Trademark and Unfair Comp. Boston College Law School October 7, 2004 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 - Flags, Individuals Lanham Act §2: –Shall register mark unless it: “(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation … “(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent …”

Bars - Likely to Cause Confusion Lanham Act §2: –Shall register mark unless it: “(d) consists of or comprises a mark which so resembles a mark registered … or a mark or trade name previously used in the United States by another and not abandoned, as to be likely … to cause confusion, or to cause mistake, or to deceive.”

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: –(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive … upon proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made ….

Lanham Act §2(e) Descriptive –“ORGANIC” for organically grown oranges Deceptive –“ORGANIC” for non-organic oranges Deceptively misdescriptive –“JOE’S FAVORITE” for oranges that aren’t Joe’s favorite Nondeceptively misdescriptive (arbitrary) –“ATOMIC” for oranges Geographically descriptive –“FLORIDA” for Florida oranges Geographically deceptive –“FLORIDA” for Georgia oranges Geographically deceptively misdescriptive –“FLORIDA” for auto parts from New Jersey Geographically nondeceptively misdescriptive (arbitrary) –“ANTARCTIC” for Georgia oranges

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

Examples, Redux Geographic Descriptive Florida (Florida Oranges) Misdescriptive Nondeceptively Antarctic (Florida Oranges) Deceptively Florida (Georgia Oranges) (NJ Auto Parts) §2(e)(2) - Can register if Secondary Meaning §2(e)(3) - Cannot register Arbitrary or suggestive - Can register

Examples ARIZONA (ice tea, not made in Arizona) NANTUCKET (fruit drinks made in Nantucket) CORNING (glassware products made in Corning, NY) HERSHEY (chocolate made in Hershey, PA and elsewhere) PARK AVENUE (luxury car, not made on Park Avenue) SWISS ARMY KNIFE (pocket knife, not made in Switz.)

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 Details Next Assignment –V.A - Genericity