Official Journal of the International Trademark Association. INTA 125 Years of Excellence. Vol. 93 January-February, 2003 No. 1

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1 Official Journal of the International Trademark Association INTA 125 Years of Excellence Vol. 93 January-February, 2003 No. 1

124 Vol. 93 TMR INTA AND UNITED STATES COURTS By Marie Driscoll * The U.S. Amicus Subcommittee acts in the capacity of friend of the court, or amicus curiae, and draftsman of INTA briefs on legal issues of importance to trademark owners.

2 124 Vol. 93 TMR INTA AND UNITED STATES COURTS By Marie Driscoll * The U.S. Amicus Subcommittee acts in the capacity of friend of the court, or amicus curiae, and draftsman of INTA briefs on legal issues of importance to trademark owners. It files amicus briefs for consideration principally by appellate courts, including the United States Supreme Court. The Subcommittee is a relatively small one, principally because it often must act quickly. It is also democratic in that all members review requests for amicus participation and participate in telephone debates to formulate recommendations to the Executive Committee concerning filing of a brief. The Subcommittee does not need to look for work. Every year, it receives several requests and takes on the challenge when there is a legal issue of general interest and importance to the trademark community. It does not comment on the facts of any case. Rather, the role of the Subcommittee has been to inform the courts of INTA s position on legal matters, as an independent and expert organization. From 1974 through 2002, INTA has filed amicus briefs in 24 cases. In the Supreme Court, briefs on the merits have been filed in seven cases and briefs in support of petitions for certiorari in six. Other appellate courts in which briefs have been filed include the 2nd, 5th, 8th, 9th, and 10th and the Court of Appeals for the Federal Circuit. One brief was filed in the Federal Trademark Commission. While the time commitment is considerable, the Subcommittee members have the great good fortune to have input to courts on issues of great importance in the trademark world. The most recent amicus brief, for example, was in V Secret Catalogue, Inc. v. Moseley, 1 now pending before the United States Supreme Court. * Member of the firm of Fross Zelnick Lehrman & Zissu, New York, New York, Associate Member of the International Trademark Association. She has served a term as Counsel to the Association, been on the Board of Directors and been a member of the Trademark Review Commission. She was for many years on the Management Committee and acted as adviser to the Lefkowitz Moot Court Competition. She is on the panel of Neutrals for Alternate Dispute Resolution and is currently Chair of the United States Amicus Brief Subcommittee F.3d 464 (6th Cir. 2001), cert. granted, 122 S. Ct (2002). INTA s amicus brief, as well as the briefs from the petitioners and respondents, are reprinted in 92 TMR (2002).

3 Vol. 93 TMR 125 The Court will address the split in Circuits over interpretation of the federal dilution statute, in particular whether actual dilution need be proved or only likelihood of dilution. The brief that was filed is illustrative of the role INTA should ideally play. In the brief, INTA set forth the historical origins of the dilution concept, originating with the 1927 article by Frank Schechter; traced the evolution of the doctrine in case law and state statutes; and set forth the evolution and legislative history of Section 43(c), the federal dilution statute. It then went into an analysis of the relationship of dilution to other provisions of the Lanham Act and of its part in the remedial scheme of things, and ended with an analysis of economic issues involved in dilution. These may all be matters to which the parties, focusing on the facts and equities in their cases, may be unable to devote extensive discussion. To the extent that INTA can put matters into focus, it believes it satisfies its function as amicus. Other Supreme Court participation includes the cases discussed below. Four of these cases involved the knotty issues of protecting product features in which the interests of the market innovator must be balanced with the interests favoring free competition. Two Pesos, Inc. v. Taco Cabana, Inc. 2 The issue in this case was whether aspects of the elements in the trade dress of a restaurant could be inherently distinctive and thus protectible or whether a showing of secondary meaning would always be required. Or, more broadly stated, should trade dress be treated on a par with word trademarks that can in appropriate cases be considered inherently distinctive? In its brief, INTA answered Yes to both questions. The Court agreed. The Court ruled that that proof of secondary meaning is not required to prevail on a claim under Section 43(a) of the Lanham Act where the trade dress at issue is inherently distinctive. 3 The Court added: 43(a) provides no basis for distinguishing between trademark and trade dress. 4 The justices also noted: There is no persuasive reason to apply different analysis to the two. 5 Qualitex Co. v. Jacobson Prods. Co. 6 This case involved product color. The issue here was also whether color could ever be U.S. 763 (1992). See 82 TMR 440 (1992) to read Excerpts From the United States Trademark Association s Amicus Brief in Two Pesos, Inc. v. Taco Cabana International, Inc., and Taco Cabana. 3. Id. at Id. at Id U.S. 159 (1995). To read Excerpts From the Motion of International Trademark Association for Leave to File Brief Amicus Curiae in Support of Petitioner and Brief Amicus Curiae of International Trademark Association in Support of Petitioner in Qualitex Company v. Jacobson Products Co., Inc. and articles about the issue, see 84 TMR and

4 126 Vol. 93 TMR inherently distinctive or is protectible only upon a showing of secondary meaning. In a brief submitted to the Supreme Court, INTA wrote that it was the policy determination of Congress that color per se, like any subject matter that functions as a trademark, may be registered when the statutory requirements for registration are satisfied. The Supreme Court held that color per se was not disqualified from trademark protection and that the green gold color at issue had acquired secondary meaning and was protectible. Wal-Mart Stores, Inc. v. Samara Bros. 7 This case addressed a variation on the same theme and involved protectibility of clothing design. The question was whether a product design could be inherently distinctive. INTA argued that a different standard should be applied to products, as opposed to packaging and designs, and urged that the test formulated in the Seabrook case 8 is the appropriate standard for assessing the distinctiveness of a product s appearance. The Supreme Court ruled that in cases where there is unregistered trade dress, it is necessary to prove secondary meaning. TrafFix Devices, Inc. v. Marketing Displays, Inc. 9 This case was the logical next step. It involved the interplay between patent and trademark law and the important issue of patent expiration and its effect on the question of functionality of elements of the product s trade dress. In a brief filed with the U.S. Supreme Court, INTA argued that whether or not a feature is addressed in a utility patent, it could nevertheless be eligible for protection when it otherwise meets the requirements for protection under the Lanham Act, which include non-functionality. The Court ruled that the design in question was a functional feature for which there was no trade dress protection. Other issues that have attracted INTA s interest relate to parallel imports, also called gray market goods. K Mart Corp. v. Cartier, Inc. 10 involved importation of genuine goods without the authorization of the U.S. trademark owner and the interface between Customs regulations that provided exceptions to the ban on importation of gray market goods and 526 of the Tariff Act. In U.S. 205 (2000). See 89 TMR 986 (1999) for a reprint of Brief Amicus Curiae of the International Trademark Association in Support of Neither Party in Wal-Mart Stores, Inc. v. Samara Brothers, Inc.; see also discussion of this decision in 90 TMR (2000). 8. Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (Fed. Cir. 1977) U.S. 23 (2001). See 90 TMR 897 (2000) for a reprint of Brief of Amicus Curiae the International Trademark Association in Support of Neither Party in TrafFix Devices, Inc. v. Marketing Displays, Inc.; see also discussion of this decision in 91 TMR (2001) U.S. 281 (1988). See 77 TMR 248 (1987) for a reprint of The USTA Brief in United States of America, K Mart Corporation and 47th Street Photo, Inc. v. Coalition to Preserve the Integrity of American Trademarks, Cartier, Inc. and Charles of the Ritz Group, Ltd.

5 Vol. 93 TMR 127 this instance, INTA wrote that the Customs interpretation of 526 overlooks both the traditional concept that trademark rights are territorial and a principal purpose of the Lanham Act, which is to secure to trademark owners the advantages of the reputation and goodwill they have created. The Supreme Court upheld the Customs regulations. More recently, INTA filed a letter with the Court of Appeals for the Ninth Circuit in Philip Morris v. Cigarettes for Less 11 supporting the position that parallel imports may be infringements, even where common corporate control exists between the United States and foreign trademark owner if there is a material difference between the product sold in the U.S. market and that being imported. The court affirmed the district court opinion. The Subcommittee entered the electronics age in the Ninth Circuit with an amicus brief in Playboy Enterprises, Inc. v. Netscape Communications Corp. and Excite, Inc. 12 Here the issue was whether uses of PLAYBOY and PLAYMATE on the Internet were non-trademark uses as they appeared in keyword buys. INTA urged that courts treat the Internet as they would other media in determining whether use of another s trademark constitutes infringement or unfair competition. Back in the 1980s, INTA entered the fray (as USTA) in Ralston Purina Co. v. On-Cor Frozen Foods, Inc. 13 The issue the Association addressed was this: should applicant lose its trademark rights because the product as ultimately marketed differed somewhat from the product originally shipped to acquire use-based rights. INTA wrote tremendous expenditures and financial risks are involved in developing and introducing a new product on a national scale and that it is common practice, dictated by the commercial realities, for a product, as well as its brand name, to be extensively test marketed, and there are frequently modifications of the original product concept. In its opinion, the court was influenced by and cited the Association s brief. 14 Also in the 1980s, INTA filed a brief at the invitation of the Court of Appeals for the Federal Circuit (CAFC) in Atari, Inc. v. JS&A Group, Inc. 15 The issue in this case was whether, subsequent to the filing of a complaint which included a patent claim, the patent count could be severed and the appeal on a copyright claim be decided by regional courts of appeal, rather 11. No , 2000 U.S. App. LEXIS 6823 (9th Cir. filed April 11, 2000) F. Supp. 2d 1070 (C.D. Cal 1999). See 91 TMR 756 (2001) for a copy of the brief F.2d 801 (Fed. Cir. 1984). See 74 TMR 234 (1984) for a copy of the brief. 14. Id. at F.2d 1422 (Fed. Cir. 1984). See 74 TMR 259 (1984) for a copy of the brief.

6 128 Vol. 93 TMR than the CAFC. The CAFC denied the transfer to the regional court of appeal. State immunity issues were involved in Chavez v. Arte Publico Press. 16 Here, INTA weighed in on the issue of abrogation of state sovereign immunity in a suit brought under the copyright act in federal court, arguing in favor of the constitutionality of the Trademark Remedy Clarification Act, which eliminated state immunity under the 11th Amendment for Lanham Act violations. The court disagreed. Eventually, the question of sovereign immunity in intellectual property cases was decided by the U.S. Supreme Court in the matter of College Savings Bank v. Florida Prepaid Postsecondary Expense Board, another case in which INTA filed an amicus brief. 17 The Court solidified the protections afforded to states by the 11th Amendment, noting that a state entity does not constructively waive its sovereign immunity when it engages in interstate commerce. INTA became a friend of the Court of Appeals for the Second Circuit in WarnerVision Entertainment Inc. v. Empire of Carolina, Inc. 18 This case addressed the issue of whether a party who has filed an intent to use (ITU) application can be preliminarily enjoined from engaging in commercial use of the mark as required under the Lanham Act for full registration on a motion of a holder of a similar mark who commenced use of its mark subsequent to the filing of the ITU application, but prior to applicant s commercial use. The Second Circuit ruled that an injunction could not be issued. Citing the INTA brief, the court said: if Empire s ITU application cannot be used to defend against WarnerVision s application for a preliminary injunction, Empire will effectively be prevented from undertaking the use required to obtain a registration. In short, granting a preliminary injunction to WarnerVision would prevent Empire from ever achieving use, registration and priority would thus effectively and permanently terminate its rights as the holder of the ITU application. 19 Somewhat esoteric, but no less important, and another example of the types of cases in which INTA becomes involved is Taylor Corporation v. Sigma Chi Fraternity. 20 In this case, the U.S. Court of Appeals for the Eleventh Circuit issued a per curiam opinion affirming the judgment entered by the District Court for the Southern District of Florida in favor of the Sigma Chi Fraternity. The ruling of the district court and subsequently the F.3d 601 (5th Cir. 2000). 17. See 89 TMR 769 (1999) F.3d 259 (2d Cir. 1996). See 87 TMR 222 (1997) for a copy of the brief. 19. Id. at See 92 TMR 708 for a reprint of Brief of Amicus Curiae the International Trademark Association in Partial Support of Appellees/Cross-Appellants in Taylor Corporation v. Sigma Chi Fraternity and Sigma Chi Corporation.

7 Vol. 93 TMR 129 appeals panel are consistent with an amicus brief filed by INTA at the appellate level, in which the association urged the court to uphold the principles of unfair competition applied by the district court and the proposition that a trademark owner should always have the right to control the quality of goods sold under its mark. The INTA brief noted that the fact that products bearing the trademark or collective mark are purchased to show pride in affiliation with an organization should not serve to undermine basic trademark concepts and the recognized rights of the trademark owner to exploit the mark and control the manner in which it is used. In closing, I note that a professor in California analyzed the effect amicus briefs may have played in the California Supreme Court. In those instances where an amicus brief was filed on behalf of one of the parties, that party won 50% of the time; however, the converse is also true, since the other party won 50% of the time as well. Nonetheless INTA s U.S. Subcommittee continues to battle on and welcomes the chance to participate when asked. 21 If the trend of recent cases continues, it will probably see more dilution cases and more cases involving the Internet. 21. The procedures for requesting amicus participation appear on the INTA website at

Official Journal of the International Trademark Association. INTA 125 Years of Excellence. Vol. 93 January-February, 2003 No. 1

Official Journal of the International Trademark Association INTA 125 Years of Excellence Vol. 93 January-February, 2003 No. 1 130 Vol. 93 TMR INTA AND INTERNATIONAL COURTS By Clark W. Lackert * The International