1. Intellectual Property
Boston College Law School
March 28, 2007
Trademark - Distinctiveness

2. 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)

3. 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

4. Policy Considerations
Costs from
Protection
Trademark
Significance
High
Secondary
Meaning
Unprotectible
Protectible
Low
Generic
Descriptive
Suggestive
Arbitrary
Distinctiveness

5. Zatarains v. Oak Grove

6. 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

7. 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

8. Trade Dress & Product Design

9. Two Pesos v. Taco Cabana

10. 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

11. Policy Considerations
Harm to
Competition
Product
Design
Potential for
Confusion
Trade Dress,
Trademarks
High
Low
Generic
Descriptive
Inherently Distinctive
Distinctiveness

12. Example - Review

13. Administrative Details
Next Assignment
Read through VI.C.2 – Priority
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