2. Intro to Trademark Law Intro to IP – Prof. Merges 3.13.12 [originally scheduled for 3.8.2012]

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. 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 on the principal register established by this chapter, 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. – 15 USC § 1127

14. The term “certification mark” means any word, name, symbol, or device — (1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person..., to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

15. 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, or (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce..., and includes marks indicating membership in a union, an association, or other organization. – Lanham Act § 45, 15 USC § 1127

16. (a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

17. (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. – Lanham Act § 43(a), 15 USC § 1127

18. Qualitex v. Jacobson Facts Holding

19. 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.

20. Colors and other trademarks Colors are different from “fanciful, arbitrary or suggestive” marks

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

22. Inherently Distinctive Secondary Meaning Required Fanciful & Arbitrary Suggestive Generic Descriptive Geographic Name Personal Name No Trademark Distinctiveness Spectrum Fanciful Kodak (photo supplies) Clorox (bleach) Black & White (Scotch Whiskey) Stork Club (night club) Arbitrary Apple (computers) Greyhound (bus) Coppertone (sun tan oil) Cyclone (wire fence) Raisin Bran (cereal) Lotsa Suds (dish washing liquid) McDonalds (restaurant) New York Times (newspaper) Chap Stick (lip balm) Thermos (vacuum-insulated bottle) Yo-Yo (toy) Escalator (moving stairway)

23. But, over time... “customers may come to treat a particular color on a product or its packaging... As signifying a brand.” – IPNTA 5 th p. 746 Descriptive trademark treatment

24. Color = descriptive And requires proof of “secondary meaning” Source-identifying meaning

26. “Big Blue”

28. Dry Cleaning Press

30. 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?

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

32. Green color is a symbol Stands for the producer, the source company Not serving a functional purpose here

33. Four objections to TMs for color Breyer’s response: none of them hold up (1) slippery slope/disputes; (2) depletion; (3) old cases; (4) incorporate color into broader mark

34. Color and Functionality Red emergency signs?

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

36. Zatarain’s Generic marks: defense Statute: section 14, 15 USC 1064(c)

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

38. Generic Marks Words that do not serve as trademarks Identified with category or type of product, rather than one company or source: Aspirin; Jello; Cellophane; Thermos; Kleenex/Xerox?

39. Marks “born generic” A category of “descriptive” marks under section 2 Refused registration under Lanham Act sec. 2(e): “Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive...”, 15 USC 1052(e)

40. Genericide The mark is originally distinctive, and protectable; but becomes over time generic A trademark that is “too successful” -- ?

41. Cancellation: 15 USC 1064 A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed... (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered....

42. “Judicial cancellation” Court-agency interaction Judicial review of the trademark register

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

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

45. A & F Sugg. Des. Generic Inherently Distinctive Requires proof of “secondary meaning” No trademark protection

46. 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

47. 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

48. Sec. 1052 (Lanham Act sec. 2). Trademarks Registrable on Principal Register; Concurrent Registration No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it — (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them....

49. Statutory basis: registration of descriptive marks Except as expressly excluded in paragraphs... of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. -- Lanham Act sec. 2f, 15 USC 1052(f)

50. 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

51. In one survey, telephone interviewers questioned 100 women in the New Orleans area who fry fish or other seafood three or more times per month. Of the women surveyed, twenty-three percent specified Zatarain’s ‘‘Fish-Fri’’ as a product they ‘‘would buy at the grocery to use as a coating’’ or a ‘‘product on the market that is especially made for frying fish.’’ In a similar survey conducted in person at a New Orleans area mall, twenty-eight of the 100 respondents answered ‘‘Zatarain’s ‘Fish-Fri’’’ to the same questions.

52. Holding Fish Fri is descriptive Secondary meaning found - surveys

53. Fair use Limited only to descriptive marks in TM law Upheld here: defendants did not use “fish fry” “in the TM sense” – only the descriptive sense – IPNTA 5 th p. 759