n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product. word, phrase, logoused by a manufacturer to distinguish a product Trademark must be Distinctive Trademark must be Used in Commerce

Federal Trademark Registration Act (1870) Trademark Protection Act (19 Stat. 141) (1876) Interstate Commerce Registration Act (33 Stat. 724) (1905) U.S. SUPREME COURTS OVERTURNS RE: Trade Mark Cases 100 U.S. 82 (1879) The Lanham Act (15 U.S.C. § 1051 et. seq.) (1947) No Substantive Rights Very Limited Scope THE LAW TODAY…

Comparison with Other I.P.

Lower Product Search Costs Promotes Product Consistency Distinguish Products from Multiple Sources Prevents Free-Riding Regulates Competition

n. A name, phrase, or other device used to identify and distinguish the services of a certain provider. n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product. n. A word, symbol, or device used on goods or services to certify the place of origin, quality, or other characteristic. n. A trademark or servicemark used by an association, union, or other group either to identify the group’s products or services or to signify membership in the group. n. A name, phrase, or other device used to identify and distinguish the services of a certain provider. n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product. n. A word, symbol, or device used on goods or services to certify the place of origin, quality, or other characteristic. n. A trademark or servicemark used by an association, union, or other group either to identify the group’s products or services or to signify membership in the group. GOODS SERVICES ORGANIZATIONS U L ® QUALITY

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

Categories of Marks Less ProtectionMore Protection Generic Denotes general class of products Unprotectible Shredded Wheat, Aspirin, Thermos, Cellophane, Car, Computer Arbitrary or Fanciful Bears no relation to product; Automatically Protectible Descriptive Describes some characteristic/quality Protectible if secondary meaning Suggestive Suggests some characteristic Automatically Protectible

Categorizations Trademark 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 Arbitrary Suggestive Descriptive

Descriptive Marks Lanham Act § 2 (15 U.S.C. § 1052) –No trademark … shall be refused registration … unless it -... (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive … of them …. (f) Except as expressly excluded … nothing herein shall prevent the registration of a mark … which has become distinctive of the applicant’s goods in commerce.

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

Marketing What does consumer think? Surveys A: Limited to regional marketplace (e.g. season/time/place) Courts may be loathe to allow extensive broadening of trademark and limit the scope Courts impose controls on secondary meaning: How do we prove/disprove the existence of secondary meaning Q: ?

Secondary Meaning Time 0% 50% Consumers who Assoc. Achieved Secondary Meaning Start Use No Protection

Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F2d 786 (5 th Cir. 1983) PlaintiffDefendant Holding: Term “Fish-Fry” is descriptive in nature, BUT have acquired secondary meaning Defendant has right to use terms under “Fair Use” Doctrine as descriptive terms; Oak Grove Dist. Such uses are privileged because they use the terms only in their purely descriptive sense.

Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267 (2 nd Cir. 1995) Court applies Fair Use Doctrine: Public’s right to use descriptive words or images in good faith in their ordinary descriptive sense prevails over exclusivity claims of trademark owner PlaintiffDefendant Johnson entitled to use pine-tree shape descriptively, despite Car-Freshner’s mark Holding: Issue is whether the protected word or image (here “pine tree” shape) is used descriptively or as a mark Defendant has right to “Fair Use” Defense in use of descriptive terms that plaintiff uses as suggestive

BAYER CO., Inc., v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) Holding: Court applies Primary Significance Test and holds “Aspirin” to represent the product, not the producer Court distinguishes between general consumer perception (aspirin is a product) and a subclass of druggists and pharmacists who recognize “Aspirin” as a Bayer product

Genessee Brewing Company, Inc. v. Stroh Brewing Co., 124 F.3d 137 (2 nd Cir. 1997) Court applies the Canfield Test: Nature of product renders “Honey Brown” generic (for ales) rather than descriptive Holding: Issue is whether the protected word or image is used descriptively or as a mark Defendant can escape “unfair competition” claim if it exercised reasonable means to prevent confusion Whether term that identifies a product is generic depends on the competitor’s need to use that term– if not commonly used alternative conveys same functional information, the term is generic (afforded no protection).

In 1914, Supreme Court Justice Oliver Wendall Holmes wrote in the "Waterman Pen" case that while everyone had a right to use their own name, the junior user must to take precautions in the manner of use so as not to cause confusion with the senior user's mark. L.E. Waterman Company. v. Modern Pen Company., 235 U.S. 88, 59 L. Ed. 142 (1914).

Thus, we have seen people ordered not to utilize their names in a certain manner so as to avoid confusion with a prior right. Sullivan v. Ed Sullivan Radio & T.V., Inc., 152 N.Y.S. 2d 227, 110 USPQ 106 (1st Dept 1956) ( Defendant ordered to change name of business for ED SULLIVAN to E.J. SULLIVAN); E. & J. Gallo Winery v. Gallo Cattle Co., 12 USPQ2d 1657 (ED Cal. 1989) (Joseph Gallo not permitted to use GALLO as trademark, non-trademark use of name limited); Lyon v. Lyon, et. al. 246 Cal App 2d 519, 152 USPQ 719 /(2d Dist 1966) (partner named Lyon left the law firm of LYON & LYON, enjoined from using LYON as the name of his new firm).

Section 2(e)(2) of the Lanham Act provides: No trade-mark... shall be refused registration on the principal register on account of its nature unless it— (e) Consists of a mark which,... (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them U.S.C. Sec. 1052(e)(2) (1988). Section 2(e)(2) thus bars the registration of a trademark on the principal register if the mark is either "primarily geographically descriptive," or "primarily geographically deceptively misdescriptive."

In Re: Nantucket, 677 F.3d 95 (C.C.P.A. 1982) Holding: A geographical term applied to products may be geographically misdescriptive without being deceptive Court relies of perceptions of typical consumer and their expectation vis a vis the origin of clothing marked with “Nantucket” Record devoid of any indication of consumer confusion Under Lanham Act, such a usage may be permitted protection as arbitrary & fanciful, suggestive, or descriptive with secondary meaning demonstrating distinctiveness

Geographic Marks Case law shows numerous instances where the goods/place association is not the "primary" meaning a mark connotes. 10 USPQ2d at For example, a geographic mark may indicate that a product is stylish or of high quality, i.e., HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a car. The use of the geographic location may be arbitrary or fanciful, i.e., DUTCH BOY for paint.

Trade Dress & Product Design Trade DressProduct Design

Two Pesos v. Taco Cabana 505 U.S. 763 (1992) Taco Cabana Trade Dress

Two Pesos v. Taco Cabana 505 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

Functionality Lanham Act § 2(e)(5) –No trademark … shall be refused registration … unless it -- (e) Consists of a mark which, … (5) comprises any matter that, as a whole, is functional

Functionality When is something “functional”? –Essential to the use or purpose of the article –Affects the cost or quality of the product –Exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage

In Re Morton-Horwich 671 F.2d 1332 (C.C.P.A. 1982) “Superior in function or economy of manufacture, which superiority is determined in light of competitive necessity to copy” Evidence of functionality Existence of utility patents Advertising touting utility Existence of alternatives Cost to manufacture

Policy Considerations Functionality FunctionalNon-Functional Low High Potential for Confusion Harm to Competition No Protection

Example