A mark's meaning must be distinct from the meaning of the good with which it is associated. The distinctiveness of a mark signals to consumers that the mark identifies the source of a good.
Wordmarks may be categorized according to their distinctiveness in relation to the good that they represent. Words that are arbitrary, fanciful, or suggestive are inherently distinct. Words that are merely descriptive cannot be trademarked unless the secondary meaning is shown. Words that are generic cannot be trademarked.
An arbitrary mark has a meaning that does not relate to the meaning of the good that it identifies. It is inherently distinctive.
A fanciful mark is a word that has been created for its purpose of identifying source. It is inherently distinctive.
A suggestive mark suggests some sort of characteristic or attribute about the good or service it represents. Although it is inherently distinctive, a suggestive mark does not indicate source as strong as an arbitrary or fanciful mark.
A merely descriptive mark immediately conveys a characteristic, attribute, or quality of the good without any mental inference by the consumer. It requires secondary meaning to gain trademark protection.
A generic term has a meaning that refers to a general class of goods. The term identifies the entire class rather than a specific characteristic. Generic terms receive no trademark protection (regardless of whether they have gained secondary meaning).
Secondary meaning is the source-identification meaning of a mark that develops over time. For a mark to gain secondary meaning, that source-identification meaning must become more prominent than the original descriptive meaning.
When a distinctive mark loses its source-identifying meaning in the minds of the public, it becomes generic and cannot receive trademark protection.
Two-dimensional symbols are protectable as indicators of source. Some courts do not classify them in the Abercrombie spectrum of distinctiveness. Instead, those courts examine whether the symbol is so unique, unusual, or unexpected in the particular market that consumers will automatically perceive the symbol as indicating source and if consumers would not, the courts examine whether the symbol has gained secondary meaning.
Distinct from Other Marks
A mark must not be similar to marks that are already used in commerce. If a mark is likely to cause consumer confusion, the mark will not receive federal trademark protection. Courts consider a variety of factors when making this determination, including:
(1) The similarity of the marks.
(2) The similarity of the goods or services.
(3) The similarity of the trade channels.
(4) The likelihood that buyers exercise care so that they carefully note the brand when purchasing the good.
(5) The fame of the prior mark.
(6) The presence of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
Trade dress is the overall appearance and total image of a product or service. It may include features such as size, shape, color, texture, graphics, or even particular sales techniques. When those aspects of a product or service serve to identity source, the trade dress may receive protection.
Secondary Meaning & Trade Dress
Trade dress protection is possible without establishing secondary meaning if the trade dress is inherently distinctive (Two Pesos). However, the specific attributes of color (Qualitex) and product design (Wal-Mart) may not receive trade dress protection without establishing secondary meaning.
A functional feature of a product or service may not receive trade dress protection. Functionality may be utilitarian or aesthetic.
Utilitarian functionality exists where features or designs derive from practical, engineering-type decisions.
Aesthetic functionality exists where an aesthetic feature or design leads consumers to prefer the product or service, unrelated to the reputation of the source. The feature or design places competitors at a significant non-reputation-related disadvantage.
Test for Functionality
Courts consider the following factors in determining whether a feature is functional:
(1) whether the feature is essential to the use or purpose of the article;
(2) whether the feature affects the cost or quality of the article; and
(3) whether the exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.
Use in Commerce
To gain and maintain trademark protection, a mark owner must use the mark in commerce.
Actual Use in Commerce
The use must be the bona fide use that the mark owner intends to make with the mark in the ordinary course of trade. The mark must be used in the actual sale, offer to sell, or renting of the good or service for which the mark will represent source. Goods must actually be sold or transported in commerce; services must actually be rendered in commerce. Planning and preparing to use the mark is not a use in commerce. A token use that is made to reserve a right in a mark is not a use in commerce.
Source-Identifying & Interstate Use
The use must serve to identify the source of the good rather than the good itself. The good must affect interstate commerce.
For goods, the mark must be placed on the good, its container, displays, or labels on the good. If those options are impracticable, the mark must be placed on documents associated with the good. For services, the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.
Failure to use a mark may result in relinquishment of rights to the mark — abandonment. Two elements are necessary for abandonment:
(1) intent not to resume use of the mark; and
(2) non-use of the mark in commerce.
Presumption of Abandonment
Non-use for three consecutive years is prima facie evidence of abandonment. To rebut the presumption of abandonment, the mark owner must prove that he did not intend to abandon the mark or that he did actually make use in commerce during the period in question. On intent, the mark owner must show that he had an intent to resume use within the reasonably foreseeable future.
Registering a mark with the PTO provides the mark owner priority of use everywhere in the United States where someone else has not yet used the mark. Registration creates a presumption that the mark is valid.
A mark becomes incontestable if the mark is in “continuous use” for five years from the registration date. Incontestable marks may not be challenged for lacking secondary meaning. Challenges may be made against an incontestable mark on the following grounds: that the mark was obtained fraudulently; that the mark has become generic; that the mark is functional; and that the mark owner abandoned the mark.
Intent-to-Use Application (ITU)
An ITU (if granted) enables an applicant to use a mark in commerce without anyone interfering with that use. The ITU reserves the applicant's right to use the mark for six months from the filing date.
Notice of Allowance (NOA)
If the PTO grants an ITU, the PTO issues an NOA. The NOA provides an applicant six months to file a statement verifying actual commercial use of the mark. Up to five six-month extensions may be granted.
Publication & Opposition
If the PTO decides that a mark is eligible for protection, it publishes the mark in the Official Gazette of the USPTO. Members of the public who believe that they may be damaged by the registration of the mark may file an opposition to the registration.
Five years after registration, a mark owner must file an affidavit demonstrating his continued use of the mark (or explain a reason for non-use). The mark is then registered for ten additional years. A mark owner may renew his registration for additional ten-year terms. The trademark term may continue indefinitely.
Members of the public may challenge the validity of a mark that has been registered through a cancellation proceeding.