What is a trademark?

Under the Lanham Act, the term “trademark” includes,

[A]ny word, name, symbol, or device, or any combination thereof— used by a person, or which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product from those manufactured or sold by others and indicate that the source of the goods, even if that source is unknown.

15 U.S. Code § 1127. Trademarks exist in our everyday lives. Examples are the McDonald’s arches, the Nike swoosh, the drawing of Colonel Sanders with the letters “KFC” at the bottom, and Starbuck’s iconic green and white siren. The purpose of trademarks is to help the consumers differentiate among competing products and they protect the goodwill associated with a product or company. The Supreme Court has stated,

[A trademark] quickly and easily assures a potential customer that… the item with this mark… is made by the same producer as other similarly marked items that he or she liked (or dislikes) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation related rewards associated with a desirable product.

Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 164 (1995).

In 2008, Walmart tried to seek protection over the trademark of its yellow “smiley face” in Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 1302 (N.D. Ga. 2008). Walmart argued that it had established a common law trademark over the yellow smiley face. In rejecting Walmart’s request for common-law trademark protection, the court stated that, “[t]rademark protection is available only to ‘distinctive marks…’ and Walmart has failed to prove “a connection between the smiley face and its business, or the degree of actual recognition by the public that the smiley face designates Walmart’s products or services, Walmart has failed to establish the smiley face has acquired secondary meaning that it is otherwise a protectable mark.” Id. at 1315.

What is a service mark?

A service mark is a type of trademark that is used to distinguish a service, rather than a product. It can be a word, phrase, symbol, or design (or any combination thereof) that identifies a service source. However, usually there is a very thin line between what is considered a trademark and what is considered a service mark. For example, Google is registered both as a trademark and service mark. Two common examples of service marks are the FedEx and UPS symbols.

What is a Trade Dress?

The trade dress is the “look and feel” of a product and refers to characteristics of the visual appearance of a product or its packaging. A trade dress can be protected in the same way that a trademark is if it serves as a source identifying function. Examples of trade dress are a Heinz 57 ketchup bottle or a Maker’s Mark bottle with its distinctive red wax cap.

Is Federal Registration Necessary?

The short answer is “no.” Trademarks can be established by use, but registering your trademark federally can provide a number of benefits. Those benefits include:

  1. Public notice of your claim of ownership of the mark;
  2. A legal presumption of your ownership of the mark in your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  3. The ability to bring an action concerning the mark in federal court;
  4. The use of the U. S. registration as a basis to obtain registration in foreign countries;
  5. The ability to record the U. S. registration with the U. S. Customs and Border Protection service to prevent importation of infringing foreign goods;
  6. The right to use the federal registration symbol; and
  7. Listing in the United States patent and trademark office’s online databases.

Once a mark has been used continuously for five years the registered owner may file for that mark to be considered “incontestable” under Section 15 of the Lanham Act. Once a mark is considered to be incontestable a third party can no longer claim that the mark was improperly registered or challenge the ownership of the mark. It is important to note, however, that the mark is still subject to other challenges such as that the mark is generic or the mark is used in violation of antitrust laws, etc.

Trademark Infringement

Trademark infringement is established if a plaintiff can prove that it has (1) a valid, protectable mark and (2) that there is a likelihood of confusion between its mark and the defendant’s mark. A mark must be distinctive for it to be valid and protectable under federal trademark laws. To determine whether a mark is distinctive the courts put marks into four categories (1) arbitrary, (2) suggested, (3) descriptive, (4) or generic. Arbitrary Mark: arbitrary marks is a mark that has no logical relationship to the underlying product examples of an arbitrary mark are the words “Exxon” or “Kodak.” Arbitrary marks are essentially made up words and have no inherent relationship to the underlying product. These types of marks are extremely distinctive and given a high degree of protection. Suggested Marks: suggestive marks suggest a characteristic of the underlying products and requires imagination to determine the nature of the goods. An example of a suggestive mark is “Coppertone.” Coppertone suggests that it is a suntan lotion but does not describe the actual product. Similarly to arbitrary marks, subjective marks are inherently distinctive and also given a high degree of protection. Descriptive: a descriptive mark is exactly that—the trademark describes directly what the underlying product is and tells the consumer something about the product. Examples would be “Holiday Inn” and “Vision World.” Both of those brand names describe some aspect of the underlying product or service, i.e., hotel rooms and optical services. Descriptive marks are not inherently distinctive and are only protected if they also have “secondary meaning.” Descriptive marks require a showing of secondary meeting because the terms used are useful when describing the product or service and if a particular company was granted the exclusive right of that useful term it could mean an unfair advantage in the marketplace. The Eighth Circuit has described secondary meaning as “an association formed in the minds of consumers between the mark and the source or origin of the product.” Co-Rect Products, Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d 1324, 1330 (8th Cir. 1985). Additional factors that are considered when determining if a mark has secondary meaning are:

  1. The extent of sales and advertising leading to buyer association;
  2. Length of use;
  3. Exclusivity of use;
  4. The fact of copying;
  5. Customer surveys;
  6. Customer testimony;
  7. The use of the mark in trade journals;
  8. The size of the company;
  9. The number of sales to my:
  10. The number of customers; and
  11. Actual confusion.

E.T. Browne Drug Co. v. Cococare Prods., 538 F.3d 185, 191 (3d Cir. 2009). Generic Mark: a generic mark is provided no protection under trademark law because it describes the general category to which the underlying product belongs. So, a company selling “computer” brand computers or “Apple” brand apples has no exclusive rights to that term in relation to that product. Interestingly, a brand name that was originally distinctive can become synonymous with the product itself, thus losing its trademark protection. The process by which this happens is called “genericity.” Examples of trademarks that have become “generic-ized” are thermos, Kleenex, aspirin, and cellophane. Once a trademark is established as being valid, the plaintiffs next step in a trademark infringement case is to prove that there would be a likelihood of confusion. The standard “likelihood of confusion” means that there would be confusion on the part of the consumer as to the source of those goods or services by use of the trademark.

There are six factors to be considered to determine whether there is a likelihood of confusion:

  1. The strength of the plaintiff’s mark;
  2. The similarity between the plaintiffs and defendants marks;
  3. The degree to which the allegedly infringing product competes with the plaintiffs good;
  4. The alleged infringers intents to confuse the public;
  5. The degree and care reasonably expected of potential consumers; and
  6. Evidence of actual confusion.

Davis v. Walt-Disney Co., 430 F.3d 901 (8th Cir. 2005). If a plaintiff can establish a valid trademark and the likelihood of confusion, then there is trademark infringement.

Trademark Dilution

An owner of a famous, distinctive mark can bring what is known as a dilution claim under federal law regardless of whether there exists a likelihood of confusion, of competition, or of actual economic injury. A dilution claim can only be brought forth if the mark is “famous.” Courts will look to the following factors when determining whether a mark is famous:

  1. The degree of inherent or acquired distinctiveness;
  2. The duration extent of use;
  3. The amount of advertising and publicity;
  4. The geographic extent of the market;
  5. The channels of trade;
  6. The degree of recognition in trading area;
  7. Any use of similar marks by third parties; and
  8. Whether the market is registered.

If the mark is considered to be famous the owner of that famous mark can bring an action against an infringing mark that dilutes the quality of the famous mark either by alleging “blurring” or “tarnishment.” Blurring is present when the mark is weakened by its association with dissimilar goods or services. Tarnishment happens when the infringing mark harms the reputation or casts an unflattering light on the famous mark. In V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382 (6th Cir. 2010), the court held that the use of use of the mark “Victor’s Secret” for a sex shop selling sex toys and other sexual paraphernalia tarnished the mark of “Victoria’s Secret” and stated,

[A]ny new mark with a lewd or offensive to some sexual association raises a strong inference of tarnishment. The inference must be overcome by evidence that would but the probability that some consumers will find the new mark both offensive and harmful to the reputation and the favorable symbolism of the famous mark.

Id. at 389.

Trade Dress Infringement

Plaintiff must establish the following elements to have a valid claim for trade dress infringement,

  1. The design is nonfunctional,
  2. The design is inherently distinctive or distinctive by virtue of having acquired secondary meaning; and
  3. There is a likelihood of confusion.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 770 (1992). To be nonfunctional, if it is an arbitrary embellishment primarily adopted for purposes of identification and individuality. Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863 (8th Cir. 1994).

Plaintiff’s Remedies for Trademark Infringement

If the plaintiff is able to establish infringement the Lanham Act provides for a variety of remedies including:

  1. Defendant’s profits (15 U.S.C. § 1117(a))
  2. Any damages sustained by the plaintiff (15 U.S.C. § 1117(a))
  3. The costs of the action (15 U.S.C. § 1117(a))
  4. Injunctive relief (15 U.S.C. § 1116(a))
  5. Cancellation, restoration or rectification of registrations, in whole or in part (15 U.S.C. § 1116(a))

Defendant’s Profits: if a plaintiff wants an award based on the defendant’s profits the plaintiff must prove the defendant’s infringing sales in the defendant must prove all elements of cost or deduction. Punitive damages are not available under the Lanham Act. Any Damages Sustained by the Plaintiff: the plaintiff is responsible for proving causation and many courts require showing of actual confusion for causation. Actual damages can be measured by lost profits, lost royalties, etc. The Costs of the Action: in exceptional cases the court may award reasonable attorney’s fees to the prevailing party. An exceptional case is an infringement case where the act of infringement was malicious, fraudulent, deliberate, or willful. Injunctive Relief: generally, injunctive relief is granted when there is a showing of a likelihood of confusion. If a trademark owner wants to obtain a preliminary injunction he or she must make the usual showing, a likelihood of success on the merits in the irreparable injury that the owner would incur absent an injunction.