Trademark and Unfair Comp. Boston College Law School August 31, 2004 Introduction

Topics Review Case: Quality Inns v. McDonalds Theories for Protection Context –Brief History of Trademark –Sources of Law –Institutional Structure Course Roadmap Administrative Details

Quality Inns v. McDonald’s (695 F. Supp. 198 (D. Md. 1988)

Likelihood of Confusion Polaroid Factors –(1) Strength of plaintiff’s mark –(2) Degree of similarity of marks –(3) Proximity of products or services –(4) Likelihood of plaintiff bridging the gap –(5) Evidence of actual confusion –(6) Defendant’s good faith –(7) Quality of defendant’s products –(8) Sophistication of buyers

Quality Inns v. McDonald’s (695 F. Supp. 198 (D. Md. 1988)

Why Protect Trademarks? 1. Protect consumers from confusion 2. Provide incentives for investing in quality 3. Prevent other companies from free-riding 4. Reward companies for their labor 5. Protect value of trademark (and associated goodwill) as a good in itself

Costs of Trademark Protection 1. May raise costs of competition 2. May hurt consumers 3. May harm free speech interests

Competing Visions of Brands The case for –Provides information to consumers –Ensures quality of product –Creates valuable associations consumers want The case against –Creates artificial distinctions, raising prices –Encourages unhealthy wants & desires –No need for additional legal protection

Trademark Law - Context Historical Context Sources of Trademark Law Institutional Framework Comparison With Other I.P.

History - Early Marks Pottery Stamps Crete c B.C. Brick Stamps Rome c. 10 B.C. Paper Watermarks Europe c. 13th century Silversmith Marks U.S. c th century

History - Early Purposes Form of advertising Used to prove source of goods Guarantee of quality

History - U.S. Trademark Act Pre-1870: state common law protection 1870: first federal trademark act –Based on Copyright and Patent Clause –Struck down in Trade-Mark Cases, 100 U.S. 82 (1879) 1881: new federal trademark statute –Based on Commerce Clause –Upheld as valid exercise of commerce power 1946: Lanham Act 1996: Anti-Dilution Act

History - I.P. Clause U.S. Const. Art. I, sec. 8: Congress shall have the power: –“to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Sources of Trademark Law State Common Law and Statutes –State law not preempted (unlike copyright/pat.) –Can register trademarks in each state Federal Protection Under Lanham Act –Provides process for registering marks federally –Provides protection for registered marks –Also provides protection for unregistered marks

Institutional Framework Patent and Trademark Office –Registers trademarks –Adjudicates trademark registration disputes (T.T.A.B.) Appeals from registration denials Opposition or cancellation proceedings Federal Courts –Appeals from trademark registration adjudication –Infringement actions under Lanham Act State Courts –Infringement actions under state and federal law

Comparison with Other I.P.

Contact Information Office Hours –Location: East Wing, 313 –Hours: Tue. 3:30-5 p.m., or by appointment Phone –

Assignment for Next Class Skim Borchard in Part I (review) Read II.A –Subject Matter : Types of Marks