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Trademarks and Unfair Competition
SUNY Buffalo Law School
Bartholomew, Mark

Trademarks Lite
1 Foundations and Purpose of Trademarks & Unfair Competition Law
Why have Trademark law?
Consumer confusion (protection purchasers)
Reputation of Trademark owner may suffer (protecting mark holders reputations)
What result if we did away with trademark law and let competition take care of it?
Race to the bottom, product quality would go down
It is easy to steal a trademark so we need a law to prevent it
Delta planes v. facets, we still allow same names as long as there is no confusion.
Why allow anyone else besides the owner to use the mark?
Use it for comparison to a competitive product
Triangle – owner – competitor- consumer – to keep a dialogue with consumers?
Elvis case
Elvis Presley Enterprises trust is unhappy with D, D opened a club making fun of the 60’s which is not a family friendly place. D defense: did not intent to use Elvi’s name, 2 diff consumer groups and no confusion.
EPE: we are planning to open a club ourselves, EPE argued similarity of brands, delusion, right of publicity.
Parody 5 part test
Similarity of Products: goes to D
Strength/Type of trademark: normally strength of mark would be in favor of EPE, but here Velvet Elvis is a parody. – velvet meaning a cheap knockoff. Argument = velvet elvis is already a joke.
Similarity of Design between two marks: Elvis v. Velvet Elvis. Goes to D, not similar.
Defednant’s intent: in favor of D, did not intend to take over elvis’ brand at all,
Actual Confusion: Elvis fans checked out the club, but confusion didn’t last long.
Court: don’t advertise the Elvis name to draw people in, cant use photos of Elvis in ads, don’t use “Elvis has not left the building” Generally don’t use anything divorced from parody in the ads!
Delusion: the lessening of the capacity of a famous mark to identify a certain goods and services
Blurring and Garnishment arguments here
Right of Publicity (state law claim, under Texas law in this case)
What D did in violation of publicity laws: advertising using phrases related to Elvis. Ok to use velvet Elvis, but not “elvis left the building” (second phrase is attached to the persona of Elvis, because it is not parody,). Cant use Elvis has not left the building – because parody is not as obvious and it is a matter of context.
Arguments: for D: word Elvis is not a part of his persona, there are impersonators, a whole culture of Elvis.
For EPE: Elvis is associated with his persona
On appeal in 5th Circuit:
we have to make sure the USE of the mark is necessary for parody first, before applying the pardoy factors.
2 Distinctiveness Spectrum and Secondary Meaning
definition of a trademakr Lenham act section 47
The Disticntiveness Spectrum
Arbittrary/fanciful – sony, apple, delta – inherently distinctive (protected)
No link between name and product they identify
Suggestive – coopertone, sexy little things – inherently distinctive (protected)
Consumer must make an inferential leap to associate the mark with the description of the goods and services it represents
Descriptive – vision center – acquired distinctiveness (could be protected if acquire secondary meaning)
Describe product/service – crunchy, or realistic drawing for cookies
Marks that describe geog. Location from which goods emanate – California or the outline of the state California for almonds.
Person’s surname – Smith’s pluming services.
‘Appear’ to Describe marks – Best or First,
Generic – aspirin – no protection
Test to determine where the trademark is in the Spectrum
Imagination test
Competitiros need test
To what extent has it been used by others?
Abercomibe & Fitch v. Hunting World
P sold clothing under mark SAFARI. D did the same. P sued for infringement. Court: there are diff lvls of distinctiveness. After analysis, Safari as applied to types of clothing has become a generic term. Safari, on the other hand has not become generic as applied to boots or shoes. (it is either suggestive or merely descriptive).
Test: Suggestive or merely descriptive?
Dictionary if it is in it, its preliminary evidence of it being descriptive if it naturally directs attention to the purpose or function of product (so apple computers doesn’t c

the Abercrombie spectrum.
Holding: 3 dimensional stuff can be inherently distinctive, you don’t need secondary meaning. WalMart says: NO, 3d stuff can never be inherently distinctive. Walmart says _ product design always has to have secondary meaning, so what about 2 pesos? – walmart says this is different, it’s a tertium quid. (so oh crap, we decided wrong last time, so we have this fancy word to segregate that option). Things like the Mexican restaurant feel – can still be inherently distinctive, something diff. from product design.
Walmart Sotres v. Samara p107 (PRODUCT DESIGN IS NEVER INHERENTLY DISTINCTIVE, you need secodnary meaning)
Supreme court tries to provide clear guidance on how to evaluate trade dress. Issue: design for children’s clothing, should it be protectable? Court: product designs cannot EVER be inherently distinctive, you always MUST show secondary meaning.
Arguments against design being inherently distinctive
Threat of litigation is too great, too many people will give up and settle
No textual/statutory guidance, so we can decide however we want
Applying the Walmart Test
When in doubt RULE we can apply between Tertium Quid and 3d stuff design. When it is ambiguous – then consider product design and force a proof of secondary meaning in such situations.
In re Slokevegae (elements incorporated into the product are design elements, not packaging elements).Slokevage – our trade dress is NOT product design and does not fall under walmart. Ours can be inherently distinctive, even though Walmart was about clothing.
Court: secondary meaning required. Sense people by Slokevage because of what it looks like not who makes it.