Outline For Trademark And Unfair Competition Law
I. generally
A. Definition of a Trademark:
1. Common Law Definition: “A trademark is a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others. A service mark is a trademark that is used in connection with services.” § 9 Restatement (Third) of Unfair Competition.
2. Statutory Definition: “The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof– (1) used by a person, or (2) which a person has a bona fide intention to use in commerce … to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 USC § 1127 (Lanham Act §45).
Thus the key to both definitions is that the mark must act as a source identifier for the goods or services in question.
Note the similarity of the common law and statutory definitions of a trademark (at least as to “use” definition). This is due to the dichotomy between protectability and registerability. In order to acquire rights in a mark, it need not be registered under the federal statute (although there are significant benefits to doing so). However, the federal registerability requirements are substantially similar to the common law proctectability requirements, indeed one commentator has noted that § 2(d) of the Lanham Act incorporates the common law principles of proctectability. Donald S. Chisum & Michael A. Jacobs, Understanding Intellectual Property Law §5C [hereinafter Chisum & Jacobs].
3. The Rationale for Protecting Trademarks: In Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co, 316 U.S. 203 (1942), Mr. Justice Frankfurter articulated the following rationale for protecting marks:
The protection of trade-marks is the law’s recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same–to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress.
316 U.S. at 205.
II. Types of Marks:
A. Trademarks: Are used in connection with the sale or manufacture of goods by a company or individual.(But note that all marks are often collectively referred to as “trademarks” or simply “marks.”).
B. Service Marks: Are used to identify the particular services of a company or individual. A name may be used as a SM and registered if (1) it not only identifies the individual but also (2) identifies the services provided. Thus, the name or mark must be used (in advertising, letterhead, etc.) in close association to the services provided. (E.g., “Acme Plumbing,” “Johnny Carson IN CONCERT”). In re Carson (TTAB 1977).
1. Marks that are both Service and Trade Marks: If a mfr., seller, etc. supplies a “bona fide” service or services, over and above those normally expected or only incidentally related to the furtherance of the sale of goods (upon which the mark is used), the registration of the SM is evaluated independently and may issue in addition to the TM. (I.e. the services are separate and distinct). Ex parte Handmacher-Vogel, Inc. (Comm. Pat. 1953).
C. Certification and Collective Marks: Note that while most certification and collective marks are the subject of federal registrations, common law (§ 43(a)) protections are available for both kinds of mark. See, e.g., Bureau National Interprofessionel Du Cognac v. Int’l Better Drinks Corp., 6 USPQ 2d 1610 (TTAB 1988); Florida v. Real Juices, Inc., 330 F. Supp. 428 (M.D. Fla. 1971). The difference between the two species of marks was summed up by Judge Rich of the Federal Circuit: “As to a collective trade or service mark, the sellers are members of an organization with standards of admission, while as to a certification mark, sellers are not members of an organization, but their products are certified according to standards.” F.R. Lepage Bakery, Inc., v. Roush Bakery Prods., 851 F.2d 351 (Fed. Cir. 1988). Registration of certification and collective marks is controlled by 15 U.S.C. § 1054 (§ 4). Note that despite the “standards” aspect of these marks, both certification and collective marks are subject to the “first sale” doctrine which limits the TM owner’s control over the sale of his marked products to the first sale by the TM owner—subsequent sales by purchasers are not infringement. Sebastian Int’l v. Longs Drugs, 53 F.3d 1073 (9th Cir. 1995). See infra.
1. Certification Marks: Is a “mark used by a person other than its owner to certify a product’s quality, origin” or other standards. (E.g., ADA, USDA, Underwriter’s Labs, Kosher). The owner of the cert. mark may not use the mark in connection with any goods or services (i.e. like a trademark) that it markets or performs and such use is grounds for an inter partes action for cancellation. In re Florida Citrus Comm’n. 160 USPQ 495 (TTAB 1968).
a. Who Must “Certify”: “The “control” requirement of § 1054[1] requires that the owner of a certification mark take reasonable steps, under all the circumstances . . . , to prevent the public from being misled.” Midwest Plastic Fabricators v. Underwriters Laboratory, 906 F.2d 1568 (Fed. Cir. 1990). However, this does not mean that the owner test each and every product itself—it is sufficient if the owner requires those whose goods or services will display the mark to test themselves according to the certification mark owner’s standards, and declare that those standard have been met, subject to random inspection and testing by the owner. Id.
b. Geographic Origin Certification Marks: A certification mark that is merely a geographic description of the source of a kind of goods (e.g., Roquefort Cheese for blue veined cheese), need not acquire secondary meaning to be registered. See Comm’ty of Roquefort v. Faehndrich, 303 F.2d 494 (2d Cir. 1962). However, if the certification mark has become to mean the “nature or class” of the kind of goods (i.e., not those of the particular locality), and thus generic, (see infra) it may be cancelled. Id.
2. Collective Marks: Is a mark used by members of an association to designate membership therein. The association owns the mark but does not have to control quality or standards, only limit its use to members. (E.g., SAG, ILGWA, AFL/CIO).
a. Who “Owns” the Collective Mark? A collective mark must be owned by the collective organization as an entity—it may not be owned by a constituent member of that organization, otherwise it is invalid as a mark (or perhaps merely a trademark). Sebastian Int’l. Thus, “[i]f an individual member of a collective does register a collective mark, the mark is invalid.” Id. (Ferguson, J., concurring). Moreover, the collective group must exercise legitimate control over the use of the mark by its members. If the group is dominated by anyone member, the collective registration is invalid. Sebastian Int’l.
III. Subject Matter of Trademarks (Or, what constitutes a “word, name, symbol, or device, or any combination thereof”):
A. Word Mark
onal); In re Hudson News Co., 39 USPQ2d 1915 (TTAB 1996) (blue not registrable for newsstands because it is functional).
3. Sounds: A “unique, different, or distinctive” sound or combination thereof may be protectable as a trademark. In In re General Elec. Broadcasting Co., 199 USPQ 560 (TTAB 1978), the Board stated that “unique, different” sounds were protectable absent secondary meaning (calling them “arbitrary or fanciful”), and moreover, even “commonplace” sounds, if, in the context they are being used are no longer “common,” may be protectable with secondary meaning. Thus the “ships bell” sounds (notes G, E, & C) might registrable in the “environment of radio broadcasting” if it had acquired secondary meaning (now held as trademark by NBC).
4. Fragrance/ Smells: A smell impregnated into a product is protectable with secondary meaning if it serves as a source identifier and is not merely inherent in the nature of the product (e.g. perfume, potpourri). In re Clarke, 17 USPQ2d 1238 (TTAB 11990) (“high-impact fresh floral fragrance reminiscent of Plumeria blossoms” for sewing thread was registrable).
5. Location on Goods of TM: The location of the mark may itself be protectable if it has acquired secondary meaning. Levi Strauss v. Blue Bell Inc.630 F.2d 817 (9th Cir. 1980) (Levi’s® Red Tab on right rear pocket of pants and jeans).
6. Video Digital Sequences: Are registrable and protectable as a sequence of symbols. See, e.g., www.velhos.com.
7. Trade Dress—Packaging and Product Configuration: The trade dress of a product is essentially its total image and overall appearance. In involves the total image of a product and may include such features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). The most common bars to registration and protection of trade dress are functionality and lack of distinctiveness. Functionality is addressed below in the section on bars to registration.
a. Trade Dress and Distinctiveness: After Two Pesos, trade dress may be inherently distinctive and thus not needful of secondary meaning, although if not inherently distinctive, it can have secondary meaning and thus become protectable that way. However, in Wal-Mart v. Samarra Brothers, Inc., __ U.S. __., 120 S. Ct. 1339 (2000), the Court retreated from this position and articulated a distinction between “packaging or dressing” trade dress, and “product-design” trade dress. The Court likened “product design” to color and held that it can never be inherently distinctive as can “packaging trade dress.” Justice Scalia noted:
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–
