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Trademarks

November 15, 2021

The Us constitution acknowledges both copyrights and Patents but has not mentioned trademarks.

The US Constitution & IP Art. I, Sec. 8, Cl. 8: “Congress shall have power to … promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” Trademarks are majorly what the consumer thinks. This therefore determines what the market looks like for certain goods. For instance, when a consumer looks at a product for the first time, understand that it communicates a brand.

Why should trademarks be protected?

Explaining why copyrights and Patents should be protected always seem easy because copyrights encourage creativity among creators and Patents promote more innovations. However trademark protection seems to promote competition among brands. Why then should trademarks be protected?
Trademarks act as informational shortcuts for consumers. They provide the consumers with a very efficient and informative way of making purchase decisions. In most cases when the consumers go into a market they go directly to the brands which are best known to them out of a previous use or referrals from friends and family or based on brand research. If trademarks were not protected, there would be confusion on consumers on making purchasing decisions. Suppose that was the case the consumers would then pick on products based on their cheap prices instead of quality. Trademarks therefore encourage producers to produce high quality products for they have a brand’s reputation to maintain.

Trademarks worth

Trademarks are more than informational shortcuts. They are intellectual properties which have value within them. For instance the word Apple alone values about $263 M and products containing the Apple logo or the Apple name are well known and have a high market among consumers.

Why are brands on the outward?

Brands are found on the outward of a product so that they can easily be seen and Identified by consumers. Additionally they are outward for display to others so that they can be appreciated the brand. Also consumers express their identity with these brands and some go to the extent of putting body tattoos of these brands and having haircuts of their preferred brands and even some putting these brands on their products such as their cars etc. Generally people want to announce the brands that they associate with.

What then can be a trademark?

A trademark can be a word, name, symbol, device or a combination that is adopted and used by a person or other entity to identify his or her goods or services and distinguishing them from the goods manufactured or sold by others and to indicate the source of the goods. Therefore, anything in some way perceptible can be a trademark if it is used and it distinguishes one set of goods or services from others. In distinguishing between different brands the trademark leads to a source of origin.

What can be a trademark?

Traditional trademarks

Word
Names
Slogans
Logos
Signs
Symbols
Trade dress
Design
Shapes
Packaging
Store layout

Nontraditional trademarks

These are highly dependent on secondary meaning.
Color
Color alone as used on a product can be protected as trademarks. However for this to be the case, the color must be a distinctive feature for a product or a company. Additionally, they can only be protected as a trademark after establishing secondary meaning. The consumer must associate the said color from that product exclusively from that source.

In re Owens-Corning Fiberglas Corp CAFC 1985 U.S. Reg. No. 1439132 & others

Shape

A shape trade mark is a trade mark which consists of three-dimensional shape used to distinguish the goods of one trader from the goods of other traders. The ability to distinguish the goods or services from those of other traders is key to any sort of trade mark, as that’s precisely what a trade mark is – a distinctive sign (which can include shapes) that distinguishes one traders’ products or services from others. Probably the most well-known shape trade mark is the Coca-Cola contour bottle

Design of the product.

The Apple phone’s design is one great example of a trademark. The design can easily be identified by consumers exclusively belonging to Apple products. For a design to be protected it must not be functional. For instance shoelaces on a shoe cannot be protected as part of a trademark because that may limit the functionality of the lace.

Layout of the store

The layout of a store can be protected as a trademark. A great example is the Apple store. If a consumer steps into it without reading the brands name they are able to identify that it’s an Apple store.

Another great example is a winery store layout which is unique and not similar to the traditional winery layout that are dark.

Traditional winery layout

Trademarked layout.

Building Design

The design of a building can be protected as a trademark to distinguish it from other buildings and to mark a certain brand. Such a building is the Pizza Hut building.

Motion marks

The movement of a product can be used to protect it as trademark. For instance if the motion includes lighting like the hot doughnut logo showing what happens when light is added.

Another great example is the Lamborghini door. The trademark protects the backward motion of the door as its being shut.

Non visual marks

Sound marks

Certain sounds are used by specific brands as a brand mark and to distinguish between different brands. Such sounds can be protected to distinguish these brands from others. A great example is the Metro Goldwyn Mayer’s lion roar.

Scent marks.

Certain distinctive scents are used to mark specific brands. A brand’s scent can be marked as a trademark because it distinguishes it from all other brands. A great example is the Play-Doh. Without even looking at the brand’s name when Play-Doh is opened in an area it’s easy to identify it by its scent.

Tactile marks

These are marks that can be felt on a product that distinguish the product from other brands. These marks can be protected as trademarks. By touching these products one can easily identify them without necessarily knowing the name. For instance leather marks on a bottle.

Certification marks

These are marks not owned by the people who use them. The owners of these marks are third parties who certify the products and make available the marks to all people who meet certification requirements. The owners benefit from this by being paid a fee by the users of those certification marks. Examples are:-

Collective marks.

Trademarks or service marks for cooperatives, associations, or other collective organizations. For example the Certified Public Accountant mark.

Trademarks both registered and unregistered must be

• Used in commerce

• Distinctive

• Not functional (if trade dress)

Registered Trademarks

These are marks that are federally registered on principal or supplemental register. They are indicated by a circle surrounding an R as shown below.

Unregistered marks

These are marks which the owners believe are trademark. They communicates that the name & design are under the owner’s property. They are represented by a circle surrounding the letters TM as seen below.

Five bases of trademark registration.

For Domestic registration the product must

  • Be used in commerce
  • Have intent to use

In international there are 3 bases

  • Foreign registration
  • Foreign application
  • International registration

Use in commerce

The products being trademarked must be available for commercial use. That is to mean they are readily available to the consumers for purchasing and use. This is so because trademarks are majorly what the consumer thinks and therefore if the product are not for consumer use it would be difficult to protect them as trademarks.

Distinctiveness

These are clear distinguishing marks which are used to differentiate one brand from all the rest. For a brand to be protected as a trademark it is very important for it to be distinctive standing out from all the rest.

Spectrum of distinctiveness

1. Arbitrary and Fanciful brand

These are brands which are made up of new words that do not necessarily exist in the English dictionary. A great example is Adidas. Another definition is the Apple. Its an existing English word but its meaning is not in any way associated with electronic commodities. These brands are unique are therefore they are protected automatically.

These are brands which are made up of new words that do not necessarily exist in the English dictionary. A great example is Adidas. Another definition is the Apple. Its an existing English word but its meaning is not in any way associated with electronic commodities. These brands are unique are therefore they are protected automatically.

2. Suggestive brands

These are brand names that require imagination to understand their purpose. A great example is Netflix which is a combination of net and flix. Net is derived from the internet and flix is a shortened version of the word flicks which means movie. Another example is the Burger King. Similar to the arbitrary brands, these brands are protected automatically.

3. Descriptive brands

These are brands that convey forthwith. They must acquire secondary meaning or be in use for five years for them to be protected as trademarks. Their brand names are descriptive telling people what they do. Such an example is the spray wash which describes its purpose which is to spray wash.

These are brands that convey forthwith. They must acquire secondary meaning or be in use for five years for them to be protected as trademarks. Their brand names are descriptive telling people what they do. Such an example is the spray wash which describes its purpose which is to spray wash.

4. Generic brands

These are brands which do not have any other choice in language to describe the products. Such products are not protected as trademarks. Examples include cornflakes and aspirin

Secondary meaning

Descriptive marks should illustrate secondary meaning.

Secondary meaning means that the brand have proven their functionality to consumers. Secondary meaning is shown by

  1. Length/manner of use. Indicating the length the brand or the product has been in use.
  2. Amount/manner of advertising
  3. Volume of sales
  4. Direct consumer testimony
  5. Consumer surveys. These prove that the consumers identify the brand’s existence and can easily distinguish these brands from other brands.

Functionality

A product is functional if

  • It is essential to use and the purpose of the product.
  • It affects cost of production and quality
  • Puts competitors at a significant non-reputational disadvantage.

Why register trademarks?

Registration protects against infringement

  1. It protects against the likelihood of consumer confusion

For instance, the packaging below are known to cause confusion among consumers because of how close they are in similarity.