Trademarks Notes

 TRADEMARKS IN HUANG  Y IN

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CONTENTS

 W HAT HAT IS A IS  A TRADEMARK   TRADEMARK ? Cheney Brothers v. v. Doris Silk Corp., 35 F.2d 279 (2d Cir. 1929) [3]............................................... .............. 8 Sears, Roebuck & Co. v. v. Stiffel Co., 376 U.S. U.S. 225 (1964) [5]..... ........................................... ........................... 8 Bonito Boats v. v. Thunder Craft Boats, 489 U.S. U.S. 141 (1989) [9]....................................... ................................ 8  The Trade-Mark Cases, Cases, 100 U.S. U.S. 82 (1879) [13]..................................................................... .......................... 8 Hanover Star Milling Co. Co. v. v. Metcalf, 240 U.S. U.S. 403 (1916) [21]...................................................... ................. 8 Stork Restaurant, Inc. v. v. Sahati, 166 F.2d 348 (9th Cir. 1948) [22]............................................................ [22]................. ........................................... ..... 8 Champion Spark Plug Co. v. v. Sanders, 331 U.S. U.S. 125 (1947) [27]..................................................... ................ 9  Associated Press v. v. All Headlines News Corp., 608 F. F. Supp. 2d 454 (S.D.N.Y (S.D.N.Y. 2009) [S-6]....................... 9 Barclays Capital, Inc. v. v. Theflyonthewall.com, 2011 WL 2437554 (2d Cir. 2011) [S-7].......... .............. ....... ............9 .....9 Custom Manufacturing v. v. Midway Services, Inc., 508 F.3d 641 (11th Cir. 2007) [S-10]............................. 9 Kellogg Co. v. v. National Biscuit Co., 305 U.S. U.S. 111 (1938) [44]............................................................. ........... 9 Coca-Cola Co. v. v. Koke Co. of America, 254 U.S. U.S. 143 (1920) [49].............................................................. .10 Peaceable Planet, Inc. v. v. Ty, Ty, Inc. 362 F.3d F.3d 986 (7th Cir. 2004) [52]........................................................... .. 10 Qualitex Co. v. v. Jacobson Products Co., Inc., 514 U.S. U.S. 159 (1995) [63]....................................................... [63]........................... ............................ 10  Abercrombie & Fitch Fitch Co. v. v. Hunting World, World, Inc., 537 F.2d F.2d 4 (2d Cir. 1976) [78].................. [78]........... .............. .............. ........... ....10 10 In re Application of Quik-Print Copy Shops, Inc., 616 F.2d F.2d 523 (C.C.P.A. (C.C.P.A. 1980) [82]................... .........10  American Waltham Waltham Watch Watch Co. Co. v. v. United States Watch Watch Co., Co., 173 Mass. 85 (Mass. (Mass. 1899) [87]...................11 Rock and Roll Hall of Fame and Museum v. v. Gentile Productions, 134 F.3d F.3d 749 (6th Cir. 1998) [96]. .11 Stayart v. v. Yahoo! Inc., Inc., 623 F.3d F.3d 436 (7th Cir. 2010) [S-11].................................................... ....................... 11 In re Chippendales USA, 662 F.3d F.3d 1346 (Fed. Cir. 2010) [S-11].................................................................. 11 In re Vertex Group, LLC, 89 U.S.P.Q.2d (BNA) 1964 (T.T.A.B. (T.T.A.B. 2009) [S-13]........................................... [S-13].............. ............................. 11 Lahoti v. v. VeriCheck, VeriCheck, 586 F.3d F.3d 1190 (9th Cir. 2009) [S-14]............................................................... [S-14].................... ........................................... ............. 11  Wolf  Wolf Appliance v. v. Viking Range Corp., 686 F. F. Supp. 2d 878 (W. (W. D. D. Wis. 2010) [S-15]............................ [S-15]............................ 12

O WNERSHIP AND  WNERSHIP  AND USE Bell v. Streetwise Records, Records, Ltd., 640 F. F. Supp. 575 (D. (D. Mass. 1986) [105].................................................... 13 Robi v. v. Reed, 173 F.3d F.3d 736 (9th Cir. 1999) [109].................................................................... ........................ 13 Estate of Francisco Coll-Monge v. v. Inner Peace Movement, 524 F.3d F.3d 1341 (D.C. Cir. 2008) [S-19]......13 Larry Harmon Ha rmon Pictures Corp. v. v. Williams Restaurant Corp., 929 F.2d F.2d 662 (Fed. Cir. 1991) [123]........ [123].... .....13 .13 Central Manufacturing Inc. Inc. v. v. Brett, 492 F.3d F.3d 876 (7th Cir. 2007) [S-21]................................................... 13  American Express Co. Co. v. v. Goetz, 515 F.3d F.3d 156 (2d Cir. 2008) [S-26]........................................ [S-26]........................................ ................... 14 Nextel Communications, Inc. v. v. Motorola, Inc., 91 U.S.P.Q.2d .S.P.Q.2d (BNA) 1393 [S-27]................................. [S-27]........... ...................... 14  Aycock Engineering, Engineering, Inc. v. v. AirFlite, Inc., Inc., 90 U.S.P U.S.P.Q.2d .Q.2d 1301 1301 (Fed. Cir. Cir. 2009) [S-27]......... .............. ....... ............14 .....14 International Bancorp, LLC v. v. Société des Bains de Mer et du Cercle des Etrangers à Monaco, 329 F.3d 359 (4th Cir. Cir. 2003) [S-30].................................................... ........................................... ........................... 14  Aktieselskabet AF 21. November November 2001 v. v. Fame Jeans Inc., Inc., 525 F.3d F.3d 8 (D.C. (D.C. Cir. 2008) [S-35]....... [S-35]..............14 .......14 Blue Bell, Inc. v. Farah Manufacturing Manufacturing Co., 508 F.2d F.2d 1260 (5th Cir. 1975) [140]............................ .......... 15

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United Drug Co. v. v. Theodore Rectanus Co., 248 U.S. U.S. 90 (1918) [158]....................................................... 15  Thrifty Rent-a-Car System, Inc. Inc. v. v. Thrift Cars, Inc., Inc., 831 F.2d F.2d 1177 (1st Cir. 1987) 1987) [163]............. [163]....... ............. ...........15 ....15 Dawn Donut Co. v. v. Hart’s Food Stores, Stores, Inc., 267 F.2d F.2d 358 (2d Cir. 1959) [168]...................................... 15 Emergency One v. v. American Fire Eagle Engine, 332 F.3d F.3d 264 (4th Cir. 2003) [169].................. [169]........... .............. ............15 .....15

R EGISTRATION EGISTRATION OF TRADEMARKS  WarnerVision  WarnerVision Entertainment, Inc. Inc. v. v. Empire of Carolina, Inc., 101 F.3d F.3d 259 (2d Cir. 1996) [193].... [193].......16 ...16 Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569 (Fed. Cir. 1993) [198].................................................... ........................................... ........................................... ................. 16 In re Bad Frog Brewery, Brewery, Inc., 1999 WL 149819 149819 (T.T.A.B.) (T.T.A.B.) [204]...................................................... .......... 16 In re White, 80 U.S.P.Q.2d U.S.P.Q.2d 1654 (T.T.A.B. (T.T.A.B. 2006) [224].......................................................... [224]............... ........................................... ........................ 16 NutraSweet Co. v. K&S Foods, Inc., 4 U.S.P.Q.2d 1964 (T.T.A.B. 1997) [232]..........................................16 Person’ Person’s Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990) [243].................................................. ...... 16 First Niagara Insurance v. First Niagara Financial, 476 F.3d F.3d 876 (Fed. Cir. 2007) [246].......................... 17 In re Joint-Stock Joint-Stock Company “Baik”, 80 U.S.P U.S.P.Q.2d .Q.2d 1305 (T.T.A.B (T.T.A.B.. 2006) [248]......................................... 17 In re Quadrillion Publishing, Ltd., 2000 2000 WL 1195470 (Aug. (Aug. 9, 2000) [260]............................................ .. 17 In re Howard Leight Industries, LLC, 80 U.S.P U.S.P.Q.2d .Q.2d 1507 (T.T.A.B. (T.T.A.B. 2006) [265]..... ................................ 17 In re Gibson Guitar Corp., 61 U.S.P.Q.2d .S.P.Q.2d 1948 (T.T.A.B. (T.T.A.B. 2001) [271]....................................................... [271]................................. ...................... 17 Compagnie Gervais Danone v. Precision Formulations, LLC, 89 U.S.P.Q.2d 1251 (T.T.A.B. 2009) [S56]................................................... ........................................... ........................................... ................................. 17 Boston Red Sox Baseball Club Limited Partnership v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008) [S58]................................................... ........................................... ........................................... ................................. 18 In re Lebanese Arak Corp., 94 U.S.P.Q.2d U.S.P.Q.2d 1215 (T.T.A.B. (T.T.A.B. 2010) [S-63]...................................................... [S-63].................. .................................... 18 Bayer AG v. v. Stamatios Mouratidis, 2010 WL 219893 (May 21, 2010) [S-71]............................................. 18 Hornby v. TJX Companies, C ompanies, Inc., 87 U.S.P.Q.2d .S.P.Q.2d 1411 (T.T.A.B. (T.T.A.B. 2008) [S-75].......................................... [S-75].............................................18 ...18 In re Richard M. Hoefflin, 97 U.S.P U.S.P.Q.2d .Q.2d 1174 (T.T.A.B. (T.T.A.B. 2010) [S-81]....................................................... [S-81].......................... ............................. 18 Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d F.3d 1344 (Fed. Cir. 2011) [S-82]........................... 18 In re Spirits International, N.V., N.V., 563 F.3d 1347 (Fed. (Fed. Cir. 2009) [S-90]...................................................... [S-90]...................... ................................ 19 Guantanamera Cigar Co. v. Corporacion Habanos S.A., 729 F. Supp. 2d 246 (D.D.C. 2010) [S-93]......19 In re Jonathan Drew, Drew, Inc., 97 U.S.P.Q.2d .S.P.Q.2d 1640 (T.T.A.B. (T.T.A.B. 2011) [S-96]...................................... [S-96]........................................................ .................. 19 In re Joint Stock Company “Baik”, 80 U.S.P.Q.2d .S.P.Q.2d 1305 (T.T.A.B. (T.T.A.B. 2007) [S-100]...................................... [S-100].............................. ........ 19 In re Vertex Group LLC, 89 U.S.P.Q.2d .S.P.Q.2d 1694 (T.T.A.B. (T.T.A.B. 2009) [S-101]...................................................... [S-101]........... ........................................... . 19

LOSS OF TRADEMARK  R IGHTS IGHTS Bayer Co. v. v. United Drug Co., 272 F. F. 505 (S.D ( S.D.N.Y .N.Y. 1921) [274]........................................................ ......... 20 E. I. du Pont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975) [285] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 20  American Online Inc. v. v. AT&T Corp., 243 F.3d F.3d 812 (4th Cir. 2001) [291]................................................ [291]................................................ 20 Harley Davidson v. v. Grottanelli, 164 F.3d F.3d 806 (2d Cir. 1999) [299]................................................ ............. 20  TE-TA-MA Truth Truth Foundation v. v. World World Church of the Creator, 297 F.3d F.3d 662 (7th Cir. 2002) 2002) [302]....20 Silverman v. v. CBS, Inc., 870 F.2d F.2d 40 (2d Cir. 1989) [306]........................................... .................................... 21 ITC Ltd. v. v. Punchgini, 482 F.3d F.3d 135 (2d Cir. 2007) [311]............................................................................. 21 Clark & Freeman Corp. v. v. Heartland Co., Ltd., 811 F. Supp. 137 (S.D.N.Y (S.D.N.Y. 1993) [316].................. [316]........... ............. .......21 .21 Boston Duck Tours Tours v. v. Super Duck Tour, 531 F.3d F.3d 1 (1st Cir. 2008) [S-105]......................................... [S-105]............................................. .... 21  Welding  Welding Services, Inc. v. v. Forman, 509 F.3d F.3d 1351 (11th Cir. 2007) 2007) [S-107]................................................. 21 H-D Michigan v. v. Top Quality Services, 496 F.3d F.3d 755 (7th Cir. 2007) [S-108]........................................... 22 Miller’s Miller’s Ale House v. Boynton Carolina Ale House, 745 F. Supp. 2d 1359 (S. D. D. Fla. 2010) [S-110]... [S -110]... ..22 Crash Dummy Movie v. v. Mattel, Inc., 601 F.3d F.3d 1387 (Fed. Cir. 2010) [S-112]........................................... 22 Specht v. v. Google, Inc., 758 F. Supp. Supp. 2d 570 (N. ( N. D. D. Ill. 2010) [S-114].................................................... ......22 ...... 22 Grocery Outlet Inc. v. v. Albertson’s Albertson’s Inc., 497 F.3d F.3d 949 (9th Cir. 2007) [S-116]........................................... [S-116]....... .................................... 22  American Association for Justice Justice v. v. American Trial Lawyers’ Lawyers’ Association, 698 F. F. Supp. 2d 1129 (D. (D. Minn. 2010) [119].................................................... ........................................... ............................................ ................................................. ..... 22

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Eva’s Eva’s Bridal Ltd. v. v. Halanick Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011) [S-121]............................... [S-121]............................. .. 23 FreecycleSunnyvale v. v. Freecycle Network, 626 F.3d F.3d 509 (9th Cir. 2010) [S-124]...................................... 23

INFRINGEMENT E. & J. Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp. 457 (N. D. Cal. 1991) [336]................24 Banfi Products Corp. v. Kendall-Jackson Winery Ltd., 74 F. Supp. 2d 188 (E.D.N.Y. 1999) [343]........24 Mobil Oil Corp. v. v. Pegasus Petroleum Corp., 818 F.2d F.2d 254 (2d Cir. 1987) [363]...................................... 24 Blockbuster Entertainment Group v. v. Laylco, Inc., 869 F. Supp. 505 (E. D. Mich. 1994) [368].............. [368]........ ...... 24 Steele v. v. Bulova Watch Watch Co., 344 U.S. U.S. 280 (1952) [394].............................................................. .................... 25 McBee v. v. Delica, 417 F.3d F.3d 107 (1st Cir. 2005) 2005) [396].......................................................... ............................ 25 Mastercrafters Clock & Radio Co. v. Vacheron & Constantin–Le Coultre Watches, Inc., 221 F.2d 464 (2d Cir. 1995) [403]........................................................ ........................................... .......................................... 25 Munsingwear, Inc. v. v. Jockey International, 31 U.S.P.Q.2d .S.P.Q.2d 1146 (D. Minn. 1994) [405]............................ 25 Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084 (D.N.J. 1997) [408].................................................... ........................................... ........................................... ................. 25 Dreamwerks Productions, Productions, Inc. v. SKG Studio, 142 F.3d F.3d 1127 (9th Cir. 1998) [411]................................ [411]............................ .... 26  Attrezzi v. v. Maytag, 436 F.3d F.3d 32 (1st Cir. 2006) [414]................................................ [414]..................................................................................... ..................................... 26 Leelenau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d F.3d 504 (6th Cir. 2007) [S-127].......... [S-127].... ............. .............. .........26 ..26 Network Automation Inc. v. Advanced Systems Concepts Inc., 638 F.3d 1137 (9th Cir. 2011) [S-129] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 26 1-800 Contacts, Inc. v. v. Lens.com, Inc., 775 F. F. Supp. 2d 1151 (D. Utah 2010) [S-138]...... ............. ....... ............. ..........26 ...26 Sensient Technologies Technologies v. v. SensoryEffects, 613 F.3d F.3d 754 (8th Cir. 2010) [S-140]........................................ 26 Rescuecom Corp. v. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) [S-144]..................................................... . 27 Inwood Laboratories, Laboratories, Inc., v. v. Ives Laboratories, Inc., 456 U.S. U.S. 844 (1982) [418]...................................... [418]............... ....................... 27 Hard Rock Cafe Licensing Corp. v. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir. 1992) [423].... .27 Georgia Pacific v. v. Myers, 621 F.3d F.3d 771 (7th Cir. 2010) [S-146]........................................................ ............ 27 Georgia Pacific v. v. Von Drehle, 618 F.3d F.3d 441 (4th Cir. 2010) [S-146]..................... ..................................... 27  Vulcan Golf, LLC v. v. Google Inc., 552 F. F. Supp. 2d 752 (N. (N. D. D. Ill. 2008) [S-149]....................................... 27  Tiffany & Co. v. v. eBay, eBay, Inc., 600 F.3d F.3d 93 (2d Cir. 2010) [S-152].................................................................... 28 Gucci America, Inc. v. Frontline Processing, 721 F. Supp. 2d 228 (S.D.N.Y (S.D.N.Y.. 2010) [S-157]............... [S-157]........ ............28 .....28

S TATUTORY   TATUTORY  DEFENSES TO EFENSES  TO INFRINGEMENT Park ’N Fly, Fly, Inc. v. v. Dollar Park and Fly, Inc., 469 U.S. U.S. 189 (1985) [434].................................................... [434].................... ................................ 29 United States Shoe Corp. v. Brown Group Inc., 740 F. Supp. 196 (S.D.N.Y.) [449]..................................29 Car-Freshner Car-Freshner Corp. v. Johnson Johnson & Son Inc., 70 F.3d 267 (2d ( 2d Cir. 1995) [453]............................................ [453]................... ......................... 29 New Kids on the Block v. v. News America Publishing, 971 F.2d F.2d 302 (9th Cir. 1992) [462]...................... 29 In re Bose Corp., 580 F.3d F.3d 1240 (Fed. Cir. Cir. 2009) [S-162].............................................................. ............... 30 Pro Football, Inc. v. v. Harjo, 565 F.3d 880 (D (D.C. .C. Cir. 2009) [169]................................................ .................. 30  Au-Tomotive  Au-Tomotive Gold Inc. Inc. v. v. Volkswagen Volkswagen of America, Inc., 603 F.3d F.3d 1133 (9th Cir. 2010) 2010) [S-174]........ [S-174].... ......30 ..30

F ALSE DESIGNATION OF ORIGIN AND RIGIN  AND TRADE DRESS DC Comics v. Powers, 465 F. F. Supp. 843 (S.D.N.Y (S.D.N.Y. 1978) [476].................................................. .................. 31  Two  Two Pesos, Pesos, Inc. v. v. Taco Cabana, Inc., 505 U.S. U.S. 763 (1992) [481]................................................................. 31  Wal-Mart  Wal-Mart Stores, Inc. Inc. v. v. Samara Brothers, Inc., Inc., 529 U.S. U.S. 205 (2000) [489]................................................. 31  Tie Tech, Tech, Inc. v. v. Kinedyne Corp., 296 F.3d F.3d 778 (9th Cir. 2002) 2002) [496]........................................................ . 31  TrafFix Devices, Devices, Inc. v. v. Marketing Displays, Displays, Inc., 532 U.S. U.S. 23 (2001) [498]............................................... 32 Eco Manufacturing LLC v. v. Honeywell International Inc., 357 F.3d F.3d 649 (7th Cir. 2003) [504]...............32 [504].......... .....32  Au-Tomotive  Au-Tomotive Gold, Inc. Inc. v. v. Volkswagen Volkswagen of America, Inc., 457 F.3d F.3d 1062 (9th Cir. 2006) 2006) [506].............32 [506]........ .....32 Gibson Guitar Corp. v. v. Paul Reed Smith Guitars, 423 F.3d F.3d 539 (6th Cir. 2005) [515]................. [515].......... ............. ............32 ......32 Best Cellars Inc. v. Grape Finds at Dupont, Inc., 90 F. Supp. 2d 431 (S.D.N.Y. 2000) [519]...................32

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Best Cellars v. Wine Made Simple, 320 F. F. Supp. 2d 60 (S.D.N.Y (S.D.N.Y. 2003) [531]............................................ 33 Conopco, Inc. v. v. May Department Stores Co., 46 F.3d 1556 (Fed. Cir. Cir. 1994) [535]................................. [535]............................... .. 33 McNeil-PPC, inc. v. v. Guardian Drug Co., 984 F. F. Supp. 1066 (E. D. Mich. 1997) [541]........ .............. ....... .............33 ......33  America Online v. v. LCGM, 46 F. F. Supp. 2d 444 (E. D. D. Va. 1998) 1998) [543]..................................................... .. 33 Dastar Corp. v. v. Twentieth Century Fox Fox Film Corp., 539 U.S. 23 (2003) [545].......................................... 33 Bretford Manufacturing, Inc. v. Smith System Manufacturing Corp., 419 F.3d 576 (7th Cir. 2005) [551] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 34 Hammerton Inc. v. v. Heisterman, 2008 WL 2004327 (D. Utah 2008) [S-178]............................................. 34  Autodesk, Inc. Inc. v. v. Dassault Systèmes Solidworks Solidworks Corporation, 685 F. F. Supp. 2d 1023 (N. (N. D. D. Cal. 2009) [S-179].................................................... ............................................ ....................................................................................... ........................................... ........................ 34 Specialized Seating, Inc. v. Greenwich Industries, L.P., L.P., 616 F.3d 722 (7th Cir. 2010) [S-181]..... ............34 ....... .....34  Jay Franco Franco & Sons, Inc. Inc. v. v. Franek, 615 F.3d F.3d 855 (2d Cir. 2010) [S-184]......................................... [S-184]......................................... ............ 34 McNeil Nutritionals, LLC v. v. Heartland Sweeteners, LLC, 511 F.3d F.3d 350 (3d Cir. 2007) [S-194].............34 [S-194]........ .....34

 ADVERTISING Smith v. v. Chanel, Inc., 402 F.2d F.2d 562 (9th Cir. 1968) [557]............................................................ .................. 36  August Storck K.G. K.G. v. v. Nabisco, Inc., Inc., 59 F.3d F.3d 616 (7th Cir. 1995) [564]........................................ [564]........................................ ............. 36 Procter & Gamble Co. vv.. Amway Corp., 242 F.3d F.3d 539 (5th Cir. 2001) [571]............................ ................. 36 Coca-Cola Co. v. v. Tropicana Products, Inc., 690 F.2d F.2d 312 (2d Cir. 1982) [576].......................................... [576]........................ .................. 36 United Industries Corp. v. v. Clorox Co., 140 F.3d F.3d 1175 (8th Cir. 1998) [579]...................... ........................ 37 Schick Manufacturing, Inc. v. v. Gillette Co., 373 F. Supp. 2d 273 (D. Conn. 2005) [580]........................... 37 Clorox Co. Puerto Rico v. Proctor & Gamble Commercial Co., 228 F.3d 24 (1st Cir. 2000) [583]........37  Johnson & Johnson Johnson Vision Care, Inc. Inc. v. v. Ciba Vision Corp., 348 F. F. Supp. 2d 165 (S.D (S.D.N.Y .N.Y. 2004) [591] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 37 Polar Corp. v. v. Coca-Cola Co., 871 F. F. Supp. 1520 (D ( D. Mass. 1994) [592]..................................................... [592]................................ ..................... 38 Coors Brewing Co. v. v. Anheuser-Busch Co., 802 F. Supp. 965 (S.D.N.Y (S.D.N.Y. 1992) [593].............. [593]....... .............. ............. ..........38 ....38 McNeil-PPC, Inc. v. v. Pfizer Inc., 351 F. Supp. 2d 226 (S.D.N.Y (S.D.N.Y. 2005) [600]......................................... [600].............................................. ..... 38 Serbin v. v. Ziebart International Corp., 11 F.3d F.3d 1163 (3d Cir. 1993) [610]................................................... 38 Ortho Pharmaceutical Corp. v. Cosprophar, Cosprophar, Inc., 32 F.3d F.3d 690 (2d Cir. 1994) [611]................................. 38  Autodesk, Inc. Inc. v. v. Dassault Systèmes Solidworks Solidworks Corp., 685 F. F. Supp. 2d 1001 (N. (N. D. D. Cal. 2009) [S-197] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 38 Osmose, Inc. v. v. Viance, LLC, 612 F.3d 1298 (11th Cir. 2010) [S-199].......................................... .............. 38 Natural Answers v. v. SmithKline Beecham Corp., 529 F.3d F.3d 1325 (11th Cir. 2008) [S-203]........... [S-203].... ............. ............39 ......39 Famous Horse, Inc. v. v. 5th Avenue Photo, Photo, Inc., 624 F.3d F.3d 106 (2d Cir. 2010) [S-203]........ ............. ...... .............. ..........39 ...39

DILUTION  Ty Inc. Inc. v. v. Perryman, 306 F.3d F.3d 509 (7th Cir. 2002) 2002) [619]......................................................... ....................... 40  Visa International Service Association v. v. JSL Corp., 610 F.3d F.3d 1088 (9th Cir. 2010) 2010) [S-217]................ [S-217]......... ..........40 ...40 Louis Vuitton Malletier S.A. v. v. Haute Dig gity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) [S-220].... ........40 .... ....40 Starbucks Corp. v. v. Wolfe’s Borough Coffee, Inc., 588 F.3d F.3d 97 (2d Cir. 2009) [S-226].............................. [S -226].............................. 40  V Secret Catalogue, Inc. v. v. Moseley, Moseley, 605 F.3d F.3d 382 (6th Cir. 2010) 2010) [S-235]................................................. 40 Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 U.S.P.Q.2d 1111 (T.T.A.B. 2010) [S-240]......................41  The Hershey Co. v. v. Art Van Furniture, Furniture, Inc., 2008 WL 4724756 4724756 (E. D. D. Mich. 2008) [S-243].................. 41 Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 663 F.3d 1158 (9th Cir. 2011) [S-247]...........41

 AUTHORS’  AND PERFORMERS’ R IGHTS IGHTS Gilliam v. v. American Broadcasting Companies, Inc., 538 F.2d F.2d 14 (2d Cir. 1976) [662]............................. 42  Antidote International Films v. v. Bloomsbury Publishing PLC, 467 F. F. Supp. 2d 394 (S.D.N.Y (S.D.N.Y. 2006) [666]...................................................... ........................................... ........................................... .......................... 42 King v. v. Innovation Books, Books, 976 F.2d F.2d 824 (2d Cir. 1992) [669]................................................ ...................... 42

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Miramax Films Corp. v. Columbia Pictures Enterprises, 996 F. Supp. 294 (S.D.N.Y. 1998) [674]..........42  Allen v. v. National Video, 610 F. F. Supp. 612 (S.D (S.D.N.Y .N.Y. 1985) [677]........................................................... ...... 42 Midler v. v. Ford Motor Co., 849 F.2d F.2d 460 (9th Cir. 1988) [684]........................................................ .............. 43  White v. v. Samsung Electronics America, Inc., Inc., 971 F.2d F.2d 1395 (9th Cir. 1992) 1992) [688]................................... 43 Rogers v. v. Grimaldi, 875 F.2d F.2d 994 (2d Cir. 1989) [699]..................................... [699]..................................... ........................................... .. 43 O’Grady v. v. Twentieth Century Fox, Fox, 2003 WL 24174616 (E. D. Tex. 2003) [707].................................... 43 ETW Corp. v. v. Jireh Publishing, Inc., 332 F.3d F.3d 915 (6th Cir. 2003) [708]................................................... 43 Boston Athletic Association v. v. Sullivan, 867 F.2d 22 (1st Cir. 1989) [725]................................................. 44  WCVB-TV v. v. Boston Athletic Association, Association, 926 F.2d F.2d 42 (1st Cir. 1991) 1991) [734].............. [734]....... .............. ............. ............. .............. .........44 44 Facenda v. v. NFL, 542 F.3d F.3d 1007 (3d Cir. 2008) [S-253]............................................................ ...................... 44 C.B.C. Distribution and Marketing, Inc. v. Major League Baseball, 505 F.3d 818 (8th Cir. 2007) [S-256] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 44 Board of Supervisors for Louisiana State University v. v. Smack Apparel, 550 F.3d 465 (5th Cir. 2008) [S257]..................................................... ........................................... ............................................ ........................................................................ ............................ 44  American Needle, Inc. Inc. v. v. National Football Football League, 130 S. Ct. 2201 (2010) (2010) [S-259]................................ 44

INTERNET DOMAIN N AMES Sporty’s Sporty’s Farm L.L.C. v. Sportsman’s Sportsman’s Market, Inc., 202 F.3d F.3d 489 (2d Cir. 2000) [750].............................. 46 Lucas Nursery and Landscaping, Inc. v. v. Grosse, 359 F.3d F.3d 806 (6th Cir. 2004) [757].............. [757]....... .............. .............. .......... ...46 46 Harrods Ltd. v. v. Sixty Internet Domain Names, 302 F.3d F.3d 214 (4th Cir. 2002) [766]................................. 46 Cable News Network LP v. v. CNNews.com, 56 F. F. App’x 599 (4th Cir. 2003) [773]............... [773]......... ............. .............. ............46 .....46 Dial-A-Mattress Operating Corp. v Moakely, Moakely, WIPO Arbitration and Mediation Center Case No. D2005-0471 (July 1, 2005) [781]....................................................... ........................................... ..................... 46 Estate of Gorshin v. v. Martin, WIPO Arbitration and Mediation Center Case No. D2005-0803 (Oct. 31, 2005) [789].......................................................... ........................................... ........................................... ..... 47  The Orange Bowl Committee, Inc. Inc. v. v. Front and Center Tickets, Tickets, Inc. / Front Front and Center Entertainment, WIPO Arbitration and Mediation Center Case No. D2004-0947 (Jan. 20, 2005) [792] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 47 Deutsche Welle v. Diamondware Ltd., WIPO Arbitration and Mediation Center Case No. D2000-1202 (2001) [804]........................................................ ........................................... ............................................ ....................................................... ........... 47 Sallen v. Corinthians Licenciamentos LTDA, LTDA, 273 F.3d 14 (1st ( 1st Cir. 2001) [806]........................................ [806]............................ ............ 47 Dluhos v. v. Strasberg, 321 F.3d F.3d 365 (3d Cir. 2003) [807]............................................................................... .. 47 Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003) [810] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 47 Fagnelli Plumbing Co. v. Gillece Pluming & Heating, Inc., 2011 WL 693349 (W. D. Pa. 2011) [S-261]48 Southern Grouts & Mortars v. 3M Co., 575 F.3d F.3d 1235 (11th Cir. 2009) [S-267]....................................... [S-267].......... ............................. 48 DSPT International, Inc. v. v. Nahum, 624 F.3d F.3d 1213 (9th Cir. 2010) [S-270].............................................. 48 Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research, 527 F.3d F.3d 1045 (10th Cir. 2008) [S-277]........................................................ ........................................... ................................... 48 Southern Co. v. v. Dauben, Inc., 324 F. App’x 309 (5th Cir. 2009) [S-281].................................... ................ 48 Fields for Senate v. Toddles Inc., WIPO Arbitration and Mediation Center Case No. D2006-1510 (Mar. 14, 2007) [S-287].................................................... ............................................ ................................................................................... ....................................... 48 Hoteles Turísticos Unidos S.A. v. Jomar Technologies, WIPO Arbitration and Mediation Center Case No. D2008-0136 (Apr. 3, 2008) [S-291]...........................................................................................................48 Southern California Regional Rail Authority v. Arkow, WIPO Case No. D2008-0430 (May 12, 2008) [S-293].................................................... ............................................ ....................................................................................... ........................................... ........................ 49 First Baptist Church of Glenarden v. v. Jones, WIPO Arbitration and Mediation Center Case No. D2009-0022 (Feb. (Feb. 26, 2009) [S-293]...................................................... ........................................... ............... 49 Plan.net concept Spezialagentur fur Kommunication GmbH v. v. Yikilmaz, WIPO Arbitration and Mediation Center Case No. D2006-0082 (Mar. 24, 2006) [S-296]...............................................................49

6

 TRADEMARKS AS RADEMARKS  AS SPEECH San Francisco Arts & Athletics, Inc. Inc. v. v. United States Olympic Committee, 483 U.S. U.S. 522 (1987) [817] 50 Kussbaum v. v. Steppenwolf Productions, Inc. Inc. [828]................................................. ....................................... 50 Playboy Enterprises, Enterprises, Inc. v. v. Welles Welles [831]................................................................... ...................................... 50 Mutual of Omaha Insurance Co. v. v. Novak, 836 F.2d F.2d 397 (8th Cir. 1987) [838]....................... ................. 50 Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989) [843] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 50  Anheuser-Busch,  Anheuser-Busch, Inc. v. v. Balducci Publications [852]........................................................... .......................... 51  Yankee  Yankee Publishing [856]............................................................................. ........................................... ............. 51 MGM-Pathe MGM-Pathe Communications [858].................................................... ........................................... ................. 51 Mattel, Inc. v. Universal Music Music International [859]........................................ [859]........................................ ........................................... ..... 51 Mattel Inc. v. v. Walking Mountain Productions, Productions, 353 F.3d F.3d 792 (9th Cir. 2003) [868]................................... [868].................... ............... 51 MasterCard International Inc. v. Nader 2000 Primary Committee, Inc., 70 U.S.P.Q.2d 1046 (S.D.N.Y. 2004) [885].................................................... ........................................... ........................................... ................. 51 Planned Parenthood Paren thood Federation of o f America, America , Inc. v. v. Bucci, 42 U.S.P U.S.P.Q.2d .Q.2d 1430 (S.D.N.Y (S.D.N.Y.. 1997) [889]. [889 ].52 52  Jews for Jesus Jesus v. v. Brodsky, Brodsky, 993 F. F. Supp. 282 (D.N.J (D.N.J.. 1998) [892]......................................... .......................... 52  WHS Entertainment Ventures Ventures v. v. United Paperworkers Paperworkers International Union, Union, 977 F. F. Supp. 946 (M. D. D.  Tenn. 1998) 1998) [894]................................................. ............................................ ....................................................................................... ........................................... ........ 52 People for the Ethical Treatment of Animals v. v. Doughney, Doughney, 263 F.3d 359 (4th Cir. 2001) [896]......... ...52 Lamparello v. v. Falwell, 420 F.3d F.3d 309 (4th Cir. 2005) [904]............................................................. ................ 52  Toyota  Toyota Motor Sales U.S.A., U.S.A., Inc. v. v. Tabari, 610 F.3d F.3d 1171 (9th Cir. 2010) 2010) [S-300]..................................... 52  Anheuser-Busch  Anheuser-Busch v. v. VIP Products, 666 666 F. F. Supp. 2d 974 (E. D. D. Mo. 2008) 2008) [S-307]............ [S-307]..... .............. .............. .............. .......... ...53 53 Smith v. v. Wal-Mart Stores, 537 F F.. Supp. 2d 1302 (N. D. D. Ga. 2008) [S-308]................................................. [S-308]................................. ................ 53 Parks v. v. LaFace Records, 329 F.3d F.3d 437 (6th Cir. 2003) [S-313]................................................................. [S -313]................................................................. ... 53 E.S.S. Entertainment 2000, Inc. v. v. Rock Star Videos, Inc., 547 F.3d F.3d 1095 (9th Cir. 2008) [S-314]...... ...53 Protectmarriage.com v. v. Courage Campaign, 680 F. F. Supp. 2d 1225 (E. D. Cal. 2010) [S-321].................53

R EMEDIES EMEDIES Nova Wines, Inc. v. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N. D. Cal. 2006) [912]........ ............. ....... ......54 54 Home Box Office v. v. Showtime, 832 F.2d F.2d 1311 (2d Cir. 1987).................................................... ................. 54 Soltex Polymer Corp. v. v. Fortex Industries, Inc., 832 F.2d F.2d 1325 (2d Cir. 1987) [922]................................ [922].............................. .. 54 Perfect Fit Industries v. v. Acme Quilting Co., 646 F.2d F.2d 800 (2d Cir. 1981) [927]........................................ [927]............. ........................... 54 Nikon, Inc. v. v. Ikon Corp., 987 F.2d F.2d 91 (2d Cir. 1993) [928]................................................... ...................... 54 Gucci America, Inc. v. Daffy’s, s, Inc., 354 F.3d F.3d 228 (3d Cir. 2003) [929]................................................... ... 55  Taco Cabana International, Inc. Inc. v. v. Two Two Pesos, Pesos, Inc., 932 F.2d F.2d 1113 (5th Cir. 1991) 1991) [934]........................ 55 Banjo Buddies, Inc. v. Renosky, Renosky, 399 F.3d 168 (3d Cir. 2005) [937].............................................................. [937].............................. ................................ 55 Ross Cosmetics Distribution Centers v. United States, 34 U.S.P.Q.2d 1758 (Ct. Int’l Trade 1994) [988] ..................................... ............................................ ....................................................................................... ........................................... ........................................... ........ 55 K Mart Corp. v. v. Cartier, Inc., 486 U.S. U.S. 281 (1988) [992]...................................... [992]...................................... ......................................... 55 Bourdeau Brothers v. v. ITC, 444 F.3d F.3d 1317 (Fed. Cir. 2006) [996]................................................................ 55 North American Medical Corp. v. v. Axiom Worldwide, Inc., 552 F.3d F.3d 1211 (11th Cir. 2008) [S-325]... ..55 Nightingale Home Healthcare, Inc. v. v. Anodyne Therapy, LLC, 626 F.3d F.3d 958 (7th Cir. 2010) [S-328]. .55

7

HAT IS IS A  A TRADEMARK   TRADEMARK ?  W HAT

Cheney Brothers v. v. Doris Silk Corp., 35 F.2d 279 (2d Cir. 1929) [3]

Bonito Boats v. Thunder Craft Boats, 489 U.S. 141 (1989) [9]

Plaintiff Plaintiff was a producer producer of patterned patterned silk fabrics fabrics.. Each season, plaintiff plaintiff produced duced a numbe numberr of patt patter erns ns,, some some of   which would sell well on the th e market and some of of which which would would not. not. Defend Defendant ant copied plaintiff plaintiff ’s well-rece well-receive ived d patterns patterns and and sold sold them them at a disc discou ount nt,, there thereby  by  undercutting undercutting plaintiff plaintiff ’s prices. prices. Plaintiff  Plaintiff  asked the court to enjoin defendant from reproduc reproducing ing and sellin sellingg plaint plaintiff iff ’s patterns. terns. The court court declin declined, ed, expla explainin ining  g  that it had no constitutional authority to create what amounted to a quasi-property right.

Plai Plaint ntif ifff was a manu manufa fact ctur urer er of  boats. Defendant copied plaintiff ’s boathull design. design. Plaintiff Plaintiff asked asked the Court to to enjoin defendant defendant from producing copies of plaintiff plaintiff ’s boat hull, relying relying on a Florida statute prohibiting the unauthorized copy copyin ingg of boat boat hul hulls. ls. The The Court Court declined, finding that the federal patent statute preempted the Florida statute.

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) [5]

Stiff Stiffel el was was the the manu manufa fact cture urerr of a “pole “pole lamp” lamp” with with a distinc distinctiv tivee design design..  Although Stiffel had received design and utility patents for the lamp, those patents  were found to be invalid. Sears copied the lamp and sold it at a lower price. Stiffel asked the Court to enjoin Sears from sell selling ing its its copy copy of the lamp lamp.. EviEvidenc dencee showe showed d the the exis existe tenc ncee of some some consumer confusion as to the origin of  the lamp’ lamp’ss design. design. The court declined, declined, finding that state laws concerning unfair competition could not be used to enlarge the scope of the protection protection granted by a patent.

 The Trade-Mark Trade-Mark Cases, 100 U.S. U.S. 82 (1879) [13]

 The Court analyzed pre-Lanham Act tradem trademark ark statut statutes es and conclud concluded ed that that Congress’s power to make laws concerning trade tradema mark rkss did did not not stem stem from from its its power to grant patents and copyrights. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) [21]

 The court found that trademarks are inten intende ded d to prot protec ectt the the goodw goodwill ill of a busines business. s. The main main purpos purposee of tradetrademark protection, protection, according according to the court, is to prevent a business from passing off  its own goods as those made by another. Stork Restaurant, Inc. v. Sahati, 166 F.2d 348 (9th Cir. 1948) [22]

 Appellant operated a New York  nightclub known as “The Stork Club.”  Appellant’s  Appellant’s Stork Club was famous, having appear appeared ed in newspa newspaper per article articless as  well as a movie. Appellee operated a San Francisco nightclub with the same name.

8

 Appellee’s  Appellee’s club, however, however, was much smaller and less known than appellant’s club. Appellant asked the court to enjoin enjoin appellee from operating the San Francisco Stork Club. The court held than an injunction was appropriate, finding that appellee appellee had diluted the goodwill associated with with appellant appellant’’s Stork Club. Club. The court found that neither (1) a disparity in the respective respective sizes sizes of the clubs, clubs, nor (2) geographical distance, nor (3) the lack of  actual loss of business by appellant could insulate appellee from f rom liability.

 was a “news aggregator” service that gathered and republished plaintiffs’ recommend ommendatio ations ns.. Plaint Plaintiffs iffs asked asked the court to stop defendant from republishing plain plaintif tiffs’ fs’ recomm recommend endati ations ons.. The court court ruled for defend defendant ant,, finding finding the “hot “hot news news”” rule rule to be inap inappl plic icab able le.. Defendant was not free-riding on plaintiffs’ recommendat recommendations ions because because defendant was merely reporting that plaintiffs had made made such such recomm recommend endatio ations ns,, not selling those recommendations as defendant’s own.

Champion Spark Plug Co. v. v. Sanders, 331 U.S. 125 (1947) [27]

Custom Manufacturing v. Midway Services, Inc., 508 F.3d 641 (11th Cir. Cham Ch ampi pion on was was a manu manufa fact ctur urer er of  2007) [S-10] spark plugs plugs.. Sanders Sanders reconditioned reconditioned and and Cust Custom om was a desi design gner er of water ater reso resold ld used used Ch Cham ampi pion on spar sparkk plug plugss. meters meters.. Midway Midway managed managed apartme apartment nt Sander Sanders’ s’ss packagi packaging ng indicat indicated ed that that the buildi building ngss. Midw Midway ay hire hired d Custom Custom to spark plugs plugs were were reconditio reconditioned. ned. Cham- design water meters for Midway’s apartpion asked the Court to enjoin Sanders ment ment building buildings. s. Partway artway throug through h the from from selli selling ng the the reco recond ndit itio ioned ned spark  spark  design design proces process, s, Midway Midway fired fired Custom Custom plugs, arguing that Sanders was infring- and hired another firm to complete the ing Champion Champion’’s trademark. trademark. The Court Court design. design. The compl complete eted d water water meters meters decli declined ned,, findi finding ng that that tradem trademark ark law  law  bore bore Custo Custom’ m’ss trade tradema mark rk on intern internal al  would only prohibit other businesses components components.. Custom accused accused Midway  Midway  from from passi passing ng off off thei theirr own own goods goods as of infring infringing ing its its trade trademar mark. k. The court court Champion’ Champion’s. s. Since Sanders Sanders was was selling  ruled for Midway Midway, finding the trademark  trademark  genuine, genuine, albeit secondhand, secondhand, Champion Champion not to be be readily readily visible. visible. The court furspark plugs, no trademark infringement ther found that individuals likely to see had occurred. the trademark were unlikely to be purchasers of water meters. meters.  Associated Press v. v. All Headlines News Corp., 608 F. Supp. 2d 454 Kellogg Co. v. National Biscuit Co., (S.D.N.Y. 2009) [S-6] 305 U.S. 111 (1938) [44]

 The court reaffirmed reaffirm ed the existence of a caus causee of acti action on for misap misappr prop opriariation tion of “hot “hot news,” news,” even even if the misapmisappropr propria iate ted d news news is obta obtaine ined d thro throug ugh h Internet searches of plaintiff ’s website. website.

National Biscuit produced a breakfast cereal known as “shredded wheat.” Kellogg Kellogg produc produced ed a simila similarr cereal cereal and called called it by by the same same name. name. Nationa Nationall asked the Court to enjoin Kellogg from producing shredded wheat, arguing that Barclays Capital, Inc. v. Kellogg was infringing National’s trade Theflyonthewall.com, 2011 WL mark mark for for the the name name and shap shapee of the the 2437554 (2d Cir. 2011) [S-7] cereal. cereal. The Court Court declined, declined, finding finding the Plaint Plaintiffs iffs were were financi financial al firms that that name and shape shape of shredded shredded wheat wheat to regularly regularly issued recommendations recommendations con- have entered the public domain upon the cerning cerning the the stock stock market. market. Defendan Defendantt expiration expiration of a patent that had covered covered 9

the cereal. Kellogg was therefore free to produce shredded wheat so long as it refrained from practices that might create consumer confusion confusion as to the source of the cereal.

Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) [63]

Qualit Qualitex ex manufac manufacture tured d “pads” “pads” for use in dry-cle dry-cleani aning ng equipme equipment. nt. QualiQualitex’ tex’s pads had a distinc distinctiv tivee green-go green-gold ld color. color. Jacobson, Jacobson, a competi competitor tor to QualiQualitex, tex, made made dry-c dry-cle leani aning ng pads pads with with the the same color. color. Qualitex Qualitex sued Jacobs Jacobson on for trademark infringement, arguing that Jacboson boson had infring infringed ed Qualit Qualitex’ ex’ss tradetrademark for the green-gold color. Jacobson argued in response that a color in itself  cannot cannot act act as a trade trademar mark. k. The Court Court found that color, like coined words, can indicat indicatee the source source of a produc product. t. The Court reject rejected ed Jacob Jacobson son’’s argume arguments nts concerning (1) “color depletion” and (2) potential interference with function, noting that existing existing legal legal doctri doctrines nes could could deal with those problems. problems. Jacobson had therefore infringed Qualitex’ Qu alitex’ss trademark.

Coca-Cola Co. v. Koke Co. of   America, 254 U.S. U.S. 143 (1920) [49]

Koke oke prod produc uced ed a beve bevera rage ge that that resembled resembled Coca-Cola. Coca-Cola. Coca-Cola Coca-Cola asked asked the Court to enjoin Koke from making  its lookalik lookalikee product. product. Koke Koke argued argued that Coca Co ca-C -Col ola’ a’ss trad tradem emar arkk was was inv invalid alid because it deceived consumers as to the ingredie ingredients nts of of the drink drink.. (The orig original inal formula for Coke contained cocaine, but cocaine had been removed from the formula mula by the the time time of the laws lawsuit uit.) .) The Court found that the term “Coca-Cola” had acquir acquired ed second secondary ary meanin meaningg not withstanding any alleged deceptiveness concern concerning ing the the ingredien ingredients ts list. list. Koke Koke had had ther theref efore ore infri infringe nged d Co Coca ca-C -Cola ola’’s  Abercrombie & Fitch Co. v. v. Hunting trademark. World, Inc., 537 F.2d 4 (2d Cir. 1976) [78] Peaceable Planet, Inc. v. Ty, Inc. 362

 The court intorduced the “Abercrombie taxomony” taxomony” of trademark trademark candiPeace eaceab able le Plan Planet et manu manufa fact cture ured d a dates, dates, which consists of (1) generic, generic, (2) plus plushh-to toyy came camel, l, whic which h was was name named d descriptive, (3) suggestive, and (4) arbi“Nil “Niles es.” .” Some Sometim timee after after Pea Peace ceab able le trary or fanciful terms. Planet’s camel appeared on the market,  Ty,  Ty, the maker of “Beanie Babies” plush In re Application of Quik-Print Copy toys, began making its own version of  Shops, Inc., 616 F.2d 523 (C.C.P.A. Niles the the camel. camel. Peaceabl Peaceablee Planet Planet sued 1980) [82]  Ty for trademark infringement, arguing  Quik-Print sought to register “Quikthat Ty was unlawfully using the name Print” as a trademark for its same-day  “Niles “Niles”” in connec connection tion with with plushplush-to toy  y  printing printing service. service. The Patent Patent and and TradeTradecamels. Ty argued that “Niles” “Niles” could not mark Office refused to register the mark  be a trad tradem emar arkk by virtu virtuee of bein beingg a because because it was was merely descriptiv descriptive. e. The name. name. The Court Court found that that the the usual usual court affirmed the rejection, noting that reasons for prohibiting prohibiting the use of names “Quik-Print” immediately called to mind as trademarks did not apply, as “Niles” the idea of a fast printing service.  was being used in conjunction with a toy  camel, not with an individual who might go into busin business ess for for himself himself.. Ty had theref therefore ore infringe infringed d the “Niles “Niles”” tradetrademark. F.3d 986 (7th Cir. 2004) [52]

10

 American Waltham Waltham Watch Watch Co. v. v. United States Watch Co., 173 Mass. 85 (Mass. 1899) [87]

Stayart v. Yahoo! Inc., 623 F.3d 436 (7th Cir. 2010) [S-11]

Plaint Plaintiff iff was was a watch watch company company that that manu manufa fact cture ured d “Wal “Walth tham am Watch atches es.” .” Plai Plaint ntiff iff had had orig origin inal ally ly used used the the term term “Walt “Waltham ham”” only to design designate ate the geograph graphic ic orig origin in of its its watc watche hes, s, but the term “Waltham” had come to be associated ated with with plai plainti ntiff ff ’s watc watche hess thro throug ugh h longstanding use. Defendant was a competing watch company that also placed the term “Waltham” on its watch to indicate cate geograph geographic ic origin origin.. Plaint Plaintiff iff asked asked the court to enjoin defendant from displa playing ying the the term term “Wal “Walth tham am”” on its its  watches without some additional statement to distinguish defendant’s watches from plaintiff plaintiff’’s. Defendant Defendant argued argued that that plaint plaintiff iff should should not be allowed allowed to pre vent competitors from using “Waltham” “Waltham” for their own purposes. The court ruled for plai plaint ntiff iff,, findi finding ng that that defe defenda ndant nt should not be allowed to interfere with the the goodwi goodwill ll alrea already dy atta attach ched ed to the the “Waltham” “Waltham” label.

 Appellant was an animal anim al rights activits its. Appe Ap pell llee ee was was a sear search ch engi engine ne..  Appellant searched for her own name using appellant’s search engine and discovered that the results included pornography raphy. Appell Appellant ant accus accused ed appellee appellee of  false endorsement. endorsement. The court court ruled for for appell appellee, ee, finding finding appella appellant nt to have have no standing because appellant suffered no harm to commercial activity. activity.

Rock and Roll Hall Hall of Fame and and Museum v. Gentile Productions, 134 F.3d 749 (6th Cir. 1998) [96]

Gentile was a photographer whose  works included a poster featuring the Rock and Roll Hall of Fame and Museum. The Museum Museum asked asked the court to enjoin Gentile from selling the poster, arguing that Gentile was infringing the trademark inhering in the architecture of  the building building itself itself.. The court ruled for Gentile, finding that the Museum’s architecture tecture,, no matter matter how distinct distinctiv ive, e, did not serve as a source identifier identifier for a sep arate good or service. The dissent noted that that repr reprod oduc ucin ingg the the desi desiggn of the the Museum Museum in a two-d two-dime imensio nsional nal photophotograph was no different from reproducing  the distinctive distinctive shape of a Coke bottle in a two-dimensional medium.

11

In re Chippendales USA, 662 F.3d 1346 (Fed. Cir. 2010) [S-11]

Chippendales was an “exotic male” dancing group. group. Chippendales Chippendales sought sought to to regist register er the “Cuffs and Collar” Collar” trademark. The court found found the mark not not to be registrable because it lacked inherent distinct distinctiv ivene eness ss.. The court court found found the “Cuffs and Collar” mark to resemble the trademark associated with Playboy. Playboy. In re Vertex Group, LLC, 89 U.S.P.Q.2d (BNA) 1964 (T.T.A.B. 2009) [S-13]

 Vertex  Vertex sought to register the sound of an alarm alarm as a trad tradema emark. rk. The court court found found the the sound sound to be unreg unregis istra trable ble because it did not serve to identify Vertex as the manufacturer manufacturer of the alarm. Lahoti v. VeriCheck, 586 F.3d 1190 (9th Cir. 2009) [S-14]

 Appellee owned the trademark  “VeriCheck,” “VeriCheck,” which was used in conjunction with with check checking ing services services.. Appellant Appellant raised an issue as to whether “VeriCheck” was descriptive or suggestive. tive. The court court found that in in determindetermining whether a mark is descriptive, one must ask whether the mark immediately  conveys information about the underlying product or service.

end kitchen kitchen ranges. ranges. Viking offered red red Wolf Appliance v. v. Viking Range Corp., 686 F. Supp. 2d 878 (W. D. Wis. knobs as a styling option on its ranges.  Wolf  Wolf accused Viking of infringing its 2010) [S-15] tradema mark rk for red knobs knobs.. The court court  Wolf  Wolf was a manufacturer of high- trade end kitchen kitchen ranges. ranges. Wolf ’s ranges were were ruled for Wolf, applying a six-factor test etermi mine ne whet whethe herr Vik Viking ing was equipped with red knobs, for which Wolf  to deter unfairlyy benefit benefiting ing from from Wolf ’s design design held held a trademar trademarkk registra registratio tion. n. Viking  Viking  unfairl  was a competing manufacturer of high- element.

12

 WNERSHIP  AND USE O WNERSHIP AND

Bell v. Streetwise Records, Ltd., 640 F. Supp. 575 (D. Mass. 1986) [105]

Plaint Plaintiffs iffs were the members members of the band New Edition, which was essentially  a clone of the Jack Jackson son Five Five.. Plaint Plaintiffs iffs formed New Edition under the guidance of their their manage manager, r, Mauric Mauricee Starr. Starr. Starr Starr secured for plaintiffs a recording contract tract with with defend defendant ant record record compan companyy, under which plaintiffs’ first album was produced. produced. After New New Edition Edition became became a major success, plaintiffs fired Starr and opted for a recording contract with a different ferent compa company ny.. Plaint Plaintiffs iffs aske asked d the court to find that they owned the right to perform under the name “New Edition.”  The court ruled in their favor, finding  that plaintiffs had established established priority of  use and and that that,, alte alterna rnati tive vely ly,, plai plaint ntif iffs fs owned the “New Edition” mark because the the name name of the the band band was was assoc associa iate ted d  with plaintiffs’ identities. Robi v. Reed, 173 F.3d 736 (9th Cir. 1999) [109]

Plaintiff Plaintiff Martha Robi was the widow  of Paul Paul Robi, Robi, a member of the band The Platters. Platters. Plaintiff Plaintiff claimed claimed to have have inherinherited ownership ownership of the band’s band’s name upon her husband’ husband’ss death. death. Reed was was a member of The Platters, Platters, having founded the band band and contin continuall uallyy managed managed it ever ever since. since. Reed also claimed claimed owners ownership hip of  the band’ band’ss name. name. The court court ruled for for Reed, finding that he had a right to use the name by virtue of having having control of  the band’s product.

Estate of Francisco Coll-Monge v. v. Inner Peace Movement, 524 F.3d 1341 (D.C. Cir. 2008) [S-19]

 The court clarified that the “related companies” doctrine covers any individual or entity entity that controls controls the use of a trademark. trademark. The court found found that that formal corporate corporate control of the trademark trademark user  was not a prerequisite for asserting the doctrine. Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991) [123]

 Appellant was a clown performing  unde underr the the name name “Boz “Bozo o the the Clow Clown. n.””  Appellee operated a restaurant called “Bozo’s.” “Bozo’s.” Appellant opposed appellee’ appellee’ss registration registration of the “Bozo’s” “Bozo’s” trademark, arguing that appellee’s appellee’s use of the mark in connection with a single restaurant was not “use in commerce” under the Lanham Act. Act. The court ruled for appelle appellee, e, finding that “use in commerce” covers all commerce that can be regulated by  Congress. The court rejected appellant’s appellant’s argument that appellee should bear the burden of proving proving that some fraction fraction of  its its cust custom omer erss came came from from outs outsid idee the the state.

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Central Manufacturing Inc. v. Brett, 492 F.3d 876 (7th Cir. 2007) [S-21]

Brett Brett sold sold baseba baseball ll bats bats under under the “Ste “Steal alth th”” trad tradem emar ark, k, with with the the firs firstt recorded sale taking place in 1999. Central had evidently registered the “Stealth”

trademark for use in conjunction with base baseba balls lls.. Cent Central ral accu accuse sed d Brett Brett of  tradema trademark rk infringe infringement ment,, arguing arguing that baseballs and bats were related goods.  The court ruled for Brett, finding that Central had not produced sufficient evidence to show it had actually sold baseballs under the “Stealth” trademark.  American Express Co. v. v. Goetz, 515 F.3d 156 (2d Cir. 2008) [S-26]

Goetz was a consultant for an advertising agency. agency. Goetz devised devised the slogan “My Life, My Card” and suggested the slogan to to American American Express Express.. American American Express initially declined but adopted the slogan after consulting a different advertising agency agency.. Goetz accused accused American American Expr Expres esss of trad tradem emar arkk infri infringe ngemen ment, t, arguing that “My Life, My Card” was his trademark. trademark. The court court ruled for AmeriAmerican Express, finding that “My Life, My  Card” was not a trademark because it did not signify a connection connection with any particular product. Nextel Communications, Inc. v. Motorola, Inc., 91 U.S.P.Q.2d (BNA) 1393 [S-27]

than use itself. itself. The dissent dissent argued argued that appellant’ appellant’ss setting-up setting-up of the service was enou enough gh to supp support ort a findi finding ng of use use in commerce. International Bancorp, LLC v. Société des Bains de Mer et du Cercle des Etrangers à Monaco, 329 F.3d 359 (4th Cir. 2003) [S-30]

 Appellee was the owner of the Casi Casino no de Mo Mont ntee Carl Carlo o in Mo Mona naco co.. Despite having operated the casino since 1863, appellee had not registered a trademark for the casino in the United States.  Appellant operated numerous gambling   websites, many of which displayed images images of appell appellee’ ee’s casino casino.. Appell Appellee ee sued appella appellant nt for tradema trademark rk infring infringeement. The court ruled for appellee. The court found that American citizens traveled to the Casino de Monte Carlo, thus creati creating ng foreign foreign commer commerce ce within within the reach reach of the Lanh Lanham am Act. Act. The dissen dissentt argued that appellee was not entitled to relief because appellee had never actually  used the mark in commerce within the United States.

 Aktieselskabet AF 21. November November 2001 2001  v.  v. Fame Jeans Jeans Inc., 525 F.3d F.3d 8 (D.C.  The Board found a cell-phone ringCir. 2008) [S-35] tone was not a trademark because the ringt rington onee did not not signif signifyy a conn connec ecti tion on  Appellant was a Danish company   with the cell phone’s phone’s manufacturer. that sold jeans under the label “Jack &  Jones.”  Jones.” Appellant had extensive opera Aycock Engineering, Engineering, Inc. v. v. AirFlite, tions outside the United United States. States. Seeking  Inc., 90 U.S.P.Q.2d 1301 (Fed. Cir. to enter the American market, appellant 2009) [S-27] filed for registration registration of a “Jack “Jack & Jones” Jones”  Appellant had registered “AirFlite” “AirFlite” as tradem trademark ark in in Decemb December er of 2004. 2004. The a trademark for use in connection with Patent and Trademark Office, however, an “air “air taxi” taxi” servic service. e. Ap Appe pella llant nt had refused registration because appellee had entered entered into contracts contracts with air taxi oper- for an “intent to use” registeration of  ator atorss and and had had adve adverti rtise sed d its its servi service cess, the the same same mark mark in Janua anuary ry of 2004 004. though no flights had been completed.  Appellant challenged appellee’s appellee’s registra Appellee challenged the trademark, argu- tion of the mark, arguing arguing that its actual actual ing that appellant had not actually used it use of the mark predated appellee’ appellee’ss regin comm commer erce ce.. The The court court ruled ruled for for istration. istration. The court found found appellant appellant to to appellee, finding that appellant’s activities have stated a valid claim. The court held  were merely preparation for use rather that appellant’s alleged marketing activi-

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ties in the United States, combined with alleged public recognition recognition of appellant’ appellant’ss bran brand, d, was was suffi suffici cien entt to form a comcomplaint.

of the mark mark in a different different state state did not give petitioner a right to interfere with resp respon onde dent nt’’s esta establ blis ishe hed d used used of th emark in Kentucky.

Blue Bell, Inc. v. Farah  Thrifty Rent-a-Car System, Inc. v. v. Manufacturing Co., 508 F.2d 1260 (5th  Thrift Cars, Inc., 831 F.2d F.2d 1177 (1st Cir. 1975) [140] Cir. 1987) [163]

Blue Bell and Farah were competing  clothi clothing ng manufac manufactur turers ers that that had independen pendently tly concei conceive ved d of clothi clothing ng lines lines named named “Time “Time Out. Out.”” Blue Bell Bell,, in an appa appare rent nt act act of tok token use, use, atta attach ched ed “Time Out” tags to clothing sold under an existing line, shipping the clothing to cust custom omer erss who who had order ordered ed clot clothi hing  ng  from that line. Farah shipped articles of  “Time Out” clothing to its regional sales managers. managers. The court found found that neither neither Blue Bell’s token use nor Farah’s internal shipmen shipments ts were were suffici sufficient ent to establ establish ish priority priority of use. Rather, Rather, actual actual shipment shipment of goods to customers customers determined determined priority ity. The cou court rt ruled ruled in favor favor of Blue Blue Bell, Bell, findin findingg Blue Blue Bell Bell’’s “Time “Time Out” Out” clothing to have reached customers first.

 Thrifty Rent-a-Car was a rental-car prov rovide ider found oundeed in Oklahoma oma.  Thrifty’s business gradually expanded to other states. states. Thrift Cars was a rental-car busin busines esss oper operat ating ing in East East Taunt aunton on,, Massachusett Massachusetts. s. When Thrifty’ Thrifty’ss expanexpansion sion reac reache hed d Mass Massac achu huse sett ttss, Thrift Thrifty  y  argued that it was entitled to exclusive use use of the “Thri Thriffty” mark in East  Taunton. The court found Thrift to be protected by the Lanham Act’s “limited area area exce except ptio ion” n” by virt virtue ue of havi having  ng  operated continually in East Taunton. Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) [168]

Dawn Donut manufactured and sold donu donutt mix unde underr the the “Daw “Dawn” n” bran brand. d. United Drug Co. v. v. Theodore Hart’ Hart’ss Food Stor Stores es sold sold ready ready-t -too-ea eatt Rectanus Co., 248 U.S. 90 (1918) [158] donuts donuts under its own “Dawn” “Dawn” brand. Petit Petition ioner er sold medicin medicinal al product productss Dawn asked the court to enjoin Hart’s under under the name name “Rex. “Rex.”” Petit Petitione ioner’ r’ss from selling donuts under the “Dawn” product originated in Massachusetts, but trademark. trademark. The court court declined, declined, finding  its business gradually expanded to other little likelihood likelihood of consumer consumer confusion states. states. Respondent Respondent also also sold medicinal medicinal because donut mix and prepared donuts produc ducts under the name “Rex.” occupie occupied d distinct distinct marke markets ts.. The court court Respo espond nden entt’s prod produc ucts ts had had been been noted, however, that either party’s expaninvented invented Kentucky Kentucky,, before petitioner’ petitioner’ss sion into the other’s market could create “Rex” products became known in that a trademark dispute. stat state. e. When When peti petiti tione oner’ r’ss busi busine ness ss Emergency One v. American Fire expa expand nded ed into into Kent Kentuc ucky ky,, peti petiti tion oner er Eagle Engine, 332 F.3d 264 (4th Cir. argued that it was entitled to exclusive 2003) [169] use of the “Rex” trademark trademark in Kentucky  Kentucky   The court held that registration of a by virtue of its earlier initial initial use in Massachusetts achusetts.. The court court ruled for responrespon- mark creates a presumption that the regdent, finding that petitioner’s earlier use istrant is entitled to nationwide use of  the mark.

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EGISTRATION OF TRADEMARKS R EGISTRATION

Board approved the trademark, finding it not to be too offensive.

WarnerVision Entertainment, Inc. v. Empire of Carolina, Inc., 101 F.3d F.3d 259 (2d Cir. 1996) [193]

 WarnerVision  WarnerVision filed an intent-to-use registration for the “Rear Wheels” trademark. While the the registrati registration on was was pendpending, Empire to use “Rear Wheels” as a bran brand d for its own prod product uctss. Empir Empiree asked the court to enjoin WarnerVision from from using using the the “Rea “Rearr Wheel Wheels” s” mark mark,, arguing that Empire owned the mark by   virtue of having been the first to use the mark in commerce commerce.. The court declined, declined, finding that an injunction against the use of the mark would would prevent prevent WarnerViarnerVision from undertaking the use necessary  to perfect its registration.

In re White, 80 U.S.P.Q.2d 1654 (T.T.A.B. 2006) [224]

 White sought to register “Mohawk” as a trademark for cigarettes. The Board refused to register the mark because it falsely suggested a connection with the Moha Mo hawk wk tribe tribe of Nati Native ve Amer Americ ican anss.  White argued that “Mohawk” did not alwa always ys refer refer to the tribe tribe itse itself lf.. The Board, however, found that the alternative tive uses uses of the term were were noneth nonethele eless ss connected to Mohawk culture. NutraSweet Co. v. K&S Foods, Inc., 4 U.S.P.Q.2d U.S.P.Q.2d 1964 (T.T.A.B. (T.T.A.B. 1997) [232]

NutraSweet NutraSweet manufacture manufactured d and sold arti rtificial sweeteners under the “NutraSweet “NutraSweet”” trademark trademark.. K&S sought to register “Nutra Salt” as a trademark  for salt. NutraSweet NutraSweet opposed opposed the the regisregisBell & Howell sought to register sev- tratio tration, n, arguin arguingg that that K&S’ K&S’s propose proposed d eral eral mode modell numbe umbers rs as trad tradem emar arks ks.. trademark would create consumer confuKodak opposed the registration, registration, arguing  sion sion as to the dist distin inct ctio ion n betw betwee een n that that the the mode modell numbe numbers rs were were merel merely  y  NutraSweet’s NutraSweet’s products and K&S’s K&S’s.. The descriptive. The court allowed the regisregis- Board ruled for NutraSweet, finding that tration, finding that registration should K&S’ K&S’ss use use of the the prefi prefixx “Nut “Nutra” ra” may  be allowed allowed where where the existen existence ce of sec- lead to consumers to believe that “Nutra ondary meaning cannot be determined Salt” lt” pro products were produce uced by  until actual use of the mark has begun. NutraSweet. In re Bad Frog Brewery, Inc., 1999 Person’s Co., Ltd. v. Christman, 900 WL 149819 (T.T.A.B.) [204] F.2d 1565 (Fed. Cir. 1990) [243] Bad Frog Brewery filed for a registraPerson erson’’s was was a Japan apanese ese clot clothin hing  g  tion for a trademark trademark consisting consisting of a frog  retailer retailer that sold clothing in Japan Japan under making the middle-finger middle-finger gesture. gesture. The Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569 (Fed. Cir. 1993) [198]

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the “Person’ “Person’s” s” label. Christman, having   visited a Person’s store during a trip to  Japan, registered the “Person’ “Person’s” trademark in the United States and founded  what was essentially a clone of the Japanese “Person’ “Person’s” s” clothing line. line. When Person’s discovered Christman’s business, it sought sought the cancel cancellati lation on of Christm Christman an’’s trademark. trademark. The court court ruled for Christman, finding that Christman was entitled to use the mark by by virtue of having been the first to register and to use the mark  in the United United States States.. The court rejected rejected Person’s’ argument that Christman’s registration should be cancelled because of  his “bad faith” in copying Person’s’ business.

“ska “skaya ya”” suffix suffix did did not not unde undermin rminee the the geographic association. In re Quadrillion Publishing, Ltd., 2000 WL 1195470 (Aug. 9, 2000) [260]

Quad Quadri rill lliion soug sought ht to regi regist ster er “Bramle “Bramley” y” as a tradema trademark. rk. The Board Board found “Bramley” not to be registrable by   virtue of being primarily a surname.  Although “Bramley” had some meanings that were not surnames, the Board found the alternative meanings to be insufficient to show that Bramley was not primarily a surname.

First Niagara Niagar a Insurance v. v. First Niagara Financial, 476 F.3d 876 (Fed. Cir. 2007) [246]

In re Howard Leight Industries, LLC, 80 U.S.P.Q.2d U.S.P.Q.2d 1507 (T.T.A.B. (T.T.A.B. 2006) [265]

 Applicant sought to register a trademark mark for the the dist distin inct ctiv ivee shap shapee of its its earplugs. The Board refused registration, finding ng the the shap shapee to be a funct functio iona nall Plaint Plaintiff iff was was a Canadi Canadian an insuran insurance ce findi aspect ct of the the prod produc uctt that that had had once once comp compan anyy oper operat atin ingg unde underr the the name name aspe “First Niagara,” which had appeared on been covered by a patent. plaintiff’s advertisements in the United In re Gibson Guitar Corp., 61 States. Plaintiff sought s ought to prevent defen- U.S.P.Q.2d U.S.P.Q.2d 1948 (T.T.A.B. (T.T.A.B. 2001) [271] dant American company from registering  Gibson sought to register the shape “First Niagara” as a trademark in the guitar as as a tradem trademark ark.. The Board Board United United Stat States es.. The court court found found that that of a guitar plaintiff plaintiff was entitled entitled to oppose the regis- refused registration, finding the shape to affect ct the the sound sound of the the guita guitarr. The The trat tratio ion n by virt virtue ue of havi having ng used used the the affe Board pointe pointed d to Gibson Gibson’’s adverti advertisin sing  g  “Fir “First st Niag Niagar ara” a” mark mark in the the Unit United ed Board materials, which claimed that guitars with States. its distinctive shape had a less “muddy” In re Joint-Stock Company “Baik”, 80 sound sound than othe otherr guitars guitars.. The Board Board U.S.P.Q.2d U.S.P.Q.2d 1305 (T.T.A.B. (T.T.A.B. 2006) [248] found found “bette “betterr sound” sound” to establ establish ish the Baik was a Russian company selling  shape as functional even though “better Baikalskaya brand vodka. Baik sought to sound” is not readily quantifiable. regist register er “Baika “Baikalsk lskaya aya”” as a tradem trademark ark.. Compagnie Gervais Danone v.  The Board “Baikalskaya” not to be regisregis - Precision Formulations, LLC, 89 trable because it referred primarily to a U.S.P.Q.2d U.S.P.Q.2d 1251 (T.T.A.B. (T.T.A.B. 2009) [S-56] geographical geographical location. location. The Board noted  The court clarified the use of interthat “Baikalskaya” literally means “from Baikal” and that most American vodka national filing dates in establishing priorbuyers would recognize the term as a ref- ity. erence erence to Lake Lake Baika Baikal.l. The Board Board further ther foun found d that that the the addi additi tion on of the the

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 was misdescriptive and deceptive. The Boston Red Sox Baseball Club Boar Board d ruled ruled for for Baye Bayerr, find findin ingg that that Limited Partnership v. v. Sherman, Sher man, 88 U.S.P.Q.2d U.S.P.Q.2d 1581 (T.T.A.B. (T.T.A.B. 2008) [S-58] “Organic Aspirin” would likely lead consumers to believ believee the product product actual actually  ly  Sherma Sherman n sough soughtt to regi regist ster er “Sex “Sex sumers contained ned aspir aspirin. in. The Board Board furthe furtherr Rod” as a trademark for use in connec- contai found that that use use of the the term term “Aspi Aspirin rin”” tion tion wit with clot cloth hing ing. The The Red Sox Sox found opposed opposed the regist registrati ration, on, arguing arguing that that  would likely induce consumers to buy  “Sex Rod” was vulgar and would dispar- the product. age the baseball baseball team. team. The Board Board ruled Hornby v. TJX Companies, Inc., 87 for the Red Red Sox. The Board found “Sex “Sex U.S.P.Q.2d U.S.P.Q.2d 1411 (T.T.A.B. (T.T.A.B. 2008) [S-75] Rod” to be plainly vulgar by virtue of  Hornby was a model widely known being a sexual reference. The Board furby the name “Twiggy,” having become ther found that the intentional intentional similarity  similarity  prominent during the 1960s. 1960s. TJX sold a of the “Sex Rod” mark to the “Red “Red Sox” line line of child hildre ren n’s clot clothi hing ng unde underr its its mark would likely disparage the Red Sox. “Twiggy” “Twiggy” label. label. Hornby Hornby challe challenged nged  TJX’s  TJX’s registration for the “Twiggy” “Twiggy” In re Lebanese Arak Corp., 94 U.S.P.Q.2d U.S.P.Q.2d 1215 (T.T.A.B. (T.T.A.B. 2010) [S-63] mark, arguing that the mark falsely suggested a connect connection ion to her. her. The court court  Applicant sought to register “Kho- gested ruled for Hornb Hornbyy, find finding ing Hornb Hornbyy to ran” as a trademark to be used in con- ruled have mainta maintaine ined d public public recogn recogniti ition on of  nect nection ion wit with h wine. wine. “Kho “Khora ran” n” is an have name throug through h media media appear appearanc ances es..  Armenian term meaning “altar.” “altar.” The her name Paten Patentt and Trademar rademarkk Office Office refuse refused d  The court further found that buyers of  registration, registration, finding finding that use of the term children’s clothing were likely to be par“Khoran “Khoran”” in connec connectio tion n with with alcohol alcohol ents who had grown up during the 1960s  was likely to disparage Muslims. The and who were therefore likely to recogHor nby.. Board affirmed, finding that most Amer- nize “Twiggy” as a reference to Hornby ican ican cons consum umers ers woul would d be unlik unlikel elyy to In re Richard M. Hoefflin, 97 realize that “Khoran” was an Armenian U.S.P.Q.2d U.S.P.Q.2d 1174 (T.T.A.B. (T.T.A.B. 2010) [S-81] term term rath rather er than than a refe refere renc ncee to the the Hoefflin sought to register “Obama Koran. Koran. The dissen dissentt argued argued that that most most Pajama” and “Obama Bahama Pajamas”  American consumers would realize that as trademark trademarkss for pajamas. pajamas. The Board Board “Kho “Khora ran” n” was was a desi desiggnati nation on of the the refus refused ed to regi regist ster er the the mark mark beca becaus usee  wine’s  wine’s origin as opposed to a reference Hoefflin had failed to obtain President to the the Koran Koran.. The The disse dissent nt furt furthe herr Obama’s consent to use the trademark. argued argued that that the Islamic Islamic prohibit prohibition ion of   The court rejected Hoefflin’s argument alcoho alcoholic lic beverag beverages es would would reduce reduce the that “Obama” did not refer to any parlikelihood that Muslims would notice the ticula ticularr person, person, finding finding that that “Obama “Obama”” mark and take offense.  would immediately evoke a connection  with the president. Bayer AG v. Stamatios Mouratidis, 2010 WL 219893 (May 21, 2010) [S-71] Citigroup Inc. v. Capital City Bank  Moura uratidis soug ought to reg register Group, Inc., 637 F.3d 1344 (Fed. Cir. “Organic Aspirin” as a trademark for a 2011) [S-82] nutrit nutritiona ionall supple supplemen ment, t, which which did not Citigro Citigroup up argued argued that that Capital Capital City  City  actually actually contain contain aspirin. aspirin. Bayer Bayer opposed opposed Bank’ Bank’s use of the phrase phrase “City “City Bank” Bank” the regist registrat ration ion,, arguin arguingg that that the mark   was likely to cause confusion with

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“Citibank. “Citibank.”” The court ruled for Capita Capital,l, In re Jonathan Drew, Inc., 97 finding finding the differe difference nce betwee between n “Citi” “Citi” U.S.P.Q.2d U.S.P.Q.2d 1640 (T.T.A.B. (T.T.A.B. 2011) [S-96] and “City” sufficient to differentiate the Drew Drew soug sought ht to regi regist ster er “Kub “Kubaa banks from a consumer’s perspective. perspective. Kuba” Kuba” as a trade trademar markk for cigars cigars.. The Paten Patentt and Trademar rademarkk Office Office refuse refused d In re Spirits International, Inter national, N.V., N.V., 563 regi regist stra rati tion on,, find findin ingg the the mark mark to be F.3d 1347 (Fed. Cir. 2009) [S-90] deceptive deceptive.. The Board Board affirmed, affirmed, finding  finding  Spirits International sought to regis“Kuba” to be an obvious reference to ter “Moskovskaya” as a trademark for Cuba. The Board rejecte rejected d Drew’s Drew’s argu vodka. In Russian, “Moskovskaya” “Moskovskaya” ment ment that that “Kub “Kuba” a” coul could d have have othe otherr means “from Moscow.” Moscow.” The Patent and meanin meanings gs.. The Board Board found found that that the the  Trademark Office refused registration, meaning meaning of the term is to be determined finding the mark to be deceptive because from the perspective of a consumer. Spirits had conceded that “Moskovskaya” vodka was not made in In re Joint Stock Company “Baik”, 80 Moscow. Moscow. The court announced that the U.S.P.Q.2d U.S.P.Q.2d 1305 (T.T.A.B. (T.T.A.B. 2007) [Stest for deceptiveness was whether a sub- 100] stantial portion of the target audience, as as  The concurrence argued that “look  opposed to consumers in general, would and feel” should be a factor in determinbe misled by the mark. ing ing whet whethe herr a prop propos osed ed trad tradem emar ark  k  Guantanamera Cigar Co. v. Corporacion Habanos S.A., 729 F. F. Supp. 2d 246 (D.D.C. 2010) [S-93]

Guan Guanta tana name mera ra was was a ciga cigarr sell seller er based based in Florid Florida. a. Guanta Guantanam namera era sold sold cigars under the “Guantanamera” brand. Habanos was a Cuban cigar seller. seller. When Guantanamera tried to register “Guantana taname mera” ra” as a trad tradem emar ark, k, Haba Habanos nos opposed opposed the regist registrati ration, on, arguing arguing that that consumers would be deceived into thinking that the cigars were made in Guantanamo, tanamo, Cuba. The court court found a lack  of eviden evidence ce as to whethe whetherr a substa substanti ntial al population population of the target audience audience would in fact be deceived. deceived. The court remanded the the case case to the the Trade radema mark rk Trial rial and and  Appeal Board for additional findings.

should be denied registration for being  primarily primarily a surname. surname. The concurrenc concurrencee furt furthe herr argu argued ed that that trad tradem emar arks ks that that resemble surnames, but which are technically not surnames, should be denied registration in order to ensure that indi viduals can always use their own surnames for their businesses. In re Vertex Group LLC, 89 U.S.P.Q.2d U.S.P.Q.2d 1694 (T.T.A.B. (T.T.A.B. 2009) [S101]

 Vertex  Vertex sought to register the sound of an alarm alarm as a tradem trademark ark.. The Board Board found found the the sound sound to be unreg unregis istra trable ble because because it was a functional aspect of the product. product. The Board Board found that that Vertex Vertex had had phra phrase sed d its its appl applic icat atio ion n broa broadl dly  y  enough that allowing for the trademark   would deprive Vertex’s competitors of  sounds that could be used in alarms.

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IGHTS LOSS OF TRADEMARK  R IGHTS

Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) [274]

Bayer sold aspirin under the “Aspirin” Aspirin” trademark trademark.. Bayer asked asked the court to enjoin United Drug from selling  the the drug unde underr the same same name name.. The court found that “aspirin” had become a gener generic ic term. term. The court court note noted d that that Bayer Bayer had consist consistent ently ly referred referred to the drug only only as “asp “aspiri irin, n,”” suppl supplyi ying ng no generic name. E. I. du Pont de Nemours & Co. v.  Yoshida  Yoshida International, Inc., 393 F. F. Supp. 502 (E.D.N.Y. 1975) [285]

Du Pont produced non-stick coating  under the trademark “Teflon.” “Teflon.” Yoshida produ produce ced d zipp zipper erss unde underr the the “Eflo “Eflon” n” brand. Du Pont Pont sued Yoshida, Yoshida, arguing  arguing  that Yoshida’s “Eflon” brand infringed infringed Du Pont’ Pont’ss “Teflon” “Teflon” trademark. Yoshida argu argued ed that that “Tef “Teflo lon” n” had had beco become me a generic generic term. term. Both Both parties parties prod produce uced d surveys to support their respective position tionss. The The cour courtt foun found d the surv survey  ey  results to be ambiguous and ruled for Du Pont. Pont. The court noted that the party  asserting asserting generi g enericism cism bears the burden of  proving that assertion.

lar terms in connect connection ion with with AT&T’ AT&T’ss Internet services. services. AT&T AT&T argued that none none of the thre threee term termss coul could d be a trademark because all three were generic.  The court found “You “You Have Mail” and “IM” to be generic because they referred to aspect aspectss common common to online online service service..  The court, however, however, found the existence of a factual issue issue as to whether “Buddy  “Buddy  List” had become associated with AOL’s services in particular. The dissent argued that AOL’ AOL’ss phrase “You’ve “You’ve Got Mail” should be allowed to be a trademark. Harley Davidson v. Grottanelli, 164 F.3d 806 (2d Cir. 1999) [299]

Harley Davidson sued Grottanelli for trademark infringement, asking the court to stop Grottanelli from using the term “hog” in connection with motorcycles.  The court ruled for Grottanelli, finding  that “hog” referred to large motorcycles motorcycles in general. general. The court found found that that Harley  Davi Davidso dson n coul could d not not withd withdra raw w “hog” “hog” from the public domain so long as the term retained some generic meaning.  TE-TA-MA  TE-TA-MA Truth Foundation Foundation v. v. World Church of the Creator, 297 F.3d 662 (7th Cir. 2002) [302]

 The court found “World “World Church of  the Creator” to be a descriptive, rather than generic generic,, term. The court found found the term to refer specifically to the appellee, not to monotheistic religions in general.

 American Online Inc. v. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) [291]

 AOL claimed to own trademarks for the terms “Buddy List, “You Have Mail,” and “IM.” AOL argued that AT&T had infringed these trademarks by using simi-

20

Silverman v. CBS, Inc., 870 F.2d 40 (2d Cir. 1989) [306]

CBS owned the trademark for the “Amos Amos ‘n’ ‘n’ Andy” Andy” char charac acte ters rs,, but but the the characters had not been featured in any  entertainment programs for more than twenty twenty years. years. Silverman Silverman sought sought to proproduce a Broadway musical featuring Amos ‘n’ Andy. Andy. CBS asked the court to enjoin Silverman from using the characters. Sil verman argued that CBS had abandoned ab andoned the trademark for the characters through its long long perio period d of non-us non-use. e. The court court ruled for Silverman, finding that abandonment donment consisted consisted of a lack of intent intent to resume use of a mark within the the foreseeable able future future.. The court court furth further er found found that a trademark owner cannot overcome a find finding ing of aban abando donm nmen entt simpl simplyy by  alle allegi ging ng that it may may resum resumee use of the the mark mark at some some poin pointt in the the indef indefin inite ite future. ITC Ltd. v. Punchgini, 482 F.3d 135 (2d Cir. 2007) [311]

ITC operated an Indiana restaurant named “Bukhara” in New York City, but the the rest restau aura rant nt eve eventu ntually ally close losed. d. Punchgini then opened what was essentially tially a clone clone of ITC’s ITC’s Bukhar Bukharaa restaurestaurant, calling calling it the “Bukhara “Bukhara Grill.” Grill.” ITC asked the court to stop Punchgini from operating the Bukhara Grill, arguing that Punchgi Punchgini ni was was infring infringing ing ITC’ ITC’s tradetrademark for the term “Bukhara.” “Bukhara.” The court decl declin ined ed,, findi finding ng that that ITC ITC had had abanabandone doned d the mark mark throu hrough gh nonnon-us usee.  Although ITC had plans to open Bukhara Bukhara restaur restaurant antss around around the world, world, the court found that ITC had failed to prove concrete intent to open a Bukhara restaurant in the United States.

Clark & Freeman Cor p. v. v. Heartland Co., Ltd., 811 F. Supp. 137 (S.D.N.Y. 1993) [316]

Defendant had sold clothing under the “Heartland” “Heartland” label label since since 1985. Plaintiff tiff had had sold sold men men’s shoe shoess and and boot bootss under under its own “Heartl “Heartland and”” label label since since 1986. 1986. Plaint Plaintiff iff decide decided d to expan expand d its busines businesss to include include clothi clothing, ng, which which it planne planned d to sell sell under under the “Heartland “Heartland”” label. label. To this end, end, plaint plaintiff iff purchas purchased ed from Sears, Roebuck & Co. a “Heartland” trademark that Sears had used in connec connectio tion n with with women women’’s boots boots since since 1983. 1983. Plaint Plaintiff iff then then asserted asserted the the mark  mark  against against defenda defendant, nt, arguing arguing that that Sears’ Sears’ss prior prior use of the mark mark gave gave plaintiff plaintiff priority ority. The court ruled ruled for defendan defendants ts,, findi finding ng plain plaintif tifff to have have acqu acquir ired ed the the mark through through assignmen assignmentt in gross. gross. The court found that Sears’s women’s boots  were not sufficiently similar to plaintiff ’s clothing line to allow for a transfer of  goodwill. Boston Duck Tours v. Super Duck   Tour,  Tour, 531 F.3d F.3d 1 (1st Cir. 2008) 2008) [S-105]

 Appellant and appellee were competing providers providers of amphibious amphibious sightseeing  sightseeing  tours tours.. Appella Appellant nt accuse accused d appelle appelleee of  tradema trademark rk infringe infringement ment,, arguing arguing that appell appellee’ ee’s use of the term “duck “duck tour” tour”  would confuse consumers. Appellee argued that “duck tour” was a generic term. The court ruled ruled for appelle appellee, e, findfinding no adeq adequa uate te alte alterna rnati tive ve to “duc “duck  k  tour” tour” for descri describing bing the types types of tours tours offered by the parties.

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Welding Services, Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007) [S-107]

 Welding  Welding Services trademark for “Welding Services, Inc.” had been found to be generic. generic. Welding Services Services argued, argued, howe howevver, er, that that the the abbr abbrev evia iati tion on of its its name, “WSI,” was nonetheless independently protectable protectable as a tradema trademark. rk. The

court court disagree disagreed, d, findin findingg that that Welding  elding  Services had been using “WSI” as a reference to the generic name rather than a trademark itself.

the mark mark.. The court court ruled ruled for for defendefendant, dant, finding finding defenda defendant’ nt’s evide evidence nce to show that it was actively developing a line of “Crash Dummies” toys.

H-D Michigan v. Top Quality Services, 496 F.3d 755 (7th Cir. 2007) [S-108]

Specht v. Google, Inc., 758 F. Supp. 2d 570 (N. D. Ill. 2010) [S-114]

Google Google develo developed ped and distribu distributed ted the Android operating system for mobile phones. Specht had registered “Android Data” as a trademark for a software business ness,, thou though gh the the busi busine ness ss had had been been defunct for for several several years. years. Spech argued argued that the trademark had not been abandone doned d beca becaus usee it had had been been sold sold to anot anothe herr party party.. The court court,, howe howevver, er, found that abandonment had taken place beca becaus usee the the buyer buyer took took no acti action on to revive the business for three years after the purchase.

Plaintiff Plaintiff was a corporate affiliate affiliate of  the HarleyHarley-Dav Davids idson on motorcy motorcycle cle company. pany. Defendant was a motorcycle club. Defendant Defendant organized a cruise for motorcycle enthusiasts, calling the event “Hogs on the High Seas” and seeking to register the the name name as a trad tradem emar ark. k. Plai Plaint ntif iff  f  opposed defendant’s trademark registration. The court ruled for plainti plaintiff, ff, findfinding the term “Hog” not to be generic  with respect to motorcycle clubs. Miller’s Ale House v. Boynton Carolina Ale House, 745 F. Supp. 2d 1359 (S. D. Fla. 2010) [S-110]

Miller’s Ale House had tried to register “Ale “Ale House” House” as a tradema trademark. rk. That registration failed when the Patent and  Trademark Office found the term to be generic generic.. Miller Miller subse subseque quentl ntlyy accuse accused d Boynton Boynton of infringing infringing the “Ale House” trademark, arguing that “Ale House” had become non-generic through increased increased recognition recognition of Miller’ Miller’ss businesses businesses.. The court court ruled ruled for for Boyn Boynto ton, n, findi finding ng that that Mill Miller er did did not not produ produce ce suffic sufficie ient nt evievidence dence to show show that that “Ale House” House” had become associated with Miller’s in particular. Crash Dummy Movie v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010) [S-112]

Defendant Defendant registered registered “Crash Dummies” as a trademark for toys. toys. The registration eventually lapsed because of nonuse. use. Plaint Plaintiff iff subsequ subsequent ently ly sough soughtt to regist register er the “Crash “Crash Dummie Dummies” s” for its own own purpo purposes ses.. Defe Defend ndan antt oppos opposed ed plai plaint ntif ifff ’s regi regist stra rati tion on,, argu arguin ingg that that defenda defendant nt had not actual actually ly abandon abandoned ed

Grocery Outlet Inc. v. v. Albertson’s Inc., 497 F.3d 949 (9th Cir. 2007) [S116]

Member Memberss of the court disagree disagreed d as to whethe whetherr the the stan standa dard rd of proof proof for for abandonment abandonment was preponderance preponderance of the eviden evidence ce or clear clear and convi convincin ncingg evidence.  American Association for Justice v.  American Trial Trial Lawyers’ Association, 698 F. Supp. 2d 1129 (D. Minn. 2010) [119]

Plaintiff Plaintiff was a lawyers’ organization organization formerly formerly called called “The Trial rial Lawye Lawyers rs of   America.” After plaintiff changed its name, defendant began using plaintiff’s old name name.. Plaint Plaintiff iff asked asked the court court to to stop stop defen defenda dant nt from from usin usingg the the name name.. Defe Defend ndan antt argu argued ed that that plai plaint ntif ifff had had abandoned abandoned the the name. name. The court court ruled for plaint plaintiff, iff, finding finding that that plaint plaintiff iff had not not aband abandone oned d the mark mark.. The cour courtt noted that plaintiff plaintiff continued continued to notify  the public public of its former name after after the name change.

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Eva’s Bridal Ltd. v. Halanick  Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011) [S-121]

FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010) [S-124]

Plaintiff Plaintiff established established a wedding business ness under under the the name name “Eva “Eva’’s Brida Bridal. l.”” Plaint Plaintiff iff licens licensed ed the “Eva’ “Eva’ss Bridal” Bridal” to defendant, which operated its own wedding business. business. When the license expired, defendant continued to use the “Eva’s Bridal” name. name. Plaintiff Plaintiff asked asked the court to enjo enjoin in defe defend ndan antt from from usin usingg the the name. name. The court court ruled for defen defendan dant, t, finding plaintiff plaintiff to have abandoned abandoned the mark mark throu through gh nake naked d licen licensi sing ng.. The court noted that the plaintiff plaintiff placed placed no meaningful limitations on how defendant should operate its business.

 Appellant and appellee were organizati zation on prom promot oting ing “fre “freec ecyc yclin ling, g,”” the the donation donation of unwanted unwanted goods for continued use use by other others. s. Appellee Appellee allo allowe wed d appellant appellant to describe itself as a “freecyclin cling” g” organ organiz izat atio ion. n. Appel Appella lant nt and and appellee appellee subsequently subsequently disputed the ownersh ership ip of the “free freecy cycl clin ingg” nam name.  Appellee argued that appellant had abandoned the mark through naked licensing.  The court ruled for appellee, finding that appellant exercised no meaningful control over the definition of “freecycling.” “freecycling.”

23

INFRINGEMENT

E. & J. Gallo Winer y v. v. Consorzio del Gallo Nero, 782 F. Supp. 457 (N. D. Cal. 1991) [336]

Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) [363]

Plai Plaint ntiff iff was was an Amer Americ ican an wine winery  ry  that produced and sold wine under the “Gallo” label. label. Defendant was was an Italian  winery that produced wine under the label “Consorzio del Gallo Nero.” Plaintiff claimed that that defendant defendant was infringing plai plaint ntiff’s iff’s trad tradem emar ark. k. The court court ruled for plaint plaintiff, iff, finding finding defendan defendant’ t’ss use of the term “Gallo” to create create a likelilikelihood of of confusi confusion. on. Defenda Defendant nt argue argued d that it used “Gallo” only as a part of  “Gallo Nero,” but the court found that  American consumers consu mers would most readily  r eadily  iden identi tify fy “Gal “Gallo lo”” as an indi indica cato torr of  source.

Mobill sold Mobi sold petr petrol oleu eum m prod produc ucts ts unde underr its its “fly “flyin ingg hors horse” e” trad tradem emar ark, k,  which was intended to represent Pegasus sus, the the myth mythic ical al flyi flying ng hors horsee fro from Greek mythology mythology.. Pegasus Pegasus Petrole Petroleum um sold petroleum products under the trademark “Pegasus “Pegasus.” .” Mobil asked asked the court to stop Pegasus from using the “Pegasus” tradema trademark, rk, arguing arguing that use of the term “Pegasus” infringed Mobil’s “flying  horse” trademark. trademark. The court court ruled for Mobil, finding that the word “Pegasus”  was sufficiently evocative evocative of a “flying  horse” image to create a likelihood of  confusion. confusion. The court further further found that that the the use of the the “Pega “Pegasus sus”” name name might might Banfi Products Cor p. v. v. Kendallgive Pegasus an unfair advantage in solic Jackson Winery Winery Ltd., 74 F. F. Supp. 2d itin itingg new new busi busine ness ss part partne ners rs,, even even if  188 (E.D.N.Y. 1999) [343] those those partners partners event eventual ually ly realiz realized ed that that Banfi sold wine under the label “Col- Pegasus and Mobil were different comdi-Sass di-Sassi.i.”” Kendal Kendall-J l-Jack ackson son sold sold wine panies. under the label “Robert Pepi Colline di v. Sassi. Sassi.”” Banfi Banfi asked asked the court court to stop stop Blockbuster Entertainment Group v. Laylco, Inc., 869 F. Supp. 505 (E. D. Kendall-Jackson from using the “Robert Pepi Colline di Sassi” mark, arguing that Mich. 1994) [368] the mark infringed Banfi’s “Col-di-Sassi” Plaintiff Plaintiff operated operated the “Blockbuster” “Blockbuster” mark. The court ruled for Kendall-JackKendall-Jack- chain of video rental stores. stores. Defendant Defendant son. Applying Applying the Polaroid  factors, the operated the “Video Busters” chain of  court found the wines to target distinct  video rental stores. Plaintiff argued that market segments, so that consumer con- “Video “Video Buster Busters” s” infringe infringed d the “Block“Blockfusion was unlikely. busters” busters” trademar trademark. k. Defendant Defendant argued argued that that no infring infringeme ement nt was taking taking place place because because customers customers were unlikely unlikely to confuse a Video Busters store with a Block24

buster buster store store at at the time time of of rental. rental. The Mastercrafters Clock & Radio Co. v. v. court ruled for plaintiff, finding that the  Vacheron  Vacheron & Constantin–Le Coultre similarity similarity of “Video “Video Busters” to “Block- Watches, Inc., 221 F.2d 464 (2d Cir. buste buster” r” was was like likely ly to help help defen defenda dant nt 1995) [403] attract customers.  Vacheron  Vacheron sold the “Atmos” clock,  which had a distinctive design. MasterSteele v. Bulova Watch Co., 344 U.S. crafters sold a lookalike clock at a signifi280 (1952) [394] cantly lower price. Vacheron Vacheron argued that that Bulo Bulovva man manufac ufactu ture red d and and sold sold Master Mastercra crafte fters rs was was committ committing ing tradetrade watches under the “Bulova” trademark. mark infringement by selling the lookaSteele discovered that “Bulova” had not lik like clock clockss. The The cour courtt ruled ruled for for been registered as a trademark in Mexico,  Vacheron,  Vacheron, finding that customers would file filed d a Mex Mexican ican regi regist stra rati tion on for for the the be inclined to buy Mastercrafters’ clock  “Bulova” trademark and began producing ersatz ersatz Bulov Bulovaa watch watches es in Mexico Mexico.. in order to get “luxury design” at a low  price. Some of Steele’s Steele’s “Bulova” watches were resold in the United States. States. Bulova asked Munsingwear, Inc. v. Jockey the court to stop Steele from selling his International, 31 U.S.P.Q.2d 1146 (D.  watches under the “Bulova” name. Minn. 1994) [405] Steele argued that the court had no jurisMunsingwear manufactured and sold diction over his commercial activities in “horizontal “horizontal fly” fly” briefs briefs for men. Jockey  Jockey  Mexico Mexico.. The court court ruled ruled for Bulov Bulova, a, sold similar similar briefs. briefs. Munsingwear Munsingwear asked asked findi finding ng the the resal resalee of Stee Steele le’’s watc watche hess the court to stop Jockey from selling its  within the United States to be trademark  briefs, arguing that Jockey was infringing  infringement. its trademark for the horizontal fly. fly. The McBee v. Delica, 417 F.3d 107 (1st Cir. 2005) [396]

McBee was a prominent jazz musician in the the United States States.. Delica was was a  Japanese clothing company. company. Delica produced duced a clot clothi hing ng line line unde underr the the labe labell “Cecil McBee Bee” but but never soug ought McBee’ McBee’s permissio permission n to use the name. name. Delica operated a website that advertised “Cecil McBee” clothing, but the website did not allow allow America American n custom customers ers to make purchases. McBee asked asked the court to enjoin access to Delica’s website from  within the United States. The court found found itself itself to lack lack jurisdi jurisdicti ction, on, noting  noting  that the mere display of Delica’s Delica’s clothing  on a website had no “substantial effect” on commerce within the United States.  The court found that something more than display, such as the ability to make online purchases, would have been necessary to support jurisdiction.

court ruled for Jockey Jockey.. The court found the respective products to be sufficiently  differentiate differentiated d through through packaging packaging.. The court further found that since underwear is normally not visible during wear, there  was little chance that one brand would be confused for the other during use. Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084 (D.N.J. 1997) [408]

 The Harlem Wizards were a “show  basketball basketball”” team. The Washing Washington ton Bullets, an NBA team, sought to change its name to “Washingt “Washington on Wizards.” Wizards.” Harlem argu argued ed that that “Was “Washi hing ngto ton n Wiza Wizard rds” s”  would infringe the “Harlem Wizards” tradem trademark ark.. The court court ruled ruled for NBA, NBA, finding show basketball and competitive baske basketba tball ll to occupy occupy distin distinct ct markets markets,,

25

such that there there was little chance chance of con- Network Automation Inc. v. sumer confusion.  Advanced Systems Systems Concepts Inc., 638 F.3d 1137 (9th Cir. 2011) [S-129] Dreamwerks Productions, Inc. v. v. Plaintiff Plaintiff sold an enterprise enterprise software product called “Auto-Mate.” Auto-Mate.” Defendant sold a competing product called “Active Appellant was an organizer of sci-fi Batch.” Batch.” Defendant Defendant advertised advertised ActiveActiveconventions. conventions. Appellee operated DreamBatch on search search engines, engines, using “Auto “Auto- Works  Works Studios. Appellee accused appelMate” as a trigger term for its sponsored lant infringing appellee’s trademark for links. links. Plaintiff Plaintiff asked asked the court court to enjoin enjoin “Dream “DreamW Works. orks.”” The court court ruled ruled for defenda defendant nt from using using plainti plaintiff ff ’s tradetradeappell appellee, ee, finding finding that that consume consumers rs were were mark as a trigger term. term. The court court ruled likely to believe that Dreamwerks was a for defend defendant ant,, finding finding insuffic insufficien ientt evidivision of DreamWorks DreamWorks Studios. dence dence to support support an an injunc injunctio tion. n. The  Attrezzi v. v. Maytag, 436 F.3d F.3d 32 (1st court court depa departe rted d from from relia relianc ncee on the the Cir. 2006) [414] “Internet “Internet troika” of trademark trademark infringe Appellant was a retail store in ment factors. Portsmouth, Portsmouth, New Hampshire, Hampshire, operating  operating  1-800 Contacts, Inc. v. Lens.com, under the name “Attrezzi.” “Attrezzi.” Appellee was Inc., 775 F. Supp. 2d 1151 (D. Utah a manufacturer manufacturer of household household appliances appliances.. 2010) [S-138]  Appellee wanted to sell a product line  The court expressed skepticism that under the name “Attrezzi” and sought to using a competitor’s trademark as a “trigregi regist ster er “Attr Attrez ezzi zi”” as a trad tradem emar ark. k. ger term” for one’s own goods can con Appellant opposed oppo sed the registration. The stitute trademark infringement. court ruled for appellant, appellant, finding a likelilikelihood hood of cons consum umer er conf confus usio ion. n. The The Sensient Technologies v. court court poin pointe ted d out out that that appel appella lant nt,, like like SensoryEffects, 613 F.3d 754 (8th Cir. appellee, sold household appliances and 2010) [S-140] that both parties targeted high-end cusPlaintiff Plaintiff sold industrial food-flavorfood-flavortomers. ing equipment under the “Sensient FlaSKG Studio, 142 F.3d 1127 (9th Cir. 1998) [411]

Leelenau Wine Cellars, Ltd. v. Black  & Red, Inc., 502 F.3d 504 (6th Cir. 2007) [S-127]

Plaint Plaintiff iff produce produced d wine wine under under the brand “Leelenau “Leelenau Cellars. Cellars.”” Defendant Defendant produced wine under the brand “Chateau de Leelanau Vineyard.” Plaintiff asked asked the court to enjoin defendant defendant from using “Leelenau “Leelenau”” as part of defendant’s dant’s brand name. name. The court ruled for defenda defendant, nt, finding finding plaint plaintiff iff ’s survey survey to be flawed.

 vors” trademark. Defendant sold a comcom peting peting system system under under the “Senso “SensoryFlaryFla vors” trademark. Plaintiff accused defenda defendant nt of tradema trademark rk infringe infringemen ment, t, poin pointin tingg out that that defe defenda ndant nt had propromoted moted its produc productt to potenti potential al buyers buyers.. None of the potential potential buyers, buyers, however however,, became defendant’s defendant’s customer. customer. The court ruled for defendant, defendant, finding that promotion of goods without without actual delivery delivery of  the the goods goods did not not const constitu itute te use of a trademark in commerce.

26

ment. ment. The court court annou announce nced d that the standard for secondary liability was willful blind blindne ness ss.. The The court court ruled ruled for for  The court found that the use of  ful trade tradema mark rkss as sear search ch engi engine ne “trigg “trigger er appellee, finding insufficient evidence to terms” terms” could could cons consti titu tute te use in comcom- show that appellee had enough knowledge of counterfeitin counterfeitingg to support a findmerce. ing a willful blindness. Inwood Laboratories, Inc., v. Ives Georgia Pacific v. Myers, 621 F.3d 771 Laboratories, Inc., 456 U.S. 844 (1982) (7th Cir. 2010) [S-146] [418] Georgia Pacific produced a propriIves Ives was the owner of a patent on a drug, which it sold under the trademark  etary paper towel dispenser and towels “Cyclospasmo “Cyclospasmol.” l.” Ives sold the the drug in designed to be used with the dispenser. Myers produc produced ed “gener “generic” ic” towe towels ls that that blue capsules capsules.. After the the patent patent expired, expired, Myers Pacific’s Inwoo Inwood d began began produc producin ingg the the gener generic ic  were compatible with Georgia Pacific’s dispense nser. r. Geor Georgi giaa Pacif Pacific ic accu accused sed  version of Cyclospasmol, selling the dispe Myers of contrib contributo utory ry infring infringeme ement nt of  generic product in similar blue capsules. Myers Some pharmacists subsequently “passed Georgia Pacific’s trademark, arguing that Myers’ s’ss gene generic ric towe towels ls were were like likely ly to off ” the generic drug as the trademarked trademarked Myer  version. Ives sued Inwood for trade- cause consumer confusion as to the oripaper towels towels.. The court ruled ruled mark infringement, arguing that Inwood Inwood gin of the paper finding no likelihood likelihood of con was secondary liable because Inwood’s Inwood’s for Myers, finding court noted noted that that restroom restroom lookalike capsules facilitated passing-off. fusion. The court operators ors commonl commonlyy loaded loaded “gener “generic” ic”  The Court ruled for Inwood, finding  operat Inwood to have done nothing to encour- paper towels into branded dispensers. Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) [S-144]

age pharmacists to engage in passing-off.  The Court found that similarity of the capsules alone was insufficient to support secondary liability, as capsule color faci facilit litat ated ed identi identifi fica cati tion on of the the drug drug.  The Court further found that Inwood’s Inwood’s advertising materials could not be fairly  read to suggest that pharmacists should engage in passing-off. Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir. 1992) [423]

Georgia Pacific v. Von Drehle, 618 F.3d 441 (4th Cir. 2010) [S-146]

 As in  Myers , Georgia Pacific accused a manufacturer manufacturer of generic generic paper towels for contrib contributory utory infringeme infringement nt of GeorGeorgia Pacific’ Pacific’ss trademark. The court found that it was possible for restroom users to be conf confus used ed as to the sour source ce of the the paper paper towe towels ls in Georgi Georgiaa Pacifi Pacific’ c’ss dispensers.

 Vulcan Golf, Golf, LLC v. v. Google Inc., 552 552 F. Supp. 2d 752 (N. D. Ill. 2008) [S Appellant was a licensed vendor of  149] “Hard “Hard Rock Rock Cafe” Cafe” appar apparel. el. Appell Appellee ee  Vulcan Golf operated a website in operated a flea market, at which numerconnection with its business. business. Vulcan disous ous vend vendor orss sold sold a vari variet etyy of goods goods.. covered that “domain parking” compa Appellant discovered that appellee’s appellee’s flea nies had registered several domain names market was host to a vendor that sold similar to its own. The lookalike domain counterfeit counterfeit “Hard Rock Rock Cafe” apparel. names led to pages showing advertise Appellant argued that appellee was secments administ administered ered by Google Google.. Vulcan Vulcan ondaril ondarilyy liable liable for tradema trademark rk infringeinfringeaccu accuse sed d Goo Google gle of cont contri ribu buto torrily  ily 

27

infringing infringing Vulcan’ ulcan’s trademark, trademark, arguing  arguing  that the advertisements on the lookalike domains domains diverte diverted d busines businesss away away from  Vulcan. Google moved to dismiss Vulcan’ can’s complain complaint. t. The court court ruled ruled for  Vulcan, finding Vulcan to have stated a claim for contributor y liability. liability.  Tiffany & Co. v. v. eBay, eBay, Inc., 600 F.3d F.3d 93 (2d Cir. 2010) [S-152]

 Tiffany & Co. sold expensive jewelry. jewelry. eBay eBay oper operat ated ed an auct auctio ion n websi ebsite te..  Tiffany discovered that counterfeit  Tiffany jewelry was being sold on eBay. eBay.  Although eBay promptly removed listings of counterfeits counterfeits at Tiffany’s Tiffany’s request,  Tiffany argued that eBay had a duty to police its website for counterfeit goods. eBay’s failure to do so, argued Tiffany,  was contributory infringement of   Tiffany’s trademark. The court cour t ruled r uled for

eBay, finding eBay not to have specific knowledge knowledge of infringement. infringement. Gucci America, Inc. v. Frontline Processing, 721 F. Supp. 2d 228 (S.D.N.Y. 2010) [S-157]

Plaint Plaintiff iff produce produced d and sold luxury  luxury  handbags. handbags. Defendants Defendants provided provided credit card processing services to online merchan chants ts,, incl includi uding ng a websi website te that that sold sold counterfeit counterfeit versions versions of plaintiff plaintiff ’s handbags. bags. Plaint Plaintiff iff accuse accused d defend defendant antss of  contributorily contributorily infringing plaintiff ’s trademark, arguing arguing that sales sales of the countercounterfeits would not have been possible without defenda defendants nts’’ service services. s. Defendan Defendantt moved to dismiss plaintiff’s complaint.  The court cour t ruled r uled for plaintiff, finding that the processing processing of financial financial transactions transactions may constitute intentional inducement of  infringement.

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 TATUTORY  Y  DEFENSES TO EFENSES  TO S TATUTOR INFRINGEMENT

Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985) [434]

Car-Freshner Corp. v. Johnson & Son Inc., 70 F.3d 267 (2d Cir. 1995) [453]

Petitione Petitionerr operated operated airport parking  parking  lots under the “Park ’N Fly” trademark. Petitioner had established the incontestability bility of the mark mark.. Respo Responde ndent nt was was a compet competing ing operat operator or of airport airport parking  parking  lots. Respondent challenged petitioner’s petitioner’s mark, arguing that the mark was merely  descrip descripti tive ve.. The Court Court ruled for petipetitioner, finding that incontestability pre vented the mark from being challenged for being merely descriptive.

 Appellant manufactured and sold pinepine-sc scen ente ted d air fresh freshen eners ers for cars cars..  Appellant’s  Appellant’s product was shaped like a pine tree. Appellee Appellee manufact manufactured ured and sold indoor air fresheners. fresheners. Appellee also also sold a pine-scented air freshener shaped like like a pine pine tree. tree. Ap Appel pella lant nt accus accused ed appellee appellee of infringing infringing appellant’ appellant’s trademark, mark, which which consist consisted ed of the pine-tre pine-treee shap shape. e. The court court ruled ruled for appel appelle lee, e, findi finding ng appe appella llant nt could could not preve prevent nt appellee from using the pine-tree shape in a descriptive capacity. capacity.

United States Shoe Corp. v. Brown Group Inc., 740 F. Supp. 196 (S.D.N.Y.) [449]

New Kids on the Block v. News  America Publishing, 971 F.2d F.2d 302 (9th Plai Plaint ntif ifff manu manufa fact ctur ured ed and and sold sold Cir. 1992) [462]  women’s  women’s pumps. Plaintiff ’s advertising  emph emphas asiz ized ed the the comf comfort ort of the the shoe shoe New Kids on the Block was a popu with the slogan “Looks Like a Pump, lar band. band. News America America was was a newspanewspaFeels Feels Like Like a Sneaker. Sneaker.”” Defendant Defendant also per publisher publisher.. A newspaper newspaper owned owned by  sold sold wome women’ n’s pumps pumps. Defe Defend ndan ant’ t’ss News America ran a poll asking quesadvertising advertising mentioned mentioned that defendant’ defendant’ss tions such as “Who’s the best kid on the product “feels “feels like like a sneaker. sneaker.”” Plaintiff  Plaintiff  block?” and directing readers to a 900 argue argued d that that defen defenda dant nt had infri infringe nged d telepho telephone, ne, where where they they could could cast cast their their plai plaint ntif ifff ’s trad tradem emar arkk by comp compar arin ing  g   votes.  votes. New Kids asked the court to defenda defendant’ nt’s pump to a sneak sneaker er.. The enjoin News America from running the court ruled for defendant, defendant, finding defen- polls, polls, arguing arguing that that the polls polls infringe infringed d dant’s dant’s use of “sneaker” “sneaker” to be fair use of  New Kids’s Kids’s trademark. trademark. The court ruled the term. for News America, finding New Kids to be suffic sufficient iently ly identi identified fied only only throug through h the the direc directt use of its its name name. The cou court rt further found that New Kids could not stop other parties from profiting from its

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popularity as long as the parties committed no trademark infringement.

Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009) [169]

In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) [S-162]

 Appellant owned the trademark for the Wash Washing ington ton Redsk Redskins ins.. Appelle Appellees es  were Native Americans. Appllees sought to cancel appellant’s mark, arguing that the the mark markss were ere offe offens nsiive to Nati Nativve  Americans. Appellant argued that appellee’s challenge was barred by laches.  The court ruled for appellant, finding  that appellee could not challenge in 1992 a trademark that had been registered in 1967.

Bose owned the “Wave” trademark  for certa certain in type typess of audi audio o equi equipme pment nt..  The trademark was challenged for fraud.  The challenger alleged that Bose’s Bose’s renewal registration stated that “Wave” covered audiotape recorders even though Bose Bose no longer longer made made such such produ product ctss.  The court ruled for Bose, finding the misstatement to be an honest mistake.  The court noted that a belief, even if   Au-Tomotive  Au-Tomotive Gold Inc. v. v. Volkswagen Volkswagen unreasonable, does not support a finding  of America, Inc., 603 F.3d F.3d 1133 (9th of fraud fraud unless unless it shows shows an intent intent to Cir. 2010) [S-174] deceive.  The court found that the first sale doct doctrin rinee did did not not prote protect ct a defen defenda dant nt from from a findi finding ng of trad tradem emar arkk infrin infringegement where the the use of the mark created created a likelihood likelihood of confusion. confusion.

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RIGIN  AND F ALSE DESIGNATION OF ORIGIN AND  TRADE DRESS

trade trade dress dress infri infringe ngeme ment nt,, even even if the the infringed trade dress had no secondary  meaning. meaning. The concurrenc concurrencee noted noted that DC Comics was the publisher publisher of the protection ion of inheren inherently tly distinc distinctiv tivee Supe Superma rman n comic comic book book seri series es.. The The the protect trade dress did not derive from the literal Superman Superman comics comics regular regularly ly feature featured d a Lanham Act. fict fictio iona nall news newspa pape perr know known n as “The “The text of the Lanham Daily Planet.” Powers Powers was the publisher Wal-Mart Wal-Mart Stores, Inc. v. Samara of a real-li real-life fe newspaper newspaper with the same Brothers, Inc., 529 U.S. U.S. 205 (2000) titl title. e. DC Comic Comicss asked asked the cour courtt to [489] enjoin Powers from publishing the realSamara designed children’s clothing, life “Daily Planet,” arguing that Powers suppl supplyi ying ng its its prod produc ucts ts to depa departm rtment ent  was infringing DC Comics’s Comics’s trademark  store storess such such as J. J. C. Penne enneyy. One One of  for the the Supe Superman rman serie seriess. The cour courtt Samara’s products was a seersucker outruled for DC Comics, finding Powers’s fit. Wal-Mart al-Mart directed directed its own own distribudistribuuse of the “Daily Planet” Planet” name to have tors to copy the outfit, selling the copies caus caused ed confu confusi sion on with with the the Superm Superman an at a deeply deeply disco discount unted ed price price.. Samara Samara comic books. asked the court to stop Wal-Mart from DC Comics v. Powers, 465 F. Supp. 843 (S.D.N.Y. 1978) [476]

knockoff outfits, outfits, arguing that  Two Pesos, Pesos, Inc. v. v. Taco Taco Cabana, Inc., selling the knockoff  Wal-Mart  Wal-Mart was infringing Samara’s Samara’s trade 505 U.S. 763 (1992) [481] dress. dress. The court court ruled ruled for Wal Wal-Ma -Mart, rt,  Taco Cabana operated a chain of  the design of a product was Mexican restaurants with “festive” inte- finding that the not a “trade dress” dress” in the sense of being  rior décor décor.. Sometime Sometime thereafter thereafter,, Two Two Pesos Pesos established established its own chain of Mexi- a source identifier that existed independently of the product itself. can restaur restaurant ants, s, which which feature featured d similar similar interior design. Taco Cabana sued Two  Tie Tech, Tech, Inc. v. v. Kinedyne Corp., 296 Pesos for infringing Taco Cabana’s trade F.3d 778 (9th Cir. 2002) [496] dres dresss, argu arguin ingg that that Two Pesos esos had had Plai Plaint ntif ifff was a manu manufa fact ctur urer er of  improperly copied Taco Cabana’s Cabana’s interior handheld “web cutting” knives knives.. Plaintiff  design. design. The trial trial court found that that Taco Taco had obtained trademark registration for Cabana’s trade dress was inherently dis- the the over overal alll confi configur gurat atio ion n of its its knif knife. e. tinc tincti tive ve but that that it lack lacked ed seco second ndary  ary  Defendant made and sold a similar knife. mean meanin ingg. The Court Court ruled ruled for Tac Taco o Plaint Plaintiff iff asked asked the court court to stop defendefenCabana, finding that inherent distinctive- dant from making lookalike lookalike knives knives.. The ness ness suffic sufficed ed to supp support ort a find finding ing of  31

court ruled for defendant, finding plaintiff ’s purported trademark to consist of  functional functional elements elements.. The court rejecte rejected d plaintiff’s argument that a combination of funct functio iona nall elem element entss coul could d crea create te a trademark-eligible design.  TrafFix Devices, Devices, Inc. v. v. Marketing Displays, Inc., 532 U.S. 23 (2001) [498]

Marke Marketing ting Display Displayss manufa manufactu ctured red and sold road signs mounted on springloaded supports, which were designed to allo allow w the the sign signss to with withst stan and d stro strong  ng   winds. The spring-loaded design was the subject of an expired utility patent. TrafFix manufac manufactur tured ed and sold sold road road signs signs mounted mounted on a similar similar mechan mechanism. ism. Marketing Displays asked the court to stop  TrafFix from selling competing signs, arguing that TrafFix was infringing Market Displays’s trade dress for the signs.  The court ruled for TrafFix, finding that featu feature ress claim claimed ed in util utilit ityy pate patent ntss are functio functional nal and therefo therefore re inelig ineligible ible for trademark protection. Eco Manufacturing LLC v. Honeywell International Inc., 357 F.3d 649 (7th Cir. 2003) [504]

Honeywell manufactured and sold a round thermostat with a dial in the center. Honeywell had obtained a trademark  regist registrat ration ion for the design design of the thermostat, mostat, and the trademark trademark was was inconincontestable. testable. Eco sought sought to sell a similarly  similarly  designed designed thermostat. thermostat. Honeywell Honeywell aske asked d the court to stop Eco from bringing the lookali lookalike ke thermo thermosta statt to marke market. t. The court ruled for Eco, finding that incontestability did not prevent a trademark  from being challenged for being functional.

 Au-Tomotive  Au-Tomotive Gold, Inc. v.  Volkswagen  Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir. 2006) [506]

 Auto Gold sold keychains, license plates, and other paraphernalia bearing  the the logo logoss of Volks olksw wagen agen and and Audi Audi..  Volkswagen  Volkswagen asked the court to stop Auto Gold from selling goods bearing Volkswagens’s swagens’s logos. logos. Auto Gold argued that its use of the logos was protected protected by the doctrine doctrine of aesthetic aesthetic function functionality ality.. The court r uled for Volkswagen, olkswagen, finding that aesthe aesthetic tic functio functionali nality ty could could not be so broad broad as to permit permit the use of a tradetrademark mark when whenev ever er a party party belie believved the the trademark to have aesthetic appeal. Gibson Guitar Corp. v. Paul Reed Smith Guitars, 423 F.3d 539 (6th Cir. 2005) [515]

Gibson Guitar had obtained trademark mark regis registra trati tion on for the the dist distin inct ctiv ivee shape shape of its guita guitars rs.. Paul Paul Reed Reed Smith Smith produced guitars with a shape similar to that of Gibson’s Gibson’s guitars. guitars. Gibson argued that Paul Reed Smith’s lookalike guitars infringed the trademark for Gibson’s guitars tars.. The court court ruled ruled for Pau Paull Reed Reed Smith Smith,, findi finding ng neit neithe herr init initia iall-int inter eres estt confusion confusion nor post-s post-sale ale confusion. confusion. The court court reje reject cted ed Gibs Gibson on’’s “smoky “smoky bar” bar” argument, which claimed it would be difficul ficultt to dist disting inguis uish, h, from from a dista distanc nce, e,  whether a guitar was made by Gibson or Paul Reed Smith. Best Cellars Inc. v. Grape Finds at Dupont, Inc., 90 F. Supp. 2d 431 (S.D.N.Y. 2000) [519]

Best Cellars developed a new type of   wine store, in which wines were organized by by flavor. flavor. Best Cellars’ Cellars’ store store also featured featured distinctiv distinctivee décor, of which the centerpiece was a “wall “wall of wine.” Grape Finds built a lookalike store, in which  wines were also organized by flavor. The lookalike store also featured a “wall of 

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 wine.” Best Cellars asked the court to stop stop Grap Grapee Find Findss from from oper operat ating ing the the looka lookalik likee store storess, argu arguin ingg that that Grape Grape Finds was infringing Best Cellars’ trade dress. The court found that Grape Finds had duplicated too closely Best Cellars’ arrangement arrangement of wine and ordered ordered Grape Finds Finds to change change its its store store layou layout. t. The court found, however, that Grape Finds could retain the other design elements of  its store.

McNeil-PPC, inc. v. v. Guardian Dr ug Co., 984 F. Supp. 1066 (E. D. Mich. 1997) [541]

Plaint Plaintiff iff sold an over over-th -the-c e-count ounter er pharmaceutical pharmaceutical product called “Lactaid “Lactaid Ultra.” Ultra.” Defendant Defendant a sold a competing  competing  product product called called “Arbor Arbor Ultra Ultra Lactas Lactase. e.”” Defend Defendant ant’’s trade trade dress dress was similar similar to plaintiff’s, and defendant placed “shelf  talk talker” er” sign signss compa comparin ringg defe defenda ndant’ nt’s product to plaintiff plaintiff ’s. The court court found defendant to have committed trademark  Best Cellars v. Wine Made Simple, infrin infringem gemen ent. t. The cour courtt found found that that 320 F. Supp. 2d 60 (S.D.N.Y. 2003) defendant’ defendant’ss use of comparison comparison was not [531] enough enough to avoid avoid a finding finding of infringeinfringeBest Cellars discovered the existence of a lookal lookalike ike store store operat operated ed by Wine ment because defendant had deliberately  designed its packaging to resemble plainMade Made Simp Simple le.. Wine Wine Made Made Simpl Simple’ e’ss “Bacch “Bacchus” us” stores stores feature featured d wines wines orga- tiff ’s. nized by flavor and displayed on grid-like  America Online v. v. LCGM, 46 F. F. Supp. racks. racks. Best Cellars Cellars moved moved for for summary  2d 444 (E. D. Va. 1998) [543] judgment, judgment, asking the court to stop Wine LCGM was a spamming operation. Made Simple from operating its stores. LGCM sent to AOL subscribers numer The court declined to issue a summary  ous e-mai e-mails ls promo promotin tingg porno pornogra graph phic ic judgment, finding a factual issue as to  websites. LCGM engaged in e-mail  whether trade dress infringement had “spoofing,” in which the “sender” inforoccurred. mati mation on of each each e-ma e-mail il was was alte altere red d to make make it look look as if the e-mail e-mail had come from AOL. AOL. The court court foun found d LCGM LCGM liabl liablee for for fals falsee desi design gnat atio ion n of orig origin in..  The court found that an ordinary user Conopco Conopco was the seller of a branded LCGM’s had cosmet cosmetic ic product product.. May May Depa Departme rtment nt  would likely believe that LCGM’s come from AOL. Stores sold a competing generic product. Conopco asked the court to stop May  Dastar Cor p. v. v. Twentieth Century from selling the generic product, arguing  Fox Film Corp., 539 U.S. 23 (2003) that May was infringing Conopco’s trade- [545] mark mark for vario various us packag packaging ing elemen elements ts.. Fox had produced a documentary on  The court ruled for May, May, finding that  World  World War II. When the copyright for Conopco Conopco to have have relied relied on unrelia unreliable ble the docume documenta ntary ry expired expired,, Dastar Dastar proconsumer consumer testimony testimony.. The court court noted noted duced its own version version of the documendocumenthat Conopco’s Conopco’s consumer consumer witness witness held tary by re-editing footage from Fox’ Fox’s verthe idiosyn idiosyncra cratic tic belief belief that that compan companies ies sion. Fox asked the court court to stop Dastar secretly sold generic products alongside from distributing distributing Dastar’s Dastar’s version of the brand-name ones. docume documenta ntary ry,, arguin arguingg that that Dastar Dastar was Conopco, Inc. v. May Department Stores Co., 46 F.3d 1556 (Fed. Cir. 1994) [535]

falsely designati designating ng the origin of its product. According According to Fox, Fox, the the similarity similarity of 

33

Dastar’s version to Fox’s version would lead viewers to believe that Dastar’s version sion had been been produce produced d by Fox Fox.. The court ruled for Dastar, finding that the “origi “origin” n” of goods, goods, for the purposes purposes of  the the Lanh Lanham am Act, Act, did did not not inclu include de the the authorship of creative works.

file extension extension.. Autodesk Autodesk accused accused SolidSolid works of infringement Autodesk’s Autodesk’s trade dress, arguing that Solidworks was falsely  designating designating the origin origin of its product by  using using the the .dwg .dwg exten extension sion.. The court court ruled for Solidworks, finding file extensions to be functional.

Bretford Manufacturing, Inc. v. Smith System Manufacturing Corp., 419 F.3d 576 (7th Cir. 2005) [551]

Specialized Seating, Inc. v. Greenwich Industries, L.P., 616 F.3d 722 (7th Cir. 2010) [S-181]

Bretfor Bretford d manufa manufactu ctured red a compute computerr table with distinctiv distinctivee “V-shap “V-shaped” ed” legs. legs. Smith introduced a competing table with similarly shaped legs. Bretford asked the court court to stop stop Smith Smith from from sell selling ing the the competing tables, arguing that Smith was falsely designatin designatingg the origin of its products. ucts. The court ruled ruled for Smith, Smith, finding  insufficient evidence to show that the Vshaped shaped legs legs identif identified ied Bretfo Bretford rd as the manufacturer manufacturer.. The court court further noted that indiscriminate indiscriminate recognition recognition of design elem elemen ents ts as trad tradem emark arkss coul could d lead lead to excessive excessive trademarks litigation.

Greenwi Greenwich ch had regist registere ered d a tradetrademark consisting consisting of the overall overall design of  a folding folding chair chair.. Specia Specializ lized ed manufac manufac-tured similar similar folding folding chairs chairs.. Greenwich Greenwich accused accused Specialized Specialized of infringing infringing Green wich trademark for the chair. The court found found Green Greenwi wich ch’’s trade tradema mark rk to be invalid because the chair design had been the subject of a utility patent.  Jay Franco Franco & Sons, Inc. v. v. Franek, 615 F.3d 855 (2d Cir. 2010) [S-184]

Franek sold round beach towels, towels, having register registered ed the circular circular shape of his towels towels as a tradem trademark ark.. Jay Franc Franco o & Hammerton Inc. v. Heisterman, 2008 Sons Sons was was a comp compet etin ingg sell seller er of roun round d WL 2004327 (D. Utah 2008) [S-178] beach towels. towels. Franek accused accused Franco of  Hammerton manufactured and sold infringing Franek’s trademark for round light light fixtu fixture ress. Heist Heisterma erman, n, a former former towels. The court ruled for Franco, Franco, findemployee employee of Hammerton, Hammerton, had started a ing the circular shape not to be eligible competing competing light-fi light-fixture xture business. business. Ham- for trademark protection. merton merton accuse accused d Heiste Heisterman rman of infringinfring- McNeil Nutritionals, LLC v. ing the trade dress for f or Hammerton’s light Heartland Sweeteners, LLC, LLC , 511 F.3d fixture fixturess. The court court ruled for for HeisterHeister- 350 (3d Cir. 2007) [S-194] man, finding Hammerton not to have McNei McNeill produ produce ced d Splen Splenda da brand brand artic articul ulat ated ed what what the the purpo purporte rted d trad tradee sucralose, packaging the product in yeldress was. low low pac packe kets ts.. Heart Heartla land nd prod produce uced d  Autodesk, Inc. v. v. Dassault Systèmes generic generic sucral sucralose ose for sale sale under under store store Solidworks Corporation, Cor poration, 685 F. Supp. brands brands.. Heartla Heartland nd also also pack package aged d its 2d 1023 (N. D. Cal. 2009) [S-179] sweete sweetener ner in yellow yellow pack packets ets.. McNeil McNeil  Autodesk produced software for accused Heartl rtland of infringing  computer computer aided aided design design (“CAD”) (“CAD”).. Files McNeil’s trade dress, arguing that Heartproduce produced d by Autode Autodesk’ sk’ss softwar softwaree had land’ land’ss use of yellow yellow packets packets created created a the .dwg file file extension. extension. Solidworks Solidworks was was likelihood likelihood of confusion. confusion. The court ruled a competing producer producer of CAD software. software. for Heart Heartla land nd,, find finding ing cons consume umers rs to Solidworks’s software also used the .dwg  associate yellow packaging with sucralose

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in general, not with the Splenda brand in particular.

35

 ADVERTISING

able able form form of compa compari riso son. n. The cou court rt found found that that consum consumer er confus confusio ion n was was unlikely.

Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968) [557]

Chanel made and sold famous perfumes, such as Chanel No. No. 5. Smith sold “sme “smell ll-a -ali likke” frag fragra ranc nces es unde underr the the “Ta’Ro “Ta’Ron n Line of of Perfumes Perfumes.” .” AdvertiseAdvertisement mentss for for the the Ta’Ro a’Ron n perfu perfume mess chalchallenged consumers to “detect any difference” ence” betwee between n brand-n brand-name ame perfume perfumess and Smith’ Smith’s generic generic versio versions ns.. Chanel Chanel asked the court to enjoin Smith from engaging in such competitive advertising, arguin arguingg that that the adverti advertisem sement entss were were causing causing consumer consumer confusion. confusion. The court ruled for Smith, finding comparisons to be an essent essential ial elemen elementt of adverti advertisin singg.  As long as there was no confusion, said the court, competitors are allowed to say  that that thei theirr prod produc ucts ts are are “as “as good good as” as” those of a brand name. name.  August Storck K.G. v. v. Nabisco, Inc., 59 F.3d 616 (7th Cir. 1995) [564]

Stor Storcck man manufac ufactu ture red d and and sold sold “Werther’ “Werther’ss Original” Original” candy. candy. Nabisco Nabisco planned to introduce a competing product called called “Life “Life Save Savers rs Delites Delites.” .” The packag packaging ing for Life Life Savers Savers Delite Delitess featured the phrase “25 percent lower in calories than Werther’s Original candy.” Storck asked the court to stop Nabisco from using the Werther’s name on the packaging for Life Savers Delites, arguing ing that that Nabi Nabisc sco o was was infr infrin ingi ging ng the the “Werther’s” “Werther’s” trademark. The court ruled for for Nabi Nabisc sco o, find findin ingg its its use use of the “Werther’s” trademark to be an accept-

Procter & Gamble Co. v. Amway Corp., 242 F.3d 539 (5th Cir. 2001) [571]

P&G had been plagued by persistent rumors claiming that it had an affiliation  with the Church of Satan. Amway distributed a message repeating the rumor. P&G P&G sued ued Amw Amway for for disp dispar arag agin ing  g  P&G’s P&G’s commerci commercial al activ activities ities.. Amway  Amway  argued argued that that its message message was protect protected ed speech. speech. The court found found that Amway Amway’’s liability depended on whether the message was was commer commercia ciall speech. speech. Only Only if  the message was commercial speech was there a remedy for disparagement under the Lanham Act. Coca-Cola Co. v. Tropicana Products, Inc., 690 F.2d 312 (2d Cir. 1982) [576]

Coca-Cola and Tropicana were competing sellers of orange juice. juice. Tropicana produced produced a television television advertisement advertisement in  which juice was squeezed directly from an orange and poured into a Tropicana carton. The advertisement advertisement was was designed to empha emphasiz sizee the the freshn freshnes esss of Tropiropicana’s cana’s orange juice. juice. Coca-Cola asked the court to enjoin Tropicana Tropicana from showing  showing  the the adv adverti ertise seme ment nt,, argu arguin ingg that that the the advertisemen advertisementt was literally literally false. false. CocaCola argued in particular that Tropicana’s adverti advertisem sement ent did not actual actually ly portray  portray  the manufa manufactu cturin ringg process process for Tropiropi-

36

cana’s orange juice, which did not consist of squeezi squeezing ng orange orange juice juice directl directlyy into into cartons. cartons. The court ruled for for Coca-Cola, Coca-Cola, finding the advertisement did not make adequately clear that Tropicana’s orange juice was in fact pasteurized before packaging.

advertisement to grossly exaggerate the “hai “hairr rais raising ing”” proper properti ties es of Gill Gillet ette te’’s razor. razor. The court noted noted that a party party may  not not “dis “distor tortt an inhe inhere rent nt qualit qualityy of its its product” in advertising. Clorox Co. Puerto Rico v. v. Proctor & Gamble Commercial Co., 228 F.3d 24 (1st Cir. 2000) [583]

United Industries Corp. Cor p. v. v. Clorox Co., 140 F.3d 1175 (8th Cir. 1998) [579]

United and Clorox were competing  sellers of cockroac cockroach h traps. traps. United promoted its trap with a television advertisement featuring a “side-by-side” comparison. son. The The comp compar aris ison on show showed ed one one kitchen, in which United’s product had been applied, alongside a second kitchen, in whic which h a comp compet etit itor or’’s produ product ct had had been applied. The “United” kitchen was in pristine condition whereas the “competitor’ petitor’s” s” kitchen kitchen was filthy filthy. Although Although the the comp compet etit itor or was was not not ident identif ifie ied d by  name, the packaging packaging of the competitor’ competitor’ss produ product ct vagu vaguely ely resem resembl bled ed Cloro Clorox’ x’ss packag packaging ing.. Clorox Clorox aske asked d the court court to stop stop United United from airing airing the adverti advertisesement, arguing that the advertisement was literally literally and implicitly implicitly false. false. The court court ruled for United, finding that the advertisement tisement did not make a claim of “complete” roach control. Schick Manufacturing, Inc. v. Gillette Co., 373 F. Supp. 2d 273 (D. Conn. 2005) [580]

Schick and Gillette were competing  manufac manufacture turers rs of razors razors.. Gillett Gillettee promote moted d its its “M3” “M3” razo razorr in a tele televi visi sion on adv adverti ertise seme ment nt,, whic which h clai claime med d that that “micro-pulses” generated by the razor’s motion would “raise hair up” and allow  for a closer closer shave shave.. The adverti advertisem sement ent featured animations purporting to show  the the “mic “micro ro-p -pul ulsi sing” ng” acti action on at work. ork. Schick asked the court to stop Gillette from using using the adverti advertisem sement ent,, arguin arguing  g  that the advertisemen advertisementt was literally false.  The court ruled for Schick, finding the

Cloro Cloroxx and and P&G P&G were were compe competi ting  ng  manu manufa fact cture urers rs of laun laundry dry dete deterge rgent nt.. P&G create created d an adverti advertisin singg campaig campaign n for its detergent. The campaign featured two slogans: slogans: “Mas blanco blanco no se se puede” (“Whiter is not possible”) and “Ace con blanque blanqueado ador” r” (“Ace (“Ace with with whiten whitener” er”). ). Cloro Cloroxx aske asked d the the court court to stop stop P&G P&G from running the campaign, arguing that the slogans slogans were were false false and mislea misleading ding.. P&G P&G argu argued ed in parti particul cular ar that that “Mas “Mas blanco no se puede” was literally and that “Ace “Ace con blanqueador” was misleading. ing. The court ruled for Clorox Clorox,, finding  that a trier of fact could take both both claims at face value.  Johnson & Johnson Johnson Vision Care, Inc.  v.  v. Ciba Vision Corp., 348 F. F. Supp. 2d 165 (S.D.N.Y. 2004) [591]

 J&J and Ciba were competing manufacturers facturers of contact contact lenses lenses.. Ciba ran ran an adve adverti rtise seme ment nt stat statin ing, g, “75% “75% of lens lens  wearers preferred [the Ciba lens] to [the  J&J lens]. The #1 reason was comfort.” comfor t.”  J&J asked the court to stop Ciba from using the advertisement, arguing that it made made false claim claims. s. J&J point pointed ed out in particular that a number of consumers in Ciba’s comparison expressed no reason for preferri preferring ng either either brand. brand. The court court ruled for Ciba. Ciba. The court found found that that of  those consumers who did  express a preference, comfort was indeed the “#1 reason” for their choice.

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court ruled for McNeil, finding the evidence to show that rinsing with mouthPolar olar,, a manu manufa fact ctur urer er of selt seltze zerr  wash and flossing were not actually   water, created a commercial in which an equivalent. animated polar bear is shown throwing a Serbin v. v. Ziebart International Inter national Corp., can of Coca-Cola into a trash bin labeled 11 F.3d 1163 (3d Cir. 1993) [610] “Kee “Keep p the Arctic Arctic Pure. Pure.”” Co Coca ca-C -Col olaa  The court that only competitors, as asked the court to stop Polar from using  opposed to consumers, consumers, have standing to the commercial, arguing that Polar was sue for false advertising under section dispara disparagin gingg the qual quality ity of of Coke. Coke. The 43(a) of the Lanham Act. court ruled for Coca-Cola, finding the v. commercial to suggest improperly that Ortho Phar maceutical Corp. v. Cosprophar, Inc., 32 F.3d 690 (2d Cir. Coke was somehow “impure.” 1994) [611] Coors Brewing Br ewing Co. v. AnheuserAnheuserOrtho manufactured and sold a preBusch Co., 802 F. Supp. 965 (S.D.N.Y. scription scription acne acne medicat medication. ion. Cosprophar Cosprophar 1992) [593] manufactured manufactured and sold “anti-aging” “anti-aging” cosCoors Coors produc produced ed Coors Coors Light Light beer. beer. metics. Ortho sued Cosprophar for false Coors’s manufacturing process required advertising, arguing that Cosprophar was a concentra concentrated ted form of the beer beer to be falsely falsely claimi claiming ng that that its produc products ts conship shippe ped d from from Co Colo lora rado do to Virg Virgin inia ia,, tain tained ed the the same same acti active ve ingre ingredie dient ntss as  where the concentrate was diluted to Ortho’ Ortho’s. s. The court court ruled ruled for Ortho Ortho,, make the final product. Anheuser-Busch finding prescription prescription acne treatments treatments and produce produced d Natural Natural Light, Light, a competi competing  ng  anti-aging cosmetics to be in different light beer beer.. Natural Natural Light was was produced produced markets. in a similar process, in which water was v. Dassault Systèmes added to a beer beer concentrat concentrate. e. AnheuserAnheuser-  Autodesk, Inc. v. Busch produced a commercial commercial ridiculing  Solidworks Corp., 685 F. Supp. 2d Coors’ Coors’ss crosscross-cou country ntry shipmen shipmentt of its 1001 (N. D. Cal. 2009) [S-197] beer concentrate. concentrate. Coors asked asked the court  Autodesk and Solidworks were comcom to stop the airing of Anheuser-B Anheuser-Busch usch’’s peti peting ng prod produc ucer erss of CA CAD D soft softwa ware re.. commercial, arguing that the commercial  Autodesk ran an advertisement describdisparaged Coors Light. The court court ruled ing Solidworks’ Solidworks’ss product as unreliable. unreliable. for Anheuser-Busch, finding that Coors Solidworks ran an advertisement stating  coul could d not prev preven entt a comp compet etit itor or from from that its software was interoperable with undermining its claim that Coors Light  Autodesks’s  Autodesks’s products. The companies  was “the taste of the Rockies.” Rockies.” accused accused each other of false advertising advertising..  The court found both parties to have McNeil-PPC, Inc. v. Pfizer Inc., 351 engaged in permissible puffery. F. Supp. 2d 226 (S.D.N.Y. 2005) [600] Pfizer manufactured manufactured and sold Lister- Osmose, Inc. v. Viance, LLC, 612 ine mouthw mouthwash. ash. A commercia commerciall for LisLis- F.3d 1298 (11th Cir. 2010) [S-199] teri terine ne claim claimed ed that that List Listeri erine ne was was “as “as Osmose and Viance were competing  effecti effective ve as floss” floss” in remov removing ing plaque plaque manufacturer manufacturerss of lumber preservatives preservatives.. from between teeth. McNeil, a manufac-  Viance ran a series of advertisements turer of dental floss, floss, argued that the Lis- stat stating ing that that Osmos Osmose’ e’ss prod product uctss were were terine commercial was literally false. The ineffectiv ineffective. e. The advert advertisemen isements ts stated stated Polar Corp. v. Coca-Cola Co., 871 F. Supp. 1520 (D. Mass. 1994) [592]

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that wooden posts treated with Osmose’s Osmose’s produ product ctss were were struc structu tura rally lly unsou unsound. nd. Osmose Osmose accused accused Viance Viance of false false adveradvertising. tising. Viance argued argued that its its advertiseadvertisements were were puffery puffery.. The court ruled for Osmose, finding Viance’s advertisements to have made factual claims. Natural Answers v. SmithKline Beecham Corp., 529 F.3d 1325 (11th Cir. 2008) [S-203]

Natural Answers sold “HerbaQuit” smoking cessation lozenges. HerbaQuit lozenges lozenges were eventually eventually discontinue discontinued. d.  After HerbaQuit lozenges were no longer on the market, SmithKline introduce uced its own smo smoking cessa ssation ion lozenge, advertising it as “the first and only only stop smoki smoking ng lozenge lozenge.” .” Neutra Neutrall  Answers accused SmithKline of engaging in false false advertising advertising.. The court ruled

for SmithKline, finding Natural Answers not to have standing since it no longer manufactured HerbaQuit lozenges. Famous Horse, Inc. v. 5th Avenue Photo, Inc., 624 F.3d 106 (2d Cir. 2010) [S-203]

 Appellant was a retailer that sold Rocawear brand jeans at discount prices.  Appellee wholesaler that sold counterfeit Rocaw Rocawear ear jeans jeans.. Appell Appellant ant aske asked d the court to stop appellee from continuing  to sell the the counter counterfeit feit jeans jeans.. Appellee Appellee argued that appellant had no standing.  The court ruled for appellant, finding  that appellee’s appellee’s sale of counterfeit jeans at discount prices would erode appellant’s market market and lead lead consume consumers rs to believ believee that appellant also sold counterfeit products.

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DILUTION

 Ty Inc. v. v. Perryman, 306 F.3d F.3d 509 (7th Cir. 2002) [619]

bore the label “Chewy Vuitton” and imitated design elements from Louis Vuitton’s ton’s handbags. Vuitton asked the court to stop Haute Diggity Dog from selling  the the Ch Chew ewyy Vuitt uitton on toy toy, argu arguing ing that that Haute Diggity Dog was diluting Louis  Vuitton’  Vuitton’s trademark. The court ruled for Haute Diggity Dog, finding that Haute Diggity Diggity Dog’ Dog’s imitat imitation ion of Louis Louis Vuitton’s design elements did not amount to use of the Louis Vuitton mark.

 Ty  Ty manufactured and sold “Beanie Baby” plush animals. animals. Perryman operated a website that sold secondhand Beanie Baby toys toys.. Perry’s Perry’s store was was known as “Bargain Beanies.” Beanies.” Ty asked the the court to enjoin enjoin Perryman Perryman from from using using “Bargai “Bargain n Beanies” as the name for the store, arguing ing that that Perrym erryman an was was dilu diluti ting ng the the “Beanie “Beanie Baby Baby”” tradem trademark ark.. The court court ruled for Perryman, finding that Perry- Starbucks Corp. v. Wolfe’s Borough man was using “Beanies” as an accurate Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) description of the secondhand goods. goods. [S-226]  Visa International Service  Association v. v. JSL Corp., 610 F.3d F.3d 1088 (9th Cir. 2010) [S-217]

 Wolfe’  Wolfe’ss Borough sold coffee under the “Black Bear Micro Roastery” brand. One One varie ariety ty of its its coff coffee ee was call called ed “Charbucks.” “Charbucks.” Starbucks asked the court court to stop stop Wolfe olfe’’s from from usin usingg the the Ch Chararbucks name, arguing that “Charbucks “Charbucks””  was diluting the Starbucks trademark.  The court ruled for Wolfe’s, olfe’s, finding findi ng that Charbucks did not tend to tarnish the Starbucks Starbucks name. name. The court court noted noted that that  Wolfe’  Wolfe’ss promoted Charbucks as a highquality product.

 Visa operated a payment network.  JSL sold “eVisa” language learning soft ware. Visa asked the court to stop JSL from from cont contin inui uing ng to use use the the “eVi “eVisa sa”” brand, arguing that JSL was diluting the “Visa” trademark. trademark. The court court ruled for  Visa, finding JSL to have a created an arbitra arbitrary ry associa associatio tion n betwee between n the term “visa” “visa” and languag languagee learning learning softw software are,,  which weakened the existing association  V Secret Catalogue, Inc. v. v. Moseley, Moseley, between “visa” and Visa’s Visa’s services. ser vices. 605 F.3d 382 (6th Cir. 2010) [S-235]

 Appellant was a corporate affiliate of   Victoria’s  Victoria’s Secret. Appellee operated a store store call called ed “Vic “Victo tor’ r’ss Litt Little le Secr Secret et.” .”  Appellee’s  Appellee’s store sold sex toys and related Louis Louis Vuitt uitton on produ produce ced d and and sold sold products. Appellant accused appellee of  luxury luxury handba handbags gs.. Haute Haute Diggity Diggity Dog  Dog  dilutin dilutingg the “Victo “Victoria’ ria’s Secret Secret”” tradetradeproduced chew toys for dogs. The chew  mark. mark. The court court ruled ruled for for appell appellant ant,, toys toys parodied parodied fashio fashion n labels labels. One toy  toy  Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) [S-220]

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finding that appellee had not rebutted a presump presumptio tion n of diluti dilution. on. The disse dissent nt argued argued that none of the evidenc evidencee suggested that “Victor’s “Victor’s Little Secret” modified consumers’ consumers’ impression impression of the Victoria’s toria’s Secret brand. Fiat Group Automobiles S.p.A. v. v. ISM, Inc., 94 U.S.P.Q.2d 1111 (T.T.A.B. 2010) [S-240]

ing from a giant chocolate-bar wrapper. Hersh Hershey ey accu accuse sed d Art Van of dilut dilutin ing  g  Hershey’s trade dress, arguing that Art  Van’  Van’ss truck tr uck decoration was too similar to the packaging packaging of a Hershey’s Hershey’s chocolate chocolate bar. bar. The court ruled ruled for Hershey Hershey,, finding Art Van’ an’s desi design gn to copy copy seve severa rall design elements elements of the Hershey’s Hershey’s packaging.

Levi Strauss & Co. v. v. Abercrombie &  The court cour t found that the owner of a Fitch Trading Co., 663 F.3d 1158 (9th famous international international mark must use that Cir. 2011) [S-247] mark within the United States in order to have have a cause of action action for dilution dilution of the Levi Strauss accused Abercrombie & mark. Fitch Fitch of infringing infringing Strauss’s Strauss’s trade dress for V-shaped stitching on the back pock The Hershey Co. v. v. Art Van ets ets of jean jeanss. Ab Aber ercr crom ombi biee & Fitch Fitch Furniture, Inc., 2008 WL 4724756 (E. argue argued d that that no dilut dilution ion had occu occurre rred d D. Mich. 2008) [S-243] because the stitching was not “identical  Art Van was a furniture retailer. Art or nearly nearly identical. identical.”” The court ruled for for  Van  Van decorated the sides of its delivery  Strauss, Strauss, finding no requirement of identrucks with the the image of a couch emergemerg- ticality for a finding of dilution.

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IGHTS  AUTHORS’  AND PERFORMERS’ R IGHTS

Gilliam v. v. American Broadcasting Companies, Inc., 538 F.2d 14 (2d Cir. 1976) [662]

King v. Innovation Books, 976 F.2d 824 (2d Cir. 1992) [669]

 Antidote International Films v. v. Bloomsbury Publishing PLC, 467 F. Supp. 2d 394 (S.D.N.Y. 2006) [666]

Columbia produced a movie, which it described as being “from the creator of  .” The creator of  Scream , however, Scream .” had no relationship to Columbia’s movie. Mira Mi rama maxx ask asked the the cour courtt to enjo enjoin in Columbia’ Columbia’ss use of the description, description, arguing that the description falsely designated the origin origin of the movie movie.. The court court ruled for Miramax, finding Columbia to have misled consumers regarding the creator of the movie. movie.

Steph Stephen en King was the auth author or of a Gilliam was a member of the short story entitled “Lawnmower Man.” “Monty “Monty Python” Python” comedy comedy troupe troupe.. ABC Innovation Books, working with movie received a license to broadcast “Monty  studios, a produced a movie version of  Python’s Flying Circus,” a program writ- “Lawnmow “Lawnmower er Man.” Man.” The movie’ movie’ss plot ten by Monty Python Python.. ABC, howe however ver,, contai contained ned signifi significan cantt differe difference ncess from edited edited signific significant ant portions portions of the pro- the book’s, book’s, but the studios decided to call gram in order to make time for commer- the movie “Stephen King’s Lawnmower cials and to remove material it deemed Man.” Man.” King King asked asked the court court to enjoin enjoin offensi offensive ve.. Gilliam Gilliam aske asked d the court court to the studios from attributing the movie to enjoin ABC from broadcasting the modi- him, arguing that the studios had falsely  fied fied progr program am,, argu arguin ingg that that ABC ABC was was designated designated the the origin origin of the movie. movie. The fals falsel elyy desi design gnat atin ingg the the orig origin in of the the court ruled for King, noting that King  modified modified program under section section 1125(a) 1125(a) had never approved the production of  of the Lanham Lanham Act. The court court ruled for the movie. Gilliam Gilliam,, finding finding the modified modified program program Miramax Films Corp. v. Columbia no longer to be Monty Python’s work  Pictures Enterprises, 996 F. Supp. 294 product. (S.D.N.Y. 1998) [674]

 Antidote had obtained the rights to produce produce a film film based based on a nove novel.l. The novel had purportedly been written by  one “J. “J. T. T. Leroy.” Leroy.” Antidote discovered, however, that J. T. Leroy was merely an inv invent ention ion of the the true true auth author or of the book. Antidote Antidote sued sued Bloomsbury Bloomsbury,, the book’s publisher, for falsely designating  the origin origin of the novel. novel. The court court ruled  Allen v. v. National Video, 610 F. F. Supp. for Bloomsbury, applying the Dastar  rule 612 (S.D.N.Y. 1985) [677] to find that attributing a book to a ficti Woody  Woody Allen was a famous movie tious author was not a false designation director. director. National National Video Video ran an adveradverof origin origin.. 42

tisement featuring a Woody Allen lookalike. Woody Allen asked asked the court court enjoin National Video from using his likeness, arguin arguingg that that the adverti advertisem sement ent falsel falsely  y  described National Video’s Video’s services. The court ruled for Allen, finding National  Video to have created a likelihood of  confusion as to whether Allen was in fact associated with the video chain.

Grimaldi, an Italian film producer, produced duced an Italia Italian n film entitled entitled “Ginge “Gingerr and Fred, Fred,”” in which which the protago protagonis nists ts became the “Ginger “Ginger and Fred” of their country. Rogers asked asked the court to stop Grimaldi from using the “Fred and Ginger” title, arguing that it falsely suggested a connect connection ion with with the real-l real-life ife Ginger Ginger and Fred. Fred. The court ruled for Grimaldi, Grimaldi, finding Grimaldi to have an interest in free expression in using the title.

Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) [684]

Ford created an advertising campaign for its cars. cars. Ford Ford wanted wanted Midler to sing  sing  the music for television commercials, but Midler Midler refused refused.. Ford Ford hired hired a “sound“soundalike” alike” to take take Midler’ Midler’ss place. place. Midler Midler asked the court to enjoin Ford from runnin ning the the comme ommerc rcia iall feat featur urin ingg the soun soundd-al alik ike, e, argu arguin ingg that that Ford ord was infring infringing ing her her right right of public publicity ity.. The court court ruled ruled for for Midl Midler er,, findi finding ng that that a  voice was “as distinctive distinctive as” a face. White v. Samsung Electronics  America, Inc., 971 F.2d F.2d 1395 (9th Cir. Cir. 1992) [688]

O’Grady v. Twentieth Century Fox, 2003 WL 24174616 (E. D. Tex. 2003) [707]

O’Grady was a former fighter pilot  who had written a book about being  shot down over Bosnia. Fox produced a “docudrama” based on O’Grady’s book.  The docudrama was subtitled “The Scott O’Grady O’Grady Story Story.” .” O’Grady O’Grady ask asked ed the court to enjoin Fox from broadcasting  the program. program. The court found an an issue of fact fact as to whether whether the title misleadmisleadingly ingly suggeste suggested d a connect connection ion betwee between n the program and O’Grady.

 Vanna  Vanna White was a personality on the the “Whee “Wheell of Fortune ortune”” game game show show. Samsung ran an advertisement featuring  a robot that was reminiscent reminiscent of White’s White’s role on the game show. show. White asked the the court to enjoin Samsung from using the advertisement, arguing that Samsung had infrin infringed ged her her right right of public publicit ityy. The court ruled for White, finding Samsung’s robot robot look lookal alik ikee to impl implic icat atee White White’’s “comme “commerci rcial al inter interest ests. s.”” The disse dissent nt argued that Samsung should not be liable for evoking White’s role on the show.

ETW Corp. Cor p. v. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) [708]

 Tiger Woods controlled ETW, ETW, through which he handled transactions inv involvi olving ng the the use use of his his like likene ness ss for for commercial commercial purposes purposes.. Jireh publishe published da painting depicting Woods in several different poses on on the golf golf course. course. Woods asked asked the court to enjoin the sale of the painting, arguing that Jireh was infringing   Woods’s  Woods’s trademark for his likeness as  well as his right of publicity. publicity. The court ruled for for Jireh. Jireh. The court court found found that that  Woods  Woods had no trademark rights for his Rogers v. Grimaldi, 875 F.2d 994 (2d own own imag image, e, so that that he coul could d not not be Cir. 1989) [699] “walking, talking trademark.” The court Ginger Rogers was an actress known furt furthe herr foun found d the the pain paintting ing not not to for her longst longstand anding ing partners partnership hip with with infr infrin inge ge Woods oods’’s righ rightt of publ public icit ity  y  actor Fred Fred Astaire. Astaire. She and Astaire Astaire had had because it was a means of expression. become sufficiently famous to be known by their first names, “Ginger and Fred.”

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Boston Athletic Association v. v. Sullivan, 867 F.2d 22 (1st Cir. 1989) [725]

the the video video game game.. The court court ruled ruled for for Facenda, finding the advertisement to be commercial speech.

Boston Boston Athlet Athletic ic Associa Associatio tion n organize nized d the the annu annual al Bost Boston on Mara Marath thon on.. Before Before each r unning unning of the Marathon Marathon,, the Association passed out t-shirts bearing the Boston Marathon logo to participants. The Association licensed the logo to private t-shirt producers, which were forbidd forbidden en from making making unauth unauthoriz orized ed merc merch handise ise bea bearing ing the Bosto ston Marathon Marathon logo. logo. Sullivan Sullivan made and and sold unautho unauthorize rized d t-shirt t-shirtss bearing bearing the logo. logo.  The Association asked the court to enjoin Sullivan from selling the merchandise. dise. The court court ruled ruled for the the Associ Associaation, finding the t-shirts to infringe the  Association’s  Association’s trademark even though the logo did not wrongly designate designate the manufacturer ufacturer of the shirts shirts.. The court court found that Sullivan’s shirts were likely to create confusi confusion on as to the existenc existencee of a connectio nection n betwe between en his busine business ss and the Marathon.

C.B.C. Distribution and Marketing, Inc. v. Major League Baseball, 505 F.3d 818 (8th Cir. 2007) [S-256]

CBC mark markete eted d “fant “fantas asyy baseb basebal all” l” games, which featured the identitites of  major-l major-leag eague ue baseba baseball ll player players. s. Major Major League League Baseball accused accused CBC of violatviolating the playe players’ rs’ right to to publicity publicity.. The court ruled for CBC, finding the use of  the players’ identities to be protected by  the First Amendment. Board of Supervisors Supervisors for Louisiana Louisiana State University v. Smack Apparel, 550 F.3d 465 (5th Cir. 2008) [S-257]

Smack Smack Appare Apparell produce produced d unauth unauthoorized clothing bearing the school colors of well well-k -kno nown wn univ univers ersiti ities es,, inclu includi ding  ng  LSU. LSU. Although Although Smack’ Smack’ss products products bore no school insignia, they occasionally featured slogans that referred to the identity  of particul particular ar schoo schools ls.. LSU ask asked ed the the court to stop Smack from selling LSUWCVB-TV v. Boston Athletic referencin cingg shirts. shirts. Smack Smack argued argued that that  Association, 926 F.2d F.2d 42 (1st Cir. Cir. 1991) referen color combinations alone were not eligi[734] ble for trademark trademark protection. protection. The court  Appellant broadcast portions of the ruled for LSU, finding school colors to Boston Boston Marath Marathon, on, showin showingg the words words have secondary meaning. “Boston Marathon” at the bottom of the v. National scree screen. n. Appe Ap pell llee ee Bost Boston on Mara Marath thon on  American Needle, Inc. v.  Association argued that appellant was Football League, 130 S. Ct. 2201 infring infringing ing the Associ Associati ation on’’s tradem trademark  ark  (2010) [S-259] for the the Maratho Marathon. n. The court court ruled for  American Needle was a producer of  appellant, appellant, finding its broadcast broadcast to be fair licensed licensed sports sports merchandis merchandise. e. American American use of the Boston Marathon trademark. Needle initially received a license from the NFL to produce headwear bearing  Facenda v. NFL, 542 F.3d 1007 (3d the logos logos of NFL teams teams.. The NFL subCir. 2008) [S-253] seuqent seuqently ly revoke revoked d Americ American an Needle Needle’’s Facenda had been a broadcaster for license, opting instead to grant exclusive the the NFL. NFL. After After his his death death,, the NFL NFL licens licenses es to Reebok Reebok.. Americ American an Needle Needle decided to feature his voice in a promoaccuse accused d the NFL of violat violating ing section section 1 tion for a football video game. Facenda’s Facenda’s of the the Sherma Sherman n Antit Antitrus rustt Act. Act. The The heirs heirs accused accused the NFL of creati creating ng the court ruled for American Needle, finding  false impression that Facenda endorsed each NFL team to be a distinct supplier

44

of trademark trademark license licenses. s. The joint joint refusal refusal of all NFL teams to license to American American

45

Needle Needle was therefo therefore re a conspir conspiracy acy to restrain trade.

INTERNET DOMAIN N AMES

Sporty’s Farm L.L.C. v. v. Sportsman’s Market, Inc., 202 F.3d 489 (2d Cir. 2000) [750]

Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002) [766]

 Appellee sold aviation equipment through through mail-or mail-order der catalogs. catalogs. Appellee Appellee registered and used “Sporty” as a trademark for its products. products. Appellant decided to start a competing business. Appellant gain gained ed cont contro roll of the spor sporty tyss.com .com doma domain in name name and and arran arrange ged d for for the the domain name to be registered to a farm selling Christmas Christmas trees. trees. Appellee Appellee asked asked the court to end appellant’s control of  the the sporty sportyss.com .com domai domain n name. name. The court ruled for appellee appellee.. Applying Applying the the multi-factor test from section 1125(d)(1) (A) of the Lanham Lanham Act, the court found appellant to have registered sportys.com for the purpose purpose of making making the domain domain unavailable to appellee.

Harrods Harrods operat operated ed the wellwell-kno known wn Harrods department store in London. London. A former former corpo corpora rate te affil affilia iate te of Harro Harrods ds registered numerous domain names, each of which which was a variat variation ion on the “Harrods” name. name. Harrods pursued an in rem  action against the domain names because their owner owner could could not not be locate located. d. The court allowed Harrods to proceed on the in rem  theory, finding an in rem  action to be authorized whenever the registrant of  a pote potent ntia ially lly infri infringi nging ng domai domain n name name cannot be located. Cable News Network LP v. CNNews.com, 56 F. App’x 599 (4th Cir. 2003) [773]

CNN CNN disc disco overed ered that that a Ch Chin ines esee company, Shanghai Maya, had registered the cnnew cnnews. s.com com domai domain n name. name. CNN asked asked the the court court for for owne ownersh rship ip of the the Grosse hired Lucas Nursery to per- domain domain name. name. Shangh Shanghai ai Maya Maya argue argued d form certain certain landsca landscapin pingg work, work, which which that the court court lacked lacked jurisdiction. jurisdiction. The Grosse found found inadequat inadequate. e. Gross subsesubse- court allowed CNN to proceed in rem , quently quently registered registered the lucasnursery lucasnursery.com .com ordering cnnews.com to be transferred domain name, using it for a “gripe site” to CNN. complaining about the Nursery’s unsatis- Dial-A-Mattress Operating Corp. v  factory factory work work.. The Nurse Nursery ry asked asked the the Moakely, Moakely, WIPO Arbitration and court court for cont control rol of of the domain. domain. The Mediation Center Case No. D2005court ruled for Grosse, Grosse, finding her own- 0471 (July 1, 2005) [781] ership of the domain to be supported supported by  Comp Co mpla lain inan antt opera operate ted d a matt mattre ress ss her use of the websit websitee for criticis criticism m of  busines businesss under under the name 1-8001-800-MA MATTthe Nurser y.  TRESS. Respondent, who was not in Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004) [757]

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the mattress business, registered the mattress.com tress.com domain name. name. Complainant Complainant asked asked the Center Center for ownersh ownership ip of the domai domain n name name. The Cent Center er ruled ruled for for complainant, finding respondent to have registered the domain name in bad faith. Estate of Gorshin v. v. Martin, WIPO  Arbitration and Mediation Center Case No. D2005-0803 (Oct. 31, 2005) [789]

Frank Gorshin was an actor who had portr portray ayed ed a numbe numberr of a well well-k -kno nown wn characters in in movies. movies. During his career, Martin registered registered therealfrank therealfrankgorshin.gorshin.com as a domain name. After Gorshin’s Gorshin’s death, death, his estate estate asked asked the Center Center for ownersh ownership ip of of the domain domain name name.. The Center ruled for the estate, finding Martin to have registered the domain name in bad faith.

Deutsche Welle v. Diamondware Ltd., WIPO Arbitration and Mediation Center Case No. D2000-1202 (2001) [804]

Compla Complaina inant nt and respond respondent ent were were compan companies ies that that both both identi identifie fied d themthemselve selvess using using the the abbr abbrev evia iati tion on “DW “DW.” Respondent had registered the dw.com domain name. name. Complainant Complainant asked asked the the Cent Center er for owne ownersh rship ip of the the domai domain n name. name. The Center Center ruled for responden respondent, t, finding respondent to have no reason to know know about about compla complaina inant’ nt’s operati operations ons,,  which were based in a foreign country. country. Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14 (1st Cir. 2001) [806]

 Appellant had registered the corinthians.com domain name. Appellee  was the owner of the Corinthiaos soccer team in in Brazil. Brazil. Appellee Appellee gained gained ownerowner The Orange Bowl Committee, Inc. v. v. ship ship of the the doma domain in name name by filin filingg a Front and Center Tickets, Inc. / compla complaint int under under the Uniform Uniform Dispute Dispute Front and Center Entertainment, Resolution Resolution Policy Policy.. Appellant Appellant believ believed ed WIPO Arbitration and Mediation that he right rightful fully ly owne owned d the the doma domain in Center Case No. D2004-0947 (Jan. (Jan. 20, that name and sued to regain ownership. ownership. The 2005) [792] court court revers reversed ed the district district court’ court’ss dis The Orange Bowl Committee was missal of appellant’s appellant’s claim. the the owne ownerr of the the trad tradem emar arkk for for the the Orange Bowl. Front and Center Center regis- Dluhos v. Strasberg, 321 F.3d 365 (3d tered several domain names relating to Cir. 2003) [807] the the Oran Orange ge Bowl Bowl,, incl includ uding ing orangeorange The court found the Uniform Disbowlti bowltick ckets ets.ne .net. t. The domain domain name, name, pute Resolution Policy not to fall within however, led to a site that promoted tick- the scope of the Federal Arbitration Act. ets for various other sporting events in addition to the Orange Orange Bowl. The Com- Barcelona.com, Inc. v. Excelentisimo 330 F.3d F.3d mittee asked the Center for ownership of   Ayuntamiento de Barcelona, 330 the orangebo orangebowltic wltickets kets.net. .net. The Center Center 617 (4th Cir. 2003) [810] ruled for the Committee, finding Front  Appellant registered the barcelona.and Center to have no “legitimate inter- com domain name, intending to create a est” in the domain name.  website promoting tourism in Barcelona.  Appellee was the Barcelona City Council.  Appellee asked the court for ownership of the domai domain n name name.. The court court ruled ruled for appellant, finding “Barcelona” to be

47

descrip descripti tive ve and theref therefore ore inelig ineligibl iblee for Utah Lighthouse Ministry Ministr y v. v. trademark protection. Foundation for Apologetic Information and Research, 527 F.3d Fagnelli Plumbing Co. v. Gillece 1045 (10th Cir. 2008) [S-277] Pluming & Heating, Inc., 2011 WL 693349 (W. D. Pa. 2011) [S-261]

Fagnelli and Gillece operated competing peting plumb plumbing ing busin business esses es.. Fagne Fagnelli lli used the domain domain name name fagnel fagnellip liplumblumbing.com ing.com for for its website website.. Gillec Gillecee registere tered d the the domai domain n name name fagn fagnell elli.c i.com om,, such that a visitor going to fagnelli.com  would see Gillece’s Gillece’s website. Fagnelli aske asked d the the court court for for owne ownersh rship ip of the the fagnel fagnelli.c li.com om domain domain name. name. The court court ruled for Fagnelli, finding Gillece to have registered a confusing domain name with a bad-faith intent to profit.

 Appellant and appellee had opposing   views on the Mormon Mor mon Church. Appellee created a created a website that parodied appell appellant ant’’s website website.. The court court found appellee’s website to fall within the “safe harb harbor” or” prov provis isio ion n of the the An Anti ti-C -Cyb yberersquat squattin tingg Consum Consumer er Prot Protec ecti tion on Act, Act,  which protected fair us of trademarks. Southern Co. v. Dauben, Inc., 324 F.  App’x 309 (5th Cir. Cir. 2009) [S-281]

Southern Company operated a website under the domain name southerncompan companyy.com. .com. Dauben Dauben was was a “typ “typo o squatter” that had registered several misspe spellin lings of Sout outhern hern’’s name name for “dom “domai ain n park parking ing”” pages pages.. Southe Southern rn asked the court to stop Dauben from operating websites under the typo-squatted domains domains.. The court ruled for SouthSouthern.

Southern Grouts & Mortars v. 3M Co., 575 F.3d 1235 (11th Cir. 2009) [S267]

Continuing to renew the registration of a doma domain in name that that one one no longer longer uses in conjunction with any product is not bad-faith intent to profit.

Fields for Senate v. Toddles Inc., WIPO Arbitration and Mediation Center Case No. D2006-1510 (Mar. 14, 2007) [S-287]

DSPT International, Inter national, Inc. v. Nahum, 624 F.3d 1213 (9th Cir. 2010) [S-270]

DSPT was was a clothing clothing seller seller.. DSPT hired Nahum to design and administer is  website. Nahum owned the registration for DSPT’s DSPT’s domain name. The business relationship between DSPT and Nahum even eventua tuall llyy dete deteri rior orat ated ed,, with with Nahum Nahum leav leaving ing DSPT DSPT and and taki taking ng the the domai domain n name with with him. him. DSPT asked asked the court for ownership ownership of the domain domain name. name. The court ruled for DSPT, finding Nahum to have tried to use the domain name as leverage against DSPT. DSPT. The court found Nahu Nahum’ m’ss negot negotia iati tion on stra strate tegy gy to be a bad-faith intent to profit.

 Virginia Fields was running for politpolit ical office. office. An opponent opponent registered registered sevseveral eral varia variation tionss of her name as domain domain names, using them for websites that criticized cized her candid candidacy acy.. Fields Fields asked asked the Cent Center er for owne ownersh rship ip of the the domai domain n names. names. The Center Center ruled against Fields, Fields, findi finding ng her her name name not not to const constit itute ute a trademark. Hoteles Turísticos Unidos S.A. v.  Jomar Technologies, Technologies, WIPO  Arbitration and Mediation Center Case No. D2008-0136 (Apr. 3, 2008) [S-291]

Complainant operated the Eurostar Blue Hotel. Hotel. Respondent Respondent registered registered the the

48

domain name eurostarblue.com, using it for a website visitors to boycott complainant’s plainant’s hotel. Complainant asked the Cent Center er for owne owners rshi hip p of the the domai domain n name name.. The The Cent Center er rule ruled d for com com-plainant, plainant, finding respondent’ respondent’s use of the domain name to create a likelihood of  confusion.

announcement announcements. s. Respondent Respondent was a former member of the church, church, who had left after a disagreement with the minister. Respondent registered the domain name fbcglen fbcglenarde arden.co n.com, m, where where visito visitors rs were were redirected to another website, which criticized religion. religion. Complainant Complainant asked asked the Center Center for ownersh ownership ip of the fbcglena fbcglenarrden. den.com com dom domai ain n name. name. The Cent Center er ruled for complain complainant ant,, finding finding responrespondent to have created created a likelihood likelihood of confusion.

Southern California Regional Rail  Authority v. v. Arkow, Arkow, WIPO Case No. D2008-0430 (May 12, 2008) [S-293]

Complainant operated the Metrolink  rail service. service. Respondent Respondent registered registered the the domain name metrolinkrider.com, using  it for a webs website ite provi providi ding ng unof unoffic ficia iall Metr Metrol olin inkk informa informati tion. on. When When comcomplainant sent a cease-and-desist letter to respo respond nden entt conc concern ernin ingg the the webs websit ite, e, respondent respondent registered registered metrolinksuc metrolinksucks ks..com, using it for a “gripe site” about Metrolink. The Center Center ruled for respondent dent,, find finding ing respo respond nden entt to have have an interest in using the domain names for non-commerci non-commercial al communicati communications ons concerning Metrolink. First Baptist Church of Glenarden v. v.  Jones, WIPO Arbitration and Mediation Center Case No. D20090022 (Feb. 26, 2009) [S-293]

Complainant church operated a website at fbcglenarden.org, where it posted

Plan.net concept Spezialagentur fur Kommunication GmbH v. Yikilmaz, WIPO Arbitration and Mediation Center Case No. D2006-0082 (Mar. (Mar. 24, 2006) [S-296]

Compla Comp lain inan antt opera operate ted d a busine business ss  whose name was “Plan.net.” Respondent dent had regist registere ered d the domain domain name name plan.net, which was used for a “domain parking parking”” site. site. Complai Complainan nantt asked asked the Cent Center er for owne ownersh rship ip of the the plan plan.n .net et domai domain n name name. The Cent Center er ruled ruled for for respondent, finding respondent to have regist registere ered d plan.ne plan.nett in good faith faith.. The Center noted that respondent had registere tered d plan plan.n .net et beca becaus usee it cont contai aine ned d a common English word, not because he  wanted to profit from complainant.

49

RADEMARKS  AS SPEECH  TRADEMARKS AS

court to enjoin Welles from using the phrase. The court ruled for Welles, finding “Playmate “Playmate of the Year” Year” to be necesPetit Petition ioner er was was the organizer organizer of the sary to describe Welles’s former position.  The court, however, however, found that repeti“Gay Olympics,” whose events and ceretion of the abbreviat abbreviation ion “PMO “PMOY” was monies monies paralle paralleled led those of the official official tion not necessary to describe Welles. Olympics. Olympics. Respondent Respondent asked asked the Court Court to enjoin petitioner from using the term Mutual of Omaha Insurance Co. v. v. “Olympics” in conjunction with the gay  Novak, 836 F.2d 397 (8th Cir. 1987) sport sportin ingg event event.. The Court Court ruled ruled for for [838] respondent, respondent, finding that Congress could Mutual Mutual of Omaha had registered registered an reaso reasona nabl blyy have have conc conclu lude ded d that that any  any  “Ind “India ian n head head”” logo logo as a trad tradem emar ark. k. unapproved unapproved use of the term “Olympics” Novak produced t-shirts and other prodcould lead lead to consume consumerr confusion. confusion. The ucts bearing bearing parodies of the logo, which which dissent dissent argued argued that that the restric restriction tion was was featured featured phrases phrases such as “Nuclear Holooverly broad. caus caustt Insura Insuranc nce. e.”” Mutu Mutual al asked asked the

San Francisco Arts & Athletics, Inc.  v.  v. United States Olympic Committee, Committee, 483 U.S. 522 (1987) [817]

cour courtt to enjo enjoin in Nov Novak from from sell sellin ing  g  goods goods bearing bearing the the parod parodyy logos. logos. The court ruled for Mutual, finding survey   Appellant was a former member of  evidence evidence to show a likelihood likelihood of confuthe band Steppenwol Steppenwolf. f. The “Steppe “Steppennsion betwee between n Novak’ Novak’s parody parody and the  wolf ” trademark was owned by appellee. sion original original logo. logo. The dissent dissent criticized criticized the the  After leaving Steppenwolf, appellant advertised advertised himself himself as “formerly of Step- survey evidence for unduly suggesting a connection between the parody logo and penwolf. penwolf.”” Appellee Appellee asked asked the court court to enjoin enjoin appella appellant nt from using using “Steppe “Steppenn- Mutual.  wolf ” in his advertisements. The court Cliffs Notes, Inc. v. Bantam ruled for appellant, finding that appel- Doubleday Dell Publishing Group, lant’ lant’ss emphas emphasis is of “former” “former” made con- Inc., 886 F.2d 490 (2d Cir. 1989) [843] fusion unlikely. Clif Cliffs fs Notes otes publ publis ishe hed d “Clif Cliffs fs Kussbaum v. Steppenwolf  Productions, Inc. [828]

Notes” Notes” study study aids, aids, which which summari summarized zed commonly commonly taught taught novels. novels. Bantam Bantam published lished “Spy “Spy Notes, Notes,”” a parody parody of Cliffs Cliffs Notes Notes.. The parody parody resemb resembled led a Cliffs Cliffs Notes Notes book, book, with with a yell yellow ow cov cover and and diagonal black black stripes. stripes. The cover, cover, howhow-

Playboy Enterprises, Inc. v. Welles [831]

 Welles  Welles was a former Playboy Playmate mate of the the Yea Year. r. Welle elless operat operated ed a  website, which listed her credentials as Playmate of the Year. Year. Playboy asked the

50

ever, also displayed the phrase “A Satire” several times as well as the “Spy Books” logo. logo. Cliffs Cliffs Notes Notes asked asked the court court to enjoin the sale of the Spy Notes parody. parody.  The court cour t ruled r uled for Bantam, finding that relevant consumers would likely relaize that Spy Notes were not a Cliffs Notes product.  Anheuser-Busch,  Anheuser-Busch, Inc. v. v. Balducci Publications [852]

plaintiff and defendant targeted different audiences. Mattel, Inc. v. Universal Music International [859]

Mattel manufactured and sold Barbie dolls. Universal produced the recordings of a band band calle called d Aqua. Aqua. One of of Aqua’ Aqua’s songs was called “Barbie and Ken,” the lyrics of which which satirized the “Barbie “Barbie and Ken” Ken” image image promot promoted ed by by Mattel Mattel.. In perfo performin rmingg the the song song at conc concert ertss, one one band member played the “Barbie” role  while another played “Ken.” Mattel asked the court to stop Universal from distribu distributin tingg the song song. The court court ruled for Universal, finding the song to be a permi rmissibl ible use of the trademark  because it criticized Barbie herself.

Balducci published a parody advertisement tisement for Michelob Michelob beer. beer. The adveradvertisement showed a beer called “Michelob Oily Oily”” as part part of an envi enviro ronme nmenta ntalis listt message message.. Anheus Anheuser er-Bu -Busch sch asked asked the the court court to enjoi enjoin n the the publ publica icati tion on of the the adve adverti rtise semen ment. t. The cou court rt ruled ruled for  Anheuser-Busch, finding the parody to create create a likeli likelihoo hood d of confusi confusion. on. The Mattel Inc. v. Walking Mountain court noted that Balducci had used the Productions, 353 F.3d 792 (9th Cir. Michelob logo without modification. 2003) [868]  Yankee  Yankee Publishing Publishing [856]  Walking  Walking Mountain produced a series  Yankee  Yankee published the Farmer’s  of photographs photographs featuring featuring Barbie dolls in America published published New  bizarre scenes. Mattel asked asked the court to  Almanac . News America York magazine. magazine. News America copied enjoin enjoin Walking alking Mounta Mountain in from sellin selling  g  the the dist distin inct ctiv ivee styl stylee of the the  Almanac ’s copies copies of of the phot photogra ographs phs.. The court court cover for a holiday issue. Yankee asked asked ruled ruled for Walki alking ng Mo Mount untai ain, n, find finding  ing  the court to enjoin the publication of the  Walking  Walking Mountain to have made nomiissue. issue. The court court ruled for News News AmerAmer- native use of the Barbie image. ica, finding the publications to target dif- MasterCard International Inc. v. v. ferent sets of consumers. Nader 2000 Primary Committee, Inc., MGM-Pathe Communications [858]

Plai Plaint ntiff iff owne owned d the the trad tradem emar arkk for the the Pink Pink Panthe antherr carto cartoon on char charac acte terr. Defendant was a gay rights organization calling calling itself the “Pink Panther Patrol,” Patrol,”  whose purpose was to patrol neighborhoods hoods to discour discourage age anti-ga anti-gayy violen violence ce.. Plaintiff Plaintiff asked asked the court to enjoin defendant dant from from usin usingg the the “Pin “Pinkk Panth anther” er” name. The court ruled for plaintiff, plaintiff, finding a likelihood likelihood of of confusion. confusion. The court noted that the “Pink Panther” trademark   was sufficiently well-known that a likelihood of confusion confusion existed even even though

51

70 U.S.P.Q.2d 1046 (S.D.N.Y. 2004) [885]

Master MasterCar Card d promote promoted d its service servicess through through a series of “priceless” “priceless” commercommercials. cials. Ralph Nader’ Nader’ss political political campaign campaign promoted Ralph Nader using commercials with with a similar format. MasterCard MasterCard asked the court to enjoin the Nader campaig paign n from from imit imitat atin ingg Mast Master erCa Card rd’’s “price “priceles less” s” commer commercia cials ls.. The court court ruled for the campaign, finding that the campaign’s commercials did not create a likel likelih ihoo ood d of conf confusi usion on with with Mast MastererCard’s Card’s services. The court further found

the campai campaign gn’’s adverti advertisem sement entss not to dilute MasterCard’s trademark.

defendant not to be using the parody  logo in commerce. commerce. The court found that defen defenda dant nt was was using using the the logo logo only only to criticize criticize plaintiff plaintiff ’s working working conditions conditions,, not to promote a good or service.

Planned Parenthood Federation of   America, Inc. v. v. Bucci, 42 U.S.P U.S.P.Q.2d .Q.2d 1430 (S.D.N.Y. 1997) [889]

Plai Plaint ntiff iff owne owned d the the servic servicee mark  mark  “Planned Parenthood.” Defendant registere tered d the the plan planne nedp dpar aren enth thoo ood. d.co com m domain name and used it as the location of an antianti-abo abortio rtion n websi website te.. Plaint Plaintiff  iff  asked the court to enjoin defendant from using the domain name. name. The court ruled for plaintiff, finding that defendant had atte attemp mpte ted d to iden identi tify fy the the webs websit itee as being affiliat affiliated ed with plaintif plaintiff. f. The court noted that defendant’s website displayed “Welc “Welcome ome to the Planne Planned d Paren Parentho thood od Home Page” on the home page.

People for the Ethical Treatment Treatment of   Animals v. v. Doughney, Doughney, 263 F.3d F.3d 359 (4th Cir. 2001) [896]

Doug Doughne hneyy regi regist ster ered ed the the domai domain n name peta.org and used it for a website called called “Peopl “Peoplee for the Eating Eating of Tasty  asty   Animals.” PETA asked the court to enjoin Doughney from using the domain name. name. The court court ruled for PETA, PETA, finding Doughney’s site likely to prevent visitors from PETA PETA’s official website. website. The court further noted that Doughney had apparently registered the domain name in bad faith.  Jews for Jesus Jesus v. v. Brodsky, 993 993 F. F. Supp. 282 (D.N.J. 1998) [892] Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) [904] Plai Plaint ntiff iff was was an organ organiz izat atio ion n that that promo promote ted d the the conv conver ersi sion on of Jews ews to  Jerry Falwell was a well-known revChristianity Christianity.. Defendant Defendant registered registered the erend. Lamparello registered registered the domain domai domain n name namess jews jewsfor forje jesus sus.o .org rg and and name fallwell.com, using it for a website jews jews-f -for or-j -jes esus us.c .com om,, usin usingg them them for a criticizing criticizing Falwell Falwell’’s anti-gay anti-gay views. views. The  website promoting views opposing plain - home home page page disc discla laime imed d any any affil affilia iati tion on tiff ’s. Plaintiff Plaintiff asked asked the court to to enjoin enjoin  with Falwell and displayed a link to Faldefendant from using the domain names.  well’s  well’s official website. Falwell asked the  The court ruled for plaintiff, finding  court to enjoin Lamparello from operatdefendant to have created a “bogus” site ing the websi website te under under the fallwel fallwell.co l.com m in order to lure visitors visitors away from plain- domain name name.. The court ruled for Lamtiff ’s site. parello, parello, finding no likelihood likelihood of confusion. WHS Entertainment Ventures v. United Paperworkers Paperworkers International Inter national Union, 977 F. Supp. 946 (M. D. Tenn. 1998) [894]

 Toyota  Toyota Motor Sales U.S.A., U.S.A., Inc. v. v.  Tabari,  Tabari, 610 F.3d F.3d 1171 (9th Cir. Cir. 2010) [S-300]

Plaint Plaintiff iff operat operated ed a restaur restaurant ant and bar known known as the Whitehorse Whitehorse Saloon. Saloon. Defend Defendant ant was was a labor labor union. union. DefenDefendant dant protest protested ed worki working ng conditi conditions ons at plaintiff’s business by distributing flyers featu featurin ringg a paro parody dy of plain plainti tiff ff ’s logo logo. Plaintiff Plaintiff asked asked the court to enjoin defendants from distribut distributing ing the the flyers. flyers. The court court ruled for defend defendant ant,, finding finding the

 Appellees were “auto brokers,” brokers,” who facilitated facilitated negotiations between car buyers and car car dealers. dealers. Appellees Appellees operated operated  websites under the domain names buy-alexu lexu.c .com om and and buyo buyorl rlea ease sele lexu xuss.com .com..  Appellant asked the court to enjoin appellees appellees from using the domain names, names, arguin arguingg that that appell appellees ees were were infring infringing  ing  appellant’ appellant’ss trademark. trademark. The court court ruled

52

for appellee, appellee, finding appellee’s appellee’s domain  The court agreed, finding that Outkast names names to be nominativ nominativee use of appelappel- had misled listeners as to the contents of  lant’s mark. the song.  Anheuser-Busch v. v. VIP Products, 666 F. Supp. 2d 974 (E. D. Mo. 2008) [S307]

E.S.S. Entertainment 2000, Inc. v. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) [S-314]

 VIP sold “Butt Wiper” dog toys,  which parodied the Budweiser trademark. The court enjoined enjoined the sale sale of the toys toys,, finding finding survey survey eviden evidence ce to show  show  consumer confusion.

 Appellant operated a strip club called the “Play Pen.” Appellee was the develdeveloper oper of the the vide video o gam game Grand Grand Theft  Theft   Auto: San Andreas , which featured an ingame game strip strip club club call called ed the the “Pig “Pig Pen.” en.”  Appelant argued that appellee was Smith v. Wal-Mart Stores, 537 F. infringing infringing appellant’ appellant’ss trademark. trademark. The Supp. 2d 1302 (N. D. Ga. 2008) [Scourt ruled for appellee, finding that no 308] player was likely to confuse the in-game Smith sold t-shirts and stickers bear- strip club with plaintiff ’s establishment. ing alte altered red versi version onss of the the Wal-M al-Mart art Protectmarriage.com v. Courage logo logo, whic which h inclu include ded d sloga slogans ns such such as Campaign, 680 F. Supp. 2d 1225 (E. “Wal-Ocaust” “Wal-Ocaust” and “Wal-Qaeda.” “Wal-Qaeda.” WalD. Cal. 2010) [S-321] Mart asked the court to enjoin the sale of  merchandise merchandise bearing the altered altered logos, logos, Plaintiff Plaintiff was an organization organization opposarguin arguingg that that Smith Smith was infring infringing ing and ing gay gay marriag marriage. e. Defe Defend ndan antt was an dilutin dilutingg WalWal-Mart Mart’’s trade trademar mark. k. The organiz organizati ation on support supporting ing gay marriage marriage.. court court ruled for Smith, Smith, finding finding Smith’s Smith’s Plaintiff Plaintiff developed developed a logo for a website, website, logos to be parodies.  which featured a stylized stick-figure rep resen resenta tati tion on of a hete hetero rose sexu xual al coup couple le Parks v. LaFace Records, 329 F.3d 437  with children and the text “Yes “Yes on 8 Pro(6th Cir. 2003) [S-313] tect Marriage.” Defendant altered plain The band Outkast recorded a song  tiff’s logo to show a same-sex couple entitl entitled ed “Rosa “Rosa Park Parks. s.”” The song song had  with children and the text “Prop 8 Trial nothing to do with the personal history   Tracker.  Tracker.”” Plaintiff argued that defendant of Rosa Rosa Parks Parks,, contai containing ning only the line line  was infringing its trademark. The court “Eve “Everyb rybod odyy move move to the the back back of the the ruled for defendant, finding that defenbus.” bus.” Rosa Parks Parks argued argued that Outkast Outkast dant’s logo did not create a likelihood of   was infringing her right of publicity. publicity. confusion.

53

EMEDIES R EMEDIES

Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N. D. Cal. 2006) [912]

Soltex Polymer Corp. Cor p. v. v. Fortex Industries, Inc., 832 F.2d 1325 (2d Cir. 1987) [922]

Nova Wines sold wines under the “Marilyn” brand. “Marilyn” brand wines  were sold in bottles bearing photographs of Marily Marilyn n Monroe Monroe.. Adler Adler was was a comcompeting winery, which planned to launch its own line of “Marilyn “Marilyn Monroe” wines. wines. Nov Nova ask asked the the cour courtt a prel prelim imin inary  ary  injunction injunction to stop Adler from selling the competing wines. wines. The court ruled Nova, finding finding that that Nova’ Nova’ss status status as the sole sole seller seller of Monroe Monroe-bra -brande nded d wines wines would would be irrepa irreparab rably ly damage damaged d if Adle Adlerr were were allowed to use the Monroe brand.

Soltex Soltex produce produced d raw materi materials als for plast plastic icss manu manufa fact ctur urin ing, g, whic which h it sold sold under the “Fortilex” brand. Fortex produced duced rubber rubber product products, s, some of which which  were sold under its own “Fortilex” brand. Soltex asked asked the court court to enjoin enjoin Fortex from using the “Fortilex” brand, arguing that an injunction should issue  whenever there was a likelihood of o f confusion. The court ruled ruled for Fortex, Fortex, findfinding that courts should be free to use equitable discretion. Perfect Fit Industries v. Acme Quilting Co., 646 F.2d 800 (2d Cir. 1981) [927]

Home Box Office v. Showtime, 832 F.2d 1311 (2d Cir. 1987)

HBO and Showti Showtime me were were unaffil unaffiliiated cable cable television channels. Showtime launched launched a series series of advertiseme advertisements nts with the slogan “Showtime & HBO,” encouraging viewers to purchase the two channels together together.. HBO asked asked the court court for a preliminary injunction to stop Showtime from using the advertisements. The court ruled for HBO, finding Showtime to have created the impression that HBO and and itsel itselff were were affil affilia iate ted. d. The cour courtt noted that an injunction was necessary to ensure that Showtime did not engage in further use of the HBO brand. brand.

Defendant appealed the trial court’s decision decision to order the recall of infringing  infringing  products. products. The court affirmed, affirmed, finding finding it  within the discretion of the trial court to orde orderr a reca recall ll if the the inte intere rest stss of the the trademark owner required it.

54

Nikon, Inc. v. Ikon Corp., 987 F.2d 91 (2d Cir. 1993) [928]

Defend Defendant ant Ikon Ikon appeal appealed ed the trial trial court’ court’ss decisio decision n to order order the recall recall of  “Ikon” brand cameras, which had been found to infringe Nikon’ Nikon’s trademark trademark for “Nikon” cameras. The court affirmed.

“Gorgeous” brand products were subject to seiz seizure ure by Custo Customs ms for infri infringi nging  ng  Gucci Gucci Americ Americaa appeal appealed ed the trial trial Giorgio Armani’s “Giorgio” trademark. appealed the the decision. decision. The court court court’ court’ss refusa refusall to enjoin enjoin Daffy’ Daffy’ss from Ross appealed packaging of “Gorselling counterfeit Gucci handbags. The affirmed, finding the packaging court court affirmed, affirmed, finding finding that that custom customers ers geous” products to create a likelihood of   who had bought the counterfeits were confusion with Armani products. unlikely to believe that they owned a real K Mart Corp. v. Cartier, Inc., 486 U.S. Gucci Gucci product product.. The dissen dissentt critici criticized zed 281 (1988) [992] the ruling for disregarding the purpose Customs Customs had promul promulgate gated d regularegulaof trademark law. law. tion tionss prohib prohibit iting ing the the import importat atio ion n of  “gray market market”” goods. goods. The court mostly  mostly   Taco  Taco Cabana International, Inc. v. v. affirmed the regulations.  Two Pesos, Pesos, Inc., 932 F.2d F.2d 1113 (5th Cir. 1991) [934] Bourdeau Brothers v. ITC, 444 F.3d Gucci America, Inc. v. Daffy’s, Inc., 354 F.3d 228 (3d Cir. 2003) [929]

 Two  Two Pesos was found to have infringed Taco Cabana’s trade dress for Mexi Mexica can n resta restaur uran ants ts.. Two Peso Pesoss appealed appealed the trial court’s court’s award of damages, ages, arguing arguing that that damages damages requir required ed a finding of actual actual confusio confusion. n. The court court affirmed, finding that actual confusion  was not a prerequisite prerequisi te for damages. The court found f ound that Two Two Pesos’s presence in the the mark market et depri deprive ved d Taco aco Caba Cabana na of  profits.

1317 (Fed. Cir. 2006) [996]

Bourdeau imported John Deere har vestered intended for the European mar ket to the United States. The ITC found the importat importation ion of the harveste harvesters rs to be tradem trademark ark infringe infringement ment.. Bourdea Bourdeau u appe appeal aleed the find findin ingg. The The court ourt affirmed, applying applying a standard of “material difference” between goods destined for disti distinct nct geogra geographi phicc markets markets.. The cour courtt note noted d that that the the Euro Europe pean an harhar vesters had different lighting fixtures, Banjo Buddies, Inc. v. Renosky, 399 safety features, and warning labels from F.3d 168 (3d Cir. 2005) [937] Renosky was found to have infringed their American counterparts. Banjo Buddies’ trademark for a fishing  North American Medical Corp. v. lure. Renosky Renosky appealed appealed the trial trial court’s court’s  Axiom Worldwide, Inc., 552 F.3d F.3d 1211 decision decision to order him to disgorge profits (11th Cir. 2008) [S-325] to Banjo Buddies, arguing that disgorge The court adapted the eBay  rule, ment ment requ requir ired ed a find findin ingg of will willfu full  which is normally applied to patent infringement. infringement. The court court affirmed, affirmed, findfindcase cases, s, to the the issua issuanc ncee of injun injunct ctio ions ns ing that willfulness was not a prerequisite against trademark infringement. for disgorgement. Nightingale Home Healthcare, Inc. Ross Cosmetics Distribution Centers  v.  v. Anodyne Therapy, Therapy, LLC, 626 F.3d F.3d  v.  v. United States, 34 U.S.P U.S.P.Q.2 .Q.2d d 1758 958 (7th Cir. 2010) [S-328] (Ct. Int’l Trade 1994) [988]  The court found that attorney’s fees f ees Ross Cosmetics sold cosmetic prod- should be awarded against a party that ucts under under the “Gorgeous” brand. Ross had brought claims for a purpose unrerece receiv ived ed noti notice ce from from Cust Custom omss that that lated to obtaining a favorable judgment.

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