1. TRADEMARKS PROF. JANICKE JULY 2008

2. F2008Trademarks2 TO BE A “MARK”: HAS TO SERVE AS A BRAND MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS

3. F2008Trademarks3 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

4. F2008Trademarks4 FOR A SERVICE MARK, USE CAN BE: –ON SIGNS, ADS, OR PAPERS CONNECTED TO THE SERVICE

5. F2008Trademarks5 TO BE A “MARK”: THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE LOCAL, FOR STATE RIGHTS INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS

6. F2008Trademarks6 PROTECTION RIGHTS BEGIN UPON FIRST USE REGISTRATION IS UNNECESSARY CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK –DONE UNDER UNFAIR COMPETITION LAWS

7. F2008Trademarks7 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

8. F2008Trademarks8 (MORE BENEFITS OF FED. REGISTRATION) –CAN SUE INFRINGERS IN FEDERAL COURT, REGARDLESS OF DIVERSITY –VALIDITY OF MARK IS PRESUMED –PROTECTION AGAINST INFRINGEMENT IS NATIONWIDE –U.S. CUSTOMS SERVICE WILL ASSIST AGAINST INFRINGING IMPORTATIONS

9. F2008Trademarks9 “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

10. F2008Trademarks10 MARKS THAT ARE EASY TO PROTECT COINED: KODAK; PURELL ARBITRARY: APPLE; SUN SUGGESTIVE: MILKY WAY COPPERTONE

11. F2008Trademarks11 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”

12. F2008Trademarks12 WHAT IS NOT A MARK: GENERIC NAME OF A THING –“BREAD” FOR BREAD SOME CLOSE ISSUES: –ASPIRIN –SHREDDED WHEAT –Cf.: KLEENEX; PING-PONG; XEROX

13. F2008Trademarks13 EXAMPLES OF MARKS

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24. F2008Trademarks24 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

25. F2008Trademarks25 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

26. F2008Trademarks26 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

27. F2008Trademarks27 PRACTICAL BENEFIT OF REGISTRATION OTHERS WILL FIND OUT ABOUT YOUR RIGHTS, AND WON’T ADOPT SIMILAR MARK CHEAP POLICING

28. F2008Trademarks28 PASSING/FAILING THE FIRST REQUIREMENT OF A “MARK” NOT A DISTINGUISHING BRAND

29. F2008Trademarks29 PASSING/FAILING SECOND REQUIREMENT OF A “MARK” NON-USE IN ACTUAL COMMERCE § 1127

30. F2008Trademarks30 PASSING/FAILING THIRD REQUIREMENT OF A “MARK” NON-USE ON GOODS OR CONNECTED TO SERVICES

31. F2008Trademarks31 FALLING INTO THE “REGISTERED” PIT PROBLEM: 1 ST USER HAS NO REGISTRATION 2 ND USER GOT STATE AND FEDERAL REGISTRATIONS, TWO YEARS AGO GOODS/MARKS CONFUSINGLY SIMILAR WHO WINS?

32. F2008Trademarks32 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!

33. F2008Trademarks33 PERMANENT USE RIGHTS CONDITIONS: (1) FIRST TO USE IN A LOCALE (STATE OR LESS) (2) NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF ADOPTION

34. F2008Trademarks34 PERMANENT USE RIGHTS FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS REGISTRATION DATE REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2)

35. F2008Trademarks35 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

36. F2008Trademarks36 PERMANENT USE RIGHTS ∴ REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE

37. F2008Trademarks37 QUASI-MARKS AND NON-MARKS WALK THROUGH § 1052 THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS

38. F2008Trademarks38 QUASI-MARKS AND NON-MARKS START WITH 1052 (a) - (d): TELLS US MANY PROBLEMS ARE INCURABLE

39. F2008Trademarks39 QUASI-MARKS AND NON-MARKS THE (e) GROUP – SOME ARE CURABLE: DESCRIPTIVE GEOGRAPHIC SURNAMES SOME NOT CURABLE: DECEPTIVELY MISDESCRIPTIVE

40. F2008Trademarks40 QUASI-MARKS AND NON-MARKS FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER) EXAMPLE: SHAPE OF A DESK LAMP CANNOT BE CURED

41. F2008Trademarks41 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)

42. F2008Trademarks42 LESS KNOWN TYPES COLLECTIVE MARKS –TRADE / SERVICE MARKS –MEMBERSHIP MARKS CERTIFICATION MARKS § 1054

43. F2008Trademarks43 CONFUSION LIKELIHOOD AS TO SOURCE AS TO SPONSORSHIP AS TO AFFILIATION AS TO APPROVAL

44. F2008Trademarks44 CONFUSION LIKELIHOOD SUBSTANTIAL NUMBER OF PERSONS PROBLEM OF LANGUAGE TRANSLATION –DEPENDS HOW MANY SPEAK IT IN U.S.

45. F2008Trademarks45 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

46. F2008Trademarks46 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

47. F2008Trademarks47 “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

48. F2008Trademarks48 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

49. F2008Trademarks49 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

50. F2008Trademarks50 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.

51. F2008Trademarks51 COURTS HAVE TO WEIGH ALL THE FACTORS THEY REACH A DECISION THAT IS TO SOME DEGREE SUBJECTIVE

52. F2008Trademarks52 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]

53. F2008Trademarks53 GRAY GOODS U.S. RULE: IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER

54. F2008Trademarks54 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 ®

55. F2008Trademarks55 WHAT IS NOT INFRINGEMENT OWN NAME IN BUSINESS OTHER THAN AS A MARK Cf: SPERA’S RESTAURANT TONY SPERA, PROP. TONY’S RESTAURANT TONY SPERA, PROP.

56. F2008Trademarks56 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

57. F2008Trademarks57 N.B. STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL

58. F2008Trademarks58 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

59. F2008Trademarks59 A WORD ABOUT DILUTION EXAMPLE: –“CADILLAC” FOR CARS –FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD

60. F2008Trademarks60 A WORD ABOUT DILUTION ONLY AVAILABLE FOR “FAMOUS” MARKS NO DAMAGES NORMALLY INJUNCTIVE ONLY § 1125 (c)

61. F2008Trademarks61 REMEDIES

62. F2008Trademarks62 INJUNCTIVE NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS

63. F2008Trademarks63 INJUNCTIVE PRELIMINARY PERMANENT –§1116 (a) 4,000 + TRADEMARK SUITS FILED ANNUALLY ABOUT 45 GO TO TRIAL

64. F2008Trademarks64 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)

65. F2008Trademarks65 ATTORNEY’S FEES “EXCEPTIONAL CASES” ONLY USUALLY MEANS WILLFUL INFRINGEMENT § 1117 (a)

66. F2008Trademarks66 DESTRUCTION A NICE MEDIEVAL REMEDY ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?] § 1118

67. F2008Trademarks67 DEFENDANT’S REMEDIES ATTORNEY’S FEES IN EXCEPTIONAL CASES § 1117 (a) ORDER TO CANCEL REGISTRATION § 1119