Business Law for Technical Professionals About Trademark Discussion
Trademark law categorizes marks along a spectrum of distinctiveness, based on a mark’s capacity to serve a source-identifying function. A mark is classified as (1) coined or fanciful (most distinctive), (2) arbitrary, (3) suggestive, (4) descriptive, or (5) generic (least distinctive). Fanciful marks receive the highest level of trademark protection. They are marks that were created solely to designate a product with no other meaning. For Example, EXXON, CLOROX, CENGAGE, and GOOGLE are all fanciful marks. Arbitrary marks also are strong trademarks that receive protection. APPLE for computers is an arbitrary mark, because there is no connection between the common usage of the word “apple” and computers. Suggestive marks such as NETFLIX or PLAYSTATION require some imagination to reach a conclusion about the nature of the product. Coined or fanciful, arbitrary, and suggestive marks may be registered on the Principal Register under the Lanham Act without producing any actual evidence of the source-identifying attribution or the public perception of these marks. Descriptive marks are those that convey an immediate idea of the ingredients, qualities, or characteristics of the goods or service, such as SPORTS ILLUSTRATED or WINDOWS. These marks are not inherently capable of serving as source identifiers. Descriptive marks may be registered on the Principal Register only after the owner has provided sufficient evidence to establish that the public associates the term or phrase not only with a specific feature or quality, but also with a single commercial source. When a descriptive phrase becomes associated with a single commercial source, the phrase is said to possess “acquired distinctiveness” or “secondary meaning.” When a trademark has acquired distinctiveness or secondary meaning, it receives trademark protection. Evidence of secondary meaning includes consumer surveys, proof of exclusive use, number of customers, sales volume, and advertising expenditures. Geographic terms, like descriptive terms, are not registrable on the Principal Register unless they have acquired secondary meaning. For Example, PHILADELPHIA CREAM CHEESE is a geographic term that has acquired secondary meaning. A personal name can acquire trademark protection if the name has acquired secondary meaning. The name must be registered as a trademark for goods or services and must be used in commerce. A name acquires secondary meaning if the buying public associates the name with a product or service. For Example, David Beckham has registered his name in a variety of categories from mobile phones to swim wear. Taylor Swift has registered her name as a trademark for a variety of linens. With a limited number of colors available for use by competitors, along with possible shade confusion, courts had held for some 90 years that color alone could not function as a trademark. The U.S. Supreme Court overturned this rule, finding that if a color serves as a symbol that distinguishes a firm’s goods and identifies their source without serving any other significant function, it may meet the basic legal requirements for use as a trademark. For Example, Owens-Corning Fiberglass Corp. registered the color pink as a trademark for its fiberglass insulation products. The color served the source identifying purpose of distinguishing it from other insulation products that were typically a natural tan color. Generic terms that describe a “genus” or class of goods such as soap, car, cola, or rosé wine are never registrable because they do not have a capacity to serve as a source identifier. The Lanham Act prohibited the USPTO from registering marks that “disparage a person” or that consist of “immoral or scandalous matter.” In recent cases, however, the U.S. Supreme Court held that this provision violates the free speech clause of the First Amendment because it disfavors certain ideas and is overly broad. Case Summary No Hogging Generic Terms Facts Beginning in the late 1960s and thereafter, the word hog was used by motorcycle enthusiasts to refer to large motorcycles. Into the early 1980s, motorcyclists came to use the word hog when referring to Harley-Davidson (Harley) motorcycles. In 1981, Harley itself began using hog in connection with its merchandise. In 1983, it formed Harley Owners Group, used the acronym H.O.G., and registered the acronym in conjunction with various logos in 1987. Since 1909, Harley has used variations of its bar-and-shield logo. Ronald Grottanelli opened a motorcycle repair shop under the name The Hog Farm in 1969. At some point after 1981, he sold products such as Hog Wash engine degreaser and a Hog Trivia board game. Grottanelli had used variants of Harley’s bar-and-shield logo since 1979 on signs and Tshirts, dropping the name Harley-Davidson from the bar of the logo in 1982 after receiving a letter of protest form the company. He continued to use the bar and shield, however, and featured a drawing of a pig wearing sunglasses and a banner with the words “Unauthorized Dealer.” From a judgment for Harley for infringement of the bar and shield trademark and an injunction prohibiting the use of the word hog in reference to some of his products and services, Grottanelli appealed. Decision Hog was a generic word in the language as applied to large motorcycles before segments of the public began using it to refer to Harley-Davidson motorcycles. Neither a manufacturer nor the public can withdraw from the language a generic term, already applicable to a category of products, and accord it trademark significance as long as the term retains some generic meaning. It was an error to prohibit Grottanelli from using the word hog. Harley must rely on a portion of its trademark to identify the brand of motorcycles, for example, Harley Hogs. Grottanelli was properly enjoined from using the bar-and-shield logo. Grottanelli’s mark uses Harley’s mark in a somewhat humorous manner to promote his own products, which is not a permitted trademark parody use. The use of the prefix “UN” before “AUTHORIZED DEALER” is no defense. The courts have ordinarily found the use of such disclaimers insufficient to avoid liability for infringement. [Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999)] Module 8 Assignment ————————————————Assume that you are a Product Manager at Acme Corporation. Acme Corporation is developing improved and more accurate devices for use by law enforcement officers to assess the speed of vehicles on the road. Acme Corporation expects to sell these devices to state and local law enforcement agencies throughout the United States. Your team has been tasked with finalizing development and coming up with a product name (“mark”) for the new line of devices before it goes to market. Review the section entitled “Registrable Marks” (§ 9-1c) on pages 165-166 in Chapter 9 of your Anderson’s Business Law textbook. Use your creative muscles to name the new radar product for Acme Corporation. 1. What is the mark you have chosen for the new police radar product? 2. What classification does your mark fall under in the “spectrum of distinctiveness?” Explain your selection. 3. Review the U.S. Patent and Trademark OfficeLinks to an external site. “USPTO” tips on running a trademark search. 4. Access the USPTO Trademark Electronic Search SystemLinks to an external site. (TESS). o Click on the “TESS” link (next to magnifying glass icon) on the left-hand side of the webpage. 5. Conduct a “Basic Word Mark Search” (with default settings) on the mark you have chosen for the radar product to determine if another individual or entity has already registered that mark. 6. Give a short description of the results you found after running a trademark search via TESS. Based on these results, would it be advisable for Acme Corporation to register the mark you have chosen and market the new line of speed detection devices with that mark?
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