LEGL EXAM 2

Trademark Law In General

• defined: “any word, name, symbol, or device, or any combination thereof used by a person… 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…”

  • can include “Ford” (company) and “Mustang” (individual product)

  • note that device is very broad

  • trademarks answer the question “who made this?”

Goals of Trademark

• protect the reputation of sellers and their investments therein

  • Corollary: if TM is meant to protect reputations, it is likewise not meant to provide non-reputational benefits

• prevent consumer confusion and deception about who made a product

• promote competition in the market by allowing firms to engage in non-misleading advertisements

Trademark History

• one of the first uses of product placement

• bass - first TM registered in the UK (1876)

  • modern US law enacted in 1946 (Lanham Act)

• note that this is a symbol mark, but word marks can likewise be protected

• is Bass beer the only use of the name? how can this be?

• rule: trademark owners have the right to prevent the use of a mark where such use is likely to cause consumer confusion about who is producing the product

Sources of TM Law

• rule: TM rights in the US come from use in commerce

  • there are however several ways to enforce these rights

• state common law - no registration needed; limited in geographic scope

• state statutory - registration system; limited in geographic scope

• federal statutory - registration system; national in scope

  • can also protect unregistered marks

  • many benefits associated with registration

Certification Marks

• certify that goods or services of others have certain characteristics (e.g., quality, accuracy, made through union labor, etc.)

• restrictions on use:

  • cant certify own goods or services

  • must apply standards in allowing others to use mark

  • must be objective and cannot discriminate in certifying other’s goods or services

Types of Certification Marks

• geographic origin - describes where a product came from

• characteristics of the good or services - describes characteristics of the goods or services

• work or labor group - shows the product was manufactured by a union or other organization

Benefits of Certification Marks

• owners act as a third party certifying certain quality standards for products and services

• owners have complete control over the certification mark and may license the certification mark to anyone meeting their standards

  • this licensing arrangement can be for a one-time fee, an on-going royalty, or no monetary compensation

• owners are protected from others trying to use a similar mark

Generic Terms

• remember - TM protects reputational advantages embodied in a mark and should not create non - reputational advantages

• i want to open a shoe store and should i be able to call my store “shoes” and prevent anyone else from using term?

• generic terms - a word that identifies the type of product or service involved

  • rule: generic terms (standing alone) cannot be a trademark

  • preventing another from using a generic term would put all others at a significant, non-reputational disadvantage

• rule: you may include a generic term in your mark (e.g., schuster shoes), but you get no protection over the word alone

• trademarks answer the question “who” reduces the good

• generic terms answer the question “what” is being sold

Elliott v. Google (9th Cir. 2017)

• elliot petitioned for cancellation of the google trademark, on grounds that the word “google” is primarily understood as “a generic term universally used to describe [the act] of internet searching“

• rule: “genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source”

• standard: does the word primarily answer the question “who?” or “what?”

• elliot had a survey done, asking: “if you were going to ask a friend to search for some-thing on the internet, what word or phrase would you use to tell him/her what you want him/her to do?”

  • over half of respondents used the word “google” as a verb

• q: is this evidence important to the question of whether “google” is now generic?

• rule: a trademark only becomes generic when the “primary significance of the registered mark to the relevant public” is as the name for a particular type of goods or services irrespective of its source

• what does “google” mean when being used used as a verb?

• what service/ product does google provide?

• held: google is used in a way (verb), but this doesnt show that “google” is now what people call search engines

  • would you say “i want to start up a new google (i.e., a search engine)?”

When Trademark Law Requires Use

• foundation of congressional power to pass trademarks legislation (“use in interstate commerce”)

• to obtain any trademark rights - must show “use in commerce”

• registration

• determining which firm “used” a mark first

• determining whether a mark has been abandoned (when does “use” stop?)

• determining types of actionable use for infringement claims

Use in Commerce

• 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… a mark a mark shall be deemed to be in use in commerce -

  • 1: on goods when -

  • it is placed in any manner on the goods/containers/displays/tags, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

  • the goods are sold or transported in and commerce and

  • 2: on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce

Alcock Eng’r v. Airflite (Fed.Cir. 2009)

• airflite petitioned to have aycock’s trademark registration (for airflite) invalidated

• trademark was invalidated at US Patent and trademark office for failure to ever show “use in commerce”

• aycock conceived of service involving charted flights, at that time, people rented entire planes, this is expensive if you are one person

• mr. aycock intended, through his service, to allow solo passengers to arrange flights on charted aircraft for less cost, he would take down flight plans and put several customers on one flight

• rule: use in commerce requires an “open and notorious public offering of the services to those for whom services are intended”

• held: aycock never used the mark in commerce and thus, registration of his mark was improper

• corollary: can you make “token” use of your mark?

  • can you just print up business cards?

Use as a Trademark

• rule: an elected trademark must serve the source- identifying purpose that trademarks are supposed to

  • ask: will consumers perceive the alleged mark as source identifying?

• generally if it is not immediately a virus that an alleged mark is being used as an indication of origin then it probably is not

Hollister v. Am Eagle (S.D. Ohio 2005)

• hollister fictitously claims a 1922 founding

• it alleges that is has TM rights in the number 22

• hollister has used -50 different numbers

• it sued AE for TM infringement associated with AE’s use of ‘22’

• AE argues: hollister “has not used the number ‘22’ as a trademark”

• rule: “a plaintiff must show that it has actually used the designation at issues as a trademark” to accrue rights

  • likewise, the defendant must have also used the same or similar designation as a trademark, if defendants didnt use the mark as a trademark (e.g., used it as decoration), then no confusion could occur (and thus no infringement)

• held: plaintiff had failed to present sufficient evidence from which a reasonable jury could find that the parties made trademark use of the number “22”, judgement for american eagle

Use as a Trademark - Word Marks

• common indicators for word marks include:

  • large font relative to surrounding text;

  • all capital letters or initial capitals;

  • distinctive print style;

  • use of color; and

  • prominent position on the label or advertisement

  • actual case - “now with voltage-controlled dimming and a spectrum of sunlight readable colors”

  • hypo - “now with voltage-controlled dimming and a spectrum of sunlight readable colors”

Distinctiveness Requirement

• the capability of a trademark to identify the goods of a particular merchant and to distinguish those goods from others

• rule: a mark must be distinctive if it is to be protected

  • is it immediately distinctive (inherently) or do you need to establish good will in the mark for it o become distinctive (acquisition of secondary meaning)?

  • ex: swordplay donuts - what could the word “swordplay” possibly mean in that name, other than to identify the donut maker?

  • ex: atrellica sneakers - could this mean anything other than source identification?

• acquisition of secondary meaning - the term is primarily source identifying to the average consumer

• arbitrary, fanciful, and suggestive marks are always (inherently) distinctive

Distinctiveness - Fanciful Marks

• fanciful marks are newly coined words or combinations of letters and numbers, with no meaning other than their trademark meaning

• fanciful marks are inherently distinctive (distinctive upon adoption) because they have nothing to do with the product

• could these words by anything other than source-identifying (when used with regard to these fields or when used in any context)?

Distinctiveness - Arbitrary Marks

• arbitrary marks do not describe the product or service they identify or any of its characteristics

• arbitrary marks are inherently distinctive (distinctive upon adoption) because they have nothing to do with the product

• could these words be anything other than source-identifying when used with regard to these fields?

Distinctiveness - Suggestive Marks

• indirectly describe the product or service they identify

• suggestive marks are inherently distinctive (distinctive upon adoption) because they have less to do with the product

• could these words be anything other source-identifying (when used with regard to these fields or when used in any context)?

Descriptive Marks

• descriptive marks - include marks that appear to describe the product or service

  • commonly adopted because they directly say something about the brand

  • could these words be anything other than source-identifying in a relevant industry? YES!

Descriptive Marks - Geography

• include marks that appear to describe the geographic region from which the goods or services come

  • could these words be anything other than source-identifying in a relevant industry? YES!

Descriptive Marks - Surnames

• descriptive marks - include marks that marks that constitute a person’s surname

  • commonly adopted because they directly say something about the brand

  • could these words be anything other than source-identifying in a relevant industry? YES!

Secondary Meaning

• a descriptive mark is not protected unless mark has attained a secondary meaning (aka acquired distinctiveness)

  • i.e., consumers recognize the mark not only in its primary, descriptive sense, but also as an indication of the source of the source of the product or service

Proving Secondary Meaning

• establishing secondary meaning (aka acquired distinctiveness) - look to:

• direct evidence

  • direct consumer testimony

  • consumer surveys

• circumstantial evidence

  • exclusivity, length, and manner of use

  • amount and manner of advertising

  • amount of sales and number of customers

  • established place in the market

  • proof of intentional copying

• assumption of secondary meaning - the USPTO may accept proof of substantially exclusive and continuous use of a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made

Suggestive v Descriptive

• is a mark suggestive or descriptive? big difference because it determines whether you have to establish secondary meaning or not to have a TM:

  • whether imagination is required in order to see a connection between the marks and the product (e.g., coppertone vs. raisin bran)

  • whether other producers need to use the term in order to compete effectively (e.g., do sunblock companies need the phrase “coppertone”?)

  • whether the mark has been used extensively by competitors other than by the putative TM owner

Inherently Distinctive

• fanciful marks

• arbitrary marks

• suggestive marks

• protected immediately upon use

Not Inherently Distinctive

• descriptive marks

• geographic terms

• personal names

• protected once “secondary meaning” arises

Non-distinctive

• generic terms

• none

Things That Can be Registered

• words and numbers - ex:

  • mcdonalds

  • budweiser

  • motel 6

• mark can be stylized or plain test

Things That Can be Registered

• trade dress

  • total image or design or product or its overall packaging

  • trade dress should be analyzed like any other mark (generic → fanciful)

• trade dress cannot be protected if generic or descriptive

  • can i get trade dress over my tortilla company’s look if my entire store is me sitting on a stool near a tortilla making table/machine?

  • can i get trade dress over my doughnut shop if my store is just white walls with glass-front shelves displaying my doughnuts?

  • are the above descriptive/generic?

• trade dress can also include things such as design of chair, appearance of video games, look and feel of website, and line of products provided there is a consistent overall look

Trade Dress Standard

• trade dress may be protected as a mark if:

  • it makes a separate commercial impression and

    • product designs which are widely used and therefore in the public domain may be copied

  • its impact on consumer is primarily to identify or distinguish the product (not merely to serve as decoration)

Slogans

• a registrable slogan is one that is used in a trademark sense and functions as a trademark or service mark

• if a mark consists entirely of a slogan that is generic merely descriptive merely informational or that is otherwise not being used as a mark, registration must be refused

• slogans by their attention getting nature are treated as unitary matter and must not be broken up for purposes of requiring a disclaimer

• valid - quality through craftsmanship for radio parts

Sound Marks

• sound marks can be arbitrary, descriptive, etc

  • ex: lion roar at start of movie (mgm)

Scent Marks

• scent marks can be arbitrary, generic, etc

  • flowery musk scent in verizon store

  • vanilla scents for file folders

  • floral scents for fuel additives

  • bubble gum scent for sandals

  • smell of bread at a bakery

Touch Marks

• touch marks can be arbitrary, generic, etc

  • louis vuitton malletier: “distictive man-made textured pattern utilized as a surface feature” for luggage and related leather products

  • stevie wonder: wording a “wonder summers night” or stevie wonder depicted in brille for apparel and entertainment performances

Things That Cannot be Registered

• deceptive marks - falso connection to individual or organization, false fact, etc

  • ex: THCTea

    • rejected for not used in legal commerce

    • respinse: applicants tea based beverages do not contain THC or any other controlled substance

    • USPTO: registration is refused because the applied for mark is deceptively misdescriptive of applicants goods and/or services

  • does THCTea stand for: the honey care tea, tea honey care, or something else?

Disparaging Marks

• old rule (no longer valid): no marks for matter which may disparage… persons living or dead institutions beliefs or national symbols or bring them into contempt or disrepute

• matal v tam held disparagement clause of section 2a of lanham act was unconstitutional as it gave performance to certain messages over others

Scandalous Marks

• old rule (no longer valid): no marks for that shock the conscience or moral feelings, or are shocking to sense of decency or propriety

• same constitutional problem as disparaging mark

Acquiring Ownership of Marks

• general requirements

  • must be first to use it in trade and

  • must continue to use it thereafter

Common Law Trademarks

• “the lottery” frisbees

  • created through use

  • common law TM rights are restricted to the locality where the mark is used and to the area of probable expansion

• massco - starts using “the lottery” frisbees in massachusets (it doesnt file a national application)

  • priority - the right to use a mark in a specific area within a specific field of commerce (here the field is frisbees)

• texco - later starts using “the lottery” frisbees in texas (doesnt file a national application)

  • it now has the exclusive right to stop anyone else from using the mark in a confusing way in texas

  • massco still has exclusive rights in massachusetts

  • both parties are free to use the mark in any other state

Constructive Use

• 15 U.S.C. 7©- contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect

Common Law TM & Federal Reg’n

• texco - later secures a federal trademark registration

  • rule: federal registration gives you “constructive use” across the country, thus you are treated as using it nationwide (and thus obtaining TM rights nationwide)

  • rule: a registration cannot take away earlier rights obtained by another through easier use

  • applied: texco has rights in the entire us, except for massachusetts

  • thus 2 companies have rights in different areas

Federal Registration of Marks

• not required but a good idea

• advantage of registerinf on the lanham act principal register:

  • provides constructive notice of user’s claim to mark

  • provides a right to assistance from the US Customs Service

  • creates a presumption of mark ownership and validity that eases the burden of litigation

  • after 5 years, difficult to challenge registrant’s right to mark

  • allows owner to sue in federal rather than state court

  • broader geographic scope

• two ways to register:

  • use application - mark has been used in commerce

  • intent to use appliation

    • when you have a bona fide intention to use the mark but have not done so yet

    • have up to a year to establish use

• registration good for 10 years with renewal in 10 year periods as long as mark remains in commercial use

Supplemental Register

• up to here we have been discussing the “principal register” there is a second lesser supplemental register

• supplement register - parking lot for descriptive marks until they acquire distinctiveness

• benefits

  • may be cited against future applications

  • may be detected in search reports of others considering similar marks

• rule: you cant successfully sue someone for TM infringement using a mark on the supplemental register unless you can establish secondary meaning

  • restated: your descriptive mark must have secondary meaning (acquired distinctiveness) to be a trademark, which is necessary to bring an infringement lawsuit

Cancellation of Registration

• within 5 years of registration - any injured person (low burden) may petition PTO for cancellation

• after 5 years mark becomes incontestable - mark can only be challenged on limited grounds (e.g., abandonment, fraud in securing registration)

• can always challenge on grounds mark has become generic

Marvel Super Heroes

• any injured person may petition for cancellation

• after 5 years mark becomes incontestable - only challenged on limited grounds (e.g., genericide)

Maintaining a Registration

• various declarations and applications

  • section 8 declaration of continuing use

  • section 15 declaration of incontestability (owner claims incontestable rights in a trademark and continuous use of the trademark for five years)

  • section 9 renewal application

• during 6th year from date of registration:

  • registrant must file section 8 declaration

  • registrant may also file section 15 declaration

• during every 10th year from date registration:

  • registrant must file section 8 declaration and section 9 renewal application

Trademark Notices

• ® - registered with US patent and trademark office (principal or supplmental)

  • rule: if you dont provide notice of registration (use ®) can only recover profits and damages if you can show defendant had actual notice of registration

  • TM (or sm) - gives notice that you are using a word/phrase/etc. as a trademark (even if you havent obtained registration)

    • gives notice of alleged state or common law rights

Trademark Infringement

• occurs when defendants use of an identical or similar mark may confuse customers such that consumers purchase defendants goods or services when in fact they intended to buy plaintiffs

• plaintiff must show:

  • mark is valid

  • plaintiff is the senior user (first user/ has priority) of the mark (including constructive use by filing); and

  • use of the mark creates a likelihood of confusion in the minds of consumers about the source of goods or services

Lanham Act - Infringement