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Trademark and Unfair Comp.

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

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Trademark and Unfair Comp.

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

  2. 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 ….

  3. Kellogg v. National Biscuit

  4. Qualitex v. Jacobson Web Site

  5. Hypothetical

  6. Hypothetical

  7. Hypothetical

  8. Color and Sounds

  9. Other Types of Marks • Service Marks • Collective Marks • Certification Marks

  10. 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.

  11. 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 ….

  12. 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

  13. 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. . . .

  14. 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 ….

  15. 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 Categories of Marks Less Protection More Protection

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

  17. 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 Descriptive Descriptive Arbitrary Suggestive Suggestive Suggestive Descriptive Categorizations

  18. 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

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

  20. Next Assignment • Next Assignment • Read Section II.C - Trade Dress

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