Week 4: Trademark 1 – Overview

trademark

Week 4: Trademark 1 – Overview

“Trademark Economics … Trademark Protection of Brands … Trademark Protection of Product Designs … Trademarks and Functionality”
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Summaries

  • Week 4: Trademark 1: Overview > Trademark Economics > Introduction to Trademarks
  • Week 4: Trademark 1: Overview > Trademark Protection of Brands > Categories of Marks
  • Week 4: Trademark 1: Overview > Trademark Protection of Product Designs > Trade Dress and Product Design
  • Week 4: Trademark 1: Overview > Trademark Protection of Product Designs > Hierarchy of Marks
  • Week 4: Trademark 1: Overview > Trademarks and Functionality > Trademarks and Functionality
  • Week 4: Trademark 1: Overview > Trademarks and Functionality > Limitations on Protection
  • Week 4: Trademark 1: Overview > Trademarks and Functionality > Aesthetic Functionality

Week 4: Trademark 1: Overview > Trademark Economics > Introduction to Trademarks 

  • Today we’re going to start our section on trademarks, and start with A User’s Guide to Trademark Law.
  • The agenda for this lecture is to first talk a little bit about trademark economics, because as we’ll find out, what trademarks is based on, the economic theories that underlie the trademark system, is actually pretty different than the patent and copyright system that we’ve talked about already in this course.
  • Then we’re going to move on and talk about trademark protection of brands, and how trademark works that way, some of the basic ideas about trademark.
  • Then we’re going to talk about how trademark can protect product design, which it does very often, and it’s an important and powerful part of the trademark system.
  • Then we’re going to talk about probably the most important limit on trademark protection, which is functionality.
  • The basic idea here is that trademarks cannot cover, cannot protect anything that’s functional in nature.
  • Let’s begin with a look at trademark economics.
  • So what is a trademark? So a trademark is an identification of source.
  • So it’s different than copyrights and trademarks where- or sorry, copyrights and patents, where, when you have a passion for example, you know it’s, in a sense, a thing.
  • Trademarks are very broad in the scope of what they can be.
  • So they can be words, a trade name, a product name, a company name that’s made up of words can be a trademark.
  • Indeed trademarks even go beyond just those basic categories.
  • The look and feel, for example, as we’ll talk about in a few moments, the look and feel of a restaurant can be trademarked.
  • If you have a color that identifies the source of a particular product, that be trademark.
  • The NBC chime is a famous example of that, of a trademark sound that conveys source, conveys identity.
  • Smells could be, not a lot of examples of smells being trademarks, but there’s no particular reason that even a smell couldn’t be a trademark if it conveys the identification of source to the consuming public.
  • So the idea here, and what I hope you take away from this, is there anything they can convey source, can convey in a consumer’s mind the source of the product or service in question, can be a trademark.
  • So why do we do this? Why do we have this law of trademarks? Because again, they don’t protect ideas, that’s what patent law does.
  • It’s not that we want more branding, it’s not that we want more marketing out there, there’s a different reason that we protect trademarks.
  • The fact that I now know that particular brands, particular trademarks associate with particular product characteristics, such as quality, or maybe price, or something else, any particular value that might be, sort of bound up in the trademark idea.
  • So that’s really, at the end of the day, what we’re doing with trademark law, is that we are trying to encourage companies and purveyors of surpluses to invest in product quality.
  • We want to encourage competition for quality products, for example, or products that are associated with good customer service, maybe products eco-friendly.
  • All of those types of product characteristics are often non-visible, and would be otherwise quite difficult for companies to compete on, unless they could identify themselves to repeat customers as the identification of source.

Week 4: Trademark 1: Overview > Trademark Protection of Brands > Categories of Marks

  • So when you think of trademarks, the first question that you might think about is what types of things can be trademarks.
  • They’re really sort of multiple categories of what we would classify, and we generally lump together trademarks.
  • So trademarks themselves are words, names, symbols, or a combination of those that identifies and distinguishes goods.
  • Now, from a legal perspective, trademarks and service marks are treated essentially the same.
  • The protectability, the validity, the infringement analysis is the same between trademarks and service marks.
  • One of the interesting things about trademark law and one of the ways it distinguishes itself from patents and copyright, which we’ve already talked about in this course, is that trademarks are sort of a joint venture between state and federal governments.
  • The federal government has a law of trademarks, and that’s primarily what we’re going to be talking about during our section on trademarks here.
  • This is one example, which is trade names, many states have a system of registering and protecting the names of businesses in that state in a way that’s very similar to trademark law at the federal level.
  • One set of marks to talk about are certification and collective marks.
  • So certification marks are used by someone other than the owner, and they designate that the product or service meet certain criteria.
  • So an example of certification mark would be, for example, the underwriters listing, underwriter laboratories listing, where most electrical goods you see these days have a certification that they’ve been tested as being safe by underwriter laboratories.
  • Again, that’s a certification mark, and what that does is it certifies that the product that bears that mark- it’s not that it emerges from the owner of that mark, it’s that the owner of that mark has certified that it meets certain criteria, here the standards for kosher food.
  • The collective mark, a couple of examples of that, beef producers have a collective where they as a group, have a mark that indicates for themselves if they are members of that collective.
  • So it’s a little bit of a hybrid between a collective mark and a certification mark.
  • Now, as far as trademark law goes, we treat these marks basically the same as regular trademarks in terms of validity and infringement.
  • Colors can be certified as trademark, can be registered as trademarks.
  • Qualitex can protect that as a trademark, and they can then prevent other people from shipping, or producing, selling dry cleaning services or dry cleaning pads with the same color.
  • NBC has the familiar chime, which indicates when you hear the chime that the source of the broadcast, of the television show, of whatever it is that the chime proceeds is somehow associated with NBC. So that, again, is a protectable mark because what it does is it creates an association between the mind of the relevant consumer and the underlying source of the good.

Week 4: Trademark 1: Overview > Trademark Protection of Product Designs > Trade Dress and Product Design

  • Trade dress and product design is another aspect of trademark.
  • You can get protection in trademark law for design and packaging of materials used to sell a product.
  • Under trade dress law, they argue- and have successfully argued in many cases- that things like the rounded rectangle shape, the square icons, the gridlike pattern on the home screen- those types of product features, those types of product design, have in themselves an association with the underlying source of the product- here, Apple Computer.
  • Another example of trademark protection of product design would be the classic, and indeed iconic, Coca Cola bottle.
  • The shape of the bottle is something that is a unique aspect of the product design.
  • Because that’s the case- because people will connect the design of the bottle with the underlying source, the Coca Cola Company, that is a protectable feature, protectable part of product design, and therefore classified as trade dress under the law.
  • Again, trade dress really treated the same as trademark law for purposes of infringement and so forth.
  • One of the more interesting recent aspects and recent ways that trademark law has emerged is look and feel protection.
  • This is a Supreme Court case involving Taco Cabana, which is a Mexican restaurant in the southwestern United States with a distinctive product design, in terms of the look and feel of the interior of the restaurant.
  • The entire package, the look and feel of that restaurant, was held by the Supreme Court to be a protectable feature of the product that the restaurant was selling, and therefore trademarkable, protectable under trademark law, just like any other mark.
  • The packaging of a product can be protectable under the law of trade dress.
  • Product design is different than product packaging, which is you always have to show what’s called secondary meaning in order to protect your product design.
  • This distinction between product packaging and product design has emerged over the last 10 or 15 years in a series of Supreme Court cases, where the Supreme Court has said that product packaging, because it is not an inherent part- because it’s not sort of inextricably linked to the actual underlying product itself, they feel like- the court feels like- it’s more free, it’s more possible to protect that under trademark law.
  • Product design, on the other hand, raises some more concerns.
  • Because if we allow companies to protect their designs of their products under trademark law, we are potentially one, encroaching on patent laws regime.
  • The idea behind trademark law is to protect the reputational concerns of the company, not so much the products themselves if.
  • You have an innovative product, you can use patent law, for example, to protect the innovations in your product.
  • What we want to protect with trademark law is the reputation of the source of the product- of the association between the source of the product and the reasonable consumer’s mind.

Week 4: Trademark 1: Overview > Trademark Protection of Product Designs > Hierarchy of Marks

  • We have a very clear classification of strength in marks, as follows.
  • At the top level are fanciful marks, then arbitrary, then suggestive marks, descriptive marks, and generic marks.
  • What do we mean by a fanciful mark? Well the easiest way to think about this is through an example.
  • So fanciful marks are ones that are entirely made up- Kodak, Exxon.
  • So we are confident from a legal perspective that everything that a fanciful mark has imbued in it is due entirely to the investments, the reputation of the goodwill of the underlying source.
  • So for that reason, they’re at the top of the heap as far as protectable marks.
  • At the next level, but still very strong, are arbitrary marks.
  • It’s a strong mark, and we treat it as such.
  • A suggestive mark is one that is strong, but it suggests the underlying product in some way.
  • Greyhound is another example, where you would associate high-speed, long-distance travel with greyhounds, and therefore with the underlying product- with the product with which the mark is associated.
  • I don’t want to suggest that they’re not good marks.
  • They’re not as good as the fanciful marks and the arbitrary marks, because we’re not quite as sure, from a legal perspective, that whatever the consumer has in his or her mind about financial products or about bus travel doesn’t get wrapped up in the way that the mark suggests the meaning.
  • Because the consumers in these suggestive mark contexts are being suggested what the linkage is, it’s a little bit less strong mark.
  • A descriptive mark is one that is much more direct in making the linkage to the consumer in terms of what it is that the product is all about.
  • So Tender Vittles for cat food is a descriptive mark because it is describing aspects of the product or describing the product itself.
  • Generic is a mark that in fact can’t be used as a mark at all.
  • So at the top of the heap here, in the hierarchy of the mark, are these fanciful marks that are made-up words.
  • The arbitrary marks are somewhat less strong, suggestive a little bit less strong.
  • Descriptive marks are not particularly strong, although they can be protected in some circumstances.
  • One of the interesting things about trademark is that the generic marks are those marks which effectively became too strong.
  • You can get so big, so good, your mark can be so ingrained in the mind of the consumer that you will in fact lose it entirely.
  • Therefore the mark Xerox, even though it is fanciful, has nothing to do- it was entirely made up.
  • Even though it’s a fanciful mark at some level, that we could lose distinctiveness in the mind of the consuming public, and therefore become generic and no longer protectable.
  • So in an interesting way, Xerox was trying to in fact weaken, to some extent, the strength of its mark by encouraging people to use other words for typical products and activities, such as photocopying, in order to avoid the classification of their mark as a generic mark.
  • Arbitrary, and suggestive marks are the ones that we call inherently distinctive.
  • That’ll become more important in a moment when we talk about some differences between, for example, word marks, trade dress, product design.
  • It means that you don’t have to prove anything about the association between these marks and the underlying source.
  • The reason, as I said, that people think of Kodak, any sort of thinking they make about Kodak, we are entirely confident that that’s because of the investments that Kodak has made in the mark.
  • The descriptive marks are not inherently distinctive, but they can be protected with secondary meaning- and more about what secondary meaning is in a minute.
  • That’s important because that suggests that you don’t automatically get protection for a descriptive mark.
  • You have the burden as the mark owner, as the potential mark owner, of proving that your descriptive mark meets the standards for secondary meaning.
  • Then generic marks, as we talked about a minute ago, are simply not protectable at all.
  • Again, one of the interesting things about generic marks is they are often start out as inherently distinctive marks, and then they go on to become generic because of, essentially, appropriation by the consuming public.
  • Again, the ultimate inquiry here, what we’re really interested in, is the capacity for these marks to identify the underlying source of the product.
  • So what’s secondary meaning? So secondary meaning is what we describe as the function of the mark and identifying the source to the relevant public.
  • It’s the linkage in the consumer’s mind between whatever the mark is and the underlying source.
  • Those are the two most important factors that courts will look for to try and figure out whether your mark has secondary meaning.
  • That’s what secondary meaning proof is all about, is coming to court, and you have to show long use of the mark, show advertising expenditures.
  • Survey evidence, you could potentially question consumers, do a broad survey of the relevant consuming public, to see if they have associations between the underlying source and the mark itself.
  • Again, the most important ways are really to show that you’ve been using the mark for a long time with some significant advertising expenditures.

Week 4: Trademark 1: Overview > Trademarks and Functionality > Trademarks and Functionality

  • Many of you may have seen this in stores, which is a new design for a milk jug.
  • This design is square- more square- it’s actually rectangular.
  • Instead of the rounded design that we’re all used to, it has a flat top, which means it can be packaged in very different ways, and indeed, stacked, and takes up less room.
  • There’s a number of efficiencies surrounding this design, as well as it being distinctive.
  • So if there are innovations that are new, novel, non-obvious, for example, that you can fully describe, that box would be for you in terms of protecting your new design for a milk jug.
  • There’s also an aspect of patents we haven’t really talked about.
  • It’s actually different than the traditional patents, but it’s a design patent.
  • Design patents are a form of patent that are intended specifically and only for product designs.
  • Basically, you draw a picture, and you get the patent on that picture- nothing more, nothing less is how design patents work.
  • Because one of the things that the new milk jug has is clearly a design of a product that is novel, potentially non-obvious.
  • The design itself is something that you may want to protect.
  • This would be through the concept of trade dress or product designs we’ve talked about a little bit already.
  • The idea here would be that you could try and protect aspects of the milk jug using trademark law as trade dress- so very similar to, for example, the Coca-Cola bottle that we said was a protectable trademark- if you can show that the consumers identify, in their mind, the underlying source of the milk jug or the milk inside it with the design of this new jug.
  • So the patent box has a particular set of features.
  • So you have to show that you’ve made a real advance in the marketplace or in the area of technology that you’re seeking the patent for.
  • Patents are also term limited, so they have strong protection, but that protection expires at a certain date 20 years after the day you file.
  • Design patents are a little bit similar to regular patents.
  • The protection of a design patent can be quite strong, but it’s extremely narrow.
  • Traditionally, we thought of design patents as really covering only the picture that’s been drawn as part of the patent application.
  • What design patents have is very strong protection that’s very, very narrow in scope.
  • Much like regular patents, design patents are term limited.
  • You certainly have to show, in the case of product design, secondary meaning.
  • In either event, it’s a much, much easier hurdle to overcome than either patents or design patents, and in particular, the patents.
  • You can prevent people from using your trade dress or your product design to compete with you.

Week 4: Trademark 1: Overview > Trademarks and Functionality > Limitations on Protection

  • So marketing displays started making very similar dual spring devices.
  • It turns out there were particular advantages to having the dual springs, both in terms of reliability, in terms of cost savings.
  • Instead of one really large spring, you could have two smaller springs.
  • They created very strong stability along one dimension and allowed flexibility along another dimension.
  • TrafFix was arguing that this dual spring design became distinctive.
  • That, essentially, the consuming public, the relevant public, started to associated this dual spring designed with TrafFix products, rather than with any functional aspects of the design itself.
  • What the court says here is that there is no protection available- in trademark, anyway- for the design that is essential to the use or purpose of the article, or if it affects the cost or quality the good.
  • This is the definition the court gives about what we mean by a functional limitation on copyright.
  • Those are non-reputational aspects of what the design is and should be available for other people to compete with you on.
  • So the dual springs, here, had important functional purposes.
  • Because the fact that they had been able to patent this innovative, dual spring configuration meant that there was indeed, at least according to the patent law, real functional benefits to having the dual springs.
  • They couldn’t later claim that what the dual springs were all about was just association between the product and TrafFix itself.
  • So what’s a functional design? So, one example of this is the line that you see, probably every Sunday, when you watch football- or Saturday, if you watch college football- that’s superimposed on the field showing the first down marker.
  • That has been held in court cases to be a functional design.
  • The reason it’s functional is that even though there’s a lot of colors you could choose.
  • On a screen shot I can show you here, there are at least two colors that you could imagine using- one blue, one yellow.
  • It’s just it given the green field, the yellow is especially well adaptive.
  • The court says that that’s a functional component of what the design is, rather than a non-functional component for which consumers could have some association with the reputation of the manufacturer.

Week 4: Trademark 1: Overview > Trademarks and Functionality > Aesthetic Functionality

  • So what if the aesthetics drive the consumer demand itself? Should we then consider those to be functional and therefore unavailable for trademark protection? Here, the classic example is a heart-shaped box.
  • Now it’s clear that as far as functional is concerned, a heart-shaped box is not as efficient a container for chocolates or for anything else you might put in it as a number of other container shapes might be.
  • The choice of it was not made for functional reasons and any reason that consumers would pick that shape doesn’t have to do with the design itself, but instead has to do with what they think the source, the underlying source of the design is.
  • Louboutin, as many of you may know, has a distinctive red sole on their shoes.
  • So can you trademark a red sole on a shoe? So first of all, you can only do that as a color if you can show secondary meaning.
  • So you have to show that there’s an association between consumers and the red soled shoe that associates with the underlying source and not with something else.
  • Now this doesn’t mean that if I had a very distinctive or unusual red color that I might not be able to get protection over that if I could prove it consumers associated that distinctive color, that unusual color, for example, with the source of the products.
  • So people are likely to be buying red shoes for reasons that are entirely independent of who is making them.
  • When people are buying shoes with red soles then they are buying because of the reputation of the Louboutin brand and not because they like the color red, for example.
  • So this comes up in a case where Yves Saint Laurent decided that they were going to sell as part of one of their spring collections a shoe that had a red sole and a red upper.
  • That their secondary meaning was available and was able to be shown for the red soles, but only where they were contrasting with the upper.
  • So that is the way that, I think, to think about aesthetic functionality is if it’s the aesthetics that are driving the buying decision, if the aesthetics itself is what’s the primary association between the color in this case and the product, then that’s aesthetic functionality and you can’t get protection on it.
  • If there’s something else there, if the reason that you would buy this shoe or that you would be interested in this shoe or the association you have in your mind between this shoe and the source of the good is because of that contrasting red sole, then it’s available and protectable under trademark law and subject to the regular remedies as we would for any other mark.
  • So solid shoes can’t be protected under this case, under the Second Circuit in 2012 decided that the solid shoes are likely to both not have secondary meaning and that they are probably aesthetically functional as well, but contrasting shoes can be protected as trademarks.

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