TRADEMARKS & UNFAIR COMPETITION – SUMMER ’09 – PROF. FECHTER
3 main areas of intellectual property law:
Trade marks
Name or symbol that identitifes and distinguishes 1 good from all other goods
Patent
Copyright
Two other areas to take into account:
Right of privacy
People have rt to privacy; buildings don’t
Publicitiy
Per Civil law TM are based on regisration and therefore first to trademark office (regardless of use) owns
Per Common Law TM is based on use, first to use in market owns trademark;
need adoption and use of trademark
Generally, first user owns
Need to use mark interstate to assert federal right to TM under Lanham Act
The Lanham (Trademark) Act (title 15, chapter 22 of the United States Code) is a piece of legislation that contains the federal statutes of trademark law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.
Trademark use is territorialàtherefore if I’m using a TM exclusively in France and file for TM registration in US then I’m filing under intent to use and my priority is the day of my first use in US (or first use in commerce b/w US and France)
Community trade mark (CTM) – the general trademark you file for to TM protection in the EU
Madrid Arrangement: worldwide protocol for the ease of trademark protection
When you file your trademark application you can designate what other countries you wish to register your TM (done with the help of WIPO, a UN organization)
There is also a similar scheme for patents
However if there is a concurrent use and Good faith adoption w/o knowledge that is an acceptable defense to someone claiming to own the TM because they were first in the market place
But a counter to GF argument is showing your regisration of the TM b/c regisration = recording act which therefore puts all others on notice (all others are supposed to a TM search)
You are required to do your due dillegence (Tommy Hilllfiger – 1996)
If your TM violation is viewed to be agregious you are liable treble damages
First thing you are supposed to do when s/o wants to use a TM, do a TM search!!
If you have concurrent users – 1 had registration, 1 has first use – both apply and can be used
Can have identical product and identical mark
Basis of filing for a TM:
Based on date of your use, “race to the market”
Bona fide intent to use
Priority date is based on your date of regisration
ITU – search
If someone has BF intent to use on may 27 and someone has actual use on june 1, who has priority?
Person with BF intent; when they make actual use of TM (post june 1) priority reverts back to user with BFI
Application for TM filedàexamination by TM boardàopposition period (30 days) [published in “Official Gazzette” for all to see it] àif opposition then you have more time for issues to be raised and dealt with
How to prove infringement and likelihood of confusion?
Survey: make a list of questions regarding the issues at hand
Based on the results you can prove likelhood of confusion
If you can show 16% confusion then you can show likelehood of confusion
What can you go after in a lawsuit?
Copyright infringer’s profits
Patents:
Gives you exclusive rights / monopoly on your creation/invention
But it takes 6-7 years to get approval
Patent Pending:
Puts everyone on notice – knocks out defense of good faith
It allows generic uses however, patent pending, serves notice that if patent clears they will be open to lawsuit for infringment
Also makes competitors disgorge their profits, pay damages + legal fees
3 tests for patentability:
new
new invention, novel application of process etc…
you have 12 months to file for patent after disclosing it, if not the invention reverts back to Public Domain (PD)
after you file, patent examiner does a search to make sure it is truly new
useful
argue why invention is useful and what purpose/benefit it has
non-obvious
must be non obvious to an expert in the field/art
very hard to give objective criteria; if patent examiner says it is obvious patent will be denied
if invention meets these 3 criteria, you automatically get patent
cost roughly $20K
Copyright –
gives you absolute monopoly over your work, a 3rd party cannot copy it
different for all arts—music © is different from book which different from play
copyright office run by library of congress
TM and patent office run by dept of commerce
Test is minimum creativity
If what you wrote, did or drew make a showing of min creativity?
Copyright automatically attaches itself to your work upon completion
If you doodle on a paper you have CL copyright
In order to assert © in federal court you need Certificate of © registration and protection (w/o it only can sue in state court)
In order to assert © protection vs infringment you need to file for ©
You have to pay a small fee, $250, for © registration
It is put on file and everyone has a “share” in that copyrighted work
You need to submit a copy of the work you are seeking to protect
Issues with © comes into play with computer software b/c © holder doesn’t want to disclose the code needed to make the software
Only need to disclose first 25 pages and last 25 pages
Right to Privacy:
Every person in US has right to privacy EXCEPT 1st Amendment freedoms trump right to privacy
NY Post can take your picture and splash it across the front page w/o your consent
You can’t use your likeness w/o consent
Ex: bette midler case àused her voice w/o consent
Ex: woody allen v American apparel case (Allen’s likeness from a movie in clothing ad)
Ex: Vanna White cases
ABSOLUTE RIGHT
Right of Publicity:
ONLY A CELEBRITY HAS A RIGHT OF PUBLICITY
It protects those particular traits that makes someone a celebrity
Limited right
Limited to the aspects of the person that makes them famous / makes them $
Can’t rip off bette middler’s voice
Cant rip off Jackie O’s look etc…
Economic right
6/1/09
Trademark:
Use word, name, symbol, device or other designation or combination that IDENTIFIYS & DUSTINGUISHES one’s good from another
od of confusion
If you can prove it, infringment, and second person can’t carry on business in same manner
Chapter 3: Ownership and Use
Ownership –
Bell v Streetwise Records
P = performers ; D = record producer who recorded and sold their records
Suing over who owns the group’s name “New Edition”
P’s were around and founded group before D signed them and worked with them
Had a hit record with “candy girl” in 80s
Want to fire D and continue, but D claims own the rights to the name
Court: P owns mark “New Edition”
1 – they were the first to use
were performing as NE, in many local concerts, before D signed them
2 – public association
public associates NE with the singers not just the name of the band; would be NE with 5 new members
D acted as a producer and was paid, shouldn’t get ownership rights over something he didn’t create (name)
USE –
Proctor & Gamble v Johnson & Johnson –
P claims that D’s TM on “assure” tampons infringes on P’s TM for “Sure” deoderant and tampons & “Assure” shampoo and mouthwash
Court rules for J&J
P&G made no showing of bona fide commercial use to allow TM protection for “Sure” and “Assure” ; they never used these marks IN COMMERCE
P&G had these names on products barely used (“Minor Brands”)
Only “confusion” is that P&G sells Sure deoderant [vs J&Js Sure tampons]
This suit was brought in bad faith, no real proof or hint on infringment
J&J in fact did searches for the TM name and saw that although P&G had TM name, didn’t use it
§45 Lanham Act: “use in commerce”
Commerce = all commece that can be regulated by Congress
TM = any word, name, symbol or combination
Used by a person or if a person has a bona fide intention to use in commerce and applies to regster it
“use in commerce” = bona fide use in commerce, not the reserved right to use a mark in commerce
“in commerce” =
TM is on a goods label, container etc… and the good is sold or transported in ISC
Larry Harmon v Williams (BOZO the clow case)
P claimed that D’s registration of the TM Bozo for resturant should be denied b/c it didn’t = use in commerce b/c resturant is a single location
Court disagreed – although BOZOs in only 1 location they had interstate reach (customers from Tenn, Miss and Ark) as well as bec it gets mention in numerous publications in other states
