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Trademarks: What constitutes a mark?

    While what is commonly thought of as trademarks (e.g. symbols, names and logos) are still likely to make up the lion's share of marks, the canonical categories have now been joined by numerous other artifacts such as shapes, sounds, smells, moving images, taste and more. Courts have been willing to accept other artifacts as long as they fulfill the basic trademark function (i.e. the identification of the source & origin of goods and services). In Qualitex v. Jacobson Products (USSC 1995) the Court upheld the use of a "color" as a trademark, stating: "We conclude that, sometimes, a color will meet ordinary trademark requirements." The Court then further stated that if the requirements are met: "no special legal rule prevents color alone from serving as a trademark."  This does not imply that all words and symbols (etc.) can be trademarked. Clearly, too liberal a standard would allow ownership of the "basic building blocks of language itself" and this is neither accepted nor encouraged by the doctrine.

    The extent to which any given mark is deserving of protection usually depends on what is referred to as the "strength of the mark." The strength lies along a classification continuum as follows: (1) arbitrary (and fanciful) marks; (2) suggestive marks; (3) descriptive marks; and (4) generic marks. Arbitrary marks qualify for the most protection (if other requirements are met) and generic marks qualify for no protection (descriptive marks also qualify for no protection unless the mark has acquired "secondary meaning" (see What are the requirements?). Each node of the continuum is a legal term of art defined by both statutory authority and case law.

    In addition, there are other mark categories that a business person should be aware of, such as: service marks, which describe services as opposed to products/goods; trade names, which are marks that identify a business rather than a good or service; a collective mark, which may be held by a group for use by its members; and a certification mark, which provides a kind of "seal of approval." Finally, there are the concepts of trade dress and product configuration. Trade dress refers to the distinctive packaging or "look and feel" of a seller's offering while product configuration usually refers to the distinctive design and shape of a product's container.

    On the Internet, trademarks are used on websites, white papers, brochures and other digital artifacts. They are also registered as domain names, used to link to other sites, and incorporated in meta tags. Because trademarks can readily be used in these and other electronic embodiments, they can also be readily misappropriated. Like copyright, the trademark doctrine has not been re-written for the age of global communications, but courts have had to apply it in a unique and often unchartered way.


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