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Intellectual Property
University of Pennsylvania School of Law
Wagner, R. Polk

 
Intro to Intellectual Property
Wagner
Spring 2015
 
Trademarks
*Stronger the mark, stronger the protection; but, isn’t this counterintuitive?*
 
o    (1) Trademark Infringement (consumer confusion)
§   (a) Protectable mark
·          (i) Subject Matter
o    Types
§   Trademarks; Service marks; Certification marks; Collective Marks;
§   Trade Dress
·          Product Packaging – may be inherently distinctive
·          Product Design – must have secondary meaning
·          Business Appearance
·          Ambiguous Trade Dress
o    Limitations
§   Trade name – not registrable
§   Scandalous or immoral marks; Disparaging Marks; False suggestion of connection with persons (living or dead), institutions, belief, or national symbols; Deceptive marks; Marks in Prior Use;
§   Marks comprising any matter that, as a whole, is FUNCTIONAL.
§   Surnames – primarily merely a surname?
§   Geographic
·          Primarily geographically misdescriptive (e.g. Idaho potatoes on a pair of sweatpants. Sweatpants have nothing to do with either). Want it to look arbitrary/fanciful
·          Primarily geographically descriptive (e.g. Idaho potatoes for potatoes from Idaho) – SM
·          Primarily geographically deceptively misdescriptive (e.g. Idaho potatoes, but actually grown in Wisconsin) – NOT REGISTRABLE
·          (ii) Distinctiveness
o    Inherently Distinctive
§   Arbitrary (strong mark) – Apple
§   Fanciful (strong mark) – Xerox
§   Suggestive (less strong mark) – Microsoft
o    Acquired Secondary Meaning
§   Descriptive (not strong mark) – AmericanAirlines
§   Generic – NOT REGISTRABLE
·          (iii) Priority
o    TM must be either (1) used in commerce or (2) registered with a bona fide intention to use (rebuttable presumption)
§   (b) Ownership
§   (c) Confusion
·          Types of Goods
o    Unrelated goods – unlikely to find confusion
o    Related and Competitive – likely to find confusion
o    Related and non-competitive (diff submarkets) – Sleekcraft factors “likelihood of confusion” analysis
§   (1) Strength of the Mark
§   (2) Proximity of the Goods
§   (3) Similarity of the Mark
§   (4) Evidence of Actual Confusion
§   (5) Marketing Channels Used
§   (6) Type of Goods and Degree of Care Exercised by the Purchaser
§   (7) ∆’s Intent in Selecting the Mark
§   (8) Likelihood of Expansion of the Product Lines
·          Types of Confusion
o    Source Confusion
o    Initial Interest Confusion
o    Implied endorsement/sponsorship
o    Post-sale Confusion
o    Reverse Confusion
o    (2) Dilution
§   competing mark harms the communicative capacity of the original mark
o    (1) famous mark
o    (2) distinctive
o    (3) use of junior mark in commerce begins after senior mark becomes famous
§   e.g. use of a domain name for a commercial website constitutes use in commerce
o    (4) use must dilute distinctive quality of the senior mark.
§   blurring
§   tarnishment
o    (3) False designation of origin
o    (4) False advertising
o    (5) Anti-cybersquatting Act
 
Defenses to Trademark Infringement
·          Genericness
·          Functionality
·          Abandonment
·          Fair Use – nominative use. Who’s your favorite New Kids on the Block member?
o    (1) Product or service in question is not readily identifiable without use of the mark
o    (2) Used as reasonably necessary to identify the product or service
o    (3) User cannot suggest sponsorship or endorsement of the trademark
 
TRADEMARKS (LONG FORM OUTLINE)
Trademark: a word, name, symbol, device [corporate/product names, image, sound, color, fragrance] or any combination thereof…to distinguish goods from others and indicate source (e.g. Coca-Cola)                                                                                                    
NOT INCLUDED: Trade names – IDs companies, not products. No traditional federal TM protection available to trade names (state law might provide remedies)
Rationales – SOURCE IDENTIFYING FUNCTION
·          not based on an incentive to create
·          Reduce consumer search costs when difficult to inspect product quality before purchase; if consumers cannot distinguish sellers à increased transaction costs, confusion/deception
·          Encourage producer investment in:
o    the creation of the TM
o    advertising/promotion of the TM’s product
o    TM product quality to develop a good reputation
·          Advertising à signals product quality + builds consumer goodwill w/company à reinforces TM strength à only rational to adv. if can prevent others from interfering w/deceptive signals.
Costs of trademark
·          Competition costs: gives (limited) monopoly to a brand name
·          Brand name allows higher prices than generic brands even if no real difference (e.g. drugs)
·          Cost of creation/maintenance of TM (advertising)
·          Protection and litigation costs
·          Reduced freedom of expression (tension with First Amendment)
·          May reduce quality when brand name gets powerful enough
 
Trademark Registration with the PTO
·          Registration
o    Mark owners have the option to register marks on the Principal Register.
§   not a prereq. to TM protection.
o    Application Type 1 – Use TM. person has already satisfied use in trade and use in commerce reqs.
o    Application Type 2 – Intent to Use TM: can register w/bona fide intent to use à owner then gets 6 months [3 yrs?] to use in commerce à owner gets nationwide priority based on original filing date.
o    Priority: if someone else tries to use the same/similar mark at the same time, the first registrant has priority to the mark.
o    Benefits of Registration on Principal Register
§   prima facie evid. of validity of the mark.
§   Nationwide constructive use and notice. §1057(b).
·          Constructive use: registrant can assert priority over persons who make first use of the mark after the registrant’s application filing date.
§   Constructive claim of ownership of the mark and exclusive right to use it in connection with the goods/services specified in the certificate. §1072.
§   Federal causes of action in federal court w/o regard to diversity/min AIC.
§   Gives TM protection abroad – can’t register for a TM internationally unless you’ve already done so domestically
§   Incontestable after 5 yrs. §1065.
o    Supplemental Register
§   marks that identify sources of goods or services but lack distinctiveness and thus do not meet the requirement of registration on the principal register (e.g. descriptive marks)
§   Rationale: allow registration of TMs from foreign countries that may not meet (the higher) standards for protection in the US. helps registrants with obtaining foreign registration.
§   Requires only that the mark be capable of distinguishing goods or services. Do not need to prove actual functioning in that capacity. Some marks on this register may still have acquired distinctiveness
§   Not available for clearly generic names
§   Available for trade dress
§   Paris Convention: foreign registration cannot be granted in the absence of domestic registration. US signed a treaty saying that it would provide a
·          TM system in line with the rest of the world, but it’s harder to get a TM in the US because of the 1st Amendment.
§   No substantive rights beyond common law:
§   No evidentiary effects, constructive notice of ownership, cannot become incontestable, cannot be used as a basis to prevent importation of infringing goods by the treasury department
·          Opposition
o    Anyone who believes he would be damaged by the registration of a mark on the principal register can file an opposition w/in 30 days after publication of the mark sought to be registered, stating why he believes the mark should be rejected. §13(a) Lanham Act.
o    An opposing party has burden of proof to show that it:
§   (1) Standing: is likely to be damaged by the registration of the applicant’s mark
§   (2) STATUTORY GROUNDS: has valid legal grounds for why the applicant is not entitled to register its claimed mark
o    Typically use Lanham § 2(d): prohibits registration where applicant’s mark so resembles either (1) the opposer’s registered mark; or (2) the opposer’s common law mark/trade name, as to be likely to cause confusion.
·          Cancellation
o    after registration of a mark, parties who believe they are damaged by registration can bring cancellation under §1064. Potential claims depend on timing. § 18 Lanham Act.
§   < 5 yrs: any grounds for cancellation can be claimed §   > 5 yrs: cannot bring claim that the mark is merely descriptive or confusingly similar to a prior mark.
·          May allege mark is generic, functional, abandoned, registered fraudulently, immoral or scandalous.
o    Challenged inter partes, heard by TM Trial and Appeal Board (TTAB). If it’s cancelled, the mark might still have common law rights.
 
Lanham Act
·          “Any person…USES in COMMERCE any word, term, name, symbol or device which (A) is likely to cause confusion…shall be liable in a civil action.” Lanham Act. 15 USC §1125(a)
·          Commerce Clause power
·          Five Causes of Action
o    Trademark infringement
o    Dilution
o    False designation of origin
o    False advertising
o    Anti-cybersquatting Act
§   (1) Federal TM suit
§   (2) Anti-Cybersquatting Protection Act
§   (3) The Uniform Domain-Name Dispute Resolution (UDRP), ICANN
 
Infringement
·          ELEMENTS
o    (1) [PROTECTABLE]: it has valid/legally protectable mark;
§   Subject Matter – TMs, Service Marks, Certification, Collective
§   Distinctiveness – inherently distinctive (arbitrary/fanciful or suggestive); OR secondary meaning (descriptive/generic)
§   Priority – mark must be used in commerce or registered w/bona fide intention to use it in commerce.
o    (2) [OWNERSHIP] owns the mark; and
o    (3) [CONFUSION] Δ’s use of the mark causes likelihood of confusion
§   [1] Unrelated goods – confusion is unlikely; no infringement
§   [2] Related and Competitive Goods – sufficiently similar so confusion is expected; infringement
§   [3] Related and Non-Competitive Goods – goods are so related consumers might think products came from same source if sold under same mark.
·          Sleekcraft factors analysis
§   Types of Confusion
·          Source Confusion v Initial Interest Confusion v Implied endorsement/sponsorship v Post-sale Confusion v Reverse Confusion v Dilution
·          DEFENSES
o    Fair Use
o    Genericness
o    Abandonment
o    Functionality
 
Protectable Mark
·         [1] Subject Matter
o    Four kinds of protectable marks. Lanham Act §45, 15 U.S.C §1127
§   [1] Trademarks – a word, name, symbol, device, or any combination thereof, which is used to distinguish the goods of one person from goods manufactured or sold by others, and to indicate the source of the goods, even if the source is unknown.
·          e.g. Coca-Cola, Campbell’s Soup, Dell, Domino’s Pizza, and Caterpillar
§   [2] Service marks – a word, name, symbol, device, or any combination thereof, which is used to distinguish the services of one person from services rendered or sold by others, and to indicate the source of the services, even if the source is unknown.
·          e.g. Greyhound Bus Service, Google, and the University of Pennsylvania Logo
§  [3] Certification marks – don’t identify source, certifies goods/services of others (than the owners) have certain characteristics (i.e. identifies source of the certification rather than the source of the goods).
·          e.g. certified Kosher, certified electrically safe, certified energy star (owned by U.S. govt)
·          Characteristics: origin in a region X, composition of a particular material, quality, accuracy, union labor.
·          Rationale: allows smaller companies to compete w/ larger branded companies
·          Pros: more direct avenue of encouraging quality (by requiring it).
·          Cons: if certify too widely used (e.g. UL), doesn’t do much to differentiate but still means everyone meets a quality threshold. no inherent quality – the mark might not actually mean anything. extortion/rent-seeking – guilt firms into seeking the certification (made in the USA) to boost sales to consumers.
§   [4] Collective marks – a mark adopted by a “collective” (i.e. association, union, cooperative, fraternal organization) to [1] indicate membership in an organization or [2] identify goods or services of members and distinguish them from those of nonmembers.
·          usually requires passing a test or some other standard
·          does NOT ID SOURCE.
·          e.g. AFL-CIO, Beta Theta Pi, Federalist Society
·          Penn Law Mark
o    school uses it as trademark but specifies limited licensing
o    creates guidelines to prevent problematic overuse of mark and control the image of the school
o    Others
§   Trade name
§   Trade Dress
o    Content of Marks
§   WORDS are the most common form of marks, but PICTURES, DRAWINGS, COLORS, SOUNDS, and even FRAGRANCES have received trademark protection as well.
§   Functionality Doctrine – (like CR, unlike patent and trade secret) – a product’s functional features are not subject to TM protection.  Otherwise, monopoly over functional features could be obtained without qualifications necessary under patent law and could be extended forever b/c TMs may be renewed in perpetuity.
·          Functionality Test
o    feature is ESSENTIAL to the USE or PURPOSE of the article or if it affects the COST or QUALITY of the article.”; OR
o    If exclusive use of a feature would put competitors at a significant NON-REPUTATION-RELATED DISADVANTAGE.
o    See Qualitex – ct determined (1) that green-gold color did not affect the use, purpose, cost, or quality of laundry press pads and (2) significant non-reputation-related disadvantage to competitors only if there were insufficient alternative colors available to them which would be equally aesthetically pleasing to customers. Because it appeared that the competitors could use alternative colors effectively, the color was non-functional and protectible.
§   Composite Marks – A mark may be comprised of one or a number of different elements.  Composite marks must be evaluated as a whole.  Even if one particular element of the mark, such as a word or design, may not be sufficiently distinctive or make a sufficiently separate commercial impression to serve as a mark by itself, it may be sufficient in combination with other elements.
·          Color cannot be inherently distinct, but its combination with other factors can with a showing of secondary meaning. Ex. red sole contrast to another colored heel [Christian Louboutin v. Yves Saint Laurent America Holding, Inc. 2d Cir] o    Limitations
§   Immoral and Scandalous – offend the conscience/moral feelings or shocking to sense of decency. typically involves vulgar language/imagery.
·          (1) Determine the likely meaning of the word, and (2) determine whether the likely meaning is scandalous to a substantial composite of the general public
§   Disparaging – no regis/prot for mark if it consists of matter that disparage persons (living/dead), institutions, beliefs, national symbols, or bring them into contempt/disrepute.
·          disparagement evaluated from view of substantial component of persons allegedly disparaged, not the general public.
§   False – no regist for marks that falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols. Four part test
·          1. mark is same as or close approx.. of the name/identity previously used by the other person;
·          2. mark would be recognized as such, uniquely/unmistakably points to that person;
·          3. that person is not connected to the goods solds by the applicant; and
·          4. consumers will presume a connection btw the person and the applicant’s goods b/c of the fame/reput. of the person.
·          Diff from infringement: don’t have to show source/sponsorship confusion. Only have to show the mark evokes the person’s identity in connection with the good or service.
§   Deceptive Marks [§2(a)] ·          Elements
o    (1) falsely indicates the product/service has a characteristic
o    (2) prospective consumers are likely to believe the misdescription correctly describes the product/service
o    (3) the misrepresented characteristic would be a material factor to a reasonable consumer in deciding whether to purchase the thing.
§   if MATERIAL to consumers à Deceptive mark §2(a) à NOT REGISTRABLE
§   if NOT MATERIAL to consumers à deceptively misdescriptive §2(e),(f) à can register ONLY if show SECONDARY MEANING.
·          EXCEPTION: if material misdescription of GEOGRAPHIC origin à NO REGISTRATION (unless secondary meaning before 12/08/93).
§   Flags or Symbols – flags or other insignia of the United States or any foreign nation
§   Names or Portraits of Living People – name, portrait or signature identifying a particular living individual without consent or of the President during the life of his widow without consent of the widow
§   Previously Registered [first in time rule] – no registration for mark (when used in connection w/applicant’s goods/services) is
·          (1) confusingly similar to a mark or trade name that
·          (2) another person began using in the U.S. before the applicant and
·          (3) has not abandoned.
§   Dilution – a mark which, when used, would cause dilution
 
·           [2] Distinctiveness [jury question] o    Rationale: the mark must identify and distinguish goods and services; otherwise, use by others does not cause customer confusion as to source.
o    [i] Inherently Distinctive – immediately capable of identifying a unique product source.
§   fanciful – made up w/no meaning other than its mark’s meaning.
·          e.g. Exxon, Xerox
§   arbitrary – has a meaning but in no way describes the service/product they ID.
·          e.g. Apple, Kodak
·          Primarily Geographically Misdescriptive Marks – has the name of one place but comes from another.
o    E.g. Alaskan Bananas, Planet Jupiter Bottled Water, Vineyard Vines
o    TMs issued UNLESS reasonable basis that consumers will be confused as to the origin. analyze natural consumer connotation of the mark (pre-advertising exposure).
§   suggestive – indirectly describe the product/service they ID. does not describe the nature/characteristics of the product/service.
·          e.g. General Motors, Q-Tip
o    [ii] Secondary Meaning – customer associates the mark with the single source of the product due to marketplace exposure.
§   Key Evidence: advertising, marketing, sales???
§   Surname marks [REQ. SM] ·          Overall meaning on the public is a surname meaning and nothing more.
o    If mark has no meaning to public, surname or otherwise à not primarily merely a surname.
o    if mark has both surname + other meaning in language, à generally not deemed primarily merely a surname.
·          e.g. O’Malley’s Beer.
·          Rationale: ct is reluctant to protect surnames b/c ppl should be able to do biz in their own name, TM system not necessary to incentivize ppl to build goodwill in their name.
§   Descriptive – marks that essentially describe what the good is.
·          e.g. United Parcel Service, Aloe, Beer Nuts, World Book
·          Geographic marks
o    U.S. skeptical of geo marks b/c of consumer deception and reduced competition. Treats geo indicators as cert marks.
o    Popular in France. Pros: Foodies/wine aficionados have more info to select; Cons: restrains trade/ barrier to entry: extremely difficult to start up to compete with major players.
o    Primarily Geographically Descriptive Marks – marks truly describe the place where the goods originated. req. SM à dist à prot.
§   E.g. Florida Oranges, Georgia Peaches, Alaskan Tuna
§   Requires Secondary Meaning to be protected.
o    Geographically Deceptively Misdescriptive Marks – marks don’t describe where the goods originated but public could be misled into thinking mark IDs geographic source.
§   Immaterial misdescription à not deceptive [just misdescriptive]à protectable ONLY if acquires SM.
§   Material misdescription à deceptive à not protectable
§   e.g. Florida Oranges (where the fruit comes from South America)
§   e.g. Crimson Apples is deceptively misdescriptive + material if apples are not crimson and consumers’ decision to purchase is affected by that color.
o    In re Nantucket. Nantucket shirts not made on island of Nantucket, no assoc btw the shirts and island, goods not likely to confuse customer as to origin à Nantucket mark is not geo decept misdescr à inherently distinctive à protected.
o    Vidalia Onions. Geo indicator “Vidalia” TM protectable mark à even if can recreate same Vidalia quality onions in Philly, still can’t call them Vidalia onions.
§   Design
o    Generic – unprotectable/genericide.
§   b/c no work put into it, it’s a term/logo that stands for large class of goods w/ no source for identification
§   e.g. Aspirin, Thermos
 
Primarily geographically misdescriptive (e.g. Idaho potatoes on a pair of sweatpants. Sweatpants have nothing to do with either). Want it to look arbitrary/fanciful
Registrable
Primarily geographically descriptive
(e.g. Idaho potatoes for potatoes from Idaho)
Not registrable, except by proof of secondary meaning
Primarily geographically deceptively misdescriptive (e.g. Idaho potatoes, but actually grown in Wisconsin)
Not registrable
 
Geographic Indicators
·          Certification: doesn’t ID source, but only characteristics
-Nantucket Shirts: uses reasonable person standard to determine if there is source relationship between Nantucket and shirts.
-US grants geographic indicators through certification
1.        Primarily geographically descriptive – no protection, unless secondary meaning
2.        Primarily geographically misdescriptive – protection  (unless reasonable person would be confused)
3.        Primarily geographically deceptively misdescriptive – no protection
 
 
·         [3] PRIORITY
o    Mark owner: person who first uses the mark in trade.  Use must be bona fide use in trade and not done merely to reserve the right in the mark.
§   Rationale: prevent entrepreneurs from reserving brand names just to increase rivals’ marketing.  Public sales let others know that they should not invest to develop a mark similar to one already in trade.
§    “Use in Commerce” – must demonstrate it has used the mark in interstate commerce or in a manner affecting IC. §1127.
·          “Use in Commerce” doesn’t have to be TRADITIONAL.
·          [Rescuecom Corp. v. Google, Inc. (2d Cir)] Note Google’s “TM Use” Counterargument: its use of TMs is not traditional TM use and should have been 12(b)(6)’d.
·          Two contrasting arguments for ISPs within TM:
o    There should be liability for search engine providers for selling TM – ultimately, people will become confused because of the weakening linkage between source/product. This gives disincentives to inves

party use
·          Don’t need evidence of confusion; not-channel specific (broader focus across differing industries)
·          Applies to trade dress and product configuration as well
·          Effect of TDRA
o    Expands scope of dilution
§   Non-inherently distinctive marks qualify [probably] §   Both blurring and tarnishment explicitly named
§   Likelihood of dilution allowed
o    Narrows scope of dilution
§   Tighter definition of “famous” marks
§   Broader exclusion for fair use (though maybe not broader than 9th Circuit)
o    Further reinforces curious element of TM law
·          Exclusions – VERY BROAD
o    Same fair use exceptions – 1st amendment concerns (cross ref. Barbie case)
o    nominative or descriptive fair use; advertising or promotion, identifying & parodying, criticizing; all forms of news reporting & news commentary
o    Any noncommercial use of a mark
·          Cases
o    Louis Vuitton Malletier SA v. Haute Diggity Dog LLC [4th cir] – even if a mark formally qualifies the requirement for dilution, it can be so strong that there is no risk of dilution especially by a small diluter.
§   Rejects tarnishment claim because arguing that chew toys will choke dogs and harm the reputation of LVMH is stupid
§   Rejects blurring claim on the grounds that it’s actually a parody
o    HYPO: cocacola v. artist who created cocaine sign in coke’s style à non-infringing use. but on the line. distinguish Barbie, cocaine shirt is proposing a commercial transaction. illegality makes consumer think twice, more likely to be commentary/fair.
 
 
Moseley v. V Secret Catalogue, Inc (2003)
***Reversed by TDRA***
Takeaway
Showing of actual dilution needed under FTDA
Facts & Procedure
·            Small store in Kentucky called Victor’s Secret sells lingerie & adult novelty items
·            Victoria’s Secret requested Moseley to stop using name, they changed it to “Victor’s Little Secret”
·            Victoria’s Secret then filed suit
Issue
Does actual economic injury to value of famous harm have to be shown under FTDA? Which one is needed: proof of actual dilution or proof of likelihood of dilution?
Rule
Dilution claims need showing of actual dilution – can use surveys/circumstantial evidence, but need pre existing data before infringement
If infringement mark identical to owner’s TM, NO need to show actual dilution
Reasoning
& Holding
·            A showing of actual dilution is required, but no need to prove actual harm
·            Ct decided actual dilution is required based on text of statute, b/c wording never said “likelihood” is enough
·            When marks NOT identical, mental association NOT enough to establish dilution
Aftermath
Most TM owners lose on dilution claims b/c it’s hard to show “actual” dilution, creates huge mess, gets remedied by revisions to statute
 
 
Louis Vuitton v. Haute Diggity Dog
 
Takeaway
Chewy Vuiton is a fair, nominative use, of LV’s TM
Facts & Procedure
·            District Court: ∆’s dog toys were successful parodies of π’s TMs, designs, and products, and entered judgment in favor of D on all of P’s claims.
 
 
 
 
 
 
 
 
Issue
Does actual economic injury to value of famous harm have to be shown under FTDA? Which one is needed: proof of actual dilution or proof of likelihood of dilution?
Rule
To establish a claim for dilution by tarnishment, a plaintiff must show that the defendant’s use of its mark harms the reputation of the plaintiffs’ mark.
Reasoning
& Holding
·            Chewy Vuiton toys were parodies that were not likely to confuse consumers
·            Although π argued that the possibility that a dog could choke on a “Chewy Vuiton” toy causes tarnishment, the court found that there was no tarnishment because the plaintiff provided no record to support its assertion.
·            Court said that LV had a “strong” case on at least 3 dilution factors, but then held that this makes a finding of dilution less likely
•      Ruling seems to hinge on the difference in price range of the products
 
 
 
 
TRADEMARK Fair Use:
·          use of a trademark that does not qualify as infringement because it is:
v nominative v descriptive v non-commercial v comparative advertisement v parody v reporting/news commentary v criticism
·          Law: 15 USC § 1115(b)(4), affirmative defense if TM use is to describe good, services/geographic origin
·          Burden of proof: party claiming FU does not need to negate any likelihood of confusion. Party charging infringement needs to show consumer confusion.
·          Nominative Use – User uses the TM to describe or refer to the owner’s product but does not attempt to capitalize on consumer confusion.
o    TEST
§   1) Product or service in question must be one not readily identifiable w/ out use of the TM
§   2) Only so much of the mark may be used as reasonably necessary to identify product/service
§   3) User must do nothing that would, in conjunction w/ the mark, suggest sponsorship or endorsement by TM holder
o    [New Kids on the Block v. News AM. Publishing, Inc. [9th cir] Especially applicable where the only word reasonably available to describe a particular thing is the TM itself. when a product/service is not readily identifiable without the use of TM
o    KP Permanent Make-Up, Inc. v. Lasting [Sup Ct] Using TM for descriptive use is allowed even if there is some confusion. However, later appeals specifies that if there is enough confusion, that can weigh against fair use although the burden of proof is on the π.
·          Descriptive Use
o    Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond’s USA
o    “Sealed With a Kiss” Case
§   Held: the phrase “sealed with a kiss” was in common use and the ∆ is not liable because it merely using it in a descriptive (not trademark) sense
·          Non-commercial speech: use that consists entirely of non-commercial or fully constitutionally protected speech that is exempted from trademark infringement actions. Exemption entitled to prevent the courts from enjoining speech that has been recognized to be fully constitutionally protected, such as parodies, satire, editorial and other forms of expression that are not part of a commercial transaction.
o    Mattel, Inc. v. MCA Records (9th Cir) Barbie Doll. 1st amendment rights: Parody v. Satire, non-commercial if there is another purpose to using the Mark. dilution isn’t same thing as using the same TM and connection to content/use of TM] 
·          Cases
o    KP Permanent Make-up, Inc. v. Lasting Impression, Inc. (2004)
§   Facts: permanent makeup purveyors both using the term “microcolor.” KP claims it used “microcolor” since 1990. “Microcolor” registered at the PTO by Lasting in 1993 and incontestable in 1999.
§   Holding: TM owner needs to show “likely to cause confusion.” The party bringing up fair use doesn’t need to negate confusion, just show lack of confusion/good faith.
§    
o    Mattel, Inc. v. MCA Records (9th Cir. 2002)
§   Facts: Barbie Girl song by Aqua. Mattel brings a suit against the music companies who produced, marketed and sold the song.
§   Holding: Barbie Girl protected by fair use doctrine (no infringement). Unlikely to cause confusion or dilute the “Barbie” mark. Partially a parody, satire or other form of expression about the cultural values represented by Barbie
·          note: NO INFRINGEMENT b/c unrelated markets, no one would think the Barbie girl song would be made by the doll mfr.
§   Dilution: Court redefines “non-commercial” use to mean “not entirely commercial” or “commercial transaction”
§   Parody: 1st Amendment grounds, making fun of mark/product itself. Kozinksi slots parody in as fair use even though it’s not specifically in the statute.
o    New Kids on the Block v. New Am. Publ’g, Inc (1992)
§   Facts: USA Today invites readers to dial in and vote on which NKOB was the coolest for 50¢. NKOB is not happy USA Today is making money off its mark
§   Rule: Two uses of word “commercial” in the FTDA:
§   1) in order to bring claim it must be a commercial use in commerce, AND
§   2) there are exceptions for non-commercial use
·          Through legislative history, ct finds noncommercial use exception protects free speech, satire, etc (all 1st Amend. Protected speech)
§   Rationale:
·          Ct holds there is NO infringement, this is “nominative use” where it’s necessary to use the name in order to refer to the group NKotB
·          Not using name beyond the extent of referring to them, no one would be confused the group itself was behind the call in survey
·          Limiting boundaries of the nominative use principal: mark must be used in a way that doesn’t deceive public (can’t imply sponsorship or endorsement); does not implicate the source identification function that’s the purpose of TM
·          Public as an element of the fair use defense.
§   TEST:
·          (1) Product or service in question is not readily identifiable without use of the mark
·          (2) Used as reasonably necessary to identify the product or service
·          (3) User cannot suggest sponsorship or endorsement of the trademark