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Trademarks 101
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Arbitrary Mark
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.
Trademark
A recognizable sign, design, or expression which identifies products or services of a particular source from those of others.
Fanciful Mark
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.
Trademark Infringement
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.
The Lanham Act
The primary federal statute that governs trademarks, service marks, and unfair competition.
Qualitex Co. v. Jacobson Products Co.
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.
Collective Mark
A trademark or service mark used by members of a cooperative, association, or other group to indicate membership.
Dilution
Occurs when the use of a mark or trade name lessens the unique significance of a famous mark.
Descriptive Mark
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.
Service Mark
Similar to a trademark, but identifies and distinguishes the source of a service rather than a product.
Tarnishment
A form of trademark dilution that occurs when a famous mark is linked to inferior or offensive goods or services, damaging its reputation.
Likelihood of Confusion
A standard used in trademark law to determine whether consumers would be likely to confuse one company's goods or services with another's.
Trade Dress
Concerns the visual appearance of a product or its packaging that signify the source of the product to consumers.
McDonald's Corp. v. McSweet, LLC
A case regarding the use of the prefix 'Mc' in branding, reinforcing McDonald's rights to the 'Mc' family of trademarks.
Blurring
A type of trademark dilution by which the power of the identifier is weakened through its identification with dissimilar goods or services.
Secondary Meaning
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.
Certification Mark
Indicates that goods or services meet a certain standard of quality or other criteria set by the owner of the mark.
Mattel, Inc. v. MCA Records, Inc.
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.
Genericide
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.
Kellogg Co. v. National Biscuit Co.
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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