Trademarks-United States

AuthorChristopher P. Bussert - Sherin K. Sakr
Trademarks are at the heart of modern-day marketing of goods and
services. Indeed, virtually all industrialized countries including the United
States are increasingly becoming brand-savvy. Although federal unfair
competition law originally protected trademarks only against direct “pass-
ing off,” trademarks no longer merely indicate the origin of their associated
goods and services, but instead have themselves become critical commod-
ities, often identifying a source of licensing, sponsorship, or endorsement.
For example, the driving force in many stock and asset transactions today
is the seller’s trademark portfolio. Trademarks are also often offered as col-
lateral to secure loans, qualify for capital gains treatment, and are prop-
erty of the estate under the U.S. bankruptcy code. Today the importance of
distinctive trademarks is such that they may be among a company’s most
valuable assets.
The owners of well-known trademarks such as Apple, Google,
McDonald’s, Microsoft, and Coca-Cola did not, however, come to enjoy
their assets by chance. Rather, the strength of such trademarks reflects the
culmination of a process beginning with careful selection and ending with
proactive maintenance and enforcement by their owners. Undertaken and
executed properly, such strategies can often yield returns far exceeding
those attributable to other forms of capital investment.
Trademarks can take many forms, including words, numbers, letters,
symbols, slogans, colors, characters, graphic designs, smells, building
shapes, containers, and other three-dimensional configurations, sounds,
Chapter 1
Trademarks—United States
Christopher P. Bussert and Sherin K. Sakr
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2 • The Intellectual Property Handbook
or combination of these items. Possible trademark formats include the
1. Words
English language words such as Apple for computers and Burger King
for restaurant services constitute the most common type of trademarks.
“Coined” words (e.g., Exxon for gasoline products and Quizno’s for restau-
rant services), which are words created by trademark owners, are a spe-
cies of trademarks that are capable of great strength and distinctiveness.
Acronyms, abbreviations, or nicknames (e.g., Maaco for automotive ser-
vices, DQ for restaurant services, and Beetle for automobiles) are recog-
nized species of trademarks as well.
2. Numbers
Numbers alone or combined with letters can be trademarks, provided,
however, that the numbers or number-letter combinations are in fact used
in a trademark sense and not primarily to describe the model, grade, size,
or feature of a product. For example, A-1 for steak sauce, K-10 for flying
discs, V-8 for juices, and 4711 for cologne have each been successfully reg-
istered as trademarks. These, however, are often not considered optimal
trademark choices at their inception, requiring a certain amount of sales
and advertising to gain consumer recognition before achieving trademark
3. Number and Word Combinations
Telephone number and letter combinations have also been found to be
protectable as trademarks (e.g., 1-800-MATTRESS for bedroom furniture,
1-800-GOT-JUNK? for trash removal services, and 369-CASH for mortgage
broker services).
4. Slogans
In recent years slogans have been increasingly adopted and used as trade-
marks (e.g., Are You in Good Hands? for insurance services and What’s in
Your Wallet? for credit card services).
5. Designs
A wide variety of designs used alone and in combination with words have
been accorded trademark protection (e.g., the Circle K design for conve-
nience store services, the Dairy Queen “red lips” design, and the golden
arches design for McDonald’s restaurant services).
6. Images
Images of real or fictitious individuals have long been used as trademarks
(e.g., the Colonel Sanders image for restaurant services, the Betty Crocker
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II. Basic Trademark Principles 3
image for bakery products, the Paul Newman image for food products, the
design of a girl with pigtails for Wendy’s restaurant services).
7. Colors
Single colors, combinations of colors, or colors as a part of a design can
be protected as trademarks under certain limited circumstances. A single
color or combination of colors can be recognized as valid trademark(s) if
they serve an ornamental, as opposed to a utilitarian, function and have
obtained a high level of “secondary meaning”; that is, the public has come
to identify the color or combination of colors used in connection with a
good or service solely as signifying a brand. In one of the leading cases
involving color trademarks, Owens Corning was successful in protecting
the color “pink” as a trademark for its brand of fiberglass insulation.
8. Sounds
Marks consisting of distinctive sounds have become an important and
highly recognizable species of trademarks (e.g., the NBC “three chimes” for
broadcasting services and the Intel “five chimes” for computer products).
9. Smells
Smell marks, although somewhat rare, have also been recognized as capa-
ble of being viable trademarks (e.g., “a high-impact, fresh, floral fragrance
reminiscent of Plumeria blossoms” for sewing thread).
10. Three-Dimensional Configurations
Packaging, and the appearance of a product or of structures where ser-
vices are performed, can be protected as trademarks if they are inherently
distinctive or have achieved secondary meaning (e.g., the distinctive shape
of the fluted Coca-Cola bottle, the Hershey’s teardrop-shaped candy, and
the exterior design of White Castle, International House of Pancakes, and
Kentucky Fried Chicken restaurants).
Trademarks convey valuable information to consumers by identifying
goods and services that have been satisfactory in the past while rejecting
those that have not. They reduce the costs (i.e., time, trial and error, and
inconvenience) of acquiring information about particular goods or ser-
vices, because consumers can come to rely on a trademark and the brand
image it conveys in making future purchases. Moreover, because trade-
marks identify goods or services from a single source, they often induce
the trademark owner to provide higher-quality goods and services. Trade-
marks further provide a framework for effective advertising of goods and
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