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Intellectual Property. Trademarks or Service Marks Copyrights Patents Trade Secrets. What is a trademark?. Lanham Act 1976 A word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another.

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intellectual property
Intellectual Property
  • Trademarks or Service Marks
  • Copyrights
  • Patents
  • Trade Secrets

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

what is a trademark
What is a trademark?
  • Lanham Act 1976
    • A word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another.
    • Must be used or promise a “good faith” intent to be used, in interstate commerce
      • Nike and the “swoosh”
      • Coca-Cola

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

registration with the u s patent trademark office uspto
Registration with the U.S. Patent & Trademark Office (USPTO)
  • Gives the trademark owner the right to sue for infringement and dilution
    • Same word can be used as a trademark for different classes of products
    • Word can only be used as a domain name by one product

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

what prerequisites necessary for a trademark
What Prerequisites Necessary for a Trademark?
  • Must be distinctive – capable for identifying the source of a particular good.
  • USPTO’s five categories of words:
    • Generic
    • Descriptive
    • Arbitrary or Fanciful
    • Suggestive
    • Fanciful

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

generic
Generic
  • Describes the general category to which the underlying product belongs: computer, apples, bread
  • Gets no protection
  • A trademark can become generic
    • coke, kleenex, xerox, etc.

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

arbitrary or fanciful
Arbitrary or Fanciful
  • No logical relationship to the product : Exxon, Kodak, Amazon

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

suggestive
Suggestive
  • Evokes or suggests a characteristic of the underlying good: “Coppertone”

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

descriptive
Descriptive
  • Directly describes, rather than suggests, a characteristic or quality of the underlying product: Holiday Inn, All Bran, Vision Center
  • Cannot be registered - Not inherently distinctive until it has acquired a “secondary meaning”

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

service mark
Service Mark
  • Words, phrases, logos, or other graphic symbols that identify and distinguish the services of a company
    • Put “sm” next to the mark
    • Example Jiffy Lube

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

trade dress
Trade Dress
  • Protection can extend beyond the words, symbols and phrases to other aspects of the product, such as its color or design or shape or of its packaging
    • McDonald’s

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

web page design as trade dress
Web Page Design as Trade Dress
  • Two Pesos, Inc. v. Taco Cabana, Inc.
    • Court: Do not need secondary meaning
  • Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
    • Court: Do need secondary meaning of design of children’s clothes to be established
      • distinguished Two Pesos because that trade dress was packaging
      • Harder now to get web page design protected as trade dress

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

registering the mark with the uspto
Registering the Mark with the USPTO
  • Must be capable of distinguishing the applicant’s goods, and/or services from those of others.
  • Must be using or have a good faith intent to use the mark

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

registration
Registration
  • Gives the party the right to use the mark nationwide, even if actual sales are limited to only a limited area.
    • Cannot, even with registration, make someone who was already using it in a given geographic area without registration stop using it in that area
  • Registration constitutes nationwide constructive notice to others that the trademark is owned by the party
  • Party can bring an infringement suit in federal court
  • Allows recovery of attorneys’ fees, and the potential for recovery of treble damages
  • Registration, after five years, becomes incontestable, and use of it is conclusively established
    • Circled R denotes actual notice of ownership

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

duration of a mark
Duration of a Mark
  • Lose trademark if:
    • Abandonment
      • No renewal of registration in the fifth year, expires at the end of the sixth year
    • Improper licensing or assignment
    • Genericity – becomes generic
      • Kleenex, xerox

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

secondary meaning
Secondary Meaning:
  • A descriptive mark can become distinctive
    • when the consuming public primarily associates that mark with a particular producer, rather than the underlying product
    • Holiday Inn has acquired this secondary meaning; public thinks of a particular chain of motels, not just any motel where people stay on holidays

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

how to establish secondary meaning
How to Establish Secondary Meaning
  • Descriptive marks cannot be registered until they acquire a secondary meaning
  • Courts’ test for secondary meaning:
      • The amount and manner of advertising under the term
      • The volume of sales under the term
      • The length and manner of the term’s use
      • Results of consumer surveys in recognition of a particular product, dress, or service

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

supplemental register
Supplemental Register
  • May be registered on the Supplemental register – if it remains on this register for 5 years with continuous use in commerce, it is presumed that it has acquired secondary meaning.

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

establishing secondary meaning of web pages
Establishing Secondary Meaning of Web pages
  • Register on the Supplemental register
  • Put ® to give actual notice of ownership
  • Register it as a domain name
    • NSI, now ICANN

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

domain names
Domain Names
  • Created to serve a useful mnemonic means of locating specific computers on the Internet
  • Domain names are now highly visible in “real space”
  • Domain names can only link to one site, while trademarks can be used by two non-competing products
  • Many internet users “guess” at domain names

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

domain name system
Domain Name System
  • Until 1998 domain name system
    • was administered by the U.S. government (ICC) via contracts with the Internet Assigned Names and Numbers (IANA) and Network Solution, Inc. (NSI)
  • IANA:
    • administered the Internet address system through Jon Postel, who had volunteered to keep a master list of machine numbers and their correlating mnemonic names over 30 years ago.
  • NSI
    • registered domain names for the top level domains of .com .org .net. – new ones: .biz, .info, .museum, .areo, .coop, .name, .pro,

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

u s decided to turn the dns over to private management
U.S. decided to turn the DNS over to private management
  • 1999 U.S. government
    • turned system over to Internet Corporation for Assigned Names and Numbers (ICANN)
  • Supposed to open up domain-name registration to competition
  • can now register through a variety of registrars. (VeriSign)
    • Registrars located in many countries
    • ICANN maintains authority over them
    • Created UDRP

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

cannot sue registrars for trademark infringement
Cannot Sue Registrars for Trademark Infringement
  • These registrar’s cannot be sued for giving Person B a domain name that contains Person A’s trademark
    • Lockheed Martin Corp. v. Network Solutions, Inc.
    • Motion Picture Arts and Sciences v. Network Solutions, Inc.

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

icann domain name dispute resolution
ICANN Domain Name Dispute Resolution
  • Can settle disputes involving domain name holders being sued by trademark name holders
    • Administrative Panel Decision Julia Fiona Roberts v. Russell Boyd 2000

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

trademark infringement
Trademark Infringement
  • Plaintiff must have prior rights in the trademark- easily proved by registration
  • The infringer must have used the trademark in connection with the sale of a good
  • There must be a “likelihood of confusion” for the consumer as to the source of those goods or as to the sponsorship or approval of such goods

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

likelihood of confusion factors used by courts
“Likelihood of Confusion” Factors Used by Courts:
  • Strength of the mark
  • Proximity of the goods
  • Similarity of the marks
  • Similarity of marketing channels
  • Degree of caution exercised by the typical purchaser
  • Defendant’s intent
  • Evidence of actual confusion
  • Zone of natural expansion by plaintiff
  • Length of time defendant used the mark
  • Same sales efforts

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

infringement examples
Infringement Examples
  • Check Point Systems, Inc. v. Check Point Software Technologies, Inc.
  • Apple computer and Apple records can co-exist – no confusion to consumer
  • Applet computer would be an infringement

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

trademark dilution
Trademark Dilution
  • Federal Trademark Dilution Act 1996
    • Only if the mark is registered
    • Only if the mark is famous and distinctive
    • Defendant’s use is causing dilution

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

dilution can be blurring or tarnishment
Dilution Can be Blurring or Tarnishment
  • Lessening of the capacity of a famous mark to identify and distinguish goods or services
      • Regardless of confusion by the consumer
      • Regardless of whether goods are competing

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

test for whether plaintiff s mark is famous
Test for Whether Plaintiff’s Mark is Famous
  • Degree of inherent or acquired distinctiveness
  • Duration and extent of use
  • Amount of advertising and publicity
  • Geographic extent of the market
  • Channels of trade
  • Degree of recognition in trading areas
  • Any use of similar marks by third parties
  • Whether the mark is registered

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

trademark dilution blurring or tarnishment
Trademark Dilution - Blurring or Tarnishment
  • Likelihood of confusion not necessary
  • Blurring: power of the mark is weakened through its identification with dissimilar goods
    • A.B.C. Carpet Co., Inc., et al. v. Naeini
  • Tarnishment: mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services
    • Toys R Us v. Akkaoui (Adults “R” Us )
    • Toys “R” Us., et al. v. Richard Feinburg (gunsareus.com)

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

defenses
Defenses?
  • Fair Use
  • Parody

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

fair use
Fair use
  • Descriptive mark is used for its primary, rather than secondary meaning: like describing your cereal as “all bran” or your batter coating as “fish fry”
  • Nominative use: Using the words “just to talk about the object”

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

parody
Parody
  • Not too directly tied to commercial use
  • Artistic and editorial parodies of trademarks serve a valuable critical function – entitled to First Amendment protection

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

remedies
Remedies
  • Infringement:
    • Defendant’s profits
    • Damages sustained by plaintiff
      • (may be trebled upon showing of bad faith)
    • Costs of the action
  • Dilution
    • Damages only if bad faith
    • Only injunctive relief

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

a new remedy anticybersquatting consumer protection act acpa
A New Remedy - Anticybersquatting Consumer Protection Act (ACPA)
  • 1999 Protect trademark owners from cyber piracy
  • “A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark,… if that person had a bad faith intent to profit from the mark”
  • Also illegal to register the domain name of a living person without his consent
  • Statutory damages or actual damages

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

indications of bad faith under the acpa
Indications of Bad Faith Under the ACPA
  • A federally registered trademark will be diminished
  • Domain-name owners intend to cause diversion of consumers or or dilution of the trademark
  • Domain-name owners offer to sell the name to the trademark owners
  • Domain-name owners applied for it by providing false information
  • Domain-name owners applied for multiple domain names registration

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

remedies under the acpa
Remedies under the ACPA
  • Sue for actual damages
  • Sue for statutory damages
  • Sue for transfer of name to plaintiff

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

acpa case
ACPA Case
  • E& J Gallo Winery v. Spider Webs Ltd.

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

trademark owners sued infringing domain name holders 1994
Trademark Owners Sued Infringing Domain Name Holders 1994
  • Can sue for infringement, dilution, unfair trade practices, under the AntiCybersquatting Protection Act
  • Use ICANN’s Uniform Dispute Resolution Procedure (UDRP)
  • Use various dispute resolution bodies around the world
    • WIPO Arbitration and Mediation Center: Julia Roberts

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

domain name cases
Domain Name Cases:
  • Sue for Internet Trademark Infringement
    • Deep linking
      • Ticketmaster v. Microsoft
    • Metatags
      • Playboy Enterprises Inc. v. Welles 2002
    • Framing
      • Washington Post v. Total News, Inc.

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

international protection treaties
International Protection - Treaties
  • Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
      • WTO treaty
      • Comprehensive set of rights and obligations governing international trade in intellectual property
      • Each member country must have a common minimum of protection for intellectual property rights within its own borders
      • Must observe the substantive provisions of certain treaties

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

treaties that must be observed by trips members
Treaties That Must be Observed By TRIPS Members
  • International Convention for the Protection of Industrial Property (Paris Convention)
  • Berne Convention for the Protection of Literary and Artistic Works (Berne Convention)
  • International Convention for the Protection of Performers, Producers of Phonograms, and Broadcasting Organizations (Rome convention)
  • Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty)
  • Supplements to these treaties set by TRIPS
    • Copyrights at 50 years, patents at 20, trademarks at 7

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

trips sets effective enforcement criteria
TRIPS Sets Effective Enforcement Criteria
  • All must abide by WTO’s Dispute Resolution Understanding Agreement

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

trips also requires
TRIPS Also Requires
  • Extension of the General Agreement on Tariffs and Trade (GATT) to international intellectual property rights
  • National Treatment Principle
  • Transparency Principle
  • Most–Favored Nation Treatment Principle
  • Least developed countries have until 2006 to reach standards

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

paris convention
Paris Convention
  • International Convention for the Protection of Industrial Property
  • Union of countries responsible for protecting industrial property rights: patents, trademarks and industrial designs
  • Must comply with 3 principles
    • National treatment principle
    • Right of Priority: 12 months retroactive time to file in other countries
    • Common rules establish basic minimum criteria and procedures for granting industrial property rights

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

the trademark law treaty 1994
The Trademark Law Treaty 1994
  • 35 countries
  • Harmonizes the following rules
      • Initial and renewal terms of registering trademarks is ten years
      • Service marks now have equal protection as trademarks
      • Various procedures related to renewal application, powers of attorney, authentication, streamlined

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

madrid protocol
Madrid Protocol
  • Single international trademark application and registration system
  • Managed by WIPO
  • Registration here is recognized as registration in any of the member countries

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

international trademark disputes of internet domain names
International Trademark Disputes of Internet Domain Names
  • No one treaty
  • Individual country efforts
    • United Kingdom
    • France
    • Asia

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

the problem of enforcement
The Problem of Enforcement
  • Hard to find cybersquatters
  • Hard to enforce
  • Violator could transfer name to a third party

(c) 2004 West Legal Studies in Business A Division of Thomson Learning

wipo uniform dispute resolution policy
WIPO Uniform Dispute Resolution Policy
  • Requires a showing of bad faith
  • Trademark Infringement does not require bad faith

(c) 2004 West Legal Studies in Business A Division of Thomson Learning