TRADEMARKS OUTLINE
Section One- Introduction
Trademark Definition
15 USC § 1127- word, name symbol, or device, used by a person, to identify or distinguish goods and indicate the source of goods
Trademarks do not expire
Spectrum of distinctiveness
Generic- can’t ever make a trademark
Descriptive- only with secondary meaning (old law didn’t recognize secondary meaning).
Suggestive- protectable on creation
Fanciful/Arbitrary
Infringement- 2 Main requirements
Prove prior ownership- used mark in commerce to denote goods
Likelihood of confusion
Likelihood of Confusion (Lanham Act § 1125 (a) [43(a)])- confused as to “source, sponsorship or affiliation”. 2 TESTS (9th Cir)- 5 ($) FACTOR and 8 FACTOR (Eclipse (5 factor), Sleekcraft 90), 7 Factor (7th Cir) @ (Eveready 379). Remember Eclipse says that these are guidelines and not strict factors, so it doesn’t really matter which test you use.
8 Factors (Sleekcraft 01):
Strength of mark (5) (@strength of mark@)
i. Inherent- strength at birth
ii. Acquired- market recognition
Proximity of the goods (5) (@ similarity of products@)
i. Identical or related (such as wine & cheese)
ii. Complementary, compatible, zone of natural expansion/bridging the gap
Similarity of the Marks (5) (@in appearance and suggestion@)
i. Sight, sound, and meaning, as they are encountered in the marketplace.
Evidence of actual confusion (7) (@actual confusion@)
i. Failure to produce evidence is not dispositive
Marketing Channels (7) (@area and manner of concurrent use@)
i. geography, channel where sold, price point, product/service grade, who are the purchasers?
Type of goods/degree of care/customer sophistication Intent in Selecting the Mark (8) (@ degree of care of customers@)
identifier (as long as it is not functional)
Section 2- Adopting, Registering, Policing
Trademark registration is prima facie evidence of the owner’s exclusive right to use the marks. Shifts burden of proof.
Abercrombie- 2nd Cir- Safari has become a generic term on certain items, and not on other items. Even though it is descriptive, it has become incontestable- five years of continued use.
AOL/AT&T (43)-
“You Have Mail”- AOL tried to say it is suggestive (mail, not e-mail). No!
“IM” is generic, and AOL tried to say that it is arbitrary
“Buddy List”- Generic
Issues: How persuasive is registration? It is evidence, but not conclusive.
Dissent: Misunderstood issue- in trademarks marks don’t have to be identical to be confusing.
Coca-Cola (51)
Even though Coke described a former ingredient (cocaine)- causing it to be descriptive- it has acquired secondary meaning.
