TRADEMARKS PROF. JANICKE FALL 2017

IP Survey -- Trademarks TO BE A “MARK”: WORDS OR SYMBOL HAS TO SERVE AS A BRAND MEANING: IT HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS 2017 IP Survey -- Trademarks

IP Survey -- Trademarks TO BE A “MARK”: HAS TO BE USED PHYSICALLY: ON THE GOODS, or ON GOODS’ CONTAINERS, or ON POINT-OF-SALE DISPLAYS OF GOODS, or IF THESE METHODS ARE IMPRACTICAL, ON INVOICES OR SHIPPING DOCUMENTS, or IN CATALOGS OR WEBSITES ADVERTISING THE GOODS 2017 IP Survey -- Trademarks

OWNERSHIP OF SUCH A MARK REQUIRES USE IN COMMERCE THINKING OF THE MARK WILL NOT SUFFICE NO USE = NO OWNERSHIP 2017 IP Survey -- Trademarks

IP Survey -- Trademarks FOR A SERVICE MARK, THE USE CAN BE: ON SIGNS, ADS, OR PAPERS CONNECTED TO THE SERVICE 2017 IP Survey -- Trademarks

IP Survey -- Trademarks TO OWN A “MARK”: THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE LOCAL, FOR STATE RIGHTS INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS 2017 IP Survey -- Trademarks

IP Survey -- Trademarks FEDERAL USE IN COMMERCE: CAN BE ACTUAL CAN BE BONA FIDE INTENDED (WITH TIME LIMITS) 2017 IP Survey -- Trademarks

IP Survey -- Trademarks PROTECTION RIGHTS BEGIN UPON FIRST USE [ACTUAL OR CONSTRUCTIVE BY FILING] REGISTRATION IS NOT NECESSARY CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK DONE UNDER UNFAIR COMPETITION PROVISION OF THE TRADEMARK ACT 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CASE BLUE BELL v. FARAH 2017 IP Survey -- Trademarks

IP Survey -- Trademarks WHAT IS INFRINGEMENT? USE, IN COMMERCE, OF A MARK IN SUCH MANNER, CONSIDERING THE GOODS OR SERVICES INVOLVED, AS TO CREATE A LIKELIHOOD OF CONFUSION AMONG PURCHASERS 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CONFUSION LIKELIHOOD AS TO SOURCE AS TO SPONSORSHIP AS TO AFFILIATION AS TO APPROVAL 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CONFUSION LIKELIHOOD SUBSTANTIAL NUMBER OF PERSONS PROBLEM OF LANGUAGE TRANSLATION DEPENDS HOW MANY SPEAK IT IN U.S. 2017 IP Survey -- Trademarks

STRONG-WEAK MARKS FOR JUDGING LIKELIHOOD OF CONFUSION #1 -- COINED (MEANINGLESS WORDS) -- e.g., KODAK, OREO: STRONGEST OF ALL ENTITLED TO THE WIDEST SCOPE OF PROTECTION MODAK, DODAK, KODAR, FOR FILM OR DOREO FOR COOKIES WILL BE HELD INFRINGING 2017 IP Survey -- Trademarks

IP Survey -- Trademarks #2 -- ARBITRARY – e.g. APPLE, SUN, SHELL: ALSO VERY STRONG FOR COMMUNICATION DEVICES AND COMPUTERS (APPLE), OR FOR OIL PRODUCTS (SUN, SHELL) NOTE: SUN ALSO ARBITRARY FOR SOFTWARE (SUN MICROSYSTEMS) 2017 IP Survey -- Trademarks

IP Survey -- Trademarks JACK-IN-THE-BOX RITZ 2017 IP Survey -- Trademarks

IP Survey -- Trademarks #3 -- SUGGESTIVE (e.g. MILKY WAY; COPPERTONE) – OK, BUT WEAKER “CREAMY WAY,” “BRONZETONE” MIGHT BE HELD NONINFRINGING #4 -- DESCRIPTIVE (e.g. TASTEE BREAD, SUPERIOR WATERBEDS), and SURNAMES (WATERMAN FOR PENS, FORD FOR CARS) ARE NOT PROTECTED RIGHT AWAY ARE PROTECTED WHEN THEY HAVE ACQUIRED DISTINCTIVENESS 2017 IP Survey -- Trademarks

IP Survey -- Trademarks NOTE: “DESCRIPTIVE” INCLUDES GEOG. DESCRIPTIVE (e.g. SOUTHWEST FOR AIRLINE SERVICES; HOUSTON CHRONICLE FOR NEWSPAPERS) WERE NOT PROTECTED (OWNED) AT FIRST 2017 IP Survey -- Trademarks

IP Survey -- Trademarks #5 -- GENERIC NAME OF ARTICLE (e.g. ASPIRIN) CANNOT SERVE AS A MARK CANNOT ACQUIRE DISTINCTIVENESS – IT’S PART OF THE LANGUAGE 2017 IP Survey -- Trademarks

INFRINGEMENT: LIKELIHOOD OF CONFUSION CASES XTREME [PART 1] STREETWISE QUILL 2017 IP Survey -- Trademarks

BENEFITS OF REGISTRATION WHILE NOT NEEDED FOR OWNING EXCLUSIVE RIGHT TO USE A MARK, OR FOR SUING INFRINGERS, THERE ARE MANY BENEFITS TO A FEDERAL REGISTRATION: BY FILING AN APPLICATION, CAN RESERVE A MARK BASED ON INTENDED USE IF REGISTERED, EXCLUSIVE RIGHT TO USE THE MARK IS PRESUMED “INCONTESTABLE” AFTER 5 YEARS 2017 IP Survey -- Trademarks

(MORE BENEFITS OF FED. REGISTRATION) IN ADDITION TO OWNERSHIP, VALIDITY OF THE MARK IS PRESUMED e.g., NOT CONFUSINGLY SIMILAR TO MARK OF AN EARLIER USER U.S. CUSTOMS SERVICE WILL ASSIST AGAINST INFRINGING IMPORTATIONS 2017 IP Survey -- Trademarks

IP Survey -- Trademarks “RESERVING” A MARK CAN NOW FILE APPL. TO REGISTER BASED ON INTENT TO USE PROVIDES CONSTRUCTIVE USE AS OF FILING DATE MUST ACTUALLY USE IN COMMERCE PRIOR TO REGISTRATION 2017 IP Survey -- Trademarks

TIME LIMITS FOR INTENT-TO-USE APPLICATIONS APPLICATION IS EXAMINED IN THE USUAL WAY IF O.K., A NOTICE OF ALLOWANCE OF REGISTRATION WILL BE SENT APPLICANT MUST ACTUALLY USE, AND FILE AFFIDAVIT OF USE, WITHIN 6 MONTHS OF THE NOTICE CAN BE EXTENDED BY PETITION, UP TO 24 MONTHS 2017 IP Survey -- Trademarks

IP Survey -- Trademarks INTENT-TO-USE IF THE FAVORED PROCEDURE FOR CLIENTS TODAY GIVES A CLUE ABOUT REGISTRABILITY, PRIOR TO SPENDING MONEY ADVERTISING THE BRAND GIVES A CHANCE FOR CHANGE-OF-MIND, WITHOUT SERIOUS EXPENDITURE [TM APPL. FILING FEE: $325 ONLINE; $375 IN PAPER] 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CASE PARK ’N FLY 2017 IP Survey -- Trademarks

IP Survey -- Trademarks EXAMPLES OF MARKS 2017 IP Survey -- Trademarks

IP Survey -- Trademarks TRADEMARK (FOR CONTAINER OF SCOTCH) 2017 IP Survey -- Trademarks

IP Survey -- Trademarks COLLECTIVE MARK (ALUMNI): 2017 IP Survey -- Trademarks

IP Survey -- Trademarks SERVICE MARK (OILFIELD FIRE-FIGHTING): 2017 IP Survey -- Trademarks

IP Survey -- Trademarks 11965 HP PRODUCTS, an Ohio company tubing and fittings for conveyors 2017 IP Survey -- Trademarks

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IP Survey -- Trademarks COLLECTIVE MARK: 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CERTIFICATION MARK FOR CLOTHING: 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CASE QUALITEX 2017 IP Survey -- Trademarks

NATURE OF RIGHTS IN MARKS PREVENT OTHERS FROM USING SIMILAR MARK WHERE CONFUSION WOULD BE LIKELY NOT A RIGHT TO PREVENT ALL USES: “CADILLAC” FOR CARS AND DOG FOOD “CHAMPION” FOR PAPER AND BOXING GLOVES AND SPARK PLUGS 2017 IP Survey -- Trademarks

DURATION OF EXCLUSIVE RIGHT IN A MARK AS LONG AS YOU ARE USING IT IN COMMERCE, PROVIDED - - IT DOES NOT BECOME GENERIC IT DOES NOT LOSE ITS CHARACTER AS SINGLE-SOURCE INDICATOR 2017 IP Survey -- Trademarks

REITERATING THE LEGAL BENEFITS OF REGISTRATION PRIMA FACIE EVIDENCE OF EXCLUSIVE RIGHT TO USE CONSTRUCTIVE USE EVERYWHERE, AS OF THE FILING DATE STARTS FIVE-YEAR CLOCK TO INCONTESTABILITY 2017 IP Survey -- Trademarks

PRACTICAL BENEFIT OF REGISTRATION OTHERS WILL FIND OUT ABOUT YOUR RIGHTS, AND WON’T ADOPT SIMILAR MARK CHEAP POLICING 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CASE SLOPPY JOE’S 2017 IP Survey -- Trademarks

FALLING INTO THE “REGISTERED” PIT PROBLEM: 1ST USER HAS NO REGISTRATION 2ND USER GOT STATE AND FEDERAL REGISTRATIONS, TWO YEARS AGO GOODS and MARKS ARE CONFUSINGLY SIMILAR WHO WINS? 2017 IP Survey -- Trademarks

THE THORN: PERMANENT LOCAL USE RIGHTS THE ONE BIG PROBLEM FOR THE FIRST USER IN COMMERCE SECOND USER CAN GET PERMANENT LOCAL RIGHTS TO USE IF CONFUSION, FIRST USER MUST STAY OUT! 2017 IP Survey -- Trademarks

IP Survey -- Trademarks PERMANENT USE RIGHTS LEGAL REQUIREMENTS: (1) 2ND USER IS FIRST TO USE IN A LOCALE (STATES OR PARTS THEREOF) (2) 2ND USER HAS NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF 2ND USER’S ADOPTION 2017 IP Survey -- Trademarks

IP Survey -- Trademarks PERMANENT USE RIGHTS FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS THE FEDERAL REGISTRATION DATE REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2) 2017 IP Survey -- Trademarks

IP Survey -- Trademarks PERMANENT USE RIGHTS NOW, CONGRESS HAS PROVIDED THAT A FEDERAL REGISTRATION CONSTITUTES CONSTRUCTIVE USE EVERYWHERE AS OF THE FILING DATE (§1057(c)) THIS KILLS CONDITION (1) FIRST LOCAL USER AFTER THE FED. FILING DATE 2017 IP Survey -- Trademarks

IP Survey -- Trademarks PERMANENT USE RIGHTS REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE, BECAUSE: THE POSSIBILITY OF CREATING NEW LOCAL RIGHTS ENDED AT THE FILING DATE i.e., 1ST USER IS DEEMED TO BE USING EVERYWHERE 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CASE MISTER DONUT 2017 IP Survey -- Trademarks

QUASI-MARKS AND NON-MARKS WALK THROUGH § 1052 THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS 2017 IP Survey -- Trademarks

QUASI-MARKS AND NON-MARKS START WITH 1052 (a) - (d): TELLS US MANY PROBLEMS ARE INCURABLE 2017 IP Survey -- Trademarks

QUASI-MARKS AND NON-MARKS THE (e) GROUP – SOME ARE CURABLE: DESCRIPTIVE GEOGRAPHIC SURNAMES SOME NOT CURABLE: DECEPTIVELY MISDESCRIPTIVE 2017 IP Survey -- Trademarks

QUASI-MARKS AND NON-MARKS FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER) EXAMPLE: SHAPE OF A DESK LAMP THIS OBSTACLE CANNOT BE CURED 2017 IP Survey -- Trademarks

WHO HAS THE RIGHT? THE PROBLEM OF “GRAY GOODS” MEANING OF GRAY GOODS: GOODS THAT WERE AUTHENTIC AT POINT OF FIRST SALE, BUT WERE NOT INTENDED TO MOVE ACROSS BORDERS PRICING CAN BE CONSIDERABLY LOWER IN FIRST SALE 2017 IP Survey -- Trademarks

IP Survey -- Trademarks ATTRACTIVE TO BROKER-TYPE BUYERS / RESELLERS, WHO BRING THE GOODS HERE E.G., MERCEDES CARS BOUGHT IN GREECE, SHIPPED HERE AND RESOLD COMPLAINERS: DISTRIBUTORS, DEALERS, AND OTHER MIDDLEMEN CONNECTED TO THE U.S. MARK OWNER 2017 IP Survey -- Trademarks

IP Survey -- Trademarks WHY DIFFERENT MARK OWNERS SOMETIMES? ARISES FROM CORPORATE SELLOFFS OF LINES OF BUSINESS IN SOME COUNTRIES BUT NOT OTHERS WHEN FOREIGN BUSINESS IS SOLD OFF, MARKS USUALLY GO WITH IT CAN ALSO ARISE FROM LICENSING [IP MAXIMIZATION] 2017 IP Survey -- Trademarks

IP Survey -- Trademarks GRAY GOODS U.S. RULE: IF MARK OWNER IN SOURCE COUNTRY AND U.S. IS SAME OR RELATED COMPANY, NO RELIEF AGAINST GRAY IMPORTATION IF MARK OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER THAN IN U.S. ORIGIN 2017 IP Survey -- Trademarks

WHAT IS NOT INFRINGEMENT FAIR USE TO DESCRIBE: JANICKE’S COMPUTER RENTAL WE RENT ALL TYPES, INCLUDING COMPAQ®, IBM®, AND DELL® § 1115 (4) JANICKE’S COMPUTER RENTAL WE RENT ALL TYPES INCLUDING COMPAQ® AND IBM® 2017 IP Survey -- Trademarks

IP Survey -- Trademarks N.B. NO GENERAL RIGHT TO USE YOUR OWN NAME IN BUSINESS MOST ATTEMPTS FAIL NO POINT IN CHANGING YOUR NAME TO JOHNNY WALKER IF YOU ARE GOING TO SELL WHISKY 2017 IP Survey -- Trademarks

IP Survey -- Trademarks N.B. STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL >>> 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CASE AMBASSADOR EAST v. ORSATTI 2017 IP Survey -- Trademarks

IP Survey -- Trademarks A WORD ABOUT DILUTION WHEN THERE IS NO INFRINGEMENT BECAUSE NO LIKELIHOOD OF CONFUSION BUT THE ACTS OF D SOMEHOW CHEAPEN OR TARNISH OR REDUCE THE VALUE OF P’S MARK 2017 IP Survey -- Trademarks

IP Survey -- Trademarks A WORD ABOUT DILUTION A MADE-UP EXAMPLE: “CADILLAC” FOR CARS FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD 2017 IP Survey -- Trademarks

IP Survey -- Trademarks A WORD ABOUT DILUTION DILUTION ACTION AVAILABLE ONLY FOR “FAMOUS” MARKS NO DAMAGES NORMALLY INJUNCTIVE ONLY § 1125 (c) 2017 IP Survey -- Trademarks

IP Survey -- Trademarks REMEDIES 2017 IP Survey -- Trademarks

IP Survey -- Trademarks INJUNCTIVE NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE FEE-COLLECTING BUSINESS 2017 IP Survey -- Trademarks

IP Survey -- Trademarks INJUNCTIVE PRELIMINARY PERMANENT §1116 (a) ABOUT 4,000 TRADEMARK SUITS FILED ANNUALLY ABOUT 45 GO TO TRIAL SETTLEMENTS OFTEN INCLUDE CONSENT INJUNCTION 2017 IP Survey -- Trademarks

IP Survey -- Trademarks MONETARY D’S PROFITS OR P’S DAMAGES [DIFFICULT TO SHOW] COURT CAN TREBLE P’S DAMAGES IF D’S PROFITS AS REMEDY IS TOO SMALL/LARGE, COURT CAN ENTER A “JUST” AMOUNT § 1117 (a) 2017 IP Survey -- Trademarks

IP Survey -- Trademarks ATTORNEY’S FEES “EXCEPTIONAL CASES” ONLY USUALLY MEANS WILLFUL INFRINGEMENT § 1117 (a) 2017 IP Survey -- Trademarks

IP Survey -- Trademarks DESTRUCTION A NICE MEDIEVAL REMEDY ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?] § 1118 2017 IP Survey -- Trademarks

IP Survey -- Trademarks DEFENDANT’S REMEDIES ATTORNEY’S FEES IN EXCEPTIONAL CASES § 1117 (a) ORDER TO CANCEL REGISTRATION § 1119 2017 IP Survey -- Trademarks

IP Survey -- Trademarks CASES: KELLOGG XTREME [PART 2] MATAL v. TAM 2017 IP Survey -- Trademarks