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QUALITEX CO. v. JACOBSON PRODUCTS CO., INC.

FACTS: Petitioner Qualitex Company has for years


colored the dry cleaning press pads it manufactures with
a special shade of green gold. Respondent Jacobson
Products (a Qualitex rival) began to use a similar shade
on its own press pads, Qualitex registered its color as a
trademark and added a trademark infringement count to
the suit it had previously filed challenging Jacobson's use
of the green-gold color. Qualitex won in the District
Court, but the Ninth Circuit set aside the judgment on the
infringement claim because, in its view, the Trademark
Act of 1946 (Lanham Act) does not permit registration of
color alone as a trademark.
Issue:
Whether or not the Lanham Act permits the registration
of trademark that consist of simply of color.
HELD:
YES, the Lanham Act permits the registration of a
trademark that consists, purely and simply, of a color.
That color alone can meet the basic legal requirements
for use as a trademark is demonstrated both by the
language of the Act, which describes the universe of
things that can qualify as a trademark in the broadest of
terms and by the underlying principles of trademark law,
including the requirements that the mark "identify and
distinguish the seller's goods from those manufactured or
sold by others and to indicate their source and that it not
be "functional.
The District Court's findings show Qualitex's green-gold
color has met these requirements. It acts as a symbol.
Because customers identify the color as Qualitex's, it has
developed secondary meaning, and thereby identifies the
press pads' source. And, the color serves no other
function. (Although it is important to use some color on
press pads to avoid noticeable stains, the court found no
competitive need in the industry for the green-gold color,
since other colors are equally usable.) Accordingly,
unless there is some special reason that convincingly
militates against the use of color alone as a trademark,
trademark law protects Qualitex's use of its green-gold
color.
Jacobson's various special reasons why the law should
forbid the use of color alone as a trademark-that a
contrary holding (1) will produce uncertainty and
unresolvable court disputes about what shades of a color
a competitor may lawfully use; (2) is unworkable in light
of the limited supply of colors that will soon be depleted
by competitors; (3) is contradicted by many older cases,
including decisions of this Court interpreting pre-Lanham
Act trademark law; and (4) is unnecessary because firms
already may use color as part of a trademark and may
rely on "trade dress" protection-are unpersuasive.
Functionality doctrine - a product feature is functional,"
and cannot serve as a trademark, "if it is essential to the
use or purpose of the article or if it affects the cost or
quality of the article," that is, if exclusive use of the
feature would put competitors at a significant non-
reputation-related disadvantage.

VENANCIO SAMBAR doing business as CVS Garment
Enterprises, petitioner, vs. LEVI STRAUSS
FACTS: Private respondent, Levi Strauss and Co.
(LS&Co.), an internationally known clothing
manufacturer, owns the arcuate design trademark which
was registered under U.S. Trademark Registration No.
404, 248 and in the Principal Register of trademarks with
the Philippine Patent Office under Certificate of
Registration No. 20240 that through a Trademark
Technical Data and Technical Assistance Agreement
with Levi Strauss (Phil.) Inc. (LSPI) in 1972, LS&Co.
granted LSPI a non-exclusive license to use the arcuate
trademark in its manufacture and sale of Levis pants,
jackets and shirts in the Philippines. Sometime in 1987,
CVSGIC and Venancio Sambar, without the consent and
authority of private respondents and in infringement and
unfair competition, sold and advertised, and despite
demands to cease and desist, continued to manufacture,
sell and advertise denim pants under the brand name
Europress with back pockets bearing a design similar to
the arcuate trademark of private respondents, thereby
causing confusion on the buying public, prejudicial to
private respondents goodwill and property right. CVSGIC
claimed that it had its own original arcuate design, as
evidenced by Copyright Registration No. 1-1998, which was
very different and distinct from Levis design.
Issue: Whether there is an infringement of respondents
arcuate mark?
Whether or not cancellation of COPYRIGHT REGISTRATION
NO. 1-1998 is justified
HELD:
YES, there was infringement in this case. The
backpocket design of Europress jeans, a double arc
intersecting in the middle was the same as Levis mark,
also a double arc intersecting at the center. Although
they found differences in the two designs, these
differences were not noticeable. Further, infringement of
trademark did not require exact similarity. Colorable
imitation enough to cause confusion among the public,
was sufficient for a trademark to be infringed. Levis
Strauss explained that in a market research they
conducted with 600 respondents, the result showed that
the public was confused by Europress trademark vis the
Levis trademark.
YES, the cancellation of petitioners copyright was
justified because petitioners copyright cannot prevail
over respondents registration in the Principal Register of
Bureau of Patents, Trademarks, and Technology
Transfer. According to Levis, the essence of copyright
registration is originality and a copied design is inherently
non-copyrightable. They insist that registration does not
confer originality upon a copycat version of a prior
design.


Park N' Fly Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985)
FACTS:
Petitioner operates long-term parking lots near airports in St. Louis Cleveland, Houston, Boston, Memphis, and San
Francisco. In 1969, petitioner applied to the United States Patent and Trademark Office to register a service mark
consisting of the logo of an airplane and the words "Park 'N Fly." The registration issued in 1971, and nearly six
years later petitioner filed an affidavit with the Patent and Trademark Office to establish the incontestable status of
the mark under 33(b) of the Trademark Act of 1946 (Lanham Act), which provides that "registration shall be
conclusive evidence of the registrant's exclusive right to use the registered mark," subject to the provisions of 15
and 33(b) itself. Respondent provides long-term airport parking services called "Dollar Park and Fly," but only
operates in Portland, Ore. Petitioner filed an infringement action in Federal District Court seeking to enjoin
respondent from using the words "Park and Fly" in connection with its business. The District Court granted the
injunction, rejecting, inter alia, respondent's defense that petitioner's mark is unenforceable because it is merely
descriptive. The Court of Appeals reversed, holding that incontestability provides a defense against the cancellation
of a mark but may not be used offensively to enjoin another's use, that, under this analysis, petitioner could obtain an
injunction only if its mark would be entitled to continued registration without regard to its incontestable status, and
that therefore respondent could defend by showing that the mark was merely descriptive. The court then determined
that petitioner's mark is merely descriptive and respondent should not be enjoined from using the words "Park and
Fly."
ISSUE: Whether or not a registered mark may rely on incontestability to enjoin infringement?
HELD:
The holder of a registered mark may rely on incontestability to enjoin infringement, and an infringement action may
not be defended on the grounds that the mark is merely descriptive.
(a) The Lanham Act nowhere distinguishes between a registrant's offensive and defensive use of an incontestable
mark, but, on the contrary, 33(b)'s declaration that the registrant has an "exclusive right" to use the mark indicates
that incontestable status may be used to enjoin infringement. The Act's language also refutes any conclusion that an
incontestable mark may be challenged as merely descriptive.
(b) Nothing in the Lanham Act's legislative history supports a departure from the plain language of the provisions
concerning incontestability. Indeed, a conclusion that incontestable status may provide the basis for enforcement of
the registrant's exclusive right to use a mark promotes the Act's goals in providing national protection of trademarks
in order to secure to the mark's owner the goodwill of his business and to protect the ability of consumers to
distinguish among competing producers.
(c) There is no merit to respondent's argument that the Court of Appeals' decision should be upheld because
trademark registrations are issued after an ex parte proceeding and generally without inquiry into the merits of an
application. The facts of this case belie the suggestion that registration is virtually automatic, and respondent is
simply wrong to suggest that third parties do not have an opportunity to challenge applications for trademark
registration. The power of courts under the Lanham Act to grant injunctions "according to principles of equity" does
not encompass a substantive challenge to the validity of an incontestable mark on the grounds that it lacks
secondary meaning. Otherwise, the meaning of "equity" would be expanded to the point of vitiating the Act's more
specific provisions. Similarly, the power of courts to cancel registrations and "otherwise rectify the register" of the Act
must be subject to the specific provisions concerning incontestability.
CONCEPT OF SECONDARY MEANING recognizes that words with an ordinary and primary meaning of their own "may by long use
with a particular product, come to be known by the public as specifically designating that product."
Burden of proof: is with the plaintiff
Proof of secondary meaning with respect to descriptive marks in order to be protected.
Defense : fair use and in good faith
Suggestive term suggests, rather than describes, some particular characteristic of the goods or services to which it applies and
requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the goods and services
Ex. Coppertone
Arbitrary or fanciful terms bear no relationship to the products or services to which they are applied. Like suggestive terms,
arbitrary and fanciful marks are protectable without proof of secondary meaning.
Ex. Kodak



COFFEE PARTNERS, INC vs. SAN FRANCISCO COFFEE &
ROASTERY, INC.
FACTS:
Petitioner Coffee Partners, Inc. is a local corporation
engaged in the business of establishing and maintaining
coffee shops in the country. It has a franchise agreement
with Coffee Partners Ltd. (CPL), a business entity organized
and existing under the laws of British Virgin Islands, for a
non-exclusive right to operate coffee shops in the
Philippines using trademarks designed by CPL such as "SAN
FRANCISCO COFFEE."
Respondent is a local corporation engaged in the wholesale
and retail sale of coffee. It registered the business name
"SAN FRANCISCO COFFEE & ROASTERY, INC." with the
(DTI).
Respondent discovered that petitioner was about to open
a coffee shop under the name "SAN FRANCISCO COFFEE" in
Libis, Quezon City. According to respondent, petitioners
shop caused confusion in the minds of the public as it bore
a similar name and it also engaged in the business of selling
coffee.
Respondent filed a complaint with the Bureau of Legal
Affairs-Intellectual Property Office (BLA-IPO) for
infringement and/or unfair competition with claims for
damages.
BLA-IPO held that petitioners trademark infringed on
respondents trade name. Since respondent registered its
business name with the DTI in 1995 and petitioner
registered its trademark with the IPO in 2001 in the
Philippines and in 1997 in other countries, then respondent
must be protected from infringement of its trade name.
The BLA-IPO held that petitioners use of the trademark
"SAN FRANCISCO COFFEE" will likely cause confusion
because of the exact similarity in sound, spelling,
pronunciation, and commercial impression of the words
"SAN FRANCISCO" which is the dominant portion of
respondents trade name and petitioners trademark. It
held that no significant difference resulted even with a
diamond-shaped figure with a cup in the center in
petitioner's trademark because greater weight is given to
words the medium consumers use in ordering coffee
products.
The ODG-IPO reversed the BLA-IPO. It ruled that
petitioners use of the trademark "SAN FRANCISCO
COFFEE" did not infringe on respondent's trade name. The
ODG-IPO found that respondent had stopped using its
trade name after it entered into a joint venture with Boyd
Coffee USA in 1998 while petitioner continuously used the
trademark since June 2001 when it opened its first coffee
shop in Libis, Quezon City.
ISSUE: Whether petitioners use of the trademark "SAN
FRANCISCO COFFEE" constitutes infringement of
respondents trade name "SAN FRANCISCO COFFEE &
ROASTERY, INC.," even if the trade name is not registered
with the Intellectual Property Office (IPO).
HELD:
Yes, a trade name need not be registered with the IPO
before an infringement suit may be filed by its owner
against the owner of an infringing trademark. All that is
required is that the trade name is previously used in trade
or commerce in the Philippines.
Applying either the dominancy test or the holistic test,
petitioners "SAN FRANCISCO COFFEE" trademark is a
clear infringement of respondents "SAN FRANCISCO
COFFEE & ROASTERY, INC." trade name. The descriptive
words "SAN FRANCISCO COFFEE" are precisely the
dominant features of respondents trade name. Petitioner
and respondent are engaged in the same business of selling
coffee, whether wholesale or retail. The likelihood of
confusion is higher in cases where the business of one
corporation is the same or substantially the same as that of
another corporation. In this case, the consuming public will
likely be confused as to the source of the coffee being sold
at petitioners coffee shops. Petitioners argument that
"San Francisco" is just a proper name referring to the
famous city in California and that "coffee" is simply a
generic term, is untenable. Respondent has acquired an
exclusive right to the use of the trade name "SAN
FRANCISCO COFFEE & ROASTERY, INC." since the
registration of the business name with the DTI in 1995.
Thus, respondents use of its trade name from then on
must be free from any infringement by similarity. Of
course, this does not mean that respondent has exclusive
use of the geographic word "San Francisco" or the generic
word "coffee." Geographic or generic words are not, per
se, subject to exclusive appropriation. It is only the
combination of the words "SAN FRANCISCO COFFEE,"
which is respondents trade name in its coffee business,
that is protected against infringement on matters related
to the coffee business to avoid confusing or deceiving the
public.
DOMINANCY TEST - focuses on the similarity of the
prevalent features of the competing trademarks that might
cause confusion and deception, thus constituting
infringement. If the competing trademark contains the
main, essential, and dominant features of another, and
confusion or deception is likely to result, infringement
occurs. Exact duplication or imitation is not required. The
question is whether the use of the marks involved is likely
to cause confusion or mistake in the mind of the public or
to deceive consumers.
HOLISTIC TEST - entails a consideration of the entirety of
the marks as applied to the products, including the labels
and packaging, in determining confusing similarity. The
discerning eye of the observer must focus not only on the
predominant words but also on the other features
appearing on both marks in order that the observer may
draw his conclusion whether one is confusingly similar to
the other.

Zatarains, Inc., Plaintiff-appellant v. Oak Grove Smokehouse,
Inc. and Visko's Fish Fry, Inc. defendants-appellees
FACTS:
Zatarain's is the manufacturer and distributor of these
products, "Fish-Fri" and "Chick-Fri," are coatings or batter
mixes used to fry foods. The term "Fish-Fri" has been used by
Zatarain's or its predecessor since 1950 and has been
registered as a trademark since 1962. Zatarain's began to use
the term "Chick-Fri" in 1968 and registered the term as a
trademark in 1976.
Zatarain's products are not alone in the marketplace. At least
four other companies market coatings for fried foods that are
denominated "fish fry" or "chicken fry." Appellee Oak Grove
Smokehouse, Inc. ("Oak Grove") began marketing a "fish fry"
and a "chicken fry" in March 1979. Appellee Visko's Fish Fry,
Inc. ("Visko's") entered the batter mix market in March 1980
with its "fish fry."
Zatarin filed against Oak Grove complaint alleged trademark
infringement and unfair competition and later amended to
add Viskos as defendant.
The district court held that the alleged infringers had a "fair
use" defense to any asserted infringement of the term "Fish-
Fri" and that the registration of the term "Chick-Fri" should be
cancelled.
ISSUE: Whether the word or phrase is initially registerable or
protectable.
HELD:
YES, Fish-Fri is a descriptive mark which acquire secondary
meaning therefore registrable.
A number of tests are used in classifying a mark as
descriptive.
First, A suitable starting place is the dictionary, definitions
for the term "fish fry": "1. a picnic at which fish are caught,
fried, and eaten; .... 2. fried fish." Thus, the basic dictionary
definitions of the term refer to the preparation and
consumption of fried fish. This is at least preliminary
evidence that the term "Fish-Fri" is descriptive of Zatarain's
product in the sense that the words naturally direct
attention to the purpose or function of the product.
Second, imagination test, this test seeks to measure the
relationship between the actual words of the mark and the
product to which they are applied. If a term "requires
imagination, thought and perception to reach a conclusion
as to the nature of goods, it is considered a suggestive
term. Alternatively, a term is descriptive if standing alone it
conveys information as to the characteristics of the
product.
In this case, mere observation compels the conclusion that
a product branded "Fish-Fri" is a prepackaged coating or
batter mix applied to fish prior to cooking.
Third, to classify descriptive marks is "whether competitors
would be likely to need the terms used in the trademark in
describing their products. Common sense indicates that in
this case merchants other than Zatarain's might find the
term "fish fry" useful in describing their own particular
batter mixes.
Fourth, examines the extent to which a term actually has
been used by others marketing a similar service or product.
Having applied the four prevailing tests of descriptiveness
to the term "Fish-Fri has affirmed it as descriptive.
Descriptive terms are not protectable by trademark absent
a showing of secondary meaning in the minds of the
consuming public
Zatarain's term "Fish-Fri" has acquired a secondary
meaning in the New Orleans geographical area, Zatarain's
does not now prevail automatically on its trademark
infringement claim, for it cannot prevent the fair use of the
term by Oak Grove and Visko's. The "fair use" defense
applies only to descriptive terms and requires that the
term be "used fairly and in good faith only to describe to
users the goods or services of such party, or their
geographic origin.
"Chick-Fri" is a descriptive term lacking in secondary
meaning, are therefore not protected and order that the
registration of the term "Chick-Fri" should be cancelled.
Potential trademark may be classified as: (1) generic, (2)
descriptive, (3) suggestive, or (4) arbitrary or fanciful.
Generic - "the name of a particular genus or class of which an
individual article or service is but a member. Basic nature of
article or service
Descriptive term - identifies a characteristic or quality of an
article or service such as its color, odor, function, dimensions,
or ingredients
Ordinarily not protected but when it acquire secondary
meaning in the mind of consuming public it become protected
as trademark