Chapter 2: Distinctiveness

Question 1

Restatement Third

Answer 1

A TM is a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or servies and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others.

Question 2

Lanham Act: TM

Answer 2

Any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown

Question 3

Lanham Act: Service Mark

Answer 3

Any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish the services of one person including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown

Question 4

Lanham Act: Trade name/Commercial name

Answer 4

Any name used by a person to identify his or her business or vocation

Question 5

Certification Mark

Answer 5

1. A mark used by a person other than its owner to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
2. Can be protected by common law or federal registration.
3. Most frequently used by producers of wine and food from a particular region.

Question 6

Collective Mark

Answer 6

1. TM or service mark used by the members of a cooperative, an association, or other collective group or organization, and includes marks indicating membership in a union, an association, or other organization.
2. Under common law protected under unfair competition; federal registration

Question 7

U.S. Law

Answer 7

1. Registration of TM merely recognizes the TM rights that exist at common law through use of symbol to identify source of goods.
2. TM system is use-based system.
3. Trade names cannot be registeredt with PTO but may be protected under unfair competition under federal statute.

Question 8

Generic

Answer 8

1. Connotes basic nature of articles or services
2. No TM protection
3. Competition needs publis use of generic terms
4. “Who test?”: Does the mark tell you “who” makes the product or does it tell you “what” the product is?
5. Terms can become general and TM protection will be denied save for those markets where th term still had not become generic and a secondary meaning has been shown to continue
6. A term may be generic in one market and descriptive or suggestive or fanciful in another
7. Test: whether the term that identifies the product is generic often depends on the competitor’s need to use it; if no commonly used alternative effectively communicates the same functional information, the term that denotes the product is generic

Question 9

Descriptive

Answer 9

1.Conveys an immediate idea of the ingredients, qualities, or characteristics of the goods.
2.Not as protectable as a TM unless the mark has acquired secondary meaning in the minds of the consuming public.

Question 10

Suggestive

Answer 10

1. Suggests rather than describes what the product or service is
2. It requires imagination, thought, and perception to reach a conclusion as to the nature of the goods
3. Entitled to registration without proof of secondary meaning

Question 11

Arbitrary or Fanciful

Answer 11

1. Bears no relationship to products or services to which they are applied
2. Protectable without secondary meaning
3. Arbitrary: common English words that have meanings aside and unrelated to the way in which the TM is used (dove, amazon, apple)
4. Fanciful: made-up words that inherently stand for the TM product (geico)

Question 12

Distinctiveness

Answer 12

1. Prerequiste to TM protection
2. Inherently distinctive: does not require secondary meaning
3. Acquired distinctiveness: has secondary meaning

Question 13

Abercrombie v. Hunting World

Answer 13

1. The distinctiveness of a trademark can vary depending on how the mark is used.
2. When used to identify apparel typically associated with going on safari in Africa, the term is generic and not entitled to protection.
3. 5 categories: generic, descriptive, suggestive, arbitrary, fanciful

Question 14

Descriptiveness and Secondary Meaning

Answer 14

1. to establish secondary meaning, a plaintiff must show that the primary significance of the term in the minds of the consuming public is not the product but rather the producer
2. mark must denote to consumer a “single thing coming from single source”
3. it is the effect, rather than the effort invested, that is determinative, and expenditures of large monies in advertising doesn’t in itself create protectable rights

Question 15

Zatarain’s Inc. v. Oak Grove Smokehouse

Answer 15

1. A descriptive term generally is not trademarkable unless it has achieved a secondary meaning in the market.
2. Further, even if a descriptive term has achieved a secondary meaning, an allegedly infringing use of the term is fair use if it is used in good faith simply to describe the product of the allegedly infringing party.
3. A trademark holder cannot have a monopoly on a term’s original, descriptive meaning.
4. Competitors need to use the terms to describe their own, similar products. Competitors would be hard-pressed to describe a batter for frying chicken or fish without using the terms chicken fry or fish fry.

Question 16

Filipino Yellow Pages

Answer 16

1. A trademark consisting of a combination of generic terms may be protectable as a descriptive mark, but only if the mark viewed as a whole sufficiently overcomes its genericness to identify the producer rather than the product.
2. FYP is not an unusual combination, does not deviate from common usage, and consumers and the general public view and use the combined term generically, not specifically.

Question 17

Mil-Mar Shoe

Answer 17

1. A word or term that is used in a manner consistent with its common meaning (dictionary definition) will likely be held to be generic and therefore ineligible for trademark protection.
2. Generic words or terms are not protectable as trademarks, because they serve to identify a class or group of goods rather than an individual producer’s goods, and allowing one producer to have exclusive rights to such a term would be unfair to other producers of the goods.
3. Generic words may amount to a descriptive term afforded possible trademark protection, however, if the generic word is used in an unusual or distinctive way that allows it to serve as a source-identifier for a particular producer.

Question 18

Haughton Elevator v. Seeberger

Answer 18

Trademarks that evolve over time into a generic term for a class of items, rather than remaining a source-identifying distinctive term, may lose trademark status.

Question 19

USPTO v. Booking.com B.V.

Answer 19

1. A domain name that consists of a generic word plus .com is generic and thus unregistrable as a trademark only if consumers generally perceive the domain name as generic.
2. Here, although booking and .com are both generic terms if taken alone, booking.com must be treated as a compound word. Because consumers generally understand that booking.com connotes a specific travel-reservation service, the domain name is not generic and is thus registrable as a trademark.

Question 20

Distinctiveness of Non-Verbal Identifiers: Logos, Colors, Product Design (Seabrooks Foods Test)

Answer 20

1. Whether it is a “common” basic shape or design;
2. Whether it is unique or unusual in a particular field;
3. Whether it is a mere refinement of a commonly adopted and well-known form of ornamentation for goods; or
4. Whether it is capable of creating a commercial impression distinct from accompanying words (does the design stand on its own?)

Question 21

Trade Dress

Answer 21

the total image and overall appearance of a product/business (i.e. red and white stripes at TGIF)

Question 22

Star Indus v. Bacardi

Answer 22

1. Stylized shapes or letters may qualify for TM protection, provided that the design is not commonplace but rather unique or unusual in the relevant market (inherent distinctiveness)
2. However, Star’s mark is weak and is entitled to limited protection and there is no likelihood of confusion with Bacardi (would have to be virtually identical to be an infringement)

Question 23

Amazing Spaces v. Metro Mini Storage

Answer 23

1. For a trademark to be valid, it must either: (1) be inherently distinctive or (2) have acquired distinctiveness.
2. To be inherently distinctive, a mark must be so unique or unusual that it naturally or automatically identifies a particular source for a product or service.
3. To have acquired distinctiveness, consumers must have learned to associate a mark with a specific source. Courts call this association “secondary meaning.”

Question 24

Secondary Meaning

Answer 24

1. length and manner of use of the mark or trade dress
2. volume of sales
3. amount and manner of advertising
4. nature of use of the mark or trade dress in newspapers and magazines
5. consumer-survey evidence
6. direct consumer testimony
7. defendant’s intent in copying the trade dress

Question 25

Two Pesos v. Taco Cabana

Answer 25

1. Trade dress that is inherently distinctive is protectable under 43 of Lanham Act without a showing that it has aquired secondary meaning.
2. Don’t need to know functional v. non-funtional trade dress
3. In general, trade dress is protectable under 43 if it is not functional and is either inherently distinctive or has secondary meaning

Question 26

Qualitex v. Jacobson Products

Answer 26

1. There is no rule absolutely barring use of color alone as TM if it meets all other legal requirements of a trademark
2. Color NEEDS secondary meaning for TM protection
3. Colors generally are not essential to a product’s function and thus the exclusive use of a color by way of a trademark would not put competitors at a functional disadvantage (other colors are equally useable)
4. Color can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function

Question 27

Genericide

Answer 27

1. When a brand becomes so well known that “what” question begins to overcast “who” question, thus TM becomes generic
2. Steps to prevent:
   * expand into different markets so you’re not just known as one thing
   * enforcement: sue everyone