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Law Outlines Trademark Law Outlines

Trademark Law Final Outline

Updated Trademark Law Final Outline Notes

Trademark Law Outlines

Trademark Law

Approximately 89 pages

All of the notes you will ever need for a Trademark Law final examination. Contains notes on cases, Restatements, statutes, the Constitution, and more....

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OVERVIEW

What is a trademark?

A trademark is a word/logo/symbol/package design used to identify the source of a product or service (include brand names identifying goods)

  • TM is not a word in the abstract; it is a word in conjunction with the thing you are selling

Restatement § 9

“A TM is a word, name, symbol, device or other designation, or a combination of such designations, that is distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others.”

Lanham Act § 45 (Definition of Trademark)

“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 in commerce and applies to register on the principal register established by this chapter, 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.”

Lanham Act § 32:

the owner of a TM is protected from unauthorized uses that are “likely to cause confusion, or to cause mistake, or to deceive.”

Lanham Act § 33:

grants several statutory defenses to an alleged TM infringer.

Interests at Stake (Producer v. Consumer):

  • Prevent consumer confusion/fraud. [Consumer]

  • Reduce consumer search costs. [Consumer]

    • If TMs don't matter, and anything can be copied, it would put the onus on the consumer to investigate and thus create increased search costs

  • Encourage investment in quality, consistency, or brand development. [Producer]

  • Prevent free-riding. [Producer]

  • Encourage competition. [Society/Market]

  • Protect freedom of expression. [Society/Market]

  • TM law protects commerce and consumers; not protecting ideas, profits, or products

    • Consumer: Aware of the quality of the product they are receiving; quality assurance

    • Producer: They don't receive consumer backlash for products they are not creating or distributing (i.e. reputation, low-quality)

Why do we need trademarks?

  • Consumers don’t want to pay a high price if the market is flooded with high quality goods

  • If consumers can’t tell the difference between the quality of products,theywon’t spend more on high quality goods

Trademark Rights

  • Monopoly in trademark law for creating first

    • So independent creation doesn’t make a difference

  • Trademark law is strict liability

  • Trademark rights – you will get them if you are the owner. Don’t need to file for registration

Nature Commercial identification of source such as words, designs, slogans, symbols, trade dress
Scope Protects against creating a likelihood of confusion; or diluting a famous mark
Purpose Protects owners and public from unfair competition
How to Obtain Rights Use mark in commerce or apply for federal registration
Principal Advantages of Registration Nationwide priority rights; possibly conclusive evidence of validity and ownership; U.S. Customs and Border Protection recordation; increased anti-counterfeiting remedies
Basis for Registration (1) Bona fide intention to use in commerce followed by actual use; (2) Non-U.S. owner’s country of origin registration or application filed within 6 months prior to U.S. application, or extension to the U.S. of international registration, plus bona fide intention to use in commercial or (3) Actual use in commerce
Notice Requirements Optional. “TM” or “SM” is unregistered; R symbol if registered.
Term of Rights As long as used, registrations must be maintained by filing use declaration before the 6th and each 10th anniversary (plus 6 month grace period for each filing)
Infringement Prerequisites Registration optional
Infringement Standard Likelihood of confusion, mistake or deception as to source or sponsorship; or dilution by blurring or tarnishment
International Protection (1) Individual countries or regions (2) Community Trade Mark registrations or (3) Madrid Protocol centralized filing

Types of Marks

  • Trademark: word that is being used to indicate source of a product

  • Colors can be protectable TMs provided that functionality doesn’t apply

    • If you have a reason for needing a particular color, then the color is functional (color becomes functional if it indicates the product or what it is the consumer is buying, rather than indicating the producer)

      • Examples of protectable colors: brown for shipping services, yellow for post-it notes

  • Sounds, unlike colors, can be inherently distinctive

    • Products may incorporate colors but not sounds (sounds are more likely added to the product to indicate source)

      • EX: Intel sound (sound is clearly being marked out as a way of indicating source bc there are no other reasons for playing the chime)

    • Entire songs can be TMs, which restricts one from selling some other product using that song

      • EX: Looney Tunes (registered as a TM)

  • Brand Names (identifying goods): Dole for canned pineapple

  • Trade Dress: graphics, color or shape of packaging or, after sufficient use, of goods (Coca-Cola Bottle for a soft drink)

  • Service Mark: word used to indicate source of a service

    • EX: Olive Garden, AT&T, Wal-Mart, McDonalds, UNITED

  • Slogans

    • EX: I’m Loving It (McDonalds), Just Do It (Nike)

  • Trade Names (Name of a company can be a TM or a service mark)

  • EX: Coca-Cola, Microsoft

  • Note: if the company name is not used to sell products/services at all, then you can’t obtain federal rights in that word (e.g. Berkshire Hathaway)

  • Collective Marks: they indicate membership in some kind of organization (the organization at issue might or might not be selling products)

    • EX: Rotary International, American Bar Association

  • Certification Marks: they indicate products or services that meet standards set up by the owner of the mark (Woolmark for apparel made of 100% wool)

    • Such marks are subject to cancellation pursuant to Lanham Act §14(5)

...

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