Trademark Basics

Paul W. KruseBone McAllester Norton PLLC

Nashville, Tennessee

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What is a Trademark?

A trademark is any word, name, symbol or device or combination thereof either used or intended to be used by a person to identify and distinguish his or her goods or services from those of others and to indicate their source of origin.1 If a given trademark functions as a trademark or, in the case of services as a service mark, it, by definition, serves a number of additional, complimentary purposes. As an indicator of source of origin, a trademark functions as the embodiment of its owner’s commercial identity and good will. Competitive self-interest, therefore, demands vigilance on the part of the trademark owner to assure not only his or her exclusive use of the trademark, but also to maintain the quality of the goods or services sold in connection therewith. Also, a trademark serves as a short hand means by which consumers can make repeat purchasing decisions, safe in the knowledge that what they are purchasing under a given trademark is the same as what they have purchased before. Consequently, a trademark not only fosters competition, but is also an effective consumer protection device.

The performance of these trademark functions, in fact, is what distinguishes a trademark from either a patent or a copyright, which protect inventions and works of authorship, respectively. Also, unlike either a patent or a copyright, a trademark may last forever, provided that its owner continues to use the trademark in commerce. A federal trademark registration lasts for ten years and may be indefinitely renewed for like terms, provided that the owner of the federally registered trademark periodically files acceptable allegations of continued use.2 However, the discontinuation of use of a trademark, either with the intent not to resume such use or for three consecutive years, as well allowing a trademark to become the generic name for the particular goods or services upon or in connection with which it is used will terminate one’s rights in a trademark.3 The failure to adequately supervise trademark licensees will also terminate one’s rights in a trademark.

Degrees of Distinctiveness

Whether given matter, in fact, functions as a trademark depends upon its over-all commercial impression. This inquiry is fact-specific and, therefore, generally made on a case-by-case basis. Nonetheless, matter may be meaningfully categorized based on its degree of distinctiveness as used or intended to be used upon or in connection with particular goods or services.

Generic Matter

At one extreme on the continuum is generic matter, which, by its very nature, fails to function as a trademark altogether. If matter is the generic name for either the goods or services upon or in connection with which it is used or intended to be used in commerce, it is incapable of performing the basic function of a trademark, namely, of identifying the owner’s goods or services and

1 See Trademark Act Section 45, 15 U.S.C. 1127.2 See Trademark Act Sections 8 and 9, 15 U.S.C. 1058 and 1059.3 ? See Trademark Act Section 45, 15 U.S.C. 1127.

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distinguishing them from those of others. In fact, the generic name of a thing is the ultimate in descriptiveness.4 For example, BUNDT, ANALOG DEVICES and SCREENWIPE are generic names for ring cake mixes, devices having analog capabilities and pre-moistened antistatic cloths for cleaning computer and television screens, respectively. Consequently, they are incapable of functioning as trademarks for the particular goods upon which they are used.5

Non-Distinctive Matter

Next on the spectrum is matter that is non-distinctive yet capable of functioning as a trademark for the particular goods or services upon or in connection with which it is used or intended to be used in commerce. Such matter commonly includes merely descriptive or deceptively misdescriptive words or designs, primarily, geographically descriptive or deceptively misdescriptive words or designs and, primarily, merely surnames. Unlike distinctive matter, non-distinctive yet capable matter does not inherently function as a trademark, nor has it acquired distinctiveness or secondary meaning through substantially exclusive and continuous use over time.

First, a trademark is considered merely descriptive of the particular goods or services upon or in connection with which it is used or intended to be used if it describes an important feature, function or purpose thereof. For example, APPLE PIE, BED & BREAKFAST REGISTRY, MALE-P.A.P. TEST and COASTER-CARDS are merely descriptive of some aspect of the particular goods or services upon or in connection with which they are used, namely, potpourri, lodging reservation services, clinical prostatic cancer tests or coasters suitable for direct mailing.6 Conversely, a trademark is considered deceptively misdescriptive if it conveys an accurate, true and plausible idea of an important feature, function or purpose of the particular goods or services upon or in connection with which it is used or intended to be used but is nonetheless false. For example, CAMEO and G.I. are deceptively misdescriptive of jewelry and gun cleaning materials, respectively.7

Next, a trademark is considered primarily geographically descriptive of the particular goods or services upon or in connection with which it is used or intended to be used if the primary significance of the trademark is geographical and the relevant purchasing public would believe the particular goods or services come from the place named in the trademark. Of course, if the goods or services upon or in connection with which the trademark is used or intended to be used do, in fact,

4 See H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc. , 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986).5 See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985), In re Analog Devices, Inc., 6 USPQ2d 1808 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) and In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).6 See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath, 223 USPQ 88 (TTAB 1984); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).7 See In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) and In re Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983). See also In re Quady Winery, Inc., 221 USPQ 1213 (TTAB 1984).

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come from the place named therein, then a goods-place association is presumed. For example, CAMBRIDGE DIGITAL, THE NASHVILLE NETWORK and DENVER WESTERNS are primarily geographically descriptive of computer systems, television programming and Western-style shirts originating from Cambridge, Massachusetts; Nashville, Tennessee; and Denver, Colorado, respectively.8 Conversely, a trademark is considered primarily geographically deceptively misdescriptive of the particular goods or services upon or in connection with which it is used or intended to be used if the primary significance of the trademark is geographical and a goods-place association exists, but the particular goods or services, nonetheless, do not or will not originate from the place named in the trademark. For example, DURANGO, MANHATTAN and NEAPOLITAN are primarily geographically deceptively misdescriptive of chewing tobacco, cookies and Italian sausage not originating from Durango, Mexico; Manhattan, New York; and Naples, Italy, respectively.9

Finally, a trademark is considered primarily merely a surname if, as perceived by the relevant purchasing public encountering it in the marketplace, its primary significance is as a surname rather than as a trademark. For example, JOHNSON or JONES are primarily merely surnames; COTTON or KING, however, are not.10

Acquired Distinctiveness

Of course, when one exclusively and continuously uses non-distinctive matter for a certain length of time, consumers come to associate that matter with the goods or services upon or in connection with which it is used as an indicator of their source of origin or sponsorship. Such non-distinctive matter is said to have acquired distinctiveness or the synonymous secondary meaning. Upon a showing of acquired distinctiveness or secondary meaning, non-distinctive matter is proven to be, in fact, distinctive. Consequently, it functions as a trademark for the particular goods or services upon or in connection with which it is used in commerce.11

Whether acquired distinctiveness or secondary meaning has been established is a question of fact.12

For example, THE CHILDREN’S OUTLET for retail store services, featuring children’s items, acquired distinctiveness or secondary meaning after five years use in twenty-nine different stores in nine states.13 PROTECTIVE EQUIPMENT for security systems, on the other hand, failed to

8 See In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986), In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) and In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).9 See In re Loew's Theatres, Inc. 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985), In re Cookie Kitchen, Inc. 228 USPQ 873 (TTAB 1986) and In re Jack's Hi-Grade Foods, Inc., 226 USPQ 1028 (TTAB 1985).10 See Ex parte Rivera Watch Corp., 106 USPQ 145 (Comm'r Pats. 1955) and Sears, Roebuck & Co. v. Watson, 204 F.2d 32, 96 USPQ 360 (D.C. Cir. 1953). See also In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985), aff'g, 222 USPQ 260 (TTAB 1984).11 See Trademark Act Section 2(f), 15 U.S.C. 1052(f).12 See In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).13 See In re Federated Department Stores, Inc., 3 USPQ2d 1541 (TTAB 1987).

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acquire distinctiveness or secondary meaning, even after five years use, due to its highly descriptive character.14 The color pink acquired distinctiveness or secondary meaning after 42 million dollars was spent promoting it as a trademark, since it was not a natural by-product of the manufacturing process and was recognized by consumers as a trademark for insulation.15 However, after only two million dollars had been spent promoting a color that was a natural by-product of the manufacturing process, blue failed to acquire distinctiveness or secondary meaning for fertilizer.16

The amount and character of the evidence necessary to establish that non-distinctive matter has, in fact, acquired distinctiveness or secondary meaning varies with the circumstances of each case. As a general rule, however, the more non-distinctive the matter is, the heavier the burden on the owner to prove it has acquired distinctiveness or secondary meaning. Evidence of acquired distinctiveness or secondary meaning includes (i) the length of time the trademark has been used in commerce, (ii) advertising activities and expenditures, (iii) consumer affidavits asserting recognition of the otherwise non-distinctive trademark as indicating source or origin or sponsorship, (iv) sales figures and (v) market research and survey evidence.

Distinctive Matter

At the other extreme on the continuum is distinctive matter, or matter that functions as a trademark for the particular goods or services upon or in connection with which it is either used or intended to be used in commerce. Distinctive matter is either inherently distinctive or is non-distinctive matter that has acquired distinctiveness or secondary meaning after substantially exclusive and continuous use over time.

By its very nature, fanciful, arbitrary or suggestive matter is inherently distinctive. Such matter inherently functions as a trademark for the particular goods or services upon or in connection with which it is either used or intended to be used in commerce. Fanciful matter is either coined words or designs. Arbitrary matter, rather than coined, is either words or designs that bear no relationship to the particular goods or services upon or in connection with which they are used or intended to be used. Suggestive matter does suggest some hint as to an important aspect of the particular goods or services upon or in connection with which it is used or intended to be used; however, considerable mental effort is required of the consumer encountering such words or designs to divine this aspect. PEPSI, KODAK and EXXON are examples of fanciful marks invented for the sole purpose of functioning as either a trademark or service mark. APPLE for computers and OLD CROW for whiskey are examples of arbitrary marks. They are words in common use but, when used to identify particular goods or services, do not suggest or describe an important feature, function or purpose of the goods or services. Finally, SNO-RAKE for a snow removal hand tool is an example

14 See In re Gray Inc., 3 USPQ2d 1558 (TTAB 1987).15 See In re Owens-Corning Fiberglass Corp. 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).16 See Nor-Am Chemical v. O.M. Scott & Sons Co., 4 USPQ2d 1316 (E.D. Pa. 1987).

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of a suggestive trademark.17 Such a trademark requires imagination, thought or perception to reach a conclusion as to the nature of the goods upon or in connection with which it is used.18

The degrees of distinctiveness can be viewed graphically as a set of six concentric circles as shown in Figure 1.

Figure 1

The innermost circle is generic matter, which, by its very nature, fails to function as a trademark altogether. The next circle radiating out from the innermost circle is matter that is non-distinctive yet capable of functioning as a trademark. Such matter commonly includes words that are descriptive, misdescriptive, geographical and surnames. The next circle radiating out is non-distinctive matter that has acquired distinctiveness through exclusive and continuous use. The next circle radiating out is suggestive matter, which hints at, but does not merely describe, an important aspect of the particular goods or services upon or in connection with which it is used or intended to be used. The next circle radiating out is arbitrary matter, namely, common words that bear no relationship to the particular goods or services upon or in connection with which they are used or intended to be used. Finally, the outmost circle is coined matter. Such matter is fanciful words invented for the sole purpose of functioning as a trademark.

17 See In re Shutts, 217 USPQ 363 (TTAB 1983).18 See also In re Quik-print Copy Shop, Inc., 203 USPQ 624 (TTAB 1979), aff'd, 616 F.2d 523, 205 USPQ 505 (CCPA 1980) and In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984) wherein QUIK-PRINT and BUG MIST were held merely descriptive of printing services and insecticide respectively.

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To illustrate, some of the examples discussed in this chapter are shown in Figure 2.

Figure 2

One cannot prevent another from using matter that falls in the innermost circle. Such matter, being generic, is reserved for all to use and, as a consequence, is unregistrable. Matter that falls in the next circle has the potential to be a mark but, due to its non-distinctive character, does not yet provide its owner the right to prevent others from using similarly non-distinctive matter. As a trademark-in-waiting, such matter can only be registered on the Supplemental Register. Matter that falls in the remaining circles is inherently distinctive and, hence, registrable on the Principal Register. The owner of a mark that falls in this area is entitled to stop newcomers from using similar marks in ways that are likely to cause confusion. This is illustrated in Figure 3. Consequently, the further out from the center a trademark is, the greater the return to its owner.

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Figure 3

Likelihood of Confusion

Confusion as to source of origin or sponsorship is likely to occur if—with respect to their over-all sound, appearance and commercial impression—the dominant elements consisting or comprising two trademarks are confusingly similar and the goods or services upon or in connection with which the trademarks are used or intended to be used are so closely related that a consumer encountering confusingly similar trademarks thereon would mistakenly conclude that the owners of the respective marks are related when, in fact, they are not.19 In addition, the test is likelihood of confusion. Actual confusion does not need to be shown in order to support a finding of likelihood of confusion.20 Finally, a trademark is not entitled to registration if it is likely to cause confusion as to source of origin or sponsorship with a previously registered trademark.21

A trademark owner is entitled to stop newcomers from using similar marks in ways that are likely to cause confusion. In order to gauge whether or not a new mark is likely to cause confusion with a prior mark, the prior mark’s degree of distinctiveness must first be determined. Generally, a trademark that is inherently distinctive is said to be “strong,” meaning that it is usually accorded a greater scope of protection because of its exclusive character as a trademark. On the other hand, a trademark is considered “weak” if it consists or is comprised of non-distinctive matter. Such a trademark is normally entitled to a narrow scope of protection. The owner of such a trademark may not be able to prevent others from either using or registering a similarly non-

19 See In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The Court in DuPont actually identified a number of factors that should be considered in determining whether or no confusion as to either source of origin or sponsorship is likely. However, the issue of likelihood of confusion is typically decided based on just two factors, namely, the similarity of the marks and the relatedness of the goods or services.20 See Weiss Assoc. Inc. v. HRL Assoc. Inc., 14 USPQ2d 1840 (Fed. Cir. 1990).21 See Trademark Act Sections 2(d) and 23(a), 15 U.S.C. 1052(d) and 1091(a).

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distinctive, yet otherwise distinguishable, trademark. Of course, a weak trademark that has acquired distinctiveness or secondary meaning is given a broader scope of protection.22

Once the strength of a prior mark is determined, the degree of confusing similarity between the new mark and the prior mark and the degree of relatedness between the goods and/or services in connection with which the new mark is used and the prior mark is used must be determined. Only at that point can the likelihood of confusion be gauged.

Confusing Similarity

The first step in determining likelihood of confusion is to compare the trademarks. With any word trademark, there are three points of comparison; sound, appearance and meaning. Similarity of one of these factors does not mean that there will automatically be a finding of likelihood of confusion, even if the goods are identical or closely related. “Rather, the rule is that taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar.”23

Marks that are phonetic equivalents can be confusingly similar. There is no such thing as a correct pronunciation of a trademark. Similarity in sound is particularly relevant when the consumer is likely to verbalize the trademark in making a purchase. For example, SEYCOS, for watches, was held to be confusingly similar to SEIKO for watches.24 Likewise, CAYNA, for soft drinks, was held to be confusingly similar to CANA for canned and frozen fruit and vegetable juices.25 As a final example, ENTELEC, for association services in the telecommunication and energy industries, has been held to be confusingly similar to INTELECT for conducting expositions in the electrical industry.26

The addition, deletion or substitution of letters or words in a trademark does not necessarily prevent a finding of confusing similarity. For example, TMM was held to be confusingly similar to TMS, both for computer software.27 Likewise, ORAL-ANGLE was held to be confusingly similar to ORAL-B, both for toothbrushes.28 As a final example, ELAAN, for neckties, was held to be confusingly similar to ELANCE for underwear.29

22 See J.B. Williams Co., Inc. v. Le Conte Cosmetics, Inc., 523 F.2d 187, 186 USPQ 317 (9th Cir. 1975); In re Universal Fire Bar, Inc, 181 USPQ 793 (TTAB 1974); In re Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978); and Scarves By Vera, Inc. v. Todo Imports, Ltd., 187 USPQ 362. 23 In re Lamson Oil Co., 6 USPQ2d 1041, 1042 n.4 (TTAB 1987).24 See Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985). 25 See In re Great Lakes Canning Inc., 227 USPQ 483 (TTAB 1985).26 See In re Energy Telecommunications & Elec. Ass’n, 222 USPQ 350 (TTAB 1983). 27 See Weiss Assoc. Inc. v. HRL Assoc., 14 USPQ2d 1840 (Fed. Cir 1990).28 See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d (TTAB 1992).29 See Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992).

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The transposition of the elements that compose a trademark does not necessarily change the overall commercial impression of the trademark. For example, THE WINE SOCIETY OF AMERICA, for wine club membership services, was held to be confusingly similar to AMERICAN WINE SOCIETY 1967, for a newsletter.30 Likewise, RUST BUSTER, for rust penetrating spray lubricant was held to be confusingly similar to BUST RUST, for penetrating oil.31 As a final example, BEST JEWELRY, for retail jewelry store services, has been held to be confusingly similar to JEWELER’S BEST, for jewelry.32

The addition of a letter, word, house mark or design may not lessen confusing similarity if what two marks share is dominant. For example, JM ORIGINALS, for various items of apparel, was held to be confusingly similar to JM COLLECTABLES, for sport shirts.33 Likewise, THE CASH MANAGEMENT EXCHANGE, for computerized cash management services, was held to be confusingly similar to CASH MANAGEMENT ACCOUNT, for financial services.34

When marks comprise arbitrary terms, similarity in meaning or connotation is sufficient to support a finding of confusing similarity. For example, SPRAYZON, for cleaning preparations and degreasers, was held to be confusingly similar to SPRA-ON, for preparations for cleaning woodwork and furniture.35 Likewise, GAS CITY was held to be confusingly similar to GASTOWN, both for gasoline.36 On the other hand, PLAYERS, for men’s underwear, was not held to be confusingly similar to PLAYERS for shoes, since the marks suggested different things when used in connection with underwear and shoes.37

According to the doctrine of foreign equivalents, one may neither use nor register foreign words or terms if the English-language equivalent has been previously used or registered for related products or services, even if the foreign equivalents do not share the same sound and appearance. For example, BUENOS DIAS, for bar soap, was held to be confusingly similar to GOOD MORNING, for latherless shaving cream.38 Likewise, LUPO, for men’s and boy’s underwear, was held to be confusingly similar to WOLF, for various items of clothing.39

When marks are essentially designs incapable of being spoken, the issue of confusing similarity must be decided on the basis of visual similarity. More distinctive design marks are entitled to a 30 See In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989).31 See In re Nationwide Indus. Inc., 6 USPQ2d 1882, (TTAB 1988).32 See In re Best Prod. Co., 231 USPQ 988 (TTAB 1986).33 See In re J.M. Originals, Inc., 6 USPQ2d 1393 (TTAB 1988).34 See In re National Data Corp., 224 USPQ 749 (Fed. Cir 1985).35 See In re Uncle Sam Chem. Co., 229 USPQ 233 (TTAB 1986).36 See Gastown Inc of Delaware, v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975).37 See In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984).38 See In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987).39 See In re Ithaca Indus. Inc., 230 USPQ 702 (TTAB 1986).

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broader scope of protection. For example, a stylized house design, for management of real estate properties, was held to be not confusingly similar to a stylized house design for real estate brokerage services.40 On the other hand, the silhouette of two profiles facing right within a teardrop background, for distributorship services in the field of health and beauty aids, was held to be confusingly similar to the silhouette of two profiles facing left within a teardrop background for skin cream.41

Design marks that can be spoken can be confusingly similar to word marks under the doctrine of legal equivalents. This doctrine is based on the theory that a pictorial representation and its literal equivalent are likely to bring the same mental image to purchasers’ minds. For example, the design comprising the silhouette of the head of a lion and the letter L was held to be confusingly similar to LION, both for shoes.42 Likewise, a design of a mountain lion, for shirts and tops, was held to be confusingly similar to PUMA, for clothing.43

Closely Related Goods or Services

If two trademarks are confusingly similar, the relatedness of the goods and services in connection with which they are used must be gauged. The goods or services do not need to be identical or directly competitive. It is enough if they are closely related or the conditions surrounding their marketing is such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that they come from a common source. For example, CENTURY LIFE OF AMERICA, for insurance underwriting services, and CENTURY 21, for real estate brokerage services, could not coexist without confusion.44

Likewise, MOUNTAINHIGH, for coats, and MOUNTAIN HIGH, for camping equipment, could not coexist without confusion.45

Where two trademarks are similar or even identical, but the goods and services in connection with which they are used are unrelated, confusion as to either source of origin or sponsorship may be unlikely. For example, LITTLE PLUMBER, for liquid drain opener, and LITTLE PLUMBER, for advertising services, could be used at the same time without consumer confusion.46 Likewise, LEXUS, for luxury cars, and LEXIS, for computerized legal research services, can be used at the same time without consumer confusion.47

40 See Red Carpet Corp., v. Johnson Am. Enter. Inc., 7 USPQ2d 1404 (TTAB 1988).41 See In re United Serv. Distrib., Inc., 229 USPQ 237 (TTAB 1986).42 See In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986).43 See Puma-Sportchuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064 (TTAB 1984).44 See Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d 1698 (Fed. Cir. 1992).45 See In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992).46 See Local Trademarks, Inc. v. Handy Boys, Inc., 16 USPQ2d 1156 (TTAB 1990).47 See Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 10 USPQ2d 1961 (2nd Cir. 1989).

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A handy manual for gauging the relatedness of goods and/or services is the Products Comparison Manual for Trademark Users by Francis M. Pinckney. This manual summarizes cases in the U.S. Patents Quarterly and unpublished decisions of the Trademark Trial and Appeal Board. In each case, a particular pair of products or services was held to be either closely related or unrelated. Close to 20,000 comparisons are made among 5,000 goods and services.

Another way to gauge the relatedness of goods and/or services is to consider the classes into which they fall. Section 30 of the Trademark Act, 15 U.S.C. Section 1112, provides for the establishment of a system of classification of goods and services. Although the fact that the United States Patent and Trademark Office classifies goods and services differently does not establish that they are necessarily unrelated for purposes of likelihood of confusion, classification in different classes can suggest that the goods and/or services are unrelated.48 The United States Patent and Trademark Office uses the following titles to broadly describe what falls in each class:

GOODS

1.      Chemicals2.      Paints3.      Cosmetics and cleaning preparations4.      Lubricants and fuels5.      Pharmaceuticals6.      Metal goods7.      Machinery8.      Hand tools9.      Electrical and scientific apparatus10.    Medical apparatus11.    Environmental control apparatus12.    Vehicles13.    Firearms14.    Jewelry15.    Musical instruments16.    Paper goods and printed matter17.    Rubber goods18.    Leather goods19.    Non-metallic building materials20.    Furniture and articles not otherwise classified21.    Housewares and glass22.    Cordage and fibers23.    Yarns and threads24.    Fabrics

48 See National Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990).

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25.    Clothing26.    Fancy goods27.    Floor coverings28.    Toys and sporting goods29.    Meats and processed foods30.    Staple foods31.    Natural agricultural products32.    Light beverages33.    Wines and spirits34.    Smokers’ articles

SERVICES

35.    Advertising and business36.    Insurance and financial37.    Building construction and repair38.    Telecommunications39.    Transportation and storage40.    Treatment of materials41.    Education and entertainment42.    Computer, scientific and legal43.    Hotels and restaurants44.    Medical, beauty and agricultural45.    Personal

These short titles are not an official part of the classification system.  Their purpose is simply to provide a means for identifying the general content of different classes. To determine the classification of particular goods and/or services, it is necessary to refer to the International Classification of Goods and Services for the Purposes of the Registration of Marks (8th ed. 2002), published by the World Intellectual Property Organization (WIPO). 

Although a gross oversimplification of the analysis, the way likelihood of confusion is gauged can be viewed graphically as an X and Y axis laid atop the six concentric circles that describe the degrees of distinctiveness as shown in Figure 4.

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Figure 4

The Y access is a range of confusing similarity between two marks running from confusingly similar to not similar. The X access is a range of closeness between two goods and/or services running from closely related to not related. The point at which the X and Y axis intersect is the point at which two marks are most similar and two goods and/or services are most closely related.

A trademark owner is entitled to stop newcomers from using similar marks in ways that are likely to cause confusion. In order to gauge whether or not a new mark is likely to cause confusion with a prior mark, the prior mark’s degree of distinctiveness must first be determined. Then the degree of confusingly similarity between the new mark and the prior mark must be plotted. Finally, the degree of relatedness between the goods and/or services in connection with which the new mark is used and the prior mark is used must be plotted.

For example, as already mentioned, SPRAYZON, for cleaning preparations and degreasers, was held to be confusingly similar to SPRAY-ON, for preparations for cleaning woodwork and furniture. The prior mark, SRPAY-ON, suggests an aspect of the goods in connection with which it is used; however, it is neither merely descriptive nor generic. Consequently, it is entitled to the scope of protection set forth in Figure 5.

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Figure 5

There is little, if any, room to argue that SPRAYZON and SPRAY-ON are not confusingly similar – they look the same, they sound the same and they suggest the same thing. Consequently, the point of similarity on the Y axis is very near the intersection with the X axis. There is likewise little, if any, room to argue that the cleaning preparations in connection with which the two marks are used are not closely related. Consequently, the point of relationship on the X axis is near the intersection with the Y axis. This relationship is shown in Figure 6.

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Figure 6

Since the point of similarity between SPRAYZON and SPRAY-ON and the point of relationship between the cleaning preparations in connection with which the two marks are used intersect within the SPRAY-ON scope of protection, confusion as to either source of origin or sponsorship is likely.

Another example is LEXUS, for luxury cars, and LEXIS, for computerized legal research services. The prior mark, LEXIS, is arbitrary, not merely descriptive or generic. Consequently, it is entitled to the scope of protection set forth in Figure 7.

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Figure 7

There is little, if any, room to argue that LEXUS and LEXIS are not confusingly similar – they look similar and sound the same. Consequently, the point of similarity on the Y axis is very near the intersection with the X axis. However, in order to support a finding of likelihood of confusion, the goods and/or services in connection with which two marks are either used or intended to be used must be related in some manner or the conditions surrounding the marketing of the goods and/or services must be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source. For example, CHAMPION has long been used as a trademark by unrelated parties for spark plugs and sportswear without likelihood of confusion. Luxury cars and computerized legal research services are no less far apart and, thus, unrelated. Consequently, the point of relationship on the X axis is very far from the intersection with the X axis.

Since the point of similarity between LEXUS and LEXIS and the point of relationship between the goods and services in connection with which the two marks are used intersect outside the LEXIS scope of protection, confusion as to either source of origin or sponsorship is unlikely.

Dilution

Where a trademark is famous, the relatedness of the goods and services in connection with which it and a confusingly similar trademark is used is irrelevant. In determining whether a trademark is

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famous, the following factors are typically considered: the degree of inherent or acquired distinctiveness, the duration and extent of the use, the duration and extent of advertising and publicity, the geographical extent of the trading area, the channels of trade, the degree of consumer recognition in the trade areas and channels of trade, the nature and extent of the same or similar trademarks by third parties and whether the trademark has been registered on the Principal Register.49 Some common examples of famous trademarks are COCA-COLA, HARVARD and MCDONALDS.

The owner of a famous trademark is entitled to stop newcomers from using similar trademarks in ways that weaken the distinctiveness of the well-known trademark by blurring or tarnishing. Blurring occurs when use of a trademark by a newcomer that is confusingly similar to a famous trademark causes the public to no longer think only of the owner of the famous mark but, rather, to associate both the owner and the newcomer with the trademark. Tarnishing occurs when a famous trademark is used by a newcomer in connection with poor quality goods or services. The scope of protection afforded a famous trademark is set forth in Figure 8.

Figure 8

49 See Trademark Act Section 43, 15 U.S.C. 1125.

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Since the relatedness of the goods and services in connection with a trademark that is confusingly similar to a famous trademark used is irrelevant, any trademark adopted by a newcomer that is confusingly similar to MCDONALDS will weaken or dilute its distinctiveness.

Use in Commerce

A trademark is either used by a person to identify and distinguish his or her goods or services from those of others and to indicate their source of origin. Rights in a given trademark are established and protected by either (i) actual use of the trademark in commerce upon or in connection with particular goods or services or (ii) the filing of an application to register a trademark in the United States Patent and Trademark Office (USPTO) stating that the applicant is using or has a bona fide intention to use the trademark in commerce upon or in connection with particular goods or services.

A trademark is deemed to be used in commerce (i) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto and the goods are sold or transported in commerce and (ii) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.50

A specimen for a trademark should be an actual sample of the trademark as used in connection with the goods. Labels or tags affixed to the goods, containers for the goods or displays associated with the goods are acceptable specimens for trademark usage. The actual containers are acceptable only when they are capable of being placed flat in the application file. The specimens may not be a “picture” of the trademark, such as an artist’s rendition or printer’s proof of the way the trademark will be used in the future. Facsimiles or photographs showing the trademark affixed to the goods are acceptable if the submission of an actual specimen would be impractical or of an inappropriate size.

If placement of the trademark on labels, tags, containers or displays associated with the goods is impractical, then placement of the trademark on documents associated with the goods or their sale may be submitted as specimens. Displays associated with the goods are acceptable as specimens where the trademark is prominently shown and the display is designed to associate the trademark directly with the goods. However, there is no requirement that the display must be placed in close proximity to the actual goods. Material that would not be appropriate as a specimen for goods includes advertising or promotional literature, price lists, invoices, business cards or any material (e.g., correspondence stationery) that is merely incidental to conducting business. There is no requirement that the customer must see the trademark on the goods before ordering them, and use of the trademark on instruction manuals packaged with the goods would be considered acceptable. But package inserts which are no more than advertisements or invoices would not be considered an integral part of the goods themselves and, therefore, would not be acceptable. There is no requirement that the goods have to be “sold.” Therefore, free

50 See Trademark Act Section 45, 15 U.S.C. 1127.

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samples are acceptable specimens, as long as they have been transported in commerce with the trademark affixed.

A service mark is used in the sale or advertising of services when there is a direct association between the offer of services and the service mark. Acceptable specimens include brochures, newspaper and magazine advertisements, billboards, menus (for restaurants) and even letterhead stationery or business cards on which the services are clearly indicated. Business cards or stationery with only the service mark and a company name are not acceptable if there is no evidence that the service mark is used in the sale or advertising of the services recited in the application.

Federal Registration

The right to federally register a trademark, as opposed to the right to actually use a trademark, is determined by the United States Patent and Trademark Office upon receipt of a proper application for registration. Substantive examination of the application is governed by the Trademark Act of 1946, (the Lanham Act), as amended, 15 U.S.C. Section 1051 et seq.; the Trademark Rules, 37 C.F.R. Part 2; and the Trademark Manual of Examining Procedure (TMEP October 2012 ed.). Rights in a trademark are established by its use as an indicator of source of origin or sponsorship of goods or services upon or in connection with which it is used and not its registration. Though federal registration of a trademark is permissive and not mandatory, its use in commerce is required. It is for this reason that, in the case of an application to register a trademark based upon a bona fide intent to use that trademark in commerce, a registration will not issue until such time as an acceptable allegation of use has been filed and accepted.51

Once an application for registration is received by the USPTO, the commercial impression of a proposed trademark is examined to determine whether it is distinctive as used or intended to be used upon or in connection with particular goods or services. Lacking and incapable of even acquiring distinctiveness, generic matter is unregistrable on either the Principal or Supplemental Register. Next, though unregistrable on the Principal Register, matter that is non-distinctive, yet capable of acquiring distinctiveness or secondary meaning, is registrable on the Supplemental Register. Finally, inherently distinctive fanciful, arbitrary or suggestive matter is registrable on the Principal Register, as is non-distinctive matter that has acquired distinctiveness or secondary meaning after exclusive and continuous use over time.52

Next, even though a proposed trademark may be either inherently distinctive or have acquired distinctiveness, or be non-distinctive yet capable of acquiring distinctiveness, it is not necessarily fit for registration on either the Principal or Supplemental Register. Matter that is neither used nor intended to be used as a trademark; trade dress; immoral or scandalous matter; deceptive matter; matter that may falsely suggest a connection with; matter that may disparage or bring

51 See 37 C.F.R. 2.76 and 2.88.52 See Trademark Act Sections 2(e) and 23(a), 15 U.S.C. 1052(e) and 1091(a).

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into contempt or disrepute; matter comprising flags, coats of arms and insignia; and matter identifying a particular living individual whose consent is not of record are not entitled to registration. Moreover, the legislation implementing the North American Free Trade Agreement requires the USPTO to refuse registration of primarily geographically deceptively misdescriptive matter.

Failure to Function as a Trademark

A trademark, in the case of goods (or a service mark in the case of services), is any word, name, symbol or device or combination thereof either used or intended to be used by a person to identify and distinguish his or her goods or services from those of others and to indicate their source of origin.

Regardless of the form that a trademark takes, it must be used in a way that creates a separate commercial impression on the viewer or listener, apart from other material used with it. For example, if used on the label of a product, the trademark must stand out separately and impress the viewer as an indication of origin of the goods, apart from the other elements of the label.

Not all words, names, symbols or devices either used or intended to be used in the sale or advertising of particular goods or services function as marks, regardless of their owner’s intent. Matter does not function as a trademark, unless it is used or intended to be used in a manner that clearly projects to the relevant purchasing public a single source of origin or sponsorship for the goods or services upon or in connection with which it is used.53 Absent a showing of either proper use as a trademark or acquired distinctiveness, matter that fails to function as a trademark is unregistrable on the Principal Register and, in some cases, on the Supplemental Register as well.54

Examples of marks or matter that are neither used nor intended to be used as either a trademark or a service mark include single or multiple color marks;55 promotional campaigns;56 slogans;57 character names;58 titles of single works;59 model, style or grade designations within a product line;60 common geometric shapes;61 trade names;62 and matter or marks used ornamentally.63

53 See In re Morganroth, 208 USPQ 284 (TTAB 1980) and In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).54 See Trademark Act Sections 1, 2 and 45, 15 U.S.C. 1051, 1052 and 1127.55 See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).56 See In re Advertising & Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987).57 See In re Melville Corp., 228 USPQ 970 (TTAB 1986).58 See In re Hechinger Investment Co. of Delaware, Inc. 24 USPQ2d 1057 (TTAB 1992).59 See In re Scholastic Inc., 223 USPQ 431 (TTAB 1984).60 See In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989).61 See In re Anton/Bauer, Inc. 7 USPQ2d 1380 (TTAB 1988).62 See In re Walker Process Equipment Inc., 233 F.2d 329, 110 USPQ 41 (CCPA 1956).63 See In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984).

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Trade Dress

Trade dress, such as the configuration of a bottle of perfume, may be protected as a trademark if the shape makes a separate commercial impression and its impact on the consumer is primarily to identify or distinguish the perfume from those of others. In other words, trade dress is but one of the many forms that a trademark can take. Likewise, the configuration of a product may identify its source of origin. If so, the configuration is a trademark. De facto functional configurations are unregistrable on the Principal Register, absent a showing of acquired distinctiveness, while de jure functional configurations are unregistrable on either the Principal or Supplemental Register.64 While the functionality of a configuration is a continuum ranging from little or no functionality to the extremely functional, there are three distinct levels of functionality that must be considered; nonfunctional, merely de facto functional and de jure functional.

Nonfunctional means that the configuration serves no utilitarian purpose.

If a configuration is de facto functional, or functional as a matter of fact (as opposed to as a matter of law), it means that the product design or shape is directed to the performance of a function. For example, the design or shape of a spray bottle may be directed to the performance of the function of holding and spraying liquid. The design or shape does, in fact, have function and, therefore, would be considered at least de facto functional. If the configuration does serve a utilitarian function, then it must be determined whether this functionality is de jure functionality or merely de facto functionality.

De jure functional means that the configuration is functional as a matter of law. A configuration is functional as a matter of law when the design or shape is essential to the use or purpose of an object or if it affects the cost or quality of the object. If something is de jure functional it cannot be a trademark because of the need to keep the configuration available for competitors to use. Showings of acquired distinctiveness will not overcome a finding of de jure functionality.

The existence of a utility patent may disclose the utilitarian advantage of a particular design or shape of a product. Advertising touting the utilitarian aspects of a product’s design or shape would support a claim of de jure functionality. The availability of alternative product design or shapes would indicate that the configuration is only de facto functional. On the other hand, the unavailability of alternative product design or shapes would indicate that the configuration is de jure functional. If the product design or shape results from a comparatively simple or cheap method of manufacturing the article, this would indicate that the configuration is de jure functional. This is the case since this product design or shape must be made available for others to use if they are going to compete effectively. Furthermore, the inclusion of a minor feature that

64 See In re Morton-Norwich Products, In., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982) and W.T. Rogers Co. Inc. v. Keene, 778 F.2d 334, 228 USPQ 145 (7th Cir. 1985).

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is not utilitarian but is still necessary to competitors will not change the functional nature of the configuration, since trademark rights would extend to the entire configuration.

A configuration that is inherently distinctive cannot be a trademark if it is de jure functional. That is, because of considerations of competition, the configuration, as a matter of law, will not be recognized as a trademark. This is similar to the way the law will not recognize generic terms as trademarks, even though extensive evidence of acquired distinctiveness may be submitted.

On the other hand, a configuration that is nonfunctional acquires distinctiveness as a trademark when it becomes a distinctive indicator of the source of origin or sponsorship of a product. Evidence of acquired distinctiveness often includes (i) how long the configuration has been in use as a trademark; (ii) the type and amount of advertising of the configuration a trademark; and (iii) the effort, if any, to associate the configuration with the source of origin or sponsorship of a product.

Immoral or Scandalous Matter

Likewise, a trademark that consists of immoral, deceptive or scandalous matter or matter that disparages or falsely suggests a connection with persons, institutions, beliefs or national symbols or brings them into contempt or disrepute is unregistrable on either the Principal or Supplemental Register.65

A trademark is immoral or scandalous if it is “shocking to the sense of propriety or would give offense to the conscience or moral feelings of a substantial composite of the general public.”66 For example, SENUSSI, the name of a Muslim sect banning the use of tobacco, is scandalous when used upon cigarettes.67 Likewise, the design of a nude man and women engaging in sexual activity is immoral and scandalous.68 WEEKEND SEX, on the other hand, when used on pornographic magazines, is not immoral and scandalous.69

Deceptive Matter

A trademark is deceptive if it describes the goods or services upon or in connection with which it is used or intended to be used, causes the relevant purchasing public to believe the representation and materially affects a given purchaser’s decision to purchase the goods or services. Certain terms that falsely describe the material content of goods are deceptive if the goods lack the referenced material. Likewise, certain geographical terms can be deceptive if the goods do not come from the place named and the misrepresentation is material to the decision to purchase the goods. For 65 See Trademark Act Sections 2(a) and 23(a), 15 U.S.C. 1052(a) and 1091(a).66 In re McGinley, 660 F.2d 481, 211 USPQ 668 (CCPA 1981).67 See In re Reemtsma Cigarettenfabriken GmbH, 122 USPQ 393 (TTAB 1959).68 See In re McGinley, 660 F.2d 481, 211 USPQ 668 (CCPA 1981).69 See In re Madsen, 180 USPQ 334 (TTAB 1973).

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example, LOVEE LAMB and BAHIA for seat covers not made of lambskin and cigars that do not come from the Bahia provence of Brazil, respectively, are deceptive.70 Geographical deceptiveness under Section 2(a) differs from geographically deceptive misdescriptiveness under Section 2(e) insofar as the geographic term must be material to the relevant purchasing public to be deceptive; otherwise, it is merely deceptively misdescriptive. Under the terms of the legislation implementing the North American Free Trade Agreement, however, primarily geographically deceptively misdescriptive terms under Section 2(e) are, like geographically deceptive terms under Section 2(a), unregistrable on either the Principal or Supplemental Register.71

False Association

A trademark falsely suggests a connection with a person, either living or dead, or an institution or juristic entity if it is the same as or similar to that person’s or institution’s name; moreover there is no connection between that person or institution and the goods and services upon or in connection with which the trademark is used or intended to be used; and a connection with that person or institution would be presumed when the trademark is encountered in the marketplace.72 For example, WESTPOINT, when used on shotguns and rifles, falsely suggests a connection with the United States Military Academy. NOTRE DAME and design, however, when used on cheese, does not falsely suggest a connection with the University of Notre Dame.73

Disparaging Matter

A trademark disparages or brings into contempt or disrepute if it is reasonably understood to refer to either a person, either living or dead, an institution or juristic entity, a belief or a national symbol not, in fact, connected with the particular goods or services upon or in connection with which it is used or intended to be used and is considered offensive or objectionable by a reasonable person of ordinary sensibilities.74 For example, the design of a defecating greyhound used upon clothing disparages and brings into contempt or disrepute Greyhound Bus Line’s running dog symbol.75

70 See In re Budge Manufacturing Co. Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988) and In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1984).71 See "North American Free Trade Agreement Implementation Act," Public Law 103-182, 107 Stat. 2057. This legislation, amending Sections 2(e), 2(f) and 23(a) of the Trademark Act, applies to applications filed on or after December 8, 1993, and took effect on January 1, 1994. Article 1712 of NAFTA requires the United States, Canada and Mexico to prohibit the use or registration as trademarks of geographical indications in connection with goods or services that do not originate in the indicated territory, region or locality, if the public would be misled as to the geographical origin of those goods or services.72 See In re Nuclear Research Corp., 16 USPQ 1316 (TTAB 1990).73 See In re Cotter & Co., 228 USPQ 202 (TTAB 1985) and University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217 USPQ 505 (Fed. Cir. 1983).74 See Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB 1988).75 See Greyhound Corp. v. Both Worlds Inc., id.

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Similarly, the design of an “X” superimposed over a hammer and sickle disparages and brings into contempt or disrepute the national symbol of the former Soviet Union.76

Flags, Coats of Arms or Insignia

Similarly, a trademark that either depicts or closely simulates an actual flag, coat of arms or insignia is unregistrable on either the Principal or Supplemental Register.77 A trademark that only suggests a flag, coat of arms or insignia in a stylized form is registrable. For example, the Star of David lined for the color red is not a representation or close simulation of the flag of Israel, since the actual flag of Israel depicts the Star of David in blue.78

Name or Portrait of Living Individual

So too, a trademark that consists or is comprised of the name, portrait or signature of a particular living individual whose consent to register is not of record is unregistrable on either the Principal or Supplemental Register.79 For example PRINCE CHARLES, when used on meat, identifies a particular living individual whose consent must be of record to be registrable.80 On the other hand, a written consent to register the trademark ALFORD is presumed when the individual who signed the application and owns the trademark is Andrew Alford.81

Limitations

The foregoing is intended to provide only general information about trademarks. No summary such as this could possibly cover all the complexities of this field of law. If further help is needed, please contact:

Paul W. Kruse, Esq.Bone McAllester Norton PLLC511 Union Street, Suite 1600Nashville, Tennessee 37219Direct: (615) 238-6304Cell: (614) 477-2167E-mail: pkruse@bonelaw.com or Paul.Kruse@alumni.vanderbilt.edu

76 See In re Anti-Communist World Freedom Congress, Inc. 161 USPQ 304 (TTAB 1969).77 See Trademark Act Sections 2(b) and 23(a), 15 U.S.C. 1052(b) and 1091(a).78 See In re American Red Magen David for Israel, 222 USPQ 266 (TTAB 1984).79 See Trademark Act Sections 2(c) and 23(a), 15 U.S.C. 1052(c) and 1091(a).80 See In re Steak and Ale Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975).81 See Alford Mfg. Co. v. Alfred Elec., 137 USPQ 250 (TTAB 1963).

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