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Trademarks and Unfair Competition
University of Michigan School of Law
Litman, Jessica D.

Trademark Outline Fall 2008
 
I.       What is a TM?
1.      LH 2:
2.      LH 45:
3.      A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another.
4.      Trade dress: identifying aspects of product that extend beyond word, symbol. The overall look of the product.
1.      must ask whether functional before giving protection
2.      Qualitex: Green color of P’s dry cleaning pads did have secondary meaning. If there was color scarcity, doctrine of functionality would be invoked to prevent anticompetitive practices.
5.      Service mark: McDonald’s, NBC. Not a mark until you offer the service.
6.      Certification mark: One owner with many users. UL, Goodhousekeeping, ADA, Follow different rules. Designates materials, standards, conditions. Geographic (roquefort, champagne, burgundy). Owner of the mark cannot use for own goods (compromises objectivity of certification) and cannot discriminate against those who qualify.
7.      Collective mark: REALTOR, unions. Members try to distinguish their services from others. Follow rules of TM and services marks.
8.      Why?
1.      Protecting TM make it easier for consumer to identify (reduce search costs) source of a product which can convey important information about the good.
2.      Protecting TM give incentive to producer to improve product and reputation
3.      We want to encourage copying of goods, but we want to prevent deception and confusion
4.      Allow owners to internalize the goodwill of their reputation/business
1.      Silk Scarf case: D cannot be prevented from copying design of P’s mark. Anticompetitive, not source identifying.
2.      Sears Lamp case: cannot prevent D from copying lamp, even if causes confusion. State court can make D label his good to avoid confusion.
3.      state law cannot interfere with fed policy of allowing free access to copy whatever falls in the public domain
4.      NBA v. Motorola: D was not free riding by providing scores to subscribers. They incurred their own production costs just as NBA did. Therefore, did not reduce P’s incentive to continue its service. 
5.      Hanover Star: No property rights in the TM itself, but in the goodwill of the business and the protection of that goodwill that a TM affords.
6.      Stork Restaurant: Court found likelihood of confusion and it was not obviated by distance between restaurants, size, lack of loss of business. Court cares about the LIKELIHOOD of confusion, and takes those who may not be the smartest into account.
7.      Champion Spark Plugs: if it was not clear that they were being re-sold by unaffiliated party, then D is infringing. Court made D make it clear that P was not associated with the second hand good.
9.      How to qualify
1.      Must be distinctive, capable of identifying the source of a particular good.
1.      Generic: says what the product is (computer, spoon, apple juice, cyberlaw, corn flakes, lawyers.com)
2.      Descriptive: Directly describe quality of characteristic of the good. Because they are useful in describing the good to consumers, we do not give them protection unless they have acquired secondary meaning. (All Bran, Vision Center, cra

he business, Niles does not convey any info about D useful to consumer (it is actually more of a suggestive mark), numerous alternatives.
17. Safari hat case (distinctiveness): Safari is not a distinctive term for TM purposes when applied to a safari hat. Safari could be distinctive for footwear though.
18. Quik-Print: the TM was descriptive, court analyzes as if spelled correctly. If in foreign language, will translate to english to analyze. 
19. Amazon & Patents.com: Patents.com could not be registered without secondary meaning. Amazon can because Amazon is arbitrary for books, patents.com is just descriptive. 
20. Waltham Watch (secondary meaning: P initially used mark as geographic indicator, but has acquired secondary meaning. D uses it for geographic meaning. Court enjoins D’s use unless he makes it clear that his product is independent from P. Court balances interests of both parties.
why do we not require secondary meaning for arbitrary/fanciful marks? the central purpose of these types is to distinguish a product by default. It would be an insecure investment if these types were not protected from the get-go, people might not advertise with this risk. Its not going to be anticompetitive to others in the market, with descriptive marks there is somewhat of an anticompetitive element