Contents List

Note, this colored font indicates: Student work J

DISCUSS HOMEWORK: Write a short legal memo advising your clients. Be thorough. Refer to the EU 40/94, recent ECJ cases. For guidance see the OMHI Webpage.

[1] Hypothetical: Mr. Magoo, a Greek, wants to register his trademark in Europe for his new fast food restaurant " a big yellow "M" to be used on all his merchandise and at the entrance of his fast food burger shop. What problems might he expect when he applies for a community trademark? What would you advise him?

[2] The Yogo-my-Yogurt Company, a U.S. company, wants to register its logo for its company in Europe. It suggests a mark showing a container of yogurt wrapped in the French flag. What problems might Y-m-Y expect when they apply for a Community trademark? 

[3] Ms. Ima Clever would like to protect her logo that was designed by her great-uncle, Picasso (a Cubist face of a woman. ) She would like to receive as broad protection as possible. She would like to save money, but she realizes the potential value of her logo and wants it protected in multi-jurisdictions. She has no particular use for the logo at this time, but may sell it eventually for use by a hand-end clothes design company.

Read EC Regulation (EU - COUNCIL REGULATION (EC) No 40/94 of 20 December 1993 on the Community trade mark : AND BRIEF the ECJ case: Hershey Foods Corporation v. OHIM (5 June 2000):

Read: Hershey's Kisses Chocolates " article:



"A trademark = any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors."

U.S. law - "The purpose and intent of the Trademark Act - regulate commerce & by:

o        making actionable deceptive and misleading use of marks

o        preventing unfair competition

o        preventing fraud and deception created by use of reproductions, copies, counterfeits or colorable imitations of registered marks

o        providing rights and remedies created by treaties and conventions"

Trademarks can be:

a. Words: company names, surnames, forenames, geographical names and any other words or sets of words, whether invented or not, and slogans

b. Letters and Numerals: e.g one or more letters, one or more numerals or any combination thereof

c. Devices: devices, drawings and symbols and also two-dimensional

representations of goods or containers

d. Colored Marks: This category includes words, devices - in color, as well as color combinations and color as such

e. Three-Dimensional Signs -A typical category of three-dimensional signs is the shape of the goods or their packaging. However, other three-dimensional signs such as the three-pointed Mercedes star can serve as a trademark

f. Audible Signs (Sound Marks): Two typical categories of sound marks can be distinguished, namely those that can be transcribed in musical notes or other symbols and others (e.g. the cry of an animal) 

Jurisdiction of trademark cases for the protection through use and registration, enforcement 

1.          National " Trademark and Patent Office

2.          Regional " Community law

3.          International 

Review: Paris Convention, Article 6, et. Seq

ANSWER the following questions:

1. On the international level, what degree of harmonization can you expect?

2. What kind of protection would a trademark registered in the United States have in France? (not yet registered in France)

3. What kind of protection would a trademark registered in France have in the United States? (not yet registered in the U.S.)

I. CRITERIA for Registration/Refusal [see below, Rights Arising from Trademark Registration: Protect through Infringement proceedings " same standards used for denial of registration AND infringement defense]

REVIEW DOMESTIC LAW (Latvia, Lithuania, Estonia) - answer the following questions

1.      What kind of signs can be registered?

2.      What signs cannot be registered?

3.      Can your application for registration be challenged? On what grounds?

United States law- [Lanham Act ] - USC -TITLE 15, CHAP. 22 (I) Sec. 1052.

[Note: Much of the information on U.S. trademark law was found at: "United States Trademark Law Overview "

Find and read: Trademark Act 1052 - Unregistrable Trademarks:

         1052 (a),(b),(c),(d) & (e) prohibit registration of a trademark in cases where:

o        The mark is immoral, deceptive, scandalous, disparaging or identifies a place other than the place of origin for wine or spirits. (a)

o        The mark compromises flags, insignias etc. of governmental entities. (b)

o        The mark is a name, portrait or signature of a living person or, during his widow's lifetime, a portrait of a deceased President. (c)

o        The mark is confusingly similar to a registered mark. (d)

o        The mark is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, geographically deceptively misdescriptive, a surname or, as a whole, is functional. (e)

Unregistrable Trademarks

(a)               Immoral/scandalous matter (note: may be connected with anti-competition laws)

Read handout- Secret memos show cigarette-maker targeted teens:

(b)               Marks that disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute

(c)                geographical indication " "a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods"

(d)               Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof

(e)               (Common) surnames - Smith, Brown, Nakamoto, Barry

(f)                 fails to be distinctive mark: DISTINCTIVENESS

Distinctiveness: - The ability of a mark to distinguish in commerce the goods and services of one party form those of another

Serves two purposes:

a. Insure - mark identifies a single source.

b. Insure - all competitors free to use non-distinctive terms to describe their goods and services.

1. Generic Marks - Marks which are the common name of goods and/or services or a category of goods and/or services

a.      Generic marks may never be protected

         "Primary Significance Test" (i.e. primary significance to the consumer, by hearing the product name, is the PRODUCT, Not the good/service)

         EXCEPTION: generic mark can be protected if

READ HANDOUT: "Distinctiveness, Generic marks"

b. Rules " to prevent loss of distinctiveness of trademark and turn it into a generic" term -Avoid:

a.  Trademark " DO NOT USE or INSTEAD OF, the product designation (facial tissue, vacuum cleaner, moving stairs, refrigerator, plastic wrap)

1.      By systematically using a product designation in addition to the trademark - proprietor clearly informs the public that his mark identifies a specific product as one in certain category.

2.      especially important if the trademark proprietor has invented a totally new product which at the outset is the only one in the category


b) Smart: "instant coffee"

a.      NESCAFE = first product invented by co. that invented instant coffee

b.      labels- instant coffee"

b.              Trademarks should always be used as true adjectives and never as nouns, i.e. words trademark should not be used with an article, and the possessive "s" and the plural form should be avoided.

Mistake: "A NESCAFE in the morning will wake you up.", "Order you and your love two NESCAFEs."

c. Ensure that 3rd parties and public do not misuse

d. IMPORTANT: trademark should not be used as or instead of the product description in dictionaries, official publications, journals

e.      High light the trademark " stand out from its surroundings

1.      Identify - trademark notice

2.      U.S. Trademark law - "Registered with the United States Patent and Trademark Office"; followed by circled R .

3.      Paris Convention, Art. 5D " requiring a trademark notice on goods is prohibited

4.      However, is widely recognized and used

2.      Descriptive Marks - Marks - describe in plain and ordinary use of the language - features, qualities, ingredients, or uses of products and/or services.

SECONDARY MEANING and Primary significance test:

         Descriptive marks - achieve secondary meaning when significant number of consumers understand it ("pink", "Cognac") to refer exclusively to a particular product

o        the term's primary meaning ( a color, a region in France) surpassed in prominence by its secondary one, which takes on primary meaning

o        Geographically descriptive mark when the mark no longer causes the public to associate the goods with a particular place, but to associate the goods with a particular commercial source.

o        For a generic term to satisfy the "Primary Significance Test", it must no longer have the ability to serve as the name for the genus of goods or services involved = very high standard.

         Courts examine the following factors:

1.      The length and manner of use

2.      The nature and extent of advertising and promotion; and

3.      The efforts ADVERTISING - promoting conscious connection between name, word, term, or mark and the product, service, or business in the minds of consumers

4.      Consumer surveys

         The party seeking to protect a name, word, term, or mark bears the burden of proving that secondary meaning has attached.

o        A mark's acquisition of secondary meaning will allow it to become registered even though registration would otherwise be prohibited


READ AND BRIEF: In Re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985)

  1. Suggestive Marks

a.      evoke features of products and/or services in a way that requires the use of the consumer's imagination, thought or perception

b.      does not merely describe them

c.       Suggestive marks are considered inherently distinctive protectible without any further showing.

  1. Arbitrary Marks

a.       Use commonly known words or terms unusual or unfamiliar way

b.      not typically considered related to the goods and/or services

c.       Arbitrary marks = considered inherently distinctive and, thus, are protectible without any further showing.

  1. Fanciful Marks

a.      Words or terms created solely for use as trademarks

b.      Fanciful marks = considered inherently distinctive and, thus, are protectible without any further showing

c.       Fanciful marks can, however, become generic if they become the common name for the goods and/or services in relation to which they are used.

6. Geographically Descriptive Marks

READ handout - re: Delaware & Hudson Canal Co. v. Clark, 80 U.S. 311 (1871)

SIMILAR MARKS - FACTORS for Assessing likelihood of Confusion for similar marks

Brief CASE " In re E.I. duPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973)

The Court of Appeals found consideration of the following factors to be the proper means of determining likelihood of confusion for similar marks under 1052(d):

Be ready to EXPLAIN

1.      The similarity or dissimilarity of the marks - appearance, sound, connotation and commercial impression.

2.      The similarity or dissimilarity - nature of the goods or services [in] which a prior mark is in use.

3.      The similarity or dissimilarity - established, likely-to-continue trade channels.

4.      The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.

5.      The fame of the prior mark (sales, advertising, length of use).

6.      The number and nature of similar marks in use on similar goods.

7.      The nature and extent of any actual confusion.

8.      The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

9.      The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).

10.  The market interface between the applicant and the owner of a prior mark:

(a) a mere "consent" to register or use.
(b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
(c) assignment of mark, application, registration and goodwill of the related business.
(d) laches and estoppel attributable to the owner of the prior mark and indicative of lack of confusion.

11.  The extent to which applicant has a right to exclude others from use of its mark on its goods.

12.  The extent of potential confusion, i.e., whether de minimis or substantial.

13.  Any other established fact probative of the effect of use.

A&H SPORTSWEAR, INC v. Victoria"s Secret Stores, Inc. (U.S. Court of Appeals, 3rd Cir. 2000) : -"
The critical question in this trademark infringement case, before us for the second time, is whether a typical consumer is likely to confuse MIRACLESUIT swimwear with THE MIRACLE BRA swimwear."


REVIEW and answer questions- DOMESTIC LAWS (Estonia, Latvia, Lithuania)

1. What is required to register a trademark? (outline steps)

2. What are grounds for refusal?

3. Duration?


a. Application for Registration

1.         National government authority - Patent and Trademark Office

2.         Mandatory application form

3.         Foreigners " need agent?

4.         Requirements

a.      Trademark Law Treaty

                                                                                i.      (TLT), Art. 3 " exhaustive list of information needed

                                                                              ii.      prohibit certain formalities (authentication, legalization)

                                                                            iii.      Model International Forms

b.      Sign " possible to register in book/card

                                                                                i.      in color

                                                                              ii.      3 " dimensional " graphically represented

                                                                            iii.      publication in trademark journal

c.       List goods (classification of goods) for which the sign is registered " separate or one application

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks " establish international classification of goods and services

d.      fees

b. Examination as to Substance

1.         Grounds for Refusal

a.      Objective grounds " sufficiently distinctive, not deceptive, not immoral

b.      Relative grounds " whether rights applied for are identical or similar to prior rights that have been applied for or granted for identical or similar goods

2.         Three approaches " examination by the office [note: co. carry out search before applying or using trademark, protect important registered trademarks " watched by trademark agents/international watching service]

a.      British system (UK, Portugal, Spain, Scandinavia)

                                                                                                  i.      Absolute

                                                                                                ii.      Relative

                                                                                              iii.      Opposition procedure

b.      German system (adopted by European Community Trade Mark system)

                                                                                                  i.      Absolute

                                                                                                ii.      Administration opposition procedure " owner of prior rights can oppose, simplified and inexpensive procedure

                                                                                              iii.      Preferred by industry less time consuming, more flexible


c. Refusal of Registration " total or partial

1.      Applicant"s right to make observations

2.      Right to appeal

a.      With registrar

b.      Administrative appeal board

c.       Court

d. Registration date " office issues certificate

1.      date of registration " create owner"s exclusive right

2.      priority right

a.      dates back to date of filing of registration

b.      Paris Convention, Art. 4

                                                                                      i.      Claim priority of national registration

                                                                                     ii.      Within 6 months of filing date of 1st application

e. Duration and Renewal

1.      no time limit (no monopoly right)

2.      initial time limit, but

3.      renewal

a.      fees

                                                                                      i.      collect fees

                                                                                    ii.      limit trademarks

                                                                                  iii.      remove unwanted, out of date trademarks - should not be too low, tho. Not excessive (than the original registration fee)

                                                                      iv.      avoid need for request for removal procedures for unused mark procedures (costly, time-consuming, not always successful)

b.      no re-examination

4. United States

1.      Federal and state laws

2. certificate

a. federal trademark registration

1. in effect for ten years,

2.      provided that an affidavit of continued use is filed in the sixth year.

3.      A federal registration may be renewed for any number of successive ten-year terms so long as the mark is still in use in commerce.

b. Duration of state registrations varies from state to state.

f. Publication and Access to Register

1.      Owners of prior rights " opposition, action for cancellation

2.      Public

g. Removal of the Trademark from the Register " loss of rights

1.      Failure to Renew " period of grace

2.      Request of Registered Owner

3.      Failure to Use (full or partial)

a.      Interested party " ask for cancellation

b.      Owner " prove use or justify non-use

4.      Cancellation Nullity (should not have been registered in the first place)

a.      Request of 3rd Party " ex officio

b.      Court " declare null and void

c.       Grounds: existing at time of registration

                                                                                                  i.      Lack of distinctiveness

                                                                                                ii.      Generic

                                                                                              iii.      deceptive

                                                                                               iv.      exception: distinctivenesstrademark becomes distinctive

III. Rights Arising from Trademark Registration

1.      protects trademark owner's commercial identity (goodwill, reputation, and investment in advertising)

2.      gives trademark owner - exclusive right to use the trademark on the type of goods or services for which the owner is using the trademark.

3.      Any person who uses a trademark in connection with goods or services in a way that is likely to cause confusion is an infringer.

1.      Exclusive right to use

a.       Affix mark on goods, containers, packaging, labels, etc. or to use it in any other way in relation to the goods for which it is registered

b.      Exclude others from using

c.       Introduce the goods to the market under the trademark, BUT


EU EC directive - 89/104/EEC of the Council (1988):

ECJ cases - Zino Davidoff SA v A & G Imports, Levi Strauss & Co Ltd, Levi Strauss (UK) Ltd v Tesco Stores, Tesco plc and Costco Wholesale UK Ltd:

1. "Exhaustion of the trademark right" " (introduction for FIRST TIME)

"exhaustion of trademark right"/parallel imports/"grey marketing"- Parallel importing, or "grey marketing"

1.      when trademark owner INTRODUCES and SELLS product on market under his mark

2.      trademark owner CANNOT object to further sales of the product in the course of trade

3.      3RD Party may - bring in authentic branded product to a market

4.      through distribution channels - NOT authorized by the manufacturer

5.      Why?

1) Provide retailers with branded goods - more affordable price than the selective or exclusive distribution network keep prices at lower level for consumers

2) = Powerful barrier to the development of counterfeiting

6. Limitation of parallel imports " owner"s rights continue

a.       exclusive right affix trademark on goods and their packaging, containers, labels, etc.

b.      exclusive right to use his mark in advertising, on business papers, documents

c.       right to sue under infringement action or administrative opposition procedure

d.      NO - repacking of goods bearing owner"s mark,

e.       NO - destruction of mark on the goods,

f.        NO - alteration and subsequent sale of products under different mark

g.       NO - Altering the product and selling it under the same mark

1)NO - use of an identical or similar sign for identical or SIMILAR GOODS (infringement)

2)      NO - application for the registration of a confusingly similar trademark (opposition procedure)

3)      NO " CONFUSION! To consumer

III. PROTECTION of TRADEMARK (Common law and Paris Convention)

A.          USE [Common law protection]" protection - based on use alone

1.      Common law " protection based on use

a)      United States

2.      Registration confirms the trademark right

a)      already acquired by use

b)      first user priority in a trademark dispute, NOT the one who first registered the trademark

B. REGISTRATION - full trademark protection is properly secured only by registration (Paris Convention) 


         Exception " WELL-KNOWN TRADEMARKS: 

Paris Convention, Article 6bis
(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

1.      Economics

2.      Grace period 3 " 5 years

3.      Consequence of non-Use

a.       registration - open to cancellation - request person with a legitimate interest

b.      registered owner - prove use B/P (Burden of Proof)

4. UNITED STATES: Abandonment of a mark occurs if

c.       use is discontinued and

d.      no intention to resume it or

e.       a mark becomes, through omissive or commissive conduct of its owner, generic or otherwise ceases to be identifying.

o        Non-use for three years is prima facie evidence of abandonment.

o        Use of a mark must be in the ordinary course of business and not simply to preserve rights in it.


1.         Improper use cancellation " liable for removal from the Register

-         transformation into GENERIC NAME

-         improper use by owner

-         improper use by 3rd party

2.         significance is lost " trade circles, consumers, public 

IV. ENFORCEMENT " Opposition to registration procedures/Infringement proceedings (civil suit)

A. OPPOSITION proceedings




Trademark Act 1063 Opposition to Registration


a.       Trademark owners can obtain injunctions against the confusing use of their trademarks by others

b.      Collect damages for infringement.

Check - DOMESTIC LAW " Infringement and remedies

COMPARE US law with Domestic law:

UNITED STATES LAW - USC - Sec. 1114 - Remedies; infringement&

(1) Any person who shall, without the consent of the registrant -

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

As used in this paragraph, the term ''any person'' includes the United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, or other persons acting for the United States and with the authorization and consent of the United States, and any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. The United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.

(2) Notwithstanding any other provision of this chapter, the remedies given to the owner of a right infringed under this chapter or to a person bringing an action under section 1125(a) or (d) of this title shall be limited as follows:

(A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 1125(a) of this title shall be entitled as against such infringer or violator only to an injunction against future printing.

(B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510(12) of title 18, the remedies of the owner of the right infringed or person bringing the action under section 1125(a) of this title as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators.

(C) Injunctive relief shall not be available to the owner of the right infringed or person bringing the action under section 1125(a) of this title with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter or violating matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter.

1. Elements of Trademark Infringement

         The likelihood of consumer confusion is the hallmark of trademark infringement.

o        In assessing the likelihood of consumer confusion under any of the factor tests below, no single factor is determinative and the weight to be given them in any given case will necessarily differ.

         The factors are merely a guideline. Not all of them will be applicable to every case and courts are not generally required to use them at all.

Paris Convention -Trademark Piracy - registrations or use of a generally well-known foreign trademark that is not registered in the country or is invalid as a result of non-use.

The Paris Convention, Article 6bis(1) - a well-known trademark must be protected even if it is not registered in the country.

1. CONFUSION " use in commerce

a.       Use in commerce means bona fide use of a mark in relation to goods and/or services in the ordinary course of business - for goods this means placement of a trademark on them, their containers, displays, tags, labels or associated documents.

b.      CASE & BRIEF Polaroid v. Polarad (U.S. Ct. of Appeals , 2nd Cir. " 1961):

Polaroid case (Polaroid test): - Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.

Polaroid Test - The Polaroid Test is a balancing test which was created by the Second Circuit for infringement assessments where use in relation to non-competing goods and services is involved, but it is applied by this Circuit to competing uses, as well. If similar marks have been used in commerce.

c. no actual confusion need be found; a likelihood is all that is required


Champion v. Champion, 1996 FED App. 0094P (U.S. Ct. of Appeals - 6th Cir.): -Likelihood of confusion - defining the trade area where infringer continuously used the mark prior to proprietor"s registration

a. Similarity of Goods

1.      Confusion to consumer - goods are similar if, when offered for sale under an identical mark, the consuming public would be likely to believe that they came from the same source

a.      Standards for Determining Likelihood of Confusion with a Similar Mark

1.      US FEDERAL LAW " Title 15, Chapter 22 (I)Sec. 1052. - Trademarks registrable on principal register; concurrent registration:

2.      In re E.I. duPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973)

b. Similarity of Trademarks


Confusion to consumer

a.       Used for similar goods

b.      Sign closely resembles the prior mark " consumers misled as to origin of goods (consumer may fail to buy the product she wants- bad for consumer, bad for trademark owner " loses sale

1)      consumer has average memory

2)      consumer"s first impression

3)      Strict v. less strict test for similar trade markds

a.       children, poorly educated consumer v. sophisticated buyer

                                                                                 i.      costly medical machine, car, aircraft v.

                                                                               ii.      product in self service store " wash soap, candy

                                                                              iii.      pharmaceuticals " serious consequences

1.      pharmacists " prescription drugs

2.      consumer - over-the counter drugs

c.       Structure of words

1)      common prefixes " important

2)      common suffixes " less important

3)      long words with common or similar beginnings (important) v. short words (less important)

d.      Similarity in pronunciation

e.       Similarity in writing, graphic presentation of the trademark

f.        Similarity in meaning - DREAMLAND and SLUMBERLAND for mattresses).

g.       Highly distinctive marks " coined or arbitrarily used (Kodak) v. associative meanings

1)      coined

2)      descriptive

h. EXCEPTION: series mark all held by same trademark owner


read HANDOUT 5 - Counterfeiting

"Please be advised that REEBOK, GRAPHLITE, HEXALITE, THE PUMP, ABOVE THE RIM, ATR, the ATR Triangle Design, BLACKTOP, PRESEASON, INSTRUCTOR, the Starcrest Design, the Stripecheck II Design Logo, MAN, CELERITY, EX-O-FIT, VENTILATOR, AGILITY, BIG THINKING IN LITTLE SIZES, Ball Device, and the Stripecheck Design are registered trademarks, and INSTAPUMP, DURACOURT, PURELITE, GRAPHWEAVE, DYNAMAX, DMX, and AEROSTEP are trademarks, and BODYWALK, CITY JAM, the REEBOK UNIVERSITY Logo, STEP REEBOK, SLIDE REEBOK, and SOLE DIFFERENCE are trademarks and service marks of Reebok International. SHAQ, SHAQ ATTAQ, the SHAQ Logo, and the DunkMan Logo are trademarks of Mine O'Mine, Inc. THE BIG HURT is a trademark of Leader Enterprises.

Please be advised that the images of people or places available in REEBOK.COM are either the property of, or used with permission by, Reebok. The use or misuse of those images except as permitted by this agreement is expressly prohibited. Any impermissible use or misuse of such images may be a violation of copyright law, trademark law, the law of slander and libel, the law of privacy and publicity, and communications regulations and statutes.

Please be advised that Reebok actively and aggressively enforces its intellectual property rights to the fullest extent of the law."

Legal Protection Against Counterfeiting

1.      If bear a trademark " trademark infringement

2.      Criminal law: criminal sanctions (incl. Prison, fines)

3.      UK: Anton Piller order

a.       Goods confiscated " customs confiscate

b.      Holder " obliged to inform genuine trademark owner of source

3. Imitation of a product " fraud, anti-competition, trademark infringement

1.      Identical in the generic sense of the term AND

2.      Gives the impression of being the genuine product (for instance a LOUIS VUITTON bag)

a.       originating from the genuine manufacturer or trader

b.      The offering of such a counterfeit product is only meaningful, of course, if the genuine product is known to the consumer - can also be known to a small group of specialized consumers only, such as brakes to be used for cars, or aircraft, or pesticides known to clients in agriculture.

3.      DANGEROUS -"a whole year"s crop in a large part of Africa was once destroyed by the use of a counterfeit; pharmaceuticals

4.      EXAMPLES: LOUIS VUITTON bags, the false ROLEX, CARTIER and other luxury watches, the false PUMA and REEBOK sports shoes, the false LACOSTE sports shirts and so on.

5.      Worldwide sales of some counterfeit products may exceed those of the genuine products.


a.           counterfeiting is an economic crime, comparable to theft

b.          deceive the consumer

c.           damage the reputation of the genuine manufacturer

d.          do not pay taxes and other duties to the State

4. Imitation of Labels and Packaging " (see unfair competition, dilution, tarnishment, cybersquatting)

Compare with counterfeiting

1.      the label or packaging of the competing product is imitated (like counterfeit)

2.      no impression of being genuine

3.      uses own name " often, uses trademark confusingly similar to competitor

4.      not criminal- but - unfair methods of competition

a.       takes advantage of reputation of competing product

b.      gives own product an appearance similar - causes confusion to consumer

c.       uses color and graphic elements identical or very similar to competitor"s label or packaging [note: labels and packaging are rarely registered as trademarks- not protected under trademark law unfair competition law (pass off one"s own products as that of the other)

VI. Cancellation of Registration

Check DOMESTIC law

COMPARE: U.S. Trademark Act 1064 - Petitions to Cancel

VII. UNFAIR COMPETITION and Anti-competition suits (e.g. false representation in advertising) " U.S. Section 1125 "no "confusion" required

CHECK - Trademark Act 1125 Unfair Competition

1. Trademark Act 1125(a) False Designations of Origin and False Representations

a. Unfair competition purpose

c.       Prohibits

1)      false designation of origin of goods and services

2)      false representations or descriptions

1) False Designation of Origin:

READ - Johnson v. Jones, 149 F.3d 47 (6th Cir. 1998)

1.      A false designation of origin;

2.      The false designation of origin has a substantial effect on interstate commerce; and

3.      The false designation of origin creates a likelihood of confusion among the consuming public.

2) False representations or descriptions in relation to goods and services

1.      U.S. law " protection of unregistered trademarks " unfair competiton

2.      Likelihood of confusion, mistake, or misrepresentation in the marketplace in relation to the source or nature of goods or services

3.      Product design is protected under Protection of Trade Dress under 1125(a):

a. Protection of Unregistered Trade Dress under 1125

READ 1125:

READ and DISCUSS: Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)

b. Product design - distinguished within the category of unregistered trade dress:

READ: Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,       U.S.       (2000)

c. Titles of artistic works can be protected under 1125(a) if they are distinctive or have obtained secondary meaning.

d. Dilution - Trademark Act 1125(c) Federal Trademark Dilution Act (1995) " blurring and tarnishment

  1. Dilution = The unauthorized commercial use of a party's rightfully held well known mark or a similar mark in association with goods or services different than or the same as those in the well known use(s), such that the original mark's ability to identify the rightful user as the source of goods or services or to carry associations of quality is impaired.
  2. owner of a "famous" mark - right to seek an injunction, damages ([possibly trebled] - case of another party's commercial use of the owner's famous mark would result or has resulted in the dilution of the mark's "distinctive quality".
    1. "famous" - factors

                                                               i.      degree of inherent or acquired distinctiveness of the mark

                                                             ii.      duration and extent of use of the mark in connection with the goods or services with which the mark is used

                                                            iii.      duration and extent of advertising and publicity for the mark

                                                           iv.      geographical extent of the trading area in which the mark is used

                                                             v.      channels of trade for the goods or services in relation to which the mark is used

                                                           vi.      degree of recognition of the mark in the trading areas and channels of trade used by the mark's owner and the person against whom dilution is alleged

                                                          vii.      nature and extent of use of the same or similar marks by third parties

                                                        viii.      EXCEPTIONS

1.      Comparative advertising

2.      Non-commercial use

3.      News reporting

    1. Commercial use
    2. No likelihood of confusion, BUT - Dilution of the mark
    3. AIM: Distinctive quality is lost

3. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987): - "Anti-dilution statutes have developed to fill a void left by the failure of trademark infringement law to curb the unauthorized use of marks where there is no likelihood of confusion between the original use and the infringing use. The law of trademark dilution aims to protect the distinctive quality of a trademark from deterioration caused by its use on dissimilar products... The overriding purpose of anti-dilution statutes is to prohibit a merchant of noncompetitive goods from selling its products by trading on the goodwill and reputation of another's mark."

"A trademark owner may obtain relief under an anti-dilution statute if his mark is distinctive and there is a likelihood of dilution due to (1) injury to the value of the mark caused by actual or potential confusion, (2) diminution in the uniqueness and individuality of the mark, or (3) injury resulting from use of the mark in a manner that tarnishes or appropriates the goodwill and reputation associated with plaintiff's mark." L.L.Bean case

4.      Blurring

a.      No confusion as to source, BUT diluted mark or one similar to it is used in relation to another party's goods or services, causing the diluted mark to no longer uniquely identify its owner's goods or services

b.      READ: Mead Data Central v. Toyota, 875 F.2d.1026 (2nd Cir. 1989)

o        Mead, the plaintiff, had a distinctive "Lexis" trademark which was used for its legal research database.

o        Toyota, the defendant, had a distinctive "Lexus" trademark used for a line of automobiles.

         The Court of Appeals held that marks must be "very" or "substantially" similar and, absent such similarity, there can be no viable claim of dilution under the New York statute.

         In ruling on plaintiff's dilution claims, the appeals court examined the distinctiveness of the plaintiff's mark.

o        It felt that confusion based on similarity, and therefore, dilution, was unlikely.

         The marks' pronunciations were readily distinguishable.

o        In the court's view, attorneys were sufficiently sophisticated to differentiate between the marks and they were the demographic group exclusively targeted by the plaintiff's marketing.

         "Lexis" was found to be known within one profession only, the legal profession.

         As a result, the mark could not have achieved sufficient renown or secondary meaning for blurring to have occurred.

         Sufficiently strong associations of commercial source among the general public as a whole were required to support a finding of dilution under New York law.

1.      Similarity of the marks

2.      Similarity of products using the marks

3.      Sophistication of consumers in the targeted markets

4.      Predatory intent

5.      Renown of the senior mark

6.      Renown of the junior mark

o        A number of courts have held that the requisite fame of a protected mark can be specific to a market for a single good or service, rather than requiring that it exist among all consumers.

c. READ Jews for Jesus v. Brodsky (1998):

5.      Tarnishment

a.       Finding that plaintiff's mark will suffer negative associations through defendant's use is generally required for a finding of Tarnishment

b.      READ Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497 [2d Cir. 1996])

         This case represented an occurrence of the "tarnishment" form of dilution under the Federal Trademark Dilution Act.

         The district court issued a preliminary injunction against the defendant, Internet Entertainment Group, for the benefit of the plaintiff, Hasbro, based on its likelihood of success in showing tarnishment of its "Candy Land" trademark.

o        Hasbro registered its Candy Land mark in 1951. It is used in relation to an internationally famous children's board game.

o        The defendant used the domain name "" as the locator for an adult entertainment site on the Internet.

         The court felt, without providing further discussion, that the use of such a domain name on a commercial Internet site was sufficient to find that dilution of a registered trademark under 1125(c) had occurred.

c. READ Trademark Anti-Dilution Laws as Cultural Censorship

e. Anticybersquatting Consumer Protection Act - Trademark Act 1125(d) " forfeiture, cancellation or transfer of domain name can be ordered by court

READ and discuss Trademark Act 1125(d)

HANDOUT - 'Jurassic Park' Author Wins Cybersquatting Case - 12-3-02:

READ Dr. Michael Crichton v. Alberta Hot Rods:

1.      If a mark is distinctive or famous- owner has right to recover in a civil action against a domain name registrant or its licensee who, with bad faith intent, registers, traffics in or uses a domain name which is identical or confusingly similar to (or dilutive of in the case of a famous mark) that mark.

2.      READ Sporty's Farm L.L.C. v. Sportsman's Market, Inc.,       F.3d       (2nd Cir. 2000)

1.      Bad faith intent of a party to profit from a mark;

2.      The mark is either distinctive or famous; and

3.      The party with bad faith intent registers, traffics in or uses a domain name identical or confusingly similar to (or, for a famous mark, dilutive of) that mark.

As a result, no monetary damages were available to the plaintiff.

VIII. DEFENSES to Trademark Infringement, dilution & tarnishment, cybersquating, etc. (United States law)

Free Speech and Parody [note: strength of free speech protection highest in the United States]


READ: L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987):

"Reading of the anti-dilution provision [must not] improperly expand the scope of the anti-dilution statute far beyond the frontiers of commerce and deep into the realm of expression. "Although, as we have noted, parody is often offensive, it is nevertheless "deserving of substantial freedom--both as entertainment and as a form of social and literary criticism." : L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987):

See also, Lucasfilm Ltd. v. High Frontier " "Courts obviously cannot regulate the type of descriptive, non-trade use involved here without becoming the monitors of the spoken or written English language."

READ article " "Parody No Automatic Defense to Trademark Infringement":

IX. Limitations on Remedies for Infringement Generally:

1.      If the infringer is merely a printer or innocent infringer, injunction against further reproduction is the only remedy.


General rule: broader protection of the trademark - justified only where the use of a sign without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the trademark

1.         Free speech " Lucas v. "Star Wars"

2.         Parody "Barbie Doll"


READ: WTO Dispute Settlement Board (2 February 2002) - "United States - Section 211 Omnibus Appropriations Act of 1998". At its meeting on 1 February 2002, the Dispute Settlement Body adopted the Appellate Body report on "United States - Section 211 Omnibus Appropriations Act of 1998" (WT/DS176/AB/R) and the Panel report (WT/DS176/R), as modified by the Appellate Body report. The panel report should be read in conjunction with the Appellate Body report.]

BRIEF the case AND answer questions:

1.      How does the WTO Dispute Settlement Board settle a dispute between members? Treaty? Enforcement?

2.      What are the facts? (see Report of the panel, 6 August 2001- WT/DS176/AB/R)

3.      What is the law AND the ruling? (see 2 February 2002, Report of the Appellate Body- WT/DS176/R)

4.      What is the ruling?