Understanding Trademarks and Brand Protection

Trademarks Defined

• A trademark is any word, name, symbol, or device, or combination thereof, used to identify and distinguish goods/services and indicate their source.
• Trademarks can include company names or individual products (e.g., "Ford" and "Mustang").
• Trademarks answer the question, "Who made this?".
• Device is very broad.

Legal Tools to Prevent Infringement

• Trade secrets protect confidential information (state/federal).
• Copyrights protect original works of authorship (federal).
• Patents protect inventions (federal).
• Trademarks distinguish goods/services (federal/state).
• Rights Against Unfair Competition prevent false or misleading information (federal/state).

Brands vs. Marks

• Brands encompass tangible and intangible elements: mark, logo, design, concept, image, and reputation.

Goals of Trademarks

• Protect the reputation of sellers and their investments.
• Trademarks are not meant to provide non-reputational benefits.
• Prevent consumer confusion and deception about a product's origin.
• Promote market competition by enabling non-misleading advertisements.
• Establish a firm's reputational value.

Trademark History

• Early uses of trademarks involved product placement.
• Bass Ale had the first trademark registered in the UK in 1876.
• Modern U.S. trademark law was enacted in 1946 (Lanham Act).
• Word marks can be protected, similar to symbol marks.
• Trademark owners prevent mark usage likely to cause consumer confusion.

Sources of Trademark Law

• Trademark rights in the U.S. arise from use in commerce.
• Enforcement methods exist.
• Common law rights don't require registration: the scope is geographically limited.
• State statutory registration systems: the scope is geographically limited.
• Federal statutory registration systems: the scope is national.
• Unregistered marks can be protected federally.
• Registration has numerous benefits.

Types of Marks

• Trademarks: Words, names, symbols, or devices distinguishing goods from one another.
• Service Marks: Identify services rather than goods (e.g., McDonald's).
• Certification Marks: Certify goods/services with specific characteristics (quality, accuracy, union labor, etc.).
  • Cannot certify own goods/services.
  • Must apply consistent standards.
  • Must be objective and non-discriminatory.
• Certification Marks: Geographic origins reveal where the product comes from.
• Certification Marks: Good or Services characteristics describe the product or services themselves.
• Certification Marks: Work or labor group indicates manufacturing by a union/organization.

Benefits of Certification Marks

• Owners act as third-party quality certifiers for products/services.
• Owners have complete control and can license the mark to those meeting standards.
• Licensing may involve a one-time fee, ongoing royalty, or no monetary compensation.
• Owners are protected from others using similar marks.

Collective Membership Marks

• Indicate membership in an organization.

Generic Terms

• Trademarks protect reputational damages, not non-reputational advantages.
• A store cannot prevent others from using the generic term "Shoes".
• Generic terms cannot be trademarks standing alone.
• It would unfairly disadvantage others.
• Generic terms can be included within trademarked names, but those terms are not protected.
• Genericide: Mark becomes generic for the goods/services like "Escalator", "Dry Ice," etc.

Elliot v Google

• Elliot sought to cancel the Google trademark, claiming "google" is a generic term for internet searching.
• "Genericide" occurs public appropriates trademark and uses it a generic name irrespective of its source.
• Standard for Determining Genericness: Does the word mainly identify "Who" or "What?".
• Elliot's survey asked people what word/phrase they'd use to tell a friend to search the internet.
• Over half used "google" as a verb
• Trademarks become generic when their primary significance becomes the name for a type of good/service, irrespective of its source.

Trademark Law Requires Use

• Congressional power to create trademark legislation.
• "Use in commerce" is needed to obtain trademark rights.
• Registration alone does not confer trademark rights.
• The first firm to use a mark generally gets priority.
• Unused marks can be considered abandoned.

Lanham Act Definition of "Use in Commerce:"

• "Use in commerce" involves bona fide use of a mark during ordinary trade, intending to reserve right in mark.
  • Mark is placed on goods/containers/displays/tags.
  • Mark is placed on associated documents if placement is impractical.
  • The goods are sold/transported in commerce.
  • Mark is displayed in the sale or advertising of services, and the services are rendered in commerce.

Aycock Engineering v. Airflite

• Airflite petitioned to invalidate Aycock's trademark registration.
• The Trademark was invalidated, due to not showing "use in commerce".
• Aycock intended to allow solo passengers to arrange shared chartered flights.
• Aycock never marketed service or gave public access to toll-free reservation numbers.
• Trademark requires "open and notorious public offering of the services to those for whom services are intended".
• Aycock never "used" the mark and that registration was improper.

Use as Trademark Standard

• A trademark must serve its source-identifying purpose to function as so.
• Ask: Do consumers see the alleged mark as identifying a source?
• If mark usage as origin indication isn't immediately obvious, its probably not a TRADEMARK.

Hollister v American Eagle

• Hollister falsely claimed to be founded in 1922.
• It claimed trademark rights to the number 22.
• AEs use of '22' prompted the lawsuit.
• Rule Requires proof that the plaintiff actually used the designation to accrue trademarking rights.
• The defendant must have also used the expression as a trademark.
• If the designation serves only as decoration, there is no trade mark infringement.
• Hollister failed to give satisfactory evidence of using "22" as trademark so ruling went to AE.

Use as Trademark- Decorations

• Must be identifying source or decorative?
• The logo on the tag is that of a trademark.

Use as Trademark - Word Marks

• Common indicators for word marks include:
  • Significant font size.
  • Capitalization.
  • Print style.
  • Color.
  • Prominent placement.

Distinctiveness Requirement

• Distinctiveness: the trademark's power to identify the products of one merchant and set them apart from those of others.
• Marks can't be protected without being distinctive.
  • The marks are either distinctive (inherently) at first or gain the necessary reputation later on.

Acquired Distintiveness

• Consumers know its part of X company due to sales.

Distinctiveness Standard

• Marks must be protected if distinctive.
• Marks have inherently distinctive nature, so their services are easily identified, even if consumers don't know it.
  • Swordplay donuts.
  • The term is mainly source identifying to he consumers, also known as acquired disctinctiveness. Best Buy, Delicious cookies.

Distinctiveness Levels

• Fanciful: invented with trademark in mind.
• Arbitrary: ordinary, non-descriptive.
• Suggestive: hints at character.

Distintiveness - Fanciful Marks

• Fanciful marks are created words or letter/number combinations and should be nothing other than the trademark.
• Trademarking is easy for fanciful marks (can be anything). EX- Adidas, Google, and Microsoft.

Distintiveness - Arbitrary Marks

• Not descriptive marks
• Easily trademark due to natural distinctiveness.

Distintiveness - Suggestive Marks

• Indirect descriptions of the products.
• Inherently distinctive trademarks (require little thought).

Review of Distinctiveness

• The trademark needs to be something to show a relevancy and have primary significance.

Trademark Requirement

• They do not need to know that all companies are recognizable and just to clarify its there.

Distintiveness

• Source is recognizable
• Used for a certain reason
• Hints the meaning with thought

Descritive Marks

• Weather channels product description
• Yes industry wise They took on it from secondary use .

Descriptive Marks - Geography

• State what region goods or services may come from.
• Could these words be source identify of an industry?
• Is one okay to use? YES

Descriptive Marks - Surnames

• They are commonly use in marketing.

Secondary Meaning

• Descriptive marks are only safeguarded once people recognizes name. Meaning customers are aware of the mark rather than as a generic term.

Proving Secondary Meaning

• Direct and indirect marketing can prove
• Exclusivity length
• How strong mark is. Customers may like that name you make.

Suggestive v Descriptive

• Suggestion is needed.
• To know there brand
• Do companies promote there way . They should promote brands.

Generic Must compete. Without saying shoes.

Tiffany & Co v Costco

The jeweler Tiffany argued cosco was not a brand. A plain set ring is just with gemstones attached. Used copy instruction to ring. A ruling overturned it . Reasonable that jury may fine it can cause risk

Distinctiveness of Marks

Classification and protection for marketing the best version of what you could possibly make.

Zatarains OG Smokehouse

Trade Market infringes with the terms and conditions involved. They need to have the correct procedures and products need to be protected by trademark.

Term and services

Services that are unique and has a fair background to follow through. The mark is used to prove a mark

Things Can be Registered

Symbols are the marks. Marks can be stylist.

Things the can be registered

Drawings can registered in other forms

Trade Dress

That should be easy if it's a style code

Two Pesos v. Taco Cabana

Include what the restaurant looks on side also trade dress must be protected if descriptive

Trade Dress Standards Look that it is marked right

Trade Dress and Color

• Secondary meaning is an advantage to making it non functional.

Review

• Its a must have in order.
• Trade to register
• You need to first know what you want to trade mark.

Pim Brand v Haribo What you want and can do with a brand, but a point is that it needs to be functional so it should have the shape for candy

Functional Features

• Rules should protect it as a must. _ All has to be functional with all services you offer.
• And every aspect of it must give reasons.
• Its all about telling you what is this with product .
• So people can be known.

More Examples

Slogans

• The registered needs a brand name that is trademark.
• With that been said the brand marks are that must not have generics.
• You give the brand a great reason.
• That helps give the brand Quality craftsmanship.
• Sound Marks

Brand can be arbitrary with a word

With examples of MGM With the proper analysis Scent Makes A brand that if the products sounds like they trademarks it!

• Must be use what scents and aromas that can trademark an industry.

Marks

Touch mark can be easy Distintive and clear

The mark must be easy to registered in things like deception and illegal activity.

Disparaging and Scandals

In the long run is what goes. Constitutional right.

Trade Mark Infringement

• Its the general act to say and do with proper ownership.

All must be

Trade and state.

Common Law Trademarks

With use You need law trademark

Priority

• The more it extends over line the more harder to be the other point.

Common and Fedal Registered Rights

• Rule has consqeces to be protected.
• As long that it meets your criteria.
• Federal Two to register the comperision side line.

To Review

• The one it adds to it helps a source of marketing and sales.
• Create all this great reason.

Attorney general gets chance of registration of brand.