Outline for Trademark
Must know:
- what is a trademark/ what cannot be a trademark
- what is the subject matter of trademark law
- what are the protections of a trademark (what rights do they confer and how are they different from patent and copyright).
- What constitutes infringement/ defenses for infringement.
- Difference between trademark/ trade dress.
- Concept of distinctiveness—what is a distinctiveness?
- What is like to lose a trademark
- Concept of assigning a trademark (like in copyright, patent)
- Defenses
- Fair use ; very different from Copyright
- Must know what it is in ALL IP area
- ISSUES
- Geography: b/c of Internet, where does your trademark right exist? What are the limitations that apply to trademark that does not elsewhere.
- Trademark dilution
what is a trademark?
mark of quality of trade.
- advertising
- proof of manufacturer
- signature of quality
- reliance for consumer
- resultant competitiveness in the marketplace because quality is not anonymous
modern view of trademarks is that they are a device that helps to reduce information and transaction costs by allowing customers to estimate the nature and quality of a good before purchase.
legal remedy needed against counterfeiting.
trademarks are protected within the Lanham Act, 15 USC 1051, which provides advantages to regetered trademarks and has prehibitions against unfair methods of competition affording protection even to unregistered marks.
a brief overview of trade theory.
trademark protection is awarded merely to those who were the first to use a disstinctive mark in commerce. the first person can prevent subsequent users from employing th esame or similar mark where there would be a "likelihood of confusion" between the two marks.
the fundamental principles of trademark law are essentially tort: unfair competition and tort deception of the consumer.
they are rights acquired with the use of a trademark in commerce, and they continue only so long as that use continues.
giving the originator of a mark the right to police counterfeiting also serves to protect:
1. investment in the creation of the mark
2. investment in A&P in association with the mark
3. product-related investments such as high quality raw materials and production equipment/techniques.
the basic economics of trademark and advertising
economists make a distinction between the SEARCH CHARACTERISTICS "price, color, shape, size, category) and EXPERIENCE CHARACTERISTICS (taste, durability) of a product.
consumer protection
product incentive
goodwill of a firm: residual benefits the company receives by making the above investments in the trademark/ quality
anything can/does serve as trademark. so how do we
acquring trademarks
1. distinctiveness -- what is the signifyer that allows
zatarain's v. oak grove
we don't want competitors to be able to monopolize the terms that simply relate to the natural (or common) state of the product.
2. discriptive marks -- if a mark is inherently distinctive, then you don't have to establish that the mark is protectable. something that serves directly to the descriptive quality, but can become something distinct. a descriptive term can become a trademark. generic terms can never acquire distinctiveness (like apples will always be apples) because we want for competitors to be able to call their products by a name that lets the market place know what they are buying/acquiring and would put other competitors to a disadvantage.
the fish fry mark. where does it fall on the spectrum? descriptive, because it describes the function of the product. there are four tests for determining if the term is suggestive or descriptive.
1. look the word up: fish fry can either be used in the process of frying fish or can be a term for a fete do-do. it's either a party or process, and if you use this product in its context, it will lead you to having fried fish (p.656) if there was a fish fry party in the box, then it would be a generic term.
N.B. -- if the word is descriptive and the distinction is based on mispellings, that doesn't inherently then make it protectable.
2. imagination test:
suggestive v. descriptive marks.
but how do we
the imagination test allows you to come out with any outcome you want to.
paucity of terms that describe what a fish fry is, or what fried fish is.
but essentially, the court just makes a conclusion.
3. extent of use of the word in the market
use of someone other than the plaintiff in using the mark. in this case,
4. secondary/source identifying meaning. not just a fishfry but zatarain's fishfry. how does the consuming public think of this product. how does the public think of fish fry?
what is evidence of secondary meaning? ask people, take a survey
chick-fri tried to run one survey for two products, because the research is cheaper. but the products don't have the same type of market definitions/
jury found that taco cabana is distinct but non-functional.
1. can inhereently distinct trade dress be distinct even without secondary meaning? ... is that the right question to be asking
2.
walmart v. samara bros.
product design v. product packaging
registration and use in commerce:
registration provides notice on a nationwide scale to rights and marks.
zazu using the mark on suburban salons, it wasn't able to win against a registration with the PTO because the registration provides notice and thereby limits rights even though loreal hadn't used the trademark in that area yet
infringment:
1. must prove a valid and protectable mark
2. show that the defendant is engaging in commercial activity in such a way that confusion will result. the likelihood of confusion is the touchstone of infringement liability
- "strength of the mark" -- relates to confusion because
- type of goods
- similarity of the marks
- evidence of actual confusion
- defendant's intent
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Trademark
-know what is a trademark
- know the subject matter of trademark law and what can and can’t be trademarked
-what rights does trademark confer
- what constitutes infringement and what defenses are available to an infringer of trademark
-special areas of trademark law
- distinctiveness- what is a distinctive mark and what does not, what does it mean to lose ones trademark right
- concept of assigning trademark rights
- fair use in trademark- know fair use in the areas we study
- geography- where do you possess your trademark rights- there are geographical restrictions
-trademark dilution- applies to famous marks and confers stronger protection than traditional trademark law
Names to Know in IP
-Chism on Patent
-Nimmer on Copyright
-McCarthy on Trademark
Trademark has gotten important. It is one of the fastest methods of protection and people use it to shore up gaps in their protection when they are not sure if they can get copyright or patent. Keep in mind strategically when it is useful to protect marks.
- whether a color can be trademarked
We can have trademarks that are a color, sound, or scent. We allow these aspects to be trademarked b/c
- trademarks are not about the incentive theory- it is not about creating more art or inventions. We don’t care about an incentive to create marks. we care about the owners of the marks to invest in injecting more info about goods into the market place. we want them to make their marks stronger b/c we are trying to reduce the cost of maintaining information to consumers. trademark law is to protect the consumer by creating an incentive for owners to invest in and signal their ownership of a market. Marks tell about the origin of goods or services. We are also seeing a shift away from the notion that trademark is about reducing consumer confusion to a belief that it is to protect businesses. It is to protect the owners so that they can differentiate their product in the market place. We are protecting the good will and investment of the trademark holder in their brand and we don’t want other people to use the trademark.
- Trademark law is to prevent others from copying and using a source identifying mark in commerce. By protecting against this, this reduces the cost to consumers
- 1. protects consumers against deception. The marks give certain qualities and they protect consumers so that they can rely on the mark. It also protects consumers against search costs so that they can just rely on a mark and not have to figure out if the product is reliable and of good quality. We want to reduce this to promote the economy.
- 2. investment theory- once you have a mark, you should put money into the mark. If you have a right in the mark then you will invest in it more and this is encouraged.
- 3. Property theory- you put money into the mark and so you own it.
Difference between a trademark, a service name, etc.
Trademarks have to do with sales.
The constitutional provision- the commerce clause. The right to regulate interstate commerce gives congress the right to create a federal trademark statute.
The trademark statute is the Lantham Act.
The Lantham Act
Subject matter- only applies to the use in commerce. It is not like patent of copyright.
The subject matter is broad.
Qualitex v. Jacobson
Qualitex uses green/gold color on pads for its presses. Jacobson is accused of infringing and Jacobson says there is no valid trademark
The issue is whether there can be a trademark on a color and the court says yes. But in order to be entitled to a trademark, the trademark must take on a secondary meaning. It is not enough just to be a color. You have to show a secondary meaning b/c it has to associate to the source. It does not have to associate to the product, it does not have to do with quality. It has to associate to a source. You don’t have to know the source, you just have to know the color is from a particular source. Either a mark is inherently distinctive enough so that it signifies it is from a particular source- in this case you don’t need secondary meaning b/c it is built in. sometimes a mark is distinctive immediately and sometimes it has to acquire its trademark function over time- it has to acquire its secondary meeting over time.
The def gives reasons why there should not be a trademark b/c
- uncertainty of disputes to decide which colors are trademarked. The court says this is something it can do. it is not right to deny trademark just b./c it is hard to tell between colors
- colors are in limited supply and if you allow colors to be trademarked then you will run out of colors. The court says there are a lot of colors. If we get to a point where the competitor does not have a color, then we will deal with it, but it is not a reason now to deny trademark. Trademarks can be colors and we careabout whether the colors can indicate the source of the goods. If the colors can do this then this meets the requirements of trademark.
Service Mark- a trademark for the sale of services
Trade Name- a corporate name and is not covered by federal trademark law. Trade name is covered by state law. A commercial name is any individual name used by a manufacturer, merchant, etc to identify their business, etc. it is the way of identifying a company or business. There are business that have one name but different marks. Pepsi- has a trademark, owns mountain dew which is also trademarked. A word can be both trademark and trade name - dow chemical- this is a trademark and a trade name
How to tell when a word is used as a trademark or trade name. put brand between the trademark or name and the word after it- ex: dow brand polyenthene- this is a trademark b/c you are selling it. There are state protections against using a confusingly similar name, but this is a matter of state law.
Two other marks:
Certification marks- certifying region or nation of origin (ex: champagne) a certification mark signifies region or nation of origin, characteristics of the good. This is a mark that is used by the person other than the owner in which the owner has an interest in letting people use it.
Collective marks- certify belonging to a cooperative. Says you are a member of a group- indicates membership is an association or collective. It is not about national origin.
These marks are available to those who are setting the standards or are members of the group. These marks service a similar function to that of traditional trademarks.
Trade dress
There is a concept of a federal common law of unfair competition-the notion of unregistered marks, and federal common law most often protects design packaging and shape. Trade dress is design, packaging, shape- ex: Coke bottle.
Trade dress is a design that has a source signaling function. This is often protected by the common law of trademark.
Requirements of protection of trademark
1. mark has to be distinctive
This is a sliding scale of protection. The less the mark describes the product the stronger the mark. The less it describes the mark, the stronger the distinctiveness and the stronger the protection.
Something is generic when it describes the article. Generics can never be trademarked. Something could start out as a trademark, but then it can become generic and lose the trademark- ex: Kleenex, shredded wheat,
A descriptive term must have secondary meaning for trademark protection, you don’t get it right away. It is something that you acquire over time.
Zatarains case- 4 categories
1.suggestive
2.generic
3. descriptive
4.
Court said it is descriptive so they have to see if there is a secondary meaning so as to acquire trademark function.
They show this by taking surveys. How do we know whether something is descriptive: 1. dictionary test- if word is in the dictionary then it is not fancifal
2. ifit takes imagination then not descriptive
3. whether they would need the term to describe the product. If it is necessary to make and sell the product, then the court will not view it as a trademark.
Classically there are 2 ways to assert secondary meaning
1. after a certain point under the lantham act- if the person uses the mark for 5 years then they have incontestability and have achieved secondary meaning
2.survey evidence- ask if people associate the mark or term with the brand- source identifying function.
Why do fanciful marks need the strongest protection? b/c we want to encourage businesses to invest in these marks b/c they are least likely to cause confusion. They don’t take anything from competitors.
2. priority- you have to be the first person to use it.
You don’t have to register for trademark unlike copyright and patent.
Questions to keep in mind
1. What is it?
2. What is the purpose?
• Trademarks, unlike patent and copyrights, are not about the incentive theory – not about creating more trademarks
• Once marks are created, want an incentive for creators to invest in them in a way to produce more information about goods and services in the market place
• Want to make marks stronger as an informational signal because (1) reduce costs of obtaining info about goods and services to consumers (2) to create more description about the origin of goods and services – helpful to consumers to make more informed choices
• Seeing a shift away from the notion that TM is about reducing consumer confusion (a tort theory) towards a shift that is really about protecting businesses (protecting property rights of owners who own brands and use them to differentiate themselves from products in marketplace and persuade to buy and to signal success of a product)
3. What is the purpose of legal protection for marks?
• Goal is to prevent others from copying and using a source identifying mark in commerce and by doing so, reduces the costs to consumers
• Reduces cost to consumers by
o Protecting consumers against deception (tort theory) → may not be the same quality than expect
o Protects consumers against the search costs → the time it costs to decide between two products
o Awarding investment in business goodwill → once have a mark, should put money in marketing, advertising and branding in order to bring down costs for consumer and reduce confusion
o Protecting business investment → put money in mark and therefore own something and protect it in a way the protect property
Origin of Trademark is consumer confusion
Types of Marks
• Trademark
• Service Mark
o Mark used for selling services, rather than goods
• Trade Name
o Ex: XYZ, Corp.
o State corporate registration – outside federal law
• Are state law protections for using similar names
• Companies are generally not allowed to have the same name
o Way of identifying a name of a business
o What is the difference btw a trademark and a trade name?
• There are not interchangeable
• A company can have one name and then have other trademarks – ex: Pepsi is a name that has Pepsi as a trademark but also owns Mountain Dew
• Can tell the difference using a quick test by putting “brand” name and product – if makes sense, probably a trademark because it what selling
o Why are they different?
• Certification Mark
o Certifies regional or other origin, material, mode of manufacturer, quality, accuracy, or other characteristics of goods and services
o Used by a person other than its owner in which owner has a bona fide intention to permit someone else to use in commerce
• Collective Marks
o Certifies belonging to organization – signals membership in a collective
o For example, belonging to specific untion
Constitutional Basis: Commerce Clause
• Right to regulate interstate commerce gives Congress the right to regulate trademarks
• 15 USC 1127: Lanham Act
o Only applies to use in commerce – not like patent and copyright → not about just having the brand
• Cannot have a brand or logo registered as a trademark unless produce is sold in commerce
Subject matter of trademark is extremely broad
• Qualitex Co. v. Jacobson Products Co., Inc.
o Can get a trademark on a color
o Court says that why shouldn’t be able to – the definition of trademark is not restricted
o Color can act as a symbol that distinguished a firm’s goods and identifies a source
o But need evidence that service’s source’s function and evidence may be collected over time
o Δ gives 4 reasons why the courts, as a matter of public policy, should not allow a protectable trademark in this case
• 1. Due to shades of colors, create confusions of the courts
• Court says not enough to deprive a trademark because it may be difficult to tell difference for the courts
• 2. Colors are a limited of supply and if allow a company an exclusive right to have a monopoly, will limit other companies and soon run out of companies.
• While closely related areas may not use the same mark but sources in different areas of the marketplace may use the same mark
• Court says there are a lot of colors out there and if face this problem, then deal with the problem → not a reason at the moment, to outlaw color as a trademark
• In order to get the trademark in something like color, what does the mark have to do?
o It has to take on a secondary meaning → have to associate to a specific source (doesn’t have to associate to the product or the quality) – don’t have to know the name of the source, just have to know the color associates to a specific source
• Sometimes requires to take on a secondary meaning over time because it is not very distinctive and obvious (such as the Starbuck’s mermaid)
• Can become a trademark over time
Requirements for Protection
• 1. Mark has to be distinctive → sliding scale of protection
o Generic: describes the basic nature of the article or services
• Ex: Vision Care
• Can never be trademarked
• “Genericide” → when a term becomes so generic as to lose protection, e.g. Kleenex, elevator, shredded wheat
o Descriptive
• Identifies a quality of characteristic
• REQUIRES A SECONDARY MEANING TO ACQUIRE LEGAL PROTECTION
• E.g.: Tender Vittles
• Also, geographic names; e.g. Nantucket Soft Drinks
• Also, personal names; e.g. O’Mally’s Beer
• Zatarain’s Inc. v. Oak Grove Smokehouse, Inc.
• Court says “Fish Fry” is descriptive so have to ask have consumers come to identify “fish fry” with Zatarain’s
o Determine this by doing surveys
• 2 ways to assert secondary meaning
o 1. If use mark for 5 years, deemed to achieve some kind secondary meaning
o 2. Survey evidence
• Court goes through extended discussion as to whether decide whether something is descriptive or not – 3 reasons
o 1. Dictionary test – to describe product
o 2. Imagination test – does it take imagination to think about what it does
o 3. Whether competitors need to use the term in the mark to describe their product – if takes something out of circulation that is need to engage in commerce (if mark is functional/necessary), court is not going to view as being a trademark
• Secondary meaning
• Primary significance of the term in the minds of the consuming public is to identify, not the product, but the producer
• Source need not be known exactly just known to be a particular source
o Suggestive
• Suggests rather than describes some particular aspects of the goods or services
• DOES NOT REQUIRE SECONDARY MEANING
• E.g. Coopertone
o Arbitrary or Fanciful
• Bears no relationship other nature of the good or services
• E.g. Exxon, Kodak, Haagen Dazes
• These are the strongest mark
• Why do fanciful marks gets the strongest protection? Incentive for people to invest in them because least likely to create confusion and don’t prevent competitors from entering the marketplace (don’t take anything away from potential competitors)
o Distinctiveness and Protection → Scope of protection
Generic Descriptive Suggestive Arbitrary
+ Secondary meaning
• 2. Priority → have to be first person to use it
• Don’t have to necessarily register – like copyright, unlike patent
Trade Dress
What is trade dress and how is it different from a trademark?
• Trade dress as packaging, design and shape – not logos
• Examples: shape of Coke bottle, restaurant décor, sweater design, etc.
What section of the Lanham Act applies to trade dress?
Why is it said to be protected by “federal common law”?
• Concept of federal law of unfair competition → unregistered marks
• Federal common law most often protects like design, packaging and shape
Statutory v. common law trade dress protection
• Often protected by common law of trademark
CASES
Qualitex v. Jacobs
Question: Can color be a subject matter of trademark? Why do we allow color, sound, scent to be a trademark?
Purposes of a trademark (What is it, purpose? What is the purpose of legal protection for marks?)
- It is not about incentive theory (unlike patent, copyright- we want more people to create/innovate scientific inventions). We don’t care about people’s innovations. We want people to invest in a trademark as a way of ejecting more information about products/services in the market place. Information signal to make their mark STRONG.
- We want to reduce the costs of obtaining information, reduce confuse consumers (trademark is about consumer protection !). We create incentives for owners to invest in signals of their ownership in a mark--- more description about the origin of goods/services. We think this is helpful to consumers to make more INFORMED choices.
- Tort theory: tort against consumers
- Property theory: Property rights of owners who own their brands/ differentiate themselves from market places/ signal the success of the product. WE are not only protecting consumers, we protect goodwill in the brand—unfair for property holder/trademark owner to allow others to use their trade investment built up.
- Copyright – 6 limited rights
[*origin of trademark is consumer confusion]
Legal protection:
To prevent others from copying and using the source that identify an article in commerce.
This reduces the costs to consumers—how?
3 ways
1. protect consumers against deception (i.e. Tropicana, Tropicaly juice)- when consumers go to a store, spends more time figuring out which one to buy- same logo, color etc. If that product did not have the same quality, wastes money and time.
- protect consumers against search costs (thinking about which one to get/ figuring out ): this cost gets higher when you are shopping for expensive products (computer, resorts w. similar names)
2. rewarding investment in goodwill: not incentive to create a mark; once you have a mark, you spend a lot of money in advertising/ marketing. Giving people rights in their marks, encourage them to invest inthem.
3. protecting business investment: property concept; you protect your own investment in the business marks they created.
TRADEMARK issues are becoming more important because now more people are overwhelmed w/ information available on Internet, TV, etc.
TRADEMARK- has to do w/ sale.
· Constitutional basis
o Commerce Clause: right to regulate interstate commerce is what gives trademark law basis.
· Statute
o Trademark 15 USC 1127 (PRINT OUT statutes)
o Important
§ “trademark includes”.... “applies in use in commerce”- must use it in commerce.
§ Subject matter is extremely broad.
o TEXT
§ “The term trademark includes, any word, name, symbol, or device, or any combination thereof-
· 1 ) used by a person, or
· 2) which a person has a bona fide intention to use
§ IN COMMERCE and APPLIES to register on the principal register established by this chapter
§ TO IDENTIFY and DISTINGUISH his /her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
TRADEMARK
· Know difference between trademark and service mark
o Trademark
o Service mark
QUALITEX v. Jacobson [Color]
Infringer says : Qualitex does not have a valid trademark. You cannot get a trademark on a color.
ISSUE: Is color (green-gold) be a trademark?
HOLDING: yes
REASONING
· Subject matter in trademark is extremely broad
· In order to be entitled to a trademark, a trademark has to:
o Take on a secondary meaning (not enough just to be color): it must associate with the SOURCE (not the product- dry cleaning pad/ or about quality- good/bad): must know that the green-gold color is from a specific SOURCE.
§ A mark all by itself signal a relationship to a specific source. A mark may be distinctive enough (inherently distinctive- ie. Nike swish logo, Coke logo- logo does not explain anything about shoes, but it gives a specific source)
§ Secondary meaning: to identify the source not the product itself
§ Inherently distinctive: do not need secondary meaning/ right off the bet, the mark is distinctive.
§ Example: starbux mermaid – nothing about it says coffee.
· Mermaid is functioning as a trademark.
o A mark: not so distinctive takes take to acquire a secondary meaning and become a trademark overtime (not automatic as in copyright + patent)
· Color
o Act as a identifying mark that traces back to the source
o
· Defendant’s objections - 4 reasons (p620)
o As a matter of public policy, we should not allow colors to be a trademark.
o 1) Colors: create confusions to courts in determining color shades/varieties
§ Court says: we don’t deprive someone of trademark b/c it will be difficult for the courts
o 2) Limited supply of colors: we will run out of colors if we allow colors to be trademarks
· Court analysis
o If we come to a point where competitors cannot use the color (run out of colors), then we will deal w/ it, but not now.
o If COLOR – functions to “indicate the source of the goods”- then it satisfy the statute.
· Examples of trademark
o Drumming style
o Décor of a restaurant
o People argue that the way I drum signals a source (unlike Patent/copyright)
· KEY POINT
o COLOR serves as a mark that signals a source/ serves a source identifying function in commerce—trademark
o Trademark rights: you only get these rights only when used in commerce, sales.
· SERVICE MARK
o Legal services—see slide
· TRADE NAME (trademark / trade name are not interchangeable !)
o Pepsi: trademark and is also a trade name. Mountain Dew is owned by Pepsi.
o DOW chemical- DOW is a trade name and also a trademark that identifies a source (DOW chemical)
o How do we know whether a mark is a trade name and trade mark
§ Example: Dow brand chemical engineers (dow chemical engineer is a trade name)
· Dow brand polyeehlin (trademark- use in commerce)
· TEST: put ‘brand’ in the middle
· Don’t confuse a company name with a trademark.
o A corporate/ company name not covered in trademark law
o Is covered by state law
o XYZ corp
o Names/titles/ used by persons associated w/ the company?
- CERTIFICATION MARK – see statute
- Any word, name, symbol, device, or any combination
- Used by a person OTHER than its owner
- Which its owner has a bona fide intention to permit a person other than the owner to use in commerce
- To certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’ goods/ services that
- Example: kosher products: what qualifies as a kosher product- kosher organization sets the standard.
- Calamada Olives- come from
- Swiss cheese – comes from swiss --- they all reduce consumer search costs.
- Any word, name, symbol, device, or any combination
- COLLECTIVE MARKS (reputation mark)
- Indicates membership of an association/ not about geographic origin
- You belong to a specific group
- See P632-633:
- TRADE DRESS
- What is trade dress and how is it different from a trademark
- Unfair Competition
- You don’t have to register to get trademark protection
- Think of trade dress as Design, packaging, shape (coke bottle shape, décor of a restaurant, design of a sweater, design of a source signaling a function)
- “Federal Common Law” ?---- see in text
- Requirements for protection (REVIEW in text – see chart)
- 1) requirement for trademark
- Most important- you mark has to be DISTINCTIVE !
- 2) Priority (gotta be first person to do it)
- You don’t have to register
Distinctiveness (sliding scale protection)
- Generic: Describes the article itself—never be trademark (i.e can start out being distinctive but lose it over time – Kleenex: signifies a single source, but overtime, people used it so much became generic)
- When a term becomes so generic as to lose protection
- Google- service mark
- Becomes generic? Even if we use it as a verb, competitors are not using ‘google’ as a verb to describe their products
- Descriptive: (geographic, personal names, describes the characteristic of goods- “fish fri”)
- Identifies a quality /characteristic of the goods
- REQUIRES: secondary meaning to acquire legal protection (Zatarain case p642)
- E..g Tender Vittles
- E.g. personal names- O’Mally’s Beer
- Secondary meaning:
- primary significance of the term in the minds of the consuming public is to identify, not the product, but the producer
- Source need not be known exactly just known to be a particular source.
- Zatarain v. Oak Grove
- Survey:
- 2 ways to assert secondary meaning
- After a certain point (i.e. owner uses the mark for 5 years, then it will be assumed that you have achieve a secondary meaning)
- By survey evidence (i.e. ask housewives about how they associate with the product)
- How do we know who the consumers are?
- Suggestive
- Suggests rather than describe (e.g. Coppertone – suggests certain lifestyle)
- Suggests rather than describe (e.g. Coppertone – suggests certain lifestyle)
- Arbitrary or fanciful (stronger your level of distinctivenssà stronger protection
- No relationship to the product (Haggen Daz, Kodak, Exxon)
- When you saw the word alone, you will never be able to guess what the goods/services are.
- We want to prevent consumer confusion
Trademark
: goal is to protect consumers
- See SLIDE: Distinctiveness and protection
See p640--- Court discussion of 4 reasons why something is descriptive
1) dictionary test: if you find it, not fanciful
2) imagination : does it take imagination to know what it is
3) whether comptitors would need the terms to describe their products (something is needed in order to engage in commerce/ if it is necessary to sell the product—then court will not view it as a trademark)
® --- when you register a trademark
TM- is not a trademark
NEXT CLASS: TRADE DRESS
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· 3 categories for determining whether a product’s trade dress is protectable:
o Product packaging AND (CAN be inherently distinctive)
o Product Design AND (CAN’T be inherently distinctive)
o Tertium Quid (something indefinite or left undefined) related in some way to two (definite or known) things, but distinct from both. (CAN be inherently distinctive)
Two Pesos, Inc. v. Taco Cabana, Inc. (505 US 763 (1992))
FACTS : Taco opened a restaurant in San Antonio in 1978. Taco had 5 more restaurants in SA in 1985. Taco claims they had trade dress as a festive eating atmosphere, blah blah. In 1985, Two Pesos opened up a restaurant in Houston with a very similar theme. In 1986, Taco entered into the Houston and other markets and sued Two Pesos for trade dress infringement.
PH : The jury below held that Taco had a non-functional, DISTINCTIVE, no secondary meaning trade dress. The Court of Appeals upheld this.
ROL : if you are descriptive, don’t need secondary, otherwise you do need it???
ISSUE[EC1] : Whether secondary meaning is essential to qualify an inherently distinctive trade dress for protection under §43(a). We are dealing with unregistered as opposed to a registered trade dress. Is this trade dress distinctive? And if so, does secondary meaning required?
ANALYSIS : Since §43(a) doesn’t state, in its text, a requirement to treat trade dress[EC2] differently from trademark + where secondary meaning does appear, it is a requirement with descriptive marks and not for inherently distinctive marks + a requirement for secondary meaning would undermine the purposes of the Lanham Act[EC3] à making more difficult to get protection takes away motivation to promote their trade dress à has an anti-competitive effect since big companies could just steal away other start up’s good reputation.
HOLDING : If the trade dress is already inherently distinctive à secondary meaning is not required in order to get trade dress protection under §43(a). No, we are going to use the same standard for trade dress that we use for trademark.
· Notes
o 2 types of protection under the Lanham Act, registered and unregistered trademarks
o Why not just register the trade dress?
§ Flexibility, to not have to define what your trade sheet and evolve it over time
§ Lazy, cheap, etc.
Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
FACTS : Wal-Mart commissioned a designer to make Samara Brothers knock off sweaters.
ISSUE : What exactly does it mean for a trade dress to be inherently distinctive?
ANALYSIS : POLICY ARGUMENTS:
Since we want to allow more competition in the area of product design + product design “invariably serves” other purposes (other than distinctiveness) à want to treat product design differently from product packaging. [EC4]
HOLDING : Under §43(a) of the Lanham Act, you must show secondary meaning for unregistered product-design trade dress. PRODUCT DESIGN, LIKE COLOR IS NOT INHERENTLY DISTINCTIVE. (2 Pesos was PRODUCT PACKAGING, OR TERTIUM QUID[EC5] which CAN BE INHERENTLY DISTINCTIVE.) Some categories of marks may not be inherently distinctive. (this is a really thin logical layer… seems to overturn 2 Pesos…)
The court introduces a nearly impossible test of product design vs packaging!
The “thing” has to function as a trademark.
Need to ask, “is it fanciful or is it merely descriptive?”
Does it fall into “color/product design” that would make secondary meaning required?
Trademarked Musical Groups: (copy this slide!!!)
· Performing group names can be trademarked
· But raises unique problems of joint ownership and rights upon a change in membership
· Does the mark belong to the group or to its members?
· In one case, the live musical performance style of a rock music group (revolver) was protected…
Design
· Copyright Design
o Only those elements that are independent of the utilitarian aspects (Useful Arts Doctrine)
§ Only to the extent of artistic expression uninhibited by functional elements
§ Aethetic, nonfunctional elements of an article (pictorial, architectural, etc)
o Tests
§ If there is a merger, not copyrightable
· Patenting Design
o New, original, ornamental feature
o Industrial design
o Appearance as opposed to utility
o 14 year term
o Requirements - Novelty, originality, non-obviousness, and ???
o Design elements built in to an article of manufacturing
o Has to be VISIBLE while the object is in normal intended use
o It can have a functional purpose!
o Preventing similarity… or equivalence
· Trademarking Design
o Protect against consumer confusion
· Trade Dress
o Design and packaging
o Can be registered, but usually are not (under §43)
o Can’t be functional!
READ 3 EXTRA SLIDES
Filiing
Refusing registration
Opposition and cancellation and
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Trademark and Geography
- to have TM, you need to have 3 things;
o Distinctive mark – and a mark can earn distinctiveness with secondary meaning
o Be in use and Commerce
o Priority
• You must be the first person to be using the mark for the sale of a particular class of goods and services
• The protection goes to first user.
• When we talk about patent, whats the priority? → first to invent. (actual reduction to practice; constructive to practice).
• Similar rule here – rewarding the first person who uses the mark.
Intent to use filing
- remember concept of provisional patenting.
- We don’t have this concept in CR, b/c as soon as you fix it, you have your CR
- In Patent (examination regime) and TM, you can file an “intent to use” filing, which gives you 6 months to show use.
- Then you can get a 1 year extension (option 3 yr extension with cause)
- Priority will date from initial application for intent to use
- This puts people on notice
- Why this intent to use filing? → We are recognizing the business reality of doing business and getting into the commerce and ordering the labels (for example). Money has been invested and business built before product has been sold. Creating “buzz.”
o Now sending in website is proof of using your TMs in commerce
Lanham Act Rule of Priority
- T1, A uses the mark.
- B comes along and uses the mark later (T2), but he registers for TM protection in T3
- C comes along in T4 and uses.
- B is priority user and trumps C.
- A may be entitled to some limited rights b/c he was actually the priority user. Though he was not registered, but he was doing business under his logo. A has limited rights to use mark in the geographic area that he is doing business. A retains his rights in his geographic area. And B owns the rest of the country. C out of luck.
Common Law Rule of Priority
- A has idea in T1; uses in T2
- B has idea in T2; uses in T3
- C has idea in T3; uses in T4
- A trumps, he is the priority user in the markets in which he is operating.
- b/c B and C, B wins.
Geographic Limitations: Unregistered
- where you are the priority user, the first user, you are protected by Lanham Act protection under section 43, where you products are sold and advertised.
- You have the exclusive right to use your mark, not only in the geographic mark of operation, but in “the natural zone of expansion.” Protecting people are investing in advertising beyond their limited geographic area – e.g., regional flyer; yellow pages.
o What about e-commerce (talk about later)
- E.g., you are selling in town in IL, it might including neighboring town, the county.
- Remember Dos Pesos case, one of the implicit questions, was that Cabana was in Houston and Dos Pesos was in Austin, is the issue of what is the natural zone of expression? Where do they have rights b/c they are unregistered marks? What is the natural zone of protection for a Mexican restaurant in TX?
Lanham Act Rule of Priority: Post-TMRA
- A uses in T2
- B uses in T3
- C applies in T1; uses and registers in T4
- C WINS
- ADVANTAGE TO REGISTERING: AUTOMATIC NATIONAL PROTECTION
- Under the TM reform act (this created the concept of intent to use filing), if you apply for federal protection suing intent to use filing, your date of priority backdates to date of application. You will be deemed to use the mark at the date the application was filed.
- Coming back to conversation about patent: first to invent, wins. Invention means constructive reduction to practice. How do we determine this? → sometimes, the filing date BECOMES the priority date b/c its the best date we have.
- by analogy, you TM date, when you file is your date of use. For some people they are filing “intent to use” applications. You are entitled to backdate to the date on which you filed.
- The point is to protect people who aren’t quite ready to use.
=================================================
Trademark and Geography
- to have TM, you need to have 3 things;
o Distinctive mark – and a mark can earn distinctiveness with secondary meaning
o Be in use and Commerce
o Priority
• You must be the first person to be using the mark for the sale of a particular class of goods and services
• The protection goes to first user.
• When we talk about patent, whats the priority? → first to invent. (actual reduction to practice; constructive to practice).
• Similar rule here – rewarding the first person who uses the mark.
Intent to use filing
- remember concept of provisional patenting.
- We don’t have this concept in CR, b/c as soon as you fix it, you have your CR
- In Patent (examination regime) and TM, you can file an “intent to use” filing, which gives you 6 months to show use.
- Then you can get a 1 year extension (option 3 yr extension with cause)
- Priority will date from initial application for intent to use
- This puts people on notice
- Why this intent to use filing? → We are recognizing the business reality of doing business and getting into the commerce and ordering the labels (for example). Money has been invested and business built before product has been sold. Creating “buzz.”
o Now sending in website is proof of using your TMs in commerce
Lanham Act Rule of Priority
- T1, A uses the mark.
- B comes along and uses the mark later (T2), but he registers for TM protection in T3
- C comes along in T4 and uses.
- B is priority user and trumps C.
- A may be entitled to some limited rights b/c he was actually the priority user. Though he was not registered, but he was doing business under his logo. A has limited rights to use mark in the geographic area that he is doing business. A retains his rights in his geographic area. And B owns the rest of the country. C out of luck.
Common Law Rule of Priority
- A has idea in T1; uses in T2
- B has idea in T2; uses in T3
- C has idea in T3; uses in T4
- A trumps, he is the priority user in the markets in which he is operating.
- b/c B and C, B wins.
Geographic Limitations: Unregistered
- where you are the priority user, the first user, you are protected by Lanham Act protection under section 43, where you products are sold and advertised.
- You have the exclusive right to use your mark, not only in the geographic mark of operation, but in “the natural zone of expansion.” Protecting people are investing in advertising beyond their limited geographic area – e.g., regional flyer; yellow pages.
o What about e-commerce (talk about later)
- E.g., you are selling in town in IL, it might including neighboring town, the county.
- Remember Dos Pesos case, one of the implicit questions, was that Cabana was in Houston and Dos Pesos was in Austin, is the issue of what is the natural zone of expression? Where do they have rights b/c they are unregistered marks? What is the natural zone of protection for a Mexican restaurant in TX?
Lanham Act Rule of Priority: Post-TMRA
- A uses in T2
- B uses in T3
- C applies in T1; uses and registers in T4
- C WINS
- ADVANTAGE TO REGISTERING: AUTOMATIC NATIONAL PROTECTION
- Under the TM reform act (this created the concept of intent to use filing), if you apply for federal protection suing intent to use filing, your date of priority backdates to date of application. You will be deemed to use the mark at the date the application was filed.
- Coming back to conversation about patent: first to invent, wins. Invention means constructive reduction to practice. How do we determine this? → sometimes, the filing date BECOMES the priority date b/c its the best date we have.
- by analogy, you TM date, when you file is your date of use. For some people they are filing “intent to use” applications. You are entitled to backdate to the date on which you filed.
- The point is to protect people who aren’t quite ready to use.
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