Oct. 16, 2006

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Trademark Law

• Oct. 16, 2006
• Week 7
• Chapter 6 Infringement

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Review - Loss of Trademark Rights

• Genericism (a verb)
• A word is generic if? (see your notes)
• The public gets to decide what they will call a
  product
• Must educate the public, competitors, even
  employees

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Review - Loss of Trademark Rights

• Abandonment
• Non-use (intent not to resume such use) - Nonuse
  for 3 yrs
• Owners conduct causes the mark to become generic

4
Review - Loss of Trademark Rights

• Assignment in Gross
• Use-based reg. (assign the goodwill)
• ITU-based app. (must sell the business Related to
  the mark)
• Naked Licensing - agreements to allow use of the
  name without adequate supervision and quality
  control

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Review - Loss of Trademark Rights

• Failure to Police the Mark
• requires mark owners to policy their mark
• Why? if there are numerous products in the
  marketplace bearing the alleged mark, purchasers
  may learn to ignore the mark as a source
  indication this causes the mark to lose its
  significance as a mark
• What about allowing infringer to sell-off
  remaining goods

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Infringement

• Sec. 1114(1)
• Any person who shall, without the consent of the
  registrant -
• (a) use in commerce any reproduction,
  counterfeit, copy, or colorable imitation of a
  registered mark in connection with the sale,
  offering for sale, distribution, or advertising
  of any goods or services on or in connection with
  which such use is likely to cause confusion, or
  to cause mistake, or to deceive . . .
• shall be liable in a civil action by the
  registrant

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Sec. 1114(1)(a)

• Any person who shall, without the consent of the
  registrant. . .
• use in commerce
• any reproduction . . . or . . .imitation of a
  registered mark
• in connection with the sale, offering for sale .
  . . of any goods or services
• with which such use is likely to cause confusion.
  . .
• shall be liable in a civil action by the
  registrant

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Prima Facie Element of TM Infringement

• Accused use will cause a likelihood of confusion
• The test of infringement
• factors used to determine likelihood of confusion
• each circuit has their own test

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(No Transcript)
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Standard of Review for L.O.C.

• AMF vs. Sleekcraft (9th Cir.)
• Standard of reivew
• Legal standard
• Facts used in analysis
• 9th Cir. - Dichotomous tests - Whether likelihood
  of confusion is more a question of law or one of
  fact depends on the circumstances of each
  particular case.
• if disputed findings of fact ap. ct. must follow
  the conclusion of the trial court unless it finds
  the underlying facts to be clearly erroneous
• if the facts are not in dispute, the ap.ct. is
  "in as good a position as the trial judge to
  determine the probability of confusion

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The Sleekcraft Case

• AMF vs. Sleekcraft (9th Cir.)
• Ps and Ds Goods can be
• unrelated
• no likelihood of confusion (even if marks are
  identical)
• competitive
• may be likelihood of confusion if marks are
  similar
• related but not competitive
• may be likelihood of confusion if
• marks are similar and/or
• other facts surrounding goods are similar

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The Sleekcraft Factors

• AMF vs. Sleekcraft (9th Cir.)
• 1. Strength of Plaintiffs Mark
• 2. Proximity of the goods
• 3. Similarity of marks
• 4. evidence of actual confusion
• 5. Marketing channels used
• 6. type of goods and degree of care likely
  exercised by the purchaser
• 7. Defendants intent in selecting the mark
• 8. Likelihood of expansion of the product lines

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Which factors to Consider?

• unrelated goods - no likelihood of confusion
• competitive goods - may be likelihood of
  confusion if
• marks are similar
• Strength of Plaintiffs Mark
• Similarity of marks
• Defendants intent in selecting the mark
• non competitive goods - may be likelihood of
  confusion if
• marks are similar and/or (see above)
• other factors surrounding the degree of
  competiveness
• Proximity of the goods
• Evidence of actual confusion
• Marketing channels used
• Type of goods and degree of care likely exercised
  by the purchaser
• Likelihood of expansion of the product lines

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Which factors to Consider?

• Brookfield West Coast
• Consider all the factors
• Decide how much weight to apply to each factor
  (rank them)
• Then determine (given the respective weighting)
  if theres a likelihood of confusion
• N.B. the infamous 3 internet factors are a
  misnomer.

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The Sleekcraft Factors

• AMF vs. Sleekcraft (9th Cir.)
• 1. Strength of Plaintiffs Mark
• 2. Proximity of the goods
• 3. Similarity of marks
• 4. Evidence of actual confusion
• 5. Marketing channels used
• 6. Type of goods and degree of care likely
  exercised by the purchaser
• 7. Defendants intent in selecting the mark
• 8. Likelihood of expansion of the product lines

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Application and Analysis of the Factors

• Strength of Mark
• Distinctiveness Scale (from week 2)
• ltltlt -----not distinctive -----maybe distinctive
  ----- inherently distinctive ----- gtgtgt
• generic descriptive suggestive,
  arbitrary, and fanciful
• ltltlt ----- inherently
  distinctive ----- gtgtgt
• suggestive,
  arbitrary, and fanciful
• (weak)
  (strong)

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Application and Analysis of the Factors

• Proximity of the goods
• Similarity of marks
• sight, sound meaning
• Evidence of actual confusion
• very persuasive, but hard to prove

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Application and Analysis of the Factors

• Marketing Channels Used
• Type of goods and degree of care exercised by
  purchaser
• Defendants intent in selecting the mark
• Likelihood of expansion of the product line

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Balancing the Factors

• Held Nescher / Sleekcraft have infringed the
  Slickcraft mark.
• Ok so what remedy?
• injunctive only (why?)
• limited and stills allows use of Sleekcraft still
  ok in its logo form.
• No disclaimer

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The Polaroid Factors

• Polaroid Corp. V. Polarad Electrs. Corp. 2nd Cir.
  (161)
• Strength of Plaintiffs Mark
• Similarity of marks
• Proximity of the goods
• Likelihood that P will bridge the gap
• evidence of actual confusion
• Ds good faith in selecting the mark
• Quality of Ds products or services
• Sophistication of the buyers
• NOT ON THE TEST! (but if youre ever in the 2nd
  Cir...)

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The Polaroid Factors

• Application of Polaroid factors
• Banfi Prod. V. Kendall-Jacks (EDNY 1999) 407
• Who is the Sr. user??

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Initial Interest Confusion

• Mobil Oil v. Pegasus Petroleum Corp. 424
• Judge MacMahon found a likelihood of confusion
  not in the fact that a third party would do
  business with Pegasus Petroleum believing it
  related to Mobil, but rather in the likelihood
  that Pegasus Petroleum would gain crucial
  credibility during the initial phases of a deal.

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Initial Interest Confusion

• Playboy Ent. V. Netscape (9th Cir. 2004) Suppl.
  88
• Wheres the initial interest?

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Next Week

• Chapter 7 False Designation of Origin
  (Infringement cont.)
• Reading
• 504-555