Advanced Issues for the IP Professional

Advanced Issues Advanced Issues for the IP for the IP PractionerPractioner

Ronald D. Coleman

COLEMAN LAW FIRM A Professional Corporation

Ronald D. Coleman www.coleman-firm.com

The First Amendment “Congress shall make no law…”

Axiom: Trademark rights are a limitation on “speech” (expression)

First Principles


[W]e cannot indulge the facile assumption that one can forbid particular words without also running a substantial risk of

suppressing ideas in the process.

Cohen v. California, 403 U.S. 15, 26 (1971)

First Principles


THE ANCIENT TEST FOR TRADEMARK INFRINGEMENT vel non

LIKELIHOOD OF

CONFUSION


PROCEED CAUTIOUSLY

Courts are not to stake out new territory in the trademark domain

at the expense of curtailing the ability of a speaker to communicate

his message.

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)


WEIGH EFFECT ON SPEECH

In determining the outer limits of trademark protection the weight of the risks of confusion and suppression of

expression may tip the scales against trademark protection.

Silverman v. CBS, Inc., 870 F.2d 40, 49 (2d Cir. 1989)


BE RELUCTANT TO USE FORCE

Courts are to be particularly reluctant to issue an injunction, even in a Lanham Act case, where there are delicate questions implicating First Amendment rights.

Stop Olympic Prison v. United States Olympic Committee, 489 F. Supp. 1112, 1123 (S.D.N.Y. 1980)


TRADEMARK NOT A DEVICE TO SILENCE DISSENT

A trademark may frequently be the most effective means of focusing attention on the trademark owner or its product, the recognition of exclusive rights encompassing such use would permit the stifling of unwelcome discussion, and is forbidden.

United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 92, n.3 (2d Cir. 1997), cert. denied, 118 S. Ct. 1521 (1998)

L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 31-33 (1st Cir.), cert. denied, 483 U.S. 1013 (1987)

Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402-03 n.8 (8th Cir 1987)


LIKELIHOOD OF

CONFUSION

THE TEST FOR TRADEMARK INFRINGEMENT


As of 1998, it could fairly be said that:Initial interest confusion has been applied only where a potential purchaser is initially confused such that the senior seller may be precluded from further consideration by the buyer. Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990)(emphasis added).

“INITIAL INTEREST” CONFUSION


The consumer as idiotThe consumer as idiot

Minimum level of discernment and intelligence on the part of consumers was presumed.

Consumers were expected to distinguish between the use of a mark to draw attention, and the use of a mark to indicate source. Stop the Olympic Prison v. United States

Olympic Comm., 489 F. Supp. 1112 (S.D.N.Y. 1980); Girl Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969).


Gets less constitutional protection: ‘It’s “hardy” because it’s motivated by $$.’

Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557 (1980)

COMMERCIAL SPEECH


Communication of information, expression of opinion, recitation of grievances are all deserving of constitutional protection, and are not commerce.

New York Times Co. v. Sullivan, 376 U.S. 254, 267 (1964).

COMMERCIAL SPEECHCOMMERCIAL SPEECH


COMMERCIAL SPEECHCOMMERCIAL SPEECH

The test of whether speech is “commercial speech” is whether or not “proposal

of a commercial transaction” is the sole

purpose of the expression.

Cincinnati v. Discovery Network, Inc., 507 U.S.

410 (1993)


Ninth Circuit - Yesterday

“The Second Circuit held in United We Stand America, Inc. v. United We Stand, America New York, Inc., 128 F.3d 86, 90 (2d Cir. 1997), that the “use in connection with the sale of goods and services” requirement of the Lanham Act does not require any actual sale of goods and services. Thus, the appropriate inquiry is whether Kremer offers competi services to the public. Kremer is not Bosley’s competitor; he is their critic. His use of the Bosley mark is not in connection with a sale of goods or services — it is in connection with the expression of his opinion about Bosley’s goods and services.”

To find a Lanham Act violation without finding commercial use may contradict Congress’ intent.

BOSLEY MEDICAL INSTITUTE v. KREMER April 4, 2005




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Advanced Issues for the IP Professional