Types of Trademarks

Letters as marks: Arbitrary arrangements may be given great protection without need for proof of secondary meaning.

  • “M” – Monsanto Co. v. Milburn Bros., Inc., 167 U.S.P.T.Q. 296 (T.T.A.B. 1970)
  • “E-Z” – Gulf States Paper Corp. v. Crown Zellerbach Corp., 417 F.2d 795, 163 U.S.P.Q. 589 (C.C.P.A. 1969)
  • “S” – Singer Mfg. Co. v. Singer Upholstering & Sewing Co., 130 F. Supp. 205, 104 U.S.P.Q. 339 (D. Pa. 1995)

Numbers as marks

  • “76” – Union Oil Co.
  • “V-8” – Held to be arbitrary for vegetable juice

Abbreviations & Nicknames

  • “BUD” for BUDWEISER
  • “BEETLE” for Volkswagen
  • “HOG” for “HARLEY-DAVIDSON”
  • “MET” for “METROPOLITAN OPERA”
  • “IBM” for “INTERNATIONAL BUSINESS MACHINES”
  • “COKE” for “COCA-COLA”

Slogans: Usually defined as an advertising phrase which accompanies other marks such as house marks or product line marks

  • “WHERE THERE IS LIFE…THERE’S BUD” – Anheuser-Busch
  • “WHERE PETS ARE FAMILY” – Petsmart

Symbols and Designs: Background designs on product labels is common example, but must bedistinctive and any decorative or ornamental aspect must be incidental to its principal impact of identifying or distinguishing the source of goods

  • Chevrolet symbol
  • Guitar head shapes can be trademarks when not merely ornamental
  • Geometric Shapes
  • Levi’s Pant Pocket & Stitching Design has been held a “very strong mark.”  See Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 631 F. Supp. 735 (S.D.N.Y. 1985)

Color

  • BROWN applied to vehicles – UPS
  • CANARY YELLOW applied to adhesive notes

What Cannot Be Trademarked

Functional Features of Product or Design: The Lanham Act makes “functionality” an explicit ground for ex parte rejection of a trademark application.  Why? To foster free competition by ensuring competitors can copy features that they need to “compete effectively.”  To protect functionality, you must seek patent protection (if available).  There is no protection for functional features that have obtained secondary meaning (certain bicycle rim designs; razor designs).  These are all case-by-case determinations.  Also note that functional features cannot be afforded copyright protection.

Trade Dress

Trade Dress Defined: Trade Dress is generally defined as the overall appearance of labels, wrappers, and containers.  Usually, Courts looks to “totality of elements.”   Trade dress is important because a plaintiff can bring a suit for “trade dress” infringement as well as trademark infringement.  A case based on trade dress infringement takes a broader focus.  But, “overall look” is too vague.  How do we know what to avoid?  Think about the “total look of the product” and start from there.

Examples of trade dress

  • Cover design of a book
  • Magazine cover design
  • Appearance and décor of chain of Mexican-style restaurants (Taco Cabana)
  • Method of displaying wine bottles in retail wine shop
  • Rubik’s cube puzzle
  • Shape of classic automobile
  • Shape of lamp
  • Design of a doorknob
  • Shape of a flashlight
  • Overall design of sports shoe
  • Design of handbag
  • Shape and appearance of head of a golf club

Some trade dress is too “generic” for protection, for example:

  • Rainbow concept of identifying tourist guidebooks by color
  • Picture of grape leaf on bottle of wine

Web Dress: Despite much discussion of the topic, most courts have not adopted view that overall appearance of website can be protected as trade dress.

Next: Balancing Trademark Enforcement With Free Speech

 
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