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Trademarks and Unfair Competition
St. Johns University School of Law
Sheff, Jeremy N.

What is a TM? Rights Inhered?
Wednesday, May 05, 2010
3:09 PM

TM Cases: right to adopt, use symbol/device to distinguish goods/property made has LONG BEEN RECOGNIZED by CL, chancery courts
· ORDINARY TM: NO RELATION to INVENTION, DISCOVERY
· Requires NO FANCY, IMAGINATION, GENIOUS, LABORIOUS THOUGHTS
· Why distinguish patents/copyrights/TMs?
§ B/c TMs DON’T require novelty, originality
· WHAT IS REQUIRED?
§ Priority of appropriation

· Constitutional Support for TMs
1. Art I: protection for patents and copyright
2. Commerce Clause

· TM provides protection for
· Legal rights that inhere in the symbol
· The symbol itself

What is a TM?
· Lanham 45 (15 USC 1127):
The term “trademark” includes any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, 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.

· Elements of a TM
· Word/name/symbol/device/combination
· Used by a person
· To identify/distinguish his/her goods
· Indicating a unique product
· Indicating source of goods, even if source is unknown

· Is a TM a property right?
· What does a property right afford? Exclusive rights
§ Remedies for violation of rights?
§ Right to destroy
§ Right to exclude
§ Right to alienate
§ Right to use (commercially or otherwise)
· What are the property rights, if any, inhered in TMs? Historical dev
§ Prestonettes v. Coty:
· Use of another’s TM is OK if USED IN WAY THAT DOESN’T DECEIVE THE PUBLIC
· Does NOT confer right to PROHIBIT USE OF WORD(S)
§ Hanover:
· Property right only in sense that man’s right to continued enjoyment of trade reputation and goodwill that flows from it, free from unwarranted interference by others
§ Mishiwaka Rubber:
· Can’t use another’s TM to poach the commercial magnetism of a TM
· TM = law’s recog of PSYCHOLOGICAL FUNCITON OF TMs

· Modern Purposes of Providing Legal Protection, Rights Inhered in TMs
· Identifying ownership/source of goods
· Preventing diversion of customers based on deceit
· Protecting producer’s investment in reputation/good will
· Protecting consumers from deception
· Protecting psychological attraction/conceptual coherence of TMs
· Economic rationales
§ Reducing consumer search costs
§ Encouragement of quality/consistency of goods

· Boundaries of TM Law
· 1st A concerns
· Competition policy

Differences in Breadth Btwn TM and Unfair Comp Law
· TM infringement = species of UC law
· Other types of UC law
§ Antitrust!
§ Mixed fed/state law
§ False advertising law

· General Principles of Unfair Comp Law
· INS v. AP
§ If that which complainant has acquired fairly @ substantial cost may be sold fairly @ substantial profit (e.g. news), competitor who is misappropriating it for the purpose of disposing it
· TO HIS OWN PROFIT, AND
· TO THE DISADVANTAGE OF COMPLAINANT
may be found to be unfairly competing, and that may be considered “property”

· Limits of TM Confusion law
· Lanham 43a: 15 USC 1125(a)
(a) Civil action
(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—
(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
(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.

· Dastar Corp v. 20th Century Fox
§Lanham 43a DOES NOT PROVIDE BOUNDLESS APPLICATION as remedy for unfair trade practices

· Example of Interaction of TM, Unfair Comp Law: Elvis Presley Enterprises v. Capece
· EVEN IF NO LIABILITY in TM infringement claim (Lanham 43), pursuant to 5th Cir infringement factors
1. Type of TM alleged to have been infringed
· STRENGTH OF MARK
· ABILITY TO INVOKE IMMEDIATE ASSOCIATION in consumer’s mind w/P’s goods
· The stronger a mark it, the broader protection it’s afforded
2. Similarity of design btwn two marks
3. Similarity of products/services
· The greater the similarity = GREATER THE LIKELIHOOD OF CONFUSION
4. Identity of retail outlets/purchasers
5. Identity of advertising medium utilized
6. D’s intent
7. Evidence of actual confusion
· And successful parody defense
§ Confusion avoided when D uses P’s mark as pt of parody, jest, societal commentary
§ Subtly humorous, imitative form of criticism
§ PROVIDES BENEFIT BY SHEDDING LIGHT ON EARLIER WORK AND, IN PROCESS, CREATES A NEW ONE
· D STILL LIABLE FOR UNFAIR ADVERTISING

Comparison of Copyright, Patent, TM: chart, 38-39

What do we look @ in TM law?
I.Creation and Destruction of Trademark Rights
A.Subject Matter of Trademark Protection
B.Distinctiveness
C.Functionality
D.Use, Assignment, Licensing, and Abandonment
E.Registration

II.Trademark Enforcement and its Limits
A.Infringement: Likelihood of Confusion
B.Dilution
C.Internet Issues
D.Fair Use and other Defenses

III.Unfair Competition
A.False Advertising
B.Publicity Rights

SM of TM
Wednesday, May 05, 2010
4:14 PM
What’s the SM of a TM?
· Lanham 45
· any word, name, symbol, or device, or any combination thereof
· that is used in commerce…
· 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”

· Non-visual marks? YES, under condition
· In Re Clarke: plumeria-scented yarn
§ I: can SCENT function as a TM?
§ Args against: USPTO
· More product ornamentation than anything else
· Scent not being used to distinguish C’s goods from others
· Competitive need for free access to pleasant scents/fragrances
· Consumers unlikely to regard scent in any product

ES ON WORK, allowing author to PERPETUATE HER MONOPOLY

· BUT if AUTHOR NAME could serve NOT MERELY AS DESIGNATION OF WRITER of each of the works BUT ALSO IS USED IN SUCH MANNER AS TO ASSURE PUBLIC THAT WORKS ARE OF A CERTAIN QUALITY AND NAME THEREFORE SERVES AS INDICATOR OF THE SOURCE OF THE WRITINGS, it serves the FUNCTION OF A TM
§e.g. ABBA
§For author name to be registrable as TM: owner of mark must CONTROL THE QUALITY OF GOODS, WHERE THE NAME HAS BEEN USED

That provides to public an ASSURANCE OF QUALITY – the name FUNCTIONS AS A TM

· Other creative product, e.g. war doc film footage? Dastar Corp v. 20th C Fox: Dastar took Fox’s TV series based on Eisenhower’s Crusade in Europe, which had ENTERED PUBLIC DOMAIN, and incorporated it into its own series; Fox sued under Lanham 43a
· Fox: D’s act = reverse passing off: passing off your (Fox’s) works as mine (D’s)
· I: did D make false designation of origin in passing off P’s works as their own?
§ i.e. does origin include the CREATOR OF THE UNDERLYING WORK (now in public domain) that D copied?
· NO

§ Consumer that associates a good (e.g. Coke) with the mfgr (Coca-Cola Co.) DOESN’T NECESSARILY BELIEVE that CCC was the “origin” of the drink in that it was the VERY FIRST TO DEVISE THE FORMULA
· NO AUTOMATIC ASSUMPTION of consumer that CCC is the SAME ENTITY THAT
· Came up w/IDEA FOR PRODUCT
· DESIGNED THE PRODUCT

§ Affording TM rights to the ORIGINAL CREATOR OF THE PRODUCT to prevent passing off/reverse passing off confuses CR and TM law – it may be an OVEREXTENSION OF TM LAW
· UNLESS an IP right (in CR/patent law) PREVENTS COPYING, it’ll be SUBJECT TO COPYING

§ CANNOT read 43a to REQUIRE ATTRIBUTION OF UNCOPYRIGHTED MATERIALS
· w/o copyrighted work @ base point, “origin” has NO DISCERNABLE LIMITS
· Mfgrs could face LIABILITY for
· FAILING to credit creator of work on which lawful copies are based, AND
· CREDITING the creator if that should be regarded as implying the creator’s SPONSORSHIP/APPROVAL of work

§ PRODUCT-DESIGN TRADE DRESS (e.g. Walmart v. Samara Bros): CANNOT be TMable UNLESS acquires SECONDARY MEANING (i.e. can identify the SOURCE OF THE PRODUCT rather than just the PRODUCT ITSELF)

§ Point of CR protection? TO EVENTUALLY CREATE A RICH PUBLIC DOMAIN which we can all use
§ P’s actions channelling Lanham Act undermine that goal, wouldn’t be allowed under Copyright Act

IN ADDITION TO SM, producer wanting to ESTABLISH TM RIGHTS MUST ALSO MEET REQUIREMENTS REGULATING
· Distinctiveness
· Functionality (mark must be nonfunctional)
· Use