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Trademarks 101

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Arbitrary Mark

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A mark that involves words that exist in common language but do not have an inherent connection to the goods/services they represent, making them inherently distinctive.

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Trademark

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A recognizable sign, design, or expression which identifies products or services of a particular source from those of others.

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Fanciful Mark

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A trademark that is a made-up term invented for the sole purpose of functioning as a trademark and has no other meaning than acting as a mark.

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Trademark Infringement

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Unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

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The Lanham Act

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The primary federal statute that governs trademarks, service marks, and unfair competition.

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Qualitex Co. v. Jacobson Products Co.

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This case allowed for the functionality doctrine to be applied, indicating that colors alone can be trademarked if they have acquired secondary meaning and do not serve a functional purpose.

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Collective Mark

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A trademark or service mark used by members of a cooperative, association, or other group to indicate membership.

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Dilution

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Occurs when the use of a mark or trade name lessens the unique significance of a famous mark.

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Descriptive Mark

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A type of trademark that directly describes a characteristic or quality of the good or service it marks, such as its color, odor, function, dimensions, or ingredients.

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Service Mark

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Similar to a trademark, but identifies and distinguishes the source of a service rather than a product.

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Tarnishment

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A form of trademark dilution that occurs when a famous mark is linked to inferior or offensive goods or services, damaging its reputation.

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Likelihood of Confusion

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A standard used in trademark law to determine whether consumers would be likely to confuse one company's goods or services with another's.

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Trade Dress

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Concerns the visual appearance of a product or its packaging that signify the source of the product to consumers.

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McDonald's Corp. v. McSweet, LLC

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A case regarding the use of the prefix 'Mc' in branding, reinforcing McDonald's rights to the 'Mc' family of trademarks.

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Blurring

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A type of trademark dilution by which the power of the identifier is weakened through its identification with dissimilar goods or services.

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Secondary Meaning

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Occurs when a descriptive mark that is not inherently distinctive acquires distinctiveness through long-term use, and is identified with a particular source by consumers.

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Certification Mark

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Indicates that goods or services meet a certain standard of quality or other criteria set by the owner of the mark.

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Mattel, Inc. v. MCA Records, Inc.

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A case related to the use of the Barbie trademark in music, which discussed trademark use in artistic works and the balance with First Amendment rights.

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Genericide

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The process by which a trademark owner loses trademark rights because the brand name becomes widely used to refer to a general class of product or service.

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Kellogg Co. v. National Biscuit Co.

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A notable trademark case in which the court held that the shape of a cereal was functional, and therefore, could not be trademarked.

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