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									              Trademark Law

 Oct. 9, 2006
 Week 6
     Finish Chapter 4 – Registration
     Start Chapter 5 - Loss of Trademark Rights
       Read Pgs. 312-345, 353-363, 368-378; skim
        sample documents 379-389




                     Trademark Law                  1
Review - Advantages of Registration
 Nationwide protection from the date of the
    application
   Prevents senior users in limited geography
    from expanding their territory
   Incontestability if used for 5 yrs (and
    paperwork filed with USPTO)
   Stop infringing goods at the dock
   Mark is presumed valid during litigation
   Get to use that really cool ® symbol
   Enhanced Damages (discussed later)

                     Trademark Law               2
Review - Bars to Registration

 15 USC § 1052(a) - No mark shall be refused
  registration… unless
      it is immoral, deceptive, or scandalous matter; or
      [it is] matter which may disparage or falsely suggest a
       connection with persons, living or dead, institutions,
       beliefs, or national symbols, or bring them into contempt,
       or disrepute; or a geographical indication which, when
       used on or in connection with wines or spirits, identifies a
       place other than the origin of the goods and is first used
       on or in connection with wines or spirits by the applicant
       on or after one year after [Jan. 1, 1995]



                          Trademark Law                          3
Review - Bars to Registration

 Refusal based on 15 USC § 1052(a)
     immoral, deceptive, or scandalous matter;
      or
     matter which may disparage …




                    Trademark Law                 4
Review - Bars to Registration

 Refusal based on 15 USC § 1052(b) – flags or
  coat of arms or insignia of the US, any State
  or muni, or any foreign nation, or any
  simulation thereof

 Refusal based on 15 USC § 1052(c ) – Names,
  portrait or signatures (live people or dead
  presidents [while the widow still lives])


                    Trademark Law                 5
Review - Bars to Registration

 Refusal based on 15 USC § 1052(d)
     resembles a mark (registered or not) that
      the applied for mark would likely to cause
      confusion with as used or as intended to be
      used




                    Trademark Law              6
Review - Bars to Registration

 15 USC § 1052(e) - Cannot register a mark which
       (1) when used on or in connection with the goods of the applicant is
        merely descriptive or deceptively misdescriptive of them
       (2) when used on or in connection with the goods of the applicant is
        primarily geographically descriptive of them, except as indications of
        regional origin may be registerable under section 4 [15 USC §1054]
       (3) when used on or in connection with the goods of the applicant is
        primarily geographically deceptively misdescriptive of them,
       (4) is primarily merely a surname, or
       (5) comprises any matter that, as a whole, is functional.

 15 USC §1052(f) - except for §1052(a), (b), (c), (d), (e)(3) and
   (e)(5)... all of the other rejections may be overcome by proving
   the mark has become distinctive (a.k.a. acquired secondary
   meaning) to the examiner.



                                Trademark Law                              7
Review - Bars to Registration

 15 USC § 1052(e) - Cannot register a mark which
      (1) when used on or in connection with the
       goods of the applicant is merely descriptive
       or deceptively misdescriptive of them

      Must acquire 2nd meaning for mark to be
       protectable; See §1052(f)




                      Trademark Law                 8
Review - The Budge Test

     Compare and contrast…
     15 USC § 1052(a) – bars deceptive terms –
      complete bar (not even 2nd meaning will allow
      registration
     15 USC § 1052(e)(1) – bars merely descriptive
      terms or deceptively misdescriptive terms – (but
      2nd meaning will allow registration)

     How to tell the difference? 3-step test on p. 253



                       Trademark Law                      9
Review - Registration of Marks

 15 USC § 1052(e) - Cannot register a mark
  which
      (2) when used on or in connection with the goods
       of the applicant is primarily geographically
       descriptive of them, except as indications of
       regional origin may be registerable under section 4
       [15 USC §1054]

      Must acquire 2nd meaning for mark to be
       protectable; See §1052(f)


                        Trademark Law                   10
Review - Registration of Marks

 15 USC § 1052(e) - Cannot register a mark which
      (3) when used on or in connection with the
       goods of the applicant is primarily
       geographically deceptively misdescriptive of
       them

      2nd meaning won’t help; See §1052(f)




                      Trademark Law                 11
Review - Registration of Marks

 15 USC § 1052(e) - Cannot register a mark which
      (4) is primarily merely a surname

         Rule: is the "primary significance of the mark to the purchasing
          public" as that of a surname?
               Factors
                   (i) the degree of surname rareness;
                   (ii) whether anyone connected with applicant has the surname;

                   (iii) whether the term has any recognized meaning other than
                     that of a surname; and
                   (iv) the structure and pronunciation or “look and sound” of the
                     surname.


      Must acquire 2nd meaning for mark to be protectable; See
       §1052(f)



                                 Trademark Law                                 12
Review - Registration of Marks

 15 USC § 1052(e) - Cannot register a mark which
      (5) comprises any matter that, as a whole, is functional.
             “in general terms, a product feature is functional if it
              is essential to the use or purpose of the article or if it
              affects the cost or quality of the article.” Qualitex v.
              Jacobson (US S. Ct. 1995) [286]


      2nd meaning won’t help. See §1052(f)

      Compare and accord this w/ patent law




                              Trademark Law                           13
Review - Some Notable Merely Descriptive Marks

      Numbers, letters, model numbers
        General rule: Not distinctive – not registerable
        How to protect these marks?
             Acquire 2nd meaning


      A grade or style designation may be
       distinctive, IF it also primarily designates
       the source of the good.
        If not… how to protect these marks?
             Acquire 2nd meaning


                           Trademark Law                    14
Loss of Trademark Rights

 Genericism (a verb)
 A word is generic if…? (see your notes)
 Bayer Co. v. United Drug Co. (SDNY 1921)
  [312] (Judge Learned Hand )
      The “relevant consumer” gets to “decide” what
       they will call a product; if a word is the name of
       the thing, or an identifier of source.
      Must educate the customer, competitors, even
       employees
      Purpose of the genericism doctrine is to permit
       competitor to call their competing goods by their
       commonly-known name
                         Trademark Law                      15
Loss of Trademark Rights

 Implementing the Standard: Survey Evidence
      King-Seeley Thermos Co. v. Aladdin Industries –
       The thermos case
        Aladdin contended “A generic descriptive word in the
         English language … as a synonym for vacuum insulated
         container”
       “… despite its efforts to protect the trademark, the public
         has virtually expropriated it as its own. The word having
         become part of the public domain, it would be unfair to
         unduly restrict the right of a competitor of King-Seeley to
         use the word.”



                           Trademark Law                          16
Loss of Trademark Rights

 Implementing the Standard: Survey
  Evidence
     DuPont
       Ask the right questions!
            Don’t ask - whether the principal significance of the
             name supplied was its indication of the nature or class
             of an article
            Do ask - whether the principal significance of the
             name supplied was an indication of its origin.




                           Trademark Law                         17
Loss of Trademark Rights

 Genericism and 2nd meaning
      defacto secondary meaning – when the public
       associates the generic term with a single source.
        E.g., LITE for beer; Miller’s ads “give me a LITE”
        Still not a mark despite the acquired secondary meaning.
      AOL v. AT&T
        You’ve got mail – consistently w/ that phrase’s common
         meaning
        Allowing TM rights would stop others from using it




                           Trademark Law                       18
Loss of Trademark Rights

 Abandonment
     15 USC § 1127 [Lanham Act §45] (N.B. error in
      text)
  Abandonment of mark. A mark shall be deemed to be
  "abandoned" when either of the following occurs:
      (1)When its use has been discontinued with intent not to resume
      such use. Intent not to resume may be inferred from
      circumstances. Nonuse for three consecutive years shall be prima
      facie evidence of abandonment. "Use" of a mark means the bona
      fide use of that mark made in the ordinary course of trade, and
      not made merely to reserve a right in a mark.
      (2) [the owners conduct causes the mark to become generic]



                           Trademark Law                           19
Loss of Trademark Rights

 Silverman v. CBS,
   Inc. (2nd Cir.
   1989) [356]




                    Trademark Law   20
Loss of Trademark Rights

 Abandonment
 Silverman v. CBS, Inc. (2nd Cir. 1989)
   [356]
     What’s the meaning of intent not to
      resume?
     What were some of CBS’s “minor
      activities” that it asserted kept its mark
      alive?


                    Trademark Law                  21
Loss of Trademark Rights

 Assignment in Gross
 Clark & Freeman v. Heartland (SDNY
   1993) [368]




                 Trademark Law         22
Loss of Trademark Rights

 Assignment in Gross
     An assignment "in gross" is an assignment without
      the goodwill of the mark
     What is goodwill?




                     Trademark Law                 23
Loss of Trademark Rights

 Naked Licensing - agreements to allow
   use of the name without adequate
   supervision and quality control
     15 USC § 1127 [Lanham Act §45] (N.B. error in
      text)
   Abandonment of mark. A mark shall be deemed to be
   "abandoned" when either of the following occurs:
  (2) [the owners conduct causes the mark to become generic]




                           Trademark Law                       24
Loss of Trademark Rights

 Failure to Police the Mark
     Policy for requiring mark owners to policy
      their mark – if there are numerous
      products in the marketplace bearing the
      alleged mark, purchasers may learn to
      ignore the mark as a source indication…
      [this] causes the mark to lose its
      significance as a mark


                   Trademark Law              25
Loss of Trademark Right

 Failure to Police the mark




                 Trademark Law   26
Loss of Trademark Right

 Failure to Police the mark
     What about a mark owner’s agreement to
      allow an infringer to sell-off the remaining
      goods
     See Exxon Corp. [376]




                     Trademark Law               27
Next Week

 Chapter 6 – Infringement
     You’ve finished the bread and salad – now
      it time for the meat and potatoes…
     Read:
       AMF Inc. vs. Sleekcraft Boats (N.B. Read this
        case carefully!)
       Pgs. 395-400, 407-421, skim Playboy vs.
        Netscape on pgs. 421-423, read Playboy vs.
        Netscape (starts on suppl. pg. 80), pgs. 424-429


                       Trademark Law                    28

								
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