1. Trademarks II Establishment of Trademark Rights Class 20 Notes Law 507 | Intellectual Property | Spring 2004 Professor Wagner

2. 2/13 Today’s Agenda 1.Registration Procedures 2.Distinctiveness 3.Priority 4.Incontestability

3. 3/13 Registration Procedures 1.Why ‘register’ your trademark? (What are the advantages?) 2.From a social perspective, the registration process is costly. Why do it? (i.e., why provide the incentive to do so?) 3.What is the difference between the principal and supplemental register?

4. 4/13 Registration Procedures Grounds for Refusing Registration Immoral or scandalous marks Harjo v Pro-Football Inc. (TTAB 1999) oWhy does the Board order cancellation? oWhat evidence does the court use to find disparagement? oIs this decision a 1st Amendment problem? oWhat is the effect of this case? oWho has standing to oppose marks on these grounds? oWhy reject immoral or scandalous marks?

5. 5/13 Registration Procedures Grounds for Refusing Registration Geographic Marks In re Nantucket (CCPA 1982) Why forbid the registration of geographic marks? The test: 1.Does the mark have a geographic meaning? 2.Do the goods come from that place? 3.Are consumers likely to be deceived concerning the origin of the goods? – Three cases: (Which is this case?) – Primarily geographically deceptively misdescriptive – Primarily geographically descriptive – Primarily geographically misdescriptive

6. 6/13 Registration Procedures Grounds for Refusing Registration Marks which are “Primarily Merely a Surname” Why deny registration of marks that are primarily merely a surname? Why has the appeal of this denial faded over time? Why does it matter whether the surname is common? What is the ‘test’? (How does one determine what the ‘average consumer’ would do?)

7. 7/13 Registration Procedures Opposition Procedures Key issues: standing + lack of right to registerKey issues: standing + lack of right to register Timing: prior to registrationTiming: prior to registrationCancellation Timing: after registrationTiming: after registration Can sue for cancellation in Federal CourtCan sue for cancellation in Federal Court Concurrent Registration What is concurrent registration? When will it be allowed?What is concurrent registration? When will it be allowed?

8. 8/13 Distinctiveness Zatarains v Oak Grove Smokehouse What categories of marks does the court note? (Which one does the mark-at-issue fall within?) What are the differences in protectability? What is the underlying theory here? (What is it that makes a make ‘strong’ or ‘weak’, and why?) Why are suggestive and arbitrary marks ‘inherently distinctive’? Does this mean that generic and descriptive marks are unprotectable? What is ‘secondary meaning’? (How do you show it?) oWhy is Chick-Fri deemed unprotectable?

9. 9/13 Distinctiveness Trade Dress & Product Configuration Two Pesos v Taco Cabana (1992) How is ‘trade dress’ different from a trademark? (Should this impact its strength?) What is the ‘rule’ of this case? Why does the court suggest that allowing inherent protection for trade dress is good policy? (Do you agree?)

10. 10/13 Distinctiveness Trade Dress & Product Configuration Wal-Mart Stores v Samara (2000) What is the ‘rule’ of this case? (Can you reconcile this with Two Pesos?) What policies lead the court to decide that product design cannot be inherently distinctive? oHow do these policies compare with the ones invoked in Two Pesos? Is the distinction with product packaging meaningful? (Was Two Pesos really a packaging case?) Does this case suggest that product design is not protectable under trademark law?

11. 11/13 Priority s Designs v L’Oreal (7th Cir. 1992) Who gets the rights to a trademark that is being simultaneously used? Why does the court emphasize the need to have bona fide “use” in commerce in order to perfect a trademark right? Why does the dissent argue that L’Oreal’s knowledge defeats any possibility of priority? Shouldn’t ZHD have some rights due to its long use of the service mark? Note the 1989 revisions: allow registration for ‘intent to use’ (within time limits). What problem does this address? (Is there a constitutional problem?)

12. 12/13 Incontestability Park ‘N Fly v Dollar Park and Fly (1985) What is an ‘incontestable’ mark? oWhat is required for incontestability? oWhat advantages does it confer? Why would we want to provide incontestability? oWe don’t do this in Copyright or Patents oIs this too ‘property-like’? What is (as the dissent suggests) the mark is not protectable from the outset of its registration/use? (Is there a problem?)

13. 13/13 Next Class Trademarks III Infringement of Trademarks