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University of Minnesota Law School
Okediji, Ruth Lade



Spring 2015

Foundations and Purposes of Trademark and Unfair Competition Law

· Trademark-§45 Lanham Act

o Includes any word, name, symbol, or device, or any combination thereof

§ Used by a person or

§ Which a person has a bona fide intention to use in commerce and applies to register on the principal register

o To identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown

· Elements in Definition of Trademark

o Word, name, symbol

o Distinctiveness

o Use

o Intent to Use

· Service mark

o Service mark includes any word, name, symbol, or device or any combination thereof

§ Used by a person or

§ Which a person has a bona fide intention to use in commerce and applies to register on the principal register

o To identify and distinguish the services of one person from others

· Other Types of Marks

o Certification Mark

§ A mark given by or used by an organization

· Good Housekeeping Seal of Approval

§ Also about agricultural products (to a certain degree)

· See geographical indications

o Geographical Indications

§ Basically trademarks that you get because a particular product comes from a particular region

· E.g., Champagne

§ Doesn’t really exist in the US, but we instead use certification marks

§ But any international client will be dealing with GIs

o Collective Marks

§ Used to communicate that you are a member of an organization/established body

· E.g., American Dental Association, American Bar Association

· Purpose of Trademark Law

o Trademark law is really a balancing of three things:

§ Commercial interest in protection against unfair competition,

§ Consumer interest against fraud and confusion in the marketplace,

§ National interest in an efficient marketplace

o Unfair Competition

§ Hanover Star Milling Co. v. Metcalf (1916)

· Trademark is all about unfair competition

o Trademark protection is a property interest in unfair competition law

o Because it is based in a tort, unfair competition, trademark law exists at both the state and the federal level

· The property interest only exists in affixing the mark to something you are attempting to sell

§ Yale Electric Corp. v. Robertson (1928)

· Trademark keeps one merchant from diverting customers from a second merchant by using the other merchant’s mark

o One merchant shall not divert customers from another by representing what he sells as emanating from the second

· Unless the two merchants are using the same mark in ways so foreign as to avoid confusion, then using the same marks is unlawful

o Consumer Protection Against Fraud or Confusion

§ Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co. (1942)

· Consumers purchase goods by symbols

· Trademark law protects consumers from fraud, and gives them assurance that they are purchasing what they believe they are purchasing

§ Prestonettes, Inc. v. Coty (1924)

· Trademark is not a copyright

· When the mark is used in a way that does not deceive the consumer or the public there is no special “sanctity

rk federally registered?

· Registration not required but if on principal register, presumption of validity and nation-wide rights among other things

· Required to be able to sue for infringement under LA 32(1)(a)

§ Exclusions: Any grounds for refusing registration, or for an opposition to or cancellation of the registration of the mark?

o If registered, is the mark Incontestable?

§ If so, Plaintiff’s mark is valid and protectable (with certain exceptions)

o If no trademark rights, possible unfair completion claim?

· General notes

o Validity of a trademark does not mean you have absolute rights

§ A competitor can use some part of it if it is necessary for them (fair use)

o Primary significance test is used to establish secondary meaning

§ Main question- what is the primary significance of the term or the logo in the mind of the consuming public?

· If it is to identify the product, generic

· If it is to identify the producer, not generic

o If you use a generic term without doing anything else, you will be fine even if there is a chance of confusion

§ BUT if you have acted in a way to deliberately cause confusion then there will be a unfair competition claim

§ “can’t actively cause confusion”