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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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…