Trademarks

Trademarks indicate

source, not quality

What are some economic justification for trademarks?

Reduce search costs by consumers, incentivize manufactures to produce goods of consistent quality

goodwill

the positive reputation and customer loyalty associated with a brand, which can increase its value.

consumer focus in trademark law

indicator of source and quality

producer focus in trademark law

property rights and fair competition

What constitutional clause authorized trademark legislature

the Commerce Clause of the Constitution, which allows Congress to regulate commerce between states. Different from other intellectual property protections that are authorized under the progress clause

where do you register a trademark?

USPTO (United States Patent and Trademark Office), the federal agency responsible for registering trademarks in the United States.

How long is a trademark registration valid?

10 year initial term, with an affidavit of continued use in year 5 to maintain registration.

Filling basis for a trademark

1(a) applicant is already making actual use of the mark, or 1(b) the applicant has a bona fide intent to use the mark in commerce in the near future

filling bases (international)

44(d) applicant has already filled a foreign application to register the mark six months prior to its application to the PTO and claims the priority date of that prior foreign application, 44(e) the applicant possess a registration of the mark in the applicant's country of origin, 66(a) the applicant request extension of protection of an international registration under the Madrid System for the international registration of trademarks

Paris convention (1883)

requires national treatment of marks by member states, and prevents national registration of well-known foreign marks

Madrid Protocol (1989)

allows filling of single international application for submission to multiple countries

What is a key element of trademarks

Distinctiveness that allows for identification of source

inherent distinctiveness

refers to a mark that is unique and distinctive on its own without needing to establish secondary meaning. It increases the likelihood of trademark protection.

acquired distinctiveness (secondary meaning)

refers to a mark that has become distinctive through its use in commerce over time, allowing consumers to associate it with a specific source. This can provide trademark protection even if the mark is not inherently distinctive.

What is the test in Abercrombie and Fitch v. Hunting World

The test established the categories of distinctiveness for trademarks, determining whether a mark is generic, descriptive, suggestive, or arbitrary/fanciful in relation to its protection. A framework for analyzing trademark inherent distinctiveness

Arbitrary Mark

mark has no logical connection to the product, higher protect-ability (ej.apple)

Fanciful Mark

a mark that is invented for a product, with no prior meaning, offering the highest level of trademark protection (e.g., "Exxon").

Suggestive Mark

Requires imagination, thought and perception to reach a conclusion as to the nature of goods. Mark suggests the product or its attributes. (ej. Playstation, Microsoft, The North Face)

Why was the original 1870 trademark legislation deemed invalid?

Because it was wrongfully grounded in the progress clause, like the other IP laws. But Trademark law must be based on the commerce clause of the Constitution, as trademarks primarily serve to indicate the source of goods. Trademarks are not creative or inventions.

Descriptive marks

are marks that describe a quality, feature, or characteristic of a product, requiring proof of secondary meaning for protection (e.g. Best Buy, Citi Bank).

A mark can become distinctive, but only after

substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made

Generic Mark

Mark identifies the product using a known term. A term that refers to the genus of which the product is a species (eg. Kerosene or Thermos)

What type of distinctiveness are not eligible for registration?

Generic and descriptive without secondary meaning

Trademark rights are

use based

How to distinguish suggestive from descriptive terms?

Assess “degree of imagination” necessary to connect the mark and the goods.

What type of mark is Fish Fry

Descriptive

What type of mark is 5-hour energy?

Suggestive

What is the difference between the principal and supplemental register

The principal register offers full protection for trademarks, while the supplemental register is for marks that are descriptive and lack distinctiveness. Marks on the supplemental register can be promoted to the principal register if secondary meaning is shown.

What marks can achieve an incontestable status?

Marks that have been in continuous use for five years after registration on the principal register can achieve incontestable status, providing stronger legal protections against challenges.

benefits of incontestable status

Mark can't be challenged for lack of secondary meaning. Right of owner to use mark on products described in registration can't be challenged (even if confusing)

distinctiveness exceptions

(1) descriptive or deceptively misdescriptive

• registrable with secondary meaning

(2) primarily geographically descriptive

• registrable with secondary meaning

(3) geographically deceptively misdescriptive

• never registrable

(4) primarily merely a surname

• registrable with secondary meaning

(5) Matter that is functional

• never registrable

Geographically Descriptive Terms

2(e)(2)-

a) primary significance of the mark is a generally known geographic location

b) goods originate in the place identified by the mark

c) purchasers would likely to believe the goods originate in the place identified by the mark

cannot be promoted to principal register until secondary meaning is established.

certification mark

means any word, name, symbol, or device, or any combination thereof ... used by a person other than its owner 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 on the goods or services was performed by members of a union or other organization.

Certification marks may be cancelled if

a) registrant does not control use of mark (quality) b) registrant produces or market goods to which mark is applied (third party use) c) registrant discriminately refuses to certify goods of an applicant that complies with standards (open to all)

Collective Marks

trademark or service mark used by the members of a cooperative, an association, or other collective group or organization and includes marks indicating membership in a union, an association, or other organization.

geographically descriptive marks may not be registered on the principal register unless they are

certification or collective marks that serve as indications of regional origin (even without secondary meaning)

A mark that is primarily merely a surname

May not be registered unless secondary meaning is proven

full names as marks?

registration is allowed so long as name is used as indication of commercial origin

Surname 5-factor test

(1) whether the surname is rare;

(2) whether the term is the surname of anyone connected with the

applicant;

(3) whether the term has any recognized meaning other than as a

surname;

(4) whether it has the “look and feel” of a surname;

(5) in cases of stylized, rather than standard character marks,

whether the stylization of lettering is distinctive enough to

create a separate commercial impression

Foreign Words

The foreign equivalent of a merely descriptive English word is no more registrable than the English word itself; only applies when the ordinary American consumer would stop and translate the foreign word into English

acronyms

Not distinctive if acronym is understood to stand for a mere
description of product or service

Generic marks

refer to the product type/category rather than source, cannot be registered. ej. thermos

Adding a compund term to a generic mark

Will not make it distinctive, unless it adds something.

Functioning as marks- slogans

No registration for informational slogans or memes that are

decorative or simply convey informational message that the

consumer supports the displayed idea or message, rather

than a designation of source

Trade Dress

total image and overall appearance of a product. Includes product packaging, and product design

Functional marks

cannot be registered (ej. if something is red for a function, the color red in the product cannot be registered)

Is product packaging inherently distinctive?

can be inherently distinctive, and does not need to show secondary meaning

Can color be inherently distinctive?

No, it can only acquire distinctiveness

Is product design inherently distinctive?

No, it must prove secondary meaning to be distinctive

test for de facto vs. de jure functionality of a product design

1) the existence of a utility patent that

discloses the utilitarian advantages of

the design;

(2) advertising that touts the utilitarian

advantages of the design;

(3) availability of alternative designs; and

(4) design results from a comparatively

simple or inexpensive method of

manufacture.

5) [Traffix] feature affects the cost or quality of the device

A product feature is considered functional, and cannot serve as a trademark, if it

is essential to the use or purpose of the article or if it affects the cost or quality of the article.

Who needs to prove functionality?

The burden to establish nonfunctionality of alleged trade dress falls on the trademark owner, unless it is a registered mark (if so the burden shifts to the challenger)

Aesthetically functional designs are not elligible for TD protection if

the protection would significantly hinder competition (ej. heart shaped box)

What are the 3 types of deceptive marks?

• deceptive

• deceptively misdescripitive

• geographically deceptively misdescriptive

deceptive marks

intended to deceive the consumer when making a purchasing decision, not registrable

Deceptively misdescriptive

inaccurate description, registrable only with secondary meaning

Primarily geographically deceptively misdescriptive

Not registrable, except if registered before 93

a mark will be found to be geographically deceptively

misdescriptive [2(e)(3)] (or geographically deceptive [2(a)]) if:

1. The primary significance of the mark is a generally known

geographic location;

2. The goods or services do not originate in the place

identified in the mark;

3. Purchasers would be likely to believe that the goods or

services originate in the geographic place identified in the

mark; and

4. The misrepresentation would be a material factor in a

significant portion of the relevant consumers’ decision to

buy the goods or use the services

Marks with false association are

not registrable, even if distinctive

Marks with names of living individuals

cannot be registered unless there is explicit written consent by the individual

Is Trademarks a "government speech"?

No, it is private speech

What restrictions to TD registration were removed due to 1st amendment violation?

Immoral or scandalous and disparaging marks

Who can bring a Lanham Act action for infringement based on confusion?

the mark owner, not the consumer. injury to a commercial interest is required.

What are the two types dilution?

dilution by blurring or by tarnishment

Secondary liability

Liability for an infringement by someone other than the direct infringer

Defenses for infringement

a. descriptive (classic) fair use

b. nominative fair use

c. noncommercial use

d. expressive use (parody)

3 part test for descriptive fair use

1. Use is other than as a mark

2. use if descriptive

3. use is in good faith

Nominative Fair Use

Use of a mark by a third party to refer to the mark owner's products services (ej, VW repair shop)

When does the Lanham act apply to expressive works?

only where the public interest in avoiding consumer confusion outweighs public interest in free expression. 3 prong test:

1. Is the work expressive?

2. Is use artistically relevant to the work?

3. Does the use explicitly mislead consumers?

Burden of Proof for Expressive Works

1. Defendant must make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the first amendment

2. If so, then plaintiff bears a heightened burden— must satisfy

   1. likelihood-of-confusing test AND

   2. at least one of Grimaldi's two prongs

      1. Mark is not artistically relevant to the underlying work, OR

      2. Use of mark misleads consumers as to the source or content of the work

When does Grimaldi not apply?

When a mark is used as a trademark

What does a plaintiff need to establish in a false advertisement claim?

1. A false of misleading statement about a product

2. That either deceived, or had the capacity to deceive, a substantial segment of potential customers

3. The deception is material (likely yo influence the consumer's purchasing decision)

4. The product is in interstate commerce; and

5. the plaintiff has been or is likely to be injured as a result of the statement at issue