Trademark – Theory • Consumer protection • lowers information costs • improves product quality • Protect brand investment • Incentivize brand development
Distinctiveness Use in Commerce Priority | | Trademarkable
Trademark Subject Matter • “The term “mark” includes any trademark, service mark, collective mark, or certification mark .” Lanham Act § 45 • Source Identifier
Trademark Subject Matter • 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 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 .” Lanham Act § 45
Trademark Subject Matter • Trademark:
Trademark Subject Matter • Service Mark: “The term “service mark” means 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 the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. . . . .” Lanham Act § 45
Trademark Subject Matter • Service Mark:
Trademark Subject Matter • Certification Mark: “The term “certification mark” means any word, name, symbol, or device, or any combination thereof (1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter, 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 . . . performed by members of a union or other organization.” Lanham Act § 45
Trademark Subject Matter • Certification Mark:
Trademark Subject Matter • 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, or (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, and includes marks indicating membership in a union, an association, or other organization. ” Lanham Act § 45
Trademark Subject Matter • Collective Mark:
Trademark Subject Matter • Qualitex v. Jacobson • Can color be a trademark? • “includes any word, name, symbol, or device, or any combination thereof” Lanham Act § 45 • “source - distinguishing ability of a mark” (p. 746) • needs “secondary meaning” • protection attaches only after associated to source by consumers
Trademark Subject Matter • Qualitex v. Jacobson • Do we care about color’s utility/function? • No protection if the color is “essential to the use or purpose of the product or affect quality or cost of product” (p. 748 -49) • No protection if creates non-brand related competitive advantage • Protection of functional aspects for Patent Law
Trademark Subject Matter • Hypos
Trademark Subject Matter • What about? • Product design (trade dress)? • What about sound? • Sound 1 Sound 2 Sound 3 • What about smell?
Trademark — Spectrum of Distinctiveness Can Acquire Never Distinctiveness (Secondary Inherent Distinctiveness Distinctive Meaning) Arbitrary Generic Suggestive Descriptive or Fanciful Decreasing Distinctiveness
Trademark – Distinctiveness • Zatarain’s v. Oak Grove • Is Fish-Fri distinctive? • Is it descriptive? • dictionary • imagination test • barrier to competition test • look at others use of term • If descriptive, need secondary meaning ? • primary significance of mark is identify source • advertising • investment • survey
Trademark – Distinctiveness • Zatarain’s v. Oak Grove • If Fish-Fri has secondary meaning? • fair use defense • can use to describe goods, not source • What about Chick-Fri ? • descriptive • no secondary meaning • no protection
Trademark – Trade Dress • Two Pesos v. Taco Cabana • What is mark?
Trademark – Trade Dress • Two Pesos v. Taco Cabana • Can trade dress be source identifying? • Jury finds inherently distinctive, but no secondary meaning • Can it be inherently distinctive? • How do you resolve this with Qualitex ? • What is the Court’s concern?
Trademark – Trade Dress • Wal-Mart v. Samara Bros. • What is the mark? • Does this change the requirements for trade dress? • If product configuration then descriptive at best • Qualitex • What if product packaging? • What if both? • What is the Court’s concern?
Trademark – Trade Dress • Hypos.
Trademark – Use and Priority • In common law, protection goes to first to “use in commerce” • Limited to geographic area of use • Plus area of normal expansion of business • And goods and services used on • “The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark .” Lanham Act § 45. • Registration=de facto nationwide use
Trademark – 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 — (a) Consists of or comprises immoral, deceptive, or scandalous matter . . . or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods . . . (b) [flag of U.S., state, or foreign country] (c) [living person w/o consent or dead president while widow alive, w/o widow’s consent” Lanham Act § 2
Trademark – Registration “( d) Consists of or comprises a mark which so resembles a mark . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive . . ., (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them ,” Lanham Act § 2
Trademark – Registration • In re Nantucket • Mark is “Nantucket” for shirts not made in Nantucket, MA • § 2(e)(2) – geographically descriptive • Primary significance of the mark is geographic • Purchasers likely make a goods/place or services place association • Mark identifies the geographic origin of goods or service • Here, is it geographically descriptive? • Notice could overcome with secondary meaning • Idaho Potatoes, Virginia Ham, Virginia Peanuts • If made in those locations
Trademark – Registration • In re Nantucket • § 2(e)(3) – geographically deceptively misdescriptive • Primary significance of the mark is geographic • Purchasers likely make a goods/place or services place association • Goods or service do not originate from place identified • Here, is it geographically deceptively misdescriptive? • Notice cannot overcome with secondary meaning • Cuban Cigar not from Cuba
Trademark – Registration “( e) Consists of a mark which . . . (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) 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 2.
Trademark – Registration
Trademark – Likelihood of Confusion “( 1) Any person who shall, without the consent of the registrant — (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is , or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided .” Lanham Act § 32
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