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Review - Bars to Registration ... 15 USC 1052(a) bar

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Title: Review - Bars to Registration ... 15 USC 1052(a) bar


1
Trademark Law
  • Oct. 9, 2006
  • Week 6
  • Finish Chapter 4 Registration
  • Start Chapter 5 - Loss of Trademark Rights
  • Read Pgs. 312-345, 353-363, 368-378 skim sample
    documents 379-389

2
Review - Advantages of Registration
  • Nationwide protection from the date of the
    application
  • Prevents senior users in limited geography from
    expanding their territory
  • Incontestability if used for 5 yrs (and paperwork
    filed with USPTO)
  • Stop infringing goods at the dock
  • Mark is presumed valid during litigation
  • Get to use that really cool symbol
  • Enhanced Damages (discussed later)

3
Review - Bars to Registration
  • 15 USC 1052(a) - No mark shall be refused
    registration unless
  • it is immoral, deceptive, or scandalous matter
    or
  • it is matter which may disparage or falsely
    suggest a connection with persons, living or
    dead, institutions, beliefs, or national symbols,
    or bring them into contempt, or disrepute or a
    geographical indication which, when used on or in
    connection with wines or spirits, identifies a
    place other than the origin of the goods and is
    first used on or in connection with wines or
    spirits by the applicant on or after one year
    after Jan. 1, 1995

4
Review - Bars to Registration
  • Refusal based on 15 USC 1052(a)
  • immoral, deceptive, or scandalous matter or
  • matter which may disparage

5
Review - Bars to Registration
  • Refusal based on 15 USC 1052(b) flags or coat
    of arms or insignia of the US, any State or muni,
    or any foreign nation, or any simulation thereof
  • Refusal based on 15 USC 1052(c ) Names,
    portrait or signatures (live people or dead
    presidents while the widow still lives)

6
Review - Bars to Registration
  • Refusal based on 15 USC 1052(d)
  • resembles a mark (registered or not) that the
    applied for mark would likely to cause confusion
    with as used or as intended to be used

7
Review - Bars to Registration
  • 15 USC 1052(e) - Cannot register a mark which
  • (1) when used on or in connection with the goods
    of the applicant is merely descriptive or
    deceptively misdescriptive of them
  • (2) when used on or in connection with the goods
    of the applicant is primarily geographically
    descriptive of them, except as indications of
    regional origin may be registerable under section
    4 15 USC 1054
  • (3) when used on or in connection with the goods
    of the applicant is primarily geographically
    deceptively misdescriptive of them,
  • (4) is primarily merely a surname, or
  • (5) comprises any matter that, as a whole, is
    functional.
  • 15 USC 1052(f) - except for 1052(a), (b), (c),
    (d), (e)(3) and (e)(5)... all of the other
    rejections may be overcome by proving the mark
    has become distinctive (a.k.a. acquired secondary
    meaning) to the examiner.

8
Review - Bars to Registration
  • 15 USC 1052(e) - Cannot register a mark which
  • (1) when used on or in connection with the goods
    of the applicant is merely descriptive or
    deceptively misdescriptive of them
  • Must acquire 2nd meaning for mark to be
    protectable See 1052(f)

9
Review - The Budge Test
  • Compare and contrast
  • 15 USC 1052(a) bars deceptive terms
    complete bar (not even 2nd meaning will allow
    registration
  • 15 USC 1052(e)(1) bars merely descriptive
    terms or deceptively misdescriptive terms (but
    2nd meaning will allow registration)
  • How to tell the difference? 3-step test on p. 253

10
Review - Registration of Marks
  • 15 USC 1052(e) - Cannot register a mark which
  • (2) when used on or in connection with the goods
    of the applicant is primarily geographically
    descriptive of them, except as indications of
    regional origin may be registerable under section
    4 15 USC 1054
  • Must acquire 2nd meaning for mark to be
    protectable See 1052(f)

11
Review - Registration of Marks
  • 15 USC 1052(e) - Cannot register a mark which
  • (3) when used on or in connection with the goods
    of the applicant is primarily geographically
    deceptively misdescriptive of them
  • 2nd meaning wont help See 1052(f)

12
Review - Registration of Marks
  • 15 USC 1052(e) - Cannot register a mark which
  • (4) is primarily merely a surname
  • Rule is the "primary significance of the mark to
    the purchasing public" as that of a surname?
  • Factors
  • (i) the degree of surname rareness
  • (ii) whether anyone connected with applicant has
    the surname
  • (iii) whether the term has any recognized meaning
    other than that of a surname and
  • (iv) the structure and pronunciation or look and
    sound of the surname.
  • Must acquire 2nd meaning for mark to be
    protectable See 1052(f)

13
Review - Registration of Marks
  • 15 USC 1052(e) - Cannot register a mark which
  • (5) comprises any matter that, as a whole, is
    functional.
  • 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. Qualitex v. Jacobson
    (US S. Ct. 1995) 286
  • 2nd meaning wont help. See 1052(f)
  • Compare and accord this w/ patent law

14
Review - Some Notable Merely Descriptive Marks
  • Numbers, letters, model numbers
  • General rule Not distinctive not registerable
  • How to protect these marks?
  • Acquire 2nd meaning
  • A grade or style designation may be distinctive,
    IF it also primarily designates the source of the
    good.
  • If not how to protect these marks?
  • Acquire 2nd meaning

15
Loss of Trademark Rights
  • Genericism (a verb)
  • A word is generic if? (see your notes)
  • Bayer Co. v. United Drug Co. (SDNY 1921) 312
    (Judge Learned Hand )
  • The relevant consumer gets to decide what
    they will call a product if a word is the name
    of the thing, or an identifier of source.
  • Must educate the customer, competitors, even
    employees
  • Purpose of the genericism doctrine is to permit
    competitor to call their competing goods by their
    commonly-known name

16
Loss of Trademark Rights
  • Implementing the Standard Survey Evidence
  • King-Seeley Thermos Co. v. Aladdin Industries
    The thermos case
  • Aladdin contended A generic descriptive word in
    the English language as a synonym for vacuum
    insulated container
  • despite its efforts to protect the trademark,
    the public has virtually expropriated it as its
    own. The word having become part of the public
    domain, it would be unfair to unduly restrict the
    right of a competitor of King-Seeley to use the
    word.

17
Loss of Trademark Rights
  • Implementing the Standard Survey Evidence
  • DuPont
  • Ask the right questions!
  • Dont ask - whether the principal significance of
    the name supplied was its indication of the
    nature or class of an article
  • Do ask - whether the principal significance of
    the name supplied was an indication of its origin.

18
Loss of Trademark Rights
  • Genericism and 2nd meaning
  • defacto secondary meaning when the public
    associates the generic term with a single source.
  • E.g., LITE for beer Millers ads give me a
    LITE
  • Still not a mark despite the acquired secondary
    meaning.
  • AOL v. ATT
  • Youve got mail consistently w/ that phrases
    common meaning
  • Allowing TM rights would stop others from using it

19
Loss of Trademark Rights
  • Abandonment
  • 15 USC 1127 Lanham Act 45 (N.B. error in
    text)
  • Abandonment of mark. A mark shall be
    deemed to be "abandoned" when either of the
    following occurs
  • (1)When its use has been discontinued with
    intent not to resume such use. Intent not to
    resume may be inferred from circumstances. Nonuse
    for three consecutive years shall be prima facie
    evidence of abandonment. "Use" of a mark means
    the bona fide use of that mark made in the
    ordinary course of trade, and not made merely to
    reserve a right in a mark.
  • (2) the owners conduct causes the mark to
    become generic

20
Loss of Trademark Rights
  • Silverman v. CBS, Inc. (2nd Cir. 1989) 356

21
Loss of Trademark Rights
  • Abandonment
  • Silverman v. CBS, Inc. (2nd Cir. 1989) 356
  • Whats the meaning of intent not to resume?
  • What were some of CBSs minor activities that
    it asserted kept its mark alive?

22
Loss of Trademark Rights
  • Assignment in Gross
  • Clark Freeman v. Heartland (SDNY 1993) 368

23
Loss of Trademark Rights
  • Assignment in Gross
  • An assignment "in gross" is an assignment without
    the goodwill of the mark
  • What is goodwill?

24
Loss of Trademark Rights
  • Naked Licensing - agreements to allow use of the
    name without adequate supervision and quality
    control
  • 15 USC 1127 Lanham Act 45 (N.B. error in
    text)
  • Abandonment of mark. A mark shall be
    deemed to be "abandoned" when either of the
    following occurs
  • (2) the owners conduct causes the mark to become
    generic

25
Loss of Trademark Rights
  • Failure to Police the Mark
  • Policy for requiring mark owners to policy their
    mark if there are numerous products in the
    marketplace bearing the alleged mark, purchasers
    may learn to ignore the mark as a source
    indication this causes the mark to lose its
    significance as a mark

26
Loss of Trademark Right
  • Failure to Police the mark

27
Loss of Trademark Right
  • Failure to Police the mark
  • What about a mark owners agreement to allow an
    infringer to sell-off the remaining goods
  • See Exxon Corp. 376

28
Next Week
  • Chapter 6 Infringement
  • Youve finished the bread and salad now it time
    for the meat and potatoes
  • Read
  • AMF Inc. vs. Sleekcraft Boats (N.B. Read this
    case carefully!)
  • Pgs. 395-400, 407-421, skim Playboy vs. Netscape
    on pgs. 421-423, read Playboy vs. Netscape
    (starts on suppl. pg. 80), pgs. 424-429
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