Trademarks I
Introduction to Trademarks
Class 19 Notes
Law 507 | Intellectual Property | Spring 2004
Professor Wagner
Today’s Agenda
1. Intro to Trademarks
2. Trademark Theory
3. The Subject Matter of Marks
4. Registration Procedures
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Introduction to Trademarks
• Trademarks are a relatively ‘newer’ doctrine,
with much growth in the 20th century. (Why?)
• Statutory basis:
• Lanham Act, 15 U.S.C. et seq.
• Note: does not necessarily preempt related state laws
o Trademarks
o ‘Unfair competition’
o Rights of publicity, etc.
• What is the ‘term’ of a trademark?
3/10
Trademark Theory
1. Who benefits from trademarks? How?
2. What, precisely, are the social benefits of
trademarks? (What things does it stimulate?)
3. Consider how trademarks do the following:
•
•
Lower consumer search costs
Enhance product quality
4. Why is branding especially important where
aspects of the product cannot be verified?
5. Consider the case of pharmaceutical drugs: is
branding socially beneficial?
4/10
Trademark Theory (2)
What is goodwill? How do trademarks support the
development of goodwill?
• Won’t companies have incentives to create goodwill
even without trademarks?
Consider:
• What are the ‘costs’ of trademarks?
• Are there other ways we could generate the same
benefits without extending the property right? (Will
these necessarily require government intervention?)
• Much recent criticism of trademarks is related to
their increasing power across a variety of products
(‘leveraging the brand’). How troubling is this trend?
5/10
The Subject Matter of Marks
Basic point: trademark protection depends
upon the ‘strength’ of the mark
• A hierarchy of strength: (Why this order?)
1. Arbitrary marks
2. Suggestive marks
3. Descriptive marks
4. Generic marks
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The Subject Matter of Marks
15 USC § 1127
Trademarks: word, name, symbol, device, or any
combination thereof … to distinguish goods from
others and indicate source
o Why the requirement for ‘use’ or ‘intent to use’ in
commerce?
Service mark: same as trademarks, but identify
services.
Trade names: identify companies, not products (no
traditional trademark protection, though perhaps
state law protection)
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The Subject Matter of Marks
Qualitex Co v Jacobson Products Co., Inc. (1995)
• What does the court suggest is the test for whether particular
types of subject matter can be trademarked?
• Consider the following objections to colors as marks:
o Uncertainty concerning infringement
o A limited supply of colors (Should the court be concerned that
there are physical limitations on the numbers of colors perceptible
by humans? Why or why not?)
o Functionality
o Irrelevance: use a logo with color, etc. instead
QuickTime™ and a TI FF (Uncompressed) decompressor are needed to see this pict ure.
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The Subject Matter of Marks
Certification Marks:
• What are certification marks?
• How are they truly different from trademarks?
Collective Marks:
• What are they?
• How are they different from trademarks?
Trade Dress and Product Configuration
• What do we mean by trade dress/configuration?
9/10
Next Class
Trademarks II
Establishment of Trademark Rights
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