Trademarks

Trademarks

Distinctive mark, motto or device or emblem that a manufacturer stamps, prints or otherwise affixes to the goods it produces.

Distinguish product/service from goods of other manufacturers and merchants.

Avoids consumer confusion.

Case 7.1: Coca Cola v. Koke Co. (1920).

Trademarks-Statutory Protection

Lanham Trademark Act (1946) creates incentives for companies to invest; prevents unjust enrichment of companies who infringe.

Federal Trademark Dilution Act (1995)  Cause of action regardless of competition or confusion based on a “similar” mark.

Trademarks – Registration

Register with U.S. Patent Trademark Office  if:

Ø  Mark is currently in commerce; or

Ø  Applicant intends to put it into commerce within 6 months.

Ø  Registration allows use of “®” symbol.

Trademark Infringement

Whenever a trademark is copied or use, intentionally or unintentionally, there is infringement.

Trademark owner has cause of action against infringer,unless trademark is a “generic” term.

Lanham Act designed to prevent consumer confusion about similar marks.

Trademark – Distinctiveness

Trademark must be sufficiently distinct.

‘Strong’ Marks:

Ø  Fanciful.

Ø  Arbitrary.

Ø  Suggestive marks.

Secondary Meaning.

Generic Terms: escalator, aspirin.

Trade Dress

Refers to the image and overall appearance of the product.

Same protection as trademark.

Issue is consumer confusion.

Ø  Example: distinctive décor, product names, packaging of Starbucks coffee shops.

Service Marks

Similar to trademark but used to distinguish services of one person/company from another.

Titles and character names used in media are frequently registered as service marks.

Trade Names

Trademarks apply to products.

Trade name applies to companies and is protected by federal law as well. Example: IBM, Coca-Cola, NBC.

Cyber Marks

Online trademarks.

Domain Names:   

www.westlaw.com

Conflicts: ICANN, WIPO.

Anti-Cybersquatting Consumer Protection Act (1999) amended the Lanham Act.

Meta Tags.

Case 7.2: Playboy Enterprises v. Welles (2002).

Cyber Mark Dilution.