intellectual property boston college law school march 25, 2009 trademark – priority
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Requirements• Lanham Act § 45 (15 U.S.C. § 1125)
– Trademark. The term “trademark” includes any word, name, symbol, or device, or any combination thereof -
• (1) used by a person, or• (2) which a person has a bona fide intention to use in
commerce and applies to register …
– to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….
Categories of MarksLess Protection More Protection
GenericDenotes generalclass of products
Unprotectible
Shredded Wheat,Aspirin, Thermos,Cellophane, Car,
Computer
ArbitraryBears no relation
to product
AutomaticallyProtectible
DescriptiveDescribes some
characteristic/quality
Protectible ifsecondary meaning
SuggestiveSuggests somecharacteristic
AutomaticallyProtectible
Two Pesos v. Taco Cabana505 U.S. 763 (1992)
• Findings of the District Court– 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
Policy Considerations
Distinctiveness
Generic Descriptive Inherently Distinctive
Low
HighPotential forConfusion
Harm toCompetition
Trade Dress,Trademarks
ProductDesign
Requirements• Lanham Act § 45 (15 U.S.C. § 1125)
– Trademark. The term “trademark” includes any word, name, symbol, or device, or any combination thereof -
• (1) used by a person, or• (2) which a person has a bona fide intention to use in
commerce and applies to register …
– to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….
Zazu Designs v. L’Oreal
Nov.
Jan.
Mar.
May.
Jul.
Sep.
Nov. – Minimal Sales- 2 bottles to friend in TX- 40 bottles to stylist in FL
Orders 25,000 bottles & labels
Sep. – Sales to salon customers
Apr. – Small interstate shipment
Jun. – Files for registration of mark
Zazu DesignsL’Oreal
Concurrent Use
• Two types of concurrent use– Different Products
• E.g. Apple Records and Apple Computers
• E.g. Delta Faucets and Delta Airlines
• E.g. Acme Cleaners, Acme Mufflers, Acme ...
– Different Geographic Markets• E.g. Broadway Pizza (Boston) and
Broadway Pizza (S.F.)
Secondary Meaning
Time
0%
50%
Consumerswho Assoc.
Achieved Secondary Meaning
StartUse No
Protection
Secondary Meaning in the Making
Requirements• Lanham Act § 45 (15 U.S.C. § 1125)
– Trademark. The term “trademark” includes any word, name, symbol, or device, or any combination thereof -
• (1) used by a person, or• (2) which a person has a bona fide intention to use in
commerce and applies to register …
– to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….
Advantages of Registration
• Nationwide constructive use - priority
• Nationwide constructive notice
• Possibility of achieving incontestability
• Presumption of validity at trial
• Right to sue in federal court
• Availability of extra remedies (e.g. attorney fees, treble damages, border exclusion …)
Registration Process
• Clearing the trademark
• Start use or have bona fide intent to use
• File application
• Examination by PTO
• Publication in Official Gazette
• Registration– Or if intent to use, notice of allowance and later
filing of statement of use; then registration
Bars to Registration
• Lanham Act §2: – (a) Immoral, scandalous, deceptive; disparages
– (b) Flag, coat of arms, insignia of U.S., state, etc.
– (c) Name, portrait, signature of living individual
– (d) Likely to cause confusion with other mark
– (e) Consists of mark that is:• (1) merely descriptive or deceptively misdescriptive
• (2) primarily geographically descriptive
• (3) primarily geographically deceptively misdescriptive
• (4) primarily a surname
• (5) functional
Bars - Immoral, Scandalous
• Lanham Act §2:– Shall register mark unless it:
• “(a) Consists of or comprises immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute”
Bars to Registration
• Lanham Act §2: – (a) Immoral, scandalous, deceptive; disparages
– (b) Flag, coat of arms, insignia of U.S., state, etc.
– (c) Name, portrait, signature of living individual
– (d) Likely to cause confusion with other mark
– (e) Consists of mark that is:• (1) merely descriptive or deceptively misdescriptive
• (2) primarily geographically descriptive
• (3) primarily geographically deceptively misdescriptive
• (4) primarily a surname
• (5) functional
Bars to Registration
• Lanham Act §2: – (a) Immoral, scandalous, deceptive; disparages
– (b) Flag, coat of arms, insignia of U.S., state, etc.
– (c) Name, portrait, signature of living individual
– (d) Likely to cause confusion with other mark
– (e) Consists of mark that is:• (1) merely descriptive or deceptively misdescriptive
• (2) primarily geographically descriptive
• (3) primarily geographically deceptively misdescriptive
• (4) primarily a surname
• (5) functional
Examples• Lanham Act §2(e) - Examples:
– Descriptive 2(e)(1)• E.g. “ORGANIC” for organically grown oranges
– Deceptive 2(a)• E.g. “ORGANIC” for non-organic oranges
– Deceptively misdescriptive 2(e)(1)• E.g. “JOE’S FAVORITE” for oranges that aren’t Joe’s favorite
– Geographically descriptive 2(e)(2)• E.g. “FLORIDA” for Florida oranges
– Geographically deceptive• E.g. “FLORIDA” for Georgia oranges
– Geographically deceptively misdescriptive 2(e)(3)• E.g. “FLORIDA” for auto parts
– Arbitrary (geographically nondeceptively misdescriptive)• E.g. “ANTARCTIC” for Georgia oranges
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