Trademark - St. Cloud State University

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14 déc. 2013 (il y a 3 années et 6 mois)

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Al
Johnson’s
Swedish
Restaurant
Sister Bay,
WI

Can a restaurant stop other
restaurants from having goats on
the roof?

Sept. 2010 Lawsuit


Trademark Law

AOL v. ATT



You’ve Got Mail”

“IM”

“Buddy List”

Should you be able to trademark,



“You’ve Got Mail,” “IM”, “Buddy List”

“Just Do It” ?

“That’s Hot”

“You’re Fired”

WhoDat, Inc. wrote a song “Who Dat Say They Gonna Beat Dem Saints”

NFL claims it owns the trademark

A lot of people believe it belongs to the city of New Orleans

Trademark the word “Yes”?

Gubernatorial candidate Paul Thissen complained that
Margaret Anderson Kelliher stole the word “yes” from
her. Jan 31, 2010 Star Trib Article

Trademark Defined



Word, symbol, name device or combination
thereof used by a manufacturer or merchant
to identity and distinguish its good.


Federal law and state law

Registered as a trademark

Types of Trademarks


Letters/Words


Apple


IBM


NBC


Pictures or drawings





Logos




Combinations (letters, logos, pictures)




GOOGLE V. BLADE RUNNER


Google “Nexus” phone. Trademark in Nexus


Daughter of author Mr. Dick is challenging Google’s use of term nexus because
of Mr. Dick’s 1968 novel, “Do Androids Dream of Electric Sheep?”


The book follows a bounty hunter chasing androids knows as Nexus
-
6 models.
Daughter says Nexus One runs Google's Android operating system


too much
to be a coincidence. Confusion?

Google Nexus


Phone

Protected?

Lindt Bunny

Hauswirth Bunny

Bunny Lawsuit (EU)


Trade Dress


Lindt sued Hauswirth for tradement infringement. What do you
think?


Hauswith scoured German libraries and found references to
chocolate bunnies pre
-
dating Lindt. i.e. Lindt acted in bad faith
(EU Standard used


not US) getting a trademark long used.


Plus Hauswith argued bunnies are shaped roughly the same
because of production issues


not Trademark infringement
because the shape is functional

Notice of Trademark



Registered in U.S. Patent and Trademark
Office


®


TM


User is using the item as a trademark
but has not filed


SM


same for services

St. Cloud Trademarks

7

7

Four Types of Trademark


Trademark


Service Mark
(for services


otherwise
same)


Certification Mark


Underwriters laboratories


Good Housekeeping Seal of Approval


Additional rules to issue these marks


Collective Mark


Membership within an organization

Presentation Case, Trademark Protection


Color as
a Mark,
Qualitex Co. , v. Jacobson Products

Dry cleaning press pad

Group 4 & 1 Presentation

Color as a Trademark Continued


Each of these involved a trademark lawsuit over
color, what do you think the court decided? Why?

“Red Book” a
legal publication

Red and White
Can

Multi
-
color
package

Trademark Search


Search


Patent and Trademark Office
maintains an on
-
line
database.


Domain name search


State incorporation search


Cost $275
-
$375

Trademark Registration


Registration


You can register a trademark but it’s not required to register


Must be used across state, territorial or international lines


Advantages


Notice to world


Evidence of ownership of the Mark


Allows for suit in Federal court


Makes for the registrant’s right to the mark virtually incontestable after five years
continuous use


US Customs will help prevent illegal imports


Provide basis for obtaining registration in foreign countries


Application


Good for 10 years


file an affidavit in 6
th

year showing it’s still in use


Intend to Use


6 months to begin use

Presentation Case Trade Dress:
Two Pesos, Inc. v.
Taco Cabana, Inc.


Groups 6 & 7 Presentation

Strength of Trademarks

Classification

Protection

Inherently Distinctive



Fanciful Marks



Arbitrary Marks



Suggestive Marks

Strong protection

Not Inherently Distinctive


Descriptive Marks


Geographic Terms


Personal Names

Protected once secondary
meaning arises

Non
-
distinctive
-

Generic

Not protected

Identify each as “arbitrary,” “fanciful,” “suggestive,”
“descriptive,” or “generic” End
-
of
-
Chapter Q 2



Most common reasons that marks
are refused trademark registration:



1
. Scandalous.
the proposed mark consists of or comprises immoral, deceptive, or scandalous
matter

2.

False Connection to Person, Institution, Belief,
…the proposed mark may disparage or
falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols,
or bring them into contempt or disrepute

3. Flag or Insignia.
the proposed mark consists of or comprises the flag or coat of arms, or other
insignia of the United States, or of any State or municipality, or of any foreign nation

4. Person’s Name/President’s Name.
the proposed mark consists of or comprises a name, portrait
or signature identifying a particular living individual, except by that individual's written consent; or the
name, signature, or portrait of a deceased President of the United States during the life of his widow,
if any, except by the written consent of the widow

5. Too Close to Existing Mark.
the proposed mark so resembles a mark already registered in the
Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely
to cause confusion, mistake, or deception

6. Descriptive Only.
the proposed mark is merely descriptive or deceptively
misdescriptive

of
applicant's goods or services

7. Geographically Descriptive Only.
the proposed mark is primarily geographically descriptive or
deceptively geographically
misdescriptive

of applicant's goods or services

8. Surname.
the proposed mark is primarily merely a surname; and

9. Functional.
matter that, as a whole, is functional.


Disparaging or Scandalous Marks

-

Actions brought against the following. What do
you think?

Marijuana
Trademarks

WSJ 7
-
19
-
2010



Maui Wowie


Chronic


Budtrader


Pot
-
N

Drama and the Law Tape

Rally Pizza

Link to video online

Presentation Case
:TrafFix Devices, Inc (P). v.
Marketing Displays, Inc
.(MDI) U.S. 23 (2001), p. 218

Groups 2 & 3

WindMaster by MDI

WindBuster by TrafFix

MDI Originally
Created

TraFix did this
second

Trade

Dress


Distinctive Attributes


Package Shape
-

Coca
-
cola bottle shape


Color


Sweet
-
n
-
Low


pink coloring


Décor

how a store is presented


Package or Product Design


Package does not require a showing of secondary
meaning


Product design requires a showing of secondary
meaning


Physical Features


Distinctive and non
-
functional


If functional then patent law applies


companies
cannot use trademark law to obtain protection on
functional features.


End
-
of
-
chapter Q: 11, Leatherman Tool v. Cooper
Industries, Cooper copied Leatherman’s tool “almost exactly”
Leatherman sued for violation of trade dress


result?

End
-
of
-
chapter, Q 10 Disc
Golf Assoc. (DGA)
manufactures golf “holes”
and its patent expired in
1994. Champion Discs, a
competitor copied the
“hole” and DGA sued for
trade dress infringement.

Result?

Trade Dress Protection


Unregistered Trade Dress,
Wal
-
Mart v. Samara Brothers

Samara Brother’s Clothing Samples

Marlboro Case


Facts: Marlboro sued King Mountain
cigarettes for trade dress infringement.

Pebble Beach v. Tour 18 End
-
of
-
Chapter Q 6


Tour 18 replicates famous golf courses


Promotional material, tee markers, course signs
and dinning room menu all reference famous
courses


“Pebble Beach” French toast and
Pinehurst tuna salad.


Copied Harbour Town’s famous 18
th

light house
hole.


Famous courses sued for trademark and trade
dress infringement


what’s the result?

Harbour Town Lighthouse Hole

Hooters Case


Facts.

Winghouse dressed its servers in a black running shorts
and a black tank top similar to Hooters except the color.


Questions


Should Hooters be entitled to Trade Dress Protection?
Why?


Is the “Beachy Décor” Protectable Trade Dress? Why?


What about trademark? On what?


Hooters of America, Inc. v. Winghouse of Florida
, U.S. District
Court Middle District of Florida, Orlando Florida, Case No: 6:03
-
cv
-
116
-
Orl
-
22JGG, (2004


Read Quote from Judge


Appealed and confirmed 2007



Counterfeiting


Aggressive form of trademark infringement


Treble damages


Criminal penalties


$1 million per counterfeit mark


Fines up to $15 million


Prison terms up to 20 years


Beijing Silk Market


US Customs



Seize and Destroy, or


Remove trademark and sell


$93 Million Seized.
U.S. Customs seized over $93 million worth of merchandise
which infringed Intellectual Property Rights (IPR). 2005



Clothing = $39 Million.
Clothing, handbags and footwear comprised over forty
percent of the total merchandise seized, accounting for over $39 million worth of
merchandise.



Drugs, Cigarettes, Toys, Electronics = $27 Million.
Counterfeit pharmaceuticals,
cigarettes, toys, and consumer electronics were a close second, accounting for thirty
nine percent of the seized merchandise, worth over $27 million.



At the midpoint of 2006
, the U.S. Department of Homeland Security already
seized almost 6,000 shipments

up seventy two percent over the same period in
2005.

Presentation Case:
Venture Tape Corp (P). v.
McGills glass Warehouse (D)

(1
st
. Cir 2008), p. 224

Groups 8 & 5

Versus

Infringement


Likelihood of Confusion Test


Strength of Mark


Similarity


Similarity of products


Likelihood they will enter each other’s
markets


The extent of actual confusion


The defendant’s lack of good faith in
adopting the mark


The quality of defendant’s product


The sophistication of the buyer (more
sophisticated, more expensive, less
likely confusion)

Apple Computer is
entitled to use the
apple logo on its
iTunes Music Store
over objections from
Apple Corps, Ltd,
the guardian of the
Beathles

WSJ, 5/9/06

Apple Records Logo

930 start here thurs

Dilution


Definition:

the lessening of the capacity of a famous mark to identify and distinguish goods or services,
regardless of the presence or absence of (1) competition between the owner of the famous mark and other
parties; or (2) the likelihood of confusion, mistake or deception


Why an Issue.
Famous marks cast a long shadow and are entitled to protection against dilution.


Communicative Clarity


Mark easier to remember


without clutter of similar marks


Memories of consumers easier to recall and associate with mark


Makes the brand more visible


Must show mark is famous


The defendant adopted the mark after the plaintiff's mark became famous


The defendant's mark dilutes the plaintiff’s mark by diminishing the capacity of the mark to identify and distinguish
goods and services


Elements to show mark is famous


Distinctiveness of mark


Duration and extent of use of the mark


Extent of advertising of mark


The geographical area of trading of the mark


The channels of trade


The degree of recognition in the channels of trade


The nature and extent of use of the same or similar mark by others


Whether the mark is registered


Exceptions


Comparative advertising


Noncommercial use


News reporting

Examples:


Toys R US example: "Guns are Us" or
"Guns Are We.“ FRIES “R” US in


Victoria’s Secret v. Victor’s Secret


changed to Victor’s Little Secret

Victor’s Little Secret

Mini Golf Hole

Dilution


Tarnishment and Blurring


Tarnishment


AdultsRUs


Candyland


Buttwiser


Bugwiser


Blurring.
Occurs when, because of the junior’s mark, reference to the mark now brings to mind two
users, where previously only the senior user came to mind.


Test


Plaintiff’s mark is famous


Defendant adopted mark after plaintiff


The use of defendant’s mark causes dilution


Defendant's use of the mark is commercial in nature


Lexis v. Lexus


Utah “Greatest Snow on Earth”


Court Test


Similarity of the marks


Similarity of the products


Sophistication of consumers


Predatory intent of defendants


Renown of the senior mark


Renown of the junior mark

McDonald’s lost
lawsuit in Malaysia
over McCurry

Sept 2009

Ford F150

Ferrari F150

Feb 2011 Dispute

Lost Trademarks


Lost


Trampoline


Kerosene


Corn Flakes


Yo
-
Yo


Escalator


At Risk


Kleenex, From Web Site
“These KLEENEX® Facial Tissues have
softness, strength and absorbency for your everyday needs.”


Frisbee, from web site
“Whether you're at the beach, lake, or park


keep the party alive with an original Frisbee® disc! “


Xerox


now protected through better effort


see book


Protecting a Mark


Use as an adjective


not a noun


“Rollerblade in
-
line skates”


Never use a verb


“I am Rollerblading” “FedEx it” “Xerox it”


Expand use into more products


Track ad expenditures


Register


Use continuously


Register infringing domains


Engage watch services

Notice

“Brand”

End
-
of
-
Chapter Q
8Harley
-
Davidson “Hog”

Logo from Grottanelli’s (the Hog
Farm’s owner) web site

200 start here thurs

Defenses to Infringement Cases


Fair Use


manner
used


Good faith


Likely
confusion


Surname


Parody


Examples of Bad Faith?

Chinese Company

Overseas Co.

Honga
(motorcycles)

Honda
(motorcycles)

Chery (cars)

Chevy (cars)

Wumart (retail)

Wal
-
Mart (retail)

Redberry (e
-
mail
devise)

Blackberry (e
-
mail
devise)

Shanghai
Xingbake (coffee)

Starbuck
Xingbake (coffee)

Source: WSJ 10/19/06

Presentation Case
: Mattel, Inc.(P) v. MCA
Records, Inc.(D)

(9
th

Cir), p. 221

Groups 10 & 11


Versus

http://www.youtube.com/watch?v=ZyhrYis509A


Jordache v. Hogg Wy
ld

Lardashe jeans with a pig’s head and feet sticking out of the
pocket



Hogg Wyld argued that it had
chosen the “Lardashe” as a more
polite variant of a childhood
nickname of one of its founders, and
that it had not intended any
similarity with the Jordache mark.”


Clavin Swine, Sow
-
Soon and
Horse’s ashe

North Face Tag Line: “Never Stop Exploring”

South Butt Tag Line: “Never Stop Relaxing”



Hormel Foods v. Jim
Henson
(Muppets creator)
End
-
of
-
Chapter Q:4


Video
-
Spa’am v Spam


What are the likely causes of action?


Defenses?


How would you resolve this case?



Read from case


Experts on case


Causes of Action

Defenses to Trademark
Infringement


Ebay Case


Tffany sued Ebay for selling fakes


Louis Vuitton won similar case against
EBbay in France


Ebay won in U.S.


Ebay promptly removed counterfeits
when notified but did not do so at time of
placement.


“This ruling appropriately established that
protecting trademarks is the primary
burden of rights owners


not
marketplaces like Ebay” Rob Chesnut
Legal Counsel for EBAY


Remedies


Injunction


Actual damages


Profits infringer made


Treble damages


reluctant to do so unless
willful and necessary to recover costs


Attorneys fees in exceptional cases

Re
-
Importation



Company exports


Often for lower prices for exports


Desire to expand market share


Maybe less income in other market


No expense for advertising in other market


Does not want goods sold in U.S.


Re
-
Importer brings them back


Not a trademark or copyright violation because actual goods from
trademarked company


Material Differences test


If goods are materially different then it is a violation


Cabbage Patch Kids with Spanish names meant for Spain


US Video with foreign language instructions


Notice language

Cyber squatting

An arbitrator for the United Nations' patent agency, WIPO, ruled that
New York
-
based Keith Malley must cede control of the
"thesimpsonsmovie.com" site to Twentieth Century Fox,

Domain Name Search

http://smallbusiness.yahoo.com/domains/



Nike suit to get justdoit.net (it
owns .com and .org)



“sucks.com”


ballysucks.com,
Lucentsucks.com,
chasebanksucks.com



Trademark



Person’s Name

See Appropriation

Facts:


Joseph Abboud, a famous and successful
designer in men’s suits, sold the trademark
to his company, Joseph Abboud, for $65
Million in 2000.


Abboud in August of 2007 announced the
launch of jaz, a new company selling suits.


Abbound plans on using “a new composition
by designer Joseph Abboud.”


New suits more expensive $895 starting
price versus $695.


New trademark holder took out an ad in a
magazine that Abboud would likely see that
said
“the finest trademark lawyers in the
world wear Joseph Abboud.”



Discussion Questions


Can Abboud use the phrase with his name
in it? What are the issues?

WSJ August 6, 2007
Can and Should Charities Protect
Their Trademarks?


“For the Cure”


“Kites for the Cure”


Extra slides

International Issues


US first to use the mark


Most other countries


first to register


Typically must use the mark within reasonable
time period 3
-
5 years

Consumer Protection Law



Protect Consumers.

The primary function
of trademark law is to protect consumers
from deception


not to protect the value of
the trademark.


Importance of Brand


Recent Example


Use of contaminated ingredients from China


China’s relative lack of brands

When to Hire an Attorney for
Trademark


Review List of When to Hire an Attorney

Parody Example

End
-
of
-
Chapter Q: 14


Haute Diggity Dog sells
Chewy Vuiton


Louis Vuitton sues for
trademark infringement


Unlikely to confuse


Parody


WSJ 2007