LA 245 Week 15 and 16 Notes
LA 245 Week 15 and 16 Notes LA 245
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This 18 page Class Notes was uploaded by Frankie Fucci on Sunday May 1, 2016. The Class Notes belongs to LA 245 at Boston University taught by David Randall in Spring 2016. Since its upload, it has received 9 views. For similar materials see Introduction to Law in Law at Boston University.
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Date Created: 05/01/16
Intellectual Property The role of intellectual property is to balance the rights of those who create intellectual property and those who use it Patents Patent: grant by the government permitting the inventor exclusive use of an invention for 20 years from the date of filing (or 14 years from the date of issuance in the case of design patents) o During this period, no one can make, use or sell the invention without permission o In return, the inventor publicly discloses information about the invention that anyone can use upon expiration of the patent Types of Patents o Utility Patent: available to those who invent (or significantly) improve any of the following: Mechanical invention Electrical invention Chemical invention Process invention Machine invention Composition of matter This is the type of patent people refer to when they use the word "patent" by itself A patent is not available for an idea, but only for its tangible application This, parents are not available for laws of nature, scientific principles, mathematical algorithms, mental process, intellectual processes or formulas Business Method Patents - involve a particular way of doing business that often includes data processing or mathematical calculations Very common in e-commerce American Invents Act (AIA): anyone who has been charged with infringement of certain financial service business method patents has the right (from 2012-2020) to challenge the validity of that patent Patents of Living Organisms - Supreme Court, in 1980, ruled that living organisms could be patented PTO began issuing patents on human genetic material o Design Patent - protects the appearance, not the function, of an item Granted to anyone who invents a new, original and ornamental design for an article o Plant Patent - available to anyone who creates a new type of plant, provided that the inventor is able to reproduce it asexually Requirements for a Patent - to receive a patent, an invention must be: o Novel - invention is not patentable if it has already been Patented Described in a printed publication In public use On sale Otherwise available to the public anywhere in the world o Nonobvious - not patentable if it's obvious to a person with ordinary skill in that particular area o Useful - to be patented, must be useful and must have some current use, need not necessarily be commercially valuable, but being of scientific interest is not enough Patent Application and Issuance o To obtain a patent, inventor must file a complex application with the PTO If patent examiner determines application meets all legal requirements --> PTO will issue the patent If examiner denies application --> inventor can appeal the decision to the Patent Trial and Appeal Board in the PTO and Court of Appeals for the Federal Circuit in Washington During the application process third parties can submit evidence that the invention is not novel For 9 months after a patent has been granted, third parties have broad right to challenge its validity in the PTO (without going to court) After 9 months, patent may still be challenged, but ground are limited to evidence of a prior patent or publication o Priority between Two Inventors - when two people invent the same product: In 2013 - person who invented and put the invention into practice had priority over the first filer After 2013 - AIA changed the law so that the first person to file a patent application has the priority As was the same in most of the world o Prior Sale - an inventor must apply for a patent within one year of selling the product commercially anywhere in the world Purpose: encourage prompt disclosure of inventions Prevents someone from inventing a product, selling it for years and then obtaining a 20-year monopoly with a patent o Provisional Patent Application - can be costly to file a patent, PTO charges for each amendment AIA now permits PTO to charge lower fees to individuals or small entities Provisional Patent Application (PPA): simple, shorter filing PTO permits inventors to make Provides a provable date of filing Once filed, application sits formant for a year, giving inventors to show ideas to potential investors without incurring the full expense of a patent application PPA protection lasts only a year, to maintain protection after that, inventor must file a nonprovisional patent application o Duration of a Patent - valid for 20 years from the date of filing the application (except design patents which are valid for 14 years from date of issuance) Approval can take 3-6 years from the date of filing I the case of exceptional delays, can request extension to the patent AIA allowed PTO to set up a Track One system that permits inventors to buy their way to the front of the line by paying additional fees $4,800 for large companies, $2,400 for small Supposed to be decided within one year Only 10,000 Track One applications are accepted in a year o Infringement - patent holder has exclusive right to use the invention during the term of the patent Holder can: Prohibit others from using any product that is substantially the same License the product to others for a fee Recover damages from anyone who use the product without permission o Patent Trolls: people who buy portfolios of patents for the purpose of making patent infringements claims Request injunctions to prevent the use of the technology during litigation, potentially harming a multimillion-dollar product They don't use the technology themselves, so they don't worry about a cross-injunction preventing them from using it Oftentimes, hoping that even legitimate users will pay them just to go away Have become a problem because patent office is overworked with such a big caseload that they don't check for novelty of patents --> many patents that are issued are not for new inventions o International Patent Treaties - many patents are filed in more than one country, this used to be difficult since each country had its own system, now there are treaties that facilitate this process drafted by the World Intellectual Property Organization (WIPO) of the UN Paris Convention for the Protection of Industrial Property (Paris Convention) requires each member country to grant to citizens of other member countries the same rights under patent law as its own citizens enjoy Patent offices in each member country must accept and recognize all patent and trademark applications filed with it by anyone who lives in any member country Inventors who file in one country have up to one year to file elsewhere and still maintain patent protection Patent Law Treaty requires that countries use the same standards for the form and content of patent applications (whether submitted on paper or electronically) Reduced the procedural conflicts over issues such as translations and fees Patent Cooperation Treaty (PCT) is a step toward providing more coordinated patent review across many countries Inventors who pay a fee and file a so-called PCT patent application are granted patent protection in the 143 PCT countries for up to 30 months During this time, they can decide how many countries they actually want to file in Once PCT application is filed, one of the major patent offices prepares and "international search report" and issues a nonbinding opinion on whether the invention is patentable Helps applicants asses the patentability of the invention and provides persuasive evidence to national patent offices Inventors who wish to proceed internationally must have the report translated and file it with applications and fees in whichever countries they want Patent Prosecution Highway - bilateral agreements between US PTO and 16 other patent offices Any country that joins the World Trade Organization (WTO) must agree to trade-related aspects of intellectual property rights (TRIPS) This agreement doesn't create an international patent system but its requires all participants to meet minimum standards for the protection of IP Individual countries can decide how to achieve that goal themselves European Union is in the process of developing a single European patent that would require only one application Copyrights The holder of a copyright owns the particular tangible expression of an idea, but not he underlying idea or method of operation o Unlike patents, ideas don't need to be novel Copyright Act - protects literature, music, drama, choreography, pictures, sculpture, movies, recordings, architectural works and computer databases/programs "to the extent that they incorporate authorship in the programmer's expression of original ideas, as distinguished from the ideas themselves" A work is copyrighted automatically once it is in tangible form o Registration with the Copyright Office of the Library of Congress is necessary only if the holder wishes to bring suit to enforce the copyright o Lapine v. Seinfield Lapine wrote a book, "The Sneaky Chef: Simple Strategies for Hiding Healthy Foods in Kids' Favorite Meals", about how to disguise vegetables so kids would eat them Strategy: add purees vegetables to good that children like 4 months later, Seinfield wrote "Deliciously Deceptive: Simple Secrets to Get Your Kids Eating Good Food", which featured the same strategy in the same foods Lapine filed suit claiming Seinfield violated her copyright in the content as well as her trademark in the cover design and name District court granted Seinfield's motion for summary judgement and Lapine appealed Issue: Did Seinfield violate Lapine's copyright and trademark in The Sneaky Chef? Copyright infringement - not persuaded that two works are substantially similar in their unique and innovative expression of the idea of sneaking vegetables into kids food through a cook book Pureed vegetables cannot be copyrighted The title's similarity is "scenes a faire" or unprotectable elements that follow naturally from the work's theme rather than the author's creativity The content, when looking at the two books, is quite different as far as focus and style Trademark infringement: marks are not confusingly similar Copyright Term o Today, a copyright is valid until 70 years after the death of the work's only/last living author For works owned by a corporation - lasts 95 years from publication or 120 years from creation, whichever is shorter o Once copyright expires, anyone may use the material Infringement - anyone who uses copyrighted material without permission is violating the Copyright Act o To prove a violation, the plaintiff must present evidence that the work was original AND that either: The infringer actually copied the work, OR The infringer had access to the original and the two works are substantially similar o A court may: Prohibit the infringer from committing further violations Order destruction of the infringing material Require the infringer to pay damages, profits earned and attorney's fees First Sale Doctrine: permits a person who owns a lawfully made copy of a copyrighted work to sell or otherwise dispose of the copy o Still does not permit the owner to make a copy and sell it Fair Use Doctrine: permits limited use of copyrighted material without permission of the author for purposes such as criticism, comment, news reporting, scholarship or research o Faculty members are permitted to distribute copyrighted materials to students, so long as materials are brief and the teacher's action is spontaneous o Parody - parody is a fair use of copyrighted material so long as the use of the original is not excessive Digital Music and Movies o The Prioritizing Resources and Organization for Intellectual Property Act (Pro-IP): permits law enforcement officials to confiscate any equipment used to steal copyrighted material o Recording Industry Association of America (RIAA) developed a strategy of aggressively suing those who download music illegally Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd. Grokster and Stramcast distributed free software that allowed computer users to share elecontric files through peer-to-peer networks, could be used for legal purposes BUT, nearly 90% of the files available for download were copyrighted, the copyright infringement was staggering, they encouraged the illegal use of their software Group of copyright holders sued them claiming they were violating the copyright law by knowingly and intentionally distributing their software to users who would reproduce and redistribute the material Both parties moved for summary judgement Trial court held for Grokster and StreamCast, appeals court confirmed, Supreme Court granted certiorari Issue: were Grokster and StreamCast violating copyright law? Indication that ease of copying songs or movies using the software is fostering disdain for copyright protection Would not be enough if the companies just knew of the wide use of their site for copying these works, but it is clear they encouraged this illegal use by expressing it outright on their newsletter and helping people find content to download, also did not develop any filtering tools to diminish the infringement activity going on There is also clear evidence of actual infringement by users On remand, reconsideration of MGM's motion for summary judgement will be in order o The No Electronic Theft Act - intended to deter the downloading of copyrighted material Provides for criminal penalties for the reproduction or distribution of copyrighted material that has a retail value greater than $1,000, even if the offender has no profit motive o The Family Entertainment and Copyright Act - makes it a criminal offense to use a camcorder to film a movie in the theater Also places criminal penalties on willful copyright infringement that involves distributing software, music or film on a computer network o The Digital Millennium Copyright Act (DMCA): provides that: It's illegal to delete copyright information, such as the name of the author or the title of the article Also illegal to distribute false copyright information It's illegal to circumvent encryption or scrambling devices that protect copyrighted works It's illegal to distribute tools and technologies used to circumvent encryption devices Online service providers (OSPPs) are not liable for posting copyrighted material so long as they are unaware that the material is illegal and they remove it promptly after receiving notice that it violates copyright law This type of provision is called a safe harbor International Copyright Treaties o The Berne Convention requires countries to provide automatic copyright protection to any works created in another member country Doesn't expire until 50 years after the death of the author o 2004 - Congress enacted a law that permits the president to appoint a copyright law enforcement officer charged with the responsibility for stopping copyright infringement overseas For the first time, Congress funded the National Intellectual Property Law Enforcement Coordination Council, established to protect American intellectual property internationally Intellectual Property (continued) Trademarks Trademark: any combination of words and symbols that a business uses to identify its products or services and distinguish them from others o Used by consumers to distinguish from competitors 4 Types of Marks: o Trademarks -affixed to goods in interstate commerce o Service marks - used to identify services, not products o Certification marks - words or symbols used by a person or organization to attest that products and services produced by others meet certain standards o Collective marks - used to identify members of an organization Ownership and Registration - under common law, first person to use a mark in trade owns it o Registration with federal gov't isn't necessary BUT Lanham Act - owner of a mark may register it on the Lanham Act Principle Register o Trademark owner can use "TM" symbol at any time, even before registering, BUT Can only use "R" in a circle symbol once registered o Advantages of registration: Makes mark valid nationally Notifies the public that a mark is in use because anyone who applies for registration first searches the Public Register to ensure no one else has the rights to the same mark 5 years after registration, a mark becomes virtually incontestable because most challenges are barred Damages available under the Lanham Act are higher than under common law The holder of a registered trademark generally has the right to use it as an Internet domain name o Under Lanham Act, owner filed application with PTO PTO accepts the app if the owner has already used the mark attached to a product in interstate commerce or promises to use the mark within six months after filing Applicant must be the first to use the mark in interstate commerce Initially valid for 10 years, but can renew for unlimited number of 10-year terms as last as the mark is still in use Valid Trademarks - to be valid, a trademark must be distinctive - that it, it must clearly distinguish one product from another; words, symbols, phrases, shapes, sounds, colors, even scents can be trademarked o 5 basic categories of distinctive marks: Fanciful marks - made-up words (ex: Kodak) Arbitrary marks - use existing words that do not describe the product (ex: Prince tennis rackets) Suggestive marks - indirectly describe the product's function (ex: Greyhound - implies the bus line is swift) Marks with secondary meaning cannot, by themselves, be trademarked unless they have been used for so long that they are now associated with the product in the public's mind Trade dress - the image and overall appearance of a business or product; may include size, shape, color or texture o The following categories cannot be trademarked: Similar to an existing mark - to avoid confusion, the PTO will not grant a trademark that is similar to one already in existence on a similar product Generic trademarks - no one is permitted to trademark and item's ordinary name (ex: "shoe" or "book") Sometimes, a word begins as a trademark and later becomes a generic name (ex: Zipper, band-aid, etc.) Once a name is generic, owner loses the trademark because the name can no longer be used to distinguish own product from another Descriptive marks - words cannot be trademarked if they simply describe the product (ex: "low-fat", "crunchy", etc.) Descriptive words can be trademarked if they do NOT describe that particular product because they then become distinctive rather than descriptive (ex: Blue Diamond) Names - PTO generally won't grant a trademark in a surname because other people are already using it and have the right to continue Descriptive marks - PTO won't register a mark that is deceptive Scandalous or immoral trademarks Infringement - to win infringement suit, trademark owner must show that the defendant's trademark is likely to deceive customer about who has make the goods/provided the service o In the event of infringement, the rightful owner is entitled to: An injunction prohibiting further violations Destruction of the infringing material Up to 3 times actual damages Any profits the infringer earned on the product Attorney's fees o The Internet challenges IP laws that were not conceived with certain technologies in mind Network Automation, Inc. v. Advanced Systems Concepts, Inc. Network Automation (NA) and Advanced Systems Concepts (ASC) both sold job scheduling and management software, and both advertised on the internet NA sold software under trademarked name Auto- Mate, ASC used ActiveBatch Google AdWords - "Sponsor Links" multiple advertisers can purchase the same keyword ActiveBatch was ASC's trademark, NA purchased it as a keyword So NA ad would come up when someone typed in ASC's trademark Systems alleged this was a violation of its trademark on the word Trail court issued injunction prohibiting NA's purchase of the Google keyword, NA appealed Issue: Has NA violated ASC's trademark by purchasing it as a Google keyword? Argument for ASC: Direct cometitors, their products perform the same function, both advertised on the internet --> NA is deliberatley confusing its customers about whose product ActiveBatch really is When using internet, consumers don't really pay attention to what they click Argument for NA: Today, most consumers are more sophisticated about the internet, always ready to hit the back button if its not what they're looking for Don't form any firm expectations about sponsored links until they see the page The typical consumer for these products is a sophisticated businessperson buying expensive products - they will likely put more effort and care into the search The goal was not to confuse consumers but to allow them to compare its product to ActiveBatch, completely appropriate use of a trademark Federal Trademark Dilution Act of 1995 - prevents others from using a trademark in a way that (1) dilutes its value, even though consumers are not confused about the origin of the product; or (2) tarnishes it by association with unwholesome goods or services Domain Names - internet addresses; 130 million are currently active which makes it difficult to find a distinctive name for a new business o Companies want to own their own domain names and prevent complaint sites (ex: www.ihatestabucks.com) o Cybersquatting Anticybersquatting Consumer Protection Act (ACPA) - permits both trademark owners and famous people to sue anyone who registers their name as a domain name in "bad faith" o ICANN - private, nonprofit, international organization to whom US gov't transferred management of the Internet, including the allocation of names Disputes over domain names can be decided by arbitration under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) rather than litigation under the ACPA To bring UDRP case, the complainant must allege that: The domain name creates confusion because it is similar to a registered trademark The respondent has no legitimate reason to use the domain name The respondent registered the domain name in bad faith If complainant wins --> entitles to either take over the domain name or to cancel it o Theft of a Domain Name - can be convicted under the Computer Fraud and Abuse Act o Trademarking a Domain Name - PTO will trademark a domain name only for services offered on the internet (ex: eBay) Will not trademark a domain name that is merely an address and does not identify the service provided International Trademark Treaties o Paris Convention - if someone registers a trademark in one country, then he has a grace period for 6 months, during which he can file in any other country using the same original filing date o Madrid Agreement - any trademark registered with the international registry is valid in all signatory countries (US included) o Trademark Law Treaty - simplifies and harmonizes the process of applying for trademarks around the world Need only file one application in one language to the national office which sends the application to the WIPO which transmits it to each country in which the applicant would like trademark protection Trade Secrets Trade secret: formula, device, process, method or compilation of information that, when used in business, gives the owner an advantage over competitors When determining if information is a trade secret, courts consider: o How difficult (and expensive) the information was to obtain/how readily available it is form other sources o If the information created an important competitive advantage o If the company made a reasonable effort to protect it Uniform Trade Secrets Act (UTSA) - anyone who misappropriates a trade secret is liable to the owner for o Actual damages o Unjust enrichment, OR o Reasonable royalty o If misappropriation was willful/malicious, courts may award attorney's fees and double damages o Only civil penalties are available under UTSA Certain types of trade secrets cannot be patented, such as customer lists, business plans and marketing strategies o Pollack v. Skinsmart Dermatology and Aesthetic Center P.C. Dr. Pollack owned the PID (Philadelphia Institute for Dermatology) Shawe and Badawy worked for PID as independent contractors, receiving a percentage of revenues from the patients they treated Wilson was Pollack's assistant Pollack tentatively agreed to sell the practice to Shawe and Badawy, but instead they decided to start their own called Skinsmart They leased office space, offered Wilson a job and instructed PID employees to make copies of their appointment books and printouts of patient lists, then abruptly resigned from PID Wilson told patients to reschedule with Skinsmart and the doctors did the same to other patients Pollack filed suit claiming the two doctors had misappropriated trade secrets Issue: Did Shawe and Badawy misappropriate trade secrets? To qualify for protection, the information must be the particular secrets of the complaining employer, not general secrets of the trade It is clear the patient list is a trade secret, worthy of protection Plaintiff must demonstrate that the trade secret has value and importance to him Defendant's acknowledge importance of patient list to PID's business To have the right to the sue for the trade secret, plaintiff needs to show he either discovered or owned the trade secret Plaintiff did so establish this point as well Summary judgement is granted on the issue of liability against defendants Economic Espionage Act of 1996 - makes it a criminal offense to steal (or attempts to steal) trade secrets for the benefit of someone other than the owner, including for the benefit of any foreign gov't Intellectual Property Intellectual Property: any product or result of a mental process that the law protects against unauthorized use Exclusive ("rivalrous") v. non-exclusive ("non-rivalrous") property o Exclusive - real and personal property derive value from their owner's right to exclude or limit use by others It is "rivalrous" One person's use of the property typically prevents another's ability to use it simultaneously o Non-exclusive - IP derives its value from the owner's right to permit many others to use it Its use is non-rivalrous One person's use of the property typically doesn't prevent another's ability to use it simultaneously Patents: Article 1, Section 8 of the Constitution - source of Congress's authority to grant patents o Patent and Trademark Office (PTO) - federal agency that issues and administers patents Patent law protects the tangible expression of an idea NOT the idea itself o Can patent the way in which an idea is manifested, but not the idea itself 3 Types of Patents o Utility patents - what we typically think of when we think of patents; inventions o Design patents - protect item's appearance, not its function o Plant patent - protects new types of plants that can be reproduced asexually Patent Criteria - to obtain a patent, an invention must be: o Novel o Nonobvious - not obvious to a person of ordinary skill in the field o Useful - it must do something NOT synonymous with commercially valuable Duration o Utility patent - 20 years from the date of filing Takes about 3 years for filing process o Design patent - 14 years from date of issuance o Once patent expires, it enters the public domain where it is available and exploitable by anyone International Patent Treaties o Paris Convention for the Protection of Industrial Property Requires each member country to grant citizens of other member countries the same rights under patent law as its own citizens receive o Patent Law Treaty Requires countries use the same standards for form and content of patent applications o Patent Cooperation Treaty Establishes procedure for coordinated multi-country review of patent applications Copyrights - protect creative expression Source of Authority - same for Patent Law Creation and Registration o Copyright is created automatically when a creative work is fixed in a tangible medium of expression Medium of expression = any way in which some creative work can be captured so it can be captured by someone else, and referred back to later on Tangible = doesn't have to mean you can touch it physically o Registration, or use of copyright notice, is required to create copyright, but - Creation by itself provides little legal benefit Ex: owner cannot sue to enforce a copyright unless it is registered Form filed with Library of Congress Copyright notice NOT required anymore, but still a good idea o Can obtain copyrights for a wide variety of works Audio, fonts, films, written works, photography, musical scores, choreography, software/code, etc. Not fashion o Exclusive Rights - copyright gives the copyright owner exclusive rights for the duration of the copyright with respect to: Reproduction Distribution Display Performance Preparation of derivative works o Protects expression, not ideas You cannot copyright an overarching idea (ex: vampires, even certain characteristics) but can copyright one's version of that story (ex: Twilight, etc.) Ownership and Duration o Copyright is owned by the author/creator Lasts 70 years after author/creator's death o OR o Owned by party for whom the work is made, aka a "work made for hire" Ex: principal-agent relationship (like artists for Walt Disney) Lasts the shorter of 95 years from publication OR 120 years from creation 3 types of copyright infringement o Direct infringement Prime facie case Plaintiff owns copyright in the work, AND Defendant exercises one of plaintiff's exclusive rights without authorization Proof of defendant's intent? Not required to prove that defendant knew they were infringing Can be sued for infringement even if didn't know they were infringing/work was copyrighted o Contributory infringement Knowingly inducing, causing or materially contributing to another person's direct infringement Required to prove that defendant knew they were infringing on copyright o Vicarious infringement Defendant has right and ability to control a person engaged in direct infringement, AND Defendant benefits financial from such infringement Defendant has to prove they knew they were benefitting from the infringement Fair Use o Defense to claim of copyright infringement Defense - can be used when you're sued Will only really know if fair use defense is valid if go through court and win o Recognizes that, under certain circumstances, one may lawfully engage in unauthorized exercise of a copyright owner's exclusive rights o To determine whether a defendant's use is fair use courts look at 4 statutory fair use factors Purpose and character of the infringing use Infringing use that is transformative is more likely to be protected Ex: a use that transforms an essential quality of original work (ex: parody) Nature of the copyrighted work Works of greater originality and works intended for publication receive greater protection Amount of the original work used compared to the work as a whole The larger the amount used, or the more essential the amount, the less likely to be fair use The effect on the market for the original work The greater the market impact, the less likely to be protected as fair use Trademarks: combination of words and symbols that a business uses to identify its products or services Types of trademarks o Trademark - identifies source of goods Ex: Nike logo o Service mark - identifies source of services Ex: PWC logo o Third Party's Certification Mark - certifies an attribute of goods or services UL certification for appliances o Collective mark - identifies members of an organization Ex: frat symbol Source of Authority o Trademark Act of 1946 (Lanhan Act) - defines federal trademark law o One can acquire state common law trademark rights by using a mark in commerce Patent law requires you request a patent VS. Copyright has to register the copyright to file to protect it BUT You can acquire rights in a trademark that are protected under state law, just by using it in commerce Creation and Registration o To obtain legal protection, a mark must be in used in commerce o First person to use mark in commerce - "senior user" - acquires state common law protection in the mark Even if someone registers federally and wants to enter a state where someone else has already been using the trademark locally and is protected under state law, they would not be able to enter that state, unless under a different name Must be the senior user for state law to precede the federal law Federal Registration - provides additional benefits o PTO oversees federal trademark registration o Federal registration provided constructive nationwide notice of the trademark owner's claim to the mark Constructive notice = the information is out there and someone who exercises ordinary due care of someone win their circumstance would have discovered this Law will treat you as if you had knowledge of this, even if you didn't Distinctiveness - the degree of legal protection a mark receives depends on its distinctiveness o Inherently distinctive Fanciful Marks - made up words Ex: Exxon Arbitrary marks - real words that have no inherent relationship to the product Ex: Apple, Dial Soap, etc. o Marks that are not inherently distinctive, but can gain that status by acquiring Secondary Meaning Suggestive marks - real words that suggest a characteristic of the goods or services Ex: Downy Fabric Softener, Best Buy Descriptive marks - real words that describe a characteristic of the goods or services Ex: Nantucket Nectars, Newman's Pretzels o Secondary Meaning - when a mark that is not inherently distinctive becomes closely associated, through advertising or longevity, with its related goods or services Mark not legally considered distinctive until it acquires secondary meaning How does this happen? --> Advertising/MARKeting o Generic Terms - inform consumers what a product is, describe a product Ex: soap, beer Cannot by themselves become trademarks for the products they describe must attach something else to it to be a mark o Generic Usage - if an owner fails to protect a mark it can lose its distinctiveness and pass into generic usage Ex: Band-aid, Raisin bran, shredded wheat How to protect mark: sue mark, and write "cease-and- desist" letter to those trying to use one's mark HOWEVER: the fact that consumers use a trademark generically doesn't necessarily mean it has lost distinctiveness Trademark Remedies - a trademark gives its owner the right to prevent others from using the mark to identify products and services o Trademark infringement - owner must prove that: It owns a legally-protected trademark, AND Defendant is using an identical or similar mark in a way that is likely to cause confusion among consumers Network Automation, Inc. v. Advanced Systems Concepts, Inc. Issue: Has network violated Systems' trademark by purchasing it as a Google Keyword Trial court said - it is trademark infringement Appellate court - looked into sophistication of the parties - how likely is it that a typical consumer would get confused Most would be able to recognize sponsored and organic ads Decision: gather more evidence and facts first Overturned and sent back for further proceedings o Trademark dilution - owner must prove that: It owns a famous mark, AND Defendant's use of the mark dilutes its distinctiveness by - Blurring its identification with owner's goods or services, OR Tarnishing its through association with undesirable goods or services
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