Trademark Law: A Primer
A client is launching a business complete with carefully designed logo, specially named products and catchy marketing slogans. The client wants to trademark all of it, but his budget is limited. What to do?
Trademark work is a tricky business of deciding where to protect and where to wait, and that is often the first discussion to have with clients, says Jonathan Rubens, partner, Javid Rubens LLP, in San Francisco. Rubens was part of a CLE panel on trademark law titled “To Trademark or Not to Trademark: That Is the Question.” This article is the first in a two-part series on the CLE.
Mary LaFrance, professor at the William S. Boyd School of Law at the University of Nevada, Las Vegas, kicked off the panel discussion by defining a trademark. Generally, a trademark is anything that indicates the origin or source of goods or services, “and we use the term origin or source in a general sense, not to indicate a particular geographic origin,” she says. “And indeed the mark may not even correspond to the name of the actual manufacturer. Instead it is the brand. It is the person or the business that stands behind the goods or services and is accountable for their quality. Although we tend to use the term trademark to refer to all kinds of brands, technically if we’re talking about the brand of a service as opposed to goods, we would use the term service mark.”
For something to function as a trademark or a service mark, it must have two characteristics, LaFrance says. First, it can’t be a feature of the goods that actually affects the cost or quality of the goods. Also, the mark must be capable of distinguishing the goods of one brand from the goods of another.
Product features like color, shape, sound, aroma or general appearance can serve as trademarks or service marks, “and in that case we refer to them as trade dress,” LaFrance says. “However, although they are capable of serving as marks, they are not protected as marks if they are a functional aspect of the product.”
Some examples of features of a product that would not be protected by trademark law on the functionality ground would be the flavors of Coke or Pepsi, the shape or color of medications because that often indicates what kind of drug it is, or the bright orange or yellow of safety vests because that is essential to their functioning, LaFrance explains.
A mark must also be distinctive, she says. “This is the ability of a mark to distinguish the goods or services of one merchant from those of another,” LaFrance says. “Whether a mark is distinctive is determined from the viewpoint of consumers, so we’re always concerned about how a mark is perceived by consumers.”
There are two kinds of distinctiveness. A mark may be inherently distinctive or it may have acquired distinctiveness, LaFrance says. “A mark is inherently distinctive if consumers perceive it as an indicator of origin from their very first encounter with the mark,” she says. “In other words, they don’t perceive the mark as simply a description of the product. These are the best kinds of marks to have because as soon as you use the mark, it is immediately protectable as a trademark because it is immediately distinctive.”
There are three kinds of inherently distinctive marks, “and these are the kinds of marks that you want to steer your clients to adopt,” LaFrance says.
An inherently distinctive mark, she says, may be fanciful, arbitrary or suggestive. A fanciful mark is a term that has been made up; examples are Kodak, Sanka and Polaroid. An arbitrary mark is a pre-existing word that has a dictionary meaning, but it does not in any way describe the goods or services for which it is being used as a mark. Examples are Apple computers, Bumble Bee tuna and Glad plastic products. A suggestive mark is slightly descriptive of the goods or services to which it is being applied, but it is descriptive in a manner that requires a leap of the imagination. Examples are Wrangler, for jeans or the vehicles, or Coppertone suntan lotion. If you saw the word Coppertone by itself, LaFrance says, “you would not immediately leap to the conclusion that it is suntan lotion, unless you have had some prior exposure to the mark.”
A trademark can also be descriptive. “A descriptive mark is by definition not inherently distinctive — it does describe some aspect of the goods or services,” LaFrance says. “It is more descriptive than a suggestive mark. Because it has a descriptive characteristic, a descriptive mark cannot be protected as a trademark until it acquires secondary meaning, which is another term for acquired distinctiveness. What this means is that the consumer may not immediately recognize it as a trademark the first time they encounter it, but over time, over repeated exposures, they will learn to associate that word with the particular product or service. Examples would be Best Buy for a retail chain or Discount Tire for a tire chain.”
How do you approve secondary meaning if you have a descriptive mark? The best and most direct evidence comes from consumers, LaFrance says. “If you have consumer surveys that show the consumer recognizes this as a trademark, that is very helpful,” she says. “If you have direct consumer testimony, that can be helpful as well. But such evidence can be expensive.
“You can also rely on indirect evidence, and quite often this is what people [do],” she adds. “If the mark has been used for a long period of time, that is helpful because that tends to infer that people have had repeated exposure to the mark. If there is a high volume of sales, that also shows that consumers have had many exposures to the mark. And if a great deal of money has been spent on advertising, that also suggests that the mark has been experienced by consumers frequently.”
A mark can lose its protection if it becomes generic, even if it started out distinctive. Famous examples are aspirin, cellophane and hula-hoop, LaFrance says. “There are many, many examples of marks that started out as highly distinctive, but through consumer use they became genericized, and that will cause the mark to lose its trademark protection,” she says.
There are some bars to registration, so not every common law mark is eligible to be registered, LaFrance says. “If you’re trying to register a mark that is confusingly similar to a mark or a trade name already in use or federally registered, you will not be allowed to register that mark,” she says. “There are some additional bars to registration, and they get pretty complicated. Several of [these bars] are absolute, but several of them are subject to an exception if you establish secondary meaning. For example, if a mark is merely descriptive or if it’s considered deceptively misdescriptive, you can overcome that bar by showing secondary meaning when you’re going through the registration process,” she says.
The CLE was sponsored by the ABA Business Law Section, Institute for the Young Business Lawyer, Young Lawyers Division, Section of Intellectual Property Law and the Center for Professional Development. To access the CLE, click here.