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KU BLAW 301 - Chapter 14 (FA14)-2

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Slide 1IntroductionTypes of Intellectual PropertySec. 1: Trademarks and Related PropertyLegal Protection of MarksStatutory Protections of TrademarksTrademark DilutionTrademark RegistrationTrademark InfringementDistinctiveness of the MarkTrade DressCounterfeit GoodsTrade Names; LicensingSec. 2: PatentsPatentsPatentsSec. 3: CopyrightsCopyright ProtectionsProtected ExpressionCopyright InfringementCopyright InfringementSec. 4: Trade SecretsIntellectual PropertyChapter 142IntroductionArticle I Sec. 8 of the U.S. Constitution (see Appendix B) authorizes Congress “To promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”Intellectual property rights are protected both by common law and statutes (federal and state).3Types of Intellectual PropertyThe following types of intellectual property will be discussed:Trademarks (for products) Service Marks (for services)Trade Dress (image/overall appearance of a product)Trade Names (a business’s name)Patents (for inventions and designs)Copyrights (for literary and artistic work)Trade Secrets (business processes and information)Skip Section 5.See Exhibit 14-1 (p. 334) for a good summary chart.4Sec. 1: Trademarks and Related PropertyA trademark is a distinctive mark, motto or device or emblem affixed to goods so their source can be easily identified, and they can be distinguished from goods produced by other manufacturers.A service mark is used to distinguish services of one company from those of another company. (e.g., transportation, telecommunications, insurance services). Service marks receive the same legal protection as trademarks. (MGM lion roar)“Marks” (trademarks and service marks) may or may not include the name of the company providing the goods or services.5Legal Protection of MarksThe use of identical or similar marks by competitors may lead to consumer confusion about the source of the goods. A person who owns and uses a trademark or service mark is protected in its use by common law and statutes—even if the mark is not registered.Marks were protected under common law even before statutory protections existed.Case 14.1: The Coca Cola Company v. The Koke Co. of America (U.S., 1920). The court enjoined (prohibited) a Coca Cola competitor was from calling their soft drink product “Koke” after rejecting the defendant’s false advertising claim.6Statutory Protections of TrademarksLanham Trademark Act (1946) is a federal statute that incorporates the common law of trademarks and provides remedies (damages and injunctions) for trademark infringement in lawsuits brought under this Act in federal courts. Later statutes (in 1995 and 2006) amended the Lanham Act to provide a cause of action for trademark dilution. The Lanham Act (as amended) prohibits unauthorized use of the same or confusingly similar marks on competing goods or services, on noncompeting but related goods or services, and on nonrelated and noncompeting goods where dilution of the original mark might result.Trademark DilutionWhen a plaintiff owns a famous and distinctive mark, a cause of action for trademark dilution arises if the defendant is using a mark that causes an “association” between its mark and the plaintiff's famous mark, and that association is likely to impair the distinctiveness of the famous mark or harm its reputation. The original mark’s distinctive quality may become “blurred” or “tarnished” by the use of the similar mark even on noncompeting/nonrelated goods.Case in Point 14.1 (p. 322): “Sambuck’s Coffehouse” (the name used by an Oregon coffee shop) was held to dilute the Starbucks mark, and thereby reduce its value.78Trademark RegistrationTrademarks and service marks can be registered with the USPTO or applicable state agencies. USPTO applications are subject to a rigorous approval process. Federal registration (indicated by an R inside a circle) grants nation-wide protection for the mark (vs. local geographic protection for unregistered marks).Registration is not required to sue for infringement, but it puts others on notice, and provides proof of when the mark was first used.A mark can be registered if it’s currently used in commerce, or the applicant intends to put it into commerce within 6 months. A registration can be renewed.Trademarks can be protected from infringement indefinitely provided that they are still used, even if they are not registered.Trademark InfringementTrademark infringement occurs when a trademark is copied to a substantial degree or used without consent. Trademark owner has a cause of action against an infringer. Infringement does not have to be intentional. An injunction prohibiting the infringer from using a mark is the most commonly granted remedy and should prevent further infringement. Actual damages based on the infringer’s profits may also be awarded.910Distinctiveness of the MarkMarks must be “distinctive” in order to be registered. Arbitrary and fanciful marks (e.g., Exxon, Xerox, Apple) are considered highly distinctive. Descriptive marks (e.g., Frosty Treats) do not qualify as distinctive until they have acquired “secondary meaning,” meaning when consumers associate the term with specific trademarked goods/services from a particular company.Generic terms receive no protection, and trademarks that become generic lose their protection (e.g., aspirin, thermos, raisin bran).11Trade Dress Trademark protection extends to “trade dress,” which refers to the overall appearance of a product.Trade dress includes characteristics of the product such as shape, design, color scheme of packaging (e.g., iPod shape, Coke bottle shape; restaurant décor/menu/service style). Owner must show an exclusive link to the product source in the consumer’s mind to get trademark protection for trade dress.Counterfeit GoodsCounterfeit goods imitate trademarked goods, and may carry a fake trademark or a confusingly similar mark.The U.S. has been targeting online sellers of counterfeit goods by closing down offenders’ website names.The Stop Counterfeiting in Manufactured Goods Act (2006) makes it a crime to intentionally traffic in counterfeit goods or to knowingly use a counterfeit mark on or in connection with goods or services.Penalties up to $2 million


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