Intellectual Property

Boston College Law School

March 31, 2008

Trademark - Distinctiveness

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)

Categories of MarksLess Protection More Protection

GenericDenotes generalclass of products

Unprotectible

Shredded Wheat,Aspirin, Thermos,Cellophane, Car,

Computer

ArbitraryBears no relation

to product

AutomaticallyProtectible

DescriptiveDescribes some

characteristic/quality

Protectible ifsecondary meaning

SuggestiveSuggests somecharacteristic

AutomaticallyProtectible

Policy Considerations

Distinctiveness

Generic Descriptive Suggestive Arbitrary

Low

HighTrademarkSignificance

Costs fromProtection

UnprotectibleSecondaryMeaning Protectible

Zatarains v. Oak Grove

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

CategorizationsTrademark

• 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

Secondary Meaning

• Marks Requiring Secondary Meaning– Descriptive Marks– Surnames– Geographical Marks (some)– Trade Dress and Product Design?

Trade Dress & Product DesignTrade Dress Product Design

Two Pesos v. Taco Cabana

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

• 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

Inherently Distinctive?

Inherently Distinctive?

Policy Considerations

Distinctiveness

Generic Descriptive Inherently Distinctive

Low

HighPotential forConfusion

Harm toCompetition

Trade Dress,Trademarks

ProductDesign

Example - Review

Administrative Details

• Next Assignment– Read through VI.C.2 – Priority