Trademark Media and Trademark Procedure

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Trademark Mediaand Trademark Procedure
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The Statutory Subject Matter

• Trademarks may include any word, name, symbol,
  device, or any combination thereof
• So long as the mark function to identify and
  distinguish his or her goods from those
  manufactured or sold by others and to indicate
  the source of the goods, even if that source is
  unknown

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Examples of Mark-making Symbols

• Color dry cleaning press pads (Qualitex)
• Shape Coke bottle
• Sound NBC chime
• Scent scented thread
• In general, descriptive character with secondary
  meaning
• But nevertheless, still no generic symbols

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The Functionality Doctrine

• Trademark law is not patent law
• Trademark law cannot permit the holder of the
  mark from controlling a useful, functional
  feature only from preventing use of a
  commercial designation of source
• A product feature is function if it is essential
  to the use or purpose or if it affects the cost
  of quality of the article Inwood

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Objections to Color as a Mark-making Media

• 1. Shade confusion
• 2. Limited supply
• 3. Precedent against color as proper medium
• 4. Trade dress protection under 43(a) is enough

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Other Difficult Cases

• Label location, e.g., Levis label, shirt pocket
  tab
• Ingredients
• Firm Names
• Slogans
• Depictions

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Trademark Procedure

• Principal register
• Supplemental register (for anything protectible
  under state unfair competition law)
• Provides for federal jurisdiction
• Search, examination, decision, publication,
  registration (or notice of allowance for
  intent-only), inter-partes proceedings

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Search

• How broad must a search be to be in good faith?
  
• Distinguish defensive searches for mere use from
  searches to justify registration
• Levels of search fed list, state lists, real uses

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Examinations and Inter Partes Proceedings

• Examinations by the PTO are ex parte
• Examinations culminate in publication in the
  Official Gazette
• Inter partes proceedings occur later, and

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Inter-Partes Proceedings

• Oppositions objection to registration
• Concurrent use proceedings in case of a prior
  use, new user must apply and show lack of
  confusion
• Interferences (to determine priority of use)
• Cancellation petition by one who would be
  damaged, within 5 years of registration on any
  grounds, later on limited grounds (functionality,
  fraud, abandonment, become generic) not
  including lack of distinctiveness or confusion

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Renewal

• Every ten years
• Indefinite term
• Initially, six years after registration,
  affidavit of use required

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Court Procedure

• Appeal adverse rulings of PTO aft
• er exhaustion of administrative remedies either
  to Commissioner, or alternatively to District
  Court or Fed Cir

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