1. TRADEMARKS
PROF. JANICKE
JULY 2007

2. TO BE A “MARK”: HAS TO SERVE AS A BRAND
MEANING: HAS TO DISTINGUISH ONE’S GOODS OR SERVICES FROM THOSE OF OTHERS
F2007
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3. 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
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4. 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
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5. PROTECTION RIGHTS BEGIN UPON FIRST USE REGISTRATION IS UNNECESSARY
CAN SUE FOR INFRINGEMENT OF AN UNREGISTERED MARK
DONE UNDER UNFAIR COMPETITION LAWS
F2007
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6. PASSING/FAILING THE FIRST REQUIREMENT OF A “MARK”
NOT A DISTINGUISHING BRAND
EXAMPLES:
F2007
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7. PASSING/FAILING SECOND REQUIREMENT OF A “MARK”
EXAMPLES:
§ 1127
F2007
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8. PASSING/FAILING THIRD REQUIREMENT OF A “MARK”
EXAMPLES:
F2007
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9. 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
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10. 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
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11. 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
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12. 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
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13. 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
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14. PERMANENT USE RIGHTS
∴ REGISTRATION AS CONSTRUCTIVE NOTICE DOESN’T MATTER ANY MORE
F2007
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15. QUASI-MARKS AND NON-MARKS
WALK THROUGH § 1052
THESE CONDITIONS FOR “REGISTRATION” ARE APPLIED BY COURTS IN DECIDING “PROTECTION” FOR UNREGISTERED MARKS
F2007
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16. QUASI-MARKS AND NON-MARKS
START WITH 1052(f): TELLS US MANY PROBLEMS ARE INCURABLE
EXAMPLES:
F2007
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17. QUASI-MARKS AND NON-MARKS
THE (e) GROUP:
DESCRIPTIVE [EXAMPLE?]
MISDESCRIPTIVE [EXAMPLE?]
GEOGRAPHIC
SURNAMES
F2007
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18. QUASI-MARKS AND NON-MARKS
FUNCTIONAL (WORRY: MARK PROTECTION CAN LAST FOREVER)
[EXAMPLES?]
F2007
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19. 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
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20. LESS KNOWN TYPES COLLECTIVE MARKS CERTIFICATION MARKS
TRADE / SERVICE MARKS
MEMBERSHIP MARKS
CERTIFICATION MARKS
§ 1054
F2007
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21. CONFUSION LIKELIHOOD AS TO SOURCE AS TO SPONSORSHIP AS TO AFFILIATION
AS TO APPROVAL
F2007
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22. CONFUSION LIKELIHOOD SUBSTANTIAL NUMBER OF PERSONS
PROBLEM OF LANGUAGE TRANSLATION
DEPENDS HOW MANY SPEAK IT IN U.S.
F2007
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23. 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
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24. 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
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25. 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
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26. 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
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27. GRAY GOODS
U.S. RULE:
IF OWNERS ARE SAME OR RELATED, NO RELIEF AGAINST IMPORTATION
IF OWNERS ARE UNRELATED, RELIEF IF QUALITY IS LOWER
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28. 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
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29. WHAT IS NOT INFRINGEMENT
OWN NAME IN BUSINESS OTHER THAN AS A MARK
Cf: SPERA’S RESTAURANT
TONY SPERA, PROP.
TONY’S RESTAURANT
F2007
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30. 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
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31. N.B.
STATEMENTS OF DISCONNECTEDNESS USUALLY FAIL
F2007
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32. 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
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33. A WORD ABOUT DILUTION EXAMPLE: “CADILLAC” FOR CARS
FOLLOWED MANY YEARS LATER BY: “CADILLAC” FOR DOG FOOD
F2007
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34. A WORD ABOUT DILUTION ONLY AVAILABLE FOR “FAMOUS” MARKS
NO DAMAGES NORMALLY
INJUNCTIVE ONLY
§ 1125 (c)
F2007
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35. REMEDIES
F2007
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36. INJUNCTIVE NO INTELLECTUAL PROPERTY WITHOUT EXCLUSION POWER
CONSIDER LAND OR CAR ANALOGY: IF ONLY DAMAGES, YOU ARE MERELY IN THE RENTAL BUSINESS
F2007
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37. INJUNCTIVE PRELIMINARY PERMANENT
4,000 + TRADEMARK SUITS FILED ANNUALLY
ABOUT 45 GO TO TRIAL
F2007
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38. 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
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39. ATTORNEY’S FEES “EXCEPTIONAL CASES” ONLY
USUALLY MEANS WILLFUL INFRINGEMENT
§ 1117 (a)
F2007
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40. DESTRUCTION A NICE MEDIEVAL REMEDY
ALL INFRINGING LABELS, AND THE MEANS OF MAKING THEM [PRINTING GEAR, INCL. COMPUTERS?]
§ 1118
F2007
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41. DEFENDANT’S REMEDIES ATTORNEY’S FEES IN EXCEPTIONAL CASES
ORDER TO CANCEL REGISTRATION
§ 1119
F2007
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