Case Analysis Format
Read and understand the case or question assigned. Show your Analysis and Reasoning and make it clear you understand the material. Be sure to incorporate the concepts of the chapter we are studying to show your reasoning. Dedicate at least one heading to each following outline topic:
Parties [Identify the plaintiff and the defendant]
Facts [Summarize only those facts critical to the outcome of the case]
Procedure [Who brought the appeal? What was the outcome in the lower court(s)?]
Issue [Note the central question or questions on which the case turns]
Explain the applicable law(s). Use the textbook here. The law should come from the same chapter as the case. Be sure to use citations from the textbook including page numbers.
Holding [How did the court resolve the issue(s)? Who won?]
Reasoning [Explain the logic that supported the court's decision]
Do significant research outside of the book and demonstrate that you have in an obvious way. This refers to research beyond the legal research. This involves something about the parties or other interesting related area. Show something you have discovered about the case, parties or other important element from your own research. Be sure this is obvious and adds value beyond the legal reasoning of the case.
1. Dedicate 1 heading to each of the case question(s) immediately following the case, if there are any. Be sure to restate and fully answer the questions
2. Quality in terms of substance, form, grammar and context. Be entertaining! Use excellent visual material
3. Wrap up with a Conclusion. This should summarize the key aspects of the decision and your recommendations on the court's ruling.
4. Include citations and a reference page with your sources. Use APA style citations and references
Chapter Fourteen Intellectual Property
Introduction to Intellectual Property
Intellectual property consists of the fruits of one’s mind. The laws of intellectual property protect property that is primarily the result of mental creativity rather than physical effort. This category includes trademarks, patents, trade secrets, and copyrights, which are discussed in that order in this chapter.Trademarks
A trademark is a distinctive mark, word, design, picture, or arrangement used by a seller in conjunction with a product that tends to cause the consumer to identify the product with the producer. Even the shape of a product or package may be a trademark if it is nonfunctional.
trademark
A distinctive mark, word, design, picture, or arrangement used by the producer of a product that tends to cause consumers to identify the product with the producer.Critical Thinking About The Law
1. In Chapter 13 you studied real and personal property. Why might the legal rules for intellectual property be different in any fashion from the rules for real and personal property?
Clue: Consider the different attitudes we might have toward the results from thinking and the output from physical exertion.
2. Some argue t.
Unit-IV; Professional Sales Representative (PSR).pptx
Case Analysis FormatRead and understand the case or question assig.docx
1. Case Analysis Format
Read and understand the case or question assigned. Show your
Analysis and Reasoning and make it clear you understand the
material. Be sure to incorporate the concepts of the chapter we
are studying to show your reasoning. Dedicate at least one
heading to each following outline topic:
Parties [Identify the plaintiff and the defendant]
Facts [Summarize only those facts critical to the outcome of the
case]
Procedure [Who brought the appeal? What was the outcome in
the lower court(s)?]
Issue [Note the central question or questions on which the case
turns]
Explain the applicable law(s). Use the textbook here. The law
should come from the same chapter as the case. Be sure to use
citations from the textbook including page numbers.
Holding [How did the court resolve the issue(s)? Who won?]
Reasoning [Explain the logic that supported the court's
decision]
Do significant research outside of the book and demonstrate that
you have in an obvious way. This refers to research beyond the
legal research. This involves something about the parties or
other interesting related area. Show something you have
discovered about the case, parties or other important element
from your own research. Be sure this is obvious and adds value
beyond the legal reasoning of the case.
1. Dedicate 1 heading to each of the case question(s)
immediately following the case, if there are any. Be sure to
restate and fully answer the questions
2. Quality in terms of substance, form, grammar and context. Be
entertaining! Use excellent visual material
3. Wrap up with a Conclusion. This should summarize the key
aspects of the decision and your recommendations on the court's
ruling.
4. Include citations and a reference page with your sources. Use
2. APA style citations and references
Chapter Fourteen Intellectual Property
Introduction to Intellectual Property
Intellectual property consists of the fruits of one’s mind. The
laws of intellectual property protect property that is primarily
the result of mental creativity rather than physical effort. This
category includes trademarks, patents, trade secrets, and
copyrights, which are discussed in that order in this
chapter.Trademarks
A trademark is a distinctive mark, word, design, picture, or
arrangement used by a seller in conjunction with a product that
tends to cause the consumer to identify the product with the
producer. Even the shape of a product or package may be a
trademark if it is nonfunctional.
trademark
A distinctive mark, word, design, picture, or arrangement used
by the producer of a product that tends to cause consumers to
identify the product with the producer.Critical Thinking About
The Law
1. In Chapter 13 you studied real and personal property. Why
might the legal rules for intellectual property be different in any
fashion from the rules for real and personal property?
Clue: Consider the different attitudes we might have toward the
results from thinking and the output from physical exertion.
2. Some argue that intellectual property should be available for
everyone once it is produced by someone’s mind. What ethical
norm underlies this attitude toward sharing mental output?
Clue: Should a person benefit because her mind creates an idea
that other minds, for some reason, did not produce?
3. If an idea becomes a legal source of great wealth for a
person, what information about the “discovery” would cause
you to be more supportive of protecting the property right to the
fruits of the discovery?
Clue: The play and movieAmadeussuggest that Mozart’s
brilliant compositions resulted more from his genius than from
3. any hard work on his part.Table 14-1 Types of Marks Protected
Under The Lanham Act
1. Product trademarks: marks affixed to a good, its packaging,
or its labeling.
2. Service marks: marks used in conjunction with a service.
3. Collective marks: marks identifying the producers as
belonging to a larger group, such as a trade union.
4. Certification marks: marks licensed by a group that has
established certain criteria for use of the mark, such as “UL
Tested” or “Good Housekeeping Seal of Approval.”
Even though the description of a trademark is very broad, there
has still been substantial litigation over precisely what features
can and cannot serve as a trademark. A sound (NBC’s three
chimes and Metro-Goldwyn-Mayer Corporation’s roaring lion),
a scent (plumeria blossoms on sewing thread and yarns), and
even a color (green-gold of Qualitex dry-cleaning press pads)
have all been found to constitute trademarks, because they
distinguish the goods as unique and serve to identify their
source.
Even phrases can be trademarked. For example, in 2014, Seattle
Seahawks running back Marshawn Lynch filed a trademark for
the phrase, “I’m just here so I won’t get fined,” the phrase he
used to answer over 20 questions on Super Bowl XLIX media
day. He trademarked the phrase to use on items in his Beast
Mode apparel line. In 2013, he had trademarked the phrase
“About that action BOSS,” a phrase from his only Superbowl
XLVII interview, to be used for a similar purpose.
A trademark used intrastate is protected under state common
law. To be protected in interstate use, the trademark must be
registered with the U.S. Patent Office under the Lanham Act of
1947. Several types of marks, listed in Table 14-1, are protected
under this act.
If a mark is registered, the holder of the mark may recover
damages from an infringer who uses that mark to pass off its
own goods as those of the mark holder. The mark owner may
also obtain an injunction prohibiting the infringer from using
4. the mark. Only the latter remedy is available for an unregistered
mark.
To register a mark with the Patent Office, one must submit a
drawing of the mark and indicate when it was first used in
interstate commerce and how it is used. The Patent Office
conducts an investigation to verify these facts and will register
a trademark as long as it is not generic, descriptive, immoral,
deceptive, the name of a person whose permission has not been
obtained, or substantially similar to another’s trademark.
It is sometimes difficult to determine whether a trademark will
be protected, and once the trademark is issued, it is not always
easy to predict when a similar mark will be found to infringe
upon the registered trademark. The following case demonstrates
a typical analysis used in a trademark-infringement
suit. Case 14-1 Toys “R” Us, Inc. v. Canarsie Kiddie Shop, Inc.
District Court of the Eastern District of New York 559 F. Supp.
1189 (1983)
Beginning in 1960, Plaintiff Toys “R” Us, Inc., sold children’s
clothes in stores across the country. The firm obtained a
registered trademark and service mark for Toys “R” Us in 1961
and aggressively advertised and promoted its products using
these marks. In the late 1970s, Defendant Canarsie Kiddie Shop,
Inc., opened two children’s clothing stores within two miles of
a Toys “R” Us shop and contemplated opening a third. The
owner of Canarsie Kiddie Shop, Inc., called the stores Kids “r”
Us. He never attempted to register the name. Toys “R” Us sued
for trademark infringement in the federal district court.Judge
Glasser
In assessing the likelihood of confusion and in balancing the
equities, this Court must consider the now classic factors.
1. Strength of the Senior User’s Mark
“[T]he term ‘strength’ as applied to trademarks refers to the
distinctiveness of the mark, or more precisely, its tendency to
identify goods sold under the mark as emanating from the
particular, although possibly anonymous, source.” A mark can
fall into one of four general categories, which, in order of
5. ascending strength, are: (1) generic; (2) descriptive; (3)
suggestive; and (4) arbitrary or fanciful. The strength of a mark
is generally dependent both on its place upon the scale and on
whether it has acquired secondary meaning.
A generic term “refers, or has come to be understood as
referring to the genus of which the particular product is a
species.” A generic term is entitled to no trademark protection
whatsoever, since any manufacturer or seller has the right to
call a product by its name.
A descriptive mark identifies a significant characteristic of the
product, but is not the common name of the product. A mark is
descriptive if it “informs the purchasing public of the
characteristics, quality, functions, uses, ingredients,
components, or other properties of a product, or conveys
comparable information about a service.” To achieve trademark
protection a descriptive term must have attained secondary
meaning, that is, it must have “become distinctive of the
applicant’s goods in commerce.”
A suggestive mark is one that “requires imagination, thought,
and perception to reach a conclusion as to the nature of the
goods.” These marks fall short of directly describing the
qualities or functions of a particular product or service, but
merely suggest such qualities. If a term is suggestive, it is
entitled to protection without proof of secondary meaning.
Arbitrary or fanciful marks require no extended definition. They
are marks which in no way describe or suggest the qualities of
the product.
The Toys “R” Us mark is difficult to categorize.
The strength of the plaintiff’s mark must be evaluated by
examining the mark in its entirety. . . . I agree that the Toys “R”
Us mark serves to describe the business of the plaintiff, and in
this sense is merely descriptive. This descriptive quality,
however, does require some “imagination, thought, and
perception” on the part of the consumer since the plaintiff’s
mark, read quite literally, conveys the message, “we are toys,”
rather than “we sell toys.”
6. Whether the “leap of imagination” required here is sufficient to
render the mark suggestive rather than descriptive is a question
with no clear-cut answer. Such an absolute categorization is not
essential, however, since the defendants concede that through
the plaintiff’s marketing and advertising efforts the Toys “R”
Us mark has acquired secondary meaning in the minds of the
public, at least in relation to its sale of toys. Such secondary
meaning assures that the plaintiff’s mark is entitled to
protection even if it is viewed as merely descriptive. Because I
find that through the plaintiff’s advertising and marketing
efforts the plaintiff’s mark has developed strong secondary
meaning as a source of children’s products, it is sufficient for
purposes of this decision to note merely that the plaintiff’s mark
is one of medium strength, clearly entitled to protection, but
falling short of the protection afforded an arbitrary or fanciful
mark.
2. Degree of Similarity between the Two Marks
[T]he key inquiry is . . . whether a similarity exists which is
likely to cause confusion. This test must be applied from the
perspective of prospective purchasers. Thus, it must be
determined whether “the impression which the infringing [mark]
makes upon the consumer is such that he is likely to believe the
product is from the same source as the one he knows under the
trademark.” In making this determination, it is the overall
impression of the mark as a whole that must be considered.
Turning to the two marks involved here, various similarities and
differences are readily apparent. The patent similarity between
the marks is that they both employ the phrase, “R” Us. Further,
both marks employ the letter “R” in place of the word “are,”
although the plaintiff’s mark uses an inverted capitalized “R,”
while the defendants generally use a non-inverted lower case
“r” for their mark.
The most glaring difference between the marks is that in one the
phrase “R” Us is preceded by the word “Toys,” while in the
other it is preceded by the word “Kids.” Other differences
include the following: plaintiff’s mark ends with an exclamation
7. point, plaintiff frequently utilizes the image of a giraffe
alongside its mark, plaintiff’s mark is set forth in stylized
lettering, usually multi-colored, and plaintiff frequently utilizes
the words, “a children’s bargain basement” under the logo in its
advertising.
I attach no great significance to the minor lettering differences
between the marks, or to the images or slogans usually
accompanying the plaintiff’s mark. . . . While the marks are
clearly distinguishable when placed side by side, there are
sufficiently strong similarities to create the possibility that
some consumers might believe that the two marks emanated
from the same source. The similarities in sound and association
also create the possibility that some consumers might mistake
one mark for the other when seeing or hearing the mark alone.
The extent to which these possibilities are “likely” must be
determined in the context of all the factors present here.
3. Proximity of the Products
Where the products in question are competitive, the likelihood
of consumer confusion increases. . . . [B]oth plaintiff and
defendants sell children’s clothing; . . . the plaintiff and
defendants currently are direct product competitors.
4. The Likelihood That Plaintiff Will “Bridge the Gap”
“[B]ridging the gap” refers to two distinct possibilities: first,
that the senior user presently intends to expand his sales efforts
to compete directly with the junior user, thus creating the
likelihood that the two products will be directly competitive;
second, that while there is no present intention to bridge the
gap, consumers will assume otherwise and conclude, in this era
of corporate diversification, that the parties are related
companies. . . . I find both possibilities present here.
5. Evidence of Actual Confusion
Evidence of actual confusion is a strong indication that there is
a likelihood of confusion. It is not, however, a prerequisite for
the plaintiff to recover.
6. Junior User’s Good Faith
The state of mind of the junior user is an important factor in
8. striking the balance of the equities. In the instant case, Mr.
Pomeranc asserted at trial that he did not recall whether he was
aware of the plaintiff’s mark when he chose to name his store
Kids “r” Us in 1977.
I do not find this testimony to be credible. In view of the
proximity of the stores, the overlapping of their products, and
the strong advertising and marketing effort conducted by the
plaintiff for a considerable amount of time prior to the
defendants’ adoption of the name Kids “r” Us, it is difficult to
believe that the defendants were unaware of the plaintiff’s use
of the Toys “R” Us mark.
The defendants adopted the Kids “r” Us mark with knowledge
of plaintiff’s mark. A lack of good faith is relevant not only in
balancing the equities, but also is a factor supporting a finding
of a likelihood of confusion.
7. Quality of the Junior User’s Product
If the junior user’s product is of a low quality, the senior user’s
interest in avoiding any confusion is heightened. In the instant
case, there is no suggestion that the defendants’ products are
inferior, and this factor therefore is not relevant.
8. Sophistication of the Purchasers
The level of sophistication of the average purchaser also bears
on the likelihood of confusion. Every product, because of the
type of buyer that it attracts, has its own distinct threshold for
confusion of the source or origin.
The goods sold by both plaintiff and defendants are moderately
priced clothing articles, which are not major expenditures for
most purchasers. Consumers of such goods, therefore, do not
exercise the same degree of care in buying as when purchasing
more expensive items. Further, it may be that the consumers
purchasing from the plaintiff and defendants are influenced in
part by the desires of their children, for whom the products
offered by plaintiff and defendants are meant.
9. Junior User’s Goodwill
[A] powerful equitable argument against finding infringement is
created when the junior user, through concurrent use of an
9. identical trademark, develops goodwill in their [sic] mark.
Defendants have not expended large sums advertising their store
or promoting its name. Further, it appears that most of the
defendants’ customers are local “repeat shoppers,” who come to
the Kids “r” Us store primarily because of their own past
experiences with it. In light of this lack of development of
goodwill, I find that the defendants do not have a strong
equitable interest in retaining the Kids “r” Us mark.Conclusion
on Likelihood of Confusion
[T]he defendants’ use of the Kids “r” Us mark does create a
likelihood of confusion for an appreciable number of
consumers.
In reaching this determination, I place primary importance on
the strong secondary meaning that the plaintiff has developed in
its mark, the directly competitive nature of the products offered
by the plaintiff and defendants, the plaintiff’s substantially
developed plans to open stores similar in format to those of the
defendants’, the lack of sophistication of the purchasers, the
similarities between the marks, the defendants’ lack of good
faith in adopting the mark, and the limited goodwill the
defendants have developed in their mark.*
Judgment for the Plaintiff, Toys “R” Us.Critical Thinking About
The Law
Legal reasoning and decision making almost always entail a
reliance on tradition. In Case 14-1, the court’s deference to
tradition is especially strong. In applying the “classic factors”
to the case, the court judges the present case on the basis of the
way in which an allegedly similar earlier case was judged.
The implications of relying on tradition in legal reasoning are
quite significant. The questions that follow will help you to
consider this significance more deeply.
1. To demonstrate your ability to recognize reasoning by
analogy, identify the implicit analogy that pervades the court’s
reasoning in Case 14-1.
Clue: Consider the source of the “classic factors.”
2. What important piece of missing information hinders your
10. ability to make a sound critical judgment about the
appropriateness of the court’s reasoning?
Clue: Refer to your answer to Question 1; it is directly related
to this question.
The potential for consumer confusion seems to be a very
important consideration in a trademark-infringement case. In
the Dentyne Ice chewing gum case, the court ruled that there
was little possibility for consumer confusion between “Dentyne
Ice” and “Icebreakers” because Dentyne was a common
household name; thus, Dentyne did not infringe on Nabisco’s
trademark.Applying the law to the facts . .
Your roommate cannot find a summer job. He decides that he is
going to make money instead by selling silkscreened T-shirts
that have a picture of an upside down “swoosh” underneath the
words “JUST DONE IT.” He asked your opinion of his proposed
business venture. What do you tell him?Trade Dress
The term trade dress refers to the overall appearance and image
of a product. Trade dress is entitled to the same protection as a
trademark. To succeed on a claim of trade-dress infringement, a
party must prove three elements: (1) the trade dress is primarily
nonfunctional; (2) the trade dress is inherently distinctive or has
acquired a secondary meaning; and (3) the alleged infringement
creates a likelihood of confusion.
trade dress
The overall appearance and image of a product that has acquired
secondary meaning.
The main focus of a case of trade-dress infringement is usually
on whether or not there is likely to be consumer confusion. For
example, in a 1996 case, Tour 18, Limited, a golf course, copied
golf holes from famous golf courses without permission of the
course owners.1 In copying a hole from one of the most famous
courses in the country, Harbour Town Hole 19, the defendant
even copied the Harbour Town Lighthouse, which is the
distinctive feature of that hole. In its advertising, Tour 18
prominently featured pictures of this hole, including the
lighthouse. The operator of the Harbour Town course sued Tour
11. 18 for trade-dress infringement. The court found that there was
infringement and made Tour 18 remove the lighthouse and
disclaim in its advertising any affiliation with the owner of the
Harbour Town course.
1 Pebble Beach Co. v. Tour 18, Ltd. 942 F. Supp. 1513 (S.D.
Tex. 1996).
Trade-dress violations occur over a wide range of products. Two
very different examples of trade-dress infringement
include Bubba’s Bar-B-Q Oven v. Holland Co.,2 and Two Pesos
v. Taco Cabana.3 In the first case, Bubba’s had almost exactly
copied the physical appearance of Holland Company’s very
successful gas-fired barbecue grill, which the court found to be
trade-dress infringement. In the second case, the court found
that Taco Cabana’s trade dress consisted of “a festive eating
atmosphere having interior dining and patio areas decorated
with artifacts, bright colors, paintings and murals”; “a patio that
has interior and exterior areas with the interior patio capable of
being sealed off from the outside patio by overhead garage
doors”; a stepped exterior of the building that has “a festive and
vivid color scheme using top border paint and neon stripes”;
and “bright awnings and umbrellas.”*When Two Pesos opened a
series of competing Mexican restaurants that mimicked those
features almost exactly, the court found Two Pesos guilty of
trade-dress infringement.
2 175 F.3d 1013; Docket No. 98-1029 (4th Cir. 1999).
3 112 S. Ct. 2753 (1994).
A claim of trade-dress infringement is often accompanied by a
claim of trademark infringement. For example, the
Chippendale’s name is protected as a trademark, and their
dancers’ costume—cuffs and a collar—is protected as trade
dress. Chippendale’s sued a European gaming machine
manufacturer who had made and distributed “Chickendale’s”
slot machines featuring dancing chickens wearing cuffs and
collars. The case settled in 2010 with Chippendale’s receiving a
cash settlement and the transfer of the mark Chickendale’s to
them.4
12. 4 Chippendales USA, LLC v. Atronic Americas, LLC, Civ. No.
03-904 (D.N.J.), as reported at Chippendale’s website. Accessed
April 20, 2010
at http://www.chippendales.com/company/victories.php.Technol
ogy and the Legal Environment Trademarks and Domain Names
If a business has a very strong trademark, what better domain
name to have than that trademark? Unfortunately, the same
trademark may be owned by two companies selling
noncompeting goods, yet there can be only one user of any
single domain name.
Domain names are important because they are the way people
and businesses are located on the Web. A domain name is made
up of a series of domains separated by periods. Most websites
have two domains. The first-level domain, the one that the
address ends with, generally identifies the type of site. For
example, if it is a government site, it will end in gov. An
educational site will end in edu, a network site in net, an
organization in org, and a business in com or biz. These top-
level domain names are the same worldwide.
Until recently, these top-level domain names had to be in Latin
language script. However, as of mid-2010, four countries
(Egypt, the Russian Federation, Saudi Arabia, and the United
Arab Emirates) have been authorized to use their own non-Latin
language scripts in the top-level domain portion of their
Internet address names.
The second-level domain is usually the name of whoever
maintains the site. For a college, for example, it would be an
abbreviation of the college, as in bgsu. Businesses generally use
their firm name or some other trademark associated with their
product, because that name will obviously make it easier for
their customers to find them.
So, how does a firm go about securing a domain name that
reflects its trademark? The Internet Corporation for Assigned
Names and Numbers (ICANN) is the nonprofit corporation that
is responsible for coordinating technical Internet functions,
including the management of the domain name system. ICANN
13. has accredited a number of companies, called registrars, to issue
domain names to the public and place their owners’ information
on the registry. Network
Solution
s, Inc. (NSI), which is funded by the National Science
Foundation, was the first registrar, but has now been joined by
several other firms. A list of ICANN-accredited registrars can
be found at http://www.icann.org/en/registrars /accredited-
list.html.
Anyone seeking to register a domain name should contact one of
these registrars and provide the necessary contact information
so that a domain name can be issued. A registrant must now
state in its application that the name will not infringe on anyone
else’s intellectual property rights, that the name is not being
registered for an unlawful purpose, that statements in the
registration agreement are complete and accurate, and that the
domain name will not be knowingly used in violation of any
law. Registrars have the flexibility to offer initial and renewal
registrations in 1-year increments, for up to 10 years.
Domain names may be cancelled or transferred when a
complaint is filed with ICANN and the dispute is resolved
against a registrant in an administrative proceeding held in
accordance with the Uniform Domain Name Dispute Resolution
14. Policy. Claims subject to dispute resolution include allegations
that your domain name is confusingly similar to a trademark or
service mark in which the complainant has rights and that your
domain name has been registered and is being used in bad
faith.5
5 ICANN Uniform Domain Name Dispute Resolution
Policy, available at www.icann.org/udrp /udrp-policy-
24oct99.htm.
Some firms have tried to get the domain name they desire by
going to another country. That alternative is certainly a
possibility. Many countries, however, require that a firm be
incorporated within their borders before it can gain the right to
the domain name there. Also, an additional problem is that
trademark law relating to domain names is even more unclear
abroad.
For the new entrepreneur, the best advice is to try to
simultaneously apply for federal trademark protection and
register the domain name; for those not yet on the Web, the
sooner you get your domain name, the more likely you are to
get the name you want. Moreover, if you feel that your mark is
being violated by another’s domain name, you may want to sue
them for infringement, because the unauthorized use of
another’s trademark in a domain name has been found to be
illegal. You may, however, be in for quite a fight, because this
is a new area of the law.Federal Trademark Dilution Act of
15. 1995
Under the Lanham Act, trademark owners were protected from
the unauthorized use of their marks on only competing goods or
related goods where the use might lead to consumer confusion.
Consequently, a mark might be used without permission on
completely unrelated goods, thereby potentially diminishing the
value of the mark. In response to this problem, a number of
states passed trademark dilution laws, which prohibited the use
of “distinctive” or “famous” trademarks, such as McDonald’s,
even without a showing of consumer confusion.
In 1995, Congress made similar protections available at the
federal level with the Federal Trademark Dilution Act (FTDA).
Trademark dilution occurs through either “blurring” or
“tarnishment.” Blurring occurs when the distinctiveness of the
famous mark is reduced by its association with a similar mark.
For example, in 2011, the Trademark Trial and Appeal Board
found that the use of the mark “JUST JESU IT” would cause
dilution by blurring of Nike’s “JUST DO IT” mark. Tarnishment
occurs when someone uses a mark in a way that causes the
famous mark to be linked with an inferior quality product or an
unwholesome category of products. For example, using
candyland.com for a child pornography site constituted dilution
by tarnishment of Hasbro’s trademarked “Candyland” for its
children’s board game.6
6 Hasbro Inc. v. Internet Entm’t. Grp., Ltd.
16. In one of the first cases decided under the FTDA, the court said
that the protection available under this act extended not just to
identical marks but also to similar marks. In that case, Ringling
Brothers–Barnum & Bailey challenged Utah’s use of the slogan
“The Greatest Snow on Earth” as diluting its famous slogan,
“The Greatest Show on Earth.” In denying Utah’s motion to
dismiss because the slogans were not identical, the court said
that the marks need not be identical to dilute a famous mark. In
the case below the plaintiff alleged both trademark infringement
and trademark dilution. Case 14-2 Victor Moseley and Cathy
Moseley et al., dba Victor’s Little Secret v. V Secret Catalogue,
Inc. et al.
Supreme Court of the United States 537 U.S. 418, 123 S. Ct.
1115 (2003)
Petitioners, Victor and Cathy Moseley, own and operate an
adult novelty store named “Victor’s Secret” in a strip mall in
Elizabethtown, Kentucky. An army colonel saw an
advertisement for the store and thought petitioners were using a
reputable trademark to promote unwholesome merchandise, so
he sent a copy of the advertisement to respondents, the
corporations that own the Victoria’s Secret trademarks. These
corporations operate more than 750 Victoria’s Secret stores and
spent more than $55 million advertising their brand in 1998.
Respondents asked petitioners to discontinue using the name,
and they responded by changing the store’s name to “Victor’s
17. Little Secret.” Respondents then filed a lawsuit containing four
separate claims for (1) trademark infringement, alleging that
petitioners’ use of their trade name was “likely to cause
confusion and/or mistake”; (2) unfair competition, alleging
misrepresentation; (3) “federal dilution” in violation of the
FTDA; and (4) trademark infringement and unfair competition
in violation of the common law of Kentucky. The dilution count
was premised on the claim that petitioners’ conduct was …