Trademarks and Unfair Competition
Prof. Grinvald
Spring 2010
Table of Contents on Last Page
PART I. FOUNDATIONS AND PURPOSES OF TRADEMARK AND UNFAIR COMPETITION LAW
1. Introduction
A. Sources and Nature of Trademark Rights
1. Basics
i. Harms/purposes
a. Confusion
b. Misappropriation
ii. Roles
a. Source identifying
b. Social meanings
c. Parody
iii. Common law based
II. The Trademark Cases (1879)
i. Statute relied on sec. 8, cl. 8 of Art. I of the Constitution
a. Held trademark is different than copyright or patent
b. Hints that the Commerce Clause would provide a better solution
(1). But did not find intent for it to apply
c. Ruled the Act unconstitutional
III. Rest. 3rd of Unfair Competition
i. Unfair competition: one who causes harm to the commercial relations of another by engaging in a business or trade is not subject to liability to the other for such harm unless:
a. Deceptive marketing
b. Trademark infringement and indicia of identification
c. Appropriation of trade secrets and the right of publicity
d. Other acts or practices actionable as unfair competition
ii. Regulates commercial morality
IV. Elvis Presley Enterprises v. Capece (5th Cir. 1998)
i. District court decision, but was reversed
ii. Facts: Capece opens ”The Velvet Elvis” featuring memorabilia from the 1960s with many images of Elvis. Used Elvis’ images, name, and song lyrics for food names and in advertising. EPE operated a restaurant in Memphis, planned on operating bars worldwide.
iii. Court found parody
V. Causes of Action
i. Registered mark – Lanham Act 32(1)(a)
a. EPE didn’t have registered marks
ii. Unfair Competition – 43(a)(1)
a. Non-registered valid mark
b. Found advertising was actionable as false advertising; no parody
iii. Trademark dilution – 43(c)
a. Valid famous mark
b. Products do not need to be competing
iv. Right of publicity – state law development
PART II: CREATION OF TRADEMARK RIGHTS
2. Distinctiveness
A. The Basics
I. Elements of Causes of Action
A. 32(1)(a) – Registered mark
I. Unauthorized use
i. Level of actionable use; internet context
II. Valid, registered mark
i. Distinctiveness
ii. Priority
III. Likelihood of confusion
B. 43(a)(1) – Unfair Competition
I. Unauthorized use
II. Valid mark
III. Likelihood of confusion
C. Dilution
I. Unauthorized use
II. Valid, famous mark
i. Go through fame factors
a. Likelihood of dilution
II. Definitions
i. Rest. 3rd of Unfair Competition sec. 9 – Trademark
a. Word, name, symbol, device, or other designation, or a combination of such designations,
b. Distinctive of a person’s goods or services and
c. Used in a manner
d. That identifies those goods/services and distinguishes them from the goods/services of others
e. A service mark is a trademark in connection with services
ii. Types of distinctiveness collapsed in sec. 9
a. Source distinctiveness
(1). Without this, just a symbol
b. Differential distinctiveness
(1). Able to set trademark apart from other trademarks/products
iii. Lanham Act Sec. 45
a. Word, name, symbol, device, or other designation, or a combination thereof
b. Used by a person
c. To identify and distinguish his or her goods…
d. To indicate the source of the goods, even if the source is unknown
(1). Brings differential distinctiveness to forefront
e. Service mark: any w/n/s/d/c
(1). Used by a person
(2). To identify and distinguish one services from another’s
(3). And to indicate the source of the service
(i). Use means different things for service marks; otherwise, generally the same
f. Trade name
(1). Any name used by a person to identify his or her business or vocation
(2). Business name
(3). If just trade name, it is not registerable
(4). This is a holdover from common law
(5). You could seek protection under unfair competition
B. Spectrum of Distinctiveness
I. Abercrombie and Fitch v. Hunting World (2nd Cir. 1976)
i. Facts: Plaintiff and Defendant sold clothing with the name “Safari.”
ii. Held: The court found that the term “Safari” was not suggestive, as “the word ‘safari’ in connection with wearing apparel is widely used by the general pubic and people in the trade.” Was merely descriptive when used with clothing. Safari used in connection with an African expedition is generic
a. Context of use was important
iii. The validity of the mark ends where suggestion ends and description begins. A terms is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods
iv. Lanham Act
a. Allows registration of merely descriptive mark with secondary meaning
(1). 2e – can’t be registered
(2). 2f – unless it has become distinctive
(i). Secondary meaning
b. No protection of generic terms
(1). 14(3)
II. Spectrum of Distinctiveness
i. Generic
a. Not inherently distinctive
b. Denotes common name for class of products
c. No protection
d. Shredded Wheat, Aspiring, Thermos, Cellophane
e. Policy reasons = monopoly over languag
of the ordinary significance and meaning to the public
(2). Consumer based
(i). Favors descriptiveness
b. Imagination Test
(1). Does it require imagination, thought and perception to reach a conclusion as to nature of the good
(2). Consumer based
(i). Favors descriptiveness
c. Whether competitors would be likely to need the terms used in the trademark to describe their product
(1). Protects competition
(i). Favors descriptiveness
d. The extent to which a term has actually been used by others making a similar product or service
(1). Many companies using mark, favors descriptiveness
(2). Protects competition
v. Burden of Proof
a. On party seeking legal protection
vi. Secondary Meaning
a. Indirect/circumstantial evidence
(1). Amount and manner of advertising
(i). Effectiveness in altering the meaning of the term to the consuming public
(ii). Company has done nothing to deserve the name
(2). Volumes of sales
(3). Length and manner of use
(i). Use exclusively for 5 yrs. (incontestable) (2f)
(4). Use in the media
(5). Proof of intentional copying by others
(6). Size of business in the market
b. Direct evidence
(1). Actual consumer testimony
(2). Proof of actual confusion
D. Generic Terms
I. Basics
i. Generic terms cannot be registered
a. A term that refers or has come to be understood as referring to the genus of which the particular product is a species
b. Any acquisition of secondary meaning is irrelevant
ii. Two types
a. Inherent
(1). Adopted when they were already generic
(i). Shredded wheat, crab meat
b. Acquired
(1). Victim of genericide
(2). Terms that were distinctive but became generic through common usage
(i). Escalator, thermos, aspirin
iii. Reactive doctrine (inquiry into meaning) or proactive doctrine (instrument for denying marks)?
II. Lanham Act Provisions
i. 14(3)
a. any person can petition to cancel registration of a mark that has become generic
(1). if trying to register a mark that is already generic, then PTO can deny registration of such (merely descriptive) terms under §2(e)
b. test: primary significance test (§14(3))
