Chapter 8: Trademarks

What are job-seekers today encouraged to develop?

A personal brand.

What is a personal brand statement?

A short “catchphrase” describing one’s specific expertise, not a job title or mission statement.

When did branding first begin?

Around 2700 BCE, when Egyptians branded cattle.

By the fifth century BCE, what goods were branded?

Pottery and other goods in Rome and Greece.

Why did mass producers in modern times begin branding their goods?

To give products an identity and compete with locally produced goods.

What commercial advantage does a brand provide?

It gives a product or service a recognizable identity that adds market value.

Why did companies start protecting their brands?

Because a brand’s identity provided competitive and commercial value.

What is the primary legal tool for protecting a brand?

Trademark law.

Define “trademark.”

Any word, name, symbol, or device (or combination) used to identify goods in commerce.

Give an example of a well-known trademark.

The Coca-Cola logo.

What is a “service mark”?

A word, name, symbol, or device used to identify services in commerce.

Example of a service mark?

Orkin pest-control company.

Are trademark and service mark laws different?

No, the law for both is identical.

What type of property is a trademark considered?

A form of intellectual property.

How does someone acquire property rights in a trademark?

Through use of the mark in commerce.

What exclusive right does a trademark owner have?

To use the mark to identify their goods or services, with some limitations.

What additional protection does federal trademark registration provide?

Extra legal protection and assurance of ownership rights.

What does branding ultimately do for a business?

Creates recognition, adds value, and differentiates products or services.

What determines whether a term can become a trademark?

The class of term it falls under — generic, descriptive, suggestive, or arbitrary/fanciful.

What are the four classes of trademark terms (from weakest to strongest)?

Generic, Descriptive, Suggestive, and Arbitrary/Fanciful.

What is a generic term?

A common name for a product or service that can never be trademarked.

Why can’t generic terms be trademarked?

Because no company can monopolize a general product name (like “chair”).

How do courts decide if a term is generic?

Through research, expert judgment, and sometimes consumer surveys.

What happened in the “Hog Farm” case (Harley-Davidson v. Grottanelli)?

The court ruled that “hog” is a generic term for large motorcycles, not just Harley’s bikes.

What did the court decide in the “Pretzel Crisps” case?

“Pretzel Crisps” is generic because it simply describes the product (pretzel-like crackers).

What is “genericide”?

When a trademark becomes generic because the public uses it to describe all similar products.

Give examples of trademarks that became generic.

Aspirin, Cellophane, Escalator, Thermos.

What are some companies that actively protect against genericide?

Kleenex, Xerox, and Velcro.

What is a descriptive term?

A term that directly describes a product’s qualities or characteristics.

Are descriptive terms automatically protected?

No, they must gain secondary meaning first.

What is “secondary meaning”?

When the public associates a descriptive term with a specific brand.

Example of a descriptive mark with secondary meaning?

“Wheaties” — describes wheat flakes but is now linked to General Mills.

What four factors do courts use to determine secondary meaning?

1. Amount and manner of advertising

2. Volume of sales

3. Length and manner of use

4. Consumer survey results

What is a suggestive mark?

A mark that hints at a product’s nature and requires imagination to make the connection.

Are suggestive marks automatically protected?

Yes.

Give examples of suggestive marks.

Coppertone (suggests suntan lotion), Microsoft (suggests computer software).

What is an arbitrary mark?

A common word applied in an unrelated way (e.g., Apple for computers).

What is a fanciful mark?

A completely made-up or coined word used as a trademark (e.g., Oreo, Kodak).

Are arbitrary and fanciful marks automatically protected?

Yes — they receive the strongest level of trademark protection.

Which class of terms gets the strongest trademark protection?

Arbitrary and Fanciful marks.

Which class of terms can never be trademarked?

Generic terms.

Which class of terms requires secondary meaning for protection?

Descriptive terms.

Which classes of marks are automatically protected?

Suggestive, Arbitrary, and Fanciful marks.

What is the main idea of 8.3 “What Can Be Registered as a Trademark”?

Trademarks can protect more than words or logos — they can also cover colors, shapes, sounds, and trade characters that identify a brand.

How do trademark and copyright differ in protection?

Copyright protects creative works (like Spider-Man movies or comics), while trademark protects brand identifiers (like the name “Spider-Man” and its symbols).

Can a color alone be trademarked?

Yes, but only if it has acquired secondary meaning — consumers associate that color with a specific brand.

What is the key case that established color trademarks?

Qualitex Co. v. Jacobson Products (1995)

What product was involved in Qualitex Co. v. Jacobson Products (1995)?

Green-gold dry-cleaning press pads made by Qualitex.

What did the Supreme Court decide in Qualitex Co. v. Jacobson Products (1995)?

A color can be trademarked if it identifies the source of goods and has acquired secondary meaning.

Why did Qualitex win in Qualitex Co. v. Jacobson Products (1995)?

People in the dry-cleaning industry associated the green-gold color specifically with Qualitex’s pads.

What does the Lanham Act say about color trademarks?

It allows protection for almost anything that conveys meaning and identifies goods or services.

Name examples of companies with color trademarks.

UPS (brown), Tiffany & Co. (blue), Christian Louboutin (red soles).

Does a color trademark stop everyone from using that color?

No — it only restricts others from using the color on the same or similar products/services.

Can a product’s shape be trademarked?

Yes, if the shape identifies the brand and has acquired secondary meaning.

Give examples of shape trademarks.

Coca-Cola bottle and Toblerone chocolate bar.

Can sounds be trademarked?

Yes, if consumers associate the sound with a specific brand.

Give examples of sound trademarks.

NBC chimes, 20th Century Fox fanfare, MGM lion’s roar, Tarzan yell.

What is a trade character?

A mascot or figure (live, animated, or digital) that represents a brand and can be trademarked.

Give examples of trade characters.

Flo from Progressive Insurance and the GEICO Gecko.

What is trade dress?

The overall look or design of a product that signals brand identity — includes color, shape, packaging, and more.

What does trade dress protection cover?

The distinctive appearance or features of a product or service that consumers recognize as a brand.

What types of things can be registered as trademarks?

Words, logos, colors, shapes, sounds, trade characters, and trade dress.

What do all valid trademarks have in common?

They identify the source of goods or services in consumers’ minds.

Which types of trademarks usually require secondary meaning?

Colors, shapes, sounds, and trade dress.

What landmark case confirmed that color alone can be trademarked?

Qualitex Co. v. Jacobson Products (1995)

Under U.S. law, can any mark used in commerce be denied registration?

Generally no, but 15 U.S.C. §1052 lists specific types of marks that cannot be registered.

Name examples of marks that cannot be registered.

Marks that are:

• Immoral, deceptive, or scandalous

• Disparaging or falsely suggest connections

• Use U.S. or state flags, coats of arms, or insignias

• Use the name/portrait/signature of a living person without consent

• Use a deceased president’s name without spouse’s consent

• Confusingly similar to another mark

• Deceptive about products or geographic origin

What is the key point of Matal v. Tam (2017) in trademark law?

Banning disparaging marks violates the First Amendment; offensive speech restrictions in trademarks may be unconstitutional.

What was the Marsha Fox case (2001) about?

She tried to trademark “Cock Sucker” for chocolate lollipops shaped like roosters. Denied due to vulgar interpretation dominating.

What did the Erik Brunetti case establish?

The law banning scandalous or immoral marks (like “fuct”) is unconstitutional; content-based restriction fails strict/intermediate scrutiny.

Which trademark restrictions are still enforceable after Tam and Brunetti?

Using the name/image of a living person without consent, deceased president’s name while spouse is alive, or federal/state emblems.

Can you register a trademark on your own?

Yes, but the process is complex; the PTO recommends hiring an attorney.

What must you determine first when filing a trademark?

Basis for filing: already using the mark in commerce, or intent to use it.

What is required under an “intent-to-use” basis?

Assert intent to use, then actually use in commerce within a limited period; file extra forms and pay fees.

Why must applicants search the USPTO database before filing?

To avoid conflicts with existing marks.

How much does it cost to file a trademark?

$225–$400 per class of goods/services; additional fees for multiple classes.

How many international classes of goods/services exist for trademarks?

45 classes (e.g., Class 13 = firearms, explosives; Class 25 = clothing).

How long is a registered trademark valid?

10 years; maintenance forms required between the 5th–6th year. Can be renewed indefinitely.

Who enforces proper use of a trademark?

The registrant is responsible; the USPTO does not police usage.

How does the Lanham Act define trademark infringement?

Use in commerce of any reproduction, counterfeit, or imitation of a registered mark likely to confuse, deceive, or cause mistake.

What are common forms of infringement?

Using the mark on labels, signs, packages, advertisements, or products intended for commerce.

What remedies exist for intentional infringement?

Civil damages (profits + losses + costs), up to 3x damages, statutory damages $1,000–$200,000 per mark; up to $2M for intentional infringement, plus injunctions.

What remedy exists for unintentional infringement?

Injunction preventing further use; publishers unaware of infringement are also only subject to injunction.

What is the key factor courts consider in infringement cases?

Likelihood of confusion.

What are the 8 factors for determining likelihood of confusion?

1. Strength of the mark
2. Proximity of the goods
3. Similarity of the marks
4. Evidence of actual confusion
5. Marketing channels used
6. Type of goods & purchaser care
7. Defendant’s intent
8. Likelihood of expansion of product lines

Do all 8 factors for determining likelihood of confusion need to favor one party for a court to rule?

No, courts weigh factors on balance; some factors may be more important depending on the case.

What is trademark dilution?

When another’s use of a mark doesn’t cause confusion or compete directly but still harms the value or distinctiveness of a famous mark.

What law recognizes trademark dilution?

The Lanham Act.

What are the two types of trademark dilution?

1. Dilution by blurring
2. Dilution by tarnishment

What legal remedy is available for trademark dilution?

The trademark owner can get an injunction to stop the other party from using the mark.

What is dilution by blurring?

When a junior mark is similar enough to a famous senior mark that it weakens its uniqueness.

What factors determine if a mark is “famous” under the Lanham Act?

1. How long, widely, and where the mark was advertised/publicized

2. The volume and reach of sales

3. The extent of public recognition

4. Whether the mark is federally registered

What major law changed dilution standards in 2006?

The Trademark Dilution Revision Act (TDRA).

Before 2006, how similar did marks have to be for dilution?

They had to be identical or nearly identical.

After the 2006 TDRA, what new factors do courts consider for dilution?

1. Degree of similarity between marks

2. Distinctiveness of the famous mark

3. Exclusivity of use

4. Recognition of the famous mark

5. Intent to create association

6. Actual association between the marks

What happened in Levi Strauss & Co. v. Abercrombie & Fitch (2006)?

• Levi claimed Abercrombie’s Ruehl stitching diluted its Arcuate design.

• Appeals court used the new TDRA standard (similarity, not identicality).

• Abercrombie dropped the design.

What was the key takeaway from Levi Strauss v. Abercrombie?

Even similar marks can cause dilution — not just identical ones.

What is dilution by tarnishment?

When a mark is used in a way that links it to something offensive or unsavory, hurting its reputation.

Example of dilution by tarnishment?

Anheuser-Busch v. Balducci Publications — fake “Michelob Oily” ad linked the beer brand to pollution and oil, tarnishing its image.

What modern case revisited dilution and parody?

Jack Daniel’s Properties v. VIP Products (2023).