Trademark Law
 Oct. 9, 2006
 Week 6
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Finish Chapter 4 – Registration
Start Chapter 5 - Loss of Trademark Rights
 Read Pgs. 312-345, 353-363, 368-378; skim
sample documents 379-389
Trademark Law
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Review - Advantages of Registration
 Nationwide protection from the date of the
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application
Prevents senior users in limited geography
from expanding their territory
Incontestability if used for 5 yrs (and
paperwork filed with USPTO)
Stop infringing goods at the dock
Mark is presumed valid during litigation
Get to use that really cool ® symbol
Enhanced Damages (discussed later)
Trademark Law
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Review - Bars to Registration
 15 USC § 1052(a) - No mark shall be refused
registration… unless
 it is immoral, deceptive, or scandalous matter; or
 [it is] matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt,
or disrepute; or a geographical indication which, when
used on or in connection with wines or spirits, identifies a
place other than the origin of the goods and is first used
on or in connection with wines or spirits by the applicant
on or after one year after [Jan. 1, 1995]
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Review - Bars to Registration
 Refusal based on 15 USC § 1052(a)
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immoral, deceptive, or scandalous matter;
or
matter which may disparage …
Trademark Law
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Review - Bars to Registration
 Refusal based on 15 USC § 1052(b) – flags or
coat of arms or insignia of the US, any State
or muni, or any foreign nation, or any
simulation thereof
 Refusal based on 15 USC § 1052(c ) – Names,
portrait or signatures (live people or dead
presidents [while the widow still lives])
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Review - Bars to Registration
 Refusal based on 15 USC § 1052(d)
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resembles a mark (registered or not) that
the applied for mark would likely to cause
confusion with as used or as intended to be
used
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Review - Bars to Registration
 15 USC § 1052(e) - Cannot register a mark which
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(1) when used on or in connection with the goods of the applicant is
merely descriptive or deceptively misdescriptive of them
(2) when used on or in connection with the goods of the applicant is
primarily geographically descriptive of them, except as indications of
regional origin may be registerable under section 4 [15 USC §1054]
(3) when used on or in connection with the goods of the applicant is
primarily geographically deceptively misdescriptive of them,
(4) is primarily merely a surname, or
(5) comprises any matter that, as a whole, is functional.
 15 USC §1052(f) - except for §1052(a), (b), (c), (d), (e)(3) and
(e)(5)... all of the other rejections may be overcome by proving
the mark has become distinctive (a.k.a. acquired secondary
meaning) to the examiner.
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Review - Bars to Registration
 15 USC § 1052(e) - Cannot register a mark which
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(1) when used on or in connection with the
goods of the applicant is merely descriptive
or deceptively misdescriptive of them
Must acquire 2nd meaning for mark to be
protectable; See §1052(f)
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Review - The Budge Test
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Compare and contrast…
15 USC § 1052(a) – bars deceptive terms –
complete bar (not even 2nd meaning will allow
registration
15 USC § 1052(e)(1) – bars merely descriptive
terms or deceptively misdescriptive terms – (but
2nd meaning will allow registration)
How to tell the difference? 3-step test on p. 253
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Review - Registration of Marks
 15 USC § 1052(e) - Cannot register a mark
which
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(2) when used on or in connection with the goods
of the applicant is primarily geographically
descriptive of them, except as indications of
regional origin may be registerable under section 4
[15 USC §1054]
Must acquire 2nd meaning for mark to be
protectable; See §1052(f)
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Review - Registration of Marks
 15 USC § 1052(e) - Cannot register a mark which
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(3) when used on or in connection with the
goods of the applicant is primarily
geographically deceptively misdescriptive of
them
2nd meaning won’t help; See §1052(f)
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Review - Registration of Marks
 15 USC § 1052(e) - Cannot register a mark which
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(4) is primarily merely a surname
 Rule: is the "primary significance of the mark to the purchasing
public" as that of a surname?
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Factors
 (i) the degree of surname rareness;
 (ii) whether anyone connected with applicant has the surname;
 (iii) whether the term has any recognized meaning other than
that of a surname; and
 (iv) the structure and pronunciation or “look and sound” of the
surname.
Must acquire 2nd meaning for mark to be protectable; See
§1052(f)
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Review - Registration of Marks
 15 USC § 1052(e) - Cannot register a mark which
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(5) comprises any matter that, as a whole, is functional.
 “in general terms, a product feature is functional if it
is essential to the use or purpose of the article or if it
affects the cost or quality of the article.” Qualitex v.
Jacobson (US S. Ct. 1995) [286]
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2nd meaning won’t help. See §1052(f)
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Compare and accord this w/ patent law
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Review - Some Notable Merely Descriptive Marks
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Numbers, letters, model numbers
 General rule: Not distinctive – not registerable
 How to protect these marks?
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Acquire 2nd meaning
A grade or style designation may be
distinctive, IF it also primarily designates
the source of the good.
 If not… how to protect these marks?
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Acquire 2nd meaning
Trademark Law
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Loss of Trademark Rights
 Genericism (a verb)
 A word is generic if…? (see your notes)
 Bayer Co. v. United Drug Co. (SDNY 1921)
[312] (Judge Learned Hand )
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The “relevant consumer” gets to “decide” what
they will call a product; if a word is the name of
the thing, or an identifier of source.
Must educate the customer, competitors, even
employees
Purpose of the genericism doctrine is to permit
competitor to call their competing goods by their
commonly-known name
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Loss of Trademark Rights
 Implementing the Standard: Survey Evidence
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King-Seeley Thermos Co. v. Aladdin Industries –
The thermos case
 Aladdin contended “A generic descriptive word in the
English language … as a synonym for vacuum insulated
container”
“… despite its efforts to protect the trademark, the public
has virtually expropriated it as its own. The word having
become part of the public domain, it would be unfair to
unduly restrict the right of a competitor of King-Seeley to
use the word.”
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Loss of Trademark Rights
 Implementing the Standard: Survey
Evidence
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DuPont
 Ask the right questions!
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Don’t ask - whether the principal significance of the
name supplied was its indication of the nature or class
of an article
Do ask - whether the principal significance of the
name supplied was an indication of its origin.
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Loss of Trademark Rights
 Genericism and 2nd meaning
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defacto secondary meaning – when the public
associates the generic term with a single source.
 E.g., LITE for beer; Miller’s ads “give me a LITE”
 Still not a mark despite the acquired secondary meaning.
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AOL v. AT&T
 You’ve got mail – consistently w/ that phrase’s common
meaning
 Allowing TM rights would stop others from using it
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Loss of Trademark Rights
 Abandonment
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15 USC § 1127 [Lanham Act §45] (N.B. error in
text)
Abandonment of mark. A mark shall be deemed to be
"abandoned" when either of the following occurs:
(1)When its use has been discontinued with intent not to resume
such use. Intent not to resume may be inferred from
circumstances. Nonuse for three consecutive years shall be prima
facie evidence of abandonment. "Use" of a mark means the bona
fide use of that mark made in the ordinary course of trade, and
not made merely to reserve a right in a mark.
(2) [the owners conduct causes the mark to become generic]
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Loss of Trademark Rights
 Silverman v. CBS,
Inc. (2nd Cir. 1989)
[356]
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Loss of Trademark Rights
 Abandonment
 Silverman v. CBS, Inc. (2nd Cir. 1989)
[356]
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What’s the meaning of intent not to
resume?
What were some of CBS’s “minor
activities” that it asserted kept its mark
alive?
Trademark Law
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Loss of Trademark Rights
 Assignment in Gross
 Clark & Freeman v. Heartland (SDNY
1993) [368]
Trademark Law
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Loss of Trademark Rights
 Assignment in Gross
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An assignment "in gross" is an assignment without
the goodwill of the mark
What is goodwill?
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Loss of Trademark Rights
 Naked Licensing - agreements to allow
use of the name without adequate
supervision and quality control
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15 USC § 1127 [Lanham Act §45] (N.B. error in
text)
Abandonment of mark. A mark shall be deemed to be
"abandoned" when either of the following occurs:
(2) [the owners conduct causes the mark to become generic]
Trademark Law
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Loss of Trademark Rights
 Failure to Police the Mark
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Policy for requiring mark owners to policy
their mark – if there are numerous
products in the marketplace bearing the
alleged mark, purchasers may learn to
ignore the mark as a source indication…
[this] causes the mark to lose its
significance as a mark
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Loss of Trademark Right
 Failure to Police the mark
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Loss of Trademark Right
 Failure to Police the mark
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What about a mark owner’s agreement to
allow an infringer to sell-off the remaining
goods
See Exxon Corp. [376]
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Next Week
 Chapter 6 – Infringement
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You’ve finished the bread and salad – now
it time for the meat and potatoes…
Read:
 AMF Inc. vs. Sleekcraft Boats (N.B. Read this
case carefully!)
 Pgs. 395-400, 407-421, skim Playboy vs.
Netscape on pgs. 421-423, read Playboy vs.
Netscape (starts on suppl. pg. 80), pgs. 424-429
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