Fall Trademark Law1  Sept. 11, 2006  Week 3  Chapter 3 - Acquisition of Trademark Rights Reading:  Pgs

Fall Trademark Law2 Administrative Stuff  Confirm Roster Are you on it? Do you want to get credit for the class…  Seating chart Are you on it? Do you want me to call you by your name? (I’ll still call on you) Note I use the seating chart for class participation points…  I want to know you better – please send me a short about yourself

Fall Trademark Law3 Review - Trademarks  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 Lanham act protects both Registered vs. Unregistered marks

Fall Trademark Law4 Review – What is a TM?  Subject Matter Must be Distinctive  Ability, as used or proposed use, to distinguish owner’s goods from the goods of another. Must be Non-Functional

Fall Trademark Law5 Review - What makes a Trademark protectable?  A Designator  Used in Commerce  To Distinguish the mark owner’s goods/services from those goods/services of another  A trademark is a designator [word symbol, device, etc.] used in commerce, to identify and distinguish the mark owner’s goods from the goods of another

Fall Trademark Law6 Review - Classification of Marks  Distinctiveness Scale >

Fall Trademark Law7 Review - Classification of Marks  Distinctiveness Scale >> generic descriptive suggestive, arbitrary, and fanciful

Fall Trademark Law8 Review – Secondary Meaning  2 nd meaning denotes an association in the mind of the consumer between [the mark] and a particular producer  Ways to evidence 2 nd meaning: Amount and manner of advertising consumer surveys Length and manner of use evidence of actual confusion and other evidence.

Fall Trademark Law9 Acquisition of Trademark Rights  How does a mark-owner acquire rights in a mark? Use – what kind of use? Post Intent to Use applications (aka an ITU application)… but more on this later

Fall Trademark Law10 Adoption and Use of TMs  Procter & Gamble (2nd Cir 1980) [134] About P&G and J&J respective marks and use Note efforts to pick the name Note lawyer’s advise

Fall Trademark Law11 Adoption and Use of TMs  What was the outcome for P&G?  Are efforts like P&G’s so-called minor brands programs effective at all?  What efforts would have been legally effective [pg. 145]

Fall Trademark Law12 Adoption and Use of TMs  So we know its about “use in Commerce” within the meaning of the Lanham Act – what does that mean? See 15 U.S.C. §1227 pgs “means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” Larry Harmon Pictures Co v Williams Rest. Corp. (Fed Cir 1991) [147] Sales are not the only way– see “or transported” language of 15 USC § Transportation (coupled with bona fide intent) is enough

Fall Trademark Law13 Adoption and Use of TMs  Quote from Silenus Wines, (CCPA) [149]  “We see no basis for the meaning of commerce in the registration context to be different from the meaning in the infringement context, particularly since the meanings both derive from the same definition in 15 U.S.C. §1227.”

Fall Trademark Law14 Adoption and Use of TMs  What about extraterritorial “use in commerce?” Buti v. Impressa Perosa (2nd cir. 1998) [151]  What about a phone number – is that a “use in commerce?” DaimlerChrysler AG v. Bloom (8 th Cir 2003) [Suppl. Pg 13]

Fall Trademark Law15 Adoption and Use of TMs  Ownership (aka who owns a mark)  Bell v. Streetwise Records [155] Facts, Issue, Rule, Analysis, Conclusion  Issue – who owns the mark  Rule – (1) identify the quality or characteristic for which the group is known by the public; (2) then determine who controls that quality or characteristic

Fall Trademark Law16 Adoption and Use of TMs  Is Robi v. Reed (9th cir. 1999) [160] consistent with the rule from Bell v. Streetwise?

Fall Trademark Law17 Next Week  Chapter 3 - Acquisition of Trademark Rights (cont.)  Pgs (suppl. Beginning on 189)  Pgs (suppl.) N.B. re Supplement: Where assignment merely states “(suppl.)” supplement the assigned reading from the text book as indicated in the supplement (e.g., insert case of page xyz, delete case, etc.). Some assignments simply add material in the supplement (e.g., Playboy vs. Netscape (starts on Suppl. pg.80).