HOW DISTINCTIVE IS IT? . . .
Trademarks and service marks are entitled to, and
receive protection by virtue of both statute and common law.
Title 17 of the United States Code provides federal protection,
while most states are known to have their own statutory
provisions providing for registration and protection of trade and
service marks. Trademark protection under common law grows out
of an interest to protect against unfair competition by
infringers. Now, both in common law causes and in statutory
claims, those interests remain protected and have been extended
to marks which consist of package designs and structural designs
of products.
As a predicate to receiving trademark protection, the
user must establish likelihood of confusion and that his mark has
acquired "secondary meaning" or is "inherently distinctive".
Secondary meaning is a term of art used to describe the mark's
source identifying characteristics. A mark is not a trademark
unless it identifies the source of the goods that it is applied
to.
Some marks are stronger than others. Trademarks,
service marks, and trade dresses are classified along a continuum
or spectrum where the "central tones" in the spectrum are, from
weak to strong: generic, descriptive, suggestive, "arbitrary,
fanciful or unique". The "distinctiveness" of a mark or trade
dress increases as it moves toward the "suggestive or arbitrary"
end of the spectrum. A distinctive mark requires a lesser or no
showing of "secondary meaning" for protection.
These classifications are important because a strong
"distinctive" mark is easier to register, protect, and enforce.
The type of the mark also has a significant impact upon pleading
and proof in trademark infringement actions. It has long been
the law that arbitrary and fanciful trademarks and service marks
are considered "inherently distinctive" and therefore protectable
without proof of secondary meaning. In fact, the inherently
distinctive marks are sometimes referred to in common law as
"technical trademarks" On the other hand, a descriptive mark may
be protected only if it has acquired secondary meaning.
A Question of Definition
An "arbitrary or fanciful mark" is a word in common
usage which is applied in a context unrelated to its meaning to a
service or product. A "unique" service or trade mark is one
which was invented solely for use in connection with the business
is also "inherently distinctive".
A mark may be "inherently distinctive" because there is
little connection between the mark's attributes and the product
or service.
The difference between a "suggestive" and a
"descriptive" mark is less clear. A mark is "suggestive" if it
requires "imagination, thought or perception to reach a
conclusion as to the nature of the goods". A term is
"descriptive" if it "conveys an immediate idea of the
ingredients, qualities or characteristics of the goods." A. J.
Canfield Co. v. Concord Beverage Co., 629 F.S. 200 (E.D. Penn.,
1985), affd. 808 F2d 291
Non-distinctive marks include ordinary geometric
shapes, surnames or first names, and geographical names.
"Generic" marks can never have trademark significance because
they are interchangeably used as names for the product without
reference to its source.
The Test for Package Designs
The nature of package design differs from trademarks or
service marks. One who seeks to register or protect a package
configuration as a trademark must also demonstrate that its
design is "nonfunctional" in addition to the requirement that the
design serves as an indication of source. A package design can
be "inherently distinctive" and still be "functional". But a
functional design is not protectable under the trademark laws
because protection provided to purely functional designs would
impinge upon the constitutional mandate against the impairment of
competition.
A shape or feature is "functional" if it affects the
purpose, action, performance, facility, or economy of processing,
handling, or using the goods.
Some cases have held that a "unique" package design is
"inherently distinctive". For example, a container for baby
pants which resembled an ice-cream cone was held to be "unique"
as a package for baby pants and its design "inherently
distinctive". It was therefore registerable on the Principal
Register without proof of secondary meaning.
When faced with more complex package designs, recent
cases look into the following factors: Whether the package
design is of a "common" basic shape or design; unique or unusual
in a particular field; a mere refinement of a commonly-adopted
and well known form of ornamentation for a particular class of
goods viewed by the public as a dress or ornamentation for the
goods; or whether it includes features that are arbitrary and
serve no function either to describe the product or assist in its
effective packaging.
The "Klondike" wrapper, for example, with its square
size, bright coloring, pebbled texture, polar bear and sunburst
images, and distinctive style of printing was determined to be a
complex composite of size, color, texture, and graphics creating
a distinctive visual impression entitled to protection because it
was "inherently distinctive."
Similarly, the "Ortho" package showing three horizontal
bands of white, yellow, and red, with "ORTHO" and the distinctive
Chevron mark printed on the white band; the name of the product
in the yellow band; other information and drawing in the red band
created an overall distinctive visual impression.
This type of broad protection does not necessarily
preempt the use of red and yellow by others but only the
particular combination of these colors, arranged in certain
geometric designs, presented in conjunction with a particular
style of printing such that they would create a confusingly
similar overall visual impression.
Product Designs
Protection for product designs is also limited by
considerations of functionality and secondary meaning. The
implications of providing trademark protection to product designs
are more severe. The potential anti-competitive effect is more
pronounced than with restrictions limited to trademarks, service
marks or package designs.
When trademark protection is provided to product
designs, courts have been careful to narrowly tailor the holdings
to the specific combinations of element of the product design.
In principle a product design may be sufficiently
distinctive to warrant protection without a showing of secondary
meaning. But just how distinctive can a product design be? Some
cases, however have held that a product configuration is
intrinsically descriptive and therefore not protectable without
proof of secondary meaning.
This author believes it is impractical to extend the
inherently distinctive test to product configuration or design.
The few courts that have done so preponderantly found that the
product configuration at issue was not inherently distinctive
because it is (1) essentially functional, (2) descriptive (3)
not unique or 4) not used as an indicator of source.
These findings are not surprising, as the courts are
compelled to look at the total elements of the product in
question. Of necessity, this will include the functional,
descriptive or commonplace elements of the product. In fact, a
recent Seventh Circuit District Court found itself lost in a
quagmire in attempting to determine whether a particular product
configuration was inherently distinctive. Having extended the
inherently distinctive test to product design and finding the
product at issue lacking in inherent distinctiveness, the
district court was compelled to the conclusion that the basic
question is one of fact. The court concluded that the factual
determination is made especially difficult because of the
intermingling of functional, descriptive and truly arbitrary
elements in a product.
In essence, the courts are asked to view the various
elements as a whole to determine whether the combination is
unique and yet keep the various separate elements in mind. This
author doubts such a double vision is workable or conducive to
consistent results. The margin for error is too great. There is
no guidance to the court or to the litigants. The dangers of
providing undeserved protection and of imposing uncalled for
sanctions upon competitive entrepreneurs are too real to ignore.
Secondary meaning is a more objective standard and is a
consistent indicator of the validity of a trade dress as source
indicator. Proof of secondary meaning should be required in all
trade dress cases involving product designs.
THE INHERENTLY DISTINCTIVE TEST AS APPLIED TO TRADEMARKS,
SERVICE MARKS AND PRODUCT DESIGNS
by
Sheldon Mak Rose & Anderson
Trademarks apply to goods. Service marks are used in
conjunction with services which are offered. It has long been
recognized that a package design can serve a source identifying
purposes. In some instances, structural designs of the product
itself may also serve such a purpose.