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Trademark
Wayne State University Law School
Rothchild, John A.

Trademarks – Winter 2013

Professor Rothchild

1) Chapter 1: Introduction

A) Competition: Fair and Unfair

a) International News Service v. The Associated Press (pg 1)

(a) INS doesn’t have to put any energy into acquiring the news, then taking someone else’s work product and offering at as its own.

(b) INS is interfering with AP’s right to engage in lawful business activity

(i) By enticing AP’s subscribers away

(ii) By not giving AP credit for the newsgathering

(c) INS is unfairly reaping where it has not sown

(d) INS is committing a fraud on the public

(e) Role of mark/brand in assuring consumer that what it gets in future will be of same quality, so INS is artificially inflating its reputation

(f) “we hold that the surviving ‘hot-news’ INS-like claim is limited to cases where:

(i) (i) a plaintiff generates or gathers information at a cost; (II) the information is time-sensitive;

(ii) (iii) a defendant’s use of the information constitutes free riding on the plaintiff’s efforts;

(iii)(iv) the defendant is in direct competition with a product or service offered by the plaintiffs; and

(iv)(v) the ability of other parties to free-ride on the efforts of the plaintiff or others would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.”

(2)Unfair competition

b) Dastar Corp. v Twentieth Century Fox (pg 17)

(1) The U.S. Supreme Court, ruling only on the “reverse passing off” claim, reversed the decisions of the appeals court and district court, ruling 8-0 in favor of Dastar. The Court reasoned that although the Lanham Act forbids a reverse passing off, this rule regarding the misuse of trademarks is trumped by the fact that once a copyrighted work (or, for that matter, a patented invention) passes into the public domain, anyone in the public may do anything they want with the work, with or without attribution to the author.

B) The Constitutional Basis of Federal Trademark Protection

a) The Trade-Mark Cases (pg 33)

(1) Initial trademark act unconstitutional because not tied to commerce clause in some way (commerce with foreign nations, among the several states, or with Indian tribes)

C) Perspectives on Trademark Policy (pg 41)

2) Chapter 2: Prerequisites For Trademark Protection: Use

A) The Traditional Use Requirement – a trademark must be in “use in commerce” in order to be registered

a) Blue Bell, Inc. v. Farah Mfg. Co. (pg 46) – first use in commerce has priority

(1) Undisclosed internal shipments are generally inadequate to support the denomination “use.”

(2) Elementary tenets of trademark law require that labels or designs be affixed to the merchandise actually intended to bear the mark in commercial transactions.

(3) Mere adoption of a mark without bona fide use, in an attempt to reserve it for the future, will not create trademark rights.

(4) Sales to customers are not the sine qua non of trademark use, but determinative in this case.

b) Zazu Designs v. L’Oreal, S.A (pg 52)

(1) Purposes of “use” requirement: “Prevents entrepreneurs from reserving brand names in order to make their rivals’ marketing more costly”; “Public sales let others know that they should not invest resources to develop a mark similar to one already used in the trade.”; “Only active use allows consumers to associate a mark with particular goods and notifies other firms that the mark is so associated.”

(2) ZHD’s sales of its product are insufficient use to establish priority over L’Oreal. A few bottles sold over the counter in Hinsdale, and a few more mailed to friends in Texas and Florida, neither link the ZAZU mark with ZHD’s product in the minds of consumers nor put other producers on notice.

(3) The amount of use you need to meet registration is less than to mark. ZHD’s sales of hair care products were insufficient as a matter of law to establish national trademark rights at the time L’Oreal put its electric hair colors on the market

B) Analogous Use

a) Maryland Stadium Authority v. Becker (pg 62)

(1) Rule of analogous use that court states: “Advertising and promotion is sufficient to obtain rights in a mark as long as they occur ‘within a commercially reasonable time prior to the actual rendition of service…,’ and as long as the totality of the acts ‘create[s] association of the goods or services and the mark with the user thereof.’”

(2) Here we have mostly advertising. Analogous use can come from issuing catalogues, press release about your product, putting it out at trade show, a lot of pre-sale activities.

(3) If you have analogous use, the result is to move back the priority date. Doesn’t have the all the same effects of actual use in commerce. It can be used to establish that they have rights in this unregistered trademark; it can also be used to prevent somebody else from getting a mark.

(4) In addition to proving use of mark, MSA also must establish that the mark has a secondary meaning.

(a) Secondary meaning is the consuming public’s understanding that the mark, when used in context, refers, not to what the descriptive word ordinarily describes, but to the particular business that the mark is meant to identify.

(5) “evidence of intentional direct copying ‘establishes a prima facie case of secondary meaning sufficient to shift the burden or persuasion to the defendant.”

(6) Last element, likelihood of confusion, is met; intentional copying of a mark raises a presumption of likelihood of confusion just as it raises a presumption of secondary meaning.

C) Federal Registration and The Intent to Use Alternative

Lanham Act Section 1127.

Registration procedure

Filing of use or ITU application (file that with PTO)

Examination

Publication in Official Gazette

If no successful opposition:

Use: certificate of registration

ITU: notice of allowance

A certificate of registration “shall be prima facie evidence of the validity of the registered mark, and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate.” After 5 years, becomes uncontestable.

For ITU, applicant has 6 months to have use and submit verification, whereupon they will get a certificate of registration with priority date of when they filed for ITU. If they don’t have use within 6 months they get no rights.

a) Warnervision Entertainment, Inc. v. Empire of Carolina, Inc. (pg 71)

(1) “[A]s long as an ITU applicant’s privilege has not expired, a court may not enjoin it from making the use necessary for registration on the grounds that another party has used the mark subsequent to the filing of the ITU application. To permit such an injunction would eviscerate the ITU provisions and defeat their very purpose.”

which permits importation where 3) the articles of foreign manufacture bear a recorded trademark or trade name applied under authorization of the U.S. owner…

(b) C was severed from regulation, finding that it did not follow the statute, 19 U.S.C. § 1526(a) (pg 123).

(2) Lever Bros. Co. v. United States (pg 129)

Section 1124 of Lanham Act involved here.

General Rule:

Customs must exclude articles that “copy or simulate” a U.S. trade mark; 1124

Implemented by Customs reg; “Foreign-made articles bearing a trademark identical with one owned and recorded by a citizen of the United States… are subject to seizure and forfeiture…”; 133.21(b)

Customs regulation exception:

The article will not be excluded if: “the foreign and domestic trademark… owners are parent and subsidiary companies or are otherwise subject to

(a) Overruled customs exception. Despite the goods having a “genuine” trademark, section 42 of the Lanham Act, 15 U.S.C. § 1124, bars the importation of physically different foreign goods bearing a trademark identical to a valid U.S. trademark, regardless of the trademark’s genuine character abroad or affiliation between the producing firms.

In response to this case, Custom service revised its regulations. Called “Lever Rule”

Customs’ “Lever rule”

If someone tries to import

Foreign-made goods

Bearing a trademark owned and recorded by a U.S. citizen, and applied by an affiliate of the U.S. mark owner

And the goods are “physically and materially different from the articles authorized by the U.S. trademark owner for importation”

Then

The goods will be excluded unless “the merchandize or its packaging bears a conspicuous and legible label… stating that: ‘This product is not a product authorized by the United States trademark owner for importation and is physically and materially different from the authorized product.’” – 19 CFR § 133.23

4) Chapter 4: Prerequisites for Trademark Protection: Distinctiveness

Two aspects: 1) the words or symbols claimed as a trademark must play a specific informational role, ie identify the source of, or otherwise to convey brand-specific information with respect to, the associated goods/services; 2)the words/symbols must also not play a more important informational role that is not source-identifying/brand-specific for the associated goods/services.

Regarding 2nd requirement, three types of non-brand informational roles, rather than, or in addition to, conveying brand-specific information to consumers, the words/symbols at issue may also convey: 1) accurate information about associated goods/services; 2) inaccurate information about associated goods/services; 3)objectionable marks (immoral/scandalous/falsely suggest a connection to a person, living or dead/etc.).