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University of Minnesota Law School
McGeveran, William

Trademark Law Outline
Spring 2010
Introduction to Trademark Law
Sources and Nature of Trademark Rights
Basics of TM Law
·         The law usually only protects the mark as opposed to other associations with the mark
·         Trademarks are pertinent to goods (mark x for good y)
o    Can have may different mark holders for one word (i.e. Delta)
·         Other product features may also be protected as trade dress
·         NOTE: Mark x for good y classification has started to break down
o    i.e. the batman mark is a valuable symbol that can get exported to other types of products/brands
Trademark Law Regime
·         Contingent right to exclusive use of signifier to identify goods and distinguish them from others
·         Lasts as long as the use and association continue
·         Signifies association between good and merchant/manufacturer
o    “three-legged stool” – signifier (perceptible form of the mark), signified (semantic content of the mark, like goodwill), referent (product or service)
·         Right attaches upon consistent use (or intent to use if filed), limited by geography and market
·         Lanham Act (statutory and common law) and State Law (statutory and common law)
Unfair competition
Unfair competition
TM infringement
TM infringement
TM dilution
TM dilution
Right of publicity
Statutory right of publicity
·         Justification for TM law comes from the commerce clause, not the IP clause
o    This means that only TMs used in commerce are protected
o    IP clause intended to incentivize innovation. TMs are business interests, don’t need additional incentive to create TMs.
o    IP clause requires the grant of rights to be limited in time, TMs can last as long as use and association continue
Rationale for Trademark Law
·         Why protect trademarks at all?
o    Consumer protection:
·         From deception
·         From eroding quality
·         Encourage manufactures to create and maintain a consistent quality of goods
·         Helps consumers to select goods, reduce costs consumers incur in searching for what they desire, may induce supplier to make higher quality products
o    Producer protection
·         From immediate loss of sales
·         From dilution of reputation/good will
o    Market protection
·         More efficient and robust if it is truthful
An Illustration: Elvis Presley Enterprises, Inc. v. Capece
·         Facts: The Velvet Elvis restaurant intended to be a parody of an era remembered for its sensationalism and transient desire for flashiness.
·         Claims:
o    Unfair competition and TM infringement
o    Dilution
o    Right of Publicity
·         Court:
1.       the bar’s parodic message, its lack of similarity to corporation’s mark, products, or services, the difference between the parties’ customers, and the companies’ lack of intent to confuse were sufficient to withstand an argument of customer confusion under either the Lanham Act or common law
2.       the corporation’s dilution theories of blurring and tarnishment were not meritorious
3.       the companies’ use of Presley’s image and name were violations of his right to publicity and the corporation’s trademark rights.
Creation of Trademark Rights
Requirements for Protection
·         Word, name, symbol, device, or other designation or combination of such designations
·         Distinctive of a person’s goods or services
·         Used in a manner that identifies those goods or services and distinguishes them from goods or services of others
·         (non-functionality can be read in too)
When Distinctiveness Matters
·         Registration
·         Cancellation
·         Infringement – in general, standards for registration and protection are identical
·         NOTE: validity of a TM doesn’t equate with scope of rights – validity and scope are different
o    Only have valid TM for certain type of goods
The Spectrum of Distinctiveness
Abercrombie and Restatement Definitions
·         Abercrombie Spectrum of TM Rights
o    Generic – referring to the genus of which the particular product is a species
·         i.e. Pizza for Pizza
o    Descriptive – a mark that merely describes the associated good
·         Not necessarily the name of the thing, but wording that is really closely associated with the kind of product it is
o    Suggestive – requires imagination, thought and perception to reach a conclusion as to the nature of the goods
·         Calls the attributes of the thing to mid but requires an additional mental step to get to the good/service it represents
o    Arbitrary – word that doesn’t call anything to mind that tells you what the product is
·         Apple for computers
o    Fanciful – made up word
·         Kodak
·         Restatement (Third) of Unfair Competition
o    Inherently distinctive – if don’t need to show secondary meaning to register the TM
·         Suggestive, arbitrary, fanciful marks – assume the public doesn’t have any other understanding as to what these words mean/represent
o    Acquired distinctiveness – if the mark is descriptive, but has secondary meaning of source identification
Abercrombie & Fitch Co. v. Hunting World Co.
·         Facts: P sold items under mark ‘safari”, D marketed rival clothing products under marks that used ‘safari’ either alone or in combination with other words
·         Issue: whether mark safari for clothes is a protectable trademark
·         Court: the word safari has become part of a family of generic terms which have come to be understood not as having to do with hunting in Africa, but as terms within the language referring to contemporary American fashion apparel
In Re Oppedahl & Larson, LLP
·         Facts: case. PTO refused to register the mark based on a finding that the mark is merely descriptive of the applicant’s goods. ‘Patents’ merely describes a feature of the goods, ‘.com’ is a top level domain ind

what are you.
·         If the primary significance of the TM is describe the type of product rather than the producer, the TM is a generic term and cant be a valid TM
o    Held: under the above test the term is generic. Not really a strong holding though because the court found that even if it was distinctive, there was no evidence of secondary meaning and wasn’t protectable anyway.
Mil-Mar Shoe Co., Inc. v. Shonac Corp.
·         Issue: is the term DSW Shoe Warehouse generic?
·         Court:
o    a generic term was one that was commonly used as the name or description for a kind of goods, and that such terms could not become trademarks.
o    found that dictionary definitions of the term “warehouse” included “large retail store,” and that retailers commonly used the term in store names.
o    Significant use of a term by competitors in the industry has traditionally been recognized, along with dictionary evidence, as indicating genericness
o    NOTE: the order of words can potentially alter a genericness analysis, but only where the word order alters the meaning in such a way that the consumer has to make a significant cognitive leap from the changed form to a more common (and clearly generic) form
Haughton Elevator Company v. Seeberger
·         Issue: is ESCALATOR a generic term? (note case is from 1950)
·         Court:
o    Primary significance test – primary significance of the term in the minds of the consuming public is the product not the producer then the term is generic
o    Here the term escalator is recognized by the general public as the name for a moving stairway and not the source thereof. Here even the respondent has used the term as a generic term instead of an indication of origin in a number of patents
·         The course of conduct of the respondent was such as to cause the mark of escalator to lose its significance as an indication of origin
Murphy Door Bed Co. v. Interior Sleep Systems, Inc.
·         Issue: is the term Murphy Bed generic?
·         Court:
o    When a marks is unregistered, the burden of proving non-genericness is on the P. However, when a mark is federally registered, the burden of proving genericness is on the D.
o    The court looks to dictionary definitions, how the term is used in various ads, and the fact that a substantial majority of the public viewed the term as a standard description of that type of bed
o    Held: the term is generic