TRADEMARK LAW

FALL 2010

1. DISTINCTIVENESS OF MARKS

a. Four categories of terms with respect to trademark protection

I. GENERIC: A term that refers, or has come to be understood as

referring to the genus of which the particular product is a species.
1. Cannot become valid trademark at common law OR under
the Lanham Act.
2. Lanham Act calls for cancellation of trademark if at anytime
registered mark becomes generic name for goods/services

II. DESCRIPTIVE: Conveys an immediate idea of the ingredients,

qualities or characteristics of the goods
1. At common law, not valid trademark
2. Lanham Act: May be registered if the term has acquired a
secondary meaning distinctive to applicant

III. SUGGESTIVE: Requires imagination, thought, perception to reach

conclusion about the nature of the goods.
1. Entitled to registration w/o proof of secondary meaning

IV. ARBITRARY OR FANCIFUL: “Fanciful” = words invented solely for

their use in commerce; “arbitrary” = common word used in
unfamiliar way for use in commerce
1. May be registered w/o proof of secondary meaning

a. Suggestive and arbitrary/fanciful marks =

“technical trademarks.” Called this because they
get immediate trademark status. Why: Nature of the
term indicates public will perceive as trademark;
appropriation of nondescriptive term doesn’t disable
competitors; offers certainty regarding term status

b. Achieving secondary meaning (acquired distinctiveness)

i. Must demonstrate that public in fact recognizes terms or symbols

as indications of the source of the goods or services — Most
consumers have come thing of the word not as descriptive but as
name of product.

ii. Factors: Amount and manner of advertising, sales volume, length

and manner of use, direct consumer testimony, consumer surveys
 iii. Designation must be consistently and repetitively used as an
indicator of source of origin or sponsorship
1. Rock & Roll Hall of Fame: Picture of museum might be
more readily perceived as ornamentation; museum did not
use drawings or pictures of its buildings with consistency,
thus building design not valid trademark.

2. PERMISSIBLE TRADEMARK SUBJECT MATTER

a. Word marks
I. SLOGANS: A combination of words capable of distinguishing
goods or services can be registered as a trademark
1. Descriptive slogan can acquire secondary meaning through
extensive, continuous and substantially exclusive use

II. PERSONAL NAMES: No protection unless and until it acquires

secondary meaning. Three CL concerns:
a. Reluctance to forbid someone from using his own
name on his business
b. Some names so common that consumers are
unlikely to confuse source
c. Preventing a person from using his name to denote
business may deprive consumers of useful info
2. No personal-name “rule” in Lanham Act – all it says is that
a mark that is primarily a surname can’t be registered in
absence of secondary meaning
3. Peaceable Planet: Rule inapplicable when CL concerns
don’t apply (name “Niles” for toy camel is suggestive).

b. Service marks
i. Any word, name, symbol, or device, or any combination thereof…
used to identify and distinguish the services of one person
ii. Use in the advertising of services, as well as in their sales or
offering.

c. Collective and certification marks

I. COLLECTIVE MARK: Service or trademark used by members of
collective group/organization. Two types:
1. Collective trademarks and service marks: Used by members
of an organization to identify and distinguish their services
2. Collective membership marks: Used by individual members
to indicate that they are members of a group. May be
owned by orgs that never use their symbols in commercial
manner (e.g., fraternity)
 II. CERTIFICATION MARK: Guarantees/certifies that goods/services
meet certain criteria or conditions.
1. Owner can’t arbitrarily choose whom it will permit to use
the mark – subject to cancellation under LA if a potential
user who meets certifier’s criteria is excluded.

III. GEOGRAPHIC INDICATIONS: US obliged to protect “geographical

indications” under the 1994 World Trade Organization Agreement
on Trade Related Aspects of Intellectual Property (TRIPs)
1. Geographic term protectable if goods originate in a
particular place and the goods would be (or would be
perceived to be) be qualitatively different if they came from
some other place

d. Trade dress
I. COLOR: Can sometimes meet basic legal requirements for use as a
trademark, if it acts as a symbol to distinguish goods/ identify
source, and doesn’t serve any other significant function

e. Other identifying indicia

I. SENSORY INDICIA: Trademark protection extends to any word,
name, symbol or device used to indicate source of goods
1. Scents: Trademark board has recognized scented fragrance
as trademark for thread and embroidery yarn. Excludes
scents or fragrances of products which are noted for those
features, e.g., perfumes or scented household products.
2. Taste: Board has expressed doubt flavor could ever serve as
trademark
3. Touch: Velvet texture of wine bottle registered as trademark
4. Sound: Companies such as AT&T, Intel have registered
sound marks

3. ESTABLISHING TRADEMARK RIGHTS & OWNERSHIP

A. OWNERSHIP: Established by priority of appropriation.

i. Priority established by bona fide usage
1. Use of the mark must be deliberate and continuous, not
sporadic, casual or transitory
ii. Generally, in disputes: look at first interstate use

B. USE: Lanham Act requires “use in commerce”

i. Six months after registration, party has to demonstrate use
(although extensions can be requested). To renew trademark
registration, every 10 years, a company must submit a sworn
statement that it is using the mark
 ii. Sufficient use = bona fide use in commerce
1. Vague, remote, abstract intention to use doesn’t meet bona
fide standard.
2. Company must have trade in the goods sold under the mark
or at least an active and public attempt to establish trade
a. Goods must be sold, services must be rendered.
iii. LA placement requirements
1. On goods: Place mark on the goods (or their containers or
displays or tags or labels, or if that’s not practicable
because of the nature of the goods, on documents
associated with the goods or their sale)
2. On services: Use or display mark in the sale or advertising
of services
iv. Commerce: All commerce which may lawfully be regulated by
Congress (interstate commerce). Sufficient if:
1. Services rendered to customers traveling across state
boundaries (not required that services be rendered in more
than one state); or
2. Promotion and advertising in interstate commerce

C. ANALOGOUS USE
i. Advertising and promotion is sufficient to obtain rights in a mark
so long as:
1. A&P occur within a commercially reasonable time prior
to the actual rendition of service AND
2. The totality of acts creates association between the goods
or services and the mark.
ii. Becker: By the time t-shirt vendors started selling shirts with name
of baseball stadium, stadium name was already associated with
baseball because of promotional efforts, so the mark was protected.

D. EXTRATERRITORIAL USE
i. Commerce Clause reaches to foreign trade. Commerce = trade
between subjects of the US and subjects of a foreign nation.
1. Generally foreign mark is not protected if someone else
uses it first in the US.
2. But some courts will find priority in a foreign trade usage
a. Buti: Prior use and advertising of a mark in
connection w/goods or services marketed in a
foreign country creates no priority rights in the
mark in the US
b. Intl Bancorp: Mark used in commerce where mark
used on gambling site because US citizens
purchased casino services sold by a subject of a
foreign nation (even though the foreign mark holder
had never used or registered its Monte Carlo Casino
 mark in the US)
3. There may be an exception for foreign “famous marks,” but
the exception is contested
a. Majority view: ITC Limited - Refused to recognize
doctrine on basis of policy, in light of the fact that
doctrine not recognized in the comprehensive and
frequently modified federal statutory scheme for
trademark protection in Lanham Act. Any policy
arguments should be made to Congress.
b. Minority view: Ninth Circuit only -- recognizes
famous marks under federal law as a matter of
policy (holds that not recognizing would promote
customer confusion and fraud)

ii. But when filing US registration, foreign company may refer back
to the original foreign filing date (up to six months before US
filing). So in a dispute, the foreign party would win over company
that started using a mark in commerce after the foreign filing date.

E. PRIORITY: At common law, the person who first uses trademark in

connection with specified goods has the exclusive right to a trademark.

i. Use does not have to have gained wide public recognition – even a
single use in trade may sustain trademark rights if followed by
continuous commercial utilization
ii. Use must be sufficiently public to identify or distinguish
marked goods in an appropriate segment of the public mind
1. Secret, undisclosed internal shipments generally inadequate,
because primary purpose of trademark is to provide means
for consumers to distinguish goods, not company personnel
2. Evidence of sales highly persuasive
3. Must be bona find use in trade – not attempt to reserve mark
for the future
a. Blue Bell: Attaching label with name of planned
new clothing line to older line of clothing was a bad
faith attempt to reserve a mark

F. CONCURRENT USE: 2 parties independently employ same mark upon goods

of the same class but in separate markets wholly remote from one another.

I. Prior appropriation is not relevant: Newcomer to market enters it

subject to whatever rights were previously acquired there in good
faith (even if newcomer had mark first)
1. United Drug: Senior “Rex” user estopped from using mark
in junior user’s territory because during a long period of
 years the senior user had confined use to a limited territory,
thus taking the risk that some innocent party elsewhere
might use same mark and build up trade in it.

ii. Lanham Act limited area exception: A junior user has right to
continued use of an otherwise infringing mark in a remote
geographical area if that use was established prior to the other
party’s federal registration.
1. Junior user must have used the mark continuously in that
location and initially in good faith
a. Thrifty: Thrift Cars allowed to keep using mark in
limited area where it had established a market
presence by time Thrifty federally registered

4. FEDERAL REGISTRATION OF TRADEMARKS

A. REGISTRATION PROCESS
i. Application
1. Minimum requirements
a. Applicant’s name
b. Name and address for correspondence
c. Drawing (clear drawing of the mark suitable for
printing on the certificate of registration)
i. If not used in stylized form, may be
registered in block-letter form, otherwise it
may have to be prepared by a draftsman
ii. Sound mark- use written description
iii. 3D mark (e.g. sculpture) – must be
presented in a line drawing not a photograph

d. Identification of goods and services

e. Filing fee of $375 per class
2. Additional requirements that can be satisfied later:
a. Dates of use
b. Specimens of use
c. Color features of mark
d. Declaration
ii. Examination by PTO
1. About six months after filing, trademark atty on PTO staff
will review the application for form, completeness and bars
to registration.
iii. Publication for opposition
1. If application approved, it’s published in weekly PTO
publication. This enables anyone who believes he/she will
be damaged by mark to oppose its registration
2. Opposition must be filed w/in 30 days from date of
publication
B. BENEFITS OF REGISTERING MARK ON THE PRINCIPAL REGISTER
i. Nationwide protection from the date of the application
1. Once a mark is federally registered, the registrant’s
trademark rights relate back to the date of the
trademark application and give the registrant
nationwide priority against a party adopting the same or
similar mark after the date of the registrant’s application
2. If the mark is left unregistered, common law protection may
be limited to those areas in which the mark had actually
been in use or become known
ii. Incontestability
1. If the registered mark is used continuously for five years, it
may become incontestable
iii. Warning to others
1. Registered mark will easily be found in trademark searches,
so 3rd parties shouldn’t blunder into using similar mark for
similar goods and services.
2. If mark is registered, its constructive date of first use will be
the date the application for registration was filed
3. Also PTO will protect the mark by refusing the register any
other mark that the Trademark Examiner thinks likely to
cause consumer confusion
iv. May bar imports
1. Imports w/infringing marks may be blocked at customs, so
long as the registrant is a US citizen and is not related in
certain ways to the producer of the goods
v. Provides protection against counterfeiting
1. Enhanced remedies against counterfeiters of trademarks
registered on the Principal Register
vi. Evidentiary advantages
vii. Permits use of the “R” symbol
1. parties on the supplemental register can use it too.
2. Anybody adopting a mark in commerce can use “TM” but
“R” means product is registered and indicates greater
protection
viii. Confirms ownership and validity
ix. Basis of foreign filings
x. Preemption of state regulation
1. In effect, the Lanham Act preempts state truth-in-labeling
laws when they would compel the registrant to change the
trademark’s presentation

C. THE SUPPLEMENTAL REGISTER

i. Distinctiveness not required
1. Mark eligible for SR so long as capable of distinguishing
 applicant’s goods or services.
2. Does not to distinguish goods or services from others, so
terms that are descriptive/geographic/surnames OK
3. But Lanham Act specifically states that registration of a
mark on SR does not constitute an admission that the mark
has not acquired distinctiveness
4. Usually after five years of use trademark registered on SR
will be eligible for register on PR, because by then it has
acquired secondary meaning

ii. No intent-to-use for SR

1. But PR intent-to-use application can be amended to the SR
upon application alleging use. Also, foreign registration
doesn’t need to allege use for SR – foreign applicants just
need to show bona fide intention to use

D. NOTICE OF REGISTRATION
i. Notice = displaying with the mark the words:
1. “Registered in US Patent and Trademark Office”; or
2. “Reg. U.S. Pat & Tm. Off.”; or
3. letter R w/in circle
ii. Notice required to get profits or damages in an infringement suit –
unless the court finds that the D had actual notice of registration

E. MAINTENANCE AND RENEWAL OF REGISTRATION

i. Between the fifth and sixth year after registration date (or within
six-month grace period after for add’l fee):
1. Registrants must file an affidavit that the mark is in use for
at least some of the goods or services covered in the
registration.
2. If the registrant doesn’t file, the PTO will automatically
cancel the registration
ii. Renewals
1. Registrant must file an affidavit of use in each 10th year after
registration (or w/in 6mo grace period)

F. REGISTRATION OF MARKS OWNED BY FOREIGN APPLICANTS

i. US is member of Paris Convention for Protection of Industrial
Property – main treaty covering patents and trademarks
1. Originally ratified in 1884, 171 members as of 2007
2. Based on principle of national treament.
a. Non-discrimination principle: member nations must
treat nationals or domicilaries of other members as
they would their own citizens
ii. Ways in which foreign applicant from a Paris Convention or WTO
country may register trademark in the US:
 1. File application in same way as American applicant: Allege
use OR intent to use in interstate OR foreign commerce
with the US
2. Obtain registration on basis of prior registration in the
applicant’s country of origin
a. CO = either country in which applicant has biz est.
(or if none, country in which applicant lives/is a
national).
b. Mark can be registered on the PR if eligible —
otherwise on SR
3. Apply to register based on an application to register the
mark in the country of origin.
a. US application must be filed w/in six months of the
date on which app was first filed abroad
b. US app will receive the same force and effect as if it
had been filed in the US on the date on which it was
first filed abroad

iii. Madrid Protocol

1. MP is a trademark filing treaty among over 70 countries
2. Allows foreign applicants to extend their int’l registrations
to the US
3. Allows domestic mark owners to obtain intl registrations
exnteding to member countries based upon the owner’s US
applications or registrations
4. Intl registration system admin by World Intellectual
Property Organization (WIPO) based in Geneva

G. PRIORITY: INTENT TO USE

i. All applicants have a choice: Apply to register mark based on pre-
application use OR on the basis of a bona fide intention to use the
mark in commerce.

ii. Lanham Act was amended to allow application based on intent to

use for policy reasons. Problems w/ the old policy:
1. Legal uncertainty had a chilling effect on biz investment,
— business had no assurance that after selecting and
adopting mark, and investing in packaging, advertising and
marketing, it would not learn that its use of the mark
infringed another acquired through earlier use.
2. Gave foreign applicants an advantage, because US was the
only developed country that required use before
registration.

iii. Zirco: Ct rejected opposition to mark Datacel, because AT&T had

had filed intent to use application prior to other company’s actual
 use of the mark Datacell
1. Filing of intent-to-use application constitutes constructive
use of mark since filing date of the application for
registration of mark on the principal register = right of
priority w/legal effect of first use at common law
iv. Kodak: Board dismissed Kodak opposition to competitor’s intent-
to-use application because mark had not acquired secondary
meaning. Too early to file such a claim.
1. Question of mere descriptiveness cannot be answered until
after use has begun
2. Mark can still be opposed at cancellation proceeding after
use begins and mark is registered

H. BARS TO REGISTRATION
i. Section 2(a) of the Lanham Act: Consists of or comprises
immoral, deceptive or scandalous matter; or matter which may
disparage or falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols, or bring them into
contempt or disrepute. No amount of secondary meaning can
overcome this bar to registration. These are the types of marks
that we don’t want to afford protection to as a matter of policy.
1. Immoral or scandalous
a. A substantial composite of the general public would
regard it as offensive.
2. Disparaging to a particular group
a. A substantial composite of that group would regard
it as offensive.
3. Deceptive. Three elements of deceptive trademark:
a. Mark misdescribes the goods
b. Misdescription is such that consumers are likely to
think that the misdescription is accurate
c. Misdescription is either likely to materially affect
purchasing decision or likely to cause consumers to
initially seek out the good or service.
i. Mark which has first two only = deceptively
misdescriptive mark. Secondary meaning
can help.
ii. Mark which has all three elements - No
amount of secondary meaning will help.

ii. Section 2(b): 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
1. Absolute bar to registration. No requirement to show add’l
element such as disparagement or false association.
2. Simulation seems to be interpreted to require fairly exact
 copying. Many registered marks have a flag design.

iii. Section 2(c): A name, portrait or signature identifying a particular

living individual except by his written consent
1. Absolute bar, purpose to protect rights of living persons’
rights of privacy and publicity
2. Name, portrait or signature (of a particular living individual
or dead president during widow’s lifetime)
a. Does not have to be person’s full name, and the
name can be long to more than one person, so long
as relevant public would associate goods w/person
opposing the mark

iv. Section 2(d): A mark which so resembles a mark registered in

the PTO or a mark previously used in the US by another & not
abandoned, so as likely to cause consumer confusion
1. Broad scope of protection for famous marks, but less
protection if the other mark is also famous.
2. Mark less likely to be confusing if it uses a common
surname - purchasers are accustomed to distinguishing
between such common surnames by slight differences in
the mark as a whole
3. Not bad faith to see foreign mark and copy it in the US.
4. Multifactor “Likelihood for confusion test.” First two are
most important.
a. How similar are the marks (looks, pronunciation,
meaning of the terms marks use)
b. How similar are the goods or services
c. How similar the trade channels are (how parties
sell the goods/services)
d. How much care buyer uses in selecting the goods
(confusion more likely in impulse purchase)
e. How sophisticated is the group of consumers
f. How distinctive is the trademark (is the term
arbitrary/suggestive/descriptive/generic?). Famous
marks tend to be more distinctive. Last names tend
to be less distinctive.
g. How many other similar marks are out there
(Confusion less likely in crowded field because
consumers used to distinguishing among many
similar marks)
h. Applicant’s motive in selecting mark (bad faith
shows intent to confuse)
i. Consent agreement between similar mark
holders? Not dispositive, but it weighs against
confusion if parties most vested in it think there is
 no confusion.

v. Section 2(e): Merely descriptive, or deceptively descriptive;

geographic (mark that primarily describes where the goods come
from, or deceptively misdescribes where they come from);
surnames; functional

1. Geographic terms
a. Lanham Act addresses geographical marks in three
categories – 2(a), 2(e)(2), 2(e)(3).
i. For 2(a) must meet elements for deception –
same legal standards for 2(e), except that (e)
(3) specifically involves deception involving
geographic marks.
b. Test for 2(e) – geographically descriptive
i. Whether the term in the mark sought to be
registered is the name of a place generally
known to the public; and
ii. The public would make a goods/place
association – believe that the goods or
services for which the mark is sought to be
registered originate in that place. G/P
association presumed if the goods do in fact
come from place named.
iii. Exception to presumption: If a genuine issue
exists as to whether the place named is so
obscure or remote that purchasers wouldn’t
recognize it as indicating geographical
source of the goods. In that case, examining
PTO attorney must submit evidence
sufficient to establish public association
w/that place. Look at what would be
recognizable by purchasers of the
goods/services – not public as a whole.
c. Geographically deceptive - (2)(e)(3) – No amount
of secondary meaning can overcome.
i. The primary significance of the mark is a
generally known geographic location;
ii. The consuming public is likely to believe
that the place identified by the mark
indicates the origin of the goods bearing the
mark, when in fact the goods do not come
from that place (where they are made);
iii. The misrepresentation was a material factor
in the consumer’s decision
2. Surnames – 2(e)(4)
a. Test for whether a mark is primarily merely a
surname: Consider primary significance of the
mark to the purchasing public. Benthin factors:
i. Degree of surname rareness;
ii. Whether anyone connected w/applicant has
the surname;
iii. Whether the term has any recognized
meaning other than a surname; and
iv. The structure and pronunciation or “look
and sound” of the surname.
b. If user of a surname demonstrates it has become
distinctive w/in meaning of 2(f) it may be registered

3. Numerals, letters and initials used as grade or style

designations
a. General rule: A word, phrase, symbol, numeral or
letter which merely differentiates btwn various
grades, styles, colors or types of products and does
not designate their source is not a protectable
trademark.
b. Grade or style designation is protectable IF in
addition to specifying quality, style or type of
product also and primarily designates the source of
goods (analyze based on manner of use, intent of
user, and meaning understood by consumer)

4. 2(e)(5) – Functionality
a. Functional mark is not eligible for trademark
protection even if it has have acquired secondary
meaning (purpose is to draw distinct line between
patent law, which protects functional things, and
trademark, which does not)
b. A product feature is functional if it is essential to
the use or purpose of the product or if it affects the
cost or quality of the product
c. Morton-Norwich factors weighing in favor of
functionality:
i. Existence of a patent disclosing utilitarian
advantages of the design;
ii. Advertising materials in which originator of
design touts utilitarian advantages;
iii. Availability to competitors of functionally
equivalent designs (can’t use trademark to
prevent competition in non-reputation way)
iv. Facts indicating that the design results in a
 comparatively simple or cheap method of
manufacturing the product (don’t want to
deprive competitors of the cheapest, most
efficient method of making something)
d. Aesthetic functionality: appearance of mark such
as color etc provides some specific competitive
advantage (in a practical way)
e. If non-functional, a product configuration may only
be registered upon a showing of acquired
distinctiveness under 2(f)

5. Section 2(f): Exception for marks that have established that

otherwise would not be registerable under 2(e) but have
acquired secondary meaning

6. In order to oppose mark, you must have standing

a. Must have a real and personal stake in the outcome
of the opposition
b. Basis for opposition must be reasonable

7. “Dilution” of mark: Not a bar to registration under Sec. 2,

but interested third parties may initiate an opposition or
cancellation action on the basis of dilution under Sec. 43(c)

5. LOSS OF TRADEMARK RIGHTS

a. Genericism: Trademark holder may lose trademark rights if the term

ceases to indicate source of goods/services and instead becomes
synonymous with the goods/services
i. Key issue: What members of the general consuming public
understand word to mean
ii. Owner must protect mark: Failure to use terms in trademark
fashion or to adequately police use of the term by others can result
in loss of trademark significance
1. Bayer: Bayer’s own labeling showed that aspirin had
become generic term for drug, because it changed label
from “Aspirin” to “Bayer – Tablets of Aspirin”
iii. Ways to help protect trademark rights
1. Trademark education – advertisements aimed at public,
brochures aimed at company personnel/businesspeople
2. Use product’s generic name along with the trademark

b. Standards for assessing genericism

i. Public perception of the mark is key to trademark status
ii. Consumer surveys: If properly conducted, can demonstrate
whether consumer views trademark as the brand/source of the
 product or the good itself
1. Motivation survey: Asks participants why they buy a
product – because they like the product or the producer.
The 9th circuit gave weight to them in DuPont, but
Congress has since amended Lanham Act to say that
motivation surveys won’t be considered in the analysis.

c. Genericism and confusion

i. “De facto” secondary meaning: Public identifies a term w/ a single
source of origin but NO trademark protection. Two types:
1. The public does not recognize the term as a brand name,
but nonetheless knows that there is a single source for the
goods. Happens because:
a. Producer has a patent monopoly
b. Others unwilling/unable to compete
c. Producer has not been using the term applied to the
goods in proper trademark fashion
2. Producer selects as a trademark that is the generic name for
the goods, but through substantial advertising, proper
trademark use, and market dominance, succeeds in
establishing public trademark recognition for generic name

ii. Certificate of registration = prima facie evidence that mark is not

generic nor merely descriptive

iii. Practice tips:

1. Don’t use trademark as a verb
2. Always follow trademark with generic term for product
3. Be consistent (don’t make trademark plural, don’t make
it possessive)

d. Abandonment: A mark shall be deemed to be abandoned when either of

the following occurs: 1) its use has been discontinued w/intent not to
resume… OR 2) when any course of conduct of the owner causes the
mark to become generic name for the goods... or otherwise to lose its
significance of the mark. 15 USC §1125

i. Intentional abandonment: Non-use

1. Nonuse for three consecutive years is prima facie
evidence of abandonment
a. Defendant may rebut presumption by offering
reasonable explanation for non-use
2. “Intent not to resume” = intent not to resume use w/in the
reasonably foreseeable future (not intent never to resume)
a. Simply stating that you intend to resume use in
future is not enough to establish intent to resume
 b. There must be concrete plans for future use in
the United States (foreign use doesn’t count)
c. Challenging infringing uses of trademark is not use
3. Trademarks with artistic merit: When trademark has artistic
merit, public’s interest in free speech is weighed into
analysis, and court less likely to protect mark in close case

ii. Non-intentional abandonment: Assignments in gross, naked

licensing and failure to police
1. Assignment in gross: Invalid assignment. Occurs when mark
is transferred w/o accompanying goodwill.
a. Any rights the new owner has are simply based on
its own use – earlier priority date is lost.
b. For goodwill to transfer, the assignees must
produce a product “substantially similar” (same
quality and nature) to the assignor such that
consumers will not be deceived or harmed.
c. Generally an assignment of a trademark and its
accompanying goodwill entitles the assignee to step
into the shoes of the assignor, gaining whatever
priority the assignor had in the mark.
2. Trademark license: Transfers right to use mark but not
ownership (essentially promise not to sue).
a. A trademark owner may grant a license for limited
or perpetual amount of time
b. Licensor only remains protected so long as it
maintains quality control of the goods and
services sold under the trademark
3. Uncontrolled / naked licensing: When the owner fails to
exercise adequate quality of the mark. May result in
involuntary forfeiture of mark.
a. “Quality control” does not necessarily mean that
licensed goods must be of high quality – just that
they are of equal quality. Customers are entitled to
assume consistency of goods sold under mark.
b. There should be quality control language in the
license agreement in order to protect the mark
c. Level of control and inspection required depends on
the product/marketplace. Courts primarily look at
process for ensuring quality, not actual quality.
i. Barcamaerica: Wine bottled by season, so at
the very least Barca should have sampled
licensee’s wine on an annual basis, in some
organized way, to ensure that they were of
sufficient quality to bear Barca’s mark.
6. TRADEMARK INFRINGEMENT
a. 15 U.S.C. §1114 §32 deals with registered marks (equivalent of §43 for
unregistered marks): Prohibits use in commerce a mark that is an
imitation of a registered mark which is likely to cause confusion or to
cause mistake or to deceive.
b. Factors used in the Ninth Circuit for assessing likelihood of confusion
(other circuits use similar factor tests)

i. Strength of the marks

1. Factors establishing strength of mark
a. Amount of sales, length of use, amount of
advertising, whether mark is registered, whether
mark has achieved “incontestable status”
2. Other parties using the same mark won’t weaken it if the
other goods are unrelated
3. Doesn’t matter if the mark is surname or descriptive if it is
has already acquired secondary meaning

ii. Similarity of the marks (based on appearance, sound, meaning)

1. Foreign meanings
a. If a term has a meaning in a foreign language, the
foreign meaning will be applied in assessing
whether the terms mean the same thing – but only if
a sufficient percentage of the relevant consumers
would understand the foreign term (e.g., Red Bull
and Toro Rojo held to be the same).
b. Consider English and foreign pronunciation: If
they’re not pronounced the same and don’t look the
same, that could weigh against similarity even if
they have the same meaning.
2. Comparison of appearance
a. The standard is not a side-by-side comparison.
Rather: if consumer saw Trademark A in the
morning at one store, and later in the day saw
Trademark B at another store, would he think they
were the same or associated? Therefore, requires
fairly significant differences in appearance.
b. Packaging: If one product is packaged so differently
that the commercial impression is sufficiently
different that may suggest consumers won’t be
confused despite trademark similarity. But this only
applies if consumers are exposed to product
packaging while they are making selection (e.g., not
where consumer ordering wine at a restaurant)
3. House marks
a. Including a “house mark” (name of the company
 that makes product) in front of trademark won’t
preclude a finding that the marks are sufficiently
similar to confuse consumers -- but may help avoid
confusion in trade dress claims
4. Descriptive, truthful use of another’s trademark is not
grounds for trademark infringement
a. Bumblebee: Tuna salad maker stated on label that
salad made with Bumble Bee tuna – not
infringement because it was merely a descriptive,
truthful use.

iii. Similarity of the goods

1. It used to be that the goods had to be substantially identical
– Now P and D’s goods must merely be related.
a. E.g. use of Aunt Jemima label by maker of pancake
batter and different maker of pancake syrup was
sufficiently confusing because products related

iv. Similarity of the marketing channels used

1. Looks at where the parties sell their products (retail
establishments, restaurants, Internet etc) and where/how
they advertise the products

v. Degree of care exercised by purchasers

1. Looks at the level of sophistication of the buyers, whether
the product is an inexpensive, impulse purchase or one that
buyers research more carefully

vi. Evidence of actual confusion

1. Look at consumer survey evidence
2. Lack of actual confusion won’t defeat otherwise successful
claim, because only need likelihood of confusion
3. But when there is evidence of actual confusion it tends to
weigh heavily in favor of party asserting infringement

vii. Defendant’s intent in adopting the mark

1. Bad faith in adopting the mark weighs heavily in favor of
finding likelihood of confusion
2. If the marks are similar and defendant actually knew of the
other mark at the time it was adopted, court can infer that
defendant adopted the mark in bad faith
3. Helps to show good faith if alleged infringer brings suit to
resolve issue

c. Initial interest confusion

i. Trademark protection not limited to likelihood of confusion at
 point of sale. Mark also infringes if it is likely that it would attract
potential customers based on the reputation earned by the owner of
the original mark, regardless of whether purchasers believe they’re
buying product made by or associated with the owner of the
original mark.
ii. Initial interest confusion in click-through Internet ads
1. Advertisers pay search engine to appear as a sponsored
result or have their ad pop up someone enters a search term
that advertiser wants associated with its product/business.
2. Theory of confusion: When users click on ad/like that
appears after they search for trademark term, they think it
will take them to a site sponsored by the trademark owner
3. Unresolved issue – courts struggle it. In Playboy found
click-through ads tended to show evidence of initial
confusion, but other cases come out differently

d. Defendant’s use in commerce

i. Internet uses
1. WhenU: considered whether the term was used in a
“trademark way” – not one of the factors, but some courts
will consider. If mark is used in a functional way use is not
a trademark infringement.
ii. Extraterritorial use in commerce
1. Lanham Act can be applied extraterritorially
a. If the defendant is an American citizen, they are
within jurisdiction of US trademark law
b. If the defendant is a foreign citizen, jurisdiction is
proper only if the complained-of activities have a
substantial effect on US commerce, viewed in light
of the purposes of the Lanham Act. Plaintiff must
show likelihood that American consumers would
be confused.

e. Who has standing to sue for trademark infringement

i. Typically only owner of the trademark has standing (not licensee)
1. Non-exclusive licensee can participate but can’t initiate suit
2. Exclusive licensee has standing IF the exclusive license
looks and feels more like an assignment:
a. license is for indefinite time, there’s no geographic
limits, there’s no quality control provisions

f. Reverse confusion
i. Occurs when a larger, more powerful entity adopts the trademark
of a smaller, less powerful trademark and causes confusion as to
the origin of the senior trademark user’s goods or services, making
people think the senior user is using the junior user’s mark, just
 because the junior user is so much more well known.
ii. Apply all the usual likelihood of confusion factors. Primary
differences is in the analysis:
1. Focus shifts to how strong the junior user’s mark is, rather
than the senior user – the stronger the junior user’s mark,
the more likely finding of reverse confusion.
2. Bad faith not based on intent to free-ride, but rather
evidence that senior user is trying to push out the junior.

g. Secondary liability for trademark infringement

i. Contributory trademark infringement
1. Induced infringement
a. Look for evidence that shows defendant induced
third party to infringe
2. Knowingly supplied product w/which third party infringes
a. Know or should know that someone is going to use
a product to commit trademark infringement – like
if you know/should know that D is going to attach
the same / similar trademark as one registered.
3. Knowingly supplied means of infringement

ii. Indirect trademark infringement

1. D supplies product to third party for 3rd party to sell to
consumers when the D knows that either the product itself
is likely to be confused w/trademark owner’s product, or
the product includes a trademark that is confusingly similar
to the trademark owner’s mark

iii. Vicarious trademark infringement

1. D knows or should know that a third party is infringing
trademark owner’s trademark, and the D financially
benefits from infringement and the D has the ability to
control conduct of the third party.

h. If a plaintiff succeeds in making out a prima facie case for trademark

infringement, including the element of likelihood of consumer confusion,
D may offer rebutting evidence on any element, or raise an affirmative
defense to bar relief.

7. DEFENSES TO INFRINGEMENT
a. Incontestability
i. Mark achieves incontestable status after continuous use for five
consecutive years after registration date, so long as:
1. No final decision adverse to registrant’s claim of ownership,
or registrant’s right to register name;
2. No proceeding pending involving those rights;
 3. An affidavit is filed w/the Commissioner w/in one year after
the expiration of the five year period stating that the goods
in services have been in continuous use for five years and
are still in use in commerce;
4. The mark is not the generic name for goods/services
ii. Once a mark is incontestable, it can’t be challenged on the
ground that it is merely descriptive
1. Courts split on whether descriptiveness of incontestable
mark can be considered under the distinctiveness factor in
likelihood of confusion analysis

iii. Incontestable defenses: Section 33(b) lists nine exceptions to

incontestable status. They are affirmative defenses – alleged
infringer has burden of proof.
1. Fraudulent acquisitions of trademark registration or
incontestable right to use mark
2. Abandonment
3. Use of the mark to misrepresent source
a. Including intentionally false and misleading
designations of origin, nature, ingredients
4. Fair use: Use of mark in descriptive sense rather than as a
trademark
5. Limited territory defense
a. Applies to junior user who adopts mark innocently
before senior user registers it and has used the mark
continuously ever since. Restricted to area of
continuous use by junior user prior to senior’s users
registration.
6. Prior registration by defendant
a. Where alleged infringer registered and used the
mark prior to the registration of P and did not
abandon it, senior registrant may continue to use its
mark, but only within the area where it was used
prior to P’s registration.
7. Use of mark to violate antitrust laws
a. Rarely successful defense
8. Functionality
9. Equitable principles
a. Incl laches, estoppel and acquiescense

iv. Fraud on the trademark office defense

1. Must show material and knowing misrepresentation
a. What constitutes an intentional material
misstatement is judged by objective manifestations
of applicant’s intent, not applicant’s subjective
intent. Intent exists if applicant knew or should have
 known that its statement was materially incorrect.
Honest mistake no defense if mistake unreasonable

v. Fair use defense

1. Applies when alleged infringer uses a term in good faith
primarily to describe product rather than to identify it with
a particular source (trademark use)
a. US Shoe Corp: D’s use of the words “feels like a
sneaker” protected by fair use defense because it
was used in a descriptive sense to claim a virtue of
the product – restates key selling point. D not using
it to indicate source or origin – D prominently
displayed its own logo, and the words were small.
b. Car-Freshner: D entitled to use tree shape for air
freshener as a descriptor of the pine-tree scent and
Christmas theme. Regardless of whether protected
mark is descriptive, suggestive, arbitrary or fanciful,
competitor has right to use mark in ordinary
descriptive sense to describe its goods.
2. Affect of consumer confusion
a. KP Permanent Makeup: Risk of confusion doesn’t
bar fair use defense. Chance of confusion is risk P
takes in adopting descriptive phrase for its mark.
b. But in Ninth Circuit, degree of consumer confusion
remains a factor in evaluating fair use.

vi. Nominative fair use

1. Not a statutory defense
2. Where D uses a trademark to describe the P’s product,
rather than its own, a commercial user is entitled to a
nominative fair use defense if he meets three requirements:
a. Product or service not readily identifiable w/o use
of the trademark
b. Only so much of the mark is used as is reasonably
necessary to identify the product/service
c. The user does nothing to suggest sponsorship or
endorsement by the trademark holder.

vii. Laches
1. Equitable doctrine: Equity aids the vigilant, not those who
sleep on their rights. Applies to parties who have
unjustifiably delayed in bringing suit.
a. Pro-Football: Laches runs only from the time a
party reaches majority age. Therefore Native
Americans suit against Redskins not barred because
at the time of registration one of Ps was only 1yo
 viii. Sovereign immunity
1. Bars suit against state entity (waiver of immunity must be
express)
2. Neither the right to be free from a business competitor’s
false advertising about its product or a general right to be
secure in one’s business are property rights protected by
DP clause

8. SECTION 43(A) REMEDIES FOR UNREGISTERED MARKS

a. Scope: Protection limited to geographic area in which the mark is used

b. Trade dress: Unregistered TD protectable if distinctive, either because it

has secondary meaning or because it is inherently distinctive.
i. If trade dress is inherently distinctive, proof of secondary meaning
is not required to prevail under 43(a).
ii. Two Tacos: Restaurant’s festive décor was a form of packaging,
not design, and was inherently distinctive
iii. Product-design trade dress can’t be inherently distinctive. Wal-
Mart: Clothing designs not inherently distinctive
a. When close call between packaging and design,
courts should err on side of caution and classify
ambiguous trade dress as product design requiring
secondary meaning

c. Functionality
i. Plaintiff in an action for infringement of an unregistered mark has
the burden of proving that the mark is not functional.
1. If a feature is involved in a utility patent, it is highly likely
that it won’t be protectable under trademark law
ii. Aesthetic functionality: When goods are bought primarily for
aesthetic value, features may be functional because they definitely
contribute to that value and thus aid performance of an object for
which the goods are intended. Rest of Torts §742)

d. Trade dress infringement

i. To establish a claim of trade dress infringement under 43(a),
plaintiff must demonstrate:
1. Trade dress is either inherently distinctive or it has acquired
distinctiveness through secondary meaning; AND
2. There is a likelihood of confusion between defendant’s trade
dress and the plaintiff’s trade dress (apply factors)
ii. If includes house mark less likely that it will be found to infringe

e. False designation of origin

i. Section 43(a) is one of the few provisions of the Lanham Act that
 goes beyond trademark protection. “False designation” doesn’t
have to technically be a trademark – something somehow used in
connection with a trademark will suffice
ii. “Origin” refers to geographic origin, origin of source, or origin of
manufacture
1. Does not refer to the person or entity that originated the
ideas or communications that “goods” embody or contain,
because that would conflict with copyright law.
2. Dastar: Defendant took creative work in the public domain,
copied it, made some minor changes and produced its own
series of videotapes, without producer of the original video
series. No false designation of origin, because origin refers
only to the manufacturer/producer of the physical goods

iii. Creates federal remedy for traditional trademark infringement of

unregistered marks – “passing off” and “reverse passing off”
1. “Passing off’ = Coke passes off its product as Pepsi
2. “Reverse passing off’ = Coke passes off Pepsi as its product
a. Reverse passing off can violate the Lanham Act if a
misdescription of origin causes commercial injury
b. Bretford: Commercial injury must be “trademark
injury.” No injury under trademark law for copying
trade dress that is a functional design, like v-shaped
computer table.

9. FALSE ADVERTISING LIABILITY UNDER SECTION 43

a. False advertising: Advertisements that are literally false or misleading
can give rise to liability under section 43(a)
i. Includes making false statements about someone else’s products
and statements about your own product

b. Limits on liability
i. Only applies to commercial speech
1. Speech made for a commercial purpose- to describe
products, to sell products
ii. Only applies to statements of fact, not statements of opinion
iii. Liability only attaches to parties making statement (not the person
publishing statements, e.g. magazine)
iv. Only competitors have standing (even though statute says that
anyone who believes he has been damaged can bring suit, courts
read “anyone” to mean any competitor, not general public)

c. Comparative advertising
i. Advertiser can use a competitor’s trademark in order to compare
his product to the competitor so long as the comparison is truthful
and doesn’t confuse consumer about the source of the goods
d. Literal falsehoods
i. Tropicana: Commercial false because it incorrectly represents that
Tropicana made w/unprocessed fresh squeezed juice, when really
juice pasteurized and maybe frozen (Bruce Jenner pouring fresh
squeezed juice into a Tropicana carton and saying “it’s pure,
pasteurized juice as it comes from the orange”)

e. Misleading representations
i. Advertiser may be liable if it misrepresents the quality or nature of
a competitor’s product

f. Dilution
i. Only provides protection for famous trademark
1. Factors to determine “fame”
a. geographic scope of sales
b. geographic scope of advertising
c. how well consumers actually recognize mark (based
on survey evidence)
ii. Two forms of dilution
1. Dilution by blurring
a. Two different trademarks are similar enough that
consumers will begin to find the original trademark
less distinctive than it was before the second
trademark started being used
b. Factors to determine if blurring has occurred
i. How similar are the two marks
ii. How distinctive is the famous mark is (more
distinctive, more prone to blurring)
iii. How exclusive is the famous trademark
owner’s use of the mark (if many parties are
using the mark, that indicates that there is
already an inherent amount of dilution, so
less likely liability for another similar mark)
iv. How famous the mark is (the more famous,
more likely it will be diluted)
v. Intent of the other mark owner’s use (bad
faith counts against D)
vi. Has the D made any association between his
mark and the famous mark (if the D has
actually tried to associate his mark with
famous mark that would dilute the value of
the famous mark)

2. Dilution by tarnishment
a. Key difference from blurring: Looks at whether
 someone else’s use damages the reputation of the
owner of the famous mark (very likely to be found
where similar mark used in adult industry product)

iii. Limits to dilution claim.

1. Section 43(c): Three key limitations
a. Fair use (descriptions, comparisons, parodies)
b. News reporting & commentary
c. Non-commercial use

2. As in other areas, the dilution claim involves trade dress and

the mark is not registered, then the owner of the trade dress
has the burden of proving that the trade dress is not
functional

3. Monetary damages
a. Available w/in cts discretion if there is a likelihood
of dilution and others factors apply, such as
elements of willfulness
4. Using a registered mark is a defense to a dilution claim

10. RIGHT OF PUBLICITY

a. Developing area of law
i. Derived primarily from state law – most developed in CA because
of Hollywood, so CA case law persuasive in most jurisdictions
ii. No federal right of publicity statute - but sometimes parties may
weave in an unfair competition/unregistered trademark claim under
43 of Lanham Act that’s really getting at publicity type protection
1. Using identification/description to simply identify a person
is not an issue – problems arise when the way the
identification is used suggests that the celebrity either is
endorsing the product or is the source of the product.

b. Four elements of right of publicity

i. D used the plaintiff’s “identity” (term of art)
1. Identity = some famous person’s name, picture, some other
likeness (eg caricature); can even extend to catch phrases,
vocal style
2. When celebrity is a group –identity can be group name,
picture of the group as a whole, some other likeness
ii. D used the P’s identity to attain some advantage
iii. P did not consent to use of identity
iv. P suffered some sort of injury as a result of the use
1. Injury can encompass lost sales revenue (e.g. if D sells
David Letterman t-shirts, that’s revenue lost to DL)
2. Person must be famous for injury to occur: No commercial
 value to someone’s identity unless person is famous

c. California civil code 3344

i. Right of publicity violation occurs when: “Any person who
knowingly uses another's name, voice, signature, photograph, or
likeness, in any manner, on or in products, merchandise, or goods,
or for purposes of advertising or selling, or soliciting purchases of,
products, merchandise, goods or services, without such person's
prior consent”

d. Artistic expressions
i. Not actionable unless explicitly misleading or has nothing to do
with the artistic work

11. INTERNET DOMAIN NAMES

a. Unlike trademark, where the same trademark can be used on different
categories of goods, once a name is taken for domain name it’s no longer
available – even if there’s someone else out there w/stronger trademark in
the name. This led to speculation in presumably valuable domain names,
which prevented registered owners from using their domain names.
i. “Cybersquatting” = when people take possession of domain names
in which they have no legitimate interest

b. Anticybersquatting Consumer Protection Act (ACPA)

i. Codified at Section 43(d) of the Lanham Act
ii. 43(d)(1): One can be liable for using a domain name that is similar
or identical to someone else’s trademark whether or not that mark
is registered or not if:
1. Bad faith intent to profit from
2. Registers, traffics in, or uses a domain name that is identical
or confusingly similar to a distinctive or famous mark

iii. Determining bad faith – factors

1. Whether the person has trademark or intellectual property
rights in the domain name
2. Whether it’s the person’s legal name (or name used to
commonly identify the person)
3. The person’s prior, bona fide use of the domain name before
registering it
4. Whether registered for fair use reason
5. Any evidence that intent was to divert consumers away from
mark owner’s web site
6. Offer to sell/transfer the domain name
7. Whether the person provided false information in applying
to register the domain name
8. Registration of multiple domain names
 9. Distinctiveness

a. Bad faith won’t be found if the court determines

that the person believed and had reasonable grounds
to believe that the use of the domain name was a
fair use or otherwise lawful
b. No 3rd party liability- simply running a domain
name auction site doesn’t qualify

iv. Remedies
1. Equitable: Court may cancel the domain name so no one can
use it, or order that bad faith user transfer ownership to the
mark owner (all that’s available if an in rem action)

2. Monetary relief: Whether eligible depends in part on

jurisdictional relief. May be statutory damages.

v. “Gripe” sites”
1. “Cybergripers” (consumers who post complaints about
company on web sites under company name to inform
other consumers and have no commercial motivations) are
generally not covered by the ACPA
2. Developing area of law – If a person has many gripe sites,
could be indicative of bad faith

vi. In rem jurisdiction

1. Available where cybersquatter is unreachable/not in US
2. Not limited to bad faith registration – also available for
federal infringement and dilution claims

vii. Uniform Trademark Domain Name Dispute Resolution Policy

1. Administrative alternative to 43(d)
2. Mandatory trademark dispute resolution policy that ICANN
imposes on all domain name registrants
3. ICANN standards are basically the same as 43(d)

12. REMEDIES
a. Two major categories: injunctions and monetary damages. Injunctions
encompasses a wide variety of things
b. Three types of injunctions (timing)
i. Temporary restraining order: Apply at the very initial stages of a
dispute involving court action
ii. Preliminary injunction: Follows TRO; will often extend during the
course of litigation.
iii. Permanent injunction: Awarded after court decides liability.
c. Complete or partial relief may be awarded
 i. Complete: stop all use of trademark
ii. Partial: D might be allowed to keep using the trademark but in
some modified form (e.g., having to change font, color, size of
elements, terms used in connection w/ the mark)
d. What is sufficient to warrant injunction
i. Plaintiff will suffer irreparable harm if injunction not awarded --
monetary damages won’t be enough
ii. Likelihood of confusion: Once plaintiff has demonstrated
likelihood of confusion, presumed that P will suffer irreparable
harm if not granted injunction
iii. Balance of hardships: Ninth Circuit alternative test --Injunctive
relief warranted if the balance of hardships tips in plaintiff’s favor
iv. Public interest factor: may also weigh for / against injunction
e. TROs- number of instance where might be needed
i. Very similar to preliminary – the standard the court is going to use
to decide whether to grant is basically the same. But there are three
main differences btwn TRO and prelim
1. Different procedural requirements – a TRO can be granted
ex parte (w/o the other party participating in the
proceeding).
a. Motion can be made and a decision can be rendered
w/o notice or participation if certain requirements
are met – the plaintiff must show that immediate
and irreparable injury will occur if not granted; and
that irreparable injury will occur before D could be
brought in to participate
b. P seeking a TRO does have to demonstrate that it
tried to give the other party notice but that other
party couldn’t be located, more likely to grant if
notice has been given
2. Different durations
a. TRO w/o notice to the other party it can only last
for 10 days (can be extended for another 10 days,
but that’s it)
b. Preliminary injunction can last for entire duration of
the trial
3. Different standards for appeal
a. TRO can’t be appealed, prelim can

f. Disclaimers
i. Where the likelihood of consumer confusion is less than
substantial court may grant disclaimer relief
ii. Injunction is equitable remedy: Relief granted should be no
broader than necessary
iii. Courts have a wide range of discretion in framing an injunction in
terms it deems reasonable to prevent wrongful conduct
g. Monetary relief
i. In regards to all trademark infringement:
1. A prevailing party is entitled to recover defendant’s profits
and its own damages and costs when a defendant has
violated plaintiff’s rights regarding registered mark or
rights under Sections 43(a) or 43(d); also when defendant
has willfully violated plaintiff’s rights under 43(c)
2. To prove profits, plaintiff just has to show the number of
sales, up to defendant to establish what its costs were
3. A court can decide to increase damages up to 3 times within
its discretion – most often where there is willful violation,
but not expressly required.
4. In an exceptional case court can order the prevailing party
can be awarded its attorney fees
ii. Counterfeiting: courts are going to penalize that more. 43(b)
1. A court must triple the damages and award reasonable
attorney fees if there is counterfeiting unless there are
extenuating circs (only may with regular trademark
infringement cases)
2. The P can elect to receive statutory damages between $5K-
$100K per counterfeit trademark per category of goods
3. If there’s willful counterfeiting the court can award statutory
damages of up to $1mil per mark per category of goods
4. Actual damages: have to be proven
iii. Cybersquatting 43(d)
1. P can elect statutory damages similar to counterfeiting
($1000k $100,000 per domain name)

iv. Factors to consider in deciding whether to award damages based

on Defendant’s net profits
1. Did D intend to deceive
2. Has P actually lost sales
3. Would other measures of damages be adequate
4. Did P delay in bringing suit (strategically?)
5. Whether the public has an interest in making the infringing
conduct unprofitable
6. Whether the D was palming off his goods as the plaintiff

v. Corrective advertising awards

1. Plaintiff can recover corrective advertising expenses
2. But dollar-for-dollar corrective advertising may not be
necessary to dispel the effects of confusing and misleading
advertising - depends whether necessary to dispel
confusion and deception in the consuming public’s mind
a. Big O: Big O not entitled to the total amount
 Goodyear spent on its nationwide campaign since
Big O only has dealers in 14 states, so it is
unnecessary for Big O to run a nationwide
advertising campaign – shows how damage
calculations can get complicated.
b. Plaintiff has stronger argument if it’s already
invested in the corrective advertising, so that court
knows how much it will cost

vi. Reimbursement for attorney fees

1. Court may award to prevailing party in exceptional cases
a. To get it usually need some kind of
malice/culpable/willful conduct by the other party –
might be how the party conducts itself during
litigation, or bringing suit in bad faith, or willful
trademark infringement

vii. Counterfeiting
1. Treated more severely by Congress and the courts because it
puts the economy and people’s safety at risk
2. Can involve and can be itself criminal activity