Trademark basics • Signal a common source, or at least affiliation Trademarks Service Marks Certification Collective Marks Geographic • Words, phrases, logos . Marks Indications • Federal / state regimes • Use in commerce • Law of marks is based on use of the brand on goods • Exclusivity derives from that type of use in commerce • Must: • “Affix” the mark to goods • Move the marked goods in commerce • Registration not needed – but Federal registration is highly beneficial • Service marks • Used “in connection with” services to signal common source • Certification / Collective marks Greg R. Vetter • www.gregvetter.org 1 Greg R. Vetter • www.gregvetter.org 2 Trademarks, Spring 2016 Trademarks, Spring 2016 Trade‐Mark Cases 100 U.S. 82 (1879) • Act of 1870 (“An Act to revise, consolidate, and amend the statutes relating to patents and copyrights”); Act of Aug. 14, 1876 (“An act to punish the counterfeiting of trade‐mark goods, and the sale or dealing in, of counterfeit trade‐mark goods”) • U.S. Constitution, I.8.8: “[The Congress shall have Power] To promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries” The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country and by the statutes of some of the states. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement. This exclusive right was not created by the act of Congress, and does not now depend upon it for its enforcement. The whole system of trademark property and the civil remedies for its protection existed long anterior to that act, and have remained in full force since its passage. There propositions are so well understood as to require neither the citation of authorities nor an elaborate argument to prove them. http://www.interbrand.com/en/best-global-brands/2012/Best-Global-Brands-2012-Brand-View.aspx Greg R. Vetter • www.gregvetter.org 3 Greg R. Vetter • www.gregvetter.org 4 Trademarks, Spring 2016 Trademarks, Spring 2016 Trademark protection • Distinctive • Not disqualified • Used in commerce • Not required: • registration • Form of symbol can vary greatly Greg R. Vetter • www.gregvetter.org 5 Greg R. Vetter • www.gregvetter.org 6 Trademarks, Spring 2016 Trademarks, Spring 2016 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) Trademark continuum of distinctiveness for word marks Generic DescriptiveSuggestive Arbitrary / Fanciful / Coined • Safari mark aspirin • Alleged infringing uses by Hunting World • Safari • Minisafari • Safariland • Use as applied to products versus in language? • Continuum of distinctiveness for a word mark • Application • Generic for clothing “Brilliant” for “Brilliant” for “Brilliant” for • Suggestive or descriptive for boots / shoes diamonds shoe polish canned apple • But, “incontestable” sauce Greg R. Vetter • www.gregvetter.org 7 Greg R. Vetter • www.gregvetter.org 8 Trademarks, Spring 2016 Trademarks, Spring 2016 Descriptive? Genericness character function feature quality ingredient nature purpose use characteristics dimensions, color, odor. Greg R. Vetter • www.gregvetter.org 9 Greg R. Vetter • www.gregvetter.org 10 Trademarks, Spring 2016 Trademarks, Spring 2016 Generic‐ness Zatarain’s • Attributes of Zatarain’s marks? • Classification of marks? • Secondary meaning? • “Fair use” defense ‐ 15 U.S.C. § 1115(b)(4) Greg R. Vetter • www.gregvetter.org 11 Greg R. Vetter • www.gregvetter.org 12 Trademarks, Spring 2016 Trademarks, Spring 2016 Zatarain’s Zatarain’s • Fish‐Fri • Chick‐Fri • Suggestive or generic – either side of descriptiveness • Classification? • Dictionary ‐ ordinary significance and meaning of the words • Imagination test • Secondary meaning? • Whether competitors need to use the term • Extent of actual use by others to describe/identify • Secondary meaning • What if a mark is incontestable? • Factors / Circumstantial evidence • Amount of advertising and promotion of mark and connection to product • Volume and type of sales (repeat?) • Length and manner of use of mark • Market research ‐ testimony / articles / reviews / surveys • Surveys – most direct and persuasive • Bad faith copying (“NY rule”) • “Fair use” defense ‐ 15 U.S.C. § 1115(b)(4) • Used fairly in good faith only to describe to users the goods or services . or their geographic origin. • Impact of trade dress on “fair use” in this case? Greg R. Vetter • www.gregvetter.org 13 Greg R. Vetter • www.gregvetter.org 14 Trademarks, Spring 2016 Trademarks, Spring 2016 Innovation Ventures, LLC v. N.V.E., Inc. 694 F.3d 723, 729‐730 (6th Cir. 2012) “Primarily geographically descriptive” marks • A mark will be deemed primarily geographically descriptive under § 2(e)(2) if: 1. the primary significance of the mark is a generally known geographic location; 2. the goods or services originate in the place identified in the mark; and 3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. TMEP §1210.01(a). Greg R. Vetter • www.gregvetter.org 15 Greg R. Vetter • www.gregvetter.org 16 Trademarks, Spring 2016 Trademarks, Spring 2016 Certification Marks Collective Marks • The term ''certification mark'' means any word, name, symbol, or device, or any combination • The term ''collective mark'' means a trademark or service mark – thereof – • (1) used by the members of a cooperative, an association, or other collective group or organization, or • (1) used by a person other than its owner, or • (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use • (2) which its owner has a bona fide intention to permit a person other than the owner to use in in commerce and applies to register on the principal register established by this chapter, commerce and files an application to register on the principal register established by this chapter, • and includes marks indicating membership in a union, an association, or other organization. 15 U.S.C. § 1127 • to certify • regional or other origin, • Two possible functions of the collective mark with respect to the association, union, cooperative, fraternal • material, organization or other organized collective group using the mark: • mode of manufacture, • As a mark adopted for use only by its members, who in turn use the mark to identify goods or services – mostly • quality, treated as ordinary trademarks/service marks • accuracy, • Solely to identify the person displaying a mark as a member of the collective group – a membership mark • or other characteristics of such person's goods or services • or that the work or labor on the goods or services was performed by members of a union or other organization. 15 U.S.C. § 1127 • The term ''mark'' includes any trademark, service mark, collective mark, or certification mark. 15 U.S.C. § 1127 • Must be open to any producer that meets the standards. Greg R. Vetter • www.gregvetter.org 17 Greg R. Vetter • www.gregvetter.org 18 Trademarks, Spring 2016 Trademarks, Spring 2016 Classifying other types of marks Lanham Act – Important Sections • Surnames • Section 1, 15 U.S.C. § 1051: Actual use and intent to use registration process • Section 2, 15 U.S.C. § 1052: Bars to registration • Acronyms • Section 32, 15 U.S.C. § 1114: Infringement of registered marks • Section 43(a), 15 U.S.C. § 1125(a): Infringement of unregistered marks • Domain names • Section 43(c), 15 U.S.C. § 1125(c): Dilution of marks (registered or unregistered) • Section 45, 15 U.S.C. § 1127: Definitions • Foreign Equivalents Greg R. Vetter • www.gregvetter.org 19 Greg R. Vetter • www.gregvetter.org 20 Trademarks, Spring 2016 Trademarks, Spring 2016 Acquired Distinctiveness of Source Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. (5th Cir. 1983) • Rough synonyms • Approaches to determining whether a mark is descriptive (rather than Imagine a situation in which Company David, after a suggestive/arbitrary): • Secondary meaning great deal of market research, adopts an especially • Trademark meaning good descriptive mark and initiates a small‐scale • Dictionary definition launch of the descriptive mark in the marketplace. • Imagination test • Acquired distinctiveness Company Goliath then becomes aware of Company • Acquired trademark meaning David’s mark, adopts the mark as its own, and • Competitive need immediately spends enormous resources building up • Third‐party uses secondary meaning in the mark, so that when consumers see the mark, they think of Company • See also TMEP 1209.03 Goliath. Which company should be granted rights in the mark? And is this in your view an equitable or efficient outcome? (Part I, pg. 42) Greg R. Vetter • www.gregvetter.org 21 Greg R. Vetter • www.gregvetter.org 22 Trademarks, Spring 2016 Trademarks, Spring 2016 Frosty Treats Inc. v. Sony Computer Entertainment America (8th Cir. 2005) Cartier, Inc. v. Four Star Jewelry Creations, Inc. (S.D.N.Y. 2004) • Alleged infringement is use in a video • Discussion of survey evidence as to whether the designs had acquired game distinctiveness • Sony wins by summary judgment that Frosty Treat’s mark is generic or descriptive lacking secondary meaning • Secondary meaning analysis for FROSTY TREAT Greg R. Vetter • www.gregvetter.org 23 Greg R. Vetter • www.gregvetter.org 24 Trademarks, Spring 2016 Trademarks, Spring 2016 Summary of Distinctiveness Doctrine So Far Genericness . • Distinctiveness and the Abercrombie spectrum • A mark is “distinctive” (of source) if it possesses either “inherent distinctiveness” or “acquired distinctiveness” • Inherently distinctive marks consist of suggestive, arbitrary, and fanciful marks. • Non‐inherently distinctive marks consist of generic and descriptive marks. Descriptive marks may receive protection if they possess “acquired distinctiveness” (i.e., “secondary meaning”).