What is a Trademark

As with copyright law, the law of trademarks is constantly changing as the way we do business, and the international nature of trade, changes. Trademark, however, is only one part of Title 15, which addresses commerce and trade generally. Of course, Title 15, Chapter 22, Trademarks (not to be confused with the repealed Chapter 3) is in good company. Other Chapters of Title 15 concerns themselves with a wide variety of legal issues, including:

• the transportation of firearms (Chapter 18)
• brake fluid regulation (Chapter 33)
• protection of horses (Chapter 44)
• the conduct of sport agents (Chapter 104)

Clearly, these other portions of Title 15 are of no concern to us here, although it is fascinating to see that federal laws regarding brake fluid and sports agents can be found in the same area of the Code. It is important to note, however, that when we refer to various provisions of the federal law of trademarks, we will not include any reference to a particular Chapter. Instead, the first section of the United States Code which is relevant here is Title 15, §1051. The last section of interest is Title 15, §1141n. These represent the beginning and end of Chapter 22, Trademarks.

To keep things simple, we will refer solely to section numbers in these materials. For example, §1051 (Registration of Trademarks) can be found by going to the United States Code Annotated, Title 15, Chapter 22, §1051.

In further research of trademarks issues you might come across references to the Lanham Act. Courts will often cite both the Lanham Act and the corresponding section in Title 15. Please note that this is not a separate or additional source of trademark law. In 1946 the “Lanham Trade-Mark Act” was passed by Congress in order to “provide for the registration and protection of trade-marks used in commerce, to carry out the provisions of certain international conventions, and for other purposes.” 79 P.L. 489 (1946). The Lanham Act has been amended numerous times, and it is codified at 15 U.S.C. §1051 et. seq. In other words, if we have a general understanding of the relevant sections of Title 15, Chapter 22, we will know the basics of trademark law.

Another point of clarification before we begin: “trademarks” for our purposes includes service marks, certification marks, and collective marks. Service marks refer to services rather than goods and the letters “SM” are sometimes used rather than “TM” (although we will soon discuss the difference between using the letters “TM” and the symbol ®). Certification marks refer to either goods or services and serve to identify origin or indicate that a certain standard has been met. Collective marks are, as you might have guessed, used to identify goods or services of a collective organization. Almost everything we say about “marks” or “trademarks,” applies to these other categories as well.

EXAMPLE (1): Bob and Laura start a business selling ferris wheels to circus and fair operators. They name the company “Farris’ Ferris Wheels.” The mark associated with this business would be a trademark.

EXAMPLE (2): Bob’s cousin, Dave, starts a company transporting pets to the vet when owners cannot take time off from work. The mark associated with Dave’s Dog Delivery would be a service mark.

The waters are further muddied when we introduce the concepts of trade names (which refer to the name of a business rather than the product), trademark slogans (which can be registered) and trade dress (the packaging, look and feel of a product).  For our purposes, we will lump these marks together under the heading of “trademarks,” as the same legal principles apply to all.

§1127 provides official definitions of many of these terms. Most importantly, it defines “trademark” as including:

any word, name, symbol, or device, or any combination thereof—

1. used by a person, or
2. which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, 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.

This definition, however, is deceptively simple. Will any word really do?

Trademark history goes back to at least the Middle Ages, when marks were used to help identify the origin of goods. 

Skipping quite a bit ahead, the common law of trademarks in the United States centered on the confusion which occurs when two separate people (or companies) use similar marks to identify their goods.  In Time, Inc. v. Motor Publications, Inc., 131 F. Supp. 846, 849 (1955), the District Court in Maryland stated that in order to receive injunctive relief, a mark holder need not show actual harm or actual confusion, but that

“merely a reasonable likelihood of such confusion” will do.

In general, trademark law seeks to protect consumers against confusion caused by similar marks. This level of protection is relatively thin, i.e., this doesn’t grant mark users a great deal of protection against others who might use similar marks.

Some have argued that another perspective would involve the dilution of a user’s mark. The argument is that by allowing others to use a similar mark, the first user’s value is diluted. This argument was persuasive enough that a number of states passed “anti-dilution” statutes and finally, in 1996, a federal anti-dilution provision was added in the form of §1125(c).

EXAMPLE: Dave’s dog delivery service has been very successful. He decides to begin another business, this time selling accessories for a rodent kept as a pet by some people. He starts up “Farris’ Ferret Wheels,” and develops a logo which is coincidentally quite similar to his cousin Bob’s ferris wheel logo.

Trademarks Must be Distinctive – Not Generic

No matter the type of mark, and no matter the theory underlying protection, the basic purpose of a trademark is to identify something. That said, it must be sufficiently distinctive to identify a single source.

EXAMPLE: Mark wants to open a hardware store and name it “Hardware Store.” He has custom bags made which say “Hardware Store.” Because this name is not distinctive, Mark will not receive trademark protection.

One way a mark can fail to be distinctive is by being generic. Some terms are clearly generic, like band-aid, or aspirin, and will always be that way. Right?

In the early 1900’s various drug manufacturers sold a product labeled “Aspirin” to the public. The active ingredients in the wonder drug had been previously patented by Bayer Co., Inc. and marketed by Bayer under the name “Aspirin” beginning as early as 1899. Despite Bayer’s efforts, the name “Aspirin” became generic because the public failed to associate it with Bayer’s product, and the court refused to prevent others from including the word on their labels. What could have been a very valuable mark was rendered worthless by Bayer’s failure to maintain it. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).

What about band-aids? Sometime within the past few years, ads and packaging for the Johnson & Johnson product changed. Suddenly, consumers were hearing about “Band-Aid brand adhesive bandages,” instead of simply “Band-Aids.” The Band-Aid website (bandaid.com) even includes a “Brand Story.” Apparently, we now use Band-Aid brand bandages, not simply band-aids. An admirable Bayer-like effort to maintain the integrity of a trademark. Another modern-day attempt to avoid Bayer’s mistake has come from Jell-O brand gelatin…no longer simply jello.

So, whether a term is generic or not can be affected by its use. The failure to carefully use a mark and regulate its use by others might result in anything from “Jeep” to “Palm Pilot” becoming generic and thus unprotected against other users.

EXAMPLE: Island Hoppers, Inc. rents small 4-wheel drive vehicles to tourists who want to have fun on the beach. Their fleet includes some Toyotas, several Suzukis, and a number of Kias. They regularly advertise “Jeeps for Rent.” If enough businesses use the word “Jeep” in this way, and if consumers come to identify the word not with a brand but rather with a certain type of vehicle, the term will become generic and will not receive trademark protection.

The Second Circuit in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (1976) did an excellent job of explaining the difficulties in this area. In this case, Abercrombie had registered several trademarks using the word “safari,” including the name “Safari Mills,” for a line of clothing.

"[There are] four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are compounded because a term that is in one category for a particular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in usage through time, because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product. In various ways, all of these complications are involved in the instant case." -Abercrombie at 9 (footnotes omitted).

The court said that

“a term that is in one category for a particular product may be in quite a different one for another.”

Further, when the court discusses how “a term may shift from one category to another in light of differences in usage through time,” it could have had the Bayer example in mind. That was a perfect example of a term which had started out as arbitrary but became generic. The court used here the Escalator case as an example, Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (1950).

The Abercrombie court goes on to cite Judge Learned Hand’s decision in Bayer and points out that:

"[W]hen a suggestive or fanciful term has become generic as a result of a manufacturer's own advertising efforts, trademark protection will be denied save for those markets where the term still has not become generic and a secondary meaning has been shown to continue." -Abercrombie at 10.

In Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) the Supreme Court reiterated that while fanciful and arbitrary marks are inherently distinctive, and therefore capable of trademark protection, merely descriptive terms can become distinctive if given a “secondary meaning.” We therefore turn to these categories of non-generic terms.

Descriptive Terms & Secondary Meanings

While generic terms are never protected by trademark, descriptive terms are sometimes protected. If the descriptive term is given a “secondary meaning” in its usage, then it can be trademarked. That is, if through consistent marketing an otherwise merely descriptive term comes to be associated with a specific product in the minds of consumers, then that term has gained a secondary meaning. However, if the term simply describes the product without adding any further meaning, it will be no more protected than generic terms would be.

For example, “Bug Mist” when used for an insecticide were merely descriptive and not protected. See In re Aid Laboratories, Inc., 223 U.S.P.Q. 357 (T.T.A.B. 1984).

But while “Trim” used as a prefix, such as “Trim-ette” and “Trim-clip” is descriptive, it has acquired a secondary meaning of identifying the producer through “steady promotion of its mark….” W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656  (2d Cir. 1970).

EXAMPLE: Sage decides to begin making and selling a new product called “Big Chunks” dog food. The words “Big Chunks” appear prominently on all packages. A national advertising campaign touts the virtues of “Big Chunks,” complete with a catchy brand song (“Big Chunks, dumb lumps, your dog won’t know the difference. Big Chunks, big taste, won’t give your dog the hiccups!”) After several years, the brand becomes one of the top-selling dog foods in the tri-state area. Because the words “Big Chunks” have likely acquired secondary meaning with consumers (as a name identifying a particular brand of food), the term is no longer merely descriptive and Sage can prevent others in this area from using deceptively similar marks.

So, secondary meaning depends on the user’s ability to impregnate the market with its mark and get the public to associate that term with its product. What happens when someone starts using a descriptive mark in this way but the term has not yet acquired a secondary meaning?

“Where secondary meaning is in the making, others cannot interfere with its development by infringing the mark and a minimal showing of secondary meaning is required….”

Elizabeth Taylor Cosmetics Co. v. Annick Goutal, S.A.R.L., 673 F. Supp. 1238, 1248 (S.D.N.Y. 1987) (citations omitted). In other words, one cannot prevent a competitor from developing a secondary meaning in her mark by using a similar mark shortly after her first use of the mark.

Note, that this does not mean that a descriptive term is protected from the outset. Otherwise, the secondary meaning requirement would be meaningless. Instead, “where as here, it is demonstrated that a product is expanding in a new market, and where there is an intentional, deliberate attempt to capitalize on another's distinctive product, secondary meaning in the making is also entitled to protection.” PAF S.r.l. v. Lisa Lighting Co., 712 F. Supp. 394 (S.D.N.Y. 1989) (citations omitted).

EXAMPLE: Sage decides that Big Chunks is ready for the highly competitive West Coast dog food market. On May 5th, she begins a blitz marketing campaign, including print, radio and television ads, store displays, giveaways, promotional events, etc. On June 1st, the Youams dog food company, seeing Big Chunks as a threat and hoping to steal away some of Sage’s business, begins marketing and selling “Youams Special Big Chunks.” Sage’s “Secondary meaning in the making” will likely be protected here.

Note that if a court finds “Big Chunks” is generic rather then descriptive, regardless of any acquired secondary meaning, the mark will not be protected. Thus, a defendant accused of trademark infringement will usually argue that the term is generic, but that even if the court finds it descriptive, no secondary meaning has been acquired.

Suggestive Terms

Following our discussion of descriptive terms, what would you say about the name “Brown-in-Bag” for a see-through bag you can cook in? Is it merely descriptive (thereby requiring a secondary meaning to receive protection)? 

In Application of Reynolds Metals Co. 480 F.2d 902 (C.C.P.A.), the Trademark Trial and Appeal Board affirmed a trademark examiner’s refusal to register the term, finding it merely descriptive. The Court in Reynolds, however, reversed the Board’s decision, and held that the term was suggestive, in part because “browning is not the sole purpose or function of the bags….” See Trademark and Unfair Competition Laws, Ginsburg, et al. (Michie 1991) at 115. The distinct advantage of having a court find your term suggestive is that you need not show secondary meaning to be protected. A suggestive term is entitled to registration without a showing of secondary meaning.

Other examples of suggestive terms from cases cited by Ginsburg, et al. (at 116) include:

• “Sno-Rake” for snow removal hand tools.
• “Sensor Mat” for pressure sensitive pads used to alert a patient moving out of a hospital bed.
• “The House Store” for furniture and housewares.
• “The Moneystore” for money lending.
• “Pizza Rolls” for snack rolls flavored like pizza.
• “Speedi-bake” for a frozen bread dough.

The court in Abercrombie pointed out the great difficulty courts have encountered since the early 1920’s in trying to define this category of protected terms. Abercrombie at 10. But Abercrombie was decided in the mid-seventies. Surely, by now, we’ve seen some resolution…

In a far more recent case, Colt Def. LLC v. Bushmaster Firearms, Inc., 2005 U.S. Dist. LEXIS 20874, 20893(2005) cites a 1995 1st Circuit case in saying that a

“term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods.”

WE Media, Inc. v. Cablevision Sys. Corp., 94 Fed. Appx. 29 (2d Cir. 2004) adds some clarity to the picture. According to Cablevision:

Suggestive marks are more distinctive than descriptive marks…[but] because they seek to suggest qualities of the product, they possess a low level of distinctiveness and are given less protection than is reserved for more distinctive marks--those that are "arbitrary" or "fanciful." In addition, recent case law has established that a suggestive mark with little acquired distinctiveness may be entitled to limited protection, but that it is not especially strong.

While this is helpful is determining the status of suggestive marks, it does nothing to aid us in determining whether or not a mark is suggestive. Returning to the list of examples above, is “Sno-Rake” really suggestive? What about “Pizza Rolls?” The difficulty here is that different courts could arrive at different factual conclusions about the category a mark belongs in, with dramatically different results for the parties involved in the lawsuit.

Arbitrary & Fanciful Terms

Arbitrary marks use existing words unrelated to the product or its description, while fanciful marks use invented words. In both cases, proof of acquired meaning is not required for registration.

Arbitrary or fanciful marks are ones that do not communicate any information about the product either directly or by suggestion. Among marks relying solely on inherent distinctiveness for their protectability, arbitrary or fanciful ones are the strongest. Star Indus. v. Bacardi & Co., 412 F.3d 373, 385 (2d Cir. 2005).

Arbitrary and fanciful marks are inherently distinctive. Because these marks are neither generic nor descriptive, a user need not demonstrate any acquired meaning in order to receive protection. Furthermore, these marks receive the strongest degree of protection available under trademark law, because, in the words of the Bacardi court:

"If a mark is arbitrary or fanciful, and makes no reference to the nature of the goods it designates, consumers who see the mark on different objects offered in the marketplace will be likely to assume, because of the arbitrariness of the choice of mark, that they all come from the same source."  -Bacardi at 148.

EXAMPLE: A young entrepreneur starts up a web-based clothing store and calls it GreenFly. He thought up the name while on a flight to meet his partners on the East Coast. He hates to fly…it makes him sick…he turns green…bingo! He thought the name was catchy for some reason, and so did his partners. They begin selling clothing and they use their mark. A few months later a southern retiree finally follows his dreams and opens a shop specializing in fishing gear and clothing. Old but plugged-in, he also makes his wares available online. The store is named simply “Frank’s Fishery,” but he carries a home-made line of “Green Fly Fishing Vests,” named after his favorite fly-fishing lure, the Flunkie Green Fly. The arbitrary nature of the name GreenFly would seem to make it more likely that people would incorrectly believe some association existed between GreenFly and the Green Fly Fishing Vest. “After all,” folks would think, “what’re the odds?”

Just in case you were starting to think that there is no room for argument when an arbitrary of fanciful mark is the subject of litigation, there is one more case to consider: Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999):

A mark is arbitrary or fanciful if there is no logical relationship whatsoever between the mark and the product on which it is used. However, even within the category of arbitrary or fanciful marks, there is still a substantial range of distinctiveness. Some marks may qualify as arbitrary because they have no logical relationship to the product, but nonetheless have a low level of distinctiveness because they are common. Nabisco at 216 (emphasis added).

So, GreenFly is arbitrary, but is the simple combination of two common words. This might fall somewhere in the middle of the range discussed in Nabisco. On the other hand, “Plick-a-Plack,” the game involving small wooden discs, cubes, and poles (no…it doesn’t really exist) would be fanciful and very distinctive.