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University of North Carolina School of Law
Gerhardt, Michael J.

Gerhardt, Fall 2014
Dual goals of Trademark Law= 1) to protect property in the trademark and 2) to protect consumers from confusion
Economic Functions of Trademarks:
·         Encourages production of quality products
·         Reduces the consumer’s costs of shopping and making purchasing decisions
·         Without trademarks, TM owners would have no incentive to make investments in quality control, promotion, and other activities necessary to establishing strong marks and brand names
·         Without trademarks, there would be a race to produce inferior products, rather than better ones
·         Without trademarks, consumers couldn’t reward manufacturers through repeat purchases for high quality goods
·         Trademarks à Promote Competition à Maintenance of Product Quality
Trademark Infringement
·         Is a branch of the broader area called the law of “Unfair Competition” or “Unfair Trade Practices”
·         State common law protection for federally unregistered marks
To KEEP your brand, must show:
1.       Continued Use
2.       Licensing
3.       Protecting against:
a.       Infringement
b.      Dilution
c.       Cybersquatting
d.      False Advertising
2 Theories about TM law:
1.       Misappropriation (no one will free ride on my brand); or
2.       Misrepresentation (don’t want untruthful things said about my brand)
In order to qualify for TM protection, a TM must meet 3 basic requirements:
1.       The TM must be “distinctive” of the source of the goods or services to which it is affixed
2.       The TM must not be disqualified from protection by various statutory bars to protection, the most significant of which is that the TM must not be “functional”
3.       The TM must be used in commerce
Lanham Act: protects registered AND unregistered marks from unauthorized uses that are likely to cause consumer confusion as to the TRUE SOURCE of the unauthorized uses, and that are likely to cause consumer confusion as to the true source of the unauthorized user’s goods
Trademark protection can last FOREVER as long as it is taken good care of
I. Trademark Distinctiveness
LA § 45: the term “trademark” includes any word, name, symbol, or device or any combination thereof . . . used by a person . . . 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
“Anonymous Source” Theory: that all products bearing the same TM originate in or are sponsored by a single, albeit “unknown” or “anonymous” source
A TM is distinctive if EITHER:
1.       It is “inherently distinctive” of source; OR
a.       A mark is inherently distinctive if “its intrinsic nature serves to identify a particular source”
b.      Inherently distinctive marks “almost automatically tell a customer that they refer to a brand”
2.      It has developed “acquired distinctiveness” of source (aka “secondary meaning”)
a.       When consumers can identify a brand based on merely a description of good/service (“American Airlines”) or a decoration (3 stripes on the side of an athletic shoe)
Abercrombie & Fitch Co. v. Hunting World, Inc.: P operated various sporting good stores in NYC and elsewhere; it had registrations for its TM “Safari” for outdoor clothing/accessories; D began to sell shoes and hats with “Safari” on them in their store in NYC—P sued on the ground that D’s conduct would confuse consumers as to the true source of D’s goods
·         Holding: “Safari”= Generic when used with certain items of clothing or hats, but was Suggestive or “Merely Descriptive” when used with boots so PROTECTED
Abercrombie Spectrum:
·         Generic: one that refers, or has come to be understood as referring, to the genus of which the particular product is a species—NO PROTECTION
·         Descriptive: TM describes what the product/service is—NO PROTECTION UNLESS can show that the mark has become distinctive of the applicant’s goods in commerce
o    Prima facie evidence= proof of substantially exclusive and continuous use of the mark applied to the applicant’s goods for 5 years preceding the application
·         Suggestive: if a term requires imagination, thought, and perception to reach a conclusion as to the nature of goods—REGISTERABLE
·         Arbitrary or Fanciful: Made up word or no association with the product/service—REGISTRABLE
Misspelling: NO DIFFERENCE, if the terms which are used, interpreted according to the basic rules of the English language, do sufficiently describe the mark
Additional Definitions, Tests and Authority
Automatic Protection:
Inherently Distinctive:  “intrinsic nature serves to identify a particular source” Wal-Mart v. Samara
 “invented solely for use as a trademark” Abercrombie & Fitch Co. v. Hunting World
“common word applied in an unfamiliar way” Abercrombie
The mark bears no relationship to the product or service to which it is applied. Zatarain’s v. Oak Grove Smokehouse
APPLE for computers
CAMEL for cigarettes
“requires imagination, thought and perception to reach a conclusion as to the nature of the goods” Abercrombie
NIKE for sports equipment
TIDE for laundry detergent
Only if Distinctiveness is Acquired through Secondary Meaning:
“in the minds of the public, the primary significance . . . is to identify the source rather than the product” Wal-Mart v. Samara
“conveys an immediate idea of the ingredients, qualities or characteristics of the goods”  Abercrombie
A consumer unfamiliar with the product would have an idea about its quality, purpose, and/ or function. Zatarain’s
Four Tests Listed in Zatarain’s
1.  Imagination Test
2.  Dictionary References
3.  whether competitors would need to use the term
4.  use by others marketing a similar product or service
“Refers, or has come to be understood as referring, to the genus of which the particular product is a species.”  Abercrombie
“Who are you/What are you?” test from Filipino Yellow Pages v. Asian Journal Pubs, Inc.
“If the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is generic.”  Kellog v. National Biscuit Co.
II. Descriptive and Suggestive Marks
Why is this distinction important?
1.       It can be difficult and costly to show that a mark deemed descriptive has developed secondary meaning as a designation of source
2.       Only inherently distinctive marks may be registered on an intent-to-use basis
Zatarains, Inc. v. Oak Grove Smokehouse, Inc.: P had “Fish-Fri” and “Chik-Fri” registered and D used “Fish Fry” and “Chicken Fry” on the packaging of competing products to describe the contents of those products
·         Holding: Fish-Fri was DESCRIPTIVE—whenever a word or phrase conveys an immediate idea of the qualities, characteristics, effect, purpose, or ingredients of a product or service, it is classified as descriptive and cannot be claimed as an exclusive TM; could keep Chik-Fri, but D’s had the right to still use it under the descriptive use defense
The question of categorization is A MATTER FACT!  Therefore it rarely gets decided on summary judgment—only could get decided by summary judgment if it’s a situation where no matter what facts the P proves, those facts viewed in a light most favorable for the P, it STILL can only be decided one way
How to distinguish between descriptive and suggestive marks:
·         Ordinary Dictionary Meaning: what the ordinary meaning is to the public
·         Imagination Test: measure the relationship between the actual words of the mark and the product to which they are applied—if it requires imagination, thought, or perception to make that leap then it is considered suggestive
o    If standing alone, the term only conveys information

t and dilution, and for unfair competition after D depicted an ice cream truck and clown character in their video game series that was similar to P’s truck and clown, and D labeled it “Frosty Treats”
·         Holding: for D—at best, “Frosty Treats” is descriptive and there is no basis for concluding that it has acquired secondary meaning—P could not establish secondary meaning based on their evidence
·         Circumstantial Evidence= exclusivity, length and manner of use of mark (can show the broad geographic scope of mark and long time of use), P’s established place in the market (kind of a synonym of length/manner), and the existence of intentional copying could also establish secondary meaning
·         Direct Evidence= testimony, surveys of consumers
Cartier, Inc. v. Four Star Jewelry Creations, Inc.: D produced knockoffs of certain of P’s watches—argued that P’s watch designs did not possess secondary meaning as designations of source and thus were unprotectable under TM law
·         Holding: WAS secondary meaning—you have to have 50% of the RELEVANT consumers—people who either owned/were looking to buy a very expensive watch soon (surveys in low rent malls were inappropriate)
Board of Supervisors for Louisiana State University A&M College v. Smack Apparel Co.: D would use college color scheme to hint at a particular college/university
·         Must have color plus one—NOT JUST the color, but use the color plus something to indicate that you’re referring to the university—on D’s website, would couple color with the city of the university
·         Multi-factor Test:
o    (1) length and manner of use of the mark or trade dress
o    (2) volume of sales
o    (3) amount and manner of advertising
o    (4) nature of use of the mark or trade dress in newspapers and magazines
o    (5) consumer-survey evidence
o    (6) direct consumer testimony
o    (7) the D’s intent in copying the trade dress
IV. Generic Marks
A TM may be deemed generic either (1) because they are BORN GENERIC, or (2) because they LOSE THEIR SOURCE DISTINCTIVENESS through a process of “genericide”—Examples: Xerox, elevator, Kleenex
Possible Tests:
·         genus/species distinction= “a generic term is one that refers or has come to be understood as referring to the genus of which the particular product is a species”
·         who-are-you/what-are-you distinction= “a mark answers the buyer’s questions “who are you?” “where do you come from?” But the generic name of the product answers the question “what are you?” (Prof prefers this!)
·         if it’s the common descriptive name= generic because doesn’t distinguish the identify of a particular product
Generic Mark will NEVER receive protection in order to support fair competition and to eliminate unfair competition
Pilates Inc. v. Current Concepts, Inc.: P claimed infringement of 2 marks: “Pilates” as it relates to certain types of exercise equipment and as it relates to a form of exercise instruction
·         Considered the following types of evidence to determine if the mark was generic:
o    1. Dictionary Definition
o    2. Generic use of the term by competitors and other persons in the trade
o    3. P’s own generic use
o    4. Generic use in the media
o    5. Consumer surveys
·         Holding: NO TM PROTECTION—the mark is generic