1. Trademark and Unfair Comp. Boston College Law School January 14, 2009 Introduction

2. Topics Case: Quality Inns v. McDonalds Theories for Protection Context –Brief History of Trademark –Sources of Law –Institutional Structure Course Roadmap Administrative Details

3. Quality Inns v. McDonald’s (695 F. Supp. 198 (D. Md. 1988)

6. Why Protect Trademarks? 1. Protect consumers from confusion 2. Provide incentives for investing in quality 3. Prevent other companies from free-riding 4. Reward companies for their labor 5. Protect value of trademark (and associated goodwill) as a good in itself

7. Costs of Trademark Protection 1. May raise costs of competition 2. May hurt consumers 3. May harm free speech interests

8. Competing Visions of Brands The case for –Provides information to consumers –Ensures quality of product –Creates valuable associations consumers want The case against –Creates artificial distinctions, raising prices –Encourages unhealthy wants & desires –No need for additional legal protection

9. Trademark Law - Context Historical Context Sources of Trademark Law Institutional Framework Comparison With Other I.P.

10. History - Early Marks Pottery Stamps Crete c. 2000 B.C. Brick Stamps Rome c. 10 B.C. Paper Watermarks Europe c. 13th century Silversmith Marks U.S. c. 18-19th century

11. History - Early Purposes Form of advertising Used to prove source of goods Guarantee of quality

12. History - U.S. Trademark Act Pre-1870: state common law protection 1870: first federal trademark act –Based on Copyright and Patent Clause –Struck down in Trade-Mark Cases, 100 U.S. 82 (1879) 1881: new federal trademark statute –Based on Commerce Clause –Upheld as valid exercise of commerce power 1946: Lanham Act 1996: Anti-Dilution Act

13. History - I.P. Clause U.S. Const. Art. I, sec. 8: Congress shall have the power: –“to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

14. Sources of Trademark Law State Common Law and Statutes –State law not preempted (unlike copyright/pat.) –Can register trademarks in each state Federal Protection Under Lanham Act –Provides process for registering marks federally –Provides protection for registered marks –Also provides protection for unregistered marks

15. Institutional Framework Patent and Trademark Office –Registers trademarks –Adjudicates trademark registration disputes (T.T.A.B.) Appeals from registration denials Opposition or cancellation proceedings Federal Courts –Appeals from trademark registration adjudication –Infringement actions under Lanham Act State Courts –Infringement actions under state and federal law

16. Comparison with Other I.P.

17. Contact Information Office Hours –Location: East Wing, 313 –Hours: Mon. 1:30-3 p.m., or by appointment E-Mail –liujr@bc.edu Phone –617-552-6377

18. Assignment for Next Class Read II.A & B – Subject Matter –Types of Marks –Distinctiveness