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University of South Carolina School of Law
Snow, Ned

Gives mark holder exclusive rights in trademark
Prevents others from using mark in commerce that would lead to consumer confusion
May be:
Serves to identify and distinguish goods from others
Any symbol that carries a meaning
What law governs trademark?
The constitution’s commerce clause
Congress regulates trade among the several states
The subject of trademark protection must be distinct
It must be used in commerce
It MUST NOT be functional
Don’t need to actually know who the manufacturer of the good is – they must use some sort of indication to show brand
Word receives protection if it identifies the source of the good: NOT describing the good itself
Ex: Honda – describes car source – not the car itself
WORD MARKS (three categories)
Inherently Distinctive Marks
The word’s intrinsic nature serves to identify a particular source
Ex: Apple – even though it is a fruit, identifies the computer
Arbitrary or Fanciful
Arbitrary: a meaning that does not relate to the good or service that it identifies (ex: Apple computers)
Fanciful: a word that has been created for trademark function (ex: ADIDAS, IKEA)
Ex: Greek letters; by themselves, no protection; a combination of them can be a valid trademark.
Suggests some sort of characteristic or attribute about the good or service it represents
Requires a mental inference between the meaning of the term and the meaning of the good
Ex: googol = google; greyhound = bus company, orbitz = travel website
Acquired Distinctiveness (merely descriptive)
Over time, consumers may come to identify a descriptive word as identifying a source (ex: American Airlines)
Secondary meaning required for trademark protection
Developed in time – the brand meaning becomes more prominent than the original descriptive meaning
Gained meaning second in time, but first in importance
How to show secondary meaning?
Survey evidence (most persuasive)
Length and manner of use of the name
Nature and extent of advertising and promotion of name
The volume of sales
Instances of actual confusion
Categories that require secondary meaning:
Merely descriptive
Describes some aspect of the good or describes the intended purpose or function of the good
King Size: Does it import info directly about the ingrediants, qualities, characteristics, function or purpose of the good?
Ex: King Size is not generic. It doesn’t describe what the product is, but a description of a characteristic of the product.
Remember: it can be flexible. It can be descriptive of the result of a product (ex: fineline pencils: fineline describes the result of the pencil)
Descriptive has many similarities to suggestive: it may overlap, depending on what one court says against another
Deceptively misdescriptive
Inaccurately describes the good
Ex: titanium on cars that aren’t titanium
Three Part Test:
Is the term misdescriptive of the good?
Arbitrary, misdescriptive, and deceptive apply here
If so, are perspective purchasers likely to believe that the misdescription actually describes the good?
Gets rid of arbitrary words
If so, is the misdescription likely to affect the decision to purchase?
If yes, it would be deceptive and no TM allowed (even if there is secondary meaning)
***This test creates a prima facie case of deception. Proponent has burden to produce countering evidence to overcome the rejection***
Differentiate from a deceptive term:
Deceptive terms materially affect the decision to purchase the good; DM terms do not
Aren’t arbitrary terms in a sense, deceptively misdescriptive?
Decisions turns on whether the public would understand the term to describe the product
Ex: If public understood Apple to actually be describing the computers – then Apple would be deceptively misdescriptive. The public does not, so Apple is arbitrary
Primarily geographically descriptive

Generic prior to use (“Apple’s apples)
Generic through use (aspirin, thermos)
Starts out distinct, but over time becomes generic
A term (like apple) may be generic for one product (apples) but not for another (computers)
Courts consider diligent efforts by mark holders to preserve source-identifying functions of their marks
When Plaintiff pursues TM action involving a registered mark, burden is on the Defendant to show it is generic
If mark isn’t registered, burden is on Plaintiff to show mark is non-generic
Who are you?/ What are you test?
A valid mark answers “who are you? Where do you come from? Who vouches for you?
Generic mark answers: what are you?
How to Prevent a Mark from Becoming Generic?
Advise your client to first register
Use a generic term next to the product (and refer to the plural)
Example: Two Timex watches (not two Timexes)
Do not use the trademark as a verb
Example: we encourage people to search for the term on google (not: we encourage people to Google the term)
Use distinct typeface (or capital letters or quotes to set off logo)
Example: we serve sandwhiches at the SANDWICH SHOP (not: we serve sandwhiches at the sandwich shop)
Use the word “brand” after the trademark
Ex: Buy band Aid Brand
Use ® or TM symbols
Include statements of trademark right in advertising
Ex: fedex is a trademark of the fedex corporation
If the product is new, create a generic term with the trademark
Ex: trampoline branding jumping nets
Ex: aspirin pain reliever
Use the trademark for a line of products
Ex: Rollerblade represents skating equipment