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

Fall 2015 – Gerhardt – Trademark

What is a Trademark?

Lanham Act § 45; 15 USC § 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 . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown

SCOTUS has interpreted this definition broadly: Any designation that can carry meaning might serve as a trademark (Qualitex Co. v. Jacobson Products Co.)

Basic Language Explanation:

The role of a trademark is to help a merchant distinguish its goods and services from those of its competitors.

Merchants inform consumers that certain products and services sold under a particular mark come from the same producer.
Consumers then rely on these trademarks to assist them in deciding on which products and services to buy.

For many consumers a trademark is no longer merely a symbol of quality or a source identifier, it also signals social status, individual or group identity

Primary Sources of Trademark Law:

Lanham Act – 15 USC §§ 1051-1141
Based in the Commerce Clause of the Constitution – Regulation of “fair competition”

A Trademark Must:

Identify the source of the goods sold under the designation, AND
Be distinctive of the source of the goods or services to which it is affixed

(1) It is “inherently distinctive” of source or
(2) It has developed “acquired distinctiveness” (secondary meaning) of source.

The trademark must not be disqualified from protection by various statutory bars to protection § 2 (15 USC § 1052)

Immoral or scandalous or deceptive
Comprises of a flag or coat of arms
Consists of a name, portrait, or signature of a living person w/o his consent. No presidential likeness
Consists of or comprises a mark which resembles another one already registered “likelihood of confusion”
Cant use a trademark if the symbol consists of a mark which when used with goods is merely descriptive unless
Has become distinctive of the applicant’s goods in commerce and is meaningful in consumer’s mind

It cannot be ‘functional’
Must be used in commerce
Does not need to be registered
Does not need to be in a particular form

Trademark as Source Identifiers

Trademark law only protects designations that are used to identify the source.
Basic Law TMEP § 1201.01: A designation functions as a trademark when it indicates to consumers that a single party controls the nature and quality of the goods and services sold under the mark
The source of the goods or services can be anonymous

Consumers do not need to know who produces the goods or services, only that there is a single source controlling the quality of the goods or services

Brand v. Trademark

Brand: may refer to a particular line of goods sold by a company
Trademark: must be used to distinguish the source of particular goods and services, not to describe the company itself or its method of doing business

Trade Names

A designation chosen by a company to identify the business to consumers

Example: P&G is the trade name for Procter & Gamble; identifies the entire business and its operations, not just the goods and services
This does not grant you trademark rights. You can just do business under this name.

It could be a trademark if you use your biz name to distinguish your goods from others

Two major Concerns for the Merchant

Whether the chosen designation can function as a mark

Is it distinctive enough so that consumers will perceive the designation as functioning as a source identifier?

Whether the merchant has in fact correctly used the designation in a manner appropriate to create trademark rights

Has the merchant created a connection in the minds of consumers between the mark and the source of the goods sold under that designation?

Basic Lanham Act

§ 1 (15 U.S.C. § 1051) – Actual use & intent to use registration process

§ 1A – actual use
§ 1B – intent to use

§ 2 (15 U.S.C. § 1052) – Bars to registration

§ 2 (a) – Immoral, deceptive, or scandalous matter; False connection
§ 2 (b) – Flag, coat of arms, or other insignia
§ 2 (c) – Name, portrait, or signature of a person or deceased President while widow still living w/o widow consent
§ 2 (d) – Likelihood of confusion/Deception
§ 2 (e) –

(1) merely descriptive or deceptively misdescriptive
(2) primarily geographically descriptive
(3) primarily geographically misdescriptive
(4) primarily merely a surname

§ 2 (f) – Likelihood of confusion; Allows the registration of certain descriptive marks on a showing of secondary meaning; § 2 (a), (b), (c), (d), (e)(3), and (e)(5) are complete bars

§ 32 (15 U.S.C. § 1114) – Infringement of registered marks, Remedies
§ 43(a) (15 U.S.C. § 1125(a)) – Infringement of unregistered marks
§ 43(c) (15 U.S.C. § 1125(c)) – Dilution of registered/unregistered marks

§ 45 (15 U.S.C. § 1127) – Definitions

Trademark Distinctiveness

A mark must be distinctive to be protectable

Inherently distinctive OR Acquired distinctiveness

The level of distinctiveness is a question of fact

3. Word Marks

The Abercrombie spectrum is most relevant when discussing word marks, since it encourages a court to analyze the meaning of the mark as it is understood in the societal, linguistic, and commercial context in which the mark is used.

4. Abercrombie Spectrum

Fanciful: coined/made-up term (ex. “Polaroid” camera)

Have to be careful that the term does not become generic

Arbitrary: Common word applied in an unfamiliar way (ex. “Apple” for laptop computers)
Suggestive: Link to product requires imagination (ex. Nike sports equipment)
Descriptive: imparts information directly, requires secondary meaning for protection (ex. Fish-Fri)
Generic: can never be protected (ex. escalator, aspirin)

Trademark Policing to Protect TMs from becoming generic:

You can’t Xerox a Xerox on a Xerox. But you can make a copy on a Xerox copier.

Note: In deciding how to categorize a mark, courts consider:

How the relevant consumers (generally made up of the potential purchasers of the product or service; some courts have broadly defined this to include investors or other with an actual or potenti

erring to the genus of which the particular product is a species (Abercrombie)

Who are you vs. what are you test

A mark answers the buyer’s questions, “Who are you?” “Where do you come from?” “Who vouches for you?” with the source of the product
Generic name of the product answers the question, “What are you?” with the generic name of the product

What to do when you have a phrase: Frito Lay v. Princeton Vanguard

It is well settled that we may analyze the component parts of a proposed mark as a step on the way to an ultimate determination that the proposed mark as a whole is generic.
By contrast, “where the proposed mark is a phrase (such as ‘Society for Reproductive Medicine’), the board ‘cannot simply cite definitions and generic uses of the constituent terms of a mark’; it must conduct an inquiry into ‘the meaning of the disputed phrase as a whole.”
(“[I]f the compound word would plainly have no different meaning from its constituent words, and dictionaries, or other evidentiary sources, establish the meaning of those words to be generic, then the compound word too has been proved generic.

Not Inherently Distinct

RULE: If a designation merely describes the characteristics, functions, qualities, ingredients, properties, or uses of the product = descriptive = not protectable under trademark law without acquired secondary meaning

Trademark rights cannot attach automatically from the first use in commerce
Must establish that the mark has acquired the requisite distinctiveness so that consumers now have come to understand that the designation is indicating the source and not describing features of the product

Marks that require no exercise of imagination
Incorporate terms that are commonly used to describe the goods or services being sold
Merely descriptive marks need not describe the “essential nature” of the product

It is enough that the mark describes some aspect of the product

Evaluation of the mark:

Must be done in relation to the goods or services sold under the mark, not in the abstract
Designation must be evaluated in its entirety

Two problems with not inherently distinct marks:

A consumer’s first reaction to such terms is to perceive them as merely conveying information about some benefit the consumer will obtain from the product NOT the source
Descriptive marks incorporate terms that competitors are likely to need to use to describe their own products

Can’t have a monopoly over common words – would put competitors at a significant non-reputational competitive disadvantage