IP Law: Trademarks

The TMEP is an excellent source for finding relevant case law on various trademark issues. The TMEP is used by USPTO attorneys to either affirm or deny a trademark application. When denying a trademark, the reviewing attorney will submit a letter stating why the trademark has been rejected. The TMEP is made to expedite this process and provide the reviewing attorney with a quick reference with the relevant statutory and case law. Likewise, attorneys responding to a letter of rejection may review the TMEP to argue against the rejection.

This guide is available to the public to review. In each section of the TMEP, case law is included with parenthetical explanations of the relevancy of the case to the issue. For example, § 1207 of the TMEP covers "Refusal on Basis of Likelihood of Confusion, Mistake, or Decption. § 1207.01 covers Likelihood of confusion. If you are researching an issue involving the likelihood of confusion, this section will provide the general rule, the relevant statutes, and ample case law relating to that topic. 

For example: 

Rule: The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon. 

Sources: See, e.g., In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) ("[T]he . . . mistaken belief that [a good] is manufactured or sponsored by the same entity [as another good] . . . is precisely the mistake that §2(d) of the Lanham Act seeks to prevent."); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) ("The degree of ‘relatedness’ must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship."); Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) ("[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source."); In re Country Oven, Inc., 2019 USPQ2d 443903, at *2-3 (TTAB 2019) ("[T]he overriding concern is not only to prevent buyer confusion as to the source of the goods, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer."); Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d 1423, 1429 (TTAB 1993) ("Although confusion, mistake or deception about source or origin is the usual issue posed under Section 2(d), any confusion made likely by a junior user’s mark is cause for refusal; likelihood of confusion encompasses confusion of sponsorship, affiliation or connection."). --TMEP § 1207.01 (emphasis added). 

When performing legal research, finding relevant, useful secondary sources during your preliminary analysis can make finding case law significantly easier. When building your base knowledge on a subject, be sure to note helpful secondary sources to review later because secondary sources serve as a great mining field for case law.

The American Law Reports (A.L.R) can be found online through Westlaw and provide detailed coverage of the law. The ALRs provide deep dives into the case law surrounding certain legal matters along with footnotes and references to other sources. 

Law reviews and journals also provide a strong starting point for finding relevant case law. Law review articles can provide deep dives into the complexities of certain areas of law, academic arguments for policy changes, or reviews of a single case. The broad spectrum of available literature serves as a rich field for harvesting case law. 

Causes of action and pattern jury instructions can also provide a plethora of cases for legal research, especially for state law. Relevant cases can usually be found at the bottom of the page under annotations and comments where you can find legal rules with the associated case citations. 

The Restatements are powerful tools for legal research, not only for building an understanding of the law--or their hefty persuasive power--but also as a resource for finding recent court decisions on the topic they cover. The Restatement (Third) of Unfair Competition includes a "Table of Most Recent Cases" usually spanning a specific time period. Further, each section of the Restatement (Third) includes general case citations on the issue.For example, in the Restatement (Third) of Unfair Competition, under Topic 1. The Law of Trademarks, there is a collection of "General Case Citations," that were used in the crafting of the chapter. This provides an excellent resource for finding case laws on specific issues of law covered by the Restatement (Third). 

Bloomberg has a feature known as "Practice Centers." The Practice Centers group Bloomberg Law resources by area of legal practice and highlight resources from the entirety of Bloomberg Law's database. The Trademarks & Copyrights Practice Center has case trackers for U.S. Supreme Court decisions involving Trademarks, along with federal trademark dockets. Bloomberg's Practice Centers are a great starting place for finding practical guides that include references to relevant cases involving a specific issue. 

Bloomberg also has a feature known as "Fast Answers" which answers common trademark questions and provides resources for further research. 

Lexis+ has several useful features that make expedite legal research. Start by going to the "Practice Area" tab under "Explore." From there, find the tab titled "trademark law." This will lead you to a page that has links to various sources available on lexis. Here, you can find links to "All Trademark Law Cases," "Federal Court Cases," "U.S. Supreme Court Cases," and more. This page includes links to Statutes and Legislation, Administrative Materials, Case Related Materials, Secondary Materials, Forms, Common Law resources, and News. You can search cases by party name, court, date, citation, core terms, or headnotes. 

LexisNexis Headnotes show the key legal points of each case. They are written by a LexisNexis legal editor and serve as a great jumping off point for more legal research. LexisNexis has a function called "More Like This Headnote" which allows a researcher to find other cases in the same jurisdiction dealing with the same issue as noted in the headnote. 

The West Key Number System is a classification system that helps legal researchers find relevant case law quickly. The system works by placing a "Key Number" next to a legal topic. These key numbers are then subdivided to match subsequent topics that are subparts of the overarching legal doctrine. The Key number for trademarks is 382T. A researcher can go to the West Key Note page, scroll down to 382T, click on the link, and find all the other Key numbers related to Trademarks. These subdivisions grow in specificity with each key number, helping researchers narrow down cases that are relevant to their research topic. Every case on Westlaw has a Key number. Therefore, once you know the Key number of your topic, you can find all the related cases on West. Further, West editors create headnotes that have a Key Number designation. Researchers can use these headnotes and their corresponding Key Numbers to find more cases with the same designation. 

Westlaw excels at connecting relevant pieces of information together through its use of the Key Numbering system, headnotes, citing, and referencing decisions. Finding cases through this system is easy and intuitive and allows a researcher to compile relevant and related cases quickly.