Trademark Types and Content of Marks

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Trademark Types and Content of Marks

• Trademarks, Service Marks, Collective Marks,
  Certification Marks1052, 1053, 1054

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Service Marks v. Trademarks v.
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Tradenames

• Trademarks are associated with goods
• Services are associated with services
• Names are associated with individuals and
  entities (not their conduct, including services)
• All have state law roots, but only trade and
  service marks are federally registered

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Examples of Trade and Service Marks

• In re Carson Johnny Carson service mark?
• Yes if the mark serves to identify services
• In Re A M The Now Generation?
• Registrable for promotional services undefined
  term services has broad scope
• Note though that mere surnames are not
  registrable

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Goods v. Services

• Ex Parte Handmacher-Vogel Weathervane womens
  golf clothing vs. Weathervane womens golf
  tournament
• If the services are rendered merely as accessory
  to or solely in furtherance of sale of goods NO
  service within meaning of act
• If service over and above those normally expected
  and only incidental to sale service

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Certification v. Service Marks

• Mutually distinct cannot be simultaneous
• Cert mark to identify quality, region, origin
• Otherwise, geographically descriptive marks not
  registrable here, an effective exception
• Registrant of a certification mark cannot engage
  in the production or marketing of any goods or
  services to which the certification mark is
  applied
• In re Florida Citrus is promotion of O.J.
  marketing of goods? Yes. Reg denied.
• UL example case

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Collective Marks

• Collective marks indicate mere association
  instead of describing a particular quality of
  goods
• Certification marks indicate quality, region,
  location, certified by someone other than the
  producer UL/Midwest Plastic example
• There may be overlap Indian River example
• Procedural distinction certifier is third party
• Are collective marks obsolete? No.

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Related Issues

• Made in America governed by 45a of FTC Act
  not misleading to represent that such product
  was in whole or substantial part of domestic
  origin -- an appropriate percentage designated
  by the Commission
• Commercial association generic advertising a
  form of protected speech that may not be
  compelled by government

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Next class Markable media