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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 goods.7

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 rights.18

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 Act.39

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 commerce;
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 Services.

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 stronger.

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 considered.89

(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 particular fact[or]s."98

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, 18.01.

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. 1965).

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 chapter,

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, 1993.

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 Publishers

(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 Cir. 1961).

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[2][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 Cir. 1975).

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. 1985).

76 McCarthy, supra note 9, 11.52[2].
77 McCarthy, supra note 9, 21.25[2].

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[2].

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[3][b].
83 Callmann, supra note 4, 20.10.
84 Id.
85 Id.
86 McCarthy, supra note 9, 23.27.
87 Id.

88 McGregor-Doniger Inc., v. Drizzle Inc., 599 F.2d 1126, 1137 (2d Cir. 1979).

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.
94 Id.

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.
98 Id.

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 ____ per cent.[sic]").

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 that product").

102 McCarthy, supra note 9, 25.08[1].
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 (D.C.N.Y. 1956).

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 (W.D.N.C. 1989).

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.
115 Id.
116 Id.
117 Id. at 369.
118 Id.

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 Sega.

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[1]. However, the amendments only codify the case law, not to keep pace with new developments. Id. at 5.05.

121 Id. at 25.08[2],.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, [4][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[3]. Additionally, state anti-dilution statutes exist. Id. at 25.08[4].

123 No. 93-489-CIV-J-20, 1993 WL 522892 at *9.
124 Id.
125 N. 93-4262 CW, 1994 WL 132215 at *8.
126 Id.
excerpted from a 6/94 paper by D. Jennings Meincke. Mr Meincke is/was a student at Villanova Law School -- dmeincke@lawlab_2.law.vill.edu

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