A User’s Guide to Trademarks
Introduction to Intellectual
Property Law & Policy
Professor Wagner
Lecture Agenda
Trademark Economics
Trademark Protection of Brands
Trademark Protection of Product Designs
Trademarks and Functionality
Trademark Economics
What is a Trademark?
An identification of source.
What is a Trademark?
An identification of source.
Words, images, design, packaging.
Also: ‘look and feel,’ colors, sounds, smells (maybe).
… anything capable of “identifying source” …
Why Protect Trademarks?
In patent and copyright, we protect to encourage
more of the subject matter: more inventions,
more expressive works.
Trademarks: not this reason!
Why Protect Trademarks?
Source Identification
Reduces Consumer Search Costs
Lower Consumer Search Costs
Repeat/Searching Customers
Repeat/Searching Customers
Incentives to Invest in Quality
Why Protect Trademarks?
Source Identification
Repeat/Searching Customers
Reduces Consumer Search Costs
Incentives to Invest in Quality
Why Protect Trademarks?
Similar to Patents and Copyrights, Trademarks
encourage investment in a social good.
The mechanism is less direct, but the goal is
generally the same.
Trademark Basics
Types of Trademarks
Trademarks, Trade Names, Service Marks
Trademarks: word, name, symbol, or combination that identifies and
distinguishes goods.
Service Marks: word, name, symbol, or combination that identifies and
distinguishes services.
Trade Names: word, name, symbol, or combination that identifies a business
(rather than a product or service) [not registrable Federally]
Certification and Collective Marks
These marks are not like ordinary marks: they
designate something other than the source of the
product/service.
Certification marks: used by someone other than the
owner, and designates that the product or service
meets certain criteria.
Collective marks: used by members of a collective or
group, to designate membership in that group.
Color, Sounds, Smell
Trade Dress and Product Design
The design and packaging of materials used to sell a product, or
even the design of the product itself.
Type of Marks and Protection
Words and
Symbols
Trade Dress
Product
Packaging
Can be inherently
distinctive
Product Design
Colors
Sounds
Smells
Must always show Must always show Must always show Must always show
secondary meaning secondary meaning secondary meaning secondary meaning
Classified according
to hierarchy
Functionality Limits Functionality Limits Functionality Limits Functionality Limits Functionality Limits
Distinctiveness: The Strength of a Mark
The Hierarchy of Marks
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
[the inquiry: capacity for source identification]
The Hierarchy of Marks
Kodak, Exxon
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
[the inquiry: capacity for source identification]
The Hierarchy of Marks
Kodak, Exxon
Apple Computer
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
[the inquiry: capacity for source identification]
The Hierarchy of Marks
Kodak, Exxon
Apple Computer
Citibank, Greyhound
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
[the inquiry: capacity for source identification]
The Hierarchy of Marks
Kodak, Exxon
Apple Computer
Citibank, Greyhound
Tender Vittles
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
[the inquiry: capacity for source identification]
The Hierarchy of Marks
Kodak, Exxon
Apple Computer
Citibank, Greyhound
Tender Vittles
Aspirin, Super Glue
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
[the inquiry: capacity for source identification]
The Hierarchy of Marks
Kodak, Exxon
Apple Computer
Citibank, Greyhound
Tender Vittles
Aspirin, Super Glue
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
“Inherently Distinctive”
Protectable w/ Secondary
Meaning
[the inquiry: capacity for source identification]
Not protectable
The Hierarchy of Marks
Kodak, Exxon
Apple Computer
Citibank, Greyhound
Tender Vittles
Aspirin, Super Glue
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
“Inherently Distinctive”
Protectable w/ Secondary
Meaning
[the inquiry: capacity for source identification]
Not protectable
The Hierarchy of Marks
Kodak, Exxon
Apple Computer
Citibank, Greyhound
Tender Vittles
Aspirin, Super Glue
Fanciful
Arbitrary
Suggestive
Descriptive
Generic
“Inherently Distinctive”
Protectable w/ Secondary
Meaning
[the inquiry: capacity for source identification]
Not protectable
“Secondary Meaning”
The function of a mark in identifying source
(among the relevant public)
“Apple”’s primary meaning is a tree-growing fruit.
Its “secondary meaning” is an identification of the tech company.
“Secondary Meaning”
If a mark is not “inherently distinctive” then the TM owner must
show evidence of secondary meaning for protection.
Long Use of the Mark
Advertising Expenditures
Direct Evidence of Distinctiveness
Survey Evidence
Trademarks and Functionality
Patent
Trademark
Design Patent
(Trade Dress/Product Design)
Difficult to Get
Very Easy to Get
Easier to Get
Strong and Broad Protection
Potentially Strong Protection
Strong but Narrow Protection
Term-Limited
Unlimited Term
Term-Limited
Functional
Inventions
Source Identification
Design Elements
TrafFix Devices v. Marketing Displays (2001)
TrafFix obtained patents
on a dual-spring mechanism.
MD started making similar dual-spring devices after
patents expired.
TrafFix argues that dual-spring design is trade dress,
and has acquired secondary meaning.
TrafFix Devices v. Marketing Displays (2001)
No protection is available in TM for design that “is
essential to the use or purpose of the article or if it
effects the cost or quality of the good.”
Dual springs serve important functional purposes.
[ And … the patents prove it! ]
What is a ‘Functional’ Design?
Functional
(especially easy for viewers to see)
Aesthetic Functionality
What if the aesthetics drive
the consumer demand?
This design is not ‘functional’ in the ordinary
sense, but competitors would be at a nonreputational disadvantage if they couldn’t use it.
[ No protection. ]
Can a red sole be trademarked?
Step 1: Only if secondary meaning is shown.
Step 2: Only if not ‘functional’
Red shoes, generally, are likely ‘aesthetically
functional.’ But red soles may not be.
Louboutin v YSL (2nd Cir. 2012)
Step 1: Only if secondary meaning is shown.
Step 2: Only if not ‘functional’
Contrasting red soles can be protected.
Louboutin v YSL (2nd Cir. 2012)
Can be protected.
Can’t be protected.