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TM Attack Guide

Infringement Action
Is there a valid TM?
1. Registered TM presumption of validity (presumption of at minimum suggestive mark, if not arbitrary or
fanciful no req. of showing secondary meaning) (1115(a))
a. Constructive use priority as of application (no longer as of registration) (1057(c))
b. has the burden of proving genericism or functionality or (if registered without proof of secondary
meaning) merely descriptive, or fraudulent registration
i. If asserted properly, must show nonfunctionality (spec. in trade dress) or not generic
c. If not registered has the burden of proving a valid TM
i. Steps:
1. Distinctiveness of source
2. Not barred from protection
3. Use in commerce
a. Bone fide intent to use TM in connection with sale or ads of goods (totality of the
circumstances to determine whether ads alone are enough)
ii. For trade dress, must prove nonfunctional for a case to even exist
1. Rule for dilution specific cases - 1124(c)(4)
d. If incontestable (valid TM for 5+ years) cant assert the TM is descriptive (but other defenses are ok)
i. Dont have to register for incontestable status to get some of the benefits (1064(1) says you can
file for cancellation on grounds of dilution or other proof of damage to your TM only within 5
years of registration of the contested TM)
2. Validity of the mark
a. Verbal identifier
i. Look to Abercrombie spectrum
1. Generic - 14(c) says cancellation of mark
a. Even if secondary meaning, no mark
b. Who are you/what are you distinction (Yellow Pages)
c. Common descriptive names test use by others or by in media and otherwise
d. Availability of other means to describe a product
e. TM Clarif. Act of 1984 not generic solely because the mark is used to identify
a unique product look to primary significance in the relevant market and not to
purchaser motivation (1064(3))
i. Overruled by 9th Cir.
f. Pilates factors
i. Dictionary definitions
ii. Generic use by competitors
iii. s own generic use
iv. Generic use in the media
v. Consumer surveys (3 methods)
vi. Competitors need
2. Descriptive
a. Protected with evidence of secondary meaning
i. Surname must have secondary meaning to qualify (Borden)
ii. Cir. specific tests for secondary meaning see other outline
iii. Inwood footnote: to establish secondary meaning, a manufacturer must
show that in the minds of the public the primary significance of a product
feature is to identify the source of the product rather than the product
itself
b. Numerical names are descriptive
3. Suggestive
a. Descriptive vs. suggestive tests (Zatarains)
i. Dictionary definition

ii. Imagination test if imagination is required to conclude re the nature of


the goods, suggestive
1. Descriptive if conveys info re characteristics of the product
iii. Competitive need test do competitors need to use the TM to describe
the product
iv. Use in commerce by others for similar goods
1. 5th Cir. uses this, 9th Cir. doesnt
4. Arbitrary or fanciful
a. Surfvivor fanciful marks have no connecion to the product
b. Flexitized misspelled words dont automatically mean fanciful
b. Nonverbal identifier
i. Trade dress must show nonfunctionality at the start of the case
1. Product packaging
a. Seabrook (everywhere but 2nd Cir.) see other outline
b. Slokevage If a feature does something beyond indicating source it detracts from
inherent distinctiveness
c. If just a color must prove secondary meaning within a specific market
2. Product configuration can never be inherently distinctive, must always show acquired
distinctiveness (Samara)
3. Distinguishing packaging from design
a. Slokevage overall appearance/makes product more useful/feature incorporated
into (and not just placed on) a product/inherent in physical product
configuration/design
b. If in doubt, presumption its configuration
ii. Secondary meaning showing is the same as with verbal identifiers
1. 2nd Cir. some categories of products arent protectable even with secondary meaning
(color greeting cards with animals or people is not protectable because its a generic
concept/idea)
c. s attempt to disprove validity of the TM see registration actions bars to protection
d. Keep in mind, a court can cancel or alter a mark, so you have to go through TTAB analysis too
s infringement
3. To start an infringement action, must first show validity
a. Then must show s unauthorized use in connection with the sale of goods
i. To profit vs. critique
b. 5 elements: (Lamparello, 4th Cir., but helpful in 2nd Cir.)
i. A mark is owned and valid
ii. The used the mark unlawfully
iii. In commerce
1. Noncommercial if for critique or fair use
iv. In connection with the sale or ads of goods or services
v. In a manner likely to confuse consumers (or dilute the mark, etc.)
4. Likelihood of consumer confusion
a. Type of confusion
i. Point of sale as to the products origin or sponsorship
ii. Initial interest lured to product by confusion before purchase even if not confused after
purchase (only 6th and 9th Cir. have ruled directly)
iii. Post-sale general public is confused
iv. Reverse confusion junior user saturates market with a similar TM and overwhelms senior user
1. Modifies the LOC test:
a. Of the Polaroid factors, two are irrelevant:
i. Quality of the goods
ii. Bridge the gap
b. Most important Polaroid factors are:
i. Similarity of the marks
ii. Proximity of the goods

iii. Intent of the


1. Most DC and CoA place emphasis on the intent factor if there is
evidence of bad faith intent (can be decisive, even if one judge
says it only matters for damages)
iv. Strength of the mark
v. Actual confusion
b. Registered mark presumed valid
i. 32
c. Unregistered mark
i. 43
d. Use Polaroid factors (see other outline)
5. False designation of source (1125)
a. Bretford Mfg. v. Smith System Mfg (7th Cir. 2005): passing off occurs when a firm puts someone elses
TM on its own goods; reverse passing off or misappropriation occurs when someone is selling anothers
goods under their own mark
b. Gilliam/Monty Python, 2nd Cir. False designation of source (not quite reverse passing off) putting out
TM on something that is no longer our product because of the amount of editing
c. Falsely suggest a connection four part test (Benny Goodman case)
i. Same mark or close approximation of name/identity previously used
ii. Mark points unmistakably to that person
iii. The person named by the mark isnt connected with the activities of the applicant
iv. Prior users name/identity is of sufficient fame that a connection would be presumed (even after
death)
6. Dilution (1125(c))
a. TDRA 2006
i. Threshold inquiry was mark famous before s use (widely recognized by public)
(1125(c)(2)(A))
1. Duration, extent, and reach of ads
2. Amount, volume, reach of sales
3. Actual recognition
4. Registration on the Principal Register
b. By blurring (1125(c)(2)(B) association that impairs the distinctiveness of the famous mark
i. must show (Louis Vuitton, 4th Cir. but applied elsewhere)
1. owns a famous mark that is distinctive (ability to uniquely identify source and maintain
selling power)
2. used the mark in commerce
3. Similarity between marks leads to an association between them
4. The association is likely to impair the distinctiveness of the mark
ii. Court looks to relevant factors (Nike and in the statute)
1. Degree of similarity
2. Degree of inherent or acquired distinctiveness of the famous mark (strength)
3. Extent to which the owner of the famous mark is engaging in substantially exclusive use
of the mark
4. Degree of recognition
5. s intent to create an association
6. Actual association
iii. 2nd Cir. requires showing actual association and impairment of the mark (actual association is
necessary but not sufficient)
c. By tarnishment (1125(c)(2)(C)) association that harms the reputation of the famous mark
i. must show
1. owns a famous mark that is distinctive
2. used the mark in commerce
3. Similarity between marks leads to an association between them
4. The association is likely to harm the marks reputation
ii. No real way for courts in the 2nd Cir. to analyze look to statute and develop your own test

iii. Rebuttable presumption new mark used to sell sex related products is likely to tarnish a famous
mark where there is a clear semantic association (V. Secret Catalog)
7. Cybersquatting
a. Three ways to prevent third party unauthorized use in a domain name
i. Likelihood of confusion under LA 32 or 42(a)
ii. Cybersquatting under 1125(d)
iii. Cancellation under Uniform Dispute Resolution Policy under Internet Corporation for Assigned
Names and Numbers
1. must assert
a. Domain name is identical or confusingly similar
b. has no legitimate interest in it
c. Domain is registered and used in bad faith (nonexhaustive list of evidence of bad
faith:)
i. Registration or acquisition for selling, renting, or transferring the name
for profit
ii. Registered to prevent owner of the TM of using it in commerce with a
pattern of this conduct
iii. Registered primarily to disrupt business
iv. Intentionally attracting users for commercial gain by creating a
likelihood of confusion
v. Also, inactivity may amount to bad faith use of a domain name (Telstra)
b. 43(d) Cybersquatting
i. Determination by court: (Sportys Farm, 2nd Cir., also the statute)
1. Is the mark distinctive or famous (incontest. is evid. of distinct.)
a. If distinctive, must show identical or confusingly similar
b. If famous, must show identical or confusingly similar or dilutive
2. Bad faith intent to profit (9 factors) (1125(d)(1)(B))
a. TM or other IP rights in the domain name
b. Whether the domain name consists of a legal name of a person or a name
commonly used to identify a person
c. The persons prior use of the domain name in connection with a bona fide
offering of goods or services
d. Bona fide noncommercial or fair use of the mark in a site accessible under the
domain name
e. Intent to divert customers either for commercial gain or with the intent to tarnish
or disparage the mark by creating a likelihood of confusion
f. Offer to transfer or sell or assign the mark to the owner or any third party for
financial gain without having used or intended to use the domain name in
commerce
g. Provision of material and misleading false contact information when applying for
the registration of the domain name
h. Registration or acquisition of multiple domain names which are identical or
confusingly similar to marks of others that are distinctive at the time of
registration or dilutive of famous marks
i. Extent to which the mark incorporated in the domain name registration is
distinctive and famous
ii. No bad faith finding federally where can show they actually believed lawful/fair use
(1125(d)(1)(C))
iii. In the 4th Cir., just apply the likelihood of confusion factors
8. Contributory/vicarious infringement
a. Indirect/contributory infringement (Inwood) manufacturer intentionally induces another to infringe a
TM or continues to supply product to one whom it knows or has reason to know is engaging in
infringement
i. Two ways to be liable
1. Intentionally induce another to infringe

2. Continue to work with one whom you know or have reason to know is infringing
(knowledge and failure to act)
a. Must objectively be made aware of specific infringement and fail to act
b. Generalized knowledge isnt enough, specific incidents necessary (Sony: requires
knowledge of specific individuals infringing)
c. Hard Rock Caf: willful blindness = actual knowledge
ii. Lockheed Martin Corp. v. Network Solutions (9th Cir. 1999): extends to service providers if they
exercise sufficient control over the infringing conduct
1. Intentional inducement test is the same
2. Knowledge and failure to act test is different must show direct control and monitoring
of the instrumentality used by third parties to infringe (still specific knowledge)
iii. Direct control + monitoring = supplies a product sufficient for Inwood
b. Vicarious infringement
i. Must show: (Gucci)
1. and infringer have an actual or apparent partnership and direct financial benefit
2. and infringer have authority to bind one another in transactions with third parties
3. (Higher threshold of control than with contributory infringement)
9. False advertising/right of publicity
a. False advertising (look to the ad in its entirety in context)
i. Two types
1. Literally false (explicit or conveyed by necessary implication (TWC, 2nd Cir.) as a factual
matter
a. Must also show s materiality of the false matter
2. Literally true but is likely to deceive or confuse consumers
a. Must also show actual impact on the buying public
ii. Must show five elements (Schick)
1. made false of misleading statement of fact (literally false or true but likely to confuse)
2. Statement results in actual deception or capacity for deception (depending on step 1)
3. Deception is material (2nd Cir. says material if it would influence customers)
a. Ad time is too valuable to include immaterial things (tiny note in case)
4. Injury due to potential decline in sales
a. Head to head competitors + misleading ads = presumption of injury
5. Advertised goods sold in interstate commerce
iii. Puffery (its fine): other cir. see two forms:
1. 3rd Cir.: advertising that is not deceptive for no one would rely on its exaggerated claims
2. 9th Cir.: exaggerated ads upon which no reasonable consumer would rely
3. McCarthy: both
iv. Also, cartoons dont depict real life situations (Schick)
v. False description or representation (43(a)) Show likelihood of confusion re endorsement of s
product
vi. Substantiation
1. Establishment claims Where s ad claims a product is superior, must affirmatively
prove that the products are equal or inferior (Castrol Inc, 2nd Cir.)
a. Where the ad explicitly or implicitly represents that tests or studies prove its
product superior, meets his burden by showing the tests dont establish what
they say they do (Bristol Myers Squibb, 2nd Cir.)
i. Can do this by showing the tests arent sufficiently reliable
ii. Can do this by showing that the tests, though reliable, dont establish the
proposition
b. Right of publicity
i. Common law right of publicity (9th Cir.)
1. must show (Eastwood):
a. s use of the s identity
b. Appropriation of s name or likeness to s advantage
c. Lack of consent

d. Resulting injury
e. Also, look to whether the commercial interests that this law is designed to protect
are implicated consider the purpose of the law and whether that purpose is
implicated to find if it has been violated (White)
2. Some courts place a threshold on commercial exploitation of your personality previously
(McCarthy says not necessary)
ii. California statutory right of publicity (Cal Civ Code 3344)
1. Uses anothers name, voice, signature, photo, likeness in commerce is liable for damages
a. Must be a use directly connected with commercial sponsorship
2. Exceptions
a. Incidental (nonessential) use of photo or likeness without knowledge of the use
b. News, public affairs, sports broadcast, political campaign
c. Transformative use (see below)
iii. Transformative use defense test (In re NCAA, 9th Cir.)
1. Five factors in determining if a work is transformative enough to obtain first amendment
protection
a. If the celebrity likeness is one of raw materials from which an original work is
synthesized, it is more likely to be transformative than if the depiction is the
substance of the work
b. Protected if its primarily the s own expression, so long as the expression is
something other than the likeness of the celebrity (purchasers primary
motivation in buying the product is it the celebrity or the art)
c. Whether the literal and imitative or the creative elements predominate the work
(quantitative analysis, not qualitative)
d. Whether the marketability and economic value of the work derives primarily
from the celebritys fame
e. When an artists skill and talent is subordinated to the overall goal of creating a
portrait of a celebrity so as to exploit his fame, the work is not transformative
2. Only available as a defense under right of publicity
10. Simultaneous/concurrent use (see below as well to be sure)
a. First use = first in right (Priority through use, not registration (Dastar) (1052))
b. Unregistered marks
i. T Rose/Rectanus doctrine: territorial scope of unregistered marks is limited to the territory where
the mark is known and recognized
1. National senior use of an unregistered mark cant stop use of a remote good faith junior
user may coexist in the national marketplace
b. Registered marks
i. Registration as constructive notice of ownership (1072)
1. Constructive notice junior user can no longer argue use in good faith
ii. Dawn Donut 2nd Cir. registration plus use confers nationwide priority
1. To enjoin junior use, registrant must show it is likely to make actual use of the mark in
the area at issue
c. Remote location market penetration test (3rd Cir.):
i. Volume of sales
ii. Growth trends in the area
iii. Number of person actually purchasing the product in relation to the potential number of
customers
iv. Ads
d. Knowledge of prior use alone only amounts to bad faith use in McCarthys mind most courts will look
for evidence of trying to bank on the existence of another TM as well
e. Foreign use of a TM has no effect on priority in the US use in commerce means in US commerce
(Persons Co Fed. Cir.)
s defenses to infringement claims (may also bring a claim for cancellation of registration, for that see below)
11. Functionality (s argument against validity of the mark)
a. Utilitarian see other outline for various tests

b. Aesthetic see other outline for tests


c. Discuss both if its not clear which one you should use!
12. Abandonment (s argument against validity of the mark)
a. Through cessation of use
i. must show (2nd Cir., Fed. Cir., 4th Cir.)
1. Non-use of the mark by the legal owner
a. For 3 consecutive years rebuttable presumption of abandonment
i. Silverman v. CBS: presumption can be rebutted by showing reasonable
grounds for suspension and plans to resume use when the conditions
requiring suspension abate
b. Burden shifts to to show contrary evidence of intent to use in the reasonable
future
i. Not required to show hard evidence of actual concrete plans
ii. Intent must be formulated during the 3 year period of non-use
2. Lack of intent by that owner to resume use of the mark in the reasonably foreseeable
future
b. Through failure to control use
i. TM owner has a duty to control the quality of their TM
ii. Naked licensing licensor fails to exercise adequate quality control over the licensee, resulting in
the TM no longer functioning as a symbol of quality; courts consider (9th Cir.):
1. Existence of an express contractual right to inspect and supervise the licensee
2. Actual control through inspection or supervision
3. With a close working relationship, owner may rely on licensees quality control efforts in
the absence of a formal agreement (exs from Barcamerica:)
a. A close working relationship for 8 years
b. Licensor manufactured 90% of the components sold by the licensee with whom it
had a 10 year relationship
c. Siblings who were former business partners and had a 17 year working
relationship
d. A licensor with a close working relationship with the licensees employees where
the pertinent agreement provided that the license would terminate if those
employees werent there
4. Reliance on a licensees quality control efforts is relevant but insufficient to show no
naked license
iii. Genericide
13. Deceptively misleading descriptive mark (see below outline 5(e))
a. Same for scandalous or disparaging marks (5(f))
14. Permissible use (once likelihood of confusion is proven, can argue) (can apply to nonverbal marks)
a. Descriptive fair use affirmative defense to a showing of likelihood of confusion by infringement
i. must show (Winfrey, 2nd Cir.)
1. Use was made other than as a mark
2. In a descriptive sense
3. In good faith
a. can disprove good faith my showing the was aware of the s use of the
mark and chose to adopt an identical or similar one
b. Nominative fair use infringer uses TM to describe his own product (only practical way to refer to a
product is TMed, VW case)
i. NKOTB use TM to compare, criticize, or as a point of reference
ii. Fair use rebuts a showing of consumer confusion
iii. Tests see other outline
iv. 2nd Cir. - may lawfully use anothers TM where doing so is necessary to describe the s
product and doesnt imply a false association or endorsement by (Tiffany)
1. See other outline
c. Noncommcercial use
i. Exception to dilution claims 43(c)

d. New reporting/commentary
15. Expressive use (once likelihood of confusion is proven, can argue)
a. Parody juxtaposing cheeky/mocking/derisive representation of the TM with the idealized image/brand
created by the markholder (Haute Diggity Dog, 4th Cir.)
i. Effective parody diminishes likelihood of confusion, so you still have to do the likelihood of
confusion analysis
ii. TDRA parody is not a complete defense to dilution by blurring
b. Artistic works
i. Rogers test artistic works use of a TM that would otherwise violate the LA is not actionable
unless (can be applied to all expressive use, Haute Diggity Dog just didnt for some reason)
1. The use has no artistic relevance to the underlying work
a. ESS low bar
2. The use has some relevance but explicitly misleads a reasonable consumer as to the
source or content of the work
a. Brown high standard
Damages/type of action (Remedies listed in 1114)
16. Preliminary injunction must show likelihood of success, irreparable harm in the absence of preliminary relief,
balance of equities in your favor, and not contrary to public interest
17. Injunction (1116), show:
a. Irreparable injury
b. Monetary damages are insufficient to compensate
c. Balance of equities in your favor
d. Wouldnt disserve public interest
18. Summary judgment, movant must show no disputes of material facts
a. All doubts resolved in non-moving partys favor
19. Damages (1117)
a. Cant recover money unless its shown that the intended to cause confusion or deceive (1114(1))

Registration application
1. TTAB reviews PTO decision to see if theyre from the perspective of a reasonable person
2. Application (p. 21 of long outline) (1051(a) application)
3. Benefits of registration
a. Application for registration or for intent to use (1051(a-b))
b. Not required for protection!!
i. Priority through use, not registration (common law priority, Dastar)
c. 10 years plus renewals subject to LA 8, 9
d. Right of constructive use (as of application) nationwide priority on the goods specified in the
registration against anyone except for a prior common law TM that hasnt been abandoned (1057(c))
e. Presumption of validity
f. Incontestability (1065)
i. Park n Fly: Incontestable and descriptive marks cant be challenged on the grounds that it lacked
secondary meaning notwithstanding that the record suggested the mark lacked secondary
meaning at the time of registration and still did at time of suit
4. Validity
a. To qualify for federal TM protection must show:
i. Distinctive of source (generally look to the verbal/nonverbal marks sections above)
1. Inherently distinctive
a. Arbitrary or fanciful no semantic relation to the good/industry or coined words
i. Surfvivor cant be evocative of the product
b. Suggestive imaginative leap (Stix Pros)
2. Acquired distinctiveness (secondary meaning) see other outline
a. Descriptive with secondary meaning
b. Descriptive vs. suggestive (see above)
3. Generic or suggestive without secondary meaning not distinctive of source
4. 1052(f) evidence of distinctiveness may be proof of substantially exclusive use in
commerce for at least 5 years
ii. Not barred from protection
1. Cant be generic common descriptive name (LA 14(c) cancellation of the mark)
2. Cant be functional
3. No other bars under 1052
iii. Used in commerce bona fide use in ordinary course of trade (1127)
1. Aycock, Fed. Cir.: uses of a mark merely in pre-sales ads or prep doesnt constitute use
in commerce
2. Factors relevant see other outlines
5. Bars to protection/grounds for cancellation
a. Opposition to registration 1063, cancellation of registration 1064
b. Priority through use, not registration (Dastar) (1052)
i. 1052(d) resembles a registered mark not abandoned
ii. See simultaneous use discussion above
iii. If two marks are valid marks (concurrent use):
1. Proof of sinister purpose can negate a finding of concurrent use any knowledge of
senior use destroys junior users good faith (Rectanus)
2. Priority through use, not invention (Federal law doesnt cut off prior legitimate common
law use)
a. Rectanus territorial scope of unregistered mark, used prior to registration of the
registered mark, is limited to the territory where it is known and recognized
i. Market penetration test to define scope of location
1. Volume of sales
2. Growth trends in the area
3. Number of person actually purchasing the product in relation to
the potential number of customers

4. Ads
3. Dawn Donut Even though you might have federal nationwide priority, to vindicate your
rights by means of an injunction, you need to show that youre expanding into that
infringers area of use
c. Third party shows he will be damaged by continued use via dilution (1052(f)) must bring proceeding
under 1063
i. See dilution analysis above
d. Functionality (1052(e)(5))
i. Does something other than indicate source, red flag
ii. Utilitarian vs. aesthetic functionality see other outline
1. PTO uses Morton Norwich factors
e. Deceptive and deceptively misleading misdescriptive marks
i. Non-geographic deceptively misdescriptive mark may only be registered if its shown to have
secondary meaning as a designation of source (1052(e)(1))
1. In re Budge test for deceptive or deceptively misdescriptive marks:
a. Is the term misdescriptive of the character, quality, function, composition, or use
of the goods?
i. Focus on objective criteria such as quality, function, price, health
benefits, conformity with religious or social practice, etc.
b. If so, are prospective purchasers likely to believe that the misdescription actually
describes the good?
c. If so, is the misdescription likely to affect a significant portion of the relevant
consumers decision to purchase?
i. Material to a significant portion of the relevant population
ii. Geographic deceptive and deceptively misdescriptive marks cant be protected under any
circumstances (1052(e)(2))
1. In re Cal. Innov.: PTO may deny registration for this reason if
a. The primary significance of the mark is a generally known geographic location
b. The consumer public is likely to believe the place identified by the mark
indicates the place of origin of the goods, when in fact the goods dont come
from there
c. Misrepresentation was a material factor in the consumers purchasing decision
f. Scandalous or disparaging marks
i. Scandalous by a substantial composite of the consuming public
ii. Disparaging by a substantial composite of the allegedly disparaged people (In re Heeb)
g. Misrepresents source
i. Falsely suggest a connection four part test (Benny Goodman case)
1. Same mark or close approximation of name/identity previously used
2. Mark points unmistakably to that person
3. The person named by the mark isnt connected with the activities of the applicant
4. Prior users name/identity is of sufficient fame that a connection would be presumed
(even after death)
h. Confusingly similar
i. TMEP 1207.01 refusal under LA 2(d)
ii. Essentially a likelihood of confusion analysis
i. Abandonment discussed above
j. Genericide
k. Fraudulently registered
6. 1056 may require disclaimers to continue using the mark

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Policy
Purpose of TM law
o Promote and encourage competition
o To protect the public so they can be confident in their purchases
Also, decrease information/search costs
Increase differentiation between sellers
o To protect the TM owners investment
Deserve to reap benefits of good will
Incentivize investments in goods and disincentivize markets for lemons
o Prevent unfair competition
Things TM law tries to avoid
o Monopolistic behavior
Public domain is the general rule, IP is the exception

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