Overview and Introduction to Trademark Protection
Three Types:
Ø Copyright, Patent, Trademark
Intellectual Property Other Property
Intangible Tangible
Reproduces easily Costly to reproduce
Ø Why is IP more recent?
o Technology- easier to reproduce.
o Money is in it- new frontier.
Ø IP – Protects individual/inventor
Ø Public Interest or Values in IP-
o Trademarks- protected from knockoffs, “consumer confusion.”
o Patents, copyright- incentives to get inventors to develop and thus the public benefits. – Progress of knowledge- new things, new ideas.
Ø Public Interest in Other Property Law
o Development- encourages individuals to develop their property.
Trademark Law
Ø What is trademark law protecting?
o Consumer information/ search- Prevents “Consumer confusion.”- Get what you expect.
o Reputation of the producer of goods/owner of mark.
o Trademark is tied to a very special relationship between consumer and producer.
§ Note: Consumers do not have standing to sue.
Ø There is no constitutional basis for protection
Ø Trademarks are often symbols, designs, and words already a part of the public domain
Ø Trademark produces goodwill, the investment in quality, reputation, and service- If merchandise is not protected- no one will invest in them
Ø Trademark- Brand attached to a particular product or service.
Ø Trade name-name of business
WHEN BOUNDARIES BLUR -IE- Hilton, Coke, and Kodak.
Law firms are considered trade name. – No federal protection.
Trademarks are maintained by registration-
Ø State Trademark- Registration of name or mark- fairly simple- just for state.
Ø Federal Trademark Registration-
· Trademark law has its origins in state and common law so that no one could pass off a mark.
· Laws began to develop to prohibit other practices that led to market place confusion, including dilution of the mark’s value, overuse- or its tarnishment.
· Lanhman Act USCA 1051- 1127
· Federal Trademark registration is more difficult to get than state registration. – Its national.
§ Exception- Prior users- if someone had name under state law before you- then those are still in affect- grandfather law.
Ø International Trademarks- straightforward. Nation by nation treatment. Register in that nation. Just because you have in US does not mean international.
Ø However, some treaty protection, that provides general standards-
· Examples- Access to IP, or access to courts, a certain number of years of protection.
· TRIPS agreement over 100 nations- WTO dispute resolution process- where to go if a problem with a nation’s law. Cannot deal with private matters.
Registration Problems
Ø Similar Marks- interference can be declared
Ø Mark causes ambiguity- opposition may be declared
Ø Inter-party Proceeding- discovery; there are live witnesses, briefs, oral argument.
Ø Trademark trial and appeal Board (TTAB) – determines who has the right to the mark – and whether the applications should be approved
Ø Concurrent uses- when there are similar marks in different geographical areas- the commissioner can register both marks with similarities to concurrent users.
· The examiner- has the right to determine that the mark is too similar to a mark already registered- or that the mark used is the only one for the goods services, or that it is merely descriptive enough to function as a trademark.
§ In such cases the examiner and applicant may enter into correspondence – the applicant will explain why the mark should be registered or make changes to meet the examiners objections. There may be an agreement reached.
§ If there is disagreement: Two options
· (1) Appeal to TTAB
· (2) Supplemental registration- if people can become accustomed to thinking of the mark as descriptive.
o Supplemental Register does not provide full registration.
o You cannot stop someone from using your mark
o Benefits
§ Avoids ambiguity
§ © Can use trademark registration symbol
§ Can assert state base rights and even federal rights
§ Can be transferred to federal
§ Register after five years
§ Treaty protection
§ TM Registration creates connection between product and owner of the mark. Can trace ownership. Mark designates quality of service or good. Technological precursor to trademark law- Branding the Cattle.
Maintenance Lanham Act Section 1058-59
Ø Protection lasts as long as trademark is in use
Ø To maintain you must:
· Renew every ten years
· Five periodic affidavit, overt continuous use, or set out special circumstances for non-uses 1058-59.
Ø Can be cancelled
Ø Registration helps solve the problem of multiple users because it puts you on notice.
Federal Application Process
A. Use Application
1. File Application
2. Application gets reviewed by patent and trademark office
3. If passes, trademark gets published in the Official Gazette. – If someone opposes that trademark, then there will be an opposition- someone challenging it.
4. If Passes, then it goes into the principal registrar- then it’s federally protected
B. Intent to Use
1. File Application
2. Gets Reviewed
3. Published in Official Gazzette
4. Notice of allowance.
5. Then it gets published in Principal Registar
§ Intent to Use Application- application, publication in Official Gazette (allows for opposition), notice of allowance (mark has not been opposed), EXTRA STEP- you must show that you used the mark.
§ NEW- Enacted in 1988-
Federal Registration
§ Just because it is never federal registered does not mean that you do not have rights.
o Examples: It could be state registered. Federal Registration gives you presumption of rights.
Hypo: Do you own your name (have rights in it)? Can you keep other people from u
isclaimed any rights in Made in the USA- (DISCLAIMER). They put this because if you use something partly then it can still be an infringement.
o It was rejected. Slogan is just meant to induce people to buy- it does not distinguish goods from other ones and it does not identify the source. Court said intent to function as a trademark is not enough.
o There was nothing in the record to indicate that purchaser’s recognized the slogan as a source indicator.
o A critical element to the court is the impression that it makes on the public.
o Disclaimer- is governed by 1056-57-
NOTE: On the Internet a company incorporated a type of flag and slogan and then it is ok- tied to symbol only (MAYBE WAY TO GET OUT OF IT).
Lanham Act Section 1052-
Lays out ways in which the Patent and Trademark Office can reject a trademark.
Presumption that something should be registered. NOTE these things can be raised in court even if your mark is not registered.
It must be used to distinctive your goods (so even if it can distinguish- distinctiveness is very important).
Trademark Law Revision Act of 1988
o Eliminates the requirement that US citizens and businesses must use mark in commerce before they can file application to register it.
Heileman v Abheuser Busch- not a federal registration case- not distinctive
o LA- Low Alcohol- Busch wanted to use the mark LA- They argue that they spent a lot of effort on this mark. Rights based upon use.
o Heilaman’s argues that this is not trademarkable. That LA is just a generic term. That the use is a trademark use, however it is not distinctive.
o Busch’s arguing that they are not using Low Alcohol- they using LA- they use the result of a study- that people have an association of LA and Busch.
o The district court found that the initials LA are merely descriptive of low alcohol beer and have not acquired secondary meaning. The use of LA on Helieman Beer labels does not constitute trademark infringement or unfair competition
o LA was descriptive.
§ In general if a mark is descriptive it is not protected.
Court’s reasoning- Distinctive- four categories-this is a spectrum
1. Generic- not protected at all- to determine whether generic look at it in the dictionary- low alcohol is not in dictionary and is not generic
2. Descriptive- may not be protected- it just describes the product.
3. Arbitrary or fanciful, protected
4. Suggestive- protected
The court does not find it to be generic.
