Intellectual Property

Boston College Law School

March 23, 2009

Trademark - Intro, Subject Matter

Trademark - Introduction

Trademark Act - History

• Pre-1870: state common law protection• 1870: first federal trademark act;

– Based on Copyright and Patent clause– Struck down as unconstitutional

• 1881: new federal trademark statute– Based on Commerce Clause– Upheld as valid exercise of commerce power

• 1946: Lanham Act• 1996: Anti-Dilution Act

Why Protect Trademarks?

1. Protect consumers from confusion

2. Provide incentives for investing in quality

3. Prevent other companies from free-riding

4. Reward companies for their labor

5. Protect value of trademark (and associated goodwill) as a good in itself

Costs of Trademark Protection

1. May raise costs of competition

2. May hurt consumers

3. May harm free speech interests

Overview

• Requirements– (1) Distinctiveness– (2) Use in commerce– Registration not required (although benefits)

• Duration– As long as used and distinctive

• Rights– Protect against consumer confusion– Protect against dilution (for famous marks)

What is a trademark?• 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 ….

Qualitex v. Jacobson

Web Site

Hypothetical

Hypothetical

Hypothetical

Color and Sounds

Other Types of Marks

• Trade Dress and Product Design

• Service Marks

• Collective Marks

• Certification Marks

Service Marks

• 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.

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 ….

Certification Marks• 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 ...

Champagne

Overview

• Requirements– (1) Distinctiveness– (2) Use in commerce– Registration not required (although benefits)

• Duration– As long as used and distinctive

• Rights– Protect against consumer confusion– Protect against dilution (for famous marks)

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

Policy Considerations

Distinctiveness

Generic Descriptive Suggestive Arbitrary

Low

HighTrademarkSignificance

Costs fromProtection

UnprotectibleSecondaryMeaning Protectible

Zatarains v. Oak Grove

Secondary Meaning• 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

CategorizationsTrademark

• 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

Secondary Meaning

• Marks Requiring Secondary Meaning– Descriptive Marks– Surnames– Geographical Marks (some)– Trade Dress and Product Design?

Trade Dress & Product DesignTrade Dress Product Design

Two Pesos v. Taco Cabana

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

Inherently Distinctive?

Inherently Distinctive?

Policy Considerations

Distinctiveness

Generic Descriptive Inherently Distinctive

Low

HighPotential forConfusion

Harm toCompetition

Trade Dress,Trademarks

ProductDesign

Example - Review

Administrative Details

• Next Assignment– Finish VI.C