U.S.

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

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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)

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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
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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
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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

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

−Counterfeiting
−Other forms of unfair competition
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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
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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
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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

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

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

• Suggestive
• Arbitrary

• Fanciful
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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
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Descriptive marks
• Mark immediately conveys information about good or service
− e.g., SEATTLE’S BEST COFFEE

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

• Inherently distinctive, so secondary meaning not required

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

• Strongest form of trademark

• Inherently distinctive, so secondary meaning not required

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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

Suggestive

Dockers

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

2. Priority 3. Likelihood of confusion

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Priority
• 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
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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
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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
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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
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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
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Likelihood of confusion?

Louis Vuitton and Dooney & Bourke purses
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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
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Dilution - Fame
• Fame = Widely recognized by general consuming public
−Nationwide fame −Statutory factors for fame (advertising, sales, recognition, federal registration)

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

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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

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Infringement vs. dilution
Famous mark TIFFANY

Infringement

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

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

−TRO, preliminary, and permanent
−Discretionary

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Remedies
• 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

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Remedies
• Costs
−Minimal

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

mike@atkinsip.com

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