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 Trade-mark

off Cases: striking
down Act
guild
system
1st Federal Act Foreign
first use of based on IP commerce-
trademarks Clause based Act

// early 1870
ancient 1881
times 19th
century
1879
medieval
 MODERN HISTORY

Lanham Act Federal Anti-

Trade Dress § 43(a) Dilution Act

Trademark Act - Revisions

interstate intent to use
commerce

1905 1947 1988 1996

 EXPANDING PROTECTION

Scope: Marks Trade Dress

Threshold: Actual Use 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) • Descriptive

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

secondary meaning Protectible Protectible
Shredded Wheat,
Aspirin, Thermos,
Cellophane, Car,
Computer
 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. 2f, 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.