Intellectual Property

Trademark


For more information on trademarks, see that section from my Trademark class outline.


Trademarks are source indicators.

Mark

Marks can comprise:

  1. Words
  2. Logos/Design
  3. Slogan
  4. Color
  5. Sound
Trade Dress

Trade dress refers to the visual appearance of a product or its packaging. Usually it is colors and shapes.

Trade dress is protectable like trademarks.

Trade dress must still be a source indicator. Functional elements cannot be protected as trade dress. This includes visual functionality, where a design is used because it is visually appealing.

A trademarks must be:

  1. A mark used as a source indicator in connection with a good or service
  2. Used in commerce
  3. Distinctive
  4. Having priority

Trademarks are afforded some common law protection. However, registration is prima facia evidence of a valid trademark and provides notice to others.

There are five classes of terms in regards to trademark protection. In order of ascending protection, they are:

  1. Generic
    • This means that it is the "common descriptive name" of the product type, like "computer" or "book".
    • Generic marks cannot be trademarked. Trademarks that become generic cannot be enforced, like Kleenex, Thermos, or Band-Aid.
  2. Descriptive
  3. Suggestive
    • This means that it "requires imagination, thought, and perception to reach a conclusion as to the nature of goods" and is entitled to registration without proof of secondary meaning.
    • Examples include Coca-Cola, Logitech, and Dupli-Color.
  4. Arbitrary
    • This means that it is a known word but with no association to the product, like Apple or Amazon.
  5. Fanciful
    • This means that it is a made-up word, like Kodak or Clorox.

Fanciful, arbitrary, and suggestive are inherently distinctive.

Marks can shift between classes as language changes. If they become the generic name of an article or substance, the trademark can be cancelled.

Incontestability

A trademark becomes incontestable after five years of continuous use.

Incontestability precludes cancellation on the grounds of descriptiveness.

Use in Commerce

According to the Lanham Act, a mark on goods is used in commerce 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".

A use in commerce does not have to be commercial.

Causes of Action
Trademark Infringement

Trademark infringement is the violation of another's trademark rights by using the mark without authorization.

The basic test for infringement is "likelihood of confusion."

An infringing use of a trademark must be a "use in commerce."

Likelihood of Confusion

Each circuit has its own test to determine the likelihood of confusion.

There are some factors that are common to most of these tests however:

  • Similarity of the marks
  • Proximity of the goods or services
    • Whether the products are sufficiently related in the mind of the consumer
  • Strength of the plaintiff's mark
  • Actual confusion
  • Defendant's intent
Contributory Infringement

Contributory infringement occurs when one induces another to infringe yet another's trademark or continues to supply his product to one that he knows or should have known is infringing upon another's trademark.

Dilution

Trademark dilution is making a famous mark weaker.

Trademark dilution can occur "by blurring" or "by tarnishment."

A dilution action only applies to purely commercial speech.

  1. Trademark
  2. Famous mark
  3. Similarity to mark
Dilution by Blurring

Trademark dilution by blurring is when a "famous mark" loses some of its distinctiveness because of the use of a similar mark, regardless of what for.

There are six factors used to determine dilution by blurring:

  1. Degree of similarity
  2. Degree of distinctiveness
  3. Exclusive use/Policing
  4. Recognition
  5. Intent
  6. Actual association
Dilution by Tarnishment

Trademark dilution by tarnishment is when a "famous mark" has its reputation hurt because of a similarly named product of poor quality or unwholesome context.

Famous Mark

There is no hard line for what a famous mark is, but it has to be really famous. Usually around 70% recognition among the general consuming public is required.

To determine whether a mark is famous, four factors are used:

  1. The extent of duration and geographic reach
  2. The volume and geographic extent of sales
  3. The extent of actual recognition
  4. If it was registered before the creation of the principal register
False Advertising

Under the Lanham Act, false advertising requires:

  1. A false or misleading statement of fact about a product;
  2. Such statement either deceived, or had the capacity to deceive a substantial segment of potential consumers;
  3. The deception is material, in that it is likely to influence the consumer’s purchasing decision;
  4. The product is in interstate commerce; and
  5. The plaintiff has been or is likely to be injured as a result of the statement at issue.
Cybersquatting

Cybersquatting is when one registers the domain name of another's distinctive mark with the bad faith intention to profit from it.

It requires that the person:

  1. has a bad faith intention to profit from the mark and
  2. registers or uses a domain name that is identical, confusingly similar, or dilutive of a distinctive mark.
Factors for bad faith intention to profit

Whether or not a person has a bad faith intention to profit is determined by balancing nine factors:

  1. His IP rights in the domain name
  2. The extent to which the domain name consists of his legal name or other common name
  3. His prior use of the domain name in connection with the bona fide offering of goods or services
  4. His bona fide noncommercial or fair use of the mark in a site at the domain name
  5. His intent to diver consumer from from the mark owner's site, either for commercial gain or to tarnish the mark by creating a likelihood of confusion
  6. His offer to transfer or sell the domain name for financial gain without using it in the bona fide offering of any goods or services, or a history or doing this
  7. His provision of false contact information which registering the domain name, failure to update it, or history of doing this
  8. His acquisition of multiple domain names identical or confusingly similar to marks of others
  9. The extent to which the mark is distinctive and famous
False Advertising

Under 15 U.S.C. § 1125 (of the Landham Act), false advertising requires:

    1. false designation of origin;
    2. false/misleading description; or
    3. false/misleading representation of fact;
  1. in commercial advertising/promotion
  2. misrepresents nature/character/quality/geography of goods and sources of himself or another
  3. person is harmed
Defenses
  • Fair Use
    Classic Fair Use

    Classic fair use requires that the mark be used:

    1. other than as a mark,
    2. in a descriptive sense, and
    3. in good faith.
    Nominative Fair Use

    When a defendant uses a trademark to describe the plaintiff's product, even if his end goal is to describe his own product, he is entitled to a nominative fair use defense provided he meets the following three requirements:

    1. the product or service in question must be one not readily identifiable without use of the trademark;
    2. only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
    3. the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
  • First Amendment
    1. Comparative advertising
    2. Parody (commentary/criticism) – not just a joke
  • Licensing
  • Abandonment
  • Failure to Police
  • Incontestability
  • Genericide
  • Fraud on the office