Protecting your corporate client's most valuable intangible asset: its name.

• Author: Wine, Mark P.

Infringers are busy, even on the Internet, in taking advantage of companies' trademarks, so counsel owe their best efforts to protect and right the wrongs

A TRADEMARK or "mark" is anything that identifies and distinguishes a product and/or service. The U.S. Trademark Act of 1946, 15 U.S.C. [sections] 1127, defines a trademark "any word, name, symbol, or device, or any combination thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." Thus, the role a designation must play to become a "trademark" is to identify the source of one seller's goods and distinguish that source from other sources.

1. What Constitutes a Trademark?

   The requirements for qualification of a work or symbol as a trademark can be broken down into three elements:

   * Tangible symbol: a work, name, symbol or device or any combination of these;

   * Type of use: actual adoption and use of the symbol as a mark by a manufacturer or seller of goods or services; and

   * Function: to identify and distinguish the seller's goods from the goods made and sold by others.

   In determining what can qualify as a trademark, it is crucial that the symbol in question be so distinctive that it is capable of performing the function of identifying and distinguishing the goods that bear the symbol.(1)

   Trademarks serve a number of important functions. First, they help to identify one seller's goods and distinguish them from goods sold by others. Second, they designate the source from which all goods bearing the mark come or are controlled by a single source. The traditional rule is that the buyer need not know or be able to identity the name of the source. Third, trademarks serve a quality function, indicating that all goods bearing the mark are of an equal level or quality. Fourth, they perform an advertising function by promoting and assisting in sales.(2)

   Trademark law furthers a number of distinct and important policy goals--consumer protection, property rights, and economic efficiency. Of particular importance, at least for proving infringement of a trademark, is the likelihood that an infringing mark will cause the ultimate consumer confusion regarding a product.

2. Types

   Among possible trademarks, words are the most well known form, but other trademarks can include logos, artistic designs, graphic symbols, colors, scents and sounds. Trademark protection also extends to the trade dress of a product, a term that includes, for example, the shape of a product or the product's container.

   1. Traditional Marks

   a. Letters

   Like any other symbol, an individual letter or group of letters, not forming a recognizable word, can function as a mark. An arbitrary arrangement of letters may qualify for trademark protection like any other type of arbitrary or fanciful mark. Arbitrary arrangements of letters generally have been given a wide scope of protection based on the premise that it is more difficult for buyers to remember a series of arbitrarily arranged letters than marks consisting of pictures or recognizable words. Certain letter combinations, such as the YMCA, over time become recognized by the general public, but courts still experience difficulty in distinguishing new letter combinations that are not recognized abbreviations.(3)

   b. Numbers

   One or more numbers, alone or in combination with other symbols, can function as a trademark. A number can be used in combination with letters or words to present an arbitrary composite mark. If a number combination mark is widely recognized, it may be infringed by another's mark that uses a different number. For example, the makers of "A.1" brand steak sauce prevailed against the maker of "A.2" brand meat sauce.(4)

   c. Slogans

   A slogan or any other combination of words is capable of trademark significance if used in such a way as to identify and distinguish the seller's goods and services from those of others. Under common law unfair competition principles, slogans have long been protected against use by others so as to be likely to confuse purchasers. However, the longer the slogan, the less the probability that it functions as a trademark, and the greater the probability that the slogan is merely advertising. Sometimes advertising slogans are not in fact used as trademarks. Slogans often appear in such a context that they do not identify and distinguish the source of goods or services. In those instances, they are neither protectable nor registerable as trademarks.(5)

   d. Symbols and Designs

   Marks do not have to consist of letters, numbers or words. Any picture, design or symbol may be capable of serving the trademark function of identifying goods and services and distinguishing them from those offered for sale by others in the market. As a matter of fact, the earliest marks were not words at all, but pictorial symbols. Merely because a symbol may be pleasing to the eye and is a decorative feature does not necessarily mean that the symbol cannot also serve a trademark purpose. A symbol or design that is only incidentally ornamental and decorative can still be a trademark. But if a design is solely or merely ornamental, it cannot be a trademark. The best marks are those that combine visually attractive "ornamentality" with the trademark purpose of identification of source and quality.(6)

   2. Non-traditional Marks

   a. Color

   Under the traditional rule, the single color of a product was not capable of protection as a trademark, but in 1995, the U.S. Supreme Court, resolving a circuit court split, held that a single color was capable of being registered and protected as a trademark. In Qualitex Co. v. Jacobson Products Co.,(7) the Court noted that shapes, sounds and even scents have been regarded as candidates for trademark status, so there was no public policy reason with sufficient weight to bar any and all product colors from trademark status. Stating that there is no rule absolutely barring the use of color alone, the Court rejected the traditional color depletion and shade confusion tests.(8)

   b. Fragrance

   In 1990, the Trademark Board permitted registration of a mark consisting of a fragrance applied to a seller's goods. The mark consisted of "a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms" for "sewing thread and embroidery yarn." In In re Clarke,(9) a fragrance was held to have been proven to serve as a trademark for the goods over the objection that the applicant, while promoting scented yarn in her advertising, did not indicate the specific scent. The board, however, specifically noted that it was not permitting the registration of scents or fragrances of products primarily sold for their scent, such as perfumes, colognes and scented household products.(10)

   c. Sound

   There is no reason why a mark must be a visually perceptible symbol. While a relative rarity in the world of marks, a sound is indeed capable of being a trademark. The U.S. Trademark Rules of Procedure recognize that registration can be made of marks "not used in printed or written form" and provide for submission of an audio cassette tape recording for registration. The Trademark Board, noting that several sound marks have been registered, has said that sound marks can be fitted into the familiar categories for more traditional marks. For example, it is possible that theme music, such as that used in a motion picture or for a radio or television program, may serve as a mark for that movie or program.(11)

3. Marks Not Trademarks

   Not every mark can qualify as a protectable trademark. For example, generic words can never be marks. Sometimes words that were originally trademarks can become generic, such as Aspirin. Manufacturers of today's pioneering products continue to wage war against the "genericide" of their trademarks. Another example is a product configuration that also is functional cannot be a trademark. Words and phrases that describe some aspect of a good or service or proclaim their superiority may not function as a mark right away. Of course, there are many other more unusual scenarios that could cause something that initially looks like a trademark not to be protected under trademark law.

   PROVING TRADEMARK INFRINGEMENT

   The owner of a trademark has several avenues to pursue for the unauthorized use of its trademarks in the United States. The most common action is to make a federal trademark infringement claim, which can be brought by an owner against any party who, without the consent of the trademark owner, uses "in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution or advertising of any goods or services on or in connection with which use is likely to cause confusion, or to cause mistake, or to deceive," to use the words of 15 U.S.C. [sections] 1114(1)(a).

1. Impermissible Uses

   1. Likelihood of Confusion

   The test for proving infringement of a trademark is whether there is a "likelihood of confusion" on the part of a consumer with respect to the product. 15 U.S.C. [sections] 1125(a)(1)(A) describes this as use "in commerce" in a way that "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person."

   If an appreciable number of reasonable buyers are likely to be confused by the similar marks, then there is liability for trademark infringement. However, it is not clear from case law whether the confusion of an appreciable number of reasonable buyers is to be measured quantitatively or qualitatively. In most trademark cases...