Intro to Trademark Law

Intro to IP – Prof. Merges

3.9.10

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: none of them hold up

• Color can serve the source-identifying function of a trademark

“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”

Zatarain’s

• Generic marks: defense

• Statute: section 14, 15 USC 1064(c)

Hierarchy of distinctiveness

• Arbitrary: Exxon; Google

• Fanciful: Apple Computer

• Suggestive: “Coppertone” suntan lotion

• Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

Generic Marks

• Words that do not serve as trademarks

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

Marks “born generic”

• A category of “descriptive” marks under section 2

• Refused registration under Lanham Act sec. 2(e): “Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive . . .”, 15 USC 1052(e)

Genericide

• The mark is originally distinctive, and protectable; but becomes over time generic

• A trademark that is “too successful” -- ?

Cancellation: 15 USC 1064

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed . . .

(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered . . . .

“Judicial cancellation”

• Court-agency interaction

• Judicial review of the trademark register

Hierarchy of distinctiveness

• Arbitrary: Exxon; Google

• Fanciful: Apple Computer

• Suggestive: “Coppertone” suntan lotion

• Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

Hierarchy of distinctiveness

• Arbitrary: Exxon; Google

• Fanciful: Apple Computer

• Suggestive: “Coppertone” suntan lotion

• Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

• Generic

• A & F

• Sugg.

• Des.

• Generic

Inherently Distinctive

Requires proof of “secondary meaning”

No trademark protection

CategorizationsTrademark

• TENDER VITTLES (cat food)

• ROACH MOTEL (roach trap)

• CHAP STICK (lip balm)

• VISION CENTER (optical store)

• BEER NUTS (snack food)

• FAB (laundry detergent)

• BOLD (laundry detergent)

• STRONGHOLD (nails)

• CITIBANK (banking services)

• NUTRASWEET (sweetner)

Category

• Descriptive

• Suggestive

• Descriptive

• Descriptive

• Descriptive

• Arbitrary

• Suggestive

• Suggestive

• Suggestive

• Descriptive

Categories of MarksLess Protection More Protection

GenericDenotes generalclass of products

Unprotectible

Shredded Wheat,Aspirin, Thermos,Cellophane, Car,Computer

ArbitraryBears no relationto product

AutomaticallyProtectible

DescriptiveDescribes somecharacteristic/quality

Protectible ifsecondary meaning

SuggestiveSuggests somecharacteristic

AutomaticallyProtectible

Sec. 1052 (Lanham Act sec. 2). Trademarks Registrable on Principal Register; Concurrent

Registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —

(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them . . . .

Statutory basis: registration of descriptive marks

Except as expressly excluded in paragraphs . . . of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.

-- Lanham Act sec. 2f, 15 USC 1052(f)

Secondary Meaning• Definition: primary significance of the term in

the minds of the consuming public is not the product but the producer

• Factors– Consumer surveys

– Amount and volume of advertising

– Volume of sales

– Length and manner of use

– Direct consumer testimony

• In one survey, telephone interviewers questioned 100 women in the New Orleans area who fry fish or other seafood three or more times per month. Of the women surveyed, twenty-three percent specified Zatarain’s ‘‘Fish-Fri’’ as a product they ‘‘would buy at the grocery to use as a coating’’ or a ‘‘product on the market that is especially made for frying fish.’’ In a similar survey conducted in person at a New Orleans area mall, twenty-eight of the 100 respondents answered ‘‘Zatarain’s ‘Fish-Fri’’’ to the same questions.