TRADEMARKS PROF. JANICKE JULY 2007

TO BE A “MARK”: HAS TO SERVE AS A BRAND MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS F2007 Trademarks

TO BE A “MARK”: HAS TO BE USED PHYSICALLY ON THE GOODS (TRADEMARK) OR ON SIGNS, ADS, OR PAPERS CONNECTED TO SERVICE (SERVICE MARK) F2007 Trademarks

TO BE A “MARK”: THE MARKED GOODS OR SERVICES HAVE TO PASS IN COMMERCE LOCAL, FOR STATE RIGHTS INTERSTATE OR FOREIGN, FOR FEDERAL RIGHTS F2007 Trademarks

PROTECTION RIGHTS BEGIN UPON FIRST USE REGISTRATION IS UNNECESSARY CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK DONE UNDER UNFAIR COMPETITION LAWS F2007 Trademarks

PASSING/FAILING THE FIRST REQUIREMENT OF A “MARK” NOT A DISTINGUISHING BRAND EXAMPLES: F2007 Trademarks

PASSING/FAILING SECOND REQUIREMENT OF A “MARK” EXAMPLES: § 1127 F2007 Trademarks

PASSING/FAILING THIRD REQUIREMENT OF A “MARK” EXAMPLES: F2007 Trademarks

FALLING INTO THE “REGISTERED” PIT PROBLEM: 1ST USER HAS NO REGISTRATION 2ND USER GOT STATE AND FEDERAL REGISTRATIONS, TWO YEARS AGO GOODS/MARKS CONFUSINGLY SIMILAR WHO WINS? F2007 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! F2007 Trademarks

PERMANENT USE RIGHTS CONDITIONS: (1) FIRST TO USE IN A LOCALE (STATE OR LESS) (2) NO KNOWLEDGE OF PRIOR USER ELSEWHERE AT TIME OF ADOPTION F2007 Trademarks

PERMANENT USE RIGHTS FOR MANY YEARS, THE CUTOFF DATE FOR ESTABLISHING LOCAL RIGHTS WAS REGISTRATION DATE REGISTRATION PROVIDED CONSTRUCTIVE NOTICE (SEE § 1072), THEREBY BLOCKING CONDITION (2) F2007 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) AS OF THE FILING DATE F2007 Trademarks

PERMANENT USE RIGHTS ∴ REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE F2007 Trademarks

QUASI-MARKS AND NON-MARKS WALK THROUGH § 1052 THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS F2007 Trademarks

QUASI-MARKS AND NON-MARKS START WITH 1052(f): TELLS US MANY PROBLEMS ARE INCURABLE EXAMPLES: F2007 Trademarks

QUASI-MARKS AND NON-MARKS THE (e) GROUP: DESCRIPTIVE [EXAMPLE?] MISDESCRIPTIVE [EXAMPLE?] GEOGRAPHIC SURNAMES F2007 Trademarks

QUASI-MARKS AND NON-MARKS FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER) [EXAMPLES?] F2007 Trademarks

GETTING FROM QUASI TO FULL: SHOWING ACQUIRED DISTINCTIVENESS OFTEN CALLED “SECONDARY MEANING” SHOWS THE QUASI-MARK HAS ARRIVED; NOW SIGNALS SOURCE FIVE YEARS EXCLUSIVE USE MAY DO 15 USC § 1052 (f) F2007 Trademarks

LESS KNOWN TYPES COLLECTIVE MARKS CERTIFICATION MARKS TRADE / SERVICE MARKS MEMBERSHIP MARKS CERTIFICATION MARKS § 1054 F2007 Trademarks

CONFUSION LIKELIHOOD AS TO SOURCE AS TO SPONSORSHIP AS TO AFFILIATION AS TO APPROVAL F2007 Trademarks

CONFUSION LIKELIHOOD SUBSTANTIAL NUMBER OF PERSONS PROBLEM OF LANGUAGE TRANSLATION DEPENDS HOW MANY SPEAK IT IN U.S. F2007 Trademarks

FACTORS IN JUDGING LIKELIHOOD OF CONFUSION NO SINGLE FACTOR CONTROLS “SUNKIST” FOR FRESH FRUIT AND FOR DRIED FRUIT WERE OWNED BY UNRELATED COMPANIES MARKS LIKE “ACME,” “SUPERIOR, AND “NATIONAL” HAVE MANY OWNERS FAMOUS CASES HAVE CHECKLISTS F2007 Trademarks

FACTORS STRENGTH OF P’S MARK SIMILARITY OF THE MARKS HOW MUCH USE; HOW ARBITRARY SIMILARITY OF THE MARKS SIGHT SOUND SCRIPT OR DESIGN SIMILARITY OF PRODUCTS OF SERVICES F2007 Trademarks

FACTORS (CONT’D.) CHANNELS OF TRADE ADVERTISING OR PROMOTION MEDIA BAD FAITH ADOPTION SOME COURTS GIVE THIS HEAVY WEIGHT; OTHERS DON’T NATURE OF CUSTOMERS PURCHASE CONDITIONS: TIME, PRICE, ETC. F2007 Trademarks

WHO HAS THE RIGHT? THE PROBLEM OF “GRAY GOODS” ARISES FROM CORPORATE SPINOFFS [ABOUT AS FREQUENT AS MERGERS] WHEN FOREIGN MARKET IS SPUN OFF, MARKS USUALLY GO WITH ALSO FROM LICENSING [IP MAXIMIZATION] F2007 Trademarks

GRAY GOODS U.S. RULE: IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER F2007 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® F2007 Trademarks

WHAT IS NOT INFRINGEMENT OWN NAME IN BUSINESS OTHER THAN AS A MARK Cf: SPERA’S RESTAURANT TONY SPERA, PROP. TONY’S RESTAURANT F2007 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 F2007 Trademarks

N.B. STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL F2007 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 F2007 Trademarks

A WORD ABOUT DILUTION EXAMPLE: “CADILLAC” FOR CARS FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD F2007 Trademarks

A WORD ABOUT DILUTION ONLY AVAILABLE FOR “FAMOUS” MARKS NO DAMAGES NORMALLY INJUNCTIVE ONLY § 1125 (c) F2007 Trademarks

REMEDIES F2007 Trademarks

INJUNCTIVE NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS F2007 Trademarks

INJUNCTIVE PRELIMINARY PERMANENT 4,000 + TRADEMARK SUITS FILED ANNUALLY ABOUT 45 GO TO TRIAL F2007 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) F2007 Trademarks

ATTORNEY’S FEES “EXCEPTIONAL CASES” ONLY USUALLY MEANS WILLFUL INFRINGEMENT § 1117 (a) F2007 Trademarks

DESTRUCTION A NICE MEDIEVAL REMEDY ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?] § 1118 F2007 Trademarks

DEFENDANT’S REMEDIES ATTORNEY’S FEES IN EXCEPTIONAL CASES ORDER TO CANCEL REGISTRATION § 1119 F2007 Trademarks