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Intellectual Property

Boston College Law School

March 30, 2009

TrademarkInfringement

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Advantages of Registration

Nationwide constructive use - priority

Nationwide constructive notice

Possibility of achieving incontestability

Presumption of validity at trial

Right to sue in federal court Availability of extra remedies (e.g. attorney

fees, treble damages, border exclusion )

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Infringement

Lanham Act 32(1) (15 U.S.C. 1114): Any person who shall, without the consent of the

registrant - (a) use in commerce any reproduction, counterfeit, copy or

colorable imitation of a registered markin 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 for the

remedies hereinafter provided.

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1-800-Contacts v. WhenU

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Keyword Buys

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Infringement

Initial Questions

Issue of fact or issue of law?

Who must be confused?

How much confusion must there be?

Confused as to what?

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Likelihood of Confusion

Typical Factors (e.g. Polaroid, Sleekcraft, etc.)

Strength of mark

Proximity of goods

Similarity of marks

Actual confusion

Marketing channels

Types of goods and consumer care Defendants intent

Likelihood of expansion in product lines

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AMF v. Sleekcraft

AMF

SLICKCRAFT

Nescher

SLEEKCRAFT

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Examples of Similarity Sight

Squirt v. Quirst (softdrink)

Cartier v. Cattier (cosmetics)

Tornado v. Vornado (appliances)

Sound Cygon v. Phygon (insecticide)

Huggies v. Dougies (diapers)

Bonamine v. Dramamine (drugs)

Meaning Cyclone v. Tornado (link fencing)

Apple v. Pineapple (computers

Pledge v. Promise (furniture polish)

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Infringement

Types of confusion

Product (e.g. Mike shoes)

Source (e.g. Nike mittens)

Sponsorship (e.g. Nike on soup can)

Initial interest (e.g. buy Nikes here)

Post-sale confusion

Reverse confusion

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Problem 5-5

Factors

Strength of mark

Proximity of goods

Similarity of marks

Actual confusion

Marketing channels

Types of goods and

consumer care Defendants intent

Likelihood of expansion in

product lines

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Private Labels

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Dilution

Classic examples

KODAK bicycles

BUICK aspirin

DUPONT shoes

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Federal Dilution

Lanham Act 43(c)

(1) [T]he owner of a famous mark that is

distinctive, inherently or through acquireddistinctiveness, shall be entitled to an

injunction against another person who

commences use of a mark in commerce that

is likely to cause dilution by blurring or

dilution by tarnishment of the famous mark

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Nabisco v. PF Brands

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Nabisco v. PF Brands

Elements of dilution claim

(1) Famous mark

(2) Distinctive mark

(3) Junior mark used in commerce

(4) Used after senior mark famous

(5) Dilutes distinctive character of seniormark

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Nabisco v. PF Brands

Dilution factors (pre-2006)

Distinctiveness

Similarity of marks Proximity of goods

Interrelationship of above elements

Shared consumers

Sophistication of consumers

Actual confusion

Adjectival or referential use

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Issues with Dilution

Standard for protection

Actual dilution or likelihood of dilution?

Tarnishment?

Marks entitled to protection

Niche fame or nationwide fame?

Inherent or acquired distinctiveness?

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Federal Dilution

Lanham Act 43(c)

(1) [T]he owner of a famous mark that is

distinctive, inherently or through acquireddistinctiveness, shall be entitled to an

injunction against another person who

commences use of a mark in commerce that

is likely to cause dilution by blurring or

dilution by tarnishment of the famous mark

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Federal Dilution

Lanham Act 43(c) (B) `dilution by blurring' is association arising from the similarity

between a mark or trade name and a famous mark that impairs thedistinctiveness of the famous mark. In determining whether a mark ortrade name is likely to cause dilution by blurring, the court may considerall relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famousmark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging insubstantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create anassociation with the famous mark.

(vi) Any actual association between the mark or trade name and the famousmark.

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Federal Dilution

Lanham Act 43(c)

(C) `dilution by tarnishment' is association

arising from the similarity between a mark ortrade name and a famous mark that harms the

reputation of the famous mark.

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Famous?

Arthur the Aardvark

Clue (board game)

Candyland (board game) Hotmail (website)

Childrens Place (store)

The Sporting News (mag)

WaWa (grocery) Star Market (grocery)

Famous

Not famous

Famous Famous

Not famous

Famous

Famous Not famous

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Federal Dilution

Lanham Act 43(c)

(2)(A) a mark is famous if it is widely recognized bythe general consuming public of the United States as

a designation of source of the goods or services of themark's owner. In determining whether a mark possessesthe requisite degree of recognition, the court mayconsider all relevant factors, including the following:

(i) The duration, extent, and geographic reach of

advertisingand publicity of the mark,

(ii) The amount, volume, and geographic extent of sales ofgoods or services offered under the mark.

(iii) The extent ofactual recognition of the mark.

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Mead v. Toyota

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Licensing and Franchising

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Problem 5-10

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Administrative

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