Trademark and Unfair Comp. Boston College Law School February 13, 2008 Genericism, Abandonment.

Slides:

Advertisements

Similar presentations

Funeral for a Brand: How Trademarks Become Generic.

Advertisements

Trademark and Unfair Comp.

Unless otherwise noted, the content of this course material is licensed under a Creative Commons Attribution 3.0 License.

Trademark and Unfair Comp. Boston College Law School February 27, 2008 Likelihood of Confusion.

Understanding Trademarks A Global Perspective. Types of Intellectual Property Copyright Patent Industrial Design Utility Model Trademark Trade Name Trade.

Understanding Trademarks A Global Perspective. Types of Intellectual Property Copyright Patent Trademark Service Mark Trade Name Trade Dress Trade Secret.

Exam I COMING SOON! To a classroom near you! October 12.

Trademark and Unfair Comp. Boston College Law School November 9, 2004 Dilution (cont’d)

Maintaining Trademark Rights: Policing and Educational Efforts April 7, 2011.

Trademark/ Service Mark Issues For Public Power Utilities APPA LEGAL SEMINAR November 15, 2005 Brian E. Banner Washington, D.C. ©

N. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent.

Worldwide. For Our Clients. Trademark Dilution Law in the United States September 14, 2004.

Trademark and Unfair Comp. Boston College Law School September 21, 2004 Use in Commerce.

Trademark and Unfair Comp. Boston College Law School January 14, 2009 Introduction.

Trademark and Unfair Comp. Boston College Law School February 18, 2009 Genericism, Abandonment.

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

Trademark and Unfair Comp. Boston College Law School March 12, rd-Party Liability, Statutory Defenses.

Intellectual Property Boston College Law School April 18, 2007 Trademark – Defenses - Abandonment.

Intellectual Property Boston College Law School April 11, 2007 Trademark – Dilution.

Trademark and Unfair Comp. Boston College Law School September 14, 2004 Trade Dress - Part 2.

Trademark and Unfair Comp. Boston College Law School October 19, 2004 Likelihood of Confusion.

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

Trademark and Unfair Comp. Boston College Law School April 8, 2009 Dilution.

Intellectual Property Boston College Law School April 6, 2009 Trademark – Defenses – Functionality.

According to PTO, a trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods.

Intellectual Property

Intellectual Property Boston College Law School April 9, 2008 Trademark – Dilution.

Trademark and Unfair Comp. Boston College Law School April 2, 2008 Dilution.

Trademark and Unfair Comp. Boston College Law School October 5, 2004 Registration.

Intellectual Property

Intellectual Property Boston College Law School April 4, 2008 Trademark – Priority, Registration.

Trademark and Unfair Comp. Boston College Law School October 28, rd-Party Liability, Statutory Defenses.

Intellectual Property Boston College Law School March 30, 2009 Trademark – Infringement.

Intellectual Property Boston College Law School April 11, 2008 Trademark – Domain Names.

Trademark and Unfair Comp. Boston College Law School January 16, 2008 What is a Trademark?

Trademarks: Administrative Issues Intro to IP – Prof Merges

Trademark and Unfair Comp. Boston College Law School March 5, 2008 Types of Confusion, Trademark Use.

Trademark and Unfair Comp. Boston College Law School March 25, rd-Party Liability, Statutory Defenses.

Trademark and Unfair Comp. Boston College Law School April 9, 2008 Domain Names.

Intellectual Property Boston College Law School April 4, 2007 Trademark – Priority, Registration.

Intellectual Property Boston College Law School April 1, 2009 Trademark – Domain Names.

Intellectual Property Boston College Law School April 13, 2007 Trademark – Genericide, Functionality.

Intellectual Property Boston College Law School April 14, 2008 Trademark – Genericide, Functionality.

Trademark and Unfair Comp. Boston College Law School November 4, 2004 Dilution.

Trademark and Unfair Comp. Boston College Law School October 21, 2004 Likelihood of Confusion 2.

Intellectual Property Boston College Law School March 31, 2008 Trademark - Distinctiveness.

Trademark and Unfair Comp. Boston College Law School October 7, 2004 Bars to Registration.

Trademark and Unfair Comp. Boston College Law School October 14, 2004 Abandonment.

Trademark and Unfair Comp. Boston College Law School September 30, 2004 Intent to Use.

Trademark and Unfair Comp. Boston College Law School February 6, 2008 Intent to Use.

Trademark and Unfair Comp. Boston College Law School September 7, 2004 Distinctiveness.

Trademark and Unfair Comp. Boston College Law School September 9, 2004 Trade Dress - Part 1.

Intellectual Property Boston College Law School March 23, 2009 Trademark - Intro, Subject Matter.

Trademark and Unfair Comp. Boston College Law School October 12, 2004 Genericism.

Law 227: Trademarks & Unfair Competition Acquisition, Priority & “LOC” June 9, 2009 Jefferson Scher.

Judge Lorelei D. Ritchie, USPTO David W. Grace, Loeb & Loeb LLP Candice E. Kim, Greenberg Traurig LLP Betsy Rosenblatt, Whittier Law School.

Trademark Law Jody Blanke, Professor Computer Information Systems and Law Mercer University, Atlanta.

Trademark & Copyright Licensing Nathan C. Belzer October 12, 2007.

7.1 Chapter 7 Trademarks © 2003 by West Legal Studies in Business/A Division of Thomson Learning.

Trademarks and Packaging Learning Objectives Explain what a trademark is. Discuss protecting the trademark. Discuss forms of trademarks. Explain.

Introduction to Intellectual Property Class of November Copyright Remedies Trademarks: Protectable Marks, Distinctiveness.

Jody Blanke, Professor Computer Information Systems and Law 1.

Trademarks IV Infringement of Trademarks 2 Class 22 Notes Law 507 | Intellectual Property | Spring 2004 Professor Wagner.

To clarify... Constitutional law: dictates power of government and fundamental rights – Copyright/Patent laws stem from Constitution Statutory law: acts.

Trademark Law1  Oct. 9, 2006  Week 6 Finish Chapter 4 – Registration Start Chapter 5 - Loss of Trademark Rights  Read Pgs , , ;

Fall Trademark Law1  Sept. 11, 2006  Week 3  Chapter 3 - Acquisition of Trademark Rights Reading:  Pgs

Trademark Law1  Week 8 Chapter 6 – Infringement (cont.)

Chapter 10: Intellectual Property Issues in Sports

Association of Corporate Counsel

Trade Mark Protection Trade mark.

Presentation transcript:

Trademark and Unfair Comp. Boston College Law School February 13, 2008 Genericism, Abandonment

Bayer v. United Drug 272 F. 505 (S.D.N.Y. 1921) (Hand,J.)

Drug Names Advil (ibuprofen) Zantac (ranitidine) Viagra (sildenafil) Prozac (fluoxetine)

Policy Considerations Distinctiveness Generic Descriptive Suggestive Arbitrary Low High Potential for Confusion Harm to Competition Unprotectible Secondary Meaning Protectible

Other Marks Generic –Thermos –Escalator –Trampoline –Cellophane –Nylon –Yo-Yo Generic? –Velcro –Post-It Notes –Band-Aid –Plexiglas –Kleenex –Frisbee –Realtor

Policing Your Mark

Surveys Thermos Survey –E.g. “if you went into a store to ask for a vacuum-insulated container, what would you ask for?” Teflon Survey –E.g. “is ‘TEFLON a brand name or the name of a type of product?”

AOL v. AT&T 243 F.3d 812 (4th Cir. 2001)

Hypothetical BEST OF BOSTON –Boston Magazine uses term for annual survey –Boston Phoenix wants to conduct similar survey and use term “Boston Phoenix’s Best of Boston List” –Survey: 75% of public associates BEST OF BOSTON w/ Boston Magazine

1-800-GENERIC Number Cases –1-212-MATTRES v MATTRES –1-800-HOLIDAY v H0(zero)LIDAY

Abandonment Lanham Act §45 (15 U.S.C. §1125): –Abandonment. 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 reuse may be inferred from circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment.... (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods … or otherwise to lose its significance as a mark.

Abandonment Types of abandonment –Non-Use –Assignment in Gross –Naked Licensing –Failure to Police

Silverman v. CBS 870 F.2d 40 (2d Cir. 1989)

Trademark / Source Nexus Arbitrary (E.g. NIKE) Source (E.g. Nike, Inc.) Descriptive (E.g. ALL BRAN) Source (E.g. Kellogg, Inc.) Generic (E.g. aspirin) Source (E.g. Bayer, Inc.) Strong Weak None

Abandonment Nonuse Trademark (Amos & Andy) Source (CBS, Inc.) Trademark (Amos & Andy) Source (CBS, Inc.) Trademark (Amos & Andy) Source (CBS, Inc.)

Sports Teams

Abandonment Trademark (HEARTLAND) Source (Sears, Inc.) Assignment in Gross Trademark (HEARTLAND) Source (Clark & Freeman Corp.) ? ?

Abandonment Trademark (DA VINCI) Source (Barcamerica) Naked Licensing Trademark (DA VINCI) Source (Barcamerica) Licensee (Renaissance) ?

Abandonment Failure to Police Trademark (BADGER) Source (U.W.) Trademark (BADGER) Source (U.W.) Trademark (BADGER) Source (U.W.)

Administrative Details Next Assignment –VI.A.1 & 2 – Likelihood of Confusion