Copyrights & Trademarks Outline
I. Trademark Law
A. Introduction
1. Purpose of TM Law
i) To protect symbols that a company uses in connection with sales or goods of services.
2. 3 underlying policies
i) Prevent consumer confusion
ii) Encourage consistent level of quality of the sellers
iii) Discourage free-riding on goodwill of others
3. Claiming Infringement
i) Lanham Act – §32(1)
a) Any person who shall, without the consent of the registrant
1) (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive;…
ii) Prevailing with a claim
a) P’s must ultimately have to prove:
1) Ownership of a valid registered trademark; AND
2) That D’s TM use creates likelihood of confusion as to source of goods.
iii) Demonstrating a likelihood of confusion: (Omega)
a) Polaroid 8 Factor Test:
1) Strength of prior owner’s parks;
(i) Level of protection of the mark; AND
(a) 4 levels of TM protection:
(1) Generic;
(2) Descriptive;
(3) Suggestive; AND
(4) Fanciful or arbitrary
(b) Recognition of the mark in the marketplace as identifying the source of the goods or services.
2) Similarity of the marks;
(i) Marks being substantially identical
3) Proximity of the products’
(i) Competitive proximity
(a) Whether it is likely that customers mistakenly will assume either the junior user’s goods somehow are associated with the senior user or are made by the senior use.
(b) Heavy proximity will work in favor of the P
4) Bridging the gap
(i) Whether senior user of mark is likely to enter the market in which the junior user is operating.
(ii) Where the parties are selling substantially identical products, there is no gap to bridge.
5) Actual confusion
(i) Need not be shown
(ii) Very difficult to prove
(iii) Lanham Act requires only likelihood of confusion
6) D’s good faith
(i) Lack of evidence of good faith will weigh heavily in P’s favor.
7) Quality of D’s products
(i) Compared to P’s products
(ii) Existence of inferior infringing goods strengthens P’s interest in protecting its reputation from debasement, which is one of the major goals of TM laws.
8) Sophistication of buyers
B. Acquiring Trademark Rights
1. Signaling functionà communication btw manufacturer and consumer though use of marks
2. Distinctiveness of Marks
i) General rule:
a) An identifying mark is distinctive and capable or being protected if it either
1) Is inherently distinctive; OR
2) Has acquired distinctiveness through secondary meaning.
(i) Unregistered marks always need secondary meaning.
ii) Classification of Marks by Strength
a) Lanham Act §45
1) Requires that TM’s be capable of identifying and distinguishing the goods or services of the supplier who uses the mark from those manufactured or sold or provided by others.
b) Important Questionà is the mark capable of protection???
1) Is it protectable at all?
2) Is secondary meaning required?
(i) if no then dealing with inherently distinctive mark
c) Categories of TM Protection:
1) Generic
(i) Refers to genus or class of product rather than a particular product.
(ii) Can never function as a mark or be given TM protection.
(iii) Primary Significance Test:
(a) What do buyers understand by the word for whose use the parties are contending?
(b) Term is generic when a majority of the buying public associates the term with a product, rather than the source of the product, whether the source is known or unknown.
(iv) Unprotectable situations:
(a) Where a seller appropriates an existing generic term and claims exclusive rights in it as “trademark.”
(1) Challenger needs only to establish that term is generic through an examination of tem itself.
(b) Where a seller established TM rights in a term which the majority of the relevant public then appropriates the name as a name of a product.
(1) TM’s owner failed to police the mark, resulting in widespread usage by competitors;
(2) Public’s inability to call the product by any other name than the trademarked term.
(v) Showing common usage:
(a) Proof of widespread usage by competitors that has not been contested by the seller.
(b) G
ct and its overall appearance
1) The design and appearance of a product together with the elements making up the overall image that serves to identify the product presented to the consumer.
2) Not limited to goods
c) Product design or design of packaging of product
1) Can include features such as size, shape, color or color combinations, textures, graphics, or even particular sales techniques. (Two Pesos v. Taco Cabana)
d) Not limited to goods
e) Distinctiveness of Trade Dress
1) General rule:
(i) An identifying mark is distinctive and capable or being protected if it either
(a) Is inherently distinctive; OR
(b) Has acquired distinctiveness through secondary meaning.
2) No secondary meaning required for inherently distinctive trade dress protection. (Taco Cabana)
(i) If §43(a) doesn’t require secondary meaning at the outset of a business’ adoption of trade dress, there is no basis in the statute that such a requirement come into being after some unspecified time.
3) Courts will often determine whether TD is:
(i) Inherently distinctive;
(ii) Capable of becoming distinctive with secondary meaning; OR
(iii) Inherently incapable of becoming distinctive with secondary meaning.
f) Product Design
1) Product designs cannot be inherently distinctive. (Wal-Mart)
(i) Because intrinsic nature does not serve to identify a particular source.
2) Can be protectable upon showing of secondary meaning.
g) Trade Dress or Product Design??
1) Walmart court emphasized the necessity of requiring proof of secondary meaning whenever the purchase implicates a utilitarian or aesthetic purpose, rather than a source-identifying function.
2) Courts should err on the side of cause and classify ambiguous trade dress as product design.
