Trademark and Unfair Comp.

1
Trademark and Unfair Comp.

• Boston College Law School
• October 7, 2004
• Bars to Registration

2
Bars to Registration

• Lanham Act 2
• (a) Immoral, scandalous, deceptive disparages
• (b) Flag, coat of arms, insignia of U.S., state,
  etc.
• (c) Name, portrait, signature of living
  individual
• (d) Likely to cause confusion with other mark
• (e) Consists of mark that is
• (1) merely descriptive or deceptively
  misdescriptive
• (2) primarily geographically descriptive
• (3) primarily geographically deceptively
  misdescriptive
• (4) primarily a surname
• (5) functional

3
Bars - Flags, Individuals

• Lanham Act 2
• Shall register mark unless it
• (b) Consists of or comprises the flag or coat of
  arms or other insignia of the United States, or
  of any State or municipality, or of any foreign
  nation
• (c) Consists of or comprises a name, portrait,
  or signature identifying a particular living
  individual except by his written consent

4
Bars - Likely to Cause Confusion

• Lanham Act 2
• Shall register mark unless it
• (d) consists of or comprises a mark which so
  resembles a mark registered or a mark or trade
  name previously used in the United States by
  another and not abandoned, as to be likely to
  cause confusion, or to cause mistake, or to
  deceive.

5
Bars to Registration

• Lanham Act 2
• (a) Immoral, scandalous, deceptive disparages
• (b) Flag, coat of arms, insignia of U.S., state,
  etc.
• (c) Name, portrait, signature of living
  individual
• (d) Likely to cause confusion with other mark
• (e) Consists of mark that is
• (1) merely descriptive or deceptively
  misdescriptive
• (2) primarily geographically descriptive
• (3) primarily geographically deceptively
  misdescriptive
• (4) primarily a surname
• (5) functional

6
Bars to Registration

• Lanham Act 2
• (f) Except as expressly excluded in subsections
  (a), (b), (c), (d), (e)(3), and (e)(5) of this
  section, nothing herein shall prevent the
  registration of a mark used by the applicant
  which has become distinctive of the applicants
  goods in commerce. The Director may accept as
  prima facie evidence that the mark has become
  distinctive upon proof of substantially
  exclusive and continuous use thereof as a mark by
  the applicant in commerce for the five years
  before the date on which the claim of
  distinctiveness is made .

7
Lanham Act 2(e)

• Descriptive
• ORGANIC for organically grown oranges
• Deceptive
• ORGANIC for non-organic oranges
• Deceptively misdescriptive
• JOES FAVORITE for oranges that arent Joes
  favorite
• Nondeceptively misdescriptive (arbitrary)
• ATOMIC for oranges

• Geographically descriptive
• FLORIDA for Florida oranges
• Geographically deceptive
• FLORIDA for Georgia oranges
• Geographically deceptively misdescriptive
• FLORIDA for auto parts from New Jersey
• Geographically nondeceptively misdescriptive
  (arbitrary)
• ANTARCTIC for Georgia oranges

8
Policy Considerations
High
Secondary Meaning
Unprotectible
Protectible
Low
Generic
Descriptive
Suggestive
Arbitrary
Distinctiveness
9
Examples, Redux
Geographic
10
Examples

• ARIZONA (ice tea, not made in Arizona)
• NANTUCKET (fruit drinks made in Nantucket)
• CORNING (glassware products made in Corning, NY)
• HERSHEY (chocolate made in Hershey, PA and
  elsewhere)
• PARK AVENUE (luxury car, not made on Park Avenue)
• SWISS ARMY KNIFE (pocket knife, not made in
  Switz.)

11
Bars to Registration

• Lanham Act 2
• (a) Immoral, scandalous, deceptive disparages
• (b) Flag, coat of arms, insignia of U.S., state,
  etc.
• (c) Name, portrait, signature of living
  individual
• (d) Likely to cause confusion with other mark
• (e) Consists of mark that is
• (1) merely descriptive or deceptively
  misdescriptive
• (2) primarily geographically descriptive
• (3) primarily geographically deceptively
  misdescriptive
• (4) primarily a surname
• (5) functional

12
Administrative Details

• Next Assignment
• V.A - Genericity