Trademark - outline

Trademark - outline - I. Legal Framework A. The Dominant...

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I.  Legal Framework A. The Dominant Framework 1. basic concepts a. Rest.3d Unfair Competition § 9. trademark and service marks b. secondary meaning c. gen'l types of TM cases (i) infringement: D accused of unauthorized use of someone else's TM (ii) invalid registration: P claiming that PTO (or state TM office) issued a TM where it shouldn't have 2. TM law, both at fed- and state- level a. registered rts : TM registered with PTO (i) Lanham Act (ii) Kellogg v. Nat'l Biscuit Co. (Nabisco) (US 1938) b. c.Law rts : no registration needed TM or (SM) - pending registeration 3. protectable marks a. word marks (i) Coca-Cola v. Koke b. Slogans : TM'able? yes: c. Personal Names : TM'able? maybe d. Trade Dress : characteristics of packaging (or product) that serves as the TM e. other Sensory Devices (i) Scents/Aromas (ii) Sounds 4. Commentary on TM policy a. Brown, Advertising and the Public Interest article - (for narrow TM rts) 5. Registration – fed and state (Borchard article) 6. TM case procedures - judicial framework a. infringement cases -- b. registration cases : protesting denial or issuance (opposition proceedings OR affirmative defense) of federal TM registration c. res judicata/collateral estoppel: 7. scope of TM rts a. Hanover v. Metcalf case: outline of scope b. Champion Spark Plug (US 1947): protection extends only as far as nec’y to prevent confusion B. Alternative Frameworks 1. Stork Club (CA9 1948): confusion and dilution 2. "Breakfast with Batman" article: TMs as property w/ intrinsic value 3. Rest.3d Unfair Competition - Freedom to Compete 4. International News Service case (old S.Ct.): TM infringement as part of unfair competition - "reaping where it has not sown" 5. Dilution: a. Pattishall article detailing concept of Dilution b. Ringling Bros v. Celozzi-Ettelson (CA7 1988)
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II.  Acquiring TM rts A. Distinctiveness of a TM 1. Reynolds case suggestive 2. Quik-Print case descriptive 3. Secondary Meaning a. Rest.3d Unfair Comp. § 13. Distinctiveness; 2dary meaning b. Int'l Kennel Club v. Mighty Star Gimix factors for 2dary meaning c. Rock & Roll Hall of Fame - 2dary meaning acquired when mark viewed as a source identifier B. Acquisition of Trademark Rights through Use in Commerce 1. different types of uses 2. Establishing Commercial Use a. Proctor&Gamble v. Johnson&Johnson - covering sufficiency of commercial activity to preserve TM rts 3. Scope of "Use in Commerce" w/i reach of Lanham Act 4. Extraterritorial "Use in Commerce" a. Buti v. Impressa - "Fashion Café" case focus on commercial use in US 5. Priority Use a. Blue Bell v. Farah internal communications are not use b. Lucent Info. v. Lucent Tech. senior use trumps ITU filing (junior constructive use) c. Shalom Children's Wear v. In-Wear senior ITU filing trumps junior ITU filing (i) pre-sale activities can count as commercial use d. Maryland Stadium Auth'y v. Becker multiple ITUs
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This note was uploaded on 02/14/2008 for the course LAW 7060 taught by Professor Haas during the Spring '07 term at Yeshiva.

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Trademark - outline - I. Legal Framework A. The Dominant...

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