TRADEMARKS PROF. JANICKE FALL 2018.

TRADEMARKS PROF. JANICKE FALL 2018

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 2018 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 2018 IP Survey -- Trademarks

OWNERSHIP OF SUCH A MARK REQUIRES USE IN COMMERCE
THINKING OF THE MARK WILL NOT SUFFICE NO USE = NO OWNERSHIP 2018 IP Survey -- Trademarks

FOR A SERVICE MARK, THE USE CAN BE: ON SIGNS, ADS, OR PAPERS CONNECTED TO THE SERVICE 2018 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 2018 IP Survey -- Trademarks

FEDERAL USE IN COMMERCE: CAN BE ACTUAL CAN BE BONA FIDE INTENDED (WITH TIME LIMITS) 2018 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 2018 IP Survey -- Trademarks

CASE BLUE BELL v. FARAH 2018 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 2018 IP Survey -- Trademarks

CONFUSION LIKELIHOOD AS TO SOURCE AS TO SPONSORSHIP AS TO AFFILIATION AS TO APPROVAL 2018 IP Survey -- Trademarks

CONFUSION LIKELIHOOD SUBSTANTIAL NUMBER OF PERSONS PROBLEM OF LANGUAGE TRANSLATION DEPENDS HOW MANY SPEAK IT IN U.S. 2018 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 2018 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) 2018 IP Survey -- Trademarks

JACK-IN-THE-BOX TOYS PREEXISTED; ARBITRARY FOR RESTAURANT SERVICES RITZ ARBITRARY FOR CRACKERS, 1934; HOTEL PREEXISTED, LONDON 1906 2018 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 AT ALL RIGHT AWAY ARE PROTECTED WHEN THEY HAVE ACQUIRED DISTINCTIVENESS 2018 IP Survey -- Trademarks

NOTE: “DESCRIPTIVE” INCLUDES GEOG. DESCRIPTIVE (e.g. SOUTHWEST FOR AIRLINE SERVICES; HOUSTON CHRONICLE FOR NEWSPAPERS) WERE NOT PROTECTED (OWNED) AT ALL AT FIRST 2018 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 2018 IP Survey -- Trademarks

INFRINGEMENT: LIKELIHOOD OF CONFUSION
CASES XTREME [PART 1] STREETWISE QUILL 2018 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 2018 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 2018 IP Survey -- Trademarks

PRIMA FACIE EVIDENCE OF OWNERSHIP OF THE MARK PRIMA FACIE EVIDENCE OF FIRST ACTUAL USE IN COMMERCE GUARANTEED PROOF OF FIRST COMMERCIAL USE AS OF THE FILING DATE (CONSTRUCTIVE) 2018 IP Survey -- Trademarks

PRIMA FACIE EVIDENCE OF NOT-MERELY-DESCRIPTIVE PRIMA FACIE EVIDENCE OF NOT-MERELY-A-SURNAME PRIMA FACIE EVIDENCE OF NON-GENERICNESS 2018 IP Survey -- Trademarks

MORE BENEFITS OF REGISTRATION
PRIMA FACIE EVIDENCE OF NO CONFUSING SIMILARITY TO EARLIER USERS 2018 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 2018 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 2018 IP Survey -- Trademarks

CAVEAT: IF USE DOES NOT OCCUR, OR REGISTRATION IS NOT FINALLY OBTAINED: EVERYTHING COLLAPSES CONSTRUCTIVE USE DATE VANISHES A LATER USER COULD NOW BE “FIRST” NO PRESUMPTIONS 2018 IP Survey -- Trademarks

ABANDONMENT OF MARK IF 1ST USER CEASES USE, THE MARK STANDS ABANDONED UNLESS THERE IS ANOTHER USER OTHER USER BECOMES “FIRST” IF NO OTHER USER, ANYONE CAN PICK IT UP – AND BECOME OWNER 2018 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] 2018 IP Survey -- Trademarks

2 ACTUAL USERS IN COMMERCE 2ND USER REGISTERS FIRST 1ST USER OWNS THE MARK 2ND USER’S REGISTRATION WILL BE CANCELLED 2018 IP Survey -- Trademarks

WHAT HAPPENS IF 1ST USER CEASES TO USE: 2ND USER BECOMES “FIRST” (FROM THEN ON) 2018 IP Survey -- Trademarks

WHAT HAPPENS IF X FILES INTENT-TO-USE APPLICATION Y THEN ACTUALLY USES FIRST IF X GETS THE REGISTRATION, Y WILL HAVE TO STOP USING TRUE EVEN IF Y HAS REGISTERED BEFORE X [Y’S REG. WILL BE CANCELLED] 2018 IP Survey -- Trademarks

CASE PARK ’N FLY 2018 IP Survey -- Trademarks

EXAMPLES OF MARKS 2018 IP Survey -- Trademarks

TRADEMARK (FOR CONTAINER OF SCOTCH) U.S. Reg. 696,147 2018 IP Survey -- Trademarks

U.S. REG. 2,085,197 2018 IP Survey -- Trademarks

U.S. Reg. 2018 IP Survey -- Trademarks

COLLECTIVE MARK (ALUMNI ASSOCIATION); also A SERVICE MARK (UNIVERSITY): 2018 IP Survey -- Trademarks

SERVICE MARK (OILFIELD FIRE-FIGHTING): 2018 IP Survey -- Trademarks

11965 HP PRODUCTS, an Ohio company tubing and fittings for conveyors 2018 IP Survey -- Trademarks

2018 IP Survey -- Trademarks

COLLECTIVE MEMBERSHIP MARK (USED BY MEMBERS, NO COMMERCE NEEDED): 2018 IP Survey -- Trademarks

COLLECTIVE TRADEMARK (USED BY VENDORS, UNDER CENTRAL QC): 2018 IP Survey -- Trademarks

CERTIFICATION MARK FOR CLOTHING: 2018 IP Survey -- Trademarks

CASE QUALITEX 2018 IP Survey -- Trademarks

THE SUPPLEMENTAL REGISTER
GIVES NO LEGAL RIGHTS NO PRIORITY NO PRESUMPTIONS CAN BE AN EFFECTIVE WARNING TO LATER PLAYERS 2018 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 2018 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 2018 IP Survey -- Trademarks

PRACTICAL BENEFIT OF REGISTRATION
OTHERS WILL FIND OUT ABOUT YOUR RIGHTS, AND WON’T ADOPT SIMILAR MARK CHEAP POLICING 2018 IP Survey -- Trademarks

CASE SLOPPY JOE’S 2018 IP Survey -- Trademarks

THE THORN: PERMANENT LOCAL USE RIGHTS for SECOND USER
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! 2018 IP Survey -- Trademarks

PERMANENT 2nd USER LOCAL 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 2018 IP Survey -- Trademarks

PERMANENT 2nd USER 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) 2018 IP Survey -- Trademarks

NOW, CONGRESS HAS PROVIDED THAT A FEDERAL REGISTRATION CONSTITUTES CONSTRUCTIVE USE EVERYWHERE AS OF THE FILING DATE (§1057(c)) THIS BLOCKS CONDITION (1) FIRST LOCAL USER AFTER THE FED. FILING DATE 2018 IP Survey -- Trademarks

REGISTRATION AS CONSTRUCTIVE NOTICE IS NOW MOOT, BECAUSE: THE POSSIBILITY OF CREATING NEW LOCAL RIGHTS ENDED AT THE FILING DATE i.e., FILER IS DEEMED TO BE USING EVERYWHERE 2018 IP Survey -- Trademarks

2nd USER RIGHTS CASE: MISTER DONUT 2018 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 2018 IP Survey -- Trademarks

START WITH 1052 (a) - (d): TELLS US MANY PROBLEMS ARE INCURABLE 2018 IP Survey -- Trademarks

THE (e) GROUP – SOME ARE CURABLE: DESCRIPTIVE GEOGRAPHIC SURNAMES SOME NOT CURABLE: DECEPTIVELY MISDESCRIPTIVE 2018 IP Survey -- Trademarks

FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER) EXAMPLE: SHAPE OF A DESK LAMP THIS OBSTACLE CANNOT BE CURED 2018 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 2018 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 2018 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] 2018 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 2018 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 APPLE® AND SAMSUNG® 2018 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 2018 IP Survey -- Trademarks

N.B. STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL “not affiliated with the John Walker company of Scotland” COURTS SAY CONFUSION IS STILL LIKELY >>> 2018 IP Survey -- Trademarks

CASE AMBASSADOR EAST v. ORSATTI 2018 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 2018 IP Survey -- Trademarks

A WORD ABOUT DILUTION A MADE-UP EXAMPLE: “CADILLAC” FOR CARS FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD 2018 IP Survey -- Trademarks

REMEDIES 2018 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 2018 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 2018 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) 2018 IP Survey -- Trademarks

ATTORNEY’S FEES “EXCEPTIONAL CASES” ONLY USUALLY MEANS WILLFUL INFRINGEMENT § 1117 (a) 2018 IP Survey -- Trademarks

DESTRUCTION A NICE MEDIEVAL REMEDY ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?] § 1118 2018 IP Survey -- Trademarks

DEFENDANT’S REMEDIES ATTORNEY’S FEES IN EXCEPTIONAL CASES § 1117 (a) ORDER TO CANCEL REGISTRATION § 1119 2018 IP Survey -- Trademarks

CASES: KELLOGG XTREME [PART 2] MATAL v. TAM 2018 IP Survey -- Trademarks

TRADEMARKS PROF. JANICKE FALL 2018.

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TRADEMARKS PROF. JANICKE FALL 2018.

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