DISTINCTIVENESS
Restatement (Third) of Unfair Competition
Lanham Act Section 45
Notes and Questions
A The Spectrum of Distinctiveness
Abercrombie & Fitch Co v Hunting World, Inc.
Restatement (Third) of Unfair Competition
Notes and Questions
B Descriptiveness and Secondary Meaning
Zatarain’s, Inc v Oak Grove Smokehouse, Inc.
Restatement (Third) of Unfair Competition
Notes and Questions
In re Oppedahl & Larson, LLP
Booking com B V v Matal
Notes and Questions
C Generic Terms
Filipino Yellow Pages, Inc. v. Asian Journal Pubs, Inc.
Mil-Mar Shoe Co , Inc v Shonac Corp
Haughton Elevator Co. v. Seeberger
Murphy Door Bed Co., Inc. v. Interior Sleep Sys., Inc.
Blinded Veterans Ass’n v. Blinded American Veterans Found.
Notes and Questions
Problem 2-1: The Windows Product
Problem 2-2: Preventing Genericide
Problem 2-3: Word Mark Distinctiveness
Peaceable Planet, Inc. v. Ty, Inc.
D. Distinctiveness of Nonverbal Identifiers: Logos, Packages, Product Design, and Colors
1. Different Tests, Different Standards?
Star Indus., Inc. v. Bacardi & Co. Ltd.
Amazing Spaces, Inc. v. Metro Mini Storage
Note
2 Expanding the Types of Nonverbal Marks
Two Pesos, Inc. v. Taco Cabana, Inc.
Notes and Questions
Qualitex Co v Jacobson Products Co , Inc
Notes and Questions
3 The Design/Packaging Distinction
a. Post–Two Pesos Circuit Split in the Test of Inherent Distinctiveness of Trade Dress
b The Protection of Packaging Trade Dress After Two Pesos and Qualitex
c The Supreme Court Enters the Fray: Product Design Trade Dress
Wal-Mart Stores, Inc v Samara Brothers, Inc.
Notes and Questions
4. Trade Dress Protection After Wal-Mart
In re Slokevage
Yankee Candle Company, Inc. v. Bridgewater Candle Company, LLC
Notes and Questions
Problem 2-4: Cheerios
E. The Edge of Trademark Protection: Subject-Matter Exclusions?
1. Exotic Source-Identifiers
In re Clarke
Notes and Questions
2 Subject Matter Protected by Copyright Oliveira v Frito-Lay, Inc
Notes and Questions
Dastar Corp. v. Twentieth Century Fox Film Corp.
Notes and Questions
Problem 2-5: Dastar Karaoke
FUNCTIONALITY
A. An Introduction to the Concept of Functionality
In re Morton-Norwich Products, Inc.
Notes and Questions
B The Scope of the Functionality Doctrine
Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co , Inc
Brunswick Corp. v. British Seagull Ltd.
Notes and Questions
C The Supreme Court’ s Approach to Functionality
Kellogg Co. v. National Biscuit Co.
Qualitex Co. v. Jacobson Prods. Co., Inc.
TrafFix Devices, Inc. v. Marketing Displays, Inc.
Notes and Questions
D. Post-TrafFix Applications of the Functionality Doctrine
1 Utilitarian Features
Valu Engineering, Inc. v. Rexnord Corp.
Eppendorf-Netheler-Hinz GmbH v. Ritter GmbH
Jay Franco & Sons, Inc. v. Franek
In re Becton, Dickinson and Company
Apple Inc. v. Samsung Electronics Co. Ltd.
Notes and Questions
2. Aesthetic Features
Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc.
Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.
Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc.
Notes and Questions
Problem 3-1: The Hershey Bar
A. “Use” as a Jurisdictional Prerequisite
B Actual “Use” as a Basis for Establishing Rights
1. Establishing Actual Use
Lanham Act Section 1
Lanham Act Section 45
Notes and Questions
Problem 4-1: Use in Connection with Goods
Aycock Engineering, Inc. v. Airflite, Inc.
Notes and Questions
Planetary Motion, Inc. v. Techsplosion, Inc.
Notes and Questions
Problem 4-2: Illegal Uses
Proving Use in Registration Practice
2 Priority of Use
Lanham Act, Section 2(d)
Notes and Questions
Problem 4-3: The Use Requirement and Merely Descriptive Marks
Problem 4-4: Tacking
C. Constructive Use as a Basis for Establishing Rights
S. Rep. No. 100-515
1 Establishing Intent to Use
Lanham Act Section 1
M.Z. Berger & Co., Inc. v. Swatch AG
Notes and Questions
2 Constructive Use Priority
Lanham Act Section 7(c)
Notes and Questions
D. Foreign Activity as a Basis for Establishing Rights
Lanham Act Section 44(e)
Notes and Questions
In re Rath
Notes and Questions
Lanham Act Section 44(d)
Notes and Questions
Lanham Act Section 66
Lanham Act Section 67
Notes and Questions
E. “Surrogate” Uses
1 Uses by Affiliates
Problem 4-5: Truth in Rock
Lyons v. Am. College of Veterinary Sports Med & Rehab
Notes and Questions
2 Public as a “Surrogate” User
Coca-Cola Co. v. Busch
Notes and Questions
Problem 4-6: Office Space
F. Loss of Rights Through Non-Use or Uncontrolled Uses
1. Abandonment Through Non-Use
Emergency One, Inc. v. American FireEagle, Ltd.
Notes and Questions
Problem 4-7: Residual Goodwill
Problem 4-8: Trademark Maintenance Programs
Problem 4-9: Trademarks and the Relocation of Sports Franchises
2. Abandonment Through Failure to Control Use
Restatement (Third) of Unfair Competition
Stanfield v. Osborne Industries, Inc.
Notes and Questions
Problem 4-10: Quality Control and Differentiated Product Lines
University Book Store v. University of Wisconsin Board of Regents
Notes and Questions
E. & J. Gallo Winery v. Gallo Cattle Company
Notes and Questions
REGISTRATION
A The Registration Process, Post-Registration Actions, and Incontestability
1 Overview of Relevant Provisions
Figure 5-1
2 Post-Registration Actions
3. Incontestability
Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.
Notes and Questions
B. Exclusions from Registration
1 Overview
2. Scandalous, Disparaging, and Deceptive Marks Under Section 2(a) and 2(e)(1)
Matal v. Tam
In re Brunetti
Notes and Questions
In re Budge Mfg. Co., Inc.
Notes and Questions
Problem 5-1: Section 2(a) Deceptiveness Versus Section 2(e) (1) Deceptive Misdescriptiveness
Problem 5-2: Temporary Deception and the Section 2(a) Deceptiveness Inquiry
Problem 5-3: Government Symbols
3. Geographic Marks
In re The Newbridge Cutlery Co.
Notes and Questions
In re California Innovations, Inc.
Notes and Questions
4. Name Marks
In re United Distillers, Plc
Notes and Questions
In re Sauer
Notes and Questions
Problem 5-4: Celebrity Names
Problem 5-5: Review Exercises Applying Section 2
PART III SCOPE AND ENFORCEMENT OF TRADEMARK RIGHTS
G
EOGRAPHIC LIMITS ON TRADEMARK RIGHTS
A Geographic Limits on Common Law Rights: Tea Rose Doctrine
United Drug Co. v. Theodore Rectanus Co.
Notes and Questions
B. Geographic Limits and Registered Rights
Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc.
National Ass’n for Healthcare Communications, Inc. v. Central Arkansas Area Agency on Aging, Inc.
Guthrie Healthcare System v. ContextMedia, Inc.
Notes and Questions
C The Territorial Nature of U S Trademark Rights
Person’s Co., Ltd. v. Christman
Grupo Gigante v. Dallo & Co., Inc.
ITC Limited v. Punchgini, Inc.
Belmora LLC v. Bayer Consumer Care AG
Notes and Questions
International Bancorp LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco
Notes and Questions
Problem 6-1: Scottish Beer Sales
D. The Extraterritorial Enforcement of U.S. Trademark Rights
Steele v. Bulova Watch Co.
Vanity Fair Mills, Inc. v. T. Eaton Co., Ltd.
Sterling Drug, Inc. v. Bayer AG
McBee v. Delica Co.
Trader Joe’s Co. v. Hallatt
Notes and Questions
Problem 6-2: Italian Online Magazine Sales
Problem 6-3: Irish Furniture Sales
CONFUSION-BASED TRADEMARK LIABILITY
THEORIES
A. Evolution of the Confusion Standard
Borden Ice Cream Co. v. Borden’s
Condensed Milk Co.
Fleischmann Distilling Corp. v. Maier
Brewing Co.
Notes and Questions
B The Actionable “Use” Prerequisite
Holiday Inns, Inc v 800 Reservations, Inc
Notes and Questions
Rescuecom Corp. v. Google Inc.
Notes and Questions
C. The Factors Analysis for Likelihood of Confusion
1. Overview; Discussion Questions
Figure 7-1: Factor Tests in Likelihood-ofConfusion Analysis
2. Applying the Factors Analysis
Virgin Enterprises Ltd. v. Nawab
xvii
McDonald’s Corp. v. Druck and Gerner, D.D.S., P.C., d/b/a McDental
Libman Company v. Vining Industries, Inc.
Introduction to Notes and Questions on the Factors Analysis
Notes and Questions: Similarity of Marks Factor
Problem 7-1: Pickle Problem
Problem 7-2: Similarity Factor for Foreign Language Word Marks
Problem 7-3: Similarity Analysis for Nonverbal Marks
Notes and Questions: Strength Factor
Notes and Questions: Intent Factor
Notes and Questions: Buyer Sophistication Factor; Reasonably Prudent Purchaser
Notes and Questions: Actual Confusion Factor
Notes and Questions: Relatedness of Goods/ Channels of Trade/Bridging the Gap
Problem 7-4: Related or Unrelated? Confusing or Not?
3. The Factors Analysis Applied to Private-Label Goods
Problem 7-5: Likelihood of Confusion in Private-Label Goods Cases
4. The Factors Analysis Applied to Promotional Goods
xviii
Boston Professional Hockey Association, Inc. v. Dallas Cap & Emblem Mfg., Inc.
Notes and Questions
5. The Factors Analysis Applied Under Section 2(d)
Lanham Act, Section 2(d)
Problem 7-6: Section 2(d) Rule of Doubt?
Problem 7-7: Effect of PTO Section 2(d) Determinations in Subsequent Litigation
Problem 7-8: Effect of Litigation Determinations in Subsequent PTO Proceedings
Problem 7-9: Section 2(d) and Consent Agreements
D Confusion Away from the Point of Sale
1. Post-Sale Confusion
Ferrari S.P.A., Esercizio v. Roberts
Notes and Questions
2. Initial Interest Confusion
Multi Time Machine, Inc. v. Amazon.com, Inc.
Notes and Questions
E. Reverse Confusion
A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.
Notes and Questions
F Indirect and Vicarious Theories of Infringement Liability
Inwood Laboratories, Inc. v. Ives Laboratories, Inc.
Tiffany (NJ) Inc. v. eBay Inc.
Notes and Questions
Problem 7-10: Brother Billy and the Baptists’ Bathrooms
Problem 7-11: Trade “Disparagement”?
NON–CONFUSION-BASED TRADEMARK
LIABILITY THEORIES
A. Dilution Protection
1 The Concept of Dilution
Notes and Questions
2 Anatomy of the Federal Trademark Dilution Provisions
Lanham Act, Section 43(c)
Notes and Questions
3 The Forms of Dilution: Dilution by Tarnishment and Dilution by Blurring a Tarnishment
Toys “R” Us, Inc. v. Akkaoui
Toys “R” Us, Inc. v. Feinberg
V Secret Catalogue, Inc. v. Moseley
Notes and Questions
Problem 8-1: Dilution by Burnishing?
b. Blurring
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.
Visa Int’l Service Assoc. v. JSL Corp.
Notes and Questions
4 Dilution Under Lanham Act §2(f)
B. Protection Against Cybersquatting
1. Protection Under the Dilution Statute
Panavision International v. Toeppen
Notes and Questions
2 Anticybersquatting Consumer Protection Act: Section 43(d) of the Lanham Act
Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc.
DSPT Int’l, Inc. v. Nahum
Newport News Holding Corp. v. Virtual City Vision, Inc.
Lamparello v. Falwell
Notes and Questions
Harrods Ltd. v. Sixty Internet Domain Names
Notes and Questions
3. ICANN Uniform Domain Name Dispute Resolution Policy (UDRP)
Final Report of the WIPO Internet Domain Name Process (Executive Summary, April 30, 1999)
World Wrestling Federation Entertainment, Inc. v. Bosman
Telstra Corp. Ltd v. Nuclear Marshmallows
Notes and Questions
Coach, Inc. v. Koko Island
4. The Relationship Between the UDRP and the ACPA
Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona
Notes and Questions
PERMISSIBLE USES OF ANOTHER’S TRADEMARKS
A. Fair Use of Another’ s Trademark
1. Relationship Between Fair Use and Confusion
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.
Notes and Questions
2. Descriptive Fair Use
Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc.
Kelly-Brown v. Winfrey
Marketquest Group, Inc. v. BIC Corp.
Notes and Questions
Problem 9-1: Fair Use of Names
Problem 9-2: Fair Use of Geographic Indicators
3. Nominative Fair Use
R. G. Smith v. Chanel, Inc.
Notes and Questions
Century 21 Real Estate Corp. v. LendingTree, Inc
Toyota Motor Sales, U.S.A., Inc. v. Tabari
Int’l Info. Sys. Security Cert. Consortium, Inc. v. Security Univ., LLC
Notes and Questions
Problem 9-3: Applying Nominative Fair Use Tests
Problem 9-4: Nominative Fair Use in Movies and TV
B Use of Another’ s Trademark on Genuine Goods: “First Sale” Doctrine
Notes and Questions
Champion Spark Plug Co. v. Sanders
Notes and Questions
Gamut Trading Co v U S I TC
Notes and Questions
C. Expressive Use of Another’ s Trademark
Anheuser-Busch, Inc. v. Balducci Publications
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC
Mattel, Inc. v. MCA Records, Inc.
Notes and Questions
Problem 9-5: Walocaust
University of Alabama Board of Trustees v. New Life Art, Inc.
Twentieth Century Fox Television v. Empire Dist., Inc.
Notes and Questions
Problem 9-6: Trademarks and Virtual Worlds
Problem 9-7: Trademarks and Political Speech
Problem 9-8: “Dumb” Starbucks
FALSE ADVERTISING
A Introduction: The Evolution of Section 43(a) False Advertising Claims
Notes and Questions
B Threshold Issues
Problem 10-1: Standing
Problem 10-2: Commercial “Advertising or Promotion”
C. Elements of the Section 43(a)(l)(B) False Advertising Claim
United Industries Corp. v. Clorox Co.
Notes and Questions
Problem 10-3: This Casebook Rocks
Pizza Hut, Inc. v. Papa John’s International, Inc.
Notes and Questions
Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Avenue
Notes and Questions
Trafficschool.com, Inc. v. Edriver, Inc.
Notes and Questions
Problem 10-4: “Ambush” Advertising
Problem 10-5: Lanham Act False
Advertising Versus Other Federal Labeling Regulations
TRADE IDENTITY RIGHTS IN ONE’S PERSONA: ENDORSEMENT, ATTRIBUTION, AND PUBLICITY
A. Section 43(a) and the Protection of Personal Identity
1 False Over-Attribution
Notes and Questions
2 False Under-Attribution
Notes and Questions
Problem 11-1: Dastar and False
Advertising Theories in UnderAttribution Cases . . . Featuring Paris Hilton
B. Right of Publicity
1. Overview of Statutory and Common Law Regimes
Indiana Code Title 32 (Property) Art 36 (Publicity) Chap. 1 (Rights of Publicity)
Notes and Questions
Figure 11-1
Problem 11-2: Copyright Preemption of the Right of Publicity
Cheatham v. Paisano Publications, Inc.
Notes and Questions
2. Protectable Aspects of Persona
John W. Carson v. Here’s Johnny Portable Toilets, Inc.
Vanna White v. Samsung Electronics America, Inc.
Vanna White v Samsung Electronics America, Inc.
Notes and Questions
Problem 11-3: The Right of Publicity and Portrayals of Fictional Characters
3. Limitations on the Right of Publicity
Hart v. Electronic Arts, Inc.
Notes and Questions
Michæl Jordan v. Jewel Food Stores, Inc.
Problem 11-4: The Scottish Elvis
Problem 11-5: Sheriff Andy Griffith
Problem 11-6: G I George
Problem 11-7: The Soldier’ s Right of Publicity
Problem 11-8: Guitar Hero
REMEDIES
A. Injunctive Relief
Goto.com, Inc. v. Walt Disney Co.
North American Medical Corp v Axiom Worldwide, Inc.
Adidas America, Inc. v. Skechers USA, Inc.
Notes and Questions
B Monetary Relief
Lindy Pen Co. v. Bic Pen Corp.
George Basch Co. v. Blue Coral, Inc.
Synergistic Int’l, LLC v. Korman
Notes and Questions
Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC
Notes and Questions
C. Counterfeiting
K & N Engineering, Inc. v. Bulat
Notes and Questions
D. Other Remedies
Table of Cases Index
PREFACE TO FIFTH EDITION
We are pleased to introduce the Fifth Edition of Trademarks and Unfair Competition: Law and Policy. We are especially pleased that the Fifth Edition will be made available in a more modestly-priced, looseleaf format We sincerely hope that the looseleaf format will prove to be convenient for instructors and students, and we hope that the reduced cost will provide at least a little relief for students’ budgets.
This edition follows the core structure of prior editions, but reflects two emerging themes in U S trademark law The first is the intersection between free speech and trademark rules. The most obvious illustration of the intersection is the Supreme Court’ s opinion in Tam finding the “disparagement” provision of the Lanham Act to be inconsistent with the First Amendment, and the Federal Circuit’ s follow-on decision in Brunetti, both of which appear in Chapter 5 But there are other examples, including the increased attention to Rogers v. Grimaldi as the standard by which to limit the enforcement of trademark rights against expressive uses (Chapter 9), and questions about the constitutionality of dilution by tarnishment (Chapter 8).
The second theme concerns the content of unfair competition law under Lanham Act Section 43(a), and particularly the extent to which rules that apply to registered rights also apply to unregistered rights enforced through Section 43(a) actions The Tam decision, and other
cases (such as Belmora, covered in Chapter 6), have brought renewed attention to this longstanding puzzle. This development is relatively inchoate (compared to the free speech challenges, which have been more developed and quite prominent), but we have tried to flag the issue where appropriate.
Instructors who are familiar with past editions will notice that the Fifth Edition strives to maintain the strong points of its predecessors. We have continued our tradition of extensively covering functionality (Chapter 3), an area of trademark jurisprudence that is increasingly important in view of the expanded interest in design protection (especially outside the trademark regime) and which we believe encourages students to develop a critical approach to the field from early in the course. We have also retained an emphasis on international and comparative aspects of trademark law, integrating those materials with the pertinent discussion of domestic law. And we have remained attentive to the impact on trademark law of shifts in online business practices and social media usage.
We have appreciated the help of many individuals in preparing this new edition of the book Professor Janis benefitted from the efforts of research assistants Alyssa Deckard, Evan Glass, and Ryan McDonnell, and administrative support from the Center for Intellectual Property Research at the Indiana University Maurer School of Law. Professor Dinwoodie is very grateful for the research assistance provided by Shannon Bezner And, as always, we greatly appreciate the comments we have received from users of the book, both students and fellow trademark professors We hope that you will continue to offer us your reactions
Statutory materials, and supplemental materials covering developments that post-date publication of the book, can be found
