Think Pink! Color Can Be A Trademark

Washington and Lee Law Review Volume 43 | Issue 4 Article 11 Fall 9-1-1986 Think Pink! Color Can Be A Trademark Follow this and additional works at: https://scholarlycommons.law.wlu.edu/wlulr Part of the Intellectual Property Law Commons Recommended Citation Think Pink! Color Can Be A Trademark, 43 Wash. & Lee L. Rev. 1433 (1986), https://scholarlycommons.law.wlu.edu/wlulr/vol43/iss4/11 This Note is brought to you for free and open access by the Washington and Lee Law Review at Washington & Lee University School of Law Scholarly Commons. It has been accepted for inclusion in Washington and Lee Law Review by an authorized editor of Washington & Lee University School of Law Scholarly Commons. For more information, please contact . THINK PINK! COLOR CAN BE A TRADEMARK 4 2 The Lanham Act' governs the registration and protection of trademarks used in interstate commerce.' To qualify as a trademark, the owner of the I. Lanham Act, 60 Stat. 427 (1946) (codified at 15 U.S.C. §§ 1051-1127 (1982)). 2. 15 U.S.C. §§ 1051-1096 (1982) (provisions governing trademark registration on Principle and Supplemental Registers). Under the Lanham Act, the owner of a trademark cannot obtain federal registration of the mark until the owner has used the mark in commerce. Id. § 1051. The term "commerce" under the Lanham Act means all commerce that Congress may regulate. Id. § 1127; see U.S. CONST. art. I, § 8 (Congress has power to regulate commerce with foreign nations, among states, and with Indian tribes). The Lanham Act provides for the federal registration of a mark on either the Principle Register or the Supplemental Register. See 15 U.S.C. § 1051 (satisfaction of enumerated prerequisites permits owner of trademark used in commerce to register on Principle Register); id. § 1091 (trademarks used in commerce and not registrable on Principle Register are registrable on Supplemental Register). Any trademark that distinguishes the goods or services of the registration applicant from the goods or services of others is registrable on the Principle Register unless the mark falls within certain exceptions provided in § 1052 of the Lanham Act. Id. § 1052(a)-(e). Subsection (a) of § 1052 bars the registration upon the Principle Register of immoral, deceptive, or scandalous matter. Id. § 1052(a). Subsection (b) prohibits the registration of a mark that consists of an insignia or simulation of an insignia of the United States, a state, a municipality, or a foreign nation. Id. § 1052(b). Subsection (c) bars the registration of names, portraits, or signatures of living persons without the written consent of those persons. Id. § 1052(c). Subsection (c) also prohibits the registration of the name, signature, or portrait of a deceased United States president during the widow's life except by written permission of the widow. Id. Subsection (d) bars the registration of any mark so similar to a currently registered trademark that, if applied to the applicant's goods, the mark likely would cause confusion, mistake, or deception in the marketplace. Id. § 1052(d). subsection (e) prohibits the registration of a mark that is merely descriptive or deceptively descriptive of the owner's goods or of a geographical location. Id. § 1052(e). Additionally, subsection (e) bars the registration of a surname as a trademark. Id. Section 1052(0 of the Lanham Act provides that any mark not excluded under subsections (a)-(d) is registrable if the mark has "become distinctive" of the applicant's goods in commerce. Id. § 1052(0. A mark has "become distinctive" or gained "secondary meaning" if consumers associate the mark exclusively with the product owner. See infra notes 16-18 and accompanying text (defining acquired distinctiveness, otherwise known as secondary meaning); see also infra notes 124-37, 215-36 and accompanying text (discussing § 1052(0 as basis of secondary meaning test). Proof of substantially exclusive and continuous use of a mark in commerce by the applicant for the five years prior to application is prima facie evidence of acquired distinctiveness under subsection (f). 15 U.S.C. § 1052(0. Although several conditions may prohibit registration on the Principal Register, the registration requirements for the Supplemental Register are less stringent. See id. § 1091. Marks that are not registrable on the Principle Register and do not fall within the § 1052(a)-(d) exceptions are registrable on the Supplemental Register. Id. Under § 1091 of the Lanham Act, the marks must be capable of distinguishing the applicant's goods or services. Id. In addition, the owner of the mark exclusively must have used the mark in connection with the owner's goods in commerce for the year prior to application. Id. Furthermore, if the applicant shows that the applicant requires domestic registration as a basis for foreign trademark protection, the one year use requirement may not be a prerequisite for registration. Id. Registration on the Principal Register rather than on the Supplemental Register, however, creates several substantive and procedural advantages for the registrant. See id. §§ 1065, 1072, 1115(a), 1124. For example, a Principal Register registration, unlike a Supplemental Register registration, generally is incontestable if the owner continuously uses the trademark for five 1433 1434 WASHINGTON AND LEE LA W REVIEW [Vol. 43:1433 consecutive years after registration. See id. § 1065 (conditions under which trademark incontestable). In addition, unlike registration on the Supplemental Register, registration on the Principal Register gives nationwide constructive notice of the registrant's claim of ownership. Id. § 1072. Registration on the Principal Register also constitutes prima facie evidence of the registrant's exclusive right to use the mark in commerce on the goods specified in the registration, whereas registration on the Supplemental Register does not constitute such prima facie evidence. Id. § 1115(a). Furthermore, the Principal Register registrant, unlike the Supplemental Register registrant, may record a registered trademark with the United States Treasury Department to block the importation of goods bearing an infringing mark. See id. § 1124 (forbidding importation of goods bearing infringing marks). See generally J. GILSON, 1 TRADEMARK PROTECTION AND PRACTICES §§ 4.02-4.05 (1985) (discussing substantive and procedural advantages of Principal Register registration). While Principal Register registration is preferable to Supplemental Register registration, Supplemental Register registration is preferable to no federal trademark registration. See M. BERAN, AN INTRODUCTION TO TRADEMARK PRACTICE 144-45 (1970). Registration of a mark on the Supplemental Register gives the registrant the right to bring suit in a federal court without a showing of diversity of citizenship. Id. at 144. Supplemental Register registration also provides the basis for trademark registration in foreign countries in which the trademark (...truncated)