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Trademarks and Unfair Competition
University of North Carolina School of Law
Gerhardt, Deborah R.

Trademark Law – Prof. D. Gerhardt – Fall 2012
1. Introduction
a.  introductory observations
NB: trademark: a word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product(s) from those of others; main purpose: designate the source of goods or services, commercial substitute for one’s signature – one underlying theme of trademark law is that trademarks are associated with a product;
NB: brand: refers to identity, carries an economic power/message, source identifier[1] so importance of control for/by owner;
NB: protection: owner (idea of a property-like right; protection of business and goodwill) and consumers (as quality indication);
NB: cf. infringement: taking someone else’s marks or close enough to trade on the goodwill customers have for the original;
NB: cf. comparison/relation with patent and copyright; a trademark doesn’t expire;
NB: triadic structure of trademark: signifier (trademark itself, perceptible dimension of the mark), signified (story/goodwill/narrative behind the mark), referent (thing sold in connection with i.e. the product);
NB: types of marks: trademarks, service-marks, certification marks, collective marks, geographic(al) indicators.
b.  sources and nature of trademark rights
a.   The Trade-Mark Cases (1879) : first major trademark case to reach the Supreme Court, the Court distinguished copyright and patent from trademarks, the former being covered by the article 1 § 8 cl. 8 of the Constitution, the latter not being concerned (because not an invention, nor an original writing or thinking piece of work); same issue with the Commerce Clause i.e. « interstate commerce » provision in article 1 § 8 cl. 3 so Congress didn’t have power to pass general trademark disposition but for interstate commerce;
NB: 1946: enactment of the Lanham Act (federal protection for marks registered and used in commerce, and liberalization of the rules regarding registrable marks);
NB: trademark appeal routes:
–  for infringement: District Court, Regional Circuit Court, US Supreme Court;
–  for registration: examiner, Trademark Trial & Appeal Board, Court of Appeals for the Federal Court (or District Court and then Regional Circuit Court), US Supreme Court.
b.  Hanover Star Millin Co. v. Metcalf (1916): misrepresentation view i.e. function of a trademark is to identify and to protect the source in order to protect the business and its goodwill (get protection for use in connection with your business)(what is protected is the business through the symbol, not the symbol itself)(trademark must be used in connection with an exiting business)(you only own the mark as it relates to your business).
c.   Mishawaka Rubber & Woolen Co. v. S.S. Kresge Co. (1942): misappropriation view i.e. function of a trademark is to protect the commercial magnetism/value of the mark (applying the value of the brand)(prevents getting benefit from the work another has done to create and use the mark).
NB: trademark right grows from use, cannot get such a right without use i.e. need of a recognition by the public and participation of the public in the brand creating process.
d.  Prestonettes, Inc. v. Coty (1924): trademarks are not unlimited, can use a brand for informational purpose, trademark doesn’t prevent this kind of truthfully speech as long as it doesn’t deceive consumers.
c.   the nature of unfair competition law
NB: it’s unfair competition to pass off your goods as those of another (broader than trademark law, but now encapsulated in the Lanham Act).
a.  International News Service v. Associated Press (1918) : should not reap the benefit where you have not put any effort in sewing (i.e. laboring play a key role in trademark protection)(cf. purpose of trademark to protect public and owner).
d.  purposes of trademark law
NB: protect source-identification of goods, (benefits consumer and owner) origin/quality of goods and liability (incentive to maintain quality)(benefit consumer and owner), advertising asset and information shorthand;
NB: registration: not necessary, but definitely provides benefits e.g. presumption to be the real first owner of the mark and to have an exclusive right to use the mark in connection with the goods and services in the US.
e.   illustration
a.  Elvis Presley Enterprises, Inc. v. Capece (1998): likelihood of confusion analysis i.e. would consumers be confused?; also dilution i.e. has the mark been diluted/does the defendant capitalize on plaintiff brand’s goodwill?
f.   the Lanham Act
–  § 45, definition of trademark: «the term ‘‘trademark’’ includes any word, name, symbol, or device, or any combination thereof…used by a person, or which a person has a bona fide intention to use in commerce…to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown»;
–  §1: bases for registration, 1A (actual use) versus 1B (intent to use);
–  §2: what can be registered as a trademark?; especially §2(f);
–  §§3-4: service and collective/certification marks;
–  §8: duration;
–  §15 : incontestability of a mark;
–  §32: remedies and infringement (what it gets protected against);
–  §43(a): remedies, likelihood of confusion;
–  §45: definitions
2. Creation of Trademark Rights
a.  spectrum of distinctiveness
NB: §45 Lanham Act and defin

nericness (evidence to know if a term has become generic): use by the mark owner (plaintiff own generic use), generic use by competitors, dictionary evidence, generic use in the media, public surveys;
NB: a unique product is not generic simply because the product is unique;
NB: anti-dissection rule (look at the mark as a whole);
a.   Mil-Mar Shoe Co., Inc. v. Shonac Corp. (1996): dictionary definition;
b.  Haughton Elevator Company v. Seeberger (1950): by using its own term in a descriptive way the trademark owner proved the genericness of the said term;
c.   Murphy Door Bed Co. v. Interior Sleep Systems, Inc. (1989): even if the mark isn’t registered, the burden shifts to the defendant to show that the mark has become generic if the term is an invented one that came from the manufacturer;
d.  Blinded Veterans Assn. v. Blinded American Veterans Found. (1989): for deception, the key is not the intent but the actual effect of deceiving.
d.  distinctiveness of nonverbal identifiers
NB: cf. the Seabrook Foods case and several factors to determine whether a logo was distinctive: whether the design is a common shape or design, whether the design is unique or unusual in the field in which it is used, whether the design is a mere refinement of a commonly-adopted and well-known form of ornamentation, whether the design is capable of creating a commercial expression distinct from the words – idea that the Abercrombie test should be used, but Seabrook keeps slipping in;
[1] cf. School of Chicago on economic efficiency of brands.
[2] Lanham Act §1052 / §2 : « no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it » (e) « consists of a mark which when used on or in connection with the goods of the applicant is merely descriptive », (f) nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce ».
[3] there is never a trademark or protection for a generic term, with a generic term secondary meaning does not establish trademark protection.