Trademarks Outline
I. Foundations and Purposes of Trademark & Unfair Competition Law
A. Nature of Trademarks
1. The Trademark Cases
a. Differences between IP and Trademarks
i Utility patents: rights in inventions and granted only for inventions that are new and non-obvious
ii Copyrights are rights in original, creative expression.
b. Neither originality, invention, discovery, science, nor art is in any way essential.
c. Generally is adoption of something already in existence as the distinctive symbol of the party using it
2. Hanover Star Milling Co. v. Metcalf (1916)
a. Trademarks are rights in the “goodwill” associated with the goods or services of a particular business
b. Limited Property right
i Appurtenant to an established business or trade in connection with which the mark is used
c. Trademark Law viewed as part of the broader law of unfair competition
3. Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co. (1942)
a. Rights to the “commercial magnetism” of a symbol used for certain goods or services.
4. Yale Electric Corp. v. Robertson (2d. Cir. 1928)
a. Rights in a producer’s commercial reputation
5. Prestonettes, Inc. v. Coty (1924)
a. Trademark does not confer a right to prohibit the use of a word or words. It is not a copyright….”
b. Only gives right to prohibit others from using a word or symbol in connection with goods or services in such a way as to usurp the right holder’s goodwill
B. Lanham Act § 45 (USC § 1127)
1. “Trademark” includes any word, name, symbol, or device, or any combination thereof….used by a person…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.
2. Service Mark: identify and distinguish and indicate the source of the services
3. Certification Mark: word, name, symbol, or device, or any combination thereof used “to certify regional or other origin, material, mode of manufacture, quality accuracy, or other characteristics” of a person’s goods or services “or that the work or labor on the goods or services was performed by members of a union or other organization”
a. i.e. heart healthy check
4. Collective Mark: a trademark or services mark that is used by members of a collective group or organization to distinguish goods or services of the organization from those of others, or to indicate membership in the organization
a. i.e. AAAl FTD Logo
5. Trade Name: any name used by a person to identify his or her business or vocation
C. Overview of the U.S. Trademark System
1. Purposes of the Trademark System
a. Traditional Justification: produce and consumer protection justification
b. Economic Justification: reducing consumer’s search costs, encouraging producers to invest in consistent product quality
c. Modern Marketing Justification: psychological impact; social communicative function
2. Sources of Law; Institutions
a. Lanham Act
i Subchapter I: Registration of marks on the Principal Register
ii Subchapter II: registration of marks on the supplemental register
iii Subchapter III: enforcement of rights in registered and unregistered marks
iv Subchapter IV: applications for registration under procedurs of the Madrid Protocol
3. Introduction to the Major Lanham Act Causes of action
a. Trademark infringement under §32(1)(a) if dispute involves a registered mark
i unauthorized use
ii of the plaintiff’s valid, registered mark
iii giving rise to a likelihood of confusion
b. Unfair competition or false designation of origin- used to enforce rights in unregistered marks §43(a)(1)(A)
i unauthorized use
ii of the plaintiff’s valid mark
iii giving rise to likelihood of confusion
c. Trademark Dilution under §43(c)
i unauthorized use
ii of the plaintiff’s valid, famous mark
iii giving rise to a likelihood of dilution
d. False Advertising
e. Cybersquatting under §43(d)
4. International News Service v. Associated Press
5. Dastar Corp. v. Twentieth Century Fox Film Corp.
6. Elvis Presley Enterprises, Inc. v. Capece
II. The Distinctiveness Spectrum and Secondary Meaning
A. Issues that Arise—Four Different Settings
1. Mark owner files application
2. Interested party opposes or petitions to cancel an issued registration
3. Mark owner sues in federal district court for infringement—defendant may assert as not distinctive as an defense to infringement
arious types of clothing (such as a safari hat), but could be merely descriptive or even suggestive for boots and shoes
iii Other Considerations
o changes in the term’s meaning overtime
o the anti-dissection principle (meaning of a composite phrase should formulated based on the phrase as a whole, not based on dissecting it into its constituent parts
o whether the mark is a word mark or one of a variety of types of non-verbal marks
3. In re Oppedahl & Larson, LLP
a. Distinctiveness inquiry under the Abercrombie spectrum is treated as a question of fact
i involves a case by case analysis.
b. Patent.com for patent tracking software was merely descriptive. No bright-line rule that adding .com to a descriptive term always resulted in a merely descriptive mark
C. When to Measure Distinctiveness
1. time of registration, not the time of first use.
D. On what basis
1. basis of U.S. consumer’s perception
2. Zatarain’s Inc. v. Oak Grove Smokehouse, Inc.
E. Secondary Meaning Evidence
1. Direct Evidence: consumer testimony; consumer survey
2. Circumstantial Evidence:
a. Amount and manner of the mark owner’s advertising
b. Volume of sales of products bearing the mark
c. Length of time during which the mark has been used
d. Manner of use
i Always presenting to consumer PALMER’s COCOA BUTTER FORMULA—insufficient to create inference of secondary meaning
e. Not as good as evidence
i Large sums on advertising OR
ii Sold a large volume of product
iii Evidence of intentional copying—may negate inference of secondary meaning if there are other legitimate reasons
III. Generic Terms and Distinctiveness of Words
A. Two-Part Test: Relevant Class of Goods/Services + Primary Significance
1. Specify the genus of the products at issue
