September 5-6, 2000
I. Unfair Competition - Cont'd
G. False advertising - Lanham Act § 43(a)
1. Requirements:
a. False or misleading
b. Interstate commerce
HYPO:
X = red bricks, NC clay
Y = red bricks, NC clay but made in VA
Y advertises nationally made by XY’s ad says NC bricks but made in VA
2. False or misleading description
a. Y’s ad touts qualities bricks don’t have
b. Y says bricks come from NC
3. Yours or another’s goods
See Monoflo Int’l v. Sahm, 726 F.Supp. 121 (E.D. Va. 1989)
4. Fact not opinion
5. Categories of actionable commercial advertising relating to goods
a. Nature
b. Characteristics
c. Qualities
d. Geographical origin
6. Commercial activity
Gordon & Breach v. Amer. Inst. of Physics, p. 114 - Actionable statements must be:
a. Commercial speech
b. By a D in competition with P
c. For purpose of influencing consumers to buy D's goods or services
d. Disseminated sufficiently to relevant purchasing public
to constitute advertising or
promotion within that industry.
7. Lanham Act damages
a. Injunctions
INJUNCTIONS
| NATURE OF AD | PROOF |
| Literally false | No need to show public reaction |
| Implicitly false | Actual deception must be shown |
b. Damages
DAMAGES
| REMEDY | P MUST SHOW | PROOF |
| P's damage | Actual confusion | Actual damages |
| D's profits | Actual confusion | D acted willfully or in bad faith |
| Injunction | Likelihood of deception | Surveys? |
8. Consumer suits under § 43(a)
9. Comparative false advertising
AD CONTENT / PROOF
| D's AD | P's BURDEN |
| Claims product superiority | Prove D's product equal or inferior |
| Rests on studies to show superiority | Show tests did not establish proposition for which cited |
10. Disparagement by others
a. Actual malice standard
b. Non-competitors only
H. Section 44 (b)
1. International conventions - Benefits of section to
persons whose country of
origin is party to convention or treaty
2. "shall be entitled to the benefits of
this section under the conditions expressed
herein to the extent necessary to give effect to any provisions of such
convention or treaty"
I. Remedies
1. Injunctions
2. Damages
a. Actual
b. Accounting of D‘s profits
c. Punitive damages
d. Special damages - disparagement
See Callman,
The Law of Unfair Competition, Trademarks and Monopolies (4th ed. 1981),
6 vols. in
9, looseleaf
II. TRADEMARK
A. What is a TM?
1. A TM = Word Happy Meal
Name McDonald's
Symbol
Device
That distinguishes one's goods from another’s
2. Protects interests associated with mark, owner & public
3. 4 interests served:
a. Consumer
b. Owner
c. Free competition
d. Public interest
4. Generally rights accrue through use
a. Affixation
b. Commercial distribution
5. Registration = use-based or intent to use
a. Fit into one of four registratable categories
b. Device adopted & used to distinguish goods or services
c. Distinctive
d. Must not be confusingly similar to another mark
6. TM must indicate origin of goods
B. Common law TM rights accrue through use
1. Kellogg, p. 165
a. Word, name, symbol or device
b. Includes non-functional aspects of product
c. Goodwill
HYPO:
A = mfg’rs NOODLE-O’s
B makes PASTAFINA noodle-o’s
d. Generic names - no
e. Secondary meaning required
f. Prevent consumer confusion
1. Product
2. Source