2.02 DISTINCTIVENESS Flashcards
DISTINCTIVENESS
POLICY = Exclusive Brand Signals to Establish Reputation : Language Describing Products to Tell Consumers What is Offered
CRITICAL METRIC = What Does the Consumer Think / Call the Good?
Inherently Distinctive Sec. 2 (by which the goods of the applicant may be distinguished)
Capable of Becoming
- Sec. 2(e)(1) (merely descript);
- Sec. 2 (e)(2) (pri. geo. descript);
- Sec. 2 (e)(4) (pri. merely surname);
- Secs. 2 & 14(3) (incapable of becoming)
CONTINUUM = Things Move Up and Down Based on Consumer Thought …
Abercrombie & Fitch (2d 1976) (Safari Jacket)
TRADEMARK
- Fanciful, Made Up Terms, e.g., Kodak
- Arbitrary, Common Terms Without Association or Relationship to Underlying Product, e.g., Apple
- Suggestive, Common Terms Associating Something Other Than the Product, e.g., Nike (“Victory”)
POTENTIAL
Descriptive, Terms Describing the Product Must Acquire Secondary Meaning for Trademark Eligible
UNAVAILABLE
Generic, The Consuming Public Associates the Term with the Product Itself NOT the Producer
LINE BETWEEN DESCRIPTIVE AND SUGGESTIVE
- LEGAL AUTHORITY
- DESCRIPTIVE TEST
- SECONDARY MEANING
- LEGAL AUTHORITY
COMMON LAW = NOT Protected Under the Common Law
- Consumers NOT Likely to Perceive Them as “Source Indicators” the Terms are Informative About Product NOT Producer
- Competitors Need These Same Terms to Describe Own Goods or They Suffer Competitive Disadvantage
LANHAM ACT = Allowed Once AQUIRE SECONDARY MEANING ( Identifies to Consumer, Purpose of Trademark )
- DESCRIPTIVE TEST
Security Center, Ltd. v. First National Security Centers (5th 1985)
PURPOSE = Is it Suggestive (Inherently Trademark Eligible) or Descriptive (Term Needs Secondary Meaning for Eligibility)
A. Consumer Imagination? [Arbitrary]
- How hard is it for consumer to jump from mark to product?
- How much creativity is needed for producer to come up with the term? … Is it clever?
(Found = “Security” and “Center” are Just Two Words Thrown Together)
B. Similar Products Use Same Term? [Concrete]
- Looking at if / how similar products use the terms?
- Need to Look for Commonality in Market
- Look Beyond Competitors Who are Arguing Over the Mark, Both Always Using
- (Found = Version of Words Used in 12 of 105 Companies = Descriptive > Suggestive)
- SECONDARY MEANING
Echo Travel, Inc. v. Travel Associates, Inc. (7th 1969)
SECONDARY MEANING = “Mental Association in Buyer’s Mind and a Single Source of the Product”
RESTATEMENT = X
SECONDARY MEANING STANDARD
In re The Boston Beer Co. (Fed. Cir. 1999)
Need to Show Consumers Recognize Secondary Meaning
The More Descriptive a Mark the Harder it is to Get Trademark, Laudatory Marks, e.g., BEST BEER IN AMERICA, Hard to Get
DIRECT EVIDENCE = Must Define Relevant Consumer Class And Show Membership in the Class, Credibility, etc.
- Direct Consumer Testimony
- Consumer Surveys
CIRCUMSTANTIAL EVIDENCE
- Exclusivity, Length, and Manner of Use ( Using for a Short Time Cuts Against BUT NOT Dispositive ) … Lanham Act = Use for 5 Years is Prima Facia Evidence (Presumption in Law)
- Amount and Manner of Advertising ( INSUFFICIENT on Own to Support a Mark … Consumers Must Respond to Mark )
- Amount of Sales and Number of Customers
- Established Place in the Market
- Proof of Intentional Copying
CLASSES : GENERICNESS Kellogg Co. v. National Biscuit [Nabisco] (1938) (SHREDDED WHEAT)
“To establish a trade name in the term “X” the plaintiff must show more than a subordinate meaning which applies to it. It must show that the PRIMARY SIGNIFICANCE of the term in the minds of the consuming public is not the producer.”
“GENERICIDE”
Producer’s Marketing / Market Dominance Create a Public Association Between Product and Mark
How to Avoid = Prevent Consumer from Blending Species with Genus
- Use 2 Names: TRADENAME = Your Mark & GENERIC NAME = What You Allow Everyone to Call It
- Use the Word “Brand” After the Trademark to Highlights Product as Species of a Genus, e.g., Kleenex Brand Tissues
- Use the Mark ONLY as an Adjective to Describe the Genus of the Product, e.g., Kleenex Tissues
- Police the Marketplace
- Run “Educational” Advertisements
- Use the Mark on Multiple Products
- Consistently Use Distinctive Text, Font or Color
DOCTRINE OF FOREIGN EQUIVALENTS Japan Wine Imports Case (Not Read)
FACTS: First Importer at USPTO No Translation of “Atocho Yama”; Second Importer in Dist. Ct. “Atocho Yama” is Saki Subset
SECOND CIRCUIT = It Matters What Consumers Think in Japan, TM Struck Down
US Marks Becoming Generic in Other Countries … Consumer Association in Country of Origin is Probably What Matters for Determining IF Generic
PERSONAL NAMES
Is it a Surname?
IS IT A SURNAME … PAGE 132 = 5 FACTORS SHOWING PROBABLY A SURNAME 1. 2. 3. 4. 5.
PERSONAL NAMES
Rule
RULE = Cannot be Registered Unless is Has ACQUIRED DISTINCTIVENESS Under Sec. 2(f)
NAMES NOT INHERENTLY DISTINCTIVE … Unlikely to Be Distinctive to Consumer Just Because Its Your Name
INQUIRY = Has “X” Developed a “Secondary Meaning” see Line Between Descriptive and Suggestive Terms
LANHAM ACT = Allowed Once AQUIRE SECONDARY MEANING … Once Descriptive Term Identifies the SOURCE to Consumers it Fulfills the Purpose of Trademark and is Allowed
RULE AGAINST TM IN NAMES Peaceable Planet, Inc. v. Ty Inc.
RULE IS AGAINST PERSONAL NAMES
- Law is Reluctant to Forbid People From Using Their Own Name in Business
- Common Names are Not Source of Identification
- Name of Business Owner May Provide Valuable Information to Consumers
PRINCIPLE = “One way of going astray in legal analysis is to focus on the semantics of a rule rather than its purpose.”
HELD = “NILES” the Stuffed Animal Camel is NOT About Someone’s Proper Name Therefore the Rule Does Not Apply
SALE OF PERSONAL NAME
Taylor Wine Co. v. Bully Hill Vineyards, Inc.
FACTS: Purchaser of Grandfather’s Business Seeking Injunction Against Grandson Starting New Business
FAVORING FREE USE OF OWN NAME
- Limited Restriction IF Second Comer is Using Bona Fide Own Name
- Restrictions Allowed to Prevent Confusion, May Require Disclaimers
- NOT a Complete Injunction
DISFAVORING FREE USE OF OWN NAME
- Sell Own Business Along with Associated Goodwill
GEOGRAPHIC NAMES,
Sec. 2(e)(2)
American Waltham Watch v. US Watch (S. J. Ct. Mass. 1899)
GEOGRAPHICALLY DESCRIPTIVE, When used on or in connection with the goods of applicant is primarily geographically descriptive of them, except as indications of regional origin may be registerable under Sec. 4
SIMILAR TO PERSONAL NAMES
- FACTS: US Watch Trying to Label Watches as Made in “Waltham” → Same as Personal Names
- USUAL RULE: Allows Manufactures to Say Where Something is Made UNLESS Another Manufacturer Establishes They Have Secondary Meaning in the Mark Associated with the Name of the Place
