Anolik_TrademarkLaw_Sp08_Answer2

Anolik_TrademarkLaw_Sp08_Answer2 - ID: Exam Name: TRADEMARK...

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Unformatted text preview: ID: Exam Name: TRADEMARK LAW OF THE U.S. Instructor: NA Ms. Sharon A. Anotik Grade: 11 Question 1. Vi lntroduction. Trademark law govems the use of a device a whether a symbol, word. name. logo, slogan. picture, etc. - used by companies to identity its goods or services and distinguish them from others- Trademark law is designed to protect consumers from being confused or deceived as to what product or quality of product they are ourchasing. Trademarks can be protected through state common taw and state created J statutes. or federallv through the Lanham Act of 15146 {the "Act":I. Although common law rights do provide protection to trademark owners. being registered under the Act is the most beneficial wag.r to secure protections for one's trademark. One can register a mark pursuant to the Act by filling an application after actual use of a trademark or by applying through intent to Use {bona fide intent to use based on objective good faith}. In trademark litigation. an owner of a registered mark generally has more rights than a common law owner. For example. to assert common law trademark infringement. a plaintiff must first show first use {their mark was appropriated by them-and actually used in commerce - placed in the market before the other}. When registered one can show registration and slight sales. H"—'-—._._,_1 G) _._\_‘_ To be afforded protection, trademarks must be distinctive. Furtheramarks are ciassified according to the level of protection they can be afforded. Fanciful marks {those using made up words} and arbitrary marks {those using real words that have nothing to do with the goodsfservice they represent} are the strongest and are afforded greater protection. Suggestive marks {those that suggest the type of product they represent} require imagination or thought to reach the corollary Suggestive marks are easily protected. A descriptive mark. one that describes the goods or services for which it represents. can only be given protection if it has acquired secondary meaning. [Secondary meaning is when a mark has earned customer recognition through continued use over time and the primary significance of the mark in customer's mind is to associate it to the mark owner and not the productfservice}. Descriptive marks require secondary meaning because if descriptive marks were afforded wide protection. other producers of similar products would not be able to use the descriptive words to clearly explain their product. Lastly are generic marks — those that use the species name for the product — which are never afforded protection. we Fatkins {"F") has a variety of ways to try and halt Etusway {"3"} from using its mark and point system in its advertising and menus. initially it’d be best to write a cease and desist letter to S indicating that F is not endorsing D's use of itstraderna:'I-ts in their ads or menus and to inform them that ifthey do not stop using the marks, litigation will ensue. Ifthis faiis. litigation is the best option. r-‘ts for causes of action, F should assert claims against S in trademark infringement and trademark dilution. and possible misappropriation of trade secret. These will be discussed in detail in turn. @ Trademark infringement. Section 43ia} of the Act provides that anvone who uses a mark in connection. with goodslservices which is liker to cause confusion. or to cause a mistake. or to ceceive. as to the atfiliationlcoonection of such person with another person (or as to the originisponsorship} of his or her gooosrserviees is liable in an action to anyone who is liker to be damaged bv such conduct F will want to argue that by using its Fatkins mark in its ads and its menu. Bis causing confusion or deceiving the consuming ouhlicthat F is associated with E orthat F is sponsoring B‘s menu and restaurant. To succeed on this claim F will have to prove: t} F owns a mark. Fatkins. and t2} likelihood of confusion. Ownershig of a mark. As mentioned above. F can own the "Fatkins" mark even without a federal register. F is the company.r with the name Fatkins and presumably owns the mark to its poirt svstem titte [the name "Fatkins"]l. Likelihood of confusion. In trying to prove likelihood of confusion. in litigation its best to use a combination of survev evidence. evidence of actual confusion. and a solid argument. in addition. the liketihood of confusion must exist in a aooreciahle number of reasonath prucent or (33 EVE FEQE consumers. Court considerthe following factors when determining itthere is a likelihood of confusion: [the Polaroid factors} a. Strength of the firs mark - this factor looks at F's mark "tatkins" to see how much its adyertisecl. the length of use. the tamousness of the mark and other similar factors. Here. it seems that it has gained a lot of hype because the facts indicate the B used the point system to reach a larger consuming public. B wouldn’t use the point system if there wasn't any fame or hype surrounding it. in addition "fatkins" as a mark can be categorized as either fanciful — made up u or possibly as suggestiye. in either case. it is afforded greater protection than a descriptiye mark would have. Fatkins is a made up word but also suggests that the product has some correlation to a diet product. lt is a strong mark. h. Similarity between the two marks - B's use of F's mark in its ad and its meru is an identical use of the mark. There is no distinction between how B portray the mark and how F portray it. This factor is in fayor of F. C. Similarity of products. This factor looks to the oyerlap ofgoodstseryices as well as the marketlbuyers. In this case. the dieting world and the restaurant world are connected. lti'lostly eyeryone eats out occasionally and dieters haye a hard time to do this without losing track of their diets. if El holds on its menu that F‘s diet can be held up to at their restaurant. dieters will then not buy a meal's worth of F's food and i'tstead go out to eat. This factor sways in terror of F. 6*) d. Likelihood of bridging the gap — this iactor asks whether the two markets are going to overlap at anytime soon. The fact that the restaurant business and the diet business are related already. it seems clearthat the gap can be bridged easily. This factor also favors F. e. Actual confusion. This will be shown with survey evidence. F will want to conduct consumer surveys asking the public it they believe that B's use of F meant that they were associated together orthat F was sponsoring Et‘s use of it in the ads and menu. It seems likely that consumers will be confused as to whether the two are connected. because E is outright using F‘s mark in the menu and ad. Most consumers wii! think a sponsorship has been created. F. Good faith of the defendant in using the mark. Even if E was using the mark in good faith. they can still be liable. In any event. B didn't ask permission ortry to confer with F whether it would be okay with F to use the mark. g. tlluality oftheiunior's services. Here. one of the main reasons why F is so outraged is because F feels that the product of as food services is poor. F doesn't not want to be associated with B because F feels E‘s food is bad. Although it will be up to the jury or the court to determine what the duality really is. F's opinion may be relevant tut it is not controlling. This favors F. h. Sophistication ofthe buyers. Here. people buying diet guides and diet books usually do a bit of research before committing to a plan. However. with the restaurant business. © i“ often there is no research just what is known and easily available. This is espec all}.r true in the sense of chain restaurants. it seems that the sophistication level is not that high to a degree that would aid the consumers in recognizing that the two companies were not related. This factor is in favor of F. Because the factors are in favor of F and consumers are likely to be confused or even deceived believing that F rs endorsing or sponsonng B's use of its mark. F has a good \/ chance to succeed in an infringement action against E. Dilution. A trademark dilution claim protects owners of famous trademarks from people who mayr use a trademark in a wav that either impairs the distinctiveness of the famous mark or tarnishes the reputation of the famous mark. Unlike the policv behind trademark infringement. trademark dilution statutes protect the owners of the famous marks. not the EU HS Ll rners . Section 43fc} of the Act provides that a famous mark owner can sue for an injunction if {1} their mark is famous {either inherentlyr distinctive DR acquired distinctiveness through secondary,r meaning} and {2} another uses a mark in commerce [after plaintiffs mark has become famous} in a way,r that is liker to cause plaintist mark to suffer dilution by either blurring or tarnishment. in a dilution action. the plaintiff need not show actual confusioniiikelihood of confusion. actualitikelihood of competition. or actual economic damages 43c‘t. However. ‘v’ictoria's secret indicated that the actual damages must be @ shown. F must show the following to succeed: Plaintiffs mark is famous. This is a heightened standard — A famous mark is widely recognized by the general consuming public of the US as a designation of source of the goodsiservices of the mark‘s owner. To determine the requisite degree of recognition. courts look to: a. duration. extent geographic reach of advertising and publicity of the mark. whether advertised or publicized by the owner or third parties; b. Amount. volume. and geographic extent of sales of goodsfservices ottered underthe mark. c. whether the mark was registered d. Extent of actual recognition of the mark: e. Channels of trade Here. we do not know whether the mark is registered. but it is apparent that it has been widely advertised. IF El is using the mark to indicate thatthey have healthy options, it appears that it is well known mark. i3 wouldn't use the mark of a unknown company to show that they are providing healthy options. Given that B is a national chain and the facts infer that F's mark is being used nationally we can assume that the marl: is widely recognized. The mark is famous. Plaintiff‘s mark has been diluted because of lblurring. Blurring is the association arising from the similarity between a mark or trade name and the famous mark that impairs the distinctiveness between a mark or trade name and the famous mark. Courts look to the G) following factors to determine if there has been blurring [there are also the Sweet factors). a. Degree of similarity between the marki'trade name and famous mark {texts provided that marks have to be sobstantiallvr similar to assert a dilution claim). As mentioned above, E is outright using F's mark in commerce - in ita ad and in its menu wrout permission. The marks are identical. b. Degree of inherent or acquired distinctiveness; r-‘ts mentioned above, Fatkins is either a fanciful mark or a suggestive mark. It can be inferred that it has a great distinctive qualitv as the name is fake and that E! is using it to show the general consuming public that it has a healthy option. it wouldn't do this if fatkins was not widely known as a mark for a diet plan. c. Extent to which the owner of a famous mark is engaged in substantially.r exclusive use of the mark. No facts indicate that F has allowed anyone else to use its mark. d. Degree of recognition of the mark. There is a high degree of recognition because its distinctive. fanciful and recognized bv the consuming public as referring to F's products. e. Wether the use of the marki'trade name intended to create an association wt the famous mark This is obvious. B's is explicitlv using the mark to create an association with F's point svstem. t. any actual association between the marldtrade name and the famous hark. There is no approved association between the two. Here, it seems that there has been blurring. Unless defenses exist, F has a strong claim against E. Trade Secret A trade secret cause of action is not available here. One of F's products is a booklet expressly providing dieters with the tools to determine fatliins points for certain foods. F cannot argue that B has appropriated that trade secret in determining the fatkins points for their menu items when it is easily available to the purchasing public. POSSIBLE DEFENSES. Initially, B will strongly object that there has been any likelihood of confusion. l3 will argue that it has merely used the point system as any consumer who buys the booitlet can to indicate how many faticins points its food items has. It will argue that it has not i used F's mark to referto a good service but merely to compare its items to the point *1 system within F's fatkins diet. [See further discussion below on comparative advertising}. B will argue that people are not likely to be coniused, that they will understand that B is lost providing them with fatkins points, not with tatkins products or services. This argument is without merit because Bis using tattcins point system. J People will be confused as to who has sponsored the use of the tatkins points. GD Excegtions to Dilution. The Act provides 3 exceptions to a claim for dilution. The exceptions are ‘l —ta:r use. including nominativeldescriptive fair use including comparative advertising and parody. 2n news reporting or commentary. and 3 - all noncommercial use. Here. B's use is clearly commercial end can't be considered news reporting. As for comparative advertising. El is not comparing its product to F's. It is using F's marl: "latlrins" and F's point system to appeal to F's consumer base and generate business therefrom. In atypical comparative advertising sense. a generic brand is using the famous mark to say "this product is exactly the same as the name brand. but cheaper". Courts have held this okay so long as there is no patent on the product. This is not what r—nfi'ft - is aWendr here. El will argue it's descriptive nominative use. However, it will fail. It is also not a nominative descriptive use. E is notjust using the fallrins name, but is taking the fatlrins point system and incorporating it into their menu to take some of tatlrins dieters to the restaurant. This is not similar to the NKDTB case where the radio station was just using the new irids band name to identify them. This reaches further. / f _ Other affirmative defenses include Abandonment — not applicable here. clearly F has not abandoned it‘s mark. Hal-red licensing or assignment in gross - F has not assigned it's marlr. to B. F has also not licensed E to use it. Acouiescencel Laches. No facts indicate that F has sat on its rights and GD unreasonably delayed in bringing the suit causing E. any prejudice so laches doesn't apply. F has not done any affirmative act showing E- that it is okay with its use so Acquiescence is clearly not ayaitabie. Remedies injunction Under dilution aboye, F has proven the requirements to obtain an injunction. 43(13): oroyides that by meeting the elements listed aboye a plaintiff is entitled to an injunction. Damages For dilution. F will only obtain damages if there has been willful conduct on the part of E. Either El willfully intended to trade on the recognition ofthe famous mark; or willfully intended to harm the famous mark. There is a good argument that E willfully intended to traded on the recognition of F's fatttins mark. It used the point system and the mark to get F's consumers into its restaurant. F can potentially obtain money damages. attorneys fees. and treble damages. For infringement. in order to get damages, F must show that it has been actually harmed. or that F has suffered economic damages through loss sales. money spent in trying to correct the confusion. diyerted sales costs. etc. 2} Ctuestion 2. / lv'lay r. zoos To: LCF'i RE: Conflict with CTS and Bob Lieght regarding "Leights Computer Transiting“ Dear CED: Our first measure of business is to determine what trademark n'ghts you have acquired over "Lights Camera Action" and simply "Lights." Needless to say it*d be better , if you had a trademark registered with the li Federal Register FTC under the Lanham Act. 5 M,— 3 yr . however the fact that you do not does not ruin your chances of protecting the good name aria-fry; and reputation of LCA‘s business. It is not as imperative at this point to register the trademark for "Lights Camera Action" as it is simply your business name and not what you have been referred to in the business. As the case Usually is. consumers have shortened your name to simply "Lights" when referring to the greatjob you do on training videos. in trying to assert trademark rights over the word "light" there may be problems. @ To be afforded protection. trademarks must be distinctive. lvtarks are classified according to the level of protection they can be afforded. Fanciful marks (those using made up words] and arbitrary marks [those using real words that have nothing to do with the goodslsewice they represent} are the strongest and are afforded greater protection. Suggestive marks {those that suggest the type of product they represent} require imagination or thought to reach the corollary. Suggestive marks are easiiy protected. Ft descriptive mark. one that describes the goods or services for which it represents. can only be given protection if it has acquired secondary meaning. [Secondary meaning is when a mark has earned customer recognition through continued use over time and the primary significance of the mark in customers mind is to associate it to the mark owner and not the productlservicei. Descriptive marks require secondary meaning because if descriptive marks were afforded wide protection, other producers of similar products would not be able to use the descriptive words to ctearty explain their product. Lastly are generic marks — those that use the species name for the product — which are never afforded protection. in the case of "Lights" although lights is a generic term to associate with a light. it is not generic in your use because you are not using it as a mark name for a tight. it is for a different service. The mark will not be generic which is good. We will make a strong argument that lights is arbitrary because a light does not have much to do with a f corporate training video. However. we may also have to argue that in the alternative it is suggestive. To determine if it is descriptive or suggestive. it's important to ask how much imagination is required on the consumers part in trying to cull some indication of the form of the mark about the qualities. characteristics. effect or purpose of the service. It is also important to ask whether sellers of similar services use the same term to describe their @ services. Here. the term lights does not really suggest your service of providing training videos. Although. lights.camera action is normally associated with films. just lights is not. It is clearly not descriptive because it doesn‘t describe your product. This will prove beneficial to you if we litigate. Initially. I would suggest that we begin a trademark application in the PTD's office \/ to register "Lights" for use in the corporate training business. it might also be 2: good idea to apva for a trademark for "lights camera action." Since Lights has been in use by you for a few years. you will not need to file an intent to use application. but can file a regular application indicating that the mark has been in use by you in commerce. {This is lfwe show that you have actually used the merit. Consumers have been doitg so. but it's best if we can have some advertising materials to submit also.) The application can take anywhere from 5 months to a year. so in the mean time there are other things that we also need to take care of. Secondly. it'd be best to first send cease and desist letter to GTE, Lieght. and "Lights Computer Training". This is usually not very effective. but since you want to M avoid litigation if possible a cease and desist letter can at least begin negotiations with the companies to see if we can settle the matter before entering a court room. However. considering the prior negotiations you have had with ETC. l inferthat they are not going to settle. lDur litigation options are to sue under common law trademark infringement. Since you have not registered the merit. a federal dilution action will be difficth to prove. By the word of mouth use of the mark. it doesn't' seem that it will be proven to be 09 "famous." However. common law trademark infringement and unfair competition are viable claims that we can pursue against both Lieght and ETC. Trademark infringement requires thatwe prove you have a valid trademark. and that there is a likelihood of confusion between your mark "tights" and the offending mark "Lieghts Computertraining." Fla mentioned above. i believe it can be shown that you have a mark that is worthy of protection as either a arbitrary mark or second best as a suggestive mark. it will be necessary for us initially to get some customer affidavits and auryeys indicating their use of "Lights" as associating to your business. This is imperative to showing that you have a valid mark. Escondty forlikelihood of confusion. there are a list of factors that we need to indicate that consumers are likely to be confused by the training videos {Lieghts computertraining}. Factors include: Strength of the your mark. the similarity between the two marks. the similarity of products. the likelihood of bridging the gap. actual confusion. good faith of the defendant in using the mark. the quality of the iunior’s services. and the sophistication of the buyers. Now considering "Lights" isn‘t registered and i do not know if you've been advertising you business as "Lights". we have to do additional discovery to see if we can show your mark is strong. Most likely unless there are affidavits and surveys :ndicating people are familiar with the mark. it will be hard to show you have a strong merit. "Lights" and "Lieghts Computer Training" are fairly similar. The first name is p'onounced the same way, and the fact that you are in the business of providing corporate training videos. it is likely that they are similar enough to cause some confusion. You provide @ high class training videos for particular businesses and charge a high price for view services. ETC is making and marketing computer training videos that are tape recordings of a man teaching a class. This gees to show that you clearly in similar markets and that their quality is interior to yours. These are all good factors for you. There is also a likelihood that you. at some point. may want to expand your services to provide training videos covering general office learning tools. such as computer programs. This means that there is a likelihood the bridge will be closed. Also considering ETC has been attempting to take over your corporation and share in the good will you have created. they have associated with Lieghts to take some of your client base. This can be inferred from the facts. Buyers in your market may be more sophisticated because they are purchasing high priced training videos fortheir large J corporations. This probably requires some research. However. it is still likely that while doing research. they will get confused with your product and the Lieghts videos because they are essentially in the same market. As mentioned above it is key that we get survey evidence and affidavits H.r indicating that people have used your mark. lt is also imperative to use the surveys and affidavits to show that there is some actual confusion between your mark and theirs. Potential defenses. Initially. Lieghts has a defense of first use. 1v'tlhen marks aren't registered. there is basically a race to the market. This means that since Lieghts has been us-ng his Lieghts Computer training since 1993. he may have a first use defense agair-st you. First use requires appropriation of the mark and actual use in trade - actually putting a goodfsenrice within the market Lieght has been trayeliing around the Southeast states since 1990 proyides seryices to customers giying them computer training. Howeyer. he may be afforded protection only within his niche ofthe Southeast and not the area where you are primarily concemed with. Lieghts will also claim that his first use entitles him to trademark protection for his name. Lieghts will only he giyen protection lorthe name mark if it has acquired secondary meaning because surname marks are descriptiye. Howeyer. the PTO will have to look at the mark in its entirety [Lieghts Computer Training" when determining if it is descriptive surname mark or not}. in any eyent. Lieghts may haye his first use rights waiyed and considered to have abandoned his mark if he engaged in naked licensing or assignment in gross. K as sly/0i“. naked license occurs when one licenses to another the use of their trademark but retains no control oyer the other's use of the mark to make sure that the locality and reliability of the productfseryice for which the mark is used remains the same. If one engages in naked licenses they do not get first use rights because the consumers can be harmed. Consumers are harmed when a mark is not controlled to maintair- quality. I do not know what arrangement ETC. has acquired with Lieghts, but taping his sessions and selling them may be proyiding a lesser quality good under the same trademark name. A naked license is an inherent deception on the public and results in abandonment of the mark. Further. an assignment in gross occurs when one assigns a mark to another in connection with a different goodwill and a different product that results in a fraud on the ® purchasing public who would reasonava assume that the mark signifies the same thing. When one assigns their mark to another they.r must transferthe good will. Meani'ig the services have to be sufficiently similar to prevent consumers of the service offered under the mark from being misled from establishing associations with the mark. Here. the products are not verv similar. Cine is in person training at commercial offices and the other is taped recordings of trainings being sold at 2G5 a pop. {This is similar to a Diabetic cookbook case which held that a retail store selling diabetic products was not sufficiently similar to a diabetic cookbook for thebflto be a valid transfer of goodwill}. Conclusion As mentioned above. our course of action will be: i, - a First. get our applications into the PTO asap! vii)" I til Second. write cease and desist letter to ETC and Lieghts. / Third. it the second option proves unsuccessful. we should file an action asserting trademark infringementand unfair competition. Please feel free to contact me with any questions. It will be necessary,r to coordinate soon to get ready to file the PTO applications. lwill contact you soon. Sincerely. Trade mark assoaiata. END OF EXAM rm' {3/20 ...
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Anolik_TrademarkLaw_Sp08_Answer2 - ID: Exam Name: TRADEMARK...

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