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Trademark
Seton Hall Unversity School of Law
Palitano, Frank L.

Trademark Law Outline

Chapter 2. What is a Trademark?

A. Subject Matter of Trademark Protection(Pg. 83-108)
· Restatement (Third) of Unfair Competition
o § 9 Definitions of Trademark and Service Mark
§ A trademark is a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others. A service mark is a trademark that is used in connection with services.
Restat 3d of Unfair Competition, § 9
o Lanham Act(TRADEMARK ACT OF 1946) Definition of a Trademark
§ 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 in commerce and applies to register on the principal register established by this Act,

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.
15 USCS § 1127

o Kellogg Co. v. National Biscuit Co.
§ P alleged
· It has exclusive right to the name “Shredded Wheat”
· It has exclusive right to the pillow shaped form
· Kellogg’s engaged in unfair competition by not distinguishing its product
§ Court Ruled
· P has no exclusive right to the term because it is the generic term for the article and was the general designation of the patented product which passed to the public upon expiration of the patent
· P has no exclusive right to the pillow shape form because it is the form made under the basic patent and the patented machines were only designed to produce in this shape. And a design patent was taken out to cover the pillow-shape. Upon expiration of the patents the form, as well as the name, was dedicated to the public
· Fairness requires that it be done in a manner which reasonably distinguishes its product from the plaintiffs. No evidence or deception was found on the part of Kellogg

o Word Marks
§ Coca-Cola Co. v. Koke Co. of America
· The Court held that the owner’s mark had a well-accepted meaning and indicated a single thing coming from a single source and that the alleged infringer’s use of the word “Koke” was clearly intended to capitalize on the owner’s goodwill, and thus was an infringement of the owner’s mark.
· The Court further held that the owner’s mark, either in words or symbols, did not represent the presence of cocaine in its formula or the presence of other ingredients not present, so it was not fraudulent representation or void for that reason.
§ SLOGANS
· Lanham Act allows for certain combinations of words may function as trademarks
· So long

ential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage
· If the color serves a significant nontrademark function – i.e pill color to distinguish type of medication. Court will examine whether its use as a mark would permit one competitor to interfere with legitimate competition through actual or potential exclusive use of an important ingredient.
· trademarks include any word, name, symbol, or device, or any combination thereof. 15 U.S.C.S. § 1127. Court said can extend to any word, name, symbol, or device used to indicate the source of the goods.
· A color is also capable of satisfying the part of the statutory definition of a trademark, which requires that a person “use” or “intend to use” the mark 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. 15 U.S.C.S. § 1127.
§ Questions?
o Other Identifying Indicia