1. Trademarks IV Infringement of Trademarks 2 Class 22 Notes Law 507 | Intellectual Property | Spring 2004 Professor Wagner

2. 2/10 Today’s Agenda 1.Cleanup: Dilution 2.Defenses a)Genericness b)Functionality

3. 3/10 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. 4/10 Dilution Details of the Dilution Approach 1.Types of Dilution (Why do these mean?) Blurring Tarnishment 2.Fame What is required to show ‘fame’? What kind of evidence? Does ‘fame’ mean ‘famous within a narrow market’ or ‘generally famous’?

5. 5/10 Dilution Distinction b/w Likelihood of Confusion & Dilution Likelihood of Confusion Dilution Key Analysis consumer confusion diminishment of distinctive quality of mark Types of Marks Eligible distinctive, or … descriptive w/ secondary meaning “famous” and distinctive Type of infringing use required Use in commerce ‘commercial use in commerce’ Competing uses or goods required? YesNo Actual harm required No Yes (circumstantial evidence okay)

6. 6/10 Defenses Trademark Defenses: 1.Genericness 2.Functionality 3.Abandonment 4.Parody / Fair Use

7. 7/10 Defenses Genericness Murphy Door Bed Co (2nd Cir. 1989) When will a mark become generic? Who bears the burden of proving genericness? Explain the difference in analysis: oGenericness via common usage oGenericness via expropriation How do you prevent ‘genericide’? Are there policy problems with this? Is it ‘unfair’ to declare a mark generic? How might this possibility affect the incentive to invest in marks? (Consider: what is the value of a mark just at the point of genericness?) How should we deal with buy.com?

8. 8/10 Defenses Functionality TrafFix Devices v Marketing Displays (USSC 2001) Why not allow protection for functional items? (Even with secondary meaning?) How do you defend against a claim that your trade dress is ‘functional’? How is the existence of an expired utility patent relevant to this question? What is the test for ‘functionality’ oHow do you deal with trade dress that is both functional and ‘expressive’? (Note in ©: you could copy the ‘idea’ but not the expression.) oIs stating the test in terms of competition helpful? (Won’t this have the effect of penalizing successful trade dress development?)

9. 9/10 Defenses Parody and Nominative Use Mattel v MCA Records (9th Cir. 2002) Why does the court quickly set aside the likelihood of confusion analysis? (Isn’t MCA using the mark?) Why does the court suggest that First Amendment concerns are more significant in the dilution context? Do you agree with the court that MCA’s use of the mark is ‘noncommercial’ under the statute? (What is the court reading in to the statutory provisions?) Note also the New Kids On the Block Case (p. 717-18): Why is this use of the mark noninfringing? What does the court mean by the term ‘nominative use’?

10. 10/10 Next Class Trademarks V Domain Names and Trademarks