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Trademarks and Unfair Competition
University of Dayton School of Law
Reilly, Tracy

Branding
– Cokes, McDonalds, Nike, Target, Wal-Mart, Apple(arbitrary), Starbucks, Mercedes

Trademarks
– Can last indefinitely
– Are often a company’s most valuable assets
– Each case is highly fact specific à FIRST IN TIME, FIRST IN RIGHT – PRIORITY
– Trademark rights create a set of boundaries, like a fence, and the goal of the rights holder is to keep others outside of, and as far as possible from, the fence.

Trademark Law Functions
– Protect Consumers
– Protect Rights Owners
– Economic Efficiency

Trademarks can serve as more than just a mere source identifier.

Trademark Infringement and Unfair Competition
– Likelihood of confusion test (source, affiliation, or sponsorship)
o Multiple Factor Test (Polaroid Factors) (NON EXHAUSTIVE)
§ The type of trademark alleged
§ Similarity of design
§ Similarity of products or services
§ Identity of the retail outlets and consumers
§ Identity of advertising medium used
§ Defendants intent
§ Evidence of actual confusion
– Test is far more broad for unfair competition

Trademark Dilution
– Broader protection for famous marks
o Protection from marks that are completely unrelated to the famous mark

DINSTINCTIVENESS
– required for trademark registration
o Have it inherently, or acquired through use (secondary meaning)
§ Secondary Meaning
· Advertisement and sales…etc
· Today is usually recognized after 5 years of use

– Four types of marks (Abercrombie Classifications)
o Generic (No distinctiveness)
§ Trademarks that become too common in public domain are victim of “genericide” à trademark is lost (escalator, aspirin)
o Descriptive (Needs Secondary Meaning for Protection)
§ Lauditory terms are treated as descriptive (speedy, beautiful…)
o Suggestive (Inherently Distinctive)
o Arbitrary / Fanciful (Inherently Distinctive)

GENERIC TERMS
– refer to type of products, not soure
– How does a mark become generic?
o Inherently generic (using “apple” to sell apples)
o Genericide (a mark that started higher on the spectrum but became generic by being appropriated by the public à aspirin, yo-yo, ALMOST Xerox
– TEST:
o Who are you/what are you, primary significance of mark to the relevant public (identifies source or product?)
§ Primary Factors:
· Survey, online research, or other direct evidence showing how a term is understood by the consuming public
· Dictionary definitions
· Use of term by competitors to refer to goods/services
o Copying by competitors

– TMEP (Trademark Manual of Examining Procedure)
o Boils down statutes and caselaw for examiners
o Provides guidelines for examining attorneys
o www.uspto.gov

– Filipino Yellow Pages case (page 64)
o Who are you/what are you test
o An unregistered mark – burden on mark holder to prove not generic
o Registered mark – burden on mark challenger to prove generic
o Generic + generic = not generic
§ Anti-dissection rule ( don’t split up terms) + primary significance
§ Must create something different than just the two terms put together
· ALWAYS LOOK TO UNDERLYING PUBLIC PERCEPTION
· What is the totality – and what is the consumer perception of that totality
– Haughton Elevator Case (page 69)
o Public recognized escalator as a item and not by a source
o Otis used its own mark in a generic fashion
o Ultimately it was genericide
– Murphy Door Case (page 70)
o Unfair Competition (can be found even if no infringement is found)
§ Intentional Mis-representation
§ Test: Like to cause confusion as to source, affiliation or sponsorship
· Broader than TM infringement (does not limit to Polaroid factors)
· Equitable analysis
· Is still allowed for generic marks
o Generic marks can have “de facto secondary meaning” in an unfair competition context (Blinded veterans case page 72).

NON-VERBAL IDENTIFIERS

– Inherent Distinctiveness for logos + Letters
o Seabrook Test (Page 87)
§ Is it a common or basic shape, or unusual design
· If unusual design, focus on its distinctiveness
– TMEP : Refusal on Basis of Orna

So unique, unusual, unexpected that it is an automatically perceived by customers as an indicator of origin
o Yankee asserts trade dress to
§ Vertical display shelf
§ Look+feel of candles
§ Layout of catalog
o Combination Claim: court errs on the side of product design because it is not clear that this is an entirely packaging issue.
o Labels: are packaging, but not inherently distinctiveness and don’t have secondary meaning.

Outer Limits of Trademarks
– What constitutes as a “symbol or device”

– SCENTS – In Re Clark (Page 124) – SCENTS
o Tried to TM the smell of her yarn (that was scented with Plumeria Blossoms)
o TTAB decides scent CAN serve as a trademark
o TTAB doesn’t state specifically if a scent can be inherently distinctiveness but does do a secondary meaning analysis à suggests that scents cannot be inherently distinctive and require a showing of secondary meaning.

– TASTE
o Treated similar to scent and color
§ More so:
· Any registration of flavor requires substantial showing of acquired distinctiveness
– COPYRIGHT WORKS
o Oliveira v. Frito Lay (Page127)
§ Trademark for songs is allowed
· Song must be used as a trademark
· CANNOT be used to identify a singer without any actual trademark use
· If singers are allowed to get trademark status when no use of trademark is present, then singers would be able to disrupt commerce and copyright licenses.
o Comedy III v. New Line (page 131)
§ Trademark law cannot be used to circumvent CR law when the use is not being used as a mark.
o Dastar v. 20th Century Fox (Page 137)
§ Dastar marketed product as a dastar product