The Lanham Act
In the United States, most of the rules of the road for trademark can be found in one location: the Lanham Act. Some of the key provisions of the Act that we cover in class are:
Section 2 -- Trademarks registrable on principal register; concurrent registration: This section contains the grounds for refusing registration of a proposed mark. Keep in mind that these are the rules for registration, not trademark protection in general. A mark may be denied registration on several grounds, including being "immoral," "deceptive," "scandalous," likely to cause confusion, "deceptively misdescriptive," "primarily geographically descriptive," "primarily geographically deceptively misdescriptive," or "functional." You should understand all of these terms of art as well as which prohibitions apply to all proposed marks and which prohibitions only apply to proposed marks that have not demonstrated secondary meaning.
Section 13 -- Opposition to registration: This provision allows parties to block the registration of a mark before it becomes part of the federal registry.
Section 14 -- Cancellation of registration: This provision allows a party to cancel a mark's registration on the federal registry.
Section 15 -- Incontestability of right to use mark under certain conditions: This section allows a mark that has been used for 5 consecutive years to achieve incontestability so that certain grounds for challenging its registered status are no longer available to other parties.
Section 32 -- Remedies; infringement; innocent infringement by printers and publishers: This section sets out the cause of action for infringement of a registered trademark.
Section 43 -- False designations of origin, false descriptions, and dilution forbidden: This section includes the causes of action for common law trademark infringement, dilution, and cybersquatting.
Section 45 -- Construction and definitions; intent of chapter: This section includes some of the key definitions you will need to know for the class, including "trademark," "use in commerce," and "abandoned."
All of these sections of the Act and others can be downloaded at Cornell
Trademarks in the News
Trademark law is often in the media from infringement lawsuits to new proposals to amend the Lanham Act. I'll post examples of trademark in the news here from time to time.
- Will people think the NHL's Las Vegas Golden Knights are somehow affiliated with the U.S. Army? That's the big issue in a recent trademark infringement case.
- Here's a dispute about trademarking a state highway sign? Trademarkable or in the "public domain"?
- Pirate Joe's simply purchases Trader Joe's products from a Trader Joe's store in Washington state and then sells them in Vancouver, Canada. Should he be liable for trademark infringement? Can anyone actually be confused by what he his doing? If Canadian consumers are confused, should it matter for the purposes of U.S. trademark law? These issues of national boundaries will be directly relevant when we discuss the geographic scope of trademark rights in class #11.
- Who likes college football? Who likes donuts? Should the University of Texas be able to block a donut shop from selling a Hook 'Em Horns donut?
- After a long battle, EAT MORE KALE is registered as a trademark by the PTO. Should it have been?
- Should a private business be allowed to trademark names like "Yosemite National Park"? Is there a difference between who you sympathize with in this dispute and what the law should be?
- A lawsuit pitting Canadian DJ Deadmau5 against the Disney corporation. Disney is opposing Deadmau5's effort to register the oversized cartoon mouse head that he wears while performing as a U.S. trademark, contending that it would infringe on its own signature Mickey Mouse ears logo. Who should win?
- Trademark disputes often involve the music industry as musicians sue over use of their band names, etc. A lawsuit involving Pharrell versus will.i.am.
- Here is an opportunity to win a $2,500 scholarship from the NY State Bar Association. The Phil Cowan Memorial/BMI Scholarship fund offers up to two awards of $2,500 each on an annual basis in Phil Cowan's memory to a law student who is committed to a practice concentrating in one or more areas of entertainment, art or sports law. Each Scholarship candidate must writ an original paper on any legal of current interest in one or more areas of entertainment, art or sports law. The paper should be twelve to fifteen pages in length (including Bluebook form footnotes), double-spaced and submitted in Microsoft Word format. PAPERS LONGER THAN 15 PAGE TOTAL WILL NOT BE CONSIDERED. The cover page (which is not part of the page count) should contain the title of the paper, the student's name, school, class year, telephone number and email address. The first page of the actual paper should contain the title of the paper, the student's name, school, class year, telephone number and email address. The first page of the actual paper should contain only the title at the top, immediately followed by the body of the text. The name of the author or any other identifying information must not appear anywhere other than on the cover page. Papers must be submitted to Professor Mark Bartholomew at email@example.com no later than December 5. For further details, please see Professor Bartholomew or visit Phil Cowan Memorial/BMI Scholarship.
Likelihood of Confusion Factors and the Internet
When he was a second-year law student at Louisiana State University (LSU), Douglas Dorhauer operated a website at the lsulaw.com domain, devoted to information about the LSU law school. The LSU law school also operated a website, at law.lsu.edu. Asserting that Dorhauer's unauthorized website was giving rise to a likelihood of confusion, LSU sued Dorhauer for trademark infringement, reportedly two days before final exams.
Assume that LSU owns the rights in the mark LSU for educational services and entertainment services in the nature of intercollegiate athletics.
(1) Using the multi-factor analysis for confusion from the Fifth Circuit (see Figure 7-1 for the relevant factors), outline the best arguments, factor by factor, for and against confusion. Assess the likelihood of confusion.
(2) In Goto.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000), the court asserted that in the Internet context, the three "most important" confusion factors are (1) similarity of the marks; (2) the relatedness of the goods or services; and (3) the simultaneous use of the Internet as a marketing channel. See also Entrepreneur Media Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002) (suggesting that analysis of concurrent use of the internet as a marketing channel should encompass analysis of whether the parties did so in a substantial way, whether the parties' products were web-based, and whether marketing channels overlapped in any other way). Should courts accept the Ninth Circuit's approach of elevating this "Internet trinity" of factors over the other factors? See Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165, 1173-74 (9th Cir. 2007) (reiterating the approach). If you followed that approach, would it affect the likely outcome of the LSU case?
Here's a clip involving allegations of two specific trademark causes of action: dilution and cybersquatting. We will go over the case of Mr. Nissan when we cover those causes of action midway through the semester.
The exam for this course is worth 80 percent of your grade. You will have 3.5 hours to complete the exam. The exam is an open book, open note test. You should answer the questions based on the readings for the course, my lectures, and the materials in the final exam. You must not conduct any independent research. You are allowed to and may want to bring a calculator. Approximately half of the exam will be made up of an issue spotting/essay question. You will be asked to identify legal issues and then apply the facts provided in the essay question to those issues. The other half of the exam will be made up of multiple choice questions. A sample multiple choice question is provided below:
Presto sells kitchen devices like spatulas, slotted spoons, and can openers under the mark QUIKFIX in the mid-Atlantic market (New York, Pennsylvania, New Jersey). Chango Industries also sells kitchen devices and has introduced its own line under the name QUICK FIXER. Which of the following must Presto demonstrate if it decides to sue Chango for federal trademark infringement?
(A) That Presto has used the QUIKFIX mark for five years.
(B) That QUIKFIX is an inherently distinctive mark.
(C) That it has registered the QUIKFIX mark.
(D) That QUIKFIX is a valid trademark.
Some Good Study Aids for Trademark
So here are some supplementary materials you might be interested in to aid your understanding of trademark. Some of them are available in the Law Library and some are not. First and foremost, however, you should focus on your casebook, the assigned sections of the Lanham Act, and my lectures. And I am always available for discussions outside of class about the things we are learning in class.
Mark D. Janis, Trademark and Unfair Competition Law in a Nutshell (West 2013) Good summary of many of the concepts we learned in class written by one of the co-authors of our casebook.
Cornell Legal Information Institute, Trademark. Free website provides a general explanation of trademark law and includes key cases, statutes, and online links. Access the website at this link.
Mary LaFrance, Understanding Trademark Law (LexisNexis, 2009). This study aid goes above and beyond what you find in the Nutshell. You can find this book in the Law Library's collection of study aids, which is located on the bookcase on your right as you enter the library. Call number: KF3180. L34 2009
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed. (West 2012). This is the definitive, comprehensive treatise on trademark law. It is too big to be a general study aid, but you might want to look at it if you have a specific question on a particular area of trademark law. The book can be found at call number KF 3108. M3 1996. It is also available online vis Westlaw.