Trademarks I Introduction to Trademarks Class Notes: March 26, 2003 Law 507 | Intellectual Property...

Trademarks ITrademarks IIntroduction to TrademarksIntroduction to Trademarks

Class Notes: March 26, 2003Class Notes: March 26, 2003

Law 507 | Intellectual Property | Spring Law 507 | Intellectual Property | Spring 20032003

Professor WagnerProfessor Wagner

3/21/033/21/03 22Law 507 | Spring 2003Law 507 | Spring 2003

Today’s AgendaToday’s Agenda

1.1. Intro to TrademarksIntro to Trademarks

2.2. Trademark TheoryTrademark Theory

3.3. The Subject Matter of MarksThe Subject Matter of Marks

4.4. Registration ProceduresRegistration Procedures


Introduction to TrademarksIntroduction to Trademarks• Trademarks are a relatively ‘newer’ Trademarks are a relatively ‘newer’

doctrine, with much growth in the 20th doctrine, with much growth in the 20th century. (Why?)century. (Why?)

• Statutory basis: Statutory basis: • Lanham Act, 15 U.S.C. et seq.• Note: does not necessarily preempt related state

lawso Trademarkso ‘Unfair competition’o Rights of publicity, etc.

• What is the ‘term’ of a trademark?What is the ‘term’ of a trademark?


Trademark TheoryTrademark Theory

1.1. Who benefits from trademarks? How?Who benefits from trademarks? How?

2.2. What, precisely, are the social benefits of What, precisely, are the social benefits of trademarks? (What things does it trademarks? (What things does it stimulate?)stimulate?)

3.3. Consider how trademarks do the following:Consider how trademarks do the following:• Lower consumer search costs• Enhance product quality

4.4. Why is branding especially important Why is branding especially important where aspects of the product cannot be where aspects of the product cannot be verified?verified?

5.5. Consider the case of pharmaceutical drugs: Consider the case of pharmaceutical drugs: is branding socially beneficial?is branding socially beneficial?


Trademark Theory (2)Trademark Theory (2)What is goodwill? How do trademarks What is goodwill? How do trademarks

support the development of goodwill?support the development of goodwill?• Won’t companies have incentives to create

goodwill even without trademarks?

Consider:Consider:• What are the ‘costs’ of trademarks?• Are there other ways we could generate the

same benefits without extending the property right? (Will these necessarily require government intervention?)

• Much recent criticism of trademarks is related to their increasing power across a variety of products (‘leveraging the brand’). How troubling is this trend?


The Subject Matter of MarksThe Subject Matter of Marks

Basic point: trademark protection Basic point: trademark protection depends upon the ‘strength’ of the depends upon the ‘strength’ of the markmark

• A hierarchy of strength: (Why this order?)1. Arbitrary marks2. Suggestive marks3. Descriptive marks4. Generic marks



15 USC § 112715 USC § 1127Trademarks: word, name, symbol, device, or

any combination thereof … to distinguish goods from others and indicate source

o Why the requirement for ‘use’ or ‘intent to use’ in commerce?

Service mark: same as trademarks, but identify services.

Trade names: identify companies, not products (no traditional trademark protection, though perhaps state law protection)


The Subject Matter of MarksThe Subject Matter of MarksQualitex Co v Jacobson Products Co., Inc.Qualitex Co v Jacobson Products Co., Inc. (1995) (1995)

• What does the court suggest is the test for whether particular types of subject matter can be trademarked?

• Consider the following objections to colors as marks:o Uncertainty concerning infringemento A limited supply of colors (Should the court be concerned

that there are physical limitations on the numbers of colors perceptible by humans? Why or why not?)

o Functionalityo Irrelevance: use a logo with color, etc. instead

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Certification Marks:Certification Marks:• What are certification marks?• How are they truly different from

trademarks?

Collective Marks:Collective Marks:• What are they?• How are they different from trademarks?

Trade Dress and Product ConfigurationTrade Dress and Product Configuration• What do we mean by trade

dress/configuration?


Registration ProceduresRegistration Procedures

1.1. Why ‘register’ your trademark? (What Why ‘register’ your trademark? (What are the advantages?)are the advantages?)

2.2. From a social perspective, the From a social perspective, the registration process is costly. Why do registration process is costly. Why do it? (i.e., why provide the incentive to it? (i.e., why provide the incentive to do so?)do so?)

3.3. What is the difference between the What is the difference between the principal and supplemental register?principal and supplemental register?



Grounds for Refusing RegistrationGrounds for Refusing Registration

Immoral or scandalous marksImmoral or scandalous marksHarjo v Pro-Football Inc. (TTAB 1999)

o Why does the Board order cancellation?o What evidence does the court use to find

disparagement?o Is this decision a 1st Amendment problem?o What is the effect of this case?o Who has standing to oppose marks on these

grounds?o Why reject immoral or scandalous marks




Geographic MarksGeographic Marksi (CCPA 1982)

Why forbid the registration of geographic marks?The test:

1. Does the mark have a geographic meaning?2. Do the goods come from that place?3. Are consumers likely to be deceived concerning

the origin of the goods?– Three cases: (Which is this case?)

– Primarily geographically deceptively misdescriptive

– Primarily geographically descriptive– Primarily geographically misdescriptive




Marks which are “Primarily Merely a Marks which are “Primarily Merely a Surname”Surname”• Why deny registration of marks that are

primarily merely a surname?• Why has the appeal of this denial faded over

time?• Why does it matter whether the surname is

common?• What is the ‘test’? (How does one determine

what the ‘average consumer’ would do?)



Opposition ProceduresOpposition Procedures• Key issues: standing + lack of right to registerKey issues: standing + lack of right to register• Timing: prior to registrationTiming: prior to registration

CancellationCancellation• Timing: after registrationTiming: after registration• Can sue for cancellation in Federal CourtCan sue for cancellation in Federal Court

Concurrent RegistrationConcurrent Registration• What is concurrent registration? When will it What is concurrent registration? When will it

be allowed?be allowed?


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Trademarks I Introduction to Trademarks Class Notes: March 26, 2003 Law 507 | Intellectual Property...

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