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Intellectual Property
University of Pennsylvania School of Law
Wagner, R. Polk

Trademark

Underlying Theory

-perpetual protection for distinctive, non-functional names and trade dress in order to improve quality of information in the marketplace

Scope of Protection
Exclusive rights in U.S. based on likelihood of confusion, false designation of origin, and dilution

Term of Protection
Perpetual, as long as it isn’t abandoned.

Registration: Benefits
-prima facie evidence of trademark
-constructive knowledge of registration
-confers federal jurisdiction
-become incontestable after 5 years
-authorizes treble damages and attorney’s fees
-right to bar imports bearing mark

Others’ Rights
-truthful reflection of source of product
-fair and collateral use, e.g. comment

Sources of Law
-Lanham Act
-unfair competition common law

Types of Marks
-trademarks
-service marks
-certification marks
-collective marks
-trade dress
-does not cover: functional features, descriptive terms, geographic names, misleading aspects, or generic names

Standard for Protection
-the main thing is likelihood of confusion
-distinctiveness
-secondary meaning for distinctive and geographic marks
-use in commerce (minimal weight)
-famous mark (dilution only)

Costs
-cost of searching database
-cost of marking product
-litigation costs

Remedies
-injunction
-accounting for profits
-damages
-potentially, treble and attorney’s fees
-seizure and destruction of infringing goods
-criminal prosecution for trafficking in counterfeit goods/services

Establishment of Trademark Rights

-to be registered, trademark must be a word, name, symbol, or device which is used by a person or which a person has a bona fide intention to use in commerce (15 USC 1127)

Two Pesos v. Taco Cabana, Inc., 1992
-taco restaurants with copied trade dress
-inherently distinctive trade dress does not require secondary meaning for protection
-this helps new entrants to the market, allows companies to appropriate their own goodwill, and protects smaller companies from having their trade dress infringed by larger ones

Wal-Mart v. Samara Bros., 2000
-unregistered product design requires: mark’s intrinsic nature IDs source OR secondary meaning
-clothing design was not copyrightable by Samara Bros.

Infringement

The Heirarchy of Marks (inquiry: capacity for source identification)
Highest: Arbitrary or Fanciful / Suggestive (inherently distinctive)
Lower: Descriptive (requiring proof of secondary meaning for protection)
Lowest: Generic (unprotectable)

AMF Inc. v. Sleekcraft Boats, 9th Cir. 1979
-factors for infringement
1. strength of the mark
2. proximity of the goods
3. similarity of the marks
4. evidence of actual confusion (contextual

or scandalous
-geographically descriptive or geographically deceptively misdescriptive
-merely a surname
-ways to kill a trademark ex parte
-opposition (within 30 days)
-belief that you are or will be damaged by the registration (standing – liberal)
-no entitlement to mark
-pleaded to PTO

In re Nantucket, Inc., U.S. Court of Customs and Patent Appeals, 1982
-Nantucket branded clothes – decision of examiner overturned, who thought it was descriptive
-primarily geographically descriptive marks require proof of secondary meaning (FL Oranges)
-primarily geographically misdescriptive marks don’t require secondary meaning unless people would believe it’s geographically accurately descriptive (Moon Pies)
-primarily geographically deceptively misdescriptive marks are unregistrable
-15 U.S.C. 1052(e)

Certification Marks
-doesn’t give you individual source information, but it gives cert. info re: certain standards
-in the U.S., geographical indications are treated as certification marks

Collective Marks
-no screening implied, just membership in something