Intellectual Property Boston College Law School March 25, 2009 Trademark – Priority

Requirements Lanham Act § 45 (15 U.S.C. § 1125) –Trademark. 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 in commerce and applies to register … –to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….

Categories of Marks Less ProtectionMore Protection Generic Denotes general class of products Unprotectible Shredded Wheat, Aspirin, Thermos, Cellophane, Car, Computer Arbitrary Bears no relation to product Automatically Protectible Descriptive Describes some characteristic/quality Protectible if secondary meaning Suggestive Suggests some characteristic Automatically Protectible

Trade Dress & Product Design Trade DressProduct Design

Two Pesos v. Taco Cabana

Two Pesos v. Taco Cabana 505 U.S. 763 (1992) Findings of the District Court –Taco Cabana has an identifiable trade dress –The trade dress is non-functional –The trade dress is inherently distinctive –The trade dress has not acquired secondary meaning

Inherently Distinctive?

Policy Considerations Distinctiveness Generic Descriptive Inherently Distinctive Low High Potential for Confusion Harm to Competition Trade Dress, Trademarks Product Design

Example - Review

Requirements Lanham Act § 45 (15 U.S.C. § 1125) –Trademark. 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 in commerce and applies to register … –to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….

Zazu Designs v. L’Oreal Nov. Jan. Mar. May. Jul. Sep. Nov. – Minimal Sales - 2 bottles to friend in TX - 40 bottles to stylist in FL Orders 25,000 bottles & labels Sep. – Sales to salon customers Apr. – Small interstate shipment Jun. – Files for registration of mark Zazu DesignsL’Oreal

Concurrent Use Two types of concurrent use –Different Products E.g. Apple Records and Apple Computers E.g. Delta Faucets and Delta Airlines E.g. Acme Cleaners, Acme Mufflers, Acme... –Different Geographic Markets E.g. Broadway Pizza (Boston) and Broadway Pizza (S.F.)

Concurrent Use - No Reg. Broadway Pizza (CA) Broadway Pizza (MA)

Concurrent Use - Fed. Reg. Broadway Pizza (CA) Broadway Pizza (MA)

Secondary Meaning Time 0% 50% Consumers who Assoc. Achieved Secondary Meaning Start Use No Protection Secondary Meaning in the Making

Requirements Lanham Act § 45 (15 U.S.C. § 1125) –Trademark. 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 in commerce and applies to register … –to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….

Advantages of Registration Nationwide constructive use - priority Nationwide constructive notice Possibility of achieving incontestability Presumption of validity at trial Right to sue in federal court Availability of extra remedies (e.g. attorney fees, treble damages, border exclusion …)

Registration Process Clearing the trademark Start use or have bona fide intent to use File application Examination by PTO Publication in Official Gazette Registration –Or if intent to use, notice of allowance and later filing of statement of use; then registration

Bars to Registration Lanham Act §2: –(a) Immoral, scandalous, deceptive; disparages –(b) Flag, coat of arms, insignia of U.S., state, etc. –(c) Name, portrait, signature of living individual –(d) Likely to cause confusion with other mark –(e) Consists of mark that is: (1) merely descriptive or deceptively misdescriptive (2) primarily geographically descriptive (3) primarily geographically deceptively misdescriptive (4) primarily a surname (5) functional

Bars - Immoral, Scandalous Lanham Act §2: –Shall register mark unless it: “(a) Consists of or comprises immoral, deceptive, or scandalous matter, or 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”

Harjo v. Pro-Football, Inc.

Other Examples “Jesus Christ” brand beer

Bars to Registration Lanham Act §2: –(a) Immoral, scandalous, deceptive; disparages –(b) Flag, coat of arms, insignia of U.S., state, etc. –(c) Name, portrait, signature of living individual –(d) Likely to cause confusion with other mark –(e) Consists of mark that is: (1) merely descriptive or deceptively misdescriptive (2) primarily geographically descriptive (3) primarily geographically deceptively misdescriptive (4) primarily a surname (5) functional

Bars to Registration Lanham Act §2: –(a) Immoral, scandalous, deceptive; disparages –(b) Flag, coat of arms, insignia of U.S., state, etc. –(c) Name, portrait, signature of living individual –(d) Likely to cause confusion with other mark –(e) Consists of mark that is: (1) merely descriptive or deceptively misdescriptive (2) primarily geographically descriptive (3) primarily geographically deceptively misdescriptive (4) primarily a surname (5) functional

Administrative Next class –Read through VI.D.3 – Dilution

Examples Lanham Act §2(e) - Examples: –Descriptive 2(e)(1) E.g. “ORGANIC” for organically grown oranges –Deceptive 2(a) E.g. “ORGANIC” for non-organic oranges –Deceptively misdescriptive 2(e)(1) E.g. “JOE’S FAVORITE” for oranges that aren’t Joe’s favorite –Geographically descriptive 2(e)(2) E.g. “FLORIDA” for Florida oranges –Geographically deceptive E.g. “FLORIDA” for Georgia oranges –Geographically deceptively misdescriptive 2(e)(3) E.g. “FLORIDA” for auto parts –Arbitrary (geographically nondeceptively misdescriptive) E.g. “ANTARCTIC” for Georgia oranges