Trademarks and Unfair Competition Outline

McLean_Trademark_Fall_2014

I. Distinctiveness

a. Trademarks Defined

i. RUC §9- word, name, symbol, device, or other designation that is distinctive of goods or services that identifies and distinguishes them

ii. LA §45- word, name, symbol or device to identify and distinguish; to indicate the source

1. Do not need to know who the source is

2. §4 Certification marks- a mark placed on a product by someone other than the owner certifying that the product complies with their standards

a. Distinctiveness of these required

3. §4 Collective marks- a mark used by a group indicating membership to a group for a specific product

iii. RUC §13- mark is distinctive if it is: a) inherently distinctive, or b) has become distinctive through secondary meaning

b. Distinctiveness Spectrum (Abercrombie)

1. Less distinctive the type the lesser the protection

ii. Generic- never

iii. Descriptive- permitted w/ secondary meaning

1. Secondary meaning- mark has become distinctive to the consumers

a. Substantial, exclusive and continuous use for 5 years proceeding the date where distinctiveness is made

b. Can be based on direct polling of prospective consumers

c. Not registerable at common law

iv. Suggestive- always

v. Arbitrary or Fanciful- always

1. Arbitrary- terms already found in lexicon applied in unique or unusual ways

2. Fanciful terms- terms that were created by the owners and used only in connection to those marks; coined

c. Secondary Meaning: §2(f)

i. Substantial, exclusive and continuous use for 5 years proceeding the date where distinctiveness is made

ii. RUC §13(e)- SM does not connote a subordinate or rare meaning but rather refers to a subsequent significance added to the original meaning

1. Testimony from individual customers, length of time, the physical manner by which used, concurrent use by competitors, significance to general public (marketing), proof of intentional copying

iii. Do a survey; examine sales; volume, frequency and amount of advertising; length of use.

1. Evidence from every competent source is acceptable but the less reliable the less value it has

iv. Descriptive “Fair use” defense: can use trademarked names if it is the only way to accurately describe your product

v. Co-Branding may create a mixed consumer perception as to source so secondary meaning might be harder to prove: it comes from a single source

vi. The ‘rule’ that personal names are not protected as trademarks until they acquire secondary meaning is a generalization; names may be suggestive and therefore protected TM (Peaceable Planet)

vii. Determining Secondary Meaning

1. Zatarain’s Secondary Meaning Test: (in order) Dictionary; Imagination; Competitor’s Need; Prior Use by Others

d. Generic Terms and Genericide

i. Indicates what type or category a product belongs to rather than the producer or other source of the product

1. Generic ab origino- the term was generic from the start

2. Genericide-Terms that were once trademarks then became generic due to lack of policing; resuls in cancellation §14(3)

ii. The initials of a generic term is still generic. An abbreviation of a generic term cannot be trademarked. (BAVF)

iii. Primary Significance Test (FYP)

1. If the primary significance of the TM is to describe the TYPE OF PRODUCT rather than the PRODUCER, the TM is generic.

2. Who are you? v. What are you? Test

a. If it answers the Who then the mark is good if What the mark may have become generic

3. FYP Factors for Test:

a. Use by Π as generic terms

b. Unchallenged Third-Party Generic uses (even in different region)

c. Unchallenged generic uses by the Media (try cease/desist letter)

4. Burdens of Proof

a. If NOT registered, BOP falls on Π to DISPROVE genericness

b. If REGISTERED, BOP on ∆ to show generic

iv. Evidence

1. Dictionary (differing types of dictionaries), consumer surveys, advertising and newspapers/magazine coverage (media usage), testimony from those in the trade, third party usage

a. Foreign equivalents if generic in foreign countries- it cannot be imported an used in US; will be translated into English

i. Leche de magnesia = milk of magnesia (similar to misspellings)

v. Protecting the Mark

1. Use the mark as a mark; not a verb or a noun

2. Use TM or R when advertising the mark

3. Use the TM in CAPITAL LETTERS; indicate differences

4. Be consistent in the usage of the mark

5. Emphasize exclusive right; disclaimers and permissions

6. Police the mark; searching and notifying public or 3rd parties of improper uses

vi. Question of fact subject to the clearly erroneous standard

e. Distinctiveness of Logos- Seabrook Test from Star Industries

i. Whether it was a “common” basic shape or design

ii. Whether it was unique or unusual in a particular field

iii. Whether it was a mere refinement of a commonly adopted and well-known form of ornamentation for the goods, or

iv. Whether it was capable of creating a commercial impression distinct from the accompanying works.

1. Slogans: the longer the slogan the less likely it is to be protected as a mark; lengthier slogans typically require secondary meaning: importance of goods/services analysis

a. The big mac jingle: specif