Intro to Trademark Law

Intro to IP – Prof. Merges

3.10.09

Comparing Trademark to Patent & Copyright Law

• Constitutional Foundation– Patent & Copyright clause– Commerce clause (see The Trademark Cases, 100 US

82 (1879)

• Basic Goal– Pat. & ©: Protect author/inventor; promote progress– TM: Protect consumers

Quality assurance in an urban (anonymous) exchange environment

Consumer Protection Rationale

• Fraud cause of action on the part of consumers concentrated and located in the hands of a seller – the trademark “owner”

• This indirectly encourages expenditures to increase the quality of the TM owner’s goods

EARLY HISTORY

ancient times

first use of trademarks

early 19th

century

common law palming off

//

medieval

guild system

1870

18791881

1st Federal Act based on IP

Clause

Trade-mark Cases: striking down Act

Foreign commerce-based Act

MODERN HISTORY

1905 1947 1988 1996

Trademark Act - interstate commerce

Lanham Act Trade Dress § 43(a)

Revisions intent to use

Federal Anti-Dilution Act

EXPANDING PROTECTION

Scope: Marks

Threshold: Actual Use

Trade Dress

Intent to Use

EXPANDING RATIONALE FOR TM

Avoiding Consumer Confusion and Reducing Consumers’ Search Costs

Property Interests in Image: Image as a Marketable Commodity

Encouraging Investment in Advertising and Good Will

TORT

PROPERTY

GUIDING PRINCIPLE

CUSTOMER PERCEPTION

• VALIDITY

• INFRINGEMENT

as a test of:

Sources of Trademark Protection

FEDERAL LAW

STATE LAW

• Federal Registration

• Statutory Protection• Common Law

• False Designations of Origin and False Descriptions §43(a)

Subject Matter

• Trademark:

“word, name, symbol,or device, or any combination thereof”

• Trade Name

• Service Mark• Certification Mark• Collective Mark

SoundFragrance

• Trade Dress and Product Configuration

Hyatt - hotel servicesGood Housekeeping

• Slogan“Greatest Show on Earth”

- state (not fedl) protection

SFA (Snack Food Assoc)

Qualitex v. Jacobson

• Facts

• Holding

Four objections to TMs for color

• Breyer’s response:

“Big Blue”

Dry Cleaning Press

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 …, to identify and distinguish his or 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.

Hierarchy of distinctiveness

• Arbitrary: Exxon; Google

• Fanciful: Apple Computer

• Suggestive: “Coppertone” suntan lotion

• Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

Generic Marks

• Words that have ceased to serve as trademarks

• Identified with category or type of product, rather than one company or source: Aspirin; Jello; Kleenex/Xerox?

Qualitex

• Functionality doctrine

– Shredded Wheat case

– Product feature vs. “source indicator”

– What role does the product attribute play?

Color and Functionality

• Red emergency signs?

Zatarain’s v. Oak Grove Smokehouse

Formerly “Chick-Fri”