Also known as: service mark · service-mark · trademark
Written by attorneys — see sources below.
A word, name, symbol, or device used to identify and distinguish the services of one provider from those of others.
Spectrum Financial applies to register the servicemark Bankers Be Damned for its advisory services. The PTO refuses registration on the ground that the mark disparages bankers. Spectrum challenges the refusal in court. The court holds that the denial constitutes unconstitutional viewpoint discrimination because the mark constitutes private speech.
Summit Bank has used the servicemark Summit Services for banking services for many years without objection. Southland Foods later claims infringement based on a similar mark for food delivery services. Summit Bank raises a laches defense. The court considers whether the delay in bringing suit bars the claim.
In December 1949, petitioner Dairy Queen, Inc. entered into a written licensing contract with the respondent owners of the DAIRY QUEEN trademark under which petitioner agreed to pay $150,000 for the exclusive right to use the trademark in portions of Pennsylvania. The payments consisted of a small initial sum followed by 50 percent of amounts received on sales and franchises together with minimum annual payments regardless of receipts. In August 1960, the respondents sent petitioner a letter claiming a material breach of the contract due to default in excess of $60,000 on the payment provisions and notifying petitioner of the termination of the contract and cancellation of its rights to use the trademark unless the default was remedied immediately. When petitioner continued to deal with the trademark despite the notice of termination, the respondents brought an action based upon their view that a material breach of contract had occurred. The complaint alleged that petitioner had ceased paying as required, that the default constituted a material breach, that petitioner was contesting the cancellation and continuing business as an authorized dealer, that this constituted trademark infringement, that petitioner's financial condition was unstable, and that respondents faced irreparable injury with no adequate remedy at law. It sought temporary and permanent injunctions against future use of the franchise and trademark, an accounting to determine the exact amount owing with a judgment for that amount, and an injunction pending the accounting to prevent collection of money from Dairy Queen stores. Petitioner answered by denying any breach of contract and alleging that the parties had entered an oral agreement in January 1955 modifying the written contract to remove the minimum annual payment requirement. Petitioner also raised defenses of laches and estoppel arising from respondents' delay in asserting the claim after petitioner had expended large sums developing the trademark rights, and alleged antitrust violations by respondents. Petitioner endorsed a demand for trial by jury on the answer. The district court granted respondents' motion to strike the jury demand on the alternative grounds that the action was purely equitable or that any legal issues were incidental to equitable issues. Petitioner sought mandamus in the Court of Appeals for the Third Circuit to compel the district judge to vacate the order striking the jury demand. After that court denied the request without opinion, the Supreme Court granted certiorari.
View caseStarlight Media operates a platform that hosts user-uploaded videos containing the servicemark Southland Foods for catering services. Southland Foods sues Starlight Media for contributory infringement. The court examines whether Starlight Media had knowledge of the infringing uses and materially contributed to them.
In 1976, Universal City Studios, Inc., and Walt Disney Productions, owners of copyrights in motion pictures and other audiovisual works, commenced a copyright infringement action in the United States District Court for the Central District of California against Sony Corporation of America and related entities that manufacture and sell Betamax video tape recorders. The Betamax consists of a tuner that receives signals from the public airwaves, a recorder that places those signals on magnetic tape, and an adapter that converts the signals for playback on a television set. It includes a timer for unattended recording, a pause button to omit commercials, and a fast-forward control. Surveys of several hundred Betamax owners conducted by both parties in 1978 showed that the primary use for most owners was time-shifting, recording a program for single later viewing and then erasing it. Sony's survey indicated that over 80 percent of interviewees watched at least as much regular television as before owning a Betamax. Seven point three percent of use was to record sports events whose professional leagues had no objection to home recording, and representatives of religious and educational broadcasters also testified they had no objection. After a lengthy trial, the District Court in 1979 denied all relief to the respondents, finding that time-shifting was fair use, that Sony had no direct involvement with any infringing activity, and that the Betamax was a staple article of commerce capable of substantial noninfringing uses. The court noted Sony's instruction booklet warned that unauthorized recording of copyrighted material may violate copyright laws. The Ninth Circuit in 1981 reversed the District Court's judgment on the copyright claim, holding petitioners liable for contributory infringement without setting aside any findings of fact, and remanded for consideration of damages or a continuing royalty. The Supreme Court granted certiorari in 1982, ordered reargument in 1983, and issued its decision in January 1984.
View caseSabrina Shah operates a consulting business under the servicemark Summit Bank Advisors. Summit Bank sues for infringement and seeks a permanent injunction. The court applies the traditional four-factor test to determine whether equitable relief is warranted.
eBay Inc. operates a popular Internet Web site that allows private sellers to list goods they wish to sell, either through an auction or at a fixed price. Petitioner Half.com, now a wholly owned subsidiary of eBay, operates a similar Web site. Respondent MercExchange, L.L.C., holds several patents, including a business method patent for an electronic market designed to facilitate the sale of goods between private individuals by establishing a central authority to promote trust among participants. See U.S. Patent No. 5,845,265. MercExchange sought to license its patent to eBay and Half.com, as it had previously done with other companies, but the parties failed to reach an agreement. MercExchange subsequently filed a patent infringement suit against eBay and Half.com in the United States District Court for the Eastern District of Virginia. A jury found that MercExchange's patent was valid, that eBay and Half.com had infringed that patent, and that an award of damages was appropriate. eBay and Half.com continue to challenge the validity of MercExchange's patent in proceedings pending before the United States Patent and Trademark Office. Following the jury verdict, the District Court denied MercExchange's motion for permanent injunctive relief, 275 F. Supp. 2d 695 (2003). The Court of Appeals for the Federal Circuit reversed, applying its general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances, 401 F.3d 1323, 1339 (2005). The Supreme Court granted certiorari to determine the appropriateness of this general rule, 546 U.S. 1029 (2005).
View caseSteven Silva, a Pennsylvania resident, registers the servicemark Starlight Media for streaming services on a website accessible nationwide. A California company sues Silva in California federal court for infringement. The court analyzes whether Silva's interactive website contacts satisfy the purposeful availment requirement for personal jurisdiction.
Zippo Manufacturing Company is a Pennsylvania corporation with its principal place of business in Bradford, Pennsylvania, where it manufactures Zippo tobacco lighters. Zippo Dot Com, Inc. is a California corporation with its principal place of business in Sunnyvale, California. Dot Com operates an Internet website and news service and holds the domain names zippo.com, zippo.net, and zipponews.com. Dot Com's website provides information about the company, advertisements, and an online application for its Internet news service. The service offers three membership levels, with paid subscribers receiving passwords to access newsgroup messages stored on servers in California after submitting personal information and paying by credit card. Approximately 3,000 of Dot Com's 140,000 paying subscribers reside in Pennsylvania. Dot Com has also entered into agreements with seven Internet access providers in Pennsylvania, two of which are in the Western District, allowing their subscribers to access the news service. These contacts occurred through the Internet, as Dot Com maintains no offices, employees, or agents in Pennsylvania. Manufacturing filed a five-count complaint in the United States District Court for the Western District of Pennsylvania alleging trademark dilution, infringement, and false designation under federal law, as well as state law claims, based on Dot Com's use of the word "Zippo" in its domain names, website, and newsgroup message headers. Dot Com moved to dismiss the action for lack of personal jurisdiction and improper venue or, alternatively, to transfer the case.
View caseSelena Singh writes a critical blog post about financial services and prominently displays the servicemark Spectrum Financial in her commentary. Spectrum Financial sues for infringement. The court evaluates whether Singh's use qualifies as fair use under the transformative-use factors.
In 1964, Roy Orbison and William Dees wrote a rock ballad called "Oh, Pretty Woman" and assigned their rights in it to respondent Acuff-Rose Music, Inc. Acuff-Rose registered the song for copyright protection. Petitioners Luther R. Campbell, Christopher Wongwon, Mark Ross, and David Hobbs, collectively known as 2 Live Crew, wrote a song in 1989 entitled "Pretty Woman," which Campbell described in an affidavit as intended through comical lyrics to satirize the original work. On July 5, 1989, 2 Live Crew's manager informed Acuff-Rose that the group had written a parody of the song, that they would afford all credit for ownership and authorship to Acuff-Rose, Dees, and Orbison, and that they were willing to pay a fee for the use. Enclosed with the letter were a copy of the lyrics and a recording of 2 Live Crew's song. Acuff-Rose's agent refused permission. In June or July 1989, 2 Live Crew released records, cassette tapes, and compact discs of "Pretty Woman" in a collection of songs entitled "As Clean As They Wanna Be." The albums and compact discs identify the authors of "Pretty Woman" as Orbison and Dees and its publisher as Acuff-Rose. Almost a year later, after nearly a quarter of a million copies of the recording had been sold, Acuff-Rose sued 2 Live Crew and its record company, Luke Skyywalker Records, for copyright infringement. The District Court granted summary judgment for 2 Live Crew. The Court of Appeals for the Sixth Circuit reversed and remanded. The Supreme Court granted certiorari to determine whether 2 Live Crew's commercial parody could be a fair use.
View caseYes. The Supreme Court has held that trademarks constitute private speech rather than government speech. A statutory bar on registering disparaging marks therefore amounts to viewpoint discrimination that fails strict scrutiny.