Establishing Protection

1. Establishing Protection Intro to IP – Prof. Merges 3.10.09

2. Zatarain’s v. Oak Grove Smokehouse Formerly “Chick-Fri”

3. Agenda • Zatarain’srecap and review • Intro to trade dress

4. Zatarain’s • Generic marks: defense • Statute: section 14, 15 USC 1064(c)

5. Hierarchy of distinctiveness • Arbitrary: Exxon; Google • Fanciful: Apple Computer • Suggestive: “Coppertone” suntan lotion • Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

7. Descrip-tive Mark Generic Mark Fanciful Mark

8. Generic Marks • Words that do not serve as trademarks • Identified with category or type of product, rather than one company or source: Aspirin; Jello; Cellophane; Thermos; Kleenex/Xerox?

9. Marks “born generic” • A category of “descriptive” marks under section 2 • Refused registration under Lanham Act sec. 2(e): “Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive . . .”, 15 USC 1052(e)

10. Genericide • The mark is originally distinctive, and protectable; but becomes over time generic • A trademark that is “too successful” -- ?

11. Cancellation: 15 USC 1064 A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed . . . (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered . . . .

12. “Judicial cancellation” • Court-agency interaction • Judicial review of the trademark register

13. Hierarchy of distinctiveness • Arbitrary: Exxon; Google • Fanciful: Apple Computer • Suggestive: “Coppertone” suntan lotion • Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

14. Hierarchy of distinctiveness • Arbitrary: Exxon; Google • Fanciful: Apple Computer • Suggestive: “Coppertone” suntan lotion • Descriptive: Quick-Dri Hairdryers; Speedo bathing suits • Generic

15. A & F • Sugg. • Des. • Generic Inherently Distinctive Requires proof of “secondary meaning” No trademark protection

16. 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

17. 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

18. Sec. 1052 (Lanham Act sec. 2). Trademarks Registrable on Principal Register; Concurrent Registration No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it — (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them . . . .

19. Statutory basis: registration of descriptive marks Except as expressly excluded in paragraphs . . . of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. -- Lanham Act sec. 2f, 15 USC 1052(f)

20. 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

21. Trade Dress & Product Design Trade Dress Product Design

22. Trade Dress Protection Lanham Act § 43(a) Any person who shall affix, apply, … or use in connection with any goods or services … a false designation of origin … , and shall cause such goods or services to enter into commerce … shall be liable to a civil action … .

23. Two Pesos v. Taco Cabana505 U.S. 763 (1992) Taco Cabana Trade Dress

24. Two Pesos (cont’d) • 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

25. Sec. 1114 (Lanham Act sec. 32). Remedies; Infringement; Innocent Infringement by Printers and PublishersSec. 1114 (Lanham Act sec. 32) (1) Any person who shall, without the consent of the registrant — (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark . . . .

26. Sec. 1125 (Lanham Act sec. 43). (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, … or any false designation of origin, … which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods ... Shall be liable

27. No reason to differentiate … • P 665 “There is no persuasive reason . . .”

28. Inherently Distinctive?

29. Inherently Distinctive?

30. Jeans Pocket design – no secondary meaning proven