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Trademarks and Unfair Competition
SUNY Buffalo Law School
Bartholomew, Mark

Trademarks and Unfair Competition
Professor Bartholomew, Fall 2009

Chapter 1 – Intro to Trademark and Unfair Competition Law

A. Sources and Nature of Trademark Rights

The Trade-Mark Cases, USC (1879).
-Three cases stem from criminal prosecutions for violations of Congress’ trademark legislation
I: Are the acts of Congress on the subject of trademarks founded on any rightful authority in the Constitution? à historically State law regulation
-Recent origin, 1870, provide for the registration in the Patent Office of any device in the nature of a trademark to which any person has by usage established an exclusive right, or which the person so registering intends to appropriate by that act to his exclusive use; and they make the wrongful use of a trademark, so registered, by any other person, without the owner’s permission, a cause of action in a civil suit for damages
-New act in 1876 providing for fine and imprisonment
-Trademarks have held a long recognized right in common law
-Property in trademarks and the right to their exclusive use rest on the laws of the States
-Congress’ power to legislate trademarks must come from the Constitution either 1., § 8 of Article I (IP Clause), “to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries” and the or 2. Commerce Clause
-1.Reading trademarks into inventions and discoveries is wrought with “insurmountable difficulties”
-Writings to be protected are the fruits of intellectual labor
-Trademarks are accidental rather than by design
-2. Every species of property which is the subject of commerce, or which is used or even essential in commerce, is not brought by the Commerce Clause w/in the control of Congress
-Both acts are unconstitutional

Hanover Star Milling Co. v. Metcalf, USC (1916).
-Trademark cases are based upon the party’s right to be protected in the good will of a trade or biz, not the subject of property
-The primary function of a trademark is to identify the origin or ownership of the article to which it is affixed
-Trademark law is part of broader unfair competition law
-Property rights, grow out of use not mere adoption

Mishawaka Rubber & Woolen Mfg. Co. V. S.S. Kresge Co., USC (1942).
-Trademarks of psychological, lead us to what we want or believe we want

Yale Electric Corp. v. Robertson, 2d Cir. (1928).
-One merchant shall not divert customers from another by representing what he sells as emanating from the second
-Trademarks acts as authentic seals

Prestonettes, Inc. v. Coty, USC (1924).
-Trademarks do not confer the right to prohibit the use of the word or words, they are not copyrights
-Not a “naked right…to prohibit the defendant from making even a collateral reference to the owner’s mark”


Lanham Act extended federal trademark protection only to marks used in interstate commerce

Trademark Law Revision Act of 1988 – substantially revised trademark registration procedures
1995 – Congress created a federal cause of action for trademark dilution

Registration is an important part of trademark law, but trademarks may exist w/out registration
Copyrights – initially attached to maps, charts, and books, but now extends to “original works of authorship fixed in a tangible medium of expression” à originality std is very low

Protection only extends to expression, not ideas
Life of the author plus 70 yrs
When the work is created by an employee w/in his scope of employment, the employer is treated as the author

Patents – granted to the inventor of innovative technology

Lasts 20 yrs from the date of the filing
Patents are more exclusive à must show that the invention is novel, nonobvious, and useful as well as comply w/ statutory disclosure req’s
Rights granted to successful patentee are far broader, determined by the type of invention claimed in the patent à great capacity to affect the rights the patentee acquires through phrasing the claim favorably




What can be protected?

Authored original

Useful & nonobvious

Capable of distinguishing goods or services

What is excluded?

Ideas and facts

Abstract ideas, products of nature

Marks that are not distinctive,
Functional mark/design

How are rights acquired?

Fixation in a tangible medium of expression (i.e. see or hear)


Use in commerce

How long do rights last?

Life + 70 years

20 years


How far do the rights extend?

Exclusive right to make copies

Prohibition on making/selling/using invention

Prohibition on other uses that are confusing

B. The Nature of Unfair Competition Law

International News Service v. Associated Press, USC (1918).
Rule: publication for profit of news obtained from other news gathering enterprises is a misappropriation of a property right à “Hot News” Exception

AP sought injunction against INS for reselling its stories as they became available over the wire. The nature of the business did not allow copyrighting; however, the actions of the defendant took economic value from the P so news becomes quasi property. In a competing environment, you cannot appropriate other’s property for economic purposes. It is unfair competition in trade.

Dastar Corp. v. Twentieth Century Fox Film Corp., USC (2003).
-Lanham Act was intended to make actionable the deceptive and misleading use of marks and to protect persons engaged in commerce against unfair competition
-§43(a) created a federal remedy against a person who used in commerce either a false designation of origin, or any false description or representation in connection with any goods or services
-does not have boundless application as a remedy


INS is rarely invoked
Most cases labeled unfair competition are in fact actions for infringement of unregistered marks brought under §43(a)

C. Purposes (Rationales) of Trademark Law/Protection
· To protect the public and maintain confidence in purchasing legitimate products (consumer efficiency)
· To protect the owner’s (company’s) time and money in presenting the product to the public
· Trademarks are multivalent
· Trademarks can be industry specific, i.e. Delta – airline, faucets & sinks, gas station/car washes, and fast food chains
· Strike a balance between protecting investments and promoting competition

Trademarks and Competition; The Recent History, Daniel M. McClure (1996).
-Economic theory of trademark protection stemming from the Chicago School to trademarks
-Judges Easterbrook and Posner

D. Modern Marketing and Trademark Law

New ways to promote products through advertisements and product placement

Dilution Redefined for the Year 2002, Jerre B. Swann (2002).
-Shift from producers to consumers
-Information age has made brands the most

se Elvis memorabilia
– Defined as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”
-Dilution can be shown in two ways, blurring or tarnishment

Blurring – gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods
Tarnishment – when a P’s trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner’s product

-Court held the tacky décor and nude images of women do not inspire negative or unsavory images of Elvis, used for the purpose of mocking the tasteless décor of the 60’s
-Two separate groups of customers that the parties catered to
Right of Publicity (State Claim, Texas)
-A prima facie case requires proof that (1) the D has appropriated another’s identity and (2) is using it for trade or commercial benefit.
-Menu items did not violate the right, “the plaintiff must clearly identifiable from use of the item or phrase in question”
-D’s ads were an unlawful appropriation

On appeal, 5th Cir. stated that this wasn’t even an issue of parody, images invoked the velvet era of the 60’s.

“As an irrelevant factor, parody does not weigh against or in favor of a likelihood of confusion, and the district court erred in relying upon parody in its determination of the likelihood of confusion.”


Decisions on validity and infringement concentrate heavily on the facts of a particular case à lots of room for judicial discretion
U.S. Patent and Trademark Office (PTO) has original jurisdiction over applications for a federal trademark

If dissatisfied with trademark examiner’s decision, the applicant can appeal to the Trademark Trial and Appeal Board (TTAB)

If dissatisfied with TTAB’s decision, the applicant can either, appeal to the Court of Appeals for the Federal Circuit (CAFC) or bring an action in district court

Chapter 2 – Distinctiveness

Restatement (3rd) of Unfair Competition, § 9
Trademark – “a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others. A service mark is a trademark that is used in connection with services.”

Latham Act, § 45

Defines trademark and service mark
Trade name and commercial name mean any name used by a person to identify his or her biz or vocation

The Spectrum of Distinctiveness

Abercrombie & Fitch Co. v. Hunting World, Inc., 2nd Cir. (1976).
-P sold clothing under mark of SAFARI, D marketed rival clothing under marks that used SAFARI alone or combined with other words
-Lanham Act identifies four different categories of terms w/ respect to trademark protection:
1. Generic
2. Descriptive
3. Suggestive
4. Arbitrary or fanciful