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Trademarks and Unfair Competition
University of Michigan School of Law
Eisenberg, Rebecca S.

TM Outline Winter 2008
 
 
THEORIES OF TM PROTECTION
 
Summary Of Table For TM (pg. 20)
Nature of TM
Commercial IDs of source
Scope
Protects against creating a likelihood of confusion; or diluting a famous mark
Purpose
Protects owners and public from unfair competition
How To Obtain Rights
Use mark in commerce or apply for federal registration
Principal Advantages of Registration
Nationwide priority rights; possibly conclusive evidence of validity and ownership; US Customs recordation; increased counterfeiting remedies
Basis for Registration
(1) Bona fide intention to use in commerce followed by actual use; (2) Non-US owner’s country of origin registration or application filed w/in 6 months prior to US application, or extension to US of international registration, plus bona fide intention to use in commerce; or (3) Actual use in commerce
Notice Requirements
Optional: “TM” or “SM” if unregistered; “®” or “Reg. U.S. Pat. & Tm. Off.” if registered
Term of Rights
As long as used; registrations must be maintained by filing use declaration before each 6th and 10th anniversary; renewal required every 10 years
Infringement Prerequisites
Registration Optional
Infringement Standard
Likelihood of confusion, mistake or deception as to source or sponsorship; or dilution by blurring or tarnishment
International Protection
(1) Individual countries or regions; (2) Community Trade Mark registration; or (3) Madrid Protocol centralized filing
 
Ralph Brown
TM brings high costs
The dead weight loss, because they’re able to charge monopoly prices
He’s more concerned w/net social losses by diverting net social dollars w/competition
TM is going to let consumers pay more than they should
 
Landes & Posner
Method of reducing search costs, and allowing consumers to brand products they’re happy w/from the past, and allowing consumers to find them more quickly, and allowing companies to raise higher prices
 
Jessica Litman
Something more is going on
They’re getting something of value that consumer prefer
How significant is this consumer?
Should we want to change this consumer’s orientation?
 
Hanover Star v. Metcalf (1916)
The primary function of a TM is to identify origin/ownership of article to which it’s affixed
 
Stork Restaurant v. Sahati
Confusion of source and reaping you’ve not sown are grounds for relief. Mere geographical distance does not obviate danger of confusion, actual loss of trade need not be shown to warrant injunction, & disparity in the size of the respective businesses will not bar injunctive relief
 
SUBJECT MATTER OF TMs
 
Restatement of Unfair Competition §9
Definitions of TM & Service Mark
A trademark is a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others. A service mark is a trademark that is used in connection w/services
Limitations on this definition:
It needs to be distinctive
Consumers need to recognize it
Has to be something that can perform a source designating symbol
Needs to be USED in connection w/services
 
Kellogg v. National Biscuit (1938) J. Brandeis
Facts:
Shredded Wheat case in which NB’s patent expires and Kellogg makes its own shredded wheat
Analysis:
Term “shredded wheat” is generic term
No exclusive right to a generic term
When patent expires, product is open to the public, and no exclusive right to it
No exclusive right to pillow shaped, because that was under the patent
Something that is functional cannot be the subject of a trademark because it puts competitors at a competitive disadvantage if you allow one firm to have a monopoly over something that is functional
 
Coca Cola v. Koke (1920) J. Holmes
Facts:
Koke chose a name that sounded similar to CC
Analysis:
When a mark has a well-accepted meaning and indicates a single thing coming from a single source and another party clearly intends to capitalize on the owner’s goodwill, an infringement of the owner’s mark has taken place
 
Slogans
Can be registered under §2 of Lanham Act (also §23)
A descriptive slogan can get secondary meaning through extensive, continuous, and substantially exclusive us

but connection isn’t clear (EX: Snuggle for fabric softener)
Arbitrary and Fanciful
Enjoy all TM rights
Fanciful Term
Made up word (EX: Kodak)
Arbitrary Term
Term that has nothing to do w/product (EX: Dawn dishwashing liquid)
 
2. Secondary Meaning
International Kennel Club of Chicago v. Mighty Star (7th Cir. 1988)
Facts:
IKC runs a dog show. D sells stuffed animals, and sold some alleging that they were official dog show animals.
Analysis:
Factors in deciding whether there is secondary meaning:
Amount and manner of advertising
Volume of sales
Length and manner of use
Direct consumer testimony
Consumer survey
IKC is descriptive, but has acquired secondary meaning
Acquired it w/in fancy dog community in Chicago
Also, it’s present because of amount and manner of advertising and length of manner of use of IKC mark
 
Restatement of Unfair Competition §13
Distinctiveness; Secondary Meaning
A word, name, symbol, device, or other designation, or a combination of such designations, is “distinctive under rules stated in §§9-12 if:
(a) designation is “inherently distinctive,” in that, because of the nature of the designation and context in which it is used, prospective purchasers are likely to perceive it as a designation that, in the case of a TM, identifies goods or services produced or sponsored by a particular person, whether known or anonymous, or in the case of a trade name, identifies the business or other enterprise of a particular person, whether known or anonymous, or in the case of a collective mark, identifies members of the collective group or goods or services produced or sponsored by members, or in the case of a certification mark, identifies the certified goods or services; or