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Lesson 26 - Trademark 1:

Overview and Definition

Summary and Overview: This unit will cover another species of "intellectual property" law - trademark law, the law governing the use of "brand names" and other words or symbols associated with goods or services. We'll look at the law governing the use and misuse of these words and symbols, along with the general guidelines concerning when it's proper, and improper, to use a trademark that belongs to someone else. Finally, we will cover the special kinds of trademark issues that have arisen, and are likely to arise, on the Net.

What is a trademark?

Coca-Cola. Velveeta. Microsoft Windows. Netscape. JiffyLube.

We have seen that copyright law does not, generally speaking, cover individual words or short phrases. So, for example, the Kraft Corporation cannot protect, under *copyright* law, the word "velveeta"; it can't, that is, claim that you are infringing its copyright in the word "velveeta" if you use the word any way that you'd like - you can call your next novel (or your Web page) "The Velveeta Connection," if you'd like, or put "Better than Velveeta" in you .sig file, or even call the cheese that you sell "velveeta," and there's nothing that Kraft can do *under copyright law* to stop you.

But that is not to say that there is *nothing* that Kraft Corporation can do to restrict your use of this word. Velveeta may well be a protectable trademark - in fact, it is a protectable trademark - and as a result Kraft *can* stop you from using that word in certain ways (but not *all* ways) under trademark law.

First, what is a trademark? Words, symbols and designs, sounds, distinctive colors - virtually anything that can be used to identify specific goods or services and distinguish them in the market from other similar goods or services - is *potentially* a trademark. But you can't eat potential, as one sage put it - to actually be protectable as a trademark the word or symbol or whatever must fulfill three basic criteria:

  1. It must be in actual *use* as an identifier of particular goods or services: you can't get a trademark in some great new name you've come up with for your new product until you actually start using that name to identify that product.

  2. It has to be in some way distinctive, not what courts call "ordinary" or "merely descriptive" or "generic": you can't use trademark to protect the common name of your product - say, the name "Modems" for the modems you are selling (because that is a generic term) nor the phrase "Tasty donuts" (which merely describes the donuts).

  3. Finally, the mark must not be "confusingly similar" to anyone else's trademark that is already in use.

When are marks "confusingly similar"? When "reasonable consumers" would be confused as to the identity of the goods or services being labeled - when they would associate products or services together that in fact have no association.

The use of the word "Ritz" for a brand of crackers can be a trademark - even though there is also a hotel chain that uses the same name, because a reasonable consumer would not be confused into thinking that there was any association between these two very different kinds of goods. Similarly, Lexus is a protected trademark for a kind of automobile; even though it is similar to the pre-existing "Lexis" trademark used by the legal database supplier, it is not *confusingly* similar because the reasonable consumer would not think that a supplier of legal databases suddenly went into the car manufacturing business (or at least that's what a court has said). Lexus might, however, have had problems if they were labeling not automobiles but, say, magazines; the magazine market and the database market are a lot closer together, and it would be a lot easier to argue that consumers *would* associate the magazine with the database because a similar name was used.


authors:
Larry LessigDavid PostEugene Volokh



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