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Trademarks and Unfair Competition
Southern Illinois University School of Law
Schultz, Mark F.

Trademarks and Unfair Competition Outline

Order of analysis:
1) Start with whether mark is protectable (distinctiveness chart) = must have rights to enforce
– Step isn’t usually necessary for reg. marks, but might be for unreg. marks (must prove use)
o Presumption that reg. marks are protectable, otherwise they wouldn’t be reg.
– D always has burden of proving mark isn’t protectable
2) Polaroid/Pizzeria Uno LOC factors
– NOT used in dilution cases, where this is irrelevant
3) Anything else

Subject Matter – What Can be Trademarked

A. Types of Marks:
§ Trademark/service mark (LA §45; R. 3rd of Unfair Comp. similar) – 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 and applies to register,
to identify and distinguish his or her goods/services, including a unique product, from those manufactured or sold by others and to indicate the source of the goods/services, even if that source is unknown
– Confers a limited property right appurtenant to bus./trade (not in gross)
§ Collective mark – same as above, but used by a cooperative, association, or other collective group/org.
– 2 varieties
1) Used as a trade/service mark to id goods/services originating with collective or its members
2) Indicates membership in a collective, but doesn’t ID goods/services
§ Certification mark – same as above, but to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other char. of the good/service
– Unlike other types, does NOT identify source

1. Things that can be trademarked:
§ Preamble of LA §2 – “no trademark by which the goods of the app. may be distinguished from the goods of others shall be refused reg. on account of its nature”
§ Things that have been trademarked:
– Word marks
– Trade dress – packaging and shape/design of a product
o Qualitex: color alone can be a trademark
– Higher standard applies:
1) Must show color has acquired 2ndary meaning, and thus identifies source
2) Even if 1) is met, color can’t be functional
– Ex. functional: orange pay phones are highly visible to motorists even in bad weather
o Two Pesos v. Taco Cabana: distinctiveness is an explicit prereq. for reg. of trade dress, but no showing of 2ndary meaning is necessary if trade dress is inherently distinctive
– Décor of restaurant considered product packaging
o Wal-Mart: product design (clothing) is not inherently distinctive as it isn’t intended to identify source, so a showing of 2ndary meaning is necessary
– Combination of colors and shapes – John Deers green farm equipment with yellow wheels
– Shapes
– Scents
– Sounds – higher standard applies
o Arbitrary, unique, or distinctive marks reg. without supporting evidence
– Performers’ voices
o Common sounds reg. only after showing that public recognizes/assoc. sound with a single source
– Cartoon characters
– Nicknames – Coke, Hog for Harleys, the Met for the Metropolitan Opera
– Telephone alphanumeric combinations
– Single letter, numbers, letters, initials, abbreviations – diff. standard applies
o KFC, IBM, NBC fine on their own
o Those that diff. between various grades, styles, colors, or types of products (primarily fcn. of describing product) reg. only if they also designate source
– Fact question requiring analysis of manner of use, intent of user, and meaning understood by
o DC10 planes and 501 Levi’s jeans are well-known model designations consumers recognize

2. Things that can’t be trademarked:
§ Trade names, unless they are also used as a trademark
– Boblink used merely as a trade name to identify the co. that markets its products under name CreditLink

B. Distinctiveness:
§ Distinctive – product is unique in the consumers’ minds as it identifies source, and thus worthy of trademark protection (R. 3rd of Unfair comp.)
– 2 categories:
1) Inherently distinctive – already have 2ndary meaning
2) Distinctive through 2ndary meaning – requires that primary sign. of term in the minds of the public is not the product, but the producer
– Presumed in LA and can’t be challenged as merely descriptive if mark becomes incontestable
– Protection extends only to meaning that has attached to the designation
o Owner has no exclusive right to use term in its original, lexicographic sense
– Rock & Roll Hall of Fame: museum didn’t use drawing of its bldg. design on goods
consistently, so they didn’t create a distinct impression as an indicator of a single source of
origin of all such goods (Gentile’s poster using name and design as another source is thus OK)

Abercrombie Classifications of Trademarks (from more protected to least):






Words that don’t exist until the mark is created

Exxon, Kodak, Clorox, Xerox

Inherently distinctive = trademarks that already have 2ndary meaning


Everyday words that have no association with the products for which they are names

Apple computers, Ivory soap


Marks that require a bit of imagination

Eskimo Pie ice cream using “Eskimo” to suggest cold, Orange Crush, Reynolds “Brown-in-bag” since browning isn’t sole purpose of bag


Word(s) describing char., qualities, or ingredients of product

1) EverSharp knife describing that the knife doesn’t get dull
2) QuikPrint describing the char. speed of service

Can go either way
1) Can become distinctive through 2ndary meaning
2) Merely descriptive and not dis

; Johnson: P has no current plans to use brand names in minor brands program and never put them on the market in any meaningful way = token use
– DaimlerChrysler v. Bloom: D’s licensing of phone # without more isn’t use even though 1 alphanumeric translation spells out a protected mark (1-800-MERCEDES)
o Didn’t advertise, promote, publicize, or incorporate mark in any way
– Might be reaping benefits of preexisting confusion, but didn’t create it so no LA violation
o Compare to Holiday Inns v. 800 Reservation: D’s adoption of 1-800-H[zero]LIDAY not enjoined as requested by P, holder of previous 1-800-HOLIDAY
– D didn’t promote #
– There is no right to enjoin operation of a # whose translation is only similar to a protected mark
o Sub. prof./class think D should have been enjoined as licensee’s use usually inures to the licensor
§ Trademark rights last as long as the mark is used, unlike copyrights and patents

1. Priority:
§ Exclusive right to a trademark belongs to person who 1st uses it in connection with specified goods = timing can make a big diff.
– Use doesn’t have to have gained wide public recognition
o Even a single use may sustain trademark rights if followed by continuous commercial utilization
– Use must be open and made to relevant class of purchasers
o Secret, internal shipments are inadequate “use”
– Labels/designs must be affixed to the merchandise actually intended to bear the mark in commercial transactions
o Usefulness of mark derives not only from capacity to identify a certain manufacturer, but also the ability to differentiate between diff. classes of goods from the same manufacturer
– Goods may be identified by more than 1 trademark, but each must be a bona fide use
§ Shalom Children’s Wear v. In-Wear: priority alone isn’t a ground for opposition because of concurrent use
– To win, Shalom should have pleaded and established a LOC as well

2. Concurrent Use:
§ Unreg. marks – adoption/use doesn’t protect in advance of extension of the trade
– United Drug Co. v. Theodore Rectanus Co.: unlike copyrights and patents, trademark rights are not assignments in gross and don’t confer monopolies, but are rather appurtenant to an established bus./trade (have no value in and of themselves)
o Can buy and sell trademarks, but must sell bus. or at least goods/products with it to be valid
§ LA §15 for fed reg. marks – party that has successfully reg. and continued using a fed. service mark has an incontestable right to use it throughout the US
– LA §33b limited area exception – confers upon a junior user the right to continued