No. The salon's few sales didn't count as real 'use' of the brand name in the business world. It was more like practice. To own a trademark, you have to win the 'race to the marketplace' by actually selling a real product to the public. L'Oréal was the first to do that on a large scale, so they had the right to the name. Just planning to use a name doesn't mean you own it.

Yes. The salon was already successfully using the name for its business, and hair products are very similar to hair salon services. L'Oréal knew about the salon's plans and should have respected them instead of launching its own product. It seems like L'Oréal acted in bad faith by ignoring the small business's claim to the name.

No, Zazu Hair Designs didn't sell enough to stop L'Oreal from using ZAZU. Just selling a little bit or planning to sell more isn't enough to claim a name all over the country. L'Oreal was the first to really use ZAZU a lot for selling things, so they get to keep using it. The first court's decision was wrong, so now they'll look at whether L'Oreal did anything bad during the case.

I disagree. I think Zazu Hair Designs did use ZAZU enough, at least in the Chicago area. L'Oreal knew Zazu Hair Designs was using the name, so it's not fair for them to use it too. A name for a service, like a hair salon, can be too similar to a name for a product, like hair stuff. The majority ignored that Zazu Hair Designs used ZAZU a lot for their salon. L'Oreal wasn't being nice by using ZAZU when they knew about Zazu Hair Designs.

Yes, Zazu Hair Designs did sell enough to stop L'Oreal from using ZAZU, at least in the Chicago area. L'Oreal knew Zazu Hair Designs was using the name, so it's not fair for them to use it too. A name for a service, like a hair salon, can be too similar to a name for a product, like hair stuff. The majority ignored that Zazu Hair Designs used ZAZU a lot for their salon. L'Oreal acted improperly by using ZAZU when they knew about Zazu Hair Designs.

A trademark infringer "diminishes the value of plaintiff's trademark, and advertising restores that mark to its original value."

Only active use allows consumers to associate a mark with particular goods and notifies other firms that the mark is so associated.

Under the common law, one must win the race to the marketplace to establish the exclusive right to a mark

"By insisting that firms use marks to obtain rights in them, the law prevents entrepreneurs from reserving brand names in order to make their rivals' marketing more costly."

As for H5G's allegation in Paragraph 79 that it used two of the marks after IGT allegedly misappropriated them, such belated use of the marks in commerce does not create property rights.

Plaintiff disagrees, stating that although it does not hold a registered trademark with the United States Patent and Trademark Office ("PTO") for the phrase "Box Packaging," that whether "Box Packaging" is descriptive or suggestive is not suitable for summary judgment because the categories are ambiguous and present issues of material fact.

But trademark law protects the first party to use the mark in commerce regardless of whether the party registered the mark.

—"a `corporate defendant's net worth is irrelevant to the assessment of punitive damages against it.'"

Corporate assets... are unrelated to either the injury done to the victim or the size of the award needed to cause corporate managers to obey the law.

—holding that "[a] few bottles sold over the counter..., and a few more mailed to friends..., neither link [ed] the... mark with [plaintiff's] product in the minds of consumers nor put other producers on notice

No. Sporadic and de minimis sales are insufficient to establish nationwide trademark rights. Under common law, ownership of a mark is acquired by winning the 'race to the marketplace' through genuine commercial sales that associate the mark with a product in the public's mind and provide notice to competitors. zhd's minimal sales were merely pre-marketing maneuvers, not the kind of bona fide 'use in commerce' required to establish priority over L'Oréal, which was the first to make significant commercial use of the mark. Knowledge of a rival's mere intent to use a mark does not create superior rights or constitute bad faith for the party that acts first to bring a product to market.

Yes. zhd's sales constituted sufficient use to establish trademark rights, at least in its local area. zhd's extensive use of the ZAZU mark for its successful salon services is highly relevant, as hair products are closely related to salon services. L'Oréal's knowledge of zhd's prior use and future plans defeats its claim to priority, as a junior user who adopts a mark with knowledge of its senior use cannot be said to have acted in good faith.

No, ZHD's minimal sales and marketing activities did not establish exclusive national rights to the ZAZU trademark for hair products because the use of a trademark must be more than minimal to establish rights. ZHD's activities were insufficient to put others on notice or to link the mark with their product in the minds of consumers. L'Oreal's subsequent use of the mark for a national product line was not precluded by ZHD's prior activities because only active use allows consumers to associate a mark with particular goods and notifies other firms that the mark is so associated. The law insists that firms use marks to obtain rights in them, preventing entrepreneurs from reserving brand names without active use. The district court's judgment is reversed and remanded for consideration of appropriate sanctions for L'Oreal's misconduct during litigation.

I respectfully dissent because I believe ZHD's sale of ZAZU services and products constituted sufficient use to establish exclusive trademark rights in the Chicago area, if not nationally. L'Oreal's pursuit of its line of hair cosmetics despite its knowledge of ZHD's use defeats L'Oreal's position. A service mark can be infringed by its use on a closely related product, and salon services and hair products are nearly as kindred as a service and product can be. The majority disregards ZHD's substantial use of ZAZU in connection with salon services. Bad faith can defeat claims to priority, and L'Oreal did not act in good faith given its knowledge of ZHD's use.

I respectfully dissent because ZHD's sale of ZAZU services and products constituted sufficient use to establish exclusive trademark rights in the Chicago area, if not nationally. L'Oreal's pursuit of its line of hair cosmetics despite its knowledge of ZHD's use defeats L'Oreal's position. A service mark can be infringed by its use on a closely related product, and salon services and hair products are nearly as kindred as a service and product can be. The majority disregards ZHD's substantial use of ZAZU in connection with salon services. Bad faith can defeat claims to priority, and L'Oreal did not act in good faith given its knowledge of ZHD's use.

Zazu Designs v. L'Oreal, S.A.

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