USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks
In the US, “fame” is a high bar. Famous marks used in the US which meet the high bar can be protected from dilution (15 USC § 1125(c)(2)). 2.2 Essential Elements of Trade Mark Protection To achieve trade mark protection a term must be distinctive and in use. Distinctiveness Distinctiveness exists on a spectrum: • Generic: Generic terms are not protectable. Generics describe the category or genus of a product. • Descriptive: Terms that describe the form, function, features or characteristics of the product cannot be protected without proof of “acquired distinctiveness”. • Suggestive: Suggestive terms can be protect - ed outright. These terms do not “describe” but rather hint at aspects of the goods. • Arbitrary: Terms unrelated to the product are arbitrary and can be protected outright. • Fanciful: These terms are neologisms and are protectable. For a term to be found to have acquired distinc- tiveness , consumers must associate the term as indicating source. This may be shown in a number of ways such as length of use, sales information, advertising expenditures, surveys, press, etc. The more descriptive the term is, the more evidence is required. Use To have a valid trade mark, there must be bona fide use on or in connection with goods or ser - vices. For a registration, that use must be “in commerce”. Use in commerce generally means use that can be regulated by the US Congress such as selling or transporting goods between
The US protects any designation of source including words, logos, trade dress, collective and certification marks, and “nontraditional marks” such as scents, colours, sound, motion and others. Anything which acts as a source identifier may be protectable provided it is non- functional. Industrial designs are not protected under US trade mark law. Trade mark affords protection in some circumstances to trade dress, including product design and packaging. Design patents protect the ornamental appearance of an article. Surnames are not protectable as trade marks unless they have acquired distinctiveness. Living persons must give permission for their name to be registered as a trade mark. Geographically descriptive trade marks cannot be protected unless (1) the mark has acquired distinctiveness and (2) the mark is not geograph - ically deceptively misdescriptive. The US has several marks which are specially protected by statute. These include, but are not limited to, the OLYMPIC, BOY SCOUTS and GIRL SCOUTS, and LITTLE LEAGUE marks, among others. Many of these statutes include US agency and military marks. The law regarding protection of famous marks not used or registered in the US is unsettled. Some courts have held the famous marks doc - trine does not apply in the US ( ITC v Punchgini , 482 F.3d 135, 142 (2d Cir. 2007)), whereas oth - ers have recognised some applicability ( Grupo Gigante v Dallo , 391 F.3d 1088 (9th Cir. 2004)).
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