Intro to Trademark Law Intro to IP

Intro to Trademark Law Intro to IP – Prof. Merges 3. 9. 10

Comparing Trademark to Patent & Copyright Law • Constitutional Foundation – Patent & Copyright clause – Commerce clause (see The Trademark Cases, 100 US 82 (1879) • Basic Goal – Pat. & ©: Protect author/inventor; promote progress – TM: Protect consumers

Quality assurance in an urban (anonymous) exchange environment

Consumer Protection Rationale • Fraud cause of action on the part of consumers concentrated and located in the hands of a seller – the trademark “owner” • This indirectly encourages expenditures to increase the quality of the TM owner’s goods

EARLY HISTORY common law palming off Trade-mark Cases: striking down Act guild system first use of trademarks // 1 st Federal Act based on IP Clause early 19 th century medieval ancient times 1870 1879 Foreign commercebased Act 1881

MODERN HISTORY Lanham Act Trade Dress § 43(a) Trademark Act interstate commerce 1905 Federal Anti. Dilution Act Revisions intent to use 1947 1988 1996

EXPANDING PROTECTION Scope: Marks Threshold: Actual Use Trade Dress Intent to Use

EXPANDING RATIONALE FOR TM TORT Avoiding Consumer Confusion and Reducing Consumers’ Search Costs Encouraging Investment in Advertising and Good Will Property Interests in Image: Image as a Marketable Commodity PROPERTY

GUIDING PRINCIPLE CUSTOMER PERCEPTION as a test of: • VALIDITY • INFRINGEMENT

Sources of Trademark Protection FEDERAL LAW • Federal Registration • False Designations of Origin and False Descriptions § 43(a) STATE LAW • Statutory Protection • Common Law

Subject Matter • Trademark: “word, name, symbol, or device, or any combination thereof” • Service Mark Hyatt - hotel services • Certification Mark Good Housekeeping • Collective Mark SFA (Snack Food Assoc) • Slogan “Greatest Show on Earth” Fragrance Sound • Trade Dress and Product Configuration • Trade Name - state (not fedl) protection

Qualitex v. Jacobson • Facts • Holding

Four objections to TMs for color • Breyer’s response: none of them hold up • Color can serve the source-identifying function of a trademark

“Big Blue”

Dry Cleaning Press

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 …, 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.

Hierarchy of distinctiveness • Arbitrary: Exxon; Google • Fanciful: Apple Computer • Suggestive: “Coppertone” suntan lotion • Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

Generic Marks • Words that have ceased to serve as trademarks • Identified with category or type of product, rather than one company or source: Aspirin; Jello; Kleenex/Xerox?

Qualitex • Functionality doctrine – Shredded Wheat case – Product feature vs. “source indicator” – What role does the product attribute play?

Color and Functionality • Red emergency signs?

Zatarain’s v. Oak Grove Smokehouse Formerly “Chick-Fri”

Zatarain’s • Generic marks: defense • Statute: section 14, 15 USC 1064(c)

Hierarchy of distinctiveness • Arbitrary: Exxon; Google • Fanciful: Apple Computer • Suggestive: “Coppertone” suntan lotion • Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

Generic Marks • Words that do not serve as trademarks • Identified with category or type of product, rather than one company or source: Aspirin; Jello; Cellophane; Thermos; Kleenex/Xerox?

Marks “born generic” • A category of “descriptive” marks under section 2 • Refused registration under Lanham Act sec. 2(e): “Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive. . . ”, 15 USC 1052(e)

Genericide • The mark is originally distinctive, and protectable; but becomes over time generic • A trademark that is “too successful” -- ?

Cancellation: 15 USC 1064 A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed. . . (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered. .

“Judicial cancellation” • Court-agency interaction • Judicial review of the trademark register

Hierarchy of distinctiveness • Arbitrary: Exxon; Google • Fanciful: Apple Computer • Suggestive: “Coppertone” suntan lotion • Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

Hierarchy of distinctiveness • Arbitrary: Exxon; Google • Fanciful: Apple Computer • Suggestive: “Coppertone” suntan lotion • Descriptive: Quick-Dri Hairdryers; Speedo bathing suits • Generic

• A&F Inherently Distinctive • Sugg. • Des. Requires proof of “secondary meaning” • Generic No trademark protection

Categorizations Trademark Category • • • • • TENDER VITTLES (cat food) ROACH MOTEL (roach trap) CHAP STICK (lip balm) VISION CENTER (optical store) BEER NUTS (snack food) FAB (laundry detergent) BOLD (laundry detergent) STRONGHOLD (nails) CITIBANK (banking services) NUTRASWEET (sweetner) Descriptive Suggestive Descriptive Arbitrary Suggestive Descriptive

Categories of Marks Less Protection More Protection Generic Descriptive Suggestive Arbitrary Denotes general Describes some Suggests some Bears no relation class of products characteristic/quality characteristic to product Unprotectible Protectible if Automatically secondary meaning Protectible Shredded Wheat, Aspirin, Thermos, Cellophane, Car, Computer Automatically Protectible

Sec. 1052 (Lanham Act sec. 2). Trademarks Registrable on Principal Register; Concurrent Registration No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it — (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them. .

Statutory basis: registration of descriptive marks Except as expressly excluded in paragraphs. . . of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. -- Lanham Act sec. 2 f, 15 USC 1052(f)

Secondary Meaning • Definition: primary significance of the term in the minds of the consuming public is not the product but the producer • Factors – – – Consumer surveys Amount and volume of advertising Volume of sales Length and manner of use Direct consumer testimony

• In one survey, telephone interviewers questioned 100 women in the New Orleans area who fry fish or other seafood three or more times per month. Of the women surveyed, twenty-three percent specified Zatarain’s ‘‘Fish-Fri’’ as a product they ‘‘would buy at the grocery to use as a coating’’ or a ‘‘product on the market that is especially made for frying fish. ’’ In a similar survey conducted in person at a New Orleans area mall, twenty-eight of the 100 respondents answered ‘‘Zatarain’s ‘Fish-Fri’’’ to the same questions.