1. Intellectual Property
Boston College Law School
March 26, 2007
Trademark - Intro, Subject Matter

2. Trademark - Introduction

3. Trademark Act - History
Pre-1870: state common law protection
1870: first federal trademark act;
Based on Copyright and Patent clause
Struck down as unconstitutional
1881: new federal trademark statute
Based on Commerce Clause
Upheld as valid exercise of commerce power
1946: Lanham Act
1996: Anti-Dilution Act

4. Why Protect Trademarks?
1. Protect consumers from confusion
2. Provide incentives for investing in quality
3. Prevent other companies from free-riding
4. Reward companies for their labor
5. Protect value of trademark (and associated goodwill) as a good in itself

5. Costs of Trademark Protection
1. May raise costs of competition
2. May hurt consumers
3. May harm free speech interests

6. Overview Requirements Duration Rights (1) Distinctiveness
(2) Use in commerce
Registration not required (although benefits)
Duration
As long as used and distinctive
Rights
Protect against consumer confusion
Protect against dilution (for famous marks)

7. What is a trademark? Lanham Act § 45 (15 U.S.C. § 1125)
Trademark. 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 in commerce and applies to register …
to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….

8. Qualitex v. Jacobson
Web Site

9. Hypothetical

10. Hypothetical

11. Hypothetical

12. Color and Sounds

13. Other Types of Marks Trade Dress and Product Design Service Marks
Collective Marks
Certification Marks

14. Service Marks Lanham Act § 3 (15 U.S.C. § 1053)
Subject to the provisions relating to the registration of trademarks, so far as they are applicable, service marks shall be registrable, in the same manner and with the same effect as are trademarks, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks.

15. Collective Marks Lanham Act § 45 (15 U.S.C. § 1125)
Collective Mark. The term “collective mark” means a trademark or service mark -
(1) used by the members of a cooperative, an association, or other collective group or organization ….

16. Certification Marks Lanham Act § 45 (15 U.S.C. § 1125)
Certification Mark. The term “certification mark” means any word, name, symbol, or device ... -
(1) used by a person other than its owner, …
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services ...
Champagne

17. Administrative Details
Next Assignment
Read through VI.C.1 – Distinctiveness
No Class Friday