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

Who Decides Distinctiveness?

The United States Supreme Court has granted certiorari to review the decision in Riseandshine Corporation, dba Rise Brewing v. Pepsico, Inc., in which the Second Circuit Court of Appeals held that RISE, although suggestive, is weak as a matter of law. Other circuits have treated distinctiveness as a question of fact for a jury, not a judge, to determine. The Court presumably has granted certiorari to resolve the conflict in the circuits.

Rise Brewing v. Pepsico

The lawsuit

Riseandshine Corporation sells nitro-brewed coffee. It registered a trademark in the phrase RISE BREWING CO. for goods in IC 030, namely, coffee-based beverage products.

Subsequently, Pepsico, Inc. launched a canned energy drink under the mark MTN DEW RISE ENERGY. Riseandshine Corporation obatined a preliminary injunction prohibiting Pepsico from using the word RISE in connection with its beverages. The district court granted the injunction, finding that Riseandshine Corporation had established likelihood of success on the merits of a trademark infringement claim.

To reach this conclusion, the district court considered eight factors that courts have deemed relevant to likelihood of confusion. The strength of the mark is one of those factors. See Polaroid Corp. v. Polaroid Electronic Corp. The district court found that the strength of the mark favored the plaintiff.

Pepsico appealed.

Rise and PepsiCo MTN Dew Rise cans
Rise and Mtn Dew Rise labels, from the complaint

The Second Circuit Reversal

The Second Circuit Court of Appeals reversed, holding that the district court erred as a matter of law in failing to rule that RISE, as a trademark for coffee beverages, is weak. Although it is a suggestive mark, the Court held it is not strongly distinctive.

The Petition for Certiorari

Riseandshine Corporation filed a petition for certiorari with the United States Surpeme Court. The primary contention made in the petition is that the Court of Appeals improperly treated the question whether a suggestive mark is inhernetly distinctive and “strong” as a question of law rather than a question of fact.

The issue is of practical importance because it can mean the difference between disposing of a lawsuit quickly with a pretrial motion for summary judgmnet vs. needing to wait for a jury (or a judge sitting without a jury) to make factual determinations following a trial.

The Five Categories of Distinctiveness

As I have explained elsewhere, there are five categories of distinctiveness: fanciful, arbitrary, suggestive, descriptive, and generic.

A fanciful mark is something that is completely made up. Xerox is an example.

An arbitrary mark is one which, although a real word, bears no logical relationship to the product or service. Apple, as a trademark for computers, is an example.

A suggestive mark is one that hints at but does not directly describe a quality or feature of a product or service.

A descriptive mark is one that directly describes a quality or feature of a product or service. It does not qualify for trademark protection unless it acquires secondary meaning as an identifier of the source of a product or service. That is to say, unlike fanciful, arbitrary, and suggestive trademarks, descriptive marks are not inherently distinctive. They can become protected as trademarks only if they acquire distinctiveness.

Generic marks identify an entire class of goods or services.

Fanciful, arbitrary and suggestive marks are considered inherently distinctive. A descriptive mark is disintctive only if additional facts exist that demonstrate that it has become known to consumers as a source-identifier. Generic marks are never distinctive.

Consumer Perception

Booking.com

Booking.com is an online travel reservation service. The USPTO intially denied its application for registration of the domain name as a trademark, deeming it a generic term. Booking.com secured review in the U.S. district court for the Eastern District of Virginia, where it introduced new evidence of consumer perception. The district court found that the consuming public does not perceive BOOKING.COM as a genus of services, but as a description of services available at the website. Having found it to be descriptive rather than generic, the court proceeded to find, additionally, that it had acquired secondary meaning as an identifier of a particular source of travel reservation services.

The Court of Appeals affirmed.

Justice Ginsburg, writing for the majority of the United States Supreme Court, also affirmed.

The USPTO argued to the Court that generic terms “are ineligible for trademark protection as a matter of law” – regardless of how consumers understand them. See USPTO Brief in No. 19-46. The Court rejected that contention, holding instead that the question whether a term is generic depends on its meaning to consumers.

Perceiving suggestiveness

In Booking.com, the court found that consumers did not perceive BOOKING.COM as a generic term for any online reservation service. Rather, consumers viewed it as an identifier of a particular provider of such a service. As Justice Ginsburg observed, “if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such service —to be a ‘Booking.com.'” USPTO v. Booking.com, 591 U.S. _, 140 S. Ct. 2298 (2020).

The question before the Court now is whether the same thing is true of suggestiveness. Does the question whether a term is suggestive (as distinguished from descriptive, for example) also depend on its meaning to consumers?

The Court in Booking.com applied a two-step inquiry: (1) First, do consumers perceive a particular word or string of characters as a generic term or a descriptive term? (2) If they view it as descriptive, has it acquired distinctiveness?

Applying this approach in the present case would yield a two-step inquiry something like this: (1) First, do consumers perceive a particular word or string of characters as descriptive or suggestive? (2) If they view it as suggestive, is it automatically distinctive as a matter of law, or is a further determination that consumers perceive it as an identifier of a particular source of a product or service that has the suggested quality or feature necessary?

This, then, is what the question formally presented for review (Is inherent distinctiveness a question of fact or law?) comes down to.

Conclusion

Because this case is a trademark infringement lawsuit rather than a dispute about registrability, the Court has a golden opportunity to explain whether and how distinctiveness analysis differs when considering its existence as a necessary element of a valid (registrable) trademark, on one hand, and when it is considered as just one of several factors to weigh and consider in a likelihood of confusion analysis. It also presents the Court with an opportunity to shed some light on the murky distinction between descriptiveness and suggestiveness. (See, e.g., The False Dichotomy Between Suggestive and Descriptive Trademarks.)

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.

Visit my extensive Trademark FAQs page.

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.