A Look at American Trademark Law

SMU Law Review Volume 29 | Issue 2 Article 3 1975 A Look at American Trademark Law James M. Treece David Stephenson Follow this and additional works at: https://scholar.smu.edu/smulr Recommended Citation James M. Treece, et al., A Look at American Trademark Law, 29 Sw L.J. 547 (1975) https://scholar.smu.edu/smulr/vol29/iss2/3 This Article is brought to you for free and open access by the Law Journals at SMU Scholar. It has been accepted for inclusion in SMU Law Review by an authorized administrator of SMU Scholar. For more information, please visit http://digitalrepository.smu.edu. A LOOK AT AMERICAN TRADEMARK LAW by James M. Treece* and David Stephenson** I. THE LAW OF TRADEMARKS-A BRIEF OVERVIEW IN centuries past, merchants and guildsmen marked their wares-mer- chants to help illiterate material handlers recognize shipments and to support claims of ownership to salvaged goods,' guildsmen to trace the source of goods produced in violation of guild rules. 2 Buyers learned to recognize these symbols of source and to use them as a basis for purchasing. 3 Eventually, judges recognized the potential for fraud if tradesmen not responsible for a mark's notoriety could nevertheless use it,4 and so there evolved a set of rules securing to owners of trademarks a right, in certain circumstances, to exclude others from using the same or a similar symbol." This common law of trademarks and tradenames eventually took root in each of the states of the United States, where it still survives, 6 underlying and interrelating with the trademark acts of fifty states7 and the Federal Trade-mark Act." The common law and the various statutes recognize that not all words or designs serve with equal facility as indicators of source. Some marks present no conflict with other values if registered or protected as trade symbols; others constitute such common property as to make unthinkable their exclusive appropriation by a single firm, while the vast majority of words and designs falls somewhere in between. In general, trade symbol laws refuse to protect through registration as trademarks generic words and functional features of products or packages. 9 The same system, however, routinely protects and registers words and designs whose use in connection with particular products and services evidences an apparently arbitrary or fanciful choice of words or designs on the part of the user. 10 Words and designs which are neither generic nor fanciful but which in some way describe a product or service or one of its attributes receive a relatively considered appraisal. Neither courts nor administrators automatically accept or reject claims that such symbols have become one firm's © Copyright 1975 by James M. Treece. All rights reserved. B.S., M.A., J.D., University of Illinois. Professor of Law, University of Texas. B.A., J.D., University of Texas. Assistant United States Attorney, Western District of Texas. 1. F. SCHECHTER, THE HISTORICAL FOUNDATIONS OF THE LAW RELATING TO TRADEMARKS 47-63 (1925). 2. Id. 3. See Reporter's Note, Southern v. How, 79 Eng. Rep. 1243 (K.B. 1617). 4. See, e.g., Millington v. Fox, 40 Eng. Rep. 956 (Ch. 1838). 5. See, e.g., M'Andrew v. Bassett, 46 Eng. Rep. 965 (Ch. 1864). 6. See Treece, Developments in the Law of Trademarks and Service Marks-Contributions of the Common Law, the Federal Act, State Statutes and the Restatement of Torts, 58 CALIF. L. REV. 885-94 (1970). 7. See State Trademark Registration, 57 TRADEMARK REP. 886 (1967). 8. 15 U.S.C. §§ 1051-1127 (1970). 9. See, e.g., Hollaender Mfg. Co., 511 F.2d 1186 (C.C.P.A. 1975). 10. See note 116 inIra and accompanying text. * ** SOUTHWESTERN LAW JOURNAL [Vol. 29 exclusive property; rather they ask for and evaluate evidence about the use and reception given such symbols in the market place by consumers and rival firms. Descriptive terms, which in addition point to source, generally receive judicial protection or administrative registration," while descriptive terms not yet regarded as source symbols generally receive neither protection as trade 2 symbols nor registration.1 This Article is primarily concerned with instances where the user of a trade symbol seeks to register or to protect through the judicial process a trade symbol that has both attributes of genericness-that is, it appears to fall into that category of terms which should not become the exclusive property of a single firm-and attributes of a source symbol-one which falls into that category of notorious terms that rivals should not appropriate freely. In exploring the reception given these dyadic symbols, the Article demonstrates that the decision to register trade symbols, especially federally, rests on similar but not identical criteria as the decision to afford them judicial protection as trade symbols under the common law. This means that a symbol not federally registrable because it is primarily descriptive may nevertheless receive trademark protection at common law. In addition, investigation of the common law criteria for dealing with doubtful trade symbols, symbols both highly descriptive and demonstrably regarded as source symbols, leads in turn to the conclusion that a party seeking protection for a generic term not protectable at common law may nevertheless preclude its use by particular defendants whose conduct is calculated to confuse consumers and to exploit unfairly the goodwill developed by the plaintiff. This means that words and designs nominally free because they are ineligible for registration or protection as Irademarks nevertheless may be protected against uses which run counter to some of 'the traditional tort principles that surround and interrelate with the law of trade symbols. II. A. FEDERAL REGISTRATION Descriptive Terms and the Doctrine of De Facto Secondary Meaning Pursuant to the Federal Trade-mark Act of 1946,13 popularly known as the Lanham Act, owners of trademarks 1 4 and service marks15 used in commerce may register them on the principal register. Along with the usual words, phrases, terms and symbols, applicants may also seek to register as a trademark a product's configuration, trade dress or "get up," or that of its container or package.' 6 Although a strict reading of the Lanham Act suggests that registration may be refused solely on the basis of certain enumerated grounds,' 7 including that of a mark's being "merely descriptive" of the particular goods or services, 18 the Patent Office exercises great care in issuing 11. See, e.g., 15 U.S.C. § 1052 (1970). 12. See, e.g., id. § 1052(f). 13. Id. § 1051-1127. 14. Id. § 1051. 15. Id. § 1053. 16. Swift & Co., 223 F.2d 950 (C.C.P.A. 1955). 17. See 15 U.S.C. § 1052 (1970). 18. Id. § 1052(e). It must be noted, however, that even a descriptive mark quali- 1975] TRADEMARK LAW certificates of registration and has effectively expanded the statutory bases for refusal to register to include the mark's being the "commonly descriptive name" 19 of the product or s (...truncated)