TrademarkBy: Dasmine Reddish

Road Map Origins of Trademark Characteristics of Trademarks Goals of Trademarks Sources Law of Trademarks Successful attempts at federalization Requirement of Trademark Protection Distinctiveness Secondary Meaning of Trademark Nonfunctionality

Origins Of Trademark Marks or symbols have been

found on ancient artifacts discovered in the Mid and Far East

Trademarks were used in medieval times by members of guilds to identify the work of craftsmen within the guild

Trademarks were employed by Anglo-Americans to prevent “palming off” by junior producers trading on the good will of senior producers

Characteristics of Trademarks A trademark is always appurtenant

to commercial activity

Trademarks are appropriated through adoption and prior use

The three key types of identifiers applied are R, SM and TM. Registered trade marks include the letter R inside of a circle. SM, which stands for Service mark, is listed with unregistered marks that are utilized to promote or brand services. Tm is listed after unregistered marks that are used to promote or brand specific goods.

Goals of Trademarks Prevent mistake, deception,

and confusion with regard to the origin of goods

Identification of goods or services

Garner marketing or competitive advantages

Protect the public from unscrupulous vendors

Protect a prior user’s good will

Sources Law of Trademarks Unlike Patents and Copyrights, there

is no express constitutional grant of power to regulate this form of intellectual property

In early American history, the states grew their own complex and sophisticated body of trademark common law

Congress made various attempts in 1870 and 1876 to federalize the law of trademarks, but these attempts were deemed unconstitutional by The Trademark Cases (1879) (holding Congress had no power to regulate purely state matters such as trademark rights)

Successful attempts at federalization

In response to The Trademark Cases, Congress passed trademark statutes in 1881 and 1905, which both addressed interstate use of trademarks

Congress passed the Lanham Act in 1946, the most recent substantive revision of trademark legislation

The Lanham Act does not expressly create new rights (caveat - federal cause of action), nor does it codify common law; instead the Act provides a means of federal enforcement, through registration, of state trademark rights

Requirement of Trademark Protection

Inherent Distinctiveness

Acquired secondary meaning

Nonfunctionality

Distinctiveness This requirement is fundamental to

the nature of trademark

Anything claiming protection under trademark principles must be capable of identifying the particular goods and services with which it is used, and distinguishing those goods and services from the goods and services of others in the marketplace

Categories (Distinctiveness Spectrum) of marks of generally increasing distinctiveness are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary and fanciful marks

Secondary Meaning of Trademark

Provides for trademark protection of marks that are not inherently distinctive

Descriptive marks usually rely upon special proof of distinctiveness before protection will be afforded by common law and statute

Descriptive marks must be shown to have acquired customer recognition (secondary meaning), which serves primarily to identify the source of the products or services, and not merely to describe their nature, quality, characteristics, ingredients, or geographic origins

Generic marks constitute the very product and, therefore, cannot be registered or appropriated exclusively to one manufacturer’s use, even upon a showing of secondary meaning, because competition would be unjustifiably impaired

Nonfunctionality Trademark protection is granted to

symbols or features that are not functional

Protection of functional features would deprive producers of the right to use those features necessary to make a product work

Doctrine of functionality: if a feature is required to perform a particular utilitarian function, and if there are insufficient commercially viable alternatives to perform the same function equally well, no single producer will be allowed to claim exclusive rights in the feature

Works Cited http://law.jeyamart

icle.com/the-characteristics-of-a-trademark/

http://www.uspto.gov/trademarks/basics/BasicFacts.pdf