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Hansen IP Outline 2013
I. Overview of IP Law
A. Intro
A.1. IP does not protect ideas
A.2. IP is rivalrous => book says that it is non-rivalrous but Hansen thinks this is incorrect
A.3. IP is intangible
B. Legal Realism
A.4. Looks at the reality of the situation as opposed to the appearance of the situation
A.5. Policy drives decisions => not black letter law
C. Theories for Justification of IP Law
A.6. Natural Rights Perspective
C.a. John Locke – Labor Theory of Property
C.i. Locke - whatever is the result of man’s labor, he has a property interest in that
C.b. Natural law => when a person puts their labor into something, that takes it out
of the common & confers property right to the person
C.c. Proviso => as much and as good should be left for others after appropriation
A.7. Personhood Perspective
C.d. Hegel’s philosophy of right
C.ii. the person becomes a real self only by engaging in a property relationship w/
something external, such a relationship is the goal of the person
C.e. Radin : to achieve proper self-development an individual needs some control
over the resources in the external environment, and the necessary assurances of control take the form of property rights
C.iii. Also, one may gauge the strength or significance of someone’s relationship w/an
object by the kind of pain that would be occasioned by its loss
A.8. Utilitarian
C.f. A law is justified when it generates the greatest happiest for the greatest number
of people
C.g. Two roles of IP law:
C.iv. (1) promotion of new and improved works, whether technological or expressive,
and
C.v. (2) ensuring the integrity of the marketplace
C.h. Protect IP to provide incentives to produce
C.i. Public will benefit because more products will be produced
C.j. Only protect to the extent that it will produce new works => if no incentives for
new works it should not be protected
C.k. With this rationale, the “bad guy” can win
A.9. In practice, juries are more likely to think of the situation from a Natural Rights
perspective => if you make it, it belongs to you
D. Overview of IP
A.10. Trademark
C.l. The Lanham Act protects words, symbols, and other attributes that serve to
identify the nature and source of goods or services
C.vi. To receive TM protection, an identifying mark need not be new or previously
unused, but it must represent to consumers the source of the good or service identified, and it may not be a function element of the product itself but must serve a purely identifying purpose
C.m. Driven by John Locke’s Natural Law
C.n. Preserves integrity of the market place
C.o. Protecting the intangible goodwill that is built up around the mark
A.11. Copyright
C.p. Covers the broad range of literary and artistic expression … ideas themselves
aren’t copyrightable, but the author’s particular expression of an idea is
C.vii. A work must exhibit a modicum of originality and be fixed in a “tangible
medium of expression” to receive protection, which attaches as soon as the work is fixed (i.e. there is no examination by a gov’t authority)
C.q. Protection for “original works of authorship” against unauthorized copying,
distribution, adaption, performance, display or importation
C.viii. NOTE: protects only against copying of protected expression => courts infer
copying from proof that D has had access to the P’s work combined with evidence that the two works are similar , and even if copying is established, it must be further shown that the D’s work is substantially similar to protectable elements (e.g. excluding ideas) of the P’s work
A.12. Patents
C.r. Offers the possibility of a limited period of exclusive rights to encourage research
and development aimed at discovering new processes, machines, and compositions of matter, and improvements thereof
C.ix. After the term of patent expires, the innovation becomes part of the public
domain
C.s. Application to the PT and TM office must meet five requirements :
C.x. (1) patentable subject matter,
C.xi. (2) usefulness,
C.xii. (3) novelty,
C.xiii. (4) non-obviousness, and
C.xiv. (5) disclosure sufficient to enable others skilled in the art to make and use the
invention
C.t. NOTE: while the threshold for usefulness is low, the novelty and non-
obviousness standards are substantial
C.u. If the patent is granted, the inventor obtains exclusive rights to make, use, and
sell the innovation for a term of up to 20yrs , and the grant is nearly absolute
C.v. 4 major economic justifications
C.xv. 1. Provides incentive to invent by offering the possibility of reward to the
inventor and to those who support him
C.xvi. 2. Stimulates the investment of additional capital needed for further development
and marketing of the invention
C.xvii. 3. Encourages early public disclosure of technological information, some
of which might otherwise be kept secret
C.xviii. 4. Promotes the beneficial exchange of products, services, and
technological information across national boundaries by providing protection for industrial property of foreign nationals
II. Trademark Law
A. What is trademark law?
A.1. Lanham Act : “A trademark is a word, name, symbol, device or any combination thereof, which
is used to distinguish the goods of one person from goods manufactured or sold by others, and to indicate the source of the goods , even if the source is unknown.”
A.j. Collective Marks
A.xii. A trademark or service mark
A.D. 1. Used by the members of a cooperative, an
association or other collective group or organization
A.xiii. 2 Types
A.E. a collective mark or collective service mark is adopted by a
collective for use by its members, who in turn use the mark to identify their goods or services and distinguish them from those nonmembers
A.F. 2. A collective membership mark is a mark adopted for the
purpose of indicating membership in an organized collective group
A.1. the sole function of the mark is to
indicate that the person displaying the mark is a member of the organized collective group
A.3. Trade Dress
A.k. The act also protects trade dress => the design and packaging of materials, and
even the design and shape of a product itself, if the package or the product configuration serve the same source-identifying function as trademarks
A.l. Protected without registration
A.4. What are the (policy) reasons for protecting trademarks?
A.m. 1) Good will , which is the good feeling you have about a product due to the
product’s continued success. This deals w/ the product’s quality (i.e. coca cola). Non-US countries don’t care about good will. The UK says that only the source is protected, not the good will or right of publicity (i.e. Michael Jordan hats). This is a policy debate. The U.S. says that consumers are still interested in how the product is manufactured, the quality controls imposed, etc. And would be willing to pay a premium for an assurance of quality.
A.n. 2) To prevent confusion. You want to protect the consumer from being deceived
and you also want to protect the trademark owner.
A.o. 3) From an economist’s perspective/ consumer focus- trademark protection
reduces the consumer’s search costs b/c marks allow people to figure out what brands they like so they can continue to buy that brand.
A.p. 4) Economists favor this view- Trademark protection is essential for there to be
brand competition , better products, higher prices, more good will. Trademark protection encourages producers to make better products → without protection the good will created will be for someone else’s benefit
A.q. 5) Maintains quality control
A.r. 6) Fosters competition
A.5. What are the three policies underlying trademark law:
A.s. 1) Protect against consumer confusion. (this is the standard used in
infringement actions- likelihood of confusion.)
A.t. 2) Protect the TM owner’s goodwill from free riders (likelihood of confusion).
(dilution theory, not part of the Lanham Act, but courts use theory to hold for the good guy in a case.)
A.u. 3) TM protection should not thwart inter-brand competition. (idea that TM
protection should not create monopolies, this is why descriptive and generic marks are NID.)
A.6. Facts + Policy = Result = doctrinal explanation of the case
A.v. 1) You don’t want consumers to be confused.
A.w. 2) You don’t want to allow freeriding.
A.x. 3) The facts/equities of a particular case.
A.y. In trademark law you do not want to be overreaching bad guy because
trademark can easily be interpreted to protect the good guy even if there is law that should side with the bad guy
A.7. Role of Governmental Bodies
A.z. Hansen : better off in federal court because state courts consider statutes too
narrowly and don’t take into account policy considerations. Can only get a statewide injunction.
A.xiv. only want to be in a state court when dilution law based on state
law sometimes.
A.aa. Supreme Court decisions tend not to get followed because they tend not to police
their decisions so district courts and circuit courts know they don’t need to follow them
A.bb. USPTO: registers marks. Examiners tend not to care about Supreme Court, but
do care about TTAB
A.xv. Examiners are lawyers w/ some experience. Don’t like inconsistency.
Take away discretionary decisions from examiners.
A.xvi. What if you don’t like the result?
A.G. Appeal to the Trademark Trial and Appeal Board
(TTAB) = an administrative law court with administrative law judges hired independent of the PTO to act as judges
A.2. Roughly about 20 judges
A.3. Culture is much more discretionary than
examiners
A.H. Further appeal
A.4. Court of Appeals for the Federal Circuit
OR
A.5. US District Court
A.cc. District courts
tend to support TTAB and circuit court will knock down the TTAB to keep them in line
A.dd. Role of Congress
A.xvii. Very limited role, except in trademarks except intercoms which
represents big business.
A.xviii. Congress does not want to make decisions. They like to defer to
federal courts.
A.ee. Primary role of U.S. Courts : Thinking is what the court will do and not what
the statute says (maybe not even what is the precedent). Each ct level has their own culture
A.xix. District Ct : hardest working, most cases, least help, judged by
speed. Those who do the most cases though might not be doing the most justice - only speedy. Try to save all the good guys they can.
A.xx. Court of Appeals : Rule based on how the aggregate will be affected.
May have to sacrifice some good guys for the good of all.
A.xxi. ) Supreme Court : No blood/casualties taken into account.
Decisions are political. Arrogant court in regards to how decisions are made. Don’t respect the lower cts in regards to IP. No expertise
A.8. Quality Inns Intl. v. McDonald’s (MD 1988)
A.ff. Quality Inns (D) started a chain of hotels called “McSleep Inn.” The CEO
testified that he thought of the name at 2am. D’s lawyer basically let him lie on the stand and this cost D his credibility before the court.
A.xxii. Once bad faith enters into court’s mind, according to Hansen
your case is OVER
A.N. Hansen McDonald’s mark is so strong that almost
anything will lead to confusion and infringement.
A.kk. Holding : The public is likely to confuse McSleep Inn w/ a McDonald’s
association.
A.xxxvi. “The confusion caused by the name is not mitigated to an
acceptable level by the distinctive uses of the logo, facilities and advertising.”
A.xxxvii. D “wanted instant recognition, an image of consistency, quality,
and value, all at the courtesy of McDonald’s.” Therefore, there is TM infringement and dilution of P’s mark.
A.xxxviii. QI was barred from using McSleep. Disclaimer saying that
McSleep was not associated with McDonalds was not allowed
A.O. U.S. does not allow disclaimers because infringers are
still using the goodwill of TM owner
A.ll. Reasoning (Black Letter Law) of the McDonald’s Case
A.xxxix. Trademark law gives the owner of a mark the right to preclude
a use by a junior owner of a mark that causes or is likely to cause confusion, mistake, or deceive an appreciable number of typical consumers into believing that some sponsorship, association, affiliation connection, or endorsement exists between the owner of the senior mark and the owner of the junior mark
A.xl. The claim of trademark infringement is a sanction against someone who
trades by confusion on the goodwill or reputation of another, whether intentional or not
A.xli. The senior owner of a mark must demonstrate :
A.P. 1. The adoption and use of a mark and his entitlement to enforce
it
A.Q. 2. the adoption and use by a junior user of a mark that is
likely to cause confusion that goods or services emanate from the senior owner
A.xlii. the extent to which P may protect his mark relates directly to the
strength of the mark
A.R. likelihood of confusion is evidence of strength of a mark
A.S. where the public is confused and attributes a source, product
or service incorrectly , the owner of the mark, even though not a competitor, may experience damage to his reputation and goodwill
A.T. 2 marks that serve to identify products in 2 unrelated markets
may very well coexist without confusion
A.xliii. The determinative test cannot focus on how close or related the
industries or markets are, but rather by whether confusion is created so that an appreciable number of typical consumers will likely be confused
A.xliv. The public comes to understand the mark to refer only to the
kind of goods and not the origin, the mark may be lost to the public domain
A.xlv. Fanciful marks are given the strongest protection
A.xlvi. If a trademark owner has expressly of impliedly given an
assurance to another user that he will not assert his trademark rights, he may be barred from enforcing his mark against that user, by reason of estoppel by acquiescence
A.U. Acquiescence may be inferred from conduct (eg delay in
enforcement)
A.xlvii. Whether a trademark owner delayed in enforcing its
trademark rights against others is not relevant to establishing an estoppel defense
A.V. Estoppel by acquiescence focuses on a Ps acts toward the D, not
toward others
A.xlviii. 3rd party uses permitted by the owner may be probative of an
abandonment of the mark by the owner
A.W. a mark is abandoned when any course of conduct of the
owner, including acts of commission and omission, causes the mark to lose its significance as an indication of origin
A.X. once a mark is abandoned, it is free for all to use and
falls into the public domain
A.xlix. the damage that 3rd party users of a mark can cause an owner
who seeks to enforce his mark is the weakening of the mark’s strength
A.Y. where an owner has been reasonably diligent in protecting his
rights, even though infringement exists, no intent to abandon will be inferred.
A.mm. Factors in determining strength of mark
A.l. 1. The evidence of confusion
A.li. 2. The similarity of the contexts of uses of the marks such as the logo
forms in which they are presented, the similarity of facilities on which they are used, the media forms in which they are used, and any other language or logos which might distinguish them or make them more similar
A.lii. 3. The proximity of the markets for the products and services identified
by the marks, and the likelihood that the gap between the markets will be bridged
A.liii. 4. The intent of the junior user in adopting his mark and his good
faith in doing so
A.nn. Intent of the infringing user to confuse is not necessary to establish likelihood of
confusion
A.liv. Intent to confuse is strong evidence of likelihood to confuse
A.lv. Attorneys fees can be awarded under the Lanham Act where the
infringement was unconscionable, malicious, fraudulent, deliberate or willful
B. Subject Matter of Trademark
A.9. Definition of Trademark
A.oo. Trademark act of 1946 Lanham Act
A.pp. Includes any word, name, symbol or device or any combination thereof
A.lvi. (1) Used by a person
A.lvii. (2) which a person has a bona fide intention to use in commerce
and applies to register on the principal register established by this Act
A.lviii. To identify and distinguish his 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
A.qq. The language of the act was meant to exclude things => it is limited to words,
names, symbols or device
A.rr. Courts often believe that anything can be a source => the limitation is read out of
the statute
A.ss. “Since human beings might use as a symbol or device almost anything at all that
is capable of carrying meaning, this language, read literally, is not restrictive”
A.tt. Do not have to know who the source is => just have to know it came from a
particular source
A.uu. US has the broadest trademark protection in the world
A.vv. It fits into the American way of life
A.lix. Lochian, capitalistic, property based life
A.lx. You can advance your position is society by owning property
A.lxi. Goodwill is treated as intangible property
A.lxii. Trademark law serves to protect this property
A.8. Hansen does not think this was
inherently distinctive
A.9. 2d Cir created test that was impossible
to meet – 5th Cir ignored it
A.11. Only certain trademarks are entitled to legal protection
A.zz. Whether an identifying name or phrase may be trademarked at all and the degree
of protection both depend on the strength of the mark
A.aaa. This depends on the classification of the mark as either :
A.lxxii. Arbitrary or Fanciful
A.FF. an arbitrary or fanciful word bears no relationship
whatsoever to the product it describes
A.GG. afforded the strongest protection b/c any value they
possess in terms of name recognition obviously comes from the corporate use of the word rather than the natural association in people’s mind between the name and a product
A.lxxiii. Suggestive
A.HH. suggest a product in people’s minds
A.lxxiv. Descriptive
A.II. describe the product or service offered
A.lxxv. Generic
A.JJ. generic marks are so associated with a particular product
class that they have become the natural way to refer to that type of product
A.bbb. When a TM is immediately capable of identifying a unique product source, rights
to the mark are determined solely by priority of use
A.lxxvi. Inherently distinctive (arbitrary/fanciful, or suggestive)
A.KK. Fanciful… coined for the purpose as serving as a TM
A.LL. Arbitrary… common terms but serve no relation to the
product/service
A.lxxvii. Not inherently distinctive (descriptive or generic)
A.MM. Descriptive marks, personal names and geographic
marks require secondary meaning , which exists when buyers associate a descriptive term w/a single source of products; buyers don’t need to know the identity of the source, only that the product or services comes from a single source
C. Spectrum of Distinctiveness
A.12. Fanciful or coined terms. These are totally unfamiliar to present day consumers before
use as a trademark
A.ccc. Courts have determined the following to be fanciful or coined: Clorox, Cutex,
Exxon, Kodak, Kotex and Polaroid.
A.13. Arbitrary. Words or symbols in common usage but unrelated to product.
A.ddd. A mark will be arbitrary when it does nothing to suggest the product/has no
relation to the product
A.eee. Courts have held the following to be arbitrary: Stork Club, Sun computers,
Horizon banking services, Ice Cream chewing gum, Jellibeans Roller skating rink, Mustang motel, Nova television series, Wild Horse beer, and V-8 vegetable juice.
A.lxxviii. Hansen thinks Jellibeans Roller Skating Rink, Ivory Soap, etc.
can be considered suggestive instead of arbitrary
A.lxxix. V-8 Vegetable Juice: it has 8 vegetables in it so it doesn’t seem
so arbitrary. Hansen says it should be descriptive or generic
A.lxxx. Ivory Soap: some people say it is arbitrary, but it seems to
connote white, pure
A.fff. Prof. McCarthy says that Ivory soap, Royal baking powder, Old Crow whiskey
are also arbitrary.
A.ggg. Hansen: in these cases if court wants party to win they will call it arbitrary or
suggestive and if they want party to lose then they will call it descriptive
A.hhh. What Hansen thinks is going on is that courts are manipulated the classifications
to allow marks (good guys) to win
A.lxxxi. Courts are not honest with these categories
A.lxxxii. They will look for a way to make the good guy win and the bad
guy lose
A.iii. Only reason a competitor will use a arbitrary or fanciful mark is to free ride on
the goodwill of the mark holder
A.14. Suggestive. First created by courts to provide trademark protection as a technical mark.
A.jjj. Tests:
A.lxxxiii. Degree of imagination :
A.NN. term is suggestive if it requires imagination, thought
and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.
A.OO. eg. Greyhound Buses – suggests speed
A.lxxxiv. Competitor’s Need Test :
A.PP. granting a mark would not render it difficult for others in
the business to adequately describe their products.
A.QQ. Ask: Do competitors need it to describe their
product?
A.RR. “The English language has a wealth of synonyms and
related words with which to describe the qualities which manufacturers may wish to claim for their products and the ingenuity of the public relations profession supplies new words and slogans as they are needed.” (Aluminum Fabricating Co. v. Season- All Window Corp.)
A.lxxxv. Competitor’s Use Test :
A.SS. competitors use this test to describe the product
A.TT. Are competitors using the mark as a mark or in a
descriptive sense?
A.lxxxvi. Use in Media Test :
A.UU. Is the mark recognized as a mark in the media or is it
used simply in a descriptive manner?
A.kkk. Courts have held the following to be suggestive: Action slacks pants, At A
Glance calendars, Bear parkas, Charred Keg whiskey, Chew ‘n Clean dentifrice, Chicken of the Sea tuna, Classic Cola soft drink, Coppertone sun tan oil, Dial-A-Mattress mattress sales, Florida Tan sun tan lotion, Fruit Sundae yogurt, Handi Wipes dusting cloths, Hula Hoops plastic hoops, L’Eggs womens’ hosiery, Playboy magazine, Plyboo plywood made of bamboo, Psycholcalistenics physical exercises (exercise that are a combination of yoga, dance and calisthenics, Q-Tips wooden sticks with cotton on end, Rapid-Shave shaving cream, 7-Eleven food store (suggestive of opening hours), Tie Rack ties and accessories, Wrangler western boots and jeans.
A.lll. There are terms that highly suggestive and those that are less-highly suggestive
→ former is better
about fashions, Easyload tape recorders, Escape From The Ordinary for extraordinary clothing, 5 Minute glue for glue which sets in five minutes, Food Fair supermarket (protected in that action because of secondary meaning), Holiday Inn motel, Joy perfume, Off The Rack men’s store, Pocket Book paperback books, Washington Speakers Bureau lecture agency, World Book encyclopedia.
A.xcv. Hansen: Escape for the Ordinary clothes -- questionable whether
it is descriptive
A.ttt. Difficult to determine category because everyone has their own opinion
A.16. Generic
A.xcvi. Competitors^ need to use word to describe the product^ they are
selling
A.xcvii. Never descriptive
Inherently Distinctive Not Inherently Distinctive F or C A S D G
Fanciful or coined terms
Arbitrary Suggestive Descriptive Generic
Can register on Principal Register w/o proof of acquired distinctiveness “inherently distinctive”
Can register on Principal Register w/o proof of acquired distinctiveness “inherently distinctive”
Can register on Principal Register w/o proof of acquired distinctiveness “inherently distinctive”
Can register on supp. register (also for deceptively misdescriptive)
Not registrable on either Principal or supp. under any circumstances
Terms that never existed before so it must be a trademark. Invented for sole purpose of obtaining TM or SM.
Words or symbols in common usage but unrelated to the product.
Suggestive thought or takes more imagination, thought and perception (than descriptive) to connect the product with the name.
Immediately tells something about product. Need secondary meaning to be protected.
People who use it are free-riding on the goodwill of others and will lose quickly
People who use it are free-riding on the goodwill of others and will lose quickly
The determination of whether or not a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. So, possible significance that the mark would have to
the average purchaser of the goods or services in the marketplace. E.g., Verizon which combines veritas with horizon, Clorox, Cutex, Exxon, Polaroid
E.g., Apple Computer, Amazon.com, Camel Cigarettes, Sun Computer, Club
E.g., Wiffle Ball, Absolut Vodka, Greyhound buses, BUG MIST, SNO RAKE, Action slacks pants, At A Glance calendars, Bear parkas, Charred Keg whiskey, Chew ‘n Clean dentifrice, Chicken of the Sea tuna, Coppertone sun tan oil, Dial-A- Mattress mattress sales, Florida Tan suntan lotion,
E.g., Bed and Breakfast Registry, After Tan after sunning lotion, America’s Best Popcorn, Bad Air Sponge odor absorbing material, Beef & Brew restaurant, Beer Nuts salted nuts, Bliss beauty salon (“Bliss marks are a glut on the market in hair styling and beauty care. They are not distinctive, Best computer support services, Brewski bar services, Bufferin buffered aspirin, Chap Stick skin preparation
D. Distinctiveness, Secondary Meaning and Fair Use
A.17. Zatarain’s Inc. v. Oak Grove Sandwiches, Inc.^ (5^ th^ Cir. 1983)
A.uuu. P trademarked “Fish-fri” and “Chick-Fri.” D used the word fish fry to describe
his own product
A.vvv. A potential TM can be classified as:
A.xcviii. (1) Generic
A.BBB. the name of a particular genus or class of which an
individual article is but a member
A.CCC. connotes the basic nature of articles or services rather
than the more individualized characteristics of a particular product
A.DDD. NOTE: can never attain TM protection (even if there’s
secondary meaning)
A.EEE. If at any time a registered TM becomes generic as to a
particular product or service, the mark’s registration is subject to cancellation ( genericide )
A.xcix. (2) Descriptive
A.FFF. identifies a characteristic or quality of an article or
service
A.GGG. Ordinarily not protectable as TM but can become valid
marks if they acquire a secondary meaning in the minds of the consuming public
A.RRR. If a term requires imagination, thought and perception to
reach a conclusion as to the nature of the goods, it’s considered a suggestive term. Alternatively, a term is descriptive if standing alone it conveys information as to the characteristics of the product
A.cx. Whether competitors would likely need the terms used in the TM in
describing their products
A.SSS. the fact that a term is not the only or even most common
name for a product is not determinative, for there is no legal foundation that a product can be described in only one fashion
A.cxi. Examine the extent to which a term actually has been used
by others marketing a similar service or product
A.aaaa. Determining Secondary Meaning:
A.cxii. Mark must denote to the consumer a single thing coming from
a single source => direct and circumstantial evidence may be relevant
A.TTT. Circumstantial evidence : exclusivity, amount and
manner of advertising, volume of sales, number of customers, established place in the market, intentional copying and length and manner of use
A.UUU. Survey evidence is the most direct and persuasive way
of establishing secondary meaning
A.bbbb. Court’s Holdings
A.cxiii. Court ruled that Fish Fri had gained secondary meaning
A.cxiv. But they rule that it is Fair Use
A.VVV. D is not using the term fish fry as a mark => they are
using it as a describe their product
A.WWW. there was no likelihood of confusion => D allowed to
continue to use the term fish fry
A.10. Split between the circuits
A.11. 2nd circuit does not care if there
is likelihood of confusion => if its fair use that is the end of the case
A.12. 5th Circuit says that there cant
be fair use if there is likelihood of confusion
A.cxv. Hansen says D should have argued that Fish Fri is generic
A.18. the doctrine of foreign equivalents holds that foreign words must be translated to English
for purposes of determining their protectability
A.cccc. not an absolute rule
A.dddd. should be used only when the ordinary purchaser would stop and translate the
word into English
A.19. Geographic marks must acquire secondary meaning to be protectable
A.eeee. Describing the place the products come from
A.ffff. Section 2(e) of the Lanham Act – Reasons to Bar Registration of a Mark :
A.cxvi. Lists several reasons for refusal to register a mark, i.e. PTO can
refuse registration on the grounds that the mark is merely descriptive or deceptively misdescriptive.
A.cxvii. 2(e) also bars from registration a mark which is primarily
geographically descriptive of the goods; and it bars registration for a mark that is primarily geographically deceptively misdescriptive.
A.XXX. Primarily geographically descriptive can be overcome by
showing that the mark has become distinctive of the applicant’s goods in commerce. Not true of primarily geographically deceptively misdescriptive terms.
A.gggg. A mark is primarily geographic if it identifies a real and significant geographic
location, and the primary meaning of the mark is the geographic meaning
A.cxviii. The PTO:
A.YYY. If it is a geographic location, the PTO will treat it as
such, even if that is not what the general public/consumer thinks
A.cxix. this includes nicknames, eg. “Big Apple”
A.hhhh. Policy reasons for allowing geographically descriptive terms is that certain areas
developed certain expertise and we do not want to allow free-riding on the goodwill of a location
A.iiii. What evidence can you use here?
A.cxx. Proof of exclusive and continuous use of the mark in commerce.
A.cxxi. 5 years of commercial use is prima facie evidence of secondary
meaning
A.jjjj. Test For Geographic Terms
A.cxxii. What is the Primary Significance of the mark?
A.ZZZ. Chablis, champagne => regions where wine is produced
A.AAAA. They are technically locations (in Europe) but in the US
they are a type of wine
A.BBBB. Champagne is now generic in the US as a type of wine
A.cxxiii. Would purchasers be likely to believe that the good or
services originate in the geographic place identified in the mark?
A.CCCC. Do people associate the goods to the place? (eg. Georgia
Peaches, Idaho Potatoes)
A.DDDD. If answer to 1 or 2 is No, then valid TM. If yes, move
onto step 3.
A.cxxiv. Do the goods actually originate in the place identified by the
mark?
A.EEEE. If Yes , => the term is primarily geographically
descripti ve
A.13. Needs secondary meaning for
protection
A.FFFF. If no => the term is primarily geographically
misdescriptive. Go to step 4.
A.cxxv. Is consumer’s goods/place association a material factor in the
consumer’s decision to buy the goods or use the services?
A.GGGG. If yes => then geographically deceptively misde
scriptive; a BAR to registration
A.14. Cannot be registered
A.HHHH. If no , then it’s geographically misdescriptive =>
protected if secondary meaning
A.kkkk. In Re Nantucket (1982)
A.cxxvi. Trademark office refused to grant trademark to term Nantucket
for men’s shirts b/c it was geographically misdescriptive
A.cxxvii. In determining whether or not a geographical term is primarily
geographically descriptive of a product, of primary consideration is whether there is an association in the public mind of the product with the particular geographical area
A.15. A mark is primarily
geographical if it is the name of a place which has general renown to the public
A.cxxxix. When a designation has become distinctive through the
acquisition of secondary meaning, it is protected under the same principles applicable to inherently distinctive designations BUT…
A.JJJJ. TM protection extends only to the secondary meaning
that has attached to the designation.
A.KKKK. TM owner acquires no exclusive right to use of the
term in its original , lexicographic sense
A.cxl. Secondary meaning is an indication of source to the consumer.
Hansen notes that while secondary meaning is second in time (temporal), it’s really the mark’s primary meaning.
A.LLLL. So when the mark is first used, there’s no indication of
brand to the consumer whereas something that is inherently distinctive means the mark is inherently a trademark or brand
A.uuuu. Ways to prove acquired distinctiveness / secondary meaning
A.cxli. Surveys are a good way to prove source
A.MMMM. Another type is when consumers testify at the trial.
A.cxlii. Actual confusion of the public
A.NNNN. If a person thinks that you produce someone else’s
product this is great evidence of acquired distinctiveness because for that person they think of your name as a mark → it indicates source
A.OOOO. In order for there to be actual confusion there must be
distinctiveness
A.cxliii. Intentional deception
A.PPPP. If the person (D) you’re suing intended to deceive
consumers then D obviously thinks that you have acquired distinctiveness → if they think they can deceive people then you must have a mark
A.QQQQ. Intentional deception creates a presumption of likelihood
of confusion and acquired distinctiveness
A.cxliv. Intentional copying
A.RRRR. Different than intentional deception b/c D may think P’s
mark is not protected by a trademark
A.cxlv. Notoriety of the public
A.SSSS. Press releases to the public using mark
A.TTTT. Media tension is circumstantial evidence of acquired
distinctiveness
A.UUUU. Comparative advertising by others: shows competitor
believes there is acquired distinctiveness
A.cxlvi. Dictionaries
A.VVVV. Evidence that editors believe a term means something to
people
A.cxlvii. Length of use -- the longer the better
A.cxlviii. Product popularity -- people asking for it is a good indication
A.WWWW. #1 in sales show that people are looking for and
choosing the product that is branded or is a mark
A.cxlix. Advertising before product hits the public
A.XXXX. Secondary meaning before it hits the market (rejected by
some)
A.YYYY. Bombards the consumer and the result is that he starts
thinking about the mark as a brand/source indicator. When in court, you want to highlight the source identifying aspect of the ads.
A.ZZZZ. Difficult case is when someone else uses mark after you
used it in advertising
A.16. Can the initial advertising make
you the senior user?
A.17. You should always have in your
advertisements the => tells public it’s a trademark
D.i. Also shows consumers that the
name served as a brand or mark, as opposed to just saying something descriptive about the product. Hansen says this is good proof b/c it tells public you’re trying to create a recognizable brand.
A.cl. Judicial notice. The court says, “Come on, we know that P’s mark has
secondary meaning, don’t waste my time.” The D now has to show the judge that the case is interesting and has merits.
A.cli. Proving secondary meaning / acquired distinctiveness has no fixed rules
because courts want the freedom to make ad hoc decisions
A.AAAAA. Rule says that a term must have substantial and
significant acquired distinctiveness to have secondary meaning
A.vvvv. Rock & Roll Hall of Fame v. Gentile Prod. (6th Cir. 1998)
A.BBBBB. Facts : Building’s design was registered in Ohio for TM
purposes. Museum sold posters featuring the building. Gentile, D, was a photographer who also sold posters that featured a photograph of the Museum against a sunset. P claimed that D’s posters infringed and diluted its marks.
A.CCCCC. Holding : Held for D b/c the P used the image of the
building differently on posters and shirts. Consequently, the image of the building did not function as a true TM.
A.DDDDD. Notes :
A.18. This case is similar to the rock
bands who don’t want other people selling their t-shirts b/c those people take the musicians’ good will w/o permission. Those unauthorized sellers lose, b/c they are trying to associate w/ someone’s established good will. But this case is different.
A.19. D won b/c D was not interested
in P’s good will. His posters were not using P as a source identifier, and he’s not selling the posters on the street. D was not a bad guy here.
D.ii. Furthermore, D was selling the
posters for twice what the museum was selling it for, so this isn’t like selling t-shirts at a rock concert → there must be some value in the expensive photo
D.iii. Person buying clearly doesn’t
care about goodwill of R&R HOF because they also would’ve bought the cheaper one → obviously there is value in the photo
D.iv. D was selling goodwill of his
photos / art
A.20. Free rider on goodwill => courts
will manipulate factors to show likelihood of confusion. Here, photographer was not a free rider b/c he is creating his own goodwill through his own photograph
A.21. A building is very rarely going
to be considered a mark rather than a geographic place
A.22. Genericism
A.wwww. Genericide/Markocide
