Trademarks Copyright © 2010 - Jeffrey Pittman

Intellectual Property The Unites States is a leader in the creation of wealth through intellectual property, including Trademarks and service marks Copyrights Patents Trade secrets Pittman - Cyberlaw & E-Commerce

Trademarks The main source of trademark law is the Lanham Act of 1976 (as amended) Pittman - Cyberlaw & E-Commerce

Trademark & Service Mark Definition A trademark (service mark) is a word, phrase, symbol, slogan, or design that identifies both a product (or service) and the company producing the product (or service), distinguishing the product (service) from competing products Pittman - Cyberlaw & E-Commerce

Distinctiveness To identify and distinguish a good or service, the proposed trademark must be distinctive If not inherently distinctive, marks can acquire distinctiveness through a secondary meaning attaching to the mark Pittman - Cyberlaw & E-Commerce

Trademark Factors Is the word, name, symbol, or other designation, distinctive of certain goods or services? Is the mark used in a manner that identifies and distinguishes the goods and services from other goods and services? The mark must either be used in commerce or there must be a promise of good faith intent to so use Pittman - Cyberlaw & E-Commerce

Trademark Classifications When a mark is shown to be fanciful, arbitrary, or suggestive, its distinctiveness is presumed without further showing  Pittman - Cyberlaw & E-Commerce

Trademark Classifications "Descriptive" marks are not inherently distinctive, but merely describe a function, use, characteristic, size, or intended purpose of the product Examples of such descriptive marks include "After Tan" post-tanning lotion, "5 Minute" glue, and the "Yellow Pages" telephone directory Pittman - Cyberlaw & E-Commerce

Trademark Classifications Descriptive marks are the weakest category of protectable marks; they are not accorded trademark protection unless they have acquired "secondary meaning" A mark has secondary meaning when "in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself" Pittman - Cyberlaw & E-Commerce

Trademark Classifications Generic marks are not protected; they have lost the ability to identify the producer of products (or services) Generic marks have become associated with a class of products rather than a producer of products Pittman - Cyberlaw & E-Commerce

Secondary Meaning Secondary meaning is established through the following factors: Advertising expenditures – A company’s expenditure of money advertising its new trademark may help that mark acquire secondary meaning in customers’ minds Consumer studies linking the mark to a source – Outside studies showing that customers identify a new mark with its product or company help establish that the mark has acquired secondary meaning Pittman - Cyberlaw & E-Commerce

Secondary Meaning Secondary meaning is established through the following factors: Sales success – By definition, the more product sold under a new trademark, the more likely that the mark is acquiring secondary meaning Unsolicited media coverage of the product – Media coverage of a product with a new mark will increase the likelihood that the mark may acquire secondary meaning Pittman - Cyberlaw & E-Commerce

Secondary Meaning Secondary meaning is established through the following factors: Attempts to plagiarize the mark – Outside attempts to plagiarize a new mark show that the offending company believes that the mark has acquired secondary meaning (Otherwise, there is no incentive to plagiarize the mark) The length and exclusivity of the mark's use – All other considerations equal, the longer a mark is used to identify a product, the more likely the mark is associated with that product, or the company Pittman - Cyberlaw & E-Commerce

Ineligible Marks Not all attempted trademarks are eligible for legal protection Section 2 of the Lanham Act (15 U.S.C. §1052) contains several of the most common grounds for refusing registration: The proposed mark consists of or comprises immoral, deceptive, or scandalous matter The proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute Pittman - Cyberlaw & E-Commerce

Ineligible Marks Grounds for refusal: The proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation The proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception Pittman - Cyberlaw & E-Commerce

Ineligible Marks Grounds for refusal: The proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services The proposed mark is primarily merely a surname Pittman - Cyberlaw & E-Commerce

Trademark Issues For trademark infringement, the courts look for use of a mark in commerce that causes a likelihood of confusion See AMF v. Sleekcraft, page 451, and Exhibit 10.6, page 454 Trademark dilution – the lessening of the capacity of a famous mark to identify and distinguish goods and services Pittman - Cyberlaw & E-Commerce