Trademarks

Question 1

Lanham Act

Answer 1

a. Can’t create product that will cause confusion among consumers

b. Remedy: Injunction and civil damages
Calls for use of Social Science (survey)

Question 2

Elgin Watch v. Elgin Clock

Answer 2

a. Case of first impression
b. Advertising (marketing research) firm conducts survey of retail jewelers

c. Judge says this is hearsay
Judge says instead 20-30 witnesses from across the country should be called

Question 3

Triangle Publications v. Rohrlich

Answer 3

a. Both used word “Seventeen”
i. Miss Seventeen’s girdles v. Seventeen magazine

b. Judge Frank conducts own survey
i. Viewed as improper because parties have to develop the facts, not the court

Question 4

Oneida v. National Silver

Answer 4

a. Silverware dispute
i. Princess Royal v. Coronation

b. Survey of housewives conducted
i. First time survey admitted as evidence
24 of the women were called as witnesses

Question 5

Zippo v. Rogers

Answer 5

a. Consumer confusion over lighters

Zippo Test
Hearsay Exception:

Surveys OK if -

1) necessary
2) trustworthy

Question 6

Amstar v. Domino’s Pizza

Answer 6

a. Appellate review determines fact finding is erroneous

No confusion between pizza and sugar

b. External validity question
i. Appellant surveyed housewives (not likely to buy pizza)
ii. Appellee surveyed young men (not likely to buy sugar)
1) Bogus surveys!

Question 7

Squirt v. Seven-Up

Answer 7

a. Squirt v. Quirst
i. Survey conducted after check-out line
ii. 4.3 % confusion not de minimus!

Question 8

Kroger v. Johnson & Johnson

Answer 8

a. Generic pain killer v. Tylenol

i. Survey showed confusion

Question 9

La Victoria v. Curtice-Burns

Answer 9

a. SALSA SUPREMA v. LA SUPREMA

i. Survey shows consumer confusion

Question 10

Damages

Answer 10

Plaintiff surveys used to determine damages

Question 11

Kis v. Foto Fantasy

Answer 11

a. Photo booth using Tom Cruise/Marylin Monroe pictures

b. Foto moves to strike Dr. Howard’s expert study/testimony
i. Experimental/Control group
1) Experimental group contained a sketch of Tom Cruise
2) 7% of control group still thought that Tom Cruise endorsed Foto Fantasy

ii. Foto argues that survey questions were leading and a real photo booth in a mall wasn’t used; only a picture of a booth (unrealistic)

Question 12

Pharmacia Corp. v. Alcon Labs

Answer 12

a. Glaucoma drugs named Xalatan and Travatan sound similar

b. Dr. Diamond surveys eye doctors because they are “market gate-keepers” (not consumers; similar to survey of jewelers in Elgin watch case)
Used same questions that Pharmacia (P) used in previous case…very nice work D!

Question 13

Fortune Dynamic v. Victoria Secret

Answer 13

i. Online survey allowed
1) conducted according to accepted principles and is relevant

ii. shows consumer confusion

Question 14

Evolution of surveys

Answer 14

Door to door/Telephone/Web

Question 15

Overall standard for consumer confusion surveys

Answer 15

overall standard is preponderance of evidence (51%):

a. The standard in a survey is not 51% consumer confusion; just more likely than not to confuse
b. Just has to be increased confusion!
c. Most judges will allow surveys to avoid appeal

Question 16

Thermos test

Answer 16

a. Term Thermos is used for all like type bottles
b. Victim of own success (“Genericide”)
c. Companies go to great lengths in advertising to avoid becoming generic name

Question 17

Teflon Model

Answer 17

By survey, Teflon shown to be identified as a brand name as opposed to generic