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) as of date of application 28. Senior users and junior users 29. Tea Rose/Rectanus principle of territoriality 30. Good faith remote junior users 31. The Dawn Donut rule 32. International territoriality and well-known marks, or famous foreign marks

4 Grupo Gigante v. Dallo & Co., Inc. (9 th Cir. 2004)

5 ITC Limited v. Punchgini, Inc. (2d Cir. 2007)

6 Belmora LLC v. Bayer Consumer Care AG (4 th Cir. 2016) Case brought under Section 43(a) Plaintiff: Bayer, which owns the trademark FLANAX in Mexico for pain relievers. Plaintiff does not sell FLANAX products or use the FLANAX mark in the US. In the US, Bayer s product is ALEVE. Defendant: Belmora, which has used the FLANAX mark in the US since 2004 in the sale of pain relievers. Belmora had a US registration for FLANAX. Plaintiff contends that Belmora used the FLANAX mark deliberately to deceive Mexican-American consumers into thinking they were purchasing Bayer s product.

7 Belmora LLC v. Bayer Consumer Care AG (4 th Cir. 2016) Bayer successfully petitioned the TTAB to cancel Belmora s registration. Belmora appealed. Bayer also sued Belmora. The cases were consolidated, and the district court dismissed Bayer s claims on the pleadings, on the ground that the Lanham Act does not allow an owner of a foreign mark not registered in the US to assert priority rights over a mark that is registered and used by another party in this country. Fourth Circuit: Section 43(a) claim is for unfair competition, not trademark infringement. Reverses and remands. Section 43(a) permits suit by any person who believes that he or she is or is likely to be damaged by [acts identified in Section 43(a) i.e., false association (likely confusion, mistake, or deceptions as to origin, sponsorship, or affiliation] [caused by the defendant s use of any symbol or device ] Bayer successfully alleged causation, i.e., loss of profits by virtue of Mexican consumers purchasing Belmora s product (FLANAX in US) instead of Bayer s product in Mexico (FLANAX) and in US (ALEVE).

8 Lanham Act Section 43: (a) CIVIL ACTION (1) Any person [Deft] who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which (A) [False association] is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) [False advertising] in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person s goods, services, or commercial activities, shall be liable in a civil action by any person [Pltf] who believes that he or she is or is likely to be damaged by such act.