Lecture 28: Trademark Subject Matter

[Music] What qualifies for trademark protection? Any recognizable word, phrase, name, symbol,
design, or device can qualify for trademark protection. Although these seem like very broad categories,
the USPTO has defined and differentiated these in interesting and surprising way. There is little confusion about what is meant
by a trademark-eligible word, phrase, or name. To be eligible for trademark, a word, name,
or phrase must be distinctive and it must indicate the origin of a product or service. When are symbols and devices eligible? The language of the Lanham Act, the federal
statute governing trademark use, does not specify what constitutes a “symbol” or
a “device” that can be trademarked. The U.S. Supreme Court took careful note of
that fact, ruling in 1995 that, “Since human beings might use as a ‘symbol’ or ‘device’
almost anything at all that is capable of carrying meaning, this language, read literally,
is not restrictive.” In the United States, therefore, trademarks
can include almost anything that carries distinctive meaning and identifies the origin of products
and services. This includes slogans, letters, numbers, logos,
three-dimensional designs—even colors, scents, and sounds that indicate the source of a good
or service to consumers. The number 5, for example, is a trademarked
symbol of Chanel No. 5 perfume. So is the number 31, which is the trademarked
symbol of Baskin-Robbins 31 Flavors. No trademark can block the use of the numbers
5 or 31 in math. Nor have the courts allowed the trademarking
of mere part numbers, model numbers, or grades, because these are not distinctive enough and
do not indicate the origin of the goods in question. Regular gas, also known as “87 octane,”
also cannot be trademarked because it doesn’t tell you whether that gas comes from Exxon,
Shell, or BP. When are scents eligible? The fundamental case for determining the trademark
eligibility of a scent came about when the USPTO denied Celia Clarke’s 1990 request
for a trademark on yarns and threads with a “fresh, floral fragrance reminiscent of
Plumeria blossoms.” She appealed, and the Trademark Trial and
Appeal Board overruled the examiner, granting her a trademark for the scent. However, a trademark cannot be granted for
any scent that serves a function other than identifying the product’s source. The scent of perfumes and air fresheners,
therefore, cannot be registered. There remains a good deal of uncertainty around
the trademark eligibility of scents. When are sounds eligible? Sounds can also be trademarked provided they
indicate the source of the product or service with which they are associated, and indeed,
there are approximately 700 trademarked sounds registered at the USPTO. These include Tarzan’s Yell, AOL’s “You’ve
got mail” announcement, and the sound of a duck quacking “Aflac!” for the American
Family Life Assurance Company. When are designs eligible? A design, like a logo, can also be trademarked,
provided it distinguishes the origin of the product or service. In these trademarks, the logo must be unique
and consist of more than simple stylization. Examples of pure trademarked designs, without
any associated words, include Nike’s “Swoosh” and Apple’s famous logo of a bitten apple. However, design trademarks typically take
a “design-plus-words” approach, as with the trademarked Lacoste logo featuring the
word “Lacoste” below the famous green alligator. What is trade dress? Trade dress refers to the overall appearance
of a product or service that indicates its source. Trade dress can include size, shape, color,
texture, graphics, or even particular sales techniques. The key to claiming trade dress protection
is that the attributes must be distinctive. For example, Taco Cabana has trademarked its
distinctive and “festive eating atmosphere having interior dining and patio areas decorated
with artifacts, bright colors, paintings and murals,” and won an infringement case against
a competitor restaurant called Two Pesos. How do design trademarks and trade dress differ
from design patents? Design trademarks and trade dress are different
from design patents. Although all three cover only nonfunctional
designs and appearances, design patents strictly protect only the new and original ornamental
design of an article of manufacture, and the actual drawing of a design patent limits what
is protected. A design trademark, on the other hand, protects
a word, name, symbol, or design used in commerce to distinguish a product’s source. Trade dress protects the overall appearance
of the product and can include anything that gives a product or service meaning and distinguishes
it from those of any other producer. A design patent might protect the new and
original ornamental design of a lamp, for example, so long as that appearance does not
affect the lamp’s function. A design trademark would protect the words
or symbols used on the lamp that identify it as coming from a particular producer. Trade dress protects the “look and feel”
of the lamp. Sometimes both forms of protection can be
obtained. Examples of products with both design trademarks
and design patents include the Dustbuster vacuum cleaner, the Pepsi bottle, and the
Honeywell round thermostat.

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