TRADEMARKS

Mark Kuller Trademark Review IP Law 2023

Author: Mark D. KullerCopyright: 2019, 2022 Mark D. Kuller

Trademarks:

  • Definition: Trademarks encompass words, phrases, logos, and symbols that serve to identify and distinguish the source of goods from those of others. They act as identifiers of the producer or provider, thereby adding value to both the products and brand recognition.

  • Service Mark: Similar to trademarks, service marks specifically identify services rather than physical goods. It is important to note that services that are customary or routine in relation to a product generally do not qualify for service mark protection.

  • Trade Dress: This can be registered or unregistered and covers the overall visual appearance of products or their packaging, which includes size, shape, color, texture, and graphics.

Trade Names:

  • Trade names are not typically registered under the Lanham Act unless they distinctly identify the source of goods or services. For example, the name "Fidelity Investments" includes their well-known fund, the "Fidelity® Magellan® Fund."

  • State trademark registration offices allow companies to register trade names that merely identify the company without a direct connection to products or services.

  • Common law provides a level of protection against similar company names, although this protection is weaker compared to registered trademarks.

General Principles:

  • Trademark rights are awarded to the first user of a mark that is found to be distinctive. This principle ensures that senior users of a mark can prevent junior users from causing confusion with similar marks, which is rooted in concepts of unfair competition and consumer deception.

Trademark Definition (Lanham Act § 45, 15 U.S.C. § 1127):

  • A trademark encompasses any combination of words, names, symbols, or devices used in commerce to distinguish goods, thereby indicating their source—even if the actual source remains unknown.

Service Mark Definition (Lanham Act § 45, 15 U.S.C. § 1127):

  • A service mark refers to a word, name, symbol, or device utilized in commerce specifically to identify and distinguish a provider’s services from those of others.

  • Titles, character names, and other distinctive features related to programs can be registered as service marks, even if they are primarily meant for advertising goods to promote the sponsor’s product.

Trade Dress/Product Configurations:

  • The Lanham Act provides protection for both registered and unregistered trade dress, encompassing aspects such as design, packaging of materials, and product shape. As per Lanham Act § 43(a), this protection extends to features of products that are inherently distinctive.

False Designations and Descriptions (Lanham Act § 43(a)(1)(A), 15 U.S.C. § 1125):

  • This provision prohibits deceptive practices in commerce that may confuse consumers regarding the origin or association of goods with individuals or businesses. Civil action can be initiated by anyone who believes they would incur damage from such acts.

Additional False Designation Provisions (Lanham Act § 43(a)(1)(B), 15 U.S.C. § 1125):

  • This section specifically prohibits the misrepresentation of goods and services in commercial advertising or promotion, ensuring truthful advertising standards are upheld.

Collective Marks:

  • Type 1: Collective marks used by members of a collective organization identify membership rather than the sale of specific goods or services. A well-known example is FTD, which signifies membership in a floral delivery service.

  • Type 2: These marks serve solely to indicate membership in a collective organization and do not identify goods or services, like the PGA (Professional Golfers' Association) and AAA (American Automobile Association).

Distinctiveness:

  • Inherently Distinctive Marks: Marks such as arbitrary or fanciful (e.g., Kodak for photographic supplies) and suggestive marks (e.g., Coppertone for sunscreen) are recognized as unique sources without needing further evidence for protection.

  • Not Inherently Distinctive Marks: Marks considered descriptive, geographic, and personal names require proof of secondary meaning to access trademark protection.

  • Generic Terms: These identify a general class of goods and are not subject to trademark protection, such as "car" and "telephone." Generic terms cannot be registered or enforced as trademarks.

Proof of Secondary Meaning:

  • This is essential for descriptive marks, as it indicates that the mark has acquired a unique association in the public mind, which can be established through factors such as customer surveys, advertising, sales volume, and media coverage.

  • Federal Circuit Test for Secondary Meaning: Evaluates various factors including the length of use in commerce, success in advertising, and instances of actual consumer confusion to substantiate claims of secondary meaning.

Fair Use Defense (Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4)):

  • This allows the use of descriptive terms that have acquired secondary meaning without liability, as long as it does not contribute to consumer confusion. Geographic terms also qualify under this defense, emphasizing the balance of trademark rights and fair competition.

Additional Considerations:

  • Doctrine of Foreign Equivalents: When assessing trademark applications, foreign terms may be considered based on their descriptiveness and potential for public confusion across languages.

  • Genericide: The unfortunate process where a trademark loses its distinction becomes common public terminology, placing the burden on the trademark owner to prove the mark still retains its