Law 227: Trademarks &Law 227: Trademarks &Unfair CompetitionUnfair Competition

U.S. Prosecution, Part IIJune 25, 2009

Jefferson Scher

TM & Unfair Comp — Day 8TM & Unfair Comp — Day 8AgendaAgenda

•Examination of U.S. applicationsSection 2(e) — Distinctiveness

General: In re Gyulay, Colonial Stores, National Semiconductor, Deus Technologies

Misdescriptiveness/Deceptiveness: 217-224Geographic: 248-260, Supp 29-30Surnames: 260-263Sample office action responses

Federal Registration ProcessFederal Registration ProcessDistinctiveness — RecapDistinctiveness — Recap

•The “Spectrum” of DistinctivenessGeneric — never protectable/registrableDescriptive — can become protectable;

registrable with secondary meaningSuggestive, Arbitrary, Fanciful —

protectable upon use; registrable upon use or with intent to use followed by proof of use

Federal Registration ProcessFederal Registration ProcessDescriptive/Suggestive BoundaryDescriptive/Suggestive Boundary

•PTO ApproachSuggestiveness = imagination test

“Suggestive marks are those that, when applied to the good or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods and services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods and services.” §1209.01(a)

Federal Registration ProcessFederal Registration ProcessDescriptive/Suggestive CasesDescriptive/Suggestive Cases

•Mere DescriptivenessIn re Gyulay: APPLE PIE potpourriIn re Colonial Stores: SUGAR & SPICE

baked goodsIn re National Semiconductor: WEBPAD

handheld for accessing the InternetIn re Deus Technologies: RAPIDSCREEN

medical imaging system to scan x-rays

Federal Registration ProcessFederal Registration ProcessSample Descriptiveness ResponsesSample Descriptiveness Responses

•DeliverE for advertising services

•BUSINESS WITHOUT INTERRUPTION for software

•HOMEPORTAL for residential gateway

•NETBACKUP for software

•MARKETTOOLS for market research services

Federal Registration ProcessFederal Registration ProcessDeceptive MisdescriptivenessDeceptive Misdescriptiveness

•Deceptive Misdescriptiveness Test(1) Mark misdescribes the goods(2) Consumers are likely to believe the

misrepresentation

•Deceptiveness adds a third element(3) Misrepresentation would materially

affect the decision to purchase the goods

Federal Registration ProcessFederal Registration ProcessRegistration of Place NamesRegistration of Place Names

•Test for geographic descriptiveness(1) Primary significance of the mark is

geographic(2) Purchasers likely to think the goods

originate from the place identified in the mark (“goods/place association”)

(3) Goods do originate from that place

Federal Registration ProcessFederal Registration ProcessRegistration of Place NamesRegistration of Place Names

•Deceptive misdescriptiveness(1) Primary significance is geographic(2) Goods/place association(3) Goods do not originate there(4) Erroneous belief about origin of the

goods would materially affect purchase decision (e.g., because renowned for the relevant goods)

Federal Registration ProcessFederal Registration ProcessRefusal When Not Used as a MarkRefusal When Not Used as a Mark

•What about HEMI?Refers to “hemispherical” cylinder heads

of the engine... how to own it for cars?Use “on” the goodsUse perceived as a source identifier

Where would you put the mark?How else might you show that it

functions as a mark for cars?

Federal Registration ProcessFederal Registration ProcessTesting Your UnderstandingTesting Your Understanding

•Summer 2005 Final Exam Scenario 1Structure of scenario

Office action, web pages from “the file”Draft response (with additional comments)“Short answer” questions (Q1, Q8)Multiple choice questions (Q2-7, Q9-16)

Estimated time to complete: 2 hoursDifficult without a good outline!

TM & Unfair Comp — Up TM & Unfair Comp — Up NextNextTopics and Reading for Day 9Topics and Reading for Day 9

•Loss of Rights, Due DiligenceGenericism

Ch. 5, pp. 274-305; Supplement pp. 31-36Abandonment

Ch. 5, pp. 305-326; Supplement pp. 36-39Online: Sample transactional documents

Due DiligenceOnline: Scenario