burden of Proof for unregistered trade dress 1.3.1.1.4.1 (4) Burden of Proof: In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that— 1.3.1.1.4.1.1 (A) the claimed trade dress, taken as a whole, is not functional and is famous; and 1.3.1.1.4.1.2 (B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks. 1.3.1.1.5 Preemption of some state claims 1.3.1.1.5.1 (6) Ownership of valid registration a complete bar to action. The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that— 1.3.1.1.5.1.1 (A) is brought by another person under the common law or a statute of a State; and 1.3.1.1.5.1.2 (B) 1.3.1.1.5.1.2.1 (i) seeks to prevent dilution by blurring or dilution by tarnishment; or 1.3.1.1.5.1.2.2 (ii) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement. 1.3.1.1.6 Conflicts with Patent Statute 1.3.1.1.6.1 (7) Savings clause. Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States. 1.3.1.2 State statutes 1.3.1.2.1 e.g., NY Gen. Bus. Law 360-1 1.3.1.2.1.1 § 360-l. Injury to business reputation; dilution. Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services. 1.3.1.3 EU 1.3.1.3.1 EU TM Directive (1988 & 2008), Art. 5(2) 1.3.1.3.1.1 Any member state may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark [in relation to goods or services which are not similar to those for which the trade mark is registered], where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 1.3.1.3.2 Davidoff v. Gofkid (ECJ 2003) 1.3.1.3.2.1 tacitly delete the restrictive phrase: "in relation to goods or services which are not similar to those for which the trade mark is registered" 1.3.2 History in USA 1.3.2.1 Before 1925, courts are unreceptive to such claims 1.3.2.1.1 Borden (CA7 1912) 1.3.2.2 1925-1935: State and Federal courts begin to reach dilution 1.3.2.2.1 Rolls-Royce (CA3 1925) 1.3.2.2.2 Dunhill (SDNY 1929) 1.3.2.2.3 Tiffany (NY 1933) 1.3.2.3 State Anti-Dilution Statutes have largely displaced the common law 1.3.2.3.1 e.g., Mead (CA2 1989) 1.3.2.4 Federal Anti-Dilution Statute of 1995 1.3.2.5 Victoria’s Secret (2003) 1.3.2.6 Trademark Dilution Revision Act (2006) 1.3.3 Requirements 1.3.3.1 P's mark is famous 1.3.3.1.1 e.g., Top Tobacco 1.3.3.2 P's mark is distinctive 1.3.3.3 D uses its mark in commerce 1.3.3.4 D's usage began after P's mark became famous 1.3.3.5 D's use is likely to cause dilution 1.3.3.5.1 Nabisco Approach (pre-2006) 1.3.3.5.1.1 Facts 1.3.3.5.1.2 Doctrine 1.3.3.5.2 Evolution of the requirements for proving dilution 1.4 Territoriality 1.4.1 General Principle: trademark rights are nation-specific 1.4.1.1 a trademark gives its holder rights only in the nation that issued in the mark 1.4.1.1.1 prior to Lanham Act, the territorial principle operated at the level of individual states in the US 1.4.1.1.1.1 Hanover Star Milling (US 1916) (Holmes, J., concurring) 1.4.1.1.2 now operates at the level of the nation 1.4.1.1.3 e.g., Bourjois (U.S. 1923) 1.4.1.1.3.1 holder of the French ™ "Bourjois" sold the US mark and associated business to the plaintiff, a US company 1.4.1.1.3.2 Plaintiff continued to import the French face powder and sell it in the US 1.4.1.1.3.3 Plaintiff can prevent an arbitrageur from buying packages of the powder in France and importing them into the US 1.4.1.1.3.3.1 the French mark, though valid in France, does not give the arbitrageur rights to import into the US 1.4.1.2 priority of use depends entirely upon use in the US 1.4.1.2.1 '[P]riority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world." 1.4.1.2.1.1 McCarthy 29:2 1.4.1.2.2 Earlier use in another country doesn't count. 1.4.1.2.2.1 Person's Co., Ltd. v. Christman (Fed. Cir. 1990) 1.4.1.2.2.2 Buti v. Perosa (2d Cir. 1998) 1.4.2 Exceptions 1.4.2.1 1. Extraterritorial application of US trademark law 1.4.2.1.1 Steele v. Bulova (U.S. 1952) 1.4.2.1.1.1 Facts 1.4.2.1.1.1.1 Plaintiff held Bulova mark in US, but not Mexico 1.4.2.1.1.1.1.1 plaintiff's US advertising spilled into Mexico 1.4.2.1.1.1.2 Defendant (a resident of Texas) later registered Bulova in Mexico 1.4.2.1.1.1.3 Defendant in Mexico applied Bulova mark to watches imported from Switzerland (including some parts imported from US) and sold those watches in Mexico 1.4.2.1.1.1.4 some of the purchasers were US citizens, returned to the US with the watches 1.4.2.1.1.1.5 by the time the case gets to SCOTUS, plaintiff had secured cancellation of the Defendant's Mexican TM 1.4.2.1.1.2 Held: District Court had jurisdiction to issue injunction against the use of "Bulova" on watches in Mexico 1.4.2.1.2 Courts of Appeals disagree concerning which combinations of special circumstances are sufficient to support extraterritorial reach 1.4.2.1.2.1 Vanity Fair Mills (CA2 1956) 1.4.2.1.2.1.1 extraterritorial reach requires at least 2 of 3 factors 1.4.2.1.2.1.1.1 1. D's conduct has "substantial effect" on US commerce 1.4.2.1.2.1.1.2 2. D is US citizen 1.4.2.1.2.1.1.3 3. extraterritorial reach would not conflict with ™ rights established under foreign law 1.4.2.1.2.2 Wells Fargo (CA9 1977) 1.4.2.1.2.2.1 apply "rule of reason" 1.4.2.1.2.2.1.1 precondition: D's conduct has "some effect" on US commerce 1.4.2.1.2.2.1.2 if so, then consider: 1.4.2.1.2.2.1.2.1 degree of conflict with foreign law or policy 1.4.2.1.2.2.1.2.2 nationalities of parties 1.4.2.1.2.2.1.2.3 likelihood of compliance 1.4.2.1.2.2.1.2.4 relative magnitudes of effect on domestic and foreign commerce 1.4.2.1.2.2.1.2.5 bad faith 1.4.2.1.2.3 McBee (CA1 2005) 1.4.2.1.2.3.1 when D is not a US citizen, extraterritorial reach is possible only if D's conduct affects US sufficiently extensively to give US "a reasonably strong interest in the litigation" 1.4.2.1.2.3.2 not satisfied by a Japanese website offering adolescent clothing under mark "Cecil McBee" 1.4.2.1.2.3.2.1 plaintiff 1.4.2.1.2.3.2.2 defendant 1.4.2.2 2. 6-month priority right under Paris Convention, Art. 4 1.4.2.3 3. Obligation to protect "well known marks" 1.4.2.3.1 Treaty Obligations 1.4.2.3.1.1 Paris Convention Art. 6bis 1.4.2.3.1.2 TRIPS Arts. 16(2-3) 1.4.2.3.2 Slow US Reception 1.4.2.3.2.1 Grupo Gigante (CA9 2004) 1.4.2.3.2.2 see "Foreign Use" in Part II 1.4.3 Importation 1.4.3.1 Statutory Provisions 1.4.3.1.1 Lanham Act 32, 42, 43 1.4.3.1.2 Tariff Act (1930) 1.4.3.1.2.1 Section 1526 1.4.3.1.2.1.1 § 1526. Merchandise bearing American trademark (a) Importation prohibited. Except as provided in subsection (d) of this section, it shall be unlawful to import into the United States any merchandise of foreign manufacture if such merchandise, or the label, sign, print, package, wrapper, or receptacle, bears a trade-mark owned by a citizen of, or by a corporation or association created or organized within, the United States, and registered in the Patent Office [Patent and Trademark Office] by a person domiciled in the United States, under the provisions of the Act entitled "An Act to authorize the registration of trade-marks used in commerce with foreign nations or among the several States or with Indian tribes, and to protect the same," approved February 20, 1905, as amended, and if a copy of the certificate of registration of such trade-mark is filed with the Secretary of the Treasury, in the manner provided in section 27 of such Act, unless written consent of the owner of such trade-mark is produced at the time of making entry. 1.4.3.1.2.1.2 Regulations construing 1526 1.4.3.1.2.2 Section 337 1.4.3.1.2.2.1 § 1337. Unfair practices in import trade (a) Unfair methods of competition declared unlawful. (1) Subject to paragraph (2), the following are unlawful, and when found by the Commission to exist shall be dealt with, in addition to any other provision of law, as provided in this section: (A) Unfair methods of competition and unfair acts in the importation of articles (other than articles provided for in subparagraphs (B), (C), (D), and (E)) into the United States, or in the sale of such articles by the owner, importer, or consignee, the threat or effect of which is-- (i) to destroy or substantially injure an industry in the United States; (ii) to prevent the establishment of such an industry; or (iii) to restrain or monopolize trade and commerce in the United States. (B) The importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that-- (i) infringe a valid and enforceable United States patent or a valid and enforceable United States copyright registered under title 17, United States Code; or (ii) are made, produced, processed, or mined under, or by means of, a process covered by the claims of a valid and enforceable United States patent. (C) The importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that infringe a valid and enforceable United States trademark registered under the Trademark Act of 1946. 1.4.3.1.2.2.2 As construed by CAFC in Bordeau, gives ITC the power to prevent the importation of goods that, if sold in US, would violate LA 1.4.3.2 Right to prevent importation by unaffiliated defendant 1.4.3.2.1 If P holds a US TM, and a company unaffiliated with D seeks to import goods marked with the same or similar TM, P has lots of remedies 1.4.3.3 Grey-Market Goods 1.4.3.3.1 defined: 1.4.3.3.1.1 Bordeau (CAFC 2006): products produced by or with the consent of the US TM holder, but not authorized for sale in US 1.4.3.3.2 USA system 1.4.3.3.2.1 Importation is lawful if US and foreign TM holders have common interest or control (parent, subsidiary, or same) and goods bearing the TM are the same 1.4.3.3.2.1.1 Kmart (US 1988) upholds Customs Service regulations, construing 1526, that refuse to ban the importation of foreign-made goods in cases of common control 1.4.3.3.2.1.2 Variations 1.4.3.3.2.1.2.1 US firm U sets up a plant in France to manufacture goods; plant ships goods to US for sale here; also sells goods in France; T buys goods in France and sells in US: OK 1.4.3.3.2.1.2.2 US firm U sets up foreign subsidiary (U-France) to manufacture goods; U-France ships goods to US for sale here; U-France also sells goods in France; T buys goods in France and sells in US: OK 1.4.3.3.2.1.2.3 Foreign firm (FF) makes and sells goods in France; sets up US subsidiary F-US); FF has foreign TM; F-US has US TM on identical mark; T buys goods abroad and imports to US: OK 1.4.3.3.2.1.3 Effect: Limit opportunities for differential pricing 1.4.3.3.2.2 Importation is unlawful if the two firms, though affiliated, lack common interest or control 1.4.3.3.2.2.1 Classic example: F-France sells to US firm (U) the right to register Mark and to sell FF’s goods in US; T buys goods in France and imports to US. Not OK 1.4.3.3.2.2.1.1 c.f. Bourjois (U.S. 1923) (discussed above) 1.4.3.3.2.2.2 Variation: US Firm authorizes foreign Firm (F) to sell goods bearing the mark abroad, requires F to agree not to sell in US; T buys goods in France and sells in US. Not OK 1.4.3.3.2.2.2.1 Until 1988, Customs Service permitted importation under these conditions, 1.4.3.3.2.2.2.2 But SCt in K Mart struck this interpretation down 1.4.3.3.2.3 Importation is unlawful even if the US and foreign TM owners have common interest or control if US and foreign goods bearing identical marks differ materially in substance 1.4.3.3.2.3.1 Theory: generates consumer confusion because consumers will not know which set of characteristics to associate with the product 1.4.3.3.2.3.2 Under 1526, material-difference standard applies only to goods manufactured abroad – K Mart 1.4.3.3.2.3.3 Under 1337, material-difference standard applies both to goods manufactured in US and sold overseas, and to goods manufactured overseas (Bordeau) 1.4.3.3.2.3.4 Not necessary that D’s product be inferior, just different 1.4.3.3.2.3.5 Modest differences suffice 1.4.3.3.2.3.5.1 Martin Herend Imports (CA5 1997) -- slight difference sufficient 1.4.3.3.2.3.5.2 Bourdeau Bros. (CAFC 2006) GLK 996: Low threshold; only necessary that consumers would consider the features significant when deciding whether to buy 1.4.3.3.2.3.5.2.1 Different lighting systems, safety features, wagon hitches, instruction manuals on US and European tractors easily fit the bill 1.4.3.3.2.3.5.3 Nestle, 982 F.2d 639: different amounts of ingredients in chocolate 1.4.3.3.2.3.5.4 Original Appalachian, 816 F.2d 68 (CA2 1987): Cabbage Patch dolls sold in Spain have “adoption papers” in Spanish 1.4.3.3.2.3.5.5 Kia Motors (2009): differences in warranties sufficient 1.4.3.3.2.3.6 Procedure: Kia Motors (2009): 1.4.3.3.2.3.6.1 “Therefore, courts have adopted a simpler, two-part test to determine if likelihood of confusion exists in a gray market goods context: 1.4.3.3.2.3.6.1.1 (1) were the goods not intended to be sold in the United States; and 1.4.3.3.2.3.6.1.2 (2) are they materially different from the goods typically sold in the United States? 1.4.3.3.2.3.6.1.3 Once a plaintiff establishes a material difference, the burden shifts to the accused infringer to establish by a preponderance of evidence that the difference is not the kind that consumers, on average, would likely consider in purchasing a product. 1.4.3.3.2.3.7 P loses the benefit of the doctrine if it sells some goods within US with the same characteristics of the goods whose importation it’s challenging 1.4.3.3.2.3.7.1 Bordeau Bros. (CAFC 2006) 1.4.3.3.3 Systems used by regional TM regimes 1.5 Domain Names 1.5.1 Background 1.5.1.1 Types of Dispute 1.5.1.2 late 1990s: Courts in various countries apply traditional trademark law to domain-name disputes in divergent ways 1.5.1.2.1 Amadeus Marketing (Italy 1997): TM owner must prove operation of similar DN is directly confusing or damaging to TM 1.5.1.2.2 British Telecommunications (UK 1998): A DN incorporating a TM “shows an inherent tendency to confuse” consumers 1.5.1.2.3 Champagne Céréales (France 1998): A DN mimicking an unregistered TM creates excessive likelihood of confusion 1.5.1.2.4 Braunschweig (Germany 1997): DN incorporating name of a city creates likelihood of confusion 1.5.1.2.5 Poor fit 1.5.1.2.5.1 “Use in Commerce”? 1.5.1.2.5.2 Consumer Confusion? 1.5.1.2.5.3 Federal Dilution Doctrine only applies to “famous” marks 1.5.1.2.5.4 Judicial proceedings are slow and expensive 1.5.1.2.6 Pressure grows to devise a dispute-resolution system adapted to domain names 1.5.2 UDRP 1.5.2.1 Coverage 1.5.2.1.1 all gTLDs 1.5.2.1.2 aprx. 1/3 of cc TLDs 1.5.2.2 Requirements (Art. 4(a)) 1.5.2.2.1 the domain name is identical or misleadingly similar to a trademark in which someone else has rights; 1.5.2.2.1.1 cf. Initial interest confusion 1.5.2.2.1.2 Applies to both registered and unregistered trademarks 1.5.2.2.2 the holder of the domain name has no rights or legitimate interests in that domain name; and 1.5.2.2.2.1 e.g., Pre-dispute use or demonstrable preparations to use the DN in bona fide offering of goods or services 1.5.2.2.2.2 e.g., Defendant was commonly known by the name 1.5.2.2.2.3 e.g., Legitimate, noncommercial or fair use of the DN without intent to misleadingly divert or tarnish 1.5.2.2.3 the domain name "has been registered and is being used in bad faith" 1.5.2.2.3.1 e.g., Circumstances indicate that defendant’s main purpose was to sell DN to TM owner for more than the direct costs of registration 1.5.2.2.3.2 e.g., D has a history of registering DNs to prevent TM owners from registering 1.5.2.2.3.3 e.g., Registering a DN in order to disrupt the business of a competitor 1.5.2.2.3.4 e.g., Attempting to divert Internet users to Defendant’s site for commercial gain by creating confusion concerning source or sponsorship 1.5.2.3 Procedure 1.5.2.3.1 Complainant picks forum 1.5.2.3.2 Respondent has 20 days to respond 1.5.2.3.3 No additional submissions typically are permitted 1.5.2.3.4 Decision within 14 days of appointment of panelist(s) 1.5.2.3.5 Respondents default 50% of the time 1.5.2.3.6 Remedies: 1.5.2.3.6.1 Cancellation of the registration 1.5.2.3.6.2 Transfer of the DN to the complainant 1.5.2.3.7 Losing respondent can postpone remedy by filing suit within 20 days 1.5.2.4 Approved Providers 1.5.2.4.1 Asian Domain Name Dispute Resolution Centre 1.5.2.4.2 National Arbitration Forum 1.5.2.4.3 WIPO 1.5.2.4.4 Czech Arbitration Court 1.5.2.4.5 Arab Center for Domain Name Dispute Resolution (ACDR) 1.5.2.5 Usage 1.5.2.6 Subtopic 1.5.3 ACPA 1.5.3.1 Requirements 1.5.3.1.1 TM owners have civil cause of action against a defendant who, with bad faith intent to profit from the goodwill of a TM, "registers, traffics in, or uses" a DN that is: 1.5.3.1.1.1 identical or confusingly similar to a distinctive mark, or 1.5.3.1.1.1.1 confusion assessed through comparison of the 2 names, not through evaluation of surrounding circumstances 1.5.3.1.1.1.2 differences in suffixes or minor differences in spelling will not prevent a finding of confusion 1.5.3.1.1.2 dilutive of a famous mark 1.5.3.1.2 Factors used to determine bad faith 1.5.3.1.2.1 1. Does D have IP rights in the DN? 1.5.3.1.2.2 2. Is the DN D’s legal or customary name? 1.5.3.1.2.3 3. D’s prior use of DN to offer goods/services 1.5.3.1.2.4 4. D’s prior noncommercial or fair use of DN 1.5.3.1.2.5 5. D‘s intent to divert business from P and harm P's good will by causing likelihood of confusion 1.5.3.1.2.6 6. D's offer to sell DN – or habit of doing so 1.5.3.1.2.7 7. Did D provide false contact information 1.5.3.1.2.8 8. Did D acquire multiple DNs similar to TMs 1.5.3.1.2.9 9. How distinctive or famous is P’s mark? 1.5.3.1.3 Safe Harbor: 1.5.3.1.3.1 “Bad faith intent” shall not be found where the defendant “believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful” 1.5.3.2 Remedies 1.5.3.2.1 Injunctive Relief (retroactive) 1.5.3.2.2 Damages (nonretroactive) 1.5.3.2.3 Statutory Damages (nonretroactive) 1.5.3.2.3.1 $1000 - $100,000 per domain name 1.5.3.2.4 In rem jurisdiction 1.5.3.2.4.1 Fourth Circuit construes to reach suits brought under sections 32, 43(a) and 43(c), as well as suits under section 43(d) 1.5.3.2.5 Registrars may sua sponte refuse to register marks that they deem to violate the rules 1.5.3.3 Illustrative Cases 1.5.3.3.1 Sporty's 1.5.3.3.2 Lucas Nursery 1.5.3.3.3 PETA 1.5.3.3.4 Mattel 1.6 Secondary Liability 1.6.1 Principles 1.6.1.1 Bases of liability 1.6.1.1.1 unfair competition 1.6.1.1.2 LA 32 1.6.1.1.3 LA 43(a) 1.6.1.1.4 LA 43(c)? 1.6.1.1.4.1 No cases yet, but likely 1.6.1.2 contributory liability (classic version) 1.6.1.2.1 D actively induces TM infringement 1.6.1.2.2 D sells products or supplies services to a party that D knows or has reason to know is using them to infringe 1.6.1.3 vicarious liability 1.6.1.3.1 defendant and direct infringer must have an apparent or actual partnership 1.6.2 Applications 1.6.2.1 William Warner v. Eli Lilly (1924) 1.6.2.1.1 pharmacists passing off "Coco-quinine" 1.6.2.2 Inwood Labs (USSCt 1982) 1.6.2.2.1 generic drug manufacturer supplies drugs to pharmacist known to be mislabeling them 1.6.2.3 Mini Maid Services (CA11 1992) 1.6.2.3.1 Franchisor has no duty to supervise diligently the activities of franchisees 1.6.2.3.2 But franchisor is liable if it knew of infringements by franchisees and failed to exercise contractual power to stop 1.6.2.4 Hard Rock Cafe (CA7 1992) 1.6.2.4.1 contributory liability 1.6.2.4.1.1 "willful blindness" would give rise to liability 1.6.2.4.1.2 but flea market operator is not obliged to seek out and prevent acts of infringement 1.6.2.4.2 vicarious liability 1.6.2.4.2.1 flea market operator is not vicariously liable where it did not exercise joint ownership or control over the infringing products 1.6.2.5 Fonovisa (CA9 1996) 1.6.2.5.1 flea market operator liable for "supplying the necessary marketplace" for infringing sales 1.6.2.6 Lockheed Martin (CA9 1999) 1.6.2.6.1 Domain name registrar (NSI) not liable for registering and refusing to cancel infringing domain names 1.6.2.6.2 no "direct control and monitoring" 1.6.2.7 GEICO v. Google (EDVa 2004) 1.6.2.7.1 purchasers of banner ads incorporate in those ads P's TMs in ways that cause consumer confusion 1.6.2.7.2 held: Google is secondarily liable because it exercises significant control over the content of the ads 1.6.2.8 Perfect 10 (CA9 2007)(2/1) 1.6.2.8.1 credit card companies processes payments made by customers to websites selling images that infringe P's TMs 1.6.2.8.2 contributory liability 1.6.2.8.2.1 held: insufficient "direct control and monitoring of the instrumentality" to support secondary liability 1.6.2.8.3 vicarious liability 1.6.2.8.3.1 no VL where defendant credit card companies and infringing websites did not have a symbiotic relationship and were not under joint ownership and control 1.6.2.9 Ebay cases 1.6.2.9.1 France 1.6.2.9.1.1 legal principles: 1.6.2.9.1.1.1 Civil Code, arts 1382-1383 impose general duty to avoid causing harm to another 1.6.2.9.1.1.2 Art. 6 of Law on Confidence in Digital Economy grants safe harbor to internet hosts 1.6.2.9.1.2 case law 1.6.2.9.1.2.1 Louis Vuitton (2008) 1.6.2.9.1.2.1.1 ebay liable; as broker receiving commissions, doesn't qualify as host 1.6.2.9.1.2.2 Hermes (2008) 1.6.2.9.1.2.2.1 same 1.6.2.9.1.2.3 Christian Dior (2008) 1.6.2.9.1.2.3.1 same 1.6.2.9.1.2.4 L'Oreal (2009) 1.6.2.9.1.2.4.1 eBay not liable; had taken sufficient precautions 1.6.2.9.1.2.4.2 parties urged to undergo mediation 1.6.2.9.2 Germany 1.6.2.9.2.1 Internet Auction II (2007) 1.6.2.9.2.1.1 eBay liable as an intermediary for sales of counterfeit Rolex watches 1.6.2.9.2.1.2 however, liability dependent upon capacity to detect and halt infringing sales with reasonably affordable filtering technology 1.6.2.9.3 USA 1.6.2.9.3.1 Tiffany v. eBay 1.6.2.9.3.1.1 Facts 1.6.2.9.3.1.1.1 Tiffany products routinely sold on eBay; some are counterfeit 1.6.2.9.3.1.1.2 Ebay removes auction items whenever Tiffany identifies them as counterfeit 1.6.2.9.3.1.1.3 But Ebay refuses to monitor auctions to ensure that no one seller offers more than five items 1.6.2.9.3.1.2 decision 1.6.2.9.3.1.2.1 SDNY 2008: eBay not liable; no "specific knowledge" of infringement; duty to monitor does not run this far 1.6.2.9.3.1.2.2 CA2 2010: No liability in absence of either: 1.6.2.9.3.1.2.2.1 failure to respond after receiving specific notice of infringing works 1.6.2.9.3.1.2.2.2 willful blindness 1.6.2.9.3.1.3 eBay's current policies and practices 1.6.2.9.3.1.3.1 VeRO 1.6.2.9.3.1.3.2 Notice of Claimed Infringement 1.6.2.9.3.1.3.3 "eBay Against Counterfeits 1.6.2.9.4 UK 1.6.2.9.4.1 L'Oreal (2009) 1.6.2.9.4.1.1 eBay liable only if it "procured or induced [the primary infringer's behavior], or joined in the common design pursuant to which the [infringement] was committed." 1.6.2.9.5 Belgium 1.6.2.9.5.1 Lancome (2008) 1.6.2.9.5.1.1 eBay qualifies as a host under Article 14 of the EU Directive on Electronic Commerce ------------------------------------------------------------- 2 V. Defenses ------------------------------------------------------------- 2.1 Fraud 2.1.1 Penalty: Cancellation 2.1.1.1 Severity of the penalty arises from the fact that cancellation covers the mark as a whole, not just uses of the mark to which the fraud applies 2.1.1.1.1 See. E.g., Bose (2009): Bose falsely asserted that mark Wave was still used on tape recorders; TTAB decision: cancel mark even as to radios 2.1.1.2 However, P keeps CL rights 2.1.2 Can be asserted to cancel any registration 2.1.2.1 Even apply to incontestable marks 2.1.3 Standard 2.1.3.1 For a while, TTAB adopted an easy-to-satisfy standard: X commits fraud if it knew or should have known that a statement was false or misleading 2.1.3.1.1 Medinol (2003) 2.1.3.1.2 Standard Knitting (2006) 2.1.3.2 CAFC recently reinstated traditional standard: applicant knowingly makes a false, material representation to PTO with intent to deceive (Bose 2009) 2.1.3.2.1 Neither negligence nor gross negligence is sufficient; need scienter 2.1.3.2.2 Proof must be by clear and convincing evidence 2.1.3.2.3 But intent may be inferred from objective evidence 2.1.3.2.4 Applied: General Counsel’s belief that repairing old tape recorders sold under the Wave label was sufficient to establish continuing use is enough to negate scienter 2.2 Classic Fair Use 2.2.1 Typical scenario: 2.2.1.1 P secures protection for a descriptive mark through secondary meaning (SM); 2.2.1.2 D uses P’s mark, not as a TM or service mark (i.e., not to indicate origin or source – the company from which it emanates) but rather to describe fairly and in good faith D’s product 2.2.1.2.1 i.e., the characteristics or geographic origin of D's products 2.2.2 Examples 2.2.2.1 Zatarains (CA5 1983): 2.2.2.1.1 P had valid mark in “Fish-Fri”; 2.2.2.1.2 D described its coating mix for fried food as “Fish Fry” 2.2.2.1.3 Held: fair use 2.2.2.2 US Shoe (CA2 1990) (Leval) 2.2.2.2.1 P’s slogan: Looks like a Pumo, feels like a sneaker 2.2.2.2.2 D’s slogan: And when we say if feels like a sneaker, we’re not just stringing you along 2.2.3 KP Permanent Make-up (US 2004) 2.2.3.1 D need not disprove likelihood of consumer confusion 2.2.3.1.1 Rely on text of 33(b)(4) 2.2.3.1.2 Some degree of consumer confusion is compatible with fair use 2.2.3.2 But SCt leaves open possibility that consumer confusion is relevant to proof of the component parts of the defense: 2.2.3.2.1 a. “objectively fair” 2.2.3.2.2 b. really descriptive in character 2.2.3.3 CA on remand constructs a list of factors to determine whether D's action was "fair": 2.2.3.3.1 1. likelihood of confusion 2.2.3.3.2 2. strength of P’s mark 2.2.3.3.3 3. descriptive nature of the term 2.2.3.3.4 4. available alternatives 2.2.3.3.5 5. extent of use of the term prior to registration 2.2.3.3.6 6. any differences among the times and contexts in which D has used the term 2.3 Nominative Fair Use 2.3.1 Requirements 2.3.1.1 When D (a commercial user) uses P‘s mark to describe P‘s product, fair use iff: 2.3.1.1.1 1. P‘s product is not readily identifiable without use of the TM 2.3.1.1.2 2. only so much of P‘s mark is used as is necessary to identify P‘s product 2.3.1.1.3 3. D in no way suggests that P sponsors the reference 2.3.2 Examples 2.3.2.1 New Kids (CA9 1992) 2.3.2.1.1 USA today and The Star set up 900 numbers to determine fans’ opinions as to the most attractive member of the New Kids on the Block 2.4 "Trademark Use" 2.4.1 Theory 2.4.1.1 Some commentators (e.g., Stacy Dogan; Mark Lemley; Margreth Barrett) argue that TM liability is only possible when the mark at issue is used to mark goods or services, which are then distributed in commerce 2.4.1.1.1 Liability for TM infringement should arise only where D is 2.4.1.1.1.1 (a) selling goods or services and 2.4.1.1.1.2 (b) using the mark at issue to designate those goods or services 2.4.1.1.1.2.1 i.e., D invites consumers to regard the mark as a designation of D's goods or services, and 2.4.1.1.1.2.2 Consumers are likely to regard the mark as a designation of D's goods and services 2.4.1.1.2 History 2.4.1.1.2.1 These limitations were little noticed in the past, because defendants' behavior routinely qualified 2.4.1.1.2.2 But now novel uses of TMs are bringing them to the surface 2.4.1.1.3 Scholarly Applications 2.4.1.1.3.1 Would exempt search-engine cases – where TM is used as a trigger to show an ad 2.4.1.1.3.2 Would exempt companies selling domain names that include TMs 2.4.1.2 Other commentators (e.g., Graeme Dinwoodie and Mark Janis) argue no such doctrine 2.4.1.2.1 No support in the case law 2.4.1.2.2 Would render Classic Fair Use Doctrine irrelevant 2.4.1.2.3 Analytically unhelpful 2.4.1.2.3.1 Mark McKenna 2.4.2 Judicial Applications 2.4.2.1 Popup Ads 2.4.2.1.1 1-800-Contacts (CA2 2005) adopts TM Use requirement 2.4.2.2 Adwords 2.4.2.2.1 Facts: 2.4.2.2.1.1 Google sells keywords to advertisers 2.4.2.2.1.1.1 auction system 2.4.2.2.1.1.2 advertisers pay on "click-through" basis 2.4.2.2.1.2 when a users employs such a keyword, the advertiser's name, etc., appears as a "sponsored link" 2.4.2.2.2 US Case Law 2.4.2.2.2.1 "Trademark Use"? 2.4.2.2.2.1.1 Longstanding disagreement among District Courts concerning whether "trademark use" doctrine exempts this conduct altogether 2.4.2.2.2.1.2 Rescue.com (CA2 2009): it does not 2.4.2.2.2.1.2.1 D's conduct satisfies "use in commerce" requirement 2.4.2.2.2.1.2.2 "Google's utilization of Rescuecom's mark fit[] literally within the terms specified by [section 45:] Google uses and sells Rescuecom's mark "in the sale ... of [its advertising] services ... rendered in commerce.'" 2.4.2.2.2.1.3 Rosetta Stone (CA4 2012) agrees 2.4.2.2.2.2 Consumer Confusion? 2.4.2.2.2.2.1 Case-by-case determination of whether it gives rise to consumer confusion or dilution 2.4.2.2.2.3 Dilution? 2.4.2.2.2.4 Secondary Liability? 2.4.2.2.2.5 Meanwhile, Google continues to engage in the practice 2.4.2.2.3 EU Case Law 2.4.2.2.3.1 ECJ Decision (March 2010) 2.4.2.2.3.1.1 1. P must show that D used P's TM "in the course of trade" 2.4.2.2.3.1.1.1 a. in the context of direct liability for use of identical signs, this requires only that the use “occurs in the context of commercial activity with a view to economic advantage and not as a private matter.” (¶50). 2.4.2.2.3.1.1.1.1 the advertisers behavior fits this requirement, even if the use of P's mark is "invisible" 2.4.2.2.3.1.1.2 b. But Google's indirect use of the TMs does not satisfy this threshold requirement 2.4.2.2.3.1.2 2. To prevail against the advertisers, P must still show that Ds' use had an adverse effect on a "protected function" of the mark 2.4.2.2.3.1.2.1 a. Indication of origin 2.4.2.2.3.1.2.1.1 left to national courts to decide 2.4.2.2.3.1.2.1.2 but ECJ suggests: 2.4.2.2.3.1.2.1.2.1 such adverse impact will arise where D's ad suggests economic link between D and P -- or where "normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor" 2.4.2.2.3.1.2.2 b. "advertising function" 2.4.2.2.3.1.2.2.1 “using its mark for advertising purposes designed to inform and persuade consumers.” 2.4.2.2.3.1.2.2.2 mere use of the ad will not have an adverse impact 2.4.2.2.3.1.2.2.3 but use of the ad to sell imitations of P's good will likely have an adverse impact 2.4.2.2.3.1.3 3. National courts left to decide whether Google can invoke the safe harbor of Art. 14 of the TM Directive 2.4.2.2.3.2 Interflora (2011) 2.4.2.2.4 Australian Case Law 2.4.2.2.4.1 Google v. ACCC (2013) 2.5 Laches 2.5.1 No Statute of Limitations for Lanham Act violations 2.5.1.1 Some states have SOLs 2.5.1.1.1 But don’t do much good, because continuing tort of use of an infringing mark keeps pushing the cutoff date back 2.5.1.2 Instead, courts use doctrine of laches to penalize delay by Ps in filing suit 2.5.2 Equitable doctrine 2.5.2.1 No right to trial by jury 2.5.2.2 Lots of discretion in DCt 2.5.2.3 Ct App reviews for abuse of discretion 2.5.3 D must show: 2.5.3.1 P had knowledge of D’s use of the mark 2.5.3.2 P delayed inexcusably in taking action 2.5.3.2.1 Legitimate Excuses 2.5.3.2.1.1 Good-faith settlement negotiations 2.5.3.2.1.2 P was litigating against other infringers 2.5.3.2.1.3 OK to delay until moment when D’s activity poses significant threat of confusion/harm – “progressive encroachment” 2.5.3.3 D will be prejudiced by P’s delay 2.5.4 Public Interest: 2.5.4.1 Laches may be trumped by interest of the public in not being confused 2.5.4.2 The greater the likelihood of confusion, the greater the odds that court will refuse to recognize laches 2.5.4.2.1 Where confusion is “inevitable,” court will often ignore even clear, long delay 2.5.4.3 some courts are less likely to recognize laches as a defenses when P seeks injunctive relief 2.5.4.3.1 tacitly attempt simultaneously to reconcile penalty on P (forfeiture of damages) with protection of public (elimination of a confusing mark) 2.5.5 Laches in Cancellation Proceedings 2.5.5.1 "flipped" use of the doctrine 2.5.5.1.1 i.e., employed by ™ owner to repel attacks on the mark 2.5.5.2 Harjo (DCCir 2009) 2.5.5.2.1 Laches applies only to parties who have unjustifiably delayed 2.5.5.2.1.1 i.e., look at issue from individual standpoint 2.5.5.2.1.2 check age and actions of youngest challenger 2.5.5.2.2 Requires proof of: 2.5.5.2.2.1 (1) Lack of diligence 2.5.5.2.2.2 (2) Prejudice 2.5.5.2.2.2.1 (a) trial prejudice 2.5.5.2.2.2.1.1 i.e., adversely impact ™ owner's ability to mount effective defense 2.5.5.2.2.2.2 (b) economic prejudice 2.5.5.2.2.2.2.1 i.e., ™ owner relied to his detriment on P’s delay 2.5.5.2.2.2.2.2 continued investment in the mark in question is enough 2.5.5.2.2.3 the more of one; the less you need of the other ------------------------------------------------------------- 3 VI. Advertising ------------------------------------------------------------- 3.1 Trademark Regime 3.1.1 Lanham Act 43(a)(1)(B) 3.1.1.1 (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 3.1.2 Coverage 3.1.2.1 only commercial speech 3.1.2.1.1 n.a. to Consumer Reports 3.1.2.1.1.1 cf. Bose 3.1.2.1.2 n.a. to dissemination of misleading ads by the media 3.1.2.1.3 Test (Bolger) 3.1.2.1.3.1 “Strong support” for finding that a particular statement is commercial if all three of the following are true: 3.1.2.1.3.1.1 (1) it’s an ad; 3.1.2.1.3.1.2 (2) refers to a specific product or service 3.1.2.1.3.1.3 (3) speaker has commercial motive 3.1.2.2 only statements of fact 3.1.2.3 applies to both: 3.1.2.3.1 statements about D's product 3.1.2.3.1.1 e.g., Mutation Mink Breeders (SDNY 1959): Δ used “mink” to describe its own imitation fur 3.1.2.3.1.2 e.g., Consumers Union (D Conn. 1970): Δ misrepresented the rating it received from Consumers Reports 3.1.2.3.2 statements about P's products 3.1.2.3.2.1 Originally covered by vague CL tort of disparagement 3.1.2.3.2.2 Until 1988, not covered by §43(a) 3.1.2.3.2.2.1 although some courts squirmed around this limitation 3.1.2.3.2.3 1988 amendments have made it actionable -- in commercial advertising or promotion 3.1.2.3.2.3.1 not consumer reporting or politics 3.1.2.4 standing 3.1.2.4.1 will be clarified by Lexmark v. Static Controls (2014) 3.1.2.4.2 consumers lack standing 3.1.2.4.3 direct competitors have standing 3.1.2.4.4 circuit split concerning how far beyond direct competitors the circle of standing extends 3.1.2.4.4.1 "Categorical approach" (CA7, CA9, CA10) 3.1.2.4.4.1.1 only direct competitors 3.1.2.4.4.2 AGC test (CA3, CA8, CA11) 3.1.2.4.4.2.1 modeled on AGC v. Carpenters (SCt 1983), governing standing in antitrust private actions 3.1.2.4.4.2.2 Consider 5 factors: 3.1.2.4.4.2.2.1 (1) nature of P's injury (Is it the sort Congress in Lanham Act sought to address 3.1.2.4.4.2.2.2 (2) directness of asserted injury 3.1.2.4.4.2.2.3 (3) P's proximity to alleged wrongful behavior 3.1.2.4.4.2.2.4 (4) speculativeness of damages 3.1.2.4.4.2.2.5 (5) risk of duplicative damages or complexity in apportioning damages 3.1.2.4.4.3 "Reasonable interest" approach (CA 2, CA6) 3.1.2.4.4.3.1 P must show only: 3.1.2.4.4.3.1.1 (1) P has a reasonable interest in being protected against the alleged false advertising; and 3.1.2.4.4.3.1.2 (2) P has a reasonable basis of believing that that interest is likely to be damaged by the alleged false advertising 3.1.3 Rules 3.1.3.1 False Advertising 3.1.3.1.1 P must prove: 3.1.3.1.1.1 (1) the defendant made a false or misleading description of fact or representation of fact in a commercial advertisement about his own or another's product; 3.1.3.1.1.1.1 Clorox (CA8 1998), p. 3 3.1.3.1.1.1.2 Cashmere (CA1 2002), p. 3 3.1.3.1.1.2 (3) the misrepresentation actually deceives or has the tendency to deceive a substantial segment of its audience; 3.1.3.1.1.2.1 (a) Literally False Statements 3.1.3.1.1.2.1.1 Identify claims 3.1.3.1.1.2.1.1.1 Both explicit 3.1.3.1.1.2.1.1.2 And necessary implications 3.1.3.1.1.2.1.1.2.1 Not “puffery” if makes a specific and measurable claim about a product's characteristics or superiority 3.1.3.1.1.2.1.1.2.2 e.g., claim that a garment is made of "cashmere" contains an implicit representation that it's not recycled 3.1.3.1.1.2.1.1.2.2.1 Cashmere, pp. 8-9 3.1.3.1.1.2.1.1.2.2.2 P's position boosted by the Wool Products Licensing Act 3.1.3.1.1.2.1.2 Ascertain whether those claims are false 3.1.3.1.1.2.1.2.1 if it might be true, P cannot prevail on this variant of the theory 3.1.3.1.1.2.1.2.2 If there are two or more meanings of a term (e.g. “concentrate”), and one is not false, then no falsity 3.1.3.1.1.2.1.3 If false, deception is presumed 3.1.3.1.1.2.1.3.1 no longer limited to suits for injunctive relief 3.1.3.1.1.2.1.3.1.1 Cashmere, p. 6 3.1.3.1.1.2.1.3.2 some courts suggest that it's possible for D to overcome this presumption through proof at trial, but rarely feasible 3.1.3.1.1.2.2 (b) Misleading Statements 3.1.3.1.1.2.2.1 coverage: 3.1.3.1.1.2.2.1.1 "advertisement, though explicitly true, nonetheless conveys a misleading message to the viewing public" 3.1.3.1.1.2.2.1.1.1 Clorox (CA1) 3.1.3.1.1.2.2.2 To win, P must show either: 3.1.3.1.1.2.2.2.1 (i) “substantial portion of the audience for that statement was misled” 3.1.3.1.1.2.2.2.1.1 Usually done by survey 3.1.3.1.1.2.2.2.1.2 Questions can’t be “leading” 3.1.3.1.1.2.2.2.2 (ii) D intentionally set out to mislead consumers 3.1.3.1.1.2.2.2.2.1 D "acted willfully with intent to deceive or bad faith" 3.1.3.1.1.2.3 (c) Puffery 3.1.3.1.1.2.3.1 "exaggerated advertising, blustering, and boasting upon which no reasonable buyer would rely" 3.1.3.1.1.2.3.1.1 Southland (CA9 1997) 3.1.3.1.1.3 (2) the misrepresentation is material, in that it is likely to influence the purchasing decision; 3.1.3.1.1.3.1 e.g., the statement pertains to "an inherent quality or characteristic" of the product 3.1.3.1.1.3.1.1 NBA (CA2 1997) 3.1.3.1.1.3.1.2 Cashmere, pp. 4-5: 3.1.3.1.1.3.1.2.1 cashmere is an inherent component of a cashmere-blend garment 3.1.3.1.1.3.1.2.2 amplified by D's advertising 3.1.3.1.1.3.1.2.3 same for non-recycled cashmere 3.1.3.1.1.3.2 the group whose purchasing decisions are relevant = the group at whom the ad is directed 3.1.3.1.1.4 (4) the defendant placed the false or misleading statement in interstate commerce; and 3.1.3.1.1.5 (5) Causation -- i.e., the plaintiff has been or is likely to be injured as a result of the misrepresentation, either by direct diversion of sales or by a lessening of goodwill associated with its products. 3.1.3.1.1.5.1 only necessary to recover damages; 3.1.3.1.1.5.1.1 for injunctive relief, deception of the public is sufficient 3.1.3.1.1.5.2 diversion of sales is typical basis of this showing 3.1.3.2 Comparative Advertising 3.1.3.2.1 US 3.1.3.2.1.1 Comparative Ads are OK if truthful 3.1.3.2.1.1.1 OK to refer to someone’s TM in an ad, indicating that your product is as good or better, so long as: 3.1.3.2.1.1.1.1 No misrepresentations 3.1.3.2.1.1.1.2 No R likelihood of consumer confusion 3.1.3.2.1.1.2 Refinements 3.1.3.2.1.1.2.1 the fact that “ignorant or inattentive” consumers misunderstand is not fatal 3.1.3.2.1.1.2.1.1 August Stork v. Nabisco (CA7 1995), Easterbrook 3.1.3.2.1.1.2.2 "Tests prove" claims are subject to greater scrutiny 3.1.3.2.1.1.2.2.1 If D merely assert's that D's product is better than P's, to prevail P must prove that the claim is "actually false," not merely unproven 3.1.3.2.1.1.2.2.2 If D asserts that "tests prove" D's product is better, to prevail P need only prove that the tests at issue were inadequate to support the claim 3.1.3.2.1.1.2.2.2.1 Rhone-Poulenc (CA8 1996) 3.1.3.2.2 EU 3.1.3.2.2.1 Comparative Advertising Directive (97/55/EC), Art. 3a(1) 3.1.3.2.2.1.1 Comparative advertising is permitted if the following conditions are met: (a) it is not misleading; (b) it compares goods or services meeting the same needs or intended for the same purpose; (c) it objectively compares one or more material, relevant, verifiable and representative features of those goods or services, which may include price; (d) it does not create confusion in the market place between the advertiser and a competitor; (e) it does not discredit or denigrate the trade marks, trade names or other distinguishing signs of a competitor; (f) for products with designation of origin, it relates to products with the same designation; (g) it does not take unfair advantage of the trade mark or other distinguishing sign of a competitor; (h) it does not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name. 3.1.3.2.2.2 Trade Mark Directive, Art. 5 3.1.3.2.2.2.1 (1) ... The proprietor [of a registered trade mark] shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered ... 3.1.3.2.2.2.2 (2) Any member state may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark ... where the latter has a reputation in the member state and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark ...” 3.1.3.2.2.3 L'Oreal v. Bellure (ECJ 2009) (Case C-487/07) 3.1.3.2.2.3.1 Facts 3.1.3.2.2.3.1.1 D manufactured "smell-alike" perfumes 3.1.3.2.2.3.1.2 D chose names and packaging that conveyed resemblance to famous perfumes 3.1.3.2.2.3.1.3 D distributed to dealers a chart that showed exactly which famous perfumes D's perfumes imitated 3.1.3.2.2.3.2 The typical kinds of TM injury were not present 3.1.3.2.2.3.2.1 consumers were not confused as to source 3.1.3.2.2.3.2.2 Plaintiffs' marks were not diluted 3.1.3.2.2.3.2.2.1 i.e., no injury to distinctiveness or repute 3.1.3.2.2.3.3 Nevertheless, comparative advertising of this sort was held unlawful 3.1.3.2.2.3.3.1 violates TMD Art. 5(2) 3.1.3.2.2.3.3.1.1 Free-riding is sufficient 3.1.3.2.2.3.3.1.2 "The advantage arising from the use by a third party of a sign similar to a mark with a reputation was an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party sought by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image." 3.1.3.2.2.3.3.2 violates TMD Art. 5(1) 3.1.3.2.2.3.3.2.1 the "functions" of the mark protected by 5(1) go beyond source identification 3.1.3.2.2.3.3.2.2 include "other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising" 3.1.3.2.2.3.3.3 violates CAD Art. 3a(1) 3.1.3.2.2.3.3.3.1 presenting oneself as an imitation or replica 3.1.3.2.2.3.3.3.2 taking unfair advantage 3.1.3.2.2.3.4 2010: UK Court of Appeal reluctantly follows 3.2 Nontrademark Regimes 3.2.1 Federal Trade Commission 3.2.1.1 FTC interprets and enforces Section 5 of FTA Act, which prohibits "false and deceptive" ads 3.2.1.2 New Rules Concerning Endorsements and Testimonials 3.2.1.2.1 (a) representative results 3.2.1.2.1.1 under old rules, advertisers could report atypical consumer experiences, provided they were accompanied by a disclaimer 3.2.1.2.1.1.1 e.g., "results not typical" 3.2.1.2.1.2 new rules: advertisers must disclose the experience that consumers generally can expect 3.2.1.2.2 (b) affiliations 3.2.1.2.2.1 Context 3.2.1.2.2.1.1 recent research indicates that consumers are relying less and less on traditional advertisements, and more on recommendations and endorsements 3.2.1.2.2.1.1.1 friends and family 3.2.1.2.2.1.1.2 strangers, through online evaluation engines 3.2.1.2.2.1.2 in response, marketers are devoting ever greater attention to social-media based marketing campaigns 3.2.1.2.2.1.2.1 "stealth marketing" 3.2.1.2.2.1.2.2 "astroturfing" 3.2.1.2.2.2 nonobvious affiliations between advertisers and endorsers or testing agencies must be disclosed 3.2.1.2.2.2.1 applies to celebrities, bloggers, social media, etc. 3.2.1.2.2.2.2 FTC's explanation (text) 3.2.1.2.2.2.3 FTC's explanation (video) 3.2.1.2.3 penalties 3.2.1.2.3.1 The guides are not regulations, and thus violations of them do not automatically give rise to civil or criminal penalties 3.2.1.2.3.2 However, if advertisers violate them, FTC may investigate to determine if the practice is unfair or deceptive 3.2.1.2.3.2.1 early investigation of Ann Taylor (2010) resulted in no sanction 3.2.1.2.3.2.2 but subsequent investigation of In re Legacy Learning Systems (2011) resulted in settlement of $250K 3.2.1.2.3.3 FTC appears not to be pursuing individual bloggers 3.2.1.2.3.3.1 Richard Cleland, Asst. Director of FTC Advertising Division: 3.2.1.2.3.3.1.1 "That $11,000 fine is not true. Worst-case scenario, someone receives a warning, refuses to comply, followed by a serious product defect; we would institute a proceeding with a cease-and-desist order and mandate compliance with the law. To the extent that I have seen and heard, people are not objecting to the disclosure requirements but to the fear of penalty if they inadvertently make a mistake. That's the thing I don't think people need to be concerned about. There's no monetary penalty, in terms of the first violation, even in the worst case. Our approach is going to be educational, particularly with bloggers. We're focusing on the advertisers: What kind of education are you providing them, are you monitoring the bloggers and whether what they're saying is true?" 3.2.1.2.4 gaps 3.2.1.2.4.1 automated "likes" and "don't likes" 3.2.1.2.4.1.1 "very helpful" and "not helpful" 3.2.1.2.4.2 zombie "followers" on Facebook and Twitter 3.2.1.2.4.3 faux viral recommendations of YouTube-based ads 3.2.1.2.4.3.1 Hyundai Superbowl ad 3.2.1.2.4.4 paid negative reviews of competitors 3.2.1.2.4.5 "gag" consumer contracts 3.2.1.2.4.6 celebrity endorsements 3.2.1.2.4.6.1 e.g., Gwyneth Paltrow 3.2.1.2.4.7 traditional media 3.2.1.2.4.7.1 e.g., restaurant reviews 3.2.2 State Statutes 3.2.2.1 e.g., Massachusetts, 93A 3.2.2.1.1 prohibits unfair and deceptive trade practices 3.2.2.1.1.1 construed to cover any material statement that has the capacity or tendency to deceive 3.2.2.1.1.2 also covers nondisclosure of material information 3.2.2.1.2 remedies 3.2.2.1.2.1 consumers can recover actual damages or $25 3.2.2.1.2.2 if the offense was willful, consumer can recover enhanced damages, costs, and atty fees 3.2.2.2 e.g., Florida Unfair and Deceptive Trade Practices Act 3.2.2.2.1 Used by Fla. Atty Gen to pursue Merck for false advertising of Vioxx 3.2.2.3 e.g., California 3.2.2.3.1 Unfair Competition Law 3.2.2.3.1.1 provides private cause of action for any "unlawful, unfair or fraudulent business act or practice" Cal. Bus. & Prof. Code 17200 3.2.2.3.2 Consumer Legal Remedies Act 3.2.2.3.2.1 forbids "unfair methods of competition and unfair or deceptive acts or practices" Cal Civil Code 1770 3.2.2.3.3 applied: Pelayo (2013) 3.2.3 Council of Better Business Bureaus 3.2.3.1 Advertising Self-Regulatory Council 3.2.3.2 Children's Advertising Review Unit 3.2.3.3 Appeals to National Advertising Review Board 3.2.3.4 Interlock with FTC Enforcement ------------------------------------------------------------- 4 VII. Remedies ------------------------------------------------------------- 4.1 LA 35(a) 4.1.1 When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a) or (d), or a willful violation under section 43(c), shall have been established in any civil action arising under this Act, the plaintiff shall be entitled, subject to the provisions of sections 29 and 32, and subject to the principles of equity, to recover: 4.1.1.1 (1) defendant's profits, 4.1.1.2 (2) any damages sustained by the plaintiff, and 4.1.1.3 (3) the costs of the action. 4.1.2 The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed. 4.1.2.1 If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. 4.1.2.2 Such sum in either of the above circumstances shall constitute compensation and not a penalty. 4.1.3 In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. 4.1.4 The court in exceptional cases may award reasonable attorney fees to the prevailing party. 4.2 Injunctions 4.2.1 Forms 4.2.1.1 Simple Cease & Desist 4.2.1.2 Tailored Injunctions 4.2.1.2.1 If both parties have plausible equitable claims, courts will try for compromise 4.2.1.2.2 e.g., Thermos case: can use term “thermos,” because now generic, but can’t capitalize T, or indicate “original” thermos 4.2.1.3 Disclaimers 4.2.1.3.1 Courts sometimes rule that disclaimers are necessary and sufficient to prevent confusion 4.2.1.3.2 Wide range of views 4.2.1.3.2.1 Growing academic literature casting doubt on effectiveness of disclaimers 4.2.1.3.2.1.1 Jacoby & Raskopf (1986); 4.2.1.3.2.1.2 Radin (1986) 4.2.1.3.2.2 HBO v. Showtime (CA2 1987), crediting this literature, finds insufficient proof by Showtime that disclaimer would avoid misimpression of association with HBO 4.2.1.3.2.3 But Soltex (CA2 1987) finds disclaimer adequate in light of general good faith by D and fact that Polaroid factors tilt only “minimally or moderately” toward P 4.2.1.4 Destruction 4.2.1.4.1 For violation of 32 or 43(a) or willful violation of 43(c), court may order seizure and destruction of all offending materials in Ds possession 4.2.1.5 Confiscation 4.2.1.5.1 34(d) authorizes ex parte seizure of all goods bearing counterfeit marks 4.2.2 Standard for Issuance 4.2.2.1 Traditional Approach 4.2.2.1.1 To obtain a preliminary injunction, P must prove either: 4.2.2.1.1.1 (a) likelihood of success on merits + possibility of irreparable injury 4.2.2.1.1.1.1 Once likelihood of confusion in proven, ordinarily presumed that P will suffer irreparable harm 4.2.2.1.1.2 (b) serious questions concerning the merits have been raised + balance of hardships and public interest favor P 4.2.2.1.2 In both cases, sliding scale (more of one, less you need of the other) 4.2.2.2 Impact of eBay decision (in context of patent law) 4.2.2.2.1 Ebay (2006) 4.2.2.2.1.1 facts 4.2.2.2.1.1.1 patent 5,845,265 4.2.2.2.1.1.1.1 Abstract: A method and apparatus for creating a computerized market for used and collectible goods by use of a plurality of low cost posting terminals and a market maker computer in a legal framework that establishes a bailee relationship and consignment contract with a purchaser of a good at the market maker computer that allows the purchaser to change the price of the good once the purchaser has purchased the good thereby to allow the purchaser to speculate on the price of collectibles in an electronic market for used goods while assuring the safe and trusted physical possession of a good with a vetted bailee. 4.2.2.2.1.1.1.2 full patent 4.2.2.2.1.2 holding 4.2.2.2.1.2.1 apply standard rules of equity in determining whether to grant injunctions in patent cases 4.2.2.2.1.2.1.1 (a) the plaintiff has suffered an irreparable injury; 4.2.2.2.1.2.1.2 (b) monetary damages are inadequate to compensate for that injury; 4.2.2.2.1.2.1.3 (c) the balance of hardships favors the plaintiff; and 4.2.2.2.1.2.1.4 (d) the public interest would not be disserved by a permanent injunction 4.2.2.2.1.3 concurrences 4.2.2.2.1.3.1 Roberts, Scalia, Ginsburg 4.2.2.2.1.3.1.1 exercise of discretion should take into account that injunctions traditionally had issued in vast majority of successful patent suits 4.2.2.2.1.3.2 Kennedy, Stevens, Souter, Breyer 4.2.2.2.1.3.2.1 denying injunctions may be appropriate when: 4.2.2.2.1.3.2.1.1 plaintiff is a patent troll 4.2.2.2.1.3.2.1.2 patent covers one component of complex product 4.2.2.2.1.3.2.1.3 patent in question is a business method patent, often of suspect validity 4.2.2.2.1.3.2.1.3.1 "In addition injunctive relief may have different consequences for the burgeoning number of patents over business methods, which were not of much economic and legal significance in earlier times. The potential vagueness and suspect validity of some of these patents may affect the calculus under the four-factor test." 4.2.2.2.2 Most, though not all, courts have concluded that: 4.2.2.2.2.1 Ebay decision applies to TM law 4.2.2.2.2.2 applies to Preliminary Injunctions as well as Permanent 4.2.2.2.2.3 eliminated presumption of irreparable harm whenever P established likelihood of consumer confusion 4.2.2.2.3 Applied 4.2.2.2.3.1 Most courts remain willing either to presume or to find irreparable harm 4.2.2.2.3.2 But a few deny preliminary or permanent injunctions 4.2.2.2.3.2.1 e.g., Maxim (2013) 4.2.2.2.4 Objections: 4.2.2.2.4.1 Denial of injunctive relief injures public: continued confusion 4.2.2.2.4.2 Judicial compulsory license seem to raise a problem for P of “naked licensing” – because no quality controls 4.3 Damages 4.3.1 Available for: 4.3.1.1 32(1)(a) – registered marks 4.3.1.2 43(a) – unregistered marks and false advertising 4.3.1.3 43(d) – ACPA 4.3.1.4 willful violations of 43(c) -- dilution 4.3.1.4.1 LA 43(c)(5)(B) in a claim arising under this subsection—(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or (ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark. 4.3.2 Forms 4.3.2.1 Plaintiff's Damages 4.3.2.1.1 Lost profits 4.3.2.1.1.1 e.g., Murphy Bed 4.3.2.1.2 Damage to good will 4.3.2.1.3 “Head start” theory of Taco Cabana: 4.3.2.1.3.1 D’s misconduct delayed P’s entry into Houston market 4.3.2.1.4 Cost of corrective advertising 4.3.2.1.4.1 Some courts dispense of requirement to show actual confusion by consumers 4.3.2.1.4.2 In calculating the amount, Big O Tire (CA10 1977) relies on FTC rule that companies who engage in misleading advertising have to spend 25% of the amount they spent on the misleading ads on corrective ads 4.3.2.2 Defendant's Profits 4.3.2.2.1 willfulness unnecessary except for dilution 4.3.2.2.1.1 Until 1999, courts construed to require showing of willfulness or bad faith 4.3.2.2.1.2 Amendment of 35(a) in 1999 to add “willful" violation of 35(c) has prompted most (not all) courts to conclude that willfulness is no longer necessary for other provisions 4.3.2.2.2 Procedure: 4.3.2.2.2.1 P need only prove D’s profits during the period 4.3.2.2.2.2 D then has burden of showing which were not attributable to D’s infringing conduct 4.3.2.2.2.3 But sometimes courts in false advertising case will require P to prove that D’s profits resulted from false statements 4.3.2.3 Damage Awards are “subject to principles of equity” – 35(a). Relevant factors: 4.3.2.3.1 (1) intent to confuse or deceive 4.3.2.3.1.1 (willfulness as a "factor") 4.3.2.3.2 (2) whether sales were diverted 4.3.2.3.3 (3) adequacy of other remedies 4.3.2.3.4 (4) unR delay by P 4.3.2.3.4.1 (laches as a "factor") 4.3.2.3.5 (5) public interest in making conduct unprofitable 4.3.2.3.6 (6) whether there was “palming off" 4.3.2.4 Enhanced Damages 4.3.2.4.1 35(a) gives court discretion to increase, up to treble 4.3.2.4.1.1 usually limited to willfulness 4.3.2.4.1.2 lots of discretion, but overall goal must be compensatory, not punitive 4.3.2.4.1.2.1 hard to tell what that means – Taco Cabana 4.3.2.4.1.2.1.1 use to provide proper redress to otherwise undercompensated P, particularly where imprecision in actual damages is D’s fault 4.3.2.4.2 35(b), governing intentional use of a mark, knowing it to be counterfeit, requires imposition of treble damages or profits + atty fees 4.3.2.4.3 no punitive damages under LA, but there are some in some states 4.3.2.5 Attorney Fees 4.3.2.5.1 Available in “exceptional cases”: 4.3.2.5.1.1 Wide range of variables considered by courts 4.3.2.5.1.1.1 malicious, 4.3.2.5.1.1.2 fraudulent, 4.3.2.5.1.1.3 deliberate, 4.3.2.5.1.1.4 willful 4.3.2.5.1.1.5 bad faith, 4.3.2.5.1.1.6 vexatious litigation 4.3.2.5.1.1.7 litigation misconduct 4.3.2.5.1.2 Many courts apply lower standard to defendants than to plaintiffs 4.3.2.5.1.3 Judge Posner recently tried to clarify the doctrine in Nightingale (2010) 4.3.2.5.1.3.1 We conclude that a case under the Lanham Act is "exceptional," in the sense of warranting an award of reasonable attorneys' fees to the winning party, if the losing party was the plaintiff and was guilty of abuse of process in suing, or if the losing party was the defendant and had no defense yet persisted in the trademark infringement or false advertising for which he was being sued, in order to impose costs on his opponent. 4.3.2.6 Statutory Damages 4.3.2.6.1 For counterfeit marks, P can elect 4.3.2.6.1.1 $1000-$200K per mark per type of good 4.3.2.6.1.2 up to $2M if willful 4.3.2.6.2 For cybersquatting, $1000-$100K per domain name 4.4 Criminal Penalties 4.4.1 18 USC 2320 4.4.1.1 available only for intentional trafficking in goods or services using counterfeit mark 4.4.1.2 Penalties: 4.4.1.2.1 Fine up to $2M 4.4.1.2.2 Up to 10 years in prison 4.4.2 18 USC 2318 4.4.2.1 criminal penalties for trafficking in counterfeit labels, packaging 4.4.2.2 (added 2004) ------------------------------------------------------------- 5 III. Losing Protection ------------------------------------------------------------- 5.1 Abandonment 5.1.1 Nonuse 5.1.1.1 Traditional Rule: 5.1.1.1.1 Abandonment requires both nonuse and intent to abandon 5.1.1.1.1.1 See Gold Seal Associates (SDNY 1932) 5.1.1.1.1.2 Parallels CL doctrine of abandonment for personal property 5.1.1.1.1.2.1 need both deliberately leaving the object behind and intent to abandon 5.1.1.1.1.3 lapse of time without use may be evidence from which intent to abandon may be inferred, the strength of the inference being dependent upon the period of discontinuance, the cause of it, and other factors 5.1.1.1.1.4 But intent to relinquish must be shown 5.1.1.1.2 Applied: As long as P is making efforts to keep the business going, no intent to abandon 5.1.1.2 Current Rule: 5.1.1.2.1 Abandonment requires two things: 5.1.1.2.1.1 Nonuse 5.1.1.2.1.2 Absence of intention to continue or resume use 5.1.1.2.2 3 years of nonuse (increased from 2 years per TRIPS) of federally registered mark constitutes prima facie abandonment 5.1.1.2.2.1 but it can be rebutted by proof of intent to resume use -- §1127 5.1.1.2.3 Cases 5.1.1.2.3.1 Silverman (CA2 1989) 5.1.1.2.3.2 Exxon (CA5 1983) 5.1.1.2.3.3 California Cedar (CA2 1984) 5.1.2 Changes in Product or Service 5.1.2.1 transferring ™ to different product or service is permissible if the old and new versions are "closely related" 5.1.2.1.1 test: would consumers think that the new product is coming from the same source 5.1.2.2 sudden and substantial change in quality or composition may result in abandonment 5.1.2.3 but gradual and incremental changes in quality or composition are acceptable 5.1.2.3.1 rationale: consumers expect them 5.1.2.3.2 e.g., Marilyn Neutraceuticals (CA9 2009) 5.2 Genericide 5.2.1 Test: If the principal significance of a mark to the public is to indicate the nature or class of an article, rather than its source (i.e., the person or organization that produces it), then it’s generic 5.2.1.1 it had lost its distinctiveness 5.2.1.2 other producers must be allowed to use it 5.2.1.3 test refined by §1064(c), reversing the AntiMonopoly decision (CA9 1982) 5.2.1.3.1 obscure language, but the gist is that, to be distinctive, a mark need not be attractive to consumers because they know and trust the manufacturer 5.2.2 Circumstances that affect likelihood of genericide 5.2.2.1 Things to avoid: 5.2.2.1.1 TM owner uses the mark in denominative sense 5.2.2.1.2 TM owner uses the mark as noun or verb, rather than as an adjective, attached to some generic term 5.2.2.2 Names of patented goods, when the patent expires 5.2.2.2.1 Kellogg (US 1938) (Shredded Wheat) seems to stand for the general proposition that they become generic automatically 5.2.2.2.2 But courts do not generally so hold 5.2.2.2.2.1 e.g., Bayer: it’s a factor, but not decisive 5.2.2.3 Efforts of the TM owner 5.2.2.3.1 trial court in the Thermos case chastises King-Seeley for not exercising “due diligence” in the period between 1923 and early 1950s to prevent generic use of Thermos in the nontrade publications 5.2.2.3.2 Moore, however, suggests that it’s irrelevant 5.2.3 Options for a ™ holder whose mark have become generic 5.2.3.1 no protection under §32 or §43(a) 5.2.3.2 courts retain and frequently exercise power to craft tailored remedies 5.2.3.2.1 e.g., to require Aladdin (for a while) to insert various disclaimers, to only use thermos in lower case, etc. 5.2.3.2.2 see also Learned Hand’s detailed injunction in the aspirin case 5.2.3.3 Some courts permit the TM holder to rely on unfair competition 5.2.3.3.1 Intentional passing off 5.3 Assignments 5.3.1 TMs may be assigned 5.3.1.1 cf. prior appropriation in water law 5.3.1.2 to be assignable, they must be associated with an ongoing business 5.3.1.2.1 abandoned marks may not be assigned 5.3.1.2.2 ITU applications may not be assigned 5.3.1.2.2.1 attempt to do so voids the application 5.3.2 In USA, TMs may not be assigned in gross 5.3.2.1 in most countries, they can be 5.3.2.2 in USA, transfers in gross are commonly held to constitute abandonment 5.3.3 but TMs may be assigned along with other assets 5.3.3.1 Some courts stick to older US rule: must be accompanied by transfer of physical assets -- like machines, customer lists, etc. 5.3.3.2 Others permit assignment of the mark if accompanies transfer of "goodwill" 5.3.3.2.1 goodwill = "favorable consideration shown by purchasing public to goods known to emanate from a particular source" (Rogers 1914) 5.3.3.2.1.1 reasonable expectation of future patronage 5.3.3.2.2 A few courts are satisfied by mere recitation of transfer of good will 5.3.3.2.3 others construe to require maintenance of quality controls during transfer -- and reasonable time thereafter 5.3.3.2.3.1 Platt, "Good Will Enduring" (2009) 5.3.3.2.4 Some say that no “goodwill” is transferred if the assignee plans to use the mark on a new and different product 5.3.3.2.4.1 goodwill consists of the public’s faith that the product will remain good; n.a., where the product is changed 5.4 Licenses 5.4.1 Licensing of the mark to others without controlling the quality of their products results in abandonment 5.4.1.1 rationale: otherwise the licensees will be able to reduce the quality, and the public will be deceived 5.4.2 But licensing accompanied by effective controls over quality does not result in abandonment 5.4.2.1 Range of views concerning the necessary quality controls 5.4.2.1.1 Sufficient if there’s evidence that licensor was familiar with and relied upon licensee’s quality controls 5.4.2.1.2 Close working relationship is also sufficient 5.4.2.1.3 Judge Hand would impose more stringent requirements re effective policing than the rest of the CA2 ------------------------------------------------------------- 6 II. Acquiring Protection ------------------------------------------------------------- 6.1 Registration 6.1.1 Not essential for TM protection 6.1.1.1 unregistered marks get common-law protection 6.1.1.2 unregistered marks are protected by LA 43(a) 6.1.2 Benefits of Registration 6.1.2.1 (a) provides others constructive notice of registrant’s claim 6.1.2.2 (b) nationwide constructive use as of date of application 6.1.2.3 (c) prima facie evidence of exclusive right to use the mark in connection with the goods or services named in the application 6.1.2.3.1 some courts hold that this merely shifts burden to D to challenge validity 6.1.2.3.2 CA2, CA4, and CA9 hold that registration creates "strong presumption of validity" 6.1.2.4 (d) right to bring suit in federal court without regard to diversity of citizenship 6.1.2.5 (e) right to invoke aid of Customs Service -- e.g., grey market goods 6.1.2.6 (f) more generous remedies -- e.g., treble damages and attorneys fees 6.1.2.6.1 until 1988, only registered marks received enhanced damages 6.1.2.6.2 after 1988, unregistered marks become eligible for enhanced damages, but amounts tend to be lower 6.1.2.7 (g) access to incontestability doctrine after 5 years 6.1.2.7.1 incontestability is "conclusive evidence" (subject to the exceptions listed below) of: 6.1.2.7.1.1 1. validity of the registered mark 6.1.2.7.1.2 2. registrant's ownership of the mark 6.1.2.7.1.3 3. registrant's exclusive right to use the mark in commerce 6.1.2.7.2 The grounds on which incontestable marks may be cancelled are limited (LA 14) 6.1.2.7.2.1 available grounds 6.1.2.7.2.1.1 genericity 6.1.2.7.2.1.2 abandonment 6.1.2.7.2.1.3 fraud 6.1.2.7.2.1.4 functionality 6.1.2.7.2.1.5 immoral, scandalous, disparaging 6.1.2.7.2.1.6 flag 6.1.2.7.2.1.7 name of living person 6.1.2.7.2.1.8 misrepresentation of goods or services 6.1.2.7.2.1.9 misuse of a certification mark 6.1.2.7.2.2 unavailable grounds 6.1.2.7.2.2.1 "merely descriptive" & lacks secondary meaning 6.1.2.7.2.2.1.1 Park 'n Fly (SCt 1985) 6.1.2.7.2.2.2 deceptive 6.1.2.7.2.2.3 deceptively misdescriptive 6.1.2.7.2.2.4 geographically descriptive 6.1.2.7.2.2.5 merely a surname 6.1.2.7.2.2.6 prior to registration, petitioner used the mark 6.1.2.7.2.2.7 prior to registration, petitioner registered the mark 6.1.2.7.3 Even after a mark has become incontestable, defendant in an infringement action may still assert (under LA 33(b)) the following defenses: 6.1.2.7.3.1 1. Fraud 6.1.2.7.3.2 2. Abandonment 6.1.2.7.3.3 3. Misrepresentation of source of goods or services 6.1.2.7.3.4 4. Classic Fair Use 6.1.2.7.3.5 5. Permanent limited-area defense for innocent pre-registration user 6.1.2.7.3.6 6. Permanent limited-area defense for innocent pre-registration (state) registrant 6.1.2.7.3.7 7. Antitrust violation 6.1.2.7.3.8 8. Functionality 6.1.2.7.3.9 9. Laches, Estoppel, Acquiescence 6.1.3 Paths to Registration 6.1.3.1 1. Current Use in Commerce (LA 1(a)) 6.1.3.1.1 Registration Procedures 6.1.3.2 2. Intent-to-Use (ITU) Applications (LA 1(b)) 6.1.3.2.1 applicant may secure priority date by filing ITU application, then engaging in use in commerce within 6 months, then filing certificate 6.1.3.2.1.1 can get extensions for up to 3 years for good cause 6.1.3.2.2 option available since 11/16/1989 6.1.3.2.3 has led to many speculative filings 6.1.3.2.3.1 e.g., "Seal Team 6" 6.1.3.3 3. Foreign Applications (LA 44(d)) 6.1.3.3.1 nationals of treaty partners or countries providing reciprocity may file US TM application within 6 months of foreign application + intent-to-use statement 6.1.3.3.2 US registration granted upon either: 6.1.3.3.2.1 use in commerce in US, or 6.1.3.3.2.2 foreign registration granted 6.1.3.3.2.2.1 may maintain US registration for up to 6 years, even without any use in the US or elsewhere 6.1.3.3.3 priority date = date of foreign application 6.1.3.4 4. Foreign Registrations (LA 44(e)) 6.1.3.4.1 nationals of treaty partners or countries providing reciprocity may file US TM application based upon registration of the mark in applicant's country of origin 6.1.3.5 5. Madrid Protocol (LA 66(a)) 6.1.3.5.1 see International Framework (above) 6.1.3.5.2 available since Nov. 2, 2003 6.1.3.6 see Beebe 2012 for data 6.2 Use 6.2.1 General principle of US TM law: one must use a mark in the US to acquire rights to it 6.2.1.1 Common Law 6.2.1.1.1 "Use in Trade" 6.2.1.1.1.1 Blue Bell (CA5 1975) 6.2.1.1.2 bona fide use of the mark in connection with offering goods or services to the public 6.2.1.1.3 publicity or solicitation may be sufficient if combined with intent to use 6.2.1.2 Lanham Act 6.2.1.2.1 "Use in Commerce" 6.2.1.2.1.1 interstate commerce 6.2.1.2.1.2 intrastate commerce that affects interstate commerce 6.2.1.2.1.2.1 e.g., restaurants with interstate clientele 6.2.1.2.1.3 commerce with other countries 6.2.1.2.1.4 commerce with "Indian Tribes" 6.2.1.2.2 Unregistered Marks (43(a)) 6.2.1.2.2.1 Common-law standards apply 6.2.1.2.2.2 advertising and promotion is sufficient if (a) occurs within a commercially reasonable time prior to sales or service and (b) is sufficient to create an association among mark, goods/service, and user 6.2.1.2.3 Requirements for Registration 6.2.1.2.3.1 pre-1989 6.2.1.2.3.1.1 in the absence of an ITU option, "token use" was deemed sufficient for registration 6.2.1.2.3.1.1.1 but exactly how much use was necessary was contested 6.2.1.2.3.1.2 TM Registration Maintenance Programs 6.2.1.2.3.1.2.1 division among the circuit courts concerning validity 6.2.1.2.3.1.2.2 Influential opinion in Proctor & Gamble (SDNY 1979) adopts intermediate position 6.2.1.2.3.2 post-1989 6.2.1.2.3.2.1 The availability of the ITU option (see above) has prompted courts to tighten "actual use" requirements 6.2.1.2.3.2.2 Goods 6.2.1.2.3.2.2.1 mark must be placed on goods themselves, containers, displays, tags, or (if infeasible) documents 6.2.1.2.3.2.2.2 goods must be sold (to customers) or transported (visibly) in commerce 6.2.1.2.3.2.2.2.1 e.g., interstate shipments of drugs to clinicians for use in clinical trials is sufficient, even though drugs are not yet approved for sale to public 6.2.1.2.3.2.2.3 For-profit use is not necessary 6.2.1.2.3.2.2.3.1 Nonprofit sales of goods or services sufficient 6.2.1.2.3.2.3 Services 6.2.1.2.3.2.3.1 mark must be used or displayed in the advertising of services, and the services themselves rendered in commerce 6.2.1.2.3.2.3.2 advertising for service that has not yet begun is not sufficient 6.2.1.2.3.2.3.2.1 Aycock (CAFC 2009) 6.2.2 Foreign Use 6.2.2.1 ordinarily, use of a mark outside the US does not count, even if advertising of the goods or services spills into US 6.2.2.1.1 e.g., Mother's Restaurant (CA2 1998) 6.2.2.2 But a few courts define "use in commerce" broadly enough to encompass foreign services provided to US residents 6.2.2.2.1 e.g., International Bancorp. (CA4 2003) 6.2.2.2.1.1 sufficient if the foreign company both provides services to visitors from US and advertises in the US 6.2.2.3 And some courts will recognize foreign use if it causes the mark to become "famous" or "well known" to US customers 6.2.2.3.1 at common law 6.2.2.3.1.1 Maison Prunier (1936) 6.2.2.3.1.2 Vaudable (1959) 6.2.2.3.1.3 Punchgini (NY 2007) 6.2.2.3.2 under Lanham Act -- circuit split 6.2.2.3.2.1 Grupo Gigante (CA9 2004) 6.2.2.3.2.2 Punchgini (CA2 2008) 6.2.2.3.3 unclear whether this equivocal recognition of famous marks is sufficient to comply with TRIPS article 16.2 6.3 Priority Fights 6.3.1 General Principle: First in Time, First in Right 6.3.2 When priority is based on use, geographic scope of right includes: 6.3.2.1 zone of actual use 6.3.2.2 zone where one has established a reputation or business presence 6.3.2.3 natural zone of expansion 6.3.2.3.1 contested doctrine 6.3.2.3.2 zone usually drawn narrowly 6.3.2.4 zone in which D deliberately trades on P's reputation 6.3.3 When priority is based on US registration, geographic scope includes entire nation 6.3.3.1 Constructive notice 6.3.3.2 Constructive nationwide use 6.3.3.2.1 retroactive to date of application 6.3.3.3 Rights of pre-registration senior users 6.3.3.3.1 prevail over registrant 6.3.3.3.1.1 registration subject to cancellation if someone else has previously used the mark in commerce 6.3.3.3.1.2 however, this ground for cancellation is removed by incontestability after 5 years 6.3.3.3.2 but PTO enjoys broad discretion under LA2(d) to grant concurrent registrations when senior user's use antedates application and no consumer confusion would result 6.3.3.4 Rights of pre-registration junior users 6.3.3.4.1 junior user who has employed the mark continuously and in good faith gets "limited area" defense 6.3.3.4.1.1 right to continue using the mark in the area where JU was using the mark at the time of registrant's application 6.3.3.4.1.2 LA 33(b)(5) 6.3.3.5 Rights of post-registration junior users 6.3.3.5.1 post-registration innocent junior user may continue to use mark if consumer confusion is unlikely; must stop when registrant expands operations into that area 6.3.3.5.1.1 spectrum of judicial interpretations 6.3.3.5.1.1.1 leading case: Dawn Donut (CA2 1959) 6.3.3.5.1.1.1.1 registrant had long used "Dawn" for donuts in various parts of the country, but not Rochester 6.3.3.5.1.1.1.2 junior user adopts "Dawn" without actual knowledge of P's use 6.3.3.5.1.1.1.3 no "present likelihood" of expansion into Rochester 6.3.3.5.1.1.1.4 thus no consumer confusion 6.3.3.5.1.1.2 all circuits and some state courts follow 6.3.3.5.1.1.3 CA3 adopted especially strict (pro-D) interpretation 6.3.3.5.1.1.3.1 "Holiday Inn" in Virgin Islands 6.3.3.5.1.1.3.2 P cannot secure an injunction until P actually begins construction in the junior user's region 6.3.3.5.1.1.4 A few courts are drifting away from the rule 6.3.3.5.1.1.4.1 Carmax (CA6 1999) 6.3.3.5.1.1.4.1.1 likelihood of entry is just one of eight factors to determine likelihood of confusion 6.3.3.5.1.1.4.2 Members First (Pa.) 6.3.3.5.1.2 meanings of "innocent" 6.3.3.5.1.2.1 majority rule: junior user is unaware of senior user's use 6.3.3.5.1.2.2 minority rule: Junior user must not have "designs inimical to the interest of the first user" 6.3.3.5.1.2.2.1 GTE (CA10 1990) 6.3.4 Tacking 6.3.4.1 If claimant's use of mark A precedes use of mark B, claimant can "tack" use of A to use of B iff the two marks appear indistinguishable to the public ------------------------------------------------------------- 7 I. What May be Protected? ------------------------------------------------------------- 7.1 Definitions 7.1.1 Trademarks (LA 45) 7.1.1.1 any word, name, symbol, or device, or any combination thereof 7.1.1.2 Either: 7.1.1.2.1 currently used by a person or 7.1.1.2.2 a person has a bona fide intention to use it in commerce and applies for registration 7.1.1.3 used to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown 7.1.2 Service Marks (LA 45) 7.1.2.1 any word, name, symbol, or device, or any combination thereof 7.1.2.2 Either: 7.1.2.2.1 currently used by a person or 7.1.2.2.2 a person has a bona fide intention to use it in commerce and applies for registration 7.1.2.3 used to identify and distinguish the services of one person from the services of others and to indicate the source of the services, even if that source is unknown 7.1.3 Collective Marks (LA 45) 7.1.3.1 a trademark or service mark 7.1.3.2 Either: 7.1.3.2.1 Used by members of a cooperative, association, or other collective group 7.1.3.2.2 or a cooperative, association, or other collective group has a bona fide intent to use it in commerce and applies to register it 7.1.4 Certification Marks (LA 45) 7.1.4.1 any word, name, symbol, or device, or any combination thereof 7.1.4.2 Either: 7.1.4.2.1 currently used by a person other than its owner 7.1.4.2.2 or its owner has a bona fide intention to permit another person to use it in commerce and applies for registration 7.1.4.3 used to certify regional or other origin, material, mode of manufacture, quality, or accuracy of such person’s goods or services or that the goods or services were performed by members of a union or other organization 7.2 Distinctiveness Hierarchy 7.2.1 Arbitrary/Fanciful 7.2.1.1 arbitrary = existing word applied arbitrarily to a product or service 7.2.1.2 fanciful = newly created word, image, etc. 7.2.2 Suggestive 7.2.2.1 suggest a quality of the good or service 7.2.2.2 examples 7.2.2.2.1 Citibank 7.2.2.2.2 Roach Motel -- for roach traps 7.2.2.2.3 Q-tips 7.2.3 Descriptive 7.2.3.1 Describes an ingredient, quality, or characteristic of the product 7.2.3.2 factors used to determine whether a mark is descriptive or suggestive 7.2.3.2.1 Dictionary definition of the term 7.2.3.2.2 Does it require consumers to use their imaginations to reach a conclusion as to the nature of the goods? 7.2.3.2.3 Do competitors “need” the term to describe their products – or would it be “useful” to them? 7.2.3.2.4 To what extent has the term been used by competitors? 7.2.3.3 protectable only with secondary meaning 7.2.3.4 examples 7.2.3.4.1 Fish Fri -- for frying batter 7.2.3.4.2 Coca-Cola 7.2.3.4.3 Alo -- for aloe cream 7.2.3.4.4 Vision Center -- for optical services 7.2.3.4.5 Tender Vittles -- for cat food 7.2.3.4.6 Arthriticare -- for arthritis treatment 7.2.3.4.7 Investacorp -- for investment services 7.2.3.4.8 Custom-Blended -- for gasoline blended at the pump 7.2.4 Generic 7.2.4.1 the term is commonly used to denote the goods or services at issue 7.2.4.2 unprotectable 7.2.4.3 examples 7.2.4.3.1 Bermuda -- for shorts 7.2.4.3.2 Kleenex 7.2.4.3.3 Thermos 7.2.4.3.4 Duck Tours 7.3 Secondary Meaning 7.3.1 consumers have come to recognize the mark as a source indicator 7.3.1.1 a.k.a "acquired distinctiveness" 7.3.1.2 the primary significance of the mark in consumers' minds is not the product, but the producer 7.3.1.3 not essential that consumers know who the producer is 7.3.1.4 define "consumers" 7.3.1.4.1 most cases treat the the public in general as the relevant group 7.3.1.4.2 but some acknowledge that the relevant group consist of buyers of the type of product or service at issue 7.3.1.4.2.1 Harlequin Enterprises (CA2 1981) 7.3.1.4.2.1.1 readers of romance novels 7.3.1.4.2.2 Louboutin (CA2 2012) 7.3.2 for purposes of federal registration 7.3.2.1 LA 2(e) bars registration of "merely descriptive marks" 7.3.2.2 LA 2(f) permits registration of such marks with SM 7.3.3 proving secondary meaning 7.3.3.1 direct evidence 7.3.3.1.1 *consumer surveys 7.3.3.1.2 consumer testimony 7.3.3.1.3 retailers/dealers testimony 7.3.3.2 circumstantial evidence 7.3.3.2.1 exclusivity, duration, and manner of use 7.3.3.2.2 sales volume 7.3.3.2.3 amount and manner of advertising 7.3.3.2.4 unsolicited press coverage 7.3.3.2.5 proof of intentional copying 7.3.3.2.5.1 in CA4, gives rise to a rebuttable presumption of SM 7.3.3.2.5.2 includes intentional "knockoffs" by 3rd parties, not just defendant 7.3.3.2.5.2.1 Louboutin (CA2 2012) 7.3.4 "secondary meaning in the making" 7.4 Permissible Forms 7.4.1 Words 7.4.1.1 e.g., Nike 7.4.1.2 includes numbers 7.4.1.2.1 e.g., 501 jeans 7.4.1.3 words in other languages subject to the "doctrine of foreign equivalents" 7.4.1.3.1 if the other language is common in the United States, the English translation will be employed in categorizing the mark 7.4.2 Symbols 7.4.2.1 e.g., Nike swoosh 7.4.3 Slogans 7.4.4 Names 7.4.4.1 Personal Names 7.4.4.1.1 surnames, first names, and combinations 7.4.4.1.2 must be used in commerce as source indicator 7.4.4.1.3 Common Law 7.4.4.1.3.1 Majority rule: can be protected only upon a showing of SM 7.4.4.1.3.2 Minority: if the policies underlying the traditional rule are not implicated, a name can be inherently distinctive 7.4.4.1.3.2.1 Peaceable Planet (CA7 2004) 7.4.4.1.3.2.2 those policies are: 7.4.4.1.3.2.2.1 1. protection of a name without SM may prevent other persons with same name from using it 7.4.4.1.3.2.2.2 2. May also deprive public of useful information: identity of provider 7.4.4.1.3.2.2.3 3. consumers aware that some names are common will not be confused if two different persons with the same name both use it in their businesses 7.4.4.1.4 Lanham Act 7.4.4.1.4.1 while surnames are registrable only with SM, two-part personal names are registrable without SM 7.4.4.1.4.2 examples of registered personal names 7.4.4.1.4.2.1 Billy Joel 7.4.4.1.4.2.2 Johnny Carson 7.4.4.1.4.2.3 Madonna 7.4.4.1.4.2.4 The artist formerly known as Prince 7.4.4.1.4.2.5 DKNY 7.4.4.1.4.2.6 Dan Marino’s American Sports Bar & Grill 7.4.4.1.4.2.7 O.J. Simpson/ O.J./ Team O.J. Justice for All 7.4.4.2 Names of other living persons 7.4.4.2.1 cannot be registered without their consent-- LA 2(c) 7.4.5 Celebrity Likenesses 7.4.5.1 iff consistently used as a source indicator 7.4.5.1.1 Estate of Presley (DNJ 1981) 7.4.5.2 protected features: face, voice, pose 7.4.5.2.1 e.g., ETW (CA6 2003) 7.4.5.3 cousin of state-law right of publicity 7.4.6 Sounds 7.4.6.1 examples 7.4.6.1.1 light saber 7.4.6.1.2 Law & Order 7.4.6.1.3 MGM lion 7.4.6.1.4 NBC 7.4.6.1.5 Intel 7.4.6.1.6 LucasFilm THX Deep Note 7.4.7 Smells 7.4.8 Colors 7.4.8.1 single colors 7.4.8.1.1 in US, can serve as TMs if claimant can show secondary meaning 7.4.8.1.1.1 Qualitex 7.4.8.1.2 In EU, recognized as source indicators only in exceptional circumstances 7.4.8.2 color combinations 7.4.8.2.1 Smack Apparel (2008) 7.4.9 Tastes 7.4.10 Invented Ingredients 7.4.11 Location of Labels 7.4.12 Fictional characters 7.4.12.1 protectable provided they have come to designate a source 7.4.12.1.1 examples 7.4.12.1.1.1 Mutt & Jeff 7.4.12.1.1.2 Tarzan 7.4.12.1.1.3 Mickey Mouse 7.4.12.1.1.4 James Bond 7.4.12.2 in rare circumstances, treated as inherently distinctive 7.4.12.2.1 example 7.4.12.2.1.1 Arthur the Aardvark 7.4.12.2.1.1.1 Brown (EDNY 1999) 7.4.13 Buildings 7.4.13.1 White Castle (CA6 1937) 7.4.14 Trade Dress 7.4.14.1 Definitions 7.4.14.1.1 Blue Bell (CA5 1989): trade dress of a product is essentially its total image and overall appearance 7.4.14.1.1.1 may include such features as size, shape, color or color combinations, texture, graphics, or even particular sales techniques 7.4.14.1.2 Two Pesos: includes the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve the food, the servers’ uniforms, and other features reflecting on the total image of the restaurant 7.4.14.1.3 McNeil (2007):“It is "the total image or overall appearance of a product, and includes, but is not limited to, such features as size, shape, color or color combinations, texture, graphics, or even a particular sales technique." Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 171 (3d Cir. 2000).” 7.4.14.2 Types 7.4.14.2.1 product packaging 7.4.14.2.2 product configuration 7.4.14.2.2.1 evolution of legal treatment 7.4.15 Geographic Terms 7.4.15.1 Used as Ordinary TMs 7.4.15.1.1 Identify a particular supplier of a good or service 7.4.15.1.2 Standard distinctiveness hierarchy applies 7.4.15.1.3 Standard grounds for exclusion apply (see below) 7.4.15.2 Geographical Indications 7.4.15.2.1 Geographic term used to indicate a region from which products supplied by various firms derive 7.4.15.2.2 US System: Certification Marks 7.4.15.2.2.1 example: California Milk 7.4.15.2.3 French System: AOC 7.4.15.2.3.1 example: Roquefort cheese 7.4.15.2.3.1.1 images 7.4.15.2.3.1.2 AOC regulations 7.4.15.2.3.1.3 WIPO Registration 7.4.15.2.4 International Regime 7.4.15.2.4.1 Lisbon Agreement 7.4.15.2.4.1.1 see "International Framework" above 7.4.15.2.4.1.2 example: Pisco 7.4.15.2.4.2 TRIPS Arts. 22-24 7.4.15.2.4.2.1 see "International Framework" above 7.5 Grounds for Exclusion 7.5.1 Conflicts with Existing Marks 7.5.1.1 Mark cannot be registered if likely to cause confusion with existing mark 7.5.1.1.1 LA 2(d) 7.5.1.2 Mark cannot be registered if it is likely to cause dilution of an existing famous mark 7.5.1.2.1 essential that the existing mark became famous prior to first use of the mark in question 7.5.2 Functionality 7.5.2.1 Marks are unprotectable if functional 7.5.2.1.1 LA 2(e) 7.5.2.2 Definitions 7.5.2.2.1 Qualitex (US 1995) 7.5.2.2.1.1 This Court consequently has explained that, "[i]n general terms, a product feature is functional," and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article," that is, if exclusive use of the feature would put competitors at a significant non reputation related disadvantage. 7.5.2.2.2 TrafFix (US 2001) 7.5.2.2.2.1 Essential to use or purpose, or 7.5.2.2.2.2 Affects cost or quality, or 7.5.2.2.2.3 Exclusive use of it would put competitors at "significant non-reputation-related disadvantage" 7.5.2.2.2.3.1 clarify that this is the standard that should be used for aesthetic-functionality challenges 7.5.2.3 Branches 7.5.2.3.1 utilitarian functionality 7.5.2.3.2 aesthetic functionality 7.5.2.3.2.1 Automotive Gold v. VW (CA9 2006) 7.5.2.3.2.1.1 Mere fact that the mark is the benefit consumers want to purchase does not make it functional 7.5.2.3.2.2 Louboutin (CA2 2012) 7.5.3 Fraud 7.5.3.1 applicant knowingly makes a false, material representation of fact in connection with application 7.5.3.1.1 Hornby (2008) 7.5.4 Deception 7.5.4.1 deceptive marks cannot be registered 7.5.4.1.1 LA 2(a) 7.5.4.1.2 definition 7.5.4.1.2.1 Mark misdescribes the goods to which it is attached 7.5.4.1.2.2 Consumers are likely to believe the description is accurate 7.5.4.1.2.3 The misdescription is likely to affect consumers’ decisions to purchase the goods 7.5.4.2 deceptively misdescriptive marks may be registered iff have acquired SM 7.5.4.2.1 LA 2(e), (f) 7.5.4.2.2 definition 7.5.4.2.2.1 Mark misdescribes the goods to which it is attached 7.5.4.2.2.2 Consumers are likely to believe the description is accurate 7.5.4.3 primarily geographically deceptively misdescriptive marks 7.5.4.3.1 now cannot be registered even if they have acquired SM 7.5.4.3.1.1 permissible before 12/9/93 (NAFTA), but with different definition 7.5.4.3.2 current definition (California Innovations -- CAFC 2003) 7.5.4.3.2.1 (1) mark has as its primary significance a generally known geographic place 7.5.4.3.2.2 (2) mark identifies products that consumers are likely to believe mistakenly are connected with that place 7.5.4.3.2.3 (3) misdescription will likely be a significant factor in consumers' decisions 7.5.4.3.3 so construed, this rule is superfluous 7.5.4.3.3.1 because a mark that meets this definition would be considered "deceptive" in any case 7.5.4.4 special rule for geographical indications 7.5.4.4.1 LA 2(a): No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a) Consists of or comprises ... a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement enters into force with respect to the United States. 7.5.5 False Suggestion of a Connection 7.5.5.1 Hornby (TTAB 2008) 7.5.6 Disparaging 7.5.6.1 Registered Marks 7.5.6.1.1 LA 2(a) 7.5.6.1.1.1 No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises … matter which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute 7.5.6.1.2 Lebanese Arak (2010) 7.5.6.1.3 Blackhorse (2013) 7.5.6.1.4 Treatment of ethnic mascots (Clarkson) 7.5.6.2 Unregistered Marks 7.5.6.2.1 still possible to recover under 43(a) or common law 7.5.7 Immoral or Scandalous 7.5.7.1 Registered Marks 7.5.7.1.1 LA 2(a): No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral … or scandalous matter…. 7.5.7.1.2 Tests 7.5.7.1.2.1 McGinley (1981): Does the mark give offense to the conscience or moral feelings of a substantial portion of the public? 7.5.7.1.2.2 Old Glory (1993): consider “seriousness of purpose” 7.5.7.1.2.3 Mavety (CAFC 1994): “the PTO must demonstrate that the mark is "shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation.” 7.5.7.1.2.4 Wilcher (TTAB 1996): Would the mark be "offensive to the conscience or moral feelings of a substantial composite of the general public"? 7.5.7.1.2.5 Boulevard Entertainment (CAFC 2003): Consider changing social mores and sensitivities 7.5.7.1.3 examples 7.5.7.1.3.1 may not be registered 7.5.7.1.3.1.1 Mark depicting a nude heterosexual couple embracing in a fashion that appeared to expose male genitals 7.5.7.1.3.1.2 “Dick Heads’” for Richard Heads' Bar & Restaurant 7.5.7.1.3.1.3 "Bubby Trap" for brassieres 7.5.7.1.3.1.4 image of defecating dog 7.5.7.1.3.1.5 "Jack-Off" 7.5.7.1.3.1.6 "Madonna" for wine 7.5.7.1.3.2 may be registered 7.5.7.1.3.2.1 “Moonies” for dolls that drop their pants 7.5.7.1.3.2.2 Pictorial representation of a condom decorated with Stars and Stripes 7.5.7.1.3.2.3 “Black Tail” for adult entertainment magazine featuring African-American women 7.5.7.2 Unregistered Marks 7.5.7.2.1 still possible to recover under 43(a) or common law ------------------------------------------------------------- 8 International Framework ------------------------------------------------------------- 8.1 Trends 8.1.1 (1) Harmonization of the laws of separate jurisdictions 8.1.2 (2) Facilitation of Filings and Management in other countries 8.1.3 (3) Expanding coverage of regional trademarks 8.1.4 (4) Expansion of trademark entitlements 8.1.5 (5) Expansion of regional and international exhaustion doctrines 8.1.6 Terminus: single, uniform, world-wide, highly protective trademark system 8.2 Paris Convention 8.2.1 No discrimination against nationals of other countries -- Art. 2 8.2.2 First filing date in a member country gives applicant priority in all other countries, provided filings are made within 6 months -- Art. 4 8.2.3 Marks considered “well-known” in any member country protected against use on similar goods in that country -- Art. 6bis 8.2.3.1 (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. 8.2.3.2 (2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested. 8.2.3.3 (3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith. 8.2.4 Protection of foreign nationals against “unfair competition” -- Art. 10bis 8.2.5 Opportunities for “special agreements” 8.2.6 175 countries 8.3 Madrid Protocol 8.3.1 Madrid Agreement (1890, 1967) 8.3.2 Madrid Protocol (1989) 8.4 Trademark Law Treaty 8.4.1 Procedural simplification and harmonization 8.4.2 53 countries, including US 8.4.3 Standard forms for applications, powers of attorney, etc. 8.4.4 Countries may require only: 8.4.4.1 name and address 8.4.4.2 information concerning the mark 8.4.4.3 goods and services the mark pertains to 8.4.4.4 the mark's classification 8.4.4.5 declaration of the intention to use the mark 8.4.5 10-year initial term and renewal terms 8.5 Nice Agreement 8.5.1 Standard Set of Classes for TM registrations 8.5.1.1 1-34 for Goods 8.5.1.2 35-45 for services 8.5.2 84 member countries (including US) 8.6 Lisbon Agreement 8.6.1 member countries must first develop domestic laws protecting appellations of origin 8.6.2 private parties can then secure protection for an AO under that regime, and then register the AO with WIPO 8.6.3 thereafter, all other member countries must grant (expansive) protection for the AO within their own territories 8.6.3.1 unless within 1 year, the country declares that it cannot grant such protection 8.6.4 28 countries, not including USA 8.6.4.1 map 8.7 TRIPS 8.7.1 WTO member countries 8.7.1.1 map 8.7.2 Mandatory TM protections 8.7.2.1 National Treatment and MFN 8.7.2.2 Service marks must be protected -- 15 8.7.2.3 Mandatory Procedures for Publication, Opposition, and Cancellation -- 15 8.7.2.4 Owner of registered mark must be able to prevent others from using similar marks if it would lead to "likelihood of confusion" -- 16 8.7.2.4.1 1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use. 8.7.2.5 Expansive protection for well-known marks -- 16 8.7.2.5.1 2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark. 8.7.2.5.2 3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use. 8.7.2.6 7-year minimum term -- 18 8.7.2.7 Cancellation for non-use only after 3 years; longer if owner has legitimate excuse -- 19 8.7.2.8 No compulsory licensing -- 21 8.7.2.9 No “special requirements” encumbering use -- 21 8.7.2.10 Preliminary relief must be available 8.7.3 Mandatory Protections for Geographical Indications 8.7.3.1 GIs -- 22 8.7.3.1.1 1. Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. 8.7.3.1.2 In respect of geographical indications, Members shall provide the legal means for interested parties to prevent: 8.7.3.1.2.1 . the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; 8.7.3.1.2.2 . any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967). 8.7.3.1.3 A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin. 8.7.3.1.4 The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory. 8.7.3.2 Wines and Spirits --23 8.7.3.2.1 Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation" or the like. 8.7.3.2.2 The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Member's legislation so permits or at the request of an interested party, with respect to such wines or spirits not having this origin. 8.7.3.2.3 In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled. 8.7.3.2.4 In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system. 8.7.3.3 Exceptions --24 8.7.4 Bacardi Case 8.8 Regional TM Systems 8.8.1 Community TM System 8.8.1.1 EU Membership 8.8.1.2 Acquiring a CTM 8.8.1.2.1 Open System (contrast Madrid Protocol) 8.8.1.2.2 application procedure 8.8.1.2.3 “Absolute” Grounds for Nonregistration 8.8.1.2.3.1 indistinctive, descriptive, functional, deceptive, flags, etc. 8.8.1.2.4 Administrative hierarchy: 8.8.1.2.4.1 European Court of Justice 8.8.1.2.4.2 OHIM Boards of Appeals 8.8.1.2.4.3 OHIM 8.8.1.3 Rights Associated with a CTM 8.8.1.3.1 to exclusive use of the trade mark; 8.8.1.3.2 to prevent the reproduction or imitation of a trade mark; 8.8.1.3.3 to transfer a trade mark or to grant licenses for some or all of the goods or services to which the trade mark is registered, in part or the whole of the Community; 8.8.1.3.4 to oppose the registration of similar Community or national trade marks which could cause confusion to the consumer. 8.8.1.4 Enforcement 8.8.1.4.1 Designated “Community TM Courts” in each country 8.8.1.5 Losing a CTM 8.8.1.5.1 Cancellation for nonuse in Europe for 5 years 8.8.1.6 Relationship to National TM Systems 8.8.1.6.1 co-existence 8.8.1.6.2 Seniority for abandoned national marks preserved 8.8.1.6.3 Substantive Harmonization of national laws 8.8.1.6.3.1 Directive 89/104 8.8.1.6.3.2 1) definition of what can be registered as a trademark; 8.8.1.6.3.3 2) rights conferred by a trademark; 8.8.1.6.3.4 3) conditions on use of a trademark, especially, cancellation for lack of use; 8.8.1.6.3.5 4) exhaustion of rights; 8.8.1.6.3.6 5) grounds for refusal, invalidation, or revocation of a trademark 8.8.2 Mercosur 8.8.3 Andean Community 8.8.4 OAPI 8.8.5 ARIPO