1. Law 227: Trademarks & Unfair Competition U.S. Prosecution, Part II June 25, 2009 Jefferson Scher

2. TM & Unfair Comp — Day 8 Agenda Examination of U.S. applications  Section 2(e) — Distinctiveness  General: In re Gyulay, Colonial Stores, National Semiconductor, Deus Technologies  Misdescriptiveness/Deceptiveness: 217-224  Geographic: 248-260, Supp 29-30  Surnames: 260-263  Sample office action responses

3. Federal Registration Process Distinctiveness — Recap The “Spectrum” of Distinctiveness  Generic — never protectable/registrable  Descriptive — can become protectable; registrable with secondary meaning  Suggestive, Arbitrary, Fanciful — protectable upon use; registrable upon use or with intent to use followed by proof of use

4. Federal Registration Process Descriptive/Suggestive Boundary PTO Approach  Suggestiveness = imagination test  “Suggestive marks are those that, when applied to the good or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods and services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods and services.” §1209.01(a)

5. Federal Registration Process Descriptive/Suggestive Cases Mere Descriptiveness  In re Gyulay: APPLE PIE potpourri  In re Colonial Stores: SUGAR & SPICE baked goods  In re National Semiconductor: WEBPAD handheld for accessing the Internet  In re Deus Technologies: RAPIDSCREEN medical imaging system to scan x-rays

6. Federal Registration Process Sample Descriptiveness Responses DeliverE for advertising services BUSINESS WITHOUT INTERRUPTION for software HOMEPORTAL for residential gateway NETBACKUP for software MARKETTOOLS for market research services

7. Federal Registration Process Deceptive Misdescriptiveness Deceptive Misdescriptiveness Test  (1) Mark misdescribes the goods  (2) Consumers are likely to believe the misrepresentation Deceptiveness adds a third element  (3) Misrepresentation would materially affect the decision to purchase the goods

8. Federal Registration Process Registration of Place Names Test for geographic descriptiveness  (1) Primary significance of the mark is geographic  (2) Purchasers likely to think the goods originate from the place identified in the mark (“goods/place association”)  (3) Goods do originate from that place

9. Federal Registration Process Registration of Place Names Deceptive misdescriptiveness  (1) Primary significance is geographic  (2) Goods/place association  (3) Goods do not originate there  (4) Erroneous belief about origin of the goods would materially affect purchase decision (e.g., because renowned for the relevant goods)

10. Federal Registration Process Refusal When Not Used as a Mark What about HEMI?  Refers to “hemispherical” cylinder heads of the engine... how to own it for cars?  Use “on” the goods  Use perceived as a source identifier  Where would you put the mark?  How else might you show that it functions as a mark for cars?

11. Federal Registration Process Testing Your Understanding Summer 2005 Final Exam Scenario 1  Structure of scenario  Office action, web pages from “the file”  Draft response (with additional comments)  “Short answer” questions (Q1, Q8)  Multiple choice questions (Q2-7, Q9-16)  Estimated time to complete: 2 hours  Difficult without a good outline!

12. TM & Unfair Comp — Up Next Topics and Reading for Day 9 Loss of Rights, Due Diligence  Genericism  Ch. 5, pp. 274-305; Supplement pp. 31-36  Abandonment  Ch. 5, pp. 305-326; Supplement pp. 36-39  Online: Sample transactional documents  Due Diligence  Online: Scenario