Federal TradeMark Law
1. The Background and History of Trademark Law Trademark law dates at least as far back as medieval Europe. In those times, “guilds,” or associations of artisans in a particular industry, were granted authority by the governments to control the regulation and conduct of the various industries. In the 14th and 15th centuries, timed with the emergence of merchant and craft guilds, trademark-like symbols and logos started to appear as identifiers across all trades and to stand to identify firms as sources of goods. Local guilds often developed reputations for the quality of their products, and when they did, the names of the towns or regions in which those guilds operated became repositories of goodwill. To maintain that goodwill, guilds needed to be able to restrict membership and identify and punish members who produced defective products.
Guilds required their members to affix distinguishing marks to their products. For example, to indicate the source quarry for clays that make up fine china, the potter’s guild established a mark indicative of the particular quarry. Ceramic goods bearing a mark indicative of a certain quarry might be extolled in the public eye for qualities of durability, translucence, or purity of the whiteness of the resulting ceramic objects. These goods were sought out by the English to populate sideboards and cabinets. Where a company owned a particular quarry, the mark became synonymous with the company itself. These symbols were different from modern marks in that they emerged to benefit the guilds, and were not for the benefit of the production mark owner.
Since that time, both federal and, largely in response to the federal law, Washington state trademark law have each evolved in a manner to reflect the source of origin of marked goods. In more modern times, qualities of a product are more dependent upon the identity of the manufacturer than that which might be based upon the source of the raw materials. For that reason, the trademark, has likewise evolved to a personal right of the manufacturer to identify itself as the manufacturer or distributor of the goods. Identification of the source of goods remains, at its heart, a legal device for consumer protection. For the federal law, this legal device of trademark is defined by the Lanham Act.
As can be readily understood, a mark is created in a market where it is known. So, under the common law, if a product or a service are sold within a specifically defined geographic area and referring to the same source of goods or services, the act of sales is enough to create rights in the mark within that geographic area. As either a federal or a state registration are each based upon those sales occurring first, the registration simply promulgates the right to the mark in the larger geographic area defined by the jurisdiction. Thus, if a butcher shop uses the trademark “No Baloney” in Spokane, Washington, the mark is only protected where it is known, i.e. within the Spokane area. Should that butcher register “No Baloney” meats with the state of Washington, the mark is now “known” anywhere within the state, even in Seattle where its meats may never have been sold. Federal registration would expand that to the whole of the United States, provided in each case there is no senior mark already known in any particular geographic region within the jurisdiction. Common law rights always trump registration so long as those common law rights are also first in time.
2. Federal Trademark Law Under the Lanham Act U.S. Trademark Law is mainly governed by the Lanham Act. “Common Law” trademark rights are acquired by means of state law, such as that of Washington, and exist automatically when a business uses a name or logo in commerce, and these rights are enforceable in state courts. Marks registered with the U.S. Patent and Trademark Office are given a higher degree of protection in federal courts than unregistered marks - both registered and unregistered trademarks are granted some degree of federal protection under the Lanham Act 43(a). Trademark law protects a company's goodwill, and helps consumers easily identify the source of the things they purchase.
In principle, trademark law, by preventing others from copying a source-identifying mark, reduces the customer's costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product. The law thereby encourages the production of quality products and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale.
Issues attach to the selection and promulgation of marks. Remembering that by ascribing rights to an entity for the exclusive use of any combination of words, the registrant is removing those words from the public’s use. For that reason, particular words may not be used as the public’s rights to those words is generally superior. In each federal registration, the United States Patent and Trademark Office (“Trademark Office”) stands in the shoes of the public to represent the public’s right to its lexicon. To that end, for a mark to be taken from the public, it must be sufficiently distinctive to uniquely identify the source of goods rather than to be broad and necessary for the public’s use as a descriptive adjective.
A device (such as a word or a logo) can only be considered a trademark or a service mark if it is distinctive. The Trademark Office may deny a registration application is where the words are not sufficiently distinctive to warrant removal from the lexicon. The public should always have the right, for example to describe “ice cold” beer and an applicant seeking that “ice cold” mark would have their application rejected for that reason. A distinctive device is one that is capable of distinguishing the goods or services upon which it is used from the goods or services of others. A non-distinctive device is one that merely describes or names a characteristic or quality of the goods or services. The distinctiveness of a device can generally be categorized into one of five categories which fall along a spectrum of distinctiveness. From most distinctive to least distinctive, these categories are
· fanciful,
· arbitrary,
· suggestive,
· descriptive (including surnames), and
· generic.
The “strength” of a mark is determined in part by where it falls on this spectrum. Fanciful marks are considered stronger than suggestive marks, and therefore are granted greater protection by the courts. Devices that are fanciful, arbitrary, or suggestive are considered distinctive enough to function as trademarks. On the other hand, if a device is descriptive, the device can function as a trademark or service mark only if it has obtained secondary meaning. Generic devices such as the above-described “ice cold” beer, can never be a trademark.
· Fanciful marks: Fanciful marks are devices which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark. For example, “Kodak” had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary. In fact, it was the sound that George Eastman asserted his “Brownie” camera made when a photographer operated the shutter.
· Arbitrary marks: An arbitrary mark utilizes a device having a common meaning that has no relation to the goods or services being sold. Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Stephen Jobs selected “Apple” because of its apocryphal connection to Newton’s assertion of the law of gravity when struck by an apple while reclining beneath the tree.
· Suggestive marks: Suggestive marks are marks that suggest a nature, quality or characteristic of the goods and services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Despite the fact that suggestive marks are not as strong as fanciful or arbitrary marks, suggestive marks are far more common as a suggestive mark plants a seed in the mind of consumers as to the nature of the goods and thus requires fewer marketing and advertising expenditures to build brand awareness.. A suggestive trademark requires a subtle leap in thought (or as courts often put it, “imagination, thought and perception”) for the consumer to reach a conclusion as to the exact nature of the goods. Citibank (financial services), Greyhound (bus lines), Jaguar (automobile), and Playboy (magazine) are examples of well-known suggestive trademarks. Descriptive marks, in contrast, allow one to reach that conclusion without such imagination, thought or perception. Putting this distinction into practice clearly is one of the most difficult and disputed areas of trademark law.
· Descriptive marks: Descriptive marks (or more properly, “merely descriptive marks”) are devices which merely describe the services or goods on which the mark is used. If a device is merely descriptive, it is not a mark at all, since it does not serve to identify the source of the goods or services. A descriptive trademark is a word that identifies the characteristics of the product or service to which the mark pertains. It is generally an adjective or adjectival phrase such as “ice cold” beer. Trademarks that are merely descriptive, are not entitled to trademark protection and all the benefits that go along with it. In particular, they wouldn’t be entitled to registration on the principal register of the Trademark Office. Instead, the applicant is allowed to enter the mark on the supplemental register, which does not carry with it the ability to claim exclusive rights to use that mark in connection with your goods and services recover attorney’s fees and statutory damages in the event of a federal court lawsuit and other benefits and presumptions that go along with ownership of a distinctive mark. But realize, such is not the end of the story because a mark can move from the supplemental register to the primary register with the passage of time and events that lend an acquired distinctiveness.
3. Protection for Marks That Are Not Sufficiently Distinctive In order to move to the primary register, the public must recognize that through its own marketing and sales, the owner of the good or service mark has lent the mark an acquired distinctiveness. Acquired distinctiveness is when the consuming public begins to recognize that mark as the source of the particular goods or services, as opposed to the term or adjective describing exactly what it is your goods or services are. A mark acquires distinctiveness through extensive use over a long period of time, extensive advertising or monetary expenditures on marketing or other continuous use of the mark. The acquired distinctiveness is expressed as achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this “second meaning” (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed. The acquisition of secondary meaning is often proven through the use of consumer surveys. An example of a mark that acquired distinctiveness is “Digital” for computers;
A subset of descriptive marks are marks that derive from surnames. Goodyear tires are named after Charles Goodyear, the inventor of a process for vulcanizing (also a trademark, though not descriptive) rubber. Such surname-derived marks are treated the same as descriptive marks under U.S. trademark law. As a result, surnames are not given protection as trademark until they achieve secondary meaning through advertising or long use. A trademark is “primarily a surname” if the public would recognize it first as a surname, or if it consists of a surname and other material that is not registrable. Once a surname achieves secondary meaning, the mark is protectable as a trademark. Others cannot use the mark on confusingly similar goods, even if they have the same name.
Just as a descriptive mark can move, in the public mind from being descriptive to acquiring a second meaning and being registrable as a valid mark, a valid trademark can become generic if the consuming public misuses the mark sufficiently for the mark to become the generic name for the product. A prime example of former trademarks that became the generic name for a product is Aspirin. While still a Bayer trademark name for acetylsalicylic acid in about 80 countries, including Canada and many countries in Europe, a U.S. Court declared “Aspirin” to be generic. Current trademarks that were once considered to be candidates for becoming generic are Xerox and Kleenex. The process of moving back to a valid mark, in the public mind is similar to that of acquiring secondary meaning. In response, Xerox has spent a great deal of advertising money to prevent misuse of its mark. By doing so, Xerox has likely avoiding the loss of its trademark.
The tension between the doctrines of descriptiveness and acquired distinctiveness is one of the most frequently considered in trademark law. In the 1911 case of Standard Paint Co. v. Trinidad Asphalt Manufacturing Co., 220 U.S. 446 (1911), Standard sold roofing materials under the registered trademark RUBEROID and sued Trinidad for trademark infringement and unfair competition based on its sale of competing roofing materials under the name “Rubbero.” Standard alleged that it had used the “Ruberoid” term for more than twelve years, had advertised its products extensively under the “Ruberoid” name, and had built up a large and valuable trade under “Ruberoid” in the United States and internationally. Despite these facts, the Court held that “Ruberoid” was technically not a valid trademark because it was a descriptive term. A descriptive term should be available for use by all competitors to describe their products, and only a distinctive term that indicates source qualifies as a trademark. In making this determination, the Court looked to the dictionary, which defined the word “rubberoid” as a name for an imitation of hard rubber. Although Standard’s roofing materials contained no rubber, the Court found that the term was nonetheless descriptive rather than suggestive, insofar as it connoted rubber-like properties, such as water impermeability, that characterized the roofing materials. Moreover, misspelling the word “rubberoid” as “Ruberoid” did not change its descriptive nature and thereby render it a valid trademark. As such, “Ruberoid” was not a “technical trademark” under the Trademark Act of 19058 (which then protected only purely fanciful and arbitrary marks).
4. Deceptive Marks Will Not Be Afforded Registration A term that is deceptive can never be protectable as a trademark, and may even be subject to an injunction to prevent its use. A term is deceptive when it suggests a quality or degree of quality that the product does not actually have and that would be “material,” meaning it would likely influence a purchaser’s decision about whether to purchase the goods in question.
While not entirely apt as it was not decided strictly under trademark law, the 1919 case Brougham v. Blanton Manufacturing Co., 249 U.S. 495 (1919) stands as explanatory of deceptive advertising in a trademark. Blanton sold oleomargarine under the trade name “Creamo.” At one time, the product had contained 30% cream, but it did not contain any cream at the time of the suit. The Court found that the use of the word “Creamo” was not permissible. However, in doing so, it actually relied upon meat inspection laws, not trademark laws. The mark had been registered as a trademark since 1908 and had been used since 1904; the case was considered in 1919, by which time the product contained no cream. The Department of Agriculture took action to prevent further use of the mark and the Court upheld that action, agreeing with the government that the use of the word “Creamo” “is deceptive and induces the belief that cream is a substantial ingredient of the oleomargarine.”
Another such case, decided in 1922, was Federal Trade Commission v. Winsted Hosiery Co., 258 U.S. 483 (1922). In that case, the Court considered whether the labels “Natural Merino,” “Natural Wool,” “Natural Worsted,” “Australian Wool” and the such similar marks were deceptive when the underwear upon which they appeared contained only a small percentage of wool, and whether Winsted could use those terms. The FTC had filed a complaint under Section 5 of the Lanham Act of September 26, 1914, against the company for deceptive advertising. After appropriate proceedings, the District Court issued an order directing the company to cease and desist from use of the labels. The Second Circuit reversed the ruling, finding the use of such terms as outside the reach of Section 5, in part because members of the trade were not deceived. The Supreme Court the reversed the Second Circuit, noting that the FTC found as fact that the labels were literally false. The Supreme Court rejected the defendant’s contention that the misrepresentation of knit underwear was so common in the underwear trade that most retailers knew that “Merino Wool” did not imply 100% wool. Lying about the content, even if such was the practice of the industry and accepted among competitors, was still lying and, thus, did not make these wooly representations any less unfair as a method of competition. The industry was not the yardstick by which one measures deception; the question was whether the public would be deceived. Because the labels were deceptive to the public, their use was not permitted.
5. Securing Registration of a Federal Mark Once acquired, trademark rights may be registered with the USPTO. The Lanham Act gives a seller or producer the exclusive right to “register” a trademark, 15 U.S.C. § 1052, and to prevent his or her competitors from using that trademark, § 1114(1). Trademark protection depends on use in commerce, not registration. Both registered and non-registered trademarks are both eligible for protection under the Lanham Act. However, registration (on the “Principal Register”) affords several advantages:
· Nation-wide trademark rights
· A registered mark is presumed to be a valid trademark
· The owner listed on the registration is presumed to be the true owner of the trademark rights
· Presumption that the mark has not been “abandoned” through non-use
· Access to Federal Courts for litigating trademark infringement
· “Incontestability.” After five years of unopposed registration, a trademark is eligible to become “incontestable.” An incontestable mark cannot be attacked on the grounds that it is “merely descriptive.”
· Constructive notice - that is, infringers cannot claim that they were unaware of a registered trademark
· Enhanced remedies for infringement, including the possibility of triple damages and criminal penalties for counterfeiting (note that counterfeiting is a more culpable type of infringement)
· Right to have the U.S. Customs Service prevent others from importing goods bearing infringing marks
Process of application for Federal trademark registration Trademarks may be registered online. The USPTO charges a $275 fee for online trademark applications. The process takes about 6 months from initial application to final registration. It is a general practice to hire a trademark lawyer to file the application on behalf of the future owner.
Once the application is filed, it sits in a queue for a few months. Eventually, a USPTO Trademark Examiner will examine the application according to the rules of the Trademark Manual of Examining Procedure (“TMEP”). The process is very arcane and substantial compliance with the statutory process will not be adequate to protect rights. The Applicant can expect that the Trademark Examiner will require the applicant to have sufficient knowledge of relevant parts of the TMEP. The whole of the TMEP is available online and in a text-searchable format at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/current/d1e2.xml.
If the Trademark Examiner identifies problems with the applications, the applicant will be sent a “preliminary rejection” indicating the nature and effect of the noted problem, oftentimes with citation to the TMEP. The applicant will then have 6 months to file a reply with arguments in favor of her trademark application. The responses themselves generally need to be placed in terms that are cognizable by the Trademark Examiner. For these purposes, knowledge of the TMEP is irreplaceable with specious and far-ranging responses. (Important, as well, is the terminology if the applicant will later seek to overturn the Examiner’s decision before the Board or subsequently in the Federal Circuit Court of Appeals.) If the Trademark Examiner is persuaded by the reply arguments, the application will be granted registration. If not, a “final rejection” will be issued.
When an application is allowed, it moves on to “publication” in the Trademark Official Gazette. Once published, there is a 30-day opportunity for other companies to contest the registration based upon factual issues likely not known to the Trademark Examiner at the time of the allowance. If no appeal is filed, the registration is finally issued.
If the registration receives a final rejection from the Trademark Examiner, the applicant may appeal the rejection to the Trademark Trial and Appeal Board. Likewise, if the application is opposed by a third party, the appeal will be reviewed by the Trademark Trial and Appeal Board.
Actual Use vs. Intent to Use An application for registration may be based upon “actual use” in commerce (a §1(a) registration) or upon a bona fide intent to use (“ITU”) the mark in commerce (§1(b) registration). An ITU application is a placeholder. It will not be allowed to register until the applicant actually begins using the mark in interstate commerce. The value of ITU is in establishing priority—that is, determining which business first acquired the trademark rights.
Trade Dress Trade dress is a variant of a trademark and like trademarks, distinctiveness is the metric by which the validity of the trade dress is adjudged. The 1992 case of Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (1992) is an instructive primer as to trade dress and was decided to lay out, as between conflicting interpretations as among the Circuits, what is and whether an inherently distinctive trade dress—like other trademarks—is protectable without a showing that it has acquired secondary meaning. The Court reasoned that trade dress is an accepted form of trademark, that trademarks are protectable if they have either inherent or acquired distinctiveness, and that there was no reason to apply a different analysis to trade dress. The Two Pesos case dealt with the unregistered trade dress of a Mexican restaurant. The Court noted that the jury had been instructed that the 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.”
While trade dress has traditionally referred to protectable elements of product packaging, it also encompasses the design of a product itself. Product-design elements may include color, size, shape, aroma and even flavor. While the governing case law makes clear that these types of design features can never be “inherently distinctive,” meaning they cannot qualify for trademark protection immediately upon adoption, protection may nonetheless be available down the road if certain hurdles are cleared.
To qualify for trade-dress protection, product-design features must be shown to have acquired distinctiveness or “secondary meaning” among a substantial portion of the relevant purchasing public. Secondary meaning refers to a feature’s acquisition of a new (or second) meaning as a source identifier. Thus, to secure protection, the owner of a product-design trade dress must be able to demonstrate that the consuming public has come to associate the particular product design with the owner. Marketing and advertising typically play a central and critical role in this process.
Source identification is only one part of the conundrum of trade-dress protection. In addition, the Lanham Act requires that a product configuration not be “functional” to obtain protection. A trademark is considered functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.” Functionality thus refers to product-design aspects that go beyond serving exclusively as a source identifier or enhancing the aesthetic appeal of the product, and serves some other purpose such as improving product performance. If the product design is found to be legally functional, protection is not available.
Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another. For example, the shape, color, and arrangement of the materials of a children’s line of clothing can be protectable trade dress (though, the design of the garments themselves is not protected), as can the design of a magazine cover, as in Two Pesos, the appearance and décor of a chain of Mexican-style restaurants, and a method of displaying wine bottles in a wine shop. When an entity has established a trade dress in the marketplace, it ought to do all that it can, including registration as trade dress according to the Lanham Act, to preserve that right.
Guilds required their members to affix distinguishing marks to their products. For example, to indicate the source quarry for clays that make up fine china, the potter’s guild established a mark indicative of the particular quarry. Ceramic goods bearing a mark indicative of a certain quarry might be extolled in the public eye for qualities of durability, translucence, or purity of the whiteness of the resulting ceramic objects. These goods were sought out by the English to populate sideboards and cabinets. Where a company owned a particular quarry, the mark became synonymous with the company itself. These symbols were different from modern marks in that they emerged to benefit the guilds, and were not for the benefit of the production mark owner.
Since that time, both federal and, largely in response to the federal law, Washington state trademark law have each evolved in a manner to reflect the source of origin of marked goods. In more modern times, qualities of a product are more dependent upon the identity of the manufacturer than that which might be based upon the source of the raw materials. For that reason, the trademark, has likewise evolved to a personal right of the manufacturer to identify itself as the manufacturer or distributor of the goods. Identification of the source of goods remains, at its heart, a legal device for consumer protection. For the federal law, this legal device of trademark is defined by the Lanham Act.
As can be readily understood, a mark is created in a market where it is known. So, under the common law, if a product or a service are sold within a specifically defined geographic area and referring to the same source of goods or services, the act of sales is enough to create rights in the mark within that geographic area. As either a federal or a state registration are each based upon those sales occurring first, the registration simply promulgates the right to the mark in the larger geographic area defined by the jurisdiction. Thus, if a butcher shop uses the trademark “No Baloney” in Spokane, Washington, the mark is only protected where it is known, i.e. within the Spokane area. Should that butcher register “No Baloney” meats with the state of Washington, the mark is now “known” anywhere within the state, even in Seattle where its meats may never have been sold. Federal registration would expand that to the whole of the United States, provided in each case there is no senior mark already known in any particular geographic region within the jurisdiction. Common law rights always trump registration so long as those common law rights are also first in time.
2. Federal Trademark Law Under the Lanham Act U.S. Trademark Law is mainly governed by the Lanham Act. “Common Law” trademark rights are acquired by means of state law, such as that of Washington, and exist automatically when a business uses a name or logo in commerce, and these rights are enforceable in state courts. Marks registered with the U.S. Patent and Trademark Office are given a higher degree of protection in federal courts than unregistered marks - both registered and unregistered trademarks are granted some degree of federal protection under the Lanham Act 43(a). Trademark law protects a company's goodwill, and helps consumers easily identify the source of the things they purchase.
In principle, trademark law, by preventing others from copying a source-identifying mark, reduces the customer's costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product. The law thereby encourages the production of quality products and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale.
Issues attach to the selection and promulgation of marks. Remembering that by ascribing rights to an entity for the exclusive use of any combination of words, the registrant is removing those words from the public’s use. For that reason, particular words may not be used as the public’s rights to those words is generally superior. In each federal registration, the United States Patent and Trademark Office (“Trademark Office”) stands in the shoes of the public to represent the public’s right to its lexicon. To that end, for a mark to be taken from the public, it must be sufficiently distinctive to uniquely identify the source of goods rather than to be broad and necessary for the public’s use as a descriptive adjective.
A device (such as a word or a logo) can only be considered a trademark or a service mark if it is distinctive. The Trademark Office may deny a registration application is where the words are not sufficiently distinctive to warrant removal from the lexicon. The public should always have the right, for example to describe “ice cold” beer and an applicant seeking that “ice cold” mark would have their application rejected for that reason. A distinctive device is one that is capable of distinguishing the goods or services upon which it is used from the goods or services of others. A non-distinctive device is one that merely describes or names a characteristic or quality of the goods or services. The distinctiveness of a device can generally be categorized into one of five categories which fall along a spectrum of distinctiveness. From most distinctive to least distinctive, these categories are
· fanciful,
· arbitrary,
· suggestive,
· descriptive (including surnames), and
· generic.
The “strength” of a mark is determined in part by where it falls on this spectrum. Fanciful marks are considered stronger than suggestive marks, and therefore are granted greater protection by the courts. Devices that are fanciful, arbitrary, or suggestive are considered distinctive enough to function as trademarks. On the other hand, if a device is descriptive, the device can function as a trademark or service mark only if it has obtained secondary meaning. Generic devices such as the above-described “ice cold” beer, can never be a trademark.
· Fanciful marks: Fanciful marks are devices which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark. For example, “Kodak” had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary. In fact, it was the sound that George Eastman asserted his “Brownie” camera made when a photographer operated the shutter.
· Arbitrary marks: An arbitrary mark utilizes a device having a common meaning that has no relation to the goods or services being sold. Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Stephen Jobs selected “Apple” because of its apocryphal connection to Newton’s assertion of the law of gravity when struck by an apple while reclining beneath the tree.
· Suggestive marks: Suggestive marks are marks that suggest a nature, quality or characteristic of the goods and services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Despite the fact that suggestive marks are not as strong as fanciful or arbitrary marks, suggestive marks are far more common as a suggestive mark plants a seed in the mind of consumers as to the nature of the goods and thus requires fewer marketing and advertising expenditures to build brand awareness.. A suggestive trademark requires a subtle leap in thought (or as courts often put it, “imagination, thought and perception”) for the consumer to reach a conclusion as to the exact nature of the goods. Citibank (financial services), Greyhound (bus lines), Jaguar (automobile), and Playboy (magazine) are examples of well-known suggestive trademarks. Descriptive marks, in contrast, allow one to reach that conclusion without such imagination, thought or perception. Putting this distinction into practice clearly is one of the most difficult and disputed areas of trademark law.
· Descriptive marks: Descriptive marks (or more properly, “merely descriptive marks”) are devices which merely describe the services or goods on which the mark is used. If a device is merely descriptive, it is not a mark at all, since it does not serve to identify the source of the goods or services. A descriptive trademark is a word that identifies the characteristics of the product or service to which the mark pertains. It is generally an adjective or adjectival phrase such as “ice cold” beer. Trademarks that are merely descriptive, are not entitled to trademark protection and all the benefits that go along with it. In particular, they wouldn’t be entitled to registration on the principal register of the Trademark Office. Instead, the applicant is allowed to enter the mark on the supplemental register, which does not carry with it the ability to claim exclusive rights to use that mark in connection with your goods and services recover attorney’s fees and statutory damages in the event of a federal court lawsuit and other benefits and presumptions that go along with ownership of a distinctive mark. But realize, such is not the end of the story because a mark can move from the supplemental register to the primary register with the passage of time and events that lend an acquired distinctiveness.
3. Protection for Marks That Are Not Sufficiently Distinctive In order to move to the primary register, the public must recognize that through its own marketing and sales, the owner of the good or service mark has lent the mark an acquired distinctiveness. Acquired distinctiveness is when the consuming public begins to recognize that mark as the source of the particular goods or services, as opposed to the term or adjective describing exactly what it is your goods or services are. A mark acquires distinctiveness through extensive use over a long period of time, extensive advertising or monetary expenditures on marketing or other continuous use of the mark. The acquired distinctiveness is expressed as achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this “second meaning” (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed. The acquisition of secondary meaning is often proven through the use of consumer surveys. An example of a mark that acquired distinctiveness is “Digital” for computers;
A subset of descriptive marks are marks that derive from surnames. Goodyear tires are named after Charles Goodyear, the inventor of a process for vulcanizing (also a trademark, though not descriptive) rubber. Such surname-derived marks are treated the same as descriptive marks under U.S. trademark law. As a result, surnames are not given protection as trademark until they achieve secondary meaning through advertising or long use. A trademark is “primarily a surname” if the public would recognize it first as a surname, or if it consists of a surname and other material that is not registrable. Once a surname achieves secondary meaning, the mark is protectable as a trademark. Others cannot use the mark on confusingly similar goods, even if they have the same name.
Just as a descriptive mark can move, in the public mind from being descriptive to acquiring a second meaning and being registrable as a valid mark, a valid trademark can become generic if the consuming public misuses the mark sufficiently for the mark to become the generic name for the product. A prime example of former trademarks that became the generic name for a product is Aspirin. While still a Bayer trademark name for acetylsalicylic acid in about 80 countries, including Canada and many countries in Europe, a U.S. Court declared “Aspirin” to be generic. Current trademarks that were once considered to be candidates for becoming generic are Xerox and Kleenex. The process of moving back to a valid mark, in the public mind is similar to that of acquiring secondary meaning. In response, Xerox has spent a great deal of advertising money to prevent misuse of its mark. By doing so, Xerox has likely avoiding the loss of its trademark.
The tension between the doctrines of descriptiveness and acquired distinctiveness is one of the most frequently considered in trademark law. In the 1911 case of Standard Paint Co. v. Trinidad Asphalt Manufacturing Co., 220 U.S. 446 (1911), Standard sold roofing materials under the registered trademark RUBEROID and sued Trinidad for trademark infringement and unfair competition based on its sale of competing roofing materials under the name “Rubbero.” Standard alleged that it had used the “Ruberoid” term for more than twelve years, had advertised its products extensively under the “Ruberoid” name, and had built up a large and valuable trade under “Ruberoid” in the United States and internationally. Despite these facts, the Court held that “Ruberoid” was technically not a valid trademark because it was a descriptive term. A descriptive term should be available for use by all competitors to describe their products, and only a distinctive term that indicates source qualifies as a trademark. In making this determination, the Court looked to the dictionary, which defined the word “rubberoid” as a name for an imitation of hard rubber. Although Standard’s roofing materials contained no rubber, the Court found that the term was nonetheless descriptive rather than suggestive, insofar as it connoted rubber-like properties, such as water impermeability, that characterized the roofing materials. Moreover, misspelling the word “rubberoid” as “Ruberoid” did not change its descriptive nature and thereby render it a valid trademark. As such, “Ruberoid” was not a “technical trademark” under the Trademark Act of 19058 (which then protected only purely fanciful and arbitrary marks).
4. Deceptive Marks Will Not Be Afforded Registration A term that is deceptive can never be protectable as a trademark, and may even be subject to an injunction to prevent its use. A term is deceptive when it suggests a quality or degree of quality that the product does not actually have and that would be “material,” meaning it would likely influence a purchaser’s decision about whether to purchase the goods in question.
While not entirely apt as it was not decided strictly under trademark law, the 1919 case Brougham v. Blanton Manufacturing Co., 249 U.S. 495 (1919) stands as explanatory of deceptive advertising in a trademark. Blanton sold oleomargarine under the trade name “Creamo.” At one time, the product had contained 30% cream, but it did not contain any cream at the time of the suit. The Court found that the use of the word “Creamo” was not permissible. However, in doing so, it actually relied upon meat inspection laws, not trademark laws. The mark had been registered as a trademark since 1908 and had been used since 1904; the case was considered in 1919, by which time the product contained no cream. The Department of Agriculture took action to prevent further use of the mark and the Court upheld that action, agreeing with the government that the use of the word “Creamo” “is deceptive and induces the belief that cream is a substantial ingredient of the oleomargarine.”
Another such case, decided in 1922, was Federal Trade Commission v. Winsted Hosiery Co., 258 U.S. 483 (1922). In that case, the Court considered whether the labels “Natural Merino,” “Natural Wool,” “Natural Worsted,” “Australian Wool” and the such similar marks were deceptive when the underwear upon which they appeared contained only a small percentage of wool, and whether Winsted could use those terms. The FTC had filed a complaint under Section 5 of the Lanham Act of September 26, 1914, against the company for deceptive advertising. After appropriate proceedings, the District Court issued an order directing the company to cease and desist from use of the labels. The Second Circuit reversed the ruling, finding the use of such terms as outside the reach of Section 5, in part because members of the trade were not deceived. The Supreme Court the reversed the Second Circuit, noting that the FTC found as fact that the labels were literally false. The Supreme Court rejected the defendant’s contention that the misrepresentation of knit underwear was so common in the underwear trade that most retailers knew that “Merino Wool” did not imply 100% wool. Lying about the content, even if such was the practice of the industry and accepted among competitors, was still lying and, thus, did not make these wooly representations any less unfair as a method of competition. The industry was not the yardstick by which one measures deception; the question was whether the public would be deceived. Because the labels were deceptive to the public, their use was not permitted.
5. Securing Registration of a Federal Mark Once acquired, trademark rights may be registered with the USPTO. The Lanham Act gives a seller or producer the exclusive right to “register” a trademark, 15 U.S.C. § 1052, and to prevent his or her competitors from using that trademark, § 1114(1). Trademark protection depends on use in commerce, not registration. Both registered and non-registered trademarks are both eligible for protection under the Lanham Act. However, registration (on the “Principal Register”) affords several advantages:
· Nation-wide trademark rights
· A registered mark is presumed to be a valid trademark
· The owner listed on the registration is presumed to be the true owner of the trademark rights
· Presumption that the mark has not been “abandoned” through non-use
· Access to Federal Courts for litigating trademark infringement
· “Incontestability.” After five years of unopposed registration, a trademark is eligible to become “incontestable.” An incontestable mark cannot be attacked on the grounds that it is “merely descriptive.”
· Constructive notice - that is, infringers cannot claim that they were unaware of a registered trademark
· Enhanced remedies for infringement, including the possibility of triple damages and criminal penalties for counterfeiting (note that counterfeiting is a more culpable type of infringement)
· Right to have the U.S. Customs Service prevent others from importing goods bearing infringing marks
Process of application for Federal trademark registration Trademarks may be registered online. The USPTO charges a $275 fee for online trademark applications. The process takes about 6 months from initial application to final registration. It is a general practice to hire a trademark lawyer to file the application on behalf of the future owner.
Once the application is filed, it sits in a queue for a few months. Eventually, a USPTO Trademark Examiner will examine the application according to the rules of the Trademark Manual of Examining Procedure (“TMEP”). The process is very arcane and substantial compliance with the statutory process will not be adequate to protect rights. The Applicant can expect that the Trademark Examiner will require the applicant to have sufficient knowledge of relevant parts of the TMEP. The whole of the TMEP is available online and in a text-searchable format at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/current/d1e2.xml.
If the Trademark Examiner identifies problems with the applications, the applicant will be sent a “preliminary rejection” indicating the nature and effect of the noted problem, oftentimes with citation to the TMEP. The applicant will then have 6 months to file a reply with arguments in favor of her trademark application. The responses themselves generally need to be placed in terms that are cognizable by the Trademark Examiner. For these purposes, knowledge of the TMEP is irreplaceable with specious and far-ranging responses. (Important, as well, is the terminology if the applicant will later seek to overturn the Examiner’s decision before the Board or subsequently in the Federal Circuit Court of Appeals.) If the Trademark Examiner is persuaded by the reply arguments, the application will be granted registration. If not, a “final rejection” will be issued.
When an application is allowed, it moves on to “publication” in the Trademark Official Gazette. Once published, there is a 30-day opportunity for other companies to contest the registration based upon factual issues likely not known to the Trademark Examiner at the time of the allowance. If no appeal is filed, the registration is finally issued.
If the registration receives a final rejection from the Trademark Examiner, the applicant may appeal the rejection to the Trademark Trial and Appeal Board. Likewise, if the application is opposed by a third party, the appeal will be reviewed by the Trademark Trial and Appeal Board.
Actual Use vs. Intent to Use An application for registration may be based upon “actual use” in commerce (a §1(a) registration) or upon a bona fide intent to use (“ITU”) the mark in commerce (§1(b) registration). An ITU application is a placeholder. It will not be allowed to register until the applicant actually begins using the mark in interstate commerce. The value of ITU is in establishing priority—that is, determining which business first acquired the trademark rights.
Trade Dress Trade dress is a variant of a trademark and like trademarks, distinctiveness is the metric by which the validity of the trade dress is adjudged. The 1992 case of Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (1992) is an instructive primer as to trade dress and was decided to lay out, as between conflicting interpretations as among the Circuits, what is and whether an inherently distinctive trade dress—like other trademarks—is protectable without a showing that it has acquired secondary meaning. The Court reasoned that trade dress is an accepted form of trademark, that trademarks are protectable if they have either inherent or acquired distinctiveness, and that there was no reason to apply a different analysis to trade dress. The Two Pesos case dealt with the unregistered trade dress of a Mexican restaurant. The Court noted that the jury had been instructed that the 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.”
While trade dress has traditionally referred to protectable elements of product packaging, it also encompasses the design of a product itself. Product-design elements may include color, size, shape, aroma and even flavor. While the governing case law makes clear that these types of design features can never be “inherently distinctive,” meaning they cannot qualify for trademark protection immediately upon adoption, protection may nonetheless be available down the road if certain hurdles are cleared.
To qualify for trade-dress protection, product-design features must be shown to have acquired distinctiveness or “secondary meaning” among a substantial portion of the relevant purchasing public. Secondary meaning refers to a feature’s acquisition of a new (or second) meaning as a source identifier. Thus, to secure protection, the owner of a product-design trade dress must be able to demonstrate that the consuming public has come to associate the particular product design with the owner. Marketing and advertising typically play a central and critical role in this process.
Source identification is only one part of the conundrum of trade-dress protection. In addition, the Lanham Act requires that a product configuration not be “functional” to obtain protection. A trademark is considered functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.” Functionality thus refers to product-design aspects that go beyond serving exclusively as a source identifier or enhancing the aesthetic appeal of the product, and serves some other purpose such as improving product performance. If the product design is found to be legally functional, protection is not available.
Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another. For example, the shape, color, and arrangement of the materials of a children’s line of clothing can be protectable trade dress (though, the design of the garments themselves is not protected), as can the design of a magazine cover, as in Two Pesos, the appearance and décor of a chain of Mexican-style restaurants, and a method of displaying wine bottles in a wine shop. When an entity has established a trade dress in the marketplace, it ought to do all that it can, including registration as trade dress according to the Lanham Act, to preserve that right.