Trademarks Flashcards
Definition
Word, name, symbol, or device that is used in conjunction with the sale of goods and that serves as a source indicator.
Devices associated with specific source through advertising.
Can be lost if associated with source dissipates (elevator).
- Or if use discontinued after 3 years.
Goal: protect consumers rom quality confusion
Protected under state and federal law, like trade secrets.
- Registration not required for state protection.
- Registration required for federal protectoin
- Like patent application system, not copyright regist.
Can be renewed every 10 years.
Well known trademarks are most valuable asset - positive brand image, drive purchasing.
Requirements
- Any word, name, symbol, or device
- Used in conjunction with related goods or services in commerce
- That serves to identify the goods as coming from a particular source, and distinguish them from others
- And is not immoral or scandalous
History
- Potters in Greece, signed work.
- Not mentioned in constitution
- Congressional act in 1946 used interstate commerce to make it constitutional
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Types of marks
Trade Name: name of business (Apple)
Trademark: name associated with goods (iPad)
Service mark: name associatred with providing a service, not goods (Google)
Certification mark: name of an independent association that provides quality indicia on a set of related goods…like Good Housekeeping Seal of Approval
Word, name, symbol or device
- Coca Cola’s red packaging and appearance - trade dress
- MGM’s trademark lion roar as part of emblem
- McDonalds franchise appearance - trade dress
- Fabrage and its fragrances - had to describe / show
- Tarzan’s yell - also had to describe
Used in commerce in conjunction with goods
placed on goods when:
- it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
- the goods are sold or transported in commerce
on services when:
- used or displayed in the sale or advertising of services and the services are rendered in commerce
So….simply doing advertising on the Internet does not qualify if the mark is for goods. Same for use on invoices, or use on a box that did not contain the goods in question.
- Tags on jeans and shiopping to distirbutor is enough to show bona fide use
Can register before use in commerce, with intent to use within 6 months.
Serves the function of source identification
serve a source ID function if they are:
- arbitrary - no obvious connection (Apple)
- fanciful - made up (Google)
Can’t be one if it’s generic. Can’t include geography.
Descriptive: conveys an immediate idea of the ingredients, quality or characteristics (Holiday Inn)
- Can be registered if can prove the consumer associates your mark with product over years of service.
Suggestive: requires imagination to reach a conclusion (Coppertone)
- Don’t need to prove association.
- Harder to obtain, less work in creating brand identity.*
Generic
Decriptive
Suggestive
Arbitrary
Fanciful
Easier to obtain, more work to build the brand
Immoral or scandalous
- Public interest in preventing use outweighs provate benefits of registration to the holder.
- Marks that are false or misleading.
- Lovee Lamb carseat covers
- Marks that are disparaging, offensive, scandalous.
- Cocaine soda.
- NFL redskins.
- Doesn’t need to be offensive to majority, just substantial subset in contemporary context.
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Maintaining
- Cannot use if you abandon - commerce aspect not fulfilled
- returns to public marketplace
- Occurs after 3 years of inactivity
- Cannot use if it becomes generic
- Thermos and vacuum-sealed flask
- Escalator
- Trampoline
- Xerox saved themselves
- Use trademark guidelines to prevent this
- Improper licensing can invalidate a trademark
- Needs to be able to identify goods to particular provider
- Renewal application every 10 years
Trademark Infringement
“likelihood of confusion”
- particularly, confusion caused by advertisers (not Google search)
- usually same class of goods but can be expanded if famous (McDental)
Trademark holder must show:
- There was a valid trademark to infringe
- Defendant used mark in commerce in conenction with sale / advertising of goods and services
- Done without consent or authorization, and
- likey to cause consumer confusion
- similarilty of marks (Knockoffs, slight changes)
- strength of trademark (McDonalds)
- similarity in markets and products offered (Apple Computer and Apple Records are fine)
- proof of confusion (survey)
Trademark Dilution
Federal: applies when marks are famous:
- the degree of inherent or acquired distinctiveness;
- the duration and extent of use;
- the amount of advertising and publicity;
- the geographic extent of the market;
- the channels of trade;
- the degree of recognition in trading areas;
- any use of similar marks by third parties;
- whether the mark is registered.
State: mark doesn’t need to be famous
- mark has selling power or is distinctive
- two marks are very similar
Don’t need to show likelihood of confusion.
Action against blurring or tarnishment
- Blurring: associated with dissimilar goods
- Tarnishment: inferior product association (ToysRUs and AdultsRUs)
Fair use defense
Fair use
- Mark used with goods or commentary about goods - not as a trademark
- That the use of the name, or device charged to be an infringement is a use, otherwise than as a mark…of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.”
Otherwise than a mark
- Prominence – type style, size, logo
- Intent
- Attempt to create exclusive association
Descriptive
- Must have descriptive properties that would make sense
Good faith
- Packaging and labeling should be dissimilar
- Use of own house mark
- Use limited to text
- Use with other terms
Ex: Fish fry and Fish Fri
Parody defense
Permissible if not too directly tied to commercial use.
- Valuable critical function entitled to 1st amendment protection
- The less commercial the better for this defense
- “Spa’am” and “Spam” good
- “Gucchie Goo” not
Remedies
Before lititgation, often send “cease and desist”
Injunctoins against further infringement or dilution
Infringement:
- Monetary relief - profits, damages, costs
- Damages 3x higher if bad faith
Dilution
- Damages if willfully traded on holder’s goodwill
- Otherwise, injunction
