Trademark

A Friend to Us All

What Does Trademark Law Do?

• Protects consumers from confusion regarding brands of products.

• Protects a business’s interest in its goodwill.• Preserves honesty and fair dealing in

commerce.

How about some definitions?

• Trademark law (federal): The Lanham Act, 15 U.S.C. sec. 1051, et seq.

• Trademark: Something that indicates the source or origin of goods.

• Servicemark: Same as a trademark, except for services.

• Trade name: Person or company that produces goods or services.

What can be a trademark?

• Lanham Act says a trademark is any word, name, symbol, or device that indicates the source or origin of goods.

General requirements

• Must distinguish goods from the goods of others.

• Adjective, not a noun.

• Most important thing is that it be distinctive.

A trade name is not always a trade mark

• Trade name is just the name of the producer

• Does not necessarily describe goods

• Reserving trade name does not guarantee trademark

Examples

• Words—Kodak, Xerox• Word string—Land o’ Lakes• Slogan—I’m lovin’ it.• Name—Pillsbury, Ford• Letters or initials—IBM, NBC• Numbers—4711• Domain name—Amazon.com

More examples

• Telephone number—488-8888

• Drawing—Gerber baby

• Device—Orange tab on back pocket

• Shape—Nike swoosh

• Sounds—That annoying tune when Windows opens

• Sign—Golden arches

Still more . . .

• Product design—Round thermostat

• Package—Pinch bottle

• Configurations—Coke bottle

• Colors or color scheme—blue, pink, purple

• Fragrance—floral scent

Different levels of “distinctive”

• Fanciful• Arbitrary• Suggestive• Descriptive• Generic

Fanciful

• Something made-up• Fanciful marks are inherently distinctive.• Fanciful marks may be based on real words.

Arbitrary

• Real words or objects wholly unrelated to the product.

• Inherently distinctive.

Suggestive

• Calling to mind an aspect of the product.

• Requires some imagination • Inherently distinctive.

Descriptive

• Tells something about a product– Function, characteristics, geographic origin, or

ingredients.

• Not distinctive without secondary meaning.

Generic

• Common name of the product

• Not distinctive– May not be used as a trademark

• May once have been a mark– Linoleum, aspirin.

What is this “secondary meaning” of which you speak?

• An identification that a descriptive mark has with the products of a certain manufacturer.

• Distinctive only when it refers to goods from a particular source.

• Not automatic—must be proved

Such as . . .

• Purple – Chocolate bars

• Wheaties – Cereal

• Chelsea – Clocks

Proof of a secondary meaning

• Long and exclusive use.• Extensive advertising.• Surveys—consumer identification• “Any other evidence.”• Want to show that consumers

identify the mark with a particular maker when attached to those goods.

GENERICIDE

• Trademark becomes generic name for product.

• May be due to improper use or protection of mark.

• Shows importance of protection of mark.

How do you get a trademark?

• Trademarks are NOT automatic.• Registration is required for a

trademark.• Registration is not allowed without

proof that the mark was used.• Patent and Trademark Office may

reject a mark that does not meet standards.

Can I Register a trademark before I use it?

• No (did you not see the last slide?)• Before use, you may register your

intent to use a mark.• Intent to use registration is optional.• Reserves your mark for Six months, to

allow you to use it.• May be renewed for up to two years.• Must have bona fide intent to use

mark.

How to Register a Trademark

• File an application– Must show use in interstate commerce

• PTO examines mark– Searches registrations, applications, general

business resources• PTO attorney examines for grounds for

objection to registration• If no grounds for objection, the mark is

published– Allow the public to comment.

• If no public objection to the mark is sustained, a certificate of registration is issued.

• Certificate of registration is good for ten years.

• Registration may be renewed.• In theory, trademark could last

forever.

Grounds to refuse registration

• Registration may be denied if the mark is:– Deceptive or immoral– Misleading geographic designator

of wines or spirits– Flag of U.S.– Unconsenting living person– Likely to confuse

Or . . .

– Merely descriptive– Geographically descriptive– Surname– Symbols protected by other law

• Such as Olympic rings, Smokey the Bear)

An example of a registration refused

What about state registration?

Advantages of state registration

• Inexpensive• Usually, done quickly• May provide all the

protection a business needs.

Advantages of federal registration

• Nationwide coverage• Actions are brought in

federal court• Worldwide recognition• Get to use that cool ®

symbol.

How do you protect your trademark?

• Always use the mark as an adjective• Distinguish the mark.

– Capitalize it– Always use the trademark symbol

• Spell teh mark correctly• Never use it as a possessive or plural• Police third-party usage

Trademark Protection Litigation

There is one question to be answered:

“Is the allegedly infringing mark likely to cause confusion, or to cause mistake, regarding the source, affiliation, connection, or sponsorship of goods?”

• Actual confusion is not required.• Evidence considered includes:

– Similarity or dissimilarity of marks– Similarity or dissimilarity of goods– Trade channels– Conditions under which goods are bought– Fame of the prior mark– Similar marks– Actual confusion– Length of time marks have been used– Laches, estoppel– Variety of goods– Any other evidence regarding use of marks

Remedies for Trademark Infringement

• Injunction against further use– Destruction of infringing ads, etc.

• Actual damages– Lost sales– Damage to good will– Lost income– Expenses– Reasonable royalty

Alternate damages

• Accounting – Profits made through infringement

• Attorney’s fees– For intentional or willful infringement– Difficult to show accidental infringement

Fair Use

• Not the same as copyright fair use• Use allowed as long as it isn’t to sell a

product• Nominative fair use

– Just saying the name of the product

• Commentary– Including parody

What is nominative fair use?

• Product or service in question is not readily identifiable without the trademark

• Only so much of the mark may be used as is reasonably necessary to identify

• No suggestion sponsorship or endorsement by the trademark holder

Lessons from reality

Examples of cases

AMF, Inc. v. Sleekcraft Boats

AMF’s Story

• Manufactured boats• Used “Slickcraft” mark since 1954• Registered mark federally in 1969• Advertised nationally

– General circulation magazines• 100+ authorized dealers• $50 million in gross sales

Sleekcraft’s story

• Manufactured boats• Used mark since 1969

– Did not know about AMF’s mark• Advertised nationally• Specialty magazines• Around $10 million gross sales

AMF warned Sleekcraft of possible infringement

• Sleekcraft added “Boats by Nescher” to plaques on boats– Also added it to some advertising

• New logo was not on stationery, trucks, signs, or some advertising

• Result?

Ninth Circuit found infringement

• Strength of mark– Suggestive

• Proximity– Overlapping uses

• Similarity of marks– Look, sound similar– Logo not always there

• Actual confusion– Negligible

• Marketing channels– Parallel, if not identical

• Type of goods and purchaser care– Careful buyers

• Intent – None

• Likelihood of expansion– Strong

Court ordered limited injunction

• Both used their marks for over 10 years• Complete prohibition unnecessary to protect

AMF• Sleekcraft must add new logo

– Minimum– May, if ordered, use up existing supplies

Mattel, Inc. v. Walking Mountain Productions

Trademark infringement claim dismissed

• Mark transcended identifying purpose– Entered public discourse – Became an integral part of our vocabulary– Assumed a role outside trademark law

• First Amendment protections apply– Trademark owner may not control public discourse

whenever the public imbues his mark with a meaning beyond its source-identifying function

Trademark law may not apply to artwork

• Use of mark artistically relevant

• If relevant, use of mark may not deceive– No endorsement implied

• Free expression outweighs trademark interest

Copyright claim also dismissed

• Basic case of infringement was made• Fair use, because a parody

– Commentary on image of Barbie– Context– Transformative– No effect on market

Trade Dress

• “Total image” of the product– Size, shape, color, texture, or graphics.

Elements of a trade dress action:• Dress is inherently distinctive, or has a

secondary meaning• Competing dress would likely confuse the

consuming public• Dress is nonfunctional

Two Pesos v. Taco Cabana

Trademark law applies to trade dress

• No basis in law to make distinction

• If distinctive, no secondary meaning required

Trademark Dilution

• Prevents commercial activity that dilutes the distinctive quality of another mark.

• “Blurs” distinction between marks• Tarnishes reputation of famous mark• Marks must be identical, or nearly identical• Actual injury to the economic value of the

mark is not required; just “likely”