[Posted on February 25, 2010]
Trademark Law Doctrine: A Cornucopia of Possibilities
It’s true! There are a whole cornucopia of trademark law doctrines.
The term "trademark law" is sometimes used generically to indicate a variety of different types of marks or devices, each serving its own purpose. The common principle relating the different types of marks to each other is the ability of each to identify source – that is, to distinguish the commercial entity that retains control over the mark. This is intended to benefit consumers who may rely on a company’s reputation for quality and service standards. It also benefits trademark owners by allowing them to set and retain control over their own quality standards and marketing efforts. This source identification function differentiates trademark law from other forms of intellectual property.
Some of the different types of "trademarks" are identified in this blog. It’s important to understand that the symbol can only be used for marks that have been registered with the U.S. Patent & Trademark Office (and that this symbol can attach to several different types of marks discussed below). Keep in mind, however, that many common (state) law protections can apply for marks that are unregistered. So the lack of federal registration does not mean that the mark owner is necessary devoid of enforcement rights.
Let’s take a quick look at a few types of "trademarks."
- Trademark. Technically, a trademark is a word, symbol, or device used to identify the source of a commercial product. When the symbol TM is used in commerce (such as GoogleTM), that business is indicating that the mark is being used as a trademark (although it is not federally registered as such). Any device that serves the purpose of source identification may be a viable trademark. Owens Corning even has rights to the color pink for their Pink Panther brand insulation.
- Servicemark. This is a word, symbol, or device used to identify the source of a commercial service. Servicemarks are sometimes identified with the symbol SM.
- Certification Mark. These are marks that indicate that a good or service has been certified by a third party to meet certain quality standards. The mark "UL," issued by Underwriters Laboratory, for instance, is used for electrical products that meet specific safety guidelines. The Good Housekeeping Seal of Approval is another example.
- Collective Mark. These are used to identify that a business or individual is a member of a particular organization. Use of the term "CPA" for Certified Public Accountant is an example.
- Trade Name. This is the name under which a business operates, such as Kentucky Fried Chicken.
- Brand Name. This is the name of a particular product or service that a company offers, such as KFC’s "Popcorn Chicken."
- Brand Extension. Brand extensions are generated when an existing brand is extended into a new product. For example, extensions of Coke include Diet Coke, Cherry Coke, Coca-Cola Classic, etc. Dasani bottled water, on the other hand, is not a brand extension of Coke even though both products are produced by the same company.
- Trade Character. These are characters that effectively identify source. Tony the Tiger, for example, is associated with Frosted Flakes (brand name), which is produced by Kellog's (trade name).
- Trade Dress. Trade dress applies to unique forms of packaging. This prevents unscrupulous business enterprises from trying to trick consumers into buying their products by using packaging that is nearly identical to that of their competitors. Trade dress is protected if it is inherently distinctive, meaning that it stands out from other packaging due to its uniqueness and cretivity, rather than utilitarian factors.
- Product Configuration. A form of trade dress, this refers to the distinctive design and shape of a product, such as the glass Coca-Cola bottle. A unique external appearance of a restaurant was also found to be protectable. (Think of the movie Coming to America with Eddie Murphy. Golden arches vs. golden arcs. Big Mac vs. Big Mic. Had this situation occurred in real life, McDonald’s would probably have had a thing or two to say about it.) Product configuration can only be protected if it has a "secondary meaning" to consumers – that is, consumers associate the product appearance with its source. Trade dress and product configuration may be registered as trademarks or protected under the "false designation of origin" statute, U.S.C. Sec. 1125(a).