b'TRADEMARK LAW\nAn Open-Source Casebook\nVersion 8 (2021)\nDigital Edition\n\nBarton Beebe\n\n\x03\n\n\x0cTRADEMARK LAW\nAn Open-Source Casebook\n\nVersion 8 (2021)\nDigital Edition\nwww.tmcasebook.org\n\nBarton Beebe\nJohn M. Desmarais Professor of Intellectual Property Law\nNew York University School of Law\n\nThis work is licensed under a Creative Commons Attribution-NonCommercialShareAlike 4.0 International License.\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nPreface.................................................................................................................................................................................................. 10\nIntroduction....................................................................................................................................................................................... 11\nA.\n\nThe History of U.S. Trademark Law .................................................................................................................... 11\n1.\n\nThe Origins of Trademarks and Trademark Law ............................................................................... 11\n\n2.\n\nThe Trade-Mark Cases ................................................................................................................................... 16\nTrade-Mark Cases .....................................................................................................................................17\n\nB.\n\nC.\nI.\n\n3.\n\nThe Statutory Development of U.S. Trademark law and the Lanham Act of 1946 .............. 19\n\n4.\n\nStatutory Developments ............................................................................................................................... 21\n\nThe Policy Justifications for Trademark Protection .................................................................................... 23\n1.\n\nThe Economic Justification for Trademark Protection .................................................................... 24\n\n2.\n\nCriticisms of the Economic Justification for Trademark Protection .......................................... 25\n\nTrademark Law Within the Larger Scheme of Intellectual Property Law ......................................... 28\n\nEstablishing Trademark Rights ...................................................................................................................................... 32\nA.\n\nTrademark Distinctiveness ..................................................................................................................................... 35\n1.\n\nInherent Distinctiveness of Source and Acquired Distinctiveness of Source ........................ 36\na.\n\nInherent Distinctiveness of Source ................................................................................................ 36\ni.\n\nThe Abercrombie Spectrum.................................................................................................... 36\n\nAbercrombie & Fitch Co. v. Hunting World, Inc. ..........................................................................37\nii.\n\nDistinguishing Suggestive from Descriptive Marks .................................................... 41\n\nZatarains, Inc. v. Oak Grove Smokehouse, Inc...............................................................................42\nInnovation Ventures, LLC v. N.V.E., Inc. ...........................................................................................43\niii.\n\nb.\n\nSpecial Rules for Classification of Certain Kinds of Trademarks .......................... 47\n\xe2\x8b\x84\n\nDescriptiveness of Geographic Terms ................................................................... 47\n\n\xe2\x8b\x84\n\nCertification Marks and Collective Marks ............................................................ 48\n\n\xe2\x8b\x84\n\nSurnames ............................................................................................................................ 49\n\n\xe2\x8b\x84\n\nNon-English Words: The Doctrine of \xe2\x80\x9cForeign Equivalents\xe2\x80\x9d ....................... 51\n\n\xe2\x8b\x84\n\nAcronyms ............................................................................................................................ 51\n\nAcquired Distinctiveness of Source ............................................................................................... 52\nFrosty Treats Inc. v. Sony Computer Entertainment America ...............................................53\nCartier, Inc. v. Four Star Jewelry Creations, Inc. ..........................................................................55\nBoard of Supervisors for Louisiana State University Agricultural & Mechanical\nCollege v. Smack Apparel Co. ................................................................................................................59\n\nc.\n\nGeneric Marks ......................................................................................................................................... 62\nUnited States Patent and Trademark Office v. Booking.com B.V. ........................................63\nSnyder\xe2\x80\x99s Lance, Inc. v. Frito-Lay North America, Inc. ................................................................75\n\nd.\n\nFailure to Function as a Mark........................................................................................................... 99\nIn re Lee Greenwood ................................................................................................................................99\n\ne.\n2.\n\nFurther Examples of Abercrombie Classifications................................................................ 103\n\nThe Distinctiveness Analysis of Nonverbal Marks ......................................................................... 106\na.\n\nInitial Supreme Court Approaches to the Analysis of Nonverbal Marks ................... 107\n2\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nTwo Pesos, Inc. v. Taco Cabana, Inc. .............................................................................................. 108\nQualitex Co. v. Jacobson Products Co., Inc.................................................................................... 117\nb.\n\nProduct Packaging Trade Dress Versus Product Configuration Trade Dress.......... 123\ni.\n\nThe Differing Distinctiveness Analysis of Product Packaging and Product\nConfiguration ............................................................................................................................ 123\n\nWal-Mart Stores, Inc. v. Samara Bros., Inc. ................................................................................. 123\nii.\n\nDistinguishing Product Packaging from Product Configuration ........................ 128\n\nIn re Slokevage......................................................................................................................................... 128\nLVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A. ............................................................... 132\nMcKernan v. Burek ................................................................................................................................. 133\nBest Cellars, Inc. v. Wine Made Simple, Inc. ................................................................................ 134\nFedders Corp. v. Elite Classics ........................................................................................................... 135\nIn re SnoWizard, Inc. ............................................................................................................................. 136\nIn re Frankish Enterprises Ltd. ......................................................................................................... 137\nc.\n\nAnalyzing the Inherent Distinctiveness of Product Packaging Trade Dress ............ 138\ni.\n\nUsing the Abercrombie Spectrum to Analyze Whether Product Packaging Is\nInherently Distinctive............................................................................................................ 138\n\nFun-Damental Too, Ltd. v. Gemmy Industries Corp. ............................................................... 138\nii.\n\nUsing the Seabrook Factors to Analyze Whether Product Packaging is\nInherently Distinctive............................................................................................................ 141\n\nAmazing Spaces, Inc. v. Metro Mini Storage ............................................................................... 143\nFiji Water Co., LLC v. Fiji Mineral Water USA, LLC .................................................................. 149\nIn re Frankish Enterprises Ltd. ......................................................................................................... 150\nStar Industries, Inc. v. Bacardi & Co. Ltd. ..................................................................................... 151\nd.\nB.\n\nAnalyzing the Acquired Distinctiveness of Nonverbal Marks ........................................ 152\n\nBars to Protection .................................................................................................................................................... 153\n1.\n\nFunctionality ................................................................................................................................................... 155\na.\n\nFoundational Cases ............................................................................................................................ 155\ni.\n\nIn re Morton-Norwich Product, Inc. ................................................................................ 156\n\nIn re Morton-Norwich Products, Inc. ............................................................................................. 156\nii.\n\nInwood Labs., Inc. v. Ives Labs., Inc. ................................................................................ 164\n\n3.\n\nTrafFix Devices, Inc. v. Marketing Displays, Inc. ........................................................ 164\n\nTrafFix Devices, Inc. v. Marketing Displays, Inc. ....................................................................... 165\nb.\n\nUtilitarian Functionality Case Law after TrafFix .................................................................. 170\ni.\n\nFederal Circuit .......................................................................................................................... 171\n\nValu Engineering, Inc. v. Rexnord Corp. ....................................................................................... 171\nii.\n\nFifth Circuit ................................................................................................................................ 172\n\nEppendorf-Netheler-Hinz GMBH v. Ritter GMBH ..................................................................... 172\niii.\n\nNinth Circuit .............................................................................................................................. 176\n\nApple, Inc. v. Samsung Electronics Co. Ltd. ................................................................................. 176\niv.\n\nSeventh Circuit ......................................................................................................................... 182\n3\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nSpecialized Seating, Inc. v. Greenwich Industries, L.P. ........................................................... 182\nc.\n\nAesthetic Functionality .................................................................................................................... 184\ni.\n\nFoundational Cases................................................................................................................. 186\n\nPagliero v. Wallace China Co............................................................................................................. 186\nWallace Int\xe2\x80\x99l Silversmiths, Inc. v. Godinger Silver Art Co...................................................... 188\nii.\n\nAesthetic Functionality and the Apparel Fashion Industry.................................. 191\n\nChristian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. ........................... 191\n2.\n\n3.\n\nDeceptive and Deceptively Misdescriptive Marks .......................................................................... 198\na.\n\nNon-Geographic Deceptive and Deceptively Misdescriptive Marks ............................. 199\n\nb.\n\nGeographic Deceptive and Deceptively Misdescriptive Marks....................................... 200\n\nMarks that May Falsely Suggest a Connection.................................................................................. 204\nIn re Nieves & Nieves LLC.................................................................................................................... 205\n\n4.\n\nConfusingly-Similar Marks Under Lanham Act \xc2\xa7 2(d) .................................................................. 211\n\n5.\n\nDisparaging and Scandalous Marks ...................................................................................................... 211\nMatal v. Tam ............................................................................................................................................. 212\nIancu v. Brunetti ..................................................................................................................................... 225\n\nC.\n\nUse in Commerce as a Prerequisite for Trademark Rights .................................................................... 240\n1.\n\nUse in Commerce as a Prerequisite for Federal Trademark Registration ........................... 241\nAycock Engineering, Inc. v. Airflite, Inc......................................................................................... 242\nCouture v. Playdom, Inc. ...................................................................................................................... 247\n\n2.\n\nUse in Commerce as a Prerequisite for Unregistered \xe2\x80\x9cCommon Law\xe2\x80\x9d Priority ................ 248\nPlanetary Motion, Inc. v. Techsplosion, Inc. ................................................................................ 248\n\nD.\n\nThe Trademark Registration Process.............................................................................................................. 258\n1.\n\n2.\n\nBenefits and Costs of Trademark Registration ................................................................................ 261\na.\n\nRegistration on the Principal Register ...................................................................................... 261\n\nb.\n\nRegistration on the Supplemental Register ............................................................................ 263\n\nc.\n\nCosts of Trademark Registration ................................................................................................. 264\n\nLanham Act \xc2\xa7 1(b) Intent to Use Applications and the Bona Fide Intent to Use\nRequirement .................................................................................................................................................... 264\nKelly Services, Inc. v. Creative Harbor, LLC ................................................................................. 265\n\n3.\n\nProcess of Registration ............................................................................................................................... 272\na.\n\nApplication ............................................................................................................................................ 272\n\nb.\n\nExamination .......................................................................................................................................... 273\n\nc.\n\nPublication ............................................................................................................................................. 273\n\nd.\n\nOpposition and the Trademark Trial and Appeal Board................................................... 273\n\ne.\n\nRegistration ........................................................................................................................................... 275\n\n4.\n\nPost-Registration Maintenance of the Registration ....................................................................... 275\n\n5.\n\nNotice of Federal Registration ................................................................................................................. 276\n\n6.\n\nCancellation of Registration ..................................................................................................................... 276\n\n7.\n\nThe Madrid System ....................................................................................................................................... 278\n\n8.\n\nIncontestable Status and Park \xe2\x80\x98N Fly .................................................................................................... 281\n4\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nPark \xe2\x80\x98N Fly, Inc. v. Dollar Park and Fly, Inc. ................................................................................ 281\nE.\n\nThe Geographic Extent of Trademark Rights............................................................................................... 288\n1.\n\nThe Geographic Extent of Rights in Unregistered Marks ............................................................. 289\na.\n\nThe Tea Rose-Rectanus Doctrine Applied ................................................................................ 289\nNational Association for Healthcare Communications, Inc. v. Central Arkansas Area\nAgency on Aging, Inc. ............................................................................................................................ 290\n\nb.\n\nThe Good Faith Standard in the Tea Rose-Rectanus Doctrine ......................................... 294\nStone Creek, Inc. v. Omnia Italian Design, Inc. .......................................................................... 294\n\n2.\n\nThe Geographic Extent of Rights in Registered Marks .................................................................. 298\na.\n\n3.\n\nApplications Filed on or after November 16, 1989: Constructive Use Priority as of\nDate of Application ............................................................................................................................ 298\ni.\n\nThe Senior Common Law User Scenario ....................................................................... 300\n\nii.\n\nThe Intermediate Junior User Scenario ......................................................................... 300\n\nb.\n\nApplications Filed before November 16, 1989: Constructive Notice Priority as of\nDate of Registration ........................................................................................................................... 301\n\nc.\n\nConcurrent Use and Registration ................................................................................................ 302\n\nd.\n\nThe Dawn Donut Rule ....................................................................................................................... 305\n\nNational Borders and Trademark Rights............................................................................................ 307\na.\n\nNational-Border Limits on Trademark Rights ....................................................................... 307\nPerson\xe2\x80\x99s Co., Ltd. v. Christman .......................................................................................................... 307\n\nb.\n\nThe Well-Known Marks Doctrine ................................................................................................ 312\ni.\n\nThe Well-Known Marks Doctrine in the Ninth Circuit............................................ 312\n\nGrupo Gigante SA De CV v. Dallo & Co., Inc. ................................................................................ 312\nii.\n\nThe Well-Known Marks Doctrine in the Second Circuit ........................................ 321\n\nITC Ltd. v. Punchgini, Inc. .................................................................................................................... 321\nITC Ltd. v. Punchgini, Inc. .................................................................................................................... 334\nc.\n\nBelmora and the End of Territorial Limits on Trademark Rights? ............................... 337\nBelmora LLC v. Bayer Consumer Care AG ................................................................................... 338\n\nII.\n\nTrademark Infringement ............................................................................................................................................... 349\nA.\n\nThe Actionable Use Requirement...................................................................................................................... 350\n1.\n\nDefendant\xe2\x80\x99s \xe2\x80\x9cUse in Commerce\xe2\x80\x9d ............................................................................................................. 351\nRescuecom Corp. v. Google Inc.......................................................................................................... 352\n\n2.\n\nDefendant\xe2\x80\x99s Use \xe2\x80\x9cin Connection with the Sale . . . of any Goods or Services\xe2\x80\x9d...................... 360\nRadiance Foundation, Inc. v. National Association for the Advancement of Colored\nPeople........................................................................................................................................................... 360\n\nB.\n\nConfusion-Based Infringement .......................................................................................................................... 365\n1.\n\nThe History of the Confusion-Based Cause of Action for Trademark Infringement........ 365\na.\n\nThe Early-Twentieth Century Approach to the Likelihood of Confusion .................. 365\nBorden Ice Cream Co. v. Borden\xe2\x80\x99s Condensed Milk Co............................................................ 366\n\nb.\n\nThe Development of the Modern Multifactor Test .............................................................. 369\nPolaroid Corp. v. Polarad Electronics Corp................................................................................. 370\n5\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n2.\n\nContemporary Applications of the Multifactor Test for the Likelihood of Consumer\nConfusion .......................................................................................................................................................... 372\nVirgin Enterprises Ltd. v. Nawab ..................................................................................................... 374\n\n3.\n\nFurther Examples of the Application of the Multifactor Test for the Likelihood of\nConsumer Confusion Test.......................................................................................................................... 384\n\n4.\n\nSurvey Evidence and the Likelihood of Confusion ......................................................................... 388\nSmith v. Wal-Mart Stores, Inc. .......................................................................................................... 391\n\n5.\n\n\xe2\x80\x9cSponsorship or Affiliation\xe2\x80\x9d Confusion................................................................................................ 404\nInt\xe2\x80\x99l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC .................................. 404\nBoard of Supervisors for Louisiana State University Agricultural & Mechanical\nCollege v. Smack Apparel Co. ............................................................................................................. 412\n\n6.\n\nInitial Interest Confusion ........................................................................................................................... 419\nSelect Comfort Corporation v. Baxter............................................................................................ 420\n\n7.\n\nPost-Sale Confusion ...................................................................................................................................... 427\nFerrari S.P.A. v. Roberts ....................................................................................................................... 428\n\n8.\n\nReverse Confusion ........................................................................................................................................ 436\nUber Promotions, Inc. v. Uber Technologies, Inc. ..................................................................... 437\n\n9.\n\nReverse Passing Off ...................................................................................................................................... 448\nDastar Corp. v. Twentieth Century Fox Film Corp. .................................................................. 450\n\n10. Lanham Act \xc2\xa7 2(d) Confusion .................................................................................................................. 460\nC.\n\nTrademark Dilution ................................................................................................................................................. 462\n1.\n\nThe Fame Requirement for Antidilution Protection...................................................................... 467\nCoach Servs., Inc. v. Triumph Learning LLC................................................................................ 468\n\n2.\n\nDilution by Blurring ..................................................................................................................................... 472\nNike, Inc. v. Nikepal Intern., Inc........................................................................................................ 472\nStarbucks Corp. v. Wolfe\xe2\x80\x99s Borough Coffee, Inc. ........................................................................ 481\n\n3.\n\nDilution by Tarnishment ............................................................................................................................ 492\nV Secret Catalogue, Inc. v. Moseley ................................................................................................. 492\n\nD.\n\nCybersquatting .......................................................................................................................................................... 502\n1.\n\nThe Section 43(d) Prohibition Against Cybersquatting ............................................................... 502\nSporty\xe2\x80\x99s Farm L.LC. v. Sportsman\xe2\x80\x99s Market, Inc. ....................................................................... 502\nLamparello v. Falwell ........................................................................................................................... 511\n\n2.\n\nThe Uniform Dispute Resolution Policy and the Uniform Rapid Suspension System .... 515\na.\n\nThe Uniform Dispute Resolution Policy ................................................................................... 515\nWIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP) ......... 515\nPinterest, Inc. v. Pinerest.com c/o Whois Privacy Svcs Pty Ltd/Ian Townsend .......... 519\n\nb.\n\nThe Uniform Rapid Suspension System ................................................................................... 524\nFacebook Inc. v. Radoslav ................................................................................................................... 525\n\nE.\n\nSecondary Liability .................................................................................................................................................. 528\n1.\n\nService Provider Secondary Liability ................................................................................................... 528\nTiffany (NJ) Inc. v. eBay Inc. ............................................................................................................... 528\n6\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nGucci America, Inc. v. Frontline Processing Corp. .................................................................... 540\n2.\n\nLandlord-Tenant Secondary Liability .................................................................................................. 548\nLuxottica Group, S.P.A. v. Airport Mini Mall, LLC ..................................................................... 548\n\nIII. Defenses to Trademark Infringement and Related Limitations on Trademark Rights.......................... 553\nA.\n\nDescriptive Fair Use ................................................................................................................................................ 553\n1.\n\nDescriptive Fair Use and Consumer Confusion................................................................................ 553\nKP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. ................................................... 554\n\n2.\n\nThe Three-Step Test for Descriptive Fair Use .................................................................................. 558\nDessert Beauty, Inc. v. Fox .................................................................................................................. 558\nSportFuel, Inc. v. Pepsico, Inc. ........................................................................................................... 566\n\n3.\n\nFurther Examples of Descriptive Fair Use Analyses ...................................................................... 572\nInternational Stamp Art v. U.S. Postal Service .......................................................................... 572\nBell v. Harley Davidson Motor Co. ................................................................................................... 573\nFortune Dynamic, Inc. v. Victoria\xe2\x80\x99s Secret ................................................................................... 574\n\nB.\n\nNominative Fair Use ................................................................................................................................................ 575\n1.\n\nThe Three-Step Test for Nominative Fair Use .................................................................................. 575\nToyota Motor Sales, U.S.A., Inc. v. Tabari ..................................................................................... 576\nInt\xe2\x80\x99l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC .................................. 584\n\n2.\n\nFurther Examples of Nominative Fair Use Analyses ..................................................................... 588\nLiquid Glass Enterprises, Inc. v. Dr. Ing. h.c.F. Porsche AG ................................................... 588\nToho Co., Ltd. v. William Morrow & Co., Inc................................................................................ 589\nMattel, Inc. v. Walking Mountain Productions .......................................................................... 591\nBoard of Supervisors for Louisiana State University Agricultural & Mechanical\nCollege v. Smack Apparel Co. ............................................................................................................. 593\n\nC.\n\nExpressive Uses of Trademarks ......................................................................................................................... 594\n1.\n\nExpressive Uses and the Tests for Confusion and Dilution ........................................................ 595\nLouis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC ......................................................... 596\nMPS Entm\xe2\x80\x99t, LLC v. Abercrombie & Fitch Stores, Inc. ............................................................. 606\n\n2.\n\nThe Rogers v. Grimaldi Test for Unauthorized \xe2\x80\x9cArtistic\xe2\x80\x9d Uses ................................................... 608\nGordon v. Drape Creative, Inc. .......................................................................................................... 609\n\n3.\n\nFurther Aspects of Expressive Uses and Trademark Dilution .................................................. 620\na. Noncommercial Expressive Uses...................................................................................................... 620\nMattel, Inc. v. MCA Records, Inc. ...................................................................................................... 621\nVIP Products LLC v. Jack Daniel\xe2\x80\x99s Properties, Inc..................................................................... 623\nb. What Qualifies as Parody under \xc2\xa7 43(c)(3)(A)(ii)? ................................................................. 624\nLouis Vuitton Malletier, S.A. v. Hyundai Motor Am. ................................................................ 624\nLouis Vuitton Malletier v. My Other Bag, Inc. ............................................................................ 629\n\nD.\n\nTrademark Abandonment .................................................................................................................................... 633\n1.\n\nAbandonment Through Cessation of Use ........................................................................................... 633\nITC Ltd. v. Punchgini, Inc. .................................................................................................................... 634\nCrash Dummy Movie, LLC v. Mattel, Inc. ...................................................................................... 640\n7\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n2.\n\nAbandonment Through Failure to Control Use................................................................................ 644\nFreecycleSunnyvale v. Freecycle Network ................................................................................... 644\n\nE.\n\nAssignment in Gross................................................................................................................................................ 652\nSugar Busters LLC v Brennan ........................................................................................................... 653\n\nF.\n\nThe First Sale Doctrine........................................................................................................................................... 657\nChampion Spark Plug Co. v. Sanders ............................................................................................. 657\nDavidoff & CIE, S.A. v. PLD Int\xe2\x80\x99l Corp. ............................................................................................ 660\nNitro Leisure Products, L.L.C. v. Acushnet Co. ............................................................................ 662\n\nIV.\n\nFalse Advertising ............................................................................................................................................................... 673\nA.\n\nFalse Advertising Under the Lanham Act ...................................................................................................... 673\n1.\n\nLiteral Falsity .................................................................................................................................................. 675\nS.C. Johnson & Son, Inc. v Clorox Co. ............................................................................................... 675\n\n2.\n\nLiteral Falsity by Necessary Implication ............................................................................................. 683\nTime Warner Cable, Inc. v. DIRECTV, Inc..................................................................................... 684\n\n3.\n\nLiterally True But Misleading Advertising ......................................................................................... 693\nPizza Hut, Inc. v. Papa John\xe2\x80\x99s Intern., Inc. .................................................................................... 693\n\n4.\n\nSubstantiation ................................................................................................................................................. 706\na.\n\n\xe2\x80\x9cTests Prove\xe2\x80\x9d Claims ......................................................................................................................... 706\nCastrol Inc. v. Quaker State Corp. .................................................................................................... 707\n\nb.\n\nComparative Claims........................................................................................................................... 712\nGroupe SEB USA, Inc. v. Euro-Pro Operating LLC .................................................................... 714\n\nc.\n\nFalse Demonstrations ....................................................................................................................... 720\nSchick Mfg., Inc. v. Gillette Co. ........................................................................................................... 720\n\nB.\n\nEndorsements, Testimonials, and Reviews .................................................................................................. 729\nFTC Guides Concerning Use of Endorsements and Testimonials in Advertising ........ 730\nThe FTC\xe2\x80\x99s Endorsement Guides: What People Are Asking (September 2017) ............ 740\nIn the Matter of Lord & Taylor, LLC ............................................................................................... 755\n\nV.\n\nRight of Publicity ............................................................................................................................................................... 759\nA.\n\nState Right of Publicity Statutory Provisions ............................................................................................... 761\n\nB.\n\nRight of Publicity Case Law .................................................................................................................................. 763\nWhite v. Samsung Electronics America, Inc................................................................................ 764\nWhite v. Samsung Electronics America, Inc................................................................................ 771\nIn re NCAA Student\xe2\x80\x93Athlete Name & Likeness Licensing Litigation ............................... 781\n\nVI.\n\nRemedies ............................................................................................................................................................................... 800\nA.\n\nInjunctive Relief ........................................................................................................................................................ 800\n\nB.\n\nPlaintiff\xe2\x80\x99s Damages and Defendant\xe2\x80\x99s Profits ................................................................................................ 801\n1.\n\nRecovery of Defendant\xe2\x80\x99s Profits ............................................................................................................. 802\na.\n\nWillful Intent and Profits................................................................................................................. 802\nRomag Fasteners, Inc. v. Fossil, Inc. ................................................................................................ 802\n\nb.\n2.\n\nActual Confusion and Profits ......................................................................................................... 806\n\nRecovery of Plaintiff\xe2\x80\x99s Damages.............................................................................................................. 806\n8\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\na. Willful Intent and Damages .................................................................................................................. 806\nb. Actual Confusion and Damages .......................................................................................................... 806\n3.\n\nEnhanced Damages and Profits .............................................................................................................. 807\n\n4. The Notice Requirement for Registered Marks ..................................................................................... 807\nC.\n\nCorrective Advertising ........................................................................................................................................... 807\n\nD.\n\nAttorney\xe2\x80\x99s Fees .......................................................................................................................................................... 808\n\nE.\n\nCounterfeiting Remedies ...................................................................................................................................... 809\n\nF.\n\nFederal Criminal Penalties for Counterfeiting ............................................................................................ 810\n\n9\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nPreface\nThank you for your interest in Trademark Law: An Open-Source Casebook! I hope that you find it\nuseful.\nI should say a word or two about the court opinions included in this casebook. As with any\ncasebook, students should ask themselves as they come upon each particular opinion: Why is this\nopinion being presented to me? What is it doing here? This casebook includes some opinions because\nthey are leading opinions that continue to have a significant influence on the course of American\ntrademark doctrine. Other opinions are included because they are simple, straightforward examples of\nthe doctrine being applied. Still other opinions are included because they are problematic and almost\ncertainly wrong. Finally, some opinions are included because they are all of the above. Though the\ncasebook does sometimes point out which opinions have proven to be highly influential, you are\nnevertheless invited, as you proceed through the casebook, to decide for yourself how each opinion\nshould otherwise be characterized.\nThe opinions are sometimes lightly edited and may retain many of the citations included in the\noriginal opinion. They may also retain paragraphs that review doctrine previously covered. This may\nbe frustrating to students accustomed to reading aggressively edited-down opinions. But sometimes\nmore is ultimately less. I occasionally use curly brackets\xe2\x80\x94{ }\xe2\x80\x94to distinguish edits I have made in the\nopinions from the original opinion\xe2\x80\x99s use of square brackets.\nIf you would prefer a different format for the casebook, one more easily readable on screen, a .doc\nversion of the casebook is available at tmcasebook.org.\nThe casebook remains a work in progress. I update it every summer. I\xe2\x80\x99m grateful to the many\nprofessors who have adopted the book for use in their classrooms and who have written to me with\ncorrections and suggestions. I\xe2\x80\x99m also grateful to the many students who have done the same.\nThis is a free casebook. My hope is that this casebook shows that it is possible to produce a\nreasonably useful American law school casebook on standard word-processing software without the\nneed for the traditional publishers\xe2\x80\x94and their exploitative prices per copy. My further hope is that,\nbeing free and online, the casebook is more accessible to students around the world. The downside is\nthat the book is not professionally proofread, formatted, or bluebooked. Please forgive any errors.\nFinally, the book is free largely due to the support of NYU Law\xe2\x80\x99s students and alumni, most\nnotably, John M. Desmarais (NYU Law \xe2\x80\x9988) of Desmarais LLP, who established the professorship I hold\nat NYU Law. I thank all of them for their support.\n\xe2\x80\x93Barton Beebe\n\n10\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nIntroduction\nTrademark lawyers often tell the story in one form or another of the Coca-Cola lawyer who spoke\nin 1986 of the value of the company\xe2\x80\x99s goodwill as symbolized by its brand: \xe2\x80\x9cThe production plants and\ninventories of The Coca-Cola Company could go up in flames overnight. Yet, on the following morning\nthere is not a bank in Atlanta, New York, or anywhere else, that would not lend this Company the funds\nnecessary for rebuilding, accepting as security only the inherent good will in its trademarks \xe2\x80\x98Coca-Cola\xe2\x80\x99\nand \xe2\x80\x98Coke.\xe2\x80\x9d\xe2\x80\x981 The story was and remains no exaggeration. In 2021, Interbrand estimated the value of\nthe Coca-Cola brand to be $56.9 billion2\xe2\x80\x94as against fixed assets in 2021 of $9.2 billion.3\nAPPLE, GOOGLE, COKE, MICROSOFT, SAMSUNG, TOYOTA, MCDONALDS, LOUIS VUITTON, NIKE, PEPSI, FACEBOOK, VISA,\nCITI, STARBUCKS.\n\nInstantly recognizable by a very large proportion of humanity, these are among the\nmost valuable and influential signs in the world, rivalling in significance many religious and national\nsymbols. They are only the most notorious of the millions of brand names that populate the modern\nmarketplace. Trademark law regulates these brand names, from the multi-billion dollar global brands\nto the name of the local shop down the street. Without trademark protection, many would cease to\nexist.\nIn this introductory chapter, we first review the early history of trademarks and trademark law,\nincluding the first great Supreme Court trademark case, the so-called Trade-Mark Cases. We then\ncritically consider the varied policy justifications for trademark protection. We conclude by briefly\nsituating trademark law within the larger scheme of intellectual property law.\nA.\n\nThe History of U.S. Trademark Law\n1.\n\nThe Origins of Trademarks and Trademark Law\n\nIn the excerpt that follows, Mark McKenna surveys the origins of American trademark law from\nseventeenth-century English case law up through nineteenth-century American case law. Some of the\ncases he mentions may seem far removed in their facts and reasoning from the present-day world of\nthe global internet and multi-billion dollar brands. But as you will see, the early history of trademark\nlaw implicates questions that continue to concern courts and trademark law policymakers. What is the\nproper rationale for trademark protection? Are trademark rights simply a form of pernicious\nmonopoly rights? Is trademark law intellectual property law or is it unfair competition law? What\nshould qualify for trademark protection? What role should intent or \xe2\x80\x9cbad faith\xe2\x80\x9d play in the\ndetermination of liability for trademark infringement? Should consumers have standing to sue when\nthey are confused by one company\xe2\x80\x99s use of a mark similar to another company\xe2\x80\x99s mark?\n\nQuoted in Thomas D. Drescher, The Transformation and Evolution of Trademarks\xe2\x80\x94From\nSignals to Symbols to Myth, 82 TRADEMARK REP. 301, 301-02 (1992).\n1\n\nSee Interbrand, Best Global Brands 2019, https://www.interbrand.com/best-brands/bestglobal-brands/2019/ranking/.\n2\n\nThe Coca-Cola Company, Balance Sheet, https://investors.coca-colacompany.com/financialinformation/balance-sheet.\n3\n\n11\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nMark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839,\n1849-62 (2007) (some footnotes altered or omitted)\nII. A SECOND LOOK AT EARLY TRADEMARK PROTECTION\n[1] Use of markings to identify and distinguish one\xe2\x80\x99s property dates to antiquity, and regulations\nregarding use of those marks almost as long . . . . Because nineteenth-century American courts\nexplicitly drew on English law . . ., a full account necessarily begins in England.\nA. Medieval Marks as Liabilities\n[2] Scholars have identified a number of ways in which individuals and producers historically\nused distinguishing marks. Most basically, merchants used marks to demonstrate ownership of\nphysical goods, much in the way that ranchers use cattle brands to identify their cattle. Use of marks to\nindicate ownership of goods was particularly important for owners whose goods moved in transit, as\nthose marks often allowed owners to claim goods that were lost. Producers relied on identifying\nmarks, for example, to demonstrate ownership of goods recovered at sea.25\n[3] Marks also were quite important to the operation of the guild system in medieval England.\nLocal guilds often developed reputations for the quality of their products. When they did, the names of\nthe towns or regions in which those guilds operated became repositories of goodwill. To maintain that\ngoodwill, guilds needed to be able to restrict membership and identify and punish members who\nproduced defective products. Guilds therefore required their members to affix distinguishing marks to\ntheir products so they could police their ranks effectively.26\n[4] Importantly, guilds required members to display their marks for the purpose of developing\nand maintaining the collective goodwill of the guild; marks were not used for the purpose of\nestablishing individual producer goodwill. Indeed, intraguild competition was strictly forbidden.\nMoreover, guild regulations were not motivated primarily by a concern for consumers. Even in the\ncutlers\xe2\x80\x99 trade, where marks seem to have been viewed most analogously to modern trademarks,28\nregulation was intended not for the protection of purchasers, but for \xe2\x80\x9cguidance of those exercising\ncontrol or working in rivalry.\xe2\x80\x9d29 In fact, though it is not clear how often mark owners sought\nenforcement of their marks during this period, whatever enforcement mark owners did pursue seems\nto have been motivated by their concern about being held responsible for products they did not make.\nB. English Trademark Cases\n....\n1. Trademarks in Courts of Law and Equity\n[5] The first reported English decision clearly involving a claim based on use of a party\xe2\x80\x99s\ntrademark was the court of equity\xe2\x80\x99s 1742 decision in Blanchard v. Hill,39 {in which Lord Chancellor\n\nOwners also carved identifying marks into the beaks of swans they were allowed to own by\nroyal privilege. See FRANK I. SCHECHTER, THE HISTORICAL FOUNDATIONS OF THE LAW RELATING TO TRADEMARKS 35-37 (1925).\n25\n\nNot coincidentally, these mandatory marks also made it possible for the Crown to regulate\nconduct, particularly in the printing industry, where the Crown policed heresy and piracy. See id. at 6377.\n26\n\nThere are some examples in the cutlers\xe2\x80\x99 trade of the government treating marks as property\nthat could be passed by will and of owners advertising to suppress piracy. See id. at 119-20.\n28\n\n29\n\nId. at 120 (quoting Robert Eadon Leader, History of the Cutlers of Hallamshire 110 (1906)).\n\n39\n\n(1742) 2 Atk. 484 (Ch.), 26 Eng. Rep. 692\n\n12\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nHardwicke declined to issue an injunction}. The plaintiff in that case, a maker of playing cards, sought\nan injunction\nto restrain the defendant from making use of the Great Mogul as a stamp upon his cards,\nto the prejudice of the plaintiff, upon a suggestion, that the plaintiff had the sole right to\nthis stamp, having appropriated it to himself, conformable to the charter granted to the\ncardmakers\xe2\x80\x99 company by King Charles the First.40\n[6] The factual context of Blanchard is particularly noteworthy; the plaintiff was seeking\nprotection of a mark for playing cards pursuant to a royal charter, and charters granting exclusive\nrights to cardmakers had been at the center of a long political struggle between Parliament and the\nCrown. Marks played an important role in the contested charter scheme because cardmakers were\nrequired to use their seals so that exclusivity could be enforced,42 a fact that clearly colored the court\xe2\x80\x99s\nview of the case. . . .\n[7] The Blanchard decision, however, should not be read as a categorical condemnation of claims\nbased on use of a competitor\xe2\x80\x99s mark. Rather, Lord Hardwicke was focused on cases in which the\nplaintiff\xe2\x80\x99s claim of exclusive rights emanated from a monopoly granted by royal charter. In fact, his\ndecision in Blanchard specifically distinguished the plaintiff\xe2\x80\x99s claim in that case from the clothier\xe2\x80\x99s\nclaim referenced in Popham\xe2\x80\x99s report of Southern[v. How, which was probably the case J.G. v. Samford\n(C.P. 1584) in which one clothier used the mark of another with the intent to deceive consumers].\nUnlike the plaintiff in Blanchard, who claimed the exclusive right to use his Mogul mark without\nqualification, the clothier in Southern based his case on the defendant\xe2\x80\x99s \xe2\x80\x9cfraudulent design, to put off\nbad cloths by this means, or to draw away customers from the other clothier.\xe2\x80\x9d45 When the defendant\nintended to pass off its goods as those of the plaintiff, Lord Hardwicke implied, an injunction might\nwell be appropriate.\n[8] Despite the initial reluctance of courts of equity to recognize exclusive rights in trademarks\nand Lord Hardwicke\xe2\x80\x99s clear suggestion that claimants pursue such claims at law, the first reported\ntrademark decision by an English common law court was the 1824 decision in Sykes v. Sykes.46 In that\ncase, the court upheld a verdict for the plaintiff against defendants who marked their shot-belts and\npowder-flasks with the words \xe2\x80\x9cSykes Patent\xe2\x80\x9d in imitation of the plaintiff\xe2\x80\x99s use of the same mark for its\nshot-belts and powder-flasks.47 After specifically noting that the plaintiff\xe2\x80\x99s sales had decreased after\nthe defendants began selling their identically labeled products, the court concluded that the\ndefendants had violated the plaintiff\xe2\x80\x99s rights by marking their goods so as \xe2\x80\x9cto denote that they were of\nthe genuine manufacture of the plaintiff\xe2\x80\x9d and \xe2\x80\x9c[selling] them to retail dealers, for the express purpose\nof being resold, as goods of the plaintiff\xe2\x80\x99s manufacture.\xe2\x80\x9d48\n[9] A number of common law cases following the Sykes decision recognized claims in similar\ncircumstances, imposing liability when a producer sought to pass off its goods as those of a\ncompetitor.49 Those cases generally were brought as actions on the case, in the nature of deceit. Yet\n40\n\nId. at 484, 26 Eng. Rep. at 692-93.\n\nSee The Case of Monopolies, (1603) 11 Co. Rep. 84b, 88b, 77 Eng. Rep. 1260, 1266 (K.B.) (calling\nthe playing card monopoly granted by Queen Elizabeth under her royal prerogative an \xe2\x80\x9codious\nmonopoly\xe2\x80\x9d).\n42\n\n45\n\nBlanchard, 2 Atk. at 485, 26 Eng. Rep. at 693.\n\n46\n\n(1824) 3 B. & C. 541, 107 Eng. Rep. 834 (K.B.).\n\n47\n\nSykes, 3 B. & C. at 543, 107 Eng. Rep. at 835.\n\n48\n\nId.\n\n49\n\nSee, e.g., Blofeld v. Payne, (1833) 4 B. & Ad. 410, 411-12, 110 Eng. Rep. 509, 510 (K.B.).\n\n13\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\none must be careful not to read those cases through modern lenses\xe2\x80\x94despite the form of action, courts\nin these early cases invariably described the defendant as having practiced fraud against the plaintiff.51\n[10] Like their counterparts in courts of law, courts of equity became more solicitous of\ntrademark claims in the first part of the nineteenth century. Of particular significance, courts very\nearly on concluded that, where a claimant could demonstrate an exclusive right to use a particular\nmark, equity would intervene to protect a property interest and evidence of fraudulent intent was not\nnecessary. . . .\n[11] As Lord Westbury said in Leather Cloth Co. v. American Leather Cloth Co.57 rejecting any\ncontention that courts of equity based their jurisdiction on fraud,\nThe true principle, therefore, would seem to be, that the jurisdiction of the Court in the\nprotection given to trade marks rests upon property, and that the Court interferes by\ninjunction, because that is the only mode by which property of this description can be\neffectually protected.59\nSignificantly, Lord Westbury reached this conclusion after noting that, even when a party held out his\ngoods as those of another, the other had no right to complain unless the act caused him some\npecuniary loss or damage.60 \xe2\x80\x9cImposition on the public, occasioned by one man selling his goods as the\ngoods of another, cannot be the ground of private right of action or suit.\xe2\x80\x9d61 The court in Levy v.\nWalker62 was even more explicit that the protection of trademarks was intended to protect producers\nand not primarily for the benefit of consumers: \xe2\x80\x9cThe Court interferes solely for the purpose of\nprotecting the owner of a trade or business from a fraudulent invasion of that business by somebody\nelse. It does not interfere to prevent the world outside from being misled into anything.\xe2\x80\x9d63\n....\nC. Early American Trademark Jurisprudence\n1. Trademark Law Targets Dishonest Trade Diversion\n[12] As noted above, I read the decisions of the English common law courts and courts of equity\nas reflecting the same fundamental concern. In both types of cases, courts were singularly focused on\nthe harm to a producer from improper diversion of its trade, and they worked with existing forms of\naction to remedy that harm. American courts had the same focus when they began deciding trademark\ncases, and they repeatedly made clear that the purpose of trademark law was to protect a party from\nillegitimate attempts to divert its trade.82\nSee Blofeld, 4 B. & Ad. at 412, 110 Eng. Rep. at 510 (upholding the verdict for the plaintiff and\nholding that the defendant\xe2\x80\x99s use of envelopes resembling those of plaintiff\xe2\x80\x99s, and containing the same\nwords, was a \xe2\x80\x9cfraud against the plaintiff\xe2\x80\x9d).\n51\n\n57\n\n(1863) 4 De G.J. & S. 137, 141, 46 Eng. Rep. 868 (Ch).\n\n59\n\nId. at 142, 46 Eng. Rep. at 870.\n\n60\n\nId. at 140, 46 Eng. Rep. at 870.\n\n61\n\nId. at 141, 46 Eng. Rep. at 870.\n\n62\n\n(1878) 10 Ch.D. 436.\n\n63\n\nId. at 448.\n\nLike its English predecessor, American trademark law was predominantly a product of judicial\ndecision. Prior to the Act of July 8, 1870, ch. 230, 16 Stat. 198, 210, statutory protection, to the extent it\nexisted, was at the state level and highly trade-specific. Massachusetts, for example, specifically\nregulated the use of marks on sailcloth. See Schechter, supra note 23, at 130-32. The Supreme Court\ndeclared the first two attempts at federal trademark legislation unconstitutional. See The Trade-Mark\n82\n\n14\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[13] In Coats v. Holbrook,83 for example, the court said that a person is not allowed to imitate the\nproduct of another and \xe2\x80\x9cthereby attract to himself the patronage that without such deceptive use of\nsuch names . . . would have inured to the benefit of that other person.\xe2\x80\x9d84\n[14] . . . Moreover, . . . American courts concluded very early on that this protection in many cases\nwas based on a property right,91 following essentially the approach of English courts of equity.\n2. Trademarks and Unfair Competition\n[15] Because the purpose of trademark protection traditionally was to prevent trade diversion by\ncompetitors, it has long been regarded as a species of the broader law of unfair competition, and even\nmore broadly, as part of the law governing other fraudulent (and unfair) business practices. This view\nof trademark protection as a species of unfair competition was not, as some have suggested, a post hoc\nconflation of two branches of the law. From the very beginning, trademark cases and those only\n\xe2\x80\x9canalogous\xe2\x80\x9d to trademark cases were grounded in the same fundamental principle\xe2\x80\x94that no person\nhas the right to pass off his goods as those of another. . . .\n[16] At some point in the late nineteenth century, American courts began to use the term \xe2\x80\x9cunfair\ncompetition\xe2\x80\x9d slightly differently. Those courts divided the universe of distinguishing marks into\n\xe2\x80\x9ctechnical trademarks,\xe2\x80\x9d which were protected in actions for trademark infringement, and \xe2\x80\x9ctrade\nnames,\xe2\x80\x9d which could only be protected in actions for unfair competition. Arbitrary or fanciful terms\napplied to particular products were considered technical trademarks,99 while surnames, geographic\nterms, descriptive terms were considered trade names.100 . . . .\n[17] In practice, cases of trademark infringement and those of unfair competition differed\nprimarily in terms of what the plaintiff had to prove. Use of another\xe2\x80\x99s technical trademark was unlikely\nto have a legitimate explanation and could be condemned categorically. Trademark infringement\nplaintiffs therefore did not have to prove intent. Use of another\xe2\x80\x99s trade name, on the other hand, may\nhave had an innocent purpose, such as description of the product\xe2\x80\x99s characteristics or its geographic\norigin. As a result, in contrast to trademark infringement plaintiffs, unfair competition claimants had to\nprove that the defendant intended to pass off its products as those of the plaintiff. . . . .\n\nCases, 100 U.S. 82, 99 (1879) (invalidating the trademark legislation of 1870 and the Act of Aug. 14,\n1876, ch. 274, 19 Stat. 141 (which imposed criminal sanctions against one who fraudulently used, sold\nor counterfeited trademarks)). Even after Congress began legislating again in this area, however,\ntrademark law remained fundamentally a creature of common law. Indeed, the Lanham Act, ch. 540, 60\nStat. 427 (1946), is widely noted to have generally codified common law.\n83\n\n7 N.Y. Ch. Ann. 713 (1845).\n\n84\n\nId. at 717.\n\nSee, e.g., The Trade-Mark Cases, 100 U.S. 82, 92 (1879); Blackwell v. Armistead, 3 F. Cas. 546,\n548 (C.C.W.D. Va. 1872) (No. 1474); Derringer v. Plate, 29 Cal. 292, 294-95 (1865); Avery & Sons v.\nMeikle & Co., 4 Ky. L. Rptr. 759, 764-65 (1883);\n91\n\nSee RESTATEMENT (THIRD) OF UNFAIR COMPETITION \xc2\xa7 9 (1995); see also 1 MCCARTHY \xc2\xa7 4:4, at 4-4\n(defining technical trademarks as marks that were \xe2\x80\x9cfanciful, arbitrary, distinctive, non-descriptive in\nany sense and not a personal name\xe2\x80\x9d).\n99\n\nTrade names then cumulatively can be thought to comprise what we now think of as indicators\nwhich lack inherent distinctiveness and are protectable only with evidence of secondary meaning.\n100\n\n15\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nComments and Questions\n1. \xe2\x80\x9cTechnical trademarks\xe2\x80\x9d, \xe2\x80\x9ctrade names\xe2\x80\x9d, and intent. In addressing the role of intent in late\nnineteenth century American unfair competition law, McKenna cites The Restatement (Third) of Unfair\nCompetition. The Restatement explains:\nIn both England and the United States {in the late nineteenth century}, the property\nconception of trademark rights extended only to certain designations. When the\ndefendant imitated a designation that was clearly distinctive of the plaintiff\xe2\x80\x99s goods, the\nnatural inference that the defendant intended to deceive prospective purchasers\neventually led to a conclusive presumption of fraud. Thus, in the case of words or other\nsymbols invented by the plaintiff or arbitrary designations that had no apparent relation\nto the plaintiff\xe2\x80\x99s goods except as an indication of source, the courts began to protect the\nplaintiff\xe2\x80\x99s \xe2\x80\x9cproperty\xe2\x80\x9d interest in the mark without regard to the presence of any\nfraudulent intent. Such marks were characterized as \xe2\x80\x9ctrademarks,\xe2\x80\x9d and cases involving\nthe unauthorized use of these marks were designated as actions for \xe2\x80\x9ctrademark\ninfringement.\xe2\x80\x9d The focus of the inquiry thus shifted from an analysis of the defendant\xe2\x80\x99s\nconduct to a consideration of the nature of the plaintiff\xe2\x80\x99s right. Less distinctive marks that\nhad nevertheless come to be recognized by prospective consumers as indications of\nsource were called \xe2\x80\x9ctrade names.\xe2\x80\x9d Although not recognized as \xe2\x80\x9cproperty\xe2\x80\x9d in the same\nsense as technical \xe2\x80\x9ctrademarks,\xe2\x80\x9d protection for \xe2\x80\x9ctrade names\xe2\x80\x9d remained available\nthrough the action for \xe2\x80\x9cunfair competition,\xe2\x80\x9d with its historical emphasis on the fraudulent\ncharacter of the defendant\xe2\x80\x99s conduct.\n. . . The initial emphasis on fraud and property rights has generally given way to a\nmore explicit analysis of the propriety of the defendant\xe2\x80\x99s conduct as a means of\ncompetition, and the technical distinctions between the actions for trademark\ninfringement and unfair competition have now been abandoned.\nRestatement (Third) of Unfair Competition \xc2\xa7 9, cmt. d (1995).\n2. Production marks. As the McKenna excerpt explains, local guilds required production marks\nnot just to aid in asserting their monopoly but also to fix liability for poorly-made goods that might\ntarnish the reputation of the guild. An early example of quality enforcement\xe2\x80\x94and of trademark\nadjudication\xe2\x80\x94comes to us in the remarkable story of the fourteenth-century bladesmith John Odinsay.\nOdinsay was accused of making a sword that broke during combat when one Sir Peter Harpdon used it\nto defend himself from highway brigands while travelling through Bordeaux in 1345. Sir Peter\nrecovered from his wounds in that skirmish and went on to fight next to the Black Prince in the Battle\nof Crecy in 1346. But upon his return to London, he pursued the matter of the broken sword. The\nhallmark suggested that Odinsay had made it (and the penalties for such faulty craftsmanship would\nhave ruined Odinsay and his family), but the mark turned out to be a forgery. The London bladesmiths\xe2\x80\x99\nguild discovered that several of its members\xe2\x80\x99 marks were being forged, perhaps by smiths in nearby\ncities. See Thomas D. Drescher, The Transformation and Evolution of Trademarks\xe2\x80\x94From Signals to\nSymbols to Myth, 82 TRADEMARK REPORTER 301, 313-18 (1992).\n2.\n\nThe Trade-Mark Cases\n\nThe Supreme Court\xe2\x80\x99s 1879 opinion in the Trade-Mark Cases is the first great Supreme Court\nopinion on trademarks (often written at the time as \xe2\x80\x9ctrade-marks\xe2\x80\x9d or \xe2\x80\x9ctrade marks\xe2\x80\x9d, which latter usage\nBritish English still prefers to this day). It arose out of three criminal cases in which the defendants\nchallenged the constitutionality of the federal trademark law in effect at the time. As you will see, it\nwas not an auspicious start for federal trademark law.\n\n16\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nTrade-Mark Cases\n100 U.S. 82 (1879)\nMR. JUSTICE MILLER delivered the opinion of the court.\n[1] The three cases whose titles stand at the head of this opinion are criminal prosecutions for\nviolations of what is known as the trade-mark legislation of Congress. The first two are indictments in\nthe southern district of New York, and the last is an information in the southern district of Ohio. In all\nof them the judges of the circuit courts in which they are pending have certified to a difference of\nopinion on what is substantially the same question; namely, are the acts of Congress on the subject of\ntrade-marks founded on any rightful authority in the Constitution of the United States?\n[2] The entire legislation of Congress in regard to trade-marks is of very recent origin. It is first\nseen in sects. 77 to 84, inclusive, of the act of July 8, 1870, entitled \xe2\x80\x98An Act to revise, consolidate, and\namend the statutes relating to patents and copyrights.\xe2\x80\x99 16 Stat. 198. The part of this act relating to\ntrade-marks is embodied in chap. 2, tit. 60, sects. 4937 to 4947, of the Revised Statutes.\n[3] It is sufficient at present to say that they provide for the registration in the Patent Office of any\ndevice in the nature of a trade-mark to which any person has by usage established an exclusive right,\nor which the person so registering intends to appropriate by that act to his exclusive use; and they\nmake the wrongful use of a trade-mark, so registered, by any other person, without the owner\xe2\x80\x99s\npermission, a cause of action in a civil suit for damages. Six years later we have the act of Aug. 14, 1876\n(19 Stat. 141), punishing by fine and imprisonment the fraudulent use, sale, and counterfeiting of\ntrade-marks registered in pursuance of the statutes of the United States, on which the informations\nand indictments are founded in the cases before us.\n[4] The right to adopt and use a symbol or a device to distinguish the goods or property made or\nsold by the person whose mark it is, to the exclusion of use by all other persons, has been long\nrecognized by the common law and the chancery courts of England and of this country, and by the\nstatutes of some of the States. It is a property right for the violation of which damages may be\nrecovered in an action at law, and the continued violation of it will be enjoined by a court of equity,\nwith compensation for past infringement. This exclusive right was not created by the act of Congress,\nand does not now depend upon it for its enforcement. The whole system of trade-mark property and\nthe civil remedies for its protection existed long anterior to that act, and have remained in full force\nsince its passage.\n[5] These propositions are so well understood as to require neither the citation of authorities nor\nan elaborate argument to prove them.\n[6] As the property in trade-marks and the right to their exclusive use rest on the laws of the\nStates, and, like the great body of the rights of person and of property, depend on them for security and\nprotection, the power of Congress to legislate on the subject, to establish the conditions on which these\nrights shall be enjoyed and exercised, the period of their duration, and the legal remedies for their\nenforcement, if such power exist at all, must be found in the Constitution of the United States, which is\nthe source of all powers that Congress can lawfully exercise.\n[7] In the argument of these cases this seems to be conceded, and the advocates for the validity of\nthe acts of Congress on this subject point to two clauses of the Constitution, in one or in both of which,\nas they assert, sufficient warrant may be found for this legislation.\n[8] The first of these is the eighth clause of sect. 8 of the first article. That section, manifestly\nintended to be an enumeration of the powers expressly granted to Congress, and closing with the\ndeclaration of a rule for the ascertainment of such powers as are necessary by way of implication to\ncarry into efficient operation those expressly given, authorizes Congress, by the clause referred to, \xe2\x80\x98to\n\n17\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\npromote the progress of science and useful arts, by securing for limited times, to authors and\ninventors, the exclusive right to their respective writings and discoveries.\xe2\x80\x99\xef\x80\xaa\n[9] As the first and only attempt by Congress to regulate the right of trade-marks is to be found in\nthe act of July 8, 1870, to which we have referred, entitled \xe2\x80\x98An Act to revise, consolidate, and amend the\nstatutes relating to patents and copyrights,\xe2\x80\x99 terms which have long since become technical, as referring,\nthe one to inventions and the other to the writings of authors, it is a reasonable inference that this part\nof the statute also was, in the opinion of Congress, an exercise of the power found in that clause of the\nConstitution. It may also be safely assumed that until a critical examination of the subject in the courts\nbecame necessary, it was mainly if not wholly to this clause that the advocates of the law looked for its\nsupport.\n[10] Any attempt, however, to identify the essential characteristics of a trade-mark with\ninventions and discoveries in the arts and sciences, or with the writings of authors, will show that the\neffort is surrounded with insurmountable difficulties.\n[11] The ordinary trade-mark has no necessary relation to invention or discovery. The trademark recognized by the common law is generally the growth of a considerable period of use, rather\nthan a sudden invention. It is often the result of accident rather than design, and when under the act of\nCongress it is sought to establish it by registration, neither originality, invention, discovery, science,\nnor art is in any way essential to the right conferred by that act. If we should endeavor to classify it\nunder the head of writings of authors, the objections are equally strong. In this, as in regard to\ninventions, originality is required. And while the word writings may be liberally construed, as it has\nbeen, to include original designs for engravings, prints, &c., it is only such as are original, and are\nfounded in the creative powers of the mind. The writings which are to be protected are the fruits of\nintellectual labor, embodied in the form of books, prints, engravings, and the like. The trade-mark may\nbe, and generally is, the adoption of something already in existence as the distinctive symbol of the\nparty using it. At common law the exclusive right to it grows out of its use, and not its mere adoption.\nBy the act of Congress this exclusive right attaches upon registration. But in neither case does it\ndepend upon novelty, invention, discovery, or any work of the brain. It requires no fancy or\nimagination, no genius, no laborious thought. It is simply founded on priority of appropriation. We look\nin vain in the statute for any other qualification or condition. If the symbol, however plain, simple, old,\nor well-known, has been first appropriated by the claimant as his distinctive trade-mark, he may by\nregistration secure the right to its exclusive use. While such legislation may be a judicious aid to the\ncommon law on the subject of trade-marks, and may be within the competency of legislatures whose\ngeneral powers embrace that class of subjects, we are unable to see any such power in the\nconstitutional provision concerning authors and inventors, and their writings and discoveries.\n[12] The other clause of the Constitution supposed to confer the requisite authority on Congress\nis the third of the same section, which, read in connection with the granting clause, is as follows: \xe2\x80\x98The\nCongress shall have power to regulate commerce with foreign nations, and among the several States,\nand with the Indian tribes.\xe2\x80\x99\n....\n[13] If {a law\xe2\x80\x99s} main purpose be to establish a regulation applicable to all trade, to commerce at\nall points, especially if it be apparent that it is designed to govern the commerce wholly between\ncitizens of the same State, it is obviously the exercise of a power not confided to Congress.\n\n\xef\x80\xaa\n\n{Note that the Supreme Court misquoted the Constitution here. There is no comma after \xe2\x80\x9climited\ntimes\xe2\x80\x9d or \xe2\x80\x9cauthors and inventors.\xe2\x80\x9d}\n\n18\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[14] We find no recognition of this principle in the chapter on trade-marks in the Revised\nStatutes. We would naturally look for this in the description of the class of persons who are entitled to\nregister a trade-mark, or in reference to the goods to which it should be applied. . . . But no such idea is\nfound or suggested in this statute. Its language is: \xe2\x80\x98Any person or firm domiciled in the United States,\nand any corporation created by the United States, or of any State or Territory thereof,\xe2\x80\x99 or any person\nresiding in a foreign country which by treaty or convention affords similar privileges to our citizens,\nmay be registration obtain protection for his trade-mark. Here is no requirement that such person\nshall be engaged in the kind of commerce which Congress is authorized to regulate. It is a general\ndeclaration that anybody in the United States, and anybody in any other country which permits us to\ndo the like, may, by registering a trade-mark, have it fully protected. . . . The remedies provided by the\nact when the right of the owner of the registered trade-mark is infringed, are not confined to the case\nof a trade-mark used in foreign or inter-state commerce.\n[15] It is therefore manifest that no such distinction is found in the act, but that its broad purpose\nwas to establish a universal system of trade-mark registration, for the benefit of all who had already\nused a trade-mark, or who wished to adopt one in the future, without regard to the character of the\ntrade to which it was to be applied or the residence of the owner, with the solitary exception that those\nwho resided in foreign countries which extended no such privileges to us were excluded from them\nhere.\n....\n[16] While we have, in our references in this opinion to the trade-mark legislation of Congress,\nhad mainly in view the act of 1870, and the civil remedy which that act provides, it was because the\ncriminal offences described in the act of 1876 are, by their express terms, solely referable to frauds,\ncounterfeits, and unlawful use of trade-marks which were registered under the provisions of the\nformer act. If that act is unconstitutional, so that the registration under it confers no lawful right, then\nthe criminal enactment intended to protect that right falls with it.\n[17] The questions in each of these cases being an inquiry whether these statutes can be upheld in\nwhole or in part as valid and constitutional, must be answered in the negative; and it will be\nSo certified to the proper circuit courts.\n3.\n\nThe Statutory Development of U.S. Trademark law and the Lanham Act of 1946\n\nRep. Fritz Lanham, 1880-1965\n(D-Texas, 1919-1947)\n\n19\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nExcerpt from Restatement (Third) of Unfair Competition \xc2\xa7 9 (1995)\n[1] e. Trademark legislation. The federal government and each of the states have enacted\nlegislation protecting trademarks. The statutes generally provide a mechanism for the registration of\ntrademarks, describe the types of marks that may be registered, and specify the procedural and\nsubstantive advantages afforded to the owner of a trademark registration. The statutes, however, do\nnot ordinarily preempt the protection of trademarks at common law.\n[2] Although several states had earlier enacted legislation to prevent the fraudulent use of\ntrademarks, the first federal trademark statute was not enacted until 1870. This initial attempt at\nfederal protection proved short-lived, however, when in 1879 the Supreme Court in the Trade-Mark\nCases, 100 U.S. (10 Otto) 82 (1879), held that the statute had been unconstitutionally grounded on the\npatent and copyright clause of the Constitution. A second federal statute was enacted in 1881, but in\nreaction to the Trade-Mark Cases, registration under the act was limited to marks used in commerce\nwith foreign nations and the Indian tribes. The first modern federal trademark registration statute was\nthe Trademark Act of 1905, grounded on the commerce clause. In a continuation of the distinction that\nhad developed at common law between technical \xe2\x80\x9ctrademarks\xe2\x80\x9d and \xe2\x80\x9ctrade names,\xe2\x80\x9d the Act of 1905\nlimited registration to fanciful and arbitrary marks, except for marks that had been in actual use for 10\nyears preceding passage of the statute.\n[3] To clarify and strengthen the rights of trademark owners, the Act of 1905 was replaced by the\nTrademark Act of 1946 (effective July 5, 1947), 15 U.S.C.A. \xc2\xa7\xc2\xa7 1051-1127, commonly known as the\nLanham Act. The Lanham Act is generally declarative of existing law, incorporating the principal\nfeatures of common law trademark protection. However, among the major innovations of the Lanham\nAct were the adoption of a constructive notice rule that effectively expanded the geographic scope of\ntrademark rights, and an attempt to provide a measure of security to trademark owners in the form of\n\xe2\x80\x9cincontestable\xe2\x80\x9d rights in certain trademarks. The Lanham Act in \xc2\xa7 43(a) also added a general\nproscription against false designations and representations that has come to serve as a federal law of\ndeceptive marketing.\n[4] Statutes in every state also provide for the registration of trademarks. In 1949 the United\nStates (now International) Trademark Association prepared a Model State Trademark Bill patterned\nafter the federal registration system. The Model Bill, revised in 1964 and 1992, provides the basis for\nmuch of the current state legislation.\nFrom Edward S. Rogers, The Lanham Act and the Social Function of Trademarks, 14 LAW &\nCONTEMP. PROBS. 173, 180-83 (1949)\n....\n[1] The prospect of getting anything through Congress in 1937 was not encouraging. Our\ncommittee{, the Trade Mark Committee of the Patent Section of the American Bar Association,} kept\nnotes and I had a scrapbook in which I stuck ideas that came in from all sorts of places. More as a\nmatter of convenience than anything else, I cast those notes and ideas in the form of a draft statute.\n[2] In the winter of 1937 the Commissioner of Patents asked me to come to Washington to see\nhim. He said he had had a conference with Fritz Lanham, who was chairman of the subcommittee of\nthe House Patent Committee dealing with trademarks, and asked me to see Mr. Lanham, which I did.\nMr. Lanham said that a large number of piecemeal amendments to the 1905 Act had been proposed\nand that he had been studying the Act and couldn\xe2\x80\x99t make head or tail of it; that if it were amended\npiecemeal it would make incomprehensible what had hitherto been merely obscure. So he asked if\nanywhere around there was a skeleton draft of a new act that could be used as a sort of clotheshorse to\nhang things on. I told him I had such a draft and he asked me to leave it with him, which I, of course,\nwas glad to do.\n20\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[3] I supposed that Mr. Lanham was just going to study this memorandum and skeleton\xe2\x80\x94it was\nhardly more than that\xe2\x80\x94and begin to hold hearings. I was surprised when, on January 19, 1938, he\nintroduced it as H.R. 9041.\n[4] Immediately bar associations appointed committees which did thoughtful and conscientious\nwork, with the result that we now have a new Trade-Mark Act. Since the last Act was passed in 1905\nand the new Act in 1946\xe2\x80\x94forty-one years later\xe2\x80\x94I suspect we are going to have to live with the\nLanham Act for a long time.\n....\n[5] Whenever there was a hearing before any committee on the trade-mark bill, sooner or later\nthere appeared zealous men from the Department of Justice who raised all manner of objections. They\nasserted that trade-marks are monopolistic and any statutory protection of them plays into the hands\nof big business and should be discouraged. In vain it was pointed out that what is now big business\nstarted as little business\xe2\x80\x94that trade-marks are not, like patents and copyrights, a government grant of\nan exclusive right, that trade-marks are visible reputation and symbols of good will, that trade-marks\nare the antithesis of monopoly, and that to protect them is to insure the one whose goods or services\nthey distinguish against fraud and misrepresentation.\n[6] No progress seemed to be made with the Department\xe2\x80\x99s representatives, who were against not\nonly the protection of trade-marks but trade-marks as an institution. . . .\nComments and Questions\n1. The Long Road to the Lanham Act. In his influential treatise, J. Thomas McCarthy records the\nfate of legislative efforts through the war years leading to the Lanham Act of 1946:\nHearings on the bill and the various forms in which it was reintroduced were held in\nMarch 1938, March 1939, June 1939, and passed the House and Senate in 1939 and 1940.\nHowever, the Senate moved to reconsider the bill on June 23, 1940 and it was returned to\nthe calendar and died. In the 77th Congress a reintroduced bill passed the Senate in 1941\nand the House in 1942, but the bill died upon being referred back to Committee in 1942.\nHearings were held in the 78th Congress in 1943 and 1944, but the bill was not passed.\nFinally, the 1945 version of the bill (H.R. 1654) was passed by the 79th Congress.\nMCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION \xc2\xa7 5.4 (2018). If we date the Lanham Act from its first\ndraft in 1937 (or indeed back to the so-called Vestal Bill of 1931), then the Act is more than 80 years\nold. This may help to explain the existence of certain especially abstruse statutory sections that the\nstudent will confront through the course of studying U.S. trademark law.\n4.\n\nStatutory Developments\n\nThe Lanham Act has been amended numerous times since its July 5, 1947 effective date. Listed\nhere are some of the more important amendments, many of which we will refer to through the course\nof this casebook.\n1962\n\nThe limiting phrase \xe2\x80\x9cpurchasers as to the source of origin of such goods or\nservices\xe2\x80\x9d was deleted from Lanham Act \xc2\xa7 32. 1962 Pub. L. No. 87-772, 76 Stat.\n769. This arguably significantly broadened the scope of anti-infringement\nprotection under the Act.\n\n1975\n\nThe following sentence was added to Lanham Act \xc2\xa7 35: \xe2\x80\x9cThe court in\nexceptional cases may award reasonable attorney fees to the prevailing party.\xe2\x80\x9d\n1975 Pub. L. No. 93-600, 88 Stat. 1955.\n\n21\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n1975\n\nCongress finally changed the name of the \xe2\x80\x9cPatent Office\xe2\x80\x9d to the \xe2\x80\x9cPatent and\nTrademark Office.\xe2\x80\x9d 1975 Pub. L. No. 93-596, 88 Stat. 1949.\n\n1982\n\nThe Court of Customs and Patent Appeals became the Court of Appeals for the\nFederal Circuit. Pub. L. 97-164, 96 Stat. 25.\n\n1984\n\nThe Trademark Counterfeiting Act of 1984 was enacted, 1984 Pub. L. No. 98473, 98 Stat. 1837, amending Lanham \xc2\xa7\xc2\xa7 34, 35, and 36, and establishing\ncriminal trademark anti-counterfeiting penalties in 18 U.S.C. \xc2\xa7 2320.\n\n1988\n\nThe Trademark Law Revision Act of 1988 (TLRA) was enacted, effective\nNovember 16, 1989. Pub. L. No. 100-667, 102 Stat. 3935. The TLRA\nestablished the \xe2\x80\x9cintent-to-use\xe2\x80\x9d basis for registration and federal statutory\n\xe2\x80\x9cconstructive use\xe2\x80\x9d for purposes of priority. It also significantly rewrote\nLanham Act \xc2\xa7 43(a).\n\n1996\n\nThe Federal Trademark Dilution Act (FTDA), enacted and effective January 16,\n1996, established a federal cause of action for anti-dilution protection in\nLanham Act \xc2\xa7 43(c). Pub. L. No. 104-98, 109 Stat. 985. The FTDA has been\nreplaced by the Trademark Dilution Revision Act of 2006.\n\n1996\n\nThe Anticounterfeiting Consumer Protection Act of 1996 further enhanced\nprocedures to combat and penalties for trademark counterfeiting. Pub. L. No.\n104-153, 110 Stat 1386. The Act also introduced statutory damages for\ncounterfeiting.\n\n1999\n\nThe Anticybersquatting Consumer Protection Act (ACPA) established Lanham\nAct \xc2\xa7 43(d) to combat the cybersquatting of domain names confusingly similar\nto or dilutive of trademarks. Pub. L. No. 106-113, 113 Stat. 1501.\n\n2002\n\nThe Madrid Protocol Implementation Act (MPIA), enacted Nov. 2, 2002 and\neffective Nov. 2, 2003, established Lanham Act \xc2\xa7\xc2\xa7 60-74. 116 Stat. 1758, 1913\nPub. L. No. 107-273. With the MPIA, the U.S. became a member of the Madrid\nSystem of international trademark registration.\n\n2006\n\nThe Trademark Dilution Revision Act of 2006 (TDRA) significantly rewrote\nLanham Act \xc2\xa7 43(c). Pub. L. No. 109-312, 120 Stat. 1730. It replaced the FTDA\nof 1996.\n\n2008\n\nThe Prioritizing Resources and Organization for Intellectual Property Act of\n2008 (PRO-IP Act) enhanced civil damages and criminal penalties for\ntrademark counterfeiting. Pub. L. No. 110-313, 122 Stat. 3014.\n\n2020\n\nThe Trademark Modernization Act of 2020 (TMA) instituted various\nmechanisms for challenging trademark filings making inaccurate claims of use\nin commerce and established that a finding of a likelihood of confusion or\ndilution triggers a rebuttable presumption of irreparable harm. Pub. L. No.\n116-260, 134 Stat. 118.\nComments and Questions\n\n1. \xe2\x80\x9cThe Last Best Place.\xe2\x80\x9d One of the stranger moments in the history of U.S. trademark\nlegislation involves the phrase \xe2\x80\x9cThe Last Best Place.\xe2\x80\x9d Between 2001 and 2004, a Nevada business\n22\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nnamed Last Best Beef, LLC filed eight applications at the PTO to register the phrase \xe2\x80\x9cThe Last Best\nPlace\xe2\x80\x9d in connection with various goods and services. In 2005, Congress passed and the President\nsigned into law an appropriations bill with a rider that consisted of the following language:\n\xe2\x80\x9cNotwithstanding any other provision of this Act, no funds appropriated under this Act shall be used to\nregister, issue, transfer, or enforce any trademark of the phrase \xe2\x80\x98The Last Best Place.\xe2\x80\x99\xe2\x80\x9d See Pub.L. No.\n109\xe2\x80\x93108, 119 Stat. 2290. Upon learning of this statutory command in an appropriations bill that\ncovered the PTO, the PTO suspended all consideration of Last Best Beef\xe2\x80\x99s trademark applications and\nno further applications for the phrase have since been filed. What? In 1988, a Montana writer had\nentitled an anthology of Montana-oriented poetry and prose \xe2\x80\x9cThe Last Best Place.\xe2\x80\x9d The phrase was\nsoon taken up by Montana businesses and state government. In 2005, Montana Senator Conrad Burns\nattached the rider to the appropriations bill on the ground that the phrase \xe2\x80\x9cbelongs to the State of\nMontana.\xe2\x80\x9d See John L. Welch, Montana Senator Again Blocks \xe2\x80\x9cLAST BEST PLACE\xe2\x80\x9d Registrations, The\nTTABlog, Feb. 27, 2009, http://thettablog.blogspot.com/2009/02/montana-senator-max-baucusannounced.html. See also The Last Best Beef, LLC v. Dudas, 506 F.3d 333 (4th Cir. 2007) (not seeing a\nproblem with any of this).\nB.\n\nThe Policy Justifications for Trademark Protection\n\nProbably the most oft-quoted passage from the Trade-Mark Cases is the paragraph in which the\nSupreme Court compared trademarks to the two other most significant forms of intellectual property,\ncopyrights and patents (paragraph 11 in the excerpt above). Consider whether what Justice Miller\nwrote in 1879 about the development of brand names is still accurate today:\nThe ordinary trade-mark has no necessary relation to invention or discovery. The trademark recognized by the common law is generally the growth of a considerable period of\nuse, rather than a sudden invention. It is often the result of accident rather than design,\nand when under the act of Congress it is sought to establish it by registration, neither\noriginality, invention, discovery, science, nor art is in any way essential to the right\nconferred by that act. If we should endeavor to classify it under the head of writings of\nauthors, the objections are equally strong. In this, as in regard to inventions, originality is\nrequired. And while the word writings may be liberally construed, as it has been, to\ninclude original designs for engravings, prints, &c., it is only such as are original, and are\nfounded in the creative powers of the mind. The writings which are to be protected are\nthe fruits of intellectual labor, embodied in the form of books, prints, engravings, and the\nlike. The trade-mark may be, and generally is, the adoption of something already in\nexistence as the distinctive symbol of the party using it. At common law the exclusive\nright to it grows out of its use, and not its mere adoption. By the act of Congress this\nexclusive right attaches upon registration. But in neither case does it depend upon\nnovelty, invention, discovery, or any work of the brain. It requires no fancy of\nimagination, no genius, no laborious thought. It is simply founded on priority of\nappropriation.\nId. at 94.\nBy 1942, the Court was describing trademarks and the role of trademark law in different terms. In\nMishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942), Justice Frankfurter\nexplained:\nThe protection of trade-marks is the law\xe2\x80\x99s recognition of the psychological function of\nsymbols. If it is true that we live by symbols, it is no less true that we purchase goods by\nthem. A trade-mark is a merchandising short-cut which induces a purchaser to select\nwhat he wants, or what he has been led to believe he wants. The owner of a mark exploits\nthis human propensity by making every effort to impregnate the atmosphere of the\nmarket with the drawing power of a congenial symbol. Whatever the means employed,\n23\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe aim is the same\xe2\x80\x94to convey through the mark, in the minds of potential customers,\nthe desirability of the commodity upon which it appears. Once this is attained, the trademark owner has something of value. If another poaches upon the commercial magnetism\nof the symbol he has created, the owner can obtain legal redress.\nId. at 205.\nBy the 1980s, American courts were describing trademarks and trademark law in yet different\nterms, terms which still resonate today. Reflecting the rise of the Chicago School economic analysis of\nlaw, Judge Easterbrook described the economic benefits of trademarks and trademark protection in\nScandia Down Corp. v. Euroquilt, Inc., 772 F.2d. 1423 (7th Cir. 1985):\nTrademarks help consumers to select goods. By identifying the source of the goods, they\nconvey valuable information to consumers at lower costs. Easily identified trademarks\nreduce the costs consumers incur in searching for what they desire, and the lower the\ncosts of search the more competitive the market. A trademark also may induce the\nsupplier of goods to make higher quality products and to adhere to a consistent level of\nquality. The trademark is a valuable asset, part of the \xe2\x80\x9cgoodwill\xe2\x80\x9d of a business. If the seller\nprovides an inconsistent level of quality, or reduces quality below what consumers\nexpect from earlier experience, that reduces the value of the trademark. The value of a\ntrademark is in a sense a \xe2\x80\x9chostage\xe2\x80\x9d of consumers; if the seller disappoints the consumers,\nthey respond by devaluing the trademark. The existence of this hostage gives the seller\nanother incentive to afford consumers the quality of goods they prefer and expect.\nId. at 1429-30.\nWhich description of trademarks most accurately reflects their characteristics in the present day?\nAre they often adopted, in the terms of the Trade-Mark Cases, as \xe2\x80\x9cthe result of accident rather than\ndesign\xe2\x80\x9d? Can we say of the development of trademarks, as of the legal conditions leading to their\nprotection, that \xe2\x80\x9cno fancy of imagination, no genius, no laborious thought\xe2\x80\x9d is required? Or is it rather\nthat, through the development of a brand name, \xe2\x80\x9c[t]he owner of a mark. . .mak[es] every effort to\nimpregnate the atmosphere of the market with the drawing power of a congenial symbol\xe2\x80\x9d? Is the\nconsumer in some sense a victim of these machinations of the trademark owner, who through the\n\xe2\x80\x9ccommercial magnetism\xe2\x80\x9d of the trademark \xe2\x80\x9cinduces the purchaser to select what he wants, or what he\nhas been led to believe he wants\xe2\x80\x9d? Or is it finally not consumers who are victims of the trademark, but\nthe trademark who is a \xe2\x80\x9chostage\xe2\x80\x9d of consumers, whom it serves by enabling them to find what they\ndesire and to insist on \xe2\x80\x9cthe quality of goods they prefer and expect\xe2\x80\x9d?\n1.\n\nThe Economic Justification for Trademark Protection\n\nThese differing accounts of the trademark and trademark law are probably all more or less true,\ndepending on the trademark, product, and consumer at issue. But it is well-accepted that the last\naccount, based on the economic analysis of law, is currently by far the dominant account of trademark\nlaw. In Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (U.S. 1995), Justice Breyer cited, among\nother sources, William Landes & Richard Posner, The Economics of Trademark Law, 78 TRADEMARK REP.\n267, 271-272 (1988), in support of the following statement of the purposes of trademark law:\n{T}rademark law, by preventing others from copying a source-identifying mark, reduces\nthe customer\xe2\x80\x99s costs of shopping and making purchasing decisions, for it quickly and\neasily assures a potential customer that this item\xe2\x80\x94the item with this mark\xe2\x80\x94is made by\nthe same producer as other similarly marked items that he or she liked (or disliked) in\nthe past. At the same time, the law helps assure a producer that it (and not an imitating\ncompetitor) will reap the financial, reputation-related rewards associated with a\ndesirable product. The law thereby encourages the production of quality products, and\nsimultaneously discourages those who hope to sell inferior products by capitalizing on a\nconsumer\xe2\x80\x99s inability quickly to evaluate the quality of an item offered for sale.\n24\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nId. at 163-64 (citations omitted).\nThe current orthodox view of trademarks, then, is that they (1) minimize consumer search costs,\nand (2) provide incentives to producers to produce consistent levels of product quality. This latter\nbenefit of trademarks is especially important for certain types of products. In general, products may be\nunderstood to possess three types of characteristics: \xe2\x80\x9csearch\xe2\x80\x9d characteristics, such as color or price,\nwhich can be inspected prior to purchase; \xe2\x80\x9cexperience\xe2\x80\x9d characteristics, such as taste, which can only be\nverified through use of the product; and \xe2\x80\x9ccredence\xe2\x80\x9d characteristics, such as durability, which can only\nbe confirmed over time. See Phillip Nelson, Advertising as Information, 82 J. POL. ECON. 729 (1974). For\nproducts such as medicine, automobiles or high-technology goods, the \xe2\x80\x9csearch\xe2\x80\x9d characteristics of\nwhich say little about the quality of the product, consumers may rely heavily on the trademark\nattached to the product in making their purchasing decision. It follows that in a market without\nreliable source-identification for such products, producers would have little incentive to invest in the\nproduction of products of high quality. This is because they would likely be undercut by competitors\nwho would offer cheaper products of lower quality under the same mark. See George A. Ackerlof, The\nMarket for \xe2\x80\x9cLemons\xe2\x80\x9d: Quality Uncertainty and the Market Mechanism, 84 Q.J. OF ECON. 488 (1970).\nAs indications of quality, trademarks signify and allow firms to develop commercial goodwill,\nwhich for many firms may be by far their most valuable asset. The concept of goodwill encompasses\nthe reputation of the firm and its products and the probability, based on this reputation, that\nconsumers will continue to patronize the firm in the future. A nineteenth-century court described\ngoodwill in these terms:\nWhen an individual or a firm or a corporation has gone on for an unbroken series of\nyears conducting a particular business, and has been so scrupulous in fulfilling every\nobligation, so careful in maintaining the standard of goods dealt in, so absolutely honest\nand fair in all business dealings that customers of the concern have become convinced\nthat their experience in the future will be as satisfactory as it has been in the past, while\nsuch customers\xe2\x80\x99 good report of their own experience tends continually to bring new\ncustomers to the same concern, there has been produced an element of value quite as\nimportant\xe2\x80\x94in some cases, perhaps far more important\xe2\x80\x94than the plant or machinery\nwith which the business is carried on.\nWashburn v. National Wall-Paper Co., 81 F. 17, 20 (2d Cir. 1897).\n2.\n\nCriticisms of the Economic Justification for Trademark Protection\n\nYet the example of Coca-Cola and brands like it may lead many readers to doubt the sufficiency of\nthe economic account of trademark law, focused as it is on search costs and incentives to produce\nquality goods. After all, many trademarks, such as COKE, do more than merely indicate the source of the\ngoods to which they are affixed, and strictly speaking, some trademarks don\xe2\x80\x99t even do that. A t-shirt\nbearing the trademark ARSENAL is not intended to indicate and is not read by consumers to indicate that\nArsenal soccer players knitted the shirt themselves. The trademark primarily functions instead as a\n\xe2\x80\x9cbadge of support for or loyalty or affiliation to the trademark proprietor.\xe2\x80\x9d Arsenal Football Club Plc v.\nMatthew Reed, Case C-206/01, [2003] ETMR 19, \xc2\xb6 15. This same function may be attributed to many\ntrademarks, and not simply to high-fashion marks such as POLO or PRADA, but also to more mundane\nmarks such as PEPSI or FORD, whose owners have quite consciously sought to build \xe2\x80\x9cconsumption\ncommunities\xe2\x80\x9d4 around these brands. See Int\xe2\x80\x99l Order of Job\xe2\x80\x99s Daughters v. Lindeburg & Co., 633 F.2d 912,\n918 (9th Cir. 1980) (recognizing that \xe2\x80\x9c[w]e commonly identify ourselves by displaying emblems\nexpressing allegiances. Our jewelry, clothing, and cars are emblazoned with inscriptions showing the\n\n4\n\nDaniel J. Boorstin, Americans: The Democratic Experience 145 (1974).\n\n25\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\norganizations we belong to, the schools we attend, the landmarks we have visited, the sports teams we\nsupport, the beverages we imbibe\xe2\x80\x9d). In such situations, the mark itself is often the primary product\ncharacteristic that the consumer wishes to acquire, and the underlying material good, if any, is merely\na means of conveying that characteristic5 and an alibi for the consumption of that characteristic. We\ntypically think of a trademark as supplementary in relation to the goods to which it is affixed, as\nsomething added to preexisting goods. But certain doctrines in trademark law may make sense only if\none appreciates that for certain brands, this relation is reversed. The brand is prior and the physical\ngoods are supplementary to it, supporting and enhancing the brand\xe2\x80\x99s value, so that a firm (for example,\na fashion house) may first design a brand and then produce or license tangible or intangible goods\nconsistent with that brand.\nEven when the consumer is interested in the quality of the material good, the trademark may\ncontribute to deleterious \xe2\x80\x9cartificial product differentiation,\xe2\x80\x9d as when consumers pay a premium for\nbranded versions of pharmaceuticals when lower-cost generic versions are required by government\nregulation to meet exactly the same quality standards as the more expensive branded versions. This\nargument, which associates trademarks with the purported evils of some forms of advertising, first\ngained significant influence with the publication in 1933 of the economist Edward Chamberlin\xe2\x80\x99s book\nThe Theory of Monopolistic Competition, which systematically formulated the artificial product\ndifferentiation view.6 Chamberlin\xe2\x80\x99s work proved to be especially influential in mid-twentieth century\ntrademark commentary7 and is reflected to some degree in Justice Frankfurter\xe2\x80\x99s discussion of\ntrademarks in Mishawaka Rubber. Other courts sometimes picked up on Chamberlin\xe2\x80\x99s ideas. See, e.g.,\nSmith v. Chanel, Inc., 402 F.2d 562, 567 (2d Cir. 1968) (proposing that, through the trademark,\n\xe2\x80\x9ceconomically irrational elements are introduced into consumer choices; and the trademark owner is\ninsulated from the normal pressures of price and quality competition. In consequence the competitive\nsystem fails to perform its function of allocating available resources efficiently.\xe2\x80\x9d).\nSince the 1980s, however, mainstream economic thought has grown increasingly hostile toward,\neven dismissive of, the argument that, as Landes and Posner characterize it, trademarks \xe2\x80\x9cpromote\nsocial waste and consumer deception\xe2\x80\x9d through \xe2\x80\x9cthe power of brand advertising to bamboozle the\npublic and thereby promote monopoly.\xe2\x80\x9d8 Instead, economists have come to view trademarks and\nadvertising in a much more positive light. See George Stigler, The Economics of Information, 69 J. POL.\nECON. 213 (1961). The consensus view now is that advertising cheaply conveys information to\nconsumers, particularly with respect to \xe2\x80\x9cexperience goods.\xe2\x80\x9d See Phillip Nelson, Advertising as\nInformation, 82 J. POL. ECON. 729 (1974). Advertising also signals that the advertiser believes its goods\nto be of sufficiently high quality to benefit from advertising. \xe2\x80\x9cThe higher quality brand will, other\nthings being equal, have a comparative advantage in acquiring more customers by advertising\xe2\x80\x94since\nit will retain a larger fraction of them on repeat sales.\xe2\x80\x9d See Jack Hirshleifer, Where Are We in the Theory\n\nFor further discussion of the trademark \xe2\x80\x9cmerchandising right,\xe2\x80\x9d see Stacey L. Dogan & Mark A.\nLemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 EMORY L.J. 461 (2005).\n5\n\n6\n\nSee also Joan Robinson, The Economics of Imperfect Competition 89 (1933).\n\nSee generally Glynn S. Lunney, Trademark Monopolies, 48 EMORY L.J. 367, 367-69 (1999)\n(discussing the influence of Chamberlin\xe2\x80\x99s work on trademark commentary). See also Sherwin Rosen,\nAdvertising, Information, and Product Differentiation, in ISSUES IN ADVERTISING: THE ECONOMICS OF\nPERSUASION 161-91 (David G. Tuerck ed., 1978) (summarizing the artificial product differentiation\nview). See generally Beverly W. Pattishall, Trademarks and the Monopoly Phobia, 50 MICH. L. REV. 967\n(1952) (criticizing the artificial product differentiation view).\n7\n\n8\n\nLandes & Posner, supra, at 276-77.\n\n26\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nof Information?, 63 AM. ECON. REV. PROC. 31, 38 (1973).9 Finally, consumers may greatly benefit even\nfrom supposedly \xe2\x80\x9cartificial\xe2\x80\x9d product differentiation and may enjoy\xe2\x80\x94and willingly pay for\xe2\x80\x94the\nconsumption of high-performance and high-status goods. See Jake Linford, Placebo Marks, 47 PEPP. L.\nREV. 45 (2020).\nDespite the current consensus in economic and legal thought that advertising serves important\ninformational functions in markets, criticisms of branding and advertising remain influential in\npopular thought. See, e.g., NAOMI KLEIN, NO LOGO: TAKING AIM AT BRAND BULLIES (2000); JULIET B. SCHOR,\nBORN TO BUY: THE COMMERCIALIZED CHILD AND THE NEW CONSUMER CULTURE (2005). For readers\nsympathetic to these criticisms, two questions arise with respect to trademarks and trademark law.\nFirst, is it fair to apply general criticisms of advertising to trademarks specifically? Though trademarks\nare usually central to most forms of advertising, aren\xe2\x80\x99t trademarks themselves mere informational\ndevices? Second, and related, how, if at all, can trademark law be modified to limit such alleged harms\nas artificial product differentiation or the \xe2\x80\x9cbamboozle[ing]\xe2\x80\x9d of the public? Stated differently, how can\ntrademark law continue to promote the ability of marks to inform consumers without also promoting\nthe ability of marks to persuade? How practically speaking can trademark law minimize persuasion but\nstill preserve information?10 Any serious criticism of the role that trademark law plays in perpetuating\nstatus consumption or introducing \xe2\x80\x9ceconomically irrational elements\xe2\x80\x9d into purchasing decisions\nshould be able to answer these questions. Perhaps limiting the scope of trademark rights or the kinds\nof commercial signifiers that can be protected as trademarks would lessen the persuasive impact of\nstrong brands. But it may be that minor modifications to trademark law will not help to ameliorate the\neffects of deeply-engrained consumption practices, and efforts to reform these practices will be more\neffective if undertaken elsewhere.11\nOpponents of overly expansive trademark rights (and defendants in trademark cases) may find\nmore traction by appealing to what is arguably the true overarching goal of trademark law, one which\nsubsumes the goals of lowering consumer search costs and incentivizing consistent levels of product\nquality. Trademark law\xe2\x80\x99s overarching goal is to foster competition, primarily by enabling the efficient\ncommunication of information in the marketplace. When trademark law overprotects, it impedes the\noptimal flow of information to consumers, tends to give undue market power to incumbents, and can\nsignificantly disrupt the efficient operation of the patent and copyright systems (a possibility which we\nwill address in a moment). The argument from competition speaks the language of mainstream\neconomics but often does so in favor of limiting rather than expanding trademark property rights.\nComments and Questions\n1. Trademark law and \xe2\x80\x9cproperty.\xe2\x80\x9d Critics of the expansion in the subject matter and scope of\ntrademark protection often accuse the law of having lost its purportedly traditional focus on consumer\nprotection and having instead embraced a property-rights rationale for trademark protection.\nElsewhere in the article excerpted above in Part A, McKenna directly challenges this view:\n\nSee also Mark Lemley, The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J.\n1687, 1690 (1999) (paraphrasing, though not necessarily endorsing, this theory as \xe2\x80\x9cIn effect, \xe2\x80\x98we\nadvertise, and therefore we must sell a good of sufficiently high quality that we can afford this highcost expenditure.\xe2\x80\x99\xe2\x80\x9d).\n9\n\n10\n\nSee Barton Beebe, Search and Persuasion in Trademark Law, 103 MICH. L. REV. 2020 (2005).\n\nFor the seminal discussion that anticipates nearly all of trademark commentary on these issues\nsince, see Ralph S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade Symbols, 57\nYALE L.J. 1165 (1948).\n11\n\n27\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n{T}rademark law was not traditionally intended to protect consumers. Instead,\ntrademark law, like all unfair competition law, sought to protect producers from\nillegitimate diversions of their trade by competitors. Courts did focus on consumer\ndeception in these cases, but only because deception distinguished actionable unfair\ncompetition from mere competition, which was encouraged. In fact, courts denied relief\nin many early trademark cases despite clear evidence that consumers were likely to be\nconfused by the defendant\xe2\x80\x99s use. Invariably they did so because the plaintiff could not\nshow that the defendant\xe2\x80\x99s actions were likely to divert customers who otherwise would\nhave gone to the plaintiff.\nMoreover, American courts protected producers from illegitimately diverted trade\nby recognizing property rights. This property-based system of trademark protection was\nlargely derived from the natural rights theory of property that predominately influenced\ncourts during the time American trademark law developed in the nineteenth century . . . .\nCritics cannot continue simply to claim that modern law is illegitimate because it\ndoes not seek to protect consumers. Because it never really did.\nMark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839, 1841,\n1916 (2007). For an alternative reading of the history of American trademark law, see Robert G. Bone,\nHunting Goodwill: A History of the Concept of Goodwill in Trademark Law, 86 B.U. L. REV. 547 (2006).\n2. Beware of the term \xe2\x80\x9cconsumer.\xe2\x80\x9d Trademark talk habitually uses the term \xe2\x80\x9cconsumer\xe2\x80\x9d and only\nthat term to describe members of the public. Dustin Marlan criticizes the term for \xe2\x80\x9c(1) its connotation\nof humans as reductive market-based objects; (2) its anti-ecological bent; and (3) its nonsensical\nnature.\xe2\x80\x9d Dustin Marlan, Is \xe2\x80\x9cConsumer\xe2\x80\x9d Biasing Trademark Law?, 8 TEXAS A&M L. REV. 367, 377 (2021).\nHe argues that \xe2\x80\x9cthe biasing effects of consumer may be contributing to trademark law defining the\npublic in a manner that is patronizing, biased, insulting, and indulgent of likelihood-of-confusion\nclaims\xe2\x80\x9d and advocates \xe2\x80\x9cone of two approaches: (1) take active steps to phase out use of consumer and\nreplace it with more respectful and appropriate terminology such as citizen; or (2) simply maintain the\nstatus quo in using consumer, but each time be conscious of the biasing effects that the consumer\nconstruct may have for the law and us as its subjects.\xe2\x80\x9d Id. at 373-74.\n3. Do trademarks indicate source or obscure it? It is routinely stated that trademarks\xe2\x80\x99 chief\nfunction is to indicate the source of the goods to which they are affixed. But depending on how one\ndefines \xe2\x80\x9csource,\xe2\x80\x9d many trademarks arguably function to disguise the true source of their goods. Does\nthe mark NIKE tell us anything more about where exactly our shoes were manufactured or who\nmanufactured them and under what working conditions than, say, the term \xe2\x80\x9cimported\xe2\x80\x9d? When in 2001\nJonah Peretti, then a graduate student at MIT, sought to use Nike\xe2\x80\x99s own shoe customization program to\ncall attention to the manufacturing conditions for Nike\xe2\x80\x99s shoes, Nike refused to print on the shoes he\nhad ordered from them the word he specified: \xe2\x80\x9csweatshop.\xe2\x80\x9d Peretti\xe2\x80\x99s email exchange with Nike went\nviral and damaged Nike\xe2\x80\x99s brand image. See Kathleen Elkins, How a Fight With Nike Led Buzzfeed\xe2\x80\x99s Jonah\nPeretti\nto\nCreate\na\nBillion-Dollar\nMedia\nEmpire,\nCNBC.com,\nAug.\n3,\n2017,\nhttps://www.cnbc.com/2017/08/02/how-jonah-peretti-created-buzzfeed-a-billion-dollar-mediaempire.html. (Peretti went on to cofound Huffington Post and then found BuzzFeed.com.)\nC.\n\nTrademark Law Within the Larger Scheme of Intellectual Property Law\n\nAs the excerpt above from the Trade-Mark Cases suggests, when seen from the perspective of\ntrademark law, copyright law and patent law can appear to be closely similar to each other and quite\ndifferent from trademark law\xe2\x80\x94so much so that it is not unreasonable to ask why trademark is\ngrouped with patent and copyright under the rubric of \xe2\x80\x9cintellectual property law\xe2\x80\x9d rather than\nseparated out as some hybrid of competition law and intellectual property law. As the table at the\nconclusion of this section summarizes, both copyright and patent are based on the Intellectual\nProperty Clause of the Constitution, which empowers Congress \xe2\x80\x9c{t}o promote the Progress of Science\n28\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nand useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their\nrespective Writings and Discoveries.\xe2\x80\x9d U.S. Const. art. I, \xc2\xa7 8, cl. 8. The Constitution thus requires\ncopyright and patent to promote innovation, human creativity, or more generally, human \xe2\x80\x9cProgress,\xe2\x80\x9d\nwith patent focusing primarily on incentivizing the invention of new technologies, such as new\npharmaceuticals, better machines, or more efficient methods of manufacture, and copyright focusing\non incentivizing the production of \xe2\x80\x9cworks of authorship,\xe2\x80\x9d such as novels, music, and motion pictures\n(and this textbook).\nInventions and works of authorship share important characteristics (akin to \xe2\x80\x9cpublic goods\xe2\x80\x9d)12\nthat make intellectual property protections useful. Both tend to be expensive to develop, but once\ndeveloped, they are relatively inexpensive to reproduce in copies. It can cost $1 billion to develop a\nsuccessful pharmaceutical and bring it to market and potentially only a few dollars or less per copy to\nmanufacture it. The consumption of inventions and works of authorship also tends to be \xe2\x80\x9cnonrivalrous.\xe2\x80\x9d A potentially unlimited number of people can benefit equally from the same idea or listen\neach to his or her own copy of the same recording of the same musical work. Finally, without recourse\nto prohibitions established by law, it is often exceedingly difficult to exclude people from and thus\ncharge a price for the benefit of an invention or work of authorship. This condition has only intensified\nwith improvements in reproduction and distribution technologies, whether they take the form of ever\nmore flexible assembly lines, automated manufacture, 3D printing, or the reproduction of digital files\non a home computer or the internet.\nTo address these problems, patent law and copyright law provide limited terms of protection to\nqualifying works, with patent\xe2\x80\x99s term significantly shorter in duration than copyright\xe2\x80\x99s. In essence, the\npublic makes a bargain with inventors and authors. To incentivize them, we give them exclusive rights\nin their innovations so that they can recoup the costs of and perhaps profit from their innovating\nactivity, but in exchange, we eventually claim their innovations for the public domain, where these\ninnovations become free for all, including subsequent inventors and authors, to use.\nIn contrast to copyright and patent law, trademark law is based not on the Intellectual Property\nClause, but the Commerce Clause. Its goal is not to promote the progress of \xe2\x80\x9cScience and useful Arts\xe2\x80\x9d\nbut rather to promote fair and efficient competition. Its term of protection is unlimited in time\nprovided that the trademark owner continues to use the trademark in commerce. And the utilization of\nSee Wendy J. Gordon, Fair Use As Market Failure: A Structural and Economic Analysis of the\nBetamax Case and Its Predecessors, 82 COLUM. L. REV. 1600 (1982). Gordon describes \xe2\x80\x9cpublic goods\xe2\x80\x9d as\nfollows:\n12\n\nA public good is often described as having two defining traits. First, it is virtually\ninexhaustible once produced, in the sense that supplying additional access to new users\nwould not deplete the supply available to others. Second, and more important for the\ninstant purposes, persons who have not paid for access cannot readily be prevented from\nusing a public good. Because it is difficult or expensive to prevent \xe2\x80\x9cfree riders\xe2\x80\x9d from using\nsuch goods, public goods usually will be under-produced if left to the private market. A\nfamiliar example of a public good is national defense. Since it is not possible to use a\nradar early-warning network in a way that discriminates between one person who has\npaid for defense and his neighbor who has not, a less than optimal amount of national\ndefense will be produced if its purchase is left to the usual consensual market\nmechanisms of voluntary purchase. Some sort of compulsory payment, such as taxation,\nand central decision-making may be necessary to eliminate free riders and obtain the\nsocially desirable amount of defense.\nId. at 1610-11 (footnotes omitted).\n\n29\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ntrademarks is arguably rivalrous. If two firms share the same trademark for the same type of product\nin the same marketplace, the utility of both trademarks will be severely diminished.\nFor all of the differences among copyright, patent, and trademark law, note that these separate\nregimes of intellectual property law can simultaneously protect the same thing. For example, a logo\nmight qualify for both copyright and trademark protection. A particular product feature, such as the\nshape of a mobile phone, might qualify for trademark protection and design patent protection. A\nparticular furniture design might qualify for trademark protection, design patent protection, and\ncopyright protection as well.\nThese overlapping regimes of exclusive rights can create significant problems in intellectual\nproperty law, some of which we will engage later in this casebook. For example, what should happen\nwhen the term of copyright protection in a particular work of authorship expires, but that expression\nalso functions as a trademark? Should trademark law allow the Walt Disney Company to continue to\nassert exclusive rights in images of Mickey Mouse after its copyright in those images has expired?\nMore significantly, should companies be able to assert trademark rights in product features that also\nqualify for utility patent protection, or at least that perform some mechanical function in addition to\nserving as designations of source?\nComments and Questions\n1. Do We Want to Incentivize More Trademarks? We generally seek through patent and copyright\nlaw to incentivize the production of more patentable inventions and more copyrightable works of\nauthorship. Should we similarly design trademark law to incentivize the production of more\ntrademarks? Is there anything intrinsically valuable about trademarks? Do more trademarks indicate\nor themselves constitute \xe2\x80\x9cProgress\xe2\x80\x9d? Could there be situations (or market sectors) in which there are\ntoo many trademarks?\n\n30\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nTrademark\nLaw\n\nCopyright Law\n\nUtility Patent\nLaw\n\nDesign Patent\nLaw\n\nProtectable\nSubject Matter\n\nDesignations of\ncommercial\nsource,\nincluding\nbrand names,\nlogos, product\npackaging, and\nproduct\nconfigurations\n\nWorks of\nauthorship,\nincluding\nliterary,\nmusical,\nsculptural,\ngraphic, and\narchitectural\nworks, motion\npictures,\ncomputer\nsoftware, and\nsound\nrecordings\n\nInventions,\nincluding\nprocesses,\nmachines,\nmanufactured\narticles, and\ncompositions\nof matter\n\nOrnamental\ndesigns for\narticles of\nmanufacture\n\nConstitutional\nBasis\n\nCommerce\nClause\n\nIntellectual\nProperty\nClause\n\nIntellectual\nProperty\nClause\n\nIntellectual\nProperty\nClause\n\nStatutory\nBasis\n\nLanham Act, 15\nU.S.C. \xc2\xa7 1051 et\nseq.\n\nCopyright Act,\n17 U.S.C. \xc2\xa7 101\net seq.\n\nPatent Act, 35\nU.S.C. \xc2\xa7 101 et\nseq.\n\nPatent Act, 35\nU.S.C. \xc2\xa7 101 et\nseq.\n\nBasic\nRequirements\nfor Protection\n\nDistinctive of\nsource; used in\ncommerce; not\nfunctional\n\nFixed in a\ntangible\nmedium of\nexpression;\noriginality\n\nNovel, nonobvious, and\nuseful\n\nOrnamental,\nnovel, and nonobvious\n\nTerm of\nProtection\n\nRegistration\nlasts 10 years;\nperpetually\nrenewable as\nlong as the\nmark is\ndistinctive and\nused in\ncommerce\n\nLife of the\nauthor plus 70\nyears; for\nworks for hire,\n95 years from\ndate of\npublication\n\n20 years from\nfiling date of\npatent\napplication\n\n15 years from\ngrant of patent\n\nHow Rights\nAre Acquired\n\n\xe2\x80\x9cCommon law\xe2\x80\x9d\nrights through\nuse in\ncommerce;\nregistered\nrights through\nregistration at\nPTO\n\nThrough\nfixation;\nregistration not\nrequired\n\nPatent\napplication at\nPTO\n\nPatent\napplication at\nPTO\n\n31\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nI.\n\nEstablishing Trademark Rights\n\nIn order to qualify for trademark protection under U.S. federal law, a trademark must meet three\nbasic requirements: (1) the trademark must be \xe2\x80\x9cdistinctive\xe2\x80\x9d of the source of the goods or services to\nwhich it is affixed, (2) the trademark must not be disqualified from protection by various statutory\nbars to protection, the most significant of which is that the trademark not be \xe2\x80\x9cfunctional,\xe2\x80\x9d and (3) the\ntrademark must be used in commerce.\nNote what is missing from this list of basic requirements for trademark protection. First, in order\nto qualify for protection under the Lanham Act, a trademark does not need to be registered at the PTO\n(though, as we will discuss in Part I.D, there are significant benefits to registration). Lanham Act \xc2\xa7 32,\n15 U.S.C. \xc2\xa7 1114, protects registered marks from unauthorized uses that are likely to cause consumer\nconfusion as to the true source of the unauthorized user\xe2\x80\x99s goods. Lanham Act \xc2\xa7 43(a), 15 U.S.C.\n\xc2\xa7 1125(a), does the same for unregistered marks. (And Section 43(c), 15 U.S.C. \xc2\xa7 1125(c), protects both\nregistered and unregistered marks from trademark dilution). As a matter of tradition, trademark\nlawyers sometimes refer to unregistered mark protection under \xc2\xa7 43(a) as \xe2\x80\x9ccommon law\xe2\x80\x9d protection\nof trademarks even though this protection is based on statutory federal law.\nSecond, a protectable trademark need not manifest itself in any particular form.1 Consider the\nextraordinary variety of forms that trademarks (here, all registered) may take:\n\xe2\x80\xa2\n\nWords: APPLE for computers (U.S. Reg. No. 1,078,312, Nov. 29, 1977); AMAZON for online retailing\nservices (U.S. Reg. No. 2,832,943, April 13, 2004); NIKE for athletic shoes (U.S. Reg. No. 978,952,\nFeb. 19, 1974).\n\n\xe2\x80\xa2\n\nPhrases: JUST DO IT for clothing (U.S. Reg. No. 1,875,307, Jan. 24, 1995).\n\n\xe2\x80\xa2\n\nTwo-dimensional still images: a \xe2\x80\x9c\xe2\x80\x98wing\xe2\x80\x99 design\xe2\x80\x9d for sports bags (U.S.\nReg. No. 1145473, Jan. 6, 1981)\n\n\xe2\x80\xa2\n\nTwo-dimensional moving images: for online entertainment services, \xe2\x80\x9c[t]he mark consists of a\nmoving image of a flash of light from which rays of light are emitted against a background of sky\nand clouds. The scene then pans downward to a torch being held by a lady on a pedestal. The word\n"COLUMBIA" appears across the top running through the torch and then a circular rainbow\nappears in the sky encircling the lady.\xe2\x80\x9d (U.S. Reg. No. 1,975,999, May 28, 1996).\n\n\xe2\x80\xa2\n\nColors: the color canary yellow for adhesive stationary notes (U.S. Reg. No. 2,390,667, Oct. 3,\n2000); the color brown for parcel delivery services (U.S. Reg. No. 2,131,693, Jan. 27, 1988).\n\nSee Jerome Gilson & Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks, and Cherry-Scented\nRacecar Exhaust: Protecting Nontraditional Trademarks, 95 TRADEMARK REP. 773 (2005).\n1\n\n32\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n\xe2\x80\xa2\n\nColors as used on apparel: for promotional services relating to sports events, where \xe2\x80\x9c[t]he mark\nconsists of the colors green and gold where the color green is applied to the jacket and the color\ngold is applied to the three waist buttons and the two sleeve buttons on each arm of the jacket.\xe2\x80\x9d\n(U.S. Reg. No. 6,000,045, March 3, 2020).\n\n\xe2\x80\xa2\n\nSounds: Tarzan\xe2\x80\x99s yell for toy action figures (U.S. Reg. No. 2,210,506, Dec. 15, 1998); for canned and\nfrozen vegetables where the mark consists of \xe2\x80\x9cthe sound of a deep, male, human-like voice saying\n\xe2\x80\x98Ho-Ho-Ho\xe2\x80\x99 in even intervals with each \xe2\x80\x98Ho\xe2\x80\x99 dropping in pitch\xe2\x80\x9d (U.S. Reg. No. 2,519,203, Dec. 18,\n2001).\n\n\xe2\x80\xa2\n\nScents: for toy modeling compounds, where \xe2\x80\x9c[t]he mark is a scent of a sweet, slightly musky,\nvanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based\ndough\xe2\x80\x9d (U.S. Reg. No. 5,467,089, May 15, 2018).\n\n33\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\xa2\n\nTextures: for wines where \xe2\x80\x9c[t]he mark consists of a velvet textured covering on the surface of a\nbottle of wine\xe2\x80\x9d (U.S. Reg. No. 3,155,702, Oct. 17, 2006).2\n\n\xe2\x80\xa2\n\nMotions: for automobiles where \xe2\x80\x9c[t]he mark consists of the unique motion in which the door of a\nvehicle is opened. The doors move parallel to the body of the vehicle but are gradually raised\nabove the vehicle to a parallel position.\xe2\x80\x9d (U.S. Reg. No. 2,793,439, Dec. 16, 2003).\n\n\xe2\x80\xa2\n\nBuildings exteriors: the design of a building for restaurant services (U.S. Reg. No. 1,045,615, Aug. 3,\n1976).\n\n\xe2\x80\xa2\n\nBuilding interiors: for retail consumer electronics services, \xe2\x80\x9cthe mark consists of the design and\nlayout of a retail store. The store features a clear glass storefront surrounded by a paneled facade\nconsisting of large, rectangular horizontal panels over the top of the glass front, and two narrower\npanels stacked on either side of the storefront. Within the store, rectangular recessed lighting units\ntraverse the length of the store\xe2\x80\x99s ceiling. There are cantilevered shelves below recessed display\nspaces along the side walls, and rectangular tables arranged in a line in the middle of the store\nparallel to the walls and extending from the storefront to the back of the store. There is multitiered shelving along the side walls, and a oblong table with stools located at the back of the store,\nset below video screens flush mounted on the back wall. The walls, floors, lighting, and other\nfixtures appear in dotted lines and are not claimed as individual features of the mark; however, the\nplacement of the various items are considered to be part of the overall mark.\xe2\x80\x9d (U.S. Reg. No.\n4,277,914, Jan. 22, 2013).\n\n\xe2\x80\xa2\n\nProduct shapes: for mobile phones, where \xe2\x80\x9cthe mark consists of the configuration of a rectangular\nhandheld mobile digital electronic device with rounded corners\xe2\x80\x9d (U.S. Reg. No. 3,457,218, July 1,\n2008); for uncooked hamburger patties, where \xe2\x80\x9cthe mark consists of the configuration of a\nhamburger patty\xe2\x80\x9d (U.S. Reg. No. 5,742,743, May 7, 2019)\n\nSee Christina S. Monteiro, A Nontraditional Per-Spectrum: The Touch of Trademarks, INTA BULL.,\nJune 15, 2010, at 4.\n2\n\n34\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n\xe2\x80\xa2\n\nProduct packaging: for soft drinks, \xe2\x80\x9c[t]he mark consists of a three dimensional configuration of a\nversion of the Coca Cola Contour Bottle, rendered as a two-liter bottle, having a distinctive curved\nshape with an inward curve or pinch in the bottom portion of the bottle and vertical flutes above\nand below a central flat panel portion.\xe2\x80\x9d (U.S. Reg. No. 4,242,307, Nov. 13, 2012).\n\nThe reader may be surprised to see that trademark rights can cover such a wide array of subject\nmatter. This Part covers how these various marks have managed to qualify for trademark protection\nand why various other marks have failed to qualify. Section I.A devotes a great deal of attention to\nwhat is by far the most important requirement for trademark protection: that the trademark be\n\xe2\x80\x9cdistinctive.\xe2\x80\x9d Section I.B then turns to the various statutory bars to protection, including the\nfunctionality bar, which disqualify marks from protection under the Lanham Act. Section I.C seeks to\nmake sense of the \xe2\x80\x9cuse in commerce\xe2\x80\x9d requirement for trademark protection. Section I.D reviews why it\nis worthwhile to register a mark at the PTO and how the registration process works. Section I.E\naddresses the geographic scope of the protection of registered and unregistered marks.\nA.\n\nTrademark Distinctiveness\n\nLanham Act \xc2\xa7 45; 15 U.S.C. \xc2\xa7 1127\nThe term \xe2\x80\x9ctrademark\xe2\x80\x9d includes any word, name, symbol, or device, or any combination\nthereof . . . used by a person . . . to identify and distinguish his or her goods, including a\nunique product, from those manufactured or sold by others and to indicate the source of\nthe goods, even if that source is unknown.\nThe \xc2\xa7 45 definition of the term \xe2\x80\x9ctrademark\xe2\x80\x9d emphasizes that a protectable trademark must be\ndistinctive of source \xe2\x80\x94 it must \xe2\x80\x9cidentify and distinguish . . . goods . . . and . . . indicate the source of the\ngoods.\xe2\x80\x9d Note that in order to qualify for protection, a trademark need not indicate the precise\nmanufacturing source of the goods. For example, the trademark TIDE for laundry detergent need not\nindicate in exactly which factory the particular bottle of laundry detergent was made or that Proctor &\nGamble ultimately owns the TIDE brand. Instead, consumers need only know that all products bearing\nthe same trademark originate in or are sponsored by a single, albeit \xe2\x80\x9cunknown\xe2\x80\x9d or \xe2\x80\x9canonymous,\xe2\x80\x9d\nsource.3 This is sometimes known as the \xe2\x80\x9canonymous source\xe2\x80\x9d theory of trademark protection.\n\n3 See McCarthy \xc2\xa7 3.9 (\xe2\x80\x9c[T]he \xe2\x80\x9csource\xe2\x80\x9d identified by a trademark need not be known by name to the\nbuyer. It may be anonymous in the sense that the buyer does not know, or care about, the name of the\ncorporation that made the product or the name of the corporation which distributes it. But the buyer is\n\n35\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nA trademark will qualify as distinctive if either (1) it is \xe2\x80\x9cinherently distinctive\xe2\x80\x9d of source or (2) it\nhas developed \xe2\x80\x9cacquired distinctiveness\xe2\x80\x9d of source. A mark is inherently distinctive if \xe2\x80\x9cits intrinsic\nnature serves to identify a particular source.\xe2\x80\x9d Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205\n210 (2000) (alterations omitted). The underlying assumption is that as a matter of consumer literacy,\nconsumers will almost instantly recognize that an inherently distinctive mark is a designation of\nsource, even when they encounter the mark for the first time. After all, how else would a modern\nconsumer make sense of the word \xe2\x80\x9capple\xe2\x80\x9d as used in the sale of electronics that have nothing to do\nwith apples? Inherently distinctive marks \xe2\x80\x9calmost automatically tell a customer that they refer to a\nbrand,\xe2\x80\x9d Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 162-63 (1995) (emphasis in original),\nand \xe2\x80\x9cimmediately . . . signal a brand or a product \xe2\x80\x98source.\xe2\x80\x99\xe2\x80\x9d Id. at 163.\nMarks that lack inherent distinctiveness may nevertheless qualify as distinctive if they have\ndeveloped \xe2\x80\x9cacquired distinctiveness,\xe2\x80\x9d otherwise known as \xe2\x80\x9csecondary meaning,\xe2\x80\x9d through advertising\nor use in the marketplace. Over time, consumers may come to identify what might have seemed merely\na description of the good or service (e.g., \xe2\x80\x9cAmerican Airlines\xe2\x80\x9d) or merely a decoration on a product\n(e.g., three stripes on the side of an athletic shoe) as a designation of the source of that product. Indeed,\nconsumers may come to identify the configuration of the product itself as a signifier of its source.\nHere in Section I.A, we will spend considerable time reviewing how courts determine if a\ncommercial sign qualifies as inherently distinctive or as possessing acquired distinctiveness. Before\nproceeding, two things should be kept in mind. First, some of the opinions below address the\nregistrability of the marks at issue at the PTO while other opinions address the protectability under\n\xc2\xa7 43(a) of marks that have never been registered. Recall that registration is not a prerequisite for\ntrademark protection under the Lanham Act. Many significant trademark cases over past decades have\ninvolved unregistered marks. The important point for our purposes in this subsection is that the basic\ndoctrine relating to the registrability of a mark is essentially the same as the doctrine relating to\nwhether it may be protected regardless of its registration status. We may use opinions from either\ncontext to understand the distinctiveness requirement in trademark law.\nSecond, this subsection will first consider distinctiveness doctrine as it relates to verbal marks,\nand will then proceed to the more difficult area of distinctiveness doctrine that covers non-verbal\nmarks, such as logos, colors, product packaging, and product configuration (i.e., the shape of the\nproduct itself).\n1.\n\nInherent Distinctiveness of Source and Acquired Distinctiveness of Source\na.\n\nInherent Distinctiveness of Source\ni.\n\nThe Abercrombie Spectrum\n\nThe excerpt below, from Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976),\nanalyzes some of the most fundamental terms and concepts in trademark law. Though Abercrombie is\nnow a relatively old opinion, its influence on U.S. and even foreign trademark law cannot be overstated.\nIt is the origin of the \xe2\x80\x9cAbercrombie spectrum\xe2\x80\x9d of trademark distinctiveness, a classification scheme that\nis used in a wide variety of areas of trademark doctrine.\nThe essential facts underlying the opinion are as follows. Plaintiff Abercrombie & Fitch Company\n(\xe2\x80\x9cA&F\xe2\x80\x9d) operated various sporting goods stores in New York City and elsewhere. It had multiple PTO\nregistrations for its trademark SAFARI. Among these was a registration for SAFARI for cotton clothing, a\nregistration for SAFARI for hats, and a registration for SAFARI for shoes. Defendant Hunting World,\n\nentitled to assume that all products carrying the same trademark are somehow linked with or\nsponsored by that single, anonymous source.\xe2\x80\x9d).\n\n36\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nIncorporated (\xe2\x80\x9cHW\xe2\x80\x9d) began to sell at its New York City store sporting apparel, including hats and\nshoes, bearing the terms \xe2\x80\x9cSafari,\xe2\x80\x9d \xe2\x80\x9cMinisafari,\xe2\x80\x9d and \xe2\x80\x9cSafariland.\xe2\x80\x9d A&F sued on the ground that HW\xe2\x80\x99s\nconduct would confuse consumers as to the true source of HW\xe2\x80\x99s goods. At the core of the case was the\nquestion of whether A&F\xe2\x80\x99s SAFARI trademark lacked distinctiveness of source on certain of A&F\xe2\x80\x99s goods.\nAs you read the excerpt, consider the following questions:\n\xe2\x80\xa2\n\nTo the extent that a mark\xe2\x80\x99s categorization somewhere along the Abercrombie spectrum bears\ndirectly on whether the mark will qualify for trademark protection, which borders between\ncategories do you suspect are especially disputed?\n\n\xe2\x80\xa2\n\nWhere would you classify the trademark \xe2\x80\x9csafari\xe2\x80\x9d for clothing? for boots? for hats?\n\nAbercrombie & Fitch Co. v. Hunting World, Inc.\n537 F.2d 4, 9-11 (2d Cir. 1976)\nFRIENDLY, Circuit Judge:\n....\n[1] It will be useful at the outset to restate some basic principles of trademark law, which,\nalthough they should be familiar, tend to become lost in a welter of adjectives.\n[2] The cases, and in some instances the Lanham Act, identify four different categories of terms\nwith respect to trademark protection. Arrayed in an ascending order which roughly reflects their\neligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2)\ndescriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not\nalways bright. Moreover, the difficulties are compounded because a term that is in one category for a\nparticular product may be in quite a different one for another,6 because a term may shift from one\ncategory to another in light of differences in usage through time,7 because a term may have one\nmeaning to one group of users and a different one to others, and because the same term may be put to\ndifferent uses with respect to a single product.\n[3] A generic term is one that refers, or has come to be understood as referring, to the genus of\nwhich the particular product is a species. At common law neither those terms which were generic nor\n\nTo take a familiar example \xe2\x80\x9cIvory\xe2\x80\x9d would be generic when used to describe a product made from\nthe tusks of elephants but arbitrary as applied to soap.\n6\n\nSee, e.g., Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (1950), in which the coined word\n\xe2\x80\x98Escalator\xe2\x80\x99, originally fanciful, or at the very least suggestive, was held to have become generic.\n7\n\n37\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthose which were merely descriptive could become valid trademarks, see Delaware & Hudson Canal\nCo. v. Clark, 80 U.S. (13 Wall.) 311, 323, 20 L.Ed. 581 (1872) (\xe2\x80\x9cNor can a generic name, or a name\nmerely descriptive of an article or its qualities, ingredients, or characteristics, be employed as a\ntrademark and the exclusive use of it be entitled to legal protection\xe2\x80\x9d). . . . While, as we shall see, the\nLanham Act makes an important exception with respect to those merely descriptive terms which have\nacquired secondary meaning, see \xc2\xa7 2(f), 15 U.S.C. \xc2\xa7 1052(f), it offers no such exception for generic\nmarks. The Act provides for the cancellation of a registered mark if at any time it \xe2\x80\x9cbecomes the\ncommon descriptive name of an article or substance,\xe2\x80\x9d \xc2\xa7 14(c). This means that even proof of secondary\nmeaning, by virtue of which some \xe2\x80\x9cmerely descriptive\xe2\x80\x9d marks may be registered, cannot transform a\ngeneric term into a subject for trademark. As explained in J. Kohnstam, Ltd. v. Louis Marx and\nCompany, 280 F.2d 437, 440, 47 CCPA 1080 (1960), no matter how much money and effort the user of\na generic term has poured into promoting the sale of its merchandise and what success it has achieved\nin securing public identification, it cannot deprive competing manufacturers of the product of the right\nto call an article by its name. We have recently had occasion to apply this doctrine of the impossibility\nof achieving trademark protection for a generic term, CES Publishing Corp. v. St. Regis Publications,\nInc., 531 F.2d 11 (1975). The pervasiveness of the principle is illustrated by a series of well known\ncases holding that when a suggestive or fanciful term has become generic as a result of a\nmanufacturer\xe2\x80\x99s own advertising efforts, trademark protection will be denied save for those markets\nwhere the term still has not become generic and a secondary meaning has been shown to\ncontinue. Bayer Co. v. United Drug Co., 272 F. 505 (2d Cir. 1921) (L. Hand, D. J. ) {finding \xe2\x80\x9caspirin\xe2\x80\x9d\ngeneric}; DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir.) (A. N. Hand, C. J. ), cert.\ndenied, 299 U.S. 601 (1936) {finding \xe2\x80\x9ccellophane\xe2\x80\x9d generic}; King-Seeley Thermos Co. v. Aladdin\nIndustries, Inc., 321 F.2d 577 (2d Cir. 1963) {finding \xe2\x80\x9cthermos\xe2\x80\x9d generic}. A term may thus be generic in\none market and descriptive or suggestive or fanciful in another.\n[4] The term which is descriptive but not generic11 stands on a better basis. Although \xc2\xa7 2(e) of the\nLanham Act, 15 U.S.C. \xc2\xa7 1052, forbids the registration of a mark which, when applied to the goods of\nthe applicant, is \xe2\x80\x9cmerely descriptive,\xe2\x80\x9d \xc2\xa7 2(f) removes a considerable part of the sting by providing that\n\xe2\x80\x9cexcept as expressly excluded in paragraphs (a)-(d) of this section, nothing in this chapter shall\nprevent the registration of a mark used by the applicant which has become distinctive of the\napplicant\xe2\x80\x99s goods in commerce\xe2\x80\x9d and that the Commissioner may accept, as prima facie evidence that\nthe mark has become distinctive, proof of substantially exclusive and continuous use of the mark\napplied to the applicant\xe2\x80\x99s goods for five years preceding the application. As indicated in the cases cited\nin the discussion of the unregistrability of generic terms, \xe2\x80\x9ccommon descriptive name,\xe2\x80\x9d as used in\n\xc2\xa7\xc2\xa7 14(c) and 15(4), refers to generic terms applied to products and not to terms that are \xe2\x80\x9cmerely\ndescriptive.\xe2\x80\x9d In the former case any claim to an exclusive right must be denied since this in effect\nwould confer a monopoly not only of the mark but of the product by rendering a competitor unable\neffectively to name what it was endeavoring to sell. In the latter case the law strikes the balance, with\nSee, e. g., W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir. 1970). A Commentator has\nilluminated the distinction with an example of the \xe2\x80\x9cDeep Bowl Spoon\xe2\x80\x9d:\n11\n\n\xe2\x80\x9cDeep Bowl\xe2\x80\x9d identifies a significant characteristic of the article. It is \xe2\x80\x9cmerely descriptive\xe2\x80\x9d\nof the goods, because it informs one that they are deep in the bowl portion . . . . It is not,\nhowever, \xe2\x80\x9cthe common descriptive name\xe2\x80\x9d of the article (since) the implement is not a\ndeep bowl, it is a spoon . . . . \xe2\x80\x9cSpoon\xe2\x80\x9d is not merely descriptive of the article it identifies\nthe article (and therefore) the term is generic.\nFletcher, Actual Confusion as to Incontestability of Descriptive Marks, 64 Trademark Rep. 252, 260\n(1974). On the other hand, \xe2\x80\x9cDeep Bowl\xe2\x80\x9d would be generic as to a deep bowl.\n38\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nrespect to registration, between the hardships to a competitor in hampering the use of an appropriate\nword and those to the owner who, having invested money and energy to endow a word with the good\nwill adhering to his enterprise, would be deprived of the fruits of his efforts.\n[5] The category of \xe2\x80\x9csuggestive\xe2\x80\x9d marks was spawned by the felt need to accord protection to\nmarks that were neither exactly descriptive on the one hand nor truly fanciful on the other, a need that\nwas particularly acute because of the bar in the Trademark Act of 1905, 33 Stat. 724, 726, (with an\nexceedingly limited exception noted above) on the registration of merely descriptive marks regardless\nof proof of secondary meaning. See Orange Crush Co. v. California Crushed Fruit Co., 54 U.S.App.D.C.\n313, 297 F. 892 (1924). Having created the category the courts have had great difficulty in defining it.\nJudge Learned Hand made the not very helpful statement:\nIt is quite impossible to get any rule out of the cases beyond this: That the validity of the\nmark ends where suggestion ends and description begins.\nFranklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247, 248 (S.D.N.Y.1923), aff\xe2\x80\x99d per\ncuriam, 4 F.2d 1018 (2d Cir. 1925), a statement amply confirmed by comparing the list of terms held\nsuggestive with those held merely descriptive in 3 Callmann, Unfair Competition, Trademarks and\nMonopolies s 71.2 (3d ed.). Another court has observed, somewhat more usefully, that:\nA term is suggestive if it requires imagination, thought and perception to reach a\nconclusion as to the nature of goods. A term is descriptive if it forthwith conveys an\nimmediate idea of the ingredients, qualities or characteristics of the goods.\nStix Products, Inc. v. United Merchants & Manufacturers Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968). Also\nuseful is the approach taken by this court in Aluminum Fabricating Co. of Pittsburgh v. Season-All\nWindow Corp., 259 F.2d 314 (2d Cir. 1958), that the reason for restricting the protection accorded\ndescriptive terms, namely the undesirability of preventing an entrant from using a descriptive term for\nhis product, is much less forceful when the trademark is a suggestive word since, as Judge Lumbard\nwrote, 259 F.2d at 317:\nThe English language has a wealth of synonyms and related words with which to describe\nthe qualities which manufacturers may wish to claim for their products and the ingenuity\nof the public relations profession supplies new words and slogans as they are needed.\nIf a term is suggestive, it is entitled to registration without proof of secondary meaning. Moreover, as\nheld in the Season-All case, the decision of the Patent Office to register a mark without requiring proof\nof secondary meaning affords a rebuttable presumption that the mark is suggestive or arbitrary or\nfanciful rather than merely descriptive.\n[6] It need hardly be added that fanciful or arbitrary terms12 enjoy all the rights accorded to\nsuggestive terms as marks without the need of debating whether the term is \xe2\x80\x9cmerely descriptive\xe2\x80\x9d and\nwith ease of establishing infringement.\nIn the light of these principles we must proceed to a decision of this case.\n\nAs terms of art, the distinctions between suggestive terms and fanciful or arbitrary terms may\nseem needlessly artificial. Of course, a common word may be used in a fanciful sense; indeed one might\nsay that only a common word can be so used, since a coined word cannot first be put to a bizarre use.\nNevertheless, the term \xe2\x80\x9cfanciful\xe2\x80\x9d, as a classifying concept, is usually applied to words invented solely\nfor their use as trademarks. When the same legal consequences attach to a common word, i. e., when it\nis applied in an unfamiliar way, the use is called \xe2\x80\x9carbitrary.\xe2\x80\x9d\n12\n\n39\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nComments and Questions\n1. Is \xe2\x80\x9csafari\xe2\x80\x9d generic as to clothing, hats, and boots? Judge Friendly found that safari was a\ngeneric term when used in connection with certain items of clothing and hats. Here is part of his\nreasoning:\nIt is common ground that A&F could not apply \xe2\x80\x98Safari\xe2\x80\x99 as a trademark for an expedition\ninto the African wilderness. This would be a clear example of the use of \xe2\x80\x98Safari\xe2\x80\x99 as a\ngeneric term. What is perhaps less obvious is that a word may have more than one\ngeneric use. The word \xe2\x80\x98Safari\xe2\x80\x99 has become part of a family of generic terms which,\nalthough deriving no doubt from the original use of the word and reminiscent of its\nmilieu, have come to be understood not as having to do with hunting in Africa, but as\nterms within the language referring to contemporary American fashion apparel. These\nterms name the components of the safari outfit well-known to the clothing industry and\nits customers: the \xe2\x80\x98Safari hat\xe2\x80\x99, a broad flat-brimmed hat with a single, large band; the\n\xe2\x80\x98Safari jacket\xe2\x80\x99, a belted bush jacket with patch pockets and a buttoned shoulder loop;\nwhen the jacket is accompanied by pants, the combination is called the \xe2\x80\x98Safari suit\xe2\x80\x99.\nAbercrombie, 537 F.2d at 11-12. Judge Friendly determined that the term \xe2\x80\x9csafari\xe2\x80\x9d was not generic,\nhowever, when used in connection with boots; it was either suggestive or merely descriptive, and\nbecause the registration of SAFARI for boots had become \xe2\x80\x9cincontestable\xe2\x80\x9d (a concept we will discuss\nbelow), the mark was found in either case to be protected. Id. at 12. Nevertheless, HW was deemed to\nbe making a \xe2\x80\x9cfair use\xe2\x80\x9d (another concept we will address below) of the term safari in connection with its\nboots and was thus found not to be infringing. Id. at 12-13.\nWe will devote much more attention to the question of genericism in Part I.A.1.c below.\n2. What Abercrombie borderlines are the most disputed? Under the Abercrombie spectrum,\nsuggestive, arbitrary, and fanciful marks qualify as inherently distinctive and may be protected without\na showing that the mark has developed secondary meaning as a designation of source. Descriptive\nmarks do not qualify as inherently distinctive and require a showing of secondary meaning to be\nprotected. Generic marks may not be protected regardless of any showing of secondary meaning. Thus,\nthere are two significantly disputed borders in the Abercrombie spectrum, the border between generic\nand descriptive marks (addressed in Part I.A.1.c) and the border between descriptive and suggestive\nmarks (addressed in the next subsection).\nIn practice, it rarely makes much difference whether the inherently distinctive mark is deemed\nsuggestive, arbitrary, or fanciful. In the context of the likelihood of confusion analysis (discussed in\nPart II), many courts recite the rule that fanciful marks should receive a greater scope of protection\nthan arbitrary marks, and arbitrary marks a greater scope of protection than suggestive marks, but it is\nnot clear that these distinctions have had any effect on litigation outcomes. Indeed, courts not\nuncommonly group arbitrary and fanciful marks into the same category, as Abercrombie itself does.\n3. Coined terms that are not fanciful, but rather suggestive. Not all coined terms qualify as\nfanciful. In Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625 (9th Cir. 2005), the court\nanalyzed the Abercrombie classification of the trademark SURFVIVOR for beach-themed products:\nBecause \xe2\x80\x9cSurfvivor\xe2\x80\x9d is a coined term, [plaintiff] Deptula contends that it should be treated\nas a fanciful mark. However, the mere fact that a mark consists of a coined term does not\nautomatically render that mark fanciful. See Interstellar Starship Servs. Ltd. v. Epix, Inc.,\n184 F.3d 1107, 1111 (9th Cir. 1999) (determining that the coined phrase \xe2\x80\x9cEPIX\xe2\x80\x9d for\nelectronic pictures should not automatically be considered an arbitrary [or fanciful]\nmark). Fanciful marks have no commonly known connotation to the product at hand. By\ncontrast, the term \xe2\x80\x9cSurfvivor\xe2\x80\x9d is highly evocative of the company\xe2\x80\x99s beach-related\nproducts.\n40\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nId. at 632. The court ultimately determined that the SURFVIVOR mark was suggestive. See id.\n4. Why choose a non-inherently distinctive descriptive mark? Lawyers may advise their clients\nalways to choose inherently distinctive marks (and ideally only fanciful marks) because such marks do\nnot require any showing of secondary meaning to qualify for protection. Yet clients often prefer \xe2\x80\x94 and\nthe marketplace is full of \xe2\x80\x94 descriptive marks, particularly marks that are descriptive in a laudatory\nsense (e.g., BEST BUY). Why should this be the case? In an opinion involving the trademark FASHIONKNIT,\nJudge Learned Hand offered one persuasive explanation:\nI have always been at a loss to know why so many marks are adopted which have an\naura, or more, of description about them. With the whole field of possible coinage before\nthem, it is strange that merchants insist upon adopting marks that are so nearly\ndescriptive. Probably they wish to interject into the name of their goods some intimation\nof excellence, and are willing to incur the risk.\nFranklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247 (S.D.N.Y. 1923). See also Aloe\nCreme Labs., Inc. v. Milsan, Inc., 423 F.2d 845, 165 U.S.P.Q. 37 (9th Cir. 1970) (\xe2\x80\x9cApparently\nentrepreneurs cannot resist the temptation to tie the name of their product to some disabling quality\nof description, geography, or vanity.\xe2\x80\x9d). The Gilson treatise discusses this issue thoroughly at \xc2\xa7 2.01.\n5. Do misspellings make any difference? In short, no. See Restatement (Third) of Unfair\nCompetition (1995) \xc2\xa7 14, cmt. a (\xe2\x80\x9cThe misspelling or corruption of an otherwise descriptive word will\nnot ordinarily alter the descriptive character of the designation.\xe2\x80\x9d); Spex, Inc. v. Joy of Spex, Inc., 847 F.\nSupp. 567 (N.D. Ill. 1994) (SPEX for eyeglasses merely descriptive); In re Quik-Print Copy Shops, Inc., 616\nF.2d 523, 205 U.S.P.Q. 505 (C.C.P.A. 1980) (QUIK-PRINT for photocopy services merely descriptive). See\nalso Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774, 780, 142 U.S.P.Q 334 (2d Cir. 1964) (\xe2\x80\x9cThat\nthe terms used to comprise a trademark are misspelled, or represent the combination of several words\nor parts of words, or are otherwise so formed or malformed that the mark does not appear in any\nstandard dictionary, will not preclude a finding of invalidity based on descriptiveness if the terms\nwhich are used, interpreted according to the basic rules of the English language, do sufficiently\ndescribe.\xe2\x80\x9d).\nii.\n\nDistinguishing Suggestive from Descriptive Marks\n\nThere are a number of reasons why a trademark owner would want to show that a mark on the\nborder between descriptiveness and suggestiveness is in fact suggestive and thus inherently\ndistinctive. First, as we will see in Part I.A.1.b, it can be difficult and costly to show that a mark deemed\ndescriptive has developed secondary meaning as a designation of source. Second, as we will see in Part\nI.D, only inherently distinctive marks may be registered on an intent-to-use basis.\nWhere a mark falls along the continuum between suggestiveness and descriptiveness can be\ndifficult to determine, and a court\xe2\x80\x99s determination of the issue difficult to predict. Courts\xe2\x80\x99 approaches\nvary, but all emphasize, as did Judge Friendly in Abercrombie, the question of the degree of\n\xe2\x80\x9cimagination\xe2\x80\x9d a consumer must use to connect the meaning of the mark to the characteristics of the\ngoods. See, e.g., Platinum Home Mortgage Corp. v. Platinum Financial Group, Inc., 149 F.3d 722, 47\nU.S.P.Q.2d 1587 (7th Cir. 1998) (stating the Seventh Circuit\xe2\x80\x99s \xe2\x80\x9cdegree of imagination\xe2\x80\x9d test as \xe2\x80\x9c[I]f a\nmark imparts information directly it is descriptive. If it stands for an idea which requires some\noperation of the imagination to connect it with the goods, it is suggestive\xe2\x80\x9d, and quoting approvingly the\ndistrict court\xe2\x80\x99s reasoning that PLATINUM MORTGAGE is descriptive because \xe2\x80\x9cthe mental leap . . . is nearly\ninstantaneous and . . . requires little imagination to associate \xe2\x80\x98platinum\xe2\x80\x99 with superiority and quality\nservice\xe2\x80\x9d).\nBecause the borderline between descriptive and suggestive marks is so important, two\nrepresentative analyses are provided here for your consideration. To give you a sense of the relative\nimportance of various opinions in the trademark law canon, it is worth noting that neither of the\n41\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nopinions excerpted here has been nearly as influential as Abercrombie. They are provided instead as\neveryday examples from various circuits of how courts draw (sometimes unpredictably, sometimes\nwrongly) the border between suggestiveness and descriptiveness.\nIn reading these cases, consider the following questions:\n\xe2\x80\xa2\n\nWhich factors should be the most important to a court\xe2\x80\x99s determination of whether a mark is\neither descriptive or suggestive?\n\n\xe2\x80\xa2\n\nHow might you design a survey to aid a court in determining whether a mark is either\ndescriptive or suggestive?\n\n\xe2\x80\xa2\n\nHas the court in Innovation Ventures (the second opinion below) adopted a sensible approach\nto analyzing descriptiveness versus suggestiveness? If you were the plaintiff (i.e., the asserter\nof trademark rights), would you prefer the Zatarains or the Innovation Ventures approach?\n\nZatarains, Inc. v. Oak Grove Smokehouse, Inc.\n698 F.2d 786, 792-93 (5th Cir. 1983)\n{Plaintiff Zatarains, Inc. (\xe2\x80\x9cZatarain\xe2\x80\x99s\xe2\x80\x9d) used two registered trademarks: FISH-FRI for fried-fish\nbatter and CHICK-FRI for fried chicken batter. Competitors, including Oak Grove Smokehouse, Inc. (\xe2\x80\x9cOak\nGrove\xe2\x80\x9d) and Visko\xe2\x80\x99s Fish Fry, Inc. (\xe2\x80\x9cVisco\xe2\x80\x99s\xe2\x80\x9d), used phrases like \xe2\x80\x9cFISH FRY\xe2\x80\x9d or \xe2\x80\x9cCHICKEN FRY\xe2\x80\x9d on the\npackaging of competing products to describe the contents of those products. Both sides of the dispute\ncross-appealed the outcome of the district court\xe2\x80\x99s bench trial.}\nGoldberg, Circuit Judge:\n....\n[1] Throughout this litigation, Zatarain\xe2\x80\x99s has maintained that the term \xe2\x80\x9cFish-Fri\xe2\x80\x9d is a suggestive\nmark automatically protected from infringing uses by virtue of its registration in 1962. Oak Grove and\nVisko\xe2\x80\x99s assert that \xe2\x80\x9cfish fry\xe2\x80\x9d is a generic term identifying a class of foodstuffs used to fry fish;\nalternatively, Oak Grove and Visko\xe2\x80\x99s argue that \xe2\x80\x9cfish fry\xe2\x80\x9d is merely descriptive of the characteristics of\nthe product. The district court found that \xe2\x80\x9cFish-Fri\xe2\x80\x9d was a descriptive term identifying a function of the\nproduct being sold. Having reviewed this finding under the appropriate \xe2\x80\x9cclearly erroneous\xe2\x80\x9d standard,\nwe affirm.\n[2] We are mindful that \xe2\x80\x9c[t]he concept of descriptiveness must be construed rather broadly.\xe2\x80\x9d\nCallman \xc2\xa7 70.2. Whenever a word or phrase conveys an immediate idea of the qualities, characteristics,\neffect, purpose, or ingredients of a product or service, it is classified as descriptive and cannot be\nclaimed as an exclusive trademark. Id. \xc2\xa7 71.1; see Stix Products, Inc. v. United Merchants &\nManufacturers, Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968). Courts and commentators have formulated a\nnumber of tests to be used in classifying a mark as descriptive.\n[3] A suitable starting place is the dictionary, for \xe2\x80\x9c[t]he dictionary definition of the word is an\nappropriate and relevant indication \xe2\x80\x98of the ordinary significance and meaning of words\xe2\x80\x99 to the public.\xe2\x80\x9d\nAmerican Heritage Life Insurance Co. v. Heritage Life Insurance Co., 494 F.2d 3, 11 n.5 (5th Cir. 1974).\nWebster\xe2\x80\x99s Third New International Dictionary 858 (1966) lists the following definitions for the term\n\xe2\x80\x9cfish fry\xe2\x80\x9d: \xe2\x80\x9c1. a picnic at which fish are caught, fried, and eaten; . . . . 2. fried fish.\xe2\x80\x9d Thus, the basic\ndictionary definitions of the term refer to the preparation and consumption of fried fish. This is at least\npreliminary evidence that the term \xe2\x80\x9cFish-Fri\xe2\x80\x9d is descriptive of Zatarain\xe2\x80\x99s product in the sense that the\nwords naturally direct attention to the purpose or function of the product.\n[4] The \xe2\x80\x9cimagination test\xe2\x80\x9d is a second standard used by the courts to identify descriptive terms.\nThis test seeks to measure the relationship between the actual words of the mark and the product to\nwhich they are applied. If a term \xe2\x80\x9crequires imagination, thought and perception to reach a conclusion\nas to the nature of goods,\xe2\x80\x9d Stix Products, 295 F.Supp. at 488, it is considered a suggestive term.\nAlternatively, a term is descriptive if standing alone it conveys information as to the characteristics of\n42\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe product. In this case, mere observation compels the conclusion that a product branded \xe2\x80\x9cFish-Fri\xe2\x80\x9d is\na prepackaged coating or batter mix applied to fish prior to cooking. The connection between this\nmerchandise and its identifying terminology is so close and direct that even a consumer unfamiliar\nwith the product would doubtless have an idea of its purpose or function. It simply does not require an\nexercise of the imagination to deduce that \xe2\x80\x9cFish-Fri\xe2\x80\x9d is used to fry fish. Accordingly, the term \xe2\x80\x9cFish-Fri\xe2\x80\x9d\nmust be considered descriptive when examined under the \xe2\x80\x9cimagination test.\xe2\x80\x9d\n[5] A third test used by courts and commentators to classify descriptive marks is \xe2\x80\x9cwhether\ncompetitors would be likely to need the terms used in the trademark in describing their products.\xe2\x80\x9d\nUnion Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379 (7th Cir. 1976). A descriptive term generally\nrelates so closely and directly to a product or service that other merchants marketing similar goods\nwould find the term useful in identifying their own goods. Common sense indicates that in this case\nmerchants other than Zatarain\xe2\x80\x99s might find the term \xe2\x80\x9cfish fry\xe2\x80\x9d useful in describing their own particular\nbatter mixes. While Zatarain\xe2\x80\x99s has argued strenuously that Visko\xe2\x80\x99s and Oak Grove could have chosen\nfrom dozens of other possible terms in naming their coating mix, we find this position to be without\nmerit. As this court has held, the fact that a term is not the only or even the most common name for a\nproduct is not determinative, for there is no legal foundation that a product can be described in only\none fashion. There are many edible fish in the sea, and as many ways to prepare them as there are\nvarieties to be prepared. Even piscatorial gastronomes would agree, however, that frying is a form of\npreparation accepted virtually around the world, at restaurants starred and unstarred. The paucity of\nsynonyms for the words \xe2\x80\x9cfish\xe2\x80\x9d and \xe2\x80\x9cfry\xe2\x80\x9d suggests that a merchant whose batter mix is specially spiced\nfor frying fish is likely to find \xe2\x80\x9cfish fry\xe2\x80\x9d a useful term for describing his product.\n[6] A final barometer of the descriptiveness of a particular term examines the extent to which a\nterm actually has been used by others marketing a similar service or product. This final test is closely\nrelated to the question whether competitors are likely to find a mark useful in describing their\nproducts. As noted above, a number of companies other than Zatarain\xe2\x80\x99s have chosen the word\ncombination \xe2\x80\x9cfish fry\xe2\x80\x9d to identify their batter mixes. Arnaud\xe2\x80\x99s product, \xe2\x80\x9cOyster Shrimp and Fish Fry,\xe2\x80\x9d\nhas been in competition with Zatarain\xe2\x80\x99s \xe2\x80\x9cFish-Fri\xe2\x80\x9d for some ten to twenty years. When companies from\nA to Z, from Arnaud to Zatarain\xe2\x80\x99s, select the same term to describe their similar products, the term in\nquestion is most likely a descriptive one.\n[7] The correct categorization of a given term is a factual issue; consequently, we review the\ndistrict court\xe2\x80\x99s findings under the \xe2\x80\x9cclearly erroneous\xe2\x80\x9d standard of Fed.R.Civ.P. 52. The district court in\nthis case found that Zatarain\xe2\x80\x99s trademark \xe2\x80\x9cFish-Fri\xe2\x80\x9d was descriptive of the function of the product\nbeing sold. Having applied the four prevailing tests of descriptiveness to the term \xe2\x80\x9cFish-Fri,\xe2\x80\x9d we are\nconvinced that the district court\xe2\x80\x99s judgment in this matter is not only not clearly erroneous, but clearly\ncorrect.\n{In a footnote, the court considered and rejected the argument that FISH-FRI was generic as to fishfrying batter. The court also affirmed the district court\xe2\x80\x99s finding that CHICK-FRI was descriptive.}\n______________________________________________________________________________\nInnovation Ventures, LLC v. N.V.E., Inc.\n694 F.3d 723, 729-730 (6th Cir. 2012)\n{Plaintiff Innovation Ventures, LLC, d/b/a Living Essentials (\xe2\x80\x9cLE\xe2\x80\x9d), produced a beverage under\nthe mark 5-HOUR ENERGY. Defendant NVE began to produce a similar beverage under the mark 6 HOUR\nPOWER. Plaintiff sued and defendant claimed that plaintiff\xe2\x80\x99s mark was merely descriptive. The parties\xe2\x80\x99\ncross-moved for summary judgment.}\n\n43\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nBoggs, Circuit Judge\n....\n[1] NVE claims that the term \xe2\x80\x9c5\xe2\x80\x93hour ENERGY\xe2\x80\x9d is not a distinctive mark, but is a descriptive\nmark.1 A descriptive mark, by itself, is not protectable. However, \xe2\x80\x9c[a] merely descriptive term . . . can,\nby acquiring a secondary meaning, i.e., becoming distinctive of the applicant\xe2\x80\x99s goods . . . , become a\nvalid trademark.\xe2\x80\x9d Induct\xe2\x80\x93O\xe2\x80\x93Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984). LE\ncounters that the \xe2\x80\x9c5\xe2\x80\x93hour ENERGY\xe2\x80\x9d mark is not descriptive, but rather is distinctive, due to the mark\xe2\x80\x99s\nsuggestiveness. Such a mark \xe2\x80\x9csuggests rather than describes an ingredient or characteristic of the\ngoods and requires the observer or listener to use imagination and perception to determine the nature\nof the goods.\xe2\x80\x9d Id. at 362.\n[2] The \xe2\x80\x9c5\xe2\x80\x93hour ENERGY\xe2\x80\x9d mark could be characterized as merely descriptive, in the sense that it\nsimply describes a product that will give someone five hours of energy. But that is not the end of such\nan inquiry. The first question one would ask is how would the energy be transferred? Through food?\nThrough drink? Through injections? Through pills? Through exercise? Also, one would ask what kind\nof energy is the mark referring to? Food energy (measured in Calories)? Electrical energy? Nuclear\nenergy? With some thought, one could arrive at the conclusion that the mark refers to an energy shot.\nBut it is not as straightforward as NVE suggests. Such cognitive inferences are indicative of\n\xe2\x80\x9csuggestive\xe2\x80\x9d rather than descriptive marks.\n[3] The nature of the \xe2\x80\x9c5\xe2\x80\x93hour ENERGY\xe2\x80\x9d mark \xe2\x80\x9cshares a closer kinship with those marks\npreviously designated as suggestive than those labeled merely descriptive because of the degree of\ninferential reasoning necessary for a consumer to discern\xe2\x80\x9d that the \xe2\x80\x9c5\xe2\x80\x93hour ENERGY\xe2\x80\x9d mark relates to\nan energy shot. Tumblebus v. Cranmer, 399 F.3d 754, 763 (6th Cir. 2005). The connection between \xe2\x80\x9c5\xe2\x80\x93\nhour\xe2\x80\x9d and \xe2\x80\x9cENERGY\xe2\x80\x9d is \xe2\x80\x9cnot so obvious that a consumer seeing [5\xe2\x80\x93hour ENERGY] in isolation would\nknow that the term refers to\xe2\x80\x9d an energy shot rather than, for example, a battery for electronics, an\nexercise program, a backup generator, or a snack for endurance sports. Ibid. Connecting the mark \xe2\x80\x9c5\xe2\x80\x93\nhour ENERGY\xe2\x80\x9d with the energy-shot product requires \xe2\x80\x9cimagination and perception to determine the\nnature of the goods.\xe2\x80\x9d Induct\xe2\x80\x93O\xe2\x80\x93Matic, 747 F.2d at 362.\nWe note that, in contrast with its position in this case, in other litigation NVE has asserted that\nits own mark, \xe2\x80\x9c6 Hour POWER,\xe2\x80\x9d is an \xe2\x80\x9cinherently distinctive\xe2\x80\x9d mark. See Complaint at \xc2\xb6 12, N.V.E., Inc. v.\nN2G Distrib., Inc. & Alpha Performance Labs, No. 2:08\xe2\x80\x93cv\xe2\x80\x9301824 (D.N.J. Apr. 14, 2008) (\xe2\x80\x9cThe 6 HOUR\nPOWER mark distinguishes NVE as the source of these products, is inherently distinctive, and has also\nbecome distinctive through the acquisition of secondary meaning.\xe2\x80\x9d (emphasis added)).\n1\n\n44\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[4] \xe2\x80\x9cThe line between merely descriptive and suggestive marks is admittedly hazy and can be\ndifficult to discern.\xe2\x80\x9d Tumblebus, 399 F.3d at 763. However, we disagree with NVE\xe2\x80\x99s contention that the\nmark is not distinctive and thus not protectable. The \xe2\x80\x9c5\xe2\x80\x93hour ENERGY\xe2\x80\x9d mark is \xe2\x80\x9csuggestive.\xe2\x80\x9d\n{The Sixth Circuit found other fact issues and remanded.}\nComments and Questions\n1. The PTO\xe2\x80\x99s analysis of the 5-HOUR ENERGY mark. In a subsequent case, Innovation Ventures, LLC v.\nN2G Distrib., Inc., 763 F.3d 524 (6th Cir. 2014), the Sixth Circuit noted that the PTO had initially denied\nregistration of the 5-HOUR ENERGY mark on the ground that it was descriptive and lacked secondary\nmeaning. In a footnote to Innovation Ventures, LLC v. N2G Distrib., Inc., the Sixth Circuit simply stated:\n\xe2\x80\x9cBy contrast, we have held that the \xe2\x80\x985\xe2\x80\x93hour ENERGY\xe2\x80\x99 mark was \xe2\x80\x98suggestive and thus protectable\xe2\x80\x99 by at\nleast March 2006. Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723, 730 (6th Cir. 2012).\xe2\x80\x9d Innovation\nVentures, LLC v. N2G Distrib., Inc., 763 F.3d at 530 n.1. In September 2005, Innovation Ventures\nresorted to registration of the mark on the Supplemental Register. In August 2011, upon a showing of\nsecondary meaning, the mark was finally registered on the Principal Register. (For a discussion of the\ndifference between the Supplemental Register and the Principal Register, see Part I.D.1 below).\n______________________________________________________________________________\nHere are a few further examples of marks classified either as descriptive or suggestive. You are\nstrongly encouraged to decide for yourself how you would predict the court ruled before consulting\nthe actual outcome (and keep in mind that the court may simply have gotten it wrong):\n\xe2\x80\xa2\n\nCOASTAL WINE\n\n\xe2\x80\xa2\n\n24 HOUR FITNESS for fitness facilities. See 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC,\n277 F. Supp. 2d 356 (S.D.N.Y. 2003) (finding that the mark \xe2\x80\x9cdescribe[s] a physical trainingrelated facility that is available, if not around the clock, at least for substantial periods of time\non a regular basis.\xe2\x80\x9d).\n\n\xe2\x80\xa2\n\nCROSSFIT\n\n\xe2\x80\xa2\n\nXTREME LASHES\n\n\xe2\x80\xa2\n\nLITTLE MERMAID\n\nfor wine made near a coast. See Callaway Vineyard & Winery v. Endsley Capital\nGroup, Inc., 63 U.S.P.Q.2d 1919 (TTAB 2002) (finding the mark to be descriptive since the\nmark describes \xe2\x80\x9ca significant feature of applicant\xe2\x80\x99s goods, namely the place or establishment\nwhere applicant produces its wine\xe2\x80\x9d).\n\nfor \xe2\x80\x9cfitness training and consulting.\xe2\x80\x9d See Crossfit, Inc. v. Quinnie, 232 F. Supp. 3d\n1295, 1306 (N.D. Ga. 2017) (\xe2\x80\x9cThe Court finds that the CROSSFIT\xc2\xae mark is a suggestive mark.\nThe mark CROSSFIT\xc2\xae is a combination of the terms, \xe2\x80\x9ccross\xe2\x80\x9d and \xe2\x80\x9cfit,\xe2\x80\x9d which are both\ncommonly associated with exercise and fitness. The term \xe2\x80\x9ccross\xe2\x80\x9d has been used in sports and\nfitness as in cross-training to refer to combining different sports or types of exercises in order\nto improve a person\xe2\x80\x99s fitness and performance. The combination of the terms into a single\nunique word places the mark in the \xe2\x80\x9csuggestive\xe2\x80\x9d category, requiring a leap of the imagination\nto get from the mark to the product. The CROSSFIT\xc2\xae mark is not an arbitrary term such as\nKODAK.\xe2\x80\x9d (citation omitted)).\nfor artificial eyelashes. See Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d\n221 (5th Cir. 2009) (finding the mark to be suggestive; \xe2\x80\x9cThe consumer must exercise some\nimagination to associate \xe2\x80\x98xtreme lashes\xe2\x80\x99 with \xe2\x80\x98artificially elongated eyelashes.\xe2\x80\x99\xe2\x80\x9d).\nfor a doll taking the form of a mermaid. See In re United Trademark Holdings,\nInc., 122 U.S.P.Q.2d 1796 (TTAB 2017) (finding the mark to be descriptive for a doll taking the\nform of a mermaid because consumers will \xe2\x80\x9cunderstand the mark to describe the public\ndomain character in the Hans Christian Andersen fairy tale, as well as a young or little\nmermaid\xe2\x80\x9d; by contrast, \xe2\x80\x9c[c]onsumers reasonably expect goods and services bearing the name\nor image of {Superman} to emanate from, or be produced or marketed under license from,\n45\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe entity which created the character and therefore owns the right to profit from\ncommercialization of it.\xe2\x80\x9d).\n\xe2\x80\xa2\n\n100% and 100% TIME RELEASE MOISTURIZER for skin moisturizer. See Estee Lauder, Inc. v. The\nGap, Inc., 108 F.3d 1503 (2d Cir. 1997) (affirming the district court\xe2\x80\x99s finding the mark to be\nsuggestive; \xe2\x80\x9cThe phrase \xe2\x80\x98100% Time Release Moisturizer\xe2\x80\x99 could be read to indicate the purity\nof the moisturizing content of Lauder\xe2\x80\x99s product, or to imply an enduring effect. Or, as the\ndistrict court found, it could be read as indicating that the bottle contains nothing but timerelease moisturizer or that the product moisturizes continuously until removed or worn off.\nAll of these interpretations require some stretch of the imagination. And of course, as the\ncourt found, if the term \xe2\x80\x98100%\xe2\x80\x99 is simply viewed as the brand of time-release moisturizer, it\nplainly is suggestive.\xe2\x80\x9d).\nComments and Questions\n\n1. Surveying for suggestiveness versus descriptiveness. In Rise-N-Shine, LLC v. Duner-Fenter, No.\n14 Civ. 1305, 2015 WL 876470 (S.D.N.Y. Feb. 28, 2015), the plaintiff produced a dietary supplement\nunder the mark GO AWAY GRAY that purportedly prevents the growth of gray hair. The defendant\nproduced a competing dietary supplement under the mark GET AWAY GREY. The defendant asserted that\nthe plaintiff\xe2\x80\x99s mark was descriptive (and both parties agreed that the plaintiff\xe2\x80\x99s mark lacked secondary\nmeaning). The plaintiff presented survey evidence of the mark\xe2\x80\x99s suggestiveness. The methodology of\nthe survey was essentially as follows:\nFirst, the pool of respondents was limited\xe2\x80\x94through screening questions at the beginning\nof the survey\xe2\x80\x94to adults between the ages of 35 and 55, residing in the United States, who\nhad purchased vitamins or supplements in the previous six months, and who reported\nthat they would \xe2\x80\x9cdefinitely\xe2\x80\x9d or \xe2\x80\x9cprobably\xe2\x80\x9d consider buying vitamins or supplements \xe2\x80\x9cto\npromote healthy hair\xe2\x80\x9d in the next six months. In all, 208 participants qualified after these\nscreening mechanisms. Next, respondents were informed of the difference between a\nbrand name and a product description, and given two test phrases (\xe2\x80\x9cONE A DAY\xe2\x80\x9d and\n\xe2\x80\x9cIMMUNITY BOOSTER\xe2\x80\x9d) to evaluate whether they understood that distinction.\nRespondents were then asked whether they believed the Disputed Mark\xe2\x80\x94as well as two\nother marks, \xe2\x80\x9cSLIM\xe2\x80\x93FAST\xe2\x80\x9d and \xe2\x80\x9cMUSCLE BUILDER,\xe2\x80\x9d which were included to minimize\npotential bias\xe2\x80\x94refers to a product\xe2\x80\x99s brand name or describes a product\xe2\x80\x99s function or\npurpose, or whether the respondent did not know. Respondents were also asked, at the\nconclusion of the survey, whether they had gray hair, and 176 of the 208 respondents\nanswered affirmatively. Ultimately, 49% of survey respondents\xe2\x80\x94and 51% of\nrespondents with gray hair\xe2\x80\x94answered that they believed the Disputed Mark was a\nbrand name. {The survey expert} then excluded all those respondents who incorrectly\nidentified either SLIM\xe2\x80\x93FAST or MUSCLE BUILDER as a brand name or product\ndescription, which left 160 respondents. Of those respondents, 56% in total, and 59% of\nthose with gray hair, answered that they believed the Disputed Mark was a brand name.\nId. at *1. Judge Sullivan rejected the defendant\xe2\x80\x99s motion in limine to exclude the survey expert\xe2\x80\x99s\ntestimony and allowed the survey results to be presented to the jury. Id. at *4. Does this survey\nmethodology for distinguishing between descriptive and suggestive marks appear valid?\n2. Is the protection of descriptive marks constitutionally sound? See Lisa Ramsey, Descriptive\nTrademarks and the First Amendment, 70 TENN. L. REV. 1095 (2003) (arguing that the protection of\ndescriptive marks violates the free speech clause of the First Amendment because it does not directly\nadvance the government\xe2\x80\x99s interest in protecting consumers from confusion and is in any case more\nextensive than necessary).\n46\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\niii. Special Rules for Classification of Certain Kinds of Trademarks\nThere are many special rules that guide the Abercrombie classification of certain kinds of\ntrademarks. Nearly all of them are detailed in the PTO\xe2\x80\x99s Trademark Manual of Examining Procedure\n(\xe2\x80\x9cTMEP\xe2\x80\x9d), tmep.uspto.gov, which is an excellent resource for the trademark lawyer, particularly one\nwho specializes in trademark \xe2\x80\x9cprosecution,\xe2\x80\x9d i.e., the process of registering trademarks at the PTO.\nAmong the most important of these special rules are the following:\n\xe2\x8b\x84\n\nDescriptiveness of Geographic Terms\n\nAs we will see through the course of this Part, Lanham Act \xc2\xa7 2, 15 U.S.C. \xc2\xa7 1052, has several\nprovisions giving special treatment to geographic terms. Consider for the moment \xc2\xa7 2(e)(2), which\nprovides: \xe2\x80\x9cNo trademark by which the goods of the applicant may be distinguished from the goods of\nothers shall be refused registration on the principal register on account of its nature unless it . . . (e)\nConsists of a mark which . . . (2) when used on or in connection with the goods of the applicant is\nprimarily geographically descriptive of them, except as indications of regional origin may be\nregistrable under section 1054 of this title.\xe2\x80\x9d\nSuch \xe2\x80\x9cprimarily geographically descriptive\xe2\x80\x9d marks may only be registered or otherwise protected\nupon a showing of secondary meaning (with one important exception that we will address in a\nmoment). Lanham Act \xc2\xa7 2(f), 15 U.S.C. \xc2\xa7 1052(f). The TTAB has established a relatively straightforward\nthree-part test for determining whether a mark is \xe2\x80\x9cprimarily geographically descriptive.\xe2\x80\x9d The mark\nwill fall into this category if: \xe2\x80\x9c(1) the primary significance of the mark is a generally known geographic\nlocation; (2) the goods or services originate in the place identified in the mark; and (3) purchasers\nwould be likely to believe that the goods or services originate in the geographic place identified in the\nmark.\xe2\x80\x9d TMEP \xc2\xa7 1210.01(a). See, e.g., In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (finding\nCAROLINA APPAREL for clothing stores in North Carolina to be primarily geographically descriptive); In re\nBrouwerij Nacional Balashi NV, 80 U.S.P.Q.2d 1820 (TTAB 2006) (finding BALASHI BEER and BALASHI for\nbeer made in the Balashi neighborhood of the Santa Cruz district of Aruba to be not primarily\ngeographically descriptive where the term is \xe2\x80\x9cso obscure or remote that purchasers of beer in the\nUnited States would typically fail to recognize the term as indicating the geographical source of\napplicant\xe2\x80\x99s goods.\xe2\x80\x9d). For a more problematic case, see University Book Store v. Board of Regents of\nUniversity of Wisconsin System, 33 U.S.P.Q.2d 1385 (TTAB 1994) (finding WISCONSIN BADGERS for apparel\nto be not primarily geographically descriptive where consumers would not perceive the primary\nsignificance of the mark as a whole as designating a particular geographic location).\nThe third prong of the PGD test calls for evidence that consumers would make a \xe2\x80\x9cgoods/place\nassociation\xe2\x80\x9d (or \xe2\x80\x9cservice/place association\xe2\x80\x9d) between (1) the geographic location referred to by the\nmark and (2) the goods sold under the mark. Importantly, if the geographic location is \xe2\x80\x9cneither obscure\nnor remote,\xe2\x80\x9d TMEP \xc2\xa7 1210.04, and the goods actually originate from that location, then this\ngoods/place association may ordinarily be presumed. See, e.g., In re Spirits of New Merced, LLC, 85\nU.S.P.Q.2d 1614 (TTAB 2007) (finding YOSEMITE BEER to be primarily geographically descriptive where\nthe registration applicant\xe2\x80\x99s beer was brewed near Yosemite National Park and applicant failed to\novercome presumption of goods/place association; \xe2\x80\x9c[s]ince the goods originate at or near [Yosemite\nNational Park], we can presume an association of applicant\xe2\x80\x99s beer with the park.\xe2\x80\x9d). But see In re\nMankovitz, 90 USPQ2d 1246 (TTAB 2009) (finding THE MONTECITO DIET for a diet system to be not\nprimarily geographically descriptive where evidence of goods/place association consisted only of the\nfact that the registration applicant lived in Montecito, California; \xe2\x80\x9cit would be speculation on our part\nto reach the conclusion that the goods or services originate there or that the public would understand\nthat there is a goods/place relationship\xe2\x80\x9d).\n\n47\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n\xe2\x8b\x84\n\nCertification Marks and Collective Marks\n\n\xe2\x80\x9cCertification marks\xe2\x80\x9d and \xe2\x80\x9ccollective marks\xe2\x80\x9d are special forms of trademarks in the Lanham Act.\nLanham Act \xc2\xa7 45 defines a certification mark as follows:\nThe term \xe2\x80\x9ccertification mark\xe2\x80\x9d means any word, name, symbol, or device, or any\ncombination thereof\xe2\x80\x94\n(1) used by a person other than its owner, or\n(2) which its owner has a bona fide intention to permit a person other than the owner to\nuse in commerce and files an application to register on the principal register established\nby this Act,\nto certify regional or other origin, material, mode of manufacture, quality, accuracy, or\nother characteristics of such person\xe2\x80\x99s goods or services or that the work or labor on the\ngoods or services was performed by members of a union or other organization.\nAs the \xc2\xa7 45 definition suggests, certification marks may take a variety of forms, including:\n\xe2\x80\xa2\n\ncertifications of a good\xe2\x80\x99s quality (e.g., the UL mark of Underwriters Laboratories, Inc., Reg. No.\n0,782,589 (Dec. 29, 1964); the U-in-a-circle mark of the Orthodox Union, Reg. No. 0,636,593\n(Oct. 30, 1956))\n\n\xe2\x80\xa2\n\ncertifications of the regional origin of a product (e.g., the \xe2\x80\x9cGrown in Idaho\xe2\x80\x9d mark of the State of\nIdaho Potato Commission, Reg. No. 4,221,403 (July 24, 2012); the ROQUEFORT mark of the\nCommunity of Roquefort, France, Reg. No. 0571798 (Mar. 10, 1953)\n\n\xe2\x80\xa2\n\ncertifications that a product was union-made (e.g., the International Union of Painters and\nAllied Trades mark indicating that the designated services were performed by union\nmembers, Reg. No. 2,749,294 (Aug. 12, 2003)\n\nVarious specific rules apply to certification marks. First, certifying organizations may not\nthemselves produce goods or services to which the certification mark is applied. See Lanham Act\n48\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xc2\xa7 14(5)(B), 15 U.S.C. \xc2\xa7 1064(5)(B). Rather, certifying organizations can only function as certifiers of\nother entities\xe2\x80\x99 goods or services. Second, certifying organizations must restrict the use of their mark\nonly to certify goods or services that meet the certification standards. See Lanham Act \xc2\xa7 14(5)(A) & (C),\n15 U.S.C. \xc2\xa7 1064(5)(A) & (C). Third, certifying organizations must not \xe2\x80\x9cdiscriminately refuse[] to certify\nor to continue to certify the goods or services of any person who maintains the standards or conditions\nwhich such mark certifies.\xe2\x80\x9d See Lanham Act \xc2\xa7 14(5) (D), 15 U.S.C. \xc2\xa7 1064(5) (D); see also Jeanne C.\nFromer, The Unregulated Certification Mark(et), 69 STAN. L. REV. 121 (2017) (discussing examples of\ncertification organizations\xe2\x80\x99 arbitrary, inconsistent, and anticompetitive application of their own\ncertifying standards). To circumvent the constraints placed on certification marks, many certifying\norganizations prefer to register standard trademarks and license their use in a manner equivalent to a\ncertification system. See C. Bradford Biddle, Frank X. Curci, Matthew Dodson & Molly Edwards,\nStandards Setting Organizations and Trademark Registration: An Empirical Analysis (working paper\nMay 19, 2019).\nIn contrast to certification marks, collective marks are used by members of the collective to\nidentify their goods and services as made by collective members. The \xe2\x80\x9canti-use-by-owner\xe2\x80\x9d rule that\napplies to certification marks\xe2\x80\x94i.e., the rule that the owner of the certification mark may not itself sell\ngoods or services bearing the certification mark\xe2\x80\x94does not apply to collective marks.1 Lanham Act\n\xc2\xa7 45 defines collective marks as follows:\nThe term \xe2\x80\x9ccollective mark\xe2\x80\x9d means a trademark or service mark\xe2\x80\x93\n(1) used by the members of a cooperative, an association, or other collective group or\norganization, or\n(2) which such cooperative, association, or other collective group or organization has a\nbona fide intention to use in commerce and applies to register on the principal register\nestablished by this Act,\nand includes marks indicating membership in a union, an association, or other\norganization.\nWhen certification or collective marks take the form of geographic designations, the\ndistinctiveness analysis of them is unique in the statutory scheme. Lanham Act \xc2\xa7 2(e)(2) establishes\nthat proprietors of certification or collective marks that take the form of \xe2\x80\x9cindications of regional origin\xe2\x80\x9d\nneed not establish that the indication of regional origin has secondary meaning in order to register the\nindication as trademark. A mark\xe2\x80\x99s ability to qualify as a regional certification or collective mark turns\non \xe2\x80\x9cwhether the public understands that goods bearing the mark come only from the region named in\nthe mark, not whether the public is expressly aware of the certification function of the mark per se.\xe2\x80\x9d\nTMEP \xc2\xa7 1306.05(a). See also Institut Nat\xe2\x80\x99l Des Appellations D\xe2\x80\x99Origine v. Brown-Forman Corp., 47\nUSPQ2d 1875 (TTAB 1998).\n\xe2\x8b\x84\n\nSurnames\n\nJust as it does with geographic marks, \xc2\xa7 2 of the Lanham Act, 15 U.S.C. \xc2\xa7 1052, also explicitly\naddresses the protectability of surnames and classifies them essentially as descriptive marks. It states:\n\xe2\x80\x9cNo trademark by which the goods of the applicant may be distinguished from the goods of others shall\nThe distinction between certification and collective marks is sometimes very fine, leading\nMcCarthy to lament that \xe2\x80\x9c[t]he problem with collective trademarks and service marks is that they are\nalmost indistinguishable from certification marks.\xe2\x80\x9d MCCARTHY \xc2\xa7 19:99. McCarthy suggests that one\nadvantage (or disadvantage) of collective marks is that they offer a way to avoid the strict\nrequirements for the operation of certification marks established in Lanham Act \xc2\xa7 14(5).\n1\n\n49\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nbe refused registration on the principal register on account of its nature unless it . . . (e) Consists of a\nmark which . . . (4) is primarily merely a surname.\xe2\x80\x9d Surnames may be registered only upon a showing\nof acquired distinctiveness under \xc2\xa7 2(f), 15 U.S.C. \xc2\xa7 1052(f). As the TMEP explains, \xc2\xa7 2(e)(4) \xe2\x80\x9creflects\nthe common law that exclusive rights in a surname per se cannot be established without evidence of\nlong and exclusive use that changes its significance to the public from that of a surname to that of a\nmark for particular goods or services. The common law also recognizes that surnames are shared by\nmore than one individual, each of whom may have an interest in using his surname in business; and, by\nthe requirement for evidence of distinctiveness, the law, in effect, delays appropriation of exclusive\nrights in the name.\xe2\x80\x9d TMEP \xc2\xa7 1211.\nBut what qualifies as \xe2\x80\x9cprimarily merely a surname\xe2\x80\x9d? \xe2\x80\x9cFiore,\xe2\x80\x9d \xe2\x80\x9cHackler,\xe2\x80\x9d and \xe2\x80\x9cBird\xe2\x80\x9d are used as\nsurnames, but each has been deemed not \xe2\x80\x9cprimarily merely a surname\xe2\x80\x9d under trademark law. See In re\nIsabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2005); In re United Distillers plc, 56 USPQ2d 1220 (TTAB\n2000); Fisher Radio Corp. v. Bird Elec. Corp., 162 USPQ 265 (TTAB 1969). The TTAB has established five\nfactors to be considered in determining whether the relevant purchasing public perceives the primary\nsignificance of a term to be that of a surname: (1) whether the surname is rare; (2) whether the term is\nthe surname of anyone connected with the applicant; (3) whether the term has any recognized\nmeaning other than as a surname; (4) whether it has the \xe2\x80\x9clook and feel\xe2\x80\x9d of a surname; (5) in cases of\nstylized, rather than standard character marks, whether the stylization of lettering is distinctive\nenough to create a separate commercial impression. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332,\n1333-1334 (TTAB 1995) (finding that the mark BENTHIN in stylized lettering inside an oval design\nwould not be perceived as primarily merely a surname). If it is determined that the relevant\npurchasing public does not perceive a term as a surname, then the term would likely be classified as\neither arbitrary or suggestive, or possibly even as fanciful. In any case, the term would qualify as\ninherently distinctive of source.2\nWhat about historic surnames? \xe2\x80\x9cA term with surname significance may not be primarily merely a\nsurname if that term also identifies a historical place or person.\xe2\x80\x9d TMEP \xc2\xa7 1211.01(a)(iv). See, e.g.,\nLucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 331 (S.D.N.Y. 1970) (finding\nthat DA VINCI for jewelry and leather goods is not primarily merely a surname for purposes of Section\n2(e)(4); \xe2\x80\x9cWhile defendant has demonstrated by way of the Manhattan telephone directory that the\nname Da Vinci is in current use as a surname (by one C. Leonardo da Vinci and one Lora Da Vinci), the\nname Da Vinci, even without the given name Leonardo, comes very near having as its exclusive\nAs for full names, the common law has long treated full names the same as it treats surnames:\nboth require a showing of secondary meaning to merit protection. But importantly, the PTO treats full\nnames differently from surnames for purposes of registration. It will allow the registration of a full\nname without any showing that the name carries secondary meaning (or is famous), provided that the\napplicant can show that the name is being used as an indication of commercial origin rather than as\nsimply the applicant\xe2\x80\x99s own name. See Brooks v. Calloway, 93 U.S.P.Q.2d 18232010 WL 595585, at *8\n(T.T.A.B. 2010) (\xe2\x80\x9cA personal name mark, unless it is primarily merely a surname, is registrable on the\nPrincipal Register without a showing of secondary meaning, and thus is deemed to be inherently\ndistinctive under the Lanham Act if the record shows that it is used in a manner that would be\nperceived by purchasers as identifying the services in addition to the person.\xe2\x80\x9d). The divergence\nbetween the common law and the registration regime with respect to full names can lead to strange\noutcomes. See, e.g., Zinner v. Olenych, 108 F. Supp. 3d 369, 381\xe2\x80\x9386 (E.D. Va. 2015) (explaining the\ndifference between the USPTO\'s "more lenient standard" and the common law doctrine and finding\nthat plaintiff\xe2\x80\x99s mark, ED ZINNER, was a personal name, unprotectable under the common law, yet\nawarding it a presumption of validity, because the USPTO had granted it registration).\n2\n\n50\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nconnotation the world-renowned 15th century artist, sculptor, architect, musician, engineer and\nphilosopher (to whom defendant refers as a \xe2\x80\x98deceased Florentine painter\xe2\x80\x99) and hardly suggests that he\npersonally had-something to do with the designing of plaintiff\'s luggage.\xe2\x80\x9d). But see In re Champion Int\xe2\x80\x99l\nCorp., 229 USPQ 550, 551 (TTAB 1985) (finding MCKINLEY to be primarily merely a surname despite\nbeing the surname of William McKinley, the 25th President of the United States).\n\xe2\x8b\x84\n\nNon-English Words: The Doctrine of \xe2\x80\x9cForeign Equivalents\xe2\x80\x9d\n\n\xe2\x80\x9cThe foreign equivalent of a merely descriptive English word is no more registrable than the\nEnglish word itself.\xe2\x80\x9d TMEP \xc2\xa7 1209.03(g). Thus, \xe2\x80\x9clait,\xe2\x80\x9d \xe2\x80\x9cleche,\xe2\x80\x9d and \xe2\x80\x9cMilch\xe2\x80\x9d as brand names for milk\nwould be deemed generic, and \xe2\x80\x9cfrais,\xe2\x80\x9d \xe2\x80\x9cfresca,\xe2\x80\x9d and \xe2\x80\x9cfrisch\xe2\x80\x9d as brand names for milk would likely be\ndeemed descriptive and require secondary meaning to be protected. See, e.g., In re Tokutake Indus. Co.,\n87 USPQ2d 1697 (TTAB 2008) (finding AYUMI, meaning \xe2\x80\x9cwalking,\xe2\x80\x9d and its Japanese character\nequivalent to be merely descriptive for footwear); In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB\n1986) (finding Chinese characters meaning \xe2\x80\x9cOriental Daily News\xe2\x80\x9d to be merely descriptive of\nnewspapers).\nThe doctrine of foreign equivalents is riddled with limitations and exceptions, however. Among\nthese are, first, that \xe2\x80\x9c[t]he doctrine should be applied only when it is likely that the ordinary American\npurchaser would stop and translate the foreign word into its English equivalent.\xe2\x80\x9d See In re Hag\nAktiengesellschaft, 155 U.S.P.Q. 598 (TTAB 1967) (finding KABA, meaning coffee in Serbian and\nUkranian, to be descriptive for coffee).3 But see Palm Bay Imports v. Veuve Clicquot, 396 F.3d 1369 (Fed.\nCir. 2005) (finding that VEUVE CLICQUOT is not confusingly similar to THE WIDOW, since most American\nconsumers won\xe2\x80\x99t know that \xe2\x80\x98\xe2\x80\x98veuve\xe2\x80\x99\xe2\x80\x99 means \xe2\x80\x98\xe2\x80\x98widow\xe2\x80\x99\xe2\x80\x99 in French). Second, \xe2\x80\x9cforeign words from dead or\nobscure languages may be so unfamiliar to the American buying public that they should not be\ntranslated into English for descriptiveness purposes.\xe2\x80\x9d TMEP \xc2\xa7 1209.03(g). This limitation appears to\nbe very rarely applied, however. Third, as the TMEP tries to explain, \xe2\x80\x9cmarks comprised of a term from\na foreign language used with an English term may be found registrable if the commercial impression\ncreated by the combination differs from that which would be created by two English words.\xe2\x80\x9d The\nrepresentative case here is In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988) (finding LA YOGURT\nfor yogurt to be registrable without showing of secondary meaning). See also In re Le Sorbet, Inc., 228\nU.S.P.Q. 27 (TTAB 1985) (finding LE SORBET for sorbet to be descriptive because it is a foreign-language\nterm preceded by a foreign-language article); In re Monfrere, Serial No. 88004556 (TTAB March 2,\n2020) [not precedential] (finding MONFR\xc3\x88RE FASHION not confusingly similar with MY BROTHER, both for\napparel).\n\xe2\x8b\x84\n\nAcronyms\n\nThe general rule is that an acronym will be classified as descriptive or generic if (1) the wording it\nstands for is merely descriptive of or generic as to the goods or services, and (2) relevant purchasers\nA common objection to the doctrine of foreign equivalents is that Americans don\xe2\x80\x99t speak\n\xe2\x80\x9cforeign\xe2\x80\x9d languages. In fact, at least one in four Americans speak a language other than English. See\nChris McComb, About One in Four Americans Can Hold a Conversation in a Second Language, GALLUP\nNEWS SERVICE, April 6, 2001, https://news.gallup.com/poll/1825/about- one-four-americans-can-holdconversation-second-language.aspx. Regardless, for the doctrine of foreign equivalents, the \xe2\x80\x9cordinary\nAmerican purchaser\xe2\x80\x9d includes \xe2\x80\x9call American purchasers, including those proficient in a non-English\nlanguage who would ordinarily be expected to translate words into English.\xe2\x80\x9d In re Spirits Int\xe2\x80\x99l, N.V., 563\nF.3d 1347, 1352 (Fed. Cir. 2009) (emphasis added).\n3\n\n51\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwill recognize the acronym as an acronym of the merely descriptive or generic wording it represents\n(rather than as, say, a fanciful sequence of letters). TMEP \xc2\xa7 1209.03(h). See, e.g., In re Thomas Nelson,\nInc., 97 USPQ2d 1712, 1715 (TTAB 2011) (finding NKJV to be substantially synonymous with merely\ndescriptive term \xe2\x80\x9cNew King James Version\xe2\x80\x9d and thus merely descriptive of bibles); Baroness Small\nEstates, Inc. v. Am. Wine Trade, Inc., 104 USPQ2d 1224, 1230-31 (TTAB 2012) (finding CMS to be\ninherently distinctive on the ground that it is not substantially synonymous with the grape varietals\ncabernet, merlot, and syrah and is thus not merely descriptive of wine).\nb.\n\nAcquired Distinctiveness of Source\n\nA descriptive, and thus non-inherently distinctive, mark may qualify for protection if it is shown\nto have developed \xe2\x80\x9cacquired distinctiveness\xe2\x80\x9d or \xe2\x80\x9csecondary meaning\xe2\x80\x9d (the two terms mean the same\nthing) as a designation of source. For example, though the term \xe2\x80\x9cAmerican Airlines\xe2\x80\x9d is highly\ndescriptive of an airline service based in the U.S., the term has developed enormous secondary\nmeaning as a designation of source through use and advertising. As the Supreme Court commented in\nWal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), the term \xe2\x80\x9csecondary meaning\xe2\x80\x9d is not as\nclear as it could be:\nThe phrase \xe2\x80\x9csecondary meaning\xe2\x80\x9d originally arose in the context of word marks, where it\nserved to distinguish the source-identifying meaning from the ordinary, or \xe2\x80\x9cprimary,\xe2\x80\x9d\nmeaning of the word. \xe2\x80\x9cSecondary meaning\xe2\x80\x9d has since come to refer to the acquired,\nsource-identifying meaning of a nonword mark as well. It is often a misnomer in that\ncontext, since nonword marks ordinarily have no \xe2\x80\x9cprimary\xe2\x80\x9d meaning. Clarity might well\nbe served by using the term \xe2\x80\x9cacquired meaning\xe2\x80\x9d in both the word-mark and the\nnonword-mark contexts\xe2\x80\x94but in this opinion we follow what has become the\nconventional terminology.\nId. at 211 fn. Indeed, most trademark practitioners still continue as a matter of tradition to use the\nterm \xe2\x80\x9csecondary meaning\xe2\x80\x9d rather than \xe2\x80\x9cacquired distinctiveness.\xe2\x80\x9d\nEach circuit typically uses its own multifactor test to determine if a mark has developed\nsecondary meaning. They are generally quite similar. Here are some examples of these tests:\n\xe2\x80\xa2\n\nSecond Circuit: \xe2\x80\x9c(1) advertising expenditures, (2) consumer studies linking the mark to a source,\n(3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the\nmark, and (6) length and exclusivity of the mark\xe2\x80\x99s use.\xe2\x80\x9d Genesee Brewing Co. v. Stroh Brewing Co.,\n124 F.3d 137, 143 n.4 (2d Cir. 1997).\n\n\xe2\x80\xa2\n\nThird Circuit: \xe2\x80\x9cWe have identified an eleven-item, non-exhaustive list of factors relevant to the\nfactual determination whether a term has acquired secondary meaning: (1) the extent of sales and\nadvertising leading to buyer association; (2) length of use; (3) exclusivity of use; (4) the fact of\ncopying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals;\n(8) the size of the company; (9) the number of sales; (10) the number of customers; and, (11)\nactual confusion.\xe2\x80\x9d E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185, 199 (3d Cir. 2008).\n\n\xe2\x80\xa2\n\nNinth Circuit: \xe2\x80\x9cSecondary meaning can be established in many ways, including (but not limited to)\ndirect consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark;\namount and manner of advertising; amount of sales and number of customers; established place in\nthe market; and proof of intentional copying by the defendant.\xe2\x80\x9d Art Attacks Ink, LLC v. MGA Enter.,\nInc., 581 F.3d 1138, 1145 (9th Cir. 2009). See also Japan Telecom, Inc. v. Japan Telecom Am., Inc.,\n287 F.3d 866, 62 U.S.P.Q.2d 1593 (9th Cir. 2002) (listing secondary meaning factors as \xe2\x80\x9c(1)\nwhether actual purchasers of the product bearing the claimed trademark associate the trademark\nwith the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the\nlength and manner of use of the claimed trademark, and (4) whether use of the claimed trademark\nhas been exclusive.\xe2\x80\x9d).\n52\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nThe three opinion excerpts that follow offer examples of courts\xe2\x80\x99 analyses of whether a noninherently distinctive mark has developed sufficient secondary meaning to qualify for protection. In\nreading these excerpts, consider the following questions:\n\xe2\x80\xa2\n\nWhat proportion of consumers in the relevant population should courts require to perceive\nthe mark as possessing secondary meaning for the mark to qualify for protection? 25%? 50?\n75%? Relatedly, how should courts determine what constitutes the relevant population of\nconsumers?\n\n\xe2\x80\xa2\n\nHow would you devise a survey to test for secondary meaning?\n\n\xe2\x80\xa2\n\nWhy should \xe2\x80\x9clength and exclusivity of use\xe2\x80\x9d matter for purposes of establishing secondary\nmeaning?\n\n\xe2\x80\xa2\n\nImagine a situation in which Company David, after a great deal of market research, adopts an\nespecially good descriptive mark and initiates a small-scale launch of the descriptive mark in\nthe marketplace. Company Goliath then becomes aware of Company David\xe2\x80\x99s mark, adopts the\nmark as its own, and immediately spends enormous resources building up secondary meaning\nin the mark, so that when consumers see the mark, they think of Company Goliath. Which\ncompany should be granted rights in the mark? And is this in your view an equitable or\nefficient outcome?\n\nFrosty Treats Inc. v. Sony Computer Entertainment America\n426 F.3d 1001, 1003-1006 (8th Cir. 2005)\nMorris Sheppard Arnold, Circuit Judge\n[1] A group of affiliated companies, Frosty Treats, Inc., Frosty Treats of Louisville, Inc., Frosty\nTreats Wholesale, Inc., and Frosty Treats of Atlanta, Inc., collectively known as \xe2\x80\x9cFrosty Treats,\xe2\x80\x9d sued\nSony Computer Entertainment America, Inc., (SCEA) asserting, inter alia, claims under state and\nfederal law for trademark infringement and dilution, and for unfair competition. Frosty Treats\npremised these claims upon SCEA\xe2\x80\x99s depiction of an ice cream truck and clown character in SCEA\xe2\x80\x99s\nTwisted Metal video game series. Frosty Treats contends that because the ice cream truck . . . in the\nfinal game, is labeled with its brand identifier, \xe2\x80\x9cFrosty Treats,\xe2\x80\x9d the games create a likelihood of\nconfusion as to Frosty Treats\xe2\x80\x99s sponsorship of or affiliation with the games. See 15 U.S.C. \xc2\xa7 1125(a).\nThe district court granted SCEA\xe2\x80\x99s motion for summary judgment on all of Frosty Treats\xe2\x80\x99s claims, and\nFrosty Treats appeals. We affirm.\n[2] Frosty Treats asserts that the district court erred by finding that there were no genuine issues\nof material fact and holding as a matter of law that the \xe2\x80\x9cFrosty Treats\xe2\x80\x9d mark was not protectable. . . .\n[3] We review a grant of summary judgment de novo, applying the same standards as the district\ncourt. . . .\nI.\n[4] Frosty Treats argues first that the district court erred by holding that its \xe2\x80\x9cFrosty Treats\xe2\x80\x9d mark\nis not entitled to trademark protection because it is generic, or, in the alternative, descriptive without\nsecondary meaning. Frosty Treats asserts that the mark is suggestive, or, at worst, descriptive with an\nacquired secondary meaning, and therefore protectible. We disagree. At best, the \xe2\x80\x9cFrosty Treats\xe2\x80\x9d mark\nis descriptive, and there is no basis for concluding that it has acquired secondary meaning.\n[5] The stylized words \xe2\x80\x9cFrosty Treats\xe2\x80\x9d appear toward the rear of the passenger\xe2\x80\x99s side of plaintiffs\xe2\x80\x99\nice cream vans as pink capital letters with frost on the upper portion of each letter. See Figure 1\n(depicting the \xe2\x80\x9cFrosty Treats\xe2\x80\x9d decal). The decal on which these words appear is approximately nine\ninches wide by four inches high and is surrounded by decals of the frozen products that the Frosty\nTreats vans sell. See Figure 2 (depicting a typical Frosty Treats van).\n53\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n[6] To determine whether this mark is protectible, we must first categorize it. \xe2\x80\x9cA term for which\ntrademark protection is claimed will fall in one of four categories: (1) generic, (2) descriptive, (3)\nsuggestive, or (4) arbitrary or fanciful.\xe2\x80\x9d WSM, Inc. v. Hilton, 724 F.2d 1320, 1325 (8th Cir. 1984). A\ngeneric mark refers to the common name or nature of an article, and is therefore not entitled to\ntrademark protection. Co\xe2\x80\x93Rect Prods., Inc. v. Marvy! Adver. Photography, Inc., 780 F.2d 1324, 1329\n(8th Cir. 1985). A term is descriptive if it conveys an \xe2\x80\x9cimmediate idea of the ingredients, qualities or\ncharacteristics of the goods,\xe2\x80\x9d Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780, 785\xe2\x80\x9386 (8th Cir. 1995),\nand is protectible only if shown to have acquired a secondary meaning. Co\xe2\x80\x93Rect Prods., 780 F.2d at\n1329. Suggestive marks, which require imagination, thought, and perception to reach a conclusion as\nto the nature of the goods, and arbitrary or fanciful marks, are entitled to protection regardless of\nwhether they have acquired secondary meaning. See id.\n[7] If it is not generic, the phrase \xe2\x80\x9cFrosty Treats\xe2\x80\x9d is, at best, descriptive. Frosty Treats is in the\nbusiness of selling frozen desserts out of ice cream trucks. \xe2\x80\x9cFrosty Treats\xe2\x80\x9d conveys an immediate idea\nof the qualities and characteristics of the goods that it sells. No imagination, thought, or perception is\nrequired to reach a conclusion as to the nature of its goods. To prevail, therefore, Frosty Treats must\ndemonstrate that the mark has acquired a secondary meaning. \xe2\x80\x9cSecondary meaning is an association\nformed in the minds of consumers between the mark and the source or origin of the product.\xe2\x80\x9d Id. at\n1330. To establish secondary meaning, Frosty Treats must show that \xe2\x80\x9cFrosty Treats\xe2\x80\x9d serves to identify\nits goods and distinguish them from those of others. Id. Secondary meaning does not require the\nconsumer to identify a source by name but does require that the public recognize the mark and\nassociate it with a single source. Stuart Hall, 51 F.3d at 789; see Heartland Bank v. Heartland Home\nFin., Inc., 335 F.3d 810, 818\xe2\x80\x9319 (8th Cir. 2003) (Smith, J., concurring).\n[8] The record, when viewed in favor of Frosty Treats, demonstrates that SCEA is entitled to\njudgment as a matter of law on this issue. Frosty Treats has failed to put forth more than a scintilla of\nevidence that the public recognizes its \xe2\x80\x9cFrosty Treats\xe2\x80\x9d mark and associates it with a single source.\nFrosty Treats claims that its survey evidence demonstrates that the term \xe2\x80\x9cFrosty Treats\xe2\x80\x9d has acquired\nsecondary meaning, but, if anything, it indicates the opposite. In the survey, respondents were shown\nimages of the Frosty Treats ice cream van and asked, \xe2\x80\x9cAre you familiar with or have you ever seen or\nheard of this before?\xe2\x80\x9d Forty-seven percent responded affirmatively. They were then asked what they\nknew about the van. The respondents most frequently mentioned that it sold ice cream. Only one\npercent of the respondents in the survey mentioned Frosty Treats by name. There is no indication in\nthe record that the survey respondents (apart from the one percent) were familiar with the vans\nbecause of the small nine-by-four-inch \xe2\x80\x9cFrosty Treats\xe2\x80\x9d decal on the rear portion of the side of the van,\nthe only place where the phrase \xe2\x80\x9cFrosty Treats\xe2\x80\x9d appears on the vehicle. This decal, moreover, is\nsurrounded by numerous other decals comprising the van\xe2\x80\x99s menu board. See Figure 2. Frosty Treats\xe2\x80\x99s\n54\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nsurvey provides no basis to conclude that the respondents associated the van with a single source as\nopposed to simply a generic ice cream truck.\n[9] Although direct evidence such as consumer testimony or surveys are most probative of\nsecondary meaning, it can also be proven by circumstantial evidence. See Heartland Bank, 335 F.3d at\n819\xe2\x80\x9320 (Smith, J., concurring). Circumstantial evidence such as the exclusivity, length and manner of\nuse of the mark; the amount and manner of advertising; the amount of sales and number of customers;\nthe plaintiff\xe2\x80\x99s established place in the market; and the existence of intentional copying could also\nestablish secondary meaning. See id. (citing 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair\nCompetition \xc2\xa7\xc2\xa7 15:30, 15:60, 15:61, 15.66, 15.70 (4th ed.1999)). But the circumstantial evidence that\nFrosty Treats offered to establish secondary meaning also fails to raise a genuine issue of material fact.\n[10] We recognize that the application of some of these criteria to the facts of this case may\nmilitate in favor of a finding of secondary meaning in the mind of a reasonable juror. For instance,\nthere is evidence that Frosty Treats has used the term in a continuous and substantially exclusive\nmanner since 1991. Cf. Stuart Hall, 51 F.3d at 789\xe2\x80\x9390. Furthermore, the record reflects that Frosty\nTreats, although a relatively small company, is nevertheless one of the largest ice cream truck street\nvendors in the nation.\n[11] On the other hand, there is no evidence that SCEA intentionally copied the term. Most\nsignificantly, the record does not contain sufficient evidence for a juror to conclude that Frosty Treats\nengages in advertising or publication of the \xe2\x80\x9cFrosty Treats\xe2\x80\x9d mark to an extent that would be effective in\nhaving the public recognize it and equate it with a single source. See Co\xe2\x80\x93Rect Prods., 780 F.2d at 1330;\nHeartland Bank, 335 F.3d at 820 (Smith, J., concurring). In fact, Frosty Treats does not even\nprominently display the \xe2\x80\x9cFrosty Treats\xe2\x80\x9d mark on its street-vending vans, which according to its brief is\nthe primary way that it advertises the phrase. As mentioned earlier, the phrase appears on the vans as\na nine-by-four-inch decal that is surrounded by numerous other decals of frozen desserts.\n[12] Furthermore, SCEA submitted indirect evidence that the term \xe2\x80\x9cFrosty Treats\xe2\x80\x9d has not\nacquired secondary meaning. SCEA\xe2\x80\x99s expert conducted a survey of 204 children and 200 adults who\nhad purchased ice cream from an ice cream truck in Frosty Treats\xe2\x80\x99s largest markets. When asked to\nvolunteer the names of any ice cream trucks that they had purchased ice cream from, not one recalled\nthe name \xe2\x80\x9cFrosty Treats.\xe2\x80\x9d The evidence as a whole simply does not provide a sufficient basis for\nconcluding that the phrase \xe2\x80\x9cFrosty Treats\xe2\x80\x9d has acquired a secondary meaning. Accordingly, it is not\nprotectible under trademark law.\n{The court went on to find, inter alia, that there was no likelihood of confusion as to the source or\nsponsorship of SCEA\xe2\x80\x99s video game.}\n______________________________________________________________________________\nCartier, Inc. v. Four Star Jewelry Creations, Inc.\n348 F.Supp.2d 217, 228-231 (S.D.N.Y. 2004)\n{Defendant Four Star Jewelry Creations produced knockoffs of certain of plaintiff Cartier\xe2\x80\x99s\nwatches. Defendant argued that plaintiff\xe2\x80\x99s watch designs did not possess secondary meaning as\ndesignations of source and thus were unprotectable under trademark law.}\nMOTLEY, District Judge\n....\n2. Consumer Recognition: the Expert Reports\n[1] Defendants and Plaintiff both conducted surveys to test the secondary meaning of the four\nfamilies of Cartier watches at issue. Simply stated, the parties retained experts to poll the public as to\n55\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwhether they associated the Panthere, Pasha, Tank Americaine, and Tank Francaise, or more\nspecifically, their watch designs, with Cartier.\na. Defendants\xe2\x80\x99 Expert: Mr. Harry O\xe2\x80\x99Neill\n[2] Defendants retained Mr. Harry O\xe2\x80\x99Neill, Vice Chairman of Roper ASW. Mr. O\xe2\x80\x99Neill\xe2\x80\x99s report is\nhereinafter referenced as the \xe2\x80\x9cRoper Report.\xe2\x80\x9d\n[3] The Roper Report was created by intercepting shoppers at six shopping malls throughout the\ncountry: Atlanta, Boston, Chicago, Dallas, Los Angeles and San Francisco. O\xe2\x80\x99Neill attempted to pick\nmalls with \xe2\x80\x9crelatively upscale stores\xe2\x80\x9d in order to maximize the likelihood of identifying survey\nparticipants who represented the appropriate population. O\xe2\x80\x99Neill concluded that a mall that was\nanchored by Sears or Kmart, for example, would be unlikely to be frequented by consumers in the\nluxury watch market.\n[4] At the malls, shoppers were intercepted and screened to determine their eligibility to\nparticipate. Shoppers who were under 18, did not have their glasses or contact lenses available but\nrelied on them, or who worked for an advertising company, market research company, or watch\nretailer or manufacturer were ineligible to be surveyed. Id. Shoppers were further asked whether or\nnot they owned a watch worth at least $2,500. If so, they were qualified to answer the survey\xe2\x80\x99s\nquestions. If not, they were asked: \xe2\x80\x9cHow likely is it that you would consider buying a fine watch\xe2\x80\x94one\nthat would cost at least $2,500\xe2\x80\x94in the next couple of years\xe2\x80\x94very likely, fairly likely, not very likely or\nnot at all likely?\xe2\x80\x9d Those who responded indicated that they were \xe2\x80\x9cvery likely\xe2\x80\x9d or \xe2\x80\x9cfairly likely\xe2\x80\x9d qualified\nto participate.\n[5] Eligible participants were then shown pictures of a Cartier Tank Francaise, a Cartier Tank\nAmericaine, a Cartier Panthere, and five other watches made by other manufacturers, namely,\nChopard, Rolex, Tag Heuer, Movado and Bvlgari. With each picture, a participant was asked: \xe2\x80\x9cDo you\nassociate this style or design with the watches of one or more than one company?\xe2\x80\x9d If so, although\nunnecessary to establish secondary meaning, as an \xe2\x80\x9cadded extra attraction,\xe2\x80\x9d participants were asked a\nsecond, follow-up question as to whether they recognized to which particular company the watch\nbelonged.\n[6] The results of the Roper study are as follows: 38% of the respondents associated the style or\ndesign of the Tank Americaine with one company (with 13% correctly identifying Cartier as that\ncompany); 34% of the respondents said that they associated the style or design of the Tank Francaise\nwith one company (with 13% correctly identifying Cartier as that company); 31% associated the\nPanthere style or design with one company (with 13% correctly identifying Cartier as that company).\nBased on these figures in the Roper Report, O\xe2\x80\x99Neill concludes that a significant portion of the\npurchasing public does not associate the style or design of the watches at issue with Cartier.\n[7] What is noteworthy to the Court, however, is the considerable discrepancy in findings at the\nAtlanta mall vis a vis the results obtained in surveying shoppers at the other five malls. Of the six malls\ninvolved in creating the Roper Report, only the Atlanta mall was anchored by upscale retail\nestablishments. Whereas the Atlanta Mall was anchored by Neiman Marcus and Bloomingdales, the\nBoston mall was not anchored by any high-end stores, although there was one within five minutes\xe2\x80\x99\nwalking distance, the Chicago mall was anchored by Marshall Fields and Carson Pirie Scott and the\nDallas mall was anchored by a Dillar Folis and a Mervins. Further, in Atlanta, 69% of survey\nrespondents owned a watch worth at least $2,500, compared to the 41% of respondents at the other\nlocales. For those who did not already own a fine watch, 55% of the participants were \xe2\x80\x9cvery likely\xe2\x80\x9d to\npurchase one in the near future, compared to 15% of the participants who answered in similar fashion\nat the other malls. Accordingly, the court concludes that the population of survey respondents at the\nAtlanta mall was the most representative of the Cartier consumer population. Here, 63% of the\nparticipants associated the style and design of the Tank Francaise with one company, 60% of\n56\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nrespondents associated the Tank Americaine with one company, and 60% associated the style or\ndesign of the Panthere with one company.\nb. Plaintiffs\xe2\x80\x99 Expert: Dr. Sidney Lirtzman\n[8] Dr. Lirtzman criticized the Roper Report on the grounds that it surveyed the wrong population\ninsofar as it failed to distinguish between those \xe2\x80\x9cvery likely\xe2\x80\x9d to purchase an expensive, luxury\ntimepiece in the near future, and those who were \xe2\x80\x9cfairly likely\xe2\x80\x9d to make such a purchase. He testified\nthat the survey results from Atlanta indicate that if the Roper Report had been conducted exclusively\nat \xe2\x80\x9chigh end malls\xe2\x80\x9d and included only those persons more resolute about their intentions of buying a\nfine watch, the numbers of participants identifying the style or design of the three Cartier watches with\none company would have been higher.\n[9] To support this conclusion, Lirtzman conducted his own survey designed to parallel O\xe2\x80\x99Neill\xe2\x80\x99s,\nwith the exception of two important differences: Lirtzman only interviewed individuals who either\nalready owned a luxury watch or were \xe2\x80\x9cvery likely\xe2\x80\x9d to purchase a watch in the next year, whereas the\nRoper Report includes respondents who were \xe2\x80\x9cvery likely\xe2\x80\x9d to purchase a watch \xe2\x80\x9cin the near future\xe2\x80\x9d\nand persons who were \xe2\x80\x9cfairly likely\xe2\x80\x9d to purchase such a luxury watch \xe2\x80\x9cin the next couple of years.\xe2\x80\x9d\nFurther, Lirtzman intercepted individuals while they were shopping not in shopping malls, but in\nTourneau Watch Company stores, two in Manhattan and one in the Roosevelt Field Mall on Long\nIsland, NY, one in Costa Mesa, CA, and one in Century City in Los Angeles, CA. Tourneau is an\nauthorized dealer of Cartier watches. In light of this relationship, the Tourneau stores feature\nprominent posters of Cartier watches as well as display cases with Cartier watches.\n[10] The Lirtzman study also included a few less significant alterations from O\xe2\x80\x99Neill\xe2\x80\x99s study.\nLirtzman asked if the participants associated the watch\xe2\x80\x99s design with a particular source, as opposed to\nasking about whether the participant associated the \xe2\x80\x9cdesign or style\xe2\x80\x9d with a particular source. Because\nit is irrelevant to establishing secondary meaning, Lirtzman also did not ask O\xe2\x80\x99Neill\xe2\x80\x99s second question\nas to whether the participant could identify which company she or he associated with the watch\xe2\x80\x99s\ndesign. The Lirtzman study was also limited to the Tank Francaise and the Panthere because these\nwatches were the least recognized according to the Roper Report. Lirtzman showed participants\npictures of the Tag Heuer and Movado watches, like the Roper Report, achieving the same percentages\nfor recognition of these watches among participants, but excluded the other controls. Finally, the\nphotographs shown to survey participants in Lirtzman\xe2\x80\x99s study are increasingly clear and more uniform\nthan those shown to participants in the Roper study.\n[11] The results of Lirtzman\xe2\x80\x99s study are as follows: 61% of the survey respondents associated the\nTank Francaise\xe2\x80\x99s design with a particular source and 63% of the survey respondents associated the\nPanthere with a particular source. Lirtzman concludes from this result and the Atlanta results in the\nRoper Report that surveying individuals who either own or are very likely to purchase a luxury watch\nestablishes consumer recognition of the Cartier watch families at issue in the range of 50 to 60%.\n[12] Defendants\xe2\x80\x99 principal objection to Lirtzman\xe2\x80\x99s report is that in light of the Cartier posters at\nTourneau and the fact that its watches are among those displayed in Tourneau\xe2\x80\x99s cases, the result of the\nstudy are biased. The court, however, disagrees. There are a panoply of luxury watches prominently\nfeatured at Tourneau, both in the display cases and on the walls as posters and murals; Tourneau\nchanges its displays every few months; and there are 110 brands sold at Tourneau, all of which have\nmultiple lines or models within them. The Cartier case, for example, contains six to a dozen watch\nmodels, including the watches at issue. As such, while Cartier is sold at Tourneau and is displayed\namong the many images a consumer perceives while shopping there, the likelihood that a survey\nparticipant\xe2\x80\x99s reaction to the Tank Francaise and Panthere would have been so influenced is so minimal\nas to have little to no effect on the probative value of Lirtzman\xe2\x80\x99s report.\n[13] Moreover, the court credits the testimony of Dr. Lirtzman that valid market research does\nnot require a secondary meaning survey to be conducted in a vacuum given the nature of the questions\n57\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nposed to the survey participants. At Tourneau, consumers were asked questions in an environment in\nwhich one would actually purchase a luxury timepiece. Images of the products to be sold are\ncustomary in such an environment. Had the Lirtzman\xe2\x80\x99s pollsters asked about particular brands of the\nwatches shown to participants surrounded by promotional images, this would raise the specter of\npotential bias; but here, where the question was simply whether a participant associated the watch\nwith a particular company, without asking which one, no such concern arises.\n[14] Therefore, in light of a) the results obtained by defendants\xe2\x80\x99 expert in Atlanta, where the\nsurvey was undoubtedly taken in a mall where higher-end merchandise is sold, meaning, an\nenvironment more consistent with Cartier\xe2\x80\x99s consumer population, and where the respondents were\nincreasingly likely to either own or purchase a luxury time piece in the immediate future; b) plaintiffs\xe2\x80\x99\nsurvey showing that the Atlanta results are more likely to be accurate than those obtained in other\nfora; and c) the Court\xe2\x80\x99s concerns about the absence of persons within the age group 18\xe2\x80\x9334 or mistakes\nin tabulating their survey results in the Roper Report, the court adopts the testimony of Dr. Sidney\nLirtzman, finding that the results obtained in Atlanta and in the Lirtzman Report are representative of\nthe secondary meaning of the watches at issue.\n{The court ultimately found secondary meaning in all four Cartier watch designs and\ninfringement by defendant of those designs.}\n______________________________________________________________________________\nIn the following case, Board of Supervisors for Louisiana State University Agricultural & Mechanical\nCollege v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), the plaintiffs Louisiana State University, the\nUniversity of Oklahoma, Ohio State University, the University of Southern California, and Collegiate\nLicensing Company (the official licensing agent for the universities) brought suit against defendant\nSmack Apparel for its unauthorized sale of apparel bearing the universities\xe2\x80\x99 colors and various printed\nmessages associated with the universities (but not bearing the universities\xe2\x80\x99 names or mascots). The\nEastern District of Louisiana granted the plaintiffs\xe2\x80\x99 motion for summary judgment on the issue of\ntrademark infringement. Excerpted below is the Fifth Circuit\xe2\x80\x99s discussion of whether the universities\xe2\x80\x99\ncolors carry secondary meaning as designations of source.\nNote that we will soon return to the protectability of colors as trademarks in Part I.A.2.a when we\nconsider Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995).\n\n58\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nBoard of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack\nApparel Co.\n550 F.3d 465, 475-478 (5th Cir. 2008)\nREAVLEY, Circuit Judge:\n....\n[1] The parties correctly agree that a color scheme can be protected as a trademark when it has\nacquired secondary meaning and is non-functional. Qualitex Co. v. Jacobson Prods. Co.22 Although the\nparties discuss color at length in their briefs, the Universities do not claim that every instance in which\ntheir team colors appear violates their respective trademarks. Instead, the claimed trademark is in the\ncolors on merchandise that combines other identifying indicia referring to the Universities. It is\nappropriate therefore to consider not only the color but also the entire context in which the color and\nother indicia are presented on the t-shirts at issue here.\n[2] Smack contends that the claimed marks are too broad to encompass a trademark because the\nconcept of color along with other identifying indicia is not distinctive. We disagree. As noted, the\nstatute contemplates that a trademark may include any word, name, or symbol \xe2\x80\x9cor any combination\nthereof.\xe2\x80\x9d23 The Supreme Court has recognized that the Lanham Act describes the universe of\npermissible marks \xe2\x80\x9cin the broadest of terms.\xe2\x80\x9d24 Because the Court recognizes that trademarks may\ninclude color, we see no reason to exclude color plus other identifying indicia from the realm of\nprotectible marks provided the remaining requirements for protection are met. Thus, the first step\nhere is to ask whether the Universities\xe2\x80\x99 claimed marks have acquired secondary meaning.\n[3] Secondary meaning \xe2\x80\x9coccurs when, \xe2\x80\x98in the minds of the public, the primary significance of a\n[mark] is to identify the source of the product rather than the product itself.\xe2\x80\x99\xe2\x80\x9d Wal\xe2\x80\x93Mart Stores, Inc. v.\nSamara Bros., Inc.25 The inquiry is one of the public\xe2\x80\x99s mental association between the mark and the\nalleged mark holder. Sno\xe2\x80\x93Wizard Mfg., Inc. v. Eisemann Prods. Co.26 A mark has acquired secondary\nmeaning when it \xe2\x80\x9chas come through use to be uniquely associated with a specific source.\xe2\x80\x9d Pebble Beach\nCo. v. Tour 18 I Ltd.27 We have applied a multi-factor test for determining secondary meaning. The\nfactors include: \xe2\x80\x9c(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3)\namount and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and\nmagazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant\xe2\x80\x99s\nintent in copying the trade dress.\xe2\x80\x9d28 These factors in combination may show that consumers consider a\nmark to be an indicator of source even if each factor alone would not prove secondary meaning.29\n\n22\n\n514 U.S. 159, 163\xe2\x80\x9364 (1995).\n\n23\n\n15 U.S.C. \xc2\xa7 1127 (emphasis added).\n\n24\n\nQualitex, 514 U.S. at 162.\n\n25\n\n529 U.S. 205, 211 (2000) (citation omitted).\n\n791 F.2d 423, 427 (5th Cir. 1986) (\xe2\x80\x9c[T]he prime element of secondary meaning is \xe2\x80\x98a mental\nassociation in buyers\xe2\x80\x99 minds between the alleged mark and a single source of the product.\xe2\x80\x99\xe2\x80\x9d (citation\nomitted)).\n26\n\n27 155 F.3d 526, 536 (5th Cir. 1998) (internal quotation marks omitted), abrogation on other\ngrounds recognized by Eppendorf\xe2\x80\x93Netheler\xe2\x80\x93Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 356 (5th Cir.\n2002).\n28\n\nPebble Beach, 155 F.3d at 541.\n\n29\n\nId.\n59\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[4] There is no dispute in this case that for a significant period of time the Universities have been\nusing their color schemes along with other indicia to identify and distinguish themselves from others.\nSmack admits in its brief that the Universities\xe2\x80\x99 colors are well known among fans \xe2\x80\x9cas a shorthand\nnonverbal visual means of identifying the universities.\xe2\x80\x9d But according to Smack, the longstanding use\nof the school colors to adorn licensed products is not the same as public recognition that the school\ncolors identify the Universities as a unique source of goods. We think, however, that the factors for\ndetermining secondary meaning and an examination of the context in which the school colors are used\nand presented in this case support the conclusion that the secondary meaning of the marks is\ninescapable.\n[5] The record shows that the Universities have been using their color combinations since the late\n1800s.30 The color schemes appear on all manner of materials, including brochures, media guides, and\nalumni materials associated with the Universities. Significantly, each university features the color\nschemes on merchandise, especially apparel connected with school sports teams, and such prominent\ndisplay supports a finding of secondary meaning.31 The record also shows that sales of licensed\nproducts combining the color schemes with other references to the Universities annually exceed the\ntens of millions of dollars.32 As for advertising, the district court held that the Universities \xe2\x80\x9cadvertise\nitems with their school colors in almost every conceivable manner . . . .\xe2\x80\x9d33 It is not clear from the\nsummary judgment evidence where and how the Universities advertise their merchandise, but they\ncertainly do use their color schemes and indicia in numerous promotional materials aimed at students,\nfaculty, alumni, and the public in general, which strengthens the conclusion that the color schemes and\nindicia viewed in context of wearing apparel also serves as an indicator of the Universities as the\nsource or sponsor of the apparel. Furthermore, the district court correctly observed that the school\ncolor schemes have been referenced multiple times in newspapers and magazines and that the schools\nalso frequently refer to themselves using the colors.34 The district court did not specifically refer to any\nconsumer-survey evidence or direct consumer testimony, but it noted that Smack admitted it had\nincorporated the Universities\xe2\x80\x99 color schemes into its shirts to refer to the Universities and call them to\nthe mind of the consumer. Thus, Smack itself believed that the Universities\xe2\x80\x99 color schemes had\nsecondary meaning that could influence consumers, which further supports the conclusion that there\nis secondary meaning here.35 Given the longstanding use of the color scheme marks and their\n\nOSU adopted its school colors in 1878, while LSU has been using its colors since 1893, and OU\nand USC since 1895.\n30\n\nSee Pebble Beach, 155 F.3d at 541\xe2\x80\x9352 (prominent display of golf hole\xe2\x80\x99s trade dress in\nadvertising supported finding of secondary meaning as a designator of source).\n31\n\nFor example, LSU sells between $10 and $20 million worth of goods each year, while the annual\nsales volume for the other schools is approximately $13 million for USC, $20 million for OU, and $50\nmillion for OSU.\n32\n\n33\n\nBd. of Supervisors, 438 F.Supp.2d at 658.\n\n34\n\nFor example, LSU and third parties have referred to that university as the \xe2\x80\x9cPurple and Gold.\xe2\x80\x9d\n\nSee also Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 663 (7th Cir. 1995). We also note\nthat the record does contain survey evidence compiled by the Universities indicating that\napproximately thirty percent of consumers interviewed believed two of Smack\xe2\x80\x99s t-shirts were\nproduced or sponsored by the Universities. We have indicated that survey evidence often may be the\nmost direct and persuasive evidence of secondary meaning. Sugar Busters LLC v. Brennan, 177 F.3d\n258, 269 (5th Cir. 1999). Nevertheless, Smack moved in limine to exclude the Universities\xe2\x80\x99 survey\nevidence, and the district court found it unnecessary to rule on the motion because of the other\n35\n\n60\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nprominent display on merchandise, in addition to the well-known nature of the colors as shorthand for\nthe schools themselves and Smack\xe2\x80\x99s intentional use of the colors and other references, there is no\ngenuine issue of fact that when viewed in the context of t-shirts or other apparel, the marks at issue\nhere have acquired the secondary meaning of identifying the Universities in the minds of consumers as\nthe source or sponsor of the products rather than identifying the products themselves.\n[6] We think this conclusion is consistent with the importance generally placed on sports team\nlogos and colors by the public. We have previously noted, although not in the context of secondary\nmeaning, that team emblems and symbols are sold because they serve to identify particular teams,\norganizations, or entities with which people wish to identify. See Boston Prof\xe2\x80\x99l Hockey Ass\xe2\x80\x99n v. Dallas\nCap & Emblem Mfg., Inc.36 We think this desire by consumers to associate with a particular university\nsupports the conclusion that team colors and logos are, in the minds of the fans and other consumers,\nsource indicators of team-related apparel. By associating the color and other indicia with the\nuniversity, the fans perceive the university as the source or sponsor of the goods because they want to\nassociate with that source.\n[7] Smack argues that because photographs of businesses near the campuses of the Universities\nshow use of school colors by those businesses, consumers in college towns merely associate school\ncolors with \xe2\x80\x9csupport of the home team.\xe2\x80\x9d Smack cites no authority or supporting evidence for its\ncontention, however. Moreover, the fact that other businesses in college towns may use the same\ncolors as a local university does not create an issue of fact as to the secondary meaning of the colors\nused in merchandise that the Universities indisputably produce, especially given Smack\xe2\x80\x99s admission of\nintentional use of the colors to influence consumers.\n[8] Smack also argues that because the Universities grant licenses to many licensees, a consumer\nmay not identify a university as the single source of the product. The fact that the Universities may\ngrant licenses to many licensees to sell authorized products does not negate the fact that the schools\nare still the sources of the marks.37 We conclude that the record establishes secondary meaning in the\nmarks here.\n{The Fifth Circuit went on to affirm the E.D.La.\xe2\x80\x99s disposition of the case in all respects.}\nComments and Questions\n1. Necessary proportion of relevant consumer population perceiving secondary meaning. Courts\ngenerally require that a \xe2\x80\x9csubstantial\xe2\x80\x9d proportion of the relevant consumer population perceive the\ndescriptive mark as a designation of source for that mark to qualify for protection. See, e.g., Coach\nLeatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 168 (2d Cir. 1991) (\xe2\x80\x9cThe plaintiff is not required to\nestablish that all consumers relate the product to its producer; it need only show that a substantial\nsegment of the relevant consumer group makes this connection.\xe2\x80\x9d). But what proportion is substantial?\nIf survey evidence is presented, courts have generally been satisfied, as in the Cartier case above, with\na proportion at or above 50%. See, e.g., Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946\n(2d Cir. 1981) (finding 50% association to be probative of secondary meaning in book cover design);\nevidence in the record. Because no party has raised the issue, we express no opinion on the\ncorrectness of the district court\xe2\x80\x99s belief and merely note the presence of the survey evidence in the\nrecord.\n36\n\n510 F.2d 1004, 1011 (5th Cir. 1975).\n\n37 Cf. Taco Cabana Int\xe2\x80\x99l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121 (5th Cir. 1991) (\xe2\x80\x9cAn owner may\nlicense its trademark or trade dress and retain proprietary rights if the owner maintains adequate\ncontrol over the quality of goods and services that the licensee sells with the mark or dress.\xe2\x80\x9d).\n\n61\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nSpraying Systems Co. v. Delavan, 975 F.2d 387, 394 (7th Cir. 1992) (\xe2\x80\x9cWhile a 50-percent figure is\nregarded as clearly sufficient to establish secondary meaning, a figure in the thirties can only be\nconsidered marginal.\xe2\x80\x9d); Boston Beer Co. Ltd. Partnership v. Slesar Bros. Brewing Co., 9 F.3d 175, 183\nn.5 (1st Cir. 1993) (characterizing a 36% showing of association as \xe2\x80\x9chardly overwhelming\xe2\x80\x9d).\nMore generally, courts may require more compelling evidence of secondary meaning for marks\nthat are highly descriptive. See MCCARTHY \xc2\xa7 15:28 (\xe2\x80\x9c[A]s a general rule of thumb, the more descriptive\nthe term, the greater the evidentiary burden to establish secondary meaning. That is, the less\ndistinctive the term, the greater the quantity and quality of evidence of secondary meaning needed to\nprove the requisite degree of distinctiveness.\xe2\x80\x9d).\n2. The statutory mechanism for registration of descriptive marks with secondary meaning.\nLanham Act \xc2\xa7\xc2\xa7 2(e) & 2(f), 15 U.S.C. \xc2\xa7\xc2\xa7 1052(e) & (f), provide for the registration of descriptive marks\nwith secondary meaning. The relevant portions of \xc2\xa7 2 read as follows:\nNo trademark by which the goods of the applicant may be distinguished from the goods\nof others shall be refused registration on the principal register on account of its nature\nunless it . . .\n(e) Consists of a mark which (1) when used on or in connection with the goods of the\napplicant is merely descriptive or deceptively misdescriptive of them.\n(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this\nsection, nothing in this chapter shall prevent the registration of a mark used by the\napplicant which has become distinctive of the applicant\xe2\x80\x99s goods in commerce.\n15 U.S.C. \xc2\xa7 1052.\nc.\n\nGeneric Marks\n\nTrademarks may be deemed generic either (1) because they are born generic or (2) because they\nlose their source distinctiveness through a process of \xe2\x80\x9cgenericide.\xe2\x80\x9d For examples of marks born\ngeneric, see Schwan\xe2\x80\x99s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 79 U.S.P.Q.2d 1790 (8th Cir. 2006)\n(finding BRICK OVEN for frozen pizza to be generic); Ale House Management, Inc. v. Raleigh Ale House, Inc.,\n205 F.3d 137, 54 U.S.P.Q.2d 1040 (4th Cir. 2000) (finding ALE HOUSE for chain of restaurants serving\nfood and beer to be generic); Continental Airlines Inc. v. United Air Lines Inc., 53 U.S.P.Q.2d 1385, 1999\nWL 1421649 (TTAB 2000) (finding E-TICKET for electronic ticketing services to be generic); Nat\xe2\x80\x99l Conf.\nof Bar Examiners v. Multistate Legal Studies, Inc., 692 F.2d 478, 487 (7th Cir. 1982) (finding MULTISTATE\nBAR EXAMINATION for legal testing services to be generic). For examples of marks that have fallen to\ngenericide, see Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (Comm\xe2\x80\x99r Pat. 1950) (cancelling\nregistration of ESCALATOR mark for moving staircases); Duncan F. Duncan, Inc. v. Royal Tops Mfg. Co.,\n343 F.2d 655, 662 (7th Cir. 1965) (finding that the term \xe2\x80\x9cyo-yo\xe2\x80\x9d had long since become generic despite\nplaintiff\xe2\x80\x99s \xe2\x80\x9cherculean efforts to fasten upon the toy the generic term, \xe2\x80\x98return top\xe2\x80\x99\xe2\x80\x9d); Bayer Co. v. United\nDrug Co., 272 F. 505, 510 (D.N.Y. 1921) (finding as to the mark ASPIRIN for acetyl salicylic acid that\n\xe2\x80\x9c[a]mong consumers generally the name has gone into the public domain\xe2\x80\x9d); King-Seeley Thermos Co. v.\nAladdin Indus. Inc., 321 F.2d 577 (2d Cir. 1963) (finding \xe2\x80\x9cthermos\xe2\x80\x9d with a lower-case \xe2\x80\x9ct\xe2\x80\x9d for vacuuminsulated containers bottles to be generic, but \xe2\x80\x9cThermos\xe2\x80\x9d with an upper-case \xe2\x80\x9cT\xe2\x80\x9d to be a valid\ntrademark).\nThere are a variety of simple rules of thumb that inform courts\xe2\x80\x99 determination of whether a mark\nis generic or descriptive. Abercrombie outlined a genus/species distinction: \xe2\x80\x9cA generic term is one that\nrefers, or has come to be understood as referring, to the genus of which the particular product is a\nspecies.\xe2\x80\x9d Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). There is also the\n\xe2\x80\x9cwho-are-you/what-are-you\xe2\x80\x9d distinction:\n\n62\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nIn determining whether a term is generic, we have often relied upon the \xe2\x80\x9cwho-areyou/what-are-you\xe2\x80\x9d test: \xe2\x80\x9cA mark answers the buyer\xe2\x80\x99s questions \xe2\x80\x98Who are you?\xe2\x80\x99 \xe2\x80\x98Where\ndo you come from?\xe2\x80\x99 \xe2\x80\x98Who vouches for you?\xe2\x80\x99 But the [generic] name of the product\nanswers the question \xe2\x80\x98What are you?\xe2\x80\x99\xe2\x80\x9d Official Airline Guides, Inc. v. Goss, 6 F.3d 1385,\n1391 (9th Cir. 1993) (quoting 1 J. Thomas McCarthy, Trademarks and Unfair Competition\n\xc2\xa7 12.01 (3d ed.1992)). Under this test, \xe2\x80\x9c[i]f the primary significance of the trademark is to\ndescribe the type of product rather than the producer, the trademark [is] a generic term\nand [cannot be] a valid trademark.\xe2\x80\x9d Anti\xe2\x80\x93Monopoly, Inc. v. General Mills Fun Group, 611\nF.2d 296, 304 (9th Cir. 1979) (emphases added)\nFilipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). Courts\nwill also rely on the proposition that a mark is generic if it is the \xe2\x80\x9ccommon descriptive name\xe2\x80\x9d of the\ngood or service to which it is affixed. See, e.g., San Francisco Arts & Athletics, Inc. v. U.S. Olympic\nCommittee, 483 U.S. 522, 532 n. 7 (1987) (\xe2\x80\x9cA common descriptive name of a product or service is\ngeneric. Because a generic name by definition does not distinguish the identity of a particular product,\nit cannot be registered as a trademark under the Lanham Act.\xe2\x80\x9d (emphasis in original)).\nBut while the basic principles underlying the genericness analysis are straightforward,\ndistinguishing between a highly descriptive mark and a generic mark can be exceedingly difficult in\nclose cases, and the stakes in such cases can be exceedingly high.1 Recall that even a \xe2\x80\x9chighly\ndescriptive\xe2\x80\x9d mark will qualify for protection upon a showing of secondary meaning. A generic mark, by\ncontrast, is unredeemable; it will never receive protection under any circumstances. Genericness\ndoctrine, meanwhile, can be quite malleable.\nThe following two cases offer different looks at trademark genericism. The first is the Supreme\nCourt case United States Patent and Trademark Office v. Booking.com B.V., __ U.S. __, 140 S.Ct. 2298 (June\n30, 2020). In analyzing whether the mark BOOKING.COM is generic, the three opinions in the case engage\na variety of overarching questions in genericism doctrine, such as whether the facts of consumer\nperception or the goals of competition policy should drive the genericism analysis. The second case\nemerged out of a dispute between the giant snackfood maker Frito-Lay North America, Inc. and an\nupstart competitor, Princeton Vanguard LLC, who introduced \xe2\x80\x9cpretzel crisps\xe2\x80\x9d into the market and\nsought to trademark the term. The Princeton Vanguard opinion is quite lengthy but useful for our\npurposes because it shows the wide variety of evidence that parties may present in a hard-fought\ngenericism dispute. It will be of special interest to students interested in the nuts-and-bolts of frontline\ngenericism litigation.\nUnited States Patent and Trademark Office v. Booking.com B.V.\nNo. 19-46, __ U.S. __ (June 30, 2020)\nJustice GINSBURG delivered the opinion of the Court.\n[1] This case concerns eligibility for federal trademark registration. Respondent Booking.com, an\nenterprise that maintains a travel-reservation website by the same name, sought to register the mark\n\xe2\x80\x9cBooking.com.\xe2\x80\x9d Concluding that \xe2\x80\x9cBooking.com\xe2\x80\x9d is a generic name for online hotel-reservation services,\nthe U. S. Patent and Trademark Office (PTO) refused registration.\n\nIs \xe2\x80\x9cApp Store\xe2\x80\x9d a generic term for an online platform selling apps? See Apple, Inc. v. Amazon.com\nInc., No. 11 Civ. 1327, 2011 WL 2638191, at *7 (N.D. Cal. July 6, 2011) (\xe2\x80\x9cThe court assumes without\ndeciding that the \xe2\x80\x98App Store\xe2\x80\x99 mark is protectable as a descriptive mark that has arguably acquired\nsecondary meaning.\xe2\x80\x9d But the court found, on Apple\xe2\x80\x99s preliminary injunction motion, that Amazon\xe2\x80\x99s use\nof \xe2\x80\x9cApp Store\xe2\x80\x9d to describe its app store did not create a likelihood of confusion.).\n1\n\n63\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[2] A generic name\xe2\x80\x94the name of a class of products or services\xe2\x80\x94is ineligible for federal\ntrademark registration. The word \xe2\x80\x9cbooking,\xe2\x80\x9d the parties do not dispute, is generic for hotel-reservation\nservices. \xe2\x80\x9cBooking.com\xe2\x80\x9d must also be generic, the PTO maintains, under an encompassing rule the PTO\ncurrently urges us to adopt: The combination of a generic word and \xe2\x80\x9c.com\xe2\x80\x9d is generic.\n[3] In accord with the first- and second-instance judgments in this case, we reject the PTO\xe2\x80\x99s\nsweeping rule. A term styled \xe2\x80\x9cgeneric.com\xe2\x80\x9d is a generic name for a class of goods or services only if the\nterm has that meaning to consumers. Consumers, according to lower court determinations\nuncontested here by the PTO, do not perceive the term \xe2\x80\x9cBooking.com\xe2\x80\x9d to signify online hotelreservation services as a class. In circumstances like those this case presents, a \xe2\x80\x9cgeneric.com\xe2\x80\x9d term is\nnot generic and can be eligible for federal trademark registration.\nI\nA\n....\n[4] The Lanham Act not only arms trademark owners with federal claims for relief; importantly, it\nestablishes a system of federal trademark registration. The owner of a mark on the principal register\nenjoys \xe2\x80\x9cvaluable benefits,\xe2\x80\x9d including a presumption that the mark is valid. Iancu v. Brunetti, 588 U. S. \xe2\x80\x93\xe2\x80\x93\n, \xe2\x80\x93\xe2\x80\x93 (2019) (slip op., at 2); see \xc2\xa7\xc2\xa7 1051, 1052. The supplemental register contains other product and\nservice designations, some of which could one day gain eligibility for the principal register. See \xc2\xa7 1091.\nThe supplemental register accords more modest benefits; notably, a listing on that register announces\none\xe2\x80\x99s use of the designation to others considering a similar mark. See 3 J. McCarthy, Trademarks and\nUnfair Competition \xc2\xa7 19:37 (5th ed. 2019) (hereinafter McCarthy). Even without federal registration, a\nmark may be eligible for protection against infringement under both the Lanham Act and other sources\nof law. See Matal, 582 U. S., at \xe2\x80\x93\xe2\x80\x93 \xe2\x80\x93 \xe2\x80\x93\xe2\x80\x93 (slip op., at 4\xe2\x80\x935).\n[5] Prime among the conditions for registration, the mark must be one \xe2\x80\x9cby which the goods of the\napplicant may be distinguished from the goods of others.\xe2\x80\x9d \xc2\xa7 1052; see \xc2\xa7 1091(a) (supplemental\nregister contains \xe2\x80\x9cmarks capable of distinguishing . . . goods or services\xe2\x80\x9d). Distinctiveness is often\nexpressed on an increasing scale: Word marks \xe2\x80\x9cmay be (1) generic; (2) descriptive; (3) suggestive; (4)\narbitrary; or (5) fanciful.\xe2\x80\x9d Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).\n....\n[6] At the lowest end of the distinctiveness scale is \xe2\x80\x9cthe generic name for the goods or services.\xe2\x80\x9d\n\xc2\xa7\xc2\xa7 1127, 1064(3), 1065(4). The name of the good itself (e.g., \xe2\x80\x9cwine\xe2\x80\x9d) is incapable of \xe2\x80\x9cdistinguish[ing]\n[one producer\xe2\x80\x99s goods] from the goods of others\xe2\x80\x9d and is therefore ineligible for registration. \xc2\xa7 1052;\nsee \xc2\xa7 1091(a). Indeed, generic terms are ordinarily ineligible for protection as trademarks at all. See\nRestatement (Third) of Unfair Competition \xc2\xa7 15, p. 142 (1993); Otokoyama Co. v. Wine of Japan Import,\nInc., 175 F.3d 266, 270 (CA2 1999) (\xe2\x80\x9c[E]veryone may use [generic terms] to refer to the goods they\ndesignate.\xe2\x80\x9d).\nB\n[7] Booking.com is a digital travel company that provides hotel reservations and other services\nunder the brand \xe2\x80\x9cBooking.com,\xe2\x80\x9d which is also the domain name of its website.1 Booking.com filed\n\n1 A domain name identifies an address on the Internet. The rightmost component of a domain\nname\xe2\x80\x94\xe2\x80\x9c.com\xe2\x80\x9d in \xe2\x80\x9cBooking.com\xe2\x80\x9d\xe2\x80\x94is known as the top-level domain. Domain names are unique; that is,\na given domain name is assigned to only one entity at a time.\n\n64\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\napplications to register four marks in connection with travel-related services, each with different\nvisual features but all containing the term \xe2\x80\x9cBooking.com.\xe2\x80\x9d2\n[8] Both a PTO examining attorney and the PTO\xe2\x80\x99s Trademark Trial and Appeal Board concluded\nthat the term \xe2\x80\x9cBooking.com\xe2\x80\x9d is generic for the services at issue and is therefore unregistrable.\n\xe2\x80\x9cBooking,\xe2\x80\x9d the Board observed, means making travel reservations, and \xe2\x80\x9c.com\xe2\x80\x9d signifies a commercial\nwebsite. The Board then ruled that \xe2\x80\x9ccustomers would understand the term BOOKING.COM primarily to\nrefer to an online reservation service for travel, tours, and lodgings.\xe2\x80\x9d Alternatively, the Board held that\neven if \xe2\x80\x9cBooking.com\xe2\x80\x9d is descriptive, not generic, it is unregistrable because it lacks secondary\nmeaning.\n[9] Booking.com sought review in the U. S. District Court for the Eastern District of Virginia,\ninvoking a mode of review that allows Booking.com to introduce evidence not presented to the agency.\nSee \xc2\xa7 1071(b). Relying in significant part on Booking.com\xe2\x80\x99s new evidence of consumer perception, the\nDistrict Court concluded that \xe2\x80\x9cBooking.com\xe2\x80\x9d\xe2\x80\x94unlike \xe2\x80\x9cbooking\xe2\x80\x9d\xe2\x80\x94is not generic. The \xe2\x80\x9cconsuming\npublic,\xe2\x80\x9d the court found, \xe2\x80\x9cprimarily understands that BOOKING.COM does not refer to a genus, rather it\nis descriptive of services involving \xe2\x80\x98booking\xe2\x80\x99 available at that domain name.\xe2\x80\x9d Booking.com B.V. v. Matal,\n278 F.Supp.3d 891, 918 (2017). Having determined that \xe2\x80\x9cBooking.com\xe2\x80\x9d is descriptive, the District\nCourt additionally found that the term has acquired secondary meaning as to hotel-reservation\nservices. For those services, the District Court therefore concluded, Booking.com\xe2\x80\x99s marks meet the\ndistinctiveness requirement for registration.\n[10] The PTO appealed only the District Court\xe2\x80\x99s determination that \xe2\x80\x9cBooking.com\xe2\x80\x9d is not generic.\nFinding no error in the District Court\xe2\x80\x99s assessment of how consumers perceive the term\n\xe2\x80\x9cBooking.com,\xe2\x80\x9d the Court of Appeals for the Fourth Circuit affirmed the court of first instance\xe2\x80\x99s\njudgment. In so ruling, the appeals court rejected the PTO\xe2\x80\x99s contention that the combination of \xe2\x80\x9c.com\xe2\x80\x9d\nwith a generic term like \xe2\x80\x9cbooking\xe2\x80\x9d \xe2\x80\x9cis necessarily generic.\xe2\x80\x9d 915 F. 3d 171, 184 (2019). Dissenting in\nrelevant part, Judge Wynn concluded that the District Court mistakenly presumed that \xe2\x80\x9cgeneric.com\xe2\x80\x9d\nterms are usually descriptive, not generic.\n[11] We granted certiorari, 589 U. S. \xe2\x80\x93\xe2\x80\x93, 140 S.Ct. 489 (2019), and now affirm the Fourth Circuit\xe2\x80\x99s\ndecision.\nII\n[12] Although the parties here disagree about the circumstances in which terms like\n\xe2\x80\x9cBooking.com\xe2\x80\x9d rank as generic, several guiding principles are common ground. First, a \xe2\x80\x9cgeneric\xe2\x80\x9d term\nnames a \xe2\x80\x9cclass\xe2\x80\x9d of goods or services, rather than any particular feature or exemplification of the class.\n{S}ee \xc2\xa7\xc2\xa7 1127, 1064(3), 1065(4) (referring to \xe2\x80\x9cthe generic name for the goods or services\xe2\x80\x9d); Park \xe2\x80\x99N\nFly, 469 U.S. at 194 (\xe2\x80\x9cA generic term is one that refers to the genus of which the particular product is a\nspecies.\xe2\x80\x9d). Second, for a compound term, the distinctiveness inquiry trains on the term\xe2\x80\x99s meaning as a\nwhole, not its parts in isolation. {S}ee Estate of P. D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S.\n538, 545\xe2\x80\x93546 (1920). Third, the relevant meaning of a term is its meaning to consumers. {S}ee Bayer\nCo. v. United Drug Co., 272 F. 505, 509 (SDNY 1921) (Hand, J.) (\xe2\x80\x9cWhat do the buyers understand by the\nword for whose use the parties are contending?\xe2\x80\x9d). Eligibility for registration, all agree, turns on the\nmark\xe2\x80\x99s capacity to \xe2\x80\x9cdistinguis[h]\xe2\x80\x9d goods \xe2\x80\x9cin commerce.\xe2\x80\x9d \xc2\xa7 1052. Evidencing the Lanham Act\xe2\x80\x99s focus on\nconsumer perception, the section governing cancellation of registration provides that \xe2\x80\x9c[t]he primary\nFor simplicity, this opinion uses the term \xe2\x80\x9ctrademark\xe2\x80\x9d to encompass the marks whose\nregistration Booking.com seeks. Although Booking.com uses the marks in connection with services, not\ngoods, rendering the marks \xe2\x80\x9cservice marks\xe2\x80\x9d rather than \xe2\x80\x9ctrademarks\xe2\x80\x9d under 15 U.S.C. \xc2\xa7 1127, that\ndistinction is immaterial to the issue before us.\n2\n\n65\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nsignificance of the registered mark to the relevant public . . . shall be the test for determining whether\nthe registered mark has become the generic name of goods or services.\xe2\x80\x9d \xc2\xa7 1064(3).3\n[13] Under these principles, whether \xe2\x80\x9cBooking.com\xe2\x80\x9d is generic turns on whether that term, taken\nas a whole, signifies to consumers the class of online hotel-reservation services. Thus, if \xe2\x80\x9cBooking.com\xe2\x80\x9d\nwere generic, we might expect consumers to understand Travelocity\xe2\x80\x94another such service\xe2\x80\x94to be a\n\xe2\x80\x9cBooking.com.\xe2\x80\x9d We might similarly expect that a consumer, searching for a trusted source of online\nhotel-reservation services, could ask a frequent traveler to name her favorite \xe2\x80\x9cBooking.com\xe2\x80\x9d provider.\n[14] Consumers do not in fact perceive the term \xe2\x80\x9cBooking.com\xe2\x80\x9d that way, the courts below\ndetermined. The PTO no longer disputes that determination. See Pet. for Cert. I; Brief for Petitioners\n17\xe2\x80\x9318 (contending only that a consumer-perception inquiry was unnecessary, not that the lower\ncourts\xe2\x80\x99 consumer-perception determination was wrong). That should resolve this case: Because\n\xe2\x80\x9cBooking.com\xe2\x80\x9d is not a generic name to consumers, it is not generic.\nIII\n[15] Opposing that conclusion, the PTO urges a nearly per se rule that would render\n\xe2\x80\x9cBooking.com\xe2\x80\x9d ineligible for registration regardless of specific evidence of consumer perception. In the\nPTO\xe2\x80\x99s view, which the dissent embraces, when a generic term is combined with a generic top-level\ndomain like \xe2\x80\x9c.com,\xe2\x80\x9d the resulting combination is generic. In other words, every \xe2\x80\x9cgeneric.com\xe2\x80\x9d term is\ngeneric according to the PTO, absent exceptional circumstances.4\n[16] The PTO\xe2\x80\x99s own past practice appears to reflect no such comprehensive rule. See, e.g.,\nTrademark Registration No. 3,601,346 (\xe2\x80\x9cART.COM\xe2\x80\x9d on principal register for, inter alia, \xe2\x80\x9c[o]nline retail\nstore services\xe2\x80\x9d offering \xe2\x80\x9cart prints, original art, [and] art reproductions\xe2\x80\x9d); Trademark Registration No.\n2,580,467 (\xe2\x80\x9cDATING.COM\xe2\x80\x9d on supplemental register for \xe2\x80\x9cdating services\xe2\x80\x9d). Existing registrations\ninconsistent with the rule the PTO now advances would be at risk of cancellation if the PTO\xe2\x80\x99s current\nview were to prevail. See \xc2\xa7 1064(3). We decline to adopt a rule essentially excluding registration of\n\xe2\x80\x9cgeneric.com\xe2\x80\x9d marks. As explained below, we discern no support for the PTO\xe2\x80\x99s current view in\ntrademark law or policy.\nA\n[17] The PTO urges that the exclusionary rule it advocates follows from a common-law principle,\napplied in Goodyear\xe2\x80\x99s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), that a\ngeneric corporate designation added to a generic term does not confer trademark eligibility. In\nThe U. S. Patent and Trademark Office (PTO) suggests that the primary-significance test might\nnot govern outside the context of \xc2\xa7 1064(3), which subjects to cancellation marks previously\nregistered that have \xe2\x80\x9cbecome\xe2\x80\x9d generic. See Reply Brief 11; Tr. of Oral Arg. 19. To so confine the\nprimary-significance test, however, would upset the understanding, shared by Courts of Appeals and\nthe PTO\xe2\x80\x99s own manual for trademark examiners, that the same test governs whether a mark is\nregistrable in the first place. See, e.g., In re Cordua Restaurants, Inc., 823 F.3d 594, 599 (CA Fed. 2016);\nNartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 404 (CA6 2002); Genesee Brewing Co. v. Stroh\nBrewing Co., 124 F.3d 137, 144 (CA2 1997); Trademark Manual of Examining Procedure\n\xc2\xa7 1209.01(c)(i), p. 1200\xe2\x80\x93267 (Oct. 2018), http://tmep.uspto.gov. We need not address today the scope\nof the primary-significance test\xe2\x80\x99s application, for our analysis does not depend on whether one\nmeaning among several is \xe2\x80\x9cprimary.\xe2\x80\x9d Sufficient to resolve this case is the undisputed principle that\nconsumer perception demarcates a term\xe2\x80\x99s meaning.\n3\n\n4 The PTO notes only one possible exception: Sometimes adding a generic term to a generic toplevel domain results in wordplay (for example, \xe2\x80\x9ctennis.net\xe2\x80\x9d). That special case, the PTO acknowledges,\nis not presented here and does not affect our analysis.\n\n66\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nGoodyear, a decision predating the Lanham Act, this Court held that \xe2\x80\x9cGoodyear Rubber Company\xe2\x80\x9d was\nnot \xe2\x80\x9ccapable of exclusive appropriation.\xe2\x80\x9d Id., at 602. Standing alone, the term \xe2\x80\x9cGoodyear Rubber\xe2\x80\x9d could\nnot serve as a trademark because it referred, in those days, to \xe2\x80\x9cwell-known classes of goods produced\nby the process known as Goodyear\xe2\x80\x99s invention.\xe2\x80\x9d Ibid. \xe2\x80\x9c[A]ddition of the word \xe2\x80\x98Company\xe2\x80\x99\xe2\x80\x9d supplied no\nprotectable meaning, the Court concluded, because adding \xe2\x80\x9cCompany\xe2\x80\x9d \xe2\x80\x9conly indicates that parties have\nformed an association or partnership to deal in such goods.\xe2\x80\x9d Ibid. Permitting exclusive rights in\n\xe2\x80\x9cGoodyear Rubber Company\xe2\x80\x9d (or \xe2\x80\x9cWine Company, Cotton Company, or Grain Company\xe2\x80\x9d), the Court\nexplained, would tread on the right of all persons \xe2\x80\x9cto deal in such articles, and to publish the fact to the\nworld.\xe2\x80\x9d Id., at 602\xe2\x80\x93603.\n[18] \xe2\x80\x9cGeneric.com,\xe2\x80\x9d the PTO maintains, is like \xe2\x80\x9cGeneric Company\xe2\x80\x9d and is therefore ineligible for\ntrademark protection, let alone federal registration. According to the PTO, adding \xe2\x80\x9c.com\xe2\x80\x9d to a generic\nterm\xe2\x80\x94like adding \xe2\x80\x9cCompany\xe2\x80\x9d\xe2\x80\x94\xe2\x80\x9cconveys no additional meaning that would distinguish [one\nprovider\xe2\x80\x99s] services from those of other providers.\xe2\x80\x9d Brief for Petitioners 44. The dissent endorses that\nproposition: \xe2\x80\x9cGeneric.com\xe2\x80\x9d conveys that the generic good or service is offered online \xe2\x80\x9cand nothing\nmore.\xe2\x80\x9d Post, at \xe2\x80\x93\xe2\x80\x93.\n[19] That premise is faulty. A \xe2\x80\x9cgeneric.com\xe2\x80\x9d term might also convey to consumers a sourceidentifying characteristic: an association with a particular website. As the PTO and the dissent\nelsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time, so\n\xe2\x80\x9c[a] consumer who is familiar with that aspect of the domain-name system can infer that\nBOOKING.COM refers to some specific entity.\xe2\x80\x9d Brief for Petitioners 40. See also Tr. of Oral Arg. 5\n(\xe2\x80\x9cBecause domain names are one of a kind, a significant portion of the public will always understand a\ngeneric \xe2\x80\x98.com\xe2\x80\x99 term to refer to a specific business. . . .\xe2\x80\x9d); post, at \xe2\x80\x93\xe2\x80\x93\xe2\x80\x93\xe2\x80\x93 (the \xe2\x80\x9cexclusivity\xe2\x80\x9d of \xe2\x80\x9cgeneric.com\xe2\x80\x9d\nterms sets them apart from terms like \xe2\x80\x9cWine, Inc.\xe2\x80\x9d and \xe2\x80\x9cThe Wine Company\xe2\x80\x9d). Thus, consumers could\nunderstand a given \xe2\x80\x9cgeneric.com\xe2\x80\x9d term to describe the corresponding website or to identify the\nwebsite\xe2\x80\x99s proprietor. We therefore resist the PTO\xe2\x80\x99s position that \xe2\x80\x9cgeneric.com\xe2\x80\x9d terms are capable of\nsignifying only an entire class of online goods or services and, hence, are categorically incapable of\nidentifying a source.5\n[20] The PTO\xe2\x80\x99s reliance on Goodyear is flawed in another respect. The PTO understands Goodyear\nto hold that \xe2\x80\x9cGeneric Company\xe2\x80\x9d terms \xe2\x80\x9care ineligible for trademark protection as a matter of law\xe2\x80\x9d\xe2\x80\x94\nregardless of how \xe2\x80\x9cconsumers would understand\xe2\x80\x9d the term. Brief for Petitioners 38. But, as noted,\nwhether a term is generic depends on its meaning to consumers. Supra, at \xe2\x80\x93\xe2\x80\x93. That bedrock principle of\nthe Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer\nIn passing, the PTO urges us to disregard that a domain name is assigned to only one entity at a\ntime. That fact, the PTO suggests, stems from \xe2\x80\x9ca functional characteristic of the Internet and the\ndomain-name system,\xe2\x80\x9d and functional features cannot receive trademark protection. Brief for\nPetitioners 32. \xe2\x80\x9c[A] product feature is functional, and cannot serve as a trademark,\xe2\x80\x9d we have held, \xe2\x80\x9cif it\nis essential to the use or purpose of the article or if it affects the cost or quality of the article.\xe2\x80\x9d TrafFix\nDevices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001) (internal\nquotation marks omitted); see \xc2\xa7 1052(e) (barring from the principal registrar \xe2\x80\x9cany matter that, as a\nwhole, is functional\xe2\x80\x9d). This case, however, does not concern trademark protection for a feature of the\nInternet or the domain-name system; Booking.com lays no claim to the use of unique domain names\ngenerally. Nor does the PTO contend that the particular domain name \xe2\x80\x9cBooking.com\xe2\x80\x9d is essential to the\nuse or purpose of online hotel-reservation services, affects these services\xe2\x80\x99 cost or quality, or is\notherwise necessary for competitors to use. In any event, we have no occasion to decide the\napplicability of \xc2\xa7 1052(e)\xe2\x80\x99s functionality bar, for the sole ground on which the PTO refused\nregistration, and the sole claim before us, is that \xe2\x80\x9cBooking.com\xe2\x80\x9d is generic.\n5\n\n67\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nperception. Instead, Goodyear reflects a more modest principle harmonious with Congress\xe2\x80\x99 subsequent\nenactment: A compound of generic elements is generic if the combination yields no additional meaning\nto consumers capable of distinguishing the goods or services.\n[21] The PTO also invokes the oft-repeated principle that \xe2\x80\x9cno matter how much money and effort\nthe user of a generic term has poured into promoting the sale of its merchandise . . . , it cannot deprive\ncompeting manufacturers of the product of the right to call an article by its name.\xe2\x80\x9d Abercrombie & Fitch\nCo. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2 1976). That principle presupposes that a generic term is\nat issue. But the PTO\xe2\x80\x99s only legal basis for deeming \xe2\x80\x9cgeneric.com\xe2\x80\x9d terms generic is its mistaken reliance\non Goodyear.\n[22] While we reject the rule proffered by the PTO that \xe2\x80\x9cgeneric.com\xe2\x80\x9d terms are generic names,\nwe do not embrace a rule automatically classifying such terms as nongeneric. Whether any given\n\xe2\x80\x9cgeneric.com\xe2\x80\x9d term is generic, we hold, depends on whether consumers in fact perceive that term as\nthe name of a class or, instead, as a term capable of distinguishing among members of the class.6\nB\n[23] The PTO, echoed by the dissent, post, at \xe2\x80\x93\xe2\x80\x93 \xe2\x80\x93 \xe2\x80\x93\xe2\x80\x93, objects that protecting \xe2\x80\x9cgeneric.com\xe2\x80\x9d terms\nas trademarks would disserve trademark law\xe2\x80\x99s animating policies. We disagree.\n[24] The PTO\xe2\x80\x99s principal concern is that trademark protection for a term like \xe2\x80\x9cBooking.com\xe2\x80\x9d\nwould hinder competitors. But the PTO does not assert that others seeking to offer online hotelreservation services need to call their services \xe2\x80\x9cBooking.com.\xe2\x80\x9d Rather, the PTO fears that trademark\nprotection for \xe2\x80\x9cBooking.com\xe2\x80\x9d could exclude or inhibit competitors from using the term \xe2\x80\x9cbooking\xe2\x80\x9d or\nadopting domain names like \xe2\x80\x9cebooking.com\xe2\x80\x9d or \xe2\x80\x9chotel-booking.com.\xe2\x80\x9d Brief for Petitioners 27\xe2\x80\x9328. The\nPTO\xe2\x80\x99s objection, therefore, is not to exclusive use of \xe2\x80\x9cBooking.com\xe2\x80\x9d as a mark, but to undue control\nover similar language, i.e., \xe2\x80\x9cbooking,\xe2\x80\x9d that others should remain free to use.\n[25] That concern attends any descriptive mark. Responsive to it, trademark law hems in the\nscope of such marks short of denying trademark protection altogether. Notably, a competitor\xe2\x80\x99s use\ndoes not infringe a mark unless it is likely to confuse consumers. See \xc2\xa7\xc2\xa7 1114(1), 1125(a)(1)(A); 4\nMcCarthy \xc2\xa7 23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the\nmark\xe2\x80\x99s distinctiveness: \xe2\x80\x9cThe weaker a mark, the fewer are the junior uses that will trigger a likelihood\nof consumer confusion.\xe2\x80\x9d 2 id., \xc2\xa7 11:76. When a mark incorporates generic or highly descriptive\nEvidence informing that inquiry can include not only consumer surveys, but also dictionaries,\nusage by consumers and competitors, and any other source of evidence bearing on how consumers\nperceive a term\xe2\x80\x99s meaning. Surveys can be helpful evidence of consumer perception but require care in\ntheir design and interpretation. See Brief for Trademark Scholars as Amici Curiae 18\xe2\x80\x9320 (urging that\nsurvey respondents may conflate the fact that domain names are exclusive with a conclusion that a\ngiven \xe2\x80\x9cgeneric.com\xe2\x80\x9d term has achieved secondary meaning). Moreover, difficult questions may be\npresented when a term has multiple concurrent meanings to consumers or a meaning that has changed\nover time. See, e.g., 2 J. McCarthy, Trademarks and Unfair Competition \xc2\xa7 12:51 (5th ed. 2019)\n(discussing terms that are \xe2\x80\x9ca generic name to some, a trademark to others\xe2\x80\x9d); id., \xc2\xa7 12:49 (\xe2\x80\x9cDetermining\nthe distinction between generic and trademark usage of a word . . . when there are no other sellers of\n[the good or service] is one of the most difficult areas of trademark law.\xe2\x80\x9d). Such issues are not here\nentailed, for the PTO does not contest the lower courts\xe2\x80\x99 assessment of consumer perception in this\ncase. See Pet. for Cert. I; Brief for Petitioners 17\xe2\x80\x9318. For the same reason, while the dissent questions\nthe evidence on which the lower courts relied, post, at \xe2\x80\x93\xe2\x80\x93 \xe2\x80\x93 \xe2\x80\x93\xe2\x80\x93, \xe2\x80\x93\xe2\x80\x93, we have no occasion to reweigh that\nevidence. Cf. post, at \xe2\x80\x93\xe2\x80\x93 \xe2\x80\x93 \xe2\x80\x93\xe2\x80\x93 (SOTOMAYOR, J., concurring).\n6\n\n68\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ncomponents, consumers are less likely to think that other uses of the common element emanate from\nthe mark\xe2\x80\x99s owner. Ibid. Similarly, \xe2\x80\x9c[i]n a \xe2\x80\x98crowded\xe2\x80\x99 field of look-alike marks\xe2\x80\x9d (e.g., hotel names\nincluding the word \xe2\x80\x9cgrand\xe2\x80\x9d), consumers \xe2\x80\x9cmay have learned to carefully pick out\xe2\x80\x9d one mark from\nanother. Id., \xc2\xa7 11:85. And even where some consumer confusion exists, the doctrine known as classic\nfair use, see id., \xc2\xa7 11:45, protects from liability anyone who uses a descriptive term, \xe2\x80\x9cfairly and in good\nfaith\xe2\x80\x9d and \xe2\x80\x9cotherwise than as a mark,\xe2\x80\x9d merely to describe her own goods. 15 U.S.C. \xc2\xa7 1115(b)(4); see KP\nPermanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122\xe2\x80\x93123 (2004).\n[26] These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that\nregistration of \xe2\x80\x9cBooking.com\xe2\x80\x9d would not yield its holder a monopoly on the term \xe2\x80\x9cbooking.\xe2\x80\x9d\nBooking.com concedes that \xe2\x80\x9cBooking.com\xe2\x80\x9d would be a \xe2\x80\x9cweak\xe2\x80\x9d mark. Tr. of Oral Arg. 66. See also id., at\n42\xe2\x80\x9343, 55. The mark is descriptive, Booking.com recognizes, making it \xe2\x80\x9charder . . . to show a likelihood\nof confusion.\xe2\x80\x9d Id., at 43. Furthermore, because its mark is one of many \xe2\x80\x9csimilarly worded marks,\xe2\x80\x9d\nBooking.com accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com\nacknowledges that federal registration of \xe2\x80\x9cBooking.com\xe2\x80\x9d would not prevent competitors from using\nthe word \xe2\x80\x9cbooking\xe2\x80\x9d to describe their own services. Id., at 55.\n[27] The PTO also doubts that owners of \xe2\x80\x9cgeneric.com\xe2\x80\x9d brands need trademark protection in\naddition to existing competitive advantages. Booking.com, the PTO argues, has already seized a domain\nname that no other website can use and is easy for consumers to find. Consumers might enter \xe2\x80\x9cthe\nword \xe2\x80\x98booking\xe2\x80\x99 in a search engine,\xe2\x80\x9d the PTO observes, or \xe2\x80\x9cproceed directly to \xe2\x80\x98booking.com\xe2\x80\x99 in the\nexpectation that [online hotel-booking] services will be offered at that address.\xe2\x80\x9d Brief for Petitioners\n32. Those competitive advantages, however, do not inevitably disqualify a mark from federal\nregistration. All descriptive marks are intuitively linked to the product or service and thus might be\neasy for consumers to find using a search engine or telephone directory. The Lanham Act permits\nregistration nonetheless. See \xc2\xa7 1052(e), (f). And the PTO fails to explain how the exclusive connection\nbetween a domain name and its owner makes the domain name a generic term all should be free to\nuse. That connection makes trademark protection more appropriate, not less. See supra, at \xe2\x80\x93\xe2\x80\x93.\n[28] Finally, even if \xe2\x80\x9cBooking.com\xe2\x80\x9d is generic, the PTO urges, unfair-competition law could\nprevent others from passing off their services as Booking.com\xe2\x80\x99s. Cf. Genesee Brewing Co. v. Stroh\nBrewing Co., 124 F.3d 137, 149 (CA2 1997); Blinded Veterans Assn. v. Blinded Am. Veterans Foundation,\n872 F.2d 1035, 1042\xe2\x80\x931048 (CADC 1989). But federal trademark registration would offer Booking.com\ngreater protection. See, e.g., Genesee Brewing, 124 F.3d at 151 (unfair-competition law would oblige\ncompetitor at most to \xe2\x80\x9cmake more of an effort\xe2\x80\x9d to reduce confusion, not to cease marketing its product\nusing the disputed term); Matal, 582 U. S., at \xe2\x80\x93\xe2\x80\x93 (slip op., at 5) (federal registration confers valuable\nbenefits); Brief for Respondent 26 (expressing intention to seek protections available to trademark\nowners under the Anticybersquatting Consumer Protection Act, 15 U.S.C. \xc2\xa7 1125(d)); Brief for\nCoalition of .Com Brand Owners as Amici Curiae 14\xe2\x80\x9319 (trademark rights allow mark owners to stop\ndomain-name abuse through private dispute resolution without resorting to litigation). We have no\ncause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric.\n***\n[29] The PTO challenges the judgment below on a sole ground: It urges that, as a rule, combining a\ngeneric term with \xe2\x80\x9c.com\xe2\x80\x9d yields a generic composite. For the above-stated reasons, we decline a rule of\nthat order, one that would largely disallow registration of \xe2\x80\x9cgeneric.com\xe2\x80\x9d terms and open the door to\ncancellation of scores of currently registered marks. Accordingly, the judgment of the Court of Appeals\nfor the Fourth Circuit regarding eligibility for trademark registration is\nAffirmed.\nJustice SOTOMAYOR, concurring.\n\n69\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[30] The question before the Court here is simple: whether there is a nearly per se rule against\ntrademark protection for a \xe2\x80\x9cgeneric.com\xe2\x80\x9d term. See ante, at \xe2\x80\x93\xe2\x80\x93 \xe2\x80\x93 \xe2\x80\x93\xe2\x80\x93; post, at \xe2\x80\x93\xe2\x80\x93 (BREYER, J., dissenting).\nI agree with the Court that there is no such rule, a holding that accords with how the U. S. Patent and\nTrademark Office (PTO) has treated such terms in the past. See ante, at \xe2\x80\x93\xe2\x80\x93 (noting that the \xe2\x80\x9cPTO\xe2\x80\x99s own\npast practice appears to reflect no such comprehensive rule\xe2\x80\x9d). I add two observations.\n[31] First, the dissent wisely observes that consumer-survey evidence \xe2\x80\x9cmay be an unreliable\nindicator of genericness.\xe2\x80\x9d Post, at \xe2\x80\x93\xe2\x80\x93\xe2\x80\x9310. Flaws in a specific survey design, or weaknesses inherent in\nconsumer surveys generally, may limit the probative value of surveys in determining whether a\nparticular mark is descriptive or generic in this context. But I do not read the Court\xe2\x80\x99s opinion to\nsuggest that surveys are the be-all and end-all. As the Court notes, sources such as \xe2\x80\x9cdictionaries, usage\nby consumers and competitors, and any other source of evidence bearing on how consumers perceive\na term\xe2\x80\x99s meaning\xe2\x80\x9d may also inform whether a mark is generic or descriptive. Ante, at \xe2\x80\x93\xe2\x80\x93, n. 6.\n[32] Second, the PTO may well have properly concluded, based on such dictionary and usage\nevidence, that Booking.com is in fact generic for the class of services at issue here, and the District\nCourt may have erred in concluding to the contrary. But that question is not before the Court. With\nthese understandings, I concur in the Court\xe2\x80\x99s opinion.\nJustice BREYER, dissenting.\n[33] What is Booking.com? To answer this question, one need only consult the term itself.\nRespondent provides an online booking service. The company\xe2\x80\x99s name informs the consumer of the\nbasic nature of its business and nothing more. Therein lies the root of my disagreement with the\nmajority.\n[34] Trademark law does not protect generic terms, meaning terms that do no more than name\nthe product or service itself. This principle preserves the linguistic commons by preventing one\nproducer from appropriating to its own exclusive use a term needed by others to describe their goods\nor services. Today, the Court holds that the addition of \xe2\x80\x9c.com\xe2\x80\x9d to an otherwise generic term, such as\n\xe2\x80\x9cbooking,\xe2\x80\x9d can yield a protectable trademark. Because I believe this result is inconsistent with\ntrademark principles and sound trademark policy, I respectfully dissent.\nI\nA\n....\nBy preventing others from copying a distinctive mark, trademark law \xe2\x80\x9cprotect[s] the ability of\nconsumers to distinguish among competing producers\xe2\x80\x9d and \xe2\x80\x9csecure[s] to the owner of the mark the\ngoodwill of his business.\xe2\x80\x9d Park \xe2\x80\x99N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985). Ultimately,\nthe purpose of trademark law is to \xe2\x80\x9cfoster competition\xe2\x80\x9d and \xe2\x80\x9csuppor[t] the free flow of commerce.\xe2\x80\x9d\nMatal, 582 U. S., at \xe2\x80\x93\xe2\x80\x93 (slip op., at 3) (internal quotation marks omitted).\n....\n[35] There are also \xe2\x80\x9cgeneric\xe2\x80\x9d terms, such as \xe2\x80\x9cwine\xe2\x80\x9d or \xe2\x80\x9chaircuts.\xe2\x80\x9d They do nothing more than\ninform the consumer of the kind of product that the firm sells. We have called generic terms\n\xe2\x80\x9cdescriptive of a class of goods.\xe2\x80\x9d Goodyear\xe2\x80\x99s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S.\n598, 602 (1888). And we have said that they simply convey the \xe2\x80\x9cgenus of which the particular product\nis a species.\xe2\x80\x9d Park \xe2\x80\x99N Fly, 469 U.S. at 196. A generic term is not eligible for use as a trademark. That\nprinciple applies even if a particular generic term \xe2\x80\x9cha[s] become identified with a first user\xe2\x80\x9d in the\nminds of the consuming public. CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 13 (CA2\n1975) (Friendly, J.). The reason is simple. To hold otherwise \xe2\x80\x9cwould grant the owner of the mark a\nmonopoly, since a competitor could not describe his goods as what they are.\xe2\x80\x9d Ibid.\n\n70\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[36] Courts have recognized that it is not always easy to distinguish generic from descriptive\nterms. See, e.g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2 1976) (Friendly, J.). It\nis particularly difficult to do so when a firm wishes to string together two or more generic terms to\ncreate a compound term. Despite the generic nature of its component parts, the term as a whole is not\nnecessarily generic. In such cases, courts must determine whether the combination of generic terms\nconveys some distinctive, source-identifying meaning that each term, individually, lacks. See 2 J.\nMcCarthy, Trademarks and Unfair Competition \xc2\xa7 12:39 (5th ed. June 2020 update) (McCarthy). If the\nmeaning of the whole is no greater than the sum of its parts, then the compound is itself generic. See\nPrinceton Vanguard, LLC v. Frito-Lay North Am., Inc., 786 F.3d 960, 966\xe2\x80\x93967 (CA Fed. 2015); In re Gould\nPaper Corp., 834 F.2d 1017, 1018 (CA Fed. 1987) (registration is properly denied if \xe2\x80\x9cthe separate\nwords joined to form a compound have a meaning identical to the meaning common usage would\nascribe to those words as a compound\xe2\x80\x9d); see also 2 McCarthy \xc2\xa7 12:39 (collecting examples of\ncompound terms held to be generic).\n[37] In Goodyear, 128 U.S. 598, we held that appending the word \xe2\x80\x9c\xe2\x80\x98Company\xe2\x80\x99\xe2\x80\x9d to the generic name\nfor a class of goods does not yield a protectable compound term. Id., at 602\xe2\x80\x93603. The addition of a\ncorporate designation, we explained, \xe2\x80\x9conly indicates that parties have formed an association or\npartnership to deal in such goods.\xe2\x80\x9d Id., at 602. For instance, \xe2\x80\x9cparties united to produce or sell wine, or\nto raise cotton or grain,\xe2\x80\x9d may well \xe2\x80\x9cstyle themselves Wine Company, Cotton Company, or Grain\nCompany.\xe2\x80\x9d Ibid. But they would not thereby gain the right to exclude others from the use of those\nterms \xe2\x80\x9cfor the obvious reason that all persons have a right to deal in such articles, and to publish the\nfact to the world.\xe2\x80\x9d Id., at 603. \xe2\x80\x9c[I]ncorporation of a company in the name of an article of commerce,\nwithout other specification,\xe2\x80\x9d we concluded, does not \xe2\x80\x9ccreate any exclusive right to the use of the\nname.\xe2\x80\x9d Ibid.\n[38] I cannot agree with respondent that the 1946 Lanham Act \xe2\x80\x9crepudiate[d] Goodyear and its\nilk.\xe2\x80\x9d Brief for Respondent 39. It is true that the Lanham Act altered the common law in certain\nimportant respects. Most significantly, it extended trademark protection to descriptive marks that\nhave acquired secondary meaning. See Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 171 (1995).\nBut it did not disturb the basic principle that generic terms are ineligible for trademark protection, and\nnothing in the Act suggests that Congress intended to overturn Goodyear. We normally assume that\nCongress did not overturn a common-law principle absent some indication to the contrary. See Astoria\nFed. Sav. & Loan Assn. v. Solimino, 501 U.S. 104, 108 (1991). I can find no such indication here. Perhaps\nthat is why the lower courts, the Trademark Trial and Appeal Board (TTAB), the U. S. Patent and\nTrademark Office\xe2\x80\x99s (PTO) Trademark Manual of Examining Procedure (TMEP), and leading treatises all\nrecognize Goodyear\xe2\x80\x99s continued validity. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1304 (CA\nFed. 2018); In re Katch, LLC, 2019 WL 2560528, *10 (TTAB 2019); TMEP \xc2\xa7\xc2\xa7 1209.03(d) (Oct. 2018); 2\nMcCarthy \xc2\xa7 12:39; 4 L. Altman & M. Pollack, Callmann on Unfair Competition, Trademarks and\nMonopolies \xc2\xa7 18:11 (4th ed., June 2020 update).\n[39] More fundamentally, the Goodyear principle is sound as a matter of law and logic. Goodyear\nrecognized that designations such as \xe2\x80\x9cCompany,\xe2\x80\x9d \xe2\x80\x9cCorp.,\xe2\x80\x9d and \xe2\x80\x9cInc.\xe2\x80\x9d merely indicate corporate form\nand therefore do nothing to distinguish one firm\xe2\x80\x99s goods or services from all others\xe2\x80\x99. 128 U.S. at 602. It\nfollows that the addition of such a corporate designation does not \xe2\x80\x9cmagically transform a generic name\nfor a product or service into a trademark, thereby giving a right to exclude others.\xe2\x80\x9d 2 McCarthy \xc2\xa7 12:39.\nIn other words, where a compound term consists simply of a generic term plus a corporate\ndesignation, the whole is necessarily no greater than the sum of its parts.\nB\n[40] This case requires us to apply these principles in the novel context of internet domain names.\nRespondent seeks to register a term, \xe2\x80\x9cBooking.com,\xe2\x80\x9d that consists of a generic term, \xe2\x80\x9cbooking\xe2\x80\x9d (known\nas the second-level domain) plus \xe2\x80\x9c.com\xe2\x80\x9d (known as the top-level domain). The question at issue here is\n71\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwhether a term that takes the form \xe2\x80\x9cgeneric.com\xe2\x80\x9d is generic in the ordinary course. In my view,\nappending \xe2\x80\x9c.com\xe2\x80\x9d to a generic term ordinarily yields no meaning beyond that of its constituent parts.\nBecause the term \xe2\x80\x9cBooking.com\xe2\x80\x9d is just such an ordinary \xe2\x80\x9cgeneric.com\xe2\x80\x9d term, in my view, it is not\neligible for trademark registration.\n[41] Like the corporate designations at issue in Goodyear, a top-level domain such as \xe2\x80\x9c.com\xe2\x80\x9d has\nno capacity to identify and distinguish the source of goods or services. It is merely a necessary\ncomponent of any web address. See 1 McCarthy \xc2\xa7 7:17.50. When combined with the generic name of a\nclass of goods or services, \xe2\x80\x9c.com\xe2\x80\x9d conveys only that the owner operates a website related to such items.\nJust as \xe2\x80\x9cWine Company\xe2\x80\x9d expresses the generic concept of a company that deals in wine, \xe2\x80\x9cwine.com\xe2\x80\x9d\nconnotes only a website that does the same. The same is true of \xe2\x80\x9cBooking.com.\xe2\x80\x9d The combination of\n\xe2\x80\x9cbooking\xe2\x80\x9d and \xe2\x80\x9c.com\xe2\x80\x9d does not serve to \xe2\x80\x9cidentify a particular characteristic or quality of some thing; it\nconnotes the basic nature of that thing\xe2\x80\x9d\xe2\x80\x94the hallmark of a generic term. Blinded Veterans Assn. v.\nBlinded Am. Veterans Foundation, 872 F.2d 1035, 1039 (CADC 1989) (Ginsburg, J. for the court)\n(emphasis added; internal quotation marks omitted).\n[42] When a website uses an inherently distinctive second-level domain, it is obvious that adding\n\xe2\x80\x9c.com\xe2\x80\x9d merely denotes a website associated with that term. Any reasonably well-informed consumer\nwould understand that \xe2\x80\x9cpost-it.com\xe2\x80\x9d is the website associated with Post-its. See Minnesota Min. & Mfg.\nCo. v. Taylor, 21 F.Supp.2d 1003, 1005 (Minn. 1998). Likewise, \xe2\x80\x9cplannedparenthood.com\xe2\x80\x9d is obviously\njust the website of Planned Parenthood. See Planned Parenthood Federation of Am., Inc. v. Bucci, 1997\nWL 133313, *8 (SDNY, Mar. 24, 1997). Recognizing this feature of domain names, courts generally\nignore the top-level domain when analyzing likelihood of confusion. See Brookfield Communications,\nInc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1055 (CA9 1999).\n[43] Generic second-level domains are no different. The meaning conveyed by \xe2\x80\x9cBooking.com\xe2\x80\x9d is\nno more and no less than a website associated with its generic second-level domain, \xe2\x80\x9cbooking.\xe2\x80\x9d This\nwill ordinarily be true of any generic term plus \xe2\x80\x9c.com\xe2\x80\x9d combination. The term as a whole is just as\ngeneric as its constituent parts. See 1 McCarthy \xc2\xa7 7:17.50; 2 id., \xc2\xa7 12:39.50.\n[44] There may be exceptions to this rule in rare cases where the top-level domain interacts with\nthe generic second-level domain in such a way as to produce meaning distinct from that of the terms\ntaken individually. See ante, at \xe2\x80\x93\xe2\x80\x93, n. 4. Likewise, the principles discussed above may apply differently\nto the newly expanded universe of top-level domains, such as \xe2\x80\x9c.guru,\xe2\x80\x9d \xe2\x80\x9c.club,\xe2\x80\x9d or \xe2\x80\x9c.vip,\xe2\x80\x9d which may\n\xe2\x80\x9cconve[y] information concerning a feature, quality, or characteristic\xe2\x80\x9d of the website at issue. In re\nNorth Carolina Lottery, 866 F.3d at 1367; see also Brief for International Trademark Association as\nAmicus Curiae 10\xe2\x80\x9311; TMEP \xc2\xa7 1209.03(m). These scenarios are not presented here, as \xe2\x80\x9cBooking.com\xe2\x80\x9d\nconveys only a website associated with booking.\nC\n[45] The majority believes that Goodyear is inapposite because of the nature of the domain name\nsystem. Because only one entity can hold the contractual rights to a particular domain name at a time,\nit contends, consumers may infer that a \xe2\x80\x9cgeneric.com\xe2\x80\x9d domain name refers to some specific entity.\nAnte, at \xe2\x80\x93\xe2\x80\x93.\n[46] That fact does not distinguish Goodyear. A generic term may suggest that it is associated with\na specific entity. That does not render it nongeneric. For example, \xe2\x80\x9cWine, Inc.\xe2\x80\x9d implies the existence of\na specific legal entity incorporated under the laws of some State. Likewise, consumers may perceive\n\xe2\x80\x9cThe Wine Company\xe2\x80\x9d to refer to some specific company rather than a genus of companies. But the\naddition of the definite article \xe2\x80\x9cthe\xe2\x80\x9d obviously does not transform the generic nature of that term. See\nIn re The Computer Store, Inc., 211 U.S.P.Q. 72, 74\xe2\x80\x9375 (TTAB 1981). True, these terms do not carry the\nexclusivity of a domain name. But that functional exclusivity does not negate the principle animating\nGoodyear: Terms that merely convey the nature of the producer\xe2\x80\x99s business should remain free for all to\nuse. See 128 U.S. at 603.\n72\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[47] This case illustrates the difficulties inherent in the majority\xe2\x80\x99s fact-specific approach. The\nlower courts determined (as the majority highlights), that consumers do not use the term\n\xe2\x80\x9cBooking.com\xe2\x80\x9d to refer to the class of hotel reservation websites in ordinary speech. 915 F. 3d 171,\n181\xe2\x80\x93183 (CA4 2019); ante, at \xe2\x80\x93\xe2\x80\x93. True, few would call Travelocity a \xe2\x80\x9cBooking.com.\xe2\x80\x9d Ibid. But literal use\nis not dispositive. See 915 F. 3d, at 182; H. Marvin Ginn Corp. v. International Assn. of Fire Chiefs, Inc.,\n782 F.2d 987, 989\xe2\x80\x93990 (CA Fed. 1986). Consumers do not use the term \xe2\x80\x9cWine, Incs.\xe2\x80\x9d to refer to\npurveyors of wine. Still, the term \xe2\x80\x9cWine, Inc.\xe2\x80\x9d is generic because it signifies only a company\nincorporated for that purpose. See Goodyear, 128 U.S. at 602\xe2\x80\x93603. Similarly, \xe2\x80\x9cBooking, Inc.\xe2\x80\x9d may not be\ntrademarked because it signifies only a booking company. The result should be no different for\n\xe2\x80\x9cBooking.com,\xe2\x80\x9d which signifies only a booking website.\n[48] More than that, many of the facts that the Court supposes may distinguish some\n\xe2\x80\x9cgeneric.com\xe2\x80\x9d marks as descriptive and some as generic are unlikely to vary from case to case. There\nwill never be evidence that consumers literally refer to the relevant class of online merchants as\n\xe2\x80\x9cgeneric.coms.\xe2\x80\x9d Nor are \xe2\x80\x9cgeneric.com\xe2\x80\x9d terms likely to appear in dictionaries. And the key fact that, in\nthe majority\xe2\x80\x99s view, distinguishes this case from Goodyear\xe2\x80\x94that only one entity can own the rights to a\nparticular domain name at a time\xe2\x80\x94is present in every \xe2\x80\x9cgeneric.com\xe2\x80\x9d case. See ante, at \xe2\x80\x93\xe2\x80\x93.\n[49] What, then, stands in the way of automatic trademark eligibility for every \xe2\x80\x9cgeneric.com\xe2\x80\x9d\ndomain? Much of the time, that determination will turn primarily on survey evidence, just as it did in\nthis case. See 915 F. 3d, at 183\xe2\x80\x93184.\n[50] However, survey evidence has limited probative value in this context. Consumer surveys\noften test whether consumers associate a term with a single source. See 2 McCarthy \xc2\xa7 12:14\xe2\x80\x9312:16\n(describing types of consumer surveys). But it is possible for a generic term to achieve such an\nassociation\xe2\x80\x94either because that producer has enjoyed a period of exclusivity in the marketplace, e.g.,\nKellogg Co. v. National Biscuit Co., 305 U.S. 111, 118\xe2\x80\x93119 (1938), or because it has invested money and\neffort in securing the public\xe2\x80\x99s identification, e.g., Abercrombie, 537 F.2d at 9. Evidence of such an\nassociation, no matter how strong, does not negate the generic nature of the term. Ibid. For that reason,\nsome courts and the TTAB have concluded that survey evidence is generally of little value in separating\ngeneric from descriptive terms. See Schwan\xe2\x80\x99s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 975\xe2\x80\x93976 (CA8\n2006); Hunt Masters, Inc. v. Landry\xe2\x80\x99s Seafood Restaurant, Inc., 240 F.3d 251, 254\xe2\x80\x93255 (CA4 2001); A. J.\nCanfield Co. v. Honickman, 808 F.2d 291, 301\xe2\x80\x93303 (CA3 1986); Miller Brewing Co. v. Jos. Schlitz Brewing\nCo., 605 F.2d 990, 995 (CA7 1979); In re Hikari Sales USA, Inc., 2019 WL 1453259, *13 (TTAB 2019).\nAlthough this is the minority viewpoint, see 2 McCarthy \xc2\xa7 12:17.25, I nonetheless find it to be the more\npersuasive one.\n[51] Consider the survey evidence that respondent introduced below. Respondent\xe2\x80\x99s survey\nshowed that 74.8% of participants thought that \xe2\x80\x9cBooking.com\xe2\x80\x9d is a brand name, whereas 23.8%\nbelieved it was a generic name. At the same time, 33% believed that \xe2\x80\x9cWashingmachine.com\xe2\x80\x9d\xe2\x80\x94which\ndoes not correspond to any company\xe2\x80\x94is a brand, and 60.8% thought it was generic.\n[52] What could possibly account for that difference? \xe2\x80\x9cBooking.com\xe2\x80\x9d is not inherently more\ndescriptive than \xe2\x80\x9cWashingmachine.com\xe2\x80\x9d or any other \xe2\x80\x9cgeneric.com.\xe2\x80\x9d The survey participants who\nidentified \xe2\x80\x9cBooking.com\xe2\x80\x9d as a brand likely did so because they had heard of it, through advertising or\notherwise. If someone were to start a company called \xe2\x80\x9cWashingmachine.com,\xe2\x80\x9d it could likely secure a\nsimilar level of consumer identification by investing heavily in advertising. Would that somehow\ntransform the nature of the term itself? Surely not. This hypothetical shows that respondent\xe2\x80\x99s survey\ntested consumers\xe2\x80\x99 association of \xe2\x80\x9cBooking.com\xe2\x80\x9d with a particular company, not anything about the\nterm itself. But such association does not establish that a term is nongeneric. See Kellogg, 305 U.S. at\n118\xe2\x80\x93119; Abercrombie, 537 F.2d at 9.\n[53] Under the majority\xe2\x80\x99s approach, a \xe2\x80\x9cgeneric.com\xe2\x80\x9d mark\xe2\x80\x99s eligibility for trademark protection\nturns primarily on survey data, which, as I have explained, may be an unreliable indicator of\n73\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ngenericness. As the leading treatise writer in this field has observed, this approach \xe2\x80\x9c[d]iscard[s] the\npredictable and clear line rule of the [PTO] and the Federal Circuit\xe2\x80\x9d in favor of \xe2\x80\x9ca nebulous and\nunpredictable zone of generic name and top level domain combinations that somehow become\nprotectable marks when accompanied by favorable survey results.\xe2\x80\x9d 1 McCarthy \xc2\xa7 7:17.50. I would heed\nthis criticism. In my view, a term that takes the form \xe2\x80\x9cgeneric.com\xe2\x80\x9d is not eligible for federal trademark\nregistration, at least not ordinarily. There being no special circumstance here, I believe that\n\xe2\x80\x9cBooking.com\xe2\x80\x9d is a generic term not eligible for federal registration as a trademark.\nII\n[54] In addition to the doctrinal concerns discussed above, granting trademark protection to\n\xe2\x80\x9cgeneric.com\xe2\x80\x9d marks threatens serious anticompetitive consequences in the online marketplace.\n[55] The owners of short, generic domain names enjoy all the advantages of doing business under\na generic name. These advantages exist irrespective of the trademark laws. Generic names are easy to\nremember. Because they immediately convey the nature of the business, the owner needs to expend\nless effort and expense educating consumers. See Meystedt, What Is My URL Worth? Placing a Value on\nPremium Domain Names, 19 Valuation Strategies 10, 12 (2015) (Meystedt) (noting \xe2\x80\x9cability to\nadvertise a single URL and convey exactly what business a company operates\xe2\x80\x9d); cf. Folsom & Teply,\nTrademarked Generic Words, 89 Yale L. J. 1323, 1337\xe2\x80\x931338 (1980) (Folsom & Teply) (noting \xe2\x80\x9c \xe2\x80\x98free\nadvertising\xe2\x80\x99 effect\xe2\x80\x9d). And a generic business name may create the impression that it is the most\nauthoritative and trustworthy source of the particular good or service. See Meystedt 12 (noting that\ngeneric domain names inspire \xe2\x80\x9c[i]nstant trust and credibility\xe2\x80\x9d and \xe2\x80\x9c[a]uthority status in an industry\xe2\x80\x9d);\ncf. Folsom & Teply 1337, n. 79 (noting that consumers may believe that \xe2\x80\x9cno other product is the \xe2\x80\x98real\nthing\xe2\x80\x99 \xe2\x80\x9d). These advantages make it harder for distinctively named businesses to compete.\n[56] Owners of generic domain names enjoy additional competitive advantages unique to the\ninternet\xe2\x80\x94again, regardless of trademark protection. Most importantly, domain name ownership\nconfers automatic exclusivity. Multiple brick-and-mortar companies could style themselves \xe2\x80\x9cThe Wine\nCompany,\xe2\x80\x9d but there can be only one \xe2\x80\x9cwine.com.\xe2\x80\x9d And unlike the trademark system, that exclusivity is\nworld-wide.\n[57] Generic domains are also easier for consumers to find. A consumer who wants to buy wine\nonline may perform a keyword search and be directed to \xe2\x80\x9cwine.com.\xe2\x80\x9d Or he may simply type\n\xe2\x80\x9cwine.com\xe2\x80\x9d into his browser\xe2\x80\x99s address bar, expecting to find a website selling wine. See Meystedt 12\n(noting \xe2\x80\x9cability to rank higher on search engines\xe2\x80\x9d and \xe2\x80\x9cability to use existing type-in traffic to generate\nadditional sales\xe2\x80\x9d); see also 915 F. 3d, at 189 (Wynn, J., concurring in part and dissenting in part). The\nowner of a generic domain name enjoys these benefits not because of the quality of her products or the\ngoodwill of her business, but because she was fortunate (or savvy) enough to be the first to\nappropriate a particularly valuable piece of online real estate.\n[58] Granting trademark protection to \xe2\x80\x9cgeneric.com\xe2\x80\x9d marks confers additional competitive\nbenefits on their owners by allowing them to exclude others from using similar domain names. Federal\nregistration would allow respondent to threaten trademark lawsuits against competitors using\ndomains such as \xe2\x80\x9cBookings.com,\xe2\x80\x9d \xe2\x80\x9ceBooking.com,\xe2\x80\x9d \xe2\x80\x9cBooker.com,\xe2\x80\x9d or \xe2\x80\x9cBookit.com.\xe2\x80\x9d Respondent says\nthat it would not do so. See Tr. of Oral Arg. 55\xe2\x80\x9356. But other firms may prove less restrained.\n[59] Indeed, why would a firm want to register its domain name as a trademark unless it wished\nto extend its area of exclusivity beyond the domain name itself? The domain name system, after all,\nalready ensures that competitors cannot appropriate a business\xe2\x80\x99s actual domain name. And unfaircompetition law will often separately protect businesses from passing off and false advertising. See\nGenesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 (CA2 1997); 2 McCarthy \xc2\xa7 12:2.\n[60] Under the majority\xe2\x80\x99s reasoning, many businesses could obtain a trademark by adding \xe2\x80\x9c.com\xe2\x80\x9d\nto the generic name of their product (e.g., pizza.com, flowers.com, and so forth). As the internet grows\n74\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nlarger, as more and more firms use it to sell their products, the risk of anticompetitive consequences\ngrows. Those consequences can nudge the economy in an anticompetitive direction. At the extreme,\nthat direction points towards one firm per product, the opposite of the competitive multifirm\nmarketplace that our basic economic laws seek to achieve.\n[61] Not to worry, the Court responds, infringement doctrines such as likelihood of confusion and\nfair use will restrict the scope of protection afforded to \xe2\x80\x9cgeneric.com\xe2\x80\x9d marks. Ante, at \xe2\x80\x93\xe2\x80\x93 \xe2\x80\x93 \xe2\x80\x93\xe2\x80\x93. This\nresponse will be cold comfort to competitors of \xe2\x80\x9cgeneric.com\xe2\x80\x9d brands. Owners of such marks may seek\nto extend the boundaries of their marks through litigation, and may, at times succeed. See, e.g.,\nAdvertise.com v. AOL, LLC, 2010 WL 11507594 (CD Cal.) (owner of \xe2\x80\x9cAdvertising.com\xe2\x80\x9d obtained\npreliminary injunction against competitor\xe2\x80\x99s use of \xe2\x80\x9cAdvertise.com\xe2\x80\x9d), vacated in part, 616 F.3d 974\n(CA9 2010). Even if ultimately unsuccessful, the threat of costly litigation will no doubt chill others\nfrom using variants on the registered mark and privilege established firms over new entrants to the\nmarket. See Brief for Electronic Frontier Foundation as Amicus Curiae 19\xe2\x80\x9320.\n***\n[62] In sum, the term \xe2\x80\x9cBooking.com\xe2\x80\x9d refers to an internet booking service, which is the generic\nproduct that respondent and its competitors sell. No more and no less. The same is true of\n\xe2\x80\x9cgeneric.com\xe2\x80\x9d terms more generally. By making such terms eligible for trademark protection, I fear\nthat today\xe2\x80\x99s decision will lead to a proliferation of \xe2\x80\x9cgeneric.com\xe2\x80\x9d marks, granting their owners a\nmonopoly over a zone of useful, easy-to-remember domains. This result would tend to inhibit, rather\nthan to promote, free competition in online commerce. I respectfully dissent.\n______________________________________________________________________________\n\nSnyder\xe2\x80\x99s Lance, Inc. v. Frito-Lay North America, Inc.\n__ F.Supp.3d __, 2021 WL 2322931 (W.D.N.C. June 7, 2021)\nKenneth D. Bell, United States District Judge\n[1] In this case the Parties zealously dispute whether Plaintiffs\xe2\x80\x99 asserted trademark PRETZEL\nCRISPS is entitled to federal trademark registration. Indeed, this quarrel between two giants of the\nsnack food industry is now more than a decade old and includes two precedential decisions of the\nTrademark Trial and Appeal Board (\xe2\x80\x9cTTAB\xe2\x80\x9d or \xe2\x80\x9cBoard\xe2\x80\x9d) and decisions from both the Federal Circuit\nand Fourth Circuit Courts of Appeals. By this Final Order and Judgment, after a full de novo review of\nthe entire record before the TTAB and the additional evidence offered in this action, the Court now\nresolves the merits of Defendant Frito-Lay North America, Inc.\xe2\x80\x99s (\xe2\x80\x9cFrito-Lay\xe2\x80\x9d) challenge to the mark.\n\n75\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[2] For the reasons discussed below, the Court will 1) deny the Parties\xe2\x80\x99 cross-motions for\nsummary judgment; 2) affirm the TTAB\xe2\x80\x99s cancellation of the registration of the mark PRETZEL CRISPS\nfor pretzel crackers on the Supplemental Register because the mark is generic; and 3) affirm the\nTTAB\xe2\x80\x99s denial of Plaintiff Princeton-Vanguard, LLC\xe2\x80\x99s (\xe2\x80\x9cPrinceton-Vanguard\xe2\x80\x9d)1 application to register\nPRETZEL CRISPS on the Principal Register for the same reason.2\nI. LEGAL STANDARDS, RULING ON SUMMARY JUDGMENT MOTIONS AND STIPULATION\nWAIVING TRIAL\n[3] The fundamental threshold issue in this action is whether Plaintiffs\xe2\x80\x99 mark PRETZEL CRISPS is\ngeneric and therefore not eligible for trademark protection. Whether an asserted mark is generic is a\nquestion of fact. . . .\n[4] In reviewing the Parties\xe2\x80\x99 extensive supporting, opposition and reply briefs (together with\nthousands of pages of exhibits and the underlying record at the TTAB), it is obvious that the issue of\ngenericness is genuinely disputed such that entry of summary judgment for any party would be\ninappropriate. . . .\n[5] Upon the denial of summary judgment, this matter would normally proceed to a bench trial on\nthe merits. However, as they did before the TTAB, the Parties have waived their right to present live\ntestimony at trial and stipulated that the Court may fully consider and rule on all the issues presented\nbased on the written record. The Court has agreed to do so, and this Order and Judgment thus reflects\nthe Court\xe2\x80\x99s final determination of the facts and resulting ruling and judgment on the merits.\n[6] While the Parties agree that the Court may rule on the merits based on the existing record\nwithout hearing further evidence at trial, the Parties sharply disagree on the Court\xe2\x80\x99s standard of\nreview of the TTAB\xe2\x80\x99s decision and the applicable burden of proof. . . .\n[7] {W}hile the Court will consider all the evidence de novo, it will also consider the TTAB\xe2\x80\x99s\nfindings in weighing the evidentiary value that will be afforded the new evidence presented by the\nParties. . . .\n[8] The burden of proof is more easily addressed. In the Federal Circuit decision in this matter,\nthe court expressly held that Frito-Lay bears the burden to prove genericness by a preponderance of\nthe evidence. Princeton Vanguard, 786 F.3d at 965, n.2. . . . This unambiguous ruling is binding on this\nCourt, see Snyder\xe2\x80\x99s-Lance, 991 F.3d at 522, as Frito-Lay acknowledged at oral argument. Therefore,\nFrito-Lay must prove that PRETZEL CRISPS is generic by a preponderance of the evidence.\nII. FACTS AND PROCEDURAL HISTORY\n[9] The pretzel, a simple mixture of water, flour and salt, is a well-known snack food with a long\nand colorful history dating back to the Middle Ages, when Catholic priests rewarded young children\nwho learned their prayers with soft strips of baked bread dough folded to resemble arms crossed in\nprayer.6 German immigrants in the 1700\xe2\x80\x99s brought their \xe2\x80\x9cbretzels\xe2\x80\x9d (from the Old German \xe2\x80\x9cbrezitella\xe2\x80\x9d\nPrinceton Vanguard\xe2\x80\x99s co-Plaintiff is Snyder\xe2\x80\x99s-Lance, Inc. (\xe2\x80\x9cSnyder\xe2\x80\x99s-Lance\xe2\x80\x9d), which is its parent\ncompany.\n1\n\nHaving determined that the mark is generic, the Court need not and does not decide the further\nissue of whether if the mark were found to be descriptive it has acquired distinctiveness (secondary\nmeaning) with respect to its association with the Plaintiffs.\n2\n\nIn medieval Europe, monks gave away pretzels as religious symbols to the poor to provide\nspiritual as well as literal sustenance. Thus, the pretzel became a sign of fulfillment, good fortune and\nprosperity. In 1529, pretzel bakers saved Vienna from ransacking by Ottomon Turks when they heard\nthe invaders tunneling under the city during their early morning work and alerted the city leadership\n6\n\n76\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwhich is derived from the Latin for \xe2\x80\x9carm\xe2\x80\x9d (bracchiatus)) to the United States and by 1861 a commercial\npretzel bakery was making \xe2\x80\x9chard\xe2\x80\x9d pretzels \xe2\x80\x93 a brittle, glazed and salted cracker-like version of the\noriginal soft pretzel \xe2\x80\x93 that could be shipped and stored in airtight containers. Over the ensuing years,\npretzels became increasingly popular and have been baked and sold as snacks in many sizes, forms\nand names, including sticks, thins, crackers, chips, rods, rounds and, as at issue here, crisps. Over $500\nmillion worth of pretzels are now sold annually in the United States, with the average American\nconsuming about two pounds of pretzels a year. (https://positivelypa.com/pretzel-facts/ (accessed\nMay 14, 2021)).\n[10] The use of the term \xe2\x80\x9cpretzel crisps\xe2\x80\x9d dates from, at the latest, the late 1990\xe2\x80\x99s. For example, in\nApril 1998, an article in Men\xe2\x80\x99s Health suggested a recipe for a low-calorie snack mix consisting of \xe2\x80\x9cflat\npretzel crisps and crunchy pretzel sticks.\xe2\x80\x9d In 1999, The San Francisco Chronicle included \xe2\x80\x9cHoneymustard pretzel crisps\xe2\x80\x9d on its list of \xe2\x80\x9cHot\xe2\x80\x9d grocery items. In 2001, the Charleston Gazette recommended\nserving a dip recipe \xe2\x80\x9cat room temperature with pretzel crisps or crackers.\xe2\x80\x9d\n[11] Princeton-Vanguard developed their pretzel snack product in 2004. Warren and Sara Wilson,\nexperienced entrepreneurs who had launched several successful snack food brands, created a snack\nfood product that took the middle slice of a pretzel and produced it in a flat, cracker form. PrincetonVanguard named the product PRETZEL CRISPS and began marketing and selling their pretzels in the\n\xe2\x80\x9cdeli snacks\xe2\x80\x9d section of the grocery stores and food markets. PRETZEL CRISPS have been a major\ncommercial success and are a market leader among pretzel products, having enjoyed sales growth\nalmost every year since the brand\xe2\x80\x99s launch.\n[12] Since 2004, Plaintiffs have sold more than $1.25 billion dollars of Pretzel Crips to\nwholesalers and retailers (which translates into more than $2.5 billion in retail revenue). These sales\nare driven by an extensive marketing and advertising campaign. Snyder\xe2\x80\x99s-Lance has spent more than\n$50 million on advertising, marketing, and promoting the PRETZEL CRISPS brand through traditional\nmarketing and advertising channels, as well as through social media, in-store demonstrations, and\n\xe2\x80\x9cseeding\xe2\x80\x9d events and contests. For example, in 2016 and 2017, Snyder\xe2\x80\x99s-Lance estimates it had 225\nmillion consumer impressions from its print and online advertising of PRETZEL CRISPS, and its field\nmarketing teams travelled the country to promote PRETZEL CRISPS, distributing some 600,000\nproduct samples at various events.8\n{In 2005, Princeton Vanguard obtained a registration for PRETZEL CRISPS on the Supplemental\nRegister as a descriptive mark that had not yet developed acquired distinctiveness. In late 2009,\nPrinceton Vanguard filed to register PRETZEL CRISPS for \xe2\x80\x9cpretzel crackers\xe2\x80\x9d on the Principal Register.\nFrito-Lay opposed the registration on the grounds that the mark was generic for pretzel crackers and\nin the alternative that even if the mark was descriptive rather than generic, it lacked acquired\ndistinctiveness. In 2014, the Trademark Trial and Appeal Board (TTAB) ruled that the mark was\ngeneric. Princeton-Vanguard appealed that ruling to the Federal Circuit, which remanded the case back\n\n(thereby earning their own coat of arms which includes angry lions holding a pretzel). By the 17th\nCentury, the interlocking loops of the pretzel had also come to symbolize undying love when couples in\nSwitzerland began eating a pretzel in their wedding ceremonies to seal the bond of matrimony, which\nis reputed to be the origin of the phrase \xe2\x80\x9ctying the knot.\xe2\x80\x9d See foodandwine.com/lifestyle/religioushistory-pretzels (Updated April 17, 2019, accessed May 5, 2021); The Pretzel: A Twisted History\n(History. com Jan. 30, 2020).\n8 In 2018, Campbell\xe2\x80\x99s Soup Co. bought Snyder\xe2\x80\x99s-Lance, combining the company with Campbell\xe2\x80\x99s\nexisting Pepperidge Farm business and other brands to create Campbell Snacks, an even larger\ncompany unit with additional marketing reach and resources.\n\n77\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nto the TTAB for application of the correct legal test. In 2017, the TTAB again ruled that the mark was\ngeneric. Princeton-Vanguard then appealed this ruling to the W.D.N.C. In 2021, after a skirmish before\nthe Fourth Circuit involving whether the W.D.N.C. had subject matter jurisdiction over a case that had\npreviously been appealed directly to the Federal Circuit, the Fourth Circuit remanded the case back to\nthe W.D.N.C.}\nIII. DISCUSSION\n[13] Trademark law protects the goodwill represented by particular marks and serves the twin\nobjectives of preventing consumer confusion between products and the sources of those products, on\nthe one hand, and protecting the \xe2\x80\x9clinguistic commons\xe2\x80\x9d by preventing exclusive use of terms that\nrepresent their common meaning, on the other. Booking.com B.V., 915 F.3d at 175 (citing OBX-Stock,\nInc. v. Bicast, Inc., 558 F.3d 334, 339\xe2\x80\x9340 (4th Cir. 2009)). In order to be protectable, marks must be\n\xe2\x80\x9cdistinctive.\xe2\x80\x9d To determine whether a proposed mark is protectable, courts ascertain the strength of\nthe mark by placing it into one of four categories of distinctiveness, in ascending order: (1) generic, (2)\ndescriptive, (3) suggestive, or (4) arbitrary or fanciful. . . .\n[14] Generic terms do not contain source-identifying significance\xe2\x80\x94they do not distinguish the\nparticular product or service from other products or services on the market. Accordingly, generic\nterms can never obtain trademark protection, as trademarking a generic term effectively grants the\nowner a monopoly over a common term. Registration must be refused if a mark \xe2\x80\x9cis the generic name of\nany of the goods or services for which registration is sought.\xe2\x80\x9d McCarthy \xc2\xa7 12:57. If protection were\nallowed, a competitor could not describe his goods or services as what they are. Booking.com B.V., 915\nF.3d at 177 (citing CES Publ\xe2\x80\x99g Corp. v. St. Regis Publ\xe2\x80\x99ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975)). Once a term\nis deemed generic, it cannot subsequently become non-generic. Id. at 180.\n[15] Especially significant here, the law forbids trademarking generic terms, even when a putative\nmark holder engages in successful efforts to establish consumer recognition of an otherwise generic\nterm. Id. at 193-94. \xe2\x80\x9c[N]o matter how much money and effort the user of a generic term has poured\ninto promoting the sale of its merchandise and what success it has achieved in securing public\nidentification, it cannot deprive competing manufacturers of the product of the right to call an article\nby its name.\xe2\x80\x9d Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).9 Therefore,\neven advertising, repeated use, and consumer association will not warrant affording trademark\nprotection to a generic term. See Am. Online, Inc. v. AT&T Corp., 243 F.3d 812, 821 (4th Cir. 2001)\n(\xe2\x80\x9c[T]he repeated use of ordinary words . . . cannot give [a single company] a proprietary right over\nthose words, even if an association develops between the words and [that company].\xe2\x80\x9d). In sum, courts\nhave long sought to foreclose companies from monopolizing common terms, holding that no single\ncompetitor has the right to \xe2\x80\x9ccorner the market\xe2\x80\x9d on ordinary words and phrases. See Booking.com B.V.,\n915 F.3d at 193.\n[16] According to the test adopted long ago by the Supreme Court in Kellogg Co. v. Nat\xe2\x80\x99l Biscuit Co.,\na plaintiff seeking to establish a valid trademark as compared to a generic mark \xe2\x80\x9cmust show that the\nprimary significance of the term in the minds of the consuming public is not the product but the\nproducer.\xe2\x80\x9d 305 U.S. 111, 118 (1938). A mark is not generic simply because it plays some role in\n\nThe Supreme Court recently confirmed this principle in United States Pat. & Trademark Off. v.\nBooking.com B. V., 140 S. Ct. 2298, 2306\xe2\x80\x9307 (2020), emphasizing that it \xe2\x80\x9cpresupposes that a generic\nterm is at issue.\xe2\x80\x9d Id. In other words, the determination of whether a mark is generic must be made\nseparately and independently of the mark\xe2\x80\x99s commercial success and association with a particular\ncompany that results from extensive advertising and marketing (which would, of course, still be\nrelevant to a determination of whether a descriptive mark had acquired secondary meaning).\n9\n\n78\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndenoting to the public what the product or service is; rather, a mark may serve a dual function\xe2\x80\x94that of\nidentifying a product [or service] while at the same time indicating its source. Thus, \xe2\x80\x9cthe critical issue\nin genericness cases is whether members of the relevant public primarily use or understand the term\nsought to be protected to refer to the genus of goods or services in question.\xe2\x80\x9d Princeton Vanguard, 786\nF.3d at 965 (citing, H. Marvin Ginn Corp. v. Int\xe2\x80\x99l Ass\xe2\x80\x99n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed. Cir.\n1986)). In other words, would the mark be perceived by the purchasing public as merely a common\nname for the goods rather than a mark identifying the good\xe2\x80\x99s source? Id. at 766.\n[17] According to the Federal Circuit,10 determining a mark\xe2\x80\x99s genericness requires \xe2\x80\x9ca two-step\ninquiry: First, what is the genus (or class) of goods or services at issue? Second, is the term sought to\nbe registered or retained on the register understood by the relevant public primarily to refer to that\ngenus of goods or services?\xe2\x80\x9d Id. at 990. The Parties do not dispute either the genus of goods or the\nrelevant public. The genus of goods at issue is \xe2\x80\x9cpretzel crackers\xe2\x80\x9d and the relevant public are \xe2\x80\x9cordinary\nconsumers who purchase and eat pretzel crackers.\xe2\x80\x9d See Princeton-Vanguard, 786 F.3d at 965.\n[18] Booking.com, the most recent Supreme Court opinion on the question of whether a\ntrademark is generic, provides the Court clear guidance on the process for making the factual finding\non how the relevant public perceives the mark. Evidence of the public\xe2\x80\x99s understanding of the mark as\neither a common name or a mark identifying the good\xe2\x80\x99s source may be obtained from dictionaries;\nusage by the mark holder, consumers and others; consumer surveys;11 publications and any other\nsource of evidence bearing on how consumers perceive a term\xe2\x80\x99s meaning. See Booking.com B. V., 140 S.\nCt. at 2306\xe2\x80\x9307; Princeton Vanguard, 786 F.3d at 965. Also, the public\xe2\x80\x99s primary understanding of a\nmark \xe2\x80\x9cis derived from it as a whole, not from its elements separated and considered in detail;\xe2\x80\x9d\ntherefore, \xe2\x80\x9cit should be considered in its entirety.\xe2\x80\x9d Estate of P.D. Beckwith, Inc. v. Comm\xe2\x80\x99r of Patents, 252\nU.S. 538, 545\xe2\x80\x9346 (1920). Although \xe2\x80\x9ca mark must be considered as a whole,\xe2\x80\x9d this \xe2\x80\x9cdoes not preclude\ncourts from considering the meaning of individual words in determining the meaning of the entire\nmark.\xe2\x80\x9d Hunt Masters, Inc. v. Landry\xe2\x80\x99s Seafood Rest., Inc., 240 F.3d 251, 254 (4th Cir. 2001).\n[19] Further, for an asserted trademark such as PRETZEL CRISPS that is a \xe2\x80\x9ccompound of generic\nelements\xe2\x80\x9d (\xe2\x80\x9cpretzel\xe2\x80\x9d and \xe2\x80\x9ccrisps\xe2\x80\x9d),12 the mark \xe2\x80\x9cis generic if the combination yields no additional\nmeaning to consumers capable of distinguishing the goods or services.\xe2\x80\x9d Booking.com B. V., 140 S. Ct. at\n2306. (emphasis in original). This principle is not inconsistent with consideration of a mark in its\nentirety. \xe2\x80\x9cAn inquiry into the public\xe2\x80\x99s understanding of a mark requires consideration of the mark as a\nwhole. Even if each of the constituent words in a combination mark is generic, the combination is not\n\n10 The Fourth Circuit follows a functionally similar three-step test: (1) identify the class of product\nor service to which use of the mark is relevant; (2) identify the relevant consuming public; and (3)\ndetermine whether the primary significance of the mark to the relevant public is as an indication of the\nnature of the class of the product or services to which the mark relates, which suggests that it is\ngeneric, or an indication of the source or brand, which suggests that it is not generic. Booking.com B.V.,\n915 F.3d at 180.\n\nWith respect to consumer surveys, the Supreme Court has specifically cautioned: \xe2\x80\x9csurveys can\nbe helpful evidence of consumer perception but require care in their design and interpretation. See\nBrief for Trademark Scholars as Amici Curiae 18\xe2\x80\x9320 (urging that survey respondents may conflate the\nfact that domain names are exclusive with a conclusion that a given \xe2\x80\x9cgeneric.com\xe2\x80\x9d term has achieved\nsecondary meaning) . . . . [McCarthy], \xc2\xa7 12:49 (\xe2\x80\x9cDetermining the distinction between generic and\ntrademark usage of a word . . . when there are no other sellers of [the good or service] is one of the\nmost difficult areas of trademark law.\xe2\x80\x9d).\xe2\x80\x9d Booking.com B. V., 140 S. Ct. at 2307.\n11\n\n12\n\nAt oral argument, Plaintiffs\xe2\x80\x99 counsel agreed that both \xe2\x80\x9cpretzels\xe2\x80\x9d and \xe2\x80\x9ccrisps\xe2\x80\x9d are generic terms.\n79\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ngeneric unless the entire formulation does not add any meaning to the otherwise generic mark.\xe2\x80\x9d In re\nSteelbuilding.com, 415 F.3d 1293, 1297 (Fed. Cir. 2005).\n[20] To find if the combination of generic terms in an asserted trademark has \xe2\x80\x9cadditional\xe2\x80\x9d\nmeaning to consumers, the Court logically must first determine what meaning the generic elements\nwould have to the relevant public. See Booking.com, 915 F.3d at 184-85 (\xe2\x80\x9cwhen confronted with a\ncompound term like PRETZEL CRISPS, courts may consider as a first step the meaning of each of the\nterm\xe2\x80\x99s component marks . . .\xe2\x80\x9d). The TTAB analyzed the constituent terms \xe2\x80\x9cPRETZEL\xe2\x80\x9d and \xe2\x80\x9cCRISPS\xe2\x80\x9d at\nlength in its two decisions. See TTAB Decision 2, 124 U.S.P.Q.2d at 1201-04.\n[21] The Board evaluated the \xe2\x80\x9cmeaning of each to the consuming public as indicated by dictionary\ndefinitions and other competent sources.\xe2\x80\x9d Id. at 1188. Princeton-Vanguard submitted a definition of\n\xe2\x80\x9cpretzel\xe2\x80\x9d as \xe2\x80\x9c[a] glazed brittle biscuit that is salted on the outside and usually baked in the form of a\nloose knot or a stick.\xe2\x80\x9d Id. Warren Wilson, Princeton-Vanguard\xe2\x80\x99s Manager and co-founder, defined the\n\xe2\x80\x9cPRETZEL CRISPS\xe2\x80\x9d product as being a form of pretzel: \xe2\x80\x9cPRETZEL CRISPS crackers possess a unique\nshape, based on removing the middle slice from a traditional pretzel design.\xe2\x80\x9d Id. Finally, Defendant\xe2\x80\x99s\noriginal identification of goods for Application Serial No. 78405596, as filed on April 21, 2004, stated\nsimply \xe2\x80\x9cpretzels.\xe2\x80\x9d After receiving an office action refusing its applied-for mark as generic, Defendant\nsubmitted an amendment to the identification re-characterizing the goods as \xe2\x80\x9cpretzel crackers.\xe2\x80\x9d The\nTrademark Rules state that an \xe2\x80\x9capplicant may amend the application to clarify or limit, but not to\nbroaden, the identification of goods and/or services . . .\xe2\x80\x9d Trademark Rule 2.71; 37 CFR \xc2\xa7 2.71. Because\nthe amendment to its identification was found to be acceptable, Princeton-Vanguard\xe2\x80\x99s identified\n\xe2\x80\x9cpretzel crackers\xe2\x80\x9d is by rule a subcategory of the broader product category \xe2\x80\x9cpretzel.\xe2\x80\x9d\n[22] As to the term \xe2\x80\x9cCRISPS,\xe2\x80\x9d the Parties submitted to the Board dictionary definitions of the term\nas meaning, in relevant part, \xe2\x80\x9c(noun) Something crisp or brittle;\xe2\x80\x9d and \xe2\x80\x9c(noun) Something crisp or easily\ncrumpled.\xe2\x80\x9d Frito-Lay\xe2\x80\x99s witness Pam Forbus testified that the \xe2\x80\x9cgeneric term \xe2\x80\x98crisp\xe2\x80\x99 or \xe2\x80\x98crisps\xe2\x80\x99\xe2\x80\x9d had been\nused by Frito-Lay and others to identify their snack food items \xe2\x80\x9csince at least as early as 1959.\xe2\x80\x9d Such\nproducts include Munchos potato crisps, Baked Lay\xe2\x80\x99s and Baked Ruffles potato crisps, Stacy\xe2\x80\x99s soy\ncrisps, TRUENORTH nut crisps and FLAT EARTH fruit crisps and veggie crisps. Id. Moreover,\nPrinceton-Vanguard previously used the term \xe2\x80\x9cCRISPS\xe2\x80\x9d in the nutrition facts labels displayed on its\n\xe2\x80\x9cPRETZEL CRISPS\xe2\x80\x9d product, referring to the number of \xe2\x80\x9ccrisps\xe2\x80\x9d in a serving size. Also, in responding to\nrequests for admission, Princeton-Vanguard admitted that \xe2\x80\x9c\xe2\x80\x98crisps\xe2\x80\x99 can be used as a term for the\nproduct that is the subject of the Application.\xe2\x80\x9d Id. Finally, the definition of the word \xe2\x80\x9ccracker,\xe2\x80\x9d in\npertinent part, is \xe2\x80\x9ca dry thin crispy baked bread product that may be leavened or unleavened.\xe2\x80\x9d\n\xe2\x80\x9cCracker,\xe2\x80\x9d Merriam-Webster.com; https://www.merriamwebster.com/dictionary/cracker. (Accessed\n11 May. 2021). \xe2\x80\x9cCrisps\xe2\x80\x9d may therefore also be \xe2\x80\x9ccrackers.\xe2\x80\x9d\n[23] Accordingly, based on the separate meanings of the two words, the term \xe2\x80\x9cpretzel\xe2\x80\x9d \xe2\x80\x9ccrisps\xe2\x80\x9d\nwould be perceived by a consumer to refer to a pretzel in the form of a crisp or cracker (or,\nalternatively, a cracker or crisp that tastes like a pretzel). So, the question is what additional meaning\ncan consumers find in the combination of the two generic words \xe2\x80\x9cpretzel\xe2\x80\x9d and \xe2\x80\x9ccrisps\xe2\x80\x9d that can serve\nas an indication that the combined term may refer to a single source? Unlike booking.com (the\ncombined mark identifies a specific company at that internet address) and American Airlines\n(consumers understand that there are numerous separately named airlines in the United States and\ndon\xe2\x80\x99t refer to them collectively as \xe2\x80\x9cAmerican Airlines\xe2\x80\x9d), there is no additional meaning that results\nfrom the combination of the generic terms that make up PRETZEL CRISPS in the minds of consumers.\n\xe2\x80\x9cPretzel\xe2\x80\x9d \xe2\x80\x9ccrisps\xe2\x80\x9d are pretzels in the shape or form of a cracker and \xe2\x80\x9cpretzel crisps,\xe2\x80\x9d viewed together,\nwould be perceived as the same thing. See Convenient Food Mart, Inc. v. 6-Twelve Convenient Mart, Inc.,\n690 F. Supp. 1457, 1464 (D. Md. 1988), aff\xe2\x80\x99d, 870 F.2d 654 (4th Cir. 1989) (acknowledging that mark\n\n80\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmust be considered as a whole, but also finding \xe2\x80\x9carrangement of the words \xe2\x80\x98Convenient Food Mart\xe2\x80\x99\nobvious and meaning nothing more than a convenient food mart\xe2\x80\x9d).14 In sum, the Court finds that the\ncombined term PRETZEL CRISPS adds no additional meaning to consumers that suggests the mark is\nnot primarily a generic name.\n[24] The analysis of whether a combination of generic terms adds any meaning to the separate\nmeaning of the generic words that make up the mark can also be considered from another angle, which\nis whether the disputed combined term can satisfy the basic elements of a \xe2\x80\x9cdescriptive\xe2\x80\x9d term, which is\nthe trademark category just beyond generic terms (and how Plaintiffs argue PRETZEL CRIPS should be\ncategorized). \xe2\x80\x9cDescriptive\xe2\x80\x9d terms \xe2\x80\x9cimmediately convey information concerning a feature, quality, or\ncharacteristic\xe2\x80\x9d of the producer\xe2\x80\x99s goods or services, not simply the good or service itself. See In re North\nCarolina Lottery, 866 F.3d 1363, 1367 (Fed. Cir. 2017) However, PRETZEL CRISPS does not convey any\n\xe2\x80\x9cfeature, quality or characteristic\xe2\x80\x9d of \xe2\x80\x9cpretzel crackers\xe2\x80\x9d (the agreed genus of goods).15 Instead, it is\nsimply another name for the goods being sold. Accordingly, the failure of the combined term to convey\nany additional meaning that allows it to function as a \xe2\x80\x9cdescriptive\xe2\x80\x9d term further supports a finding that\nthe combined term is merely \xe2\x80\x9ca common name for the goods\xe2\x80\x9d which is appropriately placed in the\nlower category of generic goods.\n[25] Although the Court concludes that the combination of the generic elements \xe2\x80\x9cpretzel\xe2\x80\x9d and\n\xe2\x80\x9ccrisps\xe2\x80\x9d does not create any additional meaning for consumers from which they can distinguish\nPlaintiffs\xe2\x80\x99 product and thus indicates that PRETZEL CRISPS is generic, the Court does not rest its\nfinding of genericness on that finding. Rather, after considering de novo all the evidence offered by the\nParties which bears on consumers\xe2\x80\x99 perception of the mark, the Court finds that, on balance, a\npreponderance of the evidence supports the conclusion that the mark, considered only in its entirety,\nis generic.\n[26] Before reviewing the evidence in detail, the Court notes two points relevant to its overall\nanalysis. First, exercising its discretion, the Court views the more recent purported evidence of\nconsumer perception (from both sides) as less probative than evidence closer to Princeton-Vanguard\xe2\x80\x99s\nregistration applications and Frito-Lay\xe2\x80\x99s opposition. As discussed above, the law does not permit a\ngeneric mark to evolve into a descriptive mark or other type of non-generic mark based on the\nassociation of the product with a particular company (driven by the mark holder\xe2\x80\x99s marketing success).\nAnd, Plaintiffs themselves acknowledge that it \xe2\x80\x9caccords with [ ] common-sense reasoning that, as more\nconsumers are exposed to PRETZEL CRISPS crackers\xe2\x80\x99 packaging prominently displaying the PRETZEL\nCRISPS mark and encounter the mark in advertisements and on social media, they will naturally come\nto view it as [a] brand name . . .\xe2\x80\x9d So, the farther in time the evidence is from Plaintiffs\xe2\x80\x99 trademark\napplications, the more likely it is that the cumulative effect of Plaintiffs\xe2\x80\x99 sales efforts will limit the\nability of the evidence to establish consumer perceptions of genericness as distinguished from\nsecondary meaning resulting from Plaintiffs\xe2\x80\x99 successful marketing.\n[27] This is particularly true for Plaintiffs\xe2\x80\x99 \xe2\x80\x9csocial media\xe2\x80\x9d evidence. In 2004, when the first\ntrademark application was filed, \xe2\x80\x9csocial media\xe2\x80\x9d likely referred to nothing more than the fact that\n\nWhen asked at oral argument to identify any additional meaning or source identification that\nthe combined term adds to its generic components, Plaintiffs\xe2\x80\x99 counsel simply reiterated their position\nthat the Court should not consider the meaning of the component terms in any way (notwithstanding\nthe clear recent direction from the Supreme Court in Boooking.com).\n14\n\n15 As with \xe2\x80\x9cadditional meaning,\xe2\x80\x9d when asked at oral argument why \xe2\x80\x9cpretzel crisps\xe2\x80\x9d is a descriptive\nterm, Plaintiffs\xe2\x80\x99 counsel did not identify any \xe2\x80\x9cfeature, quality or characteristic\xe2\x80\x9d of the goods that is\nreflected in the mark.\n\n81\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\njournalists could often be found at a bar. Facebook was only founded the same year, with Twitter\n(2006), Instagram (2010) and Tik-Tok (2016) following and then later exploding in popularity. A tweet\nor Facebook or Instagram post in 2018, 14 years after Princeton-Vanguard\xe2\x80\x99s initial trademark\napplication and 8 years after Frito-Lay\xe2\x80\x99s opposition, provides at best limited guidance about consumer\nperception when the mark was first registered. Accordingly, the Court finds that more recent evidence\nhas less probative value on the question of genericness.16\n[28] Second, in making its factual determination of genericness, the Court has considered not just\nthe \xe2\x80\x9cquantity\xe2\x80\x9d of evidence (the number of times the mark is allegedly used in some \xe2\x80\x9ctrademark\xe2\x80\x9d sense)\nbut also the \xe2\x80\x9cquality\xe2\x80\x9d of the evidence presented. In other words, the Court finds that not all bare\nmentions of the mark are equal. For example, many (indeed most) of the cited references to PRETZEL\nCRISPS appear in otherwise irrelevant financial documents or simply reflect the fact that Plaintiffs are\nmarketing and selling the product17 (i.e., term appearing in the reporting of results for Snyder\xe2\x80\x99sLance\xe2\x80\x99s second quarter of 2013, and article noting that \xe2\x80\x9cmedia sponsors include . . . Startup Digest,\nPretzel Crisps, Modern Oats,\xe2\x80\x9d), rather than more direct evidence of consumer perceptions (i.e., an\narticle suggesting that a baked potato dip be served with \xe2\x80\x9cyour favorite potato chips or pretzel crisps\xe2\x80\x9d).\nThus, the Court has, as it must, not only \xe2\x80\x9ccounted\xe2\x80\x9d the evidence but \xe2\x80\x9cweighed\xe2\x80\x9d it to reach the final\nconclusion that PRETZEL CRISPS is, on balance,19 a generic term for the goods sold by Plaintiffs.\n[29] The Court evaluates each type of supporting evidence offered by the Parties as follows:\nDictionaries\n[30] As noted above, the Court may look to the dictionary for evidence of common usage to\nsupport a finding of genericness. See McCarthy, \xc2\xa7 11:51 While the Parties have provided definitions of\nthe words \xe2\x80\x9cpretzel\xe2\x80\x9d and \xe2\x80\x9ccrisps\xe2\x80\x9d as discussed above, it appears that there are no dictionary definitions\nof the mark as a whole. Plaintiffs contend that the absence of dictionary definitions of \xe2\x80\x9cpretzel crisps\xe2\x80\x9d\nis \xe2\x80\x9cpowerful evidence that the mark is not generic.\xe2\x80\x9d The Court disagrees. First, the authority offered by\nPlaintiffs in support of their position, JFJ Toys, Inc. v. Sears Holdings Corp., 237 F. Supp. 3d 311, 332\xe2\x80\x9333\n(D. Md. 2017),20 notes that \xe2\x80\x9c[d]ictionary definitions are particularly helpful where a composite mark\nwhich was \xe2\x80\x98invented\xe2\x80\x99 by its holder is listed in the dictionary as the accepted designator for a unique\nproduct,\xe2\x80\x9d citing Nat\xe2\x80\x99l Fed\xe2\x80\x99n of the Blind, Inc. v. Loompanics Enterprises, Inc., 936 F. Supp. 1232, 1248 (D.\nMd. 1996) (in turn citing Murphy Door Bed Co. v. Interior Sleep Systems, Inc., 874 F.2d 95, 101 (2d Cir.\n1989)). Here, although the Court does not find that Princeton-Vanguard invented the PRETZEL CRISPS\nname as discussed above, Plaintiffs contend they did. Thus, by their own version of the facts, the\nabsence of a dictionary definition would appear to cut against rather than support their arguments.\n\nHowever, more recent evidence would likely be more probative than earlier evidence on the\nissue of secondary meaning, which the Court does not reach.\n16\n\nPlaintiffs argue that the Court should consider all such mentions (even the same article\nappearing in different publications) as persuasive relevant evidence because any use of the name as a\nbrand \xe2\x80\x9ccould . . . have [an] impact on readers\xe2\x80\x99 perception.\xe2\x80\x9d This argument misses the question, which is\nwhat are consumers\xe2\x80\x99 perceptions, not how the materials published by Plaintiffs and others about their\nsales efforts or sales success in financial related documents might speculatively \xe2\x80\x9cimpact\xe2\x80\x9d such\nperceptions.\n19\n\nIn JFT Toys, the Court agreed with the USPTO that a suggestive term, \xe2\x80\x9cStomp Rocket,\xe2\x80\x9d was not\ngeneric, finding that because of the lack of any dictionary reference to a rocket in the definition of\n\xe2\x80\x9cstomp\xe2\x80\x9d and no definition at all for \xe2\x80\x9cstomp rocket\xe2\x80\x9d that \xe2\x80\x9cthe dictionary is unhelpful to Defendants.\xe2\x80\x9d JFJ\nToys, 237 F. Supp. 3d at 333.\n20\n\n82\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[31] More significant to the Court, while there is no dictionary definition of \xe2\x80\x9cpretzel crisps,\xe2\x80\x9d there\nis also no dictionary definition of \xe2\x80\x9cpretzel crackers,\xe2\x80\x9d \xe2\x80\x9cpretzel chips,\xe2\x80\x9d or \xe2\x80\x9cpretzel thins,\xe2\x80\x9d all of which\nPlaintiffs agree are generic terms. And, similarly, a reasonable search by the Court finds no dictionary\ndefinition of other non-pretzel generic snack food names such as \xe2\x80\x9cpita chips.\xe2\x80\x9d In other words, names of\nparticular food products, whether brand specific or generic, are unlikely to be in the dictionary,\npresumably because dictionary editors do not find the term noteworthy enough to warrant an entry of\nany type. See TTAB Decision 2, 124 U.S.P.Q.2d at 1193. Therefore, in the specific context of the facts\npresented here, dictionary definitions are not particularly helpful to either party beyond the meaning\nof the words that make up the mark as discussed above (as part of the question of whether the\ncompound mark adds additional meaning to consumers).\nUsage by Plaintiffs\n[32] The Parties have also proffered examples of the Plaintiffs\xe2\x80\x99 use of the mark for the Court to\nconsider on genericness. While the vast majority of Plaintiffs\xe2\x80\x99 uses of the mark refer to PRETZEL\nCRISPS as a brand, three references from high ranking executives have been cited to the Court as\nevidence supporting generic use. In 2010, Maureen Phelan, VP of Sales for Snack Factory, told a major\npotential customer (Starbucks): \xe2\x80\x9cI have seen your new line of healthy snack foods in the stores & think\nPretzel Crisps would be a great addition. We are the original pretzel crisp company about to introduce a\nnew package which is much more appealing to your demographic than our current deli line.\xe2\x80\x9d\n(emphasis added). And, in 2009, Snack Factory\xe2\x80\x99s Vice President of Marketing Perry Abbenante asked a\nmarketing firm for help coming up with a new name for an \xe2\x80\x9cumbrella brand\xe2\x80\x9d for the product,\nexplaining that \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d consists of \xe2\x80\x9ctwo pretty generic words\xe2\x80\x9d and could be vulnerable to a\nchallenge. (\xe2\x80\x9cPer our conversation, I was hoping you and PGW braintrust could mull over some creative\nnames we might be able to use as an umbrella brand for Pretzel Crisps. Currently, we do have a\ncopyright on the name Pretzel Crisps, but because it\xe2\x80\x99s a two pretty generic words [sic], there could be a\nchallenge to it.\xe2\x80\x9d). Finally, the founder Mr. Wilson also used the term generically in a published\ninterview, noting, \xe2\x80\x9cWe have been able to take the middle out of pretzel making the pretzel crisp a thin\ncrunchy cracker-like snack.\xe2\x80\x9d\n[33] While evidence of the mark owner\xe2\x80\x99s generic use may be \xe2\x80\x9cstrong evidence of genericness,\xe2\x80\x9d\nMcCarthy, \xc2\xa7 12.13, there must be \xe2\x80\x9crepeated and consistent instances of such usage,\xe2\x80\x9d JFJ Toys, Inc. v.\nSears Holdings Corp., 237 F. Supp. 3d at 331, for that use to have a significant effect. Accordingly,\nalthough these statements by Plaintiffs\xe2\x80\x99 executives are generally consistent with the other evidence\ndiscussed below which supports a finding of genericness and have been considered, the Court does not\nview these apparently isolated instances as indicative of general usage of the mark generically by\nPlaintiffs. Therefore, the Court does not find Plaintiffs\xe2\x80\x99 use of the mark generically to be \xe2\x80\x9cstrong\nevidence\xe2\x80\x9d and gives it relatively little weight in the balance of evidence.\nUsage by Competitors, Industry Insiders and Others\n[34] More significant to the Court than Plaintiffs\xe2\x80\x99 limited generic use, the record reflects use of\npretzel crisps generically by competitors and food vendors. In 2010, Kraft introduced pretzel crackers\nunder its RITZ MUNCHABLES mark, using \xe2\x80\x9cpretzel crisps\xe2\x80\x9d as the generic descriptor.21 The generic\n\nAll food items are required to list a \xe2\x80\x9cstatement of identity\xe2\x80\x9d or \xe2\x80\x9cgeneric descriptor\xe2\x80\x9d to describe\nthe food. The name established by law or regulation, or in the absence thereof, the common or usual\nname of the food, if the food has one, should be used as the statement of identity. If there is none, then\nan appropriate descriptive name, that is not misleading, should be used. Brand names are not\nconsidered to be statements of identity and should not be unduly prominent compared to the\nstatement of identity. See 21 CFR 101.3(b) & (d).\n21\n\n83\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nnature of this use is evident from the way \xe2\x80\x9cpretzel crisps\xe2\x80\x9d was set off from Kraft Food\xe2\x80\x99s RITZ\nMUNCHABLES mark in different typeface and color. Princeton-Vanguard complained to Kraft and\nthreatened litigation.\n[35] Plainly choosing to avoid a lengthy battle with an aggressive and similarly deep pocketed\ncompetitor (a decision which now may seem particularly prescient to Kraft in light of the decade long\nhistory of this case), Kraft entered into an Agreement and Mutual Release with Princeton-Vanguard in\nwhich Kraft was allowed to continue to use the mark generically for several months 22 but thereafter\nagreed not to use \xe2\x80\x9cpretzel crisps\xe2\x80\x9d \xe2\x80\x9cas a product descriptor\xe2\x80\x9d or a \xe2\x80\x9ctrademark.\xe2\x80\x9d Kraft made no\nconcession, admission of liability or acknowledgement that Princeton-Vanguard was entitled to a\nregistration for \xe2\x80\x9cpretzel crisps\xe2\x80\x9d or of \xe2\x80\x9cany fact\xe2\x80\x9d (but agreed that Princeton owns a registration on the\nSupplemental Register, which of course was true at the time).\n[36] Significantly, Kraft was careful to both note Frito-Lay\xe2\x80\x99s already pending opposition to\nPrinceton-Vanguard\xe2\x80\x99s efforts to obtain a principal registration and include a provision allowing Kraft\nto resume generic use of the term should a court or trademark office find the term to be generic.\nFollowing the settlement, Kraft changed the generic descriptor \xe2\x80\x9cpretzel crisps\xe2\x80\x9d on its packaging to\n\xe2\x80\x9cpretzel thins\xe2\x80\x9d and \xe2\x80\x9cpretzel rounds\xe2\x80\x9d (two terms that Plaintiffs agree are not used as trademarks),\ndemonstrating that Kraft considers all of these terms to be generic. See Doc. No. 33 at 17 (\xe2\x80\x9cKraft\nsubsequently adopted the terms \xe2\x80\x98pretzel thins\xe2\x80\x99 and \xe2\x80\x98pretzel rounds\xe2\x80\x99 to describe its products\xe2\x80\x9d; see also\nOpp\xe2\x80\x99n No. 91195552 at A1543 (declaration from Warren Wilson testifying that \xe2\x80\x9cpretzel thins\xe2\x80\x9d and\n\xe2\x80\x9cpretzel rounds\xe2\x80\x9d are \xe2\x80\x9cgeneric descriptors\xe2\x80\x9d).\n[37] Also in 2010, the food delivery company Diet Gourmet offered for sale on its snack menu\n\xe2\x80\x9cPretzel crisps, grapes, . . . cheese and . . . dipping sauce\xe2\x80\x9d in the same generic way that it listed \xe2\x80\x9cBaked\npita chips, roasted garlic hummus . . .\xe2\x80\x9d and \xe2\x80\x9cbagel chips.\xe2\x80\x9d Mr. Wilson sent a letter to the Diet Gourmet\nfood delivery company demanding that the company stop using the term \xe2\x80\x9cpretzel crisps\xe2\x80\x9d without\nindicating that the term is a trademarked brand. There is no evidence in the record of a response by\nDiet Gourmet.\n[38] Similarly, in 2011, Pretzels, Inc. used \xe2\x80\x9cpretzel crisps\xe2\x80\x9d generically in promotional materials for\nits Trussetts \xe2\x80\x9cCrispy Pretzel\xe2\x80\x9d snack product (the information sheet for the product referenced the\n\xe2\x80\x9cpretzel crisps market\xe2\x80\x9d and the company was listed in a trade show program guide as selling \xe2\x80\x9cpretzel\ncrisps.\xe2\x80\x9d). Again, Princeton-Vanguard complained, and the matter was resolved without litigation when\nPretzels, Inc. agreed to revise its promotional materials \xe2\x80\x9cnotwithstanding the industry\xe2\x80\x99s use of the\ngeneric term \xe2\x80\x98pretzel crisps\xe2\x80\x99.\xe2\x80\x9d\n[39] More recently, Plaintiffs have continued to object to other companies\xe2\x80\x99 ongoing generic use of\nthe mark (even after the TTAB ruled the mark was generic and ordered the registration cancelled). For\nexample, in 2018 Wish Farms posted a recipe on its website for \xe2\x80\x9cBlueberry Pretzel Crisps.\xe2\x80\x9d The recipe\ndid not feature Plaintiffs\xe2\x80\x99 product, and the term \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d was used generically to refer to the\nrecipe itself. Claiming that PRETZEL CRISPS was at that time a \xe2\x80\x9cregistered trademark\xe2\x80\x9d (ignoring the\nTTAB\xe2\x80\x99s decision that the registration should be cancelled), Snyder\xe2\x80\x99s-Lance demanded that the small\ncompany cease using \xe2\x80\x9cpretzel crisps\xe2\x80\x9d (unless it changed the recipe to include Plaintiffs\xe2\x80\x99 product). Wish\nFarms agreed to change the recipe name but declined to \xe2\x80\x9calter the recipe\xe2\x80\x9d to include Plaintiffs\xe2\x80\x99 product,\nnoting that \xe2\x80\x9cthe photos were done with a different product and the quickest way that we could address\nyour concern was to simply change the name.\xe2\x80\x9d\n\nKraft\xe2\x80\x99s distributors were allowed to continue to distribute and sell the Ritz Munchables pretzel\ncrisps indefinitely so long as they were sold and distributed by Kraft as permitted in the agreement.\n22\n\n84\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[40] As another example, in 2017, Plaintiffs sent a cease-and-desist letter to Betty Jane\nHomemade Candies over the use of the term \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d as a generic ingredient in its \xe2\x80\x9cBetty\xe2\x80\x99s\nBites\xe2\x80\x9d snack. \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d was listed alongside other ingredients including \xe2\x80\x9cCaramel,\xe2\x80\x9d \xe2\x80\x9cMilk\nChocolate,\xe2\x80\x9d and \xe2\x80\x9cSea Salt\xe2\x80\x9d and was used in the same manner as those other generic terms. In response\nto the letter, Betty Jane\xe2\x80\x99s owner stated that he \xe2\x80\x9cassumed [pretzel crisps] was a descriptor term for the\ntype of pretzel item (similar to pretzel rod for example, describing the pretzel product).\xe2\x80\x9d\n[41] All of these examples show that the third parties involved believed \xe2\x80\x9cpretzel crisps\xe2\x80\x9d was a\ncommonly understood generic term, without any intent by the third parties to copy or trade on\nPlaintiffs\xe2\x80\x99 purported mark or goodwill. In response, Plaintiffs argue that their successful policing\nefforts \xe2\x80\x9csupport the conclusion that others in the industry recognize PRETZEL CRISPS as a brand\nname.\xe2\x80\x9d The Court disagrees. In the Court\xe2\x80\x99s view, after reviewing the particular circumstances and\ncommunications described above, the various agreements not to use \xe2\x80\x9cpretzel crisps\xe2\x80\x9d do not reflect any\n\xe2\x80\x9crecognition\xe2\x80\x9d that PRETZEL CRISPS is a brand name. Rather, the agreements represent the considered\npractical judgment of the accused companies (which in all cases but one were significantly smaller\nenterprises) that it wasn\xe2\x80\x99t worth the cost to resist Plaintiffs\xe2\x80\x99 threats. On the contrary, the Court finds\nthe generic use by these unrelated companies to be a clear indication of public perception that \xe2\x80\x9cpretzel\ncrisps\xe2\x80\x9d is a name for a type of pretzel snack rather than a brand name. Indeed, Plaintiffs\xe2\x80\x99 ability to\nsuccessfully use its trademark registration (even after the TTAB ruling that it should be cancelled) to\ndeny others the ability to use a common product name only emphasizes the power Plaintiffs have\nwielded to clear the marketplace of similarly named products and the importance of not allowing\ngeneric terms to become registered trademarks.\n[42] In contrast to the generic use of the mark by competitors and others who sought to use\npretzel crisps to describe a product or snack, the Court does not find Plaintiffs\xe2\x80\x99 evidence from a few\nhand-picked industry insiders, who do millions of dollars a year of business with Plaintiffs, to be\nsignificantly probative of consumer perception of genericness (as distinguished from evidence of\ncommercial success and secondary meaning). Defendant submitted declarations from four\ndistributors, testifying that the term is not used generically in the industry. . . .\n....\nMedia References\n[43] In the TTAB and this Court, Plaintiffs have offered in total approximately 1800 \xe2\x80\x9cmedia\nreferences\xe2\x80\x9d from 2004 to 2018 in support of their position that PRETZEL CRISPS is not generic. The\nCourt has separately reviewed every one of these proffered references. For the reasons discussed\nbelow, after considering not only the number but also the probative nature and quality of the\nreferences (as well as some illustrative current advertisements), the Court finds that, on balance, the\ncited media references favor a finding that consumers primarily perceive \xe2\x80\x9cpretzel crisps\xe2\x80\x9d as a term that\nidentifies a common name for the goods rather than a mark identifying the good\xe2\x80\x99s source.\n[44] The \xe2\x80\x9cmedia reference\xe2\x80\x9d evidence comes to the Court as exhibits to the Declaration of\nChristopher Lauzau, who says that he is a \xe2\x80\x9cSenior Legal Research Analyst\xe2\x80\x9d employed by Plaintiffs\xe2\x80\x99 law\nfirm Debevoise & Plimpton LLP. There is no evidence that Mr. Lauzau has any legal education or\nparticular training or expertise in trademark law (although the Court expects he has received\nappropriate supervision as a non-attorney staff member of the law firm). And, as a member of\nPlaintiffs\xe2\x80\x99 legal team, he is (and should be in accordance with the rules of professional responsibility)\ninherently biased in favor of his firm\xe2\x80\x99s clients. Accordingly, the Court will consider the contentions of\nMr. Lauzau not as settled \xe2\x80\x9cfacts,\xe2\x80\x9d as repeatedly portrayed by Plaintiffs, but rather as \xe2\x80\x9cattorney\xe2\x80\x9d\nargument as to what the documents (which the Court has independently reviewed in detail) show.\n[45] Mr. Lauzau conducted two LexisNexis database searches for the terms \xe2\x80\x9cpretzel crisp,\xe2\x80\x9d\n\xe2\x80\x9cpretzel crisps\xe2\x80\x9d and/or \xe2\x80\x9cpretzelcrisp.\xe2\x80\x9d The results included articles from both print publications and\nInternet blogs. The first search, conducted in April 2012 for the TTAB proceedings, covered the time\n85\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nperiod from October 2004 to April 2012. Overall, there were 331 articles included in the results.\nBecause the database did not filter out punctuation or short words such as \xe2\x80\x9cthe\xe2\x80\x9d or \xe2\x80\x9cof,\xe2\x80\x9d there were\nsome results that are not applicable to the search, which he removed. He also removed entries that\nappeared multiple times in the same publication but included in his analysis 26 duplicate articles that\nappeared in different publications.\n[46] Mr. Lauzau reviewed 260 references after this winnowing process. He opines that a total of\n216 (83%) \xe2\x80\x9cclearly\xe2\x80\x9d referred to PRETZEL CRISPS as a brand name of snacks produced by Snack\nFactory or its licensees, 36 (14%) referred to that phrase \xe2\x80\x9cin a way that may have been a generic\nreference,\xe2\x80\x9d and 8 results (3%) were unclear (but adds that he believes that \xe2\x80\x9ccontextual clues suggest\nthat the author was speaking about Snack Factory\xe2\x80\x99s PRETZEL CRISPS crackers.\xe2\x80\x9d). However, his\ndeclaration does not reveal how he made the subjective decision to classify the references nor does it\neven identify which of the references he put in each category.27\n[47] The second search covered the period from April 21, 2012 to October 23, 2018. There were\n1,469 articles included in the results. After eliminating duplicated entries (including duplicated articles\nthat appear in different publications), there were a total of 895 unique articles. Mr. Lauzau claims that\n\xe2\x80\x9c786 (87.8%) used PRETZEL CRISPS as a trademark, 24 (2.7%) were false positives, and 85 (9.5%)\nused the term in an arguably generic fashion.\xe2\x80\x9d Although in this second search he again did not explain\nhow he reached his decision to place the references in the respective categories, he did include a\nnotation on each article as to how it was categorized.28\n[48] The Court\xe2\x80\x99s conclusions from its review and analysis of the references differ markedly from\nMr. Lauzau\xe2\x80\x99s. Even if the Court were to accept Mr. Lauzau\xe2\x80\x99s classification of the references (which it\ndoes not), the Court finds numerous flaws in his analysis. First, and most importantly, it is misleading\nto simply add up the references and conclude that the highest number of \xe2\x80\x9chits\xe2\x80\x9d reflects an accurate\nassessment of consumer preferences. Not all references are equal, far from it. Instead, the nature,\ndepth and source of the references must be considered to fairly draw any conclusions from the\ncollection of articles.\n[49] After reviewing all the references individually, the Court finds that they can be grouped into\nseveral categories for analysis (in addition to duplicates which represented over 36% of the references\nreviewed):\nPress Releases / Other Plaintiff Created References / Business References\n[50] A majority of the articles (close to 60%), reflect Plaintiffs\xe2\x80\x99 business affairs, financial results\nand executive employment changes. . . . See, e.g., . . . Doc. No. 41-12, p. 51 (stating that the team for First\nAid Shot Therapy, a healthcare company, is comprised of executives that were responsible for the\nlaunch and success of Pretzel Crisps, as well as other products). . . .\n....\n\nWith respect to the second search, Mr. Lauzau has at least indicated how he classified the\nvarious references but curiously has failed to do so with respect to the first search (even after being\ncriticized for not doing so). The Court finds this lack of transparency to be a significant additional\nreason to discount his claims about the first search.\n27\n\n28 The Court notes that it is some indication of the subjectiveness (and perhaps the care) with\nwhich Mr. Lauzau completed his task that in at least one case the same article was classified once as a\n\xe2\x80\x9cgeneric\xe2\x80\x9d reference and once as a \xe2\x80\x9ctrademark\xe2\x80\x9d use.\n\n86\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nLawsuit References\n[51] The list of media references that Mr. Lauzau counts as equal \xe2\x80\x9ctrademark\xe2\x80\x9d references also\nincludes a number of articles (approximately 4%) that discuss the court decisions related to this\ndispute. . . .\n....\nFalse Positive and Indeterminate References\n[52] Approximately 3% of the articles were \xe2\x80\x9cfalse positives\xe2\x80\x9d that did not include the terms that\nwere searched in any relevant context and, similarly, approximately 3% of the articles could not be\nclassified by the Court for lack of information or context about the article or other reasons.\n[53] Accordingly, the Court finds that adding together the business articles, lawsuit articles, false\npositives and indeterminate articles approximately 70% of the articles offered by Mr. Lauzau have\nlittle or no probative value with respect to the question of genericness.\nGeneric References\n[54] The Court finds that approximately 13% of the articles reflect generic use of \xe2\x80\x9cpretzel crisps.\xe2\x80\x9d\nSee, e.g., . . . 41-13, p. 32 (describing a school lunch idea that includes \xe2\x80\x9c[h]ummus with carrots, red\npeppers, green peppers, pretzel crisps and dried fruit\xe2\x80\x9d); 42-3, p. 121 (explaining how Skinnygirl\ncreator Bethenny Frankel plans on offering pretzel crisps and pita chips as products); . . .;30 see also\nTTAB Decision 2, 124 U.S.P.Q at 1190-91 (quoting numerous other generic references). In these\narticles, \xe2\x80\x9cpretzel crisps\xe2\x80\x9d are used without any particular reference to the term as a brand or to\nPlaintiffs. Many reference \xe2\x80\x9chomemade\xe2\x80\x9d or \xe2\x80\x9cmy own\xe2\x80\x9d \xe2\x80\x9cpretzel crisps.\xe2\x80\x9d And, in a number of the articles,\nincluding several of those cited above, \xe2\x80\x9cpretzel crisps\xe2\x80\x9d are listed in a parallel manner with other food\nitems such as \xe2\x80\x9cpopcorn\xe2\x80\x9d or \xe2\x80\x9cchips,\xe2\x80\x9d further emphasizing that the term is being used generically.\n[55] Further, other media articles cited by Frito-Lay reflect strong evidence of generic use,\nincluding the use of \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d as a category for the taste test among several different brands of\npretzel crackers. See Doc. No. 28-13 at 17-18 (January 2009 San Francisco Chronicle article\ndetermining that Snack Factory came in third in a taste test comparing Pepperidge Farm, Trader Joe\xe2\x80\x99s\nother brands which are generically referenced as \xe2\x80\x9cpretzel chips,\xe2\x80\x9d \xe2\x80\x9cpretzel crackers\xe2\x80\x9d and \xe2\x80\x9cpretzel\ncrisps\xe2\x80\x9d in the article); . . . Doc. No. 28-11 at 2 (2010 Chefs Best taste test for \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d declaring\nPepperidge Farm the category winner and making clear generic use of the term \xe2\x80\x93 \xe2\x80\x9cwhat makes a great\npretzel crisp?,\xe2\x80\x9d \xe2\x80\x9cthe best pretzel crisps will be dark gold.\xe2\x80\x9d \xe2\x80\x9cmoderate saltiness will most define the\nbasic taste profile of top-quality pretzel crisps.\xe2\x80\x9d). In sum, the Court finds that the articles in which\n\xe2\x80\x9cpretzel crisps\xe2\x80\x9d is used generically provide clear affirmative evidence that consumers primarily view\nthe term \xe2\x80\x9cpretzel crisps\xe2\x80\x9d as a type of goods rather than a brand name.\n\xe2\x80\x9cBrand\xe2\x80\x9d Identification References\n[56] The remaining articles (approximately 20%) can be generously described as articles in\nwhich PRETZEL CRISPS may be referred to as a brand or the use of the term appears to refer\nspecifically to Plaintiffs\xe2\x80\x99 product. However, for the reasons discussed below, the Court finds, in the\nexercise of its judgment, that a substantial percentage of those references should be given only a\nlimited weight.\n[57] While a number of the articles use Pretzel Crisps in a way that indicates it is viewed as a\nbrand, see, e.g., 41-2, p. 11, #13 (comparing the ingredients in Tostitos and Pretzel Crisps to discover\n30 Also, Plaintiffs excluded from their generic results references to other companies providing\n\xe2\x80\x9cpretzel crisps.\xe2\x80\x9d See, e.g., [Doc 42-2] at 253 (referring to \xe2\x80\x9cStacy\xe2\x80\x99s Pretzel Crisps\xe2\x80\x9d); [Doc. 42-6] at 131\n(using the term \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d to refer to \xe2\x80\x9cStacy\xe2\x80\x99s Bake Shop crisps.\xe2\x80\x9d).]\n\n87\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe better snack); . . . many more articles are similar to the \xe2\x80\x9cbusiness\xe2\x80\x9d articles discussed above in that\nthey only describe or reflect Plaintiffs\xe2\x80\x99 sales efforts.\n[58] That is, the articles simply reflect the fact that Plaintiffs are active participants in the\nmarketplace rather than more direct evidence of consumer perceptions. See, e.g., 41-2, p. 2, #2 (listing\nexhibitors, including Pretzel Crisps, at an Earth Day Fair); 41-2, p. 3, #3 (advertising Pretzel Crisps and\nmentioning the nutrition facts, flavors, and store placement). . . .\n[59] Again, evidence that a product has become a success and associated with a particular\ncompany cannot change a generic term into a non-generic brand. Thus, the Court\xe2\x80\x99s judgment,\nconsidering all aspects of these articles, is that they are entitled to relatively less weight than the\ngeneric articles discussed above, even though they are more numerous.\n[60] Moreover, as noted above in the Court\xe2\x80\x99s review of both the business and the \xe2\x80\x9cbrand\nidentification\xe2\x80\x9d articles, many of the cited articles refer to Plaintiffs\xe2\x80\x99 product as \xe2\x80\x9cSnack Factory Pretzel\nCrisps\xe2\x80\x9d rather than simply \xe2\x80\x9cPretzel Crisps.\xe2\x80\x9d The Court finds this is significant and undercuts Plaintiffs\xe2\x80\x99\nargument that the term PRETZEL CRISPS is, standing alone, perceived as a brand.31 The wide\nprevalence of using Snack Factory as a clear brand identifier preceding \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d makes it more\nlikely that consumers perceive pretzel crisps as a product name rather than a second brand name.32\nRecent advertisements easily found by the Court on the internet vividly demonstrate this point.\n\n[61] The Costco ad pictured above is contained in an advertising circular for the period May 19,\n2021 to June 13, 2021. See https://www.costcoinsider.com/costco-may-and-june-2021-coupon-book/\n(accessed May 21, 2021). In the top two panels, Costco is offering a special price on both Snack Factory\nIndeed, in some of Plaintiff\xe2\x80\x99s purchasing contracts, the Product Description is \xe2\x80\x9cPretzel Crips\xe2\x80\x9d\nand the \xe2\x80\x9cExtended product desc.\xe2\x80\x9d is \xe2\x80\x9cThin, flat pretzel crisps,\xe2\x80\x9d while the \xe2\x80\x9cTrademark\xe2\x80\x9d is listed only as\n\xe2\x80\x9cSnack Factory.\xe2\x80\x9d\n31\n\nPlaintiffs\xe2\x80\x99 argue that \xe2\x80\x9cSnack Factory Pretzel Crisps\xe2\x80\x9d is no different than saying \xe2\x80\x9cFrito-Lay\xe2\x80\x99s cool\nranch DORITOS.\xe2\x80\x9d The Court disagrees. Beyond the absence of any evidence that DORITOS are often\nreferred to as \xe2\x80\x9cFrito-Lay Doritos\xe2\x80\x9d in communications describing the brand, DORITOS is not even\narguably the name of a class or type of food.\n32\n\n88\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nPretzel Crisps and Stacy\xe2\x80\x99s Pita Chips. The ad uses both Snack Factory and Stacy\xe2\x80\x99s as the brand names\nand then \xe2\x80\x9cOrganic,\xe2\x80\x9d \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d and \xe2\x80\x9cPita Chips\xe2\x80\x9d as generic product descriptors for the snacks. The\nCourt also notes the difference in how \xe2\x80\x9cCheerios\xe2\x80\x9d and \xe2\x80\x9cSunny D\xe2\x80\x9d are both referred to only by their\nbrand names in the bottom two panels. Thus, this ad is a striking example of how Snack Factory (brand\nname) and \xe2\x80\x9cpretzel crisps\xe2\x80\x9d (product name) are often viewed differently when used together.\n[62] Similarly, in the ad for Publix supermarket pictured below, Snack Factory is used as the\nbrand name and pretzel crisps the product name in the same way that \xe2\x80\x9cIthaca\xe2\x80\x9d and \xe2\x80\x9cWhisps\xe2\x80\x9d are the\nbrand names for \xe2\x80\x9chummus\xe2\x80\x9d and \xe2\x80\x9ccheese crisps.\xe2\x80\x9d\n\nhttps://www.publix.com/savings/weekly-ad (Valid 5/19/2021 \xe2\x80\x93 5/25/2021) (accessed May 21,\n2021).\n[63] In summary, for all the reasons discussed above, the Court finds, after a careful de novo\nreview, that the media references offered into evidence and discussed above on balance support a\nfinding that Frito-Lay has established by a preponderance of evidence that PRETZEL CRISPS is a\ngeneric term.\nConsumer Surveys\n[64] Pursuant to the Supreme Court\xe2\x80\x99s directive in Booking.com and the Federal Circuit decision in\nthis matter,34 the Court also considers \xe2\x80\x93 cautiously \xe2\x80\x93 the survey evidence presented by the Parties. At\nthe TTAB, Plaintiffs submitted two surveys and related expert declarations, one from Dr. E. Deborah\nJay (the \xe2\x80\x9cJay Survey\xe2\x80\x9d) on genericness and the other from George Mantis (the \xe2\x80\x9cMantis Survey\xe2\x80\x9d) on\nsecondary meaning. Frito-Lay submitted one survey and a related declaration from Dr. Alex Simonson\non genericness. In this Court, Plaintiffs have filed additional declarations from both their experts and\nFrito-Lay has submitted an Expert Report and Declaration from Professor Isabella Cunningham on\nsecondary meaning. None of the Parties have challenged the credentials of any of the experts, and the\nCourt finds that all of them are well qualified to express their opinions. Accordingly, all of the expert\n\nPrior to Booking.com, in the Fourth Circuit and elsewhere consumer survey evidence was not\nconsidered in cases where, as here, the mark was not a coined term. See, e.g., Hunt Masters, Inc. v.\nLandry\xe2\x80\x99s Seafood Restaurant, Inc. 240 F.3d 251, 255, 57 USPQ2d 1884, 1886 (4th Cir. 2001) (\xe2\x80\x9cHunt\ndoes not claim to have first coined the term \xe2\x80\x98crab house.\xe2\x80\x99 Therefore, it is not necessary to determine\nwhether the term has become generic through common use, rendering Hunt\xe2\x80\x99s consumer survey\nirrelevant.\xe2\x80\x9d); TTAB Decision 2, 124 U.S.P.Q. at 1202-04 (collecting cases). However, as discussed above,\nsuch evidence was considered by the Supreme Court in Booking.com and the Federal Circuit instructed\nthe TTAB to consider survey evidence in this matter. Accordingly, the Court has considered the\nevidence, with due regard for the limitations of such evidence cited by the Supreme Court (which had\nled many courts to not consider the evidence in these circumstances as noted).\n34\n\n89\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nreports and declarations have been considered de novo, although for the reasons discussed below the\nCourt finds the Jay Survey and the Mantis Survey most instructive.\n[65] Dr. Jay, founder and President of Field Research Corp., conducted what is commonly known\nas a \xe2\x80\x9cTeflon\xe2\x80\x9d survey in an attempt to test how consumers perceive the term PRETZEL CRISPS. Named\nafter a survey performed to determine if \xe2\x80\x9cTeflon\xe2\x80\x9d was a valid trademark, a Teflon survey gives the\nsurvey participants an explanation of the generic versus trademark distinction and then asks\nrespondents to identify whether a term refers to a brand name or a common name. See McCarthy \xc2\xa7\n12:16. (\xe2\x80\x9cA \xe2\x80\x98Teflon survey\xe2\x80\x99 is essentially a mini-course in the generic versus trademark distinction,\nfollowed by a test.\xe2\x80\x9d).\n[66] A randomized \xe2\x80\x9cdouble-blind\xe2\x80\x9d phone survey was conducted between February 16 and 25,\n2010. The eligibility criteria were defined as adults who had \xe2\x80\x9cpersonally purchased salty snacks for\nthemselves or for someone else in the past three months or think that they would do this in the next\nthree months.\xe2\x80\x9d As a gateway, in accordance with the Teflon format, survey respondents were given an\nexplanation of the difference between brand and common names, and then asked both whether BAKED\nTOSTITOS is a brand or common name, and whether TORTILLA CHIPS is a brand or common name.\nOnly those who answered both questions correctly were allowed to proceed with the survey. Initially\n500 adults were questioned regarding their eligibility to participate in the survey. Of those, 347 of the\n500 met the eligibility requirements to take the mini-test, and only 222 of the 347 answered both\nquestions correctly on the mini-test and were thus considered \xe2\x80\x9cqualified respondents\xe2\x80\x9d who were\nallowed to take the survey. In describing the \xe2\x80\x9crepresentativeness\xe2\x80\x9d of these 222 participants to all adult\nU.S. consumers, Dr. Jay reported in her TTAB declaration that the participants were younger than a\ntruly representative sample and not geographically representative in that consumers in the South were\nunderrepresented.\n[67] In the survey itself, participants were questioned about a number of terms and asked\nwhether they are \xe2\x80\x9cbrand\xe2\x80\x9d or \xe2\x80\x9ccommon\xe2\x80\x9d names, with the option available for participants to say that\nthey didn\xe2\x80\x99t know or had not heard of a name.\n[68] For the 222 respondents who participated in the Jay survey, the results were as follows:\n\n[69] Based on these results, Dr. Jay concluded in her report that \xe2\x80\x9cthe majority of consumers\nunderstand the term PRETZEL CRISPS to function as a brand name.\xe2\x80\x9d\n[70] While the Court does not find fault with Dr. Jay\xe2\x80\x99s expertise, survey methodology or the\nexecution of the survey, it does question her conclusion and confidence in the results. First, even taking\nthe results at face value, the survey suggests only a small majority of respondents (55%) believed that\nPRETZEL CRISPS is a brand, as compared to the vast majority who correctly identified Sun Chips\n(96%) and Cheese Nips (85%).\n[71] Moreover, Plaintiffs and Dr. Jay cite the 55% result without any discussion of the inherent\n\xe2\x80\x9cmargin of error\xe2\x80\x9d in the survey. In a footnote to her initial declaration in the TTAB, Dr. Jay\nacknowledged that \xe2\x80\x9c[a]nalyses based on the overall sample of 222 completed interviews have a\nmaximum sampling error of approximately +/-7 percentage points at the 95% confidence level.\xe2\x80\x9d She\nalso admitted that \xe2\x80\x9cthere are other potential sources of error in surveys besides sampling error,\xe2\x80\x9d but\n90\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nexpressed her opinion that \xe2\x80\x9cthe overall design and execution of the survey minimized the potential for\nother sources of error.\xe2\x80\x9d\n[72] The \xe2\x80\x9cmargin of error\xe2\x80\x9d in surveys should be considered in whether and how much to rely on\ntheir results. See vonRosenberg v. Lawrence, 413 F.Supp.3d 437, 449 n.9 (D.S.C. 2019) (finding that a\n5.6% error rate was a \xe2\x80\x9cwide margin of error\xe2\x80\x9d relevant to the weight that should be given to a\ntrademark survey on genericness where, considering the error rate, the \xe2\x80\x9crate of [survey respondents]\nwho responded \xe2\x80\x9ccategory\xe2\x80\x9d rather than \xe2\x80\x9ctrademark\xe2\x80\x9d would fall below 50%, thus arguably negating its\nability to show that a \xe2\x80\x9cmajority\xe2\x80\x9d of individuals consider the mark generic. See 2 McCarthy on\nTrademarks and Unfair Competition \xc2\xa7 12:6 (5th ed.) (for genericness, \xe2\x80\x9cmajority use controls\xe2\x80\x9d)\xe2\x80\x9d);\nBorinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 120 n. 6 (1st Cir. 2006) (concluding that an\nexpert report\xe2\x80\x99s \xe2\x80\x9csmall sample size and large margin of error [10%] combined to cast considerable\ndoubt on its statistical integrity\xe2\x80\x9d). . . . This seems especially important in circumstances like here in\nwhich the answers of only 222 survey respondents are purported to fairly represent the consumer\nperceptions of over 100 million adults in the United States.\n[73] Using a 7% margin of error, the range of those who view PRETZEL CRISPS as a brand within\nthe margin of error is 48% to 63%. In other words, without discounting the results of the Jay Survey in\nany manner (even for the other sources of error Dr. Jay references), a finding that fewer than a\nmajority of respondents perceived PRETZEL CRISPS as a brand is within the survey\xe2\x80\x99s margin of error.\nIndeed, if the percentages of those who believed that the term is a brand or common name are fully\nadjusted up or down for the margin of error then the difference between them could be very small,\n48% to 43%.\n[74] However, beyond consideration of the margin of error (which still leaves a small relative but\nnot absolute majority identifying the mark as a brand), the Court finds there are a number of reasons\nthat suggest the survey results should be discounted in addition to considering the margin of error.\nFirst, as mentioned above, Dr. Jay acknowledges that the survey population is not representative of the\nrelevant population, either by age or geography. However, the amount and direction of the survey\nerror or uncertainty as a consequence of these disparities is not quantified or estimated.\n[75] Moreover, the answers of the survey respondents with respect to a number of the \xe2\x80\x9ccontrol\xe2\x80\x9d\nterms do not inspire confidence in the survey results and appear to reflect that the survey\nrespondents\xe2\x80\x99 choices may have been driven, in significant part, by commercial success or notoriety\nrather than a valid assessment of the distinction between generic and trademark names. While over\n90% of respondents correctly identified \xe2\x80\x9cmacadamia nuts\xe2\x80\x9d and \xe2\x80\x9conion rings\xe2\x80\x9d as generic names, 25%\nincorrectly identified \xe2\x80\x9cgourmet popcorn\xe2\x80\x9d as a brand. More significantly, less than half of respondents\ncorrectly identified FLAVOR TWISTS (which are twisted corn chips) as a brand. The Court finds that\nthis failure indicates that the bulk of survey respondents did not fully understand the distinction\nbetween common names and brands. The mark FLAVOR TWISTS is plainly not a common name\n(TWISTS is certainly not a common name for corn chips, if it has any \xe2\x80\x9ccommon\xe2\x80\x9d meaning at all).\n[76] So, what accounts for the vast difference in correct answers for CHEESE NIPS and SUN CHIPS,\nwhich are also brands? Simply put, the difference likely lies in marketing and commercial success.\nCHEESE NIPS and SUN CHIPS are more well-known and successful than FLAVOR TWISTS as a name\nstanding alone (indeed if the survey had included the full product name FRITOS FLAVOR TWISTS the\nCourt expects the results may have been markedly different). Thus, the failure of respondents to\ncorrectly identify FLAVOR TWISTS as a brand suggests that a substantial portion of the survey results\n\n91\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nreflect secondary meaning (the association of a product with a particular source) rather than a\nrecognition of genericness.35\n[77] Accordingly, it is the Court\xe2\x80\x99s judgment \xe2\x80\x93 based on the fact that less than a majority of\nrespondents may have believed PRETZEL CRISPS is a brand name (taking into account the survey\xe2\x80\x99s\nmargin of error), the other limitations and concerns about the survey results discussed above and the\nSupreme Court\xe2\x80\x99s warning to be cautious in relying on consumer surveys purporting to measure\ngenericness \xe2\x80\x93 that the results of the Jay Survey are, at best, inconclusive. Thus, the Court does not agree\nthat the survey indicates that consumers \xe2\x80\x9cprimarily\xe2\x80\x9d perceive PRETZEL CRISPS as a brand.36\n....\n[78] In sum, considering all the available evidence, the Court, finds that, on balance, the survey\nevidence slightly favors39 an affirmative finding that consumers primarily perceive PRETZEL CRISPS as\na common or generic name.\nGoogle and Social Media References\n[79] Plaintiffs also offered evidence of Google searches and social media mentions on Twitter to\nsupport their position that PRETZEL CRISPS is not generic. Specifically, Plaintiffs\xe2\x80\x99 attorneys\xe2\x80\x99 employee\nMr. Lauzau (whose work and conclusions the Court criticized with respect to media references above)\nconducted a Google search for the term \xe2\x80\x9cpretzel crisps\xe2\x80\x9d in October 2018 that he alleges shows \xe2\x80\x9cbased\non my review of results\xe2\x80\x9d that 87 (90%) of the first 97 results \xe2\x80\x9cused the term PRETZEL CRISPS as a\ntrademark or referred directly to Princeton Vanguard\xe2\x80\x99s product.\xe2\x80\x9d With respect to Twitter, another of\nPlaintiffs\xe2\x80\x99 law firm\xe2\x80\x99s non-attorney staff members (Elliot Beaver) conducted a subjective review of\nsocial media mentions of \xe2\x80\x9cPretzel Crisps\xe2\x80\x9d on Twitter from April 1, 2018 through October 24, 2018 and\nconcluded that a majority of tweets (63%) \xe2\x80\x9creferenced the PRETZEL CRISPS brand in a non-generic\nfashion.\xe2\x80\x9d\n[80] However, the Court does not find either the Google search or the Twitter analysis persuasive\non the issue of genericness. First, as discussed above, these searches have only a limited usefulness in\nestablishing whether PRETZEL CRISPS is generic due to the more than a decade (and $50 million in\nadvertising and marketing expenditures) that has passed since the challenged registration of the mark\nin 2005. Again, the repeated use of ordinary words cannot give a single company a proprietary right\nover those words, even if an association develops between the words and that company. Am. Online,\n243 F.3d at 821.\n[81] Second, for the Google search, the same concerns that the Court expressed about Mr. Lauzau\nin connection with media references (that he has no training in trademark law and is plainly not an\nimpartial witness) apply here as well. Also, as with the list of media references, Mr. Lauzau does not\nindicate how he determined which of the search results used PRETZEL CRISPS \xe2\x80\x9cas a trademark\xe2\x80\x9d nor\n\n35 While genericness and secondary meaning are different concepts, they are not easily\ndisentangled, particularly for successful products. Indeed, a product may have a leading market share\nwith a generic name. See Kellogg, 305 U.S. at 118 (shredded wheat).\n\nCompare, for example, the consumer survey results reported in the District Court decision in\nBooking.com, in which the plaintiff produced a Teflon survey which revealed that 74.8 percent of\nrespondents identified BOOKING.COM as a brand name. Booking.com B.V. v. Matal, 278 F. Supp. 3d 891,\n915 (E.D. Va. 2017).\n36\n\n39 Even if the Court were to find that all the survey evidence was on balance inconclusive that\nwould not affect the Court\xe2\x80\x99s ultimate factual determination that there is sufficient affirmative evidence\nto conclude that PRETZEL CRISPS is a generic mark.\n\n92\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndoes he distinguish between search results that reflect the Plaintiffs\xe2\x80\x99 own websites (which are 3 of the\nfirst 5 results) or websites that were sponsored by Plaintiffs (see, e.g., Doc. 42-11 at 4 (recipe provided\nby Plaintiffs to Allrecipes.com) and those websites that reflect independent trademark references.\nIndeed, the vast bulk of the Google search results simply identify websites of large companies offering\nPRETZEL CRISPS for sale. (See Id. at 2 (Amazon.com, Walmart.com, etc.)). Again, there is no dispute\nthat Plaintiffs have developed a very large business selling their pretzel product; however, the typical\ncommercial sales efforts associated with that business\xe2\x80\x94including the websites featured in the\nPlaintiffs\xe2\x80\x99 Google search, do not reflect consumer perceptions of genericness. Instead, to the extent they\nhave relevance to this action at all, they may be mostly evidence of secondary meaning, an issue that\nthe Court does not reach. Accordingly, the Court gives the Google results little weight.\n[82] Similarly, it is undisputed that Plaintiffs have developed a large social media presence as part\nof their marketing efforts. As of October 2018, the PRETZEL CRISPS brand had over 47,800 followers\non Twitter. Mr. Beaver, a \xe2\x80\x9clitigation case manager\xe2\x80\x9d at Plaintiffs\xe2\x80\x99 counsel\xe2\x80\x99s law firm, claims to have\n\xe2\x80\x9cpersonally reviewed\xe2\x80\x9d each of 1137 tweets and 132 hashtags but does not indicate which ones he\nidentified as brand references, generic references, neither, or false positives or how he reached his\nconclusions (and like Mr. Lauzau there is no evidence that he has any training or expertise in\ntrademark law).\n[83] Moreover, Mr. Beaver counted as \xe2\x80\x9cbrand references\xe2\x80\x9d all tweets posted by Plaintiffs, all tweets\nwith Plaintiffs\xe2\x80\x99 twitter handle (@pretzelcrisps) or the hashtag #snackfactory and all tweets that\nreference \xe2\x80\x9cSnack Factory\xe2\x80\x9d or include an image of Snack Factory products. As with Plaintiffs\xe2\x80\x99 own press\nreleases, none of Plaintiffs\xe2\x80\x99 tweets or those sponsored by Plaintiffs (which account for a substantial\npercentage of the tweets and over three-quarters of the hashtags), id., provide any probative evidence\nof consumer perceptions. Rather, they simply reflect Plaintiffs\xe2\x80\x99 efforts to \xe2\x80\x9cbrand\xe2\x80\x9d and promote their\nown product.\n[84] Further, merely referencing Plaintiffs or their hashtag does not necessarily make the use of\n\xe2\x80\x9cpretzel crisps\xe2\x80\x9d in a tweet a brand reference. As with the Google search results discussed above, use of\nthe disputed product name in the normal course of business communications, here on Twitter, does\nnot reveal whether or not a consumer understands the product name primarily as a brand or a type of\ngoods. Instead, it just reflects consumer engagement with the product,40 which, again, may be relevant\nto secondary meaning but not necessarily genericness. Simply put, it is unremarkable and\nunconvincing that communication about a product mentions the product name. And, because\nconsumer perception of a term may be \xe2\x80\x9cmixed,\xe2\x80\x9d that is, reflecting both generic use and brand\nawareness, see Booking.com, 278 F.3d at 902, a bare reference to the product name does not answer\nthe more difficult question before the Court of how consumers primarily perceive the term. So, after a\nde novo review of the evidence, the Court finds, for all the reasons discussed above, that Plaintiffs\xe2\x80\x99\nevidence of Twitter communications is unpersuasive.\nOther Available Product Names\n[85] Finally, Plaintiffs argue that the availability of other product names for \xe2\x80\x9cpretzel cracker\xe2\x80\x9d\nsnacks supports their claim that PRETZEL CRISPS is not generic. First, regardless of the availability of\nsimilar names for a product, a generic name cannot be registered as a trademark thereby granting\nexclusive use of the name of a product to a single company. See Ale House Mgmt., Inc. v. Raleigh Ale\nHouse, 205 F.3d 137, 141 (4th Cir. 2000) (affirming summary judgment finding term ALE HOUSE\n\n40 The Court also is concerned that a focus on those relative few consumers who are most engaged\nwith the product through Twitter would be a misleading sample in determining how the \xe2\x80\x9crelevant\npublic,\xe2\x80\x9d i.e., average or typical consumers perceive the product name.\n\n93\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ngeneric, while also noting alternative generic names like \xe2\x80\x9cbar,\xe2\x80\x9d \xe2\x80\x9clounge,\xe2\x80\x9d \xe2\x80\x9cpub,\xe2\x80\x9d \xe2\x80\x9csaloon,\xe2\x80\x9d and \xe2\x80\x9ctavern\xe2\x80\x9d);\nsee also McCarthy \xc2\xa7 12:9 (\xe2\x80\x9cThere is usually no one, single and exclusive generic name for a product.\nAny product may have many generic designations. Any one of those is incapable of trademark\nsignificance.\xe2\x80\x9d).\n[86] Second, the Court does not find that the names suggested, while generic, are necessarily\n\xe2\x80\x9cequally acceptable\xe2\x80\x9d alternatives. For example, Plaintiffs claim that \xe2\x80\x9cpretzel thins\xe2\x80\x9d and \xe2\x80\x9cpretzel rounds\xe2\x80\x9d\nare equivalent generic names. However, \xe2\x80\x9cpretzel thins\xe2\x80\x9d is also a name used for regularly shaped thin\npretzels and \xe2\x80\x9cpretzel rounds\xe2\x80\x9d is used for small, rounded pretzel pieces as well as snacks that look more\nlike Plaintiff\xe2\x80\x99s \xe2\x80\x9cpretzel crisps\xe2\x80\x9d product. Therefore, a company could reasonably conclude that \xe2\x80\x9cpretzel\ncrisps\xe2\x80\x9d is a better description for a small, rounded pretzel product.\n[87] Moreover, the absence of other companies using the name \xe2\x80\x9cpretzel crisps\xe2\x80\x9d to describe their\nproducts is neither \xe2\x80\x9ccompelling evidence\xe2\x80\x9d as urged by Plaintiffs nor even surprising. As discussed\nabove, Plaintiffs have aggressively \xe2\x80\x9cpoliced\xe2\x80\x9d the mark. Thus, the obvious reason no one else uses the\nname is they will be threatened with legal action. In such circumstances, the relative absence of\ncompetitive use of the name simply reflects a practical business judgment rather than any\nacknowledgement that \xe2\x80\x9cpretzel crisps\xe2\x80\x9d is not generic.\nIV. CONCLUSION\n[88] In conclusion, there is no dispute that Snack Factory Pretzel Crisps is a hugely successful\nproduct, due in no small part to Plaintiffs\xe2\x80\x99 extensive marketing efforts and the PRETZEL CRISPS\ntrademark registration they received and have enforced to clear the field of similarly named products.\nHowever, no matter how much commercial success the product enjoys, Plaintiffs are not entitled to\nmonopolize the common name of the product being sold. Summarizing the evidence on the\ngenericness of the mark, considered as a whole, the Court finds that the combination of the\nacknowledged generic elements of the compound mark \xe2\x80\x9cyields no additional meaning to consumers\ncapable of distinguishing the goods\xe2\x80\x9d and, independently, usage by competitors, media references and\nconsumer surveys (as well as some use by Plaintiffs) reflects that, on balance, consumers primarily\nperceive \xe2\x80\x9cpretzel crisps\xe2\x80\x9d to be a common / generic name. Therefore, for all the reasons discussed\nabove, the Court finds that Frito-Lay has carried its burden to prove by a preponderance of the\nevidence that PRETZEL CRISPS is a generic mark, and this Court will affirm the TTAB and order the\ncancellation of the registration of the mark.\n....\nComments and Questions\n1. What is the appropriate level of abstraction? With respect to the genus/species distinction, how\ndoes one establish the appropriate level of abstraction at which one defines the genus, the species, and\neven the subspecies (or, for that matter, the family above the genus)? What prevents a plaintiff from\nclaiming that the genus is, for example, beer, and the plaintiff merely wants rights in the name of a\nspecies of beer, which is \xe2\x80\x9clight beer\xe2\x80\x9d? See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75\n(7th Cir. 1977) (finding LIGHT and LITE for beer to be generic).\n2. Surveying for Genericism: The \xe2\x80\x9cThermos\xe2\x80\x9d Survey Method. In American Thermos Products Co. v.\nAladdin Industries, Inc., 207 F. Supp. 9 (D. Conn. 1962), aff\xe2\x80\x99d, 321 F.2d 577 (2d Cir. 1963), the defendant\nargued that the term \xe2\x80\x9cthermos\xe2\x80\x9d had lost its significance as a designation of source and become a\ngeneric term for vacuum-insulated containers. To support this argument, the defendant submitted a\nsurvey whose method has been copied in many subsequent genericism cases. See, e.g., E.T. Browne\nDrug Co. v. Cococare Products, Inc., 538 F.3d 185, 87 U.S.P.Q.2d 1655 (3d Cir. 2008) (evaluating\nThermos-type survey). See also MCCARTHY \xc2\xa7 12:15. In essence, a Thermos survey (1) asks the survey\nrespondent whether they are familiar with the general product at issue (e.g., \xe2\x80\x9cthe type of container that\nis used to keep liquids, like soup, coffee, tea and lemonade, hot or cold for a period of time\xe2\x80\x9d), (2) asks\n94\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe respondent to imagine him/herself walking into a store and asking for that product, and then (3)\ninquires \xe2\x80\x9cWhat would you ask for\xe2\x80\x94that is, what would you tell the clerk you wanted?\xe2\x80\x9d The survey will\nthen typically ask some form of the question \xe2\x80\x9cCan you think of any other words that you would use to\nask for the product?\xe2\x80\x9d In American Thermos Products, 75% of the 3,300 respondents answered\n\xe2\x80\x9cThermos\xe2\x80\x9d to the \xe2\x80\x9cwhat would you ask for\xe2\x80\x9d question. American Thermos Products, 207 F. Supp. at 2122. The court found that the term \xe2\x80\x9cthermos\xe2\x80\x9d had become generic for vacuum-insulated bottles.\nThe Thermos survey method has been criticized on the ground that \xe2\x80\x9cfor a very strong trademark,\nrespondents with brand loyalty may answer with the trademark and drop what they consider to be a\ngeneric name, because it\xe2\x80\x99s so obvious to them.\xe2\x80\x9d MCCARTHY \xc2\xa7 12:15. Imagine you walk into a fast food\nrestaurant in order to purchase a carbonated cola-flavored beverage. What would you ask for? What\ndo you think the results of such a survey of 100 respondents would be, and do they support McCarthy\xe2\x80\x99s\ncriticism?\n3. Surveying for Genericism: The \xe2\x80\x9cTeflon\xe2\x80\x9d Survey Method. In E. I. DuPont de Nemours & Co. v.\nYoshida International, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975), Dupont, producer of TEFLON resins,\nbrought a trademark action against the defendant Yoshida, producer of EFLON zippers. In response to\nYoshida\xe2\x80\x99s argument that TEFLON had become generic, DuPont submitted two surveys, one of which was\na telephone survey in which respondents were first given what was essentially a mini-course in the\ndifference between \xe2\x80\x9cbrand names\xe2\x80\x9d and \xe2\x80\x9ccommon names\xe2\x80\x9d and then asked if \xe2\x80\x9cteflon\xe2\x80\x9d was a brand name\nor a common name. The core of the survey script proceeded as follows:\nI\xe2\x80\x99d like to read 8 names to you and get you to tell me whether you think it is a brand name\nor a common name; by brand name, I mean a word like Chevrolet which is made by one\ncompany; by common name, I mean a word like automobile which is made by a number of\ndifferent companies. So if I were to ask you, \xe2\x80\x9cIs Chevrolet a brand name or a common\nname?,\xe2\x80\x9d what would you say?\nNow, if I were to ask you, \xe2\x80\x9cIs washing machine a brand name or a common name?,\xe2\x80\x9d what\nwould you say?\n[If respondent understands continue. If not understand, explain again.]\nNow, would you say \xe2\x80\x94\xe2\x80\x94\xe2\x80\x94 is a brand name or a common name?\nMCCARTHY \xc2\xa7 12:16. In one evening, 514 men and 517 women were surveyed in 20 cities. The survey\nresults were as follows:\n\nInterestingly, Yoshida submitted a Thermos survey to support its claim that\ngeneric. As the court explained, this survey\n\nTEFLON\n\nhad become\n\nwas conducted among adult women, 90.6% of whom expressed awareness of \xe2\x80\x98kitchen\npots and pans that have their inside surfaces coated by chemical substances to keep\ngrease or food from sticking to them.\xe2\x80\x99 Of the aware respondents, 86.1% apparently\n95\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmentioned only \xe2\x80\x98TEFLON\xe2\x80\x99 or \xe2\x80\x98TEFLON II\xe2\x80\x99 [DuPont\xe2\x80\x99s mark for an improved means of\napplying its resin to metal surfaces] as their sole answer when asked, \xe2\x80\x98What is the\nname . . . or names of these pots and pans . . .?\xe2\x80\x99 Further, 71.7% of the aware women gave\nonly \xe2\x80\x98TEFLON\xe2\x80\x99 or \xe2\x80\x98TEFLON II\xe2\x80\x99 as the name they would use to describe the pots and pans\nto a store clerk or friend.\nE. I. DuPont de Nemours & Co., 393 F.Supp. at 525.\nThe court ultimately found DuPont\xe2\x80\x99s brand name vs. common name survey to be the most\npersuasive. In Yoshida\xe2\x80\x99s Thermos survey (as in other surveys in the case not discussed here), the court\nfound, \xe2\x80\x9crespondents were, by the design of the questions, more often than not focusing on supplying\nthe inquirer a \xe2\x80\x98name\xe2\x80\x99, without regard to whether the principal significance of the name supplied was\n\xe2\x80\x98its indication of the nature or class of an article, rather than an indication of its origin.\xe2\x80\x99\xe2\x80\x9d Id. at 527\n(quoting King-Seeley Thermos Co., 321 F.2d at 580). Only DuPont\xe2\x80\x99s brand name vs. common name\nsurvey\nreally gets down to the critical element of the case. . . . {T}he responses of the survey\nreveal that the public is quite good at sorting out brand names from common names, and,\nfor TEFLON, answers the critical question left unanswered by the ambiguities inherent in\n{the other surveys]\xe2\x80\x94that of the principal significance of the TEFLON mark to the public.\nNot only have defendants failed to show that TEFLON\xe2\x80\x99s principal significance is as a\ncommon noun, plaintiff has succeeded in showing it to be a \xe2\x80\x98brand name\xe2\x80\x99\xe2\x80\x94an indicator,\nin the words of DuPont\xe2\x80\x99s questionnaire, of a product \xe2\x80\x98made by one company.\xe2\x80\x99\xe2\x80\x9d\nE. I. DuPont de Nemours & Co., 393 F.Supp. at 527.\nDo you agree that the Teflon survey method is superior to the Thermos survey method for\nassessing whether a mark is generic?\n4. Surveying for Genericism: Secondary Meaning Surveys? In a portion of the Snyder\xe2\x80\x99s Lance opinion\nnot excerpted above, the district court quoted and endorsed the TTAB\xe2\x80\x99s analysis of a secondary\nmeaning survey that Princeton Vanguard had submitted in an effort to prove that PRETZEL CRISPS had\nacquired secondary meaning. The TTAB interpreted the survey evidence rather differently. As quoted\nby the Synder\xe2\x80\x99s Lance district court, the TTAB explained:\nThe [Mantis Survey] was conducted via online participation, between August 26 and\nAugust 30, 2011. There were 400 survey participants. Respondents were invited by email\nto participate in the survey and were told it was about \xe2\x80\x9csalty snack foods.\xe2\x80\x9d Individuals\nwere then asked prescreening questions. To be included in the survey, individuals had to,\namong other things, be the \xe2\x80\x9cprimary grocery shopper,\xe2\x80\x9d be \xe2\x80\x9cbetween the ages of 24 and\n39,\xe2\x80\x9d and \xe2\x80\x9chave purchased crackers and pretzels in the past month and will purchase\ncrackers and pretzels in the next month.\xe2\x80\x9d\nSurvey respondents were informed during the screening process about the\ndifference between \xe2\x80\x9cbrand\xe2\x80\x9d and \xe2\x80\x9ccommon\xe2\x80\x9d names and then allowed to proceed with the\nsurvey only if they correctly associated BAKED TOSTITOS with \xe2\x80\x9conly one company\xe2\x80\x9d and\nTORTILLA CHIPS with \xe2\x80\x9cmore than one company.\xe2\x80\x9d For those who proceeded with the\nstudy, two control names were given, and the same questions were asked. The results are\nshown as follows:\n\n96\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nBased on the survey, Mr. Mantis found that 38.7% of the respondents associated the\nname \xe2\x80\x9cPRETZEL CRISPS\xe2\x80\x9d with only one company. On that basis, he stated: \xe2\x80\x9cIt is my\nopinion that the name \xe2\x80\x98PRETZEL CRISPS,\xe2\x80\x99 used in conjunction with a salty snack food\nproduct, has acquired secondary meaning.\xe2\x80\x9d\nPlaintiff retained Dr. Ivan Ross to rebut the findings of Mr. Mantis. Keeping in mind\nthat the rebuttal was as to a survey offered to show acquired distinctiveness, Dr. Ross\xe2\x80\x99\nmain objection to the Mantis survey is that although Mr. Mantis said that he conducted\nthe survey for the purpose of establishing secondary meaning, Mr. Mantis\xe2\x80\x99s methodology\nactually analyzes genericness. Plaintiff specifically argues that the Mantis survey was\nconducted in the manner of a Teflon-style survey, in that participants were asked\nwhether they associate each term with one company or with more than one company. In\nthis regard, during the initial mini-course, participants were specifically instructed as to\nthe differences between \xe2\x80\x9cbrand\xe2\x80\x9d and \xe2\x80\x9ccommon\xe2\x80\x9d names:\nSome names are brand names. A brand name refers to a product associated with one\nparticular company. Other names are common names. A common name refers to a type of\nproduct associated with more than one company.\nAs such, participants were told that if they associated a term with \xe2\x80\x9cone particular\ncompany\xe2\x80\x9d then it is a \xe2\x80\x9cbrand name,\xe2\x80\x9d and vice-versa. With this instruction given to all\nparticipants in the survey, we find it logical to consider all those who said they associated\nthe term \xe2\x80\x9cPRETZEL CRISPS\xe2\x80\x9d with \xe2\x80\x9cone particular company\xe2\x80\x9d thus also found the term\n\xe2\x80\x9cPRETZEL CRISPS\xe2\x80\x9d to be a \xe2\x80\x9cbrand name\xe2\x80\x9d rather than a \xe2\x80\x9ccommon name,\xe2\x80\x9d and that all those\nwho said they associated the term \xe2\x80\x9cPRETZEL CRISPS\xe2\x80\x9d with \xe2\x80\x9cmore than one company\xe2\x80\x9d\nthus also found the term \xe2\x80\x9cPRETZEL CRISPS\xe2\x80\x9d to be a \xe2\x80\x9ccommon name\xe2\x80\x9d rather than a \xe2\x80\x9cbrand\nname.\xe2\x80\x9d In this regard, only 38.7% of participants, which is rather less than 50%, found\nthe term to be a brand name.\nAccordingly, we find that although the Mantis survey was conducted and offered for\nthe purpose of showing secondary meaning, if we had considered the other two surveys\non the question of genericness, the Mantis survey should also have been considered on\nthe issue of genericness. Since substantially less than half of the Mantis survey\nrespondents associated the term \xe2\x80\x9cPRETZEL CRISPS\xe2\x80\x9d with a single source, this survey\nweighs in favor of finding genericness. We note, in this regard, that even if we were to\nsplit the 13.5% percent of \xe2\x80\x9cdon\xe2\x80\x99t know\xe2\x80\x9d responses, as suggested by Defendant with\nregard to the Simonson survey, then adding 6.75% to each of the \xe2\x80\x9conly one company\xe2\x80\x9d and\n\xe2\x80\x9cmore than one company\xe2\x80\x9d tallies, we still have less than a majority who associate the\nterm with one company, and more than half who associate the term with more than one\ncompany, and so we have the same result.\nSnyder\xe2\x80\x99s Lance, Inc. v. Frito-Lay North America, Inc., __ F.Supp.3d __, 2021 WL 232293, at *22\xe2\x80\x9323\n(2021) (quoting Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 U.S.P.Q.2d 1184, 1191-1201\n(TTAB 2017)).\n5. Is WINDOWS for a computer operating system generic? On December 20, 2011, Microsoft filed suit\nagainst Lindows.com (\xe2\x80\x9cLindows\xe2\x80\x9d) alleging that Lindows\xe2\x80\x99 mark LINDOWS for a Linux-based operating\nsystem infringed Microsoft\xe2\x80\x99s WINDOWS mark. Lindows argued that WINDOWS was generic at the time that\nMicrosoft first began to use it in 1985. In Microsoft Corp. v. Lindows.com, Inc., No. 01 Civ. 2115C, 2002\nWL 31499324 (W.D.Wash., Mar. 15, 2002), the district court denied Microsoft\xe2\x80\x99s motion for a\npreliminary injunction, finding that there were \xe2\x80\x9cserious questions regarding whether Windows is a\nnon-generic name and thus eligible for the protections of federal trademark law.\xe2\x80\x9d Id. at *18. The case\neventually settled \xe2\x80\x94 with Microsoft agreeing to pay Lindows $20 million to change its name (to\nLinspire) and cease using the LINDOWS mark on any of its products.\n97\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n6. Usage policies. Owners of very well-known marks are especially wary of their marks\xe2\x80\x99 falling\nprey to genericide through widespread generic usage. They typically develop and seek to enforce strict\npolicies on how their marks are used. See, e.g., Google, Rules for proper usage,\nhttp://www.google.com/permissions/trademark/rules.html (\xe2\x80\x9cUse a generic term following the\ntrademark, for example: GOOGLE search engine, Google search, GOOGLE web search\xe2\x80\x9d; \xe2\x80\x9cUse the\ntrademark only as an adjective, never as a noun or verb, and never in the plural or possessive form.\xe2\x80\x9d;\n\xe2\x80\x9cIf you do not capitalize the entire mark, always spell and capitalize the trademark exactly as they are\nshown in the Google Trademarks and Suggested Accepted Generic Terms.\xe2\x80\x9d).\n7. Source-denotative in American English, but generic elsewhere? Sheepskin boots with a tanned\nouter surface, fleece interior, and synthetic soles are generically known as \xe2\x80\x9cugg boots\xe2\x80\x9d or \xe2\x80\x9cuggs\xe2\x80\x9d in\nAustralia and New Zealand, where they were originally developed and where a variety of companies\nuse the term \xe2\x80\x9cugg\xe2\x80\x9d to describe the boots they manufacture. In the United States, by contrast, UGG is a\nregistered trademark for such boots, owned by Deckers Outdoor Corp. (U.S. Trademark Reg. No.\n4,234,396, Oct. 30, 2012). When an Australian company sought to sell what it called \xe2\x80\x9cugg boots\xe2\x80\x9d in the\nUnited States, Deckers sued. The Australian company argued that the term was generic. It lost. In\ngranting summary judgment to Deckers on the issue, the court explained:\nAustralian Leather has evidence that ugg is generic in Australia, but there is no evidence\nthat Americans familiar with Australian usage (or Australian visitors to the United States)\nwould be misled into thinking that there is only one brand of ugg-style sheepskin boots\navailable in this country. Australian Leather needed to come forward with some evidence\nthat would allow a jury to conclude that the term ugg has a generic meaning to buyers in\nthe United States; its Australian and surf-shop evidence does not suffice.\nDeckers Outdoor Corp. v. Australian Leather Pty. Ltd., 340 F. Supp. 3d 706, 716 (N.D. Ill. 2018).\nFor an interesting comparison, the Swiss and French associations representing the makers of\nGruy\xc3\xa8re cheese filed in 2015 an application at the PTO to register the term GRUYERE (without the\naccent) as a certification mark. GRUY\xc3\x88RE is a protected geographic indication in the European Union\nand Switzerland. Various American dairy interests opposed the registration. The TTAB refused\nregistration on the ground that the term was generic. It found that American consumers \xe2\x80\x9cunderstand\nthe term \xe2\x80\x98gruyere\xe2\x80\x99 as a designation that primarily refers to a category within the genus of cheese that\ncan come from anywhere.\xe2\x80\x9d Int\xe2\x80\x99l Dairy Foods Ass\xe2\x80\x99n v. Interprofession Du Gruyere, 2020 TTAB LEXIS\n268, *82, 2020 U.S.P.Q.2D 10892 (TTAB August 5, 2020).\n8. Can a color be generic? In Milwaukee Electric Tool Corp. v. Freud America, Inc., Cancellation Nos.\n92,059,634 & 92,059,637 (TTAB Dec. 2, 2019) [precedential], the TTAB found that the color red was\ngeneric when covering the surface of saw blades:\nThis evidence overwhelmingly demonstrates that the color red on saw blades is so\ncommon in the industry that it cannot identify a single source for saw blades for power\nwoodworking machines or saw blades for reciprocating power saws. What is more,\nbecause the evidence establishes that the color red was widely used by others at the time\nFreud filed the underlying applications for each of its subject registrations and thirdparty use continues to the present day, the color red was generic for power saw blades\nwhen Freud applied for both of its marks and remains so now.\nId. at *67. Most commentators would likely agree with the proposition that \xe2\x80\x9c[g]enericness seems . . . to\nbe the wrong pigeonhole for a proposed color mark.\xe2\x80\x9d John L. Welch, Precedential No. 37: TTAB Rules\nthat the Color Red is Generic for Saw Blades, THE TTABLOG, Dec. 9, 2019,\nhttp://thettablog.blogspot.com/2019/12/precedential-no-37-ttab-rules-that.html. More appropriate\nwould have been a finding that the mark lacked acquired distinctiveness, failed to function as a mark,\nor was perceived by consumers as mere decoration. However, one of the marks at issue had been\n98\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nregistered for more than five years, so it could not likely have been challenged on these grounds. (See\nLanham Act \xc2\xa7 14 and Part I.D.6 below).\nd.\n\nFailure to Function as a Mark\n\nIn recent years, trademark applicants have increasingly sought to register cultural memes or\nother commonplace slogans as trademarks for various merchandise. The PTO has rejected such\napplications on the ground that the applied-for marks are not perceived by consumers as designations\nof source. See, e.g., In re Texas With Love, LLC, Serial No. 87793802 (TTAB October 29, 2020)\n[precedential] (refusing to register TEXAS LOVE for \xe2\x80\x9chats, shirts\xe2\x80\x9d on ground that because the phrase\n\xe2\x80\x9conly serves as an expression of a concept or sentiment, and is widely used by third parties, it would\nnot be perceived as an indicator of source in the context of Applicant\xe2\x80\x99s identified goods.\xe2\x80\x9d); In re Gillard,\nSerial No. 87469115 (TTAB Jan. 11, 2019) (not citable as precedent) (refusing application of one John\nGillard to register #COVFEFE on ground that \xe2\x80\x9cbecause hashtags are commonly employed to facilitate\ncategorization and searching of topics of public discussion, and the record makes it clear that\n#COVFEFE has served that purpose in promoting discussion of the mystery word in the President\xe2\x80\x99s\ntweet, the public will not understand #COVFEFE to identify one, and only one, source of clothing, and\nto recognize Applicant as that source, when it appears on Applicant\xe2\x80\x99s goods\xe2\x80\x9d); PTO Office Action, U.S.\nApplication Serial No. 86,506,015, Mar. 25, 2015 (refusing registration of JE SUIS CHARLIE for various\ngoods on ground that \xe2\x80\x9c[b]ecause consumers are accustomed to seeing this slogan or motto commonly\nused in everyday speech by many different sources, the public will not perceive the motto or slogan as\na trademark that identifies the source of applicant\xe2\x80\x99s goods but rather only as conveying an\ninformational message\xe2\x80\x9d); PTO Office Action, U.S. Application No. 88579771, Sept. 11, 2019 (refusing\nbasketball player LeBron James\xe2\x80\x99s application to register TACO TUESDAY in connection with podcasting\nand other related goods and services); PTO Office Action, U.S. Application No. 86,479,784, Mar. 4, 2015\n(refusing registration of I CAN\xe2\x80\x99T BREATHE for clothing). In the opinion excerpted below, the TTAB refused\ncountry music singer Lee Greenwood\xe2\x80\x99s application to register the phrase GOD BLESS THE USA on failure to\nfunction grounds. Is the TTAB essentially engaging in a secondary meaning analysis or are its concerns\nbroader?\n\nMr. Lee Greenwood\nIn re Lee Greenwood\nSerial No. 87168719, 2020 WL 7074687 (TTAB Dec. 1, 2020)\n[1] Applicant, Lee Greenwood, seeks registration on the Principal Register of the proposed mark\nGOD BLESS THE USA (in standard characters) for \xe2\x80\x9caccent pillows; decorative centerpieces of wood,\xe2\x80\x9d in\nInternational Class 20 and \xe2\x80\x9cdecorative wall hangings, not of textile\xe2\x80\x9d in International Class 27\n{Application Serial No. 87,168,719}.\n99\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[2] The Trademark Examining Attorney has refused registration of Applicant\xe2\x80\x99s proposed mark\nunder Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. \xc2\xa7\xc2\xa7 1051, 1052 and 1127, on the ground that\nit fails to function as a trademark. When the refusal was made final, Applicant appealed and filed a\nbrief seeking reversal of the refusal to register.\n....\n[3] A proposed trademark is registrable only if it functions as an identifier of the source of the\napplicant\xe2\x80\x99s goods or services. In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, *16 (TTAB 2019). To\nfunction as a trademark, an applicant\xe2\x80\x99s proposed mark must, by definition, \xe2\x80\x9cidentify and distinguish his\nor her goods, . . . from those manufactured or sold by others and . . . indicate the source of the goods,\neven if that source is unknown.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127, quoted in In re Texas With Love, LLC, 2020 USPQ2d\n11290, *2 (TTAB 2020). See also In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976)\n(\xe2\x80\x9c[T]he classic function of a trademark is to point out distinctively the origin of the goods to which it is\nattached\xe2\x80\x9d). \xe2\x80\x9cMatter that does not operate to indicate the source or origin of the identified goods or\nservices and distinguish them from those of others does not meet the statutory definition of a\ntrademark and may not be registered, regardless of the register on which registration is sought.\xe2\x80\x9d In re\nAC Webconnecting Holding B.V., 2020 USPQ2d 11048, *2-3 (TTAB 2020).\n[4] The critical inquiry in determining whether a proposed mark functions as a trademark is how\nit would be perceived by the relevant public. In re Vox Populi Registry Ltd., 2020 USPQ2d 11289, *4\n(TTAB 2020); In re TracFone Wireless, Inc., 2019 USPQ2d 222983, *1 (TTAB 2019) (\xe2\x80\x9cThe key question\nis whether the asserted mark would be perceived as a source indicator for Applicant\xe2\x80\x99s [goods or]\nservices.\xe2\x80\x9d); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016). To function as a\ntrademark, the proposed mark must be used in a manner calculated to project to purchasers or\npotential purchasers a single source or origin for the goods. In re DePorter, 129 USPQ2d 1298, 1299\n(TTAB 2019). \xe2\x80\x9cThus, a threshold issue in some cases (like this one) is whether the phrase in question\nin fact functions to identify the source of the services recited in the application and distinguish them\nfrom the services of others or, instead, would be perceived merely as communicating the ordinary\nmeaning of the words to consumers.\xe2\x80\x9d In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1149 (TTAB 2019).\n\xe2\x80\x9cWhere the evidence suggests that the ordinary consumer would take the words at their ordinary\nmeaning rather than read into them some special meaning distinguishing the goods from similar goods\nof others, then the words fail to function as a mark.\xe2\x80\x9d In re Ocean Tech., Inc., 2019 USPQ2d 450686, *3\n(TTAB 2019) (internal punctuation omitted).\n[5] Consumers ordinarily take widely-used, commonplace messages at their ordinary meaning,\nand not as source indicators, absent evidence to the contrary. See In re Mayweather Promotions, LLC,\n2020 USPQ2d 11298, *1 (TTAB 2020) (\xe2\x80\x9cWidely used commonplace messages are those that merely\nconvey ordinary, familiar concepts or sentiments and will be understood as conveying the ordinary\nconcept or sentiment normally associated with them, rather than serving any source-indicating\nfunction.\xe2\x80\x9d). \xe2\x80\x9cMessages that are used by a variety of sources to convey social, political, religious, or\nsimilar sentiments or ideas are likely to be perceived as an expression of support for, or affiliation or\naffinity with, the ideas embodied in the message rather than as a mark that indicates a single source of\nthe goods or services.\xe2\x80\x9d In re DePorter, 129 USPQ2d at 1302 n.14 (quoting TMEP \xc2\xa7 1202.04(b)). \xe2\x80\x9cThe\nmore commonly a phrase is used, the less likely that the public will use it to identify only one source\nand the less likely that it will be recognized by purchasers as a trademark.\xe2\x80\x9d In re Eagle Crest Inc., 96\nUSPQ2d 1227, 1229 (TTAB 2010) quoted in In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402\n(TTAB 2018).\n[6] To determine how consumers are likely to perceive the phrase sought to be registered, we\nlook not only to the specimens, but to other evidence of record showing the phrase as used in general\nparlance. In re Wal-Mart, 129 USPQ2d at 1150. The Examining Attorney maintains that Applicant\xe2\x80\x99s\napplied-for mark, GOD BLESS THE USA, is a common patriotic message, analogous to and synonymous\n100\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwith \xe2\x80\x9cGod Bless America.\xe2\x80\x9d See TMEP \xc2\xa7 1202.04(b) (\xe2\x80\x9cDerivatives or variations of widely used messages\nalso fail to function as marks if they convey the same or similar type of information or sentiment as the\noriginal wording.\xe2\x80\x9d). The wording is, in fact, commonly used by many different sources on a vast array\nof goods, she notes, as illustrated by evidence obtained from over three dozen third-party websites.\nThe following are representative samples from various sources:\n\n1213\n\n141516171819\n\n12\n\nCafePress.com, March 17, 2017 Office Action TSDR at 5.\n\n13\n\nCafePress.com, Id. at 11.\n\n14\n\nZazzle.com, Id. at 14.\n101\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n20212223\n\n[7] Thus, the record evidence demonstrates that a variety of sources prominently display the\nphrase GOD BLESS THE USA on a range of household items such as mugs, trays, cutting boards, pillows,\nornaments, posters, flags, and the like. This common use by third parties renders it less likely that the\npublic would perceive the phrase as identifying a single commercial source. In re Wal-Mart, 129\nUSPQ2d at 1156. In that sense, this case is reminiscent of D.C. One Wholesaler v. Chien, where the\nphrase \xe2\x80\x9cI <<heart>> DC\xe2\x80\x9d was commonly available on a range of goods, from apparel and aprons to\ncommuter cups and keychains. 120 USPQ2d at 1713-14. There, the Board found that the \xe2\x80\x9cwidespread\nornamental use of the phrase by third parties \xe2\x80\x98is part of the environment in which the [proposed mark]\nis perceived by the public and . . . may influence how the [proposed mark] is perceived.\xe2\x80\x9d\xe2\x80\x99 Id. at 1716\n(quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013); In re Tilcon Warren Inc., 221 USPQ 86, 88\n(TTAB 1984)). Here, as there, the record indicates that the phrase GOD BLESS THE USA is displayed,\nnot as a source indicator, but as an expression of patriotism, affection, or affiliation with the United\nStates of America. Id.\n[8] Applicant, a country music artist, insists that \xe2\x80\x9cGod Bless the USA\xe2\x80\x9d would be commonly\nrecognized as his signature song. He quotes Wikipedia:\n\n15\n\nShop.ColonialWilliamsburg.com, Id. at 22\n\n16\n\nSupportStore.com, Id. at 24.\n\n17\n\nCelebratingHomeDirect.com, Id. at 29.\n\n18\n\nChristmasLoft.com, Id. at 36.\n\n19\n\nHobbyLobby.com, Id. at 38.\n\n20\n\nEtsy.com Aug. 11, 2017 Office Action TSDR at 30.\n\n21\n\nEtsy.com, Id. at 34.\n\n22\n\nHouzz.com, Id. at 42.\n\n23\n\nDiscountDecorativeFlags.com, Id. at 50.\n102\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\x9cGod Bless the USA\xe2\x80\x9d is an American patriotic song written and recorded by country music\nartist Lee Greenwood, and is considered to be his signature song. The first album it\nappears on is 1984\xe2\x80\x99s You\xe2\x80\x99ve Got a Good Love Comin\xe2\x80\x99. It reached No. 7 on the Billboard\nmagazine Hot Country Singles chart when originally released in the spring of 1984, and\nwas played at the 1984 Republican National Convention with President Ronald Reagan\nand first lady Nancy Reagan in attendance, but the song gained greater prominence\nduring the Gulf War in 1990 and 1991, as a way of boosting morale. The popularity of the\nsong rose sharply after the September 11 attacks and during the 2003 invasion of Iraq,\nand the song was re-released as a single, re-entering the country music charts at No. 16\nand peaking at No. 16 on the Billboard Hot 100 pop chart in 2001.\n\xe2\x80\x9cThe song \xe2\x80\x98God Bless the USA\xe2\x80\x99 has been downloaded at least two and half million times since\nreentering the Billboard Country Digital Song Sales Chart,\xe2\x80\x9d Applicant points out. He maintains that if\none searches for \xe2\x80\x9cGod Bless the USA\xe2\x80\x9d on the Google search engine, the first page of results refers to\nApplicant\xe2\x80\x99s song title. In view of \xe2\x80\x9cMr. Greenwood\xe2\x80\x99s talent and fame\xe2\x80\x9d and \xe2\x80\x9cthe notoriety of his iconic\nsong \xe2\x80\x98God Bless the USA\xe2\x80\x99 and his close association therewith . . .,\xe2\x80\x9d Applicant contends that the public\nwill regard the proposed mark GOD BLESS THE USA as his trademark.\n[9] However, \xe2\x80\x9c[i]t is well settled that not every designation that is placed or used on a product\nnecessarily functions as a trademark for said product and not every designation adopted with the\nintention that it perform a trademark function necessarily accomplishes that purpose.\xe2\x80\x9d D.C. One\nWholesaler v. Chien, 120 USPQ2d at 1713; accord In re Texas With Love, 2020 USPQ2d 11290 at *2-3.\nBecause there are no limitations to the channels of trade or classes of consumers of the goods\nidentified in the application, the relevant consumers are members of the general public, who may or\nmay not be music aficionados. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);\nBell\xe2\x80\x99s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017), cited in In re\nMayweather Promotions, 2020 USPQ2d 11298 at *3. In any event, even if these consumers were\nfamiliar with the song and Applicant himself, they may not associate the household items identified in\nthe involved application with Applicant or his song, when so many third parties offer household items\nbearing the same wording.\n[10] In sum, based on the record evidence, we find that Applicant\xe2\x80\x99s proposed mark GOD BLESS\nTHE USA is \xe2\x80\x9cdevoid of source-identifying significance and therefore fails to function as a trademark.\xe2\x80\x9d In\nre Hulting, 107 USPQ2d at 1181.\nDecision: The refusal to register is affirmed as to both classes.\nComments and Questions\n1. For more on the \xe2\x80\x9cfailure to function as a mark\xe2\x80\x9d bar to protectability, see Alexandra J. Roberts,\nTrademark Failure to Function, 104 IOWA L. REV. 1977 (2019). See also Lisa P. Ramsey, Using Failure to\nFunction Doctrine to Protect Free Speech and Competition in Trademark Law, 104 IOWA L. REV. ONLINE\n70, 89 (2020) (\xe2\x80\x9cAllowing trademark registration and protection of puns, political and social messages,\nculturally important terms or images, and other common words or designs for expressive merchandise\ncan chill and suppress the speech of competing manufacturers, print-on-demand companies, and\nothers who want to display this language on products sold to people who desire these goods because\nof the ideas they convey.\xe2\x80\x9d).\ne.\n\nFurther Examples of Abercrombie Classifications\n\nProvided here are numerous examples of courts\xe2\x80\x99 classification of trademarks\xe2\x80\x99 distinctiveness\nalong the Abercrombie spectrum. You are very strongly encouraged to determine your own view on the\nappropriate classification before you consult how the court ruled. Do any of the following\nclassifications strike you as incorrect?\n103\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\xa2\n\nTIDE\n\n\xe2\x80\xa2\n\nSERIAL\n\n\xe2\x80\xa2\n\nTHE STORK CLUB\n\n\xe2\x80\xa2\n\nGOOGLE\n\n\xe2\x80\xa2\n\nSNAKELIGHT\n\n\xe2\x80\xa2\n\nCLOROX\n\n\xe2\x80\xa2\n\nSTREETWISE for street maps. See Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 744 (2d Cir.\n\nfor laundry detergent. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 (2000)\n(giving TIDE for laundry detergent as an example of a suggestive mark).\nfor \xe2\x80\x9centertainment in the nature of ongoing audio program featuring investigative\nreporting, interviews, and documentary storytelling.\xe2\x80\x9d See In re Serial Podcast, LLC, 126\nU.S.P.Q.2d 1061 (TTAB 2018) (finding the applied-for standard character mark to be generic\nbut finding the applied-for logos incorporating the term to possess acquired distinctiveness\nand qualify for protection)\nfor a restaurant. See Stork Restaurant v. Sahati, 166 F.2d 348, 355 (9th Cir.\n1948) (finding the stork club to be arbitrary as to a restaurant and reasoning that \xe2\x80\x9c[i]t is in no\nway descriptive of the appellant\xe2\x80\x99s night club, for in its primary significance it would denote a\nclub for storks. Nor is it likely that the sophisticates who are its most publicized customers are\nparticularly interested in the stork.\xe2\x80\x9d).\nfor internet search service. See GILSON \xc2\xa7 2.04 (giving\nexample of a fanciful mark).\n\nGOOGLE\n\nfor search engine as an\n\nfor a light with a flexible neck. See Black & Decker Corp. v. Dunsford, 944 F. Supp.\n220 (S.D.N.Y. 1996) (finding the mark to be descriptive and reasoning that \xe2\x80\x9cSnakelight\xe2\x80\x99 is just\nwhat it says: a \xe2\x80\x98snake-like\xe2\x80\x99 light. In this context, the word \xe2\x80\x98snake\xe2\x80\x99 functions as an adjective,\nmodifying the principal term, the generic noun \xe2\x80\x98light.\xe2\x80\x99 Taken as a whole, the name conveys the\n\xe2\x80\x98immediate idea\xe2\x80\x99 of the \xe2\x80\x98characteristics\xe2\x80\x99 of the product [citing Abercrombie]).\nfor bleach. See Clorox Chemical Co. v. Chlorit Mfg. Corp., 25 F. Supp. 702, 705 (D.N.Y.\n1938) (\xe2\x80\x9c\xe2\x80\x98Clorox\xe2\x80\x99 is a fanciful word, arbitrarily selected in no wise describes its ingredients.\xe2\x80\x9d).\n1998) (\xe2\x80\x9cThe district court ranked the Streetwise mark as suggestive, meaning that the term\n\xe2\x80\x9csuggested\xe2\x80\x9d the features of the product and required the purchaser to use his or her\nimagination to figure out the nature of the product. We agree.\xe2\x80\x9d).\n\n\xe2\x80\xa2\n\nSUPREME\n\n\xe2\x80\xa2\n\nPLAYBOY\n\n\xe2\x80\xa2\n\nNO NAME\n\n\xe2\x80\xa2\n\nBAIKALSKAYA\n\nfor vodka. See Supreme Wine Co. v. American Distilling Co., 310 F.2d 888, 889 (2d Cir.\n1962) (finding SUPREME for vodka to be descriptive on the ground that \xe2\x80\x9c[m]erely laudatory\nwords, such as \xe2\x80\x98best\xe2\x80\x99, \xe2\x80\x98outstanding\xe2\x80\x99, or \xe2\x80\x98supreme\xe2\x80\x99 cannot of their own force indicate the source\nor origin of the labeled goods\xe2\x80\x9d).\nfor a men\xe2\x80\x99s magazine. See Playboy Enters., Inc. v. Chuckleberry Pub., Inc., 687 F.2d 563,\n566-67 (2d. Cir. 1982) (finding the mark to be suggestive and reasoning that \xe2\x80\x9cPlayboy is\ndefined in the Random House Dictionary of the English Language (unabridged ed. 1966) as \xe2\x80\x98a\nwealthy, carefree man who devotes most of his time to leisure, self-amusement, and hedonistic\npleasures, conventionally frequenting parties and night clubs, romancing a rapid succession of\nattractive young women, and racing speedboats and sports cars.\xe2\x80\x99 Although the word may\nsignify the aspirations of PLAYBOY\xe2\x80\x99s readership, it does not describe the product or its\ncontents.\xe2\x80\x9d).\nfor meat and other food products. See J&B Wholesale Distributing, Inc. v. Redux\nBeverages, LLC, 85 U.S.P.Q.2d 1623, 1626 (D. Minn. 2007) (\xe2\x80\x9c[S]tanding alone, \xe2\x80\x98No Name\xe2\x80\x99 does\nnot bear any relation to the product\xe2\x80\x94that is it does not tell the consumer anything about the\nproduct. The Court thus finds that \xe2\x80\x98No Name\xe2\x80\x99 is an arbitrary mark that is entitled to\nprotection.\xe2\x80\x9d).\nfor vodka produced in the Lake Baikal region of Russia, where \xe2\x80\x9cBaikalskaya\xe2\x80\x9d\nmeans \xe2\x80\x9cfrom Baikal\xe2\x80\x9d in Russian. See In re Joint-Stock Co. \xe2\x80\x9cBaik,\xe2\x80\x9d 80 USPQ2d 1305 (TTAB 2006)\n(finding BAIKALSKAYA for vodka to be primarily geographically descriptive)\n104\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\xa2\n\nKODAK\n\n\xe2\x80\xa2\n\nGLOW\n\n\xe2\x80\xa2\n\nBRICK OVEN PIZZA\n\n\xe2\x80\xa2\n\nCITIBANK\n\n\xe2\x80\xa2\n\nODOL\n\nfor photographic film. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210\n(2000) (giving Kodak for film as an example of a fanciful mark).\nfor fragrance, shower gel, and body lotion products. See Glow Indus., Inc. v. Lopez, 252 F.\nSupp. 2d 962, 978 (C.D. Cal. 2002) (finding GLOW suggestive as to perfume and reasoning that\n\xe2\x80\x9c[t]he mark does not directly describe the attributes of Glow, Inc.\xe2\x80\x99s perfume. Indeed, words\nother than the GLOW mark are used on the packaging to convey the fact that the perfume is a\nsandalwood scent. The mark thus appears to refer suggestively to the positive feeling one will\nachieve by using the product.\xe2\x80\x9d); id. at 979 (finding GLOW suggestive as to shower gel and body\nlotion and reasoning that \xe2\x80\x9c\xe2\x80\x98Glow\xe2\x80\x99 is not descriptive of the qualities or characteristics of shower\ngels or body lotions. Indeed, one who hears the word does not immediately think of such\nproducts. Rather, some amount of association is required to link the concept of glowing skin to\nuse of a particular gel or lotion.\xe2\x80\x9d).\nfor frozen pizza. See Schwan\xe2\x80\x99s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir.\n2006) (citing industry usage, media usage, and PTO rulings to find the term generic for pizza\nthat is or appears to be baked in a brick oven).\nfor banking services. See Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d 1540, 222\nU.S.P.Q. 292 (11th Cir. 1984) (approving of the district court\xe2\x80\x99s finding that CITIBANK is\nsuggestive for banking services).\nfor mouthwash. See In re Odol Chemical Corp., 150 U.S.P.Q. 827 (TTAB 1966) (finding\n\nODOL for mouthwash to be fanciful).\n\n\xe2\x80\xa2\n\nMORNINGSIDE\n\n\xe2\x80\xa2\n\nEAST END\n\n\xe2\x80\xa2\n\nNUMBER ONE IN FLOOR CARE\n\n\xe2\x80\xa2\n\nMARCH MADNESS\n\n\xe2\x80\xa2\n\nSPEEDY\n\n\xe2\x80\xa2\n\nBEAR\n\nfor financial services. See Morningside Group Ltd. v. Morningside Capital Group\nL.L.C., 182 F.3d 133 (2d Cir. 1999) (finding MORNINGSIDE to be arbitrary as to financial services).\nfor vodka distilled in the East End of Houston, Texas. See In re Buffalo Bayou\nDistilleries, LLC, Serial No. 86,583,137 (TTAB July 30, 2018) (not citable as precedent) (\xe2\x80\x9cIn this\ncase, the record reflects that \xe2\x80\x98East End\xe2\x80\x99 can refer to numerous geographic locations, suggesting\nthat its primary significance is not referring to the area in Houston, Texas. Also, the quantity\nand nature of the evidence regarding the East End of Houston does not establish that it is\ngenerally known to U.S. consumers. . . . The first prong of the inquiry under Section 2(e)(2),\nthat the primary significance of the term in the mark sought to be registered is the name of a\nplace generally known to the public, is not satisfied.\xe2\x80\x9d).\nfor vacuums. See Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d\n1357, 1360, 57 U.S.P.Q.2d 1720 (Fed. Cir. 2001) (finding the mark NUMBER ONE IN FLOOR CARE for\nvacuums to \xe2\x80\x9cgenerally laudatory . . . and thus . . . not inherently distinctive\xe2\x80\x9d).\nfor annual basketball tournament. See March Madness Athletic Ass\xe2\x80\x99n, L.L.C. v.\nNetfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003) (finding without analysis the mark MARCH\nMADNESS to be descriptive of an annual basketball tournament).\nfor bail bond services. See Lederman Bonding Co. v. Sweetalia, 83 U.S.P.Q.2d 1660, 2006\nWL 2949290, at *3 (D. Colo. 2006) (finding SPEEDY for bail bond services to be descriptive\n\xe2\x80\x9cbecause it describes the quality of the bail bond services offered\xe2\x80\x9d).\nfor cold-weather outerwear. See Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear,\nInc., 909 F.Supp. 896, 904 (S.D.N.Y. 1995) (\xe2\x80\x9cThe word \xe2\x80\x98bear, especially in conjunction with the\nimage of a polar bear, is connected with the concept of cold weather and protection from the\nelements. It suggests that the type of outerwear and boots sold by plaintiff offer the sort of\nprotection afforded by bears\xe2\x80\x99 skins. The imagination and thought process involved in this\nmental association supports the conclusion that plaintiff\xe2\x80\x99s bear marks are suggestive,\nparticularly as used in connection with boots and cold weather outwear.\xe2\x80\x9d).\n105\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\xa2\n\nQUANTUM\n\n\xe2\x80\xa2\n\nVIAGRA\n\n\xe2\x80\xa2\n\nEach of 928, 924, 944, 911, 911S, and 911SC for automobiles. See Porsche Cars N. Am., Inc. v.\nLloyd Design Corp., 2002 U.S. Dist. LEXIS 9612 (N.D. Ga. Mar. 26, 2002) (\xe2\x80\x9c[M]ost courts have\nheld that model numbers, whether numbers or alphanumeric designations, are generally\nconsidered descriptive for the purposes of trademark protection. Although they may be\n\xe2\x80\x9carbitrary\xe2\x80\x9d in the sense that they do not refer directly to a characteristic of the products,\nmodel numbers are generally intended merely to distinguish one specific product from\nanother by a particular source, and are not intended to distinguish products from totally\ndifferent sources.\xe2\x80\x9d).\n\n2.\n\nfor a health club. See Quantum Fitness Corp. v. Quantum Lifestyle Ctrs., 83 F. Supp. 2d\n810, 820 (S.D. Tex. 1999) (finding QUANTUM to be arbitrary for health club and reasoning, in\npart, that \xe2\x80\x9c[t]he absence of a connection between the term \xe2\x80\x9cquantum\xe2\x80\x9d and the plaintiff\xe2\x80\x99s\nproducts is evidenced by the frequent use of the word by third parties in a variety of different,\nunrelated lines of business\xe2\x80\x9d).\nfor an erectile dysfunction drug. See Pfizer Inc. v. Sachs, 652 F. Supp. 2d 512, 520\n(S.D.N.Y. 2009) (\xe2\x80\x9cThe Viagra mark is fanciful, because the word \xe2\x80\x9cViagra\xe2\x80\x9d was coined\nspecifically for purposes of this trademark and has no meaning outside this context.\xe2\x80\x9d).\n\nThe Distinctiveness Analysis of Nonverbal Marks\n\nWe have so far discussed the concept of trademark distinctiveness only in reference to word\nmarks. But as we saw at the beginning of this Part, contemporary trademark law offers protection to\nfar more than words and phrases. It protects image marks, sound marks, scent marks, and perhaps\nsomeday it will protect flavor or taste marks. See In re N.V. Organon, 79 U.S.P.Q.2d 1639, 2006 WL\n1723556 (TTAB 2006) (denying registration to a mark consisting of \xe2\x80\x9can orange flavor\xe2\x80\x9d for\n\xe2\x80\x9cpharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills\xe2\x80\x9d on the\ngrounds that the mark lacked distinctiveness and was functional). Trademark law also protects \xe2\x80\x9ctrade\ndress,\xe2\x80\x9d which may consist of a product\xe2\x80\x99s packaging or configuration as well as nearly any other aspect\nof the product or service.\nOver the past two decades, courts have struggled with how to analyze the distinctiveness of\nnonverbal marks, none more so than the Supreme Court in a series of three opinions:\n\xe2\x80\xa2\n\nTwo Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (analyzing the source-distinctiveness\nof a restaurant interior),\n\n\xe2\x80\xa2\n\nQualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) (analyzing the sourcedistinctiveness of a single color), and\n\n\xe2\x80\xa2\n\nWal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (analyzing the sourcedistinctiveness of an apparel design).\n\nIn Two Pesos, the Court held that inherently distinctive trade dress could be protected without a\nshowing of secondary meaning. In other words, and contrary to lower court case law primarily from\nthe Second Circuit, the Court held that there was no special rule requiring that trade dress always\nshow secondary meaning. In Qualitex, the Court held that a single color could qualify for trademark\nprotection. Finally, in Samara Bros. (or Wal-Mart, as some courts prefer), the Court arguably rewrote\nTwo Pesos. It described the universe of trade dress as consisting of at least two categories: product\npackaging trade dress and product configuration trade dress. Product packaging trade dress was\ndeemed capable of being inherently distinctive and when it was, it did not require a showing of\nsecondary meaning to receive protection. Product configuration trade dress, however, could never be\ninherently distinctive and must always be shown to have acquired distinctiveness in order to qualify\nfor protection.\n106\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nOne area of distinctiveness doctrine that the Court has not explicitly addressed is how to analyze\nthe inherent distinctiveness of product packaging. Should courts use the Abercrombie spectrum or\nsome other scheme of classification? As we will see below, there is a circuit split on this issue.\na.\n\nInitial Supreme Court Approaches to the Analysis of Nonverbal Marks\n\nIn reading Two Pesos, consider the following questions:\n\xe2\x80\xa2\n\nThe jury in Two Pesos presented to the Court a strange set of factual findings. The trade dress\nat issue was inherently distinctive but it lacked secondary meaning. How is this logically\npossible? Or perhaps better asked, how must we define inherent distinctiveness and\nsecondary meaning so that this can be logically possible?\n\n\xe2\x80\xa2\n\nWhat concerns might have motivated the Second Circuit to create a rule that all trade dress\nmust show secondary meaning to qualify for protection?\n\n\xe2\x80\xa2\n\nThe trade dress at issue in Two Pesos was unregistered and thus protected, if at all, under\nSection 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a). Should the unregistered status of the\ntrade dress have any bearing on the court\xe2\x80\x99s analysis of its distinctiveness?\n\n\xe2\x80\xa2\n\nIf, as Two Pesos holds, trade dress can be inherently distinctive, how should courts determine\nwhether a specific instance of trade dress is in fact inherently distinctive? Should they simply\napply the Abercrombie categories? Does Two Pesos offer any guidance on the matter?\n\n107\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nTwo Pesos, Inc. v. Taco Cabana, Inc.\n505 U.S. 763 (1992)\nJustice WHITE delivered the opinion of the Court.\n[1] The issue in this case is whether the trade dress1 of a restaurant may be protected under\n\xc2\xa7 43(a) of the Trademark Act of 1946 (Lanham Act), 60 Stat. 441, 15 U.S.C. \xc2\xa7 1125(a) 1982 ed.), based\non a finding of inherent distinctiveness, without proof that the trade dress has secondary meaning.\nI\n[2] Respondent Taco Cabana, Inc., operates a chain of fast-food restaurants in Texas. The\nrestaurants serve Mexican food. The first Taco Cabana restaurant was opened in San Antonio in\nSeptember 1978, and five more restaurants had been opened in San Antonio by 1985. Taco Cabana\ndescribes its Mexican trade dress as\n\xe2\x80\x9ca festive eating atmosphere having interior dining and patio areas decorated with\nartifacts, bright colors, paintings and murals. The patio includes interior and exterior\nareas with the interior patio capable of being sealed off from the outside patio by\noverhead garage doors. The stepped exterior of the building is a festive and vivid color\nscheme using top border paint and neon stripes. Bright awnings and umbrellas continue\nthe theme.\xe2\x80\x9d 932 F.2d 1113, 1117 (CA5 1991).\n[3] In December 1985, a Two Pesos, Inc., restaurant was opened in Houston. Two Pesos adopted a\nmotif very similar to the foregoing description of Taco Cabana\xe2\x80\x99s trade dress. Two Pesos restaurants\nexpanded rapidly in Houston and other markets, but did not enter San Antonio. In 1986, Taco Cabana\nentered the Houston and Austin markets and expanded into other Texas cities, including Dallas and El\nPaso where Two Pesos was also doing business.\n[4] In 1987, Taco Cabana sued Two Pesos in the United States District Court for the Southern\nDistrict of Texas for trade dress infringement under \xc2\xa7 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a)\n\nThe District Court instructed the jury: \xe2\x80\x9c\xe2\x80\x98[T]rade dress\xe2\x80\x99 is the total image of the business. Taco\nCabana\xe2\x80\x99s trade dress may include the shape and general appearance of the exterior of the restaurant,\nthe identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve\nfood, the servers\xe2\x80\x99 uniforms and other features reflecting on the total image of the restaurant.\xe2\x80\x9d 1 App.\n83\xe2\x80\x9384. The Court of Appeals accepted this definition and quoted from Blue Bell Bio\xe2\x80\x93Medical v. Cin\xe2\x80\x93Bad,\nInc., 864 F.2d 1253, 1256 (CA5 1989): \xe2\x80\x9cThe \xe2\x80\x98trade dress\xe2\x80\x99 of a product is essentially its total image and\noverall appearance.\xe2\x80\x9d See 932 F.2d 1113, 1118 (CA5 1991). It \xe2\x80\x9cinvolves the total image of a product and\nmay include features such as size, shape, color or color combinations, texture, graphics, or even\nparticular sales techniques.\xe2\x80\x9d John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (CA11 1983).\nRestatement (Third) of Unfair Competition \xc2\xa7 16, Comment a (Tent.Draft No. 2, Mar. 23, 1990).\n1\n\n108\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n(1982 ed.),2 and for theft of trade secrets under Texas common law. The case was tried to a jury, which\nwas instructed to return its verdict in the form of answers to five questions propounded by the trial\njudge. The jury\xe2\x80\x99s answers were: Taco Cabana has a trade dress; taken as a whole, the trade dress is\nnonfunctional; the trade dress is inherently distinctive;3 the trade dress has not acquired a secondary\nmeaning4 in the Texas market; and the alleged infringement creates a likelihood of confusion on the\npart of ordinary customers as to the source or association of the restaurant\xe2\x80\x99s goods or services.\nBecause, as the jury was told, Taco Cabana\xe2\x80\x99s trade dress was protected if it either was inherently\ndistinctive or had acquired a secondary meaning, judgment was entered awarding damages to Taco\nCabana. In the course of calculating damages, the trial court held that Two Pesos had intentionally and\ndeliberately infringed Taco Cabana\xe2\x80\x99s trade dress.5\n[5] The Court of Appeals ruled that the instructions adequately stated the applicable law and that\nthe evidence supported the jury\xe2\x80\x99s findings. In particular, the Court of Appeals rejected petitioner\xe2\x80\x99s\nargument that a finding of no secondary meaning contradicted a finding of inherent distinctiveness.\n[6] In so holding, the court below followed precedent in the Fifth Circuit. In Chevron Chemical Co.\nv. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 702 (CA5 1981), the court noted that trademark law\nrequires a demonstration of secondary meaning only when the claimed trademark is not sufficiently\ndistinctive of itself to identify the producer; the court held that the same principles should apply to\nprotection of trade dresses. The Court of Appeals noted that this approach conflicts with decisions of\nother courts, particularly the holding of the Court of Appeals for the Second Circuit in Vibrant Sales, Inc.\nv. New Body Boutique, Inc., 652 F.2d 299 (1981), cert. denied, 455 U.S. 909 (1982), that \xc2\xa7 43(a) protects\nunregistered trademarks or designs only where secondary meaning is shown. Chevron, supra, at 702.\nSection 43(a) provides: \xe2\x80\x9cAny person who shall affix, apply, or annex, or use in connection with\nany goods or services, or any container or containers for goods, a false designation of origin, or any\nfalse description or representation, including words or other symbols tending falsely to describe or\nrepresent the same, and shall cause such goods or services to enter into commerce, and any person\nwho shall with knowledge of the falsity of such designation of origin or description or representation\ncause or procure the same to be transported or used in commerce or deliver the same to any carrier to\nbe transported or used, shall be liable to a civil action by any person doing business in the locality\nfalsely indicated as that of origin or in the region in which said locality is situated, or by any person\nwho believes that he is or is likely to be damaged by the use of any such false description or\nrepresentation.\xe2\x80\x9d 60 Stat. 441.\n2\n\nThis provision has been superseded by \xc2\xa7 132 of the Trademark Law Revision Act of 1988, 102\nStat. 3946, 15 U.S.C. \xc2\xa7 1121.\nThe instructions were that, to be found inherently distinctive, the trade dress must not be\ndescriptive.\n3\n\nSecondary meaning is used generally to indicate that a mark or dress \xe2\x80\x9chas come through use to\nbe uniquely associated with a specific source.\xe2\x80\x9d Restatement (Third) of Unfair Competition \xc2\xa7 13,\nComment e (Tent.Draft No. 2, Mar. 23, 1990). \xe2\x80\x9cTo establish secondary meaning, a manufacturer must\nshow that, in the minds of the public, the primary significance of a product feature or term is to identify\nthe source of the product rather than the product itself.\xe2\x80\x9d Inwood Laboratories, Inc. v. Ives Laboratories,\nInc., 456 U.S. 844, 851, n. 11, 102 S.Ct. 2182, 2187, n. 11, 72 L.Ed.2d 606 (1982).\n4\n\nThe Court of Appeals agreed: \xe2\x80\x9cThe weight of the evidence persuades us, as it did Judge Singleton,\nthat Two Pesos brazenly copied Taco Cabana\xe2\x80\x99s successful trade dress, and proceeded to expand in a\nmanner that foreclosed several lucrative markets within Taco Cabana\xe2\x80\x99s natural zone of expansion.\xe2\x80\x9d\n932 F.2d, at 1127, n. 20.\n5\n\n109\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nWe granted certiorari to resolve the conflict among the Courts of Appeals on the question whether\ntrade dress that is inherently distinctive is protectible under \xc2\xa7 43(a) without a showing that it has\nacquired secondary meaning. 502 U.S. 1071 (1992). We find that it is, and we therefore affirm.\nII\n[7] The Lanham Act7 was intended to make \xe2\x80\x9cactionable the deceptive and misleading use of\nmarks\xe2\x80\x9d and \xe2\x80\x9cto protect persons engaged in . . . commerce against unfair competition.\xe2\x80\x9d \xc2\xa7 45, 15 U.S.C.\n\xc2\xa7 1127. Section 43(a) \xe2\x80\x9cprohibits a broader range of practices than does \xc2\xa7 32,\xe2\x80\x9d which applies to\nregistered marks, Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 858 (1982), but it is\ncommon ground that \xc2\xa7 43(a) protects qualifying unregistered trademarks and that the general\nprinciples qualifying a mark for registration under \xc2\xa7 2 of the Lanham Act are for the most part\napplicable in determining whether an unregistered mark is entitled to protection under \xc2\xa7 43(a). See\nA.J. Canfield Co. v. Honickman, 808 F.2d 291, 299, n. 9 (CA3 1986); Thompson Medical Co. v. Pfizer Inc.,\n753 F.2d 208, 215\xe2\x80\x93216 (CA2 1985).\n[8] A trademark is defined in 15 U.S.C. \xc2\xa7 1127 as including \xe2\x80\x9cany word, name, symbol, or device or\nany combination thereof\xe2\x80\x9d used by any person \xe2\x80\x9cto identify and distinguish his or her goods, including a\nunique product, from those manufactured or sold by others and to indicate the source of the goods,\neven if that source is unknown.\xe2\x80\x9d In order to be registered, a mark must be capable of distinguishing the\napplicant\xe2\x80\x99s goods from those of others. \xc2\xa7 1052. Marks are often classified in categories of generally\nincreasing distinctiveness; following the classic formulation set out by Judge Friendly, they may be (1)\ngeneric; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. See Abercrombie & Fitch Co. v.\nHunting World, Inc., 537 F.2d 4, 9 (CA2 1976). The Court of Appeals followed this classification and\npetitioner accepts it. The latter three categories of marks, because their intrinsic nature serves to\nidentify a particular source of a product, are deemed inherently distinctive and are entitled to\nprotection. In contrast, generic marks\xe2\x80\x94those that \xe2\x80\x9crefe[r] to the genus of which the particular product\nis a species,\xe2\x80\x9d Park \xe2\x80\x98N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985), citing Abercrombie &\nFitch, supra, at 9\xe2\x80\x94are not registrable as trademarks. Park \xe2\x80\x98N Fly, supra, 469 U.S., at 194.\n....\n[9] The Court of Appeals determined that the District Court\xe2\x80\x99s instructions were consistent with\nthe foregoing principles {of trademark doctrine} and that the evidence supported the jury\xe2\x80\x99s verdict.\nBoth courts thus ruled that Taco Cabana\xe2\x80\x99s trade dress was not descriptive but rather inherently\ndistinctive, and that it was not functional. None of these rulings is before us in this case, and for present\npurposes we assume, without deciding, that each of them is correct. In going on to affirm the judgment\nfor respondent, the Court of Appeals, following its prior decision in Chevron, held that Taco Cabana\xe2\x80\x99s\ninherently distinctive trade dress was entitled to protection despite the lack of proof of secondary\nmeaning. It is this issue that is before us for decision, and we agree with its resolution by the Court of\nAppeals. There is no persuasive reason to apply to trade dress a general requirement of secondary\nmeaning which is at odds with the principles generally applicable to infringement suits under \xc2\xa7 43(a).\nPetitioner devotes much of its briefing to arguing issues that are not before us, and we address only its\narguments relevant to whether proof of secondary meaning is essential to qualify an inherently\ndistinctive trade dress for protection under \xc2\xa7 43(a).\n\n7 The Lanham Act, including the provisions at issue here, has been substantially amended since\nthe present suit was brought. See Trademark Law Revision Act of 1988, 102 Stat. 3946, 15 U.S.C.\n\xc2\xa7 1121.\n\n110\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[10] Petitioner argues that the jury\xe2\x80\x99s finding that the trade dress has not acquired a secondary\nmeaning shows conclusively that the trade dress is not inherently distinctive. The Court of Appeals\xe2\x80\x99\ndisposition of this issue was sound:\n\xe2\x80\x9cTwo Pesos\xe2\x80\x99 argument\xe2\x80\x94that the jury finding of inherent distinctiveness contradicts its\nfinding of no secondary meaning in the Texas market\xe2\x80\x94ignores the law in this circuit.\nWhile the necessarily imperfect (and often prohibitively difficult) methods for assessing\nsecondary meaning address the empirical question of current consumer association, the\nlegal recognition of an inherently distinctive trademark or trade dress acknowledges the\nowner\xe2\x80\x99s legitimate proprietary interest in its unique and valuable informational device,\nregardless of whether substantial consumer association yet bestows the additional\nempirical protection of secondary meaning.\xe2\x80\x9d 932 F.2d, at 1120, n. 7.\n[11] Although petitioner makes the above argument, it appears to concede elsewhere in its brief\nthat it is possible for a trade dress, even a restaurant trade dress, to be inherently distinctive and thus\neligible for protection under \xc2\xa7 43(a). Recognizing that a general requirement of secondary meaning\nimposes \xe2\x80\x9can unfair prospect of theft [or] financial loss\xe2\x80\x9d on the developer of fanciful or arbitrary trade\ndress at the outset of its use, petitioner suggests that such trade dress should receive limited\nprotection without proof of secondary meaning. Id., at 10. Petitioner argues that such protection\nshould be only temporary and subject to defeasance when over time the dress has failed to acquire a\nsecondary meaning. This approach is also vulnerable for the reasons given by the Court of Appeals. If\ntemporary protection is available from the earliest use of the trade dress, it must be because it is\nneither functional nor descriptive, but an inherently distinctive dress that is capable of identifying a\nparticular source of the product. Such a trade dress, or mark, is not subject to copying by concerns that\nhave an equal opportunity to choose their own inherently distinctive trade dress. To terminate\nprotection for failure to gain secondary meaning over some unspecified time could not be based on the\nfailure of the dress to retain its fanciful, arbitrary, or suggestive nature, but on the failure of the user of\nthe dress to be successful enough in the marketplace. This is not a valid basis to find a dress or mark\nineligible for protection. The user of such a trade dress should be able to maintain what competitive\nposition it has and continue to seek wider identification among potential customers.\n[12] This brings us to the line of decisions by the Court of Appeals for the Second Circuit that\nwould find protection for trade dress unavailable absent proof of secondary meaning, a position that\npetitioner concedes would have to be modified if the temporary protection that it suggests is to be\nrecognized. In Vibrant Sales, Inc. v. New Body Boutique, Inc., 652 F.2d 299 (1981), the plaintiff claimed\nprotection under \xc2\xa7 43(a) for a product whose features the defendant had allegedly copied. The Court of\nAppeals held that unregistered marks did not enjoy the \xe2\x80\x9cpresumptive source association\xe2\x80\x9d enjoyed by\nregistered marks and hence could not qualify for protection under \xc2\xa7 43(a) without proof of secondary\nmeaning. Id., at 303, 304. The court\xe2\x80\x99s rationale seemingly denied protection for unregistered, but\ninherently distinctive, marks of all kinds, whether the claimed mark used distinctive words or symbols\nor distinctive product design. The court thus did not accept the arguments that an unregistered mark\nwas capable of identifying a source and that copying such a mark could be making any kind of a false\nstatement or representation under \xc2\xa7 43(a).\n[13] This holding is in considerable tension with the provisions of the Lanham Act. If a verbal or\nsymbolic mark or the features of a product design may be registered under \xc2\xa7 2, it necessarily is a mark\n\xe2\x80\x9cby which the goods of the applicant may be distinguished from the goods of others,\xe2\x80\x9d 60 Stat. 428, and\nmust be registered unless otherwise disqualified. Since \xc2\xa7 2 requires secondary meaning only as a\ncondition to registering descriptive marks, there are plainly marks that are registrable without\nshowing secondary meaning. These same marks, even if not registered, remain inherently capable of\ndistinguishing the goods of the users of these marks. Furthermore, the copier of such a mark may be\n111\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nseen as falsely claiming that his products may for some reason be thought of as originating from the\nplaintiff.\n[14] Some years after Vibrant, the Second Circuit announced in Thompson Medical Co. v. Pfizer Inc.,\n753 F.2d 208 (1985), that in deciding whether an unregistered mark is eligible for protection under\n\xc2\xa7 43(a), it would follow the classification of marks set out by Judge Friendly in Abercrombie & Fitch,\n537 F.2d, at 9. Hence, if an unregistered mark is deemed merely descriptive, which the verbal mark\nbefore the court proved to be, proof of secondary meaning is required; however, \xe2\x80\x9c[s]uggestive marks\nare eligible for protection without any proof of secondary meaning, since the connection between the\nmark and the source is presumed.\xe2\x80\x9d 753 F.2d, at 216. The Second Circuit has nevertheless continued to\ndeny protection for trade dress under \xc2\xa7 43(a) absent proof of secondary meaning, despite the fact that\n\xc2\xa7 43(a) provides no basis for distinguishing between trademark and trade dress. See, e.g., Stormy Clime\nLtd. v. ProGroup, Inc., 809 F.2d, at 974; Union Mfg. Co. v. Han Baek Trading Co., 763 F.2d 42, 48 (1985);\nLeSportsac, Inc. v. K mart Corp., 754 F.2d 71, 75 (1985).\n[15] The Fifth Circuit was quite right in Chevron, and in this case, to follow the Abercrombie\nclassifications consistently and to inquire whether trade dress for which protection is claimed under\n\xc2\xa7 43(a) is inherently distinctive. If it is, it is capable of identifying products or services as coming from\na specific source and secondary meaning is not required. This is the rule generally applicable to\ntrademarks, and the protection of trademarks and trade dress under \xc2\xa7 43(a) serves the same statutory\npurpose of preventing deception and unfair competition. There is no persuasive reason to apply\ndifferent analysis to the two. The \xe2\x80\x9cproposition that secondary meaning must be shown even if the\ntrade dress is a distinctive, identifying mark, [is] wrong, for the reasons explained by Judge Rubin for\nthe Fifth Circuit in Chevron.\xe2\x80\x9d Blau Plumbing, Inc. v. S.O.S. Fix\xe2\x80\x93It, Inc., 781 F.2d 604, 608 (CA7 1986). The\nCourt of Appeals for the Eleventh Circuit also follows Chevron, AmBrit, Inc. v. Kraft, Inc., 805 F.2d 974,\n979 (1986), and the Court of Appeals for the Ninth Circuit appears to think that proof of secondary\nmeaning is superfluous if a trade dress is inherently distinctive, Fuddruckers, Inc. v. Doc\xe2\x80\x99s B.R. Others,\nInc., 826 F.2d 837, 843 (1987).\n[16] It would be a different matter if there were textual basis in \xc2\xa7 43(a) for treating inherently\ndistinctive verbal or symbolic trademarks differently from inherently distinctive trade dress. But there\nis none. The section does not mention trademarks or trade dress, whether they be called generic,\ndescriptive, suggestive, arbitrary, fanciful, or functional. Nor does the concept of secondary meaning\nappear in the text of \xc2\xa7 43(a). Where secondary meaning does appear in the statute, 15 U.S.C. \xc2\xa7 1052\n(1982 ed.), it is a requirement that applies only to merely descriptive marks and not to inherently\ndistinctive ones. We see no basis for requiring secondary meaning for inherently distinctive trade\ndress protection under \xc2\xa7 43(a) but not for other distinctive words, symbols, or devices capable of\nidentifying a producer\xe2\x80\x99s product.\n[17] Engrafting onto \xc2\xa7 43(a) a requirement of secondary meaning for inherently distinctive trade\ndress also would undermine the purposes of the Lanham Act. Protection of trade dress, no less than of\ntrademarks, serves the Act\xe2\x80\x99s purpose to \xe2\x80\x9csecure to the owner of the mark the goodwill of his business\nand to protect the ability of consumers to distinguish among competing producers. National protection\nof trademarks is desirable, Congress concluded, because trademarks foster competition and the\nmaintenance of quality by securing to the producer the benefits of good reputation.\xe2\x80\x9d Park \xe2\x80\x98N Fly, 469\nU.S., at 198, 105 S.Ct., at 663, citing S.Rep. No. 1333, 79th Cong., 2d Sess., 3\xe2\x80\x935 (1946) (citations\nomitted). By making more difficult the identification of a producer with its product, a secondary\nmeaning requirement for a nondescriptive trade dress would hinder improving or maintaining the\nproducer\xe2\x80\x99s competitive position.\n[18] Suggestions that under the Fifth Circuit\xe2\x80\x99s law, the initial user of any shape or design would\ncut off competition from products of like design and shape are not persuasive. Only nonfunctional,\ndistinctive trade dress is protected under \xc2\xa7 43(a). The Fifth Circuit holds that a design is legally\n112\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nfunctional, and thus unprotectible, if it is one of a limited number of equally efficient options available\nto competitors and free competition would be unduly hindered by according the design trademark\nprotection. See Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 426 (1984). This serves to assure that\ncompetition will not be stifled by the exhaustion of a limited number of trade dresses.\n[19] On the other hand, adding a secondary meaning requirement could have anticompetitive\neffects, creating particular burdens on the startup of small companies. It would present special\ndifficulties for a business, such as respondent, that seeks to start a new product in a limited area and\nthen expand into new markets. Denying protection for inherently distinctive nonfunctional trade dress\nuntil after secondary meaning has been established would allow a competitor, which has not adopted a\ndistinctive trade dress of its own, to appropriate the originator\xe2\x80\x99s dress in other markets and to deter\nthe originator from expanding into and competing in these areas.\n[20] As noted above, petitioner concedes that protecting an inherently distinctive trade dress\nfrom its inception may be critical to new entrants to the market and that withholding protection until\nsecondary meaning has been established would be contrary to the goals of the Lanham Act. Petitioner\nspecifically suggests, however, that the solution is to dispense with the requirement of secondary\nmeaning for a reasonable, but brief, period at the outset of the use of a trade dress. Reply Brief for\nPetitioner 11\xe2\x80\x9312. If \xc2\xa7 43(a) does not require secondary meaning at the outset of a business\xe2\x80\x99 adoption\nof trade dress, there is no basis in the statute to support the suggestion that such a requirement comes\ninto being after some unspecified time.\nIII\n[21] We agree with the Court of Appeals that proof of secondary meaning is not required to\nprevail on a claim under \xc2\xa7 43(a) of the Lanham Act where the trade dress at issue is inherently\ndistinctive, and accordingly the judgment of that court is affirmed.\nIt is so ordered.\nJustice SCALIA, concurring {omitted}\nJustice STEVENS, concurring in the judgment.\n[1] As the Court notes in its opinion, the text of \xc2\xa7 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a)\n(1982 ed.), \xe2\x80\x9cdoes not mention trademarks or trade dress.\xe2\x80\x9d Ante, at 2760. Nevertheless, the Court\ninterprets this section as having created a federal cause of action for infringement of an unregistered\ntrademark or trade dress and concludes that such a mark or dress should receive essentially the same\nprotection as those that are registered. Although I agree with the Court\xe2\x80\x99s conclusion, I think it is\nimportant to recognize that the meaning of the text has been transformed by the federal courts over\nthe past few decades. I agree with this transformation, even though it marks a departure from the\noriginal text, because it is consistent with the purposes of the statute and has recently been endorsed\nby Congress.\n[2] It is appropriate to begin with the relevant text of \xc2\xa7 43(a). . . . Section 43(a) provides a federal\nremedy for using either \xe2\x80\x9ca false designation of origin\xe2\x80\x9d or a \xe2\x80\x9cfalse description or representation\xe2\x80\x9d in\nconnection with any goods or services. The full text of the section makes it clear that the word \xe2\x80\x9corigin\xe2\x80\x9d\nrefers to the geographic location in which the goods originated, and in fact, the phrase \xe2\x80\x9cfalse\ndesignation of origin\xe2\x80\x9d was understood to be limited to false advertising of geographic origin. For\n\n113\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nexample, the \xe2\x80\x9cfalse designation of origin\xe2\x80\x9d language contained in the statute makes it unlawful to\nrepresent that California oranges came from Florida, or vice versa.3\n[3] For a number of years after the 1946 enactment of the Lanham Act, a \xe2\x80\x9cfalse description or\nrepresentation,\xe2\x80\x9d like \xe2\x80\x9ca false designation of origin,\xe2\x80\x9d was construed narrowly . . . .\nII\n[4] Over time, the Circuits have expanded the categories of \xe2\x80\x9cfalse designation of origin\xe2\x80\x9d and \xe2\x80\x9cfalse\ndescription or representation.\xe2\x80\x9d One treatise6 identified the Court of Appeals for the Sixth Circuit as the\nfirst to broaden the meaning of \xe2\x80\x9corigin\xe2\x80\x9d to include \xe2\x80\x9corigin of source or manufacture\xe2\x80\x9d in addition to\ngeographic origin.7 Another early case, described as unique among the Circuit cases because it was so\n\xe2\x80\x9cforward-looking,\xe2\x80\x9d8 interpreted the \xe2\x80\x9cfalse description or representation\xe2\x80\x9d language to mean more than\nmere \xe2\x80\x9cpalming off.\xe2\x80\x9d L\xe2\x80\x99Aiglon Apparel, Inc. v. Lana Lobell, Inc., 214 F.2d 649 (CA3 1954) . . . . Although\nsome have criticized the expansion as unwise,9 it is now \xe2\x80\x9ca firmly embedded reality.\xe2\x80\x9d10 The United\nStates Trade Association Trademark Review Commission noted this transformation with approval:\n\xe2\x80\x9cSection 43(a) is an enigma, but a very popular one. Narrowly drawn and intended to reach false\ndesignations or representations as to the geographical origin of products, the section has been widely\ninterpreted to create, in essence, a federal law of unfair competition . . . . It has definitely eliminated a\ngap in unfair competition law, and its vitality is showing no signs of age.\xe2\x80\x9d11\n[5] Today, it is less significant whether the infringement falls under \xe2\x80\x9cfalse designation of origin\xe2\x80\x9d\nor \xe2\x80\x9cfalse description or representation\xe2\x80\x9d12 because in either case \xc2\xa7 43(a) may be invoked. The federal\ncourts are in agreement that \xc2\xa7 43(a) creates a federal cause of action for trademark and trade dress\ninfringement claims. 1 J. Gilson, Trademark Protection and Practice \xc2\xa7 2.13, p. 2\xe2\x80\x93178 (1991). They are\nalso in agreement that the test for liability is likelihood of confusion: \xe2\x80\x9c[U]nder the Lanham Act\n[\xc2\xa7 43(a)], the ultimate test is whether the public is likely to be deceived or confused by the similarity of\nthe marks . . . . Whether we call the violation infringement, unfair competition or false designation of\norigin, the test is identical\xe2\x80\x94is there a \xe2\x80\x98likelihood of confusion?\xe2\x80\x99\xe2\x80\x9d New West Corp. v. NYM Co. of\nThis is clear from the fact that the cause of action created by this section is available only to a\nperson doing business in the locality falsely indicated as that of origin. See n. 1, supra.\n3\n\n6\n\nMcCarthy \xc2\xa7 27:3, p. 345.\n\n7\n\nFederal\xe2\x80\x93Mogul\xe2\x80\x93Bower Bearings, Inc. v. Azoff, 313 F.2d 405, 408 (6th Cir. 1963).\n\n8\n\nDerenberg, 32 N.Y.U.L.Rev., at 1047, 1049.\n\nSee, e.g., Germain, Unfair Trade Practices Under \xc2\xa7 43(a) of the Lanham Act: You\xe2\x80\x99ve Come a Long\nWay Baby\xe2\x80\x94Too Far, Maybe?, 64 Trademark Rep. 193, 194 (1974) (\xe2\x80\x9cIt is submitted that the cases have\napplied Section 43(a) to situations it was not intended to cover and have used it in ways that it was not\ndesigned to function\xe2\x80\x9d).\n9\n\n10\n\n2 McCarthy \xc2\xa7 27:3, p. 345.\n\nThe United States Trademark Association Trademark Review Commission Report and\nRecommendations to USTA President and Board of Directors, 77 Trademark Rep. 375, 426 (1987). {In\nthe body of his opinion, Justice Stevens appears to have misnamed the United States Trademark\nAssociation, which was the predecessor organization of the International Trademark Association.}\n11\n\nIndeed, in count one of the complaint, respondent alleged that petitioner \xe2\x80\x9cis continuing to affix,\napply, or use in connection with its restaurants, goods and services a false designation o[f] origin, or a\nfalse description and representation, tending to falsely describe or represent the same,\xe2\x80\x9d and that\npetitioner \xe2\x80\x9chas falsely designated the origin of its restaurants, goods and services and has falsely\ndescribed and represented the same . . . .\xe2\x80\x9d App. 44\xe2\x80\x9345; see Tr. of Oral Arg. 37.\n12\n\n114\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nCalifornia, Inc., 595 F.2d 1194, 1201 (CA9 1979) (footnote omitted). And the Circuits are in general\nagreement, with perhaps the exception of the Second Circuit, that secondary meaning need not be\nestablished once there is a finding of inherent distinctiveness in order to establish a trade dress\nviolation under \xc2\xa7 43(a).\nIII\n[6] Even though the lower courts\xe2\x80\x99 expansion of the categories contained in \xc2\xa7 43(a) is unsupported\nby the text of the Act, I am persuaded that it is consistent with the general purposes of the Act. For\nexample, Congressman Lanham, the bill\xe2\x80\x99s sponsor, stated: \xe2\x80\x9cThe purpose of [the Act] is to protect\nlegitimate business and the consumers of the country.\xe2\x80\x9d15 92 Cong.Rec. 7524 (1946). One way of\naccomplishing these dual goals was by creating uniform legal rights and remedies that were\nappropriate for a national economy. Although the protection of trademarks had once been \xe2\x80\x9centirely a\nState matter,\xe2\x80\x9d the result of such a piecemeal approach was that there were almost \xe2\x80\x9cas many different\nvarieties of common law as there are States\xe2\x80\x9d so that a person\xe2\x80\x99s right to a trademark \xe2\x80\x9cin one State may\ndiffer widely from the rights which [that person] enjoys in another.\xe2\x80\x9d H.R.Rep. No. 944, 76th Cong., 1st\nSess., 4 (1939). The House Committee on Trademarks and Patents, recognizing that \xe2\x80\x9ctrade is no longer\nlocal, but . . .national,\xe2\x80\x9d saw the need for \xe2\x80\x9cnational legislation along national lines [to] secur[e] to the\nowners of trademarks in interstate commerce definite rights.\xe2\x80\x9d Ibid.16\n[7] Congress has revisited this statute from time to time, and has accepted the \xe2\x80\x9cjudicial\nlegislation\xe2\x80\x9d that has created this federal cause of action. Recently, for example, in the Trademark Law\nRevision Act of 1988, 102 Stat. 3935, Congress codified the judicial interpretation of \xc2\xa7 43(a), giving its\nimprimatur to a growing body of case law from the Circuits that had expanded the section beyond its\noriginal language.\n[8] Although Congress has not specifically addressed the question whether secondary meaning is\nrequired under \xc2\xa7 43(a), the steps it has taken in this subsequent legislation suggest that secondary\n\n15\n\nThe Senate Report elaborated on these two goals:\n\xe2\x80\x9cThe purpose underlying any trade-mark statute is twofold. One is to protect the public\nso it may be confident that, in purchasing a product bearing a particular trade-mark\nwhich it favorably knows, it will get the product which it asks for and wants to get.\nSecondly, where the owner of a trade-mark has spent energy, time, and money in\npresenting to the public the product, he is protected in his investment from its\nmisappropriation by pirates and cheats. This is the well-established rule of law\nprotecting both the public and the trade-mark owner.\xe2\x80\x9d S.Rep. No. 1333, 79th Cong., 2d\nSess., 3 (1946).\n\nBy protecting trademarks, Congress hoped \xe2\x80\x9cto protect the public from deceit, to foster fair\ncompetition, and to secure to the business community the advantages of reputation and good will by\npreventing their diversion from those who have created them to those who have not. This is the end to\nwhich this bill is directed.\xe2\x80\x9d Id., at 4.\nForty years later, the USTA Trademark Review Commission assessed the state of trademark\nlaw. The conclusion that it reached serves as a testimonial to the success of the Act in achieving its goal\nof uniformity: \xe2\x80\x9cThe federal courts now decide, under federal law, all but a few trademark disputes.\nState trademark law and state courts are less influential than ever. Today the Lanham Act is the\nparamount source of trademark law in the United States, as interpreted almost exclusively by the\nfederal courts.\xe2\x80\x9d Trademark Review Commission, 77 Trademark Rep., at 377.\n16\n\n115\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmeaning is not required if inherent distinctiveness has been established.17 First, Congress broadened\nthe language of \xc2\xa7 43(a) to make explicit that the provision prohibits \xe2\x80\x9cany word, term, name, symbol, or\ndevice, or any combination thereof\xe2\x80\x9d that is \xe2\x80\x9clikely to cause confusion, or to cause mistake, or to deceive\nas to the affiliation, connection, or association of such person with another person, or as to the origin,\nsponsorship, or approval of his or her goods, services, or commercial activities by another person.\xe2\x80\x9d 15\nU.S.C. \xc2\xa7 1125(a). That language makes clear that a confusingly similar trade dress is actionable under\n\xc2\xa7 43(a), without necessary reference to \xe2\x80\x9cfalsity.\xe2\x80\x9d Second, Congress approved and confirmed the\nextensive judicial development under the provision, including its application to trade dress that the\nfederal courts had come to apply.18 Third, the legislative history of the 1988 amendments reaffirms\nCongress\xe2\x80\x99 goals of protecting both businesses and consumers with the Lanham Act. And fourth,\nCongress explicitly extended to any violation of \xc2\xa7 43(a) the basic Lanham Act remedial provisions\nwhose text previously covered only registered trademarks.20 The aim of the amendments was to apply\nthe same protections to unregistered marks as were already afforded to registered marks. See S.Rep.\nNo. 100\xe2\x80\x93515, p. 40 (1988). These steps buttress the conclusion that \xc2\xa7 43(a) is properly understood to\nprovide protection in accordance with the standards for registration in \xc2\xa7 2. These aspects of the 1988\nlegislation bolster the claim that an inherently distinctive trade dress may be protected under \xc2\xa7 43(a)\nwithout proof of secondary meaning.\nIV\n[9] In light of the consensus among the Courts of Appeals that have actually addressed the\nquestion, and the steps on the part of Congress to codify that consensus, stare decisis concerns\npersuade me to join the Court\xe2\x80\x99s conclusion that secondary meaning is not required to establish a trade\ndress violation under \xc2\xa7 43(a) once inherent distinctiveness has been established. Accordingly, I concur\nin the judgment, but not in the opinion, of the Court.\nJustice THOMAS, concurring in the judgment {omitted}\nComments and Questions\n1. Taco Cabana eventually purchased Two Pesos. After winning the $3.7 million jury award in\nthe above case, Taco Cabana again sued Two Pesos for failing to make court-ordered changes in its\ntrade dress. As part of the settlement of this dispute, Taco Cabana eventually purchased Two Pesos. See\n17 \xe2\x80\x9cWhen several acts of Congress are passed touching the same subject-matter, subsequent\nlegislation may be considered to assist in the interpretation of prior legislation upon the same subject.\xe2\x80\x9d\nTiger v. Western Investment Co., 221 U.S. 286, 309 (1911); see NLRB v. Bell Aerospace Co. Division of\nTextron, Inc., 416 U.S. 267, 275 (1974); Red Lion Broadcasting Co. v. FCC, 395 U.S. 367, 380\xe2\x80\x93381 (1969);\nUnited States v. Stafoff, 260 U.S. 477, 480 (1923) (opinion of Holmes, J.).\n18 As the Senate Report explained, revision of \xc2\xa7 43(a) is designed \xe2\x80\x9cto codify the interpretation it\nhas been given by the courts. Because Section 43(a) of the Act fills an important gap in federal unfair\ncompetition law, the committee expects the courts to continue to interpret the section.\n\n\xe2\x80\x9cAs written, Section 43(a) appears to deal only with false descriptions or representations and\nfalse designations of geographic origin. Since its enactment in 1946, however, it has been widely\ninterpreted as creating, in essence, a federal law of unfair competition. For example, it has been applied\nto cases involving the infringement of unregistered marks, violations of trade dress and certain\nnonfunctional configurations of goods and actionable false advertising claims.\xe2\x80\x9d S.Rep. No. 100\xe2\x80\x93515, p.\n40 (1988) U.S.Code Cong. & Admin.News 1988, pp. 5577, 5605.\n20\n\nSee 15 U.S.C. \xc2\xa7\xc2\xa7 1114, 1116\xe2\x80\x931118.\n116\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nhttp://en.wikipedia.org/wiki/Taco_Cabana. See also Ron Ruggless, Taco Cabana Buys Rival Two Pesos,\nNATION\xe2\x80\x99S RESTAURANT NEWS, Jan. 25, 1993.\n2. The advantages and disadvantages of defining trade dress broadly and narrowly. Courts\ncommonly claim that trade dress constitutes the \xe2\x80\x9ctotal image and overall appearance\xe2\x80\x9d of a product,\nBlue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir. 1989). See also Chun King Sales, Inc.\nv. Oriental Foods, Inc., 136 F. Supp. 659, 664 (D. Cal. 1955) (analyzing \xe2\x80\x9cthe tout ensemble of the article\nas it appears to the average buyer\xe2\x80\x9d). Yet courts also typically require that the plaintiff specify and even\nenumerate the combination of elements it is claiming as protectable trade dress. See, e.g., Sports\nTraveler, Inc. v. Advance Magazine Publishers, Inc., 25 F. Supp. 2d 154, 162 (S.D.N.Y. 1998) (\xe2\x80\x9cDespite this\nmandate to focus on the overall appearance of the product, a plaintiff must still articulate the specific\nelements of the trade dress that render the trade dress unique or novel, that is, capable of being an\nidentifier for the product\xe2\x80\x99s source.\xe2\x80\x9d); Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc.,\n280 F.3d 619, 635 (6th Cir. 2002) (stating that a plaintiff is \xe2\x80\x9cexpected to list the elements of the designs\nand the unique combinations it [seeks] to protect . . . .\xe2\x80\x9d). Cf. General Motors Corp. v. Lanard Toys, Inc.,\n468 F.3d 405, 415 (6th Cir. 2006) (finding sufficient plaintiff\xe2\x80\x99s definition of the trade dress of its\nhummer and humvee vehicles as \xe2\x80\x9cthe exterior appearance and styling of the vehicle design which\nincludes the grille, slanted and raised hood, split windshield, rectangular doors, squared edges, etc.\xe2\x80\x9d).\nWhat strategic considerations may come into play in how a plaintiff defines its trade dress? What\nare the costs and benefits of defining it too broadly or too narrowly?\n______________________________________________________________________________\nIn reading Qualitex, consider the following questions:\n\xe2\x80\xa2\n\nIt is often remarked that the Court\xe2\x80\x99s holding in Qualitex is in significant tension with its\nprevious holding in Two Pesos. Do you detect any tension between the holdings of the two\ncases?\n\n\xe2\x80\xa2\n\nDoes Justice Breyer\xe2\x80\x99s analysis apply as well to a combination of two or more colors?\n\n\xe2\x80\xa2\n\nIn light of Qualitex, how do you predict courts will treat smells, textures, and tastes? Are such\nmarks capable of inherent distinctiveness?\n\nQualitex Co. v. Jacobson Products Co., Inc.\n514 U.S. 159 (1995)\nJustice BREYER delivered the opinion of the Court.\n[1] The question in this case is whether the Trademark Act of 1946 (Lanham Act), 15 U.S.C.\n\xc2\xa7\xc2\xa7 1051\xe2\x80\x931127 (1988 ed. and Supp. V), permits the registration of a trademark that consists, purely and\nsimply, of a color. We conclude that, sometimes, a color will meet ordinary legal trademark\nrequirements. And, when it does so, no special legal rule prevents color alone from serving as a\ntrademark.\nI\n[2] The case before us grows out of petitioner Qualitex Company\xe2\x80\x99s use (since the 1950\xe2\x80\x99s) of a\nspecial shade of green-gold color on the pads that it makes and sells to dry cleaning firms for use on\ndry cleaning presses. In 1989, respondent Jacobson Products (a Qualitex rival) began to sell its own\npress pads to dry cleaning firms; and it colored those pads a similar green gold. In 1991, Qualitex\nregistered the special green-gold color on press pads with the Patent and Trademark Office as a\ntrademark. Registration No. 1,633,711 (Feb. 5, 1991). Qualitex subsequently added a trademark\ninfringement count, 15 U.S.C. \xc2\xa7 1114(1), to an unfair competition claim, \xc2\xa7 1125(a), in a lawsuit it had\nalready filed challenging Jacobson\xe2\x80\x99s use of the green-gold color.\n117\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[3] Qualitex won the lawsuit in the District Court. 1991 WL 318798 (CD Cal.1991). But, the Court\nof Appeals for the Ninth Circuit set aside the judgment in Qualitex\xe2\x80\x99s favor on the trademark\ninfringement claim because, in that Circuit\xe2\x80\x99s view, the Lanham Act does not permit Qualitex, or anyone\nelse, to register \xe2\x80\x9ccolor alone\xe2\x80\x9d as a trademark. 13 F.3d 1297, 1300, 1302 (1994).\n[4] The Courts of Appeals have differed as to whether or not the law recognizes the use of color\nalone as a trademark. Compare NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028 (CA7 1990)\n(absolute prohibition against protection of color alone), with In re Owens\xe2\x80\x93Corning Fiberglas Corp., 774\nF.2d 1116, 1128 (CA Fed. 1985) (allowing registration of color pink for fiberglass insulation), and\nMaster Distributors, Inc. v. Pako Corp., 986 F.2d 219, 224 (CA8 1993) (declining to establish per se\nprohibition against protecting color alone as a trademark). Therefore, this Court granted certiorari.\n512 U.S. 1287 (1994). We now hold that there is no rule absolutely barring the use of color alone, and\nwe reverse the judgment of the Ninth Circuit.\nII\n[5] The Lanham Act gives a seller or producer the exclusive right to \xe2\x80\x9cregister\xe2\x80\x9d a trademark, 15\nU.S.C. \xc2\xa7 1052 (1988 ed. and Supp. V), and to prevent his or her competitors from using that trademark,\n\xc2\xa7 1114(1). Both the language of the Act and the basic underlying principles of trademark law would\nseem to include color within the universe of things that can qualify as a trademark. The language of the\nLanham Act describes that universe in the broadest of terms. It says that trademarks \xe2\x80\x9cinclud[e] any\nword, name, symbol, or device, or any combination thereof.\xe2\x80\x9d \xc2\xa7 1127. Since human beings might use as a\n\xe2\x80\x9csymbol\xe2\x80\x9d or \xe2\x80\x9cdevice\xe2\x80\x9d almost anything at all that is capable of carrying meaning, this language, read\nliterally, is not restrictive. The courts and the Patent and Trademark Office have authorized for use as a\nmark a particular shape (of a Coca\xe2\x80\x93Cola bottle), a particular sound (of NBC\xe2\x80\x99s three chimes), and even a\nparticular scent (of plumeria blossoms on sewing thread). See, e.g., Registration No. 696,147 (Apr. 12,\n1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13, 1971); In re Clarke, 17 U.S.P.Q.2d\n1238, 1240 (TTAB 1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask,\ncan a color not do the same?\n[6] A color is also capable of satisfying the more important part of the statutory definition of a\ntrademark, which requires that a person \xe2\x80\x9cus[e]\xe2\x80\x9d or \xe2\x80\x9cinten[d] to use\xe2\x80\x9d the mark\n\xe2\x80\x9cto identify and distinguish his or her goods, including a unique product, from those\nmanufactured or sold by others and to indicate the source of the goods, even if that\nsource is unknown.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127.\nTrue, a product\xe2\x80\x99s color is unlike \xe2\x80\x9cfanciful,\xe2\x80\x9d \xe2\x80\x9carbitrary,\xe2\x80\x9d or \xe2\x80\x9csuggestive\xe2\x80\x9d words or designs, which almost\nautomatically tell a customer that they refer to a brand. Abercrombie & Fitch Co. v. Hunting World, Inc.,\n537 F.2d 4, 9\xe2\x80\x9310 (CA2 1976) (Friendly, J.); see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768\n(1992). The imaginary word \xe2\x80\x9cSuntost,\xe2\x80\x9d or the words \xe2\x80\x9cSuntost Marmalade,\xe2\x80\x9d on a jar of orange jam\nimmediately would signal a brand or a product \xe2\x80\x9csource\xe2\x80\x9d; the jam\xe2\x80\x99s orange color does not do so. But,\nover time, customers may come to treat a particular color on a product or its packaging (say, a color\nthat in context seems unusual, such as pink on a firm\xe2\x80\x99s insulating material or red on the head of a large\nindustrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish\nthe goods\xe2\x80\x94 i.e., \xe2\x80\x9cto indicate\xe2\x80\x9d their \xe2\x80\x9csource\xe2\x80\x9d\xe2\x80\x94much in the way that descriptive words on a product\n(say, \xe2\x80\x9cTrim\xe2\x80\x9d on nail clippers or \xe2\x80\x9cCar\xe2\x80\x93Freshner\xe2\x80\x9d on deodorizer) can come to indicate a product\xe2\x80\x99s origin.\nSee, e.g., J. Wiss & Sons Co. v. W.E. Bassett Co., 59 C.C.P.A. 1269, 1271 (Pat.), 462 F.2d 567, 569 (1972);\nCar\xe2\x80\x93Freshner Corp. v. Turtle Wax, Inc., 268 F.Supp. 162, 164 (SDNY 1967). In this circumstance,\ntrademark law says that the word (e.g., \xe2\x80\x9cTrim\xe2\x80\x9d), although not inherently distinctive, has developed\n\xe2\x80\x9csecondary meaning.\xe2\x80\x9d See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11,\n(1982) (\xe2\x80\x9c[S]econdary meaning\xe2\x80\x9d is acquired when \xe2\x80\x9cin the minds of the public, the primary significance\nof a product feature . . . is to identify the source of the product rather than the product itself\xe2\x80\x9d). Again,\n118\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\none might ask, if trademark law permits a descriptive word with secondary meaning to act as a mark,\nwhy would it not permit a color, under similar circumstances, to do the same?\n[7] We cannot find in the basic objectives of trademark law any obvious theoretical objection to\nthe use of color alone as a trademark, where that color has attained \xe2\x80\x9csecondary meaning\xe2\x80\x9d and\ntherefore identifies and distinguishes a particular brand (and thus indicates its \xe2\x80\x9csource\xe2\x80\x9d). In principle,\ntrademark law, by preventing others from copying a source-identifying mark, \xe2\x80\x9creduce[s] the\ncustomer\xe2\x80\x99s costs of shopping and making purchasing decisions,\xe2\x80\x9d 1 J. McCarthy, McCarthy on\nTrademarks and Unfair Competition \xc2\xa7 2.01[2], p. 2\xe2\x80\x933 (3d ed. 1994) (hereinafter McCarthy), for it\nquickly and easily assures a potential customer that this item\xe2\x80\x94the item with this mark\xe2\x80\x94is made by\nthe same producer as other similarly marked items that he or she liked (or disliked) in the past. At the\nsame time, the law helps assure a producer that it (and not an imitating competitor) will reap the\nfinancial, reputation-related rewards associated with a desirable product. The law thereby\n\xe2\x80\x9cencourage[s] the production of quality products,\xe2\x80\x9d ibid., and simultaneously discourages those who\nhope to sell inferior products by capitalizing on a consumer\xe2\x80\x99s inability quickly to evaluate the quality of\nan item offered for sale. See, e.g., 3 L. Altman, Callmann on Unfair Competition, Trademarks and\nMonopolies \xc2\xa7 17.03 (4th ed. 1983); Landes & Posner, The Economics of Trademark Law, 78 T.M. Rep.\n267, 271\xe2\x80\x93272 (1988); Park \xe2\x80\x98N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985); S.Rep. No.\n100\xe2\x80\x93515, p. 4 (1988) U.S.Code Cong. & Admin.News, 1988, pp. 5577, 5580. It is the sourcedistinguishing ability of a mark\xe2\x80\x94not its ontological status as color, shape, fragrance, word, or sign\xe2\x80\x94\nthat permits it to serve these basic purposes. See Landes & Posner, Trademark Law: An Economic\nPerspective, 30 J.Law & Econ. 265, 290 (1987). And, for that reason, it is difficult to find, in basic\ntrademark objectives, a reason to disqualify absolutely the use of a color as a mark.\n[8] Neither can we find a principled objection to the use of color as a mark in the important\n\xe2\x80\x9cfunctionality\xe2\x80\x9d doctrine of trademark law. The functionality doctrine prevents trademark law, which\nseeks to promote competition by protecting a firm\xe2\x80\x99s reputation, from instead inhibiting legitimate\ncompetition by allowing a producer to control a useful product feature. It is the province of patent law,\nnot trademark law, to encourage invention by granting inventors a monopoly over new product\ndesigns or functions for a limited time, 35 U.S.C. \xc2\xa7\xc2\xa7 154, 173, after which competitors are free to use\nthe innovation. If a product\xe2\x80\x99s functional features could be used as trademarks, however, a monopoly\nover such features could be obtained without regard to whether they qualify as patents and could be\nextended forever (because trademarks may be renewed in perpetuity). See Kellogg Co. v. National\nBiscuit Co., 305 U.S. 111, 119\xe2\x80\x93120 (1938) (Brandeis, J.); Inwood Laboratories, Inc., supra, 456 U.S., at\n863 (White, J., concurring in result) (\xe2\x80\x9cA functional characteristic is \xe2\x80\x98an important ingredient in the\ncommercial success of the product,\xe2\x80\x99 and, after expiration of a patent, it is no more the property of the\noriginator than the product itself\xe2\x80\x9d) (citation omitted). Functionality doctrine therefore would require,\nto take an imaginary example, that even if customers have come to identify the special illuminationenhancing shape of a new patented light bulb with a particular manufacturer, the manufacturer may\nnot use that shape as a trademark, for doing so, after the patent had expired, would impede\ncompetition\xe2\x80\x94not by protecting the reputation of the original bulb maker, but by frustrating\ncompetitors\xe2\x80\x99 legitimate efforts to produce an equivalent illumination-enhancing bulb. See, e.g., Kellogg\nCo., supra, 305 U.S., at 119\xe2\x80\x93120 (trademark law cannot be used to extend monopoly over \xe2\x80\x9cpillow\xe2\x80\x9d\nshape of shredded wheat biscuit after the patent for that shape had expired). This Court consequently\nhas explained that, \xe2\x80\x9c[i]n general terms, a product feature is functional,\xe2\x80\x9d and cannot serve as a\ntrademark, \xe2\x80\x9cif it is essential to the use or purpose of the article or if it affects the cost or quality of the\narticle,\xe2\x80\x9d that is, if exclusive use of the feature would put competitors at a significant non-reputationrelated disadvantage. Inwood Laboratories, Inc., supra, 456 U.S., at 850, n. 10. Although sometimes color\nplays an important role (unrelated to source identification) in making a product more desirable,\nsometimes it does not. And, this latter fact\xe2\x80\x94the fact that sometimes color is not essential to a product\xe2\x80\x99s\nuse or purpose and does not affect cost or quality\xe2\x80\x94indicates that the doctrine of \xe2\x80\x9cfunctionality\xe2\x80\x9d does\n119\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nnot create an absolute bar to the use of color alone as a mark. See Owens\xe2\x80\x93Corning, 774 F.2d, at 1123\n(pink color of insulation in wall \xe2\x80\x9cperforms no nontrademark function\xe2\x80\x9d).\n[9] It would seem, then, that color alone, at least sometimes, can meet the basic legal\nrequirements for use as a trademark. It can act as a symbol that distinguishes a firm\xe2\x80\x99s goods and\nidentifies their source, without serving any other significant function. See U.S. Dept. of Commerce,\nPatent and Trademark Office, Trademark Manual of Examining Procedure \xc2\xa7 1202.04(e), p. 1202\xe2\x80\x9313\n(2d ed. May, 1993) (hereinafter PTO Manual) (approving trademark registration of color alone where\nit \xe2\x80\x9chas become distinctive of the applicant\xe2\x80\x99s goods in commerce,\xe2\x80\x9d provided that \xe2\x80\x9cthere is [no]\ncompetitive need for colors to remain available in the industry\xe2\x80\x9d and the color is not \xe2\x80\x9cfunctional\xe2\x80\x9d); see\nalso 1 McCarthy \xc2\xa7\xc2\xa7 3.01[1], 7.26, pp. 3\xe2\x80\x932, 7\xe2\x80\x93113 (\xe2\x80\x9crequirements for qualification of a word or symbol\nas a trademark\xe2\x80\x9d are that it be (1) a \xe2\x80\x9csymbol,\xe2\x80\x9d (2) \xe2\x80\x9cuse[d] . . . as a mark,\xe2\x80\x9d (3) \xe2\x80\x9cto identify and distinguish\nthe seller\xe2\x80\x99s goods from goods made or sold by others,\xe2\x80\x9d but that it not be \xe2\x80\x9cfunctional\xe2\x80\x9d). Indeed, the\nDistrict Court, in this case, entered findings (accepted by the Ninth Circuit) that show Qualitex\xe2\x80\x99s greengold press pad color has met these requirements. The green-gold color acts as a symbol. Having\ndeveloped secondary meaning (for customers identified the green-gold color as Qualitex\xe2\x80\x99s), it identifies\nthe press pads\xe2\x80\x99 source. And, the green-gold color serves no other function. (Although it is important to\nuse some color on press pads to avoid noticeable stains, the court found \xe2\x80\x9cno competitive need in the\npress pad industry for the green-gold color, since other colors are equally usable.\xe2\x80\x9d 21 U.S.P.Q.2d, at\n1460.) Accordingly, unless there is some special reason that convincingly militates against the use of\ncolor alone as a trademark, trademark law would protect Qualitex\xe2\x80\x99s use of the green-gold color on its\npress pads.\nIII\n[10] Respondent Jacobson Products says that there are four special reasons why the law should\nforbid the use of color alone as a trademark. We shall explain, in turn, why we, ultimately, find them\nunpersuasive.\n[11] First, Jacobson says that, if the law permits the use of color as a trademark, it will produce\nuncertainty and unresolvable court disputes about what shades of a color a competitor may lawfully\nuse. Because lighting (morning sun, twilight mist) will affect perceptions of protected color,\ncompetitors and courts will suffer from \xe2\x80\x9cshade confusion\xe2\x80\x9d as they try to decide whether use of a\nsimilar color on a similar product does, or does not, confuse customers and thereby infringe a\ntrademark. Jacobson adds that the \xe2\x80\x9cshade confusion\xe2\x80\x9d problem is \xe2\x80\x9cmore difficult\xe2\x80\x9d and \xe2\x80\x9cfar different\nfrom\xe2\x80\x9d the \xe2\x80\x9cdetermination of the similarity of words or symbols.\xe2\x80\x9d Brief for Respondent 22.\n[12] We do not believe, however, that color, in this respect, is special. Courts traditionally decide\nquite difficult questions about whether two words or phrases or symbols are sufficiently similar, in\ncontext, to confuse buyers. They have had to compare, for example, such words as \xe2\x80\x9cBonamine\xe2\x80\x9d and\n\xe2\x80\x9cDramamine\xe2\x80\x9d (motion-sickness remedies); \xe2\x80\x9cHuggies\xe2\x80\x9d and \xe2\x80\x9cDougies\xe2\x80\x9d (diapers); \xe2\x80\x9cCheracol\xe2\x80\x9d and\n\xe2\x80\x9cSyrocol\xe2\x80\x9d (cough syrup); \xe2\x80\x9cCyclone\xe2\x80\x9d and \xe2\x80\x9cTornado\xe2\x80\x9d (wire fences); and \xe2\x80\x9cMattres\xe2\x80\x9d and \xe2\x80\x9c1\xe2\x80\x93800\xe2\x80\x93Mattres\xe2\x80\x9d\n(mattress franchisor telephone numbers). See, e.g., G.D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385,\n389 (CA7 1959); Kimberly\xe2\x80\x93Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 1146\xe2\x80\x931147 (CA\nFed.1985); Upjohn Co. v. Schwartz, 246 F.2d 254, 262 (CA2 1957); Hancock v. American Steel & Wire Co.\nof N.J., 40 C.C.P.A. (Pat.) 931, 935, 203 F.2d 737, 740\xe2\x80\x93741 (1953); Dial\xe2\x80\x93A\xe2\x80\x93Mattress Franchise Corp. v.\nPage, 880 F.2d 675, 678 (CA2 1989). Legal standards exist to guide courts in making such comparisons.\nSee, e.g., 2 McCarthy \xc2\xa7 15.08; 1 McCarthy \xc2\xa7\xc2\xa7 11.24\xe2\x80\x9311.25 (\xe2\x80\x9c[S]trong\xe2\x80\x9d marks, with greater secondary\nmeaning, receive broader protection than \xe2\x80\x9cweak\xe2\x80\x9d marks). We do not see why courts could not apply\nthose standards to a color, replicating, if necessary, lighting conditions under which a colored product\nis normally sold. See Ebert, Trademark Protection in Color: Do It By the Numbers!, 84 T.M.Rep. 379,\n405 (1994). Indeed, courts already have done so in cases where a trademark consists of a color plus a\ndesign, i.e., a colored symbol such as a gold stripe (around a sewer pipe), a yellow strand of wire rope,\n120\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nor a \xe2\x80\x9cbrilliant yellow\xe2\x80\x9d band (on ampules). See, e.g., Youngstown Sheet & Tube Co. v. Tallman Conduit Co.,\n149 U.S.P.Q. 656, 657 (TTAB 1966); Amsted Industries, Inc. v. West Coast Wire Rope & Rigging Inc., 2\nU.S.P.Q.2d 1755, 1760 (TTAB 1987); In re Hodes\xe2\x80\x93Lange Corp., 167 U.S.P.Q. 255, 256 (TTAB 1970).\n[13] Second, Jacobson argues, as have others, that colors are in limited supply. See, e.g.,\nNutraSweet Co., 917 F.2d, at 1028; Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 798 (CA3 1949).\nJacobson claims that, if one of many competitors can appropriate a particular color for use as a\ntrademark, and each competitor then tries to do the same, the supply of colors will soon be depleted.\nPut in its strongest form, this argument would concede that \xe2\x80\x9c[h]undreds of color pigments are\nmanufactured and thousands of colors can be obtained by mixing.\xe2\x80\x9d L. Cheskin, Colors: What They Can\nDo For You 47 (1947). But, it would add that, in the context of a particular product, only some colors\nare usable. By the time one discards colors that, say, for reasons of customer appeal, are not usable,\nand adds the shades that competitors cannot use lest they risk infringing a similar, registered shade,\nthen one is left with only a handful of possible colors. And, under these circumstances, to permit one,\nor a few, producers to use colors as trademarks will \xe2\x80\x9cdeplete\xe2\x80\x9d the supply of usable colors to the point\nwhere a competitor\xe2\x80\x99s inability to find a suitable color will put that competitor at a significant\ndisadvantage.\n[14] This argument is unpersuasive, however, largely because it relies on an occasional problem\nto justify a blanket prohibition. When a color serves as a mark, normally alternative colors will likely\nbe available for similar use by others. See, e.g., Owens\xe2\x80\x93Corning, 774 F.2d, at 1121 (pink insulation).\nMoreover, if that is not so\xe2\x80\x94if a \xe2\x80\x9ccolor depletion\xe2\x80\x9d or \xe2\x80\x9ccolor scarcity\xe2\x80\x9d problem does arise\xe2\x80\x94the\ntrademark doctrine of \xe2\x80\x9cfunctionality\xe2\x80\x9d normally would seem available to prevent the anticompetitive\nconsequences that Jacobson\xe2\x80\x99s argument posits, thereby minimizing that argument\xe2\x80\x99s practical force.\n[15] The functionality doctrine, as we have said, forbids the use of a product\xe2\x80\x99s feature as a\ntrademark where doing so will put a competitor at a significant disadvantage because the feature is\n\xe2\x80\x9cessential to the use or purpose of the article\xe2\x80\x9d or \xe2\x80\x9caffects [its] cost or quality.\xe2\x80\x9d Inwood Laboratories, Inc.,\n456 U.S., at 850, n. 10. The functionality doctrine thus protects competitors against a disadvantage\n(unrelated to recognition or reputation) that trademark protection might otherwise impose, namely,\ntheir inability reasonably to replicate important non-reputation-related product features. For example,\nthis Court has written that competitors might be free to copy the color of a medical pill where that\ncolor serves to identify the kind of medication (e.g., a type of blood medicine) in addition to its source.\nSee id., at 853, 858, n. 20 (\xe2\x80\x9c[S]ome patients commingle medications in a container and rely on color to\ndifferentiate one from another\xe2\x80\x9d); see also J. Ginsburg, D. Goldberg, & A. Greenbaum, Trademark and\nUnfair Competition Law 194\xe2\x80\x93195 (1991) (noting that drug color cases \xe2\x80\x9chave more to do with public\nhealth policy\xe2\x80\x9d regarding generic drug substitution \xe2\x80\x9cthan with trademark law\xe2\x80\x9d). And, the federal courts\nhave demonstrated that they can apply this doctrine in a careful and reasoned manner, with sensitivity\nto the effect on competition. Although we need not comment on the merits of specific cases, we note\nthat lower courts have permitted competitors to copy the green color of farm machinery (because\ncustomers wanted their farm equipment to match) and have barred the use of black as a trademark on\noutboard boat motors (because black has the special functional attributes of decreasing the apparent\nsize of the motor and ensuring compatibility with many different boat colors). See Deere & Co. v.\nFarmhand, Inc., 560 F.Supp. 85, 98 (SD Iowa 1982), aff\xe2\x80\x99d, 721 F.2d 253 (CA8 1983); Brunswick Corp. v.\nBritish Seagull Ltd., 35 F.3d 1527, 1532 (CA Fed.1994), cert. pending, No. 94\xe2\x80\x931075; see also Nor\xe2\x80\x93Am\nChemical v. O.M. Scott & Sons Co., 4 U.S.P.Q.2d 1316, 1320 (ED Pa.1987) (blue color of fertilizer held\nfunctional because it indicated the presence of nitrogen). The Restatement (Third) of Unfair\nCompetition adds that, if a design\xe2\x80\x99s \xe2\x80\x9caesthetic value\xe2\x80\x9d lies in its ability to \xe2\x80\x9cconfe[r] a significant benefit\nthat cannot practically be duplicated by the use of alternative designs,\xe2\x80\x9d then the design is \xe2\x80\x9cfunctional.\xe2\x80\x9d\nRestatement (Third) of Unfair Competition \xc2\xa7 17, Comment c, pp. 175\xe2\x80\x93176 (1993). The \xe2\x80\x9cultimate test of\n121\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\naesthetic functionality,\xe2\x80\x9d it explains, \xe2\x80\x9cis whether the recognition of trademark rights would significantly\nhinder competition.\xe2\x80\x9d Id., at 176.\n[16] The upshot is that, where a color serves a significant nontrademark function\xe2\x80\x94whether to\ndistinguish a heart pill from a digestive medicine or to satisfy the \xe2\x80\x9cnoble instinct for giving the right\ntouch of beauty to common and necessary things,\xe2\x80\x9d G. Chesterton, Simplicity and Tolstoy 61 (1912)\xe2\x80\x94\ncourts will examine whether its use as a mark would permit one competitor (or a group) to interfere\nwith legitimate (nontrademark-related) competition through actual or potential exclusive use of an\nimportant product ingredient. That examination should not discourage firms from creating esthetically\npleasing mark designs, for it is open to their competitors to do the same. See, e.g., W.T. Rogers Co. v.\nKeene, 778 F.2d 334, 343 (CA7 1985) (Posner, J.). But, ordinarily, it should prevent the anticompetitive\nconsequences of Jacobson\xe2\x80\x99s hypothetical \xe2\x80\x9ccolor depletion\xe2\x80\x9d argument, when, and if, the circumstances\nof a particular case threaten \xe2\x80\x9ccolor depletion.\xe2\x80\x9d\n....\nIV\n[17] Having determined that a color may sometimes meet the basic legal requirements for use as\na trademark and that respondent Jacobson\xe2\x80\x99s arguments do not justify a special legal rule preventing\ncolor alone from serving as a trademark (and, in light of the District Court\xe2\x80\x99s here undisputed findings\nthat Qualitex\xe2\x80\x99s use of the green-gold color on its press pads meets the basic trademark requirements),\nwe conclude that the Ninth Circuit erred in barring Qualitex\xe2\x80\x99s use of color as a trademark. For these\nreasons, the judgment of the Ninth Circuit is\nReversed.\nComments and Questions\n1. Why did Qualitex bother seeking certiorari review of its single-color claim if it had already won\nits case against Jacobsen on its broader trade dress claim? Both the district court and the Ninth Circuit\nruled that Jacobsen had infringed Qualitex\xe2\x80\x99s overall trade dress, consisting of \xe2\x80\x9c[t]he total impression of\nthe Qualitex green-gold pad and its \xe2\x80\x98Sun Glow\xe2\x80\x99 name . . . or overall appearance[ ] of the Qualitex\nproduct.\xe2\x80\x9d Qualitex Co. v. Jacobson Prod. Co., 13 F.3d 1297, 1304 (9th Cir. 1994). But this judgment\nwould likely not have enabled Qualitex to prevent competitors, including Jacobsen, from selling press\npads in a green-gold color but prominently bearing a different brand name or other distinguishing\nfeature. Qualitex sought at the Supreme Court a more abstract and much more powerful property\nright: the exclusive right to use the green-gold color on press pads regardless of brand name or any\nother distinguishing feature.\n2. Color Marks and Non-English-Speaking and Illiterate Consumers. Perhaps it makes sense that a\ncompany like Tiffany & Co. would assert exclusive rights in the distinctive robin\xe2\x80\x99s-egg blue color of its\npackaging, see U.S. Reg. No. 2,359,351 (June 20, 2000) (\xe2\x80\x9cThe mark consists of a shade of blue often\nreferred to as robin\xe2\x80\x99s-egg blue which is used on boxes.\xe2\x80\x9d), or even that 3M Corp. would assert exclusive\nrights in the canary yellow color of its Post-It Pads, see U.S. Reg. No. 2,390,667 (Oct. 3, 2000) (\xe2\x80\x9cThe\nmark consists of the color canary yellow used over the entire surface of the goods.\xe2\x80\x9d), but why would a\nmanufacturer of dry cleaning press pad covers claim rights in the color of its press pad covers? Laura\nHeymann points to one possible explanation. See Laura A. Heymann, The Reasonable Person in\nTrademark Law, 52 ST. LOUIS. L.J. 781, 792 (2008). Though the Supreme Court opinion makes no\nmention of the issue, the Qualitex district court opinion noted that \xe2\x80\x9cmany [dry cleaning businesses] are\nforeign speaking with limited skills in reading or speaking English.\xe2\x80\x9d Qualitex Co. v. Jacobson Prods. Co.,\nInc., No. 90 Civ. 1183, 1991 WL 318798, at *1 (C.D. Cal. Sep. 5,1991), aff\xe2\x80\x99d in part and rev\xe2\x80\x99d in part, 13\nF.3d 1297 (9th Cir. 1994), rev\xe2\x80\x99d, 514 U.S. 159 (1995).\n\n122\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nb.\n\nProduct Packaging Trade Dress Versus Product Configuration Trade Dress\n\nBetween Two Pesos in 1992 and Samara Bros. in 2000, lower courts struggled to establish a\nworkable test by which to determine whether a particular instance of trade dress was inherently\ndistinctive. Courts had particular difficulty establishing a test to determine whether trade dress in the\nform of product configuration\xe2\x80\x94i.e., in the form of design features of the product itself\xe2\x80\x94was inherently\ndistinctive. As we will see, in Samara Bros. the Supreme Court solved this problem of product\nconfiguration rather abruptly.\ni.\n\nThe Differing Distinctiveness Analysis of Product Packaging and Product\nConfiguration\n\nIn reading through Samara Bros., consider the following questions:\n\xe2\x80\xa2\n\nIn Samara Bros., the Supreme Court accepted certiorari on the following question: \xe2\x80\x9cWhat\nmust be shown to establish that a product\xe2\x80\x99s design is inherently distinctive for purposes of\nLanham Act trade-dress protection?\xe2\x80\x9d Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 528 U.S.\n808 (1999). How did the Court answer this question?\n\n\xe2\x80\xa2\n\nIs the court\xe2\x80\x99s holding in Samara Bros. consistent with its holding in Two Pesos?\n\nAn example of the apparel at issue in Samara Bros.\nWal-Mart Stores, Inc. v. Samara Bros., Inc.\n529 U.S. 205 (2000)\nJustice SCALIA delivered the opinion of the Court.\n[1] In this case, we decide under what circumstances a product\xe2\x80\x99s design is distinctive, and\ntherefore protectible, in an action for infringement of unregistered trade dress under \xc2\xa7 43(a) of the\nTrademark Act of 1946 (Lanham Act), 60 Stat. 441, as amended, 15 U.S.C. \xc2\xa7 1125(a).\nI\nRespondent Samara Brothers, Inc., designs and manufactures children\xe2\x80\x99s clothing. Its primary\nproduct is a line of spring/summer one-piece seersucker outfits decorated with appliques of hearts,\n123\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nflowers, fruits, and the like. A number of chain stores, including JCPenney, sell this line of clothing\nunder contract with Samara.\n[2] Petitioner Wal-Mart Stores, Inc., is one of the Nation\xe2\x80\x99s best known retailers, selling among\nother things children\xe2\x80\x99s clothing. In 1995, Wal-Mart contracted with one of its suppliers, JudyPhilippine, Inc., to manufacture a line of children\xe2\x80\x99s outfits for sale in the 1996 spring/summer season.\nWal-Mart sent Judy-Philippine photographs of a number of garments from Samara\xe2\x80\x99s line, on which\nJudy-Philippine\xe2\x80\x99s garments were to be based; Judy-Philippine duly copied, with only minor\nmodifications, 16 of Samara\xe2\x80\x99s garments, many of which contained copyrighted elements. In 1996, WalMart briskly sold the so-called knockoffs, generating more than $1.15 million in gross profits.\n[3] In June 1996, a buyer for JCPenney called a representative at Samara to complain that she had\nseen Samara garments on sale at Wal-Mart for a lower price than JCPenney was allowed to charge\nunder its contract with Samara. The Samara representative told the buyer that Samara did not supply\nits clothing to Wal-Mart. Their suspicions aroused, however, Samara officials launched an\ninvestigation, which disclosed that Wal-Mart and several other major retailers\xe2\x80\x94Kmart, Caldor, Hills,\nand Goody\xe2\x80\x99s\xe2\x80\x94were selling the knockoffs of Samara\xe2\x80\x99s outfits produced by Judy-Philippine.\n[4] After sending cease-and-desist letters, Samara brought this action in the United States District\nCourt for the Southern District of New York against Wal-Mart, Judy-Philippine, Kmart, Caldor, Hills, and\nGoody\xe2\x80\x99s for copyright infringement under federal law, consumer fraud and unfair competition under\nNew York law, and\xe2\x80\x94most relevant for our purposes\xe2\x80\x94infringement of unregistered trade dress under\n\xc2\xa7 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a). All of the defendants except Wal-Mart settled before\ntrial.\n[5] After a weeklong trial, the jury found in favor of Samara on all of its claims. Wal-Mart then\nrenewed a motion for judgment as a matter of law, claiming, inter alia, that there was insufficient\nevidence to support a conclusion that Samara\xe2\x80\x99s clothing designs could be legally protected as\ndistinctive trade dress for purposes of \xc2\xa7 43(a). The District Court denied the motion, 969 F.Supp. 895\n(S.D.N.Y.1997), and awarded Samara damages, interest, costs, and fees totaling almost $1.6 million,\ntogether with injunctive relief, see App. to Pet. for Cert. 56-58. The Second Circuit affirmed the denial\nof the motion for judgment as a matter of law, 165 F.3d 120 (1998), and we granted certiorari, 528 U.S.\n808, 120 S.Ct. 308, 145 L.Ed.2d 35 (1999).\nII\n[6] The Lanham Act provides for the registration of trademarks, which it defines in \xc2\xa7 45 to include\n\xe2\x80\x9cany word, name, symbol, or device, or any combination thereof [used or intended to be used] to\nidentify and distinguish [a producer\xe2\x80\x99s] goods . . . from those manufactured or sold by others and to\nindicate the source of the goods . . . .\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127. Registration of a mark under \xc2\xa7 2 of the Lanham\nAct, 15 U.S.C. \xc2\xa7 1052, enables the owner to sue an infringer under \xc2\xa7 32, 15 U.S.C. \xc2\xa7 1114; it also entitles\nthe owner to a presumption that its mark is valid, see \xc2\xa7 7(b), 15 U.S.C. \xc2\xa7 1057(b), and ordinarily\nrenders the registered mark incontestable after five years of continuous use, see \xc2\xa7 15, 15 U.S.C. \xc2\xa7 1065.\nIn addition to protecting registered marks, the Lanham Act, in \xc2\xa7 43(a), gives a producer a cause of\naction for the use by any person of \xe2\x80\x9cany word, term, name, symbol, or device, or any combination\nthereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or\nher goods . . . .\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1125(a). It is the latter provision that is at issue in this case.\n[7] The breadth of the definition of marks registrable under \xc2\xa7 2, and of the confusion-producing\nelements recited as actionable by \xc2\xa7 43(a), has been held to embrace not just word marks, such as\n\xe2\x80\x9cNike,\xe2\x80\x9d and symbol marks, such as Nike\xe2\x80\x99s \xe2\x80\x9cswoosh\xe2\x80\x9d symbol, but also \xe2\x80\x9ctrade dress\xe2\x80\x9d\xe2\x80\x94a category that\noriginally included only the packaging, or \xe2\x80\x9cdressing,\xe2\x80\x9d of a product, but in recent years has been\nexpanded by many Courts of Appeals to encompass the design of a product. See, e.g., Ashley Furniture\nIndustries, Inc. v. Sangiacomo N. A., Ltd., 187 F.3d 363 (C.A.4 1999) (bedroom furniture); Knitwaves, Inc.\nv. Lollytogs, Ltd., 71 F.3d 996 (C.A.2 1995) (sweaters); Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780\n124\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n(C.A.8 1995) (notebooks). These courts have assumed, often without discussion, that trade dress\nconstitutes a \xe2\x80\x9csymbol\xe2\x80\x9d or \xe2\x80\x9cdevice\xe2\x80\x9d for purposes of the relevant sections, and we conclude likewise.\n\xe2\x80\x9cSince human beings might use as a \xe2\x80\x98symbol\xe2\x80\x99 or \xe2\x80\x98device\xe2\x80\x99 almost anything at all that is capable of\ncarrying meaning, this language, read literally, is not restrictive.\xe2\x80\x9d Qualitex Co. v. Jacobson Products Co.,\n514 U.S. 159, 162 (1995). This reading of \xc2\xa7 2 and \xc2\xa7 43(a) is buttressed by a recently added subsection\nof \xc2\xa7 43(a), \xc2\xa7 43(a)(3), which refers specifically to \xe2\x80\x9ccivil action[s] for trade dress infringement under\nthis chapter for trade dress not registered on the principal register.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1125(a)(3) (1994 ed.,\nSupp. V).\n[8] The text of \xc2\xa7 43(a) provides little guidance as to the circumstances under which unregistered\ntrade dress may be protected. It does require that a producer show that the allegedly infringing feature\nis not \xe2\x80\x9cfunctional,\xe2\x80\x9d see \xc2\xa7 43(a)(3), and is likely to cause confusion with the product for which\nprotection is sought, see \xc2\xa7 43(a)(1)(A), 15 U.S.C. \xc2\xa7 1125(a)(1)(A). Nothing in \xc2\xa7 43(a) explicitly requires\na producer to show that its trade dress is distinctive, but courts have universally imposed that\nrequirement, since without distinctiveness the trade dress would not \xe2\x80\x9ccause confusion . . . as to the\norigin, sponsorship, or approval of [the] goods,\xe2\x80\x9d as the section requires. Distinctiveness is, moreover,\nan explicit prerequisite for registration of trade dress under \xc2\xa7 2, and \xe2\x80\x9cthe general principles qualifying\na mark for registration under \xc2\xa7 2 of the Lanham Act are for the most part applicable in determining\nwhether an unregistered mark is entitled to protection under \xc2\xa7 43(a).\xe2\x80\x9d Two Pesos, Inc. v. Taco Cabana,\nInc., 505 U.S. 763, 768 (1992) (citations omitted).\n[9] In evaluating the distinctiveness of a mark under \xc2\xa7 2 (and therefore, by analogy, under\n\xc2\xa7 43(a)), courts have held that a mark can be distinctive in one of two ways. First, a mark is inherently\ndistinctive if \xe2\x80\x9c[its] intrinsic nature serves to identify a particular source.\xe2\x80\x9d Ibid. In the context of word\nmarks, courts have applied the now-classic test originally formulated by Judge Friendly, in which word\nmarks that are \xe2\x80\x9carbitrary\xe2\x80\x9d (\xe2\x80\x9cCamel\xe2\x80\x9d cigarettes), \xe2\x80\x9cfanciful\xe2\x80\x9d (\xe2\x80\x9cKodak\xe2\x80\x9d film), or \xe2\x80\x9csuggestive\xe2\x80\x9d (\xe2\x80\x9cTide\xe2\x80\x9d\nlaundry detergent) are held to be inherently distinctive. See Abercrombie & Fitch Co. v. Hunting World,\nInc., 537 F.2d 4, 10-11 (C.A.2 1976). Second, a mark has acquired distinctiveness, even if it is not\ninherently distinctive, if it has developed secondary meaning, which occurs when, \xe2\x80\x9cin the minds of the\npublic, the primary significance of a [mark] is to identify the source of the product rather than the\nproduct itself.\xe2\x80\x9d Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11 (1982).*\n[10] The judicial differentiation between marks that are inherently distinctive and those that have\ndeveloped secondary meaning has solid foundation in the statute itself. Section 2 requires that\nregistration be granted to any trademark \xe2\x80\x9cby which the goods of the applicant may be distinguished\nfrom the goods of others\xe2\x80\x9d\xe2\x80\x94subject to various limited exceptions. 15 U.S.C. \xc2\xa7 1052. It also provides,\nagain with limited exceptions, that \xe2\x80\x9cnothing in this chapter shall prevent the registration of a mark\nused by the applicant which has become distinctive of the applicant\xe2\x80\x99s goods in commerce\xe2\x80\x9d\xe2\x80\x94that is,\nwhich is not inherently distinctive but has become so only through secondary meaning. \xc2\xa7 2(f), 15 U.S.C.\n\xc2\xa7 1052(f). Nothing in \xc2\xa7 2, however, demands the conclusion that every category of mark necessarily\nincludes some marks \xe2\x80\x9cby which the goods of the applicant may be distinguished from the goods of\nothers\xe2\x80\x9d without secondary meaning\xe2\x80\x94that in every category some marks are inherently distinctive.\nThe phrase \xe2\x80\x9csecondary meaning\xe2\x80\x9d originally arose in the context of word marks, where it served\nto distinguish the source-identifying meaning from the ordinary, or \xe2\x80\x9cprimary,\xe2\x80\x9d meaning of the word.\n\xe2\x80\x9cSecondary meaning\xe2\x80\x9d has since come to refer to the acquired, source-identifying meaning of a nonword\nmark as well. It is often a misnomer in that context, since nonword marks ordinarily have no \xe2\x80\x9cprimary\xe2\x80\x9d\nmeaning. Clarity might well be served by using the term \xe2\x80\x9cacquired meaning\xe2\x80\x9d in both the word-mark\nand the nonword-mark contexts\xe2\x80\x94but in this opinion we follow what has become the conventional\nterminology.\n*\n\n125\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[11] Indeed, with respect to at least one category of mark\xe2\x80\x94colors\xe2\x80\x94we have held that no mark\ncan ever be inherently distinctive. See Qualitex, supra, at 162-163,. In Qualitex, petitioner manufactured\nand sold green-gold dry-cleaning press pads. After respondent began selling pads of a similar color,\npetitioner brought suit under \xc2\xa7 43(a), then added a claim under \xc2\xa7 32 after obtaining registration for\nthe color of its pads. We held that a color could be protected as a trademark, but only upon a showing\nof secondary meaning. Reasoning by analogy to the Abercrombie & Fitch test developed for word\nmarks, we noted that a product\xe2\x80\x99s color is unlike a \xe2\x80\x9cfanciful,\xe2\x80\x9d \xe2\x80\x9carbitrary,\xe2\x80\x9d or \xe2\x80\x9csuggestive\xe2\x80\x9d mark, since it\ndoes not \xe2\x80\x9calmost automatically tell a customer that [it] refer[s] to a brand,\xe2\x80\x9d 514 U.S., at 162-163, and\ndoes not \xe2\x80\x9cimmediately . . . signal a brand or a product \xe2\x80\x98source,\xe2\x80\x99\xe2\x80\x9d id., at 163. However, we noted that,\n\xe2\x80\x9cover time, customers may come to treat a particular color on a product or its packaging . . . as\nsignifying a brand.\xe2\x80\x9d Ibid. Because a color, like a \xe2\x80\x9cdescriptive\xe2\x80\x9d word mark, could eventually \xe2\x80\x9ccome to\nindicate a product\xe2\x80\x99s origin,\xe2\x80\x9d we concluded that it could be protected upon a showing of secondary\nmeaning. Ibid.\n[12] It seems to us that design, like color, is not inherently distinctive. The attribution of inherent\ndistinctiveness to certain categories of word marks and product packaging derives from the fact that\nthe very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is\nmost often to identify the source of the product. Although the words and packaging can serve\nsubsidiary functions\xe2\x80\x94a suggestive word mark (such as \xe2\x80\x9cTide\xe2\x80\x9d for laundry detergent), for instance,\nmay invoke positive connotations in the consumer\xe2\x80\x99s mind, and a garish form of packaging (such as\nTide\xe2\x80\x99s squat, brightly decorated plastic bottles for its liquid laundry detergent) may attract an\notherwise indifferent consumer\xe2\x80\x99s attention on a crowded store shelf\xe2\x80\x94their predominant function\nremains source identification. Consumers are therefore predisposed to regard those symbols as\nindication of the producer, which is why such symbols \xe2\x80\x9calmost automatically tell a customer that they\nrefer to a brand,\xe2\x80\x9d id., at 162-163, and \xe2\x80\x9cimmediately . . . signal a brand or a product \xe2\x80\x98source,\xe2\x80\x99\xe2\x80\x9d id., at 163.\nAnd where it is not reasonable to assume consumer predisposition to take an affixed word or\npackaging as indication of source\xe2\x80\x94where, for example, the affixed word is descriptive of the product\n(\xe2\x80\x9cTasty\xe2\x80\x9d bread) or of a geographic origin (\xe2\x80\x9cGeorgia\xe2\x80\x9d peaches)\xe2\x80\x94inherent distinctiveness will not be\nfound. That is why the statute generally excludes, from those word marks that can be registered as\ninherently distinctive, words that are \xe2\x80\x9cmerely descriptive\xe2\x80\x9d of the goods, \xc2\xa7 2(e)(1), 15 U.S.C.\n\xc2\xa7 1052(e)(1), or \xe2\x80\x9cprimarily geographically descriptive of them,\xe2\x80\x9d see \xc2\xa7 2(e)(2), 15 U.S.C. \xc2\xa7 1052(e)(2). In\nthe case of product design, as in the case of color, we think consumer predisposition to equate the\nfeature with the source does not exist. Consumers are aware of the reality that, almost invariably, even\nthe most unusual of product designs\xe2\x80\x94such as a cocktail shaker shaped like a penguin\xe2\x80\x94is intended not\nto identify the source, but to render the product itself more useful or more appealing.\n[13] The fact that product design almost invariably serves purposes other than source\nidentification not only renders inherent distinctiveness problematic; it also renders application of an\ninherent-distinctiveness principle more harmful to other consumer interests. Consumers should not be\ndeprived of the benefits of competition with regard to the utilitarian and esthetic purposes that\nproduct design ordinarily serves by a rule of law that facilitates plausible threats of suit against new\nentrants based upon alleged inherent distinctiveness. How easy it is to mount a plausible suit depends,\nof course, upon the clarity of the test for inherent distinctiveness, and where product design is\nconcerned we have little confidence that a reasonably clear test can be devised. Respondent and the\nUnited States as amicus curiae urge us to adopt for product design relevant portions of the test\nformulated by the Court of Customs and Patent Appeals for product packaging in Seabrook Foods, Inc. v.\nBar-Well Foods, Ltd., 568 F.2d 1342 (1977). That opinion, in determining the inherent distinctiveness\nof a product\xe2\x80\x99s packaging, considered, among other things, \xe2\x80\x9cwhether it was a \xe2\x80\x98common\xe2\x80\x99 basic shape or\ndesign, whether it was unique or unusual in a particular field, [and] whether it was a mere refinement\nof a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed\nby the public as a dress or ornamentation for the goods.\xe2\x80\x9d Id., at 1344 (footnotes omitted). Such a test\n126\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwould rarely provide the basis for summary disposition of an anticompetitive strike suit. Indeed, at\noral argument, counsel for the United States quite understandably would not give a definitive answer\nas to whether the test was met in this very case, saying only that \xe2\x80\x9c[t]his is a very difficult case for that\npurpose.\xe2\x80\x9d Tr. of Oral Arg. 19.\n[14] It is true, of course, that the person seeking to exclude new entrants would have to establish\nthe nonfunctionality of the design feature, see \xc2\xa7 43(a)(3), 15 U.S.C. \xc2\xa7 1125(a)(3) (1994 ed., Supp. V)\xe2\x80\x94a\nshowing that may involve consideration of its esthetic appeal, see Qualitex, supra, at 170, 115 S.Ct.\n1300. Competition is deterred, however, not merely by successful suit but by the plausible threat of\nsuccessful suit, and given the unlikelihood of inherently source-identifying design, the game of\nallowing suit based upon alleged inherent distinctiveness seems to us not worth the candle. That is\nespecially so since the producer can ordinarily obtain protection for a design that is inherently source\nidentifying (if any such exists), but that does not yet have secondary meaning, by securing a design\npatent or a copyright for the design\xe2\x80\x94as, indeed, respondent did for certain elements of the designs in\nthis case. The availability of these other protections greatly reduces any harm to the producer that\nmight ensue from our conclusion that a product design cannot be protected under \xc2\xa7 43(a) without a\nshowing of secondary meaning.\n[15] Respondent contends that our decision in Two Pesos forecloses a conclusion that productdesign trade dress can never be inherently distinctive. In that case, we held that the trade dress of a\nchain of Mexican restaurants, which the plaintiff described as \xe2\x80\x9ca festive eating atmosphere having\ninterior dining and patio areas decorated with artifacts, bright colors, paintings and murals,\xe2\x80\x9d 505 U.S.,\nat 765 (internal quotation marks and citation omitted), could be protected under \xc2\xa7 43(a) without a\nshowing of secondary meaning, see id., at 776. Two Pesos unquestionably establishes the legal principle\nthat trade dress can be inherently distinctive, see, e.g., id., at 773, 112 S.Ct. 2753, but it does not\nestablish that product-design trade dress can be. Two Pesos is inapposite to our holding here because\nthe trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was\neither product packaging\xe2\x80\x94which, as we have discussed, normally is taken by the consumer to indicate\norigin\xe2\x80\x94or else some tertium quid that is akin to product packaging and has no bearing on the present\ncase.\n[16] Respondent replies that this manner of distinguishing Two Pesos will force courts to draw\ndifficult lines between product-design and product-packaging trade dress. There will indeed be some\nhard cases at the margin: a classic glass Coca-Cola bottle, for instance, may constitute packaging for\nthose consumers who drink the Coke and then discard the bottle, but may constitute the product itself\nfor those consumers who are bottle collectors, or part of the product itself for those consumers who\nbuy Coke in the classic glass bottle, rather than a can, because they think it more stylish to drink from\nthe former. We believe, however, that the frequency and the difficulty of having to distinguish between\nproduct design and product packaging will be much less than the frequency and the difficulty of having\nto decide when a product design is inherently distinctive. To the extent there are close cases, we\nbelieve that courts should err on the side of caution and classify ambiguous trade dress as product\ndesign, thereby requiring secondary meaning. The very closeness will suggest the existence of\nrelatively small utility in adopting an inherent-distinctiveness principle, and relatively great consumer\nbenefit in requiring a demonstration of secondary meaning.\n[17] We hold that, in an action for infringement of unregistered trade dress under \xc2\xa7 43(a) of the\nLanham Act, a product\xe2\x80\x99s design is distinctive, and therefore protectible, only upon a showing of\nsecondary meaning. The judgment of the Second Circuit is reversed, and the case is remanded for\nfurther proceedings consistent with this opinion.\nIt is so ordered.\n\n127\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nComments and Questions\n1. Assuming product configuration. Does Justice Scalia\xe2\x80\x99s admonition that \xe2\x80\x9ccourts should err on the\nside of caution and classify ambiguous trade dress as product design\xe2\x80\x9d make sense as a policy matter?\nWhat are the costs and benefits of this approach to trademark owners, to their competitors, and to\ntheir consumers?\n2. What about copyright infringement in Samara Bros.? At the district court, \xe2\x80\x9c[t]he jury found that\nWal\xe2\x80\x93Mart had wilfully infringed Samara\xe2\x80\x99s rights, awarding Samara $912,856.77 on the copyright\nclaims, $240,458.53 for the Lanham Act violation and $50 for the state law violations.\xe2\x80\x9d Samara Bros. v.\nWal-Mart Stores, Inc., 165 F.3d 120, 123 (2d Cir. 1998). Decades later, Judge Denny Chin, who was the\ndistrict court judge in Samara Bros. (and is now on the Second Circuit), reflected on the case:\nIronically, the Supreme Court latched on to a very small part of the case. This was\nprincipally a copyright case\xe2\x80\x94the copying of Samara\xe2\x80\x99s copyrighted designs. But Samara\nhad included a trade dress claim, and the jury awarded some damages for the trade dress\nclaim, although far less than for the copyright claims. The jury\xe2\x80\x99s award on the copyright\nclaims remained intact, and, ultimately, the Supreme Court\'s reversal had little practical\nimpact on the case, even as it made new law. Apparently, the Supreme Court saw this\ncase as an opportunity to clarify the law in the trade dress area, and it did so.\nHon. Denny Chin, Litigating Copyright Cases: A View from the Bench, 59 J. COPYRIGHT SOC\'Y U.S.A. 185,\n194\xe2\x80\x9395 (2012).\nii.\n\nDistinguishing Product Packaging from Product Configuration\n\nThe Supreme Court\xe2\x80\x99s holding in Samara Bros. eliminated one problem\xe2\x80\x94how to analyze the\ninherent distinctiveness of product configuration trade dress\xe2\x80\x94but created another: how to determine\nwhether a particular product feature or combination of product features qualifies as product\npackaging trade dress, product configuration trade dress, or perhaps some other kind of trade dress.\nThe opinion excerpts that follow offer examples of how courts have sought to determine where along\nthe packaging/configuration divide particular forms of trade dress fall. In reading the opinions,\nconsider the following question: How should a court treat various forms of decoration applied to the\nsurface of the product (e.g., stripes on the side of an athletic shoe)? Is such decoration product\npackaging, production configuration, or something else?\nIn re Slokevage\n441 F.3d 957 (Fed. Cir. 2006)\nLOURIE, Circuit Judge.\n[1] Joanne Slokevage (\xe2\x80\x9cSlokevage\xe2\x80\x9d) appeals from the decision of the United States Patent and\nTrademark Office, Trademark Trial and Appeal Board (\xe2\x80\x9cBoard\xe2\x80\x9d) sustaining the refusal of the examiner\nto register her trade dress mark for clothing. In re Joanne Slokevage, Serial No. 75602873 (TTAB Nov.\n10, 2004) (\xe2\x80\x9cFinal Decision\xe2\x80\x9d). Because the Board\xe2\x80\x99s finding that Slokevage\xe2\x80\x99s trade dress was product\ndesign and thus could not be inherently distinctive, and that the trade dress was not unitary are\nsupported by substantial evidence, we affirm.\nBACKGROUND\n[2] Slokevage filed an application to register a mark on the Principal Register for \xe2\x80\x9cpants, overalls,\nshorts, culottes, dresses, skirts.\xe2\x80\x9d Slokevage described the mark in her application as a \xe2\x80\x9cconfiguration\xe2\x80\x9d\nthat consists of a label with the words \xe2\x80\x9cFLASH DARE!\xe2\x80\x9d in a V-shaped background, and cut-out areas\nlocated on each side of the label. The cut-out areas consist of a hole in a garment and a flap attached to\nthe garment with a closure device. This trade dress configuration, which is located on the rear of\nvarious garments, is depicted below:\n128\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n[3] Although Slokevage currently seeks to register a mark for the overall configuration of her\ndesign, she has already received protection for various aspects of the trade dress configuration. For\nexample, she received a design patent for the cut-out area design. She also registered on the\nSupplemental Register1 a design mark for the cut-out area. In addition, she registered the word mark\n\xe2\x80\x9cFLASH DARE!\xe2\x80\x9d on the Principal Register.\n[4] The trademark examiner initially refused registration of the proposed mark on the ground\nthat it constituted a clothing configuration that is not inherently distinctive. The examiner afforded\nSlokevage the opportunity to submit evidence of acquired distinctiveness or to disclaim the design\nelements of the configuration, but Slokevage chose not to submit evidence of acquired distinctiveness\nor to disclaim the design elements. Rather, she argued that the trade dress was inherently distinctive.\nThe examiner, relying on section 2(f) of the Trademark Act, 15 U.S.C. \xc2\xa7 1052(f), made final his refusal\nto register the mark on the ground that the clothing configuration constitutes \xe2\x80\x9cproduct\ndesign/configuration,\xe2\x80\x9d and pursuant to the decision of the U.S. Supreme Court in Wal-Mart Stores, Inc.\nv. Samara Brothers, Inc., 529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), \xe2\x80\x9cproduct design\xe2\x80\x9d cannot\nbe inherently distinctive. The examiner noted that Slokevage\xe2\x80\x99s reference in her application to the trade\ndress as a \xe2\x80\x9ccut-away flap design\xe2\x80\x9d supported a determination that the configuration constitutes product\ndesign . . . .\n[5] Slokevage appealed the refusal of the examiner to register the trade dress configuration, and\nthe Board affirmed the examiner\xe2\x80\x99s decision. The Board found that the cut-out areas, consisting of the\nholes and flaps, constituted product design. Relying on Wal-Mart, the Board observed that a product\ndesign \xe2\x80\x9cwill not be regarded as a source indicator at the time of its introduction.\xe2\x80\x9d According to the\nBoard, Slokevage\xe2\x80\x99s trade dress, as product design, could not be inherently distinctive, and therefore\ncould not be registered absent a showing of acquired distinctiveness.\n....\nDISCUSSION\n....\n[6] As a preliminary matter, Slokevage argues that whether trade dress is product design or not is\na legal determination, whereas the government asserts that it is a factual issue. The resolution of that\nquestion is an issue of first impression for this court. We conclude that the determination whether\ntrade dress is product design is a factual finding because it is akin to determining whether a trademark\nis inherently distinctive or whether a mark is descriptive, which are questions of fact. . . . Inherent\ndistinctiveness or descriptiveness involves consumer perception and whether consumers are\npredisposed towards equating a symbol with a source. See In re MBNA Am. Bank, N.A., 340 F.3d 1328,\n1 Pursuant to section 23 of the Lanham Act, the United States Patent and Trademark Office\n(\xe2\x80\x9cPTO\xe2\x80\x9d) maintains a Supplemental Register for marks \xe2\x80\x9ccapable of distinguishing applicant\xe2\x80\x99s goods or\nservices and not registrable on the principal register.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1091(a).\n\n129\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n1332 (Fed. Cir. 2003). Such issues are determined based on testimony, surveys, and other evidence as\nquestions of fact. Determining whether trade dress is product design or product packaging involves a\nsimilar inquiry. Wal-Mart, 529 U.S. at 213 (discussing product packaging and design in the context of\nconsumers ability to equate the product with the source). We therefore will defer to the Board\xe2\x80\x99s\nfinding on product design, affirming the Board if its decision is supported by substantial evidence . . . .\nI. Trade Dress and Product Design\n[7] On appeal, Slokevage argues that the Board erred in determining that the trade dress2 for\nwhich she seeks protection is product design and thus that it cannot be inherently distinctive. She\nasserts that the Board\xe2\x80\x99s reliance on the Supreme Court\xe2\x80\x99s decision in Wal-Mart to support its position\nthat Slokevage\xe2\x80\x99s trade dress is product design is misplaced. In particular, she contends that Wal-Mart\ndoes not provide guidance on how to determine whether trade dress is product design. Moreover, she\nmaintains that the trade dress at issue in Wal-Mart, which was classified as product design without\nexplanation, is different from Slokevage\xe2\x80\x99s trade dress because the Wal-Mart trade dress implicated the\noverall appearance of the product and was a theme made up of many unique elements. Slokevage\nargues that her trade dress, in contrast, involves one component of a product design, which can be\nused with a variety of types of clothing. Slokevage further asserts that her trade dress is located on the\nrear hips of garments, which is a location that consumers frequently recognize as identifying the\nsource of the garment.\n[8] The PTO responds that the Board correctly concluded that Slokevage\xe2\x80\x99s trade dress is product\ndesign and that it properly relied on Wal-Mart for support of its determination. According to the PTO,\nin the Wal-Mart decision the Supreme Court determined that a design of clothing is product design.\nThe PTO further asserts that the trade dress at issue in Wal-Mart, which was classified as product\ndesign, is similar to Slokevage\xe2\x80\x99s trade dress. The trade dress in Wal-Mart consists of design elements\non a line of garments, and Slokevage\xe2\x80\x99s trade dress similarly consists of a design component common to\nthe overall design of a variety of garments. The PTO notes that Slokevage\xe2\x80\x99s trade dress application\nrefers to her trade dress as a \xe2\x80\x9cconfiguration\xe2\x80\x9d including a \xe2\x80\x9cclothing feature,\xe2\x80\x9d and that \xe2\x80\x9cproduct\nconfiguration\xe2\x80\x9d is synonymous with \xe2\x80\x9cproduct design.\xe2\x80\x9d The PTO also argues that under Wal-Mart\nproduct design cannot be inherently distinctive, the rationale being that consumers perceive product\ndesign as making the product more useful or desirable, rather than indicating source. According to the\nPTO, the trade dress at issue here makes the product more desirable to consumers, rather than\nindicates source. Finally, the PTO notes that even if it were a close case as to whether Slokevage\xe2\x80\x99s trade\ndress constitutes product design, the Court\xe2\x80\x99s opinion in Wal-Mart states that in \xe2\x80\x9cclose cases,\xe2\x80\x9d trade\ndress should be categorized as product design, thereby requiring proof of acquired distinctiveness for\nprotection. 529 U.S. at 215.\n[9] We agree with the Board that Slokevage\xe2\x80\x99s trade dress constitutes product design and\ntherefore cannot be inherently distinctive. . . .\n[10] Directly relevant to our discussion of product design is the Court\xe2\x80\x99s discussion in Wal-Mart. . . .\n{T}he {Wal-Mart} Court established a bright-line rule\xe2\x80\x94product design cannot be inherently\ndistinctive, and always requires proof of acquired distinctiveness to be protected. The Court did not\nrecite the factors that distinguish between product packaging and product design trade dress, but\nstated that in \xe2\x80\x9cclose cases\xe2\x80\x9d courts should classify the trade dress as product design. Id. at 215.\n[11] Both parties agree that if we determine that the trade dress at issue is product design, then it\ncannot be inherently distinctive under the decision in Wal-Mart. The issue pertinent to this appeal,\nSlokevage admits that the configuration she is seeking to protect is \xe2\x80\x9ctrade dress\xe2\x80\x9d and thus we\nwill accept for purposes of this appeal that the configuration is \xe2\x80\x9ctrade dress.\xe2\x80\x9d\n2\n\n130\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nhowever, is whether Slokevage\xe2\x80\x99s proposed trade dress is product design. Although the decision in WalMart does not expressly address the issue of what constitutes product design, it is informative to this\ncase because it provides examples of trade dress that are product design. The Court observed that a\n\xe2\x80\x9ccocktail shaker shaped like a penguin\xe2\x80\x9d is product design and that the trade dress at issue in that case,\n\xe2\x80\x9ca line of spring/summer one-piece seersucker outfits decorated with appliques of hearts, flowers,\nfruits, and the like\xe2\x80\x9d is product design. Wal-Mart, 529 U.S. at 207. These examples demonstrate that\nproduct design can consist of design features incorporated into a product. Slokevage urges that her\ntrade dress is not product design because it does not alter the entire product but is more akin to a label\nbeing placed on a garment. We do not agree. The holes and flaps portion are part of the design of the\nclothing\xe2\x80\x94the cut-out area is not merely a design placed on top of a garment, but is a design\nincorporated into the garment itself. Moreover, while Slokevage urges that product design trade dress\nmust implicate the entire product, we do not find support for that proposition. Just as the product\ndesign in Wal-Mart consisted of certain design features featured on clothing, Slokevage\xe2\x80\x99s trade dress\nsimilarly consists of design features, holes and flaps, featured in clothing, revealing the similarity\nbetween the two types of design.\n[12] In addition, the reasoning behind the Supreme Court\xe2\x80\x99s determination that product design\ncannot be inherently distinctive is also instructive to our case. The Court reasoned that, unlike a\ntrademark whose \xe2\x80\x9cpredominant function\xe2\x80\x9d remains source identification, product design often serves\nother functions, such as rendering the \xe2\x80\x9cproduct itself more useful or more appealing.\xe2\x80\x9d Wal-Mart, 529\nU.S. at 212, 213. The design at issue here can serve such utilitarian and aesthetic functions. For\nexample, consumers may purchase Slokevage\xe2\x80\x99s clothing for the utilitarian purpose of wearing a\ngarment or because they find the appearance of the garment particularly desirable. Consistent with the\nSupreme Court\xe2\x80\x99s analysis in Wal-Mart, in such cases when the purchase implicates a utilitarian or\naesthetic purpose, rather than a source-identifying function, it is appropriate to require proof of\nacquired distinctiveness.\n[13] Finally, the Court in Wal-Mart provided guidance on how to address trade dress cases that\nmay be difficult to classify: \xe2\x80\x9cTo the extent that there are close cases, we believe that courts should err\non the side of caution and classify ambiguous trade dress as product design, thereby requiring\nsecondary meaning.\xe2\x80\x9d 529 U.S. at 215. Even if this were a close case, therefore, we must follow that\nprecedent and classify the trade dress as product design. We thus agree with the Board that\nSlokevage\xe2\x80\x99s trade dress is product design and therefore that she must prove acquired distinctiveness\nin order for her trade dress mark to be registered.\n______________________________________________________________________________\n\n131\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n1\n\nLVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.\n209 F. Supp. 3d 612, 626 (S.D.N.Y. 2016)\nIn LVL XIII Brands, the plaintiff produced \xe2\x80\x9c\xe2\x80\x98luxury\xe2\x80\x99 men\xe2\x80\x99s sneakers\xe2\x80\x9d featuring \xe2\x80\x9ca rectangular metal\ntoe plate with a \xe2\x80\x98LVL XIII inscription\xe2\x80\x99 secured to the front outsole of the sneaker by metal screws.\xe2\x80\x9d Id. at\n628. (See the above image on the left). The defendant produced luxury sneakers also featuring a metal\ntoe plate (above, right). The parties filed cross-motions for summary judgment. The district court\nanalyzed whether the plaintiff\xe2\x80\x99s toe plate design was product packaging or product configuration:\nThis is not a close case. Even a cursory examination of the TP {metal toe plate}\ndiscloses that it does not qualify as a trademark or product packaging. . . . [P]roduct\npackaging is generally limited to \xe2\x80\x9cthe appearance of labels, wrappers, boxes, envelopes,\nand other containers used in packaging a product as well as displays and other materials\nused in presenting the product to prospective purchasers.\xe2\x80\x9d Restatement (Third) of Unfair\nCompetition \xc2\xa7 16 cmt.a (1995).\nTellingly, LVL XIII has not offered any admissible evidence to support its claim that\nthe TP falls within either of these categories. And the record evidence is decidedly to the\ncontrary.\nFirst, the \xe2\x80\x9cpackag[ing]\xe2\x80\x9d described in LVL XIII\xe2\x80\x99s business plan consists solely of\n\xe2\x80\x9cdistinctive branded shoe boxes\xe2\x80\x9d and \xe2\x80\x9cblack cotton dust bags\xe2\x80\x9d\xe2\x80\x94it does not include the\nTP.\nSecond, in declining to register {LVL XIII\xe2\x80\x99s trademark} Application, the PTO stated\nthat \xe2\x80\x9cthe rectangular shape of the shoe toe plate . . . is a configuration of a feature of the\nshoe design,\xe2\x80\x9d which \xe2\x80\x9ccan never be inherently distinctive as a matter of law.\xe2\x80\x9d Although the\nPTO\xe2\x80\x99s determination is not dispositive, the Court is to \xe2\x80\x9caccord weight\xe2\x80\x9d to it. Genesee\nBrewing Co. v. Stroh Brewing Co., 124 F.3d 137, 148 n. 11 (2d Cir. 1997). Such deference is\nparticularly appropriate where, as here, the PTO\xe2\x80\x99s determination is consistent with the\nregistrant\xe2\x80\x99s own characterization of the claimed mark: As noted, the \xe2\x80\x98102 Application\nsought registration for a \xe2\x80\x9cshoe toe design\xe2\x80\x9d (emphasis added); see In re Slokevage, 441\nF.3d at 959 (\xe2\x80\x9cSlokevage\xe2\x80\x99s reference in her application to the trade dress as a \xe2\x80\x98cut-away\nflap design\xe2\x80\x99 supported a determination that the configuration constitutes product\ndesign.\xe2\x80\x9d). And LVL XIII used dotted lines to identify unclaimed portions of the mark, a\nprocedure required only for \xe2\x80\x9ctrade dress marks.\xe2\x80\x9d See U.S. Patent & Trademark Office,\nTrademark Manual of Examining Procedures (\xe2\x80\x9cTMEP\xe2\x80\x9d) \xc2\xa7 1202.02(c)(i) (Apr. 2016 ed.).\nhttp://www.thefashionlaw.com/home/louis-vuitton-lvl-xiii-head-back-to-court-over-sneakertop-plates?rq=LVL%20XIII.\n1\n\n132\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nDespite this evidence, LVL XIII argues that the TP is an inherently distinctive\ntrademark because its uniform size and placement on LVL XIII\xe2\x80\x99s line of sneakers renders\nit \xe2\x80\x9carbitrary\xe2\x80\x9d and \xe2\x80\x9cfanciful,\xe2\x80\x9d and thus apt to be an automatic indicator of source. That\nargument is not persuasive. . . . Despite LVL XIII\xe2\x80\x99s efforts to shoehorn the TP into the\ntrademark category, it does not fit. Rather, like the configuration in Slokevage, the TP\nserves a primarily aesthetic function: making LVL XIII\xe2\x80\x99s sneakers appear more enticing.\nAccordingly, the TP can be classified only as a product design feature which is not\ninherently distinctive. To prevail on its Lanham Act claims, LVL XIII must therefore show\nthat the TP acquired secondary meaning.\nLVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 209 F. Supp. 3d 612, 652\xe2\x80\x9354 (S.D.N.Y. 2016)\n(footnotes and some citations omitted). The Second Circuit subsequently affirmed. LVL XIII Brands, Inc.\nv. Louis Vuitton Malletier SA, 720 F. App\xe2\x80\x99x 24 (2d Cir. 2017).\n______________________________________________________________________________\n\nMcKernan v. Burek\n118 F. Supp. 2d 119 (D.Mass. 2000)\nIn McKernan, the plaintiff McKernan sold a novelty bumper sticker that purported to be a \xe2\x80\x9cCape\nCod Canal Tunnel Permit.\xe2\x80\x9d (This was meant to be hilarious. There is no tunnel to Cape Cod.) He\nbrought a trademark infringement suit against Burek and others who were producing similar bumper\nstickers. McKernan conceded that his bumper sticker design had no secondary meaning. The parties\nfiled cross-motions for summary judgment. Judge Lasker analyzed whether the bumper sticker was\nproduct packaging or product configuration as follows:\nThe Tunnel Permit presents one of the \xe2\x80\x9chard cases at the margin\xe2\x80\x9d referred to by the\nSupreme Court {in Wal-Mart}. It is particularly difficult to try to distinguish between the\npackaging and the product when discussing an ornamental bumper sticker. The\npackaging and the product are so intertwined that distinguishing between them may be\nregarded as a scholastic endeavor.\nNevertheless, the Supreme Court\xe2\x80\x99s opinion in Wal\xe2\x80\x93Mart provides some guidance.\nThe example given in Wal\xe2\x80\x93Mart, of the classic Coca\xe2\x80\x93Cola bottle is instructive: an item is\nthe product if it is the essential commodity being purchased and consumed rather than\nthe dress which presents the product.\nHere, the essential commodity being purchased is a joke on a bumper sticker. All of\nthe visual elements contained in the Tunnel Permit are a part of this joke and\nindispensable to it. What is being purchased and consumed is the novelty sticker, not\ndress identifying the prestige or standing of its source. Because McKernan is seeking\nprotection for the product being consumed, the proper classification of what McKernan\nseeks to protect is product design. This view of the matter is strengthened by the Wal\xe2\x80\x93\n133\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nMart Court\xe2\x80\x99s remarkably clear advice that in close cases trial courts should \xe2\x80\x9cerr on the\nside of caution and classify ambiguous trade dress as product design.\xe2\x80\x9d Wal\xe2\x80\x93Mart, 529 U.S.\nat 215.\nAccordingly, because McKernan seeks to protect his product design which, by\ndefinition, cannot be \xe2\x80\x9cinherently distinctive,\xe2\x80\x9d his claim under \xc2\xa7 43(a) fails.\n118 F. Supp. 2d at 123-24. (McKernan did not bring a copyright claim, apparently because he falsely\nrepresented to the Copyright Office that he had drawn the image of Cape Cod appearing on the sticker\nwhen in fact he had copied it from a book. Id. at 122.).\n______________________________________________________________________________\n\n1\n\nBest Cellars, Inc. v. Wine Made Simple, Inc.\n320 F.Supp.2d 60, 69-70 (S.D.N.Y. 2003)\nIn Best Cellars, the plaintiff, a wine retailer based in New York City, broadly claimed as its trade\ndress\nthe total effect of the interior design of its store, which it describes as: (1) eight words\ndifferentiating taste categories; (2) eight colors differentiating taste categories; (3) eight\ncomputer manipulated images differentiating taste categories; (4) taste categories set\nabove display fixtures by order of weight; (5) single display bottles set on stainless-steel\nwire pedestals; (6) square 4\xe2\x80\x9dx4\xe2\x80\x9d cards with verbal descriptions of each wine (\xe2\x80\x9cshelf\ntalkers\xe2\x80\x9d) with text arranged by template; (7) shelf talkers positioned at eye level, below\neach display bottle; (8) bottles vertically aligned in rows of nine; (9) storage cabinets\nlocated beneath vertically aligned bottled; (10) materials palette consisting of light wood\nand stainless steel; (11) mixture of vertical racks and open shelving display fixtures; (12)\nno fixed aisles; (13) bottles down and back-lit; and (14) limited selection (approximately\n100) of relatively inexpensive wine.\nId. at 70.\n\n1\n\nFrom Rockwell Group, http://www.rockwellgroup.com/projects/entry/best-cellars.\n134\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nJudge Lynch briefly analyzed whether this constituted product packaging trade dress or product\nconfiguration trade dress as follows:\nUnlike more traditional trade dress cases that concern product packaging (like water\nbottles, see Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 114 (2d Cir.\n2001)) or product designs (like children\xe2\x80\x99s clothing, see Samara Bros., 529 U.S. at 213),\nthis case concerns the interior decor of a retail establishment where customers purchase\nother products. In this, the case is similar to Two Pesos, which concerned the interior\ndecor of Mexican-themed restaurants. See Two Pesos, 505 U.S. at 764\xe2\x80\x9365 n. 1 (noting that\ntrade dress \xe2\x80\x9cmay include features such as size, shape, color or color combinations,\ntexture, graphics, or even particular sales techniques\xe2\x80\x9d (citations and internal quotation\nmarks omitted)). As the Supreme Court explained, the interior decor category fits\nawkwardly into the classifications of trade dress law, constituting either product\npackaging or a \xe2\x80\x9ctertium quid\xe2\x80\x9d akin to product packaging. Samara Bros., 529 U.S. at 215.\nInterior decor is thus clearly not product design. Accordingly, it is appropriate to analyze\nthe Best Cellars\xe2\x80\x99 interior decor trade dress under the product packaging standard for\ninherent distinctiveness . . . .\nId. at 69-70.\n______________________________________________________________________________\n\nFedders Corp. v. Elite Classics\n268 F. Supp. 2d 1051 (S.D. Ill. 2003)\nIn Fedders, the plaintiff, a manufacturer of single room air conditioners claimed as its trade dress\nthe \xe2\x80\x9cundulating curve on the left or right of the faceplate separating the portion of the faceplate on\nwhich the controls are positioned from the air intake louvers.\xe2\x80\x9d Judge Gilbert analyzed the question of\nproduct packaging / product configuration as follows:\nIn this case, the key question is whether the subject trade dress\xe2\x80\x94the undulating curve on\nthe decorative front\xe2\x80\x94is part of the product design or packaging. The defendants argue\nthat the curve is part of the product design, and that, therefore, evidence of secondary\nmeaning is required. On the other hand, Fedders notes that the curve is not functional,\nbut rather, purely esthetic. Moreover, Fedders argues that the curve is a unique design\nthat is associated with its Chassis line of air conditioners. Therefore, according to\nFedders, the curve is \xe2\x80\x9cinherently distinctive,\xe2\x80\x9d and no evidence of secondary meaning is\nnecessary . . . .\n\n135\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nIn this case, the Court believes that Fedders\xe2\x80\x99s undulating curve is not \xe2\x80\x9cpackaging\xe2\x80\x9d, but\nrather product design. The curve serves a purpose other than to identify the maker. It\nserves the purpose of making the air conditioners more esthetically appealing.\nId. at 1061-62.\n______________________________________________________________________________\nIn re SnoWizard, Inc.\n129 U.S.P.Q.2d 1001 (TTAB 2018)\nThe applicant sought to register the mark shown below for goods it identified as consisting of a\n\xe2\x80\x9cConcession trailer for snowball vendors to operate a viable snowball business.\xe2\x80\x9d Id. at 1001. The\napplicant described that mark as follows: \xe2\x80\x9cThe mark consists of a three-dimensional configuration of a\nsnowcapped roof with the word "SNOBALLS", a snowball and associated beverage container\npositioned on top of a concession trailer for snowball vendors. The matter shown in broken or dotted\nlines is not part of the mark and serves only to show the position or placement of the mark.\xe2\x80\x9d Id. at\n1001-02.\n\nThe applicant presented the photograph shown below as its specimen of use:\n\nThe TTAB found: \xe2\x80\x9cClearly, the product at issue in this case is the concession trailer; that is the\nproduct offered for sale, purchased by, and used by snowball vendors. It is not a container for flavored\nshaved ice or snowballs sold to consumers, as suggested by Applicant. Accordingly, Applicant\'s\napplied-for mark is properly characterized as a product design. Specifically, it is the design of the roof\nof a concession trailer. It therefore requires a showing of acquired distinctiveness in order to be\nregistered on the Principal Register.\xe2\x80\x9d Id. at 1003. (Reviewing, among other things, voluminous\n136\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nphotographic evidence of similar concession trailers, the TTAB went on to find no secondary meaning.\nSee id. at 1004-08)\n______________________________________________________________________________\n\nIn re Frankish Enterprises Ltd.\n113 U.S.P.Q.2d 1964 (TTAB 2015)\nIn In Re Frankish Enterprises Ltd., the applicant sought to register the above-pictured threedimensional mark for \xe2\x80\x9c[e]ntertainment services, namely, performing and competing in motor sports\nevents in the nature of monster truck exhibitions.\xe2\x80\x9d The applicant described the mark as follows: \xe2\x80\x9cThe\nmark consists of a truck cab body in the design of a fanciful, prehistoric animal. The matter shown by\ndotted lines is not part of the mark, but serves only to show the position of the mark.\xe2\x80\x9d The TTAB\nconcluded that the mark was capable of inherent distinctiveness:\nApplicant does not seek registration of its design for a product, it seeks registration of its\n\xe2\x80\x9cfanciful, prehistoric animal\xe2\x80\x9d design for its monster truck exhibition services, and under\nTwo Pesos, trade dress for services may be inherently distinctive. Indeed, Applicant\xe2\x80\x99s\nservice is exhibiting its monster truck in action, such as doing wheelies, jumping over and\ncrushing smaller vehicles and otherwise entertaining fans with the truck\xe2\x80\x99s size, power\nand sheer awesomeness, which could be performed with or without the \xe2\x80\x9cfanciful,\nprehistoric animal\xe2\x80\x9d design on the outside of the truck, just as Taco Cabana\'s service of\noffering Mexican food to restaurant customers could be performed without the particular\ninterior design found to be inherently distinctive in Two Pesos. {T}he \xe2\x80\x9cfanciful, prehistoric\nanimal\xe2\x80\x9d design is akin to the packaging of what is being sold, in this case Applicant\'s\nmonster truck services.\nIn Re Frankish Enterprises Ltd., 113 U.S.P.Q.2d 1964, 2015 WL 1227728, at *4 (TTAB 2015). (For the\nBoard\xe2\x80\x99s determination of whether in fact the mark was inherently distinctive, see below in Part I.A.2.c).\nComments and Questions\n1. Is the three stripes design for the surface of athletic shoes shown in the registration below\nproduct configuration, product packaging, or some \xe2\x80\x9ctertium quid\xe2\x80\x9d? (The dotted lines do not constitute\npart of the claimed mark. The registration includes them only to show placement of the mark).\n\n137\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nc.\n\nAnalyzing the Inherent Distinctiveness of Product Packaging Trade Dress\n\nProduct configuration trade dress and single colors (whether applied to the packaging of the\nproduct or the product itself) are per se incapable of inherent distinctiveness, and it is likely that\ncourts would also find smells, tastes, and textures also to be incapable of inherent distinctiveness. But\nthis leaves a wide array of nonverbal marks, including product packaging trade dress, that remain\ncapable of inherent distinctiveness. The question, then, is how to determine whether a particular mark\nthat falls into one of these categories is in fact inherently distinctive. While the Abercrombie spectrum\nworks reasonably well for verbal marks, it is not clear that it is well-suited to the inherent\ndistinctiveness analysis of nonverbal marks. Instead, as we will see below, most courts outside of the\nSecond Circuit have adopted the so-called Seabrook factors, from Seabrook Foods, Inc. v. Bar\xe2\x80\x93Well\nFoods Ltd., 568 F.2d 1342 (CCPA 1977), to analyze the inherent distinctiveness of nonverbal marks.\nWe first consider an example of the Second Circuit\xe2\x80\x99s proud attempt to adapt its Abercombie\nspectrum to the question of whether a product packaging feature is inherently distinctive. We then\nturn to an example of the (probably far more sensible) Seabrook factors approach to the question.\ni.\n\nUsing the Abercrombie Spectrum to Analyze Whether Product Packaging Is\nInherently Distinctive\n\nFun-Damental Too, Ltd. v. Gemmy Industries Corp.\n111 F.3d 993, 997-998, 999-1001 (2d Cir. 1997)\n{Plaintiff Fun-Damental Too, Ltd. (\xe2\x80\x9cFun-Damental\xe2\x80\x9d) brought suit for trademark infringement\nagainst defendants alleging that defendants had copied the trade dress of Fun-Damental\xe2\x80\x99s \xe2\x80\x9cToilet\nBank\xe2\x80\x9d (see photo below) in the sale of their own \xe2\x80\x9cCurrency Can.\xe2\x80\x9d\n\n138\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nJudge Mukasey of the S.D.N.Y. granted a preliminary injunction in favor of Fun-Damental. Defendants\nappealed. Excerpted here are the court\xe2\x80\x99s description of the Toilet Bank\xe2\x80\x99s trade dress and the court\xe2\x80\x99s\nanalysis of the inherent distinctiveness, if any, of that trade dress.}\nCARDAMONE, Circuit Judge\n....\n[1] Plaintiff\xe2\x80\x99s product is displayed in stores in a royal blue triangular-shaped box. The Toilet Bank\nitself is visible within the open-style box, which allows a consumer access to the toilet handle so that\nthe flushing sound may be tested. The toy\xe2\x80\x99s bowl is covered with a clear plastic cover that includes a\nraised three-dimensional circle to which is affixed a gray sticker depicting a coin. The bank is held in\nplace in its box by a 1/4 inch strap running up one side of the toilet bowl, through the plastic cover,\nand down the other side.\n[2] The product name \xe2\x80\x9cTOILET BANK\xe2\x80\x9d appears in yellow letters on the royal blue box\xe2\x80\x99s lower\nfront panel. The four inch-high upper rear panel is decorated with the product name and two pictures\ndemonstrating how to use the product. The top picture shows a hand holding a coin over the toilet\nbowl, and the bottom one shows an index finger depressing the handle with the message \xe2\x80\x9cREAL\nFLUSHING SOUND\xe2\x80\x9d in white letters on a red bubble. In the upper right hand corner of this panel is a\nyellow starburst with the words \xe2\x80\x9cREAL FLUSHING SOUND\xe2\x80\x9d in red letters. Below it is a yellow arrow\npointing down toward the handle with the legend in red: \xe2\x80\x9cTRY ME\xe2\x80\x9d and in smaller letters: \xe2\x80\x9cPRESS\nHANDLE.\xe2\x80\x9d The same message appears on a red arrow sticker, affixed to the toilet tank, pointing\ndiagonally towards the silver handle.\n....\n[3] We ordinarily evaluate inherent distinctiveness of trade dress by applying the trademark\nclassifications as set forth by Judge Friendly in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d\n4, 9 (2d Cir. 1976). See Paddington Corp. v. Attiki Importers & Distrib., Inc., 996 F.2d 577, 583 (2d Cir.\n1993) (adopting Judge Friendly\xe2\x80\x99s test to evaluate the inherent distinctiveness of product packaging).\nWithin this framework, trade dress is classified on a spectrum of increasing distinctiveness as generic,\ndescriptive, suggestive, or arbitrary/fanciful . . . .\n[4] The Supreme Court has emphasized that an inherently distinctive trade dress is one whose\n\xe2\x80\x9cintrinsic nature serves to identify a particular source of a product,\xe2\x80\x9d Two Pesos, Inc. v. Taco Cabana, Inc.,\n505 U.S. 763, 768 (1992), although it may not yet have widespread identification among consumers. Id.\nat 771. Consumers generally rely on packaging for information about the product and its source. But\nthe varieties of labels and packaging available to wholesalers and manufacturers are virtually\n139\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nunlimited. As a consequence, a product\xe2\x80\x99s trade dress typically will be arbitrary or fanciful and meet the\ninherently distinctive requirement for \xc2\xa7 43(a) protection. Mana Prods., Inc. v. Columbia Cosmetics Mfg.,\nInc., 65 F.3d 1063, 1069 (2d Cir. 1995); Chevron Chem. Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d\n695, 703 (5th Cir. 1981).\n[5] Yet trade dress protection has limits. A trade dress that consists of the shape of a product that\nconforms to a well-established industry custom is generic and hence unprotected. For example, the\ncosmetics industry\xe2\x80\x99s common use of black, rectangular-shaped compacts renders that packaging\ngeneric. Mana, 65 F.3d at 1070; see also Paddington, 996 F.2d at 583 (soda industry practice would\nrender green cans generic for the purpose of packaging lime-flavored soda). In short, despite the broad\nopportunity to design an arbitrary or fanciful trade dress, a specific trade dress must still be evaluated\nto determine whether it is so distinctive as to point to a single source of origin and thereby be entitled\nto Lanham Act protection.\n[6] Defendants urge us to adopt a more stringent standard of distinctiveness than that used by the\ntrial court. Recently we declined to use the Abercrombie spectrum of distinctiveness in a trade dress\ncase that involved features of the product itself. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir.\n1995). In an attempt to extend that rationale, defendants suggest we adopt an alternative test for\ninherent distinctiveness of trade dress set forth in Seabrook Foods, Inc. v. Bar\xe2\x80\x93Well Foods Ltd., 568 F.2d\n1342, 1344 (C.C.P.A.1977). Under Seabrook, the inquiry is whether the design or shape of a package is a\ncommon, basic one, or whether it is unique or unusual in a particular field; whether the design is a\nmere refinement of a commonly-adopted and well-known form of ornamentation for a particular class\nof goods viewed by the public as a trade dress or ornamentation for such goods, or whether it is one\ncapable of creating a commercial impression separate from the accompanying words. Id.\n[7] We see no reason to abandon the Abercrombie distinctiveness spectrum in this case. Several\nreasons lead us to decline. First, we have expressly ruled that the Abercrombie classifications apply to\npackaging. Paddington, 996 F.2d at 583. Second, Knitwaves is a pure product configuration case,\nseparate from product packaging, the category of trade dress at issue in this case. In Knitwaves, the\ntrade dress lay in the product itself, rather than in a symbol\xe2\x80\x94a trademark or packaging\xe2\x80\x94associated\nwith the product. It was therefore difficult to define some aspect or feature of the trade dress as\n\xe2\x80\x9cdescriptive\xe2\x80\x9d or \xe2\x80\x9carbitrary\xe2\x80\x9d in relation to the product. See Knitwaves, 71 F.3d at 1007\xe2\x80\x9308 (quoting\nDuraco Prods. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1440\xe2\x80\x9341 (3d Cir. 1994)). In contrast, a store\ndisplay of a product\xe2\x80\x99s packaging style creates an image of the product more readily separated from the\nproduct itself. Moreover, although there may be a finite set of ways to configure a product, the variety\nof packaging available for a given product is limited only by the bounds of imagination. These factors\nrender packaging more suitable than product configuration for classification under the Abercrombie\nsystem as arbitrary or fanciful, suggestive, descriptive, or generic.\n[8] Third, use of the Abercrombie test tracks the purpose of the Lanham Act to identify source.\nThat is, it is consistent with the Supreme Court\xe2\x80\x99s emphasis on a trade dress\xe2\x80\x99 capacity to \xe2\x80\x9cidentify a\nparticular source of the product.\xe2\x80\x9d Two Pesos, 505 U.S. at 771. While a more stringent test is necessary\nin the product configuration context, applying Abercrombie to product packaging serves the aims of the\nLanham Act because consumers are more likely to rely on the packaging of a product than on the\nproduct\xe2\x80\x99s design as an indication of source. Restatement (Third) of Unfair Competition \xc2\xa7 16 cmt. b\n(1995). In contrast, over-inclusive protection of the product design risks conferring benefits beyond\nthe intended scope of the Lanham Act and entering what is properly the realm of patent law. See\nFabrication Enters., Inc. v. Hygenic Corp., 64 F.3d 53, 59 n. 4 (2d Cir. 1995). Thus, though the\nAbercrombie classifications were originally developed for analysis of word marks, we conclude that\nbecause of the endless number of product packaging options the Abercrombie test is appropriately\napplied in this trade dress case.\nB. Distinctiveness in the Instant Case\n140\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[9] Defendants insist that the Toilet Bank\xe2\x80\x99s trade dress is not inherently distinctive, principally\nbecause the elements identified as part of that characterization are generic. Classification under the\nAbercrombie spectrum of distinctiveness is a question of fact reviewed under the clearly erroneous\nstandard. See Bristol\xe2\x80\x93Myers Squibb Co. v. McNeil\xe2\x80\x93P.P.C., Inc., 973 F.2d 1033, 1039\xe2\x80\x9340 (2d Cir. 1992)\n(classification of trademarks). We evaluate trade dress distinctiveness by looking at all its elements\nand considering the total impression the trade dress gives to the observer. Paddington, 996 F.2d at\n584. Concededly, a number of individual features of the Toilet Bank\xe2\x80\x99s trade dress are common in the\ntoy industry; for example, the triangular shape of the box and its open styling are found everywhere on\ntoy store shelves. The red arrows stating \xe2\x80\x9cTry Me,\xe2\x80\x9d the starburst (separate from the notation \xe2\x80\x9cflushing\nsound\xe2\x80\x9d), and the raised blister are similarly quite usual legends in the toy business. Although some of\nthe individual elements of a trade dress are generic or descriptive, the impression given by all of them\nin combination may be inherently distinctive. Such was what the district court found here; and we\ncannot say that this finding is clearly erroneous.\n[10] Gemmy maintains that the trial court improperly considered the similarities between its\nproduct and Fun\xe2\x80\x93Damental\xe2\x80\x99s when making the inherently distinctive determination regarding the\nToilet Bank\xe2\x80\x99s trade dress. We disagree. Although Fun\xe2\x80\x93Damental makes no claim regarding the copying\nof its product, it was appropriate to consider the packaging in conjunction with the product, rather\nthan simply the empty box. \xe2\x80\x9c[T]rade dress today encompasses a broad concept of how a product\npresented to the public looks, including its color, design, container, and all the elements that make up\nits total appearance.\xe2\x80\x9d Mana, 65 F.3d at 1069.\n[11] This \xe2\x80\x9ctotal look\xe2\x80\x9d approach is the only workable way to consider such elements of the trade\ndress as the arrow sticker that is affixed to the Toilet Bank\xe2\x80\x99s tank. Because the box is open in order to\ndisplay the product, it was proper to analyze Fun\xe2\x80\x93Damental\xe2\x80\x99s trade dress as seen by consumers\xe2\x80\x94\nincluding the Toilet Bank product. Further, there is no risk of \xe2\x80\x9cspillover\xe2\x80\x9d protection for the Toilet Bank\nas a product here since the injunction is limited to the sale of a similar product in a particular package,\nrather than an absolute ban on the sale of the Currency Can in an open-style box. In sum, we conclude\nthat looking at the product itself in the context of its packaging is a proper method of analyzing openstyle packaging for trade dress protection.\nii.\n\nUsing the Seabrook Factors to Analyze Whether Product Packaging is\nInherently Distinctive\n\nIn Seabrook, the plaintiff Seabrook had registered, for frozen vegetables, a mark consisting in part\nof a pointed loop (or \xe2\x80\x9cstylized leaf design\xe2\x80\x9d, as Seabrook called it) as shown below. Seabrook opposed\nthe registration of Bar-Well\xe2\x80\x99s mark, also for frozen foods, that incorporated a similar pointed loop\ndesign on the ground that Bar-Well\xe2\x80\x99s use of the mark would confuse consumers. The Court of Customs\n& Patent Appeals (the predecessor court to the Court of Appeals for the Federal Circuit) set forth\nvarious factors relevant to the question of whether consumers would perceive the pointed loop design\n(absent the words and image of a farm) as inherently distinctive of source:\nIn determining whether a design is arbitrary or distinctive this court has looked to\nwhether it was a \xe2\x80\x98common\xe2\x80\x99 basic shape or design, whether it was unique or unusual in a\nparticular field, whether it was a mere refinement of a commonly-adopted and wellknown form of ornamentation for a particular class of goods viewed by the public as a\ndress or ornamentation for the goods, or whether it was capable of creating a commercial\nimpression distinct from the accompanying words.\nId. at 1344. The CCPA ultimately determined that the design at issue would be perceived merely as\ndecoration. Id. These factors soon came to inform most courts analysis of the inherent distinctiveness\nof all nonverbal trademarks (including, before Samara Bros., product configuration trade dress).\n141\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nNote that the two leading treatises on trademark law disagree on whether the Abercrombie\nspectrum or the Seabrook factors work better for assessing the inherent distinctiveness of product\npackaging trade dress. McCarthy strongly endorses Seabrook:\nIn the author\xe2\x80\x99s view, the Seabrook test is by far the preferable test to classify inherently\ndistinctive trade dress in packaging and containers. Necessarily focusing upon the\nprobable reaction of the ordinary consumer, it focuses upon the key issue in these cases:\nis the design so different in this market that it will immediately be perceived as a source\nidentifier, not merely or solely as an attractive decoration or embellishment. The\nAbercrombie spectrum was developed specifically for word marks and does not translate\ninto the world of shapes and designs.\nMCCARTHY \xc2\xa7 8:13. The Gilson treatise remains loyal to Abercrombie:\nThe Abercrombie classifications are not an ideal fit for product packaging trade dress\ncases; is a squeeze bottle with a top that squirts liquid suggestive of dish soap or spring\nwater or is it generic for those products because it is so widely used? Nevertheless,\npending further clarification from the Supreme Court, lower courts should continue to\nuse the Abercrombie spectrum in classifying product packaging trade dress.\nGILSON \xc2\xa7 2A.03[1][a][ii].\nNote further that if a court finds a feature of product packaging to lack both inherent and acquired\ndistinctiveness or a feature of product configuration to lack acquired distinctiveness, then the court\nwill often (but not always) deem the feature to be \xe2\x80\x9cmere ornamentation.\xe2\x80\x9d For example, in In re\nLululemon Athletica Canada, Inc., 105 U.S.P.Q.2d 1684 (TTAB 2013), the TTAB analyzed the wave\ndesign for apparel shown below. The TTAB did not apparently consider the design to be product\nconfiguration (and thus per se incapable of inherent distinctiveness). It nevertheless found that the\ndesign lacked inherent distinctiveness and acquired distinctiveness and would be perceived by\nconsumers as mere ornamentation.\n\n142\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nAs you read through the following opinion, consider the following questions:\n\xe2\x80\xa2\n\nWhich test is better: Abercrombie or Seabrook? On what grounds should courts prefer one or the\nother? Which test tends to be more plaintiff-friendly, i.e., more prone to find the trade dress at\nissue to be inherently distinctive?\n\n\xe2\x80\xa2\n\nCould Seabrook be successfully modified to apply to the inherent distinctiveness analysis of verbal\nmarks as well?\n\nAmazing Spaces, Inc. v. Metro Mini Storage\n608 F.3d 225 (5th Cir. 2010)\n{The relevant facts are as follows: Plaintiff Amazing Spaces, Inc. (\xe2\x80\x9cAmazing Spaces\xe2\x80\x9d) and\ndefendant Metro Mini Storage (\xe2\x80\x9cMetro\xe2\x80\x9d) are rival self-storage businesses in Houston, Texas. Amazing\nSpaces claims a star design as its service mark, which it registered at the PTO in 2004 (see the\nregistration certificate below). Metro used a similar design on its storage buildings. In response to\nAmazing Spaces\xe2\x80\x99 suit for trademark infringement, Metro argued that Amazing Spaces\xe2\x80\x99 star design mark\nlacked both inherent and acquired distinctiveness and was improperly registered. The district court\nagreed and granted Metro\xe2\x80\x99s motion for summary judgment on the issue. On appeal, after considering,\namong other things, the weight to be accorded to the PTO registration (an issue we will discuss in Part\nI.D below), the Fifth Circuit turned to the question of whether the star design was inherently\ndistinctive.}\n\n143\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nKING, Circuit Judge\n....\n2. Inherent Distinctiveness\n[1] As mentioned above, \xe2\x80\x9ca mark is inherently distinctive if \xe2\x80\x98its intrinsic nature serves to identify a\nparticular source.\xe2\x80\x99\xe2\x80\x9d Wal\xe2\x80\x93Mart Stores, 529 U.S. at 210 (quoting Two Pesos, 505 U.S. at 768). Inherent\ndistinctiveness is attributable to a mark when the mark \xe2\x80\x9calmost automatically tells a customer that it\nrefers to a brand and . . . immediately signal[s] a brand or a product source.\xe2\x80\x9d Id. at 212 (quoting\nQualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162\xe2\x80\x9363 (1995)). The parties disagree over not only the\nanswer to whether the Star Symbol is inherently distinctive but also over the proper method for\nconducting the inquiry. Metro urges that the familiar Abercrombie test cannot be used to categorize the\nStar Symbol and instead asks that we apply the Seabrook Foods test to determine that the Star Symbol\nis not inherently distinctive. Amazing Spaces, by contrast, presses the application of the Abercrombie\ntest, under which it claims the Star Symbol is inherently distinctive, and it argues alternatively that the\nStar Symbol is inherently distinctive under the Seabrook Foods test.\na. Abercrombie\n[2] In Abercrombie, Judge Friendly sought to arrange the universe of marks into a spectrum of\ndistinctiveness. See 537 F.2d at 9. . . .\n[3] We agree with Metro that the Star Symbol resists categorization under the Abercrombie test,\nand we consequently do not rely on a rote application of its categories in determining whether the Star\nSymbol is inherently distinctive. The Supreme Court\xe2\x80\x99s most recent recitation of the Abercrombie\ncategories noted its use only in the context of marks consisting of words. See Wal\xe2\x80\x93Mart Stores, 529 U.S.\nat 210 (\xe2\x80\x9cIn the context of word marks, courts have applied the now-classic test originally formulated by\nJudge Friendly . . . .\xe2\x80\x9d (emphasis added) (citing Abercrombie, 537 F.2d at 10\xe2\x80\x9311)). The Court\xe2\x80\x99s precedent\nalso supports the proposition that some marks, although deserving of legal protection, do not fit within\nthe Abercrombie spectrum. In Qualitex, the Court declined to apply the Abercrombie test to a mark\nconsisting purely of a shade of color used in a product\xe2\x80\x99s trade dress, holding that the mark could\nconstitute a legally protectable mark only through a showing of secondary meaning. 514 U.S. at 162\xe2\x80\x93\n63. The Court further extended that logic when, in Wal\xe2\x80\x93Mart Stores, it stated that \xe2\x80\x9c[i]t seems to us that\n[product] design, like color, is not inherently distinctive\xe2\x80\x9d and held that marks consisting of a product\xe2\x80\x99s\ndesign were protectable only upon proof of secondary meaning\xe2\x80\x94a conclusion it could not have\nreached had it applied the Abercrombie test. Wal\xe2\x80\x93Mart Stores, 529 U.S. at 212. Professor McCarthy, a\nluminary in the field of trademark law, has likewise suggested that the Abercrombie test may not apply\nto all marks, stating that \xe2\x80\x9c[u]se of the spectrum of descriptive, suggestive, arbitrary and fanciful is\nlargely confined to word marks. It is usually not suitable for nonword designations such as shapes and\nimages . . . [, which] must be judged by other guidelines.\xe2\x80\x9d 2 MCCARTHY ON TRADEMARKS \xc2\xa7 11:2, at\n11\xe2\x80\x937. . . .\n[4] As the district court discovered, the challenge of placing the Star Symbol into Abercrombie\xe2\x80\x99s\nconstellation of categories is a futile endeavor. We have described the Abercrombie categories as\nfollows . . . .\n[5] The district court briefly probed the utility of applying the Abercrombie test and concluded\nthat the Star Symbol did not fit as a generic, descriptive, or suggestive mark. See Amazing Spaces, 665\nF.Supp.2d at 737. The district court first rejected the notion that the Star Symbol was generic because\n\xe2\x80\x9c[a] five-pointed star within a circle does not refer to a product or service provided by a self-storage\ncompany\xe2\x80\x9d and \xe2\x80\x9c[t]he evidence of widespread use of a five-point star or a five-point star set within a\ncircle by many diverse businesses and government offices supports the conclusion that the star mark\nis not related to or a generic symbol for self-storage goods or services.\xe2\x80\x9d Id. It next determined that the\n144\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nStar Symbol was not descriptive because \xe2\x80\x9c[i]t does not identify a characteristic or quality of selfstorage service, such as its function or quality.\xe2\x80\x9d Id. Nor was the Star Symbol suggestive, according to\nthe district court, because \xe2\x80\x9c[t]here is no basis to conclude that a five-pointed star set within a circle\nsuggests an attribute of self-storage services.\xe2\x80\x9d Id. We discern no flaws in the district court\xe2\x80\x99s analysis\nwith respect to these three categories. However, the logical extension of the district court\xe2\x80\x99s analysis is\nthe conclusion that the Star Symbol is arbitrary or fanciful, which under the Abercrombie test would\nrender it inherently distinctive and thus entitled to protection. Yet the district court refused to so\nconclude, stating that \xe2\x80\x9cthe star mark cannot be classified as arbitrary or fanciful unless it is inherently\ndistinctive so as to serve as a source identifier for Amazing Spaces.\xe2\x80\x9d Id. It then turned to the Seabrook\nFoods test in conducting its inquiry into the Star Symbol\xe2\x80\x99s inherent distinctiveness. See id.\n[6] We agree that the Star Symbol\xe2\x80\x94indeed, any mark\xe2\x80\x94lacks inherent distinctiveness if its\nintrinsic nature does not serve to identify its source. See Wal\xe2\x80\x93Mart Stores, 529 U.S. at 210 (\xe2\x80\x9c[A] mark is\ninherently distinctive if \xe2\x80\x98its intrinsic nature serves to identify a particular source.\xe2\x80\x99\xe2\x80\x9d (quoting Two Pesos,\n505 U.S. at 768)). Furthermore, as we have already indicated, we approve the district court\xe2\x80\x99s decision\nto apply a test other than Abercrombie in this case. However, we disagree somewhat with the district\ncourt\xe2\x80\x99s reasoning that a mark cannot be categorized as arbitrary or fanciful unless it is inherently\ndistinctive. Under the Abercrombie test, it is the categorization of a mark that dictates its inherent\ndistinctiveness, not the other way around. A rote application of the Abercrombie test yields the\nconclusion that the Star Symbol is an arbitrary or fanciful mark because it \xe2\x80\x9c\xe2\x80\x98bear[s] no relationship to\nthe products or services to which [it is] applied.\xe2\x80\x99\xe2\x80\x9d Pebble Beach, 155 F.3d at 540 (quoting Zatarains,\n698 F.2d at 791). Were we to apply the Abercrombie test mechanically to the Star Symbol, without an\neye to the question the test seeks to answer, we would be left with the conclusion that the Star Symbol\nis inherently distinctive. The district court, aware of that result, proceeded to apply the Seabrook Foods\ntest. See Amazing Spaces, 665 F.Supp.2d at 737.\n[7] Both the Supreme Court and scholars have questioned the applicability of the Abercrombie\ntest to marks other than words. See Wal\xe2\x80\x93Mart Stores, 529 U.S. at 210\xe2\x80\x9313, (noting that the Abercrombie\ntest was developed and applied \xe2\x80\x9c[i]n the context of word marks\xe2\x80\x9d and declining to apply it to a mark\nconsisting of product design); Qualitex, 514 U.S. at 162\xe2\x80\x9363 (referring to the Abercrombie test but not\napplying it to a mark consisting of a shade of color); . . . . 1 MCCARTHY ON TRADEMARKS \xc2\xa7 8:13, at 8\xe2\x80\x93\n58.1 (\xe2\x80\x9cOnly in some cases does [Abercrombie] classification make sense [for trade dress] . . . . The word\nspectrum of marks simply does not translate into the world of shapes and images.\xe2\x80\x9d); . . . . We do not go\nso far as to hold that the Abercrombie test is eclipsed every time a mark other than a word is at issue.\nInstead, we hold that the Abercrombie test fails to illuminate the fundamental inquiry in this case:\nwhether the Star Symbol\xe2\x80\x99s \xe2\x80\x9c\xe2\x80\x98intrinsic nature serves to identify\xe2\x80\x99\xe2\x80\x9d Amazing Spaces and its storage\nservices. Wal\xe2\x80\x93Mart Stores, 529 U.S. at 210 (quoting Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753). For the\nanswer to that question, we now turn to the Seabrook Foods test employed by the district court.\nb. Seabrook Foods\n[8] In contrast to the Abercrombie test, the Seabrook Foods test, articulated by the U.S. Court of\nCustoms and Patent Appeals in 1977, applies expressly to marks consisting of symbols and designs:\nIn determining whether a design is arbitrary or distinctive this court has looked to [1]\nwhether it was a \xe2\x80\x9ccommon\xe2\x80\x9d basic shape or design, [2] whether it was unique or unusual\nin a particular field, [3] whether it was a mere refinement of a commonly-adopted and\nwell-known form of ornamentation for a particular class of goods viewed by the public as\na dress or ornamentation for the goods, or [4] whether it was capable of creating a\ncommercial impression distinct from the accompanying words.\n\n145\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nSeabrook Foods, 568 F.2d at 1344 (footnotes omitted).14 The first three of the Seabrook Foods\n\xe2\x80\x9c\xe2\x80\x98questions are merely different ways to ask whether the design, shape or combination of elements is\nso unique, unusual or unexpected in this market that one can assume without proof that it will\nautomatically be perceived by customers as an indicator of origin\xe2\x80\x94a trademark.\xe2\x80\x99\xe2\x80\x9d I.P. Lund Trading\nApS v. Kohler Co., 163 F.3d 27, 40 (1st Cir. 1998) (quoting 1 MCCARTHY ON TRADEMARKS \xc2\xa7 8:13, at 8\xe2\x80\x93\n58.5). As is true of the Abercrombie test, the Seabrook Foods test seeks an answer to the question\nwhether a mark\xe2\x80\x99s \xe2\x80\x9c\xe2\x80\x98intrinsic nature serves to identify a particular source.\xe2\x80\x99\xe2\x80\x9d Wal\xe2\x80\x93Mart Stores, 529 U.S. at\n210 (quoting Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753) . . . .16\n[9] We agree with the assessment of . . . Professor McCarthy that the Seabrook Foods factors are\nvariations on a theme rather than discrete inquiries. In Star Industries v. Bacardi & Co., the Second\nCircuit noted that \xe2\x80\x9c\xe2\x80\x98[c]ommon basic shapes\xe2\x80\x99 or letters are, as a matter of law, not inherently distinctive\n. . . , [but] stylized shapes or letters may qualify, provided the design is not commonplace but rather\nunique or unusual in the relevant market.\xe2\x80\x9d 412 F.3d 373, 382 (2d Cir. 2005) (citing Seabrook Foods,\n568 F.2d at 1344; Permatex Co. v. Cal. Tube Prods., Inc., 175 U.S.P.Q. 764, 766 (TTAB1972)). This\nstatement, turning on whether the symbol or design is \xe2\x80\x9ccommon,\xe2\x80\x9d comprises, essentially, the first two\nSeabrook Foods factors. However, the third Seabrook Foods factor similarly asks whether a symbol or\ndesign is \xe2\x80\x9ccommon\xe2\x80\x9d in the sense that it is likely to be perceived by the public as ornamentation rather\nthan a mark. See Wiley v. Am. Greetings Corp., 762 F.2d 139, 142 (1st Cir. 1985) (equating a red heart\nshape on a teddy bear to \xe2\x80\x9can ordinary geometric shape\xe2\x80\x9d because it \xe2\x80\x9ccarrie[d] no distinctive message of\norigin to the consumer, . . . given the heart shape\xe2\x80\x99s widespread use as decoration for any number of\nproducts put out by many different companies\xe2\x80\x9d).17 A \xe2\x80\x9ccommon\xe2\x80\x9d symbol or design\xe2\x80\x94lacking inherent\n\nAs noted above, the district court omitted discussion of the fourth factor, which by its terms\napplies only when a party seeks trademark protection for a background design typically accompanied\nby words. See Amazing Spaces, 665 F.Supp.2d at 736. Similarly, we will not consider the fourth\nSeabrook Foods factor.\n14\n\n16 We note, of course, that the Wal\xe2\x80\x93Mart Court was urged by the respondent in that case and by\nthe United States as amicus curiae to adopt the Seabrook Foods test writ large for product design but\ndeclined to do so. Id. at 213\xe2\x80\x9314, 120 S.Ct. 1339. The Court\xe2\x80\x99s concern was that \xe2\x80\x9c[s]uch a test would\nrarely provide the basis for summary disposition of an anticompetitive strike suit.\xe2\x80\x9d Id. at 214, 120 S.Ct.\n1339. However, as discussed below, we are of the opinion that the relevant portions of the Seabrook\nFoods test do provide a basis for summary disposition in this case. Because we conclude that the Star\nSymbol is not inherently distinctive under the Seabrook Foods test, we do not address whether it\nconstitutes a \xe2\x80\x9creasonably clear test,\xe2\x80\x9d id. at 213, such that it would be preferable to the Abercrombie test\nin the ordinary trademark or service mark dispute.\n\nThe interrelationship between these inquiries is also reflected in Professor McCarthy\xe2\x80\x99s\ndiscussion of common geometric shapes:\n17\n\nMost common geometric shapes are regarded as not being inherently distinctive, in view\nof the common use of such shapes in all areas of advertising. Thus, such ordinary shapes\nas circles, ovals, squares, etc., either when used alone or as a background for a word\nmark, cannot function as a separate mark unless (1) the shape is likely to create a\ncommercial impression on the buyer separate from the word mark or any other indicia\nand (2) the shape is proven to have secondary meaning . . . . The rationale is that such\ndesigns have been so widely and commonly used as mere decorative graphic elements\nthat the origin-indicating ability of such designs has been diminished.\n1 MCCARTHY ON TRADEMARKS \xc2\xa7 7:29, at 7\xe2\x80\x9373\xe2\x80\x9374 (footnotes omitted).\n146\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndistinctiveness\xe2\x80\x94is the antithesis of a symbol or design that \xe2\x80\x9c\xe2\x80\x98is so unique, unusual or unexpected in\nthis market that one can assume without proof that it will automatically be perceived by customers as\nan indicator of origin\xe2\x80\x94a trademark.\xe2\x80\x99\xe2\x80\x9d I.P. Lund Trading, 163 F.3d at 40 (quoting 1 MCCARTHY ON\nTRADEMARKS \xc2\xa7 8:13, at 8\xe2\x80\x9358.5); accord RESTATEMENT \xc2\xa7 13 cmt. d, at 107 (\xe2\x80\x9cCommonplace symbols\nand designs are not inherently distinctive since their appearance on numerous products makes it\nunlikely that consumers will view them as distinctive of the goods or services of a particular seller.\xe2\x80\x9d).\n[10] The district court determined that the Star Symbol was \xe2\x80\x9cnot a plain five-pointed star\xe2\x80\x9d but\nwas instead \xe2\x80\x9cshaded and set within a circle,\xe2\x80\x9d rendering it \xe2\x80\x9csufficient[ly] styliz[ed]\xe2\x80\x9d to be \xe2\x80\x9cmore than a\ncommon geometric shape.\xe2\x80\x9d Amazing Spaces, 665 F.Supp.2d at 737. It then proceeded to conclude that\nthe Star Symbol \xe2\x80\x9c[wa]s not inherently distinctive and d[id] not act as an indicator of origin for any selfstorage business, including Amazing Spaces.\xe2\x80\x9d Id. at 738. It supported this assertion with a discussion of\n\xe2\x80\x9c[t]he ubiquitous nature of the five-pointed star set within a circle\xe2\x80\x9d in Texas, specifically its \xe2\x80\x9cuse[ ] as a\ndecoration or ornamentation on innumerable buildings, signs, roads, and products.\xe2\x80\x9d Id. The court\nconcluded that this ubiquity\xe2\x80\x94including use of the same or a similar star design in 63 businesses and\n28 other self-storage locations\xe2\x80\x94\xe2\x80\x9dpreclude[d] a finding that [the Star Symbol wa]s inherently\ndistinctive or that it c[ould] serve as an indicator of origin for a particular business.\xe2\x80\x9d Id.\n[11] Undoubtedly, the Star Symbol is stylized relative to an unshaded five-pointed star design not\nset within a circle. However, we disagree that the issue of stylization revolves around comparing a\ndesign\xe2\x80\x99s actual appearance to its corresponding platonic form. Instead, as discussed above, asking\nwhether a shape is stylized is merely another way of asking whether the design is \xe2\x80\x9ccommonplace\xe2\x80\x9d or\n\xe2\x80\x9cunique or unusual in the relevant market,\xe2\x80\x9d Star Indus., 412 F.3d at 382 (citing Permatex, 175 U.S.P.Q.\nat 766), or whether it is \xe2\x80\x9ca mere refinement of a commonly-adopted and well-known form of\nornamentation for a particular class of goods viewed by the public as a dress or ornamentation,\xe2\x80\x9d\nSeabrook Foods, 568 F.2d at 1344.18 The stylization inquiry is properly conceived of as asking whether\n18 The parties dispute the scope of the \xe2\x80\x9crelevant market\xe2\x80\x9d\xe2\x80\x94specifically, whether the district court\ncorrectly considered use of a similar or identical star design beyond the self-storage service industry.\nAmazing Spaces contends that we should limit our analysis to the self-storage services industry, while\nMetro argues that we may take into account uses of star designs in a larger context. The second\nSeabrook Foods factor refers to uniqueness or unusualness \xe2\x80\x9cin a particular field,\xe2\x80\x9d 568 F.2d at 1344, and\nthe Second Circuit has stated that a stylized design may be protectable when it \xe2\x80\x9cis not commonplace\nbut rather unique or unusual in the relevant market,\xe2\x80\x9d Star Indus., 412 F.3d at 382. Similarly, the third\nfactor refers to whether a mark is commonly used as ornamentation for a \xe2\x80\x9cparticular class of goods.\xe2\x80\x9d\nSeabrook Foods, 568 F.2d at 1344. In contrast, the First Circuit, in considering whether a red heart on\nthe chest of a teddy bear was inherently distinctive, appeared to consider the broader use of red hearts\nin determining whether the use at issue was unique or unusual. See Wiley, 762 F.2d at 142 (\xe2\x80\x9c[T]he\nrecord contains so many examples of use of a red heart motif on teddy bears and other stuffed animals,\nnot to mention all manner of other toys and paraphernalia, that no reasonable argument on this point\ncan be made.\xe2\x80\x9d (emphasis added)). The rule in the RESTATEMENT asks whether, \xe2\x80\x9cbecause of the nature\nof the designation and the context in which it is used, prospective purchasers are likely to perceive it as\na designation that . . . identifies goods or services produced or sponsored by a particular person.\xe2\x80\x9d\nRESTATEMENT \xc2\xa7 13(a), at 104 (emphasis added). It further explains that\n\n[c]ommonplace symbols and designs are not inherently distinctive since their\nappearance on numerous products makes it unlikely that consumers will view them as\ndistinctive of the goods or services of a particular seller. Thus, unless the symbol or\ndesign is striking, unusual, or otherwise likely to differentiate the products of a particular\nproducer, the designation is not inherently distinctive.\n147\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\na particular symbol or design is stylized such that prospective purchasers of goods or services are\nlikely to differentiate it from other, similar symbols or designs.19 See Wiley, 762 F.2d at 142 (holding\nthat a red heart on a teddy bear \xe2\x80\x9ccarrie[d] no distinctive message of origin to the consumer . . . given\nthe heart shape\xe2\x80\x99s widespread use as decoration for any number of products put out by many different\ncompanies\xe2\x80\x9d); Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854, 858 (11th Cir. 1983) (holding that\na design consisting of a \xe2\x80\x9cV,\xe2\x80\x9d \xe2\x80\x9c7,\xe2\x80\x9d or arrow on athletic shoes was common ornamentation such that it\nwas not inherently distinctive); RESTATEMENT \xc2\xa7 13 cmt. d, at 107 (\xe2\x80\x9cThe manner in which a symbol or\ndesign is used is also relevant to the likelihood that it will be perceived as an indication of source. In\nsome instances a design is likely to be viewed as mere ornamentation rather than as a symbol of\nidentification.\xe2\x80\x9d). The record evidence is replete with similar or identical five-pointed stars, both raised\nand set in circles, and used in similar manners, such that\xe2\x80\x94notwithstanding the residual evidence of\nthe presumption of validity\xe2\x80\x94no reasonable jury could find that the Star Symbol is even a mere\nrefinement of this commonly adopted and well-known form of ornamentation.20 The Star Symbol is\nthus not \xe2\x80\x9c\xe2\x80\x98so unique, unusual or unexpected in this market that one can assume without proof that it\nwill automatically be perceived by customers as an indicator of origin\xe2\x80\x94a trademark,\xe2\x80\x99\xe2\x80\x9d I.P. Lund\nTrading, 163 F.3d at 40 (quoting 1 MCCARTHY ON TRADEMARKS \xc2\xa7 8:13, at 8\xe2\x80\x9358.5), and it \xe2\x80\x9cdoes not\nalmost automatically tell a customer that it refers to a brand . . . [or] immediately signal a brand or a\nId. \xc2\xa7 13 cmt. d, at 107. Finally, and most importantly, the Lanham Act defines \xe2\x80\x9cservice mark\xe2\x80\x9d as a mark\nused \xe2\x80\x9cto identify and distinguish the services of one person . . . from the services of others and to\nindicate the source of the services.\xe2\x80\x9d Lanham Act \xc2\xa7 45, 15 U.S.C. \xc2\xa7 1127. Because a mark must\ndistinguish one person\xe2\x80\x99s services from another, we agree that our inquiry is whether the Star Symbol\nidentifies and distinguishes Amazing Spaces\xe2\x80\x99s self-storage services from others\xe2\x80\x99 self-storage services.\nThis does not mean, however, that we must blind ourselves to uses beyond the self-storage services\nindustry: the fact that the same or a similar star is used in countless other ways certainly bears on\nwhether it is \xe2\x80\x9clikely that prospective purchasers will perceive [a given star design] as an indication of\nsource\xe2\x80\x9d within a particular industry because a \xe2\x80\x9c[c]ommonplace symbol[\xe2\x80\x98]s . . . appearance on numerous\nproducts makes it unlikely that consumers will view [it] as distinctive of the goods or services of a\nparticular seller.\xe2\x80\x9d RESTATEMENT \xc2\xa7 13 cmt. d, at 107.\nUnder this analysis, use by third parties of a design bears on whether the design is inherently\ndistinctive, not merely whether the design \xe2\x80\x9cis a \xe2\x80\x98strong\xe2\x80\x99 or a \xe2\x80\x98weak\xe2\x80\x99 [ ]mark.\xe2\x80\x9d Exxon Corp. v. Tex. Motor\nExchange of Houston, Inc., 628 F.2d 500, 504 (5th Cir. 1980); cf. Union Nat\xe2\x80\x99l Bank of Tex., Laredo, Tex.,\n909 F.2d at 848 n. 25 (noting that widespread industry use can render a mark not inherently\ndistinctive, but third-party use otherwise typically affects the issue of whether there is a likelihood of\nconfusion between marks).\n19\n\n20 This is what differentiates the Star Symbol from the examples of registered marks containing\nstars that Amazing Spaces cites to support the protectability of five-pointed stars. The Dallas Cowboys\nstar is stylized through the inclusion of a white border. The star in the Wal\xe2\x80\x93Mart registration is a plain,\nfive-pointed star, but the registered mark consists of more than just the star\xe2\x80\x94the mark is the words\n\xe2\x80\x9cWal\xe2\x80\x9d and \xe2\x80\x9cMart\xe2\x80\x9d on either side of the star. The LanChile Airlines star is set against a circle that is 50%\nfilled in, and it is adjacent to the words \xe2\x80\x9cLanChile Airlines.\xe2\x80\x9d Finally, the USA Truck mark is a complex\ndesign consisting of a white star within a blue circle, set against a white rectangle with blue borders\nand a red stripe running across the middle. Each of these marks contains elements distinguishing it\nfrom the commonplace stars in the record. See Union Nat\xe2\x80\x99l Bank of Tex., Laredo, Tex., 909 F.2d at 848 n.\n25 (noting that the appropriate inquiry is whether the mark as a whole is protectable, not whether its\ncomponent parts are individually protectable (citing Estate of P.D. Beckwith v. Comm\xe2\x80\x99r of Patents, 252\nU.S. 538, 40 S.Ct. 414, 64 L.Ed. 705 (1919))).\n\n148\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nproduct source,\xe2\x80\x9d Wal\xe2\x80\x93Mart Stores, 529 U.S. at 212, 120 S.Ct. 1339 (alterations and internal quotation\nmarks omitted). Because the Star Symbol does not, by \xe2\x80\x9c\xe2\x80\x98its intrinsic nature[,] serve[ ] to identify a\nparticular source,\xe2\x80\x99\xe2\x80\x9d id. at 210, it is not inherently distinctive, and it can be protected only upon a\nshowing of secondary meaning.\n{The court ultimately found that the star design lacked secondary meaning. It remanded the case,\nhowever, on the question, among others, of whether the overall appearance of Amazing Spaces\xe2\x80\x99\nfacilities, rather than simply the star design alone, was protectable trade dress.}\n______________________________________________________________________________\nFiji Water Co., LLC v. Fiji Mineral Water USA, LLC\n741 F.Supp.2d 1165, 1176-77 (C.D.Cal. 2010)\n{The essential facts are as follows: Plaintiff produced water bottled in Fiji under the mark FIJI and\nwith trade dress as defined and shown below. Defendant also produced water bottled in Fiji under the\nmark VITI and with trade dress as shown below. Plaintiff sued for trademark (and trade dress)\ninfringement and won a preliminary injunction. Excerpted here are the court\xe2\x80\x99s description of the\nplaintiff\xe2\x80\x99s trade dress and the court\xe2\x80\x99s analysis of the inherent distinctiveness of that trade dress.}\n\nCORMAC J. CARNEY, District Judge\n....\n[1] FIJI also alleges that the VITI product infringes the FIJI trade dress, which includes the\nfollowing elements: the use of a bottle with a dominantly square shape, with a recessed central body\nportion defined by the protruding shoulders and base portions of the bottle, a blue bottle cap, a\ntransparent outer front label with a pink accent in the lower right hand corner, a depiction of a blue\nbackground and palm tree fronds on the inside of the back label, a three-dimensional effect created by\nhaving a transparent label on the front panel of the bottle revealing the inner side of the back label, a\nrainwater drop on the front label, a statement on the front label stating \xe2\x80\x9cFrom the islands of\nFiji/Natural Artesian Water,\xe2\x80\x9d and prominent use of the four-letter, two-syllable word FIJI, in block\nwhite lettering with a metallic outline around the letters.\n....\n[2] The second element that FIJI must establish to succeed on the merits for its trade dress\ninfringement claim is that its trade dress is inherently distinctive or has acquired secondary meaning.\nPackaging such as the FIJI bottle shape and label design is inherently distinctive if \xe2\x80\x9c[its] intrinsic nature\nserves to identify a particular source.\xe2\x80\x9d Wal\xe2\x80\x93Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210,\n(2000); see also 1 McCarthy on Trademarks \xc2\xa7 8:12.50 (4th ed. 2010) (bottle is packaging). To\n149\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndetermine whether packaging is so \xe2\x80\x9cunique, unusual, or unexpected in this market that one can assume\nwithout proof that it will automatically be perceived by consumers as an indicator of origin,\xe2\x80\x9d the court\nmay look to {the Seabrook factors}. Seabrook Foods, Inc. v. Bar\xe2\x80\x93Well Foods Ltd., 568 F.2d 1342 (CPPA\n1977). See Wal\xe2\x80\x93Mart Stores, Inc., 529 U.S. at 210 (noting that the Abercrombie spectrum of\ndistinctiveness is properly applied to word marks); see also 1 McCarthy on Trademarks \xc2\xa7 8:13 (4th ed.\n2010) (commenting that Seabrook test is preferred for classifying inherently distinctive trade dress in\npackaging and containers); DCNL, Inc. v. Almar Sales Co., 47 U.S.P.Q.2d 1406, 1997 WL 913941\n(N.D.Cal.1997), aff\xe2\x80\x99d without opinion, 178 F.3d 1308 (9th Cir. 1998).\n[3] Although the square bottle and blue cap elements may be fairly common in the bottled water\nindustry, the stylized hibiscus, the palm fronds and the three-dimensional effect of the transparent\nfront label with palm fronds on the inside back label are not a common design. Contra Paddington Corp.\nv. Attiki Imps. & Distribs., Inc., 996 F.2d 577 (2d Cir. 1993) (giving examples of designs that are not\ninherently distinctive in certain markets, such as packaging lime soda in green cans or showing a\nshining car on a bottle of car wax). The stylized white block letters with metallic outline for the word\n\xe2\x80\x9cFIJI,\xe2\x80\x9d together with the tropical foliage using hues of blue and green and the raindrop invites\nconsumers to imagine fresh, clear water from a remote tropical island. Reviewing the 2008 Bottled\nWater Guide that FIJI submitted reveals no other brands that combine the elements of the square\nbottle, three-dimensional labeling effect, and tropical motif. FIJI has won international awards for print\nand packaging excellence and design innovation in the food packaging industry, which is strong\nevidence that its packaging is unique or unusual in the field and not simply a variation on existing\nbottled water designs. Finally, the transparent three-dimensional label distinguishes FIJI from the\nother brands, and makes the trade dress recognizable even apart from the block-letter word mark FIJI,\nas evidenced by some of the open-ended responses consumers gave in FIJI\xe2\x80\x99s consumer confusion\nsurvey. Based on this evidence, the Court concludes that FIJI\xe2\x80\x99s trade dress is inherently distinctive.\n______________________________________________________________________________\n\nIn re Frankish Enterprises Ltd.\n113 U.S.P.Q.2d 1964 (TTAB 2015)\n{You will recall that the applicant sought to register the above-pictured three-dimensional mark\nfor \xe2\x80\x9c[e]ntertainment services, namely, performing and competing in motor sports events in the nature\nof monster truck exhibitions.\xe2\x80\x9d Having concluded that the mark was capable of inherent distinctiveness\nas \xe2\x80\x9cakin to the packaging of\xe2\x80\x9d the applicant\xe2\x80\x99s monster truck services, the TTAB applied the Seabrook\nfactors as follows to find that the mark was inherently distinctive:\nHere, the evidence made of record by the Examining Attorney fails to show that\nApplicant\'s \xe2\x80\x9cfanciful, prehistoric animal\xe2\x80\x9d design is either a common or a basic shape or\ndesign. Rather, it is unique among the more than 100 monster trucks depicted in the\nExamining Attorney\xe2\x80\x99s image search results. To the extent that two of the monster trucks\namong those results have certain characteristics in common with Applicant\'s mark, they\n150\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nare nevertheless readily distinguishable from Applicant\'s unique design which includes\npeculiar horns, scales, a protective shield and other features which neither Swamp Thing\nnor the \xe2\x80\x9cRaptors\xe2\x80\x9d monster trucks share. Indeed, Applicant\'s monster truck is \xe2\x80\x9cunique\xe2\x80\x9d\nand \xe2\x80\x9cunusual\xe2\x80\x9d in the monster truck field. The Examining Attorney provided scant, if any,\nevidence that Applicant\'s truck is a \xe2\x80\x9cmere refinement\xe2\x80\x9d of anything, let alone a\n\xe2\x80\x9ccommonly-adopted\xe2\x80\x9d and \xe2\x80\x9cwell-known form\xe2\x80\x9d in the monster truck field. To the contrary,\nthe totality of the record makes clear that Applicant\'s truck stands alone in the quality\nand quantity of its distinctive traits which set it apart from the other monster trucks\nabout which the Examining Attorney submitted evidence, as the body of Applicant\'s truck\nis cut and molded to convey the body of a dinosaur and adorned with other dinosaur\nelements, including horns, a protective shield and eyes bordered by scales. These\nelements are unique and make Applicant\'s truck unlike any of those included in the\nExamining Attorney\'s search results.\nIn Re Frankish Enterprises Ltd., 113 U.S.P.Q.2d 1964, 2015 WL 1227728, at *5 (TTAB 2015).\n______________________________________________________________________________\nThough the Second Circuit apparently still subscribes to the use of Abercrombie in the analysis of\nthe inherent distinctiveness of non-configuration trade dress, consider whether Seabrook-like factors\ninform the Second Circuit\xe2\x80\x99s analysis in the Star Industries case below.\nStar Industries, Inc. v. Bacardi & Co. Ltd.\n412 F.3d 373 (2d Cir. 2005)\n{Star Industries, Inc. (\xe2\x80\x9cStar\xe2\x80\x9d) developed and registered the mark as shown and described below\nfor orange-flavored GEORGI vodka. Bacardi & Co. Ltd. (\xe2\x80\x9cBacardi\xe2\x80\x9d) then developed a similar mark for\norange flavored rum. Star brought suit. Excerpted below is the court\xe2\x80\x99s description of Star\xe2\x80\x99s mark and\nits analysis of the inherent distinctiveness of that mark. Note that, like the Seabrook plaintiff\xe2\x80\x99s claim\nthat the pointed loop alone was source distinctive, Star was claiming that the \xe2\x80\x9cO\xe2\x80\x9d alone was distinctive\nof source.}\n\nPOOLER, Circuit Judge\n....\n151\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[1] In June 1996, inspired by the success of flavored vodkas introduced by leading international\ncompanies such as Stolichnaya, Star\xe2\x80\x99s president decided to develop an orange-flavored Georgi vodka. A\nnew label was designed, consisting of the traditional Georgi label, which contains a coat of arms and a\nlogo consisting of stylized capital letters spelling \xe2\x80\x98Georgi\xe2\x80\x99 on a white background, together with three\nnew elements: an orange slice, the words \xe2\x80\x9corange flavored,\xe2\x80\x9d and a large elliptical letter \xe2\x80\x9cO\xe2\x80\x9d appearing\nbelow the \xe2\x80\x9cGeorgi\xe2\x80\x9d logo and surrounding all of the other elements. The \xe2\x80\x9cO\xe2\x80\x9d was rendered as a vertical\noval, with the outline of the \xe2\x80\x9cO\xe2\x80\x9d slightly wider along the sides (about one quarter inch thick) and\nnarrowing at the top and bottom (about one eighth inch thick); the outline of the \xe2\x80\x9cO\xe2\x80\x9d is colored orange\nand decorated with two thin gold lines, one bordering the inside and one bordering the outside of the\noutline. Star was apparently the first company to distribute an orange-flavored alcoholic beverage\npackaged in a bottle bearing a large elliptical orange letter \xe2\x80\x9cO.\xe2\x80\x9d\n....\n[2] The district court erred when it described the Star \xe2\x80\x9cO\xe2\x80\x9d as a basic geometric shape or letter, and\ntherefore rejected inherent distinctiveness and required a showing of secondary meaning. The Star \xe2\x80\x9cO\xe2\x80\x9d\nis not a \xe2\x80\x9ccommon basic shape\xe2\x80\x9d or letter, and the district court\xe2\x80\x99s holding to the contrary was premised\non a misunderstanding of this trademark law concept. Unshaded linear representations of common\nshapes or letters are referred to as \xe2\x80\x9cbasic.\xe2\x80\x9d They are not protectable as inherently distinctive, because\nto protect them as trademarks would be to deprive competitors of fundamental communicative\ndevices essential to the dissemination of information to consumers. However, stylized letters or shapes\nare not \xe2\x80\x9cbasic,\xe2\x80\x9d and are protectable when original within the relevant market. See Courtenay\nCommunications Corp. v. Hall, 334 F.3d 210, 215 n.32 (2d Cir. 2003) (distinguishing case of mark\nconsisting of word displayed with distinctive \xe2\x80\x9ctypeface, color, and other design elements,\xe2\x80\x9d which was\nprotectable, from cases holding generic words not protectable); compare W In re W.B. Roddenbery Co.,\n135 U.S.P.Q. 215, 216 (TTAB 1962) (holding design consisting of colored circle attached to differently\ncolored rectangle protectable as inherently distinctive) with In re Hillerich & Bradsby Co., 40 C.C.P.A.\n990, 204 F.2d 287, 288 (1953) (noting that applicant conceded that unshaded line oval was not\ninherently distinctive). Star\xe2\x80\x99s \xe2\x80\x9cO\xe2\x80\x9d is sufficiently stylized to be inherently distinctive and therefore\nprotectable as a trademark. It is stylized with respect to shading, border, and thickness, and each of\nthese design elements distinguishes it from the simple or basic shapes and letters that have been held\nunprotectable.\n[3] The Star \xe2\x80\x9cO\xe2\x80\x9d design had sufficient shape and color stylization to render it slightly more than a\nsimply linear representation of an ellipse or the letter \xe2\x80\x9cO.\xe2\x80\x9d It was, furthermore, a unique design in the\nalcoholic beverage industry at the time it was introduced. This suffices to establish its inherent\ndistinctiveness and thus its protectability. Furthermore, the Star \xe2\x80\x9cO\xe2\x80\x9d design is protectable separately\nfrom the other design elements on the Georgi orange-flavored vodka label precisely because the \xe2\x80\x9cO\xe2\x80\x9d\ndesign is itself inherently distinctive. See In re E.J. Brach & Sons, 45 C.C.P.A. 998, 256 F.2d 325, 327\n(1958); W.B. Roddenbery, 135 U.S.P.Q. at 216. However, the extent of stylization was marginal at best.\nThe outline of the \xe2\x80\x9cO,\xe2\x80\x9d though not uniform, is ordinary in its slightly varying width, and the interior and\nexterior borders are also ordinary. The result is a \xe2\x80\x9cthin\xe2\x80\x9d or weak mark, which will be entitled to only\nlimited protection. See Libman Co. v. Vining Indus., 69 F.3d 1360, 1363 (7th Cir. 1995).\n{The court went on to find no likelihood of confusion.}\nd.\n\nAnalyzing the Acquired Distinctiveness of Nonverbal Marks\n\nThe secondary meaning analysis of nonverbal marks is largely the same as that of verbal marks.\nCourts tend to use essentially the same factors and considerations for both. See, e.g., Herman Miller, Inc.\nv. Palazzetti Imports and Exports, Inc., 270 F.3d 298 (6th Cir. 2001) (reviewing seven factors to\ndetermine that Herman Miller had raised an issue of fact as to the secondary meaning of the design of\n152\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nits Eames chair); Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 43\xe2\x80\x9345, (1st Cir. 2001)\n(finding insufficient evidence of secondary meaning in plaintiff\xe2\x80\x99s label designs for scented candles).\nCourts may treat one factor differently, however, in the context of product configuration.\nEvidence that the defendant deliberately copied from the plaintiff may not carry as much weight when\nthe defendant copied product configuration. See, e.g., Kaufman & Fisher Wish Co. v. F.A.O. Schwarz, 184\nF. Supp. 2d 311, 319 (S.D.N.Y. 2001) (in case involving defendant\xe2\x80\x99s alleged trademark infringement of\nplaintiff\xe2\x80\x99s toy doll and packaging, stating that \xe2\x80\x9c[t]he probative value of evidence of intentional copying\nis particularly limited in cases involving product design, since \xe2\x80\x98the copier may very well be exploiting a\nparticularly desirable feature, rather than seeking to confuse consumers as to the source of the\nproduct.\xe2\x80\x99 Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431, 1453 (3d Cir. 1994)\xe2\x80\x9d).\nThe concept of \xe2\x80\x9climping trademarks\xe2\x80\x9d is also relevant to determining whether nonverbal marks\n(and indeed some verbal marks) have developed sufficient acquired distinctiveness to merit\nprotection. This concept comes to American trademark law from English trademark law, and in\nparticular from the opinion of Mr. Justice Jacobs (as he then was, before becoming a Lord Justice) in\nPhilips Elecs. BV v. Remington Consumer Prods., [1998] RPC 283 (U.K.). There, Philips had claimed\ntrademark rights in the mark PHILISHAVE and separate trademark rights in the particular configuration\nof the three rotating heads on its electric shaver. As to the latter, product configuration mark, Jacobs\nmemorably explained that the three-headed configuration \xe2\x80\x9chas never been used by Philips as the sole\nmeans of identification of trade source. It has never been trusted by Philips to do this job on its own, a\nmatter plainly relevant in considering acquired distinctiveness. It is at best a \xe2\x80\x98limping trade mark\xe2\x80\x99,\nneeding the crutch of \xe2\x80\x98Philishave\xe2\x80\x99 in use.\xe2\x80\x9d Id. at 290. In other words, standing on its own, the threeheaded configuration fails to indicate source; it only does so when appearing with the PHILISHAVE mark.\nFor more on the concept of limping marks, see Rebecca Tushnet, Registering Disagreement:\nRegistration in Modern American Trademark Law, 130 HARV. L. REV. 867, 922-25 (2017) (urging\nAmerican trademark law to recognize the phenomenon of limping marks).\nB.\n\nBars to Protection\n\nEven if a trademark is distinctive of source, it will still be denied protection if it falls within one of\nthe statutory bars established under Lanham Act \xc2\xa7 2, 15 U.S.C. \xc2\xa7 1052. We review the most important\nof these statutory bars here.\nIt is important to note that, strictly speaking, the \xc2\xa7 2 statutory bars are bars only to the\nregistration of a mark at the PTO. Recall however that the Lanham Act will protect both registered\nmarks under \xc2\xa7 32, 15 U.S.C. \xc2\xa7 1114, and unregistered marks under \xc2\xa7 43(a), 15 U.S.C. \xc2\xa7 1125(a). This\nframework raises a question that the law has not yet definitively answered: if a mark is refused\nregistration or its registration is cancelled under one of the statutory bars established in \xc2\xa7 2, can the\nuser of the mark nevertheless seek protection of the mark under \xc2\xa7 43(a)? For example, if a mark\nconsists of the flag of a foreign nation and thus is barred from registration under Lanham Act \xc2\xa7 2(b),\ncould the user of the mark nevertheless claim exclusive rights in the mark under \xc2\xa7 43(a)? Though\nscholarly opinion remains divided, the better view would appear to be that a mark unregistrable under\n\xc2\xa7 2 should be unprotectable under \xc2\xa7 43(a). See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768\n(1992) (\xe2\x80\x9c[I]t is common ground that \xc2\xa7 43(a) protects qualifying unregistered trademarks and that the\ngeneral principles qualifying a mark for registration under \xc2\xa7 2 of the Lanham Act are for the most part\napplicable in determining whether an unregistered mark is entitled to protection under \xc2\xa7 43(a).\xe2\x80\x9d);\nRenna v. Cnty. of Union, N.J., 88 F.Supp.3d 310, 319 (D.N.J. 2014) (\xe2\x80\x9cIt follows that such unregistrable\nmarks, not actionable as registered marks under Section 32, are not actionable under Section 43,\neither.\xe2\x80\x9d). Cf. Matal v. Tam, 582 U.S. __, 137 S.Ct. 1744, 1752 n. 1 (2017) (\xe2\x80\x9cWe need not decide today\nwhether respondent could bring suit under \xc2\xa7 43(a) if his application for federal registration had been\nlawfully denied under the disparagement clause.\xe2\x80\x9d).\n153\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nWe will not review the specifics of the registration process until Section II.D. However, in order to\ncomplete our picture of what marks qualify for protection, be they registered or unregistered, we will\nnecessarily review opinions in this section that involve questions of registration. Thus, the reader will\nneed to tolerate references to certain aspects of the registration process that will not become clear\nuntil Section II.D.\nLanham Act \xc2\xa7 2; 15 U.S.C. \xc2\xa7 1052\nNo trademark by which the goods of the applicant may be distinguished from the goods\nof others shall be refused registration on the principal register on account of its nature\nunless it\xe2\x80\x93\n(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which\nmay disparage1 or falsely suggest a connection with persons, living or dead, institutions,\nbeliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical\nindication which, when used on or in connection with wines or spirits, identifies a place\nother than the origin of the goods and is first used on or in connection with wines or\nspirits by the applicant on or after one year after the date on which the WTO Agreement\n(as defined in section 3501(9) of Title 19) enters into force with respect to the United\nStates.\n(b) Consists of or comprises the flag or coat of arms or other insignia of the United States,\nor of any State or municipality, or of any foreign nation, or any simulation thereof.\n(c) Consists of or comprises a name, portrait, or signature identifying a particular living\nindividual except by his written consent, or the name, signature, or portrait of a deceased\nPresident of the United States during the life of his widow, if any, except by the written\nconsent of the widow.\n(d) Consists of or comprises a mark which so resembles a mark registered in the Patent\nand Trademark Office, or a mark or trade name previously used in the United States by\nanother and not abandoned, as to be likely, when used on or in connection with the goods\nof the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if\nthe Director determines that confusion, mistake, or deception is not likely to result from\nthe continued use by more than one person of the same or similar marks under\nconditions and limitations as to the mode or place of use of the marks or the goods on or\nin connection with which such marks are used, concurrent registrations may be issued to\nsuch persons when they have become entitled to use such marks as a result of their\nconcurrent lawful use in commerce prior to (1) the earliest of the filing dates of the\napplications pending or of any registration issued under this chapter; (2) July 5, 1947, in\nthe case of registrations previously issued under the Act of March 3, 1881, or February\n20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the\ncase of applications filed under the Act of February 20, 1905, and registered after July 5,\n1947. Use prior to the filing date of any pending application or a registration shall not be\nrequired when the owner of such application or registration consents to the grant of a\nconcurrent registration to the applicant. Concurrent registrations may also be issued by\n{Note that the prohibition on the registration of marks that \xe2\x80\x9cmay disparage . . . persons\xe2\x80\x9d was\nheld to be invalid under the Free Speech Clause of the First Amendment in Matal v. Tam, 582 U.S. __,\n137 S.Ct. 1744 (2017) and the prohibition of the registration of marks that are \xe2\x80\x9cimmoral . . . or\nscandalous\xe2\x80\x9d was held to be invalid under the same constitutional provision in Iancu v. Brunetti, No. 18302, 2019 WL 2570622, __ U.S. __ (June 24, 2019)}.\n1\n\n154\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe Director when a court of competent jurisdiction has finally determined that more\nthan one person is entitled to use the same or similar marks in commerce. In issuing\nconcurrent registrations, the Director shall prescribe conditions and limitations as to the\nmode or place of use of the mark or the goods on or in connection with which such mark\nis registered to the respective persons.\n(e) Consists of a mark which (1) when used on or in connection with the goods of the\napplicant is merely descriptive or deceptively misdescriptive of them, (2) when used on\nor in connection with the goods of the applicant is primarily geographically descriptive of\nthem, except as indications of regional origin may be registrable under section 1054 of\nthis title, (3) when used on or in connection with the goods of the applicant is primarily\ngeographically deceptively misdescriptive of them, (4) is primarily merely a surname, or\n(5) comprises any matter that, as a whole, is functional.\n(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this\nsection, nothing in this chapter shall prevent the registration of a mark used by the\napplicant which has become distinctive of the applicant\xe2\x80\x99s goods in commerce. The\nDirector may accept as prima facie evidence that the mark has become distinctive, as\nused on or in connection with the applicant\xe2\x80\x99s goods in commerce, proof of substantially\nexclusive and continuous use thereof as a mark by the applicant in commerce for the five\nyears before the date on which the claim of distinctiveness is made. Nothing in this\nsection shall prevent the registration of a mark which, when used on or in connection\nwith the goods of the applicant, is primarily geographically deceptively misdescriptive of\nthem, and which became distinctive of the applicant\xe2\x80\x99s goods in commerce before\nDecember 8, 1993.\nA mark which would be likely to cause dilution by blurring or dilution by tarnishment\nunder section 1125(c) of this title, may be refused registration only pursuant to a\nproceeding brought under section 1063 of this title. A registration for a mark which\nwould be likely to cause dilution by blurring or dilution by tarnishment under section\n1125(c) of this title, may be canceled pursuant to a proceeding brought under either\nsection 1064 of this title or section 1092 of this title.\n1.\n\nFunctionality\n\nEven when a product (or packaging) feature is distinctive of source, trademark law will not\nprotect that product feature if it is \xe2\x80\x9cfunctional.\xe2\x80\x9d See Lanham Act \xc2\xa7 2(e)(5), 15 U.S.C. \xc2\xa7 1052(e)(5)\n(prohibiting the registration of any mark that \xe2\x80\x9ccomprises any matter that, as a whole, is functional\xe2\x80\x9d). Of\ncourse, all source-distinctive product features are functional in the lay sense that they function to\nindicate the source of the product to which they are attached or of which they form a part. In\ntrademark law, however, functionality is a term of art denoting a legal conclusion about the particular\nnature or degree of the product feature\xe2\x80\x99s technical or competitive importance. The opinions excerpted\nin this subsection cover both categories of functionality in U.S. trademark law: \xe2\x80\x9cutilitarian\nfunctionality\xe2\x80\x9d (or as some call it, \xe2\x80\x9cmechanical functionality\xe2\x80\x9d) and \xe2\x80\x9caesthetic functionality.\xe2\x80\x9d The name of\nthe first category may sound like a redundancy, and the name of the second, an oxymoron, yet the\nunderlying policy goals that inform utilitarian and aesthetic functionality doctrine show that the two\ncategories have much in common.\na.\n\nFoundational Cases\n\nThe following three opinions\xe2\x80\x94In re Morton-Norwich Products, Inc., 671 F.2d 1322 (CCPA 1982);\nInwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982); and TrafFix Devices, Inc. v. Marketing Displays,\nInc., 532 U.S. 23 (2001)\xe2\x80\x94provide the foundation for current functionality doctrine in the federal\ncourts. Morton-Norwich has given us the four \xe2\x80\x9cMorton-Norwich factors\xe2\x80\x9d that the Federal Circuit and\n155\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nconsequently the PTO and TTAB use to determine functionality. Inwood is the source of the famous (in\ntrademark circles) footnote number 10, which states that \xe2\x80\x9ca product feature is functional if it is\nessential to the use or purpose of the article or if it affects the cost or quality of the article.\xe2\x80\x9d Inwood,\n456 U.S. at 851 n. 10. By the time of the Supreme Court\xe2\x80\x99s TrafFix opinion in 2001, functionality doctrine\nhad increasingly come to rely on competition-oriented (and plaintiff-friendly) tests for functionality.\nTrafFix sought to return functionality doctrine to Inwood\xe2\x80\x99s \xe2\x80\x9ctraditional\xe2\x80\x9d definition of functionality. In\nthe next subsection, we will consider whether TrafFix has successfully done so. First, however, we\nmust gain a grounding in the foundational cases.\ni.\n\nIn re Morton-Norwich Product, Inc.\n\nIn reading In re Morton-Norwich Products, Inc., 671 F.2d 1322 (CCPA 1982), consider the\nfollowing questions:\n\xe2\x80\xa2\n\nWhen the Morton-Norwich opinion turns to the question of the functionality of the spray\nbottle design at issue, it appears to adopt several different definitions of \xe2\x80\x9cfunctionality\xe2\x80\x9d (e.g., a\nproduct feature is nonfunctional if competitor\xe2\x80\x99s have \xe2\x80\x9cno necessity to copy it\xe2\x80\x9d; a product\nfeature is nonfunctional where there is \xe2\x80\x9cno evidence that it was dictated\xe2\x80\x9d by the functions to\nbe performed by the product; a product feature is functional if the granting of exclusive rights\nin it \xe2\x80\x9cwill hinder competition\xe2\x80\x9d). Are these different approaches equivalent? Which are more\nplaintiff-friendly or defendant-friendly?\n\n\xe2\x80\xa2\n\nOf the various relevant factors that the Morton-Norwich court sets out to determine\nfunctionality, which do you expect have proven to be the most important?\n\nIn re Morton-Norwich Products, Inc.\n671 F.2d 1332 (CCPA 1982)\nRICH, Judge\n[1] This appeal is from the ex parte decision of the United States Patent and Trademark Office\n(PTO) Trademark Trial and Appeal Board (board), 209 USPQ 437 (TTAB 1980), in application serial\nNo. 123,548, filed April 21, 1977, sustaining the examiner\xe2\x80\x99s refusal to register appellant\xe2\x80\x99s container\nconfiguration on the principal register. We reverse the holding on \xe2\x80\x9cfunctionality\xe2\x80\x9d and remand for a\ndetermination of distinctiveness.\nBackground\n[2] Appellant\xe2\x80\x99s application seeks to register the following container configuration as a trademark\nfor spray starch, soil and stain removers, spray cleaners for household use, liquid household cleaners\nand general grease removers, and insecticides:\n\n[3] Appellant owns U.S. Design Patent 238,655, issued Feb. 3, 1976, on the above configuration,\nand U.S. Patent 3,749,290, issued July 31, 1973, directed to the mechanism in the spray top.\n[4] The above-named goods constitute a family of products which appellant sells under the wordmarks FANTASTIK, GLASS PLUS, SPRAY \xe2\x80\x98N WASH, GREASE RELIEF, WOOD PLUS, and MIRAKILL. Each\nof these items is marketed in a container of the same configuration but appellant varies the color of the\n156\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nbody of the container according to the product. Appellant manufactures its own containers and stated\nin its application (amendment of April 25, 1979) that:\nSince such first use (March 31, 1974) the applicant has enjoyed substantially exclusive\nand continuous use of the trademark (i.e., the container) which has become distinctive of\nthe applicant\xe2\x80\x99s goods in commerce.\n[5] The PTO Trademark Attorney (examiner), through a series of four office actions, maintained\nan unshakable position that the design sought to be registered as a trademark is not distinctive, that\nthere is no evidence that it has become distinctive or has acquired a secondary meaning, that it is\n\xe2\x80\x9cmerely functional,\xe2\x80\x9d \xe2\x80\x9cessentially utilitarian,\xe2\x80\x9d and non-arbitrary, wherefore it cannot function as a\ntrademark. In the second action she requested applicant to \xe2\x80\x9camplify the description of the mark with\nsuch particularity that any portion of the alleged mark considered to be non functional (sic) is\nincorporated in the description.\xe2\x80\x9d (Emphasis ours.) She said, \xe2\x80\x9cThe Examiner sees none.\xe2\x80\x9d Having already\nfurnished two affidavits to the effect that consumers spontaneously associate the package design with\nappellant\xe2\x80\x99s products, which had been sold in the container to the number of 132,502,000 by 1978,\nappellant responded to the examiner\xe2\x80\x99s request by pointing out, in effect, that it is the overall\nconfiguration of the container rather than any particular feature of it which is distinctive and that it\nwas intentionally designed to be so, supplying several pieces of evidence showing several other\ncontainers of different appearance which perform the same functions. Appellant also produced the\nresults of a survey conducted by an independent market research firm which had been made in\nresponse to the examiner\xe2\x80\x99s demand for evidence of distinctiveness. The examiner dismissed all of the\nevidence as \xe2\x80\x9cnot persuasive\xe2\x80\x9d and commented that there had \xe2\x80\x9cstill not been one iota of evidence offered\nthat the subject matter of this application has been promoted as a trademark,\xe2\x80\x9d which she seemed to\nconsider a necessary element of proof. She adhered to her view that the design \xe2\x80\x9cis no more than a nondistinctive purely functional container for the goods plus a purely functional spray trigger controlled\nclosure * * * essentially utilitarian and non-arbitrary * * *.\xe2\x80\x9d\n[6] Appellant responded to the final rejection with a simultaneously filed notice of appeal to the\nboard and a request for reconsideration, submitting more exhibits in support of its position that its\ncontainer design was not \xe2\x80\x9cpurely functional.\xe2\x80\x9d The examiner held fast to all of her views and forwarded\nthe appeal, repeating the substance of her rejections in her Answer to appellant\xe2\x80\x99s appeal brief. An oral\nhearing was held before the board.\nBoard Opinion\n[7] The board, citing three cases, stated it to be \xe2\x80\x9cwell-settled\xe2\x80\x9d that the configuration of a container\n\xe2\x80\x9cmay be registrable for the particular contents thereof if the shape is non-functional in character, and\nis, in fact, inherently distinctive, or has acquired secondary meaning as an indication of origin for such\ngoods.\xe2\x80\x9d In discussing the \xe2\x80\x9cutilitarian nature\xe2\x80\x9d of the alleged trademark, the board took note of\nphotographs of appellant\xe2\x80\x99s containers for FANTASTIK spray cleaner and GREASE RELIEF degreaser,\nthe labels of which bore the words, respectively, \xe2\x80\x9cadjustable easy sprayer,\xe2\x80\x9d and \xe2\x80\x9cNEW! Trigger Control\nTop,\xe2\x80\x9d commenting that \xe2\x80\x9cthe advertising pertaining to applicant\xe2\x80\x99s goods promotes the word marks of\nthe various products and the desirable functional features of the containers.\xe2\x80\x9d\n[8] In light of the above, and after detailed review of appellant\xe2\x80\x99s survey evidence without any\nspecific comment on it, the board concluded its opinion as follows:\nAfter a careful review of the evidence in the case before us, we cannot escape the\nconclusion that the container for applicant\xe2\x80\x99s products, the configuration of which it seeks\nto register, is dictated primarily by functional (utilitarian) considerations, and is therefore\nunregistrable despite any de facto secondary meaning which applicant\xe2\x80\x99s survey and other\nevidence of record might indicate. As stated in the case of In re Deister Concentrator\nCompany, Inc. (48 CCPA 952, 289 F.2d 496, 129 USPQ 314 (1961), \xe2\x80\x9cnot every word or\n157\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nconfiguration that has a de facto secondary meaning is protected as a trademark.\xe2\x80\x9d\n(Emphasis ours.)\nIssues\n[9] The parties do not see the issues in the same light. Appellant and the solicitor agree that the\nprimary issue before us is whether the subject matter sought to be registered\xe2\x80\x94the configuration of the\ncontainer\xe2\x80\x94is \xe2\x80\x9cfunctional.\xe2\x80\x9d\n[10] Appellant states a second issue to be whether the configuration has the capacity to and does\ndistinguish its goods in the marketplace from the goods of others.\n[11] The solicitor contends that it would be \xe2\x80\x9cpremature\xe2\x80\x9d for us to decide the second issue if we\ndisagree with the PTO on the first issue and have to reach it, and that we should, in that event, remand\nthe case so the board can \xe2\x80\x9cconsider\xe2\x80\x9d it. Whether to remand is, therefore, an issue.\nOPINION\n[12] A trademark is defined as \xe2\x80\x9cany word, name, symbol, or device or any combination thereof\nadopted and used by a manufacturer or merchant to identify his goods and distinguish them from\nthose manufactured or sold by others\xe2\x80\x9d (emphasis ours). 15 U.S.C. s 1127 (1976). Thus, it was long the\nrule that a trademark must be something other than, and separate from, the merchandise to which it is\napplied. Davis v. Davis, 27 F. 490, 492 (D.Mass.1886) . . . .\n[13] Aside from the trademark/product \xe2\x80\x9cseparateness\xe2\x80\x9d rationale for not recognizing the bare\ndesign of an article or its container as a trademark, it was theorized that all such designs would soon\nbe appropriated, leaving nothing for use by would-be competitors. One court, for example, feared that\n\xe2\x80\x9cThe forms and materials of packages to contain articles of merchandise * * * would be rapidly taken\nup and appropriated by dealers, until someone, bolder than the others, might go to the very root of\nthings, and claim for his goods the primitive brown paper and tow string, as a peculiar property.\xe2\x80\x9d\nHarrington v. Libby, 11 F.Cas. 605, 606 (C.C.S.D.N.Y.1877) (No. 6,107). Accord, Diamond Match Co. v.\nSaginaw Match Co., 142 F. 727, 729-30 (6th Cir. 1906).\n[14] This limitation of permissible trademark subject matter later gave way to assertions that one\nor more features of a product or package design could legally function as a trademark. E.g., Alan Wood\nSteel Co. v. Watson, 150 F.Supp. 861, 863 (D.D.C.1957); Capewell Horse Nail Co. v. Mooney, supra. It\nwas eventually held that the entire design of an article (or its container) could, without other means of\nidentification, function to identify the source of the article and be protected as a trademark. E.g., In re\nMinnesota Mining and Manufacturing Co., 335 F.2d 836, 837, 142 USPQ 366, 367 (1964).\n[15] That protection was limited, however, to those designs of articles and containers, or features\nthereof, which were \xe2\x80\x9cnonfunctional.\xe2\x80\x9d . . . . This requirement of \xe2\x80\x9cnonfunctionality\xe2\x80\x9d is not mandated by\nstatute, but \xe2\x80\x9cis deduced entirely from court decisions.\xe2\x80\x9d In re Mogen David Wine Corp., 328 F.2d 925,\n932 (1964) (Rich, J., concurring).* It has as its genesis the judicial theory that there exists a\nfundamental right to compete through imitation of a competitor\xe2\x80\x99s product, which right can only be\ntemporarily denied by the patent or copyright laws:\nIf one manufacturer should make an advance in effectiveness of operation, or in\nsimplicity of form, or in utility of color; and if that advance did not entitle him to a\nmonopoly by means of a machine or process or a product or a design patent; and if by\nmeans of unfair trade suits he could shut out other manufacturers who plainly intended\nto share in the benefits of unpatented utilities * * * he would be given gratuitously a\n{Note that the Lanham Act has since been amended explicitly to exclude functional marks from\nprotection. See Pub. L. No. 105-330 (1998) (amending Section 2(e)(5), 15 U.S.C. \xc2\xa7 1152(e)(5)).}\n*\n\n158\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmonopoly more effective than that of the unobtainable patent in the ratio of eternity to\nseventeen years. (Pope Automatic Merchandising Co. v. McCrum-Howell Co., 191 F. 979,\n981-82 (7th Cir. 1911).)\n....\n[16] An exception to the right to copy exists, however, where the product or package design\nunder consideration is \xe2\x80\x9cnonfunctional\xe2\x80\x9d and serves to identify its manufacturer or seller, and the\nexception exists even though the design is not temporarily protectible through acquisition of patent or\ncopyright. Thus, when a design is \xe2\x80\x9cnonfunctional,\xe2\x80\x9d the right to compete through imitation gives way,\npresumably upon balance of that right with the originator\xe2\x80\x99s right to prevent others from infringing\nupon an established symbol of trade identification.\n[17] This preliminary discussion leads to the heart of the matter\xe2\x80\x94how do we define the concept\nof \xe2\x80\x9cfunctionality,\xe2\x80\x9d and what role does the above balancing of interests play in that definitional process?\nI. Functionality Defined\n[18] Many courts speak of the protectability as trademarks of product and package configurations\nin terms of whether a particular design is \xe2\x80\x9cfunctional\xe2\x80\x9d or \xe2\x80\x9cnonfunctional.\xe2\x80\x9d Without proper definition,\nhowever, such a distinction is useless for determining whether such design is registrable or\nprotectable as a trademark, for the label \xe2\x80\x9cfunctional\xe2\x80\x9d has dual significance. It has been used, on the one\nhand, in lay fashion to indicate \xe2\x80\x9cthe normal or characteristic action of anything,\xe2\x80\x9d and, on the other\nhand, it has been used to denote a legal conclusion. Compare, In re Penthouse International Ltd., 565\nF.2d 679, 681 (CCPA 1977) (If the product configuration \xe2\x80\x9chas a non-trademark function, the inquiry is\nnot at an end; possession of a function and of a capability of indicating origin are not in every case\nmutually exclusive.\xe2\x80\x9d), with In re Mogen David Wine Corp., 328 F.2d at 933 (Rich, J., concurring) (\xe2\x80\x9cThe\nRestatement appears to use the terms \xe2\x80\x98functional\xe2\x80\x99 and \xe2\x80\x98nonfunctional\xe2\x80\x99 as labels to denote the legal\nconsequence: if the former, the public may copy; and if the latter, it may not. This is the way the \xe2\x80\x98law\xe2\x80\x99\nhas been but it is not of much help in deciding cases.\xe2\x80\x9d).\n[19] Accordingly, it has been noted that one of the \xe2\x80\x9cdistinct questions\xe2\x80\x9d involved in \xe2\x80\x9cfunctionality\xe2\x80\x9d\nreasoning is, \xe2\x80\x9cIn what way is (the) subject matter functional or utilitarian, factually or legally?\xe2\x80\x9d In re\nHoneywell, Inc., 497 F.2d 1344, 1350 (CCPA 1974) (Rich, J., concurring). This definitional division . . .\nleads to the resolution that if the designation \xe2\x80\x9cfunctional\xe2\x80\x9d is to be utilized to denote the legal\nconsequence, we must speak in terms of de facto functionality and de jure functionality, the former\nbeing the use of \xe2\x80\x9cfunctional\xe2\x80\x9d in the lay sense, indicating that although the design of a product, a\ncontainer, or a feature of either is directed to performance of a function, it may be legally recognized as\nan indication of source. De jure functionality, of course, would be used to indicate the opposite\xe2\x80\x94such a\ndesign may not be protected as a trademark.\n[20] This is only the beginning, however, for further definition is required to explain how a\ndetermination of whether a design is de jure functional is to be approached. We start with an inquiry\ninto \xe2\x80\x9cutility.\xe2\x80\x9d\n\n159\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nA. \xe2\x80\x9cFunctional\xe2\x80\x9d means \xe2\x80\x9cutilitarian\xe2\x80\x9d1\n[21] From the earliest cases, \xe2\x80\x9cfunctionality\xe2\x80\x9d has been expressed in terms of \xe2\x80\x9cutility.\xe2\x80\x9d In 1930, this\ncourt stated it to be \xe2\x80\x9cwell settled that the configuration of an article having utility is not the subject of\ntrade-mark protection.\xe2\x80\x9d (Emphasis ours.) In re Dennison Mfg. Co., 39 F.2d 720 (1930) (Arbitrary urn or\nvase-like shape of reinforcing patch on a tag.). Accord, Sparklets Corp. v. Walter Kidde Sales Co., 104\nF.2d 396, 399 (1939); In re National Stone-Tile Corp., 57 F.2d 382, 383 (1932). This broad statement of\nthe \xe2\x80\x9claw\xe2\x80\x9d, that the design of an article \xe2\x80\x9chaving utility\xe2\x80\x9d cannot be a trademark, is incorrect and\ninconsistent with later pronouncements.\n[22] We wish to make it clear . . . that a discussion of \xe2\x80\x9cfunctionality\xe2\x80\x9d is always in reference to the\ndesign of the thing under consideration (in the sense of its appearance) and not the thing itself . . . .\n[23] Most designs . . . result in the production of articles, containers, or features thereof which are\nindeed utilitarian, and examination into the possibility of trademark protection is not to the mere\nexistence of utility, but to the degree of design utility. . . . The configuration of a thermostat cover was\n. . . refused registration because a round cover was \xe2\x80\x9cprobably * * * the most utilitarian\xe2\x80\x9d design which\ncould have been selected for a round mechanism. In re Honeywell, Inc., 532 F.2d 180, 182 (CCPA\n1976).\n[24] Thus, it is the \xe2\x80\x9cutilitarian\xe2\x80\x9d design of a \xe2\x80\x9cutilitarian\xe2\x80\x9d object with which we are concerned, and\nthe manner of use of the term \xe2\x80\x9cutilitarian\xe2\x80\x9d must be examined at each occurrence. The latter occurrence\nis, of course, consistent with the lay meaning of the term. But the former is being used to denote a legal\nconsequence (it being synonymous with \xe2\x80\x9cfunctional\xe2\x80\x9d), and it therefore requires further explication.\nB. \xe2\x80\x9cUtilitarian\xe2\x80\x9d means \xe2\x80\x9csuperior in function (de facto) or economy of manufacture,\xe2\x80\x9d which \xe2\x80\x9csuperiority\xe2\x80\x9d\nis determined in light of competitive necessity to copy\n[25] Some courts have stated this proposition in the negative. In American-Marietta Co. v.\nKrigsman, 275 F.2d 287, 289 (2d Cir. 1960), the court stated that \xe2\x80\x9cthose features of the original goods\nthat are not in any way essential to their use\xe2\x80\x9d may be termed \xe2\x80\x9cnonfunctional.\xe2\x80\x9d But what does this\nstatement mean? In the case at bar, for example, we cannot say that it means that the subject design is\n\xe2\x80\x9cfunctional\xe2\x80\x9d merely because a hollow body, a handhold, and a pump sprayer are \xe2\x80\x9cessential to its use.\xe2\x80\x9d\nWhat this phrase must mean is not that the generic parts of the article or package are essential, but, as\nnoted above, that the particular design of the whole assembly of those parts must be essential. This, of\ncourse, leaves us to define \xe2\x80\x9cessential to its use,\xe2\x80\x9d which is also the starting place for those courts which\nhave set forth in positive fashion the reasons they believe that some product or package designs are\nnot protectible as trademarks and thus not registrable.\n....\n[26] Thus, it is clear that courts in the past have considered the public policy involved in this area\nof the law as, not the right to slavishly copy articles which are not protected by patent or copyright, but\nIt is well known that the law of \xe2\x80\x9cfunctionality\xe2\x80\x9d has been applied in both a \xe2\x80\x9cutilitarian\xe2\x80\x9d sense and\nin terms of \xe2\x80\x9caesthetics.\xe2\x80\x9d See e.g., Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769 (9th Cir.\n1981); International Order of Job\xe2\x80\x99s Daughters v. Lindeburg and Co., 633 F.2d 912 (9th Cir. 1980);\nFamolare, Inc. v. Melville Corp., 472 F.Supp. 738 (D.Hawaii 1979). Recognition of this provides an\nexplanation for the statement that, \xe2\x80\x9cthe term \xe2\x80\x98functional\xe2\x80\x99 is not to be treated as synonymous with the\nliteral significance of the term \xe2\x80\x98utilitarian\xe2\x80\x99.\xe2\x80\x9d J.C. Penney Co. v. H.D. Lee Mercantile Co., 120 F.2d 949, 954\n(8th Cir. 1941). It will be so treated, however, where the issue is one of \xe2\x80\x9cutilitarian functionality\xe2\x80\x9d and\nnot \xe2\x80\x9caesthetic functionality.\xe2\x80\x9d The PTO does not argue in this case that appellant\xe2\x80\x99s container\nconfiguration is aesthetically functional, notwithstanding appellant\xe2\x80\x99s argument that its design was\nadopted, in part, for aesthetic reasons.\n1\n\n160\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe need to copy those articles, which is more properly termed the right to compete effectively. Even\nthe earliest cases, which discussed protectability in terms of exhaustion of possible packaging forms,\nrecognized that the real issue was whether \xe2\x80\x9cthe effect would be to gradually throttle trade.\xe2\x80\x9d Harrington\nv. Libby, supra at 606.\n[27] More recent cases also discuss \xe2\x80\x9cfunctionality\xe2\x80\x9d in light of competition. One court noted that\nthe \xe2\x80\x9cquestion in each case is whether protection against imitation will hinder the competitor in\ncompetition.\xe2\x80\x9d Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210, 1218 (8th Cir. 1976).\nAnother court, upon suit for trademark infringement (the alleged trademark being plaintiff\xe2\x80\x99s building\ndesign), stated that \xe2\x80\x9cenjoining others from using the building design (would not) inhibit competition in\nany way.\xe2\x80\x9d Fotomat Corp. v. Cochran, 437 F.Supp. 1231, 1235 (D.Kan.1977). This court has also\nreferenced \xe2\x80\x9chinderance of competition\xe2\x80\x9d in a number of the \xe2\x80\x9cfunctionality\xe2\x80\x9d cases which have been\nargued before it. E.g., In re Penthouse International Ltd., 565 F.2d supra at 682 (Would protection of\nthe design \xe2\x80\x9chinder competition\xe2\x80\x9d?); In re Mogen David Wine Corp., 328 F.2d at 933 (Rich, J., concurring,\ncited with approval in Penthouse International, supra, stated that, \xe2\x80\x9cWhether competition would in fact\nbe hindered is really the crux of the matter.\xe2\x80\x9d).\n[28] The Restatement of Torts, s 742, designates a design of goods as \xe2\x80\x9cfunctional\xe2\x80\x9d if it \xe2\x80\x9caffects\ntheir purpose, action or performance, or the facility or economy of processing, handling or using them\n* * *.\xe2\x80\x9d (Emphasis ours.) To ensure that use of the word \xe2\x80\x9caffects\xe2\x80\x9d was clear, Comment a to that section\nindicates that a \xe2\x80\x9cfeature\xe2\x80\x9d may be found \xe2\x80\x9cfunctional\xe2\x80\x9d if it \xe2\x80\x9ccontributes to\xe2\x80\x9d the utility, durability,\neffectiveness or ease of use, or the efficiency or economy of manufacture of that \xe2\x80\x9cfeature.\xe2\x80\x9d Excusing the\nfact that the design of the \xe2\x80\x9cfeature\xe2\x80\x9d is not referenced, and equating \xe2\x80\x9cfeature\xe2\x80\x9d with \xe2\x80\x9cdesign,\xe2\x80\x9d this seems\nto take us back to where we started\xe2\x80\x94with those cases that deny trademark protection to those articles\n\xe2\x80\x9chaving utility.\xe2\x80\x9d Further, it appears to us that \xe2\x80\x9caffects\xe2\x80\x9d and \xe2\x80\x9ccontributes to\xe2\x80\x9d are both so broad as to be\nmeaningless, for every design \xe2\x80\x9caffects\xe2\x80\x9d or \xe2\x80\x9ccontributes to\xe2\x80\x9d the utility of the article in which it is\nembodied. \xe2\x80\x9cAffects\xe2\x80\x9d is broad enough to include a design which reduces the utility or the economy of\nmanufacture.\n....\n[29] Although the Restatement appears to ignore the policies which created the law of\n\xe2\x80\x9cfunctionality,\xe2\x80\x9d it is noted at the end of the first paragraph of Comment a to s 742, in accord with the\ncases previously discussed, that we should examine whether prohibition of imitation by others will\n\xe2\x80\x9cdeprive them of something which will substantially hinder them in competition.\xe2\x80\x9d\nII. Determining \xe2\x80\x9cFunctionality\xe2\x80\x9d\nA. In general\n[30] Keeping in mind, as shown by the foregoing review, that \xe2\x80\x9cfunctionality\xe2\x80\x9d is determined in light\nof \xe2\x80\x9cutility,\xe2\x80\x9d which is determined in light of \xe2\x80\x9csuperiority of design,\xe2\x80\x9d and rests upon the foundation\n\xe2\x80\x9cessential to effective competition,\xe2\x80\x9d Ives Laboratories, Inc. v. Darby Drug Co., 601 F.2d 631, 643 (2d Cir.\n1979), and cases cited supra, there exist a number of factors, both positive and negative, which aid in\nthat determination.\n[31] Previous opinions of this court have discussed what evidence is useful to demonstrate that a\nparticular design is \xe2\x80\x9csuperior.\xe2\x80\x9d In In re Shenango Ceramics, Inc., 53 CCPA 1268, 1273, 362 F.2d 287,\n291 (1966), the court noted that the existence of an expired utility patent which disclosed the\nutilitarian advantage of the design sought to be registered as a trademark was evidence that it was\n\xe2\x80\x9cfunctional.\xe2\x80\x9d Accord, Best Lock Corp. v. Schlage Lock Co., 413 F.2d at 1199; Mine Safety Appliances Co.\nv. Storage Battery Co., 405 F.2d 901, 902 (1969); In re Deister Concentrator Co., 289 F.2d at 501;\nDaniel v. Electric Hose & Rubber Co., 231 F. 827, 833 (3d Cir. 1916). It may also be significant that the\noriginator of the design touts its utilitarian advantages through advertising. Shenango, supra; Deister,\nsupra; Mine Safety Appliances, supra; In re Pollak Steel Co., 314 F.2d 566, 567 (1963).\n161\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[32] Since the effect upon competition \xe2\x80\x9cis really the crux of the matter,\xe2\x80\x9d it is, of course, significant\nthat there are other alternatives available. Nims, Unfair Competition and Trade-Marks at 377;\ncompare, Time Mechanisms, Inc. v. Qonaar Corp., 422 F.Supp. 905, 913 (D.N.J.1976) (\xe2\x80\x9cthe parking\nmeter mechanism can be contained by housings of many different configurations\xe2\x80\x9d) and In re World\xe2\x80\x99s\nFinest Chocolate, Inc., 474 F.2d 1012, 1014 (CCPA 1973) (\xe2\x80\x9cWe think competitors can readily meet the\ndemand for packaged candy bars by use of other packaging styles, and we find no utilitarian\nadvantages flowing from this package design as opposed to others as was found in the rhomboidallyshaped deck involved in Deister.\xe2\x80\x9d) and In re Mogen David Wine Corp., 328 F.2d at 933 (Rich, J.,\nconcurring. \xe2\x80\x9cOthers can meet any real or imagined demand for wine in decanter-type bottles\xe2\x80\x94\nassuming there is any such thing\xe2\x80\x94without being in the least hampered in competition by inability to\ncopy the Mogen David bottle design.\xe2\x80\x9d) and In re Minnesota Mining and Mfg. Co., 335 F.2d at 840 (It was\nnoted to be an undisputed fact of record that the article whose design was sought to be registered\n\xe2\x80\x9ccould be formed into almost any shape.\xe2\x80\x9d) and Fotomat Corp. v. Cochran, 437 F.Supp. supra at 1235\n(The court noted that the design of plaintiff\xe2\x80\x99s building functioned \xe2\x80\x9cno better than a myriad of other\nbuilding designs.\xe2\x80\x9d) with In re Honeywell, Inc., 532 F.2d at 182 (A portion of the board opinion which\nthe court adopted noted that there \xe2\x80\x9care only so many basic shapes in which a thermostat or its cover\ncan be made,\xe2\x80\x9d but then concluded that, \xe2\x80\x9cThe fact that thermostat covers may be produced in other\nforms or shapes does not and cannot detract from the functional character of the configuration here\ninvolved.\xe2\x80\x9d).\n[33] It is also significant that a particular design results from a comparatively simple or cheap\nmethod of manufacturing the article. In Schwinn Bicycle Co. v. Murray Ohio Mfg. Co., 339 F.Supp. 973,\n980 (M.D.Tenn.1971), aff\xe2\x80\x99d, 470 F.2d 975 (6th Cir. 1972), the court stated its reason for refusing to\nrecognize the plaintiff\xe2\x80\x99s bicycle rim surface design as a trademark:\nThe evidence is uncontradicted that the various manufacturers of bicycle rims in the\nUnited States consider it commercially necessary to mask, hide or camouflage the\nroughened and charred appearance resulting from welding the tubular rim sections\ntogether. The evidence represented indicates that the only other process used by bicycle\nrim manufacturers in the United States is the more complex and more expensive process\nof grinding and polishing.\nAccord, In re Pollak Steel Co., 314 F.2d at 570; Luminous Unit Co. v. R. Williamson & Co., supra at 269.\nB. The case at bar\n1. The evidence of functionality\n[34] We come now to the task of applying to the facts of this case the distilled essence of the body\nof law on \xe2\x80\x9cfunctionality\xe2\x80\x9d above discussed. The question is whether appellant\xe2\x80\x99s plastic spray bottle is de\njure functional; is it the best or one of a few superior designs available? We hold, on the basis of the\nevidence before the board, that it is not.\n[35] The board thought otherwise but did not state a single supporting reason. In spite of her\nstrong convictions about it, neither did the examiner. Each expressed mere opinions and it is not clear\nto us what either had in mind in using the terms \xe2\x80\x9cfunctional\xe2\x80\x9d and \xe2\x80\x9cutilitarian.\xe2\x80\x9d Of course, the spray\nbottle is highly useful and performs its intended functions in an admirable way, but that is not enough\nto render the design of the spray bottle\xe2\x80\x94which is all that matters here\xe2\x80\x94functional.\n[36] As the examiner appreciated, the spray bottle consists of two major parts, a bottle and a\ntrigger-operated, spray-producing pump mechanism which also serves as a closure. We shall call the\nlatter the spray top. In the first place, a molded plastic bottle can have an infinite variety of forms or\ndesigns and still function to hold liquid. No one form is necessary or appears to be \xe2\x80\x9csuperior.\xe2\x80\x9d Many\nbottles have necks, to be grasped for pouring or holding, and the necks likewise can be in a variety of\nforms. The PTO has not produced one iota of evidence to show that the shape of appellant\xe2\x80\x99s bottle was\n162\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nrequired to be as it is for any de facto functional reason, which might lead to an affirmative\ndetermination of de jure functionality. The evidence, consisting of competitor\xe2\x80\x99s molded plastic bottles\nfor similar products, demonstrates that the same functions can be performed by a variety of other\nshapes with no sacrifice of any functional advantage. There is no necessity to copy appellant\xe2\x80\x99s trade\ndress to enjoy any of the functions of a spray-top container.\n[37] As to the appearance of the spray top, the evidence of record shows that it too can take a\nnumber of diverse forms, all of which are equally suitable as housings for the pump and spray\nmechanisms. Appellant acquired a patent on the pump mechanism (No. 3,749,290) the drawings of\nwhich show it embodied in a structure which bears not the slightest resemblance to the appearance of\nappellant\xe2\x80\x99s spray top. The pictures of the competition\xe2\x80\x99s spray bottles further illustrate that no\nparticular housing design is necessary to have a pump-type sprayer. Appellant\xe2\x80\x99s spray top, seen from\nthe side, is rhomboidal, roughly speaking, a design which bears no relation to the shape of the pump\nmechanism housed within it and is an arbitrary decoration\xe2\x80\x94no more de jure functional than is the\ngrille of an automobile with respect to its under-the-hood power plant. The evidence shows that even\nthe shapes of pump triggers can and do vary while performing the same function.\n[38] What is sought to be registered, however, is no single design feature or component but the\noverall composite design comprising both bottle and spray top. While that design must be\naccommodated to the functions performed, we see no evidence that it was dictated by them and\nresulted in a functionally or economically superior design of such a container.\n[39] Applying the legal principles discussed above, we do not see that allowing appellant to\nexclude others (upon proof of distinctiveness) from using this trade dress will hinder competition or\nimpinge upon the rights of others to compete effectively in the sale of the goods named in the\napplication, even to the extent of marketing them in functionally identical spray containers. The fact is\nthat many others are doing so. Competitors have apparently had no need to simulate appellant\xe2\x80\x99s trade\ndress, in whole or in part, in order to enjoy all of the functional aspects of a spray top container. Upon\nexpiration of any patent protection appellant may now be enjoying on its spray and pump mechanism,\ncompetitors may even copy and enjoy all of its functions without copying the external appearance of\nappellant\xe2\x80\x99s spray top.3\n[40] If the functions of appellant\xe2\x80\x99s bottle can be performed equally well by containers of\ninnumerable designs and, thus, no one is injured in competition, why did the board state that\nappellant\xe2\x80\x99s design is functional and for that reason not registrable?\n{The Court went on to remand the application for a determination of distinctiveness.}\nComments and Questions\n1.\n\nThe TMEP has summarized the Morton-Norwich factors as follows:\n\nA determination of functionality normally involves consideration of one or more of the\nfollowing factors, commonly known as the \xe2\x80\x9cMorton-Norwich factors\xe2\x80\x9d:\n(1) the existence of a utility patent that discloses the utilitarian advantages of the\ndesign sought to be registered;\n(2) advertising by the applicant that touts the utilitarian advantages of the design;\n\nIt is interesting to note that appellant also owns design patent 238,655 for the design in issue,\nwhich, at least presumptively, indicates that the design is not de jure functional. See In re Schilling, 421\nF.2d 747, 750, 164 USPQ 576, 578 (CCPA 1970); In re Garbo, 48 CCPA 845, 848, 287 F.2d 192, 193-94,\n129 USPQ 72, 73 (1961).\n3\n\n163\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n(3) facts pertaining to the availability of alternative designs; and\n(4) facts pertaining to whether the design results from a comparatively simple or\ninexpensive method of manufacture.\nTMEP \xc2\xa7 1202.02(a)(v).\nii.\n\nInwood Labs., Inc. v. Ives Labs., Inc.\n\nInwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982), is important for our purposes here mainly\nbecause of its brief, one-sentence footnote 10, which has had an enormous impact on functionality\ndoctrine. Nevertheless, it is worth understanding the basic facts underlying the Inwood opinion\xe2\x80\x94facts\nto which we will return when we consider secondary liability in trademark law below. Ives\nLaboratories, Inc. (\xe2\x80\x9cIves\xe2\x80\x9d) manufactured and marketed the patented prescription drug cyclandelate, a\nvasodilator, under the registered trademark CYCLOSPASMOL. After Ives\xe2\x80\x99 patent expired in 1972, several\ngeneric drug manufacturers, including Inwood Laboratories, Inc., began manufacturing and marketing\ncyclandelate capsules that copied the appearance, including the color, of Ives\xe2\x80\x99 capsules. Ives brought an\naction for trademark infringement against the manufacturers. Ives alleged that the manufacturers\nwere vicariously liable for the infringement of Ives\xe2\x80\x99 CYCLOSPASMOL trademark by pharmacists who\nplaced capsules produced by the generic manufacturers into bottles labeled with the CYCLOSPASMOL\nmark. The Supreme Court ultimately found that the generic manufacturers were not liable.\nIn the course of her opinion for the Court, Justice O\xe2\x80\x99Connor noted: \xe2\x80\x9cIves argued that the colors of\nits capsules were not functional.\xe2\x80\x9d She appended to this statement footnote number 10:\nIn general terms, a product feature is functional if it is essential to the use or purpose of\nthe article or if it affects the cost or quality of the article. See Sears, Roebuck & Co. v. Stiffel\nCo., 376 U.S. 225, 232 (1964); Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 122 (1938).\nIt is not clear to what exactly Justice O\xe2\x80\x99Connor was citing in Stiffel, but the Kellogg court had stated that\nthe pillow shape of Nabisco\xe2\x80\x99s shredded wheat was functional: \xe2\x80\x9cThe evidence is persuasive that this\nform is functional\xe2\x80\x94that the cost of the biscuit would be increased and its high quality lessened if some\nother form were substituted for the pillow-shape\xe2\x80\x9d Id. at 122.\nNow nearly forgotten is that Inwood contained further discussion of the concept of functionality\nin trademark law. In a subsequent footnote, Justice O\xe2\x80\x99Connor criticized the Inwood appellate court for\nfailing to respond to the district court\xe2\x80\x99s determination that the color of Ives\xe2\x80\x99 capsules was functional.\nInwood, 456 U.S. at 857 n. 20. In his concurrence joined by Justice Marshall, Justice White also took the\nappellate court to task for failing to respond to the district court\xe2\x80\x99s functionality determination. In doing\nso, he quoted the appellate court\xe2\x80\x99s definition of functionality apparently with approval: \xe2\x80\x9cA functional\ncharacteristic is \xe2\x80\x98an important ingredient in the commercial success of the product.\xe2\x80\x99\xe2\x80\x9d Id. at 863 (White,\nJ., concurring) (quoting Ives Laboratories, Inc. v. Darby Drug Co., Inc., 601 F.2d 631 (2nd Cir. 1979)). As\nwe will see below, this language, going to whether a product feature is \xe2\x80\x9can important ingredient in the\ncommercial success of the product,\xe2\x80\x9d would come back to haunt functionality doctrine and aesthetic\nfunctionality doctrine in particular.\n3.\n\nTrafFix Devices, Inc. v. Marketing Displays, Inc.\n\nBetween Inwood (1982) and TrafFix (2001), functionality doctrine appeared to many to have lost\nits moorings. Perhaps influenced by Morton-Norwich, courts increasingly relied on various forms of a\n\xe2\x80\x9ccompetitive necessity\xe2\x80\x9d test to determine if a particular product feature was functional, and because\nalternative designs could often be found or hypothesized, the \xe2\x80\x9ccompetitive necessity\xe2\x80\x9d test tended to\nbenefit plaintiffs (i.e., those asserting trademark property rights).\nTrafFix attempted to return functionality doctrine to Inwood\xe2\x80\x99s definition of functionality. But in\norder to do so, TrafFix had to explain the meaning of a statement the Court had made six years earlier\nin Qualitex (1995). This is the relevant passage from Qualitex:\n164\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nThis Court consequently has explained that, \xe2\x80\x9c[i]n general terms, a product feature is\nfunctional,\xe2\x80\x9d and cannot serve as a trademark, \xe2\x80\x9cif it is essential to the use or purpose of the\narticle or if it affects the cost or quality of the article,\xe2\x80\x9d that is, if exclusive use of the\nfeature would put competitors at a significant non-reputation-related disadvantage.\nInwood Laboratories, Inc., 456 U. S., at 850, n. 10.\nQualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995). Before reading TrafFix, consider\nthis question: does this passage from Qualitex suggest that Inwood\xe2\x80\x99s test (\xe2\x80\x9cessential to the use or\npurpose . . . \xe2\x80\x9d) is interchangeable with and the equivalent of the test asking if \xe2\x80\x9cexclusive use of the\nfeature would put competitors at a significant non-reputation-related disadvantage\xe2\x80\x9d? Would appellate\ncourts have been justified in assuming the equivalence between these two statements of the test for\nfunctionality?\nIn reading TrafFix, consider these additional questions:\n\xe2\x80\xa2\n\nHow do we determine if a product feature is \xe2\x80\x9cessential to the use or purpose\xe2\x80\x9d of the product?\nWhat do we mean by \xe2\x80\x9cessential\xe2\x80\x9d? That the product feature is a competitive necessity? An\nengineering necessity? How could a product feature be \xe2\x80\x9cessential to the use or purpose\xe2\x80\x9d of\nthe product if there are alternative designs that competitors could use and still compete\neffectively?\n\n\xe2\x80\xa2\n\nWhy not just establish a per se rule that the subject of an expired utility patent is per se\nfunctional under trademark law and cannot under any circumstances qualify for trademark\nprotection?\n\n\xe2\x80\xa2\n\nAre there any product features that do not in some way \xe2\x80\x9caffect[] the cost or quality of the\nproduct\xe2\x80\x9d?\n\n\xe2\x80\xa2\n\nWhy not apply the Inwood Laboratories test to aesthetic product features as well?\n\n\xe2\x80\xa2\n\nDoes TrafFix in any sense overrule Morton-Norwich?\n\nTrafFix Devices, Inc. v. Marketing Displays, Inc.\n532 U.S. 23 (2001)\nJustice KENNEDY delivered the opinion of the Court.\n[1] Temporary road signs with warnings like \xe2\x80\x9cRoad Work Ahead\xe2\x80\x9d or \xe2\x80\x9cLeft Shoulder Closed\xe2\x80\x9d must\nwithstand strong gusts of wind. An inventor named Robert Sarkisian obtained two utility patents for a\n165\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmechanism built upon two springs (the dual-spring design) to keep these and other outdoor signs\nupright despite adverse wind conditions. The holder of the now-expired Sarkisian patents, respondent\nMarketing Displays, Inc. (MDI), established a successful business in the manufacture and sale of sign\nstands incorporating the patented feature. MDI\xe2\x80\x99s stands for road signs were recognizable to buyers and\nusers (it says) because the dual-spring design was visible near the base of the sign.\n[2] This litigation followed after the patents expired and a competitor, TrafFix Devices, Inc., sold\nsign stands with a visible spring mechanism that looked like MDI\xe2\x80\x99s. MDI and TrafFix products looked\nalike because they were. When TrafFix started in business, it sent an MDI product abroad to have it\nreverse engineered, that is to say copied. Complicating matters, TrafFix marketed its sign stands under\na name similar to MDI\xe2\x80\x99s. MDI used the name \xe2\x80\x9cWindMaster,\xe2\x80\x9d while TrafFix, its new competitor, used\n\xe2\x80\x9cWindBuster.\xe2\x80\x9d\n[3] MDI brought suit under the Trademark Act of 1946 (Lanham Act), 60 Stat. 427, as amended,\n15 U.S.C. \xc2\xa7 1051 et seq., against TrafFix for trademark infringement (based on the similar names), trade\ndress infringement (based on the copied dual-spring design), and unfair competition. TrafFix\ncounterclaimed on antitrust theories. After the United States District Court for the Eastern District of\nMichigan considered cross-motions for summary judgment, MDI prevailed on its trademark claim for\nthe confusing similarity of names and was held not liable on the antitrust counterclaim; and those two\nrulings, affirmed by the Court of Appeals, are not before us.\nI\n[4] We are concerned with the trade dress question. The District Court ruled against MDI on its\ntrade dress claim. 971 F.Supp. 262 (E.D.Mich.1997). After determining that the one element of MDI\xe2\x80\x99s\ntrade dress at issue was the dual-spring design, id., at 265, it held that \xe2\x80\x9cno reasonable trier of fact could\ndetermine that MDI has established secondary meaning\xe2\x80\x9d in its alleged trade dress, id., at 269. In other\nwords, consumers did not associate the look of the dual-spring design with MDI. As a second,\nindependent reason to grant summary judgment in favor of TrafFix, the District Court determined the\ndual-spring design was functional. On this rationale secondary meaning is irrelevant because there can\nbe no trade dress protection in any event. In ruling on the functional aspect of the design, the District\nCourt noted that Sixth Circuit precedent indicated that the burden was on MDI to prove that its trade\ndress was nonfunctional, and not on TrafFix to show that it was functional (a rule since adopted by\nCongress, see 15 U.S.C. \xc2\xa7 1125(a)(3) (1994 ed., Supp. V)), and then went on to consider MDI\xe2\x80\x99s\narguments that the dual-spring design was subject to trade dress protection. Finding none of MDI\xe2\x80\x99s\ncontentions persuasive, the District Court concluded MDI had not \xe2\x80\x9cproffered sufficient evidence which\nwould enable a reasonable trier of fact to find that MDI\xe2\x80\x99s vertical dual-spring design is non-functional.\xe2\x80\x9d\n971 F.Supp., at 276. Summary judgment was entered against MDI on its trade dress claims.\n[5] The Court of Appeals for the Sixth Circuit reversed the trade dress ruling. 200 F.3d 929\n(1999). The Court of Appeals held the District Court had erred in ruling MDI failed to show a genuine\nissue of material fact regarding whether it had secondary meaning in its alleged trade dress, id., at 938,\nand had erred further in determining that MDI could not prevail in any event because the alleged trade\ndress was in fact a functional product configuration, id., at 940. The Court of Appeals suggested the\nDistrict Court committed legal error by looking only to the dual-spring design when evaluating MDI\xe2\x80\x99s\ntrade dress. Basic to its reasoning was the Court of Appeals\xe2\x80\x99 observation that it took \xe2\x80\x9clittle imagination\nto conceive of a hidden dual-spring mechanism or a tri or quad-spring mechanism that might avoid\ninfringing [MDI\xe2\x80\x99s] trade dress.\xe2\x80\x9d Ibid. The Court of Appeals explained that \xe2\x80\x9c[i]f TrafFix or another\ncompetitor chooses to use [MDI\xe2\x80\x99s] dual-spring design, then it will have to find some other way to set its\nsign apart to avoid infringing [MDI\xe2\x80\x99s] trade dress.\xe2\x80\x9d Ibid. It was not sufficient, according to the Court of\nAppeals, that allowing exclusive use of a particular feature such as the dual-spring design in the guise\nof trade dress would \xe2\x80\x9chinde[r] competition somewhat.\xe2\x80\x9d Rather, \xe2\x80\x9c[e]xclusive use of a feature must \xe2\x80\x98put\ncompetitors at a significant non-reputation-related disadvantage\xe2\x80\x99 before trade dress protection is\n166\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndenied on functionality grounds.\xe2\x80\x9d Ibid. (quoting Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165,\n115 S.Ct. 1300, 131 L.Ed.2d 248 (1995)). In its criticism of the District Court\xe2\x80\x99s ruling on the trade dress\nquestion, the Court of Appeals took note of a split among Courts of Appeals in various other Circuits on\nthe issue whether the existence of an expired utility patent forecloses the possibility of the patentee\xe2\x80\x99s\nclaiming trade dress protection in the product\xe2\x80\x99s design. 200 F.3d, at 939. Compare Sunbeam Products,\nInc. v. West Bend Co., 123 F.3d 246 (C.A.5 1997) (holding that trade dress protection is not foreclosed),\nThomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (C.A.7 1998) (same), and Midwest Industries, Inc. v.\nKaravan Trailers, Inc., 175 F.3d 1356 (C.A.Fed.1999) (same), with Vornado Air Circulation Systems, Inc.\nv. Duracraft Corp., 58 F.3d 1498, 1500 (C.A.10 1995) (\xe2\x80\x9cWhere a product configuration is a significant\ninventive component of an invention covered by a utility patent . . . it cannot receive trade dress\nprotection\xe2\x80\x9d). To resolve the conflict, we granted certiorari. 530 U.S. 1260 (2000).\nII\n[6] It is well established that trade dress can be protected under federal law. The design or\npackaging of a product may acquire a distinctiveness which serves to identify the product with its\nmanufacturer or source; and a design or package which acquires this secondary meaning, assuming\nother requisites are met, is a trade dress which may not be used in a manner likely to cause confusion\nas to the origin, sponsorship, or approval of the goods. In these respects protection for trade dress\nexists to promote competition. As we explained just last Term, see Wal-Mart Stores, Inc. v. Samara\nBrothers, Inc., 529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), various Courts of Appeals have\nallowed claims of trade dress infringement relying on the general provision of the Lanham Act which\nprovides a cause of action to one who is injured when a person uses \xe2\x80\x9cany word, term name, symbol, or\ndevice, or any combination thereof . . . which is likely to cause confusion . . . as to the origin,\nsponsorship, or approval of his or her goods.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1125(a)(1)(A). Congress confirmed this\nstatutory protection for trade dress by amending the Lanham Act to recognize the concept. Title 15\nU.S.C. \xc2\xa7 1125(a)(3) (1994 ed., Supp. V) provides: \xe2\x80\x9cIn a civil action for trade dress infringement under\nthis chapter for trade dress not registered on the principal register, the person who asserts trade dress\nprotection has the burden of proving that the matter sought to be protected is not functional.\xe2\x80\x9d This\nburden of proof gives force to the well-established rule that trade dress protection may not be claimed\nfor product features that are functional. Qualitex, supra, at 164-165; Two Pesos, Inc. v. Taco Cabana, Inc.,\n505 U.S. 763, 775 (1992). And in Wal-Mart, supra, we were careful to caution against misuse or\noverextension of trade dress. We noted that \xe2\x80\x9cproduct design almost invariably serves purposes other\nthan source identification.\xe2\x80\x9d Id., at 213.\n[7] Trade dress protection must subsist with the recognition that in many instances there is no\nprohibition against copying goods and products. In general, unless an intellectual property right such\nas a patent or copyright protects an item, it will be subject to copying. As the Court has explained,\ncopying is not always discouraged or disfavored by the laws which preserve our competitive economy.\nBonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 160 (1989). Allowing competitors to copy\nwill have salutary effects in many instances. \xe2\x80\x9cReverse engineering of chemical and mechanical articles\nin the public domain often leads to significant advances in technology.\xe2\x80\x9d Ibid.\n[8] The principal question in this case is the effect of an expired patent on a claim of trade dress\ninfringement. A prior patent, we conclude, has vital significance in resolving the trade dress claim. A\nutility patent is strong evidence that the features therein claimed are functional. If trade dress\nprotection is sought for those features the strong evidence of functionality based on the previous\npatent adds great weight to the statutory presumption that features are deemed functional until\nproved otherwise by the party seeking trade dress protection. Where the expired patent claimed the\nfeatures in question, one who seeks to establish trade dress protection must carry the heavy burden of\nshowing that the feature is not functional, for instance by showing that it is merely an ornamental,\nincidental, or arbitrary aspect of the device.\n167\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[9] In the case before us, the central advance claimed in the expired utility patents (the Sarkisian\npatents) is the dual-spring design; and the dual-spring design is the essential feature of the trade dress\nMDI now seeks to establish and to protect. The rule we have explained bars the trade dress claim, for\nMDI did not, and cannot, carry the burden of overcoming the strong evidentiary inference of\nfunctionality based on the disclosure of the dual-spring design in the claims of the expired patents.\n[10] The dual springs shown in the Sarkisian patents were well apart (at either end of a frame for\nholding a rectangular sign when one full side is the base) while the dual springs at issue here are close\ntogether (in a frame designed to hold a sign by one of its corners). As the District Court recognized, this\nmakes little difference. The point is that the springs are necessary to the operation of the device. The\nfact that the springs in this very different-looking device fall within the claims of the patents is\nillustrated by MDI\xe2\x80\x99s own position in earlier litigation. In the late 1970\xe2\x80\x99s, MDI engaged in a long-running\nintellectual property battle with a company known as Winn-Proof. Although the precise claims of the\nSarkisian patents cover sign stands with springs \xe2\x80\x9cspaced apart,\xe2\x80\x9d U.S. Patent No. 3,646,696, col. 4; U.S.\nPatent No. 3,662,482, col. 4, the Winn-Proof sign stands (with springs much like the sign stands at\nissue here) were found to infringe the patents by the United States District Court for the District of\nOregon, and the Court of Appeals for the Ninth Circuit affirmed the judgment. Sarkisian v. Winn-Proof\nCorp., 697 F.2d 1313 (1983). Although the Winn-Proof traffic sign stand (with dual springs close\ntogether) did not appear, then, to infringe the literal terms of the patent claims (which called for\n\xe2\x80\x9cspaced apart\xe2\x80\x9d springs), the Winn-Proof sign stand was found to infringe the patents under the\ndoctrine of equivalents, which allows a finding of patent infringement even when the accused product\ndoes not fall within the literal terms of the claims. Id., at 1321-1322; see generally Warner-Jenkinson\nCo. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997). In light of this past ruling\xe2\x80\x94a ruling procured at\nMDI\xe2\x80\x99s own insistence\xe2\x80\x94it must be concluded the products here at issue would have been covered by\nthe claims of the expired patents.\n[11] The rationale for the rule that the disclosure of a feature in the claims of a utility patent\nconstitutes strong evidence of functionality is well illustrated in this case. The dual-spring design\nserves the important purpose of keeping the sign upright even in heavy wind conditions; and, as\nconfirmed by the statements in the expired patents, it does so in a unique and useful manner. As the\nspecification of one of the patents recites, prior art \xe2\x80\x9cdevices, in practice, will topple under the force of a\nstrong wind.\xe2\x80\x9d U.S. Patent No. 3,662,482, col. 1. The dual-spring design allows sign stands to resist\ntoppling in strong winds. Using a dual-spring design rather than a single spring achieves important\noperational advantages. For example, the specifications of the patents note that the \xe2\x80\x9cuse of a pair of\nsprings . . . as opposed to the use of a single spring to support the frame structure prevents canting or\ntwisting of the sign around a vertical axis,\xe2\x80\x9d and that, if not prevented, twisting \xe2\x80\x9cmay cause damage to\nthe spring structure and may result in tipping of the device.\xe2\x80\x9d U.S. Patent No. 3,646,696, col. 3. In the\ncourse of patent prosecution, it was said that \xe2\x80\x9c[t]he use of a pair of spring connections as opposed to a\nsingle spring connection . . . forms an important part of this combination\xe2\x80\x9d because it \xe2\x80\x9cforc[es] the sign\nframe to tip along the longitudinal axis of the elongated ground-engaging members.\xe2\x80\x9d App. 218. The\ndual-spring design affects the cost of the device as well; it was acknowledged that the device \xe2\x80\x9ccould use\nthree springs but this would unnecessarily increase the cost of the device.\xe2\x80\x9d Id., at 217. These\nstatements made in the patent applications and in the course of procuring the patents demonstrate the\nfunctionality of the design. MDI does not assert that any of these representations are mistaken or\ninaccurate, and this is further strong evidence of the functionality of the dual-spring design.\nIII\n[12] In finding for MDI on the trade dress issue the Court of Appeals gave insufficient recognition\nto the importance of the expired utility patents, and their evidentiary significance, in establishing the\nfunctionality of the device. The error likely was caused by its misinterpretation of trade dress\nprinciples in other respects. As we have noted, even if there has been no previous utility patent the\n168\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nparty asserting trade dress has the burden to establish the nonfunctionality of alleged trade dress\nfeatures. MDI could not meet this burden. Discussing trademarks, we have said \xe2\x80\x9c\xe2\x80\x98[i]n general terms, a\nproduct feature is functional,\xe2\x80\x99 and cannot serve as a trademark, \xe2\x80\x98if it is essential to the use or purpose\nof the article or if it affects the cost or quality of the article.\xe2\x80\x99\xe2\x80\x9d Qualitex, 514 U.S., at 165 (quoting Inwood\nLaboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n. 10 (1982)). Expanding upon the\nmeaning of this phrase, we have observed that a functional feature is one the \xe2\x80\x9cexclusive use of [which]\nwould put competitors at a significant non-reputation-related disadvantage.\xe2\x80\x9d 514 U.S., at 165. The\nCourt of Appeals in the instant case seemed to interpret this language to mean that a necessary test for\nfunctionality is \xe2\x80\x9cwhether the particular product configuration is a competitive necessity.\xe2\x80\x9d 200 F.3d, at\n940. See also Vornado, 58 F.3d, at 1507 (\xe2\x80\x9cFunctionality, by contrast, has been defined both by our\ncircuit, and more recently by the Supreme Court, in terms of competitive need\xe2\x80\x9d). This was incorrect as\na comprehensive definition. As explained in Qualitex, supra, and Inwood, supra, a feature is also\nfunctional when it is essential to the use or purpose of the device or when it affects the cost or quality\nof the device. The Qualitex decision did not purport to displace this traditional rule. Instead, it quoted\nthe rule as Inwood had set it forth. It is proper to inquire into a \xe2\x80\x9csignificant non-reputation-related\ndisadvantage\xe2\x80\x9d in cases of esthetic functionality, the question involved in Qualitex. Where the design is\nfunctional under the Inwood formulation there is no need to proceed further to consider if there is a\ncompetitive necessity for the feature. In Qualitex, by contrast, esthetic functionality was the central\nquestion, there having been no indication that the green-gold color of the laundry press pad had any\nbearing on the use or purpose of the product or its cost or quality.\n[13] The Court has allowed trade dress protection to certain product features that are inherently\ndistinctive. Two Pesos, 505 U.S., at 774. In Two Pesos, however, the Court at the outset made the explicit\nanalytic assumption that the trade dress features in question (decorations and other features to evoke\na Mexican theme in a restaurant) were not functional. Id., at 767, n. 6. The trade dress in those cases\ndid not bar competitors from copying functional product design features. In the instant case, beyond\nserving the purpose of informing consumers that the sign stands are made by MDI (assuming it does\nso), the dual-spring design provides a unique and useful mechanism to resist the force of the wind.\nFunctionality having been established, whether MDI\xe2\x80\x99s dual-spring design has acquired secondary\nmeaning need not be considered.\n[14] There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about\nother design possibilities, such as using three or four springs which might serve the same purpose. 200\nF.3d, at 940. Here, the functionality of the spring design means that competitors need not explore\nwhether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish\nin the configuration of MDI\xe2\x80\x99s product; it is the reason the device works. Other designs need not be\nattempted.\n[15] Because the dual-spring design is functional, it is unnecessary for competitors to explore\ndesigns to hide the springs, say, by using a box or framework to cover them, as suggested by the Court\nof Appeals. Ibid. The dual-spring design assures the user the device will work. If buyers are assured the\nproduct serves its purpose by seeing the operative mechanism that in itself serves an important\nmarket need. It would be at cross-purposes to those objectives, and something of a paradox, were we\nto require the manufacturer to conceal the very item the user seeks.\n[16] In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects\nof features of a product found in the patent claims, such as arbitrary curves in the legs or an\nornamental pattern painted on the springs, a different result might obtain. There the manufacturer\ncould perhaps prove that those aspects do not serve a purpose within the terms of the utility patent.\nThe inquiry into whether such features, asserted to be trade dress, are functional by reason of their\ninclusion in the claims of an expired utility patent could be aided by going beyond the claims and\nexamining the patent and its prosecution history to see if the feature in question is shown as a useful\n169\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\npart of the invention. No such claim is made here, however. MDI in essence seeks protection for the\ndual-spring design alone. The asserted trade dress consists simply of the dual-spring design, four legs,\na base, an upright, and a sign. MDI has pointed to nothing arbitrary about the components of its device\nor the way they are assembled. The Lanham Act does not exist to reward manufacturers for their\ninnovation in creating a particular device; that is the purpose of the patent law and its period of\nexclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply\nbecause an investment has been made to encourage the public to associate a particular functional\nfeature with a single manufacturer or seller. The Court of Appeals erred in viewing MDI as possessing\nthe right to exclude competitors from using a design identical to MDI\xe2\x80\x99s and to require those\ncompetitors to adopt a different design simply to avoid copying it. MDI cannot gain the exclusive right\nto produce sign stands using the dual-spring design by asserting that consumers associate it with the\nlook of the invention itself. Whether a utility patent has expired or there has been no utility patent at\nall, a product design which has a particular appearance may be functional because it is \xe2\x80\x9cessential to the\nuse or purpose of the article\xe2\x80\x9d or \xe2\x80\x9caffects the cost or quality of the article.\xe2\x80\x9d Inwood, 456 U.S., at 850, n.\n10, 102 S.Ct. 2182.\n[17] TrafFix and some of its amici argue that the Patent Clause of the Constitution, Art. I, \xc2\xa7 8, cl. 8,\nof its own force, prohibits the holder of an expired utility patent from claiming trade dress protection.\nBrief for Petitioner 33-36; Brief for Panduit Corp. as Amicus Curiae 3; Brief for Malla Pollack as Amicus\nCuriae 2. We need not resolve this question. If, despite the rule that functional features may not be the\nsubject of trade dress protection, a case arises in which trade dress becomes the practical equivalent of\nan expired utility patent, that will be time enough to consider the matter. The judgment of the Court of\nAppeals is reversed, and the case is remanded for further proceedings consistent with this opinion.\nIt is so ordered.\nComments and Questions\n1. A missing \xe2\x80\x9csignificantly\xe2\x80\x9d? The TrafFix Court held that \xe2\x80\x9ca feature is also functional when it is\nessential to the use or purpose of the device or when it affects the cost or quality of the device.\xe2\x80\x9d Is there\nany product feature that would not affect in some way the cost of the product? Would it be reasonable\nto read the TrafFix holding as implicitly requiring that, to be functional, the product feature must\nsignificantly affect the cost of the product\xe2\x80\x94i.e., affect the cost in such a way that granting exclusive\nrights in the product feature would put competitors at a \xe2\x80\x9csignificant non-reputation related\ndisadvantage\xe2\x80\x9d? If this is the proper reading of the TrafFix holding, then how is it different from the\n\xe2\x80\x9ccompetitive necessity\xe2\x80\x9d test?\n2. Functionality and food flavors. Under TrafFix, are flavors of food protectable as trademarks?\nIn a case in which a restaurant franchisor sued a knock-off restaurant, the court found that food flavors\nare functional. See New York Pizzeria, Inc. v. Syal, 56 F. Supp. 3d 875, 882 (S.D. Tex. 2014) (\xe2\x80\x9cThe flavor\nof food undoubtedly affects its quality, and is therefore a functional element of the product.\xe2\x80\x9d).\nb.\n\nUtilitarian Functionality Case Law after TrafFix\n\nAfter the Supreme Court issued its opinion in TrafFix, the lower courts applied the teachings of\nthe opinion in a variety of ways. Presented here are excerpts from certain of the leading lower court\nfunctionality opinions after TrafFix.\nNote that the Second Circuit has not yet had occasion to apply TrafFix in a utilitarian functionality\ncontext.\nIn reading these opinions, consider the following questions:\n\xe2\x80\xa2\n\nWhich opinion represents the best interpretation of TrafFix?\n\n170\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\xa2\n\nWhich opinions\xe2\x80\x99 approaches to functionality are more pro-plaintiff (i.e., less likely to find a\nproduct feature to be functional) or pro-defendant (i.e., more likely to find a product feature\nto be functional) in orientation?\n\n\xe2\x80\xa2\n\nWhere would you place each opinion\xe2\x80\x99s definition of or approach to functionality on MortonNorwich\xe2\x80\x99s continuum from de facto to de jure functionality? In other words, for each opinion,\ndoes the opinion define functionality in a way that is closer to a de facto definition of\nfunctionality or a de jure definition of functionality?\ni.\n\nFederal Circuit\n\nIn Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268 (Fed. Cir. 2002), the Federal Circuit was\nthe first court of appeals to consider a functionality issue after TrafFix. As you will see, the Federal\nCircuit read TrafFix as license essentially to conduct business as usual. Do you agree that TrafFix did\nnot \xe2\x80\x9calter\xe2\x80\x9d the Morton-Norwich analysis?\nValu Engineering, Inc. v. Rexnord Corp.\n278 F.3d 1268, 1275-76 (Fed. Cir. 2002)\n{Valu Engineering, Inc. (\xe2\x80\x9cValu\xe2\x80\x9d) applied to register various trademarks consisting of crosssectional designs of conveyer guide rails. Specifically, Valu sought to register three marks, one for each\nof its round, flat, and tee cross-sectional designs, as shown below. Valu claimed that the designs had\nacquired distinctiveness. Rexnord Corp. (\xe2\x80\x9cRexnord\xe2\x80\x9d) opposed the registration on the ground, among\nothers, that Valu\xe2\x80\x99s conveyer guide rail designs were functional. The TTAB agreed and sustained\nRexnord\xe2\x80\x99s opposition. The Federal Circuit affirmed. Excerpted here is the Federal Circuit\xe2\x80\x99s analysis of\nTrafFix.}\n\nDYK, Circuit Judge:\n....\n[1] The Supreme Court reversed {the Sixth Circuit in TrafFix}, finding that the court of appeals\ngave insufficient evidentiary weight to the expired utility patents in analyzing the functionality of the\ndual-spring design, and that it overread Qualitex: \xe2\x80\x9cthe Court of Appeals . . . seemed to interpret\n{Qualitex} to mean that a necessary test for functionality is \xe2\x80\x98whether the particular product\nconfiguration is a competitive necessity.\xe2\x80\x99 . . . This was incorrect as a comprehensive definition.\xe2\x80\x9d TrafFix,\n121 S.Ct. at 1261. The Court then reaffirmed the \xe2\x80\x9ctraditional rule\xe2\x80\x9d of Inwood that \xe2\x80\x9ca product feature is\nfunctional if it is essential to the use or purpose of the article or if it affects the cost or quality of the\narticle.\xe2\x80\x9d Id. The Court further held that once a product feature is found to be functional under this\n\xe2\x80\x9ctraditional rule,\xe2\x80\x9d \xe2\x80\x9cthere is no need to proceed further to consider if there is competitive necessity for\nthe feature,\xe2\x80\x9d and consequently \xe2\x80\x9c[t]here is no need . . . to engage . . . in speculation about other design\npossibilities . . . . Other designs need not be attempted.\xe2\x80\x9d Id. at 1262.4\nTrafFix suggests that there may be a requirement under Qualitex to inquire into a \xe2\x80\x9csignificant\nnon-reputation-related disadvantage\xe2\x80\x9d in aesthetic functionality cases, because aesthetic functionality\nwas \xe2\x80\x9cthe question involved in Qualitex.\xe2\x80\x9d 121 S.Ct. at 1262. This statement has been criticized because\n4\n\n171\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[2] We do not understand the Supreme Court\xe2\x80\x99s decision in TrafFix to have altered the Morton\xe2\x80\x93\nNorwich analysis. As noted above, the Morton\xe2\x80\x93Norwich factors aid in the determination of whether a\nparticular feature is functional, and the third factor focuses on the availability of \xe2\x80\x9cother alternatives.\xe2\x80\x9d\nMorton\xe2\x80\x93Norwich, 671 F.2d at 1341. We did not in the past under the third factor require that the\nopposing party establish that there was a \xe2\x80\x9ccompetitive necessity\xe2\x80\x9d for the product feature. Nothing in\nTrafFix suggests that consideration of alternative designs is not properly part of the overall mix, and\nwe do not read the Court\xe2\x80\x99s observations in TrafFix as rendering the availability of alternative designs\nirrelevant. Rather, we conclude that the Court merely noted that once a product feature is found\nfunctional based on other considerations5 there is no need to consider the availability of alternative\ndesigns, because the feature cannot be given trade dress protection merely because there are\nalternative designs available. But that does not mean that the availability of alternative designs cannot\nbe a legitimate source of evidence to determine whether a feature is functional in the first place. We\nfind it significant that neither party argues that TrafFix changed the law of functionality, and that\nscholarly commentary has reached exactly the same conclusion that we have:\nIn the author\xe2\x80\x99s view, the observations by the Supreme Court in TrafFix do not mean that\nthe availability of alternative designs cannot be a legitimate source of evidence to\ndetermine in the first instance if a particular feature is in fact \xe2\x80\x9cfunctional.\xe2\x80\x9d Rather, the\nCourt merely said that once a design is found to be functional, it cannot be given trade\ndress status merely because there are alternative designs available . . . .\n....\n. . . The existence of actual or potential alternative designs that work equally well\nstrongly suggests that the particular design used by plaintiff is not needed by competitors\nto effectively compete on the merits.\nJ. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition, \xc2\xa7 7:75, 7\xe2\x80\x93180\xe2\x80\x931 (4th ed.2001).\nIn sum, TrafFix does not render the Board\xe2\x80\x99s use of the Morton\xe2\x80\x93Norwich factors erroneous.\n{The court went on to affirm the TTAB\xe2\x80\x99s application of the Morton-Norwich factors, emphasizing\nthat, \xe2\x80\x9c[a]s this court\xe2\x80\x99s predecessor noted in Morton\xe2\x80\x93Norwich, the \xe2\x80\x98effect upon competition \xe2\x80\x9cis really the\ncrux\xe2\x80\x9d\xe2\x80\x98 of the functionality inquiry, id. at 1341, and, accordingly, the functionality doctrine preserves\ncompetition by ensuring competitors \xe2\x80\x9cthe right to compete effectively.\xe2\x80\x9d Id. at 1339.\xe2\x80\x9d}\nii.\n\nFifth Circuit\n\nEppendorf-Netheler-Hinz GMBH v. Ritter GMBH\n289 F.3d 351 (5th Cir. 2002)\n{Plaintiff Eppendorf\xe2\x80\x93Netheler\xe2\x80\x93Hinz GMBH (\xe2\x80\x9cEppendorf\xe2\x80\x9d) manufactured disposable pipette tips\nand dispenser syringes to which the pipette tips can be attached for use in laboratories. Defendant\nRitter GMBH (\xe2\x80\x9cRitter\xe2\x80\x9d) began to manufacture pipette tips that were interchangeable with and priced\nlower than Eppendorf\xe2\x80\x99s tips. Eppendorf brought suit against Ritter for, among other things, trade dress\ninfringement. In June of 2000, ten months before the Supreme Court handed down TrafFix,\n\n\xe2\x80\x9caesthetic functionality was not the central question in the Qualitex case.\xe2\x80\x9d J. Thomas McCarthy, 1\nMcCarthy on Trademarks and Unfair Competition \xc2\xa7 7:80, 7\xe2\x80\x93198 (4th ed.2001). We need not decide\nwhat role, if any, the determination of a \xe2\x80\x9csignificant non-reputation-related disadvantage\xe2\x80\x9d plays in\naesthetic functionality cases, because aesthetic functionality is not at issue here.\nFor example, a feature may be found functional where the feature \xe2\x80\x9caffects the cost or quality of\nthe device.\xe2\x80\x9d TrafFix, 121 S.Ct. at 1263.\n5\n\n172\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nEppendorf\xe2\x80\x99s claims were tried before a jury, which returned a verdict in favor of Eppendorf. The\ndistrict court denied Ritter\xe2\x80\x99s motion for judgment as a matter of law. Ritter appealed.}\n\nEDITH H. JONES, Circuit Judge\n....\n[1] Eppendorf contends that Ritter infringed upon eight elements of the Combitips\xe2\x80\x99s trade dress:\n(1) the flange on top of the tip; (2) the fins connecting the flange to the body of the tip; (3) the plunger\nhead; (4) the plunger; (5) the length of the tips; (6) the eight sizes of the tips; (7) the coloring scheme\non the tips; and (8) the angle of the stump on the tips.\n....\n[2] The crucial issue presented by this appeal is whether the eight design elements of the\nEppendorf Combitips are functional as a matter of law. This case was tried in June of 2000, almost ten\nmonths before the Supreme Court decided TrafFix. The district court, correctly applying this circuit\xe2\x80\x99s\nutilitarian test of functionality, instructed the jury as follows:\nA design or characteristic is nonfunctional if there are reasonably effective and efficient\nalternatives possible. Hence, a product\xe2\x80\x99s trade dress is functional only, one, if competitors\nneed to incorporate it in order to compete effectively because it is essential to the\nproduct\xe2\x80\x99s use, or, two, if it significantly affects the cost or quality of the article. A design is\nfunctional and thus unprotectable if it is one of a limited number of equally efficient\noptions available to competitors and free competition would be significantly\ndisadvantaged by according the design trademark protection.\nRelying on this instruction, the jury determined that the Combitips were non-functional. Ritter\nand RK Manufacturing moved for judgment as a matter of law on the issue of functionality, and the\ndistrict court denied the motion.\n....\n[3] Eppendorf contends that the evidence supports the jury\xe2\x80\x99s finding of non-functionality because\n\xe2\x80\x9c[t]he evidence clearly established that there were alternative designs to each of the eight nonfunctional features.\xe2\x80\x9d Appellee\xe2\x80\x99s Brief at 20. Indeed, there is extensive testimony in the record regarding\navailable alternative designs for each of the eight elements. For example, Eppendorf\xe2\x80\x99s expert testified\nthat the number of fins under the flange \xe2\x80\x9ccould be increased or decreased or their appearance could be\nchanged.\xe2\x80\x9d Appellee\xe2\x80\x99s Brief at 5. Thus, Eppendorf argues that the fins are non-functional because\nalternative designs are available to competitors in the marketplace.\n\n173\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[4] Eppendorf\xe2\x80\x99s argument, while consistent with this circuit\xe2\x80\x99s utilitarian definition of\nfunctionality, is unpersuasive in light of the Court\xe2\x80\x99s discussion of functionality in TrafFix. As explained\nabove, the primary test for functionality is whether the product feature is essential to the use or\npurpose of the product or if it affects the cost or quality of the product. In TrafFix, the Court\ndetermined that the dual-spring design on a wind-resistant road sign was functional because the dualspring design \xe2\x80\x9cprovides a unique and useful mechanism to resist the force of the wind.\xe2\x80\x9d 532 U.S. at 33,\n121 S.Ct. at 1262. The Court rejected the argument that the springs were non-functional because a\ncompetitor could use three or four springs which would serve the same purpose. Id. The Court\nexplained,\nThere is no need, furthermore, to engage, as did the Court of Appeals, in speculation\nabout other design possibilities, such as using three or four springs which might serve\nthe same purpose . . . . The dual-spring design is not an arbitrary flourish in the\nconfiguration of [the road sign]; it is the reason the device works. Other designs need not\nbe attempted.\nId. at 33\xe2\x80\x9334, 121 S.Ct. at 1261. Accordingly, the design features for which Eppendorf seeks trade dress\nrights are functional if they are essential to the use or purpose of the Combitips or affect the cost or\nquality of the Combitips. The availability of alternative designs is irrelevant.\n[5] In this case it is undisputed that the Combitips\xe2\x80\x99s fins provide necessary support for the flange.\nWithout the fins, the flange is subject to deformation. The only testimony offered by Eppendorf to\nprove non-functionality of the fins related to the existence of alternative design possibilities.\nEppendorf\xe2\x80\x99s functionality expert testified that the appearance and number of fins could be changed\nwithout affecting the function of the fins. Eppendorf did not prove, however, that the fins are an\narbitrary flourish which serve no purpose in the Combitips. Rather, Eppendorf\xe2\x80\x99s experts concede that\nfins of some shape, size or number are necessary to provide support for the flange and to prevent\ndeformation of the product. Thus, the fins are design elements necessary to the operation of the\nproduct.5 Because the fins are essential to the operation of the Combitips, they are functional as a\nmatter of law, and it is unnecessary to consider design alternatives available in the marketplace.\nTrafFix, 532 U.S. at 33\xe2\x80\x9334.\n[6] Likewise, a careful review of the record demonstrates that Eppendorf failed to prove that the\nremaining Combitip design elements are unnecessary, non-essential design elements. It is undisputed\nthat: (1) The flange is necessary to connect the Combitip to the dispenser syringe; (2) The rings on the\nplunger head are necessary to lock the plunger into a cylinder in the dispenser syringe; (3) The\nplunger is necessary to push liquids out of the tip, and the ribs on the plunger stabilize its action; (4)\nThe tips at the lower end of the Combitips are designed to easily fit into test tubes and other\nreceptacles; (5) The size of the Combitip determines the dispensed volume, and size is essential to\naccurate and efficient dispensing; (6) The color scheme used on the Combitip\xe2\x80\x94clear plastic with black\nlettering\xe2\x80\x94enables the user easily to see and measure the amount of liquid in the Combitip, and black is\nstandard in the medical industry; and (7) The stumps of the larger Combitips must be angled to\nseparate air bubbles from the liquid and ensure that the full volume of liquid is dispensed. Thus, all\neight design elements identified by Eppendorf are essential to the operation of the Combitips.\n[7] Eppendorf\xe2\x80\x99s theory of non-functionality focused on the existence of alternative designs.\nEppendorf\xe2\x80\x99s design expert summarized Eppendorf\xe2\x80\x99s approach to functionality: \xe2\x80\x9cMy conclusion was\n\n5 Additionally, Eppendorf\xe2\x80\x99s experts concede that some of the suggested alternative designs would\nslightly increase the cost of the product. This provides further support for the conclusion that the fins\nare functional under the traditional definition of functionality.\n\n174\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthat to achieve the same functional purpose, [the design elements identified by Eppendorf] can be\nchanged significantly, considerably without affecting the overall intended purpose.\xe2\x80\x9d Although\nalternative designs are relevant to the utilitarian test of functionality, alternative designs are not\ngermane to the traditional test for functionality. Each of the eight design elements identified by\nEppendorf is essential to the use or purpose of the Combitips, and is not arbitrary or ornamental\nfeatures. Therefore, no reasonable juror could conclude that Eppendorf carried its burden of proving\nnon-functionality.\n....\n[8] Accordingly, we REVERSE the judgment of the district court and RENDER judgment for Ritter\nand RK Manufacturing. We likewise VACATE the injunction entered by the district court . . . .\nComments and Questions\n1. Sixth Circuit application of TrafFix. Just as it did with Eppendorf in the Fifth Circuit, TrafFix\ndirectly altered the outcome of a functionality case being litigated in the Sixth Circuit when TrafFix was\nhanded down. In Antioch Co. v. Western Trimming Corp., 196 F.Supp.2d 635 (S.D.Ohio 2002), the district\ncourt initially found that the plaintiff\xe2\x80\x99s scrap book design was nonfunctional in light of the availability\nof alternative designs, but the court invited the defendant to renew its motion for summary judgment\non the issue if TrafFix altered the legal framework for assessing trade dress functionality. The\ndefendant did so and the district court then ruled that the trade dress at issue was functional. The Sixth\nCircuit affirmed. See Antioch Co. v. Western Trimming Corp., 347 F.3d 150, 156-157 (6th Cir. 2003) (\xe2\x80\x9c[A]\na court is not required to examine alternative designs when applying the traditional test for\nfunctionality. That much is clear from TrafFix Devices . . . . The dual strap-hinge design, spine cover,\npadded album cover, and reinforced pages are all components that are essential to the use of Antioch\xe2\x80\x99s\nalbum and affect its quality. We thus agree with the district court\xe2\x80\x99s conclusion that there was no\ngenuine issue of material fact regarding the functionality of Antioch\xe2\x80\x99s album under the traditional\nInwood test.\xe2\x80\x9d (emphasis in original)).\n\n175\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\niii. Ninth Circuit\n\nApple, Inc. v. Samsung Electronics Co. Ltd.\n786 F.3d 983 (Fed. Cir. 2015)\nPROST, Chief Judge\n[1] Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung\nTelecommunications America, LLC (collectively, \xe2\x80\x9cSamsung\xe2\x80\x9d) appeal from a final judgment of the U.S.\nDistrict Court for the Northern District of California in favor of Apple Inc. (\xe2\x80\x9cApple\xe2\x80\x9d).\n[2] A jury found that Samsung infringed Apple\xe2\x80\x99s design and utility patents and diluted Apple\xe2\x80\x99s\ntrade dresses. For the reasons that follow, we affirm the jury\xe2\x80\x99s verdict on the design patent\ninfringements, the validity of two utility patent claims, and the damages awarded for the design and\nutility patent infringements appealed by Samsung. However, we reverse the jury\xe2\x80\x99s findings that the\n176\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nasserted trade dresses are protectable. We therefore vacate the jury\xe2\x80\x99s damages awards against the\nSamsung products that were found liable for trade dress dilution and remand for further proceedings\nconsistent with this opinion.\nBACKGROUND\n[3] Apple sued Samsung in April 2011. On August 24, 2012, the first jury reached a verdict that\nnumerous Samsung smartphones infringed and diluted Apple\xe2\x80\x99s patents and trade dresses in various\ncombinations and awarded over $1 billion in damages.\n[4] . . . The diluted trade dresses are Trademark Registration No. 3,470,983 (\xe2\x80\x9c\xe2\x80\xb2983 trade dress\xe2\x80\x9d)\nand an unregistered trade dress defined in terms of certain elements in the configuration of the\niPhone.\n[5] Following the first jury trial, the district court upheld the jury\xe2\x80\x99s infringement, dilution, and\nvalidity findings over Samsung\xe2\x80\x99s post-trial motion [and a second post-trial motion]. On March 6, 2014,\nthe district court entered a final judgment in favor of Apple, and Samsung filed a notice of appeal . . . .\nDISCUSSION\n[6] We review the denial of Samsung\xe2\x80\x99s post-trial motions under the Ninth Circuit\xe2\x80\x99s procedural\nstandards . . . . The Ninth Circuit reviews de novo a denial of a motion for judgment as a matter of\nlaw . . . .\nI. Trade Dresses\n[7] The jury found Samsung liable for the likely dilution of Apple\xe2\x80\x99s iPhone trade dresses under the\nLanham Act. When reviewing Lanham Act claims, we look to the law of the regional circuit where the\ndistrict court sits. We therefore apply Ninth Circuit law.\n[8] The Ninth Circuit has explained that \xe2\x80\x9c[t]rade dress is the totality of elements in which a\nproduct or service is packaged or presented.\xe2\x80\x9d Stephen W. Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821,\n828 (9th Cir. 1997). The essential purpose of a trade dress is the same as that of a trademarked word:\nto identify the source of the product. 1 McCarthy on Trademarks and Unfair Competition \xc2\xa7 8:1 (4th ed.)\n(\xe2\x80\x9c[L]ike a word asserted to be a trademark, the elements making up the alleged trade dress must have\nbeen used in such a manner as to denote product source.\xe2\x80\x9d). In this respect, \xe2\x80\x9cprotection for trade dress\nexists to promote competition.\xe2\x80\x9d TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28, 121 S.Ct.\n1255, 149 L.Ed.2d 164 (2001).\n[9] The protection for source identification, however, must be balanced against \xe2\x80\x9ca fundamental\nright to compete through imitation of a competitor\xe2\x80\x99s product . . . .\xe2\x80\x9d Leatherman Tool Grp., Inc. v. Cooper\nIndus., Inc., 199 F.3d 1009, 1011\xe2\x80\x9312 (9th Cir. 1999). This \xe2\x80\x9cright can only be temporarily denied by the\npatent or copyright laws.\xe2\x80\x9d Id. In contrast, trademark law allows for a perpetual monopoly and its use in\nthe protection of \xe2\x80\x9cphysical details and design of a product\xe2\x80\x9d must be limited to those that are\n\xe2\x80\x9cnonfunctional.\xe2\x80\x9d Id. at 1011\xe2\x80\x9312; see also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164\xe2\x80\x9365 (1995)\n(\xe2\x80\x9cIf a product\xe2\x80\x99s functional features could be used as trademarks, however, a monopoly over such\nfeatures could be obtained without regard to whether they qualify as patents and could be extended\nforever (because trademarks may be renewed in perpetuity).\xe2\x80\x9d). Thus, it is necessary for us to\ndetermine first whether Apple\xe2\x80\x99s asserted trade dresses, claiming elements from its iPhone product, are\nnonfunctional and therefore protectable.\n[10] \xe2\x80\x9cIn general terms, a product feature is functional if it is essential to the use or purpose of the\narticle or if it affects the cost or quality of the article.\xe2\x80\x9d Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,\n850 n. 10 (1982). \xe2\x80\x9cA product feature need only have some utilitarian advantage to be considered\nfunctional.\xe2\x80\x9d Disc Golf Ass\xe2\x80\x99n v. Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir. 1998). A trade dress,\ntaken as a whole, is functional if it is \xe2\x80\x9cin its particular shape because it works better in this shape.\xe2\x80\x9d\nLeatherman, 199 F.3d at 1013.\n177\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[11] \xe2\x80\x9c[C]ourts have noted that it is, and should be, more difficult to claim product configuration\ntrade dress than other forms of trade dress.\xe2\x80\x9d Id. at 1012\xe2\x80\x9313 (discussing cases). Accordingly, the\nSupreme Court and the Ninth Circuit have repeatedly found product configuration trade dresses\nfunctional and therefore non-protectable. See, e.g., TrafFix, 532 U.S. at 26\xe2\x80\x9327, 35; Secalt S.A. v. Wuxi\nShenxi Const. Mach. Co., 668 F.3d 677, 687 (9th Cir. 2012) (affirming summary judgment that a trade\ndress on a hoist design was functional); Disc Golf, 158 F.3d at 1006 (affirming summary judgment that\na trade dress on a disc entrapment design was functional).\n[12] Moreover, federal trademark registrations have been found insufficient to save product\nconfiguration trade dresses from conclusions of functionality. See, e.g., Talking Rain Beverage Co. v. S.\nBeach Beverage, 349 F.3d 601, 602 (9th Cir. 2003) (affirming summary judgment that registered trade\ndress covering a bottle design with a grip handle was functional); Tie Tech, Inc. v. Kinedyne Corp., 296\nF.3d 778, 782\xe2\x80\x9383 (9th Cir. 2002) (affirming summary judgment that registered trade dress covering a\nhandheld cutter design was functional). The Ninth Circuit has even reversed a jury verdict of nonfunctionality of a product configuration trade dress. See Leatherman, 199 F.3d at 1013 (reversing jury\nverdict that a trade dress on the overall appearance of a pocket tool was non-functional). Apple\nconceded during oral argument that it had not cited a single Ninth Circuit case that found a product\nconfiguration trade dress to be non-functional. Oral Arg. 49:0630, available at\nhttp://www.cafc.uscourts.gov/oral-argument-recordings/14\xe2\x80\x931335/all.\n[13] The Ninth Circuit\xe2\x80\x99s high bar for non-functionality frames our review of the two iPhone trade\ndresses on appeal. While the parties argue without distinguishing the two trade dresses, the\nunregistered trade dress and the registered \xe2\x80\xb2983 trade dress claim different details and are afforded\ndifferent evidentiary presumptions under the Lanham Act. We analyze the two trade dresses\nseparately below.\nA. Unregistered Trade Dress\n[14] Apple claims elements from its iPhone 3G and 3GS products to define the asserted\nunregistered trade dress:\na rectangular product with four evenly rounded corners;\na flat, clear surface covering the front of the product;\na display screen under the clear surface;\nsubstantial black borders above and below the display screen and narrower black\nborders on either side of the screen; and\nwhen the device is on, a row of small dots on the display screen, a matrix of colorful\nsquare icons with evenly rounded corners within the display screen, and an unchanging\nbottom dock of colorful square icons with evenly rounded corners set off from the\ndisplay\xe2\x80\x99s other icons.\nAppellee\xe2\x80\x99s Br. 10\xe2\x80\x9311. As this trade dress is not registered on the principal federal trademark register,\nApple \xe2\x80\x9chas the burden of proving that the claimed trade dress, taken as a whole, is not functional . . . .\xe2\x80\x9d\nSee 15 U.S.C. \xc2\xa7 1125(c)(4)(A).\n[15] Apple argues that the unregistered trade dress is nonfunctional under each of the Disc Golf\nfactors that the Ninth Circuit uses to analyze functionality: \xe2\x80\x9c(1) whether the design yields a utilitarian\nadvantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian\nadvantages of the design, and (4) whether the particular design results from a comparatively simple or\ninexpensive method of manufacture.\xe2\x80\x9d See Disc Golf, 158 F.3d at 1006. However, the Supreme Court has\nmore recently held that \xe2\x80\x9ca feature is also functional . . . when it affects the cost or quality of the device.\xe2\x80\x9d\nSee TrafFix, 532 U.S. at 33. The Supreme Court\xe2\x80\x99s holding was recognized by the Ninth Circuit as \xe2\x80\x9cshort\ncircuiting some of the Disc Golf factors.\xe2\x80\x9d Secalt, 668 F.3d at 686\xe2\x80\x9387. Nevertheless, we explore Apple\xe2\x80\x99s\n178\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ncontentions on each of the Disc Golf factors and conclude that there was insufficient evidence to\nsupport a jury finding in favor of non-functionality on any factor.\n1. Utilitarian Advantage\n[16] Apple argues that \xe2\x80\x9cthe iPhone\xe2\x80\x99s physical design did not \xe2\x80\x98contribute unusually . . . to the\nusability\xe2\x80\x99 of the device.\xe2\x80\x9d Appellee\xe2\x80\x99s Br. 61. Apple further contends that the unregistered trade dress\nwas \xe2\x80\x9cdeveloped . . . not for \xe2\x80\x98superior performance.\xe2\x80\x99\xe2\x80\x9d Id. at 62 n. 18. Neither \xe2\x80\x9cunusual usability\xe2\x80\x9d nor\n\xe2\x80\x9csuperior performance,\xe2\x80\x9d however, is the standard used by the Ninth Circuit to determine whether\nthere is any utilitarian advantage. The Ninth Circuit \xe2\x80\x9chas never held, as [plaintiff] suggests, that the\nproduct feature must provide superior utilitarian advantages. To the contrary, [the Ninth Circuit] has\nsuggested that in order to establish nonfunctionality the party with the burden must demonstrate that\nthe product feature serves no purpose other than identification.\xe2\x80\x9d Disc Golf, 158 F.3d at 1007 (internal\nquotation marks omitted).\n[17] The requirement that the unregistered trade dress \xe2\x80\x9cserves no purpose other than\nidentification\xe2\x80\x9d cannot be reasonably inferred from the evidence. Apple emphasizes a single aspect of its\ndesign, beauty, to imply the lack of other advantages. But the evidence showed that the iPhone\xe2\x80\x99s design\npursued more than just beauty. Specifically, Apple\xe2\x80\x99s executive testified that the theme for the design of\nthe iPhone was:\nto create a new breakthrough design for a phone that was beautiful and simple and easy\nto use and created a beautiful, smooth surface that had a touchscreen and went right to\nthe rim with the bezel around it and looking for a look that we found was beautiful and\neasy to use and appealing.\nJ.A. 40722\xe2\x80\x9323 (emphases added).\n[18] Moreover, Samsung cites extensive evidence in the record that showed the usability function\nof every single element in the unregistered trade dress. For example, rounded corners improve\n\xe2\x80\x9cpocketability\xe2\x80\x9d and \xe2\x80\x9cdurability\xe2\x80\x9d and rectangular shape maximizes the display that can be\naccommodated. J.A. 40869\xe2\x80\x9370; J.A. 42612\xe2\x80\x9313. A flat clear surface on the front of the phone facilitates\ntouch operation by fingers over a large display. J.A. 42616\xe2\x80\x9317. The bezel protects the glass from impact\nwhen the phone is dropped. J.A. 40495. The borders around the display are sized to accommodate\nother components while minimizing the overall product dimensions. J.A. 40872. The row of dots in the\nuser interface indicates multiple pages of application screens that are available. J.A. 41452\xe2\x80\x9353. The\nicons allow users to differentiate the applications available to the users and the bottom dock of\nunchanging icons allows for quick access to the most commonly used applications. J.A. 42560\xe2\x80\x9361; J.A.\n40869\xe2\x80\x9370. Apple rebuts none of this evidence.\n[19] Apple conceded during oral argument that its trade dress \xe2\x80\x9cimproved the quality [of the\niPhone] in some respects.\xe2\x80\x9d Oral Arg. 56:09\xe2\x80\x9317. It is thus clear that the unregistered trade dress has a\nutilitarian advantage. See Disc Golf, 158 F.3d at 1007.\n2. Alternative Designs\n[20] The next factor requires that purported alternative designs \xe2\x80\x9coffer exactly the same features\xe2\x80\x9d\nas the asserted trade dress in order to show non-functionality. Tie Tech, 296 F.3d at 786 (quoting\nLeatherman, 199 F.3d at 1013\xe2\x80\x9314). A manufacturer \xe2\x80\x9cdoes not have rights under trade dress law to\ncompel its competitors to resort to alternative designs which have a different set of advantages and\ndisadvantages.\xe2\x80\x9d Id.\n[21] Apple, while asserting that there were \xe2\x80\x9cnumerous alternative designs,\xe2\x80\x9d fails to show that any\nof these alternatives offered exactly the same features as the asserted trade dress. Apple simply\ncatalogs the mere existence of other design possibilities embodied in rejected iPhone prototypes and\nother manufacturers\xe2\x80\x99 smartphones. The \xe2\x80\x9cmere existence\xe2\x80\x9d of other designs, however, does not prove\nthat the unregistered trade dress is non-functional. See Talking Rain, 349 F.3d at 604.\n179\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n3. Advertising of Utilitarian Advantages\n[22] \xe2\x80\x9cIf a seller advertises the utilitarian advantages of a particular feature, this constitutes\nstrong evidence of functionality.\xe2\x80\x9d Disc Golf, 158 F.3d at 1009. An \xe2\x80\x9cinference\xe2\x80\x9d of a product feature\xe2\x80\x99s\nutility in the plaintiff\xe2\x80\x99s advertisement is enough to weigh in favor of functionality of a trade dress\nencompassing that feature. Id.\n[23] Apple argues that its advertising was \xe2\x80\x9c[f]ar from touting any utilitarian advantage of the\niPhone design . . . .\xe2\x80\x9d Appellee\xe2\x80\x99s Br. 60. Apple relies on its executive\xe2\x80\x99s testimony that an iPhone\nadvertisement, portraying \xe2\x80\x9cthe distinctive design very clearly,\xe2\x80\x9d was based on Apple\xe2\x80\x99s \xe2\x80\x9cproduct as hero\xe2\x80\x9d\napproach. Id. (quoting J.A. 40641\xe2\x80\x9342; 40644:22). The \xe2\x80\x9cproduct as hero\xe2\x80\x9d approach refers to Apple\xe2\x80\x99s\nstylistic choice of making \xe2\x80\x9cthe product the biggest, clearest, most obvious thing in [its] advertisements,\noften at the expense of anything else around it, to remove all the other elements of communication so\n[the viewer] see[s] the product most predominantly in the marketing.\xe2\x80\x9d J.A. 40641\xe2\x80\x9342.\n[24] Apple\xe2\x80\x99s arguments focusing on its stylistic choice, however, fail to address the substance of\nits advertisements. The substance of the iPhone advertisement relied upon by Apple gave viewers \xe2\x80\x9cthe\nability to see a bit about how it might work,\xe2\x80\x9d for example, \xe2\x80\x9chow flicking and scrolling and tapping and\nall these multitouch ideas simply [sic].\xe2\x80\x9d J.A. 40644:23\xe2\x80\x9340645:2. Another advertisement cited by Apple\nsimilarly displayed the message, \xe2\x80\x9c[t]ouching is believing,\xe2\x80\x9d under a picture showing a user\xe2\x80\x99s hand\ninteracting with the graphical user interface of an iPhone. J.A. 24896. Apple fails to show that, on the\nsubstance, these demonstrations of the user interface on iPhone\xe2\x80\x99s touch screen involved the elements\nclaimed in Apple\xe2\x80\x99s unregistered trade dress and why they were not touting the utilitarian advantage of\nthe unregistered trade dress.\n4. Method of Manufacture\n[25] The fourth factor considers whether a functional benefit in the asserted trade dress arises\nfrom \xe2\x80\x9ceconomies in manufacture or use,\xe2\x80\x9d such as being \xe2\x80\x9crelatively simple or inexpensive to\nmanufacture.\xe2\x80\x9d Disc Golf, 158 F.3d at 1009.\n[26] Apple contends that \xe2\x80\x9c[t]he iPhone design did not result from a \xe2\x80\x98comparatively simple or\ninexpensive method of manufacture\xe2\x80\x99\xe2\x80\x9d because Apple experienced manufacturing challenges. Appellee\xe2\x80\x99s\nBr. 61 (quoting Talking Rain, 349 F.3d at 603). Apple\xe2\x80\x99s manufacturing challenges, however, resulted\nfrom the durability considerations for the iPhone and not from the design of the unregistered trade\ndress. According to Apple\xe2\x80\x99s witnesses, difficulties resulted from its choices of materials in using\n\xe2\x80\x9chardened steel\xe2\x80\x9d; \xe2\x80\x9cvery high, high grade of steel\xe2\x80\x9d; and, \xe2\x80\x9cglass that was not breakable enough, scratch\nresistant enough.\xe2\x80\x9d Id. (quoting J.A. 40495\xe2\x80\x9396, 41097). These materials were chosen, for example, for\nthe iPhone to survive a drop:\nIf you drop this, you don\xe2\x80\x99t have to worry about the ground hitting the glass. You have to\nworry about the band of steel surrounding the glass hitting the glass . . . . In order to, to\nmake it work, we had to use very high, high grade of steel because we couldn\xe2\x80\x99t have it\nsort of deflecting into the glass.\nJ.A. 40495\xe2\x80\x9396. The durability advantages that resulted from the manufacturing challenges, however,\nare outside the scope of what Apple defines as its unregistered trade dress. For the design elements\nthat comprise Apple\xe2\x80\x99s unregistered trade dress, Apple points to no evidence in the record to show they\nwere not relatively simple or inexpensive to manufacture. See Disc Golf, 158 F.3d at 1009 (\xe2\x80\x9c[Plaintiff],\nwhich has the burden of proof, offered no evidence that the [asserted] design was not relatively simple\nor inexpensive to manufacture.\xe2\x80\x9d).\n[27] In sum, Apple has failed to show that there was substantial evidence in the record to support\na jury finding in favor of non-functionality for the unregistered trade dress on any of the Disc Golf\nfactors. Apple fails to rebut the evidence that the elements in the unregistered trade dress serve the\nfunctional purpose of improving usability. Rather, Apple focuses on the \xe2\x80\x9cbeauty\xe2\x80\x9d of its design, even\n180\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthough Apple pursued both \xe2\x80\x9cbeauty\xe2\x80\x9d and functionality in the design of the iPhone. We therefore\nreverse the district court\xe2\x80\x99s denial of Samsung\xe2\x80\x99s motion for judgment as a matter of law that the\nunregistered trade dress is functional and therefore not protectable.\nB. The Registered \xe2\x80\xb2983 Trade Dress\n[28] In contrast to the unregistered trade dress, the \xe2\x80\xb2983 trade dress is a federally registered\ntrademark. The federal trademark registration provides \xe2\x80\x9cprima facie evidence\xe2\x80\x9d of non-functionality.\nTie Tech, 296 F.3d at 782\xe2\x80\x9383. This presumption \xe2\x80\x9cshift[s] the burden of production to the defendant . . .\nto provide evidence of functionality.\xe2\x80\x9d Id. at 783. Once this presumption is overcome, the registration\nloses its legal significance on the issue of functionality. Id. (\xe2\x80\x9cIn the face of sufficient and undisputed\nfacts demonstrating functionality, . . . the registration loses its evidentiary significance.\xe2\x80\x9d).\n[29] The \xe2\x80\xb2983 trade dress claims the design details in each of the sixteen icons on the iPhone\xe2\x80\x99s\nhome screen framed by the iPhone\xe2\x80\x99s rounded-rectangular shape with silver edges and a black\nbackground:\nThe first icon depicts the letters \xe2\x80\x9cSMS\xe2\x80\x9d in green inside a white speech bubble on a\ngreen background;\n...\nthe seventh icon depicts a map with yellow and orange roads, a pin with a red head,\nand a red-and-blue road sign with the numeral \xe2\x80\x9c280\xe2\x80\x9d in white;\n...\nthe sixteenth icon depicts the distinctive configuration of applicant\xe2\x80\x99s media player\ndevice in white over an orange background.\n\xe2\x80\xb2983 trade dress (omitting thirteen other icon design details for brevity).\n[30] It is clear that individual elements claimed by the \xe2\x80\xb2983 trade dress are functional. For\nexample, there is no dispute that the claimed details such as \xe2\x80\x9cthe seventh icon depicts a map with\nyellow and orange roads, a pin with a red head, and a red-and-blue road sign with the numeral \xe2\x80\x98280\xe2\x80\x99 in\nwhite\xe2\x80\x9d are functional. See id. Apple\xe2\x80\x99s user interface expert testified on how icon designs promote\nusability. This expert agreed that \xe2\x80\x9cthe whole point of an icon on a smartphone is to communicate to the\nconsumer using that product, that if they hit that icon, certain functionality will occur on the phone.\xe2\x80\x9d\nJ.A. 41458\xe2\x80\x9359. The expert further explained that icons are \xe2\x80\x9c[v]isual shorthand for something\xe2\x80\x9d and that\n\xe2\x80\x9crectangular containers\xe2\x80\x9d for icons provide \xe2\x80\x9cmore real estate\xe2\x80\x9d to accommodate the icon design. J.A.\n41459, 41476. Apple rebuts none of this evidence.\n[31] Apple contends instead that Samsung improperly disaggregates the \xe2\x80\xb2983 trade dress into\nindividual elements to argue functionality. But Apple fails to explain how the total combination of the\nsixteen icon designs in the context of iPhone\xe2\x80\x99s screen-dominated rounded-rectangular shape\xe2\x80\x94all part\nof the iPhone\xe2\x80\x99s \xe2\x80\x9ceasy to use\xe2\x80\x9d design theme\xe2\x80\x94somehow negates the undisputed usability function of the\nindividual elements. See J.A. 40722\xe2\x80\x9323. Apple\xe2\x80\x99s own brief even relies on its expert\xe2\x80\x99s testimony about\nthe \xe2\x80\x9cinstant recognizability due to highly intuitive icon usage\xe2\x80\x9d on \xe2\x80\x9cthe home screen of the iPhone.\xe2\x80\x9d J.A.\n41484; Appellee\xe2\x80\x99s Br. 43, 70, 71 (quoting J.A. 41484). Apple\xe2\x80\x99s expert was discussing an analysis of the\niPhone\xe2\x80\x99s overall combination of icon designs that allowed a user to recognize quickly particular\napplications to use. J.A. 41484, 25487. The iPhone\xe2\x80\x99s usability advantage from the combination of its\nicon designs shows that the \xe2\x80\xb2983 trade dress viewed as a whole \xe2\x80\x9cis nothing other than the assemblage\nof functional parts . . . .\xe2\x80\x9d See Tie Tech, 296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013). There is\nno \xe2\x80\x9cseparate \xe2\x80\x98overall appearance\xe2\x80\x99 which is non-functional.\xe2\x80\x9d Id. (quoting Leatherman, 199 F.3d at 1013).\nThe undisputed facts thus demonstrate the functionality of the \xe2\x80\xb2983 trade dress. \xe2\x80\x9cIn the face of\nsufficient and undisputed facts demonstrating functionality, as in our case, the registration loses its\nevidentiary significance.\xe2\x80\x9d See id. at 783.\n181\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[32] The burden thus shifts back to Apple. See id. But Apple offers no analysis of the icon designs\nclaimed by the \xe2\x80\xb2983 trade dress. Rather, Apple argues generically for its two trade dresses without\ndistinction under the Disc Golf factors. Among Apple\xe2\x80\x99s lengthy citations to the record, we can find only\ntwo pieces of information that involve icon designs. One is Apple\xe2\x80\x99s user interface expert discussing\nother possible icon designs. The other is a citation to a print iPhone advertisement that included the\nicon designs claimed in the \xe2\x80\xb2983 trade dress. These two citations, viewed in the most favorable light to\nApple, would be relevant to only two of the Disc Golf factors: \xe2\x80\x9calternative design\xe2\x80\x9d and \xe2\x80\x9cadvertising.\xe2\x80\x9d But\nthe cited evidence suffers from the same defects as discussed in subsections I.A.2 and I.A.3. Specifically,\nthe expert\xe2\x80\x99s discussion of other icon design possibilities does not show that the other design\npossibilities \xe2\x80\x9coffer[ed] exactly the same features\xe2\x80\x9d as the \xe2\x80\xb2983 trade dress. See Tie Tech, 296 F.3d at 786\n(quoting Leatherman, 199 F.3d at 1013\xe2\x80\x9314). The print iPhone advertisement also fails to establish that,\non the substance, it was not touting the utilitarian advantage of the \xe2\x80\xb2983 trade dress. The evidence\ncited by Apple therefore does not show the non-functionality of the \xe2\x80\xb2983 trade dress.\n[33] In sum, the undisputed evidence shows the functionality of the registered \xe2\x80\xb2983 trade dress\nand shifts the burden of proving non-functionality back to Apple. Apple, however, has failed to show\nthat there was substantial evidence in the record to support a jury finding in favor of non-functionality\nfor the \xe2\x80\xb2983 trade dress on any of the Disc Golf factors. We therefore reverse the district court\xe2\x80\x99s denial\nof Samsung\xe2\x80\x99s motion for judgment as a matter of law that the \xe2\x80\xb2983 trade dress is functional and\ntherefore not protectable.\n[34] Because we conclude that the jury\xe2\x80\x99s findings of non-functionality of the asserted trade\ndresses were not supported by substantial evidence, we do not reach Samsung\xe2\x80\x99s arguments on the\nfame and likely dilution of the asserted trade dresses, the Patent Clause of the Constitution, or the\ndilution damages.\n{The Court went on to affirm all remaining district court holdings}.\niv.\n\nSeventh Circuit\n\nSpecialized Seating, Inc. v. Greenwich Industries, L.P.\n616 F.3d 722 (7th Cir. 2010)\n{Declaratory defendant Greenwich Industries, L.P., doing business under the name Clarin, owned\nPTO Registration No. 2,803,875 for a trademark for folding chairs consisting of \xe2\x80\x9ca configuration of a\nfolding chair containing an X-frame profile, a flat channel flanked on each side by rolled edges around\nthe perimeter of the chair, two cross bars with a flat channel and rolled edges at the back bottom of the\nchair, one cross bar with a flat channel and rolled edges on the front bottom, protruding feet, and a\nback support, the outer sides of which slant inward.\xe2\x80\x9d An image of the folding chair configuration is\nprovided below. Specialized Seating, Inc. (\xe2\x80\x9cSpecialized\xe2\x80\x9d) sought a declaratory judgment that its folding\nchair design did not infringe Clarin\xe2\x80\x99s design. Specialized argued that Clarin\xe2\x80\x99s mark was functional. The\ndistrict court held a bench trial and agreed, ordering that the registration be cancelled. Clarin\nappealed.}\n\n182\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nEASTERBROOK, Circuit Judge\n....\n[1] The [district] judge found that [Clarin\xe2\x80\x99s] x-frame construction is functional because it was\ndesigned to be an optimal tradeoff between a chair\xe2\x80\x99s weight (and thus its cost, since lighter chairs use\nless steel) and its strength; an x-frame chair also folds itself naturally when knocked over (an\nimportant consideration for large auditoriums, where it is vital that chairs not impede exit if a fire or\npanic breaks out); the flat channel at the seat\xe2\x80\x99s edge, where the attachment to the frame slides so that\nthe chair can fold, was designed for strength and attaching hooks to link a chair with its nearest\nneighbor; the front and back cross bars contribute strength (and allow thinner tubing to be used in the\nrest of the frame); and the inward-sloping frame of the back support allows the chair to support\ngreater vertical loads than Clarin\xe2\x80\x99s older \xe2\x80\x9ca-back\xe2\x80\x9d design, which the \xe2\x80\x9cb-back\xe2\x80\x9d design, depicted in the\ntrademark registration, succeeded. The a-back design is on the left and the b-back on the right:\n\n[2] Clarin chairs with a-back designs failed when the audience at rock concerts, seeking a better\nview, sat on top of the chairs\xe2\x80\x99 backs and put their feet on the seats. The tubing buckled at the bend in\nthe frame. The b-back design is less likely to buckle when someone sits on it, and it also produces a\nsomewhat wider back, which concert promoters see as a benefit. (Patrons sometimes try to get closer\nto the stage by stepping through rows of chairs. The gap between b-back chairs is smaller, so they are\nmore effective at keeping crowds in place.)\n[3] Having concluded not only that the overall design of Clarin\xe2\x80\x99s chair is functional, but also that\neach feature is functional, the district judge added that Clarin had defrauded the Patent and Trademark\nOffice by giving misleadingly incomplete answers to the trademark examiner\xe2\x80\x99s questions. The\nexaminer initially turned down Clarin\xe2\x80\x99s proposal to register the design as a trademark, observing that\nthe design appeared to be functional. Clarin replied that the design was chosen for aesthetic rather\nthan functional reasons. (This was not a complete answer, as attractiveness is a kind of function. See\nJay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 860\xe2\x80\x9361 (7th Cir. 2010). But we need not pursue that\nsubject.) Clarin observed that a patent it held on an x-frame chair, No. 1,943,058, issued in 1934, did\nnot include all of the features in the mark\xe2\x80\x99s design. What Clarin did not tell the examiner is that it held\nthree other patents on x-frame designs: No. 1,600,248, issued in 1926; No. 2,137,803, issued in 1938;\nand No. 3,127,218, issued in 1964. The district judge concluded that the four patents collectively cover\nevery feature of the design submitted for a trademark except the b-back, and that as the b-back is a\nfunctional improvement over the a-back Clarin should have disclosed all of these utility patents. Had it\ndone so, the judge thought, the examiner would have refused to register the proposed mark.\n....\n[4] The district judge started from the proposition, which the Supreme Court articulated in\nTrafFix, that claims in an expired utility patent presumptively are functional. Since utility patents are\nsupposed to be restricted to inventions that have utility, and thus are functional, that\xe2\x80\x99s a sensible\nstarting point\xe2\x80\x94and since inventions covered by utility patents pass into the public domain when the\npatent expires, it is inappropriate to use trademark law to afford extended protection to a patented\ninvention. See also Jay Franco, 615 F.3d at 857\xe2\x80\x9359. Clarin itself obtained four utility patents for aspects\nof the x-frame folding chair. These patents disclose every aspect of the asserted trademark design\nexcept for the b-back. And the district judge did not commit a clear error by concluding that the b-back\ndesign is a functional improvement over the a-back design. This means that the trademark design is\nfunctional as a unit, and that every important aspect of it is independently functional. It looks the way\n183\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nit does in order to be a better chair, not in order to be a better way of identifying who made it (the\nfunction of a trademark).\n[5] We do not doubt that there are many other available functional designs. Sometimes the\nfunction of the functionality doctrine is to prevent firms from appropriating basic forms (such as the\ncircle) that go into many designs. Our contemporaneous opinion in Jay Franco discusses that aspect of\nthe functionality doctrine. This does not imply that preserving basic elements for the public domain is\nthe doctrine\xe2\x80\x99s only role.\n[6] Another goal, as TrafFix stressed, is to separate the spheres of patent and trademark law, and\nto ensure that the term of a patent is not extended beyond the period authorized by the legislature. A\ndesign such as Clarin\xe2\x80\x99s x-frame chair is functional not because it is the only way to do things, but\nbecause it represents one of many solutions to a problem. Clarin tells us that other designs are\nstronger, or thinner, or less likely to collapse when someone sits on the backrest, or lighter and so\neasier to carry and set up. Granted. But as Clarin\xe2\x80\x99s \xe2\x80\x98248 patent states, the x-frame design achieves a\nfavorable strength-to-weight ratio. Plastic chairs are lighter but weaker. Y-frame chairs are stronger\nbut use more metal (and so are heavier and more expensive); some alternative designs must be made\nwith box-shaped metal pieces to achieve strength, and this adds to weight and the cost of fabrication.\nThe list of alternative designs is very long, and it is easy to see why hundreds of different-looking\nfolding chairs are on the market.\n[7] What this says to us is that all of the designs are functional, in the sense that they represent\ndifferent compromises along the axes of weight, strength, kind of material, ease of setup, ability to\nconnect (\xe2\x80\x9cgang\xe2\x80\x9d) the chairs together for maximum seating density, and so on. A novel or distinctive\nselection of attributes on these many dimensions can be protected for a time by a utility patent or a\ndesign patent, but it cannot be protected forever as one producer\xe2\x80\x99s trade dress. When the patent\nexpires, other firms are free to copy the design to the last detail in order to increase competition and\ndrive down the price that consumers pay. See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489\nU.S. 141(1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) . . . .\n[8] Because the district court did not commit clear error in finding Clarin\xe2\x80\x99s design to be functional,\nit is unnecessary to decide whether Clarin committed fraud on the Patent and Trademark Office . . . .\nAFFIRMED\nc.\n\nAesthetic Functionality\n\nAs the Supreme Court briefly explained in TrafFix, a product (or packaging) feature that performs\nno technical, mechanical function may nevertheless be barred from protection on the ground that it is\n\xe2\x80\x9caesthetically functional.\xe2\x80\x9d Under TrafFix, the test to determine whether a product feature is\naesthetically functional is not the Inwood test. Instead, courts should ask whether there are a limited\nrange of alternative designs available to competitors such that exclusive rights in the product feature\nwould put competitors at a significant non-reputation-related competitive disadvantage. What might\nhave prompted courts to abandon the Inwood test in the aesthetic functionality context?\nA few classic illustrations of aesthetically functional product configuration from the Restatement\n(Third) of Unfair Competition may help to convey the general idea of aesthetic functionality:\n8. A is the first seller to market candy intended for Valentine\xe2\x80\x99s Day in heart-shaped boxes.\nEvidence establishes that the shape of the box is an important factor in the appeal of the\nproduct to a significant number of consumers. Because there are no alternative designs\ncapable of satisfying the aesthetic desires of these prospective purchasers, the design of\nthe box is functional . . . .\n9. A manufactures outdoor lighting fixtures intended for mounting on the walls of\ncommercial buildings to illuminate adjacent areas. The evidence establishes that\n184\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\narchitectural compatibility with the building is an important factor in the purchase of\nsuch fixtures and that A\xe2\x80\x99s product is considered to be aesthetically compatible with\ncontemporary architecture. The evidence also establishes that only a limited number of\ndesigns are considered compatible with the type of buildings on which A\xe2\x80\x99s product is\nused. Because of the limited range of alternative designs available to competitors, a court\nmay properly conclude that the design of the lighting fixture is functional under the rule\nstated in this Section.\nRestatement (Third) of Unfair Competition \xc2\xa7 17.\nA few examples from the aesthetic functionality case law may also help to introduce the doctrine:\n\xe2\x80\xa2\n\nBritish Seagull Ltd. v. Brunswick Corp., 35 F.3d 1527 (Fed. Cir. 1994) (affirming the TTAB\xe2\x80\x99s\nrefusal to register the color black for outboard marine engines and approving of the Board\xe2\x80\x99s\nreasoning that \xe2\x80\x9calthough the color black is not functional in the sense that it makes these\nengines work better, or that it makes them easier or less expensive to manufacture, black is\nmore desirable from the perspective of prospective purchasers because it is color compatible\nwith a wider variety of boat colors and because objects colored black appear smaller than\nthey do when they are painted other lighter or brighter colors.\xe2\x80\x9d).\n\n\xe2\x80\xa2\n\nIn re Florists\xe2\x80\x99 Transworld Delivery, Inc., Serial No. 77590475 (TTAB Mar. 28, 2013)\n(precedential) (affirming examiner\xe2\x80\x99s rejection of application to register the color black for\nboxes containing flowers and floral arrangements; \xe2\x80\x9c[c]ompetitors who, for example, want\nto offer flowers for bereavement purposes, Halloween or to imbue an element of\nelegance or luxury to their presentations through packaging therefor will be disadvantaged\nif they must avoid using the color black in such packaging.\xe2\x80\x9d).\n\n\xe2\x80\xa2\n\nDeere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 217 U.S.P.Q. 252 (S.D. Iowa 1982) (finding the\ncolor \xe2\x80\x9cJohn Deere green\xe2\x80\x9d to be aesthetically functional as used on farm loaders because\nfarmers prefer to match the color of their loaders and tractors). But see Deere & Co. v. FIMCO\nInc., 239 F.Supp.3d 964, 997-1003 (W.D. Ky. 2017) (finding John Deere\xe2\x80\x99s green and yellow\ncolor scheme to be non-functional and distinguishing Farmhand on grounds that (1) it was\nadjudicated before Qualitex, TrafFix, and the Sixth Circuit\xe2\x80\x99s establishment of the \xe2\x80\x9ccomparable\nalternatives\xe2\x80\x9d and \xe2\x80\x9ceffective competition\xe2\x80\x9d tests for aesthetic functionality, and (2) Deere\nsought in Farmhand to prevent competitors from using \xe2\x80\x9cJohn Deere green\xe2\x80\x9d either alone or in\ncombination with any other color, whereas Deere seeks here merely to prevent competitors\nfrom using a combination of green and yellow).\n\n\xe2\x80\xa2\n\nIn re Ferris Corp., 59 U.S.P.Q.2d 1587 (TTAB 2000) (not citable as precedent) (affirming\nexaminer\xe2\x80\x99s refusal to register the color pink for surgical bandages; the color is \xe2\x80\x9cde jure\nfunctional\xe2\x80\x9d in that it blends well with the natural color of certain human ethnicities\xe2\x80\x99 skin and\nthere are no viable alternative colors available).\n\nOf the three opinions that follow, Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952), is\nsomewhat notorious for having proposed a definition of aesthetic functionality that, when interpreted\nloosely, could end up prohibiting the protection of anything that was \xe2\x80\x9can important ingredient in the\ncommercial success of the product,\xe2\x80\x9d including the trademark itself. The Ninth Circuit no longer follows\nPagliero. See, e.g., Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1072 (9th Cir. 2006)\n(\xe2\x80\x9cIn the case of a claim of aesthetic functionality, an alternative test inquires whether protection of the\nfeature as a trademark would impose a significant non-reputation-related competitive disadvantage.\xe2\x80\x9d).\nIn Wallace Int\xe2\x80\x99l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990), the Second\nCircuit explicitly rejected Pagliero. In Christian Louboutin S.A. v. Yves Saint Laurent America Holding,\nInc., 696 F.3d 206, 218- (2d Cir. 2012), the Second Circuit was asked to determine whether a particular\ncolor applied to the outsole (the underside) of shoes was aesthetically functional.\n185\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nTwo final points. First, not all circuits are receptive to the concept of aesthetic functionality. See,\ne.g., Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 487-88\n(5th Cir. 2008) (\xe2\x80\x9cWe do not believe that the Court\xe2\x80\x99s dictum in TrafFix requires us to abandon our longsettled view rejecting recognition of aesthetic functionality.\xe2\x80\x9d). Why might these circuits refuse to\nconsider aesthetic functionality as a special case of functionality? Second, and related, the student\nhoping to understand the essence of aesthetic functionality doctrine may do well not to focus too much\non the term \xe2\x80\x9caesthetic\xe2\x80\x9d or even on the term \xe2\x80\x9cfunctionality.\xe2\x80\x9d \xe2\x80\x9cAesthetic functionality\xe2\x80\x9d is a horribly\nchosen name for a doctrine that seeks to make up for one particular shortcoming of utilitarian\nfunctionality doctrine, which is that it is simply not well designed to analyze non-utilitarian, nonmechanical product features. Aesthetic functionality doctrine seeks to accomplish the same\nprocompetitive goals as utilitarian functionality doctrine, but it does so precisely with respect to nonmechanical product features, be they strictly \xe2\x80\x9caesthetic\xe2\x80\x9d or not, that all competitors must be able to\ninclude in their products in order to compete effectively. See generally Justin Hughes, Cognitive and\nAesthetic Functionality in Trademark Law, 36 CARDOZO L. REV. 1227 (2015).\ni.\n\nFoundational Cases\n\nWallace Hibiscus (L) and Tepco Hibiscus (R)\nPagliero v. Wallace China Co.\n198 F.2d 339, 343-44 (9th Cir. 1952)\n{Wallace China Co. (\xe2\x80\x9cWallace\xe2\x80\x9d) produced hotel china imprinted with various designs. Wallace\xe2\x80\x99s\nbusiness model involved selling initial sets of hotel china at a relatively low price and making\nsignificant profits on selling replacement pieces (made necessary by breakage) bearing matching\ndesigns. Pagliero Brothers, doing business as Technical Porcelain and Chinaware Company (\xe2\x80\x9cTepco\xe2\x80\x9d),\nproduced low cost hotel china bearing designs substantially identical to Wallace\xe2\x80\x99s. This undercut\nWallace\xe2\x80\x99s business model. Wallace brought federal trademark and other causes of action against Tepco\nfor this and other conduct by Tepco. The district court found infringement and enjoined Tepco from\nproducing china bearing designs similar to Wallace\xe2\x80\x99s. Excerpted here is the Ninth Circuit\xe2\x80\x99s discussion\nof the aesthetic functionality of Wallace\xe2\x80\x99s designs.}\nORR, Circuit Judge\n....\n[1] Tepco\xe2\x80\x99s use of the designs in question cannot be enjoined even though it be assumed that\nWallace can establish secondary meaning for them. Imitation of the physical details and designs of a\ncompetitor\xe2\x80\x99s product may be actionable, if the particular features imitated are \xe2\x80\x98non-functional\xe2\x80\x99 and\nhave acquired a secondary meaning. Crescent Tool Co. v. Kilborn & Bishop Co., 2d Cir., 1917, 247 F. 299.\nBut, where the features are \xe2\x80\x98functional\xe2\x80\x99 there is normally no right to relief. \xe2\x80\x98Functional\xe2\x80\x99 in this sense\nmight be said to connote other than a trade-mark purpose. If the particular feature is an important\ningredient in the commercial success of the product, the interest in free competition permits its\n186\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nimitation in the absence of a patent or copyright. On the other hand, where the feature or, more aptly,\ndesign, is a mere arbitrary embellishment, a form of dress for the goods primarily adopted for\npurposes of identification and individuality and, hence, unrelated to basic consumer demands in\nconnection with the product, imitation may be forbidden where the requisite showing of secondary\nmeaning is made. Under such circumstances, since effective competition may be undertaken without\nimitation, the law grants protection.\n[2] These criteria require the classification of the designs in question here as functional. Affidavits\nintroduced by Wallace repeat over and over again that one of the essential selling features of hotel\nchina, if, indeed, not the primary, is the design. The attractiveness and eye-appeal of the design sells\nthe china. Moreover, from the standpoint of the purchaser china satisfies a demand for the aesthetic as\nwell as for the utilitarian, and the design on china is, at least in part, the response to such demand. The\ngranting of relief in this type of situation would render Wallace immune from the most direct and\neffective competition with regard to these lines of china. It seems clear that these designs are not\nmerely indicia of source, as that one who copies them can have no real purpose other than to trade on\nhis competitor\xe2\x80\x99s reputation. On the contrary, to imitate is to compete in this type of situation. Of\ncourse, Tepco can also compete by developing designs even more aesthetically satisfying, but the\npossibility that an alternative product might be developed has never been considered a barrier to\npermitting imitation competition in other types of cases. The law encourages competition not only in\ncreativeness but in economy of manufacture and distribution as well. Hence, the design being a\nfunctional feature of the china, we find it unnecessary to inquire into the adequacy of the showing\nmade as to secondary meaning of the designs.\n{The Ninth Circuit ordered the district court\xe2\x80\x99s injunction to be modified to remove all reference to\nTepco\xe2\x80\x99s use of designs similar to Wallace\xe2\x80\x99s.}\n______________________________________________________________________________\n\nWallace \xe2\x80\x9cGrande Baroque\xe2\x80\x9d Silverware\nIn reading Wallace Int\xe2\x80\x99l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990),\nconsider the following questions:\n\xe2\x80\xa2\n\nHow should a court define the relevant market for purposes of assessing competitive alternatives\nto the plaintiff\xe2\x80\x99s design? What exactly is wrong with Wallace\xe2\x80\x99s argument that it merely wants to\nclaim the baroque style of silverware, and that countless other styles of silverware are still\navailable for competitors to use?\n\n187\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\xa2\n\nEven if we are able reliably to define the relevant marketplace, how many alternative designs\nshould be available for a court to determine that the plaintiff\xe2\x80\x99s design is not aesthetically\nfunctional?\n\nWallace Int\xe2\x80\x99l Silversmiths, Inc. v. Godinger Silver Art Co.\n916 F.2d 76 (2d Cir. 1990)\nWINTER, Circuit Judge:\n[1] Wallace International Silversmiths (\xe2\x80\x9cWallace\xe2\x80\x9d) appeals from Judge Haight\xe2\x80\x99s denial of its\nmotion for a preliminary injunction under Section 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a) (1988),\nprohibiting Godinger Silver Art Co., Inc. (\xe2\x80\x9cGodinger\xe2\x80\x9d) from marketing a line of silverware with\nornamentation that is substantially similar to Wallace\xe2\x80\x99s GRANDE BAROQUE line. Judge Haight held that\nthe GRANDE BAROQUE design is \xe2\x80\x9ca functional feature of \xe2\x80\x98Baroque\xe2\x80\x99 style silverware\xe2\x80\x9d and thus not\nsubject to protection as a trademark. We affirm.\nBACKGROUND\n[2] Wallace, a Delaware corporation, has sold sterling silver products for over one hundred years.\nIts GRANDE BAROQUE pattern was introduced in 1941 and is still one of the best-selling silverware\nlines in America. Made of fine sterling silver, a complete place setting costs several thousand dollars.\nTotal sales of GRANDE BAROQUE silverware have exceeded fifty million dollars. The GRANDE\nBAROQUE pattern is fairly described as \xe2\x80\x9cornate, massive and flowery [with] indented, flowery roots\nand scrolls and curls along the side of the shaft, and flower arrangements along the front of the shaft.\xe2\x80\x9d\nWallace owns a trademark registration for the GRANDE BAROQUE name as applied to sterling silver\nflatware and hollowware. The GRANDE BAROQUE design is not patented, but on December 11, 1989,\nWallace filed an application for trademark registration for the GRANDE BAROQUE pattern. This\napplication is still pending.\n[3] Godinger, a New York corporation, is a manufacturer of silver-plated products. The company\nhas recently begun to market a line of baroque-style silver-plated serving pieces. The suggested retail\nprice of the set of four serving pieces is approximately twenty dollars. Godinger advertised its new line\nunder the name 20TH CENTURY BAROQUE and planned to introduce it at the Annual New York\nTabletop and Accessories Show, the principal industry trade show at which orders for the coming year\nare taken. Like Wallace\xe2\x80\x99s silverware, Godinger\xe2\x80\x99s pattern contains typical baroque elements including\nan indented root, scrolls, curls, and flowers. The arrangement of these elements approximates\nWallace\xe2\x80\x99s design in many ways, although their dimensions are noticeably different. The most obvious\ndifference between the two designs is that the Godinger pattern extends further down the handle than\nthe Wallace pattern does. The Wallace pattern also tapers from the top of the handle to the stem while\nthe Godinger pattern appears bulkier overall and maintains its bulk throughout the decorated portion\nof the handle. Although the record does not disclose the exact circumstances under which Godinger\xe2\x80\x99s\nserving pieces were created, Godinger admits that its designers were \xe2\x80\x9ccertainly inspired by and aware\nof [the Wallace] design when [they] created [the 20TH CENTURY BAROQUE] design.\xe2\x80\x9d\n[4] On the afternoon of April 23, 1990, Leonard Florence of Wallace learned from a wholesale\ncustomer, Michael C. Fina Company, that Godinger had placed an advertisement for its 20TH CENTURY\nBAROQUE serving pieces in an industry trade magazine. George Fina, the company\xe2\x80\x99s president, said\nthat he was \xe2\x80\x9cconfused\xe2\x80\x9d when he saw what he believed to be a pattern identical to GRANDE BAROQUE\nbeing advertised by another company. He asked Mr. Florence whether Wallace had licensed the design\nto Godinger or whether \xe2\x80\x9cthe Godinger product was simply a \xe2\x80\x98knock-off.\xe2\x80\x99\xe2\x80\x9d Two days after this\nconversation, Wallace filed the complaint in the instant matter stating various federal trademark and\nstate unfair competition claims. Wallace also filed a motion for a temporary restraining order and\nsought a preliminary injunction prohibiting Godinger from using the mark 20TH CENTURY BAROQUE\nor infringing the trade dress of Wallace\xe2\x80\x99s GRANDE BAROQUE product.\n188\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[5] Due to the imminence of the trade show, the district court held a hearing on Wallace\xe2\x80\x99s\napplication for preliminary relief the day after Wallace had filed its complaint. The record consisted of\naffidavits from Florence and Fina reciting the facts described supra, samples of the Wallace and\nGodinger pieces, and various photographs and catalogue illustrations of silverware from other\nmanufacturers. Later that day, Judge Haight issued a Memorandum Opinion and Order in which he\nconcluded that the GRANDE BAROQUE design was a \xe2\x80\x9cfunctional\xe2\x80\x9d feature of baroque-style silverware\nand thus ineligible for trade dress protection under Section 43(a) of the Lanham Act.\n....\n[6] Judge Haight found that the similarities between the Godinger and Wallace designs involved\nelements common to all baroque-style designs used in the silverware market. He noted that many\nmanufacturers compete in that market with such designs and found that \xe2\x80\x9c[t]he \xe2\x80\x98Baroque\xe2\x80\x99 curls, roots\nand flowers are not \xe2\x80\x98mere indicia of source.\xe2\x80\x99 Instead, they are requirements to compete in the\nsilverware market.\xe2\x80\x9d Judge Haight concluded that \xe2\x80\x9cthe \xe2\x80\x98Grande Baroque\xe2\x80\x99 design is a functional feature of\n\xe2\x80\x98Baroque\xe2\x80\x99 style silverware,\xe2\x80\x9d relying on Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952).\n[7] Although we agree with Judge Haight\xe2\x80\x99s decision, we do not endorse his reliance upon Pagliero.\nThat decision allowed a competitor to sell exact copies of china bearing a particular pattern without\nfinding that comparably attractive patterns were not available to the competitor. It based its holding\nsolely on the ground that the particular pattern was an important ingredient in the commercial success\nof the china. Id. at 343\xe2\x80\x9344. We rejected Pagliero in LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71 (2d Cir.\n1985), and reiterate that rejection here. Under Pagliero, the commercial success of an aesthetic feature\nautomatically destroys all of the originator\xe2\x80\x99s trademark interest in it, notwithstanding the feature\xe2\x80\x99s\nsecondary meaning and the lack of any evidence that competitors cannot develop non-infringing,\nattractive patterns. By allowing the copying of an exact design without any evidence of market\nforeclosure, the Pagliero test discourages both originators and later competitors from developing\npleasing designs. See Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 824\xe2\x80\x9325 (3d Cir. 1981).\n[8] Our rejection of Pagliero, however, does not call for reversal. Quite unlike Pagliero, Judge\nHaight found in the instant matter that there is a substantial market for baroque silverware and that\neffective competition in that market requires \xe2\x80\x9cuse [of] essentially the same scrolls and flowers\xe2\x80\x9d as are\nfound on Wallace\xe2\x80\x99s silverware. Based on the record at the hearing, that finding is not clearly erroneous\nand satisfies the requirement of Stormy Clime Ltd. v. Progroup, Inc., 809 F.2d 971 (2d Cir. 1987), that a\ndesign feature not be given trade dress protection where use of that feature is necessary for effective\ncompetition. Id. at 976\xe2\x80\x9377.\n....\n[9] Our only hesitation in holding that the functionality doctrine applies is based on\nnomenclature. \xe2\x80\x9cFunctionality\xe2\x80\x9d seems to us to imply only utilitarian considerations and, as a legal\ndoctrine, to be intended only to prevent competitors from obtaining trademark protection for design\nfeatures that are necessary to the use or efficient production of the product. See Keene, supra at 825\n(\xe2\x80\x9cinquiry should focus on the extent to which the design feature is related to the utilitarian function of\nthe product or feature\xe2\x80\x9d). Even when the doctrine is referred to as \xe2\x80\x9caesthetic\xe2\x80\x9d functionality, it still seems\nan apt description only of pleasing designs of utilitarian features. Nevertheless, there is no lack of\nlanguage in caselaw endorsing use of the defense of aesthetic functionality where trademark\nprotection for purely ornamental features would exclude competitors from a market. See, e.g., Rogers,\nsupra at 347 (\xe2\x80\x9cThough a producer does not lose a design trademark just because the public finds it\npleasing, there may come a point where the design feature is so important to the value of the product\nto consumers that continued trademark protection would deprive them of competitive alternatives\n[.]\xe2\x80\x9d) (Posner, J.) . . . .\n[10] We put aside our quibble over doctrinal nomenclature, however, because we are confident\nthat whatever secondary meaning Wallace\xe2\x80\x99s baroque silverware pattern may have acquired, Wallace\n189\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmay not exclude competitors from using those baroque design elements necessary to compete in the\nmarket for baroque silverware. It is a first principle of trademark law that an owner may not use the\nmark as a means of excluding competitors from a substantial market. Where a mark becomes the\ngeneric term to describe an article, for example, trademark protection ceases. 15 U.S.C. \xc2\xa7 1064(3)\n(1988); see Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976). Where granting\ntrademark protection to the use of certain colors would tend to exclude competitors, such protection is\nalso limited. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987); J. McCarthy,\nTrademarks and Unfair Competition, \xc2\xa7 7:16 et seq. Finally, as discussed supra, design features of\nproducts that are necessary to the product\xe2\x80\x99s utility may be copied by competitors under the\nfunctionality doctrine.\n[11] In the instant matter, Wallace seeks trademark protection, not for a precise expression of a\ndecorative style, but for basic elements of a style that is part of the public domain. As found by the\ndistrict court, these elements are important to competition in the silverware market. We perceive no\ndistinction between a claim to exclude all others from use on silverware of basic elements of a\ndecorative style and claims to generic names, basic colors or designs important to a product\xe2\x80\x99s utility. In\neach case, trademark protection is sought, not just to protect an owner of a mark in informing the\npublic of the source of its products, but also to exclude competitors from producing similar products.\nWe therefore abandon our quibble with the aesthetic functionality doctrine\xe2\x80\x99s nomenclature and adopt\nthe Restatement\xe2\x80\x99s view that, where an ornamental feature is claimed as a trademark and trademark\nprotection would significantly hinder competition by limiting the range of adequate alternative\ndesigns, the aesthetic functionality doctrine denies such protection. See Third Restatement of the Law,\nUnfair Competition (Preliminary Draft No. 3), Ch. 3, \xc2\xa7 17(c) at 213\xe2\x80\x9314. This rule avoids the\noverbreadth of Pagliero by requiring a finding of foreclosure of alternatives2 while still ensuring that\ntrademark protection does not exclude competitors from substantial markets.3\n[12] Of course, if Wallace were able to show secondary meaning in a precise expression of\nbaroque style, competitors might be excluded from using an identical or virtually identical design. In\nsuch a case, numerous alternative baroque designs would still be available to competitors. Although\n2\n\nThe Restatement\xe2\x80\x99s Illustrations expressly reject Pagliero. Illustration 6 reads as follows:\nA manufactures china. Among the products marketed by A is a set of china bearing a\nparticular \xe2\x80\x9coverall\xe2\x80\x9d pattern covering the entire upper surface of each dish. Evidence\nindicates that aesthetic factors play an important role in the purchase of china, that A\xe2\x80\x99s\ndesign is attractive to a significant number of consumers, and that the number of\nalternative patterns is virtually unlimited. In the absence of evidence indicating that\nsimilarly attractive \xe2\x80\x9coverall\xe2\x80\x9d patterns are unavailable to competing manufacturers, A\xe2\x80\x99s\npattern design is not functional under the rule stated in this Section.\n\n3\n\nRestatement Illustrations 7 and 8 reflect this aspect of the rule. They read as follows:\n7. The facts being otherwise as stated in Illustration 6, A\xe2\x80\x99s design consists solely of a thin\ngold band placed around the rim of each dish. Evidence indicates that a significant\nnumber of consumers prefer china decorated with only a gold rim band. Because the\nnumber of alternative designs available to satisfy the aesthetic desires of these\nprospective purchasers is extremely limited, the rim design is functional under the rule\nstated in this Section.\n8. A is the first seller to market candy intended for Valentine\xe2\x80\x99s Day in heart-shaped\nboxes. . . .\n\n190\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe Godinger design at issue here was found by Judge Haight to be \xe2\x80\x9csubstantially similar,\xe2\x80\x9d it is not\nidentical or virtually identical, and the similarity involves design elements necessary to compete in the\nmarket for baroque silverware. Because according trademark protection to those elements would\nsignificantly hinder competitors by limiting the range of adequate alternative designs, we agree with\nJudge Haight\xe2\x80\x99s denial of a preliminary injunction.\nAffirmed.\nii.\n\nAesthetic Functionality and the Apparel Fashion Industry\n\nIn reading the excerpt below from Christian Louboutin S.A. v. Yves Saint Laurent America Holding,\nInc., 696 F.3d 206 (2d Cir. 2012), consider the following question:\n\xe2\x80\xa2\n\nPerhaps the Second Circuit is correct that there should be no per se rule against the trademark\nprotection of individual colors with respect to apparel, but should there at least be a TrafFix-like\n\xe2\x80\x9cstrong presumption\xe2\x80\x9d against such protection?\n\n\xe2\x80\xa2\n\nMany followers of the Louboutin case were quite surprised by the Second Circuit\xe2\x80\x99s resolution of the\ndispute. Do you think the court reached the right result?\n\nChristian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.\n696 F.3d 206, 218-228 (2d Cir. 2012)\n{Since 1992, designer Christian Louboutin has painted the outsoles of his high-heeled women\xe2\x80\x99s\nshoes with a high-gloss red lacquer, specifically, Pantone 18-1663 TPX Chinese Red. In 2008, based on\nthe enormous secondary meaning he built up in the design, Plaintiff Christian Louboutin S.A.\n(\xe2\x80\x9cLouboutin\xe2\x80\x9d) registered the red lacquered outsole as a trademark (see the registration certificate\nbelow). In 2011, defendant Yves Saint Laurent America Holding, Inc. (\xe2\x80\x9cYSL\xe2\x80\x9d) began marketing a line of\nmonochrome shoes in, among other colors, red. YSL\xe2\x80\x99s red monochrome shoe bore a red insole, heel,\nupper, and outsole. Louboutin sued, claiming infringement of its registered mark. The district court\nfound that the mark was aesthetically functional and, according to the Second Circuit\xe2\x80\x99s reading,\narticulated a per se rule that a single color can never serve as a trademark in the fashion industry.\nLouboutin appealed. Excerpted below is the court\xe2\x80\x99s discussion of aesthetic functionality.}\n\n191\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nPER CURIAM:\n....\nIII. The \xe2\x80\x9cFunctionality\xe2\x80\x9d Defense\n[1] As the Supreme Court observed in Qualitex, aspects of a product that are \xe2\x80\x9cfunctional\xe2\x80\x9d generally\n\xe2\x80\x9ccannot serve as a trademark.\xe2\x80\x9d Id. at 165. We have observed that \xe2\x80\x9c[t]he doctrine of functionality\nprevents trademark law from inhibiting legitimate competition by giving monopoly control to a\nproducer over a useful product.\xe2\x80\x9d Nora Beverages, Inc., 269 F.3d at 120 n. 4; see Genesee Brewing Co.,\n124 F.3d at 145 n. 5 (it is a \xe2\x80\x9cfundamental principle of trademark law that a trademark . . . does not\ngrant a monopoly of production\xe2\x80\x9d). This is so because functional features can be protected only through\nthe patent system, which grants a limited monopoly over such features until they are released into\ngeneral use (typically after either 14 or 20 years, depending on the type of patent). See Fabrication\nEnters., Inc., 64 F.3d at 58\xe2\x80\x9359 & n. 4 (\xe2\x80\x9cThe Lanham Act is not concerned with protecting innovation by\ngiving the innovator a monopoly, which is the function of patent law.\xe2\x80\x9d) . . . .\n[2] As noted above, two forms of the functionality doctrine are relevant to us today: \xe2\x80\x9ctraditional\xe2\x80\x9d\nor \xe2\x80\x9cutilitarian\xe2\x80\x9d functionality, and \xe2\x80\x9caesthetic\xe2\x80\x9d functionality. Both forms serve as an affirmative defense\nto a trademark infringement claim.\nA. \xe2\x80\x9cTraditional\xe2\x80\x9d or \xe2\x80\x9cUtilitarian\xe2\x80\x9d Functionality\n[3] According to our traditional understanding of functionality, a product feature is considered to\nbe \xe2\x80\x9cfunctional\xe2\x80\x9d in a utilitarian sense11 if it is (1) \xe2\x80\x9cessential to the use or purpose of the article,\xe2\x80\x9d or if it\n(2) \xe2\x80\x9caffects the cost or quality of the article.\xe2\x80\x9d Inwood Labs., 456 U.S. at 850 n. 10, 102 S.Ct. 2182. A\nfeature is essential \xe2\x80\x9c\xe2\x80\x98if [it] is dictated by the functions to be performed\xe2\x80\x99\xe2\x80\x9d by the article. LeSportsac, Inc.\nv. K mart Corp., 754 F.2d 71, 76 (2d Cir. 1985) (quoting Warner Bros. Inc. v. Gay Toys Inc., 724 F.2d 327,\n331 (2d Cir. 1983)).13 It affects the cost or quality of the article where it \xe2\x80\x9c\xe2\x80\x98permits the article to be\nmanufactured at a lower cost\xe2\x80\x99 or \xe2\x80\x98constitutes an improvement in the operation of the goods.\xe2\x80\x99\xe2\x80\x9d14 Id.\nSee Wallace Int\xe2\x80\x99l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 80 (2d Cir. 1990)\n(noting that the term \xe2\x80\x9cfunctionality\xe2\x80\x9d as commonly understood seems to imply \xe2\x80\x9conly utilitarian\nconsiderations\xe2\x80\x9d).\n11\n\nIn LeSportsac, K Mart challenged the trade dress of a backpack composed of \xe2\x80\x9cparachute nylon\nand trimmed in cotton carpet tape with matching cotton-webbing straps. The zippers used to open and\nclose the bags [we]re color coordinated with the bags themselves, and usually [we]re pulled with\nhollow rectangular metal sliders.\xe2\x80\x9d LeSportsac, 754 F.2d at 74.\n13\n\n14 In Warner Brothers, we cited as examples Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 122,\n59 S.Ct. 109, 83 L.Ed. 73 (1938), in which the pillow shape of a shredded wheat biscuit was deemed\n\n192\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n(quoting Warner Bros., Inc., 724 F.2d at 331). A finding that a product feature is functional according to\nthe Inwood test will ordinarily render the feature ineligible for trademark protection.\nB. \xe2\x80\x9cAesthetic Functionality\xe2\x80\x9d\n[4] Generally, \xe2\x80\x9c[w]here [a product\xe2\x80\x99s] design is functional under the Inwood formulation there is no\nneed to proceed further.\xe2\x80\x9d TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001)\n(\xe2\x80\x9cTrafFix \xe2\x80\x9c). Nevertheless, as the Supreme Court had held in 1995 in Qualitex, when the aesthetic\ndesign of a product is itself the mark for which protection is sought, we may also deem the mark\nfunctional if giving the markholder the right to use it exclusively \xe2\x80\x9cwould put competitors at a\nsignificant non-reputation-related disadvantage,\xe2\x80\x9d Qualitex, 514 U.S. at 165. This remains true even if\nthere is \xe2\x80\x9cno indication that [the mark has] any bearing on the use or purpose of the product or its cost\nor quality.\xe2\x80\x9d TrafFix, 532 U.S. at 33; see Landscape Forms, Inc. v. Colum. Cascade Co., 70 F.3d 251, 253 (2d\nCir. 1995) (when evaluating design trademarks we consider whether \xe2\x80\x9ccertain features of the design\nare essential to effective competition in [the] particular market\xe2\x80\x9d).\n[5] As set forth below, the test for aesthetic functionality is threefold: At the start, we address the\ntwo prongs of the Inwood test, asking whether the design feature is either \xe2\x80\x9cessential to the use or\npurpose\xe2\x80\x9d or \xe2\x80\x9caffects the cost or quality\xe2\x80\x9d of the product at issue. Next, if necessary, we turn to a third\nprong, which is the competition inquiry set forth in Qualitex. In other words, if a design feature would,\nfrom a traditional utilitarian perspective, be considered \xe2\x80\x9cessential to the use or purpose\xe2\x80\x9d of the article,\nor to affect its cost or quality, then the design feature is functional under Inwood and our inquiry\nends.15 But if the design feature is not \xe2\x80\x9cfunctional\xe2\x80\x9d from a traditional perspective, it must still pass the\nfact-intensive Qualitex test and be shown not to have a significant effect on competition in order to\nreceive trademark protection.\ni. The Development of the Aesthetic Functionality Doctrine\n[6] Although the theory of aesthetic functionality was proposed as early as 1938,16 the first court\nto adopt the theory as the basis for denial of protection of a design was the United States Court of\nAppeals for the Ninth Circuit in Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952). . . .\n[7] Despite its apparent counterintuitiveness (how can the purely aesthetic be deemed functional,\none might ask?), our Court has long accepted the doctrine of aesthetic functionality. See, e.g., Warner\nBros., Inc., 724 F.2d at 329\xe2\x80\x9332 (distinctive color and symbols on toy car were not functional, and so\nfunctional because the cost of the cereal would be increased and its quality lessened by any other form,\nand Fisher Stoves Inc. v. All Nighter Stove Works, Inc., 626 F.2d 193, 195 (1st Cir. 1980), in which a twotier woodstove design was deemed functional because it improved the operation of the stove. See\nWarner Bros., Inc., 724 F.2d at 331.\nSee, e.g., Industria Arredamenti Fratelli Saporiti v. Charles Craig, Ltd., 725 F.2d 18, 19 (2d Cir.\n1984) (interlocking design of couch cushions was a visual \xe2\x80\x9clabel\xe2\x80\x9d but served a utilitarian purpose by\nkeeping cushions in place and was therefore functional).\n15\n\nIn 1938, the Restatement of Torts stated that \xe2\x80\x9c[a] feature of goods is functional . . . if it affects\ntheir purpose, action or performance, or the facility or economy of processing, handling or using them;\nit is non-functional if it does not have any of such effects.\xe2\x80\x9d Restatement of Torts \xc2\xa7 742 (1938). In the\nofficial comment to that Section, the Restatement explained several ways in which goods or their\nfeatures might be functional. With regard to \xe2\x80\x9cgoods [that] are bought largely for their aesthetic value,\xe2\x80\x9d\nthe Restatement suggested that \xe2\x80\x9ctheir features may be functional because they definitely contribute to\nthat value and thus aid the performance of an object for which the goods are intended.\xe2\x80\x9d Id. \xc2\xa7 742, cmt.\na. This was the first time that a commentator had proposed that an aesthetic product feature might be\nfunctional. See 1 McCarthy on Trademarks \xc2\xa7 7:79 (4th ed.).\n16\n\n193\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwere protectable as trade dress).17 We have rejected, however, the circular \xe2\x80\x9cimportant ingredient\xe2\x80\x9d test\nformulated by the Pagliero court, which inevitably penalized markholders for their success in\npromoting their product.18 Instead, we have concluded that \xe2\x80\x9cLanham Act protection does not extend to\nconfigurations of ornamental features which would significantly limit the range of competitive designs\navailable.\xe2\x80\x9d Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 171 (2d Cir. 1991) (emphasis\nadded). Accordingly, we have held that the doctrine of aesthetic functionality bars protection of a mark\nthat is \xe2\x80\x9cnecessary to compete in the [relevant] market.\xe2\x80\x9d Villeroy & Boch Keramische Werke K.G. v. THC\nSys., Inc., 999 F.2d 619, 622 (2d Cir. 1993).\nii. A Modern Formulation of the Aesthetic Functionality Doctrine\n[8] In 1995, the Supreme Court in Qualitex gave its imprimatur to the aesthetic functionality\ndoctrine, holding that \xe2\x80\x9c[t]he ultimate test of aesthetic functionality . . . is whether the recognition of\ntrademark rights [in an aesthetic design feature] would significantly hinder competition.\xe2\x80\x9d Qualitex, 514\nU.S. at 170 (quoting Restatement (Third) of Unfair Competition \xc2\xa7 17, cmt. c, at 176 (1993)) (internal\nquotation marks omitted). Six years later, reiterating its Qualitex analysis, the Supreme Court in TrafFix\ndeclared that where \xe2\x80\x9c[a]esthetic functionality [is] the central question,\xe2\x80\x9d courts must \xe2\x80\x9cinquire\xe2\x80\x9d as to\nwhether recognizing the trademark \xe2\x80\x9cwould put competitors at a significant non-reputation-related\ndisadvantage.\xe2\x80\x9d TrafFix, 532 U.S. at 32\xe2\x80\x9333.\n[9] Although we have not recently had occasion to apply the doctrine of aesthetic functionality\nthus enunciated by the Supreme Court, it is clear that the combined effect of Qualitex and TrafFix was\nto validate the aesthetic functionality doctrine as it had already been developed by this Court in cases\nincluding Wallace International Silversmiths, Stormy Clime, and LeSportsac. See Yurman Design, Inc., 262\nF.3d at 116 (confirming, five months after the TrafFix decision, that a putative design trademark is\n\xe2\x80\x9caesthetic[ally] functional[ ],\xe2\x80\x9d and therefore barred from trademark protection, if granting \xe2\x80\x9cthe right to\nuse [the mark] exclusively \xe2\x80\x98would put competitors at a significant non-reputation-related\ndisadvantage\xe2\x80\x99\xe2\x80\x9d (quoting TrafFix, 532 U.S. at 32)).\n[10] On the one hand, \xe2\x80\x9c\xe2\x80\x98[w]here an ornamental feature is claimed as a trademark and trademark\nprotection would significantly hinder competition by limiting the range of adequate alternative\n\nThe doctrine of aesthetic functionality remains controversial in our sister circuits, which have\napplied the doctrine in varying ways (and some not at all). For example, the Seventh Circuit has\napplied the doctrine of aesthetic functionality liberally, holding that \xe2\x80\x9c[f]ashion is a form of function.\xe2\x80\x9d\nSee Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 860 (7th Cir. 2010). The Sixth Circuit recently\ndiscussed the doctrine, but made clear that it has not yet decided whether or not to adopt it. See\nMaker\xe2\x80\x99s Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410, 417\xe2\x80\x9319 (6th Cir. 2012). The Ninth\nCircuit has applied the doctrine inconsistently. See 1 McCarthy on Trademarks \xc2\xa7 7:80 (4th ed.)\n(collecting cases). The Fifth Circuit rejects the doctrine of aesthetic functionality entirely. Bd. of\nSupervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 487\xe2\x80\x9388 (5th Cir.\n2008) (arguing that the Supreme Court has recognized the aesthetic functionality doctrine only in\ndicta, and that therefore the Fifth Circuit\xe2\x80\x99s long-standing rejection of the doctrine was not abrogated by\nQualitex and TrafFix).\n17\n\nSee Wallace Int\xe2\x80\x99l Silversmiths, 916 F.2d at 80 (\xe2\x80\x9cWe rejected Pagliero[\xe2\x80\x98s \xe2\x80\x98important ingredient\xe2\x80\x99\nformulation] in [Le]Sportsac and reiterate that rejection here.\xe2\x80\x9d (internal citation omitted)); Mark P.\nMcKenna, (Dys)functionality, 48 Hous. L.Rev. 823, 851 (2011) (\xe2\x80\x9cCourts that apply the aesthetic\nfunctionality doctrine today overwhelmingly rely on the test the Supreme Court endorsed in TrafFix\n[rather than the Pagliero test], . . . asking whether exclusive use of the claimed feature put competitors\nat a significant non-reputation-related disadvantage.\xe2\x80\x9d).\n18\n\n194\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndesigns, the aesthetic functionality doctrine denies such protection.\xe2\x80\x99\xe2\x80\x9d Forschner Grp., Inc. v. Arrow\nTrading Co., 124 F.3d 402, 409\xe2\x80\x9310 (2d Cir. 1997) (quoting Wallace Int\xe2\x80\x99l Silversmiths, Inc., 916 F.2d at\n81). But on the other hand, \xe2\x80\x9c\xe2\x80\x98distinctive and arbitrary arrangements of predominantly ornamental\nfeatures that do not hinder potential competitors from entering the same market with differently\ndressed versions of the product are non-functional[,] and [are] hence eligible for [trademark\nprotection].\xe2\x80\x99\xe2\x80\x9d Fabrication Enters., Inc., 64 F.3d at 59 (quoting Stormy Clime, 809 F.2d at 977) (emphasis\nadded).\n[11] In short, a mark is aesthetically functional, and therefore ineligible for protection under the\nLanham Act, where protection of the mark significantly undermines competitors\xe2\x80\x99 ability to compete in\nthe relevant market. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995) (linking\naesthetic functionality to availability of alternative designs for children\xe2\x80\x99s fall-themed sweaters);\nLandscape Forms, Inc., 70 F.3d at 253 (holding that \xe2\x80\x9cin order for a court to find a product design\nfunctional, it must first find that certain features of the design are essential to effective competition in a\nparticular market\xe2\x80\x9d). In making this determination, courts must carefully weigh \xe2\x80\x9cthe competitive\nbenefits of protecting the source-identifying aspects\xe2\x80\x9d of a mark against the \xe2\x80\x9ccompetitive costs of\nprecluding competitors from using the feature.\xe2\x80\x9d Fabrication Enters., Inc., 64 F.3d at 59.\n[12] Finally, we note that a product feature\xe2\x80\x99s successful source indication can sometimes be\ndifficult to distinguish from the feature\xe2\x80\x99s aesthetic function, if any. See, e.g., Jay Franco & Sons, Inc. v.\nFranek, 615 F.3d 855, 857 (7th Cir. 2010) (noting that \xe2\x80\x9c[f]iguring out which designs [produce a benefit\nother than source identification] can be tricky\xe2\x80\x9d). Therefore, in determining whether a mark has an\naesthetic function so as to preclude trademark protection, we take care to ensure that the mark\xe2\x80\x99s very\nsuccess in denoting (and promoting) its source does not itself defeat the markholder\xe2\x80\x99s right to protect\nthat mark. See Wallace Int\xe2\x80\x99l Silversmiths, Inc., 916 F.2d at 80 (rejecting argument that \xe2\x80\x9cthe commercial\nsuccess of an aesthetic feature automatically destroys all of the originator\xe2\x80\x99s trademark interest in it,\nnotwithstanding the feature\xe2\x80\x99s secondary meaning and the lack of any evidence that competitors cannot\ndevelop non-infringing, attractive patterns\xe2\x80\x9d).\n[13] Because aesthetic function and branding success can sometimes be difficult to distinguish,\nthe aesthetic functionality analysis is highly fact-specific. In conducting this inquiry, courts must\nconsider both the markholder\xe2\x80\x99s right to enjoy the benefits of its effort to distinguish its product and the\npublic\xe2\x80\x99s right to the \xe2\x80\x9cvigorously competitive market [ ]\xe2\x80\x9d protected by the Lanham Act, which an overly\nbroad trademark might hinder. Yurman Design, Inc., 262 F.3d at 115 (internal quotation mark omitted).\nIn sum, courts must avoid jumping to the conclusion that an aesthetic feature is functional merely\nbecause it denotes the product\xe2\x80\x99s desirable source. Cf. Pagliero, 198 F.2d at 343.\niii. Aesthetic Functionality in the Fashion Industry\n[14] We now turn to the per se rule of functionality for color marks in the fashion industry\nadopted by the District Court\xe2\x80\x94a rule that would effectively deny trademark protection to any\ndeployment of a single color in an item of apparel. As noted above, the Qualitex Court expressly held\nthat \xe2\x80\x9csometimes [ ] a color will meet ordinary legal trademark requirements[, a]nd, when it does so, no\nspecial legal rule prevents color alone from serving as a trademark.\xe2\x80\x9d Qualitex, 514 U.S. at 161, 115 S.Ct.\n1300. In other words, the Supreme Court specifically forbade the implementation of a per se rule that\nwould deny protection for the use of a single color as a trademark in a particular industrial context.\nQualitex requires an individualized, fact-based inquiry into the nature of the trademark, and cannot be\nread to sanction an industry-based per se rule. The District Court created just such a rule, on the theory\nthat \xe2\x80\x9cthere is something unique about the fashion world that militates against extending trademark\nprotection to a single color.\xe2\x80\x9d Louboutin, 778 F.Supp.2d at 451.\n[15] Even if Qualitex could be read to permit an industry-specific per se rule of functionality (a\nreading we think doubtful), such a rule would be neither necessary nor appropriate here. We readily\nacknowledge that the fashion industry, like other industries, has special concerns in the operation of\n195\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ntrademark law; it has been argued forcefully that United States law does not protect fashion design\nadequately.19 Indeed, the case on appeal is particularly difficult precisely because, as the District Court\nwell noted, in the fashion industry, color can serve as a tool in the palette of a designer, rather than as\nmere ornamentation. Louboutin, 778 F.Supp.2d at 452\xe2\x80\x9353.\n[16] Nevertheless, the functionality defense does not guarantee a competitor \xe2\x80\x9cthe greatest range\nfor [his] creative outlet,\xe2\x80\x9d id. at 452\xe2\x80\x9353, but only the ability to fairly compete within a given market.20\nSee Wallace Int\xe2\x80\x99l Silversmiths, Inc., 916 F.2d at 81 (\xe2\x80\x9cIt is a first principle of trademark law that an owner\nmay not use the mark as a means of excluding competitors from a . . . market.\xe2\x80\x9d (emphasis added)). The\npurpose of the functionality defense \xe2\x80\x9cis to prevent advances in functional design from being\nmonopolized by the owner of [the mark] . . . in order to encourage competition and the broadest\nThe intellectual property protection of fashion design has been for years a subject of\ncontroversy among commentators. Some have proposed working within the confines of the current\nintellectual property system, while others have advocated that fashion design may be an appropriate\narea for sui generis statutory protection. See generally C. Scott Hemphill & Jeannie Suk, The Law,\nCulture, and Economics of Fashion, 61 Stan. L.Rev. 1147 (2009); see also id. at 1184\xe2\x80\x9390. (Indeed,\nsuggested legislation creating such protection has been considered several times by Congress,\nalthough not adopted. See, e.g., Design Piracy Prohibition Act, H.R.2033, 110th Cong. \xc2\xa7 2(c) (2007);\nDesign Piracy Prohibition Act, S.1957, 110th Cong. \xc2\xa7 2(c) (2007).) Still other commentators have\nsuggested that intellectual property protection of fashion design would be damaging to the industry\nand should be avoided. See Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and\nIntellectual Property in Fashion Design, 92 Va. L.Rev. 1687, 1775\xe2\x80\x9377 (2006).\n19\n\nIt is arguable that, in the particular circumstances of this case, the more appropriate vehicle for\nthe protection of the Red Sole Mark would have been copyright rather than trademark. See generally\nKieselstein\xe2\x80\x93Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993\xe2\x80\x9394 (2d Cir. 1980) (addressing the broad\nissue of aesthetically functional copyrights and holding that decorative belt buckles that were used\nprincipally for ornamentation could be copyrighted because the primary ornamental aspect of the\nbuckles was conceptually separate from their subsidiary utilitarian function); Laura A. Heymann, The\nTrademark/Copyright Divide, 60 SMU L.Rev. 55 (2007). However, because Louboutin has chosen to rely\non the law of trademarks to protect his intellectual property, we necessarily limit our review to that\nbody of law and do not further address the broad and complex issue of fashion design protection.\nThe trademark system, in this way, stands in sharp contrast to the copyright system. Copyright,\nunlike trademark, rewards creativity and originality even if they interfere with the rights of an existing\ncopyright holder. In the copyright system there is a defense to infringement known as \xe2\x80\x9cindependent\ncreation\xe2\x80\x9d: if a writer or musician, through the creative process, independently arrives at an\narrangement of words or notes that is the subject of a copyright, he may market the result of his\ncreativity despite the existing copyright. See Feist Publ\xe2\x80\x99ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346,\n111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) (requesting that the reader \xe2\x80\x9cassume that two poets, each\nignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence,\ncopyrightable\xe2\x80\x9d); Procter & Gamble Co. v. Colgate\xe2\x80\x93Palmolive Co., 199 F.3d 74, 77\xe2\x80\x9378 (2d Cir. 1999). The\ntrademark system, unlike the copyright system, aims to prevent consumer confusion even at the\nexpense of a manufacturer\xe2\x80\x99s creativity: in trademark, if a branding specialist produces a mark that is\nidentical to one already trademarked by another individual or corporation, he must \xe2\x80\x9cgo back to the\ndrawing board.\xe2\x80\x9d See Blendco, Inc. v. Conagra Foods, Inc., 132 Fed.Appx. 520, 523 (5th Cir. 2005)\n(although defendant\xe2\x80\x99s allegedly independent creation of infringing mark tended to show that\ninfringement was not willful, defendant remained liable for damages); Tuccillo v. Geisha NYC, LLC, 635\nF.Supp.2d 227 (E.D.N.Y.2009) (same).\n20\n\n196\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndissemination of useful design features.\xe2\x80\x9d Fabrication Enters., Inc., 64 F.3d at 58 (internal quotation\nmarks omitted) (emphasis added).\n[17] In short, \xe2\x80\x9c[b]y focusing upon hindrances to legitimate competition, the [aesthetic]\nfunctionality test, carefully applied, can accommodate consumers\xe2\x80\x99 somewhat conflicting interests in\nbeing assured enough product differentiation to avoid confusion as to source and in being afforded the\nbenefits of competition among producers.\xe2\x80\x9d Stormy Clime, 809 F.2d at 978\xe2\x80\x9379.\n....\nIV. The Red Sole Mark\n[18] Having determined that no per se rule governs the protection of single-color marks in the\nfashion industry, any more than it can do so in any other industry, we turn our attention to the Red\nSole Mark. As we have explained, Part II.A, ante, we analyze a trademark infringement claim in two\nstages, asking first whether the mark \xe2\x80\x9cmerits protection\xe2\x80\x9d and, second, whether the allegedly infringing\nuse of the mark (or a similar mark) is \xe2\x80\x9clikely to cause consumer confusion.\xe2\x80\x9d Louis Vuitton Malletier, 454\nF.3d at 115. The functionality defense (including the tripartite aesthetic functionality test) is an\naffirmative defense that we consider at the second stage of this analysis. Stormy Clime, Ltd., 809 F.2d at\n974.\n....\n[19] Although, as set forth below, we determine that the Mark as it currently stands is ineligible\nfor protection insofar as it would preclude competitors\xe2\x80\x99 use of red outsoles in all situations, including\nthe monochromatic use now before us, we conclude that the Mark has acquired secondary meaning\xe2\x80\x94\nand thus the requisite \xe2\x80\x9cdistinctness\xe2\x80\x9d to merit protection\xe2\x80\x94when used as a red outsole contrasting with\nthe remainder of the shoe. Because in this case we determine that the Red Sole Mark merits protection\nonly as modified, and because YSL\xe2\x80\x99s use of a red outsole on monochromatic red shoes does not infringe\non the Mark as modified, we need not, and do not, reach the issues of customer confusion and\nfunctionality at the second stage of the trademark infringement analysis described above.\nA. Distinctiveness\n....\n[20] We further hold that the record fails to demonstrate that the secondary meaning of the Red\nSole Mark extends to uses in which the sole does not contrast with the upper\xe2\x80\x94in other words, when a\nred sole is used on a monochromatic red shoe. As the District Court observed, \xe2\x80\x9c[w]hen Hollywood\nstarlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop\nto the celebrities\xe2\x80\x99 feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement\nthat pops out at once.\xe2\x80\x9d Louboutin, 778 F.Supp.2d at 448 (emphasis added). As clearly suggested by the\nDistrict Court, it is the contrast between the sole and the upper that causes the sole to \xe2\x80\x9cpop,\xe2\x80\x9d and to\ndistinguish its creator.\n[21] The evidentiary record further demonstrates that the Louboutin mark is closely associated\nwith contrast. For example, Pinault, the chief executive of YSL\xe2\x80\x99s parent company, wrote that the\n\xe2\x80\x9cdistinctive signature\xe2\x80\x9d of the Mark is in its \xe2\x80\x9ccontrast with the general presentation of the [shoe],\nparticularly its upper.\xe2\x80\x9d Joint App\xe2\x80\x99x 529. Of the hundreds of pictures of Louboutin shoes submitted to\nthe District Court, only four were monochrome red. Compare id. 19, 415, 438, 587 (depicting\nmonochrome Louboutin shoes), with id. 415\xe2\x80\x9327, 431\xe2\x80\x9347, 593\xe2\x80\x93653, 680\xe2\x80\x93724 (photographs and news\narticles depicting Louboutin shoes). And Louboutin\xe2\x80\x99s own consumer surveys show that when\nconsumers were shown the YSL monochrome red shoe, of those consumers who misidentified the\npictured shoes as Louboutin-made, nearly every one cited the red sole of the shoe, rather than its\ngeneral red color. We conclude, based upon the record before us, that Louboutin has not established\nsecondary meaning in an application of a red sole to a red shoe, but only where the red sole contrasts\n197\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwith the \xe2\x80\x9cupper\xe2\x80\x9d of the shoe. The use of a red lacquer on the outsole of a red shoe of the same color is\nnot a use of the Red Sole Mark.\n[22] Because we conclude that the secondary meaning of the mark held by Louboutin extends\nonly to the use of a lacquered red outsole that contrasts with the adjoining portion of the shoe, we\nmodify the Red Sole Mark, pursuant to Section 37 of the Lanham Act, 15 U.S.C. \xc2\xa7 1119,26 insofar as it is\nsought to be applied to any shoe bearing the same color \xe2\x80\x9cupper\xe2\x80\x9d as the outsole. We therefore instruct\nthe Director of the Patent and Trade Office to limit the registration of the Red Sole Mark to only those\nsituations in which the red lacquered outsole contrasts in color with the adjoining \xe2\x80\x9cupper\xe2\x80\x9d of the shoe.\nSee id.\n[23] In sum, we hold that the Red Sole Mark is valid and enforceable as modified. This holding\ndisposes of the Lanham Act claims brought by both Louboutin and YSL because the red sole on YSL\xe2\x80\x99s\nmonochrome shoes is neither a use of, nor confusingly similar to, the Red Sole Mark. We therefore\naffirm the denial of the preliminary injunction insofar as Louboutin could not have shown a likelihood\nof success on the merits in the absence of an infringing use of the Red Sole Mark by YSL.\nB. Likelihood of Confusion and Functionality\n[24] Having limited the Red Sole Mark as described above, and having established that the red\nsole used by YSL is not a use of the Red Sole Mark, it is axiomatic that we need not\xe2\x80\x94and should not\xe2\x80\x94\naddress either the likelihood of consumer confusion or whether the modified Mark is functional.\n....\nComments and Questions\n1. Are Louboutin\xe2\x80\x99s and YSL\xe2\x80\x99s shoes nevertheless confusingly similar? The Second Circuit\xe2\x80\x99s\nresolution of the dispute was unconventional, to say the least. Given the enormous secondary meaning\nof Louboutin\xe2\x80\x99s mark, do you think the court was justified in finding, without analysis, that there would\nbe no consumer confusion as to source between Louboutin\xe2\x80\x99s shoes bearing a red outsole with\ncontrasting upper and YSL\xe2\x80\x99s shoes bearing both a red outsole and red upper?\n2.\n\nDeceptive and Deceptively Misdescriptive Marks\n\nLanham Act \xc2\xa7 2; 15 U.S.C. \xc2\xa7 1052\nNo trademark by which the goods of the applicant may be distinguished from the goods\nof others shall be refused registration on the principal register on account of its nature\nunless it-(a) Consists of or comprises . . . deceptive . . . matter . . .\n....\n(e) Consists of a mark which (1) when used on or in connection with the goods of the\napplicant is merely descriptive or deceptively misdescriptive of them, . . . (3) when used\non or in connection with the goods of the applicant is primarily geographically\ndeceptively misdescriptive of them.\n\n15 U.S.C. \xc2\xa7 1119 provides that \xe2\x80\x9c[i]n any action involving a registered mark the court may\ndetermine the right to registration, order the cancellation of registrations, in whole or in part, restore\ncanceled registrations, and otherwise rectify the register with respect to the registrations of any party\nto the action. Decrees and orders shall be certified by the court to the Director, who shall make\nappropriate entry upon the records of the Patent and Trademark Office, and shall be controlled\nthereby.\xe2\x80\x9d (emphasis added).\n26\n\n198\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nIn determining whether marks are \xe2\x80\x9cdeceptive\xe2\x80\x9d or \xe2\x80\x9cdeceptively misdescriptive\xe2\x80\x9d with respect to the\ngoods to which they are affixed, U.S. trademark law analyzes geographic marks (i.e., marks that convey\na geographic meaning) differently from how it analyzes non-geographic marks. Before turning to the\npeculiar manner in which the law treats geographically deceptive or \xe2\x80\x9cprimarily geographically\ndeceptively misdescriptive\xe2\x80\x9d marks, Lanham Act \xc2\xa7 2(e)(3), 15 U.S.C. \xc2\xa7 1052(e)(3), we first consider the\nlaw\xe2\x80\x99s more straightforward analysis of the deceptiveness or deceptive misdescriptiveness of nongeographic marks.\na.\n\nNon-Geographic Deceptive and Deceptively Misdescriptive Marks\n\nA non-geographic deceptive trademark cannot be registered or otherwise protected under federal\ntrademark law. See Lanham Act \xc2\xa7 2(a), 15 U.S.C. \xc2\xa7 1052(a). By contrast, a non-geographic \xe2\x80\x9cdeceptively\nmisdescriptive\xe2\x80\x9d mark may be registered or otherwise protected under federal trademark law, but only\nif the mark is shown to have developed secondary meaning as a designation of source. See Lanham Act\n\xc2\xa7\xc2\xa7 2(e)(1) & 2(f), 15 U.S.C. \xc2\xa7\xc2\xa7 1052(e)(1) & 2(f).\nThe basic test for determining whether a non-geographic mark is deceptive or deceptively\nmisdescriptive is relatively straightforward. In In re Budge Mfg. Co., 857 F.2d 773 (Fed. Cir. 1988), the\nFederal Circuit affirmed the TTAB\xe2\x80\x99s refusal to register the mark LOVEE LAMB for automobile seat covers\nthat were not in fact made of lambskin on the ground that the mark was deceptive. In doing so, it\nestablished a three-step test for determining whether a mark is deceptive or deceptively\nmisdescriptive. The TMEP summarizes the three steps as follows:\n(1) Is the term misdescriptive of the character, quality, function, composition or use of\nthe goods?\n(2) If so, are prospective purchasers likely to believe that the misdescription actually\ndescribes the goods?\n(3) If so, is the misdescription likely to affect a significant portion of the relevant\nconsumers\xe2\x80\x99 decision to purchase?\nTMEP \xc2\xa7 1203.02(b). If the answer to all three questions is yes, then the mark is deceptive under\nSection 2(a) and cannot be protected. If the answer to question (2) is yes (consumers would likely\nbelieve that the misdescription actually describes the goods), but the answer to question (3) is no (the\nmisdescription would nevertheless not affect their decision to purchase), then the mark is deceptively\nmisdescriptive under Section 2(e)(1) and can be protected upon a showing of secondary meaning.\n(And if the answer to question (2) is no, then the mark is likely arbitrary and thus inherently\ndistintive\xe2\x80\x94e.g. DIAMOND pencils).\nThus, for non-geographic marks, the question of whether the mark\xe2\x80\x99s misdescription would be\nmaterial to consumers\xe2\x80\x99 decisions to purchase the good is what separates an unprotectable deceptive\nmark from a potentially protectable deceptively misdescriptive mark. This can be a difficult question to\nanswer. The TMEP instructs trademark examining attorneys to focus on \xe2\x80\x9cobjective criteria\xe2\x80\x9d such as\nwhether the misdescription conveys superior quality, enhanced performance or function, difference in\nprice, health benefits, or conformity with meritorious religious practice or social policy. See TMEP\n\xc2\xa7 1203.02(d)(i). The Federal Circuit has emphasized that the misdescription must be material to a\n\xe2\x80\x9csignificant portion of relevant consumers.\xe2\x80\x9d See In re Spirits Intern., N.V., 563 F.3d 1347, 1356 (Fed. Cir.\n2009).\nExamples of non-geographic marks found to be deceptive:\n\xe2\x80\xa2\n\nIn re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) (finding the term \xe2\x80\x9cwhite\xe2\x80\x9d in WHITE\nJASMINE to be deceptive for tea that did not include white tea, where \xe2\x80\x9c[t]he evidence\nestablishes that consumers perceive that white tea has desirable health benefits. Thus, the\n199\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmisdescription is material to consumers interested in purchasing or drinking white tea to\nobtain these health benefits, and is likely to induce such purchasers to buy or drink the tea.\xe2\x80\x9d)\n\xe2\x80\xa2\n\nIn re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (finding SUPER SILK to be\ndeceptive for clothing made of \xe2\x80\x9csilk-like\xe2\x80\x9d fabric, even where labeling indicated true fiber\ncontent of fabric).\n\n\xe2\x80\xa2\n\nIn re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (holding SILKEASE deceptive for clothing not\nmade of silk, even where hangtag claimed that the product has \xe2\x80\x9cthe look and feel of the finest\nsilks with the easy care of polyester\xe2\x80\x9d).\n\n\xe2\x80\xa2\n\nIn re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (holding ORGANICK deceptive\nfor clothing and textiles made from cotton that is neither from an organically grown plant nor\nfree of chemical processing or treatment).\n\nExamples of non-geographic marks found to be deceptively misdescriptive:\n\xe2\x80\xa2\n\nGold Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955) (affirming TTAB\xe2\x80\x99s finding GLASS WAX to\nbe deceptively misdescriptive for glass cleaner where \xe2\x80\x9c[t]he evidence does not show that the\npublic has been influenced to purchase the product on account of believing that it contained\nwax, or that the product was simply a wax to be placed upon glass.\xe2\x80\x9d).\n\n\xe2\x80\xa2\n\nIn re Berman Bros. Harlem Furniture Inc., 26 U.S.P.Q.2d 1514 (TTAB 1993) (affirming\nexaminer\xe2\x80\x99s determination that FURNITURE MAKERS was deceptively misdescriptive for a retail\nfurniture store that sells, but does not make furniture)\n\n\xe2\x80\xa2\n\nIn re Christopher C. Hinton, 116 U.S.P.Q.2d 1051 (TTAB 2015) (affirming examiner\xe2\x80\x99s\ndetermination that THCTea was deceptively misdescriptive for tea-based beverages not\ncontaining THC (tetrahydrocannabinol), the primary psychoactive ingredient in marijuana;\nTTAB repeatedly noted that the question of whether the mark was deceptive under Section\n2(a) was not before it, since the examiner had stopped at a finding of deceptive\nmisdescriptiveness under Section 2(e)(1))\nb.\n\nGeographic Deceptive and Deceptively Misdescriptive Marks\n\nWhile trademark law\xe2\x80\x99s analysis of the deceptive misdescriptiveness and deceptiveness of nongeographic marks is relatively uncomplicated, the same cannot be said about the law\xe2\x80\x99s analysis of the\ndeceptive misdescriptiveness and deceptiveness of geographic marks. American trademark law\ndevotes special attention to geographic marks primarily because many foreign trading partners have\nsignificant economic and cultural interests in preserving the exclusivity of their geographic names\n(such as CHAMPAGNE, CAMEMBERT, or PARMA). In trade negotiations, particularly those leading to the\nNorth American Free Trade Agreement of 1992, the Americans agreed to amend the Lanham Act so\nthat geographic marks that were merely deceptively misdescriptive would be treated the same as\ngeographic marks that were outright deceptive\xe2\x80\x94specifically, geographic marks that were merely\ndeceptively misdescriptive would be unregistrable regardless of whether they possessed secondary\nmeaning. The mechanics of this change in the Lanham Act took the form, in essence, of amending\nLanham Act \xc2\xa7 2(f) to exclude geographically deceptively misdescriptive marks from that subsection\xe2\x80\x99s\nmechanism by which certain otherwise defective marks can be registered upon a showing of\nsecondary meaning. See Lanham Act \xc2\xa7 2(f), 15 U.S.C. \xc2\xa7 1052(f) (providing that marks that fall under\nthe provision of \xc2\xa7 2(e)(3), in that they are \xe2\x80\x9cprimarily geographically deceptively misdescriptive,\xe2\x80\x9d1 do\nnot qualify for registration upon a showing of secondary meaning).\n1 No one likes this statutory phrase \xe2\x80\x9cprimarily geographically deceptively misdescriptive\xe2\x80\x9d from\nSection 2(e)(3), but we appear to be stuck with it. In her opinion in In re Miracle Tuesday, LLC, 695 F.3d\n\n200\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nThus, we now have a scheme in which non-geographic marks that are merely deceptively\nmisdescriptive can be registered upon a showing of secondary meaning while geographic marks that\nare merely deceptively misdescriptive cannot be registered, even if they possess secondary meaning.\nMeanwhile, any mark that is outright deceptive, be it non-geographic or geographic, is unregistrable.\nAmerica\xe2\x80\x99s trading partners and perhaps even American trade negotiators at the time could be forgiven\nfor having thought that the Americans had indeed made a significant trade concession, one that limited\nthe ability of trademark applicants at the PTO to register even merely deceptively misdescriptive\ngeographic terms.\nEnter the Federal Circuit. In In re California Innovations, Inc. 329 F.3d 1334, 1336-1341 (Fed. Cir.\n2003), the Federal Circuit reviewed the history of the amendment to the Lanham Act and reached the\nfollowing conclusion: just as the Lanham Act now treats geographically deceptively misdescriptive\nterms and geographically deceptive terms the same way (neither is registrable under any\ncircumstances), so the PTO should employ exactly the same test that it uses to determine if a\ngeographic mark is outright deceptive under Lanham Act \xc2\xa7 2(a) also to determine if a geographic mark\nis merely deceptively misdescriptive under Lanham Act \xc2\xa7 2(e)(3). Specifically, a mark may be found to\nbe geographically deceptively misdescriptive only if its misdescription is found to be material to\nconsumers\xe2\x80\x99 decision to purchase. (Recall that materiality need not be shown for a non-geographic mark\nto be found deceptively misdescriptive.) In summarizing the new test for geographic deceptive\nmisdescriptiveness (and geographic deceptiveness), the California Innovations court explained that a\nmark will be found to be geographically deceptively misdescriptive (or geographically deceptive) if:\n(1) the primary significance of the mark is a generally known geographic location,\n(2) the consuming public is likely to believe the place identified by the mark indicates the\norigin of the goods bearing the mark, when in fact the goods do not come from that place,\nand\n(3) the misrepresentation was a material factor in the consumer\xe2\x80\x99s decision.\nId. at 1341. The result is that if all three elements of the three-step test set forth in In re California\nInnovations are met, then the mark may be geographically deceptive, geographically deceptively\nmisdescriptive, or both geographically deceptive and geographically deceptively misdescriptive. In any\nof these cases the mark is unprotectable. For marks not claiming use in commerce or acquired\ndistinctiveness prior to December 8, 1993 (the date of enactment of the NAFTA Implementation Act),\nthe PTO will typically issue a refusal based on Section 2(e)(3) and Section 2(a).2 See TMEP\n\xc2\xa7 1210.05(d).\n\n1339 (Fed. Cir. 2012), Judge O\xe2\x80\x99Malley took pains to distance her own elegant prose from the statutory\nlanguage: \xe2\x80\x9cThe phrase \xe2\x80\x98primarily geographically deceptively misdescriptive\xe2\x80\x99 is a statutory term of art\nin the trademark context; we neither take responsibility for nor endorse the split infinitives or absence\nof necessary commas its use in this opinion requires.\xe2\x80\x9d Id. at 1342 n. 2. Where possible, this casebook\nwill drop \xe2\x80\x9cprimarily\xe2\x80\x9d and simply speak of \xe2\x80\x9cgeographically deceptively misdescriptive\xe2\x80\x9d marks.\n2\n\nThe Gilson treatise explains why the difference between the two categories might matter:\nThe test for determining whether a mark is deceptive under Section 2(a) is now the same\nas that for determining whether a mark is primarily geographically deceptively\nmisdescriptive under Section 2(e)(3). The difference comes with respect to registrability:\nGeographically deceptive marks cannot be registered on either the Principal or\nSupplemental Register, while primarily geographically deceptively misdescriptive marks\nmay be registered on the Principal Register if the marks became distinctive of the goods\n201\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nConsider the strange implications of the Federal Circuit\xe2\x80\x99s holding in California Innovations. Before\nthe NAFTA amendments in 1993, geographically deceptively misdescriptive marks could be registered\nupon a showing of secondary meaning. The Americans then amended the Lanham Act to provide that\nany terms that qualify as geographically deceptively misdescriptive may not be registered. However,\nby adding a materiality requirement, California Innovations then made it much more difficult for terms\nto qualify as geographically deceptively misdescriptive. As a result, at least for certain marks, the U.S.\nhas arguably adopted an even laxer standard for registration of geographically misdescriptive terms. If\nthe misdescriptiveness of such terms is not material to the consumer\xe2\x80\x99s decision to purchase, then the\nterm may be registrable, and now without any need to show secondary meaning. For if such terms are\nnot geographically deceptively misdescriptive (because the materiality requirement is not satisfied),\nneither are they geographically descriptive, a status which would trigger the secondary meaning\nrequirement. Instead, in the wake of California Innovations, it would appear that such terms are\nessentially suggestive or arbitrary, i.e., inherently distinctive. For a thorough discussion of this turn of\nevents, see Robert Brauneis & Roger E. Schechter, Geographic Trademarks and the Protection of\nCompetitor Communication, 96 TRADEMARK REP. 782 (2006).\nComments and Questions\n1. Synthesizing the Tests. The tests for geographic descriptiveness, geographic deceptiveness, and\ngeographic deceptive misdescriptiveness may appear quite complicated. Experience has shown that\nthese tests distract the student from far more important issues in trademark law. To try to aid in\nunderstanding the tests, the flowchart below attempts to synthesize the tests into a series of questions.\n\nor services before December 8, 1993, and they may be registered on the Supplemental\nRegister if they have been in use in commerce since before December 8, 1993.\nGILSON \xc2\xa7 2.03[4][c][3].\n202\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n2. Examples of marks held to be geographically deceptively misdescriptive. There are many\nexamples of marks held to be geographically deceptively misdescriptive. See, e.g, In re Miracle Tuesday\nLLC, 695 F3d 1339, 104 USPQ2d 1330 (Fed. Cir. 2012) (affirming the TTAB\xe2\x80\x99s refusal to register the\ncomposite mark consisting of JPK PARIS 75 and design as primarily geographically deceptively\nmisdescriptive for apparel that did not originate in Paris; \xe2\x80\x9cAlthough [applicant\xe2\x80\x99s Miami-based\ndesigner] Mr. Klifa may still consider himself to be Parisian, the goods that applicant seeks to register\nare not because there is no current connection between the goods and Paris.\xe2\x80\x9d); In re Premiere Distillery,\nLLC, 103 USPQ2d 1483 (TTAB 2012) (finding REAL RUSSIAN primarily geographically deceptively\nmisdescriptive for vodka not made in Russia; \xe2\x80\x9cIn view of this demonstrated fame and reputation of\nRussian vodka to the relevant public, we may infer that a substantial portion of consumers who\nencounter REAL RUSSIAN on applicant\xe2\x80\x99s vodka are likely to incorrectly believe that the vodka comes\n203\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nfrom Russia and that such mistaken belief would materially influence their decision to purchase the\nvodka\xe2\x80\x9d); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841 (TTAB 2012) (finding OLD\nHAVANA primarily geographically deceptively misdescriptive for rum not made in Cuba); Corporacion\nHabanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085 (TTAB 2012) (finding GUANTANAMERA, a\nSpanish word literally meaning \xe2\x80\x9cgirl from Guantanamo\xe2\x80\x9d or \xe2\x80\x9cof or from Guantanamo, Cuba,\xe2\x80\x9d primarily\ngeographically deceptively misdescriptive for cigars not made in Cuba).\n3. Example of a mark held not to be geographically deceptively misdescriptive. For an example of a\nmark held not to be geographically deceptively misdescriptive, consider In re Glaze Inc., Serial No.\n76565437 (TTAB Mar. 17, 2005) (not citable as precedent). In In re Glaze, the applicant sought to\nregister the mark SWISSCELL for batteries not made in Switzerland. The examing attorney refused\nregistration and then the TTAB reversed. The Board found that because the mark incorporated the\nword \xe2\x80\x9cSwiss,\xe2\x80\x9d the primary significance of the mark was a generally known geographic location.\nHowever, the Board found that consumers would not likely believe that the batteries originated in\nSwitzerland:\nEven when we view the evidence that perhaps two Swiss companies make different type\nof batteries and that Switzerland is a country with a prosperous and stable market\neconomy, we hold that, as in California Innovations, 66 USPQ2d at 1859, this is tenuous\nevidence that purchasers would expect batteries for lighting to come from\nSwitzerland . . . .\n[H]ere the evidence of a goods/place association consists of a single battery\ncompany (Renata) and another company that makes vehicle batteries. Under the stricter\nCalifornia Innovations standards, we are constrained to find that the examining attorney\nhas not established the required goods/place association between Switzerland and\nbatteries for lighting.\nId. at *4. Finally, the Board found no evidence that the misrepresentation of the source of the batteries\nwould influence consumers\xe2\x80\x99 decision to purchase them:\nThe few references in the retailers\xe2\x80\x99 advertisements to \xe2\x80\x9cSwiss quality\xe2\x80\x9d and \xe2\x80\x9cSwiss\nmanufacture\xe2\x80\x9d in relation to {another Swiss company\xe2\x80\x99s Swiss-made} batteries do not show\nthat prospective purchasers\xe2\x80\x99 decisions would be materially influenced by the term\n\xe2\x80\x9cSwiss\xe2\x80\x9d when purchasing batteries for lighting . . . .\nThe only other evidence that could indicate that the term \xe2\x80\x9cSwiss\xe2\x80\x9d may materially\nimpact purchasing decisions is the nebulous references to \xe2\x80\x9cSwiss quality.\xe2\x80\x9d There is\nsimply insufficient evidence to hold that the term \xe2\x80\x9cSwiss\xe2\x80\x9d applied to virtually any product\nmaterially influences purchasers.\nId. at *4-5. Thus the mark was neither geographically descriptive nor geographically deceptively\nmisdescriptive. Apparently, it therefore qualified as inherently distinctive.\n3.\n\nMarks that May Falsely Suggest a Connection\n\nLanham Act \xc2\xa7 2; 15 U.S.C. \xc2\xa7 1052\nNo trademark by which the goods of the applicant may be distinguished from the goods\nof others shall be refused registration on the principal register on account of its nature\nunless it\xe2\x80\x93\n(a) Consists of or comprises . . . matter which may . . . falsely suggest a connection with\npersons, living or dead, institutions, beliefs, or national symbols . . . .\n....\n\n204\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n(c) Consists of or comprises a name, portrait, or signature identifying a particular living\nindividual except by his written consent, or the name, signature, or portrait of a deceased\nPresident of the United States during the life of his widow, if any, except by the written\nconsent of the widow.\nIn re Nieves & Nieves LLC\n113 U.S.P.Q.2d 1639 (TTAB 2015)\nOpinion by Bergsman, Administrative Trademark Judge:\n[1] Nieves & Nieves LLC (\xe2\x80\x9cApplicant\xe2\x80\x9d) filed an intent-to-use application to register the mark\nROYAL KATE, in standard character form, for the following goods as amended:\nCosmetics; fragrances; perfumes; . . . personal care products, namely, shampoo, body\nwash, conditioner, soap, shower gel, in Class 3;\nWatches; cufflinks; key fobs of precious metals; jewelry; jewelry boxes, in Class 14;\nPouches, namely leather pouches, pouches for holding makeup, keys and other personal\nitems; purses; handbags; pocketbooks; clutches; backpacks . . . in Class 18;\nBedding, namely, bed sheets . . . ; bath towels; towels, in Class 24; and\nApparel . . . ; bibs not of paper; cloth diapers, in Class 25.\nThe application includes a statement that \xe2\x80\x9cthe name(s), portrait(s), and/or signature(s) shown in the\nmark does not identify a particular living individual.\xe2\x80\x9d\n[2] The Trademark Examining Attorney refused to register Applicant\xe2\x80\x99s mark under Section 2(a) of\nthe Trademark Act of 1946, 15 U.S.C. \xc2\xa7 1052(a), on the ground that ROYAL KATE falsely suggests a\nconnection with Catherine, Duchess of Cambridge, also known as Kate Middleton. The Trademark\nExamining Attorney also refused to register Applicant\xe2\x80\x99s mark under Section 2(c) of the Trademark Act,\n15 U.S.C. \xc2\xa7 1052(c), on the ground that ROYAL KATE consists of a name identifying a particular living\nindividual whose written consent to register the mark is not of record.\n....\nII. Whether ROYAL KATE Falsely Suggests a Connection with Kate Middleton?\n[3] To determine whether Applicant\xe2\x80\x99s ROYAL KATE mark falsely suggests a connection with Kate\nMiddleton under Section 2(a), the Board analyzes whether the evidence of record satisfies the\nfollowing four-part test:\n(1) Whether Applicant\xe2\x80\x99s mark ROYAL KATE is the same as or a close approximation of Kate\nMiddleton\xe2\x80\x99s previously used name or identity;\n(2) Whether Applicant\xe2\x80\x99s mark ROYAL KATE would be recognized as such by purchasers, in that\nthe mark points uniquely and unmistakably to Kate Middleton;\n(3) Whether Kate Middleton is not connected with the goods that will be sold by Applicant\nunder its mark; and\n(4) Whether Kate Middleton\xe2\x80\x99s name or identity is of sufficient fame or reputation that when\nApplicant\xe2\x80\x99s mark is used on Applicant\xe2\x80\x99s goods, a connection with Kate Middleton would\nbe presumed.\nSee In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013); In re Jackson Int\xe2\x80\x99l Trading Co., 103 USPQ2d\n1417, 1419 (TTAB 2012). See also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d\n1372, 217 USPQ 505, 509 (Fed. Cir. 1983) (hereinafter \xe2\x80\x9cNotre Dame\xe2\x80\x9d); Bd. of Trs. of Univ. of Ala. v. Pitts,\n107 USPQ2d 2001, 2025 (TTAB 2013) (hereinafter \xe2\x80\x9cPitts\xe2\x80\x9d).\nA. Whether Applicant\xe2\x80\x99s mark ROYAL KATE is the same as or a close approximation of the name or identity\nof Kate Middleton?\n205\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[4] Applicant argues that ROYAL KATE is not a close approximation of Kate Middleton\xe2\x80\x99s\npreviously-used name or identity because there is no evidence that Kate Middleton herself used\nROYAL KATE as her name or identity and because Kate Middleton is not officially a \xe2\x80\x9croyal.\xe2\x80\x9d1\nSpecifically, Applicant contends as follows:\nAlthough some may argue that ROYAL KATE may be reasonably understood as referring\nto Kate Middleton, Duchess of Cambridge, by some persons, it is not a close\napproximation of her name because ROYAL is not part of Middleton\xe2\x80\x99s name or title.\n[5] We reject Applicant\xe2\x80\x99s interpretation of the first prong of the test as inappropriately narrowing\nthe scope of Section 2(a). The creation of a false suggestion of a connection results from an applicant\xe2\x80\x99s\nuse of something that is closely \xe2\x80\x9cassociated with a particular personality or \xe2\x80\x98persona\xe2\x80\x99 of someone other\nthan the applicant. Notre Dame, 217 USPQ at 509; see also Pitts, 107 USPQ2d at 2024. The reason for\nthe statutory prohibition is that the person identified loses the right to control his/her identity. Notre\nDame, 217 USPQ at 509 (\xe2\x80\x9cThere may be no likelihood of such confusion as to the source of goods even\nunder a theory of \xe2\x80\x9csponsorship\xe2\x80\x9d or \xe2\x80\x9cendorsement,\xe2\x80\x9d and, nevertheless, one\xe2\x80\x99s right of privacy, or the\nrelated right of publicity, may be violated.\xe2\x80\x9d).\n[6] The statutory false suggestion of a connection refusal emerged from the right to privacy and\nright of publicity.\nEvolving out of the rights of privacy and publicity, the false suggestion of a connection\nunder \xc2\xa7 2(a) of the Trademark Act was intended to preclude registration of a mark which\nconflicts with another\xe2\x80\x99s rights, even though not founded on the familiar test of likelihood\nof confusion. [Notre Dame 217 USPQ at 509]. An opposer may prevail on the false\nsuggestion of a connection ground when its right to control the use of its identity is\nviolated, even if the name claimed to be appropriated was never commercially exploited\nby the opposer as a trademark or in a manner analogous to trademark use. See Notre\nDame, 703 F.2d at 1375, 217 USPQ at 508; Buffett, 226 USPQ at 429. However, while a\nparty\xe2\x80\x99s interest in its identity does not depend for its existence on the adoption and use of a\ntechnical trademark, a party must nevertheless have a protectable interest in a name (or its\nequivalent). Thus, we focus on the key factor in the false suggestion analysis for this case:\nwhether applicants\xe2\x80\x99 mark is a close approximation of opposers\xe2\x80\x99 name or identity, i.e., a right\nin which opposers possess a protectable interest.\nPitts, 107 USPQ2d at 2025 (emphasis supplied).\n[7] The right of publicity has developed to protect the commercial interest of celebrities in their\nidentities. Under this right, the celebrity has an interest that may be protected from the unauthorized\ncommercial exploitation of that identity. If the celebrity\xe2\x80\x99s identity is commercially exploited without\nthe consent of the celebrity, there has been an invasion of his/her right, regardless of whether his/her\n\xe2\x80\x9cname or likeness\xe2\x80\x9d is used. Cf. Carson v. Here\xe2\x80\x99s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1, 4\n(6th Cir. 1983) (former late night television personality Johnny Carson\xe2\x80\x99s identity may be exploited\neven if his name or likeness is not used).\n\n\xe2\x80\x9cRoyal\xe2\x80\x9d is defined, inter alia, as \xe2\x80\x9cof or pertaining to a king, queen, other sovereign\xe2\x80\x9d and\ninformally as \xe2\x80\x9ca royal person; member of the royalty,\xe2\x80\x9d or \xe2\x80\x9ca member of England\xe2\x80\x99s royal family.\xe2\x80\x9d The\nRandom House Dictionary of the English Language (Unabridged), p. 1677 (2nd ed. 1977). The Board\nmay take judicial notice of dictionary definitions., Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp.\nCo., 213 USPQ 594 (TTAB 1982), aff\xe2\x80\x99d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also\nDictionary.com attached to the October 27, 2011 Office Action.\n1\n\n206\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[8] The evidence reflects that Kate Middleton is a celebrity. That means her identity has value\nwhich the \xc2\xa7 2(a) false suggestion refusal is intended to protect. See Notre Dame, 217 USPQ at 509 (\xe2\x80\x9cIt is\na right of this nature [that is, the right to privacy or right to publicity], a right to control the use of one\xe2\x80\x99s\nidentity, which the University also asserts under \xc2\xa7 2(a).\xe2\x80\x9d). Therefore, it is the right of publicity basis for\nthe false suggestion of a connection refusal that applies in this case.\n[9] The fact that Kate Middleton, the Duchess of Cambridge, has never used ROYAL KATE as her\nname or identity does not obviate the false suggestion of a connection refusal. A term may be\nconsidered the identity of a person even if his or her name or likeness is not used. All that is required is\nthat the mark sought to be registered clearly identifies a specific person (i.e., Kate Middleton). . . . See\nalso In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999) (\xe2\x80\x9c[W]hile the general public in the United\nStates may or may not have seen the upcoming Olympic games referred to precisely as \xe2\x80\x98Sydney 2000,\xe2\x80\x99\nwe have no doubt that the general public in the United States would recognize this phrase as referring\nunambiguously to the upcoming Olympic Games in Sydney, Australia, in the year 2000.\xe2\x80\x9d).\n[10] We take this opportunity to make explicit what was implicit in our prior decisions in Pitts\nand In re Urbano, 51 USPQ2d 1776 (TTAB 1999): the first prong of the false suggestion of a connection\ntest inquires into whether applicant\xe2\x80\x99s mark is the same as or a close approximation of the name or\nidentity of a particular person other than the applicant, whether or not the person actually \xe2\x80\x9cused\xe2\x80\x9d the\nname or identity himself or herself. . . . Therefore, in this case, we examine the evidence of record to\ndetermine whether it establishes that Applicant\xe2\x80\x99s mark ROYAL KATE would be understood by the\nrelevant public as identifying Kate Middleton.\n[11] As noted above, the term \xe2\x80\x9croyal\xe2\x80\x9d refers to a member of the England\xe2\x80\x99s royal family. The mark\nROYAL KATE creates a commercial impression that references Kate Middleton as a member of the\nroyal family. This is corroborated by articles in the media referencing Kate Middleton as a \xe2\x80\x9croyal.\xe2\x80\x9d . . . .\n[12] In fact, Kate Middleton is referred to as \xe2\x80\x9cHer Royal Highness.\xe2\x80\x9d Applicant submitted an excerpt\nfrom \xe2\x80\x9cThe official website of The British Monarchy\xe2\x80\x9d (royal.gov.uk) which references Kate Middleton as\n\xe2\x80\x9cher Royal Highness.\xe2\x80\x9d . . . .\n[13] The Trademark Examining Attorney submitted numerous examples of media coverage\nreferring to Kate Middleton as ROYAL KATE. . . .\n[14] This evidence is sufficient to establish that the mark ROYAL KATE is a close approximation of\nthe identity of Kate Middleton because American media uses the term ROYAL KATE to identify Kate\nMiddleton and, therefore, the American public receives media reports identifying Kate Middleton as\nROYAL KATE. In fact, because the American public receives reports that Kate Middleton will be\nreferred to as Her Royal Highness the Duchess of Cambridge, there is a natural association between the\nmark ROYAL KATE and Kate Middleton regardless of whether she uses that moniker herself. See Bd. of\nTrustees of the Univ. of Ala. v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) (\xe2\x80\x9cBAMA\xe2\x80\x9d\nuniquely pointed to the identity of the University of Alabama even though the school had not adopted\nit as a trademark and had only sporadically referred to itself as BAMA, in large part due to the public\xe2\x80\x99s\nassociation of the term with the school).\nB. Whether Applicant\xe2\x80\x99s mark ROYAL KATE would be recognized as a close approximation of Kate\nMiddleton\xe2\x80\x99s identity by purchasers, in that the mark points uniquely and unmistakably to Kate Middleton?\n[15] Applicant is seeking to register its mark for fashion products such as cosmetics, jewelry,\nhandbags, bedding and clothing and Applicant characterized these products as \xe2\x80\x9cluxury items and home\ngoods.\xe2\x80\x9d The goods and services themselves serve, if anything, to reinforce that the Mark uniquely and\nunmistakably points to Kate Middleton. Kate Middleton, by virtue of her being a member of the British\nRoyal family and wife of Prince William, the second in line to the English throne, has become a fashion\ntrendsetter. As the evidence establishes, the media reports what she is wearing, where she goes and\nwhat she purchases . . . .\n207\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[16] . . . Applicant has not come forward with any evidence that the name ROYAL KATE refers to\nanyone other than Kate Middleton.\nC. Whether Kate Middleton is connected with the goods that are sold or will be sold by Applicant under its\nmark?\n[17] Applicant acknowledges that Kate Middleton is not connected with the goods that are or will\nbe sold by Applicant under the mark ROYAL KATE, and that Kate Middleton has not consented to\nApplicant\xe2\x80\x99s use of her persona.\nD. Whether Kate Middleton\xe2\x80\x99s name or identity is of sufficient fame or reputation that when Applicant\xe2\x80\x99s\nmark ROYAL KATE is used on Applicant\xe2\x80\x99s goods, a connection with Kate Middleton would be presumed?\n[18] . . . The evidence discussed in Section B . . . demonstrates that Kate Middleton\xe2\x80\x99s identity is of\nsufficient renown that when Applicant\xe2\x80\x99s mark ROYAL KATE is used in connection with Applicant\xe2\x80\x99s\ngoods, a connection with Kate Middleton will be presumed.\n[19] \xe2\x80\x9cApplicant does not dispute that Catherine, Duchess of Cambridge, is a well-known figure,\nstemming from her well-publicized relationship with Prince William and her subsequent wedding.\xe2\x80\x9d\n\xe2\x80\x9cAlso, the Applicant does not dispute the . . . claim that Kate Middleton\xe2\x80\x99s fame is not temporary.\xe2\x80\x9d\nHowever, Applicant argues that \xe2\x80\x9cwhile the Duchess of Cambridge is well-known, there is no evidence\nof a presumptive connection between Catherine and the specific goods upon which Applicant\xe2\x80\x99s mark\nwill be used. Simply because Catherine is believed to have style and good taste does not mean that she\nis publicly perceived to be involved in the industry at all.\xe2\x80\x9d We do not require proof that Kate Middleton\nis well-known for cosmetics, jewelry, handbags, bedding and clothing. Our inquiry is whether Kate\nMiddleton\xe2\x80\x99s renown is such that when the mark ROYAL KATE is used with those products, consumers\nwill recognize ROYAL KATE as referring to Kate Middleton such that a connection with Kate Middleton\nwill be presumed. As the Board held in In re Pedersen, 109 USPQ2d 1185, 1202 (TTAB 2013):\n[T]he key is whether the name per se is unmistakably associated with a particular person\nor institution and, as used would point uniquely to the person or institution. In short, it is\nthe combination of: (1) a name of sufficient fame or reputation and (2) its use on or in\nconnection with particular goods or services, that would point uniquely to a particular\nperson or institution. [Internal citation omitted]. Thus, our inquiry is whether consumers\nof medicinal herbal remedies would think only of the Lakota tribes when the LAKOTA\nname is used on such goods. Cf. Notre Dame, 217 USPQ 509 (\xe2\x80\x9c\xe2\x80\x98Notre Dame\xe2\x80\x99 is not a name\nsolely associated with the University. It serves to identify a famous and sacred religious\nfigure and is used in the names of churches dedicated to Notre Dame, such as the\nCathedral of Notre Dame in Paris.\xe2\x80\x9d).\n[20] In view [of the record evidence], we find that Kate Middleton\xe2\x80\x99s identity is of sufficient fame\nor reputation that when Applicant\xe2\x80\x99s mark ROYAL KATE is used on Applicant\xe2\x80\x99s goods, a connection with\nKate Middleton will be presumed.\nE. Analyzing the factors.\n[21] [W]e find that Applicant\xe2\x80\x99s mark ROYAL KATE for the goods listed in the application falsely\nsuggests a connection with Kate Middleton.\nIII. Whether the mark ROYAL KATE identifies a particular living individual whose written consent to\nregister the mark is not of record?\n[22] Section 2(c) of the Trademark Act, 15 U.S.C. \xc2\xa7 1052(c) provides the following:\nNo trademark by which the goods of the applicant may be distinguished from the goods\nof others shall be refused registration on the principal register on account of its nature\nunless it . . . (c) Consists of or comprises a name, portrait, or signature identifying a\nparticular living individual except by his written consent, or the name, signature, or\n208\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nportrait of a deceased President of the United States during the life of his widow, if any,\nexcept by the written consent of the widow.\n[23] The purpose of requiring the consent of a living individual to the registration of his or her\nname, signature, or portrait is to protect rights of privacy and publicity that living persons have in the\ndesignations that identify them. In re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010); Martin v. Carter\nHawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979) (Section 2(c) was designed \xe2\x80\x9cto protect one\nwho, for valid reasons, could expect to suffer damage from another\xe2\x80\x99s trademark use of his name.\xe2\x80\x9d) . . . .\n[24] Whether consent to registration is required depends on whether the public would recognize\nand understand the mark as identifying a particular living individual. A consent is required only if the\nindividual bearing the name in the mark will be associated with the mark as used on the goods or\nservices, either because: (1) the person is so well known that the public would reasonably assume a\nconnection between the person and the goods or services; or (2) the individual is publicly connected\nwith the business in which the mark is used . . . .\n[25] For purposes of Section 2(c), a \xe2\x80\x9cname\xe2\x80\x9d does not have to be the full name of an individual.\nSection 2(c) applies not only to full names, but also first names, surnames, shortened names,\npseudonyms, stage names, titles, or nicknames, if there is evidence that the name identifies a specific\nliving individual who is publicly connected with the business in which the mark is used, or who is so\nwell known that such a connection would be assumed. See In re Hoefflin, 97 USPQ2d at 1177-78 (holding\nregistration of the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK\xe2\x80\x99S JOCKS DRESS\nTO THE LEFT barred under Section 2(c) in the absence of consent to register, because they create a\ndirect association with President Barack Obama); Krause v. Krause Publ\xe2\x80\x99ns, Inc., 76 USPQ2d at 1909\n(\xe2\x80\x9cthe mark KRAUSE PUBLICATIONS, although it includes only the surname of petitioner, would fall\nwithin the provisions of Section 2(c) if petitioner establishes that KRAUSE, as used on or in connection\nwith the goods or services set forth in the involved registration, points uniquely to him \xe2\x80\x98as a particular\nliving individual.\xe2\x80\x9d\xe2\x80\x98); In re Sauer, 27 USPQ2d at 1074-75 (holding registration of a mark containing BO,\nused in connection with a sports ball, barred under Section 2(c) in the absence of consent to register,\nbecause BO is the nickname of a well-known athlete and thus use of the mark would lead to the\nassumption that he was associated with the goods) . . . .\n[26] In re Steak & Ale Rest. of Am., Inc., 185 USPQ 447, 448 (TTAB 1975) is particularly analogous\nto the present case. In that decision, the Board affirmed a Section 2(c) refusal of the mark PRINCE\nCHARLES because the wording identifies a particular well-known living individual whose consent was\nnot of record. The Board reasoned that \xe2\x80\x9cthe addition of a given name or a surname to the word\n\xe2\x80\x98PRINCE\xe2\x80\x99 could well serve as a name or \xe2\x80\x98nickname\xe2\x80\x99 for a particular living individual who could be\nidentified and referred to in the various walks of life with this appellation.\xe2\x80\x9d We find that this same logic\napplies to the mark ROYAL KATE. Cf. Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32\nUSPQ2d 1192, 1196 (TTAB 1994) (evidence shows that \xe2\x80\x9cDuca D\xe2\x80\x99Aosta\xe2\x80\x9d is a title and does not refer\n\xe2\x80\x9cunequivocally to a particular living individual.\xe2\x80\x9d)\n[27] While with lesser-known figures there may have to be evidence showing that the consuming\npublic connects them with the manufacturing or marketing of the goods at issue, well-known\nindividuals such as celebrities and world-famous political figures are entitled to the protection of\nSection 2(c) without having to demonstrate a connection with the involved goods or services. See In re\nHoefflin, 97 USPQ2d at 1177 (because Barack Obama is the President of the United States, the\npurchasing public will reasonably assume that marks consisting of the names BARACK and OBAMA\nidentify President Barack Obama); In re Masucci, 179 USPQ 829, 830 (TTAB 1973) (in spite of any\ncommon law rights applicant may have, EISENHOWER for greeting cards was refused on the ground\nthat it consisted of the name of the late President Eisenhower during the life of his widow, and\napplication for registration was filed without her consent).\n209\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[28] As we found in the previous section, ROYAL KATE identifies Kate Middleton whose identity is\nrenowned. By any measure, she is a celebrity, and thus the term ROYAL KATE points uniquely and\nunmistakably to Kate Middleton. Although Kate Middleton, the Duchess of Cambridge, does not use the\nname ROYAL KATE, it has become an expression used by the American public (and media) to identify\nher. We find that the mark ROYAL KATE is the name of a particular living individual, namely, Kate\nMiddleton, and because Kate Middleton has not consented to the use and registration of that name, the\nSection 2(c) refusal is affirmed.\n[29] Decision: The refusals to register under Section 2(a) & (c) are affirmed.\nComments and Questions\n1. Difference between \xc2\xa7 2(a) false suggestion of a connection and \xc2\xa7 2(c) identification of living\nindividual without consent. Lanham Act \xc2\xa7 2(c), 15 U.S.C. \xc2\xa7 1052(c) prohibits the registration of a mark\nwhich \xe2\x80\x9cconsists of or comprises a name . . . identifying a particular living individual except by his\nwritten consent . . .\xe2\x80\x9d This does not mean that, for example, every person bearing the surname Singh\nhas the ability under \xc2\xa7 2(c) to prohibit the registration of a mark incorporating the word Singh. On the\ncontrary,\nA name is deemed to \xe2\x80\x9cidentify\xe2\x80\x9d a particular living individual, for purposes of Section 2(c),\nonly if the \xe2\x80\x9cindividual bearing the name in question will be associated with the mark as\nused on the goods, either because that person is so well known that the public would\nreasonably assume the connection, or because the individual is publicly connected with\nthe business in which the mark is used.\xe2\x80\x9d\nIn re Sauer, 27 U.S.P.Q.2d 1073 (TTAB 1993) (quoting Martin v. Carter Hawley Hale Stores, Inc., 206\nUSPQ 931 (TTAB 1979). In practice, for well-known celebrities, \xc2\xa7 2(a), which tends to require a\nshowing of general notoriety, and 2(c), which tends only to require a showing of niche notoriety, are\nredundant. See, e.g., In re Sauer, 27 U.S.P.Q.2d 1073 (TTAB 1993) (finding the composite mark\nconsisting of BO BALL and design to be prohibited from registration under \xc2\xa7 2(a) as falsely suggesting a\nconnection with professional sportsmen Bo Jackson and under \xc2\xa7 2(c) as identify a living individual so\nwell-known that the public would reasonably assume a connection); In re Richard M. Hoefflin, 97\nU.S.P.Q.2d 1174 (TTAB 2010) (prohibiting registration of marks, for pajamas, OBAMA PAJAMA, OBAMA\nBAHAMA PAJAMAS and BARACK\xe2\x80\x99S JOCKS DRESS TO THE LEFT under \xc2\xa7 2(c)). But for non-celebrities, \xc2\xa7 2(c) can\nprohibit registrations that \xc2\xa7 2(a) may not, provided that the non-celebrity is \xe2\x80\x9cpublicly connected with\nthe business in which the mark is used.\xe2\x80\x9d See, e.g., Ross v. Analytical Technology Inc., 51 U.S.P.Q.2d 1269\n(TTAB 1999) (prohibiting registration of ROSS for equipment for electrochemical analysis where\nplaintiff James W. Ross, Jr., was a retired inventor well-known in the field).\n2. Deceased celebrities. The use of famous historical names will not necessarily trigger the \xc2\xa7 2(a)\nbar. See, e.g., Lucien Piccard Watch Corp. v. Crescent Corp., 314 F. Supp. 329 (S.D.N.Y. 1970) (finding\nthat mark DA VINCI on various goods, including luggage, will not falsely suggest a connection with\nLeonardo da Vinci because the mark \xe2\x80\x9chardly suggests that he personally had something to do with the\ndesigning of plaintiff\xe2\x80\x99s luggage\xe2\x80\x9d). But see Association Pour La Defense et La Promotion De Loeuvre De\nMarc Chagall Dite Comite Marc Chagall v. Bondarchuk, 82 U.S.P.Q.2d 1838, 2007 WL 749714 (TTAB\n2007) (prohibiting registration of MARC CHAGALL for vodka; \xe2\x80\x9cwe conclude that the evidence in this\nrecord is more than adequate to establish that the mark would be recognized as the name of the\npainter Marc Chagall and that the name is of sufficient fame or reputation that when the respondent\xe2\x80\x99s\nmark is used on the goods a connection with the painter Marc Chagall would be presumed\xe2\x80\x9d).\n3. For a comprehensive review of section 2(a) caselaw, see Anne Gilson LaLonde, Giving the\nWrong Impression: Section 2(a)\'s False Suggestion of a Connection, 110 TRADEMARK REP. 877 (2020).\n\n210\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n4.\n\nConfusingly-Similar Marks Under Lanham Act \xc2\xa7 2(d)\n\nLanham Act \xc2\xa7 2(d), 15 U.S.C. \xc2\xa7 1052 (d), prohibits the registration of a mark that:\nConsists of or comprises a mark which so resembles a mark registered in the Patent and\nTrademark Office, or a mark or trade name previously used in the United States by\nanother and not abandoned, as to be likely, when used on or in connection with the goods\nof the applicant, to cause confusion, or to cause mistake, or to deceive.\nBecause this particular statutory bar bears so much in common with the likelihood of confusion\nanalysis reviewed at length below in Part II.B, we will discuss the \xc2\xa7 2(d) bar in that section.\n5.\n\nDisparaging and Scandalous Marks\n\nIn Matal v. Tam, 137 S.Ct. 1744, 582 U.S. __ (U.S. 2017), which is excerpted below, the Supreme\nCourt held that the Lanham Act \xc2\xa7 2(a) prohibition on the registration of marks that \xe2\x80\x9cmay disparage . . .\npersons\xe2\x80\x9d was invalid under the Free Speech Clause of the First Amendment. Tam is significant for a\nnumber of reasons specific to trademark law. First, it abrogated a half-century of PTO practice and\nfederal court case law applying the \xc2\xa7 2(a)\xe2\x80\x99s \xe2\x80\x9cdisparagement clause.\xe2\x80\x9d Second, Tam also arguably raises\nsignificant questions about whether antidilution law, which we cover in Part II.C below, is\nconstitutional. May the government restrict non-deceptive speech that \xe2\x80\x9cimpairs the distinctiveness of\nthe famous mark,\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1125(c)(2)(B), or that \xe2\x80\x9charms the reputation of the famous mark,\xe2\x80\x9d 15\nU.S.C. \xc2\xa7 1125(c)(2)(C)? Third, Tam brings to an end the appeal to the Fourth Circuit of Blackhorse v.\nPro-Football, Inc., 111 U.S.P.Q.2d 1080, 2014 WL 2757516 (TTAB June 18, 2014), in which five Native\nAmericans petitioned to cancel various trademark registrations consisting in whole or in part of the\nterm REDSKINS for professional football-related services on the ground that at the time of their\nregistration they were disparaging of Native Americans and thus obtained contrary to Lanham Act\n\xc2\xa7\xc2\xa7 14(c) and 2(a), 15 U.S.C. \xc2\xa7\xc2\xa7 1064(c) & 1052(a). (If you strongly support Tam\xe2\x80\x99s registration of THE\nSLANTS, what is your position on the government\xe2\x80\x99s registration of the term \xe2\x80\x9credskins\xe2\x80\x9d by a professional\nfootball team in the nation\xe2\x80\x99s capital?)\nTam also prompted the question of whether the Lanham Act \xc2\xa7 2(a) prohibition on the registration\nof any mark that \xe2\x80\x9cconsists of or comprises . . . scandalous matter\xe2\x80\x9d is also unconstitutional. In Iancu v.\nBrunetti, No. 18-302, 2019 WL 2570622, 588 U.S. __ (June 24, 2019), excerpted below and involving the\nmark FUCT for athletic apparel, the Supreme Court found that the \xc2\xa7 2 bar against the registration of\nscandalous matter is also unconstitutional. You will see, however, that the Court found Brunetti to be a\nmuch closer case than Tam.\n\n211\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nMatal v. Tam\n137 S.Ct. 1744, 582 U.S. __ (2017)\n[1] Justice ALITO announced the judgment of the Court and delivered the opinion of the Court\nwith respect to Parts I, II, and III\xe2\x80\x93A, and an opinion with respect to Parts III\xe2\x80\x93B, III\xe2\x80\x93C, and IV, in which\nTHE CHIEF JUSTICE, Justice THOMAS, and Justice BREYER join.\n[2] This case concerns a dance-rock band\xe2\x80\x99s application for federal trademark registration of the\nband\xe2\x80\x99s name, \xe2\x80\x9cThe Slants.\xe2\x80\x9d \xe2\x80\x9cSlants\xe2\x80\x9d is a derogatory term for persons of Asian descent, and members of\nthe band are Asian\xe2\x80\x93Americans. But the band members believe that by taking that slur as the name of\ntheir group, they will help to \xe2\x80\x9creclaim\xe2\x80\x9d the term and drain its denigrating force.\n[3] The Patent and Trademark Office (PTO) denied the application based on a provision of federal\nlaw prohibiting the registration of trademarks that may \xe2\x80\x9cdisparage . . . or bring . . . into contemp[t] or\ndisrepute\xe2\x80\x9d any \xe2\x80\x9cpersons, living or dead.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1052(a). We now hold that this provision violates\nthe Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle:\nSpeech may not be banned on the ground that it expresses ideas that offend.\nI\nA\n[4] \xe2\x80\x9cThe principle underlying trademark protection is that distinctive marks\xe2\x80\x94words, names,\nsymbols, and the like\xe2\x80\x94can help distinguish a particular artisan\xe2\x80\x99s goods from those of others.\xe2\x80\x9d B & B\nHardware, Inc. v. Hargis Industries, Inc., 135 S.Ct. 1293, 1299 (2015); see also Wal\xe2\x80\x93Mart Stores, Inc. v.\nSamara Brothers, Inc., 529 U.S. 205, 212 (2000). A trademark \xe2\x80\x9cdesignate[s] the goods as the product of\na particular trader\xe2\x80\x9d and \xe2\x80\x9cprotect[s] his good will against the sale of another\xe2\x80\x99s product as his.\xe2\x80\x9d United\nDrug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918); see also Hanover Star Milling Co. v. Metcalf,\n240 U.S. 403, 412\xe2\x80\x93413 (1916). It helps consumers identify goods and services that they wish to\npurchase, as well as those they want to avoid. See Wal\xe2\x80\x93Mart Stores, supra, at 212\xe2\x80\x93213; Park \xe2\x80\x98N Fly, Inc.\nv. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985).\n[5] \xe2\x80\x9c[F]ederal law does not create trademarks.\xe2\x80\x9d B & B Hardware, supra, at \xe2\x80\x93\xe2\x80\x93\xe2\x80\x93\xe2\x80\x93, 135 S.Ct., at 1299.\nTrademarks and their precursors have ancient origins, and trademarks were protected at common law\nand in equity at the time of the founding of our country. 3 J. McCarthy, Trademarks and Unfair\nCompetition \xc2\xa7 19:8 (4th ed. 2017) (hereinafter McCarthy); see Trade\xe2\x80\x93Mark Cases, 100 U.S. 82, 92\n(1879). For most of the 19th century, trademark protection was the province of the States. See Two\nPesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780\xe2\x80\x93782 (1992) (Stevens, J., concurring in judgment); id.,\nat 785 (THOMAS, J., concurring in judgment). Eventually, Congress stepped in to provide a degree of\nnational uniformity, passing the first federal legislation protecting trademarks in 1870. See Act of July\n8, 1870, \xc2\xa7\xc2\xa7 77\xe2\x80\x9384, 16 Stat. 210\xe2\x80\x93212. The foundation of current federal trademark law is the Lanham\nAct, enacted in 1946. See Act of July 5, 1946, ch. 540, 60 Stat. 427. By that time, trademark had\nexpanded far beyond phrases that do no more than identify a good or service. Then, as now,\ntrademarks often consisted of catchy phrases that convey a message.\n[6] Under the Lanham Act, trademarks that are \xe2\x80\x9cused in commerce\xe2\x80\x9d may be placed on the\n\xe2\x80\x9cprincipal register,\xe2\x80\x9d that is, they may be federally registered. 15 U.S.C. \xc2\xa7 1051(a)(1). And some marks\n\xe2\x80\x9ccapable of distinguishing [an] applicant\xe2\x80\x99s goods or services and not registrable on the principal\nregister . . . which are in lawful use in commerce by the owner thereof\xe2\x80\x9d may instead be placed on a\ndifferent federal register: the supplemental register. \xc2\xa7 1091(a). There are now more than two million\nmarks that have active federal certificates of registration. PTO Performance and Accountability Report,\nFiscal\nYear\n2016,\np.\n192\n(Table\n15),\nhttps://www.uspto.gov/sites/default/files/\ndocuments/USPTOFY16PAR.pdf (all Internet materials as last visited June 16, 2017). This system of\nfederal registration helps to ensure that trademarks are fully protected and supports the free flow of\ncommerce. \xe2\x80\x9c[N]ational protection of trademarks is desirable,\xe2\x80\x9d we have explained, \xe2\x80\x9cbecause trademarks\n212\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nfoster competition and the maintenance of quality by securing to the producer the benefits of good\nreputation.\xe2\x80\x9d San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 531\n(1987) (internal quotation marks omitted); see also Park \xe2\x80\x98N Fly, Inc., supra, at 198 (\xe2\x80\x9cThe Lanham Act\nprovides national protection of trademarks in order to secure to the owner of the mark the goodwill of\nhis business and to protect the ability of consumers to distinguish among competing producers\xe2\x80\x9d).\nB\n[7] Without federal registration, a valid trademark may still be used in commerce. See 3 McCarthy\n\xc2\xa7 19:8. And an unregistered trademark can be enforced against would-be infringers in several ways.\nMost important, even if a trademark is not federally registered, it may still be enforceable under\n\xc2\xa7 43(a) of the Lanham Act, which creates a federal cause of action for trademark infringement. See Two\nPesos, supra, at 768 (\xe2\x80\x9cSection 43(a) prohibits a broader range of practices than does \xc2\xa7 32, which\napplies to registered marks, but it is common ground that \xc2\xa7 43(a) protects qualifying unregistered\ntrademarks\xe2\x80\x9d (internal quotation marks and citation omitted)).1 Unregistered trademarks may also be\nentitled to protection under other federal statutes, such as the Anticybersquatting Consumer\nProtection Act, 15 U.S.C. \xc2\xa7 1125(d). See 5 McCarthy \xc2\xa7 25A:49, at 25A\xe2\x80\x93198 (\xe2\x80\x9c[T]here is no requirement\n[in the Anticybersquatting Act] that the protected \xe2\x80\x98mark\xe2\x80\x99 be registered: unregistered common law\nmarks are protected by the Act\xe2\x80\x9d). And an unregistered trademark can be enforced under state common\nlaw, or if it has been registered in a State, under that State\xe2\x80\x99s registration system. See 3 id., \xc2\xa7 19:3, at 19\xe2\x80\x93\n23 (explaining that \xe2\x80\x9c[t]he federal system of registration and protection does not preempt parallel state\nlaw protection, either by state common law or state registration\xe2\x80\x9d and \xe2\x80\x9c[i]n the vast majority of\nsituations, federal and state trademark law peacefully coexist\xe2\x80\x9d); id., \xc2\xa7 22:1 (discussing state trademark\nregistration systems).\n[8] Federal registration, however, \xe2\x80\x9cconfers important legal rights and benefits on trademark\nowners who register their marks.\xe2\x80\x9d B & B Hardware, 135 S.Ct., at 1317 (internal quotation marks\nomitted). Registration on the principal register (1) \xe2\x80\x9cserves as \xe2\x80\x98constructive notice of the registrant\xe2\x80\x99s\nclaim of ownership\xe2\x80\x99 of the mark,\xe2\x80\x9d ibid. (quoting 15 U.S.C. \xc2\xa7 1072); (2) \xe2\x80\x9cis \xe2\x80\x98prima facie evidence of the\nvalidity of the registered mark and of the registration of the mark, of the owner\xe2\x80\x99s ownership of the\nmark, and of the owner\xe2\x80\x99s exclusive right to use the registered mark in commerce on or in connection\nwith the goods or services specified in the certificate,\xe2\x80\x99\xe2\x80\x9d B & B Hardware, 135 S.Ct., at 1300 (quoting\n\xc2\xa7 1057(b)); and (3) can make a mark \xe2\x80\x9c\xe2\x80\x98incontestable\xe2\x80\x99\xe2\x80\x9d once a mark has been registered for five years,\xe2\x80\x9d\nibid. (quoting \xc2\xa7\xc2\xa7 1065, 1115(b)); see Park \xe2\x80\x98N Fly, 469 U.S., at 193. Registration also enables the\ntrademark holder \xe2\x80\x9cto stop the importation into the United States of articles bearing an infringing\nmark.\xe2\x80\x9d 3 McCarthy \xc2\xa7 19:9, at 19\xe2\x80\x9338; see 15 U.S.C. \xc2\xa7 1124.\nC\n[9] The Lanham Act contains provisions that bar certain trademarks from the principal register.\nFor example, a trademark cannot be registered if it is \xe2\x80\x9cmerely descriptive or deceptively\n\nIn the opinion below, the Federal Circuit opined that although \xe2\x80\x9cSection 43(a) allows for a federal\nsuit to protect an unregistered trademark,\xe2\x80\x9d \xe2\x80\x9cit is not at all clear\xe2\x80\x9d that respondent could bring suit under\n\xc2\xa7 43(a) because \xe2\x80\x9cthere is no authority extending \xc2\xa7 43(a) to marks denied under \xc2\xa7 2(a)\xe2\x80\x99s disparagement\nprovision.\xe2\x80\x9d In re Tam, 808 F.3d 1321, 1344\xe2\x80\x931345, n. 11 (en banc), as corrected (Feb. 11, 2016). When\ndrawing this conclusion, the Federal Circuit relied in part on our statement in Two Pesos that \xe2\x80\x9cthe\ngeneral principles qualifying a mark for registration under \xc2\xa7 2 of the Lanham Act are for the most part\napplicable in determining whether an unregistered mark is entitled to protection under \xc2\xa7 43(a).\xe2\x80\x9d 505\nU.S., at 768. We need not decide today whether respondent could bring suit under \xc2\xa7 43(a) if his\napplication for federal registration had been lawfully denied under the disparagement clause.\n1\n\n213\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmisdescriptive\xe2\x80\x9d of goods, \xc2\xa7 1052(e)(1), or if it is so similar to an already registered trademark or trade\nname that it is \xe2\x80\x9clikely . . . to cause confusion, or to cause mistake, or to deceive,\xe2\x80\x9d \xc2\xa7 1052(d).\n[10] At issue in this case is one such provision, which we will call \xe2\x80\x9cthe disparagement clause.\xe2\x80\x9d This\nprovision prohibits the registration of a trademark \xe2\x80\x9cwhich may disparage . . . persons, living or dead,\ninstitutions, beliefs, or national symbols, or bring them into contempt, or disrepute.\xe2\x80\x9d \xc2\xa7 1052(a).2 This\nclause appeared in the original Lanham Act and has remained the same to this day. See \xc2\xa7 2(a), 60 Stat.\n428.\n[11] When deciding whether a trademark is disparaging, an examiner at the PTO generally\napplies a \xe2\x80\x9ctwo-part test.\xe2\x80\x9d The examiner first considers \xe2\x80\x9cthe likely meaning of the matter in question,\ntaking into account not only dictionary definitions, but also the relationship of the matter to the other\nelements in the mark, the nature of the goods or services, and the manner in which the mark is used in\nthe marketplace in connection with the goods or services.\xe2\x80\x9d Trademark Manual of Examining Procedure\n\xc2\xa7 1203.03(b)(i) (Apr. 2017), p. 1200\xe2\x80\x93150, http://tmep.uspto.gov. \xe2\x80\x9cIf that meaning is found to refer to\nidentifiable persons, institutions, beliefs or national symbols,\xe2\x80\x9d the examiner moves to the second step,\nasking \xe2\x80\x9cwhether that meaning may be disparaging to a substantial composite3 of the referenced\ngroup.\xe2\x80\x9d Ibid. If the examiner finds that a \xe2\x80\x9csubstantial composite, although not necessarily a majority, of\nthe referenced group would find the proposed mark . . . to be disparaging in the context of\ncontemporary attitudes,\xe2\x80\x9d a prima facie case of disparagement is made out, and the burden shifts to the\napplicant to prove that the trademark is not disparaging. Ibid. What is more, the PTO has specified that\n\xe2\x80\x9c[t]he fact that an applicant may be a member of that group or has good intentions underlying its use of\na term does not obviate the fact that a substantial composite of the referenced group would find the\nterm objectionable.\xe2\x80\x9d Ibid.\nD\n[12] Simon Tam is the lead singer of \xe2\x80\x9cThe Slants.\xe2\x80\x9d In re Tam, 808 F.3d 1321, 1331 (C.A.Fed.2015)\n(en banc), as corrected (Feb. 11, 2016). He chose this moniker in order to \xe2\x80\x9creclaim\xe2\x80\x9d and \xe2\x80\x9ctake\nownership\xe2\x80\x9d of stereotypes about people of Asian ethnicity. Ibid. (internal quotation marks omitted).\nThe group \xe2\x80\x9cdraws inspiration for its lyrics from childhood slurs and mocking nursery rhymes\xe2\x80\x9d and has\ngiven its albums names such as \xe2\x80\x9cThe Yellow Album\xe2\x80\x9d and \xe2\x80\x9cSlanted Eyes, Slanted Hearts.\xe2\x80\x9d Ibid.\n[13] Tam sought federal registration of \xe2\x80\x9cTHE SLANTS,\xe2\x80\x9d on the principal register, but an examining\nattorney at the PTO rejected the request, applying the PTO\xe2\x80\x99s two-part framework and finding that\n\xe2\x80\x9cthere is . . . a substantial composite of persons who find the term in the applied-for mark offensive.\xe2\x80\x9d\nThe examining attorney relied in part on the fact that \xe2\x80\x9cnumerous dictionaries define \xe2\x80\x98slants\xe2\x80\x99 or \xe2\x80\x98slanteyes\xe2\x80\x99 as a derogatory or offensive term.\xe2\x80\x9d The examining attorney also relied on a finding that \xe2\x80\x9cthe\nband\xe2\x80\x99s name has been found offensive numerous times\xe2\x80\x9d\xe2\x80\x94citing a performance that was canceled\nbecause of the band\xe2\x80\x99s moniker and the fact that \xe2\x80\x9cseveral bloggers and commenters to articles on the\nband have indicated that they find the term and the applied-for mark offensive.\xe2\x80\x9d\n[14] Tam contested the denial of registration before the examining attorney and before the PTO\xe2\x80\x99s\nTrademark Trial and Appeal Board (TTAB) but to no avail. Eventually, he took the case to federal court,\nwhere the en banc Federal Circuit ultimately found the disparagement clause facially unconstitutional\nunder the First Amendment\xe2\x80\x99s Free Speech Clause. The majority found that the clause engages in\nviewpoint-based discrimination, that the clause regulates the expressive component of trademarks\nand consequently cannot be treated as commercial speech, and that the clause is subject to and cannot\nThe disparagement clause also prevents a trademark from being registered on the supplemental\nregister. \xc2\xa7 1091(a).\n2\n\n3\n\nBy \xe2\x80\x9ccomposite,\xe2\x80\x9d we assume the PTO means component.\n214\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nsatisfy strict scrutiny. See 808 F.3d, at 1334\xe2\x80\x931339. The majority also rejected the Government\xe2\x80\x99s\nargument that registered trademarks constitute government speech, as well as the Government\xe2\x80\x99s\ncontention that federal registration is a form of government subsidy. See id., at 1339\xe2\x80\x931355. And the\nmajority opined that even if the disparagement clause were analyzed under this Court\xe2\x80\x99s commercial\nspeech cases, the clause would fail the \xe2\x80\x9cintermediate scrutiny\xe2\x80\x9d that those cases prescribe. See id., at\n1355\xe2\x80\x931357.\n[15] Several judges wrote separately, advancing an assortment of theories. Concurring, Judge\nO\xe2\x80\x99Malley agreed with the majority\xe2\x80\x99s reasoning but added that the disparagement clause is\nunconstitutionally vague. See id., at 1358\xe2\x80\x931363. Judge Dyk concurred in part and dissented in part. He\nargued that trademark registration is a government subsidy and that the disparagement clause is\nfacially constitutional, but he found the clause unconstitutional as applied to THE SLANTS because that\nmark constitutes \xe2\x80\x9ccore expression\xe2\x80\x9d and was not adopted for the purpose of disparaging Asian\xe2\x80\x93\nAmericans. See id., at 1363\xe2\x80\x931374. In dissent, Judge Lourie agreed with Judge Dyk that the clause is\nfacially constitutional but concluded for a variety of reasons that it is also constitutional as applied in\nthis case. See id., at 1374\xe2\x80\x931376. Judge Reyna also dissented, maintaining that trademarks are\ncommercial speech and that the disparagement clause survives intermediate scrutiny because it\n\xe2\x80\x9cdirectly advances the government\xe2\x80\x99s substantial interest in the orderly flow of commerce.\xe2\x80\x9d See id., at\n1376\xe2\x80\x931382.\n[16] The Government filed a petition for certiorari, which we granted in order to decide whether\nthe disparagement clause \xe2\x80\x9cis facially invalid under the Free Speech Clause of the First Amendment.\xe2\x80\x9d\nPet. for Cert. i; see sub. nom. Lee v. Tam, 579 U.S. \xe2\x80\x93\xe2\x80\x93\xe2\x80\x93\xe2\x80\x93, 137 S.Ct. 30 (2016).\nII\n{Tam argued that Lanham Act \xc2\xa7 2(a) prohibits the registration of marks that disparage only\n\xe2\x80\x9cpersons,\xe2\x80\x9d which, Tam argued, \xe2\x80\x9cincludes only natural and juristic persons,\xe2\x80\x9d not \xe2\x80\x9cnon-juristic entities\nsuch as racial and ethnic groups.\xe2\x80\x9d The Court rejected this argument.}\nIII\n[17] Because the disparagement clause applies to marks that disparage the members of a racial or\nethnic group, we must decide whether the clause violates the Free Speech Clause of the First\nAmendment. And at the outset, we must consider three arguments that would either eliminate any\nFirst Amendment protection or result in highly permissive rational-basis review. Specifically, the\nGovernment contends (1) that trademarks are government speech, not private speech, (2) that\ntrademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement\nclause should be tested under a new \xe2\x80\x9cgovernment-program\xe2\x80\x9d doctrine. We address each of these\narguments below.\nA\n[18] The First Amendment prohibits Congress and other government entities and actors from\n\xe2\x80\x9cabridging the freedom of speech\xe2\x80\x9d; the First Amendment does not say that Congress and other\ngovernment entities must abridge their own ability to speak freely. And our cases recognize that \xe2\x80\x9c[t]he\nFree Speech Clause . . . does not regulate government speech.\xe2\x80\x9d Pleasant Grove City v. Summum, 555 U.S.\n460, 467 (2009); see Johanns v. Livestock Marketing Assn., 544 U.S. 550, 553 (2005) (\xe2\x80\x9c[T]he\nGovernment\xe2\x80\x99s own speech . . . is exempt from First Amendment scrutiny\xe2\x80\x9d); Board of Regents of Univ. of\nWis. System v. Southworth, 529 U.S. 217, 235 (2000).\n[19] As we have said, \xe2\x80\x9cit is not easy to imagine how government could function\xe2\x80\x9d if it were subject\nto the restrictions that the First Amendment imposes on private speech. Summum, supra, at 468; see\nWalker v. Texas Div., Sons of Confederate Veterans, Inc., 135 S.Ct. 2239, 2245\xe2\x80\x932247 (2015). \xe2\x80\x9c\xe2\x80\x98[T]he First\nAmendment forbids the government to regulate speech in ways that favor some viewpoints or ideas at\nthe expense of others,\xe2\x80\x99\xe2\x80\x9d Lamb\xe2\x80\x99s Chapel v. Center Moriches Union Free School Dist., 508 U.S. 384, 394\n215\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n(1993), but imposing a requirement of viewpoint-neutrality on government speech would be\nparalyzing. When a government entity embarks on a course of action, it necessarily takes a particular\nviewpoint and rejects others. The Free Speech Clause does not require government to maintain\nviewpoint neutrality when its officers and employees speak about that venture.\n[20] Here is a simple example. During the Second World War, the Federal Government produced\nand distributed millions of posters to promote the war effort.7 There were posters urging enlistment,\nthe purchase of war bonds, and the conservation of scarce resources.8 These posters expressed a\nviewpoint, but the First Amendment did not demand that the Government balance the message of\nthese posters by producing and distributing posters encouraging Americans to refrain from engaging\nin these activities.\n[21] But while the government-speech doctrine is important\xe2\x80\x94indeed, essential\xe2\x80\x94it is a doctrine\nthat is susceptible to dangerous misuse. If private speech could be passed off as government speech by\nsimply affixing a government seal of approval, government could silence or muffle the expression of\ndisfavored viewpoints. For this reason, we must exercise great caution before extending our\ngovernment-speech precedents.\n[22] At issue here is the content of trademarks that are registered by the PTO, an arm of the\nFederal Government. The Federal Government does not dream up these marks, and it does not edit\nmarks submitted for registration. Except as required by the statute involved here, 15 U.S.C. \xc2\xa7 1052(a),\nan examiner may not reject a mark based on the viewpoint that it appears to express. Thus, unless that\nsection is thought to apply, an examiner does not inquire whether any viewpoint conveyed by a mark\nis consistent with Government policy or whether any such viewpoint is consistent with that expressed\nby other marks already on the principal register. Instead, if the mark meets the Lanham Act\xe2\x80\x99s\nviewpoint-neutral requirements, registration is mandatory. Ibid. (requiring that \xe2\x80\x9c[n]o trademark . . .\nshall be refused registration on the principal register on account of its nature unless\xe2\x80\x9d it falls within an\nenumerated statutory exception). And if an examiner finds that a mark is eligible for placement on the\nprincipal register, that decision is not reviewed by any higher official unless the registration is\nchallenged. See \xc2\xa7\xc2\xa7 1062(a), 1071; 37 C.F.R \xc2\xa7 41.31(a) (2016). Moreover, once a mark is registered, the\nPTO is not authorized to remove it from the register unless a party moves for cancellation, the\nregistration expires, or the Federal Trade Commission initiates proceedings based on certain grounds.\nSee 15 U.S.C. \xc2\xa7\xc2\xa7 1058(a), 1059, 1064; 37 C.F.R. \xc2\xa7\xc2\xa7 2.111(b), 2.160.\n[23] In light of all this, it is far-fetched to suggest that the content of a registered mark is\ngovernment speech. If the federal registration of a trademark makes the mark government speech, the\nFederal Government is babbling prodigiously and incoherently. It is saying many unseemly things. See\nApp. to Brief for Pro\xe2\x80\x93Football, Inc., as Amicus Curiae. It is expressing contradictory views.9 It is\nunashamedly endorsing a vast array of commercial products and services. And it is providing Delphic\nadvice to the consuming public.\n\n7\n\nSee, e.g., D. Nelson, The Posters That Won the War (1991).\n\n8\n\nIbid.\n\nCompare \xe2\x80\x9cAbolish Abortion,\xe2\x80\x9d Registration No. 4,935,774 (Apr. 12, 2016), with \xe2\x80\x9cI Stand With\nPlanned Parenthood,\xe2\x80\x9d Registration No. 5,073,573 (Nov. 1, 2016); compare \xe2\x80\x9cCapitalism Is Not Moral,\nNot Fair, Not Freedom,\xe2\x80\x9d Registration No. 4,696,419 (Mar. 3, 2015), with \xe2\x80\x9cCapitalism Ensuring\nInnovation,\xe2\x80\x9d Registration No. 3,966,092 (May 24, 2011); compare \xe2\x80\x9cGlobal Warming Is Good,\xe2\x80\x9d\nRegistration No. 4,776,235 (July 21, 2015), with \xe2\x80\x9cA Solution to Global Warming,\xe2\x80\x9d Registration No.\n3,875,271 (Nov. 10, 2010).\n9\n\n216\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[24] For example, if trademarks represent government speech, what does the Government have\nin mind when it advises Americans to \xe2\x80\x9cmake.believe\xe2\x80\x9d (Sony),10 \xe2\x80\x9cThink different\xe2\x80\x9d (Apple),11 \xe2\x80\x9cJust do it\xe2\x80\x9d\n(Nike),12 or \xe2\x80\x9cHave it your way\xe2\x80\x9d (Burger King)13? Was the Government warning about a coming disaster\nwhen it registered the mark \xe2\x80\x9cEndTime Ministries\xe2\x80\x9d14?\n[25] The PTO has made it clear that registration does not constitute approval of a mark. See In re\nOld Glory Condom Corp., 26 USPQ 2d 1216, 1220, n. 3 (T.T.A.B.1993) (\xe2\x80\x9c[I]ssuance of a trademark\nregistration . . . is not a government imprimatur\xe2\x80\x9d). And it is unlikely that more than a tiny fraction of\nthe public has any idea what federal registration of a trademark means. See Application of National\nDistillers & Chemical Corp., 49 C.C.P.A. (Pat.) 854, 863, 297 F.2d 941, 949 (1962) (Rich, J., concurring)\n(\xe2\x80\x9cThe purchasing public knows no more about trademark registrations than a man walking down the\nstreet in a strange city knows about legal title to the land and buildings he passes\xe2\x80\x9d (emphasis\ndeleted)).\n[26] None of our government speech cases even remotely supports the idea that registered\ntrademarks are government speech. In Johanns, we considered advertisements promoting the sale of\nbeef products. A federal statute called for the creation of a program of paid advertising \xe2\x80\x9c\xe2\x80\x98to advance the\nimage and desirability of beef and beef products.\xe2\x80\x99\xe2\x80\x9d 544 U.S., at 561 (quoting 7 U.S.C. \xc2\xa7 2902(13)).\nCongress and the Secretary of Agriculture provided guidelines for the content of the ads, Department\nof Agriculture officials attended the meetings at which the content of specific ads was discussed, and\nthe Secretary could edit or reject any proposed ad. 544 U.S., at 561. Noting that \xe2\x80\x9c[t]he message set out\nin the beef promotions [was] from beginning to end the message established by the Federal\nGovernment,\xe2\x80\x9d we held that the ads were government speech. Id., at 560. The Government\xe2\x80\x99s\ninvolvement in the creation of these beef ads bears no resemblance to anything that occurs when a\ntrademark is registered.\n[27] Our decision in Summum is similarly far afield. A small city park contained 15 monuments.\n555 U.S., at 464. Eleven had been donated by private groups, and one of these displayed the Ten\nCommandments. Id., at 464\xe2\x80\x93465. A religious group claimed that the city, by accepting donated\nmonuments, had created a limited public forum for private speech and was therefore obligated to place\nin the park a monument expressing the group\xe2\x80\x99s religious beliefs.\n[28] Holding that the monuments in the park represented government speech, we cited many\nfactors. Governments have used monuments to speak to the public since ancient times; parks have\ntraditionally been selective in accepting and displaying donated monuments; parks would be overrun\nif they were obligated to accept all monuments offered by private groups; \xe2\x80\x9c[p]ublic parks are often\nclosely identified in the public mind with the government unit that owns the land\xe2\x80\x9d; and \xe2\x80\x9c[t]he\nmonuments that are accepted . . . are meant to convey and have the effect of conveying a government\nmessage.\xe2\x80\x9d Id., at 472.\n[29] Trademarks share none of these characteristics. Trademarks have not traditionally been\nused to convey a Government message. With the exception of the enforcement of 15 U.S.C. \xc2\xa7 1052(a),\nthe viewpoint expressed by a mark has not played a role in the decision whether to place it on the\n\n10\n\n\xe2\x80\x9cmake.believe,\xe2\x80\x9d Registration No. 4,342,903 (May 28, 2013).\n\n11\n\n\xe2\x80\x9cThink Different,\xe2\x80\x9d Registration No. 2,707,257 (Apr. 15, 2003).\n\n12\n\n\xe2\x80\x9cJust Do It,\xe2\x80\x9d Registration No. 1,875,307 (Jan. 25, 1995).\n\n13\n\n\xe2\x80\x9cHave It Your Way,\xe2\x80\x9d Registration No. 0,961,016 (June 12, 1973).\n\n14\n\n\xe2\x80\x9cEndTime Ministries,\xe2\x80\x9d Registration No. 4,746,225 (June 2, 2015).\n217\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nprincipal register. And there is no evidence that the public associates the contents of trademarks with\nthe Federal Government.\n[30] This brings us to the case on which the Government relies most heavily, Walker, which likely\nmarks the outer bounds of the government-speech doctrine. Holding that the messages on Texas\nspecialty license plates are government speech, the Walker Court cited three factors distilled from\nSummum. 135 S.Ct., at 2246\xe2\x80\x932247. First, license plates have long been used by the States to convey\nstate messages. 135 S.Ct., at 2248\xe2\x80\x932249. Second, license plates \xe2\x80\x9care often closely identified in the\npublic mind\xe2\x80\x9d with the State, since they are manufactured and owned by the State, generally designed\nby the State, and serve as a form of \xe2\x80\x9cgovernment ID.\xe2\x80\x9d 135 S.Ct., at 2249 (internal quotation marks\nomitted). Third, Texas \xe2\x80\x9cmaintain[ed] direct control over the messages conveyed on its specialty\nplates.\xe2\x80\x9d 135 S.Ct., at 2249. As explained above, none of these factors are present in this case.\n[31] In sum, the federal registration of trademarks is vastly different from the beef ads in Johanns,\nthe monuments in Summum, and even the specialty license plates in Walker. Holding that the\nregistration of a trademark converts the mark into government speech would constitute a huge and\ndangerous extension of the government-speech doctrine. For if the registration of trademarks\nconstituted government speech, other systems of government registration could easily be\ncharacterized in the same way.\n[32] Perhaps the most worrisome implication of the Government\xe2\x80\x99s argument concerns the system\nof copyright registration. If federal registration makes a trademark government speech and thus\neliminates all First Amendment protection, would the registration of the copyright for a book produce\na similar transformation? See 808 F.3d, at 1346 (explaining that if trademark registration amounts to\ngovernment speech, \xe2\x80\x9cthen copyright registration\xe2\x80\x9d which \xe2\x80\x9chas identical accoutrements\xe2\x80\x9d would \xe2\x80\x9clikewise\namount to government speech\xe2\x80\x9d).\n[33] The Government attempts to distinguish copyright on the ground that it is \xe2\x80\x9c\xe2\x80\x98the engine of\nfree expression,\xe2\x80\x99\xe2\x80\x9d Brief for Petitioner 47 (quoting Eldred v. Ashcroft, 537 U.S. 186, 219, 123 S.Ct. 769,\n154 L.Ed.2d 683 (2003)), but as this case illustrates, trademarks often have an expressive content.\nCompanies spend huge amounts to create and publicize trademarks that convey a message. It is true\nthat the necessary brevity of trademarks limits what they can say. But powerful messages can\nsometimes be conveyed in just a few words.\n[34] Trademarks are private, not government, speech.\nB\n[35] We next address the Government\xe2\x80\x99s argument that this case is governed by cases in which this\nCourt has upheld the constitutionality of government programs that subsidized speech expressing a\nparticular viewpoint. These cases implicate a notoriously tricky question of constitutional law. \xe2\x80\x9c[W]e\nhave held that the Government \xe2\x80\x98may not deny a benefit to a person on a basis that infringes his\nconstitutionally protected . . . freedom of speech even if he has no entitlement to that benefit.\xe2\x80\x99\xe2\x80\x9d Agency\nfor Int\xe2\x80\x99l Development v. Alliance for Open Society Int\xe2\x80\x99l, Inc., 133 S.Ct. 2321, 2328 (2013) (some internal\nquotation marks omitted). But at the same time, government is not required to subsidize activities that\nit does not wish to promote. Ibid. Determining which of these principles applies in a particular case \xe2\x80\x9cis\nnot always self-evident,\xe2\x80\x9d 133 S.Ct., at 2330, but no difficult question is presented here.\n[36] Unlike the present case, the decisions on which the Government relies all involved cash\nsubsidies or their equivalent. In Rust v. Sullivan, 500 U.S. 173 (1991), a federal law provided funds to\nprivate parties for family planning services. In National Endowment for Arts v. Finley, 524 U.S. 569\n(1998), cash grants were awarded to artists. And federal funding for public libraries was at issue in\nUnited States v. American Library Assn., Inc., 539 U.S. 194 (2003). In other cases, we have regarded tax\nbenefits as comparable to cash subsidies. See Regan v. Taxation With Representation of Wash., 461 U.S.\n540 (1983); Cammarano v. United States, 358 U.S. 498 (1959).\n218\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[37] The federal registration of a trademark is nothing like the programs at issue in these cases.\nThe PTO does not pay money to parties seeking registration of a mark. Quite the contrary is true: An\napplicant for registration must pay the PTO a filing fee of $225\xe2\x80\x93$600. 37 C.F.R. \xc2\xa7 2.6(a)(1). (Tam\nsubmitted a fee of $275 as part of his application to register THE SLANTS. App. 18.) And to maintain\nfederal registration, the holder of a mark must pay a fee of $300\xe2\x80\x93$500 every 10 years. \xc2\xa7 2.6(a)(5); see\nalso 15 U.S.C. \xc2\xa7 1059(a). The Federal Circuit concluded that these fees have fully supported the\nregistration system for the past 27 years. 808 F.3d, at 1353.\n[38] The Government responds that registration provides valuable non-monetary benefits that\n\xe2\x80\x9care directly traceable to the resources devoted by the federal government to examining, publishing,\nand issuing certificates of registration for those marks.\xe2\x80\x9d But just about every government service\nrequires the expenditure of government funds. This is true of services that benefit everyone, like police\nand fire protection, as well as services that are utilized by only some, e.g., the adjudication of private\nlawsuits and the use of public parks and highways.\n[39] Trademark registration is not the only government registration scheme. For example, the\nFederal Government registers copyrights and patents. State governments and their subdivisions\nregister the title to real property and security interests; they issue driver\xe2\x80\x99s licenses, motor vehicle\nregistrations, and hunting, fishing, and boating licenses or permits.\n....\nC\n[40] Finally, the Government urges us to sustain the disparagement clause under a new doctrine\nthat would apply to \xe2\x80\x9cgovernment-program\xe2\x80\x9d cases. For the most part, this argument simply merges our\ngovernment-speech cases and the previously discussed subsidy cases in an attempt to construct a\nbroader doctrine that can be applied to the registration of trademarks. The only new element in this\nconstruct consists of two cases involving a public employer\xe2\x80\x99s collection of union dues from its\nemployees. But those cases occupy a special area of First Amendment case law, and they are far\nremoved from the registration of trademarks.\n....\nIV\n[41] Having concluded that the disparagement clause cannot be sustained under our governmentspeech or subsidy cases or under the Government\xe2\x80\x99s proposed \xe2\x80\x9cgovernment-program\xe2\x80\x9d doctrine, we\nmust confront a dispute between the parties on the question whether trademarks are commercial\nspeech and are thus subject to the relaxed scrutiny outlined in Central Hudson Gas & Elec. Corp. v.\nPublic Serv. Comm\xe2\x80\x99n of N. Y., 447 U.S. 557 (1980). The Government and amici supporting its position\nargue that all trademarks are commercial speech. They note that the central purposes of trademarks\nare commercial and that federal law regulates trademarks to promote fair and orderly interstate\ncommerce. Tam and his amici, on the other hand, contend that many, if not all, trademarks have an\nexpressive component. In other words, these trademarks do not simply identify the source of a product\nor service but go on to say something more, either about the product or service or some broader issue.\nThe trademark in this case illustrates this point. The name \xe2\x80\x9cThe Slants\xe2\x80\x9d not only identifies the band but\nexpresses a view about social issues.\n[42] We need not resolve this debate between the parties because the disparagement clause\ncannot withstand even Central Hudson review.17 Under Central Hudson, a restriction of speech must\nAs with the framework discussed in Part III\xe2\x80\x93C of this opinion, we leave open the question\nwhether Central Hudson provides the appropriate test for deciding free speech challenges to\nprovisions of the Lanham Act. And nothing in our decision should be read to speak to the validity of\n17\n\n219\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nserve \xe2\x80\x9ca substantial interest,\xe2\x80\x9d and it must be \xe2\x80\x9cnarrowly drawn.\xe2\x80\x9d Id., at 564\xe2\x80\x93565 (internal quotation\nmarks omitted). This means, among other things, that \xe2\x80\x9c[t]he regulatory technique may extend only as\nfar as the interest it serves.\xe2\x80\x9d Id., at 565. The disparagement clause fails this requirement.\n[43] It is claimed that the disparagement clause serves two interests. The first is phrased in a\nvariety of ways in the briefs. Echoing language in one of the opinions below, the Government asserts an\ninterest in preventing \xe2\x80\x9c\xe2\x80\x98underrepresented groups\xe2\x80\x99\xe2\x80\x9d from being \xe2\x80\x9c\xe2\x80\x98bombarded with demeaning messages\nin commercial advertising.\xe2\x80\x99\xe2\x80\x9d Brief for Petitioner 48 (quoting 808 F.3d, at 1364 (Dyk, J., concurring in\npart and dissenting in part)). An amicus supporting the Government refers to \xe2\x80\x9cencouraging racial\ntolerance and protecting the privacy and welfare of individuals.\xe2\x80\x9d Brief for Native American\nOrganizations as Amici Curiae 21. But no matter how the point is phrased, its unmistakable thrust is\nthis: The Government has an interest in preventing speech expressing ideas that offend. And, as we\nhave explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the\nbasis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the\nproudest boast of our free speech jurisprudence is that we protect the freedom to express \xe2\x80\x9cthe thought\nthat we hate.\xe2\x80\x9d United States v. Schwimmer, 279 U.S. 644, 655 (1929) (Holmes, J., dissenting).\n[44] The second interest asserted is protecting the orderly flow of commerce. See 808 F.3d, at\n1379\xe2\x80\x931381 (Reyna, J., dissenting); Brief for Petitioner 49; Brief for Native American Organizations as\nAmicus Curiae 18\xe2\x80\x9321. Commerce, we are told, is disrupted by trademarks that \xe2\x80\x9cinvolv[e]\ndisparagement of race, gender, ethnicity, national origin, religion, sexual orientation, and similar\ndemographic classification.\xe2\x80\x9d 808 F.3d, at 1380\xe2\x80\x931381 (opinion of Reyna, J.). Such trademarks are\nanalogized to discriminatory conduct, which has been recognized to have an adverse effect on\ncommerce. See ibid.; Brief for Petitioner 49; Brief for Native American Organizations as Amici Curiae\n18\xe2\x80\x9320.\n[45] A simple answer to this argument is that the disparagement clause is not \xe2\x80\x9cnarrowly drawn\xe2\x80\x9d\nto drive out trademarks that support invidious discrimination. The clause reaches any trademark that\ndisparages any person, group, or institution. It applies to trademarks like the following: \xe2\x80\x9cDown with\nracists,\xe2\x80\x9d \xe2\x80\x9cDown with sexists,\xe2\x80\x9d \xe2\x80\x9cDown with homophobes.\xe2\x80\x9d It is not an anti-discrimination clause; it is a\nhappy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.\n[46] The clause is far too broad in other ways as well. The clause protects every person living or\ndead as well as every institution. Is it conceivable that commerce would be disrupted by a trademark\nsaying: \xe2\x80\x9cJames Buchanan was a disastrous president\xe2\x80\x9d or \xe2\x80\x9cSlavery is an evil institution\xe2\x80\x9d?\n[47] There is also a deeper problem with the argument that commercial speech may be cleansed\nof any expression likely to cause offense. The commercial market is well stocked with merchandise\nthat disparages prominent figures and groups, and the line between commercial and non-commercial\nspeech is not always clear, as this case illustrates. If affixing the commercial label permits the\nsuppression of any speech that may lead to political or social \xe2\x80\x9cvolatility,\xe2\x80\x9d free speech would be\nendangered.\n*\n\n*\n\n*\n\n[48] For these reasons, we hold that the disparagement clause violates the Free Speech Clause of\nthe First Amendment. The judgment of the Federal Circuit is affirmed.\nIt is so ordered.\nJustice GORSUCH took no part in the consideration or decision of this case.\n\nstate unfair competition provisions or product libel laws that are not before us and differ from\n\xc2\xa7 1052(d)\xe2\x80\x99s disparagement clause.\n220\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nJustice KENNEDY, with whom Justice GINSBURG, Justice SOTOMAYOR, and Justice KAGAN join,\nconcurring in part and concurring in the judgment.\n[1] The Patent and Trademark Office (PTO) has denied the substantial benefits of federal\ntrademark registration to the mark THE SLANTS. The PTO did so under the mandate of the\ndisparagement clause in 15 U.S.C. \xc2\xa7 1052(a), which prohibits the registration of marks that may\n\xe2\x80\x9cdisparage . . . or bring . . . into contemp[t] or disrepute\xe2\x80\x9d any \xe2\x80\x9cpersons, living or dead, institutions,\nbeliefs, or national symbols.\xe2\x80\x9d\n[2] As the Court is correct to hold, \xc2\xa7 1052(a) constitutes viewpoint discrimination\xe2\x80\x94a form of\nspeech suppression so potent that it must be subject to rigorous constitutional scrutiny. The\nGovernment\xe2\x80\x99s action and the statute on which it is based cannot survive this scrutiny.\n[3] The Court is correct in its judgment, and I join Parts I, II, and III\xe2\x80\x93A of its opinion. This separate\nwriting explains in greater detail why the First Amendment\xe2\x80\x99s protections against viewpoint\ndiscrimination apply to the trademark here. It submits further that the viewpoint discrimination\nrationale renders unnecessary any extended treatment of other questions raised by the parties.\nI\n[4] Those few categories of speech that the government can regulate or punish\xe2\x80\x94for instance,\nfraud, defamation, or incitement\xe2\x80\x94are well established within our constitutional tradition. See United\nStates v. Stevens, 559 U.S. 460, 468 (2010). Aside from these and a few other narrow exceptions, it is a\nfundamental principle of the First Amendment that the government may not punish or suppress\nspeech based on disapproval of the ideas or perspectives the speech conveys. See Rosenberger v. Rector\nand Visitors of Univ. of Va., 515 U.S. 819, 828\xe2\x80\x93829 (1995).\n[5] The First Amendment guards against laws \xe2\x80\x9ctargeted at specific subject matter,\xe2\x80\x9d a form of\nspeech suppression known as content based discrimination. Reed v. Town of Gilbert, 576 U.S. \xe2\x80\x93\xe2\x80\x93\xe2\x80\x93\xe2\x80\x93, \xe2\x80\x93\xe2\x80\x93\xe2\x80\x93\xe2\x80\x93\n, 135 S.Ct. 2218, 2230 (2015). This category includes a subtype of laws that go further, aimed at the\nsuppression of \xe2\x80\x9cparticular views . . . on a subject.\xe2\x80\x9d Rosenberger, 515 U.S., at 829. A law found to\ndiscriminate based on viewpoint is an \xe2\x80\x9cegregious form of content discrimination,\xe2\x80\x9d which is\n\xe2\x80\x9cpresumptively unconstitutional.\xe2\x80\x9d Id., at 829\xe2\x80\x93830.\n[6] At its most basic, the test for viewpoint discrimination is whether\xe2\x80\x94within the relevant subject\ncategory\xe2\x80\x94the government has singled out a subset of messages for disfavor based on the views\nexpressed. See Cornelius v. NAACP Legal Defense & Ed. Fund, Inc., 473 U.S. 788, 806 (1985) (\xe2\x80\x9c[T]he\ngovernment violates the First Amendment when it denies access to a speaker solely to suppress the\npoint of view he espouses on an otherwise includible subject\xe2\x80\x9d). In the instant case, the disparagement\nclause the Government now seeks to implement and enforce identifies the relevant subject as \xe2\x80\x9cpersons,\nliving or dead, institutions, beliefs, or national symbols.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1052(a). Within that category, an\napplicant may register a positive or benign mark but not a derogatory one. The law thus reflects the\nGovernment\xe2\x80\x99s disapproval of a subset of messages it finds offensive. This is the essence of viewpoint\ndiscrimination.\n[7] The Government disputes this conclusion. It argues, to begin with, that the law is viewpoint\nneutral because it applies in equal measure to any trademark that demeans or offends. This misses the\npoint. A subject that is first defined by content and then regulated or censored by mandating only one\nsort of comment is not viewpoint neutral. To prohibit all sides from criticizing their opponents makes a\nlaw more viewpoint based, not less so. Cf. Rosenberger, supra, at 831\xe2\x80\x93832 (\xe2\x80\x9cThe . . . declaration that\ndebate is not skewed so long as multiple voices are silenced is simply wrong; the debate is skewed in\nmultiple ways\xe2\x80\x9d). The logic of the Government\xe2\x80\x99s rule is that a law would be viewpoint neutral even if it\nprovided that public officials could be praised but not condemned. The First Amendment\xe2\x80\x99s viewpoint\nneutrality principle protects more than the right to identify with a particular side. It protects the right\n221\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nto create and present arguments for particular positions in particular ways, as the speaker chooses. By\nmandating positivity, the law here might silence dissent and distort the marketplace of ideas.\n[8] The Government next suggests that the statute is viewpoint neutral because the\ndisparagement clause applies to trademarks regardless of the applicant\xe2\x80\x99s personal views or reasons for\nusing the mark. Instead, registration is denied based on the expected reaction of the applicant\xe2\x80\x99s\naudience. In this way, the argument goes, it cannot be said that Government is acting with hostility\ntoward a particular point of view. For example, the Government does not dispute that respondent\nseeks to use his mark in a positive way. Indeed, respondent endeavors to use The Slants to supplant a\nracial epithet, using new insights, musical talents, and wry humor to make it a badge of pride.\nRespondent\xe2\x80\x99s application was denied not because the Government thought his object was to demean\nor offend but because the Government thought his trademark would have that effect on at least some\nAsian\xe2\x80\x93Americans.\n[9] The Government may not insulate a law from charges of viewpoint discrimination by tying\ncensorship to the reaction of the speaker\xe2\x80\x99s audience. The Court has suggested that viewpoint\ndiscrimination occurs when the government intends to suppress a speaker\xe2\x80\x99s beliefs, Reed, 135 S.Ct., at\n2229\xe2\x80\x932230, but viewpoint discrimination need not take that form in every instance. The danger of\nviewpoint discrimination is that the government is attempting to remove certain ideas or perspectives\nfrom a broader debate. That danger is all the greater if the ideas or perspectives are ones a particular\naudience might think offensive, at least at first hearing. An initial reaction may prompt further\nreflection, leading to a more reasoned, more tolerant position.\n[10] Indeed, a speech burden based on audience reactions is simply government hostility and\nintervention in a different guise. The speech is targeted, after all, based on the government\xe2\x80\x99s\ndisapproval of the speaker\xe2\x80\x99s choice of message. And it is the government itself that is attempting in this\ncase to decide whether the relevant audience would find the speech offensive. For reasons like these,\nthe Court\xe2\x80\x99s cases have long prohibited the government from justifying a First Amendment burden by\npointing to the offensiveness of the speech to be suppressed.\n[11] The Government\xe2\x80\x99s argument in defense of the statute assumes that respondent\xe2\x80\x99s mark is a\nnegative comment. In addressing that argument on its own terms, this opinion is not intended to imply\nthat the Government\xe2\x80\x99s interpretation is accurate. From respondent\xe2\x80\x99s submissions, it is evident he\nwould disagree that his mark means what the Government says it does. The trademark will have the\neffect, respondent urges, of reclaiming an offensive term for the positive purpose of celebrating all that\nAsian\xe2\x80\x93Americans can and do contribute to our diverse Nation. While thoughtful persons can agree or\ndisagree with this approach, the dissonance between the trademark\xe2\x80\x99s potential to teach and the\nGovernment\xe2\x80\x99s insistence on its own, opposite, and negative interpretation confirms the constitutional\nvice of the statute.\nII\n[12] The parties dispute whether trademarks are commercial speech and whether trademark\nregistration should be considered a federal subsidy. The former issue may turn on whether certain\ncommercial concerns for the protection of trademarks might, as a general matter, be the basis for\nregulation. However that issue is resolved, the viewpoint based discrimination at issue here\nnecessarily invokes heightened scrutiny.\n[13] \xe2\x80\x9cCommercial speech is no exception,\xe2\x80\x9d the Court has explained, to the principle that the First\nAmendment \xe2\x80\x9crequires heightened scrutiny whenever the government creates a regulation of speech\nbecause of disagreement with the message it conveys.\xe2\x80\x9d Sorrell v. IMS Health Inc., 564 U.S. 552, 566\n(2011) (internal quotation marks omitted). Unlike content based discrimination, discrimination based\non viewpoint, including a regulation that targets speech for its offensiveness, remains of serious\nconcern in the commercial context. See Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 65, 71\xe2\x80\x9372\n(1983).\n222\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[14] To the extent trademarks qualify as commercial speech, they are an example of why that\nterm or category does not serve as a blanket exemption from the First Amendment\xe2\x80\x99s requirement of\nviewpoint neutrality. Justice Holmes\xe2\x80\x99 reference to the \xe2\x80\x9cfree trade in ideas\xe2\x80\x9d and the \xe2\x80\x9cpower of . . .\nthought to get itself accepted in the competition of the market,\xe2\x80\x9d Abrams v. United States, 250 U.S. 616,\n630 (1919) (dissenting opinion), was a metaphor. In the realm of trademarks, the metaphorical\nmarketplace of ideas becomes a tangible, powerful reality. Here that real marketplace exists as a\nmatter of state law and our common-law tradition, quite without regard to the Federal Government.\nThese marks make up part of the expression of everyday life, as with the names of entertainment\ngroups, broadcast networks, designer clothing, newspapers, automobiles, candy bars, toys, and so on.\nSee Brief for Pro\xe2\x80\x93Football, Inc., as Amicus Curiae 8 (collecting examples). Nonprofit organizations\xe2\x80\x94\nranging from medical-research charities and other humanitarian causes to political advocacy groups\xe2\x80\x94\nalso have trademarks, which they use to compete in a real economic sense for funding and other\nresources as they seek to persuade others to join their cause. See id., at 8\xe2\x80\x939 (collecting examples). To\npermit viewpoint discrimination in this context is to permit Government censorship.\n[15] This case does not present the question of how other provisions of the Lanham Act should be\nanalyzed under the First Amendment. It is well settled, for instance, that to the extent a trademark is\nconfusing or misleading the law can protect consumers and trademark owners. See, e.g., FTC v. Winsted\nHosiery Co., 258 U.S. 483, 493 (1922) (\xe2\x80\x9cThe labels in question are literally false, and . . . palpably so. All\nare, as the Commission found, calculated to deceive and do in fact deceive a substantial portion of the\npurchasing public\xe2\x80\x9d). This case also does not involve laws related to product labeling or otherwise\ndesigned to protect consumers. See Sorrell, supra, at 579, (\xe2\x80\x9c[T]he government\xe2\x80\x99s legitimate interest in\nprotecting consumers from commercial harms explains why commercial speech can be subject to\ngreater governmental regulation than noncommercial speech\xe2\x80\x9d (internal quotation marks omitted)).\nThese considerations, however, do not alter the speech principles that bar the viewpoint\ndiscrimination embodied in the statutory provision at issue here.\n[16] It is telling that the Court\xe2\x80\x99s precedents have recognized just one narrow situation in which\nviewpoint discrimination is permissible: where the government itself is speaking or recruiting others\nto communicate a message on its behalf. See Legal Services Corporation v. Velazquez, 531 U.S. 533, 540\xe2\x80\x93\n542 (2001); Board of Regents of Univ. of Wis. System v. Southworth, 529 U.S. 217, 229, 235 (2000);\nRosenberger, 515 U.S., at 833. The exception is necessary to allow the government to stake out\npositions and pursue policies. See Southworth, supra, at 235. But it is also narrow, to prevent the\ngovernment from claiming that every government program is exempt from the First Amendment.\nThese cases have identified a number of factors that, if present, suggest the government is speaking on\nits own behalf; but none are present here.\n[17] There may be situations where private speakers are selected for a government program to\nassist the government in advancing a particular message. That is not this case either. The central\npurpose of trademark registration is to facilitate source identification. To serve that broad purpose, the\nGovernment has provided the benefits of federal registration to millions of marks identifying every\ntype of product and cause. Registered trademarks do so by means of a wide diversity of words,\nsymbols, and messages. Whether a mark is disparaging bears no plausible relation to that goal. While\ndefining the purpose and scope of a federal program for these purposes can be complex, see, e.g.,\nAgency for Int\xe2\x80\x99l Development v. Alliance for Open Society Int\xe2\x80\x99l, Inc., 133 S.Ct. 2321, 2328 (2013), our\ncases are clear that viewpoint discrimination is not permitted where, as here, the Government\n\xe2\x80\x9cexpends funds to encourage a diversity of views from private speakers,\xe2\x80\x9d Velazquez, supra, at 542\n(internal quotation marks omitted).\n*\n\n*\n\n*\n\n[18] A law that can be directed against speech found offensive to some portion of the public can\nbe turned against minority and dissenting views to the detriment of all. The First Amendment does not\n223\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nentrust that power to the government\xe2\x80\x99s benevolence. Instead, our reliance must be on the substantial\nsafeguards of free and open discussion in a democratic society.\n[19] For these reasons, I join the Court\xe2\x80\x99s opinion in part and concur in the judgment.\nJustice THOMAS, concurring in part and concurring in the judgment.\n....\n[1] I also write separately because \xe2\x80\x9cI continue to believe that when the government seeks to\nrestrict truthful speech in order to suppress the ideas it conveys, strict scrutiny is appropriate,\nwhether or not the speech in question may be characterized as \xe2\x80\x98commercial.\xe2\x80\x99\xe2\x80\x9d Lorillard Tobacco Co. v.\nReilly, 533 U.S. 525, 572 (2001) (THOMAS, J., concurring in part and concurring in judgment); see also,\ne.g., 44 Liquormart, Inc. v. Rhode Island, 517 U.S. 484, 518 (1996) (same). I nonetheless join Part IV of\nJustice ALITO\xe2\x80\x99s opinion because it correctly concludes that the disparagement clause, 15 U.S.C.\n\xc2\xa7 1052(a), is unconstitutional even under the less stringent test announced in Central Hudson Gas &\nElec. Corp. v. Public Serv. Comm\xe2\x80\x99n of N. Y., 447 U.S. 557 (1980).\n______________________________________________________________________________\n\n224\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n(Photo credit: hafgod, grailed.com)\nIancu v. Brunetti\nNo. 18-302, 2019 WL 2570622, 588 U.S. __ (June 24, 2019)\nJustice KAGAN delivered the opinion of the Court.\n[1] Two Terms ago, in Matal v. Tam, 582 U.S. ___ (2017), this Court invalidated the Lanham Act\xe2\x80\x99s\nbar on the registration of \xe2\x80\x9cdisparag[ing]\xe2\x80\x9d trademarks. 15 U.S. C. \xc2\xa7 1052(a). Although split between two\nnon-majority opinions, all Members of the Court agreed that the provision violated the First\nAmendment because it discriminated on the basis of viewpoint. Today we consider a First Amendment\nchallenge to a neighboring provision of the Act, prohibiting the registration of \xe2\x80\x9cimmoral[ ] or\nscandalous\xe2\x80\x9d trademarks. Ibid. We hold that this provision infringes the First Amendment for the same\nreason: It too disfavors certain ideas.\nI.\n[2] Respondent Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses\nthe trademark FUCT. According to Brunetti, the mark (which functions as the clothing\xe2\x80\x99s brand name) is\npronounced as four letters, one after the other: F-U-C-T. But you might read it differently and, if so, you\n225\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwould hardly be alone. See Tr. of Oral Arg. 5 (describing the brand name as \xe2\x80\x9cthe equivalent of [the]\npast participle form of a well-known word of profanity\xe2\x80\x9d). That common perception caused difficulties\nfor Brunetti when he tried to register his mark with the U.S. Patent and Trademark Office (PTO).\n[3] Under the Lanham Act, the PTO administers a federal registration system for trademarks. See\n15 U.S. C. \xc2\xa7\xc2\xa7 1051, 1052. Registration of a mark is not mandatory. The owner of an unregistered mark\nmay still use it in commerce and enforce it against infringers. But registration gives trademark owners\nvaluable benefits. For example, registration constitutes \xe2\x80\x9cprima facie evidence\xe2\x80\x9d of the mark\xe2\x80\x99s validity.\n\xc2\xa7 1115(a). And registration serves as \xe2\x80\x9cconstructive notice of the registrant\xe2\x80\x99s claim of ownership,\xe2\x80\x9d\nwhich forecloses some defenses in infringement actions. \xc2\xa7 1072. Generally, a trademark is eligible for\nregistration, and receipt of such benefits, if it is \xe2\x80\x9cused in commerce.\xe2\x80\x9d \xc2\xa7 1051(a)(1). But the Act directs\nthe PTO to \xe2\x80\x9crefuse[ ] registration\xe2\x80\x9d of certain marks. \xc2\xa7 1052. For instance, the PTO cannot register a\nmark that \xe2\x80\x9cso resembles\xe2\x80\x9d another mark as to create a likelihood of confusion. \xc2\xa7 1052(d). It cannot\nregister a mark that is \xe2\x80\x9cmerely descriptive\xe2\x80\x9d of the goods on which it is used. \xc2\xa7 1052(e). It cannot\nregister a mark containing the flag or insignia of any nation or State. See \xc2\xa7 1052(b). There are five or\nten more (depending on how you count). And until we invalidated the criterion two years ago, the PTO\ncould not register a mark that \xe2\x80\x9cdisparage[d]\xe2\x80\x9d a \xe2\x80\x9cperson[ ], living or dead.\xe2\x80\x9d \xc2\xa7 1052(a); see Tam, 582 U.S.\n___.\n[4] This case involves another of the Lanham Act\xe2\x80\x99s prohibitions on registration\xe2\x80\x94one applying to\nmarks that \xe2\x80\x9c[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter.\xe2\x80\x9d \xc2\xa7 1052(a). The PTO applies\nthat bar as a \xe2\x80\x9cunitary provision,\xe2\x80\x9d rather than treating the two adjectives in it separately. In re Brunetti,\n877 F. 3d 1330, 1336 (CA Fed. 2017). To determine whether a mark fits in the category, the PTO asks\nwhether a \xe2\x80\x9csubstantial composite of the general public\xe2\x80\x9d would find the mark \xe2\x80\x9cshocking to the sense of\ntruth, decency, or propriety\xe2\x80\x9d; \xe2\x80\x9cgiving offense to the conscience or moral feelings\xe2\x80\x9d; \xe2\x80\x9ccalling out for\ncondemnation\xe2\x80\x9d; \xe2\x80\x9cdisgraceful\xe2\x80\x9d; \xe2\x80\x9coffensive\xe2\x80\x9d; \xe2\x80\x9cdisreputable\xe2\x80\x9d; or \xe2\x80\x9cvulgar.\xe2\x80\x9d 877 F. 3d, at 1336 (internal\nquotation marks omitted).\n[5] Both a PTO examining attorney and the PTO\xe2\x80\x99s Trademark Trial and Appeal Board decided that\nBrunetti\xe2\x80\x99s mark flunked that test. The attorney determined that FUCT was \xe2\x80\x9ca total vulgar\xe2\x80\x9d and\n\xe2\x80\x9ctherefore[ ] unregistrable.\xe2\x80\x9d On review, the Board stated that the mark was \xe2\x80\x9chighly offensive\xe2\x80\x9d and\n\xe2\x80\x9cvulgar,\xe2\x80\x9d and that it had \xe2\x80\x9cdecidedly negative sexual connotations.\xe2\x80\x9d As part of its review, the Board also\nconsidered evidence of how Brunetti used the mark. It found that Brunetti\xe2\x80\x99s website and products\ncontained imagery, near the mark, of \xe2\x80\x9cextreme nihilism\xe2\x80\x9d and \xe2\x80\x9canti-social\xe2\x80\x9d behavior. In that context, the\nBoard thought, the mark communicated \xe2\x80\x9cmisogyny, depravity, [and] violence.\xe2\x80\x9d The Board concluded:\n\xe2\x80\x9cWhether one considers [the mark] as a sexual term, or finds that [Brunetti] has used [the mark] in the\ncontext of extreme misogyny, nihilism or violence, we have no question but that [the term is]\nextremely offensive.\xe2\x80\x9d\n[6] Brunetti then brought a facial challenge to the \xe2\x80\x9cimmoral or scandalous\xe2\x80\x9d bar in the Court of\nAppeals for the Federal Circuit. That court found the prohibition to violate the First Amendment. As\nusual when a lower court has invalidated a federal statute, we granted certiorari.\nII\n[7] This Court first considered a First Amendment challenge to a trademark registration\nrestriction in Tam, just two Terms ago. There, the Court declared unconstitutional the Lanham Act\xe2\x80\x99s\nban on registering marks that \xe2\x80\x9cdisparage\xe2\x80\x9d any \xe2\x80\x9cperson[ ], living or dead.\xe2\x80\x9d \xc2\xa7 1052(a). The eight-Justice\nCourt divided evenly between two opinions and could not agree on the overall framework for deciding\nthe case. (In particular, no majority emerged to resolve whether a Lanham Act bar is a condition on a\ngovernment benefit or a simple restriction on speech.) But all the Justices agreed on two propositions.\nFirst, if a trademark registration bar is viewpoint-based, it is unconstitutional. And second, the\ndisparagement bar was viewpoint-based.\n226\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[8] The Justices thus found common ground in a core postulate of free speech law: The\ngovernment may not discriminate against speech based on the ideas or opinions it conveys. See\nRosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 829\xe2\x80\x93830 (1995) (explaining that\nviewpoint discrimination is an \xe2\x80\x9cegregious form of content discrimination\xe2\x80\x9d and is \xe2\x80\x9cpresumptively\nunconstitutional\xe2\x80\x9d). In Justice Kennedy\xe2\x80\x99s explanation, the disparagement bar allowed a trademark\nowner to register a mark if it was \xe2\x80\x9cpositive\xe2\x80\x9d about a person, but not if it was \xe2\x80\x9cderogatory.\xe2\x80\x9d Tam (slip\nop., at 2). That was the \xe2\x80\x9cessence of viewpoint discrimination,\xe2\x80\x9d he continued, because \xe2\x80\x9c[t]he law thus\nreflects the Government\xe2\x80\x99s disapproval of a subset of messages it finds offensive.\xe2\x80\x9d Id. (slip op., at 2\xe2\x80\x933).\nJUSTICE ALITO emphasized that the statute \xe2\x80\x9cdenie[d] registration to any mark\xe2\x80\x9d whose disparaging\nmessage was \xe2\x80\x9coffensive to a substantial percentage of the members of any group.\xe2\x80\x9d Id. (slip op., at 22).\nThe bar thus violated the \xe2\x80\x9cbedrock First Amendment principle\xe2\x80\x9d that the government cannot\ndiscriminate against \xe2\x80\x9cideas that offend.\xe2\x80\x9d Id. (slip op., at 1\xe2\x80\x932). Slightly different explanations, then, but a\nshared conclusion: Viewpoint discrimination doomed the disparagement bar.\n[9] If the \xe2\x80\x9cimmoral or scandalous\xe2\x80\x9d bar similarly discriminates on the basis of viewpoint, it must\nalso collide with our First Amendment doctrine. The Government does not argue otherwise. In briefs\nand oral argument, the Government offers a theory for upholding the bar if it is viewpoint-neutral\n(essentially, that the bar would then be a reasonable condition on a government benefit). But the\nGovernment agrees that under Tam it may not \xe2\x80\x9cdeny registration based on the views expressed\xe2\x80\x9d by a\nmark. \xe2\x80\x9cAs the Court\xe2\x80\x99s Tam decision establishes,\xe2\x80\x9d the Government says, \xe2\x80\x9cthe criteria for federal\ntrademark registration\xe2\x80\x9d must be \xe2\x80\x9cviewpoint-neutral to survive Free Speech Clause review.\xe2\x80\x9d Pet. for\nCert. 19. So the key question becomes: Is the \xe2\x80\x9cimmoral or scandalous\xe2\x80\x9d criterion in the Lanham Act\nviewpoint-neutral or viewpoint-based?\n[10] It is viewpoint-based. The meanings of \xe2\x80\x9cimmoral\xe2\x80\x9d and \xe2\x80\x9cscandalous\xe2\x80\x9d are not mysterious, but\nresort to some dictionaries still helps to lay bare the problem. When is expressive material \xe2\x80\x9cimmoral\xe2\x80\x9d?\nAccording to a standard definition, when it is \xe2\x80\x9cinconsistent with rectitude, purity, or good morals\xe2\x80\x9d;\n\xe2\x80\x9cwicked\xe2\x80\x9d; or \xe2\x80\x9cvicious.\xe2\x80\x9d Webster\xe2\x80\x99s New International Dictionary 1246 (2d ed. 1949). Or again, when it is\n\xe2\x80\x9copposed to or violating morality\xe2\x80\x9d; or \xe2\x80\x9cmorally evil.\xe2\x80\x9d Shorter Oxford English Dictionary 961 (3d ed.\n1947). So the Lanham Act permits registration of marks that champion society\xe2\x80\x99s sense of rectitude and\nmorality, but not marks that denigrate those concepts. And when is such material \xe2\x80\x9cscandalous\xe2\x80\x9d? Says a\ntypical definition, when it \xe2\x80\x9cgiv[es] offense to the conscience or moral feelings\xe2\x80\x9d; \xe2\x80\x9cexcite[s] reprobation\xe2\x80\x9d;\nor \xe2\x80\x9ccall[s] out condemnation.\xe2\x80\x9d Webster\xe2\x80\x99s New International Dictionary, at 2229. Or again, when it is\n\xe2\x80\x9cshocking to the sense of truth, decency, or propriety\xe2\x80\x9d; \xe2\x80\x9cdisgraceful\xe2\x80\x9d; \xe2\x80\x9coffensive\xe2\x80\x9d; or \xe2\x80\x9cdisreputable.\xe2\x80\x9d\nFunk & Wagnalls New Standard Dictionary 2186 (1944). So the Lanham Act allows registration of\nmarks when their messages accord with, but not when their messages defy, society\xe2\x80\x99s sense of decency\nor propriety. Put the pair of overlapping terms together and the statute, on its face, distinguishes\nbetween two opposed sets of ideas: those aligned with conventional moral standards and those hostile\nto them; those inducing societal nods of approval and those provoking offense and condemnation. The\nstatute favors the former, and disfavors the latter. \xe2\x80\x9cLove rules\xe2\x80\x9d? \xe2\x80\x9cAlways be good\xe2\x80\x9d? Registration\nfollows. \xe2\x80\x9cHate rules\xe2\x80\x9d? \xe2\x80\x9cAlways be cruel\xe2\x80\x9d? Not according to the Lanham Act\xe2\x80\x99s \xe2\x80\x9cimmoral or scandalous\xe2\x80\x9d\nbar.\n[11] The facial viewpoint bias in the law results in viewpoint-discriminatory application. Recall\nthat the PTO itself describes the \xe2\x80\x9cimmoral or scandalous\xe2\x80\x9d criterion using much the same language as in\nthe dictionary definitions recited above. The PTO, for example, asks whether the public would view the\nmark as \xe2\x80\x9cshocking to the sense of truth, decency, or propriety\xe2\x80\x9d; \xe2\x80\x9ccalling out for condemnation\xe2\x80\x9d;\n\xe2\x80\x9coffensive\xe2\x80\x9d; or \xe2\x80\x9cdisreputable.\xe2\x80\x9d Using those guideposts, the PTO has refused to register marks\ncommunicating \xe2\x80\x9cimmoral\xe2\x80\x9d or \xe2\x80\x9cscandalous\xe2\x80\x9d views about (among other things) drug use, religion, and\nterrorism. But all the while, it has approved registration of marks expressing more accepted views on\n227\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe same topics. See generally Gilson & LaLonde, Trademarks Laid Bare, 101 Trademark Reporter\n1476, 1510\xe2\x80\x931513, 1518\xe2\x80\x931522 (2011); Brief for Barton Beebe et al. as Amici Curiae 28\xe2\x80\x9329.\n[12] Here are some samples. The PTO rejected marks conveying approval of drug use (YOU CAN\xe2\x80\x99T\nSPELL HEALTHCARE WITHOUT THC for pain-relief medication, MARIJUANA COLA and KO KANE for\nbeverages) because it is scandalous to \xe2\x80\x9cinappropriately glamoriz[e] drug abuse.\xe2\x80\x9d PTO, Office Action of\nAug. 28, 2010, Serial No. 85038867; see Office Action of Dec. 24, 2009, Serial No. 77833964; Office\nAction of Nov. 17, 2009, Serial No. 77671304. But at the same time, the PTO registered marks with\nsuch sayings as D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS\xe2\x80\x94REALITY IS THE\nBEST TRIP IN LIFE. See PTO, Reg. No. 2975163 (July 26, 2005); Reg. No. 2966019 (July 12, 2005).\nSimilarly, the PTO disapproved registration for the mark BONG HITS 4 JESUS because it \xe2\x80\x9csuggests that\npeople should engage in an illegal activity [in connection with] worship\xe2\x80\x9d and because \xe2\x80\x9cChristians\nwould be morally outraged by a statement that connects Jesus Christ with illegal drug use.\xe2\x80\x9d Office\nAction of Mar. 15, 2008, Serial No. 77305946. And the PTO refused to register trademarks associating\nreligious references with products (AGNUS DEI for safes and MADONNA for wine) because they would\nbe \xe2\x80\x9coffensive to most individuals of the Christian faith\xe2\x80\x9d and \xe2\x80\x9cshocking to the sense of propriety.\xe2\x80\x9d Ex\nparte Summit Brass & Bronze Works, 59 USPQ 22, 23 (Dec. Com. Pat. 1943); In re Riverbank Canning Co.,\n95 F. 2d 327, 329 (CCPA 1938). But once again, the PTO approved marks\xe2\x80\x94PRAISE THE LORD for a\ngame and JESUS DIED FOR YOU on clothing\xe2\x80\x94whose message suggested religious faith rather than\nblasphemy or irreverence. See Reg. No. 5265121 (Aug. 15, 2017); Reg. No. 3187985 (Dec. 19, 2006).\nFinally, the PTO rejected marks reflecting support for al-Qaeda (BABY AL QAEDA and AL-QAEDA on tshirts) \xe2\x80\x9cbecause the bombing of civilians and other terrorist acts are shocking to the sense of decency\nand call out for condemnation.\xe2\x80\x9d Office Action of Nov. 22, 2004, Serial No. 78444968; see Office Action\nof Feb. 23, 2005, Serial No. 78400213. Yet it approved registration of a mark with the words WAR ON\nTERROR MEMORIAL. Reg. No. 5495362 (Jun. 19, 2018). Of course, all these decisions are\nunderstandable. The rejected marks express opinions that are, at the least, offensive to many\nAmericans. But as the Court made clear in Tam, a law disfavoring \xe2\x80\x9cideas that offend\xe2\x80\x9d discriminates\nbased on viewpoint, in violation of the First Amendment. Tam (opinion of ALITO, J.) (slip op., at 2); see\nid. (slip op., at 22\xe2\x80\x9323); id. (opinion of Kennedy, J.) (slip op., at 2\xe2\x80\x933).\n[13] How, then, can the Government claim that the \xe2\x80\x9cimmoral or scandalous\xe2\x80\x9d bar is viewpointneutral? The Government basically asks us to treat decisions like those described above as PTO\nexaminers\xe2\x80\x99 mistakes. Still more, the Government tells us to ignore how the Lanham Act\xe2\x80\x99s language, on\nits face, disfavors some ideas. In urging that course, the Government does not dispute that the\nstatutory language\xe2\x80\x94and words used to define it\xe2\x80\x94have just that effect. At oral argument, the\nGovernment conceded: \xe2\x80\x9c[I]f you just looked at the words like \xe2\x80\x98shocking\xe2\x80\x99 and \xe2\x80\x98offensive\xe2\x80\x99 on their face\nand gave them their ordinary meanings[,] they could easily encompass material that was shocking [or\noffensive] because it expressed an outrageous point of view or a point of view that most members\xe2\x80\x9d of\nsociety reject. Tr. of Oral Arg. 6. But no matter, says the Government, because the statute is \xe2\x80\x9csusceptible\nof\xe2\x80\x9d a limiting construction that would remove this viewpoint bias. Id., at 7 (arguing that the Court\nshould \xe2\x80\x9cattempt to construe [the] statute in a way that would render it constitutional\xe2\x80\x9d). The\nGovernment\xe2\x80\x99s idea, abstractly phrased, is to narrow the statutory bar to \xe2\x80\x9cmarks that are offensive [or]\nshocking to a substantial segment of the public because of their mode of expression, independent of\nany views that they may express.\xe2\x80\x9d Id., at 11 (emphasis added). More concretely, the Government\nexplains that this reinterpretation would mostly restrict the PTO to refusing marks that are \xe2\x80\x9cvulgar\xe2\x80\x9d\xe2\x80\x94\nmeaning \xe2\x80\x9clewd,\xe2\x80\x9d \xe2\x80\x9csexually explicit or profane.\xe2\x80\x9d Id., at 27, 30. Such a reconfigured bar, the Government\nsays, would not turn on viewpoint, and so we could uphold it.\n[14] But we cannot accept the Government\xe2\x80\x99s proposal, because the statute says something\nmarkedly different. This Court, of course, may interpret \xe2\x80\x9cambiguous statutory language\xe2\x80\x9d to \xe2\x80\x9cavoid\nserious constitutional doubts.\xe2\x80\x9d FCC v. Fox Television Stations, Inc., 556 U.S. 502, 516 (2009). But that\n228\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ncanon of construction applies only when ambiguity exists. \xe2\x80\x9cWe will not rewrite a law to conform it to\nconstitutional requirements.\xe2\x80\x9d United States v. Stevens, 559 U.S. 460, 481 (2010) (internal quotation\nmarks and alteration omitted). So even assuming the Government\xe2\x80\x99s reading would eliminate First\nAmendment problems, we may adopt it only if we can see it in the statutory language. And we cannot.\nThe \xe2\x80\x9cimmoral or scandalous\xe2\x80\x9d bar stretches far beyond the Government\xe2\x80\x99s proposed construction. The\nstatute as written does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer\nonly to marks whose \xe2\x80\x9cmode of expression,\xe2\x80\x9d independent of viewpoint, is particularly offensive. It\ncovers the universe of immoral or scandalous\xe2\x80\x94or (to use some PTO synonyms) offensive or\ndisreputable\xe2\x80\x94material. Whether or not lewd or profane. Whether the scandal and immorality comes\nfrom mode or instead from viewpoint. To cut the statute off where the Government urges is not to\ninterpret the statute Congress enacted, but to fashion a new one.*\n[15] And once the \xe2\x80\x9cimmoral or scandalous\xe2\x80\x9d bar is interpreted fairly, it must be invalidated. The\nGovernment just barely argues otherwise. In the last paragraph of its brief, the Government gestures\ntoward the idea that the provision is salvageable by virtue of its constitutionally permissible\napplications (in the Government\xe2\x80\x99s view, its applications to lewd, sexually explicit, or profane marks). In\nother words, the Government invokes our First Amendment overbreadth doctrine, and asks us to\nuphold the statute against facial attack because its unconstitutional applications are not \xe2\x80\x9csubstantial\xe2\x80\x9d\nrelative to \xe2\x80\x9cthe statute\xe2\x80\x99s plainly legitimate sweep.\xe2\x80\x9d Stevens, 559 U.S., at 473. But to begin with, this\nCourt has never applied that kind of analysis to a viewpoint-discriminatory law. In Tam, for example,\nwe did not pause to consider whether the disparagement clause might admit some permissible\napplications (say, to certain libelous speech) before striking it down. The Court\xe2\x80\x99s finding of viewpoint\nbias ended the matter. And similarly, it seems unlikely we would compare permissible and\nimpermissible applications if Congress outright banned \xe2\x80\x9coffensive\xe2\x80\x9d (or to use some other examples,\n\xe2\x80\x9cdivisive\xe2\x80\x9d or \xe2\x80\x9csubversive\xe2\x80\x9d) speech. Once we have found that a law \xe2\x80\x9caim[s] at the suppression of \xe2\x80\x9d views,\nwhy would it matter that Congress could have captured some of the same speech through a viewpointneutral statute? Tam (opinion of Kennedy, J.) (slip op., at 2). But in any event, the \xe2\x80\x9cimmoral or\nscandalous\xe2\x80\x9d bar is substantially overbroad. There are a great many immoral and scandalous ideas in\nthe world (even more than there are swearwords), and the Lanham Act covers them all. It therefore\nviolates the First Amendment.\n[16] We accordingly affirm the judgment of the Court of Appeals.\n[17] It is so ordered.\n\n* We reject the dissent\xe2\x80\x99s statutory surgery for the same reason. Although conceding that the term\n\xe2\x80\x9cimmoral\xe2\x80\x9d cannot be saved, the dissent thinks that the term \xe2\x80\x9cscandalous\xe2\x80\x9d can be read as the\nGovernment proposes. See post, at 1\xe2\x80\x932 (SOTOMAYOR, J., concurring in part and dissenting in part). But\nthat term is not \xe2\x80\x9cambiguous,\xe2\x80\x9d as the dissent argues, post, at 3; it is just broad. Remember that the\ndictionaries define it to mean offensive, disreputable, exciting reprobation, and so forth. See supra, at\n5\xe2\x80\x936; post, at 3 (accepting those definitions). Even if hived off from \xe2\x80\x9cimmoral\xe2\x80\x9d marks, the category of\nscandalous marks thus includes both marks that offend by the ideas they convey and marks that offend\nby their mode of expression. And its coverage of the former means that it discriminates based on\nviewpoint. We say nothing at all about a statute that covers only the latter\xe2\x80\x94or, in the Government\xe2\x80\x99s\nmore concrete description, a statute limited to lewd, sexually explicit, and profane marks. Nor do we\nsay anything about how to evaluate viewpoint-neutral restrictions on trademark registration, see post,\nat 14\xe2\x80\x9317\xe2\x80\x94because the \xe2\x80\x9cscandalous\xe2\x80\x9d bar (whether or not attached to the \xe2\x80\x9cimmoral\xe2\x80\x9d bar) is not one.\n\n229\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nJustice ALITO, concurring.\n[1] For the reasons explained in the opinion of the Court, the provision of the Lanham Act at issue\nin this case violates the Free Speech Clause of the First Amendment because it discriminates on the\nbasis of viewpoint and cannot be fixed without rewriting the statute. Viewpoint discrimination is\npoison to a free society. But in many countries with constitutions or legal traditions that claim to\nprotect freedom of speech, serious viewpoint discrimination is now tolerated, and such discrimination\nhas become increasingly prevalent in this country. At a time when free speech is under attack, it is\nespecially important for this Court to remain firm on the principle that the First Amendment does not\ntolerate viewpoint discrimination. We reaffirm that principle today.\n[2] Our decision is not based on moral relativism but on the recognition that a law banning speech\ndeemed by government officials to be \xe2\x80\x9cimmoral\xe2\x80\x9d or \xe2\x80\x9cscandalous\xe2\x80\x9d can easily be exploited for illegitimate\nends. Our decision does not prevent Congress from adopting a more carefully focused statute that\nprecludes the registration of marks containing vulgar terms that play no real part in the expression of\nideas. The particular mark in question in this case could be denied registration under such a statute.\nThe term suggested by that mark is not needed to express any idea and, in fact, as commonly used\ntoday, generally signifies nothing except emotion and a severely limited vocabulary. The registration of\nsuch marks serves only to further coarsen our popular culture. But we are not legislators and cannot\nsubstitute a new statute for the one now in force.\nChief Justice ROBERTS, concurring in part and dissenting in part.\n[1] The Lanham Act directs the Patent and Trademark Office to refuse registration to marks that\nconsist of or comprise \xe2\x80\x9cimmoral, deceptive, or scandalous matter.\xe2\x80\x9d 15 U.S. C. \xc2\xa7 1052(a). Although the\nstatute lists \xe2\x80\x9cimmoral\xe2\x80\x9d and \xe2\x80\x9cscandalous\xe2\x80\x9d separately, the PTO has long read those terms together to\nconstitute a unitary bar on \xe2\x80\x9cimmoral or scandalous\xe2\x80\x9d marks.\n[2] The Government concedes that the provision so read is broad enough to reach not only marks\nthat offend because of their mode of expression (such as vulgarity and profanity) but also marks that\noffend because of the ideas they convey. The Government urges, however, that the provision can be\ngiven a narrowing construction\xe2\x80\x94it can be understood to cover only marks that offend because of their\nmode of expression.\n[3] The Court rejects that proposal on the ground that it would in effect rewrite the statute. I\nagree with the majority that the \xe2\x80\x9cimmoral\xe2\x80\x9d portion of the provision is not susceptible of a narrowing\nconstruction that would eliminate its viewpoint bias. As JUSTICE SOTOMAYOR explains, however, the\n\xe2\x80\x9cscandalous\xe2\x80\x9d portion of the provision is susceptible of such a narrowing construction. Standing alone,\nthe term \xe2\x80\x9cscandalous\xe2\x80\x9d need not be understood to reach marks that offend because of the ideas they\nconvey; it can be read more narrowly to bar only marks that offend because of their mode of\nexpression\xe2\x80\x94marks that are obscene, vulgar, or profane. That is how the PTO now understands the\nterm, in light of our decision in Matal v. Tam, 582 U.S. ___ (2017). I agree with JUSTICE SOTOMAYOR\nthat such a narrowing construction is appropriate in this context.\n[4] I also agree that, regardless of how exactly the trademark registration system is best\nconceived under our precedents\xe2\x80\x94a question we left open in Tam\xe2\x80\x94refusing registration to obscene,\nvulgar, or profane marks does not offend the First Amendment. Whether such marks can be registered\ndoes not affect the extent to which their owners may use them in commerce to identify goods. No\nspeech is being restricted; no one is being punished. The owners of such marks are merely denied\ncertain additional benefits associated with federal trademark registration. The Government,\nmeanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar,\nor profane. The First Amendment protects the freedom of speech; it does not require the Government\n230\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nto give aid and comfort to those using obscene, vulgar, and profane modes of expression. For those\nreasons, I concur in part and dissent in part.\nJustice BREYER, concurring in part and dissenting in part.\n....\n[1] In my view, a category-based approach to the First Amendment cannot adequately resolve the\nproblem before us. I would place less emphasis on trying to decide whether the statute at issue should\nbe categorized as an example of \xe2\x80\x9cviewpoint discrimination,\xe2\x80\x9d \xe2\x80\x9ccontent discrimination,\xe2\x80\x9d \xe2\x80\x9ccommercial\nspeech,\xe2\x80\x9d \xe2\x80\x9cgovernment speech,\xe2\x80\x9d or the like. Rather, as I have written before, I believe we would do\nbetter to treat this Court\xe2\x80\x99s speech-related categories not as outcome-determinative rules, but instead\nas rules of thumb. See Reed v. Town of Gilbert, 576 U.S. ___, ___ (2015) (opinion concurring in judgment)\n(slip op., at 1).\n....\n[2] {T}he narrowing construction articulated by JUSTICE SOTOMAYOR risks some harm to First\nAmendment interests, but not very much. And applying that interpretation seems a reasonable way\xe2\x80\x94\nperhaps the only way\xe2\x80\x94to further legitimate government interests. Of course, there is a risk that the\nstatute might be applied in a manner that stretches it beyond the few vulgar words that are\nencompassed by the narrow interpretation JUSTICE SOTOMAYOR sets forth. That risk, however, could\nbe mitigated by internal agency review to ensure that agency officials do not stray beyond their\nmandate. In any event, I do not believe that this risk alone warrants the facial invalidation of this\nstatute.\n[3] I would conclude that the prohibition on registering \xe2\x80\x9cscandalous\xe2\x80\x9d marks does not \xe2\x80\x9cwor[k]\nharm to First Amendment interests that is disproportionate in light of the relevant regulatory\nobjectives.\xe2\x80\x9d Reed, 576 U.S., at ___ (opinion of BREYER, J.) (slip op., at 4). I would therefore uphold this\npart of the statute. I agree with the Court, however, that the bar on registering \xe2\x80\x9cimmoral\xe2\x80\x9d marks\nviolates the First Amendment. Because JUSTICE SOTOMAYOR reaches the same conclusions, using\nroughly similar reasoning, I join her opinion insofar as it is consistent with the views set forth here.\nJustice SOTOMAYOR, with whom Justice BREYER joins, concurring in part and dissenting in part.\n[1] The Court\xe2\x80\x99s decision today will beget unfortunate results. With the Lanham Act\xe2\x80\x99s scandalousmarks provision, 15 U.S. C. \xc2\xa7 1052(a), struck down as unconstitutional viewpoint discrimination, the\nGovernment will have no statutory basis to refuse (and thus no choice but to begin) registering marks\ncontaining the most vulgar, profane, or obscene words and images imaginable.\n[2] The coming rush to register such trademarks\xe2\x80\x94and the Government\xe2\x80\x99s immediate\npowerlessness to say no\xe2\x80\x94is eminently avoidable. Rather than read the relevant text as the majority\ndoes, it is equally possible to read that provision\xe2\x80\x99s bar on the registration of \xe2\x80\x9cscandalous\xe2\x80\x9d marks to\naddress only obscenity, vulgarity, and profanity. Such a narrowing construction would save that duly\nenacted legislative text by rendering it a reasonable, viewpoint-neutral restriction on speech that is\npermissible in the context of a beneficial governmental initiative like the trademark-registration\nsystem. I would apply that narrowing construction to the term \xe2\x80\x9cscandalous\xe2\x80\x9d and accordingly reject\npetitioner Erik Brunetti\xe2\x80\x99s facial challenge.\nI\n[3] Trademark registration, as the majority notes, is not required for using, owning, or suing\nothers for infringing a trademark. Rather, the trademark-registration system is an ancillary system set\nup by the Government that confers a small number of noncash benefits on trademark-holders who\nregister their marks. See ante, at 2.\n231\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[4] The Government need not provide this largely commercial benefit at all. Once the Government\ndoes provide the benefit, however, it may not restrict access on the basis of the viewpoint expressed by\nthe relevant mark. See ante, at 4\xe2\x80\x935. For that reason, the Court concluded in Matal v. Tam, 582 U.S. ___\n(2017), that \xc2\xa7 1052(a)\xe2\x80\x99s provision directing the U.S. Patent and Trademark Office (PTO) to deny\nregistration to \xe2\x80\x9cdisparag[ing]\xe2\x80\x9d trademarks was unconstitutional. This case centers on a neighboring set\nof restrictions: \xc2\xa7 1052(a)\xe2\x80\x99s provision barring registration of marks featuring \xe2\x80\x9cimmoral . . . or\nscandalous matter.\xe2\x80\x9d\n[5] The majority finds viewpoint discrimination here by treating the terms \xe2\x80\x9cscandalous\xe2\x80\x9d and\n\xe2\x80\x9cimmoral\xe2\x80\x9d as comprising a unified standard that allows messages \xe2\x80\x9caligned with conventional moral\nstandards\xe2\x80\x9d but forbids messages \xe2\x80\x9chostile to\xe2\x80\x9d such standards. See ante, at 6. While the majority\xe2\x80\x99s\ninterpretation of the statute is a reasonable one, it is not the only reasonable one.\nA\n[6] As the majority notes, there are dictionary definitions for both \xe2\x80\x9cimmoral\xe2\x80\x9d and \xe2\x80\x9cscandalous\xe2\x80\x9d\nthat do suggest a viewpoint-discriminatory meaning. See ante, at 5\xe2\x80\x936. And as for the word \xe2\x80\x9cimmoral,\xe2\x80\x9d I\nagree with the majority that there is no tenable way to read it that would ameliorate the problem. The\nword clearly connotes a preference for \xe2\x80\x9crectitude and morality\xe2\x80\x9d over its opposite. See ante, at 5.\n[7] It is with regard to the word \xe2\x80\x9cscandalous\xe2\x80\x9d that I part ways with the majority. Unquestionably,\n\xe2\x80\x9cscandalous\xe2\x80\x9d can mean something similar to \xe2\x80\x9cimmoral\xe2\x80\x9d and thus favor some viewpoints over others.\nSee ante, at 6. But it does not have to be read that way. To say that a word or image is \xe2\x80\x9cscandalous\xe2\x80\x9d can\ninstead mean that it is simply indecent, shocking, or generally offensive. See Funk & Wagnalls New\nStandard Dictionary 2186 (1944) (Funk & Wagnalls) (\xe2\x80\x9cshocking to the sense of truth, decency, or\npropriety; disgraceful, offensive\xe2\x80\x9d (emphasis added)); Webster\xe2\x80\x99s New International Dictionary 2229\n(1942) (\xe2\x80\x9cexciting reprobation; calling out condemnation\xe2\x80\x9d); 9 Oxford English Dictionary 175 (1933)\n(\xe2\x80\x9cOf the nature of, or causing, a \xe2\x80\x98stumbling-block\xe2\x80\x99 or occasion of offence\xe2\x80\x9d); 8 Century Dictionary and\nCyclopedia 5374 (1911) (Century Dictionary) (\xe2\x80\x9cCausing scandal or offense; exciting reproach or\nreprobation; extremely offensive to the sense of duty or propriety; shameful; shocking\xe2\x80\x9d); see also\nWebster\xe2\x80\x99s New College Dictionary 1008 (3d ed. 2005) (\xe2\x80\x9cshocking or offensive\xe2\x80\x9d). That offensiveness\ncould result from the views expressed, but it could also result from the way in which those views are\nexpressed: using a manner of expression that is \xe2\x80\x9cshocking to [one\xe2\x80\x99s] sense of . . . decency,\xe2\x80\x9d Funk &\nWagnalls 2186, or \xe2\x80\x9cextremely offensive to the sense of . . . propriety,\xe2\x80\x9d 8 Century Dictionary 5374.\n[8] The word \xe2\x80\x9cscandalous\xe2\x80\x9d on its own, then, is ambiguous: It can be read broadly (to cover both\noffensive ideas and offensive manners of expressing ideas), or it can be read narrowly (to cover only\noffensive modes of expression). That alone raises the possibility that a limiting construction might be\nappropriate. But the broader text confirms the reasonableness of the narrower reading, because the\nword \xe2\x80\x9cscandalous\xe2\x80\x9d appears in the statute alongside other words that can, and should, be read to\nconstrain its scope.\n[9] It is foundational \xe2\x80\x9cthat a statute is to be read as a whole, since the meaning of statutory\nlanguage, plain or not, depends on context.\xe2\x80\x9d King v. St. Vincent\xe2\x80\x99s Hospital, 502 U.S. 215, 221 (1991)\n(citation omitted). \xe2\x80\x9c\xe2\x80\x98Words are not pebbles in alien juxtaposition; they have only a communal\nexistence; and not only does the meaning of each interpenetrate the other, but all in their aggregate\ntake their purport from the setting in which they are used.\xe2\x80\x99\xe2\x80\x9d Ibid. (quoting NLRB v. Federbush Co., 121\nF. 2d 954, 957 (CA2 1941) (L. Hand, J.)). Accordingly, and relatedly, courts should, to the extent\n\n232\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\npossible, read statutes so that \xe2\x80\x9c\xe2\x80\x98no clause, sentence, or word shall be superfluous, void, or insignificant.\xe2\x80\x99\n\xe2\x80\x9d TRW Inc. v. Andrews, 534 U.S. 19, 31 (2001).1\n[10] Here, Congress used not only the word \xe2\x80\x9cscandalous,\xe2\x80\x9d but also the words \xe2\x80\x9cimmoral\xe2\x80\x9d and\n\xe2\x80\x9cdisparage,\xe2\x80\x9d in the same block of statutory text\xe2\x80\x94each as a separate feature that could render a mark\nunregistrable. See \xc2\xa7 1052(a). Tam already decided that \xe2\x80\x9cdisparage\xe2\x80\x9d served to prohibit marks that were\noffensive because they derided a particular person or group. See 582 U.S., at ___ (opinion of ALITO, J.)\n(slip op., at 22) (\xe2\x80\x9cIt denies registration to any mark that is offensive to a substantial percentage of the\nmembers of any group\xe2\x80\x9d); id., at ___ (opinion of Kennedy, J.) (slip op., at 2) (\xe2\x80\x9c[A]n applicant may register\na positive or benign mark but not a derogatory one\xe2\x80\x9d). That defines one of the three words. Meanwhile,\nas the majority explains, the word \xe2\x80\x9cimmoral\xe2\x80\x9d prohibits marks that are offensive because they\ntransgress widely held moral beliefs. See ante, at 5. That defines a second of the three words.\n[11] With marks that are offensive because they are disparaging and marks that are offensive\nbecause they are immoral already covered, what work did Congress intend for \xe2\x80\x9cscandalous\xe2\x80\x9d to do? A\nlogical answer is that Congress meant for \xe2\x80\x9cscandalous\xe2\x80\x9d to target a third and distinct type of\noffensiveness: offensiveness in the mode of communication rather than the idea. The other two words\ncover marks that are offensive because of the ideas they express; the \xe2\x80\x9cscandalous\xe2\x80\x9d clause covers marks\nthat are offensive because of the mode of expression, apart from any particular message or idea.\n[12] To be sure, there are situations in which it makes sense to treat adjoining words as\nexpressing the same or highly similar concepts (even at the risk of some redundancy). Cf. Swearingen v.\nUnited States, 161 U.S. 446, 450 (1896) (construing \xe2\x80\x9c\xe2\x80\x98obscene, lewd or lascivious\xe2\x80\x99\xe2\x80\x9d to have a unified\nmeaning). That is essentially the approach that the majority takes. See ante, at 6.2 But that is not the\napproach that Congress appears to have intended here. For example, \xe2\x80\x9cscandalous\xe2\x80\x9d does not serve as a\nbroader catchall at the end of a list of similar words that all point in one direction. E.g., Washington\nState Dept. of Social and Health Servs. v. Guardianship Estate of Keffeler, 537 U.S. 371, 384 (2003). Nor is\n\xe2\x80\x9cscandalous\xe2\x80\x9d simply grouped among a number of closely related terms that help define its meaning.\nE.g., Gustafson v. Alloyd Co., 513 U.S. 561, 575 (1995).\n[13] The text of \xc2\xa7 1052, instead, is a grab bag: It bars the registration of marks featuring \xe2\x80\x9cimmoral,\ndeceptive, or scandalous matter,\xe2\x80\x9d as well as, inter alia, disparaging marks, flags, insignias, mislabeled\nwines, and deceased Presidents. See \xc2\xa7\xc2\xa7 1052(a)\xe2\x80\x93(e). This is not, in other words, a situation in which\nCongress was simply being \xe2\x80\x9cverbos[e] and proli[x],\xe2\x80\x9d Bruesewitz v. Wyeth LLC, 562 U.S. 223, 236 (2011),\nusing two synonyms in rapid-fire succession when one would have done fine. Instead, \xe2\x80\x9cscandalous\xe2\x80\x9d\nand \xe2\x80\x9cimmoral\xe2\x80\x9d are separated by an unrelated word (\xe2\x80\x9cdeceptive\xe2\x80\x9d) and mixed in with a lengthy series of\nother, unrelated concepts. The two therefore need not be interpreted as mutually reinforcing under\nthe Court\xe2\x80\x99s precedents. See Graham County Soil and Water Conservation Dist. v. United States ex rel.\nWilson, 559 U.S. 280, 288 (2010).\n\nFor example, McDonnell v. United States, 579 U. S. ___ (2016), involved a statute that defined an\n\xe2\x80\x9c\xe2\x80\x98official act\xe2\x80\x99\xe2\x80\x9d as \xe2\x80\x9c\xe2\x80\x98any decision or action on any question, matter, cause, suit, proceeding or\ncontroversy.\xe2\x80\x99\xe2\x80\x9d Id., at ___ (slip op., at 13). The Court declined to read \xe2\x80\x9c\xe2\x80\x98question\xe2\x80\x99\xe2\x80\x9d and \xe2\x80\x9c\xe2\x80\x98matter\xe2\x80\x99\xe2\x80\x9d as\ncovering \xe2\x80\x9ca typical meeting, call, or event arranged by a public official\xe2\x80\x9d because doing so would deprive\nthe words \xe2\x80\x9c\xe2\x80\x98cause, suit, proceeding or controversy\xe2\x80\x99\xe2\x80\x9d of meaning. Id., at ___ (slip op., at 16).\n1\n\nThat interpretive move appears to accord with the Federal Circuit and the PTO\xe2\x80\x99s past practice.\nAnte, at 2\xe2\x80\x933. Nevertheless, it is by no means the only reasonable way to read this text, and indeed some\ncourts have suggested that \xe2\x80\x9cscandalous\xe2\x80\x9d can and should be applied independently of \xe2\x80\x9cimmoral,\xe2\x80\x9d see,\ne.g., In re McGinley, 660 F. 2d 481, 485, n. 6 (CCPA 1981).\n2\n\n233\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[14] For that reason, while the majority offers a reasonable reading of \xe2\x80\x9cscandalous,\xe2\x80\x9d it also\nunnecessarily and ill-advisedly collapses the words \xe2\x80\x9cscandalous\xe2\x80\x9d and \xe2\x80\x9cimmoral.\xe2\x80\x9d Instead, it should\ntreat them as each holding a distinct, nonredundant meaning, with \xe2\x80\x9cimmoral\xe2\x80\x9d covering marks that are\noffensive because they transgress social norms, and \xe2\x80\x9cscandalous\xe2\x80\x9d covering marks that are offensive\nbecause of the mode in which they are expressed.\n[15] What would it mean for \xe2\x80\x9cscandalous\xe2\x80\x9d in \xc2\xa7 1052(a) to cover only offensive modes of\nexpression? The most obvious ways\xe2\x80\x94indeed, perhaps the only conceivable ways\xe2\x80\x94in which a\ntrademark can be expressed in a shocking or offensive manner are when the speaker employs\nobscenity, vulgarity, or profanity. Obscenity has long been defined by this Court\xe2\x80\x99s decision in Miller v.\nCalifornia, 413 U.S. 15 (1973). See id., at 24\xe2\x80\x9326. As for what constitutes \xe2\x80\x9cscandalous\xe2\x80\x9d vulgarity or\nprofanity, I do not offer a list, but I do interpret the term to allow the PTO to restrict (and potentially\npromulgate guidance to clarify) the small group of lewd words or \xe2\x80\x9cswear\xe2\x80\x9d words that cause a visceral\nreaction, that are not commonly used around children, and that are prohibited in comparable settings.4\nCf. 18 U.S. C. \xc2\xa7 1464 (prohibiting \xe2\x80\x9cobscene, indecent, or profane language\xe2\x80\x9d in radio communications);\nFCC v. Pacifica Foundation, 438 U.S. 726, 746, and n. 22 (1978) (opinion of Stevens, J.) (regulator\xe2\x80\x99s\nobjection to a monologue containing various \xe2\x80\x9cfour-letter words\xe2\x80\x9d was not to its \xe2\x80\x9cpoint of view, but to\nthe way in which it [wa]s expressed\xe2\x80\x9d); 46 CFR \xc2\xa7 67.117(b)(3) (2018) (Coast Guard regulation\nprohibiting vessel names that \xe2\x80\x9ccontain\xe2\x80\x9d or are \xe2\x80\x9cphonetically identical to obscene, indecent, or profane\nlanguage, or to racial or ethnic epithets\xe2\x80\x9d); see also Jacobs, The Public Sensibilities Forum, 95 Nw. U. L.\nRev. 1357, 1416\xe2\x80\x931417, and n. 432 (2001) (noting that \xe2\x80\x9cswear words\xe2\x80\x9d are \xe2\x80\x9cperhaps more than any\nother categor[y] capable of specific articulation\xe2\x80\x9d and citing one state agency\xe2\x80\x99s list). Of course,\n\xe2\x80\x9cscandalous\xe2\x80\x9d offers its own limiting principle: if a word, though not exactly polite, cannot be said to be\n\xe2\x80\x9cscandalous\xe2\x80\x9d\xe2\x80\x94e.g., \xe2\x80\x9cshocking\xe2\x80\x9d or \xe2\x80\x9cextremely offensive,\xe2\x80\x9d 8 Century Dictionary 5374\xe2\x80\x94it is clearly not\nthe kind of vulgarity or profanity that Congress intended to target. Everyone can think of a small\nnumber of words (including the apparent homonym of Brunetti\xe2\x80\x99s mark) that would, however, plainly\nqualify.5\nB\n[16] A limiting construction like the one just discussed is both appropriate in this context and\nconsistent with past precedent. First, while a limiting construction must always be at least reasonable,\nthere are contexts in which imposing such a construction is more appropriate than others. The most\nAlthough the Government represents, and case law and scholarship appear to confirm, that\n\xe2\x80\x9cscandalous\xe2\x80\x9d in \xc2\xa7 1052(a) has often been applied to cover this kind of content, see Brief for United\nStates 27; In re Boulevard Entertainment, Inc., 334 F. 3d 1336, 1340 (CA Fed. 2003); Snow, Denying\nTrademark for Scandalous Speech, 51 U. C. D. L. Rev. 2331, 2339 (2018) (Snow), the majority notes\nthat the PTO has hardly amassed a perfect track record of consistency, see ante, at 6\xe2\x80\x938. Be that as it\nmay, the Government undeniably receives a large volume of trademark applications that easily would\nfit under this rubric (examples of which I will spare the reader). See In re Brunetti, 877 F. 3d 1330,\n1355 (CA Fed. 2017) (noting an appendix containing marks denied registration \xe2\x80\x9cwhose offensiveness\ncannot be reasonably questioned\xe2\x80\x9d). As a result of today\xe2\x80\x99s ruling, all of those marks will now\npresumably have to be registered.\n4\n\nThere is at least one particularly egregious racial epithet that would fit this description as well.\nWhile Matal v. Tam, 582 U. S. ___ (2017), removed a statutory basis to deny the registration of racial\nepithets in general, the Government represented at oral argument that it is holding in abeyance\ntrademark applications that use that particular epithet. See Tr. of Oral Arg. 61. As a result of today\xe2\x80\x99s\nruling, the Government will now presumably be compelled to register marks containing that epithet as\nwell rather than treating it as a \xe2\x80\x9cscandalous\xe2\x80\x9d form of profanity under \xc2\xa7 1052(a).\n5\n\n234\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nobvious example of a setting where more caution is required is in the realm of criminal statutes, where\nconsiderations such as the prohibition against vagueness and the rule of lenity come into play . . . .\nHere, however, the question is only whether the Government must be forced to provide the ancillary\nbenefit of trademark registration to pre-existing trademarks that use even the most extreme obscenity,\nvulgarity, or profanity. The stakes are far removed from a situation in which, say, Brunetti was facing a\nthreat to his liberty, or even his right to use and enforce his trademark in commerce.\n[17] Second, the Court has in the past accepted or applied similarly narrow constructions to avoid\nconstitutional infirmities. In Chaplinsky v. New Hampshire, 315 U.S. 568 (1942), for example, the Court\naccepted the New Hampshire Supreme Court\xe2\x80\x99s narrowing of a state statute covering \xe2\x80\x9c\xe2\x80\x98any offensive,\nderisive or annoying word,\xe2\x80\x99\xe2\x80\x9d id., at 569, to reach only those words that would strike the average person\nas being \xe2\x80\x9cplainly likely to cause a breach of the peace by the addressee,\xe2\x80\x9d id., at 573. \xe2\x80\x9c[T]hus construed,\xe2\x80\x9d\nthis Court decided, the statute did not violate the right to free speech . . . .\n[18] Taking the word \xe2\x80\x9cscandalous\xe2\x80\x9d to target only those marks that employ an offensive mode of\nexpression follows a similar practice. To be sure, the word could be read more broadly, thereby\nsweeping unconstitutionally into viewpoint discrimination. And imposing a limiting construction is, of\ncourse, \xe2\x80\x9cnot a license for the judiciary to rewrite language enacted by the legislature.\xe2\x80\x9d United States v.\nAlbertini, 472 U.S. 675, 680 (1985). But where the Court can reasonably read a statute like this one to\nsave it, the Court should do so. See Stern v. Marshall, 564 U.S. 462, 477\xe2\x80\x93478 (2011); NLRB v. Jones &\nLaughlin Steel Corp., 301 U.S. 1, 30 (1937).\nII\n[19] Adopting a narrow construction for the word \xe2\x80\x9cscandalous\xe2\x80\x9d\xe2\x80\x94interpreting it to regulate only\nobscenity, vulgarity, and profanity\xe2\x80\x94would save it from unconstitutionality. Properly narrowed,\n\xe2\x80\x9cscandalous\xe2\x80\x9d is a viewpoint-neutral form of content discrimination that is permissible in the kind of\ndiscretionary governmental program or limited forum typified by the trademark-registration system.\nA\n[20] Content discrimination occurs whenever a government regulates \xe2\x80\x9cparticular speech because\nof the topic discussed or the idea or message expressed.\xe2\x80\x9d Reed v. Town of Gilbert, 576 U.S. ___, ___ (2015)\n(slip op., at 6); see also Ward v. Rock Against Racism, 491 U.S. 781, 791 (1989) (\xe2\x80\x9cGovernment\nregulation of expressive activity is content neutral so long as it is \xe2\x80\x98justified without reference to the\ncontent of the regulated speech\xe2\x80\x99\xe2\x80\x9d). Viewpoint discrimination is \xe2\x80\x9can egregious form of content\ndiscrimination\xe2\x80\x9d in which \xe2\x80\x9cthe government targets not subject matter, but particular views taken by\nspeakers on a subject.\xe2\x80\x9d Rosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 829 (1995).\n[21] While the line between viewpoint-based and viewpoint-neutral content discrimination can\nbe \xe2\x80\x9cslippery,\xe2\x80\x9d see Corbin, Mixed Speech: When Speech Is Both Private and Governmental, 83 N. Y. U. L.\nRev. 605, 651 (2008), it is in any event clear that a regulation is not viewpoint discriminatory (or even\ncontent discriminatory) simply because it has an \xe2\x80\x9cincidental effect\xe2\x80\x9d on a certain subset of views. Ward,\n491 U.S., at 791. Some people, for example, may have the viewpoint that society should be more\nsexually liberated and feel that they cannot express that view sufficiently without the use of\npornographic words or images. That does not automatically make a restriction on pornography into\nviewpoint discrimination, despite the fact that such a restriction limits communicating one\xe2\x80\x99s views on\nsexual liberation in that way. See ibid.; Renton v. Playtime Theatres, Inc., 475 U.S. 41, 48 (1986).\n[22] Restrictions on particular modes of expression do not inherently qualify as viewpoint\ndiscrimination; they are not by nature examples of \xe2\x80\x9cthe government target[ing] . . . particular views\ntaken by speakers on a subject.\xe2\x80\x9d Rosenberger, 515 U.S., at 829. For example, a ban on lighting fires in\nthe town square does not facially violate the First Amendment simply because it makes it marginally\nharder for would-be flag-burners to express their views in that place. See R. A. V. v. St. Paul, 505 U.S.\n377, 385 (1992). By the same token, \xe2\x80\x9cfighting words are categorically excluded from the protection of\n235\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe First Amendment\xe2\x80\x9d not because they have no content or express no viewpoint (often quite the\nopposite), but because \xe2\x80\x9ctheir content embodies a particularly intolerable (and socially unnecessary)\nmode of expressing whatever idea the speaker wishes to convey.\xe2\x80\x9d Id., at 393; see id., at 385\xe2\x80\x93386; cf.\nBolger v. Youngs Drug Products Corp., 463 U.S. 60, 84 (1983) (Stevens, J., concurring in judgment) (\xe2\x80\x9cIt\nmatters whether a law regulates communications for their ideas or for their style\xe2\x80\x9d).\n[23] A restriction on trademarks featuring obscenity, vulgarity, or profanity is similarly viewpoint\nneutral, though it is naturally content-based.6 See R. A. V., 505 U.S., at 383 (kinds of speech like\n\xe2\x80\x9cobscenity, defamation, etc.\xe2\x80\x9d may \xe2\x80\x9cbe regulated because of their constitutionally proscribable content\xe2\x80\x9d\n(emphasis deleted)); see also Bethel School Dist. No. 403 v. Fraser, 478 U.S. 675, 685 (1986) (treating\npunishment of \xe2\x80\x9coffensively lewd and indecent speech\xe2\x80\x9d as viewpoint neutral); Pacifica, 438 U.S., at 745\xe2\x80\x93\n746, and n. 22 (treating regulation of profane monologue as viewpoint neutral). Indeed, the statute\nthat the Court upheld in Chaplinsky itself had been construed to cover, among other kinds of\n\xe2\x80\x9cdisorderly words,\xe2\x80\x9d \xe2\x80\x9cprofanity, obscenity and threats,\xe2\x80\x9d 315 U.S., at 573, despite the fact that such words\nhad been used in that case to communicate an expressive message, id., at 574. To treat a restriction on\nvulgarity, profanity, or obscenity as viewpoint discrimination would upend decades of precedent.7\n[24] Brunetti invokes Cohen v. California, 403 U.S. 15 (1971), to argue that the restriction at issue\nhere is viewpoint discriminatory. But Cohen\xe2\x80\x94which did not employ the precise taxonomy that is more\ncommon today\xe2\x80\x94does not reach as far as Brunetti wants. Cohen arose in the criminal context: Cohen\nhad been arrested and imprisoned under a California criminal statute targeting disturbances of the\npeace because he was \xe2\x80\x9cwearing a jacket bearing the words \xe2\x80\x98F[***] the Draft.\xe2\x80\x99 \xe2\x80\x9d Id., at 16. The Court held\nthat applying that statute to Cohen because of his jacket violated the First Amendment. Id., at 26. But\nthe Court did not suggest that the State had targeted Cohen to suppress his view itself (i.e., his sharp\ndistaste for the draft), such that it would have accepted an equally colorful statement of praise for the\ndraft (or hostility toward war protesters). Rather, the Court suggested that the State had simply\nengaged in what later courts would more precisely call viewpoint-neutral content discrimination\xe2\x80\x94it\nhad regulated \xe2\x80\x9cthe form or content of individual expression.\xe2\x80\x9d Id., at 24; see id., at 25\xe2\x80\x9326.\n[25] Cohen also famously recognized that \xe2\x80\x9cwords are often chosen as much for their emotive as\ntheir cognitive force,\xe2\x80\x9d id., at 26, and that \xe2\x80\x9cone man\xe2\x80\x99s vulgarity is another\xe2\x80\x99s lyric,\xe2\x80\x9d id., at 25. That is all\nconsistent with observing that a plain, blanket restriction on profanity (regardless of the idea to which\nit is attached) is a viewpoint-neutral form of content discrimination. The essence of Cohen\xe2\x80\x99s discussion\nis that profanity can serve to tweak (or amplify) the viewpoint that a message expresses, such that it\ncan be hard to disentangle the profanity from the underlying message\xe2\x80\x94without the profanity, the\nmessage is not quite the same. See id., at 25\xe2\x80\x9326. But those statements merely reinforce that profanity is\nstill properly understood as protected First Amendment content. See also R. A. V., 505 U.S., at 384\xe2\x80\x93385.\nOf course, obscenity itself is subject to a longstanding exception to First Amendment protection,\nsee Brown v. Entertainment Merchants Assn., 564 U. S. 786, 791 (2011), so it is proscribable in any\nevent. As for vulgarity and profanity, however, they are not subject to any such exception, and a\nregulation like \xc2\xa7 1052(a)\xe2\x80\x99s ban on the registration of scandalous marks is not \xe2\x80\x9c\xe2\x80\x98justified without\nreference to the content of the regulated speech\xe2\x80\x99\xe2\x80\x9d in the way that a simple regulation of time, place, or\nmanner is. Ward v. Rock Against Racism, 491 U. S. 781, 791 (1989) (emphasis deleted).\n6\n\nIt would also risk destabilizing government practice in a number of other contexts. Governments\nregulate vulgarity and profanity, for example, on city-owned buses and billboards, e.g., American\nFreedom Defense Initiative v. Massachusetts Bay Transp. Auth., 989 F. Supp. 2d 182, 183 (Mass. 2013)\n(noting such a prohibition), on registered vessels, 46 CFR \xc2\xa7 67.117(b)(3) (Coast Guard regulations),\nand at school events, e.g., Bethel School Dist. No. 403 v. Fraser, 478 U. S. 675, 677\xe2\x80\x93678, 685 (1986)\n(upholding discipline of high school student).\n7\n\n236\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nCohen\xe2\x80\x99s discussion does not also go further to declare, as Brunetti suggests, that a provision that treats\nall instances of profanity equally is nevertheless by nature an instance of \xe2\x80\x9cthe government target[ing]\n. . . particular views taken by speakers on a subject.\xe2\x80\x9d Rosenberger, 515 U.S., at 829. To be sure, such a\nrestriction could have the incidental effect of tamping down the overall volume of debate on all sides.\nBut differential effects alone, as explained above, do not render a restriction viewpoint (or even\ncontent) discriminatory. See Ward, 491 U.S., at 791\xe2\x80\x93792.8\n[26] Cohen therefore does not resolve this case in Brunetti\xe2\x80\x99s favor. Yes, Brunetti has been, as\nCohen was, subject to content discrimination, but that content discrimination is properly understood\nas viewpoint neutral. And whereas even viewpoint-neutral content discrimination is (in all but the\nmost compelling cases, such as threats) impermissible in the context of a criminal prosecution like the\none that Cohen faced, Brunetti is subject to such regulation only in the context of the federal\ntrademark-registration system. I discuss next why that distinction matters.\nB\n[27] While the Court has often subjected even viewpoint-neutral content discrimination to strict\nconstitutional scrutiny, see, e.g., Reed, 576 U.S., at ___ (slip op., at 6), there are contexts in which it does\nnot, see, e.g., Rosenberger, 515 U.S., at 829\xe2\x80\x93830. When that is the case, the difference between\nviewpoint-based and viewpoint-neutral content discrimination can be decisive. The federal trademarkregistration system is such a context.\n[28] Rights to a trademark itself arise through use, not registration. Regardless of whether a\ntrademark is registered, it can be used, owned, and enforced against would-be infringers. See B&B\nHardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, ___, ___ (2015) (slip op., at 3, 5). Trademark\nregistration, meanwhile, confers several ancillary benefits on trademark-holders who meet Congress\xe2\x80\x99\nspecifications, including for example, additional protections against infringers. See ante, at 2; Tam, 582\nU.S., at ___ (slip op., at 5). Registering a mark in the Government\xe2\x80\x99s searchable register puts the world on\nnotice (whether actual or constructive) that a party is asserting ownership of that mark. Registration,\nin short, is a helpful system, but it is one that the Government is under no obligation to establish and\nthat is collateral to the existence and use of trademarks themselves. There is no evidence that speech\nor commerce would be endangered if the Government were not to provide it at all.\n[29] When the Court has talked about governmental initiatives like this one before, it has usually\nused one of two general labels. In several cases, the Court has treated such initiatives as a limited\npublic (or nonpublic) forum. See, e.g., Christian Legal Soc. Chapter of Univ. of Cal., Hastings College of\nLaw v. Martinez, 561 U.S. 661, 669\xe2\x80\x93670, 682 (2010) (\xe2\x80\x9c\xe2\x80\x98Registered Student Organization\xe2\x80\x99\xe2\x80\x9d program\nproviding various financial and nonfinancial benefits to recognized law-school student groups);\nRosenberger, 515 U.S., at 823\xe2\x80\x93824, 829\xe2\x80\x93830 (\xe2\x80\x9cStudent Activities Fund\xe2\x80\x9d for registered campus student\ngroups); Cornelius v. NAACP Legal Defense & Ed. Fund, Inc., 473 U.S. 788, 790\xe2\x80\x93791, 799\xe2\x80\x93801, 806\n(1985) (\xe2\x80\x9cCombined Federal Campaign\xe2\x80\x9d literature enabling approved charitable organizations to solicit\ndonations from federal employees). In other situations, the Court has discussed similar initiatives as\n\nThat does not mean, of course, that a government may elude harsher scrutiny or invalidation of\na regulation by simply claiming disinterest in a speaker\xe2\x80\x99s message, see United States v. Eichman, 496 U.\nS. 310, 315\xe2\x80\x93317 (1990), or by concealing an attempt to favor some views over others in superficially\nneutral garb, see Renton v. Playtime Theatres, Inc., 475 U. S. 41, 46\xe2\x80\x9349 (1986); cf. Church of Lukumi\nBabalu Aye, Inc. v. Hialeah, 508 U. S. 520, 533\xe2\x80\x93534 (1993). But there is no evidence in the record from\nwhich to conclude that Congress enacted the scandalous-marks provision in order to advantage certain\nviews over others. And where a denial of trademark registration by the PTO raises such a concern, it\nwould be proper for an applicant to bring an as-applied challenge. See infra, at 18\xe2\x80\x9319.\n8\n\n237\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ngovernment programs or subsidies. See, e.g., Legal Services Corporation v. Velazquez, 531 U.S. 533, 536,\n543\xe2\x80\x93544 (2001) (government program distributing funds to legal-services organizations); National\nEndowment for Arts v. Finley, 524 U.S. 569, 573, 585\xe2\x80\x93587 (1998) (competitive government grantmaking program to support the arts).10 In each of these situations, a governmental body established an\ninitiative that supported some forms of expression without restricting others. Some speakers were\nbetter off, but no speakers were worse off.\n[30] Regardless of the finer distinctions between these labels, reasonable, viewpoint-neutral\ncontent discrimination is generally permissible under either framework. See Christian Legal Soc., 561\nU.S., at 679 (\xe2\x80\x9cAny access barrier must be reasonable and viewpoint neutral\xe2\x80\x9d); Velazquez, 531 U.S., at\n543\xe2\x80\x93544, 548\xe2\x80\x93549 (analogizing to limited-forum cases and explaining that \xe2\x80\x9c[w]here private speech is\ninvolved, even Congress\xe2\x80\x99 antecedent funding decision cannot be aimed at the suppression of ideas\nthought inimical to the Government\xe2\x80\x99s own interest\xe2\x80\x9d); see also Ysursa v. Pocatello Ed. Assn., 555 U.S. 353,\n355 (2009) (finding government conduct that did not restrict speech but simply \xe2\x80\x9cdecline[d] to\npromote\xe2\x80\x9d it valid where it was \xe2\x80\x9creasonable in light of the State\xe2\x80\x99s interest\xe2\x80\x9d). Perhaps for that reason, the\nCourt has often discussed the two frameworks as at least closely related. See, e.g., Christian Legal\nSociety, 561 U.S., at 682 (\xe2\x80\x9c[T]his case fits comfortably within the limited-public forum category, for [the\nplaintiff], in seeking what is effectively a state subsidy, faces only indirect pressure . . . \xe2\x80\x9d); Velazquez,\n531 U.S., at 544 (\xe2\x80\x9cAs this suit involves a subsidy, limited forum cases . . . may not be controlling in a\nstrict sense, yet they do provide some instruction\xe2\x80\x9d).\n[31] Whichever label one chooses here, the federal system of trademark registration fits: It is, in\nessence, an opportunity to include one\xe2\x80\x99s trademark on a list and thereby secure the ancillary benefits\nthat come with registration. Just as in the limited-forum and government-program cases, some\nspeakers benefit, but no speakers are harmed. Brunetti, for example, can use, own, and enforce his\nmark regardless of whether it has been registered. Whether he may register his mark can therefore\nturn on reasonable, viewpoint-neutral content regulations.12\nC\n[32] Prohibiting the registration of obscene, profane, or vulgar marks qualifies as reasonable,\nviewpoint-neutral, content-based regulation. Apart from any interest in regulating commerce itself, the\nGovernment has an interest in not promoting certain kinds of speech, whether because such speech\ncould be perceived as suggesting governmental favoritism or simply because the Government does not\nwish to involve itself with that kind of speech. See, e.g., Ysursa, 555 U.S., at 359\xe2\x80\x93360; Cornelius, 473 U.S.,\n10 In Tam, four Justices concluded that cash-subsidy programs like the one in Finley were \xe2\x80\x9cnot\ninstructive in analyzing\xe2\x80\x9d trademark registration. 582 U. S., at ___ (opinion of ALITO, J.) (slip op., at 20).\nTrademark registration differs, of course, because any \xe2\x80\x9csubsidy\xe2\x80\x9d comes in the form of a noncash\nbenefit, but that difference does not foreclose understanding the registration system as a beneficial,\nnoncash governmental program. No Justice, meanwhile, rejected the limited-public-forum analogy, see\nid., at ___\xe2\x80\x93___, and n. 16 (slip op., at 22\xe2\x80\x9323, and n. 16) (calling such cases \xe2\x80\x9c[p]otentially more analogous\xe2\x80\x9d\nand reserving the question), and scholars have noted arguments for adopting it. See Snow 2364\xe2\x80\x932366;\nKatyal, Trademark Intersectionality, 57 UCLA L. Rev. 1601, 1676\xe2\x80\x931681 (2010); Lefstin, Note, Does the\nFirst Amendment Bar Cancellation of REDSKINS? 52 Stan. L. Rev. 665, 706\xe2\x80\x93707 (2000).\n\nThough I do not address the constitutionality of provisions not before the Court, I note as well\nthat the \xe2\x80\x9cscandalous\xe2\x80\x9d bar in \xc2\xa7 1052(a) is hardly the only provision in \xc2\xa7 1052 that could be\ncharacterized as content discriminatory. See, e.g., \xc2\xa7 1052(b) (no flags or insignias); \xc2\xa7 1052(c) (no\nunapproved markers of deceased U. S. Presidents during the lives of their spouses).\n12\n\n238\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nat 809. While \xe2\x80\x9cthere is no evidence that the public associates the contents of trademarks with the\nFederal Government,\xe2\x80\x9d Tam, 582 U.S., at ___ (slip op., at 17), registration nevertheless entails\nGovernment involvement in promoting a particular mark. Registration requires the Government to\npublish the mark, as well as to take steps to combat international infringement. See 15 U.S. C. \xc2\xa7\xc2\xa7 1062,\n1124; see also Brief for United States 35. The Government has a reasonable interest in refraining from\nlending its ancillary support to marks that are obscene, vulgar, or profane. Cf. Hustler Magazine, Inc. v.\nFalwell, 485 U.S. 46, 56 (1988) (\xe2\x80\x9c[S]peech that is vulgar, offensive, and shocking is not entitled to\nabsolute constitutional protection under all circumstances\xe2\x80\x9d (internal quotation marks omitted)).\nIII\n[33] \xe2\x80\x9cThe cardinal principle of statutory construction is to save and not to destroy.\xe2\x80\x9d Jones &\nLaughlin Steel Corp., 301 U.S., at 30; see also Hooper v. California, 155 U.S. 648, 657 (1895) (\xe2\x80\x9cThe\nelementary rule is that every reasonable construction must be resorted to, in order to save a statute\nfrom unconstitutionality\xe2\x80\x9d). In directing the PTO to deny the ancillary benefit of registration to\ntrademarks featuring \xe2\x80\x9cscandalous\xe2\x80\x9d content, Congress used a word that is susceptible of different\nmeanings. The majority\xe2\x80\x99s reading would render the provision unconstitutional; mine would save it.\nUnder these circumstances, the Court ought to adopt the narrower construction, rather than permit a\nrush to register trademarks for even the most viscerally offensive words and images that one can\nimagine.13\n[34] That said, I emphasize that Brunetti\xe2\x80\x99s challenge is a facial one. That means that he must show\nthat \xe2\x80\x9c\xe2\x80\x98a substantial number of [the scandalous-marks provision\xe2\x80\x99s] applications are unconstitutional,\njudged in relation to the [provision\xe2\x80\x99s] plainly legitimate sweep.\xe2\x80\x99\xe2\x80\x9d United States v. Stevens, 559 U.S. 460,\n473 (2010). With \xe2\x80\x9cscandalous\xe2\x80\x9d narrowed to reach only obscene, profane, and vulgar content, the\nprovision would not be overly broad. Cf. Frisby, 487 U.S., at 488 (rejecting a facial challenge after\nadopting a limiting construction); Boos, 485 U.S., at 331 (same). Even so, hard cases would remain, and\nI would expect courts to take seriously as-applied challenges demonstrating a danger that the\nprovision had been used to restrict speech based on the views expressed rather than the mode of\nexpression.14 Cf. Finley, 524 U.S., at 587 (reserving the possibility of as-applied challenges).\n[35] Freedom of speech is a cornerstone of our society, and the First Amendment protects\nBrunetti\xe2\x80\x99s right to use words like the one at issue here. The Government need not, however, be forced\nto confer on Brunetti\xe2\x80\x99s trademark (and some more extreme) the ancillary benefit of trademark\nregistration, when \xe2\x80\x9cscandalous\xe2\x80\x9d in \xc2\xa7 1052(a) can reasonably be read to bar the registration of only\nthose marks that are obscene, vulgar, or profane. Though I concur as to the unconstitutionality of the\nterm \xe2\x80\x9cimmoral\xe2\x80\x9d in \xc2\xa7 1052(a), I respectfully dissent as to the term \xe2\x80\x9cscandalous\xe2\x80\x9d in the same statute and\nwould instead uphold it under the narrow construction discussed here.\n\nAs noted above, I agree with the majority that \xc2\xa7 1052(a)\xe2\x80\x99s bar on the registration of \xe2\x80\x9cimmoral\xe2\x80\x9d\nmarks is unconstitutional viewpoint discrimination. See supra, at 2. I would simply sever that provision\nand uphold the bar on \xe2\x80\x9cscandalous\xe2\x80\x9d marks. See Reno v. American Civil Liberties Union, 521 U. S. 844,\n882\xe2\x80\x93883 (1997); Brockett v. Spokane Arcades, Inc., 472 U. S. 491, 504\xe2\x80\x93507 (1985); see also Tam, 582 U.\nS., at ___ (slip op., at 26) (striking down only the disparagement clause).\n13\n\nThe majority adverts to details in the record that could call into question whether the PTO\nengaged in viewpoint discrimination in this very case. See ante, at 3. Because a facial challenge is the\nonly challenge before the Court, I do not address whether an as-applied challenge could have merit\nhere.\n14\n\n239\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nComments and Questions\n1. Marijuana marks. To qualify for federal registration, a mark must be used in commerce for\ngoods or services that are legal under federal law. For this reason, the T.T.A.B. has affirmed the refusal\nof registration of the mark HERBAL ACCESS for \xe2\x80\x9cretail store services featuring herbs\xe2\x80\x9d when such services\nconsisted of the sale of marijuana in Washington state, under whose law such sales are legal. In re\nBrown, 119 USPQ2d 1350 (TTAB 2016). See also In re Stanley Bros. Social Enterprises, LLC, 2020\nU.S.P.Q.2d 10658 (TTAB 2020); In re JJ206, LLC, dba JuJu Joints, 120 USPQ2d 1568 (TTAB 2016); In re\nCanopy Growth Corp., Serial Nos. 86475885 & 86475899 (TTAB 2019).\nC.\n\nUse in Commerce as a Prerequisite for Trademark Rights\n\nAs stated at the beginning of this Part, a trademark must be used in commerce to qualify for\nprotection. See Lucent Info. Mgmt. v. Lucent Techs., Inc., 186 F.3d 311, 319 (3d Cir. 1999) (\xe2\x80\x9cIt is\naxiomatic that if there is \xe2\x80\x98no trade \xe2\x80\x94 no trademark.\xe2\x80\x99\xe2\x80\x9d (quoting La Societe Anonyme des Parfums le\nGalion v. Jean Patou, Inc., 495 F.2d 1265, 1274 (2d Cir. 1974)). In this subsection, we consider the\nnature of this \xe2\x80\x9cuse in commerce\xe2\x80\x9d requirement.\nTo avoid ambiguity, it may be useful to recognize from the start the several different aspects of\nthe concept of \xe2\x80\x9cuse in commerce\xe2\x80\x9d in U.S. trademark law, only one of which we will focus on in this\nsubsection.\n\xe2\x80\xa2\n\n\xe2\x80\x9cUse in Commerce\xe2\x80\x9d as Implementing the Commerce Clause Limitation on the Reach of\nCongressional Power: As the Lanham Act \xc2\xa7 45 definition of \xe2\x80\x9ccommerce\xe2\x80\x9d indicates (\xe2\x80\x9cThe word\n\xe2\x80\x98commerce\xe2\x80\x99 means all commerce which may lawfully be regulated by Congress.\xe2\x80\x9d), federal\ntrademark law will regulate only those uses that fall within the Congress\xe2\x80\x99s Commerce Clause\npower. Thus, if a trademark owner does not use its trademark in a manner that affects\ninterstate commerce, federal trademark law will not protect that trademark. The trademark\nowner must instead rely on state law. This is very rarely an issue given current Commerce\nClause jurisprudence. See, e.g., Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986,\n995 (Fed. Cir. 2016) (holding that plaintiff\xe2\x80\x99s single intrastate sale of two hats bearing the mark\nat issue to an out-of-state resident was regulable by Congress under the Commerce Clause and\nthus satisfied the Lanham Act\xe2\x80\x99s \xe2\x80\x9cuse in commerce\xe2\x80\x9d requirement).\n\n\xe2\x80\xa2\n\n\xe2\x80\x9cUse in Commerce\xe2\x80\x9d for Purposes of Establishing Trademark Rights: This is the focus of this\nsubsection.\n\n\xe2\x80\xa2\n\n\xe2\x80\x9cUse in Commerce\xe2\x80\x9d for Purposes of Determining Whether a Trademark Owner Has Abandoned Its\nRights: If a trademark owner ceases to use its trademark in commerce without an intent to\nresume use, it may be deemed to have \xe2\x80\x9cabandoned\xe2\x80\x9d its mark. See Lanham Act \xc2\xa7 45, 15 U.S.C.\n\xc2\xa7 1127 (defining when a mark shall be deemed \xe2\x80\x9cabandoned\xe2\x80\x9d). We will address the doctrine of\ntrademark abandonment in Part III.D below.\n\n\xe2\x80\xa2\n\n\xe2\x80\x9cUse in Commerce\xe2\x80\x9d for Purposes of Determining Whether a Defendant Has Made an Infringing\n\xe2\x80\x9cActionable Use\xe2\x80\x9d of the Plaintiff\xe2\x80\x99s Mark: In several high-profile internet-related cases in the\nearly years of the century, defendants argued that the terms of each of the infringement\nsections of the Lanham Act\xe2\x80\x94Lanham Act \xc2\xa7\xc2\xa7 32, 43(a), and 43(c)\xe2\x80\x94require a showing that the\ndefendant is making a \xe2\x80\x9cuse in commerce\xe2\x80\x9d to be liable. These defendants argued that they were\nnot making a \xe2\x80\x9cuse in commerce\xe2\x80\x9d as that term is specifically defined under Lanham Act \xc2\xa7 45\nand should thus not be found liable. We will address the case law on this issue, which has\nultimately largely come to reject this argument, in Part II.A.1 below.\n\n\xe2\x80\xa2\n\n\xe2\x80\x9cCommercial Use\xe2\x80\x9d of a Mark for Purposes of Determining Whether a Defendant Has Made an\nInfringing \xe2\x80\x9cActionable Use\xe2\x80\x9d of the Plaintiff\xe2\x80\x99s Mark: Finally, Lanham Act \xc2\xa7\xc2\xa7 32, 43(a), and 43(c)\nappear to require that for a defendant\xe2\x80\x99s conduct to be infringing, the defendant must be using\n240\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe mark \xe2\x80\x9cin connection with the sale, distribution, or advertising of any goods or services.\xe2\x80\x9d\nLanham Act \xc2\xa7 32(1)(a), 15 U.S.C. \xc2\xa7 1114(1)(a). Defendants engaged in non-profit, expressive\nuses of marks (such as internet gripe sites that do not sell any goods) have argued that their\nconduct does not constitute \xe2\x80\x9ccommercial use\xe2\x80\x9d and is thus not infringing. We will address this\nissue in Part II.A.2 below.\nThe student is strongly advised to distinguish between these various aspects of \xe2\x80\x9cuse in commerce\xe2\x80\x9d as\nwe proceed, particularly the difference between (a) \xe2\x80\x9cuse in commerce\xe2\x80\x9d by the plaintiff for purposes of\nestablishing the plaintiff\xe2\x80\x99s trademark rights and (b) \xe2\x80\x9cuse in commerce\xe2\x80\x9d (or \xe2\x80\x9ccommercial use\xe2\x80\x9d) by the\ndefendant for purposes of establishing the defendant\xe2\x80\x99s trademark infringement.\nWith respect to the plaintiff\xe2\x80\x99s use in commerce for purposes of establishing trademark rights, a\nfurther distinction should be drawn from the start. Though the two areas of law are closely related,\nthere are nevertheless important differences between (1) the extent of \xe2\x80\x9cuse in commerce\xe2\x80\x9d that a mark\nowner must make for the mark to qualify for federal registration, and (2) the extent of \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d that a mark owner must make of a mark to establish unregistered, \xe2\x80\x9ccommon law\xe2\x80\x9d priority\nover subsequent users of the same mark. In general, the quantum of use necessary for registration is a\nstricter requirement than that necessary for purposes of establishing unregistered common law\npriority. See MCCARTHY \xc2\xa7 16:12\xe2\x80\x9316:14.\nIn Part I.C.1, we address the use in commerce requirement for federal registration. As you will\nsee, Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009), and Couture v. Playdom, Inc.,\n778 F.3d 1379 (Fed. Cir. 2015), make clear that the owner of a mark must actually complete the sale of\ngoods or services bearing the mark to customers for the mark to qualify for federal registration.1 Mere\nadvertising or other promotional conduct without actual sales will not support federal registration. By\ncontrast, in Part I.C.2, Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001), shows\nthat for purposes of establishing unregistered, common law priority in a mark, advertising and other\npromotional conduct prior to actual sales may be sufficient to support a priority claim.\nIn reading through these two subsections, consider whether the distinction between use for\npurposes of registration and use for purposes of common law priority makes sense as a matter of\nsound policy.\n1.\n\nUse in Commerce as a Prerequisite for Federal Trademark Registration\n\nLanham Act \xc2\xa7 45, 15 U.S.C. \xc2\xa7 1127\nThe term \xe2\x80\x9cuse in commerce\xe2\x80\x9d means the bona fide use of a mark in the ordinary course of\ntrade, and not made merely to reserve a right in a mark. For purposes of this chapter, a\nmark shall be deemed to be in use in commerce-(1) on goods when\xe2\x80\x93\n(A) it is placed in any manner on the goods or their containers or the displays associated\ntherewith or on the tags or labels affixed thereto, or if the nature of the goods makes such\nplacement impracticable, then on documents associated with the goods or their sale, and\n(B) the goods are sold or transported in commerce, and\n\nThere is a minor exception to the general rule that a trademark owner must make use in\ncommerce of its mark in order for the mark to qualify for federal registration. As discussed more fully\nin Part II.D below, Lanham Act \xc2\xa7 44(e), 15 U.S.C. \xc2\xa7 1126(e), provides that foreign applicants applying\nunder a \xc2\xa7 44 filing basis need not show actual use in commerce prior to obtaining registration. See\nMCCARTHY \xc2\xa7 29:14.\n1\n\n241\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n(2) on services when it is used or displayed in the sale or advertising of services and the\nservices are rendered in commerce, or the services are rendered in more than one State\nor in the United States and a foreign country and the person rendering the services is\nengaged in commerce in connection with the services.\nThe word \xe2\x80\x9ccommerce\xe2\x80\x9d means all commerce which may lawfully be regulated by\nCongress.\n\nAycock Engineering, Inc. v. Airflite, Inc.\n560 F.3d 1350 (Fed. Cir. 2009)\nO\xe2\x80\x99GRADY, District Judge:\n[1] In 1970, Respondent\xe2\x80\x93Appellant Aycock Engineering, Inc. (\xe2\x80\x9cAycock Engineering\xe2\x80\x9d) applied for a\nservice mark, which was registered at the United States Patent and Trademark Office (\xe2\x80\x9cUSPTO\xe2\x80\x9d) in\n1974 after examination. In 2007, however, the USPTO Trademark Trial and Appeal Board (\xe2\x80\x9cTTAB\xe2\x80\x9d)\ndeclared the registration void because it failed to meet the \xe2\x80\x9cuse in commerce\xe2\x80\x9d element of the Lanham\nAct. Aycock Engineering now appeals the TTAB\xe2\x80\x99s ruling. The question presented herein is whether the\nuse in commerce requirement is met when an applicant uses a service mark in the preparatory stages\nof a service\xe2\x80\x99s development, but never offers the service to the public. We hold that it is not.\nI. BACKGROUND\n[2] In the late 1940s, William Aycock conceived of and began work on a service involving\nchartering flights in the air taxi industry. At that time, the common practice for air taxi companies was\nto lease entire airplanes, not individual seats. Consequently, individual passengers not belonging to a\nlarger party faced more difficulty and expense in chartering a flight. Mr. Aycock intended, through his\nservice, to allow solo passengers to arrange flights on chartered aircraft for less cost.\n[3] Mr. Aycock did not plan on operating the chartered air taxi services himself. Instead, his goal\nwas to develop a system where he would serve his customers by acting as the middleman, or\n\xe2\x80\x9ccommunication link,\xe2\x80\x9d between the customer and one of the air taxi service operators he contracted\nwith to provide flights on an individual seat basis. Mr. Aycock planned to advertise his service, which\nhe called the AIRFLITE service, to the public and to have those interested in using the service call a tollfree phone number to schedule reservations. After learning of customers\xe2\x80\x99 travel plans, Mr. Aycock\nwould then arrange for the air taxi service to fly his customers with similar travel plans to their\ndestinations. Mr. Aycock believed that in order for his service to become operational, he needed at\n242\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nleast 300 air taxi operators in the United States to agree to participate in his air-taxi-operator\nnetwork.2\n[4] In the years after conceiving of the idea for his service, Mr. Aycock worked toward offering the\nservice to the public. In the mid\xe2\x80\x931960s, he formed Aycock Engineering\xe2\x80\x94the corporate entity under\nwhich his service would operate. He also sought and obtained two toll-free telephone numbers that the\npublic could use to make reservations. In March of 1970, Mr. Aycock invited virtually all air taxi\noperators certified by the Federal Aviation Administration (\xe2\x80\x9cFAA\xe2\x80\x9d) to join his operation by, inter alia,\ndistributing flyers with in-depth information about his AIRFLITE service. He eventually entered into\ncontracts with some of those air taxi service operators.3 Under these contracts, air taxi operators\nagreed to participate in the AIRFLITE service and even paid modest initiation fees to Mr. Aycock.\nFurthermore, Mr. Aycock filed a service mark application on August 10, 1970 for the term AIRFLITE.\n[5] Despite his efforts, Mr. Aycock\xe2\x80\x99s operation never got off the ground. While he estimated that\nhe needed at least 300 air service operators under contract to make his service operational, Mr. Aycock\nnever had more than twelve (4% of his minimum goal) under contract at any time throughout his\ncompany\xe2\x80\x99s history. And while Mr. Aycock advertised to air taxi operators, he never marketed the\nAIRFLITE service to the general public. More specifically, the record does not suggest that Mr. Aycock\never gave the public an opportunity to use the toll-free phone numbers to book reservations, or that he\never spoke with a member of the general public about making a reservation. Finally, and most notably,\nMr. Aycock never arranged for a single passenger to fly on a chartered flight.4\n[6] Mr. Aycock\xe2\x80\x99s AIRFLITE mark, which he applied for on August 10, 1970, was registered by the\nUSPTO on April 30, 1974 on the Supplemental Register* after a prosecution that involved considerable\nnegotiation between Mr. Aycock and the trademark examining attorney . . . . The recitation of services\nfor the AIRFLITE service mark eventually agreed upon by the USPTO and Mr. Aycock was \xe2\x80\x9c[a]rranging\nfor individual reservations for flights on airplanes.\xe2\x80\x9d Id. at 729. Mr. Aycock\xe2\x80\x99s application to renew his\nAIRFLITE service mark was granted by the USPTO on April 27, 1994.\n[7] In 2001, Airflite, Inc., the Petitioner\xe2\x80\x93Appellee, filed a petition for cancellation alleging, inter\nalia, that Aycock Engineering did not use its AIRFLITE mark prior to registration in connection with\nthe services identified in its registration. In that proceeding, the TTAB agreed with Airflite, Inc. and\ncancelled the AIRFLITE registration, finding that Mr. Aycock failed to render the service described in\nits registration in commerce. Airflite, Inc. v. Aycock Eng\xe2\x80\x99g, Inc., Cancellation 92032520, 2007 WL\n2972237, at *7 (TTAB Oct. 4, 2007) (\xe2\x80\x9cTTAB Decision \xe2\x80\x9c).\n....\n\nMr. Aycock stated in his deposition, \xe2\x80\x9cWe start this when 300 air taxi operators in the United\nStates have signed on to provide the transportation.\xe2\x80\x9d J.A. 1942.\n2\n\n3\n\nSome of the contracts originated in the 1970s, and some came as late as 2001.\n\nWhen asked at his deposition whether he had ever arranged for an individual to fly on an\nairplane, Mr. Aycock stated, \xe2\x80\x9cI had never made a\xe2\x80\x94any arrangement . . . I had never had a talk with the\ncustomer then talked with the air taxi operator and reached any agreement on them carrying the\ncustomer.\xe2\x80\x9d\n4\n\n* {The Supplemental Register is reserved for marks that are capable of, but have not yet\ndeveloped, source distinctiveness\xe2\x80\x94i.e., marks that are descriptive and do not yet possess acquired\ndistinctiveness. See Lanham Act \xc2\xa7 23, 15 U.S.C. \xc2\xa7 1091.}\n\n243\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nD. Use Requirement\n[8] Under \xc2\xa7 45 of the Lanham Act, a service mark is any \xe2\x80\x9cword, name, symbol or device, or any\ncombination thereof used by a person, or which a person has a bona fide intention to use in commerce\n. . . to identify and distinguish the services of one person . . . from the services of others.\xe2\x80\x9d 15 U.S.C.\n\xc2\xa7 1127 (2006). The definition of \xe2\x80\x9cservice mark\xe2\x80\x9d is virtually identical to the definition of \xe2\x80\x9ctrademark.\xe2\x80\x9d\nBut while service marks apply to intangible services, trademarks are used to distinguish tangible\ngoods. See Chance v. Pac\xe2\x80\x93Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001).\n[9] \xe2\x80\x9cIt is clear from the wording of the Lanham Act that applications for service mark registrations\nare subject to the same statutory criteria as are trademarks.\xe2\x80\x9d 3 J. Thomas McCarthy, McCarthy on\nTrademarks and Unfair Competition \xc2\xa7 19:82 (4th ed.2008) [hereinafter McCarthy]; see 15 U.S.C. \xc2\xa7 1053\n(2006). One such statutory criterion that applies to both trademarks and service marks is the \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d requirement. . . . The registration of a mark that does not meet the use requirement is void\nab initio. See Gay Toys, Inc. v. McDonald\xe2\x80\x99s Corp., 585 F.2d 1067, 1068 (CCPA 1978); 3 McCarthy\n\xc2\xa7 19:112.\n[10] Despite the seeming harmony and simplicity in the application of the use requirement to\ntrademarks and service marks, opportunity exists for confusion in this area of the law. Different\nstatutory requirements apply to applications filed before November 16, 1989, as compared to those\nfiled after. This is because in 1988, Congress passed the Trademark Law Revision Act (\xe2\x80\x9cTLRA\xe2\x80\x9d). The\nTLRA altered the burden that applicants must meet before satisfying the use element by requiring an\napplicant to make a \xe2\x80\x9cbona fide use of [the] mark in the ordinary course of trade.\xe2\x80\x9d Trademark Law\nRevision Act of 1988, Pub.L. No. 100\xe2\x80\x93667, 102 Stat. 3935 (effective November 16, 1989) (codified at 15\nU.S.C. \xc2\xa7 1127 (2006)).\n[11] This \xe2\x80\x9cbona fide use\xe2\x80\x9d language was intended to eliminate \xe2\x80\x9ctoken uses,\xe2\x80\x9d which occurred when\napplicants used marks in conjunction with selling goods or offering services for the sole purpose of\nobtaining registration, and with no intention of legitimately using the mark in commerce until a later\ndate. See Blue Bell, Inc. v. Jaymar\xe2\x80\x93Ruby, Inc., 497 F.2d 433, 437 (2d Cir. 1974). Before 1989, a \xe2\x80\x9ctoken\nuse\xe2\x80\x9d was sufficient to satisfy the use requirement and qualify a mark for registration. See Id.\n[12] In addition to eliminating token uses, the 1988 TLRA made other changes to the use\nrequirement. Before 1989, an applicant only qualified for registration if he was using his mark in\ncommerce at the time he filed his application at the USPTO. WarnerVision Entm\xe2\x80\x99t Inc. v. Empire of\nCarolina, Inc., 101 F.3d 259, 260 (2d Cir. 1996). But after 1989, an applicant could begin the\nregistration process even when his mark was not in use in commerce at the time of the filing, so long as\nhe had a \xe2\x80\x9cbona fide intention to use the mark in commerce\xe2\x80\x9d at a later date. 15 U.S.C. \xc2\xa7 1051(b) (2006).\nApplicants filing these \xe2\x80\x9cintent to use\xe2\x80\x9d applications are only granted registration, however, if they file a\nverified statement of commercial use proving eventual use of the mark in commerce. Id. \xc2\xa7 1051(d).\n[13] Because the mark at issue here is a service mark, the use requirement relating to service\nmark applications, as opposed to trademark applications, guides our analysis. Furthermore, the\napplication at issue in this case was filed in 1970. Therefore, this case must be decided according to the\nservice mark use requirement that appeared in the Lanham Act in 1970 (i.e., the pre\xe2\x80\x931989 version).\nSee 3 McCarthy \xc2\xa7 19:112. However, for the reasons stated below, our holding in this case also applies\nto the current (and post\xe2\x80\x931989) service mark use requirement.\nE. Use Requirement for Service Marks\n[14] With the exception of the 1988 TLRA statutory language eliminating token uses and\npermitting intent-to-use applications, the service mark use requirement as it appeared in 1970 is\nmaterially identical to the post\xe2\x80\x931989 version. The use provision of the Lanham Act in force in 1970\nstated that a service mark was in use in commerce \xe2\x80\x9cwhen it is used or displayed in the sale or\nadvertising of services, and the services are rendered in commerce, or the services are rendered in\n244\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmore than one State or in this and a foreign country and the person rendering the services is engaged\nin commerce in connection therewith.\xe2\x80\x9d Pub.L. No. 87\xe2\x80\x93772, 76 Stat. 769 (1962). Therefore, like the\ncurrent use requirement, a service mark applicant seeking to meet the pre\xe2\x80\x931989 version had to (1) use\nthe mark in the sale or advertising of a service and (2) show that the service was either rendered in\ninterstate commerce or rendered in more than one state or in this and a foreign country by a person\nengaged in commerce.\n[15] Courts, as well as the TTAB, have interpreted the pre\xe2\x80\x931989 statutory language in analogous\ncases. Without question, advertising or publicizing a service that the applicant intends to perform in\nthe future will not support registration. In re Cedar Point, Inc., 220 USPQ 533, 536 (TTAB 1983)\n(quoting Intermed Commc\xe2\x80\x99ns, Inc. v. Chaney, 197 USPQ 501, 507\xe2\x80\x9308 (TTAB 1977)); Greyhound Corp. v.\nArmour Life Ins. Co., 214 USPQ 473, 474 (TTAB 1982). Instead, the advertising or publicizing must\nrelate to \xe2\x80\x9can existing service which has already been offered to the public.\xe2\x80\x9d Greyhound, 214 USPQ at\n474. Furthermore, \xe2\x80\x9c[m]ere adoption (selection) of a mark accompanied by preparations to begin its\nuse are insufficient . . . for claiming ownership of and applying to register the mark.\xe2\x80\x9d Intermed, 197\nUSPQ at 507; see Blue Bell, 497 F.2d at 437. \xe2\x80\x9cAt the very least,\xe2\x80\x9d in order for an applicant to meet the use\nrequirement, \xe2\x80\x9cthere must be an open and notorious public offering of the services to those for whom\nthe services are intended.\xe2\x80\x9d Intermed, 197 USPQ at 507.\n[16] In Intermed, the TTAB rejected a service mark application for failing to meet the use in\ncommerce requirement even where the applicant had performed many pre-application serviceoriented activities involving the public. Id. at 508\xe2\x80\x9309. The applicant in that case sought to register a\nmark intended to identify an international medical services operation. Id. at 502. The applicant\xe2\x80\x99s plan\nwas to build the international service from an already operating United States-based medical service.\nId. at 503. The applicant intended to, and did use the United States-based operation as a fundraising\naffiliate of the new international operation. Id. at 504. Additionally, the applicant communicated with\nand solicited the support of the Iranian government regarding the service before the application was\nfiled. Id. The applicant also issued a detailed announcement using the service mark term before the\nfiling date designed to inform and update individuals about the service\xe2\x80\x99s status. Id. Finally, and also\nbefore the date of application, the applicant hired a fundraising firm to raise money for the service. Id.\nat 508.\n[17] Despite these activities, the TTAB held that the applicant failed to meet the use requirement\nbecause the services described in the application were not \xe2\x80\x9coffered, promoted, advertised or rendered\n. . . in commerce.\xe2\x80\x9d Intermed, 197 USPQ at 504. The TTAB stated that \xe2\x80\x9c[t]he statute requires not only the\ndisplay of the mark in the sale or advertising of services but also the rendition of those services in\norder to constitute use of the service mark in commerce.\xe2\x80\x9d Id. At 507\xe2\x80\x9308. The TTAB further explained\nthat adopting a mark accompanied by mere \xe2\x80\x9cpreparations to begin its use\xe2\x80\x9d is insufficient for service\nmark registration, and that in order for the use requirement to be met, there must be \xe2\x80\x9can open and\nnotorious public offering of the services to those for whom the services are intended.\xe2\x80\x9d Id. at 507.\n[18] In 1983, the TTAB again rejected a service mark application because it failed to meet the use\nrequirement. Cedar Point, 220 USPQ at 533. In Cedar Point, the Cedar Point amusement park, which\nhad been in business for decades, was preparing to open a new water park addition in mid-May of\n1980. Id. at 535. One preparatory step taken by Cedar Point before opening day was the filing of a\nservice mark application to register the mark \xe2\x80\x9cOCEANA\xe2\x80\x9d for its new water park service. Id. Cedar Point\nalso distributed nearly 700,000 water park advertisement brochures containing the OCEANA mark\nduring the months preceding the grand opening. Id.\n[19] The TTAB emphasized the fact that Cedar Point filed its service mark application with the\nUSPTO before it opened the water park\xe2\x80\x99s doors and offered those services to the public. Id. at 535\xe2\x80\x9336.\nThe TTAB then explained that the use of a mark in connection with the advertising of services intended\nto be \xe2\x80\x9cavailable at some time in the future, but not yet available at the time of filing\xe2\x80\x9d does not qualify\n245\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe mark for registration. Id. at 535. Therefore, Cedar Point\xe2\x80\x99s water park advertising campaign, which\nwas ongoing at the time the application was filed, was insufficient on its own to support registration.\nId. As a result, the TTAB held that the \xe2\x80\x9capplicant\xe2\x80\x99s mark \xe2\x80\x98OCEANA\xe2\x80\x99 was not in \xe2\x80\x98use in commerce\xe2\x80\x99 . . . at\nthe time of the filing of [the] application\xe2\x80\x9d and that the application was thus void ab initio. Id. at 537.\n[20] Interestingly, Cedar Point filed for its service mark roughly one month before the scheduled\nopening of the new water park. Id. at 535. With the application date being so close to the opening date,\nit is indisputable that Cedar Point had taken numerous steps toward constructing the water park by\nthe time the application was filed. Nevertheless, the TTAB found none of these preparatory steps\nsufficient to satisfy the use in commerce requirement.\n....\n[21] We find the reasoning of these cases persuasive. The language of the statute, by requiring\nthat the mark be \xe2\x80\x9cused or displayed in the sale or advertising of services, and the services are rendered\nin commerce,\xe2\x80\x9d makes plain that advertisement and actual use of the mark in commerce are required;\nmere preparations to use that mark sometime in the future will not do. Thus, we hold that an\napplicant\xe2\x80\x99s preparations to use a mark in commerce are insufficient to constitute use in commerce.\nRather, the mark must be actually used in conjunction with the services described in the application\nfor the mark.\nF. Analysis\n....\n[22] But [Aycock\xe2\x80\x99s] activities, even taken together, do not constitute a service that falls within the\nscope of our definition of the recitation of services. As mentioned earlier, it is our view that the service\ndescribed in Mr. Aycock\xe2\x80\x99s service mark application covers only the arranging of flights between an air\ntaxi operator and a passenger, and not preparatory efforts to arrange a network of air taxi operators.\nThe activities described above, however, were merely preparatory steps that Mr. Aycock took toward\nhis goal of one day, as he described, operating a \xe2\x80\x9ccommunication service between persons desiring to\ncharter aircraft\xe2\x80\x9d that \xe2\x80\x9cput[ ] individuals desiring air transportation in contact with people rendering\nthat service.\xe2\x80\x9d J.A. 736, 749.\n[23] In order for Mr. Aycock to satisfy the use requirement, more was required. Mr. Aycock had to\ndevelop his company to the point where he made an open and notorious public offering of his\nAIRFLITE service to intended customers. See Intermed, 197 USPQ at 507. However, at no point in time\ndid Mr. Aycock give a potential customer the chance to use his AIRFLITE service. He never arranged for\na single flight between a customer and an air taxi operator. This is because Mr. Aycock, as stated in his\ndeposition, believed he needed at least 300 air taxi operators under contract before his service could\nbecome operational. Reasonably, because he never had more than twelve air taxi operators under\ncontract at any one time, Mr. Aycock chose not to open his doors to the public.\n{The court affirmed the TTAB\xe2\x80\x99s cancellation of Aycock\xe2\x80\x99s mark. Judge Newman dissented on the\nground that, notwithstanding the description of services listed in the registration that was finally\nagreed to by Aycock, \xe2\x80\x9cit is inappropriate now to construe the registration so as to exclude the actual\nuse of the mark as was explained in the examination, shown in the specimens, and fully explored in the\npublic record of the prosecution.\xe2\x80\x9d Aycock Eng\xe2\x80\x99g, 560 F.3d at 1365 (Newman, J., dissenting).}\n______________________________________________________________________________\n\n246\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nCouture v. Playdom, Inc.\n778 F.3d 1379 (Fed. Cir. 2015)\nDYK, Circuit Judge:\n[1] David Couture (\xe2\x80\x9cappellant\xe2\x80\x9d) appeals from a decision of the Trademark Trial and Appeal Board\n(the \xe2\x80\x9cBoard\xe2\x80\x9d) granting a petition by Playdom, Inc. (\xe2\x80\x9cappellee\xe2\x80\x9d) to cancel appellant\xe2\x80\x99s PLAYDOM service\nmark. We affirm.\nBACKGROUND\n[2] On May 30, 2008, appellant filed an application to register the service mark PLAYDOM\npursuant to Lanham Act \xc2\xa7 1(a), 15 U.S.C. \xc2\xa7 1051(a). As a specimen showing use of the mark, appellant\nsubmitted a \xe2\x80\x9c[s]creen capture of [a] website offering Entertainment Services in commerce.\xe2\x80\x9d Also on\nMay 30, 2008, appellant had created the website, which was hosted at www.playdominc.com. As of\nMay 30, 2008, the website included only a single page, which stated: \xe2\x80\x9c[w]elcome to PlaydomInc.com.\nWe are proud to offer writing and production services for motion picture film, television, and new\nmedia. Please feel free to contact us if you are interested:playdominc@gmail.com.\xe2\x80\x9d The webpage\nincluded the notice: \xe2\x80\x9cWebsite Under Construction.\xe2\x80\x9d No services under the mark were provided until\n2010, well after the application was filed. The PLAYDOM mark was registered by the United States\nPatent and Trademark Office (\xe2\x80\x9cPTO\xe2\x80\x9d) on January 13, 2009, as registration no. 3,560,701.\n[3] On February 9, 2009, appellee filed an application to register the identical mark\xe2\x80\x94PLAYDOM.\nAppellant\xe2\x80\x99s registered mark was cited by the examining attorney as a ground for rejecting appellee\xe2\x80\x99s\napplication under Lanham Act \xc2\xa7 2(d), 15 U.S.C. \xc2\xa7 1052(d). On June 15, 2009, appellee filed a petition to\ncancel the registration of appellant\xe2\x80\x99s mark, arguing, inter alia, that appellant\xe2\x80\x99s registration was void ab\ninitio because appellant had not used the mark in commerce as of the date of the application. On\nFebruary 3, 2014, the Board granted the cancellation petition, stating that appellant \xe2\x80\x9chad not rendered\nhis services as of the filing date of his application\xe2\x80\x9d because he had \xe2\x80\x9cmerely posted a website advertising\nhis readiness, willingness and ability to render said services,\xe2\x80\x9d and the registration was therefore void\nab initio.\nDISCUSSION\n....\nI\n....\n[4] We have not previously had occasion to directly address whether the offering of a service,\nwithout the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act\n\xc2\xa7 45, 15 U.S.C. \xc2\xa7 1127. In Aycock, we stated that, \xe2\x80\x9c[a]t the very least, in order for an applicant to meet\nthe use requirement, there must be an open and notorious public offering of the services to those for\nwhom the services are intended.\xe2\x80\x9d 560 F.3d at 1358 (internal quotation marks and citation omitted).\nThe applicant in Aycock had not made such an \xe2\x80\x9copen and notorious public offering of his . . . service to\nintended customers,\xe2\x80\x9d and the registration was therefore void ab initio. Id. at 1361\xe2\x80\x9362 (citation\nomitted). But we did not suggest in Aycock that an open and notorious public offering alone is\nsufficient to establish use in commerce. And appellant does not point to any decision by the Board\nwhich found mere offering of a service to be sufficient.\n[5] On its face, the statute is clear that a mark for services is used in commerce only when both [1]\n\xe2\x80\x9cit is used or displayed in the sale or advertising of services and [2] the services are rendered . . . .\xe2\x80\x9d 15\nU.S.C. \xc2\xa7 1127 (emphasis added). This statutory language reflects the nature of trademark rights:\nThere is no such thing as property in a trademark except as a right appurtenant to an\nestablished business or trade in connection with which the mark is employed . . . . [T]he\nright to a particular mark grows out of its use, not its mere adoption . . . .\n247\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nUnited Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 63 L.Ed. 141 (1918).\n[6] Other circuits have interpreted Lanham Act \xc2\xa7 45 as requiring actual provision of services. For\nexample, in International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco,\n329 F.3d 359, 361\xe2\x80\x9366 (4th Cir. 2003), the Fourth Circuit held that, absent evidence of actual bookings\nmade by a New York office for the Monte Carlo casino in Monaco, the activities of the New York office,\nincluding trade shows, advertising campaigns, partnering with charities, mail and telephone\nmarketing, and soliciting media coverage, were insufficient to establish use in commerce of the \xe2\x80\x9cCasino\nde Monte Carlo\xe2\x80\x9d service mark. However, apart from the activities of the New York office, evidence that\nUnited States citizens had gone to the casino in Monaco established trade with a foreign nation and\nthus use in commerce. Id. at 365\xe2\x80\x9366; see Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754,\n759\xe2\x80\x9363 (8th Cir. 2010) (analogizing to service marks and holding no use in commerce where alleged\ninfringer issued press release, made announcement, gave presentations, and constructed website with\n\xe2\x80\x9cunder construction\xe2\x80\x9d notice where there was no evidence of any sale or transport of goods bearing the\nmark at issue); Buti v. Impressa Perosa, S.R.L., 139 F.3d 98, 100\xe2\x80\x9303 (2d Cir. 1998) (promotion of Italian\ncafe in the United States, including distributing promotional materials offering free meals, did not\nconstitute use in commerce where restaurant services were only provided in Italy and not in the\nUnited States and where it was conceded that \xe2\x80\x9cthe food and drink services . . . form[ed] no part of the\ntrade between Italy and the United States\xe2\x80\x9d).2\n....\n[7] Here, there is no evidence in the record showing that appellant rendered services to any\ncustomer before 2010, and the cancellation of appellant\xe2\x80\x99s registration was appropriate.\nII\n[8] Appellant also argues that the Board erred in failing to allow him to amend the basis of the\napplication to Lanham Act \xc2\xa7 1(b), which provides for requesting registration where \xe2\x80\x9c[a] person . . . has\na bona fide intention, under circumstances showing the good faith of such person, to use a trademark\nin commerce . . . .\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1051(b)(1).\n[9] 37 C.F.R. \xc2\xa7 2.35(b) provides procedures for substitution of a basis in an application either\nbefore or after publication. 37 C.F.R. \xc2\xa7 2.35(b)(1)-(2). But that provision contemplates substitution\nduring the pendency of an application, not after registration. See TMEP \xc2\xa7 806.03(j) (Jan.2015) (\xe2\x80\x9cAny\npetition to change the basis must be filed before issuance of the registration.\xe2\x80\x9d). Therefore, the Board\ndid not err in not granting appellant\xe2\x80\x99s request to amend the basis of the application.\nAFFIRMED\n2.\n\nUse in Commerce as a Prerequisite for Unregistered \xe2\x80\x9cCommon Law\xe2\x80\x9d Priority\n\nPlanetary Motion, Inc. v. Techsplosion, Inc.\n261 F.3d 1188 (11th Cir. 2001)\nRESTANI, Judge:\n[1] Planetary Motion, Inc. (\xe2\x80\x9cPlanetary Motion\xe2\x80\x9d or \xe2\x80\x9cAppellee\xe2\x80\x9d) sued Techsplosion, Inc. and Michael\nGay a/k/a Michael Carson (respectively \xe2\x80\x9cTechsplosion\xe2\x80\x9d and \xe2\x80\x9cCarson\xe2\x80\x9d; collectively \xe2\x80\x9cAppellants\xe2\x80\x9d) for\ninfringement and dilution of an unregistered trademark under Section 43(a) and (c) of the Federal\nTrademark Act, 15 U.S.C. \xc2\xa7 1051 et seq. (1994) (\xe2\x80\x9cLanham Act\xe2\x80\x9d), and for violation of Florida\xe2\x80\x99s unfair\ncompetition law. Fla. Stat. Ann. \xc2\xa7 495.151 (West 2000). Finding that Planetary Motion had established\nAlthough these other circuit cases involve infringement, they address the same language in\nLanham Act \xc2\xa7 45.\n2\n\n248\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\npriority of use and a likelihood of confusion, the United States District Court for the Southern District of\nFlorida entered summary judgment in favor of Planetary Motion. We affirm the judgment . . . .\nFacts\nI. Development and Distribution of the \xe2\x80\x9cCoolmail\xe2\x80\x9d Software\n[2] In late 1994, Byron Darrah (\xe2\x80\x9cDarrah\xe2\x80\x9d) developed a UNIX-based program (the \xe2\x80\x9cSoftware\xe2\x80\x9d) that\nprovides e-mail users with notice of new e-mail and serves as a gateway to the users\xe2\x80\x99 e-mail\napplication. On December 31, 1994, Darrah distributed the Software over the Internet by posting it on\na UNIX user site called \xe2\x80\x9cSunsite,\xe2\x80\x9d from which it could be downloaded for free. Darrah had named the\nSoftware \xe2\x80\x9cCoolmail\xe2\x80\x9d and this designation appeared on the announcement sent to the end-users on\nSunsite as well as on the Software user-manual, both of which accompanied the release.\n[3] The Software was distributed without charge to users pursuant to a GNU General Public\nLicense that also accompanied the release. A GNU General Public License allows users to copy,\ndistribute and/or modify the Software under certain restrictions, e.g., users modifying licensed files\nmust carry \xe2\x80\x9cprominent notices\xe2\x80\x9d stating that the user changed the files and the date of any change. After\nthe release of the Software, Darrah received correspondence from users referencing the \xe2\x80\x9cCoolmail\xe2\x80\x9d\nmark and in some cases suggesting improvements. In 1995, Darrah released two subsequent versions\nof the Software under the same mark and also pursuant to the GNU General Public License.\n[4] In early 1995, a German company named S.u.S.E. GmbH sought permission from Darrah to\ninclude the Software in a CD-ROM package sold as a compilation of Unix-based programs. Darrah\nconsented and, pursuant to the GNU licensing agreement, S.u.S.E. distributed the Software in its\ncompilation product and in subsequent versions thereof. S.u.S.E. sold and continues to sell the software\ncompilation in stores in the United States and abroad, as well as over the Internet.\nII. Launch of Techsplosion\xe2\x80\x99s \xe2\x80\x9cCoolMail\xe2\x80\x9d E-mail Service\n[5] In 1998, Appellant Carson formed Techsplosion, for the purpose of operating a business based\non an e-mail service that he had developed. On April 16, 1998, Techsplosion began offering the e-mail\nservice on the Internet under the mark \xe2\x80\x9cCoolMail.\xe2\x80\x9d Two days later, Techsplosion activated the domain\nname \xe2\x80\x9ccoolmail.to\xe2\x80\x9d. Techsplosion delivered an e-mail solicitation under the \xe2\x80\x9cCoolMail\xe2\x80\x9d mark to\napproximately 11,000 members of the Paramount Banner Network, an Internet advertising network,\nalso created and operated by Carson. Techsplosion charged no fee to subscribe to the service and\ngenerated revenues through the sale of banner advertisements on its web site.\nIII. Planetary Motion\xe2\x80\x99s E-mail Service & Application for Trademark Registration\n[6] Appellee Planetary Motion is a computer software and telecommunications company that\ndeveloped and owns an electronic mail service called \xe2\x80\x9cCoolmail.\xe2\x80\x9d As part of its service, Planetary\nMotion enables a person to check e-mail via telephone without logging onto a computer. On April 24,\n1998, Planetary Motion filed three intent-to-use applications to register the mark \xe2\x80\x9cCoolmail\xe2\x80\x9d with the\nUnited States Patent and Trademark Office. Though Planetary Motion was aware that Darrah\xe2\x80\x99s\nSoftware also bore the mark \xe2\x80\x9cCoolmail,\xe2\x80\x9d it represented in its applications that it was not aware of any\nmark upon which its proposed registered mark would infringe. Planetary Motion launched its Coolmail\ne-mail service to subscribers on June 8, 1998.\nIV. Planetary Motion\xe2\x80\x99s Complaint and Subsequent Acquisition of Darrah\xe2\x80\x99s Rights\n[7] On April 22, 1999, Planetary Motion filed a complaint against Techsplosion. In the complaint,\nPlanetary Motion alleged infringement of the alleged mark \xe2\x80\x9cCoolmail\xe2\x80\x9d for use in connection with e-mail\nservices. Planetary alleged federal trademark infringement and unfair competition under Section 43(a)\nof the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a), as well as injury to business reputation and dilution under\nFlorida Statute \xc2\xa7 495.151.\n\n249\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[8] On June 10, 1999, Techsplosion filed an Answer, Affirmative Defenses, and Counterclaims. The\ncounterclaims alleged infringement of the mark \xe2\x80\x9cCoolmail\xe2\x80\x9d for use in connection with e-mail services.\nTechsplosion alleged unfair competition, false designation, description, and representation under the\nLanham Act, common trademark infringement, common law unfair competition, and injury to business\nreputation and dilution.\n[9] In July of 1999, Planetary Motion purchased from Darrah all rights, title, and interest to the\nSoftware including all copyrights, trademarks, patents and other intellectual property rights.1 On\nAugust 31, 1999, Planetary filed an Amended Verified Complaint, adding a claim for dilution under\nSection 43(c) of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(c), and alleging violation of trademark rights\nassigned from Darrah.\nV. Disposition of Planetary Motion\xe2\x80\x99s Complaint\n[10] On January 31, 2000, the district court entered an Order granting Planetary Motion\xe2\x80\x99s motion\nfor summary judgment and denying Carson\xe2\x80\x99s and Techsplosion\xe2\x80\x99s motion for summary judgment. The\ndistrict court based the Order on two findings: (1) that the alleged mark was affixed to Darrah\xe2\x80\x99s\nsoftware, and that Darrah\xe2\x80\x99s distribution of the software over the Internet constituted a \xe2\x80\x9ctransport in\ncommerce,\xe2\x80\x9d resulting in the creation of trademark rights and priority, and (2) there was a likelihood of\nconfusion because the marks \xe2\x80\x9care essentially the same.\xe2\x80\x9d The district court did not reach the issue of\nwhether Techsplosion\xe2\x80\x99s use of \xe2\x80\x9cCoolMail\xe2\x80\x9d in connection with its e-mail service diluted Planetary\nMotion\xe2\x80\x99s mark.\n[11] On the same date, the district court entered final judgment granting Planetary Motion\npermanent injunctive relief. See 15 U.S.C. \xc2\xa7 1116. The order also awarded Planetary Motion profits and\ndamages, as well as attorney fees and costs, pursuant to section 35 of the Lanham Act, 15 U.S.C. \xc2\xa7 1117.\n{Techsplosion appealed.}\nDiscussion\n....\nI. Prior Use in Commerce\n[12] Under common law, trademark ownership rights are \xe2\x80\x9cappropriated only through actual prior\nuse in commerce.\xe2\x80\x9d Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1022 (11th Cir. 1989)\n(citation omitted). Under the Lanham Act,5 the term \xe2\x80\x9cuse in commerce\xe2\x80\x9d is defined in . . . 15 U.S.C.\n\xc2\xa7 1127.6 The district court found that because the statute is written in the disjunctive (i.e., \xe2\x80\x9csale or\n1 The assignee of a trade name or service mark \xe2\x80\x9csteps into the shoes of the assignor.\xe2\x80\x9d Premier\nDental Prods. Co. v. Darby Dental Supply Co., 794 F.2d 850, 853 (3d Cir.), cert. denied, 479 U.S. 950\n(1986). Appellants do not contest the validity of the assignment from Darrah, nor do they dispute that\nin purchasing rights to Darrah\xe2\x80\x99s software, Planetary Motion succeeded to all rights possessed by\nDarrah.\n\n\xe2\x80\x9cIn the absence of registration, rights to a mark traditionally have depended on the very same\nelements that are now included in the statutory definition: the bona fide use of a mark in commerce\nthat was not made merely to reserve a mark for later exploitation.\xe2\x80\x9d Allard Enters., Inc. v. Advanced\nProgramming Res., Inc., 146 F.3d 350, 357 (6th Cir. 1998). Common law and statutory trademark\ninfringements are merely specific aspects of unfair competition. New West Corp. v. NYM Co. of Cal., Inc.,\n595 F.2d 1194, 1201 (9th Cir. 1979) (citing, inter alia, Dresser Indus., Inc. v. Heraeus Engelhard Vacuum,\nInc., 395 F.2d 457, 461 (3d Cir.), cert. denied, 393 U.S. 934, 89 S.Ct. 293, 21 L.Ed.2d 270 (1968)).\n5\n\nAppellants appear to have conceded that if Darrah sent out original programs and related\nmanuals, this would satisfy the affixation requirement:\n6\n\n250\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ntransport\xe2\x80\x9d), Darrah\xe2\x80\x99s wide distribution of the Coolmail software over the Internet, even absent any\nsales thereof, was sufficient to establish ownership rights in the \xe2\x80\x9cCoolMail\xe2\x80\x9d mark. Appellants contend\nthat \xe2\x80\x9ctransport in commerce\xe2\x80\x9d alone\xe2\x80\x94here, Darrah\xe2\x80\x99s free distribution of software over the Internet\n\xe2\x80\x9cwith no existing business, no intent to form a business, and no sale under the mark\xe2\x80\x9d\xe2\x80\x94is insufficient to\ncreate trademark rights. Appellants\xe2\x80\x99 Brief at 13. Appellants\xe2\x80\x99 argument lacks merit.\n[13] The parties do not make clear the two different contexts in which the phrase \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d is used. The term \xe2\x80\x9cuse in commerce\xe2\x80\x9d as used in the Lanham Act \xe2\x80\x9cdenotes Congress\xe2\x80\x99s\nauthority under the Commerce Clause rather than an intent to limit the [Lanham] Act\xe2\x80\x99s application to\nprofit making activity.\xe2\x80\x9d United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 92-93\n(2d Cir. 1997) (citation omitted), cert. denied, 523 U.S. 1076 (1998); U.S. Const., Art. I, \xc2\xa7 8, cl. 3. Because\nCongress\xe2\x80\x99s authority under the Commerce Clause extends to activity that \xe2\x80\x9csubstantially affects\xe2\x80\x9d\ninterstate commerce, United States v. Lopez, 514 U.S. 549, 559 (1995), the Lanham Act\xe2\x80\x99s definition of\n\xe2\x80\x9ccommerce\xe2\x80\x9d is concomitantly broad in scope: \xe2\x80\x9call commerce which may lawfully be regulated by\nCongress.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127. See also Steele v. Bulova Watch Co., 344 U.S. 280, 283-84 (1952); Larry\nHarmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 666 (Fed.Cir.) (allowing registration for an\nintrastate provider of restaurant services with an undefined interstate clientele), cert. denied, 502 U.S.\n823 (1991). The distribution of the Software for end-users over the Internet satisfies the \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d jurisdictional predicate. See, e.g., Planned Parenthood Fed\xe2\x80\x99n of Am., Inc. v. Bucci, 42\nU.S.P.Q.2d 1430, 1434 (S.D.N.Y.1997) (\xe2\x80\x9cThe nature of the Internet indicates that establishing a typical\nhome page on the Internet, for access to all users, would satisfy the Lanham Act\xe2\x80\x99s \xe2\x80\x98in commerce\xe2\x80\x99\nrequirement.\xe2\x80\x9d), aff\xe2\x80\x99d, 152 F.3d 920 (2d Cir.), cert. denied, 525 U.S. 834 (1998).\n[14] Nevertheless, the use of a mark in commerce also must be sufficient to establish ownership\nrights for a plaintiff to recover against subsequent users under section 43(a). See New England\nDuplicating Co. v. Mendes, 190 F.2d 415, 417-18 (1st Cir. 1951) (after finding \xe2\x80\x9cuse in commerce\xe2\x80\x9d\njurisdiction predicate satisfied, court noted that \xe2\x80\x9c[t]he question remains whether the plaintiff has\nestablished that he was the \xe2\x80\x98owner\xe2\x80\x99 of the mark, for under [15 U.S.C. \xc2\xa7 1051] only the \xe2\x80\x98owner\xe2\x80\x99 of a mark\nis entitled to have it registered.\xe2\x80\x9d). The court in Mendes set forth a two part test to determine whether a\nparty has established \xe2\x80\x9cprior use\xe2\x80\x9d of a mark sufficient to establish ownership:\n[E]vidence showing, first, adoption,7 and, second, use in a way sufficiently public to\nidentify or distinguish the marked goods in an appropriate segment of the public mind as\n\nMR. GIGLIOTTI [counsel for Techsplosion]: [The mark] has to be on the product or on the\nassociated documentation. It is on neither.\nTHE COURT: It is not on the associated documentation[?] How about the original\nprograms Darrah sent out and manuals that went with it, and all that material, wasn\xe2\x80\x99t\nthat enough for affixation?\nMR. GIGLIOTTI: Yes, Your Honor, that is affixation; however, he did not meet the sale\nrequirement.\nR3-85-19 to 20.\nIn any case, the affixation requirement is met because the Software was distributed under a\nfilename that is also the claimed mark, was promoted under the same mark, was accompanied by a\nuser manual bearing the mark, and was sold in a compilation under the mark.\nIt is uncontested that Darrah adopted the mark \xe2\x80\x9cCoolmail\xe2\x80\x9d before Appellants\xe2\x80\x99 use of the mark in\nconnection with their e-mail service.\n7\n\n251\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthose of the adopter of the mark, is competent to establish ownership, even without\nevidence of actual sales.8\nId. at 418. See also New West, 595 F.2d at 1200.9\n[15] Courts generally must inquire into the activities surrounding the prior use of the mark to\ndetermine whether such an association or notice is present. See, e.g., Johnny Blastoff, Inc. v. L.A. Rams\nFootball Co., 188 F.3d 427, 433 (7th Cir. 1999) (\xe2\x80\x9cThe determination of whether a party has established\nprotectable rights in a trademark is made on a case by case basis, considering the totality of the\ncircumstances.\xe2\x80\x9d), cert. denied, 528 U.S. 1188, (2000). Under the \xe2\x80\x9ctotality of circumstances\xe2\x80\x9d analysis, a\nparty may establish \xe2\x80\x9cuse in commerce\xe2\x80\x9d even in the absence of sales. \xe2\x80\x9c[A]lthough evidence of sales is\nhighly persuasive, the question of use adequate to establish appropriation remains one to be decided\non the facts of each case . . . .\xe2\x80\x9d New West, 595 F.2d at 1200 (quoting Mendes, 190 F.2d at 418). The court\nin New West recognized that \xe2\x80\x9cmere advertising by itself may not establish priority of use,\xe2\x80\x9d but found\nthat promotional mailings coupled with advertiser and distributor solicitations met the Mendes \xe2\x80\x9cpublic\nidentification\xe2\x80\x9d ownership requirement. Id. at 1200. Thus, contrary to Appellants\xe2\x80\x99 assertions, the\nexistence of sales or lack thereof does not by itself determine whether a user of a mark has established\nownership rights therein.10 Compare Marvel Comics Ltd. v. Defiant, 837 F.Supp. 546, 549 (S.D.N.Y.1993)\n(finding announcement of \xe2\x80\x9cPlasmer\xe2\x80\x9d title to 13 million comic book readers and promotion at annual\ntrade convention sufficient to establish trademark ownership rights, notwithstanding lack of any sales)\nwith WarnerVision Entm\xe2\x80\x99t Inc. v. Empire of Carolina Inc., 915 F.Supp. 639, 645-46 (S.D.N.Y.) (finding toy\nmanufacturer\xe2\x80\x99s promotional efforts insufficient to establish priority of use where only a few\npresentations were made to industry buyers, even though one resulted in a sale to a major toy\nretailer), aff\xe2\x80\x99d in part, vacated in part, 101 F.3d 259 (2d Cir. 1996).11\n\n8 This ownership test is not for the purpose of establishing the \xe2\x80\x9cuse in commerce\xe2\x80\x9d jurisdictional\npredicate of the Lanham Act. See, e.g., Univ. of Fla. v. KPB, Inc., 89 F.3d 773, 776 n. 4 (11th Cir. 1996). See\nsupra discussion in text.\n\nThis ownership requirement parallels the statutory definition of \xe2\x80\x9ctrademark\xe2\x80\x9d: \xe2\x80\x9cany word, name,\nsymbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or\nher goods . . . from those manufactured or sold by others . . . .\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127. The Seventh Circuit has\nheld that a higher quantum of use may be necessary to establish ownership rights under common law\nthan under the statute because the notice function of registration is lacking. See Zazu Designs v. L\xe2\x80\x99Oreal,\nS.A., 979 F.2d 499, 503-04 (7th Cir. 1992). In addition, the continuity of a user\xe2\x80\x99s commercial activities\nin connection with the mark is also relevant to determining whether use is sufficient to establish\ncommon law ownership. Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1054-55 (6th Cir. 1999)\n(\xe2\x80\x9cA party establishes a common law right to a trademark only by demonstrating that its use of the\nmark was \xe2\x80\x98deliberate and continuous, not sporadic, casual or transitory.\xe2\x80\x99\xe2\x80\x9d).\n9\n\nAppellants cite Future Domain Corp. v. Trantor Sys. Ltd., 27 U.S.P.Q.2d 1289, 1293, 1993 WL\n270522 (N.D.Cal.1993) for the proposition that there must be a sale in order to satisfy the \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d requirement. Future Domain, however, turned not on the existence of sales but whether the\nextent of the purported mark owner\xe2\x80\x99s activities created a public association between the mark and the\nproduct. There, the court determined that a computer software manufacturer\xe2\x80\x99s promotion of a mark at\na trade show\xe2\x80\x94where at most 7,000 persons actually received or requested information about the\nmark and where no orders were taken\xe2\x80\x94was not sufficient to create such an association. Id. at 129395.\n10\n\n11 Courts applying the \xe2\x80\x9ctotality of circumstances\xe2\x80\x9d approach routinely have found evidence of a few\nsales of goods to which the mark had been affixed insufficient to establish trademark ownership. For\n\n252\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[16] Similarly, not every transport of a good is sufficient to establish ownership rights in a mark.\nTo warrant protection, use of a mark \xe2\x80\x9cneed not have gained wide public recognition,\xe2\x80\x9d but \xe2\x80\x9c[s]ecret,\nundisclosed internal shipments are generally inadequate.\xe2\x80\x9d Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d\n1260, 1265 (5th Cir. 1975).12 In general, uses that are de minimis may not establish trademark\nownership rights. See, e.g., Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d 1768, 1772-73, 1994 WL\n484936 (Trademark Tr. & App. Bd.1994) (finding no bona fide use in ordinary course of trade where\nmark was affixed to a game consisting of three pieces of paper and distributed for the purpose of\npromoting musical group).\n[17] We find that, under these principles, Darrah\xe2\x80\x99s activities under the \xe2\x80\x9cCoolmail\xe2\x80\x9d mark constitute\na \xe2\x80\x9cuse in commerce\xe2\x80\x9d sufficiently public to create ownership rights in the mark. First, the distribution\nwas widespread, and there is evidence that members of the targeted public actually associated the\nmark Coolmail with the Software to which it was affixed. Darrah made the software available not\nmerely to a discrete or select group (such as friends and acquaintances, or at a trade show with limited\nattendance), but to numerous end-users via the Internet. The Software was posted under a filename\nbearing the \xe2\x80\x9cCoolmail\xe2\x80\x9d mark on a site accessible to anyone who had access to the Internet. End-users\ncommunicated with Darrah regarding the Software by referencing the \xe2\x80\x9cCoolmail\xe2\x80\x9d mark in their e-mails.\nAppellants argue that only technically-skilled UNIX-users made use of the Software, but there is no\nevidence that they were so few in number to warrant a finding of de minimis use.\n[18] Third,* the mark served to identify the source of the Software. The \xe2\x80\x9cCoolmail\xe2\x80\x9d mark appeared\nin the subject field and in the text of the announcement accompanying each release of the Software,\nthereby distinguishing the Software from other programs that might perform similar functions\navailable on the Internet or sold in software compilations.13 The announcements also apparently\nindicated that Darrah was the \xe2\x80\x9cAuthor/Maintainer of Coolmail\xe2\x80\x9d and included his e-mail address. The\nuser manual also indicated that the Software was named \xe2\x80\x9cCoolmail.\xe2\x80\x9d14 The German company S.u.S.E.\nexample, in Zazu Designs, 979 F.2d at 503-04, the plaintiff hair salon had sold a few bottles of shampoo\nbearing the mark \xe2\x80\x9cZazu\xe2\x80\x9d both over the counter and mailed over state lines. The court found that such\nlimited sales \xe2\x80\x9cneither link the Zazu mark with [the plaintiff\xe2\x80\x99s] product in the minds of consumers nor\nput other producers on notice.\xe2\x80\x9d Id. at 503.\nIn Bonner v. City of Prichard, 661 F.2d 1206 (11th Cir. 1981) (en banc), the Eleventh Circuit\nadopted as binding precedent all decisions handed down by the former Fifth Circuit prior to October 1,\n1981.\n12\n\n*\n\n{Note: The court apparently miscounted. There is no \xe2\x80\x9csecond\xe2\x80\x9d in the unedited opinion.}\n\nDarrah testified that \xe2\x80\x9c[m]ost of the source files . . . have [the mark] in them. Also there\xe2\x80\x99s a\ncopyright notice included with the software that has the name Coolmail. And the name of the\nexecutable file itself is Coolmail.\xe2\x80\x9d R2-47-Exh. 3 at 67.\n13\n\n14 Darrah: The Coolmail name always comes with the documentation that comes with the\nsoftware.\n\n***\nQ: What documentation are you talking about?\nA: There\xe2\x80\x99s a user manual that comes with it.\n***\nQ: Does it say \xe2\x80\x9cCoolmail\xe2\x80\x9d on page 1?\nA. Yes.\nQ: Where does it say \xe2\x80\x9cCoolmail\xe2\x80\x9d on page 1?\n253\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwas able to locate Darrah in order to request permission to use his Software in its product under the\nmark \xe2\x80\x9cCoolmail.\xe2\x80\x9d Appellants do not assert that S.u.S.E. was unaware that the Software was called\n\xe2\x80\x9cCoolmail\xe2\x80\x9d when it contacted Darrah.\n[19] Fourth, other potential users of the mark had notice that the mark was in use in connection\nwith Darrah\xe2\x80\x99s Software. In investigating whether the mark Coolmail existed before submitting its\ntrademark registration application for its e-mail service, Planetary Motion was able to discover that\nDarrah was using the mark to designate his Software product.\n[20] Fifth, the Software was incorporated into several versions of a product that was in fact sold\nworldwide and specifically attributed ownership of the Software to Darrah under the \xe2\x80\x9cCoolmail\xe2\x80\x9d mark.\nAny individual using the S.u.S.E. product, or competitor of S.u.S.E., that wanted to know the source of\nthe program that performed the e-mail notification function, could do so by referring to the user\nmanual accompanying the product. There is no support for the argument that for a trademark in\nsoftware to be valid, the mark must appear on the box containing the product incorporating it, that the\nmark must be displayed on the screen when the program is running, or that the software bearing the\nmark be a selling point for the product into which it is incorporated. There is no requirement that the\npublic come to associate a mark with a product in any particular way or that the public be passive\nviewers of a mark for a sufficient public association to arise.\n[21] Sixth, software is commonly distributed without charge under a GNU General Public License.\nThe sufficiency of use should be determined according to the customary practices of a particular\nindustry. See S. Rep. 100-515 at 44 (1988) (\xe2\x80\x9cThe committee intends that the revised definition of \xe2\x80\x98use\nin commerce\xe2\x80\x99 [see note 13, supra ] be interpreted to mean commercial use which is typical in a\nparticular industry.\xe2\x80\x9d) (emphasis added). That the Software had been distributed pursuant to a GNU\nGeneral Public License does not defeat trademark ownership, nor does this in any way compel a\nfinding that Darrah abandoned his rights in trademark. Appellants misconstrue the function of a GNU\nGeneral Public License. Software distributed pursuant to such a license is not necessarily ceded to the\npublic domain and the licensor purports to retain ownership rights, which may or may not include\nrights to a mark.16\n....\n[22] Appellants also rely on DeCosta v. Columbia Broad. Sys., Inc., 520 F.2d 499, 513 (1st Cir.\n1975), cert. denied, 423 U.S. 1073 (1976), to argue that Darrah is an eleemosynary individual and\ntherefore unworthy of protection under unfair competition laws. The DeCosta court did not hold that\nthe that the absence of a profit-oriented enterprise renders one an eleemosynary individual, nor did it\nhold that such individuals categorically are denied protection. Rather, the DeCosta court expressed\n\xe2\x80\x9cmisgivings\xe2\x80\x9d of extending common law unfair competition protection, clearly available to\n\nA: At the top.\n. . . and on the header of every page.\nQ: What does it say, exactly?\nA: I\xe2\x80\x99m not sure if it says this verbatim, it\xe2\x80\x99s \xe2\x80\x9cCoolmail,\xe2\x80\x9d space, then the version number.\nR2-47-Exh. 3 at 68, 72 to 73.\n16 Because a GNU General Public License requires licensees who wish to copy, distribute, or\nmodify the software to include a copyright notice, the license itself is evidence of Darrah\xe2\x80\x99s efforts to\ncontrol the use of the \xe2\x80\x9cCoolMail\xe2\x80\x9d mark in connection with the Software.\n\n254\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\neleemosynary organizations, to eleemosynary individuals.18 Id. The court\xe2\x80\x99s reluctance to extend\nprotection to eleemosynary individuals was based on an apparent difficulty in establishing a line of\ndemarcation between those eleemosynary individuals engaged in commerce and those that are not.\nBut as the sufficiency of use to establish trademark ownership is inherently fact-driven, the court need\nnot have based its decision on such a consideration. Mendes, 190 F.2d at 418. Common law unfair\ncompetition protection extends to non-profit organizations because they nonetheless engage in\ncompetition with other organizations. See Girls Clubs of Am., Inc. v. Boys Clubs of Am., Inc., 683 F.Supp. 50\n(S.D.N.Y.1988), aff\xe2\x80\x99d, 859 F.2d 148 (2d Cir.). Thus, an eleemosynary individual that uses a mark in\nconnection with a good or service may nonetheless acquire ownership rights in the mark if there is\nsufficient evidence of competitive activity.\n[23] One individual can invest time, effort and money in developing software or other\ntechnologically-based goods or services that would be of interest to a multitude of users, other\ndevelopers, and retail establishments. In fact, the program was of sufficient interest for S.u.S.E. to put\neffort into including it in its own software which was sold for profit, including the effort of obtaining\nDarrah\xe2\x80\x99s permission under the GNU General Public License.\n[24] Here, Darrah\xe2\x80\x99s activities bear elements of competition, notwithstanding his lack of an\nimmediate profit-motive. By developing and distributing software under a particular mark, and taking\nsteps to avoid ceding the Software to the public domain, Darrah made efforts to retain ownership\nrights in his Software and to ensure that his Software would be distinguishable from other developers\nwho may have distributed similar or related Software. Competitive activity need not be fueled solely by\na desire for direct monetary gain. Darrah derived value from the distribution because he was able to\nimprove his Software based on suggestions sent by end-users. Just as any other consumers, these endusers discriminate among and share information on available software. It is logical that as the Software\nimproved, more end-users used his Software, thereby increasing Darrah\xe2\x80\x99s recognition in his profession\nand the likelihood that the Software would be improved even further.\n[25] In light of the foregoing, the use of the mark in connection with the Software constitutes\nsignificant and substantial public exposure of a mark sufficient to have created an association in the\nmind of public.\n{The court went on to find a likelihood of confusion between Planetary Motion\xe2\x80\x99s and\nTechsplosion\xe2\x80\x99s marks. The court affirmed the terms of the permanent injunction but found the award\nof attorney fees to be an abuse of discretion.}\nComments and Questions\n1. \xe2\x80\x9cAnalogous Use\xe2\x80\x9d of a Trademark. As a terminological matter, trademark lawyers and courts will\nsometimes refer to pre-sales activity that may form the basis for common law priority as \xe2\x80\x9cuse\nanalogous\xe2\x80\x9d to trademark use, or \xe2\x80\x9canalogous use.\xe2\x80\x9d See, e.g., American Express Co. v. Goetz, 515 F.3d 156,\n161 (2d Cir. 2008) (\xe2\x80\x9c[T]he analogous use doctrine, where it applies, eases the technical requirements\nfor trademarks and services marks in favor of a competing claimant who asserts priority on the basis\nof earlier analogous use of the mark.\xe2\x80\x9d); id. at 161-62 (\xe2\x80\x9cAt the very least analogous use must be use that\nis open and notorious. In other words, analogous use must be of such a nature and extent that the mark\n\nIt is unlikely that the plaintiff\xe2\x80\x99s activities in De Costa\xe2\x80\x94costumed performances and distribution\nof his picture at local rodeos, parades, hospitals, etc.\xe2\x80\x94would generate a \xe2\x80\x9cpublic association\xe2\x80\x9d sufficient\nto confer him common law trademark ownership rights. The court assumed arguendo, however, that\nthe plaintiff\xe2\x80\x99s activities did warrant protection, and went on to find that the evidence did not support a\nfinding of likelihood of confusion.\n18\n\n255\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nhas become popularized in the public mind so that the relevant segment of the public identifies the\nmarked goods with the mark\xe2\x80\x99s adopter.\xe2\x80\x9d (citations and quotation marks omitted)).\n2. The \xe2\x80\x9ctotality of the circumstances\xe2\x80\x9d test. What kind and degree of pre-sales and/or sales activity\ncan satisfy the use in commerce requirement for purposes of common law priority? Most courts have\nadopted some form of a \xe2\x80\x9ctotality of the circumstances\xe2\x80\x9d test, sometimes heavily influenced by the\nequities of the case. See La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265,\n1274 n. 11 (2d Cir. 1974) (\xe2\x80\x9c[T]he balance of the equities plays an important role in deciding whether\ndefendant\xe2\x80\x99s use is sufficient to warrant trademark protection.\xe2\x80\x9d). In Chance v. Pac-Tel Teletrac Inc., 242\nF.3d 1151 (9th Cir. 2001), for example, the Ninth Circuit summarized the factors that might be relevant\nto a totality of the circumstances analysis of use in commerce sufficient to justify rights:\nAccordingly, we hold that the totality of the circumstances must be employed to\ndetermine whether a service mark has been adequately used in commerce so as to gain\nthe protection of the Lanham Act. In applying this approach, the district courts should be\nguided in their consideration of non-sales activities by factors we have discussed, such as\nthe genuineness and commercial character of the activity, the determination of whether\nthe mark was sufficiently public to identify or distinguish the marked service in an\nappropriate segment of the public mind as those of the holder of the mark, the scope of\nthe non-sales activity relative to what would be a commercially reasonable attempt to\nmarket the service, the degree of ongoing activity of the holder to conduct the business\nusing the mark, the amount of business transacted, and other similar factors which might\ndistinguish whether a service has actually been \xe2\x80\x9crendered in commerce\xe2\x80\x9d.\nId. at 1159. Applying these factors, the Ninth Circuit found that the October 1989 mailing by Allen\nChance (\xe2\x80\x9cChance\xe2\x80\x9d) of 35,000 postcards promoting his TELETRAC tracking service that led to 128\ntelephone responses but no sales was not sufficient to establish use in commerce. Meanwhile,\nPac\xe2\x80\x93Tel, in contrast, had significant activities even prior to [Chance\xe2\x80\x99s] post card mailing.\nThe record demonstrates that as early as June 1989, Pac\xe2\x80\x93Tel began using the mark on a\ncontinuous basis. As early as 1984, a Pac\xe2\x80\x93Tel predecessor company was using the mark\nas part of its business name. Pac\xe2\x80\x93Tel began a public relations campaign using the mark to\nintroduce its new service in July 1989. In September 1989, it sent out brochures to\npotential customers. In early fall 1989, it conducted interviews with major newspapers\nincluding the Wall Street Journal, Washington Post and Chicago Tribune which resulted in\na number of stories that mentioned the service mark. During this time the service was\nmarketed to potential customers who managed large vehicle fleets through a slide\npresentation using the mark. While the district court found that Pac\xe2\x80\x93Tel\xe2\x80\x99s first use was in\nApril 1990, when it began making its service available on a commercial basis for the first\ntime on the Los Angeles school buses, the totality of the record demonstrates that its first\nuse of the mark was significantly earlier and clearly predated [Chance]\xe2\x80\x99s first use\nId. at 1160.\nAnother example of the application of the totality of the circumstances test, along with a strong\ngrounding in the balance of the equities, is Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188\nF.3d 427 (7th Cir. 1999). When the Los Angeles Rams announced that they were moving to St. Louis,\nRodney Rigsby, proprietor of Johnny Blastoff, Inc., had the bright idea somehow to claim ownership of\nthe ST. LOUIS RAMS mark before the football team could. He filed a State of Wisconsin trademark\napplication on February 22, 1995, and two federal intent-to-use registration applications on March 10,\n1995. The court found that the football team\xe2\x80\x99s use in commerce preceded these dates. Here is the core\nof the court\xe2\x80\x99s analysis:\nOn January 17, 1995, Georgia Frontiere, the owner of the Rams, and St. Louis Mayor\nFreeman Bosley held a press conference at which they announced the Rams\xe2\x80\x99 intention to\n256\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nrelocate from Los Angeles to St. Louis. The press conference story received extensive\nnational and local press, including the St. Louis Dispatch\xe2\x80\x99s publication, on January 18,\n1995, of a sixteen-page pullout section of the newspaper entitled \xe2\x80\x9cSt. Louis Rams.\xe2\x80\x9d\nVendors sold unlicensed \xe2\x80\x9cSt. Louis Rams\xe2\x80\x9d merchandise in the St. Louis area in January of\n1995, and by February of 1995, more than 72,000 personal seat licenses for the St. Louis\nRams\xe2\x80\x99 home games had been received. By the time Blastoff registered the \xe2\x80\x9cSt. Louis\nRams\xe2\x80\x9d mark in Wisconsin in February of 1995, a significant portion of the public\nassociated the mark with the Rams football club. However, Blastoff asserts that the\ndefendants had not sufficiently used the mark \xe2\x80\x9cSt. Louis Rams\xe2\x80\x9d to be given priority.\nBlastoff argues that at the January 17, 1995, press conference, none of the defendants\nused the words \xe2\x80\x9cSt. Louis Rams,\xe2\x80\x9d and thus, this term was rendered an \xe2\x80\x9cunarticulated idea\nfor a team name,\xe2\x80\x9d which is not protectable. Blastoff also states that newspaper and media\ncoverage is insufficient to establish priority. Finally, Blastoff contends that the football\nclub \xe2\x80\x9coperated publicly and exclusively as [the] \xe2\x80\x98L.A. Rams\xe2\x80\x99\xe2\x80\x9d as late as February 8, 1995.\nFor the purpose of establishing public identification of a mark with a product or\nservice, the fact-finder may rely on the use of the mark in \xe2\x80\x9cadvertising brochures,\ncatalogs, newspaper ads, and articles in newspapers and trade publications,\xe2\x80\x9d T.A.B.\nSystems v. Pactel Teletrac, 77 F.3d 1372, 1375 (Fed.Cir. 1996), as well as in media outlets\nsuch as television and radio. See In re Owens\xe2\x80\x93Corning Fiberglas Corp., 774 F.2d 1116,\n1125 (Fed.Cir. 1985). In addition, courts have recognized that \xe2\x80\x9cabbreviations and\nnicknames of trademarks or names used only by the public give rise to protectable rights\nin the owners of the trade name or mark which the public modified.\xe2\x80\x9d Nat\xe2\x80\x99l Cable\nTelevision Assoc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1577 (Fed.Cir. 1991). Such\npublic use of a mark is deemed to be on behalf of the mark\xe2\x80\x99s owners. See id. Blastoff has\nfailed to demonstrate any equivalent use of the mark \xe2\x80\x9cSt. Louis Rams\xe2\x80\x9d by February of\n1995, when the defendants established, by use and public association, their priority in\nthe mark. Blastoff\xe2\x80\x99s insignificant and very limited use of the mark prior to February of\n1995, consisting of the development of the \xe2\x80\x9cTower City Rams\xe2\x80\x9d design, along with the\nproduction of a swatch of material with \xe2\x80\x9cSt. Louis Rams\xe2\x80\x9d embroidery, is insufficient to\nestablish a link between the mark and its products. Furthermore, the owner\xe2\x80\x99s use of a\ntrademark is relevant in establishing public identification of a mark with a product or\nservice. Georgia Frontiere, owner of the Rams, in announcing her intention to move the\nfranchise to St. Louis from Los Angeles, implicitly adopted the exact phrase \xe2\x80\x9cSt. Louis\nRams\xe2\x80\x9d on the date of her press conference. This Court\xe2\x80\x99s decision in Indianapolis Colts, Inc.\nv. Metropolitan Baltimore Football Club Ltd., 34 F.3d 410, 413 (7th Cir. 1994), is strong\nsupport for the proposition that the Rams organization and the NFL had a longestablished priority over the use of the \xe2\x80\x9cRams\xe2\x80\x9d name in connection with the same\nprofessional football team, regardless of urban affiliation.\nId. at 435.\n3. \xe2\x80\x9cStealing\xe2\x80\x9d someone else\xe2\x80\x99s idea for a trademark. Because use, rather than invention, is the basis\nfor trademark rights under the Lanham Act, there is no remedy under the Act for the \xe2\x80\x9ctheft\xe2\x80\x9d of an idea\nfor a trademark. In American Express Co. v. Goetz, 515 F.3d 156 (2d Cir. 2008), cert. denied, 129 S. Ct.\n176 (U.S. 2008), the declaratory defendant Stephen Goetz developed the slogan \xe2\x80\x9cMy Life. My Card.\xe2\x80\x9d for\na credit card and sought to interest various credit card providers in using it and his consulting services.\nOn July 30, 2004, Goetz mailed a proposal to American Express urging American Express to adopt the\nmark. American Express never responded. In November, 2004, however, American Express launched a\nglobal campaign based on the phrase \xe2\x80\x9cMy Life. My Card.\xe2\x80\x9d\n257\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nWhen Goetz threatened suit, American Express filed for a declaration of non-infringement.\nDocuments produced in the litigation showed that the advertising firm Ogilvy Group first proposed the\nmark to American Express on July 22, 2004, and Goetz eventually conceded that Ogilvy had developed\nand American Express had adopted the mark without any knowledge of his proposal.\nThe district court granted summary judgment to American Express and the Second Circuit\naffirmed. What drove the outcome of the litigation was not the priority of invention issue, however.\nInstead, it was the simple fact that Goetz never made a qualifying use in commerce of the mark:\n\xe2\x80\x9c[C]onstruing all the facts in Goetz\xe2\x80\x99s favor, the only reasonable conclusion that can be drawn is that My\nLife, My Card was a component of Goetz\xe2\x80\x99s business proposal to the credit card companies rather than a\nmark designating the origin of any goods or services he offered to them.\xe2\x80\x9d Id. at 160.\n4. Trademark trolls and the use in commerce requirement. The use in commerce prerequisite for\ntrademark rights has the salutary effect of limiting the ability of bad faith agents to exploit the\ntrademark registration system in the way that some \xe2\x80\x9cnon-practicing entities\xe2\x80\x9d arguably exploit the\npatent system. In Central Mfg., Inc. v. Brett, 492 F.3d 876 (9th Cir. 2007), the defendant George Brett\n(and brothers) manufactured a hybrid wood-metal bat under the trademark STEALTH. Plaintiff Central\nMfg., of which the then-notorious trademark troll Leo Stoller was president and sole shareholder, sued\nfor infringement of its own mark STEALTH, which it had registered in 1985 for \xe2\x80\x9c[s]porting goods,\nspecifically, tennis rackets, golf clubs, tennis balls, basketballs, baseballs, soccer balls, golf balls, cross\nbows, tennis racket strings and shuttle cocks.\xe2\x80\x9d When Brett challenged Stoller to produce any evidence\nof use in commerce of the mark, Stoller\xe2\x80\x99s documents failed to persuade the district court. For example:\n\xe2\x80\x9cPlaintiffs produced a table of \xe2\x80\x98Stealth Brand Baseball Sales\xe2\x80\x99 between 1996 and 2003, but could provide\nabsolutely no information to justify the lump sum \xe2\x80\x98sales\xe2\x80\x99 figures listed. There is no way for this Court to\nknow that this alleged sales sheet bears any relation to reality and is not simply something Plaintiffs\ngenerated on a home computer for the purposes of this litigation.\xe2\x80\x9d Id. at 883 (quoting Central Mfg. Co.\nv. Brett, 2006 WL 681058 (N.D.Ill. Mar 15, 2006)). The Seventh Circuit affirmed:\nStoller has repeatedly sought ways to get around trademark law\xe2\x80\x99s prohibition on the\nstockpiling of unused marks, and this case is no different. It is unfathomable that a\ncompany claiming to have engaged in thousands of dollars of sales of a product for more\nthan a decade would be unable to produce even a single purchase order or invoice as\nproof. Self-serving deposition testimony is not enough to defeat a motion for summary\njudgment. By exposing Central\xe2\x80\x99s failure to make bona fide use of the \xe2\x80\x9cStealth\xe2\x80\x9d mark for\nbaseballs, Brett Brothers met its burden to overcome the presumption afforded by the\n1985 registration, and summary judgment in its favor was the appropriate course.\nId. at 883. Brett was also awarded attorney fees.\nIn December 2010, Stoller was indicted on fraud charges related to statements made in his\nbankruptcy filings. In November 2014, he was sentenced to 20 months in a federal prison. See\nhttp://en.wikipedia.org/wiki/Leo_Stoller.\nD.\n\nThe Trademark Registration Process\n\nUse, rather than registration, is the basis of federal trademark rights in the United States (subject\nto one exception noted below). As explained previously in this Part, the Lanham Act will protect a\ntrademark owner\xe2\x80\x99s exclusive rights in any trademark it is using in commerce regardless of whether the\nmark is registered provided that the unregistered mark meets the various substantive requirements\nfor registration established by the Act. In other words, if the mark as used in commerce could be\nregistered, it will be protected even if it is not registered. Conversely, the Lanham Act will not protect a\ntrademark registrant\xe2\x80\x99s exclusive rights in its registered mark if it no longer uses its mark in commerce\nand cannot prove an intent to resume use in the near future. On this basis, it is often said that the U.S.\ntrademark system is a \xe2\x80\x9cuse-based\xe2\x80\x9d system in contrast to the \xe2\x80\x9cregistration-based\xe2\x80\x9d systems more\n258\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ncommon around the world.1 In the United States, registration merely records the preexistence of\nexternally established rights.2\nThe U.S. registration system is different in another significant respect. Unlike many foreign\nregistration systems, which review applications only for compliance with formal requirements, the\nPTO reviews applications to ensure that they meet both formal requirements (which are largely set\nforth in Lanham Act \xc2\xa7 1) and substantive requirements (largely found in Lanham Act \xc2\xa7 2). These\nsubstantive requirements include both \xe2\x80\x9cabsolute grounds\xe2\x80\x9d for refusal of registration, such as that the\nmark is deceptive, and \xe2\x80\x9crelative grounds\xe2\x80\x9d for refusal, such as that the mark is confusingly similar with a\npreviously registered mark.\nA trademark applicant at the PTO must claim at least one \xe2\x80\x9cfiling basis\xe2\x80\x9d for its application among\nthe five that are provided by the Lanham Act. These filing bases are:\n1.\n\nLanham Act \xc2\xa7 1(a): the applicant is already making actual use of the mark in commerce;\n\n2.\n\nLanham Act \xc2\xa7 1(b): the applicant has a bona fide intent to use the mark in commerce in the\nnear future;\n\n3.\n\nLanham Act \xc2\xa7 44(d): the applicant filed a foreign application to register the mark within six\nmonths prior to its application to the PTO and claims the priority date of that prior foreign\napplication;\n\n4.\n\nLanham Act \xc2\xa7 44(e): the applicant possesses a registration of the mark in the applicant\xe2\x80\x99s\ncountry of origin;\n\n5.\n\nLanham Act \xc2\xa7 66(a): the applicant requests extension of protection of an international\nregistration under the Madrid System for the international registration of trademarks.\n\nThe first four filing bases are not mutually exclusive; the \xc2\xa7 66(a) filing basis, by contrast, may not be\ncombined with other filing bases. While the \xc2\xa7\xc2\xa7 1(a), 44(d), and 44(e) filing bases have been available\nsince the effective date of the original Lanham Act on July 5, 1947, the \xc2\xa7 1(b), or \xe2\x80\x9cITU,\xe2\x80\x9d filing basis\nbecame available with the effective date of the Trademark Law Revision Act (TLRA) on November 16,\n1989,3 and the \xc2\xa7 66(a) filing basis became available with the effective date of the Madrid Protocol\nImplementation Act on November 2, 2003.4 Most trademark applications at the PTO are now filed\nunder the Lanham Act \xc2\xa7 1(b) intent to use basis.\nLanham Act \xc2\xa7\xc2\xa7 44 & 66(a), 15 U.S.C. \xc2\xa7\xc2\xa7 1126 & 1141f, constitute important though relatively\nobscure exceptions to the general rule that a trademark must be used in commerce for it to be\nSee, e.g., Graeme B. Dinwoodie, (National) Trademark Laws and the (Non-National) Domain Name\nSystem, 21 U. PA. J. INT\xe2\x80\x99L ECON. L. 495, 496 (2000) (\xe2\x80\x9c[F]or over a century the United States has\nsteadfastly resisted adoption of a registration-based system of trademark priority and has adhered\ninstead to a use-based philosophy.\xe2\x80\x9d); see also William M. Landes & Richard A. Posner, Trademark Law:\nAn Economic Perspective, 30 J.L. & Econ. 265, 282 (1987) (comparing the American use-based system\nto other nations\xe2\x80\x99 registration-based systems and concluding that the former is more economically\nefficient).\n1\n\nSee, e.g., Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 372 (1st Cir. 1980) (\xe2\x80\x9c[F]ederal\nregistration . . . does not create the underlying right in a trademark. That right, which accrues from the\nuse of a particular name or symbol, is essentially a common law property right . . . .\xe2\x80\x9d).\n2\n\n3 Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935 (codified as amended\nin scattered sections of the U.S.C.).\n\nMadrid Protocol Implementation Act, Pub. L. No. 107-273, 116 Stat. 1913 (2002) (codified as\namended at 15 U.S.C. \xc2\xa7\xc2\xa7 1141\xe2\x80\x931141 (2006)).\n4\n\n259\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nfederally registered. See, e.g., Lanham Act \xc2\xa7 44(e), 15 U.S.C. \xc2\xa7 1126(e) (\xe2\x80\x9cThe application must state the\napplicant\xe2\x80\x99s bona fide intention to use the mark in commerce, but use in commerce shall not be\nrequired prior to registration.\xe2\x80\x9d). As noted in In re Cyber-Blitz Trading Services, 47 U.S.P.Q.2d 1638\n(Comm\xe2\x80\x99r Pats. 1998),\n[o]ne significant difference between Section 1(b) and 44 of the Trademark Act is that\nApplicants who rely on Section 1(b) as a filing basis must establish use of the mark prior\nto registration, or the application will become abandoned. In contrast, Applicants who\nrely solely on Section 44 are not required to demonstrate use in order to obtain\nregistration. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ\n909 (TTAB 1984). In fact, the first time evidence of use usually is required for Section 44\nApplicants is upon the filing of an Affidavit of Continued Use under Section 8 of the\nTrademark Act, 15 U.S.C. \xc2\xa7 1058. This does not occur until five to six years after\nregistration.\nId. at 1639-40. See also TMEP \xc2\xa7 1009. The reasoning of Cyber-Blitz also applies to \xc2\xa7 66(a) applications.5\nFor a sense of scale, the figure below shows the number of trademark applications at the PTO per\nyear for each filing basis from 1981 through 2020. What might explain the spike in applications in the\nperiod 1999\xe2\x80\x932000? As for why Lanham Act \xc2\xa7 1(a) use-based applications have increased in number so\ndramatically since 2017, see USPTO, Trademarks and Patents in China: The Impact of Non-Market\nFactors on Filing Trends and IP Systems (January 2021) (discussing numerous Chinese-government\nsubsidy measures encouraging Chinese nationals to procure foreign trademark registrations). See also\nBarton Beebe & Jeanne Fromer, Fake Trademark Specimens: An Empirical Study, 121 COLUM. L. REV.\nFORUM 217 (2020).\n\nHowever, as is suggested by Dragon Bleu (SARL) v. VENM, LLC, 112 U.S.P.Q.2d 1925 (TTAB\n2014), which dealt with \xc2\xa7 66(a) registrations, if the \xc2\xa7 44 or \xc2\xa7 66(a) registrant is accused of having\nabandoned its mark in the U.S., the registrant may be required to present evidence of use sooner than\nfive years after the date of registration. On the issue of trademark abandonment, see Part III.D.\n5\n\n260\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nFor marks already being used in commerce, a successful application proceeds though at least five\nbasic stages: (1) application, (2) examination, (3) publication in the PTO\xe2\x80\x99s Official Gazette, (4)\nopposition, and (5) registration. Intent-to-use applications proceed through two additional stages\nfollowing opposition and preceding registration: (4.a) the issuance by the PTO of a \xe2\x80\x9cNotice of\nAllowance\xe2\x80\x9d and (4.b) the filing by the applicant of a Statement of Use showing that the applicant has\nbegun to make actual use of the mark in commerce. We review each of these stages below. But first we\nconsider why a trademark owner should federally register its mark.\nComments and Questions\n1.\n\nThe Phenomenon of \xe2\x80\x9cSubmarine Trademarks.\xe2\x80\x9d Below is the registration certificate for the\nmark. Note the priority date claimed: \xe2\x80\x9cPriority claimed under Sec. 44(d) on Trinidad/Tobago\nApplication No. 37090, filed 3-27-2006.\xe2\x80\x9d Rather than file an application for the mark at the USPTO on\nMarch 27, 2006, Apple instead filed on that date in Trinidad & Tobago through a shell company. As the\nregistration certificate indicates, on September 26, 2006 (six months after March 27, 2006 minus a\nday), Apple then took advantage of Lanham Act \xc2\xa7 44(d) to assert the priority date of their Trinidad &\nTobago application in the U.S. Why would Apple, like many other consumer-oriented high-technology\nand fashion companies, engage in such a circuitous route to registration? Consider that at the time\nApple filed its applications, Trinidad & Tobago did not provide a searchable online database of\ntrademark applications filed at its Intellectual Property Office. See Carsten Fink, Andrea Fosfuri,\nChristian Helmers, & Amanda Myers, \xe2\x80\x9cSubmarine Trademarks\xe2\x80\x9d (working paper).\nIPHONE\n\n1.\n\nBenefits and Costs of Trademark Registration\na.\n\nRegistration on the Principal Register\n\nRegistration on the Principal Register confers significant, substantive advantages on the\nregistered mark. First and perhaps most importantly, under Lanham Act \xc2\xa7 7(c), 15 U.S.C. \xc2\xa7 1057,\nregistration confers on the registrant nationwide priority in the mark as of the date of application.\nSection 7(c) reads as follows:\n(c) Application to register mark considered constructive use. Contingent on the\nregistration of a mark on the principal register provided by this Act, the filing of the\napplication to register such mark shall constitute constructive use of the mark, conferring\n261\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\na right of priority, nationwide in effect, on or in connection with the goods or services\nspecified in the registration against any other person except for a person whose mark has\nnot been abandoned and who, prior to such filing\xe2\x80\x93\n(1) has used the mark;\n(2) has filed an application to register the mark which is pending or has resulted in\nregistration of the mark; or\n(3) has filed a foreign application to register the mark on the basis of which he or she has\nacquired a right of priority, and timely files an application under section 44(d) [15 USC\n1126(d)] to register the mark which is pending or has resulted in registration of the\nmark.\n15 U.S.C \xc2\xa7 1057. This right of priority extends nationwide even if, as is often the case, the registrant has\nnot itself used the mark throughout the nation. And in the case of ITU applications, the intent to use\napplicant enjoys nationwide priority as of its ITU application date even if several years pass before the\napplicant finally makes an actual use of its mark and completes its registration. (We will address the\ngeographic scope of trademark rights in more detail in Part I.E).\nSecond, registration confers on the mark a prima facie presumption of the validity of the mark\nand the registrant\xe2\x80\x99s ownership of the mark. Lanham Act \xc2\xa7\xc2\xa7 7(b) & 33(a), 15 U.S.C. \xc2\xa7\xc2\xa7 1057(b) &\n1115(a). In practice, however, it is not clear how much weight courts place on the \xc2\xa7 33 presumption of\nvalidity. Compare, e.g., Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d\n206, 216 n.10 (2d Cir. 2012) (\xe2\x80\x9cIn order to rebut the presumption of validity, the allegedly infringing\nparty must show, by a preponderance of the evidence, . . . that the mark is ineligible for protection.\xe2\x80\x9d)\nwith Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481, 486 (7th Cir. 2007) (\xe2\x80\x9c[T]he presumption of\nvalidity that registration creates is easily rebuttable, since it merely shifts the burden of production to\nthe alleged infringer.\xe2\x80\x9d), and Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169, 172 (7th Cir.\n1996) (\xe2\x80\x9cThe presumption of validity that federal registration confers evaporates as soon as evidence of\ninvalidity is presented. Its only function is to incite such evidence and when the function has been\nperformed the presumption drops out of the case.\xe2\x80\x9d).\nThird, only marks registered on the Principal Register may achieve incontestable status, which\nconfers a significant benefit on descriptive marks. Lanham Act \xc2\xa7\xc2\xa7 15 and 33, 15 U.S.C. \xc2\xa7\xc2\xa7 1065 & 1115,\nset out the main requirements a registrant must meet to file a Declaration of Incontestability of a Mark\nUnder Section 15: (1) the mark must have been in continuous use for any period of five consecutive\nyears after the date of registration and must still be in use at the time of filing, (2) there has been no\nfinal decision adverse to the registrant\xe2\x80\x99s ownership of or validity of the registration of the mark, and\n(3) there is no proceeding involving the registrant\xe2\x80\x99s ownership of or validity of the registration of the\nmark pending at the PTO or in any court. Lanham Act \xc2\xa7 15, 15 U.S.C. \xc2\xa7 1065.\nIncontestable status limits the grounds on which the registered mark\xe2\x80\x99s validity may be contested\nfor the remaining life of the registration (which may be renewed in perpetuity). Lanham Act \xc2\xa7\xc2\xa7 15 and\n33(b) explicitly list out these grounds; any that are not listed are foreclosed. One ground not listed is\nthat the mark lacks secondary meaning. Thus, the validity of descriptive marks that have achieved\nincontestable status may not be challenged on the ground that they lack secondary meaning\xe2\x80\x94though\nthey may be challenged on the ground that they are generic. (Furthermore, even if the statute forces\nthe court to find that the incontestable mark possesses secondary meaning, a court may nevertheless\nfind that the mark\xe2\x80\x99s secondary meaning is so weak that as a practical matter no consumers would be\nconfused by a similar mark. See Rebecca Tushnet, Registering Disagreement: Registration in Modern\nAmerican Trademark Law, 130 HARV. L. REV. 867, 903-04 (2017)).\nIn the notorious case of Park \xe2\x80\x98N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985), which is\nexcerpted in Part I.D.7 below, the Supreme Court confirmed the rule that incontestable marks may not\n262\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nbe challenged on the ground that they lack secondary meaning. In Park \xe2\x80\x98N Fly, the Court held that the\nincontestable\xe2\x80\x94and clearly descriptive\xe2\x80\x94mark \xe2\x80\x9cPark \xe2\x80\x98N Fly\xe2\x80\x9d for airport parking services could not be\nchallenged on the ground that it lacked secondary meaning, notwithstanding that the record below\nstrongly suggested that the mark lacked secondary meaning at the time of registration in 1971 and still\nlacked secondary meaning when the case was being litigated in the early 1980s. See id. at 211 (Stevens,\nJ., dissenting).6\nRegistration confers additional benefits on the trademark owner:\n\xe2\x80\xa2\n\nOwners of registered marks may obtain statutory damages against counterfeiters. See\nLanham Act \xc2\xa7 35(c) (statutory damages available in \xe2\x80\x9ccases involving the use of a counterfeit\nmark\xe2\x80\x9d), 15 U.S.C. 1117(c), and Lanham Act \xc2\xa7 34(d)(1)(B)(i) (defining \xe2\x80\x9ccounterfeit mark\xe2\x80\x9d as\n\xe2\x80\x9ccounterfeit of a mark that is registered on the principal register\xe2\x80\x9d), 15 U.S.C.\n\xc2\xa7 1116(d)(1)(B)(i).\n\n\xe2\x80\xa2\n\nOwners of registered marks enjoy the right to request customs officials to bar the importation\nof goods bearing infringing trademarks under Lanham Act \xc2\xa7 42, 15 U.S.C. \xc2\xa7 1124.\n\n\xe2\x80\xa2\n\nIn the case of registered trade dress, owners do not bear the burden of establishing the nonfunctionality of their trade dress. Under Lanham Act \xc2\xa7 43(a)(3), 15 U.S.C. \xc2\xa7 1125(a)(3),\nowners of unregistered trade dress bear this burden.\n\nNote that it is often still said, incorrectly, that only owners of registered marks may seek treble\ndamages and attorney fees in exceptional cases under Lanham Act \xc2\xa7 35(a). In fact, the TLRA of 1988\namended Section \xc2\xa7 35(a) to reference any \xe2\x80\x9cviolation under section 43(a),\xe2\x80\x9d thus providing enhanced\ndamages and attorney fees in exceptional cases to owners of unregistered marks.\nb.\n\nRegistration on the Supplemental Register\n\nMarks that fail to qualify for Principal Register registration because they are determined to lack\nsecondary meaning may nevertheless seek registration on the Supplemental Register. Specifically,\nLanham Act Section 23(a), 15 U.S.C. \xc2\xa7 1091(a), provides in part:\nAll marks capable of distinguishing applicant\xe2\x80\x99s goods or services and not registerable on\nthe principal register provided in this chapter, except those declared to be unregisterable\nunder subsections (a), (b), (c), (d), and (e)(3) of section 1052 [Lanham Act \xc2\xa7 2] of this\ntitle, which are in lawful use in commerce by the owner thereof, on or in connection with\nany goods or services may be registered on the supplemental register upon the payment\nof the prescribed fee and compliance with the provisions of subsections (a) and (e) of\nsection 1051 [Lanham Act \xc2\xa7 1] of this title so far as they are applicable.\n6 In his lengthy dissent, Justice Stevens expressed his dismay that the decision of a single\ntrademark examiner in an ex parte proceeding a decade earlier, followed by the registrant\xe2\x80\x99s\nperfunctory filing of a declaration of incontestability, could somehow prevent the Court from striking\nfrom the Principal Register an \xe2\x80\x9cinherently unregistrable\xe2\x80\x9d mark. See Park \xe2\x80\x98N Fly, 469 U.S. at 206\xe2\x80\x9307\n(Stevens, J., dissenting). He also added his own opinion of trademark quality at the PTO for good\nmeasure. See id. at 212 (\xe2\x80\x9cNo matter how dedicated and how competent administrators may be, the\npossibility of error is always present, especially in nonadversary proceedings.\xe2\x80\x9d). In a footnote to this\nstatement, Justice Stevens quoted a PTO official who testified to Congress that \xe2\x80\x9cat any one time, about 7\npercent of our 25 million documents are either missing or misfiled.\xe2\x80\x9d Id. at 212 n.12 (quoting Hearing\nBefore the Subcomm. on Patents, Copyrights & Trademarks of the S. Comm. on the Judiciary, 98th\nCong. 5 (1983) (statement of Gerald J. Mossinghoff, Assistant Secretary and Comm\xe2\x80\x99r of Patents and\nTrademarks)).\n\n263\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nId. Principal Register applicants typically seek Supplemental Register registration (by amending their\napplication) only after the PTO has refused registration on the Principal Register on the ground that\nthe applied-for mark is descriptive and lacks secondary meaning. As the language of \xc2\xa7 23(a)\nestablishes (\xe2\x80\x9cwhich are in lawful use in commerce\xe2\x80\x9d), only use-based applications can be converted into\nsupplemental registrations; intent to use applications do not have this option.\nThere are several benefits to Supplemental Register registration:\n\xe2\x80\xa2\n\nExaminers may cite the supplemental registration against future applications for either\nPrincipal or Supplement Register registration where the future applied-for mark would be\nconfusingly similar under \xc2\xa7 2(d) with the supplemental registration mark. See Application of\nClorox Co., 578 F.2d 305, 307 (C.C.P.A. 1978). See also MCCARTHY \xc2\xa7 19:37 (calling the result in\nClorox \xe2\x80\x9cstrange and unsettling\xe2\x80\x9d); Anne Gilson LaLond & Jerome Gilson, The U.S. Supplemental\nRegister: Solace, Substance or Just Extinct?, 103 TRADEMARK REP. 828, 892 (2013) (criticizing\nClorox on ground that \xe2\x80\x9cfrom a public policy standpoint, these non-marks should not prevent\nregistration of actual trademarks.\xe2\x80\x9d).\n\n\xe2\x80\xa2\n\nRelatedly, the mark registered on the Supplemental Register is more likely to be detected in\nsearch reports prepared for others contemplating the registration of similar marks.\n\n\xe2\x80\xa2\n\nSupplemental registration may form the basis for registration of certain marks (particularly\nthose that are descriptive or take the form of product configuration or packaging) in certain\nforeign countries and regions. The Supplemental Register was originally established for this\npurpose. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 334 n. 21\n(1938); In re the Pepsi-Cola Co., 120 U.S.P.Q. 468 (T.T.A.B. Mar. 4, 1959).\n\nNote, however, that supplemental registration does not provide any of the important advantages\ngained by principal registration. It has no evidentiary or remedial significance. It does not establish\nconstructive use under \xc2\xa7 7(c), 15 U.S.C. \xc2\xa7 1057(c), or constructive notice of ownership under \xc2\xa7 22, 15\nU.S.C. \xc2\xa7 1072, nor can a supplemental registration become incontestable under \xc2\xa7 15, 15 U.S.C. \xc2\xa7 1065.\nc.\n\nCosts of Trademark Registration\n\nCurrent PTO fees for the registration of a trademark range from $250 to $500 per Nice class.\nExperienced trademark prosecutors will generally estimate that the cost to register a trademark at the\nPTO, including both filing fees and attorney\xe2\x80\x99s fees, starts at approximately $1,500 for a simple usebased single-class word mark application, with the addition of $400 per additional Nice class.\nAttorney\xe2\x80\x99s fees may vary by the quality of counsel. More complex applications, including those filed on\nan intent to use basis or for non-verbal marks, may cost considerably more.\n2.\n\nLanham Act \xc2\xa7 1(b) Intent to Use Applications and the Bona Fide Intent to Use\nRequirement\n\nAs the figure above shows, by 1993, over half of all trademark applications filed annually at the\nPTO were filed on a \xc2\xa7 1(b) intent to use filing basis. The ITU filing basis allows an applicant to begin the\ntrademark registration process before it has used its mark in commerce provided that it has a \xe2\x80\x9ca bona\nfide intention, under circumstances showing the good faith of such person, to use [the] trademark in\ncommerce.\xe2\x80\x9d Lanham Act \xc2\xa7 1(b)(1), 15 U.S.C. \xc2\xa7 1051(b)(1). The ITU filing basis greatly benefits firms\nthat wish to establish the registrability of and priority rights in their marks before actually using their\nmarks in commerce. However, the ITU system is also open to abuse from firms who have at the time of\nfiling no real intention to use the mark, but rather wish merely to establish an option to use the mark\nsometime in the future. It is also open to abuse from \xe2\x80\x9cmeme mark\xe2\x80\x9d filers who rush to file a \xc2\xa7 1(b)\napplication for the latest cultural catchphrase but have at the time of filing no reasonably welldeveloped plan actually to use that phrase on or in connection with goods or services. See Barton\n264\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nBeebe, Is the Trademark Office a Rubber Stamp?, 48 HOUSTON L. REV. 751, 757 (2011) (discussing \xe2\x80\x9cmeme\nmark\xe2\x80\x9d filings associated with September 11 such as \xe2\x80\x9cLet\xe2\x80\x99s Roll\xe2\x80\x9d and \xe2\x80\x9cSeal Team 6\xe2\x80\x9d).\nThe following opinion grew out of a priority battle between two claimants to the trademark\nWORKWIRE.\nKelly Services, Inc. v. Creative Harbor, LLC\n846 F.3d 857 (6th Cir. 2017)\nCLAY, Circuit Judge.\n[1] Defendant Creative Harbor, LLC (\xe2\x80\x9cCreative Harbor\xe2\x80\x9d) appeals the judgment entered by the\ndistrict court on February 1, 2016, voiding Creative Harbor\xe2\x80\x99s trademark applications numbered\n86198230 and 86198309, respectively. Creative Harbor challenges the district court\xe2\x80\x99s determinations\nthat: (1) Creative Harbor lacked a bona fide intention to use its requested mark in commerce with\nrespect to some of the goods and services identified in its trademark applications, in violation of \xc2\xa7 1(b)\nof the Lanham Act, 15 U.S.C. \xc2\xa7 1051(b); and (2) if Creative Harbor lacked such intent with respect to\nany of the goods and services, the applications must be voided in their entirety. We have jurisdiction\nover this appeal pursuant to 28 U.S.C. \xc2\xa7 1291. For the reasons set forth below, we AFFIRM IN PART and\nVACATE IN PART the district court\xe2\x80\x99s judgment. We REMAND for further proceedings consistent with\nthis opinion.\nBACKGROUND\nI. Factual History\n[2] We present the facts in the light most favorable to Creative Harbor, against whom the district\ncourt entered summary judgment.\n[3] Defendant Creative Harbor is a California-based technology startup purportedly \xe2\x80\x9cengaged in\nthe business of original content creation and concept development for all media, including but not\nlimited to, internet, mobile, photography, film, and TV.\xe2\x80\x9d (Answer.) Creative Harbor was founded in\n2014 by Christian Jurgensen (\xe2\x80\x9cJurgensen\xe2\x80\x9d), who serves as Creative Harbor\xe2\x80\x99s owner, sole manager, and\nCEO.\n[4] Plaintiff Kelly Services, Inc. is a Michigan-based company that is allegedly \xe2\x80\x9cone of the world\xe2\x80\x99s\nlargest providers of personnel and managed business services \xe2\x80\x93 staffing 99% of Fortune 100\ncompanies and 90% of Fortune 500 companies.\xe2\x80\x9d (Complaint.) Plaintiff Kelly Properties, LLC, is an\naffiliated entity of Kelly Services, Inc. Because Plaintiffs do not assert separate claims or arguments,\nand have identical interests for the purposes of this appeal, we refer to them collectively as \xe2\x80\x9cKelly\nServices.\xe2\x80\x9d\n[5] In essence, the parties dispute which of them should have priority to the trademark\nWORKWIRE (\xe2\x80\x9cthe Mark\xe2\x80\x9d), which both wish to use in connection with their competing employmentbased software applications. In September 2013, Jurgensen allegedly developed an idea for a mobile\napplication designed to connect employers with prospective employees. Jurgensen decided to call the\napplication \xe2\x80\x9cWorkWire,\xe2\x80\x9d and formed Creative Harbor in February 2014 to develop the WorkWire\napplication. In early 2014, Creative Harbor hired an intellectual property attorney to explore obtaining\nthe WORKWIRE trademark. That attorney allegedly advised Creative Harbor that the Mark was\navailable.\n[6] However, in early 2013, Kelly Services allegedly began developing its own employment-based\niPad application, which it intended to distribute through the Apple App Store. Kelly Services also\ndecided to name its application \xe2\x80\x9cWorkWire.\xe2\x80\x9d Kelly Services allegedly completed this iPad application\non February 4, 2014, and submitted the application to Apple for its approval and eventual distribution.\nOn February 17, 2014, Apple approved Kelly Services\xe2\x80\x99 application, but did not release it on the App\nStore immediately.\n265\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[7] On February 19, 2014, Creative Harbor filed two trademark applications seeking rights to the\nMark with the United States Patent and Trademark Office at 6:28 p.m. and 7:56 p.m. Eastern Standard\nTime, respectively (\xe2\x80\x9cthe Applications\xe2\x80\x9d). The Applications sought the right to use the Mark in\nconnection with thirty-six individually identified goods and services. Creative Harbor affirmed under\npenalty of perjury that it possessed a bona fide intention to use the Mark in commerce on or in\nconnection with each of the goods and services listed in the Applications. On the same day, at\napproximately 8:11 p.m. Eastern Standard Time, Kelly Services\xe2\x80\x99 iPad application became available on\nthe Apple App Store. A customer first downloaded the Kelly Services application on February 20, 2014.\n[8] On March 10, 2014, Creative Harbor sent Kelly Services a cease and desist letter asserting its\nright to use the Mark, and demanding that Kelly Services cease using the WORKWIRE name in\nconnection with Kelly Services\xe2\x80\x99 Apple App Store iPad application. Sixteen days later, Kelly Services\nresponded to that letter by bringing suit against Creative Harbor in the United States District Court for\nthe Eastern District of Michigan. In its complaint, Kelly Services sought a declaratory judgment, inter\nalia, that: (1) it possessed superior rights to the Mark; (2) it had not infringed on Creative Harbor\xe2\x80\x99s\nrights to the Mark; and (3) Creative Harbor\xe2\x80\x99s rights to the Mark were invalid.\n[9] On May 2, 2014, Creative Harbor answered the complaint and filed counterclaims against\nKelly Services. Relevant to this appeal, Creative Harbor sought a declaratory judgment that it had\npriority rights to the Mark over Kelly Services because it filed the Applications before Kelly Services\nbegan using the Mark in commerce.\n....\nII. Procedural History\n[10] Kelly Services sought discovery related to various issues in the case, including Creative\nHarbor\xe2\x80\x99s intent to use the Mark in commerce with respect to each of the goods and services listed in\nthe Applications. In response to Kelly Services\xe2\x80\x99 document requests, Creative Harbor produced a\nPowerPoint presentation that included mock-up \xe2\x80\x9cwireframes\xe2\x80\x9d (a concept map outlining the elements\nof a software application) for a potential iPhone application.\n[11] Kelly Services also deposed Jurgensen as Creative Harbor\xe2\x80\x99s representative pursuant to\nFederal Rule of Civil Procedure 30(b)(6). During the deposition, Kelly Services asked Jurgensen a\nnumber of questions related to Creative Harbor\xe2\x80\x99s plans to use the Mark in connection with the thirtysix goods and services identified in the Applications. In response to these questions, Jurgensen testified\nthat Creative Harbor\xe2\x80\x99s outside attorney, David Sharifi, prepared the Applications under Jurgensen\xe2\x80\x99s\ninstructions to \xe2\x80\x9cprotect the mark\xe2\x80\x9d as to different products and services for which the Mark \xe2\x80\x9ccould\xe2\x80\x9d\neventually be used \xe2\x80\x9cin case the brand got bigger.\xe2\x80\x9d (Deposition transcript.) Accordingly, Jurgensen\ntestified that he was not personally aware of the particular reasons why Sharifi included particular\ngoods and services in the Applications. Jurgensen elaborated that \xe2\x80\x9csome of these services might be of\nfuture importance. Some of these terms might protect my endeavors in the future that I have . . . with\nthe brand . . . . We can go through every single [item], but I can also say to some of them this would\nhave been a future use.\xe2\x80\x9d (Id.)\n[12] Additionally, Jurgensen made several statements concerning the goods and services\nidentified in the Applications. {These statements are discussed below}.\n[13] On May 14, 2015, Creative Harbor moved for partial summary judgment seeking a\ndeclaration that it had priority to the Mark based on the Applications. Kelly Services opposed Creative\nHarbor\xe2\x80\x99s motion on the ground that the Applications were invalid because Creative Harbor lacked\nbona fide intent to use the Mark on some of the goods and services listed in the Applications, as\nrequired by \xc2\xa7 1(b) of the Lanham Act. The district court construed Kelly Services\xe2\x80\x99 opposition as a\ncross-motion for summary judgment on the priority issue.\n....\n266\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[14] On October 16, 2015, the district court granted Kelly Services\xe2\x80\x99 cross-motion for summary\njudgment, voiding the Applications in their entirety. Kelly Servs. II, 140 F.Supp.3d at 623. The district\ncourt concluded that there was no genuine issue of material fact that Creative Harbor lacked a bona\nfide intent to use the Mark as to some of the goods and services listed in its Applications. Id. at 618\xe2\x80\x9319.\nAfter surveying TTAB precedent, the district court concluded that Creative Harbor\xe2\x80\x99s lack of bona fide\nintent as to some of the goods and services necessitated voiding the Applications in their entirety. Id. at\n622.\n....\nDISCUSSION\n[15] On appeal, Creative Harbor argues that: (1) the district court erred in concluding that it\nlacked a bona fide intent to use the Mark in commerce with respect to some of the goods and services\nlisted in the Applications at the time the Applications were filed; and (2) even if Creative Harbor did\nlack bona fide intent as to certain goods and services, the Applications should not have been voided in\ntheir entirety. We address each of these arguments in turn.\nI. Bona Fide Intent\nA. Standard of Review\n[16] We review de novo the district court\xe2\x80\x99s partial grant of summary judgment . . . .\nB. Applicable Legal Principles\n....\n[17] Two of our sister Circuits and the TTAB have held that \xe2\x80\x9clack of a bona fide intent is proper\nstatutory grounds on which to challenge a trademark application.\xe2\x80\x9d M.Z. Berger, 787 F.3d at 1375;\nAktieselskabet AF 21. Nov. 2001 v. Fame Jeans Inc., 525 F.3d 8, 21 (D.C. Cir. 2008); L\xe2\x80\x99Oreal S.A. v. Marcon,\n102 U.S.P.Q.2d 1434, 2012 WL 1267956, at *11 (T.T.A.B. 2012). The parties do not contest that\npremise. More importantly, \xc2\xa7 1(b) explicitly requires that an ITU applicant have a bona fide intent to\nuse the mark in commerce as to the goods and services listed in the application. 15 U.S.C. \xc2\xa7 1051(b)(1).\nWe therefore join the Federal and D.C. Circuits and hold that a lack of bona fide intent is a proper\nground on which to oppose an ITU application. M.Z. Berger, 787 F.3d at 1375; Aktieselskabet, 525 F.3d\nat 21.\n[18] Although the Lanham Act does not define what constitutes a bona fide intent to later use a\nmark in commerce, the Federal Circuit has explained \xe2\x80\x9cthat the applicant\xe2\x80\x99s intent must be demonstrable\nand more than a mere subjective belief.\xe2\x80\x9d M.Z. Berger, 787 F.3d at 1375; 3 McCarthy on Trademarks\n\xc2\xa7 19.14, at 19.48 (\xe2\x80\x9cCongress did not intend the issue to be resolved simply by an officer of the applicant\nlater testifying, \xe2\x80\x98Yes, indeed, at the time we filed that application, I did truly intend to use the mark at\nsome time in the future.\xe2\x80\x99\xe2\x80\x9d). Accordingly, \xe2\x80\x9cwhether an applicant had a \xe2\x80\x98bona fide intent\xe2\x80\x99 to use the mark\nin commerce at the time of the application requires objective evidence of intent.\xe2\x80\x9d M.Z. Berger, 787 F.3d\nat 1376 (emphasis added). \xe2\x80\x9cAlthough the evidentiary bar is not high, the circumstances must indicate\nthat the applicant\xe2\x80\x99s intent to use the mark was firm and not merely intent to reserve a right in the mark.\xe2\x80\x9d\nId. (emphasis added). This determination must be made on a \xe2\x80\x9ccase-by-case basis considering the\ntotality of the circumstances,\xe2\x80\x9d and may be assessed as of the time the application was filed. Id . . . .\n[19] \xe2\x80\x9cNeither the [Lanham Act] nor [its] legislative history indicates the specific quantum or type\nof objective evidence required to meet the bar\xe2\x80\x9d to show bona fide intent. M.Z. Berger, 787 F.3d at 1376.\nDrawing from the relevant legislative history, however, the TTAB has provided \xe2\x80\x9cseveral specific\nexamples of objective circumstances which, if proven, \xe2\x80\x98may cast doubt on the bona fide nature of the\nintent or even disprove it entirely.\xe2\x80\x99\xe2\x80\x9d Lane, 1994 WL 740491, at *6 (quoting S. Rep. No. 100-515, at 23\n(1988)).\n\n267\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nFor example, the applicant may have filed numerous intent-to-use applications to\nregister the same mark for many more new products than are contemplated, numerous\nintent-to-use applications for a variety of desirable trademarks intended to be used on\n[a] single new product, numerous intent-to-use applications to register marks consisting\nof or incorporating descriptive terms relating to a contemplated new product, numerous\nintent-to-use applications to replace applications which have lapsed because no timely\ndeclaration of use has been filed, an excessive number of intent-to-use applications to\nregister marks which ultimately were not actually used, an excessive number of intentto-use applications in relation to the number of products the applicant is likely to\nintroduce under the applied-for marks during the pendency of the applications, or\napplications unreasonably lacking in specificity in describing the proposed goods. Other\ncircumstances may also indicate the absence of genuine bona fide intent to actually use\nthe mark.\nId. (quoting S. Rep. No. 100-515, at 23\xe2\x80\x9324).\n[20] Further, one prominent practitioner has recently compiled a list of \xe2\x80\x9caffirmative activities that\nhave been deemed indicative of the presence of a bona fide intent to use,\xe2\x80\x9d including:\n\xe2\x80\xa2\n\nconducting a trademark availability search;\n\n\xe2\x80\xa2\n\nperforming preparatory graphic design work or labeling on sales material for a product;\n\n\xe2\x80\xa2\n\nusing a mark in test marketing;\n\n\xe2\x80\xa2\n\ntestimony regarding informal, unwritten business plans or market research;\n\n\xe2\x80\xa2\n\nobtaining necessary regulatory permits;\n\n\xe2\x80\xa2\n\nobtaining a correlative domain name for the mark or setting up a website;\n\n\xe2\x80\xa2\n\nmaking contacts with individuals who might help develop a business;\n\n\xe2\x80\xa2\n\ncorrespondence mentioning the planned use of the mark;\n\n\xe2\x80\xa2\n\nattempts to find licensees, including ones outside of the U.S.; [and]\n\n\xe2\x80\xa2\n\nobtaining commercial space in which to perform the services.\n\nSee Sandra Edelman, Proving Your Bona Fides\xe2\x80\x94Establishing Bona Fide Intent to Use Under the U.S.\nTrademark (Lanham) Act, 99 TRADEMARK RPTR. 763, 781\xe2\x80\x9382 (2009) (footnotes omitted) (emphasis in\noriginal).\n[21] On a motion for summary judgment in an action challenging an ITU application for lack of\nbona fide intent, the party opposing the application (\xe2\x80\x9copposing party\xe2\x80\x9d or \xe2\x80\x9copposer\xe2\x80\x9d) \xe2\x80\x9chas the initial\nburden of demonstrating by a preponderance of the evidence that [the] applicant lacked a bona fide\nintent to use the mark on the identified goods.\xe2\x80\x9d Bos. Red Sox Baseball Club LP v. Sherman, 88 U.S.P.Q.2d\n1581, 2008 WL 4149008, at *6 (T.T.A.B. 2007). Once this showing is made, the applicant must either\ncome forward with objective documentary evidence demonstrating bona fide intent, or else provide\n\xe2\x80\x9cother facts . . . which adequately explain or outweigh [the] applicant\xe2\x80\x99s failure to provide such\ndocumentary evidence.\xe2\x80\x9d Honda Motor Co., 2009 WL 962810, at *2. Without a valid excuse, the \xe2\x80\x9cabsence\nof any documentary evidence on the part of an applicant regarding [bona fide intent] constitutes\nobjective proof sufficient to prove that the applicant lack[ed] a bona fide intention to use its mark in\ncommerce.\xe2\x80\x9d Bos. Red Sox, 2008 WL 4149008, at *6. \xe2\x80\x9cWhile the burden to produce evidence shifts, the\nburden of persuasion by a preponderance of the evidence remains with the party asserting a lack of a\nbona fide intention to use.\xe2\x80\x9d Intel Corp., 2007 WL 1520948, at *4.\nC. Analysis\n\n268\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[22] Creative Harbor argues that the evidence in the record shows that it had a bona fide intent to\nuse the Mark in connection with each and every one of the thirty-six goods and services listed in the\nApplications at the time they were filed. We disagree.\n1. Prime Facie Showing of Lack of Bona Fide Intent\n[23] As the party challenging Creative Harbor\xe2\x80\x99s Applications, Kelly Services bore \xe2\x80\x9cthe initial\nburden of demonstrating by a preponderance of the evidence that [Creative Harbor] lacked a bona fide\nintent to use the mark on the identified goods.\xe2\x80\x9d Bos. Red Sox, 2008 WL 4149008, at *6. We hold that\nKelly Services met this initial burden.\n[24] As the district court correctly found, Jurgensen\xe2\x80\x99s deposition testimony on behalf of Creative\nHarbor was sufficient to demonstrate by a preponderance of the evidence that Creative Harbor lacked\nbona fide intent to use the Mark as to at least some of the goods and services identified in the\nApplications at the time the Applications were filed. The district court and Kelly Services specifically\nreference the following portions of Jurgensen\xe2\x80\x99s deposition:\n\xe2\x80\xa2\n\nMr. Jurgensen testified that he asked his attorney to file the [Applications] in order \xe2\x80\x98to protect\nthis brand . . . in case the brand got bigger; in case it diversifies a little bit.\xe2\x80\x99 (Deposition\ntestimony.);\n\n\xe2\x80\xa2\n\nMr. Jurgensen said that the services and goods listed on the [Applications] \xe2\x80\x98were defined with\nthe idea of protecting my present and future exploration of this name\xe2\x80\x94of this brand.\xe2\x80\x99 (Id.);\n\n\xe2\x80\xa2\n\nMr. Jurgensen conceded that at the time his attorney drafted the [Application] he (Jurgensen)\n\xe2\x80\x98had clear ideas for some of them, and some of them were meant for future exploration.\xe2\x80\x99 (Id.);\n\n\xe2\x80\xa2\n\nMr. Jurgensen acknowledged that some of the listed \xe2\x80\x98services might be of future importance\xe2\x80\x99\nand that they \xe2\x80\x98might protect my endeavors in the future that I have . . . .\xe2\x80\x99 (Id.);\n\n\xe2\x80\xa2\n\nIn the [Applications], Creative Harbor stated that it intended to use the Mark with \xe2\x80\x98computer\ngame software,\xe2\x80\x99 but Mr. Jurgensen testified that Creative Harbor did \xe2\x80\x98not\xe2\x80\x99 intend to use the\nMark \xe2\x80\x98with a game.\xe2\x80\x99 (Id.);\n\n\xe2\x80\xa2\n\nIn the [Applications], Creative Harbor said that it intended to use the Mark in connection with\n\xe2\x80\x98professional credentialing verification services . . . on behalf of others,\xe2\x80\x99 but Mr. Jurgensen\nacknowledged that he simply \xe2\x80\x98wanted to keep the option open to at some point do that.\xe2\x80\x99 (Id.);\n\n\xe2\x80\xa2\n\nIn the [Applications], Creative Harbor said that it intended to use the Mark in connection with\n\xe2\x80\x98employee relations information services,\xe2\x80\x99 but when asked about that listing, Mr. Jurgensen\ndid not know what it \xe2\x80\x98refers to.\xe2\x80\x99 (Id.);\n\n\xe2\x80\xa2\n\nIn the [Applications], Creative Harbor said that it intended to use the Mark in connection with\n\xe2\x80\x98employment staffing consultation services,\xe2\x80\x99 and Mr. Jurgensen explained that Creative\nHarbor included this service because \xe2\x80\x98maybe at some point [the WorkWire application] would\nhave consulting in there, maybe some kind of career advisor, something like this.\xe2\x80\x99 (Id.);\n\n\xe2\x80\xa2\n\nIn the [Applications], Creative Harbor said that it intended to use the Mark in connection with\n\xe2\x80\x98business consulting\xe2\x80\x99 services, but Mr. Jurgensen conceded that he \xe2\x80\x98wanted to make sure\n[that] was there included\xe2\x80\x99 because the company \xe2\x80\x98could\xe2\x80\x99 perhaps perform those services \xe2\x80\x98at\nsome point\xe2\x80\x99 in the future. (Id.)\n\nKelly Servs. II, 140 F.Supp.3d at 617\xe2\x80\x9318 (emphasis in original) (record citations altered).\n[25] These excerpts establish that Creative Harbor did not have a \xe2\x80\x9cfirm\xe2\x80\x9d intention to use the Mark\nin connection with computer software games, professional credentialing verification services,\nemployee relations information services, employment staffing consultation services, and business\nconsulting services\xe2\x80\x94all goods and services listed in the Applications. See M.Z. Berger, 787 F.3d at 1376.\nMoreover, several of Jurgensen\xe2\x80\x99s other statements strongly suggest that Creative Harbor included\n269\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nsome goods and services in the Applications merely to \xe2\x80\x9creserve a right in the mark\xe2\x80\x9d in case it ever\ndecided to expand its commercial activities into those areas. Id. Jurgensen\xe2\x80\x99s statement that, at the time\nthe Applications were filed, Creative Harbor \xe2\x80\x9chad clear ideas for some of [the goods and services], and\nsome of them were meant for future exploration\xe2\x80\x9d is particularly indicative of Creative Harbor\xe2\x80\x99s lack of\nfirm intent. Creative Harbor was not permitted to claim the Mark for uses that might only materialize\nafter some unspecified \xe2\x80\x9cfuture exploration\xe2\x80\x9d\xe2\x80\x94it was required to have firm plans to use the Mark at the\ntime the Applications were filed. M.Z. Berger, 787 F.3d at 1376. Taking all of Jurgensen\xe2\x80\x99s statements\ntogether, we are persuaded that the district court was correct in concluding that Kelly Services carried\nits initial burden in showing that it was more likely than not that Creative Harbor lacked bona fide\nintent as to some of the goods and services listed in the Applications.\n....\n[26] Accordingly, we hold that Kelly Services met its initial burden of production to show that\nCreative Harbor lacked bona fide intent as to some of the goods and services listed in the Applications.\n2. Rebuttal Evidence\n[27] Once Kelly Services met its initial burden of production, Creative Harbor was required to\ncome forward with either objective documentary evidence establishing its bona fide intent, or facts\nsupporting a sound explanation as to why such evidence was lacking. Honda Motor Co., 2009 WL\n962810, at *2. We hold that Creative Harbor provided sufficient objective evidence as to some of the\ngoods and services listed in the Applications, but not others.\n[28] In its summary judgment briefing, and again on appeal, Creative Harbor marshals significant\nevidence demonstrating its bona fide intent. A representative sample of Creative Harbor\xe2\x80\x99s evidence\nincludes:\n\xe2\x80\xa2\n\nIts hiring of a computer program development firm to develop an employment-based\nsoftware application for Apple\xe2\x80\x99s \xe2\x80\x9cApp Store.\xe2\x80\x9d (App Developer Agreement);\n\n\xe2\x80\xa2\n\nA trademark search it purportedly conducted to determine whether the WORKWIRE name\nwas available. (Deposition testimony);\n\n\xe2\x80\xa2\n\nThe wireframes it developed for its proposed employment-based software application. (Id.);\n\n\xe2\x80\xa2\n\nIts business plans for the proposed application. (5 Year Business Plan);\n\n\xe2\x80\xa2\n\nIts obtaining of the www.work-wire.com domain name. (Domain Registration); and\n\n\xe2\x80\xa2\n\nIts press release regarding its employment-based software application. (Press Release.)\n\n[29] The district court correctly acknowledged that Creative Harbor\xe2\x80\x99s evidence \xe2\x80\x9cmakes clear\xe2\x80\x9d that\nCreative Harbor had a bona fide intent as to some of the goods and services listed in the Applications.\nKelly Servs. II, 140 F.Supp.3d at 618. For example, the district court noted \xe2\x80\x9cthat Creative Harbor had a\n\xe2\x80\x98firm\xe2\x80\x99 intent to use the Mark in connection with an iPhone application that connected job seekers with\nemployers.\xe2\x80\x9d Id. We agree with the district court, however, that Creative Harbor\xe2\x80\x99s evidence ultimately\n\xe2\x80\x9cmisses the mark.\xe2\x80\x9d Id.\n[30] As the district court correctly noted, \xe2\x80\x9cevidence that Creative Harbor intended to use the Mark\nwith respect to some of the goods and services listed in the [Applications] does not contradict Kelly\n[Services\xe2\x80\x99] evidence that Creative Harbor lacked a firm intent to use the Mark on several of the other\nservices and goods listed in the [Applications.]\xe2\x80\x9d Id. (emphasis in original). Creative Harbor, for\nexample, failed to come forward with any objective evidence showing a bona fide intent to use the\nMark in connection with computer software games, professional credentialing verification services,\nemployee relations information services, employment staffing consultation services, and business\nconsulting services\xe2\x80\x94the goods and services most fatally undermined by Jurgensen\xe2\x80\x99s deposition\ntestimony. Nor did Creative Harbor offer any reasons excusing its failure to come forward with such\nobjective evidence . . . .\n270\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[31] Accordingly, we hold that Creative Harbor lacked a bona fide intent to use the Mark in\nconnection with at least some of the goods and services listed in the Applications.\nII. Remedy\n....\n[32] Finally, the district court\xe2\x80\x99s interpretation {of Spirits International, B.V. v. S.S. Taris Zeytin Ve\nZeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909 (T.T.A.B. 2011)}\nwould lead to perverse results. Imagine a hypothetical \xc2\xa7 1(b) ITU applicant who submits an application\nlisting 100 goods associated with the requested mark with a subjective intention to use the mark in\nconnection with all of the goods. The hypothetical applicant has at least some objective documentary\nevidence supporting its bona fide intent as to all 100 goods, but a competitor nevertheless challenges\nthe applicant\xe2\x80\x99s bona fide intent as to ten of the goods in a declaratory action in federal district court.\nUnder the district court and Kelly Services\xe2\x80\x99 interpretation of Spirits International, the applicant is put\nin quite a quandary: he must either (1) voluntarily delete the challenged goods, even if the challenges\nlack merit; or (2) risk having his entire application voided if the district court determines that he\nlacked bona fide intent for even a single item. If the applicant lacks ironclad documentary evidence for\neven one item\xe2\x80\x94which is likely in circumstances where the application lists a large number of goods\nand services\xe2\x80\x94his incentive is to delete the challenged goods rather than risk losing the entire\napplication. Similarly, his competitor is incentivized to bring bona fide intent challenges to all of the\napplicant\xe2\x80\x99s future applications, because the competitor can likely bully the applicant into at least some\nconcessions, and the only consequence for the competitor if it loses is legal fees, which may be a\nrelative pittance depending on the industry and the value of the mark . . . .\n....\n[33] Accordingly, we hold that when a \xc2\xa7 1(b) ITU applicant lacks bona fide intent as to some, but\nnot all, of the goods and services listed in her application, the application should not be voided in its\nentirety absent fraud or other egregious conduct. Grand Canyon, 2006 WL 802407, at *1\xe2\x80\x933. Rather, the\ncourt should determine as to which goods and services the applicant lacked bona fide intent, and excise\nthe overbroad portions of the application. We thus hold that the district court erred in voiding Creative\nHarbor\xe2\x80\x99s Applications in their entirety.\nIII. Remand\n....\n[34] On remand, the district court should evaluate each of the thirty-six goods and services listed\nin the Applications, and make individualized determinations as to whether Creative Harbor\xe2\x80\x99s objective\ndocumentary evidence establishes a bona fide intention to eventually use those items in commerce.\nThe district court may wish to conduct an evidentiary hearing in service of this inquiry, although we do\nnot require it to do so.\n....\nALICE M. BATCHELDER, Circuit Judge, concurring in part and dissenting in part and dissenting from\nthe judgment.\n....\n[35] TTAB precedent suggests that it is incumbent upon the applicant to amend its application to\neliminate portions of its \xc2\xa7 1(b) ITU application for which it cannot demonstrate bona fide intent, or\nelse risk having the entire application voided. Creative Harbor refused to take advantage of this\nremedy. The district court therefore correctly voided both of Creative Harbor\xe2\x80\x99s applications ab initio.\nBecause my colleagues reach the opposite conclusion, I respectfully dissent.\n271\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n3.\n\nProcess of Registration\n\nThe PTO provides excellent annotated flowcharts of the registration process for each of the five\nfiling bases on its website at: https://www.uspto.gov/trademark/trademark-timelines/trademarkapplication-and-post-registration-process-timelines. The reader is very strongly encouraged to consult\nthese flow charts while reviewing the following information.\na.\n\nApplication\n\nAs of February 15, 2020, all trademark applications must be filed electronically. As of August 3,\n2019, foreign-domiciled entities must file their applications through a U.S.-licensed attorney. U.Sdomiciled entities may continue to file their applications without an attorney\xe2\x80\x94 though, as discussed in\nComment 2 at the end of this section, applications filed by specialist trademark attorneys tend to do\nsignificantly better.\nThe application is relatively simple. See Lanham Act \xc2\xa7\xc2\xa7 1(a) & 1(b) (setting out the required\ncontents of use-based and intent-to-use applications, respectively). The following are the most\nimportant elements of the application:\n\xe2\x80\xa2\n\nFiling Basis: As mentioned above, the applicant must specify at least one of the five filing bases\nprovided for in the Lanham Act.\n\n\xe2\x80\xa2\n\nDesignation of Goods and Services: The applicant must identify the particular goods or services\non or in connection with which it uses or intends to use the mark. The U.S. Acceptable\nIdentification of Goods and Services Manual, available online, provides a listing of acceptable\nidentifications of goods and services. The applicant should also identify the international class\nnumber(s) of the identified goods or services. See TMEP \xc2\xa7 805. In principle, this identification\nof goods or services does not limit the breadth of the applicant\xe2\x80\x99s registered exclusive rights.\nThe sole purpose of the identification of goods and services is to aid the PTO in internal\nadministration and review of applications. However, litigants sometimes cite a registered\nmark\xe2\x80\x99s identification of goods and services to support their particular view of the scope of the\nregistered rights at issue\xe2\x80\x94and courts sometimes treat the identification as relevant, though\nnot binding, on the question.\n\n\xe2\x80\xa2\n\nDrawing: The applicant must submit a drawing of the trademark. As of 2003, if the mark\nconsists of colors, the drawing must as well. For word marks, a typed representation of the\nmark is sufficient. For nonvisual marks, such as sound or scent marks, the applicant need not\nsubmit a drawing. The PTO relies instead on the applicant\xe2\x80\x99s description of the mark given\nelsewhere in the application and on the applicant\xe2\x80\x99s specimen of use. TMEP \xc2\xa7 807.09.\n\n\xe2\x80\xa2\n\nSpecimen of Use: Applicants filing a \xe2\x80\x9c1(a)\xe2\x80\x9d use-based application must submit one specimen of\nuse of the mark in commerce for each international class in which the applicant seeks\nregistration. For electronic applications, this specimen typically takes the form of digital\nphotographs of the mark attached to goods or .pdf images of materials promoting services.\nApplicants filing a \xe2\x80\x9c1(b)\xe2\x80\x9d intent-to-use application need not (because they very likely cannot)\nsubmit a specimen of use with their application, but must do so instead when they file their\nStatement of Use. See Lanham Act \xc2\xa7 1(d)(1) (15 U.S.C. 1051(d)(1)).\n\nSee Lanham Act \xc2\xa7 1, 15 U.S.C. \xc2\xa7 1051.\nFor applications filed under Lanham Act \xc2\xa7 1 or \xc2\xa7 44, the PTO will grant a filing date to the\napplication according to the date on which all of the following \xe2\x80\x9cminimum requirements\xe2\x80\x9d are received\nat the PTO: (1) name of the applicant, (2) name and address for correspondence, (3) a clear drawing of\nthe mark; (4) a listing of the goods or services; and (5) the filing fee for at least one class of goods or\nservices. See TMEP \xc2\xa7\xc2\xa7 201-02. For Madrid System applications filed under Lanham Act \xc2\xa7 66(a),\ncompliance with minimum filing requirements is established by the International Bureau at the World\n272\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nIntellectual Property Organization. (We will discuss the Madrid System in more detail in Part I.D.6\nbelow).\nb.\n\nExamination\n\nTypically within about three months from the application\xe2\x80\x99s filing date, an examining attorney will\nengage in a substantive examination of the application to determine if there are any absolute or\nrelative grounds for refusal. See Lanham Act \xc2\xa7 12(a), 15 U.S.C. \xc2\xa7 1062(a). With respect to relative\ngrounds for refusal, the examining attorney will search the PTO\xe2\x80\x99s X-Search and TESS databases (the\nlatter of which is available online at no charge) to determine if any marks have already been filed that\nmay be confusingly similar with the applied-for mark.7 If the examining attorney finds no grounds for\nrefusal, the attorney will approve the mark for publication in the PTO\xe2\x80\x99s Official Gazette. One study\nsuggests that only about 15% of use-based applications and 21% of ITU applications proceed directly\nfrom application to approval for publication without any grounds for refusal being identified by an\nexamining attorney.8\nIf the examining attorney finds grounds for refusal, he or she will send an \xe2\x80\x9coffice action\xe2\x80\x9d to the\napplicant to explain the grounds for refusal. The applicant has six months to respond and to amend its\napplication to satisfy the examiner\xe2\x80\x99s objections; if the applicant fails to respond, the application will be\ndeemed abandoned. See Lanham Act \xc2\xa7 12(b), 15 U.S.C. \xc2\xa7 1062(b). Correspondence between the office\nand the applicant will continue until either (1) the examining attorney approves the application for\npublication, (2) the examining attorney issues a final office action refusing registration of the mark, or\n(3) the applicant abandons the application. See id. The applicant may appeal the final office action to\nthe Trademark Trial and Appeal Board.\nc.\n\nPublication\n\nMarks approved for publication are published in the PTO\xe2\x80\x99s Official Gazette (OG), a weekly online\npublication. See Lanham Act \xc2\xa7 12(a), 15 U.S.C. \xc2\xa7 1062(a). Publication in the OG gives notice to the\npublic that the PTO plans to register the mark. For a 30-day period following the date of the mark\xe2\x80\x99s\npublication in the OG, any party that believes it would be harmed by the registration, including as a\nresult of dilution, may file an opposition to the registration of the mark. See Lanham Act \xc2\xa7 13, 15 U.S.C.\n\xc2\xa7 1063.\nd.\n\nOpposition and the Trademark Trial and Appeal Board\n\nOppositions are rare. See Barton Beebe & Jeanne Fromer, Are We Running Out of Trademarks? An\nEmpirical Study of Trademark Depletion & Congestion, 131 HARV. L. REV. 945, 971 n. 128 (2018)\n(reporting that \xe2\x80\x9c[f]or applications filed from 1985 through 2014, only 2.10% were opposed and only\n0.90% were opposed successfully\xe2\x80\x9d). Those few oppositions that are filed are heard by the Trademark\nTrial and Appeal Board. The TTAB is an administrative board within the PTO that acts in the capacity\nof a trial court of first instance in opposition, cancellation, interference, and concurrent use\nproceedings and in the capacity of an appellate body in ex parte appeals from final office actions.\nCreated in 1958, the TTAB consists of the Director of the PTO, the Commissioner for Patents, the\nAt the examination stage, an examiner may not refuse registration on the ground that the\napplied-for mark will dilute another mark. See Lanham Act \xc2\xa7 2(f), 15 U.S.C. \xc2\xa7 1052(f) (\xe2\x80\x9cA mark which\nwhen used would cause dilution under section 43(c) may be refused registration only pursuant to a[n\nopposition] proceeding brought under section 13.\xe2\x80\x9d).\n7\n\nSee Barton Beebe, Is the Trademark Office a Rubber Stamp?: Trademark Registration Rates at\nthe PTO, 1981-2010, 48 HOUSTON L. REV. 752 (2012)\n8\n\n273\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nCommissioner for Trademarks, and Administrative Judges appointed by the Secretary of Commerce in\nconsultation with the Director. The Director and Commissioners rarely sit on TTAB panels. At this\nwriting, there are 27 Administrative Judges on the TTAB, all of whom are highly experienced in\ntrademark matters. The TTAB sits in panels of three judges. The Trademark Trial and Appeal Board\nManual of Procedure, available online, details all aspects of TTAB procedure. Proceedings before the\nTTAB are conducted in writing (though counsel may request oral argument). There is no live\ntestimony, though transcribed testimony, taken under oath and subject to cross-examination, may be\nsubmitted. Note that only those TTAB opinions that are explicitly labeled as \xe2\x80\x9ccitable as precedent\xe2\x80\x9d\nshould be cited to the TTAB in subsequent proceedings.\nUnder the terms of Lanham Act \xc2\xa7 21, 15 U.S.C. \xc2\xa7 1071, TTAB judgments may be appealed either to\na federal district court or to the Court of Appeals for the Federal Circuit. There are two advantages of\nthe district court route. First, the record in the case may be supplemented with additional evidence.\nSecond, the district court\xe2\x80\x99s rulings may be appealed to its reviewing appellate court, thus making it\npossible to avoid the Federal Circuit; for example, if the applicant appeals the PTO\xe2\x80\x99s decision to the\nEastern District of Virginia, Fourth Circuit case law would control.9\nIf the applicant prevails in the opposition proceeding, then the mark proceeds to registration.\nThe TTAB and Issue Preclusion. TTAB proceedings may gain substantially increased importance in\ncertain situations in light of the Supreme Court opinion in B & B Hardware, Inc. v. Hargis Indus., Inc.,\n135 S. Ct. 1293 (2015). In 1993, B & B registered the mark SEALTIGHT in connection with metal\nfasteners for use in the aerospace industry. In 1996, Hargis sought to register the mark SEALTITE in\nconnection with metal fasteners for use in building construction. B & B opposed on the ground that\nHargis\xe2\x80\x99s mark was confusingly similar to B & B\xe2\x80\x99s mark. The TTAB found a likelihood of confusion and\nrefused registration. Hargis did not appeal this decision. While the TTAB opposition proceeding was\npending, B & B sued Hargis in federal district court, arguing that Hargis\xe2\x80\x99s mark infringed B & B\xe2\x80\x99s.\nBefore the district court could rule, the TTAB announced its finding of a likelihood of confusion. B & B\nargued to the district court that the TTAB\xe2\x80\x99s decision should be given preclusive effect. The district\ncourt disagreed and the jury ultimately found no likelihood of confusion. The Eight Circuit affirmed.\nThe Supreme Court reversed and remanded. It held: \xe2\x80\x9cSo long as the other ordinary elements of\nissue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those\nbefore the district court, issue preclusion should apply.\xe2\x80\x9d Id. at 1310. For an example of the effect of B &\nB outside of the likelihood of confusion context, see Ashe v. PNC Financial Services Group, Inc., 165 F.\nSupp. 3d 357 (D. Md. 2015) (holding that TTAB\xe2\x80\x99s prior determination that defendant had priority of\nuse of mark SPENDOLOGY collaterally estopped plaintiff from asserting that defendant\xe2\x80\x99s use infringed on\nplaintiff\xe2\x80\x99s identical mark).\n\nFormerly, a disadvantage of the district court route was that the applicant was required to pay\nthe government\xe2\x80\x99s expenses in defending any ex parte PTO decision before the district court, including\nprorated salaries of the government attorneys, regardless of whether the applicant prevailed. This rule\nwas based on Lanham Act \xc2\xa7 21(b)(3), 15 U.S.C. \xc2\xa7 1071(b)(3): \xe2\x80\x9c[U]nless the court finds the expenses to\nbe unreasonable, all the expenses of the proceeding shall be paid by the [appealing] party bringing the\ncase, whether the final decision is in favor of such party or not.\xe2\x80\x9d However, in Peter v. NantKwest, 140\nS.Ct. 365 (2019), the Supreme Court determined that similar language from the Patent Act did not\noverride \xe2\x80\x9cthe bedrock principle known as the \xe2\x80\x98\xe2\x80\x9cAmerican Rule\xe2\x80\x9d\xe2\x80\x99: Each litigant pays his own attorney\xe2\x80\x99s\nfees, win or lose, unless a statute or contract provides otherwise.\xe2\x80\x9d Id. at 370. Thus, applicants\nchallenging ex parte PTO decisions at a district court need not pay the government\xe2\x80\x99s attorney\xe2\x80\x99s fees.\n9\n\n274\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nStanding to Oppose. Lanham Act \xc2\xa7 13, 15 U.S.C. \xc2\xa7 1063, states that \xe2\x80\x9c[a]ny person who believes that\nhe would be damaged by the registration of a mark upon the principal register\xe2\x80\x9d may file an opposition.\nIn Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), the Federal Circuit interpreted this language\nliberally: \xe2\x80\x9can opposer must meet two judicially-created requirements in order to have standing\xe2\x80\x94the\nopposer must have a \xe2\x80\x98real interest\xe2\x80\x99 in the proceedings and must have a \xe2\x80\x98reasonable\xe2\x80\x99 basis for his belief\nof damage.\xe2\x80\x9d Id. at 1095. \xe2\x80\x9cIn no case has this court ever held that one must have a specific commercial\ninterest, not shared by the general public, in order to have standing as an opposer . . . . The crux of the\nmatter is not how many others share one\xe2\x80\x99s belief that one will be damaged by the registration, but\nwhether that belief is reasonable and reflects a real interest in the issue.\xe2\x80\x9d Id. at 1096-97. In Ritchie, the\nFederal Circuit held that Mr. Ritchie, who \xe2\x80\x9cdescribed himself as a \xe2\x80\x98family man\xe2\x80\x99 who believes that the\n\xe2\x80\x98sanctity of marriage requires a husband and wife who love and nurture one another,\xe2\x80\x99\xe2\x80\x9d id. at 1097, had\nstanding to oppose O.J. Simpson\xe2\x80\x99s application to register the marks O.J. SIMPSON, O.J., and THE JUICE. In the\nTTAB\xe2\x80\x99s opinion in Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083\n(December 28, 2018) (not citable as precedent), the TTAB found that Professor Curtin had standing to\noppose the registration of RAPUNZEL for dolls. It reasoned that\nConsumers, like competitors, may have a real interest in keeping merely descriptive or\ngeneric words in the public domain, \xe2\x80\x9c(1) to prevent the owner of a mark from inhibiting\ncompetition in the sale of particular goods; and (2) to maintain freedom of the public to\nuse the language involved, thus avoiding the possibility of harassing infringement suits\nby the registrant against others who use the mark when advertising or describing their\nown products.\xe2\x80\x9d In re Abcor Dev. Corp., 588 F.2d 811 (CCPA 1978) (internal citation\nomitted) (Board emphasis).\nCurtin v. United Trademark Holdings, Inc., Opposition No. 91241083, at 9 (December 28, 2018).\ne.\n\nRegistration\n\nWith respect to use-based applications, if no opposition is filed within thirty days or if the\nopposition fails, then the PTO issues a certificate of registration and notice of the registration is\npublished in the Official Gazette. With respect to intent-to-use applications that are either unopposed\nor unsuccessfully opposed, the PTO issues a Notice of Allowance. The applicant then has six months\n(extendable for a total of three years) to file a Statement of Use showing that it is making use of the\nmark in commerce. See Lanham Act \xc2\xa7 2(d), 15 U.S.C. \xc2\xa7 1052(d); TMEP \xc2\xa7 1106.\n4.\n\nPost-Registration Maintenance of the Registration\n\nThe term of registration is ten years. Lanham Act \xc2\xa7 8, 15 U.S.C. \xc2\xa7 1058. The registration may be\nrenewed indefinitely provided that the registrant complies with the requirements of Lanham Act \xc2\xa7\xc2\xa7 8\n& 9, 15 U.S.C. \xc2\xa7\xc2\xa7 1058 & 1059. Section 8 requires the registrant to file an Affidavit of Continuing Use\n\xe2\x80\x9c(1) on or after the fifth anniversary and no later than the sixth anniversary of the date of\nregistration . . . and (2) within the year before the end of every ten-year period after the date of\nregistration.\xe2\x80\x9d TMEP \xc2\xa7 1604.04. Thus, the registrant must file a \xe2\x80\x9cSection 8 affidavit\xe2\x80\x9d in the sixth year of\nthe registration, the tenth year, the twentieth year, the thirtieth year, etc. Section 8 adds a six-month\ngrace period to this deadline. See Lanham Act \xc2\xa7 8(c), 15 U.S.C. \xc2\xa7 1058(c). See also TMEP \xc2\xa7 1604.04\n(\xe2\x80\x9cExample: For a registration issued on Nov. 1, 2005, a six-year affidavit or declaration may be filed as\nearly as Nov. 1, 2010, and may be filed as late as Nov. 1, 2011, before entering the six-month grace\nperiod.\xe2\x80\x9d).\nSection 9 requires the registrant to file a Renewal Application every tenth year following the date\nof registration. Registrants typically file the Section 8 Affidavit of Continuing Use and the Section 9\nRenewal Application as a single document. Section 9 also adds a sixth-month grace period. See Lanham\nAct \xc2\xa7 9(a), 15 U.S.C. \xc2\xa7 1059(a). See also TMEP \xc2\xa7 1606.03 (\xe2\x80\x9cExample: For a registration issued on\n275\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nNovember 5, 1998, an application for renewal may be filed as early as November 5, 2007, and as late as\nNovember 5, 2008, before entering the six-month grace period.\xe2\x80\x9d).\nRegistrants are also strongly advised to file an Affidavit of Incontestability under Lanham Act \xc2\xa7 15\n(15 U.S.C. \xc2\xa7 1065) within one year after any five-year period of continuous use of the mark. In practice,\nsophisticated trademark owners typically combine their first \xc2\xa7 8 Affidavit of Continuing Use (filed in\nthe sixth year following registration) with a \xc2\xa7 15 Affidavit of Incontestability. A \xc2\xa7 15 affidavit may be\nfiled at any time during the duration of the registration of the mark, however, provided that it is filed\nwithin the year following five years\xe2\x80\x99 continuous use of the mark. See TMEP \xc2\xa7 1605.03.\n5.\n\nNotice of Federal Registration\n\nLanham Act \xc2\xa7 29, 15 U.S.C. \xc2\xa7 1111, provides:\nNotwithstanding the provisions of section 22 hereof {15 USC \xc2\xa7 1072}, a registrant of a\nmark registered in the Patent Office, may give notice that his mark is registered by\ndisplaying with the mark the words \xe2\x80\x9cRegistered in U.S. Patent and Trademark Office\xe2\x80\x9d or\n\xe2\x80\x9cReg. U.S. Pat. & Tm. Off.\xe2\x80\x9d or the letter R enclosed within a circle, thus \xc2\xae; and in any suit\nfor infringement under this Act by such a registrant failing to give such notice of\nregistration, no profits and no damages shall be recovered under the provisions of this\nAct unless the defendant had actual notice of the registration.\nId. The latter part of \xc2\xa7 29 is generally understood to establish that in situations where the registrant\nhas not provided statutory notice of the registration of its mark, that registrant may only win profits\nand damages from a period after the defendant had actual notice of the registration status of the mark.\nSee MCCARTHY \xc2\xa7 19:144.10\nThe \xc2\xae or \xe2\x80\x9cr in a circle\xe2\x80\x9d designation indicates that the mark is registered on either the Principal or\nSupplemental Register. A \xe2\x80\x9cTM\xe2\x80\x9d or \xe2\x80\x9cSM\xe2\x80\x9d designation indicates that the mark is unregistered, but that the\nowner is claiming property rights in the mark. Firms may sometimes use the \xe2\x80\x9cTM\xe2\x80\x9d or \xe2\x80\x9cSM\xe2\x80\x9d\ndesignations in an attempt to educate consumers that the mark at issue is a designation of source\nrather than simply a description, decoration, or feature of the product.\n6.\n\nCancellation of Registration\n\nLanham Act \xc2\xa7 14, 15 U.S.C. \xc2\xa7 1064, addresses the circumstances under which a third party may\npetition to cancel a registration. It provides, in essence, that for the five year period following the date\nof registration, a third party may petition to cancel the registration for any reason. See Lanham Act\n\xc2\xa7 14(1), 15 U.S.C. \xc2\xa7 1064(1). After five years have passed from the date of registration, a third party\nMay registrants take advantage of their rights under Lanham Act \xc2\xa7 43(a), dealing with\nunregistered marks, to claim profits and damages even where the registrant did not provide statutory\nnotice? McCarthy suggests that the answer is no:\n10\n\nThe more problematic question is whether a registrant who proves infringement under\nboth \xc2\xa7 32(1) (registered mark) and \xc2\xa7 43(a) (unregistered mark) can avoid the notice\nlimitation imposed by \xc2\xa7 29 by claiming all of its damages fall under the \xc2\xa7 43(a) count. A\nstrict reading of the statutory language of \xc2\xa7 29 would, in the author\xe2\x80\x99s opinion, lead to the\nconclusion that such a registrant cannot avoid the \xc2\xa7 29 damage limitation by using\n\xc2\xa7 43(a). Section 29 does not distinguish between the kind of statutory infringement that a\nregistrant proves. Rather, \xc2\xa7 29 simply states that no profits and damages shall be\nrecovered \xe2\x80\x9cunder the provisions of this Act\xe2\x80\x9d unless statutory or actual notice was given.\nMCCARTHY \xc2\xa7 19:144.\n276\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmay petition to cancel a registration for only a limited number of reasons expressly enumerated in\nLanham Act \xc2\xa7 14(3), 15 U.S.C. \xc2\xa7 1064(3). Here is the relevant statutory language:\nA petition to cancel a registration of a mark, stating the grounds relied upon, may, upon\npayment of the prescribed fee, be filed as follows by any person who believes that he is or\nwill be damaged, including as a result of a likelihood of dilution by blurring or dilution by\ntarnishment under section 1125(c) of this title, by the registration of a mark on the\nprincipal register established by this chapter, or under the Act of March 3, 1881, or the\nAct of February 20, 1905:\n(1) Within five years from the date of the registration of the mark under this chapter.\n....\n(3) At any time if the registered mark becomes the generic name for the goods or\nservices, or a portion thereof, for which it is registered, or is functional, or has been\nabandoned, or its registration was obtained fraudulently or contrary to the provisions of\nsection 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a\nregistration under this chapter, or contrary to similar prohibitory provisions of such\nprior Acts for a registration under such Acts, or if the registered mark is being used by, or\nwith the permission of, the registrant so as to misrepresent the source of the goods or\nservices on or in connection with which the mark is used. If the registered mark becomes\nthe generic name for less than all of the goods or services for which it is registered, a\npetition to cancel the registration for only those goods or services may be filed. A\nregistered mark shall not be deemed to be the generic name of goods or services solely\nbecause such mark is also used as a name of or to identify a unique product or service.\nThe primary significance of the registered mark to the relevant public rather than\npurchaser motivation shall be the test for determining whether the registered mark has\nbecome the generic name of goods or services on or in connection with which it has been\nused.\nLanham Act \xc2\xa7 14, 15 U.S.C. \xc2\xa7 1064. Note what is missing from \xc2\xa7 14(3). Most significantly, after five\nyears have passed since the date of registration, a third party cannot petition to cancel the registration\non the ground that the mark is merely descriptive without secondary meaning (this ground is not\nincluded in \xc2\xa7 14(3)) or on the ground that the registered mark is confusingly similar with a previously\nused mark (\xc2\xa7 2(d) is not included in \xc2\xa7 14(3)). This five-year time limit on grounds for cancellation\npetitions at the PTO applies even if the registrant has not applied for incontestable status.11\nEx parte expungement and ex parte reexamination. In 2020, the Trademark Modernization\nAct (TMA) added Lanham Act \xc2\xa7 16A, which provides that third parties (or the PTO itself) may seek ex\nparte expungement of a registration, in whole or part, for any goods or services listed in the\nregistration in connection with which the registrant has never in fact made a use of the mark in\ncommerce. The challenger may seek ex parte expungement at any time from the fourth year through\nthe tenth year of the registration. The TMA also added Lanham Act \xc2\xa7 16B, which provides that third\nparties (or the PTO itself) may seek ex parte reexamination of a registration to verify that the\nregistered mark has been used on all the goods or services listed in the registration as of the filing date\nNote that Lanham Act \xc2\xa7 14 can be read only to apply to cancellation petitions brought before the\nPTO. If the registrant has not obtained incontestable status for the mark, challengers in federal court\nare arguably not limited by Lanham Act \xc2\xa7 14 in the grounds on which they can challenge the validity\xe2\x80\x94\nor at least the enforceability\xe2\x80\x94of the mark. But see MCCARTHY \xc2\xa7 30:112 (arguing that \xc2\xa7 14\xe2\x80\x99s five-year\nlimit on grounds for cancellation applies to federal courts as well).\n11\n\n277\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nof a use-based application or the filing date of the Statement of Use following an ITU application. An ex\nparte reexamination request must be filed with the first five years of the challenged registration. Both\n\xc2\xa7 16A and \xc2\xa7 16B are effective as of December 27, 2021.\nLanham Act \xc2\xa7 37. Lanham Act \xc2\xa7 37, 15 U.S.C. \xc2\xa7 1119, provides federal courts with broad powers\nover registrations:\nIn any action involving a registered mark the court may determine the right to\nregistration, order the cancelation of registrations, in whole or in part, restore canceled\nregistrations, and otherwise rectify the register with respect to the registrations of any\nparty to the action. Decrees and orders shall be certified by the court to the Director, who\nshall make appropriate entry upon the records of the Patent and Trademark Office, and\nshall be controlled thereby.\nId. The Fourth Circuit has determined, however, that \xc2\xa7 37 does not allow federal courts to override the\ntime limits built in to \xc2\xa7 14. See Shakespeare Co. v. Silstar Corp. of Am., 9 F.3d 1091 (4th Cir. 1993).\n7.\n\nThe Madrid System\n\nThe United States has been a member of the \xe2\x80\x9cMadrid System\xe2\x80\x9d for the international registration of\ntrademarks since November 2, 2003, which was the effective date of the Madrid Protocol\nImplementation Act (\xe2\x80\x9cMPIA\xe2\x80\x9d), 116 Stat. 1758, 1913 Pub. L. 107-273.12 The Madrid System provides an\nefficient means by which trademark applicants or registrants may apply to register their marks at\nmultiple foreign trademark offices through a single application filed at (and a single fee paid to) their\nhome trademark office. For example, a trademark applicant or registrant at the PTO may file a single\napplication and pay a single fee to register its trademark at any or all of the 124 countries13 within the\nMadrid Union; the fee increases with the number of countries. The PTO will forward any such\napplication to the International Bureau administering the Madrid System (based in Geneva at the\nWorld Intellectual Property Organization (\xe2\x80\x9cWIPO\xe2\x80\x9d)), which will then forward the application in turn to\nall countries selected by the applicant. This can result in significant cost savings for the applicant\nbecause it need not hire foreign local counsel to prosecute its application unless the local trademark\noffice rejects or otherwise demands some response relating to the application. Furthermore, the\nMadrid registrant need only file a single form and pay a single fee to renew its mark across multiple\nforeign countries.\nFor U.S. applicants, there are certain drawbacks to using Madrid. First, many foreign trademark\noffices permit relatively broad definitions of the goods or services with which the mark will be used.\nThe PTO, however, does not. As a result, the U.S. applicant must file a narrow definition of the appliedfor mark\xe2\x80\x99s goods in order to satisfy the PTO but will then be required to use that definition when it\nseeks to extend its protection abroad. For this reason, some U.S. applicants seek to file in foreign\ncountries locally rather than through Madrid.\n\nThe Madrid System functions under two international instruments, the Madrid Agreement\nConcerning the International Registration of Marks of 1891, which the U.S. has never joined, and the\n1989 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks\n(generally referred to as the \xe2\x80\x9cMadrid Protocol\xe2\x80\x9d), which was developed primarily to bring the U.S. and\nother major economies (such as the U.K. and Japan), into the Madrid System. Both the Agreement and\nthe Protocol are filing treaties rather than substantive harmonization treaties.\n12\n\nAs of June 2021. See http://www.wipo.int/madrid/en/members/. Canada became a party to\nthe Madrid Protocol in June 2019, and Brazil did so in October 2019.\n13\n\n278\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nA second disadvantage of Madrid is that all international trademark registrations filed through\nMadrid remain dependent on the applicant\xe2\x80\x99s home (or \xe2\x80\x9cbasic\xe2\x80\x9d) registration for five years from the date\nof that home registration. If the home registration fails during that five year period (as a result of a\n\xe2\x80\x9ccentral attack\xe2\x80\x9d from a third party opposer or for any other reason), then all international registrations\nwill fail as well. However, within three months from the date of the cancellation of its home\nregistration, the Madrid registrant may file to \xe2\x80\x9ctransform\xe2\x80\x9d its international registrations into local\nregistrations.\nComments and Questions\n1. Trademark Registration Rates at the PTO. The PTO\xe2\x80\x99s release of data concerning the\nregistration process has made it possible to estimate the overall trademark registration rate at the\nPTO, i.e., the proportion of trademark applications that result in registration. For use-based\napplications filed at the PTO from 1981 through 2007, the overall registration rate was .75. See Barton\nBeebe, Is the Trademark Office a Rubber Stamp?, 48 HOUSTON L. REV. 751, 762 (2011). For ITU-based\napplications filed from November 16, 1989 through 2007, the registration rate was .37. Id. What might\nexplain this significant difference in registration rates between use-based and ITU-based applications?\nConsider the publication rates of such applications, i.e., the proportion of applications that the PTO\napproved for publication. For use-based applications filed at the PTO from 1981 through 2007, the\npublication rate was .76. Id. at 770. For ITU-based applications filed from November 16, 1989 through\n2007, the publication rate was also .76. Id. Recall that after an ITU-based application is approved for\npublication, the applicant must then submit a Statement of Use in order to complete the registration\nprocess.\nThe figure below shows trademark publication and registration rates at the PTO over time. What\nmight explain the pronounced dip in registration rates in 1999-2000?\n\n2. Do Trademark Lawyers Matter? Deborah Gerhardt and John McClanahan have presented\ncompelling evidence that trademark applications filed by attorneys do significantly better than\napplications filed by non-attorneys. See Deborah R. Gerhardt & Jon P. McClanahan, Do Trademark\nLawyers Matter?, 16 STAN. TECH. L. REV. 583 (2013). They note in particular that for the period 1984\nthrough 2012, the publication rate for applications filed by attorneys was 82% while the publication\n279\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nrate for applications filed by non-attorneys was 60%. Id. at 606. They also reported significant\ndifferences in the publication rates of applications depending on the experience of the attorney filing\nthe application. Id. at 610. See the article for a consideration of factors that may explain these\ndifferences.\n3. Trademark Registrations as an Index of Innovation? Scholarship has focused on the question\nof whether trademark registration data may be used to measure the rate of \xe2\x80\x9cnon-technological\xe2\x80\x9d\ninnovation, specifically, innovation in the service and marketing sectors (sectors about which patent\ndata often has very little to say). See, e.g., Valentine Millot, Trademarks as an Indicator of Product and\nMarketing Innovations, OECD Science, Technology and Industry Working Papers 2009/06 (2009),\nhttp://dx.doi.org/10.1787/224428874418. See also Dev Saif Gangjee, Trade Marks and Innovation?,\nTRADEMARK LAW AND THEORY II (G.B. Dinwoodie & M.D. Janis eds., 2021).\n4. Do State Trademark Regsitrations Have Any Value? In general, no they do not. Scholars have\neven gone so far as to call for their abolition. See Lee Ann W. Lockridge, Abolishing State Trademark\nRegistrations, 29 CARDOZO ARTS & ENT. L.J. 597 (2011). Lockridge reports:\nUnder the law of forty-five states, registrations provide registrants with no significant,\nenforceable substantive rights beyond those awarded under state common law or under\nthe federal statute protecting unregistered common law trademarks. In five states certain\nsubstantive rights can accrue to an owner through state registration, although those\nrights are limited by competing rights held by certain common law owners or federal\nregistrants.\nId. at 598-99. Lockridge observes that in five states (Massachusetts, Minnesota, Rhode Island, Texas,\nand Washington), state law provides that a state trademark registration will create constructive notice\nof the registrant\xe2\x80\x99s claim of ownership as of the date of state registration, which impairs the ability of a\ncommon law adopter of the mark to claim good faith adoption of the mark after that date (or good faith\ngeographic expansion within the state of its prior continuing use). Id. at 624. This benefit arises only\nunder state law, however, and has no bearing on claims brought under federal law. Id. In the face of a\nsubsequent third party federal registration, a state trademark registrant is typically treated no better\nthan a \xc2\xa7 7(c) prior \xe2\x80\x9ccommon law\xe2\x80\x9d user.\nMcCarthy proposes one way in which state registration may provide a slight advantage in federal\nlitigation:\nState registrations in most states have little legal significance other than serving as proof\nthat on a certain date the registrant filed a claim that it was using a certain mark. This\ngives a slight procedural advantage of proving priority compared to merely relying upon\na trademark owner\xe2\x80\x99s inherent common-law right of priority as proven by business\nrecords.\nMCCARTHY at \xc2\xa7 22:1 (footnote omitted). Note, however, that before the TTAB, state trademark\nregistrations are not competent evidence of use by the state registrant of the mark. See, e.g., Visa\nInternational Service Ass\xe2\x80\x99n v. Visa Realtors, 208 U.S.P.Q. 462 (TTAB 1980).\nFor a broader historical discussion of the relation between state trademark law and federal\ntrademark law, see Mark P. McKenna, Trademark Law\xe2\x80\x99s Faux Federalism, in INTELLECTUAL PROPERTY AND\nTHE COMMON LAW 288 (Shyamkrishna Balganesh ed. 2013). McKenna argues that \xe2\x80\x9cthe persistent sense\nthat federal and state law regulate concurrently has masked a significant federalization of trademark\nand unfair competition law over the last forty to fifty years.\xe2\x80\x9d Id. at 289. McKenna goes so far as to call\nfor the explicit federal preemption of state trademark and unfair competition law. Id. at 298.\n\n280\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n8.\n\nIncontestable Status and Park \xe2\x80\x98N Fly\n\nPark \xe2\x80\x98N Fly, Inc. v. Dollar Park and Fly, Inc.\n469 U.S. 189 (1985)\nJustice O\xe2\x80\x99CONNOR delivered the opinion of the Court.\n[1] In this case we consider whether an action to enjoin the infringement of an incontestable\ntrade or service mark may be defended on the grounds that the mark is merely descriptive. We\nconclude that neither the language of the relevant statutes nor the legislative history supports such a\ndefense.\nI\n[2] Petitioner operates long-term parking lots near airports. After starting business in St. Louis in\n1967, petitioner subsequently opened facilities in Cleveland, Houston, Boston, Memphis, and San\nFrancisco. Petitioner applied in 1969 to the United States Patent and Trademark Office (Patent Office)\nto register a service mark consisting of the logo of an airplane and the words \xe2\x80\x9cPark \xe2\x80\x98N Fly.\xe2\x80\x9d The\nregistration issued in August 1971. Nearly six years later, petitioner filed an affidavit with the Patent\nOffice to establish the incontestable status of the mark. As required by \xc2\xa7 15 of the Trademark Act of\n1946 (Lanham Act), 60 Stat. 433, as amended, 15 U.S.C. \xc2\xa7 1065, the affidavit stated that the mark had\nbeen registered and in continuous use for five consecutive years, that there had been no final adverse\ndecision to petitioner\xe2\x80\x99s claim of ownership or right to registration, and that no proceedings involving\nsuch rights were pending. Incontestable status provides, subject to the provisions of \xc2\xa7 15 and \xc2\xa7 33(b)\nof the Lanham Act, \xe2\x80\x9cconclusive evidence of the registrant\xe2\x80\x99s exclusive right to use the registered\nmark . . . .\xe2\x80\x9d \xc2\xa7 33(b), 15 U.S.C. \xc2\xa7 1115(b).\n[3] Respondent also provides long-term airport parking services, but only has operations in\nPortland, Oregon. Respondent calls its business \xe2\x80\x9cDollar Park and Fly.\xe2\x80\x9d Petitioner filed this infringement\naction in 1978 in the United States District Court for the District of Oregon and requested the court\npermanently to enjoin respondent from using the words \xe2\x80\x9cPark and Fly\xe2\x80\x9d in connection with its business.\nRespondent counterclaimed and sought cancellation of petitioner\xe2\x80\x99s mark on the grounds that it is a\ngeneric term. See \xc2\xa7 14(c), 15 U.S.C. \xc2\xa7 1064(c). Respondent also argued that petitioner\xe2\x80\x99s mark is\nunenforceable because it is merely descriptive. See \xc2\xa7 2(e), 15 U.S.C. \xc2\xa7 1052(e) . . . .\n[4] After a bench trial, the District Court found that petitioner\xe2\x80\x99s mark is not generic and observed\nthat an incontestable mark cannot be challenged on the grounds that it is merely descriptive . . . . The\nDistrict Court permanently enjoined respondent from using the words \xe2\x80\x9cPark and Fly\xe2\x80\x9d and any other\nmark confusingly similar to \xe2\x80\x9cPark \xe2\x80\x98N Fly.\xe2\x80\x9d\n[5] The Court of Appeals for the Ninth Circuit reversed. 718 F.2d 327 (1983). The District Court\ndid not err, the Court of Appeals held, in refusing to invalidate petitioner\xe2\x80\x99s mark. Id., at 331. The Court\nof Appeals noted, however, that it previously had held that incontestability provides a defense against\nthe cancellation of a mark, but it may not be used offensively to enjoin another\xe2\x80\x99s use. Ibid. Petitioner,\nunder this analysis, could obtain an injunction only if its mark would be entitled to continued\nregistration without regard to its incontestable status. Thus, respondent could defend the infringement\naction by showing that the mark was merely descriptive. Based on its own examination of the record,\nthe Court of Appeals then determined that petitioner\xe2\x80\x99s mark is in fact merely descriptive, and therefore\nrespondent should not be enjoined from using the name \xe2\x80\x9cPark and Fly.\xe2\x80\x9d Ibid.\n[6] The decision below is in direct conflict with the decision of the Court of Appeals for the\nSeventh Circuit in Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, cert. denied, 429 U.S. 830, 97\nS.Ct. 91, 50 L.Ed.2d 94 (1976). We granted certiorari to resolve this conflict, 465 U.S. 1078, 104 S.Ct.\n1438, 79 L.Ed.2d 760 (1984), and we now reverse.\nII\n281\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[7] Congress enacted the Lanham Act in 1946 in order to provide national protection for\ntrademarks used in interstate and foreign commerce. S.Rep. No. 1333, 79th Cong., 2d Sess., 5 (1946).\nPrevious federal legislation, such as the Federal Trademark Act of 1905, 33 Stat. 724, reflected the\nview that protection of trademarks was a matter of state concern and that the right to a mark\ndepended solely on the common law. S.Rep. No. 1333, at 5. Consequently, rights to trademarks were\nuncertain and subject to variation in different parts of the country. Because trademarks desirably\npromote competition and the maintenance of product quality, Congress determined that \xe2\x80\x9ca sound\npublic policy requires that trademarks should receive nationally the greatest protection that can be\ngiven them.\xe2\x80\x9d Id., at 6. Among the new protections created by the Lanham Act were the statutory\nprovisions that allow a federally registered mark to become incontestable. \xc2\xa7\xc2\xa7 15, 33(b), 15 U.S.C.\n\xc2\xa7\xc2\xa7 1065, 1115(b).\n[8] The provisions of the Lanham Act concerning registration and incontestability distinguish a\nmark that is \xe2\x80\x9cthe common descriptive name of an article or substance\xe2\x80\x9d from a mark that is \xe2\x80\x9cmerely\ndescriptive.\xe2\x80\x9d \xc2\xa7\xc2\xa7 2(e), 14(c), 15 U.S.C. \xc2\xa7\xc2\xa7 1052(e), 1064(c). Marks that constitute a common descriptive\nname are referred to as generic. A generic term is one that refers to the genus of which the particular\nproduct is a species. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2 1976). Generic\nterms are not registrable, and a registered mark may be canceled at any time on the grounds that it has\nbecome generic. See \xc2\xa7\xc2\xa7 2, 14(c), 15 U.S.C. \xc2\xa7\xc2\xa7 1052, 1064(c). A \xe2\x80\x9cmerely descriptive\xe2\x80\x9d mark, in contrast,\ndescribes the qualities or characteristics of a good or service, and this type of mark may be registered\nonly if the registrant shows that it has acquired secondary meaning, i.e., it \xe2\x80\x9chas become distinctive of\nthe applicant\xe2\x80\x99s goods in commerce.\xe2\x80\x9d \xc2\xa7\xc2\xa7 2(e), (f), 15 U.S.C. \xc2\xa7\xc2\xa7 1052(e), (f).\n[9] This case requires us to consider the effect of the incontestability provisions of the Lanham\nAct in the context of an infringement action defended on the grounds that the mark is merely\ndescriptive. Statutory construction must begin with the language employed by Congress and the\nassumption that the ordinary meaning of that language accurately expresses the legislative purpose.\nSee American Tobacco Co. v. Patterson, 456 U.S. 63, 68, 102 S.Ct. 1534, 1537, 71 L.Ed.2d 748 (1982).\nWith respect to incontestable trade or service marks, \xc2\xa7 33(b) of the Lanham Act states that\n\xe2\x80\x9cregistration shall be conclusive evidence of the registrant\xe2\x80\x99s exclusive right to use the registered mark\xe2\x80\x9d\nsubject to the conditions of \xc2\xa7 15 and certain enumerated defenses. Section 15 incorporates by\nreference subsections (c) and (e) of \xc2\xa7 14, 15 U.S.C. \xc2\xa7 1064. An incontestable mark that becomes generic\nmay be canceled at any time pursuant to \xc2\xa7 14(c). That section also allows cancellation of an\nincontestable mark at any time if it has been abandoned, if it is being used to misrepresent the source\nof the goods or services in connection with which it is used, or if it was obtained fraudulently or\ncontrary to the provisions of \xc2\xa7 4, 15 U.S.C. \xc2\xa7 1054, or \xc2\xa7\xc2\xa7 2(a)\xe2\x80\x93(c), 15 U.S.C. \xc2\xa7\xc2\xa7 1052(a)\xe2\x80\x93(c).\n[10] One searches the language of the Lanham Act in vain to find any support for the\noffensive/defensive distinction applied by the Court of Appeals. The statute nowhere distinguishes\nbetween a registrant\xe2\x80\x99s offensive and defensive use of an incontestable mark. On the contrary, \xc2\xa7 33(b)\xe2\x80\x99s\ndeclaration that the registrant has an \xe2\x80\x9cexclusive right\xe2\x80\x9d to use the mark indicates that incontestable\nstatus may be used to enjoin infringement by others. A conclusion that such infringement cannot be\nenjoined renders meaningless the \xe2\x80\x9cexclusive right\xe2\x80\x9d recognized by the statute. Moreover, the language\nin three of the defenses enumerated in \xc2\xa7 33(b) clearly contemplates the use of incontestability in\ninfringement actions by plaintiffs. See \xc2\xa7\xc2\xa7 33(b)(4)\xe2\x80\x93(6), 15 U.S.C. \xc2\xa7\xc2\xa7 1115(b)(4)\xe2\x80\x93(6).\n[11] The language of the Lanham Act also refutes any conclusion that an incontestable mark may\nbe challenged as merely descriptive. A mark that is merely descriptive of an applicant\xe2\x80\x99s goods or\nservices is not registrable unless the mark has secondary meaning. Before a mark achieves\nincontestable status, registration provides prima facie evidence of the registrant\xe2\x80\x99s exclusive right to\nuse the mark in commerce. \xc2\xa7 33(a), 15 U.S.C. \xc2\xa7 1115(a). The Lanham Act expressly provides that before\na mark becomes incontestable an opposing party may prove any legal or equitable defense which\n282\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmight have been asserted if the mark had not been registered. Ibid. Thus, \xc2\xa7 33(a) would have allowed\nrespondent to challenge petitioner\xe2\x80\x99s mark as merely descriptive if the mark had not become\nincontestable. With respect to incontestable marks, however, \xc2\xa7 33(b) provides that registration is\nconclusive evidence of the registrant\xe2\x80\x99s exclusive right to use the mark, subject to the conditions of \xc2\xa7 15\nand the seven defenses enumerated in \xc2\xa7 33(b) itself.* Mere descriptiveness is not recognized by either\n\xc2\xa7 15 or \xc2\xa7 33(b) as a basis for challenging an incontestable mark.\n[12] The statutory provisions that prohibit registration of a merely descriptive mark but do not\nallow an incontestable mark to be challenged on this ground cannot be attributed to inadvertence by\nCongress. The Conference Committee rejected an amendment that would have denied registration to\nany descriptive mark, and instead retained the provisions allowing registration of a merely descriptive\nmark that has acquired secondary meaning. See H.R.Conf.Rep. No. 2322, 79th Cong., 2d Sess., 4 (1946)\n(explanatory statement of House managers). The Conference Committee agreed to an amendment\nproviding that no incontestable right can be acquired in a mark that is a common descriptive, i.e.,\ngeneric, term. Id., at 5. Congress could easily have denied incontestability to merely descriptive marks\nas well as to generic marks had that been its intention.\n[13] The Court of Appeals in discussing the offensive/defensive distinction observed that\nincontestability protects a registrant against cancellation of his mark. 718 F.2d, at 331. This\nobservation is incorrect with respect to marks that become generic or which otherwise may be\ncanceled at any time pursuant to \xc2\xa7\xc2\xa7 14(c) and (e). Moreover, as applied to marks that are merely\ndescriptive, the approach of the Court of Appeals makes incontestable status superfluous. Without\nregard to its incontestable status, a mark that has been registered five years is protected from\ncancellation except on the grounds stated in \xc2\xa7\xc2\xa7 14(c) and (e). Pursuant to \xc2\xa7 14, a mark may be canceled\non the grounds that it is merely descriptive only if the petition to cancel is filed within five years of the\ndate of registration. \xc2\xa7 14(a), 15 U.S.C. \xc2\xa7 1064(a). The approach adopted by the Court of Appeals implies\nthat incontestability adds nothing to the protections against cancellation already provided in \xc2\xa7 14. The\ndecision below not only lacks support in the words of the statute; it effectively emasculates \xc2\xa7 33(b)\nunder the circumstances of this case.\nIII\n[14] Nothing in the legislative history of the Lanham Act supports a departure from the plain\nlanguage of the statutory provisions concerning incontestability. Indeed, a conclusion that\nincontestable status can provide the basis for enforcement of the registrant\xe2\x80\x99s exclusive right to use a\ntrade or service mark promotes the goals of the statute. The Lanham Act provides national protection\nof trademarks in order to secure to the owner of the mark the goodwill of his business and to protect\nthe ability of consumers to distinguish among competing producers. See S.Rep. No. 1333, at 3, 5.\nNational protection of trademarks is desirable, Congress concluded, because trademarks foster\ncompetition and the maintenance of quality by securing to the producer the benefits of good\nreputation. Id., at 4. The incontestability provisions, as the proponents of the Lanham Act emphasized,\nprovide a means for the registrant to quiet title in the ownership of his mark. See Hearings on H.R. 82\nbefore the Subcommittee of the Senate Committee on Patents, 78th Cong., 2d Sess., 21 (1944) (remarks\nof Rep. Lanham); id., at 21, 113 (testimony of Daphne Robert, ABA Committee on Trade Mark\nLegislation); Hearings on H.R. 102 et al. before the Subcommittee on Trade-Marks of the House\nCommittee on Patents, 77th Cong., 1st Sess., 73 (1941) (remarks of Rep. Lanham). The opportunity to\nobtain incontestable status by satisfying the requirements of \xc2\xa7 15 thus encourages producers to\ncultivate the goodwill associated with a particular mark. This function of the incontestability\nprovisions would be utterly frustrated if the holder of an incontestable mark could not enjoin\n*\n\n{Lanham Act \xc2\xa7 33(b) has since been amended to list nine defenses.}\n283\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ninfringement by others so long as they established that the mark would not be registrable but for its\nincontestable status.\n....\nIV\n[15] Respondent argues that the decision by the Court of Appeals should be upheld because\ntrademark registrations are issued by the Patent Office after an ex parte proceeding and generally\nwithout inquiry into the merits of an application. This argument also unravels upon close examination.\nThe facts of this case belie the suggestion that registration is virtually automatic. The Patent Office\ninitially denied petitioner\xe2\x80\x99s application because the examiner considered the mark to be merely\ndescriptive. Petitioner sought reconsideration and successfully persuaded the Patent Office that its\nmark was registrable.\n[16] More generally, respondent is simply wrong to suggest that third parties do not have an\nopportunity to challenge applications for trademark registration. If the Patent Office examiner\ndetermines that an applicant appears to be entitled to registration, the mark is published in the Official\nGazette. \xc2\xa7 12(a), 15 U.S.C. \xc2\xa7 1062(a). Within 30 days of publication, any person who believes that he\nwould be damaged by registration of the mark may file an opposition. \xc2\xa7 13, 15 U.S.C. \xc2\xa7 1063.\nRegistration of a mark provides constructive notice throughout the United States of the registrant\xe2\x80\x99s\nclaim to ownership. \xc2\xa7 22, 15 U.S.C. \xc2\xa7 1072. Within five years of registration, any person who believes\nthat he is or will be damaged by registration may seek to cancel a mark. \xc2\xa7 14(a), 15 U.S.C. \xc2\xa7 1064(a). A\nmark may be canceled at any time for certain specified grounds, including that it was obtained\nfraudulently or has become generic. \xc2\xa7 14(c), 15 U.S.C. \xc2\xa7 1064(c).\n[17] The Lanham Act, as the dissent notes, post, at 673 \xe2\x80\x93 674, authorizes courts to grant\ninjunctions \xe2\x80\x9caccording to principles of equity.\xe2\x80\x9d \xc2\xa7 34, 15 U.S.C. \xc2\xa7 1116. Neither respondent nor the\nopinion of the Court of Appeals relies on this provision to support the holding below. Whatever the\nprecise boundaries of the courts\xe2\x80\x99 equitable power, we do not believe that it encompasses a substantive\nchallenge to the validity of an incontestable mark on the grounds that it lacks secondary meaning. To\nconclude otherwise would expand the meaning of \xe2\x80\x9cequity\xe2\x80\x9d to the point of vitiating the more specific\nprovisions of the Lanham Act.7 Similarly, the power of the courts to cancel registrations and \xe2\x80\x9cto\notherwise rectify the register,\xe2\x80\x9d \xc2\xa7 37, 15 U.S.C. \xc2\xa7 1119, must be subject to the specific provisions\nconcerning incontestability. In effect, both respondent and the dissent argue that these provisions offer\ninsufficient protection against improper registration of a merely descriptive mark, and therefore the\nvalidity of petitioner\xe2\x80\x99s mark may be challenged notwithstanding its incontestable status. Our\nresponsibility, however, is not to evaluate the wisdom of the legislative determinations reflected in the\nstatute, but instead to construe and apply the provisions that Congress enacted.\nV\n[18] The Court of Appeals did not attempt to justify its decision by reference to the language or\nlegislative history of the Lanham Act. Instead, the court relied on its previous decision in Tillamook\nCounty Creamery v. Tillamook Cheese & Dairy Assn., 345 F.2d 158, 163 (CA9), cert. denied, 382 U.S. 903\n(1965), for the proposition that a registrant may not rely on incontestability to enjoin the use of the\nmark by others. Examination of Tillamook, however, reveals that there is no persuasive justification for\nthe judicially created distinction between offensive and defensive use of an incontestable mark . . . .\nWe note, however, that we need not address in this case whether traditional equitable defenses\nsuch as estoppel or laches are available in an action to enforce an incontestable mark. See generally\nComment, Incontestable Trademark Rights and Equitable Defenses in Infringement Litigation, 66\nMinn.L.Rev. 1067 (1982).\n7\n\n284\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nVI\n[19] We conclude that the holder of a registered mark may rely on incontestability to enjoin\ninfringement and that such an action may not be defended on the grounds that the mark is merely\ndescriptive. Respondent urges that we nevertheless affirm the decision below based on the \xe2\x80\x9cprior use\xe2\x80\x9d\ndefense recognized by \xc2\xa7 33(b)(5) of the Lanham Act. Alternatively, respondent argues that there is no\nlikelihood of confusion and therefore no infringement justifying injunctive relief. The District Court\nrejected each of these arguments, but they were not addressed by the Court of Appeals. 718 F.2d, at\n331\xe2\x80\x93332, n. 4. That court may consider them on remand. The judgment of the Court of Appeals is\nreversed, and the case is remanded for further proceedings consistent with this opinion.\nIt is so ordered.\nJustice STEVENS, dissenting.\n[1] In trademark law, the term \xe2\x80\x9cincontestable\xe2\x80\x9d is itself somewhat confusing and misleading\nbecause the Lanham Act expressly identifies over 20 situations in which infringement of an allegedly\nincontestable mark is permitted.1 Moreover, in \xc2\xa7 37 of the Act, Congress unambiguously authorized\njudicial review of the validity of the registration \xe2\x80\x9cin any action involving a registered mark.\xe2\x80\x9d The\nproblem in this case arises because of petitioner\xe2\x80\x99s attempt to enforce as \xe2\x80\x9cincontestable\xe2\x80\x9d a mark that\nCongress has plainly stated is inherently unregistrable.\n[2] The mark \xe2\x80\x9cPark \xe2\x80\x98N Fly\xe2\x80\x9d is at best merely descriptive in the context of airport parking. Section 2\nof the Lanham Act plainly prohibits the registration of such a mark unless the applicant proves to the\nCommissioner of the Patent and Trademark Office that the mark \xe2\x80\x9chas become distinctive of the\napplicant\xe2\x80\x99s goods in commerce,\xe2\x80\x9d or to use the accepted shorthand, that it has acquired a \xe2\x80\x9csecondary\nmeaning.\xe2\x80\x9d See 15 U.S.C. \xc2\xa7\xc2\xa7 1052(e), (f). Petitioner never submitted any such proof to the\nCommissioner, or indeed to the District Court in this case. Thus, the registration plainly violated the\nAct.\n[3] The violation of the literal wording of the Act also contravened the central purpose of the\nentire legislative scheme. Statutory protection for trademarks was granted in order to safeguard the\ngoodwill that is associated with particular enterprises. A mark must perform the function of\ndistinguishing the producer or provider of a good or service in order to have any legitimate claim to\nprotection. A merely descriptive mark that has not acquired secondary meaning does not perform that\nfunction because it simply \xe2\x80\x9cdescribes the qualities or characteristics of a good or service.\xe2\x80\x9d Ante, at 662.\nNo legislative purpose is served by granting anyone a monopoly in the use of such a mark.\n[4] Instead of confronting the question whether an inherently unregistrable mark can provide the\nbasis for an injunction against alleged infringement, the Court treats the case as though it presented\nthe same question as Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (CA7), cert. denied, 429 U.S.\n830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976), a case in which the merely descriptive mark had an obvious and\nwell-established secondary meaning. In such a case, I would agree with the Court that the descriptive\ncharacter of the mark does not provide an infringer with a defense. In this case, however, the\nSection 33(b) enumerates seven categories of defenses to an action to enforce an incontestable\nmark. See 15 U.S.C. \xc2\xa7 1115(b), quoted ante, at 662, n. 3. In addition, a defendant is free to argue that a\nmark should never have become incontestable for any of the four reasons enumerated in \xc2\xa7 15. 15 U.S.C.\n\xc2\xa7 1065. Moreover, \xc2\xa7 15 expressly provides that an incontestable mark may be challenged on any of the\ngrounds set forth in subsections (c) and (e) of \xc2\xa7 14, 15 U.S.C. \xc2\xa7 1064, and those sections, in turn,\nincorporate the objections to registrability that are defined in \xc2\xa7\xc2\xa7 2(a), 2(b), and 2(c) of the Act. 15\nU.S.C. \xc2\xa7\xc2\xa7 1052(a), (b), and (c).\n1\n\n285\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nprovisions of the Act dealing with incontestable marks do not support the result the Court has reached.\nI shall first explain why I agree with the conclusion that the Court of Appeals reached; I shall then\ncomment on each of the three arguments that the Court advances in support of its contrary conclusion.\nI\n[5] The word \xe2\x80\x9cincontestable\xe2\x80\x9d is not defined in the Act. Nor, surprisingly, is the concept explained\nin the Committee Reports on the bill that was enacted in 1946. The word itself implies that it was\nintended to resolve potential contests between rival claimants to a particular mark. And, indeed, the\ntestimony of the proponents of the concept in the Committee hearings that occurred from time to time\nduring the period when this legislation was being considered reveals that they were primarily\nconcerned with the problem that potential contests over the ownership of registrable marks might\npresent. No one ever suggested that any public purpose would be served by granting incontestable\nstatus to a mark that should never have been accepted for registration in the first instance.\n[6] In those hearings the witnesses frequently referred to incontestability as comparable to a\ndecree quieting title to real property. Such a decree forecloses any further contest over ownership of\nthe property, but it cannot create the property itself. Similarly the incontestability of a trademark\nprecludes any competitor from contesting the registrant\xe2\x80\x99s ownership, but cannot convert unregistrable\nsubject matter into a valid mark. Such a claim would be clearly unenforceable.\n....\n[7] The legislative history of the incontestability provisions indicates that Congress did not intend\nto prevent the use of mere descriptiveness as a substantive defense to a claim of infringement if the\nmark has not acquired secondary meaning . . . .\n[8] . . . In light of this legislative history, it is apparent that Congress could not have intended that\nincontestability should preserve a merely descriptive trademark from challenge when the statutory\nprocedure for establishing secondary meaning was not followed and when the record still contains no\nevidence that the mark has ever acquired a secondary meaning.\n[9] If the registrant of a merely descriptive mark complies with the statutory requirement that\nprima facie evidence of secondary meaning must be submitted to the Patent and Trademark Office, it is\nentirely consistent with the policy of the Act to accord the mark incontestable status after an additional\nfive years of continued use. For if no rival contests the registration in that period, it is reasonable to\npresume that the initial prima facie showing of distinctiveness could not be rebutted. But if no proof of\nsecondary meaning is ever presented, either to the Patent and Trademark Office or to a court, there is\nsimply no rational basis for leaping to the conclusion that the passage of time has transformed an\ninherently defective mark into an incontestable mark.\n[10] No matter how dedicated and how competent administrators may be, the possibility of error\nis always present,12 especially in nonadversary proceedings. For that reason the Court normally\nassumes that Congress intended agency action to be subject to judicial review unless the contrary\n\nRecently, Gerald J. Mossinghoff, Assistant Secretary and Commissioner of Patents and\nTrademarks, gave the following testimony before Congress: \xe2\x80\x9c[O]ne of the biggest problems we have\nhad is that, at any one time, about 7 percent of our 25 million documents are either missing or misfiled.\nThe paper system was set up in 1836 and has remained virtually unchanged since then. During that\ntime it simply has deteriorated to the point where 7 percent of the documents are missing.\xe2\x80\x9d Hearing\nbefore the Subcommittee on Patents, Copyrights and Trademarks of the Senate Committee on the\nJudiciary, 98th Cong., 1st Sess., 5 (1983).\n12\n\n286\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nintent is expressed in clear and unambiguous language. In this statute Congress has expressed no such\nintent. On the contrary, it has given the courts the broadest possible authority to determine the validity\nof trademark registrations \xe2\x80\x9cin any action involving a registered mark.\xe2\x80\x9d \xc2\xa7 [37, 15 U.S.C. \xc2\xa7 1119]. The\nexercise of that broad power of judicial review should be informed by the legislative purposes that\nmotivated the enactment of the Lanham Act.\n[11] Congress enacted the Lanham Act \xe2\x80\x9cto secure trade-mark owners in the goodwill which they\nhave built up.\xe2\x80\x9d [S.Rep. No. 1333, at 5] But without a showing of secondary meaning, there is no basis\nupon which to conclude that petitioner has built up any goodwill that is secured by the mark \xe2\x80\x9cPark \xe2\x80\x98N\nFly.\xe2\x80\x9d In fact, without a showing of secondary meaning, we should presume that petitioner\xe2\x80\x99s business\nappears to the consuming public to be just another anonymous, indistinguishable parking lot. When\nenacting the Lanham Act, Congress also wanted to \xe2\x80\x9cprotect the public from imposition by the use of\ncounterfeit and imitated marks and false trade descriptions.\xe2\x80\x9d [Ibid.] Upon this record there appears no\ndanger of this occurrence, and as a practical matter, without any showing that the public can\nspecifically identify petitioner\xe2\x80\x99s service, it seems difficult to believe that anyone would imitate\npetitioner\xe2\x80\x99s marks, or that such imitation, even if it occurred, would be likely to confuse anybody.\n[12] On the basis of the record in this case, it is reasonable to infer that the operators of parking\nlots in the vicinity of airports may make use of the words \xe2\x80\x9cpark and fly\xe2\x80\x9d simply because those words\nprovide a ready description of their businesses, rather than because of any desire to exploit\npetitioner\xe2\x80\x99s goodwill. There is a well-recognized public interest in prohibiting the commercial\nmonopolization of phrases such as \xe2\x80\x9cpark and fly.\xe2\x80\x9d When a business claims the exclusive right to use\nwords or phrases that are a part of our common vocabulary, this Court should not depart from the\nstatutorily mandated authority to \xe2\x80\x9crectify the register,\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1119, absent a clear congressional\nmandate. Language, even in a commercial context, properly belongs to the public unless Congress\ninstructs otherwise. In this case we have no such instruction; in fact, the opposite command guides our\nactions: Congress\xe2\x80\x99 clear insistence that a merely descriptive mark, such as \xe2\x80\x9cPark \xe2\x80\x98N Fly\xe2\x80\x9d in the context\nof airport parking, remain in the public domain unless secondary meaning is proved.\n[13] The basic purposes of the Act, the unambiguous congressional command that no merely\ndescriptive mark should be registered without prior proof that it acquired secondary meaning, and the\nbroad power of judicial review granted by \xc2\xa7 37 combine to persuade me that the registrant of a merely\ndescriptive mark should not be granted an injunction against infringement without ever proving that\nthe mark acquired secondary meaning.\nII\n[14] The Court relies on three different, though not unrelated, arguments to support its negative\nanswer to the question \xe2\x80\x9cwhether an action to enjoin the infringement of an incontestable mark may be\ndefended on the grounds that the mark is merely descriptive,\xe2\x80\x9d ante, at 660: (1) the language of \xc2\xa7 33(b)\nis too plain to prevent any other conclusion; (2) the legislative history indicates that Congress decided\nnot to deny incontestable status to merely descriptive marks; and (3) the practical value of\nincontestable status would be nullified if the defense were recognized. Each of these arguments is\nunpersuasive.\nThe Plain Language\n[15] After the right to use a registered mark has become incontestable, \xc2\xa7 33(b) provides that \xe2\x80\x9cthe\nregistration shall be conclusive evidence of the registrant\xe2\x80\x99s exclusive right to use the registered mark.\xe2\x80\x9d\n15 U.S.C. \xc2\xa7 1115(b). Read in isolation, this provision surely does lend support to the Court\xe2\x80\x99s holding.\nIndeed, an isolated and literal reading of this language would seem to foreclose any nonstatutory\ndefense to an action to enjoin the infringement of an incontestable mark. The Court, however, wisely\nrefuses to adopt any such rigid interpretation of \xc2\xa7 33(b).\n\n287\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[16] An examination of other provisions of the Act plainly demonstrates that no right to injunctive\nrelief against infringement automatically follows from the achievement of incontestable status. Thus,\n\xc2\xa7 34 states that courts with proper jurisdiction \xe2\x80\x9cshall have power to grant injunctions, according to the\nprinciples of equity and upon such terms as the court may deem reasonable.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1116. If a\nregistrant establishes the violation of any right, \xc2\xa7 35 additionally emphasizes that any recovery shall be\n\xe2\x80\x9csubject to the principles of equity.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1117. These sections are in addition to the broad power\nthat \xc2\xa7 37 grants to courts in \xe2\x80\x9cany action involving a registered mark\xe2\x80\x9d to \xe2\x80\x9cdetermine the right to\nregistration, order the cancelation of registrations, in whole or in part, restore canceled registrations,\nand otherwise rectify the register with respect to the registrations of any party to the action.\xe2\x80\x9d 15 U.S.C.\n\xc2\xa7 1119. Moreover, it is well established that injunctions do not issue as a matter of course, and that\n\xe2\x80\x9cthe essence of equity jurisdiction has been the power of the Chancellor to do equity,\xe2\x80\x9d [Hecht Co. v.\nBowles, 321 U.S. 321, 329 (1944),] particularly when an important public interest is involved.\n[17] In exercising its broad power to do equity, the federal courts certainly can take into account\nthe tension between the apparent meaning of \xc2\xa7 33(b) and the plain command in \xc2\xa7\xc2\xa7 2(e), (f) of the Act\nprohibiting the registration of a merely descriptive mark without any proof of secondary meaning.\nBecause it would be { }demonstrably at odds with the intent of [Congress]{ } to grant incontestable\nstatus to a mark that was not eligible for registration in the first place, the Court is surely authorized to\nrequire compliance with \xc2\xa7 2(f) before granting relief on the basis of \xc2\xa7 33(b).\nThe Legislative History\n[18] The language of \xc2\xa7\xc2\xa7 2(e), (f) expressly demonstrates Congress\xe2\x80\x99 concern over granting\nmonopoly privileges in merely descriptive marks. However, its failure to include mere descriptiveness\nin its laundry list of grounds on which incontestability could be challenged is interpreted by the Court\ntoday as evidence of congressional approval of incontestable status for all merely descriptive marks.\n[19] This history is unpersuasive because it is perfectly clear that the failure to include mere\ndescriptiveness among the grounds for challenging incontestability was based on the understanding\nthat such a mark would not be registered without a showing of secondary meaning. See supra, at 618.\nTo read Congress\xe2\x80\x99 failure as equivalent to an endorsement of incontestable status for merely\ndescriptive marks without secondary meaning can only be described as perverse.\nThe Practical Argument\n[20] The Court suggests that my reading of the Act \xe2\x80\x9ceffectively emasculates \xc2\xa7 33(b) under the\ncircumstances of this case.\xe2\x80\x9d Ante, at 663. But my reading would simply require the owner of a merely\ndescriptive mark to prove secondary meaning before obtaining any benefit from incontestability. If a\nmark is in fact \xe2\x80\x9cdistinctive of the applicant\xe2\x80\x99s goods in commerce\xe2\x80\x9d as \xc2\xa7 2(f) requires, that burden should\nnot be onerous. If the mark does not have any such secondary meaning, the burden of course could not\nbe met. But if that be the case, the purposes of the Act are served, not frustrated, by requiring\nadherence to the statutory procedure mandated by Congress.\n[21] In sum, if petitioner had complied with \xc2\xa7 2(f) at the time of its initial registration, or if it had\nbeen able to prove secondary meaning in this case, I would agree with the Court\xe2\x80\x99s disposition. I cannot,\nhowever, subscribe to its conclusion that the holder of a mark which was registered in violation of an\nunambiguous statutory command \xe2\x80\x9cmay rely on incontestability to enjoin infringement.\xe2\x80\x9d Ante, at 667;\nsee also ante, at 663. Accordingly, I respectfully dissent.\nE.\n\nThe Geographic Extent of Trademark Rights\n\nWe consider in this section the geographical extent of trademark rights within the territorial\nborders of the United States. Under the common law, priority of usage has long been the basis of the\ngeographic extent of a claimant\xe2\x80\x99s rights; first in time is first in right. The Lanham Act provides\nregistered marks with the benefit of very important exceptions to this common law principle. We begin\n288\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nfirst with the geographic extent of rights in unregistered, common law marks. We then turn to the\ngeographic extent of rights in federally registered marks.\n1.\n\nThe Geographic Extent of Rights in Unregistered Marks\n\nA classic hypothetical in American trademark law involves the question of whether the owner of\nan unregistered mark used in, say, Anchorage, Alaska, can assert exclusive rights in that mark beyond\nthe borders of Anchorage. Can the proprietor of the unregistered mark ARCTIC COFFEE for a cafe in\nAnchorage, Alaska prevent someone in Miami, Florida from later opening a cafe under the same name?\nAnd should it make a difference if the proprietor of the Miami coffee shop knew of the existence of the\nARCTIC COFFEE cafe in Anchorage when she opened her cafe in Miami?\nIn the cases Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) (commonly known as the Tea\nRose case), and United Drug Co. v. Theodore Rectanus, 248 U.S. 90 (1918), the Supreme Court\nestablished the so-called \xe2\x80\x9cTea Rose-Rectanus rule,\xe2\x80\x9d which holds that:\n(1) The territorial scope of an unregistered mark is limited to the territory in which the mark is\nknown and recognized by relevant consumers in that territory.\n(2) The senior user of an unregistered mark cannot stop the use of a territorially remote good\nfaith junior user who was first to use the mark in that remote territory.\nMCCARTHY \xc2\xa7 26.2. The result of the Tea Rose-Rectanus rule is that, for unregistered marks, the first\nperson to adopt the mark in the United States and subsequent good faith remote junior users may end\nup coexisting in the national marketplace, with each entity claiming exclusive rights in the mark in the\ngeographic area in which each was the first to use the mark. Thus, the Anchorage and Miami cafes both\nusing the mark ARCTIC COFFEE may coexist, provided that the Miami cafe adopted its mark in good faith\n(the standard for which we will consider below). Furthermore, barring federal registration by either\nthe Anchorage or the Miami cafe, the two firms\xe2\x80\x99 exclusive rights will expand across the country only in\nthose areas in which each firm is the first to use the mark in good faith.\nThe case below, Nat\'l Ass\'n for Healthcare Commc\'ns, Inc. v. Cent. Arkansas Area Agency on Aging,\nInc., 257 F.3d 732, 734 (8th Cir. 2001), offers a relatively straightforward example of the application of\nthe Tea Rose-Rectanus doctrine.\na.\n\nThe Tea Rose-Rectanus Doctrine Applied\n\nThe six counties where Central Arkansas Area Agency on Aging, Inc. uses its mark\n289\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nNational Association for Healthcare Communications, Inc. v. Central Arkansas Area Agency on\nAging, Inc.\n257 F.3d 732 (8th Cir. 2001)\nLOKEN, Circuit Judge.\n[1] This is an action under the Lanham Act and state law to determine which party has the\nsuperior right to use the service mark \xe2\x80\x9cCareLink\xe2\x80\x9d in Arkansas. The National Association for Healthcare\nCommunications, Inc. (\xe2\x80\x9cHealthcom\xe2\x80\x9d) was the first to use the mark nationally. It has a federal service\nmark registration pending but must rely in this case on its common law trademark rights as enforced\nunder the Lanham Act. See 15 U.S.C. \xc2\xa7 1125(a). The Central Arkansas Area Agency on Aging, Inc. (\xe2\x80\x9cCA\xe2\x80\x9d)\nwas the first to use the mark in six counties in central Arkansas and has registered its mark under the\nArkansas trademark statutes. See Ark.Code Ann. Tit. 4, Ch. 71 (Michie Supp.1999). The district court\nheld that CA as first user prevailed in its six-county trade area and that CA\xe2\x80\x99s state registration entitled\nit to statewide relief. Accordingly, the court enjoined Healthcom from using the CareLink mark\nanywhere in Arkansas. National Ass\xe2\x80\x99n for Healthcare Commun., Inc. v. Central Ark. Area Agency on Aging,\nInc., 119 F.Supp.2d 884 (E.D.Ark.2000). Healthcom appeals. Agreeing that CA is entitled to injunctive\nrelief, but limited to the six Arkansas counties where it has used the mark, we remand to the district\ncourt with instructions to modify the injunction.\nI.\n[2] The Parties\xe2\x80\x99 Use of the CareLink Mark. Healthcom is an Illinois corporation that provides\nremote electronic monitoring devices and emergency response services for at-home clients in twentyfive States, including Arkansas. Healthcom solicits local hospitals and home health care agencies to\nbecome members of Healthcom\xe2\x80\x99s National Association for Emergency Response, Inc. Each member\xe2\x80\x99s\nsubscribers (individual clients or patients) are then offered a variety of CareLink at-home emergency\nresponse services. A CareLink program typically consists of monitoring equipment, usually leased by\nHealthcom to the member health care provider or directly to the subscriber, plus a round-the-clock\nsupport center operated by Healthcom, which responds to the subscriber\xe2\x80\x99s emergency calls in a\nprearranged fashion and may monitor medical equipment in the subscriber\xe2\x80\x99s home or monitor the\nwhereabouts of an at-risk subscriber, such as one suffering from Alzheimer\xe2\x80\x99s disease. Each providermember markets CareLink programs and equipment to its patients, bills the patients, and pays\nHealthcom a monthly fee for each patient using CareLink services.\n[3] CA is a private, nonprofit Arkansas corporation organized in 1979 to provide a broad range of\nsupport services to elderly and disabled persons in a six-county region in central Arkansas. CA\xe2\x80\x99s\nmission is to provide cost-effective, community-based alternatives to nursing home care. CA has 750\nemployees and 300 volunteers who assist some 10,000 elderly persons in the region. CA has never\nprovided personal emergency response services, but it has occasionally paid for such services being\nprovided to CA clients. In January 1995, CA adopted the trade name \xe2\x80\x9cCareLink\xe2\x80\x9d to use in lieu of its\ncorporate name, which had proved awkward and hard to remember, and which created the misimpression that CA is a government agency.\n[4] Facts relating to first usage. Healthcom began marketing emergency response services under\nthe CareLink service mark in 1991 or early 1992. From 1992 to 1995, Healthcom spent an estimated\n$50,000 attempting to sell its services in Arkansas. Despite these efforts, during this period Healthcom\nmade only one $385 sale in Arkansas, to an end user who stopped using its CareLink service in April\n1994. Healthcom had no Arkansas customers from April 1994 to September 1995, when it entered into\na contract with North Arkansas Regional Medical Center in Harrison. By July 1999, Healthcom had\ncontracts with seven Arkansas health care providers and served 350 individual subscribers.\nHealthcom estimated that its total Arkansas revenues in 1999 would be just over $82,000. Healthcom\nhas never had a customer for its CareLink services located within the six-county region served by CA.\nHealthcom applied for federal trademark registration on May 4, 1999, and its application is pending.\n290\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[5] CA adopted the CareLink trade name and logo in early 1995 and has prominently displayed\nthe logo on stationery, business cards, client information materials, and other publicity materials. CA\nregistered its CareLink mark with the Arkansas Secretary of State on March 23, 1995, and has used the\nmark in promoting all of its services, except hospice care. CA\xe2\x80\x99s annual revenues grew from $5,000,000\nto $12,000,000 from early 1995 to mid\xe2\x80\x931999. Although CA derives most of its revenues from\ngovernment grants, in 1999 it received approximately $138,000 in private donations and an estimated\n$250,000 from clients able to pay for its services. All of CA\xe2\x80\x99s clients reside in its six-county region, but\nits activities are publicized beyond central Arkansas through news coverage, telephone listings,\nadvertisements, and a monthly column in an Arkansas newspaper for the elderly.\n[6] CA did not know of Healthcom\xe2\x80\x99s prior usage when it adopted the CareLink name and logo and\nreceived a state registration in early 1995. When CA learned that the North Arkansas Regional Medical\nCenter was using Healthcom\xe2\x80\x99s CareLink mark for emergency response services in northern Arkansas,\nCA sent a cease-and-desist letter to that provider. The parties were unable to resolve the resulting\ndispute. Healthcom then commenced this action, alleging common law trademark infringement and\nunfair competition in violation of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a), and seeking an injunction\nbarring CA from using the mark and cancellation of CA\xe2\x80\x99s state registration. CA counterclaimed, alleging\nunfair competition under the Lanham Act and trademark infringement under Ark.Code Ann. \xc2\xa7 4\xe2\x80\x9371\xe2\x80\x93\n212, and seeking an injunction prohibiting Healthcom from using its CareLink mark in Arkansas or,\nalternatively, in CA\xe2\x80\x99s six-county region.\n[7] Deciding the case on cross motions for summary judgment, the district court dismissed\nHealthcom\xe2\x80\x99s claims because its use of the CareLink mark in Arkansas prior to CA\xe2\x80\x99s state registration\nwas de minimis. The court granted CA a permanent injunction prohibiting Healthcom from using the\nmark anywhere in Arkansas because CA\xe2\x80\x99s use of the mark has been substantial, because a statewide\ninjunction is necessary \xe2\x80\x9cto prevent confusion among consumers and to prevent Healthcom from\npassing off its services as those of [CA],\xe2\x80\x9d and because CA\xe2\x80\x99s state registration entitles it to a statewide\ninjunction. Healthcom appeals, arguing that its common law trademark is entitled to priority because it\nfirst used the mark in Arkansas. Alternatively, Healthcare argues the district court abused its\ndiscretion in granting CA an overly broad injunction.\nII.\n[8] Nearly a century ago, the Supreme Court established what is now called the Tea Rose/Rectanus\ndoctrine\xe2\x80\x94the first user of a common law trademark may not oust a later user\xe2\x80\x99s good faith use of an\ninfringing mark in a market where the first user\xe2\x80\x99s products or services are not sold. See United Drug Co.\nv. Theodore Rectanus Co., 248 U.S. 90, 100\xe2\x80\x9301 (1918); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403,\n415 (1916). The rationale is a core principle of trademark law: the owner of a mark may not\n\xe2\x80\x9cmonopolize markets that his trade has never reached and where the mark signifies not his goods but\nthose of another.\xe2\x80\x9d Hanover Star Milling, 240 U.S. at 416. That essential principle applies even when the\nfirst user has federally registered its mark under the Lanham Act, with one important modification: the\nowner of a registered mark has the right to expand its use into a new market unless an infringing user\nhad penetrated that market prior to registration. See Natural Footwear Ltd. v. Hart, Schaffner & Marx,\n760 F.2d 1383, 1395 (3d Cir.); 15 U.S.C. \xc2\xa7 1072.\n[9] In this case we must apply the Tea Rose/Rectanus doctrine in resolving two distinct inquiries.\nFirst, we must determine whether Healthcom, as the first user of a CareLink common law mark\nelsewhere in the country, is entitled by reason of its own market penetration to oust CA from any area\nin Arkansas. Second, to the extent Healthcom failed to prove first use in Arkansas, we must determine\nwhether CA, as owner of a state-registered mark used only in six counties, is entitled to statewide\ninjunctive relief against Healthcom\xe2\x80\x99s present use of its mark.\nA.\n291\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[10] It is undisputed that, in early 1995, CA adopted the CareLink mark in good faith, without\nknowledge of Healthcom\xe2\x80\x99s prior use. To be entitled to injunctive relief against CA\xe2\x80\x99s subsequent good\nfaith use, Healthcom must prove that its prior use of the mark penetrated the geographic market in\nquestion. In determining whether Healthcom achieved the necessary market penetration, we apply the\nfactors identified in our often-cited Sweetarts cases:\n[Healthcom\xe2\x80\x99s] dollar value of sales at the time [CA] entered the market, number of\ncustomers compared to the population of the state, relative and potential growth of sales,\nand length of time since significant sales. Though the market penetration need not be\nlarge to entitle [Healthcom] to protection, it must be significant enough to pose the real\nlikelihood of confusion among the consumers in that area.\nSweetarts v. Sunline, Inc., 380 F.2d 923, 929 (8th Cir. 1967); Sweetarts v. Sunline, Inc., 436 F.2d 705, 708\n(8th Cir. 1971) (citation omitted). Where the first user\xe2\x80\x99s activities in a remote area are \xe2\x80\x9cso small,\nsporadic, and inconsequential\xe2\x80\x9d that its market penetration is de minimis, the first user is not entitled to\nprotection against a later user\xe2\x80\x99s good faith adoption of the mark in that area. Sweetarts, 380 F.2d at\n929.\n[11] Healthcom argues that it penetrated the Arkansas market through its one sale to an end user\nin 1992, its seven provider-member contracts and 350 subscribers since the fall of 1995, and its\ncontinuous advertising and marketing efforts beginning in 1992. Healthcom errs in assuming without\nproof that the entire State of Arkansas is a single geographic market for these purposes. CA adopted its\nCareLink mark for use in six counties in central Arkansas, not the entire State. Healthcom has never\nmade a sale in that area, nor has it even attempted to prove that CA\xe2\x80\x99s use of the mark in its region is\ncausing a likelihood of confusion elsewhere in the State. For this reason alone, Healthcom has not\npenetrated CA\xe2\x80\x99s six-county trade area, and the district court properly denied Healthcom injunctive\nrelief against CA\xe2\x80\x99s use in that area.\n[12] This leaves the question whether Healthcom is entitled to injunctive relief as a prior user\nwith market penetration in any other part of Arkansas. We agree with the district court that\nHealthcom\xe2\x80\x99s one $385 sale long before CA\xe2\x80\x99s adoption of its mark was de minimis market penetration.\nThat leaves Healthcom\xe2\x80\x99s reliance on later sales and continuous advertising. CA argues that sales in\nArkansas after CA began using the mark are irrelevant, and that Healthcom\xe2\x80\x99s prior advertising may not\nbe used to satisfy the Sweetarts market penetration test. Those are strong arguments. The issue is\nwhether they warrant summary judgment.\n[13] Sweetarts expressly recognized that the market penetration issue is focused on the time\nwhen the later user entered the market. However, subsequent sales by the first user may establish a\ntrend of increased sales justifying a finding of market penetration. See Natural Footwear, 760 F.2d at\n1401. Likewise, while \xe2\x80\x9cadvertising alone is not sufficient to satisfy the significant market penetration\ntest of Sweetarts,\xe2\x80\x9d Flavor Corp. of Am. v. Kemin Indus., Inc., 493 F.2d 275, 284 (8th Cir. 1974), we are not\nprepared to say as a matter of law that a first user\xe2\x80\x99s highly focused local advertising, followed by initial\nsales shortly after a later user enters the market, may never satisfy the Sweetarts test. Compare Natural\nFootwear, 760 F.2d at 1402\xe2\x80\x9303; Nutri/System, Inc. v. Con\xe2\x80\x93Stan Indus., Inc., 809 F.2d 601, 604 (9th Cir.\n1987). Nevertheless, we need not decide whether CA is entitled to summary judgment on the market\npenetration issue statewide because Healthcom presented no evidence that CA is presently likely to\nenter areas of Arkansas beyond its six-county region, and no evidence that any customers or potential\ncustomers of Healthcom are actually confused, or likely to be confused, by CA\xe2\x80\x99s use of its CareLink\nmark in serving a six-county region where Healthcom does no business. In these circumstances, the\ndistrict court properly dismissed all of Healthcom\xe2\x80\x99s claims for relief. See generally Gaston\xe2\x80\x99s White River\nResort v. Rush, 701 F.Supp. 1431, 1435 (W.D.Ark.1988).\nB.\n292\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[14] Having concluded that Healthcom is not entitled to injunctive relief, we turn to CA\xe2\x80\x99s\ncounterclaim for injunctive relief and the district court\xe2\x80\x99s grant of a statewide injunction. As we have\nexplained, CA has superior common law rights in its six-county region, and it is a state-registered user\nof the CareLink mark. Therefore, under both the Lanham Act and the Arkansas trademark statute, CA is\nentitled to an injunction against an infringing use that is likely to cause confusion as to origin. See 15\nU.S.C. \xc2\xa7 1125(a)(1)(A); Ark.Code Ann. \xc2\xa7 4\xe2\x80\x9371\xe2\x80\x93212(1). . . .\n....\n[15] In summary, the absence of concrete evidence of likelihood of confusion outside of CA\xe2\x80\x99s sixcounty region makes it improvident to grant a statewide injunction on this record. Healthcom is now\nenjoined from using its CareLink mark in CA\xe2\x80\x99s trade area. If CA never expands beyond that area, this\ninjunction may be all the judicial action that is required. If CA does decide to expand, its statewide\nregistration puts Healthcom at risk of being ousted. But any future prayer by CA for a broader\ninjunction may raise issues that would be better resolved on a fuller fact record, such as whether\nHealthcom was the first user in any local market; whether the CareLink mark is descriptive and, if so,\nwhether CA\xe2\x80\x99s mark has become incontestable or has acquired secondary meaning; precisely what\nservices CA claims its registration covers; and whether there is likelihood of confusion between users\nof those services and users of Healthcom\xe2\x80\x99s emergency response services. . . . Additional issues would be\nraised if Healthcom\xe2\x80\x99s mark is granted federal registration. See Spartan Food Sys., Inc. v. HFS Corp., 813\nF.2d 1279, 1284 (4th Cir. 1987); Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 906\xe2\x80\x9307 (7th Cir. 1968).\n[16] We affirm the dismissal of Healthcom\xe2\x80\x99s claims and the grant of a permanent injunction\nbarring Healthcom\xe2\x80\x99s use of its CareLink mark in CA\xe2\x80\x99s six-county trade area. We reverse the grant of a\nstatewide injunction and remand to the district court for an appropriate modification of its Judgment\ndated January 31, 2000.\nComments and Questions\n1. The geographic scope of rights in unregistered descriptive marks. If the senior user\xe2\x80\x99s\nunregistered mark is a non-inherently distinctive mark, then the geographic scope of the senior\xe2\x80\x99s\nrights are limited to the area in which the mark possesses secondary meaning. A junior user will be\nenjoined from using the mark only in areas in which the senior user has already established secondary\nmeaning at the time the junior user first adopts the mark in those areas. See, e.g., Katz Drug Co. v. Katz,\n188 F.2d 696 (8th Cir. 1951). More generally, competitors using unregistered confusingly-similar\ndescriptive marks may end up in a \xe2\x80\x9crace to secondary meaning,\xe2\x80\x9d MCCARTHY \xc2\xa7 26:25, in which each\ncompetitor seeks to be the first to establish secondary meaning\xe2\x80\x94and thus exclusive rights\xe2\x80\x94in the\ndescriptive term in any particular area where the competitors are competing.\n2. What about internet use of the mark? Does the commercial use of a mark on an internet website\naccessible anywhere in the country establish national geographic common law rights for the mark?\nCourts have reasoned that common law rights based only on internet use should extend geographically\nonly so far as the mark owner can show actual market penetration. The owner can do so through\nevidence consisting of the internet protocol addresses of website visitors, the geographic location of\nonline buyers of goods or services bearing the mark, and other evidence that the website is not merely\naccessible, but has been accessed by consumers in any geographic areas at issue. See, e.g., Optimal Pets,\nInc. v. Nutri-Vet, LLC, 877 F. Supp. 2d 953, 962 (C.D. Cal. 2012) (\xe2\x80\x9cIn considering the adequacy of {the\nplaintiff\xe2\x80\x99s} proof of sufficient market penetration, evidence regarding internet sales and internet\nadvertising will be considered together with the evidence of sales and advertising in geographic areas.\nThus, a sale to a customer through the internet will be considered a sale in the geographical area in\nwhich the customer is located.\xe2\x80\x9d); id. at 964 (granting judgment as a matter of law to defendant on\nground that \xe2\x80\x9c[t]here could be no reasonable finding that [the plaintiff] has proven legally sufficient\n293\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmarket penetration to establish a common law trademark as to the entire United States or any\ngeographical area\xe2\x80\x9d).\n3. Tacking. Can a trademark owner modify the mark over time without loss of priority? If a newly\nmodified mark continues to create the \xe2\x80\x9csame, continuing commercial impression\xe2\x80\x9d as the previous mark\n(be it registered or unregistered) such that \xe2\x80\x9cconsumers generally would regard them as essentially the\nsame,\xe2\x80\x9d then the mark owner may claim the priority date of the previous mark. Brookfield\nCommunications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1048 (9th Cir. 1999). In such a\nsituation, the priority date of the previous mark is \xe2\x80\x9ctacked\xe2\x80\x9d on to the new mark. The standard for\ntacking is \xe2\x80\x9cexceedingly strict.\xe2\x80\x9d Id. See also Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir.\n2006) (holding that the plaintiff cannot tack earlier use of QUIKSILVER ROXY onto later use of ROXY\nbecause the marks did not create the same continuing commercial impression). In Hana Financial, Inc.\nv. Hana Bank, 135 S. Ct. 907 (2015), the Supreme Court held that the question of whether an earlier\nmark may be tacked on to a later mark is an issue of fact to be determined by the jury.\nb.\n\nThe Good Faith Standard in the Tea Rose-Rectanus Doctrine\n\nWhen a mark is being used on an unregistered basis by a common law senior user, what\nconstitutes good faith adoption of the same mark (for the same or confusingly-similar goods) by a\njunior user? All courts agree that if, as in the Central Arkansas case above, the junior user of an\nunregistered mark had no knowledge of the senior user\xe2\x80\x99s use at the time that the junior user adopted\nits mark, then the junior user adopted its mark in good faith. But what if the junior user did have\nknowledge of the senior user\xe2\x80\x99s use? As discussed below in Stone Creek, Inc. v. Omnia Italian Design, Inc.,\n875 F.3d 426 (9th Cir. 2017), the circuits are split on this question.\n\nStone Creek, Inc. v. Omnia Italian Design, Inc.\n875 F.3d 426 (9th Cir. 2017)\n{Stone Creek manufactured furniture and sold directly to consumers in five showrooms in the\nPhoenix, Arizona area. It adopted the mark STONE CREEK in a red oval for furniture in 1990 and obtained\nfederal registration of the mark in 2012. In 2003, Stone Creek and Omnia agreed that Omnia would\nmanufacture leather furniture branded with the STONE CREEK mark for sale in Stone Creek\xe2\x80\x99s showrooms.\nIn 2008, without Stone Creek\xe2\x80\x99s knowledge or authorization, Omnia began to supply furniture under the\nSTONE CREEK mark to Bon-Ton furniture stores in portions of Illinois, Indiana, Iowa, Michigan, Ohio,\nPennsylvania, and Wisconsin. For this purpose, Omnia copied the STONE CREEK logo directly from Stone\nCreek\xe2\x80\x99s materials and used the logo in a variety of sales materials and on warranty cards. In 2013,\nStone Creek learned of Omnia\xe2\x80\x99s conduct and filed suit.\nThe district court found no likelihood of confusion largely on the basis that the parties operated in\ngeographically separate marketing channels. Reversing, the Ninth Circuit found a likelihood of\nconfusion. It then turned to the issue of good faith under the Tea Rose-Rectanus doctrine.\nNote that, in essence, Omnia was an \xe2\x80\x9cintermediate junior user\xe2\x80\x9d of the mark\xe2\x80\x94i.e., it adopted the\nmark at a time intermediate between Stone Creek\xe2\x80\x99s first use of the mark and its eventual registration\nof the mark. As we will discuss further in the next section, Lanham Act \xc2\xa7 33(b)(5), 15 U.S.C.\n\xc2\xa7 1115(b)(5), allows such intermediate junior users to continue to use their mark after the senior user\nhas registered it, but only if the intermediate junior user adopted the mark \xe2\x80\x9cwithout knowledge of the\nregistrant\'s prior use.\xe2\x80\x9d Because Omnia clearly had knowledge of Stone Creek\xe2\x80\x99s prior unregistered use,\nit could not take advantage of \xc2\xa7 33(b)(5) and instead sought to retreat back to the residual common\n294\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nlaw Tea Rose-Rectanus doctrine (through Lanham Act \xc2\xa7 33(a), 15 U.S.C. \xc2\xa7 1115(a)). This forced the\nNinth Circuit to decide if the Tea Rose-Rectanus doctrine applied only to those remote junior users who\nlacked knowledge of the senior user\xe2\x80\x99s use.}\nMcKEOWN, Circuit Judge:\n....\nII. The Tea Rose\xe2\x80\x93Rectanus Doctrine\n[1] Our determination of a likelihood of confusion with respect to the STONE CREEK mark does\nnot end the infringement analysis. The Tea Rose\xe2\x80\x93Rectanus doctrine is an affirmative defense separate\nand apart from the underlying infringement claim. 5 McCarthy, supra, \xc2\xa7 26:4. Omnia asserts that its use\nof Stone Creek\xe2\x80\x99s mark is protected under that doctrine and argues that we may affirm the district\ncourt\xe2\x80\x99s judgment of no liability on this alternative basis.\n[2] The Tea Rose\xe2\x80\x93Rectanus doctrine has its roots in the common law: it is named for a pair of\nSupreme Court cases, Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) (\xe2\x80\x9cTea Rose\xe2\x80\x9d), and United\nDrug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). The central proposition underlying the two cases\nis that common-law trademark rights extend only to the territory where a mark is known and\nrecognized, so a later user may sometimes acquire rights in pockets geographically remote from the\nfirst user\xe2\x80\x99s territory. The question we address is whether Omnia acquired common-law rights in the\nMidwest under the Tea Rose\xe2\x80\x93Rectanus doctrine.\n[3] Omnia\xe2\x80\x99s common-law rights, if they exist, are not wiped out merely because Stone Creek later\nfiled a federal registration. Although federal registration presumptively entitles the senior user to\nnationwide protection, 15 U.S.C. \xc2\xa7 1057(b), the Lanham Act preserves legal and equitable defenses that\ncould have been asserted prior to registration, id. \xc2\xa7 1115(a). Under this rule, already-established\ncommon-law rights are carved out of the registrant\xe2\x80\x99s scope of protection. Id. \xc2\xa7 1115(b)(5); Johnny\nBlastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 435 (7th Cir. 1999). In other words, the geographic\nscope of a senior user\xe2\x80\x99s rights in a registered trademark looks like Swiss cheese: it stretches\nthroughout the United States with holes cut out where others acquired common-law rights prior to the\nregistration. Because Omnia began using the mark in 2008, well before Stone Creek\xe2\x80\x99s federal\nregistration in 2012, the Tea Rose\xe2\x80\x93Rectanus defense is available to Omnia if it is applicable.\n[4] To take advantage of the Tea Rose\xe2\x80\x93Rectanus doctrine, the junior user must establish good faith\nuse in a geographically remote area. See Rectanus, 248 U.S. at 100, 39 S.Ct. 48; cf. Grupo Gigante SA De\nCV v. Dallo & Co., 391 F.3d 1088, 1096 & n.26 (9th Cir. 2004). Like the district court, we limit our\ndiscussion to the question of good faith because it is dispositive.\n[5] The varying descriptions of good faith in the leading Supreme Court cases have spawned a\ncircuit split, and our circuit has not yet weighed in. See Grupo Gigante, 391 F.3d at 1096 n.26. On one\nside, some circuits have held that the junior user\xe2\x80\x99s knowledge of the senior user\xe2\x80\x99s prior use of the mark\ndestroys good faith. See, e.g., Nat\xe2\x80\x99l Ass\xe2\x80\x99n for Healthcare Commc\xe2\x80\x99ns, Inc. v. Cent. Ark. Area Agency on Aging,\nInc., 257 F.3d 732, 735 (8th Cir. 2001); Money Store v. Harriscorp Fin., Inc., 689 F.2d 666, 674\xe2\x80\x9375 (7th\nCir. 1982). In contrast, other circuits have held that knowledge is a factor informing good faith, but the\n\xe2\x80\x9cfocus is on whether the [junior] user had the intent to benefit from the reputation or goodwill of the\n[senior] user.\xe2\x80\x9d GTE Corp. v. Williams, 904 F.2d 536, 541 (10th Cir. 1990); see C.P. Interests, Inc. v. Cal.\nPools, Inc., 238 F.3d 690, 700 (5th Cir. 2001). We conclude that the better view is that there is no good\nfaith if the junior user had knowledge of the senior user\xe2\x80\x99s prior use.\n[6] Looking back to the origins of the Tea Rose\xe2\x80\x93Rectanus doctrine informs why knowledge defeats\na claim of good faith use. In Tea Rose, the senior user began selling \xe2\x80\x9cTea Rose\xe2\x80\x9d flour in approximately\n1872; many years later, the junior user began selling \xe2\x80\x9cTea Rose\xe2\x80\x9d flour without any knowledge of the\nsenior user\xe2\x80\x99s prior use. 240 U.S. at 407\xe2\x80\x9308. At the time that the trademark infringement action was\n295\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nfiled, the senior user had made sales in Massachusetts, Ohio, and Pennsylvania, while the junior user\xe2\x80\x99s\nsales had reached Mississippi, Alabama, Georgia, and Florida. Id. at 408\xe2\x80\x9310. Rectanus arose on similar\nfacts: the senior user began selling \xe2\x80\x9cRex\xe2\x80\x9d drugs around 1877 and operated in New England, while the\njunior user began selling \xe2\x80\x9cRex\xe2\x80\x9d drugs around 1883 and operated in Kentucky, with neither party being\naware of the other\xe2\x80\x99s use of the \xe2\x80\x9cRex\xe2\x80\x9d mark for more than twenty years. 248 U.S. at 94\xe2\x80\x9396. In both cases,\nthe Supreme Court held that the senior user could not enjoin the junior user\xe2\x80\x99s use of the same mark\nbecause the junior user adopted the mark in good faith and had developed a local reputation in an area\nwhere the mark was not recognized as designating the senior user. See id. at 103\xe2\x80\x9304; Tea Rose, 240 U.S.\nat 415\xe2\x80\x9316.\n[7] When describing good faith, the Supreme Court emphasized that the junior user had no\nawareness of the senior user\xe2\x80\x99s use of the mark. The Court in Tea Rose states that the junior user\n\xe2\x80\x9cadopted and used [the trademark] in good faith without knowledge or notice that the name \xe2\x80\x98Tea Rose\xe2\x80\x99\nhad been adopted or used . . . by anybody else.\xe2\x80\x9d 240 U.S. at 410. The Court also refers to the situation as\none where the two parties \xe2\x80\x9cindependently\xe2\x80\x9d employ the same mark. Id. at 41. And the Court\xe2\x80\x99s reasoning\nconcentrates on knowledge:\nUnder the circumstances that are here presented, to permit the [senior user] to use the\nmark in Alabama, to the exclusion of the [junior user], would take the trade and good will\nof the latter company\xe2\x80\x94built up at much expense and without notice of the former\xe2\x80\x99s\nrights\xe2\x80\x94and confer it upon the former, to the complete perversion of the proper theory of\ntrademark rights.\nId. at 420 (emphasis added).\n[8] The same focus on notice emerges in Rectanus, which grants protection for an \xe2\x80\x9cinnocent\xe2\x80\x9d\njunior user who has \xe2\x80\x9chit upon\xe2\x80\x9d the same mark and avers that the parties acted \xe2\x80\x9cin perfect good faith;\nneither side having any knowledge or notice of what was being done by the other.\xe2\x80\x9d 248 U.S. at 96, 103.\nThe Court also relies on a case that says that the defendants there acted in good faith because they\n\xe2\x80\x9cbeliev[ed] [their] use to be original with them.\xe2\x80\x9d Richter v. Anchor Remedy Co, 52 F. 455, 455 (C.C.W.D.\nPa. 1892), aff\xe2\x80\x99d sub nom. Richter v. Reynolds, 59 F. 577 (3d Cir. 1893). Seventy years later, Justice\nBrennan stressed that application of the Tea Rose\xe2\x80\x93Rectanus doctrine requires an absence of\nknowledge. See K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 314 n.8 (1988) (Brennan, J., concurring in\npart and dissenting in part) (\xe2\x80\x9c[A] firm can develop a trademark that is identical to a trademark already\nin use in a geographically distinct and remote area if the firm is unaware of the identity.\xe2\x80\x9d).\n[9] The Seventh and Eighth Circuits and the Trademark Trial and Appeal Board (\xe2\x80\x9cTTAB\xe2\x80\x9d) agree\nwith this reading. The Seventh Circuit put it explicitly: \xe2\x80\x9cA good faith junior user is one who begins\nusing a mark with no knowledge that someone else is already using it.\xe2\x80\x9d Money Store, 689 F.2d at 674.\nThe court went on to analyze whether the junior user in that case had constructive or actual\nknowledge of the senior user\xe2\x80\x99s use. Id. at 675. The Eighth Circuit follows the same approach, parroting\nthe language from Tea Rose and Rectanus. See Nat\xe2\x80\x99l Ass\xe2\x80\x99n for Healthcare Commc\xe2\x80\x99ns, 257 F.3d at 735\n(\xe2\x80\x9cadopted the [mark] in good faith, without knowledge of [the] prior use\xe2\x80\x9d). And the TTAB, the\nadministrative board charged with deciding certain trademark disputes and appeals, similarly holds\nthat \xe2\x80\x9cappropriat[ing] a mark with knowledge that it is actually being used by another\xe2\x80\x9d means \xe2\x80\x9cthat use\nis not believed to be a good faith use.\xe2\x80\x9d Woman\xe2\x80\x99s World Shops Inc. v. Lane Bryant Inc., 5 U.S.P.Q.2d 1985,\n1988 (T.T.A.B. 1988).\n[10] The courts that have ruled the other way have latched on to one line in the Tea Rose case\nwhich reads:\n[W]here two parties independently are employing the same mark upon goods of the\nsame class, but in separate markets wholly remote the one from the other, the question of\nprior appropriation is legally insignificant; unless, at least, it appear that the second\nadopter has selected the mark with some design inimical to the interests of the [senior]\n296\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nuser, such as to take the benefit of the reputation of his goods, to forestall the extension of\nhis trade, or the like.\n240 U.S. at 415 (emphasis added). But this brief reference to \xe2\x80\x9cdesign inimical\xe2\x80\x9d does not override the\ncentral focus on knowledge; it is not without significance that \xe2\x80\x9cdesign inimical\xe2\x80\x9d does not appear\nanywhere else in the opinion. The Court in Rectanus repeats the \xe2\x80\x9cdesign inimical\xe2\x80\x9d language as a direct\nquote of the language from the Tea Rose case and mentions offhand that the junior user did not have a\n\xe2\x80\x9csinister purpose.\xe2\x80\x9d 248 U.S. at 101. More salient are the various points in the leading opinions that\ndraw a close connection between \xe2\x80\x9cgood faith\xe2\x80\x9d and \xe2\x80\x9cknowledge\xe2\x80\x9d or \xe2\x80\x9cnotice.\xe2\x80\x9d See, e.g., id. at 96 (\xe2\x80\x9cin\nperfect good faith; neither side having any knowledge or notice of what was being done by the other\xe2\x80\x9d);\nid. at 103 (\xe2\x80\x9cin good faith, and without notice of any prior use by others, selected and used the \xe2\x80\x98Rex\xe2\x80\x99\nmark\xe2\x80\x9d); Tea Rose, 240 U.S. at 410 (\xe2\x80\x9ctrademark was adopted and used [by the junior user] in good faith\nwithout knowledge or notice that the name \xe2\x80\x98Tea Rose\xe2\x80\x99 had been adopted or used by the [senior user]\xe2\x80\x9d);\nid. at 419 (\xe2\x80\x9cin good faith and without notice of the [senior user\xe2\x80\x99s] mark\xe2\x80\x9d).\n[11] Tying good faith to knowledge makes sense in light of the policy underlying the doctrinal\nframework. As the Supreme Court explained, the Tea Rose\xe2\x80\x93Rectanus doctrine operates to protect a\njunior user who unwittingly adopted the same mark and invested time and resources into building a\nbusiness with that mark. Rectanus, 248 U.S. at 103; Tea Rose, 240 U.S. at 419. A junior user like Omnia\nwho has affirmative knowledge of the senior user\xe2\x80\x99s mark has not serendipitously chosen the same\nmark and independently built up its own brand. Instead, a user like Omnia knows that its actions come\ndirectly at the expense of the senior user, potentially blocking the senior user from entering into the\nnew market. Viewed in this light, the junior user has acted in bad faith, which \xe2\x80\x9cserve[s] as evidence\nthat the [senior] user\xe2\x80\x99s mark, at least in reputation, has extended to the new area.\xe2\x80\x9d Developments in the\nLaw Trade-Marks and Unfair Competition, 68 Harv. L. Rev. 814, 859 (1955); 5 McCarthy, supra, \xc2\xa7 26:12.\n[12] The knowledge standard also better comports with the Lanham Act. The statutory section\npreserving the Tea Rose\xe2\x80\x93Rectanus defense for junior users acting pre-registration requires that the\njunior user\xe2\x80\x99s mark \xe2\x80\x9cwas adopted without knowledge of the registrant\xe2\x80\x99s prior use.\xe2\x80\x9d 15 U.S.C.\n\xc2\xa7 1115(b)(5) (emphasis added). More broadly, one major change effected by the Lanham Act is that\nsecuring federal registration affords nationwide rights regardless of where the registrant has used the\nmark, a result accomplished by a provision that puts would-be users on constructive notice. See id.\n\xc2\xa7\xc2\xa7 1057(b), 1072; 5 McCarthy, supra, \xc2\xa7 26:32. In other words, the Lanham Act displaces the Tea Rose\xe2\x80\x93\nRectanus defense by charging later users with knowledge of a mark listed on the federal register. If\nconstructive notice is sufficient to defeat good faith, it follows that actual notice should be enough too.\n[13] Once knowledge is accepted as a determinative factor in deciding good faith, the Tea Rose\xe2\x80\x93\nRectanus doctrine has no applicability here. The district court found that \xe2\x80\x9c[Omnia] was a non-innocent\nremote user\xe2\x80\x9d who \xe2\x80\x9cacquired no common law trademark rights in the [Midwest].\xe2\x80\x9d That conclusion flows\nfrom the parties\xe2\x80\x99 agreement that Omnia adopted Stone Creek\xe2\x80\x99s mark with knowledge of Stone Creek\xe2\x80\x99s\nprevious use. The Tea Rose\xe2\x80\x93Rectanus doctrine provides no shelter to Omnia for infringement of Stone\nCreek\xe2\x80\x99s mark.\n{The Ninth Circuit then held, among other things, that Stone Creek must show intentional or\nwillful infringement before disgorgement of Omnia\xe2\x80\x99s profits could be awarded. The Ninth Circuit\nremanded the case back to the district court to determine whether Omnia willfully infringed.}\nComments and Questions\n1. Is Stone Creek bad policy? Consider the following oft-quoted language from the Supreme Court\xe2\x80\x99s\nRectanus opinion:\nThere is no such thing as property in a trade-mark except as a right appurtenant to\nan established business or trade in connection with which the mark is employed. The law\nof trade-marks is but a part of the broader law of unfair competition; the right to a\n297\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nparticular mark grows out of its use, not its mere adoption; its function is simply to\ndesignate the goods as the product of a particular trader and to protect his good will\nagainst the sale of another\xe2\x80\x99s product as his; and it is not the subject of property except in\nconnection with an existing business. Hanover Milling Co. v. Metcalf, 240 U. S. 403,\n412-414.\nThe owner of a trade-mark may not, like the proprietor of a patented invention,\nmake a negative and merely prohibitive use of it as a monopoly. See United States v. Bell\nTelephone Co., 167 U. S. 224, 250; Bement v. National Harrow Co., 186 U. S. 70, 90; Paper\nBag Patent Case, 210 U. S. 405, 424.\n....\nIt results that the adoption of a trade-mark does not, at least in the absence of some\nvalid legislation enacted for the purpose, project the right of protection in advance of the\nextension of the trade, or operate as a claim of territorial rights over areas into which it\nthereafter may be deemed desirable to extend the trade. And the expression, sometimes\nmet with, that a trade-mark right is not limited in its enjoyment by territorial bounds, is\ntrue only in the sense that wherever the trade goes, attended by the use of the mark, the\nright of the trader to be protected against the sale by others of their wares in the place of\nhis wares will be sustained.\nUnited Drug Co. v. Theodore Rectanus, 248 U.S. 90, 97-98 (1918). In effect, under Stone Creek, the senior\nuser of an unregistered mark enjoys exclusive rights in the mark against any other person in the nation\nwho is aware of the senior user\xe2\x80\x99s use, even if the senior user has not yet used the mark in that person\xe2\x80\x99s\nparticular remote location. Is this outcome consistent with the principles articulated in Rectanus?\nImagine you wish to open a cafe in New York City under the service mark ARCTIC COFFEE. You google the\nterm and discover that a cafe in Anchorage, Alaska is already using the mark. You then search the mark\non the PTO\xe2\x80\x99s Trademark Electronic Search System and learn that the Anchorage cafe has not applied to\nregister the mark. Under Stone Creek, you cannot adopt the mark in good faith, and if the Anchorage\ncafe eventually expands into New York City, it may assert priority over your use. Is this sound policy?\n2.\n\nThe Geographic Extent of Rights in Registered Marks\n\nUnless the Lanham Act states otherwise, the common law norms of Tea Rose-Rectanus apply as\nmuch to registered marks as they do to unregistered marks. But crucially, the Lanham Act states\notherwise extensively, primarily through the operation of Lanham Act \xc2\xa7\xc2\xa7 7(c), 15, 22, and 33, 15 U.S.C.\n\xc2\xa7\xc2\xa7 1057(c), 1065, 1072, & 1115. Indeed, these sections depart so dramatically from the common law\nnorms that it is easy to forget that at least in theory they form merely an overlay on those underlying\nnorms, one that grants registered marks important privileges in the form of exceptions to the Tea RoseRectanus doctrine. We consider these exceptions here.\na.\n\nApplications Filed on or after November 16, 1989: Constructive Use Priority as of\nDate of Application\n\nThe Trademark Law Revision Act of 1988 (TLRA) created Lanham Act \xc2\xa7 7(c), 15 U.S.C. \xc2\xa7 1057(c),\nwhich applies to all applications filed on or after the November 16, 1989 effective date of the TLRA.1\nSection 7(c) reads as follows:\nThe Lanham Act does not explicitly state that the benefits of \xc2\xa7 7(c) should be available only to\napplications filed on or after the effective date of the TLRA. However, as McCarthy notes, \xe2\x80\x9cLanham Act\n\xc2\xa7 33(b)(5), 15 U.S.C. \xc2\xa7 1115(b)(5) distinguishes between the application date creating constructive use\non the one hand and the registration date creating constructive notice [under \xc2\xa7 22] on the other hand,\n1\n\n298\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n(c) Application to register mark considered constructive use. Contingent on the\nregistration of a mark on the principal register provided by this Act, the filing of the\napplication to register such mark shall constitute constructive use of the mark, conferring\na right of priority, nationwide in effect, on or in connection with the goods or services\nspecified in the registration against any other person except for a person whose mark has\nnot been abandoned and who, prior to such filing\xe2\x80\x93\n(1) has used the mark;\n(2) has filed an application to register the mark which is pending or has resulted in\nregistration of the mark; or\n(3) has filed a foreign application to register the mark on the basis of which he or she has\nacquired a right of priority, and timely files an application under section 44(d), 15 USC\n\xc2\xa7 1126(d), to register the mark which is pending or has resulted in registration of the\nmark.\nId. Section 7(c) thus confers on the successful registrant nationwide \xe2\x80\x9cconstructive use\xe2\x80\x9d priority in the\nregistered mark as of the date of application, and does so regardless of whether the registrant has in\nfact made or is in fact making actual nationwide use of the mark. See Humanoids Group v. Rogan, 375\nF.3d 301, 305 n.3 (4th Cir. 2004) (\xe2\x80\x9cConstructive use establishes a priority date with the same legal\neffect as the earliest actual use of a trademark at common law.\xe2\x80\x9d (citation omitted)). Note that until the\nregistration issues, this priority is merely \xe2\x80\x9ccontingent\xe2\x80\x9d nationwide priority. The applicant may not use\n\xc2\xa7 7(c) to enjoin others\xe2\x80\x99 conduct until the registration issues, at which time the registrants\xe2\x80\x99 constructive\nuse priority is the date of application.\nTo appreciate the practical significance of \xc2\xa7 7(c), imagine the following course of events:\n\xe2\x80\xa2\n\nTime 1:\n\nA files a \xc2\xa7 1(b) intent-to-use application for registration of the mark.\n\n\xe2\x80\xa2\n\nTime 2:\nU.S.\n\nB subsequently begins to make actual use of the mark throughout the\n\n\xe2\x80\xa2\n\nTime 3: A begins to make actual use of the mark throughout the U.S. and files a\nStatement of Use.\n\n\xe2\x80\xa2\n\nTime 4:\n\nA\xe2\x80\x99s application matures into registration.\n\nUnder the terms of \xc2\xa7 7(c), registration confers on A nationwide priority as of Time 1 even though A did\nnot make actual use of the mark until Time 3. At Time 4, A may enjoin B\xe2\x80\x99s use. Meanwhile, even though\nB was the first to make actual use of the mark, B cannot on that basis enjoin A from making its own\nactual use and thereby completing the ITU process. See WarnerVision Entertainment Inc. v. Empire of\nCarolina Inc., 101 F.3d 259, 262 (2d Cir. 1996) (\xe2\x80\x9cThe ITU provisions permit the holder of an ITU\napplication to use the mark in commerce, obtain registration, and thereby secure priority retroactive\nto the date of filing of the ITU application. Of course, this right or privilege is not indefinite; it endures\nonly for the time allotted by the statute. But as long as an ITU applicant\xe2\x80\x99s privilege has not expired, a\ncourt may not enjoin it from making the use necessary for registration on the grounds that another\nparty has used the mark subsequent to the filing of the ITU application. To permit such an injunction\nwould eviscerate the ITU provisions and defeat their very purpose.\xe2\x80\x9d).\n\nlimiting the later to a case where \xe2\x80\x9cthe application for registration is filed before the effective date of the\nTrademark Law Revision Act of 1988.\xe2\x80\x9d This indicates a legislative intent to restrict the benefits of\n\xc2\xa7 7(c) constructive use to registrations resulting from applications filed after the effective date of the\nrevision.\xe2\x80\x9d MCCARTHY \xc2\xa7 26.38 fn 1.10.\n299\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ni.\n\nThe Senior Common Law User Scenario\n\nAs the statutory language makes clear, \xc2\xa7 7(c) nationwide constructive use priority is subject to\ncertain important limitations. Most significantly, constructive use priority does not apply to any entity\nthat began use of the mark at issue somewhere in the United States prior to the registrant\xe2\x80\x99s own use\nand date of application. For example:\n\xe2\x80\xa2\n\nTime 1:\n\nA begins actual use of the mark in Area A.\n\n\xe2\x80\xa2\n\nTime 2:\n\nB begins actual use of the mark in Area B.\n\n\xe2\x80\xa2\n\nTime 3:\n\nB applies to register the mark.\n\n\xe2\x80\xa2\n\nTime 4:\n\nB\xe2\x80\x99s registration issues.\n\nOn these simple facts, A qualifies as a \xe2\x80\x9csenior common law user\xe2\x80\x9d of the mark, because its unregistered\nuse preceded B\xe2\x80\x99s unregistered use and date of application for registration. Once B has registered its\nmark, A may continue to use its mark, but only in the area in which it was using the mark at the date of\nB\xe2\x80\x99s registration. It may not expand beyond that area.\nThe statutory basis for A\xe2\x80\x99s frozen area of use is not \xc2\xa7 7(c) and its provision of nationwide\nconstructive use, because by the clear terms of the section, nationwide constructive use priority does\nnot apply to senior common law users. So what provision does apply to such users? It is Lanham Act\n\xc2\xa7 22, 15 U.S.C. \xc2\xa7 1072, that freezes the senior common law user. Section 22 provides that \xe2\x80\x9cRegistration\nof a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the\nAct of February 20, 1905, shall be constructive notice of the registrant\'s claim of ownership thereof.\xe2\x80\x9d\nSee also Lanham Act \xc2\xa7 15, 15 U.S.C. \xc2\xa7 1065 (providing incontestable marks with incontestable rights\n\xe2\x80\x9cexcept to the extent, if any, to which the use of a mark registered on the principal register infringes a\nvalid right acquired under the law of any State or Territory by use of a mark or trade name continuing\nfrom a date prior to the date of registration under this chapter of such registered mark\xe2\x80\x9d). Section 22\xe2\x80\x99s\nconstructive notice as of the date of registration is understood to be nationwide in effect and strips the\nsenior common law user of any claim to good faith expansion in the use of its mark after that date. See\nAllard Enterprises v. Advanced Programming Res., Inc. 249 F.3d 564 (6th Cir. 2001). See also Geisha LLC\nv. Tuccillo, No. 05 Civ. 5529, 2009 U.S. Dist. LEXIS 20300 (N.D. Ill. March 13, 2009) (citing Allard)\n(stating that rights are frozen at registration but finding that the senior user had actual notice of\njunior\'s federal trademark application before expansion, which prevented the senior user\'s rights from\nexpanding).\nii.\n\nThe Intermediate Junior User Scenario\n\nLanham Act \xc2\xa7 33(b)(5), 15 U.S.C. \xc2\xa7 1115(b)(5), establishes a so-called \xe2\x80\x9cintermediate junior user\xe2\x80\x9d\ndefense against registered marks that are incontestable and, through \xc2\xa7 33(a), registered marks that are\ncontestable. Section 33(b)(5) provides that the registrant\xe2\x80\x99s rights are subject to the defense\n(5) That the mark whose use by a party is charged as an infringement was adopted\nwithout knowledge of the registrant\xe2\x80\x99s prior use and has been continuously used by such\nparty or those in privity with him from a date prior to (A) the date of constructive use of\nthe mark established pursuant to section 7(c) {15 USC \xc2\xa7 1057(c)}, (B) the registration of\nthe mark under this Act if the application for registration is filed before the effective date\nof the Trademark Law Revision Act of 1988, or (C) publication of the registered mark\nunder subsection (c) of section 12 of this Act {15 USC \xc2\xa7 1062(c)}: Provided, however,\nThat this defense or defect shall apply only for the area in which such continuous prior\nuse is proved.\n15 U.S.C. \xc2\xa7 1115(b)(5).\nThe practical significance of \xc2\xa7 33(b)(5) may be demonstrated with the following set of facts:\n300\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\xa2\n\nTime 1:\n\nA begins actual use of the mark in Area A.\n\n\xe2\x80\xa2\n\nTime 2:\n\nB begins actual use of the mark in Area B without knowledge\n\nof A\xe2\x80\x99s use.\n\xe2\x80\xa2\n\nTime 3:\n\nA applies to register the mark.\n\n\xe2\x80\xa2\n\nTime 4:\n\nA\xe2\x80\x99s registration issues.\n\nIn this set of facts, A is the senior user (i.e., the first user within the United States) and B is the junior\nuser (somewhere in the United States) who began its use at a time intermediate between A\xe2\x80\x99s first use\nand A\xe2\x80\x99s application to register. Registrant A may enjoin B\xe2\x80\x99s use anywhere in the United States except\nwhere B was using the mark at Time 3 (in other words, if B has been expanding its use, B is frozen to\nthe extent of its expansion at the date of A\xe2\x80\x99s application). See \xc2\xa7 33(b)(5), 15 U.S.C. \xc2\xa7 1115(b)(5) (\xe2\x80\x9cfrom\na date prior to (A) the date of constructive use of the mark established pursuant to section 7(c) . . . .\n[T]his defense or defect shall apply only for the area in which such continuous prior use is proved.\xe2\x80\x9d).\nSee also GILSON ON TRADEMARKS \xc2\xa7 11.08. Note that A may seek an injunction only once its registration\nhas issued.\nBut what if the intermediate junior user adopted the mark at issue with knowledge of the\nregistrant\xe2\x80\x99s senior common law use? Section 33(b)(5) would not apply (because it explicitly requires\nadoption \xe2\x80\x9cwithout knowledge\xe2\x80\x9d), but is \xc2\xa7 7(c) any help? In contrast with \xc2\xa7 33(b)(5), \xc2\xa7 7(c) makes no\nmention of knowledge, nor does it explicitly limit itself only to senior common law users or exclude\nintermediate junior users. Instead, \xc2\xa7 7(c) simply refers to any person who \xe2\x80\x9cprior to such filing . . . has\nused the mark.\xe2\x80\x9d Can an intermediate junior user who adopted with knowledge before the registrant\xe2\x80\x99s\napplication date thus retreat back to \xc2\xa7 7(c) and claim the same right as a senior common law user to\ncontinue to use its mark in an area frozen as of the date of the registrant\xe2\x80\x99s registration?\nThe law is not clear on this question, and it was never raised in the Stone Creek case above, but\nexperience has shown that especially attentive students tend to ask it. The answer is almost certainly\nthat the intermediate junior user with knowledge cannot work around \xc2\xa7 33(b)(5) by resorting to \xc2\xa7 7(c).\nFor prior common law users of the registrant\xe2\x80\x99s mark, be they senior common law users or\nintermediate junior (common law) users, Section 7(c) provides no independent basis for freezing any\nsuch user\xe2\x80\x99s prior rights. It states only that the registrant\xe2\x80\x99s nationwide constructive use as of the date of\napplication does not apply to anyone who used the mark before the registrant\xe2\x80\x99s date of application.\nInstead, in general, \xc2\xa7 22 would freeze the rights of all such prior users at the latest at the date of the\nregistrant\xe2\x80\x99s registration, with the exception that under the more specific provisions of \xc2\xa7 33(b)(5), the\nrights of good faith intermediate junior users in particular are frozen earlier at the registrant\xe2\x80\x99s date of\napplication. What then of intermediate junior users who did not adopt in good faith (i.e., who adopted\nwith knowledge of the registrant\xe2\x80\x99s prior use)? It would be at odds with the purposes of the Lanham Act\n(among them, to promote good faith conduct) to leave bad faith intermediate junior users better off\nthan good faith intermediate junior users by treating the former as if they were senior common law\nusers under \xc2\xa7 7(c) and \xc2\xa7 22. Instead, once the registrant\xe2\x80\x99s registration issues, the intermediate junior\nuser who adopted with knowledge of the registrant\xe2\x80\x99s prior use would almost certainly be required to\ncease all use of its mark (subject to the Dawn Donut rule, discussed below).\nb.\n\nApplications Filed before November 16, 1989: Constructive Notice Priority as of\nDate of Registration\n\nApplications filed before November 16, 1989 must rely on \xc2\xa7 22, 15 U.S.C. \xc2\xa7 1072:\nRegistration of a mark on the principal register provided by this Act or under the Act of\nMarch 3, 1981, or the Act of February 20, 1905, shall be constructive notice of the\nregistrant\xe2\x80\x99s claim of ownership thereof.\n301\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nThis \xe2\x80\x9cconstructive notice\xe2\x80\x9d disables any person who adopts the mark after the registrant\xe2\x80\x99s date of\nregistration from claiming that it did so in good faith. See MCCARTHY \xc2\xa7 26:32.\nWith respect to applications filed before November 16, 1989, senior common law users (those\nwho adopted the mark before the registrant began actual use of the mark) are frozen to their area of\nuse as of the date of registration. See Lanham Act \xc2\xa7\xc2\xa7 15 & 22, 15 U.S.C. \xc2\xa7\xc2\xa7 1065 & 1072. Section\n33(b)(5) applies to intermediate junior users. See, e.g., Burger King of Fla., Inc. v. Hoots, 403 F.2d 904\n(7th Cir. 1968) (limiting intermediate junior user of BURGER KING for restaurant services to 25-mile\nradius around Mattoon, Illinois).\nc.\n\nConcurrent Use and Registration\n\nLanham Act \xc2\xa7 2(d), 15 U.S.C. \xc2\xa7 1052(d), provides that two or more parties may use or register\nsimilar or identical marks for similar or identical goods provided that their respective uses of the\nmarks will be sufficiently geographically distinct as not to cause consumer confusion. The text of \xc2\xa7 2(d)\nprovides as follows:\nNo trademark by which the goods of the applicant may be distinguished from the goods\nof others shall be refused registration on the principal register on account of its nature\nunless it\xe2\x80\x94\n....\n(d) Consists of or comprises a mark which so resembles a mark registered in the Patent\nand Trademark Office, or a mark or trade name previously used in the United States by\nanother and not abandoned, as to be likely, when used on or in connection with the goods\nof the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if\nthe Director determines that confusion, mistake, or deception is not likely to result from\nthe continued use by more than one person of the same or similar marks under\nconditions and limitations as to the mode or place of use of the marks or the goods on or\nin connection with which such marks are used, concurrent registrations may be issued to\nsuch persons when they have become entitled to use such marks as a result of their\nconcurrent lawful use in commerce prior to (1) the earliest of the filing dates of the\napplications pending or of any registration issued under this chapter; (2) July 5, 1947, in\nthe case of registrations previously issued under the Act of March 3, 1881, or February\n20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the\ncase of applications filed under the Act of February 20, 1905, and registered after July 5,\n1947. Use prior to the filing date of any pending application or a registration shall not be\nrequired when the owner of such application or registration consents to the grant of a\nconcurrent registration to the applicant. Concurrent registrations may also be issued by\nthe Director when a court of competent jurisdiction has finally determined that more\nthan one person is entitled to use the same or similar marks in commerce. In issuing\nconcurrent registrations, the Director shall prescribe conditions and limitations as to the\nmode or place of use of the mark or the goods on or in connection with which such mark\nis registered to the respective persons.\n15 U.S.C. \xc2\xa7 1052(d). See also TMEP \xc2\xa7 1207.\nThus, the first applicant for a mark may be granted a registration covering the entirety of the\nUnited States except for the limited area in which an intermediate junior user or senior common law\nuser is entitled to use the mark. See, e.g., Terrific Promotions, Inc. v. Vanlex, Inc., 36 U.S.P.Q.2d 1349\n(TTAB 1995) (\xe2\x80\x9cTPI is entitled to a concurrent use registration for the mark DOLLAR BILLS and design\nfor discount variety goods store services for the area comprising the entire United States except for the\ncounties of Essex, Bergen, Hudson, Union and Middlesex in New Jersey, the five Boroughs of New York\nCity and the counties of Suffolk, Nassau, Westchester, Rockland and Putnam in New York, the county of\n302\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nFairfield in Connecticut and the county of Allegheny in Pennsylvania.\xe2\x80\x9d (see registration certificate\nbelow)); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512 (C.C.P.A. 1980) (limiting junior userregistrant\xe2\x80\x99s registration to the entirety of the U.S. except for certain areas of New Jersey in which\nsenior user had been using its mark). Meanwhile, the intermediate junior user or senior common law\nuser may seek to register the mark for the limited area in which it is allowed still to use the mark. See,\ne.g., Ole\xe2\x80\x99 Taco, Inc. v. Tacos Ole, Inc., 221 U.S.P.Q. 912 (TTAB 1984) (limiting senior user\xe2\x80\x99s registration to\nentirety of U.S. except for area consisting of 180-mile radius around Grand Rapids, Michigan; limiting\njunior user\xe2\x80\x99s registration to Grand Rapids, Michigan (see registration certificates below)).\nThough concurrent registrations are an interesting phenomenon, they are exceedingly rare. The\nPTO\xe2\x80\x99s data indicate that among all 2.2 million live trademark registrations on the Principal Register in\n2017, only 354 consisted of registrations subject to concurrent use. See USPTO, Case Files Dataset,\nhttps://www.uspto.gov/learning-and-resources/electronic-data-products/\ntrademark-case-filesdataset-0.\n\n303\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nComments and Questions\n1. Consent to use agreements. Two users of similar marks may reach an agreement in which they\npromise not to sue each other for trademark infringement provided that each complies with the\n304\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nlimitations on use set forth in the agreement. These limitations may limit use to, among other things,\nspecific geographical areas, specific goods or services, or specific mark formats. See Brennan\xe2\x80\x99s Inc. v.\nDickie Brennan & Co. Inc., 376 F.3d 356, 364 (5th Cir. 2004) (discussing consent to use agreements);\nMCCARTHY \xc2\xa7 18:79 (same). See also Eric Pfanner, British Judge Allows Apple to Keep Logo on iTunes, NY\nTIMES, May 9, 2006, https://www.nytimes.com/2006/05/09/technology/09apple.html (discussing\nlitigation between Apple Computer and Apple Corps, the Beatles\xe2\x80\x99 corporate entity, concerning the\nformer\xe2\x80\x99s alleged breach of the 1991 consent to use agreement between the two firms). Courts (and\nexaminers) typically give great weight to consent to use agreements, but they sometimes nevertheless\nfind a likelihood of confusion. See, for example, In Re 8-Bit Brewing LLC, Serial No. 86760527, 2017 WL\n5885609, (Oct. 30, 2017), in which the TTAB affirmed the examiner\xe2\x80\x99s section 2(d) refusal to register\nthe applied-for mark 8-BIT ALEWORKS in light of the registered mark 8 BIT BREWING COMPANY:\nUltimately, in view of the identity of the involved goods, beer, and their trade channels, as\nwell as the overall strong similarity of the marks, we conclude there is a likelihood of\nconfusion between Applicant\xe2\x80\x99s applied-for mark 8-Bit Aleworks and the registered\nmarks, 8 bit Brewing Company (with and without design). We make this conclusion\nbearing in mind that \xe2\x80\x9cconsent agreements are frequently entitled to great weight.\xe2\x80\x9d Bay\nState Brewing Co., 117 USPQ2d at 1967. In this case, however, Registrant\xe2\x80\x99s consent is\nambiguous and outweighed by the several other relevant du Pont factors. In other words,\nthe shortcomings in the consent agreement are such that consumer confusion remains\nlikely.\nIn Re 8-Bit Brewing LLC, 2017 WL 5885609, at *8. But see In re American Cruise Lines, Inc., 128\nU.S.P.Q.2d 1157 (TTAB 2018) (reversing examiner\xe2\x80\x99s Lanham Act \xc2\xa7 2(d) refusal even though consent\nagreement between CONSTELLATION and AMERICAN CONSTELLATION for cruise ships contained no\nprovisions requiring parties to seek to avoid confusion, reasoning that \xe2\x80\x9c[w]hile the inclusion of\nprovisions to avoid any potential confusion are preferred and probative in consent agreements, they\nare not mandatory.").\n2. Secondary meaning in only one part of the United States. To register a non-inherently distinctive\nmark, the mark owner need only show that the mark has secondary meaning in some part of the\nUnited States. But see MCCARTHY 15:72 (citing a 1963 TTAB opinion for the proposition that \xe2\x80\x9cthe law is\nunclear [on this issue], with a hint that proving secondary meaning in only a small part of the United\nStates might not be sufficient.\xe2\x80\x9d). Yet the priority rights that stem from registration are nationwide in\nscope. Does this make sense as a policy matter? Cf. Soci\xc3\xa9t\xc3\xa9 des produits Nestl\xc3\xa9 v. Mondelez UK Holdings\n& Services, C\xe2\x80\x9184/17 P, C\xe2\x80\x9185/17 P and C\xe2\x80\x9195/17 P, ECLI:EU:C:2018:596, \xc2\xb6 83 (CJEU, July 25, 2018)\n(holding that for purposes of registering an EU trademark that is not inherently distinctive anywhere\nin the European Union, the applicant must show that the mark has acquired secondary meaning\nthroughout the European Union).\nd.\n\nThe Dawn Donut Rule\n\nIn Dawn Donut Co. v. Hart\xe2\x80\x99s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959), the Second Circuit\nestablished a significant geographic limitation on a federal registrant\xe2\x80\x99s ability to enjoin confusinglysimilar uses by those over whom the registrant has priority. The Dawn Donut court held that though\nregistration confers on the registrant nationwide priority, mere registration without more does not\nentitle the registrant to nationwide injunctive relief. Instead, the registrant must show that it is likely\nto make (or is already making) an actual use of the mark in a post-registration junior user\xe2\x80\x99s area of\ntrade before the registrant will be entitled to enjoin the junior use. The Dawn Donut rule does not\npresent a problem for a registrant making nationwide use of its mark. But for a registrant making only\na local or regional use of its mark, the registrant cannot enjoin uses in different geographic areas until\nit can show that it is likely to use or is actually using its mark in those areas or its reputation has\nspread to those areas.\n305\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nIn the Dawn Donut case itself, the plaintiff was the senior user and registrant of the mark DAWN for\ndoughnuts, which it had registered in 1927 and renewed under the Lanham Act in 1947. In 1951, the\ndefendant began to use the same mark for doughnuts in Rochester, New York. At the time of the suit,\nthe plaintiff was not using its mark in the Rochester area. The Second Circuit held that if the plaintiff\nwas not making actual use of its mark in the Rochester area, then the defendant\xe2\x80\x99s use of the mark\nwould not create a likelihood of confusion that could form the basis of injunctive relief:\n[I]f the use of the marks by the registrant and the unauthorized user are confined to\ngeographically separate markets, with no likelihood that the registrant will expand his\nuse into the defendant\xe2\x80\x99s market, so that no public confusion is possible, then the\nregistrant is not entitled to enjoin the junior user\xe2\x80\x99s use of the mark.\nDawn Donut, 267 F. 2d at 364. The plaintiff could seek relief at a later date if it could show an intent to\nexpand into the defendant\xe2\x80\x99s area of use:\n[B]ecause of the effect we have attributed to the constructive notice provision of the\nLanham Act, the plaintiff may later, upon a proper showing of an intent to use the mark at\nthe retail level in defendant\xe2\x80\x99s market area, be entitled to enjoin defendant\xe2\x80\x99s use of the\nmark.\nId. at 365. The strange effect of the Dawn Donut rule is that the defendant would have to stop its use of\nthe mark and yield to the plaintiff at some point in the future when the plaintiff could show expansion\ninto defendant\xe2\x80\x99s area of trade.\nDawn Donut remains good law. In the remarkable case of What-A-Burger Of Virginia, Inc. v.\nWhataburger, Inc. Of Corpus Christi, Texas, 357 F.3d 441 (4th Cir. 2004), the declaratory defendant\nWhataburger-Texas registered the mark WHATABURGER for restaurant services in September, 1957. By\nthe time of the suit, Whataburger-Texas was using the mark in connection with over 500 locations in\nvarious southern states but not in Virginia. The declaratory plaintiff What-A-Burger-Virginia began to\nuse the mark WHAT-A-BURGER in Newport News, Virginia in August, 1957, and subsequently expanded\nits use to various other locations in Virginia in the following years. In 1970, Whataburger-Texas\nbecame aware of What-A-Burger-Virginia\xe2\x80\x99s use in Virginia and proposed a licensing arrangement.\nThere was no further communication between the parties until 2002, when Whataburger-Texas\ncontacted What-A-Burger-Virginia to determine if What-A-Burger-Virginia\xe2\x80\x99s use was infringing on\nWhataburger-Texas\xe2\x80\x99s registered mark. What-A-Burger-Virginia asserted, among other things, that\nWhataburger-Texas was barred by the doctrine of laches from asserting infringement because it had\nwaited nearly thirty years to do so. Whataburger-Texas successfully argued that laches could not apply\nbecause, under the principles established in Dawn Donut, Whataburger-Texas could not have sought\nduring that thirty year period to enjoin What-A-Burger-Virginia\xe2\x80\x99s use of the mark in Virginia. The\nFourth Circuit explained: \xe2\x80\x9cThere is nothing in this case to indicate a likelihood of entry into the local\nVirginia market by {Whataburger-Texas} (in fact, {Whataburger-Texas} specifically disavows any such\nintention) or that the likelihood of confusion otherwise looms large, triggering the obligation for\n{Whataburger-Texas} to initiate an action for trademark infringement.\xe2\x80\x9d Id. at 451.\nDawn Donut is not without its critics, however. At least one judge has criticized the Dawn Donut\nrule as obsolete:\nThe Dawn Donut Rule was enunciated in 1959. Entering the new millennium, our society\nis far more mobile than it was four decades ago. For this reason, and given that recent\ntechnological innovations such as the Internet are increasingly deconstructing\ngeographical barriers for marketing purposes, it appears to me that a re-examination of\nprecedents would be timely to determine whether the Dawn Donut Rule has outlived its\nusefulness.\n\n306\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nCircuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1057 (6th Cir. 1999) (Jones, J., concurring). More\nrecently, the Second Circuit aggressively distinguished away Dawn Donut in Guthrie Healthcare Sys. v.\nContextMedia, Inc., 826 F.3d 27, 48 (2d Cir. 2016) (\xe2\x80\x9cDawn Donuts, {sic} did not present the problem,\nlike this case, of a plaintiff who has shown entitlement to an injunction in one geographic area and\nseeks to have the injunction extend beyond as well. It therefore has no pertinence to the question at\nissue here.\xe2\x80\x9d).\n3.\n\nNational Borders and Trademark Rights\n\nWe have focused so far on trademark uses within the territorial borders of the U.S. and the\ngeographical extent of rights established by such uses. We turn now to trademark uses outside the\nterritorial borders of the U.S. and to the question of whether such uses can form the basis for exclusive\nrights within the U.S.\nAs set forth below in Part I.E.3.a and as exemplified in Person\xe2\x80\x99s Co., Ltd. v. Christman, 900 F.2d\n1565 (Fed. Cir. 1990), the traditional view has long been that trademark rights are generally limited to\nnational borders and that foreign uses of trademarks generally do not confer exclusive rights within\nthe U.S. However, as discussed in Part I.E.3.b, the \xe2\x80\x9cwell-known marks doctrine\xe2\x80\x9d holds that foreign uses\nof trademarks that become very well-known in the U.S. may form the basis for exclusive rights within\nthe U.S. even when the foreign user is not making any actual use of the mark within the U.S. Finally, as\npresented in Part I.E.3.c, a more recent opinion from the Fourth Circuit, Belmora LLC v. Bayer Consumer\nCare AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, __ S. Ct. __, 2017 WL 737826 (U.S. Feb. 27, 2017) (No.\n16-548), has the potential profoundly to change our traditional understanding of the national limits of\ntrademark rights (and of the relation between Lanham Act \xc2\xa7\xc2\xa7 32 and 43(a)). Belmora was denied\ncertiorari review. If its reasoning is adopted by other circuits, it may significantly lessen the\nimportance of much of the doctrine discussed in Parts I.E.3.a & b.\na.\n\nNational-Border Limits on Trademark Rights\n\nThe opinion below, Person\xe2\x80\x99s Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990), is frequently\ncited as standing for the proposition that foreign uses do not establish exclusive rights within the U.S.\nIn reading through the opinion, consider the following questions:\n\xe2\x80\xa2\n\nDoes the outcome in Person\xe2\x80\x99s strike you as fair?\n\n\xe2\x80\xa2\n\nAlternatively, has the Federal Circuit chosen the economically efficient outcome? If not, what\nwould that outcome be?\n\n\xe2\x80\xa2\n\nIs the Person\xe2\x80\x99s holding still viable in a globalized, internet-based economy?\n\nPerson\xe2\x80\x99s Co., Ltd. v. Christman\n900 F.2d 1565 (Fed. Cir. 1990)\nEDWARD S. SMITH, Senior Circuit Judge.\n[1] Person\xe2\x80\x99s Co., Ltd. appeals from the decision of the Patent and Trademark Office Trademark\nTrial and Appeal Board (Board) which granted summary judgment in favor of Larry Christman and\nordered the cancellation of appellant\xe2\x80\x99s registration2 for the mark \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d for various apparel\nitems. Appellant Person\xe2\x80\x99s Co. seeks cancellation of Christman\xe2\x80\x99s registration3 for the mark \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d\nfor wearing apparel on the following grounds: likelihood of confusion based on its prior foreign use,\n\n2\n\nRegistration No. 1,354,062, issued August 13, 1985.\n\n3\n\nRegistration No. 1,297,698, issued September 25, 1984.\n307\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nabandonment, and unfair competition within the meaning of the Paris Convention. We affirm the\nBoard\xe2\x80\x99s decision.\nBackground\n[2] The facts pertinent to this appeal are as follows: In 1977, Takaya Iwasaki first applied a\nstylized logo bearing the name \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d to clothing in his native Japan. Two years later Iwasaki\nformed Person\xe2\x80\x99s Co., Ltd., a Japanese corporation, to market and distribute the clothing items in retail\nstores located in Japan.\n[3] In 1981, Larry Christman, a U.S. citizen and employee of a sportswear wholesaler, visited a\nPerson\xe2\x80\x99s Co. retail store while on a business trip to Japan. Christman purchased several clothing items\nbearing the \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d logo and returned with them to the United States. After consulting with legal\ncounsel and being advised that no one had yet established a claim to the logo in the United States,\nChristman developed designs for his own \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d brand sportswear line based on appellant\xe2\x80\x99s\nproducts he had purchased in Japan. In February 1982, Christman contracted with a clothing\nmanufacturer to produce clothing articles with the \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d logo attached. These clothing items\nwere sold, beginning in April 1982, to sportswear retailers in the northwestern United States.\nChristman formed Team Concepts, Ltd., a Washington corporation, in May 1983 to continue\nmerchandising his sportswear line, which had expanded to include additional articles such as shoulder\nbags. All the sportswear marketed by Team Concepts bore either the mark \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d or a copy of\nappellant\xe2\x80\x99s globe logo; many of the clothing styles were apparently copied directly from appellant\xe2\x80\x99s\ndesigns.\n[4] In April 1983, Christman filed an application for U.S. trademark registration in an effort to\nprotect the \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d mark. Christman believed himself to be the exclusive owner of the right to use\nand register the mark in the United States and apparently had no knowledge that appellant soon\nintended to introduce its similar sportswear line under the identical mark in the U.S. market.\nChristman\xe2\x80\x99s registration issued in September 1984 for use on wearing apparel.\n[5] In the interim between Christman\xe2\x80\x99s first sale and the issuance of his registration, Person\xe2\x80\x99s Co.,\nLtd. became a well known and highly respected force in the Japanese fashion industry. The company,\nwhich had previously sold garments under the \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d mark only in Japan, began implementing its\nplan to sell goods under this mark in the United States. According to Mr. Iwasaki, purchases by buyers\nfor resale in the United States occurred as early as November 1982. This was some seven months\nsubsequent to Christman\xe2\x80\x99s first sales in the United States. Person\xe2\x80\x99s Co. filed an application for U.S.\ntrademark registration in the following year, and, in 1985, engaged an export trading company to\nintroduce its goods into the U.S. market. The registration for the mark \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d issued in August\n1985 for use on luggage, clothing and accessories. After recording U.S. sales near 4 million dollars in\n1985, Person\xe2\x80\x99s Co. granted California distributor Zip Zone International a license to manufacture and\nsell goods under the \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d mark in the United States.\n[6] In early 1986, appellant\xe2\x80\x99s advertising in the U.S. became known to Christman and both parties\nbecame aware of confusion in the marketplace. Person\xe2\x80\x99s Co. initiated an action to cancel Christman\xe2\x80\x99s\nregistration on the following grounds: (1) likelihood of confusion; (2) abandonment; and (3) unfair\ncompetition within the meaning of the Paris Convention. Christman counterclaimed and asserted prior\nuse and likelihood of confusion as grounds for cancellation of the Person\xe2\x80\x99s Co. registration.\n[7] After some discovery, Christman filed a motion with the Board for summary judgment on all\ncounts. In a well reasoned decision, the Board held for Christman on the grounds that Person\xe2\x80\x99s use of\nthe mark in Japan could not be used to establish priority against a \xe2\x80\x9cgood faith\xe2\x80\x9d senior user in U.S.\ncommerce. The Board found no evidence to suggest that the \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d mark had acquired any\nnotoriety in this country at the time of its adoption by Christman. Therefore, appellant had no\nreputation or goodwill upon which Christman could have intended to trade, rendering the unfair\ncompetition provisions of the Paris Convention inapplicable. The Board also found that Christman had\n308\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nnot abandoned the mark, although sales of articles bearing the mark were often intermittent. The\nBoard granted summary judgment to Christman and ordered appellant\xe2\x80\x99s registration cancelled.\n[8] The Board held in its opinion on reconsideration that Christman had not adopted the mark in\nbad faith despite his appropriation of a mark in use by appellant in a foreign country. The Board\nadopted the view that copying a mark in use in a foreign country is not in bad faith unless the foreign\nmark is famous in the United States or the copying is undertaken for the purpose of interfering with\nthe prior user\xe2\x80\x99s planned expansion into the United States. Person\xe2\x80\x99s Co. appeals and requests that this\ncourt direct the Board to enter summary judgment in its favor.\nIssues\n[9] 1. Does knowledge of a mark\xe2\x80\x99s use outside U.S. commerce preclude good faith adoption and\nuse of the identical mark in the United States prior to the entry of the foreign user into the domestic\nmarket?\n[10] 2. Did the Board properly grant summary judgment in favor of Christman on the issue of\nabandonment?\nCancellation\n[11] The Board may properly cancel a trademark registration within five years of issue when, e.g.\n(1) there is a valid ground why the trademark should not continue to be registered and (2) the party\npetitioning for cancellation has standing. Such cancellation of the marks\xe2\x80\x99 registrations may be based\nupon any ground which could have prevented registration initially. The legal issue in a cancellation\nproceeding is the right to register a mark, which may be based on either (1) ownership of a foreign\nregistration of the mark in question or (2) use of the mark in United States commerce.\nPriority\n[12] The first ground asserted for cancellation in the present action is \xc2\xa7 2(d) of the Lanham Act;\neach party claims prior use of registered marks which unquestionably are confusingly similar and\naffixed to similar goods.\n[13] Section 1 of the Lanham Act10 states that \xe2\x80\x9c[t]he owner of a trademark used in commerce may\nregister his trademark . . . .\xe2\x80\x9d The term \xe2\x80\x9ccommerce\xe2\x80\x9d is defined in Section 45 of the Act as \xe2\x80\x9c. . . all\ncommerce which may be lawfully regulated by Congress.\xe2\x80\x9d No specific Constitutional language gives\nCongress power to regulate trademarks, so the power of the federal government to provide for\ntrademark registration comes only under its commerce power. The term \xe2\x80\x9cused in commerce\xe2\x80\x9d in the\nLanham Act refers to a sale or transportation of goods bearing the mark in or having an effect on: (1)\nUnited States interstate commerce; (2) United States commerce with foreign nations; or (3) United\nStates commerce with the Indian Tribes.\n[14] In the present case, appellant Person\xe2\x80\x99s Co. relies on its use of the mark in Japan in an attempt\nto support its claim for priority in the United States. Such foreign use has no effect on U.S. commerce\nand cannot form the basis for a holding that appellant has priority here. The concept of territoriality is\nbasic to trademark law; trademark rights exist in each country solely according to that country\xe2\x80\x99s\nstatutory scheme. Christman was the first to use the mark in United States commerce and the first to\nobtain a federal registration thereon. Appellant has no basis upon which to claim priority and is the\njunior user under these facts.16\nThe case at bar is decided under the provisions of the Act in force prior to the enactment of the\nTrademark Law Revision Act of 1988.\n10\n\n16 Section 44 of the Lanham Act, 15 U.S.C. \xc2\xa7 1126 (1982), permits qualified foreign applicants who\nown a registered mark in their country of origin to obtain a U.S. trademark registration without\n\n309\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nBad Faith\n[15] Appellant vigorously asserts that Christman\xe2\x80\x99s adoption and use of the mark in the United\nStates subsequent to Person\xe2\x80\x99s Co.\xe2\x80\x99s adoption in Japan is tainted with \xe2\x80\x9cbad faith\xe2\x80\x9d and that the priority in\nthe United States obtained thereby is insufficient to establish rights superior to those arising from\nPerson\xe2\x80\x99s Co.\xe2\x80\x99s prior adoption in a foreign country. Relying on Woman\xe2\x80\x99s World Shops, Inc. v. Lane Bryant,\nInc., 5 USPQ2d 1985 (TTAB 1988), Person\xe2\x80\x99s Co. argues that a \xe2\x80\x9cremote junior user\xe2\x80\x9d of a mark obtains no\nright superior to the \xe2\x80\x9csenior user\xe2\x80\x9d if the \xe2\x80\x9cjunior user\xe2\x80\x9d has adopted the mark with knowledge of the\n\xe2\x80\x9csenior user\xe2\x80\x99s\xe2\x80\x9d prior use.18 In Woman\xe2\x80\x99s World, the senior user utilized the mark within a limited\ngeographical area. A junior user from a different geographical area of the United States sought\nunrestricted federal registration for a nearly identical mark, with the exception to its virtually\nexclusive rights being those of the known senior user. The Board held that such an appropriation with\nknowledge failed to satisfy the good faith requirements of the Lanham Act and denied the concurrent\nuse rights sought by the junior user. 5 USPQ2d at 1988. Person\xe2\x80\x99s Co. cites Woman\xe2\x80\x99s World for the\nproposition that a junior user\xe2\x80\x99s adoption and use of a mark with knowledge of another\xe2\x80\x99s prior use\nconstitutes bad faith. It is urged that this principle is equitable in nature and should not be limited to\nknowledge of use within the territory of the United States.\n[16] While the facts of the present case are analogous to those in Woman\xe2\x80\x99s World, the case is\ndistinguishable in one significant respect. In Woman\xe2\x80\x99s World, the first use of the mark by both the\njunior and senior users was in United States commerce. In the case at bar, appellant Person\xe2\x80\x99s Co., while\nfirst to adopt the mark, was not the first user in the United States. Christman is the senior user, and we\nare aware of no case where a senior user has been charged with bad faith. The concept of bad faith\nadoption applies to remote junior users seeking concurrent use registrations; in such cases, the\nlikelihood of customer confusion in the remote area may be presumed from proof of the junior user\xe2\x80\x99s\nknowledge.20 In the present case, when Christman initiated use of the mark, Person\xe2\x80\x99s Co. had not yet\nentered U.S. commerce. The Person\xe2\x80\x99s Co. had no goodwill in the United States and the \xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d\nmark had no reputation here. Appellant\xe2\x80\x99s argument ignores the territorial nature of trademark rights.\n[17] Appellant next asserts that Christman\xe2\x80\x99s knowledge of its prior use of the mark in Japan\nshould preclude his acquisition of superior trademark rights in the United States. The Board found\nthat, at the time of registration, Christman was not aware of appellant\xe2\x80\x99s intention to enter the U.S.\nclothing and accessories market in the future. Christman obtained a trademark search on the\n\xe2\x80\x9cPERSON\xe2\x80\x99S\xe2\x80\x9d mark and an opinion of competent counsel that the mark was \xe2\x80\x9cavailable\xe2\x80\x9d in the United\nStates. Since Appellant had taken no steps to secure registration of the mark in the United States,\nChristman was aware of no basis for Person\xe2\x80\x99s Co. to assert superior rights to use and registration here.\n\nalleging actual use in U.S. commerce. If a U.S. application is filed within six months of the filing of the\nforeign application, such U.S. registration will be accorded the same force and effect as if filed in the\nUnited States on the same date on which the application was first filed in the foreign country. The\nstatutory scheme set forth in \xc2\xa7 44 is in place to lower barriers to entry and assist foreign applicants in\nestablishing business goodwill in the United States. Person\xe2\x80\x99s Co. does not assert rights under \xc2\xa7 44,\nwhich if properly applied, might have been used to secure priority over Christman.\nAppellant repeatedly makes reference to a \xe2\x80\x9cworld economy\xe2\x80\x9d and considers Christman to be the\nremote junior user of the mark. Although Person\xe2\x80\x99s did adopt the mark in Japan prior to Christman\xe2\x80\x99s use\nin United States commerce, the use in Japan cannot be relied upon to acquire U.S. trademark rights.\nChristman is the senior user as that term is defined under U.S. trademark law.\n18\n\nSee 2 J. McCarthy, Trademarks and Unfair Competition \xc2\xa7 26:4 (2d ed. 1984); Restatement of\nTorts \xc2\xa7 732 comment a (1938).\n20\n\n310\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nAppellant would have us infer bad faith adoption because of Christman\xe2\x80\x99s awareness of its use of the\nmark in Japan, but an inference of bad faith requires something more than mere knowledge of prior\nuse of a similar mark in a foreign country.\n[18] As the Board noted below, Christman\xe2\x80\x99s prior use in U.S. commerce cannot be discounted\nsolely because he was aware of appellant\xe2\x80\x99s use of the mark in Japan. While adoption of a mark with\nknowledge of a prior actual user in U.S. commerce may give rise to cognizable equities as between the\nparties, no such equities may be based upon knowledge of a similar mark\xe2\x80\x99s existence or on a\nproblematical intent to use such a similar mark in the future. Knowledge of a foreign use does not\npreclude good faith adoption and use in the United States. While there is some case law supporting a\nfinding of bad faith where (1) the foreign mark is famous here23 or (2) the use is a nominal one made\nsolely to block the prior foreign user\xe2\x80\x99s planned expansion into the United States,24 as the Board\ncorrectly found, neither of these circumstances is present in this case.\n[19] We agree with the Board\xe2\x80\x99s conclusion that Christman\xe2\x80\x99s adoption and use of the mark were in\ngood faith. Christman\xe2\x80\x99s adoption of the mark occurred at a time when appellant had not yet entered\nU.S. commerce; therefore, no prior user was in place to give Christman notice of appellant\xe2\x80\x99s potential\nU.S. rights. Christman\xe2\x80\x99s conduct in appropriating and using appellant\xe2\x80\x99s mark in a market where he\nbelieved the Japanese manufacturer did not compete can hardly be considered unscrupulous\ncommercial conduct. Christman adopted the trademark being used by appellant in Japan, but appellant\nhas not identified any aspect of U.S. trademark law violated by such action. Trademark rights under the\nLanham Act arise solely out of use of the mark in U.S. commerce or from ownership of a foreign\nregistration thereon; \xe2\x80\x9c[t]he law pertaining to registration of trademarks does not regulate all aspects\nof business morality.\xe2\x80\x9d [citation omitted] When the law has been crafted with the clarity of crystal, it\nalso has the qualities of a glass slipper: it cannot be shoe-horned onto facts it does not fit, no matter\nhow appealing they might appear.\n....\nConclusion\n[20] In United Drug Co. v. Rectanus Co., 248 U.S. 90 (1918), the Supreme Court of the United States\ndetermined that \xe2\x80\x9c[t]here is no such thing as property in a trademark except as a right appurtenant to\nan established business or trade in connection with which the mark is employed . . . . [I]ts function is\nsimply to designate the goods as the product of a particular trader and to protect his goodwill against\nthe sale of another\xe2\x80\x99s product as his; and it is not the subject of property except in connection with an\nexisting business.\xe2\x80\x9d36 In the present case, appellant failed to secure protection for its mark through use\nin U.S. commerce; therefore, no established business or product line was in place from which\ntrademark rights could arise. Christman was the first to use the mark in U.S. commerce. This first use\nwas not tainted with bad faith by Christman\xe2\x80\x99s mere knowledge of appellant\xe2\x80\x99s prior foreign use, so the\nBoard\xe2\x80\x99s conclusion on the issue of priority was correct . . . . Accordingly, the grant of summary\njudgment was entirely in order, and the Board\xe2\x80\x99s decision is affirmed.\nAFFIRMED.\nSee, e.g., Vaudable v. Montmartre, Inc., 20 Misc.2d 757, 193 N.Y.S.2d 332, 123 USPQ 357\n(N.Y.Sup.Ct. 1959); Mother\xe2\x80\x99s Restaurants, Inc. v. Mother\xe2\x80\x99s Other Kitchen, Inc., 218 USPQ 1046 (TTAB\n1983).\n23\n\n24\n\nSee Davidoff Extension, S.A. v. Davidoff Int\xe2\x80\x99l., 221 USPQ 465 (S.D.Fla. 1983).\n\n36 248 U.S. at 97. It goes without saying that the underlying policy upon which this function is\ngrounded is the protection of the public in its purchase of a service or product. See, e.g. In re Canadian\nPacific Ltd., 754 F.2d 992, 994 (Fed.Cir. 1985).\n\n311\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nb.\n\nThe Well-Known Marks Doctrine\n\nThough it is rarely invoked, the well-known marks doctrine constitutes an important exception\nto\xe2\x80\x94or variation on\xe2\x80\x94the territoriality principle in trademark law. It is also the source of a basic split\nbetween the Ninth and Second Circuits on whether U.S. federal trademark law incorporates wellknown marks protection. As you read through the opinions below, consider the following questions:\n\xe2\x80\xa2\n\nAs a policy matter, for a foreign mark not used in the U.S., how well-known should such a\nmark be in the U.S. for it to qualify for protection in the U.S.? Should mere secondary meaning\nin a particular geographic location be sufficient? \xe2\x80\x9cSecondary meaning plus\xe2\x80\x9d? Nationwide\nfame?\n\n\xe2\x80\xa2\n\nWhat is the particular statutory or common law basis for the Ninth Circuit\xe2\x80\x99s application of the\nwell-known marks doctrine?\n\n\xe2\x80\xa2\n\nIs the New York Court of Appeals approach to the issue persuasive?\n\n\xe2\x80\xa2\n\nIs the well-known marks doctrine simply a transnational extension of the Tea Rose-Rectanus\ndoctrine? Is there any way in which the well-known marks doctrine is different?\ni.\n\nThe Well-Known Marks Doctrine in the Ninth Circuit\n\nGrupo Gigante SA De CV v. Dallo & Co., Inc.\n391 F.3d 1088 (9th Cir. 2004)\nKLEINFELD, Circuit Judge.\n[1] This is a trademark case. The contest is between a large Mexican grocery chain that has long\nused the mark, but not in the United States, and a small American chain that was the first to use the\nmark in the United States, but did so, long after the Mexican chain began using it, in a locality where\nshoppers were familiar with the Mexican mark.\nFacts\n[2] Grupo Gigante S.A. de C.V. (\xe2\x80\x9cGrupo Gigante\xe2\x80\x9d) operates a large chain of grocery stores in\nMexico, called \xe2\x80\x9cGigante,\xe2\x80\x9d meaning \xe2\x80\x9cGiant\xe2\x80\x9d in Spanish. Grupo Gigante first called a store \xe2\x80\x9cGigante\xe2\x80\x9d in\nMexico City in 1962. In 1963, Grupo Gigante registered the \xe2\x80\x9cGigante\xe2\x80\x9d mark as a trade name in Mexico,\nand has kept its registration current ever since. The chain was quite successful, and it had expanded\ninto Baja California, Mexico by 1987. By 1991, Grupo Gigante had almost 100 stores in Mexico,\nincluding six in Baja, all using the mark \xe2\x80\x9cGigante.\xe2\x80\x9d Two of the Baja stores were in Tijuana, a city on the\nU.S.-Mexican border, just south of San Diego.\n[3] As of August 1991, Grupo Gigante had not opened any stores in the United States. That month,\nMichael Dallo began operating a grocery store in San Diego, using the name \xe2\x80\x9cGigante Market.\xe2\x80\x9d In\nOctober 1996, Dallo and one of his brothers, Chris Dallo, opened a second store in San Diego, also\nunder the name Gigante Market. The Dallo brothers\xe2\x80\x94who include Michael, Chris, and their two other\nbrothers, Douray and Rafid\xe2\x80\x94have since controlled the two stores through various limited liability\ncorporations.\n[4] In 1995, which was after the opening of the Dallos\xe2\x80\x99 first store and before the opening of their\nsecond, Grupo Gigante began exploring the possibility of expanding into Southern California. It learned\nof the Dallos\xe2\x80\x99 Gigante Market in San Diego. Grupo Gigante decided against entering the California\nmarket at that time. It did nothing about the Dallos\xe2\x80\x99 store despite Grupo Gigante\xe2\x80\x99s knowledge that the\nDallos were using \xe2\x80\x9cGigante\xe2\x80\x9d in the store\xe2\x80\x99s name.\n[5] In 1998, Grupo Gigante decided that the time had come to enter the Southern California\nmarket. It arranged a meeting with Michael Dallo in June 1998 to discuss the Dallos\xe2\x80\x99 use of the name\n\xe2\x80\x9cGigante.\xe2\x80\x9d Grupo Gigante was unsuccessful at this meeting in its attempt to convince Dallo to stop using\n312\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe \xe2\x80\x9cGigante\xe2\x80\x9d mark. Also in June 1998, Grupo Gigante registered the \xe2\x80\x9cGigante\xe2\x80\x9d mark with the state of\nCalifornia. The Dallos did likewise in July 1998. Neither has registered the mark federally.\n[6] About one year later, in May 1999, Grupo Gigante opened its first U.S. store. That store was\nfollowed by a second later that year, and then by a third in 2000. All three stores were in the Los\nAngeles area. All were called \xe2\x80\x9cGigante,\xe2\x80\x9d like Grupo Gigante\xe2\x80\x99s Mexican stores.\n[7] In July 1999, after learning of the opening of Grupo Gigante\xe2\x80\x99s first U.S. store, the Dallos sent\nGrupo Gigante a cease-and-desist letter, making the same demand of Grupo Gigante that Grupo Gigante\nhad made of them earlier: stop using the name Gigante. Grupo Gigante responded several days later by\nfiling this lawsuit. Its claim was based on numerous federal and state theories, including trademark\ninfringement under the Lanham Act.3 It sought compensatory and punitive damages, a declaratory\njudgment that it had the superior right to the Gigante mark, and an injunction against the Dallos\xe2\x80\x99 use of\nthe mark. The Dallos counterclaimed, on similar theories, asserting it had the superior right to the\nmark in Southern California.4 The Dallos sought a declaratory judgment, injunctive relief, damages, and\ncancellation of Grupo Gigante\xe2\x80\x99s California registration of the mark.\n[8] The district court disposed of the case in a published decision on cross motions for summary\njudgment.5 The court recognized that under the \xe2\x80\x9cterritoriality principle,\xe2\x80\x9d use of a mark in another\ncountry generally does not serve to give the user trademark rights in the United States. Thus, the\nterritoriality principle suggests that the Dallos\xe2\x80\x99 use of the mark, which was the first in the United\nStates, would entitle them to claim the mark. But it held that because Grupo Gigante had already made\nGigante a well-known mark in Southern California by the time the Dallos began using it, an exception\nto the territoriality principle applied. As the district court interpreted what is known as the \xe2\x80\x9cfamousmark\xe2\x80\x9d or \xe2\x80\x9cwell-known mark\xe2\x80\x9d exception to the territoriality principle, Grupo Gigante\xe2\x80\x99s earlier use in\nMexico was sufficient to give it the superior claim to the mark in Southern California. The court held,\ntherefore, that Grupo Gigante was entitled to a declaratory judgment that it had a valid, protectable\ninterest in the Gigante name. Nevertheless, the court held that laches barred Grupo Gigante from\nenjoining the Dallos from using the mark at their two existing stores. The Dallos appeal the holding\nthat Grupo Gigante has a protectable right to use the mark in Southern California. Grupo Gigante\nappeals the laches holding. We agree in large part with the district court\xe2\x80\x99s excellent opinion, but some\nnecessary qualifications to it require a remand.\nAnalysis\nThe exception for famous and well-known foreign marks\n[9] We review the summary judgment decision de novo.\nSpecifically, Grupo Gigante asserted the following causes of action: (1) improper use of a wellknown mark, under Article 6 bis of the Paris Convention; (2) unfair competition, under Article 10 bis of\nthe Paris Convention; (3) trademark infringement, under \xc2\xa7 43(a) of the Lanham Act, 15 U.S.C.\n\xc2\xa7 1125(a); (4) false designation of origin, misrepresentation, and unfair competition, under \xc2\xa7 43(a) of\nthe Lanham Act, 15 U.S.C. \xc2\xa7 1125(a); (5) violation of the Federal Trademark Dilution Act of 1996, 15\nU.S.C. \xc2\xa7 1125(c); (6) common law unfair competition; (7) unfair competition under California law; (8)\ndilution under California law; and (9) common law misappropriation.\n3\n\nThe Dallos asserted the following causes of action: (1) trademark infringement, under \xc2\xa7 43(a) of\nthe Lanham Act, 15 U.S.C. \xc2\xa7 1125(a); (2) false designation of origin, misrepresentation, and unfair\ncompetition, under \xc2\xa7 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a); (3) common law unfair competition;\n(4) trademark infringement and unfair competition under California law; (5) dilution under California\nlaw; and (6) common law misappropriation.\n4\n\n5\n\nGrupo Gigante S.A. de C.V. v. Dallo & Co., Inc., 119 F.Supp.2d 1083 (C.D.Cal.2000).\n313\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[10] A fundamental principle of trademark law is first in time equals first in right. But things get\nmore complicated when to time we add considerations of place, as when one user is first in time in one\nplace while another is first in time in a different place. The complexity swells when the two places are\ntwo different countries, as in the case at bar.\n[11] Under the principle of first in time equals first in right, priority ordinarily comes with earlier\nuse of a mark in commerce. It is \xe2\x80\x9cnot enough to have invented the mark first or even to have registered\nit first.\xe2\x80\x9d If the first-in-time principle were all that mattered, this case would end there. It is undisputed\nthat Grupo Gigante used the mark in commerce for decades before the Dallos did. But the facts of this\ncase implicate another well-established principle of trademark law, the \xe2\x80\x9cterritoriality principle.\xe2\x80\x9d The\nterritoriality principle, as stated in a treatise, says that \xe2\x80\x9c[p]riority of trademark rights in the United\nStates depends solely upon priority of use in the United States, not on priority of use anywhere in the\nworld.\xe2\x80\x9d9 Earlier use in another country usually just does not count.10 Although we have not had\noccasion to address this principle, it has been described by our sister circuits as \xe2\x80\x9cbasic to trademark\nlaw,\xe2\x80\x9d in large part because \xe2\x80\x9ctrademark rights exist in each country solely according to that country\xe2\x80\x99s\nstatutory scheme.\xe2\x80\x9d11 While Grupo Gigante used the mark for decades before the Dallos used it, Grupo\nGigante\xe2\x80\x99s use was in Mexico, not in the United States. Within the San Diego area, on the northern side of\nthe border, the Dallos were the first users of the \xe2\x80\x9cGigante\xe2\x80\x9d mark. Thus, according to the territoriality\nprinciple, the Dallos\xe2\x80\x99 rights to use the mark would trump Grupo Gigante\xe2\x80\x99s.\n[12] Grupo Gigante does not contest the existence of the territoriality principle. But like the firstin-time, first-in-right principle, it is not absolute. The exception, as Grupo Gigante presents it, is that\nwhen foreign use of a mark achieves a certain level of fame for that mark within the United States, the\nterritoriality principle no longer serves to deny priority to the earlier foreign user. The Dallos concede\nthat there is such an exception, but dispute what it takes for a mark to qualify for it. Grupo Gigante\nwould interpret the exception broadly, while the Dallos would interpret it narrowly.\n[13] Grupo Gigante does not argue to this court that it used the mark in the United States in a way\nthat qualifies for protection regardless of the territoriality principle and any exception to it. While the\ndistrict court opinion suggests that Grupo Gigante made an alternative argument of this sort below, its\nargument on appeal is limited to whether the mark has become well-known enough to overcome the\nterritoriality principle. For example, while the statement of facts in Grupo Gigante\xe2\x80\x99s brief claims that\nGrupo Gigante engaged in advertising in Mexico that reached United States consumers, Grupo Gigante\ndoes not assert that this advertising, combined with other activities, constitutes domestic use of the\nmark.13 Thus, while Grupo Gigante does not appear to concede explicitly that application of the\nfamous-mark exception is necessary to its success on appeal, the structure of its argument suggests as\nmuch. Since the district court based its holding on an interpretation of the exception, and since Grupo\nGigante does not urge us to consider alternative ways it might be eligible for protection, we have no\noccasion to decide, and do not decide, whether Grupo Gigante could establish protection for its mark\napart from application of the famous-mark exception to the territoriality principle.\n\nJ. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, \xc2\xa7 29:2, at 29\xe2\x80\x936 (4th ed.\n2002) (internal footnote omitted).\n9\n\n10 See Person\xe2\x80\x99s Co., Ltd. v. Christman, 900 F.2d 1565, 1569\xe2\x80\x9370 (Fed.Cir. 1990); Buti v. Perosa,\nS.R.L., 139 F.3d 98, 103\xe2\x80\x9305 (2d Cir. 1998); Fuji Photo Film Co., Inc. v. Shinohara Shoji Kabushiki Kaisha,\n754 F.2d 591, 599 (5th Cir. 1985).\n11\n\nFuji Photo, 754 F.2d at 599; see also Person\xe2\x80\x99s, 900 F.2d at 1569.\n\n13\n\nSee, e.g., Int\xe2\x80\x99l Bancorp, LLC v. Societe des Bains de Mer, 329 F.3d 359, 370 (4th Cir. 2003).\n314\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[14] There is no circuit-court authority\xe2\x80\x94from this or any other circuit\xe2\x80\x94applying a famous-mark\nexception to the territoriality principle. At least one circuit judge has, in a dissent, called into question\nwhether there actually is any meaningful famous-mark exception.14 We hold, however, that there is a\nfamous mark exception to the territoriality principle. While the territoriality principle is a longstanding and important doctrine within trademark law, it cannot be absolute. An absolute territoriality\nrule without a famous-mark exception would promote consumer confusion and fraud. Commerce\ncrosses borders. In this nation of immigrants, so do people. Trademark is, at its core, about protecting\nagainst consumer confusion and \xe2\x80\x9cpalming off.\xe2\x80\x9d15 There can be no justification for using trademark law\nto fool immigrants into thinking that they are buying from the store they liked back home.\n[15] It might not matter if someone visiting Fairbanks, Alaska from Wellington, New Zealand saw\na cute hair-salon name\xe2\x80\x94\xe2\x80\x9dHair Today, Gone Tomorrow,\xe2\x80\x9d \xe2\x80\x9cMane Place,\xe2\x80\x9d \xe2\x80\x9cHair on Earth,\xe2\x80\x9d \xe2\x80\x9cMary\xe2\x80\x99s\nHair\xe2\x80\x99em,\xe2\x80\x9d or \xe2\x80\x9cShear Heaven\xe2\x80\x9d\xe2\x80\x94and decided to use the name on her own salon back home in New\nZealand. The ladies in New Zealand would not likely think they were going to a branch of a Fairbanks\nhair salon. But if someone opened a high-end salon with a red door in Wellington and called it\nElizabeth Arden\xe2\x80\x99s, women might very well go there because they thought they were going to an\naffiliate of the Elizabeth Arden chain, even if there had not been any other Elizabeth Ardens in New\nZealand prior to the salon\xe2\x80\x99s opening. If it was not an affiliate, just a local store with no connection,\ncustomers would be fooled. The real Elizabeth Arden chain might lose business if word spread that the\nWellington salon was nothing special.\n[16] The most cited case for the famous-mark exception is Vaudable v. Montmartre, Inc., a 1959\ntrial court decision from New York.16 A New York restaurant had opened under the name \xe2\x80\x9cMaxim\xe2\x80\x99s,\xe2\x80\x9d\nthe same name as the well-known Parisian restaurant in operation since 1893, and still in operation\ntoday. The New York Maxim\xe2\x80\x99s used similar typography for its sign, as well as other features likely to\nevoke the Paris Maxim\xe2\x80\x99s\xe2\x80\x94particularly among what the court called \xe2\x80\x9cthe class of people residing in the\ncosmopolitan city of New York who dine out\xe2\x80\x9d17 (by which it apparently meant the sort of people who\nspend for dinner what some people spend for a month\xe2\x80\x99s rent). The court enjoined the New York use,\neven though the Paris restaurant did not operate in New York, or in the United States, because the\nMaxim\xe2\x80\x99s mark was \xe2\x80\x9cfamous.\xe2\x80\x9d18\n[17] While Vaudable stands for the principle that even those who use marks in other countries\ncan sometimes\xe2\x80\x94when their marks are famous enough\xe2\x80\x94gain exclusive rights to the marks in this\ncountry, the case itself tells us little about just how famous or well-known the foreign mark must be.\nThe opinion states in rather conclusory terms that the Paris Maxim\xe2\x80\x99s \xe2\x80\x9cis, of course, well known in this\ncountry,\xe2\x80\x9d and that \xe2\x80\x9c[t]here is no doubt as to its unique and eminent position as a restaurant of\ninternational fame and prestige.\xe2\x80\x9d19 This language suggests that Maxim\xe2\x80\x99s had achieved quite a high\ndegree of fame here, and certainly enough to qualify for the exception to the territoriality principle, but\nit suggests nothing about just how much fame was necessary. It does not suggest where the line is\nbetween \xe2\x80\x9cShear Heaven\xe2\x80\x9d and Maxim\xe2\x80\x99s.\nInt\xe2\x80\x99l Bancorp, 329 F.3d at 389 n. 9 (Motz, J., dissenting) (\xe2\x80\x9cNor does the \xe2\x80\x98famous marks\xe2\x80\x99 doctrine\nprovide SBM any refuge. That doctrine has been applied so seldom (never by a federal appellate court\nand only by a handful of district courts) that its viability is uncertain.\xe2\x80\x9d).\n14\n\n15\n\nSee Thane Int\xe2\x80\x99l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th Cir. 2002).\n\n16\n\nVaudable v. Montmartre, Inc., 20 Misc.2d 757, 193 N.Y.S.2d 332 (N.Y.Sup.Ct.1959).\n\n17\n\nId. at 334.\n\n18\n\nId. at 335.\n\n19\n\nId. at 334 (emphasis added).\n315\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[18] The Patent and Trademark Office\xe2\x80\x99s Trademark Trial and Appeal Board, whose expertise we\nrespect and whose decisions create expectations, has recognized the validity of the famous-mark\nexception.20 But as with Vaudable, none of these cases helps us to establish a clear threshold for just\nhow famous a mark must be to qualify for the exception.\n[19] Grupo Gigante urges us to adopt the approach the district court took. The district court held\nthat the correct inquiry was to determine whether the mark had attained secondary meaning in the\nSan Diego area. Secondary meaning refers to a mark\xe2\x80\x99s actual ability to trigger in consumers\xe2\x80\x99 minds a\nlink between a product or service and the source of that product or service. That is, a mark has\nsecondary meaning \xe2\x80\x9cwhen, in the minds of the public, the primary significance of a mark is to identify\nthe source of the product rather than the product itself.\xe2\x80\x9d21 Determining whether a mark has secondary\nmeaning requires taking into account at least seven considerations, which the district court did in this\ncase.22\n[20] Applying its interpretation of the famous-mark exception, the district court concluded that\nGrupo Gigante\xe2\x80\x99s use of the mark had achieved secondary meaning in the San Diego area by the time the\nDallos opened their first store, and thus the court held that Grupo Gigante\xe2\x80\x99s use was eligible for the\nexception to the territoriality principle. Grupo Gigante asserts that we, too, should adopt secondary\nmeaning as the definition of the exception. We decline to go quite this far, however, because following\nthe district court\xe2\x80\x99s lead would effectively cause the exception to eclipse the territoriality rule entirely.\n[21] Secondary meaning has two functions. First, it serves to determine whether certain marks\nare distinctive enough to warrant protection. Some marks\xe2\x80\x94those that are arbitrary, fanciful, or\nsuggestive\xe2\x80\x94are deemed inherently distinctive. Others\xe2\x80\x94including those that are descriptive of some\nfeature of the products or services to which they are attached\xe2\x80\x94require some indication of\ndistinctiveness before trademark protection is available. That required indication is that the mark have\nacquired secondary meaning. Thus, before Grupo Gigante (or for that matter the Dallos) could have a\nprotectable interest in \xe2\x80\x9cGigante\xe2\x80\x9d at all, Grupo Gigante would have to show that the mark has acquired\nsecondary meaning by demonstrating that it has come to identify to consumers Grupo Gigante\xe2\x80\x99s\nparticular brand of store, not merely a characteristic of Grupo Gigante\xe2\x80\x99s stores and others like them.\n[22] Second, and most relevant to this case, secondary meaning defines the geographic area in\nwhich a user has priority, regardless of who uses the mark first. Under what has become known as the\nTea Rose\xe2\x80\x93Rectanus doctrine, priority of use in one geographic area within the United States does not\nnecessarily suffice to establish priority in another area. Thus, the first user of a mark will not\nnecessarily be able to stop a subsequent user, where the subsequent user is in an area of the country\n\xe2\x80\x9cremote\xe2\x80\x9d from the first user\xe2\x80\x99s area.26 The practical effect is that one user may have priority in one area,\nSee, e.g., The All England Lawn Tennis Club (Wimbledon) Ltd. v. Creations Aromatiques, Inc.,\n220 U.S.P.Q. 1069, 1072, 1983 WL 51903 (TTAB 1983); Mother\xe2\x80\x99s Rests. Inc. v. Mother\xe2\x80\x99s Other Kitchen,\nInc., 218 U.S.P.Q. 1046, 1048, 1983 WL 51992 (TTAB 1983).\n20\n\nWal\xe2\x80\x93Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000) (internal quotation and\nediting omitted).\n21\n\n22\n\nSee Filipino Yellow Pages, Inc. v. Asian Journal Publ\xe2\x80\x99ns, Inc., 198 F.3d 1143 (9th Cir. 1999).\n\nGood faith may also be an issue in such cases. See Hanover Star, 240 U.S. at 415, 36 S.Ct. 357\n(excepting from the general Tea Rose\xe2\x80\x93Rectanus principle cases in which \xe2\x80\x9cthe second adopter has\nselected the mark with some design inimical to the interests of the first user, such as to take the benefit\nof the reputation of his goods, to forestall the extension of his trade, or the like.\xe2\x80\x9d). Good faith is not\nraised in this appeal (perhaps because the appeal comes up on summary judgment) and is irrelevant to\nour analysis.\n26\n\n316\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwhile another user has priority over the very same mark in a different area. The point of this doctrine\nis that in the remote area, where no one is likely to know of the earlier user, it is unlikely that\nconsumers would be confused by the second user\xe2\x80\x99s use of the mark. Secondary meaning comes into\nplay in determining just how far each user\xe2\x80\x99s priority extends. Courts ask whether the first,\ngeographically limited use of the mark is well-known enough that it has gained secondary meaning not\njust within the area where it has been used, but also within the remote area, which is usually the area\nwhere a subsequent user is claiming the right to use the mark.\n[23] Assume, for example, that Grupo Gigante had been using the mark in Arizona as well as in\nvarious parts of Mexico, and that it had met all the other requirements of having a protectable interest\nin the mark, including having established secondary meaning throughout Arizona. If the Dallos later\nbegan using the same mark in San Diego without knowledge of Grupo Gigante\xe2\x80\x99s earlier \xe2\x80\x9cremote\xe2\x80\x9d use in\nArizona, whether Grupo Gigante could stop them would depend on what the mark meant to consumers\nin San Diego. Under the Tea Rose\xe2\x80\x93Rectanus doctrine, Grupo Gigante would have priority in San Diego,\nand thus be able to stop the Dallos\xe2\x80\x99 use of the mark, only if the secondary meaning from Grupo\nGigante\xe2\x80\x99s use of the mark in Arizona extended to San Diego as well. If, on the other hand, the secondary\nmeaning from Grupo Gigante\xe2\x80\x99s use were limited to Arizona, then the Dallos might be free to continue\nusing the mark in San Diego.\n[24] Thus, if the dispute before us were between a Mexican and Arizonan Grupo Gigante on the\none hand, and the Dallos on the other, we would analyze, under the Tea Rose\xe2\x80\x93Rectanus doctrine,\nwhether Grupo Gigante\xe2\x80\x99s use of the mark had achieved secondary meaning in San Diego. This is how\nthe district court analyzed the actual dispute, as a result of having defined the exception to the\nterritoriality principle in terms of secondary meaning. In other words, the district court treated Grupo\nGigante\xe2\x80\x99s use of the mark exactly as it would have had Grupo Gigante used the mark not only in Mexico,\nbut also in another part of the United States. Under the district court\xe2\x80\x99s interpretation of the exception\nto the territoriality principle, the fact that Grupo Gigante\xe2\x80\x99s earlier use of the mark was entirely outside\nof the United States becomes irrelevant.\n[25] The problem with this is that treating international use differently is what the territoriality\nprinciple does. This interpretation of the exception would effectively eliminate the territoriality\nprinciple by eliminating any effect of international borders on protectability. We would end up treating\nforeign uses of the mark just as we treat domestic uses under the Tea Rose\xe2\x80\x93Rectanus doctrine, asking\nin both cases whether the use elsewhere resulted in secondary meaning in the local market.\n[26] We would go too far if we did away with the territoriality principle altogether by expanding\nthe famous-mark exception this much. The territoriality principle has a long history in the common\nlaw,30 and at least two circuits have described it as \xe2\x80\x9cbasic to trademark law.\xe2\x80\x9d31 That status reflects the\nlack of a uniform trademark regime across international borders. What one must do to acquire\ntrademark rights in one country will not always be the same as what one must do in another. And once\n\nAs McCarthy has noted, traces of the territoriality principle appear in Justice Holmes\xe2\x80\x99s opinion\nfor the U.S. Supreme Court in A. Bourjois & Co. v. Katzel, 260 U.S. 689, 692 (1923). McCarthy, supra, at\n\xc2\xa7 29:1, p. 29\xe2\x80\x934; see also Philip Morris Inc. v. Allen Distribs., Inc., 48 F.Supp.2d 844, 850 (S.D.Ind. 1999)\n(identifying Bourjois as marking the shift from \xe2\x80\x9cthe \xe2\x80\x98universality\xe2\x80\x99 principle [to] a \xe2\x80\x98territoriality\nprinciple\xe2\x80\x99 that recognizes a separate legal existence for a trademark in each country whose laws afford\nprotection to the mark\xe2\x80\x9d).\n30\n\n31\n\nFuji Photo, 754 F.2d at 599; Person\xe2\x80\x99s, 900 F.2d at 1569.\n317\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nacquired, trademark rights gained in other countries are governed by each country\xe2\x80\x99s own set of laws.32\nFurthermore, we are arguably required by the Paris Convention, of which the United States is a\nsignatory, to preserve the territoriality principle in some form.33 Thus, we reject Grupo Gigante\xe2\x80\x99s\nargument that we should define the well-known mark exception as merely an inquiry into whether the\nmark has achieved secondary meaning in the area where the foreign user wishes to assert protection.\n[27] To determine whether the famous-mark exception to the territoriality rule applies, the\ndistrict court must determine whether the mark satisfies the secondary meaning test. The district\ncourt determined that it did in this case, and we agree with its persuasive analysis. But secondary\nmeaning is not enough.\n[28] In addition, where the mark has not before been used in the American market, the court\nmust be satisfied, by a preponderance of the evidence, that a substantial percentage of consumers in\nthe relevant American market is familiar with the foreign mark. The relevant American market is the\ngeographic area where the defendant uses the alleged infringing mark. In making this determination,\nthe court should consider such factors as the intentional copying of the mark by the defendant, and\nwhether customers of the American firm are likely to think they are patronizing the same firm that\nuses the mark in another country. While these factors are not necessarily determinative, they are\nparticularly relevant because they bear heavily on the risks of consumer confusion and fraud, which\nare the reasons for having a famous-mark exception.\n[29] Because the district court did not have the benefit of this additional test, we vacate and\nremand so that it may be applied. We intimate no judgment on whether further motion practice and\nsome additions to what the district court has already written in its published opinion will suffice, or\nwhether trial will be needed to apply this new test. Nor do we intimate what the result should be. The\nconcurring opinion is incorrect in its suggestion that the case necessarily must go to trial because\ndistinctiveness of a mark is a question of fact and defendants have contested the reliability of plaintiffs\xe2\x80\x99\nsurvey evidence. That conclusion flies in the face of the 1986 triumvirate of summary judgment\ncases.34 Regardless of whether questions are factual, there is nothing to try unless there is a genuine\nissue of material fact. One survey that is impeachable, but still good enough to get to a jury, weighed\nagainst no survey evidence at all on the other side, along with all the other evidence in the record, does\nnot necessarily add up to a genuine issue of fact. . . .\nVACATED AND REMANDED.\nGRABER, Circuit Judge, concurring:\n[30] I concur in the majority\xe2\x80\x99s opinion because I agree that a foreign owner of a supposedly\nfamous or well-known foreign trademark must show a higher level of \xe2\x80\x9cfame\xe2\x80\x9d or recognition than that\n\n32 See Ingenohl v. Walter E. Olsen & Co., Inc., 273 U.S. 541, 544, (1927) (\xe2\x80\x9cA trademark started\nelsewhere would depend for its protection in Hongkong upon the law prevailing in Hongkong and\nwould confer no rights except by the consent of that law.\xe2\x80\x9d); Fuji Photo, 754 F.2d at 599 (\xe2\x80\x9c[T]rademark\nrights exist in each country solely according to that country\xe2\x80\x99s statutory scheme.\xe2\x80\x9d).\n\nParis Convention for the Protection of Industrial Property, Mar. 20, 1883, as revised at\nStockholm, July 14, 1967, art. 6(3), 21 U.S.T. 1583, \xc2\xa7 6(3) (\xe2\x80\x9cA mark duly registered in a country of the\nUnion shall be regarded as independent of marks registered in the other countries of the Union,\nincluding the country of origin.\xe2\x80\x9d).\n33\n\nSee Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242\n(1986); Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574 (1986).\n34\n\n318\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nrequired to establish secondary meaning. Ultimately, the standard for famous or well-known marks is\nan intermediate one. To enjoy extraterritorial trademark protection, the owner of a foreign trademark\nneed not show the level of recognition necessary to receive nation-wide protection against trademark\ndilution. On the other hand, the foreign trademark owner who does not use a mark in the United States\nmust show more than the level of recognition that is necessary in a domestic trademark infringement\ncase.\n[31] Nonetheless, I write separately to express my view that the evidence that Plaintiffs have\npresented thus far is insufficient as a matter of law to establish that their mark is famous or wellknown. The survey population and the survey\xe2\x80\x99s results establish little more than the fact that Plaintiffs\xe2\x80\x99\ncustomers are familiar with Plaintiffs\xe2\x80\x99 stores. In an abundance of caution, the majority does not\nintimate whether that evidence is sufficient to warrant a grant of summary judgment in Plaintiffs\xe2\x80\x99 favor\non the issue of the famous mark exception. I would go beyond intimation and hold directly that\nPlaintiffs\xe2\x80\x99 evidence is insufficient to support a grant of summary judgment in its favor. I would further\nhold that, unless the district court entertains a renewed motion for summary judgment on a\nconsiderably expanded record, this case should proceed to trial.\n[32] The district court, relying entirely on survey evidence, concluded that Plaintiffs\xe2\x80\x99 trademark\nhad acquired secondary meaning and was thus entitled to protection from domestic users.1 The survey\npopulation consisted of only 78 people in San Diego County who were \xe2\x80\x9cSpanish-speaking, and had\nrecently purchased Mexican-style food at a supermarket or other food store.\xe2\x80\x9d Grupo Gigante S.A. de C.V.\nv. Dallo & Co., Inc., 119 F.Supp.2d 1083, 1093 (C.D.Cal. 2000). Twenty-four respondents from that\npopulation \xe2\x80\x9c(1) had recently shopped at a Gigante store in Mexico; (2) believed that the Gigante name\nwas affiliated with an entity that had at least one store located in Mexico; or (3) were aware of a\nGigante supermarket located in Mexico.\xe2\x80\x9d Id. However, the survey was conducted in 2000, nine years\nafter Defendants first began using the Gigante name in the United States. When testing for awareness\nof the Gigante mark before Defendants\xe2\x80\x99 entry into the San Diego market in 1991, the awareness level\ndropped to 20 to 22 percent of the respondents. Id. That is, the district court based its conclusion that\nPlaintiffs\xe2\x80\x99 mark was well known on a survey that turned up just seventeen people who had heard of\nGigante before 1991.\n[33] That evidence is insufficient in two important respects. First, the survey result is highly\nquestionable in view of its narrowly defined survey population. Plaintiffs\xe2\x80\x99 own description of their\nstores makes clear that the goods sold are little different from those available in any large retail\ngrocery store: \xe2\x80\x9cProduct offerings in the Gigante stores generally include a complete selection of\nperishable and non-perishable foods and a wide selection of general merchandise, as well as clothing\nand fashion items.\xe2\x80\x9d Further, Plaintiffs admit in their briefs that the clientele of their Mexican stores\nincludes \xe2\x80\x9cboth Hispanic and non-Hispanic\xe2\x80\x9d customers. Consequently, nothing about either the nature\nof the goods sold by Plaintiffs or its customer base warrants limiting the relevant public to Mexican\xe2\x80\x93\nAmericans.\n....\n[34] Because Plaintiffs sell widely-available, non-specialized goods to the general public, it is\nuninformative to focus exclusively on Mexican\xe2\x80\x93Americans living in San Diego County. The district\n\nExpert surveys can provide the most persuasive evidence of secondary meaning. Comm. for\nIdaho\xe2\x80\x99s High Desert, Inc. v. Yost, 92 F.3d 814, 822 (9th Cir. 1996). \xe2\x80\x9cHowever, survey data is not a\nrequirement and secondary meaning can be, and often is, proven by circumstantial evidence.\xe2\x80\x9d 5 J.\nThomas McCarthy, McCarthy on Trademarks and Unfair Competition, \xc2\xa7 32:190, at 32\xe2\x80\x93319 to 32\xe2\x80\x93320\n(4th ed.2002).\n1\n\n319\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ncourt\xe2\x80\x99s reliance on Plaintiffs\xe2\x80\x99 survey is especially problematic because its population was limited to\nMexican\xe2\x80\x93Americans who had recently purchased Mexican-style food at a supermarket or grocery\nstore. That survey is only very slightly more informative than the study whose probative value we\ndismissed entirely in Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), because it focused\nexclusively on the plaintiff\xe2\x80\x99s existing customers: \xe2\x80\x9cAvery Dennison\xe2\x80\x99s marketing reports are comparable\nto a survey we discussed in Anti\xe2\x80\x93Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316 (9th Cir.\n1982), proving only the near tautology that consumers already acquainted with Avery and Avery\nDennison products are familiar with Avery Dennison.\xe2\x80\x9d 189 F.3d at 879.\n[35] Because a conclusion that Plaintiffs have a protectable interest would prohibit Defendants\nfrom selling groceries under that mark to any residents of San Diego County\xe2\x80\x94not just to Mexican\xe2\x80\x93\nAmericans\xe2\x80\x94it makes little sense to define the relevant public so narrowly. Comprised of all grocery\nshoppers, the \xe2\x80\x9crelevant sector of the public\xe2\x80\x9d in this case is the very antithesis of a specialized market;\nbecause everyone eats, the relevant sector of the public consists of all residents of San Diego County,\nwithout qualification.\n[36] Second, in view of the standard we announce today, I do not believe that a showing that 20 to\n22 percent of the relevant market is familiar with the foreign mark establishes that a \xe2\x80\x9csignificant\xe2\x80\x9d or\n\xe2\x80\x9csubstantial\xe2\x80\x9d percentage of that market is familiar with the foreign mark. On that ground alone, I would\nconclude that Plaintiffs have failed, so far, to show that their mark is famous or well-known.\n[37] In terms of the level of fame, trademark dilution cases often speak of a \xe2\x80\x9csignificant\npercentage of the defendant\xe2\x80\x99s market.\xe2\x80\x9d Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d\n1026, 1031 (2d Cir. 1989). Discussing the level of recognition required to establish \xe2\x80\x9cniche fame,\xe2\x80\x9d\nMcCarthy argues that \xe2\x80\x9ca mark should not be categorized as \xe2\x80\x98famous\xe2\x80\x99 unless it is known to more than 50\npercent of the defendant\xe2\x80\x99s potential customers.\xe2\x80\x9d 4 J. Thomas McCarthy, McCarthy on Trademarks and\nUnfair Competition, \xc2\xa7 24:112, at 24\xe2\x80\x93271 (4th ed. 2002).\n[38] I would adopt a similar standard for the exception for famous or well-known foreign marks.\nWhen a foreign mark has not been used in the United States, I would require the owner of the foreign\nmark to show, through surveys and other evidence, that a majority of the defendant\xe2\x80\x99s customers and\npotential customers, on aggregate, were familiar with the foreign mark when the defendant began its\nallegedly infringing use. Admittedly, that is a high standard. However, I believe that a stringent\nstandard is required when conferring trademark protection to a mark that has never been, and\nperhaps never may be, used in this country. A conclusion that Plaintiffs\xe2\x80\x99 mark is well-known in the\nrelevant sector brings with it the right to oust Defendants from their own market, notwithstanding the\nfact that they have established priority of use. A bare showing of acquired distinctiveness should not\nsuffice to invert the ordinary allocation of trademark rights.\n[39] Of course, I recognize that the doctrine of \xe2\x80\x9cniche fame\xe2\x80\x9d has received heavy, and in the context\nof domestic trademark law, deserved criticism. However, the niche fame cases may provide the district\ncourt with an instructive benchmark against which to measure an intermediate standard of fame.2\n[40] In summary, I agree with the majority\xe2\x80\x99s conclusion that this case must be remanded and the\nevidence reevaluated under a heightened standard for the famous or well-known marks exception.\nThere are no other cases that directly guide us here. Although international trademark law has\nrecognized both the territoriality principle and the exception for famous and well-known marks since\n1925, remarkably, no case addressed meaningfully the exception before the district court\xe2\x80\x99s decision\nbelow. Since that decision, only one case has confronted the issue. Empresa Cubana del Tabaca v.\nCulbro Corp., 70 U.S.P.Q.2d 1650, 2004 WL 602295 (S.D.N.Y. 2004). Empresa Cubana adhered closely to\nthe reasoning and conclusion of the district court in this case. Id. at 1676\xe2\x80\x9377.\n2\n\n320\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nHowever, I would hold directly that the evidence presented thus far does not meet that standard and\nthus does not suffice to warrant protection for Plaintiff\xe2\x80\x99s mark. Finally, in determining whether a\nforeign mark has met the standard for famous or well-known foreign trademarks, I would look to\nprecedent from this court and others addressing whether a mark has become famous in its market\nniche.\nii.\n\nThe Well-Known Marks Doctrine in the Second Circuit\n\nITC Ltd. v. Punchgini, Inc.\n482 F.3d 135 (2d Cir. 2007)\nRAGGI, Circuit Judge.\n[1] This case requires us to decide, among other things, the applicability of the \xe2\x80\x9cfamous marks\xe2\x80\x9d\ndoctrine to a claim for unfair competition under federal and state law. Plaintiffs ITC Limited and ITC\nHotels Limited (collectively \xe2\x80\x9cITC\xe2\x80\x9d) held a registered United States trademark for restaurant services:\n\xe2\x80\x9cBukhara.\xe2\x80\x9d They sued defendants, Punchgini, Inc., Bukhara Grill II, Inc., and certain named individuals\nassociated with these businesses, in the United States District Court for the Southern District of New\nYork (Gerard E. Lynch, Judge ) claiming that defendants\xe2\x80\x99 use of a similar mark and related trade dress\nconstituted trademark infringement, unfair competition, and false advertising in violation of federal\nand state law. ITC now appeals from the district court\xe2\x80\x99s award of summary judgment in favor of\ndefendants on all claims. See ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d 275 (S.D.N.Y. 2005).\n[2] Having reviewed the record de novo, we affirm the award of summary judgment on ITC\xe2\x80\x99s\ninfringement claim, concluding, as did the district court, that ITC abandoned its Bukhara mark for\nrestaurant services in the United States. To the extent ITC insists that the \xe2\x80\x9cfamous marks\xe2\x80\x9d doctrine\nnevertheless permits it to sue defendants for unfair competition because its continued international\nuse of the mark led to a federally protected right, we conclude that Congress has not yet incorporated\nthat doctrine into federal trademark law.2 Therefore, we affirm the award of summary judgment on\nITC\xe2\x80\x99s federal unfair competition claim. Whether the famous marks doctrine applies to a New York\ncommon law claim for unfair competition and, if so, how famous a mark must be to trigger that\napplication, are issues not easily resolved by reference to existing state law. Accordingly, we certify\nquestions relating to these issues to the New York Court of Appeals, reserving our decision on this part\nof ITC\xe2\x80\x99s appeal pending the state court\xe2\x80\x99s response.\nI. Factual Background\nA. The Bukhara Restaurant in New Delhi\n[3] ITC Limited is a corporation organized under the laws of India. Through its subsidiary, ITC\nHotels Limited, it owns and operates the Maurya Sheraton & Towers, a five-star hotel in New Delhi,\nIndia. One of the restaurants in the Maurya Sheraton complex is \xe2\x80\x9cBukhara.\xe2\x80\x9d Named after a city in\nUzbekistan on the legendary Silk Road between China and the West, Bukhara offers a cuisine and decor\n\nAlthough the term \xe2\x80\x9cfamous marks\xe2\x80\x9d is often used to describe marks that qualify for protection\nunder the federal anti-dilution statute, see 15 U.S.C. \xc2\xa7 1125(c), the \xe2\x80\x9cfamous marks\xe2\x80\x9d doctrine is, in fact, a\ndifferent and distinct \xe2\x80\x9clegal concept under which a trademark or service mark is protected within a\nnation if it is well known in that nation even though the mark is not actually used or registered in that\nnation,\xe2\x80\x9d 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, \xc2\xa7 29.2, at 29\xe2\x80\x93164 (4th\ned.2002). Thus, the famous marks doctrine might more aptly be described as the famous foreign marks\ndoctrine. It is in this latter sense that we reference the famous marks doctrine on this appeal.\n2\n\n321\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ninspired by the northwest frontier region of India. Since its opening in 1977, the New Delhi Bukhara\nhas remained in continuous operation, acquiring a measure of international renown.4\n[4] Over the past three decades, ITC has sought to extend the international reach of the Bukhara\nbrand. At various times, it has opened or, through franchise agreements, authorized Bukhara\nrestaurants in Hong Kong, Bangkok, Bahrain, Montreal, Bangladesh, Singapore, Kathmandu, Ajman,\nNew York, and Chicago. As of May 2004, however, ITC-owned or -authorized Bukhara restaurants were\nin operation only in New Delhi, Singapore, Kathmandu, and Ajman.\nB. ITC\xe2\x80\x99s Use of the Bukhara Mark in the United States\n1. ITC\xe2\x80\x99s Use and Registration of the Mark for Restaurants\n[5] In 1986, an ITC-owned and -operated Bukhara restaurant opened in Manhattan. In 1987, ITC\nentered into a franchise agreement for a Bukhara restaurant in Chicago. Shortly after opening its New\nYork restaurant, ITC sought to register the Bukhara mark with the United States Patent and Trademark\nOffice (\xe2\x80\x9cPatent and Trademark Office\xe2\x80\x9d). On October 13, 1987, ITC obtained United States trademark\nregistration for the Bukhara mark in connection with \xe2\x80\x9crestaurant services.\xe2\x80\x9d See United States\nTrademark Registration No. 1,461,445 (Oct. 13, 1987). The Manhattan restaurant remained in\noperation for only five years, closing on December 17, 1991. On August 28, 1997, after a decade in\nbusiness, ITC cancelled its Chicago franchise. Notwithstanding its registration, ITC concedes that it has\nnot owned, operated, or licensed any restaurant in the United States using the Bukhara mark since\nterminating the Chicago restaurant franchise.\n2. Use of the Mark for Packaged Foods\n[6] Over three years later, in 2001, ITC commissioned a marketing study to determine the\nviability of selling packaged food products in the United States under the Bukhara label, including \xe2\x80\x9cDal\nBukhara.\xe2\x80\x9d5 In that same year, ITC filed an application with the Patent and Trademark Office to register\na \xe2\x80\x9cDal Bukhara\xe2\x80\x9d mark in connection with packaged, ready-to-serve foods. In May 2003, ITC sold\npackaged Dal Bukhara food products to two distributors, one in California and the other in New Jersey.\nOne month later, in June 2003, ITC exhibited Dal Bukhara products at the International Fancy Foods\nShow in New York City.\nC. The Opening of \xe2\x80\x9cBukhara Grill\xe2\x80\x9d\n[7] Meanwhile, in 1999, named defendants Raja Jhanjee, Vicky Vij, Dhandu Ram, and Paragnesh\nDesai, together with Vijay Roa, incorporated \xe2\x80\x9cPunchgini, Inc.\xe2\x80\x9d for the purpose of opening an Indian\nrestaurant in New York City. Jhanjee, Vij, and Ram had all previously worked at the New Delhi Bukhara,\nand Vij had also previously worked at ITC\xe2\x80\x99s New York Bukhara. In selecting a name for their\nrestaurant, the Punchgini shareholders purportedly considered \xe2\x80\x9cFar Pavilions\xe2\x80\x9d and \xe2\x80\x9cPassage to India\xe2\x80\x9d\nbefore settling on \xe2\x80\x9cBukhara Grill.\xe2\x80\x9d As Vij candidly acknowledged at his deposition, there was then \xe2\x80\x9cno\nrestaurant Bukhara in New York, and we just thought we will take the name.\xe2\x80\x9d Vij Dep. 25:7\xe2\x80\x9311, May 5,\n2004. After some initial success with \xe2\x80\x9cBukhara Grill,\xe2\x80\x9d several Punchgini shareholders, with the support\nof two additional partners, defendants Mahendra Singh and Bachan Rawat, organized a second\ncorporation, \xe2\x80\x9cBukhara Grill II, Inc.,\xe2\x80\x9d in order to open a second New York restaurant, \xe2\x80\x9cBukhara Grill II.\xe2\x80\x9d\n[8] When the record is viewed in the light most favorable to ITC, numerous similarities suggestive\nof deliberate copying can readily be identified between the defendants\xe2\x80\x99 Bukhara Grill restaurants and\nthe Bukhara restaurants owned or licensed by ITC. Quite apart from the obvious similarity in name,\nThe record indicates that in 2002 and 2003, the New Delhi Bukhara was named one of the\nworld\xe2\x80\x99s fifty best restaurants by London-based \xe2\x80\x9cRestaurant\xe2\x80\x9d magazine.\n4\n\n5\n\nThis product takes its name from a lentil dish served at the New Delhi Bukhara restaurant.\n322\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndefendants\xe2\x80\x99 restaurants mimic the ITC Bukharas\xe2\x80\x99 logos, decor, staff uniforms, wood-slab menus, and\nred-checkered customer bibs. Indeed, the similarities were sufficiently obvious to be noted in a press\nreport, wherein defendant Jhanjee is quoted acknowledging that the New York Bukhara Grill\nrestaurant \xe2\x80\x9cis quite like Delhi\xe2\x80\x99s Bukhara.\xe2\x80\x9d\nD. Plaintiffs\xe2\x80\x99 Cease and Desist Letter\n[9] By letter dated March 22, 2000, ITC, through counsel, demanded that defendants refrain from\nfurther use of the Bukhara mark. The letter accused defendants of unlawfully appropriating the\nreputation and goodwill of ITC\xe2\x80\x99s Bukhara restaurants in India and the United States by adopting a\nvirtually identical name for their New York Bukhara Grill restaurants. It further demanded, under\nthreat of legal action, that defendants acknowledge ITC\xe2\x80\x99s exclusive rights to the Bukhara mark, disclose\nthe period for which defendants had used the mark, and remit to ITC any profits derived therefrom.\n[10] In a response dated March 30, 2000, defendants\xe2\x80\x99 counsel expressed an interest in avoiding\nlitigation. Nevertheless, counsel observed that ITC appeared to have abandoned the Bukhara mark by\nnot using it in the United States for several years. Receiving no reply, defendants\xe2\x80\x99 counsel sent a second\nletter to ITC dated June 22, 2000, stating that, if no response was forthcoming \xe2\x80\x9cby June 28, 2000, we\nwill assume that ITC Limited has abandoned rights it may have had in the alleged mark and any alleged\nclaim against our client.\xe2\x80\x9d Marsh Letter to Horwitz, June 22, 2000. The record indicates no timely reply.\n[11] Instead, almost two years later, on April 15, 2002, ITC\xe2\x80\x99s counsel wrote to defendants\nreiterating the demands made in March 2000 and complaining of defendants\xe2\x80\x99 failure formally to\nrespond to that initial letter. Defendants\xe2\x80\x99 counsel promptly challenged the latter assertion; faulted ITC\nfor failing to reply to his March 22, 2000 letter; and reasserted his abandonment contention, a position\nthat he claimed was now bolstered by the passage of additional time. There was apparently no further\ncommunication among the parties until this lawsuit.\nE. The Instant Lawsuit\n[12] On February 26, 2003, ITC filed the instant lawsuit. In the amended complaint that is the\ncontrolling pleading for purposes of our review, ITC charged defendants with trademark infringement\nunder section 32(1)(a) of the Lanham Act, see 15 U.S.C. \xc2\xa7 1114(1)(a), as well as unfair competition and\nfalse advertising under sections 43(a) and 44(h) of the Lanham Act, see 15 U.S.C. \xc2\xa7\xc2\xa7 1125(a), 1126(h).\nITC also pursued parallel actions under New York common law.6 As an affirmative defense, defendants\ncharged ITC with abandonment of its United States rights to the Bukhara mark and, on that ground,\nthey filed a counterclaim seeking cancellation of the ITC registration.\n[13] Following discovery, defendants successfully moved for summary judgment. In a detailed\npublished decision, the district court ruled that ITC could not pursue an infringement claim because\nthe record conclusively demonstrated its abandonment of the Bukhara mark as applied to restaurants\nin the United States. See ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d at 285. To the extent ITC asserted that\nits continued operation of Bukhara restaurants outside the United States allowed it to sue defendants\nfor unfair competition under the famous marks doctrine, the district court was not convinced. It\nobserved that, even if it were to assume the applicability of the famous marks doctrine, ITC had failed\nto adduce sufficient evidence to permit a reasonable jury to conclude that the name or trade dress of\nits foreign restaurants had attained the requisite level of United States recognition to trigger the\n\nITC\xe2\x80\x99s amended complaint also charged defendants with false designation of origin in violation of\nthe Lanham Act, 15 U.S.C. \xc2\xa7 1125(a), and deceptive acts and practices in violation of New York General\nBusiness Law \xc2\xa7 349, but it appears to have abandoned those claims in otherwise opposing defendants\xe2\x80\x99\nmotion for summary judgment. See ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d at 278.\n6\n\n323\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndoctrine. See id. at 291. Finally, the district court found that ITC lacked standing to pursue its false\nadvertising claim. See id. at 291\xe2\x80\x9392. This appeal followed.\n[14] Before this court, ITC advances essentially three arguments. It submits that (1) the record\ndoes not conclusively establish its abandonment of United States rights in the Bukhara mark, (2) the\ndistrict court misapplied applicable federal and state law regarding the famous marks doctrine, and (3)\nit has standing to sue defendants for false advertising.\nII. Discussion\n{The court determined that ITC had abandoned its registered Bukhara mark. We will address\nabandonment in Part III of the casebook below.}\nC. Unfair Competition\n1. Federal Claim Under Section 43(a)(1)(A) of the Lanham Act\n[15] ITC claims that defendants violated section 43(a)(1)(A) of the Lanham Act by engaging in\nunfair competition in the use of its Bukhara mark and its related trade dress. Section 43(a)(1)(A)\nallows the producer of a product or service to initiate a cause of action against a person who uses \xe2\x80\x9cany\nword, term name, symbol, or device, or any combination thereof . . . which . . . is likely to cause\nconfusion . . . as to the origin, sponsorship, or approval of [the producer\xe2\x80\x99s] . . . services.\xe2\x80\x9d 15 U.S.C.\n\xc2\xa7 1125(a)(1)(A). This protection is broader than that afforded by section 32(1)(a), which prohibits\nonly infringement of marks actually registered with the Patent and Trademark Office. See Two Pesos v.\nTaco Cabana, 505 U.S. 763, 768 (1992) (\xe2\x80\x9cSection 43(a) prohibits a broader range of practices than does\n\xc2\xa7 32, which applies to registered marks, but it is common ground that \xc2\xa7 43(a) protects qualifying\nunregistered trademarks\xe2\x80\x9d (internal citations and quotation marks omitted)); accord Chambers v. Time\nWarner, Inc., 282 F.3d 147, 155 (2d Cir. 2002).\n[16] To succeed on a section 43(a)(1)(A) claim, a plaintiff must prove (1) that the mark or dress is\ndistinctive as to the source of the good or service at issue, and (2) that there is the likelihood of\nconfusion between the plaintiff\xe2\x80\x99s good or service and that of the defendant. See Yurman Design, Inc. v.\nPAJ, Inc., 262 F.3d 101, 115 (2d Cir. 2001) (citing Wal\xe2\x80\x93Mart Stores, Inc. v. Samara Bros., 529 U.S. 205,\n210 (2000)); see also Two Pesos v. Taco Cabana, 505 U.S. at 768; Louis Vuitton Malletier v. Dooney &\nBourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006). Preliminary to making this showing, however, a plaintiff\nmust demonstrate its own right to use the mark or dress in question. . . .\n[17] In light of our conclusion that, as a matter of law, ITC abandoned its registered Bukhara mark\nas of August 28, 2000, ITC confronts a high hurdle in demonstrating that, at the time of defendants\xe2\x80\x99\nchallenged actions, it possessed a priority right to the use of the Bukhara mark and related trade dress\nfor restaurants in the United States. See Vais Arms, Inc. v. Vais, 383 F.3d at 292 n. 8 (noting that\n\xe2\x80\x9cabandonment results in a break in the chain of priority\xe2\x80\x9d) (quoting 2 McCarthy, supra, \xc2\xa7 17:4);\nEmergency One, Inc. v. American Fire Eagle Engine Co., 332 F.3d 264, 268 (4th Cir. 2003) (\xe2\x80\x9cThe priority\nto use a mark . . . can be lost through abandonment.\xe2\x80\x9d). To clear this hurdle, ITC invokes the famous\nmarks doctrine. It submits that, because (1) since 1977, it has continuously used its Bukhara mark and\ntrade dress outside the United States; and (2) that mark was renowned in the United States before\ndefendants opened their first Bukhara Grill restaurant in New York in 1999, it has a priority right to\nthe mark sufficient to claim section 43(a)(1)(A) protection in this country.\n[18] To explain why we disagree, we begin by discussing the principle of trademark territoriality.\nWe then discuss the famous marks exception to this principle and the international treaties,\nimplementing legislation, and policy concerns relied on by ITC in urging the application of this\nexception to this case.\na. The Territoriality Principle\n[19] The principle of territoriality is basic to American trademark law. See American Circuit\nBreaker Corp. v. Or. Breakers, Inc., 406 F.3d 577, 581 (9th Cir. 2005); Kos Pharms., Inc. v. Andrx Corp.,\n324\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n369 F.3d 700, 714 (3d Cir. 2004); Buti v. Impressa Perosa, S.R.L., 139 F.3d 98, 103 (2d Cir. 1998);\nPerson\xe2\x80\x99s Co. v. Christman, 900 F.2d 1565, 1568\xe2\x80\x9369 (Fed.Cir. 1990). As our colleague, Judge Leval, has\nexplained, this principle recognizes that\na trademark has a separate legal existence under each country\xe2\x80\x99s laws, and that its proper\nlawful function is not necessarily to specify the origin or manufacture of a good (although\nit may incidentally do that), but rather to symbolize the domestic goodwill of the\ndomestic markholder so that the consuming public may rely with an expectation of\nconsistency on the domestic reputation earned for the mark by its owner, and the owner\nof the mark may be confident that his goodwill and reputation (the value of the mark)\nwill not be injured through use of the mark by others in domestic commerce.\nOsawa & Co. v. B & H Photo, 589 F.Supp. 1163, 1171\xe2\x80\x9372 (S.D.N.Y. 1984).14\n[20] Precisely because a trademark has a separate legal existence under each country\xe2\x80\x99s laws,\nownership of a mark in one country does not automatically confer upon the owner the exclusive right\nto use that mark in another country. Rather, a mark owner must take the proper steps to ensure that\nits rights to that mark are recognized in any country in which it seeks to assert them. Cf. Barcelona.com,\nInc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 628 (4th Cir. 2003) (\xe2\x80\x9cUnited States\ncourts do not entertain actions seeking to enforce trademark rights that exist only under foreign\nlaw.\xe2\x80\x9d); E. Remy Martin & Co., S.A. v. Shaw\xe2\x80\x93Ross Int\xe2\x80\x99l Imports, Inc., 756 F.2d 1525, 1531 (11th Cir. 1985)\n(\xe2\x80\x9cOur concern must be the business and goodwill attached to United States trademarks, not French\ntrademark rights under French law.\xe2\x80\x9d (internal quotation marks omitted)).\n[21] As we have already noted, United States trademark rights are acquired by, and dependent\nupon, priority of use. See supra at 146\xe2\x80\x9347. The territoriality principle requires the use to be in the\nUnited States for the owner to assert priority rights to the mark under the Lanham Act. See Buti v.\nImpressa Perosa, S.R.L., 139 F.3d at 103 (noting that \xe2\x80\x9cImpressa\xe2\x80\x99s registration and use of the Fashion\nCaf\xc3\xa9 name in Italy has not, given the territorial nature of trademark rights, secured it any rights in the\nname under the Lanham Act\xe2\x80\x9d); La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d at\n1271 n. 4 (\xe2\x80\x9cIt is well-settled that foreign use is ineffectual to create trademark rights in the United\nStates.\xe2\x80\x9d); . . . cf. Grupo Gigante S.A. De C.V. v. Dallo & Co., 391 F.3d 1088, 1093 (9th Cir. 2004) (stating\ngeneral proposition that \xe2\x80\x9cpriority of trademark rights in the United States depends solely upon priority\nof use in the United States, not on priority of use anywhere in the world,\xe2\x80\x9d although recognizing famous\nmarks doctrine as an exception to territoriality principle (quoting 4 McCarthy, supra, \xc2\xa7 29:2, at 29\xe2\x80\x936)).\nBut see International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 329\nF.3d 359, 381 (4th Cir. 2003) (concluding that United States trademark rights can be acquired merely\nthrough advertising in the United States combined with rendering of services abroad to American\ncustomers). Thus, absent some use of its mark in the United States, a foreign mark holder generally\nmay not assert priority rights under federal law, even if a United States competitor has knowingly\nappropriated that mark for his own use. See Person\xe2\x80\x99s Co. v. Christman, 900 F.2d at 1569\xe2\x80\x9370 (holding\nthat foreign use is not sufficient to establish priority rights even over a United States competitor who\ntook mark in bad faith).\nThe \xe2\x80\x9cterritoriality principle\xe2\x80\x9d stands in contrast to the so-called \xe2\x80\x9cuniversality principle,\xe2\x80\x9d which\nposits that \xe2\x80\x9cif a trademark [is] lawfully affixed to merchandise in one country, the merchandise would\ncarry that mark lawfully wherever it went and could not be deemed an infringer although transported\nto another country where the exclusive right to the mark was held by someone other than the owner of\nthe merchandise.\xe2\x80\x9d Osawa & Co. v. B & H Photo, 589 F.Supp. at 1171. The universality principle has been\nrejected in American trademark law. See American Circuit Breaker Corp. v. Or. Breakers, Inc., 406 F.3d at\n581 (citing A. Bourjois & Co. v. Katzel, 260 U.S. 689 (1923)).\n14\n\n325\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nb. The Famous Marks Doctrine as an Exception to the Territoriality Principle\n[22] ITC urges us to recognize an exception to the territoriality principle for those foreign marks\nthat, even if not used in the United States by their owners, have achieved a certain measure of fame\nwithin this country.\n(1) Origin of the Famous Marks Doctrine\n[23] The famous marks doctrine is no new concept. It originated in the 1925 addition of Article\n6bis to the Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as rev. at\nStockholm, July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305 (\xe2\x80\x9cParis Convention\xe2\x80\x9d). Article 6bis, which by\nits terms applies only to trademarks, requires member states\nex officio if their legislation so permits, or at the request of an interested party, to refuse\nor to cancel the registration, and to prohibit the use, of a trademark which constitutes a\nreproduction, an imitation, or a translation, liable to create confusion, of a mark\nconsidered by the competent authority of the country of registration or use to be well\nknown in that country as being already the mark of a person entitled to the benefits of\nthis Convention and used for identical or similar goods. These provisions shall also apply\nwhen the essential part of the mark constitutes a reproduction of any such well-known\nmark or an imitation liable to create confusion therewith.\nParis Convention, art. 6bis.15 One commentator has observed that the \xe2\x80\x9cpurpose\xe2\x80\x9d of Article 6bis \xe2\x80\x9cis to\navoid the registration and use of a trademark, liable to create confusion with another mark already\nwell known in the country of such registration or use, although the latter well-known mark is not, or\nnot yet, protected in that country by a registration which would normally prevent the registration or\nuse of the conflicting mark.\xe2\x80\x9d G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the\nProtection of Industrial Property 90 (1968).\n(2) The Famous Marks Doctrine in the United States\n(a) State Common Law\n[24] The famous marks doctrine appears first to have been recognized in the United States by a\nNew York trial court in a common law action for unfair competition in the use of a trademark. See\nMaison Prunier v. Prunier\xe2\x80\x99s Rest. & Caf\xc3\xa9, 159 Misc. 551, 557\xe2\x80\x9358, 288 N.Y.S. 529, 535\xe2\x80\x9336 (N.Y.Sup.Ct.\n1936). The owner of \xe2\x80\x9cMaison Prunier,\xe2\x80\x9d a Paris restaurant with a branch in London, sought to enjoin\ndefendants\xe2\x80\x99 operation of a New York City restaurant named \xe2\x80\x9cPrunier\xe2\x80\x99s Restaurant and Caf\xc3\xa9.\xe2\x80\x9d The New\nYork restaurant had apparently adopted both the Paris restaurant\xe2\x80\x99s name and slogan (\xe2\x80\x9cTout ce qui\nvient de la mer\xe2\x80\x9d16) and boldly advertised itself as \xe2\x80\x9cThe Famous French Sea Food Restaurant.\xe2\x80\x9d While the\nFrench plaintiff conceded that it had never operated a restaurant in the United States, it nevertheless\nsought relief for the unauthorized use of its name and mark under the common law of unfair\ncompetition.\n[25] In ruling in favor of the plaintiff, the trial court first observed that \xe2\x80\x9cthe right of a French\ncorporation to sue here for protection against unfair competition was expressly granted in [Article\n10bis of] the [Paris] convention between the United States and various other powers for the protection\nThe reach of Article 6bis was extended to service marks by Article 16(2) of the Agreement on\nTrade\xe2\x80\x93Related Aspects of Intellectual Property Rights (\xe2\x80\x9cTRIPs\xe2\x80\x9d), see generally Uruguay Round\nAgreements Act, Pub.L. No. 103\xe2\x80\x93465, 108 Stat. 4809 (1994) (codified as amended at scattered sections\nof the United States Code), which states that \xe2\x80\x9cArticle 6bis of the Paris Convention shall apply, mutatis\nmutandis, to services.\xe2\x80\x9d\n15\n\n16\n\n\xe2\x80\x9cEverything that comes from the sea.\xe2\x80\x9d\n326\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nof industrial property.\xe2\x80\x9d Id. at 554, 288 N.Y.S. at 532.17 It then ruled that \xe2\x80\x9cactual competition in a\nproduct is not essential to relief under the doctrine of unfair competition.\xe2\x80\x9d Id. at 555, 288 N.Y.S. at 533.\nThe plaintiff was entitled to protection from \xe2\x80\x9c\xe2\x80\x98any injury which might result to it from the deception of\nthe public through the unauthorized use of its trade name, or a trade name which would lead the\npublic to believe that it was in some way connected with the plaintiff.\xe2\x80\x99\xe2\x80\x9d Id. at 556, 288 N.Y.S. at 534\n(quoting Long\xe2\x80\x99s Hat Stores Corp. v. Long\xe2\x80\x99s Clothes, Inc., 224 A.D. 497, 498, 231 N.Y.S. 107, 107 (1st Dep\xe2\x80\x99t\n1928)). Although the court acknowledged the general rule of territoriality, see id. at 557, 288 N.Y.S.\n529, 288 N.Y.S. at 535 (noting no \xe2\x80\x9cright to protection against the use of a trade-mark or trade name\nbeyond the territory in which it operates\xe2\x80\x9d), it recognized an exception to the rule where the second\nuser was guilty of bad faith, see id. at 557\xe2\x80\x9358, 288 N.Y.S. at 536\xe2\x80\x9337. The court identified the fame of the\nmark as a factor relevant to deciding whether the second user had, in good faith, made use of a mark\nwithout knowing of its prior use by another party. See id. at 559, 288 N.Y.S. at 537. The Prunier court\nconcluded that the French plaintiff was entitled to protection against unfair competition because its\ntrademark enjoyed \xe2\x80\x9cwide repute\xe2\x80\x9d and the facts of the case indicated a total lack of good faith on the\npart of the defendants. Id. at 559, 288 N.Y.S. at 537. The basis of this holding, it should be noted, was\nnot Article 6bis of the Paris Convention. Instead, the holding was based entirely on New York common\nlaw principles of unfair competition.\n[26] More than twenty years later, in Vaudable v. Montmartre, Inc., 20 Misc.2d 757, 193 N.Y.S.2d\n332 (N.Y.Sup.Ct. 1959), another New York trial court granted a different Paris restaurant, \xe2\x80\x9cMaxim\xe2\x80\x99s,\xe2\x80\x9d\ninjunctive relief against a New York City restaurant that had appropriated its name, decor, and\ndistinctive script style, all without permission. The court concluded that the lack of direct competition\nbetween the two restaurants was \xe2\x80\x9cimmaterial\xe2\x80\x9d to a common law claim for unfair competition. Id. at\n759, 193 N.Y.S.2d at 335. The only relevant question was whether \xe2\x80\x9cthere had been a misappropriation,\nfor the advantage of one person, of a property right belonging to another.\xe2\x80\x9d Id. at 759, 193 N.Y.S.2d at\n335. Noting that the Paris Maxim\xe2\x80\x99s had been in continuous operation since 1946, when it reopened\nafter World War II, the court concluded that its owners had priority rights as against the junior\nAmerican user by virtue of (1) their uninterrupted use of the mark abroad, and (2) the fame of the\n\xe2\x80\x9cMaxim\xe2\x80\x99s\xe2\x80\x9d mark among \xe2\x80\x9cthe class of people residing in the cosmopolitan city of New York who dine\nout.\xe2\x80\x9d Id. at 758, 193 N.Y.S.2d at 334.\n(b) Federal Actions\n(i) Trademark Board Rulings\n[27] A quarter century later, the federal Trademark Trial and Appeal Board (\xe2\x80\x9cTrademark Board\xe2\x80\x9d)\ninvoked Vaudable\xe2\x80\x99s recognition of the famous marks doctrine in several inter partes proceedings.18 In\nMother\xe2\x80\x99s Rests., Inc. v. Mother\xe2\x80\x99s Other Kitchen, Inc., the Trademark Board stated in dictum that:\n[I]t is our view that prior use and advertising of a mark in connection with goods or\nservices marketed in a foreign country (whether said advertising occurs inside or outside\nthe United States) creates no priority rights in said mark in the United States as against\none who, in good faith, has adopted the same or similar mark for the same or similar\ngoods or services in the United States prior to the foreigner\xe2\x80\x99s first use of the mark on\ngoods or services sold and/or offered in the United States at least unless it can be shown\nArticle 10bis of the Paris Convention requires member states to \xe2\x80\x9cassure to nationals [of other\nmember states] effective protection against unfair competition.\xe2\x80\x9d Paris Convention, art. 10bis.\n17\n\n18 The Trademark Board\xe2\x80\x99s primary function is to determine whether trademarks are registerable\nand to conduct opposition and cancellation proceedings by which interested parties can dispute the\nclaims of applicants and registrants. See 15 U.S.C. \xc2\xa7\xc2\xa7 1051, 1063\xe2\x80\x9364.\n\n327\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthat the foreign party\xe2\x80\x99s mark was, at the time of the adoption and first use of a similar\nmark by the first user in the United States, a \xe2\x80\x9cfamous\xe2\x80\x9d mark within the meaning of\nVaudable v. Montmartre, Inc.\n218 U.S.P.Q 1046, at *8 (TTAB 1983) (concluding that customers would be likely to confuse the\n\xe2\x80\x9cMother\xe2\x80\x99s Pizza Parlour\xe2\x80\x9d trademark with the \xe2\x80\x9cMother\xe2\x80\x99s Other Kitchen\xe2\x80\x9d trademark) (internal citation\nomitted).\n[28] That same year, the Trademark Board applied the same reasoning in All England Lawn Tennis\nClub, Ltd. v. Creations Aromatiques, 220 U.S.P.Q. 1069 (1983), granting plaintiff\xe2\x80\x99s request to block\nregistration of a trademark for \xe2\x80\x9cWimbledon Cologne\xe2\x80\x9d even though plaintiff was not itself using the\nWimbledon mark on any product sold in the United States. The Trademark Board observed that the\nWimbledon mark had \xe2\x80\x9cacquired fame and notoriety as used in association with the annual\nchampionships within the meaning of Vaudable\xe2\x80\x9d and that \xe2\x80\x9cpurchasers of applicant\xe2\x80\x99s cologne would\nincorrectly believe that said product was approved by or otherwise associated with the Wimbledon\ntennis championships and that allowance of the application would damage opposer\xe2\x80\x99s rights to the\nmark.\xe2\x80\x9d Id. at *10.\n[29] Recently, the Trademark Board has reiterated in dicta that owners of well known foreign\nmarks need not use those marks in the United States to challenge the registration of marks likely to\npromote confusion on the part of consumers. See, e.g., First Niagara Ins. Brokers, Inc. v. First Niagara\nFin. Group, Inc., 77 U.S.P.Q.2d 1334, *30\xe2\x80\x9331 (2005), overruled on other grounds by First Niagara Ins.\nBrokers, Inc. v. First Niagara Fin. Group, Inc., 476 F.3d 867 (Fed.Cir. Jan. 9, 2007), 2007 U.S.App. LEXIS\n367.\n[30] As this court has frequently observed, Trademark Board decisions, \xe2\x80\x9cwhile not binding on\ncourts within this Circuit, are nevertheless \xe2\x80\x98to be accorded great weight\xe2\x80\x99\xe2\x80\x9d under general principles of\nadministrative law requiring deference to an agency\xe2\x80\x99s interpretation of the statutes it is charged with\nadministering. Buti v. Impressa Perosa S.R.L., 139 F.3d at 105 (quoting Murphy Door Bed Co. v. Interior\nSleep Sys., Inc., 874 F.2d 95, 101 (2d Cir. 1989)); see also In re Dr Pepper Co., 836 F.2d 508, 510 (Fed.Cir.\n1987). In applying this principle to this case, however, we identify a significant concern: nowhere in\nthe three cited rulings does the Trademark Board state that its recognition of the famous marks\ndoctrine derives from any provision of the Lanham Act or other federal law. Indeed, the federal basis\nfor the Trademark Board\xe2\x80\x99s recognition of the famous marks doctrine is never expressly stated. Its\nreliance on Vaudable suggests that recognition derives from state common law. At least one\nTrademark Board member, however, has questioned whether state common law can support\nrecognition of the famous marks doctrine as a matter of federal law:\n[I]t seems to me that the Vaudable decision according protection to the famous Maxim\xe2\x80\x99s\nrestaurant in the United States . . . is inapplicable in this case since that decision was\nbased on a theory of unfair competition, namely misappropriation, under the law of the\nState of New York. Under Federal law, it seems to me that application of the well-known\nmarks doctrine depends on whether the applicable text of the Paris Convention . . . and, in\nparticular, Article 6bis of that Convention, is self-executing [so as to become part of\nfederal law].\nMother\xe2\x80\x99s Rests., Inc. v. Mother\xe2\x80\x99s Other Kitchen, Inc., 218 U.S.P.Q 1046, at *21 (Allen, concurring in part,\ndissenting in part) (internal citations omitted). Because we conclude that the Trademark Board\xe2\x80\x99s\nreliance on state law to recognize the famous marks doctrine falls outside the sphere to which we owe\ndeference, we consider de novo the question of that doctrine\xe2\x80\x99s existence within federal trademark law.\n(ii) Federal Case Law\n[31] To date, the Ninth Circuit Court of Appeals is the only federal appeals court to have\nrecognized the famous marks doctrine as a matter of federal law. See Grupo Gigante S.A. De C.V. v. Dallo\n328\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n& Co., 391 F.3d at 1088; cf. International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des\nEstrangers a Monaco, 329 F.3d at 389 n. 9 (Motz, J., dissenting) (noting that the famous marks doctrine\nhas been applied so infrequently that its viability is uncertain). In Grupo Gigante, 391 F.3d at 1088, the\nNinth Circuit considered whether the \xe2\x80\x9cGigante\xe2\x80\x9d mark\xe2\x80\x94registered and used by a large chain of grocery\nstores in Mexico since 1963\xe2\x80\x94was sufficiently well known among Mexican\xe2\x80\x93Americans in Southern\nCalifornia to afford it priority over a competing \xe2\x80\x9cGigante\xe2\x80\x9d mark used by a separate chain of Los Angeles\ngrocery stores. In resolving this question, the court ruled:\n[T]here is a famous mark exception to the territoriality principle. While the territoriality\nprinciple is a long-standing and important doctrine within trademark law, it cannot be\nabsolute. An absolute territoriality rule without a famous-mark exception would promote\nconsumer confusion and fraud. Commerce crosses borders. In this nation of immigrants,\nso do people. Trademark is, at its core, about protecting against consumer confusion and\n\xe2\x80\x9cpalming off.\xe2\x80\x9d There can be no justification for using trademark law to fool immigrants\ninto thinking that they are buying from the store they liked back home.\nId. at 1094 (footnotes omitted).\n[32] In Grupo Gigante, the Ninth Circuit did not reference either the language of the Lanham Act\nnor Article 6bis of the Paris Convention to support recognition of the famous marks doctrine. Indeed,\nelsewhere in its opinion, the court specifically stated that the Paris Convention creates no \xe2\x80\x9cadditional\nsubstantive rights\xe2\x80\x9d to those provided by the Lanham Act. Id. at 1100. The court also acknowledged that\nthe famous marks doctrine is not recognized by California state law. See id. at 1101 (observing that\ncases cited by plaintiff \xe2\x80\x9cprovide no support for the conclusion that use anywhere in the world suffices\nto establish priority in California\xe2\x80\x9d). Thus, it appears that the Ninth Circuit recognized the famous marks\ndoctrine as a matter of sound policy: \xe2\x80\x9cAn absolute territoriality rule without a famous marks exception\nwould promote customer confusion and fraud.\xe2\x80\x9d Id. at 1094.\n[33] This court has twice referenced the famous marks doctrine, but on neither occasion were we\nrequired to decide whether it does, in fact, provide a legal basis for acquiring priority rights in the\nUnited States for a foreign mark not used in this country. See Buti v. Impressa Perosa, S.R.L., 139 F.3d at\n104 n. 2 (referencing Mother\xe2\x80\x99s Restaurant and Vaudable but, in the end, concluding that famous marks\ndoctrine \xe2\x80\x9chas no application here given that Impressa has made no claim under that doctrine\xe2\x80\x9d); see also\nEmpresa Cubana del Tabaco v. Culbro Corp., 399 F.3d at 481 (declining to decide whether famous\nmarks doctrine should be recognized because \xe2\x80\x9ceven assuming that the famous marks doctrine is\notherwise viable and applicable, the [Cuban] embargo bars [plaintiff] from acquiring property rights in\nthe . . . mark through the doctrine\xe2\x80\x9d).19\n....\n(c) Treaties Protecting Famous Marks and United States Implementing Legislation\n[34] ITC insists that Article 6bis of the Paris Convention, together with Article 16(2) of the\nAgreement on Trade\xe2\x80\x93Related Aspects of Intellectual Property Rights (\xe2\x80\x9cTRIPs\xe2\x80\x9d), see Uruguay Round\nAgreements Act, Pub.L. No. 103\xe2\x80\x93465, 108 Stat. 4809 (1994) (codified as amended at scattered sections\nof United States Code), provides legal support for its claim to famous marks protection. . . . Further,\nTRIPs Article 16(2) extends Article 6bis to service marks, see supra at 156 n. 15.\n\nIn Empresa Cubana, however, we did observe, in dictum, that \xe2\x80\x9c[t]o the extent that a foreign\nentity attempts to utilize the famous marks doctrine as [a] basis for its right to a U.S. trademark and\nseeks to prevent another entity from using the mark in the United States, the claim should be brought\nunder Section 43(a).\xe2\x80\x9d Id. at 480 n. 10.\n19\n\n329\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[35] At the outset, we observe that ITC does not specifically contend that these two treaty articles\nare self-executing. While Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956), might support\nsuch an argument with respect to Article 6bis protection of trademarks, see id. at 640 (observing in\ndictum that, upon ratification by Congress, the Paris Convention required \xe2\x80\x9cno special legislation in the\nUnited States . . . to make [it] effective here\xe2\x80\x9d), no similar conclusion can extend to Article 16(2)\nprotection of service marks because TRIPs is plainly not a self-executing treaty. See In re Rath, 402 F.3d\n1207, 1209 n. 2 (Fed.Cir. 2005); see also S.Rep. No. 103\xe2\x80\x93412, at 13 (1994) (accompanying the Uruguay\nRound Agreements Act, Pub.L. No. 103\xe2\x80\x93465, 108 Stat. 4809 (1994)) (stating that TRIPs and other\nGATT agreements \xe2\x80\x9care not self-executing and thus their legal effect in the United States is governed by\nimplementing legislation\xe2\x80\x9d). While Congress has amended numerous federal statutes to implement\nspecific provisions of the TRIPs agreement, it appears to have enacted no legislation aimed directly at\nArticle 16(2).23\n[36] ITC nevertheless submits that Lanham Act sections 44(b) and (h) effectively incorporate the\nprotections afforded famous marks by the Paris Convention and TRIPs.\n{In a lengthy analysis, the court concluded that \xc2\xa7\xc2\xa7 44(b) & (h) do not provide a basis for famous\nmarks protection.}\n(d) Policy Rationales Cannot, by Themselves, Support Judicial Recognition of the Famous Marks Doctrine\nUnder Federal Law\n[37] Even if the Lanham Act does not specifically incorporate Article 6bis and Article 16(2)\nprotections for famous foreign marks, ITC urges this court to follow the Ninth Circuit\xe2\x80\x99s lead and to\nrecognize the famous marks doctrine as a matter of sound policy. See Grupo Gigante S.A. De C.V. v. Dallo\n& Co., 391 F.3d at 1094 (recognizing famous marks doctrine because \xe2\x80\x9c[t]here can be no justification for\nusing trademark law to fool immigrants into thinking that they are buying from the store they liked\nback home\xe2\x80\x9d). ITC argues that the United States cannot expect other nations to protect famous\nAmerican trademarks if United States courts decline to afford reciprocal protection to famous foreign\nmarks.\n[38] We acknowledge that a persuasive policy argument can be advanced in support of the\nfamous marks doctrine. See, e.g., De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc., 2005\nU.S. Dist. LEXIS 9307, at *25 (noting that \xe2\x80\x9c[r]ecognition of the famous marks doctrine is particularly\ndesirable in a world where international travel is commonplace and where the Internet and other\nmedia facilitate the rapid creation of business goodwill that transcends borders\xe2\x80\x9d) . . . . The fact that a\ndoctrine may promote sound policy, however, is not a sufficient ground for its judicial recognition,\nparticularly in an area regulated by statute. See, e.g., Badaracco v. Comm\xe2\x80\x99r, 464 U.S. 386, 398 (1984)\n(\xe2\x80\x9cThe relevant question is not whether, as an abstract matter, the rule advocated by petitioners\naccords with good policy. The question we must consider is whether the policy petitioners favor is that\nwhich Congress effectuated by its enactment of [the statute].\xe2\x80\x9d). In light of the comprehensive and\n\nSee, e.g., Pub.L. No. 103\xe2\x80\x93465, 514, 108 Stat. 4809, 4976 (amending 17 U.S.C. \xc2\xa7 104A, governing\ncopyrights in restored works, to comport with TRIPs); Pub.L. No. 103\xe2\x80\x93465, 532, 108 Stat. 4809, 4983\n(amending 35 U.S.C. \xc2\xa7 154, governing United States patents, to comport with TRIPs). Significantly,\nCongress has enacted legislation to implement TRIPs Article 16(3), which contemplates the extension\nof anti-dilution protection to certain famous marks. See Federal Trademark Dilution Act of 1995, Pub.L.\nNo. 104\xe2\x80\x9398, 109 Stat. 985 (1995) (codified at 15 U.S.C. \xc2\xa7 1125(c)); see H. Rep. 104\xe2\x80\x93374, reprinted in\n1995 U.S.C.C.A.N. 1029 (indicating that anti-dilution act was intended to make United States law\nconsistent with terms of TRIPs and Paris Convention). No comparable legislation exists with respect to\nArticle 16(2).\n23\n\n330\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nfrequently modified federal statutory scheme for trademark protection set forth in the Lanham Act, we\nconclude that any policy arguments in favor of the famous marks doctrine must be submitted to\nCongress for it to determine whether and under what circumstances to accord federal recognition to\nsuch an exception to the basic principle of territoriality. See Almacenes Exito S.A. v. El Gallo Meat Mkt.,\nInc., 381 F.Supp.2d at 326\xe2\x80\x9328. Absent such Congressional recognition, we must decline ITC\xe2\x80\x99s invitation\nto grant judicial recognition to the famous marks doctrine simply as a matter of sound policy.\n[39] For all these reasons, we affirm the district court\xe2\x80\x99s award of summary judgment in favor of\ndefendants on ITC\xe2\x80\x99s federal unfair competition claim.\n2. State Common Law Claim for Unfair Competition\na. ITC\xe2\x80\x99s Reliance on the Famous Marks Doctrine to Sue for Unfair Competition Under New York Law\n[40] ITC submits that, even if we affirm the district court\xe2\x80\x99s dismissal of its federal unfair\ncompetition claim, we must reverse the dismissal of its parallel state law claim. As it correctly\nobserves, New York common law allows a plaintiff to sue for unfair competition where a \xe2\x80\x9cproperty\nright or a commercial advantage\xe2\x80\x9d has been \xe2\x80\x9cmisappropriated.\xe2\x80\x9d Flexitized, Inc. v. National Flexitized\nCorp., 335 F.2d 774, 781\xe2\x80\x9382 (2d Cir. 1964). Nevertheless, in light of ITC\xe2\x80\x99s abandonment of the Bukhara\nmark and dress for restaurants in the United States, its common law assertion of a \xe2\x80\x9cproperty right or a\ncommercial advantage\xe2\x80\x9d in these designations based on their foreign use depends on whether New\nYork recognizes the famous marks doctrine in the circumstances here at issue.\n[41] As we have already noted, at least two New York cases indicate such recognition as a general\nmatter: Vaudable v. Montmartre, Inc., 20 Misc.2d 757, 193 N.Y.S.2d 332, and Maison Prunier v. Prunier\xe2\x80\x99s\nRest. & Caf\xc3\xa9, 159 Misc. 551, 288 N.Y.S. 529. Neither the New York Court of Appeals nor any\nintermediate New York appellate court, however, has ever specifically adopted the views expressed in\nPrunier and Vaudable to accord common law protection to the owners of famous marks. Moreover, no\nNew York court has clearly delineated a standard for determining when a mark becomes sufficiently\nfamous to warrant protection. \xe2\x80\x9cIn the absence of authoritative law from the state\xe2\x80\x99s highest court, we\nmust either (1) predict how the New York Court of Appeals would resolve the state law question, or, if\nstate law is so uncertain that we can make no reasonable prediction, (2) certify the question to the\nNew York Court of Appeals for a definitive resolution.\xe2\x80\x9d DiBella v. Hopkins, 403 F.3d 102, 111 (2d Cir.\n2005). In this case, we opt for certification.\nb. Certifying the Question of New York\xe2\x80\x99s Common Law Recognition of the Famous Marks Doctrine\n(1) Standard for Certification\n[42] New York law and Second Circuit Local Rule \xc2\xa7 0.27 permit us to certify to the New York Court\nof Appeals \xe2\x80\x9cdeterminative questions of New York law [that] are involved in a case pending before [us]\nfor which no controlling precedent of the Court of Appeals exists.\xe2\x80\x9d N.Y. Comp.Codes R. & Regs. tit. 22,\n\xc2\xa7 500.27(a). In deciding whether to certify a question, we consider, inter alia, \xe2\x80\x9c(1) the absence of\nauthoritative state court interpretations of the [law in question]; (2) the importance of the issue to the\nstate, and whether the question implicates issues of state public policy; and (3) the capacity of\ncertification to resolve the litigation.\xe2\x80\x9d Morris v. Schroder Capital Mgmt. Int\xe2\x80\x99l, 445 F.3d 525, 531 (2d Cir.\n2006) (internal quotation marks omitted).\n(2) Certified Question 1: Does New York Recognize the Famous Marks Doctrine?\n[43] In this case, we conclude that these factors weigh in favor of certifying the question of New\nYork\xe2\x80\x99s recognition of the famous marks doctrine. First, the only New York cases to address the\nquestion of whether state common law recognizes the famous marks doctrine, Vaudable and Prunier,\nare decades-old trial court decisions. While these decisions are routinely cited by non-New York courts\n\n331\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nas accurate statements of the state\xe2\x80\x99s common law of unfair competition,28 and while commentators\nroutinely identify the cases as foundational in the development of the famous marks doctrine,29 the\nlack of authoritative adoption of the famous marks doctrine by New York\xe2\x80\x99s highest court weighs in\nfavor of certification. Second, recognition of the famous marks doctrine as part of New York common\nlaw is plainly an important policy issue for a state that plays a pivotal role in international commerce.\nThis factor strongly counsels in favor of our soliciting the views of the New York Court of Appeals. See\ngenerally Board of Regents v. Roth, 408 U.S. 564, 577, 92 S.Ct. 2701, 33 L.Ed.2d 548 (1972) (observing\nthat property interests \xe2\x80\x9care created and their dimensions are defined by existing rules or\nunderstandings that stem from an independent source such as state law\xe2\x80\x9d). Finally, certification will\nconclusively resolve the question of whether ITC\xe2\x80\x99s state unfair competition claim was, in fact, properly\ndismissed.\n[44] Accordingly, we certify the following question to the New York Court of Appeals: \xe2\x80\x9cDoes New\nYork common law permit the owner of a famous mark or trade dress to assert property rights therein\nby virtue of the owner\xe2\x80\x99s prior use of the mark or dress in a foreign country?\xe2\x80\x9d\n(3) Certified Question 2: How Famous Must a Mark Be to Come Within the Famous Marks Doctrine?\n[45] If the New York Court of Appeals were to answer the first certified question in the\naffirmative, we ask it to consider a second query: \xe2\x80\x9cHow famous must a foreign mark or trade dress be\nto permit its owner to sue for unfair competition?\xe2\x80\x9d30 Although we have had no prior occasion to\naddress this question, we note the availability of a number of possible standards.\n(a) Secondary Meaning\n[46] If New York were inclined to recognize a broad famous marks doctrine, the Court of Appeals\nmight conclude that a foreign mark\xe2\x80\x99s acquisition of \xe2\x80\x9csecondary meaning\xe2\x80\x9d in the state was sufficient to\naccord it common law protection. \xe2\x80\x9cSecondary meaning\xe2\x80\x9d is a term of art referencing a trademark\xe2\x80\x99s\nability to \xe2\x80\x9c\xe2\x80\x98identify the source of the product rather than the product itself.\xe2\x80\x99\xe2\x80\x9d Two Pesos, Inc. v. Taco\nCabana, Inc., 505 U.S. at 766 n. 4 (quoting Inwood Labs., Inc., v. Ives Labs., Inc., 456 U.S. 844, 851 n. 11\n(1982)); see Allied Maint. Corp. v. Allied Mech. Trades, Inc., 42 N.Y.2d 538, 545 (1977) (explicating\n\xe2\x80\x9csecondary meaning\xe2\x80\x9d under New York law); see also Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d\n137, 143 n. 4 (2d Cir. 1997) (identifying factors relevant to determining secondary meaning). Under\nthis standard, a court deciding whether to accord famous marks protection would consider only\nwhether the source of the foreign mark is well known in New York. See generally Grupo Gigante S.A. De\nC.V. v. Dallo & Co., 391 F.3d at 1097.\n[47] The Court of Appeals might note, however, that in Grupo Gigante the Ninth Circuit specifically\nrejected \xe2\x80\x9csecondary meaning\xe2\x80\x9d as the appropriate standard for application of the famous marks\ndoctrine. That federal court explained that such an interpretation of the famous marks doctrine went\n\n28 See, e.g., Grupo Gigante S.A. De C.V. v. Dallo & Co., 391 F.3d at 1095; Buti v. Impressa Perosa,\nS.R.L., 139 F.3d at 104; Person\xe2\x80\x99s Co. v. Christman, 900 F.2d at 1570; Almacenes Exito S.A. v. El Gallo\nMeat Mkt., Inc., 381 F.Supp.2d at 328; De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc.,\n2005 U.S. Dist. LEXIS 9307 at *21\xe2\x80\x9322.\n\nSee, e.g., 4 McCarthy, supra, \xc2\xa7 29:4, at 29\xe2\x80\x9312; Graeme B. Dinwoodie et al., International\nIntellectual Property Law and Policy 108 (2001).\n29\n\nIn formulating both certified questions, we do not intend to limit the Court of Appeals\xe2\x80\x99 analysis\nor its response. That court may expand or modify the certified questions as it deems appropriate to\nindicate whether state common law recognizes the famous marks doctrine and the scope of that\nrecognition.\n30\n\n332\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\x9ctoo far\xe2\x80\x9d because it effectively eliminated the territoriality principle that itself \xe2\x80\x9chas a long history in the\ncommon law.\xe2\x80\x9d Id. at 1097\xe2\x80\x9398.\n(b) Secondary Meaning Plus\n[48] Instead, the Court of Appeals might consider the Ninth Circuit\xe2\x80\x99s compromise standard, which\ncan be described as \xe2\x80\x9csecondary meaning plus.\xe2\x80\x9d See id. at 1098 (holding that \xe2\x80\x9csecondary meaning is not\nenough\xe2\x80\x9d). Under this test, \xe2\x80\x9cwhere the mark has not before been used in the American market,31 the\ncourt must be satisfied, by a preponderance of the evidence, that a substantial percentage of\nconsumers in the relevant American market is familiar with the foreign mark.\xe2\x80\x9d Id. (emphasis added);\nsee also 4 McCarthy, supra, \xc2\xa7 29:4, at 29\xe2\x80\x9317 (suggesting that a \xe2\x80\x9csubstantial\xe2\x80\x9d percentage of consumers in\nthe relevant American market would be at least 50%).\n[49] Judge Graber, concurring in Grupo Gigante, emphasized the intermediate character of this\nstandard:\nI agree that a foreign owner of a supposedly famous or well-known foreign trademark\nmust show a higher level of \xe2\x80\x9cfame\xe2\x80\x9d or recognition than that required to establish\nsecondary meaning. Ultimately, the standard for famous or well-known marks is an\nintermediate one. To enjoy extraterritorial trademark protection, the owner of a foreign\ntrademark need not show the level of recognition necessary to receive nation-wide\nprotection against trademark dilution. On the other hand, the foreign trademark owner\nwho does not use a mark in the United States must show more than the level of\nrecognition that is necessary in a domestic trademark infringement case.\n391 F.3d at 1106 (Graber, J., concurring).\n(c) The Anti\xe2\x80\x93Dilution Statute Standard\n[50] Precisely because \xe2\x80\x9csecondary meaning plus\xe2\x80\x9d is an intermediate standard, the Court of\nAppeals might also consider the high standard of recognition established by section 43(c) of the\nLanham Act, the federal anti-dilution statute. See 15 U.S.C. \xc2\xa7 1125(c). Under that federal law, four nonexclusive factors are relevant when determining whether a mark is sufficiently famous for anti-dilution\nprotection:\n(i) The duration, extent, and geographic reach of advertising and publicity of the mark,\nwhether advertised or publicized by the owner or third parties;\n(ii) The amount, volume, and geographic extent of sales of goods or services offered\nunder the mark;\n(iii) The extent of actual recognition of the mark;\n(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of\nFebruary 20, 1905, or on the principal register.\nId. \xc2\xa7 1125(c)(2).\n[51] Under the federal anti-dilution statute, the holder of a mark deemed famous under this test\nmay seek an injunction against another person who, \xe2\x80\x9cat any time after the owner\xe2\x80\x99s mark has become\nfamous, commences use of a mark or trade name in commerce that is likely to cause dilution by\nblurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual\nor likely confusion, of competition, or of actual economic injury.\xe2\x80\x9d Id. \xc2\xa7 1125(c)(1). ITC does not sue for\n\n31 New York could, of course, conclude that a \xe2\x80\x9csecondary meaning plus\xe2\x80\x9d standard also applied to a\nforeign mark or dress that had previously been used in the United States where, as in this case, such\ndomestic use had been abandoned.\n\n333\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndilution in this case. Nevertheless, the Court of Appeals might consider whether the factors set out in\nthe statute provide a useful guide for defining famous marks generally.\n(d) Recommendation of the World Intellectual Property Organization\n[52] Finally, should the Court of Appeals decide to articulate an entirely new and different\nstandard of recognition for the application of the famous marks doctrine, among the factors it might\nconsider are those identified as relevant in the non-binding \xe2\x80\x9cJoint Recommendation Concerning\nProvisions on the Protection of Well\xe2\x80\x93Known Marks,\xe2\x80\x9d adopted by the World Intellectual Property\nOrganization in 1999:\n(1) the degree of knowledge or recognition of the mark in the relevant sector of the\npublic;\n(2) the duration, extent and geographical area of any use of the mark;\n(3) the duration, extent and geographical area of any promotion of the mark, including\nadvertising or publicity and the presentation, at fairs or exhibitions, or the goods and/or\nservices to which the mark applies;\n(4) the duration and geographical area of any registrations, and/or any application for\nregistration, of the mark, to the extent that they reflect use or recognition of the mark;\n(5) the record of successful enforcement of rights in the mark, in particular, the extent to\nwhich the mark was recognized as well known by competent authorities; [and]\n(6) the value associated with the mark.\nWorld Intellectual Property Organization, Joint Recommendation Concerning Provisions on the\nProtection of Well\xe2\x80\x93Known Marks (Sept.1999), available at http:// www. wipo. int/ about- ip/ en/\ndevelopment iplaw/ pub 833.htm.\n[53] We express no view as to how New York should define its state common law. We simply\nreserve decision on ITC\xe2\x80\x99s challenge to the district court\xe2\x80\x99s dismissal of its state common law claim for\nunfair competition pending the New York Court of Appeals response to our certified questions.\n______________________________________________________________________________\nITC Ltd. v. Punchgini, Inc.\n880 N.E.2d 852 (N.Y. 2007)\nRead, J.\n....\nII.\nCertified Question No. 1\n[1] \xe2\x80\x9cDoes New York common law permit the owner of a famous mark or trade dress to assert\nproperty rights therein by virtue of the owner\xe2\x80\x99s prior use of the mark or dress in a foreign country?\xe2\x80\x9d\n[2] The Second Circuit\xe2\x80\x99s first certified question calls upon us to define property rights in the\ncontext of a common-law unfair competition claim grounded on a theory of misappropriation. Thus,\nwe must consider whether a famous foreign mark constitutes property or a commercial advantage\nprotected from unfair competition under New York law.\n[3] We have long recognized two theories of common-law unfair competition: palming off and\nmisappropriation (see Electrolux Corp. v Val-Worth, Inc., 6 NY2d 556, 567-568 [1959] {discussing the\nacceptance of these theories of unfair competition in New York courts and collecting cases}). \xe2\x80\x9cPalming\noff\xe2\x80\x9d\xe2\x80\x94that is, the sale of the goods of one manufacturer as those of another\xe2\x80\x94was the first theory of\n334\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nunfair competition endorsed by New York courts, and \xe2\x80\x9chas been extended . . . to situations where the\nparties are not even in competition\xe2\x80\x9d (Electrolux, 6 NY2d at 567).\n[4] After the United States Supreme Court sanctioned the misappropriation theory of unfair\ncompetition in International News Service v Associated Press (248 US 215 [1918]), \xe2\x80\x9c[t]he principle that\none may not misappropriate the results of the skill, expenditures and labors of a competitor has . . .\noften been implemented in [New York] courts\xe2\x80\x9d (Electrolux, 6 NY2d at 567). Indeed, the New York cases\ncited by the District Court and the Second Circuit as embodying the famous or well-known marks\ndoctrine in New York common law\xe2\x80\x94Prunier and Vaudable\xe2\x80\x94were, in fact, decided wholly on\nmisappropriation theories.\n[5] In Prunier, the plaintiff operated celebrated haute cuisine restaurants in Paris and London, but\nnone in the United States. The defendants opened a restaurant in New York and\n\xe2\x80\x9cappropriated to themselves the plaintiff\xe2\x80\x99s name. . . . Indeed, it was admitted . . . that the\nname was intentionally selected because of plaintiff\xe2\x80\x99s well-known reputation and good\nwill which has been built up as the result of decades of honest business effort.\n\xe2\x80\x9cThe defendants den[ied], however, that they ever held themselves out as being Prunier\xe2\x80\x99s\nof Paris\xe2\x80\x9d (159 Misc at 553).\nThe court upheld the legal viability of an unfair competition claim by the plaintiff\xe2\x80\x94even though the\ntwo restaurants were not in direct competition\xe2\x80\x94so long as \xe2\x80\x9cplaintiff[\xe2\x80\x98s] conten[tion] that its\nreputation extends far beyond the territorial limits of Paris and London and that it has a substantial\nfollowing in New York city and in other parts of the world\xe2\x80\x9d was proved (id. at 559 [emphasis added]).\n[6] In Vaudable, the plaintiff\xe2\x80\x99s restaurant in Paris\xe2\x80\x94Maxim\xe2\x80\x99s\xe2\x80\x94was internationally famous \xe2\x80\x9cin the\nhigh-class restaurant field\xe2\x80\x9d (20 Misc 2d at 758-759). The defendants \xe2\x80\x9cappropriate[d] the good will\nplaintiffs [had] created in the name Maxim\xe2\x80\x99s as a restaurant,\xe2\x80\x9d and were therefore held liable for unfair\ncompetition based on misappropriation even though the parties were \xe2\x80\x9cnot in present actual\ncompetition\xe2\x80\x9d (id. at 759). \xe2\x80\x9cThe trend of the law, both statutory and decisional,\xe2\x80\x9d the court opined, \xe2\x80\x9chas\nbeen to extend the scope of the doctrine of unfair competition, whose basic principle is that\ncommercial unfairness should be restrained whenever it appears that there has been a\nmisappropriation, for the advantage of one person, of a property right belonging to another\xe2\x80\x9d (id. at 759\n[citations omitted]; see also Roy Export Co. v Columbia Broadcasting Sys., 672 F2d 1095, 1105 [2d Cir\n1982] [with decline of general federal common law after inception of misappropriation branch of\nunfair competition tort in International News Service, \xe2\x80\x9cthe doctrine was developed by the states, New\nYork in particular; there it has flourished in a variety of factual settings\xe2\x80\x9d]).\n[7] While expositors of the famous marks doctrine point to Prunier and Vaudable (see 5 McCarthy\non Trademarks and Unfair Competition \xc2\xa7 29:4 n 2 [4th ed 2007] [citing Prunier and Vaudable as\n\xe2\x80\x9c(p)erhaps the most famous examples\xe2\x80\x9d of the \xe2\x80\x9cwell known\xe2\x80\x9d marks doctrine]), Prunier and Vaudable\nthemselves in no way explain or proclaim\xe2\x80\x94let alone rely on\xe2\x80\x94any famous or well-known marks\ndoctrine for their holdings. Instead, Prunier and Vaudable fit logically and squarely within our timehonored misappropriation theory, which prohibits a defendant from using a plaintiff\xe2\x80\x99s property right\nor commercial advantage\xe2\x80\x94in Prunier and Vaudable, the goodwill attached to a famous name\xe2\x80\x94to\ncompete unfairly against the plaintiff in New York.\n[8] Under New York law, \xe2\x80\x9c[a]n unfair competition claim involving misappropriation usually\nconcerns the taking and use of the plaintiff\xe2\x80\x99s property to compete against the plaintiff\xe2\x80\x99s own use of the\nsame property\xe2\x80\x9d (Roy Export, 672 F2d at 1105). The term \xe2\x80\x9ccommercial advantage\xe2\x80\x9d has been used\ninterchangeably with \xe2\x80\x9cproperty\xe2\x80\x9d within the meaning of the misappropriation theory (see Flexitized, Inc.\nv National Flexitized Corp., 335 F2d 774, 781-782 [2d Cir 1964]). What Prunier and Vaudable stand for,\nthen, is the proposition that for certain kinds of businesses (particularly cachet goods/services with\nhighly mobile clienteles), goodwill can, and does, cross state and national boundary lines.\n335\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[9] Accordingly, while we answer \xe2\x80\x9cYes\xe2\x80\x9d to the first certified question, we are not thereby\nrecognizing the famous or well-known marks doctrine, or any other new theory of liability under the\nNew York law of unfair competition. Instead, we simply reaffirm that when a business, through renown\nin New York, possesses goodwill constituting property or a commercial advantage in this state, that\ngoodwill is protected from misappropriation under New York unfair competition law. This is so\nwhether the business is domestic or foreign.\nIII.\nCertified Question No. 2\n[10] \xe2\x80\x9cHow famous must a foreign mark or trade dress be to permit its owner to sue for unfair\ncompetition?\xe2\x80\x9d\n[11] Protection from misappropriation of a famous foreign mark presupposes the existence of\nactual goodwill in New York (see e.g. Roy Export, 672 F2d at 1105 [misappropriation under New York\nlaw usually requires use in state of plaintiff\xe2\x80\x99s property or commercial advantage to compete against\nplaintiff]). If a foreign plaintiff has no goodwill in this state to appropriate, there can be no viable claim\nfor unfair competition under a theory of misappropriation. At the very least, a plaintiff\xe2\x80\x99s mark, when\nused in New York, must call to mind its goodwill. Otherwise, a plaintiff\xe2\x80\x99s property right or commercial\nadvantage based on the goodwill associated with its mark is not appropriated in this state when its\nunregistered mark is used here. Thus, at a minimum, consumers of the good or service provided under\na certain mark by a defendant in New York must primarily associate the mark with the foreign plaintiff\n(cf. Allied Maintenance Corp. v Allied Mech. Trades, 42 NY2d 538, 545 [1977]).\n[12] Whether consumers of a defendant\xe2\x80\x99s goods or services primarily associate such goods or\nservices with those provided by a foreign plaintiff is an inquiry that will, of necessity, vary with the\nfacts of each case. Accordingly, we cannot\xe2\x80\x94and do not\xe2\x80\x94provide an exhaustive list of the factors\nrelevant to such an inquiry. That said, some factors that would be relevant include evidence that the\ndefendant intentionally associated its goods with those of the foreign plaintiff in the minds of the\npublic, such as public statements or advertising stating or implying a connection with the foreign\nplaintiff; direct evidence, such as consumer surveys, indicating that consumers of defendant\xe2\x80\x99s goods or\nservices believe them to be associated with the plaintiff; and evidence of actual overlap between\ncustomers of the New York defendant and the foreign plaintiff.\n[13] If the customers of a New York defendant do not identify a mark with the foreign plaintiff,\nthen no use is being made of the plaintiff\xe2\x80\x99s goodwill, and no cause of action lies under New York\ncommon law for unfair competition. As a result, to prevail against defendants on an unfair competition\ntheory under New York law, ITC would have to show first, as an independent prerequisite, that\ndefendants appropriated (i.e., deliberately copied), ITC\xe2\x80\x99s Bukhara mark or dress for their New York\nrestaurants. If they successfully make this showing, plaintiffs would then have to establish that the\nrelevant consumer market for New York\xe2\x80\x99s Bukhara restaurant primarily associates the Bukhara mark\nor dress with those Bukhara restaurants owned and operated by ITC.\n[14] Accordingly, the certified questions should be answered in accordance with this opinion.\nComments and Questions\n1. The final disposition of ITC v. Punchgini. The case returned to the Second Circuit, which\naffirmed the district court\xe2\x80\x99s initial grant of summary judgment to the defendant on the ground, among\nothers, that BUKARA for restaurant services had no secondary meaning in New York. ITC Ltd. v.\nPunchgini, Inc., 518 F.3d 159 (2d Cir. 2008), aff\xe2\x80\x99g 373 F.Supp.2d 275 (S.D.N.Y. 2005).\n2. \xe2\x80\x9cWell-known marks doctrine\xe2\x80\x9d or \xe2\x80\x9cfamous marks doctrine\xe2\x80\x9d? In a footnote in a portion of the\nNew York Court of Appeals opinion not included in the excerpt above, the court addressed the\nterminological ambiguity over the correct name of the doctrine at issue:\n336\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nThere is some ambiguity regarding the proper name for what has been variously called\nthe \xe2\x80\x9cfamous marks doctrine,\xe2\x80\x9d the \xe2\x80\x9cwell-known marks doctrine\xe2\x80\x9d and the \xe2\x80\x9cfamous mark\ndoctrine\xe2\x80\x9d (see e.g. 5 McCarthy on Trademarks and Unfair Competition \xc2\xa7 29:4 [4th ed\n2007] [using the above names interchangeably]). Apparently, the use of \xe2\x80\x9cwell-known\xe2\x80\x9d in\nplace of \xe2\x80\x9cfamous\xe2\x80\x9d took hold after the Lanham Act was amended by passage of the Federal\nTrademark Anti-Dilution Act of 2006, which uses \xe2\x80\x9cfamous\xe2\x80\x9d as a term of art (see 15 USC\n\xc2\xa7 1125 [c]). At any rate, \xe2\x80\x9cfamous\xe2\x80\x9d and \xe2\x80\x9cwell-known,\xe2\x80\x9d \xe2\x80\x9cmark\xe2\x80\x9d and \xe2\x80\x9cmarks,\xe2\x80\x9d have been used\ninterchangeably to describe the putative doctrine, and no distinction is intended by our\nchoice of words here.\nITC Ltd. v. Punchgini, Inc., 880 N.E.2d 852, 856 n.1 (N.Y. 2007).\nc.\n\nBelmora and the End of Territorial Limits on Trademark Rights?\n\nAs stated above, the Fourth Circuit\xe2\x80\x99s opinion in Belmora LLC v. Bayer Consumer Care AG, 819 F.3d\n697 (4th Cir. 2016), cert. denied, 137 S. Ct. 1202, (U.S. 2017), represents a significant break with much\nof our traditional understanding of the national limits of trademark rights and with the requirement\nthat a plaintiff use a mark in commerce in the U.S. (or otherwise own a mark that qualifies as a wellknown mark in the U.S.) in order to assert exclusive rights in the mark.\nTwo noteworthy cases form the basis of Belmora. The first is International Bancorp, LLC v. Societe\ndes Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359 (4th Cir. 2003). The mark at issue\nwas CASINO DE MONTE CARLO. The declaratory plaintiffs operated various websites whose domain names\nand content incorporated at least \xe2\x80\x9csome portion\xe2\x80\x9d, id. at 361, of the term CASINO DE MONTE CARLO and\nvarious images of the declaratory defendant\xe2\x80\x99s casino in Monte Carlo, which has operated under the\nCASINO DE MONTE CARLO mark since 1863. The defendant advertised its casino in the U.S. but rendered its\nservices only abroad. In a controversial opinion, the Fourth Circuit found infringement. Judge Luttig\nreasoned, in short, that the defendant had shown \xe2\x80\x9cuse in commerce\xe2\x80\x9d because (1) U.S. consumers\xe2\x80\x99\npurchase of casino services from the defendant constituted trade with a foreign nation that Congress\nwas empowered to regulate, and (2) the defendant\xe2\x80\x99s advertising of its mark in the U.S. had made the\nmark distinctive as a designation of source in the U.S. In a thorough and well-reasoned opinion, Judge\nMotz dissented. Id. at 383-398 (Motz, J., dissenting).\nThe second is Lexmark International, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (2014).\nStatic Control Components (SCC) produced components that various companies employed in the\nremanufacture and refurbishing of used toner cartridges for Lexmark printers. Such remanufacturers\nwere significantly disrupting Lexmark\xe2\x80\x99s own sales of replacement toner cartridges for its printers. SCC\nalleged that Lexmark engaged in false advertising (1) by informing certain Lexmark toner cartridge\nend-users that they were contractually required to return used cartridges to Lexmark and (2) by\ninforming remanufacturing companies that it was illegal to refurbish certain Lexmark toner cartridges\nand to use SCC\xe2\x80\x99s components in doing so. Id. at 1384-85. The district court granted Lexmark\xe2\x80\x99s motion\nto dismiss on the ground that SCC lacked standing. Id. at 1385. The Sixth Circuit reversed. Id. As\nexplained in Belmora, the Supreme Court clarified in Lexmark what the plaintiff must show to have\nstanding to sue for false advertising.\nOne final note: the Belmora opinion makes no reference whatsoever to the well-known marks\ndoctrine. As you will see, Belmora\xe2\x80\x99s facts cry out for application of the doctrine. But early on in the\nlitigation, the TTAB determined that Article 6bis of the Paris Convention \xe2\x80\x9cdo[es] not afford an\nindependent cause of action for parties in Board proceedings,\xe2\x80\x9d nor does any section of the Lanham Act\nestablish such a cause of action. Bayer Consumer Care AG v. Belmora LLC, 90 U.S.P.Q.2d 1587, 2009 WL\n962811, *5 (TTAB 2009).\n\n337\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nBelmora LLC v. Bayer Consumer Care AG\n819 F.3d 697 (4th Cir. 2016), cert. denied, 137 S. Ct. 1202 (2017)\nAGEE, Circuit Judge:\n[1] In this unfair competition case, we consider whether the Lanham Act permits the owner of a\nforeign trademark and its sister company to pursue false association, false advertising, and trademark\ncancellation claims against the owner of the same mark in the United States. Bayer Consumer Care AG\n(\xe2\x80\x9cBCC\xe2\x80\x9d) owns the trademark \xe2\x80\x9cFLANAX\xe2\x80\x9d in Mexico and has sold naproxen sodium pain relievers under\nthat mark in Mexico (and other parts of Latin America) since the 1970s. Belmora LLC owns the\nFLANAX trademark in the United States and has used it here since 2004 in the sale of its naproxen\nsodium pain relievers. BCC and its U.S. sister company Bayer Healthcare LLC (\xe2\x80\x9cBHC,\xe2\x80\x9d and collectively\nwith BCC, \xe2\x80\x9cBayer\xe2\x80\x9d) contend that Belmora used the FLANAX mark to deliberately deceive Mexican\xe2\x80\x93\nAmerican consumers into thinking they were purchasing BCC\xe2\x80\x99s product.\n[2] BCC successfully petitioned the U.S. Trademark Trial and Appeal Board (\xe2\x80\x9cTTAB\xe2\x80\x9d) to cancel\nBelmora\xe2\x80\x99s registration for the FLANAX mark based on deceptive use. Belmora appealed the TTAB\xe2\x80\x99s\ndecision to the district court. In the meantime, BCC filed a separate complaint for false association\nagainst Belmora under \xc2\xa7 43 of the Lanham Act, 15 U.S.C. \xc2\xa7 1125, and in conjunction with BHC, a claim\nfor false advertising. After the two cases were consolidated, the district court reversed the TTAB\xe2\x80\x99s\ncancellation order and dismissed the false association and false advertising claims.\n[3] Bayer appeals those decisions. For the reasons outlined below, we vacate the judgment of the\ndistrict court and remand this case for further proceedings consistent with this opinion.\nI. Background\n[4] This appeal comes to us following the district court\xe2\x80\x99s grant of Belmora\xe2\x80\x99s Federal Rule of Civil\nProcedure 12(b)(6) motion to dismiss Bayer\xe2\x80\x99s complaint and Belmora\xe2\x80\x99s Rule 12(c) motion for\njudgment on the pleadings on the trademark cancellation claim. . . .\nA. The FLANAX Mark\n[5] BCC registered the trademark FLANAX in Mexico for pharmaceutical products, analgesics, and\nanti-inflammatories. It has sold naproxen sodium tablets under the FLANAX brand in Mexico since\n1976. FLANAX sales by BCC have totaled hundreds of millions of dollars, with a portion of the sales\noccurring in Mexican cities near the United States border. BCC\xe2\x80\x99s FLANAX brand is well-known in\nMexico and other Latin American countries, as well as to Mexican\xe2\x80\x93Americans and other Hispanics in\nthe United States, but BCC has never marketed or sold its FLANAX in the United States. Instead, BCC\xe2\x80\x99s\nsister company, BHC, sells naproxen sodium pain relievers under the brand ALEVE in the United States\nmarket.\n[6] Belmora LLC began selling naproxen sodium tablets in the United States as FLANAX in 2004.\nThe following year, Belmora registered the FLANAX mark in the United States. Belmora\xe2\x80\x99s early\nFLANAX packaging (below, left) closely mimicked BCC\xe2\x80\x99s Mexican FLANAX packaging (right), displaying\na similar color scheme, font size, and typeface.\n\n338\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nBelmora later modified its packaging (below), but the color scheme, font size, and typeface remain\nsimilar to that of BCC\xe2\x80\x99s FLANAX packaging.\n\n[7] In addition to using similar packaging, Belmora made statements implying that its FLANAX\nbrand was the same FLANAX product sold by BCC in Mexico. For example, Belmora circulated a\nbrochure to prospective distributors that stated,\nFor generations, Flanax has been a brand that Latinos have turned to for various common\nailments. Now you too can profit from this highly recognized topselling brand among\nLatinos. Flanax is now made in the U.S. and continues to show record sales growth\neverywhere it is sold. Flanax acts as a powerful attraction for Latinos by providing them\nwith products they know, trust and prefer.\nBelmora also employed telemarketers and provided them with a script containing similar statements.\nThis sales script stated that Belmora was \xe2\x80\x9cthe direct producers of FLANAX in the US\xe2\x80\x9d and that \xe2\x80\x9cFLANAX\nis a very well known medical product in the Latino American market, for FLANAX is sold successfully\nin Mexico.\xe2\x80\x9d Belmora\xe2\x80\x99s \xe2\x80\x9csell sheet,\xe2\x80\x9d used to solicit orders from retailers, likewise claimed that \xe2\x80\x9cFlanax\nproducts have been used [for] many, many years in Mexico\xe2\x80\x9d and are \xe2\x80\x9cnow being produced in the\nUnited States by Belmora LLC.\xe2\x80\x9d\n[8] Bayer points to evidence that these and similar materials resulted in Belmora\xe2\x80\x99s distributors,\nvendors, and marketers believing that its FLANAX was the same as or affiliated with BCC\xe2\x80\x99s FLANAX.\nFor instance, Belmora received questions regarding whether it was legal for FLANAX to have been\nimported from Mexico. And an investigation of stores selling Belmora\xe2\x80\x99s FLANAX \xe2\x80\x9cidentified at least 30\n[purchasers] who believed that the Flanax products . . . were the same as, or affiliated with, the Flanax\nproducts they knew from Mexico.\xe2\x80\x9d\nB. Proceedings Below\n1.\n[9] In 2007, BCC petitioned the TTAB to cancel Belmora\xe2\x80\x99s registration for the FLANAX mark,\narguing that Belmora\xe2\x80\x99s use and registration of the FLANAX mark violated Article 6bis of the Paris\n339\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nConvention \xe2\x80\x9cas made applicable by Sections 44(b) and (h) of the Lanham Act.\xe2\x80\x9d BCC also sought\ncancellation of Belmora\xe2\x80\x99s registration under \xc2\xa7 14(3) of the Lanham Act because Belmora had used the\nFLANAX mark \xe2\x80\x9cto misrepresent the source of the goods . . . [on] which the mark is used.\xe2\x80\x9d Lanham Act\n\xc2\xa7 14(3), 15 U.S.C. \xc2\xa7 1064(3).\n[10] The TTAB dismissed BCC\xe2\x80\x99s Article 6bis claim, concluding that Article 6bis \xe2\x80\x9cis not selfexecuting\xe2\x80\x9d and that \xc2\xa7 44 of the Lanham Act did not provide \xe2\x80\x9can independent basis for cancellation.\xe2\x80\x9d\nHowever, the TTAB allowed Bayer\xe2\x80\x99s \xc2\xa7 14(3) claim to proceed. In 2014, after discovery and a hearing,\nthe TTAB ordered cancellation of Belmora\xe2\x80\x99s FLANAX registration, concluding that Belmora had\nmisrepresented the source of the FLANAX goods and that the facts \xe2\x80\x9cd[id] not present a close case.\xe2\x80\x9d The\nTTAB noted that Belmora 1) knew the favorable reputation of Bayer\xe2\x80\x99s FLANAX product, 2) \xe2\x80\x9ccopied\xe2\x80\x9d\nBayer\xe2\x80\x99s packaging, and 3) \xe2\x80\x9crepeatedly invoked\xe2\x80\x9d that reputation when marketing its product in the\nUnited States.\n2.\n[11] Shortly after the TTAB\xe2\x80\x99s ruling, Bayer filed suit in the Southern District of California, alleging\nthat 1) BCC was injured by Belmora\xe2\x80\x99s false association with its FLANAX product in violation of Lanham\nAct \xc2\xa7 43(a)(1)(A), and 2) BCC and BHC were both injured by Belmora\xe2\x80\x99s false advertising of FLANAX\nunder \xc2\xa7 43(a)(1)(B). The complaint also alleged three claims under California state law.\n[12] Belmora meanwhile appealed the TTAB\xe2\x80\x99s cancellation order and elected to proceed with the\nappeal as a civil action in the Eastern District of Virginia. It argued that the TTAB erred in concluding\nthat Bayer \xe2\x80\x9chad standing and/or a cause of action\xe2\x80\x9d under \xc2\xa7 14(3) and in finding that Belmora had\nmisrepresented the source of its goods. Belmora also sought a declaration that its actions had not\nviolated the false association and false advertising provisions of Lanham Act \xc2\xa7 43(a), as Bayer had\nalleged in the California district court proceeding. Bayer filed a counterclaim challenging the TTAB\xe2\x80\x99s\ndismissal of its Paris Convention treaty claims.\n[13] The California case was transferred to the Eastern District of Virginia and consolidated with\nBelmora\xe2\x80\x99s pending action. Belmora then moved the district court to dismiss Bayer\xe2\x80\x99s \xc2\xa7 43(a) claims\nunder Rule 12(b)(6) and for judgment on the pleadings under Rule 12(c) on the \xc2\xa7 14(3) claim. On\nFebruary 6, 2015, after two hearings, the district court issued a memorandum opinion and order ruling\nin favor of Belmora across the board.\n[14] The district court acknowledged that \xe2\x80\x9cBelmora\xe2\x80\x99s FLANAX . . . has a similar trade dress to\nBayer\xe2\x80\x99s FLANAX and is marketed in such a way that capitalizes on the goodwill of Bayer\xe2\x80\x99s FLANAX.\xe2\x80\x9d It\nnonetheless \xe2\x80\x9cdistilled\xe2\x80\x9d the case \xe2\x80\x9cinto one single question\xe2\x80\x9d:\nDoes the Lanham Act allow the owner of a foreign mark that is not registered in the\nUnited States and further has never used the mark in United States commerce to assert\npriority rights over a mark that is registered in the United States by another party and\nused in United States commerce?\nThe district court concluded that \xe2\x80\x9c[t]he answer is no\xe2\x80\x9d based on its reading of the Supreme Court\xe2\x80\x99s\ndecision in Lexmark International, Inc. v. Static Control Components, Inc., 134 S.Ct. 1377 (2014).\nAccordingly, the district court dismissed Bayer\xe2\x80\x99s false association and false advertising claims for lack\nof standing. At the same time, it reversed the TTAB\xe2\x80\x99s \xc2\xa7 14(3) cancellation order.\n[15] Bayer filed a timely notice of appeal, and we have jurisdiction under 28 U.S.C. \xc2\xa7 1291. The\nU.S. Patent and Trademark Office (\xe2\x80\x9cUSPTO\xe2\x80\x9d) intervened to defend the TTAB\xe2\x80\x99s decision to cancel\n\n340\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nBelmora\xe2\x80\x99s registration and to argue that the Lanham Act conforms to the United States\xe2\x80\x99 commitments\nin Article 6bis of the Paris Convention.3\nII. Discussion\n[16] We review de novo the district court\xe2\x80\x99s decision to dismiss a proceeding under Rules 12(b)(6)\nand 12(c), accepting as true all well-pleaded allegations in the plaintiff\xe2\x80\x99s complaint and drawing all\nreasonable factual inferences in the plaintiff\xe2\x80\x99s favor. . . .\nA. False Association and False Advertising Under Section 43(a)\n[17] The district court dismissed Bayer\xe2\x80\x99s false association4 and false advertising claims because,\nin its view, the claims failed to satisfy the standards set forth by the Supreme Court in Lexmark. At the\ncore of the district court\xe2\x80\x99s decision was its conclusion that 1) Bayer\xe2\x80\x99s claims fell outside the Lanham\nAct\xe2\x80\x99s \xe2\x80\x9czone of interests\xe2\x80\x9d\xe2\x80\x94and are not cognizable\xe2\x80\x94\xe2\x80\x9dbecause Bayer does not possess a protectable\ninterest in the FLANAX mark in the United States,\xe2\x80\x9d and 2) that a \xe2\x80\x9ccognizable economic loss under the\nLanham Act\xe2\x80\x9d cannot exist as to a \xe2\x80\x9cmark that was not used in United States commerce.\xe2\x80\x9d\n[18] On appeal, Bayer contends these conclusions are erroneous as a matter of law because they\nconflict with the plain language of \xc2\xa7 43(a) and misread Lexmark.\n1.\n[19] \xe2\x80\x9cWhile much of the Lanham Act addresses the registration, use, and infringement of\ntrademarks and related marks, \xc2\xa7 43(a) . . . goes beyond trademark protection.\xe2\x80\x9d Dastar Corp. v.\nTwentieth Century Fox Film Corp., 539 U.S. 23, 28\xe2\x80\x9329 (2003). Written in terms of the putative\ndefendant\xe2\x80\x99s conduct, \xc2\xa7 43(a) sets forth unfair competition causes of action for false association and\nfalse advertising:\nAny person who, on or in connection with any goods or services, or any container for\ngoods, uses in commerce any word, term, name, symbol, or device, or any combination\nthereof, or any false designation of origin, false or misleading description of fact, or false\nor misleading representation of fact, which\xe2\x80\x94\n(A) [False Association:] is likely to cause confusion, or to cause mistake, or to deceive as\nto the affiliation, connection, or association of such person with another person, or as to\nthe origin, sponsorship, or approval of his or her goods, services, or commercial activities\nby another person, or\n(B) [False Advertising:] in commercial advertising or promotion, misrepresents the\nnature, characteristics, qualities, or geographic origin of his or her or another person\xe2\x80\x99s\ngoods, services, or commercial activities,\nshall be liable in a civil action by any person who believes that he or she is or is likely to\nbe damaged by such act.\nLanham Act \xc2\xa7 43(a)(1), 15 U.S.C. \xc2\xa7 1125(a)(1). Subsection A, which creates liability for statements as to\n\xe2\x80\x9caffiliation, connection, or association\xe2\x80\x9d of goods, describes the cause of action known as \xe2\x80\x9cfalse\nThe district court had agreed with the TTAB that Article 6bis does not create an independent\ncause of action for the cancellation of Belmora\xe2\x80\x99s FLANAX registration. Because Bayer appears to have\nabandoned its treaty claims on appeal and their resolution is not necessary to our decision, we do not\naddress any issue regarding the Paris Convention arguments.\n3\n\n4 As the district court pointed out, we have sometimes denominated Lanham Act \xc2\xa7 43(a)(1)(A)\nclaims as \xe2\x80\x9cfalse designation\xe2\x80\x9d claims. We think it preferable to follow the Supreme Court\xe2\x80\x99s terminology\nin Lexmark and instead refer to such claims as those of \xe2\x80\x9cfalse association,\xe2\x80\x9d although the terms can often\nbe used interchangeably.\n\n341\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nassociation.\xe2\x80\x9d Subsection B, which creates liability for \xe2\x80\x9cmisrepresent[ing] the nature, characteristics,\nqualities, or geographic origin\xe2\x80\x9d of goods, defines the cause of action for \xe2\x80\x9cfalse advertising.\xe2\x80\x9d\n[20] Significantly, the plain language of \xc2\xa7 43(a) does not require that a plaintiff possess or have\nused a trademark in U.S. commerce as an element of the cause of action. Section 43(a) stands in sharp\ncontrast to Lanham Act \xc2\xa7 32, which is titled as and expressly addresses \xe2\x80\x9cinfringement.\xe2\x80\x9d 15 U.S.C.\n\xc2\xa7 1114 (requiring for liability the \xe2\x80\x9cuse in commerce\xe2\x80\x9d of \xe2\x80\x9cany reproduction, counterfeit, copy, or\ncolorable imitation of a registered mark \xe2\x80\x9c (emphasis added)). Under \xc2\xa7 43(a), it is the defendant\xe2\x80\x99s use in\ncommerce\xe2\x80\x94whether of an offending \xe2\x80\x9cword, term, name, symbol, or device\xe2\x80\x9d or of a \xe2\x80\x9cfalse or misleading\ndescription [or representation] of fact\xe2\x80\x9d\xe2\x80\x94that creates the injury under the terms of the statute. And\nhere the alleged offending \xe2\x80\x9cword, term, name, symbol, or device\xe2\x80\x9d is Belmora\xe2\x80\x99s FLANAX mark.\n[21] What \xc2\xa7 43(a) does require is that Bayer was \xe2\x80\x9clikely to be damaged\xe2\x80\x9d by Belmora\xe2\x80\x99s \xe2\x80\x9cuse[ ] in\ncommerce\xe2\x80\x9d of its FLANAX mark and related advertisements. The Supreme Court recently considered\nthe breadth of this \xe2\x80\x9clikely to be damaged\xe2\x80\x9d language in Lexmark, a false advertising case arising from a\ndispute in the used-printer-cartridge market. 134 S.Ct. at 1383, 1388. The lower courts in Lexmark had\nanalyzed the case in terms of \xe2\x80\x9cprudential standing\xe2\x80\x9d\xe2\x80\x94that is, on grounds that are \xe2\x80\x9cprudential\xe2\x80\x9d rather\nthan constitutional. Id. at 1386. The Supreme Court, however, observed that the real question in\nLexmark was \xe2\x80\x9cwhether Static Control has a cause of action under the statute.\xe2\x80\x9d Id. at 1387. This query, in\nturn, hinged on \xe2\x80\x9ca straightforward question of statutory interpretation\xe2\x80\x9d to which it applied \xe2\x80\x9ctraditional\nprinciples\xe2\x80\x9d of interpretation. Id. at 1388. As a threshold matter, the Supreme Court noted that courts\nmust be careful not to import requirements into this analysis that Congress has not included in the\nstatute:\nWe do not ask whether in our judgment Congress should have authorized Static Control\xe2\x80\x99s\nsuit, but whether Congress in fact did so. Just as a court cannot apply its independent\npolicy judgment to recognize a cause of action that Congress has denied, it cannot limit a\ncause of action that Congress has created merely because \xe2\x80\x98prudence\xe2\x80\x99 dictates.\nId. The Court concluded that \xc2\xa7 43(a)\xe2\x80\x99s broad authorization\xe2\x80\x94permitting suit by \xe2\x80\x9cany person who\nbelieves that he or she is or is likely to be damaged\xe2\x80\x9d\xe2\x80\x94should not be taken \xe2\x80\x9cliterally\xe2\x80\x9d to reach the limits\nof Article III standing, but is framed by two \xe2\x80\x9cbackground principles,\xe2\x80\x9d which may overlap. Id.\n[22] First, a plaintiff\xe2\x80\x99s claim must fall within the \xe2\x80\x9czone of interests\xe2\x80\x9d protected by the statute. Id.\nThe scope of the zone of interests is not \xe2\x80\x9cespecially demanding,\xe2\x80\x9d and the plaintiff receives the \xe2\x80\x9cbenefit\nof any doubt.\xe2\x80\x9d Id. at 1389. Because the Lanham Act contains an \xe2\x80\x9cunusual, and extraordinarily helpful\xe2\x80\x9d\npurpose statement in \xc2\xa7 45, identifying the statute\xe2\x80\x99s zone of interests \xe2\x80\x9crequires no guesswork.\xe2\x80\x9d Id.\nSection 45 provides:\nThe intent of this chapter is to regulate commerce within the control of Congress by\nmaking actionable the deceptive and misleading use of marks in such commerce; to\nprotect registered marks used in such commerce from interference by State, or territorial\nlegislation; to protect persons engaged in such commerce against unfair competition; to\nprevent fraud and deception in such commerce by the use of reproductions, copies,\ncounterfeits, or colorable imitations of registered marks; and to provide rights and\nremedies stipulated by treaties and conventions respecting trademarks, trade names, and\nunfair competition entered into between the United States and foreign nations.\nLanham Act \xc2\xa7 45, 15 U.S.C. \xc2\xa7 1127.5\nIn the same section, the Lanham Act defines \xe2\x80\x9ccommerce\xe2\x80\x9d as \xe2\x80\x9call commerce which may lawfully\nbe regulated by Congress.\xe2\x80\x9d Lanham Act \xc2\xa7 45, 15 U.S.C. \xc2\xa7 1127. We have previously construed this\nphrase to mean that the term is \xe2\x80\x9ccoterminous with that commerce that Congress may regulate under\nthe Commerce Clause of the United States Constitution.\xe2\x80\x9d Int\xe2\x80\x99l Bancorp, LLC v. Societe des Bains de Mer et\n5\n\n342\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[23] The Supreme Court observed that \xe2\x80\x9c[m]ost of the enumerated purposes are relevant to a\nfalse-association case,\xe2\x80\x9d while \xe2\x80\x9ca typical false-advertising case will implicate only the Act\xe2\x80\x99s goal of\n\xe2\x80\x98protecting persons engaged in commerce within the control of Congress against unfair competition.\xe2\x80\x99\xe2\x80\x9d\nLexmark, 134 S.Ct. at 1389. The Court concluded \xe2\x80\x9cthat to come within the zone of interests in a suit for\nfalse advertising under [\xc2\xa7 43(a)], a plaintiff must allege an injury to a commercial interest in reputation\nor sales.\xe2\x80\x9d Id. at 1390.\n[24] The second Lexmark background principle is that \xe2\x80\x9ca statutory cause of action is limited to\nplaintiffs whose injuries are proximately caused by violations of the statute.\xe2\x80\x9d Id. The injury must have a\n\xe2\x80\x9csufficiently close connection to the conduct the statute prohibits.\xe2\x80\x9d Id. In the \xc2\xa7 43(a) context, this\nmeans \xe2\x80\x9cshow[ing] economic or reputational injury flowing directly from the deception wrought by the\ndefendant\xe2\x80\x99s advertising; and that that occurs when deception of consumers causes them to withhold\ntrade from the plaintiff.\xe2\x80\x9d Id. at 1391.\n[25] The primary lesson from Lexmark is clear: courts must interpret the Lanham Act according\nto what the statute says. To determine whether a plaintiff, \xe2\x80\x9cfalls within the class of plaintiffs whom\nCongress has authorized to sue,\xe2\x80\x9d we \xe2\x80\x9capply traditional principles of statutory interpretation.\xe2\x80\x9d Id. at\n1387. The outcome will rise and fall on the \xe2\x80\x9cmeaning of the congressionally enacted provision creating\na cause of action.\xe2\x80\x9d Id. at 1388.\n[26] We now turn to apply these principles to the case before us.\n2.\na.\n[27] We first address the position, pressed by Belmora and adopted by the district court, that a\nplaintiff must have initially used its own mark in commerce within the United States as a condition\nprecedent to a \xc2\xa7 43(a) claim. In dismissing BCC\xe2\x80\x99s \xc2\xa7 43(a) claims, the district court found dispositive\nthat \xe2\x80\x9cBayer failed to plead facts showing that it used the FLANAX mark in commerce in [the] United\nStates.\xe2\x80\x9d Upon that ground, the district court held \xe2\x80\x9cthat Bayer does not possess a protectable interest in\nthe [FLANAX] mark.\xe2\x80\x9d\n[28] As noted earlier, such a requirement is absent from \xc2\xa7 43(a)\xe2\x80\x99s plain language and its\napplication in Lexmark. Under the statute, the defendant must have \xe2\x80\x9cuse[d] in commerce\xe2\x80\x9d the offending\n\xe2\x80\x9cword, term, name, [or] symbol,\xe2\x80\x9d but the plaintiff need only \xe2\x80\x9cbelieve[ ] that he or she is or is likely to be\ndamaged by such act.\xe2\x80\x9d Lanham Act \xc2\xa7 43(a), 15 U.S.C. \xc2\xa7 1125(a).\n[29] It is important to emphasize that this is an unfair competition case, not a trademark\ninfringement case. Belmora and the district court conflated the Lanham Act\xe2\x80\x99s infringement provision in\n\xc2\xa7 32 (which authorizes suit only \xe2\x80\x9cby the registrant,\xe2\x80\x9d and thereby requires the plaintiff to have used its\nown mark in commerce) with unfair competition claims pled in this case under \xc2\xa7 43(a). Section 32\nmakes clear that Congress knew how to write a precondition of trademark possession and use into a\nLanham Act cause of action when it chose to do so. It has not done so in \xc2\xa7 43(a). See Russello v. United\nStates, 464 U.S. 16, 23 (1983) (\xe2\x80\x9c[W]here Congress includes particular language in one section of a\nstatute but omits it in another section of the same Act, it is generally presumed that Congress acts\nintentionally and purposely in the disparate inclusion or exclusion.\xe2\x80\x9d).\n[30] Given that Lexmark advises courts to adhere to the statutory language, \xe2\x80\x9capply[ing] traditional\nprinciples of statutory interpretation,\xe2\x80\x9d Lexmark, 134 S.Ct. at 1388, we lack authority to introduce a\ndu Cercle des Etrangers a Monaco, 329 F.3d 359, 363\xe2\x80\x9364 (4th Cir. 2003). \xe2\x80\x9cCommerce\xe2\x80\x9d in Lanham Act\ncontext is therefore an expansive concept that \xe2\x80\x9cnecessarily includes all the explicitly identified variants\nof interstate commerce, foreign trade, and Indian commerce.\xe2\x80\x9d Id. at 364 (citing U.S. Const. art. I, \xc2\xa7 8, cl.\n3); see also infra n. 6.\n\n343\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nrequirement into \xc2\xa7 43(a) that Congress plainly omitted. Nothing in Lexmark can be read to suggest that\n\xc2\xa7 43(a) claims have an unstated requirement that the plaintiff have first used its own mark (word,\nterm, name, symbol, or device) in U.S. commerce before a cause of action will lie against a defendant\nwho is breaching the statute.\n[31] The district court thus erred in requiring Bayer, as the plaintiff, to have pled its prior use of\nits own mark in U.S. commerce when it is the defendant\xe2\x80\x99s use of a mark or misrepresentation that\nunderlies the \xc2\xa7 43(a) unfair competition cause of action. Having made this foundational error, the\ndistrict court\xe2\x80\x99s resolution of the issues requires reversal.6\n[32] Admittedly, some of our prior cases appear to have treated a plaintiff\xe2\x80\x99s use of a mark in\nUnited States commerce as a prerequisite for a false association claim. See Lamparello v. Falwell, 420\nF.3d 309, 313 (4th Cir. 2005) (\xe2\x80\x9cBoth infringement [under \xc2\xa7 32] and false designation of origin [under\n\xc2\xa7 43(a)] have [the same] five elements.\xe2\x80\x9d); People for the Ethical Treatment of Animals v. Doughney, 263\nF.3d 359, 364 (4th Cir. 2001) (same); Int\xe2\x80\x99l Bancorp, 329 F.3d at 361 n. 2 (\xe2\x80\x9c[T]he tests for trademark\ninfringement and unfair competition . . . are identical.\xe2\x80\x9d); Lone Star Steakhouse & Saloon v. Alpha of Va.,\nInc., 43 F.3d 922, 930 (4th Cir. 1995) (\xe2\x80\x9c[T]o prevail under \xc2\xa7\xc2\xa7 32(1) and 43(a) of the Lanham Act for\ntrademark infringement and unfair competition, respectively, a complainant must demonstrate that it\nhas a valid, protectible trademark[.]\xe2\x80\x9d). However, none of these cases made that consideration the ratio\ndecidendi of its holding or analyzed whether the statute in fact contains such a requirement. See, e.g., 5\nJ. Thomas McCarthy, Trademarks and Unfair Competition \xc2\xa7 29:4 (4th ed.2002) (observing that\nInternational Bancorp merely \xe2\x80\x9cassumed that to trigger Lanham Act \xc2\xa7 43(a), the plaintiff\xe2\x80\x99s mark must be\n\xe2\x80\x98used in commerce\xe2\x80\x99\xe2\x80\x9d). Moreover, all of these cases predate Lexmark, which provides the applicable\nSupreme Court precedent interpreting \xc2\xa7 43(a). See U.S. Dep\xe2\x80\x99t of Health & Human Servs. v. Fed. Labor\nRelations Auth., 983 F.2d 578, 581 (4th Cir. 1992) (\xe2\x80\x9cA decision by a panel of this court, or by the court\nsitting en banc, does not bind subsequent panels if the decision rests on authority that subsequently\nproves untenable.\xe2\x80\x9d).\n[33] Although the plaintiffs\xe2\x80\x99 use of a mark in U.S. commerce was a fact in common in the foregoing\ncases, substantial precedent reflects that \xc2\xa7 43(a) unfair competition claims come within the statute\xe2\x80\x99s\nprotectable zone of interests without the preconditions adopted by the district court and advanced by\nBelmora. As the Supreme Court has pointed out, \xc2\xa7 43(a) \xe2\x80\x9cgoes beyond trademark protection.\xe2\x80\x9d Dastar\nCorp., 539 U.S. at 29. For example, a plaintiff whose mark has become generic\xe2\x80\x94and therefore not\nprotectable\xe2\x80\x94may plead an unfair competition claim against a competitor that uses that generic name\nand \xe2\x80\x9cfail[s] adequately to identify itself as distinct from the first organization\xe2\x80\x9d such that the name\ncauses \xe2\x80\x9cconfusion or a likelihood of confusion.\xe2\x80\x9d Blinded Veterans Ass\xe2\x80\x99n v. Blinded Am. Veterans Found.,\n\nEven though the district court\xe2\x80\x99s error in transposing \xc2\xa7 43(a)\xe2\x80\x99s requirements for a defendant\xe2\x80\x99s actions\nupon the plaintiff skews the entire analysis, the district court also confused the issues by ill-defining\nthe economic location of the requisite unfair competition acts. As noted earlier, supra n. 5, a\ndefendant\xe2\x80\x99s false association or false advertising conduct under \xc2\xa7 43(a) must occur in \xe2\x80\x9ccommerce\nwithin the control of Congress.\xe2\x80\x9d Such commerce is not limited to purchases and sales within the\nterritorial limits of the United States as the district court seems to imply at times with regard to \xc2\xa7 43(a)\nand \xc2\xa7 14(3) claims. See J.A. 483, 506 (as to \xc2\xa7 14(3), stating that \xe2\x80\x9cBayer did not use the FLANAX mark in\nthe United States\xe2\x80\x9d); J.A. 487 (as to \xc2\xa7 43(a), stating that \xe2\x80\x9cBayer failed to plead facts showing that it used\nthe FLANAX mark in commerce in [the] United States\xe2\x80\x9d). Instead, as we explained in International\nBancorp, Lanham Act \xe2\x80\x9ccommerce\xe2\x80\x9d includes, among other things, \xe2\x80\x9cforeign trade\xe2\x80\x9d and is not limited to\ntransactions solely within the borders of the United States. Int\xe2\x80\x99l Bancorp, 329 F.3d at 364. Of course,\nany such \xe2\x80\x9cforeign trade\xe2\x80\x9d must satisfy the Lexmark \xe2\x80\x9czone of interests\xe2\x80\x9d and \xe2\x80\x9cproximate cause\xe2\x80\x9d\nrequirements to be cognizable for Lanham Act purposes.\n6\n\n344\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n872 F.2d 1035, 1043 (D.C.Cir. 1989); see also Kellogg Co. v. Nat\xe2\x80\x99l Biscuit Co., 305 U.S. 111, 118\xe2\x80\x9319\n(1938) (requiring the defendant to \xe2\x80\x9cuse reasonable care to inform the public of the source of its\nproduct\xe2\x80\x9d even though the plaintiff\xe2\x80\x99s \xe2\x80\x9cshredded wheat\xe2\x80\x9d mark was generic and therefore unprotectable);\nSinger Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 203\xe2\x80\x9304 (1896) (same, for \xe2\x80\x9cSinger\xe2\x80\x9d sewing machines).\n[34] Likewise, in a \xe2\x80\x9creverse passing off\xe2\x80\x9d case, the plaintiff need not have used a mark in commerce\nto bring a \xc2\xa7 43(a) action.7 A reverse-passing-off plaintiff must prove four elements: \xe2\x80\x9c(1) that the work\nat issue originated with the plaintiff; (2) that origin of the work was falsely designated by the\ndefendant; (3) that the false designation of origin was likely to cause consumer confusion; and (4) that\nthe plaintiff was harmed by the defendant\xe2\x80\x99s false designation of origin.\xe2\x80\x9d Universal Furniture Int\xe2\x80\x99l, Inc. v.\nCollezione Europa USA, Inc., 618 F.3d 417, 438 (4th Cir. 2010). Thus, the plaintiff in a reverse passing\noff case must plead and prove only that the work \xe2\x80\x9coriginated with\xe2\x80\x9d him\xe2\x80\x94not that he used the work\n(which may or may not be associated with a mark) in U.S. commerce. Id.\n[35] The generic mark and reverse passing off cases illustrate that \xc2\xa7 43(a) actions do not require,\nimplicitly or otherwise, that a plaintiff have first used its own mark in United States commerce. If such\na use were a condition precedent to bringing a \xc2\xa7 43(a) action, the generic mark and reverse passing off\ncases could not exist.\n[36] In sum, the Lanham Act\xe2\x80\x99s plain language contains no unstated requirement that a \xc2\xa7 43(a)\nplaintiff have used a U.S. trademark in U.S. commerce to bring a Lanham Act unfair competition claim.\nThe Supreme Court\xe2\x80\x99s guidance in Lexmark does not allude to one, and our prior cases either only\nassumed or articulated as dicta that such a requirement existed. Thus, the district court erred in\nimposing such a condition precedent upon Bayer\xe2\x80\x99s claims.8\n[37] As Bayer is not barred from making a \xc2\xa7 43(a) claim, the proper Lexmark inquiry is twofold.\nDid the alleged acts of unfair competition fall within the Lanham Act\xe2\x80\x99s protected zone of interests? And\nif so, did Bayer plead proximate causation of a cognizable injury? We examine the false association and\nfalse advertising claims in turn.\nb.\ni.\n[38] As to the zone of interests, Lexmark advises that \xe2\x80\x9c[m]ost of the [Lanham Act\xe2\x80\x99s] enumerated\npurposes are relevant to false-association cases.\xe2\x80\x9d 134 S.Ct. at 1389. One such enumerated purpose is\nReverse passing off occurs when a \xe2\x80\x9cproducer misrepresents someone else\xe2\x80\x99s goods or services as his\nown,\xe2\x80\x9d in other words, when the defendant is selling the plaintiff\xe2\x80\x99s goods and passing them off as\noriginating with the defendant. Universal Furniture Int\xe2\x80\x99l, Inc. v. Collezione Europa USA, Inc., 618 F.3d\n417, 438 (4th Cir. 2010) (quoting Dastar Corp., 539 U.S. at 28 n. 1).\n7\n\nA plaintiff who relies only on foreign commercial activity may face difficulty proving a cognizable\nfalse association injury under \xc2\xa7 43(a). A few isolated consumers who confuse a mark with one seen\nabroad, based only on the presence of the mark on a product in this country and not other misleading\nconduct by the mark holder, would rarely seem to have a viable \xc2\xa7 43(a) claim.\n8\n\nThe story is different when a defendant, as alleged here, has\xe2\x80\x94as a cornerstone of its business\xe2\x80\x94\nintentionally passed off its goods in the United States as the same product commercially available in\nforeign markets in order to influence purchases by American consumers. See M. Kramer Mfg. Co. v.\nAndrews, 783 F.2d 421, 448 (4th Cir. 1986) (\xe2\x80\x9c[E]vidence of intentional, direct copying establishes a\nprima facie case of secondary meaning sufficient to shift the burden of persuasion to the defendant on\nthat issue.\xe2\x80\x9d). Such an intentional deception can go a long way toward establishing likelihood of\nconfusion. See Blinded Veterans, 872 F.2d at 1045 (\xe2\x80\x9cIntent to deceive . . . retains potency; when present,\nit is probative evidence of a likelihood of confusion.\xe2\x80\x9d).\n\n345\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\xe2\x80\x9cmaking actionable the deceptive and misleading use of marks\xe2\x80\x9d in \xe2\x80\x9ccommerce within the control of\nCongress.\xe2\x80\x9d Lanham Act \xc2\xa7 45, 15 U.S.C. \xc2\xa7 1127; see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,\n784 n. 19 (1992) (Stevens, J., concurring) (\xe2\x80\x9cTrademark law protects the public by making consumers\nconfident that they can identify brands they prefer and can purchase those brands without being\nconfused or misled.\xe2\x80\x9d). As pled, BCC\xe2\x80\x99s false association claim advances that purpose.\n[39] The complaint alleges Belmora\xe2\x80\x99s misleading association with BCC\xe2\x80\x99s FLANAX has caused BCC\ncustomers to buy the Belmora FLANAX in the United States instead of purchasing BCC\xe2\x80\x99s FLANAX in\nMexico. For example, the complaint alleges that BCC invested heavily in promoting its FLANAX to\nMexican citizens or Mexican\xe2\x80\x93Americans in border areas. Those consumers cross into the United States\nand may purchase Belmora FLANAX here before returning to Mexico. And Mexican\xe2\x80\x93Americans may\nforego purchasing the FLANAX they know when they cross the border to visit Mexico because\nBelmora\xe2\x80\x99s alleged deception led them to purchase the Belmora product in the United States.\n[40] In either circumstance, BCC loses sales revenue because Belmora\xe2\x80\x99s deceptive and misleading\nuse of FLANAX conveys to consumers a false association with BCC\xe2\x80\x99s product. Further, by also deceiving\ndistributors and vendors, Belmora makes its FLANAX more available to consumers, which would\nexacerbate BCC\xe2\x80\x99s losses . . . . In each scenario, the economic activity would be \xe2\x80\x9cwithin the control of\nCongress\xe2\x80\x9d to regulate. Lanham Act \xc2\xa7 45, 15 U.S.C. \xc2\xa7 1127.\n[41] We thus conclude that BCC has adequately pled a \xc2\xa7 43(a) false association claim for purposes\nof the zone of interests prong. Its allegations reflect the claim furthers the \xc2\xa7 45 purpose of preventing\n\xe2\x80\x9cthe deceptive and misleading use of marks\xe2\x80\x9d in \xe2\x80\x9ccommerce within the control of Congress.\xe2\x80\x9d\nii.\n[42] Turning to Lexmark\xe2\x80\x99s second prong, proximate cause, BCC has also alleged injuries that \xe2\x80\x9care\nproximately caused by [Belmora\xe2\x80\x99s] violations of the [false association] statute.\xe2\x80\x9d 134 S.Ct. at 1390. The\ncomplaint can fairly be read to allege \xe2\x80\x9ceconomic or reputational injury flowing directly from the\ndeception wrought by the defendant\xe2\x80\x99s\xe2\x80\x9d conduct. Id. at 1391. As previously noted, BCC alleges\n\xe2\x80\x9csubstantial sales in major cities near the U.S.-Mexico border\xe2\x80\x9d and \xe2\x80\x9cmillions of dollars promoting and\nadvertising\xe2\x80\x9d its FLANAX brand in that region. (Compl. \xc2\xb6\xc2\xb6 11\xe2\x80\x9312). Thus, BCC may plausibly have been\ndamaged by Belmora\xe2\x80\x99s alleged deceptive use of the FLANAX mark in at least two ways. As reflected in\nthe zone of interests discussion, BCC FLANAX customers in Mexico near the border may be deceived\ninto foregoing a FLANAX purchase in Mexico as they cross the border to shop and buy the Belmora\nproduct in the United States. Second, Belmora is alleged to have targeted Mexican\xe2\x80\x93Americans in the\nUnited States who were already familiar with the FLANAX mark from their purchases from BCC in\nMexico. We can reasonably infer that some subset of those customers would buy BCC\xe2\x80\x99s FLANAX upon\ntheir return travels to Mexico if not for the alleged deception by Belmora. Consequently, BCC meets the\nLexmark pleading requirement as to proximate cause.\n[43] BCC may ultimately be unable to prove that Belmora\xe2\x80\x99s deception \xe2\x80\x9ccause[d] [these\nconsumers] to withhold trade from [BCC]\xe2\x80\x9d in either circumstance, Lexmark, 134 S.Ct. at 1391, but at\nthe initial pleading stage we must draw all reasonable factual inferences in BCC\xe2\x80\x99s favor. Priority Auto\nGrp., 757 F.3d at 139. Having done so, we hold BCC has sufficiently pled a \xc2\xa7 43(a) false association\nclaim to survive Belmora\xe2\x80\x99s Rule 12(b)(6) motion. The district court erred in holding otherwise.\nc.\n[44] BCC and BHC both assert \xc2\xa7 43(a)(1)(B) false advertising claims against Belmora. BHC\xe2\x80\x99s claim\nrepresents a \xe2\x80\x9ctypical\xe2\x80\x9d false advertising case: it falls within the Act\xe2\x80\x99s zone of interests by \xe2\x80\x9cprotecting\npersons engaged in commerce within the control of Congress against unfair competition.\xe2\x80\x9d Lexmark,\n134 S.Ct. at 1389 (quoting 15 U.S.C. \xc2\xa7 1127). As a direct competitor to Belmora in the United States,\nBHC sufficiently alleges that Belmora engaged in Lanham Act unfair competition by using deceptive\nadvertisements that capitalized on BCC\xe2\x80\x99s goodwill. . . . If not for Belmora\xe2\x80\x99s statements that its FLANAX\nwas the same one known and trusted in Mexico, some of its consumers could very well have instead\n346\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\npurchased BHC\xe2\x80\x99s ALEVE brand. These lost customers likewise satisfy Lexmark\xe2\x80\x99s second prong: they\ndemonstrate an injury to sales or reputation proximately caused by Belmora\xe2\x80\x99s alleged conduct.\n[45] BCC\xe2\x80\x99s false advertising claim is perhaps not \xe2\x80\x9ctypical\xe2\x80\x9d as BCC is a foreign entity without direct\nsales in the territorial United States. Nonetheless, BCC\xe2\x80\x99s claim advances the Act\xe2\x80\x99s purpose of \xe2\x80\x9cmaking\nactionable the deceptive and misleading use of marks.\xe2\x80\x9d Lanham Act \xc2\xa7 45, 15 U.S.C. \xc2\xa7 1127. As alleged,\nBelmora\xe2\x80\x99s advertising misrepresents the nature of its FLANAX product in that Belmora implies that\nproduct is the same as consumers purchased in Mexico from BCC and can now buy here.\n[46] To be sure, BCC\xe2\x80\x99s false advertising claim overlaps to some degree with its false association\nclaim, but the two claims address distinct conduct within the two subsections of \xc2\xa7 43(a). Belmora\xe2\x80\x99s\nalleged false statements go beyond mere claims of false association; they parlay the passed-off FLANAX\nmark into misleading statements about the product\xe2\x80\x99s \xe2\x80\x9cnature, characteristics, qualities, or geographic\norigin,\xe2\x80\x9d all hallmarks of a false advertising claim. Lanham Act 43(a)(1)(B), 15 U.S.C. 1125(a)(1)(B).\n[47] Belmora\xe2\x80\x99s alleged false statements intertwine closely with its use of the FLANAX mark. The\nFLANAX mark denotes history: Belmora claims its product has been \xe2\x80\x9cused [for] many, many years in\nMexico\xe2\x80\x9d and \xe2\x80\x9cLatinos have turned to\xe2\x80\x9d it \xe2\x80\x9c[f]or generations.\xe2\x80\x9d FLANAX also reflects popularity: Belmora\nsays the product is \xe2\x80\x9chighly recognized [and] top-selling.\xe2\x80\x9d And FLANAX signifies a history of quality:\nBelmora maintains that Latinos \xe2\x80\x9cknow, trust and prefer\xe2\x80\x9d the product. Each of these statements by\nBelmora thus directly relates to the \xe2\x80\x9cnature, characteristics, qualities, or geographic origin\xe2\x80\x9d of its\nFLANAX as being one and the same as that of BCC. Lanham Act \xc2\xa7 43(a)(1)(B), 15 U.S.C.\n\xc2\xa7 1125(a)(1)(B). Because these statements are linked to Belmora\xe2\x80\x99s alleged deceptive use of the\nFLANAX mark, we are satisfied that BCC\xe2\x80\x99s false advertising claim, like its false association claim, comes\nwithin the Act\xe2\x80\x99s zone of interests. As we can comfortably infer that the alleged advertisements\ncontributed to the lost border sales pled by BCC, the claim also satisfies Lexmark\xe2\x80\x99s proximate cause\nprong (for the same reasons discussed above regarding the false association claim).\nd.\n[48] We thus conclude that the Lanham Act permits Bayer to proceed with its claims under\n\xc2\xa7 43(a)\xe2\x80\x94BCC with its false association claim and both BCC and BHC with false advertising claims. It is\nworth noting, as the Supreme Court did in Lexmark, that \xe2\x80\x9c[a]lthough we conclude that [Bayer] has\nalleged an adequate basis to proceed under [\xc2\xa7 43(a)], it cannot obtain relief without evidence of injury\nproximately caused by [Belmora\xe2\x80\x99s alleged misconduct]. We hold only that [Bayer] is entitled to a\nchance to prove its case.\xe2\x80\x9d 134 S.Ct. at 1395.\n[49] In granting Bayer that chance, we are not concluding that BCC has any specific trademark\nrights to the FLANAX mark in the United States. Belmora owns that mark. But trademark rights do not\ninclude using the mark to deceive customers as a form of unfair competition, as is alleged here. Should\nBayer prevail and prove its \xc2\xa7 43(a) claims, an appropriate remedy might include directing Belmora to\nuse the mark in a way that does not sow confusion. See Lanham Act \xc2\xa7 34(a), 15 U.S.C. \xc2\xa7 1116(a)\n(authorizing injunctions based on \xe2\x80\x9cprinciples of equity\xe2\x80\x9d). Of course, the precise remedy would be a\ndetermination to be made by the district court in the first instance upon proper evidence.11 We leave\nany potential remedy to the district court\xe2\x80\x99s discretion should this case reach that point. We only note\n\nFor example, a remedy might include altering the font and color of the packaging or the \xe2\x80\x9cready\nremedy\xe2\x80\x9d of attaching the manufacturer\xe2\x80\x99s name to the brand name. Blinded Veterans, 872 F.2d at 1047.\nAnother option could be for the packaging to display a disclaimer\xe2\x80\x94to correct for any deliberately\ncreated actual confusion. See id. (\xe2\x80\x9cThe district court could, however, require [Blinded American\nVeterans Foundation] to attach a prominent disclaimer to its name alerting the public that it is not the\nsame organization as, and is not associated with, the Blinded Veterans Association.\xe2\x80\x9d).\n11\n\n347\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthat any remedy should take into account traditional trademark principles relating to Belmora\xe2\x80\x99s\nownership of the mark.\nB. Cancellation Under Section 14(3)\n[50] The TTAB ordered the cancellation of Belmora\xe2\x80\x99s FLANAX trademark under \xc2\xa7 14(3), finding\nthat the preponderance of the evidence \xe2\x80\x9creadily establishe[d] blatant misuse of the FLANAX mark in a\nmanner calculated to trade in the United States on the reputation and goodwill of petitioner\xe2\x80\x99s mark\ncreated by its use in Mexico.\xe2\x80\x9d In reversing that decision and granting Belmora\xe2\x80\x99s motion for judgment\non the pleadings, the district court found that BCC, as the \xc2\xa7 14(3) complainant, \xe2\x80\x9clack[ed] standing to\nsue pursuant to Lexmark \xe2\x80\x9c under both the zone of interests and the proximate cause prongs. The\ndistrict court also reversed the TTAB\xe2\x80\x99s holding that Belmora was using FLANAX to misrepresent the\nsource of its goods \xe2\x80\x9cbecause Section 14(3) requires use of the mark in United States commerce and\nBayer did not use the FLANAX mark in the United States.\xe2\x80\x9d\n[51] On appeal, Bayer argues that the district court erred in overturning the TTAB\xe2\x80\x99s \xc2\xa7 14(3)\ndecision because it \xe2\x80\x9cread a use requirement into the section that is simply not there.\xe2\x80\x9d Appellants\xe2\x80\x99 Br.\n49. For reasons that largely overlap with the preceding \xc2\xa7 43(a) analysis, we agree with Bayer.\n....\nIII.\n[52] For the foregoing reasons, we conclude that Bayer is entitled to bring its unfair competition\nclaims under Lanham Act \xc2\xa7 43(a) and its cancellation claim under \xc2\xa7 14(3). The district court\xe2\x80\x99s\njudgment is vacated and the case remanded for further proceedings consistent with this opinion.\nVACATED AND REMANDED\nComments and Questions\n1. Belmora\xe2\x80\x99s implications for trademark prosecution and litigation strategy. For a comprehensive\naccount of Belmora\xe2\x80\x99s practical implications for trademark prosecution and litigation strategy, see\nChristine Haight Farley, No Trademark, No Problem, 23 B.U. J. SCI. & TECH. L. 304 (2017). See also Martin\nB. Schwimmer & John L. Welch, U.S. Law Inches Towards Protecting Trademark Reputation Without Use,\nWORLD TRADEMARK REV., Oct. 1, 2019. For a subsequent application of Belmora, see The Coca-Cola\nCompany v. Meenaxi Enterprises, Inc., Cancellation Nos. 92063353 & 92064398, 2021 WL 2681898\n(TTAB June 28, 2021) [precedential].\n2. The ongoing saga of Belmora. After the Supreme Court denied certiorari review of the 2016\nFourth Circuit opinion in Belmora, the case returned to the Eastern District of Virginia. In September,\n2016, the district court affirmed the PTO\xe2\x80\x99s cancellation of Belmora\xe2\x80\x99s registration but granted Belmora\xe2\x80\x99s\nmotion for summary judgment on Bayer\xe2\x80\x99s unfair competition claim on the ground that Bayer had\nwaited too long to file suit. See Belmora, LLC v. Bayer Consumer Care AG, 338 F. Supp. 3d 477, 484 (E.D.\nVa. 2018) (\xe2\x80\x9cWhether a three or four-year statute of limitations is applied in this case is immaterial.\nThat is because Bayer\'s filing of this action misses the statute of limitations by almost a decade.\xe2\x80\x9d). In\nMay, 2021, the Fourth Circuit reversed the district court\xe2\x80\x99s grant of summary judgment to Belmora on\nBayer\xe2\x80\x99s unfair competition claim, holding that the district court should have applied laches rather than\nany state-law statute of limitations. See Belmora LLC v. Bayer Consumer Care AG, 987 F.3d 284 (4th Cir.\n2021). The Fourth Circuit once again remanded the case back to the district court. Id.\n\n348\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nII.\n\nTrademark Infringement\n\nIn this Part, we consider the infringement of trademark rights under certain sections of the\nLanham Act:\n\xe2\x80\xa2\n\n\xc2\xa7 32, 15 U.S.C. \xc2\xa7 1114 (likelihood of confusion with respect to registered marks)\n\n\xe2\x80\xa2\n\n\xc2\xa7 43(a), 15 U.S.C. \xc2\xa7 1125(a) (likelihood of confusion with respect to registered or\nunregistered marks)\n\n\xe2\x80\xa2\n\n\xc2\xa7 43(c), 15 U.S.C. \xc2\xa7 1125(c) (likelihood of dilution with respect to registered or unregistered\nmarks)\n\n\xe2\x80\xa2\n\n\xc2\xa7 43(d), 15 U.S.C. \xc2\xa7 1125(d) (\xe2\x80\x9ccybersquatting\xe2\x80\x9d of registered or unregistered marks)\n\nThe test for likelihood of confusion under \xc2\xa7 32 is now essentially the same as the test for\nlikelihood of confusion under \xc2\xa7 43(a), and courts often cite to case law under one section\ninterchangeably with case law under the other. When owners of registered marks plead likelihood of\nconfusion, they typically do so under both \xc2\xa7 32 and \xc2\xa7 43(a) in the event that some defect is discovered\nin their registration. Such plaintiffs may also plead under both sections in order to avail themselves of\nthe slightly broader language of \xc2\xa7 43(a), though, again, courts have come to treat \xc2\xa7 32 and \xc2\xa7 43(a) as\nessentially interchangeable.\nCourts have set forth the elements of a trademark infringement claim in a variety of ways. For\nexample, with respect to a claim based on a likelihood of confusion under either or both of \xc2\xa7 32 and\n\xc2\xa7 43(a), courts have stated:\n\xe2\x80\xa2\n\n\xe2\x80\x9c[T]o succeed in a Lanham Act suit for trademark infringement, a plaintiff has two obstacles\nto overcome: the plaintiff must prove that its mark is entitled to protection and, even more\nimportant, that the defendant\xe2\x80\x99s use of its own mark will likely cause confusion with plaintiff\xe2\x80\x99s\nmark.\xe2\x80\x9d Gruner + Jahr USA Publ\xe2\x80\x99g v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir. 1993).\n\n\xe2\x80\xa2\n\n\xe2\x80\x9cTo prevail on a claim of trademark infringement under the Lanham Act, 15 U.S.C. \xc2\xa7 1114, a\nparty must prove: (1) that it has a protectible ownership interest in the mark; and (2) that the\ndefendant\xe2\x80\x99s use of the mark is likely to cause consumer confusion.\xe2\x80\x9d Network Automation, Inc.\nv. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011) (citations omitted).\n\n\xe2\x80\xa2\n\n\xe2\x80\x9cTo establish trademark infringement under the Lanham Act, a plaintiff must prove: (1) that it\nowns a valid mark; (2) that the defendant used the mark \xe2\x80\x98in commerce\xe2\x80\x99 and without plaintiff\xe2\x80\x99s\nauthorization; (3) that the defendant used the mark (or an imitation of it) \xe2\x80\x98in connection with\nthe sale, offering for sale, distribution, or advertising\xe2\x80\x99 of goods or services; and (4) that the\ndefendant\xe2\x80\x99s use of the mark is likely to confuse consumers.\xe2\x80\x9d Rosetta Stone Ltd. v. Google, Inc.,\n676 F.3d 144, 152 (4th Cir. 2012) (citations omitted).\n\n\xe2\x80\xa2\n\n\xe2\x80\x9cBoth infringement and false designation of origin have five elements. To prevail under either\ncause of action, the trademark holder must prove: (1) that it possesses a mark; (2) that the\n[opposing party] used the mark; (3) that the [opposing party\xe2\x80\x99s] use of the mark occurred \xe2\x80\x98in\ncommerce\xe2\x80\x99; (4) that the [opposing party] used the mark \xe2\x80\x98in connection with the sale, offering\nfor sale, distribution, or advertising\xe2\x80\x99 of goods or services; and (5) that the [opposing party]\nused the mark in a manner likely to confuse consumers.\xe2\x80\x9d Lamparello v. Falwell, 420 F.3d 309,\n313 (4th Cir. 2005) (citations omitted).\n\nThough the enumerations vary in their level of detail, these statements of the elements of a likelihood\nof confusion claim are all essentially the same. The plaintiff must prove that (1) it possesses exclusive\nrights in a mark and (2) the defendant has infringed those exclusive rights. Our focus in Part I was on\nthe first of these two basic elements\xe2\x80\x94whether there is a property right. Our focus in this Part is on the\nsecond of these elements\xe2\x80\x94whether that right has been infringed.\n349\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nWe begin in Part II.A by reviewing the requirement that, in order to be liable for trademark\ninfringement, a defendant must \xe2\x80\x9cuse in commerce\xe2\x80\x9d the plaintiff\xe2\x80\x99s mark \xe2\x80\x9cin connection with the sale . . .\nof any goods or services.\xe2\x80\x9d We then turn in Part II.B to forms of infringement that are based on the\nlikelihood of consumer confusion as to the source or sponsorship of the defendant\xe2\x80\x99s goods. In Part II.C,\nwe consider forms of infringement that are not based on consumer confusion, most notably trademark\ndilution. In Part II.D, we turn to forms of relief for cybersquatting. Finally, in Part II.E, we review the\ndoctrine of secondary liability in trademark law.\nComments and Questions\n1. Do individual consumers or groups of consumers have standing to sue under the Lanham Act? In\nshort, no. Lanham Act \xc2\xa7 32(1), 15 U.S.C. \xc2\xa7 1114(1), which applies to registered marks, provides that an\ninfringing party \xe2\x80\x9cshall be liable in a civil action by the registrant for the remedies hereafter provided\xe2\x80\x9d\n(emphasis added). Lanham Act \xc2\xa7 43(a), 15 U.S.C. \xc2\xa7 1125(a), which applies to both registered and\nunregistered marks, provides that an infringing party \xe2\x80\x9cshall be liable in a civil action by any person who\nbelieves that he or she is or is likely to be damaged by such act\xe2\x80\x9d (emphasis added). Though broad, this\nlanguage has been construed to exclude consumers. See Lexmark Int\'l, Inc. v. Static Control Components,\nInc., 572 U.S. 118, 132 (2014) (\xe2\x80\x9cA consumer who is hoodwinked into purchasing a disappointing\nproduct may well have an injury-in-fact cognizable under Article III, but he cannot invoke the\nprotection of the Lanham Act\xe2\x80\x94a conclusion reached by every Circuit to consider the question . . . .\nEven a business misled by a supplier into purchasing an inferior product is, like consumers generally,\nnot under the Act\'s aegis.\xe2\x80\x9d). See also id. at 140 (\xe2\x80\x9cTo invoke the Lanham Act\'s cause of action for false\nadvertising, a plaintiff must plead (and ultimately prove) an injury to a commercial interest in sales or\nbusiness reputation proximately caused by the defendant\'s misrepresentations.\xe2\x80\x9d). Does this make\nsense as a matter of sound policy?\nA.\n\nThe Actionable Use Requirement\n\nIn Part I.C above, we addressed the requirement that a trademark owner \xe2\x80\x9cuse in commerce\xe2\x80\x9d the\nmark in order to establish rights in the mark. Here, we consider the \xe2\x80\x9cuse in commerce\xe2\x80\x9d requirement as\napplied not to owners, but to unauthorized users. We do so because of the statutory language, shown\nin italics, in Lanham Act \xc2\xa7 32 and \xc2\xa7 43(a):\nLanham Act \xc2\xa7 32, 15 U.S.C. \xc2\xa7 1114\n(1) Any person who shall, without the consent of the registrant (a) use in commerce any\nreproduction, counterfeit, copy, or colorable imitation of a registered mark in connection\nwith the sale, offering for sale, distribution, or advertising of any goods or services on or in\nconnection with which such use is likely to cause confusion, or to cause mistake, or to\ndeceive . . . shall be liable in a civil action by the registrant for the remedies hereinafter\nprovided.\nLanham Act \xc2\xa7 43(a), 15 U.S.C. \xc2\xa7 1125(a)\n(1) Any person who, on or in connection with any goods or services, or any container for\ngoods, uses in commerce any word, term, name, symbol, or device, or any combination\nthereof, or any false designation of origin, false or misleading description of fact, or false\nor misleading representation of fact, which--(A) is likely to cause confusion, or to cause\nmistake, or to deceive . . . shall be liable in a civil action by any person who believes that\nhe or she is or is likely to be damaged by such act.\n\n350\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nThus, for a defendant to be found liable, \xc2\xa7 32 requires a showing that the defendant made a \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d of the plaintiff\xe2\x80\x99s mark \xe2\x80\x9cin connection with the sale, offering for sale, distribution, or\nadvertising of any goods or services,\xe2\x80\x9d and \xc2\xa7 43(a) requires that the defendant \xe2\x80\x9cuse[] in commerce\xe2\x80\x9d the\nplaintiff\xe2\x80\x99s mark \xe2\x80\x9cin connection with any goods or services, or any container for goods.\xe2\x80\x9d (Lanham Act\n\xc2\xa7 43(c), addressing trademark dilution, similarly requires a showing that the defendant made a \xe2\x80\x9cuse of\na mark or trade name in commerce.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1125(c)(1). See Comment 2 at the conclusion of Part\nII.A.2 for a discussion of this language).\nCourts have analyzed the \xe2\x80\x9cuse in commerce\xe2\x80\x9d language differently from how they\xe2\x80\x99ve analyzed the\n\xe2\x80\x9cin connection with\xe2\x80\x9d language. We turn first to the question of defendant\xe2\x80\x99s \xe2\x80\x9cuse in commerce.\xe2\x80\x9d\n1.\n\nDefendant\xe2\x80\x99s \xe2\x80\x9cUse in Commerce\xe2\x80\x9d\n\nIt is clear enough that the various infringement sections of the Lanham Act all require a showing\nthat the defendant has made a \xe2\x80\x9cuse in commerce,\xe2\x80\x9d if only to satisfy the constitutional limitation on\nCongressional power, but what constitutes such a \xe2\x80\x9cuse in commerce\xe2\x80\x9d? As we discussed in Part I.C,\nLanham Act \xc2\xa7 45, 15 U.S.C. \xc2\xa7 1127, offers a definition of this phrase:\nThe term \xe2\x80\x9cuse in commerce\xe2\x80\x9d means the bona fide use of a mark in the ordinary course of\ntrade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark\nshall be deemed to be in use in commerce\xe2\x80\x94\n(1) on goods when-(A) it is placed in any manner on the goods or their containers or the displays\nassociated therewith or on the tags or labels affixed thereto, or if the nature of the\ngoods makes such placement impracticable, then on documents associated with the\ngoods or their sale, and\n(B)the goods are sold or transported in commerce, and\n(2) on services when it is used or displayed in the sale or advertising of services and the\nservices are rendered in commerce, or the services are rendered in more than one State\nor in the United States and a foreign country and the person rendering the services is\nengaged in commerce in connection with the services.\nThe obvious problem, however, is that this definition appears to describe the kind of \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d necessary to establish trademark rights rather than the kind of \xe2\x80\x9cuse in commerce\xe2\x80\x9d\nnecessary to infringe those rights. In the opinion below, Rescuecom Corp. v. Google Inc., 562 F.3d 123\n(2d Cir. 2009), the Second Circuit went to great lengths to arrive at this rather straightforward\nunderstanding of the \xc2\xa7 45 definition of \xe2\x80\x9cuse in commerce.\xe2\x80\x9d It felt the need thoroughly to consider the\nissue because in a previous opinion, 1\xe2\x80\x93800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir.\n2005), it had somehow failed to recognize that \xc2\xa7 45 was designed to address only the conduct of\ntrademark owners rather than that of trademark infringers. Rescuecom became one long, extended\neffort in trying to maintain appearances. In reading through Rescuecom, consider the following\nquestions:\n\xe2\x80\xa2\n\nWhat is the underlying policy concern that is animating this technical, even rather pedantic\ndebate about the meaning of \xe2\x80\x9cuse in commerce\xe2\x80\x9d?\n\n\xe2\x80\xa2\n\nHas the Second Circuit explicitly overruled its previous decision in 1-800 Contacts? What is\nthe status of Rescuecom\xe2\x80\x99s Appendix? What does it mean that, as the Rescuecom opinion\nexplains, \xe2\x80\x9c[t]he judges of the 1\xe2\x80\x93800 panel have read this Appendix and have authorized us to\nstate that they agree with it\xe2\x80\x9d?\n\n\xe2\x80\xa2\n\nIf a search engine user enters the word \xe2\x80\x9cApple\xe2\x80\x9d and receives advertisements for Android\nphones, has the search engine itself made a \xe2\x80\x9cuse in commerce\xe2\x80\x9d of Apple\xe2\x80\x99s mark? Asked\nperhaps another way, if a restaurant has given written instructions to its employees to\n351\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nrespond to a consumer\xe2\x80\x99s order for Pepsi with the statement \xe2\x80\x9cWe offer Coke\xe2\x80\x9d, has the\nrestaurant made a \xe2\x80\x9cuse in commerce\xe2\x80\x9d of the Pepsi mark that could be the basis for an\ninfringement cause of action?\nRescuecom Corp. v. Google Inc.\n562 F.3d 123 (2d Cir. 2009)\nLEVAL, Circuit Judge:\n[1] Appeal by Plaintiff Rescuecom Corp. from a judgment of the United States District Court for\nthe Northern District of New York (Mordue, Chief Judge) dismissing its action against Google, Inc.,\nunder Rule 12(b)(6) for failure to state a claim upon which relief may be granted. Rescuecom\xe2\x80\x99s\nComplaint alleges that Google is liable under \xc2\xa7\xc2\xa7 32 and 43 of the Lanham Act, 15 U.S.C. \xc2\xa7\xc2\xa7 1114 & 1125,\nfor infringement, false designation of origin, and dilution of Rescuecom\xe2\x80\x99s eponymous trademark. The\ndistrict court believed the dismissal of the action was compelled by our holding in 1\xe2\x80\x93800 Contacts, Inc.\nv. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005) (\xe2\x80\x9c1\xe2\x80\x93800\xe2\x80\x9d), because, according to the district court\xe2\x80\x99s\nunderstanding of that opinion, Rescuecom failed to allege that Google\xe2\x80\x99s use of its mark was a \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d within the meaning of \xc2\xa7 45 of the Lanham Act, 15 U.S.C. \xc2\xa7 1127. We believe this\nmisunderstood the holding of 1\xe2\x80\x93800. While we express no view as to whether Rescuecom can prove a\nLanham Act violation, an actionable claim is adequately alleged in its pleadings. Accordingly, we vacate\nthe judgment dismissing the action and remand for further proceedings.\nBACKGROUND\n[2] As this appeal follows the grant of a motion to dismiss, we must take as true the facts alleged\nin the Complaint and draw all reasonable inferences in favor of Rescuecom. Lentell v. Merrill Lynch &\nCo., Inc., 396 F.3d 161, 165 (2d Cir. 2005). Rescuecom is a national computer service franchising\ncompany that offers on-site computer services and sales. Rescuecom conducts a substantial amount of\nbusiness over the Internet and receives between 17,000 to 30,000 visitors to its website each month. It\nalso advertises over the Internet, using many web-based services, including those offered by Google.\nSince 1998, \xe2\x80\x9cRescuecom\xe2\x80\x9d has been a registered federal trademark, and there is no dispute as to its\nvalidity.\n[3] Google operates a popular Internet search engine, which users access by visiting\nwww.google.com. Using Google\xe2\x80\x99s website, a person searching for the website of a particular entity in\ntrade (or simply for information about it) can enter that entity\xe2\x80\x99s name or trademark into Google\xe2\x80\x99s\nsearch engine and launch a search. Google\xe2\x80\x99s proprietary system responds to such a search request in\ntwo ways. First, Google provides a list of links to websites, ordered in what Google deems to be of\ndescending relevance to the user\xe2\x80\x99s search terms based on its proprietary algorithms . . . .\n[4] The second way Google responds to a search request is by showing context-based advertising.\nWhen a searcher uses Google\xe2\x80\x99s search engine by submitting a search term, Google may place\nadvertisements on the user\xe2\x80\x99s screen. Google will do so if an advertiser, having determined that its ad is\nlikely to be of interest to a searcher who enters the particular term, has purchased from Google the\nplacement of its ad on the screen of the searcher who entered that search term. What Google places on\nthe searcher\xe2\x80\x99s screen is more than simply an advertisement. It is also a link to the advertiser\xe2\x80\x99s website,\nso that in response to such an ad, if the searcher clicks on the link, he will open the advertiser\xe2\x80\x99s\nwebsite, which offers not only additional information about the advertiser, but also perhaps the option\nto purchase the goods and services of the advertiser over the Internet. Google uses at least two\nprograms to offer such context-based links: AdWords and Keyword Suggestion Tool.\n[5] AdWords is Google\xe2\x80\x99s program through which advertisers purchase terms (or keywords).\nWhen entered as a search term, the keyword triggers the appearance of the advertiser\xe2\x80\x99s ad and link. An\n\n352\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nadvertiser\xe2\x80\x99s purchase of a particular term causes the advertiser\xe2\x80\x99s ad and link to be displayed on the\nuser\xe2\x80\x99s screen whenever a searcher launches a Google search based on the purchased search term.1\nAdvertisers pay Google based on the number of times Internet users \xe2\x80\x9cclick\xe2\x80\x9d on the advertisement, so as\nto link to the advertiser\xe2\x80\x99s website. For example, using Google\xe2\x80\x99s AdWords, Company Y, a company\nengaged in the business of furnace repair, can cause Google to display its advertisement and link\nwhenever a user of Google launches a search based on the search term, \xe2\x80\x9cfurnace repair.\xe2\x80\x9d Company Y\ncan also cause its ad and link to appear whenever a user searches for the term \xe2\x80\x9cCompany X,\xe2\x80\x9d a\ncompetitor of Company Y in the furnace repair business. Thus, whenever a searcher interested in\npurchasing furnace repair services from Company X launches a search of the term X (Company X\xe2\x80\x99s\ntrademark), an ad and link would appear on the searcher\xe2\x80\x99s screen, inviting the searcher to the furnace\nrepair services of X\xe2\x80\x99s competitor, Company Y. And if the searcher clicked on Company Y\xe2\x80\x99s link,\nCompany Y\xe2\x80\x99s website would open on the searcher\xe2\x80\x99s screen, and the searcher might be able to order or\npurchase Company Y\xe2\x80\x99s furnace repair services.\n[6] In addition to AdWords, Google also employs Keyword Suggestion Tool, a program that\nrecommends keywords to advertisers to be purchased. The program is designed to improve the\neffectiveness of advertising by helping advertisers identify keywords related to their area of\ncommerce, resulting in the placement of their ads before users who are likely to be responsive to it.\nThus, continuing the example given above, if Company Y employed Google\xe2\x80\x99s Keyword Suggestion Tool,\nthe Tool might suggest to Company Y that it purchase not only the term \xe2\x80\x9cfurnace repair\xe2\x80\x9d but also the\nterm \xe2\x80\x9cX,\xe2\x80\x9d its competitor\xe2\x80\x99s brand name and trademark, so that Y\xe2\x80\x99s ad would appear on the screen of a\nsearcher who searched Company X\xe2\x80\x99s trademark, seeking Company X\xe2\x80\x99s website.\n[7] Once an advertiser buys a particular keyword, Google links the keyword to that advertiser\xe2\x80\x99s\nadvertisement. The advertisements consist of a combination of content and a link to the advertiser\xe2\x80\x99s\nwebpage. Google displays these advertisements on the search result page either in the right margin or\nin a horizontal band immediately above the column of relevance-based search results. These\nadvertisements are generally associated with a label, which says \xe2\x80\x9csponsored link.\xe2\x80\x9d Rescuecom alleges,\nhowever, that a user might easily be misled to believe that the advertisements which appear on the\nscreen are in fact part of the relevance-based search result and that the appearance of a competitor\xe2\x80\x99s\nad and link in response to a searcher\xe2\x80\x99s search for Rescuecom is likely to cause trademark confusion as\nto affiliation, origin, sponsorship, or approval of service. This can occur, according to the Complaint,\nbecause Google fails to label the ads in a manner which would clearly identify them as purchased ads\nrather than search results. The Complaint alleges that when the sponsored links appear in a horizontal\nbar at the top of the search results, they may appear to the searcher to be the first, and therefore the\nmost relevant, entries responding to the search, as opposed to paid advertisements.\n[8] Google\xe2\x80\x99s objective in its AdWords and Keyword Suggestion Tool programs is to sell keywords\nto advertisers. Rescuecom alleges that Google makes 97% of its revenue from selling advertisements\nthrough its AdWords program. Google therefore has an economic incentive to increase the number of\nadvertisements and links that appear for every term entered into its search engine.\n[9] Many of Rescuecom\xe2\x80\x99s competitors advertise on the Internet. Through its Keyword Suggestion\nTool, Google has recommended the Rescuecom trademark to Rescuecom\xe2\x80\x99s competitors as a search\nterm to be purchased. Rescuecom\xe2\x80\x99s competitors, some responding to Google\xe2\x80\x99s recommendation, have\npurchased Rescuecom\xe2\x80\x99s trademark as a keyword in Google\xe2\x80\x99s AdWords program, so that whenever a\nuser launches a search for the term \xe2\x80\x9cRescuecom,\xe2\x80\x9d seeking to be connected to Rescuecom\xe2\x80\x99s website, the\ncompetitors\xe2\x80\x99 advertisement and link will appear on the searcher\xe2\x80\x99s screen. This practice allegedly\nAlthough we generally refer to a single advertiser, there is no limit on the number of advertisers\nwho can purchase a particular keyword to trigger the appearance of their ads.\n1\n\n353\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nallows Rescuecom\xe2\x80\x99s competitors to deceive and divert users searching for Rescuecom\xe2\x80\x99s website.\nAccording to Rescuecom\xe2\x80\x99s allegations, when a Google user launches a search for the term \xe2\x80\x9cRescuecom\xe2\x80\x9d\nbecause the searcher wishes to purchase Rescuecom\xe2\x80\x99s services, links to websites of its competitors will\nappear on the searcher\xe2\x80\x99s screen in a manner likely to cause the searcher to believe mistakenly that a\ncompetitor\xe2\x80\x99s advertisement (and website link) is sponsored by, endorsed by, approved by, or affiliated\nwith Rescuecom.\n[10] The District Court granted Google\xe2\x80\x99s 12(b)(6) motion and dismissed Rescuecom\xe2\x80\x99s claims. The\ncourt believed that our 1\xe2\x80\x93800 decision compels the conclusion that Google\xe2\x80\x99s allegedly infringing\nactivity does not involve use of Rescuecom\xe2\x80\x99s mark in commerce, which is an essential element of an\naction under the Lanham Act. The district court explained its decision saying that even if Google\nemployed Rescuecom\xe2\x80\x99s mark in a manner likely to cause confusion or deceive searchers into believing\nthat competitors are affiliated with Rescuecom and its mark, so that they believe the services of\nRescuecom\xe2\x80\x99s competitors are those of Rescuecom, Google\xe2\x80\x99s actions are not a \xe2\x80\x9cuse in commerce\xe2\x80\x9d under\nthe Lanham Act because the competitor\xe2\x80\x99s advertisements triggered by Google\xe2\x80\x99s programs did not\nexhibit Rescuecom\xe2\x80\x99s trademark. The court rejected the argument that Google \xe2\x80\x9cused\xe2\x80\x9d Rescuecom\xe2\x80\x99s mark\nin recommending and selling it as a keyword to trigger competitor\xe2\x80\x99s advertisements because the court\nread 1\xe2\x80\x93800 to compel the conclusion that this was an internal use and therefore cannot be a \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d under the Lanham Act.\nDISCUSSION\n[11] \xe2\x80\x9cThis Court reviews de novo a district court\xe2\x80\x99s grant of a motion to dismiss pursuant to\nFederal Rules of Civil Procedure 12(b)(6).\xe2\x80\x9d PaineWebber Inc. v. Bybyk, 81 F.3d 1193, 1197 (2d Cir.\n1996). When reviewing a motion to dismiss, a court must \xe2\x80\x9caccept as true all of the factual allegations\nset out in plaintiff\xe2\x80\x99s complaint, draw inferences from those allegations in the light most favorable to\nplaintiff, and construe the complaint liberally.\xe2\x80\x9d Gregory v. Daly, 243 F.3d 687, 691 (2d Cir. 2001)\n(citations omitted).\nI. Google\xe2\x80\x99s Use of Rescuecom\xe2\x80\x99s Mark Was a \xe2\x80\x9cUse in Commerce\xe2\x80\x9d\n[12] Our court ruled in 1\xe2\x80\x93800 that a complaint fails to state a claim under the Lanham Act unless\nit alleges that the defendant has made \xe2\x80\x9cuse in commerce\xe2\x80\x9d of the plaintiff\xe2\x80\x99s trademark as the term \xe2\x80\x9cuse\nin commerce\xe2\x80\x9d is defined in 15 U.S.C. \xc2\xa7 1127. The district court believed that this case was on all fours\nwith 1\xe2\x80\x93800, and that its dismissal was required for the same reasons as given in 1\xe2\x80\x93800. We believe the\ncases are materially different. The allegations of Rescuecom\xe2\x80\x99s complaint adequately plead a use in\ncommerce.\n[13] In 1\xe2\x80\x93800, the plaintiff alleged that the defendant infringed the plaintiff\xe2\x80\x99s trademark through\nits proprietary software, which the defendant freely distributed to computer users who would\ndownload and install the program on their computer. The program provided contextually relevant\nadvertising to the user by generating pop-up advertisements to the user depending on the website or\nsearch term the user entered in his browser. Id. at 404\xe2\x80\x9305. For example, if a user typed \xe2\x80\x9ceye care\xe2\x80\x9d into\nhis browser, the defendant\xe2\x80\x99s program would randomly display a pop-up advertisement of a company\nengaged in the field of eye care. Similarly, if the searcher launched a search for a particular company\nengaged in eye care, the defendant\xe2\x80\x99s program would display the pop-up ad of a company associated\nwith eye care. See id. at 412. The pop-up ad appeared in a separate browser window from the website\nthe user accessed, and the defendant\xe2\x80\x99s brand was displayed in the window frame surrounding the ad,\nso that there was no confusion as to the nature of the pop-up as an advertisement, nor as to the fact\nthat the defendant, not the trademark owner, was responsible for displaying the ad, in response to the\nparticular term searched. Id. at 405.\n[14] Sections 32 and 43 of the Act, which we also refer to by their codified designations, 15 U.S.C.\n\xc2\xa7\xc2\xa7 1114 & 1125, inter alia, impose liability for unpermitted \xe2\x80\x9cuse in commerce\xe2\x80\x9d of another\xe2\x80\x99s mark which\nis \xe2\x80\x9clikely to cause confusion, or to cause mistake, or to deceive,\xe2\x80\x9d \xc2\xa7 1114, \xe2\x80\x9cas to the affiliation . . . or as to\n354\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe origin, sponsorship or approval of his or her goods [or] services . . . by another person.\xe2\x80\x9d\n\xc2\xa7 1125(a)(1)(A). The 1\xe2\x80\x93800 opinion looked to the definition of the term \xe2\x80\x9cuse in commerce\xe2\x80\x9d provided in\n\xc2\xa7 45 of the Act, 15 U.S.C. \xc2\xa7 1127. That definition provides in part that \xe2\x80\x9ca mark shall be deemed to be in\nuse in commerce . . . (2) on services when it is used or displayed in the sale or advertising of services\nand the services are rendered in commerce.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127.2 Our court found that the plaintiff failed\nto show that the defendant made a \xe2\x80\x9cuse in commerce\xe2\x80\x9d of the plaintiff\xe2\x80\x99s mark, within that definition.\n[15] At the outset, we note two significant aspects of our holding in 1\xe2\x80\x93800, which distinguish it\nfrom the present case. A key element of our court\xe2\x80\x99s decision in 1\xe2\x80\x93800 was that under the plaintiff\xe2\x80\x99s\nallegations, the defendant did not use, reproduce, or display the plaintiff\xe2\x80\x99s mark at all. The search term\nthat was alleged to trigger the pop-up ad was the plaintiff\xe2\x80\x99s website address. 1\xe2\x80\x93800 noted,\nnotwithstanding the similarities between the website address and the mark, that the website address\nwas not used or claimed by the plaintiff as a trademark. Thus, the transactions alleged to be infringing\nwere not transactions involving use of the plaintiff\xe2\x80\x99s trademark. Id. at 408\xe2\x80\x9309.3 1\xe2\x80\x93800 suggested in\ndictum that is highly relevant to our case that had the defendant used the plaintiff\xe2\x80\x99s trademark as the\ntrigger to pop-up an advertisement, such conduct might, depending on other elements, have been\nactionable. 414 F.3d at 409 & n. 11.\n[16] Second, as an alternate basis for its decision, 1\xe2\x80\x93800 explained why the defendant\xe2\x80\x99s program,\nwhich might randomly trigger pop-up advertisements upon a searcher\xe2\x80\x99s input of the plaintiff\xe2\x80\x99s website\naddress, did not constitute a \xe2\x80\x9cuse in commerce,\xe2\x80\x9d as defined in \xc2\xa7 1127. Id. at 408\xe2\x80\x9309. In explaining why\nthe plaintiff\xe2\x80\x99s mark was not \xe2\x80\x9cused or displayed in the sale or advertising of services,\xe2\x80\x9d 1\xe2\x80\x93800 pointed out\nthat, under the defendant\xe2\x80\x99s program, advertisers could not request or purchase keywords to trigger\ntheir ads. Id. at 409, 412. Even if an advertiser wanted to display its advertisement to a searcher using\nthe plaintiff\xe2\x80\x99s trademark as a search term, the defendant\xe2\x80\x99s program did not offer this possibility. In fact,\nthe defendant \xe2\x80\x9cdid not disclose the proprietary contents of [its] directory to its advertising clients . . . .\xe2\x80\x9d\nId. at 409. In addition to not selling trademarks of others to its customers to trigger these ads, the\ndefendant did not \xe2\x80\x9cotherwise manipulate which category-related advertisement will pop up in\nresponse to any particular terms on the internal directory.\xe2\x80\x9d Id. at 411. The display of a particular\nadvertisement was controlled by the category associated with the website or keyword, rather than the\nwebsite or keyword itself. The defendant\xe2\x80\x99s program relied upon categorical associations such as \xe2\x80\x9ceye\ncare\xe2\x80\x9d to select a pop-up ad randomly from a predefined list of ads appropriate to that category. To the\nextent that an advertisement for a competitor of the plaintiff was displayed when a user opened the\nplaintiff\xe2\x80\x99s website, the trigger to display the ad was not based on the defendant\xe2\x80\x99s sale or\nrecommendation of a particular trademark.\n[17] The present case contrasts starkly with those important aspects of the 1\xe2\x80\x93800 decision. First,\nin contrast to 1\xe2\x80\x93800, where we emphasized that the defendant made no use whatsoever of the\nThe Appendix to this opinion discusses the applicability of \xc2\xa7 1127\xe2\x80\x99s definition of \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d to sections of the Lanham Act proscribing infringement.\n2\n\n3 We did not imply in 1\xe2\x80\x93800 that a website can never be a trademark. In fact, the opposite is true.\nSee Trademark Manual of Examining Procedures \xc2\xa7 1209.03(m) (5th ed. 2007) (\xe2\x80\x9cA mark comprised of\nan Internet domain name is registrable as a trademark or service mark only if it functions as an\nidentifier of the source of goods or services.\xe2\x80\x9d); see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,\n768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) (Section 43(a) of the Lanham Act protects unregistered\ntrademarks as long as the mark could qualify for registration under the Lanham Act.); Thompson Med.\nCo., Inc. v. Pfizer Inc., 753 F.2d 208, 215\xe2\x80\x93216 (2d Cir. 1985) (same). The question whether the plaintiff\xe2\x80\x99s\nwebsite address was an unregistered trademark was never properly before the 1\xe2\x80\x93800 court because\nthe plaintiff did not claim that it used its website address as a trademark.\n\n355\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nplaintiff\xe2\x80\x99s trademark, here what Google is recommending and selling to its advertisers is Rescuecom\xe2\x80\x99s\ntrademark. Second, in contrast with the facts of 1\xe2\x80\x93800 where the defendant did not \xe2\x80\x9cuse or display,\xe2\x80\x9d\nmuch less sell, trademarks as search terms to its advertisers, here Google displays, offers, and sells\nRescuecom\xe2\x80\x99s mark to Google\xe2\x80\x99s advertising customers when selling its advertising services. In addition,\nGoogle encourages the purchase of Rescuecom\xe2\x80\x99s mark through its Keyword Suggestion Tool. Google\xe2\x80\x99s\nutilization of Rescuecom\xe2\x80\x99s mark fits literally within the terms specified by 15 U.S.C. \xc2\xa7 1127. According\nto the Complaint, Google uses and sells Rescuecom\xe2\x80\x99s mark \xe2\x80\x9cin the sale . . . of [Google\xe2\x80\x99s advertising]\nservices . . . rendered in commerce.\xe2\x80\x9d \xc2\xa7 1127.\n[18] Google, supported by amici, argues that 1\xe2\x80\x93800 suggests that the inclusion of a trademark in\nan internal computer directory cannot constitute trademark use. Several district court decisions in this\nCircuit appear to have reached this conclusion. See e.g., S & L Vitamins, Inc. v. Australian Gold, Inc., 521\nF.Supp.2d 188, 199\xe2\x80\x93202 (E.D.N.Y.2007) (holding that use of a trademark in metadata did not constitute\ntrademark use within the meaning of the Lanham Act because the use \xe2\x80\x9cis strictly internal and not\ncommunicated to the public\xe2\x80\x9d); Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 425 F.Supp.2d 402,\n415 (S.D.N.Y.2006) (holding that the internal use of a keyword to trigger advertisements did not\nqualify as trademark use). This over-reads the 1\xe2\x80\x93800 decision. First, regardless of whether Google\xe2\x80\x99s\nuse of Rescuecom\xe2\x80\x99s mark in its internal search algorithm could constitute an actionable trademark use,\nGoogle\xe2\x80\x99s recommendation and sale of Rescuecom\xe2\x80\x99s mark to its advertising customers are not internal\nuses. Furthermore, 1\xe2\x80\x93800 did not imply that use of a trademark in a software program\xe2\x80\x99s internal\ndirectory precludes a finding of trademark use. Rather, influenced by the fact that the defendant was\nnot using the plaintiff\xe2\x80\x99s trademark at all, much less using it as the basis of a commercial transaction, the\ncourt asserted that the particular use before it did not constitute a use in commerce. See 1\xe2\x80\x93800, 414\nF.3d at 409\xe2\x80\x9312. We did not imply in 1\xe2\x80\x93800 that an alleged infringer\xe2\x80\x99s use of a trademark in an internal\nsoftware program insulates the alleged infringer from a charge of infringement, no matter how likely\nthe use is to cause confusion in the marketplace. If we were to adopt Google and its amici\xe2\x80\x99s argument,\nthe operators of search engines would be free to use trademarks in ways designed to deceive and\ncause consumer confusion.4 This is surely neither within the intention nor the letter of the Lanham Act.\n[19] Google and its amici contend further that its use of the Rescuecom trademark is no different\nfrom that of a retail vendor who uses \xe2\x80\x9cproduct placement\xe2\x80\x9d to allow one vender to benefit from a\ncompetitors\xe2\x80\x99 name recognition. An example of product placement occurs when a store-brand generic\nproduct is placed next to a trademarked product to induce a customer who specifically sought out the\ntrademarked product to consider the typically less expensive, generic brand as an alternative. See 1\xe2\x80\x93\n800, 414 F.3d at 411. Google\xe2\x80\x99s argument misses the point. From the fact that proper, non-deceptive\nproduct placement does not result in liability under the Lanham Act, it does not follow that the label\n\xe2\x80\x9cproduct placement\xe2\x80\x9d is a magic shield against liability, so that even a deceptive plan of product\nplacement designed to confuse consumers would similarly escape liability. It is not by reason of\nabsence of a use of a mark in commerce that benign product placement escapes liability; it escapes\nliability because it is a benign practice which does not cause a likelihood of consumer confusion. In\ncontrast, if a retail seller were to be paid by an off-brand purveyor to arrange product display and\ndelivery in such a way that customers seeking to purchase a famous brand would receive the off-brand,\nFor example, instead of having a separate \xe2\x80\x9csponsored links\xe2\x80\x9d or paid advertisement section,\nsearch engines could allow advertisers to pay to appear at the top of the \xe2\x80\x9crelevance\xe2\x80\x9d list based on a\nuser entering a competitor\xe2\x80\x99s trademark\xe2\x80\x94a functionality that would be highly likely to cause consumer\nconfusion. Alternatively, sellers of products or services could pay to have the operators of search\nengines automatically divert users to their website when the users enter a competitor\xe2\x80\x99s trademark as a\nsearch term. Such conduct is surely not beyond judicial review merely because it is engineered through\nthe internal workings of a computer program.\n4\n\n356\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nbelieving they had gotten the brand they were seeking, we see no reason to believe the practice would\nescape liability merely because it could claim the mantle of \xe2\x80\x9cproduct placement.\xe2\x80\x9d The practices\nattributed to Google by the Complaint, which at this stage we must accept as true, are significantly\ndifferent from benign product placement that does not violate the Act.\n[20] Unlike the practices discussed in 1\xe2\x80\x93800, the practices here attributed to Google by\nRescuecom\xe2\x80\x99s complaint are that Google has made use in commerce of Rescuecom\xe2\x80\x99s mark. Needless to\nsay, a defendant must do more than use another\xe2\x80\x99s mark in commerce to violate the Lanham Act. The\ngist of a Lanham Act violation is an unauthorized use, which \xe2\x80\x9cis likely to cause confusion, or to cause\nmistake, or to deceive as to the affiliation, . . . or as to the origin, sponsorship, or approval of . . . goods\n[or] services.\xe2\x80\x9d See 15 U.S.C. \xc2\xa7 1125(a); Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1508\xe2\x80\x9309 (2d\nCir. 1997). We have no idea whether Rescuecom can prove that Google\xe2\x80\x99s use of Rescuecom\xe2\x80\x99s\ntrademark in its AdWords program causes likelihood of confusion or mistake. Rescuecom has alleged\nthat it does, in that would-be purchasers (or explorers) of its services who search for its website on\nGoogle are misleadingly directed to the ads and websites of its competitors in a manner which leads\nthem to believe mistakenly that these ads or websites are sponsored by, or affiliated with Rescuecom.\nThis is particularly so, Rescuecom alleges, when the advertiser\xe2\x80\x99s link appears in a horizontal band at\nthe top of the list of search results in a manner which makes it appear to be the most relevant search\nresult and not an advertisement. What Rescuecom alleges is that by the manner of Google\xe2\x80\x99s display of\nsponsored links of competing brands in response to a search for Rescuecom\xe2\x80\x99s brand name (which fails\nadequately to identify the sponsored link as an advertisement, rather than a relevant search result),\nGoogle creates a likelihood of consumer confusion as to trademarks. If the searcher sees a different\nbrand name as the top entry in response to the search for \xe2\x80\x9cRescuecom,\xe2\x80\x9d the searcher is likely to believe\nmistakenly that the different name which appears is affiliated with the brand name sought in the\nsearch and will not suspect, because the fact is not adequately signaled by Google\xe2\x80\x99s presentation, that\nthis is not the most relevant response to the search. Whether Google\xe2\x80\x99s actual practice is in fact benign\nor confusing is not for us to judge at this time. We consider at the 12(b)(6) stage only what is alleged in\nthe Complaint.\n[21] We conclude that the district court was mistaken in believing that our precedent in 1\xe2\x80\x93800\nrequires dismissal.\nCONCLUSION\n[22] The judgment of the district court is vacated and the case is remanded for further\nproceedings.\nAPPENDIX\nOn the Meaning of \xe2\x80\x9cUse in Commerce\xe2\x80\x9d in Sections 32 and 43 of the Lanham Act5\n[23] In 1\xe2\x80\x93800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005) (\xe2\x80\x9c1\xe2\x80\x93800\xe2\x80\x9d), our court\nfollowed the reasoning of two district court opinions from other circuits, U\xe2\x80\x93Haul Int\xe2\x80\x99l, Inc. v.\nWhenU.com, Inc., 279 F.Supp.2d 723 (E.D.Va.2003) and Wells Fargo & Co., v. WhenU.com, Inc., 293\nF.Supp.2d 734 (E.D.Mich.2003), which dismissed suits on virtually identical claims against the same\ndefendant. Those two district courts ruled that the defendant\xe2\x80\x99s conduct was not actionable under \xc2\xa7\xc2\xa7 32\n& 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7\xc2\xa7 1114 & 1125(a), even assuming that conduct caused likelihood\nof trademark confusion, because the defendant had not made a \xe2\x80\x9cuse in commerce\xe2\x80\x9d of the plaintiff\xe2\x80\x99s\nmark, within the definition of that phrase set forth in \xc2\xa7 45 of the Lanham Act, 15 U.S.C. \xc2\xa7 1127. In\nquoting definitional language of \xc2\xa7 1127 that is crucial to their holdings, however, U\xe2\x80\x93Haul and Wells\nIn this discussion, all iterations of the phrase \xe2\x80\x9cuse in commerce\xe2\x80\x9d whether in the form of a noun\n(a \xe2\x80\x9cuse in commerce\xe2\x80\x9d), a verb (\xe2\x80\x9cto use in commerce\xe2\x80\x9d), or adjective (\xe2\x80\x9cused in commerce\xe2\x80\x9d), are intended\nwithout distinction as instances of that phrase.\n5\n\n357\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nFargo overlooked and omitted portions of the statutory text which make clear that the definition\nprovided in \xc2\xa7 1127 was not intended by Congress to apply in the manner that the decisions assumed.\n[24] Our court\xe2\x80\x99s ruling in 1\xe2\x80\x93800 that the Plaintiff had failed to plead a viable claim under \xc2\xa7\xc2\xa7 1114\n& 1125(a) was justified by numerous good reasons and was undoubtedly the correct result. In addition\nto the questionable ground derived from the district court opinions, which had overlooked key\nstatutory text, our court\xe2\x80\x99s opinion cited other highly persuasive reasons for dismissing the action\xe2\x80\x94\namong them that the plaintiff did not claim a trademark in the term that served as the basis for the\nclaim of infringement; nor did the defendant\xe2\x80\x99s actions cause any likelihood of confusion, as is crucial\nfor such a claim.\n[25] We proceed to explain how the district courts in U\xe2\x80\x93Haul and Wells Fargo adopted reasoning\nwhich overlooked crucial statutory text that was incompatible with their ultimate conclusion . . . .\n{Deleted here is the court\xe2\x80\x99s lengthy discussion of the history of the phrase \xe2\x80\x9cuse in commerce\xe2\x80\x9d in\nthe Lanham Act and, in particular, of the 1988 amendment to \xc2\xa7 1127\xe2\x80\x99s definition of \xe2\x80\x9cuse in\ncommerce\xe2\x80\x9d.}\nThe Interpretation of \xc2\xa7 1127\xe2\x80\x99s Definition of \xe2\x80\x9cUse in Commerce \xe2\x80\x9d with Respect to Alleged Infringers\n[26] In light of the preceding discussion, how should courts today interpret the definition of \xe2\x80\x9cuse\nin commerce\xe2\x80\x9d set forth in 15 U.S.C. \xc2\xa7 1127, with respect to acts of infringement prescribed by \xc2\xa7\xc2\xa7 1114\nand 1125(a)? The foregoing review of the evolution of the Act seems to us to make clear that Congress\ndid not intend that this definition apply to the sections of the Lanham Act which define infringing\nconduct. The definition was rather intended to apply to the sections which used the phrase in\nprescribing eligibility for registration and for the Act\xe2\x80\x99s protections. However, Congress does not enact\nintentions. It enacts statutes. And the process of enacting legislation is of such complexity that\nunderstandably the words of statutes do not always conform perfectly to the motivating intentions.\nThis can create for courts difficult problems of interpretation. Because pertinent amendments were\npassed in 1962 and in 1988, and because the 1988 amendment did not change the pre-existing parts of\nthe definition in \xc2\xa7 1127, but merely added a sentence, it seems useful to approach the question of the\ncurrent meaning in two steps. First, what did this definition mean between 1962 and 1988\xe2\x80\x94prior to\nthe 1988 amendment? Then, how was the meaning changed by the 1988 amendment?\n[27] Between 1962 and 1988, notwithstanding the likelihood shown by the legislative history that\nCongress intended the definition to apply only to registration and qualification for benefits and not to\ninfringement, a court addressing the issue nonetheless would probably have concluded that the section\napplied to alleged infringement, as well. Section 1127 states that its definitions apply \xe2\x80\x9cunless the\ncontrary is plainly apparent from the context.\xe2\x80\x9d One who considered the question at the time might well\nhave wondered why Congress would have provided this restrictive definition for acts of trademark\ninfringement with the consequence that deceptive and confusing uses of another\xe2\x80\x99s mark with respect\nto goods would escape liability if the conduct did not include the placement of the mark on goods or\ntheir containers, displays, or sale documents, and with respect to services if the conduct did not\ninclude the use or display of the mark in the sale or advertising of the services. It is easy to imagine\nperniciously confusing conduct involving another\xe2\x80\x99s mark which does not involve placement of the\nmark in the manner specified in the definition. Nonetheless, in spite of those doubts, one could not\nhave said it was \xe2\x80\x9cplainly apparent from the context\xe2\x80\x9d that those restrictions did not apply to sections\ndefining infringement. In all probability, therefore, a court construing the provision between 1962 and\n1988 would have concluded that in order to be actionable under \xc2\xa7\xc2\xa7 1114 or 1125(a) the allegedly\ninfringing conduct needed to include placement of the mark in the manner specified in the definition of\n\xe2\x80\x9cuse in commerce\xe2\x80\x9d in \xc2\xa7 1127.\n[28] The next question is how the meaning of the \xc2\xa7 1127 definition was changed by the 1988\namendment, which, as noted, left the preexisting language about placement of the mark unchanged,\nbut added a prior sentence requiring that a \xe2\x80\x9cuse in commerce\xe2\x80\x9d be \xe2\x80\x9ca bona fide use in the ordinary\n358\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ncourse of trade, and not made merely to reserve a right in a mark.\xe2\x80\x9d While it is \xe2\x80\x9cplainly apparent from\nthe context\xe2\x80\x9d that the new first sentence cannot reasonably apply to statutory sections defining\ninfringing conduct, the question remains whether the addition of this new sentence changed the\nmeaning of the second sentence of the definition without changing its words.\n[29] We see at least two possible answers to the question, neither of which is entirely satisfactory.\nOne interpretation would be that, by adding the new first sentence, Congress changed the meaning of\nthe second sentence of the definition to conform to the new first sentence, without altering the words.\nThe language of the definition, which, prior to the addition of the new first sentence, would have been\nconstrued to apply both to sections defining infringement, and to sections specifying eligibility for\nregistration, would change its meaning, despite the absence of any change in its words, so that the\nentire definition now no longer applied to the sections defining infringement. Change of meaning\nwithout change of words is obviously problematic.\n[30] The alternative solution would be to interpret the two sentences of the statutory definition\nas of different scope. The second sentence of the definition, which survived the 1988 amendment\nunchanged, would retain its prior meaning and continue to apply as before the amendment to sections\ndefining infringement, as well as to sections relating to a mark owner\xe2\x80\x99s eligibility for registration and\nfor enjoyment of the protections of the Act. The new first sentence, which plainly was not intended to\napply to infringements, would apply only to sections in the latter category\xe2\x80\x94those relating to an\nowner\xe2\x80\x99s eligibility to register its mark and enjoy the Act\xe2\x80\x99s protection. Under this interpretation, liability\nfor infringement under \xc2\xa7\xc2\xa7 1114 and 1125(a) would continue, as before 1988, to require a showing of\nthe infringer\xe2\x80\x99s placement of another\xe2\x80\x99s mark in the manner specified in the second sentence of the\n\xc2\xa7 1127 definition. It would not require a showing that the alleged infringer made \xe2\x80\x9cbona fide use of the\nmark in the ordinary course of trade, and not merely to reserve a right in the mark.\xe2\x80\x9d On the other hand,\neligibility of mark owners for registration and for the protections of the Act would depend on their\nshowing compliance with the requirements of both sentences of the definition.\n[31] We recognize that neither of the two available solutions is altogether satisfactory. Each has\nadvantages and disadvantages. At least for this Circuit, especially given our prior 1\xe2\x80\x93800 precedent,\nwhich applied the second sentence of the definition to infringement, the latter solution, according a\ndifferent scope of application to the two sentences of the definition, seems to be preferable.12\n[32] The judges of the 1\xe2\x80\x93800 panel have read this Appendix and have authorized us to state that\nthey agree with it. At the same time we note that the discussion in this Appendix does not affect the\nresult of this case. We assumed in the body of the opinion, in accordance with the holding of 1\xe2\x80\x93800,\nthat the requirements of the second sentence of the definition of \xe2\x80\x9cuse in commerce\xe2\x80\x9d in \xc2\xa7 1127 apply to\ninfringing conduct and found that such use in commerce was adequately pleaded. The discussion in\nthis Appendix is therefore dictum and not a binding opinion of the court. It would be helpful for\nCongress to study and clear up this ambiguity.\nQuestions and Comments\n1. The tamasha surrounding the question of the meaning of \xe2\x80\x9cuse in commerce\xe2\x80\x9d when applied to\nthe defendant\xe2\x80\x99s conduct, particularly in the search engine context, appears to have abated. In Network\nAutomation Inc. v. Advanced Systems Concepts Inc., 638 F.3d 1137 (9th Cir. 2011), the plaintiff sought a\ndeclaration of non-infringement for its purchase of search engine keywords, among them the\ndefendant\xe2\x80\x99s trademark, that triggered sponsored links advertising the plaintiff\xe2\x80\x99s services. The Ninth\nCircuit devoted one short paragraph to the issue of \xe2\x80\x9cuse in commerce\xe2\x80\x9d by the declaratory plaintiff. The\n\nWe express no view which of the alternative available solutions would seem preferable if our\nCircuit had not previously applied the second sentence to sections of the Act defining infringement.\n12\n\n359\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nNetwork Automation court simply held: \xe2\x80\x9cWe now agree with the Second Circuit that such use is a \xe2\x80\x9cuse\nin commerce\xe2\x80\x9d under the Lanham Act. See Rescuecom Corp. v. Google Inc., 562 F.3d 123, 127 (2d Cir.\n2009) (holding that Google\xe2\x80\x99s sale of trademarks as search engine keywords is a use in commerce).\xe2\x80\x9d Id.\nat 1145. However, lower court opinions still occasionally dredge up the argument that the defendant is\nnot making a use in commerce under Lanham Act \xc2\xa7 45. For example, in Naked Cowboy v. CBS, 844 F.\nSupp. 2d 510, 515 (S.D.N.Y. 2012), the court ignored Rescuecom and granted the defendant\xe2\x80\x99s motion to\ndismiss in part on the ground that the defendant\xe2\x80\x99s reference to Times Square\xe2\x80\x99s Naked Cowboy did not\nconstitute \xe2\x80\x9cuse in commerce\xe2\x80\x9d as defined in \xc2\xa7 45.\n2.\n\nDefendant\xe2\x80\x99s Use \xe2\x80\x9cin Connection with the Sale . . . of any Goods or Services\xe2\x80\x9d\n\nWe now turn to what has proven to be a far more significant threshold requirement for liability in\nU.S. trademark law, often called the \xe2\x80\x9ccommercial use\xe2\x80\x9d requirement. This is the requirement that to be\nfound liable the defendant must make a use of the plaintiff\xe2\x80\x99s mark \xe2\x80\x9cin connection with the sale,\ndistribution, or advertising of any goods or services\xe2\x80\x9d, Lanham Act \xc2\xa7 32(1)(a), 15 U.S.C. \xc2\xa7 1114(1)(a), or\n\xe2\x80\x9cin connection with any goods or services,\xe2\x80\x9d Lanham Act \xc2\xa7 43(a)(1), 15 U.S.C. \xc2\xa7 1125(a)(1). This\nrequirement can play an important role in infringement litigation because if the defendant can show\nthat it did not make a use \xe2\x80\x9cin connection with the sale\xe2\x80\x9d of goods or services, then the court can rule in\nfavor of the defendant on that basis alone without needing to address the potentially messy, factintensive issue of whether the defendant\xe2\x80\x99s conduct confuses consumers. This requirement can thus be\nespecially helpful (perhaps even at the motion to dismiss stage) for defendants who are engaging in\npolitical speech or expressive uses of others\xe2\x80\x99 trademarks but who are not selling goods or services.\nAs the following opinion explains, previous courts had expanded the reach of the \xe2\x80\x9cin connection\nwith the sale\xe2\x80\x9d requirement in order to enjoin the conduct of clearly bad faith internet defendants. For\nexample, in People for Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359 (4th Cir. 2001), the\ndefendant owned a wide variety of domain names, including many that resembled others\xe2\x80\x99 trademarks.\nHe registered peta.org and created a website entitled \xe2\x80\x9cPeople Eating Tasty Animals.\xe2\x80\x9d The organization\nPeople for the Ethical Treatment of Animals sued for trademark infringement. The defendant claimed\nno use of the mark \xe2\x80\x9cin connection with the sale\xe2\x80\x9d of goods or services because he sold no goods or\nservices on his website. The Fourth Circuit found such a connection because the defendant\xe2\x80\x99s use\ninterfered with internet users\xe2\x80\x99 efforts to reach PETA\xe2\x80\x99s website. Id. at 365. Furthermore, the defendant\xe2\x80\x99s\nwebsite linked to \xe2\x80\x9cmore than 30 commercial operations offering goods and services.\xe2\x80\x9d Id. at 366. See\nalso Planned Parenthood Federation of America, Inc. v. Bucci, No. 97 Civ. 0629, 1997 WL 133313\n(S.D.N.Y. 1997), aff\'d without opinion, 152 F.3d 920 (2d Cir. 1998) (reasoning similarly with respect to\ndefendant\xe2\x80\x99s domain name plannedparenthood.com); Jews For Jesus v. Brodsky, 993 F. Supp. 282, 46\nU.S.P.Q.2d 1652 (D.N.J. 1998), judgment aff\'d, 159 F.3d 1351 (3d Cir. 1998) (reasoning similarly with\nrespect to defendant\xe2\x80\x99s domain names jewsforjesus.org and jews-for-jesus.org).\nRadiance Foundation, Inc. v. National Association for the Advancement of Colored People, 786 F.3d\n316 (4th Cir. 2015), finally presented circumstances that forced a retreat from this previous case law\xe2\x80\x99s\noverly expansive reading of the \xe2\x80\x9cin connection with the sale\xe2\x80\x9d requirement.\nRadiance Foundation, Inc. v. National Association for the Advancement of Colored People\n786 F.3d 316 (4th Cir. 2015)\nWILKINSON, Circuit Judge:\n[1] The Radiance Foundation published an article online entitled \xe2\x80\x9cNAACP: National Association\nfor the Abortion of Colored People\xe2\x80\x9d that criticized the NAACP\xe2\x80\x99s stance on abortion. In response to a\ncease-and-desist letter from the NAACP, Radiance sought a declaratory judgment that it had not\ninfringed any NAACP trademarks. The NAACP then filed counterclaims alleging trademark\ninfringement and dilution.\n\n360\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[2] The Lanham Act protects against consumer confusion about the source or sponsorship of\ngoods or services. Persons may not misappropriate trademarks to the detriment of consumers or of\nthe marks themselves. However, the Act\xe2\x80\x99s reach is not unlimited. To find Lanham Act violations under\nthese facts risks a different form of infringement\xe2\x80\x94that of Radiance\xe2\x80\x99s expressive right to comment on\nsocial issues under the First Amendment. Courts have taken care to avoid Lanham Act interpretations\nthat gratuitously court grave constitutional concerns, and we shall do so here. We hold that Radiance is\nnot liable for trademark infringement or dilution of defendant\xe2\x80\x99s marks by tarnishment. We vacate the\ninjunction against Radiance entered by the district court and remand with instructions that\ndefendant\xe2\x80\x99s counterclaims likewise be dismissed.\nI.\n[3] The National Association for the Advancement of Colored People, better known by its acronym\n\xe2\x80\x9cNAACP,\xe2\x80\x9d is this country\xe2\x80\x99s \xe2\x80\x9coldest and largest civil rights organization,\xe2\x80\x9d Radiance Found., Inc. v. NAACP,\n25 F.Supp.3d 865, 872 (E.D.Va.2014), and one that holds a place of honor in our history. It champions\n\xe2\x80\x9cpolitical, educational, social, and economic equality of all citizens\xe2\x80\x9d while working to eliminate racial\nand other forms of prejudice within the United States. Id. Since its formation, it has pursued these\nobjectives not only through litigation but also through community outreach, informational services,\nand educational activities on issues of significance to the African American community. See id. The\nNAACP owns several trademarks, among them \xe2\x80\x9cNAACP\xe2\x80\x9d (federally registered) and \xe2\x80\x9cNational\nAssociation for the Advancement of Colored People.\xe2\x80\x9d\n[4] The Radiance Foundation, established by Ryan Bomberger, is also a non-profit organization\nfocused on educating and influencing the public about issues impacting the African American\ncommunity. Radiance addresses social issues from a Christian perspective. It uses as its platform two\nwebsites, TheRadianceFoundation.org and TooManyAborted.com, where it posts articles on topics\nsuch as race relations, diversity, fatherlessness, and the impact of abortion on the black community. Id.\nat 873. Radiance also runs a billboard campaign for TooManyAborted.com; individuals may sponsor\nthese billboards, licensing the artwork from Radiance. In addition to its billboard campaign, Radiance\nfunds its endeavors through donations from visitors to its websites, which are facilitated by \xe2\x80\x9cDonate\xe2\x80\x9d\nbuttons on the webpages that link to a PayPal site.\n[5] In January 2013, Bomberger authored an article criticizing the NAACP\xe2\x80\x99s annual Image Awards,\nentitled \xe2\x80\x9cNAACP: National Association for the Abortion of Colored People.\xe2\x80\x9d The piece lambasted the\nNAACP for sponsoring an awards event to recognize Hollywood figures and products that Radiance\nalleged defied Christian values and perpetuated racist stereotypes. The article then criticized other of\nthe NAACP\xe2\x80\x99s public stances and actions. It particularly targeted the NAACP\xe2\x80\x99s ties to Planned\nParenthood and its position on abortion. Though the NAACP has often claimed to be neutral on\nabortion, Radiance maintains that the NAACP\xe2\x80\x99s actions actually demonstrate support for the practice.\n[6] The article appeared on three websites: the two owned by Radiance\xe2\x80\x94\nTheRadianceFoundation.com and TooManyAborted.com\xe2\x80\x94and a third-party site called LifeNews.com.\nThough the text of the article was identical across the sites, the headlines and presentation varied\nslightly. On TheRadianceFoundation.com, directly below the headline was an image of a\nTooManyAborted billboard with the headline \xe2\x80\x9cNAACP: National Association for the Abortion of\nColored People\xe2\x80\x9d repeated next to it. The TooManyAborted.com site posted the headline \xe2\x80\x9cThe National\nAssociation for the Abortion of Colored People\xe2\x80\x9d with a graphic below of a red box with the words\n\xe2\x80\x9cCIVIL WRONG\xe2\x80\x9d followed by the modified NAACP name. Adjacent to the article on both pages was an\norange button with \xe2\x80\x9cCLICK HERE TO GIVE ONE\xe2\x80\x93TIME GIFT TO THE RADIANCE FOUNDATION\xe2\x80\x9d printed\naround the word \xe2\x80\x9cDONATE.\xe2\x80\x9d Finally on LifeNews.com, the third-party site, the NAACP\xe2\x80\x99s Scales of\nJustice appeared as a graphic underneath the headline.\n[7] The NAACP sent Radiance a cease-and-desist letter on January 28, 2013, after a Google alert\nfor the \xe2\x80\x9cNAACP\xe2\x80\x9d mark unearthed the LifeNews.com article. Radiance thereupon brought a declaratory\n361\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\naction seeking a ruling that it had not infringed or diluted any of the NAACP\xe2\x80\x99s marks and that its use of\nthe marks, or similar ones, was protected under the First Amendment. The NAACP counterclaimed for\ntrademark infringement under 15 U.S.C. \xc2\xa7\xc2\xa7 1114(1) and 1125(a) and Virginia state law, and trademark\ndilution under 15 U.S.C. \xc2\xa7 1125(c).\n[8] After a bench trial, the district court found for the NAACP on all counterclaims and denied\ndeclaratory relief to Radiance. It held that Radiance had used the marks \xe2\x80\x9cin connection with\xe2\x80\x9d goods\nand services and that its use of the \xe2\x80\x9cNAACP\xe2\x80\x9d and \xe2\x80\x9cNational Association for the Advancement of Colored\nPeople\xe2\x80\x9d marks, or a colorable imitation, created a likelihood of confusion among consumers. Radiance\nFound., 25 F.Supp.3d at 878\xe2\x80\x9379.\n....\n[9] The district court issued a permanent injunction \xe2\x80\x9cagainst any use [by Radiance] of \xe2\x80\x98National\nAssociation for the Abortion of Colored People\xe2\x80\x99 that creates a likelihood of confusion or dilution.\xe2\x80\x9d Id. at\n902. However, it declined to award any damages or attorney\xe2\x80\x99s fees, as it found the NAACP had failed to\nmake the case that they were warranted. Id. at 899\xe2\x80\x93901.\n[10] Radiance now appeals . . . .\nII.\n....\nB.\n[11] The first element of trademark infringement at issue is . . . whether Radiance\xe2\x80\x99s use of the\nNAACP\xe2\x80\x99s marks was \xe2\x80\x9cin connection with the sale, offering for sale, distribution, or advertising of any\ngoods or services.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1114(1)(a); see also id. \xc2\xa7 1125(a)(1) (requiring mark be used \xe2\x80\x9cin\nconnection with any goods or services\xe2\x80\x9d). The NAACP urges us to give this requirement a \xe2\x80\x9cbroad\nconstruction,\xe2\x80\x9d but that construction would expose to liability a wide array of noncommercial\nexpressive and charitable activities. Such an interpretation would push the Lanham Act close against a\nFirst Amendment wall, which is incompatible with the statute\xe2\x80\x99s purpose and stretches the text beyond\nits breaking point. We decline to reach so far.\n[12] At least five of our sister circuits have interpreted this element as protecting from liability all\nnoncommercial uses of marks. Farah v. Esquire Magazine, 736 F.3d 528, 541 (D.C. Cir. 2013); Utah\nLighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1052\xe2\x80\x9354 (10th Cir. 2008);\nBosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676\xe2\x80\x9377 (9th Cir. 2005); Taubman Co. v. Webfeats, 319\nF.3d 770, 774 (6th Cir. 2003); Porous Media Corp. v. Pall Corp., 173 F.3d 1109, 1120 (8th Cir. 1999). But\nsee United We Stand Am., Inc. v. United We Stand, Am. New York, Inc., 128 F.3d 86, 89\xe2\x80\x9390 (2d Cir. 1997).\nWe have not taken a position on whether \xe2\x80\x9cin connection with\xe2\x80\x9d goods or services indicates a\ncommercial use. Lamparello v. Falwell, 420 F.3d 309, 313-14 (4th Cir. 2005).\n[13] At the very least, reading the \xe2\x80\x9cin connection with\xe2\x80\x9d element to take in broad swaths of\nnoncommercial speech would be an \xe2\x80\x9coverextension\xe2\x80\x9d of the Lanham Act\xe2\x80\x99s reach that would \xe2\x80\x9cintrude on\nFirst Amendment values.\xe2\x80\x9d Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989); see also Taubman, 319\nF.3d at 774 (stating that the \xe2\x80\x9cLanham Act is constitutional because it only regulates commercial\nspeech\xe2\x80\x9d). It is true that neither of the Lanham Act\xe2\x80\x99s infringement provisions explicitly mentions\ncommerciality. Lamparello, 420 F.3d at 314. Still, this provision must mean something more than that\nthe mark is being used in commerce in the constitutional sense, because the infringement provisions in\n\xc2\xa7 1114(1)(a) and \xc2\xa7 1125(a)(1) include a separate Commerce Clause hook. Bosley, 403 F.3d at 677; Int\xe2\x80\x99l\nBancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359, 363\xe2\x80\x9364\n(4th Cir. 2003); United We Stand, 128 F.3d at 92\xe2\x80\x9393.\n[14] Although this case does not require us to hold that the commercial speech doctrine is in all\nrespects synonymous with the \xe2\x80\x9cin connection with\xe2\x80\x9d element, we think that doctrine provides much the\nbest guidance in applying the Act. The \xe2\x80\x9cin connection with\xe2\x80\x9d element in fact reads very much like a\n362\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ndescription of different types of commercial actions: \xe2\x80\x9cin connection with the sale, offering for sale,\ndistribution, or advertising of any goods or services.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1114(1)(a) (emphasis added).\n[15] Use of a protected mark as part of \xe2\x80\x9cspeech that does no more than propose a commercial\ntransaction\xe2\x80\x9d thus plainly falls within the Lanham Act\xe2\x80\x99s reach. United States v. United Foods, Inc., 533 U.S.\n405, 409 (2001). Courts also look to the factors outlined in Bolger v. Youngs Drug Products Corp., 463\nU.S. 60, 66\xe2\x80\x9367 (1983): whether the speech is an advertisement; whether the speech references a\nparticular good or service; and whether the speaker (the alleged infringer) has a demonstrated\neconomic motivation for his speech. Greater Balt. Ctr. for Pregnancy Concerns, Inc. v. Mayor of Balt., 721\nF.3d 264, 285 (4th Cir. 2013) (en banc). These are not exclusive factors, and the presence or absence of\nany of them does not necessitate a particular result.\n[16] In the context of trademark infringement, the Act\xe2\x80\x99s purpose . . . is to protect consumers from\nmisleading uses of marks by competitors. Thus if in the context of a sale, distribution, or\nadvertisement, a mark is used as a source identifier, we can confidently state that the use is \xe2\x80\x9cin\nconnection with\xe2\x80\x9d the activity. Even the Second Circuit, which rejected noncommerciality as an\ninvariable defense to Lanham Act liability, conceded that a \xe2\x80\x9ccrucial\xe2\x80\x9d factor is that the infringer \xe2\x80\x9cus[ed]\nthe Mark not as a commentary on its owner, but instead as a source identifier.\xe2\x80\x9d United We Stand, 128\nF.3d at 92. The danger of allowing the \xe2\x80\x9cin connection with\xe2\x80\x9d element to suck in speech on political and\nsocial issues through some strained or tangential association with a commercial or transactional\nactivity should thus be evident. Courts have uniformly understood that imposing liability under the\nLanham Act for such speech is rife with the First Amendment problems.\n[17] Finally, in order to determine whether the use is \xe2\x80\x9cin connection with\xe2\x80\x9d goods or services, we\nmust consider what qualifies as a good or service. The Lanham Act does not directly define either term,\nbut we can deduce their meaning from other defined terms and common usage. A \xe2\x80\x9cgood\xe2\x80\x9d is best\nunderstood as a valuable product, physical or otherwise, that the consumer may herself employ. See 15\nU.S.C. \xc2\xa7 1127 (noting that a mark may be used in commerce in relation to a good when placed on a\ngood, its container, its tag, or its associated documents); Black\xe2\x80\x99s Law Dictionary 809 (10th ed.2014)\n(defining \xe2\x80\x9cgoods\xe2\x80\x9d as \xe2\x80\x9c[t]hings that have value, whether tangible or not\xe2\x80\x9d). A service is a more\namorphous concept, \xe2\x80\x9cdenot[ing] an intangible commodity in the form of human effort, such as labor,\nskill, or advice.\xe2\x80\x9d Black\xe2\x80\x99s Law Dictionary 1576. Because Congress intended the Lanham Act to protect\nconsumers from confusion in the marketplace, it is probable that the Act is meant to cover a wide\nrange of products, whether \xe2\x80\x9cgoods\xe2\x80\x9d or \xe2\x80\x9cservices.\xe2\x80\x9d See Yates v. United States, \xe2\x80\x93\xe2\x80\x93\xe2\x80\x93 U.S. \xe2\x80\x93\xe2\x80\x93\xe2\x80\x93\xe2\x80\x93, 135 S.Ct.\n1074, 1082 (2015) (\xe2\x80\x9cOrdinarily, a word\xe2\x80\x99s usage accords with its dictionary definition. In law as in life,\nhowever, the same words, placed in different contexts, sometimes mean different things.\xe2\x80\x9d).\n[18] It is clear, therefore, that despite the need to reconcile the reach of the Lanham Act with First\nAmendment values, \xe2\x80\x9cgoods or services\xe2\x80\x9d remains a broad and potentially fuzzy concept. That is yet\nanother reason why the \xe2\x80\x9cin connection with\xe2\x80\x9d language must denote a real nexus with goods or services\nif the Act is not to fatally collide with First Amendment principles.\nIII.\n....\nA.\n[19] In finding that Radiance\xe2\x80\x99s use of the NAACP\xe2\x80\x99s marks was \xe2\x80\x9cin connection with\xe2\x80\x9d goods or\nservices, the district court erred in several respects. To begin, the court held that because the Radiance\narticle appeared in a Google search for the term \xe2\x80\x9cNAACP,\xe2\x80\x9d it diverted \xe2\x80\x9cInternet users to Radiance\xe2\x80\x99s\narticle as opposed to the NAACP\xe2\x80\x99s websites,\xe2\x80\x9d which thereby created a connection to the NAACP\xe2\x80\x99s goods\nand services. Radiance Found., Inc. v. NAACP, 25 F.Supp.3d 865, 884 (E.D.Va.2014). But typically the use\nof the mark has to be in connection with the infringer\xe2\x80\x99s goods or services, not the trademark holder\xe2\x80\x99s.\nSee Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1053\xe2\x80\x9354 (10th\nCir. 2008) (stating that \xe2\x80\x9cthe defendant in a trademark infringement . . . case must use the mark in\n363\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nconnection with the goods or services of a competing producer, not merely to make a comment on the\ntrademark owner\xe2\x80\x99s goods or services\xe2\x80\x9d).\n[20] If the general rule was that the use of the mark merely had to be in connection with the\ntrademark holder\xe2\x80\x99s goods or services, then even the most offhand mention of a trademark holder\xe2\x80\x99s\nmark could potentially satisfy the \xe2\x80\x9cin connection with\xe2\x80\x9d requirement. That interpretation would expand\nthe requirement to the point that it would equal or surpass the scope of the Lanham Act\xe2\x80\x99s \xe2\x80\x9cin\ncommerce\xe2\x80\x9d jurisdictional element. This would not only make the jurisdictional element superfluous,\nbut would hamper the ability of the \xe2\x80\x9cin connection with\xe2\x80\x9d requirement to hold Lanham Act infractions\nwithin First Amendment limits.\n[21] In People for the Ethical Treatment of Animals v. Doughney, we stated that an infringer \xe2\x80\x9cneed\nonly have prevented users from obtaining or using [the trademark holder\xe2\x80\x99s] goods or services, or need\nonly have connected the [infringing] website to other\xe2\x80\x99s goods or services\xe2\x80\x9d in order to satisfy the \xe2\x80\x9cin\nconnection with\xe2\x80\x9d requirement. 263 F.3d 359, 365 (4th Cir. 2001). But that rule applies specifically\nwhere the infringer has used the trademark holder\xe2\x80\x99s mark in a domain name. Id. at 365\xe2\x80\x9366. Neither of\nRadiance\xe2\x80\x99s websites used an NAACP mark in its domain name. Rather, Radiance used the NAACP\xe2\x80\x99s\nmarks only in the title and body of an article criticizing the NAACP. Nothing in PETA indicates that the\nuse of a mark in the course of disseminating such an idea is on that account sufficient to establish the\nrequisite relationship to goods or services. PETA simply does not govern the application of the \xe2\x80\x9cin\nconnection with\xe2\x80\x9d element in this case.\n[22] The district court proceeded to find that Radiance\xe2\x80\x99s use of the NAACP\xe2\x80\x99s marks was also in\nconnection with Radiance\xe2\x80\x99s goods or services. Radiance Found., 25 F.Supp.3d at 884\xe2\x80\x9385. But the court\xe2\x80\x99s\nanalysis failed to demonstrate a sufficient nexus between the specific use of the marks and the sale,\noffer for sale, distribution, or advertisement of any of the goods or services that the court invoked. The\ncourt first found that there was a sufficient nexus \xe2\x80\x9cwith Radiance\xe2\x80\x99s own information services\xe2\x80\x9d because\nRadiance \xe2\x80\x9cprovided information\xe2\x80\x9d on its website. Id. at 884. That ruling, however, neuters the First\nAmendment. The provision of mere \xe2\x80\x9cinformation services\xe2\x80\x9d without any commercial or transactional\ncomponent is speech\xe2\x80\x94nothing more.\n[23] In the alternative, the court held that Radiance\xe2\x80\x99s use of the NAACP\xe2\x80\x99s marks was in connection\nwith goods or services, because the use was \xe2\x80\x9cpart of social commentary or criticism for which they\nsolicit donations and sponsorship.\xe2\x80\x9d Id. The NAACP echoes the district court, arguing that the\ntransactional nature of the billboard campaign and Radiance\xe2\x80\x99s fundraising efforts place Radiance\xe2\x80\x99s use\nof the marks \xe2\x80\x9ccomfortably within\xe2\x80\x9d the reach of the \xe2\x80\x9cin connection with\xe2\x80\x9d element. Appellee\xe2\x80\x99s Br. at 24\xe2\x80\x93\n26.\n[24] We need not address this point with absolute pronouncements. Suffice it to say that the\nspecific use of the marks at issue here was too attenuated from the donation solicitation and the\nbillboard campaign to support Lanham Act liability. Although present on the article page, the Donate\nbutton was off to the side and did not itself use the NAACP\xe2\x80\x99s marks in any way. The billboard campaign\nwas displayed on a different page altogether. A visitor likely would not perceive the use of the NAACP\xe2\x80\x99s\nmarks in the article as being in connection with those transactional components of the website. It is\nimportant not to lose perspective. The article was just one piece of each Radiance website\xe2\x80\x99s content,\nwhich was comprised of articles, videos, and multimedia advocacy materials. That the protected marks\nappear somewhere in the content of a website that includes transactional components is not alone\nenough to satisfy the \xe2\x80\x9cin connection with\xe2\x80\x9d element. To say it was would come too close to an absolute\nrule that any social issues commentary with any transactional component in the neighborhood\nenhanced the commentator\xe2\x80\x99s risk of Lanham Act liability.\n[25] The Supreme Court has warned \xe2\x80\x9cthat charitable appeals for funds . . . involve a variety of\nspeech interests . . . that are within the protection of the First Amendment.\xe2\x80\x9d Vill. of Schaumburg v.\nCitizens for a Better Env\xe2\x80\x99t, 444 U.S. 620, 632 (1980). Such solicitation, the Court stated, is not a \xe2\x80\x9cvariety\n364\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nof purely commercial speech.\xe2\x80\x9d Id. Courts are thus well-advised to tread cautiously when a trademark\nholder invokes the Lanham Act against an alleged non-profit infringer whose use of the trademark\nholder\xe2\x80\x99s marks may be only tenuously related to requests for money. Again, this is not to say that in all\ninstances a solicitation by a non-profit is immune from Lanham Act liability. A solicitation may satisfy\nthe \xe2\x80\x9cin connection with\xe2\x80\x9d element if the trademark holder demonstrates a sufficient nexus between the\nunauthorized use of the protected mark and clear transactional activity. Such a nexus may be present,\nfor example, where the protected mark seems to denote the recipient of the donation. However, where,\nas here, the solicitations are not closely related to the specific uses of the protected marks, we are\ncompelled to conclude that the district court erred in ruling that the \xe2\x80\x9cin connection element\xe2\x80\x9d was met.\n....\nQuestions and Comments\n1. The Difference in the Language of Lanham Act \xc2\xa7 32 and \xc2\xa7 43(a). You may have noticed that the\ntwo likelihood of confusion sections formulate the commercial use requirement slightly differently.\nCompare Lanham Act \xc2\xa7 32(1)(a), 15 U.S.C. \xc2\xa7 1114(1)(a) (establishing liability for \xe2\x80\x9c[a]ny person who\nshall use in commerce\xe2\x80\x9d the plaintiff\xe2\x80\x99s mark \xe2\x80\x9cin connection with the sale, offering for sale, distribution,\nor advertising of any goods or services\xe2\x80\x9d in a manner that is confusing) to Lanham Act \xc2\xa7 43(a)(1), 15\nU.S.C. \xc2\xa7 1125(a)(1) (establishing liability for \xe2\x80\x9c[a]ny person who, on or in connection with any goods or\nservices, or any container for goods, uses in commerce\xe2\x80\x9d the plaintiff\xe2\x80\x99s mark in a manner that is\nconfusing). In practice, courts have read both statements of the commercial use requirement to mean\nthe same thing.\nB.\n\nConfusion-Based Infringement\n\nThe overriding question in most federal trademark infringement litigation is a simple one: is the\ndefendant\xe2\x80\x99s trademark, because of its similarity to the plaintiff\xe2\x80\x99s trademark, causing or likely to cause\nconsumer confusion as to the source or sponsorship of the defendant\xe2\x80\x99s goods? Each of the circuits\nrequires that, in answering this question, the district court conduct a multifactor analysis of the\nlikelihood of consumer confusion according to the factors set out by that circuit. As the Seventh Circuit\nhas explained, the multifactor test operates \xe2\x80\x9cas a heuristic device to assist in determining whether\nconfusion exists.\xe2\x80\x9d Sullivan v. CBS Corp., 385 F.3d 772, 778 (7th Cir. 2004). In Part II.B.1, we will briefly\nreview the peculiar history of the multifactor test approach to the likelihood of confusion (or \xe2\x80\x9cLOC\xe2\x80\x9d)\nquestion. In Part II.B.2, we will focus on a particularly rich application of the multifactor test in Virgin\nEnterprises Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003). Part II.B.4 will address the use of survey\nevidence in the LOC context. Parts II.B.5 through II.B.9 will address various modes of consumer\nconfusion such as \xe2\x80\x9csponsorship or affiliation\xe2\x80\x9d confusion, \xe2\x80\x9cinitial interest\xe2\x80\x9d confusion, \xe2\x80\x9cpost-sale\xe2\x80\x9d\nconfusion, and \xe2\x80\x9creverse\xe2\x80\x9d confusion. Part II.B.10 will return briefly to the Lanham Act \xc2\xa7 2(d) bar to\nregistration of a mark that is confusingly-similar to a previously registered mark.\n1.\n\nThe History of the Confusion-Based Cause of Action for Trademark Infringement\na.\n\nThe Early-Twentieth Century Approach to the Likelihood of Confusion\n\nIn the following opinion, Borden Ice Cream Co. v. Borden\xe2\x80\x99s Condensed Milk Co., 201 F. 510 (7th Cir.\n1912), the appellee Borden Condensed Milk Co. was the well-known manufacturer of, among other\nthings, milk products under the trademark BORDEN. However, the only ice cream appellee had ever\nmade was a specialized product made from malted milk and sold only to hospitals. The appellant\nBorden Ice Cream Co. commenced use of the BORDEN mark for ice cream \xe2\x80\x93 after finding someone named\nBorden to join its application for a corporate charter in Illinois. Under current trademark law, this\nwould be a clear case of trademark infringement. As you will see, the Borden Ice Cream court saw\nthings differently at the time.\n\n365\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nBorden Ice Cream Co. v. Borden\xe2\x80\x99s Condensed Milk Co.\n201 F. 510 (7th Cir. 1912)\n[1] This is an appeal from an interlocutory order of injunction entered in the District Court,\nrestraining the appellants \xe2\x80\x98from the use of the name \xe2\x80\x98Borden\xe2\x80\x99 in the manufacture or sale of ice cream\nand like articles, and the manufacture or sale of milk products in any of their forms, without plainly\nand in written or printed form attached to all cartons of such commodities, and upon all wagons or\nother vehicles used in the delivery of such commodities, and on all letter heads and other stationery\ngoing out to customers and to the public, and in all places where the name \xe2\x80\x98Borden\xe2\x80\x99s Ice Cream\nCompany\xe2\x80\x99 may hereafter appear in the transaction of any business by the defendants, advising\npurchasers and the public in an unmistakable manner that the product of the defendants is not that of\nthe complainant, \xe2\x80\x98Borden\xe2\x80\x99s Condensed Milk Company.\xe2\x80\x99\xe2\x80\x99\n[2] The word \xe2\x80\x98Borden\xe2\x80\x99 in the corporate name of the appellee was taken from the name of Gail\nBorden, who founded the business in the year 1857, and since that time it has been and is now a tradename of great value, identified almost universally with the business of milk and milk products of the\nappellee and its predecessors. The trade-name \xe2\x80\x98Borden,\xe2\x80\x99 or the word \xe2\x80\x98Borden,\xe2\x80\x99 constitutes one of the\nprincipal assets of the appellee, and is widely known and identified with the good will and public favor\nenjoyed by it throughout the United States.\n[3] On May 31, 1899, the appellee was incorporated under the laws of the state of New Jersey,\nwith broad corporate powers, and specifically authorized \xe2\x80\x98to manufacture, sell and otherwise deal in\ncondensed, preserved and evaporated milk and all other manufactured forms of milk; to produce,\npurchase and sell fresh milk, and all products of milk; to manufacture, purchase and sell all food\nproducts; to raise, purchase and sell all garden, farm and dairy products; to raise, purchase and sell,\nand otherwise deal in, cattle and all other live stock; to manufacture, lease, purchase and sell all\nmachinery, tools, implements, apparatus and all other articles and appliances used in connection with\nall or any of the purposes aforesaid, or with selling and transporting the manufactured or other\nproducts of the company; and to do any and all things connected with or incidental to the carrying on\nof such business, or any branch or part thereof.\xe2\x80\x99\n[4] It may be stated in this connection that the charter of the company contains no express\nauthority to manufacture or sell what is known commercially as ice cream.\n....\n[5] Appellee has developed in the state of Illinois and the city of Chicago, and elsewhere, a large\nbusiness in the sale of fresh milk and cream and evaporated milk to confectioners for use by them in\nmaking commercial ice cream. It has expended large sums of money in promoting and advertising its\nbusiness, and particularly in extending the sale of the so-called \xe2\x80\x98Borden\xe2\x80\x99s Peerless Brand Evaporated\nMilk, Confectioners\xe2\x80\x99 Size,\xe2\x80\x99 a high quality of evaporated milk inclosed [sic] in cans, especially designed\nfor use in the manufacture of ice cream.\n[6] For more than two years prior to the filing of the bill in the District Court, the appellee had\nbeen manufacturing a form of ice cream known as \xe2\x80\x98Borden\xe2\x80\x99s Malted Milk Ice Cream,\xe2\x80\x99 which product is,\nas the name implies, an ice cream made with malted milk as its basic element, and is especially adapted\nfor use in hospitals. This malted milk ice cream, which hitherto has been used only in hospitals, the\nappellee is about to place on the market for general use in competition with commercial ice cream.\n[7] On May 25, 1911, the appellants Charles F. Borden, George W. Brown, and Edgar V. Stanley\napplied to the Secretary of State of the state of Illinois for a license to incorporate under the name of\n\xe2\x80\x98Borden Ice Cream Company.\xe2\x80\x99 On July 31, 1911, the appellee notified the individual appellants that the\nterm \xe2\x80\x98Borden\xe2\x80\x99 had become so firmly established in connection with the products of the appellee the use\nof that word in connection with any company dealing in milk products would lead to the presumption\nthat they were the products of the appellee, and demanded that the word \xe2\x80\x98Borden\xe2\x80\x99 be eliminated from\nappellants\xe2\x80\x99 company name.\n366\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[8] On the same day appellee protested to the Secretary of State of the state of Illinois against the\nissuance of any charter under the name of \xe2\x80\x98Borden Ice Cream Company,\xe2\x80\x99 but on the 16th of August,\n1911, a charter was duly issued to the \xe2\x80\x98Borden Ice Cream Company,\xe2\x80\x99 by which it was authorized \xe2\x80\x98to\nmanufacture and sell ice cream, ices and similar products.\xe2\x80\x99\n[9] The appellant Charles F. Borden had never before been engaged in the ice cream business, or\nin buying or selling milk or milk products, or in any similar business, and is not the principal person\nconnected with the appellant Borden Ice Cream Company. The appellant Lawler is an ice cream\nmanufacturer, and has subscribed to 47 out of a total of 50 shares of stock of the Borden Ice Cream\nCompany. Charles F. Borden has subscribed to one share of stock, and has not paid for that.\n[10] The bill charges, upon information and belief, that it is the intention of appellant Borden Ice\nCream Company to use the word \xe2\x80\x98Borden\xe2\x80\x99 for the purpose of trading upon the reputation of appellee\xe2\x80\x99s\ngoods and products, and for the purpose of deceiving and defrauding the public into the belief that\nsuch product is the product of the appellee; that such \xe2\x80\x98improper, deceitful and fraudulent use of the\nname \xe2\x80\x98Borden\xe2\x80\x99 will be a great and irreparable injury to the complainant\xe2\x80\x99s (appellee\xe2\x80\x99s) property right in\nits trade-name; and that the reputation of the products of complainant (appellee) will be greatly\ninjured thereby; and that the business of complainant (appellee) will be injured;\xe2\x80\x99 and that there will be\ngreat confusion in the business carried on by the original company because of such improper use; and\nthat it will be impossible for present and prospective customers to know that the product of the\nBorden Ice Cream Company is not the product of Borden\xe2\x80\x99s Condensed Milk Company.\n[11] The bill and the affidavits on file do not show any facts tending to sustain the allegation of\nirreparable injury to the old company or its business, or showing or tending to show that the old\ncompany has been or will be injured in any way in the business which it is now engaged in. Moreover,\nit does not appear that the malted milk ice cream manufactured by the old company will in any way\ncome into competition with the commercial ice cream proposed to be put on the market by the new\ncompany.\n[12] The bill was filed before the defendant had started to do any business. The answer admits\nmost of the material allegations, but denies all fraudulent purpose.\nCARPENTER, District Judge (after stating the facts as above).\n[13] A personal name, such as \xe2\x80\x98Borden,\xe2\x80\x99 is not susceptible of exclusive appropriation, and even its\nregistration in the Patent Office cannot make it a valid trade-mark. Howe Scale Co. v. Wyckoff, 198 U.S.\n134; Elgin Natl. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665; Singer Mfg. Co. v. June Mfg. Co., 163\nU.S. 169; Brown Chemical Co. v. Meyer, 139 U.S. 540.\n[14] There is no charge made in the bill that the appellants are infringing, or propose to infringe,\nupon any technical trade-mark of the appellee, so we may dismiss any claim for relief upon that score.\n[15] The only theory upon which the injunction in this case can be sustained is upon that known\nas unfair competition. Relief against unfair competition is granted solely upon the ground that one who\nhas built up a good will and reputation for his goods or business is entitled to all of the resultant\nbenefits. Good will or business popularity is property, and, like other property, will be protected\nagainst fraudulent invasion.\n....\n[16] It has been said that the universal test question in cases of this class is whether the public is\nlikely to be deceived as to the maker or seller of the goods. This, in our opinion, is not the fundamental\nquestion. The deception of the public naturally tends to injure the proprietor of a business by diverting\nhis customers and depriving him of sales which otherwise he might have made. This, rather than the\nprotection of the public against imposition, is the sound and true basis for the private remedy. That the\npublic is deceived may be evidence of the fact that the original proprietor\xe2\x80\x99s rights are being invaded. If,\n367\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nhowever, the rights of the original proprietor are in no wise interfered with, the deception of the public\nis no concern of a court of chancery. American Washboard Co. v. Saginaw Mfg. Co., 103 Fed. 281.\n[17] Doubtless it is morally wrong for a person to proclaim, or even intimate, that his goods are\nmanufactured by some other and well-known concern; but this does not give rise to a private right of\naction, unless the property rights of that concern are interfered with. The use by the new company of\nthe name \xe2\x80\x98Borden\xe2\x80\x99 may have been with fraudulent intent; and, even assuming that it was, the trial court\nhad no right to interfere, unless the property rights of the old company were jeopardized. Nothing else\nbeing shown, a court of equity cannot punish an unorthodox or immoral, or even dishonest, trader; it\ncannot enforce as such the police power of the state.\n[18] In the case now under our consideration the old company (the appellee) never has\nmanufactured what is known as commercial ice cream. The new company (the appellant) was\nincorporated for the sole purpose of manufacturing and putting on the market such an article.\n....\n[19] The secondary meaning of a name . . . has no legal significance, unless the two persons make\nor deal in the same kind of goods. Clearly the appellants here could make gloves, or plows, or cutlery,\nunder the name \xe2\x80\x98Borden\xe2\x80\x99 without infringing upon any property right of the old company. If that is true,\nthey can make anything under the name \xe2\x80\x98Borden\xe2\x80\x99 which the appellee has not already made and offered\nto the public. George v. Smith (C.C.) 52 Fed. 830.\n[20] The name \xe2\x80\x98Borden,\xe2\x80\x99 until appellants came into the field, never had been associated with\ncommercial ice cream. By making commercial ice cream the appellants do not come into competition\nwith the appellee. In the absence of competition, the old company cannot assert the rights accruing\nfrom what has been designated as the secondary meaning of the word \xe2\x80\x98Borden.\xe2\x80\x99 The phrase \xe2\x80\x98unfair\ncompetition\xe2\x80\x99 presupposes competition of some sort. In the absence of competition the doctrine cannot\nbe invoked.\n[21] There being no competition between the appellants and appellee, we are confronted with the\nproposition that the appellee, in order to succeed on this appeal, has and can enforce a proprietary\nright to the name \xe2\x80\x98Borden\xe2\x80\x99 in any kind of business, to the exclusion of all the world.\n[22] It is urged that appellee has power, under its charter, to make commercial ice cream, and that\nit intends some day to do so. If such intention can be protected at this time, it might well be that\nappellee, having enjoined appellants from making commercial ice cream, would rest content with\nselling its evaporated milk to ice cream dealers, and never itself manufacture the finished product. But,\nas was well stated by Judge Coxe, in George v. Smith, supra:\n\xe2\x80\x98It is the party who uses it first as a brand for his goods, and builds up a business under it,\nwho is entitled to protection, and not the one who first thought of using it on similar\ngoods, but did not use it. The law deals with acts and not intentions.\xe2\x80\x99\n[23] Appellee also urges that it makes and sells large quantities of evaporated or condensed milk\nto manufacturers of ice cream, and that if the appellants are permitted to use the name \xe2\x80\x98Borden\xe2\x80\x99 in the\nice cream business dealers probably will believe that its ice cream is made by appellee, and will in\nconsequence buy the finished product rather than the component parts, and that appellee\xe2\x80\x99s sales of\nevaporated or condensed milk will fall off, to its manifest damage. Such result would be too speculative\nand remote to form the basis of an order restraining men from using in their business any personal\nname, especially their own.\n[24] Appellee is in this position: If it bases its right to an injunction upon the doctrine of unfair\ncompetition, no competition of any kind has been shown by the record. If it relies upon some supposed\ndamage which may result from appellants\xe2\x80\x99 use of the name \xe2\x80\x98Borden\xe2\x80\x99 in connection with inferior goods,\nthe action is premature, because the appellants, as yet, have neither sold nor made anything.\n[25] The order of the District Court must be reversed; and it is so ordered.\n368\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nb.\n\nThe Development of the Modern Multifactor Test\n\nThe idiosyncrasies of tradition rather than of reason drove the development of the multifactor\ntests across the circuits. Each of the circuits\xe2\x80\x99 current multifactor tests originated either directly or\nindirectly from the 1938 Restatement (First) of the Law of Torts. The Restatement (First) failed to set\nforth a single, unified multifactor test for trademark infringement. Instead, it proposed four factors\nthat courts should consider in all cases and nine more factors that courts should additionally consider\nonly when the parties goods were noncompeting with each other, i.e., not substitutable for each other.\nSection 729 of the Restatement (First) set out the four factors courts should always consider:\nIn determining whether the actor\xe2\x80\x99s designation is confusingly similar to the other\xe2\x80\x99s trademark or trade name, the following factors are important:\n(a) the degree of similarity between the designation and the trade-mark or trade\nname in\n(i) appearance;\n(ii) pronunciation of the words used;\n(iii) verbal translation of the pictures or designs involved;\n(iv) suggestion;\n(b) the intent of the actor in adopting the designation;\n(c) the relation in use and manner of marketing between the goods or services marketed\nby the actor and those marketed by the other;\n(d) the degree of care likely to be exercised by purchasers.\nRESTATEMENT FIRST OF TORTS \xc2\xa7 729 (1939). Section 731 set out the additional nine factors that courts\nshould additionally consider only in cases involving noncompetitive goods:\nIn determining whether one\xe2\x80\x99s interest in a trade-mark or trade name is protected, under\nthe rules stated in \xc2\xa7\xc2\xa7 717 and 730, with reference to the goods, services or business in\nconnection with which the actor uses his designation, the following factors are\nimportant:\n(a) the likelihood that the actor\xe2\x80\x99s goods, services or business will be mistaken for those of\nthe other;\n(b) the likelihood that the other may expand his business so as to compete with the actor;\n(c) the extent to which the goods or services of the actor and those of the other have\ncommon purchasers or users;\n(d) the extent to which the goods or services of the actor and those of the other are\nmarketed through the same channels;\n(e) the relation between the functions of the goods or services of the actor and those of\nthe other;\n(f) the degree of distinctiveness of the trademark or trade name;\n(g) the degree of attention usually given to trade symbols in the purchase of goods or\nservices of the actor and those of the other;\n(h) the length of time during which the actor has used the designation;\n(i) the intent of the actor in adopting and using the designation.\nId. at \xc2\xa7 731.\nThrough the course of the mid-twentieth century, the federal courts lost track of the distinction\nbetween the two sets of factors, and the circuits each began to use a single, unified multifactor test\nregardless of whether the parties\xe2\x80\x99 goods were competing. Each circuit developed its own test, and for\n369\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe most part, the peculiarities of the particular cases in which the circuit\xe2\x80\x99s multifactor test first\ncoalesced determined which factors are still considered in that circuit today. A good example of this is\nfound in the following opinion, Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 402 (2d Cir. 1961),\nwhich is the origin of the Second Circuit\xe2\x80\x99s \xe2\x80\x9cPolaroid Factors.\xe2\x80\x9d Despite Judge Friendly\xe2\x80\x99s clear statement\nthat his test was meant for situations \xe2\x80\x9c[w]here the products are different,\xe2\x80\x9d id. at 495, Second Circuit\ncourts routinely apply the Polaroid factors in competing goods cases. The opinion is presented here\nprimarily for its historical significance as one of the most influential opinions in U.S. trademark law,\nbut also to show, in the final paragraph of the opinion excerpt, how much trademark infringement\ndoctrine had evolved since Borden\xe2\x80\x99s Ice Cream.\nPolaroid Corp. v. Polarad Electronics Corp.\n287 F.2d 492 (2d Cir. 1961)\nFRIENDLY, Circuit Judge.\n[1] Plaintiff, Polaroid Corporation, a Delaware corporation, owner of the trademark Polaroid and\nholder of 22 United States registrations thereof granted between 1936 and 1956 and of a New York\nregistration granted in 1950, brought this action in the Eastern District of New York, alleging that\ndefendant\xe2\x80\x99s use of the name Polarad as a trademark and as part of defendant\xe2\x80\x99s corporate title infringed\nplaintiff\xe2\x80\x99s Federal and state trademarks and constituted unfair competition. It sought a broad\ninjunction and an accounting. Defendant\xe2\x80\x99s answer, in addition to denying the allegations of the\ncomplaint, sought a declaratory judgment establishing defendant\xe2\x80\x99s right to use Polarad in the business\nin which defendant was engaged, an injunction against plaintiff\xe2\x80\x99s use of Polaroid in the television and\nelectronics fields, and other relief. Judge Rayfiel, in an opinion reported in D.C.1960, 182 F.Supp. 350,\ndismissed both the claim and the counterclaims, concluding that neither plaintiff nor defendant had\nmade an adequate showing with respect to confusion and that both had been guilty of laches. Both\nparties appealed but defendant has withdrawn its cross-appeal. We find it unnecessary to pass upon\nJudge Rayfiel\xe2\x80\x99s conclusion that defendant\xe2\x80\x99s use of Polarad does not violate any of plaintiff\xe2\x80\x99s rights. For\nwe agree that plaintiff\xe2\x80\x99s delay in proceeding against defendant bars plaintiff from relief so long as\ndefendant\xe2\x80\x99s use of Polarad remains as far removed from plaintiff\xe2\x80\x99s primary fields of activity as it has\nbeen and still is.\n....\n[2] Conceding that the bulk of its business is in optics and photography, lines not pursued by\ndefendant, plaintiff nevertheless claims to be entitled to protection of its distinctive mark in at least\ncertain portions of the large field of electronics. Plaintiff relies on its sales of Schmidt corrector plates,\nused in certain types of television systems, first under government contracts beginning in 1943 and to\nindustry commencing in 1945; on its sale, since 1946, of polarizing television filters, which serve the\nsame function as the color filters that defendant supplies as a part of the television apparatus sold by\nit; and, particularly, on the research and development contracts with the government referred to\nabove. Plaintiff relies also on certain instances of confusion, predominantly communications intended\nfor defendant but directed to plaintiff. Against this, defendant asserts that its business is the sale of\ncomplex electronics equipment {consisting of microwave devices and television studio equipment} to a\nrelatively few customers; that this does not compete in any significant way with plaintiff\xe2\x80\x99s business, the\nbulk of which is now in articles destined for the ultimate consumer; that plaintiff\xe2\x80\x99s excursions into\nelectronics are insignificant in the light of the size of the field; that the instances of confusion are\nminimal; that there is no evidence that plaintiff has suffered either through loss of customers or injury\nto reputation, since defendant has conducted its business with high standards; and that the very nature\nof defendant\xe2\x80\x99s business, sales to experienced industrial users and the government, precludes any\nsubstantial possibility of confusion. Defendant also asserts plaintiff\xe2\x80\x99s laches to be a bar.\n[3] The problem of determining how far a valid trademark shall be protected with respect to\ngoods other than those to which its owner has applied it, has long been vexing and does not become\n370\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\neasier of solution with the years. Neither of our recent decisions so heavily relied upon by the parties,\nHarold F. Ritchie, Inc. v. Chesebrough-Pond\xe2\x80\x99s, Inc., 2 Cir., 1960, 281 F.2d 755, by plaintiff, and Avon Shoe\nCo., Inc. v. David Crystal, Inc., 2 Cir., 1960, 279 F.2d 607 by defendant, affords much assistance, since in\nthe Ritchie case there was confusion as to the identical product and the defendant in the Avon case had\nadopted its mark \xe2\x80\x98without knowledge of the plaintiffs\xe2\x80\x99 prior use,\xe2\x80\x99 at page 611. Where the products are\ndifferent, the prior owner\xe2\x80\x99s chance of success is a function of many variables: the strength of his mark,\nthe degree of similarity between the two marks, the proximity of the products, the likelihood that the\nprior owner will bridge the gap, actual confusion, and the reciprocal of defendant\xe2\x80\x99s good faith in\nadopting its own mark, the quality of defendant\xe2\x80\x99s product, and the sophistication of the buyers. Even\nthis extensive catalogue does not exhaust the possibilities\xe2\x80\x94the court may have to take still other\nvariables into account. American Law Institute, Restatement of Torts, \xc2\xa7\xc2\xa7 729, 730, 731. Here plaintiff\xe2\x80\x99s\nmark is a strong one and the similarity between the two names is great, but the evidence of actual\nconfusion, when analyzed, is not impressive. The filter seems to be the only case where defendant has\nsold, but not manufactured, a product serving a function similar to any of plaintiff\xe2\x80\x99s, and plaintiff\xe2\x80\x99s sales\nof this item have been highly irregular, varying, e.g., from $2,300 in 1953 to $303,000 in 1955, and\n$48,000 in 1956.\n[4] If defendant\xe2\x80\x99s sole business were the manufacture and sale of microwave equipment, we\nshould have little difficulty in approving the District Court\xe2\x80\x99s conclusion that there was no such\nlikelihood of confusion as to bring into play either the Lanham Act, 15 U.S.C.A. \xc2\xa7 1114(1), or New York\nGeneral Business Law, \xc2\xa7 368-b, or to make out a case of unfair competition under New York decisional\nlaw, see Avon Shoe Co. v. David Crystal, Inc., supra, at page 614, footnote 11. What gives us some pause\nis defendant\xe2\x80\x99s heavy involvement in a phase of electronics that lies closer to plaintiff\xe2\x80\x99s business,\nnamely, television. Defendant makes much of the testimony of plaintiff\xe2\x80\x99s executive vice president that\nplaintiff\xe2\x80\x99s normal business is \xe2\x80\x98the interaction of light and matter.\xe2\x80\x99 Yet, although television lies\npredominantly in the area of electronics, it begins and ends with light waves. The record tells us that\ncertain television uses were among the factors that first stimulated Dr. Land\xe2\x80\x99s interest in polarization,\nsee Marks v. Polaroid Corporation, supra, 129 F.Supp. at page 246, plaintiff has manufactured and sold\nat least two products for use in television systems, and defendant\xe2\x80\x99s second counterclaim itself asserts\nlikelihood of confusion in the television field. We are thus by no means sure that, under the views with\nrespect to trademark protection announced by this Court in such cases as Yale Electric Corp. v.\nRobertson, 2 Cir., 1928, 26 F.2d 972 (locks vs. flashlights {finding confusion}); L. E. Waterman Co. v.\nGordon, 2 Cir., 1934, 72 F.2d 272 (mechanical pens and pencils vs. razor blades {finding confusion});\nTriangle Publications, Inc. v. Rohrlich, 2 Cir., 1948, 167 F.2d 969, 972 (magazines vs. girdles {finding\nconfusion}); and Admiral Corp. v. Penco, Inc., 2 Cir., 1953, 203 F.2d 517 (radios, electric ranges and\nrefrigerators vs. sewing machines and vacuum cleaners {finding confusion}), plaintiff would not have\nbeen entitled to at least some injunctive relief if it had moved with reasonable promptness. However,\nwe are not required to decide this since we uphold the District Court\xe2\x80\x99s conclusion with respect to\nlaches.\n{The court went on to reject the plaintiff\xe2\x80\x99s attempts to overcome the defendant\xe2\x80\x99s defense of\nlaches.}\nQuestions and Comments\n1. Laches in federal trademark law. There is no statute of limitations provision in the Lanham Act.\nInstead, the analogous state statute of limitations period in the forum state will typically apply in order\nto fill the gap in federal law. Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d 362 (6th Cir. 1985). \xe2\x80\x9cThe\nlimitations period is often used to shift the initial burden of proof for the laches defense. If the case was\nfiled within the relevant statute of limitations, the burden will be on the defendant to show that laches\napplies, but if the case was filed after the limitations period expired, then the burden will be on the\nplaintiff to show why it would be inequitable to apply laches.\xe2\x80\x9d 3 GILSON ON TRADEMARKS \xc2\xa7 13.21 (2019).\n371\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nDifferent state\xe2\x80\x99s limitations periods can run anywhere from about two to six years. See 6 MCCARTHY ON\nTRADEMARKS AND UNFAIR COMPETITION \xc2\xa7 31:33 (5th ed. 2019).\nFor an impressive application of the laches defense, see Dropbox, Inc. v. Thru Inc., No. 15 Civ.\n01741, 2016 WL 6696042 (N.D. Cal. Nov. 15, 2016), supplemented, 15 Civ. 01741, 2016 WL 7116717\n(N.D. Cal. Dec. 7, 2016), aff\'d, 728 F. App\'x 717 (9th Cir. 2018), and aff\'d, 728 F. App\'x 717 (9th Cir.\n2018). The case involved litigation between the Dropbox file hosting service and a company that\nprobably had a reasonable claim of seniority in the DROPBOX mark. Dropbox\xe2\x80\x99s laches defense was so\nstrong and Thru\xe2\x80\x99s litigation conduct so abusive (it waited until Dropbox\xe2\x80\x99s IPO announcement to file\nsuit) that Dropbox eventually won attorney\xe2\x80\x99s fees and costs in the total amount of $2.3 million.\n2. \xe2\x80\x9cHis Mark is His Authentic Seal.\xe2\x80\x9d In Yale Elec. Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928),\nwhich Judge Friendly cites in the final paragraph of Polaroid, Judge Hand set forth his oft-quoted\ndescription of the plaintiff\xe2\x80\x99s interest in preventing the use of its mark on noncompeting goods:\nHowever, it has of recent years been recognized that a merchant may have a sufficient\neconomic interest in the use of his mark outside the field of his own exploitation to justify\ninterposition by a court. His mark is his authentic seal; by it he vouches for the goods\nwhich bear it; it carries his name for good or ill. If another uses it, he borrows the owner\xe2\x80\x99s\nreputation, whose quality no longer lies within his own control. This is an injury, even\nthough the borrower does not tarnish it, or divert any sales by its use; for a reputation,\nlike a face, is the symbol of its possessor and creator, and another can use it only as a\nmask. And so it has come to be recognized that, unless the borrower\xe2\x80\x99s use is so foreign to\nthe owner\xe2\x80\x99s as to insure against any identification of the two, it is unlawful.\nId. at 974. If the defendant\xe2\x80\x99s conduct \xe2\x80\x9cdoes not tarnish [the plaintiff\xe2\x80\x99s reputation], or divert any sales by\nits use,\xe2\x80\x9d then what exactly is the harm to the plaintiff?\n2.\n\nContemporary Applications of the Multifactor Test for the Likelihood of Consumer\nConfusion\n\nEach circuit has developed its own multifactor test for the likelihood of consumer confusion. Here\nare the multifactor tests from certain leading circuits. As you will see, they are roughly similar:\n\xe2\x80\xa2\n\nThe Second Circuit\xe2\x80\x99s \xe2\x80\x9cPolaroid Factors\xe2\x80\x9d: Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492,\n495 (2d Cir. 1961) (\xe2\x80\x9cWhere the products are different, the prior owner\xe2\x80\x99s chance of success is a\nfunction of many variables: the strength of his mark, the degree of similarity between the two\nmarks, the proximity of the products, the likelihood that the prior owner will bridge the gap,\nactual confusion, and the reciprocal of defendant\'s good faith in adopting its own mark, the\nquality of defendant\'s product, and the sophistication of the buyers. Even this extensive\ncatalogue does not exhaust the possibilities\xe2\x80\x94the court may have to take still other variables\ninto account. American Law Institute, Restatement of Torts, \xc2\xa7\xc2\xa7 729, 730, 731.\xe2\x80\x9d).\n\n\xe2\x80\xa2\n\nThe Seventh Circuit\xe2\x80\x99s \xe2\x80\x9cHelene Curtis Factors\xe2\x80\x9d: Helene Curtis Indus., Inc. v. Church & Dwight Co.,\n560 F.2d 1325, 1330 (7th Cir. 1977) (In determining \xe2\x80\x98likelihood of confusion\xe2\x80\x99 several factors\nare important: \xe2\x80\x98the degree of similarity between the marks in appearance and suggestion; the\nsimilarity of the products for which the name is used; the area and manner of concurrent use;\nthe degree of care likely to be exercised by consumers; the strength of the complainant\xe2\x80\x99s mark;\nactual confusion; and an intent on the part of the alleged infringer to palm off his products as\nthose of another\xe2\x80\x99. Carl Zeiss Stiftung v. VEB Carl Zeiss Jena, 433 F.2d 686, 705 (2d Cir. 1970).\xe2\x80\x9d)\n\n\xe2\x80\xa2\n\nThe Ninth Circuit\xe2\x80\x99s \xe2\x80\x9cSleekcraft Factors\xe2\x80\x9d: AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348\xe2\x80\x9349\n(9th Cir. 1979) (\xe2\x80\x9cIn determining whether confusion between related goods is likely, the\nfollowing factors are relevant: 1. strength of the mark; 2. proximity of the goods; 3. similarity\nof the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and\nthe degree of care likely to be exercised by the purchaser; 7. defendant\'s intent in selecting the\n372\n\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmark; and 8. likelihood of expansion of the product lines. See, e.g., Sleeper Lounge Co. v. Bell\nManufacturing Co., 253 F.2d at 722; Restatement of Torts s 731 (1938).\xe2\x80\x9d).\nIn Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003), the Second Circuit applied its\nPolaroid test to determine if consumers would likely mistake the goods and services of the defendant,\noperating under the mark VIRGIN WIRELESS, for the those of the plaintiff, the owner of the VIRGIN mark for\na wide variety of goods and services. The opinion is exceptional for its thorough analysis of the factors.\nIn reading through Virgin Enterprises, consider the following questions:\n\xe2\x80\xa2\n\nWhich of the Polaroid factors are likely the most important to courts\xe2\x80\x99 adjudication of the\nlikelihood of confusion question?\n\n\xe2\x80\xa2\n\nIn practice, is intent likely as unimportant to courts\xe2\x80\x99 determinations as the Virgin Enterprises\nopinion suggests?\n\n\xe2\x80\xa2\n\nWhy should strong marks receive a wider scope of protection than weak marks?\n\n\xe2\x80\xa2\n\nWhy should inherent strength be more important to the multifactor inquiry than acquired\nstrength? Relatedly, why should fanciful marks receive a wider scope of protection that\narbitrary or suggestive marks?\n\n\xe2\x80\xa2\n\nDoes the court make any basic mistakes of doctrine in its discussion of the Abercrombie\nspectrum?\n\n373\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nVirgin Enterprises Ltd. v. Nawab\n335 F.3d 141 (2d Cir. 2003)\nLEVAL, Circuit Judge.\n[1] Plaintiff Virgin Enterprises Limited (\xe2\x80\x9cVEL\xe2\x80\x9d or \xe2\x80\x9cplaintiff\xe2\x80\x9d) appeals from the denial of its motion\nfor a preliminary injunction. This suit, brought under \xc2\xa7 32 of the Lanham Act, 15 U.S.C. \xc2\xa7 1114(1),\nalleges that defendants infringed plaintiff\xe2\x80\x99s rights in the registered mark VIRGIN by operating retail\nstores selling wireless telephones and related accessories and services under the trade name VIRGIN\nWIRELESS. The United States District Court for the Eastern District of New York (Sifton, J.) denied\nplaintiff\xe2\x80\x99s motion for a preliminary injunction, based upon its finding that plaintiff\xe2\x80\x99s registration did\nnot cover the retail sale of wireless telephones and related products, and that plaintiff failed to show a\nlikelihood of consumer confusion.\nBACKGROUND\n[2] Plaintiff VEL, a corporation with its principal place of business in London, owns U.S.\nRegistration No. 1,851,817 (\xe2\x80\x9cthe 817 Registration\xe2\x80\x9d), filed on May 5, 1991, and registered on August 30,\n1994, for the VIRGIN mark as applied to \xe2\x80\x9cretail store services in the fields of . . . computers and\nelectronic apparatus \xe2\x80\x9d (emphasis added). . . . Plaintiff also owns U.S. Registration No. 1,852,776 (\xe2\x80\x9cthe\n776 Registration\xe2\x80\x9d), filed on May 9, 1991, and registered on September 6, 1994, for a stylized version of\nthe VIRGIN mark for use in connection with \xe2\x80\x9cretail store services in the fields of . . . computers and\nelectronic apparatus,\xe2\x80\x9d and U.S. Registration No. 1,863,353 (\xe2\x80\x9cthe 353 Registration\xe2\x80\x9d), filed on May 19,\n1992, and registered on November 15, 1994, for the VIRGIN MEGASTORE mark. It is undisputed that\nthese three registrations have become incontestable pursuant to 15 U.S.C. \xc2\xa7 1065.\n[3] VEL, either directly or through corporate affiliates, operates various businesses worldwide\nunder the trade name VIRGIN, including an airline, large-scale record stores called Virgin Megastores,\nand an internet information service. Plaintiff or its affiliates also market a variety of goods branded\nwith the VIRGIN name, including music recordings, computer games, books, and luggage. Three of\nplaintiff\xe2\x80\x99s megastores are located in the New York area. According to an affidavit submitted to the\ndistrict court in support of plaintiff\xe2\x80\x99s application for preliminary injunction, Virgin Megastores sell a\nvariety of electronic apparatus, including video game systems, portable CD players, disposable\ncameras, and DVD players. These stores advertise in a variety of media, including radio.\n[4] Defendants Simon Blitz and Daniel Gazal are the sole shareholders of defendants Cel-Net\nCommunications, Inc. (\xe2\x80\x9cCel-Net\xe2\x80\x9d); The Cellular Network Communications, Inc., doing business as CNCG\n(\xe2\x80\x9cCNCG\xe2\x80\x9d); and SD Telecommunications, Inc. (\xe2\x80\x9cSD Telecom\xe2\x80\x9d). Blitz and Gazal formed Cel-Net in 1993 to\nsell retail wireless telephones and services in the New York area. Later, they formed CNCG to sell\nwireless phones and services on the wholesale level. CNCG now sells wireless phones and services to\nmore than 400 independent wireless retailers. In 1998, Cel-Net received permission from New York\nState regulators to resell telephone services within the state.\n[5] Around 1999, Andrew Kastein, a vice-president of CNCG, began to develop a Cel-Net brand of\nwireless telecommunications products. In early 1999, Cel-Net entered into negotiations with the Sprint\nPCS network to provide telecommunications services for resale by Cel-Net. In August 1999, Cel-Net\nretained the law firm Pennie & Edmonds to determine the availability of possible service marks for\nCel-Net. Pennie & Edmonds associate Elizabeth Langston researched for Kastein a list of possible\nservice marks; among the marks Cel-Net asked to have researched was VIRGIN. Defendants claim that\nLangston told Cel-Net officer Simon Corney that VIRGIN was available for use in the\ntelecommunications field. Plaintiff disputed this, offering an affidavit from Langston that she informed\ndefendants that she would not search the VIRGIN mark because her firm represented plaintiff.\n[6] According to defendants, in December 1999, Cel-Net retained Corporate Solutions, LLC and its\nprincipals Nathan Erlich and Tahir Nawab as joint venture partners to help raise capital to launch Cel374\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nNet\xe2\x80\x99s wireless telephone service. On December 2, 1999, Erlich and Nawab filed four intent-to-use\napplications with the U.S. Patent and Trademark Office (\xe2\x80\x9cPTO\xe2\x80\x9d) to register the marks VIRGIN\nWIRELESS, VIRGIN MOBILE, VIRGIN COMMUNICATIONS, and VIRGIN NET in the field of\ntelecommunications services, class 38. On December 24, 1999, Corporate Solutions incorporated\ndefendant Virgin Wireless, Inc. (\xe2\x80\x9cVWI\xe2\x80\x9d) and licensed to VWI the right to use the marks VIRGIN\nWIRELESS and VIRGIN MOBILE. Meanwhile, one of plaintiff\xe2\x80\x99s affiliates had begun to offer wireless\ntelecommunication services bearing the VIRGIN mark in the United Kingdom. A press release dated\nNovember 19, 1999, found on plaintiff\xe2\x80\x99s website, stated that its Virgin Mobile wireless services were\noperable in the United States.\n[7] On June 23, 2000, defendant Blitz signed a lease under the name Virgin Wireless for a kiosk\nlocation in South Shore Mall in Long Island from which to re-sell AT&T wireless services, telephones,\nand accessories under the retail name Virgin Wireless. Defendants Cel-Net and VWI later expanded\ntheir telecommunications re-sale operations to include two retail stores and four additional retail\nkiosks in malls in the New York area and in Pennsylvania. All of these stores have been run by VWI\nunder the trade name VIRGIN WIRELESS. VWI also has leases and bank accounts in its name, and has\nshown evidence of actual retail transactions and newspaper advertisements.\n[8] In August 2000, plaintiff licensed Virgin Mobile USA, LLC, to use the VIRGIN mark for wireless\ntelecommunications services in the United States. On August 10, 2000, plaintiff filed an intent-to-use\napplication with the PTO for use of the VIRGIN mark in the United States on telecommunications\nservices and mobile telephones. On October 11, 2001, the PTO suspended this mark\xe2\x80\x99s registration in\ninternational class 9, which covers wireless telephones, and class 38, which covers\ntelecommunications services, because the VIRGIN mark was already reserved by a prior filing,\npresumably defendants\xe2\x80\x99. On August 16, 2001, plaintiff filed another intent-to-use application for the\nmark VIRGIN MOBILE to brand telecommunications services. The PTO issued a non-final action letter\nfor both of plaintiff\xe2\x80\x99s pending new registrations on October 31, 2001, which stated that defendant\nCorporation Solutions\xe2\x80\x99 pending applications for similar marks in the same class could give rise to \xe2\x80\x9ca\nlikelihood of confusion.\xe2\x80\x9d The PTO suspended action on plaintiff\xe2\x80\x99s application pending the processing of\nCorporation Solutions\xe2\x80\x99 applications.\n[9] In October 2001, plaintiff issued a press release announcing that it was offering wireless\ntelecommunications services and mobile telephones in the United States.\n[10] Plaintiff became aware of Corporation Solutions\xe2\x80\x99 application for registration of the VIRGIN\nWIRELESS and VIRGIN MOBILE marks by May 2000. In October 2001 and December 2001, defendant\nVWI filed suits against plaintiff in the federal district courts in Arizona and Delaware, alleging that\nplaintiff was using VWI\xe2\x80\x99s mark. Plaintiff maintains (and the district court found) that it learned in\nJanuary 2002 that VWI and Cel-Net were operating kiosks under the VIRGIN WIRELESS name and two\ndays later filed the present suit seeking to enjoin defendants from selling mobile phones in VIRGINbranded retail stores.\n[11] On May 2, 2002, the district court considered plaintiff\xe2\x80\x99s application for a preliminary\ninjunction. It found that no essential facts were in dispute, and therefore no evidentiary hearing was\nrequired. It was uncontested (and the district court accordingly found) that plaintiff sold \xe2\x80\x9celectronic\napparatus\xe2\x80\x9d in its stores, including \xe2\x80\x9cvarious video game systems, portable cassette tape, compact disc,\nmp3, and mini disc players, portable radios, and disposable cameras,\xe2\x80\x9d but not including telephones or\ntelephone service, and that the only products the defendants sold in their stores were wireless\ntelephones, telephone accessories, and wireless telephone services . . . .\n[12] Arguing against plaintiff\xe2\x80\x99s likelihood of success, the court noted that plaintiff\xe2\x80\x99s registrations\ndid not claim use of the VIRGIN mark \xe2\x80\x9cin telecommunications services or in the associated retail sale of\nwireless telephones and accessories.\xe2\x80\x9d While plaintiff\xe2\x80\x99s 817 and 776 Registrations covered the retail\n\n375\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nsale of \xe2\x80\x9ccomputers and electronic apparatus,\xe2\x80\x9d they did not extend to telecommunications services and\nwireless phones.\n[13] The court noted that the defendants were the first to use the VIRGIN mark in\ntelecommunications, and the first to attempt to register VIRGIN for telecommunications and retail\ntelephone sales . . . .\nDISCUSSION\n....\nII.\n[14] A claim of trademark infringement, whether brought under 15 U.S.C. \xc2\xa7 1114(1) (for\ninfringement of a registered mark) or 15 U.S.C. \xc2\xa7 1125(a) (for infringement of rights in a mark acquired\nby use), is analyzed under the familiar two-prong test described in Gruner + Jahr USA Publ\xe2\x80\x99g v. Meredith\nCorp., 991 F.2d 1072 (2d Cir. 1993). See Time, Inc. v. Petersen Publ\xe2\x80\x99g Co. L.L.C., 173 F.3d 113, 117 (2d\nCir. 1999) (noting that Gruner test is applicable to claims brought under \xc2\xa7 1114(1) and \xc2\xa7 1125(a)). The\ntest looks first to whether the plaintiff\xe2\x80\x99s mark is entitled to protection, and second to whether\ndefendant\xe2\x80\x99s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of\nthe defendant\xe2\x80\x99s goods. Gruner, 991 F.2d at 1074. Examining the question as the test dictates, we have\nno doubt that plaintiff was entitled to a preliminary injunction.\n[15] We believe the district court accorded plaintiff too narrow a scope of protection for its\nfamous, arbitrary, and distinctive mark. There could be no dispute that plaintiff prevailed as to the first\nprong of the test\xe2\x80\x94prior use and ownership. For years, plaintiff had used the VIRGIN mark on huge,\nfamous stores selling, in addition to music recordings, a variety of consumer electronic equipment. At\nthe time the defendants began using VIRGIN, plaintiff owned rights in the mark. The focus of inquiry\nthus turns to the second prong of the test\xe2\x80\x94whether defendants\xe2\x80\x99 use of VIRGIN as a mark for stores\nselling wireless telephone services and phones was likely to cause confusion. There can be little doubt\nthat such confusion was likely.\n[16] The landmark case of Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)\n(Friendly, J.), outlined a series of nonexclusive factors likely to be pertinent in addressing the issue of\nlikelihood of confusion, which are routinely followed in such cases. . .\n[17] Six of the Polaroid factors relate directly to the likelihood of consumer confusion. These are\nthe strength of the plaintiff\xe2\x80\x99s mark; the similarity of defendants\xe2\x80\x99 mark to plaintiff\xe2\x80\x99s; the proximity of the\nproducts sold under defendants\xe2\x80\x99 mark to those sold under plaintiff\xe2\x80\x99s; where the products are different,\nthe likelihood that plaintiff will bridge the gap by selling the products being sold by defendants; the\nexistence of actual confusion among consumers; and the sophistication of consumers. Of these six, all\nbut the last (which was found by the district court to be neutral) strongly favor the plaintiff. The\nremaining two Polaroid factors, defendants\xe2\x80\x99 good or bad faith and the quality of defendants\xe2\x80\x99 products,\nare more pertinent to issues other than likelihood of confusion, such as harm to plaintiff\xe2\x80\x99s reputation\nand choice of remedy. We conclude that the Polaroid factors powerfully support plaintiff\xe2\x80\x99s position.\n[18] Strength of the mark. The strength of a trademark encompasses two different concepts, both\nof which relate significantly to likelihood of consumer confusion. The first and most important is\ninherent strength, also called \xe2\x80\x9cinherent distinctiveness.\xe2\x80\x9d This inquiry distinguishes between, on the\none hand, inherently distinctive marks\xe2\x80\x94marks that are arbitrary or fanciful in relation to the products\n(or services) on which they are used\xe2\x80\x94and, on the other hand, marks that are generic, descriptive or\nsuggestive as to those goods. The former are the strong marks. Abercrombie & Fitch Co. v. Hunting\nWorld, Inc., 537 F.2d 4, 9 (2d Cir. 1976). The second sense of the concept of strength of a mark is\n\xe2\x80\x9cacquired distinctiveness,\xe2\x80\x9d i.e., fame, or the extent to which prominent use of the mark in commerce\nhas resulted in a high degree of consumer recognition. See TCPIP Holding Co. v. Haar Communications\nInc., 244 F.3d 88, 100 (2d Cir. 2001) (describing these two concepts of strength).\n376\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[19] Considering first inherent distinctiveness, the law accords broad, muscular protection to\nmarks that are arbitrary or fanciful in relation to the products on which they are used, and lesser\nprotection, or no protection at all, to marks consisting of words that identify or describe the goods or\ntheir attributes. The reasons for the distinction arise from two aspects of market efficiency. The\nparamount objective of the trademark law is to avoid confusion in the marketplace. The purpose for\nwhich the trademark law accords merchants the exclusive right to the use of a name or symbol in their\narea or commerce is identification, so that the merchants can establish goodwill for their goods based\non past satisfactory performance, and the consuming public can rely on a mark as a guarantee that the\ngoods or services so marked come from the merchant who has been found to be satisfactory in the\npast. See Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997) (quoting Restatement\n(Third) of Unfair Competition \xc2\xa7 21 comment i (1995)); Power Test Petroleum Distribs., Inc. v. Calcu Gas,\nInc., 754 F.2d 91, 97 (2d Cir. 1985); McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1131 (2d Cir.\n1979). At the same time, efficiency and the public interest require that every merchant trading in a\nclass of goods be permitted to refer to the goods by their name, and to make claims about their quality.\nThus, a merchant who sells pencils under the trademark Pencil or Clear Mark, for example, and seeks to\nexclude other sellers of pencils from using those words in their trade, is seeking an advantage the\ntrademark law does not intend to offer. To grant such exclusivity would deprive the consuming public\nof the useful market information it receives where every seller of pencils is free to call them pencils.\nAbercrombie, 537 F.2d at 9; CES Publ\xe2\x80\x99g Corp. v. St. Regis Publ\xe2\x80\x99ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975). The\ntrademark right does not protect the exclusive right to an advertising message\xe2\x80\x94only the exclusive\nright to an identifier, to protect against confusion in the marketplace. Thus, as a matter of policy, the\ntrademark law accords broader protection to marks that serve exclusively as identifiers and lesser\nprotection where a grant of exclusiveness would tend to diminish the access of others to the full range\nof discourse relating to their goods. See TCPIP, 244 F.3d at 100; Nabisco, Inc. v. PF Brands, Inc., 191 F.3d\n208, 215 (2d Cir. 1999); Otokoyama Co. Ltd. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (2d Cir.\n1999).\n[20] The second aspect of efficiency that justifies according broader protection to marks that are\ninherently distinctive relates directly to the likelihood of confusion. If a mark is arbitrary or fanciful,\nand makes no reference to the nature of the goods it designates, consumers who see the mark on\ndifferent objects offered in the marketplace will be likely to assume, because of the arbitrariness of the\nchoice of mark, that they all come from the same source. For example, if consumers become familiar\nwith a toothpaste sold under an unusual, arbitrary brand name, such as ZzaaqQ, and later see that\nsame inherently distinctive brand name appearing on a different product, they are likely to assume,\nnotwithstanding the product difference, that the second product comes from the same producer as the\nfirst. The more unusual, arbitrary, and fanciful a trade name, the more unlikely it is that two\nindependent entities would have chosen it. In contrast, every seller of foods has an interest in calling\nits product \xe2\x80\x9cdelicious.\xe2\x80\x9d Consumers who see the word delicious used on two or more different food\nproducts are less likely to draw the inference that they must all come from the same producer. Cf.\nStreetwise Maps, 159 F.3d at 744 (noting that several map producers use \xe2\x80\x9cstreet\xe2\x80\x9d in product names;\nthus plaintiff\xe2\x80\x99s mark using \xe2\x80\x9cstreet\xe2\x80\x9d was not particularly distinctive); W. Publ\xe2\x80\x99g, 910 F.2d at 61 (noting\nnumerous registrations of marks using word \xe2\x80\x9cgolden\xe2\x80\x9d). In short, the more distinctive the mark, the\ngreater the likelihood that the public, seeing it used a second time, will assume that the second use\ncomes from the same source as the first. The goal of avoiding consumer confusion thus dictates that\nthe inherently distinctive, arbitrary, or fanciful marks, i.e., strong marks, receive broader protection\nthan weak marks, those that are descriptive or suggestive of the products on which they are used. See\nAbercrombie, 537 F.2d at 9-11; TCPIP, 244 F.3d at 100-01.\n[21] The second sense of trademark strength, fame, or \xe2\x80\x9cacquired distinctiveness,\xe2\x80\x9d also bears on\nconsumer confusion. See TCPIP, 244 F.3d at 100-01; Streetwise Maps, 159 F.3d at 744. If a mark has\nbeen long, prominently and notoriously used in commerce, there is a high likelihood that consumers\n377\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nwill recognize it from its prior use. Widespread consumer recognition of a mark previously used in\ncommerce increases the likelihood that consumers will assume it identifies the previously familiar\nuser, and therefore increases the likelihood of consumer confusion if the new user is in fact not related\nto the first. See Nabisco, 191 F.3d at 216-17. A mark\xe2\x80\x99s fame also gives unscrupulous traders an\nincentive to seek to create consumer confusion by associating themselves in consumers\xe2\x80\x99 minds with a\nfamous mark. The added likelihood of consumer confusion resulting from a second user\xe2\x80\x99s use of a\nfamous mark gives reason for according such a famous mark a broader scope of protection, at least\nwhen it is also inherently distinctive. See McGregor, 599 F.2d at 1132 (noting that secondary meaning\nmay further enlarge the scope of protection accorded to inherently distinctive marks).\n[22] Plaintiff\xe2\x80\x99s VIRGIN mark undoubtedly scored high on both concepts of strength. In relation to\nthe sale of consumer electronic equipment, the VIRGIN mark is inherently distinctive, in that it is\narbitrary and fanciful; the word \xe2\x80\x9cvirgin\xe2\x80\x9d has no intrinsic relationship whatsoever to selling such\nequipment. Because there is no intrinsic reason for a merchant to use the word \xe2\x80\x9cvirgin\xe2\x80\x9d in the sale of\nconsumer electronic equipment, a consumer seeing VIRGIN used in two different stores selling such\nequipment will likely assume that the stores are related.\n[23] Plaintiff\xe2\x80\x99s VIRGIN mark was also famous. The mark had been employed with world-wide\nrecognition as the mark of an airline and as the mark for megastores selling music recordings and\nconsumer electronic equipment. The fame of the mark increased the likelihood that consumers seeing\ndefendants\xe2\x80\x99 shops selling telephones under the mark VIRGIN would assume incorrectly that\ndefendants\xe2\x80\x99 shops were a part of plaintiff\xe2\x80\x99s organization. See Lois Sportswear, U.S.A., Inc. v. Levi Strauss\n& Co., 799 F.2d 867, 873 (2d Cir. 1986).\n[24] There can be no doubt that plaintiff\xe2\x80\x99s VIRGIN mark, as used on consumer electronic\nequipment, is a strong mark, as the district court found. It is entitled as such to a broad scope of\nprotection, precisely because the use of the mark by others in connection with stores selling\nreasonably closely related merchandise would inevitably have a high likelihood of causing consumer\nconfusion.\n[25] Similarity of marks. When the secondary user\xe2\x80\x99s mark is not identical but merely similar to the\nplaintiff\xe2\x80\x99s mark, it is important to assess the degree of similarity between them in assessing the\nlikelihood that consumers will be confused. See McGregor, 599 F.2d at 1133. Plaintiff\xe2\x80\x99s and defendants\xe2\x80\x99\nmarks were not merely similar; they were identical to the extent that both consisted of the same word,\n\xe2\x80\x9cvirgin.\xe2\x80\x9d\n[26] The district court believed this factor did not favor plaintiff because it found some\ndifferences in appearance. Defendants\xe2\x80\x99 logo used a different typeface and different colors from\nplaintiff\xe2\x80\x99s. While those are indeed differences, they are quite minor in relation to the fact that the name\nbeing used as a trademark was the same in each case.\n[27] Advertisement and consumer experience of a mark do not necessarily transmit all of the\nmark\xe2\x80\x99s features. Plaintiff, for example, advertised its Virgin Megastores on the radio. A consumer who\nheard those advertisements and then saw the defendants\xe2\x80\x99 installation using the name VIRGIN would\nhave no way of knowing that the two trademarks looked different. See Sports Auth., Inc. v. Prime\nHospitality Corp., 89 F.3d 955, 962 (2d Cir. 1996). A consumer who had visited one of plaintiff\xe2\x80\x99s Virgin\nMegastores and remembered the name would not necessarily remember the typeface and color of\nplaintiff\xe2\x80\x99s mark. The reputation of a mark also spreads by word of mouth among consumers. One\nconsumer who hears from others about their experience with Virgin stores and then encounters\ndefendants\xe2\x80\x99 Virgin store will have no way knowing of the differences in typeface. See Hills Bros. Coffee,\nInc. v. Hills Supermarkets, Inc., 428 F.2d 379, 381 (2d Cir. 1970) (per curiam ).\n[28] In view of the fact that defendants used the same name as plaintiff, we conclude the\ndefendants\xe2\x80\x99 mark was sufficiently similar to plaintiff\xe2\x80\x99s to increase the likelihood of confusion. This\n\n378\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nfactor favored the plaintiff as a matter of law. We conclude that the district court erred in concluding\notherwise on the basis of comparatively trivial and often irrelevant differences.\n[29] Proximity of the products and likelihood of bridging the gap. The next factor is the proximity of\nthe products being sold by plaintiff and defendant under identical (or similar) marks. See Arrow\nFastener, 59 F.3d at 396. This factor has an obvious bearing on the likelihood of confusion. When the\ntwo users of a mark are operating in completely different areas of commerce, consumers are less likely\nto assume that their similarly branded products come from the same source. In contrast, the closer the\nsecondary user\xe2\x80\x99s goods are to those the consumer has seen marketed under the prior user\xe2\x80\x99s brand, the\nmore likely that the consumer will mistakenly assume a common source. See Cadbury Beverages, Inc. v.\nCott Corp., 73 F.3d 474, 480-81 (2d Cir. 1996).\n[30] While plaintiff had not sold telephones or telephone service prior to defendant\xe2\x80\x99s registration\nevincing intent to sell those items, plaintiff had sold quite similar items of consumer electronic\nequipment. These included computer video game systems, portable cassette-tape players, compact\ndisc players, MP3 players, mini-disc players, and disposable cameras. Like telephones, many of these\nare small consumer electronic gadgets making use of computerized audio communication. They are\nsold in the same channels of commerce. Consumers would have a high expectation of finding\ntelephones, portable CD players, and computerized video game systems in the same stores. We think\nthe proximity in commerce of telephones to CD players substantially advanced the risk that consumer\nconfusion would occur when both were sold by different merchants under the same trade name,\nVIRGIN.\n[31] Our classic Polaroid test further protects a trademark owner by examining the likelihood\nthat, even if the plaintiff\xe2\x80\x99s products were not so close to the defendants\xe2\x80\x99 when the defendant began to\nmarket them, there was already a likelihood that plaintiff would in the reasonably near future begin\nselling those products. See Cadbury Beverages, 73 F.3d at 482. VEL\xe2\x80\x99s claim of proximity was further\nstrengthened in this regard because, as the district court expressly found, \xe2\x80\x9cplans had been formulated\n[for VEL] to enter [the market for telecommunications products and services] shortly in the future.\xe2\x80\x9d\nVEL had already begun marketing telephone service in England which would operate in the United\nStates, and, as the district court found, had made plans to sell telephones and wireless telephone\nservice under the VIRGIN name from its retail stores.\n[32] The district court, nonetheless, found in favor of the defendants with respect to the proximity\nof products and services. We would ordinarily give considerable deference to a factual finding on this\nissue. Here, however, we cannot do so because it appears the district court applied the wrong test. The\ncourt did not assess the proximity of defendants\xe2\x80\x99 VIRGIN-branded retail stores selling telephone\nproducts to plaintiff\xe2\x80\x99s VIRGIN-branded retail stores selling other consumer electronic products. It\nsimply concluded that, because defendants were selling exclusively telephone products and services,\nand plaintiff\xe2\x80\x99s electronic products did not include telephones or related services, the defendants must\nprevail as to the proximity factor.\n[33] This represents a considerable misunderstanding of the Polaroid test. The famous list of\nfactors of likely pertinence in assessing likelihood of confusion in Polaroid was specially designed for a\ncase like this one, in which the secondary user is not in direct competition with the prior user, but is\nselling a somewhat different product or service. In Polaroid, the plaintiff sold optical and camera\nequipment, while the defendant sold electronic apparatus. The test the court discussed was expressly\naddressed to the problem \xe2\x80\x9chow far a valid trademark shall be protected with respect to goods other\nthan those to which its owner has applied it.\xe2\x80\x9d 287 F.2d at 495 (emphasis added); see also Arrow\nFastener, 59 F.3d at 396 (noting that products need not actually compete with each other). The very\nfact that the test includes the \xe2\x80\x9cproximity\xe2\x80\x9d between the defendant\xe2\x80\x99s products and the plaintiff\xe2\x80\x99s and the\nlikelihood that the plaintiff will \xe2\x80\x9cbridge the gap\xe2\x80\x9d makes clear that the trademark owner does not lose,\nas the district court concluded, merely because it has not previously sold the precise good or service\nsold by the secondary user.\n379\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[34] In our view, had the district court employed the proper test of proximity, it could not have\nfailed to find a high degree of proximity as between plaintiff VEL\xe2\x80\x99s prior sales of consumer electronic\naudio equipment and defendants\xe2\x80\x99 subsequent sales of telephones and telephone services, which\nproximity would certainly contribute to likelihood of consumer confusion. And plaintiff was all the\nmore entitled to a finding in its favor in respect of these matters by virtue of the fact, which the district\ncourt did find, that at the time defendants began using the VIRGIN mark in the retail sale of telephones\nand telephone services, plaintiff already had plans to bridge the gap by expanding its sales of consumer\nelectronic equipment to include sales of those very goods and services in the near future. Consumer\nconfusion was more than likely; it was virtually inevitable.\n[35] Actual confusion. It is self-evident that the existence of actual consumer confusion indicates a\nlikelihood of consumer confusion. Nabisco, 191 F.3d at 228. We have therefore deemed evidence of\nactual confusion \xe2\x80\x9cparticularly relevant\xe2\x80\x9d to the inquiry. Streetwise Maps, 159 F.3d at 745.\n[36] Plaintiff submitted to the district court an affidavit of a former employee of defendant CelNet, who worked at a mall kiosk branded as Virgin Wireless, which stated that individuals used to ask\nhim if the kiosk was affiliated with plaintiff\xe2\x80\x99s VIRGIN stores. The district court correctly concluded that\nthis evidence weighed in plaintiff\xe2\x80\x99s favor.\n[37] Sophistication of consumers. The degree of sophistication of consumers can have an\nimportant bearing on likelihood of confusion. Where the purchasers of products are highly trained\nprofessionals, they know the market and are less likely than untrained consumers to be misled or\nconfused by the similarity of different marks. The district court recognized that \xe2\x80\x9c[r]etail customers,\nsuch as the ones catered to by both the defendants and [plaintiff], are not expected to exercise the\nsame degree of care as professional buyers, who are expected to have greater powers of\ndiscrimination.\xe2\x80\x9d On the other hand, it observed that purchasers of cellular telephones and the service\nplans were likely to give greater care than self-service customers in a supermarket. Noting that neither\nside had submitted evidence on the sophistication of consumers, the court made no finding favoring\neither side. We agree that the sophistication factor is neutral in this case.\n[38] Bad faith and the quality of the defendants\xe2\x80\x99 services or products. Two factors remain of the\nconventional Polaroid test: the existence of bad faith on the part of the secondary user and the quality\nof the secondary user\xe2\x80\x99s products or services. Polaroid, 287 F.2d at 495. Neither factor is of high\nrelevance to the issue of likelihood of confusion. A finding that a party acted in bad faith can affect the\ncourt\xe2\x80\x99s choice of remedy or can tip the balance where questions are close. It does not bear directly on\nwhether consumers are likely to be confused. See TCPIP, 244 F.3d at 102. The district court noted some\nevidence of bad faith on the defendants\xe2\x80\x99 part, but because the evidence on the issue was scant and\nequivocal, the court concluded that such a finding \xe2\x80\x9cat this stage [would be] speculative.\xe2\x80\x9d The court\ntherefore found that this factor favored neither party.\n[39] The issue of the quality of the secondary user\xe2\x80\x99s product goes more to the harm that confusion\ncan cause the plaintiff\xe2\x80\x99s mark and reputation than to the likelihood of confusion. See Arrow Fastener, 59\nF.3d at 398 (noting that first user\xe2\x80\x99s reputation may be harmed if secondary user\xe2\x80\x99s goods are of poor\nquality). In any event, the district court found this factor to be \xe2\x80\x9cneutral\xe2\x80\x9d with respect to likelihood of\nconfusion.\n******\n[40] In summary we conclude that of the six Polaroid factors that pertain directly to the likelihood\nof consumer confusion, all but one favor the plaintiff, and that one\xe2\x80\x94sophistication of consumers\xe2\x80\x94is\nneutral. The plaintiff is strongly favored by the strength of its mark, both inherent and acquired; the\nsimilarity of the marks; the proximity of the products and services; the likelihood that plaintiff would\nbridge the gap; and the existence of actual confusion. None of the factors favors the defendant. The\nremaining factors were found to be neutral. Although we do not suggest that likelihood of confusion\nmay be properly determined simply by the number of factors in one party\xe2\x80\x99s favor, the overall\n380\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nassessment in this case in our view admits only of a finding in plaintiff\xe2\x80\x99s favor that defendants\xe2\x80\x99 sale of\ntelephones and telephone-related services under the VIRGIN mark was likely to cause substantial\nconsumer confusion.\n[41] One issue remains. Defendants argue that plaintiff should be barred by laches from seeking\ninjunctive relief. They contend that because of plaintiff\xe2\x80\x99s delay after learning of the defendants\xe2\x80\x99\napplications to register the VIRGIN marks, they expended considerable sums and developed goodwill\nin their use of the VIRGIN marks before plaintiff brought suit. Because the district court ruled in the\ndefendants\xe2\x80\x99 favor it made no express finding on the issue of laches. But the district court explicitly\nfound that plaintiff first learned of defendants\xe2\x80\x99 use of the name VIRGIN in commerce only two days\nbefore plaintiff instituted this suit. Given that finding, plaintiff could not be chargeable with laches.\n[42] We conclude that, as a matter of law, plaintiff demonstrated irreparable harm and likelihood\nof success on the merits and was entitled to a preliminary injunction.\nCONCLUSION\nREVERSED and REMANDED.\nQuestions and Comments\n1. The Abercrombie Spectrum. In its discussion of inherent distinctiveness, the court divides the\nAbercrombie spectrum into inherently and non-inherently distinctive marks: \xe2\x80\x9cThis inquiry\ndistinguishes between, on the one hand, inherently distinctive marks\xe2\x80\x94marks that are arbitrary or\nfanciful in relation to the products (or services) on which they are used\xe2\x80\x94and, on the other hand,\nmarks that are generic, descriptive or suggestive as to those goods.\xe2\x80\x9d Do you detect an error in this\ndivision?\nLater in the opinion, the court refers to the Virgin mark as \xe2\x80\x9carbitrary and fanciful.\xe2\x80\x9d Should we\ntreat these two Abercrombie categories as indistinguishable for purposes of the inherent\ndistinctiveness analysis? Why might we seek to accord a greater scope of protection to fanciful marks\nthan to arbitrary marks?\n2. Are All Factors Equally Important? In order to prevail in the overall likelihood of confusion\nmultifactor test, must a plaintiff win all of the factors, a majority of them, some of them? Is the outcome\nof any particular factor necessary or sufficient to trigger a particular overall test outcome?\nEmpirical work offers some insight into these questions. See Barton Beebe, An Empirical Study of\nthe Multifactor Tests for Trademark Infringement, 94 CALIF. L. REV. 1581 (2006). The author\xe2\x80\x99s evidence\nsuggests that the plaintiff must win the similarity factor in order to win the overall test. Of the 192\npreliminary injunction and bench trial opinions studied, 65 opinions found that the marks were not\nsimilar, and each of these 65 opinions found in favor of the defendant in the overall likelihood of\nconfusion test. Notwithstanding the Virgin court\xe2\x80\x99s assertion that the intent factor is not \xe2\x80\x9cof high\nrelevance\xe2\x80\x9d and may only \xe2\x80\x9ctip the balance where the questions are close,\xe2\x80\x9d the study also suggests that\nthe outcome of the intent factor correlates very strongly with the outcome of the overall test. Sixtyseven of the 192 preliminary injunction and bench trial opinions found that the intent factor favored\nthe plaintiff. Of these 67 opinions, 65 found in favor of the plaintiff in the overall test (and in the two\noutlying opinions, the court found that the similarity factor favored the defendant). Overall, across the\ncircuits, five core factors appear to drive the outcome of the likelihood of confusion test. In order of\nimportance, these factors are the similarity of the marks, the defendant\xe2\x80\x99s intent, the proximity of the\ngoods, evidence of actual confusion, and the strength of the plaintiff\xe2\x80\x99s mark. The remaining factors\nappear, in practice, to be largely irrelevant to the outcome of the test.\n3. Why Should Strong Marks Receive More Protection? The conventional rationale for according a\ngreater scope of protection to strong marks is that, due to their notoriety, they are more easily called to\nmind by similar marks. See Jacob Jacoby, The Psychological Foundations of Trademark Law: Secondary\nMeaning, Genericism, Fame, Confusion and Dilution, 91 TRADEMARK REP. 1013, 1038-42 (2001). But\n381\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nshouldn\xe2\x80\x99t strong marks actually require less protection? Consider the example of COKE. Having been\nexposed to the COKE mark countless times throughout their lives, are American consumers more or less\nlikely to detect slight differences between the COKE mark and other similar marks? Some foreign courts\nhave had the temerity to suggest that exceptionally strong marks are less likely to be confused with\nother marks. See, e.g., Baywatch Production Co. Inc. v The Home Video Channel, High Court of Justice,\nChancery Division, 31 July 1996 (Crystal J.) (citing BASF Plc v CEP (UK) Plc (Knox J.), 16 October\n1995)); Uprise Product Yugen Kaisha v. Commissioner of Japan Patent Office, Heisei 22 (gyo-ke) 10274\nIntellectual Property High Court of Japan (2010). Australian courts have been particularly receptive to\nthis line of argument. See ROBERT BURRELL & MICHAEL HANDLER, AUSTRALIAN TRADEMARK LAW 253-55, 40306 (2d ed. 2016). See generally Barton Beebe & C. Scott Hemphill, The Scope of Strong Marks: Should\nTrademark Law Protect the Strong More than the Weak?, 92 NYU L. REV. 1339 (2017).\n4. Sophistication of the Relevant Consumers. Courts assess the likelihood of confusion by the\n\xe2\x80\x9creasonably prudent\xe2\x80\x9d consumer of the goods or services at issue. Consumers of more expensive or\nmore technically sophisticated goods are understood to exercise greater care in their purchasing\ndecisions, and thus to be comparatively less likely to be confused. See, e.g., Florida Int\xe2\x80\x99l Univ. Bd. of\nTrustees v. Florida Nat\xe2\x80\x99l Univ., Inc., 830 F.3d 1242, 1256 (11th Cir. 2016) (in finding no likelihood of\nconfusion between FLORIDA INTERNATIONAL UNIVERSITY and FLORIDA NATIONAL UNIVERSITY, observing that\n\xe2\x80\x9cstudents looking for a college to attend are likely to be relatively sophisticated and knowledgeable\nbecause of the nature, importance, and size of the investment in a college education\xe2\x80\x9d); Heartsprings,\nInc. v. Heartspring, Inc., 143 F.3d 550, 557 (10th Cir. 1998) (finding that consumers would not likely\nconfuse defendant\xe2\x80\x99s mark HEARTSPRING for a residential school for physically disabled children with\nplaintiff\xe2\x80\x99s mark HEARTSPRINGS for printed materials teaching children to resolve conflicts non-violently\nwhere tuition for defendant\xe2\x80\x99s school ranged from $90,000 to $150,000 per year).\nA Canadian case captured this aspect of consumer sophistication doctrine quite memorably. In\nAtomic Energy of Canada Limited v. Areva NP Canada Ltd., 2009 FC 980 (2009), the plaintiff used a\nstylized \xe2\x80\x9cA\xe2\x80\x9d (shown below on the left) as its trademark for services relating to the design and\nconstruction of nuclear reactors while the defendant also used a stylized \xe2\x80\x9cA\xe2\x80\x9d (shown below on the\nright) in connection with the sale of nuclear reactor parts and components. The court noted: \xe2\x80\x9cAll of\n[the plaintiff\xe2\x80\x99s] experts acknowledged in cross-examination that the relevant consumers would not be\nconfused into purchasing the wrong nuclear reactor.\xe2\x80\x9d Id. at \xc2\xb619. Citing English case law, the court\nrecognized that \xe2\x80\x9c[I]t is not sufficient that the only confusion would be to a very small, unobservant\nsection of society; or as Foster J. put it recently, if the only person who would be misled was a \xe2\x80\x98moron\nin a hurry.\xe2\x80\x99\xe2\x80\x9d Id. at \xc2\xb628. Mr. Justice Zinn added: \xe2\x80\x9cIn this industry, the fact that Homer Simpson may be\nconfused is insufficient to find confusion.\xe2\x80\x9d Id.\n\nAre relatively poor individuals less sophisticated consumers and thus more easily confused? One\nS.D.N.Y. judge seemed to think so. See Schieffelin & Co. v. The Jack Co., 1994 WL 144884 at *55 (S.D.N.Y.\n1994) (\xe2\x80\x9cEven if some of the prospective purchasers of Dom Perignon are from low income groups, and\nare therefore less sophisticated shoppers than wealthier purchasers, . . .\xe2\x80\x9d). A later court took exception\nto the Shieffelin Court\xe2\x80\x99s assumption. See Reebok Intern. Ltd. v. K-Mart Corp., 849 F.Supp. 252, 268\n(S.D.N.Y. 1994) (\xe2\x80\x9c[T]he court expressly disagrees with this statement\xe2\x80\x99s implication that there is a direct\nrelationship between income and consumer intelligence. Careless shopping habits are not a necessary\n382\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nby-product of a low income.\xe2\x80\x9d). Indeed, couldn\xe2\x80\x99t an argument be made that low income groups would\ngive more care to their purchases?\n5. What About the Interests of Consumers Who Are Not Confused? In Michael Grynberg, Trademark\nLitigation as Consumer Conflict, 83 N.Y.U. L. REV. 60 (2008), Grynberg argues:\nTrademark litigation typically unfolds as a battle between competing sellers who argue\nover whether the defendant\xe2\x80\x99s conduct is likely to confuse consumers. This is an unfair\nfight. In the traditional narrative, the plaintiff defends her trademark while\nsimultaneously protecting consumers at risk for confusion. The defendant, relatively\nspeaking, stands alone. The resulting \xe2\x80\x9ctwo-against-one\xe2\x80\x9d storyline gives short shrift to the\ninterests of nonconfused consumers who may have a stake in the defendant\xe2\x80\x99s conduct. As\na result, courts are too receptive to nontraditional trademark claims where the case for\nconsumer harm is questionable. Better outcomes are available by appreciating\ntrademark litigation\xe2\x80\x99s parallel status as a conflict between consumers. This view treats\njunior and senior trademark users as proxies for different consumer classes and\nrecognizes that remedying likely confusion among one group of consumers may cause\nharm to others. Focusing on the interests of benefited and harmed consumers also\nminimizes the excessive weight given to moral rhetoric in adjudicating trademark cases.\nConsideration of trademark\xe2\x80\x99s consumer-conflict dimension is therefore a useful device\nfor critiquing trademark\xe2\x80\x99s expansion and assessing future doctrinal developments.\nId. at 60. Should courts be more solicitous of the interests of sophisticated consumers who are in fact\nnot confused and may benefit from the information provided by the defendant\xe2\x80\x99s conduct?\n6. Is It Necessary for Courts Explicitly to Consider Each Factor? District courts are generally\nrequired explicitly to address each of the factors listed in their circuit\xe2\x80\x99s multifactor test. If a factor is\nirrelevant, the court must explain why. Failure to do so can result in remand. See, for example, Sabinsa\nCorp. v. Creative Compounds, 609 F.3d 175 (3d Cir. 2010), which reviewed a district court opinion that\naddressed only three of the ten Lapp factors used by the Third Circuit. The Third Circuit explained:\n\xe2\x80\x9c[W]hile it is true that a district court may find that certain of the Lapp factors are inapplicable or\nunhelpful in a particular case, the court must still explain its choice not to employ those factors. Here,\nthe District Court failed to explain whether it viewed these remaining factors as neutral or irrelevant\nor how it weighed and balanced the combined factors.\xe2\x80\x9d Id. at 183. Finding that the facts were \xe2\x80\x9clargely\nundisputed,\xe2\x80\x9d id., the Third Circuit declined to remand. Instead, it considered each of the ten Lapp\nfactors and reversed.\n7. A Two-Dimensional Model of Trademark Scope. Trademark lawyers typically speak of\ntrademarks in two dimensions, as in the trademark \xe2\x80\x9cFORD for cars\xe2\x80\x9d or the trademark \xe2\x80\x9cACE for hardware,\nbut not for bandages.\xe2\x80\x9d From this we can derive a simple two-dimensional model of trademark\ninfringement, as in the figure below. See Barton Beebe, The Semiotic Analysis of Trademark Law, 51\nUCLA L. REV. 621, 654-655 (2004) This model conceives of any given trademark as forming a point in\na two-dimensional features space consisting of a trademark dimension and a goods/services\ndimension. The trademark dimension consists of a collapsed, one-dimensional continuum of all\npossible marks arranged according to similarities of \xe2\x80\x9csound, sight, and meaning.\xe2\x80\x9d The goods/services\ndimension similarly consists of a one-dimensional continuum of all possible goods and services\narranged according to their degree of similarity.\n\n383\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nDistance in this features space is a measure of two concepts. First, distance is a measure of\ndifference. The distance between any two points represents the degree of difference between them.\nSecond, and related, distance is a measure of the likelihood of consumer confusion. The closer two\npoints are in features space, the greater the proportion of consumers in the relevant consumer\npopulation who will likely confuse them.\nAs we have seen, in order to prevent consumer confusion as to source, trademark law invests a\ntrademark-product combination with some broader scope of protection extending out from the point\nthe combination forms in this features space. Otherwise, a competitor could come very near to that\npoint, as in (stout, BASS) or (ale, BOSS) in the above figure and, by confusing some proportion of\nconsumers as to source, unfairly appropriate as to those consumers the goodwill of the BASS ale brand.\nThe closer a junior user\xe2\x80\x99s trademark-product combination comes to the trademark-product\ncombination of a senior user, the greater the proportion of consumers who will confuse the junior\xe2\x80\x99s\nwith the senior\xe2\x80\x99s use. At some proximity to the senior\xe2\x80\x99s use, trademark law declares that too high a\nproportion of consumers are or will be confused, and establishes a border, a property line, inside of\nwhich no competitor may come. This border, enveloping any given trademark, describes the scope of\nthat trademark\xe2\x80\x99s protection and the extent of the producer\xe2\x80\x99s property right.\nFor exceptionally well-known marks, what might be the shape of the mark\xe2\x80\x99s scope in this features\nspace? Would it matter where the mark falls on the Abercrombie spectrum? What would be the shape\nof the scope of protection for COCA-COLA? Can any other firm reasonably use that mark on any other\ngood or service? What would be the shape of the scope of FORD for automobiles or APPLE for high\ntechnology goods and services?\n3.\n\nFurther Examples of the Application of the Multifactor Test for the Likelihood of\nConsumer Confusion Test\n\nThe application of the multifactor test for the likelihood of confusion is often highly fact-specific.\nString citations of cases finding confusion and other seemingly similar cases finding no confusion may\ngive the impression that the test is unpredictable. See, e.g., Bank of Texas v. Commerce Southwest, Inc.,\n741 F.2d 785, 223 U.S.P.Q. 1174 (Fed. Cir. 1984) (BANK OF TEXAS and BANC TEXAS found not confusing);\nLaurel Capital Group, Inc. v. BT Fin. Corp., 45 F. Supp. 2d 469 (W.D. Pa. 1999) (LAUREL SAVINGS BANK and\nLAUREL BANK found confusing); Popular Bank of Fla. v. Banco Popular de Puerto Rico, 9 F. Supp. 2d 1347\n(S.D. Fla. 1998) (POPULAR BANK and BANCO POPULAR found confusing); Wachovia Bank and Trust Co. v.\nCrown National Bancorp., 27 U.S.P.Q.2d 1698 (W.D.N.C. 1993) (WACHOVIA CROWN ACCOUNT and CROWN\n384\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nfound not confusing). However, close attention to the facts of each case would show no\nsignificant inconsistencies in the courts\xe2\x80\x99 rulings.\nACCOUNT\n\nAdding to the difficulty is that there are no clear rules for when marks are too similar or not\nsimilar enough to trigger liability. Good trademark lawyers tend to build up over time a feel for what\ncourts will likely find infringing in light of all the facts of the case. Provided below are brief summaries\nof a few more cases in which courts found or did not find confusion to try to impart to those new to\ntrademark law some further sense of the diverse variety of considerations that can enter into a court\xe2\x80\x99s\napplication of the multifactor test.\n1. In Hero Nutritionals LLC v. Nutraceutical Corp., No. 11 Civ. 1195, 2013 WL 4480674 (C.D. Cal.\nAug. 16, 2013), the plaintiff produced nutritional supplements for children under the registered marks\nYUMMI and YUMMI BEARS. The defendant began to produce vitamin supplements labelled \xe2\x80\x9cVitamin C-Rex\nYummi Gummy.\xe2\x80\x9d The trade dresses of the competing products are shown below.\n\nIn finding no confusion after a bench trial, the court summarized its multifactor analysis:\nThe balance of the Sleekcraft factors does not demonstrate a likelihood of confusion\nbetween Hero\xe2\x80\x99s marks and Nutraceutical\'s use of \xe2\x80\x9cYummy Gummy.\xe2\x80\x9d Hero\xe2\x80\x99s marks are\nweak and entitled only to a narrow scope of protection. Although the words \xe2\x80\x9cYummy\xe2\x80\x9d\nand \xe2\x80\x9cyummi\xe2\x80\x9d are similar, the overall impression of the marks, including the packaging,\nlabeling, designs, and house marks, are dissimilar. Consumers of children\xe2\x80\x99s vitamins at\nhealth food stores tend to be more careful and discriminating than the average shopper.\nDespite years of coexistence in the market, there was no showing of actual confusion, nor\nhas Hero offered a survey to show actual confusion. Other than knowledge of the YUMMI\nBEARS mark, Hero has made no showing that Nutraceutical\'s use of \xe2\x80\x9cYummy Gummy\xe2\x80\x9d\nwas done in bad faith with an intent to trade off of Hero\xe2\x80\x99s good will. Although the\nproducts at issue are competitive and are generally sold in the same trade channel, these\nfactors do not outweigh the other considerations leading to the ultimate conclusion that\nthere is no likelihood of confusion.\nId. at *8.\n2. In Spangler Candy Co. v. Tootsie Roll Indus., LLC, 2019 WL 1170749, 372 F. Supp. 3d 588 (N.D.\nOhio 2019), the defendant Tootsie Roll developed a new, red trade dress for its CHARMS MINI POPS\nlollipops product, shown immediately below on the right. This new trade dress was suspiciously\nsimilar to the red trade dress of the plaintiff Spangler\xe2\x80\x99s DUM DUMS, which had been gaining market\nshare, shown immediately below on the left. The defendant Tootsie Roll\xe2\x80\x99s previous trade dress was\n\n385\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nyellow, shown below. The court found a likelihood of confusion and summarized its reasoning as\nfollows:\nThe Dum Dums trade dress is not strong and there is no evidence of actual confusion. But\nthe two companies used the same marketing channels to sell the same product. While the\nCharms Mini Pops trade dress is distinguishable when seen alone, Tootsie intends the\nproduct to be sold side-by-side on the shelf with Dum Dums, which would increase the\nlikelihood of confusion due to the low degree of purchaser care. This intent along with\nother evidence also supports a conclusion that Tootsie acted with the intent to deceive.\nTherefore, considering all the factors, I find the evidence suggests the red Charms Mini\nPops packaging is confusingly similar to the Dum Dums trade dress.\nId. at *12.\n\n3. In Eli Lilly & Co. v. Nat. Answers, Inc., 86 F. Supp. 2d 834 (S.D. Ind.), aff\'d, 233 F.3d 456 (7th Cir.\n2000), the plaintiff produced an antidepressant under the registered mark PROZAC. The defendant\nproduced an herbal drug under the name HERBROZAC that it claimed promoted \xe2\x80\x9cmood elevation.\xe2\x80\x9d In\nfinding a likelihood of confusion and granting the plaintiff\xe2\x80\x99s motion for a preliminary injunction, the\ndistrict court summarized its multifactor analysis:\nConsidering all the factors as set forth above, the court concludes that Lilly has shown an\nunusually strong case on the issue of likelihood of confusion. Most important here are the\nunusual strength of Lilly\'s PROZAC\xc2\xae mark, the strong similarity between PROZAC\xc2\xae and\nHERBROZAC, and defendant\'s intentional selection of the HERBROZAC name precisely\nbecause of its similarity to PROZAC\xc2\xae for the purpose of suggesting an association or\naffiliation between the products. Add to this mixture the fairly close \xe2\x80\x9ccompetitive\nproximity\xe2\x80\x9d of the two products, especially as pharmaceutical companies expand into the\nherbal and dietary supplement business, and Lilly has made a powerful showing of\nlikelihood of success on its claim for trademark infringement.\nId. at 846.\n386\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n4. In Kate Spade LLC v. Saturdays Surf LLC, 950 F. Supp. 2d 639 (S.D.N.Y. 2013), the plaintiff\nproduced primarily men\xe2\x80\x99s apparel under the mark SATURDAYS SURF NYC. The defendant launched a line of\nwomen\xe2\x80\x99s apparel under the mark KATE SPADE SATURDAY. Examples of the parties\xe2\x80\x99 respective uses of their\nmarks are shown below.\n\nIn finding no likelihood of confusion after a bench trial, the court summarized its multifactor\nanalysis:\nAfter considering and weighing each of the Polaroid factors, I conclude that Saturdays\nSurf NYC has not shown a likelihood of confusion by a preponderance of the credible\nevidence. I am particularly persuaded by the relative weakness of the word that the two\nmarks share, the significant distance between the men\xe2\x80\x99s and women\xe2\x80\x99s products, and the\nconsistent inclusion of the famous house mark, Kate Spade, in its Kate Spade Saturday\nmark.\nId. at 648\n5. In the relatively straightforward case of Nikon, Inc. v. Ikon Corp., 987 F.2d 91 (2d Cir. 1993), the\nplaintiff was a world-famous producer of high-quality cameras under the mark NIKON. The defendant\nwas a lesser known seller of low-cost cameras under the mark IKON. The court found confusion:\n\xe2\x80\x9cApplying the facts found by the court, each factor, with the exception of actual confusion, weighs\nheavily in favor of Nikon. And there was some evidence of actual confusion.\xe2\x80\x9d Id. at 96.\n6. In Alliance for Good Gov\'t v. Coalition for Better Gov\'t, 901 F.3d 498 (5th Cir. 2018), the plaintiff\nhad been using the mark below on the left since the 1960s to promote political candidates in Louisiana.\nThe defendant organization subsequently developed its own logo, below on the right, in the early\n1980s or 1990s to promote political candidates in New Orleans. The district court found a likelihood of\nconfusion and the Fifth Circuit affirmed.\n\nOf special interest is the Fifth Circuit\xe2\x80\x99s analysis of the similarity of the marks, and in particular its\nreference to the defendant\xe2\x80\x99s attorney\xe2\x80\x99s ignoble attempt (basically a failed con) to distinguish the\nmarks:\nFinally, we observe that Coalition attempted to distinguish the two logos\xe2\x80\x94not by\nappearance, design, color, or font\xe2\x80\x94but by the birds\xe2\x80\x99 species:\nDISTRICT COURT: They look exactly alike to me, the two birds.\nCOUNSEL: [. . .] [N]o, they really aren\xe2\x80\x99t, your Honor, if you look at the wing\nspan. The wing span of the eagle is different from the hawk. It\xe2\x80\x99s much larger\nand it fans out, and that\xe2\x80\x99s just the way the hawk looks.\n\n387\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nCOURT: I\xe2\x80\x99ll tell you, unless my eyes are deceiving me, . . . those two look\nexactly alike. They even look like the same feathers, same number of feathers,\nsame arrangement, head is facing the same way, the same beak. I don\xe2\x80\x99t know if\nyou call them\xe2\x80\x94I don\xe2\x80\x99t know technically what kind of bird it is, but whatever\nthey are, they look exactly alike to me.\nCOUNSEL: Well, they\xe2\x80\x99re both birds of prey; one is an eagle and one is a\nhawk.\nCOURT: Okay.\nCOUNSEL: And when we filed with the Secretary of State to get our font,\nwe said it was a hawk. We were represented by a hawk, not an eagle.\nWe agree with the district court: the birds are identical. Whether that bird is a\nhaliaeetus leucocephalus (bald eagle), a buteo jamaicensis (red-tailed hawk), or some\nother bird, we need not determine.\nId. at 511\xe2\x80\x9312. The plaintiff was subsequently awarded attorney\xe2\x80\x99s fees in the dispute, though there have\nbeen continuing skirmishes over the amount. See Alliance for Good Gov\'t v. Coalition for Better Gov\'t,\n919 F.3d 291 (5th Cir. 2019). (For more on fee shifting in trademark disputes, see Part VI).\n4.\n\nSurvey Evidence and the Likelihood of Confusion\n\nIt is often said that survey evidence is routinely submitted in trademark litigation, particularly on\nthe issue of consumer confusion. In a statement before Congress, the American Bar Association offered\na typical expression of this view: \xe2\x80\x9csurvey evidence is traditionally one of the most classic and most\npersuasive and most informative forms of trial evidence that trademark lawyers utilize in both\nprosecuting and defending against trademark claims of various sorts.\xe2\x80\x9d Committee Print to Amend the\nFederal Trademark Dilution Act: Hearing Before the Subcomm. on Courts, the Internet, and Intellectual\nProperty of the Comm. on the Judiciary, 108th Cong. 14 (2004) (statement of Robert W. Sacoff, Chair,\nSection of Intellectual Property Law, American Bar Association). In fact, empirical work suggests that\nsurvey evidence plays a surprisingly small role in deciding most trademark cases. See Barton Beebe, An\nEmpirical Study of the Multifactor Tests for Trademark Infringement, 94 CALIF. L. REV. 1581, 1641-42\n(2006). The author studied all federal court opinions applying a likelihood of confusion multifactor test\nover a five-year period from 2000 to 2004 and found that only 65 (20%) of the 331 opinions\naddressed survey evidence, 34 (10%) credited the survey evidence, and 24 (7%) ultimately ruled in\nfavor of the outcome that the credited survey evidence itself favored. Eleven (24%) of the 46 bench\ntrial opinions addressed survey evidence (with eight crediting it), while 24 (16%) of the 146\npreliminary injunction opinions addressed survey evidence (with 12 crediting it). Id. See also Robert C.\nBird & Joel H. Steckel, The Role of Consumer Surveys in Trademark Infringement: Empirical Evidence\nfrom the Federal Courts, 14 PENN. J. BUS. L. 1013 (2012) (finding that survey evidence is infrequently\nused in trademark litigation and suggesting that \xe2\x80\x9cthe mere submission of a survey by a defendant\nappears to help its case, while a plaintiff-submitted survey can potentially hurt its case if the court\ndeems it flawed\xe2\x80\x9d). But see Dan Sarel & Howard Marmorstein, The Effect of Consumer Surveys and Actual\nConfusion Evidence in Trademark Litigation: An Empirical Assessment, 99 TRADEMARK REP. 1416 (2009)\n(finding survey evidence presented in one-third of the opinions studied and that survey evidence had a\nsubstantial impact in cases involving dissimilar goods). Cf. Shari Seidman Diamond & David Franklyn,\nTrademark Surveys: An Undulating Path, 92 TEXAS L. REV. 2029 (2014) (concluding based on a survey of\ntrademark practitioners that surveys can perform a significant role in settlement negotiations).\nNevertheless, in the small subset of trademark cases involving high-stakes litigation or one or\nmore well-funded parties, survey evidence is customary, so much so that courts will sometimes draw\nan \xe2\x80\x9cadverse inference\xe2\x80\x9d against a party for failing to present it. See, e.g., Eagle Snacks, Inc. v. Nabisco\nBrands, Inc., 625 F. Supp. 571, 583 (D.N.J. 1985) (\xe2\x80\x9cFailure of a trademark owner to run a survey to\nsupport its claims of brand significance and/or likelihood of confusion, where it has the financial\n388\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nmeans of doing so, may give rise to the inference that the contents of the survey would be unfavorable,\nand may result in the court denying relief.\xe2\x80\x9d); but see, e.g., Tools USA and Equipment Co. v. Champ Frame\nStraightening Equipment Inc., 87 F.3d 654, 661 (4th Cir. 1996) (\xe2\x80\x9cActual confusion can be demonstrated\nby survey evidence, but contrary to [defendant\xe2\x80\x99s] suggestion, survey evidence is not necessarily the\nbest evidence of actual confusion and surveys are not required to prove likelihood of confusion.\xe2\x80\x9d).\nWhen litigants do present survey evidence, courts\xe2\x80\x99 analysis of this evidence can be painstaking,\nespecially when the litigants present dueling survey experts. In the following opinion, Smith v. WalMart Stores, Inc., 537 F.Supp.2d 1302 (N.D.Ga. 2008), the declaratory plaintiff Charles Smith sought to\ncriticize Wal-Mart\xe2\x80\x99s effect on American communities and workers by likening the retailer to the Nazi\nregime and, after Wal-Mart sent Smith two cease and desist letters, to Al Qaeda. Smith created and sold\nonline through CafePress.com t-shirts and other merchandise incorporating the term \xe2\x80\x9cWalocaust\xe2\x80\x9d and\nvarious Nazi insignia (shown below) or the term \xe2\x80\x9cWal-Qaeda\xe2\x80\x9d and various slogans and images (shown\nbelow). Wal-Mart produced survey evidence to support the proposition that American consumers\nwould believe that Wal-Mart was selling the t-shirts or had otherwise authorized their sale, or that in\nany case, Smith\xe2\x80\x99s conduct tarnished Wal-Mart\xe2\x80\x99s trademark. Both parties moved for summary judgment.\nExcerpted below is Judge Timothy Batten, Sr.\xe2\x80\x99s extraordinarily fine analysis of the surveys before him,\nwhich he conducted under the \xe2\x80\x9cactual confusion\xe2\x80\x9d factor of the multifactor test for the likelihood of\nconsumer confusion. The analysis is lengthy and very detailed, but it addresses a variety of surveyrelated issues with which a serious student of trademark litigation should be familiar.\nA few additional preliminary comments. First, the surveys at issue are modified forms of the\n\xe2\x80\x9cEveready format\xe2\x80\x9d for likelihood of confusion surveys, based on the case Union Carbide Corp. v. EverReady, Inc., 531 F.2d 366 (7th Cir. 1976), in which the Seventh Circuit credited two surveys as strong\nevidence of the likelihood of confusion. (Notwithstanding the spelling of \xe2\x80\x9cEver-Ready\xe2\x80\x9d in the caption of\nthe case, most commentators, including McCarthy, refer to the survey format as the \xe2\x80\x9cEveready\nformat.\xe2\x80\x9d) Second, the excerpt below addresses, in addition to the likelihood of confusion issue, a cause\nof action for dilution by tarnishment of Wal-Mart\xe2\x80\x99s mark. We will address dilution more fully in Part\nII.C.\nIn reading through the excerpt, consider the following question:\n\xe2\x80\xa2\n\nDo you find the Eveready format persuasive? How else might you design a likelihood of\nconfusion survey?\n\n\xe2\x80\xa2\n\nThe \xe2\x80\x9cthird set of questions\xe2\x80\x9d in the surveys, \xe2\x80\x9caimed at testing for confusion as to authorization\nor sponsorship, asked whether the company that \xe2\x80\x98put out\xe2\x80\x99 the shirt needed permission from\nanother company to do so, and if so, which company.\xe2\x80\x9d Is this an appropriate survey question\nto ask consumers?\n\n389\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\n390\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nSmith v. Wal-Mart Stores, Inc.\n537 F.Supp.2d 1302 (N.D.Ga. 2008)\nTimothy C. Batten, Sr., District Judge:\n....\nII. Analysis\nC. Trademark Infringement, Unfair Competition, Cybersquatting and Deceptive Trade Practices\nClaims\n1. Actual Confusion\n[1] Proof of actual confusion is considered the best evidence of likelihood of confusion. Roto\xe2\x80\x93\nRooter Corp. v. O\xe2\x80\x99Neal, 513 F.2d 44, 45\xe2\x80\x9346 (5th Cir. 1975). A claimant may present anecdotal evidence\nof marketplace confusion, and surveys, when appropriately and accurately conducted and reported,\nare also widely and routinely accepted as probative of actual confusion. See, e.g., AmBrit, Inc. v. Kraft,\nInc., 812 F.2d 1531, 1544 (11th Cir. 1986) (considering the proffered survey but giving it little weight);\nSunAmerica Corp. v. Sun Life Assurance Co. of Canada, 890 F.Supp. 1559, 1576 (N.D.Ga.1994) (viewing\nthe proffered survey as confirmation of consistent anecdotal evidence).\n[2] Wal\xe2\x80\x93Mart concedes that it has no marketplace evidence of actual consumer confusion. Instead,\nit presents two consumer research studies conducted by Dr. Jacob Jacoby that purport to prove that\nconsumer confusion and damage to Wal\xe2\x80\x93Mart\xe2\x80\x99s reputation are likely.\na. The Jacoby Report\n[3] Jacoby developed two surveys for Wal\xe2\x80\x93Mart that both purported to measure consumer\nconfusion and dilution by tarnishment. Specifically, the stated objectives of the research were (1) \xe2\x80\x9cTo\ndetermine whether (and if so, to what extent), when confronted with merchandise bearing Mr. Smith\xe2\x80\x99s\ndesigns either in person or via the Internet, prospective consumers would be confused into believing\nthat these items either came from Wal\xe2\x80\x93Mart, came from a firm affiliated with Wal\xe2\x80\x93Mart, or had been\nauthorized by Wal\xe2\x80\x93Mart,\xe2\x80\x9d and (2) \xe2\x80\x9cTo determine whether (and if so, to what extent) exposure to Mr.\nSmith\xe2\x80\x99s designs would generate dilution via tarnishment.\xe2\x80\x9d\n[4] Deeming it impractical to test all of Smith\xe2\x80\x99s designs, Jacoby chose instead to test two products\nas representative of all of Smith\xe2\x80\x99s allegedly infringing products\xe2\x80\x94the white t-shirt with the word\n\xe2\x80\x9cWAL*OCAUST\xe2\x80\x9d in blue font over the Nazi eagle clutching a yellow smiley face, and another white tshirt that depicted the word \xe2\x80\x9cWAL\xe2\x80\x93QAEDA\xe2\x80\x9d in a blue font as part of the phrase \xe2\x80\x9cSUPPORT OUR\nTROOPS. BOYCOTT WAL\xe2\x80\x93QAEDA.\xe2\x80\x9d\n[5] He also tested consumer reactions to \xe2\x80\x9ccontrol\xe2\x80\x9d designs, which he compared to consumer\nresponses to the Walocaust and Wal\xe2\x80\x93Qaeda designs. To develop the control for the Walocaust design,\nJacoby replaced the star with a hyphen and removed the smiley face from the yellow circle, and for\nboth the Walocaust and Wal\xe2\x80\x93Qaeda controls, he substituted \xe2\x80\x9cZ\xe2\x80\x9d for \xe2\x80\x9cW.\xe2\x80\x9d These substitutions resulted in\ncontrol concepts entitled \xe2\x80\x9cZal-ocaust\xe2\x80\x9d and \xe2\x80\x9cZal\xe2\x80\x93Qaeda.\xe2\x80\x9d\n[6] Jacoby engaged a market research firm to test each of the t-shirt designs in (1) a \xe2\x80\x9cproduct\xe2\x80\x9d\nstudy intended to test for post-purchase confusion and tarnishment, and (2) a \xe2\x80\x9cwebsite\xe2\x80\x9d study\nintended to test for point-of-sale confusion and tarnishment.15\n\n15\n\nThis resulted in eight test cells:\n\n391\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[7] The market research company conducted the studies in a mall-intercept format. The\ncompany\xe2\x80\x99s researchers would approach people who appeared to be thirteen years old or older and ask\na series of screening questions.16 To qualify for either survey, the respondent was required to be at\nleast thirteen years old17 and must have in the past year bought, or would in the coming year consider\nbuying, bumper stickers, t-shirts or coffee mugs with words, symbols or designs on them. To qualify for\nthe \xe2\x80\x9cwebsite\xe2\x80\x9d study, the respondent must also have (1) used the Internet in the past month to search\nfor information about products or services and (2) either (a) in the past year used the Internet to buy\nor to search for information about bumper stickers, t-shirts or coffee mugs with words, symbols or\ndesigns on them, or (b) in the coming year would consider buying over the Internet bumper stickers, tshirts or coffee mugs with words, symbols or designs on them.18 If the respondent met the\nqualifications, he or she was asked to go with the researcher to the mall\xe2\x80\x99s enclosed interviewing facility\nfor a five-minute interview.19\n[8] For the \xe2\x80\x9cproduct\xe2\x80\x9d study, the interviewers presented to each respondent one of the four t-shirts\ndescribed above and asked the respondent to imagine seeing someone wearing the shirt. The\ninterviewer then asked a series of questions.\n[9] The first three sets of questions were designed to test for consumer confusion. The\ninterviewers were directed to ask each of the \xe2\x80\x9clikelihood of confusion\xe2\x80\x9d questions sequentially unless\nthe respondent answered \xe2\x80\x9cSears,\xe2\x80\x9d \xe2\x80\x9cWal\xe2\x80\x93Mart,\xe2\x80\x9d \xe2\x80\x9cYoungblood\xe2\x80\x99s\xe2\x80\x9d or \xe2\x80\x9cK\xe2\x80\x93Mart,\xe2\x80\x9d in which case the\ninterviewer was to record the answer, skip the remaining confusion questions, and go directly to the\ntarnishment questions.\n[10] In the consumer confusion series, the first set of questions tested for confusion as to source.\nThe interviewer would ask \xe2\x80\x9cwhich company or store\xe2\x80\x9d the respondent thought \xe2\x80\x9cput out\xe2\x80\x9d the shirt, and if\nthe respondent named a company or store, the interviewer then asked what about the shirt made the\nrespondent think the shirt was \xe2\x80\x9cput out\xe2\x80\x9d by that company or store. The second set of questions, which\ndealt with confusion as to connection or relationship, asked the respondent whether the company or\nstore that \xe2\x80\x9cput out\xe2\x80\x9d the shirt had some \xe2\x80\x9cbusiness connection or relationship with another company\xe2\x80\x9d\nand if so, with what company. The respondent was then asked why he or she believed the companies\nhad a business connection or relationship. A third set of questions, aimed at testing for confusion as to\n\n16 The research company conducted the surveys in malls in Trumbull, Connecticut; Philadelphia,\nPennsylvania; Youngstown, Ohio; Chicago Ridge, Illinois; Louisville, Kentucky; San Antonio, Texas;\nColorado Springs, Colorado; and Northridge, California. The website survey was also conducted in\nPortland, Oregon.\n\nBecause CafePress allowed only consumers over the age of thirteen to purchase from its site,\nJacoby similarly limited his universe of respondents.\n17\n\nRespondents who worked at an advertising agency, a market research firm or a business\nlocated in the mall (or had an immediate family member who did) were excluded, as were people who\nnormally wore eyeglasses or contact lenses but were not wearing them at the time of the screening.\n18\n\nThe screening questionnaire provided to the Court indicates that the respondents who then\nparticipated in the surveys were given a monetary reward. Neither Jacoby\xe2\x80\x99s report nor any of the\nsupporting survey documents disclosed the amount of the reward.\n19\n\n392\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nauthorization or sponsorship, asked whether the company that \xe2\x80\x9cput out\xe2\x80\x9d the shirt needed permission\nfrom another company to do so, and if so, which company.\n[11] Finally, if the respondent had not yet answered \xe2\x80\x9cSears,\xe2\x80\x9d \xe2\x80\x9cWal\xe2\x80\x93Mart,\xe2\x80\x9d \xe2\x80\x9cYoungblood\xe2\x80\x99s\xe2\x80\x9d or \xe2\x80\x9cK\xe2\x80\x93\nMart\xe2\x80\x9d to any of the first three sets of questions, he or she was then asked what the shirt made him or\nher \xe2\x80\x9cthink of\xe2\x80\x9d and then \xe2\x80\x9cwhich company or store\xe2\x80\x9d the shirt brought to mind.\n[12] The fifth set of questions, which tested for dilution by tarnishment, were asked in reference\nto any company or store the respondent mentioned in his or her answers to the first four sets of\nquestions. The first question asked whether seeing the shirt made the respondent more or less likely to\nshop at the store he or she had named, and the second question asked whether the perceived\nassociation with the store made the respondent more or less likely to buy the shirt.\n[13] The interviews for the website study were much like those for the product study, except that\ninstead of being shown the actual shirts, the respondents were exposed to a simulation of Smith\xe2\x80\x99s\nWalocaust CafePress homepage, his Wal\xe2\x80\x93Qaeda CafePress homepage or the associated control\nhomepage.20 In each of the simulations, all of the hyperlinks were removed from the homepages except\nfor the one hyperlink associated with the t-shirt that Jacoby had decided to test.\n[14] Jacoby directed the interviewers to begin each website interview by providing a URL to the\nrespondent and asking the respondent to imagine that the URL was a search term the respondent had\nheard or seen somewhere and wanted to look up on the Internet. The interviewer would then have the\nrespondent sit at a computer and type the URL into the browser. The URL would take the respondent\nto the simulated home page for testing.\n[15] The interviewer would then direct the respondent to look at the screen and scroll down the\npage \xe2\x80\x9cas [he or she] normally would\xe2\x80\x9d and click through to the first t-shirt on the screen. The\nrespondent was then directed to click on the \xe2\x80\x9cview larger\xe2\x80\x9d box and look at the shirt as though he or she\n\xe2\x80\x9cfound it interesting and [was] considering whether or not to order it . . . .\xe2\x80\x9d The interviewer would then\nask the respondent exactly the same series of questions posed in the product study, including the same\nskip pattern to be applied in the event that the respondent mentioned Sears, Wal\xe2\x80\x93Mart, Youngblood\xe2\x80\x99s\nor K\xe2\x80\x93Mart in response to any of the consumer confusion questions.\n[16] In order to be tallied as \xe2\x80\x9cconfused,\xe2\x80\x9d the respondent had to meet two tests. First, the\nrespondent had to indicate either that the shirt came from Wal\xe2\x80\x93Mart (first confusion series), came\nfrom a company that had some business connection or relationship with Wal\xe2\x80\x93Mart (second confusion\nseries), or came from a source that required or obtained permission from Wal\xe2\x80\x93Mart (third confusion\nseries). Second, the respondent had to indicate that his or her reason for that understanding was either\nbecause of the prefix \xe2\x80\x9cWal,\xe2\x80\x9d the name (or equivalent), the smiley face, or the star after the prefix \xe2\x80\x9cWal.\xe2\x80\x9d\nThus, a respondent who believed that there was a connection between Wal\xe2\x80\x93Mart and the t-shirt that\nhe or she was shown but who did not mention the prefix \xe2\x80\x9cWal,\xe2\x80\x9d the name (or equivalent), the smiley\nface, or the star, would not be counted as \xe2\x80\x9cconfused.\xe2\x80\x9d\n[17] Any respondent who perceived an association between Wal\xe2\x80\x93Mart and the t-shirt that he or\nshe was shown and reported that the perceived association either made the respondent less likely to\nshop at Wal\xe2\x80\x93Mart or more likely to buy that t-shirt was deemed to satisfy the requirement for dilution.\n[18] The field interviewers returned 322 completed interviews for the product study and 335 for\nthe website study. Three responses were eliminated from the sample after the research company\nconducted a review to ensure that each respondent was qualified to participate in the study and that\nthe questionnaires had been completed properly. The research company then sent the name and\n\nThe simulations were reproduced on a compact disc; the respondents did not view Smith\xe2\x80\x99s\nactual web pages on the Internet.\n20\n\n393\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nphone number of each of the interview respondents to an independent telephone interviewing service\nfor validation, which consisted of calling each mall-intercept respondent to ensure that the respondent\nhad actually participated in the study and that his or her answers were accurately recorded.\n[19] In the product study, 181 respondents (fifty-six percent of the usable sample) were\npositively validated, and sixteen respondents (about five percent) reported either different answers to\nthe survey questions or claimed not to have participated in the study. The remainder either could not\nbe reached during the twenty days Jacoby allocated for the validation or refused to respond to the\nvalidation survey.\n[20] Jacoby reported the results of those respondents who were positively validated plus the\nresults from the respondents who could not be reached or would not respond to the validation survey,\nand he eliminated the results of the respondents who provided non-affirming answers during the\nvalidation process. This resulted in 305 reported responses to the product study: seventy-three for the\nWal*ocaust concept, seventy-six for the Wal\xe2\x80\x93Qaeda concept, seventy-nine for the Zal-ocaust concept,\nand seventy-seven for the Zal\xe2\x80\x93Qaeda concept.\n[21] In the website study, 169 respondents (fifty-one percent of the usable sample) were\npositively validated, and forty-six respondents (about fourteen percent) reported either different\nanswers to the survey questions or claimed not to have participated in the study. The remainder either\ncould not be reached during the twenty days Jacoby allocated for the validation or refused to respond\nto the validation survey.\n[22] As he did in the product study, Jacoby reported the results of those respondents who were\npositively validated plus the results from the respondents who could not be reached or would not\nrespond to the validation survey, and he eliminated the results of the respondents who provided nonaffirming answers during the validation process. This resulted in 287 reported responses to the\n{website} study: seventy for the Wal*ocaust concept, seventy-eight for the Wal\xe2\x80\x93Qaeda concept, sixtynine for the Zal-ocaust concept, and seventy for the Zal\xe2\x80\x93Qaeda concept.\n[23] Jacoby reported that the survey reflected high levels of consumer confusion and dilution by\ntarnishment. He claimed that the post-purchase confusion \xe2\x80\x9cproduct study\xe2\x80\x9d indicated a likelihood of\nconfusion in nearly forty-eight percent of the respondents and that the point-of-sale confusion\n\xe2\x80\x9cwebsite\xe2\x80\x9d study indicated a likelihood of confusion in almost forty-one percent of the respondents.21\nJacoby also claimed that the \xe2\x80\x9cdilution\xe2\x80\x9d study indicated that almost twelve percent of the respondents\nwere less likely to shop at Wal\xe2\x80\x93Mart after seeing Smith\xe2\x80\x99s designs.\nb. Evidentiary Objections\n[24] Smith moves to exclude Wal\xe2\x80\x93Mart\xe2\x80\x99s expert report. He claims that Jacoby did not have the\nrequisite Internet expertise to conduct the web-based \xe2\x80\x9cpoint-of-sale\xe2\x80\x9d portion of this particular study\nand that several aspects of Jacoby\xe2\x80\x99s methodology affecting both portions of the study were faulty; thus,\nhe contends, Jacoby\xe2\x80\x99s study is \xe2\x80\x9ctoo deeply flawed to be considered . . . .\xe2\x80\x9d\n[25] Wal\xe2\x80\x93Mart argues that the Jacoby test was performed by a competent expert according to\nindustry standards and therefore is valid. Wal\xe2\x80\x93Mart further contends that the expert witnesses Smith\npresents in rebuttal are not experts in the area of consumer-goods \xe2\x80\x9clikelihood of confusion\xe2\x80\x9d trademark\nstudies, and therefore their testimony is irrelevant and should be excluded.\n[26] Whether a given survey constitutes acceptable evidence depends on the survey\xe2\x80\x99s ability to\nsatisfy the demands of Federal Rule of Evidence 703, which requires consideration of the \xe2\x80\x9cvalidity of\nthe techniques employed.\xe2\x80\x9d 233\xe2\x80\x9334 FED. JUD. CTR., REFERENCE MANUAL ON SCI. EVIDENCE (2d\nJacoby arrived at these numbers by averaging the net survey results for the Walocaust and\nWal\xe2\x80\x93Qaeda t-shirts.\n21\n\n394\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\ned.2002) (explaining that in the context of surveys for litigation purposes, \xe2\x80\x9c[t]he inquiry under Rule\n703[, which] focuses on whether facts or data are \xe2\x80\x98of a type reasonably relied upon by experts in the\nparticular field in forming opinions or inferences upon the subject\xe2\x80\x99 . . . becomes, \xe2\x80\x98Was the . . . survey\nconducted in accordance with generally accepted survey principles, and were the results used in a\nstatistically correct way?\xe2\x80\x99\xe2\x80\x9d). See also BFI Waste Sys. of N. Am. v. Dekalb County, 303 F.Supp.2d\n1335,1346 (N.D.Ga.2004) (noting that the opposing party could have challenged an expert witness\xe2\x80\x99s\nreference to a recent survey by questioning whether the survey methodology satisfied Rule 703).\n[27] The Eleventh Circuit has held that alleged technical deficiencies in a survey presented in a\nLanham Act action affect the weight to be accorded to the survey and not its admissibility. Jellibeans,\nInc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 844 (11th Cir. 1983). Other courts have held that a\nsignificantly flawed survey may be excludable as evidence under either Rule 403 (the rule barring\nevidence that is more prejudicial than probative) or Rule 702 (the rule barring unreliable expert\ntestimony). Citizens Fin. Group, Inc. v. Citizens Nat\xe2\x80\x99l Bank, 383 F.3d 110, 188\xe2\x80\x9321 (3d Cir. 2004) (finding\nthat the district court properly excluded survey evidence under Rules 702 and 403 where the survey\ncontained flaws that were not merely technical, but were so damaging to the reliability of the results as\nto be \xe2\x80\x9cfatal\xe2\x80\x9d: the survey relied on an improper universe and its questions were imprecise); Malletier v.\nDooney & Bourke, Inc., 525 F.Supp.2d 558, 562\xe2\x80\x9363 (S.D.N.Y.2007). Even when a party presents an\nadmissible survey purporting to show consumer confusion, however, the survey \xe2\x80\x9cdoes not itself create\na triable issue of fact.\xe2\x80\x9d Mattel, Inc. v. MCA Records, Inc., 28 F.Supp.2d 1120, 1133 (C.D.Cal.1998) (citing\nUniversal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 118 (2d Cir. 1984), which found a survey \xe2\x80\x9cso\nbadly flawed that it cannot be used to demonstrate the existence of a question of fact of the likelihood\nof consumer confusion\xe2\x80\x9d). Accord Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 518 (6th\nCir. 2007); Scott Fetzer Co. v. House of Vacuums, Inc., 381 F.3d 477, 488 (5th Cir. 2004) (holding that a\ncourt may disregard survey evidence if the survey contains such serious flaws that any reliance on its\nresults would be unreasonable).\n[28] To ground a survey as trustworthy, its proponent must establish foundation evidence\nshowing that\n(1) the \xe2\x80\x98universe\xe2\x80\x99 was properly defined, (2) a representative sample of that universe was\nselected, (3) the questions to be asked of interviewees were framed in a clear, precise\nand non-leading manner, (4) sound interview procedures were followed by competent\ninterviewers who had no knowledge of the litigation or the purpose for which the survey\nwas conducted, (5) the data gathered was accurately reported, (6) the data was analyzed\nin accordance with accepted statistical principles and (7) objectivity of the entire process\nwas assured.\nToys R Us, Inc. v. Canarsie Kiddie Shop, 559 F.Supp. 1189, 1205 (D.C.N.Y.1983) (citing MANUAL FOR\nCOMPLEX LITIG., 116 (5th ed.1981), 4 LOUISELL & MUELLER, FED. EVIDENCE \xc2\xa7 472 (1979), and J.\nTHOMAS MCCARTHY, TRADEMARKS & UNFAIR COMPETITION \xc2\xa7 32:53 (1973)); accord Rush Indus.,\nInc. v. Garnier LLC, 496 F.Supp.2d 220, 227 (E.D.N.Y.2007). Failure to satisfy any of the listed criteria\nmay seriously compromise the survey\xe2\x80\x99s impact on a court\xe2\x80\x99s likelihood of confusion evaluation. Id.\n[29] Smith cites several grounds for excluding the Jacoby survey. He argues that the survey is\ninadmissible because it (1) failed to identify the relevant consumer universe or used a consumer\nuniverse that was substantially overbroad; (2) failed to replicate shopping conditions as consumers\nwould encounter them in the marketplace; (3) was improperly leading; (4) violated the survey\nstructure protocol necessary to comply with double-blind standards; and (5) failed to establish a\nrelevant factual basis for Wal\xe2\x80\x93Mart\xe2\x80\x99s dilution by tarnishment claims. Smith further argues that even if\nthe Court admits the survey, its consideration should be limited to only the two tested designs, despite\nJacoby\xe2\x80\x99s claim that they are representative of all the designs Wal\xe2\x80\x93Mart seeks to enjoin.\n\n395\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[30] As an initial matter, the Court observes that Smith does not take issue with Jacoby\xe2\x80\x99s\nqualifications to design and conduct a consumer confusion survey and to analyze its results. It is\nundisputed that Jacoby is a nationally renowned trademark survey expert who has testified hundreds\nof times. Smith contends, however, that Jacoby was unqualified to conduct this particular survey\nbecause he \xe2\x80\x9clacks knowledge, experience, [and] sophistication\xe2\x80\x9d with regard to products marketed\nexclusively over the Internet and that as a result Jacoby\xe2\x80\x99s survey protocol contained significant flaws.\n[31] Based upon its own review of Jacoby\xe2\x80\x99s education and experience, the Court concludes that\nJacoby is qualified to design and conduct a consumer survey and to testify about its results. To the\nextent that Jacoby\xe2\x80\x99s purported lack of experience with surveys concerning goods sold exclusively\nonline may have led him to test the wrong universe or to fail to replicate the shopping experience, as\nSmith has alleged, these factors will be examined when the Court evaluates the trustworthiness of the\nsurvey.\ni. Web\xe2\x80\x93Related Challenges\n[32] In undertaking to demonstrate likelihood of confusion in a trademark infringement case by\nuse of survey evidence, the \xe2\x80\x9cappropriate universe should include a fair sampling of those purchasers\nmost likely to partake of the alleged infringer\xe2\x80\x99s goods or services.\xe2\x80\x9d Amstar Corp. v. Domino\xe2\x80\x99s Pizza, Inc.,\n615 F.2d 252, 264 (5th Cir. 1980). Selection of the proper universe is one of the most important factors\nin assessing the validity of a survey and the weight that it should receive because \xe2\x80\x9cthe persons\ninterviewed must adequately represent the opinions which are relevant to the litigation.\xe2\x80\x9d Id. . . . .\n[33] Similarly, \xe2\x80\x9c[a] survey that fails to adequately replicate market conditions is entitled to little\nweight, if any.\xe2\x80\x9d Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 452 F.Supp.2d 772, 783\n(W.D.Mich.2006), aff\xe2\x80\x99d, 502 F.3d 504 (6th Cir. 2007) (quoting Wells Fargo & Co., 293 F.Supp.2d at 766).\nAlthough \xe2\x80\x9c[n]o survey model is suitable for every case . . . a survey to test likelihood of confusion must\nattempt to replicate the thought processes of consumers encountering the disputed mark or marks as\nthey would in the marketplace.\xe2\x80\x9d . . . .\n[34] Smith hired Dr. Alan Jay Rosenblatt as a rebuttal witness to point out Internet-related\ndeficiencies in Jacoby\xe2\x80\x99s survey methodology\xe2\x80\x94particularly deficiencies in universe selection and\nreplication of marketplace conditions\xe2\x80\x94that he claims resulted from Jacoby\xe2\x80\x99s erroneous assumptions\nabout how people reach and interact with websites.\n....\n(a) Survey Universe\n[35] . . . . Wal\xe2\x80\x93Mart maintains that Jacoby\xe2\x80\x99s universe selection was proper. Smith counters that it\nwas overly broad.\n[36] Although the universe Jacoby selected would include purchasers of Smith\xe2\x80\x99s Walocaust or\nWal\xe2\x80\x93Qaeda merchandise, the Court finds that it is significantly overbroad. Because Smith\xe2\x80\x99s\nmerchandise was available only through his CafePress webstores and the links to his CafePress\nwebstores from his Walocaust and Wal\xe2\x80\x93Qaeda websites, it is likely that only a small percentage of the\nconsumers in the universe selected by Jacoby would be potential purchasers of Smith\xe2\x80\x99s products. A\nsurvey respondent who purchases bumper stickers, t-shirts or coffee mugs with words, symbols or\ndesigns on them may buy such merchandise because the imprint represents his or her school,\ncompany, favorite sports team, cartoon character, social group, or any of hundreds of other interests or\naffiliations; he or she may have no interest at all in purchasing merchandise containing messages about\nWal\xe2\x80\x93Mart, pro or con. The respondent may buy from brick-and-mortar stores or well-known retailers\nwith Internet storefronts without being aware of Smith\xe2\x80\x99s website or CafePress, or may have little\ninterest in buying such merchandise over the Internet at all. Therefore, a respondent who clearly falls\nwithin Jacoby\xe2\x80\x99s survey universe may nevertheless have no potential to purchase Smith\xe2\x80\x99s imprinted\nproducts. See Leelanau Wine Cellars, 452 F.Supp.2d at 782.\n396\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[37] Other courts have similarly criticized surveys\xe2\x80\x94including surveys Jacoby conducted in other\ntrademark infringement cases\xe2\x80\x94that failed to properly screen the universe to ensure that it was\nlimited to respondents who were potential purchasers of the alleged infringer\xe2\x80\x99s product.\n[38] For example, in Weight Watchers Int\xe2\x80\x99l, Inc. v. Stouffer Corp., 744 F.Supp. 1259 (S.D.N.Y.1990),\nWeight Watchers sued Stouffer for trademark infringement after Stouffer launched an advertising\ncampaign that suggested that new exchange listings on Stouffer\xe2\x80\x99s Lean Cuisine packages would allow\nadherents to the Weight Watchers program to use Lean Cuisine entrees in their diets. Id. at 1262.\nStouffer\xe2\x80\x99s likelihood of confusion survey, also conducted by Jacoby, identified the universe as \xe2\x80\x9cwomen\nbetween the ages of 18 and 55 who have purchased frozen food entrees in the past six months and\nwho have tried to lose weight through diet and/or exercise in the past year.\xe2\x80\x9d Id. at 1272. The court\nfound that the universe was overbroad because the screener had not limited it to dieters, but also had\nincluded respondents who may have tried to lose weight by exercise only. The court concluded that as\na result the survey likely included respondents who were not potential consumers, and because\n\xe2\x80\x9c[r]espondents who are not potential consumers may well be less likely to be aware of and to make\nrelevant distinctions when reading ads than those who are potential consumers,\xe2\x80\x9d that portion of the\nsurvey universe may have failed to make \xe2\x80\x9ccrucial\xe2\x80\x9d distinctions in the likelihood of confusion testing. Id.\nat 1273.\n....\n(b) Shopping Experience\n[39] To be valid for the purposes of demonstrating actual confusion in a trademark infringement\nsuit, it is necessary for a survey\xe2\x80\x99s protocol to take into account marketplace conditions and typical\nconsumer behavior so that the survey may as accurately as possible measure the relevant \xe2\x80\x9cthought\nprocesses of consumers encountering the disputed mark . . . as they would in the marketplace.\xe2\x80\x9d Simon\nProp. Group, 104 F.Supp.2d at 1038; accord WE Media, Inc. v. Gen. Elec. Co., 218 F.Supp.2d 463, 474\n(S.D.N.Y.2002).\n[40] Smith contends that Jacoby\xe2\x80\x99s point-of-purchase study, which purported to measure\nconsumer confusion over merchandise that Smith sold exclusively online, was improperly designed\nbecause it failed to take into account typical consumer Internet behavior. Wal\xe2\x80\x93Mart does not\ncontradict the expert testimony Smith proffers regarding consumer Internet behavior but instead\nmaintains that it is irrelevant.\n[41] Jacoby\xe2\x80\x99s point-of-purchase survey called for interviewers to provide each respondent with\nspecific \xe2\x80\x9csearch terms\xe2\x80\x9d that would take the respondent to a simulation of one of Smith\xe2\x80\x99s websites. The\nrespondent was asked to pretend that the resulting web page was of interest and to act accordingly\n(looking at the page and scrolling through it as the respondent would \xe2\x80\x9cnormally\xe2\x80\x9d do), and then was\ndirected to scroll down the page, below the first screen, and click on a specific t-shirt link. The\nrespondent was not asked what message he or she took from the website or whether the website was\nin fact of interest. The survey protocol also gave the respondent no choice but to scroll down to the\nnext screen and click on the t-shirt link, the only live link in the simulation.\n[42] In presenting Smith\xe2\x80\x99s website and directing the survey respondents to click on one specific tshirt link, Jacoby\xe2\x80\x99s survey design presumed that all consumers who might be interested in a printed tshirt, mug or bumper sticker would be equally likely to happen across Smith\xe2\x80\x99s designs, regardless of\nthe respondent\xe2\x80\x99s level of interest in the messages on Smith\xe2\x80\x99s webpage.\n[43] Although, as Wal\xe2\x80\x93Mart points out, it is possible that some consumers may view web pages\nrandomly and may scroll through and clink on links on pages that are not of interest to them, the Court\nfinds that the survey protocol did not sufficiently reflect actual marketplace conditions or typical\nconsumer shopping behavior and therefore was unlikely to have elicited a shopping mindset that\nwould have allowed Jacoby to accurately gauge actual consumer confusion.\n\n397\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[44] Because Smith\xe2\x80\x99s merchandise was available only through his CafePress webstores and the\nlinks to his CafePress webstores from his Walocaust and Wal\xe2\x80\x93Qaeda websites, it is unlikely that many\nconsumers randomly happen across Smith\xe2\x80\x99s products. According to Rosenblatt\xe2\x80\x99s uncontroverted\ntestimony, people do not come to websites randomly, and they do not move within websites randomly.\nA great majority of Internet users arrive at a particular website after searching specific terms via an\nInternet search engine or by following links from another website. The user makes a judgment based\non contextual cues\xe2\x80\x94what is shown about a prospective website from the text of a search result or\nwhat is said about a prospective website in the hyperlinked words and surrounding text of the website\ncurrently being viewed\xe2\x80\x94in determining where to surf next. He moves from website to website, he\nmoves within websites, and he performs actions such as signing a petition\xe2\x80\x94or buying a product\xe2\x80\x94by\nmaking choices based on what he sees and whether what he sees leads him to believe that going to the\nnext page or following a link to another website will bring him to something he is interested in seeing,\ndoing or buying.\n[45] In the marketplace, the visitor would be presented with a screen full of Smith\xe2\x80\x99s anti-WalMart messages. Consumers who were interested in the messages on Smith\xe2\x80\x99s web pages would be\nmotivated to choose the links that would eventually lead to his products, while those who were\nuninterested in Smith\xe2\x80\x99s messages would simply leave the page. Because the survey protocol directed\nthe respondents to \xe2\x80\x9cpretend\xe2\x80\x9d to be interested in Smith\xe2\x80\x99s anti-Wal-Mart homepages and then directed\nthem to click on a specific link, there is no assurance that the respondent actually read the homepage\nor would have been interested enough in it to be motivated to click on the t-shirt link. See Gen. Motors\nCorp. v. Cadillac Marine & Boat Co., 226 F.Supp. 716, 737 (D.C.Mich.1964) (observing that because\nsurvey respondents had little interest the allegedly infringing product, it followed that their inspection\nof the advertisement shown to them as part of the survey protocol was \xe2\x80\x9ccasual, cursory and careless\xe2\x80\x9d\nand therefore of little probative value).\n[46] Other courts have similarly criticized surveys that failed to adequately replicate the shopping\nexperience. In Gen. Motors Corp., 226 F.Supp. at 737, the court criticized the proffered survey because it\ndid not take into account typical consumer behavior:\nActual purchasers of a boat would not hastily read an advertisement, nor would a\npotential purchaser read it carelessly. A reasonable man, anticipating the purchase of a\nboat, would peruse the material at least well enough to note the manufacturer as being\n\xe2\x80\x9cCadillac Marine & Boat Company, 406 Seventh Street, Cadillac, Michigan.\xe2\x80\x9d Also, most\nbuyers would want to see the boat itself before making a purchase.\nAlthough the purchase of a t-shirt obviously does not involve the same level of financial\nconsideration a consumer typically makes when buying a boat, a consumer is likely to consider the\nmeaning of an imprinted t-shirt such as Smith\xe2\x80\x99s before wearing it in public. A reasonable person who\nwas considering buying a t-shirt that references Al\xe2\x80\x93Qaeda or the Holocaust would likely read the\nassociated webpage at least well enough to see the harsh criticism of Wal\xe2\x80\x93Mart and the prominent\ndisclaimer dispelling any notion of a possible association with the company.\n(c) Impact of Internet\xe2\x80\x93Related Flaws on Survey\xe2\x80\x99s Evidentiary Value\n[47] For all of these reasons, the survey Jacoby conducted for Wal\xe2\x80\x93Mart is of dubious value as\nproof of consumer confusion both because its survey universe was overinclusive and because its\ndesign failed to approximate real-world marketplace conditions. Jacoby\xe2\x80\x99s survey is subject to the same\ncriticisms as his Weight Watchers survey . . . : Jacoby failed to screen the respondents to ensure that\nthey would likely be aware of and make relevant distinctions concerning the specific product. See\nWeight Watchers, 744 F.Supp. at 1273. By failing to approximate actual market conditions, Jacoby\nfurther ensured that the survey would not \xe2\x80\x9creplicate the thought processes of [likely] consumers [of\nthe junior user\xe2\x80\x99s merchandise] encountering the disputed mark . . . as they would in the marketplace.\xe2\x80\x9d\nSee Simon Prop. Group, 104 F.Supp.2d at 1038; accord Gen. Motors Corp., 226 F.Supp. at 737. Therefore,\n398\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nthe Court must consider these flaws in determining whether the survey is admissible and, if so, what\nevidentiary weight to afford it.\nii. Structural Flaws\n[48] Smith further alleges that the Jacoby study suffers from several structural flaws that diminish\nthe trustworthiness of the results of both the web-based point-of-sale portion and the post-purchase tshirt portion of the survey. He contends that (1) both the structure of the survey and the wording of\nseveral questions suggested the answers Wal\xe2\x80\x93Mart wanted, and (2) the survey results should not be\npresumed to represent consumer reaction to any of the challenged merchandise that was not actually\ntested.\n[49] Smith hired Dr. Richard Teach as a rebuttal witness to point out deficiencies in Jacoby\xe2\x80\x99s\nwebsite study survey methodology. Teach is an emeritus marketing professor and former dean at the\nGeorgia Tech School of Business who has designed and conducted over one hundred surveys, including\nabout fifty buyer surveys, and has taught survey methodology, statistics and related courses. Teach\ntestifies that he agrees with Rosenblatt\xe2\x80\x99s testimony and also offers criticisms of his own. Smith uses\nTeach\xe2\x80\x99s survey expertise to support his Daubert argument that because the survey protocol contains\nmultiple technical flaws, the results are unreliable and hence should be afforded very light evidentiary\nvalue if not completely excluded from evidence.\n[50] Wal\xe2\x80\x93Mart moves to exclude Teach\xe2\x80\x99s testimony, supporting its motion with arguments much\nlike those it used in its motion to exclude Rosenblatt\xe2\x80\x99s testimony . . . .\n[51] The Court finds . . . that his extensive experience designing and evaluating surveys qualifies\nhim to provide testimony about technical flaws in the design of Jacoby\xe2\x80\x99s study and the impact of those\nflaws on the trustworthiness of Jacoby\xe2\x80\x99s reported results.\n[52] [T]o the extent that Teach\xe2\x80\x99s testimony focuses on general survey methodology, whether\nJacoby\xe2\x80\x99s survey protocol deviated from standard methodology, and what impact any deviations may\nhave had on the trustworthiness of Jacoby\xe2\x80\x99s reported results, Wal\xe2\x80\x93Mart\xe2\x80\x99s motion to exclude it is\nDENIED.\n(a) Leading Survey Structure and Questions\n[53] Smith argues that both the structure of the survey and the wording of several questions\nsuggested the answers Wal\xe2\x80\x93Mart wanted. Wal\xe2\x80\x93Mart, of course, contends that Jacoby\xe2\x80\x99s survey\npresented no such risk.\n(i) Double\xe2\x80\x93Blind Survey Design\n[54] To ensure objectivity in the administration of the survey, it is standard practice to conduct\nsurvey interviews in such a way as to ensure that \xe2\x80\x9cboth the interviewer and the respondent are blind\nto the sponsor of the survey and its purpose.\xe2\x80\x9d REFERENCE MANUAL at 266. The parties agree that\ndouble-blind conditions are essential because if the respondents know what the interviewer wants,\nthey may try to please the interviewer by giving the desired answer, and if the interviewer knows what\nhis employer wants, he may consciously or unconsciously bias the survey through variations in the\nwording or the tone of his questions. See id.\n[55] Smith argues that the skip pattern included in Jacoby\xe2\x80\x99s survey hinted to the interviewers that\nWal\xe2\x80\x93Mart was the survey\xe2\x80\x99s sponsor. The survey protocol directed the interviewers to skip to the final\ntarnishment question, question five, if the respondent gave any one of four specific store names\xe2\x80\x94\nSears, Wal\xe2\x80\x93Mart, K\xe2\x80\x93Mart or Youngblood\xe2\x80\x99s\xe2\x80\x94to any of the first three questions. Similarly, if the\nrespondent did not give any of those four names in response to the first three questions, the\ninterviewer was directed to ask \xe2\x80\x9cwhat other companies or stores\xe2\x80\x9d the stimulus t-shirt brought to mind,\nand only if the respondent answered with one of the four names was the interviewer to ask question\nfive, the dilution question. The text on both of the tested t-shirts began with the prefix \xe2\x80\x9cWal,\xe2\x80\x9d and Wal\xe2\x80\x93\nMart was the only one of the four listed names that began with that prefix.\n399\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[56] Smith argues that this series of questions combined with the t-shirt stimulus subtly informed\nthe interviewers not only that a store name was desired, but also that a particular store name\xe2\x80\x94WalMart\xe2\x80\x94was sought. Thus, Smith contends, because the survey failed to meet the double-blind\nrequirement, it was not conducted in an objective manner and must be excluded for what must\ntherefore be biased results. See REFERENCE MANUAL at 248 (noting that poorly formed questions\nmay lead to distorted responses and increased error and therefore may be the basis for rejecting a\nsurvey).\n[57] Wal\xe2\x80\x93Mart argues that the skip patterns followed proper protocol and that even if the\ninterviewers guessed that Wal\xe2\x80\x93Mart was involved, there could be no risk of bias because (1)\ninterviewers are professionally trained and adhere to extremely high ethical standards, and (2) it was\nimpossible to determine from the design of the study who sponsored the study and for which side of a\ndispute the survey evidence was to be proffered.\n[58] Based on the facts that (1) both of the tested t-shirts include the prefix \xe2\x80\x9cWal\xe2\x80\x9d and (2) the only\nstore on the specified list of four that included that same prefix was Wal\xe2\x80\x93Mart, it is safe to surmise that\nthe interviewers at least suspected that Wal\xe2\x80\x93Mart was involved in the survey in some manner. Aside\nfrom a common sense assumption that the party with deep pockets and reason to be insulted by the\ntested concepts was likely to have sponsored the research, however, the interviewers had no way to\nknow who was the proponent of the research and who was the opponent. Thus, although the survey\ndesign may have breached generally accepted double-blind protocol to some degree, because the\nbreach offered little risk of bias toward one party or the other the Court finds this issue to be of little\nimport in its trustworthiness determination.\n(ii) Leading Questions\n[59] Smith also argues that the wording of Jacoby\xe2\x80\x99s confusion questions was improperly leading.\nAlthough the challenged t-shirts were created and offered for sale by Charles Smith, an individual, via\nhis CafePress webstore, the survey asked about sponsorship only in the context of companies or stores,\nsuch as in the survey\xe2\x80\x99s lead question, which asked, \xe2\x80\x9c[W]hich company or store do you think puts out\nthis shirt?\xe2\x80\x9d Smith contends that this wording suggested to the respondent that the interviewer was\nlooking for the name of a company or store, which would lead the respondent away from the answer\nthat the shirt was put out by an individual who was criticizing a company. Wal\xe2\x80\x93Mart counters that\nbecause Smith\xe2\x80\x99s merchandise was sold through his CafePress webstores, the questions were accurately\nworded and thus not misleading.\n[60] The Court agrees with Smith that the disputed questions improperly led respondents to limit\ntheir answers to companies or stores. Though Smith did offer his merchandise through his CafePress\nwebstore, as Wal\xe2\x80\x93Mart argues, the Court finds this characterization disingenuous; the party Wal\xe2\x80\x93Mart\nsued for offering the Walocaust and Wal\xe2\x80\x93Qaeda merchandise for sale is not a company or a store, but\ninstead Charles Smith, an individual. Furthermore, Wal\xe2\x80\x93Mart has failed to point to any authority\nsupporting the use of the \xe2\x80\x9ccompany or store\xe2\x80\x9d language in a consumer \xe2\x80\x9clikelihood of confusion\xe2\x80\x9d apparel\nsurvey or any such surveys previously conducted by Jacoby. Thus, the Court must consider this\nweakness in determining the admissibility or evidentiary weight to be accorded the survey.\n(b) Representativeness\n(i) Testing Stimuli\n[61] Smith also argues that the Jacoby survey results should not be presumed to represent\nconsumer reaction to any of the challenged merchandise that was not actually tested. Jacoby limited\nhis surveys to testing two specific t-shirts (the Wal*ocaust smiley eagle shirt and the \xe2\x80\x9cSUPPORT OUR\nTROOPS\xe2\x80\x9d Wal\xe2\x80\x93Qaeda shirt), and the conclusions stated in his report were narrowly drawn to refer to\nthe tested t-shirts. At his deposition, however, he stated that because the tested shirts were\n\xe2\x80\x9creasonably representative\xe2\x80\x9d of all the shirts that included the prefix \xe2\x80\x9cWal\xe2\x80\x9d and the star, as in\n\n400\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nWal*ocaust, or the prefix \xe2\x80\x9cWal\xe2\x80\x9d and a hyphen, as in Wal\xe2\x80\x93Qaeda, his results could be extrapolated from\nthe tested t-shirts to all of the challenged t-shirts that shared those features.\n[62] Jacoby\xe2\x80\x99s own deposition testimony supplies a fitting framework for analyzing this issue.\nWhen declining to offer an opinion about whether consumers would also be confused over the\nsponsorship of Smith\xe2\x80\x99s Walocaust website, Jacoby stated that consumers respond differently to a given\nstimulus depending on the context in which is it presented, and because his survey tested only Smith\xe2\x80\x99s\nCafePress webstores, his survey provided him with no data upon which to answer the question about\nconsumer confusion regarding Smith\xe2\x80\x99s website.\n[63] Applying the same reasoning, the Court finds that test results from one Walocaust or Wal\xe2\x80\x93\nQaeda t-shirt provide no data upon which to estimate consumer confusion regarding another\nWalocaust or Wal\xe2\x80\x93Qaeda t-shirt. A consumer confused about the sponsorship of a shirt that says\n\xe2\x80\x9cSUPPORT OUR TROOPS [.] BOYCOTT WAL\xe2\x80\x93QAEDA\xe2\x80\x9d may easily grasp the commentary in the more\nstraightforwardly derogatory \xe2\x80\x9cWAL\xe2\x80\x93QAEDA[.] Freedom Haters ALWAYS\xe2\x80\x9d concept. Similarly, a\nconsumer confused over the sponsorship of a \xe2\x80\x9cWalocaust\xe2\x80\x9d shirt paired with an eagle and a smiley face\nmight have a crystal clear understanding of the word\xe2\x80\x99s meaning when it is superimposed over a\ndrawing of a Wal\xe2\x80\x93Mart\xe2\x80\x93like building paired with a sign that advertises family values and discounted\nalcohol, firearms, and tobacco or when it is presented along with the additional text \xe2\x80\x9cThe World is Our\nLabor Camp. Walmart Sucks.\xe2\x80\x9d As a result, this weakness will also impact the Court\xe2\x80\x99s assessment of the\nsurvey\xe2\x80\x99s evidentiary value.\n(ii) Sample Size and Selection\n[64] Smith also challenges the survey\xe2\x80\x99s small sample size; the Court additionally notes that\nJacoby\xe2\x80\x99s study employed mall-intercept methodology, which necessarily results in a non-random\nsurvey sample.\n[65] It is true that the majority of surveys presented for litigation purposes do, in fact, include\nsmall and non-random samples that are not projectible to the general population or susceptible to\nevaluations of statistical significance. 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION\n\xc2\xa7 32:165 (4th ed.2006). Courts have found that \xe2\x80\x9cnonprobability \xe2\x80\x98mall intercept\xe2\x80\x99 surveys are sufficiently\nreliable to be admitted into evidence,\xe2\x80\x9d reasoning that because \xe2\x80\x9cnonprobability surveys are of a type\noften relied upon by marketing experts and social scientists in forming opinions on customer attitudes\nand perceptions,\xe2\x80\x9d they may be admitted into evidence under Federal Rule of Evidence 703 as being \xe2\x80\x9cof\na type reasonably relied upon by experts in the particular field in forming opinions or inferences upon\nthe subject.\xe2\x80\x9d Id.\n[66] However, probability surveys are preferred to non-probability surveys. Id. (citing Jacob\nJacoby, Survey & Field Experimental Evidence, in SAUL KASSIN & LAWRENCE S. WRIGHTSMAN, JR.,\n185\xe2\x80\x9386 THE PSYCHOLOGY OF EVIDENCE AND TRIAL PROCEDURE (1985)). Jacoby himself has written\nthat \xe2\x80\x9cbehavioral science treatises on research methodology are in general agreement that, all other\nthings being equal, probability sampling is preferred to non-probability sampling.\xe2\x80\x9d Jacob Jacoby & Amy\nH. Handlin, Non\xe2\x80\x93Probability Sampling Designs for Litig. Surveys, 81 TRADEMARK REP. 169, 170 (Mar.Apr.1991) (citing KUL B. RAI AND JOHN C. BLYDENBURGH, POL. SCI. STATS.. 99 (Holbrook Press\nInc.1973) and quoting its comment that \xe2\x80\x9cnonprobability samples do not represent the population\ntruly, and the inapplicability of probability models as well as the impossibility of measuring or\ncontrolling random sampling error makes them even less attractive for scientific studies.\xe2\x80\x9d). Jacoby has\nsimilarly noted that although the vast majority of in-person surveys conducted for marketing purposes\nemploy non-probability design, marketers more typically use telephone interviews, a \xe2\x80\x9csizable\nproportion\xe2\x80\x9d of which employ probability designs. Jacoby & Handlin, 81 TRADEMARK REP. at 172 &\nTable 1 (estimating that sixty-nine percent of commercial marketing and advertising research is\nconducted by telephone).\n\n401\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n[67] Although courts typically admit nonprobability surveys into evidence, many recognize that\n\xe2\x80\x9cthe results of a nonprobability survey cannot be statistically extrapolated to the entire universe,\xe2\x80\x9d and\nthey consequently discount the evidentiary weight accorded to them. Id.; accord Am. Home Prods. Corp.\nv. Barr Labs., Inc., 656 F.Supp. 1058, 1070 (D.N.J.1987) (criticizing a Jacoby survey and noting, \xe2\x80\x9cWhile\nnon-probability survey results may be admissible, they are weak evidence of behavior patterns in the\ntest universe.\xe2\x80\x9d) Similarly, \xe2\x80\x9c[c]onducting a survey with a number of respondents too small to justify a\nreasonable extrapolation to the target group at large will lessen the weight of the survey.\xe2\x80\x9d 6\nMCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION \xc2\xa7 32:171.\n[68] This Court finds troubling the Jacoby survey\xe2\x80\x99s implicit assumption that a study protocol\ninsufficient for many marketing purposes and heavily criticized for behavioral science purposes is\nnevertheless sufficient to aid a factfinder in a legal action challenging free speech. Therefore, this factor\nwill also affect the Court\xe2\x80\x99s assessment of the survey\xe2\x80\x99s evidentiary value.\nc. Admissibility\n[69] Having identified numerous substantial flaws in Jacoby\xe2\x80\x99s survey, the Court must now\ndetermine whether the flaws limit the survey\xe2\x80\x99s evidentiary weight or are so substantial as to render\nthe survey irrelevant or unreliable and therefore inadmissible under Federal Rule of Evidence 403,\n702, or 703. See Starter Corp. v. Converse, Inc., 170 F.3d 286, 297 (2d Cir. 1999) (excluding a survey\nunder Rule 403 because the probative value of the survey was outweighed by potential prejudice and\nfurther noting that \xe2\x80\x9ca survey may be kept from the jury\xe2\x80\x99s attention entirely by the trial judge if it is\nirrelevant to the issues\xe2\x80\x9d) (citing C.A. May Marine Supply Co. v. Brunswick Corp., 649 F.2d 1049 (5th Cir.\n1981)); accord Ramdass v. Angelone, 530 U.S. 156, 173, 120 S.Ct. 2113, 147 L.Ed.2d 125 (2000) (listing\nnumerous cases in which courts have excluded or minimized survey evidence as unreliable).\n[70] Courts in the Eleventh Circuit typically decline to exclude likelihood of confusion surveys and\ninstead consider a survey\xe2\x80\x99s technical flaws when determining the amount of evidentiary weight to\naccord the survey. See, e.g., Jellibeans, 716 F.2d at 845; Nightlight Sys., Inc. v. Nitelites Franchise Sys., Inc.,\n2007 WL 4563873 at *5 (N.D.Ga. Jul.17, 2007). Consequently, although this is a close case, the Court\nconcludes that the better option is to admit the survey evidence and to consider the survey\xe2\x80\x99s flaws in\ndetermining the evidentiary weight to assign the survey in the likelihood of confusion analysis.\n[71] The Court finds, however, that because the survey tested only the \xe2\x80\x9cSUPPORT OUR TROOPS[.]\nBOYCOTT WAL\xe2\x80\x93QAEDA\xe2\x80\x9d t-shirt and the Walocaust eagle t-shirt, it has no relevance to any of Smith\xe2\x80\x99s\nother Wal\xe2\x80\x93Mart\xe2\x80\x93related concepts. The Court agrees with Jacoby that context matters\xe2\x80\x94a lot\xe2\x80\x94and\ntherefore will not consider Jacoby\xe2\x80\x99s survey as evidence of likelihood of confusion with regard to the\nwords \xe2\x80\x9cWalocaust\xe2\x80\x9d and \xe2\x80\x9cWal\xe2\x80\x93Qaeda\xe2\x80\x9d in general; the study is admissible only as to the two concepts\nthat Jacoby actually tested. See Fed.R.Evid. 702 (limiting expert testimony to that \xe2\x80\x9cbased upon\nsufficient facts or data\xe2\x80\x9d).\n[72] Even with regard to the tested concepts, the Court finds that the survey was so flawed that it\ndoes not create a genuine issue of material fact. See Spraying Sys. Co. v. Delavan, Inc., 975 F.2d 387, 394\n(7th Cir. 1992) (recognizing that if a proffered survey is severely and materially flawed, it may not be\nsufficient to establish a genuine issue of material fact even if it purports to show evidence of actual\nconfusion). Jacoby surveyed an overbroad universe, failed to adequately replicate the shopping\nexperience, and asked leading questions. He also surveyed a non-random sample that in any case was\ntoo small to allow the results to be projected upon the general market. Thus, the Court finds that the\nJacoby survey is so flawed that it does not establish a genuine issue of material fact with regard to\nactual confusion, much less prove actual confusion.\n[73] Lack of survey evidence showing consumer confusion is not dispositive, however; the\nEleventh Circuit has moved away from relying on survey evidence. Frehling Enters. v. Int\xe2\x80\x99l Select Group,\nInc., 192 F.3d 1330, 1341 n. 5 (11th Cir. 1999). In fact, a court may find a likelihood of confusion in the\nabsence of any evidence of actual confusion, even though actual confusion is the best evidence of\n402\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nlikelihood of confusion. E. Remy Martin & Co. v. Shaw\xe2\x80\x93Ross Int\xe2\x80\x99l Imps., Inc., 756 F.2d 1525, 1529 (11th\nCir. 1985). Accordingly, the Court will now consider the remaining likelihood of confusion factors.\n{The court ultimately found no infringement or dilution.}\nQuestions and Comments\n1. The Authorization or Permission Question. You will recall that the third group of questions in the\nsurveys at issue in Smith v. Wal-Mart asked respondents if they thought the company that \xe2\x80\x9cput out\xe2\x80\x9d the\ndefendant\xe2\x80\x99s products needed permission from another company to do so, and if so, which company.\nIsn\xe2\x80\x99t this the very question that the judge is trying to decide in the case? Why should we ask survey\nrespondents for their view on what is in essence a legal question?\n2. Confusion by Whom? What is the appropriate consumer population to survey, the defendant\xe2\x80\x99s\nand/or the plaintiff\xe2\x80\x99s? McCarthy sets forth the conventional wisdom: \xe2\x80\x9cIn a traditional case claiming\n\xe2\x80\x98forward\xe2\x80\x99 confusion, not \xe2\x80\x98reverse\xe2\x80\x99 confusion, the proper universe to survey is composed of the potential\nbuyers of the junior user\xe2\x80\x99s goods or services. However, in a \xe2\x80\x98reverse confusion\xe2\x80\x99 case, the relevant group\nto be surveyed is the senior user\xe2\x80\x99s customer base.\xe2\x80\x9d MCCARTHY, at \xc2\xa7 32:159 (citations omitted).\n3. Alternative Survey Formats. Two other methods of surveying for the likelihood of consumer\nconfusion are of particular interest.\n\xe2\x80\xa2\n\nThe \xe2\x80\x9cSquirt format\xe2\x80\x9d. In Squirt Co. v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980), survey\nrespondents were played radio advertisements for SQUIRT and QUIRST soft drinks and two\nother products. The respondents were then asked: (1) \xe2\x80\x9cDo you think SQUIRT and QUIRST are\nput out by the same company or by different companies?\xe2\x80\x9d, and (2) \xe2\x80\x9cWhat makes you think\nthat?\xe2\x80\x9d This method, consisting of either seriatim or simultaneous exposure to the plaintiff\xe2\x80\x99s\nand defendant\xe2\x80\x99s marks, is especially beneficial for a plaintiff whose mark may not be wellknown to the survey respondents. However, some courts have rejected this survey method on\nthe ground that it makes the respondents \xe2\x80\x9cartificially aware\xe2\x80\x9d of the plaintiff\xe2\x80\x99s mark and does\nnot approximate market conditions. See, e.g., Kargo Global, Inc. v. Advance Magazine\nPublishers, Inc., No. 06 Civ. 550, 2007 WL 2258688, at *8 (S.D. N.Y. 2007).\n\n\xe2\x80\xa2\n\nThe \xe2\x80\x9cExxon format\xe2\x80\x9d. In Exxon Corp. v. Texas Motor Exchange of Houston, Inc., 628 F2d 500 (5th\nCir. 1980), survey respondents were shown a photograph of one of the defendant\xe2\x80\x99s signs\nbearing its TEXON trademark. The respondents were then asked: \xe2\x80\x9cWhat is the first thing that\ncomes to mind when looking at this sign?\xe2\x80\x9d, and \xe2\x80\x9cWhat was there about the sign that made you\nsay that?\xe2\x80\x9d If the respondents did not name a company in response to the first set of questions,\nthey were then asked: \xe2\x80\x9cWhat is the first company that comes to mind when you look at this\nsign?\xe2\x80\x9d (emphasis in original survey script) and \xe2\x80\x9cWhat was there about the sign that made you\nmention (COMPANY)?\xe2\x80\x9d Courts have proven to be less receptive to this \xe2\x80\x9cword association\xe2\x80\x9d\nmethod of surveying for consumer confusion. See, e.g., Major League Baseball Properties v. Sed\nNon Olet Denarius, Ltd., 817 F. Supp. 1103, 1122 (S.D.N.Y. 1993) (\xe2\x80\x9c[T]he issue here is not\nwhether defendants\xe2\x80\x99 name brings to mind any other name . . . . Rather, the issue here is one of\nactual confusion. Plaintiff\xe2\x80\x99s survey questions regarding association are irrelevant to the issue\nof actual confusion.\xe2\x80\x9d).\n\nIn Itamar Simonson, The Effect of Survey Method on Likelihood of Confusion Estimates: Conceptual\nAnalyses and Empirical Test, 83 TRADEMARK REP. 364 (1993), Simonson compared the results of five\nmethods of surveying for the likelihood of confusion, including a simple form of the Eveready format,\nthe Squirt format, and the Exxon format. He found that the Exxon format \xe2\x80\x9ctends to overestimate the\nlikelihood of confusion, often by a significant amount,\xe2\x80\x9d id. at 385, and that the Squirt format, as\nexpected, \xe2\x80\x9ccan have a significant effect on confusion estimates when the awareness level of the senior\nmark is low.\xe2\x80\x9d Id. at 386.\n\n403\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n4. What Percentage of Confusion is Enough? \xe2\x80\x9cFigures in the range of 25% to 50% have been\nviewed as solid support for a finding of a likelihood of confusion.\xe2\x80\x9d MCCARTHY \xc2\xa7 32:188. Still often cited\nby plaintiffs with especially weak cases, Jockey International, Inc. v. Burkard, No 74 Civ. 123, 1975 WL\n21128 (S.D. Cal. 1975), found that survey evidence of 11.4 percent supported a likelihood of confusion.\nBut see Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., No. 08 Civ. 6086, 2009 WL 2192721\n(W.D. Ark. 2009) (survey evidence of 11.4 percent confusion does not support a likelihood of\nconfusion).\n5. Outside of the world of trademark law, should survey evidence be used to interpret contractual\nterms? See Omri Ben-Shahar & Lior Jacob Strahilevitz, Interpreting Contracts via Surveys and\nExperiments, 92 NYU L. REV. 1753 (2017) (proposing and testing a \xe2\x80\x9csurvey interpretation method\xe2\x80\x9d of\ncontractual interpretation in which \xe2\x80\x9cinterpretation disputes are resolved through large surveys of\nrepresentative respondents, by choosing the meaning that a majority supports\xe2\x80\x9d).\n5.\n\n\xe2\x80\x9cSponsorship or Affiliation\xe2\x80\x9d Confusion\n\nAs the surveys at issue in Smith v. Wal-Mart Stores suggested, trademark law may find\ninfringement when the defendant\xe2\x80\x99s conduct leads consumers mistakenly to believe that there is a\nrelation of \xe2\x80\x9csponsorship\xe2\x80\x9d or \xe2\x80\x9caffiliation\xe2\x80\x9d between the plaintiff and the defendant. In this excerpt from\nInt\xe2\x80\x99l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC, 823 F.3d 153 (2d Cir. 2016), the\nSecond Circuit strongly endorsed this expansive understanding of what constitutes actionable\nconsumer confusion.\nInt\xe2\x80\x99l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC\n823 F.3d 153, 161-163 (2d Cir. 2016)\n{The plaintiff developed a certification program and the certification mark CISSP to denote a\n\xe2\x80\x9cCertified Information Systems Security Professional\xe2\x80\x9d who has passed the plaintiff\xe2\x80\x99s certification exam.\nThe defendant offered various courses to prepare individuals for the plaintiff\xe2\x80\x99s exam. It was\nundisputed that the defendant could use the plaintiff\xe2\x80\x99s mark to indicate that the courses were directed\ntowards preparing students to take the plaintiff\xe2\x80\x99s exam. However, the defendant advertised its courses\nas taught by \xe2\x80\x9cMaster CISSP Clement Dupuis\xe2\x80\x9d, allegedly suggesting that Mr. Dupuis had obtained some\nhigher, \xe2\x80\x9cMaster\xe2\x80\x9d level of certification from the plaintiff. Both parties moved for summary judgment.}\n....\nA. Types of Confusion Relevant to Infringement Claims\n[1] The district court held that the only type of confusion relevant in determining infringement is\nconfusion as to source. This is incorrect; protection is not exclusively limited for any type of mark to\ncases in which there may be confusion as to source. Rather, \xe2\x80\x9c[t]he modern test of infringement is\nwhether the defendant\xe2\x80\x99s use [is] likely to cause confusion not just as to source, but also as to\nsponsorship, affiliation or connection.\xe2\x80\x9d 4 McCarthy on Trademarks and Unfair Competition\n[hereinafter \xe2\x80\x9cMcCarthy\xe2\x80\x9d] \xc2\xa7 23:76 (4th ed.) (emphasis added). Indeed, our Court has previously\nobserved that in 1962 Congress amended 15 U.S.C. \xc2\xa7 1114, the Lanham Act provision that provides\npenalties for infringement, to \xe2\x80\x9cbroaden liability\xe2\x80\x9d from the prior \xe2\x80\x9cstatutory requirement [that]\nconfusion, mistake, or deception applied only with respect to purchasers as to the source of origin of\nsuch goods or services.\xe2\x80\x9d Rescuecom Corp. v. Google Inc., 562 F.3d 123, 136 (2d Cir. 2009) (internal\nquotation marks omitted). That provision now penalizes a person who\nuse[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a\nregistered mark in connection with the sale, offering for sale, distribution, or advertising\nof any goods or services on or in connection with which such use is likely to cause\nconfusion, or to cause mistake, or to deceive . . . .\n15 U.S.C. \xc2\xa7 1114(1)(a) (emphasis added). As is plain from this statutory text, the Act\xe2\x80\x99s protection\nagainst infringement is not limited to any particular type of consumer confusion, much less exclusively\n404\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nto confusion as to source. Rather, the Lanham Act protects against numerous types of confusion,\nincluding confusion regarding affiliation or sponsorship. See . . . Dall. Cowboys Cheerleaders, Inc. v.\nPussycat Cinema, Ltd., 604 F.2d 200, 204\xe2\x80\x9305 (2d Cir. 1979) (\xe2\x80\x9cAppellants read the confusion\nrequirement too narrowly. In order to be confused, a consumer need not believe that the owner of the\nmark actually produced the item and placed it on the market. The public\xe2\x80\x99s belief that the mark\xe2\x80\x99s owner\nsponsored or otherwise approved the use of the trademark satisfies the confusion requirement.\xe2\x80\x9d\n(citations omitted)); see also Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831, 835 (10th Cir. 2005)\n(\xe2\x80\x9c[T]he relevant confusion under trademark law is not limited to confusion of consumers as to the\nsource of the goods, but also includes confusion as to sponsorship or affiliation, such as a consumer\xe2\x80\x99s\nmistaken belief that a retailer is part of a larger franchising operation.\xe2\x80\x9d) . . . .\n[2] This broader prohibition on consumer confusion as to sponsorship or approval is also made\nexplicit in Section 43 of the Lanham Act, which prohibits false advertising and false designation of\norigin by providing for civil penalties to a person injured by:\nAny person who, on or in connection with any goods or services, . . . uses in\ncommerce any word, term, name, symbol, or device, or any combination thereof, or any\nfalse designation of origin, false or misleading description of fact, or false or misleading\nrepresentation of fact, which\xe2\x80\x94\n(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,\nconnection, or association of such person with another person, or as to the origin,\nsponsorship, or approval of his or her goods, services, or commercial activities by another\nperson, or\n(B) in commercial advertising or promotion, misrepresents the nature,\ncharacteristics, qualities, or geographic origin of his or her or another person\xe2\x80\x99s goods,\nservices, or commercial activities . . . .\n15 U.S.C. \xc2\xa7 1125(a)(1) (emphases added).\n[3] Indeed, our case law demonstrates that consumer confusion is plainly not limited to source\nconfusion. For example, in Weight Watchers International, Inc. v. Luigino\xe2\x80\x99s, Inc., 423 F.3d 137 (2d Cir.\n2005), we recognized that Weight Watchers was likely to succeed on its claim that a frozen food\nmanufacturer had infringed its registered trademark in the term \xe2\x80\x9cPoints\xe2\x80\x9d by prominently displaying\nthe Weight Watchers points value on the packages of its frozen meals. In that case, it was clear from\nthe packaging that Luigino\xe2\x80\x99s was the source of the actual goods\xe2\x80\x94i.e. the frozen meals. Nonetheless,\nWeight Watchers could succeed on its claim for trademark infringement by showing \xe2\x80\x9cthat the use of\nthe term \xe2\x80\x98Points\xe2\x80\x99 on the front of the package was likely to confuse consumers into believing that Weight\nWatchers had determined the point values or otherwise endorsed the Luigino\xe2\x80\x99s products.\xe2\x80\x9d Id. at 144\n(emphasis added). Moreover, we have held that there may be consumer confusion based on the misuse\nof a trademark, even where it is conceded that the plaintiff\xe2\x80\x99s mark accurately designated the source of\ngoods. See Original Appalachian Artworks, Inc. v. Granada Electronics, Inc., 816 F.2d 68, 73 (2d Cir.\n1987) (holding unauthorized importation and sale of Cabbage Patch dolls manufactured in Spain with\nthe foreign language adoption papers and birth certificate infringed the plaintiff\xe2\x80\x99s trademark in\nCabbage Patch dolls \xe2\x80\x9ceven though the goods do bear [plaintiff\xe2\x80\x99s] trademark and were manufactured\nunder license with [the plaintiff],\xe2\x80\x9d because plaintiff\xe2\x80\x99s \xe2\x80\x9cdomestic good will is being damaged by\nconsumer confusion caused by the importation of the [Spanish] dolls,\xe2\x80\x9d which were materially different\nfrom American dolls). The district court therefore erred in applying its narrow conception of confusion\nrelevant to infringement claims.\n....\n{As excerpted further in Part III.B, the district court went on to find that the defendant engaged in\nnominative fair use of the plaintiff\xe2\x80\x99s mark.}\n\n405\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\nQuestions and Comments\n1. \xe2\x80\x9cSignifier confusion\xe2\x80\x9d and \xe2\x80\x9caffiliation confusion.\xe2\x80\x9d Barton Beebe and Scott Hemphill propose the\nfollowing:\n[I]t is helpful to distinguish between two fundamentally different and mutually\nexclusive forms of consumer confusion, which we term signifier confusion and affiliation\nconfusion. Signifier confusion denotes those situations in which a consumer fails to detect\nthe difference between two different marks and perceives each mark to be identical to\nthe other. For example, a consumer may be exposed to the mark STARLUCKS and simply\nmistakenly read or hear the mark as STARBUCKS.\nBy contrast, affiliation confusion denotes those situations in which a consumer\ndetects the difference between two different marks (so there is no signifier confusion),\nbut the consumer nevertheless concludes that due to the similarity of the marks, there\nmust be some commercial connection between the users of the marks. For example, a\nconsumer thinks STARLUCKS represents a brand extension, sponsorship or endorsement\nrelationship, or some other form of commercial affiliation. The consumer perceives the\nplaintiff as the source of or somehow responsible for the defendant\xe2\x80\x99s goods.\nBarton Beebe & C. Scott Hemphill, The Scope of Strong Marks: Should Trademark Law Protect the Strong\nMore Than the Weak?, 93 N.Y.U. L. REV. 1339, 1361 (2017). Are these two forms of consumer confusion\nin fact mutually exclusive? Is this distinction helpful?\n______________________________________________________________________________\nTrademark scholars have been highly critical of \xe2\x80\x9csponsorship or affiliation\xe2\x80\x9d confusion. Presented\nbelow is an excerpt from Mark A. Lemley & Mark McKenna, Irrelevant Confusion, 62 STAN. L. REV. 413,\n417\xe2\x80\x93422 (2010), which collects some of the most egregious examples up to that time of plaintiffs\xe2\x80\x99\nthreats to sue and of courts\xe2\x80\x99 finding of \xe2\x80\x9csponsorship or affiliation\xe2\x80\x9d confusion. In reading through\nLemley & McKenna\xe2\x80\x99s account, consider the extent to which trademark law should be more than merely\nreactive to consumer perceptions in the marketplace, but also normative with respect to those\nperceptions. In other words, should trademark law conclude in some case that even if consumers are\nconfused as to source or affiliation by the defendant\xe2\x80\x99s conduct, they simply should not be? Should the\nlaw allow some degree of confusion in the short term so that consumers can learn in the long term not\nto be confused? And are federal judges and federal trademark litigation properly suited to this task?\nSee Graeme B. Dinwoodie, Trademark Law and Social Norms (2006) (discussing courts\xe2\x80\x99 \xe2\x80\x9creactive\xe2\x80\x9d and\n\xe2\x80\x9cproactive\xe2\x80\x9d approaches to the development of trademark law); Alfred C. Yen, The Constructive Role of\nConfusion in Trademark Law, 93 N.C. L. Rev. 77 (2014) (criticizing trademark law\xe2\x80\x99s absolute \xe2\x80\x9ceradicate\nconfusion norm\xe2\x80\x9d and arguing that some degree of consumer confusion may encourage consumers to\ndevelop the cognitive skills needed to navigate complex marketplaces).\n\n406\nV8.0/2021-07-07\n\n\x0cBeebe \xe2\x80\x93 Trademark Law: An Open-Source Casebook\n\nFrom Mark A. Lemley & Mark McKenna, Irrelevant Confusion, 62 STAN. L. REV. 413, 417-422\n(2010)\n[1] In 2006, back when it was good, NBC\xe2\x80\x99s hit show Heroes depicted an indestructible cheerleader\nsticking her hand down a kitchen garbage disposal and mangling it (the hand quickly regenerated). It\nwas an Insinkerator brand garbage disposal, though you might have had to watch the show in slow\nmotion to notice; the brand name was visible for only a couple of seconds. Emerson Electric, owner of\nthe Insinkerator brand, sued NBC, alleging the depiction of its product in an unsavory light was both an\nact of trademark dilution and was likely to cause consumers to believe Emerson had permitted the use.\nNBC denied any wrongdoing, but it obscured the Insinkerator name when it released the DVD and Web\nversions of the episode.8 And not just television shows but also movies have provoked the ire of\ntrademark owners: Caterpillar sued the makers of the movie Tarzan on the theory that the use of\nCaterpillar tractors in the movie to bulldoze the forest would cause consumers to think Caterpillar was\nactually anti-environment,9 and the makers of Dickie Roberts: Former Child Star were sued for\ntrademark infringement for suggesting that the star of the absurdist comedy was injured in a Slip \xe2\x80\x98N\nSlide accident.10 Even museums aren\xe2\x80\x99t immune: Pez recently sued the Museum of Pez Memorabilia for\ndisplaying an eight-foot Pez dispenser produced by the museum\xe2\x80\x99s owners.11 And forget about using\nkazoos on your duck tours: Ride the Ducks, a tour company in San Francisco that gives out duck-call\nSee Paul R. La Monica, NBC Sued over \xe2\x80\x98Heroes\xe2\x80\x99 Scene by Garbage Disposal Maker, CNNMoney.com,\nOct. 17, 2006, http:// money.cnn.com/2006/10/17/commentary/ mediabiz/index.htm.\n8\n\n9\n\nCaterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913, 917 (C.D. Ill. 2003)\n\n10\n\nWham-O, Inc. v. Paramount Pictures Corp., 286 F. Supp. 2d 1254, 1255-58 (N.D. Cal. 2003).\n\nMuseum Faces Legal Battle over Giant Pez Dispenser, KTVU.com, July 1, 2009,\nhttp://www.ktvu.com/print/19911637/detail.html. The museum was originally called the Pez\nMuseum, but the owners changed the name in response to a previous objection from Pez.\n11\n\n407\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nkazoos to clients on its ducks, sued Bay Quackers, a competing duck tour company that also facilitated\nquacking by its clients.12\n[2] Most of these examples involve threats of suit, and they could be dismissed simply as\noverreaching by a few aggressive trademark owners. But these threats were not isolated incidents, and\nthey shouldn\xe2\x80\x99t be quickly ignored. The recipients of all of these threats, like many others who receive\nsimilar objections,13 knew well that they had to take the asserted claims seriously because courts have\nsometimes been persuaded to shut down very similar uses. In 1998, for instance, New Line\nProductions was set to release a comedy about a beauty pageant that took place at a farm-related fair\nin Minnesota. New Line called the movie Dairy Queens but was forced to change the name to Drop Dead\nGorgeous after the franchisor of Dairy Queen restaurants obtained a preliminary injunction.14 The\nowners of a restaurant called the \xe2\x80\x9cVelvet Elvis\xe2\x80\x9d were forced to change its name after the estate of Elvis\nPresley sued for trademark infringement.15 A humor magazine called Snicker was forced to pull a\nparody \xe2\x80\x9cad\xe2\x80\x9d for a mythical product called \xe2\x80\x9cMichelob Oily,\xe2\x80\x9d not because people thought Michelob was\nactually selling such a beer (only six percent did16), but because a majority of consumers surveyed\nthought that the magazine needed to receive permission from Anheuser-Busch to run the ad.17 And\nSnicker might face more trouble than that; another court enjoined a furniture delivery company from\npainting its truck to look like a famous candy bar.18\n\nJesse McKinley, A Quacking Kazoo Sets Off a Squabble, N.Y. TIMES, June 3, 2009, at A16. Ducks are\nopen-air amphibious vehicles that can be driven on streets and operated in the water.\n12\n\nThe Chilling Effects Clearinghouse collects letters from trademark owners that make aggressive\nassertions of trademark (and other intellectual property) rights. See Chilling Effects Clearinghouse,\nhttp:// www.chillingeffects.org (last visited Sept. 9, 2009). As of February 25, 2009, the Chilling Effects\ndatabase contained 378 such letters. Among the many specious objections are an objection from the\nNational Pork Board (owner of the trademark \xe2\x80\x9cTHE OTHER WHITE MEAT\xe2\x80\x9d) to the operator of a\nbreastfeeding advocacy site called \xe2\x80\x9cThe Lactivist\xe2\x80\x9d for selling T-shirts with the slogan \xe2\x80\x9cThe Other White\nMilk,\xe2\x80\x9d Pork Board Has a Cow over Slogan Parody, Chilling Effects Clearinghouse, Jan. 30, 2007, http://\nwww.chillingeffects.org/trademark/notice.cgi?NoticeID=6418; from Kellogg to the registrant of the\ndomain name \xe2\x80\x9cevilpoptarts.com,\xe2\x80\x9d Kelloggs Poops on Evilpoptarts.com, Chilling Effects Clearinghouse,\nJune 5, 2006, http:// www.chillingeffects.org/acpa/notice.cgi?NoticeID=4377; from Nextel to the\nregistrants of the domain name \xe2\x80\x9cnextpimp.com,\xe2\x80\x9d Nextel Says \xe2\x80\x9cDon\xe2\x80\x99t Pimp My Mark\xe2\x80\x9d, Chilling Effects\nClearinghouse, June 22, 2005, http:// www.chillingeffects.org/acpa/notice.cgi?NoticeID=2322; and\nfrom the owners of the Marco Beach Ocean Resort to the operators of \xe2\x80\x9curinal.net,\xe2\x80\x9d a website that\ncollects pictures of urinals in various public places, for depicting urinals at the Resort and identifying\nthem as such, Mark Owner Pissed About Urinals, Chilling Effects Clearinghouse, Jan. 4, 2005, http://\nwww.chillingeffects.org/trademark/notice.cgi?NoticeID=1576.\n13\n\n14\n\nAm. Dairy Queen Corp. v. New Line Prods., Inc., 35 F. Supp. 2d 727, 728 (D. Minn. 1998).\n\n15\n\nElvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998)\n\nAnheuser-Busch, Inc. v. Balducci Publ\xe2\x80\x99ns, 28 F.3d 769, 772-73 (8th Cir. 1994). That any\nconsumers were confused was remarkable, and perhaps a statement about the reliability of consumer\nconfusion surveys rather than the stupidity of 6% of the population.\n16\n\n17\n\nId.\n\nHershey Co. v. Art Van Furniture, Inc., No. 08-14463, 2008 WL 4724756 (E.D. Mich. Oct. 24,\n2008). Hershey has also sued Reese\xe2\x80\x99s Nursery. Complaint at 1, Hershey Chocolate & Confectionery\nCorp. v. Reese\xe2\x80\x99s Nursery and Landscaping, No. 3:09-CV-00017-JPB (N.D. W. Va. Mar. 19, 2009).\n18\n\n408\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[3] The Mutual of Omaha Insurance Company persuaded a court to stop Franklyn Novak from\nselling T-shirts and other merchandise bearing the phrase \xe2\x80\x9cMutant of Omaha\xe2\x80\x9d and depicting a side\nview of a feather-bonneted, emaciated human head.19 No one who saw Novak\xe2\x80\x99s shirts reasonably could\nhave believed Mutual of Omaha sold the T-shirts, but the court was impressed by evidence that\napproximately ten percent of all the persons surveyed thought that Mutual of Omaha \xe2\x80\x9c[went] along\xe2\x80\x9d\nwith Novak\xe2\x80\x99s products.20 The creators of Godzilla successfully prevented the author of a book about\nGodzilla from titling the book Godzilla, despite clear indications on both the front and back covers that\nthe book was not authorized by the creators.21\n[4] The Heisman Trophy Trust prevented a T-shirt company called Smack Apparel from selling Tshirts that used variations of the word HEISMAN, such as \xe2\x80\x9cHE.IS.the.MAN,\xe2\x80\x9d to promote particular\nplayers for the Heisman Trophy.22 This was not Smack Apparel\xe2\x80\x99s first trademark lesson: a court\npreviously ordered it to stop selling T-shirts that used university colors and made oblique references\nto those universities\xe2\x80\x99 football teams because the court believed the designs created \xe2\x80\x9ca link in the\nconsumer\xe2\x80\x99s mind between the T-shirts and the Universities\xe2\x80\x9d and demonstrated that Smack Apparel\n\xe2\x80\x9cinten[ded] to directly profit [from that link].\xe2\x80\x9d23 Respect Sportswear was denied registration of\n\xe2\x80\x9cRATED R SPORTSWEAR\xe2\x80\x9d for men\xe2\x80\x99s and women\xe2\x80\x99s clothing on the ground that consumers would be\nconfused into thinking the Motion Picture Association of America sponsored the clothes.24 A street\nmusician who plays guitar in New York while (nearly) naked was permitted to pursue his claim against\nMars on the theory consumers would assume he sponsored M&Ms candies, since Mars advertised\nM&Ms with a (naked) blue M&M playing a guitar.25 A legitimate reseller of dietary supplements lost its\nmotion for summary judgment in a suit by the supplements\xe2\x80\x99 brand owner because the court concluded\nthe reseller might have confused consumers into thinking it was affiliated with the brand owner when\nit purchased ad space on Google and truthfully advertised the availability of the supplements.26 Amoco\npersuaded a court that consumers might believe it sponsored Rainbow Snow\xe2\x80\x99s sno-cones, mostly\nbecause Rainbow Snow\xe2\x80\x99s shops were located in the same area as some of Amoco\xe2\x80\x99s Rainbo gas\nstations.27 The National Football League successfully sued the state of Delaware for running a lottery\n\n19\n\nMutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 397 (8th Cir. 1987).\n\n20\n\nId. at 400.\n\n21\n\nSee Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206, 1206, 1212 (C.D. Cal. 1998).\n\nHeisman Trophy Trust v. Smack Apparel Co., No. 08 Civ. 9153(VM), 2009 WL 2170352, at *5\n(S.D.N.Y. July 17, 2009). Smack Apparel produced several such T-shirts, including one that substituted\nthe number 15 for \xe2\x80\x9cIS\xe2\x80\x9d in the word HEISMAN and was printed in the colors of the University of Florida,\nclearly to promote Florida quarterback Tim Tebow\xe2\x80\x99s candidacy. See Smack Apparel Lawsuit, LSU Tiger\nTailer Newsletter (LSU Trademark Licensing, Baton Rouge, La.), Jan. 30, 2009, at 6.\n22\n\nBd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465,\n484 (5th Cir. 2008).\n23\n\nMotion Picture Ass\xe2\x80\x99n of Am. Inc. v. Respect Sportswear Inc., 83 U.S.P.Q.2d (BNA) 1555, 1564\n(T.T.A.B. 2007).\n24\n\nBurck v. Mars, Inc., 571 F. Supp. 2d 446 (S.D.N.Y. 2008) (denying Mars\xe2\x80\x99 motion to dismiss\nplaintiff\xe2\x80\x99s false endorsement claim).\n25\n\n26\n\nStandard Process, Inc. v. Total Health Discount, Inc., 559 F. Supp. 2d 932, 941 (E.D. Wis. 2008).\n\nAmoco Oil Co. v. Rainbow Snow, 748 F.2d 556, 559 (10th Cir. 1984). Rainbow Snow sold its\nsnow cones from fourteen round, ten-by-six-foot booths, which were blue with a 180-degree, redorange-yellow-green rainbow appearing on the upper half of the face of the booth and prominently\ndisplayed the name \xe2\x80\x9cRainbow Snow\xe2\x80\x9d in white letters below the rainbow. Id. at 557. Signs at Amoco\xe2\x80\x99s\n27\n\n409\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nbased on point spreads in NFL games, even though the Lottery never used the NFL name or any of its\nmarks for the purpose of identifying or advertising its games.28 The court was persuaded that the\nbetting cards\xe2\x80\x99 references to NFL football games by the names of the cities whose teams were playing\nmight cause consumers to believe the NFL sponsored the lottery game.29 And the owners of a Texas\ngolf course that replicated famous golf holes from around the world were forced to change their course\nbecause one of the holes was, in the view of the Fifth Circuit, too similar to the corresponding South\nCarolina golf hole it mimicked.30\n[5] Whatever fraction of the total universe of trademark cases these cases constitute, there are\nenough of them that recipients of cease and desist letters from mark owners have to take the\nobjections seriously. Indeed many simply cave in and change their practices rather than face the\nuncertainty of a lawsuit. The producers of the TV show Felicity changed the name of the university\nattended by characters on the show after New York University, the school originally referenced,\nobjected to the depiction of those students as sexually active.31 The producers of a movie originally\ntitled Stealing Stanford changed the title of their movie after Stanford University objected to the\nmovie\xe2\x80\x99s storyline, which centered on a student who stole money to pay tuition.32 It\xe2\x80\x99s possible that the\nproducers of the show and the movie would have had legitimate defenses had they decided to use the\nreal universities\xe2\x80\x99 names despite the objections, but in light of the case law outlined above, neither was\nwilling to defend its right to refer to real places in their fictional storylines.33 And anecdotes like these\nare becoming depressingly common. Production of the film Moneyball, which was based on Michael\nLewis\xe2\x80\x99s best-selling profile of Oakland Athletics General Manager Billy Beane, was halted just days\nRainbo gas stations displayed the word \xe2\x80\x9cRainbo\xe2\x80\x9d in white, with the word appearing against a black\nbackground and below a red-orange-yellow-blue truncated rainbow logo. Id.\n28 NFL v. Governor of Del., 435 F. Supp. 1372, 1376, 1380-81 (D. Del. 1977). The lottery game was\ncalled \xe2\x80\x9cScoreboard\xe2\x80\x9d and the individual games were identified as \xe2\x80\x9cFootball Bonus,\xe2\x80\x9d \xe2\x80\x9cTouchdown,\xe2\x80\x9d and\n\xe2\x80\x9cTouchdown II.\xe2\x80\x9d Id. at 1380.\n\nThe cards on which the customers of the Delaware Lottery marked their betting choices\nidentified the next week\xe2\x80\x99s NFL football games by the names of the cities whose NFL teams were\nscheduled to compete against each other (e.g., Washington v. Baltimore). Id. The parties stipulated that,\nin the context in which they appeared, these geographic names were intended to refer to, and\nconsumers understood them to refer to, particular NFL football teams. Id. This was enough for the\ncourt to find sponsorship or affiliation confusion because, \xe2\x80\x9c[a]pparently, in this day and age when\nprofessional sports teams franchise pennants, teeshirts, helmets, drinking glasses and a wide range of\nother products, a substantial number of people believe, if not told otherwise, that one cannot conduct\nan enterprise of this kind without NFL approval.\xe2\x80\x9d Id. at 1381. The court therefore entered a limited\ninjunction \xe2\x80\x9crequiring the Lottery Director to include on Scoreboard tickets, advertising and any other\nmaterials prepared for public distribution a clear and conspicuous statement that Scoreboard [was]\nnot associated with or authorized by the National Football League.\xe2\x80\x9d Id.\n29\n\n30\n\nPebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 526 (5th Cir. 1998).\n\nSara Lipka, PG-13? Not This College. Or That One. Or . . ., CHRON. HIGHER EDUC., June 26, 2009, at 1;\nWilliam McGeveran, Trademarks, Movies, and the Clearance Culture, Info/Law, July 2, 2009, http://\nblogs.law.harvard.edu/infolaw/2009/07/02/tm-movie-clearance/.\n31\n\nMcGeveran, supra. Apparently Harvard was less troubled about a student being depicted as\nhaving stolen money to pay its tuition: the movie was retitled Stealing Harvard.\n32\n\nSee also Vince Horiuchi, HBO Disputes Trademark Infringement in \xe2\x80\x98Big Love,\xe2\x80\x99 SALT LAKE TRIB., July\n8, 2009 (discussing a lawsuit filed by the University of Utah over the three-second depiction of a\nfictional research report bearing the University of Utah logo).\n33\n\n410\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nbefore shooting was set to begin in part because Major League Baseball disapproved of the script\xe2\x80\x99s\ndepiction of baseball and therefore objected to use of its trademarks in the film.34 Apparently Major\nLeague Baseball believes it can control the content of any film that refers to real baseball teams.\n[6] What unifies all the cases that have given these creators such pause is that courts found\nactionable confusion notwithstanding the fact that consumers couldn\xe2\x80\x99t possibly have been confused\nabout the actual source of the defendants\xe2\x80\x99 products . . . .\n______________________________________________________________________________\nThough many of the examples provided in the Lemley & McKenna excerpt show severe overreach\nby trademark owners, there are of course counterexamples in which most would agree that trademark\nowners should have every right to seek to prevent association or affiliation confusion. For example,\nconsumers might care strongly about whether a company is truthfully declaring itself to be an \xe2\x80\x9cOfficial\nSponsor of the United States Olympic Team\xe2\x80\x9d or an \xe2\x80\x9cOfficial Sponsor of the United States Women\xe2\x80\x99s\nNational Team.\xe2\x80\x9d\nIn the following case, Board of Supervisors for Louisiana State University Agricultural & Mechanical\nCollege v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), parts of which were excerpted in Part\nI.A.1.b, the Fifth Circuit addressed the argument that consumers do not care if the merchandise they\npurchase is authorized. The plaintiffs Louisiana State University, the University of Oklahoma, Ohio\nState University, the University of Southern California, and Collegiate Licensing Company (the official\nlicensing agent for the universities) brought suit against defendant Smack Apparel for its unauthorized\nsale of apparel bearing the universities\xe2\x80\x99 colors and various printed messages associated with the\nuniversities. The Eastern District of Louisiana granted the plaintiffs\xe2\x80\x99 motion for summary judgment on\nthe issue of trademark infringement. The Fifth Circuit affirmed. Excerpted here is the Fifth Circuit\xe2\x80\x99s\ndiscussion of sponsorship confusion and whether consumers prefer authorized merchandise in certain\nsituations. Do you find it persuasive?\nNote that the apparel at issue, further examples of which are given below, did not bear the\nuniversities\xe2\x80\x99 full names or mascots.\n\n34\n\nMichael Cieply, Despite Big Names, Prestige Film Falls Through, N.Y. TIMES, July 2, 2009, at B1.\n\n411\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nBoard of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack\nApparel Co.\n550 F.3d 465, 478-488 (5th Cir. 2008)\nREAVLEY, Circuit Judge:\n....\nB. Likelihood of confusion\n[1] Once a plaintiff shows ownership in a protectible trademark, he must next show that the\ndefendant\xe2\x80\x99s use of the mark \xe2\x80\x9ccreates a likelihood of confusion in the minds of potential customers as to\nthe \xe2\x80\x98source, affiliation, or sponsorship\xe2\x80\x99 \xe2\x80\x9d of the product at issue. Westchester Media v. PRL USA Holdings,\nInc.38 When assessing the likelihood of confusion, we consider a nonexhaustive list of so-called \xe2\x80\x9cdigits\nof confusion,\xe2\x80\x9d including: \xe2\x80\x9c(1) the type of mark allegedly infringed, (2) the similarity between the two\nmarks, (3) the similarity of the products or services, (4) the identity of the retail outlets and\npurchasers, (5) the identity of the advertising media used, (6) the defendant\xe2\x80\x99s intent, and (7) any\nevidence of actual confusion.\xe2\x80\x9d40 Courts also consider (8) the degree of care exercised by potential\npurchasers.41 No single factor is dispositive, and a finding of a likelihood of confusion need not be\nsupported by a majority of the factors.42\n[2] Smack argues that there were genuine issues of material fact whether its t-shirt designs were\nlikely to cause confusion among consumers. We disagree. The first digit, the type of mark, refers to the\nstrength of the mark. Generally, the stronger the mark, the greater the likelihood that consumers will\nbe confused by competing uses of the mark. We agree with the district court that the plaintiffs\xe2\x80\x99 marks,\nwhich have been used for over one hundred years, are strong. As noted above, Smack concedes that the\nUniversities\xe2\x80\x99 color schemes are well-known and are used to identify the plaintiff Universities. It argues,\nhowever, that the district court disregarded evidence of third-party use of the Universities\xe2\x80\x99 team colors\nin a non-trademark manner, and it cites Sun Banks of Florida, Inc. v. Sun Federal Savings and Loan\nAssociation46 in support of its argument.\n[3] In Sun Banks, we held that \xe2\x80\x9cextensive\xe2\x80\x9d third-party use can weaken a mark and negate a\nlikelihood of confusion. In that case there were \xe2\x80\x9cover 4400 businesses\xe2\x80\x9d in Florida that were using the\nword \xe2\x80\x9cSun\xe2\x80\x9d in their names, and we noted that \xe2\x80\x9ca significant number\xe2\x80\x9d fell within the same category of\nfinancial institutions as the plaintiff.48\n[4] Smack presented photographs of three businesses in Louisiana, eight businesses in Ohio, and\napproximately 20 businesses in Oklahoma that incorporated in their signage color schemes similar to\nthe school colors of LSU, OSU, and OU, respectively. The businesses included several restaurants and\nbars, a driving school, a pain management clinic, a theater, a furniture store, a dry cleaners, a motel, a\ndonut shop, an apartment complex, and a car care company. All third-party use of a mark, not just use\nin the same industry as a plaintiff, may be relevant to whether a plaintiff\xe2\x80\x99s mark is strong or weak.49\n\n38\n\n214 F.3d 658, 663 (5th Cir.2000) (citation omitted).\n\n40\n\nId. at 664.\n\n41\n\nAm. Rice, 518 F.3d at 329.\n\n42\n\nId.\n\n46\n\n651 F.2d 311 (5th Cir. 1981).\n\n48\n\nSun Banks, 651 F.2d at 316.\n\nUnion Nat\xe2\x80\x99l Bank of Tex., 909 F.2d at 848 n. 24; see also 2 J. THOMAS MCCARTHY, MCCARTHY\nON TRADEMARKS AND UNFAIR COMPETITION \xc2\xa7 11:88 (4th ed.) (\xe2\x80\x9c[E]vidence of extensive third party\n49\n\n412\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nBut the key is whether the third-party use diminishes in the public\xe2\x80\x99s mind the association of the mark\nwith the plaintiff\xe2\x80\x94surely lacking where colors are shown on a store wall. See Univ. of Ga. Athletic Ass\xe2\x80\x99n\nv. Laite.50 Smack\xe2\x80\x99s evidence falls far below that of extensive use, and the specific photographs of thirdparty use here fail to create an issue of fact concerning the public\xe2\x80\x99s association between the plaintiffs\nand color schemes and other indicia that clearly reference the Universities. We conclude that the\nUniversities possess strong marks in their use of color schemes and other identifying indicia on college\nsports-themed merchandise.\n[5] The second digit is the similarity of the marks. This factor requires consideration of the\nmarks\xe2\x80\x99 appearance, sound, and meaning. The district court held that the marks at issue are virtually\nidentical. Smack argues that there was no evidence that any of its shirts were identical to any shirts\nlicensed by the Universities and that its t-shirt designs are not at all similar to any of the Universities\xe2\x80\x99\nlicensed products. Smack\xe2\x80\x99s contention is belied by the record, and even a cursory comparison of\nSmack\xe2\x80\x99s designs with the plaintiffs\xe2\x80\x99 licensed products reveals striking similarity.\n[6] For example, one of Smack\xe2\x80\x99s shirt designs in purple and gold is referred to as the \xe2\x80\x9csundial\xe2\x80\x9d\nshirt and was targeted toward LSU fans. The front of the shirt proclaims \xe2\x80\x9c2003 National Champions,\xe2\x80\x9d\nand the back contains the scores from twelve games won by LSU. The scores are arranged in a circle\nwith a short phrase poking fun at each opponent. The shirt also contains the final score of the 2004\nSugar Bowl, which LSU won, and the phrase \xe2\x80\x9cSweet as Sugar!\xe2\x80\x9d Although the shirt does not use the\ninitials \xe2\x80\x9cLSU\xe2\x80\x9d anywhere, its identification of LSU as the national champion is unmistakable from the\ncolors and from the references to the games in which LSU played. This shirt is strikingly similar to\nLSU\xe2\x80\x99s own merchandise that also uses the purple and gold colors and proclaims LSU as the national\nchampion. Several of the official designs contain the scores of the games from LSU\xe2\x80\x99s season and at least\ntwo designs present those scores in a circular arrangement. The official designs also contain the\nphrases \xe2\x80\x9cAin\xe2\x80\x99t It Sweet!\xe2\x80\x9d and \xe2\x80\x9cPour It On!\xe2\x80\x9d\n[7] Another Smack shirt directed at LSU fans is the \xe2\x80\x9cBeat Oklahoma\xe2\x80\x9d shirt. It states, \xe2\x80\x9cBring it Back\nto the Bayou.\xe2\x80\x9d This is very similar to two official designs that state in part \xe2\x80\x9cBring It Home\xe2\x80\x9d and \xe2\x80\x9cWe\xe2\x80\x99ll\nHave Big Fun on the Bayou.\xe2\x80\x9d\n[8] The evidence of similarity is not limited to the shirts targeted toward LSU fans. For example,\nthe \xe2\x80\x9cBourbon Street or Bust!\xe2\x80\x9d shirt directed at OU fans highlights the letters \xe2\x80\x9cOU\xe2\x80\x9d in a different type\nface in the words \xe2\x80\x9cBayou\xe2\x80\x9d and \xe2\x80\x9cyour.\xe2\x80\x9d It also states \xe2\x80\x9cSweet as Sugar,\xe2\x80\x9d references beads, and contains a\npicture of a mardi gras mask. OU presented evidence of official t-shirt designs that also highlight the\nletters \xe2\x80\x9cOU,\xe2\x80\x9d contain phrases such as \xe2\x80\x9cAin\xe2\x80\x99t Nothin\xe2\x80\x99 Sweeter\xe2\x80\x9d and \xe2\x80\x9c100% Pure Sugar,\xe2\x80\x9d and contain\ndepictions of mardi gras masks and beads. Another Smack OU design encourages, \xe2\x80\x9cLet\xe2\x80\x99s Make it Eight,\xe2\x80\x9d\nwhile official designs proclaim \xe2\x80\x9cSugar is Sweet But . . . 8 is Great!\xe2\x80\x9d\n[9] In the district court, Smack presented the affidavit of its principal, Wayne Curtiss, who\nexplained that Smack uses humor and creative language to distinguish its t-shirt designs from those of\nthe purportedly more conservative licensed or school-endorsed apparel. Curtiss asserted that the \xe2\x80\x9cgot\nseven?\xe2\x80\x9d and \xe2\x80\x9cgot eight?\xe2\x80\x9d shirts directed toward OSU and USC fans, respectively, are parodies of the \xe2\x80\x9cgot\nmilk\xe2\x80\x9d campaign. He further averred that he has used a similar design on shirts for LSU and OU fans. It is\nclear from the record, however, that use of creative language is not unique to Smack and does not\nmake Smack\xe2\x80\x99s shirts dissimilar to the Universities\xe2\x80\x99 own products. For example, LSU presented evidence\nof a school-endorsed design that included the phrase \xe2\x80\x9cgot sugar?\xe2\x80\x9d We conclude that Smack\xe2\x80\x99s shirts and\nthe Universities\xe2\x80\x99 products are similar in look, sound, and meaning, and contain very similar color\nuse on a wide range of goods and services does tend to weaken strength and narrow the scope of\nprotection.\xe2\x80\x9d).\n50\n\n756 F.2d 1535, 1545 n. 27 (11th Cir. 1985).\n\n413\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nschemes, words, and images. The similarities in design elements are overwhelming and weigh heavily\nin favor of a likelihood of confusion. The district court correctly held there is no genuine issue of\nmaterial fact with respect to this digit of confusion.54\n[10] The third digit in the likelihood of confusion analysis is the similarity of the products or\nservices. We disagree with Smack\xe2\x80\x99s assertion that the district court did not find a great deal of\nsimilarity between the plaintiffs\xe2\x80\x99 products and the t-shirts at issue, as the district court specifically held\nthat \xe2\x80\x9c[i]t is undisputed that both Smack and the universities market shirts bearing the same color\nschemes, logos, and designs.\xe2\x80\x9d55 The district court went on to reject Smack\xe2\x80\x99s argument that its t-shirts\ndiffered from the Universities\xe2\x80\x99 products because of the use of irreverent phrases or slang language,\nreasoning that Smack\xe2\x80\x99s use of such phrases and language was a misuse of the Universities\xe2\x80\x99 good will in\nits marks. Smack denies that it appropriated the Universities\xe2\x80\x99 good will, but it does not make an\nargument here that its shirts are distinguishable from those of the Universities because of particular\nlanguage on its shirts. We therefore find this factor weighs in favor of a likelihood of confusion.\n[11] Smack concedes that the fourth factor of the analysis\xe2\x80\x94identity of retail outlets and\npurchasers\xe2\x80\x94weighs in favor of a likelihood of confusion because the Universities\xe2\x80\x99 licensed products\nare often sold wholesale to the same retailers who purchase Smack\xe2\x80\x99s products.\n[12] The fifth digit is the identity of advertising media. The district court found that Smack used\nthe Universities\xe2\x80\x99 color schemes, logos, and designs in advertising its shirts at the same or similar\nvenues as those used by the Universities. The court based its finding on Smack\xe2\x80\x99s admission that it\nparticipated in the same trade shows as the Universities and that it displayed its shirts at the trade\nshows. The Universities do not point us to evidence that trade shows are a significant advertising\nchannel for the kinds of products at issue in this case. Although the t-shirts are sold to the public at the\nsame retail outlets as officially licensed merchandise, Curtiss testified that beside limited sales on\nSmack\xe2\x80\x99s web site, Smack does not sell directly to the public and does not advertise. Curtiss testified\nthat Smack sells mainly to wholesalers. Some of these wholesalers may include Smack\xe2\x80\x99s shirts in\nadvertisements that promote their own business, but Curtiss was unable to provide much information\nabout these ads. We conclude that this digit, based on trade show advertising, is minimally probative.\n[13] The sixth digit of confusion further supports a likelihood of confusion. Although not\nnecessary to a finding of likelihood of confusion, a defendant\xe2\x80\x99s intent to confuse may alone be sufficient\nto justify an inference that there is a likelihood of confusion. As noted by the district court, Smack\nadmitted that it \xe2\x80\x9c\xe2\x80\x98used school colors and \xe2\x80\x9cother indicia\xe2\x80\x9d with the intent of identifying the university\nplaintiffs as the subject of the message expressed in the shirt design.\xe2\x80\x99\xe2\x80\x9d Curtiss testified that it was \xe2\x80\x9cno\ncoincidence\xe2\x80\x9d that Smack\xe2\x80\x99s shirts incorporated the color schemes of the plaintiff Universities and that\nhe designed the shirts to make people think of the particular school that each shirt targeted. Smack\nasserts that its intent to copy is not the same as an intent to confuse. The circumstances of this case\nshow, however, that Smack intended to capitalize on the potential for confusion. Smack knew that its\nshirts were sold in the same venues as and sometimes alongside officially licensed merchandise, and it\n\nBecause we conclude that there is no issue of fact as to the similarity of the use of the marks in\nthe t-shirt designs, we need not consider Smack\xe2\x80\x99s contention that the district court erroneously stated\nthere had been instances where consumers actually believed Smack\xe2\x80\x99s shirts were affiliated with or\nsponsored by the Universities. Smack points to a stipulation by the parties at the summary judgment\nstage that there was no evidence any consumer purchased a Smack shirt believing it to be licensed by\none of the Universities. Actual confusion on the part of a consumer is not required to find a likelihood\nof confusion, however. Elvis Presley Enters., 141 F.3d at 203.\n54\n\n55\n\nBd. of Supervisors, 438 F.Supp.2d at 660.\n\n414\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nintentionally incorporated color marks to create the kind of association with the Universities that\nwould influence purchasers.\n[14] The Eleventh Circuit found a likelihood of confusion based on a similar intent by the\ndefendant to capitalize on the popularity of a college sports team. Univ. of Ga. Athletic Ass\xe2\x80\x99n v. Laite.59 In\nLaite, the defendant used school colors and a mark strikingly similar to the University of Georgia\xe2\x80\x99s\nbulldog mascot on cans to sell \xe2\x80\x9cBattlin\xe2\x80\x99 Bulldog Beer.\xe2\x80\x9d After concluding that the defendant\xe2\x80\x99s bulldog\nmark was similar to the university\xe2\x80\x99s mark, the court turned to the defendant\xe2\x80\x99s intent, concluding \xe2\x80\x9cthere\ncan be no doubt that Laite hoped to sell \xe2\x80\x98Battlin\xe2\x80\x99 Bulldog Beer\xe2\x80\x99 not because the beer tastes great, but\nbecause the cans would catch the attention of University of Georgia football fans.\xe2\x80\x9d61 Significantly, the\ncourt found \xe2\x80\x9cthe defendant\xe2\x80\x99s intent and the similarity of design between the two marks sufficient to\nsupport the district court\xe2\x80\x99s finding of a \xe2\x80\x98likelihood of confusion . . . .\xe2\x80\x99\xe2\x80\x9d62 The same is true here. Smack did\nnot hope to sell its t-shirts because of some competitive difference in quality or design compared with\nthe Universities\xe2\x80\x99 licensed products, but rather it intended to take advantage of the popularity of the\nUniversities\xe2\x80\x99 football programs and the appearance of the school teams in the college bowl games. We\nhave previously said that when a \xe2\x80\x9cmark was adopted with the intent of deriving benefit from the\nreputation of [the mark holder] that fact alone \xe2\x80\x98may be sufficient to justify the inference that there is\nconfusing similarity.\xe2\x80\x99\xe2\x80\x9d Amstar Corp. v. Domino\xe2\x80\x99s Pizza, Inc.63 We believe that Smack\xe2\x80\x99s admitted intent\nand the similarity in appearance between Smack\xe2\x80\x99s shirts and the Universities\xe2\x80\x99 licensed products is\nstrong evidence of a likelihood of confusion.\n[15] Smack argues that an intent to confuse is negated by its use of its own logo and the words\n\xe2\x80\x9cTalkin\xe2\x80\x99 the Talk,\xe2\x80\x9d which it maintains identifies it as the source of the shirt. We are not persuaded.\nSmack\xe2\x80\x99s logo appears in a space that is only 2.5 inches wide. We cannot conclude, without more, that\nthis small and inconspicuous placement of the logo would disabuse consumers of a mistaken belief that\nthe Universities sponsored, endorsed or were otherwise affiliated with the t-shirts.64 Smack has not\npointed to evidence that its own logo is recognizable by consumers or that it was acting to trade off its\nown reputation as a producer of specialty t-shirts. Nor are we convinced that Smack\xe2\x80\x99s logo on the\nshirts acts as a disclaimer. The Universities point out that they require all licensed products to contain\nthe licensee\xe2\x80\x99s name. Therefore, a consumer could believe that Smack\xe2\x80\x99s logo merely indicated that it\nwas a licensee.66 We conclude that the intent digit weighs in favor of a conclusion that there is a\nlikelihood of confusion.\n[16] The seventh digit is evidence of actual confusion. Evidence that consumers have been\nactually confused in identifying the defendant\xe2\x80\x99s use of a mark as that of the plaintiff may be the best\nevidence of a likelihood of confusion. It is well established, however, that evidence of actual confusion\nis not necessary for a finding of a likelihood of confusion. The district court did not resolve whether\n\n59\n\n756 F.2d 1535 (11th Cir. 1985).\n\n61\n\nId. at 1545 (footnote omitted).\n\n62\n\nId. at 1545.\n\n615 F.2d 252, 263 (5th Cir. 1980) (quoting RESTATEMENT OF TORTS \xc2\xa7 729, comment f\n(1938)).\n63\n\nSee Pebble Beach, 155 F.3d at 552 (noting that \xe2\x80\x9cconspicuous disclaimers that disclaim affiliation\nmay reduce or eliminate confusion\xe2\x80\x9d).\n64\n\n66 See A.T. Cross Co. v. Jonathan Bradley Pens, Inc., 470 F.2d 689, 692 (2d Cir. 1972) (defendant\xe2\x80\x99s\nplacement of its own name on pen also bearing mark similar to plaintiff\xe2\x80\x99s mark \xe2\x80\x9cdoes not save the day;\na purchaser could well think plaintiff had licensed defendant as a second user and the addition is thus\n\xe2\x80\x98an aggravation, and not a justification\xe2\x80\x99 \xe2\x80\x9d (citation omitted)).\n\n415\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nthere was sufficient evidence of actual confusion, and because such evidence is not required we also\nfind it unnecessary to pass on the question further.69\n[17] With respect to the eighth digit of confusion\xe2\x80\x94the degree of care exercised by potential\npurchasers\xe2\x80\x94the district court held that the t-shirts at issue are relatively inexpensive impulse items\nthat are not purchased with a high degree of care. Where items are relatively inexpensive, a buyer may\ntake less care in selecting the item, thereby increasing the risk of confusion. Smack contends there was\ninsufficient evidence for the district court\xe2\x80\x99s conclusion. In response, the Universities note Curtiss\xe2\x80\x99\ntestimony that he hoped customers\xe2\x80\x99 decisions to purchase Smack\xe2\x80\x99s shirts would be \xe2\x80\x9cquick,\xe2\x80\x9d and they\npoint out that the shirts sell for less than $18. Smack cites no evidence to demonstrate an issue of fact\non this point, and we agree with the district court that this digit weighs in favor of a likelihood of\nconfusion.\n[18] After reviewing the record, we conclude that there is no genuine issue of fact that Smack\xe2\x80\x99s\nuse of the Universities\xe2\x80\x99 color schemes and other identifying indicia creates a likelihood of confusion as\nto the source, affiliation, or sponsorship of the t-shirts. As noted above, the digits of confusion\xe2\x80\x94\nparticularly the overwhelming similarity of the marks and the defendant\xe2\x80\x99s intent to profit from the\nUniversities\xe2\x80\x99 reputation\xe2\x80\x94compel this conclusion. This is so, we have noted, because Smack\xe2\x80\x99s use of the\nUniversities\xe2\x80\x99 colors and indicia is designed to create the illusion of affiliation with the Universities and\nessentially obtain a \xe2\x80\x9cfree ride\xe2\x80\x9d by profiting from confusion among the fans of the Universities\xe2\x80\x99 football\nteams who desire to show support for and affiliation with those teams.72 This creation of a link in the\nconsumer\xe2\x80\x99s mind between the t-shirts and the Universities and the intent to directly profit therefrom\nresults in \xe2\x80\x9can unmistakable aura of deception\xe2\x80\x9d and likelihood of confusion.\n[19] Smack contends that there is no evidence that consumers care one way or the other whether\nt-shirts purchased for wear at a football game are officially licensed and that, absent evidence that\nconsumers prefer licensed merchandise, it was error for the district court to conclude there was a\nlikelihood of confusion. Smack relies in part on our decision in Supreme Assembly, Order of Rainbow for\nGirls v. J.H. Ray Jewelry Company.74 The context of that case is different from the instant case.\n[20] In Rainbow for Girls, a fraternal organization and its official jeweler sued a retailer for\ntrademark infringement based on the retailer\xe2\x80\x99s sale of jewelry bearing the organization\xe2\x80\x99s registered\nmark. Purchasers in the fraternal-organization jewelry market bought jewelry to show membership\nand status in the organization. We upheld the district court\xe2\x80\x99s finding of no likelihood of confusion,\nconcluding that \xe2\x80\x9c[t]he fact that purchasers purchased Rainbow jewelry as a direct result of the\npresence of the Rainbow emblem does not compel the conclusion that they did so believing that the\njewelry was in any way endorsed, sponsored, approved or otherwise associated with Rainbow, given\nthe court\xe2\x80\x99s findings.\xe2\x80\x9d76 The district court had held that there was no historic custom or practice specific\nto Rainbow jewelry or to the fraternal jewelry industry that Rainbow jewelry could be manufactured\nonly with Rainbow\xe2\x80\x99s sponsorship or approval. Instead, the court noted that fraternal organizations\nexercised little control over the manufacture of jewelry bearing their emblems. Furthermore, the court\nThe Universities contend that there was evidence of actual confusion consisting of consumer\nsurveys concerning two of the six t-shirt designs and testimony from Curtiss that \xe2\x80\x9cI have had people\ncome up and go-at the booth and go, \xe2\x80\x98Are these licensed?\xe2\x80\x99 \xe2\x80\x9d The evidence is arguably minimal, see\nAmstar, 615 F.2d at 263, but as discussed we need not resolve the matter.\n69\n\nSee Boston Athletic Ass\xe2\x80\x99n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989) (\xe2\x80\x9cDefendants\xe2\x80\x99 shirts are\nclearly designed to take advantage of the Boston Marathon and to benefit from the good will associated\nwith its promotion by plaintiffs. Defendants thus obtain a \xe2\x80\x98free ride\xe2\x80\x99 at plaintiffs\xe2\x80\x99 expense.\xe2\x80\x9d).\n72\n\n74\n\n676 F.2d 1079 (5th Cir. 1982).\n\n76\n\nId. at 1084 (emphasis added).\n\n416\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nhad held that because Rainbow\xe2\x80\x99s \xe2\x80\x9cofficial jeweler\xe2\x80\x9d was itself well-advertised and used its own\ndistinctive mark on the jewelry, any jewelry without that distinctive mark could not cause confusion.\nWe noted that the district court\xe2\x80\x99s findings distinguished the case from our decision in Boston\nProfessional Hockey Association v. Dallas Cap & Emblem Manufacturing.\n[21] In Boston Hockey, we held that the defendant infringed the plaintiff\xe2\x80\x99s trademark rights by\nselling embroidered patches containing the emblems of professional hockey teams.81 There, the\nemblems were sold for use by the public to show \xe2\x80\x9callegiance to or identification with the teams.\xe2\x80\x9d82 We\nheld that the likelihood of confusion requirement was met because the defendant duplicated and sold\nthe emblems \xe2\x80\x9cknowing that the public would identify them as being the teams\xe2\x80\x99 trademarks\xe2\x80\x9d and\nbecause the public\xe2\x80\x99s \xe2\x80\x9ccertain knowledge . . . that the source and origin of the trademark symbols were\nin plaintiffs satisfies the requirements of the act.\xe2\x80\x9d83\n[22] Subsequently, in Kentucky Fried Chicken Corporation v. Diversified Packaging Corporation, we\nrecognized that Boston Hockey might be read to dispose of the confusion issue when buyers\nundoubtedly know that the plaintiff is the source and origin of a mark.84 We reiterated that a showing\nof likelihood of confusion was still required. But we noted that the circumstances in Boston Hockey\nsupported the likelihood of confusion there insofar as the sale of products \xe2\x80\x9cuniversally associated\xe2\x80\x9d\nwith the hockey team \xe2\x80\x9csupported the inescapable inference that many would believe that the product\nitself originated with or was somehow endorsed by Boston Hockey.\xe2\x80\x9d In Rainbow for Girls, the district\ncourt opinion, which we upheld, also recognized in reference to Boston Hockey that \xe2\x80\x9c\xe2\x80\x98(i)t is not\nunreasonable to conclude, given the degree to which sports emblems are used to advertise teams and\nendorse products, that a consumer seeing the emblem or name of a team on or associated with a good\nor service would assume some sort of sponsorship or association between the product\xe2\x80\x99s seller and the\nteam.\xe2\x80\x99\xe2\x80\x9d87\n[23] We agree with this reasoning as applied to this case, which is more like Boston Hockey than\nRainbow for Girls. We hold that given the record in this case and the digits of confusion analysis\ndiscussed above\xe2\x80\x94including the overwhelming similarity between the defendant\xe2\x80\x99s t-shirts and the\nUniversities\xe2\x80\x99 licensed products, and the defendant\xe2\x80\x99s admitted intent to create an association with the\nplaintiffs and to influence consumers in calling the plaintiffs to mind\xe2\x80\x94that the inescapable conclusion\nis that many consumers would likely be confused and believe that Smack\xe2\x80\x99s t-shirts were sponsored or\nendorsed by the Universities. The Universities exercise stringent control over the use of their marks on\napparel through their licensing program. It is also undisputed that the Universities annually sell\nmillions of dollars worth of licensed apparel. We further recognize the public\xe2\x80\x99s indisputable desire to\nassociate with college sports teams by wearing team-related apparel. We are not persuaded that\nsimply because some consumers might not care whether Smack\xe2\x80\x99s shirts are officially licensed the\nlikelihood of confusion is negated. Whether or not a consumer cares about official sponsorship is a\ndifferent question from whether that consumer would likely believe the product is officially sponsored.\nFor the foregoing reasons, we conclude that a likelihood of confusion connecting the presence of the\nUniversities\xe2\x80\x99 marks and the Universities\xe2\x80\x99 themselves was demonstrated in this case.\n....\n\n81\n\n510 F.2d 1004 (5th Cir. 1975).\n\n82\n\nId. at 1011.\n\n83\n\nId. at 1012.\n\n84\n\n549 F.2d 368, 389 (5th Cir. 1977).\n\n87\n\nRainbow for Girls, 676 F.2d at 1085.\n\n417\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nQuestions and Comments\n1. Materiality and Consumer Confusion. How might courts constrain the enormous expansion of\n\xe2\x80\x9csponsorship or affiliation\xe2\x80\x9d confusion? Lemley & McKenna:\n[W]e argue that courts can begin to rein in some of these excesses by focusing their\nattention on confusion that is actually relevant to purchasing decisions. Uses of a\ntrademark that cause confusion about actual source or about responsibility for quality\nwill often impact purchasing decisions, so courts should presume materiality and impose\nliability when there is evidence such confusion is likely. Uses alleged to cause confusion\nabout more nebulous relationships, on the other hand, are more analogous to false\nadvertising claims, and those uses should be actionable only when a plaintiff can prove\nthe alleged confusion is material to consumers\xe2\x80\x99 decision making.\nMark A. Lemley & Mark McKenna, Irrelevant Confusion, 62 STAN. L. REV. 413, 416 (2010).\n2. The \xe2\x80\x9cCircularity\xe2\x80\x9d Problem in Trademark Law. Trademark commentators have long identified a\nfundamental problem with basing the subject matter and scope of trademark rights on consumer\nperception. The problem is that consumer perception is itself based at least in part on what the law\nallows to occur in the marketplace\xe2\x80\x94and even more problematically, on what consumers think the law\nallows to occur in the marketplace. McCarthy explains:\nTh[e] reality of modern brand extensions raises the \xe2\x80\x9ccircularity\xe2\x80\x9d question. If consumers\nthink that most uses of a trademark require authorization, then in fact they will require\nauthorization because the owner can enjoin consumer confusion caused by unpermitted\nuses or charge for licenses. And if owners can sue to stop unauthorized uses, then only\nauthorized uses will be seen by consumers, creating or reinforcing their perception that\nauthorization is necessary. This is a \xe2\x80\x9cchicken and the egg\xe2\x80\x9d conundrum. Which comes\nfirst? The trademark right on far-flung items or the license? Licensing itself may affect\nconsumer perception if consumers see a plethora of items with the mark perhaps\naccompanied by an \xe2\x80\x9cauthorized by\xe2\x80\x9d label.\nMCCARTHY \xc2\xa7 24:9. See also Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense,\n108 YALE L.J. 1687, 1708 (1999) (\xe2\x80\x9cIronically, having accepted the merchandising rationale for certain\nsorts of trademarks, we may find it hard to undo. It is possible that consumers have come to expect\nthat \xe2\x80\x9cDallas Cowboys\xe2\x80\x9d caps are licensed by the Cowboys, not because they serve a trademark function,\nbut simply because the law has recently required such a relationship. If this expectation exits,\nconsumers may be confused if the law changes.\xe2\x80\x9d); Robert C. Denicola, Freedom to Copy, 108 YALE L.J.\n1661, 1668 (1999).\n3. Trademark rights in fictional elements of expressive works? In Lucasfilm Ltd. LLC v. Ren Ventures\nLtd., No. 17 Civ. 07249, 2018 WL 2392963 (N.D. Cal. Apr. 24, 2018), the defendants produced a mobile\ngame app entitled \xe2\x80\x9cSabacc\xe2\x80\x94The High Stakes Card Game,\xe2\x80\x9d which was based on the card game Sabacc\ndescribed in several novels from the fictional Star Wars universe (and which was featured in the Star\nWars film Solo: A Star Wars Story). The plaintiff asserted trademark rights in the name. In denying the\ndefendants\xe2\x80\x99 motion to dismiss, the Northern District of California cited several previous cases in which\ncourts recognized trademark rights in fictional elements of expressive works:\nDefendants next contend that the name of a fictional good or service in an\nexpressive work does not function as a mark for the expressive work in which the\nfictional good or service appears. On the contrary, courts have long held that fictional\nelements of expressive works can function as trademarks when those elements\nsymbolize the plaintiff or its product to the consuming public. See DC Comics, Inc. v.\nFilmation Assocs., 486 F. Supp. 1273, 1277 (S.D.N.Y. 1980). Following this principal,\ncourts have extended trademark protection to the \xe2\x80\x9cGeneral Lee\xe2\x80\x9d car from the television\nseries \xe2\x80\x9cThe Dukes of Hazzard,\xe2\x80\x9d see Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 78 (2d\n418\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nCir. 1981), the fictional restaurant \xe2\x80\x9cThe Krusty Krab\xe2\x80\x9d from the \xe2\x80\x9cSpongeBob SquarePants\xe2\x80\x9d\ntelevision series, see Viacom Int\'l Inc. v. IJR Capital Invs., LLC, 242 F. Supp. 3d 563, 569\n(S.D. Tex. 2017), the \xe2\x80\x9cHobbit\xe2\x80\x9d characters from J.R.R. Tolkien\xe2\x80\x99s works, see Warner Bros.\nEntm\'t v. Glob. Asylum, Inc., No. CV 12-9547, 2012 WL 6951315 at *3-5 (C.D. Cal. Dec. 10,\n2012), the fictional element \xe2\x80\x9cKryptonite\xe2\x80\x9d associated with Superman comics, see DC\nComics v. Kryptonite Corp., 336 F. Supp. 2d 324, 332, 35 (S.D.N.Y. 2004), and the physical\nappearance of the E.T. character from its titular motion picture film, see Universal City\nStudios, Inc. v. J.A.R. Sales, Inc., No. 82-4892, 1982 WL 1279 at *4 (C.D. Cal. Oct. 20, 1982).\nIn the face of this weight of authority, defendants point to several administrative\ndecisions from the Trademark Trial and Appeal Board (TTAB) where the Board refused\nto recognize certain fictional elements as being trademarks. See Mot. to Dismiss at 17-18.\nYet these decisions merely suggest that fanciful elements do not always function as marks\nfor the expressive works in which they appear, not that they may never do so. For\nexample, in Paramount Pictures Corp. v. Romulan Invasions, 7 U.S.P.Q.2d 1897 (T.T.A.B.\nMar. 31, 1988), Paramount sought to enjoin a rock band from registering \xe2\x80\x9cThe Romulans\xe2\x80\x9d\nas the group\xe2\x80\x99s name, on the grounds that \xe2\x80\x9cRomulans\xe2\x80\x9d are a fictional alien race appearing\nin the Star Trek franchise. While the Board provided no explanatory reasoning for its\nconclusion that Paramount\xe2\x80\x99s use of the name did not confer trademark rights, a\nreasonable consumer would not likely assume the rock band was affiliated with the Star\nTrek franchise on account of its name alone. Thus, the Board concluded Paramount\xe2\x80\x99s use\nof \xe2\x80\x9cRomulans\xe2\x80\x9d should not preclude registration of the rock band\xe2\x80\x99s name.\nLucasfilm Ltd. LLC, 2018 WL 2392963, at *3\xe2\x80\x934. See also Lisa Pearson, The Real Life of Fictional\nTrademarks, 100 TRADEMARK REP. 839 (2020).\n6.\n\nInitial Interest Confusion\n\nVirgin Enterprises focused on \xe2\x80\x9cpoint of sale\xe2\x80\x9d confusion, i.e., consumer confusion as to source at the\nmoment when the consumer purchases the defendant\xe2\x80\x99s goods or services. We turn now to other modes\nof confusion. We consider first \xe2\x80\x9cinitial interest confusion,\xe2\x80\x9d which \xe2\x80\x9coccurs when a customer is lured to a\nproduct by the similarity of the mark, even if the customer realizes the true source of the goods before\nthe sale is consummated.\xe2\x80\x9d Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002), as\namended (Oct. 18, 2002) (citation omitted). See also Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v.\nSteinway & Sons, 523 F.2d 1331, 1342 (2d Cir. 1975) (finding \xe2\x80\x9cinitial confusion\xe2\x80\x9d when the declaratory\nplaintiff used the mark GROTRIAN-STEINWEG for pianos even if no consumers ultimately purchased the\nplaintiff\xe2\x80\x99s pianos believing them to be STEINWAY pianos). The case that follows considers initial interest\nconfusion in the context of online mattress sales.\n\n419\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n\nSelect Comfort Corporation v. Baxter\nNo. 19-1077, 2021 WL 1883314, __F.3d __ (8th Cir. May 11, 2021)\nMELLOY, Circuit Judge.\n[1] Plaintiffs and Defendants sell competing adjustable air mattresses and related products.\nPlaintiffs\xe2\x80\x99 registered trademarks include \xe2\x80\x9cSLEEP NUMBER\xe2\x80\x9d, \xe2\x80\x9cWHAT\xe2\x80\x99S YOUR SLEEP NUMBER\xe2\x80\x9d, \xe2\x80\x9cSELECT\nCOMFORT\xe2\x80\x9d, and \xe2\x80\x9cCOMFORTAIRE\xe2\x80\x9d. Plaintiffs allege Defendants used similar and identical marks in\nseveral different capacities online to sell competing products. . . . At summary judgment the district\ncourt rejected as a matter of law an infringement theory based on presale or initial-interest confusion.\n4 J. McCarthy, Trademarks and Unfair Competition, \xc2\xa7 23:6 (4th Ed. 2010) (hereinafter McCarthy)\n(initial-interest confusion is \xe2\x80\x9cconfusion that creates initial customer interest, even though no actual\nsale is finally completed as a result of the confusion\xe2\x80\x9d). The case proceeded to a trial on trademark\ninfringement and dilution claims and on unfair competition and false advertising claims. Consistent\nwith the summary judgment ruling, the district court instructed the jury that infringement liability\ndepended on a showing of a likelihood of confusion at the time of purchase. The trial resulted in a\nmixed verdict.\n[2] Both sides appeal. . . . Because we conclude the district court erred by finding as a matter of\nlaw that the relevant consumers were sophisticated and that a theory of initial-interest confusion\ncould not apply, we reverse. . . .\nI. Background\n[3] Plaintiffs are the owners of the heavily advertised Select Comfort and Sleep Number brands of\nadjustable air mattresses sold online, over the phone, and (primarily) through hundreds of companyowned stores nationwide. Defendant Dires, LLC, and its principals and predecessor or affiliated\ncompanies, actually made adjustable air beds at an earlier date. Defendants have evolved into an online\nretailer (\xe2\x80\x9cpersonalcomfortbed.com\xe2\x80\x9d) that utilizes internet advertising and a call-center-based sales\nmodel to sell their own brand of lower-priced adjustable air beds. The individual defendants are\nexecutives or owners of Dires or related companies, all of whom had input into marketing strategy and\nadvertising design. Defendants are a distant second to Plaintiffs in adjustable-bed sales volume.\n[4] Plaintiffs\xe2\x80\x99 overall theory of the case alleges Defendants employed words or phrases identical\nor confusingly similar to Plaintiffs trademarks in various online advertising formats including: website\nurls; search inquiry paid terms; embedded links in third-party sites; and general use of identical or\n420\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nsimilar phrases in text advertisements or combined graphic-and-text advertisements that could be\nviewed by users or detected organically by search engines. According to Plaintiffs, Defendants used\nthese means to divert customers to their own website and phone lines where Defendants (1) failed to\ndispel consumer confusion or made statements that caused further source confusion and (2) made\nfalse representations about their own products and Plaintiffs\xe2\x80\x99 products in order to promote their own\nproducts. In this way, Plaintiffs assert trademark infringement, trademark dilution, and falseadvertising theories that rely upon common facts.\n[5] As relevant to claims on appeal, Plaintiffs asserted federal trademark infringement and\ndilution claims based on their registered trademarks, federal unfair competition and false advertising\nclaims, and a state law deceptive trade practices claim. In a declaratory judgment counterclaim,\nDefendants . . . argued Plaintiffs could not maintain an infringement claim based on presale or initialinterest confusion. Both parties sought summary judgment.\n[6] In summary judgment rulings, the district court found . . . [r]egarding trademark\ninfringement . . that outstanding questions of fact precluded summary judgment. Regarding the specific\nquestion of trademark infringement in the form of initial-interest confusion, the district court first\nnoted that Plaintiffs expressly disavowed any theory of trademark infringement that relied exclusively\non Defendants\xe2\x80\x99 use of Plaintiffs\xe2\x80\x99 trademarks as paid search terms with search engine providers such as\nGoogle. Rather, Plaintiffs alleged infringement based on that use coupled with Defendants\xe2\x80\x99 several and\nvaried other uses of similar and identical trademarks in multiple forms of online advertising. The\ndistrict court then relied on our case, Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754\n(8th Cir. 2010), noting that the Eighth Circuit had neither expressly adopted nor rejected a theory of\ninitial-interest confusion as a general matter, but had refused to apply the theory in a case where\nconsumers were sophisticated.\n[7] The District Court next held as a matter of law that retail purchasers of mattresses were\nsophisticated consumers because mattresses are expensive. As a result, the District Court held as a\nmatter of law that a claim alleging initial-interest confusion could not proceed and Plaintiffs would\nhave to show a likelihood of confusion at the time of purchase. . . .\n[8] At trial, Plaintiffs presented evidence which showed Defendants had used Plaintiffs\xe2\x80\x99 actual\ntrademarks as paid search terms and as identical phrases in their own web-based advertising in text\npages, combined text and graphical pages, as terms embedded in linked internet address urls, and in\nother fashions. Examples included website links that presented Plaintiffs\xe2\x80\x99 trademarks as identical\nphrases\n(e.g.\npersonalcomfortbed.com/vSleepNumber\nor\nwww.personalcomfortbed.com/\ncComfortaire). In addition, Defendants used phrases similar to Plaintiffs\xe2\x80\x99 trademarks, often with words\nbroken up in a grammatically non-sensical fashion. Examples included the use of terms such as \xe2\x80\x9cSleep\n55% Off Number Beds\xe2\x80\x9d and \xe2\x80\x9cComfort Air Beds on Sale\xe2\x80\x9d in online advertisements. Survey evidence\ndemonstrated actual consumer confusion, although the parties disputed the relevancy and value of the\nsurvey evidence based on percentages of participants who were confused, whether the survey\nparticipants were actual or potential consumers, and how the questions were presented. Evidence also\nincluded instances of actual confusion, often from transcripts of call-center interactions, messages\nfrom customers, or messages from call-center employees. The transcripts and recordings of call-center\ninteractions appeared to show that Defendants\xe2\x80\x99 call-center employees at times attempted to promote\nconfusion and at other times attempted to dispel confusion. Finally, evidence included statements from\nDefendants\xe2\x80\x99 principals in which they described confusion as between Plaintiffs\xe2\x80\x99 and Defendants\xe2\x80\x99\nbrands as a \xe2\x80\x9cgood thing\xe2\x80\x9d and, in response to reports of confusion, indicated that their advertisements\nwere \xe2\x80\x9cworking.\xe2\x80\x9d\n[9] At the end of the day, the district court submitted the case to the jury. Based on the summary\njudgment ruling, the district court instructed the jury that a likelihood of confusion must exist at the\ntime of purchase to support a trademark infringement claim. . . .\n421\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[10] The jury rejected the trademark infringement claims as to the registered trademarks based\non the jury instruction that limited the possibility of a likelihood of confusion to the time of\npurchase. . . .\nII. Discussion\nA. Initial-Interest Confusion\n[11] The primary issue in this appeal is the availability of a theory of initial-interest confusion on\nthe trademark infringement claim and the resulting limitation in the instruction requiring any\nlikelihood of confusion to exist at the time of purchase. As noted, initial-interest confusion is \xe2\x80\x9cconfusion\nthat creates initial customer interest, even though no actual sale is finally completed as a result of the\nconfusion.\xe2\x80\x9d 4 McCarthy \xc2\xa7 23:6. Most circuits that have addressed the question \xe2\x80\x9crecognize the initial\ninterest confusion theory as a form of likelihood of confusion which can trigger a finding of\ninfringement.\xe2\x80\x9d Id. (collecting cases). In general, the theory of initial-interest confusion recognizes that a\nsenior user\xe2\x80\x99s goodwill holds value at all times, not merely at the moment of purchase. The theory\nprotects against the threat of a competitor \xe2\x80\x9creceiving a \xe2\x80\x98free ride on the goodwill\xe2\x80\x99 of [an] established\nmark.\xe2\x80\x9d Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 295 (3d Cir.\n2001) (quoting Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 260 (2d Cir. 1987)). This free\nride may result in the consumer falsely inferring an affiliation between the junior and senior users,\nprovide the junior user with an opportunity it otherwise would not have achieved, or deprive the\nsenior user of an actual opportunity. Id. at 293\xe2\x80\x9395. At least one circuit has \xe2\x80\x9cequated initial interest\nconfusion to a \xe2\x80\x98bait and switch scheme.\xe2\x80\x99\xe2\x80\x9d Id. at 294 (quoting Dorr-Oliver, Inc. v. Fluid Quip, Inc., 94 F.3d\n376, 382 (7th Cir. 1996)).\n[12] In the present case, the parties dispute as a general matter whether a theory of initialinterest confusion is a viable theory of infringement in our circuit. They also dispute whether the\nrelevant consumers\xe2\x80\x94consumers investigating mattresses and online shoppers in general\xe2\x80\x94are so\nsophisticated that the issue of consumer sophistication could properly be removed from the jury. To\naddress these questions, it is necessary first to review more generally the test for confusion and what\nour Court has said about when confusion must exist.\n....\n[13] To assess the likelihood of confusion as required for a showing of infringement, our circuit\nemploys a list of nonexclusive factors for addressing a core inquiry: whether the relevant average\nconsumers for a product or service are likely to be confused as to the source of a product or service or\nas to an affiliation between sources based on a defendant\xe2\x80\x99s use. . . . The factors we consider come from\nSquirtCo v. Seven\xe2\x80\x93Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). . . .\n[14] This flexible, context-specific, and relative-rather-than-mechanical approach makes sense\nbecause the general function of the likelihood-of-confusion factors is to guide the finder of fact towards\nconsiderations generally thought to be material to the consuming public\xe2\x80\x99s understanding of product\nsource or affiliation. . . .\n[15] Although our test for a likelihood of confusion is well-developed, some uncertainty remains\nas to when confusion must exist in order to support a trademark infringement claim. Sensient, 613 F.3d\nat 766. Although not addressing initial-interest confusion specifically, our Court has clearly established\nthat claims of infringement are not limited solely to a likelihood of confusion at the time of purchase.\nSee Insty*Bit, Inc. v. Poly-Tech Indus., 95 F.3d 663, 671\xe2\x80\x9372 (8th Cir. 1996). In Insty*Bit, our Court\nrecognized that a 1962 amendment to the Lanham Act eliminated reference to \xe2\x80\x9cpurchasers\xe2\x80\x9d when\ndescribing actionable confusion. Id. (quoting Pub. L. No. 87\xe2\x80\x93772, 76 Stat. 769, 773 (1962)). We\ninterpreted this statutory amendment as permitting claims for post-sale confusion among\nnonpurchasers\xe2\x80\x94generally \xe2\x80\x9cconsumers\xe2\x80\x9d\xe2\x80\x94 who witnessed a confusingly marked product. Id.\n[16] Fourteen years later, however, our Court indicated that it was unclear as a general matter\nwhether initial-interest or presale confusion was actionable. See Sensient Tech., 613 F.3d at 766. There,\n422\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nover a dissent, our circuit identified the theory, but neither rejected nor adopted it for general\napplication. Instead, we held that the theory did not apply on the facts of the case because the\nconsumers at issue were sophisticated commercial purchasers of inputs for industrial food production\nwho purchased goods with a high degree of care \xe2\x80\x9cafter a collaborative process.\xe2\x80\x9d Id. at 769.\n[17] The general question of whether presale, initial-interest confusion is actionable, therefore,\nseemingly pits two opposing views of trademark law against one another. On the one hand, through\nour application and review of the likelihood of confusion factors, we recognize the varied landscape of\ncommercial transactions and leave the jury to sort through the details. Our factors provide guidance\nbut do not draw bright lines that might constrain the general test for confusion. Similarly, the Court in\nInsty*Bit refused to place firm constraints on the question of when confusion must exist. On the other\nhand, in Sensient, our Court acknowledged the possibility of cabining the likelihood-of-confusion test to\na particular moment in time, at least under certain circumstances.\n[18] We now address the issue left open in Sensient and hold that a theory of initial-interest\nconfusion may apply in our circuit. We are, of course, bound by Sensient. But, when the particular\nconditions of Sensient are not present, i.e., when a jury question exists as to the issue of consumer\nsophistication, a plaintiff should not be barred from proving presale, initial-interest confusion. In\nreaching this conclusion we find the Lanham Act itself and amendments to its language as cited in\nInsty*Bit particularly compelling. Other courts addressing the question of initial-interest confusion\nhave relied on this language. Checkpoint, 269 F.3d at 295 (noting that as originally enacted, \xe2\x80\x9cthe\nLanham Act only applied where the use of similar marks was \xe2\x80\x98likely to cause confusion or mistake or to\ndeceive purchasers as to the source of origin of such goods or services\xe2\x80\x99 \xe2\x80\x9d (quoting 1946 Lanham Act)\n(accord Esercizio v. Roberts, 944 F.2d 1235, 1244 (6th Cir. 1991))); see generally, 4 McCarthy \xc2\xa7 23:7\n(collecting cases) (noting that several courts have interpreted this amendment as expanding\ntrademark protection beyond point-of-sale confusion to reach presale confusion (including initialinterest confusion) and post-sale confusion). And, in general, adoption of the theory is consistent with\nthe overall practice of recognizing the varied nature of commercial interactions and the importance of\nnot cabining the jury\xe2\x80\x99s analysis of the likelihood of confusion factors. If we do not generally impose\nstrict constraints on the jury\xe2\x80\x99s nuanced assessment of how or whether the consuming public might be\nconfused, it would be odd to presume that all commercial interactions are alike or that, in all settings,\ntrademarks are worthy of protection only in the few moments before the consummation of a\ntransaction.\n[19] Of course, as per Sensient, the theory of initial-interest confusion cannot apply in our Circuit\nwhere the relevant average consumers are sophisticated at the level of the careful professional\npurchasers who were at issue in Sensient. In this regard, however, we find several comments by the\ndissent in Sensient compelling, and we note that a finding of customer sophistication typically will rest\nwith the jury.\n[20] In reaching its conclusion, the Court in Sensient relied upon Checkpoint Systems for the\nproposition that \xe2\x80\x9ccourts look to factors such as product relatedness and the level of care exercised by\ncustomers to determine whether initial interest confusion exists.\xe2\x80\x9d Sensient, 613 F.3d at 766. Sensient\nwas an appeal from a grant of summary judgment, and on the summary judgment record, our Court\nindicated that the parties agreed the relevant consumers were sophisticated. The dissent in Sensient\naccurately noted, however, that in Checkpoint Systems, the Third Circuit had been reviewing the issue\nafter trial, not making a determination as to consumer sophistication as a matter of law (or making any\nlikelihood of confusion determinations) at the summary judgment stage. Id. at 773 (Colloton, J,\ndissenting). The dissent described the theory of initial-interest confusion and emphasized that, even if\ncustomers are sophisticated, that fact alone should not automatically defeat the theory. In advocating\nfor this no-blanket-rule point, the dissent cited a Second Circuit case involving professional buyers in a\nlawsuit between Mobil Oil and an entity that was marketing products under the name \xe2\x80\x9cPegasus\nPetroleum.\xe2\x80\x9d The dissent noted that \xe2\x80\x9c[w]hether or not a sophisticated customer eventually would sort\n423\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nout the difference, the doctrine of initial interest confusion prevents an infringer from using another\xe2\x80\x99s\nmark to gain \xe2\x80\x98crucial credibility during the initial phases of a deal.\xe2\x80\x99\xe2\x80\x9d Id. at 773 (quoting Mobil Oil Corp. v.\nPegasus Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987)). And, the dissent also emphasized that the\nThird Circuit in Checkpoint specifically disclaimed any categorical rule, stating instead that the\n\xe2\x80\x9csignificance [of customer sophistication] will vary, and must be determined on a case-by-case basis.\xe2\x80\x9d\nSensient, 613 F.3d at 773 (quoting Checkpoint, 269 F.3d at 297).\n[21] Regardless of the relative merits of the positions reflected in Sensient, our general adoption\nof the theory of initial-interest confusion forecloses summary judgment where a question of fact exists\nas to the level of consumer sophistication. Here, the parties dispute the issue of consumer\nsophistication both in reference to shopping for mattresses and shopping online. They also dispute\nwhether consumer sophistication should be measured at the \xe2\x80\x9cpoint of click\xe2\x80\x9d for an online shopper, at\nthe point of sale upon final purchase, or at points in between. For the reasons previously discussed, we\ndo not believe it is appropriate to cabin the analysis to any one point in time. And, in any event,\nauthority is mixed as to whether mattress shoppers and online shoppers should be deemed careful,\nsophisticated consumers.\n[22] On the one hand, mattresses are relatively expensive among most consumers\xe2\x80\x99 purchases. See\nSleepmaster Prods. Co. v. Am. Auto-Felt Corp., 241 F.2d 738, 741 (C.C.P.A. 1957) (\xe2\x80\x9c[T]he average\npurchaser will exercise such care in the selection of a mattress as to minimize the possibility of\nconfusion as to the origin of the goods.\xe2\x80\x9d). On the other hand, most people buy mattresses infrequently,\nso they enter the marketplace uneducated and susceptible to fast-talking sales people and brand\nconfusion. See Friedman v. Sealy, Inc., 274 F.2d 255, 261\xe2\x80\x9362 (10th Cir. 1959) (\xe2\x80\x9c[S]ince a mattress or box\nspring requires an investment . . ., the degree of care which a customer might be expected to exercise is\nsomewhat greater than if he were buying 5-cent candies. [But] the construction of sleep equipment is\nnot a matter of common knowledge and the consumer buys infrequently. He is thus forced to rely on\nhis memory, more than his inspection, for the recall of names, guarantees, and endorsements. Under\nsuch circumstances, confusion can easily arise.\xe2\x80\x9d).\n[23] Authority is also mixed as to the level of sophistication web-based shoppers bring to the\ntable and how this potentially separate question should influence the general assessment of\nsophistication. Compare Coca-Cola Co. v. Purdy, No. 02-1782 ADM/JGL, 2005 WL 212797, at *4 (D.\nMinn. Jan. 28, 2005) (\xe2\x80\x9c[T]he quick and effortless nature of \xe2\x80\x98surfing\xe2\x80\x99 the Internet makes it unlikely that\nconsumers can avoid confusion through the exercise of due care.\xe2\x80\x9d) and GoTo.com, Inc. v. Walt Disney\nCo., 202 F.3d 1199, 1209 (9th Cir. 2000) (\xe2\x80\x9cNavigating amongst web sites involves practically no effort\nwhatsoever, and arguments that Web users exercise a great deal of care before clicking on hyperlinks\nare unconvincing.\xe2\x80\x9d) with Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1179 (9th Cir. 2010)\n(\xe2\x80\x9c[I]n the age of [the internet], reasonable, prudent and experienced internet consumers are\naccustomed to such exploration by trial and error. They skip from site to site, ready to hit the back\nbutton whenever they\xe2\x80\x99re not satisfied with a site\xe2\x80\x99s contents. They fully expect to find some sites that\naren\xe2\x80\x99t what they imagine based on a glance at the domain name or search engine summary.\xe2\x80\x9d). See also\nNetwork Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1152 (9th Cir. 2011)\n(noting that although \xe2\x80\x9c\xe2\x80\x98there is generally a low degree of care exercised by Internet consumers\xe2\x80\x99 . . . the\ndegree of care analysis cannot begin and end at the marketing channel. We still must consider the\nnature and cost of the goods, and whether \xe2\x80\x98the products being sold are marketed primarily to expert\nbuyers.\xe2\x80\x99\xe2\x80\x9d (quoting Brookfield Comm\xe2\x80\x99ns, Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1060 (9th Cir.\n1999))).\n[24] At the end of the day, this mix of authority regarding consumer confusion in the context of\ninternet shopping and mattress purchases demonstrates well why a jury rather than a judge should\nassess the level of consumer sophistication. This point is particularly strong in a case which, like the\npresent case, enjoys a full record including highly detailed descriptions of Plaintiffs\xe2\x80\x99 and Defendants\xe2\x80\x99\ncustomers\xe2\x80\x99 experience and ample evidence of (1) actual confusion including transcripts of potential\n424\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\ncustomers who called Defendants\xe2\x80\x99 call centers and believed they were calling Plaintiffs, and (2)\nstatements by Defendants\xe2\x80\x99 principals describing the actual confusion as evidence that their own\nadvertising was working. See Kemp, 398 F.3d at 1058 (evidence of actual confusion, while not required,\nis strong evidence of a likelihood of confusion); SquirtCo, 628 F.2d at 1091 (\xe2\x80\x9cLikewise, actual confusion\nis not essential to a finding of trademark infringement, although it is positive proof of likelihood of\nconfusion.\xe2\x80\x9d).\n[25] Against this backdrop, we conclude a jury question existed as to the issue of consumer\nsophistication and summary judgment on the theory of initial-interest confusion was error. For the\nsame reasons, and based on Insty*Bit, we conclude that limiting the infringement instruction to require\nconfusion at the time of purchase was error. Finally, given the strength of the Plaintiffs\xe2\x80\x99 evidence on the\nissue of confusion, we cannot conclude that the summary judgment and instructional errors were\nharmless. See Fed. R. Civ. P. 61. In so ruling, we make no comment as to how a finding of confusion at\ntimes other than the moment of purchase might affect the analysis of remedies and the determination\nof damages.\n....\nQuestions and Comments\n1. Initial Interest Confusion and Trade Dress. In Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP,\n423 F.3d 539 (6th Cir. 2005), Gibson and Paul Reed Smith both manufactured single cutaway guitars,\nthe shape of which is shown below in Gibson\xe2\x80\x99s trademark registration for its product configuration.\nGibson conceded that there was no likelihood of point-of-sale confusion due to Paul Reed Smith\xe2\x80\x99s\nprominent labelling, but argued that there was a likelihood of initial interest confusion in that\nconsumers would see a PRS single cutaway guitar from across a store and believe it to be a Gibson\nguitar. The Sixth Circuit declined to apply initial interest confusion to trade dress. It reasoned:\nThe potential ramifications of applying this judicially created doctrine to product-shape\ntrademarks are different from the ramifications of applying the doctrine to trademarks\non a product\xe2\x80\x99s name, a company\xe2\x80\x99s name, or a company\xe2\x80\x99s logo. Cf. Versa Prods. Co. v. Bifold\nCo., 50 F.3d 189, 201\xe2\x80\x9303, 207, 209, 212\xe2\x80\x9313, 215 (3rd Cir. 1995) (discussing the related\ncontext of product-configuration trade dress). Specifically, there are only a limited\nnumber of shapes in which many products can be made. A product may have a shape\nwhich is neither functional nor generic (and hence which can be trademarked) but\nnonetheless is still likely to resemble a competing product when viewed from the far end\nof a store aisle. Thus, many legitimately competing product shapes are likely to create\nsome initial interest in the competing product due to the competing product\xe2\x80\x99s\nresemblance to the better-known product when viewed from afar. In other words,\napplication of the initial-interest-confusion doctrine to product shapes would allow\ntrademark holders to protect not only the actual product shapes they have trademarked,\nbut also a \xe2\x80\x9cpenumbra\xe2\x80\x9d of more or less similar shapes that would not otherwise qualify for\ntrademark protection.\nId. at 551.\n(In ruling in favor of Paul Reed Smith on all surviving claims brought against it, the court ruled\nthat Paul Reed Smith\xe2\x80\x99s functionality objection to the validity of Gibson\xe2\x80\x99s mark was moot).\n\n425\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n\n2. When do courts find initial interest confusion? Initial interest confusion remains a highly\ncontroversial basis for a finding of infringement, one which courts typically resort to only in a limited\nset of contexts. Courts appear to be more likely to find initial interest confusion if the defendant has\nengaged in patently bad faith \xe2\x80\x9cbait and switch\xe2\x80\x9d sales practices or in conduct akin to intentional\ncybersquatting, if the relevant consumers are unsophisticated, or if the defendant competes directly\nwith the plaintiff. See, e.g., Epic Sys. Corp. v. YourCareUniverse, Inc., 244 F. Supp. 3d 878, 902 (W.D. Wisc.\n2017) (\xe2\x80\x9cCourts are most likely to apply the doctrine of initial interest confusion doctrine in\ncircumstances involving directly competing products, particularly when the potential purchasers are\nlay consumers making decisions in a relatively short amount of time with limited information.\xe2\x80\x9d).\nFurthermore, in reviewing the initial interest confusion case law, Gilson concludes that to prevail on an\ninitial interest confusion basis, the plaintiff must show that it has been economically damaged by the\ndefendant\xe2\x80\x99s conduct. See GILSON \xc2\xa7 5.14[01][1][a]. See also Lamparello v. Falwell, 420 F.3d 309, 317 (4th\nCir. 2005) (\xe2\x80\x9cThe few appellate courts that have . . . imposed liability under [the initial interest\nconfusion] theory for using marks on the Internet have done so only in cases involving . . . one\nbusiness\xe2\x80\x99s use of another\xe2\x80\x99s mark for its own financial gain. . . . Profiting financially from initial interest\nconfusion is . . . a key element for imposition of liability under this theory.\xe2\x80\x9d). In general, it appears that\ncourts have developed initial interest confusion doctrine to provide them with some degree of\nflexibility to reach what they deem to be the right result as a matter of equity in situations where there\nis no consumer confusion at the point of sale.\n3. Critiquing Initial Interest Confusion. For a thorough critique of initial interest confusion\ndoctrine, see Jennifer E. Rothman, Initial Interest Confusion: Standing at the Crossroads of Trademark\nLaw, 27 CARDOZO L. REV. 105 (2005). Rothman observes: \xe2\x80\x9cThe courts\xe2\x80\x99 initial motivation for adopting\ninitial interest confusion was a legitimate effort to prevent baiting and switching practices. However,\nsince then courts have unreasonably stretched the doctrine to cover many circumstances which should\nbe considered fair competition or which are better addressed by other existing statutes.\xe2\x80\x9d Id. at 113.\n\n426\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n7.\n\nPost-Sale Confusion\n\nMastercrafters\xe2\x80\x99 clock (left) and LeCoultre\xe2\x80\x99s clock (right)*\nWhile initial interest confusion addresses the likelihood of confusion before the point of sale,\npost-sale confusion, as its name suggests, addresses confusion after the point of sale. One of the first\ncases to recognize some form of post-sale confusion was Mastercrafters Clock & Radio Co. v. Vacheron &\nConstantin-LeCoultre Watches, Inc., 221 F.2d 464 (2d Cir. 1955). In Mastercrafters, the declaratory\nplaintiff Mastercrafters produced an electric clock made to look like the declaratory defendant\xe2\x80\x99s\nexpensive and prestigious Atmos table clock, a non-electric clock that wound itself from changes in\natmospheric pressure. Mastercrafters sold its clock for about $30; LeCoultre sold the Atmos clock for\nnot less than $175 (about $1,700 in today\xe2\x80\x99s money). Mastercrafters sought a declaration that its\nconduct did not constitute unfair competition. Judge Frank held in favor of LeCoultre. Though there\nwas no point-of-sale confusion, there was nevertheless unfair competition:\nTrue, a customer examining plaintiff\xe2\x80\x99s clock would see from the electric cord, that it was\nnot an \xe2\x80\x98atmospheric\xe2\x80\x99 clock. But, as the {district} judge found, plaintiff copied the design of\nthe Atmos clock because plaintiff intended to, and did, attract purchasers who wanted a\n\xe2\x80\x9cluxury design\xe2\x80\x9d clock. This goes to show at least that some customers would buy\nplaintiff\xe2\x80\x99s cheaper clock for the purpose of acquiring the prestige gained by displaying\nwhat many visitors at the customers\xe2\x80\x99 homes would regard as a prestigious article.\nPlaintiff\xe2\x80\x99s wrong thus consisted of the fact that such a visitor would be likely to assume\nthat the clock was an Atmos clock. Neither the electric cord attached to, nor the plaintiff\xe2\x80\x99s\nname on, its clock would be likely to come to the attention of such a visitor; the likelihood\nof such confusion suffices to render plaintiff\xe2\x80\x99s conduct actionable.\nId. at 464.\nThe post-sale confusion theory has been controversial, as the dissent in the following case\nsuggests. In reading through Ferrari S.P.A. v. Roberts, 944 F.2d 1235 (6th Cir. 1991), which involves the\nunauthorized production of \xe2\x80\x9cFauxrraris\xe2\x80\x9d, consider the following questions:\n\xe2\x80\xa2\n\nShould courts take into account the confusion as to source of consumers who would never\nactually purchase the plaintiff\xe2\x80\x99s goods (or the defendant\xe2\x80\x99s goods for that matter)?\n\n\xe2\x80\xa2\n\nShould trademark law be used to protect the exclusivity of status goods? If it should not be so\nused, how can we make sure we do not throw out the baby with the bathwater? In other\nwords, how can we design trademark law so that it will not protect the exclusivity of status\ngoods but will nevertheless continue to protect the traditional source-denoting function of\n\nCourtesy of Rebecca Tushnet & Georgetown Law Library, Intellectual Property Teaching\nResources (2020).\n*\n\n427\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\ntrademarks for non-status goods? Who decides which goods are status goods? Is a pickup\ntruck a status good?\nFerrari S.P.A. v. Roberts\n944 F.2d 1235 (6th Cir. 1991)\n\n1971 Ferrari 365 GTS4 Daytona Spyder*\n\nFerrari Testarossa\nRYAN, Circuit Judge.\n[1] This is a trademark infringement action brought pursuant to the Lanham Act, 15 U.S.C. \xc2\xa7 1051,\net seq. The principal issue is whether the district court correctly concluded that plaintiff Ferrari\nenjoyed unregistered trademark protection in the exterior shape and appearance of two of its\nautomobiles and, if so, whether defendant Roberts\xe2\x80\x99 replicas of Ferrari\xe2\x80\x99s designs infringed that\nprotection, in violation of section 43(a) of the Lanham Act . . . .\n[2] We hold that the district court properly decided all of the issues and, therefore, we shall\naffirm.\nI. The Facts\n[3] Ferrari is the world famous designer and manufacturer of racing automobiles and upscale\nsports cars. Between 1969 and 1973, Ferrari produced the 365 GTB/4 Daytona. Because Ferrari\nintentionally limits production of its cars in order to create an image of exclusivity, only 1400 Daytonas\nwere built; of these, only 100 were originally built as Spyders, soft-top convertibles. Daytona Spyders\n*\n\nhttp://blog.hemmings.com/index.php/tag/ferrari-365-gts4-daytona-spyder/.\n\n428\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\ncurrently sell for one to two million dollars. Although Ferrari no longer makes Daytona Spyders, they\nhave continuously produced mechanical parts and body panels, and provided repair service for the\ncars.\n[4] Ferrari began producing a car called the Testarossa in 1984. To date, Ferrari has produced\napproximately 5000 Testarossas. Production of these cars is also intentionally limited to preserve\nexclusivity: the entire anticipated production is sold out for the next several years and the waiting\nperiod to purchase a Testarossa is approximately five years. A new Testarossa sells for approximately\n$230,000.\n[5] Roberts is engaged in a number of business ventures related to the automobile industry. One\nenterprise is the manufacture of fiberglass kits that replicate the exterior features of Ferrari\xe2\x80\x99s Daytona\nSpyder and Testarossa automobiles. Roberts\xe2\x80\x99 copies are called the Miami Spyder and the Miami Coupe,\nrespectively. The kit is a one-piece body shell molded from reinforced fiberglass. It is usually bolted\nonto the undercarriage of another automobile such as a Chevrolet Corvette or a Pontiac Fiero, called\nthe donor car. Roberts marketed the Miami Spyder primarily through advertising in kit-car magazines.\nMost of the replicas were sold as kits for about $8,500, although a fully accessorized \xe2\x80\x9cturnkey\xe2\x80\x9d version\nwas available for about $50,000.\n[6] At the time of trial, Roberts had not yet completed a kit-car version of the Miami Coupe, the\nreplica of Ferrari\xe2\x80\x99s Testarossa, although he already has two orders for them. He originally built the\nMiami Coupe for the producers of the television program \xe2\x80\x9cMiami Vice\xe2\x80\x9d to be used as a stunt car in place\nof the more expensive Ferrari Testarossa.\n[7] The district court found, and it is not disputed, that Ferrari\xe2\x80\x99s automobiles and Roberts\xe2\x80\x99\nreplicas are virtually identical in appearance.\n[8] Ferrari brought suit against Roberts in March 1988 alleging trademark infringement, in\nviolation of section 43(a) of the Lanham Act, and obtained a preliminary injunction enjoining Roberts\nfrom manufacturing the replica cars. The injunction was later amended to permit Roberts to\nrecommence production of the two models.\n[9] Five months later, Roberts filed a voluntary petition in bankruptcy. Despite the Chapter 11\nproceedings, the bankruptcy court, in a carefully limited order, lifted the automatic stay and permitted\nFerrari to continue to prosecute this action. Prior to trial, the district court denied Roberts\xe2\x80\x99 request for\na jury, and the case was tried to the court resulting in a verdict for Ferrari and a permanent injunction\nenjoining Roberts from producing the Miami Spyder and the Miami Coupe.\nII.\n....\n[10] The protection against infringement provided by section 43(a) is not limited to \xe2\x80\x9cgoods,\nservices or commercial activities\xe2\x80\x9d protected by registered trademarks. It extends as well, in certain\ncircumstances, to the unregistered \xe2\x80\x9ctrade dress\xe2\x80\x9d of an article. \xe2\x80\x9cTrade dress\xe2\x80\x9d refers to \xe2\x80\x9cthe image and\noverall appearance of a product.\xe2\x80\x9d Allied Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806, 812 (5th Cir.\n1989) . . . .\n[11] Ferrari\xe2\x80\x99s Lanham Act claim in this case is a \xe2\x80\x9ctrade dress\xe2\x80\x9d claim. Ferrari charges, and the\ndistrict court found, that the unique and distinctive exterior shape and design of the Daytona Spyder\nand the Testarossa are protected trade dress which Roberts has infringed by copying them and\nmarketing his replicas.\n[12] Roberts asserts that there has been no infringement under section 43(a) for a number of\nreasons: (1) the design of Ferrari\xe2\x80\x99s vehicles are protected only under design patent law, see 35 U.S.C.\n\xc2\xa7 171, and not the Lanham Act; (2) there is no actionable likelihood of confusion between Ferrari\xe2\x80\x99s\nvehicles and Roberts\xe2\x80\x99 replicas at the point of sale; and (3) the \xe2\x80\x9caesthetic functionality doctrine\xe2\x80\x9d\nprecludes recovery.\n429\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[13] We shall take up each argument in turn.\nIII.\n[14] To prove a violation of section 43(a), Ferrari\xe2\x80\x99s burden is to show, by a preponderance of the\nevidence:\n1) that the trade dress of Ferrari\xe2\x80\x99s vehicles has acquired a \xe2\x80\x9csecondary meaning,\xe2\x80\x9d\n2) that there is a likelihood of confusion based on the similarity of the exterior shape and\ndesign of Ferrari\xe2\x80\x99s vehicles and Roberts\xe2\x80\x99 replicas, and\n3) that the appropriated features of Ferrari\xe2\x80\x99s trade dress are primarily nonfunctional.\nSee Kwik-Site Corp. v. Clear View Mfg. Co., Inc., 758 F.2d 167, 178 (6th Cir. 1985).\nA. Secondary Meaning\n....\n[15] Ferrari\xe2\x80\x99s vehicles would not acquire secondary meaning merely because they are unique\ndesigns or because they are aesthetically beautiful. The design must be one that is instantly identified\nin the mind of the informed viewer as a Ferrari design. The district court found, and we agree, that the\nunique exterior design and shape of the Ferrari vehicles are their \xe2\x80\x9cmark\xe2\x80\x9d or \xe2\x80\x9ctrade dress\xe2\x80\x9d which\ndistinguish the vehicles\xe2\x80\x99 exterior shapes not simply as distinctively attractive designs, but as Ferrari\ncreations.\n[16] We also agree with the district court that Roberts\xe2\x80\x99 admission that he intentionally copied\nFerrari\xe2\x80\x99s design, the survey evidence introduced by Ferrari, and the testimony of {various witnesses}\namount to abundant evidence that the exterior design features of the Ferrari vehicles are \xe2\x80\x9ctrade dress\xe2\x80\x9d\nwhich have acquired secondary meaning.\n....\nB. Likelihood of Confusion\n1. District Court\xe2\x80\x99s Findings\n....\n[17] The district court found, based upon an evaluation of the eight Frisch factors, that the\nsimilarity of the exterior design of the Ferrari vehicles and the Roberts replicas was likely to confuse\nthe public. The court noted that while no evidence was offered on two of the factors, evidence of actual\nconfusion and likelihood of expansion of the product lines, two others, marketing channels and\npurchaser care, favored Roberts and the remaining factors \xe2\x80\x9cradically favor[ed] Ferrari.\xe2\x80\x9d Summarized,\nthe district court\xe2\x80\x99s findings on the Frisch \xe2\x80\x9clikelihood of confusion\xe2\x80\x9d factors are as follows:\n\n430\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[18] Recalling that the claimed mark involved here is the trade dress\xe2\x80\x94the exterior shape and\ndesign of the Ferrari vehicles\xe2\x80\x94it is clear that Ferrari\xe2\x80\x99s mark is very strong. The strength of the mark is\nits distinctiveness and Ferrari\xe2\x80\x99s designs are unquestionably distinctive. The survey evidence we have\ndiscussed, as well as the testimony that the shape of the plaintiff\xe2\x80\x99s vehicles \xe2\x80\x9csays Ferrari,\xe2\x80\x9d is evidence of\nthat distinctiveness. Indeed, Roberts\xe2\x80\x99 purposeful effort to copy the Ferrari designs is strong\ncircumstantial evidence of the distinctiveness of the originals.\n[19] There is no dispute about the relatedness of the goods factor. The products produced by both\nparties are sports cars.\n[20] Likewise, the similarity of the marks\xe2\x80\x94the exterior designs of the vehicles\xe2\x80\x94is indisputable.\nFerrari offered survey evidence which showed that 68% of the respondents could not distinguish a\nphotograph of the McBurnie replica, upon which Roberts\xe2\x80\x99 Miami Spyder is based, from a photograph of\nthe genuine Ferrari Daytona Spyder. In these photographs, the cars were shown without identifying\ninsignia. Drawings for Roberts\xe2\x80\x99 cars show identifying insignia, an \xe2\x80\x9cR\xe2\x80\x9d on the parking lens and vent\nwindow, but the cars produced at the time of trial did not include the \xe2\x80\x9cR\xe2\x80\x9d. Because the survey\nrespondents saw photographs of the McBurnie cars, and because all of the identifying insignia were\nremoved, the survey has limited value in showing the likelihood of confusion between the Roberts and\nFerrari vehicles if displayed with identifying emblems. The survey, however, does show that the trade\ndress of the two car designs, the shapes and exteriors, were quite similar. An examination of the\nphotographs of the cars which are in evidence confirms the striking similarity of the dress of the\noriginals and the replicas. They are virtually indistinguishable.\n[21] Finally, Roberts conceded that his intent in replicating the exterior design of Ferrari\xe2\x80\x99s\nvehicles was to market a product that looked as much as possible like a Ferrari original, although\nRoberts made no claim to his customers that his replicas were Ferraris. \xe2\x80\x9c\xe2\x80\x98[The] intent of [a party] in\nadopting [another\xe2\x80\x99s mark] is a critical factor, since if the mark was adopted with the intent of deriving\nbenefit from the reputation of [the plaintiff,] that fact alone may be sufficient to justify the inference that\nthere is confusing similarity.\xe2\x80\x99\xe2\x80\x9d Frisch\xe2\x80\x99s Restaurants, 670 F.2d at 648 (emphasis in original) (quoting\nAmstar Corp. v. Domino\xe2\x80\x99s Pizza, Inc., 615 F.2d 252, 263 (5th Cir.), cert. denied, 449 U.S. 899, 101 S.Ct.\n268, 66 L.Ed.2d 129 (1980)); see also Mastercrafters, 221 F.2d at 467. This is especially true in cases,\nsuch as this one, where the defendant sold a comparatively cheap imitation of an expensive, exclusive\nitem. As the court in Rolex Watch explained:\nBy selling the bogus watches, only one inference may be drawn: the Defendants intended\nto derive benefit from the Plaintiff\xe2\x80\x99s reputation. This inference is no less reasonable when\nweighed against the Defendants\xe2\x80\x99 assertion that in selling these watches, they did not fail\nto inform the recipients that they were counterfeits.\nRolex Watch, U.S.A., Inc. v. Canner, 645 F.Supp. 484, 492 (S.D.Fla.1986). Intentional copying, however, is\nnot actionable under the Lanham Act \xe2\x80\x9cabsent evidence that the copying was done with the intent to\nderive a benefit from the reputation of another.\xe2\x80\x9d Zin-Plas Corp. v. Plumbing Quality AGF Co., 622 F.Supp.\n415, 420 (W.D.Mich.1985). \xe2\x80\x9cWhere the copying by one party of another\xe2\x80\x99s product is not done to\ndeceive purchasers and thus derive a benefit from another\xe2\x80\x99s name and reputation, but rather to avail\noneself of a design which is attractive and desirable, a case of unfair competition is not made out.\xe2\x80\x9d West\nPoint Mfg., 222 F.2d at 586. In this case, where Ferrari\xe2\x80\x99s design enjoyed strong secondary meaning and\nRoberts admitted that he designed his cars to look like Ferrari\xe2\x80\x99s, the intent to copy was clear.\n[22] We conclude that aside from the presumption of likelihood of confusion that follows from\nintentional copying, Ferrari produced strong evidence that the public is likely to be confused by the\nsimilarity of the exterior design of Ferrari\xe2\x80\x99s vehicles and Roberts\xe2\x80\x99 replicas.\n2. Roberts\xe2\x80\x99 Objections\n[23] Roberts disagrees with the legal significance of the district court\xe2\x80\x99s findings of likelihood of\nconfusion. He argues that for purposes of the Lanham Act, the requisite likelihood of confusion must be\n431\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nconfusion at the point of sale\xe2\x80\x94purchaser confusion\xe2\x80\x94and not the confusion of nonpurchasing, casual\nobservers. The evidence is clear that Roberts assured purchasers of his replicas that they were not\npurchasing Ferraris and that his customers were not confused about what they were buying.\n....\nb. Confusion at Point of Sale\n[24] Roberts argues that his replicas do not violate the Lanham Act because he informed his\npurchasers that his significantly cheaper cars and kits were not genuine Ferraris and thus there was no\nconfusion at the point of sale. The Lanham Act, however, was intended to do more than protect\nconsumers at the point of sale. When the Lanham Act was enacted in 1946, its protection was limited\nto the use of marks \xe2\x80\x9clikely to cause confusion or mistake or to deceive purchasers as to the source of\norigin of such goods or services.\xe2\x80\x9d In 1967 {recte 1962}, Congress deleted this language and broadened\nthe Act\xe2\x80\x99s protection to include the use of marks \xe2\x80\x9clikely to cause confusion or mistake or to deceive.\xe2\x80\x9d\nThus, Congress intended \xe2\x80\x9cto regulate commerce within [its control] by making actionable the\ndeceptive and misleading use of marks in such commerce; [and] . . . to protect persons engaged in such\ncommerce against unfair competition . . . .\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127. Although, as the dissent points out,\nCongress rejected an anti-dilution provision when recently amending the Lanham Act, it made no\neffort to amend or delete this language clearly protecting the confusion of goods in commerce. The\ncourt in Rolex Watch explicitly recognized this concern with regulating commerce:\nThe real question before this Court is whether the alleged infringer has placed a product\nin commerce that is \xe2\x80\x9clikely to cause confusion, or to cause mistake, or to deceive.\xe2\x80\x9d . . . The\nfact that an immediate buyer of a $25 counterfeit watch does not entertain any notions\nthat it is the real thing has no place in this analysis. Once a product is injected into\ncommerce, there is no bar to confusion, mistake, or deception occurring at some future\npoint in time.\nRolex Watch, 645 F.Supp. at 492-93 (emphasis in original). The Rolex Watch court noted that this\ninterpretation was necessary to protect against the cheapening and dilution of the genuine product,\nand to protect the manufacturer\xe2\x80\x99s reputation. Id. at 495; see also Mastercrafters, 221 F.2d at 466. As the\ncourt explained:\nIndividuals examining the counterfeits, believing them to be genuine Rolex watches,\nmight find themselves unimpressed with the quality of the item and consequently be\ninhibited from purchasing the real time piece. Others who see the watches bearing the\nRolex trademarks on so many wrists might find themselves discouraged from acquiring a\ngenuine because the items have become too common place and no longer possess the\nprestige once associated with them.\nRolex Watch, 645 F.Supp. at 495; see also Mastercrafters, 221 F.2d at 466. Such is the damage which\ncould occur here. As the district court explained when deciding whether Roberts\xe2\x80\x99 former partner\xe2\x80\x99s\nFerrari replicas would be confused with Ferrari\xe2\x80\x99s cars:\nFerrari has gained a well-earned reputation for making uniquely designed automobiles of\nquality and rarity. The DAYTONA SPYDER design is well-known among the relevant\npublic and exclusively and positively associated with Ferrari. If the country is populated\nwith hundreds, if not thousands, of replicas of rare, distinct, and unique vintage cars,\nobviously they are no longer unique. Even if a person seeing one of these replicas driving\ndown the road is not confused, Ferrari\xe2\x80\x99s exclusive association with this design has been\ndiluted and eroded. If the replica Daytona looks cheap or in disrepair, Ferrari\xe2\x80\x99s\nreputation for rarity and quality could be damaged . . . .\nFerrari, 11 U.S.P.Q.2d at 1848. The dissent argues that the Lanham Act requires proof of confusion at\nthe point of sale because the eight factor test used to determine likelihood of confusion focuses on the\nconfusion of the purchaser, not the public. The dissent submits that three of the factors, marketing\n432\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nchannels used, likely degree of purchaser care and sophistication, and evidence of actual confusion,\nspecifically relate to purchasers. However, evidence of actual confusion is not limited to purchasers.\nThe survey evidence in this case showed that members of the public, but not necessarily purchasers,\nwere actually confused by the similarity of the products. Moreover, the other five factors, strength of\nthe mark, relatedness of the goods, similarity of the marks, defendant\xe2\x80\x99s intent in selecting the mark,\nand likelihood of product expansion, do not limit the likelihood of confusion test to purchasers.\n[25] Since Congress intended to protect the reputation of the manufacturer as well as to protect\npurchasers, the Act\xe2\x80\x99s protection is not limited to confusion at the point of sale. Because Ferrari\xe2\x80\x99s\nreputation in the field could be damaged by the marketing of Roberts\xe2\x80\x99 replicas, the district court did\nnot err in permitting recovery despite the absence of point of sale confusion.\n....\nKENNEDY, Circuit Judge, dissenting.\n[26] I respectfully dissent because the majority opinion does more than protect consumers\nagainst a likelihood of confusion as to the source of goods; it protects the source of the goods, Ferrari,\nagainst plaintiff\xe2\x80\x99s copying of its design even if the replication is accompanied by adequate labelling so\nas to prevent consumer confusion. I believe the majority commits two errors in reaching this result.\nThe majority first misconstrues the scope of protection afforded by the Lanham Act by misapplying the\n\xe2\x80\x9clikelihood of confusion\xe2\x80\x9d test and reading an anti-dilution provision into the language of section 43(a).\nThe majority then affirms an injunction that is overbroad . . . .\nI. Section 43(a) and Trade Dress Protection\n[27] The majority invokes the appropriate test to determine whether protection is available for\nan unregistered trademark pursuant to section 43(a) of the Lanham Act. Kwik-Site Corp. v. Clear View\nMfg. Co., 758 F.2d 167 (6th Cir. 1985) (secondary meaning; likelihood of confusion; and\nnonfunctionality of trade dress). While I agree that Ferrari\xe2\x80\x99s designs have acquired secondary meaning\nand are primarily nonfunctional, I disagree with the majority\xe2\x80\x99s construction and application of the\nlikelihood of confusion test and their conclusion that the Lanham Act protects against dilution of a\nmanufacturer\xe2\x80\x99s goods.\n[28] This Circuit applies an eight-factor test to determine whether relevant consumers in the\nmarketplace will confuse one item with another item. Frisch\xe2\x80\x99s Restaurants, Inc. v. Elby\xe2\x80\x99s Big Boy, Inc.,\n670 F.2d 642 (6th Cir.), cert. denied, 459 U.S. 916 (1982). The majority correctly points out one\npurpose this test is not designed to accomplish: \xe2\x80\x9cWhere the copying by one party of another\xe2\x80\x99s product\nis not done to deceive purchasers and thus derive a benefit from another\xe2\x80\x99s name and reputation, but\nrather to avail oneself of a design which is attractive and desirable, a case of unfair competition is not\nmade out.\xe2\x80\x9d West Point Mfg. v. Detroit Stamping Co., 222 F.2d 581, 586 (6th Cir.) (emphasis added), cert.\ndenied, 350 U.S. 840 (1955). This passage properly notes that the statute is triggered when a copier\nattempts to \xe2\x80\x9cpalm off\xe2\x80\x9d his replica as an original. In other words, the protection afforded by the Lanham\nAct is primarily to potential purchasers. The protection accruing to a producer is derivative of and only\nincidental to this primary protection: a producer can market his goods with the assurance that another\nmay not market a replica in a manner that will allow potential purchasers to associate the replica with\nthe producer of the original. Unfortunately, the majority merely pays lip service to this fundamental\ntenet in its application of the eight-factor test.\n[29] The majority never clearly defines the target group that is likely to be confused. Although\nWest Point counsels that purchasers must be deceived, the majority concludes that the target group is\nthe \xe2\x80\x9cpublic.\xe2\x80\x9d The majority errs to the extent that its analysis shifts from potential purchasers to the\nbroader more indefinite group of the \xe2\x80\x9cpublic.\xe2\x80\x9d\n[30] The eight-factor test contemplates that the target group is comprised of potential purchasers.\nFor example, the importance of one factor\xe2\x80\x94evidence of actual confusion\xe2\x80\x94is determined by the kinds\n433\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nof persons confused and degree of confusion. \xe2\x80\x9cShort-lived confusion or confusion of individuals\ncasually acquainted with a business is worthy of little weight . . . .\xe2\x80\x9d Homeowners Group, Inc. v. Home\nMarketing Specialists, Inc., 931 F.2d 1100, 1110 (6th Cir. 1991) (quoting Safeway Stores, Inc. v. Safeway\nDiscount Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir. 1982)). Two other factors obviously refer to\npotential purchasers: the marketing channels used and the likely degree of purchaser care and\nsophistication. Thus, three of the eight factors expressly focus on the likelihood of confusion as to\npotential purchasers.\n[31] Other courts have made clear that section 43(a) is concerned with the welfare of potential\npurchasers in the marketplace. See Kwik-Site, 758 F.2d at 178 (referring to \xe2\x80\x9cintending purchasers\xe2\x80\x9d\nwhen discussing likelihood of confusion); see also Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d\n162, 168 (2d Cir. 1991) (stating that plaintiff must prove that \xe2\x80\x9cpurchasers are likely to confuse the\nimitating goods with the originals\xe2\x80\x9d); West Point, 222 F.2d at 592 (referring to \xe2\x80\x9cpurchasers exercising\nordinary care to discover whose products they are buying . . . .\xe2\x80\x9d (quoting Reynolds & Reynolds Co. v.\nNorick, 114 F.2d 278 (10th Cir. 1940))).\n[32] Plaintiff\xe2\x80\x99s replicas are not likely to confuse potential purchasers. Plaintiff\xe2\x80\x99s vehicles display\nan \xe2\x80\x9cR\xe2\x80\x9d on the parking lenses and vent windows. No symbols or logos affiliated with Ferrari are\ndisplayed. Roberts informs all purchasers that his product is not affiliated with Ferrari. In light of these\ndistinctions, and the high degree of customer care and sophistication that normally accompanies such\na purchase\xe2\x80\x94defendant\xe2\x80\x99s vehicles at issue sell for a minimum of $230,000, as well as the distinctly\ndifferent marketing channels employed by the parties, I find the evidence insufficient to prove a\nlikelihood of confusion by potential purchasers in the marketplace.\n[33] To be sure, some courts have expanded the application of the likelihood of confusion test to\ninclude individuals other than point-of-sale purchasers. These courts have included potential\npurchasers who may contemplate a purchase in the future, reasoning that in the pre-sale context an\n\xe2\x80\x9cobserver would identify the [product] with the [original manufacturer], and the [original\nmanufacturer]\xe2\x80\x99s reputation would suffer damage if the [product] appeared to be of poor quality.\xe2\x80\x9d Polo\nFashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987); see Mastercrafters Clock & Radio Co. v.\nVacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464 (2d Cir.), cert. denied, 350 U.S. 832\n(1955); Rolex Watch, U.S.A., Inc. v. Canner, 645 F.Supp. 484 (S.D.Fla.1986).\n[34] In applying the test in this manner, these courts appear to recognize that the deception of a\nconsumer under these circumstances could dissuade such a consumer from choosing to buy a\nparticular product, thereby foreclosing the possibility of point-of-sale confusion but nevertheless\ninjuring the consumer based on this confusion. The injury stems from the consumer\xe2\x80\x99s erroneous\nconclusion that the \xe2\x80\x9coriginal\xe2\x80\x9d product is poor quality based on his perception of a replica that he thinks\nis the original. These cases protect a potential purchaser against confusion as to the source of a\nparticular product. Hence, even when expanding the scope of this test, these courts did not lose sight of\nthe focus of section 43(a): the potential purchaser. The majority applies the likelihood of confusion test\nin a manner which departs from this focus.\n[35] The cases which have expanded the scope of the target group are distinguishable from the\ninstant case, however. In Rolex, the counterfeit watches were labelled \xe2\x80\x9cROLEX\xe2\x80\x9d on their face. Similarly,\nthe Mastercrafters court found that the clock was labelled in a manner that was not likely to come to\nthe attention of an individual. It is also noteworthy that the Second Circuit has limited Mastercrafters\n\xe2\x80\x9cby pointing out that \xe2\x80\x98[i]n that case there was abundant evidence of actual confusion, palming off and\nan intent to deceive.\xe2\x80\x99\xe2\x80\x9d Bose Corp. v. Linear Design Labs, Inc., 467 F.2d 304, 310 n. 8 (2d Cir. 1972)\n(quoting Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569 (2d Cir. 1959), cert. denied, 362 U.S.\n919 (1960)). No evidence was introduced in the instant case to show actual confusion, palming off or\nan intent to deceive and, as previously noted, plaintiff does not use any name or logo affiliated with\nFerrari on its replicas.\n434\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[36] Further, these cases conclude that the proper remedy is to require identification of the\nsource of the replica, not prohibit copying of the product. See West Point, 222 F.2d at 589 (stating that\nunder such circumstances \xe2\x80\x9cthe only obligation of the copier is to identify its product lest the public be\nmistaken into believing that it was made by the prior patentee\xe2\x80\x9d); see also Coach Leatherware, 933 F.2d\nat 173 (Winter, J., dissenting in part) (stating that \xe2\x80\x9c[a copier] thus has every right to copy [a product]\nso long as consumers know they are buying [the copied product]\xe2\x80\x9d). Accordingly, even if I were to\nconclude that plaintiff\xe2\x80\x99s copies created confusion in the pre-sale context, I would tailor the remedy to\nprotect only against such confusion; this would best be accomplished through adequate labelling. The\nmajority\xe2\x80\x99s remedy goes well beyond protection of consumers against confusion as to a product\xe2\x80\x99s\nsource. It protects the design itself from being copied. See supra at 1239.\n[37] In sum, the relevant focus of the eight-factor test should be upon potential purchasers in the\nmarketplace. Plaintiff\xe2\x80\x99s replicas present no likelihood of confusion because plaintiff provides adequate\nlabelling so as to prevent potential purchasers, whether in the pre-sale or point-of-sale context, from\nconfusing its replicas with Ferrari\xe2\x80\x99s automobiles. The majority errs by expanding the target group to\ninclude the \xe2\x80\x9cpublic,\xe2\x80\x9d an expansion unsupported by the language and purpose of the Lanham Act. To the\nextent that the majority expands the target group, the test increasingly protects the design from\nreplication and the producer from dilution, rather than the potential purchaser from confusion.1\n[38] The majority does more than implicitly recognize a dilution cause of action by its\nmisapplication of the eight-factor test; it expressly reads such a cause of action into the statute. To\njustify this interpretation, the majority points out that Congress deleted the word \xe2\x80\x9cpurchasers\xe2\x80\x9d from\nthe statutory language in 1967 {recte 1962}. According to the majority, this congressional act\ndemonstrates that Congress intended \xe2\x80\x9cto protect against the cheapening and dilution of the genuine\nproduct, and to protect the manufacturer\xe2\x80\x99s reputation.\xe2\x80\x9d I fail to see how this one congressional act\nleads to such a conclusion.\n[39] As an initial matter, the majority\xe2\x80\x99s method of reasoning should compel it to reach a different\nconclusion. In 1989, Congress specifically considered and rejected adding an anti-dilution provision to\nthe Lanham Act.2 This action, it can be asserted, demonstrates that Congress does not now consider the\n1 I also note that the survey relied upon by the majority to prove a likelihood of confusion is\nfatally flawed. Generally, \xe2\x80\x9c[i]n assessing the likelihood of confusion, a court\xe2\x80\x99s concern is \xe2\x80\x98the\nperformance of the marks in the commercial context.\xe2\x80\x99\xe2\x80\x9c Homeowners Group, Inc. v. Home Marketing\nSpecialists, Inc., 931 F.2d 1100, 1106 (6th Cir. 1991) (quoting Frisch\xe2\x80\x99s Restaurants, Inc. v. Shoney\xe2\x80\x99s, Inc.,\n759 F.2d 1261, 1266 (6th Cir. 1985)). \xe2\x80\x9cIt is the overall impression of the mark, not an individual\nfeature, that counts.\xe2\x80\x9d Id. at 1109. Applied to the instant case, this means that the analysis must be\nbased on the products as they appear in the marketplace. The ultimate question is \xe2\x80\x9cwhether relevant\nconsumers are likely to believe that the products or services offered by the parties are affiliated in\nsome way.\xe2\x80\x9d Id. at 1107.\n\nThe survey lacks any probative value on the issue of consumer confusion because of the manner\nin which it was conducted. The survey was conducted by showing photographs of Ferrari\xe2\x80\x99s cars and\nRoberts\xe2\x80\x99 replicas stripped of their identifying badges. By conducting the survey in this manner, no\nassessment could be made of the likelihood of confusion in the \xe2\x80\x9ccommercial context.\xe2\x80\x9d Purchasers of\nplaintiff\xe2\x80\x99s cars are not purchasing from photographs. Accordingly, the survey is meaningless as to the\nlikelihood of confusion.\nThe most recent amendment to the Lanham Act, the Trademark Law Revision Act of 1988, Pub.L.\nNo. 100-667, 102 Stat. 3935 (1988) (effective Nov. 16, 1989), as originally introduced in both houses of\nCongress, permitted separate causes of action for dilution, disparagement and tarnishment. All of these\nprovisions were deleted from the legislation which eventually was enacted. House Rep. 100-1028 (Oct.\n2\n\n435\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nprotection of the Lanham Act to encompass injuries to a manufacturer based on dilution. The majority\ncannot look to one action of Congress to bolster its position, but ignore other actions which undercut\nits position.\n[40] More importantly, the language of the Lanham Act does not afford such protection to\nproducers of goods. As noted in the previous section, the Lanham Act\xe2\x80\x99s protection runs to relevant\nconsumers in the marketplace; its protection to producers is incidental to this primary protection.\nRequiring adequate labelling ensures that a producer will not have the poor quality of a replica\nimputed to its product by a confused potential purchaser. This is the only benefit accruing to a\nproducer. Trademark dilution is not a cause of action under the Lanham Act. See Eveready Battery Co. v.\nAdolph Coors Co., 765 F.Supp. 440 (N.D.Ill.1991).\n....\nQuestions and Comments\n1. Are the Ferrari exterior designs functional? The district court found that they were not and\nthe Sixth Circuit affirmed:\nThe district court found that Ferrari proved, by a preponderance of the evidence, that the\nexterior shapes and features of the Daytona Spyder and Testarossa were nonfunctional.\nThe court based this conclusion on the uncontroverted testimony of Angelo Bellei, who\ndeveloped Ferrari\xe2\x80\x99s grand touring cars from 1964-75, that the company chose the\nexterior designs for beauty and distinctiveness, not utility.\nFerrari S.P.A., 944 F.2d at 1246.\n8.\n\nReverse Confusion\n\nConsider a quick example of a claim of \xe2\x80\x9creverse confusion.\xe2\x80\x9d In Dreamwerks Production, Inc. v. SKG\nStudio, 142 F.3d 1127 (9th Cir. 1998), the plaintiff had been using the mark DREAMWERKS since 1984 in\nconnection with services for organizing science fiction conventions in the Northeast and Midwest of\nthe U.S. In 1994, Steven Spielberg, Jeffrey Katzenberg and David Geffen established the massive\nHollywood studio known as DreamWorks SKG. The plaintiff sued for \xe2\x80\x9creverse confusion.\xe2\x80\x9d It argued\nthat consumers would now believe that the plaintiff\xe2\x80\x99s services somehow originated in the defendant. In\nthe Dreamwerks case, the Ninth Circuit reversed the district court\xe2\x80\x99s summary judgment in favor of the\ndefendant and held that the matter should go to trial. The court observed: \xe2\x80\x9cDreamwerks notes that\nwhatever goodwill it has built now rests in the hands of DreamWorks; if the latter should take a major\nmisstep and tarnish its reputation with the public, Dreamwerks too would be pulled down.\xe2\x80\x9d Id. at\n1130. The case eventually settled.\nIn many typical \xe2\x80\x9cforward confusion\xe2\x80\x9d cases, such as in the Virgin Wireless case above, the senior\nuser of the mark is a much larger company than the junior user of the mark. Thus, the senior Goliath\nclaims that the junior David\xe2\x80\x99s use of the mark will likely confuse consumers into believing that the\njunior\xe2\x80\x99s goods are coming from the senior user, the company with which consumers are much more\nfamiliar.\nBy contrast, reverse confusion typically involves a situation in which the junior user of the mark is\nan enormous company with the resources extensively to advertise its use of the mark. The risk is that\nthe junior Goliath will overwhelm the meaning of the senior David\xe2\x80\x99s mark, so that consumers will\n3, 1988), reprinted in United States Trademark Ass\xe2\x80\x99n, The Trademark Law Revision Act of 1988, The\nLegislative History, Reports, Testimony, and Annotated Statutory Text 277, 278 (1989); Cong.Rec.\nH10411, H10421 (Oct. 19, 1988). {As Part II.C discusses, Congress eventually created Lanham Act\n\xc2\xa7 43(c) in 1995 to provide for federal antidilution protection and amended \xc2\xa7 43(c) in 2006.}\n\n436\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nbelieve that the senior users goods are coming from the junior user. This was exactly the claim the\nplaintiff made in the following opinion, Uber Promotions, Inc. v. Uber Technologies, Inc.\nNote, importantly, how certain of the factors in the multifactor test for the likelihood of consumer\nconfusion change in a reverse confusion analysis. (And incidentally, do you agree with the court\xe2\x80\x99s\ntreatment of the plaintiff\xe2\x80\x99s evidence of actual confusion?)\n\nUber Promotions, Inc. v. Uber Technologies, Inc.\n162 F.Supp.3d 1253 (N.D. Fla. 2016)\nMark E. Walker, United States District Judge:\nI. INTRODUCTION\n[1] You live in Gainesville and need to book a party bus, or perhaps a non-party bus or a limo to\ntake a number of people to an event. You run a Google search for \xe2\x80\x9cGainesville party bus\xe2\x80\x9d and, not\nsatisfied with any of the offerings on page one of the results, turn to page two. There is a listing there\nfor \xe2\x80\x9cUber Promotions.\xe2\x80\x9d Thinking that perhaps this is somehow affiliated with Uber, a nationally known\ntaxi-like service that has recently come to town, you click on the link. You are taken to a webpage with\na bright green and purple \xe2\x80\x9c\xc3\xbcber PROMOTIONS\xe2\x80\x9d logo. The crux of this trademark infringement case is\n(roughly speaking) whether you could reasonably conclude that Uber Promotions and Uber the taxilike service are in some way connected.\n[2] Plaintiff Uber Promotions, Inc. (\xe2\x80\x9cPromotions\xe2\x80\x9d) is a Gainesville, Florida company that provides\na variety of services, including \xe2\x80\x9cpromotional and event planning services, . . . graphic, web design and\nprint media photography services, . . . modelling and talent agency services, [and] . . . private venue\nrental services.\xe2\x80\x9d It also provides \xe2\x80\x9cpassenger transportation services, including through limousine and\ncharter services.\xe2\x80\x9d Promotions claims that it has been using \xe2\x80\x9cUBER,\xe2\x80\x9d \xe2\x80\x9c\xc3\x9cBER,\xe2\x80\x9d \xe2\x80\x9cUBER PROMOTIONS,\xe2\x80\x9d and\n\xe2\x80\x9c\xc3\x9cBER PROMOTIONS\xe2\x80\x9d since at least 2006. Promotions is run by its President, Joey Friedman, and its\nVice-President, Michael Farzad.\n[3] Defendant Uber Technologies, Inc. (\xe2\x80\x9cTech\xe2\x80\x9d) is a San Francisco-based corporation (though it\xe2\x80\x99s\nincorporated in Delaware) that puts out a well-known software app allowing people to \xe2\x80\x9cget a ride on\ndemand from a nearby driver registered with the UBER [Technologies] service.\xe2\x80\x9d Tech refers to these\ndrivers\xe2\x80\x94who use their own cars to transport passengers\xe2\x80\x94as \xe2\x80\x9cdriver partners.\xe2\x80\x9d Tech launched its\nservice in 2010 as UBERCAB and received a federal registration for that trademark on August 31 of\nthat year. Later in 2010, Tech began using the mark \xe2\x80\x9cUBER\xe2\x80\x9d and registered that trademark on June 14,\n2011. Id. at 10.\n[4] At first, Tech operated in just a few select cities, but it has expanded rapidly over the past few\nyears. Tech first operated in Florida during the 2012 Republican National Convention in Tampa. Tech\xe2\x80\x99s\nfirst permanent entry into the Florida market came in November 2013 when it launched UberBLACK\n{featuring higher-end vehicles from driver partners who are professional drivers} in Jacksonville. Tech\nexpanded further into Florida throughout 2014; in August of that year, Tech started operating in\nGainesville.\n437\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[5] Apparently alarmed by Tech\xe2\x80\x99s expansion into Florida\xe2\x80\x94and in particular by the use of \xe2\x80\x9cUber\nPromotions\xe2\x80\x9d on one of Tech\xe2\x80\x99s Twitter accounts\xe2\x80\x94Promotions sent Tech a letter in April 2014\ndemanding that Tech \xe2\x80\x9cdiscontinue the use of the terms \xe2\x80\x98Uber Promotions\xe2\x80\x99 in connection with [Tech\xe2\x80\x99s]\nmarketing and advertising campaigns . . . and undertake in writing that [Tech] will not at any time in\nthe future use any of Uber Promotions name [sic] in any future marking [sic] or advertising campaigns,\nTwitter Accounts, or apply for registration of any trademarks/service mark that may be confusingly\nsimilar to Uber Promotions.\xe2\x80\x9d Tech responded by (1) removing the term \xe2\x80\x9cUber\xe2\x80\x9d from the title of a page\non its website that had previously been titled \xe2\x80\x9cUber Promotions\xe2\x80\x9d and (2) responding (through counsel)\nto Promotions\xe2\x80\x99 letter as follows:\n\nTech apparently did not hear from Promotions again until this suit was filed.\n[6] Shortly after this suit was filed, Tech unveiled a new service called UberEVENTS. This service\nallows customers to purchase rides for others that can be used at a particular time in the future. So, if a\ncustomer is hosting a large birthday party at a local park, that customer can purchase rides in advance\nwith Tech driver partners for guests to use to go from their homes to the park and back again.\nTechnically, the customer purchases a single code or a set of codes which are then sent to guests; the\nguests then use Tech\xe2\x80\x99s app as they normally would to request rides and use the code to pay for those\nrides. This service \xe2\x80\x9chas been a popular option for corporate events.\xe2\x80\x9d A customer wishing to purchase\nrides for their guests can do so through Tech\xe2\x80\x99s website.\n[7] In this suit, Promotions brings various claims against Tech under the Lanham Act and Florida\nstate law alleging trademark infringement and unfair competition. Promotions seeks preliminary\ninjunctive relief to keep Tech from continuing to use its \xe2\x80\x9cUBER\xe2\x80\x9d marks in connection with its services\nthroughout Florida.\nIII. Likelihood of Success on the Merits\n{Following doctrine discussed above in Part I.E, the court found that Promotions enjoyed priority\nin the UBER mark in the Gainsville area by virtue of its common law use in that area prior to Tech\xe2\x80\x99s\nfederal registration.}\nC. Likelihood of Confusion in the Gainesville Area\n1. Type of Confusion?\n[8] Promotions argues that both forward and reverse confusion are occurring and are likely to\noccur, but admits that reverse confusion seems like a much larger threat. That is an understatement.\nThis is, in many ways, a classic reverse confusion case, and there is scant evidence that would support\n\n438\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\na finding that Promotions is substantially likely to prevail on anything other than a reverse confusion\ntheory.6\n[9] \xe2\x80\x9c[R]everse confusion occurs when \xe2\x80\x98the junior user saturates the market with a similar\ntrademark and overwhelms the senior user.\xe2\x80\x99\xe2\x80\x9d A&H Sportswear, Inc. v. Victoria\xe2\x80\x99s Secret Stores, Inc., 237\nF.3d 198, 228 (3d Cir. 2000) (quoting Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 475 (3d\nCir. 1994)). \xe2\x80\x9cThe harm flowing from reverse confusion is that \xe2\x80\x98[t]he public comes to assume the senior\nuser\xe2\x80\x99s products are really the junior user\xe2\x80\x99s or that the former has become somehow connected to the\nlatter . . . . [T]he senior user loses the value of the trademark\xe2\x80\x94its product identity, corporate identity,\ncontrol over its goodwill and reputation, and ability to move into new markets.\xe2\x80\x99\xe2\x80\x9d Id. (quoting\nAmeritech, Inc. v. Am. Info. Tech. Corp., 811 F.2d 960, 964 (6th Cir. 1987)). \xe2\x80\x9cAs in a direct confusion\nclaim, the ultimate question in a reverse confusion claim is whether there is a likelihood of consumer\nconfusion as to the source or sponsorship of a product.\xe2\x80\x9d Id. at 229.\n2. Factors to Consider\n[10] Before jumping in, it is important to note four things . . . .\n[11] Second, it is vital to always keep in mind the \xe2\x80\x9cactual market conditions and the type of\nconfusion alleged\xe2\x80\x9d when conducting the analysis. Malletier v. Burlington Coat Factory Warehouse Corp.,\n426 F.3d 532, 534 (2d Cir. 2005) (Calabresi, J.). . . . Here, reverse confusion is at issue, which means the\n\xe2\x80\x9cmarket conditions\xe2\x80\x9d we should be concerned with are the conditions under which a consumer\nencounters the senior user\xe2\x80\x99s (Promotions\xe2\x80\x99) mark.\n[12] Third, it is also vital to keep in mind \xe2\x80\x9cthe persons who are (or are not) likely to be confused.\xe2\x80\x9d\nSee John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 979 n.22 (11th Cir. 1983). This is a reverse\nconfusion case, which means that the largest class of people who might be confused are people familiar\nwith Tech\xe2\x80\x99s marks who then encounter Promotions\xe2\x80\x99 marks. See Banff, Ltd. v. Federated Dep\xe2\x80\x99t Stores, Inc.,\n841 F.2d 486, 490 (2d Cir. 1988) (tying reverse confusion to \xe2\x80\x9cconsumers initially aware of [the junior\nuser\xe2\x80\x99s mark who] may believe that [the senior user\xe2\x80\x99s] mark they later encounter originates with [the\njunior user]\xe2\x80\x9d). Certainly confusion could occur with consumers initially aware of Promotions\xe2\x80\x99 mark\nwho then encounter Tech\xe2\x80\x99s mark\xe2\x80\x94this has apparently actually happened, in fact\xe2\x80\x94but this is less likely\ngiven the relative commercial strength of the companies and their marks. Promotions primarily serves\nand advertises to college students and others in the same age range\xe2\x80\x94young people, roughly speaking.\nThus, when assessing likelihood of confusion, the key demographic to keep in mind is young people,\nparticularly college students, in the Gainesville area.8\n[13] Fourth, when an alleged infringer\xe2\x80\x99s marks are used in connection with multiple goods or\nservices, it may be that the use of those marks in connection with some goods or services\xe2\x80\x94but not\nothers\xe2\x80\x94creates a likelihood of consumer confusion. See, e.g., H. Lubovsky, Inc. v. Esprit de Corp., 627\nF.Supp. 483, 492\xe2\x80\x9393 (S.D.N.Y.1986) (finding no likelihood of confusion as to the defendant\xe2\x80\x99s use of its\nmarks on sportswear, but a likelihood of confusion as to the use of its marks on shoes). In this case,\nTech uses its \xe2\x80\x9cUBER\xe2\x80\x9d mark in connection with a number of services: UberX, UberXL, UberBLACK,\nUberEVENTS, and so on. As explained more fully below in Part III.C.11, the UberEVENTS service is\ndifferent from Tech\xe2\x80\x99s other services in that it is more closely related to Promotions\xe2\x80\x99 transportation\n\n\xe2\x80\x9c[A]llegations of forward confusion and reverse confusion do not form distinct claims\xe2\x80\x94they are\nalternative theories that can be used separately or together in a trademark infringement claim under\nthe Lanham Act.\xe2\x80\x9d Troubl\xc3\xa9 v. Wet Seal, Inc., 179 F.Supp.2d 291, 297 (S.D.N.Y.2001).\n6\n\nThis is not to say that other demographics don\xe2\x80\x99t matter at all. Of course some older people may\ncome across Promotions\xe2\x80\x99 marks, and even if they aren\xe2\x80\x99t likely to use Promotions\xe2\x80\x99 services, their\nconfusion may ultimately do harm to Promotions.\n8\n\n439\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nservices. For that reason, it will be treated separately. In what follows, the seven factors are analyzed\nwithout taking into account Tech\xe2\x80\x99s UberEVENTS service.\n3. Strength of the Mark\n[14] The first factor to be considered is the strength of Promotions\xe2\x80\x99 marks. Dana v. Dantanna\xe2\x80\x99s,\n611 F.3d 767, 774-75 (11th Cir. 2010). However, because this is a reverse-confusion case, it is the\nconceptual and not the commercial strength of Promotions\xe2\x80\x99 marks that matters. See A&H Sportswear,\n237 F.3d at 231\xe2\x80\x9332.* The parties disagree on this point, with Promotions claiming that \xe2\x80\x9cUBER\xe2\x80\x9d and\n\xe2\x80\x9c\xc3\x9cBER\xe2\x80\x9d are arbitrary or fanciful in nature, and thus \xe2\x80\x9cstrong\xe2\x80\x9d marks, and Tech claiming that they are\ndescriptive (at least when combined with \xe2\x80\x9cPROMOTIONS\xe2\x80\x9d) and thus weaker. Furthermore, Tech points\nout that many companies have registered marks with \xe2\x80\x9cUBER\xe2\x80\x9d in them, thus reducing the conceptual\nstrength of Promotions\xe2\x80\x99 marks.\n[15] It seems clear that Promotions\xe2\x80\x99 use of \xe2\x80\x9cUBER\xe2\x80\x9d by itself is at least suggestive, if not arbitrary.\nAlthough Promotions\xe2\x80\x99 founders may have chosen the name of their company because it means \xe2\x80\x9cthe\nbest,\xe2\x80\x9d their motivation or intent behind picking the name is irrelevant; what matters is what\nimpression the mark leaves on consumers . . . . Clearly \xe2\x80\x9cUBER\xe2\x80\x9d by itself is not descriptive . . . .\n[16] \xe2\x80\x9cUBER PROMOTIONS\xe2\x80\x9d or \xe2\x80\x9c\xc3\x9cBER PROMOTIONS\xe2\x80\x9d is a closer call, not least because of the \xe2\x80\x9cselflaudatory mark\xe2\x80\x9d principle. This principle is simply the idea that, generally speaking, a term such as\n\xe2\x80\x9cbest\xe2\x80\x9d or \xe2\x80\x9csuper\xe2\x80\x9d that \xe2\x80\x9cextol[s] some feature or attribute of . . . goods or services\xe2\x80\x9d is descriptive in\nnature and likely to be too weak to be trademarked. 2 MCCARTHY ON TRADEMARKS AND UNFAIR\nCOMPETITION \xc2\xa7 11:17, Westlaw (4th ed., database updated Dec. 2015) [hereinafter MCCARTHY]. The\nGerman term \xe2\x80\x9c\xc3\xbcber\xe2\x80\x9d means \xe2\x80\x9cabove\xe2\x80\x9d or \xe2\x80\x9cover\xe2\x80\x9d or \xe2\x80\x9cbeyond,\xe2\x80\x9d and can also be combined with other\nGerman terms to form compound nouns such as \xe2\x80\x9c\xc3\x9cbermensch\xe2\x80\x9d (\xe2\x80\x9cSuperman\xe2\x80\x9d) and adverbs such as\n\xe2\x80\x9c\xc3\xbcberaus\xe2\x80\x9d (\xe2\x80\x9cextremely\xe2\x80\x9d or \xe2\x80\x9cexceedingly\xe2\x80\x9d). The English term \xe2\x80\x9c\xc3\xbcber\xe2\x80\x9d or \xe2\x80\x9cuber\xe2\x80\x9d\xe2\x80\x94which of course is just\nan Anglicized version of \xe2\x80\x9c\xc3\xbcber\xe2\x80\x9d\xe2\x80\x94means \xe2\x80\x9cbeing a superlative example of its kind or class.\xe2\x80\x9d Tech argues\nthat \xe2\x80\x9c\xc3\x9cBER PROMOTIONS\xe2\x80\x9d is \xe2\x80\x9cconceptually weak\xe2\x80\x9d because, like \xe2\x80\x9cSuper Promotions\xe2\x80\x9d or \xe2\x80\x9cBest\nPromotions,\xe2\x80\x9d it is self-laudatory and descriptive.\n[17] This argument is not very convincing. A term such as \xe2\x80\x9cuber\xe2\x80\x9d \xe2\x80\x9cmay slide along the continuum\nbetween suggestiveness and descriptiveness depending on usage, context, and other factors that affect\nthe relevant public\xe2\x80\x99s perception of the term.\xe2\x80\x9d In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir.\n2001) (discussing the term \xe2\x80\x9cultimate\xe2\x80\x9d). \xe2\x80\x9cUber,\xe2\x80\x9d while not an extremely uncommon term, is less\nfrequently encountered\xe2\x80\x94and thus less likely to be perceived by the relevant public as merely selflaudatory\xe2\x80\x94than a term like \xe2\x80\x9csuper\xe2\x80\x9d or even \xe2\x80\x9cultimate.\xe2\x80\x9d Simply put, Promotions would likely be able to\nconvince a factfinder that \xe2\x80\x9c\xc3\x9cBER PROMOTIONS\xe2\x80\x9d is more suggestive than descriptive, and deserving of\ntrademark protection even without any secondary meaning. That said, \xe2\x80\x9cUBER\xe2\x80\x9d and especially \xe2\x80\x9cUBER\nPROMOTIONS\xe2\x80\x9d are not especially strong marks conceptually, and so this factor tips in favor of Tech\xe2\x80\x94\nthat is, slightly against a finding of likelihood of confusion.\n4. Similarity of the Marks\n[18] The second factor is the similarity of Promotions\xe2\x80\x99 and Tech\xe2\x80\x99s marks. In assessing similarity, it\nis important to view the marks as an ordinary consumer would, and not in an artificial context. See\nSun\xe2\x80\x93Maid Raisin Growers of Cal. v. Sunaid Food Prods., Inc., 356 F.2d 467, 469 (5th Cir. 1966); see also\nA&H Sportswear, 237 F.3d at 216 (noting that when comparing marks, \xe2\x80\x9can effort must be made to move\ninto the mind of the roving consumer\xe2\x80\x9d). This means, among other things, remembering that memory is\nimperfect, and that a consumer encountering one mark after exposure to another mark may be\nconfused even when the marks differ greatly in some important respects . . . .\n{See Note 1 following the opinion excerpt for further discussion of the roles that conceptual and\ncommercial strength play in the reverse confusion context.}\n*\n\n440\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[19] Promotions can only hope to prevail on a reverse-confusion theory, so our typical consumer\nis someone who is familiar with Tech and who then encounters Promotions. But there are many\nclasses of consumers \xe2\x80\x9cfamiliar with\xe2\x80\x9d Tech\xe2\x80\x94there are those who have used Tech\xe2\x80\x99s services by accessing\nthem through Tech\xe2\x80\x99s app; those who have perhaps been along for an Uber ride with someone else { }\nbut who have not themselves downloaded or used Tech\xe2\x80\x99s app; and those who have heard of Tech and\nhave a general idea of what services it provides, but who have never used Tech\xe2\x80\x99s app or been along for\na ride with a Tech driver partner. And there are many ways in which a consumer might \xe2\x80\x9cencounter\xe2\x80\x9d\nPromotions\xe2\x80\x94through its website; by seeing a flyer; through its Facebook page; or by finding it through\na Google search. In assessing the similarity of the marks, each type of familiarity and each type of\nencounter must be kept in mind.\n[20] Tech is probably correct that for Tech users/customers, the visual differences between\nTech\xe2\x80\x99s app and Promotions\xe2\x80\x99 logo, together with the fact that Promotions usually includes \xe2\x80\x9cPromotions\xe2\x80\x9d\nin its name, suggest that confusion is relatively unlikely. But the visual differences are much less\nsignificant for those consumers less familiar with Tech. The examples of Tech\xe2\x80\x99s advertising and\npromotional materials provided in the record suggest that the most important feature of Tech\xe2\x80\x99s mark\nis the word \xe2\x80\x9cUber\xe2\x80\x9d and not any particular design element.12 Moreover, many consumers may have just\nheard of Tech or read a news story referencing it, in which case the visual differences are quite\nunimportant. Similarly, the use of \xe2\x80\x9cPromotions\xe2\x80\x9d by Promotions is not very important in assessing\nsimilarity in the eyes of consumers relatively less familiar with Tech. Those consumers will simply\nremember \xe2\x80\x9cUber\xe2\x80\x9d and will recognize that relatively uncommon word in Promotions\xe2\x80\x99 advertisements.\nCf. A&H Sportswear, 237 F.3d at 216 (\xe2\x80\x9cthe general rule that marks should be viewed in their entirety\ndoes not undermine the common-sense precept that the more forceful and distinctive aspects of a\nmark should be given more weight [in assessing mark similarity], and the other aspects less weight\xe2\x80\x9d).\nIn addition, Tech often uses \xe2\x80\x9cUber Promotions\xe2\x80\x9d in connection with various promotional campaigns,\nwhich could easily create confusion.\n[21] In sum, Tech\xe2\x80\x99s and Promotions\xe2\x80\x99 marks are fairly similar, at least to a certain portion of the\npublic. Tech may be quite correct that \xe2\x80\x9canyone who uses [Tech\xe2\x80\x99s] services and comes across\n[Promotions\xe2\x80\x99] advertising will know the difference,\xe2\x80\x9d but there are many who have come across Tech\nbut have not used its services. For that group, the marks may be quite similar. . . . This factor tilts\nslightly in favor of Promotions.\n5. Similarity of Services\n[22] The third factor is the \xe2\x80\x9csimilarity between the goods and services offered under the two\nmarks.\xe2\x80\x9d Dantanna\xe2\x80\x99s, 611 F.3d at 775. Because the ultimate \xe2\x80\x9clikelihood of confusion\xe2\x80\x9d question is\nwhether consumers may come to believe that Promotions\xe2\x80\x99 services are in some way affiliated with\nTech\xe2\x80\x99s services, it is not necessary that the services offered by the two companies be precisely the\nsame, or even that they be competitive with one another; rather, confusion may result where the\nservices are so related that a single entity is likely to be behind both.\n12 In the time between the hearing and this Order, Tech \xe2\x80\x9crebranded\xe2\x80\x9d with a new logo and graphic\nscheme. See, e.g., Brian Mastroianni, Uber re-brands itself with a new logo, CBS News (Feb. 2, 2016),\nwww.cbsnews.com/news/uber-rebrands-itself-with-new-app-logo/. The new \xe2\x80\x9clook,\xe2\x80\x9d while still\nconservative compared to Promotions\xe2\x80\x99 graphic presentation, is slightly more colorful. This new look in\nand of itself doesn\xe2\x80\x99t affect the \xe2\x80\x9csimilarity of marks\xe2\x80\x9d analysis in any significant way given that the people\nmost likely to be confused have probably only heard of Tech. The fact of the change\xe2\x80\x94and the fact that\nit was so well-publicized\xe2\x80\x94might tend to increase reverse confusion by creating doubt among those\nfamiliar with Tech about what its \xe2\x80\x9clook\xe2\x80\x9d really is, but such an effect would not change this Court\xe2\x80\x99s\nconclusion that the \xe2\x80\x9csimilarity of marks\xe2\x80\x9d factor weighs slightly in favor of Promotions.\n\n441\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[23] Despite the fact that both Tech\xe2\x80\x99s and Promotions\xe2\x80\x99 services involve passenger transportation,\nthere is no doubt that the services differ in many important respects. Tech\xe2\x80\x99s services all involve driver\npartners using their own vehicles to transport customers. Promotions, in contrast, arranges for or\nprovides transportation via more traditional passenger transportation vehicles such as charter buses,\nparty buses, and limos. Tech\xe2\x80\x99s focus is on the transportation of individuals or small groups, whereas\nPromotions focuses more on group transportation.\n[24] These differences are not so great that they weigh heavily against confusion, particularly in\nlight of Tech\xe2\x80\x99s expanding roster of transportation options. Around August 2015, for instance, Tech\nintroduced UberXL to the Gainesville market. This option allows customers to request larger cars such\nas SUVs or minivans. UberPOOL, a service that allows customers traveling in similar directions to share\na car and save money, is not yet available in Gainesville, but it very well could be soon. This growing\nfamily of Tech services and options makes it more likely that a consumer might mistake Promotions\xe2\x80\x99\nservices as being in some way affiliated with Tech.\n[25] Those more familiar with Tech will likely be saved from confusion by the fact that\nPromotions\xe2\x80\x99 services lack the most salient (or perhaps infamous) feature of Tech\xe2\x80\x99s services: the use of\ndriver partners, many of whom are moonlighting as drivers, using their own vehicles as taxis. On the\nother hand, those who only know that Tech has something to do with transportation or that it provides\nsomething like a taxi service could very well think that Promotions and Tech are affiliated based on\nPromotions\xe2\x80\x99 services. Ultimately, this factor doesn\xe2\x80\x99t weigh heavily in favor of either party, though it\ntilts slightly in favor of Tech.\n6. Similarity of Sales Methods\n[26] The fourth factor is the \xe2\x80\x9csimilarity of the actual sales methods used by the holders of the\nmarks, such as their sales outlets and customer base.\xe2\x80\x9d Dantanna\xe2\x80\x99s, 611 F.3d at 775. \xe2\x80\x9cThis factor takes\ninto consideration where, how, and to whom the parties\xe2\x80\x99 products [or services] are sold.\xe2\x80\x9d Frehling\nEnters., Inc. v. Int\xe2\x80\x99l Select Grp., Inc., 192 F.3d 1330, 1339 (11th Cir. 1999).\n[27] This factor weighs heavily in favor of Tech. Tech\xe2\x80\x99s services are accessed through an app on a\nsmartphone or other mobile device, whereas one must call, e-mail, text, or send a Facebook message to\nPromotions in order to set up a ride. Anyone who has used Tech\xe2\x80\x99s services has necessarily downloaded\nand used its app, and it seems relatively unlikely that such users would think that Promotions was\naffiliated with Tech. And even people who have only heard of Tech may very well know that its\nservices have something to do with an app, and may therefore be less likely to be confused when\nconfronted with Promotions\xe2\x80\x99 services, which are accessed via quite different mechanisms.\n7. Similarity of Advertising Methods\n[28] The fifth factor is the \xe2\x80\x9csimilarity of advertising methods\xe2\x80\x9d used by Tech and Promotions.\nDantanna\xe2\x80\x99s, 611 F.3d at 775. Both Tech and Promotions make extensive use of social media to\nadvertise. In fact, there is evidence that some of Tech\xe2\x80\x99s \xe2\x80\x9caffiliates\xe2\x80\x9d\xe2\x80\x94people who advertise Tech\xe2\x80\x99s\nservices via social media in exchange for a commission\xe2\x80\x94have placed advertisements for Tech\xe2\x80\x99s\nservices on Promotions\xe2\x80\x99 Facebook page. While Tech is correct that the look of Promotions\xe2\x80\x99\nadvertisements is quite different from the look of Tech\xe2\x80\x99s advertisements, the fact remains that both\ncompanies\xe2\x80\x99 extensive use of social media\xe2\x80\x94and especially Tech\xe2\x80\x99s affiliates\xe2\x80\x99 use of Promotions\xe2\x80\x99 own\nFacebook page to post advertisements\xe2\x80\x94raises the likelihood that consumers will come into contact\nwith both marks, which in turn raises the likelihood of confusion.\n\n442\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[29] Furthermore, Tech has apparently used Google AdWords to ensure that certain searches\nconducted using Google will lead to an ad for Tech being displayed above the search results.13 Tech is\nof course allowed to advertise, but advertising in this way will increase the likelihood of consumer\nconfusion. Overall, this factor weighs slightly in favor of Promotions.\n8. Intent to Infringe\n[30] The sixth factor is the \xe2\x80\x9cintent of the alleged infringer to misappropriate the proprietor\xe2\x80\x99s good\nwill.\xe2\x80\x9d Dantanna\xe2\x80\x99s, 611 F.3d at 775. This factor needs to be tweaked in a reverse-confusion case, since\nthe concern is not that an alleged infringer will try to use a plaintiff\xe2\x80\x99s good name to gain business, but\nrather that it will \xe2\x80\x9cpush[ ] its [smaller] rival out of the market,\xe2\x80\x9d thus \xe2\x80\x9cusurp[ing] [the rival\xe2\x80\x99s] business\nidentity.\xe2\x80\x9d A&H Sportswear, 237 F.3d at 232. Furthermore, only intent to \xe2\x80\x9cusurp identity\xe2\x80\x9d through\nconfusion is relevant; there is nothing unlawful about intending to compete. Id.\n[31] It is difficult to believe that Tech acted with the intent to push Promotions out of the\nGainesville market by using a confusingly similar mark. Elephants don\xe2\x80\x99t look out for gerbils when they\nplow through the bush. Tech adopted its mark before it ever knew of Promotions and expanded\nnationally thereafter. Surely it knew that it would collide with Promotions once it entered Gainesville,\nbut that doesn\xe2\x80\x99t mean it intended to confuse consumers and thereby hurt Promotions. This factor is not\nparticularly relevant to the analysis in this case.\n9. Actual Confusion\n[32] The final factor is \xe2\x80\x9cthe existence and extent of actual confusion in the consuming public.\xe2\x80\x9d\nDantanna\xe2\x80\x99s, 611 F.3d at 775. Evidence of actual confusion \xe2\x80\x9cis the most persuasive evidence in assessing\nlikelihood of confusion.\xe2\x80\x9d Id. at 779. Clearly understanding this, the parties vigorously dispute how to\ninterpret the numerous phone calls received by Promotions from customers looking for Tech.\nPromotions claims that these phone calls constitute \xe2\x80\x9cextraordinary\xe2\x80\x9d evidence of actual confusion,\nwhile Tech argues that these calls are the result of \xe2\x80\x9cinattention and indifference,\xe2\x80\x9d not confusion.\n[33] Each party overstates its case. Undoubtedly some of the people who called Promotions\nlooking for Tech were indeed \xe2\x80\x9cconfused\xe2\x80\x9d within the meaning of the Lanham Act\xe2\x80\x94that is, they\nunderstood they were calling Promotions and thought Promotions was affiliated with Tech. But Tech\ndoesn\xe2\x80\x99t have an easy-to-find phone number,14 so it is likely that many of the callers thought they were\ncalling Tech. This is supported by the large number of callers inquiring about becoming driver\npartners\xe2\x80\x94a key feature of Tech\xe2\x80\x99s business model completely missing from Promotions\xe2\x80\x99 business\nmodel. This theory is further bolstered by the fact that if one searches \xe2\x80\x9cUber Gainesville phone\nnumber\xe2\x80\x9d or \xe2\x80\x9cUber Gainesville phone\xe2\x80\x9d using Google, it is Promotions\xe2\x80\x99 phone number that comes up.\nGiven what\xe2\x80\x99s in the record, it\xe2\x80\x99s likely that a large fraction of the callers didn\xe2\x80\x99t even grasp that they were\ncalling something called Uber Promotions, but instead thought they were calling Uber Technologies.\nThis is akin to being given a wrong number by a telephone operator.15\n13 This Court confirmed Promotions\xe2\x80\x99 allegations to that effect by conducting a Google search using\nthe search terms \xe2\x80\x9cgainesville uber.\xe2\x80\x9d The results page features an ad for Tech above the search results.\n14\n\nTech does have an emergency phone number that can be found using its app.\n\nDuring Michael Farzad\xe2\x80\x99s deposition, he received two phone calls from \xe2\x80\x9cconfused\xe2\x80\x9d customers.\nAfter he mentioned this to Tech\xe2\x80\x99s counsel, the following exchange took place:\n15\n\nQ. With respect to the calls that you received today, were either of those individuals\nconfused at the point in which they were using your services?\nA. No. They\xe2\x80\x99re calling me because they think I\xe2\x80\x99m Uber Technologies and they want to\nreserve services and ask questions.\nQ. So those individuals were looking for Uber Technologies?\n\n443\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[34] If this is confusion at all, it is not the type of confusion that\xe2\x80\x99s important in a trademarkinfringement case.16 \xe2\x80\x9cNot all conceivable forms of confusion are relevant to trademark infringement.\nConfusion is relevant when it exists in the minds of persons in a position to influence the purchasing\ndecision or persons whose confusion presents a significant risk to the sales, goodwill, or reputation of\nthe trademark owner.\xe2\x80\x9d Hotel Meli\xc3\xa1, 728 F.3d at 64\xe2\x80\x9365 (quotations and citations omitted). A person\nwho does not even grasp that he is talking to Promotions on the phone, or that Promotions even exists\nseparate and apart from Tech, is obviously not going to form a bad opinion of Promotions based on his\n\xe2\x80\x9cconfusion,\xe2\x80\x9d nor is Promotions going to lose any business. And that\xe2\x80\x99s assuming that the caller can even\nbe termed \xe2\x80\x9cconfused\xe2\x80\x9d\xe2\x80\x94as Tech points out, courts in similar factual situations have suggested that such\nmisdirected communications can be attributed to inattentiveness or carelessness. See Therma\xe2\x80\x93Scan,\nInc. v. Thermoscan, Inc., 295 F.3d 623, 636 (6th Cir. 2002).\n[35] The e-mails received by Promotions from customers looking for Tech are slightly more\nhelpful to Promotions\xe2\x80\x99 case, but some of them again suggest carelessness as much as, if not more than,\nconfusion. The e-mail from a customer in Vietnam is clearly intended for Tech\xe2\x80\x94the e-mailer followed\nup with an \xe2\x80\x9coops\xe2\x80\x9d e-mail almost immediately. The Los Angeles customer appears to be someone so\neasily confused that even trademark law cannot protect her.\n[36] The two instances of confusion on the part of former customers of Promotions are more\nhelpful to Promotions\xe2\x80\x99 case. These customers clearly understood what Promotions is, understood what\nTech is, and thought they were affiliated. Similarly, the evidence in the record of a few Tech\ncustomers\xe2\x80\x94and even some driver partners and others affiliated with Tech\xe2\x80\x94thinking that Tech and\nPromotions were somehow related is evidence of actual confusion within the meaning of the Lanham\nAct.17\n[37] In sum, there is definitely evidence of actual confusion in the record, though not as much as\nPromotions claims or as little as Tech claims. The evidence of customers calling and e-mailing\nPromotions looking for Tech is in many ways the least important subset of this evidence. The types of\nrequests being made by the callers, the fact that Tech doesn\xe2\x80\x99t have an easy-to-find phone number, the\nfact that someone conducting a Google search for a local Gainesville number for Tech would get\nPromotions\xe2\x80\x99 number, the relative commercial strength of the two companies\xe2\x80\x94all of these facts\nA. Right, and they left messages on my phone and they\xe2\x80\x94they\xe2\x80\x99re thinking that\nthey\xe2\x80\x99re speaking to Uber Technologies.\nThis doesn\xe2\x80\x99t prove anything, of course, but it tends to support the conclusion that many of the callers to\nPromotions don\xe2\x80\x99t even realize they\xe2\x80\x99re talking to Promotions.\n16 At least not in this case. If Tech were the senior user and Promotions the junior user, the fact\nthat consumers were being diverted to Promotions\xe2\x80\x94even if they initially thought they were dealing\nwith Tech and were in fact trying to reach Tech\xe2\x80\x94would be highly relevant on an \xe2\x80\x9cinitial interest\nconfusion\xe2\x80\x9d theory in a suit brought by Tech. See Axiom Worldwide, 522 F.3d at 1221\xe2\x80\x9322. But such\nconfusion is not very important to this case, because such callers are not confused as to source, just\nmisdirected. There is not, to this Court\xe2\x80\x99s knowledge, a \xe2\x80\x9creverse initial interest confusion\xe2\x80\x9d theory of\ntrademark infringement, nor would one make sense; the plaintiff proceeding under such a theory\nwould be hard-pressed to articulate what harm it was suffering.\n\nSome of this confusion might be \xe2\x80\x9cforward\xe2\x80\x9d or \xe2\x80\x9cdirect\xe2\x80\x9d confusion\xe2\x80\x94people encountering Tech\nand thinking it\xe2\x80\x99s related to Promotions. Evidence of such confusion is relevant even in a case relying on\na reverse-confusion theory. See A&H Sportswear, 237 F.3d at 233 (\xe2\x80\x9c[T]he manifestation of consumer\nconfusion as \xe2\x80\x98direct\xe2\x80\x99 or \xe2\x80\x98reverse\xe2\x80\x99 may merely be a function of the context in which the consumer first\nencountered the mark. Isolated instances of \xe2\x80\x98direct\xe2\x80\x99 confusion may occur in a reverse confusion case,\nand vice-versa.\xe2\x80\x9d).\n17\n\n444\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nstrongly suggest that most of the callers were not confused within the meaning of the Lanham Act, but\nwere either misdirected, careless, or both. As for the e-mails, there are only five of them presented in\nthe record, at least two of which could easily be chalked up to carelessness. Furthermore, many of the\ncallers and e-mailers who were confused were likely quickly put straight, and \xe2\x80\x9c[s]hort-lived confusion\nor confusion of individuals casually acquainted with a business is worthy of little weight.\xe2\x80\x9d Safeway\nStores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir. 1982). That said, it strains\ncredulity to think that at least some of the many dozens of callers were not actually confused, and\ncertainly two of the e-mailers were. The evidence of confusion on the part of former Promotions\ncustomers and current Tech customers and driver partners is worth more weight than the phone call\nand e-mail evidence, see id., but there are only a few such instances. Still, even a few instances of actual\nconfusion on the part of customers is \xe2\x80\x9cworthy of some consideration.\xe2\x80\x9d Id. Putting all of this together,\nthe actual confusion factor weighs in favor of Promotions, but it by no means weighs so heavily that a\nfinding of a likelihood of confusion is inevitable.\n10. Likelihood of Confusion?\n[38] The \xe2\x80\x9cintent to infringe\xe2\x80\x9d factor is unimportant, the \xe2\x80\x9cstrength of the mark\xe2\x80\x9d factor does not\nreally favor a finding of confusion, and the \xe2\x80\x9csimilarity of marks\xe2\x80\x9d and the \xe2\x80\x9csimilarity of advertising\nmethods\xe2\x80\x9d factors together favor a finding of confusion. The remaining three factors\xe2\x80\x94actual confusion,\nsimilarity of services, and similarity of sales methods\xe2\x80\x94deserve more discussion.\n[39] The one factor that weighs most heavily against Promotions is the dissimilarity in the sales\nmethods of the two companies. Tech\xe2\x80\x99s services are accessed through a smartphone app.18 One cannot\ncall for a ride with one of Tech\xe2\x80\x99s driver partners, nor can one go to a website and reserve a ride. This is\nin stark contrast to the manner in which Promotions\xe2\x80\x99 services are accessed. This difference is critically\nimportant for the following reason: anyone who has used Tech\xe2\x80\x99s services necessarily understands that\nthose services are accessed via a smartphone app, and is unlikely to think that Tech has all of a sudden\nstarted to make its services accessible via other means. The analysis of the \xe2\x80\x9csimilarity of services\xe2\x80\x9d\nfactor (see Part III.C.5 above) also suggests that people who have used Tech\xe2\x80\x99s services are unlikely to\nbe confused when they encounter Promotions\xe2\x80\x99 marks.\n[40] What this means is that the group of people who might be likely to be confused are people\nwho have heard of, but not used, Tech\xe2\x80\x99s services. But the people who matter most in this group are\nthose who will actually encounter Promotions\xe2\x80\x99 mark, and that subgroup is likely largely comprised of\ncollege-aged (and slightly older) people. This subgroup is relatively tech-savvy and therefore likely to\nbe sensitive to the differences between the sales methods of Tech and Promotions, even if all they\nknow about Tech is that it provides transportation services through an app. Moreover, if a person in\nthis subgroup has heard of Tech, she might be aware that Tech is available in many locations, not just\nGainesville, and the local focus of Promotions\xe2\x80\x99 advertising will not tend to create confusion.\n[41] Were there no evidence of actual confusion, the foregoing analysis based on the other factors\nwould counsel against finding that Promotions had shown a substantial likelihood of success on the\nissue of likelihood of confusion, though it would be a close call. But there is evidence of actual\nconfusion, and the Eleventh Circuit has repeatedly emphasized the importance of such evidence. See,\ne.g., Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 936 (11th Cir.\n2010) (\xe2\x80\x9cevidence of actual confusion is the most weighty consideration\xe2\x80\x9d in the likelihood of confusion\nanalysis). Great weight is given to this factor for two reasons. First, actual confusion is direct evidence\nof precisely the occurrence that the \xe2\x80\x9clikelihood of confusion\xe2\x80\x9d inquiry is trying to assess the probability\nof. Second, giving great weight to evidence of actual confusion helps ensure that a judge doesn\xe2\x80\x99t rely\n(perhaps subconsciously) too heavily on his own subjective view of the likelihood of confusion. Cf. Jada\n18\n\nWith the exception of the UberEVENTS service, which will be discussed later.\n\n445\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nToys, Inc. v. Mattel, Inc., 518 F.3d 628, 633 (9th Cir. 2008) (holding that a finding of no likelihood of\nconfusion based solely on dissimilarity of marks was improper because it created \xe2\x80\x9cthe potential for a\njudge to elevate his or her own subjective impressions of the relative dissimilarity of the marks over\nevidence of, for example, actual confusion\xe2\x80\x9d). In analyzing the other factors, this Court has of course\ntried to put itself into the shoes of an average consumer, and has tried to avoid giving too much weight\nto its own subjective impressions, but such efforts are perhaps doomed. See Societe Anonyme de la\nGrande Distillerie E. Cusenier Fils Aine & Cie. v. Julius Wile Sons & Co., 161 F.Supp. 545, 547\n(S.D.N.Y.1958) (\xe2\x80\x9c[A] finding on infringement is by necessity a subjective determination by the trial\njudge based on his visceral reactions as to the likelihood of confusion the allegedly infringing mark will\ncreate in the minds of the public.\xe2\x80\x9d). Giving serious weight to evidence of actual confusion helps\ncounteract the empathetic deficiencies that necessarily distort the analysis of the remaining factors.\n[42] It is true that there is not a huge amount of evidence of actual confusion in the record\xe2\x80\x94\nperhaps five or so instances of people who truly thought that Promotions and Tech were related\ndespite having a more-than-casual relationship with the two entities, plus some fraction of the callers.\nBut the Eleventh Circuit\xe2\x80\x99s case law makes clear that even a few instances of consumer confusion can be\nsufficient to establish actual confusion . . . .\n[43] It\xe2\x80\x99s a close call, but Promotions has established a substantial likelihood of success on the\nmerits of the \xe2\x80\x9clikelihood of confusion\xe2\x80\x9d element of its claims. Because it has also established that it\xe2\x80\x99s\nsubstantially likely to succeed in showing that it has enforceable trademark rights in the Gainesville\narea in the \xe2\x80\x9cUBER PROMOTIONS\xe2\x80\x9d mark, Promotions is substantially likely to succeed in showing that\nTech has infringed on its mark by using its \xe2\x80\x9cUBER\xe2\x80\x9d marks in the Gainesville area.\n11. UberEVENTS\n[44] Everything that has been said so far has not taken into account Tech\xe2\x80\x99s new \xe2\x80\x9cUberEVENTS\xe2\x80\x9d\nservice. That service, if allowed to grow in the Gainesville area pending trial, would substantially\nincrease the risk of consumer confusion for three independent reasons. First, the more \xe2\x80\x9cUber_____\xe2\x80\x9d\nservices there are, the more likely it is that a consumer might think that Promotions is just another\nbranch on the Uber Technologies tree. Second, UberEVENTS is accessed through a webpage, thus\neliminating one of the key differences between Tech and Promotions. Third, the service allows users to\ncoordinate transportation at a set time in the future for a large number of people, just like Promotions.\nGranted, the method by which people are transported is quite different from Promotions\xe2\x80\x94one\nimagines that most driver partners\xe2\x80\x99 vehicles are less lively than a party bus\xe2\x80\x94but the nature of the\nservice is far closer to the services offered by Promotions than any of Tech\xe2\x80\x99s other offerings.\n[45] To put this in terms of the factors, the \xe2\x80\x9csimilarity of sales methods\xe2\x80\x9d factor is less tilted\ntowards Tech and the \xe2\x80\x9csimilarity of services\xe2\x80\x9d factor tips in favor of Promotions when assessing Tech\xe2\x80\x99s\nuse of its UBER marks in connection with its UberEVENTS service. While the question of whether\nPromotions is substantially likely to succeed on the merits of its claim vis-\xc3\xa0-vis UberX, etc. is a close\ncall, these minor adjustments to the factors push Promotions\xe2\x80\x99 claim vis-\xc3\xa0-vis UberEVENTS well past\nthe edge. Promotions has easily met its burden of showing that it is substantially likely to succeed on\nthe merits of its claim that Tech\xe2\x80\x99s use of its UBER marks in connection with the UberEVENTS service\ncreates a likelihood of consumer confusion.\n{The court went on to grant in part plaintiff\xe2\x80\x99s motion for a preliminary injunction. It enjoined the\ndefendant from using \xe2\x80\x9cthe UBER mark (or any variant thereof) in connection with the UberEVENTS\nservice in the Gainesville market (Alachua County) until further notice.\xe2\x80\x9d It also required the defendant\nto establish a phone number in the Gainesville area code and ensure that relevant phone directories\nand internet search engines point to the appropriate phone number, either the plaintiff\xe2\x80\x99s or the\ndefendant\xe2\x80\x99s, in response to various keyword searches. As the court explained, \xe2\x80\x9c[c]ompliance may entail\nusing the search engines\' paid advertisement features such as Google AdWords.\xe2\x80\x9d}\n\n446\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nComments and Questions\n1. Trademark Strength and Reverse Confusion. The Uber Promotions court asserted that \xe2\x80\x9cbecause\nthis is a reverse-confusion case, it is the conceptual and not the commercial strength of Promotions\xe2\x80\x99\nmarks that matters.\xe2\x80\x9d The court cited A & H Sportswear, Inc. v. Victoria\xe2\x80\x99s Secret Stores, Inc., 237 F.3d 198,\n231-32 (3d Cir. 2000). The A & H Sportswear discussion of the issue is excerpted below. Is this\nreasoning persuasive?\na. Commercial Strength\nWhere the greater advertising originates from the senior user, we are more likely to\nsee a case of direct confusion; if the greater advertising originates from the junior user,\nreverse confusion is more likely . . . .\nLogically, then, in a direct confusion claim, a plaintiff with a commercially strong\nmark is more likely to prevail than a plaintiff with a commercially weak mark.\nConversely, in a reverse confusion claim, a plaintiff with a commercially weak mark is\nmore likely to prevail than a plaintiff with a stronger mark, and this is particularly true\nwhen the plaintiff\xe2\x80\x99s weaker mark is pitted against a defendant with a far stronger\nmark . . . . \xe2\x80\x9c[T]he lack of commercial strength of the smaller senior user\xe2\x80\x99s mark is to be\ngiven less weight in the analysis because it is the strength of the larger, junior user\xe2\x80\x99s\nmark which results in reverse confusion.\xe2\x80\x9d Commerce Nat\xe2\x80\x99l Ins. Servs., Inc. v. Commerce Ins.\nAgency, Inc., 214 F.3d 432, 444 (3d Cir. 2000) . . . .\nTherefore, in a reverse confusion claim, a court should analyze the \xe2\x80\x9ccommercial\nstrength\xe2\x80\x9d factor in terms of (1) the commercial strength of the junior user as compared to\nthe senior user; and (2) any advertising or marketing campaign by the junior user that\nhas resulted in a saturation in the public awareness of the junior user\xe2\x80\x99s mark.\nb. Distinctiveness or Conceptual Strength\n....\nAs stated above, in the paradigmatic reverse confusion case, the senior user has a\ncommercially weak mark when compared with the junior user\xe2\x80\x99s commercially strong\nmark. When it comes to conceptual strength, however, we believe that, just as in direct\nconfusion cases, a strong mark should weigh in favor of a senior user . . . .\nIn H. Lubovsky, Inc. v. Esprit de Corp., 627 F.Supp. 483 (S.D.N.Y.1986), the court\nexplained that conceptual distinctiveness was relevant in the same way for a reverse\nconfusion claim because \xe2\x80\x9cif a customer saw a doll in a toy store bearing a strong familiar\ntrademark like \xe2\x80\x98Exxon,\xe2\x80\x99 he might well assume that the oil company had gone into the toy\nbusiness; if, on the other hand, he saw a doll bearing a familiar but weak laudatory\ntrademark like Merit, he would be unlikely to assume that it is connected with the\nsimilarly named gasoline or cigarettes.\xe2\x80\x9d Id. at 487; see also Long & Marks, supra, at 22.\nThe H. Lubovsky logic resonates, for it makes more sense to hold that conceptual\nstrength, unlike commercial strength, works in the plaintiff\xe2\x80\x99s favor. That is, if we were to\napply the rule stated above for commercial strength, i.e., weighing weakness in the\nplaintiff\xe2\x80\x99s favor, we would bring about the perverse result that less imaginative marks\nwould be more likely to win reverse confusion claims than arbitrary or fanciful ones. We\ntherefore hold that, as in direct confusion claims, a district court should weigh a\nconceptually strong mark in the plaintiff\xe2\x80\x99s favor, particularly when the mark is of such a\ndistinctive character that, coupled with the relative similarity of the plaintiff\xe2\x80\x99s and\ndefendant\xe2\x80\x99s marks, a consumer viewing the plaintiff\xe2\x80\x99s product is likely to assume that\nsuch a mark would only have been adopted by a single source\xe2\x80\x94i.e., the defendant.\n\n447\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n2. Other Examples of Reverse Confusion Found. See, e.g., Fleet Feet, Inc. v. Nike Inc., 419 F.Supp.3d\n919 (M.D.N.C.) (finding that defendant\xe2\x80\x99s use of the phrase \xe2\x80\x9cSport Changes Everything\xe2\x80\x9d would cause\nreverse confusion with plaintiff, seller of running and fitness merchandise, in light of plaintiff\xe2\x80\x99s prior\nuse of the phrases \xe2\x80\x9cChange Everything\xe2\x80\x9d and \xe2\x80\x9cRunning Changes Everything\xe2\x80\x9d); H. Lubovsky, Inc. v. Esprit\nDe Corp., 627 F. Supp. 483, 228 U.S.P.Q. (BNA) 814 (S.D.N.Y. 1986) (defendant\xe2\x80\x99s extension of ESPRIT\nbrand to women\xe2\x80\x99s shoes created reverse confusion with plaintiff\xe2\x80\x99s prior use of same mark for same\nproducts); Tanel Corp. v. Reebok Intern., Ltd., 774 F. Supp. 49 (D. Mass. 1990) (defendant\xe2\x80\x99s junior use of\n360 DEGREES for shoes created reverse confusion with small company\xe2\x80\x99s senior use of same mark for\nsame products).\n3. Examples of Reverse Confusion Not Found. See, e.g, Surfvivor Media, Inc. v. Survivor Productions,\n406 F.3d 625 (9th Cir. 2005) (SURVIVOR television show did not create reverse confusion with SURFVIVOR\nfor beach-themed products); Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952\nF. Supp. 1084 (D.N.J. 1997) (NBA team\xe2\x80\x99s adoption of name WASHINGTON WIZARDS would not create\nreverse confusion with HARLEM WIZARDS trick basketball team); Pump, Inc. v. Collins Management, Inc.,\n746 F. Supp. 1159 (D. Mass. 1990) (Rock band Aerosmith\xe2\x80\x99s album entitled \xe2\x80\x9cPump\xe2\x80\x9d did not create\nconfusion with little-known rock band by same name where visual displays of marks and contexts in\nwhich they were used were different); Lobo Enterprises, Inc. v. Tunnel, Inc., 693 F. Supp. 71 (S.D.N.Y.\n1988) (large nightclub TUNNEL did not create reverse confusion with small gay bar TUNNEL BAR where\nclienteles of club and bar were sufficiently different to preclude reverse confusion); Andy Warhol\nEnterprises, Inc. v. Time Inc., 700 F. Supp. 760 (S.D.N.Y. 1988) (People Magazine\xe2\x80\x99s use of \xe2\x80\x9cInterview\xe2\x80\x9d as\nthe descriptive heading of its interview section did not create reverse confusion with magazine of same\nname where consumers would not believe that defendant published plaintiff\xe2\x80\x99s magazine).\n9.\n\nReverse Passing Off\n\n\xe2\x80\x9cReverse passing off\xe2\x80\x9d generally involves situations in which a \xe2\x80\x9cdefendant falsely takes credit for\nanother\xe2\x80\x99s goods or services,\xe2\x80\x9d MCCARTHY \xc2\xa7 25.6. More specifically, reverse passing off occurs when the\ndefendant passes off as its own product (or service) what was in fact made (or performed) by the\nplaintiff, perhaps to gain the goodwill that the plaintiff\xe2\x80\x99s product might generate for the defendant,\nperhaps simply to meet a production deadline.\nReverse passing off is an exceedingly rare cause of action, even more so after the case below,\nDastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). We consider reverse passing off\nand the Dastar case because of the profound policy questions implicated by the cause of action and the\nfacts of the Dastar case. Recall that one advantage trademark protection enjoys over copyright or\npatent protection is that trademark protection is unlimited in time, provided that the trademark owner\ncontinue to use the mark in commerce. Thus, when patent or copyright protection of a product feature\nexpires, the patent or copyright owner may continue to exert control over that feature through\ntrademark law (if the feature satisfies the various requirements of trademark protection). This raises\nsignificant concerns. Consider the example of the Mickey Mouse image mark, whose registration is\nshown below:\n\n448\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n\nAt some point, Disney\xe2\x80\x99s copyright rights in the countless cartoons in which Mickey Mouse is depicted\nwill begin to expire. But can Disney then use its trademark rights in the image of the character to\nprevent others from reproducing these cartoons? With copyright law, the public agrees to grant shortterm exclusive rights to the author of a work in order to incentivize authorship, but an exceedingly\nimportant part of that bargain is that these rights will eventually expire and the work will be dedicated\nto the public domain, free for anyone to use in any way. Should trademark rights be allowed to trump\nthis basic bargain?\nIn Dastar, the respondent sought to assert, through trademark law, continued control over\nexpression in which it had lost its copyright rights. As you read through Dastar, consider the following\nquestions:\n\xe2\x80\xa2\n\nDoes Dastar resolve the question of whether Disney may continue to assert exclusive rights\nthrough trademark law after its copyright claims have expired?\n\n\xe2\x80\xa2\n\nShould trademark law and specifically the concept of \xe2\x80\x9creverse passing off\xe2\x80\x9d provide a cause of\naction for plagiarism of someone else\xe2\x80\x99s ideas? More specifically, if I take someone else\xe2\x80\x99s\nproduct, merely re-label it with my own trademark, and sell that product as my own, then I\nwould likely be liable for the \xe2\x80\x9creverse passing off\xe2\x80\x9d of someone else\xe2\x80\x99s product as my own.\nShould the same principle apply if I take someone else\xe2\x80\x99s original expression or ideas and pass\nthem off as my own original expression or ideas? If not, why should we treat expression and\nideas differently?\n\n449\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n\nDastar Corp. v. Twentieth Century Fox Film Corp.\n539 U.S. 23 (2003)\nJustice SCALIA delivered the opinion of the Court.\n[1] In this case, we are asked to decide whether \xc2\xa7 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a),\nprevents the unaccredited copying of a work, and if so, whether a court may double a profit award\nunder \xc2\xa7 1117(a), in order to deter future infringing conduct.\nI\n[2] In 1948, three and a half years after the German surrender at Reims, General Dwight D.\nEisenhower completed Crusade in Europe, his written account of the allied campaign in Europe during\nWorld War II. Doubleday published the book, registered it with the Copyright Office in 1948, and\ngranted exclusive television rights to an affiliate of respondent Twentieth Century Fox Film\nCorporation (Fox). Fox, in turn, arranged for Time, Inc., to produce a television series, also called\nCrusade in Europe, based on the book, and Time assigned its copyright in the series to Fox. The\ntelevision series, consisting of 26 episodes, was first broadcast in 1949. It combined a soundtrack\nbased on a narration of the book with film footage from the United States Army, Navy, and Coast Guard,\nthe British Ministry of Information and War Office, the National Film Board of Canada, and unidentified\n\xe2\x80\x9cNewsreel Pool Cameramen.\xe2\x80\x9d In 1975, Doubleday renewed the copyright on the book as the\n\xe2\x80\x9c\xe2\x80\x98proprietor of copyright in a work made for hire.\xe2\x80\x99\xe2\x80\x9d App. to Pet. for Cert. 9a. Fox, however, did not\nrenew the copyright on the Crusade television series, which expired in 1977, leaving the television\nseries in the public domain.\n[3] In 1988, Fox reacquired the television rights in General Eisenhower\xe2\x80\x99s book, including the\nexclusive right to distribute the Crusade television series on video and to sublicense others to do so.\nRespondents SFM Entertainment and New Line Home Video, Inc., in turn, acquired from Fox the\nexclusive rights to distribute Crusade on video. SFM obtained the negatives of the original television\nseries, restored them, and repackaged the series on videotape; New Line distributed the videotapes.\n[4] Enter petitioner Dastar. In 1995, Dastar decided to expand its product line from music\ncompact discs to videos. Anticipating renewed interest in World War II on the 50th anniversary of the\nwar\xe2\x80\x99s end, Dastar released a video set entitled World War II Campaigns in Europe. To make Campaigns,\nDastar purchased eight beta cam tapes of the original version of the Crusade television series, which is\nin the public domain, copied them, and then edited the series. Dastar\xe2\x80\x99s Campaigns series is slightly\nmore than half as long as the original Crusade television series. Dastar substituted a new opening\nsequence, credit page, and final closing for those of the Crusade television series; inserted new\n450\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nchapter-title sequences and narrated chapter introductions; moved the \xe2\x80\x9crecap\xe2\x80\x9d in the Crusade\ntelevision series to the beginning and retitled it as a \xe2\x80\x9cpreview\xe2\x80\x9d; and removed references to and images\nof the book. Dastar created new packaging for its Campaigns series and (as already noted) a new title.\n[5] Dastar manufactured and sold the Campaigns video set as its own product. The advertising\nstates: \xe2\x80\x9cProduced and Distributed by: Entertainment Distributing \xe2\x80\x9d (which is owned by Dastar), and\nmakes no reference to the Crusade television series. Similarly, the screen credits state \xe2\x80\x9cDASTAR CORP\npresents\xe2\x80\x9d and \xe2\x80\x9can ENTERTAINMENT DISTRIBUTING Production,\xe2\x80\x9d and list as executive producer,\nproducer, and associate producer employees of Dastar. Supp.App. 2\xe2\x80\x933, 30. The Campaigns videos\nthemselves also make no reference to the Crusade television series, New Line\xe2\x80\x99s Crusade videotapes, or\nthe book. Dastar sells its Campaigns videos to Sam\xe2\x80\x99s Club, Costco, Best Buy, and other retailers and\nmail-order companies for $25 per set, substantially less than New Line\xe2\x80\x99s video set.\n[6] In 1998, respondents Fox, SFM, and New Line brought this action alleging that Dastar\xe2\x80\x99s sale of\nits Campaigns video set infringes Doubleday\xe2\x80\x99s copyright in General Eisenhower\xe2\x80\x99s book and, thus, their\nexclusive television rights in the book. Respondents later amended their complaint to add claims that\nDastar\xe2\x80\x99s sale of Campaigns \xe2\x80\x9cwithout proper credit\xe2\x80\x9d to the Crusade television series constitutes \xe2\x80\x9creverse\npassing off\xe2\x80\x9d1 in violation of \xc2\xa7 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7 1125(a), and in violation of state\nunfair-competition law. App. to Pet. for Cert. 31a. On cross-motions for summary judgment, the District\nCourt found for respondents on all three counts, id., at 54a\xe2\x80\x9355a, treating its resolution of the Lanham\nAct claim as controlling on the state-law unfair-competition claim because \xe2\x80\x9cthe ultimate test under\nboth is whether the public is likely to be deceived or confused,\xe2\x80\x9d id., at 54a. The court awarded Dastar\xe2\x80\x99s\nprofits to respondents and doubled them pursuant to \xc2\xa7 35 of the Lanham Act, 15 U.S.C. \xc2\xa7 1117(a), to\ndeter future infringing conduct by petitioner.\n[7] The Court of Appeals for the Ninth Circuit affirmed the judgment for respondents on the\nLanham Act claim, but reversed as to the copyright claim and remanded. 34 Fed.Appx. 312, 316 (2002).\n(It said nothing with regard to the state-law claim.) With respect to the Lanham Act claim, the Court of\nAppeals reasoned that \xe2\x80\x9cDastar copied substantially the entire Crusade in Europe series created by\nTwentieth Century Fox, labeled the resulting product with a different name and marketed it without\nattribution to Fox[, and] therefore committed a \xe2\x80\x98bodily appropriation\xe2\x80\x99 of Fox\xe2\x80\x99s series.\xe2\x80\x9d Id., at 314. It\nconcluded that \xe2\x80\x9cDastar\xe2\x80\x99s \xe2\x80\x98bodily appropriation\xe2\x80\x99 of Fox\xe2\x80\x99s original [television] series is sufficient to\nestablish the reverse passing off.\xe2\x80\x9d Ibid.2 The court also affirmed the District Court\xe2\x80\x99s award under the\nLanham Act of twice Dastar\xe2\x80\x99s profits. We granted certiorari. 537 U.S. 1099 (2003).\nII\n[8] The Lanham Act was intended to make \xe2\x80\x9cactionable the deceptive and misleading use of\nmarks,\xe2\x80\x9d and \xe2\x80\x9cto protect persons engaged in . . . commerce against unfair competition.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127.\nWhile much of the Lanham Act addresses the registration, use, and infringement of trademarks and\nPassing off (or palming off, as it is sometimes called) occurs when a producer misrepresents his\nown goods or services as someone else\xe2\x80\x99s. See, e.g., O. & W. Thum Co. v. Dickinson, 245 F. 609, 621 (C.A.6\n1917). \xe2\x80\x9cReverse passing off,\xe2\x80\x9d as its name implies, is the opposite: The producer misrepresents\nsomeone else\xe2\x80\x99s goods or services as his own. See, e.g., Williams v. Curtiss\xe2\x80\x93Wright Corp., 691 F.2d 168,\n172 (C.A.3 1982).\n1\n\nAs for the copyright claim, the Ninth Circuit held that the tax treatment General Eisenhower\nsought for his manuscript of the book created a triable issue as to whether he intended the book to be a\nwork for hire, and thus as to whether Doubleday properly renewed the copyright in 1976. See 34\nFed.Appx., at 314. The copyright issue is still the subject of litigation, but is not before us. We express\nno opinion as to whether petitioner\xe2\x80\x99s product would infringe a valid copyright in General Eisenhower\xe2\x80\x99s\nbook.\n2\n\n451\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nrelated marks, \xc2\xa7 43(a), 15 U.S.C. \xc2\xa7 1125(a) is one of the few provisions that goes beyond trademark\nprotection. As originally enacted, \xc2\xa7 43(a) created a federal remedy against a person who used in\ncommerce either \xe2\x80\x9ca false designation of origin, or any false description or representation\xe2\x80\x9d in\nconnection with \xe2\x80\x9cany goods or services.\xe2\x80\x9d 60 Stat. 441. As the Second Circuit accurately observed with\nregard to the original enactment, however\xe2\x80\x94and as remains true after the 1988 revision\xe2\x80\x94\xc2\xa7 43(a)\n\xe2\x80\x9cdoes not have boundless application as a remedy for unfair trade practices,\xe2\x80\x9d Alfred Dunhill, Ltd. v.\nInterstate Cigar Co., 499 F.2d 232, 237 (C.A.2 1974). \xe2\x80\x9c[B]ecause of its inherently limited wording,\n\xc2\xa7 43(a) can never be a federal \xe2\x80\x98codification\xe2\x80\x99 of the overall law of \xe2\x80\x98unfair competition,\xe2\x80\x99\xe2\x80\x9d 4 J. McCarthy,\nTrademarks and Unfair Competition \xc2\xa7 27:7, p. 27\xe2\x80\x9314 (4th ed. 2002) (McCarthy), but can apply only to\ncertain unfair trade practices prohibited by its text.\n....\n[9] Thus, as it comes to us, the gravamen of respondents\xe2\x80\x99 claim is that, in marketing and selling\nCampaigns as its own product without acknowledging its nearly wholesale reliance on the Crusade\ntelevision series, Dastar has made a \xe2\x80\x9cfalse designation of origin, false or misleading description of fact,\nor false or misleading representation of fact, which . . . is likely to cause confusion . . . as to the origin . . .\nof his or her goods.\xe2\x80\x9d \xc2\xa7 43(a). That claim would undoubtedly be sustained if Dastar had bought some of\nNew Line\xe2\x80\x99s Crusade videotapes and merely repackaged them as its own. Dastar\xe2\x80\x99s alleged wrongdoing,\nhowever, is vastly different: It took a creative work in the public domain\xe2\x80\x94the Crusade television\nseries\xe2\x80\x94copied it, made modifications (arguably minor), and produced its very own series of\nvideotapes. If \xe2\x80\x9corigin\xe2\x80\x9d refers only to the manufacturer or producer of the physical \xe2\x80\x9cgoods\xe2\x80\x9d that are\nmade available to the public (in this case the videotapes), Dastar was the origin. If, however, \xe2\x80\x9corigin\xe2\x80\x9d\nincludes the creator of the underlying work that Dastar copied, then someone else (perhaps Fox) was\nthe origin of Dastar\xe2\x80\x99s product. At bottom, we must decide what \xc2\xa7 43(a)(1)(A) of the Lanham Act means\nby the \xe2\x80\x9corigin\xe2\x80\x9d of \xe2\x80\x9cgoods.\xe2\x80\x9d\nIII\n[10] The dictionary definition of \xe2\x80\x9corigin\xe2\x80\x9d is \xe2\x80\x9c[t]he fact or process of coming into being from a\nsource,\xe2\x80\x9d and \xe2\x80\x9c[t]hat from which anything primarily proceeds; source.\xe2\x80\x9d Webster\xe2\x80\x99s New International\nDictionary 1720\xe2\x80\x931721 (2d ed.1949). And the dictionary definition of \xe2\x80\x9cgoods\xe2\x80\x9d (as relevant here) is\n\xe2\x80\x9c[w]ares; merchandise.\xe2\x80\x9d Id., at 1079. We think the most natural understanding of the \xe2\x80\x9corigin\xe2\x80\x9d of\n\xe2\x80\x9cgoods\xe2\x80\x9d\xe2\x80\x94the source of wares\xe2\x80\x94is the producer of the tangible product sold in the marketplace, in this\ncase the physical Campaigns videotape sold by Dastar. The concept might be stretched . . . to include\nnot only the actual producer, but also the trademark owner who commissioned or assumed\nresponsibility for (\xe2\x80\x9cstood behind\xe2\x80\x9d) production of the physical product. But as used in the Lanham Act,\nthe phrase \xe2\x80\x9corigin of goods\xe2\x80\x9d is in our view incapable of connoting the person or entity that originated\nthe ideas or communications that \xe2\x80\x9cgoods\xe2\x80\x9d embody or contain. Such an extension would not only\nstretch the text, but it would be out of accord with the history and purpose of the Lanham Act and\ninconsistent with precedent.\n[11] Section 43(a) of the Lanham Act prohibits actions like trademark infringement that deceive\nconsumers and impair a producer\xe2\x80\x99s goodwill. It forbids, for example, the Coca\xe2\x80\x93Cola Company\xe2\x80\x99s passing\noff its product as Pepsi\xe2\x80\x93Cola or reverse passing off Pepsi\xe2\x80\x93Cola as its product. But the brand-loyal\nconsumer who prefers the drink that the Coca\xe2\x80\x93Cola Company or PepsiCo sells, while he believes that\nthat company produced (or at least stands behind the production of) that product, surely does not\nnecessarily believe that that company was the \xe2\x80\x9corigin\xe2\x80\x9d of the drink in the sense that it was the very\nfirst to devise the formula. The consumer who buys a branded product does not automatically assume\nthat the brand-name company is the same entity that came up with the idea for the product, or\ndesigned the product\xe2\x80\x94and typically does not care whether it is. The words of the Lanham Act should\nnot be stretched to cover matters that are typically of no consequence to purchasers.\n\n452\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n[12] It could be argued, perhaps, that the reality of purchaser concern is different for what might\nbe called a communicative product\xe2\x80\x94one that is valued not primarily for its physical qualities, such as a\nhammer, but for the intellectual content that it conveys, such as a book or, as here, a video. The\npurchaser of a novel is interested not merely, if at all, in the identity of the producer of the physical\ntome (the publisher), but also, and indeed primarily, in the identity of the creator of the story it\nconveys (the author). And the author, of course, has at least as much interest in avoiding passing off (or\nreverse passing off) of his creation as does the publisher. For such a communicative product (the\nargument goes) \xe2\x80\x9corigin of goods\xe2\x80\x9d in \xc2\xa7 43(a) must be deemed to include not merely the producer of the\nphysical item (the publishing house Farrar, Straus and Giroux, or the video producer Dastar) but also\nthe creator of the content that the physical item conveys (the author Tom Wolfe, or\xe2\x80\x94assertedly\xe2\x80\x94\nrespondents).\n[13] The problem with this argument according special treatment to communicative products is\nthat it causes the Lanham Act to conflict with the law of copyright, which addresses that subject\nspecifically. The right to copy, and to copy without attribution, once a copyright has expired, like \xe2\x80\x9cthe\nright to make [an article whose patent has expired]\xe2\x80\x94including the right to make it in precisely the\nshape it carried when patented\xe2\x80\x94passes to the public.\xe2\x80\x9d Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225,\n230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 121\xe2\x80\x93122 (1938). \xe2\x80\x9cIn general,\nunless an intellectual property right such as a patent or copyright protects an item, it will be subject to\ncopying.\xe2\x80\x9d TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001). The rights of a patentee\nor copyright holder are part of a \xe2\x80\x9ccarefully crafted bargain,\xe2\x80\x9d Bonito Boats, Inc. v. Thunder Craft Boats,\nInc., 489 U.S. 141, 150\xe2\x80\x93151 (1989), under which, once the patent or copyright monopoly has expired,\nthe public may use the invention or work at will and without attribution. Thus, in construing the\nLanham Act, we have been \xe2\x80\x9ccareful to caution against misuse or over-extension\xe2\x80\x9d of trademark and\nrelated protections into areas traditionally occupied by patent or copyright. TrafFix, 532 U.S., at 29.\n\xe2\x80\x9cThe Lanham Act,\xe2\x80\x9d we have said, \xe2\x80\x9cdoes not exist to reward manufacturers for their innovation in\ncreating a particular device; that is the purpose of the patent law and its period of exclusivity.\xe2\x80\x9d Id., at\n34. Federal trademark law \xe2\x80\x9chas no necessary relation to invention or discovery,\xe2\x80\x9d In re Trade\xe2\x80\x93Mark\nCases, 100 U.S. 82, 94 (1879), but rather, by preventing competitors from copying \xe2\x80\x9ca source-identifying\nmark,\xe2\x80\x9d \xe2\x80\x9creduce[s] the customer\xe2\x80\x99s costs of shopping and making purchasing decisions,\xe2\x80\x9d and \xe2\x80\x9chelps\nassure a producer that it (and not an imitating competitor) will reap the financial, reputation-related\nrewards associated with a desirable product,\xe2\x80\x9d Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163\xe2\x80\x93\n164 (1995) (internal quotation marks and citation omitted). Assuming for the sake of argument that\nDastar\xe2\x80\x99s representation of itself as the \xe2\x80\x9cProducer\xe2\x80\x9d of its videos amounted to a representation that it\noriginated the creative work conveyed by the videos, allowing a cause of action under \xc2\xa7 43(a) for that\nrepresentation would create a species of mutant copyright law that limits the public\xe2\x80\x99s \xe2\x80\x9cfederal right to\n\xe2\x80\x98copy and to use\xe2\x80\x99\xe2\x80\x9d expired copyrights, Bonito Boats, supra, at 165, 109 S.Ct. 971.\n[14] When Congress has wished to create such an addition to the law of copyright, it has done so\nwith much more specificity than the Lanham Act\xe2\x80\x99s ambiguous use of \xe2\x80\x9corigin.\xe2\x80\x9d The Visual Artists Rights\nAct of 1990, \xc2\xa7 603(a), 104 Stat. 5128, provides that the author of an artistic work \xe2\x80\x9cshall have the right\n. . . to claim authorship of that work.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 106A(a)(1)(A). That express right of attribution is\ncarefully limited and focused: It attaches only to specified \xe2\x80\x9cwork[s] of visual art,\xe2\x80\x9d \xc2\xa7 101, is personal to\nthe artist, \xc2\xa7\xc2\xa7 106A(b) and (e), and endures only for \xe2\x80\x9cthe life of the author,\xe2\x80\x9d \xc2\xa7 106A(d)(1). Recognizing\nin \xc2\xa7 43(a) a cause of action for misrepresentation of authorship of noncopyrighted works (visual or\notherwise) would render these limitations superfluous. A statutory interpretation that renders\nanother statute superfluous is of course to be avoided. E.g., Mackey v. Lanier Collection Agency &\nService, Inc., 486 U.S. 825, 837, and n. 11 (1988).\n[15] Reading \xe2\x80\x9corigin\xe2\x80\x9d in \xc2\xa7 43(a) to require attribution of uncopyrighted materials would pose\nserious practical problems. Without a copyrighted work as the basepoint, the word \xe2\x80\x9corigin\xe2\x80\x9d has no\ndiscernable limits. A video of the MGM film Carmen Jones, after its copyright has expired, would\n453\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\npresumably require attribution not just to MGM, but to Oscar Hammerstein II (who wrote the musical\non which the film was based), to Georges Bizet (who wrote the opera on which the musical was based),\nand to Prosper Merimee (who wrote the novel on which the opera was based). In many cases, figuring\nout who is in the line of \xe2\x80\x9corigin\xe2\x80\x9d would be no simple task. Indeed, in the present case it is far from clear\nthat respondents have that status. Neither SFM nor New Line had anything to do with the production\nof the Crusade television series\xe2\x80\x94they merely were licensed to distribute the video version. While Fox\nmight have a claim to being in the line of origin, its involvement with the creation of the television\nseries was limited at best. Time, Inc., was the principal, if not the exclusive, creator, albeit under\narrangement with Fox. And of course it was neither Fox nor Time, Inc., that shot the film used in the\nCrusade television series. Rather, that footage came from the United States Army, Navy, and Coast\nGuard, the British Ministry of Information and War Office, the National Film Board of Canada, and\nunidentified \xe2\x80\x9cNewsreel Pool Cameramen.\xe2\x80\x9d If anyone has a claim to being the original creator of the\nmaterial used in both the Crusade television series and the Campaigns videotapes, it would be those\ngroups, rather than Fox. We do not think the Lanham Act requires this search for the source of the Nile\nand all its tributaries.\n[16] Another practical difficulty of adopting a special definition of \xe2\x80\x9corigin\xe2\x80\x9d for communicative\nproducts is that it places the manufacturers of those products in a difficult position. On the one hand,\nthey would face Lanham Act liability for failing to credit the creator of a work on which their lawful\ncopies are based; and on the other hand they could face Lanham Act liability for crediting the creator if\nthat should be regarded as implying the creator\xe2\x80\x99s \xe2\x80\x9csponsorship or approval\xe2\x80\x9d of the copy, 15 U.S.C.\n\xc2\xa7 1125(a)(1)(A). In this case, for example, if Dastar had simply \xe2\x80\x9ccopied [the television series] as\nCrusade in Europe and sold it as Crusade in Europe,\xe2\x80\x9d without changing the title or packaging (including\nthe original credits to Fox), it is hard to have confidence in respondents\xe2\x80\x99 assurance that they \xe2\x80\x9cwould\nnot be here on a Lanham Act cause of action,\xe2\x80\x9d Tr. of Oral Arg. 35.\n[17] Finally, reading \xc2\xa7 43(a) of the Lanham Act as creating a cause of action for, in effect,\nplagiarism\xe2\x80\x94the use of otherwise unprotected works and inventions without attribution\xe2\x80\x94would be\nhard to reconcile with our previous decisions. For example, in Wal\xe2\x80\x93Mart Stores, Inc. v. Samara Brothers,\nInc., 529 U.S. 205 (2000), we considered whether product-design trade dress can ever be inherently\ndistinctive. Wal\xe2\x80\x93Mart produced \xe2\x80\x9cknockoffs\xe2\x80\x9d of children\xe2\x80\x99s clothes designed and manufactured by\nSamara Brothers, containing only \xe2\x80\x9cminor modifications\xe2\x80\x9d of the original designs. Id., at 208. We\nconcluded that the designs could not be protected under \xc2\xa7 43(a) without a showing that they had\nacquired \xe2\x80\x9csecondary meaning,\xe2\x80\x9d id., at 214, so that they \xe2\x80\x9c\xe2\x80\x98identify the source of the product rather than\nthe product itself,\xe2\x80\x99\xe2\x80\x9d id., at 211 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844,\n851, n. 11 (1982)). This carefully considered limitation would be entirely pointless if the \xe2\x80\x9coriginal\xe2\x80\x9d\nproducer could turn around and pursue a reverse-passing-off claim under exactly the same provision\nof the Lanham Act. Samara would merely have had to argue that it was the \xe2\x80\x9corigin\xe2\x80\x9d of the designs that\nWal\xe2\x80\x93Mart was selling as its own line. It was not, because \xe2\x80\x9corigin of goods\xe2\x80\x9d in the Lanham Act referred\nto the producer of the clothes, and not the producer of the (potentially) copyrightable or patentable\ndesigns that the clothes embodied.\n[18] Similarly under respondents\xe2\x80\x99 theory, the \xe2\x80\x9corigin of goods\xe2\x80\x9d provision of \xc2\xa7 43(a) would have\nsupported the suit that we rejected in Bonito Boats, 489 U.S. 141, where the defendants had used\nmolds to duplicate the plaintiff\xe2\x80\x99s unpatented boat hulls (apparently without crediting the plaintiff).\nAnd it would have supported the suit we rejected in TrafFix, 532 U.S. 23: The plaintiff, whose patents\non flexible road signs had expired, and who could not prevail on a trade-dress claim under \xc2\xa7 43(a)\nbecause the features of the signs were functional, would have had a reverse-passing-off claim for\nunattributed copying of his design.\n[19] In sum, reading the phrase \xe2\x80\x9corigin of goods\xe2\x80\x9d in the Lanham Act in accordance with the Act\xe2\x80\x99s\ncommon-law foundations (which were not designed to protect originality or creativity), and in light of\nthe copyright and patent laws (which were), we conclude that the phrase refers to the producer of the\n454\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\ntangible goods that are offered for sale, and not to the author of any idea, concept, or communication\nembodied in those goods. Cf. 17 U.S.C. \xc2\xa7 202 (distinguishing between a copyrighted work and \xe2\x80\x9cany\nmaterial object in which the work is embodied\xe2\x80\x9d). To hold otherwise would be akin to finding that\n\xc2\xa7 43(a) created a species of perpetual patent and copyright, which Congress may not do. See Eldred v.\nAshcroft, 537 U.S. 186, 208 (2003).\n[20] The creative talent of the sort that lay behind the Campaigns videos is not left without\nprotection. The original film footage used in the Crusade television series could have been copyrighted,\nsee 17 U.S.C. \xc2\xa7 102(a)(6), as was copyrighted (as a compilation) the Crusade television series, even\nthough it included material from the public domain, see \xc2\xa7 103(a). Had Fox renewed the copyright in\nthe Crusade television series, it would have had an easy claim of copyright infringement. And\nrespondents\xe2\x80\x99 contention that Campaigns infringes Doubleday\xe2\x80\x99s copyright in General Eisenhower\xe2\x80\x99s\nbook is still a live question on remand. If, moreover, the producer of a video that substantially copied\nthe Crusade series were, in advertising or promotion, to give purchasers the impression that the video\nwas quite different from that series, then one or more of the respondents might have a cause of\naction\xe2\x80\x94not for reverse passing off under the \xe2\x80\x9cconfusion . . . as to the origin\xe2\x80\x9d provision of \xc2\xa7 43(a)(1)(A),\nbut for misrepresentation under the \xe2\x80\x9cmisrepresents the nature, characteristics [or] qualities\xe2\x80\x9d\nprovision of \xc2\xa7 43(a)(1)(B). For merely saying it is the producer of the video, however, no Lanham Act\nliability attaches to Dastar.\n***\n[21] Because we conclude that Dastar was the \xe2\x80\x9corigin\xe2\x80\x9d of the products it sold as its own,\nrespondents cannot prevail on their Lanham Act claim. We thus have no occasion to consider whether\nthe Lanham Act permitted an award of double petitioner\xe2\x80\x99s profits. The judgment of the Court of\nAppeals for the Ninth Circuit is reversed, and the case is remanded for further proceedings consistent\nwith this opinion.\nIt is so ordered.\nJustice BREYER took no part in the consideration or decision of this case.\nComments and Questions\n1. Dastar on remand. On remand back to the Central District of California, the district court\ndismissed with prejudice Twentieth Century Fox\xe2\x80\x99s \xc2\xa7 43(a) and state law unfair competition claims, and\nwith that the litigation apparently ended. See Twentieth Century Fox Film Corp. v. Dastar Corp., No. 98\nCiv. 07189, 2003 WL 22669587 (C.D. Cal. Oct. 14, 2003).\n2. Dastar and the reverse passing off of \xe2\x80\x9cany idea, concept, or communication\xe2\x80\x9d. In the wake of\nDastar, courts have uniformly held that the \xe2\x80\x9corigin of goods\xe2\x80\x9d provision of Lanham Act \xc2\xa7 43(a) cannot\nprevent the unattributed use of someone else\xe2\x80\x99s ideas or expression. Consider, for example, LaPine v.\nSeinfeld, 92 U.S.P.Q.2d 1428, 2009 WL 2902584 (S.D.N.Y. 2009), judgment aff\xe2\x80\x99d, 375 Fed. Appx. 81, 96\nU.S.P.Q.2d 1130 (2d Cir. 2010). The plaintiff Missy Chase Lapine, a trained chef, wrote a cook book\nentitled The Sneaky Chef: Simple Strategies for Hiding Healthy Food in Kids\xe2\x80\x99 Favorite Meals, which was\npublished in April 2007 to mild success. The defendant Jessica Seinfeld, wife of Jerry Seinfeld,\nsubsequently authored\xe2\x80\x94or was credited as the author of\xe2\x80\x94the book Deceptively Delicious: Simple\nSecrets to Get Your Kids Eating Good Food, which was published in October 2007 and reached number\none on the New York Times bestseller list.\n\n455\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n\nLapine sued for, among other things, copyright infringement and reverse passing off. The court\nfound no copyright infringement on the ground that the \xe2\x80\x9ctotal concept and feel\xe2\x80\x9d of the two cookbooks\nwas dissimilar. Id. at *12. On the reverse passing off claim, the court explained:\nPlaintiffs\xe2\x80\x99 third claim for relief alleges unfair competition in violation of section\n43(a) of the Lanham Act. Section 43(a)(1) prohibits any \xe2\x80\x9cmisleading representation of\nfact which (A) is likely to cause confusion . . . as to the origin . . . of . . . goods . . . or (B) in\ncommercial advertising or promotion, misrepresents the nature, characteristics, [or]\nqualities . . . of his or her or another person\xe2\x80\x99s goods.\xe2\x80\x9d 15 U.S.C.A. \xc2\xa7 1125(a)(1) (West\n1998). This claim, too, fails as a matter of law.\nIn Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156\nL.Ed.2d 18 (2003), the Supreme Court defined the \xe2\x80\x9corigin of goods\xe2\x80\x9d for section 43(a)\npurposes, holding that the phrase \xe2\x80\x9crefers to the producer of the tangible goods that are\noffered for sale, and not to the author of any idea, concept, or communication embodied\nin those goods.\xe2\x80\x9d Id. at 37.9 To do otherwise would place the Lanham Act in conflict with\nthe copyright [and patent] law and \xe2\x80\x9cbe akin to finding that \xc2\xa7 43(a) created a species of\nperpetual patent and copyright, which Congress may not do.\xe2\x80\x9d Id. The Court recognized\nthat the Lanham Act was not intended to protect originality or creativity. Id.\nFollowing Dastar, a plaintiff may be able to bring a section 43(a) violation based on\na defendant\xe2\x80\x99s repackaging of plaintiff\xe2\x80\x99s material as its own. Id. at 31 (the claim \xe2\x80\x9cwould\nundoubtedly be sustained if Dastar had bought some of New Line\xe2\x80\x99s Crusade videotapes\nand merely repackaged them as its own\xe2\x80\x9d); see also Flaherty v. Filardi, No. 03 Civ. 2167,\n2009 WL 749570, at *9 (S.D.N.Y. Mar. 20, 2009) (\xe2\x80\x9cHad [Defendant] merely changed the\ncover page of the script to list himself as author and provide a new title, Plaintiff might\nhave had a Lanham Act claim.\xe2\x80\x9d). However, \xe2\x80\x9cthe mere act of publishing a written work\nwithout proper attribution to its creative source is not actionable under the Lanham Act.\xe2\x80\x9d\n9 Although Dastar involved copying of uncopyrighted work, subsequent decisions have\nrecognized its applicability to copyrighted work as well. See, e.g., Atrium Group De Ediciones Y\nPublicaciones, S.L. v. Harry N. Abrams, Inc., 565 F.Supp.2d 505, 512\xe2\x80\x9313 (S.D.N.Y.2008) (discussing\ncases).\n\n456\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nWellnx Life Sciences Inc. v. Iovate Health Sciences Research Inc., 516 F.Supp.2d 270, 285\n(S.D.N.Y.2007). Plaintiffs have not alleged that Defendants took Plaintiffs\xe2\x80\x99 cookbook and\nrepackaged it as their own, nor could the evidentiary record sustain such a claim because,\nas explained above, the works are not substantially similar.\nAlthough Plaintiffs did not identify in the Complaint the Section 43 subdivision\nunder which they assert their Lanham Act unfair competition claim, Plaintiffs argue that\nthey are asserting a claim under Section 43(a)(1)(B), the false advertising subsection,\nand that Dastar does not foreclose that claim. This argument is unavailing. Plaintiffs\xe2\x80\x99\nLanham Act unfair competition claim is, at its core, the same as Plaintiffs\xe2\x80\x99 copyright\nclaim\xe2\x80\x94that Defendants took Plaintiff Lapine\xe2\x80\x99s ideas and used them in Deceptively\nDelicious without Plaintiffs\xe2\x80\x99 permission and without any attribution as to the source of\nthe ideas and the work.\nPlaintiffs\xe2\x80\x99 Section 43(a) claim is premised on their allegations that Seinfeld\nmisappropriated Lapine\xe2\x80\x99s work in preparing Deceptively Delicious and that, consequently,\nSeinfeld\xe2\x80\x99s statements that Deceptively Delicious is the product of her own work and\nDefendants\xe2\x80\x99 claim of a copyright in that work constitute falsities because they \xe2\x80\x9cassign the\nentire credit for [Deceptively Delicious] and Lapine\xe2\x80\x99s property contained therein, to\nthemselves, and fail to credit Lapine or her Book.\xe2\x80\x9d (Compl.\xc2\xb6\xc2\xb6 73\xe2\x80\x9375.) Plaintiffs assert\nthat the alleged misrepresentations that are likely to cause confusion or deception \xe2\x80\x9cas to\nthe origin of [Deceptively Delicious] and Lapine\xe2\x80\x99s property contained therein.\xe2\x80\x9d (Id. \xc2\xb6 76\n(emphasis supplied).) This is precisely the type of claim that is precluded by Dastar, and\nthe Court finds persuasive those decisions holding that \xe2\x80\x9ca failure to attribute authorship\nto Plaintiff does not amount to misrepresentation of the nature, characteristics, qualities,\nor geographic origin of . . . [Defendant\xe2\x80\x99s] goods.\xe2\x80\x9d Thomas Publishing Company, LLC v.\nTechnology Evaluation Centers, Inc., No. 06 Civ.14212, 2007 WL 2193964, at * 3 (S.D.N.Y.\nJuly 27, 2007) (alteration in original); see also Wellnx Life Sciences Inc. v. Iovate Health\nSciences Research Inc., 516 F.Supp.2d 270, 286 (S.D.N.Y.2007) (\xe2\x80\x9c[A] Lanham Act claim\ncannot be based on false designation of authorship in [Defendant\xe2\x80\x99s] publications.\xe2\x80\x9d);\nAntidote International Films v. Bloomsbury Publishing, PLC, 467 F.Supp.2d 394, 399\xe2\x80\x93400\n(S.D.N.Y.2006) (\xe2\x80\x9cthe holding in Dastar that the word \xe2\x80\x98origin\xe2\x80\x99 in \xc2\xa7 43(a)(1)(A) refers to\nproducers, rather than authors, necessarily implies that the words \xe2\x80\x98nature,\ncharacteristics, [and] qualities\xe2\x80\x99 in \xc2\xa7 43(a)(1)(B) cannot be read to refer to authorship. If\nauthorship were a \xe2\x80\x98characteristic[ ]\xe2\x80\x99 or \xe2\x80\x98qualit[y]\xe2\x80\x99 of a work, then the very claim Dastar\nrejected under \xc2\xa7 43(a)(1)(A) would have been available under \xc2\xa7 43(a)(1)(B)\xe2\x80\x9d (alterations\nin original)). Thus, Plaintiffs\xe2\x80\x99 claims of unfair competition under the Lanham Act are\ndismissed.\nId. at *14-15.\n3. Dastar and products other than \xe2\x80\x9ccommunicative products\xe2\x80\x9d. Courts have similarly held that short\nof the mere \xe2\x80\x9crepackaging\xe2\x80\x9d of another\xe2\x80\x99s products as one\xe2\x80\x99s own, the \xe2\x80\x9corigin of goods\xe2\x80\x9d provision of\nLanham Act \xc2\xa7 43(a) will not prevent the unattributed use of someone else\xe2\x80\x99s products as components in\none\xe2\x80\x99s own products. Consider, for example, Bretford Mfg., Inc. v. Smith System Mfg. Corp., 419 F.3d 576\n(7th Cir. 2005). The plaintiff and defendant were competing table manufacturers. When one of its\nsuppliers failed to produce satisfactory parts, the defendant incorporated some of the plaintiff\xe2\x80\x99s\nhardware in its sample table that it showed to purchasing officials from a school district, who placed an\norder. The tables the defendant ultimately delivered to the school district contained none of the\nplaintiff\xe2\x80\x99s hardware. Judge Easterbrook held for the defendant:\nPassing off or palming off occurs when a firm puts someone else\xe2\x80\x99s trademark on its\nown (usually inferior) goods; reverse passing off or misappropriation is selling someone\nelse\xe2\x80\x99s goods under your own mark. See Roho, Inc. v. Marquis, 902 F.2d 356, 359 (5th Cir.\n457\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n1990). It is not clear what\xe2\x80\x99s wrong with reselling someone else\xe2\x80\x99s goods, if you first buy\nthem at retail. If every automobile sold by DeLorean includes the chassis and engine of a\nPeugeot, with DeLorean supplying only the body shell, Peugeot has received its asking\nprice for each car sold and does not suffer any harm. Still, the Supreme Court said in\nDastar that \xe2\x80\x9creverse passing off\xe2\x80\x9d can violate the Lanham Act if a misdescription of goods\xe2\x80\x99\norigin causes commercial injury. Our opinion in Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d\n986 (7th Cir. 2004), shows how this could occur.\nDastar added that the injury must be a trademark loss\xe2\x80\x94which is to say, it must\ncome from a misrepresentation of the goods\xe2\x80\x99 origin. Dastar thus had the right (so far as\nthe Lanham Act is concerned) to incorporate into its videos footage taken and edited by\nothers, provided that it manufactured the finished product and did not mislead anyone\nabout who should be held responsible for shortcomings. No one makes a product from\nscratch, with trees and iron ore entering one end of the plant and a finished consumer\nproduct emerging at the other. Ford\xe2\x80\x99s cars include Fram oil filters, Goodyear tires,\nOwens-Corning glass, Bose radios, Pennzoil lubricants, and many other constituents;\nbuyers can see some of the other producers\xe2\x80\x99 marks (those on the radio and tires for\nexample) but not others, such as the oil and transmission fluid. Smith System builds\ntables using wood from one supplier, grommets (including Teflon from du Pont) from\nanother, and vinyl molding and paint and bolts from any of a hundred more sources\xe2\x80\x94the\nlist is extensive even for a simple product such as a table. If Smith System does not tell du\nPont how the Teflon is used, and does not inform its consumers which firm supplied the\nwood, has it violated the Lanham Act? Surely not; the statute does not condemn the way\nin which all products are made.\nLegs are a larger fraction of a table\xe2\x80\x99s total value than grommets and screws, but\nnothing in the statute establishes one rule for \xe2\x80\x9cmajor\xe2\x80\x9d components and another for less\ncostly inputs. The right question, Dastar holds, is whether the consumer knows who has\nproduced the finished product. In the Dastar case that was Dastar itself, even though\nmost of the product\xe2\x80\x99s economic value came from elsewhere; just so when Smith System\nincludes components manufactured by others but stands behind the finished product.\nThe portion of \xc2\xa7 43(a) that addresses reverse passing off is the one that condemns false\ndesignations of origin. \xe2\x80\x9cOrigin\xe2\x80\x9d means, Dastar holds, \xe2\x80\x9cthe producer of the tangible\nproduct sold in the marketplace\xe2\x80\x9d. 539 U.S. at 31. As far as Dallas was concerned, the\ntable\xe2\x80\x99s \xe2\x80\x9corigin\xe2\x80\x9d was Smith System, no matter who made any component or subassembly.\nMuch of Bretford\xe2\x80\x99s argument takes the form that it is just \xe2\x80\x9cunfair\xe2\x80\x9d for Smith System\nto proceed as it did, making a sale before its subcontractor could turn out acceptable leg\nassemblies. Businesses often think competition unfair, but federal law encourages\nwholesale copying, the better to drive down prices. Consumers rather than producers are\nthe objects of the law\xe2\x80\x99s solicitude. If Smith System misled Dallas into thinking that it could\nsupply high-quality tables, when its subcontractor could not match Bretford\xe2\x80\x99s welds and\nother attributes of Bretford\xe2\x80\x99s V-shaped leg assemblies, then the victim would be the\nDallas school system. (As far as we are aware, however, Dallas is happy with the quality\nof the tables it received; it has not complained about a bait and switch.) As the Court\nobserved in Dastar, creators of certain artistic works are entitled (along the lines of the\nEuropean approach to moral rights) to control how their work is presented or altered by\nothers. See 539 U.S. at 34-35, citing 17 U.S.C. \xc2\xa7 106A. See also Lee v. A.R.T. Co., 125 F.3d\n580 (7th Cir. 1997). Bretford\xe2\x80\x99s table is not a \xe2\x80\x9cwork of visual art\xe2\x80\x9d under \xc2\xa7 106A (and the\ndefinition in 17 U.S.C. \xc2\xa7 101). Once Bretford sold its goods, it had no control over how\ncustomers used their components: the Lanham Act does not include any version of the\n\xe2\x80\x9cderivative work\xe2\x80\x9d right in copyright law. See 17 U.S.C. \xc2\xa7 106(2).\n458\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nId. at 580-81.\n4. Non-attribution versus misattribution. In Gilliam v. American Broadcasting Companies, Inc., 538\nF.2d 14 (2d Cir. 1976), the plaintiffs were a highly successful British comedy group known as \xe2\x80\x9cMonty\nPython.\xe2\x80\x9d They sought to enjoin the ABC television network from broadcasting edited versions of three\n30-minute Monty Python programs. Though ABC had validly obtained the rights to broadcast the\nprograms, ABC replaced approximately 24 minutes of the total of 90 minutes of Monty Python material\nwith television commercials. Some of ABC\xe2\x80\x99s edits destroyed the comedic content of the work. The\nplaintiffs argued among other things that, in essence, their Monty Python trademark was being placed\non work that should no longer be attributed to them. The Ninth Circuit explained:\n{T}he appellants claim that the editing done for ABC mutilated the original work and that\nconsequently the broadcast of those programs as the creation of Monty Python violated\nthe Lanham Act \xc2\xa7 43(a), 15 U.S.C. \xc2\xa7 1125(a). This statute, the federal counterpart to state\nunfair competition laws, has been invoked to prevent misrepresentations that may injure\nplaintiff\'s business or personal reputation, even where no registered trademark is\nconcerned. It is sufficient to violate the Act that a representation of a product, although\ntechnically true, creates a false impression of the product\'s origin . . . . We find that the\ntruncated version at times omitted the climax of the skits to which appellants\' rare brand\nof humor was leading and at other times deleted essential elements in the schematic\ndevelopment of a story line. We therefore agree with {the district court\xe2\x80\x99s} conclusion that\nthe edited version broadcast by ABC impaired the integrity of appellants\xe2\x80\x99 work and\nrepresented to the public as the product of appellants what was actually a mere\ncaricature of their talents.\nId. at 24-25 (citations and footnotes omitted).1\nIs a claim akin to the plaintiffs\xe2\x80\x99 claim in Gilliam still viable after Dastar? (To be clear, Gilliam was\nnot a reverse passing off case, but what about its facts makes it problematic in light of Dastar?)\n5. Do data or computer software qualify as protectable tangible goods or unprotectable intangible\nideas under Dastar? The answer to this question appears to be highly fact-specific. See, for example,\nLaura Laaman & Assocs., LLC v. Davis, No. 16 Civ. 00594, 2017 U.S. Dist. LEXIS 194175 (D. Conn. Nov.\n27, 2017), in which the court reviewed recent case law:\nThe question of where to draw the line between protected goods and unprotected ideas,\nhowever, has divided courts in the aftermath of Dastar. Compare Cvent, Inc. v. Eventbrite,\nInc., 739 F. Supp. 2d 927, 935-936 (E.D. Va. 2010) (holding that defendant\'s repackaging\nand sale of information stripped from plaintiff\'s computer database provided basis for\ncognizable reverse passing off claim); Experian Marketing Solutions, Inc. v. U.S. Data Corp.,\nNo. 8:09CV24, 2009 U.S. Dist. LEXIS 82075, 2009 WL 2902957, at *10 (D. Neb. Sept. 9,\n2009) (holding that defendant\'s unauthorized acquisition of and sale of plaintiff\'s\nconsumer data files gave rise to viable reverse passing off claim) with Smartix Intern.\nCorp. v. MasterCard Intern. LLC, No. 06 CV 5174 (GBD), 2008 U.S. Dist. LEXIS 108548,\nThe specifics of the injunctive relief granted to the plaintiffs are more complicated. The plaintiffs filed\ntheir complaint on December 15, 1976, seeking to prevent the airing of the episodes eleven days later\non December 26. For various reasons, the district court ordered ABC only to broadcast a disclaimer\nduring the December 26 broadcast stating that the plaintiffs disassociated themselves form the\nprogram because of their editing. By the time it heard the appeal of the case in April, 1977, the Ninth\nCircuit was left to preliminarily enjoin ABC from any further airing of the episodes in their mutilated\nform.\n1\n\n459\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n2008 WL 4444554, at *6-7 (S.D.N.Y. Sept. 30, 2008) (dismissing reverse passing off claim\nalleging defendant had stolen and reproduced plaintiff\'s software); Bob Creeden &\nAssociates, LTD. v. Infosoft, Inc., 326 F. Supp. 2d 876, 879-80 (N.D. Ill. 2004) (dismissing\nreverse passing off claim based on defendant\xe2\x80\x99s purported theft and distribution of\nplaintiff\'s software to its competitors).\nLaura Laaman & Assocs., 2017 U.S. Dist. LEXIS 194175 at *13-14. For a full consideration of the\nproblems that intangible digital goods present for trademark law, see Mark P. McKenna & Lucas\nOsborn, Trademarks and Digital Goods, 92 NOTRE DAME L. REV. 1425 (2017).\n10. Lanham Act \xc2\xa7 2(d) Confusion\nRecall that a registration application at the PTO may be rejected on the basis that the applied-for\nmark will create a likelihood of confusion with an already registered mark. The PTO\xe2\x80\x99s test for\ndetermining whether Lanham Act \xc2\xa7 2(d) bars a registration is essentially the same as the multifactor\ntest for the likelihood of confusion in the federal court litigation context. See B&B Hardware, Inc. v.\nHargis Industries, Inc., 135 S.Ct. 1293 (2015). Excerpted below is the discussion of the \xc2\xa7 2(d) bar in the\nTrademark Manual of Examining Procedure.\nTMEP \xc2\xa7 1207.01 Likelihood of Confusion\n[1] In the ex parte examination of a trademark application, a refusal under \xc2\xa7 2(d) is normally\nbased on the examining attorney\xe2\x80\x99s conclusion that the applicant\xe2\x80\x99s mark, as used on or in connection\nwith the specified goods or services, so resembles a registered mark as to be likely to cause confusion.\nSee TMEP \xc2\xa7 1207.02 concerning application of the \xc2\xa7 2(d) provision relating to marks that so resemble\nanother mark as to be likely to deceive, and TMEP \xc2\xa7 1207.03 concerning \xc2\xa7 2(d) refusals based on\nunregistered marks (which generally are not issued in ex parte examination).\n[2] The examining attorney must conduct a search of USPTO records to determine whether the\napplicant\xe2\x80\x99s mark so resembles any registered mark(s) as to be likely to cause confusion or mistake,\nwhen used on or in connection with the goods or services identified in the application. The examining\nattorney also searches pending applications for conflicting marks with earlier effective filing dates . . . .\nThe examining attorney must place a copy of the search strategy in the record.\n[3] If the examining attorney determines that there is a likelihood of confusion between\napplicant\xe2\x80\x99s mark and a previously registered mark or marks, the examining attorney refuses\nregistration of the applicant\xe2\x80\x99s mark under \xc2\xa7 2(d). Before citing a registration, the examining attorney\nmust check the automated records of the USPTO to confirm that any registration that is the basis for a\n\xc2\xa7 2(d) refusal is an active registration . . . .\n[4] In the seminal case involving \xc2\xa7 2(d), In re E. I. du Pont de Nemours & Co., the U.S. Court of\nCustoms and Patent Appeals discussed the factors relevant to a determination of likelihood of\nconfusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) . . . .\n[5] Although the weight given to the relevant du Pont factors may vary, the following two factors\nare key considerations in any likelihood of confusion determination:\n\xe2\x80\xa2\n\nThe similarity or dissimilarity of the marks in their entireties as to appearance, sound,\nconnotation and commercial impression.\n\n\xe2\x80\xa2\n\nThe relatedness of the goods or services as described in the application and registration(s).\n\nSee, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A.\n1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re Max Capital Grp. Ltd., 93\nUSPQ2d 1243, 1244 (TTAB 2010); In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).\n[6] The following factors may also be relevant in an ex parte likelihood-of-confusion\ndetermination and must be considered if there is pertinent evidence in the record:\n460\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n\xe2\x80\xa2\n\nThe similarity or dissimilarity of established, likely-to-continue trade channels.\n\n\xe2\x80\xa2\n\nThe conditions under which and buyers to whom sales are made, i.e., \xe2\x80\x9cimpulse\xe2\x80\x9d vs. careful,\nsophisticated purchasing (see TMEP \xc2\xa7 1207.01(d)(vii)).\n\n\xe2\x80\xa2\n\nThe number and nature of similar marks in use on similar goods (see TMEP\n\xc2\xa7 1207.01(d)(iii)).\n\n\xe2\x80\xa2\n\nThe existence of a valid consent agreement between the applicant and the owner of the\npreviously registered mark (see TMEP \xc2\xa7 1207.01(d)(viii)).\n\nSee, e.g., du Pont, 476 F.2d at 1362-63, 177 USPQ at 568-69; In re Davey Prods. Pty Ltd., 92 USPQ2d\n1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272-74 (TTAB 2009);\nAss\xe2\x80\x99n of the U.S. Army, 85 USPQ2d at 1271-73.\n[7] As should be clear from the foregoing, there is no mechanical test for determining likelihood of\nconfusion and \xe2\x80\x9ceach case must be decided on its own facts.\xe2\x80\x9d Du Pont, 476 F.2d at 1361, 177 USPQ at\n567. In some cases, a determination that there is no likelihood of confusion may be appropriate, even\nwhere the marks are similar and the goods/services are related, because these factors are outweighed\nby other factors, such as differences in the relevant trade channels of the goods/services, the presence\nin the marketplace of a significant number of similar marks in use on similar goods/services, the\nexistence of a valid consent agreement between the parties, or another established fact probative of\nthe effect of use. For example, in In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), the\nBoard reversed a refusal to register the mark ANYWEAR (in stylized text), for \xe2\x80\x9cfootwear,\xe2\x80\x9d finding no\nlikelihood of confusion with the registered mark ANYWEAR BY JOSIE NATORI (and design), for\n\xe2\x80\x9cjackets, shirts, pants, stretch T-tops and stoles.\xe2\x80\x9d Given the similarity in the marks and the relatedness\nof the goods, the Board stated that \xe2\x80\x9cunder usual circumstances\xe2\x80\x9d it would conclude that confusion is\nlikely to occur; however, an \xe2\x80\x9cunusual situation\xe2\x80\x9d compelled the Board \xe2\x80\x9cto balance the similarities\nbetween the marks and goods against the facts that applicant already owns a registration for a\nsubstantially similar mark for the identical goods, and that applicant\xe2\x80\x99s registration and the cited\nregistration have coexisted for over five years.\xe2\x80\x9d Id. at 1399. Applicant\xe2\x80\x99s prior registration of\nANYWEARS for goods including footwear was substantially similar to the applied-for mark ANYWEAR\nfor the same goods, and the registration had achieved incontestable status. Id. Basing its decision on\nthe thirteenth du Pont factor, which \xe2\x80\x9crelates to \xe2\x80\x98any other established fact probative of the effect of\nuse,\xe2\x80\x99\xe2\x80\x9d the Board determined that this factor outweighed the others and confusion was unlikely. Id. at\n1399-1400 (quoting du Pont, 476 F.2d at 1361, 177 USPQ at 567).\n[8] The decision in Strategic Partners may be applied and weighed against a \xc2\xa7 2(d) refusal in the\nlimited situation where: (1) an applicant owns a prior registration for the same mark or a mark with\nno meaningful difference from the applied-for-mark; (2) the identifications of goods/services in the\napplication and applicant\xe2\x80\x99s prior registration are identical or identical in relevant part; and (3) the\napplicant\xe2\x80\x99s prior registration has co-existed for at least five years with the registration being\nconsidered as the basis for the Section 2(d) refusal. See Id. at 1400.\n[9] The determination of likelihood of confusion under \xc2\xa7 2(d) in an intent-to-use application\nunder \xc2\xa7 1(b) of the Trademark Act does not differ from the determination in any other type of\napplication.\n1207.03 Marks Previously Used in United States but Not Registered\nAs a basis for refusal, \xc2\xa7 2(d) refers not only to registered marks but also to \xe2\x80\x9ca mark or trade name\npreviously used in the United States by another and not abandoned.\xe2\x80\x9d Refusal on the basis of an\nunregistered mark or trade name has sometimes been referred to as refusal on the basis of a \xe2\x80\x9cknown\nmark.\xe2\x80\x9d This provision is not applied in ex parte examination because of the practical difficulties with\nwhich an examining attorney is faced in locating \xe2\x80\x9cpreviously used\xe2\x80\x9d marks, and determining whether\nanyone has rights in them and whether they are \xe2\x80\x9cnot abandoned.\xe2\x80\x9d\n461\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nComments and Questions\n1. Lanham Act \xc2\xa7 2(d) and Unregistered Marks. Note that \xc2\xa7 2(d) not only prohibits the\nregistration of a mark that is confusingly similar with any previously registered mark, but also\nprohibits the registration of a mark that is confusingly similar with an unregistered \xe2\x80\x9cmark or\ntradename previously used in the United States by another and not abandoned.\xe2\x80\x9d Lanham Act \xc2\xa7 2(d), 15\nU.S.C. \xc2\xa7 1052 (d). In practice, \xe2\x80\x9c[t]his provision is not applied in ex parte examination because of the\npractical difficulties with which an examining attorney is faced in locating \xe2\x80\x98previously used\xe2\x80\x99 marks, and\ndetermining whether anyone has rights in them and whether they are \xe2\x80\x98not abandoned.\xe2\x80\x99\xe2\x80\x9d TMEP\n\xc2\xa7 1207.03 (Jan. 2015).\nC.\n\nTrademark Dilution\n\nLanham Act \xc2\xa7 43(c)1 provides protection for trademarks against \xe2\x80\x9cdilution,\xe2\x80\x9d which is probably the\nsingle most muddled concept in all of trademark doctrine. Of the many reasons for this, perhaps the\nmost significant\xe2\x80\x94and avoidable\xe2\x80\x94is that trademark courts and commentators tend to speak of several\ndifferent species of trademark dilution without identifying them any more specifically than by the\ngeneric name \xe2\x80\x9cdilution.\xe2\x80\x9d From the very beginning of your study of dilution, it may be worthwhile to\ndistinguish among three specific species of dilution: (1) dilution of uniqueness, (2) dilution by\n\xe2\x80\x9cblurring,\xe2\x80\x9d and (3) dilution by \xe2\x80\x9ctarnishment.\xe2\x80\x9d Because dilution is so easily misunderstood, each form of\ndilution is briefly discussed below before we turn to the representative case law. Note that, strictly\nspeaking, U.S. trademark law protects against only dilution by blurring and dilution by tarnishment. A\nbrief description of dilution of a trademark\xe2\x80\x99s uniqueness is offered because it is arguably what the\ntrademark practitioner and scholar Frank Schechter had in mind when he first spoke of the concept of\ntrademark dilution in the 1920s.\nDilution of Uniqueness. In his seminal 1927 article The Rational Basis of Trademark Protection,\n40 HARV. L. REV. 813 (1927), Schechter introduced to American law the concept of trademark dilution.\nSchechter used the term \xe2\x80\x9cdilution\xe2\x80\x9d to refer to the impairment of a trademark\xe2\x80\x99s uniqueness, or what\nmodern marketing doctrine would term its \xe2\x80\x9cbrand differentiation.\xe2\x80\x9d2 His primary concern was to\npreserve what he variously termed a mark\xe2\x80\x99s \xe2\x80\x9carresting uniqueness,\xe2\x80\x9d its \xe2\x80\x9csingularity,\xe2\x80\x9d \xe2\x80\x9cidentity,\xe2\x80\x9d and\n\xe2\x80\x9cindividuality,\xe2\x80\x9d its quality of being \xe2\x80\x9cunique and different from other marks.\xe2\x80\x9d Schechter was not so\nmuch concerned with a trademark\xe2\x80\x99s distinctiveness of source, but with a trademark\xe2\x80\x99s distinctiveness\nfrom other marks, not its \xe2\x80\x9csource distinctiveness,\xe2\x80\x9d but its \xe2\x80\x9cdifferential distinctiveness.\xe2\x80\x9d3 In Schechter\xe2\x80\x99s\nview, trademark uniqueness was worth protecting because it generated \xe2\x80\x9cselling power.\xe2\x80\x9d Certain very\nstrong marks were not simply a means of identifying and advertising source. In a new age of mass\nproduction, they were also a means of endowing the goods to which they were attached with the\ncharacteristic of uniqueness as against the crowds of other mass-produced goods in the marketplace, a\ncharacteristic for which consumers would pay a premium.\n\nThe current version of \xc2\xa7 43(c) is sometimes referred to as the Trademark Dilution Revision Act\nor \xe2\x80\x9cTDRA,\xe2\x80\x9d which became effective on October 6, 2006 (and which replaced the old language of \xc2\xa7 43(c)\nthat was established by the Federal Trademark Dilution Act of 1995 or \xe2\x80\x9cFTDA\xe2\x80\x9d).\n1\n\nFor an important alternative reading of Schechter, which asserts that he sought to provide\nantidilution protection only to marks which are \xe2\x80\x9csynonymous with a single product or product class,\xe2\x80\x9d\nsee Sara Stadler Nelson, The Wages of Ubiquity in Trademark Law, 88 IOWA L. REV. 731 (2003).\n2\n\nSee Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. REV. 621 (2004)\n(distinguishing between source distinctiveness, or in semiotic terms, \xe2\x80\x9csignification,\xe2\x80\x9d and differential\ndistinctiveness, or in semiotic terms, \xe2\x80\x9cvalue\xe2\x80\x9d).\n3\n\n462\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nSchechter believed, quite rightly at the time, that antidilution protection was necessary because\nanti-infringement protection, based on consumer confusion as to source, would not fully preserve the\nuniqueness of famous marks. In situations where a defendant used a famous mark on goods unrelated\nto those on which the famous mark normally appeared (e.g., NIKE pianos, ROLLS-ROYCE chewing gum,\nCHANEL waste disposal services), consumers would not likely assume that the defendant\xe2\x80\x99s product had\nthe plaintiff as its source. Thus, no cause of action for consumer confusion as to source would lie.\nThe beauty of Schechter\xe2\x80\x99s original conception of antidilution protection was that it was relatively\neasy to put into practice. Uniqueness is an absolute concept. A mark is either unique or it is not. If a\nsenior mark is unique in the marketplace and a junior mark appears that is identical to it, then the\njunior mark will destroy the senior mark\xe2\x80\x99s uniqueness. Thus, the test for dilution was an essentially\nformal one. The judge need only consider the identity or close similarity of the parties\xe2\x80\x99 marks. If they\nwere identical or closely similar, then the loss of uniqueness could be presumed. See Eli Lilly & Co. v.\nNatural Answers, Inc. 233 F.3d 456, 468-69 (7th Cir. 2000) (considering only similarity of the parties\xe2\x80\x99\nmarks and the \xe2\x80\x9crenown\xe2\x80\x9d of the senior mark in finding a likelihood of dilution); Ringling Bros-Barnum &\nBailey Combined Shows, Inc. v. Utah Division of Travel Development, 170 F.3d 449, 464 (4th Cir. 1999)\n(\xe2\x80\x9c[O]nly mark similarity and, possibly, degree of \xe2\x80\x98renown\xe2\x80\x99 of the senior mark would appear to have\ntrustworthy relevance under the federal Act.\xe2\x80\x9d). Where the consumer confusion test was a messy and\nunpredictable empirical analysis centered on the consumer, the trademark dilution test was a simple\nand relatively predictable analysis centered on the trademark.\nNote that Schechter\xe2\x80\x99s original conception has never been enacted into law, and the language of\nLanham Act \xc2\xa7 43(c) is careful to steer clear of it. Indeed, in the early stages of the drafting of the Act, a\nform of antidilution protection based on \xe2\x80\x9cuniqueness\xe2\x80\x9d was proposed and rejected.4\nDilution by Blurring. The idea underlying the concept of trademark \xe2\x80\x9cblurring\xe2\x80\x9d is that the\ndefendant\xe2\x80\x99s use of a mark similar or identical to the plaintiff\xe2\x80\x99s mark, though perhaps not confusing as\nto source, will nevertheless \xe2\x80\x9cblur\xe2\x80\x9d the link between the plaintiff\xe2\x80\x99s mark and the plaintiff or between the\nplaintiff\xe2\x80\x99s mark and the goods or services to which the plaintiff\xe2\x80\x99s mark is traditionally attached. In\nmodern marketing parlance, anti-blurring protection seeks to preserve a brand\xe2\x80\x99s \xe2\x80\x9ctypicality,\xe2\x80\x9d the\nbrand\xe2\x80\x99s \xe2\x80\x9cability to conjure up a particular product category.\xe2\x80\x9d Alexander F. Simonson, How and When Do\nTrademarks Dilute: A Behavioral Framework to Judge \xe2\x80\x9cLikelihood of Dilution\xe2\x80\x9d, 83 TRADEMARK REP. 149,\n152-53 (1993). In Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002), Judge Posner provided a\nhypothetical example of blurring:\n[T]here is concern that consumer search costs will rise if a trademark becomes\nassociated with a variety of unrelated products. Suppose an upscale restaurant calls itself\n\xe2\x80\x9cTiffany.\xe2\x80\x9d There is little danger that the consuming public will think it\xe2\x80\x99s dealing with a\nbranch of the Tiffany jewelry store if it patronizes this restaurant. But when consumers\nnext see the name \xe2\x80\x9cTiffany\xe2\x80\x9d they may think about both the restaurant and the jewelry\nstore, and if so the efficacy of the name as an identifier of the store will be diminished.\nConsumers will have to think harder\xe2\x80\x94incur as it were a higher imagination cost\xe2\x80\x94to\nrecognize the name as the name of the store. So \xe2\x80\x9cblurring\xe2\x80\x9d is one form of dilution.\nId. at 511 (citations omitted). As Judge Posner\xe2\x80\x99s description suggests, the increase in \xe2\x80\x9cimagination cost\xe2\x80\x9d\nthat blurring is thought to cause forms the basis of the economic rationale underlying antidilution\nSee Trademark Dilution Revision Act of 2005: Hearing Before the Subcomm. on Courts, the\nInternet, and Intellectual Property of the House Judiciary Comm., 109th Cong. 12-13 (2005)\n[hereinafter 2005 Hearing] (statement of Anne Gundelfinger, President, International Trademark\nAssociation). See also id. at 22-23 (testimony of William G. Barber on behalf of the American\nIntellectual Property Law Association).\n4\n\n463\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nprotection. As Judge Posner explained, \xe2\x80\x9c[a] trademark seeks to economize on information costs by\nproviding a compact, memorable and unambiguous identifier of a product or service. The economy is\nless when, because the trademark has other associations, a person seeing it must think for a moment\nbefore recognizing it as the mark of the product or service.\xe2\x80\x9d Richard Posner, When Is Parody Fair Use?,\n21 J. LEGAL STUDIES 67, 75 (1992).5\nThe blurring theory of dilution is highly empirical in orientation. For the judge to find that a junior\nmark \xe2\x80\x9cblurs\xe2\x80\x9d a senior mark, the judge must find that the junior mark is causing consumers to \xe2\x80\x9cthink for\na moment\xe2\x80\x9d before recognizing that the senior mark refers to the goods of the senior mark\xe2\x80\x99s owner.6 A\nmerely formal analysis of the similarity of the marks is insufficient. The judge must evaluate the likely\neffect of the junior mark on the perceptions of actual consumers and must in the process take into\naccount such factors as the degree of distinctiveness\xe2\x80\x94or typicality\xe2\x80\x94of the senior mark. The analysis is\nonce again centered on the consumer.\nThe concept of trademark blurring is controversial. In his treatise, Tom McCarthy memorably\nobserves:\nCommentators almost uniformly contend that dilution by blurring is a purely theoretical\nhypothesis and rarely, if ever, happens in the real world. That is, the argument is that\nimpairment of the distinctiveness of a trademark by blurring is like Bigfoot, the\nHimalayan Yeti or the Loch Ness Monster: a theoretical construct never proven to exist\nby incontrovertible evidence.\nMCCARTHY, \xc2\xa7 24:15. For example, Christine Haight Farley defies proponents of the blurring theory to\nprovide even one concrete (and not hypothetical) example of a famous mark that has been significantly\ndamaged through blurring. See Christine Haight Farley, Why We Are Confused about the Trademark\nDilution Law, 16 FORDHAM INTELL. PROP. MEDIA & ENTER. L. J. 1175, 1184-85 (2006). Yet as we will see,\ncourts continue to rule in favor of blurring plaintiffs, particularly when the defendant has acted in clear\nbad faith.\nDilution by Tarnishment. Dilution by tarnishment is fundamentally different from dilution by\nblurring (and arguably has nothing to do with \xe2\x80\x9cdilution\xe2\x80\x9d as Schechter originally formulated the\nconcept). Tarnishment describes damage to the positive associations or connotations of a trademark.\nSee Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994) (\xe2\x80\x9c\xe2\x80\x98Tarnishment\xe2\x80\x99 generally arises when\nthe plaintiff\xe2\x80\x99s trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or\nunsavory context likely to evoke unflattering thoughts about the owner\xe2\x80\x99s product[s].\xe2\x80\x9d). In, for example,\nNew York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550 (2d Cir. 2002), a Las\n\nThe Restatement (Third) of Unfair Competition provides an alternative account of dilution by\nblurring, one that the student may find more persuasive:\n5\n\n[A] mark may be so highly distinctive and so well advertised that it acts as a powerful\nselling tool. Such a mark may evoke among prospective purchasers a positive response\nthat is associated exclusively with the goods or services of the trademark owner. To the\nextent that others use the trademark to identify different goods, services, or businesses, a\ndissonance occurs that blurs this stimulant effect of the mark. The antidilution statutes\nprotect against this dilution of the distinctiveness and selling power of the mark.\nRESTATEMENT (THIRD) OF UNFAIR COMPETITION \xc2\xa7 25 (1995). However, Judge Posner\xe2\x80\x99s \xe2\x80\x9cimagination cost\xe2\x80\x9d\naccount of blurring has proven to be far more influential in the courts and commentary, for better or\nworse.\nFor a strong critique of this conception of blurring, see Rebecca Tushnet, Gone in 60 Milliseconds:\nTrademark Law and Cognitive Science, 86 TEXAS L. REV. 507 (2008).\n6\n\n464\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nVegas casino called its players club the \xe2\x80\x9cNew York $lot Exchange.\xe2\x80\x9d Owners of the NEW YORK STOCK\nEXCHANGE trademark took offense at the suggestion that their stock exchange was in some sense a\nvenue for gambling, if not also for stacked odds, and sued. The district court granted summary\njudgment to the casino. New York Stock Exch., Inc. v. New York, New York Hotel, LLC, 69 F. Supp. 2d 479,\n482 (S.D.N.Y. 1999). On appeal, the Second Circuit reversed and remanded on certain of the dilution\nclaims. Among other things it found, with respect to the plaintiff\xe2\x80\x99s New York state law tarnishment\nclaim, that \xe2\x80\x9c[a] reasonable trier of fact might . . . find that the Casino\xe2\x80\x99s humorous analogy would injure\nNYSE\xe2\x80\x99s reputation.\xe2\x80\x9d New York Stock Exch., Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 558 (2d\nCir. 2002) (analyzing the issue under New York state anti-tarnishment law).\nThe Difference Between Trademark Confusion and Trademark Dilution. In principle,\ntrademark confusion and trademark dilution are starkly different. When a consumer experiences\ntrademark confusion, the similarity of the plaintiff\xe2\x80\x99s and the defendant\xe2\x80\x99s marks leads the consumer to\nbelieve that both the plaintiff\xe2\x80\x99s and the defendant\xe2\x80\x99s products are coming from the same company. The\nconsumer believes that one company is the source of both parties\xe2\x80\x99 marks and products. By contrast,\nwhen a consumer experiences dilution, the similarity between the parties\xe2\x80\x99 marks leads the consumer\nto associate the two marks with each other, but the consumer does not believe that they are coming\nfrom the same company. She knows that there are two different companies. (e.g., FOUR SEASONS HOTELS\nAND RESORTS and FOUR SEASONS TOTAL LANDSCAPING). The harm in dilution by blurring is that whenever\nthe consumer sees either the plaintiff\xe2\x80\x99s or the defendant\xe2\x80\x99s mark, she is compelled to think for a\nmoment to determine to which of those two different companies the mark is referring. The harm in\ndilution by tarnishment is that any negative connotations of one of the marks may damage by\nassociation the reputation of the other mark, even when the consumer knows that the two companies\nare unrelated. Though trademark confusion and trademark dilution are different, a population of\nrelevant consumers may contain some consumers who are confused as to source and some other\nconsumers (perhaps the more sophisticated in the population) who are not confused as to source but\nrather experience dilution. See MCCARTHY \xc2\xa7 24:72 (\xe2\x80\x9cA given unauthorized use by defendant can cause\nconfusion in some people\xe2\x80\x99s minds and in other people\xe2\x80\x99s minds cause dilution by blurring, but in no one\nperson\xe2\x80\x99s mind can both perceptions occur at the same time.\xe2\x80\x9d).\nThough distinct in theory, the processes of trademark confusion and trademark dilution are\nsometimes treated as interchangeable by careless lawyers and courts. This can be frustrating. See\nMCCARTHY \xc2\xa7 24:72.\nThe Elements of a Dilution Claim. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507\nF.3d 252 (4th Cir. 2007), the Fourth Circuit set forth the main elements of a claim for dilution by\nblurring or dilution by tarnishment. The plaintiff must show:\n(1) that the plaintiff owns a famous mark that is distinctive;\n(2) that the defendant has commenced using a mark in commerce that allegedly is\ndiluting the famous mark;\n(3) that a similarity between the defendant\xe2\x80\x99s mark and the famous mark gives rise to an\nassociation between the marks; and\n(4) that the association is likely to impair the distinctiveness of the famous mark or likely\nto harm the reputation of the famous mark.\nId. at 264-65. Not made explicit in this listing of the elements is the important detail that the plaintiff\xe2\x80\x99s\nmark must have become famous before the defendant began use of its allegedly diluting mark. See\nLanham Act \xc2\xa7 43(c)(1), 15 U.S.C. \xc2\xa7 1125(c)(1) (\xe2\x80\x9cat any time after the owner\xe2\x80\x99s mark has become\nfamous\xe2\x80\x9d).\n\n465\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nIn light of the above, the statutory language of \xc2\xa7 43(c) excerpted below will reward a close\nreading. We then turn first, in section II.C.1, to the fame requirement for antidilution protection and\nthen, in section II.C.2, to anti-blurring protection and, in section II.C.3, to anti-tarnishment protection.7\nLanham Act \xc2\xa7 43(c), 15 U.S.C. \xc2\xa7 1125(c)\n(c) Dilution by blurring; dilution by tarnishment\n(1) Injunctive relief. Subject to the principles of equity, the owner of a famous mark that\nis distinctive, inherently or through acquired distinctiveness, shall be entitled to an\ninjunction against another person who, at any time after the owner\xe2\x80\x99s mark has become\nfamous, commences use of a mark or trade name in commerce that is likely to cause\ndilution by blurring or dilution by tarnishment of the famous mark, regardless of the\npresence or absence of actual or likely confusion, of competition, or of actual economic\ninjury.\n(2) Definitions\n(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by\nthe general consuming public of the United States as a designation of source of the\ngoods or services of the mark\xe2\x80\x99s owner. In determining whether a mark possesses\nthe requisite degree of recognition, the court may consider all relevant factors,\nincluding the following:\n(i) The duration, extent, and geographic reach of advertising and publicity of\nthe mark, whether advertised or publicized by the owner or third parties.\n(ii) The amount, volume, and geographic extent of sales of goods or services\noffered under the mark.\n(iii) The extent of actual recognition of the mark.\n(iv) Whether the mark was registered under the Act of March 3, 1881, or the\nAct of February 20, 1905, or on the principal register.\n(B) For purposes of paragraph (1), \xe2\x80\x9cdilution by blurring\xe2\x80\x9d is association arising\nfrom the similarity between a mark or trade name and a famous mark that impairs\nthe distinctiveness of the famous mark. In determining whether a mark or trade\nname is likely to cause dilution by blurring, the court may consider all relevant\nfactors, including the following:\n(i) The degree of similarity between the mark or trade name and the famous\nmark.\n(ii) The degree of inherent or acquired distinctiveness of the famous mark.\n(iii) The extent to which the owner of the famous mark is engaging in\nsubstantially exclusive use of the mark.\n(iv) The degree of recognition of the famous mark.\n(v) Whether the user of the mark or trade name intended to create an\nassociation with the famous mark.\n(vi) Any actual association between the mark or trade name and the famous\nmark.\nThe student wishing to avoid madness may do well to avoid the term \xe2\x80\x9cdilution\xe2\x80\x9d altogether and\nsimply refer to these two forms of protection as \xe2\x80\x9canti-blurring protection\xe2\x80\x9d and \xe2\x80\x9canti-tarnishment\xe2\x80\x9d\nprotection.\n7\n\n466\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n(C) For purposes of paragraph (1), \xe2\x80\x9cdilution by tarnishment\xe2\x80\x9d is association arising\nfrom the similarity between a mark or trade name and a famous mark that harms\nthe reputation of the famous mark.\n(3) Exclusions. The following shall not be actionable as dilution by blurring or dilution\nby tarnishment under this subsection:\n(A) Any fair use, including a nominative or descriptive fair use, or facilitation of\nsuch fair use, of a famous mark by another person other than as a designation of\nsource for the person\xe2\x80\x99s own goods or services, including use in connection with\xe2\x80\x94\n(i) advertising or promotion that permits consumers to compare goods or\nservices; or\n(ii) identifying and parodying, criticizing, or commenting upon the famous\nmark owner or the goods or services of the famous mark owner.\n(B) All forms of news reporting and news commentary.\n(C) Any noncommercial use of a mark.\n....\n1.\n\nThe Fame Requirement for Antidilution Protection\n\nTo qualify for federal anti-blurring and anti-tarnishment protection under \xc2\xa7 43(c), a mark must\nbe \xe2\x80\x9cwidely recognized by the general consuming public of the United States as a designation of source\nof the goods or services of the mark\xe2\x80\x99s owner.\xe2\x80\x9d Lanham Act \xc2\xa7 43(c)(2)(A), 15 U.S.C. \xc2\xa7 1125(c)(2)(A).\nFurthermore, the mark must have become famous before the defendant began its allegedly diluting\nuse. Lanham Act \xc2\xa7 43(c)(1), 15 U.S.C. \xc2\xa7 1125(c)(1). Among the marks that have failed to meet the fame\nrequirement are the \xe2\x80\x9clonghorn\xe2\x80\x9d logo of the University of Texas, Board of Regents v. KST Elec., Ltd., 550\nF. Supp. 2d 657, 678 (W.D. Tex. 2008), and the red dripping wax seal of the Maker\xe2\x80\x99s Mark whiskey\nbottle, Maker\xe2\x80\x99s Mark Distillery, Inc. v. Diageo North America, Inc., 703 F. Supp. 2d 671, 698 (W.D. Ky.\n2010) (\xe2\x80\x9cCongress intended for dilution to apply only to a small category of extremely strong marks.\xe2\x80\x9d).\nAmong the marks that have met the fame requirement are JUST DO IT, CHANEL, AUDI, and AMERICA\xe2\x80\x99S TEAM.\nSee respectively Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 U.S.P.Q.2d 1018, 1027 (T.T.A.B.\n2011); Chanel, Inc. v. Makarczyk, 110 U.S.P.Q.2d 2013 (T.T.A.B. 2014); Audi AG v. Shokan Coachworks,\nInc., 592 F. Supp. 2d 246, 280 (N.D. N.Y. 2008); Dallas Cowboys Football Club, Ltd. v. America\xe2\x80\x99s Team\nProperties, Inc., 616 F. Supp. 2d 622 (N.D. Tex. 2009).\nIn the opinion excerpt that follows, the Federal Circuit considered the fame of the mark COACH.\nCoach Services, Inc. (\xe2\x80\x9cCSI\xe2\x80\x9d), the proprietor of COACH leather goods stores opposed Triumph Learning,\nLLC\xe2\x80\x99s application to register the mark COACH for educational materials used to prepare students for\nstandardized tests. (Does CSI\xe2\x80\x99s opposition strike you as a reasonable assertion of CSI\xe2\x80\x99s rights in their\nCOACH mark?) In affirming the TTAB\xe2\x80\x99s finding of no likelihood of confusion or dilution, the Federal\nCircuit found that CSI had failed to establish that its mark was \xe2\x80\x9cwidely recognized by the general\nconsuming public of the United States\xe2\x80\x9d at the time that Triumph Learning adopted its mark. Triumph\nfiled its applications to register the COACH word mark, a stylized COACH mark, and a COACH mark and\ndesign (shown below) in December 2004. The applications were published for opposition on\nSeptember 20, 2005.\n\n467\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n\nCoach Servs., Inc. v. Triumph Learning LLC\n668 F.3d 1356 (Fed. Cir. 2012)\nO\xe2\x80\x99MALLEY, Circuit Judge.\n....\nC. Dilution\n1. Fame for Dilution\n[1] A threshold question in a federal dilution claim is whether the mark at issue is \xe2\x80\x9cfamous.\xe2\x80\x9d\nUnder the TDRA, a mark is famous if it \xe2\x80\x9cis widely recognized by the general consuming public of the\nUnited States as a designation of source of the goods or services of the mark\xe2\x80\x99s owner.\xe2\x80\x9d 15 U.S.C.\n\xc2\xa7 1125(c)(2)(A). By using the \xe2\x80\x9cgeneral consuming public\xe2\x80\x9d as the benchmark, the TDRA eliminated the\npossibility of \xe2\x80\x9cniche fame,\xe2\x80\x9d which some courts had recognized under the previous version of the\nstatute. See Top Tobacco, LP v. N. Atl. Operating Co., 509 F.3d 380, 384 (7th Cir. 2007) (noting that the\nreference to the general public \xe2\x80\x9celiminated any possibility of \xe2\x80\x98niche fame,\xe2\x80\x99 which some courts had\nrecognized before the amendment\xe2\x80\x9d). The TDRA lists four non-exclusive factors for courts to consider\nwhen determining whether a mark is famous . . . . Whether a mark is famous under the TDRA is a\nfactual question reviewed for substantial evidence.\n....\n[2] It is well-established that dilution fame is difficult to prove . . . . This is particularly true where,\nas here, the mark is a common English word that has different meanings in different contexts.\nImportantly, the owner of the allegedly famous mark must show that its mark became famous \xe2\x80\x9cprior to\nthe filing date of the trademark application or registration against which it intends to file an opposition\nor cancellation proceeding.\xe2\x80\x9d See Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164, 1174 (T.T.A.B.2001).\n[3] As noted, fame for dilution requires widespread recognition by the general public. 15 U.S.C.\n\xc2\xa7 1125(c)(2)(A). To establish the requisite level of fame, the \xe2\x80\x9cmark\xe2\x80\x99s owner must demonstrate that the\ncommon or proper noun uses of the term and third-party uses of the mark are now eclipsed by the\nowner\xe2\x80\x99s use of the mark.\xe2\x80\x9d Toro, 61 U.S.P.Q.2d at 1180. An opposer must show that, when the general\npublic encounters the mark \xe2\x80\x9cin almost any context, it associates the term, at least initially, with the\nmark\xe2\x80\x99s owner.\xe2\x80\x9d Id. at 1181. In other words, a famous mark is one that has become a \xe2\x80\x9chousehold name.\xe2\x80\x9d\nNissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1012 (9th Cir. 2004) (quoting Thane Int\xe2\x80\x99l,\nInc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002)). With this framework in mind, we turn to\nCSI\xe2\x80\x99s evidence of fame.\n2. CSI Failed to Introduce Sufficient Evidence of Fame for Dilution\n[4] The Board found that CSI\xe2\x80\x99s evidence of fame was insufficient to support a dilution claim. On\nappeal, CSI argues that the same evidence establishing fame for likelihood of confusion also establishes\nfame for dilution purposes. Specifically, CSI argues that the Board disregarded: (1) sales and\nadvertising figures for years 2000\xe2\x80\x932008; (2) its sixteen federal trademark registrations; (3)\nunsolicited media attention; (4) joint marketing efforts; (5) two Second Circuit decisions finding the\n468\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nCoach hangtag, which features the COACH mark, to be famous; and (6) CSI\xe2\x80\x99s internal brand awareness\nsurvey showing awareness among 18\xe2\x80\x9324 year old consumers. We address each category of evidence in\nturn. For the reasons set forth below, we find substantial evidence supporting the Board\xe2\x80\x99s decision that\nCSI failed to show the requisite level of fame for dilution.\n[5] Turning first to CSI\xe2\x80\x99s evidence of sales and advertising expenditures, CSI argues that the Board\nerred when it ignored the annual reports that were attached to a Notice of Reliance. As previously\ndiscussed, however, the Board correctly held that these reports were unauthenticated and thus\ninadmissible. The only sales and advertising figures in the record via Ms. Sadler\xe2\x80\x99s testimony were for\none year\xe2\x80\x942008\xe2\x80\x94which, notably, is after Triumph filed its use-based applications in December 2004.\nWe agree with the Board that this limited evidence of sales and advertising is insufficient to show\nfame. Even if the Board had considered the annual reports, moreover, such evidence, standing alone,\nwould be insufficient. See Toro, 61 U.S.P.Q.2d at 1181 (\xe2\x80\x9cMerely providing evidence that a mark is a topselling brand is insufficient to show this general fame without evidence of how many persons are\npurchasers.\xe2\x80\x9d).\n[6] With respect to CSI\xe2\x80\x99s registrations, the Board found that the mere existence of federally\nregistered trademarks is insufficient to show that the mark is famous for purposes of dilution because\nownership of a registration is not proof of fame. On appeal, CSI argues that the Board erred in this\ndetermination because one of the statutory factors a court can consider in the fame analysis is whether\nthe mark is registered on the principal register. See 15 U.S.C. \xc2\xa7 1125(c)(2)(A)(iv). As Triumph points\nout, however, \xe2\x80\x9c[o]ne cannot logically infer fame from the fact that a mark is one of the millions on the\nFederal Register.\xe2\x80\x9d 4 McCarthy, \xc2\xa7 24:106 at 24\xe2\x80\x93310. While ownership of a trademark registration is\nrelevant to the fame inquiry, and\xe2\x80\x94to the extent the Board decision implies otherwise\xe2\x80\x94the Board\nerred on this point, proof of registration is not conclusive evidence of fame.\n[7] With respect to media attention, the Board found that CSI\xe2\x80\x99s evidence fell short of showing\n\xe2\x80\x9cwidespread recognition of opposer\xe2\x80\x99s mark [by] the general population.\xe2\x80\x9d Board Decision, 96 U.S.P.Q.2d\nat 1611. Specifically, the Board found that:\nthe vast majority of unsolicited media recognition for opposer\xe2\x80\x99s COACH mark comprises\na reference to one of opposer\xe2\x80\x99s products as one of many different fashion buys or trends,\nand the news articles noting opposer\xe2\x80\x99s renown are too few to support a finding that\nopposer\xe2\x80\x99s mark has been transformed into a household name.\nId. On appeal, CSI argues that the Board ignored hundreds of unsolicited articles mentioning the\nCOACH mark over the years. CSI points to several examples, including the following:\n\xe2\x80\xa2 \xe2\x80\x9cIn fact, Coach\xe2\x80\x99s growth . . . has been phenomenal. When Sara Lee acquired the firm in\n1985, its volume was about $18 million. In Sara Lee\xe2\x80\x99s latest fiscal year, which ended last\nJune 30, Coach\xe2\x80\x99s sales exceeded $500 million. The name also resonates with consumers.\nThe brand ranked eighth among the top 10 in accessories firms in the latest Fairchild 100\nconsumer survey of fashion labels, in 1995.\xe2\x80\x9d J.A. 3607 (Women\xe2\x80\x99s Wear Daily, May 5,\n1997).\n\xe2\x80\xa2 \xe2\x80\x9cCoach, one of the top makers of status handbags in the United States . . .\xe2\x80\x9d J.A. 3598 (The\nNew York Times, Jan. 27, 1999).\n\xe2\x80\xa2 \xe2\x80\x9cCoach\xe2\x80\x99s creative director has helped transform the 60\xe2\x80\x93year old company into a musthave American icon.\xe2\x80\x9d J.A. 3156 (Women\xe2\x80\x99s Wear Daily, June 2001).\n\xe2\x80\xa2 \xe2\x80\x9cWill Coach Become Too Popular? . . . Coach, the maker and retailer of stylish handbags,\njust had a blowout season . . . . Clearly Coach has recorded some of the best growth\nnumbers of any retailer or accessories maker in recent years.\xe2\x80\x9d J.A. 3543 (Business Week,\nJan. 24, 2007).\n[8] Looking at the media attention in the record, there is certainly evidence that CSI\xe2\x80\x99s COACH\nmark has achieved a substantial degree of recognition. That said, many of the articles submitted are\n469\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\ndated after Triumph filed its registration applications and thus do not show that CSI\xe2\x80\x99s mark was\nfamous prior to the filing date. See Toro, 61 U.S.P.Q.2d at 1174 (\xe2\x80\x9can owner of an allegedly famous mark\nmust establish that its mark had become famous prior to the filing date of the trademark application\xe2\x80\x9d\nwhich it opposes). And, there is substantial evidence supporting the Board\xe2\x80\x99s determination that many\nof the references are limited to mentioning one of CSI\xe2\x80\x99s COACH products among other brands.\nAccordingly, even though there is some evidence of media attention, substantial evidence supports the\nBoard\xe2\x80\x99s conclusion that the media evidence submitted fails to show widespread recognition.\n[9] With respect to joint marketing efforts, CSI argued that other popular brands, including LEXUS\nand CANON, have used the COACH mark in connection with their products. The Board found that CSI\n\xe2\x80\x9cfailed to provide any testimony regarding the success of the joint marketing efforts and the effect of\nthose efforts in promoting opposer\xe2\x80\x99s mark.\xe2\x80\x9d Board Decision, 96 U.S.P.Q.2d at 1611, n. 37. We agree.\nWithout evidence as to the success of these efforts or the terms of any contracts involved, they have\nlittle value here.\n[10] Next, the Board found that CSI\xe2\x80\x99s 2008 brand awareness study was \xe2\x80\x9cof dubious probative\nvalue\xe2\x80\x9d because it did not offer a witness with first-hand knowledge of the study to explain how it was\nconducted. Id. at 1611. The Board further noted that, although the study showed a high level of brand\nawareness among women ages 13\xe2\x80\x9324, it provided no evidence of brand awareness among women\ngenerally, or among men. See Top Tobacco, 509 F.3d at 384 (noting that the TDRA eliminated the\npossibility of \xe2\x80\x9cniche fame\xe2\x80\x9d as a basis for finding a mark famous). And, the survey was conducted in\n2007, several years after Triumph filed its applications. Given these circumstances, we find no error in\nthe Board\xe2\x80\x99s decision to give this survey limited weight.\n[11] CSI also argues that the Board failed to adequately consider two Second Circuit decisions\nfinding that the hangtag attached to its various handbags, which features the COACH mark, is\ndistinctive. See Coach Leatherware Co., Inc. v. AnnTaylor, Inc., 933 F.2d 162, 166 (2d Cir. 1991) (finding\nthat Coach\xe2\x80\x99s lozenge-shaped leather tags embossed with the name \xe2\x80\x9cCoach Leatherware,\xe2\x80\x9d which are\nattached to Coach\xe2\x80\x99s handbags by beaded brass chains, \xe2\x80\x9chave become distinctive and valuable through\nCoach\xe2\x80\x99s promotional efforts and by virtue of its upscale reputation\xe2\x80\x9d); see also Coach, Inc. v. We Care\nTrading Co., Inc., 67 Fed.Appx. 626, 630 (2d Cir. 2002) (affirming the jury\xe2\x80\x99s dilution verdict on grounds\nthat \xe2\x80\x9cthe jury\xe2\x80\x99s determination that the hang tag was famous and distinctive was not unreasonable\xe2\x80\x9d and\n\xe2\x80\x9cthe substantial similarity of the two marks here coupled with the use of Coach\xe2\x80\x99s very distinctive hang\ntag shape amply justified the jury\xe2\x80\x99s verdict\xe2\x80\x9d). Although the Board did not specifically address these\ncases, we agree with Triumph that they are unrelated and irrelevant, particularly because: (1) the\n1991 case did not involve a dilution claim; and (2) both cases focus on the hangtag feature on CSI\xe2\x80\x99s\nhandbags, not on the alleged fame of the COACH mark generally.\n[12] Based on the foregoing, we agree with the Board that CSI failed to provide sufficient evidence\nof fame for dilution purposes. Absent a showing of fame, CSI\xe2\x80\x99s dilution claim fails, and we need not\naddress the remaining statutory factors for dilution by blurring.\n[13] Before moving on, we pause to emphasize the fact-specific nature of our holding today. While\nthe burden to show fame in the dilution context is high\xe2\x80\x94and higher than that for likelihood of\nconfusion purposes\xe2\x80\x94it is not insurmountable. We do not hold that CSI could never establish the\nrequisite level of fame for dilution purposes. We hold only that, on the record presented to it, the Board\nhad substantial support for its conclusion that CSI\xe2\x80\x99s evidentiary showing was just too weak to do so\nhere.\nComments and Questions\n1. The Importance of the Timing of Fame Evidence. Courts appear to be applying quite strictly\nthe requirement that the plaintiff show fame before defendant began use. Consider the case of Inter\nIKEA Systems B.V. v. Akea, LLC, 110 U.S.P.Q.2d 1734 (TTAB 2014). In June 2009, Akea filed an intent-touse application for the mark AKEA for nutritional supplements in international class 5, retail services in\n470\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nclass 35, and advice and information services relating to diet in class 44. Ikea opposed under \xc2\xa7 2(d),\nclaiming likelihood of confusion, and under \xc2\xa7 13 and \xc2\xa7 43(c), claiming likelihood of dilution. Almost all\nof Ikea\xe2\x80\x99s evidence of fame was dated after June 2009. \xe2\x80\x9cFor example, opposer\xe2\x80\x99s evidence that the IKEA\nbrand was ranked No. 28 on the Business Week/Interbrand 2012 list of the Top 100 Brands\nworldwide, with an estimated brand value of $12,808,000,000 is subsequent to the filing date of\napplicant\xe2\x80\x99s application and, therefore, is not relevant.\xe2\x80\x9d Id. at 1745. Ikea\xe2\x80\x99s dilution claim therefore\nfailed. What result? Akea\xe2\x80\x99s registration was refused in class 35 for retail services where the TTAB\nfound a likelihood of confusion, but allowed in classes 5 and 44, for nutritional supplements and for\ninformation services relating to diet respectively, where the TTAB found no likelihood of confusion\n(but might very well have found a likelihood of dilution had Ikea\xe2\x80\x99s lawyers submitted, for example,\nevidence that in 2008, Interbrand ranked Ikea as the 35th most valuable brand in the world worth\n$10.9 billion).\n2. Fame Surveys. What level of fame must a mark be shown to have achieved in survey evidence to\nqualify for federal antidilution protection? Consider McCarthy\xe2\x80\x99s proposal, which he provides in an\n\xe2\x80\x9cAuthor\xe2\x80\x99s Opinion\xe2\x80\x9d section of his treatise:\nI think that the extraordinary scope of the federal antidilution law requires proof of a\nrelatively high level of recognition . . . . I believe that a minimum threshold survey\nresponse should be in the range of 75% of the general consuming public of the United\nStates. I do not propose that a mark that obtained such a reading on a survey would\nautomatically qualify as \xe2\x80\x9cfamous\xe2\x80\x9d: surveys are not indisputably accurate measures of\npublic perception. It is no secret that survey percentages can vary widely depending on\nwhich group of people are asked questions phrased in various ways. My 75% proposal\nassumes that the fact finder is satisfied that the data reasonably reflects actual public\nperception of the entire general consuming public of the United States.\nMCCARTHY \xc2\xa7 24:106 (cited in T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 931 (S.D. Tex.\n2014)). What would be the appropriate question to ask survey respondents?\n3. Mark Fame and Unauthorized Parodic Uses of a Mark. When sending cease and desist letters\nagainst unauthorized expressive users of their marks (such as parodists or appropriationist artists),\ntrademark owners frequently assert that the law requires them to enforce their exclusive rights or\nthey will lose those rights. Owners resort to this reasoning to defend often dubious and overreaching\nthreat letters. In an effort to align owners\xe2\x80\x99 incentives with free speech, Mark Lemley has proposed that\n\xe2\x80\x9c[c]ourts should consider the existence, number, and prominence of unauthorized parodies, satires, or\nother expressive and referential uses of a mark directed at the general public as evidence tending to\nshow that the mark is famous for both dilution and likelihood of confusion purposes, and the absence\nof such uses as tending to show that the mark is not famous and not as strong . . . . My proposal should\nencourage trademark lawyers to advise their clients to let such uses be. Trademark owners don\xe2\x80\x99t need\nto police expressive uses even today, and my approach would give them a reason not to.\xe2\x80\x9d Mark A.\nLemley, Fame, Parody, and Policing in Trademark Law, 2019 MICH. ST. L. REV. 1 (2019). Does this strike\nyou as a salutary doctrinal innovation? Are courts likely to adopt it?\n4. State Antidilution Law as an Alternative for Marks That Are Not Nationally Famous. As the table\nbelow indicates, 36 states provides state statutory antidilution protection. See GILSON \xc2\xa7 5A.02.\nImportantly, none of these states require that the mark be nationally famous to qualify for state\nantidilution protection. Some, such as Connecticut, Illinois, Minnesota, and New Jersey, provide\nprotection only to a \xe2\x80\x9cmark which is famous in this state.\xe2\x80\x9d See, e.g., 765 Ill. Comp. Stat. 1036/65. Other\nstate statutes, such as New York\xe2\x80\x99s, have been interpreted to require that the mark is \xe2\x80\x9ctruly distinctive\xe2\x80\x9d\nto qualify for state antidilution protection. See Allied Maint. Corp. v. Allied Mech. Trades, Inc., 42 N.Y.2d\n538, 546 (1977). See also Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 625 (2d Cir. 1983) (\xe2\x80\x9cIn Allied\nthe majority indicated that the anti-dilution statute protects only extremely strong marks.\xe2\x80\x9d); Moore\nBus. Forms, Inc. v. Rite Aid Corp., No. 90 Civ.1211E, 1991 U.S. Dist. LEXIS 18599, at *25 (W.D.N.Y. Dec. 6,\n471\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n1991) (\xe2\x80\x9cAllied Maintenance requires that only truly distinctive marks be afforded the protection of\nNew York\'s anti-dilution statute.\xe2\x80\x9d). A limitation of state antidilution protection, however, is that in\ncertain instances injunctive relief may be limited only to the state covered by the statute or even to a\npart of that state. See MCCARTHY \xc2\xa7 24.82.\n\n2.\n\nDilution by Blurring\n\nThe following opinion, Nike, Inc. v. Nikepal Intern., Inc., 84 U.S.P.Q.2d 1820 (N.D. Cal. 2007), was\none of the first opinions thoroughly to analyze a claim of dilution by blurring under the new \xc2\xa7 43(c)\nestablished by the TDRA. In reading Nikepal, consider the following questions;\n\xe2\x80\xa2\n\nWhat is the nature of the harm to the NIKE mark? Is it reasonable to argue that Nikepal\xe2\x80\x99s use\nof the NIKEPAL mark could harm in any significant way a mark as strong as NIKE?\n\n\xe2\x80\xa2\n\nDoes the survey method described in the opinion strike you as valid?\n\n\xe2\x80\xa2\n\nThough the opinion never addresses the likelihood of consumer confusion as to source, do\nyou think some consumers might be confused as to source by the NIKEPAL mark? Could Nike\nhave prevailed on a simple likelihood of confusion claim?\n\nNike, Inc. v. Nikepal Intern., Inc.\n84 U.S.P.Q.2d 1820 (N.D. Cal. 2007)\nGARLAND E. BURRELL, JR., United States District Judge.\n[1] The following findings of fact and conclusions of law issue as a result of a bench trial\nconducted in this trademark action. Plaintiff Nike, Inc. (\xe2\x80\x9cNike\xe2\x80\x9d), a company headquartered in\nBeaverton, Oregon which uses the mark NIKE, contests the use of the mark NIKEPAL by Defendant\nNikepal International, Inc. (\xe2\x80\x9cNikepal\xe2\x80\x9d), a company located in Sacramento, California. Nike initially\ncontested Nikepal\xe2\x80\x99s registration of the NIKEPAL mark at the Trademark Trial and Appeal Board\n(\xe2\x80\x9cTTAB\xe2\x80\x9d) of the United States Patent and Trademark Office (\xe2\x80\x9cPTO\xe2\x80\x9d); however, the TTAB denied Nike\xe2\x80\x99s\nopposition to Nikepal\xe2\x80\x99s registration of the NIKEPAL mark. Nike subsequently appealed the TTAB\xe2\x80\x99s\nruling to this court under 15 U.S.C. \xc2\xa7 1071 and brought additional claims for federal and state\ntrademark dilution under 15 U.S.C. \xc2\xa7 1125(c) and California Business and Professions Code section\n\n472\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\n14330; for trademark infringement under 15 U.S.C. \xc2\xa7 1114; and for unfair competition under 15 U.S.C.\n\xc2\xa7 1125(a).2\n[2] Nike seeks an injunction preventing Nikepal from using the term \xe2\x80\x9cNike\xe2\x80\x9d (or any term\nconfusingly similar thereto) alone or as part of any trademark, domain name or business name under\nwhich Nikepal offers goods or services in commerce. Nike also seeks a reversal of the TTAB\xe2\x80\x99s ruling\nallowing Nikepal to register the NIKEPAL mark. Nikepal seeks an affirmation of the TTAB\xe2\x80\x99s April 21,\n2005 order. (TTAB\xe2\x80\x99s April 21, 2005 Order (\xe2\x80\x9cTTAB Decision\xe2\x80\x9d).)\nFindings of Fact\nI. The Parties and their Businesses\nA. Nike\n[3] Nike was incorporated in 1968 under the original company name Blue Ribbon Sports. In 1971,\nit adopted the NIKE mark to brand its footwear products and in May 1978, the company\xe2\x80\x99s name was\nofficially changed to \xe2\x80\x9cNike, Inc.\xe2\x80\x9d Today, Nike is the largest seller of athletic footwear and apparel in the\nworld. Nike sells around 180 million pairs of shoes annually in the United States alone. Nike\xe2\x80\x99s principal\nbusiness activity is the design, development, and worldwide marketing and distribution of high quality\nand technologically advanced footwear, apparel, equipment, and accessories. Nike has continuously\nused the NIKE mark on and in connection with the various products offered by the company since the\n1970s. Sometimes, the word mark NIKE is the only brand used; sometimes, Nike\xe2\x80\x99s Swoosh design mark\n(i.e. the logo which frequently appears on products along with NIKE, and in some instances alone) is\nalso placed on the product.\nB. Nikepal\n[4] Nikepal was incorporated on May 18, 1998 by the company\xe2\x80\x99s founder and president,\nPalminder Sandhu (\xe2\x80\x9cMr. Sandhu\xe2\x80\x9d), who then began using the NIKEPAL mark in commerce. Nikepal\nprovides services and products to analytical, environmental, and scientific laboratories. Nikepal\xe2\x80\x99s\ntrademark application to the PTO requested registration for: \xe2\x80\x9cimport and export agencies and\nwholesale distributorships featuring scientific, chemical, pharmaceutical, biotechnology testing\ninstruments and glassware for laboratory use, electrical instruments, paper products and household\nproducts and cooking appliances.\xe2\x80\x9d (Application Serial No. 76123346, filed September 6, 2000) Nikepal\ndistributes glass syringes in varying volumes and other laboratory products to testing and power\ncompanies and also distributes paper boxes (syringe carrying cases) and nylon valves and caps for use\nwith the syringes. Nikepal only distributes its products to laboratories, not to individuals.\n[5] Nikepal does not have a retail office, but operates its business through its website (located at\nwww.nikepal.com), via email, and via telephone. Nikepal is run by Mr. Sandhu, who also works as a\ntransportation engineer. Currently, Nikepal has one other part-time employee. Nikepal has only a few\nhundred customers, but it has a list of thousands of prospective customers, some of whom receive\nmaterials from Nikepal advertising its product and service offerings under the mark NIKEPAL.\nII. The Parties\xe2\x80\x99 Marks\nA. NIKE\n[6] Nike first registered the NIKE mark with the PTO in February 1974. Nike owns ten federal\ntrademark registrations for the NIKE mark alone, covering footwear, clothing, bags, timepieces, paper\nproducts such as notebooks and binders, sport balls, swim accessories, and retail store services, all of\nwhich related to pre-May 1998 uses of the mark. By May 1998, Nike was also using and applied for\ntrademark registrations covering the use of the NIKE mark in combination with other terms or designs\nFor the reasons stated herein, Nike prevails on its federal and state dilution claims. Therefore,\nNike\xe2\x80\x99s claims for trademark infringement and unfair competition need not be reached.\n2\n\n473\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nfor footwear, clothing, bags, timepieces, posters, sport balls, swim accessories, weights, gloves,\nheadgear, and retail store services. For example, Nike owns nineteen federal registrations for NIKE\ncomposite marks such as: NIKE and the Swoosh design which has been in use since 1971; NIKE AIR\nwhich has been in use since 1987; NIKE-FIT which has been in use since 1990; NIKE TOWN which has\nbeen in use since 1990; NIKE SHOP which has been in use since 1991; and NIKE GOLF which has been\nin use since 1993. From 1998 to the present, Nike has continued to use the mark NIKE alone and in\ncombination with other terms or designs.\nB. NIKEPAL\n[7] Mr. Sandhu testified that he conceived of the term Nikepal when he wanted to create a vanity\nlicense plate for his car. He testified that he selected the word \xe2\x80\x9cNike\xe2\x80\x9d by opening a dictionary to a\nrandom page and choosing the first word he saw, and then combined it with the first three letters of\nhis first name \xe2\x80\x9cPal.\xe2\x80\x9d \xe2\x80\x9cPal\xe2\x80\x9d means friend or benefactor. Mr. Sandhu admits he knew of the existence of\nthe company Nike and its use of the NIKE mark at the time he devised the term NIKEPAL. Despite Mr.\nSandhu\xe2\x80\x99s trial testimony concerning the manner in which he conceived of the term NIKEPAL, the court\ndoes not find it to be credible.\n[7] The \xe2\x80\x9cNike\xe2\x80\x9d portion of the NIKEPAL mark is pronounced the same way as the NIKE mark is\npronounced: with a hard \xe2\x80\x9ci\xe2\x80\x9d (like bike) in the first syllable and a hard \xe2\x80\x9ce\xe2\x80\x9d (like in \xe2\x80\x9ckey\xe2\x80\x9d) in the second\nsyllable.3 The articles of incorporation signed by Mr. Sandhu for Nikepal in 1998 display the company\nname as \xe2\x80\x9cNikePal International, Inc.,\xe2\x80\x9d with the first word of the company name spelled \xe2\x80\x9cNikePal,\xe2\x80\x9d with\na capital \xe2\x80\x9cN\xe2\x80\x9d and a capital \xe2\x80\x9cP.\xe2\x80\x9d4\n[8] In addition to using Nikepal as the company name, NIKEPAL appears directly on some of\nNikepal\xe2\x80\x99s products, including on its syringe products, and on its marketing materials. Nikepal also\nplaces www.nikepal.com on its syringes to identify the source of the syringe. Nikepal also uses the\nNIKEPAL mark in a vanity phone number (1-877-N-I-K-E-P-A-L), on its website, and in its domain\nnames, including nikepal.com, nikepal.biz, nikepal.us, nikepal.tv, nikepal.info, and nikepal.net.\nIII. Nike\xe2\x80\x99s Sales\n[9] By the late 1980s, United States sales of NIKE branded products were over one billion dollars\nper year. Starting in 1991 and through the mid 1990s, sales of NIKE products in the United States were\napproximately two billion dollars per year, and were above five billion dollars per year by 1997. By\n1997, Nike was the largest seller of athletic footwear and apparel in the world. The geographic area of\nNike\xe2\x80\x99s sales includes the United States and 140 countries throughout the world. Since 1997, Nike has\nsold over 100,000,000 pairs of NIKE shoes each year.\nIV. Advertising and Promotion of the NIKE Mark\n[10] Nike has undertaken significant expense to promote the NIKE mark. Nike advertises in\nvarious types of media, including traditional print advertising, such as magazines (of both special and\n3 Nikepal\xe2\x80\x99s attorney attempted to convince the court that there is a pronunciation difference\nbetween NIKE and NIKEPAL. In her questions during trial, for example, she pronounced Nikepal\xe2\x80\x99s\nmark as \xe2\x80\x9cnik-a-pal.\xe2\x80\x9d However, in answering her questions at trial, Mr. Sandhu, the president of Nikepal,\nalternated between the pronunciation of NIKEPAL as \xe2\x80\x9cnik-a-pal\xe2\x80\x9d and as \xe2\x80\x9cNy-key-pal.\xe2\x80\x9d Further, Nike\xe2\x80\x99s\nwitness, Joseph Sheehan, a former FBI agent and now a private investigator, provided a tape recording\nof the outgoing message heard on Nikepal\xe2\x80\x99s answering machine which clearly pronounced the term\n\xe2\x80\x9cNike\xe2\x80\x9d with long, or hard, vowels, that is an \xe2\x80\x9ci\xe2\x80\x9d like in \xe2\x80\x9cbike\xe2\x80\x9d and \xe2\x80\x9ce\xe2\x80\x9d like in \xe2\x80\x9ckey\xe2\x80\x9d identical to the\npronunciation of the Nike\xe2\x80\x99s trademark.\n\nHowever, since both parties refer to \xe2\x80\x9cNikepal\xe2\x80\x9d with a lowercase \xe2\x80\x9cp\xe2\x80\x9d in this action, the court\nadopts this spelling for the purposes of this order.\n4\n\n474\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\ngeneral interest), newspapers (of general circulation), leaflets, and billboards. Nike also advertises in\nelectronic media, including radio, television, cable and internet, on sides of buildings, on taxi cabs, and\nthrough direct mailings. Nike\xe2\x80\x99s television advertisements have run on network channels and have\nreached national audiences. Nike has also promoted its mark by associating with athletes through\nendorsement arrangements. By 1991, Nike was spending in excess of one hundred million dollars per\nyear in the United States alone to advertise products bearing the NIKE mark. By 1997, Nike had spent\nat least $1,567,900,000.00 to promote the NIKE mark in the United States.\nV. Notoriety of NIKE\n[11] The NIKE mark has been consistently ranked as a top brand in publications that survey the\ntop brands each year. Since at least 1990, Nike has been named one of the top forty brands in the\nUnited States based on the EquiTrend and other studies published in BrandWeek and Financial World\nMagazine. Other brands ranked in such studies include FRITO LAY, LEVI\xe2\x80\x99S, CAMPBELLS\xe2\x80\x99, HEWLETTPACKARD, SONY, PEPSI, and VISA. One story printed in Forbes magazine, reported a survey conducted\nby Young & Rubicam that ranked the NIKE brand among the top ten in the United States in 1996 with\nCOKE, DISNEY, and HALLMARK.\nVI. Evidence of Actual Association\n[12] A survey conducted by Phillip Johnson of Leo J. Shapiro and Associates (\xe2\x80\x9cMr. Johnson\xe2\x80\x99s\nsurvey\xe2\x80\x9d), a Chicago-based market research firm, determined that a significant number of Nikepal\xe2\x80\x99s\npotential laboratory customers actually associated NIKE with NIKEPAL. Mr. Johnson is an expert at\ndesigning surveys that measure consumer behavior. The primary business of Shapiro and Associates is\nto explore consumer behavior through the use of surveys for businesses such as Toys-R-Us, Target, and\nPetsmart in order to help them better understand their marketplace when developing new retail\nconcepts. Nike retained Mr. Johnson to design a survey to measure, inter alia, the likelihood of dilution\nof the NIKE brand as a result of Nikepal\xe2\x80\x99s use of the NIKEPAL mark.\n[13] In designing his study, Mr. Johnson used a universe of survey participants randomly selected\nfrom lists of companies that Mr. Sandhu\xe2\x80\x99s deposition testimony identified as the sources for Nikepal\xe2\x80\x99s\ncurrent and prospective customers. Mr. Johnson conducted the survey by phone and asked\nrespondents about their perception of a website called nikepal.com. In designing his survey, Mr.\nJohnson chose one of the ways that the NIKEPAL mark is used in commerce which allowed him to\nreasonably recreate a purchasing context while obtaining a controlled and accurate measurement. Mr.\nJohnson testified that this survey replicated the circumstances in which people typically encountered\nthe NIKEPAL mark.\n[14] Once survey respondents were screened to confirm that they were the persons most\nresponsible for ordering laboratory equipment at their business, they were asked: \xe2\x80\x9cWhat if anything,\ncame to your mind when I first said the word Nikepal?\xe2\x80\x9d Many survey respondents who were not\nactually confused about the source of the Nikepal website nonetheless identified Nike. Mr. Johnson\ntestified that his survey revealed that the vast majority of respondents, 87%, associated Nikepal with\nNike; that is, when they encounter the mark NIKEPAL, they think of Nike and/or its offerings.\n[15] Evidence of actual association of the NIKEPAL mark with the NIKE mark also exists beyond\nthe results demonstrated in Mr. Johnson\xe2\x80\x99s survey. Mr. Sandhu registered the domain names\nnikepal.biz, nikepal.us, nikepal.tv, nikepal.net, and nikepal.info with Network Solution, and until just\nprior to trial, those websites were inactive. Mr. Sandhu testified that at the time he registered those\ndomains he chose not to link them to an active website. As a result, Network Solutions assigned those\ndomains an \xe2\x80\x9cunder construction\xe2\x80\x9d page and then associated with that page promotions and\nadvertisement links to product and service offerings of its choice. These promotions and\nadvertisements all referred to NIKE products or those of one of its competitors. Thus, when accessing\nNikepal\xe2\x80\x99s NIKEPAL domain names (other than nikepal.com), users received information about Nike or\nits competitors, but not Nikepal.\n475\nV8.0/2021-07-07\n\n\x0cBeebe - Trademark Law: An Open-Source Casebook\nConclusions of Law\nI. Dilution\n[16] Under the Federal Trademark Dilution Revision Act,6 . . . 15 U.S.C. \xc2\xa7 1125(c)(1) (\xe2\x80\x9cTDRA\xe2\x80\x9d){, t}o\nprevail on its dilution claim, Nike must prove 1) that its mark was famous as of a date prior to the first\nuse of the NIKEPAL mark and 2) that Nikepal\xe2\x80\x99s use of its allegedly diluting mark creates a likelihood of\ndilution by blurring or tarnishment.7\nA. Whether NIKE Was Famous Prior to the First Use of NIKEPAL\n[17] . . . Since Nikepal\xe2\x80\x99s first use of NIKEPAL commenced in May 1998, Nike must show that NIKE\nwas famous before that date.\n{The court applied the four factors listed in Lanham Act \xc2\xa7 43(c)(2)(A), 15 U.S.C. 1125(c)(2)(A), to\nfind that the NIKE mark was famous before May 1998}.\nB. Likelihood of Dilution by Blurring\n[18] The TDRA defines dilution by blurring as an \xe2\x80\x9cassociation arising from the similarity between\na mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.\xe2\x80\x9d 15\nU.S.C. \xc2\xa7 1125(c)(2)(A) {sic} {recte 15 U.S.C. \xc2\xa7 1125(c)(2)(B)}.\nIn determining whether a mark or trade name is likely to cause dilution by blurring, the\ncourt may consider all relevant factors, including the following:\n(i) The degree of similarity between the mark or trade name and the famous mark.\n(ii) The degree of inherent or acquired distinctiveness of the famous mark.\n(iii) The extent to which the owner of the famous mark is engaging in substantially\nexclusive use of the mark.\n(iv) The degree of recognition of the famous mark.\n(v) Whether the user of the mark or trade name intended to create an association with\nthe famous mark.\n(vi) Any actual association between the mark or trade name and the famous mark.\nId.\nThe TDRA, signed into law on October 6, 2006, amended the previous federal anti-dilution\nstatute (the Federal Trademark Dilution Act (\xe2\x80\x9cFTDA\xe2\x80\x9d)). The TDRA revises the FTDA in three ways: it\nestablishes that likelihood of dilution, and not actual dilution, is a prerequisite to establish a dilution\nclaim; it sets forth four relevant factors courts may consider in determining famousness; and it also\nlists six relevant factors that courts may consider in determining whether a likelihood of dilution\nexists. Century 21 Real Estate LLC v. Century Surety Co., 2007 WL 433579, at *1 (D.Ariz. Feb.6, 2007).\n6\n\n7\n\nCalifornia\xe2\x80\x99s anti-dilution statute, under which Nike also brings a claim, prescribes:\nLikelihood of injury to business reputation or a dilution of the distinctive quality of a\nmark registered under this chapter, or a mark valid at common law, or a trade name valid\nat common law, shall be a
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