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Origins And Development Of Trademark Law

Trademark law in the United States is governed by the Trademark Act of 1946, also known as the LANHAM ACT (15 U.S.C.A. § 1051 et seq). The Lanham Act defines trademarks as including words, names, symbols, or combinations thereof that a person uses or intends to use in commerce to distinguish his or her goods from those made or sold by another. Potential trademarks are categorized by the functions they perform. Within trademark law are several specialized terms used to categorize marks that may be subject to protection. The categories are form, mode of use, and, most commonly, strength. The four subcategories of strength are generic, descriptive, suggestive, and arbitrary or fanciful.

A generic name is the common name for a product and will never be considered a trademark. Shoe, ball, hat, and lightbulb are all generic product names. Some marks that do not begin as generic may later become generic if the public adopts the mark as the general name for that product. Examples of marks that were not originally generic but later became so are cellophane and aspirin. Generic marks are not "strong" because they are not distinctive. To give trademark status to the generic or common name of a product would prevent all other manufacturers of the product from identifying it. To prevent that from occurring, granting trademark status to the generic name of a product is prohibited.

In the King's Name

Although Elvis Presley died in 1977, his name and likeness have been trademarked by Elvis Presley Enterprises (EPE). EPE earns millions of dollars each year through a licensing program that grants licensees the right to manufacture and sell Elvis Presley merchandise worldwide. EPE also operates two restaurants and an ice cream parlor at Graceland, the Elvis Presley home in Memphis, Tennessee, which Presley fans consider to be a shrine to the king of rock and roll.

In 1995 EPE filed suit in federal court, alleging that a Houston, Texas, nightclub operating under the name "The Velvet Elvis" infringed on EPE's trademarks (Elvis Presley Enterprises, Inc. v. Capece, 950 F. Supp. 783 [S.D. Texas 1996]). The name of the nightclub comes from a black velvet painting of Presley that hangs in the back lounge of the bar. Newspaper advertisements for the club depicted images and likenesses of Presley and made explicit references to the singer, including "The King Lives," "Viva la Elvis," and "Elvis has notleft the building."

The court ruled that the name "The Velvet Elvis" did not create the likelihood of confusion as to the "Elvis" trademarks held by EPE. The court agreed with the club owner that the bar was meant to PARODY 1960s popular culture. Replete with lava lamps, beaded curtains, vinyl furniture, and black velvet nude paintings, the bar was a humorous jab at the culture that created the Presley myth. Even if EPE operated its own "Elvis" nightclub, the Houston bar would not create confusion as to the EPE trademarks. The court noted that the typical customers of The Velvet Elvis were young professionals ranging in age from their early twenties to their late thirties. The majority of Presley fans were middle-aged white women.

The court also ruled, however, that the use of Presley's name and likeness in advertisements infringed on the EPE trademarks. The advertisements did not indicate that the nightclub was a parody of 1960s popular culture, and therefore they created the likelihood of confusion as to the sponsorship of the nightclub.

The court ordered the owner of The Velvet Elvis not to display in his advertisements the image of Elvis or make direct references to his identity as a celebrity or to emphasize the word Elvisin the name The Velvet Elvis. Apart from this remedy, the court dismissed all other relief sought by EPE. The nightclub could continue, in the words found on its menu, as "The King of Dive Bars."

A descriptive term tells the consumer something about the product and may only become a trademark after it has acquired secondary meaning. This occurs after a period of time during which the term's association with that product is exclusive. This acquisition of secondary meaning is sufficient to make a mark distinct, meaning that in the eyes of consumers it has come to represent that products bearing the mark come from a particular source. The mark "Brooklyn Dodgers" is an example of a descriptive mark that is exclusively associated with a professional baseball team formerly from New York.

A suggestive term, rather than describing the product, merely makes a subtle suggestion about the type of product and its qualities. It requires consumers to use their imaginations to make the intellectual jump between the suggestion and the actual product. For those reasons, it can be a trademark immediately upon use. Examples of suggestive marks are Orange Crush (orange-flavored soft drink), Playboy (sexually oriented magazine for men), and Ivory (white soap).

When distinguishing between descriptive and generic terms, courts try to determine the viewpoint of the prospective consumer. Courts look for the meaning that the buyer of a product assigns to the contested word. Courts may also look at the term as used by dictionaries, third parties, trademark owners, texts, PATENTS, newspapers, literature, and surveys. Use of a term as a common name indicates that the word may be the generic name of a product.

The strongest marks are arbitrary and fanciful marks, which need not acquire secondary meaning. They are strong because they bear little or no relationship to the products with which they are affiliated, and thus their use is not unfair to others trying to compete in the marketplace with similar products. Arbitrary marks are common words used in an uncommon way and are used in connection with the goods in a way that does not describe the goods or suggest anything about them. Examples include Camels in reference to cigarettes and Dial as the name of a brand of soap. Fanciful words, on the other hand, are invented and (at least at the time they are first applied to the goods) have no dictionary meaning. Examples of fanciful marks are Kodak, Exxon, and Rolex.

These considerations force a producer to select or create a symbol or name for its product that is suitable for trademark protection. A producer labors to create a good name for a product, and a protected trademark prevents competitors from unfairly capitalizing on the reputation of that name. When trying to decide what mark is appropriate, the potential trademark owner should keep in mind a fundamental rule of trademark selection: in most situations, one will not be allowed to use a trademark that another entity already uses. Before an entity incorporates under a certain name, or attempts to sell a service or product bearing a particular name, it should conduct a search or hire an attorney to investigate prior or existing use of the name. Those companies that fail to conduct this kind of a search or blatantly ignore existing use of a trademark are likely to face a lawsuit by any existing owner of the mark. Such a lawsuit may lead to a court order to stop any infringing use and an award of damages to the holder of the mark.

Uniqueness is a major consideration to the potential trademark owner, regardless of whether the mark is descriptive, suggestive, and arbitrary or fanciful. The fewer unique characteristics a mark possesses, the less legal protection it receives. The potential trademark owner must consider whether others need to use a particular mark in conjunction with a product in order to compete. A unique mark that bears little relationship to the product is preferred over a mark that is more generic.

A company has a better chance of procuring protection for a mark when, by using the mark, it is the first to cause consumers to see an association between the mark and the product.

The Lanham Act distinguishes trademarks from trade names and service marks and also addresses certification marks and collective marks. A SERVICE MARK is used to identify and distinguish the services of one company from another, such as Sears for retail stores, and American Express for credit cards. A TRADE NAME or commercial name distinguishes and identifies a business. The same name or portion of a name may also serve as a trademark, trade name, or service mark. An example is the name Ford Motor Company, which is the trade name of a company that builds and sells cars and trucks that bear the trademark "Ford." In short, trademarks apply to products, service marks to services, and trade names to businesses.

Certification marks endorse products and certify approval of their origin, quality, or authenticity. A certification mark is not the property of the maker of the products upon which the mark will be affixed. Examples are the Union Label in garments and various seals of approval. When the provider of goods or services belongs to an association, it often advertises or attaches a collective mark to announce that relationship. The mark is used on products or services not provided by the owner of the mark, typically as a symbol guaranteeing quality and taking advantage of the supposed benefits to the consumer that stem from the product's association with the owner of the mark.

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