Part I. FOUNDATIONS & PURPOSES OF TRADEMARK & UNFAIR COMPETITION LAW
Introduction to Trademark and Unfair Competition (tm’s are vessels of meaning)
Purposes of Trademark Law
To protect the public (a symbol of quality); To protect the owner of the mark
(Underlying both of these is the effect on competition.)
Interests Effected: Consumers/Producers/Competitors
A trademark becomes most important in an infringement action. If you accuse someone of trademark infringement, they (defendant) will challenge the validity of the mark, the strength of the mark, and bring up the confusion question.
An Illustration – Elvis Presley Enterprises v. Capece
Capece opened a nightclub called “The Velvet Elvis” in which Elvis was used in the décor, ads, and service mark. Elvis Presley Enterprises sued for trademark infringement. Capece used parody as a defense
To prevail in its tm infringement claim under the Lanham Act, the P must show that D’s use of “The Velvet Elvis” service mark and other indicia of Elvis Presley was likely to cause confusion in the mind of the ordinary consumer as to the source, affiliation, or sponsorship of Defendant’s bar.
Court uses a “likelihood of confusion” test and considers the following factors (although not limited to these) to determine whether a defendant’s use of a mark or image creates a likelihood of confusion:
1. The type of tm alleged to have been infringed;
2. The similarity of design btn the two marks
3. The similarity of the products or services
4. The identity of the retail outlets and purchasers
5. The identity of the advertising medium utilized
6. The defendant’s intent
7. Evidence of actual confusion (live testimony, affidavits, surveys)
**You have to go through the analysis of all the factors but it’s not rigid b/c sometimes the factors overlap. Ct is also free to consider other factors
Holding: TM infringement as to: Décor (No) Ads (Yes) Name (Yes b/c “Elvis” is much more prominent than Velvet)
<INSERT TM CHART – SEE DOC TM CHART FROM PG 44 of TEXT>
Part II. CREATION OF TRADEMARK RIGHTS
Distinctiveness [To be protected as a tm, your mark must be distinctive, either inherently (arbitrary, fanciful, suggestive mark) or via secondary meaning (descriptive mark). Generic marks can never be distinctive and can never be protected.]
The Spectrum of Distinctiveness
Remember that in determining which distinctiveness classification is right, you must evaluate the mark in light of the particular good or service that it is m
lader, Trampoline, Nylon, Dry Ice. (became generic b/c it stopped being able to identify a specific product)
Holding of AF: (1) As applied to specific clothing, “safari” has become a generic term (2) “safari” has not become a generic term for boots or shoes; it is either “suggestive” or “merely descriptive”
Descriptiveness and Secondary Meaning
Descriptive Marks (need proof of secondary meaning to get protection)
Foreign words as marks – Covert foreign words to English to determine category [Saborito (= tasty in Spanish) for sausages]
Slogans (that companies trademark are) likely to be descriptive at the least. Must invoke the source in consumers to have secondary meaning and be protectable. [“Finger Lickin’ Good” – KFC; “Haircolor so natural only her hairdresser knows for sure” – Clairol; “Just Do it” – Nike]
Descriptive marks require proof of secondary meaning before protection AND before registration (Need evidence of secondary meaning, infra)
