P Infringe

Case Date Rights? ment? Rule/Take away Quick!

Part I Foundations and Purposes of Trademark and Unfair Competition Law
Ch1 Introduction to Trademark and Unfair Competition Law
A. Sources and Nature of Trademark Rights
The Trade Mark Cases ### No Congressional statutes protecting TM not upheld.
Hanover Star Milling v.
Metcalf ### ? Goodwill extends as far as business extends.
Mishawaka Rubber v.
S.S. Kresge ### ? Convey desirability through mark.
Yale Electric v. Robertson ### ? TM law protects public. Quality control. TM protects public
Prestonettes v. Coty ### Yes No OK to use mark for ingredients, but not for deception.
B. The Nature of Unfair Competition Law
UC is "passing off" while TM infringement "misrepresentation. Producer v.
Public Protection. UC is Antitrust, TM infringement, Stealing Trade Secrets, Trade Unfair Comp
INS v. AP ### Yes Yes Libel, Tortious Interference, Fraud protects Producer
Dastar v. 20th Century False designation of origin. State law still matters and not pre-empted by federal
Fox ### ? TM law.
C. Purposes of Trademark Law TM Protection for Economic Efficiency.
D. Modern Marketing and Trademark Law TM as a separate product of marketing.
E. An Illustration
TM and UC use LOC. No LOC restaurant. Advertisements LOC. The goal of
dilution theory is to eliminate any risk of an erosion of the public's identification
of a very strong mark with the P alone and to prevent another from diminishing
Elvis Presley v. Capece ### Yes No/Yes mark's distinctiveness, uniqueness, and prestigious connotations.
Part II Creation of Trademark Rights
Ch2 Distinctiveness
A. The Spectrum of Distinctiveness
Safari is generic for clothing b/c widely used. Merely decriptive or suggestive for Descriptive
Abercrombie & Fitch v. boots or shoes. Description is ingredients or qualities. Suggestive is nature ingredients or
Hunting World ### No No using some imagination. qualities
Merely descriptive
needs 2ndary
In re Oppendahl & patents.com is merely descriptive. No registration without 2ndary meaning or meaning for
Larsen ### No No acquired distinctiveness. protection
B. Descriptiveness and Secondary Meaning
Fish-Fri merely descriptive with secondary meaning. Chick-Fri merely descriptive 2ndary thru ads,
Zatarains v. Oak Grove and no secondary meaning. 2nd thru ads, sales, surveys, length of use, direct & sales, surveys,
Smokehouse ### Yes/No No circumstantial. Fair Use defese works. Court can cancel TM. length of use
C. Generic Terms
Unregistered. Registration is presumption of validity. If registered, D must prove
Filipino Yellow Pages v. genericism. Generic term plus generic term may not equal a generic term. Generic inherently
Asian Journal Pubs ### No No Generic is who or what you are. Two ways to be generic - inherently or by use. or by use
Warehouse Shoes v. DSW Shoe Warehouse. Look beyond dictionary definition. Real definition,
Mil-Mar Shoe v. Shonac ### No No Warehouse is generic. not dictionary
Lose cource
Haughton Elevator v. connection -
Seeberger (Otis Elevator) ### No No Cancellation b/c escalator became generic. Genericide
Murphy Door Bed v. Can keep "Original Murphy Bed" based on unfair competition, but "Murphy Bed"
Interior Sleep Systems ### No/Yes No/Yes in public domain beyond recall. Generic.
D. Distinctiveness of Non-Verbal Identifiers: Logos, Packages, Product Design, and Colors
Distinctiveness of Logos: 1. Common basic shape or design. 2. Whether it is
unique or unusual in a particular field. 3. Whether it was a mere refinement of a
commonly-adopted and well-known form of ornamentation for the goods. 4.
Whether it was capable of creating a commercial impression distinct from the Logo
1. Different Tests, Different Standards? accompanying words. Distinctiveness
"O" protectable because sufficiently stylized. More protection for stronger More protection
Star Indus v. Bacardi ### Yes No marks. Not infringing here because no likelihood of confusion. for stronger marks
2. Expanding the Types of Nonverbal Marks Design features identify source.

Trade dress
Trade dress of a restaurant protectable on a finding of inherent distinctiveness, inherently
without proof the trade dress has secondary meaning. Requiring 2ndary distinctive needs
Two Pesos v. Taco meaning has anticompetitive effects. Eligibility depends on nonf unctionality. no 2ndary
Cabana ### Yes Yes Liability under 43(a) requires proof of LOC. meaning
Color protectable
Color can serve as TM alone if it has acquired secondary meaning and therefor with 2ndary
Qualitex v. Jacobsen ### Yes Yes identifies source. Encourages production of quality products. meaning
3. The Design/Packaging Distinction
a. Post-Two Pesos Circuit Split in the Test of Inherent Distinctiveness of Trade Dress
b. The Protection of Packaging Trade Dress after Two Pesos and Qualitex
c. The Supreme Court Enters the Fray: Product Design Trade Dress
Ch3 Functionality
A. An Introduction to the Concept of FunctionalityTM requirement - Nonfunctional. Monopoly on function hinders competition.

Design of spray bottle is not functional. Remand for distinctiveness. Balance

In re Morton-Norwich ### Maybe
B. The Scope of the Functionality Doctrine
Wallace Intl Silversmiths
cd v. Godinger Silver Art ### No
Brunswick v. British
Seagull ### No
C. The Modern Supreme Court Approach to FunctioCan't use TM law to extend patents.
Qualitex v. Jacobson ### Yes
right to copy with TM rights. 1. Functional - few or superior design available? 2.
Seems ordinary without TM - is trade dress distinctive? The public right to copy
those necessary elements of a mechanical construction, essential to the practical
operation of a device, and which cannot be changed without either lessesing the Functional?
efficiency of materially increasing the expense. Distinctive?
Functionality not function as selling feature.
Because the baroque design of swirls and curls is a functional feature of
"Baroque" style silverware, it is not subject to TM protection. Can't us emark to
exclude competitiors. Aesthetic Functionality Doctrine - Where an ornamental
feature is claimed as a trademark, & TM protection would substantially hinder Aesthetic
competition by limiting the range of adequate alternative designs, AFD denies Functionality
No Black
such protection.
outboard motors. If the feature asserted is the best, or at least one, of a Doctrine
few superior designs for its de facto purpose it follows that competition is Color can limit
No hindered. competition
If aesthetic value confers benefit, functional.

Competitive need test: 1. If configuration is needed to make equally competitive

product, it is functional. If not, not. 2. Availability for satisfactory alternatives
for a feature not its inherent usefulness is the fulcrum which Lanham Act
functionality turns. Because grill is significant inventive activity in patnet, it
cannot be protected as trade dress. Where a disputed product configuration is
part of a claim in a utility patent, and the configuration is described, significant
inventive aspect of the invention, so that without it the invention could not fairly
be said to be the same invention, patnet law prevents its protection as trade Competitive Need
cd Vornado v. Duracraft ### No No dress, even if the configuration is nonfunctional. Test

Functional? Yes? Secondary Meaning? No. Rather, the exclusive use of a

feature must put competitiors at a significant non-reputation-related
disadvantage before trade dress protection is denied on functionality grounds. Functional is
The springs are necessary for the operation of the device. Whether a utility essential to
patent has expired or there has been no utility patent at all, a product design use/purpose or
TrafFix Devices v. which has a particular appearance may be functional because it is "essential to affects
Marketing Displays ### No No the use or purpose of the article" or "affects the cost or quality of the article." cost/quality
Ch4 Use
A. Use as a Jurisdictional Prerequisite Commerce Clause - Commerce defined by impact - Wickard v. Filburn Commerce
B. Use as a Prerequisite for Establishing Rights First to Use, not First to Register First to Use
1. Actual Use Use in commerce is flexible - When v. Whether. WHEN. When Used
Advertisement and Actual Use are required by statute. Preparations to use mark
are not enough. Test: 1. Used or displayed in a sale or advertisement of services.
AND 2. Service rendered in Commerce in >1 state or country by a person Ad for services,
Aycock v. Airflite ### No engaged in commerce. Service rendered

Adoption and Use sufficient for public to identify or distinguish source is enough
to establish ownership, even without evidence of actual sales. Free coolmail
with GNU public license. Lanham Act - Sold OR Transported in Commerce. Can
establish with sales & ToC. S ecret undisclosed shipments generally inadequate. Sale or Transport
Planetary Motion v. Customary practice of industry AND owner has rights despipte public license (controlled) in
Techsplosion ### Yes because they controlled efforts (GNU license). Commerce
Tacking is strict. Registering domain is not enough. Marks must create the
Brookfield same, continuing commercial impression, and the later mark should not be
Communication v. West B Yes / materially different or alter the character of the mark attempted to be tacked.
Coast Entertainment ### WC No Win here is based on use date of online site. ".com" changes things! Tacking is strict

Analogous Use
2. Constructive Use
Warnervision v. Empire
of Carolina
C. Surrogate Uses
1. Uses by Affiliates
cd Boogie King s v. Guillory ###
2. Public as a Surrogate User
Coca-Cola v. Busch ###
D. Loss of Rights Through Non-Use or Uncontrolled Uses
1. Abandoned Through Non-Use
Use not qualifing as TM use can demonstrate prior use for 2(d) purposes. Use
analogous to TM use, in contrast to Token Use, is non technical use of a TM in
connection with the promotion or sale of a product under circumstances which
do not provide a basis for application to register, usually because the statutory
requirement for use on or in a connection with the sale of goods in commerce
has not been met. Analogous Use requires susbstantial impact on the public: 1.
Open and Notorious Public Use. 2. Directed to public segment services
intended. 3. Carried out in a manner to inform perspective purchasers of
adopter's service under the mark. Analogous Use
Token Use gone.Constructive Use is ITU - Intent to Use
The ITU provision permits the holder of an ITU application to use the mark in
commerce, obtain registration, and thereby secure priority retroactive to the
### Maybe date of filing of the ITU application. Can't enjoin ITU or use cou;dn't happen! ITU
Who is the User.
No right for band name to vest in one member. Platters - Individual members do
Band not retain rights unless only 1 original continuous member left and in position to
Yes control quality.
Coke
Yes Abbreviation should be protected if public used and adopted as designation.
Abandonment is 3 years of non-use or genericide.

Emergency One v.
American Fireeagle ### Maybe
Sports Heritage Act
2. Abandonment Through Failure to Control Use
Stanfield v. Osborne
cd Industries ### No
University Book S tore v.
U Washington ### Yes
Ch5 Registration
A. The Registration Process
1. Overview of Relevant Provisions
2. Post-Registration Actions
B. Exclusions from Registration
1. Overview of Relevant Provisions
2. Scandalous, Disparaging, and Deceptive Marks Under 2(a)
Footbal
Harjo v. Pro-Football ###
3. Geographic Marks
Burke- Parsons-Bowlby v.
Appalachian Log Homes ### 1989
4. Name Marks
In re United Distillers ###
In re Sauer ###
C. Incontestability
3 Year Statutory
AFE showed E-One discontinued use for 3 yearsand E-One failed to rebut presumption of
presumption by producing evidence of use. E-One showed intent to ues b/c on abandonment.
clothing, naming consideration/burn, biz plan. Need intent to use in reasonably Intent to reuse in
foreseeable future. Paid a lot of $ for mark, long life of product, skittishness. RFF
Proposal for cities to keep names and colors if team leaves. Officials could waive
rights. Woven into fabric of community traditions.
Naked (or uncontrolled) licensing of a mark occurs when a licensor allows a
licensee to use the mark on any quality or type of good the licensee chooses.
Such practice is inherently deceptive and constitutes abandonment of any rights
to the trademark by the licensor.
Although many 3rd parties use, only means school mark is weak and diluted, not
that it is abandoned. School showed some enforcement with letters. Laches -
have valid claim but do not say anything for a long time. Actual or constructive
notice affects.
1. Meaning of matter from standpoint of substantial public at time registration
issued. 2. Whether meaning is disparaging to those offended/scandalous to Disparaging
l yes shock sense of truth, decency, or propriety or offend conscience or morals. Scandalous
Appalacian describes origin, no evidence to style. Registration is rebuttable. LA
does not protect regions, nations, countries, towns, rivers, likes, and natural and
artificial geographic units. 2(e)(2) test for Prima Facie case: 1. Primary
significance of mark is geographic. 2. Purchaser would make a place association
goods/services originate in place. 3. Mark identifies geographic origin of goods
and services. Geographic
Reg or Hackler allowed RareNYN. 2(e)(4) test: 1. Whether surname is rare. 2.
Whether someone involved has surname. 3. Whether the term has recognized
Yes meaning. 4. Whether the term has the look and feel of a surname. Name
Bo Ball. Bo Jackson. 2(a) YYNY 1. Mark must be shown to be same or close
approximation of the person's previously used name or identity. 2. It must be
shown that the mark would be recognized as such. 3. It must be shown the
person in question is unrelated to goods and services. 4. Person's name or
identity must be of sufficient fame that a purchaser would make the connection.
2(c) Test met 1. Name identifying particular living person. 2. No written
No consent. Deceptive, Name
5 years with exceptions.

Can't contest Incontestible on merely descriptive. Can contest on 1. fraud, 2.

abandonment, 3. misrepresentation, 4. infringer is name, name privity, gf fair
and descriptive use, or geo origin, genericide?, 5. continuous prior use, 6.
Park N' Fly v. Dollar Park registered and used and not abandoned 7. mark used to violate antitrust laws, 8. Incontestable
and Fly ### Yes mark is functional, 9. laches, estoppel, and acquiescnece. Defenses
Part III Scope and Enforcement of Trademark Rights
Ch 7 Confusion-Based Trademark Liability Theories
A. Evolution of the Confusion Standard
Borden Ice Cream v.
Borden's Condensed Old way of thinking. Not same thing milk/ice-cream so no competition and no
Milk ### Yes No unfair competition. Public deception not the issue.
Beer and alcohol in same competitive category. B&W Scotch v. B&W Beer. Use
related so that they are likely to be connected in the mind of a prospective
purchaser? Unskilled purchaser is entitled to protection. If there is evidence Can prevent
Fleishmann Distilling v. name was adopted to capitalize on goodwill, inference can be drawn for related product
cd Maier Brewing ### Yes Yes likelihood of confusion. use.
LoC 1. Stength of mark both Inherent and Acquired Distinctiveness. 2. Degree of
similarity between marks. 3. Proximity of the products. 4. Likelihood prior
owner will bridge gap. 5. Actual confusion. 6. D good faith. 7. S ophistication of
C. The Factors Analysis for Likelihood of Confusion the buyers. LoC

Virg in Enterprises v.
Nawab ###
McDonalds v. Druck and
Gerner DDS ###
Libman v. Vining ###
D. Applying a Multi-Factor Test
4. Section 4(d) Confusion
E. Confusion Away from the Point of Sale
1. Initial Interest Confusion
1. Strength acquired and inherently (Can refer to goods by name. To grant such
exclusivity (to not) would deprive the consuming public of the useful market
information it receives where every seller of pencils is free to call them pencils)
distinctive. 2. Similarity of marks 3. Bridge gap. 4. Actual confusion. 5.
Yes Yes Sophistication. 6. Good or Bad faith. Fame very important! Loc
1. Family of Marks. 2. LoC all but bridge 3. No valid defense. Family of marks -
must show: 1. Group of marks used and promoted together in such a way that
public associates common feature with mark owner. 2. Common feature is
Yes Yes distinctive.
Most circuits have clearly erroneous standard. 6, 2, FC De Novo. Experts not House
usually allowed. Lack of actual confusion and did not use LoC test. Surveys 15%
No for actual. Standard of review
Ex-parte - LoC based on documents, not testimony like litigation. Use time,
sales, volume, ad expenditures to show fame through documents.

Playboy v. Netscape
Gibson Guitar v. Paul
cd Reed Smith Guitars
2. Post-Sale Confusion
cd Ferrarri v. Roberts
F. Reverse Confusion
Adwords. Actual conf usion, Low consumer care, Intent b.c Netscape profits.
Initial interest confusion is customer confusion that creates initial interest in a
competitor's product. Although dispelled before an actual sale occurs, initial
interest confusion impermissibly capitalizes on the goodwill associated with the
### Yes Yes mark and is therefore actionable TM infringement. Adwords
Guitar body shapes similar. Post-sale confusion occurs when use of a TM leads
individuals (other than the purchaser) mistakenly to believe that a product was
### Yes No manufactured by the TM-holder. II confusion not based on product shape.
Actual confusion not limited to purchasers. Disclaimers to purchasers usually
### Yes Yes not good enough. Makes rare item common.

A&H Sportswear v.
Victoria's Secret ###
G. Indirect and Vicarious Theories of Infringement Liability
Inwood Labs v. Ives Labs ###
Reverse confusion occurs when the junior user saturates the market with a
similar TM and overwhelms the senior user. Then harm to the senior user is that
they lose control over goodwill and reputation. None dispositive. 1. Degree of
similarity. 2. Strength of marks. Both conceptual strength in favor of senior. 3.
Price and sophistication. 4. Time D used mark without actual confusion. 5. D
intent. 6. Evidence of actual confusion. 7. Same channels of trade and media. Reverse LoC
8. target market same. 9. Relationship of goods in minds of consumers. 10. Doctirne protects
Yes Maybe Consumer would think larger company could or would expand into P's market. small senior user
Liability can extend beyond those who mislabel when manufacturer intentionally
induces another to infringe or continues to supply product to one whom it
knows or has reason to know is engaging in infringement. Actual instances of
Yes No mislabeling too infrequent and not deliberate.

1. Does Inwood apply? Not just manufacturers and distributors, but those with
significant control. 2. Is eBay liable under Inwood? Intentionally induce another
to infringe OR continues to supply service to one knows or has reason to know
is inf ringing. 3. Willful Blindness? eBay has incentive to remove, removes. eBay
did not ignore cfeit info, findings not clearly erroneous. Tiffany bears burden of
Tiffany v. eBay ### Yes No protecting their TM.
Ch8 Non-Confusion-Based Trademark Liability Theories
45, 43(c) - Harm can accrue even in absence of consumer confusion or
A. Dilution Protection competition.
4. The Forms of Dilution
43(c)(2)(B) Dilution by tarnishment harms the reputation of the famous mark.
a. Tarnishment (Drugs, nudity, sex.)
Toys "R" Us v. Akkaoui ### Yes Yes PI as likely to beOnly
Gunsareus.com tarnished by association
in Massachussets to se
and "R" x. web.
on Irrepar
ablearen't
Guns injury possible. Sex
Toys "R" Us v. Feinberg ### Yes No tarnishment. Guns

TDRA creates a rebuttable presumption or at least a very strong inference that a

new mark used to sell sex related products is likely to tarnish a famous mark if
there is a clear semantic association between the two. Defiles famous mark and
reduces commercial value of selling power. Show with expert testimony, polls,
V Secret Catalog v. surveys, customer testimony. RST UC 25(g). Moseleys could not rebutt Dilution burden of
Moseley ### Yes Yes presumption. Infringement protects public. Dilution protects mark. proof

43(c)(2)(B) Dilution by blurring is association impairing the distinctiveness of the

famous mark. Consider all relevant factors including 1. Similarity of Marks. 2.
Degree of inherent or acquired distinctiveness of the famous mark. 3. Extent Dilution requires
famous mark is substantially exclusive. 4. Degree of recognition of famous mark. famous mark.
b. Blurring 5. Intended association with famous mark. 6. Actual association. Dilution test.

Post-TDRA federal dilution statute provides a compelling reason to discard the

"substantially similar" requirement for federal TM dilution actions. The current
federal statute defines dilution by blurring as an "association arising from the Dissimilarity and
similarity between a mark . . . and a famous mark that impairs the intent important
Starbucks v. Wolf's distinctiveness of the famous mark. Charbucks - no negative connotation or in dilution by
Borough Coffee ### Yes Maybe inferior product. Dissimilar marks enough to defeat blurring. No bad faith. Blurring
B. Protection Against Cybersquatting 43(d)
ACPA Liable if BAD FAITH AND registers domain name distinctive mark - identical
or confusingly similar/famous mark - identical, confusingly similar, or dilutive. In
rem action in jur of registrar 1. violates registered TM. 2. Owner can't get PJ or
can't find person. 43(d) Bad faith - no IP rights, not legal name, no bona fide
offering of goods and services, no noncommercial or no fair use, intent to divert
customers, sell domain for gain, false contact info, multiple similar domain
2. Anticybersquatting Consumer Protection Act (Anames, distinctive or famous mark.
Sporty's Farm v. 1. Distinctive and famous per 15 USC 1125(d)(1)(A)(ii)(I and II) 2. Confusingly
Sportsman's Market ### Yes Yes similar. 3. Bad faith 1125(d)(1)(A)(i) and (d)(1)(B)(i). ACPA
No BF attempt to profit. Criticism only. Not non-commercial to avoid liability.
43(d)(1) violations have remedies available of: actual damages and profits or
Lamparello v. Falwell ### Yes No statutory damages. ACPA
Harrods v. Sixty Internet Legally both have name. In rem remedy is transfer or cancellation. In rem
Domain Names ### Yes Yes maintained only for bad faith. Can say bad faith even when lawful grounds.

UDRP 1. Identical or confusingly similar. 2. Registrant has no legitimate interest

in domain. 3. Domain registered in bad faith. Bad faith - purpose to sell, prevent
owner from use (pattern), purpose of disrupting business, intentional attempt to
3. ICANN Unifrom Domain Name Resolution Polattract by LoC.
World Wrestling 1. Confusingly similar. 2. No legit interest. 3. Bad faith. First UDRP case.
Federation v. Bosman ### Yes Yes Transfer.
Telstra v. Nuclear
Marshmallows ### Yes Yes Use and registration in bad faith. Inaction can be bad faith. Transfer.
4. The Relationship Between the UDRP and the A ACPA allows US llitigation after UDRP transfer 15 USC 1114(2)(D)(v).

Barcelona.com v.
Excelentisimo
Ayuntamiento de
Barcelona ### No No WIPO gave to city of Barcelona. Appeal says geo no rights. Reverse.
1. Brand Protection. 2. Register TM in all countries doing biz. 3. Register with
C. Protection Against Counterfeit Imports Customs.
32(1)(a) - Identical/Indistinguishable. Seizure, destruction, treble damages, fees,
1. Civil Liability for Counterfeitting actual or statutory damages, injunction difficult.
2. Criminal Liability for Counterfeitting Trademark Counterfeitting Act
Mails replica to FBI agent. TMs glued on. 18 USC 2320. TCA protect TM holder
to id and reputation for services. Applies to Post Sale Confusion. Likely to cause
confusion, mistake, or deception to the public in general. Still guilty but
USA v. Foote ### Yes Yes remanded for sentence. TCA
A counterfeit is a spurious mark which is identical with, or substantially
3. Protection Against Counterfeit Imports indistinguishable from, a registered mark.
Seized - 19 USC 1526(e) recorded with Customs. Forfeited - 19 USC 1595a not
recorded with Customs. Identical mark MUST be seized & forfeitted. Merely Customs protects
Ross Cosmetics v. US ### ? ? Infringing MAY be seized and forfeitted & can come in if mark destroyed. registered marks
Ch9 Permissible Use of Another's Trademarks
Assert affirmative defense of fair use at any time. Difference - Nominative fair
use where D has used P's mark to describe P's product, even if D's ultimate goal
is to describe own product. Classic fair use analysis is appropriate where D has
used P's mark only to describe his own product, and not at all to describe P's
A. Fair Use of Another's Trademark product.
Classic/Descriptive LA 33(b)(4) party's individual's name in his own business,
privity of person, descriptive device used in good faith fairly to describe goods
1. Descriptive (Classic) Fair Use and services or geographic origin. SWEET TART.
Micro Color. Burden of Proof of LoC is on P. Can't take descriptive words from
the language. 9Cir. Relevant factors in determining fair use: 1. the degree of
likely confusion. 2. strength of the TM. 3. descriptive nature of the term for the
product or service being offered by KP and the availability of alternate
descriptive terms. 4. the extent of the use of the term prior to the registration of
KP Permanent Make-Up the TM, and 5. any differences among the time and contexts in which KP has Descriptive Fair
v. Lasting Impression ### Maybe Maybe used the term. Use Test
2. Nominative Fair Use

Use of another's TM to identify the TM owner's product in comparative

advertisingis not prohibited by either statutory or common law, abesnt
misrepresentation regarding the products or confusion as to their source or
sponsorship is generally approved. Copier of unpatented product sold under TM
use TM in ad to identify product he copied? Yes, if no misrepresentation or LoC
as to source, id, sponsorship. If no cheap alternative, monopoly! Also, free ride,
reputation not at stake, genericize threat. NKOTB phone poll - 9Cir relevant
factors 1. that the product or service in question was not readily identifiable
without the use of the TM. 2. That only so much of the mark or marks was used
and was reasonably necessary to identify the product or service; 3. that the user Nominative Fair
R.G. Smith v. Chanel ### Yes No did nothing that would suggest sponsorship or endorsement by the TM holder. Use Test
Coty - repackaging exception (must notify). Enesco - quality control exception
not met by Costco b/c patnet, not latent. Refurbished ok, gray goods ok. Resell.
B. Use of Another's TM on Genuine Goods: "First SDavidoff - UPC change does not interfere with QC, confusion, dilution. First Sale Doctrine
Champion Spark Plugs v. Inferiority expected of used goods. Full disclosure gives manufacturer all
Sanders ### Yes No protection to which he is entitled.

LoC 1. Differences nothing more than expected for used golf balls. 2. therefore
not a misnomer to remark balls with Acushnet mark. 3. Acushnet not likely to
suceed on merits. AND 1. Nature and extent of alterations. 2. nature of the
device and how it is designed. 3. whether a market has developed for service or
spare parts. 4. whether end users of product are likely to be misled as to the
party responsible for the composition of the product. AND 1. Evidence proffered
performace differences not as extensive as Acushnet says. 2. Evidence of the
Nitro Leisure Products v. use of disclaimers. 3. Evidence from customers on the question of conf usion.
Acushnet ### Yes No DISSENT - Permitting reaffix of TM on broken and concealed goods WRONG.
C. Use of Another's Trademark in Parody or Speech Not complete defense. 15 USC 1125(c)(3)(A)(ii).
Q of law and fact inseparable so de novo review. 1. Apply LoC factors broadly. 2.
Anheuser-Busch v. Then 1A issues. Weigh public interest against consumer confusion against public
Balducci Publications ### Yes Yes interest in free expression. Product exact, no disclaimer. Not Parody

LoC, 1A, Rogers, Hoffman (purley commercial = does not do more than propose
a commercial transaction) 1.titles do not violate Lanham Act unless the title has
no artistic relevance to the underlying work. 2. Or if it has artistic relevance
unless the title explicitly misleads as to the source or content of the work.
FDTA's 1125(c)(4)(B) and (3)(C) 1. Comparative advertising 2. News reporting
Mattel v. MCA Records ### Yes No and commentary, and 3. Noncommercial use. Dilution injunction is very broad. Parody

E.S.S. Entertainment
2000 v. Rock Star Videos ###
Rogers 1. Artistic work which would otherwise violate the Lanham Act is not
actionable 1. Unless the use of the mark has no artistic relevance to the
underlying work whatsoever. 2. or if it has some artistic relevance unless it
explicitly misleads as to source or content of work. Usually title, but no reason
Yes No to not apply to body. Game is artistic and Play Pen is not a cultural icon. Rogers 1A Test

Parody is and isn't. Incomplete copy of mark. Similar and different. Juxtapose
irreverant representation of TM with idealized image. Parody alters LoC analysis:
1. Strong mark goes agains. 2. Similar enough to evoke. Different marketing
channels emphasize. 3. LVM won't make dog toys. 4. 5. Min overlap facilities
and advertising. 6. Intent neautralized by parody. 7. No evidence of actual
confusion. THEN Dilution: 4. association likely to impair distinctiveness. 1125(c)
(2)(B). 1. Similarity of marks. 2. Inherent or acquired distinctiveness of famous
mark. 3. Extent of substantial exclusive use of mark. 4. Degree of recognition of
Louis Vuitton Malletier v. famous mark. 5. Whether user intended association w/ famous mark. 6. Actual
haute Diggity Dog ### Yes No association between marks. Parody
Ch12 Remedies
Injunction premised on need to prevent harm. 1. Subjective likelihood of
success on merits. 2. Irreparable injury. 3. Balance of hardships. 4. Public
A. Injunctive Relief interest. Injunction test.
LoC and irreparable injury. Disney has burden of how to copmly with PI. PI
Goto.com v. Walt Disney reviewed on abuse of discretion. Bond 65 not looked to. Laches - 1. Was the Irreparable harm
Company ### Yes Yes delay in bringing suit unreasonable? 2. Was the defendant prejudiced by delay? standard. Laches.
No difference between Preliminary and permanent injunction. Issue in
accordance with principle of equity 1116(a). Can't assume irreparable injury
North American Medical without PI. PI maintains status quo but if worse, mandatory injunction is an
v. Axiom Worldwide ### Yes Maybe affirmative act.
B. Monetary Relief
1117(a). DC did not abuse discretion when denying accounting of profits and
award of damages. Treble damages and fees not appropriate here. P must Monetary
prove fact and amount of damages. P did not determine phone sale percentage damages have
Lindy Pen v. Bic Pen ### Yes Yes here. high standard.

In order to justify an award of profits, P must establish D engaged in willfull

deception. Grounds for D profits for 1. Unjust enrichment - requires actual
confusion or proof of deceptive intent. 2. Where P sustains damages - hard to
establish b.c based on sales w. infringing marks, some courts need BF. 3.
Deterrance - award D profits solely because D fraudulently used P's mark. Other
factors: 1. Degree of certainty D benefitted from unlawful conduct. 2.
Availability anmd adequacy of other remedies. 3. Role of particular D in
George Basch v. Blue effecting infringement. 4. P laches. 5. P's unclean hands. AND equitable
Coral ### Yes Yes principles and circumstances. Injunction only w/o P showing D willfull intent. $ require BF

Factors for damage award under Lanham Act. 1. Whether D had intent to
confuse/deceive. 2. Whether sales were diverted. 3. Adequacy of other
remedies. 4. Any unreasonable delay in P asserting rights. 5. Public interest in
making misconduct unprofitable. 6. Whether its a case of palming off. Weigh Monetary damage
Synergistic v. Korman ### Yes Yes equities, discretion, circumstances. Remand for damages. No fees. test.
 P Infringe
Case Date Rights? ment? Rule/Take away Quick!
Not exceptional enough to alter rule that parties pay their own fees. 1. Culpable
conduct - BF, fraud, malice, knowing infringement, or bad behavior during
litigation. 2, Exceptional enough to warrant fee award? Closeness of liability Q,
P damages, etc. Totality of circumstances. P bears burden. GF is colorable claim Exceptional to
Green v. Fornario ### Yes Yes of right to engage in behavior. Not clearly erroneous. warrant fees.
Statutory damages under 1117(c) precludes award of fees under 1117(d). DC
K&N Eng ineering v. Bulat ### Yes Yes abused discretion in awarding fees.
C. Other Remedies No punitive damages through Lanham Act. Maybe state ok.