by D. Jennings Meincke
A. Background on Trademark Law.
A trademark is an indicia used to indicate origin.1 For thousands of
years, manufacturers and merchants have been using trademarks for this
purpose.2 Traditionally, an owner of goods, such as a manufacturer or a
merchant, adopts the use of a trademark to indicate either origin or
ownership of a good and to distinguish it from similar goods of another.3
Trademark law has primarily developed around the idea of protecting
identification of origin.4
Even though trademark law primarily protects the trademark as an
indication of origin, trademarks serve other functions as well. 5 A
trademark functions as a guarantee of a consistent level of certain
characteristics, such as quality, so the public when making a purchase
"will get the product which it asks for and wants to get."6
Additionally, manufacturers and merchants use trademarks to advertise
Jurisprudence of trademark law has developed over the last four
centuries.8 The jurisprudential protection of trademarks is based on a
number of principles. Trademarks are a property and as such are
protected.9 Trademark infringement should be prevented as a type of
unfair competition.10 Further, trademark infringement violates the
standards of commercial morality.11 Additionally, trademarks require
protection as they represent an investments in good will.12 With the
law behind protecting the interests of trademark owners, infringers are
prevented from free riding on the efforts of others.13
The owner of a trademark has certain property rights once a consumer
associates the trademark with the owner's good.14 Trademarks are not
"physical" property, but intangible property defined by the perceptions
of consumers.15 The bundle of legal rights associated with a trademark
property include the right to exclude others from using a mark that
would likely confuse customers to the origin of a good.16 Another right
in the bundle is the right of alienation.17 Also, a trademark holder
can enroll the United States Custom Service in protecting the property
Infringement of trademarks falls below the minimum level of fair
competition the government enforces in the marketplace.19 Infringement
of trademarks is but an aspect of unfair competition.20 Since unfair
competition is a tort,21 trademark infringement is a tort as well.22
Additionally, some courts view trademark infringement as an ethical and
moral breach of marketplace standards.23 One court states: "The
fundamental purpose of the law in regard to trademarks is to prevent one
person from passing off his goods or services as those of another. Its
over-all objective is to promote fair play."24 In another case when a
defendant blatantly copies another's trademark to trade on its good
will, the court states its "sense of fundamental fairness . . .
offended" by the "defendant's feeble attempts" to explain its actions
and the entire episode "a sad commentary on business morality."25
The good will developed though a manufacturer or merchant promoting a
trademark in connection with a product should be protected.26 Even when
the product is in the public domain, the "goodwill, name and reputation"
of the seller is the seller's property and should not be exploited by
competitors.27 A competitor trading on the good will of another takes a
free ride on the trademark owner's efforts.28 The 1946 Lanham Act,29
the federal statute concerning trademarks, expressly recognizes that the
"time, energy, and money" spent in marketing his product needs
protection from "pirates and cheats."30
The 1946 Lanham Act provides for the federal registration and protection
of marks used in commerce.31 Physically, a mark is any word, name,
symbol, or device or combination of those items.32 Legally, The Lanham
Act protects marks trademarks33 and service marks.34 A trademark
identifies and distinguishes a manufacturer's or seller's goods from
other's goods.35 Johnson & Johnson, Inc. uses the trademark "Band-Aid"
to sell adhesive bandages.36 A service mark identifies and
distinguishes a person's services.37 American Airlines, Inc. uses the
"American Airlines" service mark to identify its air travel service.38
Service marks get the same protection as trademarks under the Lanham
One applies to register a mark with the Patent and Trademark Office by
following the procedure in section 1 of the Lanham Act.40 Basically,
the Lanham Act requires the applicant to submit samples of the mark,
information on the applicant, the use of the mark, applicant's belief
that no one else has a right to use the mark, the mark will not confuse,
mistake or deceive purchasers of another person, and, of course, the
§245 41 application fee.42 The Patent and Trademark office will
register the mark with few exceptions.43
Once the mark is registered, the Lanham Act provides for remedies
against free riders of the trademark.44 To get awarded remedies, the
plaintiff must show:
1. the plaintiff owns a federally registered mark;45
2. the use by the defendant of the infringing mark in interstate
3. the use by the defendant of the infringing mark "in connection
with the sale, offering for sale, distribution or advertising of any
goods or services;"46 and
4. the use by the defendant of the mark is "likely to cause
confusion, or to cause mistake, or to deceive"47 as a result of the
overall similarity of the marks and the defendant's use of the mark in
connection with a competitive or related good or service.48
2. The Use Of The Infringing Mark In Interstate Commerce.
Any commercial activity that Congress can regulate is subject to the
Lanham Act.55 The Lanham Act considers an infringing mark used in
commerce when it is "used or displayed in the sale or advertising of
services and the services are rendered in commerce, or the services are
rendered in more than one State..."56
3. The Use Of The Infringing Mark For Marketing And Sale Of Goods Or
The infringer must use the mark "in connection with the sale, offering
for sale, distribution or advertising of any goods or services."58
4. The Use Of The Mark Is Likely To Cause Confusion.
For guidance, federal courts have provided a list of elements to weigh
in determining confusion.60 However, this list is not dispositive and
not exclusive, creating ambiguity.61 An understanding of "confusion"
aids in comprehending mark infringement.
"Confusion" now encompasses many types of trade identity confusion.62
Originally, the courts limited confusion to "confusion of source."63
Confusion of source exists when an ordinary prudent purchaser would
purchase one company's product believing it to be the product of another
company.64 Now, confusion has been expanded to cover confusion on the
part of anyone, including prospective customers,65 and end users.66
Additionally, the confusion can be about sponsorship as well as origin.67
Federal courts look at a number of factors to determine likelihood of
confusion. These factors are:
1. the degree of similarity between the marks;
2. the similarity of the services;
3. the location and manner of operations and marketing;
4. the strength of the plaintiff's mark;
5. the degree of care used in purchasing the goods;
6. actual confusion of the two products; and
7. evidence that the defendant intended to cause confusion, cause
mistake, or to deceive.68, 69
These factors are not exclusive or dispositive.70
(a). The degree of similarity between the marks.
The greater the similarity of the marks, the greater the chance of
confusion.72 However, similarity alone will not suffice and the other
factors must be considered.73
(b). Similarity of the services.
As with similarity of marks, the greater the similarity of the products,
the greater the chance of confusion. Further, the greater the similarity
of marks, the lesser the similarity of products needed to show a
likelihood of confusion.74
(c). Location and manner of operations and marketing.
(d). Strength of the plaintiff's mark.
The stronger the mark, the more likely the public will associate the
mark with the registered owner.75 To judge the strength of the mark,
courts look at either a continuum test or a two prong test.76
The continuum test for determining strength of a mark requires the court
to determine the mark's level of distinctiveness. The greater the
distinctiveness, the stronger the mark.77 The continuum runs from
"generic", the lowest strength, to "descriptive" to "suggestive" and
finally to "arbitrary or fanciful," the strongest.78 However, a
descriptive mark can become stronger with time as it builds secondary
meaning.79 The trademark "GREEN BEANS" for selling green beans would be
generic and have no distinctiveness. Without any distinctiveness, the
mark would be considered weak. The same trademark used to sell desks
would be fanciful and arbitrary and be considered highly distinctive and
The two prong test for determining strength of a mark weighs both the
results of the continuum test and the commercial recognition of the
mark.80 A court will look towards commercial success products carrying
the mark, public recognition of the mark, evidence of how the mark
influences purchasing, use of similar marks by others, and other factors
to determine the commercial recognition of a mark.81
(e). Degree of care in purchasing the goods.
Theoretically, some products are scrutinized closer by the public than
other products in determining origin.83 People purchase some products,
such as canned vegetables, gasoline, underwear, and household products,
without great care.84 People purchase other products, such as cigars,
perfume, expensive jewelry, technical equipment, and auto driving
school, with great care and comparison.85 The level of care used to
purchase depends on the sophistication of the purchaser and the expense
of the product or service.86
Marks representing products people purchase with great care need less
protection than marks of products people purchase haphazardly.87 The
less care people use in choosing a product, the more reliance on the
label and the trademark.88 When the purchasers are both sophisticated
and relatively uninformed buyers, the confusion of both groups are
(f) Actual confusion of the two products.
Actual evidence of confusion is highly probative to show confusion but
is not required.91 The reason for this can be found in the language of
the Lanham Act: one must only show the mark is "likely to cause
confusion" for a finding of infringement.92 Practically, waiting until
evidence develops to show actual confusion would result in avoidable
harm to the infringed party.93
Additionally, lack of deception over a period of time is probative in
showing there is a lack of confusion.95
(g). Evidence that the defendant intended to cause confusion, cause
mistake, or to deceive.
Without evidence of intent, this factor does not weigh in favor of a
finding of likelihood of confusion.96
When reviewing and weighing all the factors, a court would probably make
a judgement that there is a likelihood of confusion. Decisions in this
area of law are subjective.97 As a result, judges gain little value in
considering prior decisions and "each case must be decided on its own
One has a "right to inform the public" that the information it
distributes comes from another.102 As Justice Holmes clarified, "A
trade mark[sic] only gives the right to prohibit the use of it so far as
to protect the owner's good will against the sale of another's product
as his. . . . When the mark is used in a way that does not deceive the
public we see no such sanctity in the word as to prevent its being used
to tell the truth. It is not taboo."104
A number of companies have used the "right to inform the public" to
allow the use of another's mark. A clothing manufacturer can use the
fabric maker's mark to sell clothes made from the fabric maker's cloth.
105 A used magazine dealer can use the magazine's mark even when the
magazine cover is torn off.106
In Shell Oil Co. v. Commercial Petroleum, Inc., the court held that an
unauthorized dealer of bulk chemicals could not represent the chemicals
as Shell products for fear of adulteration of the chemicals.107 Shell
Oil required its dealers to comply with quality controls to ensure a
consistent, quality product.108 Commercial Petroleum sold Shell Oil
chemicals as an unauthorized dealer and did not follow Shell's quality
control guidelines. 109 Under these circumstances, with no proof of
adulteration, the court restrained Commercial Petroleum from stating the
chemicals came from Shell Oil because Shell Oil cannot control the
chemical's quality.110 The court stated "[t]o hold that [Shell Oil]
cannot protect its product and the marks by requiring proper procedures
and equipment in the handling, storage and transportation of the oil in
bulk quantities is to restrict the use and protection of trademarks
never intended by Congress."111
To look towards the Coty holding that a distributor can use the
manufacturer's trademark absent proof of adulteration.114 In Coty, Coty
raises a concern about the quality of the products Prestonette produces
with Coty's powder and perfume. Coty claims that the powder and perfume
are delicate and easily adulterated.115 As Coty can not guarantee
quality, Coty's argues Prestonettes should not Coty's mark in connection
with the repackaged products.116
The Court states in Coty that the potential for lower quality goods, no
matter how great, cannot prevent Prestonette from using the Coty mark.117
As for the quality concerns, the public would blame Prestonettes for
any problems because the product clearly communicates Prestonettes
repackages a Coty product.118
In Playboy Enterprises, Inc. v. Frena, a computer bulletin board
operator used "PLAYBOY" and "PLAYMATE" to designate image files
containing Playboy photographs.123 The court states the use of those
trademarks would likely confuse customers into thinking Playboy either
"sponsored, endorsed or approved" of the images on the computer bulletin
board.124 In Sega v. Maphia, a computer bulletin board using Sega's
trademark on file sections, descriptors, and programs and encouraged
downloading of the files constitutes trademark infringement.125 In
Sega, the court states not only could customers of the computer bulletin
board likely be confused, but the likelihood of confusion by users
receiving copies from customers can establish trademark infringement.126
1 Louis Altman, The Law of Unfair Competition, Trademarks and Monopolies
17.01, n.1 (4th ed. 1993).
2 Kenneth L. Port, Forward: Symposium on Intellectual Property Law
Theory, 68 Chi.-Kent L. Rev. 585, 595 (1993) (3500 years ago potters
scratched onto their works for source identification).
3 Amasa Paul, The Law of Trade-marks and Trade-names and Unfair
Competition, Ch. 1, 7 (1903). "The right to adopt and use a symbol or
a device to distinguish the goods and property made or sold by the
person whose mark it is, to the exclusion of use by all other persons,
has been long recognized by the common law and the chancery courts of
England and of this country, and by the statutes of some of the States."
Trade-mark Cases, 100 U.S. 82, 92 (1879) (Court determines the
constitutional basis for trademark laws rests in the Commerce Clause).
4 Rudolf Callmann, The Law of Unfair Competition, Trademarks, and
Monopolies, 17.01 (1993).
5 Callmann, supra note 4, 17.01.
6 S. Rep. No. 1333, 79th Cong., 2d Sess. 3 (1946).
7 Callmann, supra note 4, 17.01.
8 During the reign of Queen Elizabeth, the first noted trademark
infringement action took place. In 1590, an English clothing
manufacturer placed on his cloth the mark of another clothing
manufacturer in order to deceive the public. Paul, supra note 3, 14.
9 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
2.06 (1994). See William M. Landes, Richard A. Posner, The Economics of
Trademark Law, 78 Trademark Rep. 267, 272 (1988).
10 McCarthy, supra note 9, 2.02.
11 Id. at 2.04.
12 Id. at 2.10.
13 Smith v. Chanel, Inc., 402 F.2d 562, 570 (9th Cir. 1968).
14 McCarthy, supra note 9, 2.06.
15 McCarthy, supra note 9, 2.06.
16 Callmann, supra note 4, 17.11.
17 The alienation of trademarks is restricted because the goodwill of
consumers towards the mark cannot be separated from the mark. This
restriction requires that a mark needs to be sold with the origin of the
goods, the business the trademark represents. McCarthy, supra note 9,
18 Id. at 2.06.
19 Id. at 2.02.
20 United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918).
21 Fry v. Layne-Webster Co., 282 F.2d 97, 102 (1960).
22 McCarthy, supra note 9, 2.02.
23 Id. at 2.04.
24 Kelly Girl Service, Inc. v. Roberts, 243 F. Supp. 225, 227 (E.D. La.
25 National Chemsearch Corp. v. Uni-Search Corp., 165 U.S.P.Q. (B.N.A.)
153, 155 (N.D. Ohio 1969).
26 McCarthy, supra note 9, 2.10.
27 Pezon et Michel v. Ernest R. Hewin Associates, Inc., 270 F. Supp.
423, 427. (S.D.N.Y. 1967).
28 402 F.2d at 562.
29 15 U.S.C. 1051-1128 (1946).
30 S. Rep. No. 1333, 79th Cong., 2d Sess. 3 (1946).
31 The Lanham Act, 15 U.S.C. 1051-1128. Specifically, the Lanham Act
is intended to regulate commerce within the control of Congress by
making actionable the deceptive and misleading use of marks in such
commerce; to protect registered marks used in such commerce from
interference by State, or territorial legislation; to protect persons
engaged in such commerce against unfair competition; to prevent fraud
and deception in such commerce by the use of reproductions, copies,
counterfeits, or colorable imitations of registered marks; and to
provide rights and remedies stipulated by treaties and conventions
respecting trademarks, trade names, and unfair competition entered into
between the United States and foreign nations. Id. at 1127.
32 15 U.S.C. 1127.
33 The term "trademark" includes any word, name, symbol, or device or
any combination thereof--
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and
applies to register on the principal register established by this
chapter,to identify and distinguish his or her goods, including a unique
product, from those manufactured or sold by others and to indicate the
source of the goods, even if that source is unknown. -- 15 U.S.C. 1127.
34 The term "service mark" means any word, name, symbol, or device or
any combination thereof--
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and
applies to register on the principal register established by this
to identify and distinguish the services of one person, including a
unique service, from the services of others and to indicate the source
of the services, even if that source is unknown. Titles, character
names, and other distinctive features of radio or television programs
may be registered as services marks notwithstanding that they, or the
programs, may advertise the goods of the sponsor. -- 15 U.S.C. 1127.
35 15 U.S.C. 1127.
36 Serial Number 71-199,064.
37 15 U.S.C. 1127.
38 Serial Number 71-562,240.
39 15 U.S.C. 1053.
40 15 U.S.C. 1051.
41 Patent and Trademark Authorization Act of 1993, 103 PL 179 4, Dec 3,
42 15 U.S.C. 1052(f).
43 No trade-mark by which the goods of the applicant may be
distinguished from the goods of others shall be refused registration on
the principal register on account of its nature unless it-
(a) Consists of or comprises immoral, deceptive, or scandalous matter;
or matter which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs, or national symbols, or
bring them into contempt, or disrepute.
(b) Consists of or comprises the flag or coat of arms or other insignia
of the United States, or of any State or municipality, or of any foreign
nation, or any simulation thereof.
(c) Consists of or comprises a name, portrait, or signature identifying
a particular living individual except by his written consent, or the
name, signature, or portrait of a deceased President of the United
States during the life of his widow, if any, except by the written
consent of the widow.
(d) Consists of or comprises a mark which so resembles a mark registered
in the Patent and Trademark Office or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely,
when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive . . .
(e) Consists of a mark which, (1) when used on or in connection with the
goods of the applicant is merely descriptive or deceptively
misdescriptive of them, or (2) when used on or in connection with the
goods of the applicant is primarily geographically descriptive or
deceptively misdescriptive of them, except as indications of regional
origin may be registrable under section 1054 of this title, or (3) is
primarily merely a surname. -- 15 U.S.C. 1052.
44 Remedies; Infringement; Innocent Infringement by Printers and
(1) Any person who shall, without the consent of the registrant--
(a) use in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark in connection with the sale, offering for
sale, distribution, or advertising of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive . . . shall be liable in a civil action by the
registrant for the remedies hereinafter provided. Under subsection (b)
hereof, the registrant shall not be entitled to recover profits or
damages unless the acts have been committed with knowledge that such
imitation is intended to be used to cause confusion, or to cause
mistake, or to deceive. -- 15 U.S.C. 1114.
45 For the remainder of the paper the word "mark" will be used to
denominate both trademarks and service marks. Under 15 U.S.C. 1053, a
service mark is entitled to the same protection as a trademark.
46 15 U.S.C. 1114.
47 15 U.S.C. 1114.
48 McCarthy, supra note 9, 33.01.
49 The first use was in 1975.
50 Reg. No. 1,225,285.
51 The term "incontestible" is a misnomer. The Lanham Act allows for a
mark not to be determined merely descriptive after the mark has been
registered for five years and the 15 U.S.C. 1065 affidavit is filed. 15
U.S.C. 1065, 1115.
52 Reg. No. 1,646,237.
53 Reg. No. 1,649,364.
54 Reg. No. 1,591,846.
55 15 U.S.C. 1127.
56 15 U.S.C. 1127.
57 15 U.S.C. 1114.
58 15 U.S.C. 1114.
59 15 U.S.C. 1114.
60 Pignons S. A. de Mecanique, Etc. v. Polaroid Corp., 498 F. Supp. 805,
810 (D.C. Mass. 1980).
61 Polaroid Corp. v. Polorad Electronics Corp., 287 F.2d 492, 495 (2d
62 Callmann, supra note 4, 20.01.
63 Callmann, supra note 4, 20.01.
64 Fidelity Bond & Mortgage Co. v. Fidelity Mortgage Co., 12 F.2d 582,
(6th Cir. 1926).
65 General Time Corp. v. Dunbar Furniture Corp. of Indiana, 402 F.2d
806, 808 (C.C.P.A. 1968).
66 Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689,
n.10 (N.D. Ga. 1977) (likely confusion of viewers); T & T Mfg. Co. v. A.
T. Cross Co., 449 F. Supp. 813 (C.D.R.I. 1978), aff'd, 587 F.2d 533
(1st Cir. 1978), cert. denied, 441 U.S. 908 (1979) (likely confusion of
recipients of gift of a pen).
67 California Fruit Growers Exchange v. Sunkist Baking Co., 166 F.2d
971, 975 (7th Cir. 1947).
68 498 F. Supp. at 810.
69 Most courts view the findings as matter of fact, requiring a clearly
erroneous rule on appeal. However, the Second and the Sixth Circuits
review the factors under the clearly erroneous standard but consider the
determination of likelihood of confusion is a matter of law, receiving a
de novo review. McCarthy, supra note 9, 23.22[d].
70 287 F.2d at 495.
71 L.J. Mueller Furance Co. v. United Conditioning Corp., 222 F.2d 755,
757 (C.C.P.A. 1955).
72 Callmann, supra note 4, 20.07.
73 Decosta v. Columbia Broadcasting System, Inc., 520 F.2d 499, 513 (1st
74 In re Concordia International Forwarding Company, 222 U.S.P.Q. (BNA)
355, 357 (T.T.A.B. 1983) (the mark "CONCORDIA" used by a sea freight
mover precluded an air freight mover from using the mark because the two
services were too similar).
75 Freedom Sav. and Loan Ass'n v. Way, 757 F.2d 1179, 1182 (11th Cir.
76 McCarthy, supra note 9, 11.52.
77 McCarthy, supra note 9, 21.25.
78 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d
Cir. 1976). "Generic" refers to the genus of which the particular
product is a species. Id. "Descriptive" refers to a mark that conveys
immediately an idea of "the ingredients, qualities, or characteristics
of the goods." Stix Products, Inc. v. United Merchants & Manufacturers
Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968). A "suggestive" mark
"require[s] imagination, thought and perception to reach a conclusion as
to the nature of the goods." Id. An "arbitrary or fanciful" mark has no
connection with the goods or service associated with it. 537 F.2d at 11.
"WORLD BOOK" for an encyclopedia is an example of a descriptive mark,
"COPPERTONE" for sun tan lotion is an example of a suggestive mark, and
"KODAK" for cameras is an example of an arbitrary or fanciful mark.
79 McCarthy, supra note 9, 15.08. After using a mark continuously for
five years, the mark can be declared incontestible and secondary meaning
is presumed. 15 U.S.C. 1065.
80 Id. at 11.25.
81 Edison Bros. Stores, Inc. v. Cosmair, Inc., 651 F. Supp. 1547, 1555-
56 (S.D.N.Y. 1987).
82 McCarthy, supra note 9, 15.11[b].
83 Callmann, supra note 4, 20.10.
86 McCarthy, supra note 9, 23.27.
88 McGregor-Doniger Inc., v. Drizzle Inc., 599 F.2d 1126, 1137 (2d Cir.
89 Omega Importing Corp. v. Petri-Kine Camera Co., 451 F.2d 1190, 1195
(2d Cir. 1971).
90 599 F.2d at 1138
91 Callmann supra note 4, 20.06.
92 15 U.S.C. 1114.
93 Callmann supra note 4, 20.06.
95 Lucien Lelong, Inc. v. Lander Co., 164 F.2d 395, 397 (2d Cir. 1947)
(that for ten years the companies have been marketing their products
with no confusion is of some significance but not controlling); Best &
Co. v. Miller, 167 F.2d 374, 377 (2d Cir. 1948) (fourteen years of
concurrent use of the trademark).
96 Where intent is proved, the courts will follow the alleged
infringer's judgement and find a likelihood of confusion. National Ass'n
of Blue Shield Plans v. United Bankers Life Ins. Co., 263 F.2d 374, 377
(5th Cir. 1966).
97 222 F.2d at 757.
99 Bandag, Inc. v. Al Bolser's Tire Stores, 750 F.2d 903, 910 (Fed. Cir.
1984) (the use of the trademark of the manufacturer in an advertisement
of an non-affiliated agent could mislead customers).
In Playboy Enterprises, Inc. v. Frena, No. 93-489-CIV-J-20, 1993 WL
522892 (M.D. Fla. 1993), the court found a computer bulletin board
operator guilty of trademark infringement. The computer bulletin board
contained computer files of "PLAYBOY" photographs with the trademarks
"PLAYMATE" and "PLAYBOY" used to identify the files. The court performed
the a "likelihood of confusion" test to determine trademark
infringement. The court found the marks suggestive and deserved the
highest protection. Id. at *10. Additionally, the court found Frena's
service of providing nude pictures of women "virtually identical" to
that Playboy's service - even though a different medium. Id. at *9.
Further, the court found no intent to derive benefits from Playboy's
goodwill or actual confusion. Id. Based on the above factors, the court
found a likelihood of confusion existed. Id. at *10. The court stated
"[i]t is likely that customers of Defendant Frena would believe that
[Playboy] was the source of Defendant Frena's images and that [Playboy]
either sponsored, endorsed or approved Defendant Frena's use of
[Playboy's] images." Id.
Frena in no way made any statements disavowing connection with Playboy
which might have precluded a finding for likelihood of confusion.
Further, Frena modified the computer images by removing the Playboy
trademark and placing advertising for Frena on some of the images. Id.
at *11. Frena's adjustments changed the images to the extent that
Playboy was no longer the source of the images. Id.
100 Prestonettes, Inc. v. Coty, 44 U.S. 359, 367 (1924)(a compact made
from Coty talc powder was required to state, "Prestonettes, Inc., not
connected with Coty, states that the compact of face powder herein was
independently compounded by it from Coty's [giving the name] loose
powder and its own binder. Loose powder ____ per cent.,[sic] Binder ____
101 750 F.2d at 910 ("in order to communicate accurate information about
a product, a right is implied to use any mark fairly associated with
102 McCarthy, supra note 9, 25.08.
103 Not considering any copyright or contract obligations.
104 44 U.S. at 367.
105 Forstmann Woolen Co. v. Murray Sices Corp., 144 F. Supp. 283
106 Independent News Co. v. Williams, 293 F.2d 510 (3d Cir. 1961).
107 Shell Oil Co. v. Commercial Petroleum, Inc., 733 F. Supp. 40
108 Id. at 42.
109 Id. at 43.
110 Id. at 44.
111 Id. at 45.
112 Id. at 43.
113 Id. at 43.
114 44 U.S. at 367.
117 Id. at 369.
119 In Sega v. Maphia, the court determines as a matter of fact having
the ability to alter a computer file of a game and not supplying the
packaging and instructions for the game is "likely to damage SEGA's
reputation and the substantial goodwill which SEGA has built up in its
trademarks." Sega Enter's. Ltd. and Sega of America, Inc. v. Maphia, No.
C 93-4262 CW, 1994 WL 132215, *4 (N.D. Cal. 1994). Game instructions are
an integral part of the overall games package. Without the instructions,
Maphia diminishes the game playing satisfaction, negatively impacting on
120 The court in Shell Oil does distinguish Coty but does so poorly. 733
F. Supp. at 44. The court states "[t]he Coty case was decided under the
Trademark Act prior to the enactment of the Lanham Act which amended the
original Act to keep pace with commercial developments. Id. However, the
Coty rule has been used in numerous cases. McCarthy, supra note 9
25.08. However, the amendments only codify the case law, not to keep
pace with new developments. Id. at 5.05.
121 Id. at 25.08,.09.
"In the case at bar the defendants were selling goods of a manufacturer
of reputation. The repairs were minor ones. They has a right to gain any
advantages derived form the good name of the manufacturer so long as
they made it clear that the latter was not responsible for any lack of
conformity to original standards. . . ." Champion Spark Plug Co. v.
Sanders, 156 F.2d 488, 492 (2d Cir. 1946), aff'd, 31 U.S. 125 (1947).
However, the documentation must clearly state not only to the purchaser,
but the public as well. McCarthy, supra note 9, [c]. In Sega v.
Maphia, a bulletin board operator was accused of trademark infringement
when Sega computer games were placed on and down loaded from his
computer bulletin board. No. C 93-4262 CW, 1994 WL 132215. The court
found as a matter of fact that confusion is inevitable on the part of
third parties who may see the copied games after they enter the stream
of commerce. Id. at *4. See Amway Corp. v. International Sales Aids,
Inc., 187 U.S.P.Q.(BNA) 15, 20 (E.D. Ark. 1974) (identification of
printer does not inform public that the literature is not connected with
the trademark owner's product).
122 State statutes exist that restrict the use of marks in conjunction
with repackaged products. McCarthy, supra note 9, 25.08.
Additionally, state anti-dilution statutes exist. Id. at 25.08.
123 No. 93-489-CIV-J-20, 1993 WL 522892 at *9.
125 N. 93-4262 CW, 1994 WL 132215 at *8.
excerpted from a 6/94 paper by D. Jennings Meincke. Mr Meincke is/was
a student at Villanova Law School -- [email protected]_2.law.vill.edu
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