Intro to Trademark Law Intro to IP Prof

Intro to Trademark Law Intro to IP – Prof. Merges 3. 10. 09

Comparing Trademark to Patent & Copyright Law • Constitutional Foundation – Patent & Copyright clause – Commerce clause (see The Trademark Cases, 100 US 82 (1879) • Basic Goal – Pat. & ©: Protect author/inventor; promote progress – TM: Protect consumers

Quality assurance in an urban (anonymous) exchange environment

Consumer Protection Rationale • Fraud cause of action on the part of consumers concentrated and located in the hands of a seller – the trademark “owner” • This indirectly encourages expenditures to increase the quality of the TM owner’s goods

EARLY HISTORY common law palming off Trade-mark Cases: striking down Act guild system first use of trademarks // 1 st Federal Act based on IP Clause early 19 th century medieval ancient times 1870 1879 Foreign commercebased Act 1881

MODERN HISTORY Lanham Act Trade Dress § 43(a) Trademark Act interstate commerce 1905 Federal Anti. Dilution Act Revisions intent to use 1947 1988 1996

EXPANDING PROTECTION Scope: Marks Threshold: Actual Use Trade Dress Intent to Use

EXPANDING RATIONALE FOR TM TORT Avoiding Consumer Confusion and Reducing Consumers’ Search Costs Encouraging Investment in Advertising and Good Will Property Interests in Image: Image as a Marketable Commodity PROPERTY

GUIDING PRINCIPLE CUSTOMER PERCEPTION as a test of: • VALIDITY • INFRINGEMENT

Sources of Trademark Protection FEDERAL LAW • Federal Registration • False Designations of Origin and False Descriptions § 43(a) STATE LAW • Statutory Protection • Common Law

Subject Matter • Trademark: “word, name, symbol, or device, or any combination thereof” • Service Mark Hyatt - hotel services • Certification Mark Good Housekeeping • Collective Mark SFA (Snack Food Assoc) • Slogan “Greatest Show on Earth” Fragrance Sound • Trade Dress and Product Configuration • Trade Name - state (not fedl) protection

Qualitex v. Jacobson • Facts • Holding

Four objections to TMs for color • Breyer’s response:

“Big Blue”

Dry Cleaning Press

The term "trademark" includes any word, name, symbol, or device, or any combination thereof-(1) used by a person, or (2) which a person has a bona fide intention to use …, to identify and distinguish his or her 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.

Hierarchy of distinctiveness • Arbitrary: Exxon; Google • Fanciful: Apple Computer • Suggestive: “Coppertone” suntan lotion • Descriptive: Quick-Dri Hairdryers; Speedo bathing suits

Generic Marks • Words that have ceased to serve as trademarks • Identified with category or type of product, rather than one company or source: Aspirin; Jello; Kleenex/Xerox?

Qualitex • Functionality doctrine – Shredded Wheat case – Product feature vs. “source indicator” – What role does the product attribute play?

Color and Functionality • Red emergency signs?

Zatarain’s v. Oak Grove Smokehouse Formerly “Chick-Fri”