1. Concepts 1 Subject Matter 1
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- Qualitex v. Jacobsen (Supreme Court, 1995) p. 286
- In re Babies Beat (TTAB, 1990) p. 294
- Park’N Fly v. Dollar Park and Fly (Supreme Court, 1985) p. 475
- 6.Infringement 6.1.Likelihood of Confusion
- Polaroid Corp. v. Polarad Elects. Corp. (Second Circuit, 1961) p. 391
- Gallo Winery v. Consorzio del Gallo Nero (ND Cal., 1991) p. 400
- Fleischmann Distilling v. Maier Brewing (Ninth Circuit, 1963) p. 417
- Academy v. Creative House (Ninth Circuit, 1991) p. 417
- The Network Network v. CBS (CD Cal, 2000) p. 431
- Playboy v. Netscape (Ninth Circuit, 2004) S p. 88
- Playboy v. Universal Tel-A-Talk (ED Pa, 1998) p. 439
5.7.Functionality p. 286§ 2 (e) (5) provides No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it– (e) consists of a mark which … (5) comprises any matter that, as a whole, is functional.
In Morton-Norwich Products (CCPA, 1982) p. 287Functionality is always in relation to the design of the thing, not the thing itself. It is determined in light of “utility”, which is determined in light of “superiority of design” and rests upon the foundation “essential to effective competition”. In re Babies Beat (TTAB, 1990) p. 294Task is not to ascertain the existence of utility but the degree of design utility. 5.8.Incontestability§ 33 (b) … conclusive evidence of the registrant’s exclusive right to use the registered mark … § 15 Except on a ground for which application to cancel may be filed at any time under paragraphs (3) and (5) of section 14 of this Act, 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 Act 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: Provided, that–
Park’N Fly v. Dollar Park and Fly (Supreme Court, 1985) p. 475An incontestable mark can be infringed even if it is merely descriptive. An incontestable mark cannot be challenged as merely descriptive. Defenses to Incontestably Registered Marks p. 485§ 14: the grounds for cancellation, such as abandonment and genericism § 33 (b): exceptions to incontestable status, evidentiary effect
6.Infringement6.1.Likelihood of Confusion§ 32 (1) Any person who shall, without the consent of the registrant–
Polaroid Corp. v. Polarad Elects. Corp. (Second Circuit, 1961) p. 391Eight factors for evaluating likelihood of confusion between non-identical goods or services:
Core factors amongst all circuits:
Is the products are sufficiently different, is there infringement? Borden Ice Cream v. Borden’s Condensed Milk (no infringement) but compare Aunt Jemina Mills v. Rigney & Co. (could not use other’s mark for pancake batter for pancake syrup). Yale Electric Corp. Robertson (use of lock mark for flashlights infringement). § 43 (a) (1) Any person 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) 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) 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 who believes that he or she is or is likely to be damaged by such act. (2) As used in this subsection, the term "any person" includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity. (3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional. Two prongs: need to show use in commerce and likelihood of confusion. Similarity examined at 3 levels:
Gallo Winery v. Consorzio del Gallo Nero (ND Cal., 1991) p. 400Evidence of other unrelated potential infringers is irrelevant to claims of trademark infringement. A family name is entitled to protection so long as it has acquired a recognized “secondary meaning”. Similarity of marks is judged by sound, appearance and meaning. If goods compete for sales, infringement usually will be found if the marks are sufficiently similar than confusion can be expected. Confusion between marks is generally more likely where the goods are inexpensive. Evidence of actual confusion is only one factor to be considered. Intent is not necessary but will be presumed if defendant has knowledge. Fleischmann Distilling v. Maier Brewing (Ninth Circuit, 1963) p. 417Using another’s mark without advice leads to a presumption of intent to confuse. Holiday Inns v. Holiday Out in America (Fifth Circuit, 1973) p. 417If defendant does not act to create confusion, there may not be intent to confuse. Academy v. Creative House (Ninth Circuit, 1991) p. 417Where evidence shows that one company deliberately adopted another’s name to obtain advantage from the other’s good will, we may infer a likelihood of confusion. Mobil Oil Corp v. Pegasus Petroleum (Second Circuit, 1987) p. 424Example of application of Polaroid factors. The Network Network v. CBS (CD Cal, 2000) p. 431The test of actual confusion is not whether anyone could possibly be confused, but whether the “reasonably prudent consumer” is likely to be confused. Where there is no overlap, there is no confusion. Initial interest confusion requires improper benefit from a mark holder’s store of goodwill. Playboy v. Netscape (Ninth Circuit, 2004) S p. 88Initial interest confusion is confusion that creates initial interest in a competitor’s product. It impermissibly capitalizes on the goodwill associated with a mark. This is tested using the Ninth Circuit’s Sleekcraft eight-factor test, with some flexibility for the Internet context. Concurrence: Brookfield suggests that even if banner ads are clearly labeled, there is violation, but this may not be so. Playboy v. Universal Tel-A-Talk (ED Pa, 1998) p. 439Use of marks in URLs and email addresses may lead to confusion as to the source or sponsorship of a website. Directory: sites -> default -> files -> upload documents upload documents -> Torts Outline Daniel Ricks upload documents -> Torts outline Functions of Tort Law upload documents -> Constitutional Law (Yoshino, Fall 2009) Table of Contents upload documents -> Arrest: (1) pc? (2) Warrant required? upload documents -> Civil procedure outline upload documents -> Criminal Procedure: Police Investigation upload documents -> Regulation of Agricultural gmos in China upload documents -> Rodriguez Con Law Outline Judicial Review and Constitutional Interpretation upload documents -> Standing Justiciability (§ 501 Legal/beneficial owner of exclusive right? “Arising under” jx?) 46 Statute of Limitations Run? 46 Is Π an Author? 14 Is this a Work of Joint Authorship? 14 Is it a Work for Hire? upload documents -> Fed Courts Outline: 26 Pages Download 119.67 Kb. Share with your friends:
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