trademark confusion: forward, reverse, initial interest...

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Trademark Confusion: Forward, Reverse, Initial Interest, Post-Sale and Affiliation Proving or Defending Against Infringement Under the Likelihood of Confusion Standard Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. THURSDAY, MAY 17, 2012 Presenting a live 90-minute webinar with interactive Q&A Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta Cheryl L. Black, Principal, Goodman Allen & Filetti, Richmond, Va. Robert D. Litowitz, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

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Trademark Confusion: Forward, Reverse, Initial Interest, Post-Sale and Affiliation Proving or Defending Against Infringement Under the Likelihood of Confusion Standard

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.

THURSDAY, MAY 17, 2012

Presenting a live 90-minute webinar with interactive Q&A

Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta

Cheryl L. Black, Principal, Goodman Allen & Filetti, Richmond, Va.

Robert D. Litowitz, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

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Trademark Confusion: Forward, Reverse, Initial Interest, Post-Sale and

Affiliation

Ted Davis Kilpatrick Townsend & Stockton LLP

PROVING LIKELY

CONFUSION

• the protection against confusion in the marketplace; and

• the protection of mark owners’ goodwill.

They are:

The Twin Purposes of Trademark Law

6

PROVING LIKELY

CONFUSION

• Section 32 of the Lanham Act, 15 U.S.C. § 1114(1);

• Section 43(a) of the Lanham Act, id. § 1125(a);

• Section 42 of the Lanham Act, id. § 1124; • the common law; and • most state statutory unfair competition

causes of action.

They include:

Bases of the Likelihood-of-Confusion Test

7

PROVING LIKELY

CONFUSION

Any person who shall, without the consent of the registrant ... 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 ... shall be liable in a civil action by the registrant.

15 U.S.C. § 1114(1). 8

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

Any person who … uses in commerce any word, term, name, symbol, or device, or any combination thereof, … which …is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person … shall be liable in a civil action ….

15 U.S.C. § 1125(a). 9

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

• source or origin of the parties’ goods or services;

• sponsorship; and • affiliation.

Types of actionable likely confusion:

10

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

A consumer need not believe that the owner of the mark actually produced the item and placed it on the market in order to satisfy § 43(a)’s confusion requirement. The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.

Famous Horse Inc. v. 5th Ave. Photo Inc., 624 F.3d 106, 109 (2d Cir. 2010) (internal quotation marks omitted). 11

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

12

Bases of the Likelihood-of-Confusion Test

Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535 (11th Cir. 1985)

PROVING LIKELY

CONFUSION

13

Bases of the Likelihood-of-Confusion Test

D.C. Comics Inc. v. Unlimited Monkey Bus., Inc., 598 F. Supp. 110 (N.D. Ga. 1984)

PROVING LIKELY

CONFUSION

• point-of-sale;

The timing of actionable likely confusion:

14

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

• end consumers who are: – prudent and not gullible; but also – not necessarily sophisticated;

• upstream consumers in the trade;

Possible victims of likely confusion:

15

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

[A]ctual trade confusion is highly probative on the question of whether a likelihood of confusion exists, generally, in the marketplace, since [retailers] may be deemed more sophisticated about the origins and sources of product lines than average consumers.

Berkshire Fashions, Inc. v. Sara Lee Corp., 725 F. Supp. 790, 796-97 (S.D.N.Y. 1989), aff’d, 904 F.2d 33 (2d Cir. 1990).

16

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

[A plaintiff] need not prove confusion on the part of actual consumers. Prior to 1962, § 32(1)(a) of the Lanham Act, 15 U.S.C. § 1114(1), required confusion, mistake, or deception by “purchasers as to the source or origin of such goods or services.” In 1962, the quoted words were deleted, specifically to allow any kind of confusion in support of a trademark infringement action.

Marathon Mfg. Co. v. Enerlite Prods. Corp., 767 F.2d 214, 221 (5th Cir. 1985) (citation omitted).

17

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

• end lay consumers who are: – prudent and not gullible; but also – not necessarily sophisticated;

• upstream consumers in the trade; and, possibly,

• anyone.

Possible victims of likely confusion can include:

18

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

• point-of-sale; • pre-sale;

The timing of actionable likely confusion:

19

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

Initial interest confusion, which is actionable under the Lanham Act, occurs when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated.

Promatek Indus. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002).

20

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

21

Bases of the Likelihood-of-Confusion Test

Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987)

PEGASUS PETROLEUM

PROVING LIKELY

CONFUSION

22

Dr. Seuss Enters. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997)

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

In the Internet context, in particular, entering a web site takes little effort – usually one click from a linked site or a search engine’s list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store’s ownership.

Brookfield W. Commc’ns Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1057 (9th Cir. 1999).

23

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

[T]he default degree of consumer care is becoming more heightened as the novelty of the Internet evaporates and online commerce becomes commonplace ....

Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1152 (9th Cir. 2011).

24

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

[I]nitial interest confusion is of greatest concern when products are in competition with each other—in those instances, customers may be drawn to a product and identify it with a particular source without realizing until later that it came from elsewhere.

Chatam Int’l, Inc. v. Bodum, Inc., 157 F. Supp. 2d 549, 558 (E.D. Pa. 2001), aff’d, 40 Fed. Appx. 685 (3d Cir. 2002).

25

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

• point-of-sale; • pre-sale; and • post-sale.

The timing of actionable likely confusion:

26

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

27

Bases of the Likelihood-of-Confusion Test

Chrysler Corp. v. Silva, 118 F.3d 56 (1st Cir. 1997)

PROVING LIKELY

CONFUSION

28

Bases of the Likelihood-of-Confusion Test

Au-Tomotive Gold Inc. v. Volkswagen of Am., 603 F.3d 1133 (9th Cir. 2010)

PROVING LIKELY

CONFUSION

We believe that, in the context of [an] industrial machine, the typical consumer will not assume that the two manufacturers are associated in some way. Rather, where product configurations are at issue, consumers are generally more likely to think that a competitor has entered the market with a similar product.

Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 382-83 (7th Cir. 1996).

29

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

[A]ny relevant consumer confusion will likely occur prior to sale, if at all .... The inherently concealed nature of worn underwear diminishes the concern for post-sale confusion….

Munsingwear Inc. v. Jockey Int’l, Inc., 31 U.S.P.Q.2d 1146, 1150 (D. Minn.), aff’d, 39 F.3d 1184 (8th Cir. 1994).

30

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

• forward confusion; and • reverse confusion.

The two “directions” of likely confusion:

31

Bases of the Likelihood-of-Confusion Test

PROVING LIKELY

CONFUSION

32

Bases of the Likelihood-of-Confusion Test

Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977)

PROVING LIKELY

CONFUSION

33

Bases of the Likelihood-of-Confusion Test

Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977)

PROVING LIKELY

CONFUSION

34

Bases of the Likelihood-of-Confusion Test

Masters Software, Inc. v. Discovery Commc’ns, Inc., 725 F. Supp. 2d 1294 (W.D.

Wash. 2010)

Ted Davis

Kilpatrick Townsend & Stockton LLP

Suite 2800, 1100 Peachtree Street

Atlanta, GA, 30309-4528

404.815.6534

[email protected]

35

© 2012 Goodman Allen & Filetti, PLLC

WWW.GOODMANALLEN.COM

36 May 17, 2012

TEST FOR LIKELIHOOD OF CONFUSION

BY

CHERYL L. BLACK

© 2012 Goodman Allen & Filetti, PLLC

Test for Likelihood of Confusion

37 May 17, 2012

In ex parte matters Refusal under Section 2(d) of the Trademark Act in

applications for registration filed with the USPTO In inter partes proceedings before the TTAB

Notice of Opposition to registration of a trademark application

Petition to Cancel a federal registration In Civil Actions

Trademark infringement

© 2012 Goodman Allen & Filetti, PLLC

Du Pont Factors In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973)

38 May 17, 2012

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of 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 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 good will of the related business. (d) laches and estoppel attributable to owner of 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.

© 2012 Goodman Allen & Filetti, PLLC

Du Pont Factors

39 May 17, 2012

Two-Prong Test The Marks Appearance Sound Meaning Overall Commercial Impression

Goods/Services Same or related As described in the application and registration

Reasonable Person Test

© 2012 Goodman Allen & Filetti, PLLC

Applying Du Pont Factors

40 May 17, 2012

© 2012 Goodman Allen & Filetti, PLLC 41 May 17, 2012

Applying Du Pont Factors

© 2012 Goodman Allen & Filetti, PLLC

Factors Vary by Jurisdiction

42 May 17, 2012

2nd Cir – Polaroid Test Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492, 128 U.S.P.Q. 411 (2d Cir.

1961)

(1) the strength of [plaintiff's] mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, (4) the likelihood that the prior owner will bridge the gap, (5) actual confusion, (6) the reciprocal of defendant's good faith in adopting its

own mark, (7) the quality of defendant's product, (8) and the sophistication of the buyers

© 2012 Goodman Allen & Filetti, PLLC

Factors Vary by Jurisdiction

43 May 17, 2012

4th Cir- Pizzeria Uno Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527, 224 U.S.P.Q. 185 (4th Cir. 1984)

(1) the strength or distinctiveness of the mark; (2) the similarity of the two marks; (3) the similarity of the goods/services the marks identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant's intent; (7) actual confusion

Shakespeare Co. v. Silstar Corp. of Am., 110 F.3d 234, 242, 42 U.S.P.Q.2d 1266 (4th Cir. 1997); Perini Corp. v. Perini Construction, Inc., 915 F.2d 121, 127, 16 U.S.P.Q.2d 1289 (4th Cir. 1990)

(8) the proximity of the products as they are actually sold; (9) the probability that the senior mark owner will "bridge the gap" by entering the

defendant's market; (10) the quality of the defendant's product in relationship to the quality of the

senior mark owner's product; and (11) the sophistication of the buyers

© 2012 Goodman Allen & Filetti, PLLC

Weight of Factors Vary Case by Case

44 May 17, 2012

The weight of the evidentiary elements are not the same in all cases. As the facts of each case differ so does the weight of the factors.

© 2012 Goodman Allen & Filetti, PLLC

Practice Tips

45 May 17, 2012

Present evidence based on factors for the Jurisdiction If USPTO, TTAB or Federal Circuit, du Pont factors If civil action, check factors for the particular

jurisdiction Remember it is a subjective test determined on a

case by case basis Consider the circumstances surrounding the facts in

your case Consider whether a reasonable person in your

target market would be confused

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Proving a Likelihood of Confusion May 17, 2012

Presented by

Robert D. Litowitz

47

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A Lifetime of Confusion

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A Lifetime of Confusion

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A Lifetime of Confusion

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A Lifetime of Confusion

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???

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Proving a Likelihood of Confusion

• “[A] question of law based on underlying facts.” In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003)

• Trademark owner has burden of proof

53

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Proving a Likelihood of Confusion

• Two categories of “facts” that can be proven – Objective facts—who, what, when, how much?

• Documents • Records • Testimony of fact witnesses

– Subjective facts—what’s likely to happen • Surveys • Other expert testimony

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Objective Facts: The Theme and Story

• Trademark litigation is not unique • A good theme and story spell success

55

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Theme: Case Study

• Bridgestone v. Federal – Issue: Does MILANZA for tires conflict with POTENZA

and TURANZA tire marks?

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Bridgestone’s Theme

• Its famous tire marks have wide traction • Upstart competitor can’t “draft” on Bridgestone’s

goodwill

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Federal’s Theme

• Bridgestone doesn’t own “Italian”

• POTENZA and TURANZA are secondary to BRIDGESTONE/lack fame

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The Stories

• Bridgestone – We spent $ millions, sold $ millions to make POTENZA

and TURANZA category leaders – Marks have same cadence, structure, and origin – Federal wants to free-ride on our success through, at

least, initial interest confusion • Federal

– MILANZA evokes Milan; ZA simply imparts emphasis in Chinese

– BRIDGESTONE may be famous, secondary marks aren’t

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The Proofs

• Strength of marks – Degree of strength = Degree of protection

• Inherent strength: Where do marks fall on the “spectrum?” • Commercial strength: How well do consumers know the mark?

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Proofs: Inherent Strength

Fanciful

Arbitrary

Suggestive

Descriptive

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Bridgestone

• POTENZA and TURANZA – Unique – Arbitrary – Distinctive – Inherently strong

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Proofs: Commercial Strength

• Dollars spent on advertising and promotion • Revenues earned • Number of sales • Length of use

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Bridgestone

• POTENZA and TURANZA achieved commercial strength – POTENZA used since 1981 – TURANZA used since 1992 – Sales and advertising “impressive by any standard”

– $ billions in sales – Extensive promotion and marketing

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Objective Evidence: Cost of Goods

• How much do products at issue cost? – Impulse purchase? – Careful purchase? – Distracted shopper? – Educated consumer?

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Bridgestone

• Not all tires are expensive • Consumers buy “on the spot,” adding “impulse”

component

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Where Are Goods Sold?

• In brick-and-mortar store? • Online? • In same location/trade channel? • In different locations/trade channels?

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Bridgestone

• Identical goods (tires) • Identical trade channels

(auto stores/tire dealers/garages/dealerships) – Not necessarily sold side-by-side in same stores

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Objective Evidence: Advertising

• How and where are goods advertised – Same media? – Different media?

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Bridgestone

• Bridgestone used many advertising media – TV – National print – Local print – Billboards – Race sponsorships

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Goods • Where goods are

identical, less similarity in marks required

Marks • Where marks are

identical, less similarity in goods required

Similarity

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Bridgestone

• Both sides sold tires – Exact identity between the marks not required – MILANZA similar enough to POTENZA and

TURANZA in appearance, sound, connotation to create likelihood of confusion

• What if: TURANZA for auto tires vs. TURANZA for bicycles?

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Objective Evidence: Intent

• What motivated defendant to choose its mark? – Likelihood of confusion may be presumed where

defendant deliberately mimicked the plaintiff’s mark • Example: YKK vs. YPP for zippers

– Defendant rejected numerous options as not similar enough to YKK

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Objective Evidence: Intent

• But choosing mark that calls to mind another’s mark does not necessarily create presumption: No monopoly on two syllable marks with Scandinavian “flair” – Haagen Dazs v. Frusen Gladje, 493 F.Supp. 73

(S.D.N.Y. 1980)

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Bridgestone

• Federal knew of POTENZA and TURANZA, but chose similar MILANZA – Violated duty of second-comer to steer clear of

competitor’s successful marks

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Objective Evidence: Actual Confusion

• The best evidence of the likelihood of confusion, but is not required

• Actual confusion evidence can be hard to find • Actual confusion evidence is tricky

– Courts sometimes discount or reject it – Absence of actual confusion over time may help

defendant

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Actual Confusion: Example

• The Fresh Market • Arthur’s Fresh Market

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Actual Confusion: Example

• The Fresh Market v. Arthur’s Fresh Market – Fresh Market was incontestable mark for grocery chain – Fresh Market expanded to new state/city - Indy – Local grocer opened Arthur’s Fresh Market; planned

another in Letterman’s old store – Fresh Market and Arthur’s both recorded actual

confusion – Court minimized this evidence, denied injunction

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Proving Likelihood of Confusion: Subjective Facts

• Given the objective facts—the marks, the products, the purchasers, the trade channels, the advertising, how likely is it or not that confusion will occur?

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Subjective Facts: Experts

• Survey Experts – To conduct surveys and

present them – To critique surveys

• Other experts – Linguists – Marketing experts – Industry experts – Legal experts

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Surveys Testing Likelihood of Confusion

• Survey not necessary, especially for flagrant infringement

• But – Courts often expect surveys – Lack of survey can hurt – Courts sometime view competing surveys as a “push”

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Survey Fundamentals

• Manual of Complex Litigation, Federal Judicial Center Reference Guide on Survey Research – Choose the right people to interview (“the universe”) – Obtain a fair sample – Use qualified interviewers who follow proper procedures – Make questions clear, relevant, non-leading – Analyze and present the results properly and fairly

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Survey Fundamentals: Who to question?

• Potential customers likely to be exposed to the marks at issue – Forward confusion—the accused infringer’s customers – Reverse confusion—the trademark owner’s customers

• Relevance is the key: questioning the wrong people produces irrelevant results

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Survey Fundamentals: What Should Participants Be Shown?

• Survey should strive to replicate real world – Participants should see the marks at issue as they

would when deciding what to buy – Survey should avoid biased or misleading presentations

• Example—showing two marks side-by-side when they are not sold that way

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Survey Fundamentals: What Questions Should Be Asked

• Eveready format – Who do you think makes this product, if you know? – Do you think the maker of this machine offers any other

products or services? • If yes, what other products or services? • What makes you think so?

– Best for when plaintiff’s mark is well know

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Survey Fundamentals: What Questions Should Be Asked

• Squirt format – [After showing first product] Do you think this product is

made by the same company as the product I just showed you?

– If yes, what makes you think so?

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Survey Fundamentals: Controls

• Surveys of likelihood of confusion usually need a control – A “dummy” stimulus to weed out “confusion” caused by

guessing or other factors unrelated to similarity of the marks

• e.g. “Sandoz” in survey to measure whether “Zeneca” for ag chemicals conflicted with “Seneca” for seeds

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Survey Fundamentals: What Are Good Results

• Rule of thumb—15% or higher – Courts have accepted 10% or lower, where market is

large

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Other Experts

• Linguists – Can testify about similarity or differences in meaning or

sound of marks and strength of marks • e.g. “Whisper quiet” for laundry dryers is descriptive • e.g. “Zeneca” audibly different from “Seneca” • e.g. Similar meanings of “Tornado” and “Cyclone” • e.g. Similarity between “Swedish Fish” and “Squish Fish” • e.g. “Mc” prefix transcends McDonald’s

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Other Experts

• Industry expert—how and where products are sold, advertised – e.g. Toys and hobbies sold at different stores – e.g. Internet marketing expert explained that

“pay per click” ads generate little brand awareness

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Other Experts

• Industry experts (cont.) • Who buyers are and how they decide

– e.g. purchasers of ladies’ raincoats are careful – Result—no confusion between DRIZZLE for women’s coats and

DRIZZLER for golf jackets

– e.g. Guitarists use instruments’ head stocks to identify brand

– e.g. How much attention do shoppers spend looking at a label

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Other Experts

• Legal expert – To explain procedures at the PTO – To explain search procedures – To express opinion on similarity of mark based on PTO

experience

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When to Use Experts

• Preliminary injunction • Summary judgment • Trial • Expert disclosures • Expert reports • Daubert motions—expert must be qualified and

her testimony must “fit” (be relevant and useful) and reliable. Rules 702, 703, 403

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Conclusion: Formula for Winning

• Start with a compelling theme • Tell a compelling story • Marshall the objective facts • Strategically deploy surveys and other experts

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Questions?

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Thank you! Robert D. Litowitz ([email protected]/1.202.408.4048) • Seasoned litigator with experience in litigating trademarks and other

IP rights before the courts, the ITC and the TTAB • Practice includes litigation, counseling clients, and obtaining,

maintaining, and enforcing their trademark rights, both in the United States and abroad

• Additional expertise in the area of trademark surveys

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Disclaimer

These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These materials reflect only the personal views of the authors and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the authors and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with the authors or Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. While every attempt was made to ensure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed.

© 2012 Goodman Allen & Filetti, PLLC

WWW.GOODMANALLEN.COM

98 May 17, 2012

DEFENSES

BY CHERYL L. BLACK

© 2012 Goodman Allen & Filetti, PLLC

Assertion of Right to Mark

99 May 17, 2012

Registration: Prima facie evidence of the validity of the Registered mark Registration of the mark Registrant’s ownership of the mark Registrant’s exclusive right to use the registered

mark in commerce on goods/services listed in the registration

Incontestable Registration: Conclusive evidence of aforementioned validities

© 2012 Goodman Allen & Filetti, PLLC

Defenses – 15 U.S.C. §1115

100 May 17, 2012

Challenge Registration Abandonment Genericide Fraud

Equitable Defenses Laches, estoppel and acquiescence

Refute Likelihood of Confusion Fair use Senior user

© 2012 Goodman Allen & Filetti, PLLC

Fair Use

101 May 17, 2012

Classic Fair Use Defendant uses the plaintiff’s mark to describe the

defendant’s own product KP Permanent Make-up, Inc. v. Lasting Impression

I, Inc., 543 U.S. 111, 125 S. Ct. 542, 160 L. Ed. 2d 440 (2004)

Plaintiff has the burden of proving likelihood of confusion

A party raising the statutory affirmative defense of fair use to a claim of trademark infringement does not have the burden to negate confusion

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Fair Use

102 May 17, 2012

Nominative Fair Use Definitions:

Defendant uses the plaintiff’s mark to identify the plaintiff’ goods where the trademark is the only practical way to refer to the plaintiff

Defendant use the plaintiff’s mark to refer to plaintiff’s product in order to better describe defendant’s product or service

Types: Comparative advertising Creative works – motion pictures, novels Parody

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Nominative Fair Use

103 May 17, 2012

Ninth Circuit – Different Test for Likelihood of Confusion The alleged infringer uses the plaintiff’s trademark to

describe plaintiff’s goods or services AND Trademark is needed to describe the plaintiff’s goods/services; Use of mark is reasonably necessary; and User does not suggest sponsorship or endorsement by plaintiff.

New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308, 23 U.S.P.Q.2d 1534, 1539 (9th Cir. 1992)

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Nominative Fair Use

104 May 17, 2012

Third Circuit – Affirmative Defense Use of the plaintiff’s mark is necessary to describe both the

plaintiff’s product and the defendant’s product Defendant uses so much of plaintiff’s mark as necessary to

describe plaintiff’s product Defendant’s conduct or language reflect true and accurate

relationship between plaintiff and defendant’s products or services

Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 76 U.S.P.Q.2d 1769 (3d Cir. 2005)

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WWW.GOODMANALLEN.COM

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CHERYL L. BLACK [email protected] 804-565-3533 MS. BLACK’S TRADEMARK PRACTICE INCLUDES: • CLIENT COUNSELING • PROSECUTION AND PORTFOLIO MANAGEMENT • LICENSING AND OTHER TRANSACTIONS • ENFORCEMENT MS. BLACK’S EXTENSIVE LEGAL CAREER INCLUDES 15 YEARS AT USPTO PRIOR TO ENTERING PRIVATE PRACTICE. SHE BRINGS A UNIQUE AND IN-DEPTH UNDERSTANDING OF THE TRADEMARK OPERATION AND POLICIES AND PROCEDURES GOVERNING THE ISSUANCE, MAINTENANCE AND DEFENSE OF TRADEMARK REGISTRATIONS.