11

Trademarks 101Trademarks 101

[derived from numerous class presentations [derived from numerous class presentations

given by Professor Baron in MM 450]given by Professor Baron in MM 450]

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A A trademark trademark is a word, phrase, is a word, phrase, symbol or design, or a combination of symbol or design, or a combination of words, phrases, symbols or designs, words, phrases, symbols or designs, that identifies and distinguishes the that identifies and distinguishes the

source of the goods of one party from source of the goods of one party from those of others. those of others.

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A A service markservice mark is the same as a is the same as a trademark, except that it trademark, except that it

identifies and distinguishes the identifies and distinguishes the source of a service rather than a source of a service rather than a

product.product.

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KodakKodak ExxonExxon Coca ColaCoca Cola Mc DonaldMc Donald’’ss StarbucksStarbucks WalmartWalmart MTVMTV VictoriaVictoria’’s Secrets Secret

PolaroidPolaroid XeroxXerox LegoLego Beanie BabiesBeanie Babies KraftKraft PlayboyPlayboy AppleApple DellDell

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Before using a mark, or applying to register Before using a mark, or applying to register one, you should search to see if itone, you should search to see if it’’s already s already

registered for useregistered for use

Trademark SearchesTrademark Searches www.uspto.govwww.uspto.gov Private search firmsPrivate search firms

• Will pick up Will pick up ““common lawcommon law”” uses uses • Expensive ($400 - $500) per mark searchedExpensive ($400 - $500) per mark searched

http://tess2.uspto.gov/bin/gate.exe?http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=896lck.1.1f=searchss&state=896lck.1.1

77

88

99

1010

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How do I acquire trademark How do I acquire trademark rights?rights?

From use of the mark in commerceFrom use of the mark in commerce Within a particular segment of the economy Within a particular segment of the economy

(as defined by the Trademark office)(as defined by the Trademark office) Within a specified geographic area (as Within a specified geographic area (as

specified by where you do business and/or specified by where you do business and/or the area for which you apply)the area for which you apply)

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What is use in commerce?What is use in commerce?

For goods:For goods: the mark must appear on the the mark must appear on the goods, the container for the goods, or goods, the container for the goods, or displays associated with the goods, and displays associated with the goods, and the goods must be sold or transported in the goods must be sold or transported in commerce.commerce.

For services:For services: the mark must be used or the mark must be used or displayed in the sale or advertising of the displayed in the sale or advertising of the services, and the services must be services, and the services must be rendered in commerce.rendered in commerce.

Again, the economic niche(s) and Again, the economic niche(s) and geographic area(s) in question.geographic area(s) in question.

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Mark Must Be Mark Must Be ““DistinctiveDistinctive””Fanciful Arbitrary Suggestive Descriptive Generic y Generic n

Fanciful Arbitrary Suggestive Descriptive Generic y Generic n

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Mark Must Be Mark Must Be ““DistinctiveDistinctive””

Fanciful (Exxon)Fanciful (Exxon) Arbitrary (Apple)Arbitrary (Apple) Suggestive (Coca-Cola)Suggestive (Coca-Cola) Descriptive (Expert Plumbers)Descriptive (Expert Plumbers) Generic yes (Xerox)Generic yes (Xerox)

When a trademark from When a trademark from ““aboveabove”” category falls into category falls into ““Generic,Generic,”” there is a risk of loss of rights. Xerox and there is a risk of loss of rights. Xerox and Kleenex (for example) have to fight hard to protect Kleenex (for example) have to fight hard to protect their marks.their marks.

Generic no (Tissues)Generic no (Tissues)

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Is registration of a mark required?Is registration of a mark required?

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No.No. You can establish You can establish rights in a mark based on rights in a mark based on

legitimate use of the legitimate use of the mark in commerce.mark in commerce.

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Why Register?Why Register? constructive notice to the public of constructive notice to the public of

the registrant's claim of ownership of the registrant's claim of ownership of the mark; the mark;

a legal presumption of the a legal presumption of the registrant's ownership of the mark registrant's ownership of the mark and the registrant's exclusive right to and the registrant's exclusive right to use the mark nationwide on or in use the mark nationwide on or in connection with the goods and/or connection with the goods and/or services listed in the registration; services listed in the registration;

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Why Register?Why Register?

the ability to bring an action concerning the ability to bring an action concerning the mark in federal court; the mark in federal court;

the use of the U.S registration as a basis to the use of the U.S registration as a basis to obtain registration in foreign countries; obtain registration in foreign countries; and and

the ability to file the U.S. registration with the ability to file the U.S. registration with the U.S. Customs Service to prevent the U.S. Customs Service to prevent importation of infringing foreign goods.importation of infringing foreign goods.

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Where to Register?Where to Register?

State RegistrationsState Registrations Cheaper (Illinois = $15)Cheaper (Illinois = $15) Statewide protectionStatewide protection

Federal RegistrationsFederal Registrations The cost to apply for a U.S. trademark is now The cost to apply for a U.S. trademark is now

$325 per class of goods and services (if you $325 per class of goods and services (if you use the electronic filing system).use the electronic filing system). It may be It may be even lower ($275) if the applicant uses a pre-even lower ($275) if the applicant uses a pre-ordained description of good and servicesordained description of good and services

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When can I use the When can I use the trademark symbols TM trademark symbols TM

and SM?and SM? Any time you claim rights in a mark, Any time you claim rights in a mark,

you may use the "TM" (trademark) or you may use the "TM" (trademark) or "SM" (service mark) designation to "SM" (service mark) designation to alert the public to your claim, alert the public to your claim, regardless of whether you have filed regardless of whether you have filed an application with the USPTO.an application with the USPTO.

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When can I use the When can I use the trademark symbol ®?trademark symbol ®?

You may use the federal registration You may use the federal registration symbol "®" symbol "®" onlyonly after the USPTO after the USPTO actually actually registers a markregisters a mark, and , and notnot while an application is pending. Also, while an application is pending. Also, you may use the registration symbol you may use the registration symbol with the mark only on or in with the mark only on or in connection with the goods and/or connection with the goods and/or services listed in the federal services listed in the federal trademark registration.trademark registration.

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What must an application What must an application include?include?

the name of the applicant;the name of the applicant; a name and address for a name and address for

correspondence;correspondence; a clear drawing of the mark;a clear drawing of the mark; a listing of the goods or services; and a listing of the goods or services; and the filing fee for at least one class of the filing fee for at least one class of

goods or services. goods or services.

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How long does a federal How long does a federal trademark last?trademark last?

10 years 10 years Renewable for successive 10 year periodsRenewable for successive 10 year periods After 5 years, with proper filings, mark After 5 years, with proper filings, mark

becomes becomes ““incontestableincontestable””

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Trademark InfringementTrademark Infringement and Dilution and Dilution

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What is a trademark What is a trademark Infringement?Infringement?

Senior user owns markSenior user owns mark Junior user begins to use the same or Junior user begins to use the same or

similar mark on the same or similar goods similar mark on the same or similar goods or servicesor services

Likelihood of confusion in marketLikelihood of confusion in market

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Who is the law protecting?Who is the law protecting?

ConsumersConsumers The publicThe public’’s right not to be confuseds right not to be confused

Mark ownersMark owners The right to develop brand awarenessThe right to develop brand awareness The right to prevent free-loaders from trading The right to prevent free-loaders from trading

on the mark owneron the mark owner’’s good will and reputation s good will and reputation in the market placein the market place

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What law appliesWhat law applies

Federal StatutesFederal Statutes The Lanham ActThe Lanham Act

• 15 U.S.C. §§ 1051 - 1127 15 U.S.C. §§ 1051 - 1127

State StatutesState Statutes Counterfeit Trademark ActCounterfeit Trademark Act

• 765 ILCS 1049765 ILCS 1049 http://www.legis.state.il.us/legislation/ilcs/ch765/http://www.legis.state.il.us/legislation/ilcs/ch765/

ch765act1040.htmch765act1040.htm

Judicial DecisionsJudicial Decisions

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Lanham ActLanham Act (1) (1) Any person who shall, without the consent of the Any person who shall, without the consent of the

registrant - registrant - (a) (a) use use in commercein commerce any reproduction, counterfeit, copy, or any reproduction, counterfeit, copy, or

colorable imitation of a colorable imitation of a registered markregistered mark in connection in connection with the sale, offering for sale, distribution, or advertising with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which of any goods or services on or in connection with which such use is such use is likely to cause confusionlikely to cause confusion, or to cause , or to cause mistake, or to deceive; or mistake, or to deceive; or

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Lanham ActLanham Act

(b) (b) reproducereproduce, , counterfeitcounterfeit,, copy copy, or colorably , or colorably imitate imitate a a registered markregistered mark and apply such and apply such reproduction, counterfeit, copy, or colorable reproduction, counterfeit, copy, or colorable imitation to imitation to labels, signs, prints, packages, labels, signs, prints, packages, wrappers, receptacles or advertisementswrappers, receptacles or advertisements intended to be intended to be used in commerceused in commerce upon or in upon or in connection with the sale, offering for sale, connection with the sale, offering for sale, distribution, or advertising of goods or services distribution, or advertising of goods or services on or in connection with which such use is on or in connection with which such use is likely likely to cause confusionto cause confusion, or to cause mistake, or to , or to cause mistake, or to deceive, deceive,

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Lanham ActLanham Act

shall be liable in a civil action by the shall be liable in a civil action by the registrant for the remedies hereinafter registrant for the remedies hereinafter provided.provided. InjunctionInjunction DefendantDefendant’’s profitss profits PlaintiffPlaintiff’’s damagess damages CostsCosts AttorneyAttorney’’s fees (if infringement willful)s fees (if infringement willful)

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Likelihood of Confusion FactorsLikelihood of Confusion Factors

Similarity of the MarksSimilarity of the Marks Similarity of the ProductsSimilarity of the Products Area and Manner of Concurrent UseArea and Manner of Concurrent Use Degree of Care Exercised by ConsumersDegree of Care Exercised by Consumers Strength of PlaintiffStrength of Plaintiff’’s Marks Mark Actual ConfusionActual Confusion Intent of DefendantsIntent of Defendants

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Types of ConfusionTypes of Confusion ForwardForward

Small Junior trades off of Big Senior UserSmall Junior trades off of Big Senior User ReverseReverse

Big Junior saturates market and overwhelms Small Senior UserBig Junior saturates market and overwhelms Small Senior User Initial InterestInitial Interest

Confusion that creates an initial customer interest (e.g. meta-Confusion that creates an initial customer interest (e.g. meta-tags, domain names)tags, domain names)

Post-SalePost-Sale Confusion of someone other than purchaserConfusion of someone other than purchaser

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Anticybersquatting Consumer Anticybersquatting Consumer Protection Act (ACPA)Protection Act (ACPA)

Enacted in 1999Enacted in 1999 Addresses the problem of domain name Addresses the problem of domain name

hi-jackershi-jackers

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Liability Under ACPALiability Under ACPA

Bad faith intent to profit from markBad faith intent to profit from mark Register, traffic in or use a domain name Register, traffic in or use a domain name

that:that:

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Liability Under ACPALiability Under ACPA

(I) (I) in the case of a mark that is in the case of a mark that is distinctivedistinctive at the at the time of registration of the domain name, is time of registration of the domain name, is identical or confusingly similaridentical or confusingly similar to that mark; to that mark;

(II) (II) in the case of a in the case of a famous markfamous mark that is famous that is famous at the time of registration of the domain name, is at the time of registration of the domain name, is identical or confusingly similar to or dilutiveidentical or confusingly similar to or dilutive of of that mark; or that mark; or

(III) (III) is a trademark, word, or name protected by is a trademark, word, or name protected by reason of section 706 of title 18 or section reason of section 706 of title 18 or section 220506 of title 36. 220506 of title 36.

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““Bad FaithBad Faith”” Elements under Elements under ACPAACPA

(1) (1) trademark or other IP rightstrademark or other IP rights in domain in domain name; name;

(2) (2) domain name consists of domain name consists of legal namelegal name of of person or name used to identify person; person or name used to identify person;

(3) (3) person's person's prior use of domain nameprior use of domain name in in connection with offer of goods or services; connection with offer of goods or services;

(4) p(4) person's erson's noncommercial or fair usenoncommercial or fair use of the of the mark in site; mark in site;

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““Bad FaithBad Faith”” Elements under Elements under APCAAPCA

(5) (5) intent to divert consumersintent to divert consumers from the mark from the mark owner's online location to a site accessible owner's online location to a site accessible under the domain name;under the domain name;

(6) (6) offer to transfer domain nameoffer to transfer domain name to the mark to the mark owner or any third party owner or any third party for financial gain without for financial gain without having used or intended to use domain namehaving used or intended to use domain name to to offer goods or services; offer goods or services;

(7) (7) provision of provision of false contact informationfalse contact information when when applying for the registration of the domain name;applying for the registration of the domain name;

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““Bad FaithBad Faith”” Elements under Elements under APCAAPCA

(8) registration or acquisition of (8) registration or acquisition of multiple domain namesmultiple domain names which the person knows are identical or confusingly which the person knows are identical or confusingly similar to marks of others that are distinctive at the time similar to marks of others that are distinctive at the time of registration of such domain names; of registration of such domain names;

(9) (9) the extent to which the the extent to which the markmark incorporated in the incorporated in the domain name registration is or is not domain name registration is or is not distinctive and distinctive and famousfamous within the meaning of subsection (c)(1) of this within the meaning of subsection (c)(1) of this section. section.

Domains v. Search TermsDomains v. Search TermsThe protection afforded trademarks as URLs/domain names is not afforded/extended to the use of trademarks as search terms.

Generally, the courts have not limited the use of trademarks as search terms (or the related auctions and commerce that goes with them). See, for example, “Important Ninth Circuit Ruling on Keyword Advertising, Plus Recaps of the Past 4 Months of Keyword Ad Decisions” (very detailed review of a case and the issues, March, 2011, by Eric Goldman).

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Trademark DilutionTrademark Dilution

Lessening of a famous mark to identify Lessening of a famous mark to identify and distinguish goods and servicesand distinguish goods and services

Irrespective of:Irrespective of: Competition between owner of mark and other Competition between owner of mark and other

parties; orparties; or Likelihood of confusion, mistake or deceptionLikelihood of confusion, mistake or deception

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Trademark DilutionTrademark Dilution

““BlurringBlurring”” distinctiveness of mark distinctiveness of mark ““TarnishingTarnishing”” reputation of mark reputation of mark

McLeodMcLeod

Chapter 4:Chapter 4:

Visual and Sound Collage Visual and Sound Collage vs.Copyright and Trademark Lawvs.Copyright and Trademark Law

You just canYou just can’’t do that… well, sorta t do that… well, sorta notnot

http://techregulation.blogspot.com/2007/12/http://techregulation.blogspot.com/2007/12/mashups-bad-covers-good-should.htmlmashups-bad-covers-good-should.html

Appropriation in the ArtsAppropriation in the Arts

This chapter generally validates the notion I This chapter generally validates the notion I offered earlier that IP law tends to care a lot offered earlier that IP law tends to care a lot less about protecting intellectual property than less about protecting intellectual property than about following the money. about following the money. Art doesnArt doesn’’t get main stream exposure.t get main stream exposure. Art doesnArt doesn’’t generate the revenue stream.t generate the revenue stream. So artists generally continue with traditional So artists generally continue with traditional

patterns of intertextual appropriation, generally patterns of intertextual appropriation, generally unfettered.unfettered.

Sound CollageSound Collage

Artists used as experimentation, since the very Artists used as experimentation, since the very beginnings of recorded sound, what we would beginnings of recorded sound, what we would now have to call now have to call ““samplingsampling”” (over which one (over which one is forced to pay extensive fees and obtain is forced to pay extensive fees and obtain tough permissions).tough permissions). By the late 1980By the late 1980’’s artists in this genre were s artists in this genre were

targeted by intellectual-property holding targeted by intellectual-property holding companies.companies.

A practical problem in the law:A practical problem in the law:Which infringements should we promote? Which infringements should we promote?

Forbid? Must we thereby silence all?Forbid? Must we thereby silence all? Sound collage artists.Sound collage artists.

Snips, mixed, a Snips, mixed, a ““newnew”” thang. thang. Hip-hop style recording artists.Hip-hop style recording artists.

Often borrows the underlying backboneOften borrows the underlying backbone Not for profit thief.Not for profit thief. For profit thief.For profit thief. Cultural Garfinklers (copyright liberation fronts)Cultural Garfinklers (copyright liberation fronts)

Visual Collage and Visual Collage and Appropriation ArtAppropriation Art

Centuries, not decades.Centuries, not decades. Mainstream (though avant-garde at the time)Mainstream (though avant-garde at the time) Satire and parody often get Satire and parody often get ““artart”” off the IP off the IP

hook.hook.

““Intertextuality is central to many different Intertextuality is central to many different practices of cultural production, but various practices of cultural production, but various intertextual modes of cultural production intertextual modes of cultural production directly conflict with the logic(s) of intellectual directly conflict with the logic(s) of intellectual property law (with its situated notion of property law (with its situated notion of authorship and ownership)authorship and ownership)””. p. 140. p. 140

Digital Literacy 2.0 and Media CollageDigital Literacy 2.0 and Media CollageIntegrating Multiple Forms of Sound, Graphics, and ImagesIntegrating Multiple Forms of Sound, Graphics, and Images

Suzanne PitnerSuzanne Pitner

Creating New Media Leads to UnderstandingCreating New Media Leads to Understanding People also create media collages by making mashups, a combination of sound, graphics, People also create media collages by making mashups, a combination of sound, graphics,

words and images drawn from different places. The resulting effect may be quite words and images drawn from different places. The resulting effect may be quite disparate from the intentions of the authors of the original pieces. Creating these types of disparate from the intentions of the authors of the original pieces. Creating these types of presentations lends a better understanding to the effects of editing and the media process.presentations lends a better understanding to the effects of editing and the media process.

Art as a Form of Media LiteracyArt as a Form of Media Literacy Digital technology has made it possible to create and manipulate art never imagined by Digital technology has made it possible to create and manipulate art never imagined by

the masters of old. Rather than blending and mixing paint, textures, and colors, the new the masters of old. Rather than blending and mixing paint, textures, and colors, the new media allows people to combine entire images and enhance them with sound and motion. media allows people to combine entire images and enhance them with sound and motion. Visual literacy is integrated with the written online, and requires a knowledge of art Visual literacy is integrated with the written online, and requires a knowledge of art principles to be most effective, both in presentation and interpretation.principles to be most effective, both in presentation and interpretation.

http://medialiteracy.suite101.com/article.cfm/http://medialiteracy.suite101.com/article.cfm/digital_literacy_20_and_media_collage#ixzz09Hbay4PNdigital_literacy_20_and_media_collage#ixzz09Hbay4PN

Ch. . Ch.. Ch.. Ch.. changesCh. . Ch.. Ch.. Ch.. changes

Warming Up to User-Generated ContentWarming Up to User-Generated Content Edward LeeEdward Lee Ohio State University - Michael E. Moritz College Ohio State University - Michael E. Moritz College

of Lawof Law University of Illinois Law Review, Vol. 2008, No. University of Illinois Law Review, Vol. 2008, No.

5, 20085, 2008 http://papers.ssrn.com/sol3/papers.cfm?http://papers.ssrn.com/sol3/papers.cfm?

abstract_id=1116671#abstract_id=1116671#