Advanced Issues for the IP Professional

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Presentation given at the Association of the Bar of the City of New Yorkon April 5, 2005

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  • 1) Free speech / trademarks first principles a) It is axiomatic that trademarks are a limitation on expression. b) The First Amendment theoretically trumps, or at least limits, the expansion of trademarks. Basic principle: “[W]e cannot indulge the facile assumption that one can forbid particular words without also running a substantial risk of suppressing ideas in the process.” Cohen v. California , 403 U.S. 15, 26 (1971). c) Thus, courts are not to stake out new territory in the trademark domain at the expense of curtailing the ability of a speaker to communicate his message. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); Twin Peaks Prods., Inc. v. Publications Int’l, Ltd. , 996 F.2d 1366, 1378 (2d Cir. 1993); No Fear, Inc. v. Imagine Films, Inc. , 930 F. Supp. 1381 (C.D. Cal. 1995). i) In determining the outer limits of trademark protection the weight of the risks of confusion and suppression of expression may tip the scales against trademark protection. Silverman v. CBS, Inc. , 870 F.2d 40, 49 (2d Cir. 1989). ii) Besides the usual interests balanced in an injunction application, courts were particularly reluctant to issue an injunction, even in a Lanham Act case, where there were delicate questions implicating First Amendment rights. See, e.g., Stop Olympic Prison v. United States Olympic Committee , 489 F. Supp. 1112, 1123 (S.D.N.Y. 1980). Similarly, because a trademark may frequently be the most effective means of focusing attention on the trademark owner or its product, the recognition of exclusive rights encompassing such use would permit the stifling of unwelcome discussion, and is forbidden. L.L. Bean, Inc. v. Drake Publishers, Inc. , 811 F.2d 26, 31-33 (1st Cir.), cert. denied , 483 U.S. 1013 (1987); United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc. , 128 F.3d 86, 92, n.3 (2d Cir. 1997), cert. denied , 118 S. Ct. 1521 (1998); Mutual of Omaha Ins. Co. v. Novak , 836 F.2d 397, 402-03 n.8 (8th Cir 1987).
  • Advanced Issues for the IP Professional

    1. 1. Advanced Issues for the IP Practioner Ronald D. Coleman COLEMAN LAW FIRM A Professional Corporation
    2. 2. First Principles The First Amendment “Congress shall make no law…” Axiom: Trademark rights are a limitation on “speech” (expression) Ronald D. Coleman www.coleman-firm.com
    3. 3. First Principles [ W]e cannot indulge the facile assumption that one can forbid particular words without also running a substantial risk of suppressing ideas in the process.Cohen v. California , 403 U.S. 15, 26 (1971) Ronald D. Coleman www.coleman-firm.com
    4. 4. THE ANCIENT TEST FOR TRADEMARK INFRINGEMENT vel non LIKELIHOOD OF CONFUSION Ronald D. Coleman www.coleman-firm.com
    5. 5. PROCEED CAUTIOUSLY Courts are not to stake out new territory in the trademark domain at the expense of curtailing the ability of a speaker to communicate his message. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) Ronald D. Coleman www.coleman-firm.com
    6. 6. WEIGH EFFECT ON SPEECH In determining the outer limits of trademark protection the weight of the risks of confusion and suppression of expression may tip the scales against trademark protection .Silverman v. CBS, Inc. , 870 F.2d 40, 49 (2d Cir. 1989) Ronald D. Coleman www.coleman-firm.com
    7. 7. BE RELUCTANT TO USE FORCECourts are to be particularly reluctant to issue an injunction, even in a Lanham Act case, where there are delicate questions implicating First Amendment rights.Stop Olympic Prison v. United States Olympic Committee, 489 F. Supp. 1112, 1123 (S.D.N.Y. 1980) Ronald D. Coleman www.coleman-firm.com
    8. 8. TRADEMARK NOT A DEVICE TO SILENCE DISSENTA trademark may frequently be the most effective means of focusing attention on the trademark owner or its product, the recognition of exclusive rights encompassing such use would permit the stifling of unwelcome discussion, and is forbidden. United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc. , 128 F.3d 86, 92, n.3 (2d Cir. 1997), cert. denied, 118 S. Ct. 1521 (1998) L.L. Bean, Inc. v. Drake Publishers, Inc. , 811 F.2d 26, 31-33 (1st Cir.), cert. denied, 483 U.S. 1013 (1987) Mutual of Omaha Ins. Co. v. Novak , 836 F.2d 397, 402-03 n.8 (8th Cir 1987) Ronald D. Coleman www.coleman-firm.com
    9. 9. THE TEST FOR TRADEMARK INFRINGEMENTLIKELIHOOD OF CONFUSION Ronald D. Coleman www.coleman-firm.com
    10. 10. “INITIAL INTEREST”CONFUSION As of 1998, it could fairly be said that: Initial interest confusion has been applied only where a potential purchaser is initially confused such that the senior seller may be precluded from further consideration by the buyer. Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990) (emphasis added). Ronald D. Coleman www.coleman-firm.com
    11. 11. The consumer as idiotMinimum level of discernment andintelligence on the part of consumers waspresumed.Consumers were expected to distinguishbetween the use of a mark to drawattention, and the use of a mark to indicatesource. Stop the Olympic Prison v. United States Olympic Comm., 489 F. Supp. 1112 (S.D.N.Y. 1980); Girl Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969). Ronald D. Coleman www.coleman-firm.com
    12. 12. COMMERCIAL SPEECHGets less constitutional protection: ‘It’s “hardy” because it’s motivated by $$.’ Central Hudson Gas & Electric Corp. v. Public Service Commission , 447 U.S. 557 (1980) Ronald D. Coleman www.coleman-firm.com
    13. 13. COMMERCIAL SPEECHCommunication of information, expression of opinion, recitation of grievances are all deserving of constitutional protection, and are not commerce. New York Times Co. v. Sullivan , 376 U.S. 254, 267 (1964). Ronald D. Coleman www.coleman-firm.com
    14. 14. COMMERCIAL SPEECH The test of whether speech is “commercial speech” is whether or not “proposal of a commercial transaction” is the sole purpose of the expression. Cincinnati v. Discovery Network, Inc., 507 U.S. 410 (1993) Ronald D. Coleman www.coleman-firm.com
    15. 15. Ninth Circuit - Yesterday“The Second Circuit held in United We Stand America, Inc. v. United To find a Lanham Act We Stand, America New York, Inc., 128 F.3d 86, 90 (2d Cir. violation without 1997), that the “use in connection with the sale of goods and finding commercial services” requirement of the Lanham Act does not require any use may contradict actual sale of goods and services. Thus, the appropriate inquiry is Congress’ intent. whether Kremer offers competi services to the public. Kremer is not Bosley’s competitor; he is their critic. His use of the Bosley mark is not in connection with a sale of BOSLEY MEDICAL goods or services — it is in connection with the expression of INSTITUTE v. his opinion about Bosley’s goods and services.” KREMER April 4, 2005 Ronald D. Coleman www.coleman-firm.com
    16. 16. Ronald D. Colemanwww.coleman-firm.com
    17. 17. Ronald D. Colemanwww.coleman-firm.com
    18. 18. Ronald D. Colemanwww.coleman-firm.com

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