Blaw 3202 Test 2

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Blaw 3202 Test 2Chap 4, 5, and 6 Chap 4 Intellectual Property

3/4/2010 1:36:00 PM

Intellectual propertyrefers to a number of intangible rights which include trade names, trademarks, service marks, trade secrets, copyrights, and the right of publicity. It is a part of the promotion process. Owners of intellectual property have an exclusive but limited use of the symbols or names. The location of a non-competitor using the same trademark, the type of product or service offered and the manner in which it is sold are some of the factors considered by the courts in disputes. Licenses and endorsements: Rights can be transferred to another party for a fee, in the form of an endorsement or license. y Licensepermission, granted by an owner of intellectual property to another party to use the property in an agreed upon manner. (For clothing) y Endorsementendorsement of a commercial product or service is a public statement of preference for and recommendation of that product or service by a person or entity. o There can be celebrity or expert endorsements. Each celebrity or professional should actually use the product. Trademarks: They can include words or symbols or both. Also can include shapes, colors, sounds, and movements. Anything that distinguishes someones goods or services from others may qualify as a protectable mark. y Trademarkidentifies goods with the manufacturer (nike swoop, lexus cars, mcdonalds burgers) y Service Markidentify the provider of a service like H&R Block tax service, AT&T phone service.


y y y

Trade Dressincludes a trademark and the entire package of the product or service. Like mcdonalds Golden Arches, or the shape of a coke bottle, or the color scheme of a football team. Trade NameIdentifies the business itself, such as General Motors. Certification MarkMark is to certify compliance with standards, like good housekeeping seal of approval. Collective markto indicate membership in a group like the Boy Scouts.

Lanham Act: The most important trademark law is the Federal Trademark Act which is referred to as the Lanham Act. It is designed to prevent non owners from exploiting the goodwill or recognition of an existing mark. y Federal registration provides rights throughout the US and creates a presumption that the mark I valid and being properly used as a trademark. After 5 years of continuous use the registration can become incontestable which eliminates numerous grounds for cancellation and other defenses. y A trademark is valid for 10 years and can be renewed provided its actual use in interstate commerce. Under fed and LA law, rights in a trademark may be obtained by use of the mark even without registration. y In order to obtain relief in a trademark action a plaintiff must establish 3 elements: o Distinctivea mark must be distinctive to have protection under the law. The marks are classified as fanciful, arbitrary, suggestive, descriptive and generic. Arbitrary or fanciful marks bear no relationship to the product or service and are the strongest because thy are the most distinctive. Examples are NIKE and APPLE. It is very hard to obtain a trademark on a generic term. Ex: to name your tv station the sports channel. Some words may not be distinctive but may acquire trademarks through Secondary Meaningex is Monday Night Football.

o Ownershipownership in a mark is achieved pursuant to use and registration as set forth in the law. Plaintiff must establish ownership. o Likelihood of Confusionin most cases the plaintiff will have to prove that the defendants use of the mark is causing confusion among consumers. This means that the public is associating the defendants with the plaintiffs mark. Exif someone died at The Sports Illustrated Bar which has no association with the magazine, leads people to believe that the magazine owns that bar. Passing off (knock offs and counterfeits): Passing off occurs when a product is sold as a trademark brand, although it was not manufactured or licensed by the company that owns the mark. The seller pays no licensing fees or anything like that. Confusion: This kind of case involves a new or smaller company using a mark or name similar to a larger or more well recognized company to take advantage of the brand awareness established by the larger company. People will often buy the product but by mistaking its relationship to the established brand. y There are cases of Reverse Confusionwhich is when the established mark of a smaller less known company is adopted by a larger company. Disparagement: The Lanham Act prohibits registration of trademarks that are disparaging, scandalous or contemptuous. Disparagement cases deal with language or symbols that are sexually offensive. Newer cases involve sports teams being named Redskins, Indians, Braves, Seminolesetc. Domain Names: Domain names can conflict with trademarks and other tradition business identifiers. Many domain name registrants are parties who have no previous association with the name but filed the registration with the intent to profit by selling the domain name to the business associated with the name. These people were given the name Cybersquatters.

Federal Trademark Dilution Act: Cybersquatters do not actually use the domain name in commerce, but inventory it for sale when it become demanded. This approach eliminates the consumer confusion element necessary for a direct infringement action. The FTDA allows an owner of a famous and distinctive mark to obtain an injunction and in some cases damages for any commercial use of the mark that causes dilution of the distinctive quality of the mark. Some courts have held that mere registration of a name does not constitute use in commerce, but the offer to sell the mark is sufficient use of the mark under the law. There is now an anti-cybersquatting amendment to the Lanham Act. Metatags: Metatags are words embedded in a web pages coding, unseen by the viewer, that search engines use to find and rank the relevancy of the page in response to a key work search. Gulf Coast Bank v. Gulf Coast Bank & Trust Company This case deals with secondary meaning. Gulf coast bank operates mainly in the Acadiana area, Gulf coast bank and trust company operates mainly in the new Orleans area. GCB claimed that the defendants corporate name is deceptively similar to theirs and is in violation of Louisiana Revised Statutes. And the GCB&TC had infringed on its trade name and should be enjoined from further use of the name. y The first thing the courts looked at it whether GCB had a protectable property right in its name such that it may exclude others from using it. y Use alone does not create a protectable proprietary interest, the trademark or name must be distinctive, either by being inherently distinctive or by have secondary meaning. y The trial judge granted GCB&TC motion for summary judgment on other grounds other than secondary meaning. Seafood Restaurant Services inc v. Yvette Bonanno and professional seafood management inc. Bonannos Drusilla Seafood and Pasta Restaurant.

This case deals with an appeal by the defendants from a the judgment of the trial court issuing a prelim injunction preventing defendants from use of the term Drusilla within the sate of Louisiana in connection with any restaurant. y Plaintiff sought to prevent the use of the trade name Drusilla when used in connection with the restaurant business. But when this name is considered as a whole, the name is not inherently distinctive and secondary meaning must be established. y Plaintiff presented evidence from two consumers who, having seen the advertisement for the new restaurant, mistakenly believed that Drusilla Seafood Restaurant was opening up another place, claiming that they had acquired a secondary meaning. So there was actual confusion. y So the judgment of the trial court is affirmed. Costs of the appeal are to be borne by the defendants. Court ruled in Plaintiffs favor. Inkas Scool weak Inc v. School Time, LLC. This case deals with plaintiff, Inkas Coolwear SCoolwear appeals from the trial courts judgment of dismissal failing to enjoin defendants, School Time School Ware use of its trade name. y The trial court held: o 1. Plaintiff did not have a proprietary interest in the name SCoolwear, thereby establishing trade name infringement. o 2. Defendants actions did not constitute tortuous interference with a contract due to its prior contractual agreement o 3. Defendants exclusive contract with another company did not constitute unfair trade practices. We affirm. y The question in this case is where the name Scool wear could be defined as suggestive as opposed to descriptive as the name implies. It can be inferred that the trial court determined that the name SCool wear standing alone was a descriptive term, thereby requiring a secondary meaning. y The appellate court found that the finding of the lower court the name SCool wear as it is used by the appellant is not distinctive. University of Georgia v. Laite

Laite, a Macon Georgia wholesaler of novelty beers began marketing Battlin Bulldog Beer. It was sold in red and black cans with a black G. But the UGA athletic association obtained preliminary and permanent injunctive relief in federal district court based on the likelihood of confusion between the Battlin Bulldog and the University of Georgia Bulldog. The judgment of the district court was affirmed in all respects. y Laite argues that there is no confusion because the cans contain a disclaimer saying that they are not associated with UGA. But that is rejected because it is inconspicuous on the can and practically invisible when the cans are grouped together in a 6 pack. y The injunction is upheld. Parody A long standing court battle over The Velvet Elvis lounge in Houston. A trial court ruled in favor of the lounge finding that the name was a parody of the Elvis mystique. Later an appellate cour