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Court lays out building blocks of trademark law

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

In October 2018, the U.S. Court of Appeals for the Federal Circuit released an opinion in a trademark dispute between Converse and certain shoe competitors over Converse's Chuck Taylor All Star sneaker, sold since 1932 and registered as a design trademark in 2013. The legal and factual details of this case are complex, but the opinion describes clearly basic concepts of trademark law.

Trademarks

A trademark is a protective intellectual property right to exclusive use of a brand, logo, phrase, shape, color, sound, scent or product appearance or design to distinguish the source or manufacturer of a product in the marketplace. Trademark rights arise from a mark's use alone, called common-law rights, and they may also become registered with the U.S. Patent and Trademark Office or PTO.

If the PTO approves a trademark registration, the owner may exercise certain rights under federal trademark law that would not otherwise be available like the right to sue for infringement in federal court for damages allowed under federal statute.

Distinctiveness

A mark must be distinctive, which has a "special meaning" in trademarks," according to McCarthy on Trademarks and Unfair Competition, that the mark is "used by a substantial number of people as a symbol to identify and distinguish one source" of the associated product. As the Converse case says, to be protectable, a trademark must be "distinctive of a product's source."

A mark may be "inherently distinctive," an automatic, nonrebuttable designation of distinctiveness for certain marks that are intrinsically distinctive. An inherently distinctive mark is "regarded as capable of serving immediately upon use as a legally recognized symbol of origin," says McCarthy, and may be "arbitrary, suggestive, or fanciful."

If not inherently distinctive (e.g., a word mark that is merely descriptive), to achieve trademark status the mark must become distinctive by acquiring "secondary meaning." Converse cites the U.S. Supreme Court as explaining that secondary meaning attaches when consumers believe that the "primary significance of a [mark] is to identify the source of the product rather than the product itself."

Infringement

The owner of a valid trademark may claim that a competitor has infringed on the trademark when a competitor has used the mark in association with its own product or service and causes the "likelihood of confusion" among members of the public as to the product's source. Put another way, the alleged infringer's use of the mark is likely to confuse the public because of the pre-existing, protected product or service.

We will continue to discuss in this space some of the basic concepts in trademark and other areas of intellectual property law.

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