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Trademarks: Case Law Summary

    As is true with respect to other tutorials, this is just a "smattering" of representative cases.  The idea is to provide a brief one or two sentence summary of the holding/rule and then to point to the full text of the opinion where available. The focus here will be on Internet cases of note and non-Internet cases, which provide "foundational" precedent. The warning sounded below is the same one issued in the section on Copyright Case Law and applies here perhaps to an even more significant degree.

    As practical consideration, please take note that many of the cases have "big name" plaintiffs and defendants. This is indicative of the "big time litigation" (read dollars) that are associated with these kinds of cases. These are not waters where small to medium size e-businesses want to swim in, nor most large businesses for that matter. It is clear that compliance is the "low risk" strategy. Any other strategy may lead to gray and murky waters.

    Requirements

    Case: Blue Bell v. Farah Manufacturing (5th Cir. 1975)
    Summary: Mere adoption of a mark without bona fide use in commerce, in an attempt to reserve if for the future, will not create trademark rights. [full text]

    Case: Abercrombie & Fitch v. Hunting World Incorporated (2d Cir. 1976)
    Summary: A generic word  (e.g. “safari”) can not be used as a trademark with enforceable rights if it has come to represent (through usage) a name for generic type of product. [full text]

    Case: Zatarain's v. Oak Grove Smokehouse (5th Cir. 1983)
    Summary: An owner of a descriptive mark cannot prevent competitors from using general descriptive terms where there is no confusion. [full text]

    Case: Park 'N Fly v. Dollar Park and Fly (USSC 1985)
    Summary: The holder of a registered mark may rely on incontestability to enjoin infringement and such action may not be defended on the grounds that the mark is merely descriptive. [full text]

    Case: Zazu Designs v. L'Oreal (7th Cir. 1992)
    Summary: More than nominal use in commerce is required for an unregistered mark. [full text]

    Case: Two Pesos, Inc. v. Taco Cabana (USSC 1992)
    Summary: Proof of secondary meaning is not required to prevail under the Lanham Act where the trade dress at issue is inherently distinctive. [full text]

    Case: Qualitex v. Jacobson Products Co. (USSC 1995)
    Summary: If certain conditions are met, a color will meet ordinary legal trademark requirements. [full text]

    Case: International Star Class Yacht Racing Association v. Tommy Hilfiger U.S.A., Inc.,  (2d Cir. 1996)
    Summary: Lack of due diligence with respect to trademark search is relevant to bad faith infringement. [full text]

    Case: Walmart Stores v. Samara Brothers  (USSC 2000)
    Summary: In an infringement action regarding unregistered trade dress under the Lanham Act, a product's design is distinctive, and therefore protectible, only upon a showing of secondary meaning. [full text]

    Infringement

    Case: AMF v. Sleekcraft Boats (9th Cir. 1979)
    Summary: When goods are related, but non-competitive, other factors must be considered as part of the "likelihood of confusion" calculus. [full text]

    Case: The New Kids On The Block v. News America Publishing, Inc. (9th Cir. 1992) 
    Summary: Nominative use of a mark is allowed if three requirements are met: (1) the product or service in question must be one not readily identifiable without the use of the trademark; (2) only so much of the mark or marks as is reasonably necessary to identify the product or service is used; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. [full text]

    Case: Shields v. Zuccarini (3d Cir. 2001)
    Summary Liability is triggered under the ACPA if: (1) the mark in question is a distinctive or famous mark entitled to protection; (2) the defendant registered domain names that are "identical or confusingly similar to" the plaintiff's mark; and (3) the defendant registered the domain names with the bad faith intent to profit from them. [full text]

    Case: Moseley v. V Secret Catalogue, Inc. (USSC 2003)
    Summary: Evidentiary requirements must be met in order to show dilution under the FTDA. [full text]

    Case: Playboy v. Netscape (9th Cir. 2004)
    Summary: Unlabeled banner ads will trigger liability under the doctrine of "initial interest confusion." [full text PDF]

    Case: GEICO v. Google (E.D. Va. 2004) 
    Summary: Triggering of ads via search technology that do not contain a competitor's marks is not likely to cause confusion. [full text PDF]

    Case: 1-800 Contacts v. WhenU.com (2d. Cir. 2005) 
    Summary: Liability is not triggered when there is "non-trademark use" of a mark. [full text PDF]

    Defenses

    Case: Bayer Co. v. United Drug Co. (S.D.N.Y. 1921) 
    Summary: The word "Aspirin" cannot be protected as a trademark against seller's targeting the general public (because it is now generic) but retains it trademark rights within the "chemist industry." [full text]

    Case: The Murphy Door Bed Co. v. Interior Sleep Systems (2d Cir. 1989) 
    Summary: Policing a mark may be of no consequence with respect to determining whether or not it has become generic. [full text]

    Case: Major League Baseball Properties v. Sed Non Olet Denarius (S.D.N.Y 1993)
    Summary: A mark may be abandoned where there is non-use and no intent to resume use, even if the mark maintains some historical significance. Trademark doctrine does not allow for the "warehousing" of a mark.[]

    Case: TrafFix Devices v. Marketing Displays (USSC 2001)  
    Summary: A product design (i.e. trade dress) may be functional because it is "essential to the use or purpose of the article" or "affects the cost or quality of the article." Functionality is not protected under trademark doctrine. [full text]

    Case: Mattel v. MCA Records (9th Cir. 2002)
    Summary: Parody may be considered "nominative fair use" and does not trigger liability. [full text]

    Remedies

    Case: Big O Tire Dealers v. The Goodyear Tire & Rubber Company (10th Cir. 1977)
    Summary: Reverse confusion can trigger liability and compensation based on FTC guidelines for corrective advertising may be warranted. []

    Case: Lindy Pen Company v. Bic Pen Corporation (9th Cir. 1993)
    Summary: A plaintiff must proffer some proof regarding actual damages, or in the alternative, unjust enrichment, upon which a court may award compensation. []

      

   
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