Trademark Litigation Issues Presented By: Frank Angileri October 19, 2011
OVERVIEW Trademark Rights Infringement Surveys Remedies
Trademark Rights? SOURCE IDENTIFIER v. Right to Compete
The Spectrum of Protection Fanciful (most protection) Arbitrary Suggestive Descriptive Generic (no protection)
Trademark Rights INHERENTLY DISTINCTIVE Fanciful (made-up terms) REEBOK Arbitrary (no logical connection to goods) APPLE for computers Suggestive (indirectly describe goods) GOLDEN GLOW for suntan lotion Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-64 (1995)
Trademark Rights ACQUIRED DISTINCTIVENESS Descriptive marks - Secondary Meaning To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844, 851 n. 11 (1982) (citing Kellogg Co. v. National Biscuit Co.,305 U.S. 111, 122 (1938)).
Secondary Meaning Factors (1) direct consumer testimony; (2) consumer surveys; (3) exclusivity, length, and manner of use; (4) amount and manner of advertising; (5) amount of sales and number of customers; (6) established place in the market; and (7) proof of intentional copying. DeGidio v. West Group Corp., 355 F.3d 506, 513 (6 th Cir. 2004)
Spectrum Placement Question of Fact Fanciful (most protection) Arbitrary Suggestive Descriptive Generic (no protection) DeGidio v. West Group Corp., 355 F.3d 506, 510-11 (6 th Cir. 2004)
Right To Inform/Describe Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 116 (1938) (No monopoly on Shredded Wheat ) KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004)(competitors right to describe their products).
Registration Presumed distinctive Incontestable registration Defendant must prove generic
INFRINGEMENT Likelihood of Confusion (1) strength of the plaintiff s mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant s intent in selecting the mark; and (8) likelihood of expansion of the product lines. Frisch s Restaurants, Inc. v. Elby s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6 th Cir. 1982).
Likelihood of Confusion (1) strength of the plaintiff s mark; Fanciful (most protection) Arbitrary Suggestive Descriptive (least protection)
Likelihood of Confusion (2) relatedness of the goods; Competitive products less similarity required (3) similarity of the marks; Phonetic: DRAMAMINE and BONAMINE Appearance Meaning: TORNADO and CYCLONE (wire fencing)
Likelihood of Confusion (4) evidence of actual confusion; Survey evidence Direct evidence
Likelihood of Confusion (5) marketing channels used; (6) likely degree of purchaser care; Brand conscious buyers Health care Products for children
Likelihood of Confusion (7) defendant s intent in selecting the mark; and NOT required, but relevant Copying suggests a hope for confusion Mere knowledge not the same (8) likelihood of expansion of the product lines.
Likelihood of Confusion Mixed Fact/Law Underlying Frisch s Factors - Q fact Ultimate Conclusion Q law Ferrari S.p.A. Escercizio v. Roberts, 944 F3d 1235, 1242 (6 th Cir 1991)
Surveys - Issues Secondary meaning Genericness Likelihood of Confusion
Surveys - Daubert Relevant universe buyers; geography Neutral questions Market conditions
Available Remedies? Seizure and destruction of the infringing items 15 U.S.C. 1116(d), 1118 An injunction prohibiting use of the infringing material 15 U.S.C. 1116 Defendant s profits 15 U.S.C. 1117(a) Damages and costs sustained by plaintiff 15 U.S.C. 1117(a) Treble damages; attorney fees 15 U.S.C. 1117(b)
Seizure Orders Seven factors must clearly appear from specific facts : 1. Order other than ex parte seizure order not adequate. 2. No publicity. 3. Likely to succeed on the use of counterfeit mark claim. 4. Immediate and irreparable injury if seizure not ordered. 5. Matter to be seized will be at stated location. 6. Harm to applicant if seizure denied outweighs harm of seizure to legitimate interests of defendant. 7. Defendant would destroy, move or hide matter to be seized if given prior notice. 15 U.S.C. 1116(d)(4)
Preliminary Injunctions and TROs Movant has strong likelihood of success on the merits? Movant suffer irreparable injury without injunction? Injunction would cause substantial harm to others? Public interest served by issuance of an injunction? Blue Cross & Blue Shield Mutual of Ohio v. Blue Cross & Blue Shield Ass n, 110 F.3d 318 (6 th Cir. 1997) NOTE: If an injunction is issued, must address bond.
Injunctive Relief Permanent Injunction Standard/preferred remedy in a trademark case. Injunctive relief may include Recall Orders Corrective Advertising 15 U.S.C. 1116
Monetary Relief For infringement, subject to the principles of equity a court may award plaintiff (1) Defendant s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. 15 U.S.C. 1117(a).
Calculating Defendant s Profits In assessing profits the plaintiff shall be required to prove defendant's sales only; the defendant must prove all elements of cost or deduction claimed. 15 U.S.C. 1117(a).
Possible Damages Theories (1) Plaintiff s Lost Profits (2) Reasonable Royalty (3) Corrective Advertising Award