ch 8 l201
10 years
federal registration of a trademark lasts this long. with renewals for additional 10-year periods possible. protection may be lost before the period expires. the government must cancel a registration six years after its date unless the registrant files with the patent and trademark office, within the fith and 6th years following the registration due, an affidavit detailing the mark is in use or explaining its nonuse.
gray market goods
goods lawfully bearing trademarks or using patents and copyrighted material but entering the american market without authorization.
lanham act
protects trademark owners against certain uses of their marks by third parties. recognizes four kinds of marks.
trade secrets
nonpublic by definition. although protecting trade secrets may stimulate creativity activity, it also keeps the information from becoming public knowledge. the main justification for this protection is simply to preserve certain standards of commercial morality. state law historically served as the primary source of legal protection for this and as the only source of civil liability for the vioaltion of another party's trade secret rights.
marks that are not inherently distinctive
not distinctive in the usual senses of arbitrary nature, fanciful quality, or suggestiveness, proof of secondary meaning effectively makes these marks distinctive. they are protectible if secondary meaning exists. the supreme court has held that under appropriate circumstances, product color is a potentially protectible treademark of this type.
abandonment
occur through an express statement or agreement to abandon, through the mark's losing its significance as an indication of origin, or through the owner's failure to use it
POM v coca-cola
pom produces, markets, and sells under its brand a variety of pomegranate products, inclduing blueberry judice blend, they compete in the pomegranate-blueberry judice market wit coca-cola. using its minute maid brand, coca-cola created and sold a juice blend that was apple and grape and .3 pomegranate and .2 blueberry. the front label of the coca-cola product displayed the words pomegranate blueberry. claiming that coca-cola's label deceived consumer and thereby harmed pom as a competitor, pom sued under section 43 of lanham act. pom alleged that the name, label, marketing, and advertising of coca-cola would mislead consumers into beleiving that the prodcut consisted predominantyl of pom and blueberry juice. the confusion caused pom to lose sales and made it sought-after remedies of damages and injunctive releif appropriate. federal district court rejected pom's lanham act claim and granted summary judgement to coca cola after conlduing that congress had entrusted matters of food and beverage labeling, including misleading labeling to the FDA. therefore, the district court reasoned, the plantiff section 43 cause of action was precluded. pom appealed to the us court of appeals which affirmed the district court's grant of summary judgement to coca cola. the us supreme court granted petition for certiorari of the lanham act, the fdca, and relevant fds regulations will appear in the decision. the fdca allows the use of label in question and in fact precludes the lanham act claim. the lower courts ruling that pom's lanhan act cause of action is precluded by the fdca was incorrect. ther eis no statutory text or established interpretative principel to support the contention that the FDCA precludes lanham act suits like this one. nothing in text, history, or structure of the fdca or lanham shows the congressional purpose or design to forbid these suits. fdca and the lanham act complement each other in the federal regulation of misleading food and beverage labels. competitors, in their own interest, may bring lanham act claims like poms that challenge food and beverage labels that are regulated by the fdca. ninth circuit reversed, case remanded for further proceedings.
service marks
resemble trademarks but identify and distinguish services.
generic terms
simply refer to the general class of which the particular product or service is one example. because any seller has the right to call a product or service by its common name, generic terms are ineligible for trademark protection.
trademark dilution
sometimes serves as an alternative to the standard claim of infringement. ftda, placed in the lanham act. proof of this violation required a showing of actual dilution of the plaintiff's mark rather than the likelihood of dilution required by state dilution alws. for trademark owners, the proof of actual dilution requirement enhanced the difficulty of winning these cases under federal statute.
frisch factors
strenght of the plaintiffs mark, relatedness of the products, similarity of the marks, evidence of actual confusion, parties' marketing channels, likely degree of purchaser care, defendant's intent in selecting the mark, probability that the product lines will expand.
noncompetition agreements
the employees agree not to compete with the employer for some period of time after the employment relationships ends. disfavored in the law because they may interfere unduly with individual's important interests in working and making a living.
arbitrary or fanciful marks
these are the most distinctive- and the most likely to be protected- because they do not describe the qualities of the product or service they identify. the exxon trademark is an example
suggestive marks
these marks convey the nature of a product or service only through imagination, thought, and perception. they do not actually describe the underlying product or service. the dietene trademark for a dietary food supplement is an example. not as clearly distinctive as arbitrary or fanciful marks, suggestive marks are nonetheless classified as distinctive. they are good candidates for protection
generic meaning
a mark acquires this when it comes to refer to a class of products or services rather than a particular source's product or service. ex: this has happened to such once-protected marks as aspirin, escalator, and thermos.
reasonable measures to ensure secrecy
advising employees about the secrets secrecy, limiting access to the secret on a need-to know basis, requiring those given access to sign a nondisclosure agreement, disclosing the secret only on a confidential basis, and controlling access to an office or plant.
naked license
allow the ale of goods or services bearing the mark but lacking the qualities formerly associated with it, and could confuse purchasers.
trademark
any word, name, symbol, device, or combination thereof used by a manufacturer or seller to identify its products and distinguish them from the products of competitors.helps purchasers identify favored products and services. for this reason, they also give sellers and manufacturers an incentive to innovate and strive for quality. both these ends would be defeated if competitors were free to appropriate each other's trademarks. the lanham act protects trademark owners against certain uses of their marks by third parties
DTSA
defines trade secrets and the elemetns of a misappropriation claim in ways that are very simialr to state law's customary treatment of such matters. does not preempt state trade secrets law, state law remains an important player in the trade secrets realm.
trademark infringement
when without the owner's consent, another party uses a substantially simialr mark in connection with the sale of goods or services and this use is likely to cause confusion concerning their source or concerning whether there is an endorsement relationship or other affiliation between the mark's owner and the other party. msot of the court's attention in this case tends to go toward determining whether requisite likelihood of confusion is present in the facts. because the likelihood of confusion determination is critical to resolution of trademark infringement cases, courts have had plenty of occassions to make such determinations. a trademark owner who wins this suit may obtain an injunction against uses of the mark that are likely to cause confusion. the owner may obtain money damages for provable injury resulting from the infringement, and sometimes the attributable profits realized by the infringing defendant.
5 categories of distinctiveness (must be this to be trademark)
1) arbitrary or fanciful marks 2) suggestive marks 3) descriptive marks 4) marks that are not inherently distinctive and 5) generic terms
dilution by tarnishment
association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. this form is also recognized in state dilution laws. defendant's use of the plaintiff's mark is an unwholesome context- normally one suggesting illicit sexual or drug-related associations.
dilution by blurring
association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. takes place when the defendant's use of the plaintiff's mark causes, or is likely to cuase, the public to cease associating the mark solely with the plaintiff and instead to associate it with both the plaintiff and defendant. the marks distinctiveness as a clear identifier of the plantiff is in danger of being blurred or whittled away, even if the public recognizes that the plaintiff and defendent are not affilaited and they they provide very differnet products or services.
trade secret
can be defined as any secret formula, pattern, process, program, device, method, technique, or compilation of information used in the owner's business, if it gives its owners an advantge over competitors who do not know it or use it. ex: chemical formulas, computer software, manufacturing processes, designs for machines, and certain detailed customer lists. to be protectible, they must usually have sufficient value or originality to provide an actual or potential competitive advantage. it need not posses the novelty required for patent protection.
certification marks
certify the origin, materials, quality, method of manufacture, and other aspect sof goods and services.
descriptive marks
directly describe or service they identify. not protected unless they acquire secondary meaning. this occurs when their identification with a particular source of goods or services has become firmly established in the minds of a substantial number of buyers. factors considered in secondary-meaning: length of time the mark has been used, the volume of sales associated with that use, and the nature of the advertising employing the mark. overnight is usually an example of this.
kibler v hall
disc jockey kibler uses turntables and other performers' vocals to produce music containing jazz and funk elements. he is under the name dj logic. he did not have a record deal- it was a trademark in 2000, allowed the registration to lapse in 2003, and re-registered in 2013. he is also simply known as logic. hall, a rapper, has perfomred under the name logic since 2009. he had a recording contract with UMG at times pertinent to the case described. WME is hall's booking agent. kibler's attorney sent visionary music group and WME an email ordering them to stop using the name logic and to recall any product or advertisement that did. the attorney maintained that such use infringed on kibler's dj logic mark. kibler filed suit in the us district court for eastern michigan against hall and the firms noted above. kibler alleged claims for trademark infringement and trademark dilution in violation of the federal lanham act. in march 2014, the defendants delayed halls tour and first album release because of the negotiations. one year later, the defendants moved for summary judgement on each of kibler's claims. the district court granted the defendant's motion. to assess the likelihood of confusion, you use the frisch factors.
patent law
encourage the creation and disclosure of inventions by granting the patentee a temporary monopoly in the patented invention in exchagne for his making it public.
proper means
include independent invention of the secret, observation of a publicly displayed product, the owner's advertising, published literature, product analysis, and reverse engineering
misappropriation of trade secrets
involve disclosure or use of the secret. occurs when the secret is disclosed or used by one who 1) acquired it by improper means, from a party who is known or should be known to have obtained it by improper means, and breached a duty of confidentiality reagrding the secret. remedies cinlcude damages.
incontestable mark
may be canceled at any time, if, among other things, it was obtained by fraud, has been abandoned, or has become the generic name for goods or services it identifies
transferring trademark rights
more difficult than transferring copyright or patent interests.
principle register of hte patent and trademark office
trademarks of sufficient distinctiveness are placed on this . a mark's inclusion in this is rpimar facie evidence of the mark;s ownership, validity, and registration. gives nationwide constructive notice of the owner's claim of ownership, entitles the mark owner to assistance from the bureau of customs in stopping the importation of certain goods that, without the consent of the mark owner, bear a likeness of the mark; and means that the mark will be incontestable after 5 years of registered status. or may merit placement on this if they have acquired secondary meaning. 1) marks that re not inherently distinctive, descriptive marks, deceptively misdescriptive marks, geographically descriptive marks, marks that are primarily a surname. denied placement: consist of flags or other insignia of governments, consist of the name, portrait, or signiature of a living person who has not given consent to the trademark use, immoral, deceptive, or scandalous, or are likely to cause confusion because they resemble a mark previously registered or used in the us.
collective marks
trademarks or service marks used by organizations to identify themselves as the source of goods or servicces. trade union and trade association marks fall in this.
