Intellectual Property Boston College Law School April 13, 2007 Trademark – Genericide, Functionality

Infringement Causes of Action –Likelihood of Confusion –Dilution –Cybersquatting –False Advertising

Defenses Genericness Functionality Abandonment Nominative Use Parody

Murphy Door Bed v. Interior

Generic? Generic –Thermos –Escalator –Trampoline –Cellophane –Nylon –Yo-Yo

Avoiding Genericide

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

TrafFix v. MDI 121 S. Ct (2001)

Functionality When is something “functional”? –Essential to the use or purpose of the article –Affects the cost or quality of the product Overall inquiry –Exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage Relevant Factors –Existence of a utility patent disclosing utilitarian advantages –Advertising materials touting utilitarian advantages –Unavailability of alternative designs –Simpler or cheaper method of manufacturing Burden of proof on trademark holder

Hypos

Patent, Copyright, Trademark PatentCopyright Trademark Functionality Doctrine Useful Article Doctrine Product Design Fictional Characters Computer Software

Administrative Details Preliminary Exam Details –Format Take home examination Freely schedulable, but limited to 24 hours Open book, no additional research Strict word limits –Content At least one traditional issue-spotter At least one broad-based policy essay –Past Exams on Web Site

Administrative Next Assignment –Read through VI.E.4 – Finish Defenses