What’s in a Trademark Anyway? Dan McKinnon, New Balance Athletic Shoe, Inc. Harvard University - July 10, 2008

1 Confidential I. The Law Intellectual Property Definition: a bundle of exclusive rights over creations of the mind, both artistic and commercial PatentsCopyrights Trademarks Inventions, designs, processes Literary works, poems, photographs, modicums of expression “fixed in a tangible medium.” Anything used in commerce to designate the source of origin of a particular good or service.

2 Confidential I. The Law Trademarks are always used in connection with a particular good or service   The USPTO follows the International Classification of Goods and Services (there are a total of 45 distinct classes)

3 Confidential I. The Law TRADEMARKS Anythingused in commerce to designate source of origin of a particular good or service. Anything? Really? what about sounds? Reg. No Reg. No Status: Opposed

4 Confidential I. The Law Where’s the trademark? On April 12, 1960 Coca- Cola was granted trademark protection for this unique “contour bottle” shape. How about now? Ask Yourself: Without seeing the label, do you still know this is a Coke?

5 Confidential I. The Law Not All Trademarks are Born Equal Under the Law Exercise:Suppose we are starting a refrigerator company a) The ‘Fridge b) Arctic c) Kasurion

6 Confidential I. The Law SPECTRUM OF DISTINCTIVENESS FancifulArbitrarySuggestiveDescriptiveGeneric Easiest to RegisterImpossible to Register

7 Confidential I. The Law Fanciful Arbitrary Suggestive Descriptive Generic Park’n Fly

8 Confidential I. The Law FancifulArbitrarySuggestiveDescriptiveGeneric SPECTRUM OF DISTINCTIVENESS Exercise:

9 Confidential I. The Law Acquired Distinctiveness/Secondary Meaning

10 Confidential I. The Law TM VS Common lawFederal Law

11 Confidential I. The Law Trademark Infringement Who remembers the Eddie Murphy movie “Coming to America”? Section 2(d) of the Lanham Act: “Likelihood of Confusion”

12 Confidential I. The Law Any questions before we move on

13 Confidential II. Business & Law So how does this impact business? On July 2, 2008, I received an from one of my foreign associates in Ecuador.

14 Confidential II. Business & Law

15 Confidential II. Business & Law The Problems: 1. Goodwill 2. Liability 3. Dilution of the Brand/Poor Quality Product 4. Expenses and costs to fight this

16 Confidential III. Bonus BONUS QUESTION FOR AN IPOD SHUFFLE From a trademark standpoint, why would new balance have a more difficult time protecting its brand than any of its three major competitors?

17 Confidential IV. The End Thank you…Any Questions…