1. Intellectual Property Boston College Law School March 31, 2008 Trademark - Distinctiveness

2. Overview Requirements –(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. 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

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

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 Descriptive Arbitrary Suggestive Descriptive

8. Secondary Meaning Marks Requiring Secondary Meaning –Descriptive Marks –Surnames –Geographical Marks (some) –Trade Dress and Product Design?

9. Trade Dress & Product Design Trade DressProduct Design

10. Two Pesos v. Taco Cabana

11. 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

12. Inherently Distinctive?

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

15. Example - Review

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