You Should Put That on a T-Shirt: The Doubtful Status of Promotional Material in Trademark Law

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Publisher: LexisNexis
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ISBN: 9781522110774
Publisher: LexisNexis
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Looming in the corner throughout this article is "the elephant in the room": enforcing your trademark against someone using it on promotional goods. Courts and academics alike have long been divided on this controversial issue, and a détente seems unlikely.

Some commentators reason that no one should need permission to place your mark on T-shirts, stickers and such, because consumers have the right to show their affection for it. Otherwise, you will have a trademark monopoly extending way beyond your primary business. And if consumers just want your brand on goods and don't care who makes them, how can they be confused? What's the harm?

In fact, because this attitude could harm both trademark owners and the public, the authors propose a potentially workable approach. It could well satisfy consumer desires, protect trademark rights and help competitors know when a license is necessary.

Readers concerned about this underlying conflict should check out the discussion in Section VII. Watch out for the elephant's trunk, though. It's unpredictable . . . .

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Table of Contents

TABLE OF CONTENTS



I. Introduction



II. Laying Out the Issues



III. T-Shirts and Tote Bags: The Epic Macy's v. Strategic Marks Struggle



IV. Obtaining Trademark Rights from Promotional Goods

A. Use on Promotional Goods May Establish Trademark Rights for the Promotional Goods Themselves

B. Use on Promotional Goods Is Not Use in Commerce for the Goods or Services They Promote

C. Use on Promotional Goods Can Show Trademark Strength or Secondary Meaning



V. Barriers to Obtaining Trademark Rights from Use of Material on Promotional Goods

A. Lack of Distinctiveness of Material on Promotional Goods

i. Ornamental Material

a. Ornamentation in Trade Dress, Design Patent and Trademark Law

b. Ornamental Words

c. Secondary Source Exception for Pre-Used Marks

ii. Informational Material

B. Aesthetic Functionality

C. Goods in Trade



VI. Likelihood of Confusion from Use of Mark on Promotional Goods

A. Relatedness of the Goods

B. Similarity of the Marks

C. Trademark Fame



VII. Looking the Elephant in the Room Straight in the Eyes

A. Tension Between Trademark Owners and Competitors

B. Consumers, Confusion and Promotional Goods

C. Harm to Goodwill

D. Proposal: Likely Confusion from Related Promotional Items

E. Dilution



VIII. Conclusion



IX. Coda