Tabberone is pronounced tab ber won
not tay ber own
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Tabberone is pronounced tab ber won |
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| This information is taken directly from the court opinion. It is not taken out of context nor is it altered. |
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From WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir, 1991): |
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Third, and perhaps most importantly, the record provides us with an excellent reason for thinking that Channel 5's use of the words "Boston Marathon" would
not confuse the typical Channel 5 viewer. That reason consists of the fact that those words do more than call attention to Channel 5's program; they also
describe the event that Channel 5 will broadcast. Common sense suggests (consistent with the record here) that a viewer who sees those words flash upon the
screen will believe simply that Channel 5 will show, or is showing, or has shown, the marathon, not that Channel 5 has some special approval from the BAA
to do so. In technical trademark jargon, the use of words for descriptive purposes is called a "fair use," and the law usually permits it even if the words
themselves also constitute a trademark. See 15 U.S.C. Sec. 1115(b)(4) (statutory fair use defense); Zatarains, Inc. v. Oak Grove Smokehouse, Inc.,
698 F.2d 786, 796 (5th Cir.1983) (fair use established if mark descriptive, not used in trademark sense, and used in good faith). If, for example,
a t-shirt maker placed the words "Pure Cotton" (instead of the words "Boston Marathon") on his t-shirts merely to describe the material from which the shirts
were made, not even a shirt maker who had a registered trademark called "Pure Cotton" could likely enjoin their sale. Cf. Leathersmith of London, Ltd. v. Alleyn,
695 F.2d 27, 30-31 (1st Cir.1982), cert. denied, 459 U.S. 1209, 103 S.Ct. 1202, 75 L.Ed.2d 444 (1983). As Justice Holmes pointed out many years ago,
"[w]hen the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth."
Prestonettes, Inc. v. Coty, 264 U.S. 359, 368, 44 S.Ct. 350, 351, 68 L.Ed. 731 (1924).
This is not a case where it is difficult to decide whether a defendant is using particular words primarily as a mark, i.e., as an "attention getting symbol," or primarily as a description. Cf. Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 937-38 (10th Cir.1983); Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1027-28 (7th Cir.1979), cert. denied, 447 U.S. 924, 100 S.Ct. 3016, 65 L.Ed.2d 1116 (1980); Venetianaire Corp. of America v. A & P Import Co., 429 F.2d 1079, 1083 (2d Cir.1970). Here there is little in the record before us to suggest the former (only the large size of the words on the screen); while there is much to show the latter (timing, meaning, context, intent, and surrounding circumstances). Consequently, the appellants have shown no real likelihood of relevant confusion. |
