Chapter 1: A. Sources and Nature of Trademark Rights

Question 1

The Trade-Mark Cases

Answer 1

1. The trademark laws enacted by Congress in 1870 and 1876 are unconstitutional and therefore invalid
2. The copyright clause of the Constitution does NOT give Congress the power to protect or regulate trademarks
3. The enforcement of common-law trademark rights is generally a matter of state law
4. Congress’s power over trademarks must derive from the Consitution, which is does not because trademarks are different than patents and copyright

Question 2

Hanover Star Milling Co. v. Metcalf

Answer 2

1. A subsequent user is permitted to use a mark in a specific geographic area, even if that mark had been previously used by another party in a different region.
2. None of the parties registered the mark, there for their rights depend on common-law trademark principles.
3. Limited by purpose: enable purchasers to identify product’s origin and ensure producer benefits from goodwill associated with mark.
4. Demonstrates that the first user of a trademark doesn’t gain nationwide protection, just protection in the market where he uses the trademark.
5. Right grows out of use, not mere adoption; treated as protection for the goodwill

Question 3

Mishawaka Rubber & Woolen MFG

Answer 3

1. The protection of trademarks is the law’s recognition of the psychological function of symbols.
2. A trademark is a merchandising short-cut which induces a purchaser to select what he wants, or what he had been led to believe he wants.
3. Aim: to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears.

Question 4

Yale Electric Corp. v. Robertson

Answer 4

1. A merchant may not misrepresent another merchant’s identifying mark as his own.
2. Unless the borrower’s use is so foreign to the owner’s as to insure against any identification of the two, it is unlawful.

Question 5

Prestonettes, Inc. v. Coty

Answer 5

1. A trademark does not confer a right to prohibit the use of the word(s); it is not copyright.
2. A trademark only gives the right to prohibit the use of it so far as to protect the owner’s good will against the sale of another’s product as his.
3. When the mark is used in a way that does not deceive the public, we see no such sanctity in the word as to prevent its being used to tell the truth.