TRADEMARK LAW WHAT IS A TRADEMARK? Dominant Framework Trademark: word or symbol designation which identifies the source of the goods or services Source: production (manufacturer), commercial (design, IP), geographic (also certification marks) Includes marks (goods), service marks (service providers), trade names (corporations), trade dress (packaging and product features) Purpose of trademark protection Consumer protection Efficient communication in market economy Economically motivates product differentiation consumer wants assurance that – producer maintains consistent quality allow use of TM in sale of refurbished/used goods as long as clearly indicated better to give consumer more information (efficient, non-deceptive) – Producer protection Creates value in the marks/brands themselves – protects goodwill and reputation of the producer TM is a property right Hanover – appurtenant to the established business or trade one is engaged in Two types of liability Infringement: likelihood of confusion (confusion of the consumer) Dilution: damaging the brand value (producer protection) Subject matter what is protected – Taxonomy of Trademarks Arbitrary: word mark that has no logical association with the product it is attached (Apple computers) Fanciful: a created word (Kodak, Exxon) if the name describes the good/service it is only protectable if it has acquired secondary meaning Secondary meaning: term/phrase was second to arise in time, but the source of the good becomes the first thing people think of although name misdescriptive, it had acquired secondary meaning Coca-Cola so public did not think it was actually coca leaves and cola beans expired patent meant term and shape of wheat” belonged to Kellogg “shredded the public, Nabisco could not trademark b/c it was descriptive and no secondary meaning (must show primary significance of term in minds of consuming public is the producer not the product) Trade dress Product features Cannot trademark functional aspects (Qualitex, Inwood) pillow shape was cost-effective way to produce Kellogg expired patent (spring design to keep roads signs upright) is strong Traffix evidence that feature is functional, could not meet heavy burden to show that features of expired patent are ornamental, incidental, or arbitrary Packaging features Slogans Tend to be descriptive, but can be protected if they acquire secondary meaning through use but less important b/c advertising changes so quickly (except Just Do It) – Color Can be trademarked if it acquires secondary meaning using color for branding – purposes (e.g. insulation)
TRADEMARK LAW WHAT IS A TRADEMARK? Dominant Framework Trademark: word or symbol designation which identifies the source of the goods or services Source: production (manufacturer), commercial (design, IP), geographic (also certification marks) Includes marks (goods), service marks (service providers), trade names (corporations), trade dress (packaging and product features) Purpose of trademark protection Consumer protection Efficient communication in market economy Economically motivates product differentiation – consumer wants assurance that producer maintains consistent quality allow use of TM in sale of refurbished/used goods as long as clearly indicated – better to give consumer more information (efficient, non-deceptive) Producer protection Creates value in the marks/brands themselves – Hanover protects goodwill and reputation of the producer – TM is a property right appurtenant to the established business or trade one is engaged in Two types of liability Infringement: likelihood of confusion (confusion of the consumer) Dilution: damaging the brand value (producer protection) Subject matter – what is protected Taxonomy of Trademarks Arbitrary: word mark that has no logical association with the product it is attached (Apple computers) Fanciful: a created word (Kodak, Exxon) if the name describes the good/service it is only protectable if it has acquired secondary meaning Secondary meaning: term/phrase was second to arise in time, but the source of the good becomes the first thing people think of Coca-Cola although name misdescriptive, it had acquired secondary meaning so public did not think it was actually coca leaves and cola beans Kellogg expired patent meant term and shape of “shredded wheat” belonged to the public, Nabisco could not trademark b/c it was descriptive and no secondary meaning (must show primary significance of term in minds of consuming public is the producer not the product) Trade dress Product features Cannot trademark functional aspects (Qualitex, Inwood) Kellogg pillow shape was cost-effective way to produce Traffix expired patent (spring design to keep roads signs upright) is strong evidence that feature is functional, could not meet heavy burden to show that features of expired patent are ornamental, incidental, or arbitrary Packaging features Slogans Tend to be descriptive, but can be protected if they acquire secondary meaning through use – but less important b/c advertising changes so quickly (except Just Do It) Color Can be trademarked if it acquires secondary meaning – using color for branding purposes (e.g. insulation)
Trademark-Law.docx