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
off
Trade-mark
Cases: striking
down Act
guild
system
first use of
trademarks
//
1st Federal Act
based on IP
Clause
early
19th
century
medieval
ancient
times
1870
1879
Foreign
commercebased Act
1881
MODERN HISTORY
Lanham Act
Trade Dress § 43(a)
Trademark Act interstate
commerce
1905
Federal AntiDilution Act
Revisions
intent to use
1947
1988
1996
EXPANDING PROTECTION
Scope: Marks
Threshold: Actual Use
Trade Dress
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
•
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•
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•
•
•
•
•
•
•
•
•
•
•
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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)
Descriptive
Suggestive
Descriptive
Descriptive
Descriptive
Arbitrary
Suggestive
Suggestive
Suggestive
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
secondary meaning Protectible
Shredded Wheat,
Aspirin, Thermos,
Cellophane, Car,
Computer
Automatically
Protectible
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.