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Trademark
University of Connecticut School of Law
McLean, Willajeanne F.

Trademark McLean Spring 2018

Intro

Hanover Star Milling Co. v. Metcalf

SCOTUS 1916

Facts

P manufactures flour in Illinois
Sues D, who sells flour in Alabama, for Trademark infringement
P sold “Tea Rose” flour for over 27 years with distinctive wrapping
D used same 3 rose design and same name in order to allegedly deceive
D denied complaint and that Tea Rose and the design should not be exclusive
District court ordered D to stop selling its own Tea Rose, but Ct of appeals reversed
There was a firm that used this name as well, but P says it did not know about this
The tea rose flour is extremely profitable
D gets its own Tea Rose flour from a different mill in Illinois called Steeleville Milling Co
None of the parties had registered the trademark so this must be decided on common law grounds
P contends that it was the first one to sell Tea Rose flour with the design in the southern territory and therefore has a right to the trademark and can receive damages from D

Hold

Trademark here is intended to maintain goodwill – but can only be protected within the market that it is known – geographical
D is estopped from asserting trademark infringement as to that territory

Notes

If you have bona fide use in separate markets with the same mark – there is no priority
Even though there is likelihood of confusion, we are going to allow the marks to exist because of both are made and marketed in good faith –

They werent trying to free ride
They did a search to see if they were infringing and did not find anything

How to define a market that a product is known

Where it is sold, where it is marketed, where it could logically expand to

Mishawaka Rubber (1942)

“The aims of trademarks is the same – to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears… If another poaches upon the commerical magnetism of the symbol he has created, the owner can obtain legal redress.”

Yale Electric Corp.

“The law of unfair trade comes down very nearly to this … that one merchant shall not divert customers from another by representing what he sells as emanating from the second.”
The rest of this blurb on the case is also terrific

International News Service v. Associated Press

United States Supreme Court

248 U.S. 215 (1918)

Rule of Law

A quasi-property right exists in published news such that appropriating the published news gathered by another for further commercial purposes constitutes unfair competition in trade.

Facts

Associated Press (AP) (plaintiff) is a news gathering service which serves 900 newspapers throughout the United States on an annual operating budget of $3,500,000.
International News Service (INS) (defendant) is the chief competitor news service to AP. INS services 400 newspapers on a budget of $2,000,000.
AP brought suit against INS seeking an injunction prohibiting INS from pirating AP’s news.

Specifically, AP alleged INS was bribing its members to furnish AP news to INS so it could then publish the news to its own clients.
Additionally, AP alleged INS induced its employees to ignore company by-laws and provide news to INS before publication.
Finally, AP alleged INS copied news from bulletin boards and early editions of its newspapers, and then sold the news to its own customers.

Bulletin

At trial, AP presented evidence that INS took news published by AP on its bulletin boards on the East Coast, and took advantage of the time difference, combined with telephonic and telegraphic technology, to sell the news as its own to its West Coast customers.
The trial court granted a preliminary injunction to AP on its first and second allegations against INS. However, it refused to grant an injunction restraining INS’s practice of stealing news from AP’s bulletin boards and early editions.
The appellate court sustained the injunction and extended it to include AP’s third allegation. The United States Supreme Court granted certiorari.

Issue

Whether a continuing property right exists in published news such that appropriating the published news gathered by another for further commercial purposes constitutes unfair competition in trade.

Holding and Reasoning (Pitney, J.)

Yes. INS is liable for unfair competition because it interfered with AP’s quasi-property right in selling its gathered news.
The decision of the appellate court granting an injunction against INS’s practice is affirmed.
A quasi-property right exists in published news such that appropriating the published news gathered by another for further commercial purposes constitutes unfair competition in trade.
While there is no continuing property right against the public in uncopyrighted news matter after it is initially published, a commercial news source does retain rights to the material against other news sources.
Competitor news sources owe each other a duty to conduct their own business in a manner that will not unnecessarily or unfairly injure the business of others.
When INS takes news gathered and published by AP on a bulletin board and sells it to its own customers without putting in the same level of time, money, and production skill as AP, INS engages in an unauthorized interference with the normal operation of AP’s legitimate business interest.
This unauthorized interference is particularly harmful to AP because it occurs at the exact point in the chain of business where AP would make a profit—the act of selling gathered news to consumers.
By taking news gathered by AP and selling it as its own, INS gains a commercial advantage over AP in that it is able to offer its customers an identical product without having to put in the same time, labor, and money to produce it.
The right to exclusively sell news one has gathered through its own time, labor, and money is a quasi-property right, and interference with this right constitutes actionable unfair competition.
INS is liable for unfair competition because it interfered with AP’s quasi-property right in selling its gathered news. The decision of the appellate court granting an injunction against INS’s practice is affirmed.
Remedy: Injunctive relief until the commercial value to the news of the complainant has dissipated

Dissent (Brandeis, J.)

Under general public policy principles, once knowledge or communications have been expressed to the general public, the originator loses any property right he or she may have had in the knowledge or communications.
The knowledge and communication cease to be considered “property,” as they can no longer be owned and protected by the originator.
As such, they also cannot be appropriated by another in unfair competition in trade.
When AP published its news on a public bulletin, it gave up its property right in the news matter. Thus, INS cannot be liable for unfair competition by taking and selling this news matter to its own customers. This result is necessary as a matter of public policy.

Notes:

Unfair compeittion standing in a lieu for a copyright as a right against other competitiors rather than right against the world
Pitney is following Locke’s theory of labor – equity, fairness
For Holmes’ dissent there is a right in the reputation

A common law right in one’s reputation
Following the personality theory
His injuction is that INS had to give AP credit

Brandeis thinks this rule should be gone through the legislature rather than through the courts because it is a policy issue

Following the utilitarian theory
Doesn’t like injuctive relief, wants damages and wants this to be addressed through the legislature

Elvis Presley Enterprises, Inc. v. Capece

5th cir. 1998

Facts

Court is investigating likeliehood of confusion

The type of the TM: the court thought the Elvis brand was a strong trademark but did not rule in favor of EPE. The court said that the strength of the brand does not cancel in faovor of EPE because of parodies are legal. The term velvet Elvis had a certain type of meaning (60s retro). The court found velvet Elvis to be a parody
Similarities of the service: the court found there was much difference b/w the two services. The restaurant at Graceland was a family oriented restaurant, while Ds mark was the name of a night club, and the court ruled for Capece.
Similarity of the mark: the court found that the phrase velvet Elvis was different enough from Elvis. The court analyzed term velvet Elvis as a whole rather than splitting it into elements which would have been presumably more favorable to EPE.
Intent: The court found Capece did not intend to trade off the velvet Elvis brand because it was a parody (making fun of the 60s club scene).
Actual Confusion: the most important facor: the court did not find any evidence of actual confsion even with the two marks co-existing

Hold

The only thing the court ordered D to change were their advertisements and held that Ps infringement complaint was without merit.
The court also held that there was no evidence of dilution or tarnishment
The court holds that they do violate Ps rights of publicity with their mentions to Elvis as a celebrity (most of it in their ads)
But D is permitted to use the service mark VELVET ELVIS and the menu items per the first amendment as they are a clear attempt at humor

Notes

P is alleging trademark infringement , dilution, common law trademark

P used the Lanham Act AND common law
Using Elvis’s name and likeness, images,

The court uses factors to evaluate the infringement. (7 factors)

Type of trademark alleged

Strength of the trademark
The defendants concede that it is an internationally recognized mark, and therefore, very strong.

Similarity of the design of the marks
Similarity of the products or services

P was considering opening up a club but did not. The greater the similarity, the greater the likelihood of confusion

The identity of the retail outlets and purchasers
The identity of the advertising medium utilized

The court said that the ads did have too much of Elvis, but D had already ceased using him

Intent of D
Evidence of actual confusion

Could not find any evidence of actual confusion
Actual confusion is not necessary to have but it is a cherry on top if it can be proven
Absence of confusion, however, after a long period of concurrent use, will make it hard to prove a likelihood of confusion
Consumers said once they walked into the bar they knew it did not have to do with Elvis himself

Distinctiveness

Abercrombie v. Hunting World

2d Cir 1976

Facts

P sold various items of clothering under the mark SA

ing FOR fish fry and should be able to advertise for it

Generic Terms

In re Cardua Restaurants

The mark CHURRASCOS was held to be generic and denied protection

Appellant owns and operates 5 restaurants called “Churrascos” with “Churrasco steak” as a signature dish
Ruled to be generic by the TTAB because it ids a key character of the restaurant services, namely, the type of restaurant
The review board, on appeal, says the correct question to ask is not whether “churrascos” is generic as applied to Cordua’s own restuarnants but rather whether the term is understood by the restaurant-going public to refer to the wider genus of restaurant services.
Churrasco is the generic term for a type of cooked meat
The examiner in this case rightfully used the english translation of churrasco, barbeque, to see if it was generic – “a foreign equivalent of a generic English word is no more registrable than the eEnglish word itself”

Although they did not rely on this

Cordua argues the addition of the “s” at the end of the word makes the term non-generic, but pluralization commonly does not alter the meaning of a mark.
“Any term that the relecant public understands to refer to the genus … is generic” (1800mattress.com)
Cordua also fails in their argument that churrascos is not generic when it refers to all restaurant services, much the term pizzeria is generic

The results would have been different if Churrascos was the name of a sushi restaurant

Notes

Just because you have a TM and apply for one just like it does not mean you will get a similar one
The doctrine of foreign equivalence

If a word that is commonly used in another country as the generic name of a product cannot be imported to the US and transformed into a mark

It makes a difference even if the term is generic in a foreign language

Filipino yellow pages v. asian journal pubs.

9th Cir. 1999

Facts

P published a directory called Filipino Yellow pages, and D published the Consumer Filipino Registry, both competing with each other in the CA market.
D sometimes used the term “Filipono Consumer Yellow Pages” and P sued for trademark infringement and unfair competition.
D moved for SJ saying it was generic and P said it was descriptive and aquired secondary meaning.

Hold

Burden is on D for proving genericness IF registered, but it is not so burden is on P

B/C registered marks have prima facie evidence of validity

“who are you/ what are you” test

A generic name answers the what are you question

“Surgicenter”

This mark was ruled generic because it combined two generic terms describing what the service was – surgery and center

BUT the court will not always hold that a combination of multiple generic terms is ALWAYS generic
Court in this case placed a lot of weight on dictionary def.

In this case, the district court said “Filipino Yellow Pages” did not “deviate from natural usage” nor was it an “unusual unitary combination”
Because the burden is on the P here, they did not offer enough evidence to prove that it is not generic.
Affirmed

Notes

If the term answers the question “who are you” / “from where do you come” – it is a mark
If the term answers the question “what are you” then it is generic
Its all about how the term is understood by the public

Mil-Mar Shoe v. Shonac

7th Cir. 1996

Facts

P owns a chain of stores called “warehouse Shoes” and sought an injunction to refrain D to use the name “DSW Shoe Warehouse”

Hold

The court looks to the dictionary for def. of warehouse . P refutes it on the basis that the term warehouse as a retail store is more common in Britain than America, but D offers enough evidence to rebut the claim.
The court also looks to Miller Lite case

Just because a mark may not mean the primary definition of the word, it doesn’t mean it is free from genericness.

Significant use of a term by competitors in the industry has also traditionally seen recognized, along with dictionary evidence, as indicating genericness
The court does however, leave open the possibility that changing the order of terms in a name or phrase may make the difference b/w genericness and trademark potential.