leb.pp.9 (Trademarks & Trade Secrets)

leb.pp.9 (Trademarks & Trade Secrets) - Chapter 9...

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Unformatted text preview: Chapter 9 Chapter Intellectual Property Intellectual Property Products of an individual’s mind Products Examples: Books, music, movies, Books, software, inventions software, You create it, you own it Reward inventive and artistic creativity Trademarks Trademarks: Distinctive marks Distinctive * Product Identification Product * Protection of Mark Protection - First to Use mark (limited protection) First - Register mark with USPTO Register USPTO (additional protection) * Infringement Infringement - Likelihood of confusion Likelihood Trademarks Lanham Act Lanham Federal statute that protects trademark Federal owners against certain uses of marks by owners others Trademarks Trademarks Pro-Football, Inc. v. Harjo * Yes, trademark was reinstated Yes, reinstated * Insufficient evidence of disparagement Insufficient Trademarks Trademarks Types of Marks 1. Generic: Least distinctive 1. Generic Not protected (seller has the right to Not call its product by its common name) common Not likely to remain in consumers’ Not minds and become associated with a particular product Examples: pencil, shoe, diamond, truck Trademarks Trademarks Types of Marks 2. Descriptive 2. Descriptive Protected if mark has acquired “secondary Protected secondary meaning” (consumers identify mark with meaning (consumers identify product) product Examples: Examples “Realemon” (bottled lemon juice) Personal names (Dell, McDonald’s) Personal Trademarks Trademarks Types of Marks 3. Suggestive: Distinctive 3. Suggestive Takes some imagination to associate Takes some mark with product mark Protected even without secondary meaning meaning Example: Coppertone Example: Trademarks Trademarks Types of Marks 4. Arbitrary/Fanciful: Most distinctive 4. Arbitrary/Fanciful Most Protected even without secondary Protected meaning meaning Examples: Kodak, Polaroid, Clorox, Exxon Trademarks Trademarks Secondary Meaning Identification of mark with a particular Identification product; association firmly established in product association minds of consumers Trademarks Trademarks Genericide Trademark protection may be lost if mark Trademark becomes generic through popular use Trademarks Trademarks Infringement Claim Factors to be Considered 1. Strength of mark 1. 2. Similarity of products 2. 3. Similarity of marks 3. 4. Actual confusion 4. Trademarks Trademarks Infringement Claim Factors to be Considered 5. Similarity of marketing channels 6. Degree of care used by consumer 7. D’s intent 8. Likelihood of expansion of product 8. lines Trademarks Trademarks McNeil Consumer Brands v. U.S. den Tek McNeil Yes, P wins Yes, Likelihood of confusion (strong brand, Likelihood similar name, and same product line) Trademarks Trademarks Starbucks Corp. v. Sambucks Yes, P wins Likelihood of confusion (strong mark, Likelihood same product, phonetically similar names, and P’s possible expansion to Astoria) Trademarks Trademarks Jordache Enterprises v. Hogg Wyld No, D wins Parody prevents likelihood of confusion Trademarks Trademarks Dilution 2. Protection of: a. Product identification a. Product * Blurring or whittling away b. Affirmative associations mark b. Affirmative conveys * Tarnishment or disparagement Trademarks Trademarks Dilution McDonald’s Corp. v. McBagel’s Inc. Yes, P won on a product identification Yes, product claim claim Lucas v. 2 Live Crew Yes, P won on both product Yes, identification and tarnishment theories identification Trademarks Factors in determining whether mark is “famous” under TDRA: i. Duration, extent, and geographic reach of advertising/publicity of mark, ii. Amount, volume, and geographic extent of sales of products/services offered under mark, iii. Extent of actual recognition of mark, and iv. Whether mark was registered on the Federal registry Trademarks University of Texas v. KST Electric Assigned to the following students to brief and present in class on Thursday, March 24: (1) Ashley Chang (2) Preston Grasty (3) Angela Stafford (4) Henry Zhao Trademarks Trademarks Bargain Bid LLC v. Ubid, Inc. Bargain P wins wins Trade Secrets Trade Integrated Cash Management Services v. Integrated Digital Transactions Digital Assigned to the following students to Assigned brief and present in class on Thursday, brief March 24: (1) Matthew Fisher (2) Kristin Hudson (3) Neal Remedios (4) Abdullah Usudan Trade Secrets Trade Numed v. McNutt * Yes, D won * Not a secret (known to others) Not Trade Secrets Smith v. Snap-On Tools Corp. * No liability * Smith’s voluntary disclosure forfeited secrecy Trade Secrets Trade Hook v. Perdue Farms Yes, P awarded $ 48.45 million! DuPont v. Christopher No, P does not have to use anti-aircraft No, not guns to preserve secrecy guns Trade Secrets Trade Schalk v. State No, D convicted X’s measures to preserve secrecy were more than adequate! more Trade Secrets Trade Can lose misappropriation claim by: Can lose 1. publicly displaying information 1. publicly 2. including information in advertising 2. materials materials 3. providing open access to information 3. open Trade Secrets Trade Carter Products v. Colgate-Palmolive Yes, D wrongfully acquired information Yes, D knew P’s engineer had promised not to divulge secret divulge ...
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