LEGL 4200 E2 - Trademarks

Trademarks answer the question

Who provided the good/service

“any word, name, symbol, or device, or any combination thereof used by a person … to identity 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 …”

Trademark

Trademarks can include "Ford" [answer] and "Mustang" [answer]

company, product

Trademarks are very

Broad

A [answer] is tool to prevent others from providing false or misleading information to consumers or to protect famous marks

trademark

Trademarks are protected by [answer] and [answer] law

federal, state

[answer] are a combination of tangible and intangible elements that include the mark, logo, design AND concept image, and reputation associated with business

Brands

[answer] include:
-Protect the reputation of [answer]
-Prevent consumer [answer] and [answer]
-Promote [answer] in a market by allowing firms to engage in non-misleading advertisements

Goals of TM, sellers, confusion, deception, competition

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

Corollary

Trademarks can last in perpetuity so long they are being used in [answer]

commerce

Rule: Trademark owners have the right to prevent the use of a mark where such use is likely to cause [answer] about who is producing the product

consumer confusion

The standard used to determine trademark infringement depends on the likelihood of [answer]

consumer confusion

Symbol marks and word marks are likewise [answer]

protected

Sources of TM Law

State common law, state statutory, federal statutory

Rule: TM rights in the US come from use in [answer]

commerce

No registration needed, limited in geographic scope

State Common Law

Registration system, limited in geographic scope

State Statutory

Registration system, national in scope, however, can also protect unregistered marks, many benefits are associated with registration as well

Federal Statutory

[True/False] You have to register the mark to get TM rights

False

How do you create TM rights?

By using it in commerce

You do not have to register TM, but if you do register it, you can get associated [answer]

benefits

By selling product/service with TM, you get [answer] rights at least

basic

A [answer] is any word, name, symbol, device, or any combination thereof that is used to distinguish the goods of one person from another

Trademark

Identity services rather than goods

Service Marks

McDonald’s, Rolling Stones (bands), etc.

Examples of Service Marks

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

Certification Marks

[answer] don't tell you who made the product, but tells you something about the product

Certification Marks

Restrictions on Certification Mark use:
-Can't certify [answer] goods/services
-Must apply standards to allow [answer] to use mark
-Must be [answer] and cannot [answer] in certifying other's goods/services

own, others, objective, discriminate

Three types of Certification marks include

-Geographic origin
-Characteristics of Goods/Services
-Work/Labor group

Describes where the product came from

Geographic Origin

Describes characteristics of the goods or services

Characteristics of Good or Service

100% Recycled, Fair Trade Certified

Example of Characteristics of Goods or Service Mark

Shows the product was manufactured by a union or other organization

Work or Labor Group

Benefits of [answer] include:
-Owners act as a [answer] certifying certain quality standards for products/services
-Owners have [answer] over the certification mark and may [answer] the certification mark to anyone meeting their standards
-Owners are [answer] from others trying to use a similar mark

Certification marks, third party, control, license, protected

Adopted for purpose of indicating membership in an organization

Collective Membership Marks

Example of a [answer] is the American Trial Lawyers Association

Collective Membership Mark

TM protects [answer] advantages embodied in a mark

reputational

[True/False] TM should not create non-reputational advantages

True

[answer] are a word that identifies the type of product or service involved

Generic terms

Rule: Generic terms (standing alone) [answer] be a trademark

cannot

Preventing another form using a generic term would put all others at a significant, non-reputational [answer]

disadvantage

Trademarks answer the question "[answer]" produces the good

Who

Generic terms answer the question “[answer]” is being sold

what

Rule: You may include a [answer] term in your mark (e.g., Schuster’s Shoes), but you get no protection over the word alone

generic

Mark becomes generic for the goods or services

Genericide

Examples of [answer] include Escalator, Dry Ice, Trampoline, Rollerblades

Genericide

Companies can try to combat [answer] usage through advertisements

generic

Background and Facts
o Elliott 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”
o Elliott had a survey done, asking: “If you were going to ask a friend to search for something on the Internet, what word or phrase would you use to tell him/her what you what him/her to do?”
Over half of respondents used the word “google” as a verb
Rule
o “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
o Does the word primarily answer the “who?” or “what?”
Rule
o 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 good or service irrespective of its source

Held
o Google is used in a new way (verb), but this doesn’t show that “google” is now what people call search engines
o You wouldn’t say “I want to start up a new google“(i.e., a search engine)

• Foundation of Congressional Power to Pass Trademark Legislation (“use in interstate commerce”)
• To obtain any trademark rights
o 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

When TM law requires use

The term “[answer]” 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

use in commerce

A mark shall be deemed to be in use in commerce:
1. On goods when –
A. It is [answer] 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
B. The goods are [answer] or transported in commerce, and
2. On services when it is used or displayed in the [answer] or [answer] of services and the services are rendered in commerce

placed, sold, sale, advertising

• Background and Facts
o Airflite petitioned to have Aycock’s trademark for registration invalidated
o Aycock conceived of a service involving charted flights. At that time, people rented out entire planes. This was expensive if you were one person
o Aycock intended, through his service, to allow solo passengers to arrange flights on chartered aircraft for less cost. He would take down flight plans and put several customers on one plane
o Aycock formed Aycock Engineering, but despite his efforts, the operation never got off the ground.
 He never markted the AIRFLIGHT service to the general public and never gave the public a chance to use the toll-free phone number to book reservations. A single passenger never was on a chartered flight
• Rule
o Use in commerce requires an “open and notorious public offering of the services to those for whom services are intended”

• Decision
o Trademark was invalidated at the US Patent and Trademark Office for failure to ever show “use in commerce”
 Aycock never used the mark in commerce and thus, registration of his mark was improper

An alleged trademark must serve the [answer] purpose that trademarks are supposed to

source-identifying

Generally, if it is not immediately obvious that an alleged mark is being used as an indication of [answer], then it is probably not

Origin

Decorative marks [are/aren't] considered to be used as a trademark if it is not source identifiable by consumers

aren't

• Background and Facts
o Hollister factiously claims a 1922 founding
 It alleges that it has TM rights to the number 22
 Hollister has used ~50 different numbers
o They sued American Eagle (AE) for TM infringement associated with AE’s use of ‘22’
 AE argued Hollister “has not used the number ‘22’ as a trademark”
• Rule
o “A plaintiff must show that it has actually used the designation at issue as a trademark” to accrue rights
 Likewise, the defendant must also used the same or similar designation as a trademark. If defendants didn’t use the mark as a trademark (e.g., used it as decoration), then no confusion could occur (and thus no infringement)

o Plaintiff failed to present sufficient evidence from which a reasonable jury could find that the parties made trademark use of the number “22”

Common indicators for [answer] marks include:
o Lage font relative to surrounding text
o All capital letters or initial capitals
o Distinctive print style
o Use of color
o Prominent position on the label or advertisement

word

[True/False] Can justify use in commerce with a specific population, entire public does not need to know it to gain rights

True

[True/False] Service/good must be available to public (open and notorious) but brand identification does not need to be known to entire population

True

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

Distinctiveness

A mark must be [answer] if it is to be protected

distinctive

A mark can be distinctive in two ways [answer] distinctive or acquisition of [answer]

Inherently, secondary meaning

The mark’s “nature serves to identify a particular source of a product,” even if consumers don’t widely know it

Inherently Distinctive

Swordplay Donuts or Atrellica Sneakers are examples of [answer] marks

inherently distinctive

The term is primarily source identifying to the average consumer. This is also called “acquired distinctiveness” as the consumer acquires knowledge about the firm/mark that it creates the consumer’s mental connection

Secondary meaning

Examples of [answer] include Best Buy and Delicious Cookies

Inherently distinctive marks are [answer], [answer], and [answer]

Fanciful, arbitrary, suggestive

Secondary meaning can be achieved for [answer] marks

descriptive

[answer] marks are never distinctive

Generic

Newly coined words or combinations of letters and numbers, with no meaning other than their trademark meaning

Fanciful Marks

Examples of this mark include Kodak, Adidas, Google

Fanciful

Fanciful marks are [answer] identifying and [answer] distinctive

source, inherently

This type of mark do not describe the product or service they identify or any of its characteristics

Arbitrary Marks

Arbitrary marks are [answer] identifying and [answer] distinctive

Source, inherently

Example of [answer] marks include Apple, Amazon

Arbitrary

[answer] marks indirectly describe the product or service that they identify

Suggestive

Suggestive marks are [answer] identifying and [answer] distinctive

Source, inherently

Examples of [answer] marks include Coppertone, Bullet Roof

Suggestive

[answer] marks include marks that appear to describe the product or service

Descriptive

Descriptive marks are [answer] because they directly say something about the brand

commonly adopted

Once a descriptive mark has acquired [answer] (i.e., when consumers recognize brand), it is protected by TM

secondary meaning

Example of [answer] marks include Best Buy, Raisin Bran, Circuit City

descriptive

[answer] marks include marks that appear to describe the geographic region from which the goods/services come

Descriptive

[answer] marks include marks that constitute a person’s surname

descriptive

You can establish secondary meaning through
[answer] Evidence
o Direct consume testimony
o Consumer surveys
[answer] Evidence
o Exclusivity, length, and manner of use
o Amount and manner of advertising
o # of sales and customers
o Established place in the market
o Proof of intentional copying

Direct, circumstantial

Difference between [answer] mark vs [answer] mark
- Whether imagination is required in order to see a connection between the mark and the product
- Whether other producers need to use the term in order to compete effectively
- Whether the mark has been used extensively by competitors other than by the punitive TM owner

Descriptive, suggestive

• Background and Facts
o Tiffany & Co., famous jewely store, sued Costco Wholesale because Costco used the name “Tiffany” on in-store signs advertising diamond engagement rings
o Costco argued that “Tiffany” is a generic term for a ring setting and that Costco was using the term as descriptive for the setting, not as the trademark of Tiffany & Co.

• Decision
o In 2017, trial court awarded Tiffany & Co. damages for TM infringement
o In 2020, appellate court revered it. It held that:
 A reasonable jury could find that the term was generic (thus not a TM)
 Even if not wholly generic, the way it was used by Costco was likely to not create confusion (thus no TM infringement)

Where a defendant establishes it used the allegedly infringing term “1. Other than as a [answer] , 2. In a [answer] sense, and 3. In good [answer]”, no infringement has occurred

mark, descriptive, faith

• Background and Facts
o Zatarain’s alleges trademark infringement by OG Smokehouse’s use of the term “Fish Fry”
o Zatarain’s argues that “Fish Fri” is suggestive
o OG smokehouse argues that Fish Fri is generic, or at best, descriptive
 Why do the parties take these positions>
• Zatarain’s gets inherent protection from suggestive
• OG Smokehouse wants to make them prove secondary meaning
• Approaches to determining whether a mark is descriptive (rather than suggestive/arbitrary)
o Dictionary definition
 Fish fry – “1. A picnic at which fish are caught, fried, and eaten… 2. Fried fish”
o Imagination test
 Does a term require imagination and thought to determine the nature of the goods?
o Competitive need
 Can you describe the batter in other efficient ways?
 Others need to use descriptive terms to sell in the marketplace, not same need for suggestive terms
o Third-party uses
 Many other firms sell “fish fry”

Decision
o Term is descriptive, no secondary meaning was found

Descriptive terms are not protected by trademark absent a showing of [answer] meaning in the minds of the consuming public

secondary

This defense applies only to descriptive terms and requires that the term be used fairly and in good faith only to describe to users of the goods or services of such party, or their geographic origin

Descriptive Fair Use

Words, numbers, drawings (or other forms of art/design), trade dress are things that can be [answer] for TM protection

registered

-Total image or design of the product or its overall packaging
-Should be analyzed like any other mark (generic -> fanciful)

Trade Dress

[answer] can include things such as design of chair, appearance of video game, look and feel of Website, and line of products provided there is a consistent overall look

Trade dress

Trade dress may be protected as a mark if:
1. It makes [answer] commercial impression
and
2. Its impact on consumer is primarily to [answer] or [answer] the product (not merely serve as decoration)

separate, identify, distinguish

Provides some non-