If It Walks Like a Duck and Quacks Like a Duck, Shouldn't It Be a Duck: How a Functional Approach Ameliorates the Discontinuity between the Primary Significance Tests for Genericness and Secondary Meaning

New Mexico Law Review, Dec 2007

By Vanessa Bowman Pierce, Published on 01/01/07

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If It Walks Like a Duck and Quacks Like a Duck, Shouldn't It Be a Duck: How a Functional Approach Ameliorates the Discontinuity between the Primary Significance Tests for Genericness and Secondary Meaning

Recommended Citation Vanessa B. Pierce, If It Walks Like a Duck and Quacks Like a Duck, Shouldn't It Be a Duck: How a Functional Approach Ameliorates the Discontinuity between the Primary Significance Tests for Genericness and Secondary Meaning If It Walks Like a Duck and Quacks Like a Duck , Shouldn't It Be a Duck: How a Functional Approach Ameliorates the Discontinuity between the Primar y Significance Tests for Genericness and Secondar y Meaning Vanessa Bowman Pierce 0 0 Thi s Article is brought to you for free and open access by The U niversity of New Mexico School of Law. For more information, please visit the New Mexico Law Review website: , USA - IF IT WALKS LIKE A DUCK AND QUACKS LIKE A DUCK, SHOULDN'T IT BE A DUCK?: HOW A "FUNCTIONAL" APPROACH AMELIORATES THE DISCONTINUITY BETWEEN THE "PRIMARY SIGNIFICANCE" TESTS FOR GENERICNESS AND SECONDARY MEANING VANESSA BOWMAN PIERCE* I. INTRODUCTION "Of each particular thing ask: what is it in itself? What is its nature? What does he do, this man you seek?"' A trademark identifies and distinguishes the goods of one manufacturer from the goods of another and indicates the source of the goods.2 This is its function-this is what a trademark does. Yet, ever since Judge Friendly first articulated that trademark status could be determined based on a term's classification into one of four categories along a "spectrum of distinctiveness," 3 courts have struggled to place terms in their appropriate positions along that spectrum. By classifying a term without evaluating what it does, courts have lost sight of the fundamental nature of the trademark. A generic term cannot function as a trademark because it represents the name, rather than the source, of the goods.4 Moreover, through a process known as "genericide," 5 a trademark may become a generic term when the public comes to view the trademark not as the source of the goods, but as the goods' generic name.6 The courts' justification for genericide stems from a perceived disadvantage to competitors, who, without the freedom to use the trademark, would be forced to use other, often less efficient, terms to describe their goods.7 * Assistant Professor of Law, Ave Maria School of Law. J.D., University of Notre Dame (1996). The The determination that a term is or has become generic should be based on an analysis of that term's primary significance in the minds of the consuming public.8 Before addressing a term's primary significance, however, courts and the United States Patent and Trademark Office (PTO) tend to first designate the goods' product category or genus.9 This designation often leads to the conclusion that the term is generic without considering the primary significance of the term."° Once a term has been designated as generic for particular goods, its status as generic is basically fixed, precluding it from ever attaining trademark status for those goods." The preclusive effect of a term's prior generic designation eclipses any analysis by the courts concerning the term's actual function. Courts disregard evidence that the term is functioning as a trademark, dismissing such evidence as merely demonstrating de facto secondary meaning, which is insufficient for trademark status.' 2 The courts' result does not logically follow: If a term functions as a trademark-if it indicates a source and distinguishes goods-it is a trademark, notwithstanding any external label that has been attached to it.13 A discontinuity exists between the tests for determining the primary significance of a term when it has been designated as generic versus when it has been designated as merely descriptive. This Article proposes a functional approach that harmonizes this discontinuity. First, in Part I, this Article explores the legal tests used to evaluate whether a term has become generic or whether it has acquired secondary meaning, and provides a background of traditional trademark forms and functions, highlighting the classification structure that segregates terms as "generic" and "merely descriptive" along the distinctiveness spectrum. In Part III, this Article explores two representative cases, the Murphy DoorBed case and the Canfield Diet ChocolateFudge Soda case. In Part IV, this Article assesses the problems associated with the classification of terms and the primary significance tests evaluated in Part II and demonstrated through the representative cases in Part III. In Part V, this Article proposes a "functional" solution to the discontinuity between those tests. This Article ultimately concludes that if there are no functional reasons to prohibit exclusive rights and the term otherwise functions as a trademark, its designation as merely descriptive or generic becomes irrelevant. HI. UNITED STATES TRADEMARKS-FORM AND FUNCTION Trademarks, though not specifically authorized by the United States Constitution, 4 have achieved levels of recognition that most patents and copyrights 8. See infra note 108 and accom (...truncated)


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Vanessa Bowman Pierce. If It Walks Like a Duck and Quacks Like a Duck, Shouldn't It Be a Duck: How a Functional Approach Ameliorates the Discontinuity between the Primary Significance Tests for Genericness and Secondary Meaning, New Mexico Law Review, 2007, Volume 37, Issue 1,