Trademarks Outline
TRADEMARKS
Landes
I. The INS Case & Misappropriation
A. The Rule
1. Misappropriation where
a) Public Good
(1) Two people can use at same time
(2) MC of additional person = 0
(3) Ability to enjoy or benefit not affected by others use
(4) No benefit to exclude others
(5) Economies of scale ex post
(6) Ignores incentive problems ex ante
b) High cost to excluding free riders
c) Competitive injury in primary market – Parties direct competitors
(1) Causing significant market injury
(2) Landes says NOT limited to hot news
d) Consider: Transformative v. Reproductive Use (NBA)
e) Cost - Benefit Analysis (case by case)
(1) Free Riding really significant – ruins incentives for party creating
information (product threatened)
f) Limitations On INS
(1) Means were unlawful (Brandeis)
(a) BUT this would gut the doctrine. This is conversion
(2) Essentially similar facts to INS (Hand)
(3) Cost Benefit. Case by case analysis (incentives v. transaction / access
costs
(4) Restricted to competitive injury
B. Benefits of the Misappropriation doctrine
1. Saving on private enforcement costs
2. Protect specific incentives of the firm stolen from
3. Protect general incentives so that others want to do it.
4. Fairness Argument (he who creates it, should get it)
C. Costs of the Misappropriation doctrine
1. Duplication costs
a) BUT there will be an incentive to contract
2. Access costs (because public good)
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3. Monopoly costs (cost of supplying add’l users is almost zero)
4. Social Loss
a) Cost = 0 to extend access but there are people that wouldn’t pay the
full price but would pay some of the price.
5. Public Goods (no limited quantity – only loss is exclusive use)
D. The Regulation of Public Goods
1. Could not use wire service news items during period information constitutes hot
news & has commercial value. INS.
a) Postpones D’s participation
2. Limiting of INS’s effect
a) Restatement: No general rule of law prohibits appropriation of
competitor’s ideas, innovations, or other intangibles once publicly
known
b) NBA v. Motorola: Elements central to an INS claim (for hot news)
(1) P collects information at some cost or expense
(2) Value of information is time sensitive (hot news)
(3) D’s use of information constitutes free riding on P’s costly efforts to
generate or collect it (no free riding in this case)
(4) D’s use of the information is in direct competition with a product or
service offered by P
(5) The ability of other parties to free ride on the efforts of the P would
reduce incentive to produce & its existence would be threatened.
c) Potential Problem: Multiple sources (many potential Ps)
3. Standards
a) No monopoly over the use of standards. Hubbbell v. GE. (incentives
small, costs high)
(1) INS limited to fraud & bribery
4. Fads
a) If you are first in mkt, you reap advantage from being first.
(incentives enough)
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II. Unfair Competition
A. Advertising
1. Economics of Advertising
a) Good
(1) Provides consumer with information to make mkt decisions
(2) Retain control over kind & quality of products
(3) Minimizes search costs
(a) Search Goods. Information relevant to purchasing decision can be
acquired by examining product prior to purchase
(i) Advertising not as useful
(b) Experience Goods. Relevant qualities not observable until you actually
use product (post-purchase)
(i) Repeat purchases made
(ii) Long lag between purchase and subsequent purchase /
Infrequent
(c) Credence Goods. Important characteristic costly to discover even after
purchase.
(4) Pays to advertise winners rather than losers
(5) Advertising a good guide to the mean because advertising pays only to
the extent that it results in sales
(6) Because search costs lower, consumers search more & make
competition more effective.
b) Bad
(1) Not trying to inform, trying to persuade / Manipulate demand
(2) Advertiser has psychological power
(3) Resource Waste = changing tastes of consumers
(4) Monopoly creating = Advertiser given control over price
(5) Barrier to Entry = entrant has to incur larger marketing costs unless can
produce far cheaply
c) Reasons for Advertising
(1) Get new customers
(2) Remind you; Encourage repeat purchase
(3) Most likely to advertise goods you have had a good experience with.
d) Where does false advertising happen?
(1) Search Goods?
(2) Experience Goods?
(a) Repeat purchase made
(b) BUT where long lag time between purchases?
(3) Credence Goods
(a) Might not profit from false advertising because
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(i) Rational consumers will disbelieve false adv & discount product
value (Market Sanction)
(ii) Pooling Equilibrium (if everyone said misleading thing) = Social
loss because eventually nobody makes claim even though
consumers would pay a premium
e) Disincentives to advertise falsely
(1) Firm does not want to have bad reputation
(2) May deter socially beneficial advertising if P can win too easily
(3) Ads may become excessively complicated & costly to produce
f) Since trying to protect consumer, why Should Competitor Sue?
(1) Competitor is lowest cost enforcer
(a) BUT established firms may try to harass new firms
(2) Difficult to figure out if claim is false or misleading
(3) Sometimes a claim contains useful information to one group of
consumers BUT another group interprets it differently.
2. False Advertising [See also C. Below]
a) At Common Law
(1) FRAUD necessary in all tests.
(2) Mosler Safe
(a) Single Source Rule. Has the P lost customers because of D’s actions?
(i) NO loss shown because others sell a similar product. [tough
standard] [SCt]
(b) Has the P lost them by means which the law forbids?
(c) OLD TEST: Required passing off
(i) No passing off required in this analysis
(3) ALI (1939)
(a) D intends or knows that deception is likely to divert trade from P
(b) P is not also committing fraud
(4) Modern approach
(a) Falsity Has Likely Commercial Detriment
(i) Material
(ii) Reasonable basis for believing that representation has caused or
is likely to cause a diversion of trade or harm to reputation / good
will.
b) False Designation of Geographic Origin
(1) Social Harm
(a) Consumer probably paying a premium for a product from this location
(b) Misappropriation
(c) Free riding
(d) Destruction of reputation – if copiers produce low quality, people will
begin to assume low quality from that region
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(2) To pass single source problem, must get all manufacturers in region to
sue as parties
c) Passing Off
(1) American Washboard: B claims that his product is made by A
(a) Satisfies single source rule because you would have bought A’s product
B. Disparagement
1. Defined: Attack by D on goods of P.
2. Social Harm
a) Firm damaged – lose sales, sell at lower price
b) Information public receiving is incorrect
c) Firm may have to spend resources to rehabilitate reputation
3. At Common Law
a) Hurlbut Test for disparagement
(1) Publication by D of disparaging words
(2) Falsity (P has to show it is false)
(a) Must be a false FACT (not an opinion). Bose.
(b) Why should P have prove falsity?
(i) P is in better position to prove falsity
(ii) Likelihood of errors may chill accurate information gathering
(3) Malice OR Intention to deceive (or willful or reckless)
(4) Lack of privilege
(5) Special damages
(a) Modern cases have relaxed proof necessary, with use of expert
(i) General decline of business OK if other causes eliminated
b) Standard of Liability
(1) Usually Intent or Reckless intent
(2) Sometimes strict liability
4. Lanham Act (§ 43(a)(1)(B)) (post-1989)
a) False or Misleading description or representation of fact
b) In (interstate) commerce
(1) In connection with goods, services, containers, or packaging
(2) D’s must use the statement in commerce (not enough that P’s product is
in commerce) [Usually met by (c)]. NAMCO.
c) Commercial Advertising or Promotion
(1) Excludes statements in consumer reports or news story
(2) Product needn’t yet be sold, BUT need “sufficient steps”. NAMCO.
(3) Look at context of speech: commercial = ultimately business purpose
(can include social / informational purpose). NAMCO.
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(a) By a D who is in commercial competition with P
(b) For purpose of influencing consumers to buy from D
(c) Disseminated sufficiently to relevant purchasing public
d) Likely to be damaged
e) Standard of Liability: STRICT LIABILITY
5. Puffing
a) Competitor can make unfavorable comparisons if no false assertions
of specific unfavorable facts
6. Disparagement by Consumers (Free Speech)
7. Disparagement by Independent Testing Agencies
a) (CL). No disparagement liability for an opinion. Bose. (no malice
shown)
(1) Not a strict liability standard (Intent or Recklessness)
b) (LA). Not advertising, so no liability
c) Consumer Reports not gaining from claim
8. Disparagement by Governmental Agencies (Can’t prohibit)
C. Lanham Act § 43(a) (False Advertising / Unfair Competition)
1. Common Law [See above]
a) Usually deceit = palming off
b) Req’t of proof of actual damages caused by false claims
(1) Impossible in open market
2. § 43(a) (1946 - 1989)
a) Only applied to goods or services made by D.
3. The Current ACT (Amended 1988)
a) § 43(a)(1). Uses, in connection with any goods or services, in
commerce
(1) Any Word, term, name, symbol, or device =
(2) False designation of origin
(3) False or misleading representation or description of fact:
b) § 43(a)(1)(A). Likely to cause confusion, mistake, deceive as to
affiliation, connection, or association as to
(1) Origin, Sponsorship, or Approval of his goods, services, or commercial
activities by another
c) § 43(a)(1)(B). (Disparagement). In commercial advertising or
promotion misrepresents nature, characteristics, qualities or
geographic origin
(1) Commercial Advertising or promotion. (Amer. Inst. Physics)
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(a) Commercial speech
(b) By a D who is in commercial competition with P
(c) For purpose of influencing consumers to buy from D
(d) Disseminated sufficiently to relevant purchasing public
d) Differences from Common Law
(1) Proof of Intent to deceive not necessary
(2) Broad range of P’s entitled to relief (“Any person likely to be damaged”)
4. Elements
a) Falsity
(1) Is it false?
(a) Must consider ad in its entirety. Avis.
(b) Opinions do not count. Groden.
(c) Prohibition only on false statements made about one’s own or another’s
goods (not all false statements). Groden.
(d) Puffing that is merely general & not detailed or specific is NOT
actionable.
(2) False on its face
(a) ONLY NEED TO SHOW FALSITY. If false on face, no need of public
confusion. King (possessory credit)
(i) No need for survey
(3) Literally true but deceptive
(a) P must demonstrate by extrinsic evidence tendency to mislead or confuse
statistically significant portion of consumers. Tums Case. (aluminum)
(i) What does the person to whom the ad is addressed find to be
the message?
(ii) Survey evidence
(iii) BUT if P shows D INTENTIONALLY tried to mislead, burden
shifts to D to show no confusion. Tums.
(b) Where claim is superiority, P must prove D’s product is equal or
inferior BUT
(i) Where D represents tests establish D’s product is superior, P
can show tests did not establish this or tests unreliable. Castrol.
(c) SOLUTION: Avoid confusion by using a disclaimer (Size of disclaimer
has to be same size of prominent part of ad itself)
(4) Literally false but NOT deceptive
(a) Consumers understand what is said. Avis. (Ex. “Old Crow Bourbon”)
b) Materiality
(1) Substantial # of customers deceived
(2) Reliance on deceptive claims by consumers.
(a) Likely to affect choice or conduct. Kraft.
(3) (FTC) Presumption of materiality where
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(a) Express claims
(b) Implied claims where there is evidence that seller intended to make the
claim
(c) Claims that significantly involve health, safety, or other areas of
consumer concern. Kraft.
c) Likelihood of Injury
(1) Only need reasonable basis for belief that P is likely to be damaged
(logical connection). J&J.
(a) Whether it is LIKELY that D has caused or will cause a loss to P’s sales
(2) Need not prove existence of some injury caused by D. J&J.
(a) REASON: P gains no more than market free of false advertising.
(3) Competitors
(a) Competition between parties in relevant mkt – injury will be presumed
(McCarty)
(b) Injury component satisfied once a competitor is singled out (ex.
comparative ad). Avis.
(c) Harm: P suffers direct harm from being singled out.
(d) Free Riding: D linking itself to P & free riding on advertising & good
will of P
(i) BUT it is free advertising for P
d) For presumption of harm, Competition need not be direct (indirect
competitors protected). J&J.
(1) BUT need a “reasonable interest to be protected”. Cosprophar.
(2) Advertising linkage [without direct competition] does not establish
sufficient proof of injury. Cosprophar.
(a) BUT better case where direct reference to P’s product. Cosprophar.
5. Standard of Proof = Strict Liability
a) Advantages
(1) Proof easier (administratively less costly)
(2) Deters people from making false claims
(3) Cheaper to bring a suit
b) Disadvantages
(1) Excessively expensive precautions
(2) Victim does not have an incentive to take care (competitors have best
information)
(a) BUT victim (consumer) is not collecting. Still has incentives not to be
mislead
(3) Same ad may convey Diff’t messages to diff’t groups
6. Remedies
a) Injunctions § 34(a)
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b) Money Damages § 35(a)
c) Destruction of infringing articles § 36
7. Money Damages (See § 35)
a) § 35(a)
(1) D’s profits +
(a) P only has to prove sales, D has to prove elements of cost
(2) Damages sustained by P +
(a) Treble damages allowed = compensation, not penalty
(3) Costs of Action
b) Advertising Expenditures = U-Haul Method (comparative adv. only?)
(1) D’s advertising expenditures on the false advertising (to prove D’s profits)
+
(a) Represents Minimum amount of what D’s profits would have been (in
comparative advertising case)
(b) PROBLEMS:
(i) If profits are net (not gross) profits, this method collapses
(ii) Difficult to measure expenditures on false portion (only get profits
from the false portion)
(iii) Moral Hazard problem. Biggest awards where P = lg. Firm & D =
small firm.
(iv) In UHAUL, price was a search characteristic.
(a) BUT transaction costs
(2) P’s advertising expenditures to rebut false claims (P’s damages)
(a) BUT FOR causation
c) Unintentional False Advertising Damages (NO PROFITS - ONLY P’s
Damages) (Ralston)
(1) If willful or intentional
(a) Take D’s profits +
(b) P’s damages
(2) If mistake (NO PROFITS). P’s Damages =
(a) P’s advertising expenditures to rebut false claims +
(i) Needn’t specifically refer to false claims. Alpo II.
(ii) May recover more in responsive advertising than what was spent
on the false advertising. Alpo II.
(b) Goodwill loss +
(c) Lost profits from lost sales & price reduction +
(d) Any other relevant damages. Alpo II.
(i) Delay in receipt of stream of income
(3) Why distinguish between Willful & Mistake?
(a) With a mistake, want due care, BUT don’t want them to be too careful
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(socially inefficient)
8. Consumer Remedies
a) “Any Person”
(1) § 45: Purpose of act is to “protect persons engaged in commerce against
unfair competition”
(a) Congress deliberately excluded consumers. Colligan.
(i) Avoids flood of claims
(2) The interest MUST BE direct.
(a) BUT non-competitors who have been injured commercially may be able
to sue
(i) Ex. voice used as imitation (commercial interest exists)
(3) Trade assn can sue (efficiency enhancing device)
b) State law remedies exist for consumers
9. Economic Analysis
a) Effects of false claim could be trivial because success depends on
repeat purchases (Experience goods).
(1) BUT may be deterred from buying other person’s products
D. State Statutes
1. Uniform Deceptive Trade Practices Act = Codifies law of false adv between
competitors - “deceptive”
2. Unfair Trade Practices & Consumer Protection Law = Prohibits acts that are
“unfair” or “deceptive”
3. Private Remedies = Any injured person to bring suit
E. The Federal Trade Commission
1. Jurisdiction
a) Authority over “unfair & deceptive” practices in commerce
b) Private P does not have standing to enforce rule or decision of FTC
c) Courts have deferential standard of review
2. Deceptive Acts or Practices [no competitor necessary]
a) FTC can rely on its own analysis [expertise] to determine if claims
are misleading
(1) As long as claims are reasonably clear from face of ad. Kraft.
(2) Distinguish from L.A., where consumer survey needs to be done.
(3) PROBLEMS: (Kraft concurrence)
(a) Advertisers unable to predict what FTC will think
(b) FTC can ignore extrinsic evidence (though sometimes necessary)
b) Representations with a capacity to deceive are unlawful. Charles of
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the Ritz. (fool’s test – now gone)
(1) FTC needn’t produce proof of deception.
c) Fraud not necessary, deception enough. Algoma.
(1) Use of props may be deceptive in some circumstances. Colgate.
(2) Marketing gimmick called “free” is deceptive. Mary Carter.
d) FTC Policy Statement on Deception
(1) Representation, omission or practice likely to mislead
(a) False oral or written reps
(b) Misleading price claims
(c) Hazardous or defective products without warnings
(d) Pyramid sales
(e) Bait & switch
(f) Failure to provide promised services or meet warranties
(2) From perspective of consumer acting reasonably in circumstances
(a) Look at particular group, if targeted
(3) Material = likely to affect consumer conduct or decision
e) Puffing OK
3. Unfair Acts or Practices [need a competitor]
a) Cannot make an affirmative product claim without reasonable basis
for making that claim. [must substantiate] Pfizer.
(1) Type & specificity of claim
(2) Type of product
(3) Possible consequences of false claim
(4) Degree of reliance
(5) Type & accessibility of evidence to prove
b) Two controlled studies standard for specific superiority claims
4. Rule Making (somewhat limited)
F. First Amendment Arguments
1. Free Speech
2. Unnecessary regulations chills some truthful speech
a) BUT Commercial speech less susceptible to chilling than other
st
3. No 1 Amendment concerns when facially apparent implied claims are found
without resort to extrinsic evidence. Kraft.
a) Surveys unnecessary
4. Restrictions on POTENTIALLY MISLEADING speech can’t be broader than
reasonably necessary to prevent deception. Kraft.
a) Can’t categorically prohibit if less restrictive alternatives available
b) ACTUALLY misleading advertising can be prohibited entirely.
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III. Trademarks
A. The Fundamentals
1. Purposes of trademark [THINK: Search, experience, or credence?]
a) Consumer benefits
(1) Used by purchaser to identify goods intending to buy
(2) Guaranteeing quality of goods because consistent level of quality = Good
experience
(3) Protect consumers from being confused as to source of goods
(4) Consumer get information from advertising & identification of source
(5) Minimizes information costs
(6) as source of utility (ex. prestige, etc.)
b) Producer Benefits
(1) Firm’s need to identify its good or services
(2) Creates incentives for firm to develop good products
(3) Makes advertising more efficient
(4) Creates demand for goods
(5) Minimizes search costs – clear rule on what you can & can’t copy
2. Arguments against Trademark
a) Results in monopoly power over price
b) Access costs: want more competition
3. Common Law Protection v. Statutory Protection
a) Can choose between CL & LA protection (No preemption)
b) Common Law Trademark v. Tradename
(1) Trademark
(a) Marks or devices arbitrary & distinctive enough to used to identify
goods
(b) Affixed to good
(c) Not a common or generic name for goods, or a geographical, personal,
or other name, or descriptive of goods
(d) Must USE in commerce
(2) Trade name (Descriptive, geographic, or surname)
(a) Marks or devices which had primary meaning other than identifying
goods (like surname or descriptive word)
(b) SECONDARY MEANING: To protect, had to show mark had come to
distinguish goods in minds of public
c) Lanham Act § 1051 et seq.
(1) Trademarks [Trade names included] § 1127
(a) Any mark used to identify goods regardless of whether arbitrary or
descriptive [Trade names included]
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(i) Trade name identifies person’s business or vocation.
(b) Descriptive Marks § 2(e) (need secondary meaning)
(i) which is descriptive is still a but can’t be registered
(ii) SECONDARY MEANING: § 2(f) allows merely descriptive,
primarily geographically descriptive, or primarily merely a
surname to be registered IF mark is DISTINCTIVE of the
applicant’s goods in commerce.
(a) Exclusive & continuous use for 5 years MAY be
considered prima facie evidence of distinctiveness (§
2(f))
(c) Deceptively Misdescriptive & Deceptive § 2(a) (not registerable)
(d) Use In Commerce § 1(a) & (b)
(i) pre-1988
(ii) post 1988 = Use in commerce BUT can have bona fide intention
to use
(2) Defenses to Infringement (Fair Use) § 33(b)(4)
(a) Use of party’s name
(b) Used to describe fairly & in good faith
(i) Goods or services
(ii) Geographic origins
(3) Advantages of LA
(a) Once registered, easier for others to discover (reduces excessive
duplication)
(b) Can get attorney’s fees in infringement recovery
(c) Presumption of validity after 5 years
d) International protection = see p. 179-182
4. Reasonable Care to avoid confusion
a) Must use reasonable care to inform public of source. Shaw.
(1) Whether persons exercising “reasonable intelligence and discrimination”
would be taken in by the similarity. Shaw.
b) Ways passing off can happen
(1) B uses A’s mark or one confusingly similar
(2) B’s product very similar to A’s product
B. Distinctiveness
1. Two ways of acquiring distinctiveness [all marks]. Two Pesos.
a) Inherently distinctive OR
b) Acquired secondary meaning
(1) If inherently distinctive, NEEDN”T show secondary meaning
(a) Inherently Distinctive
(i) Fanciful
(ii) Arbitrary
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(iii) Suggestive
(b) Need to show secondary Meaning
(i) Descriptive
(c) Not registerable
(i) Generic
2. Descriptive Marks
a) Inherently Distinctive (Arbitrary or Fanciful Marks) (registerable)
b) Suggestive Marks (registerable)
c) Descriptive Marks (need secondary meaning) § 2(e)(1)
(1) No exclusive right to use a descriptive term. Shredded Wheat.
(a) § 33(b)(4). Fair use permits others to use a protected mark to describe
aspects of their own good. Car-Freshner.
(i) Look at how D is using mark (not P) under § 33(b)(4).
CarFreshner.
(2) Unless Secondary Meaning [See Below, under ]
(a) Primary significance of the term in minds of consumer is not the product
but the producer. Shredded Wheat. (CL)
(3) Context is relevant
(a) Compare to product or service to which it is applied
(4) Consumer perceptions significant
(5) Other words in common usage
(a) “Diff’t Drummer Drumming” shouldn’t be taken out of English
Language.
(6) Deceptively Misdescriptive Marks (§ 2(e)(1)) (need secondary meaning)
(a) No protection unless distinctive
(b) Test (In Re Budge)
(i) Is the term misdescriptive of the character, quality, function,
composition, or use of the goods?
(ii) Are purchasers likely to believe that the misdescription actually
describes the goods
(iii) Is the misdescription likely to affect the decision to purchase
(c) Deception cannot be discounted by truthful statements in advertising or
labeling. Budge.
3. Generic Marks (Secondary meaning may or may not apply)
a) Generic Def’d
(1) Principal significance of the word is the indication of the nature or class of
an article (Rather than designating origin). Genesee.
(2) Even if does distinguish origin, it tends to indicate a product genus or
type. Genesee.
(a) Necessary to describe a product’s characteristics
(b) TEST: If producer introduces product that differs from est. product
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class in a particular characteristic & uses a common descriptive term as
the name of that product, then product should be considered its own
genus. Canfield.
(3) Generic = common descriptive name of an article or substance (L.A.)
b) Primary Significance Test [for Secondary Meaning]
(1) P must show that the primary significance of the term in the minds of the
public is not the product but the producer. Kellogg.
(2) § 14(3). Primary significance of the registered mark to the relevant public
rather than purchaser motivation is test for whether generic.
c) Context important
(1) Word may be generic of some things & not of others
(a) For genericism to apply, Product must differ from the established
product class and
(b) Product must be descriptive of the differentiating characteristic
(2) “SEATS” not generic in relation to reservation services
(a) Distinctiveness irrelevant here.
d) De Facto Secondary Meaning
(1) Some courts have said that even though source-identifying, mark can’t be
protected because generic
(2) Enhanced Burden?
4. Geographic Marks
a) Primarily Geographically Descriptive (§ 2(e)(2)) (need secondary
meaning)
(1) “Primarily geographical” Defined
(a) Name of a place which has general renown to public & is a place from
which goods & services are known to emanate as a result of commercial
activity.
(i) Public association of goods with an area NECESSARY.
Nantucket
(a) NOT enough that people recognize the geographical
place.
b) Primarily Geographically Misdescriptive
(1) Deceptively Misdescriptive (NO registration) § 2(e)(3)
(a) Need a reasonable basis for believing purchasers will be deceived.
Nantucket.
(i) Nantucket court requires a consideration of the GOODS in the
geographic origin.
(b) Landes Test:
(i) Recognized as a an area of commercial activity?
(a) YES, continue.
(b) NO, Register = not deceptive
(ii) Is firm located in the area?
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(a) YES, continue.
(b) NO
(i) Before 1993, continue (§ 2(f))
(ii) After 1993, NO Registration
(iii) Is there secondary meaning?
(a) YES, REGISTER
(b) NO, NO Registration.
(c) Does the public perceive a misdescriptive use as a descriptive use?
Nantucket concurrence.
(d) Materiality Test. If D’s goods are a principal product of that area, then
misdescription not material & thus not deceptive. House of Windsor.
(2) Not deceptive (Secondary meaning)
(a) Arbitrary or Fanciful
(i) Access Costs minimal
5. Personal Names § 2(e)(4) (need secondary meaning)
a) Can’t register mere surname unless secondary meaning
(1) What is the primary significance to the purchasing public? Rivera Watch.
(2) W/o secondary meaning, does not identify single source
(a) Does not economize on search costs
b) Second Comer Has the Same Name
(1) Once an individual’s name has acquired secondary meaning, a later
competitor who seeks to use the same or similar name must take
reasonable precautions. Taylor. Considerations:
(a) Whether D previously sold business with goodwill to P (Levitt)
(b) If individual enters a particular line of trade for no reason other than to
use a conveniently confusing surname
c) Can’t register mark identifying name of living individual without
consent § 2(c)
d) Can’t register mark which falsely (misleading) suggests a connection
with persons, living or dead. § 2(a)
(1) BUT, DaVinci OK because no one would suspect connection.
e) Trade Names (Names of businesses (not products))
(1) Not protected by L.A. BUT protected by CL against confusion created by
uses of similar names
C. Certification Marks § 1127 (§ 4)
1. Certification Marks Defined = Used to certify goods produced by someone other
than mark’s owner meets certain standards or comes from a particular
geographic region
a) Provides useful information about a search attribute
2. § 2(e) exempts certification marks from unregisterability because of geographic
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origin. [Secondary meaning not needed]
a) BUT must continue to indicate certification [not descriptive]
D. Collective Marks § 1127 (§ 4)
1. Defined = Marks adopted by organizations to identify members or goods &
services of their members.
E. Subject Matter
1. Functional Marks & Trade Dress
a) Trade dress = “device” “to identify goods”
b) STEP 1: Cannot trademark a functional mark (judicial construction)
(1) Functional Mark IF
(a) Relates to the DESIGN of a thing, NOT the thing itself. Morton-
Norwich. (Look at utilitarian design not utilitarian object)
(i) NOT functional just because utilitarian
(b) Morton TEST:
(i) Superiority in function OR
(ii) Economy of manufacture OR
(iii) Competitive necessity to copy – Right to compete effectively
(c) (Morton) Considerations / Evidence of functionality
(i) Utility patent which disclosed the utilitarian advantage of the
design
(ii) Advertising touting utility
(iii) Other alternatives available
(iv) Cost of making article
(d) Functionality of OVERALL design (combination of features) considered.
Restatement / Krueger.
(i) Others can copy functional elements of an overall nonfunctional
design
c) STEP 2: If nonfunctional, Ask if it is distinctive. (Morton)
(1) Indication of source = Serves to identify its manufacturer or seller
(a) Balances right to compete by imitation with originator’s right to prevent
others from infringing on trade identification
(2) Two ways of acquiring distinctiveness [all marks NOT just trade dress]
(a) Inherently distinctive OR
(i) Usually product designs / features NOT inherently distinctive,
BUT product packaging is.
(ii) Abercrombie: Inherently Distinctive if: (easy in case, but
difficult in trade dress)
(a) Fanciful
(b) Arbitrary
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Trademarks Outline
(c) Suggestive
(iii) Knitwaves Test: Did producer use or intend to use design to
identify source?
(a) BUT too close to SM test
(iv) ***Seabrook / Krueger Test: So unique, unusual or unexpected,
that one can assume without proof that it will be perceived by
customers as indicating source
th
(v) 5 Cir. Test: If features sought to be protected serve no function
to describe product or assist in packaging
(a) BUT this is a functionality test
(vi) Duraco Test:
(a) Unusual & memorable
(b) Conceptually separable from product
(c) Likely to serve primarily as designator of origin
(vii) PROBLEM: access costs if consumer likes the style & doesn’t
care about maker
(b) Acquired secondary meaning
(i) If inherently distinctive, NEEDN”T show secondary meaning Two
Pesos. (§ 43(a) does not distinguish between & trade dress)
(a) Inherently Distinctive
(i) Fanciful
(ii) Arbitrary
(iii) Suggestive
(b) Need to show secondary Meaning
(i) Descriptive
(c) Not registerable
(i) Generic
(d) Adding a secondary meaning req’t could have
anticompetitive effects
(i) Burdens on small companies – takes time to
come up with SM
(ii) Allow competitor to misappropriate
(iii) Deter entry & creativity
(iv) No real access costs – can come up with your
own idea
(ii) TO SHOW SECONDARY MEANING: Primary significance in
minds of consumer is not the product but the producer.
Shredded Wheat. (CL)
(3) Custom in industry can make product packaging generic. Ouzo.
(a) Distinguished from product features
d) DEFENSE: Aesthetic Functionality
(1) protection for purely ornamental (nonfunctional) features which would
preclude competitors from entering [attractive features essential to
competition]
(a) Where becomes generic term to describe an article, protection
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Trademarks Outline
ceases.
(b) BUT free riding
(2) Restatement / Wallace View
(a) Where an ornamental feature claimed as a & protection would
significantly hinder competition by limiting range of adequate
alternative designs, AF Doctrine denies protection
(b) BUT if SECONDARY MEANING is shown in precise expression of style,
may be excluded from some copying
(3) Pagliero: commercial success of an aesthetic feature will negate
despite secondary meaning. [rejected by many courts]
(4) Ferrari: law protects designs not significantly related to a product’s
utilitarian function which achieved SM
e) Previously part of a Patent
(1) Where a product configuration is significant inventive component of
patent (without it the invention cannot fairly be said to be the same
invention), ENTERS Public Domain (NO TRADE DRESS). Vornado.
f) Product feature is both functional AND source-identifying [ex. logo
on car]
OPTIONS:
(1) Source-identifying trumps functional aspects, apply law of infringement
(2) Find functional & NO protection
(3) Middle ground
2. Color
a) Color can be protected – must indicate source. Qualitex.
(1) Courts use Morton test to determine
(a) Distinctive
(b) Nonfunctional
(i) whether use as mark would permit one competitor to compete,
etc.
(2) BUT colors in limited supply (Color Depletion Theory)
(a) BUT if a color depletion problem arises, doctrine of functionality
would preclude consequences
(3) Color not protected where it serves a significant non-trademark function
(ex. heart pills) (functional)
(a) Costs more to change (has a natural color)
(b) Wouldn’t work as well
(c) Product must match other colors
3. Ideas
a) Trade dress law does not protect an idea, concept, or generalized
type of appearance. Milstein.
(1) Concrete expressions protected
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Trademarks Outline
F. Preemption
1. When federal patent act applies, a state can’t provide patent rights or extend
patent. Stiffel / Compco.
a) In Public Domain
b) State can’t protecting copying of unpatented feature
(1) BUT state can require precautions to prevent consumer confusion &
deception. Compco / Bonito Boats.
(2) BUT state trade secret law not preempted
2. State can’t prevent you from making copies in the most efficient way. Bonito
Boats.
G. Rights of Holders of Trademarks
1. Incontestability
a) § 14. Cancellation
(1) Any person who believes he is or will be damaged by registration can
petition to cancel
(a) § 14(1) & (2). Within 5 years of registration: Any grounds
(b) § 14(3). At any time if [After 5 years]
(i) Generic name
(ii) Abandoned
(iii) Obtained fraudulently
(iv) Use of the mark to misrepresent source of goods
(c) § 14(5). Cancellation of certification marks
b) § 15. Incontestable use
(1) Once a mark registered for 5 years (with continuous use), registrant has
incontestable right to use mark in commerce
(a) After five years, CANNOT argue for invalidity because “merely
descriptive”. Park N Fly
(i) BUT proof of Secondary Meaning never need be shown. Park N
Fly Dissent.
(b) REASONS: Incontestability encourages registrant to cultivate goodwill
(2) Exceptions
(a) § 14(3)-(5). Cancellation rights. See (b)(c) above.
(b) Infringement on another mark
c) § 33. Effect of Registration
(1) Mark on principle register is prima facie evidence of validity. § 33(a)
(2) Incontestable marks are conclusive evidence of validity. § 33(b)
(a) Incontestability Defenses
(i) Registration obtained fraudulently
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Trademarks Outline
(ii) Abandoned
(a) Generic? See § 45.
(iii) Owner is using to misrepresent source of goods
(iv) Fair Use
(a) Use of party’s name in his own business
(b) Necessary to describe goods or geographic origin
(v) Alleged infringer adopted mark without knowledge of registrant’s
prior use & has been continuously using prior to:
(a) Constructive use by the registered mark (= date of
registration). THEREFORE, subject to § 7(c)
(b) Date of registration of mark [pre-1988]
(c) Publication of the mark
LIMITED to area where continuous use was
proven
(vi) Others
2. Problems of Priority and Infringement
a) Adoption, Affixation, & Use
(1) Common law
(a) Required affixation = important in establishing priority.
(2) When is mark “used”?
(a) Prior to 1988 – Used in Commerce [Token Use]
(i) Use on goods -- When goods bearing the mark are placed on
the market. Farah
(ii) Use must be Public. Secret, undisclosed internal shipments
don’t count. Farah.
(iii) Mark must be affixed to merchandise ACTUALLY INTENDED to
bear the mark in commercial transaction. Farah.
(b) Post-1988 – Use in commerce OR Intent to Use § 1057(c). [Adoption &
Actual Use in Commerce]
(i) Creator of mark who files ITU application can’t be enjoined from
engaging in commercial use required for full registration by
someone who started using mark in interim. Warnervision.
(a) Otherwise, would encourage people to look in register for
ITU applications
(ii) PROBLEMS:
(a) Race to use mark – inefficient
(c) Descriptive mark not “used” until it acquires SM.
(d) Pure Registration System
(i) Disadvantages:
(a) Wasting time, rent seeking
(b) Licensing costs / Transaction Costs
(c) Hold out problems
(ii) Advantages
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Trademarks Outline
(a) Avoids problem of wasteful pre-marketing expenditures
(b) No inadvertent use
(c) Lots of notice
(d) Eliminates wasteful duplication
(3) Risk in Priority System
(a) Pre-marketing investment in development of a may be lost by an
intervening use
3. Geographic Limitations (§ 33(b)(5))
a) Two parties competing for mark
(1) In Different geographic Region
(a) CL: Q of prior appropriation is legally insignificant until it appears 2nd
adopter has selected mark to copy first user. Hanover Star (1916)
(i) Can’t monopolize in markets never reached
(ii) BUT, under LA, with federal registration, have exclusive right to
use mark
(a) Registration under L.A. constitutes
(i) CONSTRUCTIVE NOTICE of use / constructive
use. § 7(c). .
(ii) Affords nationwide protection
(b) USE MUST BE CONTINUOUS. § 33(b)(5).
(b) To enjoin use, must have likelihood of confusion (this may not exist if
separate markets)
(i) Both CL & LA assume that the same mark can be used in diff’t
territories & courts will find it necessary to define scope of use.
(a) § 33(a) preserves legal defenses including prior user in
remote territories
(b) § 33(b)(5). Defense to incontestibility. Registrant is prior
user
(i) Must have adopted mark without knowledge of
registrant’s prior use
(ii) BUT knowledge can be constructive with
registration! § 7(c)
(2) In Same geographic Region
(a) Failure to license in one area does not constitute abandonment. Dawn.
A registers B uses in B
B uses in B A registers
Area C A wins b/c A A wins
registered first
Area B A wins b/c B on B wins but
notice from time B can’t
of registration. move out of
Dawn. area. BK.
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Trademarks Outline
4. Infringement
a) Likely to cause confusion, mistake, or to deceive (§ 32(1) & § 43(a)
(deception about affiliation)).
(1) Why is confusion bad?
(a) If you have a bad experience with B’s product, believing it is associated
with A, you are less likely to buy A’s product
(b) Misappropriation. A created
(2) Distinction between sections
(a) § 32(a) – Trademarks
(b) § 43(a) – Unregistered Trademarks, affiliation as to origin, sponsorship,
or approval.
(3) Tests
(a) Consumers likely to be confused? Vining.
(i) Consumer Survey.
(ii) Where consumers don’t encounter together, the existence of
minor differences that would clearly distinguish them side by side
doesn’t refute likelihood of confusion. Vining.
(b) Predominant TEST. (Vining Concurrence) Factors contributing to
likelihood of confusion:
(i) Realities of marketplace
(a) Similarity between marks in appearance & suggestion.
Ferrari.
(i) Anti-Dissection Rule = Marks judged on overall
appearance rather than components
(b) Similarity of products.
(c) Area & manner of concurrent use
(d) Degree of care likely to be exercised by consumers
(e) Strength of complainant’s mark, Distinctiveness of mark
(ii) Actual Confusion
(a) Actual confusion not necessary to establish confusion
(unless damages sought)
(iii) Intent of D to palm off
(a) Intent suggests attempt to confuse & free riding
(c) Whether the labels create the same overall impression when viewed
separately. Romm Art (Art)
(d) Consumers will mistakenly be led to believe that D’s goods are
produced or sponsored by P. RockNRoll.
(i) Picture of Museum on a product might more readily be perceived
as ornamental rather than an indicia of source
(4) Confuse who?
(a) Customers needn’t be confused, enough that others (incl. potential
customers) may be confused. Ferrari.
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Trademarks Outline
(i) Loss of rarity / exclusivity
(ii) Third parties viewing may have impression
(5) Reverse Confusion
(a) D so saturating mkt that public believes, D not P, is source of mark
b) Fair Use Defense
(1) § 1115(b)(4). Use is necessary to describe the D’s goods
c) Non Competing Goods [See also Dilution]
(1) Deceptions of origination / sponsorship (TWO THEORIES)
(a) TEST 1: Close examination of goods, D’s merchandising practice, &
evidence that consumers have actually inferred connection. Job’s
Daughters.
(i) Fair use where use of emblem is necessary to make good
(functional)
(ii) use if consumer purchased for functional use + because
inferred produced by organization.
(iii) Restatement:
(a) If consumers believe organization has authorized, then
INFRINGEMENT
(b) If consumers just use mark to indicate membership or
support, NO infringement
(b) TEST 2: Needn’t have confusion as to source where is triggering
mechanism for sale of emblem. Boston Hockey
(2) Costs of not letting be used (without owner’s permission)
(a) Consumers can’t get competitive goods; higher prices
(b) Tremendous revenues to originator
(c) less incentive to create
(d) Misappropriation type argument
(e) Prevent free riding
(f) Consumers can’t distinguish quality
(g) Should be able to recoup benefit
(3) Benefits of letting be used
(a) Only a secondary market to owner
(b) Consumers get lower prices
d) “Reasonable Precaution” / Sufficient marking should prevent
confusion
(1) Depends on circumstances
e) Standard of Liability (Inadvertent or Intentional)
(1) Strict Liability with defense of reasonably prudent purchaser confusion
H. Dilution [No confusion as to source of origin]
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Trademarks Outline
1. Purpose of Anti-Dilution
a) Prevent diminishment of established mark’s selling power
b) Misappropriation Theory. A created it.
2. Rule
a) Lanham Act § 1125(c) / § 43(c). Commercial use of famous mark
(1) Dilution Defined § 45
(a) Means the lessening of capacity of famous mark to identify & distinguish
goods, REGARDLESS OF presence or absence of –
(i) Competition between owner of mark & other parties
(ii) Likelihood of confusion, mistake, or deception
(2) Factors in dilution
(a) Degree of inherent or acquired distinctiveness
(b) Duration & extent of use of mark
(c) Duration & extent of advertising & publicity
(d) Geographical extent of trading area
(e) Channels of trade
(f) Degree of recognition of mark
(g) Nature & extent of use of similar mark by 3rd parties
(h) Whether the mark was registered
(3) Only entitled to injunctive relief UNLESS willful
(4) Ownership of valid registration under LA = complete BAR to action under
common law or State statute
(5) NOT Actionable as dilution
(a) Comparative commercial advertising or promotion to identify competing
good
(b) Noncommercial use of mark
(c) News
(6) Commercial Use.
(a) Business of registering famous marks as domain names constitutes
commercial use. Panavision.
b) Common Law / State Statutes
(1) THRESHOLD Q: Marks must be very or substantially similar
S = a I(T) + b M(T)+ c V
I(T) = information costs
M(T) = Image costs
(2) Blurring ( Affects I(T) - have to stop & think)
(a) Lexis Factors.
(i) ***Mental association between P & D’s marks. Barnum &
Bailey.
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Trademarks Outline
(a) Causal nexus between use of junior mark & dilution of
famous mark.
(ii) P’s mark must have distinctive quality capable of dilution.
(a) Strength of mark
(b) Uniqueness or secondary meaning
(iii) P must show a likelihood of dilution.
(a) Consider relevant market & extent of market.
(b) Lexis Concurrence Factors
(i) Similarity of marks
(ii) Strength of mark
(iii) Similarity of products
(a) Likelihood of first user’s entry into new market
(b) Quality of D’s product
(iv) Sophistication of customers
(v) Predatory intent
(vi) Renown of both the senior & junior marks
(3) Tarnishment (affects M(T))
(a) Distinctive mark depicted in context of sexual activity, obscenity, or
illegal activity.
(b) Hormel Test for Tarnishment
(i) P’s mark will suffer negative associations through D’s use.
(ii) Direct competitors?
(a) Non-commercial purposes OK (if not selling product
parodied). LLBean. (§ 1125(c)(4)
(iii) Parody inheres in product?
(a) Parody OK. LLBean.
(b) Consider Parody as a Weapon (to sell) or Target (to
make fun of)
3. Comparative Advertising (affects (c V)) (EXEMPTED from dilution)
a) Fair use in comparative advertising NOT actionable under §
43(c)(4)(A)
(1) Beneficial purpose of providing information
(2) Descriptive use
b) Use of an altered version of a distinctive to identify competitor’s
product & achieve a humorous effect can be dilution. Deere.
(affects M(T)) Consider:
(1) Degree to which mark is altered &
(2) Nature of the alteration (competitor with incentive to competitively gain
from alteration)
(3) BUT is this just a form of tarnishment?
I. Collateral Use / Nominative Fair Use
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Trademarks Outline
1. Where P’s is used to describe D’s product, then fair use. (§ 33(b)(4))
a) Recondition of used goods & marking with to explain origin is fair
use. Champion Spark Plugs
b) Can use to say you copied if:
(1) No misrepresentations
(2) No confusion as to source, identity or sponsorship. Chanel.
(a) Efficient
(b) Lowers information costs
2. Where P’s is used to describe P’s product, fair use IF
a) Product or service in Q cannot be readily identified without use of
b) Only so much of used as is reasonably necessary
c) User can’t suggest sponsorship New Kids.
(1) Court could have said no likelihood of confusion & fair use
3. Nominative Fair Use Defense Rejected in some courts
J. Remedies (§ 35, § 32)
1. Injunctive Relief is ordinary remedy
2. Basch. D’s Profits where (Intentional Deceptiveness): (§ 32(1) / § 35(a))
a) Unjust Enrichment by D
b) Actual Consumer confusion
c) Willful Infringer
(1) Factors to consider:
(a) Degree of certainty that D benefited
(b) Availability & adequacy of other remedies
(c) Role of D in effectuating infringement
(d) P’s laches
(e) P’s unclean hands
d) D’s profits can be rough proxy for P’s damages
(1) Unless D can show infringement did not relate to earnings
3. Thirst Aid. Reasonable Royalty
a) Criteria for determining
(1) Royalty Rates received in prior licenses by P or rates paid by D
(2) P’s licensing policies
(3) Nature & scope of D’s infringing use
(4) Special value of mark to D
(5) Profitability of D’s use
(6) Lack of viable alternatives
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Trademarks Outline
(7) Expert Ws
(8) Amount that P & D would have agreed in voluntary negotiations
b) Problems with reasonable royalty
(1) Nothing to lose from infringement, if get to pay the royalty ex post
(2) Reasonably royalty is too little
(3) P has more control during licensing process than after D’s use
(4) Judge assumes all profits come from slogan BUT that may not be true.
4. Trebling Damages Allowed BUT Can’t be punitive
5. Attorney’s Fees in exceptional cases
6. Destruction of Labels & goods
K. Contributory Infringement
1. Reasons for Contributory Infringement Doctrine
a) Easier / Cheaper to sue one person
2. Lanham Act § 32(1)(b)
a) No profits or damages unless acts committed with knowledge that
imitation is intended to be used to cause confusion.
3. Where D markets a product, D accountable if a reasonable person in D’s
position would realize he created a situation which afforded temptation or
opportunity to pass off. Coke. [not in a position to monitor]
a) D has duty to avoid intentionally inducing to pass off.
b) D has duty to avoid knowingly aiding in passing off.
4. D responsible where D knew of the infringement & had ability to control it. Nike.
L. Abandonment
1. § 45. Abandonment Defined
a) Use discontinued with intent not to resume
(1) Can be inferred from circumstances
(2) Nonuse for 3 years = prima facie evidence of abandonment
(3) Use = bona fide use
b) Generic name (or otherwise lose significance as source of origin)
(1) Purchaser motivation NOT a test
2. § 14. Cancellation
a) A mark can be canceled if abandoned
3. § 33(d). Abandonment is a defense to an infringement action
4. Abandonment important in priority action.
5. When abandoned, a mark returns to public domain
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Trademarks Outline
6. Federal mark not abandoned unless on a nation-wide basis. Dawn Donuts.
a) BUT can abandon state by state
b) Mere change in geographic designation of old mark, does not
abandon old mark, where likelihood of confusion. Colts.
M. Assignment & Licensing § 5, § 10
1. Related Company includes licensee § 5
a) Licensor must exercise reasonable control over mark
(1) Control Quality
b) Is a naked license abandonment?
2. Assignment in gross rule. can only be transferred in connection with the
assignment of particular business, with good will, & for continued use of same
class of articles. Pepsico. § 10
a) BUT shouldn’t have strict adherence, sometimes naked assignment
OK
(1) Care about welfare of public:
(a) Where transferred is to be used on new & diff’t product, can’t do it.
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Trademarks Outline
IV. Rights of Publicity
A. Policy Reasons
1. Incentives to create persona, make quality goods
2. Affects reputation
B. Common Law Right of Publicity
1. Right limited to “for purposes of trade” (Restatement)
a) Commercial Advertising, typically lose
b) Cultural / Informative use (Parody) OK
2. Restrictions very modest
a) Can communicate same ideas but just can’t copy voice
C. Common Law Misappropriation
1. Vanna White Case. Misappropriating her identity
a) BUT nothing distinctive about her identity (nothing to
misappropriate)
D. Unfair Competition § 43(a) An Alternative? (L thinks YES)
1. False Advertising - Sponsorship / Affiliation / Approval § 43(a)(1)(A)
a) In Midler, court rejects this b/c Midler is not competing
(1) Limited to firms who are competitors or potential competitors
(a) BUT what about protecting potential markets?
E. California State Statute
1. Can’t misappropriate name, voice, likeness (visual), photos, signature
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Trademarks Outline
I. THE INS CASE & MISAPPROPRIATION 1
A. THE RULE 1
B. BENEFITS OF THE MISAPPROPRIATION DOCTRINE 1
C. COSTS OF THE MISAPPROPRIATION DOCTRINE 1
D. THE REGULATION OF PUBLIC GOODS 2
II. UNFAIR COMPETITION 3
A. ADVERTISING 3
1. ECONOMICS OF ADVERTISING 3
2. FALSE ADVERTISING [SEE ALSO C. BELOW] 4
B. DISPARAGEMENT 5
1. DEFINED: ATTACK BY D ON GOODS OF P. 5
2. SOCIAL HARM 5
3. AT COMMON LAW 5
4. LANHAM ACT (§ 43(A)(1)(B)) (POST-1989) 5
5. PUFFING 6
6. DISPARAGEMENT BY CONSUMERS (FREE SPEECH) 6
7. DISPARAGEMENT BY INDEPENDENT TESTING AGENCIES 6
8. DISPARAGEMENT BY GOVERNMENTAL AGENCIES (CAN’T PROHIBIT) 6
C. LANHAM ACT § 43(A) (FALSE ADVERTISING / UNFAIR COMPETITION) 6
1. COMMON LAW [SEE ABOVE] 6
2. § 43(A) (1946 - 1989) 6
3. THE CURRENT ACT (AMENDED 1988) 6
4. ELEMENTS 7
5. STANDARD OF PROOF = STRICT LIABILITY 8
7. MONEY DAMAGES (SEE § 35) 9
8. CONSUMER REMEDIES 10
9. ECONOMIC ANALYSIS 10
D. STATE STATUTES 10
E. THE FEDERAL TRADE COMMISSION 10
1. JURISDICTION 10
2. DECEPTIVE ACTS OR PRACTICES [NO COMPETITOR NECESSARY] 10
3. UNFAIR ACTS OR PRACTICES [NEED A COMPETITOR] 11
F. FIRST AMENDMENT ARGUMENTS 11
III. TRADEMARKS 12
A. THE FUNDAMENTALS 12
1. PURPOSES OF TRADEMARK [THINK: SEARCH, EXPERIENCE, OR CREDENCE?] 12
2. ARGUMENTS AGAINST TRADEMARK 12
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Trademarks Outline
3. COMMON LAW PROTECTION V. STATUTORY PROTECTION 12
4. REASONABLE CARE TO AVOID CONFUSION 13
B. DISTINCTIVENESS 13
1. TWO WAYS OF ACQUIRING DISTINCTIVENESS [ALL MARKS]. TWO PESOS. 13
2. DESCRIPTIVE MARKS 14
3. GENERIC MARKS (SECONDARY MEANING MAY OR MAY NOT APPLY) 14
4. GEOGRAPHIC MARKS 15
5. PERSONAL NAMES § 2(E)(4) (NEED SECONDARY MEANING) 16
C. CERTIFICATION MARKS § 1127 (§ 4) 16
D. COLLECTIVE MARKS § 1127 (§ 4) 17
E. SUBJECT MATTER 17
1. FUNCTIONAL MARKS & TRADE DRESS 17
2. COLOR 19
3. IDEAS 19
F. PREEMPTION 20
G. RIGHTS OF HOLDERS OF TRADEMARKS 20
1. INCONTESTABILITY 20
2. PROBLEMS OF PRIORITY AND INFRINGEMENT 21
3. GEOGRAPHIC LIMITATIONS (§ 33(B)(5)) 22
4. INFRINGEMENT 23
H. DILUTION [NO CONFUSION AS TO SOURCE OF ORIGIN] 24
1. PURPOSE OF ANTI-DILUTION 25
2. RULE 25
3. COMPARATIVE ADVERTISING 26
I. COLLATERAL USE / NOMINATIVE FAIR USE 26
J. REMEDIES (§ 35, § 32) 27
K. CONTRIBUTORY INFRINGEMENT 28
L. ABANDONMENT 28
M. ASSIGNMENT & LICENSING § 5, § 10 29
IV. RIGHTS OF PUBLICITY 30
A. POLICY REASONS 30
B. COMMON LAW RIGHT OF PUBLICITY 30
C. COMMON LAW MISAPPROPRIATION 30
D. UNFAIR COMPETITION § 43(A) AN ALTERNATIVE? (L THINKS YES) 30
E. CALIFORNIA STATE STATUTE 30
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