Trademarks III Infringement of Trademarks Class Notes: April 2, 2003 Law 507 | Intellectual Property | Spring 2003 Professor Wagner

Today’s Agenda Priority Incontestability Infringement Likelihood of Confusion Analysis Dilution 4/2/03 Law 507 | Spring 2003

Priority Zazu Hair Designs v L’Oreal (7th Cir. 1992) Who gets the rights to a trademark that is being simultaneously used? Why does the court emphasize the need to have bona fide “use” in commerce in order to perfect a trademark right? Why does the dissent argue that L’Oreal’s knowledge defeats any possibility of priority? Shouldn’t ZHD have some rights due to its long use of the service mark? Note the 1989 revisions: allow registration for ‘intent to use’ (within time limits). What problem does this address? (Is there a constitutional problem?) 4/2/03 Law 507 | Spring 2003

Incontestability Park ‘N Fly v Dollar Park and Fly (1985) What is an ‘incontestable’ mark? What is required for incontestability? What advantages does it confer? Why would we want to provide incontestability? We don’t do this in Copyright or Patents Is this too ‘property-like’? What is (as the dissent suggests) the mark is not protectable from the outset of its registration/use? (Is there a problem?) 4/2/03 Law 507 | Spring 2003

Review: Trademark Overview Obtaining Trademarks Subject matter (categories)  Registering Marks  The Distinctiveness of Marks  Protecting Trademarks Likelihood of Confusion Analysis Dilution Defenses 4/2/03 Law 507 | Spring 2003

Likelihood of Confusion AMF v. Sleekcraft Boats (9th Cir. 1979) Consider the factors: What do they mean? Which seems most relevant? Strength of the mark; Proximity of the goods; Similarity of the marks; Evidence of actual confusion; Marketing channels used; Type of goods and degree of care used to purchase; Defendant’s intent; (note distinction with © and Patent) Likelihood of expansion of the product lines. 4/2/03 Law 507 | Spring 2003

Likelihood of Confusion Other Issues If some factors point one direction, and others point the other way, how does one resolve the likelihood of confusion issue? Who is being tested for likely confusion? (average consumer, reasonable consumer, knowledgeable consumer?) Actual confusion evidence: How much is required? What does ‘similarity’ mean? When must confusion occur? (at time of purchase, at time of interest, at time of searching?) 4/2/03 Law 507 | Spring 2003

Dilution Why offer protection against activities that (by definition) won’t confuse consumers? Is this a shift in the trademark rationale? (In what way?) What are the social benefits? Costs? 4/2/03 Law 507 | Spring 2003

15 USC 1125(c): Establishes Federal Dilution Basic requirements (Why each of these?): Mark must be famous Mark must be distinctive The alleged infringement must be a ‘use in commerce’ The alleged infringement must dilute the distinctive quality of the mark 4/2/03 Law 507 | Spring 2003

Dilution Consider the factors for dilution (what do they suggest about the goal of the statutory right?) Degree of inherent distinctiveness Duration and extent of use Duration and extent of publicity Geographical scope of use Channels for goods with which the mark is used Degree of recognition of the mark in channels in which the mark is used and those of the infringer Nature and extent of 3rd-party use Consider the exceptions on p. 627. What are they intended to protect? 4/2/03 Law 507 | Spring 2003

Dilution Nabisco, Inc. v. PF Brands (2nd Cir. 1999) What is the trademark at issue? Why is the issue dilution, rather than likelihood of confusion? (Should dilution apply where competing uses do not result in confusion?) What does the court mean by the ‘dual role’ of distinctiveness in the analysis? What does the court mean by the possibility of ‘bridging the gap’? Why does the court reject the claim that actual proof of dilution is required? 4/2/03 Law 507 | Spring 2003

Details of the Dilution Approach Types of Dilution (Why do these mean?) Blurring Tarnishment Fame What is required to show ‘fame’? What kind of evidence? Does ‘fame’ mean ‘famous within a narrow market’ or ‘generally famous’? 4/2/03 Law 507 | Spring 2003

Infringement of Trademarks 2 Next Class Trademarks IV Infringement of Trademarks 2 4/2/03 Law 507 | Spring 2003