On trademark dilution: the Barbie example.

Trademark infringement results when a defendant uses a confusingly similar mark to a plaintiff's mark. Trademark dilution results when a defendant uses a mark in a way that lessens the distinctiveness of a famous trademark, regardless of a likelihood of confusion. This is a clear example of trademark dilution: an iPhone game that allows users to give plastic surgery to an overweight Barbie.

There are two types of trademark dilution: blurring and tarnishment. Dilution by blurring occurs when a defendant unauthorizedly uses a mark on dissimilar products and services than the famous mark, slowly reducing its distinctiveness. A hypothetical example of this would be a company providing mufflers under the brand name of "Nike." Obviously, consumers would not think that Nike mufflers were associated with the athletic shoes and apparel company, but allowing Nike mufflers to operate would lessen the distinctiveness of the Nike mark over time. Dilution by tarnishment occurs when a defendant uses a mark in unsavory contexts, for instance in an iPhone game where users give Barbie plastic surgery.

On generic and arbitrary trademarks: the Candy Crush example.

The developer of the Candy Crush game for mobile devices recently sought a federal trademark registration for "Candy." The article illustrates many common issues when registering a trademark over an existing word that would be generic when used on or in connection with the good or service it literally describes. For instance, "Candy," when used in games for mobile devices, is not unlike "Apple" when used with computers and like technology. If "Candy," were used in connection with candy, it would be generic and incapable of trademark protection. If "Apple," were used in connection with apples, it would also be generic and incapable of trademark protection.

Basically, a generic mark is one you would see in a cartoon or sit-com when a character is using a good. When you see a television character drinking beer, the can often says "Beer." When you see the character drinking cola, the can says "Cola." When you see the character eating chips, the bag says "Chips."

Previous posts on IP litigation and IP generally.

Here is a link to an index of some of my previous posts on intellectual property litigation. There should be more added to the list in 2014.

On one of the University of Alabama's few losses.

Unlike its football team, the University of Alabama lost a recent court battle with an artist who has painted realistic scenes of the school's football games since 1979. The school sued the artist for trademark infringement, unfair competition and breach of contract. In 2012, the district and appellate courts sided with the artist on the trademark infringement and unfair competition claims. The school argued that the artist could not sell reprints of the painted scenes, because they contained the Alabama trademarks. The artist said both the artwork and reprints were protected speech under the First Amendment. The courts agreed with the artist on those claims.

In 2013, the district court sided with the artist on the breach of contract claim, because it found the school effectively waived its right to sue. The court said one of the licensing agreements was breached, but the University lost its right to claim a breach of contract when it sold the artist's reprints to which it was objecting in the lawsuit. The court basically said the school could not have its cake and eat it too.

On trade dress: Texas Roadhouse example.

The restaurant Texas Roadhouse is alleging trademark and trade dress infringement against Amarillo Roadhouse and Texas Corral, restaurants operated in Michigan and Indiana. Although I have discussed trademarks and trademark infringement elsewhere on this blog, I have not done so with trade dress.

Trade dress refers to the visual characteristics of packaging, décor, shapes, designs or site layout. Trade dress can be registered as a trademark if it is source-identifying and otherwise meets the requirements of a trademark, but it is usually protected without registration. Additionally, the trade dress must be nonfunctional in order to be protected. For instance, the décor and design of the Cheesecake Factory may be protectable as trade dress; but to the extent that any of that décor or design is functional (e.g., relating to shelter or architecture), it is not protectable.

Copyright infringement when a mark is not being used "in commerce": The Baltimore Ravens example.

This is an interesting case involving an atypical application of copyright law. The plaintiff created a logo for the NFL's Baltimore Ravens shortly after the team announced its move from Cleveland in 1995. The plaintiff faxed his copy of the logo sketch to the team, and when the Ravens' logo was later released to the public, it was practically the same as the plaintiff's.

Normally, logo-copying is the province of a trademark infringement suit. However, the plaintiff here could only sue for copyright infringement, because his logo was not being used in commerce. If it had been used in commerce when the plaintiff faxed the logo to the team, he may have had a viable trademark infringement claim. Alternatively, if he had been a team official, he could have filed an intent-to-use trademark application when he created the logo, and an affidavit of use once it was being used in commerce.

The University of Kansas's current battle in policing its trademark.

Elsewhere, I discussed the economic decision universities must make when deciding whether to enjoin or allow local businesses to use their trademarked nickname in business names. In and near college towns, it is common to see a school's nickname emblazoned on a variety of business names in all types of industries. Universities must police their trademarks, and if they lose control over the mark, it loses distinctiveness and then would lose its status as a valid trademark. But if a university presses a local business too hard, it risks upsetting a person or business who likely donates money to the school and attends sporting events.

In some cases, the economic decision is an easy one, because the use of the school's nickname is not in good faith. In this example, the University of Kansas is trying to get a local website to stop selling infringing merchandise that dilutes the school's "KU" mark. It is a clear cut case of dilution, and possibly infringement, but the University is taking a fairly diplomatic approach, at least initially.

Adidas against a church in a trademark dispute.

This is an interesting case: In 2005, a church trademarked "Add-A-Zero," which unashamedly prods church patrons to give more money to the church. In 2009, Adidas filed a trademark application for "adiZero" on sports clothing and shoes. The application was rejected due a likelihood of confusion between "Add-A-Zero" and "adiZero." The church is willing to give up the mark for $5,000, but apparently Adidas does not want to pay that much.

Adidas unsuccessfully petitioned to cancel the mark, but this does not seem like the type of case that will go to trial. Adidas might have to add another zero or two, but these parties should settle in the near future.

Economic considerations in suing for trademark infringement: The college sports example.

So, let's say you run a successful collegiate athletics department in a small, relatively rural state. Most of the denizens of your state cheer for your college's athletic programs, notably basketball and football. As a consequence, the nickname of your local sports team, let's call them the Fighting Bichons, is used throughout the area. There are numerous businesses that use the Bichons' name, such as "Bichon Electric," "Bichon Plumbing," a bar named "The Fighting Bichon," and so forth.

For years, the "Fighting Bichons" trademark has been federally registered by the college. When local businesses use the "Bichons" mark, it is trademark infringement, because it gives the impression that the proprietor of the business is the college. At the very least, it is trademark dilution.

In running the school's athletics department, do you sue these businesses for using the Bichons' name? Many schools do not, because the proprietors of those businesses are typically supporters of that school. They donate money and attend sporting events. If they were sued for using the Bichons' mark, they would likely become disenfranchised and would discontinue donating money and attending sports events.

On the other hand, if you do nothing, you lose control of your trademark, and it could lose its distinctiveness and meaning. All of your hard work in building up the "Fighting Bichons" mark could be lost.

I chose the example of college sports teams, because it is one of the clearer examples of trademark infringement, and the balance between the cost and benefits of suing for infringement or dilution. There is no "right answer" in deciding whether to let local businesses use a school's nickname or not. You risk alienating your fan base, but also risk losing the distinctiveness of your trademark. Probably the most correct answer is to "split the baby," and use gentle pressure to persuade local businesses to change their name. You may upset a few people, but you may also get those people to change the business name and continue to donate money to the school.

Good article on the cost and benefits of trademark litigation.

Here is a good article on the cost and benefits of trademark litigation. Trademark litigation is when a mark owner sues someone for infringement, or when someone who does not own a mark sues the mark holder for a declaratory judgment invalidating the trademark. When a defendant is sued for infringement, the defendant will usually file a counterclaim for a declaratory judgment of invalidity. When a defendant is sued for a declaratory judgment of invalidity, the defendant may file a counterclaim for infringement. This just means that when a trademark owner or alleged infringer gets slapped with a lawsuit, he or she does not usually turn the other cheek. It means that he or she slaps back.

Using another's trademark in Google advertising keywords.

Competitors of companies with valid trademarks can now place keywords using those marks in their (the competitors) advertisements to become more prominent in Google search results. For instance, a small fast-food restaurant in Minot, North Dakota, that competes with McDonald's can use "McDonald's" in its Google advertising keywords. By doing so, this small fast-food restaurant would show prominently in search results when people search for "McDonald's in Minot North Dakota."

Using a competitor's trademark in website metadata can be infringement, but it is not always so. It depends on whether the alleged infringer is using the competitor's mark to divert customers from the competitor to him or her. I would argue that using a competitor's trademark in any metadata constitutes using the mark in connection with a good or service, because all websites are essentially advertisements. If you use the a competitor's trademark in advertising keywords for search results, as Google now allows, you are more directly using the mark in connection with a service: advertising. You advertise to get customers. By definition, using another's mark in your ads would seek to divert customers from them to you, thus effecting infringement. So, there will almost certainly be litigation over this in the near future.

The meaning of "TM" or R-circle juxtaposed with a logo or wordmark.

When looking closely at logos and wordmarks of famous or distinctive companies, you will almost always notice that they have a "TM" or R-circle designation juxtaposed with the mark. These mean different things, and you should take care not to misuse them.

The R-circle, seen at right, is available when a company has a federally registered trademark. It is required to provide notice to any potential infringers that the mark is federally registered. If the mark holder does not provide this notice, he or she probably cannot obtain profits or damages in a later infringement action.

The "TM" is used for pending or unregistered trademarks. If you filed a federal trademark registration, but it is not officially registered yet, you can use "TM." If you have an unregistered mark, but claim rights in it, you can use the "TM."

The difference is easily illustrated with sports logos. When teams introduce a new logo, you will see a "TM" next to the mark. This means that the team has not used the mark long enough for a federal registration to issue. For instance, take a look at the new University of California-Berkeley logo. If you notice the top image on the link, it has a "TM" next to it. This logo was just unveiled a few weeks ago. If you take a look at the logo in a few years, you will notice that it has changed from a "TM" to an R-circle.

For another example, take a look at one of the University of Nebraska's logos. This logo has been around for a while, and thus has a federal registration.

On Nike and Under Armour's trademark dispute over "I Will."

Most of us have articles of clothing from either Nike or Under Armour. They are industry giants when it comes to sportswear and team apparel. This is an ongoing case between the two over the "I Will" mark. Under Armour claims ownership of the mark, and Nike claims that it has been using the noun-verb combination since at least 1995. The dispute follows the trajectory of typical trademark lawsuits: Under Armour filed for trademark infringement. Nike counterclaimed for a declaratory judgment of invalidity.

In trademark infringement suits, the defendant often counterclaims for a declaratory judgment of invalidity. This basically "ups the ante," because there are more potential consequences: namely that the mark may be invalidated. So a plaintiff who is unsure of his or her claim might think twice about continuing the suit, if the defendant seeks to invalidate the trademark.

On trademark infringement.

When asserting a claim for trademark infringement, it is necessary to show that you own a valid mark. In the previous post, Johnny Manziel would not be able to show ownership of a valid mark without sacrificing his college football eligibility at Texas A&M.

Registration of a valid mark is prima facie evidence of its validity, which means that a lot of the heavy lifting is already done for the plaintiff. It would be up to the defendant to argue that the mark is invalid.

Following demonstration that a mark is valid, the plaintiff would need to show that there is a likelihood of confusion between the plaintiff and defendant's marks. The various courts of appeal throughout the United States basically use a version of the same test. First, the court looks at the strength of the plaintiff's mark. The stronger the mark, the easier it is to show infringement. If the mark is barely registrable with the United States Patent and Trademark Office, the plaintiff has more work to do to show infringement.

Second, the court looks at the the similarity of the plaintiff and the defendant's marks. Obviously, the more similar they are, the more likely there is infringement. Third, the court looks at the competitive proximity of the plaintiff and the defendant's products. The closer they are to the same industry, the more likely there is infringement. Fourth, the court looks at whether the defendant intended to confuse the public. Fifth, the court examines whether there is actual confusion among consumers as to the source of the products. Sixth, the court looks at whether customers of the markholder exhibit care in selecting that particular item. If customers do not take much time in deciding whether to purchase a product, the easier it is to confuse customers.

If you purchase a car, you are likely to notice that a defendant's mark is confusingly similar, because you take care to notice exactly what you are purchasing. But if you purchase a box of crackers, you do not take nearly that much time or effort in examining the purchase. You may just grab a box based on its look, and later find out that it is not the brand you intended to select. Infringement depends on how the court weighs these factors.