Trademark Law 1

Trademark Law

Oct. 9, 2006 Week 6

Finish Chapter 4 – Registration Start Chapter 5 - Loss of Trademark

Rights Read Pgs. 312-345, 353-363, 368-378;

skim sample documents 379-389

Trademark Law 2

Review - Advantages of Registration Nationwide protection from the date of

the application Prevents senior users in limited

geography from expanding their territory Incontestability if used for 5 yrs (and

paperwork filed with USPTO) Stop infringing goods at the dock Mark is presumed valid during litigation Get to use that really cool ® symbol Enhanced Damages (discussed later)

Trademark Law 3

Review - Bars to Registration 15 USC § 1052(a) - No mark shall be

refused registration… unless it is immoral, deceptive, or scandalous matter; or [it is] 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; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after [Jan. 1, 1995]

Trademark Law 4

Review - Bars to Registration

Refusal based on 15 USC § 1052(a) immoral, deceptive, or scandalous

matter; or matter which may disparage …

Trademark Law 5

Review - Bars to Registration Refusal based on 15 USC § 1052(b) –

flags or coat of arms or insignia of the US, any State or muni, or any foreign nation, or any simulation thereof

Refusal based on 15 USC § 1052(c ) – Names, portrait or signatures (live people or dead presidents [while the widow still lives])

Trademark Law 6

Review - Bars to Registration

Refusal based on 15 USC § 1052(d) resembles a mark (registered or not)

that the applied for mark would likely to cause confusion with as used or as intended to be used

Trademark Law 7

Review - Bars to Registration 15 USC § 1052(e) - Cannot register a mark which

(1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them

(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registerable under section 4 [15 USC §1054]

(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,

(4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.

15 USC §1052(f) - except for §1052(a), (b), (c), (d), (e)(3) and (e)(5)... all of the other rejections may be overcome by proving the mark has become distinctive (a.k.a. acquired secondary meaning) to the examiner.

Trademark Law 8

Review - Bars to Registration 15 USC § 1052(e) - Cannot register a mark

which (1) when used on or in connection

with the goods of the applicant is merely descriptive or deceptively misdescriptive of them

Must acquire 2nd meaning for mark to be protectable; See §1052(f)

Trademark Law 9

Review - The Budge Test Compare and contrast… 15 USC § 1052(a) – bars deceptive terms –

complete bar (not even 2nd meaning will allow registration

15 USC § 1052(e)(1) – bars merely descriptive terms or deceptively misdescriptive terms – (but 2nd meaning will allow registration)

How to tell the difference? 3-step test on p. 253

Trademark Law 10

Review - Registration of Marks 15 USC § 1052(e) - Cannot register a mark

which (2) when used on or in connection with the

goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registerable under section 4 [15 USC §1054]

Must acquire 2nd meaning for mark to be protectable; See §1052(f)

Trademark Law 11

Review - Registration of Marks 15 USC § 1052(e) - Cannot register a mark

which (3) when used on or in connection

with the goods of the applicant is primarily geographically deceptively misdescriptive of them

2nd meaning won’t help; See §1052(f)

Trademark Law 12

Review - Registration of Marks 15 USC § 1052(e) - Cannot register a mark which

(4) is primarily merely a surname Rule: is the "primary significance of the mark to the

purchasing public" as that of a surname? Factors

(i) the degree of surname rareness; (ii) whether anyone connected with applicant has the

surname; (iii) whether the term has any recognized meaning other

than that of a surname; and (iv) the structure and pronunciation or “look and sound”

of the surname.

Must acquire 2nd meaning for mark to be protectable; See §1052(f)

Trademark Law 13

Review - Registration of Marks 15 USC § 1052(e) - Cannot register a mark which

(5) comprises any matter that, as a whole, is functional. “in general terms, a product feature is functional

if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Qualitex v. Jacobson (US S. Ct. 1995) [286]

2nd meaning won’t help. See §1052(f)

Compare and accord this w/ patent law

Trademark Law 14

Review - Some Notable Merely Descriptive Marks

Numbers, letters, model numbers General rule: Not distinctive – not

registerable How to protect these marks?

Acquire 2nd meaning

A grade or style designation may be distinctive, IF it also primarily designates the source of the good. If not… how to protect these marks?

Acquire 2nd meaning

Trademark Law 15

Loss of Trademark Rights Genericism (a verb) A word is generic if…? (see your notes) Bayer Co. v. United Drug Co. (SDNY

1921) [312] (Judge Learned Hand ) The “relevant consumer” gets to “decide”

what they will call a product; if a word is the name of the thing, or an identifier of source.

Must educate the customer, competitors, even employees

Purpose of the genericism doctrine is to permit competitor to call their competing goods by their commonly-known name

Trademark Law 16

Loss of Trademark Rights Implementing the Standard: Survey

Evidence King-Seeley Thermos Co. v. Aladdin Industries

– The thermos case Aladdin contended “A generic descriptive word in the

English language … as a synonym for vacuum insulated container”

“… despite its efforts to protect the trademark, the public has virtually expropriated it as its own. The word having become part of the public domain, it would be unfair to unduly restrict the right of a competitor of King-Seeley to use the word.”

Trademark Law 17

Loss of Trademark Rights

Implementing the Standard: Survey Evidence DuPont

Ask the right questions! Don’t ask - whether the principal significance of

the name supplied was its indication of the nature or class of an article

Do ask - whether the principal significance of the name supplied was an indication of its origin.

Trademark Law 18

Loss of Trademark Rights Genericism and 2nd meaning

defacto secondary meaning – when the public associates the generic term with a single source. E.g., LITE for beer; Miller’s ads “give me a LITE” Still not a mark despite the acquired secondary

meaning. AOL v. AT&T

You’ve got mail – consistently w/ that phrase’s common meaning

Allowing TM rights would stop others from using it

Trademark Law 19

Loss of Trademark Rights Abandonment

15 USC § 1127 [Lanham Act §45] (N.B. error in text)

Abandonment of mark. A mark shall be deemed to be "abandoned" when either of the following occurs:

(1)When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of that mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

(2) [the owners conduct causes the mark to become generic]

Trademark Law 20

Loss of Trademark Rights Silverman v.

CBS, Inc. (2nd Cir. 1989) [356]

Trademark Law 21

Loss of Trademark Rights

Abandonment Silverman v. CBS, Inc. (2nd Cir.

1989) [356] What’s the meaning of intent not to

resume? What were some of CBS’s “minor

activities” that it asserted kept its mark alive?

Trademark Law 22

Loss of Trademark Rights

Assignment in Gross Clark & Freeman v. Heartland

(SDNY 1993) [368]

Trademark Law 23

Loss of Trademark Rights Assignment in Gross

An assignment "in gross" is an assignment without the goodwill of the mark

What is goodwill?

Trademark Law 24

Loss of Trademark Rights

Naked Licensing - agreements to allow use of the name without adequate supervision and quality control

15 USC § 1127 [Lanham Act §45] (N.B. error in text)

Abandonment of mark. A mark shall be deemed to be "abandoned" when either of the following occurs:

(2) [the owners conduct causes the mark to become generic]

Trademark Law 25

Loss of Trademark Rights

Failure to Police the Mark Policy for requiring mark owners to

policy their mark – if there are numerous products in the marketplace bearing the alleged mark, purchasers may learn to ignore the mark as a source indication… [this] causes the mark to lose its significance as a mark

Trademark Law 26

Loss of Trademark Right

Failure to Police the mark

Trademark Law 27

Loss of Trademark Right

Failure to Police the mark What about a mark owner’s

agreement to allow an infringer to sell-off the remaining goods

See Exxon Corp. [376]

Trademark Law 28

Next Week Chapter 6 – Infringement

You’ve finished the bread and salad – now it time for the meat and potatoes…

Read: AMF Inc. vs. Sleekcraft Boats (N.B. Read this

case carefully!) Pgs. 395-400, 407-421, skim Playboy vs.

Netscape on pgs. 421-423, read Playboy vs. Netscape (starts on suppl. pg. 80), pgs. 424-429