Trademark Law. Prof. Madison University of Pittsburgh School of Law

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1 Trademark Law Prof. Madison University of Pittsburgh School of Law

2 A growing glossary of trademark law terms and concepts: 1. The mark, as a general concept (vs. symbol, vs. brand) 2. The mark in a particular instance (define the mark) 3. Mark X for Product or Service Y 4. Distinctiveness ( distinctive of source or distinctive as to source ) 5. Goodwill (trademark law is intended to protect which interests?) 6. Confusion (what is the harm associated with unauthorized use of a mark?) 7. Search costs and free riding 8. Lanham Act of 1946 (federal statutory scheme) 9. Common law of unfair competition (and common law basis of TM rights) 10. Abercrombie spectrum 11. Inherent distinctiveness 12. Acquired distinctiveness and secondary meaning 13. Trademarks; service marks; word marks; design marks; sound marks (smell, texture, taste marks); color marks; combination marks; trade dress 14. Product packaging v. product configuration trade dress; tertium quid 15. A cocktail shaker shaped like a penguin 16. Proving distinctiveness: Abercrombie spectrum and the Seabrook Foods factors 17. mere ornamentation as an argument against TM protection and/or as a conclusion supporting the denial of TM protection 18. Strong marks and weak marks

3 A growing glossary of trademark law terms and concepts: 19. Bars to protection 20. Utilitarian functionality and aesthetic functionality 21. Protecting competition. Competition in what products or services / features? 22. Deceptive and deceptively misdescriptive marks 23. Geographically deceptive and geographically deceptively misdescriptive marks 24. Implications of Matal v. Tam freedom of expression holding for immoral, scandalous marks and for dilution law 25. Use in commerce, as a mark [compare warehousing marks and reserving rights in a mark 26. Filing bases; 1(a) or use-based registrations; 1(b) or ITU registrations 27. Registration offers nationwide constructive use priority under 7(c) as of date of application 28. Senior users and junior users 29. Tea Rose/Rectanus principle of territoriality 30. Good faith remote junior users 31. The Dawn Donut rule

4 Paris Convention for the Protection of Industrial Property, Article 6quinquies A. (1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article. Such countries may, before proceeding to final registration, require the production of a certificate of registration in the country of origin, issued by the competent authority. No authentication shall be required for this certificate. (2) Shall be considered the country of origin the country of the Union where the applicant has a real and effective industrial or commercial establishment, or, if he has no such establishment within the Union, the country of the Union where he has his domicile, or, if he has no domicile within the Union but is a national of a country of the Union, the country of which he is a national. B. Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: (i) when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed; (ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed; (iii) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.

5 Lanham Act Section 44 (15 U.S.C. 1126): (e) Registration on principal or supplemental register; copy of foreign registration A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register in this chapter provided. Such applicant shall submit, within such time period as may be prescribed by the Director, a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant. The application must state the applicant s bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration.

6 Lanham Act Section 44 (15 U.S.C. 1126): (d) Right of priority An application for registration of a mark under section 1051 [1], 1053 [3], 1054 [4], or 1091 [23] of this title or under subsection (e) of this section, filed by a person described in subsection (b) of this section who has previously duly filed an application for registration of the same mark in one of the countries described in subsection (b) of this section shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, That (1) the application in the United States is filed within six months from the date on which the application was first filed in the foreign country; (2) the application conforms as nearly as practicable to the requirements of this chapter, including a statement that the applicant has a bona fide intention to use the mark in commerce; (3) the rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on an application filed under this subsection; (4) nothing in this subsection shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country unless the registration is based on use in commerce.

7 Territorial nature of trademark protection Section 44 registration Two grounds for finding of bad faith with respect to registration of a foreign mark Person s Co., Ltd. v. Christman (Fed. Cir. 1990)

8 Person s Co., Ltd. v. Christman (Fed. Cir. 1990)

9 Paris Convention Article 6bis: Marks: Well Known Marks (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well known mark or an imitation liable to create confusion therewith.

10 Grupo Gigante v. Dallo & Co., Inc. (9 th Cir. 2004)

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12 ITC Limited v. Punchgini, Inc. (2d Cir. 2007)

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14 Quick priority exercise: FC Bayern Munich is one of the most famous soccer clubs in the world. It plays in the German Bundesliga (top division). Does US priority of the mark FC Bayern Munich, for entertainment services in the form of professional sports exhibitions, and merchandise and apparel, date from: 1976 [more or less]: Bayern Munich matches appear in edited broadcasts titled Soccer Made in Germany, a TV program shown on PBS in the US [more or less]: Bayern Munich replica jerseys are available to US customers via mail order supplied by third parties who import them from Germany [more or less]: Bayern Munich matches appear on US cable and satellite TV networks transmissions licensed by the Bundesliga. [2012: US Bayern Munich Fan Club organized and holds meetings in New York City, without official FC Bayern sponsorship. Can the organizers claim rights to the Bayern Munich mark in New York?] 2014: Bayern Munich tours US for exhibition matches following German World Cup victory in Brazil. 2014: Bayern partners with a US soccer academy to train US youth soccer players at the Bayern soccer academy in Germany. 2014: Bayern Munich opens a marketing office in New York City. 2016: Bayern Munich competes in tournament matches in the US, sponsored by Audi.