Trademarks: Administrative Issues

Intro to IP – Prof Merges

3.16.2010

Disparaging Marks

• Sec. 1052 (Lanham Act sec. 2). Trademarks Registrable on Principal Register; Concurrent RegistrationSec. 1052 (Lanham Act sec. 2)

• “No mark [capable as serving as a TM] may be denied registration unless . . .”

Sec. 2(a); 15 USC 1052(a)

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;

General Public; General Associations

First Amendment Rights

• Why not strongly implicated?

• Is a TM an aspect of a right to speak freely?

– Protecting the speaker – vs. protecting the listener’s associations

Sec. 2(e); 15 USC 1052(e)(e) Consists of a mark which (1) when used on or in

connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,

“I registered ‘Nantucket’ and all I got was this lousy t-shirt”

Apellations of Origin

Two related issues

• Primarily geographically descriptive

• Primarily geographically misdescriptive

• Why are both bad (as TM’s)?

Surnames

“Why Can’t I Use Me Own Name?”

Incontestability

• Statute

• Rationale

• Park n’Fly Case

Park n’Fly Sues “Dollar Park n’Fly”

Dollar’s defenses

• Good laundry list

• P. 709

Incontestability: sec. 33(a), 15 USC 1115

• “Prima facie evidence” of validity, use, etc.

• But: does not preclude any defenses . . .

(b) Incontestability; defenses. To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.

Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods … specified in the affidavit Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects:

Defenses that Survive Incontestability

1. Obtained by Fraud2. Abandonment3. Used to Misrepresent source or origin4. Fair Use (descriptive marks only)5. Prior 3rd party rights (e.g., concurrent use)6. Prior registered mark7. Functional (since 1998 – 1064(3))

Additional Defenses always available

1. Antitrust, equitable defenses (laches, etc.)

2. Mark is generic (sec. 14(c), 15 USC 1064 (c))

http://tess2.uspto.gov/bin/showfield?

f=doc&state=4009:qvvj14.4.5Word Mark PARK 'N FLY Goods and Services IC

039. US 105. G & S: VEHICULAR PARKING ADJACENT AIRPORTS Serial Number 73153231 Filing Date December 23, 1977 Registration Number 1111956 Registration Date January 23, 1979 Owner (REGISTRANT) PARK'N FLY, INC. CORPORATION MISSOURI THE PLAZA

Live/Dead Indicator LIVE

TMEP - http://tess2.uspto.gov/tmdb/tmep/

1605.04 Requirements for Affidavit or Declaration of Incontestability

Section 15 of the Act refers to the affidavit or declaration merely as “setting forth” the specified information. See 15 U.S.C. §1065(3). Therefore, no showing or proof beyond the owner’s verified statement is required.

servletSpecimen2009012373153231SPEfromCurrenull11

Offensive vs. Defensive Use of Incontestability

• Defensive: Like Park n’ Fly: protect against certain otherwise available defenses

• Offensive: In some circuits, automatic proof that mark is “strong”

– In others, no . . .