Trademark Law Introduction
CASRIP Summer Institute Michael Atkins
July 20, 2012


What is a trademark?
• A word, name, symbol, device, or other designation, or a combination of such designations, that is used in commerce in a manner that distinguishes the goods or services of its owner from those of others
−Lanham Act § 45 (15 U.S.C. § 1127)


Types of trademarks
• Trademarks
− DOLE for canned pineapple

• Service marks
− MCDONALD’S for restaurant services

• Trade dress
− Distinctive Coca-Cola bottle for cola drinks

• Certification marks
− WOOLMARK for apparel made of 100% wool

Economic purpose TMs serve
• Reduces consumer transaction costs • Rewards quality by building brand loyalty • Fills in gaps left by advertising
− Advertising tells consumers about price, color, shape, size − TMs tell consumers about “experience” characteristics learned only through use
 How wine tastes, how long car will last
 Makes source of goods memorable to enable future purchases

Trademarks symbolize goodwill
• “Goodwill” is the good feeling consumers have when they see, hear, or think of a seller or its trademark
−In economic terms, it is the probability that, based on this good feeling, consumers will come back in the future


What are trademark rights?
• Exclusive use
−In relevant geographic area −Tied to specific goods/services

• Right to enjoin others
−Prevent other users from using same or confusingly similar mark
 Limited by area, goods/services

How do you acquire TM rights?
• By using the mark
−United States and Common Law countries
 Common law protection inheres with use  Registration can expand rights

−“Use” means affixing mark to product and marketing to consumers

• By registering
−Most countries

Basic trademark principles
• Federal and state statutes protect against:
−Trademark infringement −Trademark dilution −False advertising −Cybersquatting

−Other forms of unfair competition

Basic trademark principles
• “Likelihood of confusion” often key • In conflict, first to use mark in commerce generally wins
−Senior user has priority over junior user

• Trademark law is intended to avoid consumer confusion
−However, competitors have standing to enforce

Systems of TM protection
• National protection  Registration
−Lanham Act, 15 U.S.C. §§ 1051, et seq.

• State protection  Registration
− e.g., Washington’s trademark statute, RCW §§ 19.77.010, et seq.

• Common law rights
−Perfectly good rights
−Limited to geographic scope of actual use

Duration of TM protection
• Forever, if continuously used • Must maintain federal registrations
−File declarations of use

−Renew registrations every 10 years

• Abandonment = presumed from non-use for 3 consecutive years


Types of IP protection
• Trademark = source identifier
−Brand of television

• Copyright = original literary/artistic expression
−Programs viewed on television

• Patent = new and useful inventions
−Circuitry of television (functional patent) −Original features of cabinet (design patent)

Criteria for IP protection
• Trademark = must distinguish goods and services • Copyright = must be original and creative • Patents = must be new and “non-obvious”


Trademarks vs. copyrights
Differences: • Trademark = prevents use of similar mark on such goods/services as would likely cause confusion • Copyright = prevents copying of the copyrighted work in any medium

Trademarks vs. patents
Potential overlap:
• USPTO grants patents and registers trademarks • Product shapes (if source identifier) −Different goals
 Patents = innovation and design

 Trademarks = Need to protect consumers from confusion as to source or sponsorship

Spectrum of TM distinctiveness
Weakest to strongest: • Generic • Descriptive

• Suggestive
• Arbitrary

• Fanciful

Generic marks
Denotes category of goods
− e.g., COFFEE brand coffee

• Answers “What am I?” question • No protection as trademark • Generic ab initio; generic through genericide • Secondary meaning irrelevant; no amount of secondary meaning can make generic mark protectable

Descriptive marks
• Mark immediately conveys information about good or service

• Not “inherently distinctive”
− So secondary meaning required for protection

• Includes self-laudatory marks, surnames, geographically descriptive marks • 5 years of use = prima facie evidence of secondary meaning

Suggestive marks
• Mark does not immediately convey any information about good or service
− e.g., OLDE GLORY

• Requires consumer to use at least some imagination to get message
• Inherently distinctive, so secondary meaning not required for protection

Arbitrary marks
• Familiar word in unfamiliar context
− e.g., STARBUCK’S for coffee

• Inherently distinctive, so secondary meaning not required


Fanciful marks
• Made-up word
− e.g., EXXON for gasoline

• Strongest form of trademark

• Inherently distinctive, so secondary meaning not required


Spectrum of trademark distinctiveness
Inherently Distinctive Not Inherently Distinctive Secondary Meaning Required Descriptive, Geographic, Personal Name Hi-Tops
No Distinctiveness

No Secondary Meaning Required Arbitrary And Fanciful
Keds, Mary Janes

No Trademark Significance Generic




Secondary meaning
• Words with an ordinary (primary) meaning come to be known by the public as indicating that a product comes from a single source • Only relevant for descriptive marks
− Descriptive term + secondary meaning = protectable mark
− Descriptive term without secondary meaning = just a description; not trademark use, so not protectable

Secondary meaning
• Proof of secondary meaning focuses on consumer’s attitude toward mark • Courts consider advertising, sales, length of use as circumstantial evidence of secondary meaning • Consumer surveys are most direct and persuasive means of proving secondary meaning

Trade dress
• Trade dress = total image of product that identifies source of goods
− Individual elements may not be protectable, but as a whole they can be

• Since trade dress is a type of trademark, trademark criteria apply
− Source indicator, non-functional, sometimes inherently distinctive, sometimes must acquire distinctiveness through secondary meaning − Can be registered or unregistered

Trade dress - Secondary meaning
• Secondary meaning not required for product packaging if trade dress is inherently distinctive.
− Packaging = container or décor − To determine, place trade dress on spectrum

• Secondary meaning is required for product design.
− Product design = apparel or shape of car − When in doubt, courts require secondary meaning

Trade dress - functionality
• Trade dress can’t be primarily functional • Functionality = Useful feature, affects quality of good, or makes good inexpensive to manufacture

• Burden of proving nonfunctionality is on plaintiff
• Look for advertising touting functional feature • If functional, feature can be freely copied

Trademark infringement - Elements
1. Ownership of valid and protectable trademark
- Not generic - Secondary meaning if descriptive

2. Priority 3. Likelihood of confusion


• In general, first to use gets priority
−Exception is intent-to-use registrations −“Use” must be with actual sales to public
 Intra-company, token or sham sales don’t count

• Use automatically creates TM rights in geographic area where sales are made
−First use in geographic area = priority in that area

Likelihood of confusion tests
• “Multi-factor” test
− Goal is to inform court whether consumers are likely to be confused by use of defendant’s mark

Sleekcraft Factors – Ninth Circuit • Polaroid Factors – Second Circuit • DuPont Factors – Federal Circuit

Other circuits have other “multi-factor” tests

Likelihood of confusion factors
1. Strength of the mark -Technical strength; fame 2. Proximity of the goods -Do the products compete? -Close in function? 3. Similarity of the marks -Sight, sound, meaning test

Likelihood of confusion factors
4. Evidence of actual confusion -Can be best evidence, can be irrelevant 5. Marketing channels used -Are consumers exposed to both goods? 6. Type of goods and degree of care purchaser is likely to exercise -Standard is ordinary consumer, unless consumer is “expert” purchaser -More expensive goods makes confusion less likely

Likelihood of confusion factors
7. Defendant’s intent
-Awareness of plaintiff’s mark can signal bad faith -Reliance on advice of counsel can signal good faith

8. Likelihood of expansion
-”Strong possibility” party will bridge the gap and result in head-to-head competition

Likelihood of confusion?

Louis Vuitton and Dooney & Bourke purses

Trademark dilution
• • • Based on statute (federal or state) Watering down of the strength of a TM to bring to mind a particular source Dilution occurs when, after plaintiff’s TM has become famous, defendant begins use of plaintiff’s TM as a TM that is likely to cause dilution by blurring or tarnishment, regardless of actual or likely confusion, competition, or actual economic injury
− Likelihood of confusion is irrelevant

Dilution - Fame
• Fame = Widely recognized by general consuming public
−Nationwide fame −Statutory factors for fame (advertising, sales, recognition, federal registration)


Dilution by blurring
• Dilution by blurring
−BUICK for aspirin, KODAK for pianos

• Statutory factors for blurring
1.Degree of similarity between marks 2.Distinctiveness of plaintiff’s mark 3.Whether plaintiff has substantially exclusive use 4.Degree of recognition of plaintiff’s mark

Dilution by blurring
5. Whether defendant intended to create association with plaintiff’s mark 6. Any actual association with plaintiff’s mark


Dilution by tarnishment
• Dilution by tarnishment – The association arising from the similarity between defendant’s TM and plaintiff’s famous TM that harms the reputation of plaintiff’s TM
−Harms the image of the famous TM owner


Infringement vs. dilution
Famous mark TIFFANY


TIFFANY for jewelry store Dilution by blurring TIFFANY for upscale restaurant Dilution by tarnishment TIFFANY for adult video store


• Injunction
−Most common form of relief −Intended to preserve status quo

−TRO, preliminary, and permanent


• Damages
−Subject to principles of equity, plaintiff can obtain actual damages plus infringer’s profits −Actual damages
 “Tort” harm plaintiff sustained  Must prove to a “reasonable certainty


• Costs

• Attorney’s fees
−Only awarded in “exceptional” (rare) circumstances
 For plaintiff, means defendant acted fraudulently or willfully  For defendant, means plaintiff’s case was groundless or pursued in bad faith

Additional resources
• J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
−(Thomson/West – 7 volumes)

• Jerome Gilson, Gilson on Trademarks
−(Matthew Bender – 10 volumes)

• International Trademark Association
− inta.org

Questions? Thank you!
Michael G. Atkins (206) 628-0983