Trademarks and Avoiding Consumer Confusion: Crash Course Intellectual Property #5

Hi! I’m Stan Muller, this is Crash Course Intellectual
Property, and today we’re talking about trademarks. Trademarks are everywhere, and they can often be confusing, so today we’re gonna talk about why just about everything seems to be trademarked,
and why trademarks are good for business. Mr. Muler! Trademarks don’t intersect with my life,
so I really don’t see why we need to cover this. One, its Muller, and two, just watch the video. [Theme Music] A trademark is any word, name, symbol, or
device, used to identify and distinguish goods from those manufactured or sold by others,
and to indicate the source of the goods, even if that source is unknown. This bit about
unknown sources means that you, as a consumer don’t usually know the person or factory that
actually made the goods you buy. Before the industrial revolution, you often
knew exactly who was making your stuff, and how it was made. If you wanted a hammer, you
went to the blacksmith, and you knew his name. It was probably Smith. These days, brand names assure you that you’re
buying the same product, say toilet paper, that you bought last time you went shopping.
You know, like the stuff with the ripples. Seriously though, getting the wrong medication
because of brand name confusion or counterfeiting could be disastrous. The rational for granting
legal protection for trademarks is that they’re a type of property — it demonstrates to the
purchasing public a standard of quality and embodies the good will and advertising investment
of its owner. In other words, companies expend a tremendous
amount of resources to develop the product, market it to customers, and provide customer
support, and back up their product with warranties. At its core, trademark law functions like a consumer
protection measure. It prevents consumer confusion, and makes it easier for consumers to select and
purchase the goods and services they want. For example, if you go shopping for a new
television, you don’t have to sift through dozens of products that are confusingly similar to Samsung. Knockoffs like Samsong or Wamsung or Sony. You want the Samsung, maybe based on past experience, or the company’s reputation, or even a funny ad. Because the law protects the manufacturer’s
use of the trademark, you can be reasonably sure that the TV you’re picking up at Best
Buy is the TV you saw the Verge reporters freaking out about at CES. Though trademarks
are often classified as intellectual property, the Supreme Court held, in the 1879 trademark
cases, that Congress has no power to protect or regulate trademarks under the intellectual
property clause of the Constitution. Which, as you’ll recall, provides congress with the
authority to regulate and protect copyrights and patents. But this didn’t stop congress
from regulating trademarks – they used the commerce clause of the constitution which
gives them the power to regulate commerce with foreign nations, and among the several
states, and with the Indian tribes. Beyond trademarks, there are also service
marks, which are very similar in that they distinguish one particular service. An example
of a service mark is that roaring lion at the beginning of MGM movies – it’s registered
for motion picture production or something. Trade dress or product packaging is protected
if it’s distinctive and nonfunctional. Like, the shape of a nutter-butter cookie is protected
trade dress. What they oughta trademark is the smell. Some people have registered smells,
but we’ll get to that in a minute. Trademarks are symbols, and since human beings
might use as a symbol or device almost anything that is capable of carrying meaning, just
about anything conceivable thing can function as a trademark. Trademarks can be words like
Kraft or Lego, logos, designs like the Nike swoosh, aromas, like there’s a brand of oil
for race cars that smells like cherries, sounds like:
*to the tune of the NBC ad* bong bong bong or *to the tune of the T Mobile ad* ba da
da da dong or *to the tune of the Intel ad* dong dong
dong dong or *to the tune of the McDonald’s ad* ba da
ba ba baaaa. Even *in the manner of Homer Simpson* “Doh!”
is a registered trademark. You can register colors like UPS brown or
Home Depot orange or Tiffany blue or John Deere green, personal names like Taylor Swift
– T Swizzy’s name is registered for 61 different goods and services, from shoes to Christmas
tree ornaments. Even containers like the Coca-cola bottle or this perfume bottle shaped like
a human skull can be registered. In short they can be almost anything that distinguishes
the product from others and which signifies the source of the goods. Despite the breadth of potential trademark
subject matter, there are some limits on what can be a valid trademark. Recently, a restaurant
in Texas asserted trademark rights in the flavor of it’s pizza. One of the restaurants
former employees allegedly stole the recipe and opened up a competing pizza joint, selling
pizzas that tasted a lot like those made by his former employers. The judge rejected the
claim and dismissed the case, finding that it is unlikely that flavors can ever be inherently
distinctive because they do not automatically suggest a product’s source. Also, functional
product features are not protectable under trademark law. Pizza has only one function
– and that’s to taste delicious. So, there are three requirements for trademarks.
We just discussed the first one – that a trademark has to be a symbol or a device that a court
or the patent and trademark office deems to qualify. The second requirement is that the
mark has to be used in interstate commerce, and the third is that it has to identify the
mark owners goods and distinguish them from those manufactured or sold by others. It has
to be distinctive. Let’s talk about trademarks and what makes
them distinctive in the Thought Bubble. Courts rank trademark distinctiveness along
a spectrum, ranging from unprotectable to highly protectable. At the bottom end of the
spectrum is generic. Generic names refer to stuff like using the word orange for the fruit
or dog for the canine or cheese for… cheese. Descriptive terms simply describe the goods
and convey an immediate idea of what the product is, such as “break and bake” for scored cookie
dough. Suggestive marks require some imagination
or perception to link them to the goods, like Sheikh for middle eastern food or Froot Loops
for circular fruit flavored breakfast cereal. Arbitrary marks are commonly used words used
in unexpected ways – Apple for computers, or Amazon for book sales, or Shell for gasoline.
The most distinctive marks are usually made up words. Fanciful marks are non dictionary
words such as Google for an internet search engine, or Clorox for bleach, or Kodak for
film. Fanciful, arbitrary, and suggestive marks
receive automatic protection upon use because they are considered to be inherently distinctive.
So the owner of the break ‘n bake mark has to show that the consumers identify the product
with Nabisco or Pillsbury or whoever makes the product. I honestly don’t know who makes
it, which isn’t a good sign as to whether it’s acquired secondary meaning. Generic terms are never entitled to protection.
This becomes important when trademarks are gradually assimilated into the language as
common names. Through a process sometimes called “genericide,” the public comes to view
such names as referring to the products themselves rather than as distinguishing the source of
the products. As a result, the name loses its protection. Words like escalator, cellophane,
and aspirin were all once protected by trademark. This process is ongoing today and there are
a lot of modern marks that are threatened by genericide, like Google or Kleenex or Photoshop
or Xerox. Thanks, Thought Bubble. So, once an owner meets the requirements for
trademark and has a protected product they’ll often put a TM or a little r in a circle next
to a product name or brand. The TM shows that the owner is asserting trademark in the product.
When you see the little circle r, that means the trademark has been registered with the
US patent and trademark office. Like in copyright law, one you’re registered with the feds,
you have standing to take your case to federal court and maybe be awarded damages. Once the
PTO is satisfied that the mark meets all the requirements the application is published
for opposition. Anyone who might be affected by the registration has 30 days to oppose
it. If no one opposes, the mark is registered! The owner is then required to file affidavits
of continuous use — basically you have to submit proof you are still selling the product
associated with the trademark. You have to do this every five years to maintain the registration.
Trademark owners can do this forever. This is different than patents and copyrights,
whose trademarks are DOOMED by the limited times language in the intellectual property
clause. So when it comes to trademarks, you have to
use it or lose it. Trademarks are often disputed, and in pretty
much every case, likelihood of confusion is the central issue. The principles set forth in an 1877
Supreme Court opinion in an unfair competition case: “What degree of resemblance is necessary to
constitute an infringement is incapable of exact definition, as applicable to all cases.
All that courts of justice can do, that regard, is to say that no trader can adopt a trade-mark,
so resembling that of another trader, as that ordinary purchasers, buying with ordinary caution,
are likely to be misled.” Every court uses a slightly different set
of criteria for deciding trademark cases. We’re going to talk about the 7th Circuit Court of the
United States’ definition, which has seven parts. Those criteria are: One, similarity between
the marks in appearance and suggestion. Two, similarity of the products. Three, the area and manner of concurrent use, which means where in the United States the product is for sale. Four, the degree of care likely to be exercised
by the consumers. Five, the strength of the plaintiff’s mark
or how distinctive it is. Six, whether there is evidence that people
were actually confused, which is a pretty strong sign that there’s a likelihood of confusion. And seven, whether the defendant intended
to palm off his product as that of the plaintiff. These factors are going to be weighed differently
in individual cases, but the court has often noted that the similarity of the marks, the
defendant’s intent, and evidence of actual confusion are of particular importance. In
addition, the Seventh Circuit has held that a court may consider other relevant factors
such as the party’s marketing channels and whether a trademark is being used in a parody.
Trademark protection is also available under certain circumstances, even in the absence of likely or
actual confusion. The Federal Trademark Dilution Act benefits only famous trademarks trademarks against
a weakening of their valuable distinctive quality. There are two basic types of dilution: dilution
by blurring, and dilution by tarnishment. Dilution by blurring happens when a similar
trademark chips away at the distinctiveness of a famous trademark. For example, someone
selling Apple brand toilet seats or bulldozers will blur the ability of Apple to identify
a single source, even if people buying that stuff didn’t think Apple computer made their
bulldozer. Dilution by tarnishment happens when similarity between a mark or trade name
and a famous mark harms the reputation of the famous mark. For example, and this is
a real case, the guy that uses the trade name Victor’s Little Secret for his store selling
sex related products is likely to tarnish the famous Victoria’s Secret mark. There’s
no real risk of confusion here, but the company Victoria’s Secret is seeking to prevent the
gradual tarnishing of their mark. One major issue with dilution is that famous trademarks
are hard to come by. While there are super marks, like IBM, Google, Budweiser, Microsoft,
courts have typically been hesitant to find less well known trademarks to be famous. It’s
not like YouTube or something, where you can be kind of famous, your trademark has to be
really, actually, IRL famous to attain this status. Trademarks are fascinating, regardless of
whether you are someone who enjoys strolling through the shopping mall with logos firmly
affixed to your bags and coffee and clothes, or whether you believe brands and trademarks
have become so powerful that they have been internalized by modern society and dictate
our aspirations, our self image and our lifestyles. As we’ve watched Don Draper and James Bond
conspicuously guzzle Heinekens, maybe we worry that brands are controlling and corrupting our creative
content. Regardless, trademarks are ubiquitous. Trademarks help us make sound decisions about
the products we need and want. They protect us from knock off goods and allow us to go
about the daily business of our lives more quickly and more efficiently so that we can
sit down tune our Samsung television to PBS on our Comcast cable tuner, watch the season
finale of Downton Abbey, brought to you by Viking River Cruise Lines and Ralph Lauren. Thanks for watching, and as they say in Hank
and John’s hometown, don’t forget to be awesome. Which is not a registered trademark. Which
is how this happened: Tell either Eleanor or Alice not to forget
to be awesome. Oh! Thank you, sir! Crash Course Intellectual Property is filmed
at the Chad & Stacey Emigholz studio in Indianapolis, Indiana, and it’s made by all of these nice
workers for hire. If you’d like to keep Crash Course freely available for everyone forever,
you can support the series at Patreon, a crowd funding platform that allows you to support
the content you love. Speaking of Patreon, we’d like to thank our
Headmaster of Learning Thomas Frank and our Vice Principals Kathy and Tim Philip and Linnea
Boyev. Thank you so much for supporting Crash Course. You can get awesome rewards for your
support. You cannot get ownership of the Crash Course copyright, but you can get the satisfaction
of helping people learn. Thanks for watching. We’ll see you next week.

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100 thoughts on “Trademarks and Avoiding Consumer Confusion: Crash Course Intellectual Property #5

  1. There's a reason why Google never uses the verb 'google' in their public relations or in any video or announcement– they are afraid of their trademark becoming genericized.

  2. Google is not a made up word it's a number it's
    That's a one with 100 zeros after it if you dident feel like counting and if you don't believe me look up
    "Google math number"
    And it should pop up

  3. I feel like i'm watching a corporate propaganda film. 
    Why do you keep framing the whole system as "it's good for the people", when the truth it that it's controlled by rich lobbyists defending their corporate interests?

  4. That is actually the logo of the Czech brewery from the actual town of Budweis that has had many lawsuits over the years with our American InBev Anheuser-Busch Budweiser, but I assume you knew that.

  5. Can someone own a fictional species? A lot of people claim to but you haven't mentioned it under copyright or trademark.

  6. Nice work really. Is just the English transcript of the IP series is so messed up. I wish it was as accurate as most of the other Crash Course series.

  7. Really looking forward to the next video on international I.P.

    But I was wondering if you guys could get more indepth on the subject of infringement. I'm currently making a couple of engineering educational videos and Im trying to be really careful on what to use in them. But since there's so much misconseption on the matter Im trying to get as much info as I can. For example, how does the fact that I reside in Dominican Republic affects the use of I.P. in other contries.

    And how come you (or anyone) can joke about Sony and not get sued?

  8. google is a word that existed before the internet company: it's the number 100000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000

  9. Some years ago, there was a case involving Yves Saint Laurent who wanted to sell a perfume under the name of Champagne. The champagne producers in the Champagne region in France opposed this in court and ended up winning. Given that the 7 criteria mentioned in the video do not apply here, what may be the reasons for such a decision? I should also point out that this lawsuit did not occur in the US as far as I know (I may be wrong. I read about it some 10 year ago). In your opinion, would this lawsuit have had a different outcome in the US?

  10. I thought that Aspirin wasn't generisized, but the trademark was taken away from Bayer, a German company, after WW2.

  11. So this means that the Apple name is not a registered trade mark, and thus free to use, correct? Then how would the Apple-toilet-seat producer get into trouble over potential confusion of the 'ordinary customer'?

  12. I wish you'd addressed the use of trademarks in fictional works. I know there's a lot of confusion among budding writers about whether they're allowed to have their characters drink Coke or name their cat Snape.

  13. I play a trading card game, who's publisher has filed a lawsuit against another trading card game publisher. They claim patent infringement, copyright violation, and trade dress. This is unfortunate because the defendant company has some interesting ideas only usable in an online format.

  14. Mistake: You do not have to renew your mark every five years.  You renew it the first time between the 5th and 6th year … after that, it's renewed every TEN years.

    Please consult with a attorney who does this day in and day out before your next video (no charge) … this is the second mistake I found in the intellectual property videos.

  15. The amount of thing you can trade mark is too much you should only need to protect your logo and your name anything else isn't necessary and reeks of trying to get a monopoly you shouldn't for example be the only one allowed to sell car engine oil that smells like strawberries.

  16. Love the series!!! QUESTION: Can a persom get trade mark over skate board performances/tricks? I don't think so, but I once saw a skatboarding commentator say that a skater did a trademark move and no one else could do the same trick. Seem inaccurate to me.

  17. Google is not a made up word. It is the mathematical term for 10 raised to the hundredth power (a really, really big number). One little picky bit, hopefully that's okay because trademarks are all about picky bits.
    Given that though – Question: Are there other trademarked names that started as actual words that have genericided those original meanings into such obscurity that a learned CrashCourse instructor has no longer heard of them?

  18. Wait, why is there Polish toilet paper at 0:55? I know it's mainly used to polish your ass, but seriously, what was the process that made toilet paper from my, Central European, country appear in a CrashCourse IP video? 😀

  19. I think it would have been interesting and informantive if you guys had gone over how "Greeking" is done with respect to trademarks ("Greeking" = intentionally mangling or obscuring a trademark in an unrelated work).  For example you might see a something like a "Wamsung" TV in The Simpsons, or the Mythbusters go out of their way to tape over the brands of any product they use on the show, or everyone and their mother who does something to obscure the Apple on the back of their laptop (as Stan does in these videos).  I can generally understand that it probably comes from a desire to avoid a lawsuit for somehow "tarnishing" a brand, though I don't see how having a simply having laptop on a desk (either here, on Mythbusters, or The Simpsons) would have any affect on anyone's perception of the brand or trademark.  Is this just done out of an abundance of caution, or is there more to it?

  20. A freelance artist makes a logo, should they just get it copyright protected or trademarked as well? They dont sell products but provide a skilled service.

  21. Concerning the trademark loss of "Aspirin" – Bayer hold the trademark and several factories producing Aspirin with an iron grip untill WW1 got Britain and the USA to seize all property and ownership of Bayer in their territory. After WW1 however they got most things back except that the intellectual property of "Aspirin", as a part of the treaty of Versaille, was given up by Germany, rendering Aspirin as a unprotected term for daily use.

    Another protected trademark Bayer lost after WW1 in the treaty of Versaille was "Heroin" a newly designed med that was meant to replace morphine with the, for today comical, argument that it is "the only NON addictive alternative to morphine".

  22. There's starting to be a lot of product/corporate placement in this series, which is kinda depressing to me.  Most of it is "well integrated" which almost makes it worse, as that means it more directly affects the subconscious.  I know you want to "turn a profit" (or at least cover your costs), but your already making money off of views and then people donating directly because they believe in what you're putting out there.  Corporate adds integrated into shows just…..cheapen things.  I get that they make solid economical sense, and I don't know what I would do in your situation, but this channel is supposed to be an altruistic attempt to educate and create a better world for years (generations?) to come, and production costs are a one time thing while residual income goes in indefinitely.  Obviously I haven't seen your financial statements, and I don't know the the economic realities your facing, but it's just disheartening to me to see it going this route.  I started watching crash course when the original world history was coming out, and just loved it and…I just wanted to say something before it had gone on too long.

  23. Yes, they have that kind of bandwidth in Antarctica. It is mostly sponsored by the governments that set up the research facilities in Antarctica as an antidote for isolation. Connecting researchers to the rest of the world helps their research and morale!
    Thanks for the awesome series!

  24. Wait, if DFTBA isn't trademarked… does that mean anyone else can trademark it, and then you'd not be able to use it, even though it's clearly a de facto trademark of nerdfighteria?

  25. In the pizza example, could the creator of the pizza flavour record the flavour in a distinct recipe and the filled for a copyright? or even a patent? I see how it's not eligible for a trademark but could the creator protect his flavour as something other than a trade secret?

  26. I thought the John Deere green couldn't be trademarked since green is prevalent in farming. Well, that's what was taught in my law class.

  27. It would be hilarious if you got sponsored to mention those products and then just put them all in your copyright episode where you could fire them off and make a billion dollars cx. I know that's not actually what happened, but I can dream.

  28. Great breakdown of Trademarks! Your explanations were clear and fun to watch… Great work!

  29. Shouldn't trademarks only apply to the physical goods and services themselves? It really seems kinda over the top to punish someone for using the Apple logo in their video or forcibly shutting down a business for having a similar name. Anything beyond an identifier to know what you're really buying seems excessive to me.

  30. Fantastic series of videos. I wish I had this about a year ago when I spent hours of research on Copyright and IP. Thank you!


  32. fun fact : the apple logo was used first by the beatles. When the mark "apple" came to be, they made an agreement that the computer manufacturer could use it IF they didn't product any music …

  33. now something like the recipes for the 11 spices used for KFC and the formula for Coca-Cola would be a trademark or trade secret?

  34. On T-Shirts designs, I see people TM part of the phrase and try and control every variation. Example; The may TM "Cute Bunnies Are Born",,,,,,,,,,,, but they are trying to own every variation you can think of. Cute bunnies are born in January, Feb., March, 1995, 2000, in the Spring and so on. What do you think of this??

  35. Intelectual property is a spook, in order for something to be property it must be scarce, ideas are technicaly infinite. IP laws are just government protected monopolies.

  36. So, if I wanted to make a game company named using the term creamsicle (not alone— just as a part of the name) would that count and infringement? It’s just cream and sickle, so i’m confused. Also, what if I spelled it creamsickle? That’s not trademarked, and my goal would not be even close to impersonating them.

  37. Pakistan based IP Law Firm.

    We provide services related to the registration of trademark, copyright, patent and design in Pakistan.

  38. Given that Trademarks do not need to be Registered , how does one be sure of availability …..Is there such a thing as owning your Brand Name via Common Law ..Is it the same with Patents in terms of being sure of availability?.Thanking You

  39. The Budweiser logo at 9:25 is actually the logo of a different European beer completely unrelated to the one marketed by AB-InBev in the U.S. If I recall correctly, there has been a lot of litigation surrounding the brand name in Europe, ultimately leading to a settlement.
    For that reason, the American beer–otherwise completely identical in bottle design–is simply known as "Bud" in European countries; they sell it alongside Budweiser Budvar.

  40. Great AND very entertaining introduction video about trademarks! The only thing to add is the need to do what is called COMPREHENSIVE RESEARCH first to avoid infringement of existing goods and services in sound, appearance and meaning – when starting a business.

  41. Thanks for making this series!! I am learning about these topics for my job and this was a great introduction. 🙂

  42. I love this video! I wish I had seen it before I started my business years ago because I got a cease and desist and had to change my company name. So, this time I did what is called comprehensive research. There was no way I was going to to change my name again. The new name I thought up was proved by the trademark company, not to be available, so the next name we researched and it was available. At least it only cost a a few hundred $, and a week, instead 4 years and $230,000 in lost sales. Sure it cost more to hire a research company, but when I saw the hundreds of pages of research that was done, and went over it with a trademark attorney – we knew we'd be able to keep the new name.

  43. Very relatable! Great job! I ended up having to swtich my business name, completely re-brand after already investing $5k into the business. I couldn't even sell what I had because another company already owned the name I wanted. Who I originally hired to file the trademark for me said they did research to be sure I was clear but clearly their research was not that great. I got rejected. I came across a different trademark company who I then hired to help me re-brand. They did comprehensive research, which is when you research for similarities at the federal, state and common law level. Long story short, they did a great job and now I have reached registration. It's been a roller coaster. Please be sure you get comprehensive research before starting your business!!!! The struggle of not investing into your business sooner is not worth it.

  44. Wow, 9.6M followers. I am surprised at the channels on YouTube that get so many followers. This channel has more followers than Athlean-X which had the highest following of anything in my subscribers feed.

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