Trademarks: Distinctiveness & Non-Functionality

MARKS must be: DISTINCTIVE and NON-FUNCTIONAL

DISTINCTIVE 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:

  • Fanciful (KODAK for cameras)
  • Arbitrary (APPLE for computers)
  • Suggestive (COPPERTONE for suntan lotion)

REQUIRES ACQUIRED DISTINCTIVENESS (aka “Secondary Meaning”) – registrable in Supplemental Register upon use; protectible & registrable in Principal Register upon showing of use & acquired distinctiveness:

  • Descriptive (BEER NUTS for salted nuts)
  • Surnames (MCDONALDS)
  • Geographic (BANK OF AMERICA)
  • Color (Qualitex)
  • Design trade dress (Samara Bros.)
  • Deceptively misdescriptive (GLASS WAX for glass cleaner that does not contain wax)

GENERIC – not registrable, not protectable:

  • PREVIOUSLY GENERIC (BEER for beer)
  • TRADEMARK BECOMES GENERIC, i.e., GENERICIDE (SHREDDED WHEAT, ELEVATOR, ASPIRIN)
 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:·

  • RINSE, LATHER, REPEAT
  • SHAKE BEFORE USING

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:

  • Discussed in Qualitex (trade dress of color laundry pad)
  • Noted in Samara Bros. (trade dress of clothing)
  • At issue in TrafFix (trade dress in design of dual-springed sign)

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:

  • Fanciful/arbitrary and suggestive ok.
  • Descriptive requires acquired distinctiveness.
  • Generic not protectable.

SECTION 2(e) and 2(f) of the Lanham Act:

  • Descriptive terms (and other non-distinctive terms) not registrable without showing of acquired distinctiveness.
  • Five years of substantially exclusive and continuous use of a mark can be prima facie evidence of acquired distinctiveness.

TESTS TO DISTINGUISH SUGGESTIVE, DESCRIPTIVE, and GENERIC terms:

  • Imagination test
  • Dictionary test
  • Competitive need
  • Uses by others

FACTORS FOR ESTABLISHING SECONDARY MEANING include:

  • Surveys
  • Advertising dollars
  • Length of use
  • Sales
  • Copying by others
 RELEVANT LAW includes:

UTILITARIAN FUNCTIONALITY:

  • Essential to the use or purpose of the article
  • OR affects cost or quality of the article

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)

AESTHETIC FUNCTIONALITY:

  • Claimed feature is one where the exclusive use would put competitors at a significant non-reputation-related disadvantage.

“Non-reputation” means that the advantage is one other than one tied to source identification.

Revised Jan. 28, 2016