HOMEWORK ASSIGNMENT NO.

5: TRADEMARKS
1. What is a trademark?

A trademark, trade mark, or trade-mark is a distinctive sign or indicator, used by an individual, business organization, or other legal entity, to identify that the products or services with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities. A trademark may be designated by the following symbols:

(for an unregistered trade mark, that is, a mark used to promote or brand goods) (for an unregistered service mark, that is, a mark used to promote or brand services) (for a registered trademark) The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, in some countries unregistered rights in a sign may also be enforced. These are often known as 'common law' rights. An unregistered sign is usually only protected within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.

2. What is a trade name?

A trade name, also known as a trading name or a business name, is the name which a business trades under for commercial purposes, although its registered, legal name, used for contracts and other formal situations, may be another.

3. What is a service mark?

A service mark or service mark is a trademark used in some countries, notably the United States, to identify a service rather than a product.[1] When a service mark is federally registered, the standard registration symbol or "Reg U.S. Pat & TM Off" may be used (the same symbol is used to mark registered trademarks). Before it is registered, it is common practice (with some legal standing) to use the service mark symbol.

4. Describe the different classifications for the strength of a mark.

The following classification system for trademark strength is widely recognized as distinguishing between the levels of distinctiveness a mark can obtain. Generally speaking, the more distinctive the mark, the stronger is the protection available. This scheme was originally developed for the purpose of classifying lingual marks, but has since been viewed as a model for trademark protection in non-lingual marks as well. Nonetheless, the following definitions continue to be cast largely in terms of lingual marks. Analogies to non-lingual marks should be made whenever they fit.

A. Coined Terms also referred to as "fanciful" words, these are terms that are invented for the sole purpose of serving as trademarks. Examples include KODAK for photographic equipment, UNIX for a computer operating system, REEBOK for shoes, and XEROX for photocopying equipment. Coined marks receive the highest level of protection, because a coined word has no known meaning and therefore has no possible association with the good or service for which it is used. As a result, infringers of these marks are hard pressed to provide any plausible explanation for their use the mark, leaving the impression that the real reason was in fact a blatant attempt to trade off the goodwill generated by the owner of the trademark.

B. Arbitrary Terms these are names that exist in popular vocabulary, but have no logical relationship to the goods or services for which they are used. The pairing of the mark with the particular category of goods or services should appear to be random. Examples include APPLE for
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computer, BEEFEATER for gin, COMET for kitchen cleaner, and JAGUAR for a car. Whether a word is arbitrary or not has everything to do with the context in which it is used. Obviously, the term "apple" used to sell the rounded edible pome fruit of a tree of the rose family is a generic term, and not trade mark able. Similarly, use of the phrase "Comet Watch" for a newsletter describing the activities of celestial bodies with long tails pointing away from the sun would not be considered arbitrary, but rather suggestive.

C. Suggestive Terms Suggestive trademarks suggest rather than describe qualities of the underlying good or service. "Suggestive" and "descriptive" are not mutually exclusive, since there must be some description in almost any suggestion. However, by going beyond "mere description" the law elevates a suggestive term into the valuable category of "inherently distinctive." Courts have clarified this fine distinction by stating a mark is suggestive if it requires imagination, thought and perception to determine the nature of goods or services in question. Examples of suggestive marks include: ACOUSTIC RESEARCH for stereo loudspeakers, HABITAT for home furnishings, GREYHOUND for bus transportation services, and Q-TIPS for cotton-tipped swabs.

D. Descriptive Terms Trademarks that describe the ingredients, qualities, features, purpose or characteristics of a product or service. These marks are not inherently distinctive, and thus do not receive trademark protection unless they acquire distinctiveness through secondary meaning. Even if they qualify for trademark protection, descriptive marks are the weakest marks possible, and do not receive as broad of legal protection as suggestive, arbitrary and fanciful marks. Examples of descriptive marks include: BEEF & BREW for a restaurant, LASERGAGE for a laser measurement device, PIZZAZZ for pizza, and WORLD BOOK for encyclopedias. In contrast to suggestive marks, a mark that is merely descriptive immediately conveys knowledge of ingredients, qualities, or characteristics with no imaginative leap required. If a composite mark is not 100% descriptive, then the mark as a whole is not "merely descriptive.

E. Generic Terms these are words or symbols that describe the product or service itself as a category, rather than distinguish between competing versions of the product or service. For example, "shredded wheat" is a generic term that refers to the category of breakfast cereals that are composed of layers of crunchy wheat strips molded together into a pillow-type shape. This cereal may be manufactured by Kellogg's, Post or others, and each manufacturer is free to use the term "shredded wheat" to advertise their version of the cereal. To prevent them from using "shredded wheat" would mean they could not equally compete with regard to this product. Thus, generic words are not protected as trademarks precisely because to do so would be akin to granting a monopoly in the product itself, not in a word or symbol.

5. List three (of the eight listed in the Playboy Enterprises case) factors evaluated in determining likelihood of confusion.

a) strength of the mark; b) proximity of the goods; c) similarity of the marks;

6. What is needed to show that a trademark has been infringed? In other words, what are the elements of a cause of action for trademark infringement?

A problem arises, however, when an "infringer" creates or uses a trademark that is identical or confusingly similar to another's legally established mark. This is known as "palming off" or "passing off," and historically the courts were concerned because such infringement was considered a morally reprehensible act ' the focus was accordingly on the improper intent of the defendant. To prove infringement of a mark pursuant to the Lanham Act, a claimant must demonstrate the following:

A. It owns a valid mark, i.e., the mark, registered or not, is entitled to protection

B. The defendant is using the mark, or a confusingly similar mark, in commerce

c.Without permission

D. The defendant's use of the mark in commerce is likely to cause confusion, mistake or deception as to who actually is the source of either the plaintiff's or the defendant's products; and

E. The defendant has no valid defense.

7. General Motors Corp. (US) sells fuel pump modules used inside motor vehicles fuel tanks for the US market, primarily. Through a related entity, General Motors, S.A. (Mexico) it sells a similar pump for the Mexican market. The pumps are made in China for both companies and the mark is affixed on the pumps in China.

A US distributor purchases the pump modules from a US wholesaler that imports the pumps from Mexico.

General Motor (US) claims that its pumps are intended for the US market where the fuel contains ethanol. The fuel sold in Mexico does not contain ethanol. According to GM, this technological reason may cause the Mexican fuel pump modules not to work in the US if the vehicles use fuel with ethanol. Both versions of the pump module are packaged bearing the DELCO brand. Can GM enforce its trademark rights against the distributor? The importer? What measures can GM take with US Customs, if any? How valid is the technological reasoning? Will the technical reason advanced act to enhance the monopolistic position desired by GM for its genuine replacement parts? How does the First Sale (Exhaustion of Rights) Doctrine applies?