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Intellectual Property
University of North Carolina School of Law
Conley, John M.

Intellectual Property Outline – Fall 2016 – Conley
Trademark Law
What is a Trademark?
Lanham Act § 45; 15 USC § 1127: The term trademark includes any word, name, symbol or device, or any combination thereof used by a person, to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown
SCOTUS has interpreted this definition broadly: Any designation that can carry meaning might serve as a trademark (Qualitex Co. v. Jacobson Products Co.)
Number, drawing, shape, sound, fragrance, or color
Indicate a source: the symbol must create a separate and distinct commercial impression that identifies the source of the merchandise to the consumer
Not a source: consumers think the symbol is just a pretty design, consumers think name of a hair color just indicates the color of the hair dye
Basic Language Explanation:
The role of a trademark is to help a merchant distinguish its goods and services from those of its competitors.
Merchants inform consumers that certain products and services sold under a particular mark come from the same producer.
Consumers then rely on these trademarks to assist them in deciding on which products and services to buy.
Litigation Attack Plan:
Does the plaintiff own trademark rights in a symbol it is using?
Has the Defendant used the Plaintiff’s mark in a way that is infringing?
Is the defendant’s use protected by a defense?
Basic Lanham Act
§ 1 (15 U.S.C. § 1051) – Actual use & intent to use registration process
§ 2 (15 U.S.C. § 1052) – Bars to registration
§ 2 (a) – Immoral, deceptive, or scandalous matter; False connection
§ 2 (b) – Flag, coat of arms, or other insignia
§ 2 (c) – Name, portrait, or signature of a person or deceased President while widow still living w/o widow consent
§ 2 (d) – Likelihood of confusion/Deception
§ 2 (e) –
(1) merely descriptive or deceptively misdescriptive
(2) primarily geographically descriptive
(3) primarily geographically misdescriptive
(4) primarily merely a surname
§ 2 (f) – Likelihood of confusion; Allows the registration of certain descriptive marks on a showing of secondary meaning; § 2 (a), (b), (c), (d), (e)(3), and (e)(5) are complete bars
§ 7 (15 U.S.C. § 1057) – Certificates of Registration is prima facie evidence of:
§7(b) Validity of Mark, Ownership of Mark, Owner’s exclusive Right to use mark and Nationwide constructive use/notice
§7(c) Application to register mark considered constructive use
§ 32 (15 U.S.C. § 1114) – Infringement of registered marks, Remedies
§ 43(a) (15 U.S.C. § 1125(a)) – Infringement of unregistered marks
§ 43(c) (15 U.S.C. § 1125(c)) – Dilution of registered/unregistered marks
Theories of Protection: Passing Off
Historical Passing Off – common law tort action would lie if the P could prove that the D had used P’s name or brand to deceive consumers into thinking that P was the source of D’s goods
∆ sells ∆’s product as if it were π’s
Intent to deceive depended on the distinctiveness of P’s mark
The more distinct the mark, the less proof needed
Exe: You order coke, and I serve you generic food lion cola and don’t tell you
Is this infringement??? No. You haven’t used a mark in commerce. But you have taken advantage of the coke mark, this could damage the coke brand and damage its value.
Reverse Passing Off- Defendant provides Plaintiff’s product but tells customer’s it is D’s own product
∆ saturates market so consumers think π’s product is ∆’s
In my diner I serve “Conley Cola” for 8 cents and people try it. Conley fills them with coke to suck people in so they love the product! People love it!
Still no use of coke trademark, just the product.
William Warner v. Eli Lilly – P/EL sells coco-quinine. D/W sells Quin-coco.
P sues D to enjoin petitioner from manufacturing its preparation if flavored with chocolate and from using its name on the grounds that it infringed. P wins because of passing off. No TM infringement occurred because both names are descriptive.
The Calculus of Passing off
P’s mark has no secondary meaning.
To win, must prove D actively palmed off its goods as coming from A and by word or deed actively deceived consumers
P’s mark is descriptive or otherwise and has secondary meaning
P need not show conscious intent to deceive nor actual deception of consumers. P just needs to show likelihood that D’s use of the symbol will deceive consumers as to source
P’s mark is distinctive and not descriptive.
Courts presume that consumers presume B’s use was intended to create confusion.
Requirements for Protection
A Trademark Must:
Identify the source of the goods sold under the designation
As long as they can identify that it comes from a source, customers don’t need to identify the source
Be distinctive of the source of the goods or services to which it is affixed
(1) It is “inherently distinctive” of source or
(2) It has developed “acquired distinctiveness” (secondary meaning) of source.
The trademark must not be disqualified from protection by various statutory bars to protection § 2 (15 USC § 1052)
Immoral or scandalous or deceptive
Comprises of a flag or coat of arms
Consists of a name, portrait, or signature of a living person w/o his consent. No presidential likeness
Consists of or comprises a mark which resembles another one already registered, “likelihood of confusion”
Cant use a trademark if the symbol consists of a mark which when used with goods is merely descriptive unless it has become distinctive of the applicant’s goods in commerce and is meaningful in consumer’s mind
It cannot be ‘functional’
Must be used in commerce
Does not need to be registered
Does not need to be in a particular form
Distinctiveness Analysis
Trademark Distinctiveness
A mark must be distinctive to be protectable.
Inherently distinctive OR Acquired distinctiveness
The level of distinctiveness is a question of fact
Word Marks
The Abercrombie spectrum is most relevant when discussing word marks, since it encourages a court to analyze the meaning of the mark as it is understood in the societal, linguistic, and commercial context in which the mark is used.
4.    Abercrombie Spectrum
Fanciful: coined/made-up term (ex. “Polaroid” camera)
Have to be careful that the term does not become generic
Term invented soley for use as a trademark
Arbitrary: Common word applied in an unfamiliar way (ex. “Apple” for laptop computers)
Suggestive: Link to product requires imagination (ex. Nike sports equipment)
If “a consumer must use imagination or any type of multistage reasoning to understand the mark's significance … the mark does not describe the product's features, but suggests them.” Zobmondo
Suggestive vs. Descriptiv

onal copying by defendant
Trade Dress that Needs Secondary Meaning:
Colors – Qualitex
Product Design – Samara
Trade Dress that may be Inherently Distinctive
Product Packaging – Samara
Décor – Two Pesos
Distinctiveness Analysis of Nonverbal Marks< >Trademark law protects “trade dress,” which may consist of a product’s packaging or configuration as well as nearly any other aspect of the product or service.The text of § 43(a)(3) provides little guidance as to the circumstances under which unregistered trade dress may be protected.Producer must show the infringing feature is not “functional” and is likely to cause confusion with the product for which protection is soughtTwo Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (analyzing the source-distinctiveness of a restaurant interior) (Trade dress may be inherently distinctive and protectable without secondary meaning) (Sort of a third category of trade dress)Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) (analyzing the source-distinctiveness of a single color)Color alone may be protected as a mark but is never inherently distinctive. Secondary meaning is requiredWal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (analyzing the source-distinctiveness of an apparel design). Product packaging trade dress may be inherently distinctive. Secondary meaning is not required.Product design trade dress may not be inherently distinctive and requires a showing of secondary meaning)Trade Dress< >Trade dress for décor is the total image of a business- can include shape and general appearance of a restaurant, the identifying sign, floor plan, menu, equipment, uniforms, other features §43(a): Trade dress must be distinctive, either inherently or by acquiring distinctiveness. TwoPesosTrade dress is inherently distinctive when its “intrinsic nature serves to identify a particular source of a product,” and, in contrast, acquires distinctiveness when the public comes to associate the product with its source. If you are not sure, err on requiring secondary meaning. Court is hesitant to give inherently distinctive status to trade dressStatutory Scheme, §43 of the Lanham Act: “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device . . . or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which (A) is likely to cause confusion, etc.”This statute allows the owner of a particular trade dress (“container for goods”) to sue an infringer (a person or entity who illegally copies that trade dress) for violating section 43(a) without registering that trade dress with any formal agency or system.