Spring 2009
Trademarks and unfair competition OUTLINE
Chapter 1 – concepts of tms and unfair competition
Competition
1. R3d unfair comp
a. § 1 general principles
i. Deceptive marketing
ii. Tmi
iii. Appropriation of intangible trade values
1. Trade secrets, right of publicity, unfair comp
b. Comment A – the freedom to compete
i. Promotes efficient allocation of economic resources
ii. Producer’s incentive to offer quality goods at reasonable prices
2. INS v. AP
a. Facts: INS copied and relayed news simultaneously or before AP distributed the news to the mid and west costs
b. Holding: court held there was a property right against “misappropriation” of commercial value à granted AP protection during period of initial dissemination of news
c. Rule: there is a quasi property right in the dissemination of un-copyrightable info
3. Cheney Bros. v. Doris Silk
a. Facts: Doris copied Cheney (silk maker)’s designs and sold them at a cheaper price. Cheney wants protection only during the season
b. Holding: court held there was no property right to the silk designs
c. Rule: doctrine of nonfunctional features: right to copy at will
4. Sears, Roebuck v. Stiffel
a. Facts: Stiffel patented a pole lamp design à Sears copied it and sold it for a cheaper price
b. Holding: court held patent = monopoly for a given time à after that, competitors are free to copy
c. Rule: a State cannot prohibit the copying of the article itself when it is unpatented or uncopyrighted
5. Compco c. Day-Brite Lighting (companion case to Sears Roebuck)
a. Holding: court held even though Day had acquired SM à still NOT entitled to protection bc they don’t have a patent/cr
6. Bonito Boats v. Thunder Craft Boats
a. Facts: Florida statute protected copying of unpatented boat hulls
b. Holding: court held
c. Rule: State regulation of IP must yield to the extent that it clashes with the balance struck by Congress’ patent laws à preemption
d. General rule: CL tort of unfair comp is limited to protection against copying nonfunctional features which have acquired SM
i. Exception: Sears, Compco
7. National Basketball Association v. Motorola
a. Facts: Motorola transmitted NBA stats from radio and computers
b. Holding: court NBA stats were NOT “hot news” as in INS v. AP
c. Rule: court defined “hot news”
i. P gathers info at a cost,
ii. Info is time-sensitive,
iii. D’s use of the info = free-riding on P’s efforts,
iv. D is in direct competition with P’s g/s, and
v. Ability of other parties to free-ride on P’s efforts would reduce the incentive to produce the g/s that its existence/quality would be substantially threatened
Trademarks
1. Tm cases
2. What is a tm?
a. Trademark: any word, logo or package design, or a combo thereof, used by a manufacturer/merchant to identify his goods and distinguish them from others
b. Trademark O’s definition: any word, name, symbol or device used to identify and distinguish a source of g/s (source identifier)
i. Includes logos, drawings, slogans
c. Bounded by 2 things: types of g/s + geographic area of use
d. Purposes
i. Consumer protection – avoid deception
ii. Producer protection – reap the benefits of goodwill and repeat bus
3. What is a cr?
a. Copyright: seeks to promote literary and artistic creativity by protecting, for a limited time, the “author’s writing”
4. What is a patent?
a. Patent: granted only by fed govt – allows the patentee to exclude others from making, offering for sale, selling an invention within the US/importing into the US; temporary monopoly
i. Utility patent (functionality), design patent (ornamental), and plant patent (seed/plant)
ii. Criteria: novelty, unobviousness, utility
Chapter 2 – what is a tm?
Subject matter of tm protection
1. R3d of unfair comp
a. §9 definitions of tm and service mark
i. Tm is a word, name, symbol, device, or other designation, or a combo of such designations, that is distinctive of a person’s goods/services and that is used in a manner that identifies those goods/services and distinguishes them from the goods/services of others
ii. Service mark is a tm that is used in connection with services
b. Comment B – historical origins of tms
c. Comment G – subject matter
i. Includes numbers, letters, symbols, characters, sounds, graphic designs, product and packaging features
2. Kellogg v. National Biscuit
a. Facts: patent on pillow-shaped shredded wheat expired. Kellogg started to sell s wheat. Nabisco claimed they had tm rights bc of their 45 years of exclusive use
b. Holding: court held Nabisco had no right to exclusively use the pillow-shape of the s wheat bc it was functional (affect cost/quality) and generic
c. Rule: the use of an article after the expiration of its patent is valid.
3. Word marks
a. Coca-Cola v. Koke of America
i. Facts: Koke imitated CC’s drink à CC sued. Koke defended that CC had “unclean hands” thus could not get an injunction – bc the name “CC” was deceptively misdescriptive since there was no cocaine in the drink = passing off
ii. Holding: court held it was clear to the public that there was no cocaine in CC – thus no unclean hands à no public deception. Court held CC had acquired SM
iii. Rule: descriptive terms are protectable if they acquire SM
b. Slogans
i. LA §23: slogans are registrable as tms
ii. But before the LA – they were NOT registrable
4. Service marks
a. LA §3
i. Service marks are reg in the same manner as tms
b. LA §45
i. Service mark (svm): any word, name, symbol, device, combo
1. Used by a person, or
2. Which a person has a bona fide intention to use in commerce and applies to reg on the principal reg established by the LA
3. To identify and distinguish the services of one person, including a unique service, from services of others and to indicate the source of the services, even if that source is unknown
4. Titles, character names, and other distinctive features of radio or tv programs may be reg as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor
c. What is a “service”?
i. Service: the performance of labor for the benefit of another. Used when displayed in the advertising process
1. Retail, restaurant
2. BUT an ad that a “restaurant will open soon” is NOT use
5. Collective and certification marks
a. LA §4 – collective marks and cert marks registrable
i. Collective and cert marks including indications of regional origin are registrable with the same effect as tms
b. LA §45
i. Collective mark: a tm or svm
1. Used by the members of a cooperative, association, other collective group/org, or
2. Which such coop, association, other collective group/org has a bona fide intention to use in commerce and files an application to the reg on the principal reg established by the LA, and includes marks indicating membership in a union, association, other org
ii. Certification mark: any word, name, symbol, device, combo thereof
1. Used by a person other than its owner, or
2. Which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to reg on the principal reg established by the LA
3. To certify regional or other origin, material, mode of manufacture, quality, accuracy, other characteristics of such person’s
i. Proof of SM
ii. Substantially exclusive and continuous use for 5 years = prima facie evidence of SM!
b. Descriptive: immediately describes some characteristic of the g/s
i. Quik-Print
ii. Taste-Freeze
c. Generic: CANNOT be tm protected
i. Thermos
ii. Cellophane
iii. Aspirin
b. “Technical tms”
i. ID tms are sometimes called “technical tms”
c. In the Matter of the Application of Quik-Print Copy Shops
i. Facts: “Quik-Print” copy shop wanted tm protection
ii. Holding: court held “Quik-Print” was descriptive
iii. Rule: descriptive marks can be tm-ed ONLY after proof of SM + 5 years of continuous and exclusive use
d. In re Oppedahl & Larson
i. Holding: court held patent +.com merely describes patent-related g/s in connection with the internet
ii. Rule: adding “.com” does not make a word tm-able
e. Labrador Software v. Lycos
i. Holding: court held Labrador was descriptive of internet companies bc they “retrieve” info
2. Secondary meaning (SM)
a. American Waltham Watch v. US Watch
i. Facts: Waltham was a watch maker (acquired SM before US started selling watches). US started using “Waltham” on its watches
ii. Holding: court held Waltham was a protected tm even though it was a geo place bc it had acquired SM
iii. Rule: a word may become so associated with a good (SM) that another person coming into the business at a later time will not be allowed to use that word without distinguishing g/s
b. International Kennel Club of Chicago v. Mighty Star
i. Facts: IKC was a Chicago based pedigree club who sponsored AKC dog shows. Mighty sold it line of IKC stuffed purebred dogs and let purchasers “register” them
ii. Holding: court held IKC had acquired SM in a small but very well-defined group in Chicago
1. Evidence: 9 letters from confused customers, IKS used the mark for 50 years, national dog magazine ads
iii. Rule: in order to prevail on a LA §43(a) claim, P must prove the following elements
1. Valid protectable tm
2. LC exists as to the origin of D’s g/s
