2. Intro to Trademark Law Intro to IP – Prof. Merges 3.10.09

3. Comparing Trademark to Patent & Copyright Law Constitutional Foundation – Patent & Copyright clause – Commerce clause (see The Trademark Cases, 100 US 82 (1879) Basic Goal – Pat. & ©: Protect author/inventor; promote progress – TM: Protect consumers

4. Quality assurance in an urban (anonymous) exchange environment

5. Consumer Protection Rationale Fraud cause of action on the part of consumers concentrated and located in the hands of a seller – the trademark “owner” This indirectly encourages expenditures to increase the quality of the TM owner’s goods

6. EARLY HISTORY ancient times first use of trademarks early 19th century common law palming off // medieval guild system 1870 1879 1881 1st Federal Act based on IP Clause Trade-mark Cases: striking down Act Foreign commerce- based Act

7. MODERN HISTORY 1905 1947 19881996 Trademark Act - interstate commerce Lanham Act Trade Dress § 43(a) Revisions intent to use Federal Anti- Dilution Act

8. EXPANDING PROTECTION Scope: Marks Threshold: Actual Use Trade Dress Intent to Use

9. EXPANDING RATIONALE FOR TM Avoiding Consumer Confusion and Reducing Consumers’ Search Costs Property Interests in Image: Image as a Marketable Commodity Encouraging Investment in Advertising and Good Will TORT PROPERTY

10. GUIDING PRINCIPLE CUSTOMER PERCEPTION VALIDITY INFRINGEMENT as a test of:

11. Sources of Trademark Protection FEDERAL LAW STATE LAW Federal Registration Statutory Protection Common Law False Designations of Origin and False Descriptions §43(a)

12. Subject Matter Trademark:“word, name, symbol,or device, or any combination thereof” Trade Name Service Mark Certification Mark Collective Mark SoundFragrance Trade Dress and Product Configuration Hyatt - hotel services Good Housekeeping Slogan“Greatest Show on Earth” - state (not fedl) protection SFA (Snack Food Assoc)

13. Qualitex v. Jacobson Facts Holding

14. Four objections to TMs for color Breyer’s response:

16. “Big Blue”

18. Dry Cleaning Press

20. The term "trademark" 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 …, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

21. Hierarchy of distinctiveness Arbitrary: Exxon; Google Fanciful: Apple Computer Suggestive: “Coppertone” suntan lotion Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

22. Generic Marks Words that have ceased to serve as trademarks Identified with category or type of product, rather than one company or source: Aspirin; Jello; Kleenex/Xerox?

23. Qualitex Functionality doctrine –Shredded Wheat case –Product feature vs. “source indicator” –What role does the product attribute play?

24. Color and Functionality Red emergency signs?

25. Zatarain’s v. Oak Grove Smokehouse Formerly “Chick-Fri”