Trademark

1. word, phrase, logo to distinguish a product used by a manufacturer Trademark 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. Example: VS. Trademark must be Distinctive Trademark must be Used in Commerce

2. Federal Trademark Registration Act (1870) Trademark Protection Act (19 Stat. 141) (1876) U.S. SUPREME COURTS OVERTURNS RE: Trade Mark Cases 100 U.S. 82 (1879) No Substantive Rights Very Limited Scope Trademark Statutory Evolution Interstate Commerce Registration Act (33 Stat. 724) (1905) The Lanham Act (15 U.S.C. § 1051 et. seq.) (1947) THE LAW TODAY…

3. Comparison with Other I.P.

4. Distinguish Products from Multiple Sources Lower Product Search Costs Regulates Competition Promotes Product Consistency Prevents Free-Riding Purposes of Trademark PROMOTE FAIR EFFICIENT COMMERCE…

5. 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, 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. GOODS n. A name, phrase, or other device used to identify and distinguish the services of a certain provider. n. A name, phrase, or other device used to identify and distinguish the services of a certain provider. SERVICES 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 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. ORGANIZATIONS U L n. A word, symbol, or device used on goods or services to certify the place of origin, quality, or other characteristic. n. A word, symbol, or device used on goods or services to certify the place of origin, quality, or other characteristic. QUALITY ® Types of Marks Trademark Lanham Act § 45 Service Mark Lanham Act § 3 Collective Mark Lanham Act § 4 Certification Mark Lanham Act § 4

6. 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. Service Marks

7. 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 ….

8. 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 ... Certification Marks Champagne

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

10. 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 Categorizations

11. 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. Descriptive Marks

12. 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 Meaning

13. A: ? Q: How do we prove/disprove the existence of secondary meaning BUT Surveys ---------- ---------- ----------- Surveys have limited accuracy & Surveys can be biased Marketing Courts may be loathe to allow extensive broadening of trademark and limit the scope What does consumer think? Courts impose controls on secondary meaning: Secondary Meaning SO… • Limited to regional marketplace (e.g. season/time/place)

14. Secondary Meaning 50% Achieved Secondary Meaning Consumers who Assoc. 0% Start Use No Protection Time

15. Descriptive Marks Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F2d 786 (5th Cir. 1983) Plaintiff Defendant Oak Grove Dist. 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; Such uses are privileged because they use the terms only in their purely descriptive sense.

16. Descriptive Marks Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267 (2nd Cir. 1995) Plaintiff Defendant Holding: • Issue is whether the protected word or image (here • “pine tree” shape) is used descriptively or as a mark • Johnson entitled to use pine-tree shape • descriptively, despite Car-Freshner’s mark • Defendant has right to “Fair Use” Defense in use • of descriptive terms that plaintiff uses as suggestive 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

17. Generic Marks Genessee Brewing Company, Inc. v. Stroh Brewing Co., 124 F.3d 137 (2nd Cir. 1997) Holding: • Issue is whether the protected word or image is used • descriptively or as a mark • Nature of product renders “Honey Brown” • generic (for ales) rather than descriptive • Defendant can escape “unfair competition” claim if it • exercised reasonable means to prevent confusion Court applies the Canfield Test: 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).

18. Personal Names as Marks In 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).

19. Personal Names as Marks Thus, 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).

20. Geographic Marks 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). 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."

21. Under Lanham Act, such a usage may be permitted protection as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness Record devoid of any indication of consumer confusion Geographic Marks In 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”

22. 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.

23. Trade Dress & Product Design Trade Dress Product Design

24. Two Pesos v. Taco Cabana505 U.S. 763 (1992) Taco Cabana Trade Dress

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

26. 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

27. 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 Functionality

28. In Re Morton-Horwich671 F.2d 1332 (C.C.P.A. 1982) “Superior in function or economy of manufacture, which superiority is determined in light of competitive necessity to copy” • Evidence of functionality • Existence of utility patents • Advertising touting utility • Existence of alternatives • Cost to manufacture

29. Potential for Confusion Harm to Competition Policy Considerations High Low Functional Non-Functional No Protection Functionality

30. Example