Trademark Law
What is a trademark?
Aug. 28, 2006
Week 2
Reading:
Pgs. 83-108
Pgs. 108-133;
Fall - 2006 Trademark Law 1
Review - Trademarks
Unfair Competition
Old / ancient unfair comp.
Modern times – courts adopt unfair comp.
“Defendant in appropriating it and selling it
as its own is endeavoring to reap where it
has not sown” INS vs. AP [pg 32]
Fall - 2006 Trademark Law 2
Review - Overview of IP
Mixture of Statutes and
common law
Three main areas of IP are
Patent
Trademark, and
Copyright.
IP rights are negative rights - not
a right to do something, but the
right to stop someone else from
doing something.
Fall - 2006 Trademark Law 3
Review - Legal Scheme
Patents and Copyrights – Federal
(preemption)
Trademark and unfair Comp – Fed and
State
Question: What are the types of pre-
emption?
Fall - 2006 Trademark Law 4
Review - Trademarks
Subject matter
Any word, name, symbol, or device, or any
combination thereof
used, or intended to be used, in commerce
to distinguish the trademark owner's goods,
from those of another
Lanham act protects both Registered vs.
Unregistered marks
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Statutory Definition
15 U.S.C. §1127 reads:
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.
Fall - 2006 Trademark Law 6
What makes a Trademark protectable?
A Designator
Used in Commerce
To Distinguish the mark owner‟s
goods/services from those goods/services of
another
A trademarks is a designator [word symbol,
device, etc.] used in commerce, to identify
and distinguish the mark owner‟s goods from
the goods of another
Fall - 2006 Trademark Law 7
Chapter 2 – What is a TM?
Subject Matter
Must be Distinctive
Ability, as used or proposed use, to distinguish
owner’s goods from the goods of another.
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Trademarks Must be...
Subject Matter
Must be Distinctive
Non-Functional
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Generic words and phrases
Generic words and phrases are
not capable of distinguishing
If I point to a store shelf full of
hammers and say „give me the
brand hammer hammer – would
you know which hammer I
meant?
Kellogg Co. v. National Biscuit
Co. [84]
Word mark for Shredded wheat
Generic
Secondary meaning
N.B. – if its generic its not a
mark!
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Non-Functional
Kellogg Co. v.
National Biscuit Co.
[84]
Exclusive Right to
sell pillow-shaped
Shredded wheat
The pillow-shape
had function (recall
patent)
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Secondary Meaning
Coca-cola Co. v. Koke Co. Of America [89]
Coca – short for cocaine
Cola – a drink
Together – a drink containing cocaine?
Secondary meaning
“Coca-Cola' probably means to most persons the plaintiff's
familiar product to be had everywhere rather than a compound
of particular substances. . . .[I]t has acquired a secondary
meaning in which perhaps the product is more emphasized than
the producer but to which the producer is entitled.”
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Slogans and Names
Slogans
Protected as long as they are distinctive
Special issue with descriptive slogan
If merely descriptive – must acquire secondary
meaning through use
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Surnames Names
Old rule – “sacred” right doctrine
allowed use of own name
Unless bad faith or fraudulent intent to deceive
New rule
Emphasizes public‟s right to be free from
confusion (more then the person‟s right to use
their own name)
More limited relief most often fixes problem,
however
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Trade Dress
Qualitex co. v. Jacobson Prod. [96]
Can color (alone) be a mark?
Answer: yes; when its acquired 2nd
meaning
Note split among Cirs.
Language of Statute: on pg 97.
N.B. interplay with functionality; when is a
product feature is functional?
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Distinctiveness
For a mark to be protectable it must be
distinctive
Courts and the TM office must determine
if a mark is protectable
that is - among other things - they must
determine if a mark is distinctive
must have must a method/test that is
repeatable to determine if a mark is
distinctive
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Types of distinctiveness
Some marks are more capable than
others of distinguishing the mark owner’s
goods from the goods of another
Very subjective and difficult to fashion a
legal test
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Types of distinctiveness
Distinctiveness Scale
>
Fall - 2006 Trademark Law 18
Types of distinctiveness
Non-distinctive
The term is incapable of distinguishing the
mark owner’s goods from the goods of
another
For the term’s particular field
N.B. If the word, symbol, color, etc. can’t
distinguish… its NOT a mark. It’s just a word, just a
phrase, just a symbol, etc. So… don’t call words
that are not distinctive “marks.”
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Types of distinctiveness
Inherently distinctive
The term is capable of distinguishing the
mark owner’s goods from the goods of
another
Inherent - involved in the essential character
of something; intrinsic
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Types of distinctiveness
May be distinctive
not inherently distinctive
but can acquire distinctiveness over time and with
use
mark has acquired the ability to distinguish the goods of the
mark owner...
A.k.a. acquiring secondary meaning
mark was first used as a word that had a particular meaning;
over time and with use acquired a second meaning in the
minds of consumers - that is to identify the goods of the mark
owner.
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Classification of Marks
Distinctiveness Scale
>
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Classification of Marks
Generic
not distinctive - not protectable for their
particular field
What the word, symbol, etc, is not a mark
Examples:
First Aid – for bandages and itesm which make
up a first aid kit
The Pill – for birth control oral contraceptive
Fall - 2006 Trademark Law 23
Classification of Marks
Distinctiveness Scale
>
Generic
Fall - 2006 Trademark Law 24
Classification of Marks
Descriptive
maybe distinctive - maybe protectable
Mark that describes goods or services
Examples:
PM for night-time sleep aid
5-minute for glue that cures in 5 mins
N.B. Descriptive can relate either to the quality or nature of the
product, to its geographical source, or to the surname of the
person or corporation that makes or sells the goods
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Classification of Marks
Distinctiveness Scale
>>
generic descriptive
Fall - 2006 Trademark Law 26
Classification of Marks
Suggestive
distinctive - protectable
mark that suggests what goods/services
are
Examples:
Playboy –magazines for adults
Citibank – for urban bank
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Classification of Marks
Distinctiveness Scale
>>
generic descriptive suggestive
Fall - 2006 Trademark Law 28
Classification of Marks
Arbitrary
distinctive - protectable
no connection between mark and goods or
services
Examples:
Apple – for computers
Mustang for motels
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Classification of Marks
Distinctiveness Scale
>>
generic descriptive suggestive, arbitrary
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Classification of Marks
Fanciful
distinctive - protectable
marks that are made up terms – make no
sense until used to identify goods or
services
Examples:
Kodak - for photography supplies
Xerox –for coping machines
Fall - 2006 Trademark Law 31
Classification of Marks
Distinctiveness Scale
>>
generic descriptive suggestive, arbitrary, and fanciful
Fall - 2006 Trademark Law 32
More about Descriptive Marks
Descriptive
Descriptive marks maybe distinctive, and
therefore maybe protectable.
Descriptive marks describe the goods or services
Q. How does a mark that‟s merely descriptive become
protectable?
A. It acquires secondary meaning
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Secondary Meaning
What is Secondary Meaning
2nd meaning denotes an association in
the mind of the consumer between
[the mark] and a particular producer
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Infringement (preview)
International Kennel Club of Chicago,
Inc. v. Mighty Star, Inc. [118]
IKC wants an injunction – but to get an injunction
it must show:
Likely to win on the merits and irreparable harm
To win on the merits must show it has a protectable mark
and there‟s a likelihood of confusion
To show it has a protectable mark must show secondary
meaning (since mark is classified as descriptive)
To show secondary meaning…
Fall - 2006 Trademark Law 35
Proving Secondary Meaning
Ways to evidence
2nd meaning:
Amount and manner
of advertising
consumer surveys
Length and manner
of use
evidence of actual
confusion
and other evidence.
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Next Week
Labor Day… take the day off!
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Week after that (Sept 13)
Chapter 3 - What is a Trademark?
Reading:
Pgs. 134-162
Fall - 2006 Trademark Law 38