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:
REQUIRES ACQUIRED DISTINCTIVENESS (aka “Secondary Meaning”) – registrable in Supplemental Register upon use; protectible & registrable in Principal Register upon showing of use & acquired distinctiveness:
GENERIC – not registrable, not protectable:
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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:·
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:
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:
SECTION 2(e) and 2(f) of the Lanham Act:
TESTS TO DISTINGUISH SUGGESTIVE, DESCRIPTIVE, and GENERIC terms:
FACTORS FOR ESTABLISHING SECONDARY MEANING include:
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RELEVANT LAW includes:
UTILITARIAN FUNCTIONALITY:
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:
“Non-reputation” means that the advantage is one other than one tied to source identification. |
Revised Jan. 28, 2016