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Intellectual Property
University of North Carolina School of Law
Chin, Andrew

I. Trademarks
            A. Background
o        trademark protection goes to first person to use the mark
o        general test of infringement: likelihood of consumer confusion
o        fundamental principles of trademark law:
1) tort of unfair competition
2) tort of misrepresentation/deception of consumer
      -these are generally state law concerns
o        federal trademark protection depends on:
1)      registration
§         a mark is registrable only if it is inherently distinctive (arbitrary, fanciful, or suggestive) or is descriptive with secondary meaning
2)      use
§         this can be actual use or intent to use
·         intent to use application gives constructive priority
·         benefits of federal registration:
1)  priority
2)   nationwide constructive use and notice
3)   incontestability after 5 years of continuous use
4)   federal right of action
            B. Types of Marks
                        1) Arbitrary/fanciful
                                    -generally always protected
                                    -do not need secondary meaning for protection
                        2) Suggestive
                                    -again, usually protected
                        3) Descriptive
                                    -describe the product or service
-must have acquired secondary meaning in the mind of ordinary consumers in order to be protectable
-secondary meaning identifies the source of the good or service to the ordinary consumer
-prove secondary meaning through direct and circumstantial evidence
            -most common circumstantial evidence: consumer surveys
-burden of proof of secondary meaning is on the claimant
                                    a. distinguishing between suggestive and descriptive marks
                                                1) dictionary test – look at definition of the term
2) imagination test – if a consumer has to use his imagination to determine a description of the good or service from the mark, it will likely be suggestive
3) if competitors really need the mark in order to describe their own products or services, the mark will likely be descriptive
                                    b. Secondary meaning in the making – NOT ALLOWED (Laureyssens)
-proposed to protect against protect against intentional, deliberate attempts to capitalize on a descriptive product which has not established secondary meaning yet
                        4) Generic
                                    -generally, never protectable
-marks that are functional, primarily geographically deceptively misdescriptive, or immoral/scandalous will never be protected
            -geographically deceptively misdescriptive:
                        1) goods don’t come from place named in the mark AND
2) public makes an association between the good and the place and is thus deceived
-if public doesn’t make the association, then just misdescriptive and not deceptive (Nantucket)
-marks that are descriptive, deceptively misdescriptive, primarily geographically descriptive, primarily geographically misdescriptive, or a surname, must have secondary meaning in order to be protectable
C. Trade Dress and Product Configuration
            -only nonfunctional and distinctive trade dress is protectable under Lanham Act
            a. Nonfunctional
-existence of a utility patent on product features supports presumption that they are functional
-rebut this by showing that the feature is ornamental, incidental or arbitrary
                                    -2-part test (TrafFix):
1) is the feature essential to the use or purpose / does it affect cost or quality of the whole device?
            -if yes, then feature is functional
            -if no, then:
2) would exclusive use of the feature put competitors at a “significant non-reputation related disadvantage”?
-if yes, then the feature is aesthetically functional and not protectable
-if no, then feature is not functional
                                    b. Distinctive
                                                -product packaging can be inherently

                                                1) becomes generic
                                                2) abandoned
                                                3) misrepresent source of good or service
                                                4) obtained fraudulently
                                                5) functionality
-CANNOT challenge an incontestable mark on the basis of descriptiveness – should have brought claim beforehand (Park N Fly)
            F. Geographic Limitations on Use
                        -a CL trademark may not give nationwide protection
1) owner has exclusive use in any area where reputation has been established even if product isn’t sold there
-entitled to protect mark in an area that would be reached in the normal growth of the business
2) owner can prevent any intentional trading on goodwill even if outside established area
                        -exception: innocent or “good faith” use by the other user
                        -federal registration automatically gives nationwide protection
G. Conflict between Marks
                        -two CL marks: senior user in that area
                        -CL and registered mark: registrant
-exception: “limited area” defense – CL user can claim priority in areas where the mark was continuously used before registrant filed the app
                        -cannot expand outside existing territory
                        -two registered marks: declare “interference”
-may allow both marks to be registered for concurrent use provided no customer confusion