1 / 14

Trademarks Class 18

Trademarks Class 18. Fair use Nominative use. Canal Co. v. Clark.

baruch
Download Presentation

Trademarks Class 18

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Trademarks Class 18 Fair use Nominative use

  2. Canal Co. v. Clark “No one can claim protection for the exclusive use of a trade-mark or trade-name which would practically give him a monopoly in the sale of any goods other than those produced or made by himself. If he could, the public would be injured rather than protected, for competition would be destroyed.” [538]

  3. Geographical description “[T]he same reasons which forbid the exclusive appropriation of generic names or of those merely descriptive of the article manufactured and which can be employed with truth by other manufacturers, apply with equal force to the appropriation of geographical names, designating districts of country.” [538]

  4. Fair use in spite of confusion “Purchasers may be mistaken, but they are not deceived by false representations, and equity will not enjoin against telling the truth.” [539]

  5. FTC’s view of misleading claims “Advertisers are responsible for ensuring that all express and implied claims that an ad conveys to reasonable consumers are truthful and substantiated. . . . If an ad makes express or implied claims that are likely to be misleading without certain qualifying information, the information must be disclosed.” — Federal Trade Commission, .com Disclosures (2013)

  6. KP Permanent v. Lasting “[I]t is only when a plaintiff has shown likely confusion by a preponderance of the evidence that a defendant could have any need of an affirmative defense, but under Lasting’s theory the defense would be foreclosed in such a case. ‘[I]t defies logic to argue that a defense may not be asserted in the only situation where it even becomes relevant.’ ” [543]

  7. If there’s confusion, it’s trademark owner’s own fault “If any confusion results, that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase.” [543]

  8. Joe’s: the king of beers? Joe’s Original Budweiser European-style craft beer Joe’s Original Fine European Budweiser Beer

  9. Champion Spark Plug v. Sanders “The spark plugs, though used, are nevertheless Champion plugs and not those of another make. . . . [W]e would not suppose that one could be enjoined from selling a car whose valves had been reground and whose piston rings had been replaced unless he removed the name Ford or Chevrolet.” [550]

  10. Smith v. Chanel “To prohibit use of a competitor’s trademark for the sole purpose of identifying the competitor’s product would bar effective communication of claims of equivalence. Assuming the equivalence of ‘Second Chance’ and ‘Chanel No. 5,’ the public interest would not be served by a rule of law which would preclude sellers of ‘Second Chance’ from advising consumers of the equivalence and thus effectively deprive consumers of knowledge that an identical product was being offered at one third the price.” [554]

  11. Fair use vs. nominative use • Fair use • “Check out the new album by the Old Fogies: it’s like New Kids on the Block and P-Funk all rolled into one.” • Nominative use • Vote for your favorite band: • New Kids on the Block • The Beatles • They Might be Giants • . . .

  12. NKOTB v. News America “[I]t is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark. For example, reference to a large automobile manufacturer based in Michigan would not differentiate among the Big Three . . . .” [561]

  13. Nominative use factors • “First, the product or service in question must be one not readily identifiable without use of the trademark; • second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and • third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” [562]

  14. 6th Cir. rejects nominative use doctrine “This circuit has never followed the nominative fair use analysis, always having applied the Frisch’s Restaurants test. We are not inclined to adopt the Ninth Circuit’s analysis here.” — PACCAR Inc. v. TeleScan Technologies, L.L.C. (6th Cir.2003)

More Related