1. Intellectual Property Boston College Law School March 23, 2009 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 –(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

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. Overview Requirements –(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)

18. 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

19. Policy Considerations Distinctiveness Generic Descriptive Suggestive Arbitrary Low High Trademark Significance Costs from Protection Unprotectible Secondary Meaning Protectible

20. Zatarains v. Oak Grove

21. 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

22. 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

23. Secondary Meaning Marks Requiring Secondary Meaning –Descriptive Marks –Surnames –Geographical Marks (some) –Trade Dress and Product Design?

24. Trade Dress & Product Design Trade DressProduct Design

25. Two Pesos v. Taco Cabana

26. Two Pesos v. Taco Cabana 505 U.S. 763 (1992) Findings of the District Court –Taco Cabana has an identifiable trade dress –The trade dress is non-functional –The trade dress is inherently distinctive –The trade dress has not acquired secondary meaning

27. Inherently Distinctive?

29. Policy Considerations Distinctiveness Generic Descriptive Inherently Distinctive Low High Potential for Confusion Harm to Competition Trade Dress, Trademarks Product Design

30. Example - Review

31. Administrative Details Next Assignment –Finish VI.C