IP Law Survey: Trademarks

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IP Law SurveyTrademarks

• Fall 2009
• Trademark Law Lesson 3
• Prof. Loren

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REMINDERS

• Class evaluations Thursday
• Also Thursday exam discussion
• Memo 3 available outside my office beginning at
  5pm tomorrow (Weds. 11/18)
• Memo 4 assignment available on the class website
  at 5pm tomorrow (Weds. 11/18)

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Hierarchy of Distinctiveness

• Inherent Distinctiveness
• Word marks Fanciful, arbitrary, or suggestive
• Trade dress Product packaging, restaurant décor
• Acquired Distinctiveness
• Word marks Descriptive
• Trade dress Product color
• Trade dress Product design (err in favor of
  design category)
• No protection
• Word marks Generic Words
• Trade Dress Functional

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Leftover from last week functionality

• Importance of functionality in determining what
  types of trade dress is protectable
• Polices the boundary between patent law and
  trademark law
• No back-door patents
• Non-reputation related aspects of a product, i.e.
  not related to good-will, but to design

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Functionality bar

• Inwood Labs. (U.S. 1982)
• In general terms, a product feature is
  functional if it is essential to the use or
  purpose of the article or if it affects the cost
  or quality of the article.
• Pill color found to be functional
• Qualitex (U.S. 1995)
• that is, if exclusive use of the feature would
  put competitors at a significant
  non-reputation-related disadvantage
• Green-gold pad color found not functional

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TrafFix Devices v. Marketing Displays(U.S. 2001)

• MDI sells 2-spring sign, Windmaster
• Owned 2 utility patents, now expired
• TrafFix sells 2-spring sign, Windbuster (infg)
• After utility patents expired, copied design
• MDI alleged trademark infringement Windmaster
  and Windbuster
• Won on that claim
• MDI also alleges trade dress infringement

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TrafFix Devices v. Marketing Displays(U.S. 2001)

• Potential trade dress protection for the
  dual-spring design of temporary road signs
• Issue does the existence of an expired utility
  patent foreclose the possibility of the patentee
  claiming trade dress protection in the products
  design
• Why might it?
• Functionality
• Who has burden concerning functionality?
• Burden on the party claiming rights to prove
  non-functionality (in the statute!)
• Baseline assumption there is no prohibition
  against copying goods and products (its called
  competition!)
• One must prove nonfunctionality to flip the
  default rule

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• Does it matter that there are other ways to
  design the product?
• No the inquiry is functionality of the product
  feature claimed to serve as a source identifier
• Is it essential to the use or purpose of the
  article or does it affect the cost or the
  quality of the article
• If you still think it might not be functional,
  then also ask.
• (what the court of appeals asked) does barring
  competitors use of the design put them at a
  significant non-reputation-related disadvantage
• Will be important with assertions of aesthetic
  functionality
• Focus on preserving competition

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Infringement

• Registered mark
• 32 15 USC 1114
• likely to cause confusion, or to cause mistake,
  or to deceive
• Unregistered mark
• 43 15 USC 1125
• likely to cause confusion, or to cause mistake,
  or to deceive

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Likelihood of Confusion Factors

• Similarity of the marks sight / sound / meaning
• Competitive proximity / relatedness of goods
• Strength of mark (distinctiveness, fame)
• Evidence of actual confusion
• anecdotal evidence consumer survey evidence
• Similarity of marketing channels
• Consumers degree of purchasing care
• Other users intent in using its mark

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Kellogg Co. v. Toucan Golf, Inc.(6th Cir. 2003)

• Starts as an opposition
• Likelihood of confusion with Toucan Sam
• from Toucan Gold on golf equip?
• from GolfBird image on golf equip?
• Factors - why this one, where does it point?
• Strength of Kelloggs mark?
• Relatedness of products?
• Three benchmarks
• Similarity of marks?

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Experience Hendrix v. Electric Hendrix (W.D. Wa.
2008)

• No right of publicity to his estate
• Likelihood of confusion?
• Which factors favor Plaintiff?
• Which factors favor Defendant?
• What seems most persuasive to the court?

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Source v. Sponsorship

• Source confusion
• Registered marks - 32(1) 15 USC 1114
• Unregistered marks - 43(a) 15 USC 1125
• Sponsorship confusion -  43(a)(1)(A)
• is likely to cause confusion i as to the
  affiliation, connection, or association of such
  person with another person, or ii as to the
  origin, sponsorship, or approval of his or her
  goods, services, or commercial activities by
  another person