Trademark Law – Fall 2024 – A Running Outline of Class Discussions

The conversation centered around the importance of practical problem-solving in teaching law school cases, with a focus on uncertainty and stress in practicing law. Speakers also discussed the legal implications of universities partnering with external brands for merchandise, including concerns about product quality and potential liability. Additionally, they explored the purpose of trademark law as a system for solving economic and market-related issues, while addressing free speech and constitutional law concerns. Finally, they discussed Walmart’s recent logo change and its psychological impact on consumer perception, as well as trademark disputes surrounding the term ‘Taco Tuesday’.

The meeting discussed the importance of goodwill in trademark law, emphasizing that trademarks embody goodwill, which is the symbolic meaning of the trademark in consumers’ minds. Trademarks must be distinctive and used consistently to maintain goodwill. The class reviewed case studies, including Tyco’s acquisition by Mattel and FreeCycle’s logo usage issues, highlighting the complexities of trademark ownership and licensing. The discussion also covered the differences between assignment, gross, and naked licensing, and the potential impact of virtual use on trademark value, using the example of BMW’s virtual car in a video game.

The meeting focused on the concept of trademark distinctiveness, using the Abercrombie spectrum to classify trademarks as generic, descriptive, suggestive, arbitrary, or fanciful. Key case studies, including Abercrombie & Fitch v. Hunting World and examples like “Snap” for syringes and “Boston Duck Tours” versus “Super Duck Tours,” were discussed to illustrate the application of these classifications. The importance of understanding trademark validity, consumer perception, and competitive necessity in trademark law was emphasized.

The meeting focused on trademark validity, particularly the Abercrombie spectrum, and the distinction between descriptive marks with and without secondary meaning. The discussion included a hypothetical scenario about naming a winery, emphasizing the importance of distinctiveness and consumer perception in trademark law. Additionally, the meeting covered the complexities of color trademarks in the context of college sports and the booking.com case, highlighting the challenges of determining generic status and acquired distinctiveness.

The meeting discussed the concept of trade dress in trademark law, using examples like In-N-Out Burger, Taco Bell, and Boise State’s blue football field to illustrate the complexities of distinctiveness, functionality, and ornamentality. Key Supreme Court cases such as Two Pesos v. Taco Cabana, Qualitex v. Jacobson Products, and Walmart v. Samara Brothers were reviewed to highlight the legal standards for trade dress protection. The importance of distinguishing between product configuration and product packaging in determining inherent distinctiveness and secondary meaning was emphasized.

The meeting discussed the concept of functionality in trademark law, using the example of Maker’s Mark’s red wax seal and its lawsuit against Jose Cuervo. The discussion covered the criteria for determining whether a design is functional, referencing key cases like Morton Norwich and Traffix, and examined the implications of utilitarian and competitive need functionality. The session concluded with examples such as the Zippo lighter and Gibson guitar body, highlighting the complexities in defining and protecting trade dress.

The discussion focused on aesthetic functionality and trademark protection, shifting from utilitarian functionality to the impact of color schemes and trade dress on consumer perception. Key cases included the University of Alabama vs. [Moore] for using crimson and white colors, and Christian Louboutin vs. Yves Saint Laurent over red-soled shoes. The conversation also covered Wallace Silversmiths vs. Godinger on silverware trade dress, John Deere vs. Fimco on green and yellow farm equipment, and Kendall-Jackson vs. Turning Leaf on wine bottle design. The importance of market analysis, consumer behavior, and the balance between trademark protection and competition were emphasized.

The meeting covered the upcoming assignment due on October 4, with a discussion on trademark laws and their implications. Key points included the importance of trademark distinctiveness, the bars to protection such as deceptive and geographically misdescriptive marks, and the role of trademarks in ensuring accurate consumer information and protecting competition. Examples like “Cafeteria” and “Alaska Milk” were used to illustrate these concepts. The conversation also touched on the use of trademarks in song lyrics, such as “Uptown Funk” and “Royals,” and the balance between trademark protection and free expression.

The discussion focused on trademark law, emphasizing the requirements of distinctiveness and use in commerce. The professor highlighted the importance of bona fide use and the concept of goodwill. Examples included band name disputes, such as The Smiths and Earth, Wind & Fire, and the Captain Cannabis case. The professor also discussed the Los Angeles Dodgers’ successful registration of the “Los Doyers” trademark, despite fan-produced merchandise. The session underscored the need for trademark owners to demonstrate genuine use and the potential for constructive use and intent to use.

The discussion covered the practical aspects of trademark law, focusing on registrations. Key points included the importance of trademark registrations for nationwide priority, presumption of validity, and incontestability. The process involves filing with the USPTO, potential opposition, and administrative litigation. Examples like Super Bakery’s Pantheraid and the University of Pittsburgh’s opposition were discussed. The session also highlighted the role of trademark registrations in preventing infringement and the potential for statutory damages. Practical considerations, such as the use of the TM and SM symbols and the importance of maintaining registrations, were also emphasized.

The meeting focused on the first assignment for the class, emphasizing the importance of citations and the need for consistency in formatting. The instructor clarified that citations should include full case names and details, not just shorthand. The discussion also covered the importance of thinking like junior lawyers and considering audience and priorities in assignments. Examples included trademark disputes between Kansas State University and Northwestern University, and the Burger King and Dawn Donut cases, highlighting the impact of geographic considerations and the need for actual use in the defendant’s geographic area for trademark infringement claims.

The discussion covered the basics of trademark law, emphasizing the importance of geography and use in determining trademark validity. It highlighted a Pittsburgh-themed trademark dispute involving “Hot Dogma” and “Dogma Grill,” and a case involving Grupo Gigante’s trademark in San Diego. The lecture also explored the historical context of trademark law, contrasting pre-1946 and modern approaches. Key cases included Borden’s Condensed Milk vs. Borden’s Ice Cream, Yale vs. Yale, and Polaroid vs. Polarad. The lecture concluded with a modern case involving Virgin Megastores and a kiosk selling cell phones, illustrating the application of multi-factor analysis in trademark infringement cases.

The discussion focused on trademark infringement, specifically the use of trademarks in commerce. Key points included the necessity for plaintiffs to prove ownership of a valid trademark, unauthorized use by the defendant, and resulting likelihood of confusion. Examples such as Goodyear vs. Goodyear Pimps and Dunkin Donuts vs. Starbucks illustrated the complexities of trademark use in competitive markets. The conversation also explored the intersection of trademark law with free expression and market competition, highlighting cases like Holiday Inn vs. 1-800-405-4329 and the Radiance Foundation. The importance of clear legal standards and the role of consumer behavior in trademark disputes were emphasized.

The discussion focused on trademark infringement, specifically the elements of a case for likely confusion. Key points included the necessity for plaintiffs to prove ownership of a valid trademark, unauthorized use by the defendant, and likelihood of confusion, which includes passing off and appropriation of goodwill. The conversation highlighted the multi-factor tests, such as the Polaroid and LAP factors, and emphasized the importance of survey evidence and the strength of the plaintiff’s mark. Examples included Walmart’s lawsuit against a T-shirt producer using its name and the Bavaria beer promotion at the 2006 World Cup, illustrating the complexities of trademark law and consumer perception.

The discussion covered the grading process for the first assignment, expected to be completed by Friday or Saturday, with detailed feedback provided. The lecture then delved into trademark law, focusing on likelihood of confusion, reverse confusion, and reverse passing off. Examples included the “Fire TV” vs. Amazon case, where a smaller company sued a larger one for using a similar trademark, and the “Daystar” case, where a company added its name to public domain World War II documentaries, leading to a Supreme Court ruling on false designation of origin. The session concluded with the “banana” case, where the Velvet Underground sued the Andy Warhol Foundation for using a trademarked logo on smartphone cases, highlighting the conflict between copyright and trademark laws.

The meeting covered the upcoming schedule for assignments, with the second assignment due two weeks after distribution and the final assignment on the last day of exams. The focus was on remedies in trademark infringement cases, emphasizing the importance of injunctions and damages. Key points included the historical context of equitable relief, the role of expert witnesses in damages cases, and the practical considerations for obtaining injunctions. A case study involving Adidas suing Skechers over shoe designs highlighted the legal and practical complexities of trademark infringement claims. The discussion also touched on alternative dispute resolution methods and the role of online platforms like Amazon in trademark enforcement.

The discussion on trademark law covered various aspects, including the significance of the Terrible Towel, a trademark associated with the Pittsburgh Steelers, and its benefits to the Allegheny Valley School. The class explored the classification of trademarks, such as Pyrex, Keurig, and Scrubbing Bubbles, and debated the descriptiveness and suggestiveness of these names. They also examined the implications of using a name similar to an existing trademark, like “rollermark” for a rollerblading rental business, and the potential infringement issues. Finally, they discussed the complexities of trademark law in the context of criticism, using the hypothetical “Face Plant” as an example, highlighting the balance between free speech and trademark protection.

The discussion covered the evolution of trademark law, focusing on novel theories like initial interest confusion and post-sale confusion. Initial interest confusion involves consumer deception during the search phase, as exemplified by a hypothetical scenario where a restaurant uses a Coca-Cola logo to attract customers but serves Pepsi. Post-sale confusion occurs when consumers are confused about the source of a product after purchase, such as customized Volkswagen Beetles made to look like Rolls-Royces or Ferrari kits for Pontiac Fieros. The class debated the legitimacy of these claims, considering factors like consumer harm, brand dilution, and the role of trademark law in protecting high-end brand exclusivity.

The discussion on trademark dilution covered the complexities of this legal concept, emphasizing its distinction from trademark infringement. Key cases like Ferrari vs. Kitt Cars and Nike vs. Nike Powell were analyzed, highlighting the challenges in defining “blurring” and “tarnishment.” The conversation also explored the legislative history of dilution law, noting its origins in the 1920s and its refinement in the 1995 Lanham Act. Examples such as Pepperidge Farm vs. Nabisco and Starbucks vs. Charbux illustrated the difficulties in determining whether associations between marks harm the distinctiveness of famous trademarks.

The meeting focused on the second trademark law assignment, emphasizing the need for a structured email format with headings and a pyramid-like organization, starting with key points. The discussion covered a live dispute involving Victoria’s Secret and Victor’s Little Secret, highlighting the complexities of trademark dilution by tarnishment. Examples included Ford’s Edsel, New Coke, and Toblerone, illustrating how companies’ actions can harm their own brands. The conversation also explored the legal implications of comparative advertising, using John Deere and Microsoft as case studies, and the balance between consumer perception and trademark protection.

The discussion on trademark law focused on nominative fair use, a defense against trademark infringement claims. The instructor explained that nominative use occurs when a defendant uses a plaintiff’s trademark to refer to the plaintiff, emphasizing accuracy, necessity, and good faith. Examples included Chanel vs. Tehran, New Kids on the Block vs. News America Publishing, and Mattel vs. Walking Mountain Productions. The class also explored hypothetical scenarios, such as selling USC-branded merchandise without logos, and debated the legal implications of such actions. The session highlighted the balance between trademark protection and free speech, setting the stage for future discussions on First Amendment intersections with trademark law.

The meeting focused on trademark law and its intersection with free speech and the First Amendment. Key points included the instructor’s stance on the top hat attendance policy, emphasizing non-judgment and compliance. The discussion then shifted to the assignment due on Friday, advising students to avoid traditional issue spotting techniques and instead approach problems with independent judgment and collaboration. The session covered the complexities of trademark law, particularly in cases involving artistic expression, parody, and political commentary. Examples included Starbucks vs. Dwyer, Louis Vuitton vs. Hope Diggity Dog, and Jack Daniels vs. Bad Spaniels. The Supreme Court’s recent decision on Jack Daniels dog toys highlighted the challenges in balancing trademark protection with free speech rights.

The lecture covered several key points regarding trademark law and its evolving landscape. The third and final assignment for the semester will be released online by Wednesday, with feedback expected by the following Wednesday. The class will discuss the impact of Amazon and AI on trademark law, emphasizing the rapid changes in this field. The lecture also explored the intersection of trademark law with the First Amendment, using examples like Andy Warhol’s Campbell’s Soup can paintings and the band The Slants. The discussion highlighted the tension between trademark protection and free expression, with recent Supreme Court cases like TAM and Yonko vs. Brunetti illustrating the complexities of these issues.

The meeting covered the final trademark law assignment, due on the last day of exams, with options to submit as an email or a PowerPoint deck. The discussion then shifted to Amazon’s role in trademark law, highlighting their system for recognizing and resolving trademark disputes. The professor emphasized Amazon’s motivation to attract vendors by reducing counterfeiting risks and the implications of Amazon’s global dispute resolution system. The conversation also touched on the impact of Amazon’s practices on traditional trademark law, the role of consumer data, and the potential for contributory trademark infringement. The session concluded with a preview of the next class’s focus on the law review article.

[The important part of this class covered questions and responses having to do with the final writing assignment of the semester.

Because of a flaw in the human thinking controlling the mechanism that usually produces YouTube videos for the course, the “response” side of the class was not recorded. “It” happens, once in a while. The student questions were recorded. Here, I have reproduced the questions (edited slightly for clarity) and then created responses that are (one hopes) somewhat clearer and more durable and useful versions of the responses that were given during the class itself.

Question One

Yeah, taking a look at the prompt right now the section about the Boston Hockey case, where it says it’s a question of law, not facts, so don’t concern yourself with evidence of likelihood of confusion. So should we just mainly focus on the case standard from Boston Hockey, rather than making any likelihood of confusion argument?

Response to Question One

The point of the assignment is to get everyone to focus on points of law rather than on points of fact or evidence.  Do not wonder about the strength or weakness of the “likelihood of confusion” evidence in the Penn State case.  Wonder instead about the legal principle that Penn State is relying on and that the defendant, and other companies like the defendant, want to avoid or have distinguished.  The SFO v OAK airport case and the assignment came out of it were entirely about the evidence.  Who was likely to be confused, if anyone, and about what?  What was the evidence, and how strong was it, on each side?  There were no significant disagreements about the relevant points of law.  This assignment is the mirror image of that one.  Instead of investigating the evidence, investigate the law.  How and why should the law be different?  Explain, using relevant precedent. Are there multiple routes to a different outcome of the law?  Maybe.  Which routes are stronger, and which routes are weaker?

The Boston Hockey case is usually interpreted in practice as standing for a proposition of law, which is that unauthorized use of a protected trademark on merchandise (such as t-shirts and hats) creates the possibility of a finding of “likely confusion” because consumers may think that the trademark owner authorized the use of the trademark – not because consumers necessarily think that the trademark owner is the source of the merchandise (or endorsed it, sponsored it, or is affiliated with it).  (In the Penn State case itself, Penn State argued that Boston Hockey creates a kind of “per se” rule that leads to an automatic finding of likely confusion if the use of the mark on merchandise is unauthorized.  In the opinion that the assignment refers to, the district court rejected a “per se” rule.)  Boston Hockey points clearly in the direction of “confusion as to the source of the mark” rather than “confusion as to the source of the goods or services,” which is the usual basis for enforcing trademark rights.

Boston Hockey was decided a long time ago, and while the case has been challenged and questioned here and there, as a practical matter it is just about always followed in the lower courts.  Meanwhile, trademark doctrine and the public policy underlying trademark law have advanced in various ways in the US Supreme Court.  Maybe more recent rulings and statements by the Supreme Court would cause a lower court to think differently about the Boston Hockey case.  The purpose of the assignment is to ask everyone to think about what that “re-think” could and should look like. 

Question Two

My second question is similar to the other assignments. Do you want us to kind of lead with recommendations, or kind of like things to take away, or something in that respect? Or is this more of like a here’s the legal argument that I think you should run with?

Response to Question Two

The question sounds like an “either/or,” but in practice, and for this assignment, the two “choices” really amount to the same thing.  Start with the focus – your key points – then use the rest of the work to explain how and why you get to that result.  Do not “argue your way to a conclusion,” so that the legal argument reveals the key result at the end.

The “Modern Legal Writing” document that is linked from the course website also provides a detailed answer to this question, which I can summarize here.

The “usual” style of legal writing taught in most law schools, for memos and briefs, involves a geometry metaphor.  Imagine a triangle, with the point at the top and a wide, flat bottom.  It should be an equilateral triangle, where the two sides have equal lengths.  Then turn the triangle upside down, so that the point is at the bottom and the wide, flat part is at the top.  That upside down triangle gives you the structure of the “usual” style.  Start with a broad, introductory overview, especially of the relevant law and public policy, and then argue your way to a conclusion and recommendation or other takeaway point(s) at the end.

As a way to begin to learn legal writing, that upside down triangle is a useful introduction.  Identify and describe the relevant law, then identify and state the relevant facts, then apply the law to the facts.  That “logical reasoning” approach sounds simple, and it is often simple, and it is relatively easy to learn and apply.

In the real world, however, clients, senior lawyers, and judges often prefer a “right side up” triangle structure, with the essential conclusions and other takeaway points offered right up front, on the first page or first section of the work.  Your readers are busy and often impatient people who often do not have the time or the money to wade through pages and pages of text before getting to the answer.  They are not looking for “logical reasoning”; they are looking for help.  They are often skeptical of the “logical reasoning” approach, because it can come across as the legal writing equivalent of a mystery novel, where the killer is only revealed in the last chapter.  Instead, you want to provide an easy to understand, easy to follow answer to the question.  “Here is what you should do,” or “here is what we can do,” or “here is the argument that we should offer,” etc., depending on the specifics of the question(s) that are asked.  The answer goes up top – the pointy end of the triangle.  The rest of the work is explanation, justification and backup.  If there is logical reasoning to be found – stating and applying precedent, or telling persuasive stories, or filling in gaps with appeals to history or public policy – that goes in the “explanation, justification, or backup” paragraphs, with appropriate structure and sequence.

It may help to “see” the value in this approach by imagining what happens to your analysis if the reader “accidentally” deletes (or more likely, skips over) the last page or two or your work.  In an upside down triangle work, the full argument “tips over” and makes no sense.  An upside down triangle cannot stand up, and the killer, in the mystery novel metaphor, is never revealed.  In a proper triangle work, the core of the argument still holds up, because stripping out the bottom of the flat bottomed triangle leaves … another flat bottomed triangle.  The argument still holds up, metaphorically and literally speaking, because the reader already knows who the killer is.

Question Three

Last question about the assignment, if, if I was considering doing a PowerPoint presentation, is there anything specific you look for as far as, like, professional looking PowerPoint presentations go?

Response to Question Three

I do not have a “model” presentation or presentation template in mind.  That is why I point to some resources for “professional law firm” presentations, in the assignment.  In practice, many “professional” PowerPoint decks use graphics of one sort or another to bring a bit of professional polish to the slides.  In my experience in this class, students who choose the PowerPoint option often experiment with and end up using some sort of graphic design. Sometimes, I think, students collaborate with friends on the graphics.  But graphics and graphic design are not required.  “Spit and polish” are expected.

Question Four

In reading the assignment, especially towards the end of it, you mentioned the cases of KP Permanent Makeup and then Dastar as well. It sounds like you have kind of an argument in your head that you want us to be making. Like, being that you’re bringing up those cases too. Like, maybe it’s not a very full question, but like, or is there definitely an argument that makes sense for us to make based on those cases? Or, like, is there a clear way to go?

Response to Question Four

I do not have a preconceived belief or model of what the final argument could or should look like.  I intend that students should study and reflect on the law and then be creative and imaginative in figuring out what it means or what it might mean. 

Including references to those two cases is a way of giving students a nudge in a certain direction.  I am optimistic that including the nudge will be more helpful than omitting the nudge and asking students simply to stare at Boston Hockey and then come up with arguments based on whatever they can think of in the law today.  Also, of course the cases in the nudge are US Supreme Court cases, which by definition have at least persuasive power in all of the circuit courts.  In the Third Circuit itself, other circuit courts have no necessary persuasive power (although the Third Circuit might choose to follow them).  District court opinions and law review articles and appeals to public policy have no precedential weight at all.  The Third Circuit might adopt them or ignore them.

Although I have suggested starting with two Supreme Court cases, students are not limited to those and may decide even to ground their thinking in other cases altogether.

Question Five

I actually have a little bit of a minor question. If I if I could say so based I haven’t read the assignment properly yet, but based on everyone else’s comments, it seems we have to make recommendations for a client’s case. So my question is, because this is from a junior associate to a senior associate, and we’re giving them a legal analysis of what the client what’s best for the client, what should be the strength of the tone of the email that we’re sending? Are we giving them more of well, if this happens and it’s going to be this, if this happens and it’s going to be this, because you said that we don’t need to do a junior associate is not expected to know all the nitty gritties of evidence. So do we still give both sides, or do we make a stronger recommendation that this is how we should go about this?

Response to Question Five

I hope that a more careful reading of the assignment itself will provide most of the answer to this question.  The assignment does not ask for a recommendation for a client; it is a brainstorming exercise to help a senior partner figure out how to craft a legal argument.  The junior lawyer is asked to do something that junior lawyers are often asked to do: put their newly-acquired legal research brain power to work in an imaginative way.  There is no “both sides” to discuss, but there are stronger and possibly weaker ways to build out the argument that the senior partner imagines making.  If that’s right, then the work should be clear about which arguments are stronger and why, and which arguments are weaker and why.