what’s in a trademark anyway? dan mckinnon, new balance athletic shoe, inc. harvard university -...
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What’s in a Trademark Anyway?What’s in a Trademark Anyway?What’s in a Trademark Anyway?What’s in a Trademark Anyway?Dan McKinnon, New Balance Athletic Shoe, Inc.
Harvard University - July 10, 2008Harvard University - July 10, 2008
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I. The Law I. The Law
Intellectual PropertyIntellectual Property
Definition: a bundle of exclusive rights over creations of the mind, both artistic and commercial
PatentsPatents CopyrightsCopyrights TrademarksTrademarks
Inventions, designs, processes
Literary works, poems, photographs, modicums of expression “fixed in a tangible medium.”
Anything used in commerce to designate the source of origin of a particular good or service.
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I. The LawI. The Law
Trademarks are always used in connection with a particular good or service
The USPTO follows the International Classification of Goods and Services
(there are a total of 45 distinct classes)
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I. The LawI. The Law
TRADEMARKS
Anything used in commerceto designate source of origin of a particular good or service.
Anything? Really? what about sounds?
Reg. No. 916522 Reg. No. 2315261 Status: Opposed
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I. The LawI. The Law
Where’s the trademark?
On April 12, 1960 Coca-Cola was granted trademark protection for this unique “contour bottle” shape.
How about now?
Ask Yourself:
Without seeing the label, do you still know this is a Coke?
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I. The LawI. The Law
Not All Trademarks are Born Equal Under the LawNot All Trademarks are Born Equal Under the Law
Exercise: Suppose we are starting a refrigerator company
a) The ‘Fridge
b) Arctic
c) Kasurion
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I. The LawI. The Law
SPECTRUM OF DISTINCTIVENESS
Fanciful Arbitrary Suggestive Descriptive Generic
Easiest to Register Impossible to Register
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I. The LawI. The Law
Fanciful Arbitrary Suggestive Descriptive Generic
Park’n FlyPark’n Fly
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I. The LawI. The Law
Fanciful Arbitrary Suggestive Descriptive Generic
SPECTRUM OF DISTINCTIVENESS
Exercise:
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I. The LawI. The Law
Acquired Distinctiveness/Secondary MeaningAcquired Distinctiveness/Secondary Meaning
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I. The LawI. The Law
TM VS
Common law Federal Law
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I. The LawI. The Law
Trademark InfringementTrademark Infringement
Who remembers the Eddie Murphy movie “Coming to America”?
Section 2(d) of the Lanham Act:
“Likelihood of Confusion”
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I. The LawI. The Law
Any questions before we move onAny questions before we move on
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II. Business & LawII. Business & Law
So how does this impact business?
On July 2, 2008, I received an email from one of my foreign associates in Ecuador.
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II. Business & LawII. Business & Law
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II. Business & LawII. Business & Law
The Problems:
1. Goodwill
2. Liability
3. Dilution of the Brand/Poor Quality Product
4. Expenses and costs to fight this
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III. BonusIII. Bonus
BONUS QUESTION
FOR AN IPOD SHUFFLE
From a trademark standpoint, why would new balance have a more difficult time protecting its brand than any of its three major competitors?
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IV. The EndIV. The End
Thank you…Any Questions…Thank you…Any Questions…