Establishing Protection

Intro to IP – Prof. Merges

3.10.09

Zatarain’s v. Oak Grove Smokehouse

Formerly “Chick-Fri”

Agenda

• Zatarain’s recap and review

• Intro to trade dress

Zatarain’s

• Generic marks: defense

• Statute: section 14, 15 USC 1064(c)

Hierarchy of distinctiveness

• Arbitrary: Exxon; Google

• Fanciful: Apple Computer

• Suggestive: “Coppertone” suntan lotion

• Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

Descrip-tive Mark

GenericMark

Fanciful Mark

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?

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)

Genericide

• The mark is originally distinctive, and protectable; but becomes over time generic

• A trademark that is “too successful” -- ?

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 . . . .

“Judicial cancellation”

• Court-agency interaction

• Judicial review of the trademark register

Hierarchy of distinctiveness

• Arbitrary: Exxon; Google

• Fanciful: Apple Computer

• Suggestive: “Coppertone” suntan lotion

• Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

Hierarchy of distinctiveness• Arbitrary: Exxon; Google

• Fanciful: Apple Computer

• Suggestive: “Coppertone” suntan lotion

• Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

• Generic

• A & F

• Sugg.

• Des.

• Generic

Inherently Distinctive

Requires proof of “secondary meaning”

No trademark protection

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• Descriptive• Descriptive• Arbitrary• Suggestive• Suggestive• Suggestive• Descriptive

Categories of Marks

Less Protection More Protection

GenericDenotes generalclass of products

Unprotectible

Shredded Wheat,Aspirin, Thermos,Cellophane, Car,Computer

ArbitraryBears no relationto product

AutomaticallyProtectible

DescriptiveDescribes somecharacteristic/quality

Protectible ifsecondary meaning

SuggestiveSuggests somecharacteristic

AutomaticallyProtectible

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 . . . .

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)

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

Trade Dress & Product Design

Trade Dress Product Design

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 … .

Two Pesos v. Taco Cabana505 U.S. 763 (1992)

Taco Cabana Trade Dress

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

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 . . . .

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

No reason to differentiate …

• P 665 “There is no persuasive reason . . .”

Inherently Distinctive?

Inherently Distinctive?

Jeans Pocket design – no secondary meaning proven