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word, phrase, logo. to distinguish a product. used by a manufacturer. Trademark. n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product. Example:. VS.

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word, phrase, logo

to distinguish a product

used by a manufacturer

Trademark

n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product.

Example:

VS.

Trademark must be Distinctive

Trademark must be Used in Commerce


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Federal Trademark Registration Act (1870)

Trademark Protection Act (19 Stat. 141) (1876)

U.S. SUPREME COURTS OVERTURNS

RE: Trade Mark Cases 100 U.S. 82 (1879)

No Substantive Rights

Very Limited Scope

Trademark Statutory

Evolution

Interstate Commerce Registration Act (33 Stat. 724) (1905)

The Lanham Act (15 U.S.C. § 1051 et. seq.) (1947)

THE LAW TODAY…



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Distinguish Products from Multiple Sources

Lower Product Search Costs

Regulates Competition

Promotes Product Consistency

Prevents Free-Riding

Purposes of Trademark

PROMOTE FAIR EFFICIENT COMMERCE…


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n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product.

n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product.

GOODS

n. A name, phrase, or other device used to identify and distinguish the services of a certain provider.

n. A name, phrase, or other device used to identify and distinguish the services of a certain provider.

SERVICES

n. A trademark or servicemark used by an association, union, or other group either to identify the group’s products or services or to signify membership in the group.

n. A trademark or servicemark used by an association, union, or other group either to identify the group’s products or services or to signify membership in the group.

ORGANIZATIONS

U

L

n. A word, symbol, or device used on goods or services to certify the place of origin, quality, or other characteristic.

n. A word, symbol, or device used on goods or services to certify the place of origin, quality, or other characteristic.

QUALITY

®

Types of Marks

Trademark

Lanham Act § 45

Service Mark

Lanham Act § 3

Collective Mark

Lanham Act § 4

Certification Mark

Lanham Act § 4


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Lanham Act § 3 (15 U.S.C. § 1053)

Subject to the provisions relating to the registration of trademarks, so far as they are applicable, service marks shall be registrable, in the same manner and with the same effect as are trademarks, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks.

Service Marks


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Collective Marks

  • Lanham Act § 45 (15 U.S.C. § 1125)

    • 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 ….


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Lanham Act § 45 (15 U.S.C. § 1125)

Certification Mark. The term “certification mark” means any word, name, symbol, or device ... -

(1) 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 ...

Certification Marks

Champagne


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Generic

Denotes general

class of products

Unprotectible

Shredded Wheat,

Aspirin, Thermos,

Cellophane, Car,

Computer

Descriptive

Describes some

characteristic/quality

Protectible if

secondary meaning

Suggestive

Suggests some

characteristic

Automatically

Protectible

Arbitrary or

Fanciful

Bears no relation

to product;

Automatically

Protectible

Categories of Marks

Less Protection

More Protection


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Trademark

TENDER VITTLES (cat food)

ROACH MOTEL (roach trap)

CHAP STICK (lip balm)

VISION CENTER (optical store)

BEER NUTS (snack food)

FAB (laundry detergent)

BOLD (laundry detergent)

STRONGHOLD (nails)

CITIBANK (banking services)

NUTRASWEET (sweetner)

Category

Descriptive

Suggestive

Descriptive

Descriptive

Descriptive

Arbitrary

Suggestive

Suggestive

Suggestive

Descriptive

Categorizations


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Lanham Act § 2 (15 U.S.C. § 1052)

No trademark … shall be refused registration … unless it - . . .

(e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive … of them ….

(f) Except as expressly excluded … nothing herein shall prevent the registration of a mark … which has become distinctive of the applicant’s goods in commerce.

Descriptive Marks


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Definition: primary significance of the term in the minds of the consuming public is not the product but the producer

Factors

Consumer surveys

Amount and volume of advertising

Volume of sales

Length and manner of use

Direct consumer testimony

Secondary Meaning


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A:

?

Q:

How do we prove/disprove the

existence of secondary meaning

BUT

Surveys

----------

----------

-----------

Surveys have limited accuracy

&

Surveys can be biased

Marketing

Courts may be loathe to allow extensive broadening of trademark and limit the scope

What does consumer think?

Courts impose controls on secondary meaning:

Secondary Meaning

SO…

  • Limited to regional marketplace (e.g. season/time/place)


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Secondary Meaning

50%

Achieved

Secondary

Meaning

Consumers

who Assoc.

0%

Start

Use

No

Protection

Time


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Descriptive Marks

Zatarains, Inc. v. Oak Grove Smokehouse, Inc.,

698 F2d 786 (5th Cir. 1983)

Plaintiff

Defendant

Oak Grove Dist.

Holding:

  • Term “Fish-Fry” is descriptive in nature,

  • BUT have acquired secondary meaning

  • Defendant has right to use terms under

  • “Fair Use” Doctrine as descriptive terms;

Such uses are privileged because they use the terms only in their purely descriptive sense.


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Descriptive Marks

Car-Freshner Corp. v. S.C. Johnson & Son, Inc.,

70 F.3d 267 (2nd Cir. 1995)

Plaintiff

Defendant

Holding:

  • Issue is whether the protected word or image (here

  • “pine tree” shape) is used descriptively or as a mark

  • Johnson entitled to use pine-tree shape

  • descriptively, despite Car-Freshner’s mark

  • Defendant has right to “Fair Use” Defense in use

  • of descriptive terms that plaintiff uses as suggestive

Court applies Fair Use Doctrine:

Public’s right to use descriptive words or images in good faith in their ordinary descriptive sense prevails over exclusivity claims of trademark owner


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Generic Marks

Genessee Brewing Company, Inc. v. Stroh Brewing Co.,

124 F.3d 137 (2nd Cir. 1997)

Holding:

  • Issue is whether the protected word or image is used

  • descriptively or as a mark

  • Nature of product renders “Honey Brown”

  • generic (for ales) rather than descriptive

  • Defendant can escape “unfair competition” claim if it

  • exercised reasonable means to prevent confusion

Court applies the Canfield Test:

Whether term that identifies a product is generic depends on the competitor’s need to use that term– if not commonly used alternative conveys same functional information, the term is generic (afforded no protection).


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Personal Names as Marks

In 1914, Supreme Court Justice Oliver Wendall Holmes wrote in the "Waterman Pen" case that while everyone had a right to use their own name, the junior user must to take precautions in the manner of use so as not to cause confusion with the senior user's mark. L.E. Waterman Company. v. Modern Pen Company., 235 U.S. 88, 59 L. Ed. 142 (1914).


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Personal Names as Marks

Thus, we have seen people ordered not to utilize their names in a certain manner so as to avoid confusion with a prior right. Sullivan v. Ed Sullivan Radio & T.V., Inc., 152 N.Y.S. 2d 227, 110 USPQ 106 (1st Dept 1956) ( Defendant ordered to change name of business for ED SULLIVAN to E.J. SULLIVAN); E. & J. Gallo Winery v. Gallo Cattle Co., 12 USPQ2d 1657 (ED Cal. 1989) (Joseph Gallo not permitted to use GALLO as trademark, non-trademark use of name limited); Lyon v. Lyon, et. al. 246 Cal App 2d 519, 152 USPQ 719 /(2d Dist 1966) (partner named Lyon left the law firm of LYON & LYON, enjoined from using LYON as the name of his new firm).


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Geographic Marks

Section 2(e)(2) of the Lanham Act provides: No trade-mark ... shall be refused registration on the principal register on account of its nature unless it—

(e) Consists of a mark which, ...

(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them....

11 15 U.S.C. Sec. 1052(e)(2) (1988).

Section 2(e)(2) thus bars the registration of a trademark on the principal register if the mark is either "primarily geographically descriptive," or "primarily geographically deceptively misdescriptive."


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Under Lanham Act, such a usage may be permitted protection as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness

Record devoid of any indication of consumer confusion

Geographic Marks

In Re: Nantucket, 677 F.3d 95 (C.C.P.A. 1982)

Holding:

  • A geographical term applied to products may be

  • geographically misdescriptive without being deceptive

  • Court relies of perceptions of typical consumer and

  • their expectation vis a vis the origin of clothing

  • marked with “Nantucket”


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Geographic Marks as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness

  • Case law shows numerous instances where the goods/place association is not the "primary" meaning a mark connotes. 10 USPQ2d at 1956. For example, a geographic mark may indicate that a product is stylish or of high quality, i.e., HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a car.

  • The use of the geographic location may be arbitrary or fanciful, i.e., DUTCH BOY for paint.


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Trade Dress & Product Design as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness

Trade Dress

Product Design


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Two Pesos v. Taco Cabana as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness505 U.S. 763 (1992)

Taco Cabana Trade Dress


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Findings of the District Court as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness

Taco Cabana has an identifiable trade dress

The trade dress is non-functional

The trade dress is inherently distinctive

The trade dress has not acquired secondary meaning

Two Pesos v. Taco Cabana505 U.S. 763 (1992)


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Lanham Act § 2(e)(5) as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness

No trademark … shall be refused registration … unless it --

(e) Consists of a mark which, … (5) comprises any matter that, as a whole, is functional

Functionality


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When is something “functional”? as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness

Essential to the use or purpose of the article

Affects the cost or quality of the product

Exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage

Functionality


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In Re Morton-Horwich as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness671 F.2d 1332 (C.C.P.A. 1982)

“Superior in function or economy

of manufacture, which superiority

is determined in light of

competitive necessity to copy”

  • Evidence of functionality

  • Existence of utility patents

  • Advertising touting utility

  • Existence of alternatives

  • Cost to manufacture


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Potential for as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness

Confusion

Harm to

Competition

Policy Considerations

High

Low

Functional

Non-Functional

No Protection

Functionality


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Example as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness


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