17. What a Trademark Is and Distinctiveness
Learning Objectives: Unit 17
Upon completion of this unit, you should be able to:
- Explain what a trademark is.
- Explain policy issues relating to trademarks, both positive and negative.
- Analyze whether a given subject matter can be a trademark.
- Explain the requirement of distinctiveness.
- Explain the policies underlying the legal requirement of distinctiveness.
- Analyze the distinctiveness of a given mark.
Although the federal agency is called the United States Patent and Trademark Office, patents and trademarks have relatively little in common when it comes to substantive law. One (patents) is exclusively federal; the other (trademarks) was historically rooted in state law and today exists in a dual-authority regime. Patent law is relatively uniform due to the consolidation of appellate decisionmaking in a single court; trademark law exhibits substantial diversity on some issues due, in part, to the fragmentation of appellate decisionmaking. Patents relate to technological development; trademarks involve source identification. Patent rights can only be obtained by filing for and obtaining an issued patent; trademark rights flow from use as a mark. While registration can strengthen trademark rights, registration alone does not provide trademark rights.
With this in mind, it may be useful to forget, for the next few weeks at least, all the substantive law you have learned so far in this course.
The Concept of a Trademark
We will begin our discussion of trademarks by examining the nature and function of a trademark. The first case is the classic Qualitex v. Jacobson (1995). Qualitex used a particular green-gold color on the dry cleaning pads that it manufactures and sells to dry cleaning business. It claimed trademark rights in the green-gold color and brought suit against Jacobson, a competitor who was selling pads with a similar color. Jacobson contended that color alone cannot serve as a trademark.
After you have read Qualitex, go on to the next section: Distinctiveness.
15 U.S.C. §1127. Construction and definitions; intent of chapter (2006)
. . .
The term “trademark” includes any word, name, symbol, or device, or any combination thereof
1) used by a person, or
2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown
