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Intellectual Property - Summer 2001

Trademark Study Guide II - 680 - 794

D. Infringement-680

Why does consumer confusion hurt trademark owners?

Why does it hurt consumers?

How does it potentially benefit junior marks?

1. Likelihood of Consumer Confusion-680

AMF Incorporated v. Sleekcraft Boats-680

What are the two products and how do they differ?

What are the competing marks?

Which has priority and why?

Did defendant know about Slickcraft when it picked it's mark?

What did defendant do when notified by AMF that it was infringing

Why do overlapping markets matter?

What did the district court find about the markets overlap?

Based on this, what did the district court rule?

What are the 8 factors and how did the court apply each of them in it's review of the facts?

1. strength of the mark;

2. proximity of the goods;

3. similarity of the marks;

4. evidence of actual confusion;

5. marketing channels used;

6. type of goods and the degree of care likely to be exercised by the purchaser;

7. defendant's intent in selecting the mark; and

8. likelihood of expansion of the product lines.

What was the suggested remedy on remand?

C & Q - 686

1. What was the issue in Death Tobacco v. Black Death USA?

5. Why does the target audience matter?

How many need to be confused?

8. What is post-sale confusion and why was it problem with jeans?

9. Is an incontestable mark also a strong mark?

Note on Other Types of Confusion-689

Can you have confusion as to source even the competing marks are different products?

What is confusion as to sponsorship?

What is initial interest confusion?

What are metatags and how can they pose an initial interest confusion problem?

What is reverse confusion?

Who owned March Madness?

Who first misused it?

Who then picked it up?

What did Posner rule?

What doctrine does this resemble and why? (Hint - cellophane)

Problems-692

2. Dilution-692

What is dilution?

How is it illustrated by Kodak bicycles?

How does it harm the trademark owner?

Why does it not fit the traditional consumer confusion test?

a. The New Federal Regime-693

H. R. Rep. 104-374, 104th Cong., 1st Sess. (1995)-695

Review the definition of a famous mark in 15 USC 1125(c)

What remedies are available for dilution under this provision?

How does this provision common law and state law actions against properly registered trademarks?

When are state laws still controlling?

What use of a mark is exempt from the anti-dilution provisions

Does a famous mark have to be registered?

C & Q - 696

What is trademark in gross and how could broadly applied dilution protection result in trademark in gross?

b. Basic Principles-697

Nabisco, Inc. v. PF Brands, Inc.-697

What is the trademark?

What is the diluting product?

How is this sold so that it is not a direct competitor?

Is there also an infringement argument?

Why does Nabisco say that the dilution statute does not apply?

How does this court handle this defense?

What is the basis for defendant's claim that there must be proof of dilution before the statute can be applied?

Why doesn't the court accept this defense?

What is the "bridging the gap" issue and how does it supplant the consumer confusion test?

What might use the goldfish as a logo without diluting plaintiff's trademark?

How would this be different for a mark like Kodak?

C & Q 709

3. What about framing and ads on web pages - can these raise dilution issues?

Playboy case was affirmed in Playboy Enters. v. Netscape Communs. Corp., 1999 U.S. App. LEXIS 30215 (9th Cir. Cal. Nov. 18, 1999).

4. The statute clearly does not apply to locally famous marks, but several courts have ignored this and extended the protection

5. What are the three key theories of dilution and how do they differ?

6. Why does GATT-TRIPS extend dilution protection to marks that are not used in the country where the dilution is claimed?

Note on Dilution and "Search Theory"-712

Problem-713

3. Contributory Infringement-713

How can a landlord be a contributory infringer?

What about when InterNIC registers a trademark as a domain to someone other than the trademark owner?

4. False Advertising-714

Johnson & Johnson*Merck v. Smithkline Beecham Corp.-715

What are the products?

What did the original "ingredients" commercial say was in Mylanta?

Was this true?

Why did this upset plaintiff?

How was ingredients-revised different?

Why did plaintiff object to the revised version?

What does plaintiff have to show to prove implied falsehood, i.e., that the ad is misleading while still being true?

When does intent matter and what does it affect?

What is the problem with using surveys for factual proof?

C & Q - 722

3. What if consumer reports reviews antiacids and points out that only TUMS has calcium while the others have al in them?

5. Can consumers sue under the Lanham Act for deceptive ads?

6. What are the problems with using litigation by competitors to police advertising?

E. Defenses-725

1. Genericness-725

What is a generic mark?

What happens to your registration and rights if the court finds your mark to be generic?

Does incontestability help you?

The Murphy Door Bed Co. v. Interior Sleep Systems, Inc.-726

What is the product?

When did plaintiff start using the mark?

When did plaintiff register the mark?

What did the PTO say?

What was the original relationship between plaintiff and defendant?

When did defendant start competing?

Who must prove the unregistered mark is not generic?

What evidence did defendant present to rebut plaintiff's defense of the mark?

What did the district court look to and why did the appeals court reject this?

C & Q - 729

4. What does justice Brandeis have to say about shredded wheat?

What is the Singer example and is it good law?

5. Can trade dress be generic? Give an example.

7. Why no compensation for declaring a mark to be generic and cancelling it?

Note on Genericide, Language, and Policing Costs-734

What was the Lotus interface problem and why did argue for making the interface generic?

What is the test for whether a mark has become generic?

Why would a company spend a lot of money to keep a trademark from becoming generic?

2. Functionality-737

Stormy Clime Ltd. V. Progroup, Inc.-737

What are the products?

What does plaintiff claim is being infringed?

What is defendant defense?

What other protection could plaintiff have sought to have avoided this defense?

Was the trade dress registered?

What are the two elements of plaintiff's prima facie case?

If plaintiff makes this showing, can defendant still use the functionality defense?

How must the plaintiff meet the functionality defense?

What features of the jackets were different?

Why was plaintiff unable to use color as an identifier?

How would a trademark on a functional feature such as vents be even stronger than patent?

C & Q - 744

1. Does trade dress need protection at all, separate from the trademark of the product?

2. Can functionality be used to oppose and cancel marks?

Where can functional marks be listed?

Restatement (Third) of Unfair Competition 17:Functional Designs-748

What is the key inquiry in determining whether a design is functional?

Note on Policing Backdoor Patents; Functionality and Patent Preemption-749

What is a backdoor patent?

Vornado - 750

How can a patent defeat a trademark?

Why did this fail in Vornado?

Does this make sense?  What is another explanation for why plaintiff would stipulate there was not patent infringement?

Thomas & Betts

What does this court says not claiming a design element means?

Problems-752

3. Abandonment-753

Major League Baseball Properties v. Sed Non Olet Denarius, Ltd.-753

Problems-762

What was the mark?

How was it abandoned?

How long does it take for abandonment?

When after the move was the mark licensed again?

What was defendant's response to the good will argument?

What would defendant have needed to do to avoid the claim it was warehousing the mark?

How do you decide what rights belong to the original owner when the mark is resumed?

C & Q - 759

Did Abdul-Jabbar abandon his birth name, Lew Alcindor, by not using it for many years?

Would your answer be different if he had legally changed his name?

The correct cite is: Abdul-Jabbar v. GMC, 85 F.3d 407, 1996 U.S. App. LEXIS 11804, 96 Cal. Daily Op. Service 3618, 96 D.A.R. 5940 (9th Cir. Cal. 1996)

a. "Unsupervised Licenses"-762

Dawn Donut Company, Inc. v. Hart's Food Stores, Inc.-762

What is a naked license?

Why is there a duty to supervise a licensee of a trademark?

Is there a duty to supervise the license of a copyright or patent?  Why?

How can a naked license result in the cancellation of a mark?

b. The Rule Against Assignments in Gross-766

What is an assignment in gross and why is it banned?

How much in assets is necessary?

Is this still a meaningful ban in the era of logos and brands that transcend products?

4. Nontrademark or "Nominative" Use-768

The New Kids on the Block v. News America Publishing, Inc.-768

What did the newspapers do that plaintiff's called infringement?

What is core problem?

What is the 3 part test the court uses?

How was it applied in this case?

C & Q

Can you sell photos of buildings and identify the building without permission?

Problem-772

5. Parody-772

L. L. Bean, Inc. v. Drake Publishers, Inc.-772

What was the parody?

Why did it upset Bean?

How did they use the mark?

Why does plaintiff say there is no free speech issue?

How is the government involved?

Is the defendant selling any goods?

Is the work clearly identified as a parody?

Is it obvious to someone familiar with the mark that it is a parody?

Why did the court not find free speech protection for "where there is life there's bug" and Gucci Goo"

Why does the court reject Bean's argument that defendant could have parodied sex in the outdoors or sex and camping gear without using its trademark?

C & Q

Does it really matter if the defendant makes money on the parody?

3. What was the alleged confusion in Black Dog Tavern v. Hall?

4. Why did Hormel sue the Muppets?

Was this a good strategic decision?

5. Why did Velvet Elvis lose?

What about Elvis impersonators?

Problems-778

F. Remedies-780

1. Injunctions-780

Why are these favored in trademark cases?

2. Damages-780

a. Infringer's Gain and Mark Owner's Loss

What does the statute say about damages?

Lindy Pen Company, Inc. v. Bic Pen Corporation

What was the confusion issue?

Why is intent important to whether plaintiff will get a accounting of profits?

What other type of damages award does the court say is the standard for infringement damages?

Problem

b. Corrective Advertising-788

What is corrective advertising?

Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Company-788

Why do you think they failed in registering this mark?

What was the confusion?

What is the usual confusion problem?

Why was this reverse confusion?

Why did defendant say this was not actionable?

What plaintiff get?

C & Q

What is efficient trademark infringement and why does punitive damages erode it?

Note on the Trademark Counterfeiting Act of 1984-793

Why such harsh penalties?

Should it be a defense that no one would think a $50 bag was really a Gucci?

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