Trademark Law: Flashcards
What is the definition of a “trademark”?
A trademark is a word, phrase, symbol, or design (or a combination of these elements) that is used to identify and distinguish the goods or services of one person or company from those of another.
A trademark can be a word or combination of words, such as a brand name or slogan, a logo, a design element, or even a sound or smell. In order to be eligible for trademark protection, the mark must be distinctive and not too similar to other marks that are already in use.
In addition to protecting the rights of trademark owners, trademark law also helps to prevent consumer confusion and fraud by ensuring that products and services are accurately identified and marketed.
While US trademark law historically prohibited the registering of trademarks that
would be considered “disparaging” or “immoral” what the US Supreme Court say
about the constitutionality of those prohibitions in recent cases?
In recent cases, the US Supreme Court has ruled that federal laws barring registration of “immoral” and “scandalous” trademarks are unconstitutional violations of the free speech clause of the First Amendment1.
This follows its 2017 decision in Matal v. Tam, where it struck down a companion provision prohibiting registration of marks that “may disparage”1.
What are the four categories of words that can be trademarked? Words in which of those categories get the most immediate protection under trademark law? Why?
Arbitrary or fanciful marks: These are words or phrases that have no inherent connection to the products or services they represent, but have acquired meaning and distinctiveness over time through use and marketing. Examples include “Apple” for computers and “Kodak” for cameras.
Suggestive marks: These are words or phrases that suggest something about the products or services they represent, but do not describe them directly. Examples include “Netflix” for streaming services and “Coppertone” for sunscreens.
Descriptive marks: These are words or phrases that describe the products or services they represent, but may not be distinctive or unique enough to qualify for trademark protection on their own. Examples include “All-Bran” for cereal and “Vision Center” for optometry services.
Generic terms: These are common words or phrases that are used to describe an entire category of products or services, and cannot be trademarked. Examples include “coffee” for coffee products and “shoes” for footwear.
Why can’t “generic” words be trademarked?
Generic” words cannot be trademarked because they are the common, everyday terms used to describe a particular product or service. A generic term is simply the name for the thing itself, without any connotations or associations that would distinguish it from other similar things.
Trademark law is designed to protect brand names, logos, and other identifiers that are used to distinguish one product or service from another. When a word or phrase becomes generic, it loses its ability to function as a brand identifier, and allowing someone to trademark it would prevent others from using the word to describe the same product or service, which would be unfair and anticompetitive.
What are examples of words that once were trademarked (since they described a particular company’s product) but are
now no longer trademarked because they are considered to be “generic”?
Aspirin
Escalator
Zipper
Thermos
Escalator
In addition to words and tag lines, there are several other things that can receive trademark protection, including:
Logos and designs: Graphic designs, symbols, and logos can all be trademarked to identify the source of goods or services.
Colors: Certain colors can be trademarked when they are used to identify a particular brand or product, such as the distinctive blue color used by Tiffany & Co.
Sounds: Unique sounds, such as the NBC chimes or the MGM lion’s roar, can be trademarked to identify a particular brand or product.
Shapes: In some cases, unique shapes or configurations of products can be trademarked, such as the distinctive shape of the Coca-Cola bottle.
Scents: In rare cases, certain scents have been trademarked when they are used to identify a particular brand or product, such as the scent of plumeria flowers used by the perfume company Leilani Bishop.
Packaging: Unique packaging designs or configurations can be trademarked when they are used to identify a particular brand or product, such as the iconic shape of the Coca-Cola can.
Do you have to make a filing with the government to obtain trademark protection?
In addition to words and taglines, other things that could receive trademark protection include logos, designs, colors, sounds, shapes, scents, and packaging.
The women’s shoe maker Louboutin established a trademark on the red sole of its high-heeled shoes.
Do you have to make a filing with the government to obtain trademark protection?
Yes, to obtain trademark protection, you have to make a filing with the government. In the United States, you can file a trademark application with the United States Patent and Trademark Office (USPTO) to register your trademark. The application will ask for information about the mark, the goods or services it is associated with, and the owner of the mark. Once the USPTO approves the application, the trademark will be registered and the owner will have exclusive rights to use the mark in connection with the goods or services listed in the registration. It is important to note that you can still claim common law trademark rights without registering your trademark with the government, but registration provides additional legal benefits and protections.
There are several benefits of federal trademark registration, including
Nationwide protection: Once a trademark is registered with the United States Patent and Trademark Office (USPTO), the owner has exclusive rights to use the mark nationwide in connection with the goods or services listed in the registration.
Public notice: The trademark registration is published in the USPTO’s Official Gazette, providing public notice of the owner’s claim to the mark.
Presumption of ownership: A federal trademark registration creates a legal presumption of the owner’s ownership of the mark and the exclusive right to use the mark nationwide.
Use of the ® symbol: Once a trademark is registered, the owner can use the ® symbol to put the public on notice of the registration and the owner’s exclusive rights to the mark.
Ability to sue in federal court: A federal trademark registration provides the owner with the ability to bring a lawsuit for trademark infringement in federal court, which can provide greater damages and other legal remedies.
Border protection: A federal trademark registration can be used to prevent the importation of infringing goods into the United States.
Simplifies domain name disputes: A federal trademark registration can be used to resolve disputes over domain names through the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
In order to prove trademark infringement, what would the holder of the trademark
need to demonstrate about the same or similar mark being used by someone else? Why can’t Delta Airlines use its trademark on “Delta” to stop Delta Faucet Company from using “Delta” for its faucets?
They have a valid trademark that is registered or otherwise protected by law.
The other party is using a similar mark in a way that is likely to cause confusion among consumers.
The use of the similar mark is in the same or similar goods or services that the trademark owner is providing.
The other party’s use of the similar mark is unauthorized, meaning they do not have the trademark owner’s permission to use it.
The trademark owner has suffered actual harm or is likely to suffer harm as a result of the unauthorized use of the similar mark.
Why can’t Delta Airlines use its trademark on “Delta” to stop Delta Faucet Company from using “Delta” for its faucets?
Trademark law generally only provides protection for specific goods or services, rather than for a particular word or phrase in general. This means that the trademark rights of Delta Airlines only extend to the goods and services that it provides, such as airline transportation, and not to unrelated goods and services, such as faucets.
In order for Delta Airlines to successfully prevent Delta Faucet Company from using the term “Delta” for its faucets, it would need to demonstrate that the use of the term by Delta Faucet Company creates a likelihood of confusion among consumers regarding the source of the goods or services, or that the use of the term dilutes or tarnishes the distinctiveness of Delta Airlines’ trademark.
However, since the goods and services of the two companies are very different and are not likely to be confused with each other, Delta Airlines may not be able to successfully claim trademark infringement against Delta Faucet Company.
Famous trademarks get special protection – they get protection against others using the same or similar mark if it would cause “dilution” of their famous trademark. How is that different from the basic trademark infringement protection mentioned in the previous bullet point?
Trademark dilution occurs when someone uses a similar or identical trademark in a way that impairs the distinctiveness or tarnishes the reputation of a famous trademark. This type of infringement can occur even if there is no likelihood of confusion between the two marks, and it can occur across different categories of goods and services.
The owner of a famous trademark has the right to prevent others from using a similar or identical mark in a way that dilutes the famous trademark’s distinctiveness or harms its reputation, even if the use of the similar mark is in connection with completely unrelated goods or services.
In contrast, basic trademark infringement protection applies to any trademark owner, whether or not their mark is famous. It requires a showing of likelihood of confusion between the two marks, which means that consumers are likely to be confused as to the source or origin of the goods or services.
Therefore, while both types of protection aim to prevent unauthorized use of a trademark, trademark dilution protection is broader in scope and applies only to famous trademarks, while basic trademark infringement protection is more focused on preventing consumer confusion and can apply to any trademark.
How does the case brought by Jack Daniels against VIP Pet Products illustrate the concept of trademark dilution? (At least from Jack Daniels’ point of view.)
The case brought by Jack Daniels against VIP Pet Products illustrates the concept of trademark dilution from Jack Daniels’ point of view because it involves the use of a similar mark by a third-party in a way that is likely to dilute the distinctiveness and reputation of Jack Daniels’ famous trademark.
VIP Pet Products had created a line of dog chew toys that resembled the iconic Jack Daniels whiskey bottle. The toy included the same rectangular shape, black label with white lettering, and the arched lettering of “Old No. 7” that is used on Jack Daniels’ whiskey bottles.
Jack Daniels argued that the use of the similar mark by VIP Pet Products was likely to cause dilution of its famous trademark by weakening its ability to uniquely identify and distinguish its products in the marketplace.
Jack Daniels further argued that the dog toys were likely to tarnish its reputation by associating its brand with pet products and potentially even alcohol consumption by pets.
The court agreed with Jack Daniels and found that VIP Pet Products’ use of the similar mark was likely to cause dilution of the distinctiveness of Jack Daniels’ famous trademark. The court issued an injunction preventing VIP Pet Products from further use of the similar mark in its dog toys.
For how many years can you potentially maintain protection of your mark under trademark law?
Under trademark law in the United States, you can potentially maintain protection of your mark for as long as you continue to use it in commerce and fulfill certain renewal requirements. Specifically, trademarks can be registered for an initial period of 10 years, and can be renewed for successive 10-year periods as long as the trademark is still in use in commerce and the necessary renewal fees are paid. As long as you continue to use and renew your trademark, you can potentially maintain protection of it indefinitely. However, it is important to note that trademarks can be cancelled or invalidated if they are no longer in use or if they are found to be invalid for some other reason.
What are “geographical indicators”? What legal protection do they get?
Geographical indicators (GIs) are signs used on products that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that origin. Examples of GIs include Champagne, Parmigiano-Reggiano, and Darjeeling tea.
Legal protection for GIs varies by country, but they generally receive some form of protection under intellectual property laws. In many countries, including the United States, GIs can be registered as certification marks or collective marks, which can be used by authorized producers to indicate the origin and quality of their products.
Under international law, GIs are protected by the World Intellectual Property Organization (WIPO) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which require member countries to provide legal protection for GIs. TRIPS requires member countries to provide legal means for interested parties to prevent the use of GIs that mislead consumers as to the true origin of the goods, or that otherwise constitute unfair competition.
