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

I. Theories of Trademark Protection (General Overview)
– Trademark is distinct from copyright and patent, as it is not mentioned in the Constitution and therefore has developed primarily from common law. At the time, trademark wasn’t really an issue because much trade only took place at the local level.
– Differ from patents and copyrights because trademarks don’t expire, as long as you are still using them
– Trademarks belong to the people who use them, to those who create them. This also goes to the theory that we don’t want people to be able to monopolize the marks (i.e. encourage competition)
– Two Concepts of Trademark Confusion
i. Use
1. the first person to use gets trademark rights, and the scope of your use determines scope of your rights→ i.e. if you don’t use it, you lose it.
2. want to allow some protection to the owners of the mark,
3. Also, you don’t need to give someone incentive to try and sell their product→ gov’t has no interest in promoting this sort of activity, as it would with copyrights or patents, for people are going to be self-interested and attempt to make money
ii. Confusion
1. protecting consumers from confusing use by others
2. dilution v. confusion
a. is the purpose to protect consumers from confusion or to protect business’s investments
b. see later section on dilution

II. What can be classified as a Trademark?
– §9 Restatement
i. 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 with services.
– Basically, anything can be deemed a trademark for purposes of protection, as long as it is distinctive/distinguishable
i. Must be capable of being a source designator and must actually be used as such.
– In addition to distinguishing your product/source, a trademark acts as a quality designator.
i. See Posner’s article on use of trademark as a means of reducing search costs
ii. See Breakfast w/ Batman for a discussion on consumers’ willingness to pay more for certain trademarks (i.e. the assumption that there is actually value in the name) (pg 78)
– Kellogg v. National Biscuit (pg 84)
i. Perky (Nabisco) invented shredded wheat, got both utility and design patents for the pillow shape of the biscuit—the patents expired
ii. After the expiration of the patents, Kellogg started making the same thing, with the exception of different packaging
iii. Nabisco sued Kellogg for using the name “shredded wheat” (trademark) and also for using the pillow shaped biscuit (trade dress)
iv. Trade Dress claim
1. The problem here was that there was a patent and it had expired
2. The main issue is that once your patent is up, your protection is over and the monopoly one once held is finished. (can’t have a monopoly over the shape since is was patented)
3. Conflicting views about the validity of this argument
a. Since there was only one manufacturer of this product for so long, the public was used to seeing the product in this form and wouldn’t be as willing to buy it in another form, therefore, there is general fairness argument about allowing competitors into the market (it is also possible to make a quasi-functional argument as well)
v. Trademark claim
1. “shredded wheat” is the name of the product—this is what you call it.
2. The π tries to claim that the public has come to associate the term with Nabisco—the court rejects this argument
a. Nabisco was the only one making this stuff, so of course the public was going to have such an association
b. And, shredded wheat is a generic name.
vi. Note, a mark can survive the expiration of a patent, see in conjunction with the section on genericism
A. Word marks, slogans, and Surnames
– Coca Cola v. Koke (pg 89)
i. Koke tries to make a cola beverage and use this confusing name
ii. Δ argues that Coca Cola was defrauding the public be misleading the public into believing that the product still contained cocaine.
iii. Trademark protection doesn’t extend to deceptive marks—Δ makes this defense
1. This is distinguished from deceptively mis-descriptive marks, which are allowed
iv. Coca Cola isn’t a deceptive mark because the cocaine content was eliminated over 14 years prior to this case. No one believes that the product actually contains cocaine, so mark is not deceptive. (This is merely mis-descriptive)
v. Court also says that this mark has established secondary meaning
– Currently, the courts are more willing to allow trademark protection for descriptive marks that have established secondary meaning (e.g. Tastee salad dressing, TV Guide)
– Slogan can now be protected
– Surnames are not protected because we don’t want to prevent people from using their own names in conjunction with their own businesses just because someone else has used the surname as a trademark in the past.
i. There are limited exceptions to ability to protect surnames—court will allow it in some instances- ask Eisenberg
B. Trade Dress
– Qualitex Co. v. Jacobson Products (pg. 96)
i. Qualitex had produced press pads w/ a green-gold color for years
ii. Competitor started using the color and applied for trademark protection
iii. Prior to this, the Circuits were split as to whether or not to allow color as a trademark
1. Owens-Corning was able to trademark the color pink for insulation (Federal Circuit)
2. 7th circuit declined to protect the color blue as a trademark for nutra-sweet
3. 9th circuit- took note of debate, didn’t decide, but then had this case (Qualitex) and said that you couldn’t protect color
iv. Color can be functional or non-functional
1. in the case of insulation, color is non-functional (nobody buys the insulation because it is pink)
2. But, clothing- color is functional because you buy the t-shirt for the color
v. Supreme Court reverses, finds that color in this case is not functional
vi. Secondary meaning- an element has taken on a source-designated meaning (i.e. if something is used over time, it comes to be associated with a particular product—a reliable product indicator)
1. Note, however, that there is no holding on this issue, so there is no precedent as to whether or not color can be a trade mark
vii. In addition to acquiring secondary meaning, color as a trademark may also be protected for being inherently distinctive.
– While color may, in some instances, act as a protectible trade dress, it is also necessary to balance the interest of preventing monopoly over certain characteristics.
– We don’t want to allow trademark law to give competitors an alternative strategy for obtaining the same monopoly protection as patent law, but without the limits that have been enacted in patent law.
– The Lanham Act is recently addressing the issue of trade dress
– In conjunction with functionality, there is no way to get over a bar to registration, unless there is de facto functionality (which can obtain secondary meaning). There is no way to get around de Jure functionality.
– See also Restatement §16, which states that products dress is protectable as a trademark if:
i. Design is distinctive
ii. Design is not functional
C. § 2 of Lanham Act
(15 U.S.C. §§1052). Trademarks registrable on the principal register; concurrent registration
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States.
(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
(c) Consists of or comprises a name, portrait, or signature identifying a particular living
individual except by his written consent, or the name, signature, or portrait of a deceased
President of the United States during the life of his widow, if any, except by the written consent of the widow.
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of
the applications pending or of a

irst (inherently descriptive) and disfavors the last (mis-descriptive)
i. Arbitrary terms don’t deplete the language of useful terms
ii. Also want to give some protection to creativity in conjunction with making up the mark
iii. Consumers are more likely to recognize the inherently distinctive marks as being source designators/trademarks
iv. Descriptive marks can acquire secondary meaning
v. Mis-descriptive marks are rendered the least amount of protection, because this is cutting it close to being deceptive (therefore, going to be more careful about giving protection); but allowed protection because the public really doesn’t care and they probably aren’t being deceived.
1. Under the revised statute, geographically deceptive terms may not be registered, even if they acquire secondary meaning, due to NAFTA and GATT agreements
– Application of Reynolds Metals
i. Product called “Brown-in-bag” – allowed you to cook meat in a bag.
ii. Reynolds claiming that because you can cook other things in the bag, this is not a descriptive term
iii. Judge agrees, saying that there are many uses for this product, and Brown-in-bag merely describes one of them.
iv. Eisenberg – Usually courts don’t care about misspellings or other “cuteness” factors – they look at the words used, and that’s it. Counter argument is that consumers will be more likely to recognize something that’s more artsy.
1. She thinks this is kind of a stretch.
– Application of Quik-Prink Copy Shops, Inc.
i. Court says that “Quik Print” consists of words used to describe both the quality and the service that’s being provided.
ii. Court defines descriptive and suggestive
1. Descriptive – a mark immediately conveys to one seeing or hearing knowledge of the ingredients, qualities, or characteristics of the goods or services with which it is used.
2. Suggestive – if imagination, thought or perception is required to reach a conclusion on the nature of the goods or services.
– International Kennel Club of Chicago v. Mighty Star
i. IKC is a dog show – in conjunction with their shows, they allow vendors to sell related products, including stuffed animals
ii. Mighty star was a toy maker that put out a line of stuffed dogs called “International Kennel Club.”
iii. Court says IKC is a descriptive mark that needs secondary meaning to be protected.
1. Court says that it’s possible that they can show secondary meaning – used the name for 50 years, lots of publicity within a small community – they may have secondary meaning within a small group.
iv. Likelihood of confusion – some evidence of people calling IKC and asking if they were associated with the D’s stuffed dogs.
v. Eisenberg – little evidence of any overlap or confusion between the two consuming populations
1. It is unlikely that Mighty Star is riding on the popularity of IKC, but IKC may be harmed, nonetheless, by this huge company’s use of their name.
2. There is less of an issue of diversion of trade than there is an issue of protection of the reputation of IKC’s name, since they were first in time.
– Distinctiveness in trade dress
i. Rock and Roll Hall of Fame v. Gentile Productions (p. 126)
1. D sells posters featuring his own photographs of the Rock and Roll Hall of Fame. P (museum) claims that he’s infringing on their trademark rights.
2. Court distinguishes between a picture of a building and another building that looks the same as the museum.
3. Court notes that public doesn’t recognize this as a source-designating mark. Must use a mark consistently as a source-designating mark – P, in this case, didn’t use the same view of the building consistently.
4. No issue of confusion – P isn’t trying to copy the building, he is just taking pictures of it.
5. P is merely trying to preserve licensing rights so that they can have all profits from merchandise sale.