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Business Torts
UMKC School of Law
Abdel-Khalik, Jasmine C.

Prof. Abdel-Khalik
Business Torts and Unfair Competition
Fall 2010
Trademark Law
Since days in England, common law provided protection for trademarks
Trade-Mark Cases (1879)
Issue: whether trademarks are protected under federal law and the Constitution, like copyrights and patents are
Trademark is about identifying the source (nothing to do with writings or inventions)
Court pointed out to Congress that the Commerce Clause would be helpful in creating federal trademark legislation
Because trademark law is through the Commerce Clause, Congress’ power is limited to interstate commerce
As Commerce Clause interpretation expanded, so did trademark protection
However, cannot register a federal trademark unless you are doing business across state lines (pretty easy to do on the border)
Common law and federal trademark
Always have a common law trademark right, and may register the trademark in the federal system also for additional advantages
Purpose of Trademark
Prevent consumer confusion
Which may cause a consumer to try a different product if the fraudulent product was bad
Important whether the consumer was induced into purchasing a product wrongly
Identify source
Incentivizes the company to maintain the quality of the product (to protect reputation and keep consumer goodwill)
Convey information and therefore reduce transaction costs
2 Ways for Trademark Infringement
Traditional confusion — not really about selling an image, more about the source
Dilution — more about selling an image as a whole, about taking away from a company’s image
Components of Trademark
Word, name, symbol, device, or other designation (distinctive)
Has to be used in commerce
Big difference between copyright/patent & trademark — you don’t have anything unless you’ve used the mark to denote source
Difference b/t Common Law and Federal Registration
CL – Use (associating it with a good or service to people/consumers)
Fed. Reg. – use in commerce (Commerce Clause serves as authority)
2 types of application
Intent to use – once the use is proven, the trademark is applied retroactively
Gives priority also
Current use
Source Identifier – Must be distinctive of a person’s goods or services — mark must distinguish between a generic product and your product
Service Marks
Trademarks are associated with goods
Servicemarks are associated with service
Certification Marks
Used by a person other than its owner/producer
Owner has a bona fide intention to let other people use the mark
To certify conformity with a standard
3 main types: 
Regional Origin
Union Labor
Cease to function as a certification mark when the owner no longer has control over who uses it
It “cancels”
Collective Marks
Purpose: to show membership
2 characteristics:
Must be used by the members of an association/organization
That group must have a bona fide intention to use this mark to indicate membership
Trade Dress
The way a certain company’s building looks (The Chinese restaurant on 47th that apparently was a Pizza Hut originally)
Abercrombie & Fitch v. Hunting World, Inc.
Distinctiveness – ability to say that a product can be distinguished
World already in existence, but already has a meaning
The mark has nothing to do with the product (Ivory Soap)
Example: Apple Computers
No context or meaning before the mark is created (Xerox)
Requires imagination, thought and perception to reach a conclusion as to the nature of goods
Ex. Chicken of the Sea
Requires “Secondary Meaning” in order to be distinctive
Refers to knowledge and understanding of the consumer — must change from describing the product to letting the consumer know the source of the product
Category or basic nature of the product, not of the source
The genus for which the particular product is a species
Has become generic for the clothing that people wear when they go on safaris
Don’t really know about the shoes
So Abercrombie cannot trademark “safari”
Note 7
Safety seal on baby food
SAFEKIDS is between suggestive and descriptive
LOCKWOOD’S SAFESEAL – multiple pieces changes how you analyze it
Much stronger because Lockwood’s is included
TAMPERNO – probably descriptive
In re Oppedahl
Anti-dissection rule – not supposed to dissect a mark into pieces too much
However, you have to dissect the mark into its pieces
Law requires a mark be considered “in its entirety”
But we may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components
Also depends on how consumers would look at the mark
Whether they would see one long word or break it up into 2 words
No way it is inherently distinctive – at best, it is descriptive
4 Tests for Descriptive classification
Ordinary meaning/perception of the public
Wikipedia,, Urban Dictionary
“Imagination Test”
It is the suggestive test – relationship b/t the mark and the product it is applied to
If it requires imagination, thought and perception to reach a conclusion as to the nature of the goods, it is suggestive
Competitors “Need” Term
Whether competitors would be likely to need the terms used in the mark in describing their products
Really, whether competitors should be able to use it
Competitors Have Used It
Extent to which a term actually has been used by others marketing a similar service or product
It is descriptive, so we have to consider whether it has acquired a second meaning
Secondary Meaning
Direct Evidence
Surveys – Unreliable, expensive
Consumer Testimony – not a good idea
Circumstantial Evidence
Filipino Yellow Pages

re not the plaintiff
Non-Verbal Marks
Big concern: Are we protecting competitors and protecting competition appropriately?
Seabrook Test
Whether it was a common basic shape or design
Whether it was unique or unusual in a particular field
Whether it was a mere refinement of a commonly adopted and well-known form of ornamentation for the goods; OR
Whether it was capable of creating a commercial impression distinct from the accompanying words
Many courts do not like Seabrook because it doesn’t really say what it means
Star Indus. v. Bacardi
“Georgi O”
Is the “O” to be identified separately, or together with the rest of the label?
Because Bacardi only has the “O”, it is only protectable if the O in Georgi O is perceived protectively
Court decides the O is protectable, as it was finally registered as a trademark
Stylized shapes or letters may qualify, provided the design is not commonplace but rather unique or unusual in the relevant market
Thus, it is inherently distinctive – but weak protection. This means that the O is not really protectable, but an Orange O elongated with gold border will be protected.
A design used in conjunction with other marks is separately protectable in its own right if it creates a separate and distinct impression from the impression created by the other marks.
Trade Dress/ Trade Design
Two Pesos v. Taco Cabana
With trade dress, we’re thinking about the total image of the business
Shape and general appearance of the exterior, identifying sign, floor plan, décor, menu, equipment, uniforms, etc.
We’re talking about the total packaging of the product
Court did not address whether the restaurant is inherently distinctive – they assume it is because the appeals court said so
However, if it is inherently distinctive, then secondary meaning is NOT required
Secondary Meaning
Statutory Interpretation – Lanham Act implies that trade dress should be protected the same way as trademark
Legislative History/Policy – trade dress is attempting to protect the same interests, so they should receive the same protection and standards
Impact on Businesses – if we required trade dress to acquire secondary meaning:
It would be hard for small businesses to attain secondary meaning if they are just starting up, planning on expanding, and being perceived by consumers