Topics

• Passing Off
• False Ad
• Commercial Disparagement
• Misapprop.
• T Dilution

Passing Off

1. Trade Dress (TD)
   1. Protections
      1. Packaging / decor so like arr. items, etc.
      2. Can't protect fn'al like lighting fixtures
   2. L Act §43)a
      1. Need proof of likely confusion 4 liab. so TD strength relev.
   3. Inherent Distinctiveness
      1. If inherently distinctive, protectible by §43)a w/o 2nd meaning (maj., 2 Pesos)
         1. Hard 2 def. inherent distinctiveness
         2. Could use taxanomy of sugg. / arb. stuff (Paddington)
         3. But not if only use combo of elements in dif. way (Turtle Wax)
      2. Always show 2nd meaning (min.)
   4. Product Configuration
      1. Gen'ly not inherently distinctive & need 2nd meaning
      2. Three part test 4 inherent distinctive (Duraco)
         1. Unusual & memorable 2 disting. goods so buyer rsbly rely 4 source ID
         2. Conceptually sep. from prod. so source indicator
         3. Likely 2 prim'ly serve as designator of source of prod.
      3. Need likelihood of pub. confusion 4 liab. even if protectible

False Advertising

1. L Act §43)a: False Ad of Misrep. of 1's own / Another's Good
   1. Reqts
      1. False / misleading stmt of fact about own (D's) prod.
      2. Stmt actually deceived / could deceive subst'l segment of pub.
      3. Stmt material so influence buying dec.
      4. Interstate commerce nexus
      5. Proper P, 1 who has been / likely 2 B injured
   2. Competitor's Remedy Not Buyer's Remedy
2. Hand's Test (Ely Norris)
   1. P must show ascertainable loss, dir. diversion of sale
      1. Need diversion proof 4 damage, but not 4 injunction (Johnson)
      2. Need only 4 damages / likely damage (rsbl belief) (Johnson)
   2. P must have lost customers by means law forbids
3. State Law
   1. Not req. diversion of trade

Commercial Disparagement

1. Before 1988
   1. Axn'able Under §43)a
      1. If D misrep. own good not 4 P's
   2. State C/L
      1. P had 2 plead spec. damages
      2. D had puffing privilege
2. After 1988
   1. False Rep. About P's & D's Goods
   2. P not show spec. damage
   3. D can do some puffing but unduly favorable gen. comparisons isn't puffing
3. L Act §43)a: Limited 2 Commercial

Misapprop.

1. Case by Case Det.
   1. Protecting people who spent X & labor v. freedom 2 duplicate
2. Gen. Reqt's 4 Misapprop.
   1. Q-prop. created by subst'l investment of X, $, effort, & labor
      1. Not reap where not sown / tort on free riding when cause injury (INS)
      2. Try 2 def. carefully b/c if 2 broad, can swallow up other C/A's
   2. D approp. @ little / no cost
   3. P injured by misapprop., ord'ly by diversion of profit
      1. Gen'ly if injury cont., misapprop. found (INS)
   4. Split on dir. competition reqt
3. Use of Formula
   1. Split on using stand. (Dow Jones; Golf)
4. New Rest 3rd Elim's Misapprop. altogether

T Dilution

1. Prevent Others From Diminishing Mark by UnAuth'ed Use
2. Reqt's 4 C/L
   1. Distinctive Mark Capable of Dilution by P
      1. Unique / acquired 2nd meaning
      2. Rest 3rd says mark suff'ly distinct if source sig. when encountered outside of goods / serv's which it is used
      3. Probably need more than local distinction (Wedgwood otherwise)
   2. Likelihood of Dilution
      1. Blurring
         1. Gen'ly 4 dif. goods, blur distinctive ID / effectiveness of mark
         2. Linkage of 2 uses of mark in buyer's mind
      2. Tarnishment
         1. D's use of mark w/goods lacking prestige so negative ass'n
3. Fed Anti-Dilution Stt: §43)c
   1. Reqt
      1. Owner of famous mark by strength factors but famous most imp.
      2. Comm'l use only
      3. Must dilute by lwring capacity of famous mark of ID'ing & disting'ign goods / serv's regardless of presence / absence of competition or likelihood of confusion
      4. Relief gen'ly injunctive
      5. D's wilful intent 2 trade w/P's reputation / cause dilution, then can get injunction, damages / profit (§43)c)2)
   2. Not Axn'able
      1. Use in comparative ad
      2. Non comm'l form
      3. All news forms
   3. Preemption
      1. Valid reg. is compl. bar 2 state dilution C/A (§43)c)3)

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12/2/1996

Ms. Haeji Hong

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