Law 227: Trademarks & Unfair Competition What is a Trademark? June 4, 2009 Jefferson Scher

TM & Unfair Comp — Day 2 Agenda What Can be Protected as a Mark?  Types of symbols  Distinctiveness  Symbols that are inherently distinctive  Symbols that have acquired distinctiveness In-Class Exercise  Creating protectable identity

Protectability of Trademarks Form Follows Function Back to Basics — RS §9 p83  Word, name, symbol, device, or other designation (or combination thereof)  Distinctive of a person’s goods/services  Used in a manner that identifies those goods/services and distinguishes them from the goods/services of others

Protectability of Trademarks Spectrum of Distinctiveness Where do these fall on the spectrum?  SHREDDED WHEAT p44  For a pillow-shaped breakfast cereal  For a Facebook application that lets you send someone a bowl of cereal  For a tan-colored mobile phone skin with a ribbed texture

Protectability of Trademarks Spectrum of Distinctiveness Where do these fall on the spectrum?  QUIK-PRINT p82  For printing and duplication services  For a button on a digital camera that sends a photo to a printer  For a button on a web page that s you a PDF of the page

Protectability of Trademarks Distinctiveness — Hypothetical Categorize THREADZ for...  A chain of thrift stores  Men’s and women’s workout clothing  Restaurant featuring saffron rice dishes  High performance computer operating system software  Computer games featuring arachnids

Protectability of Trademarks Secondary Meaning — FISH-FRI Goodbye Trademark?

Protectability of Trademarks The Intersection of Distinctiveness and Use Rock & Roll Hall of Fame and RS §9  Is it a symbol or device  Distinctive of the services  Used to distinguish the museum’s services from those of others?

Protectability of Trademarks The Intersection of Distinctiveness and Use The Museum’s Next Move  Registered a representation of the building design  Secondary meaning was required (mark deemed descriptive)  What about the other side of the building (triangles less prominent)?

TM & Unfair Comp — Up Next Topics and Reading for Day 3 Red Team “on” Use issues: acquisition & priority  Chapter 3, pp , ,  Supplement pp  Online: Chance, All Video Likelihood of confusion  Chapter 6, pp ; Online: AMF