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MCLE Self Study: Intellectual Property
MCLE Self Study
Edited by Barbara Kate Repa

Intellectual Property: Who Wants to Be an IP Attorney?
By Jonathan Pink


I'm in my office yesterday when the telephone rings. A frantic potential client is on the line, desperate to find out how she can patent the copyright in her trademark. I hang up on her, irked by such ignorance. ?Okay, maybe I should save my hostility for infuriatingly slow motorists driving cars way more expensive than mine. Or maybe-just maybe-it is my duty to educate the masses.

And just to make that fun, let's pretend we're on a game show called Who Wants to Be an IP Attorney? Ready, masses?

Question 1: What is a trademark?
A.        A specific form of copyright protection that applies only to patents.

B.        A word, symbol, or device intended to prevent consumer confusion with regard to the origin of goods or services sold.

C.        This thing growing on the side of my neck that looks like Elvis and may be worth something on eBay.

The answer is B. Trademarks are intended to prevent mistake, deception, and consumer confusion about the origin of goods sold. (See, Time, Inc. v. Motor Publ'n, Inc., 227 F.2d 954 (4th Cir. 1955).) Before any infringement can be found, a plaintiff must typically establish a likelihood of consumer confusion as to the product's source-or origin-due to a similarity between the parties' trademarks. (E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1993); see also, 15 U.S.C. §§ 1114(a), 1125(a)(1).) This usually requires applying a test that looks at the strength of the plaintiff's mark, the similarity of the marks and goods at issue, the area of commerce in which the products are sold, the sophistication of the potential buyers, evidence of actual confusion, and the likelihood that the defendant intends to expand into the plaintiff's market. (AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).)

Give yourself one point if you got the correct answer. Give yourself two points if you shouted out "DING, DING, DING!" when you got it right. If you chose answer C, put down this article and log onto eBay right away.

Question 2: True or false, trademark infringement occurs any time someone swipes your mark to use on their products or services.
A.        Ooh, a true or false question. The only time I have a 50-50 shot at being right. I pick True.

B.        I hate these questions. A 50 percent chance of being wrong. I'll go with False.

The answer is B. Trademark infringement requires the commercial use of the same or similar mark that is likely to cause confusion with the actual or potential customers of the trademark owner's goods or services. The focus is on actual or potential customers' confusion, not on whether the holders of competing marks are in fact competitors. (15 U.S.C. ?1125(a); see also, Charles E. McKenney, Federal Unfair Competition: Lanham Act ?43(a), 2.04 (1993).) An infringer's product or service need only be sufficiently related to the trademark owner's goods or services so that it is reasonably likely that both goods or services are sold or advertised to common customers. (AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).)

A likelihood of consumer confusion is the hallmark of trademark infringement. This means that just because I have a company named BigGass that sells legume-based confectionary products ("Designed to Fill Your Tank"), and you have a company named BigGass that sells petroleum-based pantaloons to the supersized crowd, there will be no finding of infringement unless there is a likelihood that consumers would mistakenly believe that my candy company is the source of your couture. This is because trademarks are generally protectable only against goods or services that compete with or are related to the trademark owners' goods or services. (See, United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918); 15 U.S.C. ?1052(d); Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260 (5th Cir. 1975).)

Using the example above, clothes for large-size people are not deemed to be either competitive with, or related to, candy bars. Although wouldn't it be ironic if they were?

One caveat to this scope of protection is dilution. The Federal Trademark Dilution Act (FTDA) protects famous marks from dilution. (See, 15 U.S.C. ?1125(c).) To establish dilution, a plaintiff must first show that its mark is famous (Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).) The plaintiff must also establish that the defendant has made a commercial use of the mark after it became famous in a manner likely to "evoke in a relevant universe of consumers a mental association of the two" that causes "actual economic harm to the famous mark's economic value by lessening its former selling power as an advertising agent for its goods or services." (Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002).) Although a plaintiff is required to establish actual dilution to prevail on a dilution claim, it is not necessary to prove actual loss of sales or profits. (Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003).)

One point if you got the answer right. Two points if you ran down the hall screaming "DING, DING, DING!" Three points if you'll do it now.

Question 3: What's with that (r) ?
A.        It means you're claiming a trademark.

B.        It stands for "Robin." Those IP folks are such Batman fans.

C.        It means the trademark holder has obtained a federal registration for the mark.

The answer is C. Only those who have obtained a federal registration in their marks are entitled to use the (r) symbol. (See, Copelands' Enter., Inc. v. CNV, Inc., 945 F.2d 1563 (D.C. Cir. 1991).) Those who have not obtained a federal registration may claim a common law trademark but are relegated to the TM symbol.

The difference is that trademarks are territorial. For example, if I use my BigGass mark exclusively in California and do not obtain a federal registration for it, another company can use that mark for the same or similar goods or services in trade territories in which I am not using it. Such as New York and Illinois.

Conversely, by obtaining a federal registration for my mark, I acquire a nationwide constructive date of first usage of it from the date the application is filed with the United States Patent and Trademark Office. (15 U.S.C. ?1072.) This means that even though I don't sell in New York and Illinois, I have the same rights there as if I did-dating back to when my trademark application was filed. (Allard Enter., Inc. v. Advanced Programming Res., Inc., 249 F.3d 564 (6th Cir. 2001).) I have a basis for asserting trademark infringement against subsequent users of the mark but not prior users.

Moreover, a federal registration is prima facie evidence of ownership. (Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260 (5th Cir. 1975).) But using the (r) symbol without a federal registration will defeat the applicant's right to registration when "it is conclusively established that the misuse of the symbol was occasioned by an intent to deceive the purchasing public or others in the trade into believing that the mark was registered." (Johnson Controls, Inc. v. Concorde Battery Corp., 228 U.S.P.Q. (BNA) 39.)

If you got that answer right, give yourself a point. If you are willing to phone up your managing partner and scream "DING, DING, DING!" ... it's time to look for another job.

Question 4: What is a "senior user" and a "junior user"?
A.        Drug talk.

B.        The codependent relationship you had in college.
C.        Something to do with trademarks.

The answer is C. Senior users are the first users of the trademark in any geographic location. Junior users are just what their name implies. You might think that a junior user is automatically an infringer. Not so. Assume I've been selling BigGass candy under that mark since the early '80s, and you just entered the market with your own confusingly similar mark. Though you are indisputably the junior user, you are free to use the mark in trade territories in which I have not ventured. You become the primary mark user in those locations, relegating me to the junior user if I ever attempt to go there.

Absent various exceptions, caveats, and loopholes in which lawyers specialize, the junior user who uses the mark in the senior user's geographic location may be liable for trademark infringement. This is so even if the junior user obtained a federal registration for the mark after the senior user began using it but before going into the junior user's territory. (See, Nat'l Ass'n for Healthcare Communications, Inc. v. Central Arkansas Area Agency on Aging, Inc., 257 F.3d 732 (8th Cir. 2001).)

If you got this wrong, take away all your points.

Question 5: How long will my trademark last?
A.        The life of the author plus 70 years.

B.        Possibly forever.

C.        As long as The Rule Against Perpetuities.

The answer is B. Common law rights to trademarks last as long as you continue to use the mark. To renew a federal registration, you simply have to show the Patent and Trademark Office objective evidence of your continuous usage. (See, 15 U.S.C. §§ 1127, 1058, 1065.) However, if you fail to use the mark for three or more years, federal law will presume that you have abandoned it. (15 U.S.C. ?1127.)

This is confusing. Give yourself a point regardless of your answer.

Question 6: Which of the following is not a trademark? A.        The roar of the MGM lion.

B.        The phrase "Just Do It."

C.        Kleenex.

The answer is all three are trademarks, although Kleenex may not be able to hold that right much longer. (Stop complaining. You just got a free point.)

The level of protection that a mark provides and its ability to serve as a mark depends on where it falls on a continuum that ranges from generic-and thus unprotectable-to descriptive to suggestive to coined, fanciful, or arbitrary. A descriptive mark is a name that describes the goods or service, such as "Tom the Plumber." (Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866 (9th Cir. 2002).) A suggestive mark leaves a little more to the imagination-for example, "Fastpress" for basketball shoes. On the far end of the spectrum are fanciful and arbitrary marks. Think Kodak. It is merely a word that Mr. Eastman created many years ago by taking the word Kodiak-as in the bear-and eliminating a letter to create the name of his company. The more arbitrary and fanciful the mark, the stronger it is. The more descriptive the mark, the weaker.

In addition to abandonment, trademark protection may be unavailable if the mark is generic for goods with which it is used or becomes generic through overexposure. (In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (D.C. Cir. 2001).) In a way, this is the penalty for becoming too popular. Kleenex provides a perfect example, as does Xerox. How many times have you asked someone to give you a Kleenex or make you a Xerox? Both marks have become colloquial for the products they represent: A Kleenex is a soft facial tissue, and a Xerox is a photocopy. Once a mark becomes so widely associated with the generic product that people start referring to all products of that type by the mark-such as Jell-O for gelatin-the mark runs the risk of becoming the goods themselves and not just those of the originating company.

Give yourself two points if you're in the dark about this like the rest of the world.

Question 7: What is the initial-interest confusion doctrine?
A.        The way you feel after having read this article.

B.        The Rule Against Perpetuities.

C.        It is a little-known judicially created hangnail that exists under the trademark law.

The answer is C. The initial-interest confusion doctrine looks at whether the defendant's use of the plaintiff's mark was done in a manner calculated to capture initial consumer attention even though no actual sale is completed as a result of the confusion. (Dr. Seuss Enter., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997); Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1061-66 (9th Cir. 1999); 15 U.S.C. §§ 1114, 1125.) Some people have criticized this approach as a departure from the core principle of trademark law because it allows finding infringement when there is only fleeting confusion that is dispelled before any purchase occurs. Others have observed that because the initial-interest confusion doctrine relies on an amorphous standard that falls short of a reasoned analysis, it has the potential of being used as a potent weapon for keeping legitimate competitors out of the market. For example, the doctrine has been used to curtail parodies (see, Dr. Seuss, 109 F.3d 1394); criticism about the trademark owners (OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176 (2000); directory information about used equipment dealers (PACCAR Inc. v. Telescan Techs, LLC, 319 F.3d 243 (6th Cir. 2003); and promotions by third-party vendors of after-market servicing (Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808 (7th Cir. 2002).)

The basis on which many courts have applied the initial-interest confusion doctrine probably is better categorized as unfair competition. In a nutshell, section 43(a) of the Lanham Act is designed to promote fairness and honesty in business dealings by prohibiting false or misleading descriptions of fact; designations of origin; or misrepresentations as to characteristic, quality, affiliation, association, or geographic origin. Examples of unfair competition include confusingly similar corporate, business, and professional names, as well as titles of literary works. It also includes "bait and switch" selling tactics.

Give yourself a point if you got the answer right. Give yourself two points if you sat for the bar exam more than 30 days ago and can still explain The Rule Against Perpetuities.

Are You a Winner?
Give yourself 10 points for reading this entire article. Give yourself another 10 points if you understood any of it. Give yourself 10 points if you are willing to hang up on the next client who calls with a silly question. Game's over, contestants. Tally up your points. Now take the other quiz on the next page to garner those valuable MCLE credits.

Jonathan Pink (pink@lbbslaw.com), a partner in Lewis Brisbois Bisgaard & Smith, heads the Intellectual Property and Technology Group in the firm's Orange County office.

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