Trademark Law – Lee
I. Background
A. Lanham Act is the governing statute
B. PTO is the authoritative/administrative agency in charge of trademarks
C. Congress had authority to pass the Lanham Act under the Interstate Commerce Clause
1. there is no trademark clause in the Constitution
D. Definition of Trademarks
1. Word, name, symbol, device or combination thereof 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.
E. Secondary Meaning is acquired when in the minds of the public the primary significance of a product feature is to identify the source rather than the product itself
F. Functionality doctrine – cannot trademark a functional characteristic of a product because it would extend the monopoly/patent rights
1. functional = essential to the use or purpose of the article or if it affects the cost or quality of the article
G. Reasons to register a trademark
1. federal jurisdiction and federal benefits and protections of the LA
a) Registration gives you seniority over any subsequent
b) Puts the rest of the US on constructive notice that you have the mark and were first to use it
2. ® = federal TM registration, don’t have to use the symbol can just say that it is a registered TM
3. TM = using it as a mark but don’t have registration (same for SM)
H. How to register
1. file with PTO → goes to the examiner who decides → published in Official Gazette → Oppositions filed(only 3% are opposed) → [notice of allowance] → [statement of use filed for ITU apps] → Examination → ®
a) can appeal examination rejection to the TTAB (Trademark Trial and Appeal Board)
b) can appeal TTAB decision to Fed Circuit
2. If approved the mark gets put on the Principal Register or the Supplemental Register
a) Principal Register – mark gets presumption of validity at trial and other benefits
b) Supplemental Register – get no benefits but if on the supplemental register for X years then can apply to get on the Principal Register by claiming the mark has become distinctive
I. Defenses
1. Don’t own the mark
2. It’s generic
a) Kellogg v. National Biscuit Co.
(1) No exclusive right to the term shredded wheat because it is generic.
3. You abandoned it
4. More
II. Lanham Act § 2
A. §§ a-f are exceptions where you cannot get registration. No mark shall be refused registration unless it:
a) consists of immoral, deceptive or scandalous matter…may disparage or falsely suggest a connection with persons, institutions…or may bring into contempt or disrepute
b) consists of or comprises the flag, coat of arms or other insignia of the US, or any state, municipality or foreign country
(1) generally has to look like the flag
c) consists of or comprises a name, portrait, or signature of a living person unless given written permission or the same of a deceased President during the life of the widow except with written consent of the widow
(1) protects the rights of privacy and publicity which LIVING persons have in the designations which identify them
(2) doesn’t have to use the full name
(3) if the name is actually Arbitrary and Fanciful then a statement as to such should be placed in the file and published in the Gazette
d) is likely to cause confusion with a registered mark
(1) mark will be refused ® if it resembles another mark and will be likely to cause confusion when used by the applicant
(2) HOUSE MARKS – mere addition of a tradename, housemark or other word in front of a mark that is similar to another mark will not defeat the likelihood of confusion
(a) Exception – if the presentation of the marks makes the confusion highly unlikely (ex Formula 1)
e) consists of a mark which when used on or in connection with goods
(1) is merely descriptive or deceptively misdescriptive (CAN BECOME DISTINCTIVE)
(2) is primarily geographically descriptive (CAN BECOME DISTINCTIVE)
(3) is primarily geographically deceptively misdescriptive
(4) is primarily merely a surname (CAN BECOME DISTINCTIVE)
(5) is functional
f) except as excluded in a, b, c, d, e3 and e5 the mark may be registered if it has become distinctive
B. Specific things to register
1. Color – Qualitex v. Jacobson – color is TMable, there is no flat ban against it, can have secondary meaning; not TMable if the color is for function (cannot function if not in that color)
2. Sound – are registerable, no flat ban a
ness; secondary meaning
1. A mark is distinctive if
a) The designation is “inherently distinctive” in that because of the nature of the designation and the context in which it is used, prospective purchaser are likely to perceive it as a designation that, in the case of a trademark, identifies goods or services produced or sponsored by a particular person, whether known or anonymous, or …
b) The designation, although not “inherently distinctive,” has become distinctive, in that, as a result of its use, prospective purchasers have come to perceive it as a designation that identifies goods, services, businesses, or members in the manner described above. Such acquired distinctiveness is commonly referred to as “secondary meaning”.
C. Author’s comment
A designation that is not inherently distinctive, such as a word that describes the nature of the product on which it appears, nevertheless may become, as a result of its use by a specific person, uniquely associated with that person’s goods, services, or business. Such acquired distinctiveness is called “secondary meaning”. Secondary meaning does not connote a subordinate or rare meaning. It refers instead to a subsequent significance added to the original meaning of the term. Secondary meaning exists only if a significant number of prospective purchasers understand the term, when used in connection with a particular kind of good, service or business, not merely in its lexicographic sense, but also as an indication of association with a particular, even if anonymous, entity. … A designation that has acquired secondary meaning thus distinguishes the goods, services or business of one person from those of others. When a designation has become distinctive through the acquisition of secondary meaning, it is protected under the same principles applicable to inherently distinctive designations.
