BLAW 430 Lecture Notes - Lecture 10: Turtle Wax, Trademark Infringement, Carnauba Wax
Hot Wax, Inc., produces and markets car waxes to carwashes through the country. Its formula
for car wax incorporates carnauba waxes at a considerable cost. Turtle Wax, Inc., entered the
carwash supply industry, but it uses neither carnauba nor beeswax in its car waxes. Instead, it
uses mineral seal oils or wax emulsions that are considerably cheaper than traditional wax
ingredients. As a result, Turtle Wax has become a leader in the car wax industry. Hot Wax filed
suit against Turtle Wax, alleging that Turtle Wax engaged in false advertising in violation of
Section 43(a) of the Lanham Act by promoting its products as “wax” when the products did not
actually contain wax. Turtle Wax responded that Hot Wax’s definition of “wax” was overly
formalistic and introduced consumer surveys that indicated that consumers got exactly what
they expected from a wax when they purchased Turtle Wax products—polish, shine, and
protection. Hot Wax filed for summary judgment. Should the court grant summary judgment to
Hot Wax? Why, or why not?
Issue: Can Hot Wax recover damages caused by Turtle Wax falsely advertising their product as
Wax?
Rule:
• Trademark: a distinctive word, phrase, combination thereof or a unique symbol that
distinguishes a product/service from those made by others.
o Purpose of trademark
▪ Tells the consumer what a product or service is called
▪ Where it comes from
▪ Who is responsible for its creation
o Trademarks last 10 years, must submit proof that the mark is in use for
commerce every 5 years.
• Trademark infringement – To use someone’s registered mark in order to confuse the
consumer
o To prove there was trademark infringement, must show;
▪ The owner of the mark had it federally registered
▪ The person copied the original mark
▪ The person’s use of the copied mark done so to confuse or created the
likely of confusion to the purchasers of the original mark
• Factors to consider the likelihood of confusion;
o How well known the original mark is
o How similar the original mark and the new mark is; sound, meaning, appearance
o How similar the products are to each other
o Likelihood that both companies will be in the same market
o How confused is the consumer
o Did the person use the mark knowing that it would cause confusion
o Quality of the copiers product
o How well informed are the buyers of the said good/service
Document Summary
Hot wax, inc. , produces and markets car waxes to carwashes through the country. Its formula for car wax incorporates carnauba waxes at a considerable cost. Turtle wax, inc. , entered the carwash supply industry, but it uses neither carnauba nor beeswax in its car waxes. Instead, it uses mineral seal oils or wax emulsions that are considerably cheaper than traditional wax ingredients. As a result, turtle wax has become a leader in the car wax industry. Hot wax filed suit against turtle wax, alleging that turtle wax engaged in false advertising in violation of. Section 43(a) of the lanham act by promoting its products as wax when the products did not actually contain wax. Turtle wax responded that hot wax"s definition of wax was overly formalistic and introduced consumer surveys that indicated that consumers got exactly what they expected from a wax when they purchased turtle wax products polish, shine, and protection.
