Category: Non-AI Trademark

Trademarks and trademark law | News and commentary from Cokato, Minnesota lawyer Tom James (also known as Thomas James or Thomas B James). This category includes general trademark principles such as the requirements for a valid trademark, registration, infringement, and dilution

Longstanding and Emerging Legal Issues in Trademark Law

Trademark law protects brand identifiers like names, logos, words, slogans, and other things, ensuring consumers aren’t deceived about the source of a product or service. It also protects businesses from unfair competition. Core concepts include use in commerce, distinctiveness and the likelihood of confusion, which dictate whether a mark can be registered and enforced.

Jack Daniels whiskey bottle and Bad Spaniels dog toy - parody goods trademark infringement

Whether you’re a startup founder, an artist, or just astudent of the law, understanding trademark law is essential. Here is a breakdown of the fundamentals, followed by some of the biggest trending issues in the trademark world today.

The Fundamentals of Trademark Law

A trademark is any word, name, drawing, graphic, or device used to identify the source of goods or services and distinguish them from others. The four essential requirements for a valid trademark are:

Distinctiveness

A trademark must operate not only to identify the source of a product or service but also to distinguish it from others.

It is evaluated along a spectrum:

  • Fanciful marks: These are completely made-up, invented words, graphics, etc. that have nothing whatsoever to do with the nature or quality of the products or services with which they are associated. These are inherently distinctive, meaning it is not necessary to prove that consumers have come to associate the mark with the source. XEROX and EXXON are examples.
  • Arbitrary marks: These are real words, images of real things, etc., but they bear no relationship to the product or service with which they are associated. APPLE computers is an example. These, too, are inherently distinctive.
  • Suggestive marks: Suggestive marks are marks that hint at the nature or a quality of the product or service, but do not directly describe it. They require some imaginative thought on the part of the consumer to “connect the dots.” JAGUAR for cars and COPPERTONE for suntan lotion are examples. A suggestive mark is inherently distinctive.
  • Descriptive marks. These describe a quality, ingredient, or characteristic of the product or service. Unlike suggestive marks, they don’t merely hint at it; they come right out and directly describe the product or service, or a characteristic or ingredient of it. HOLIDAY INN and INTERNATIONAL BUSINESS MACHINES are examples. Descriptive marks cannot be claimed as trademarks unless they have acquired “secondary meaning.” The burden of proof is on the claimant to show that consumers have come to identify the brand with the claimant’s product or service, and not with other sources of it.
  • Generic marks: These are names for a category of product or service. MILK, as a mark for milk would be an example. No trademark rights can be claimed in generic marks.

Likelihood of Confusion

The primary legal standard for both registering a mark and suing for infringement is “likelihood of confusion”. This means determining if an ordinary consumer would mistakenly believe that your product or service and someone else’s come from the same source, or are affiliated.

Courts apply a multi-factor test (primarily the DuPont factors) to assess likelihood of confusion. The most critical ones are:

  • Similarity of the marks: Do they look, sound, or convey a similar commercial impression?
  • Relatedness of the goods/services

Courts consider other factors, too.

Two marks may be confusingly similar even if they are not identical. The key is whether consumers would be likely to confuse the source of one with the source of the other.

Use in Commerce

A mark must be used in commerce as a source identifier. Otherwise, a trademark does not come into being. To register a trademark federally with the USPTO, the use must be in interstate or foreign commerce. Purely intrastate commerce will not suffice for federal registration.

Registration

Registered tradmeark symbol

In the United States, trademarks come into existence through use in commerce as a trademark. When all the elements of a valid trademark exist (distinctiveness, etc.) a “common law” trademark exists. The scope of protection a common law trademark affords, however, is limited to the geographic area of trade. To get nationwide protection and the right to use the coveted ® symbol, you must register your mark with the U.S. Patent and Trademark Office (USPTO).

My experience has been that the major stumbling blocks for people who apply to register their trademark with the USPTO are (1) lack of distinctiveness, usually due to selecting a descriptive mark without acquired meaning; (2) likelihood of confusion with another person’s or company’s trademark; and (3) improperly completing the application for registration.

Topical Issues in Trademark Law

Fraudulent filings

The USPTO has implemented rigorous enforcement frameworks to crack down on fraudulent filings. Historically, many trademark owners were in the habit of registering their marks in more than one category of goods or services, either to “keep options open” for possible company expansion into a new product line, or to prevent competitors from doing so. The USPTO is making more vigorous efforts to crack down on registrants who fraudulently claim use in connection with goods or services with which they are not actually using the mark.

Due to a massive influx of suspicious, fraudulent, or automated filings, laregly by trademark mills, the office has cracked down by requiring stricter identity verification and heavily scrutinizing specimens of use. If a brand is caught digitally altering logos or faking mock-ups of their goods in commerce, their registration very likely will be swiftly canceled. Examiners are inspecting specimens of use more closely now, trying to ferret out digitally created mock-ups of trademarks being used in commerce. A false or fraudulent specimen of use is grounds for cancellation of registration.

The Trademark Modernization Act has given the USPTO new and enhanced powers to cancel unused and fraudulent registrations.

AI-Generated Counterfeits

Generative-AI is being used to create knock-offs of digital products. This is creating challenges for owners of trademarks in digital products and services.

Intermediary Platform Liability

Can an online marketplace platform or intermediary website or online service provider be held contributorily liable for facilitating or otherwise contributing to counterfeit and trademark-infringing goods being sold on their platforms?

Phrases Without Trademark Functionality

People are increasingly trying to claim trademark ownership over common words and phrases, such as “Hello. How are you?” The USPTO and courts are rebuffing a lot of these efforts. It is still possible for a phrase to become a trademark, but proof of acquired secondary meaning as a source identifier is needed. Otherwise, an applicant is likely to experience a “failure to function as a trademark” denial.

Read more about non-AI-related legal issues.

Need help with a trademark registration? Contact attorney Thomas James.

Smelly Trademarks

If you have a distinctive smell, you might be able to claim trademark rights in it.

If it smells like a trademark and it functions like a trademark, it might be a trademark.

Rose-Scented Tires

Sumitomo Rubber Industries has successfully applied for the registration of an olfactory trademark in India. It is the smell of a rose, as applied to tires. India’s Trademark Registry has now accepted it for advertisement.

This is not the first time Sumitomo has secured trademark protection for its smelly tires. In fact, the company’s rosy tire was the first smell mark registered in the United Kingdom, back in 1996.

Automobile tire, on wheel upright - Sumitomo Tire

It’s a Smell World

Since the U.K.’s venture into scent trademarks, smell trademarks have been approved in several other jurisdictions around the world.

In 1999, the European Union accepted an application to register the smell of freshly cut grass as a trademark for tennis balls. It quickly closed the door to scent marks, however, in 2002. In Sieeckmann v. German Patent and Trademark Office, trademark protection was sought for a “balsamically fruity” scent with “a slight hint of cinnamon.” The ECJ ruled that a chemical formula did not represent the odor, the written description was not sufficiently clear, precise and objective, and that a physical deposit of a sample of the scent did not constitute the “graphic representation” the applicable trademark law required. This closed the door to smell marks in the EU for many years.

Scent mark registrations have been issued in the United States, though there are only a little over a dozen of them. Examples include the smell of Play-Doh, Power Plus fruity-scented vehicle lube, and minty-fresh bowling balls.

The non-functionality requirement is the biggest obstacle for scent trademarks in the United States. The scent must be non-functional and serve only as a source identifier. Smells intrinsic to the purpose of a product will not qualify. So no trademark protection for the smell of a perfume or air freshener. And sorry, Burger King, probably no trademark for the smell of charred meat, either.

“Graphical Representation”

India’s statute requires trademark applicants to provide a graphical representation of the mark. This is what has stood in the way of smell claims in India all this time. Sumitomo, however, figured out a way to do it. It created a representation of the odor in “olfactory space.”

Rose scent graphicallly represented

It worked.

Will Flavor Be the Next Frontier?

It is unlikely that flavors will join smells as registrable brand identifiers. Although theoretically possible, no flavor has ever been registered as a trademark in the United States. The USPTO has expressed doubt that a flavor could ever function as a trademark because it is functional. (TMEP 1202.13). Also, although a dog might do it, consumers normally do not taste a product to determine its origin before deciding whether to buy it. Merchants probably would frown on the practice, as would other customers in the store. Hopefully, stores do not allow dogs to sample products intended for human consumption, either.

Learn about other long-lingering issues in trademark law.

Need help registering a non-traditional trademark? Contact attorney Tom James.

 

Excuse Me While I KIST the Sky

Changing the spelling of, or adding or subtracting peripheral parts from, an existing trademark is not often likely to solve a likelihood of confusion problem, particularly when the goods or services are identical, similar, or related.

Sunkist beverage, illustration for Thomas B. James blog post
Sunkist is a trademark of Sunkist, Inc. This image is used for illustrative purposes only. No endorsement, sponsorship or affiliation with any company, product or brand is intended or implied.

The Jimi Hendrix song, “Purple Haze” contains one of the most famous misheard lyrics of all time. Ever fixated on sex and sexuality, many people insist that when he sings, “Excuse me while I kiss the sky,” he is saying, “Excuse me while I kiss this guy.” Kiss the sky and kiss this guy are near-homophones, that is to say, they are phrases that nearly sound alike. In the trademark world, homophones and near-homophones can create or contribute to a likelihood of confusion which, in turn, can result in a denial of registration to one of the marks and/or infringement liability.

Jimi Hendrix also wrote a song called Love or Confusion, but that is a story for a different day. See In re Peace and Love World Live, LLC.

Sunkist Growers v. Intrastate Distributors

Intrastate Distributors, Inc. applied to register KIST, both as a standard character mark and as a stylized mark, for soft drinks. Sunkist, Inc. filed an opposition to registration with the Trademark Trials and Appeals Board (TTAB), arguing that KIST is confusingly similar to SUNKIST, when used in connection with beverages. The TTAB dismissed the opposition, finding no likelihood of confusion.

On July 23, 2025, the U.S. Federal Circuit Court of Appeals reversed.

The DuPont Factors

Likelihood of confusion is a question of law that requires weighing of findings of fact on the DuPont factors. This list of factors comes from E.I. DuPont de Nemours v. Celanese Corp., a 1973 case that identified 13 factors relevant to likelihood-of-confusion analysis:

  1. Similarity of the marks
  2. Nature of the goods and services
  3. Trade channels
  4. Conditions of purchase (e.g., whether buyers of the product or service are likely to carefully consider options before purchasing, or are more likely to make a quick or impulsive purchasing decision.)
  5. Fame
  6. Number of similar trademarks used with similar goods or services
  7. Actual confusion
  8. History of concurrent use, if any
  9. Variety of different products and services with which the trademark is used
  10. Interactions and relationship between the applicant and the trademark owner
  11. Extent of the applicant’s right to prevent others from using the trademark on specific goods or services
  12. Potential confusion
  13. Any other relevant information.

The analysis may focus on dispositive factors, such as similarity of the marks and relatedness of the goods. Also, as a general rule, the more related the goods or services are, the less similar the marks need to be to support a finding of likelihood of confusion.

In this case, the Board found four factors supported a finding of likelihood of confusion, but determined that KIST and SUNKIST were dissimilar. The Board believed they had different commercial impressions. KIST, the Board believed, referenced a kiss, while SUNKIST referenced the sun.

The Board relied on some of IDI’s marketing materials that depict a pair of lips adjacent to the word KIST. The Court of Appeals, however, noted that lips do not appear next to the word in all of the marketing materials. Nor was the image of lips claimed as part of the trademark. Therefore, the Court held that the Board’s finding that KIST references a kiss was not supported by substantial evidence.

The Court also determined that Sunkist did not always depict an image of a sun adjacent to its mark SUNKIST.

In short, when considered as standard character marks, not as design marks, SUNKIST and KIST are substantially similar and consumers are likely to confusedly believe that beverages using either of these marks come from the same source.

Confusing Similarity

Two marks may be confusingly similar if they are similar as to appearance, sound, meaning, or commercial impression. (TMEP 1207.01(b).) The test is not whether the two marks are linguistically distinguishable, but whether they are likely to give a consumer the impression that there is a commercial connection between them.

When assessing the likelihood of confusion between compound words, courts may appropriately identify a part of the term as the dominant part and other parts as peripheral. If the dominant part is distinctive, then greater weight may be assigned to the similarity between the dominant parts of two marks than to the peripheral parts. Thus, for example, regarding CYNERGIE and SYNERGY PEEL, the TTAB determined that SYNERGY was the dominant part of both marks, and that CYNERGIE and SYNERGY were sound-alikes. Consequently, they were confusingly similar.  (TEMP 1207.01(b)(viii).)

Although the Court of Appeals did not invoke this particular rationale in its KIST decision, it seems to me that this doctrine also would support a determination that KIST and SUNKIST are confusingly similar. KIST is the dominant part of both marks and it is distinctive.

Conclusion

Changing the spelling of, or adding or subtracting peripheral parts from, an existing trademark is not often likely to solve a likelihood of confusion problem, particularly when the goods or services are identical, similar, or related. A standard character trademark search should look not only for identical matches but also for words and phrases which, although not identical, might look or sound similar, in whole or in part, or have meanings similar to the one you are trying to clear.

Read about other non-AI trademark issues.