LAW 783-001 – Trademark Law and Practice

Case Rules


Abercrombie & Fitch Co. v. Hunting World, Inc.

  • There are four classes of terms in regards to trademark protection. In order of ascending protection, they are:

    1. Generic
      • This means that it is the "common descriptive name" and affords no exclusive right to the mark.
    2. Descriptive
      • This means that it is "merely descriptive" and allows registration if there is "proof of substantially exclusive and continuous use of the mark applied to the applicant’s goods for five years preceding the application". (If it acquires a secondary meaning.)
    3. Suggestive
      • This means that it "requires imagination, thought, and perception to reach a conclusion as to the nature of goods" and is entitled to registration without proof of secondary meaning.
    4. Arbitrary/Fanciful
  • Generic terms referring to the type of product rather than the product cannot be trademarked, even if they acquire secondary meanings.

  • Marks can shift between classes as language changes. If they become the common descriptive name of an article or substance, the trademark can be cancelled.

Burger King of Fla., Inc. v. Hoots

Continuous use of a mark without knowledge of a prior trademark is a defense to trademark infringement for the area where the mark's continuous use is proved.

Coach Services, Inc. v. Triumph Learning LLC

Page 238

Under the TDRA, a mark is famous if it “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”

Page 239

The TDRA lists four non-exclusive factors for courts to consider when determining whether a mark is famous:

  1. The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
  2. The amount, volume, and geographic extent of sales of goods or services offered under the mark.
  3. The extent of actual recognition of the mark.
  4. Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

International News Service v. The Associated Press

The contribution to a newspaper can be copyrighted, but the news itself cannot be.

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

The fair use defense does not require showing that consumer confusion was not likely.

Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.

There are eight factors used in determining the likelihood of confusion as to the source of goods:

  1. The strength of the mark
  2. The degree of similarity of the marks
  3. The proximity of the products
  4. Bridging the gap
    • If the trademark owner intends to enter the alleged infringer's market, it would lead to future confusion.
  5. Actual confusion
  6. The junior user's good faith in adopting the mark
  7. The quality of the respective goods
  8. The sophistication of relevant buyers

Mattel Inc. v. Walking Mountain Productions

  • When marks "enter public discourse and become an integral part of our vocabulary," the First Amendment begins to protect public discourse when imbued with a meaning beyond identifying a source.

  • Page 219

    [T]he Rogers test prohibits application of the Lanham Act to titles of artistic works unless the title "has no artistic relevance to the underlying work whatsoever or . . . the title explicitly misleads as to the source or the content of the work."

MicroStrategy Inc. v. Motorola, Inc.

Page 119

[A] plaintiff must show that it has actually used the designation at issue as a trademark; thus the designation or phrase must be used to "perform[]" the trademark function of identifying the source of the merchandise to the customers.

New Kids on the Block v. New America Pub., Inc.

Page 215–216

[W]here the defendant uses a trademark to describe the plaintiff's product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements:

  1. the product or service in question must be one not readily identifiable without use of the trademark;
  2. only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
  3. the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

People for the Ethical Treatment of Animals v. Michael T. Doughney

  • Page 179

    A plaintiff alleging causes of action for trademark infringement and unfair competition must prove

    1. that it possesses a mark;
    2. that the defendant used the mark;
    3. that the defendant’s use of the mark occurred “in commerce”;
    4. that the defendant used the mark “in connection with the sale, offering for sale, distribution, or advertising” of goods or services; and
    5. that the defendant used the mark in a manner likely to confuse consumers.
  • Using a mark "in connection with goods or services" does not require one to sell or advertise goods or services, only to prevent users from obtaining or using the trademark holder's goods or services.

Pizza Hut, Inc. v. Papa John's Intern., Inc.

Puffery is a form of non-actionable statement that comes in two forms:

  1. An exaggerated, boasting statement no reasonable buyer would be justified in relying upon
  2. A general claim of superiority over comparable products that is so vague that it is understood as nothing more than an opinion.

Planetary Motion, Inc. v. Techsplosion, Inc.

For ownership to be established, evidence must show adoption and use "in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, even without evidence of actual sales."

Qualitex Co. v. Jacobson Products Co., Inc.

A color can be a trademark as long as it is distinctive, non-functional, and there is no competitive need for colors to remain available in the industry.

Rescuecom Corp. v. Google, Inc.

"Use in commerce" is required for infringement.

Smith v. Wal-Mart Stores, Inc.

  • Page 245

    "[A] parody is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner." To be considered successful, the alleged parody must both call to mind and differentiate itself from the original, and it must "communicate some articulable element of satire, ridicule, joking or amusement."

Tiffany Inc. v. eBay Inc.

  • The doctrine of nominative fair use allows one to use another trademark to identify the other's product as long as there is no likelihood of confusion about the source or affiliation.

    To be protected by this:

    1. The other's product must not be readily identifiable without using the trademark
    2. Marks must only be used as reasonable necessary to identify the product
    3. The user must not do anything would suggest endorsement by the trademark holder.
  • Contributory trademark infringement holds a manufacturer or distributor liable if it induces another to infringe a trademark or continues to supply its product to one it knows or has reason to know is engaging in trademark infringement.

  • Trademark dilution can occur "by blurring" or "by tarnishment." Dilution by blurring is when a "famous mark" loses some of its distinctiveness because of the use of a similar mark, regardless of what for. Dilution by tarnishment is when a "famous mark" has its reputation hurt because of a similarly named product of poor quality or unwholesome context.

TrafFix Devices, Inc. v. Marketing Displays, Inc.

  • Trade dress, the design or packaging of a product, can be protected when it has acquired a distinctiveness that provides a secondary meaning of identifying the product. However, the person asserting trade dress protection has the burden of proving that the elements protected are not functional.

  • Page 148

    [A] product design which has a particular appearance may be functional because it is “essential to the use or purpose of the article” or “affects the cost or quality of the article.”

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

Page 141, End

[I]n an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act, a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning.

Zatarain's, Inc. v. Oak Grove Smokehouse, Inc.

  • There are many tests used for classifying a mark as descriptive:

    • The dictionary test
    • The "imagination test"
      • "If a term 'requires imagination, thought and perception to reach a conclusion as to the nature of goods,' it is considered a suggestive term. Alternatively, a term is descriptive if standing alone it conveys information as to the characteristics of the product."
    • Whether the trademarked terms are needed by competitors to describe the product
    • How much the term has been used descriptively by competitors.
  • Page 127, Bottom

    Descriptive terms are not protectable by trademark absent a showing of secondary meaning in the minds of the consuming public.

    Page 128

    In assessing a claim of secondary meaning, the major inquiry is the consumer’s attitude toward the mark. The mark must denote to the consumer “a single thing coming from a single source,” to support a finding of secondary meaning. . . . Factors such as amount and manner of advertising, volume of sales, and length and manner of use may serve as circumstantial evidence relevant to the issue of secondary meaning.