2.01 BACKGROUND PRINCIPLES Flashcards
TRADE MARK AND UNFAIR COMPETITION
Antitrust = Focused on Protecting Benefits of Competition for Consumers
Patent & Copyright = Granting Exclusive Rights for Limited Times to Promote Pubic Dissemination ( Progress Clause )
Trademark = Basic Rules of Fair Play to Protect (1) Competitors and (2) Consumers in Market ( Commerce Clause )
Trade Secrets …
RIGHT TO ENTER MARKET
Tuttle v. Buck (Minn. 1907)
FACTS = Local Banker Financing a New Barber Shop to Drive Barber Out of Business, New Barber Shop is a Bona Fide Biz.
HELD = A Cause of Action Does Exist for Claiming a Business Enterprise is Motivated Solely by Intent to Harm Someone
RULE = Restatement Third of Unfair Competition = Competitive Method MATTERS MORE THAN Competitive Motive
NOTE: Courts are Quick to Find a Bona Fide Business Interest Precluding Liability for Ill Will
RIGHT TO MAKE COMPETING OFFERS
Doliner v. Brown (Ct. App. Mass. 1986)
FACTS = Developer Fails to Get Confidentiality Agreement w/Financier Who Works with Another Developer to Get Project
HELD = So Long as the Methods are Fair Competitors are Free to Make Own Offers
RULE: W/O Legal Restraint, e.g., Confidentiality Agreement, Fiduciary Duty, Actual Contract (Write or Oral) = Compete
MISAPPROPRIATION / THEFT
International News Service v. Associated Press (1918)
FACTS = Plagiarism by News Service Copying Bulletins on East Coast and Transmitting Them to Competitors Cross Country
RULE = “… when the rights or privileges of the one are liable to conflict with those of the other, each party is under a duty so to conduct its own business as not unnecessarily or unfairly injure that of the other.” at 790 (Pittney, Competitor POV)
PRINCIPLE = “… he who has fairly paid the price should have the beneficial use of the property.”
SUBSEQUENTLY = Misappropriation Issues NOW Mostly Covered by Separate Federal Statutes (e.g., Copyright)
TRADEMARK COVERS ONE-TWO-PART Q OF UNFAIR COMPETITION
INS v. AP (1918) (Consumer Perspective)
(1) Passing Off Your Goods as Someone Else’s … Misappropriating X
- - TM = “The ordinary case … is palming off the defendant’s product as the plaintiff’s …” at 793 (Holmes, dissent)
- - TM = “In the ‘passing off’ cases (the typical and most common case of unfair competition), the wrong consists in fraudulently representing by word or act that the defendant’s goods are that of the plaintiff.” at 796 (Brandeis, dissent)
(2) Passing Off Someone Else’s Goods as Your Own … Misappropriating X
- - TM = “… but the same evil may follow from the opposite falsehood – from saying, whether in other words or by implication, that the plaintiff’s product is the defendants …” at 793 (Holmes, dissent)
COMPETITION BETWEEN “BRANDS”
BRAND = What is the product being protected? = BRAND = How much more consumers pay for X NOT Market Cap, Sales, etc.
BRAND IS
- Product Identification
- Quality … For Some Products Obvious BUT For Other Products Trust Develops w/Time
- Consistency
- Accountability (More Important w/Big-Ticket)
- Awareness (Holy Grail of Branding)
- Identity to Others
- Identify to Self (Stronger w/Length of Use)
TRADEMARK : BRAND
Restatement § 9 “Trademark is a word, name, symbol, device, or other designations, that is distinctive of a person’s goods or services and that …” = VERY BROAD …
Lanham Act § 45 “Trademark is any … (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principle register established by this chapter, 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.”
TRADEMARKS
Qualifies for a Mark, Sec. 45 +
- Words and Names (first used, registered)
- Names
- Graphic Symbols and Logos
- Colors
- Sounds
- Smells
- Shape and Trade Dress
Types of Marks Sec. 45
- Service Mark
- Certification Mark
- Collective Mark
- x
- x
SOURCE OF TRADEMARK LAW
DUAL SYSTEM ( Trademark Completely Different from Copyright and Patent )
A. COMMERCE CLAUSE … Federal Lanham Act
NOT Progress Clause = Trademark is NOT an Exclusively Federal Jurisdiction
B. STATE COMMON LAW
JURISDICTION FOR TRADEMARK CASES
FEDERAL = Federal Question ( Lanham Act ), Diversity, and Supplemental Jurisdiction
STATE = Trademark Cases Can Always be Brought in State Court
FEDERAL TRADEMARK RIGHTS UNDER THE LANHAM ACT
Registration of a Qualified Mark Under Sec. X = [ Advantages and Policy ]
Rights for Unregistered Marks Qualifying for Trademark Protection Under Sec. X
MEANING = Do NOT Have to Register to Get Federal Trademark Protections
NOTE: Lanham Act is Built on Common Law Rights
TRADEMARK CONCEPTS
- USE
- DISTINCTIVENESS
- LIKELIHOOD OF CONFUSION
USPTO APPLICATIONS REQUIREMENTS
Display the Mark | Specification of Goods and Services on which Mark is Displayed | Sample (“Specimen”) of Use of Mark
Declaration of When Mark is Used and “Use in Commerce” for First Time
Pay Fee …
USPTO EXAMINATION
EXAMINER DETERMINES TM
Sec. 2 Lists Reasons for Examiner to Deny Mark
ABSOLUTE = Not Distinctive Enough as to Trademark Law
RELATIVE = To Close as To This Other Person’s Mark
OPPOSITION, Sec. 13
Any Person Who Believes He Would Be Damaged (Need Reason)
Sec. 13 … 30 Day Window to File After Publication
