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Intellectual Property
University of Mississippi School of Law
Myers, Gary

Intellectual Property Outline
Myers – Fall 2009

Three Main Areas
1) Brands
a) Protected by trademarks
i) Federal and state law protections
2) Inventions
a) Patents –Federal protection
b) Trade secret law – state protection
3) Creative Works
a) Copyright – Federal protection
b) Copyright – Some, smaller percentage, state protection
4) Right of Publicity
a) State law form of protection
b) Protects things such as celebrity endorsements
5) Idea Protection
a) Litigation over the use of ideas by people

Intellectual Property Clause (Patent/Copyright Clause) Article 1, Section 8, Clause 8
“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
1. Patent and copyrights only granted for a limited time, would be beyond Congress’ power to grant unlimited protection.
Trademark Rights– Based its authority on the Commerce Clause– Lanham Act of 1946
Why Are We Granted These Rights? Constitution authorizes Congress and Congress has executed the power because…
a. Incentive Theory
i. In order to encourage people to create new works, give them an incentive or a reward.
1. Ex. Patent protection for pharmaceuticals so people can’t copy it and sell as their own, copyright protection for movies so people are encouraged to make movies
ii. Balancing interest of society with the interest of the author/inventor.
1. Limited time protection. Allow competitors to come in eventually but allow authors/inventors to have exclusive right to their creation for a limited time.
b. Natural Right Theory
i. Fruit of their labor; their work product. Their entitled to the rights of their creation induced by their labor.
Interest at Stake in Trademark Law à Give incentive to people to protect their brands
a. Goodwill
i. Prevents others from benefitting from the good will of others
b. Unjust enrichment
i. Using the major brand’s achievement in marketing to gain achievement and sell your own brand
c. Consumer confusion
Protect consumers from deception or confusion as to the source or origin of goods and services.

Warner v. Eli Lilly (page 46)
1. Substituting a cheaper product for the branded product.
2. Based on an unfair competition (state law) claim – palming off the others trademarks and making a misrepresentation likely to deceive or mislead prospective purchasers by causing the mistaken belief that the actor’s business is the business of the other. Essentially, Federal trademark law came from state law unfair competition claims.
a. Unfair competition state law claim is usually asserted with a federal trademark claim.
Validity of the Marks—The “Spectrum of Distinctiveness”
King-Seeley Thermos v. Aladdin Industries (50)
1. Company has to take steps and police their trademarks to avoid becoming ‘generic.’ à When people make a reference to a product using its recognized brand name (ie: referring to a tissue as ‘Kleenex)
2. In order to become generic the principal significance of the word must be its indication of the nature or class of an article, rather than an indication of its origin.
3. If it’s a generic word and is the product (ie: an indication of the nature and class of in article, suc as a thermos bottle), than competitors can be allowed to use the word in the name but in a different matter (ie: Aladdin’s thermos vs. THERMOS).
a. Think also of Aspirin and Cellophane
Abercrombie & Fitch v. Hunting World
1. A&F used the mark “Safari” on articles ‘exclusively offered and sold by it” and trademarked using the word “Safari.” Determined the word “Safari” can be protected for some items but not for others.
2. Categorize the term with a certain product to determine the amount of protection that is available to them. Categorize the name at a certain point in time – any of the marks could lose its protection if it becomes generic even after your categorize the trademark
3. First, contemplate where the product with the brand name would be on this spectrum.
a. Ex: Apple Computer—first thing you want to ask is “what type of product is this term for?
i. Apple for an apple = generic. Apple for Apple Computers = arbitrary
b. Spectrum of trademark status: (From least strong trademark to most strong trademark) Look to page 63 for more information
i. Generic: The genus of which the particular product is a species. Ineligible for a valid trademark.
ii. Descriptive: Name merely descriptive of an article or its qualities, ingredients, or characteristics can be potentially protectable in certain circumstances (upon a showing of secondary meaning). Cannot be protectable if it becomes the common descriptive name of an article or substance.
1. Steak & Ale – Restaurant and actual products
iii. Suggestive: Have some association with the underying product or service, but it requires some imagination to see the connection. Suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. Protectable.
1. If it is suggestive, entitled to trademark registration w/out proof of secondary meaning.
iv. Arbitrary: Words that have no association with the underlying product or service being marketed (ie “Black & White” scotch whiskey) Protectable.
v. Fanciful: Strongest trademarks. Which are words (or other marks) created to serve as trademarks. A coined, or made up, name developed to function as a trademark. (ie: Kodak, Exxon).
Note 4, Page 63
Arm & Hammer baking soda: Arbitrary, unrelated to the underlying product
Camel Cigarettes: Arbitrary
Chicken of the Sea tuna: Suggestive mark
Coppertone: Suggestive
Holiday Inn Motels: Descriptive that has become a recognizable trademark
Polaroid cameras: Fanciful
Raisin Bran cereal: Descriptive, but also possibly generic. If not sure where to put it, analyze both possibilities. If descriptive, limited protection b/c just describing what’s in the cereal.
Rich ‘N Chips chocolate chip cookies: Descriptive
Sanka Coffee: Fanciful
Shell gasoline: Arbitrary
Sun Bank: Arbitrary
Wrangler jeans: suggestive
Yuban coffee: Fanciful

Reading – 64 on to page 97

Descriptive Marks and Secondary Meaning
International Kennel Club of Chicago v. Mighty Star
1. International Kennel Club = Descriptive term.
a. Not a particularly distinctive term because it describes what it actually does.
b. Has secondary meaning (i.e, denotes an association in the mind of the consumer between the trade dress of a product and a particular producer). Becomes distinctive of the plaintiff’s goods and/or services
i. Factors to consider regarding a secondary meaning: amount and manner of advertising, volume of sales, the length and manner of use, direct consumer testimony, and consumer surveys.
c. Some possibility of a disclaimer as a remedy – “So and So doesn’t sponsor and endorse this”

Service Marks
In re Dr. Pepper
1. Rendering a service which is normally ‘expected or routine’ in connection with the sale of one’s own goods is not a registrable service whether denominated by the same or a different name from the trademark for its product.
a. Services which are ordinary or routine in the sale of goods (or services), such as promotional activities for one’s own business, are not services within the meaning of the Act
i. Otherwise create problem for others trying to get a trademark so don’t want people to trademark a mark for goods/services not consistent with the Lanham Act
b. Basic principle that the service for which registration is sought must be rendered to others
c. Using trademark in a bona fide manner that involves the sale of goods/services in the course of trade
2. Trademarksà goods
3. Service marksà If it’s a service, what you’re really registering is a service mark
a. Service marks shall be registrable in same manner and with the same effect as are trademarks. Entitled to same protection
b. No different protection given to trademarks vs. service marks besides the distinction between goods and services.
Certification and Collective Marks
Midwest Plastic v. Underwriters Labs (UL)
1. A certification mark is used upon or in connection with the products or services of one or more persons other tan the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of goods or services
a. UL mark was placed to ensure safety of a certain product
2. Key points about certification marks
a. Certification mark’s owner attaches mark to a third party’s product
b. Used to certify some characteristic about that product
3. A collective mark is an indication that the manufacturer is a member of a cooperative, association, or other collective group to show membership in the group or association
a. Always has to be a membership of an organization
4. Examples: Note 2, p. 126
a. The “Good Housekeeping” seal of approval = certification mark
i. Saying this is a product made by someone else that is going to get a seal of approval by good housekeeping
b. Professional Golfers’ Association = collective mark.
c. Roquefort cheese = certification mark
d. Sebastian hair salons = collective mark
e. Angus beef = certification mark
i. Saying this is a quality possessed by the beef
Trademark Ownership
Common law trademark use
Galt House v. Home Supply
1. No legal impediment to a corporation using an additional trade name that was different from its adopted corporate name
2. Act of incorporation in a particular name preempts the use of that name by a subsequent user only for a reasonable person in which to allow that business to begin and build a reputation.