Bars to Trademark Quiz

PDF page 154: No one can register a trademark if it has been used by other parties prior to its use by the applicant. Indeed, if xxviii the applicant uses such a mark, he or she may be liable for trademark infringement. The only exception to the prior use bar is when the mark has been used in an entirely different market or field of business, as in the trademark “Progressive” granted to two companies, one a backpack manufacturer and the other an auto insurance company.

PDF page 154: No one can register a trademark if it has been used by other parties prior to its use by the applicant. Indeed, if xxviii the applicant uses such a mark, he or she may be liable for trademark infringement. The only exception to the prior use bar is when the mark has been used in an entirely different market or field of business, as in the trademark “Progressive” granted to two companies, one a backpack manufacturer and the other an auto insurance company.

PDF page 154: To be trademarked, no word, symbol, design, device, scent, or sound may purely or primarily serve a functional purpose. Nor can it be trademarked if its absence in or on the product inflates its cost or reduces its xxix quality.

PDF page 155: The design of a chair presents an interesting dilemma, however. Does the design enable a person to sit—i.e., does it have a functional purpose? Or does the design distinctively mark an otherwise perfectly functional chair as coming from an identifiable producer? This “chicken and egg” question has confronted many applicants, trademark examiners, judges, and juries over the years. The issue is usually decided by asking whether the appearance of a product or its components is inspired more by design or by function? The issue is most easily decided when the functionality of an item resides in a specific part of the product, and the design elements are found in other parts of the product. A great example of this is the “A Christmas Story Leg Lamp” based on the classic 1983 film comedy. The functional part of the lamp is its electronics and light fixture sitting atop the base. The base, however, is in the shape of a woman’s stocking-clad leg, and is thus clearly a design feature that distinguishes the lamp from any other on the market, and it is trademarked (No. 77105065).

PDF page 155: The design of a chair presents an interesting dilemma, however. Does the design enable a person to sit—i.e., does it have a functional purpose? Or does the design distinctively mark an otherwise perfectly functional chair as coming from an identifiable producer? This “chicken and egg” question has confronted many applicants, trademark examiners, judges, and juries over the years. The issue is usually decided by asking whether the appearance of a product or its components is inspired more by design or by function? The issue is most easily decided when the functionality of an item resides in a specific part of the product, and the design elements are found in other parts of the product. A great example of this is the “A Christmas Story Leg Lamp” based on the classic 1983 film comedy. The functional part of the lamp is its electronics and light fixture sitting atop the base. The base, however, is in the shape of a woman’s stocking-clad leg, and is thus clearly a design feature that distinguishes the lamp from any other on the market, and it is trademarked (No. 77105065).

PDF page 155: In addition to prior use and functionality, certain kinds of subject matter are generally not eligible for trademark registration. These are surnames, geographic marks, and ornamental, immoral, or offensive xxx marks.

PDF page 155: Surnames or family names such as “Smith” and “Johnson” cannot be trademarked except under certain conditions. The USPTO assesses five factors in determining whether a surname is eligible for a trademark:

PDF page 155: • Whether the surname is rare.

PDF page 155: “If the mark’s character as a surname predominates in terms of its ‘primary significance to the purchasing xxxii public,’ then it is prohibited,” write Miller and Davis. But over time, if the surname becomes associated in the public mind with the distinctive origin of products or services, then it may be eligible for a trademark, as is the case with “Sears” and “Macy’s.”

PDF page 156: The goal of the bar against geographically descriptive marks, then, is to protect one party from seizing ownership of a geographic term that ought to remain in the public domain.

PDF page 156: • The goods or services do not originate in the place identified in the mark.

PDF page 155: Thus as noted earlier, the scent of a perfume cannot be trademarked because the core requirement of a perfume is that it have a pleasant and distinctive smell.