The Quest for Distinctiveness in Trademark and Trade Dress Law
What it Means and How to Get It
“There is arguably no more important asset for a company than its intellectual property. It is often the result of years of labor and millions, or even billions, of dollars in investments. It is also used to symbolize a company’s reputation and good will in a market. The most recognized symbols, art, and characters in the world are often owned by some entity as intellectual property.”
When you stop by your local store for some Oreos, you don’t scan the shelves for a name—rather, you can spot the blue-wrapped package from an aisle away. Still hungry? Want Mexican food but can’t remember your favorite restaurant’s name? You do not need a name: the external design will come to mind, making it easy to find.
Trademarks (marks) and trade dress (dress) are critical to a company’s success. A trademark is a word, name, symbol, design, or any combination thereof used in commerce to distinguish the goods of one manufacturer from those of another. Trade dress is a collection of marketing elements recognized by courts as encompassing product design or a building’s décor. The more distinctive the marks and dress, the less confusion there is in the marketplace, hence a stronger brand. A stronger brand enhances customer association with a product’s source, ideally resulting in substantial revenues as brand loyalty develops.
This article, the first in a series of three, highlights the critical issue of distinctiveness in trademark law. Specifically, we explain how a company’s marks and dress can be made as strong as possible by ensuring that they are distinctive. Later articles address the role of secondary meaning in establishing distinctiveness (including what secondary meaning is), and how to prove secondary meaning, should you need to.
Protecting Marks and Dress through Distinctiveness
Nike, McDonalds, and Coca-Cola have among the most famous and litigation-tested trademarks in the history of the marketplace. Such marks—popularly known as logos—connect companies’ products with their source in consumers’ minds. Via a product’s packaging, loyal customers recognize their purchases as produced by a particular company, one ideally backed by a reputation for quality.
Because of the plethora of similar products that coexist on the market, a company must be able to distinguish its goods (say, its tennis shoes) from those of competing businesses. To fulfill this function, a company’s mark and dress must be crafted so they are capable of legal protection. Protection ensures exclusivity of use—meaning no one else can legally use that mark or dress without permission. Without exclusivity, a logo cannot perform its function of differentiating the source of goods. In addition to customers becoming confused (possibly resulting in them buying a related product from a competing company), non-exclusivity permits other companies to capitalize on the significant time and money that the first company spent building its brand. For example, what if anyone could use “Nike” or Nike’s “swoosh” without fear of being successfully sued? Then later companies could benefit from the time and money Nike spent building its reputation, saving start-up costs and “tricking” consumers into buying their potentially inferior product. Not only might Nike lose out on sales, but its reputation for quality could be marred. And if a later company became especially affiliated with the Nike name and swoosh (assuming Nike was not already so established), that company could possibly even file for trademark and/or dress protection, legally barring Nike from capitalizing on its own terminology and imagery.
Clearly, it is critical that companies create strong brands, and then promote and protect their intellectual property. However, only some terms and images qualify for protection by the United States Patent and Trademark Office (USPTO); those terms and images must be distinct, as explained below.
Fanciful and Arbitrary Terms
Fanciful and arbitrary terms are those that are not intuitively related to the products or services being offered. These terms are afforded the broadest possible protection from infringement because they are necessarily distinct.
Trademark terms such as Kodak and Clorox are properly classified as fanciful. Fanciful marks are those “invented solely for their use as trademarks.” When a fanciful word is first used, “that first use is as a trademark and it has only one meaning in all the world, i.e., its trademark meaning.”
By comparison, arbitrary terms already exist, but are new regarding their use with a particular product. For example, Ivory and Apple are arbitrary marks since they are preexisting terms for a color and a fruit, being used in new ways (for cleaning products and consumer electronics).
Suggestive marks, which are also distinctive and thus also protected, imply desirable product features or attributes. Examples include “Jaguar” (a car as maneuverable as a wild cat), “Jiffy Lube” (a fast auto lubricator), and “Citibank” (a bank found city-wide).
Suggestive marks require some insight for consumers to reach the marketer’s desired end point. Specifically, a suggestive mark is one for which “a consumer must use imagination or … multistage reasoning to understand the mark’s significance … the mark does not describe the product’s features, but suggests them.”
Suggestive marks are frequently confused with a fourth category, descriptive marks, which are not automatically eligible for protection. Courts often use a two-part test to determine which category a mark falls into. The first—known as the “imagination” test—asks whether “imagination or a mental leap is required in order to reach a conclusion as to the nature of the product being referenced.” The second—the “competitors’ needs” test—focuses on the extent to which a mark is needed by competitors to identify their goods or services. If competitors “have a great need to use a mark, the mark is probably descriptive [and not automatically protected]; on the other hand, if the suggestion made by the mark is so remote and subtle that it is … not likely to be needed by competitive sellers to describe their goods or services, this tends to indicate that the mark is merely suggestive.”
The “Car Max” mark is suggestive, for example, because it tells the public that the company is involved in the automobile industry but leaves the precise nature of the defendants’ business, i.e., the sale of used cars, to the consumer’s imagination. Other marks that may qualify include “Playboy” (reading this publication will make you one), “7-Eleven” (hours of operation), and “Motel 6” (the original cost of an overnight stay, in dollars).
By contrast with fanciful, arbitrary, and suggestive terms, those that merely “describe” a product are not automatically distinctive and thus do not qualify for legal protection unless they acquire something called “secondary meaning.” A descriptive term has a secondary meaning only if and when the public comes to associate that term with that particular company. So, an optometrist’s office titled “Vision Center” would not be granted federal protection unless that phrase has become uniquely associated with that particular company. Without secondary meaning, such terms are “unsuited to the function of marks because they are [a] poor means of distinguishing one source of services from another and because they are often necessary to the description of all goods or services of a similar nature.”
In Entrepreneur Media v. Smith, the Ninth Circuit Court of Appeals considered the descriptiveness of “entrepreneur” for a magazine geared toward small business owners. The court held that “entrepreneur” was descriptive and not eligible for protection because it “describes both the subject matter and the intended audience of the magazine.” An “entirely unimaginative, literal-minded person would understand the significance of the reference.”
More recently, the Trademark Trial and Appeal Board (TTAB) deemed use of “Green” with a product called “Green Cement” as merely descriptive “of an environmentally friendly product or service” and refused to register the mark. The trademark applicant had argued that “[t]here are abundant meanings associated with the adjective ‘green’ (at least 20),” and thus he should be permitted to trademark the term. On appeal, the TTAB disagreed, explaining that “‘Green’ indicates that the product is environmentally beneficial. There simply can be no dispute today that the term “Green,” ubiquitously used as an adjective with any good or service, will be perceived as an indicator that the good or service is environmentally friendly.” Notably, this ruling does not deny use of the term; the company just cannot prevent others from using it.
Although “green” is descriptive, what happens if the term is used to connote something other than environmental friendliness, such as money? In such cases, the term may be protected. For example, “Green Street” successfully filed a trademark with the USPTO in 1997 for its investment advisory and securities brokerage services. As of June 2010, there were 37 entries filed with the USPTO using a variant of Green Street, Green $treet, or Greenstreet, alone.
A term or phrase is generic when “it is commonly used to depict a genus or type of product, rather than a particular product.” When a term is generic, trademark protection is denied. Generic marks are either generic from the outset or become generic. Before you expend monetary resources on a potentially generic term, recognize that the road to protecting such a term is hazardous. And using a generic term related to the actual industry in which you compete is sheer folly. Hotels.com believed they could simply add a dot to the generic term “hotels” and gain exclusivity—they were wrong. Their case and that of Mattress.com clearly demonstrate the long-held trademark office position that generic terms cannot be trademarked. Adding a dot-com to a generic term does not allow for exclusivity, but merely reflects that a company is engaging in Internet commerce.
An example of a term that has become generic is “aspirin.” “Aspirin” fell into common use as a descriptive name for a pain reliever more than 80 years ago. Such pervasive use can transform a trademark into an unprotected, generic term—a phenomenon known as “genericide.” This irony is a marketer’s nightmare. You expend money and time to put a unique mark before the buying public, and your reward for a job well done may be the loss of exclusivity.
Could “to Google” become generic? Many believe it is just a matter of time. The monster search engine would like you to use another phrase for “search the web,” like, well, “search the web.” But today, most people say “I’m going to google it” when declaring their intent to conduct an online search. Unfortunately from a trademark standpoint, Google has become almost too ubiquitous too quickly. And as a term, “Google” “[has] an alpha-structure that … lends itself to cute verbalization,” and thus generic use.
Using fanciful terms as adjectives, not nouns or verbs, helps avoid this problem. For example, Kimberly-Clark would rather you say, “I need a Kleenex tissue” than “Hand me a Kleenex.” J. Thomas McCarthy (famous for McCarthy on Trademarks), often advises entrepreneurs to create two terms when marketing a novel product—one that can be “donated” to the industry (like “tissue”) and one that can serve as a trademark (like “Kleenex”). To avoid genericide, it is critical that companies only use their marks as adjectives in their advertising. Companies may also want to create marks that do not lend themselves to “verbing.” Blogger Naseem Javed cites several powerful corporate brands that have remained unscathed by the perils of “verbing,” such as Sony, Nintendo, Apple, and Rolex. He notes, “Have you ever heard, ‘I Rolexed and realized I was late?'”
A successful effort to prevent genericide was employed by the LEGO Company, which aggressively requested that customers call their toys “LEGO blocks” and not “LEGOs,” thereby avoiding LEGO becoming a generic term despite its overwhelming popularity. Similarly, Xerox has engaged in an aggressive ad campaign to discourage popular use of the term “Xerox” as a synonym for “copy.”
Color and Shape
So, now you know to use fanciful, arbitrary, or suggestive terms and avoid descriptive and generic terms. There are two additional ways to ensure distinctiveness: using 1) notable colors and shapes, and 2) geographic terms.
First, the arrangement of color and shapes on packaging can be particularly effective at signaling a product’s source. For example, although Purina owns the rights to approximately 30 pet food brand names, it is its trademarked red-and-white checkerboard logo that most pet lovers associate with the corporation.
Single colors can also be protected. “Tiffany Blue” has been trademarked by Tiffany & Co. for use with their product packaging. Similarly, Owens-Corning has trademarked a shade of pink for fiberglass insulation. This raises a critical question: since these colors are protected, can you use robins-egg blue for your product packaging or pink for your fiberglass insulation? It is probably not a good idea, unless you are anxious to face an infringement lawsuit. But can you use these colors as part of a trade dress scheme? Probably.
Interestingly, in 2007 Australia’s High Court rejected the petrol giant BP’s 16-year battle to register Pantone 348C—a distinctive green—as a trademark. As Justice Michael Kirby warned, the color green, which is generally viewed as signifying environmental friendliness, “might be inherently adapted to mislead [consumers],” asking “what is nature[al] and healthy about the production or consumption of petroleum products?” Despite Australia’s reluctance to permit BP to trademark the color green, however, BP has been successful at trademarking the color in more than 20 countries.
Geographic terms signal the territory in which a product was produced, which can be an important indicator of quality—as much so as a reference to a particular company. Indeed, “[t]he United States has many valuable geographical indications. Names like ‘Idaho Potatoes,’ or ‘Florida Oranges,’ … or ‘Napa Valley Wines,’ … are protected under U.S. trademark [law].” As explained by the USPTO, “[g]eographical indications are becoming increasingly important, as they are key features on many agricultural and food product labels and are valuable assets that play an integral role in promoting trade and consumer interests. Like trademarks, [geographical indications] are valuable marketing tools, where a company’s/producer’s good will and reputation are linked to its products.”
At a reception held at the German Consulate in San Francisco on May 24, 2007, officials representing the European Union and leadership from the Napa Valley Vintners announced that Napa Valley had been officially recognized with Geographic Indication Status as a protected name in the European Union, the first such recognition of an American wine location.
Spectrum of Distinctiveness
In summary, only some terms and images are distinct and thus eligible for legal protection. The following diagram illustrates the “spectrum of distinctiveness,” which moves from left to right, from most protectable (fanciful) to not protectable (generic).
So what should you take away from this article? Two words: ensure and protect. Ensure that your mark or dress is distinct so you can protect against infringement.
First, check to see if your mark has already been registered. The USPTO maintains an online registry that is publicly accessible. Many states have a similar registry for intrastate marks. You should also conduct a general Internet search to make sure no other companies in your industry are using the same or a similar unregistered mark, to confirm your mark is unique.
Second, design your mark and dress to be as distinct as possible. Consider using arbitrary and fanciful terms that convey no apparent meaning. Alternately, consider suggestive terms that require the buyer to engage in a mental process of association.
Third, make sure to use your mark as an adjective—and not as a noun or verb—in all marketing efforts. This will help you to avoid losing your mark’s distinctiveness (and thus its legal protection) should your product or service become wildly popular.
Finally, a creative use of color, engaging images and original fonts will ensure you have created a brand that is distinguishable, and identifies you as your product or service’s unique source. The stronger that identification, the more protected your market identity will be.
 Paniaguas, John S., and Craig W. Mandell, “A Practitioner’s Guide to Protecting Technology Assets.” DePaul Journal of Art, Technology & Intellectual Property Law 20.2 (Spring 2010): 279.
 Wal-Mart Stores, Inc. v. Samara Bros., Inc. 529 U.S. 205 (2000); Two Pesos, Inc., 505 U.S. 763.
 The “Swoosh” is among the most recognized logos in the world. Carolyn Davidson, then a design student, created it for Nike’s co-founder in 1971. Davidson submitted a bill totaling just $35 for her work. See “AbsoluteAstronomy.com, Swoosh,” http://www.absoluteastronomy.com/topics/swoosh. Today, Nike is suing several alleged offenders for $100 million in damages. See The Los Angeles Times, Nike Re-shoots Ad to Please CBS, http://articles.latimes.com/keyword/nike-inc/featured/5.
 The authors use this term as a synonym for trademark, trade dress, and branding.
 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).
 Chams De Baron Ltd. v. H. Cotler Co., 1984 U.S. Dist. Lexis 18993, *12 (S.D.N.Y. 1984).
 Bourjois, Inc. v. Cheatham Chemical Co., 18 C.C.P.A. 1089, 1091 (1931).
 Ashley Furniture Indus. v. Sangiacomo N.A. Ltd., 187 F.3d 363, 369 (4th Cir. 1999).
 Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1114 (9th Cir. 2010).
 Rudolph Int’l, Inc. v. Realys, Inc., 482 F.3d 1195, 1198 (9th Cir. 2007).
 Rodeo Collection, Ltd. v. W. Seventh, 812 F.2d 1215, 1218 (9th Cir. 1987).
 Zobmondo Entm’t, LLC, 602 F.3d at1114.
 Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1054 (6th Cir. 1999).
 The Lanham Act has codified this fundamental legal principle. See Lanham Act § 2(e)(1).
 M.B.H. Enterprises, Inc. v. WOKY, Inc., 633 F. 2d 50, 54 (7th Cir. 1980).
 Entrepreneur Media v. Smith, 279 F.3d 1135, 1142 (9th Cir. 2002).
 In Re Calera Corp., No. 77409087 (T.T.A.B March 2010).
 Id. at *7.
 As of June 12, 2010, the total number of filings with the USPTO using the word GREEN is 16,913. USPTO, Trademark Electronic Search System, http://tess2.uspto.gov/ (last visited July 1, 2010).
 Abercrombie, 537 F.2d at 9.
 Id. at 10.
 In re Hotels.com, L.P., 87 U.S.P.Q. 2d 1100 (2008).
 In re Dial-A-Mattress Operating Corp., No. 78976682 (T.T.A.B. 2008).
 Bayer Co. v. United Drug Co., 272 F. 505 (S.D. N.Y. 1921).
 See List of Genericized Trademarks, http://www.worldlingo.com/ma/enwiki/en/List_of_generic_and_genericized_trademarks (last visited July 1, 2010).
 Javed, Naseem, “When Will Google Become Generic?” CircleID – Breaking Internet News, Opinions and Blogs, http://www.circleid.com/posts/google_trademark_be come_generic. (link no longer accessible).
 Scalise, David, and Karen Abesamis, “Trade Dress: Seminal Cases and Commentary.” Perspectives in Business 7.1 (Winter 2010): 23-36.
 See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985).
 BP is currently best known as the company whose oil-rig platform broke apart in May 2010, resulting in a record-breaking oil-line rupture in the Gulf of Mexico, creating untold environmental damage.
 See USPTO, Frequently Asked Questions, http://www.uspto.gov/ip/global/geographical/faq/index.jsp (last visited July 10, 2010).
 “Napa Valley Receives Geographic Indication (GI) Status in Europe.” Napa Valley Wineries and Wine. Web. 1 July 2010. .
 The phrase “spectrum of distinctiveness,” originally from the Abercrombie case, is probably generic now.
 See Scalise, David, and Karen Abesamis. “Trade Dress: Seminal Cases and Commentary.” Perspectives in Business 7.1 (Winter 2010): 23-36.
 See http://www.uspto.gov for a federal trademark search.
About the Author(s)
David Scalise, JD, is a tenured full professor at the University of San Francisco where he has taught more than 25 different courses in business, mathematics, logic, and law at the undergraduate and graduate level; received several university and college teaching awards; written more than 45 articles appearing in numerous domestic and international academic journals; originated more than 100 presentations, and created 150 voice tracks, podcasts, and educational films. His current research interests include trade mark, trade dress, contracts, and mediation.
Alexa Koenig, JD, MA, is a civil and human rights attorney and a PhD candidate in jurisprudence and social policy at the University of California, Berkeley. She was formerly an assistant professor at the University of San Francisco School of Law. She earned her BA degree summa cum laude from the University of California, Los Angeles, her JD magna cum laude from the University of San Francisco School of Law where she was certified in intellectual property law, and her MA from the University of California, Berkeley School of Law.
Brandon Carr, JD, is an associate at Valle Makoff LLP, a complex civil litigation firm that represents many clients in intellectual property matters. He is a graduate of UC Hastings College of the Law, where he served as a member of the Board of Editors of the Hastings Law Journal and as the Senior Development Editor. Brandon graduated from UCLA with a BA in political science from the UCLA Honors Program, graduating Phi Beta Kappa and Magna Cum Laude. He has experience working in a variety of intellectual property matters after interning at Sony Pictures drafting licensing deals for television and motion pictures, as well as a judicial extern for Judge Marla Miller of the San Francisco Superior Court.