Trademarks and Unfair Competition
1 INTRODUCTION
1.1 Fair Competition
1.1.1 competition is fair and good – economic harm is an accepted risk
1.1.1.1 Top Tobacco v. North Atlantic
1.1.1.1.1 Top Tobacco can’t lock up use of the word “top” when other competitors need to use it
1.1.1.1.2 North Atlantic has to be able to advertise its “fresh-top” container
1.1.1.2 Cheney Brothers v. Doris Silk – copying fabric design is fair once your good is out there
1.1.1.2.1 compare Coach or Gucci scarves that work the trademark into the design – protected
1.1.1.3 Sears, Roebuck v. Stiffel – patents cancelled and copies of the good were not unfair competition
1.1.1.3.1 District Court held the patents invalid since it was just a design in the public domain
1.1.1.3.2 confusion between the lamps not proved
1.1.1.3.3 the State may not give trademarks more protection when a patent is invalid
1.1.1.4 Bonito Boats v. Thunder Craft Boats
1.1.1.4.1 state law can’t give patent protection – that is a federal right
1.1.1.4.2 public has to be free to exploit ideas
1.1.1.4.3 the protection granted a particular design under the law of unfair competition is limited to where consumer confusion is likely to result
1.1.2 What you can do
1.1.2.1 copy the product
1.1.2.2 adopt the attributes as your own – promote competition
1.1.2.3 because economic harm is an assumed and accepted risk
1.1.3 Policing your mark – important
1.1.3.1 you can prevent your logo from becoming a good
1.1.3.2 you’re not going to allow a 3rd party to knock off the good
1.2 Unfair Competition
1.2.1 Unfair Competition includes misappropriation, deception, and confusion
1.2.1.1 trademark infringement
1.2.1.1.1 use someone else’s name/mark in a way as to cause consumer confusion as to the source
1.2.1.2 false designation of origin
1.2.1.2.1 pass off your goods as someone elses or vice-versa
1.2.1.3 dilution (of a famous mark)
1.2.1.3.1 you can’t dilute the ability of someone’s mark to relate her product with her product’s attributes
1.2.2 you can’t pass off the good as your own or vice versa
1.2.2.1 INS v. Associated Press – fair competition does not include harvesting the fruits of someone else’s labor
1.2.2.1.1 INS was relaying AP news to its newspapers faster than AP could get it there
1.2.2.1.2 AP wond the right to its information for a short period of time only
1.2.3 you can’t leach off the good will of the maker
1.2.3.1 Stork Restaurant v. Sahati
1.2.3.1.1 famous restaurant won an injunction against a low-life bar
1.2.3.1.2 don’t have to wait for actual injury to occur from customer confusion
1.2.3.1.3 the basic principal was confusion of source
1.2.3.1.3.1 securing for the imitator’s goods some of the good-will of the trademark or trade name
1.2.3.2 Champion Spark Plug v. Sanders
1.2.3.2.1 refurbished spark plugs were sold in original boxes but clearly marked as refurbished
1.2.3.2.2 when the mark is used in such a way that does not deceive the public it can be used
1.3 Intellectual Property
1.3.1 Patents – short-term monopoly on processes, machines, compositions
1.3.1.1 includes design patents and plant patents
1.3.1.2 must be something novel, unobvious, and be useful (actually works)
1.3.2 Copyright – protects “writings” of “authors”
1.3.2.1 includes motion pictures and sound recordings
1.3.3 Trade Secrets – formula to Coca Cola
1.3.4 Trademarks – word, logo or package design, or a combination
1.3.4.1 to identify the goods
1.3.4.2 to distinguish these goods from others
1.4 Trademarks and Identity
1.4.1 Initially linking the product with its source
1.4.2 Now also creating an association between the trademark with the attributes of the product
1.4.2.1 without mentioning the name of the company in words
1.4.2.2 without mentioning the product itself in images
1.4.3 the trademark signifies your goodwill or your good (business) name as your property
1.4.3.1 distinguish from information as property or the product as property
1.4.4 Trademark Infringement Defined
1.4.4.1 passing off someone else’s product as your own or vice versa
1.4.4.2 creating customer confusion as to the source of a product
1.4.4.3 dilution of established (famous) names or marks
1.4.4.3.1 the stronger the mark, the greater the reach of protection – Coca Cola diapers, etc.
1.5 Branding
1.5.1 Brand Identity & Family brands – what is corporate strategy
1.5.1.1 Kellogg’s cereals – each one is clearly a Kellogg’s product
1.5.1.2 Johnson and Johnson – each product is branded with company name
1.5.1.3 Proctor & Gamble – Tide is its own brand, you think Tide makes it, not P&G
1.5.1.3.1 helps insulate other product lines from problems
1.5.2 New Example – note Truvia sweetner uses white package
1.5.2.1 has green trim, supposed to make you equate it with “real” sugar
1.5.2.2 color has become functional regarding sweeteners: blue, pink, yellow
2 WHAT IS A TRADEMARK?
2.1 Subject Matter of Trademark Protection
2.1.1 Is it a Mark on the Good or the Good itself?
2.1.1.1 Kellogg v. National Biscuit Co
2.1.1.1.1 patented pillow-shape biscuit became known as “shredded wheat” as the good, not the mark
2.1.1.1.2 “shredded wheat” was used in the patent application
2.1.1.2 Junior Mints – do you know who makes them? do you care?
2.1.1.2.1 dual significance – it’s the mark, but also the product
2.1.1.2.1.1 started out as very descriptive, but developed secondary meaning
2.1.1.2.1.2 have to be careful that the mark does not become generic like cellophane
2.1.1.2.1.3 the company is the unidentified source
2.1.1.2.2 the mark is “Junior” not “junior mints”
2.1.1.2.2.1 they are making Junior caramels, and also making specialized candies for the holidays – all with the Junior mark
2.1.2 Word Marks: Coca-Cola v. Koke (intentionally named to sound like Coke)
2.1.3 Slogans: trademarked (Just Do It) unless too generic or informative (You’ve Got Mail)
2.1.4 Personal Names – generally not protectable, unless suggestive like the name of a toy
the competitor’s watch, just like the original
2.3.2.1.1 both were made in Waltham
2.3.2.2 people had come to see the word not just as the location, but the source – a particular company in that town
2.3.2.2.1 the second comer has got to avoid confusion, you can’t take the secondary meaning for your own
2.3.3 International Kennel Club of Chicago v. Mighty Star
2.3.3.1 one, do we have a distinctive mark
2.3.3.1.1 is it registerable? if yes, it’s protectible
2.3.3.1.2 is it suggestive or descriptive – consider that
2.3.3.1.2.1 the court said it was descriptive – you’d have to know what the IKC was
2.3.3.2 two, if descriptive, does it have secondary meaning
2.3.3.2.1 circumstantial evidence needed – advertising ($ and manner), volume of sales, length and manner of use
2.3.3.2.1.1 IKC brought no consumer surveys, must show how much you advertise, 5 factors total
2.3.3.2.2 also direct evidence of damage
2.3.3.3 consider some of these cases as pre-internet
2.3.4 Rock and Roll Hall of Fame
2.3.4.1 To claim trademark rights in a building as a mark
2.3.4.1.1 you have to have used the building as your mark
2.3.4.1.1.1 R&R Hall of Fame had not really used the building shape as its mark
2.3.4.1.1.2 VU Chapel has been used as a mark, might be possible ot protect it.
2.3.4.1.2 also need consistency in use of the mark
2.3.4.1.2.1 R&R used inconsistent images of the mark in trade, photographs, posters
2.3.4.2 the poster was considered a good, not a source identifier
2.3.4.2.1 the product of experience wasn’t clear
2.3.4.2.2 ask why, what do you intend to do with it
2.3.4.3 Notre Dame doesn’t trademark the dome
2.3.4.3.1 it’s so famous they would win if anyone tried to rip it off
2.3.5 Logos – a famous logo will become a good in itself
2.3.5.1 As a result of use, purchasers have come to perceive the mark as a designation of source
2.3.5.1.1 even if that source is anonymous (Junior Mints)
2.3.5.1.2 the mark now distinguishes the goods and services of one person from those of others
2.3.5.2 now you’re not going to allow a 3rd party to knock off the good
2.3.5.2.1 because that would also rip off your good will
3 OWNERSHIP AND USE
3.1 Ownership
3.1.1 Bell v. Streetwise (New Edition): the owner is he who controls the good in commerce
3.1.1.1 Both label and singers claimed ownership
