Transcript Can “Crunchy” get trademark protection? Crunchy How about the particular way it appears on the bag?

Can “Crunchy” get trademark protection?
Crunchy
How about the particular way it appears on the bag?
Trademarks are Devices
• Devices (that can take nearly any form)
that distinguish or identify a particular
good or service
• Slogans, logos, words, pictures, and
combinations of words and pictures are all
familiar “devices.”
• Sounds, scents and colors can also be
devices in certain circumstances
Is there any Splenda?
You can’t read the packaging, but you know
these are, don’t you?
Trademarks are Distinctive
• There are 5 categories of distinctiveness
• Marks that are fanciful, arbitrary or
suggestive can be trademarks
• Marks that are merely descriptive can be
trademarks only if they have acquired
“secondary meaning”
• Marks that are generic can’t be
trademarks
Trademarks can be
Strong or Weak
Weak
Strong
Suggestive
Descriptive
Arbitrary
Fanciful
Generic
Mark-o-meter
Suggestive vs. Descriptive
• Does the mark requires you to employ some
imagination, thought or perception in order to
connect the mark to the product?
• If not, then it’s merely descriptive
• “Secondary Meaning” can support a mark that
merely describes its product or service.
• Surnames are treated the same as merely
descriptive marks; they can be trademarks if
secondary meaning has been achieved
Secondary Meaning
• This means that the marketplace
recognizes the goods or services as being
those of a particular provider even though
the mark describes the product and even
though there may be many providers of
that product
• Digital Computers is an example;
McDonalds hamburgers are another
Will this work?
Krunchee! TM
Maybe for visual, but probably still descriptive…what if
you advertised on the radio?
Any other bright ideas?
Inspiration!
Do you think this is arbitrary or suggestive?
Duck!
TM
Notice of trademark claim to “Duck!”
Federal Registration
(Principal Register)
• You can use nationally, not just in the area
where your product is marketed
• Better legal remedies in case of infringement
• Right to use the ® symbol
• Incontestible status after 5 years, eliminating
most challenges to your exclusive use of mark
• Easier for others to search, so they can avoid
adopting confusingly similar marks
United States Patent & Trademark Office
NOTICE OF REGISTRATION
Principal Register
Duck!
Dear Chipco:
Congratulations, your trademark has been
entered on the principal register. Go out
and build brand.
Love,
The Government
Duck! ®
“Duck!” is a registered trademark!
Other Trademark Topics
SERVICE MARKS: Same thing as a trademark, only instead of
identifying a particular good, it identifies a particular service. Same
analysis applies.
CERTIFICATION MARKS: Denotes that the product meets a
particular standard set by an organization formed to certify, classify, or
evaluate competing products. Think U/L (for Underwriters
Laboratories) or “Good Housekeeping Seal of Approval” or “Consumer
Reports” and the like. other
COLLECTIVE MARKS: Denotes membership or some similar
affiliation with a union, trade group or like organization. Think “Got
Milk” or “Beef. It’s what’s for dinner.” Also, see movie credits for usually
several of such marks.
Other Trademark Topics
INFRINGEMENT: The touchstone of trademark infringement is
the likelihood of confusion of the public as to the source of the
goods. So use of another’s trademark or elements of such a mark
in a way that could lead to confusion is an infringing use.
DILUTION: Does not depend on confusion; can exist even where
there is no possibility of confusion. The harm here lies in a use
that dilutes or reduces the value of the plaintiff’s mark.
Example: The wholesome and family friendly Milton Bradley board
game “Candyland” sued the operator of an internet porn site using
that same name, alleging – not confusion – but dilution of the
mark’s value.
Further Topics
TRADE DRESS: The image and overall
appearance and “feel” of a business
establishment can, if it is indeed distinctive
and possibly confusing to consumers, be
protected from infringement by competitors.
Taco Cabana/Two Pesos Case
Further Topics
COUNTERFEIT GOODS: “Stop Counterfeiting in
Manufacturing Goods Act (“SCMGA”), a 2006 law
that criminalized the trafficking in counterfeit
labels, stickers, or packaging even if not attached
to the counterfeit goods themselves, thus closing a
loophole that had long facilitated counterfeiters.
Now, there are Criminal Penalties: Up to 10
years in prison; up to $2 million in fines; counterfeit
goods destroyed; restitution of loss to victim.
Further Topics
TRADE NAMES: Can also be a trademark,
but only if they also identify the good or
service sold. Not a trademark if they simply
are the name of a business. May still be
protected under common law unfair
competition, if they are distinctive, not
descriptive or generic, and where confusion
of consumers is possible.
Further Topics
DOMAIN NAMES:
A “top-level” domain is “.com” or “.org”; a “second-level”
domain is what goes before that.
Federal “anti-cybersquatting” law now makes it illegal to
“register, traffic in, or use” second level domain that is the
same as or confusingly similar to someone else’s
trademark, if you have “bad faith intent.”
Has not been a real effective remedy; doesn’t address
“Typosquatting” and is expensive and hard to use.
Copyright v. Trademark
• Copyright protects a fixed original expression
• “Fixed” is a very general term – includes
computer memory or back of a napkin
• “Original” means independent creation, even if
lacking in quality or merit. Not copied
• Creative effort is required. Can be bad, and
doesn’t have to be much, but some minimal level
of creative effort is required for copyright
protection.
Copyright v. Trademark
Categories of Fixed Original Works that can be Protected:
-
Literary works
Musical works
Dramatic works
Pantomimes & choreographic works
Pictoral, graphic & sculptural works
Motion pictures & other audio visual works
Sound recordings
Architectural works
Computer programs
Copyright v. Trademark
• Copyright does not protect ideas or facts – This
is Section 102. Can protect the way in which
facts are compiled and presented, however.
Example: white pages – NO; but yellow pages –
YES.
• Copyright gives you the exclusive right to
reproduce, distribute, create adaptations of,
perform or display the particular expression or
“work”
Copyright Terms
• General Rule now: Author’s life plus 70
years if the author owns it; if for hire,
between 95 and 120 years depending on
when published
• No © is required since March 1, 1989;
earlier it was generally required
• Works created before 1923 are all in the
public domain
• Best policy is to seek permission
Copyright Infringement
COPYRIGHT INFRINGEMENT involves copying or
reproducing any substantial part of the copyrighted
work. Civil and criminal penalties apply, and actual
and statutory damages can be awarded.
FAIR USE DOCTRINE: Copyright Act allows use for
criticism, comment, news reporting, teaching,
scholarship, or research. When disputed, law looks
to (1) nature of use (for profit or not?), (2) nature of
the work, (3) amount used, and (4) effect on market
for the work
Registration
• Easy and cheap
• Necessary to enforce in court
• If done promptly enough, you may have a
statutory damage remedy
• You don’t have to scramble around trying
to register after you discover an infringer
just so you can take them to court
• Cheap insurance
COPYRIGHT LEGISLATION
NO ELECTRONIC THEFT ACT OF 1997:
Criminalized violations even for “personal
use” (which changed “fair use” doctrine).
Now, criminal penalties attach even if no
profit is realized from the copying.
COPYRIGHT LEGISLATION
DIGITAL MILLENIUM COPYRIGHT ACT:
Value of US exports of creative products surpasses value of
all other industries. US & other important export nations
entered into a treaty called WIPO in 1996, which was
implemented in the US with the enactment of the DMCA in
1998.
-Civil and criminal penalties for circumventing encryption
software or other anti-piracy protection; penalizes distribution
of devices that do that, too.
-Allows fair use: Allows circumvention for educational and
non-profit purposes including testing security, encryption
research, privacy protection, parental monitoring
-Limited liability of ISP’s for the “copies” made by their
customers.
Trade Secrets
What is one? Information that confers a
competitive advantage one who has it over those
who don’t, and which the one possessing it uses
reasonable efforts to keep confidential.
Can be ideas, concepts, formulas, etc. and other
things that may not be protectable with copyright,
patent or trademark law.
Protection under State Laws, but also by
private contract. It is a tort to use or appropriate
information you know to be a trade secret of
another.
Chapters 23
Personal
Property Law
Introduction
• Definition: Property consists of legally
protected rights and interests a person has
in anything with an ascertainable value
that is subject to ownership.
– Difference Between Real and Personal Property.
– Ownership rights in each.
• Acquiring Ownership of Personal Property.
• Laws Governing Mislaid, Lost, or Abandoned
Property.
Property Ownership
• Property ownership is viewed as a “bundle
of rights”, including the:
– Right to possess.
– Right to sell.
– Right to give.
– Right to lease.
– Right to destroy.
Fee Simple
• Owns the entire “bundle of rights”.
• Fee simple gives the owner the maximum
possible estate or right of ownership of
real property, continuing forever.
• Chapter 37 will deal with realty estates.
Concurrent Ownership
Divided Ownership
David owns the red car and the blue car;
Linda owns the green car and the white car.
Undivided Ownership
David and Linda own the red car, blue car,
green car, and white car.
Concurrent Ownership
Tenancy in common (Fig. 1). A
and B own an undivided interest in
the property. Upon B’s death, B’s
interest passes to B’s heir, C, and
then it’s owned by A and C.
Tenancy with Right of Survivorship (Fig. 2). A and B own
undivided interest as long as both
are alive, upon the death of either,
the interest of the deceased owner
passes to the other.
A
Fig.1
B
C
Fig. 2
A
B
Concurrent Ownership
• Tenancy by the Entirety (not common)
– Usually between husband and wife.
• Community Property (limited # of states)
– Property acquired by couple during their
marriage is owned as an undivided ½ interest
in property (real and personal).
Acquiring Ownership
of Personal Property
• Possession.
– Capture of wild animals (wild animals belong
to no one).
– Finding of abandoned property.
– Adverse Possession.
• Production.
– Writers, inventors, manufacturers, and others
who produce personal property acquire title to
it.
Gifts
• Voluntary transfer of property ownership
from Donor (owner) to Donee (recipient)
for no consideration.
• Three types
– Intervivos—while donor is living.
– Causa Mortis: -- made by donor in
contemplation of imminent death.
– Testamentary – after death, by
will/inheritance.
Gifts
• Three requirements for valid gift:
– Delivery—actual or “constructive”
(symbolic, such as keys to car).
• Donor must give up complete control or
dominion. Delivery by a 3rd party is OK.
– Donative intent on the part of the donor
– Acceptance by the Donee.
Acquiring Ownership of
Personal Property
• Will or Inheritance.
• Accession.
– Someone adds value to a piece of personal
property by use of either labor or materials.
• Confusion.
– Commingling so that a person’s personal
property cannot be distinguished from another’s.
– Fungible goods consists of identical particles
such as oil or grain.
Mislaid, Lost
or Abandoned Property
• Mislaid Property: Voluntary placed
somewhere, then inadvertently forgotten. Finder
is steward for true owner.
• Lost Property: Involuntarily left. Property
owner acquires title against whole world, except
for true owner. Finder must return to true owner
or be liable for conversion.
• Abandoned Property: Discarded by true
owner with no intention of recovering. Acquires
title against all the world, including the original
owner.
Bailments
• A bailment is formed by the delivery of
personal property, without transfer of title,
by one person (Bailor) to another (Bailee),
usually under an agreement for a
particular purpose.
• The property must be returned by the
Bailee to the Bailor, or a third party as
directed by the Bailor, in the same or
better condition.
Elements of a Bailment
• Personal Property. (Tangible or
Intangible--but not persons or realty.)
• Delivery of Possession.
– Bailee given exclusive control or possession.
– May be actual or constructive.
– Bailee must knowingly accept (Bailee must
intend to exercise control over chattel).
• Bailment Agreement.
– Express or Implied.
Ordinary Bailments
• Bailment for the sole benefit of the Bailor:
– A gratuitous Bailment; Bailee owes Bailor a
low duty of care, liable only for gross
negligence.
• Bailment for the sole benefit of the Bailee:
– Bailee owes Bailor a high duty of care and is
liable for even slight negligence.
• Mutual Benefit Bailment: most common.
– Each party owes the other a reasonable duty
of care.
Rights and Duties of the Bailee
• Right To Possess.
– Bailee may acquire or use property temporarily. Title does not
pass.
• Right to Use Bailed Property.
• Rights of Compensation.
– Reimbursed for costs or services as provided in the
agreement.
• Right to Limit Liability.
• Duty to Return bailed property in same condition
to Bailor. Bailee may liable for conversion and/or
negligence.
Rights and Duties of the Bailor
• Right to have property protected and used as
agreed.
• Right to have property back at end of bailment
with service or repair done properly.
• Right to have the Bailee not convert.
• Right to not be bound to limitation of liability
unless Bailor knows.
• Duty to Provide safe goods:
–Mutual Benefit Bailment: free from known or hidden
defects; Sole Benefit of Bailee: notify if any known
defect.
Special Types of Bailments
• Common Carriers:
– Publicly licenses to provide transportation
services to general public.
– Common Carriers are strictly liable for
damages except if the damages caused by:
•
•
•
•
•
An act of God.
An act of the public enemy.
An order of the public authority.
An act of the shipper.
The inherent nature of the goods.
– Shipper’s loss.
– Connecting Carriers.
Warehouses and Innkeepers
• Warehouses:
– Owe duty of reasonable care.
– Can’t exculpate, can limit.
• Innkeepers:
– Owe duty of strict liability, modified by state
statutes; if innkeeper provides safe and
notifies guests.
– If parking area provided and innkeeper
accepts bailment, then may be liable.