Class Notes (808,754)
United States (313,251)
PUBPOL 373 (27)
Frey (27)
Lecture 3

PUBPOL 373 Lecture 1: October 27th Reading Notes

5 Pages
Unlock Document

Duke University
Public Policy Studies

March 9 Reading Notes What Counts as a Trademark?  Trademark registration has been obtained for smells (for perfumes) and sounds (the famous NBC chimes), but tastes (for drinks) have been more difficult to register. The trademark prosecution process requires that the mark be submitted and published. How do you publish a taste? Two Pesos, Inc. v. Taco Cabana, Inc.  Whether the trade dress of a restaurant may be protected under the Lanham act, based on a finding of inherent distinctiveness, without proof that the trade dress has a secondary meaning  Trade dress is the total image of the business. Taco Cabana’s trade dress may include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the décor, the menu, the equipment used to serve food, the servers’ uniforms and other features reflecting on the total image of the restaurant  Two Pesos adopted a motif very similar to the foregoing description of Taco Cabana’s trade dress. Two Pesos restaurants expanded rapidly in Houston and other markets, but did not enter San Antonio. In 1986, Taco Cabana entered the Houston and Austin markets and expanded into other Texas cities, including Dallas and El Paso where Two Pesos were also doing business.  Taco Cabana has a trade dress; taken as a whole, the trade dress is nonfunctional; the trade dress is inherently distinctive; the trade dress has not acquired a secondary meaning in the Texas market; and the alleged infringement creates a likelihood of confusion on the part of ordinary customers as to the source or association of the restaurant’s goods or services.  The trial court held that Two Pesos has intentionally and deliberately infringed Taco Cabana’s trade dress  Taco Cabana’s trade dress was not descriptive but rather inherently distinctive, and it was not functional  Trade dress should receive limited protection without proof of secondary meaning. Petitioner argues that such protection should be only temporary and subject to defeasance when over time the dress has failed to acquire a secondary meaning.  Unregistered marks did not enjoy the presumptive source association enjoyed by registered marks and hence could not qualify for protection under Lanham without proof of secondary meaning  There are plainly marks that are registrable without showing secondary meaning. These same marks, even if not registered, remain inherently capable of distinguishing the goods of the users of these marks.  Where secondary meaning does appear in the statute, it is a requirement that applies only to merely descriptive marks and not to inherently distinctive ones.  Adding a secondary meaning requirement could have anticompetitive effects, creating particular burdens on the startup of small companies. It would present special difficulties for a business, such as respondent, that seeks to start a new product in a limited area and then expand into new markets. Denying protection for inherently distinctive nonfunctional trade dress until after secondary meaning has been established would allow a competitor, which has not adopted a distinctive trade dress of its own, to appropriate the originator’s dress in other markets and to deter the originator from expanding into and competing in these areas.  The first user of an arbitrary package, like the first user of an arbitrary word, should be entitled to the presumption that his package represents him without having to show that it does so in fact. Wal-Mart Stores, Inc. v. Samara Brothers, Inc.  Judy Philippine duly copied, with only minor modifications, 16 of Samara’s garments, many of which contained copyrighted elements. In 1996, Wal-Mart briskly sold the so- called knockoffs, generating more than $1.15 million in gross profits.  A buyer for JCPenney called a representative at Samara to complain that she had seen Samara garments on sale at Wal-Mart for a lower price than JCPenney was allowed to charge under its contract with Samara  Nothing in Lanham explicitly requires a producer to show that its trade dress is distinctive, but courts have universally imposed that requirement, since without distinctiveness, the trade dress would not “cause confusion… as to the origin, sponsorship, or approval of the goods.  With respect to at least one category of mark, colors we have held that no mark can ever be inherently distinctive  A color could be protected as a trademark, but only upon a showing of secondary meaning  Because a color, like a descriptive word mark, could eventually come to indicate a product’s origin, we concluded that it could be protected upon a showing of secondary meaning.  In the case of product design as in the case of color, we think consumer predisposition to equate the feature with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs – such as a cocktail shaker shaped like a penguin – is intended not to identify the source, but to render the product itself more useful or more appealing.  Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.  Competition is deterred, however, not merely by successful suit but by the plausible threat of successful suit, and given the unlikelihood of inherently source-identifying design, the game of allowing suit based upon alleged inherent distinctiveness seems to us not worth the candle  The producer can ordinarily obtain protection for a design that is inherently source identifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright for the design – as, indeed, a respondent did for
More Less

Related notes for PUBPOL 373

Log In


Don't have an account?

Join OneClass

Access over 10 million pages of study
documents for 1.3 million courses.

Sign up

Join to view


By registering, I agree to the Terms and Privacy Policies
Already have an account?
Just a few more details

So we can recommend you notes for your school.

Reset Password

Please enter below the email address you registered with and we will send you a link to reset your password.

Add your courses

Get notes from the top students in your class.