Chapter Two: Acquiring Trademark Rights
A. Distinctiveness of Marks

1. Classification of Marks by Strength

Horizon Mills Corp. v. QVC, Inc.

Comments

Problem

Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc.

Comments

Problem

Policy Perspective: Justifications for Varying Degrees of Protection of Marks

2. Trade Dress and Product Design

Two Pesos, Inc. v. Taco Cabana, Inc.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

Comments

Comparative Perspective: International Protection of Nontraditional Marks

Policy Perspective: Trademarks and Public Goods Theory

B. Obtaining Rights by Using a Mark

Allard Enterprises, Inc. v. Advanced Programming Resources, Inc.

Comments

Problem

Perspective: Finding an Unused Mark

C. Registering Marks on the Principal and Supplemental Registers

1. Intent-to-Use Applications

Eastman Kodak Company v. Bell & Howell Document Management Products Company

Comments

Comparative Perspective: Trademark Registration in Foreign Countries

2. Registration on the Supplemental Register

Novartis Consumer Health Inc. v. McNeil-PPC, Inc.

Comments

Problem

3. Non-qualifying Uses

In re Forbes

Comments

Problem

4. Registration of Certification and Collective Marks

In re Florida Citrus Commission

Comments

D. Non-qualifying Types of Marks

1. Offensive, Governmental, and Personal Marks

2. Confusingly Similar Marks and Concurrent Use

In re Coors Brewing Company

Comments

Problem

3. Deceptive, Misdescriptive, and Deceptively Misdescriptive Marks

In re Phillips-Van Heusen Corp.

Comments

Problem

4. Descriptive and Deceptive Geographic Marks

In re JT Tobacconists

Community of Roquefort v. William Faehndrich, Inc.

In re California Innovations, Inc.

Comments

Problem

Problem

Comparative Perspective: Geographic Marks for Wines and Spirits

5. Marks That Are Primarily a Surname

6. Functional Marks: Trade Dress and Product Design

Qualitex Co. v. Jacobson Products Co., Inc.

Comments

Traffix Devices, Inc. v. Marketing Displays, Inc.

Talking Rain Beverage Co., Inc. v. South Beach Beverage Co.

Comments

Problem

Policy Perspective: Availability of Alternatives and Promoting Competition