The Subject Matter of Trademarks Quiz

PDF page 148: As discussed, there are four types of trademarks: trademarks, service marks, certification marks, and collective marks. But what does it mean to say that a trademark may be a “word [or phrase], name, symbol [or design], or device.” The answers may in some cases surprise you.

PDF page 148: As discussed, there are four types of trademarks: trademarks, service marks, certification marks, and collective marks. But what does it mean to say that a trademark may be a “word [or phrase], name, symbol [or design], or device.” The answers may in some cases surprise you.

PDF page 149: There is little confusion about what is meant by a trademarkable word, phrase, or name. The only point to remember here is that words, names, and phrases that are simply descriptive of the goods or services with xiii which they are associated do not necessarily qualify for registration as a trademark. They must be distinctive and indicate the origin of a product or service. What is meant by distinctive—and how distinctive they must be—will be discussed in the next section.

PDF page 149: There is little confusion about what is meant by a trademarkable word, phrase, or name. The only point to remember here is that words, names, and phrases that are simply descriptive of the goods or services with xiii which they are associated do not necessarily qualify for registration as a trademark. They must be distinctive and indicate the origin of a product or service. What is meant by distinctive—and how distinctive they must be—will be discussed in the next section.

PDF page 149: Symbols and devices are where things start to get interesting in trademark law. The language of the Lanham Act does not specify what is meant by a “symbol” or a “device” that can be trademarked. The U.S. Supreme Court took careful note of that fact, ruling in 1995 that, “Since human beings might use as a ‘symbol’ or ‘device’ xiv almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive.” In the United States, therefore, trademarks can include almost anything that carries distinctive meaning and identifies the origin of products and services. This includes slogans, letters, numbers, logos, three-dimensional xv designs—even colors, scents, and sounds that indicate the source of a good or service to consumers.

PDF page 149: Symbols and devices are where things start to get interesting in trademark law. The language of the Lanham Act does not specify what is meant by a “symbol” or a “device” that can be trademarked. The U.S. Supreme Court took careful note of that fact, ruling in 1995 that, “Since human beings might use as a ‘symbol’ or ‘device’ xiv almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive.” In the United States, therefore, trademarks can include almost anything that carries distinctive meaning and identifies the origin of products and services. This includes slogans, letters, numbers, logos, three-dimensional xv designs—even colors, scents, and sounds that indicate the source of a good or service to consumers.

PDF page 149: A trademarkable symbol can be a number. The number 5, for example, is a trademarked symbol of Chanel No. 5 perfume (No. 73788555). So is the number 31, which is the trademarked symbol of Baskin-Robbins 31 Flavors (No. 72172718).

PDF page 149: No trademark can block the use of the numbers 5 or 31 in math. Nor have the courts allowed the xvi xvii xviii

PDF page 149: because these are not distinctive enough and do not indicate the origin of the goods in question. Regular gas, also known as “87 octane,” also cannot be trademarked because it doesn’t tell you whether that gas comes from Exxon, Shell, or BP.

PDF page 150: Yet despite the above, one of the most iconic trademarked numbers is 501. Originally, the number 501 was simply the lot number Levi’s assigned to the famous copper-riveted waist overalls. But over time, 501 acquired meaning in the minds of consumers and came to be very strongly associated with Levi’s brand jeans. How otherwise un-trademarkable symbols (or words and designs) can acquire secondary (trademark) meaning will be discussed in the next section.

PDF page 150: uploader was Ludovic Glucksman at French Wikipedia via Wikimedia Commons / CC BY 1.0) As for scents, the fundamental case for trademarking these came about when the USPTO denied Celia Clarke’s request in 1990 for a trademark for scented yarns and threads with a “fresh, floral fragrance reminiscent of Plumeria blossoms.” She appealed, and the Trademark Trial and Appeal Board overruled the examiner, granting her a trademark for the scent.

PDF page 150: “[F]ragrance is not an inherent attribute or natural characteristic of applicant’s goods but is rather a feature supplied by applicant,” the board noted. “Moreover, applicant has emphasized this characteristic of her goods in advertising, promoting the scented feature of her goods. Applicant has demonstrated that customers, dealers and distributors of her scented yarns and threads have come to recognize applicant as the source of these goods. . . . In her advertisements and at craft fairs, applicant has promoted her products as having a scented nature. We believe that applicant has presented a prima facie case of distinctiveness of her fragrance xix mark.” On the other hand, a trademark cannot be granted for any scent that serves a function other than identifying the product’s source. The scent of perfumes and air fresheners, therefore, cannot be registered, nor can the sulfurous smell that serves as a warning for natural gas leaks. Still, there remains a good deal of uncertainty about when a scent is trademarkable and when it is not. Consider the world-famous Cinnabon smell—that sweet, sugary, cinnamon-infused scent that is absolutely unmistakable (if not also irresistible). But it is not trademarked because even though it is certainly distinctive, it cannot be easily distinguished from the smell of cinnamon buns made by any number of other bakeries.