1. Trademark and Unfair Comp. Boston College Law School September 7, 2004 Distinctiveness

2. 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 ….

3. Categories of Marks Less ProtectionMore Protection Generic Denotes general class of products Unprotectible Shredded Wheat, Aspirin, Thermos, Cellophane, Car, Computer Arbitrary Bears no relation to product Automatically Protectible Descriptive Describes some characteristic/quality Protectible if secondary meaning Suggestive Suggests some characteristic Automatically Protectible

4. Policy Considerations Distinctiveness Generic Descriptive Suggestive Arbitrary Low High Potential for Confusion Harm to Competition Unprotectible Secondary Meaning Protectible

5. Descriptive Marks Lanham Act § 2 (15 U.S.C. § 1052) –No trademark … shall be refused registration … unless it -... (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive … of them …. (f) Except as expressly excluded … nothing herein shall prevent the registration of a mark … which has become distinctive of the applicant’s goods in commerce.

6. Categorizations Trademark TENDER VITTLES ( cat food ) ROACH MOTEL ( roach trap ) CHAP STICK ( lip balm ) VISION CENTER ( optical store ) BEER NUTS ( snack food ) FAB ( laundry detergent ) BOLD ( laundry detergent ) STRONGHOLD ( nails ) CITIBANK ( banking services ) NUTRASWEET ( sweetner ) Category Descriptive Suggestive Descriptive Arbitrary Suggestive Descriptive

7. Secondary Meaning Definition: primary significance of the term in the minds of the consuming public is not the product but the producer Factors –Consumer surveys –Amount and volume of advertising –Volume of sales –Length and manner of use –Direct consumer testimony

8. Secondary Meaning Time 0% 50% Consumers who Assoc. Achieved Secondary Meaning Quik-Print Start Use No Protection

9. Rock & Roll Hall of Fame

10. Next Assignment –Read part of section II.C - Trade Dress –Through Morton-Norwich