4.5 The Subject Matter of Trademarks

Trademarks are vital for brand identity and consumer recognition. From fanciful marks like "Exxon" to suggestive ones like "Coppertone," they vary in strength and protection. Non-traditional trademarks, including logos and trade dress, also play a crucial role in brand representation.

The Lanham Act governs trademark protection, with the USPTO handling registration. Understanding what can be trademarked is key – distinctive elements are in, generic terms are out. Trademarks serve to identify product sources and prevent consumer confusion.

Types and Characteristics of Trademarks

Types of trademarks

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• Fanciful marks
  • Invented words with no meaning other than as a trademark (Exxon, Kodak, Xerox)
  • Provide the strongest level of protection due to their inherent distinctiveness
• Arbitrary marks
  • Real words used in an unrelated context to their ordinary meaning (Apple for computers, Camel for cigarettes)
  • Offer a strong level of protection because of their uniqueness in the context of the goods or services
• Suggestive marks
  • Suggest a quality or characteristic of the goods or services without directly describing them (Coppertone for sunscreen, Greyhound for bus services)
  • Provide a moderate level of protection as they require some imagination to connect the mark to the goods or services
• Descriptive marks
  • Directly describe a quality, feature, function, or characteristic of the goods or services (Best Buy for retail stores, American Airlines for air transportation services)
  • Offer the weakest level of protection and must acquire secondary meaning through extensive use and advertising to be registered

Non-Traditional Trademarks

Symbols and designs as trademarks

• Distinctive logos, emblems, or graphical representations can serve as trademarks (Nike swoosh, McDonald's golden arches, Starbucks' siren logo)
  • Must be inherently distinctive or acquire secondary meaning through extensive use and promotion
  • These elements contribute to a company's overall brand identity
• Trade dress refers to the overall appearance of a product or its packaging that signifies the source of the product to consumers
  • Can include color, shape, texture, graphics, and even sales techniques (Coca-Cola's contour bottle, Tiffany & Co.'s blue box, Apple's store layout and design)
  • Must be inherently distinctive or acquire secondary meaning to be protected

Trademarkable vs non-trademarkable elements

• Trademarkable elements
  • Distinctive words and phrases that identify the source of goods or services
  • Numbers used in a distinctive manner and not merely as a model or grade designation
  • Scents that are not functional and can identify the source of goods or services
  • Distinctive sounds that can identify the source of goods or services (NBC's chimes, MGM's lion roar)
• Non-trademarkable elements
  • Generic terms that merely name the type of goods or services (aspirin, escalator)
  • Descriptive terms that have not acquired secondary meaning through extensive use and promotion
  • Functional features essential to the use or purpose of the product (shape of a wrench, color of a pill)
  • Scents that serve a functional purpose (perfumes, air fresheners)
  • Commonly used sounds in the industry that are not distinctive

Trademark Protection and Registration

Legal Framework

• The Lanham Act provides the federal statutory basis for trademark protection in the United States
• The United States Patent and Trademark Office (USPTO) is responsible for trademark registration at the federal level
• Trademark registration offers several benefits:
  • Nationwide protection and exclusive rights to use the mark
  • Public notice of ownership through the USPTO database
  • The ability to use the ® symbol

Key Concepts

• Source identification: Trademarks serve to identify and distinguish the source of goods or services
• Consumer perception plays a crucial role in determining trademark strength and protection
• Trademark infringement occurs when unauthorized use of a mark causes likelihood of confusion among consumers