Intro to Trademark Law
Intro to IP – Prof. Merges
3.10.09
Comparing Trademark to Patent & Copyright Law
• Constitutional Foundation– Patent & Copyright clause– Commerce clause (see The Trademark Cases, 100 US
82 (1879)
• Basic Goal– Pat. & ©: Protect author/inventor; promote progress– TM: Protect consumers
Quality assurance in an urban (anonymous) exchange environment
Consumer Protection Rationale
• Fraud cause of action on the part of consumers concentrated and located in the hands of a seller – the trademark “owner”
• This indirectly encourages expenditures to increase the quality of the TM owner’s goods
EARLY HISTORY
ancient times
first use of trademarks
early 19th
century
common law palming off
//
medieval
guild system
1870
18791881
1st Federal Act based on IP
Clause
Trade-mark Cases: striking down Act
Foreign commerce-based Act
MODERN HISTORY
1905 1947 1988 1996
Trademark Act - interstate commerce
Lanham Act Trade Dress § 43(a)
Revisions intent to use
Federal Anti-Dilution Act
EXPANDING PROTECTION
Scope: Marks
Threshold: Actual Use
Trade Dress
Intent to Use
EXPANDING RATIONALE FOR TM
Avoiding Consumer Confusion and Reducing Consumers’ Search Costs
Property Interests in Image: Image as a Marketable Commodity
Encouraging Investment in Advertising and Good Will
TORT
PROPERTY
GUIDING PRINCIPLE
CUSTOMER PERCEPTION
• VALIDITY
• INFRINGEMENT
as a test of:
Sources of Trademark Protection
FEDERAL LAW
STATE LAW
• Federal Registration
• Statutory Protection• Common Law
• False Designations of Origin and False Descriptions §43(a)
Subject Matter
• Trademark:
“word, name, symbol,or device, or any combination thereof”
• Trade Name
• Service Mark• Certification Mark• Collective Mark
SoundFragrance
• Trade Dress and Product Configuration
Hyatt - hotel servicesGood Housekeeping
• Slogan“Greatest Show on Earth”
- state (not fedl) protection
SFA (Snack Food Assoc)
Qualitex v. Jacobson
• Facts
• Holding
Four objections to TMs for color
• Breyer’s response:
“Big Blue”
Dry Cleaning Press
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 …, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
Hierarchy of distinctiveness
• Arbitrary: Exxon; Google
• Fanciful: Apple Computer
• Suggestive: “Coppertone” suntan lotion
• Descriptive: Quick-Dri Hairdryers; Speedo bathing suits
Generic Marks
• Words that have ceased to serve as trademarks
• Identified with category or type of product, rather than one company or source: Aspirin; Jello; Kleenex/Xerox?
Qualitex
• Functionality doctrine
– Shredded Wheat case
– Product feature vs. “source indicator”
– What role does the product attribute play?
Color and Functionality
• Red emergency signs?
Zatarain’s v. Oak Grove Smokehouse
Formerly “Chick-Fri”