Trademark & Unfair Competition Outline
I. Concepts of Trademarks and Unfair Competition
A. Competition
1. Competition is encouraged usually
i. INS v. AP – AP would get stories and print INS would copy
and send to west coast. Ct gave AP property rights in material
gained b/c INS could not benefit from what they had not
worked on. INS was in trouble for unfair comp.
ii. Cheney Brs. V. Doris Silk Corp – P spent a lot of time and effort making silk ties. D copied them. Ct did not give any property rights to P b/c competition needs to be fostered. Also, P could have © ties. In INS, AP could not protect their work by ©.
2. Patents and © law supercedes any state law on unfair competition or infringement due to constitutional authority. States can require labels to differentiate btw products.
i. Sears v. Stiffel –Stiffel had a design and mechanical patent on lamps and Sears made replicas. Stiffel brought suit under state law for infringement and unfair competition. Lower cts held patent invalid yet said Sears violated state law on infringment and unfair competition. SC said state laws could not protect lamp more than a patent would and Stiffel had no monopoly on lamps.
ii. Compco v. Day Brite Lighting, Inc – similar to sears case, but w/ fluorescent lights. States cannot prevent copying if in violation of federal law/const.
iii. Bonito Boats v. Thundercraft Boats – FL statute gave design protection for boat hulls. Here a state was giving protection where fed gov’t did not – violation of constitutional authority.
B. Trademark
1. Courts
i. infringement suits can be brought in fed dist courts or state
ct., there is no exclusive jx. Appeals from fed dist courts go to circuit courts but precedent applied is from that particular district and not the circuits decisions.
ii. appeals from pto can go to either Dist court or federal
circuit.
2. Dilution Doctrine
a. Property rights protection for mark’s informational value
from the ‘dilution’ caused by non confusing unauthorized uses of
the mark.
i. Stork Rest v. Sahati
D started dive club in SF that had same name as a famous club in NYC. One could not say ® infringement b/c different geo area. There was no confusion. Ct says there is an infringement b/c good will is diluted by having dive bar w/ same name.
II. Chapter 2 What is a trademark?
A. Subject matter of trademark protection
1. trademark – word, name symbol, device, or other designation or a combination of such designations, that is distinctive of a person’s goods or service and that is used in a manner that identifies those goods or services and distinguishes them from goods or service of others. A service mark is a trademark that is used in connection w/ services. 3rd R of unfair competition §9
i. int’l law requires a trademark to be visually perceptible.
2. Generic terms cannot be ®.
Kellogg v. Nabisco
Nabisco had a utility patent on machine that made shredded wheat. There was a design patent on pillow shaped biscuit. Patents expire, Kellogg starts making shredded wheat w/ name. Ct said since patent expired, and “shredded wheat” was used in patent application it was generic and in public domain. Kellogg can use ‘shredded wheat’.
i. Word Marks
Coca-cola v. Koke Co – P tried to protect coke, but D said that P was fraudulent/ misdescriptive b/c cocaine was no longer in coke.
a. Slogans can be ®, but if descriptive, need a 2ndary
meaning.
b. Surnames can be ® if acquired a usefulness/distinctive
meaning added to it. Subsequent people w/ same name
usually have use limited.
ii. Trade Dress – packaging or shape of product.
a. color can be ® – as long as attained a 2ndary meaning and the color is not functional to the product.
Qualitex v. Jacobson products- dry cleaning pads were g
primarily geographically descriptive and
1. Has been used continuously and exclusively for the past 5
years in commerce then can be inherently distinctive.
Chapter 3 Acquisition of Trademark Rights
A. Adoption and Use
1. Must adopt mark and continue to use it.
Procter and Gamble v. Johnson and Johnson – P had registered many marks and was not using them. They would sell only 50 of the product (using another’s actual product) w/ mark to try and keep mark. Casual, sporadic use intended solely for ® reference is insufficient to preserve ®.
2. Use in commerce or intent to use in commerce §45
a. Congressional authority is based on commerce clause
Bozo case – restaurant 50 miles from Memphis – just need to prove that provides service in commerce that affects interstate commerce.
3. Bonafide use of mark
Paramount v. White – D had made a ‘game’ called romulans that was given away and for advertisement. This was not bonafide use.
B. Ownership of Marks
1. Who controls the quality as known to the public?
2. Who conceived/thought of the mark?
Bell v Streetwise – New edition been using its name before they were discovered. They gave BIM right to use their name. Later they disaffirmed their K and BIM threatened to make a new band w/ same name. Ct said that name belonged to group b/c they made mark and controlled quality of mark.
GAF broadcasting v. Caswell-Massey
C sponsored program called music of the perpetual past on G’s radio station. The station chose the music and wrote copy for the show. C wanted the mark when stopped sponsoring. Ct said mark belonged to station b/c they created program.
