Intellectual Property - Summer 2001

Trademark Study Guide I - 557 - 680

5 Trademarks and Trade Dress-557

The purpose of this review sheet is to help you focus your reading and identify the key issues in trademark law.  Due to the length of the material and the abbreviated summer term, we will not cover trademark and trade dress in the same level of detail as we covered the earlier sections of the course.  I am using the TOC as the basic organization of these notes to make it easier to track the material.  I have tried to identify the key issues in section. There are relatively few problems in this section and they should be reviewed carefully.

A. Introduction-557

What is really being protected?

What is the overlap with trade secret, patent, and copyright law?

Think about originality, independent creation, and utility.

1. Background-557

2. A Brief Overview of Trademark Theory-559

3. The Basic Economics of Trademarks and Advertising-561

What is the relationship between advertising and the value of trademarks?

What is the consumer protection theory of trademark?

How has this changed with the advent of trademarks as products, i.e., things like Chief's caps and jackets there the trademark tells you nothing about the underlying product?

B. What Can Be Protected as a Trademark?-565

1. Trademarks, Trade names, and Service Marks-566

15 U.S.C. §1127. Service Mark-566

What is the difference between a trademark and a service mark?

2. Color, Fragrance, and Sounds-568

Qualitex Co. v. Jacobson Products Co., Inc.-568

What is the product?

What is distinctive about it that the manufacturer wants to use trademark to prevent the competitor from copying?

What is "secondary meaning" and why is it critical to cases of this type?

How does the Pink Panther fit into this example?

What is the color depletion argument and how does the court meet it?

What are functional uses of color and how do these defeat trademark protection?

More generally, how does functionality relate to trademark versus patent?

3. Certification and Collective Marks-575

What are certification and collective marks and what are the conditions attached to registering one?

4. Trade Dress and Product Configurations-577

What is trade dress and how does it differ from product configuration?

[Lanham Act §43].  False Designations of Origin and False Descriptions Forbidden-577

C. Establishment and Extension of Trademark Rights-578

1. Distinctiveness-578

What are the classes of marks and which need secondary meaning?

a. Classification of Marks and Requirements for Protection-578

Zatarains, Inc. v. Oak Grove Smokehouse, Inc.-579

What are the plaintiff's two products at issue and what are they used for?

How does defendant label its products and why does plaintiff claim this is a problem?

What did the district court rule about the two products?

What does it mean for a mark to become generic and what are examples?

Can secondary meaning allow a generic term to be trademarked?

What kind of mark is Coppertone and does it require secondary meaning?

Which party has the burden of proof to establish secondary meaning?

What is a possible remedy if a trademark is found to be generic or to be descriptive with no secondary meaning?

Does funny spelling matter?

What is the imagination test for determining whether a term is descriptive?

What if competitors need the term to describe their products?

What if there are other terms that could be used?

What if others have already used the term?

How could you measure secondary meaning and put on proof of it at trial?

What is the fair use defense to a descriptive mark?

What evidence did defendant put on to show its good faith?

How did the court rule?

C&Q - 589

How widespread must secondary meaning be for a federal registration?

What is the rule for foreign words?

When does using an acronym or misspelling work?

b. Distinctiveness of Trade Dress and Product Configuration-592

Two Pesos, Inc. v. Taco cabana, Inc.-592

What is the issue?

What does inherently distinctive mean?

What if it is also functional?

What is the best way to establish secondary meaning?

What problem does a secondary meaning requirement create for small or new business?

How did the court rule?

Knitwaves, Inc. v. Lollytogs, Ltd.-599

What is the product?

What was the copyright issue and how was it decided?

What is the trade dress issue and what definition does the court use for trade dress?

What must trade dress allow consumers to do to be protected?

How does that purpose fail in this case?

C & Q - 602

Wal-mart was overruled:

In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., ---U.S.--- (March 22, 2000) (No. 99-150), the Court unanimously held that in an action for trade dress infringement, a product's design is distinctive only upon a showing of secondary meaning. The ruling reversed a Second Circuit affirmation of a district court ruling that the trade dress at issue, Samara's line of children's clothing featuring styled appliques, was inherently distinctive and infringed.

Trade Dress and Product Design 604

What is the difference in what you have to show for a design patent versus trade dress protection?

No secondary meaning for design patents

Why are design patents less commonly used?

Note on Product Configurations and Overlapping Intellectual Property Rights-606

When might an artist's work be trademarkable?

What is the advantage of a trademark?

C & Q - 607

What is the principle of election and is it still good law?

Problem-607

2. Priority-608

Does the US use a first to register or first to use standard?

What is required to show use of a trademark?

Zazu Designs v. L'Oreal S.A.-608

What is the product?

What is the infringement problem?

How did defendant show good faith?

What was plaintiff's use in commerce before defendant?

Did plaintiff register the mark for products?

How would that have helped both legally and practically?

What is the policy behind the use requirement?

What was the court's ruling?

Dissent - can a service mark be infringed by a trademark?

Why isn't that the problem in this case?

C & Q - 615

Note that the law has been amended to allow registration of marks that are intended to be used, but these lapse if they are not put to use within 1-3 years, depending on excuses.

7. What does Blue Bell tell us about the role of bad faith?

Brookfield Communications v. West Coast Entertainment Corp.-619

What is the customer confusion issue in this case and why is it critical to establishing an infringement?

Why didn't the court find registration of a domain name a use in commerce?

How did plaintiff argue that it had priority in the "Movie Buff" mark?

Why did the court reject this?

C & Q - 627

What is a cybersquatter?

When is cybersquatting OK?

Note on Geographic Limitations on trademark Use-628

How are the geographic limits on common law (unregistered) trademarks different from those on registered trademarks?

What happens when someone registers the same mark with the feds?

C & Q - 630

What is the procedural device that is often used to resolve priority disputes?

Where can these be appealed?

Note on Priority and Trademark Theory 631

What is the image/identify industry?

C & Q - 635

Does it matter whether the manufacturer creates the trademark? (Bug case)

What theory of trademark function does this support?

Note on Secondary Meaning in the Making-636

What is secondary meaning in the making?

Why do the court's reject it?

C & Q - 638

How do you resolve a priority dispute in a secondary meaning in the making case?

Problems-640

3. Trademark Office Procedures-640

a. Principal vs. Supplemental Register-640

What are the three advantages of registration over common law and state protections?

What is the Supplemental Register?

b. Grounds for Refusing Registration-641

What are the grounds for refusing registration?

i. Immoral or Scandalous Marks-642

Harjo v. Pro-Football, Inc.-642

What is the scandalous mark?

What did the Appeals Board decide?

This case is on appeal to the federal courts.  What issues would you raise in attacking this ruling?

Would the court rule differently on Old Glory now and why?

ii. Geographic Marks-642

What is the traditional rule that prevents the use of geographic marks?

In re Nantucket, Inc.-649

What is the product?

Where do they come from?

Why did the court allow the trademark?

What about Hawaiian ice?

C & Q - 653

What is "appellations of origin"?

Do these need secondary meaning for registration?

Lanham Act §2(a) [15 U.S.C. §2(a)]

What are the restrictions?

iii. Marks Which Are "Primarily Merely a Surname"-654

What are the restrictions on using names for trademarks?

Is there a right to your own name as a trademark?

Problem-657

c. Opposition-657

Why is opposition not very useful for most businesses?

What do you need to show for standing for an opposition?

d. Cancellation-658

How is cancellation more useful than opposition?

Does cancellation erase the trademark holder's rights?

e. Concurrent Registration-659

When can there be concurrent registration?

Can you think of an example involving a legal database and a lawyer's car?

Are there circumstances where there can be concurrent registration for competing products?

4. Incontestability-660

How does a mark become incontestable?

Park 'N Fly, Inc. v. Dollar Park and Fly, Inc.-660

What is the mark?

What is the infringer's defense?

Why does the court reject this?

What are the grounds for contesting an incontestable mark?

C & Q 668

What ground for contesting an incontestable mark was added in 1998?

5. Extension Overseas: International Trademark Practice-669

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Note on the "Gray Market"=673

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6. Extension by Contract: Licensing and Franchising problem-675

How have the nature of trademarks changed?

How are trademarks and service marks at the core of franchising?