Trademark Law. Prof. Madison University of Pittsburgh School of Law

Transcription

1 Trademark Law Prof. Madison University of Pittsburgh School of Law

2 A growing glossary of trademark law terms and concepts: 1. The mark, as a general concept (vs. symbol, vs. brand) 2. The mark in a particular instance (define the mark) 3. Mark X for Product or Service Y 4. Distinctiveness ( distinctive of source or distinctive as to source ) 5. Goodwill (trademark law is intended to protect which interests?) 6. Confusion (what is the harm associated with unauthorized use of a mark?) 7. Search costs and free riding 8. Lanham Act of 1946 (federal statutory scheme) 9. Common law of unfair competition (and common law basis of TM rights) 10. Abercrombie spectrum 11. Inherent distinctiveness 12. Acquired distinctiveness and secondary meaning 13.Trademarks; service marks; word marks; design marks; sound marks (smell, texture, taste marks); color marks; combination marks; trade dress 14. Product packaging v. product configuration trade dress; tertium quid 15. A cocktail shaker shaped like a penguin 16.Proving distinctiveness: Abercrombie spectrum and the Seabrook Foods factors 17. mere ornamentation as an argument against TM protection and/or as a conclusion supporting the denial of TM protection 18. Strong marks and weak marks

3 A growing glossary of trademark law terms and concepts: 19. Bars to protection 20. Utilitarian functionality and aesthetic functionality 21. Protecting competition. Competition in what products or services / features? 22. Deceptive and deceptively misdescriptive marks 23. Geographically deceptive and geographically deceptively misdescriptive marks 24. Implications of Matal v. Tam freedom of expression holding for immoral, scandalous marks and for dilution law 25. Use in commerce, as a mark [compare warehousing marks and reserving rights in a mark 26. Filing bases; 1(a) or use-based registrations; 1(b) or ITU registrations 27. Registration offers nationwide constructive use priority under 7(c)

4 and policing the mark Why police the mark? Is there a (legal) duty to police? When, how to police a mark? Is there a better term than policing the mark?

5 Downtown-name-dispute/stories/

6 Pitt drops trademark hammer on Voodoo Brewery's Pitt-themed beer

7 Lanham Act 7(c) Application to register mark considered constructive use (relevant to post-1989 registrations) (c) Application to register mark considered constructive use Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing (1) has used the mark; (2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or (3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 1126 (d) of this title to register the mark which is pending or has resulted in registration of the mark.

8 Lanham Act 22 Registration as constructive notice of claim of ownership (relevant to pre-1989 registrations) Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant s claim of ownership thereof.

9 Lanham Act 33 Registration on principal register as evidence of exclusive right to use mark; defenses (b) Incontestability; defenses To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant s ownership of the mark, and of the registrant s exclusive right to use the registered mark in commerce. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects: (5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant s prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057 (c) of this title, (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved;

10 15 Incontestability of right to use mark under certain conditions Except on a ground for which application to cancel may be filed at any time under paragraphs (3) and (5) of section 1064 of this title, and except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable:

11 Priority of use fact patterns, when one user has registered the mark (remember the current statute: priority dates to the date of application, after a registration issues): A files an ITU application [Mark X for Product Y]. B begins actual use [of the same mark, for the same product], throughout the US. A then makes actual use of the mark, throughout the US, and A files a Statement of Use. A s registration issues. A has priority in the mark. A begins actual use. B then begins actual use without knowledge of A s use. B files an application to register. B s registration issues. A has priority in the area in which A was using the mark prior to B s date of application. A begins actual use. B then begins actual use without knowledge of A s use. A then files an application to register. A s registration issues. B has priority in the area in which B was using the mark prior to A s date of application. See Lanham Act Section 33(b)(5).

12 Thrifty Rent-A-Car System, Inc. v. Thrift Cars, Inc. (D. Mass. 1986) 1958: Thrifty began use of mark in Oklahoma, for rental car svcs 1962, July: Thrifty applied for federal registration 1962, October: Thrift began use in MA 1964: Thrifty receives registration 1967: Thrifty enters MA and seeks to enjoin Thrift Result: Because 7(c) (date of application determines priority of registrant) was not yet in effect, only Section 22 (date of registration) applied. Therefore, Thrift could continue to use in MA as of date of registration. Now, with 7(c) in effect, Thrifty would have nationwide priority as of date of application, and Thrift would have to stop use.

13 Burger King of Fla., Inc. v. Hoots (7th Cir. 1968) 1953: Plaintiff BK started use of BK mark in Florida 1957: Defendant Hoots opened a BK restaurant in Mattoon, IL 1959: Defendant registers mark in state of IL 1961: Plaintiff BK s federal registration issued By mid-1960s, plaintiff had 38 outlets from Florida to Kentucky What result?

14 Concurrent Use under the Lanham Act: Dawn Donut Co. v. Hart's Food Stores, Inc. (2d Cir. 1959) Hart (deft): Baked at midnight, delivered at Dawn

15 Concurrent Use under the Lanham Act: Dawn Donut Co. v. Hart's Food Stores, Inc. (2d Cir. 1959)

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17 Tea Rose / Rectanus Doctrine: The Good Faith Remote Junior User Rule United Drug Co. v. Theodore Rectanus Co. (U.S. 1918)

18 Kansas State Wildcats First use: 1922 Northwestern University Wildcats First use: 1924

19 Seymour, University of Southern Mississippi: First use in 2003 Iowa s registered mark (1985) is the black silhouette v. Herky the Hawk, University of Iowa, (opposer) Iowa s common law mark is yellow with a black outline, and it has been in use since at least 1980

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