Trademarks Class 4

Distinctiveness: words, slogans, sounds, building designs, product design

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Hierarchy of distinctiveness

Arbitrary or fanciful: protectableo Suggestive: protectable• Descriptive: protectable if has acquired distinctiveness• Generic: not protectable

3

Examples of generic marks

386 (type of microprocessor) AEC (trade show on architecture, engineering and construction) ALE HOUSE (facility that serves both food and beer) AL-KOL (rubbing alcohol) ALL NEWS CHANNEL (television broadcasts) ANALOG DEVICES (electronic devices having analog capabilities) ARGON BEAM COAGULATOR (surgical instrument) ART DECO (eating utensils) ASPIRIN (acetyl salicylic acid) ASSOCIATION OF ENERGY ENGINEERS (organization of engineers

specializing in the field of energy) ATTIC (automatic sprinklers used in attics) AUDIO BOOK CLUB (audio book retail mail order services) BABY OIL (mineral oil) BAG RACK (golf bag support) BARRIER BAG (plastic airtight food bags)

— from McCarthy on Trademarks

4

Examples of descriptive marks

AFTER TAN after sunning lotion AGENTBEANS computer software ALO cream of aloe plant AMERICA'S BEST POPCORN! popcorn ARMED ANTIBODIES antibodies combined with toxins ARTHRITICARE gel used to relieve pain of arthritis ASSOCIATION OF TRIAL LAWYERS OF AMERICA attorney group BAD AIR SPONGE odor absorbing material BED & BATH store for items for the bedroom and bathroom BEEF & BREW restaurant BEER NUTS salted nuts BEST computer support services BLISS beauty salon BLACK BELT TV television programs of martial arts BREAK & BAKE frozen cookie dough

— from McCarthy on Trademarks

5

Examples of suggestive marks

ACOUSTIC RESEARCH loudspeakers ACTION SLACKS pants ARTYPE cut-out letters for artists AT A GLANCE calendars AUDIO FIDELITY phonograph records BAC-A-BELT belt backing materials BEAR parkas, jackets and boots BEER 1 (and design) for beer BEETLE fishing lures BOILING CRAB seafood restaurant CHARRED KEG whiskey CHEW 'N CLEAN dentifrice CHICKEN OF THE SEA tuna fish CITIBANK urban bank CLASSIC auto washing services CLASSIC COLA soft drink

— from McCarthy on Trademarks

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Examples of arbitrary marks

BLACK & WHITE scotch whiskey COMMAND hair care products GAP wearing apparel ICE CREAM chewing gum NOVA television series OMEGA watches POLO and polo player logo men's fragrances STORK CLUB night club SUN bank SUN computer hardware and software VICTORIA’S SECRET lingerie and clothing CAMEL cigarettes SHELL gasoline ARM & HAMMER baking soda AMAZON on-line bookstore YAHOO web portal

— from McCarthy on Trademarks

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Examples of fanciful marks

CLOROX bleach CUTEX cuticle-removing liquid EXXON oil and gasoline products HOBBIT character in novel and movies KODAK photographic supplies POLAROID optical devices, cameras, etc. SANKA decaffeinated coffee GOOGLE search engine XEROX photocopy equipment

— from McCarthy on Trademarks

8

In re Quik-Print

“A mark is merely descriptive if it immediately conveys to one seeing or hearing it knowledge of the ingredients, qualities, or characteristics of the goods or services with which it is used; whereas, a mark is suggestive if imagination, thought, or perception is required to reach a conclusion on the nature of the goods or services.” [91]

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Sound-alike misspellings usually equivalent

HYGRADE = high grade RUBEROID = rubberoid (= made of rubber) NU GRAPE = new grape KOOL PAK = cool pack

But  HYGIENT ≠ hygienic LEKTRONIC ≠ electronic

10

Zobmondo v. Falls Media

“The first, and clearly the most-used, test is known as the ‘imagination’ test, and asks whether ‘imagination or a mental leap is required in order to reach a conclusion as to the nature of the product being referenced.’ ” [94]

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Whose understanding counts?

“The underlying issue is the standard of meaning ‘prevalent among prospective purchasers of the article.’ On that basis, some terms may not be susceptible to abstract ‘imagination test’ analysis at summary judgment, and instead the application of the imagination test will be informed by expert testimony offered at trial suggesting how consumers will view this phrase on a board game.” [95]

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“Competitors’ needs” test

“If competitors have a great need to use a mark, the mark is probably descriptive . . . . [If not,] . . . ‘this tends to indicate that the mark is merely suggestive.’ ” [95]

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In re Eagle Crest

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Indication of source?

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A trademark for the Rock Hall?

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Samara-type dress

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Wal-Mart v. Samara Bros.

“Consumers are aware of the reality that, almost invariably, even the most unusual of product designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing.” [103]

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Pete the Penguin Cocktail Shaker

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Flash Dare pants

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