TRADEMARKS PROF. JANICKE FALL 2011.

TRADEMARKS PROF. JANICKE FALL 2011

IP Survey -- Trademarks
TO BE A “MARK”: HAS TO SERVE AS A BRAND MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS 2011 IP Survey -- Trademarks

TO BE A “MARK”: HAS TO BE USED PHYSICALLY: ON THE GOODS, or ON GOODS’ CONTAINERS, or ON POINT-OF-SALE DISPLAYS OF GOODS, or ON INVOICES OR SHIPPING DOCUMENTS, IF THE ABOVE METHODS OF USE ARE IMPRACTICAL, or IN CATALOGS OR WEBSITES ADVERTISING THE GOODS 2011 IP Survey -- Trademarks

FOR A SERVICE MARK, USE CAN BE: ON SIGNS, ADS, OR PAPERS CONNECTED TO THE SERVICE 2011 IP Survey -- Trademarks

TO BE A “MARK”: THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE LOCAL, FOR STATE RIGHTS INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS 2011 IP Survey -- Trademarks

PROTECTION RIGHTS BEGIN UPON FIRST USE REGISTRATION IS UNNECESSARY CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK DONE UNDER UNFAIR COMPETITION LAWS 2011 IP Survey -- Trademarks

BENEFITS OF REGISTRATION
WHILE NOT NEEDED FOR OWNING EXCLUSIVE RIGHT TO USE A MARK, OR FOR SUING INFRINGERS, THERE ARE MANY BENEFITS TO A FEDERAL REGISTRATION: CAN RESERVE A MARK PRIOR TO USE EXCLUSIVE RIGHT TO USE THE MARK IS PRESUMED FROM REGISTRATION “INCONTESTABLE” AFTER 5 YEARS 2011 IP Survey -- Trademarks

(MORE BENEFITS OF FED. REGISTRATION)
VALIDITY OF MARK IS PRESUMED U.S. CUSTOMS SERVICE WILL ASSIST AGAINST INFRINGING IMPORTATIONS 2011 IP Survey -- Trademarks

“RESERVING” A MARK CAN NOW FILE APPL. TO REGISTER BASED ON INTENT TO USE PROVIDES CONSTRUCTIVE USE AS OF FILING DATE MUST ACTUALLY USE IN COMMERCE PRIOR TO REGISTRATION 2011 IP Survey -- Trademarks

MARKS THAT ARE EASY TO PROTECT
COINED: KODAK; PURELL ARBITRARY: APPLE; SUN SUGGESTIVE: MILKY WAY COPPERTONE 2011 IP Survey -- Trademarks

HARDER TO PROTECT DESCRIPTIVE: TASTEE A SURNAME: STEINWAY WATERMAN GEOGRAPHIC: MID-ATLANTIC; SOUTHWEST THESE WERE NOT PROTECTED AT FIRST USE NEED TO DEVELOP ACQUIRED DISTINCTIVENESS OVER TIME, SOMETIMES CALLED “SECONDARY MEANING” 2011 IP Survey -- Trademarks

WHAT IS NOT A MARK: GENERIC NAME OF A THING “BREAD” FOR BREAD SOME CLOSE ISSUES: ASPIRIN SHREDDED WHEAT Cf.: KLEENEX; PING-PONG; XEROX 2011 IP Survey -- Trademarks

EXAMPLES OF MARKS 2011 IP Survey -- Trademarks

2011 IP Survey -- Trademarks

NATURE OF RIGHTS IN MARKS
PREVENT OTHERS FROM USING SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY NOT A RIGHT TO PREVENT ALL USES: “CADILLAC” FOR CARS AND DOG FOOD “CHAMPION” FOR PAPER AND BOXING GLOVES AND SPARK PLUGS 2011 IP Survey -- Trademarks

DURATION OF EXCLUSIVE RIGHT
AS LONG AS YOU ARE USING IT IN COMMERCE, PROVIDED - - IT DOES NOT BECOME GENERIC IT DOES NOT LOSE ITS CHARACTER AS SINGLE-SOURCE INDICATOR 2011 IP Survey -- Trademarks

REITERATING THE LEGAL BENEFITS OF REGISTRATION
PRIMA FACIE EVIDENCE OF EXCLUSIVE RIGHT TO USE CONSTRUCTIVE USE EVERYWHERE, AS OF THE FILING DATE STARTS FIVE-YEAR CLOCK TO INCONTESTABILITY 2011 IP Survey -- Trademarks

PRACTICAL BENEFIT OF REGISTRATION
OTHERS WILL FIND OUT ABOUT YOUR RIGHTS, AND WON’T ADOPT SIMILAR MARK CHEAP POLICING 2011 IP Survey -- Trademarks

PASSING/FAILING THE FIRST REQUIREMENT OF A “MARK”
NOT A DISTINGUISHING BRAND 2011 IP Survey -- Trademarks

PASSING/FAILING SECOND REQUIREMENT OF A “MARK”
NON-USE IN ACTUAL COMMERCE § 1127 2011 IP Survey -- Trademarks

PASSING/FAILING THIRD REQUIREMENT OF A “MARK”
NON-USE ON GOODS OR CONNECTED TO SERVICES 2011 IP Survey -- Trademarks

FALLING INTO THE “REGISTERED” PIT
PROBLEM: 1ST USER HAS NO REGISTRATION 2ND USER GOT STATE AND FEDERAL REGISTRATIONS, TWO YEARS AGO GOODS/MARKS CONFUSINGLY SIMILAR WHO WINS? 2011 IP Survey -- Trademarks

THE THORN: PERMANENT LOCAL USE RIGHTS
THE ONE BIG PROBLEM FOR THE FIRST USER IN COMMERCE SECOND USER CAN GET PERMANENT LOCAL RIGHTS TO USE IF CONFUSION, FIRST USER MUST STAY OUT! 2011 IP Survey -- Trademarks

PERMANENT USE RIGHTS LEGAL REQUIREMENTS: (1) 2ND USER IS FIRST TO USE IN A LOCALE (STATE OR LESS) (2) 2ND USER HAS NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF 2ND USER’S ADOPTION 2011 IP Survey -- Trademarks

PERMANENT USE RIGHTS FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS THE FEDERAL REGISTRATION DATE REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2) 2011 IP Survey -- Trademarks

PERMANENT USE RIGHTS NOW, CONGRESS HAS PROVIDED THAT A FEDERAL REGISTRATION CONSTITUTES CONSTRUCTIVE USE EVERYWHERE AS OF THE FILING DATE (§1057(c)) THIS KILLS CONDITION (1) AS OF THE FILING DATE 2011 IP Survey -- Trademarks

PERMANENT USE RIGHTS REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE THE POSSIBILITY OF CREATING NEW INNOCENT LOCAL RIGHTS ENDED AT THE FILING DATE i.e., 1ST USER IS DEEMED TO BE EVERYWHERE 2011 IP Survey -- Trademarks

QUASI-MARKS AND NON-MARKS
WALK THROUGH § 1052 THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS 2011 IP Survey -- Trademarks

START WITH 1052 (a) - (d): TELLS US MANY PROBLEMS ARE INCURABLE 2011 IP Survey -- Trademarks

THE (e) GROUP – SOME ARE CURABLE: DESCRIPTIVE GEOGRAPHIC SURNAMES SOME NOT CURABLE: DECEPTIVELY MISDESCRIPTIVE 2011 IP Survey -- Trademarks

FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER) EXAMPLE: SHAPE OF A DESK LAMP CANNOT BE CURED 2011 IP Survey -- Trademarks

GETTING FROM QUASI TO FULL: SHOWING ACQUIRED DISTINCTIVENESS
OFTEN CALLED “SECONDARY MEANING” SHOWS THE QUASI-MARK HAS ARRIVED; NOW SIGNALS SOURCE FIVE YEARS EXCLUSIVE USE MAY DO 15 USC § 1052 (f) 2011 IP Survey -- Trademarks

LESS KNOWN TYPES COLLECTIVE MARKS TRADE / SERVICE MARKS MEMBERSHIP MARKS CERTIFICATION MARKS § 1054 2011 IP Survey -- Trademarks

CONFUSION LIKELIHOOD AS TO SOURCE AS TO SPONSORSHIP AS TO AFFILIATION AS TO APPROVAL 2011 IP Survey -- Trademarks

CONFUSION LIKELIHOOD SUBSTANTIAL NUMBER OF PERSONS PROBLEM OF LANGUAGE TRANSLATION DEPENDS HOW MANY SPEAK IT IN U.S. 2011 IP Survey -- Trademarks

STRONG-WEAK MARKS COINED -- e.g., KODAK: STRONGEST OF ALL ENTITLED TO THE WIDEST SCOPE OF PROTECTION MODAK, DODAK, KODAR, FOR FILM WILL BE HELD INFRINGING ARBITRARY – e.g. APPLE: ALSO VERY STRONG 2011 IP Survey -- Trademarks

SUGGESTIVE (e.g. MILKY WAY; COPPERTONE) – OK, BUT WEAKER “CREAMY WAY,” “BRONZETONE” MIGHT BE HELD NONINFRINGING DESCRIPTIVE (e.g. TASTEE BREAD, SUPERIOR WATERBEDS), and SURNAMES (WATERMAN FOR PENS, FORD FOR CARS) ARE NOT PROTECTED RIGHT AWAY ARE PROTECTED WHEN THEY HAVE ACQUIRED DISTINCTIVENESS 2011 IP Survey -- Trademarks

“DESCRIPTIVE” INCLUDES GEOG. DESCRIPTIVE (e.g. SOUTHWEST FOR AIRLINE SERVICES, HOUSTON CHRONICLE FOR NEWSPAPERS) NOT PROTECTED AT FIRST GENERIC NAME OF ARTICLE (e.g. ASPIRIN) CANNOT SERVE AS A MARK CANNOT ACQUIRE DISTINCTIVENESS – IT’S PART OF THE LANGUAGE 2011 IP Survey -- Trademarks

FACTORS IN JUDGING LIKELIHOOD OF CONFUSION
NO SINGLE FACTOR CONTROLS “SUNKIST” FOR FRESH FRUIT AND FOR DRIED FRUIT WERE OWNED BY UNRELATED COMPANIES MARKS LIKE “ACME,” “SUPERIOR, AND “NATIONAL” HAVE MANY OWNERS FAMOUS CASES HAVE CHECKLISTS 2011 IP Survey -- Trademarks

FACTORS STRENGTH OF P’S MARK HOW ARBITRARY? HOW MUCH USE? SIMILARITY OF THE MARKS SIGHT SOUND MEANING SCRIPT OR DESIGN SIMILARITY OF PRODUCTS OF SERVICES 2011 IP Survey -- Trademarks

FACTORS (CONT’D.) SIMILAR CHANNELS OF TRADE SIMILAR ADVERTISING OR PROMOTION MEDIA BAD FAITH ADOPTION SOME COURTS GIVE THIS HEAVY WEIGHT; OTHERS DON’T SIMILAR TARGET CUSTOMERS SIMILAR PURCHASE CONDITIONS: TIME, PRICE, ETC. 2011 IP Survey -- Trademarks

COURTS HAVE TO WEIGH ALL THE FACTORS THEY REACH A DECISION THAT IS TO SOME DEGREE SUBJECTIVE 2011 IP Survey -- Trademarks

WHO HAS THE RIGHT? THE PROBLEM OF “GRAY GOODS”
ARISES FROM CORPORATE SPINOFFS [ABOUT AS FREQUENT AS MERGERS] WHEN FOREIGN MARKET IS SPUN OFF, MARKS USUALLY GO WITH ALSO FROM LICENSING [IP MAXIMIZATION] 2011 IP Survey -- Trademarks

GRAY GOODS U.S. RULE: IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER 2011 IP Survey -- Trademarks

WHAT IS NOT INFRINGEMENT
FAIR USE TO DESCRIBE: JANICKE’S COMPUTER RENTAL WE RENT ALL TYPES, INCLUDING COMPAQ®, IBM®, AND DELL® § 1115 (4) JANICKE’S COMPUTER RENTAL WE RENT ALL TYPES INCLUDING COMPAQ® AND IBM® 2011 IP Survey -- Trademarks

WHAT IS NOT INFRINGEMENT
OWN NAME IN BUSINESS OTHER THAN AS A MARK Cf: SPERA’S RESTAURANT TONY SPERA, PROP. TONY’S RESTAURANT 2011 IP Survey -- Trademarks

N.B. NO GENERAL RIGHT TO USE YOUR OWN NAME IN BUSINESS MOST ATTEMPTS FAIL NO POINT IN CHANGING YOUR NAME TO JOHNNY WALKER IF YOU ARE GOING TO SELL WHISKY 2011 IP Survey -- Trademarks

N.B. STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL 2011 IP Survey -- Trademarks

A WORD ABOUT DILUTION WHEN THERE IS NO INFRINGEMENT BECAUSE NO LIKELIHOOD OF CONFUSION BUT THE ACTS OF D SOMEHOW CHEAPEN OR TARNISH OR REDUCE THE VALUE OF P’S MARK 2011 IP Survey -- Trademarks

A WORD ABOUT DILUTION EXAMPLE: “CADILLAC” FOR CARS FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD 2011 IP Survey -- Trademarks

REMEDIES 2011 IP Survey -- Trademarks

INJUNCTIVE NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS 2011 IP Survey -- Trademarks

INJUNCTIVE PRELIMINARY PERMANENT §1116 (a) 4,000 + TRADEMARK SUITS FILED ANNUALLY ABOUT 45 GO TO TRIAL 2011 IP Survey -- Trademarks

MONETARY D’S PROFITS OR P’S DAMAGES [DIFFICULT TO SHOW] COURT CAN TREBLE P’S DAMAGES IF D’S PROFITS AS REMEDY IS TOO SMALL/LARGE, COURT CAN ENTER A “JUST” AMOUNT § 1117 (a) 2011 IP Survey -- Trademarks

ATTORNEY’S FEES “EXCEPTIONAL CASES” ONLY USUALLY MEANS WILLFUL INFRINGEMENT § 1117 (a) 2011 IP Survey -- Trademarks

DESTRUCTION A NICE MEDIEVAL REMEDY ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?] § 1118 2011 IP Survey -- Trademarks

DEFENDANT’S REMEDIES ATTORNEY’S FEES IN EXCEPTIONAL CASES § 1117 (a) ORDER TO CANCEL REGISTRATION § 1119 2011 IP Survey -- Trademarks

TRADEMARKS PROF. JANICKE FALL 2011.

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TRADEMARKS PROF. JANICKE FALL 2011.

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