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University of North Carolina School of Law
Gerhardt, Deborah R.

Fall 2014 – Deborah Gerhardt
Trademark Law, An Open Source Casebook by Barton Beebe
I.                  Purpose of Establishing Trademark Rights
A.      Trademark Definition
Lanham Act § 45; 15 U.S.C. § 1127
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.
B.       What is the purpose of Trademark Law?
Purpose of Trademark law:
1.      Protect the brand owners
2.      Protect the consumer from fraud
Misrepresentation Theory: Can't use my trademark to tell a lie
Misappropriation Theory: Can't make money off my brand
C.       The Life of a Trademark
1)     GETTING
a.       Selection:
                                                   i.      Distinctive?
b.      Available?
                                                   i.      Use or bona fide intent to use
c.       Registration (optional but adds strength)
d.      Generic Terms
e.       Functional Features
3)     KEEPING
f.        Continued use
g.       Licensing
h.      Protecting against
                                                   i.      Infringement
                                                 ii.      Dilution
                                               iii.      Cybersquatting
                                               iv.      False advertising
i.         Descriptive Fair Use
j.         Nominative Fair Use
k.       First Sale
l.         Parody
II.               Distinctiveness
When is a Trademark distinctive?
A trademark will qualify as distinctive if either (1) it is “inherently distinctive” of source or (2) it has developed “acquired distinctiveness” of source. A mark is inherently distinctive if “its intrinsic nature serves to identify a particular source.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 210 (2000) (alterations omitted).
A trademark will qualify as distinctive if either:
1.      It is inherently distinctive of source or
a.       Inherently distinctive in 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
a.       Also known as a secondary meaning
b.      Over time, customers have come to identify what seemed merely a description of the good or service (e.g. “American Airlines”) or merely a decoration on a product (e.g., three stripes on the side of an athletic shoe) as a designation of the source of that product
c.       Customers may come to identify the configuration of the product itself as a signifier of its source
When will a Trademark get protection?
In order to qualify for trademark protection under US federal law, a trademark must meet three basic requirements:
1.      The trademark must be “distinctive” of the source of the goods or services to which it is affixed
2.      The trademark must not be disqualified from protection by various statutory bars to protection, the most significant of which is that the trademark not be “functional”
3.      The trademark must be used in commerce
A.      The Distinctiveness Spectrum
A central requirement for the award of trademark rights is that the mark be distinctive.  The Lanham Act incorporates the concept of distinctiveness in Section 45’ s definition of trademark (stating that a trademark is something that is used “to identify and distinguish” goods from those manufactured by others, and to “indicate the source of the goods”).
i. Abercrombie Spectrum
Modern courts analyze distinctiveness by analyzing where a mark should fall on the spectrum of distinctiveness set forth in Abercrombie. On the Abercrombie spectrum, marks are categorized (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic.
Categorizing Marks: Before considering where a mark should fall, consider:
1)     Relationship between the Mark and the underlying Goods
a)     To categorize a mark on the Abercrombie spectrum, one must necessarily consider the relationship between the mark and the underlying goods. The term SPICY may be merely descriptive for pepper sauce, but may be arbitrary for shoes
2)     Changes in the terms meaning over time
3)     The Antidissection Principal
a)     The meaning of a composite phrase should be formulated based on the phrase as a whole, not based on dissecting it into its constituent parts
4)     Whether it is a word mark or non-verbal mark
Distinctiveness should be measured as of the time of registration, not the time of first use
Fanciful marks are coined words or phrases that have been created solely for use as marks— for example, XEROX for photocopiers.
Arbitrary marks are standard English words that have no apparent connection to the underlying goods—such as APPLE for computers.
Suggestive marks are those that may evoke the qualities of the goods or services but still require the consumer to employ his or her imagination to reach a conclusion about the goods. COPPERTONE for sun-tan lotion is an example.
Descriptive terms are those that simply identify qualities or characteristics of the underlying goods— as in SOFT used for soft pillows.
Generic terms restate the class to which the goods belong—such as BEER for beer.
ii.                      Inherently Distinctive v. Acquired Distinctiveness
The law recognizes two classes of distinctive marks: “inherently” distinctive marks and marks that have acquired distinctiveness.
Inherently Distinctive
·         A mark that is inherently distinctive is one that is likely to be perceived as distinguishing goods or identifying source merely because of the nature of the mark or the context of its use.
·         If a mark is inherently distinctive, no evidence of its actual reception in the marketplace is needed in order to adjudge the mark’s distinctiveness.
·         Fanciful, Arbitrary, and Suggestive marks are all inherently distinctive
Acquired Distinctiveness
·         A mark that has acquired distinctiveness is one that comes to be perceived as distinguishing goods or identifying source as

h a mark is actually needed by competitors to identify their goods or services
g.       If competitors have a great need to use a mark, the mark is probably descriptive
h.      If the suggestion made by the mark is so remote and subtle that it is really not likely to be needed by competitors
i.         Because the more imagination that is required to associate a mark with a product or service, the less likely the words used will be needed by competitors
3)     Extent of Use Test
j.         Evaluates the extent to which other sellers have actually used the mark on similar merchandise
Zatarains, Inc. v. Oak Grove Smokehouse, Inc. (page 19)
1)     Holding: “Fish-Fri” is a descriptive mark
2)     Importance: Tests for inherent distinctiveness
Innovation Ventures, LLC v. N.V.E., Inc. (page 21)
1)     Extremely Plaintiff-friendly imagination test reasoning
a)     How will 5-hours of energy be delivered? – Food? Drink? Injection?
b)     What kind of energy? – Calories? Electrical? Nuclear?
c)      “5-hour energy” in isolation may refer to batteries and not energy drink
2)     Held: Requires imagination – Suggestive mark
a)     Criticism – Court must consider the mark in connection with the product
Zobmondo Entertainment, LLC v. Falls Media, LLC (page 23)
1)     Game of “would you rather”
2)     Imagination test – Sufficient that the mark describes some aspect of the product
a)     Δ had to include further descriptive information on the offending product to inform consumers what it was
b)     Competitive need – Example of 135 possible alternative names
i)       Many were synonyms of “rather”
3)     Note: Mark Registration will not necessarily overcome summary judgment
C.       Acquired Distinctiveness/Secondary Meaning
If a term is deemed merely descriptive when used for particular goods, the term may still qualify as distinctive (through acquired distinctiveness) in accord with the Abercrombie.
·         Secondary meaning is an inquiry into the consumer’s perception of the term as actually used in the marketplace in connection with the goods. 
·         May be proven by direct evidence (consumer testimony or, more frequently, a survey of prospective consumers) or circumstantial evidence (amount and manner of the mark owner’s advertising, volume of sales of products bearing the mark, length of time during which the mark has been used, and manner of use) [Zatarains] o   Copying may be good circumstantial evidence of secondary meaning or might negate the inference of secondary meaning if for example, the mark is a commonplace descriptive term