Trademarks I Introduction to Trademarks Class Notes: March 26, 2003 Law 507 | Intellectual Property | Spring 2003 Professor Wagner

3/21/032Law 507 | Spring 2003 Today’s Agenda 1.Intro to Trademarks 2.Trademark Theory 3.The Subject Matter of Marks 4.Registration Procedures

3/21/033Law 507 | Spring 2003 Introduction to Trademarks Trademarks are a relatively ‘newer’ doctrine, with much growth in the 20th century. (Why?)Trademarks are a relatively ‘newer’ doctrine, with much growth in the 20th century. (Why?) Statutory basis:Statutory basis: Lanham Act, 15 U.S.C. et seq. Note: does not necessarily preempt related state laws oTrademarks o‘Unfair competition’ oRights of publicity, etc. What is the ‘term’ of a trademark?What is the ‘term’ of a trademark?

3/21/034Law 507 | Spring 2003 Trademark Theory 1.Who benefits from trademarks? How? 2.What, precisely, are the social benefits of trademarks? (What things does it stimulate?) 3.Consider how trademarks do the following: Lower consumer search costs Enhance product quality 4.Why is branding especially important where aspects of the product cannot be verified? 5.Consider the case of pharmaceutical drugs: is branding socially beneficial?

3/21/035Law 507 | Spring 2003 Trademark Theory (2) What is goodwill? How do trademarks support the development of goodwill? Won’t companies have incentives to create goodwill even without trademarks?Consider: What are the ‘costs’ of trademarks? Are there other ways we could generate the same benefits without extending the property right? (Will these necessarily require government intervention?) Much recent criticism of trademarks is related to their increasing power across a variety of products (‘leveraging the brand’). How troubling is this trend?

3/21/036Law 507 | Spring 2003 The Subject Matter of Marks Basic point: trademark protection depends upon the ‘strength’ of the mark A hierarchy of strength: (Why this order?) 1.Arbitrary marks 2.Suggestive marks 3.Descriptive marks 4.Generic marks

3/21/037Law 507 | Spring 2003 The Subject Matter of Marks 15 USC § 1127 Trademarks: word, name, symbol, device, or any combination thereof … to distinguish goods from others and indicate source oWhy the requirement for ‘use’ or ‘intent to use’ in commerce? Service mark: same as trademarks, but identify services. Trade names: identify companies, not products (no traditional trademark protection, though perhaps state law protection)

3/21/038Law 507 | Spring 2003 The Subject Matter of Marks Qualitex Co v Jacobson Products Co., Inc. (1995) What does the court suggest is the test for whether particular types of subject matter can be trademarked? Consider the following objections to colors as marks: oUncertainty concerning infringement oA limited supply of colors (Should the court be concerned that there are physical limitations on the numbers of colors perceptible by humans? Why or why not?) oFunctionality oIrrelevance: use a logo with color, etc. instead

3/21/039Law 507 | Spring 2003 The Subject Matter of Marks Certification Marks: What are certification marks? How are they truly different from trademarks? Collective Marks: What are they? How are they different from trademarks? Trade Dress and Product Configuration What do we mean by trade dress/configuration?

3/21/0310Law 507 | Spring 2003 Registration Procedures 1.Why ‘register’ your trademark? (What are the advantages?) 2.From a social perspective, the registration process is costly. Why do it? (i.e., why provide the incentive to do so?) 3.What is the difference between the principal and supplemental register?

3/21/0311Law 507 | Spring 2003 Registration Procedures Grounds for Refusing Registration Immoral or scandalous marks Harjo v Pro-Football Inc. (TTAB 1999) oWhy does the Board order cancellation? oWhat evidence does the court use to find disparagement? oIs this decision a 1st Amendment problem? oWhat is the effect of this case? oWho has standing to oppose marks on these grounds? oWhy reject immoral or scandalous marks

3/21/0312Law 507 | Spring 2003 Registration Procedures Grounds for Refusing Registration Geographic Marks i (CCPA 1982) Why forbid the registration of geographic marks? The test: 1.Does the mark have a geographic meaning? 2.Do the goods come from that place? 3.Are consumers likely to be deceived concerning the origin of the goods? – Three cases: (Which is this case?) – Primarily geographically deceptively misdescriptive – Primarily geographically descriptive – Primarily geographically misdescriptive

3/21/0313Law 507 | Spring 2003 Registration Procedures Grounds for Refusing Registration Marks which are “Primarily Merely a Surname” Why deny registration of marks that are primarily merely a surname? Why has the appeal of this denial faded over time? Why does it matter whether the surname is common? What is the ‘test’? (How does one determine what the ‘average consumer’ would do?)

3/21/0314Law 507 | Spring 2003 Registration Procedures Opposition Procedures Key issues: standing + lack of right to registerKey issues: standing + lack of right to register Timing: prior to registrationTiming: prior to registrationCancellation Timing: after registrationTiming: after registration Can sue for cancellation in Federal CourtCan sue for cancellation in Federal Court Concurrent Registration What is concurrent registration? When will it be allowed?What is concurrent registration? When will it be allowed?

3/21/0315Law 507 | Spring 2003 Next Class Trademarks II Establishment of Trademark Rights