1.Scott Weide
http://weidemiller.com/attorneys/scott-weide
2.Neil B. Shouse
http://www.shouselaw.com/
3.Brooke Bohlke
http://www.callcallisterlaw.com/
4.Donald Curtis Kudler
http://www.capandkudler.com/
5.Alex De Castroverde
http://www.decastroverdelaw.com
6.William C. Devine II
http://www.raineylegal.com/
7.John Rizvi
http://www.idea-attorneys.com/
8.Andrew D. Smith
http://www.emblaw.com/
9.Craig Friedberg
http://consumerlaw.justia.net/
10.Dillon G. Coil
http://www.emblaw.com/
November 18, 2010
1.
The Different Types of Trademarks
While people are most familiar with the term “trademark,” the public is less familiar with other types of “marks” that are used as unique as source identifiers for businesses, including service marks, certification marks, collective marks, and trade dress.
Trademark
While often used to describe a “mark” generally, a “trademark” is actually any word, name, symbol, or device, or any combination thereof, used by a party to identify and distinguish its goods from those manufactured or sold by others and to indicate the source of the goods (even if that source is unknown).
Service Mark
A “service mark” is the same as a “trademark” except that it is used by a party to identify and distinguish the services of that party from the services of others and to indicate the source of the services (even if that source is unknown). The law specifically states that titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
In short, the two basic functions of a trademark or service mark is 1) identifying the source and origin of particular goods or services and 2) distinguishing for the consuming public the goods or services of one party from the goods or services of others.
Certification Mark
A “certification mark” is any word, name, symbol, or device, or any combination thereof, used by a person other than the mark owner which certifies:
· Regional or other geographic origin of such person’s goods or services (e.g., CERTIFIED MAINE LOBSTER and JERSEY FRESH FROM THE GARDEN STATE);
· Material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services (e.g., the UL logo certifying that certain electrical equipment meets the safety standards of Underwriters Laboratories Inc.; NSF certifying that certain food equipment meets the public health standards established by NSF International); or
· That the work or labor on such person’s goods or services was performed by members of a union or other organization or by a person who meets certain standards and tests of competency set by the owner (e.g., UFCW UNION MADE certifying that the goods were produced by members of the United Food & Commercial Workers International Union and AFL-CIO).
Collective Mark
A “collective mark” is a mark used by members of a cooperative, an association, or other collective group or organization. There are two basic types of collective marks:
· A collective trademark or service mark, which is a mark adopted by a collective group for use by its members who use the mark to identify their goods or services and to distinguish such members’ good or services from the goods or services of nonmembers (e.g., THE FTD BELOVED BOUQUET and AII AMERICAN INSTITUTE OF INSPECTORS); and
· A collective membership mark, which only serves to indicate membership in the collective group (e.g., the logo used by members of the Sheet Metal Workers International Association).
While collective trademarks and service marks are classified in the international class as the underlying good or services which the collective mark identifies, a collective membership mark has its own international class (IC 200).
One important distinction with respect to a “collective mark” compared to a trademark/service mark is that it only serves to indicate membership in the collective group – the collective group itself does not actually use the collective trademark or service mark to identify or distinguish any goods or services although it can advertise and promote the goods sold or services rendered by its members using the collective mark.
Trade Dress
“Trade dress” refers to the design or packaging of a product or service which serves to identify the source or origin of the product or service – the arrangement of identifying characteristics or decorations connected with a product or service (through its packaging, design, or otherwise) that make the source of the product or service distinguishable from others making the same products or offering the same services and which promotes the sale of such product or service. Trade dress involves the total image or overall appearance of a product or service, and includes, but is not limited to, such features as size, shape, color or color combinations, texture, graphics, and even particular sales techniques. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000); Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819 (9th Cir. 1993).
In order for trade dress to be protected as a trademark or service mark, it must be a) nonfunctional and b) distinctive enough in the marketplace to serve as a source identifier (i.e. either because it is inherently distinctive, which is often the case for “product packaging,” or because the trade dress has acquired a secondary meaning, which is often necessary to show for “product designs”).
A product feature is considered functional, and thus cannot serve as a trademark, if the product feature is essential to the use or purpose of the product or if the product feature affects the cost or quality of the product (i.e., exclusive use of the feature would put competitors at a significant, non-reputation-related disadvantage). See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n.10 (1982).
The basis behind the functionality doctrine was explained by the U.S. Supreme Court in Qualitex as follows:
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).
Qualitex Co., 514 U.S. at 164-65.
Some of the factors used by courts to determine functionality are: (1) whether there exists a utility patent directed to the design, (2) whether the owner touts the utilitarian advantages of the design in advertisements, (3) whether there are alternative and competitive designs, and (4) whether the design is cheaper and simpler to manufacture than alternative and competitive designs. See In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). If trade dress is found to be functional, it will not be protected as a trademark or service mark regardless of the extent to which the public may attribute such trade dress to a single source and regardless of any public confusion over competing parties’ goods or services.
You will sometimes hear the labels de facto functional and de jure functional. De facto functionality refers to a product design that may be functional but which is not necessary for its function (e.g., the design of the Coca-Cola bottle is functional, in that it serves as a container for Coca-Cola soda beverages; however, the particular design is not necessary for the bottle to serve as a container). This is the type of functional design that can be protected as a trade dress. De jure functionality, on the other hand, refers to a product design that, because of the particular design, provides the owner with a competitive advantage. This type of functional design cannot be protected as a trademark because such protection would allow a owner to control in perpetuity a “useful” product feature thereby inhibiting competition.
Trade Name
Unlike a trademark or a service mark, which serves to identify and distinguish the source and origin of goods and services, a trade name is any word, name, symbol, or other designation, or any combination thereof, which serves to identify a particular business, vocation, or enterprise and which distinguishes such business, vocation, or enterprise from the business, vocation, or enterprise of another. While trade names will typically include such entity designations such as “Inc.,” “Corp.,” “Company,” or “LLC,” a trade name can include the name under which the company is “doing business as” (d/b/a). In addition, a trade name does not function as a trademark or a service mark, and will not be protected as such, unless it somehow attaches to goods or services in such a way that purchasers and prospective customers would recognize the business identified by the trade name as the source and origin of such goods or services.
House Mark
A “house mark” is a mark that is used by a business in conjunction with a line of products to identify the business as the source of such products. A house mark is closely related to a trade name because often times a trade name will serve as a company’s house mark in conjunction with a trademark or service mark used to identify a specific product or service. For example, Toyota Corp. uses the Toyota trade name as a house mark in identifying its line of automobiles including TOYOTA SIENNA, TOYOTA COROLLA, TOYOTA CAMRY, and TOYOTA PRIUS. While house marks are often the same as the business’ trade name, a house mark can also be a separate trademark or service mark, such as the name CRAFTSMAN, which Sears uses in conjunction with a line of hardware tools.
Family of Marks
Finally, you will occasionally hear about a company that has a family of marks. A family of marks is a group of trademarks or service marks that have some kind of common element which allows consumers to recognize the source and origin of the goods or services identified as such. The proponent of a family of marks must show that all or many of the marks in the family were used and promoted together in such a way as to create public perception of the family “surname” as an indication of source. The classic example of a family of marks is McDonald Corp.’s use of the “Mc” prefix attached to some other word to identify one of its products or services including MCRIB, MCMUFFIN, MCFLURRY, etc.
http://weidemiller.com/
The Different Types of Trademarks
While people are most familiar with the term “trademark,” the public is less familiar with other types of “marks” that are used as unique as source identifiers for businesses, including service marks, certification marks, collective marks, and trade dress.
Trademark
While often used to describe a “mark” generally, a “trademark” is actually any word, name, symbol, or device, or any combination thereof, used by a party to identify and distinguish its goods from those manufactured or sold by others and to indicate the source of the goods (even if that source is unknown).
Service Mark
A “service mark” is the same as a “trademark” except that it is used by a party to identify and distinguish the services of that party from the services of others and to indicate the source of the services (even if that source is unknown). The law specifically states that titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
In short, the two basic functions of a trademark or service mark is 1) identifying the source and origin of particular goods or services and 2) distinguishing for the consuming public the goods or services of one party from the goods or services of others.
Certification Mark
A “certification mark” is any word, name, symbol, or device, or any combination thereof, used by a person other than the mark owner which certifies:
· Regional or other geographic origin of such person’s goods or services (e.g., CERTIFIED MAINE LOBSTER and JERSEY FRESH FROM THE GARDEN STATE);
· Material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services (e.g., the UL logo certifying that certain electrical equipment meets the safety standards of Underwriters Laboratories Inc.; NSF certifying that certain food equipment meets the public health standards established by NSF International); or
· That the work or labor on such person’s goods or services was performed by members of a union or other organization or by a person who meets certain standards and tests of competency set by the owner (e.g., UFCW UNION MADE certifying that the goods were produced by members of the United Food & Commercial Workers International Union and AFL-CIO).
Collective Mark
A “collective mark” is a mark used by members of a cooperative, an association, or other collective group or organization. There are two basic types of collective marks:
· A collective trademark or service mark, which is a mark adopted by a collective group for use by its members who use the mark to identify their goods or services and to distinguish such members’ good or services from the goods or services of nonmembers (e.g., THE FTD BELOVED BOUQUET and AII AMERICAN INSTITUTE OF INSPECTORS); and
· A collective membership mark, which only serves to indicate membership in the collective group (e.g., the logo used by members of the Sheet Metal Workers International Association).
While collective trademarks and service marks are classified in the international class as the underlying good or services which the collective mark identifies, a collective membership mark has its own international class (IC 200).
One important distinction with respect to a “collective mark” compared to a trademark/service mark is that it only serves to indicate membership in the collective group – the collective group itself does not actually use the collective trademark or service mark to identify or distinguish any goods or services although it can advertise and promote the goods sold or services rendered by its members using the collective mark.
Trade Dress
“Trade dress” refers to the design or packaging of a product or service which serves to identify the source or origin of the product or service – the arrangement of identifying characteristics or decorations connected with a product or service (through its packaging, design, or otherwise) that make the source of the product or service distinguishable from others making the same products or offering the same services and which promotes the sale of such product or service. Trade dress involves the total image or overall appearance of a product or service, and includes, but is not limited to, such features as size, shape, color or color combinations, texture, graphics, and even particular sales techniques. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000); Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819 (9th Cir. 1993).
In order for trade dress to be protected as a trademark or service mark, it must be a) nonfunctional and b) distinctive enough in the marketplace to serve as a source identifier (i.e. either because it is inherently distinctive, which is often the case for “product packaging,” or because the trade dress has acquired a secondary meaning, which is often necessary to show for “product designs”).
A product feature is considered functional, and thus cannot serve as a trademark, if the product feature is essential to the use or purpose of the product or if the product feature affects the cost or quality of the product (i.e., exclusive use of the feature would put competitors at a significant, non-reputation-related disadvantage). See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n.10 (1982).
The basis behind the functionality doctrine was explained by the U.S. Supreme Court in Qualitex as follows:
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).
Qualitex Co., 514 U.S. at 164-65.
Some of the factors used by courts to determine functionality are: (1) whether there exists a utility patent directed to the design, (2) whether the owner touts the utilitarian advantages of the design in advertisements, (3) whether there are alternative and competitive designs, and (4) whether the design is cheaper and simpler to manufacture than alternative and competitive designs. See In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). If trade dress is found to be functional, it will not be protected as a trademark or service mark regardless of the extent to which the public may attribute such trade dress to a single source and regardless of any public confusion over competing parties’ goods or services.
You will sometimes hear the labels de facto functional and de jure functional. De facto functionality refers to a product design that may be functional but which is not necessary for its function (e.g., the design of the Coca-Cola bottle is functional, in that it serves as a container for Coca-Cola soda beverages; however, the particular design is not necessary for the bottle to serve as a container). This is the type of functional design that can be protected as a trade dress. De jure functionality, on the other hand, refers to a product design that, because of the particular design, provides the owner with a competitive advantage. This type of functional design cannot be protected as a trademark because such protection would allow a owner to control in perpetuity a “useful” product feature thereby inhibiting competition.
Trade Name
Unlike a trademark or a service mark, which serves to identify and distinguish the source and origin of goods and services, a trade name is any word, name, symbol, or other designation, or any combination thereof, which serves to identify a particular business, vocation, or enterprise and which distinguishes such business, vocation, or enterprise from the business, vocation, or enterprise of another. While trade names will typically include such entity designations such as “Inc.,” “Corp.,” “Company,” or “LLC,” a trade name can include the name under which the company is “doing business as” (d/b/a). In addition, a trade name does not function as a trademark or a service mark, and will not be protected as such, unless it somehow attaches to goods or services in such a way that purchasers and prospective customers would recognize the business identified by the trade name as the source and origin of such goods or services.
House Mark
A “house mark” is a mark that is used by a business in conjunction with a line of products to identify the business as the source of such products. A house mark is closely related to a trade name because often times a trade name will serve as a company’s house mark in conjunction with a trademark or service mark used to identify a specific product or service. For example, Toyota Corp. uses the Toyota trade name as a house mark in identifying its line of automobiles including TOYOTA SIENNA, TOYOTA COROLLA, TOYOTA CAMRY, and TOYOTA PRIUS. While house marks are often the same as the business’ trade name, a house mark can also be a separate trademark or service mark, such as the name CRAFTSMAN, which Sears uses in conjunction with a line of hardware tools.
Family of Marks
Finally, you will occasionally hear about a company that has a family of marks. A family of marks is a group of trademarks or service marks that have some kind of common element which allows consumers to recognize the source and origin of the goods or services identified as such. The proponent of a family of marks must show that all or many of the marks in the family were used and promoted together in such a way as to create public perception of the family “surname” as an indication of source. The classic example of a family of marks is McDonald Corp.’s use of the “Mc” prefix attached to some other word to identify one of its products or services including MCRIB, MCMUFFIN, MCFLURRY, etc.
http://weidemiller.com/
Week 7 EOC 1: Intellectual Property Questions
1. How do I best protect myself from someone else stealing my artwork/design?
2. What’s the first step to take if someone does steal my design?
3. Do you recommend I personally contact a company that I suspect has stolen my idea?
4. How different (percentage wise) does my design have to be than a similar one?
5. What common issues do designers usually overlook in protecting themselves?
6. Do you recommend a lawyer review my contracts before signatures are put on them by the parties involved?
7. Where do you recommend a designer look for a contract template?
8. Is it better to use a template or have a lawyer draft an original contract for my design?
9. If I die and have a patent pending, does it become public domain?
10. When is it necessary to trademark intellectual property?
2. What’s the first step to take if someone does steal my design?
3. Do you recommend I personally contact a company that I suspect has stolen my idea?
4. How different (percentage wise) does my design have to be than a similar one?
5. What common issues do designers usually overlook in protecting themselves?
6. Do you recommend a lawyer review my contracts before signatures are put on them by the parties involved?
7. Where do you recommend a designer look for a contract template?
8. Is it better to use a template or have a lawyer draft an original contract for my design?
9. If I die and have a patent pending, does it become public domain?
10. When is it necessary to trademark intellectual property?
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