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Wayne State University Law School
Bambauer, Derek E.

Trademarks Outline

Section 1: Trademarks and Unfair Competition: Definition and Rationales for Protection. 1
I. Introduction. 1
Section 2: Obtaining Rights in a Mark. 2
II. Strength of a Mark: Distinctiveness, Descriptiveness, Secondary Meaning. 2
III. Ineligible Material: Generic Terms, Functionality, Copyright / Patent3
IV. Trade Dress, Product Packaging, Design. 4
V. Use Requirement5
VI. Federal Registration. 6
VII. State-Based and Common Law Claims. 7
Section 3: Infringement8
VIII. Consumer Confusion. 8
IX. Dilution. 9
X. Tarnishment / Blurring. 10
XI. False Designation of Origin. 11
XII. Cybersquatting / Internet Infringement11
XIII. Secondary Liability. 14
XIV. False Advertising / Counterfeiting / False Endorsement14
Section 4: Limitations, Defenses, and Loss of Rights. 16
XV. Geographic Limits 16
XVI. International Limits 19
XVII. Nominative & Fair Use, First Sale. 19
XVIII. First Amendment Limitations (Parody / Free Speech)21
XIX. Abandonment22
Section 5: Practical Matters: Remedies, Assignments. 23
XX. Remedies. 23
XXI. Assignments & Licensing. 24

Section 1: Trademarks and Unfair Competition: Definition and Rationales for Protection

I. Introduction
a. Trademark (15 USC §1127 definition) – the term “trademark” includes any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the
principal register established by this chapter,
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.
b. Types of Marks
i. Trademark – examples: Nike, Polo symbol
ii. Service mark – example: Burger King logo (represents product and service)
iii. Certification mark – examples: AFL CIO, “Grown in Idaho”
c. Importance of Trademarks
i. Source identification
ii. Increasing importance of “brand”
iii. Monetization of “goodwill”
iv. Ability to leverage reputation into related or new product markets
d. Theoretical Approaches to Intellectual Property
i. Labor-desert Theory (John Locke)
1. IP rights – naturally flow from labor performed upon the commons of ideas and expression to produce new material
2. You should own whatever you’re responsible for making
3. This theory works only in an environment with unlimited resources. If colors were trademarked, they would run out.
4. A form of natural rights
5. This has strong resonance in TM and unfair competition law
6. Zipper problem – Limitation- Locke’s proviso (Robert Nozick):
a. Must have “still enough and as good left” for others after appropriating from commons.
b. Qualitex – concern over colors (Nozick’s “zipper problem”)
7. Allocation of value problem – Challenge: what share of value of new creation should go to the creator (limitations on IPR)
8. Lockean notion of fruits of labor
9. This is subject to the proviso that you can’t use so much that others sharing the commons can’t have enough
10. Nozick’s zipper problem also applies here
11. One problem is allocation of value
ii. Utilitarianism (Chicago School)
1. Used today for most of trademark law, IP incentivizes the good will, by preventing free riding
2. Justifies IP rights primarily on need to create incentives for production, and to overcome challenges of public goods
3. Incentivizes production and lowers production costs
4. Focuses on society overall and wants to maximize efficiency (as opposed to equity)
5. Looks at the well-being of society, wants to maximize the good of society. TM law is concerned w/distinguishing goods
6. Public goods (IP)
a. 1.Non rivalrous
b. 2. Non excludable
iii. Personality Theory
1. Doesn’t exists in American law, only in European laws
2. Romantic notion of genius inventor (Edison, Michaelangelo)
3. If you have a wedding ring or a teddy bear, it’s no longer viewed as an “other” but as an integral part of the person’s identity
4. Personality theory – Romantic ideal of genius inventor / artist so they need control/moral rights
5. Justifies protecting IP based upon connection between creator and creation
iv. Social Planning Theory
1. Vague concept that we should do whatever it takes to make an attractive society
2. This is a ‘hodge podge’ theory, concerned with how the law can foster a healthy culture
3. TMs are viewed to have a cultural meaning
4. Goal is to set in place rules that will drive production of an attractive culture
5. Focuses on status (label whores)

Section 2: Obtaining Rights in a Mark

II. Strength of

cer” (750 F.2d at 1301)
3. Zatarain’s – “words with an ordinary and primary meaning of their own ‘may by long use with a particular product, come to be known by the public as specifically designating that product’”
iv. How to interpret Abercrombie factors
1. Arbitrary – common word used in uncommon context
2. Fanciful – invented mark
3. Suggestive – suggests info about product/service, but requires imagination
4. Descriptive – directly conveys info about product service
5. Generic – describes basic nature of product/service
b. Suggestive Marks / Secondary Meaning
i. Evidence of Secondary Meaning
1. Direct
a. Consumer Testimony
b. Consumer Surveys
2. Circumstantial
a. Amount & Manner of Advertising
b. Volume of Sales
c. Length & Manner of Use
ii. Suggestive vs. Descriptive tests
1. Dictionary Test
2. Imagination Test
3. Competitive Need
4. Actual Competitive Use
iii. Issues to think about:
1. Customer testimony – are you really picking a typical customer?
2. Customer surveys – if you frame the question inappropriately this is worthless
3. Actual use by competitors – is it really free-riding or just the need for use of the term?
4. Intentional copying
5. TM decomposition – are you considering mark in its entirety or breaking it into pieces

III. Ineligible Material: Generic Terms, Functionality, Copyright / Patent
a. Generic terms in general
i. Generic refers to a “genus”
ii. Insufficiently distinctive for protection under Lanham Act or Common Law
iii. Inherently generic – denotes category/type of product
iv. Cannot be registered with the PTO
b. Genericide
i. Happens when distinctive term comes to represent general type of good/service
ii. Through use by public or by mark holder
iii. Can result in the cancellation of a registered mark! (see 15 USC §1064)
Burden of Proof