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
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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
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)