Intellectual Property Boston College Law School March 30, 2009 Trademark – Infringement

Advantages of Registration Nationwide constructive use - priority Nationwide constructive notice Possibility of achieving incontestability Presumption of validity at trial Right to sue in federal court Availability of extra remedies (e.g. attorney fees, treble damages, border exclusion …)

Infringement Lanham Act §32(1) (15 U.S.C. §1114): –Any person who shall, without the consent of the registrant - (a) use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive … shall be liable in a civil action by the registrant for the remedies hereinafter provided.

1-800-Contacts v. WhenU

Keyword Buys

Infringement Initial Questions –Issue of fact or issue of law? –Who must be confused? –How much confusion must there be? –Confused as to what?

Likelihood of Confusion Typical Factors (e.g. Polaroid, Sleekcraft, etc.) –Strength of mark –Proximity of goods –Similarity of marks –Actual confusion –Marketing channels –Types of goods and consumer care –Defendant’s intent –Likelihood of expansion in product lines

AMF v. Sleekcraft AMF “SLICKCRAFT” Nescher “SLEEKCRAFT”

Examples of Similarity Sight –Squirt v. Quirst (softdrink) –Cartier v. Cattier (cosmetics) –Tornado v. Vornado (appliances) Sound –Cygon v. Phygon (insecticide) –Huggies v. Dougies (diapers) –Bonamine v. Dramamine (drugs) Meaning –Cyclone v. Tornado (link fencing) –Apple v. Pineapple (computers –Pledge v. Promise (furniture polish)

Infringement Types of confusion –Product (e.g. Mike shoes) –Source (e.g. Nike mittens) –Sponsorship (e.g. Nike on soup can) –Initial interest (e.g. “buy Nike’s here”) –Post-sale confusion –Reverse confusion

Problem 5-5 Factors –Strength of mark –Proximity of goods –Similarity of marks –Actual confusion –Marketing channels –Types of goods and consumer care –Defendant’s intent –Likelihood of expansion in product lines

Private Labels

Dilution Classic examples –KODAK bicycles –BUICK aspirin –DUPONT shoes

Federal Dilution Lanham Act §43(c) –(1) [T]he owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who … commences use of a mark … in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark

Nabisco v. PF Brands

Elements of dilution claim –(1) Famous mark –(2) Distinctive mark –(3) Junior mark used in commerce –(4) Used after senior mark famous –(5) Dilutes distinctive character of senior mark

Nabisco v. PF Brands Dilution factors (pre-2006) –Distinctiveness –Similarity of marks –Proximity of goods –Interrelationship of above elements –Shared consumers –Sophistication of consumers –Actual confusion –Adjectival or referential use

Issues with Dilution Standard for protection –Actual dilution or likelihood of dilution? –Tarnishment? Marks entitled to protection –Niche fame or nationwide fame? –Inherent or acquired distinctiveness?

Federal Dilution Lanham Act §43(c) –(1) [T]he owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who … commences use of a mark … in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark

Federal Dilution Lanham Act §43(c) –(B) `dilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: (i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark.

Federal Dilution Lanham Act §43(c) –(C) `dilution by tarnishment' is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

Famous? Arthur the Aardvark Clue (board game) Candyland (board game) Hotmail (website) Children’s Place (store) The Sporting News (mag) WaWa (grocery) Star Market (grocery) Famous Not famous Famous Not famous Famous Not famous

Federal Dilution Lanham Act §43(c) –(2)(A) a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: (i) The duration, extent, and geographic reach of advertising and publicity of the mark, … (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. (iii) The extent of actual recognition of the mark.

Mead v. Toyota

Licensing and Franchising

Problem 5-10

Administrative Next Class –Read through VI.E.1 – Genericism