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Intellectual Property
Temple University School of Law
Harris, Donald P.

Intro to Intellectual Property

Harris, Fall 2014


Basic Analysis:

Protectable Mark?—Requirements

use in commerce
any statutory bars?

Infringement?—Likelihood of Confusion


Passing Off—Theories of Protection

William R. Warner v. Eli Lily (U.S. 1924)—Quin-Coco/Coco-Quinine

descriptive mark—no trademark protection
court still upheld unlawful competition claim—“protection is accorded against unfair dealing whether there be a technical trademark or not”
the use of the formula is ok, the fraud comes from the passing off
Remedy: court requires clear labeling—cannot swap Rxs, etc..

Coco is a just ingredients of the medicine

Unfair Competition—Protects:

the first to use a name/brand/symbol in connection with the sale of goods or services against
another competitor whose subsequent use of the symbol
confuses, or is likely to confuse, consumes into believing that the first user, rather than the competitor, is the source of the goods/services

Policy—based on tort principles

consumer protection
producer incentive (unfair competition)
current trend: towards expansion of rights

Definition: Lanham Act § 45

The term “trademark” includes any word, name, symbol or device, or any combination thereof—

used by a person, or
which a person has a bona fide intention to use in commerce…to identify and distinguish his or her goods, and to indicate the source of goods, even if that source is unknown.


US Determine priority based on first to use

policy: prevent warehousing

other countries have first to register priority


Pre-1988 Revision Act

substantial use doctrine: for purposes of ownership and priority under state law, required substantial use in connection with goods/services in the market place.
for Federal Registration: token, noncommercial use was sufficient, even where it was evident that the token use was made exclusively for the purpose of obtaining registration (Standard Pressed Steel Co. v. Midwest Chrome Process)—Lanham Act has removed token use

registration constitutes constructive use throughout the entire nation (even if only actually used in one state) and if owned, ownership applies federally
a certificate of registration…shall be prima facie evidence of the validity of the registered mark… § 1057(b)

sales to customers are not the sine qua non of trademark use” one sale can be enough to establish trademark ownership.

Blue Bell Inc. v. Farah Mfg. Co (5th Cir. 1975).

FACTS – Farah sought to use an internal shipment of clothing bearing a trademark as a basis for a claimed first use of the mark.
HELD – An internal shipment of a product bearing a trademark may not form the basis of a first use of the mark.

“mere adoption of a mark without bona fide use, in an attempt to reserve it for the future, will not create trademark rights.”
token use -> registration v. ownership (PRE-1988 revision – internal use was sufficient for registration purposes but insufficient to determine ownership rights) POST-revision – no longer bright distinction bw use for registration and use for ownership

Revision Act: use in commerce—“the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark”

Factors of Bona Fide Use (in order of importance)

quantity and continuity of sale
consumer purchases
business of mark owner
quality control
a distinguishing mark
profit or lost
test market


Intent to Use § 1051(b)—allows registrar to file ITU, and if registrant completes use within statutory period, registration date acts as constructive use(§ 1057(c))for purposes of priority retroactively shifts to filing date of ITU, rather than final registration

can’t be used offensively to prevent someone from using the trademark, (because mark hasn’t been officially registered), but you can use it defensively so as not to be prevented from perfecting registration.

Warner Vision v. Empire of Carolina (2d Cir. 1996)

Empire intent to use à WV Actual Use à Empire Actual Use; WV injunction to prevent actual use by ITU was rejected, but Empire can’t enjoin WV use until its registration is perfected.
note: actual use by a party before ITU has superior priority
Lanham Act 1051(b)(1); 1051(d)(1) – Intent to Use provisions – file intent to use application, then receive notice of allowance and within six months have to file statement that mark is in use in commerce
analogous use—use analogous to use in commerce but not sufficient for use in commerce (e.g. advertising, promotion, research, etc…) will sometimes act in a similar way to an ITU, but depends on jurisdiction
realistically: 1988 amendments were meant to level the playing field for foreign trademark applicants—some countries allow registration without use

1) To ensure that the mark identifies a single source for goods or services, thus securing consumer expectations respecting source.

2) To ensure that competitors will be free to use descriptive terms to describe their own goods or services.

Types of Marks:

No Protection

No Protection without Secondary Meaning


iscontinued with intent not to resume such use”


no intent to resume use—intent inferred from circumstances
must be bona fide use
3 years non-use is prima facie abandonment

where conduct of the owner, including acts of omission causes marks to become generic

failure to police
licensing—naked licensing (no QC)

consequences: if a mark becomes generic, it is no one’s mark, if there is a finding of abandonment, any firm can adopt the mark as their own.


Deceptive Matter § 1052(a),(e)(1),(f)

Deceptive Test § 2(a)

is the term misdescriptive of the good or character, quality, function, composition or use of the goods

if no, then we have a descriptive mark that won’t be registered unless secondary meaning
if yes, then move to step 2

if so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

if no, then mark is arbitrary and protected (no need to show secondary meaning)
if yes, then move to the next step

if so, is the misdescription likely to affect the decision to purchase?

if no, then mark is deceptively misdescriptive, and won’t be registered unless secondary meaning
if yes, then mark is deceptive and won’t be protected

LOVEE LAMB is deceptive.

Deceptively Mis-descriptive Test § 2(e)(1)

if only has first two elements of deceptive test, but not 3rd prong, then the mark is deceptively misdescriptive
essentially distinguishes where untruths have no economic consequence
deceptively descriptive marks can acquire registration with secondary meaning; deceptive marks can never register. § 2(f)
Merely Descriptive: merely describes goods—is therefore incapable of being distinctive (acquiring secondary meaning)—Application of Sun Oil Co. (U.S. Patent 1970) finding that “custom-blended” for gasoline was so highly descriptive there was no secondary meaning; but case still turned on lack of secondary meaning, compared to Rich, concurring, who would find that when something is so highly descriptive (as are some words) it is therefore incapable of acquiring secondary meaning (no protection 3 way test )