TrademarkTrademark n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product.

word, phrase, logo

used by a manufacturer

to distinguish a product

Trademark must be Distinctive

Trademark must be Used in Commerce

Example:Example: VS.VS.

Trademark StatutoryTrademark StatutoryEvolutionEvolution

Federal Trademark Registration Act (1870)

Trademark Protection Act (19 Stat. 141) (1876)

Interstate Commerce Registration Act (33 Stat. 724) (1905)

U.S. SUPREME COURTS OVERTURNSRE: Trade Mark Cases 100 U.S. 82 (1879)

The Lanham Act (15 U.S.C. The Lanham Act (15 U.S.C. § 1051 et. seq.§ 1051 et. seq.) (1947)) (1947)

No Substantive RightsVery Limited Scope

THE LAW TODAY…

Comparison with Other I.P.

Copyright Patent Trademark

SubjectMatter

Creative works(books, music, movies,software, etc.)

Innovation(inventions, processes,methods, etc.)

Product identifiers(names, logos,slogans, etc.)

Length ofProtection

Life + 70 years 20 years from filing As long as used

Requirementsfor Protection

Originality andfixation

Novelty, nonobvious-ness, utility; pre-approval process

Distinctive-ness, use incommerce

Scope No copying, publicperformance, publicdisplay, derivativeworks

No use, sale, creation,manufacture;independent discoverynot a defense

No likelihood ofconfusion, dilutionof famous marks

Purposes of TrademarkPurposes of Trademark

Lower Product Search Costs

Promotes Product Consistency

Distinguish Products from Multiple Sources

Prevents Free-Riding

Regulates Competition

PROMOTE FAIR EFFICIENT COMMERCE…PROMOTE FAIR EFFICIENT COMMERCE…

Types of MarksTypes of Marks

TrademarkTrademark Lanham Act Lanham Act § 4§ 455

Service MarkService Mark Lanham Act Lanham Act § 3§ 3

Collective MarkCollective Mark Lanham Act Lanham Act § 4§ 4

Certification MarkCertification Mark Lanham Act Lanham Act § 4§ 4

n. A name, phrase, or other device used to identify and distinguish the services of a certain provider.

n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product.

n. A word, symbol, or device used on goods or services to certify the place of origin, quality, or other characteristic.

n. A trademark or servicemark used by an association, union, or other group either to identify the group’s products or services or to signify membership in the group.

n. A name, phrase, or other device used to identify and distinguish the services of a certain provider.

n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product.

n. A word, symbol, or device used on goods or services to certify the place of origin, quality, or other characteristic.

n. A trademark or servicemark used by an association, union, or other group either to identify the group’s products or services or to signify membership in the group.

GOODSGOODS

SERVICESSERVICES

ORGANIZATIONSORGANIZATIONS

UL®QUALITYQUALITY

Service Marks

• Lanham Act § 3 (15 U.S.C. § 1053)– Subject to the provisions relating to the registration of

trademarks, so far as they are applicable, service marks shall be registrable, in the same manner and with the same effect as are trademarks, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks.

Collective Marks

• Lanham Act § 45 (15 U.S.C. § 1125)– Collective Mark. The

term “collective mark” means a trademark or service mark -

• (1) used by the members of a cooperative, an association, or other collective group or organization ….

Certification Marks

• Lanham Act § 45 (15 U.S.C. § 1125)– Certification Mark. The term “certification

mark” means any word, name, symbol, or device ... -

• (1) used by a person other than its owner, …

– to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services ...

Champagne

Categories of Marks

Less Protection More Protection

GenericDenotes generalclass of products

Unprotectible

Shredded Wheat,Aspirin, Thermos,Cellophane, Car,

Computer

Arbitrary orFanciful

Bears no relationto product;

AutomaticallyProtectible

DescriptiveDescribes some

characteristic/quality

Protectible ifsecondary meaning

SuggestiveSuggests somecharacteristic

AutomaticallyProtectible

Categorizations

Trademark

• 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)

Category

• Descriptive

• Suggestive

• Descriptive

• Descriptive

• Descriptive

• Arbitrary

• Suggestive

• Suggestive

• Suggestive

• Descriptive

Descriptive Marks

• Lanham Act § 2 (15 U.S.C. § 1052)– No trademark … shall be refused registration …

unless it - . . .• (e) Consists of a mark which, (1) when used on or in

connection with the goods of the applicant is merely descriptive … of them ….

• (f) Except as expressly excluded … nothing herein shall prevent the registration of a mark … which has become distinctive of the applicant’s goods in commerce.

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

Secondary MeaningSecondary Meaning

Marketing

What does consumer think?

Surveys-------------------------------

A:

• Limited to regional marketplace (e.g. season/time/place)

Courts may be loathe to allow extensive broadening of trademark and limit the scope

Courts impose controls on secondary meaning:

SOSO……

BUTBUTSurveys have limited accuracySurveys have limited accuracy

Surveys can be biasedSurveys can be biased&&

How do we prove/disprove the existence of secondary meaningQ: ?

Secondary Meaning

Time

0%

50%

Consumerswho Assoc.

Achieved Secondary Meaning

StartUse No

Protection

Descriptive MarksDescriptive MarksZatarains, Inc. v. Oak Grove Smokehouse, Inc.,

698 F2d 786 (5th Cir. 1983)

Plaintiff Defendant

Holding:

• Term “Fish-Fry” is descriptive in nature, BUT have acquired secondary meaning

• Defendant has right to use terms under “Fair Use” Doctrine as descriptive terms;

Oak Grove Dist.

Such uses are privileged because they use the terms only in their purely descriptive sense.

Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267 (2nd Cir. 1995)

Court applies Fair Use Doctrine:Public’s right to use descriptive words or images in good faith in

their ordinary descriptive sense prevails over exclusivity claims of trademark owner

Plaintiff Defendant

Descriptive MarksDescriptive Marks

• Johnson entitled to use pine-tree shape descriptively, despite Car-Freshner’s mark

Holding:

• Issue is whether the protected word or image (here “pine tree” shape) is used descriptively or as a mark

• Defendant has right to “Fair Use” Defense in use of descriptive terms that plaintiff uses as suggestive

Generic MarksGeneric MarksGenessee Brewing Company, Inc. v. Stroh Brewing Co.,

124 F.3d 137 (2nd Cir. 1997)

Court applies the Canfield Test:

• Nature of product renders “Honey Brown” generic (for ales) rather than descriptive

Holding:

• Issue is whether the protected word or image is used descriptively or as a mark

• Defendant can escape “unfair competition” claim if it exercised reasonable means to prevent confusion

Whether term that identifies a product is generic depends on the competitor’s need to use that term– if not commonly used

alternative conveys same functional information, the term is generic (afforded no protection).

Personal Names as MarksPersonal Names as MarksIn 1914, Supreme Court Justice Oliver Wendall Holmes wrote in the "Waterman Pen" case that while everyone had a right to use their own name, the junior user must to take precautions in the manner of use so as not to cause confusion with the senior user's mark. L.E. Waterman Company. v. Modern Pen Company., 235 U.S. 88, 59 L. Ed. 142 (1914).

Personal Names as MarksPersonal Names as MarksThus, we have seen people ordered not to utilize their names in a certain manner so as to avoid confusion with a prior right. Sullivan v. Ed Sullivan Radio & T.V., Inc., 152 N.Y.S. 2d 227, 110 USPQ 106 (1st Dept 1956) ( Defendant ordered to change name of business for ED SULLIVAN to E.J. SULLIVAN); E. & J. Gallo Winery v. Gallo Cattle Co., 12 USPQ2d 1657 (ED Cal. 1989) (Joseph Gallo not permitted to use GALLO as trademark, non-trademark use of name limited); Lyon v. Lyon, et. al. 246 Cal App 2d 519, 152 USPQ 719 /(2d Dist 1966) (partner named Lyon left the law firm of LYON & LYON, enjoined from using LYON as the name of his new firm).

Section 2(e)(2) of the Lanham Act provides: No trade-mark ... shall be refused registration on the principal register on account of its nature unless it—

(e) Consists of a mark which, ...

(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them....

11 15 U.S.C. Sec. 1052(e)(2) (1988).

Geographic MarksGeographic Marks

Section 2(e)(2) thus bars the registration of a trademark on the principal register if the mark is either "primarily geographically descriptive," or "primarily geographically deceptively misdescriptive."

Geographic MarksGeographic MarksIn Re: Nantucket, 677 F.3d 95 (C.C.P.A. 1982)

Holding:

• A geographical term applied to products may be geographically misdescriptive without being deceptive

• Court relies of perceptions of typical consumer and their expectation vis a vis the origin of clothing marked with “Nantucket”

Record devoid of any indication of consumer confusion

Under Lanham Act, such a usage may be permitted protection as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness

Geographic Marks

• Case law shows numerous instances where the goods/place association is not the "primary" meaning a mark connotes. 10 USPQ2d at 1956. For example, a geographic mark may indicate that a product is stylish or of high quality, i.e., HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a car.

• The use of the geographic location may be arbitrary or fanciful, i.e., DUTCH BOY for paint.

Trade Dress & Product Design

Trade Dress Product Design

Two Pesos v. Taco Cabana505 U.S. 763 (1992)

Taco Cabana Trade Dress

Two Pesos v. Taco Cabana505 U.S. 763 (1992)

• Findings of the District Court– Taco Cabana has an identifiable trade dress– The trade dress is non-functional– The trade dress is inherently distinctive– The trade dress has not acquired secondary

meaning

Functionality

• Lanham Act § 2(e)(5)– No trademark … shall be refused registration …

unless it --• (e) Consists of a mark which, … (5) comprises any

matter that, as a whole, is functional

Functionality

• When is something “functional”?– Essential to the use or purpose of the article– Affects the cost or quality of the product– Exclusive use of the feature would put competitors

at a significant non-reputation-related disadvantage

In Re Morton-Horwich671 F.2d 1332 (C.C.P.A. 1982)

“Superior in function or economyof manufacture, which superiorityis determined in light of competitive necessity to copy”

Evidence of functionality• Existence of utility patents• Advertising touting utility• Existence of alternatives• Cost to manufacture

Policy Considerations

Functionality

Functional Non-Functional

Low

HighPotential forConfusion

Harm toCompetition

No Protection

Example