INTRODUCTION
Hannover Star Milling v. Metcalf (purpose of TM)
The primary and proper function of a trademark is to identify the origin or ownership of the article to which it is affixed.
Champion Spark Plug (First Sale Doctrine)
Can resell the mark of another, and keep the mark on the re-sold product, so long as the article is clearly and distinctly sold as repaired or reconditioned rather than as new.
Doctrine of Exhaustion (Doctrine of first sale): owner of IP has privilege of making first sale or licensing of a product that embodies the property.
USE
P&G v. Johnson & Johnson
“The right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader, and to protect his goodwill against the sale of another’s product as his own.”
–so need to be distinctive, or capable of becoming distinctive, and ALSO be in use.
Lanham Act §45: The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.
This is the same as the old common law test to prove ownership.
CONCURRENT USE
CL Rule/Rectanus Rule – Remote Good Faith User Defense
Here, the court decides that since the 2nd user used the mark in good faith (without knowledge or notice of the senior user; minority is sinister intent), in a remote geographical area, and so the 1st user, despite being first in right, is estopped from establishing his mark, and loses his infringement case in Louisville; he is out of his territory. Territory trumps priority if good faith is present.
Lanham Act Rule/Thrifty
Lanham Act §22: Registration of a mark on the principal register provided by this chapter… shall be constructive notice of the registrant’s claim of ownership thereof. This seems to be removing the remote good faith user. This effectively gives the first registrant exclusive rights nation-wide. Even if the registrant only uses their mark in a limited area.
Use prior to application/registration: Limited Area exception: the right to use an otherwise infringing mark in a remote geographical area if that use was established prior to the other party’s federal registration
Use after application/registration, but before Incontestability: a court might, consistent with Lanham Act ‘ 2(d) concurrent use provisions, use equitable principles to divide the country up between the overall defendant (Sr. user) and the plaintiff (registrant).
Incontestability: Sr. user (non-registrant) is frozen in their respective geographic area as of the time of application (constructive use, Lanham Act 7(c)).
Dawn Donut Rule: Sr. User/first registrant cannot enjoin a remote user if there is no likelihood of confusion. But if they show that they will exand to that area then they can.
Registration
Use based registration.
· Use your mark in commerce and get rights in the mark through common-law, then register.
Intent to use
· Allege a bona fide intent to use the mark.
· Mark must be inherently distinctive, cant register a descriptive mark w/o secondary meaning.
· The trademark office examines the application, and after the trademark office issues an allowance, you have a significant amount of time to commence use.
· When you do, you file an affidavit of use, and your registration of use.
· You don’t get registration until you make a use. But then notice is as of application date.
Registering foreign marks
· Foreign owner is entitled to the same process that domestic users get.
· Foreign owners also have an additional option.
· Lanham Act § 44(e); “pelle telle” registration
o Based on earlier registration in its country of origin.
o The international treaties say registration in your home country entitles you to register in all the other member countries, unless
§ Someone already owns the mark in the country where registration is sought
§ The mark is generic
§ The mark is descriptive and lacks secondary meaning
§ The mark
ion of your identity for your own benefit
Mohawk (Falsely suggesting a connection)
1) the mark must be he same or close to the name of the institution or person
-Yes this factor is satisfied. The name Mohawk is the same as the tribe.
2) the mark must clearly point only to that person or institution
-Here this is not so sure, Mohawk hair-do, Mohawk airplane, other uses of Mohawk. Still the court says that it clearly points only to the Mohawk tribe, because all of these other examples also point back only to the Mohawk tribe.
3) the person or institution must not be connected with the product or service sold under the mark.
-person selling the cigarettes is a member of the Mohawk tribe, and she has a license to sell the Mohawk cigarettes. The court doesn’t necessarily agree, because there is more than 1 person from that tribe, and the whole tribe might not agree. The license was very generic, and wasn’t given much weight.
4) the person or institution must be sufficiently famous that consumers would presume a connection.
-Yes they are sufficiently famous, and there are plenty of Indian tobacco producers, that consumers would assume that Mohawk cigarettes were in reference to the tribe.
CONFUSION
· The most common ground for rejecting a mark, opposing a mark, or cancelling a mark.
Lanham Act §2(d): no trademark may be registered if… a mark that was in previous use, or trade name in previous use (doesn’t have to be registered), was such that the prior user obtained rights prior to the applicant, and the prior user has continued use, and is the applicants new use likely to cause confusion.
