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Trademarks and Unfair Competition
University of Pennsylvania School of Law
Parchomovsky, Gideon

Advise a client to register their TM (and outline the benefits of registration).
Is it actually a trademark or service mark? (3 elements)
What source of protection is the TM owner using? (state/common law or federal?)
Possible claims a TM owner can bring:
– opposition to registration
– infringement of their mark
– dilution of their mark
Defenses to claims brought by a TM owner:
1. Genericide
2. Functionality
3. Abandonment
4. Illegitimate assignments involving mark
5. First sale doctrine
6. Non TM (nominative) use, fair use, 1st Amendment
1. Who owns the TM? (the first, senior user)
2. Is the TM actually protectable as a TM? (where on the spectrum does it fall fanciful – generic)
– 4 tests in Zatarains
3. Is the mark generic?
4. Is the mark protectable even though it’s descriptive?
            – 2ndary meaning
5. Is there protectable trade dress?
6. Is the mark functional?
7. Does the owner have to disclaim part of the mark?
8. Is there a likelihood of confusion between two marks?
9. Is concurrent use of two marks allowed?
10. Has there been dilution of the mark?
11. Is there illegal use of a domain name?
12. If a mark does not have 2ndary meaning can it be registered on the supplemental register?
Reasons a mark should not be allowed:
1. The mark is functional.
2. The mark is generic.
3. The mark is dilutive of a famous mark.
4. The mark infringes another mark
5. There is a likelihood of confusion with another mark
Absolute Bars
Immoral/Scandalous – 2(a)
Flag, coat of arms – 2(b)
Name, signature, portrait – 2(c)
Confusingly similar to an existing mark – 2(d)
Primarily geographically mis-descriptive – 2(e)(3)
Removable Bars
Merely descriptive marks – 2(e)(1)
Primarily mis-descriptive marks – 2(e)(1)
Primarily geographically descriptive marks – 2(e)(2)
Primarily merely a surname – 2(e)(4)
Trademark = may consist of (1) any word, name, symbol, or device or combination thereof (2) used in commerce (3) to distinguish goods and services. 
Patents and TMs are (1) substitutes and (2) compliments
            – substitutes = product design and configuration (can try to get patent or trade dress protection)
            – compliments = the patent exclusivity period allows you to develop a strong trademark
A patent holder may drop the price of their good from monopoly pricing before the patent expires, to get customers to try the product then rely on the TM (at least for experience goods).
Overlap between TMs and Copyrights
            – easier to get trade dress protection (maybe)
            – Logos can also be claimed under CP as artistic or pictorial works
                        – different legal defenses and limitations under CP
                                    – CP also protects you against private individuals
TMs only protect against business uses.
TM elements
1. Word, name, symbol, device, or any combination thereof
2. used by a person or that a person has a bone fide intention to use
3. in commerce
Functionality claims will often bar TMs for both scents and flavors
Certification marks
            – Types of CMs: (1) Quality of goods; (2) Geographical indications / Regional marks; (3) Produced using union labor
Collective Marks
– § 45: means a TM or Service Mark (1) used by the members of a cooperative, an association, or other collective group or organization, or (2) which such coop, etc… has a bone fide intention to use in commerce and applies to register on the principal register.
– Arbitrary/fanciful = inherently distinctive
– Suggestive = usually distinctive
– Descriptive = not inherently distinctive
– Generic = inherently non-distinctive
Fanciful = coined word, didn’t exist before term
Arbitrary = no connection between chose mark and goods (Camel cigs)
Suggestive = indirectly allude to quality of product or service; requires an exercise of imagination
Descriptive = describe a certain quality / trait of the product
No TM protection for generic marks.
Descriptive marks must acquire Secondary Meaning to be trademarked
Factors to consider in deciding what kind of TM to use:
(1) Legal considerations and (2) commercial considerations
Composite Marks = two terms (can be an arbitrary mark plus the generic term)
**Zatarain’s v. Oak Grove (5th Cir. 1983) p. 50
Descriptive marks may only be registered upon acquiring 2ndary meaning in the eyes of the consuming public.
            – the burden is on the claimant to show his mark has acquired 2ndary meaning.
4 tests to determine what group a term belongs in:
1. Dictionary test
2. Imagination test
– If imagination is not required to connect the mark to the good, then the mark is descriptive   
  (otherwise it is suggestive).
3. Competitor’s need to use the mark
– If competitor’s would find the mark useful in describing their product then it is descriptive
4. Competitor’s actual use
1st test: Is the term descriptive?
2nd test: If so, has it acquired 2ndary meaning?
            – burden on the claimant

of more than one generic terms is not automatically generic. 
**Murphy Door Bed Co. v. Interior Sleep Systems (2d Cir. 1989) p. 68
A mark can become generic over time.
To show that a term is generic you need to show that a term is deemed generic by a substantial majority of the public. 
Why not have TMs for generic marks?
– we protect TMs as identifiers of source – once a TM can no longer identify its source it is not worth protecting. 
– to promote competition
A mark may become generic in two ways: (1) from the start, (2) a mark becomes generic over time.
At the end of the day generic prevails over descriptive w/ 2ndary meaning if there is a dispute about which category it falls into.
Google doesn’t worry about their name becoming generic because they own the domain name (which is the real barrier to entry). 
**Two Pesos v. Taco Cabana (S.Ct. 1992) p. 77
Trade dress infringement case, under §43(a) of the Lanham Act.
Trade dress protection may be acquired without a showing of 2ndary meaning.  Design/décor may be inherently distinctive. 
            – This result is desirable because: (1) we need to protect investment in design and (2) requiring 2ndary meaning would put small companies at a disadvantage.
This case does not give much guidance on when décor will be inherently distinctive, or as to what is the scope of the protection (i.e. when there will be infringement).
**Wal-Mart Stores v. Samara Brothers (S.Ct. 2000) p. 83
Trade dress protection covers: (1) product design and (2) product packaging. 
– under §43(a) of the Lanham Act
For product design to be protected it must be distinctive.  For product design to be protected it therefore must have acquired 2ndary meaning.
Distinctiveness can either be inherent or acquired.  But product design cannot be inherently distinctive.  A showing of 2ndary meaning is required to receive protection. 
– product design can be protected as trade dress only when it is distinctive and has acquired 2ndary meaning – it cannot be inherently distinctive. 
Product packaging, on the other hand, may be inherently distinctive (as in Two Pesos).