Fall Trademark Law1 Course Introduction Course Introduction Aug. 21, 2006 Aug. 21, 2006 Week 1 Week 1 Reading Reading Pgs Pgs

Fall Trademark Law2 Administrative Issues  Administrative Stuff Attendance Review of Academic calendar  N.B. We are a day class  We’re a 3 unit class… that only meets once a week. Better to think of it as having two class meeting a week, both of which are on the same day! Please fill out both seating charts

Fall Trademark Law3 Prof. David Steele  Contact Information Phone: (949) my david.steele - the at symbol - cph.com Office hours  I am extremely available for meeting and talking with students! My regular office hours are on Monday after class. However, if that time doesn't work for you we will find a time that works for you. Additionally, I encourage students to or telephone me with questions or thoughts about the material. My Background

Fall Trademark Law4 Evaluation of students Final Exam  The exam will be 3 hours long; multiple choice Questions from reading and lectures (so I suggest doing the reading, coming to class, being prepared, etc.) I don’t play hide the ball The questions will test your understanding of material and not just memorization Complex questions will be asked: a and b, but not c, etc.; match the concept to the facts, etc.  N.B. Students are responsible for determining the time and location of the exam. This information may be obtained by the Office of the Registrar

Fall Trademark Law5 Evaluation of students  Class participation points + or - 3 points to final grade factors:  Being prepared for class Being on time (generally) Being Prepared (read the assigned materials, etc.) Productively participating in the class

Fall Trademark Law6 Outline of Class I  See class web site for syllabus, reading assignments, lecture slides, and more  We’re going to track the text book closely  Chapter 1 - Concepts of Trademarks and Unfair Competition  Chapter 2 - What is a Trademark?  Chapter 3 - Acquisition of Trademark Rights  Chapter 4 - Registration of Trademarks  Chapter 5 - Loss of Trademark Rights

Fall Trademark Law7 Outline of Class II Chapter 6 - Infringement Chapter 6 - Infringement (continued) Chapter 7 - False Designation of Origin Chapter 8 - Advertising Chapter 9 - Author's and Performer's Rights Chapter 10 - Dilution Chapter 10 - Dilution (continued) Chapter 11 - Trademarks and the Internet Chapter 12 - Trademarks as Speech Chapter 14 - International Aspects of Trademark Protection

Fall Trademark Law8 About The Class There is a lot of reading  Big cases, small cases, notes/comments, questions 3 unit class – but we only meet once a week  Think of it as two classes (twice the time, twice the reading, twice the preparation)  Don’t miss a class unless you really have to (and if so, get notes or ask me to discuss the materials with you) Be prepared, be on time, ask questions if you don’t understand something Participate in the class ANY QUESTIONS?

Fall Trademark Law9 Then… Let’s Begin –Unfair Competition –Old / ancient unfair comp. –Modern times – courts adopt unfair comp. –“Defendant in appropriating it and selling it as its own is endeavoring to reap where it has not sown” INS vs. AP [pg 32]

Fall Trademark Law10 IP Scheme  Federal Scheme and authority  State interaction with Fed. Scheme Patent vs. TM Preemption

Fall Trademark Law11 Quiz 1. Can a state regulate the “patent” area by way of regulating traditional unfair competition law? YesNoMaybe

Fall Trademark Law12 Quiz 1. Can a state regulate the “patent” area by way of regulating traditional unfair competition law? YesNoMaybe No

Fall Trademark Law13 Introduction to Trademark Law The Big Picture: Intellectual Property Law –Mixture of Statutes and common law –Three main areas of IP are Patents, Trademarks, and Copyright. –IP rights are negative rights - not a right to do something, but the right to stop someone else from doing something.

Fall Trademark Law14 Copyrights I  Subject matter - what can be copyrighted original works that are in a fixed concrete "medium of expression”  Duration - author’s life +70 years

Fall Trademark Law15 Copyrights II  Examples

Fall Trademark Law16 Copyrights IV  Authority U.S. Constitution, Article I, Section 8 - The Congress shall have power... to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;

Fall Trademark Law17 Copyrights IV  Delegation The U.S. Copyright Act, 17 U.S.C. §§ , is Federal legislation enacted by Congress to protect the writings of author The federal agency charged with administering copyrights is the Copyright Office of the Library of Congress

Fall Trademark Law18 Copyrights V  Rights - what does it let the author do gives the author the exclusive right to reproduce, distribute, perform, display, or license his work the author also receives the exclusive right to produce or license the production of derivatives of his work limited exceptions to this exclusivity exist for types of "fair use", such as book reviews.

Fall Trademark Law19 Patents I  Subject matter - what is patentable "utility" patents - issued for four general types of inventions/discoveries: machines, man made products, compositions of matter, and processing methods design patents (ornamental, non-functional characteristics of an article of manufacture) plant patents

Fall Trademark Law20 Patents II  Examples (utility and design)

Fall Trademark Law21 Patents III  Authority U.S. Constitution, Article I, Section 8 - The Congress shall have power... to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;

Fall Trademark Law22 Patents IV  Delegation Patent statutes 35 U.S.C. §§ have been enacted by Congress to protect inventor's discoveries.  The federal agency charged with administering patents is the United States Patent and Trademark office

Fall Trademark Law23 Patents V  Duration Older patents - 17 years from issue date Newer patents - 20 years from filing date

Fall Trademark Law24 Patents VI  requirements to get a patent - invention must be novel, useful, and not of an obvious nature  how is a patented issued - apply to the Patent and Trademark Office - must disclose how to make the invention. The invention cannot have been in the public for more than a year before applying  examples?

Fall Trademark Law25 Patents VII  Rights - what does it let the inventor do grants the right to exclude others from making, using, or selling the inventor's discovery or invention how long is it good for - a limited period of time (used to be 17 years from issue, now 20 years from filing)

Fall Trademark Law26 Trademarks I  Subject matter Any word, name, symbol, or device, or any combination thereof used, or intended to be used, in commerce to distinguish the trademark owner's goods, from those of another Examples?

Fall Trademark Law27 Trademarks I(a)  Examples: Word(s): laser jet Name: Kodak Symbol: Covered Wagon Device:  Sound – NBC chime  Color – Tiffany Bag, Owens Corning “Pink”

Fall Trademark Law28 Trademarks II  Authority U.S. Constitution, Article 1, Section 8, Clause 3 - The Congress shall have power... To regulate commerce with foreign nations, and among the several states, and with the Indian tribes; Constitutional grant of authority is not express, rather it relies on the commerce clause “to regulate interstate and foreign commerce.”

Fall Trademark Law29 Trademarks III  Authority Trademarks are not exclusively a Federal area States may also regulate trademarks - all have a statute on point

Fall Trademark Law30 Trademarks IV  Delegation Congress enacted Lanham Act - 15 U.S.C. §§  protects both Registered vs. Unregistered marks  Registered vs. Unregistered marks  N.B. Lanham act numbering -Trademark lawyers exclusively use the Act’s numbering and not the U.S. Code numbering. I’ll try to use both for clarity.

Fall Trademark Law31 Trademarks V Congress also created an Admin. agency (U.S. Pat. & Trademark Office) to administer the registration of trademarks Trademark Trial and Appeal Board  Duration - trademarks can last forever so long as they are continuously used

Fall Trademark Law32 Trademarks VI  Basic History of Trademark law Developed from TRADE (commerce) Unfair trade (a.k.a. unfair competition) Basic tenant - protect the consumer  If the trademark is initially, approved by an examiner, it is published in the Official Gazette of the Trademark Office to notify other parties of the pending approval so that it may be opposed

Fall Trademark Law33 Trademarks VII  Rights - what does it let the trademark owner do prohibit others from using a similar mark in a manner that is likely to cause consumer confusion

Fall Trademark Law34 Statutory Definition  15 U.S.C. §1127 reads:  The term '’service mark'' includes any word, name, symbol, or device, or any combination thereof - (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown....

Fall Trademark Law35 Trademark vs Service Mark  Trademark is used for goods  Service mark is used for services Because the legal requirements for both trademarks and service marks are usually the same, I’ll use "trademark" or simply “mark” to for both trademark and service mark (unless different rules apply to each).  TM == Trademark (all one word)  SM == Service mark (two words)  ® == Registered mark

Fall Trademark Law36 Common Definition  TM - a designator used in commerce; to identify and distinguish the mark owner’s goods from the goods of another

Fall Trademark Law37 What makes a Trademark protectable?  A DESIGNATOR  USED IN COMMERCE  TO DISTINGUISH THE MARK OWNER’S GOODS FROM THE GOODS OF ANOTHER  A designator used in commerce, to identify and distinguish the mark owner’s goods from the goods of another

Fall Trademark Law38 Constitutional requirement - otherwise no Authority over TMs What about state trademarks - must they be used in commerce? Why/why not? Use in Commerce

Fall Trademark Law39  Ability, as used or proposed use, to distinguish owner’s goods from the goods of another.  Hanover Star Milling Co. v.. Metcalf [58]  The primary and proper function of a TM is…?  Note quote re “stamping a lion on goods” on pg 60. Distinctive

Fall Trademark Law40 Distinctive  Consumers, upon distinguishing the origin of the goods, ascribe a degree of quality, or other traits to the goods. Examples

Fall Trademark Law41 Trademark Owner’s Responsibility  Mark owner must diligently control the use of its mark to control the “good will” associated with its mark  But what about Champion?

Fall Trademark Law42  Brown (circa 1948) TM  advertising  bad.  Doesn’t help consumers get the most for his money.  Posner (circa 1987) Cost benefit analysis; TM let consumers economize on a real cost because he spends less time searching to get the quality he wants.  Litman (circa 1999) Protect from consumer confusion – beyond that, any value should be treated as a product in itself. Big Picture Theories of TM

Fall Trademark Law43 Quiz How many class participation points are given or taken away

Fall Trademark Law44 Quiz How many class participation points are given or taken away

Fall Trademark Law45 Next Week  Chapter 2 - What is a Trademark? Reading:  Pgs  Pgs