Download - Intellectual Property Boston College Law School March 31, 2008 Trademark - Distinctiveness
Intellectual Property
Boston College Law School
March 31, 2008
Trademark - Distinctiveness
Overview
• Requirements– (1) Distinctiveness– (2) Use in commerce– Registration not required (although benefits)
• Duration– As long as used and distinctive
• Rights– Protect against consumer confusion– Protect against dilution (for famous marks)
Categories of MarksLess Protection More Protection
GenericDenotes generalclass of products
Unprotectible
Shredded Wheat,Aspirin, Thermos,Cellophane, Car,
Computer
ArbitraryBears no relation
to product
AutomaticallyProtectible
DescriptiveDescribes some
characteristic/quality
Protectible ifsecondary meaning
SuggestiveSuggests somecharacteristic
AutomaticallyProtectible
Policy Considerations
Distinctiveness
Generic Descriptive Suggestive Arbitrary
Low
HighTrademarkSignificance
Costs fromProtection
UnprotectibleSecondaryMeaning Protectible
Zatarains v. Oak Grove
Secondary Meaning• Definition: primary significance of the term in the
minds of the consuming public is not the product but the producer
• Factors– Consumer surveys
– Amount and volume of advertising
– Volume of sales
– Length and manner of use
– Direct consumer testimony
CategorizationsTrademark
• TENDER VITTLES (cat food)
• ROACH MOTEL (roach trap)
• CHAP STICK (lip balm)
• VISION CENTER (optical store)
• BEER NUTS (snack food)
• FAB (laundry detergent)
• BOLD (laundry detergent)
• STRONGHOLD (nails)
• CITIBANK (banking services)
• NUTRASWEET (sweetner)
Category
• Descriptive
• Suggestive
• Descriptive
• Descriptive
• Descriptive
• Arbitrary
• Suggestive
• Suggestive
• Suggestive
• Descriptive
Secondary Meaning
• Marks Requiring Secondary Meaning– Descriptive Marks– Surnames– Geographical Marks (some)– Trade Dress and Product Design?
Trade Dress & Product DesignTrade Dress Product Design
Two Pesos v. Taco Cabana
Two Pesos v. Taco Cabana505 U.S. 763 (1992)
• Findings of the District Court– Taco Cabana has an identifiable trade dress– The trade dress is non-functional– The trade dress is inherently distinctive– The trade dress has not acquired secondary
meaning
Inherently Distinctive?
Inherently Distinctive?
Policy Considerations
Distinctiveness
Generic Descriptive Inherently Distinctive
Low
HighPotential forConfusion
Harm toCompetition
Trade Dress,Trademarks
ProductDesign
Example - Review
Administrative Details
• Next Assignment– Read through VI.C.2 – Priority