Trademark Outline

 
 
CLASS:  Trademark and Copyright Law,
Professor: (Maureen) Collins
Spring 2013
 
Copyrights
Original expression of an idea fixed to a tangible medium
Identified by name, copyright sign, date
Test for infringement is “substantial similarity”
Defense to infringement “Fair Use”
1. Purpose and character
2. Nature of copyrighted work
3. Amount and Substantiality of portion used
4.  Effect on market for copyrighted work
 
Trademarks
The name by which you know a product or service
Federally registered trademark is a circled “R”
Regular trademark is a TM (weak protection)
Only true protection is federal, under Lanham Act
Trademarks can be:
Sound; aroma; name; trade dress
 
4 Types of Marks
Generic
Is a name for /describes the thing itself
Descriptive
Refers to a function performed by product/service
Requires secondary meaning
Suggestive
Requires a leap of thought to link name with product/service, requires imagination
No secondary meaning required
Fanciful/Arbitrary
Fanciful:
Arbitrary: No logical meaning between product/service and mark
Dilution
Whittling away or erosion of mark’s commercial value
Two types
1. Using trademark negatively/disparagingly
2. Using it in a way that lessens the trademark’s value
 
Lanham Act
Purpose:
Consumer Protection
Principal register
Where trademark is registered
Duration
10 years
After 6 years need to prove use of mark
Can re-use without limit
§1127: construction and definitions
§1052: Scandalous
“Functionality Doctrine”
“Trade Dress”
“Product Design”
 
Spectrum of Marks
(common law creation, not from statute)
Marks are only guidelines
 
4 Tests To Determine Descriptive Mark
1.  Dictionary- English language use
2.  Competitor Need
do they need or want?
3. Use by others
4. Requires no imagination, standing alone it conveys information
*Descriptive mark + secondary meaning= registered mark
 
Secondary Meaning
“acquired distinctiveness”
Pri