Originally from:
Texas Intellectual Property Law Handbook - 2nd Edition - Hardcover
Texas Intellectual Property Law Handbook - 2nd Edition - Electronic
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CHAPTER 2
TRADEMARK INFRINGEMENT
AND UNFAIR COMPETITION
§ 2.01 Overview of Trademarks and Unfair Competition
[1] — Rights Protected by the Law of Trademarks and Unfair
Competition
[a] — Purpose of Law of Trademarks and Unfair Competition
The law of trademarks and unfair competition addresses the
merchant’s right to identify his goods and services with a name,
symbol, logo, domain name, unique packaging, or product design to
signal to the public that his goods or services come from a single
source. Trademarks both protect consumers against confusion and
protect merchants’ investments in the names and marks in which they
have earned goodwill.1
Trademark rights, historically, have been grounded in common
law, the Texas Trademark Act,2 and the Federal Trademark (Lanham)
Act.3 But the Lanham Act has increasingly dominated the application
of trademark and unfair-competition law in Texas. Although
trademark-infringement and unfair-competition claims may be brought
in either state or federal courts, these claims, regardless of source,
increasingly tend to be decided by federal-court application of the
Lanham Act.
Under the Act, a “trademark” or “mark” refers to a mark that a
merchant uses with its goods and products. The term “trademark” is
often used in a broader sense, however, to refer, collectively, to
trademarks in the technical sense, service marks, trade names, and
trade dress.4
[b] — Trademark
A “trademark” is a word, name, symbol, device, slogan, or any
combination of these used by a person to identify his or her goods and
to distinguish them from the goods manufactured or sold by others and
CHAPTER 2
TRADEMARK INFRINGEMENT
AND UNFAIR COMPETITION
Synopsis
§ 2.01 Overview of Trademarks and Unfair Competition
[1] -- Rights Protected by the Law of Trademarks and Unfair
Competition
[a] -- Purpose of Law of Trademarks and Unfair
Competition
[b] -- Trademark
[c] -- Service Mark
[d] -- Trade Names
[e] -- Trade Dress and Product Configuration
[2] -- Distinctiveness of Trademarks
[a] -- What Is Protectable
[b] -- Fanciful
[c] -- Arbitrary
[d] -- Suggestive
[e] -- Descriptive
(i) Overview
(ii) Surnames
(iii) Geographically Descriptive Terms
(iv) Secondary Meaning
[A] -- Defined
[B] -- Evidence of Secondary Meaning
[f] -- Generic
[3] -- Distinctiveness of Trade Dress and Functionality
[a] -- Distinctiveness of Trade Dress
[b] -- Functionality Doctrine
(i) Purpose of Functionality Doctrine
(ii) Combination of Features
[4] -- The Relationship between State and Federal Law
[a] -- Overview
[b] -- Lanham Act
[c] -- Texas Trademark Act
[d] -- Texas Common Law
§ 2.02 Creation, Ownership, and Transfer of Trademark Rights
[1] -- Overview
[2] -- Use in Commerce
[3] -- Assignment, Transfer, and Licensing of Trademarks
[a] -- Method of Assignment
[b] -- Recording Assignments
[c] -- Transfer by Operation of Law or Implication
[d] -- Licensing of Trademarks
§ 2.03 Registration of Trademarks
[1] -- Federal Registration
[a] -- Effect and Benefits
[b] -- Procedure
[2] -- Texas Registration
[a] -- Effect and Benefits
[b] -- Procedure
[3] -- Status of Unregistered Marks
[a] -- Under Federal Law
[b] -- Under State Law
§ 2.04 Infringement of Trademark Rights
[1] -- Infringement in General
[2] -- Likelihood of Confusion
[3] -- Factors in Judging Likelihood of Confusion
[a] -- Strength of the Mark
[b] -- Similarity of Marks
[c] -- Similarity of Goods and Services
[d] -- Channels of Trade and Identity of Retail Outlets and
Purchasers
[e] -- Advertising Media
[f] -- Defendant's Intent
[g] -- Actual Confusion
[h] -- Degree of Care Exercised by Customers
[4] -- Trademark Infringement
[a] -- Under the Lanham Act
[b] -- Under Texas Trademark Act
[c] -- Common-Law Trademark Infringement
[d] -- Counterfeiting
§ 2.05 Unfair Competition
[1] -- Under the Lanham Act
[2] -- Texas Common Law
[a] -- Unfair Competition Defined
[b] -- Elements of Cause of Action for Unfair Competition
[c] -- Common-Law Trademark Infringement
[d] -- Passing Off
§ 2.06 Dilution and Injury to Business Reputation
[1] -- Federal Dilution
[2] -- Dilution under Texas Law
§ 2.07 Anti-Cybersquatting Consumer Protection Act
§ 2.08 Other Bases for Liability
[1] -- Vicarious Liability
[2] -- Criminal Liability
§ 2.09 Procedural Considerations
[1] -- Subject Matter Jurisdiction
[a] -- Federal Court Jurisdiction of Lanham-Act Claims
[b] -- Pendent and Ancillary Jurisdiction for Federal and
State-Law Claims
[c] -- Federal Diversity Jurisdiction
[d] -- Removal of State and Federal Claims to Federal
Court
[e] -- State Court Jurisdiction
[2] -- Personal Jurisdiction
[3] -- Venue
[a] -- Federal Venue Statutes
[b] -- Texas Venue Statutes
[4] -- Miscellaneous Procedural Issues
[a] -- Right to Jury Trial
[b] -- Choice of Law
[c] -- Standing
§ 2.10 Remedies
[1] -- Damages
[a] -- Importance of Damages
[b] -- Lanham Act
(i) Availability of Damages
(ii) Measuring Defendant's Profits
(iii) Actual Damages
(iv) Costs of the Action
(v) Statutory Damages
(vi) Enhanced Damages
[c] -- Texas Trademark Act
[d] -- Common Law
(i) Actual Damages
(ii) Exemplary Damages
[2] -- Injunctive Relief
[a] -- Availability of Injunctive Relief
[b] -- Effective Area of Injunction
[c] -- Temporary Restraining Orders
[d] -- Preliminary and Temporary Injunctions
[e] -- Permanent Injunctions
[f] -- Other Types of Injunctive Relief
[3] -- Cancellation of Registrations
[a] -- Federal Registrations
[b] -- State Registrations
[4] -- Transfer of Domain Names
[5] -- Attorney's Fees
[a] -- Federal Actions
[b] -- State Actions
§ 2.11 Defenses to Trademark-Infringement and Unfair-Competition
Claims
[1] -- Statute of Limitations
[2] -- Lack of Distinctiveness
[3] -- Prior Use
[4] -- Geographically Remote Use
[5] -- Fair Use and Nominative Use
[a] -- Fair Use
[b] -- Nominative Use
TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
101
[6] -- Equitable Defenses
[a] -- Overview
[b] -- Laches
(i) Definition and Elements
(ii) Measuring Delay
(iii) Measuring Prejudice
(iv) Effect of Laches
[c] -- Acquiescence
[d] -- Unclean Hands
[7] -- Fraudulent Procurement of Registration
[8] -- Abandonment
[a] -- Abandonment Defined
[b] -- Intent Not to Abandon Compared to Intent to
Resume Use
[c] -- Termination of Business
[d] -- Assignment without Transfer of Goodwill
[e] -- Generic Status or Loss of Significance
[9] -- First Amendment
[10] -- Parody
[11] -- Exhaustion/First Sale
[12] -- Effect of Incorporation, Filing Assumed Name, or
Approval by State Agency
[13] -- Antitrust and Misuse
§ 2.12 Sources
[1] -- Statutes
[2] -- Rules
[3] -- Law Reviews and Periodicals
[4] -- Text References
Herbert J. Hammond is a partner with Thompson & Knight, L. L. P. in Dallas, Texas, where he specializes in patent, trademark, copyright, trade-secret, and computer - law litigation and acts as an arbitrator, mediator, and expert witness in intellectual-property disputes.
Mr. Hammond graduated from New York University School of Law in 1976 and is licensed to practice in Texas and in the United States Patent and Trademark Office. He has been recognized by Chambers USA's Leading Lawyers for Business for his deep knowledge of IP law and as an outstanding lawyer, by Woodward/White as among the Best Lawyers in America in intellectual property, by Texas Monthly's listing of Texas Super Lawyers in Intellectual Property Litigation, and by D Magazine's Best Lawyers in Dallas. He is a frequent speaker at CLE programs and has written many chapters and articles on intellectual-property topics.
