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Internet-Commerce-Radin-Sp06 - Trademarks 1 Definition a...

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Trademarks 1. Definition : a word, name, symbol or device that identifies goods in commerce, which owners may use exclusively in commerce. a. Purposes : to protect consumers from confusion & to protect owner’s investments. b. TM law is generally geographically fragmented —different people can use the same TM in different places. Internet is changing this . Difficult because different countries have different TM laws. - Search, which is expensive 2. To qualify for TM protection , a mark must be: a. Distinctive i. Inherently distinctive: arbitrary (APPLE for computers), fanciful (EXXON) (not a real word), or suggestive (THE MONEY STORE; EVERREADY) (best something in the world) ii. Acquired distinctiveness: becomes distinct in the market iii. Cannot protect generic terms (APPLE for apples), even if they were once distinctive (ASPIRIN) (“generecide”); iv. See fear of Xerox, Google, Kleenex, Teflon – you can diversify your services or goods – you have to go against what you invested in. v. Start-up companies: you have to (i) make a good-faith search – but problem of non-registered marks and (ii) find a an arbitrary name b. Used in Commerce c. Affixed or otherwise associated with goods or services d. Signify the source or origin of the goods and services with which it is associated. 3. Registration. a. Application i. Use-based ii. Intent-to-use – TM Revision Act 1988 b. Statutory bars i. Immoral, deceptive or scandalous ii. Insignia of the US iii. Name portrait or signature of a living person w/o consent iv. Word, name or other designation which is confusingly similar v. Descriptive vi. Generic or functional items c. Exception to the statutory bar – Section 1052(f). Surnames who acquired secondary meaning d. Opposition e. Advantages of registration f. Geographic segmentation apple computers apple banks. Things can coexist geographically g. Register i. Principal ii. Supplemental 1
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4. Passing off [see also reverse passing off Dastar case]. What is bad about passing off? In competition law we say that free-for-all of market a. Goodwill / reputation is a monetizable asset b. Free-for-all market is not always good for non-economic reasons: see trade secrecy. 5. Remedies a. Disclaimer b. Sucks sites cannot be closed up because they do not create confusion 6. Traditional TM infringement : Senior user of a mark sues that junior user of a mark claiming consumer confusion, either about the source/origin of the products or the affiliation/sponsorship between the two companies. TM does not need to be registered to merit protection. Likelihood of confusion test considers ( Polaroid test): a. Strength of TM b. Similarity of marks c. Similarity of goods d. Channels of trade e. Sophistication of consumers f. Actual confusion g. Wrongful intent h. Whether the challenged use is within the senior user’s zone of natural expansion See Beebe (TM scholar at Cordozo) who says that the most important thing is bad faith: “An empirical analysis of the multifactor tests for TM infringement” 7. TM Dilution : The diminished capacity of a famous mark to distinguish goods or services
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