Trademark and Unfair Comp. Boston College Law School January 16, 2008 What is a Trademark?

What is a trademark? Lanham Act § 45 (15 U.S.C. § 1125) –Trademark. The term “trademark” includes any word, name, symbol, or device, or any combination thereof - (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register … –to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….

Kellogg v. National Biscuit

Qualitex v. Jacobson Web Site

Hypothetical

Color and Sounds

Other Types of Marks Service Marks Collective Marks Certification Marks

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

Certification Marks - Cancellation Lanham Act § 14(5) (15 U.S.C. § 1064(5)) –At any time in the case of a certification ark on the ground that the registrant: (A) does not control, or is not able legitimately to exercise control over, the use of such mark; or (B) engages in the production or marketing of any goods or services to which the certification mark is applied; or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify … goods or services of any person who maintains the standards or conditions which such mark certifies....

What is a trademark? Lanham Act § 45 (15 U.S.C. § 1125) –Trademark. The term “trademark” includes any word, name, symbol, or device, or any combination thereof - (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register … –to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….

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

Policy Considerations Distinctiveness Generic Descriptive Suggestive Arbitrary Low High Potential for Confusion Harm to Competition Unprotectible Secondary Meaning 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

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

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

Next Assignment –Read Section II.C - Trade Dress