Trademark Law

1. Trademark Law • Oct. 9, 2006 • Week 6 • Finish Chapter 4 – Registration • Start Chapter 5 - Loss of Trademark Rights • Read Pgs. 312-345, 353-363, 368-378; skim sample documents 379-389 Trademark Law

2. Review - Advantages of Registration • Nationwide protection from the date of the application • Prevents senior users in limited geography from expanding their territory • Incontestability if used for 5 yrs (and paperwork filed with USPTO) • Stop infringing goods at the dock • Mark is presumed valid during litigation • Get to use that really cool ® symbol • Enhanced Damages (discussed later) Trademark Law

3. Review - Bars to Registration • 15 USC § 1052(a) - No mark shall be refused registration… unless • it is immoral, deceptive, or scandalous matter; or • [it is] matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after [Jan. 1, 1995] Trademark Law

4. Review - Bars to Registration • Refusal based on 15 USC § 1052(a) • immoral, deceptive, or scandalous matter; or • matter which may disparage … Trademark Law

5. Review - Bars to Registration • Refusal based on 15 USC § 1052(b) – flags or coat of arms or insignia of the US, any State or muni, or any foreign nation, or any simulation thereof • Refusal based on 15 USC § 1052(c ) – Names, portrait or signatures (live people or dead presidents [while the widow still lives]) Trademark Law

6. Review - Bars to Registration • Refusal based on 15 USC § 1052(d) • resembles a mark (registered or not) that the applied for mark would likely to cause confusion with as used or as intended to be used Trademark Law

7. Review - Bars to Registration • 15 USC § 1052(e) - Cannot register a mark which • (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them • (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registerable under section 4 [15 USC §1054] • (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, • (4) is primarily merely a surname, or • (5) comprises any matter that, as a whole, is functional. • 15 USC §1052(f) - except for §1052(a), (b), (c), (d), (e)(3) and (e)(5)... all of the other rejections may be overcome by proving the mark has become distinctive (a.k.a. acquired secondary meaning) to the examiner. Trademark Law

8. Review - Bars to Registration • 15 USC § 1052(e) - Cannot register a mark which • (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them • Must acquire 2nd meaning for mark to be protectable; See §1052(f) Trademark Law

9. Review - The Budge Test • Compare and contrast… • 15 USC § 1052(a) – bars deceptive terms – complete bar (not even 2nd meaning will allow registration • 15 USC § 1052(e)(1) – bars merely descriptive terms or deceptively misdescriptive terms – (but 2nd meaning will allow registration) • How to tell the difference? 3-step test on p. 253 Trademark Law

10. Review - Registration of Marks • 15 USC § 1052(e) - Cannot register a mark which • (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registerable under section 4 [15 USC §1054] • Must acquire 2nd meaning for mark to be protectable; See §1052(f) Trademark Law

11. Review - Registration of Marks • 15 USC § 1052(e) - Cannot register a mark which • (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them • 2nd meaning won’t help; See §1052(f) Trademark Law

12. Review - Registration of Marks • 15 USC § 1052(e) - Cannot register a mark which • (4) is primarily merely a surname • Rule: is the "primary significance of the mark to the purchasing public" as that of a surname? • Factors • (i) the degree of surname rareness; • (ii) whether anyone connected with applicant has the surname; • (iii) whether the term has any recognized meaning other than that of a surname; and • (iv) the structure and pronunciation or “look and sound” of the surname. • Must acquire 2nd meaning for mark to be protectable; See §1052(f) Trademark Law

13. Review - Registration of Marks • 15 USC § 1052(e) - Cannot register a mark which • (5) comprises any matter that, as a whole, is functional. • “in general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Qualitex v. Jacobson (US S. Ct. 1995) [286] • 2nd meaning won’t help. See §1052(f) • Compare and accord this w/ patent law Trademark Law

14. Review - Some Notable Merely Descriptive Marks • Numbers, letters, model numbers • General rule: Not distinctive – not registerable • How to protect these marks? • Acquire 2nd meaning • A grade or style designation may be distinctive, IF it also primarily designates the source of the good. • If not… how to protect these marks? • Acquire 2nd meaning Trademark Law

15. Loss of Trademark Rights • Genericism (a verb) • A word is generic if…? (see your notes) • Bayer Co. v. United Drug Co. (SDNY 1921) [312] (Judge Learned Hand ) • The “relevant consumer” gets to “decide” what they will call a product; if a word is the name of the thing, or an identifier of source. • Must educate the customer, competitors, even employees • Purpose of the genericism doctrine is to permit competitor to call their competing goods by their commonly-known name Trademark Law

16. Loss of Trademark Rights • Implementing the Standard: Survey Evidence • King-Seeley Thermos Co. v. Aladdin Industries – The thermos case • Aladdin contended “A generic descriptive word in the English language … as a synonym for vacuum insulated container” “… despite its efforts to protect the trademark, the public has virtually expropriated it as its own. The word having become part of the public domain, it would be unfair to unduly restrict the right of a competitor of King-Seeley to use the word.” Trademark Law

17. Loss of Trademark Rights • Implementing the Standard: Survey Evidence • DuPont • Ask the right questions! • Don’t ask - whether the principal significance of the name supplied was its indication of the nature or class of an article • Do ask - whether the principal significance of the name supplied was an indication of its origin. Trademark Law

18. Loss of Trademark Rights • Genericism and 2nd meaning • defacto secondary meaning – when the public associates the generic term with a single source. • E.g., LITE for beer; Miller’s ads “give me a LITE” • Still not a mark despite the acquired secondary meaning. • AOL v. AT&T • You’ve got mail – consistently w/ that phrase’s common meaning • Allowing TM rights would stop others from using it Trademark Law

19. Loss of Trademark Rights • Abandonment • 15 USC § 1127 [Lanham Act §45] (N.B. error in text) Abandonment of mark. A mark shall be deemed to be "abandoned" when either of the following occurs: (1)When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of that mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. (2) [the owners conduct causes the mark to become generic] Trademark Law

20. Loss of Trademark Rights • Silverman v. CBS, Inc. (2nd Cir. 1989) [356] Trademark Law

21. Loss of Trademark Rights • Abandonment • Silverman v. CBS, Inc. (2nd Cir. 1989) [356] • What’s the meaning of intent not to resume? • What were some of CBS’s “minor activities” that it asserted kept its mark alive? Trademark Law

22. Loss of Trademark Rights • Assignment in Gross • Clark & Freeman v. Heartland (SDNY 1993) [368] Trademark Law

23. Loss of Trademark Rights • Assignment in Gross • An assignment "in gross" is an assignment without the goodwill of the mark • What is goodwill? Trademark Law

24. Loss of Trademark Rights • Naked Licensing - agreements to allow use of the name without adequate supervision and quality control • 15 USC § 1127 [Lanham Act §45] (N.B. error in text) Abandonment of mark. A mark shall be deemed to be "abandoned" when either of the following occurs: (2) [the owners conduct causes the mark to become generic] Trademark Law

25. Loss of Trademark Rights • Failure to Police the Mark • Policy for requiring mark owners to policy their mark – if there are numerous products in the marketplace bearing the alleged mark, purchasers may learn to ignore the mark as a source indication… [this] causes the mark to lose its significance as a mark Trademark Law

26. Loss of Trademark Right • Failure to Police the mark Trademark Law

27. Loss of Trademark Right • Failure to Police the mark • What about a mark owner’s agreement to allow an infringer to sell-off the remaining goods • See Exxon Corp. [376] Trademark Law

28. Next Week • Chapter 6 – Infringement • You’ve finished the bread and salad – now it time for the meat and potatoes… • Read: • AMF Inc. vs. Sleekcraft Boats (N.B. Read this case carefully!) • Pgs. 395-400, 407-421, skim Playboy vs. Netscape on pgs. 421-423, read Playboy vs. Netscape (starts on suppl. pg. 80), pgs. 424-429 Trademark Law