Not Just a Pretty Face: Some Tips on Protectable Marks in a World of Copycats and Grifters

Most people are familiar with the trademark symbol (™), registered trademark symbol (®), and their service mark equivalents. But most people are likely unfamiliar with the Lanham Act, which is the law behind those symbols. Enacted just a few months after the end of WWII, the Lanham Act established a number of the intellectual property protections upon which businesses depend today to signal and promote the quality and origin of their goods and services.

A little history.

In 1870, the United States became one of the first countries to pass national legislation providing for the registration and protection of trademarks. This law was intended to regularize trademarking and trademark enforcement, although an 1879 U.S. Supreme Court decision overturned that law. This meant trademarking returned to the patchwork of law that predated the act. The U.S. Congress passed a more modest trademark act in 1881, with very few protections for mark holders, which was followed by more robust although flawed legislation in 1905. 

The inadequacy of prior legislative efforts became obvious with the booming commerce and industry that arose in the wake of WWII. American business needed more, which resulted in the Lanham Act, a latecomer to the raft of new legislative efforts that were the hallmarks of the 1930s and 1940s. As carefully considered legislation, the Lanham Act was to prove successful in ways that prior enactments were not, securing a robust foundation for future developments.

Make it unique.

The Lanham Act doesn’t create a trademark or service mark. Trademarks and service marks are instead created by the businesses that use them in commerce as identifiers of the origin and quality of goods and services.

However, the Lanham Act does provide for the registration of marks that meet its requirements. To qualify for registration, the Lanham Act broadly encourages trademarks and service marks that are unique in sound, form and appearance. The more unique, the better. To this extent, trademarks and service marks fall into one of five potential designations based on the associated level of uniqueness and protectability, going from least to most:

  • Generic Marks: These are marks that either merely identify the product or service in question, like “milk delivery,” or while perhaps at one time distinctive, have lost that essential attribute due to their becoming a generic term for a category of products or services – a process sometimes referred to as “Genericide.” Some examples include ASPIRIN, THERMOS, DRY ICE, and LAUNDROMAT. XEROX almost became a victim of Genericide, until the company employed extensive efforts to encourage the public to use the term photocopy instead of “xerox” for regular copying. 
  • Descriptive Marks: As the name suggests, this term refers to marks that are merely descriptive of the subject goods or services to which they apply, like “Loretta’s Pies and Cakes.” Descriptive marks are difficult to register and protect under the Lanham Act unless, through use in the marketplace, they have acquired a secondary meaning that renders them uniquely identified with a given product or service. MCDONALD’S (originally, “McDonald’s Famous Barbeque,” and later “McDonald’s Famous Hamburgers”) is an example of mark that through extensive use has obtained a highly protectible secondary meaning in the restaurant and dining industry, although its enforceability outside of that industry is a more subtle question. Meanwhile, INVESTACORP is an example of a mark that, while perhaps vaguely known by the public, failed to obtain the scope and scale of secondary meaning required for protection through the courts. 
  • Suggestive Marks: These are marks that indicate the nature of the good or service in question, but require some imagination to put it together. Examples would include marks like NETFLIX, COPPERTONE, MICROSOFT, and AIRBUS. Suggestive marks tend to rely on an element of incongruity to provide the degree of uniqueness necessary to create a registrable mark under the Lanham Act. For example, COPPERTONE relies on the consumer to make the inferential connection between tanning, a coppery-glow to the skin, and suntan lotion, to understand the mark. But, the messaging in the mark is clear after a moment’s thought.
  • Arbitrary Marks: These marks are typically composed of everyday words that are not descriptive of the product or service itself, but are nonetheless recognizable within the context of the product or service being offered. Some examples include APPLE, DOMINOS, and DOVE. Because these marks have no connection with the actual product or service in question, other than the association achieved through usage, marketing and promotional efforts, they are accorded a high degree of protection under the Lanham Act.
  • Fanciful Marks: These marks are entirely made up nonsense words, and have no meaning outside of the product or service to which they apply. Examples of these sorts of marks include KODAK, VERIZON, and LEXUS. Resulting from a flight of fancy in the creator’s mind, these marks are accorded the highest degree of protection.

Protections granted by the Lanham Act.

Marks don’t have to be registered with the USPTO to qualify the protections afforded under the Lanham Act, although registration constitutes prima facie evidence that the mark is valid and exclusively usable and enforceable by its registered holder. The Lanham Act therefore provides useful protections for businesses by safeguarding their marks against infringement and dilution. Both are serious concerns, as the ability of a business to promote and generate revenues through their goods and services can be severely curtailed by third-party activity that destroys a mark’s ability to indicate the unique origin of goods and services, and to serve as a badge of quality. 

The Lanham Act’s prohibitions on infringement targets the use of competing marks in commerce that are likely to cause confusion, deception, or mistake about the source or origin of goods or services. This prohibition includes “passing off,” where a manufacturer adds another company’s marks to its products or services (which may also give rise to a claim for counterfeiting), and then passes them off as being from that other company. And it includes trademark confusion (whether or not intentional), where a second mark presents as sufficiently similar to a famous mark that it causes confusion as to the nature or origin of a given product or service or is likely to deceive consumers.

Dilution occurs when one company uses a mark that is the same as or sufficiently similar to a famous mark, but for an alternate use or purpose. While the uses of the mark may not be directly competitive, or competitive at all, the famous mark is nonetheless impaired, diminishing and harming its goodwill. Dilution comes in two types: tarnishment; and blurring. Tarnishment occurs when a famous mark is used to promote an unsavory or shoddy good or service. And blurring occurs when a famous mark is coopted, being used to promote a good or service other than the good or service to which the famous mark adheres.  

It’s complicated.

The law around trademarks and service marks, from their registration through to their development and use in commerce presents a lot of twists and turns. Planning should begin early, to ensure your mark is protectible, or to anticipate where your preferred mark may be weak or even get your business in trouble. If your business is in need of savvy, practical and dependable counsel, contact us today.

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Baker Jenner LLLP

Baker Jenner LLLP is a business solutions law firm. We partner with clients to achieve their goals while managing transactional, regulatory, and legal risks.

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