Trademark law

1. Trademark law Focusing on U.S. law

2. General aspects of trademark law • What is the purpose of trademarks? • Identify; distinguish goods from others • What is protected? Lanham Act: Words, names, symbols, or devices or any combo including sounds • Marks must be USED “in commerce” • Where register tdmk? US Patent & Tdmk Office

3. Trademarks: Categories • Generic (NO tdmk protection) • Descriptive (No protection UNLESS applicant proves “inherently distinctive” or acquired “secondary meaning” in market)

4. Trademark categories (cont’d) • Suggestive (some aspect of the product or service comes to mind; e.g., “Good to the last drop” (Maxwell House Coffee) • Arbitrary (no inherent relationship to product or service) (Amazon.com) • Fanciful (no inherent relationship to product; e.g., Lexus)

5. Trademark infringement • Definition: D’s unauthorized use of another’s tdmk or ANOTHER mark where is “likelihood of confusion,” mistake or deception • Do the products have to compete? • -confusion as to source • Case: Public Service of N Mexico v. Nexus Energy Software (text)

6. Tdmk infringement: factors cts examine • To decide if proposed mark may be confusingly similar to consumers (taken from E.I. duPont case: • 1) similarity or dissimilarity of entire mark re appearance, as to appearance, sound, connotation, and commercial impression; • 2) similarity/dis-simil. Re nature goods, services described in tdmk application cf. Senior mark

7. Trademk infringement factors examined (cont’d) • 3) similarity/dis-simil re likely to continue trade channels • 4) conditions under which sold and buyers to whom sales made (“impulse” vs sophisticated buyer) • 5) fame of senior mark (sales, ads, length of use) • 6) number and nature of similar marks in use on similar goods

8. Tradmk infringement (factors examined, cont’d) • 7) nature and extent of any actual confusion • 8) length of time and conditions been concurrent use w/o any actual confusion • 9) variety of goods on which mark is used/not used (house mark, family mark, product mark) • 10) market interface between applicant & owner of prior mark

9. Trademark infringement (factors exam’d. cont’d) • 11) Extent applicant has right to exclude others from use of its mark on its goods; • 12) Extent of potential confusion (lot or little) • 13) any other established fact probative of the effect of use.

10. Other prohibited TMk registration • 1) merely descriptive or deceptively misdescriptive UNLESS “acquired distinctiveness” or “secondary meaning” • 2) geographically descriptive wording unless show “acquired distinctiveness” • 3) geographically, deceptively misdescriptive marks (e.g., “GA pecan pie” for pecan pie made in TN)(unless “acquired distinctiveness BEFORE 12/8/93

11. Other prohibited TMks (cont’d.) • 4) Surnames not registerable unless “acquired distinctiveness”; some surnames not mainly surnames & registerable • 5) Scandalous, false, deceptive & disparaging marks (e.g., “Louisville Slugger” for baseball bat made in Knoxville) • 6) generic terms

12. Other non-registerable Tdmks (cont’d) • 7) applies to service marks (service= activity performed primarily for someone else & not ancillary to larger business; NOT services=advertising and marketing a business’s own goods

13. Trademark dilution • What is it? “Whittling away” the capacity of a famous mark to identify and distinguish goods or services even if no competition between famous mark & other mark • No need for likelihood of confusion • Source: Prof. Schechter’s 1927 Harv. L. Rev. article

14. Tdmk dilution (cont’d) • P must show: 1) has famous mark; 2) D’s commercial use in commerce & likely to cause dilution • Case: Intermatic v. Toeppen

15. Cybersquatting • What is it? • Why is it good/bad? • Case: Sporty’s Farm v. Sportsman’s Market (2nd Cir, 2000)

16. “Sucks” sites • Negative commentary • legal attacks by trademark holders on “sucks” sites • Bally Total Fitness v. Faber (see Prof’s website ONLY because search engines unavailable for fed district ct cases ) • competing factors