Intellectual Property

Boston College Law School

March 26, 2007

Trademark - Intro, Subject Matter

Trademark - Introduction

Trademark Act - History

• Pre-1870: state common law protection• 1870: first federal trademark act;

– Based on Copyright and Patent clause– Struck down as unconstitutional

• 1881: new federal trademark statute– Based on Commerce Clause– Upheld as valid exercise of commerce power

• 1946: Lanham Act• 1996: Anti-Dilution Act

Why Protect Trademarks?

1. Protect consumers from confusion

2. Provide incentives for investing in quality

3. Prevent other companies from free-riding

4. Reward companies for their labor

5. Protect value of trademark (and associated goodwill) as a good in itself

Costs of Trademark Protection

1. May raise costs of competition

2. May hurt consumers

3. May harm free speech interests

Overview

• Requirements– (1) Distinctiveness– (2) Use in commerce– Registration not required (although benefits)

• Duration– As long as used and distinctive

• Rights– Protect against consumer confusion– Protect against dilution (for famous marks)

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 ….

Qualitex v. Jacobson

Web Site

Hypothetical

Hypothetical

Hypothetical

Color and Sounds

Other Types of Marks

• Trade Dress and Product Design

• Service Marks

• Collective Marks

• Certification Marks

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.

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 ….

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

Administrative Details

• Next Assignment– Read through VI.C.1 – Distinctiveness

• No Class Friday