Random Stuff............................................................................................................................................. 3
Trademark Primer .................................................................................................................................... 3
Basic Requirements ............................................................................................................................ 3
ITU’s............................................................................................................................................................. 3
Principal Register ................................................................................................................................ 3
Strength of Marks ................................................................................................................................. 3
Ineligible Marks .................................................................................................................................... 4
Descriptive / Misdescriptive / etc. ......................................................................................... 4
Grounds for Cancellation ................................................................................................................. 4
Incontestability ..................................................................................................................................... 5
Famous Marks ........................................................................................................................................ 5
Benefits of Federal Registration .................................................................................................. 6
International Filing ............................................................................................................................. 6
Madrid Protocol .................................................................................................................................... 6
Infringement Types............................................................................................................................. 7
Dilution – elements ........................................................................................................................ 8
Cybersquatting.................................................................................................................................. 9
Intent...................................................................................................................................................... 9
Defenses ............................................................................................................................................... 9
Historical Overview of Trademark & Trade Dress ............................................................. 9
De Jure vs. De Facto Functionality ............................................................................................ 10
Trade Dress .......................................................................................................................................... 11
Seabrook Factors for Packaging Trade Dress .................................................................... 11
Works of Art, Celebrity Likenesses, Fictional Characters............................................ 11
Foreign Words .................................................................................................................................... 12
Benefits of Foreign Registration ............................................................................................... 12
Disclaiming Words, Immoral, Scandalous, etc… ............................................................... 12
Opposition............................................................................................................................................. 12
Effect of Registration in the Supplemental Register....................................................... 12
Artistic, Musical, Expressive Works ........................................................................................ 13
Foreign Words .................................................................................................................................... 13
State Registration.............................................................................................................................. 13
Assignments & Licensing............................................................................................................... 13
Infringement & Unfair Competition ........................................................................................ 13
Reverse Confusion ............................................................................................................................ 14
Reverse Passing Off .......................................................................................................................... 15
False Advertising ............................................................................................................................... 15
Antidilution .......................................................................................................................................... 16
Federal Trademark Antidilution Act ...................................................................................... 16
Dilution under 43© .......................................................................................................................... 16
Exceptions ............................................................................................................................................. 16
Anticybersquatting Consumer Protection Act ................................................................... 17
Personal Names.................................................................................................................................. 18
Remedies ............................................................................................................................................... 18
Subject Matter Jurisdiction ..................................................................................................... 18
1
Secondary Liability ........................................................................................................................... 18
Contributory Liability ..................................................................................................................... 19
Vicarious Liability ............................................................................................................................. 19
1st Amendment Defenses............................................................................................................... 20
Affirmative defenses........................................................................................................................ 21
Remedies: .............................................................................................................................................. 24
Monetary Awards .............................................................................................................................. 25
Limitations on Remedies .............................................................................................................. 25
Federal Dilution Law .................................................................................................................. 25
Innocent Infringement by Printers & Publishers ........................................................ 25
2
Random Stuff
- Can’t file for > 1 Mark at a time
- Changing fonts not enough to get a mark on one already registered
- US PTO doesn’t remind you to renew
- Whenever the PTO sends you something, you have 6 mos. To respond
- Between 5th and 6th year after registration, file § 8 Declaration of use and § 15
declaration of incontestability
- Between 9 and 10 years after registration file § 8 Declaration of Use and § 9
Declaration of Renewal
Trademark Primer
- Policy Goals
o Identify source of products and / or services
o (1) fosters competition by ensuring that all competitors are free to
copy the useful features of a product
o (2) prevents trademark law from conflicting w/ the scheme of federal
patent protection by ensuring it doesn’t provide that protection
o
Basic Requirements
- Use as goods or services
- And use in commerce
o Token use not enough
o Must be “bona fide use” – Lanham Act
o Services are used when: used or displayed in the sale or advertising
of services and services are rendered in commerce, or the services are
rendered in more than one State or the U.S. …
o Actual sale not required – transportation is enough
ITU’s
- Gives you that priority date
- Entitled to register upon use in commerce
Principal Register
- Constitutes constructive use
Strength of Marks
- Coined > Arbitrary > Suggestive > Descriptive > Generic
o Coined = Kodak
 Can’t be used by others as TM even for unrelated goods w/ no
competition
 Uniqueness implies all uses come from the same source
 Coined TMs that are formed composites: weaker to the extent
they may be suggestive
o Suggestive (Obsession perfume)
 Lower scope than coined
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o Fanciful or arbitrary – Bugle boy, Amazon
 Concurrent use may be allowed if sufficiently unrelated goods,
not famous (delta faucets v. airlines)
 Famous TMs are protected against dilution even for unrelated
goods
o Generic
 Name of product or service no matter who is the source Tms
start out distinctive and end up being generic
Top 3 get in
Ineligible Marks
- Immoral, Deceptive, Scandalous or Disparaging Matter; False Geographic
Indications for Wines and Spirits
- National, State or Municipal Insignia are Barred
- Any mark that comprises (1) a name, portrait, or signature identifying a
particular living individual except w/ that person’s written consent or (2)
same w/prez’s while living or wife alive
Descriptive / Misdescriptive / etc.
o 15 USC 1052(e)(1) bars deceptively misdescriptive or
“descriptive”
o Either can be registered w/ 2ndary meaning
o Deceptive marks are absolutely barred
o Difference is that deceptively misdescriptive don’t influence the
public’s decision
- Conflicts - factors
o Likelihood of confusion?
o Similarity of marks?
o Distinctiveness of marks ?
o Similarity of goods and services
o Actual Confusion
- Primarily Geographically Descriptive
o Bars registration of amark that is “primarily geographically
descriptive”
 Doesn’t apply when the meaning of the mark is obscure or
remote or popular significance apart from its geographic
meaning
o Bars registration of a mark that is “primarily geographically
deceptively misdescriptive”
- Primarily merely a surname
o Can be registered if they acquire 2ndary meaning
- Functional marks obviously barred
Grounds for Cancellation
- If it becomes generic, is functional, has been abandoned registration was
obtained fraudulently
4
Incontestability
- Can only be cancelled on these grounds: (1) if it becomes generic; (2) if it is
functional; (3) if its abandoned; (4) if registration was obtained fraudulently
or in violation of … or if it misrepresents the source of the goods
- Descriptiveness is insufficient – needs to be generic
- Also, all the equitable principles apply to defend against infringement
- Must be in use at least 5 years fromt eh date of registration on the Principal
Register
Famous Marks
o See 15 USC 1125©
 Consider “all relevant factors”
 Duration, extent, geographic reach of publicity; the amount,
volume and geographic extent of sales; the actual public
recognition of the mark; and whether the mark is registered
o Treated differently
o Likelihood of confusion is N/A – you don’t need to show actual
confusion
o Only need to show “dilution”
o Blurring – detracts from uniqueness
o Tarnishment – harms the reputation
- TTAB – cancellation / opposition
- Personal Names
o Things like “Howard Johnson”, etc.
o MUST be associated w/ goods or services
o If same name, look to primary significance
- Federal Register
o Principal Register
 Actual Use
 Distinctive
 Not confusingly similar
o Supplemental Register
 Not distinctive enough
 Can amend to principal after 5 years of use
 Can still use the ® symbol
o Trade Names v. Trademarks
 Often coincide
 Trade name registration via state agency
o Trade Dress
 Product Trade dress
 Shape and appearance of product must be distinctive
 Functional not protectable
 Packaging trade dress
 Easier to protect
5
Benefits of Federal Registration
o Statutory damages
o Nationwide exclusivity, notice to other users, presumption of
ownership
o Not a shield against superior rights held by prior unregistered users
o Need mark (drawing or typed) plus evidence of use (specimen to
complete)
- Marks w/ common terms
o Distinctive in aggregate is enough
o Aggregate of ordinary words not enough
o Generic name is not a trademark by itself, but generic can be used in a
mark
 Can be overcome through § 2(f) declaration of 5 years
continuous use (signed by client)
- Similarity of marks
o Same international class
o Marketing channels used
o Literal similarity of words
o Zone of expansion re: future confusion
- Responding to a final office action
o Second office action usually final
o Options
 Appeal to TTAB
 Comply w/ examiner’s instruction
 Appeal to Commisisoner
- Divisionals
o Keep the original filing date
International Filing
o Paris Convention (those not privy to Madrid)
o Madrid Agreement (not US)
 Based on reg. only (no use)
 12 month refusal window too short
 In French
o Madrid Protocol
 Simplified prosecution
 Single int’l reg.
 Creates bundle of nat’l. apps /r es
 Simplified Maintenance
 Singe point renewal
 Single point changes (name, owner, etc.)
Madrid Protocol
- U.S. is not a signatory on the Madrid Agreement, but joined the Madrid
Protocol in 2003
- 12 or 18 month time limit in refusing registration
o Registrations last for 10 years, may be renewed in a single application
- But will be canceled if the home country registration lapses
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If cancellation applies only to certain categories, then only those categories of
goods will be invalidated
o Who can use it?
 Natural person or legal entity with “connection” to Madrid
system or country
o Madrid Agreement Cascade Order
 (1) industrial or commercial establishment
 (2) if none, then domicile
 (3) if none, then nationality
o Choosing where to file
o Madrid Protocol Roadmap
 File based on US app. Or registration
 WIP checks formalities
 Published in gazette, placed on intl. register
 Like app filed direct in designated country (NOT registered,
examined like others)
 If no refusal w/in time limit (18 mos.) then registered in
designated country
o “Central Attack”
 IF someone cancels your us it’ll cancel your Madrid
 Int’l reg. loses protection to same extent
o When is Int’l. use good enough?
 Foreign casino operator was enough in International Bancorp
 They advertised to U.S. citizens and that was a “subject of a
foreign action” and (2) used its mark in the U.S. advertisements
for the casino
 Fell under the commerce clause
 Fourth circuit emphasized the owner must both engage in
qualifying commerce and use or display its mark in the sale or
advertising of these services to the consumers that engage in
qualifying commerce

Effect of using TM vs. ® - gives notice
o 15 USC § 1072 says that the registration itself is constructive notice
Fair use:
o A: not used as a TM:
o B: Descriptive – used to describ e your goods / services – can be used
even if incontestable
o C: nominative: non-confusing to refer to others’ product (“will work
w/ Panasonic Products)
o Comparative; to compare w/ another’s products
Infringement Types
o Infringement
 Elements: (1) valid mark, (2) confusion, (3) factors
 Polaroid factors:
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
(1) strength of the senior mark; (2) degree of similarity
between the two marks; (3) the proximity of the
products or services; (4) the likelihood that the prior
owner will “bridge the gap” (5) evidence of actual
confusion; (6) defendant’s good faith (or bad faith) in
adopting the mark in question; (7) quality of
defendant’s product; and (8) sophistication of the
buyers
 Other factors: pre and post-sale confusion
 In determining consumer confusion, DuPont factors:

1. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation, and
commercial impression.

2. The similarity or dissimilarity and nature of the
goods . . . described in an application or registration or
in connection with which a prior mark is in use.

3. The similarity or dissimilarity of established, likelyto-continue trade channels.

4. The conditions under which and buyers to whom
sales are made, i.e. "impulse" vs. careful, sophisticated
purchasing.

5. The fame of the prior mark

6. The number and nature of similar marks in use on
similar goods.

7. The nature and extent of any actual confusion.

8. The length of time during and the conditions under
which there has been concurrent use without evidence
of actual confusion.

9. The variety of goods on which a mark is or is not
used . . . .
 10. The market interface between the applicant and
the owner of a prior mark . . .
 11. The extent to which applicant has a right to exclude
others from use of its mark on its goods.
 12. The extent of potential confusion . . . .
 13. Any other established fact probative of the effect of
use.
o Dilution – elements
 1: famous and distinctive; 2) Junior use commercial and after
TM because famous? 3) lessens ability of TM to identify
source?
 Don’t need to be registered for dilution protection
 Under TDRA need:\]
 Likelihood of dilution- not actual as previously
 Famous mark
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
Limited dilution to marks recognized by a member of
the general public, not a niche market
o Cybersquatting: buying domain name w/ intent to sell actual TM
owner w/ no intent to use it themselves (bad faith)
o ACPA elements:
 (1) bad faith intent to profit, (2) Distinctive TM, (3) Identical or
LOC with domain name, (4) Protectable under US Federal TM
laws
o Intent
 Did junior user choose mark deliberately because of similarity
with senior user’s mark?
 Good faith (when junior user adopted):
 Senior mark unknown to junior user &
 Senior mark unknown in junior user’s territory
 NO GOOD FAITH use of something put in the federal register
o Defenses
 Unclean hands
 Estoppel
 Laches (slept on rights)
 Fnctionality
 Parody
 Fair Use
 Trade Dress
Historical Overview of Trademark & Trade Dress
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The old common law doctrine of passing off
What is functional?
Scent, sound, color: can’t be inherently distinctive, but yes on 2ndary
If you’re seeking protection, you must prove that:
o (1) the trade dress of the two products is confusingly similar
o (2) the features of the trade dress are primarily nonfunctional
o (3) the trade dress is inherently distinctive or has acquired secondary
meaning
Product config. Vs. design – design protection may not be obtained on
inherent distinctiveness
Product packaging can be inherently distinctive
Inwood Laboratories v. Ives Laboratories
-
Product feature is functional if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article
This is still the primary test
They were dealing with the color of pills
o And they said the color of pills were functional
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This is known as “aesthetic functionality”
Qualitex
-
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Tried to trademark the color of laundry press pads
The court enlarged the Inwood definition to include:
… that is if excessive use of the feature would put competitors at a significant
non-reputation-related disadvantage
o (thereby allowing color)
The court in TrafFix Devices clarified that they meant for the Qualitex test to
be used only when the Inwood test was not satisfied
Even if aspect is non-functional, copying of that aspect may still be
permissible if competitive necessity, e.g. aesthetic functionality applies
o Meant to stop you from extending your utility patent through
trademark
Two Pesos
-
Buttressed the Qualityex decision where color can’t be inherently distinctive
Traffix Devices
-
they tried to extend their patent through trademark
The court says you have to bear the heavy burden that the trademark is nonfunctional
Deere v. Farmhand
-
Despite secondary meaning, color use OK – farming equipment colors should
match
H: competitors can use that exact same color even though there was
secondary meaning b/c the color is functional
Farmers like their equipment to match and you can’t get into the market w/o
the same colored stuff
Similar – Brunswick
-
Color black on outboard engines in functional
Competitive necessity test: if features is the best design or one of a few
superior designs, exclusivity of feature would hinder competition so not
protectable as a trademark
- Damages
De Jure vs. De Facto Functionality
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The court allows de facto functional features to be trademarked
o E.g. the shape a of a bottle that’s an artistic choice even though it holds
liquid
o Vs. de jure functional where the shape is the best form of the product
 No protection
4 factor test from In re Morton-Norwich Products
o (1) existence of a utility patent disclosing the utilitarian advantages of
the design – that’s a big factor
o (2) advertising materials in which the originator of the design touts
the design’s utilitarian advantages;
o (3) the availability to competitors of functionally equivalent designs
o And (4) facts indicating that the design results in a comparatively
simple or cheap method of manufacturing the product
Trade Dress
-
-
-
Must be distinctive by reason of the shape or color or texture …
If you’re seeking protection, you must prove that:
o (1) the trade dress of the two products is confusingly similar
o (2) the features of the trade dress are primarily nonfunctional
o (3) the trade dress is inherently distinctive or has acquired secondary
meaning
Product configuration vs. design
o Product configuration / design protection may not be obtained on the
basis of inherent distinctiveness
o Whereas product packaging can be inherently distinctive
 Two Pesos
o Buttresses the Qualitex decision where color can’t be inherently
distinctive
o Must also be consistent
Sound, Scent Color
o Cannot be inherently distinctive
o But secondary meaning and you’re a go
o E.g. law & order “doink doink”
Seabrook Factors for Packaging Trade Dress
-
(1) a common basic shape or design
(2) unique or unusual in the field of use
(3) mere refinement of ornamentation for a particular class of goods viewed
as such by public
(4) capable of creating a commercial impression distinct…
Works of Art, Celebrity Likenesses, Fictional Characters
-
Stylistic elements of artwork can’t be used
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o Infringes on the doctrines of copyright
And also provides additional ways to extend copyright past when they’d
ordinarily be in the public domain
Literary works, publications can be trademarked if they acquire secondary
meaning
Foreign Words
-
Doctrine of foreign equivalents – figure out the translation
o Idiomatic uses are sufficient – doesn’t have to be a perfect translation
Also international comity – generic English words not protected in other
jurisdictions and vice versa
Registration has been refused on the grounds that English mark & foreign
have the same meaning even w/ different sound
W/ unregistered marks, most courts have treated similarity of meaning as
just one part a three-part test, which considers sight, sound and meaning
Benefits of Foreign Registration
-
Presumption of validity, constructive notice
Can become incontestable after 5 years
Improves owner’s ability to block the importation of infringing goods
Disclaiming Words, Immoral, Scandalous, etc…
-
-
Some debate as to whether you can register a mark if it’s entirely disclaimed
Also can’t register wildcards, e.g. LIVING XXXX where XXXX is another likely
disclaimed term
Can’t have marks that are deceptive, scandalous, disparaging, false
geographic indications for wine and spirits that are false
Deceptive marks
o (1) must falsely describe the goods or services
o (2) must be one that the prospective purchaser is likely to believe is
true
o (3) that mistaken belief must be likely to materially affect the
consumer’s purchasing decision
Flags, municipalities, etc. unregisterable
o Statute of Liberty was found registerable
Living individuals’ signatures are barred
Former Presidents’ signature while wife still alive
Opposition
-
Period limited to 30 days after the mark is published
Effect of Registration in the Supplemental Register
-
Still subject to cancellation, no real protections
12
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Can help if you’re trying to get acquired distinctiveness
Artistic, Musical, Expressive Works
-
Musical expression OK if indicates source
Problematic: normally subject of copyright, so you get a conflict
Can’t register single work
Numbers and Alphanumberics: inherent or 2ndary meaning
If it started out as a model or part #, then it’s descriptive so 2ndary meaning
only
Foreign Words
-
Translate foreign term to English for comparison
Do the same thing for descriptiveness or genericness
Same thing for geographic significance
State Registration
- state common law and legislation are generally not preempted by the
Lanham Act
Assignments & Licensing
- Transfers of a mark must contain the accompanying good will otherwise it’s
an “assignment in gross”
- Licensing - you can’t license outside the business it was previously used
Infringement & Unfair Competition
- Two-step analysis:
o (1) P must establish mark is valid and enforceable, that plaintiff is
owner of the mark, with a right of priority over the D with respect to
that mark
o (2) P must establish that D used the mark in connection with goods or
services in a way that’s likely to cause confusion
o The 2nd step is the same under state v. fed., 1st is not
- If registered in the principal register:
o Prima facie evidence of validity and its registration
 If the mark has become incontestable, the registration is
conclusive evidence of the validity of the mark
- Supplemental register
o P must establish that it has used the mark in connection with the
offering of goods or services to the public
- If the mark changes over time, the previously used mark is “the legal
equivalent of the mark in question or indistinguishable therefrom” then you
can get the original priority date
o The standard is described as “extremely strict” for tacking
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-
-
-
-
-
-
In Federal Trade Dress infringement actions w/ unregistered dress, have to
show the dress is non-functional
“Likelihood of confusion test”:
o whether “an appreciable number of ordinarily prudent consumers”
are likely to be misled or confusion into believing that the junior
user’s product or service either originated with the senior user, or had
some connection to the senior user
o Considerable debate over this “objective standard”
o Confusion must be “probable”
Factors in judging confusion – the Polaroid factors
o (1) strength of the senior mark
o (2) degree of similarity between the two marks;
o (3) the proximity of the products or services
o (4) the likelihood that the prior owner will “bridge the gap”
o (5) evidence of actual confusion;
o (6) the defendant’s good faith in adopting the mark in question
o (7) quality of the defendant’s product; and
o (8) sophistication of the buyers
Marks can be “formative” that is, an owner can have an entire family of marks
that are protected
o “Mc” in McDonald’s is a good example
o McXXX was protected even though “Mc” itself was not registered
o Also must be recognition among the purchasing public of the family
Competitive Proximity
o Courts are to consider: “content, geographic distribution, market
position and audience appeal”
o A restaurant, Liederman presumably did not conflict with Lederman
o Wine cheese & salami found to be competitive products because they
were often served together (E & J Gallo Winery )
Strength of Plaintiff’s mark
o Measured by: (1) degree to which it is inherently distinctive
o (2) the degree to which it is distinctive in the marketplace
o Composite marks: examine the mark as a whole
Consumer sophistication
o Often times based on the type of good (Expensive, complicated, etc.)
Actual confusion
o Often times has no impact on the case b/c holders bring suit before a
mark can be brought into the market
o Otherwise, anecdotal evidence or surveys
Bridging the Gap
o Likelihood that a competitor will enter the junior user’s market
Reverse Confusion
- Where the junior user’s mark leads the consumer to believe a product comes
from the junior user
- Courts have held the Lanham act to encompass these claims
14
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Claims typically involve the loss of goodwill, not diversion of profits
Reverse Passing Off
- Occurs when a defendant offers the public goods or services produced by
another person, but represents them as the defendant’s own goods or
services
o Think: Dastar
- Express – D uses own origin indicator
- Or implied where the D omits the plaintiff’s origin indicator but does not
substitute its own
- Test:
o (1) the defendant misbranded plaintiff’s goods;
o (2) such misbranding was “material”;
o (3) the defendant caused the plaintiff’s goods to enter interstate
commerce;
o (4) the defendant’s misbranding caused a likelihood of confusion
o False or omitted authorships are actionable under § 43(a)
- Remember:
o Dastar held that it’s the producer of the goods who must be
discredited, not the original conceiver of those ideas (Eisenhower)
False Advertising
- 43(a)(1)(B) permits bringing federal claims for false advertising
- These claims arise when D uses in connection with any goods or services in
commerce, “any false designation of origin, false or misleading description of
fact, or false or misleading representation of fact… which , in commercial
advertising or promotion, misrepresents the nature, characteristics, qualities,
or geographic origin of his or her or another perons’s goods, services, or
commercial activities.”
- To prevail you must prove (by preponderance)
o (1) D has made false or misleading statements as to his own product
or another’s
o (2) that there is actual deception of, or at least a tendency to deceive, a
substantial portion of the intended audience;
o (3) that the deception is material in that it is likely to influence
purchasing decisions
o (4) that the advertised goods travelled in interstate commerce;
o and (5) that there is likelihood of injury to the plaintiff
- To establish (1) – that statements are false:
o Must establish either that: (1) the advertisement is literally false, or
(2) although the advertisement is literally true or ambiguous, it is
likely to deceive or confuse consumers
15
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When an ad is literally false, the court can give an injunction w/o proof of
customer deception
o Absent that, have to prove public actually misled
Puffery not covered
Examples of literal falsity
o BreathAsure capsules that said they’d fight bad breath at its core
Mylanta Night time strength – false b/c not formulated for work at night time
What about “tests prove” cases?
o P voices a challenge to D’s tests, then D bears the burden of identifying
the tests on which it relied
Antidilution
- Meant to protect particularly strong marks
o E.g. using “Rolls Royce” on hot chocolate – you’d be capitalizing on
another producer’s goodwill
o Meant to defend against “blurring” and “tarnishment”
o Blurring:
 The whittling away of an established trademark’s selling
power through its unauthorized use by others upon dissimilar
products
 E.g. “DuPont” shoes, “Buick” Aspirin , etc.
o Tarnishment:
 When P’s mark is linked to products of shoddy quality
 Found routinely when P’s mark used with pornographic
material
- Most states have them and they’re legislation, not common law typically
- Some states require the mark to be “highly distinctive”, “strong,” or “famous”;
Federal Trademark Antidilution Act
- 43© of Lanham Act
- Supplemented in 2006 by FTDRA
o Overturned a SCOTUS case
o You don’t have to prove actual dilution only that dilution is likely
o But the universe of marks is narrower – they now have to be
nationally known
o And famous mark holders are entitled to injunctive relief
- Covers registered and unregistered marks
Dilution under 43©
- Requires distinctive and famous
- TDRA Famous” widely recognized by general consuming public of the U.S. as
a designation of source…”
Exceptions
16
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nominative fair use or facilitation thereof
Noncommercial use
News reporting
Anticybersquatting Consumer Protection Act
- § 43(d) of the Lanham Act
- Cause of action against anyone who, with a bad faith intent to profit form the
mark
o Registers, traffics in or uses a domain name that
o (1) is identical or confusingly similar to a mark that was distinctive at
the time the defendant’s domain name was registered; or (2) is
identical or confusingly similar to, or dilutive of, a mark that was
famous at the time the defendant’s domain name was registered
- Owners must establish:
o (1) it has a valid trademark entitled to protection;
o (2) its mark is distinctive or famous;
o (3) the defendnat’s domain name is identical or confusingly similar to,
or in the case of famous marks, dilute of, the owner’s mark; and
o (4) the defendant used, registered, or trafficked in the domain name;
o (5) with bad faith intent to profit.
- Liability may only be imposed on the domain name registrant or an
authorized licensee of the registrant
- Associated bad acts:
o Selling domain name to trademark owner
o Using name to divert business
o Or tarnishment
- “confusingly similar” not analyzed under traditional likelihood of confusion
analysis
o Looks only at the senior user’s mark and the junior user’s domain
name.
o Courts hold a domain name is confusingly similar to a senior user’s
trademark if consumers might think that the domain name is used,
approved, or permitted b the senior user
o They disregard the .org, .net, etc.
o Also violation if they’re dilutive, e.g. pornographic sites that use the
mark
o “traffics in” means just about anything for consideration or receipt in
exchange for consideration
o Bad faith analysis:
 (1) the defendant’s intellectual property rights if any in the
domain name
 (2) the extent to which the domain name constitutes the
defendant’s legal name or a name commonly used to identify
the defendant; (3) the defendant’s prior use of the domain
name in connection with the bona fide offering of goods or
services
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(4) the defendant’s bona fide noncommercial use or fair use of
the mark in a site accessible under the domain name; (%) the
defendant’s intent to divert customers…
Courts haven’t found bad faith where the domain name incorporates the
trademark as part of a gripe site, e.g. mcd’s sucks.com
If D thought he had reasonable grounds to believe that the use of the domain
name was fair use or otherwise lawful, there’s a safe harbor provision
You can get in rem jurisdiction over a domain name even when there’s no in
personam jurisdiction
Personal Names
o To bring an action, the other person has to register the domain name
with intent to profit from the sale or transfer of the domain name
o Use the personal name in bad faith with malicious intent to harm the
reputation of the individual or the goodwill associated with the
individual’s name or
o (3) use that is intended or likely to confuse or deceive the consumer
as to the affiliation, connection, or association of the domain name
registrant, or the domain name site with the individual
Remedies
o When a violation is established
o The court may order the forfeiture or cancellation of the domain
name, or may order that it be transferred to the owner of the mark.
o § 43(d)(2) remedies are exclusive, but § 43(d)(1) offers the full array
of Lanham Act remedies
o 35(d) permits bringing a claim under 43(d)(1) to elect statutory
damages in place of actual damages and profits; a court may award
damages between $1k and $100k per domain name, as the court
considers just
o Domain name registrars not held liable generally
o Same with some types of editing of family movies
Subject Matter Jurisdiction
o In rem jurisdiction should only be brought in Fed. Ct.
o Standing to cancel or oppose federal registration
 Generally you have to have some business interest
 Relaxed for genericness
o
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Secondary Liability
Courts (not Lanham Act) has provision for imposing liabilities on secondary
infringers
o More recently 43( c ) applied for secondary liability b/c it’s a species
of tort law
o Examples: drug manufacturer liable for actively encouraging
pharmacists to pass off the defendant’s medicine as a competitor’s
more expensive
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o One who induces another to commit a fraud and provides the means
is equally guilty
o Warner v. Eli Lily
 Drug manufacturer makes equivalent, urges pharmacists to
pass off Pharmacists not confused, just consumers

Contributory Liability
o When defendant actively induces another to infringe or (2) continues
to supply a product to a party that it knows or has reason to know is
using the product in an infringing activity
o Has been extended to services as well
o Inwood Labs v. Ives
 Drug mfg. sells generics to pharmacist, mislabeled, and Inwood
knows he mislabeled
 Capsule colors held functional
 Supplier liable if (1) intentionally induces or (2) continued to
supply pharmacists who are known to mislabel
o No duty upon franchisor to diligently prevent the independent acts of
trademark infringement that may be committed by a single franchisee
 Franchisor accountable only if intentionally induced its
franchisees to infringe … or if it knowingly participated in a
scheme … carried out by franchisees
 No duty to prevent the independent trademark infringement
by a franchisee
 E.g. flea market case
o Tiffany v. eBay
 Has to be more than general knowledge there’s infringement.
They have to have contemporary knowledge of particular
current or future infringing listings is necessary
 Pretty unsettled area
Vicarious Liability
o Most courts use vicarious liability via agency law
o Joint tortfeasor standard
 May bear vicarious liability for trademark infringement by
another. This theory requires a finding that the defendant and
the infringer have an apparent or actual partnership, have
authority to bind one another in transactions with thid parties
or exercise joint ownership or control over the infringing
product
 If D and infringer have (1) actual or apparent partnership AND
 (2) can bind each other w/ third parties
o Hard Rock
 Sued operator of a flea market for infringement of individual
vendors of a flea market
 Flea market operator did not meet the test
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1st Amendment Defenses
- Parodies – good faith, strength of mark, likelihood of confusion, etc. are
factors
- 1st amendment not really a defense
- In commercial context
o Lanham Act applies
o Parodies affect LOC analysis – if they know it’s not from the actual
source, then no confusion
o Expressive merchandise (coffee cup, T-shirt)
- Defensive issue vs. Lanham Act not applicable
- Artistic works – balances public interest of having artistic works against
consumer confusion
o Pretty rare – Rogers v. Grimaldi
 Lanham covers artistic works only when public interest in
avoiding confusion outweighs public interest in free speech
 Unless title has no artistic relevance, Lanham Act is n/a
 Cliff Notes – expands to all artistic works and parodies, not just
titles
o Barbie Girl song
 Pure artistic expression – allowed b/c cultural icon
 Especially true when assumes non-source meanings
o Distinguish Dr. Seuss v. Penguin Books
 Commentary about O.J. trial in style of Dr. Seuss books
 Dr. Seuss not target of commentary, less justification in using
o It’s public interest in avoiding consumer confusion would outweigh he
public interest in free expression
o Velvet Elvis != parody
o Subtle parody – LOC (Bud v. Balducci)
 Michelob Oily
 No disclaimer, used altered strong marks, plausible
advertisement, more than “conjure up” original, actual
confusion
 To be a true parody, it has to make fun of the actual product
- Also expressive merchandise (coffee cup, T-shirt)
- In a commercial setting, parody not an affirmative defense
o But if the parody is obvious, then it affects LOC analysis
- Dilution
o Parody not affirmative defense, but affects blurring or tarnishment,
(no LOC)
o Deere & Co. vs. MTD Prods.
 Deere TM depicted as cowardly
 No blurring (no use on other products)
 Tarnished from depiction of cowardly deer (undesirable
association)
 Use by competitor – dilution more likely
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 Incentive to tarnish
o Hormel v. Henson
 No blurring by using Spa’am character
 (not related to expressive movie use)
 Parody obvious – would strengthen association of SPAM with
Hormel’s goods
 Marks dissimilar
 Spa’am not used as mark
o Free speech issues – little weight in ordinary commercial ads or sales
of non-expressive goods – more weight in expressive context
Affirmative defenses
o Abandonment
 Requires an intent to abandon
 If you resume use of an abandoned mark, it’s like starting all
over again
 Burden of showing differs from court to court
 (voluntary) – bona fide use discontinued w/ intent not to
resume or express abandonment
 (involuntary) Conduct of owner (act or failure ot act) causes
mark to become generic
o Voluntary Cessation of Use
 Nonuse for 3 consecutive use constitutes prima facie evidence
that the mark has been abandoned
 Prima facie showing of intent
 Owner must then produce evidence showing intent to
resume
 If prima facie showing can’t be made, challenger must show
non-use and no intention to resume in foreseeable future
 Over 3 shifts the burden of production
 Defenses include reasonable grounds and must produce
evidence of an intent to resume use of the mark “within the
reasonably foreseeable future.”

o Must demonstrate there were reasonable grounds for suspending use
of the mark and must be more than sporadic evidence of an intent to
resume use of the mark “within the reasonably foreseeable” future
 A bare statement, assertion, etc., won’t do
o Other causes of abandonment:
- Naked Licensing:
o If the owner allows the licensees to depart from quality standards, the
public will be misled
o Need to put in K the restrictions on the mark so it doesn’t run willynilly
 So, write a consent agreement
 Sets boundaries of use b/w parties
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 Intended to avoid confusion
 No control either party
Assignment in gross:
o When the mark is transferred separately from the goodwill that it
represents – basically keep it in the same family of products
First sale doctrine
o Usually you’re OK from infringement
o But the goods can’t be materially altered
 Also called trademark exhaustion
Use, Altered, or Refurbished Goods – falls under first sale
o Generally OK, but it all depends on how they’re altered
o Reconditioned spark plugs repaired, but not labeled accurately
enough were found to be infringing
o Likelihood of confusion still important
o Davidoff v. PLD
 Not OK to remove perfume labels – don’t want goods diverted
from one channel to another
 They removed the batch codes – it would influence the
purchase decision
o Nitro Leisure Prods v. Acushnet
 Reconditioned golf balls, repainted and marked w/ original TM
 Clearly marked as refurbished
 New goods: material diff. threshold low
 Used goods: higher threshold, are refurb goods so different
that using original TM would be a misnomer?
Gray Market Goods
o Goods made outside the U.S. that can’t be imported, so if they are, is it
trademark infringement?
o Lanham act and Tariff Act both have remedies
o Basically the test is if the gray market goods are materially different in
their characteristics or not
 E.g. Spanish cabbage patch kids w/ Spanish birth cert.’s caused
consumer confusion
Laches
o Equitable doctrine – estoppels by Laches
o Happens when a plaintiff has failed to act diligently in asserting its
rights – those who sleep on their rights, lose them.
o Turns on whether P knew of infringement (either actual or
constructive)
o Is a defense under the Lanham Act
o Can be negated if the Plaintiff establishes “progressive encroachment”
o Where enough of an infringing use to invoke laches, but P does not
bring suit b/c nature of infringement is such that P’s claim has yet to
ripen into sufficiently colorable to justify litigation
Acquiescence
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o If P gave D an express or implied assurance that P would not assert its
trademark rights against the D
Unclean Hands
o Any willful act concerning the cause of action which rightfully can be
said to transgress equitable standards of conduct
“Classic” Fair Use
o Use of a the term… is otherwise than as a mark – descriptive of and
used fairly and in good faith only to describe the goods or services of
such party, or their geographic origin
o E.g. “VCR-2 for second video input
o Fish-Fry for breading fish
o Safari for boots imported from Africa
 Applies even if mark incontestable
o Key here is that it’s other than as a mark
o Distinguish from: Brew-Nuts
 Used prominently w/ big characters
o Must establish:
 (1) its use of the p’s mark was not as a trademark or
servicemark,
 (2) it is using the mark “fairly and in good faith”
 (3) it is using the mark only to describe its goods or services
 KP Permanent Make-Up v. Lasting Impression:
 P has burden of demonstrating likelihood of confusion
 Some likelihood of confusion is OK

Nominative Fair use
o Used in competitive advertising where you have to talk about the
competitor’s product
o D must establish:
 (1) the P’s goods or services at issue are not readily identifiable
without use of the P’s trademark
 (2) D used only as much of the mark as was reasonably
necessary to identify the plaintiff’s goods or services and
 (3) D did nothing that would, in conjunction with the mark,
suggest sponsorship or endorsement by the trademark owner.
o New Kids on the block
 D newspaper ran a popularity contest re band members, refers
to band
 Used to identify plaintiff’s band
 Ex:
 Barbie in satirical photos
 Reference to Lad Diana on commemorative goods
 Not fair use:
 Images of Porsche on car wax ads
Comparative Advertising
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o Competitive advertising. – widely accepted
 Nominative is more about when no other term can describe the
product, I guess
o Compare to: xyz product in a Walgreens
o “knock-off perfume” – compare to CK1
Federal Preemption
o Fed. Statutes preempt any sort of state ruling
o E.g. where a state law would confer a sort of patent monopoly
o Sears v. Stiffel
 Copied unpatented lamp
 Claim under IL unfair comp. law
 SCOTUS says no claim, can’t get patent protection via state law
claim
Eleventh Amendment
o § 40 of Lanham says it’s
o Can’t sue states
o Very unclear area of law
SOL
o ‘nuff said
Remedies:
- Non-monetary
o Injunctions
 Harder to get after ebay
o Seizure & destruction under 34(d)
- Monetary Awards
o P’s damages, Def’s profits, costs 35(a)
 43(a)Tm infringe or false advertising
 43(b) Dilution if willful
 43( c)Cybersquatting
o Enhanced Damages, Prejudgment Interest
 Up to 3x actual damages (lost sales, etc)
 “any amount that’s just”
o Attorney’s fees under 35(a)
 Exxceptional cases only
 35(b) atty. Fees mandatory (counterfeiting)
 prejudgment interest too
o Statutory damages
 Counterfeit ($1K-200k per type of good)
 Cybersquatting ($1-$100k per domain)
 Notice – marking or actual
 Use of ® symbol
- Criminal Penalties
- Seizure and destruction
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o 34(d) authorizes seizure of goods bearing counterfeit marks as well as
the means for making such counterfeit marks, any records related to
such counterfeiting
Destruction of Infringing Articles
Cancellation of Federal Registration
Disclaimers
Monetary Awards
o Actual Damages, Defendant’s profits, and costs
o (duplicate recovery prohibited though)
o Enhanced Damages and Prejudgment Interest
o Can get up to treble damages (willful infringement)
o If the court finds that the amount of profits is inadequate or excessive
to compensate the plaintiff, the court may award any amount that is
just, based on the circumstances, as long as it is compensatory and not
punitive
o Attorneys’ fees – when there’s willful, malicious, or fraudulent
infringement,
o Statutory damages
 $500-$100k per mark per type of goods
 $1,000-$100,000 per domain name
o Requirement of Marking or Actual Notice
 If you have the ® symbol, it’s constructive notice
 Otherwise you need actual notice
Limitations on Remedies
o Federal Dilution Law
 Ordinarily, only injunctive relief available, unless willful
intention to trade on the owner’s reputation
o Innocent Infringement by Printers & Publishers
 Printers and publishers can be enjoined from printing
infringing material, but they aren’t subject to damages unless
they knew they were infringing
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A few additional notes:
- Purpose of trademark: to reduce customer search costs
- Certification marks are for all marks that meet standards (don’t have to be
approved)
- Collective marks – member of an organization or 2: to distinguish the goods
from those not made by the collective
- For incontestability you can’t know there is another good faith user?
- Incontestability must be filed w/in 1 yr. of 5 yrs. Of continuous use
- Cert. marks can be incontestable
- REg. not necessary for action under the Lanham Act
- You do need registration for a famous mark
o And you can
- Fair use:
o KP Perm. Makeup – some confusion is OK for fair use
- Parody = poking fun, criticizing
- Counterfeit goods standard:
o Identical or confusingly similar”
- For famous marks, you just get an injunction
- Noncommercial use != parody for dilution
- You can get records for counterfeit goods
- You can only get puni’s for state action
- Damages in trademark cases require actual notice
- Reason for getting D’s profits is unjust enrichment
- Wilfulness gets you monetary damages w/ dilution – D must prove
- Test for a famous person:
o (1) clos to person’s name
o (2) recognized by consumers as such
o (3) must be sufficiently famous that consumers make the connection
o (4)no connection b/w person and goods
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