What is a Trademark?
The 1946 Lanham Act defines a trademark under the term “trade-mark.” A trademark includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.
Today, a mark is considered a trademark in many jurisdictions if it is a recognizable word, design, symbol, sound, or expression that identifies products or services of a particular source from those of others. A trademark may appear as a label, a name, a signature, a group of words, one or more letters, one or more numbers, the shape of goods, a packaging design, a combination of colors, a smell, a sound or jingle, or any combination thereof which is capable of distinguishing goods and services of one business from those of others. It must be capable of graphical representation and must be applied to goods or services for which it is registered.
Trademarks used to identify services are usually called service marks.
A trademark may be shown with a trademark symbol, such as ™ , ℠ , or ®.
A trademark may be owned by an individual, a corporation, or any legal entity. A trademark may be displayed on a package, a label, a hangtag, a voucher, or on the product itself. For the sake of corporate identity, trademarks are often displayed on company buildings.
Types of Trademarks in the USA:
There are four types of trademarks in the USA:
- Trademarks registered on the Federal USPTO Principal Register,
- Trademarks registered on the Federal USPTO Supplemental Register,
- Trademarks registered in one or more state trademark registers, and
- Unregistered, common-law trademarks.
15 U.S. Code Chapter 22 – Federal Trademarks
Lanham Act, section 2: 15 U.S. Code § 1052 – Trademarks registrable on principal register; concurrent registration
(1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them,
(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title,
(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,
(4) is primarily merely a surname, or
(5) comprises any matter that, as a whole, is functional.
Can You Trademark a Mark that is Functional?
No, functional trademarks can not be registered because of section 2(e)(5) of the Lanham Act. To determine whether a mark is functional, an examiner considers of one or more of the following factors, commonly known as the “Morton-Norwich factors”:
- (1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
- (2) advertising by the applicant that touts the utilitarian advantages of the design;
- (3) facts pertaining to the availability of alternative designs; and
- (4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
In re Becton, Dickinson & Co., 675 F.3d 1368, 1374-75, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341, 213 USPQ 9, 15-16 (C.C.P.A. 1982)
It is not necessary to consider all the Morton-Norwich factors in every case. The Supreme Court held that “[w]here the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001). see also In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1434 (TTAB 2016) (finding that the first two Morton-Norwich factors established that applicant’s applied-for mark is functional, before considering the remaining factors). Moreover, there is no requirement that all four of the Morton-Norwich factors weigh in favor of functionality to support a refusal. See Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) (“once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs”); In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042 (TTAB 2013) (finding the flavor peppermint functional for nitroglycerin lingual spray based on evidence that peppermint oil, which imparts a flavor of peppermint, can improve the effectiveness of sublingual nitroglycerin spray); In re Udor U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) (affirming the functionality refusal of “a round disk head on a sprayer nozzle” where the third and fourth factors showed that applicant’s competitors manufactured and marketed spray nozzles with similar features, the shape was preferred in the industry, and it appeared efficient, economical, and advantageous, even though applicant’s utility patent and advertising did not weigh in favor of functionality); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (holding orange flavor for pharmaceuticals to be functional based on applicant’s touting of the utilitarian advantages of the flavor and the lack of evidence of acceptable alternatives, even though the mark was not the subject of a patent or patent application and there was no evidence that the flavor affected the cost of the product); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (finding that since there was no utility patent, and no evidence that applicant’s guitar configuration resulted from a simpler or cheaper method of manufacture, these factors did not weigh in Board’s decision).
Can You Trademark a Motion Image?
It is rare to find a valid trademark of a motion image. An applicant may be able to register a series of motion images as a trademark if they are distinctive and not functional.
In 2016, the TTAB determined that an applicant’s “motion mark” of a gripping, in-and-out movement of the jaws of a hand tool was functional under Section 2(e)(5) and therefore it was not registrable. In re Loggerhead Tools, LLC, 119 USPQ2d 1429 (TTAB 2016) [precedential].
The applicant advertised the utilitarian advantages of the tool. The applicant also had both a utility patent and a design patent for the tool. Even though Loggerhead’s utility patent for an “Adjustable Gripping Tool” and its design patent for a “Hydrant Tool,” did not cover the motion described in the trademark application, there was a “strong conclusion” that the utility patent’s disclosure of the utilitarian advantages of the proposed mark indicated functionality.