Trademark Durham Spring 2016
Notes Outline
Unfair Competition
interest of the marketplace influence what the law should be if what you are doing is ordinary business
malice will not transform it into a tort spite houses/fences
built to irritate neighbors by blocking their view malice can transform it into an actionable tort
modern day we would probably look at anti-trust doctrine protecting competition
Tuttle v. Buck
Rich banker has a personal feud with a barber so the banker sets up his own barbershop for the sole purpose of driving the barber out of business
to divert to one’s self the customers of a business rival by the offer of goods at lower prices is in general a legitimate mode of serving one’s own interests and is justifiable as fair competition
exception:
if he only does it to accomplish a malevolent purpose
sole purpose of driving his competition out of business regardless of loss to himself
Sorenson v. Chevy
Sander wants to take the Chevy business away from Sorenson so he convinces Chevy to breach the contract with Sorenson and make a new one with him
the right of competition is not the right to destroy contractual rights
the desire to compete is not an excuse for any other act that is deemed unlawful you can forbid certain actions on the ground of unfair competition as outside the bounds of what competitors should do
looking at what the competitor did
courts do still seem to think there is some kind of catch-all provision against shark practices
you hope they are looking at the interest of consumers
INS v. AP
INS bribed employees to give up AP’s news stories
majority is concerned with taking advantage of the effort and expense that AP went through
harvest metaphor
reaping what you did not sow (free riding) balancing property rights and right to free speech and communication
it is like INS is selling AP’s news as its own passing off
at the core of unfair competition selling fake Nikes
taking advantage of their good work
Appropriation of Ideas
Columbia Broadcasting v. DeCosta
Plaintiff claimed that he created, and the defendants misappropriated, the character of Paladin (a western personality)
“passing off”: appropriation not of the creation but of the value attached to it by public association, called “secondary meaning”
DeCosta v. Columbia Broadcasting
Slogan, together with a knight chess piece, and Paladin used in his calling card constituted his distinctive common law service mark which defendants intentionally infringed, appropriating the goodwill created by plaintiff, causing him financial damages
Personal Names
D&W Food v. Graham
plaintiff owns 6 drive in restaurant chains named “Mel’s” defendant named melburn opens a “Mel’s”
a person may not be enjoined from using his own name in his business provided he is not guilty of fraud or deceit
Taylor Wine v. Bully Hill Vineyards
grandson of Walter Taylor wants to start selling wine under the Taylor name after his grandfather already sold off a vineyard
doesn’t matter who’s wine is actually better
the court can put disclaimers and limitations on use
once an individual’s name has acquired a secondary meaning in the marketplace the later competitor has to take reasonable precautions to prevent mistake
Levitt Corp v. Levitt
Levitt founded a company (levitt and sons) and sold it under his name, then opens a competing business with his same name
what he sold off was the goodwill associated with the name so he can keep using it without a disclaimer
courts are less sympathetic when a defendant sold their name he went out of line
No Trademarks For
§2 Entitled to a trademark unless:
a – deceptive, scandalous, disparage or falsely suggest a connection with a person (living or dead) or institution
c – consists of a name, portrait, or signature identifying a particular living individual without their written consent
has to point unambiguously at a particular individual d – likelihood of confusion
e – consist of a mark that is:
– merely descriptive or deceptively misdescriptive when used in connection with the goods
– primarily geographically descriptive
– primarily geographically deceptively misdescriptive federal circuit criteria:
– term generally known as a place
– there is a goods/place association
– the mistake is material to their purchasing decision 5 – as a whole is functional
f – exception to §2 with secondary meaning
doesn’t not include a, b, c, d, e(3), e(5)
Deceptive Marks
Tanner’s Council v. Samsonite
Tanners council wants “softhide” canceled from the supplemental register for imitation leather
the registered mark is deceptive because there is no defensible reason to call this “hide” other than to try and deceive people
focused on what the consumer believes about the product
the term must at a very least must have a tendency to deceive or have the effect of deceiving the average purchaser of the goods in connection with which the mark is used
In re Robert Simmons
“white sable” brushes used for artistic painting made with synthetic bristles rather than hairs from a sable
this is not a deceptive mark
average purchaser would not expect that the bristles were from a sable animal
“sable” when used in connection with paint brushes does not literally mean a brush with bristles from the hair of a sable animal
must convey some information about the character, quality, function, composition, or use of the goods that the customer may reasonable rely on
Gold Seal v. Weeks
want to register “glass wax” for a metal and glass cleaner deception
1 – essent
Haydel Enters.
mardi gras “krewes” throw strands of plastic beads, people that catch them turn them into bead dogs by twisting them up
Haydel uses this as their mascot and makes jewelry in the shape
market definition
marks are measured with reference to the market in which they are used
seabrook foods test
1-3 are asking whether the design is unique, unusual, or unexpected in this market
– whether it was a common basic shape or design
– whether it was unique or unusual in a particular field
– whether it was a mere refinement of a commonly adopted and well- known form
– whether it was capable of creating a commercial impression distinct from the accompanying words
Geographic Terms
can be saved by secondary meaning
they used to just look at a map and if the name existed it was geographic but that doesn’t really work because there is even an Exxon in Siberia
Canal Co v. Clark
Delaware and Hudson Canal Company exports coal from the valley as “lackawanna coal”
can’t get a trade-mark for geographic names
this is in fact coal from the lackawanna region
In re Charles v. Loeb Pipes
“old dominion” was rejected because it was geographical since it is the nickname of Virginia
the name is either primarily geographically descriptive or primarily geographically deceptively misdescriptive
if from VA, primarily geographically descriptive
would need secondary meaning
if not from VA, primarily geographically deceptively misdescriptive Geographically Deceptive Marks
In re California Innovations
canadian based corporation wants to trademark the name “california innovations”
geographic deception should be dealt with in (e)(3) not (a) federal circuit criteria
– term generally known as a place
– there is a goods/place association
– the mistake is material to their purchasing decision
In re Consolidated Specialty Restaurants
indiana corporation wants to register a mark for “colorado steakhouse” there are no colorado steaks served in applicant’s steakhouses
In re California test
primary significant of the composite mark “colorado steakhouse” is a generally known geographic location
2nd prong still operates for services
state of colorado is known for its steaks
people might think that a “colorado steakhouse” serves colorado steaks
