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- Each action’s elements;
- The most recent state and federal cases that cite the actions’ elements;
- The applicable statute of limitations for each action; and
- Defenses to each cause of action.
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Unfair Competition - Trade Name, Service Mark, and Trademark Infringement and Dilution

1 Elements and Case Citations

To sustain a cause of action for unfair competition in the use of a tradename justifying the issuance of an injunction, the plaintiff must prove: [1] During prior, continuous use of plaintiff's name or mark plaintiff's tradename has acquired a secondary meaning; [2] thereafter defendant used and is using a tradename which, under all of the circumstances, the purchasing public is likely to confuse with the plaintiff's name or mark, and [3] by reason of the deceptive appearances, the public is likely to identify the defendant's product as that of the plaintiff or to conclude that the plaintiff has some connection with the production of the defendant's goods or services.

Cowles Magazines & Broadcasting, Inc. v. Elysium, Inc., 255 Cal. App. 2d 731, 733 (1967); see Cal. Bus. & Prof. Code §§14200 et seq. (California’s Model State Trademark Law) & 17200, et seq. (California’s Unfair Competition Statute).

Under California law and general common law, there are three categories of terms which are afforded trademark or trade name protection: (1) fanciful or arbitrary terms, (2) suggestive terms, and (3) descriptive terms. A substantial difference exists between the protection afforded the first two categories and that afforded the third category. While a term is immediately protectable if found to be arbitrary or fanciful, or suggestive, [d]escriptive terms are not protected without proof of secondary meaning.

T Shirts Plus v. T-Shirts Plus, Inc., No. 82-1783-WMB, 1983 U.S. Dist. LEXIS 13717, at *11-12 (N.D. Cal. Sept. 15, 1983).

With regard to trademark dilution:

Plaintiff must show the following to establish dilution: (1) plaintiff owns valid registrations of the . . .marks; (2) defendants’ marks are a colorable imitation of plaintiff’s marks; (3) defendants’ use was without plaintiff’s consent; (4) plaintiff’s marks is distinctive or has acquired secondary meaning; and (5) defendants’ mark threatens to dilute the distinctiveness of the . . . mark, or tarnish its reputation.

E. & J. Gallo Winery v. Pasatiempos Gallo, S.A., 905 F. Supp. 1403, 1416 (E.D. Cal. 1994); see also Franklin Mint Co. v. Manatt, Phelps & Phillips, LLP, 184 Cal. App. 4th 313, 334 (2010).

CALIFORNIA STATE COURTS

Supreme Court of California: Academy of Motion Picture Arts & Sciences v. Benson, 15 Cal. 2d 685, 690 (1940).

California 1st District: North Carolina Dairy Foundation, Inc. v. Foremost-McKesson, Inc., 92 Cal. App. 3d 98, 109-10 (1979).

California 2d District: Tomlin v. Walt Disney Productions, 18 Cal. App. 3d 226, 236 (1971); Cowles Magazines & Broadcasting, Inc. v. Elysium, Inc., 255 Cal. App. 2d 731, 733 (1967).

California 3d District: In re Marriage of Shelton, 118 Cal. App. 3d 811, 814-15 (1981).

California 4th District: Visser v. Macres, 214 Cal. App. 2d 249, 253-54 (1963).

California 5th District: None .

California 6th District: None.

CALIFORNIA FEDERAL COURTS

United States Court of Appeal for the 9th Circuit: Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988).

Central District: Phillip Morris USA Inc. v. Shalabi, 352 F. Supp. 2d 1067, 1072-73 (C.D. Cal. 2004); Brookfield Communs. v. W. Coast Entm't Corp., No. CV98-9074 CM (AJWx), 1999 U.S. Dist. LEXIS 23247, at *8-9 (C.D. Cal. Sept. 8, 1999).

Eastern District: Coach, Inc. v. Sac a Main, No. 1:12-cv-00840-LJO-SMS, 2012 U.S. Dist. LEXIS 159907, at *6-7 (E.D Cal. Nov. 7, 2012).

Northern District: California Sec. Alarms v. Escobar’s Sec. Plus Alarm Systems, Inc.., No. C-95-3749 MMC, 1996 U.S. Dist. LEXIS 14913, at *7 (N.D. Cal. Sept. 30, 1996); T Shirts Plus v. T-Shirts Plus, Inc., No. 82-1783-WMB, 1983 U.S. Dist. LEXIS 13717, at *11-12 (N.D. Cal. Sept. 15, 1983).

Southern District: West Coast Corvettes, Inc. v. MV Mktg., No. SACV 12-0269 DOC(RNBx), 2012 U.S. Dist. LEXIS 187094, at *18-19 (S.D. Cal. Dec. 13, 2012).

2 Issues and Defenses to Claim for Unfair Competition – Trade Name, Service Mark and Trade Name Infringement

(1) Cal. Code Civ. Proc. § 431.30(b)(2) (pleading affirmative defenses), and other standard defenses. See Chapter 1 for all defenses.

(2) Statute of Limitations: Uncertain.

(3) Lack of Secondary Meaning for Descriptive Terms: “A sine qua non of protection of titles on a theory of unfair competition is the establishment by the plaintiff of a secondary meaning in his title.” Gordon v. Warner Bros. Pictures, Inc., 269 Cal. App. 2d 31, 35 (1969).

(4) Lack of Consumer Confusion: “[L]iability for trademark infringement or unfair competition exists if an appreciable number, though not necessarily a majority, of reasonable buyers are likely to be confused by the similarity of the marks in question.” North Carolina Dairy Foundation, Inc. v. Foremost-McKesson, Inc., 92 Cal. App. 3d 98, 110 (1979).

(5) Codification of Claims: 15 U.S.C. §§ 1051 et seq. and Cal. Bus. & Prof. Code, §§ 14200 et seq. (the “Model State Trademark Law”) codify the common law including the principle that, with regard to “mercantile trademarks, only inherently distinctive marks (i.e., fanciful, arbitrary or suggestive) used to identify a particular product are protectable immediately upon use without necessity for proof of secondary meaning.” North Carolina Dairy Foundation, Inc. v. Foremost-McKesson, Inc., 92 Cal. App. 3d 98, 106 n.5 (1979).

(6) Lanham Act Defenses do Not Preempt State Law Claim: The Ninth Circuit has concluded that “concluded that [the prior use defense found in Lanham Act section] 1115(b)(5) cannot be said to preempt this plaintiff's rights under California law. By extending to federal registrants greater protection than is available under the Lanham Act, California law, like the Act, protects both the public from confusion about the services and products it is receiving and the public relations investment of plaintiff.” T Shirts Plus v. T-Shirts Plus, Inc., No. 82-1783-WMB, 1983 U.S. Dist. LEXIS 13717, at *10 (N.D. Cal. Sept. 15, 1983).

(7) Reasonable Precautions to Avoid Confusion: “[A] defendant copier can avoid liability by taking reasonable precautions to avoid public confusion by identifying the source of its work or disclaiming any connection with plaintiff’s work.” Tomlin v. Walt Disney Productions, 18 Cal. App. 3d 226, 235 (1971).

(7) Registration not Conclusive of Ownership: “[M]ere registration does not establish ownership, but only affords prima facie evidence thereof. Prior adoption and use are essential for acquisition of ownership.” Colvig v. KSFO, 224 Cal. App. 2d 357, 369 (1964).

(8) Abandonment: “Abandonment is an affirmative common law defense to both trademark infringement and false designation of origin claims.” Sutton v. Williamsburg Winery, Ltd., No. 2:12-cv-00333-GEB-EFB, 2013 U.S. Dist. LEXIS 136042, at *5 (E.D. Cal. Sept. 23, 2013).