Intellectual Property Boston College Law School March 28, 2007 Trademark - Distinctiveness
Overview Requirements Duration Rights (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)
characteristic/quality Categories of Marks Less Protection More Protection Generic Denotes general class of products Unprotectible Shredded Wheat, Aspirin, Thermos, Cellophane, Car, Computer Descriptive Describes some characteristic/quality Protectible if secondary meaning Suggestive Suggests some characteristic Automatically Protectible Arbitrary Bears no relation to product Automatically Protectible
Policy Considerations Costs from Protection Trademark Significance High Secondary Meaning Unprotectible Protectible Low Generic Descriptive Suggestive Arbitrary Distinctiveness
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
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 Arbitrary
Trade Dress & Product Design
Two Pesos v. Taco Cabana
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
Policy Considerations Harm to Competition Product Design Potential for Confusion Trade Dress, Trademarks High Low Generic Descriptive Inherently Distinctive Distinctiveness
Example - Review
Administrative Details Next Assignment Read through VI.C.2 – Priority No class on Friday No office hours today