Most students enter this class with a relative understanding of patents and copyrights, yet at times have a difficult time conceptualizing the idea of a trademark. Yet you are probably surrounded by them now. As I write this, I see trademarks for Apple, Cisco, Hydro Flask, and others that I'm embarrassed to admit (where did all this candy come from?). These trademarks, or "marks" for short, surround us and help us recognize and differentiate products by helping us identify the source of those goods or services.

Trademark Basics

A trademark is any word, name, phrase, logo, picture, shape, sound, or symbol adopted and used to identify goods or services as a way to distinguish them from those sold or provided by others. You know thousands of trademarks: Coca-Cola, Patagonia, the Los Angeles Dodgers, Marriott, BYU-Idaho, the roar of the MGM lion before the start of a movie, and on and on.

Trademarks exist to communicate the origin/maker of the product or service being offered. As such, if one company starts selling goods with a logo that is confusingly similar to an existing mark, we have a problem - something we'll call a potential trademark infringement. To determine whether or not infringement has occurred, we need to know if an average consumer would confuse the marks. This is an area of the law also known as unfair competition. But before we discuss infringement, you need to understand what marks can be registered. For this, we look to distinctiveness tests.

Distinctiveness

Not every mark can be registered and therefore receive protection. Obviously, you cannot start a new computer company named Apple and register it with the USPTO. But what if you want to start a new electric car company named Apple? Or a fruit stand that sells apples; can you name that company Apple?

When reviewing trademark names, federal law has established tests to determine what names can and cannot be registered. To qualify for protection, a trademark must be used to identify and distinguish. Courts have established categories to make this determination. These categories require judgment and some determinations are challenged in court. These are the categories:

Fanciful Marks

Fanciful marks can receive trademark protection assuming (as always) it does not infringe on an existing mark. These tend to be terms that are made up, but can also be terms that mean nothing in the English language or terms that are so ancient that they are out of common usage. Examples include Exxon, Kodak, Pepsi, Clorox, and Xerox. 

Arbitrary Marks

Arbitrary marks likewise can be registered and receive trademark protection. These marks consist of real words in common usage, but are not associated with the product or service being sold. The most common example, as mentioned above, is Apple. These marks, like fanciful marks, receive trademark protection absent any possible infringement of an existing mark.

Suggestive Marks

Suggestive marks can also be registered and receive trademark protection. A suggestive mark is a word or phrase that suggests the characteristics of the underlying product or service. Unlike descriptive marks, however, they require a bit of imagination. For example, Tesla is the name of an electronic car company (and solar roofs and home battery systems), but the name derives from Nikola Tesla, an important figure in the history of electrical systems. 

Descriptive Marks

Descriptive marks describe the product they are associated with. Because consumers cannot easily differentiate between the mark and product, these marks do not typically receive trademark protection. For example, when I had a client that wanted to register ResortRentals.com as the name of their business (that rented out empty rooms at timeshare resorts), we had a problem - the name of the company described the service they were providing. These marks can, however, be registered and receive trademark protection if they acquire secondary meaning.

A mark receives secondary meaning when consumers at large associate the mark with the product and not the more broad description of terms. For example, when you read the words Holiday Inn, you likely think of the hotel chain rather than a random hotel that you stay at while on holiday (if you are British) or vacation (if you're American). As a result, Holiday Inn has acquired secondary meaning and received trademark protection. 

You should also be aware that geographic marks (i.e., Rexburg Spud Company or Miami Muffins) are considered descriptive and do not generally acquire secondary meaning (but note that Hershey chocolate [from Hershey, PA] did receive secondary meaning). Similarly, trademarks using the last name of an owner are typically found to be descriptive.

Generic Marks

Generic terms do not receive trademark protection, even if secondary meaning were obtained. For example, you can't call your broom manufacturing company "Broom." Similarly common phrases do not receive trademark protection. Donald Trump's attempt to trademark "You're fired!" and Paris Hilton's desire to trademark "That's hot!" were dismissed as being generic.

Registering a Trademark

Registering a trademark allows the holder to receive many benefits, most notably the ability to keep other companies from using your mark. Once a seller of a product or service uses a mark in commerce or has legitimate plans to do so, the seller may register that mark with the U.S. Patent and Trademark Office (USPTO). The USPTO reviews the application for distinctiveness and third parties may contest the application if they feel that the mark would create confusion with their own marks. Trademarks that are sufficiently distinctive are placed in the principal register of the USPTO and give notice to others of the owner's mark.

Up until 2017, the USPTO frequently denied registration for marks that were disparaging to ethnic groups. But in that year, the U.S. Supreme Court decided that this provision violated the First Amendment's freedom of speech guarantee. In the case, Matal v Tam, a band made up of Asian Americans attempted to trademark the name, "The Slants," which was denied for being disparaging. The Court noted that the First Amendment protects speech, including trademark registrations, that some find offensive. As a result, the USPTO now allows the registration of marks that are immoral, scandalous, or disparaging.

Registration of a trademark lasts for 10 years, with additional and unlimited 10-year renewals available. Trademarks can be lost if the owner fails to renew, if the mark is abandoned, or if it becomes generic. A mark becomes generic when it comes to refer to a class of products or services rather than a particular source's product or services. This happened to aspirin, escalator, and thermos, among others. 

The process to register a trademark can be found here on the USPTO's website. On that site, you can also search for various marks that you are familiar with.

Infringement

A trademark is infringed when another party uses without consent a substantially similar mark in connection with the sale of goods or services which causes confusion concerning the source of the goods or services. Most attention in these cases is spent on whether there is a likelihood of confusion on the part of consumers and a great deal of time and money is spent taking surveys and polls to determine if this is the case. Generally, courts try to determine the degree of similarity between the plaintiff's mark and defendant's version as well as the degree of similarity between the parties' underlying products or services. The higher the degree of similarity, the greater the chance that consumers will confuse the marks.

Much like copyright infringers may use fair use defense, there is a parody-like defense when dealing with trademark infringement. For example, review these marks:

What are the chances that you would confuse the bottom logo with The North Face mark? If you would not confuse them, then there is no likelihood of confusion and hence, no trademark infringement. But even if there is no infringement, the defendant may face a suit for dilution or tarnishment, described below. 

Dilution/Tarnishment

Remember that trademark law exists to avoid confusion as to the origin/maker of the product or service. Suppose you went to the store to purchase dog food. As you peruse the various options, you come across a new brand by the name of Tesla. The logo is not the same as the car/solar company, but the name is Tesla Dog Food. Would you assume that Tesla (the well-known car company) has started making dog food?

Probably not. Therefore, the claim for trademark infringement is weak. If there is no confusion, there is no infringement. But this whole situation still probably seems morally/ethically wrong to you.

To fill this void, Tesla could bring a claim against Tesla Dog Food for diluting or tarnishing its name. Under the federal Trademark Dilution Act of 1995, companies can bring lawsuits against other companies that dilute the value of the senior trademark. As you know, marks have significant value, and that value should be protected against other companies that may erode or tarnish their trademarks. The plaintiff must show that it has a famous mark, that the other company is using a similar mark in a commercial setting, and that the use causes dilution of the distinctive quality of the plaintiff’s mark.

In this analysis, courts allow fair use defenses, specifically mentioning that parodies are permitted. Yet using this defense comes with some risk. For example, consider the following:

Up until a couple years ago, t-shirts with a similar image were sold in the BYU-Idaho Store. Their sale was discontinued when Mountain Dew's parent company threatened a lawsuit against the university. How would you have advised the school to proceed when you received the letter? Surely, you could have defended it on parody grounds, but what other factors should you consider?

If interested in further reading, I highly recommend this article by attorney Leslie Lott regarding Trademark parodies.