MARKS must be: DISTINCTIVE and NON-FUNCTIONAL
|To be protected or to be registered, the mark must be distinctive, either inherently or via acquired distinctiveness. POLICY: Allowing competitors to use terms that describe their goods; ensuring the network value of language and standards.
INHERENTLY DISTINCTIVE – registrable/protectable upon use:
REQUIRES ACQUIRED DISTINCTIVENESS (aka “Secondary Meaning”) – registrable in Supplemental Register upon use; protectible & registrable in Principal Register upon showing of use & acquired distinctiveness:
GENERIC – not registrable, not protectable:
|To be protected or to be registered, a mark must also be non-functional. An owner of unregistered trade dress has the burden of proving non-functionality (Section 43(a)(3) of the Lanham Act). POLICY: channeling claims for functional features into patent law, drawing lines between patent, copyright, and trademark, preserving competitor’s rights to use functional features.WORDS – Words can be functional:·
Note that such phrases also likely to be merely descriptive w/o secondary meaning.
TRADE DRESS – Functionality also arises often in cases involving trade dress in an item:
UTILITARIAN FUNCTIONALITY: Dual-spring design (TrafFix)
AESTHETIC FUNCTIONALITY: red heart-shaped box for chocolates; green farm machinery; black for outboard boat motors; color of a pill.
|RELEVANT LAW includes:
SPECTRUM OF MARKS:
SECTION 2(e) and 2(f) of the Lanham Act:
TESTS TO DISTINGUISH SUGGESTIVE, DESCRIPTIVE, and GENERIC terms:
FACTORS FOR ESTABLISHING SECONDARY MEANING include:
|RELEVANT LAW includes:UTILITARIAN FUNCTIONALITY:
Concern: perpetual back-door patent.
An expired utility patent is strong evidence of utilitarian functionality, puts heavy burden on claimant (TrafFix).
If utilitarian functionality, then no need for D to explore or use alternative designs (TrafFix)
“Non-reputation” means that the advantage is one other than one tied to source identification.
Revised Jan. 28, 2016