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Bath And Body v Luzier, 6th Cir, Court of Appeals

"The existence and extent of trademark protection for a particular term depends on that term's inherent distinctiveness. Courts have identified four general categories of terms: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful." Blinded Veterans Ass'n. v. Blinded Am. Veterans Found., 872 F.2d 1035, 1039 (D.C. Cir. 1989). "A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods. It cannot become a trademark under any circumstances." Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984). "A merely descriptive term specifically describes a characteristic or ingredient of an article. It can, by acquiring a secondary meaning, i.e., becoming `distinctive of the applicant's goods' . . ., become a valid trademark." Id.

Generic Trademarks

Generic Trademarks are the weakest trademarks and will often fail to be approved. You cannot trademark "Bicycle, Inc." as the name for a bicycle manufacturer. To get your trademark approved, you should aim for a more distinctive name.

Words such as "aspirin" see Bayer Co. v. United Drug Co. 272 F. 505 (S.D.N.Y. 1921) (holding that the "aspirin" mark had entered the public domain), "thermos" see King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963) (holding that "thermos" is a generic term), "yo-yo" see Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655 (7th Cir.1965) (an action for the alleged infringement of Yo-Yo's trademark), "shuttle" see Eastern Air Lines v. New York Air Lines, 559 F. Supp. 1270 (S.D.N.Y. 1983) (holding that "air-shuttle" is a generic term), "toll house" see Nestle Co. v. Chester's Mkt., Inc., 571 F. Supp. 763 (D. Conn. 1983), remanded and vacated on other grounds, 756 F.2d 280 (2d Cir. 1985) (TOLL HOUSE for cookies found to be generic despite more than $1 billion in sales over a ten year period and $140 million in advertising), "opry" see WSM, Inc. v. Hilton, 724 F.2d 1320 (8th Cir. 1984) (OPRY found to be generic despite use for over fifty years), "lite" See Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5 (1st Cir. 1981) (LITE held to be generic for low-alcohol beer despite very high sales and advertising levels), "escalator," "cellophane" see DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75, 76-77 (2d Cir. 1936) (holding that DuPont's advertising had used cellophane as a generic term, descriptive of the product, not of its source) and "brassiere" started life as trademarks, but eventually lost their significance as source identifiers and became the popular names of the product rather than the name of the trademark owner's brand, and when that happened continued enforcement of the trademark would simply have undermined competition with the brand by making it difficult for competitors to indicate that they were selling the same product-by rendering them in effect speechless.

With many well-known trademarks, such as Jell-O, Scotch Tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue).

Bath And Body v Luzier, 6th Cir, Court of Appeals
Whether a name is generic is a question of fact. J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 12.02[7][b] (3d ed. 1992). If a trademark has been registered, there is a presumption that term is not generic and the defendant must overcome the presumption. Id. If a trademark is not federally registered, once the defendant raises genericness as a defense, plaintiff must prove lack of genericness. Id.

The appropriate "test for genericness is whether the public perceives the term primarily as the designation of the article." Blinded Veterans, 872 F.2d at 1041.

The Lanham Act dictates cancellation of a registered mark if at any time it "becomes the common descriptive name of an article or substance." 15 U.S.C.A. § 1064(c)

Descriptive Trademarks

Descriptive Trademarks directly describe a characteristic or quality of the underlying product. For example, "Holiday Inn" is the trademark of a hotel company catering to vacationers. "Holiday Inn," in itself, could not be a trademark. However, since "Holiday Inn" is recognizable from years of advertisement and use, it is now a legally strong trademark.

Zatarains, Inc. v. Oak Grove Smokehouse, 698 F2d 786 (5th Cir, 1988)
A suitable starting place is the dictionary, for [**18] "the dictionary definition of the word is an appropriate and relevant indication 'of the ordinary significance and meaning of words' to the public." American Heritage, 494 F.2d at 11 n.5; see also Vision Center, 596 F.2d at 116. Webster's Third New International Dictionary 858 (1966) lists the following definitions for the term "fish fry": " 1. a picnic at which fish are caught, fried, and eaten; .... 2. fried fish." Thus, the basic dictionary definitions of the term refer to the preparation and consumption of fried fish. This is at least preliminary evidence that the term "Fish-Fri" is descriptive of Zatarain's product in the sense that the words naturally direct attention to the purpose or function of the product.

The "imagination test" is a second standard used by the courts to identify descriptive terms. This test seeks to measure the relationship between the actual words of the mark and the product to which they are applied. If a term "requires imagination, thought and perception to reach a conclusion as to the nature of goods," Stix Products, 295 F. Supp. at 488, it is considered a suggestive term. Alternatively, a term is descriptive if standing alone it [**19] conveys information as to the characteristics of the product. In this case, mere observation compels the conclusion that a product branded "Fish-Fri" is a prepackaged coating or batter mix applied to fish prior to cooking. The connection between this merchandise and its identifying terminology is so close and direct that even a consumer unfamiliar with the product would doubtless have an idea of its purpose or function. [*793] It simply does not require an exercise of the imagination to deduce that "Fish-Fri" is used to fry fish. See Vision Center, 596 F.2d at 116-17; Stix Products, 295 F. Supp. at 487-88. Accordingly, the term "Fish-Fri" must be considered descriptive when examined under the "imagination test."

A third test used by courts and commentators to classify descriptive marks is "whether competitors would be likely to need the terms used in the trademark in describing their products." Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379 (7th Cir.1976). A descriptive term generally relates so closely and directly to a product or service that other merchants marketing similar goods would find the term useful in identifying their own goods. Vision Center [**20] , 596 F.2d at 116-17; Stix Products, 295 F. Supp. at 488. Common sense indicates that in this case merchants other than Zatarain's might find the term "fish fry" useful in describing their own particular batter mixes. While Zatarain's has argued strenuously that Visko's and Oak Grove could have chosen from dozens of other possible terms in naming their coating mix, we find this position to be without merit. As this court has held, the fact that a term is not the only or even the most common name for a product is not determinative, for there is no legal foundation that a product can be described in only one fashion. i, 596 F.2d at 117 n.17. There are many edible fish in the sea, and as many ways to prepare them as there are varieties to be prepared. Even piscatorial gastronomes would agree, however, that frying is a form of preparation accepted virtually around the world, at restaurants starred and unstarred. The paucity of synonyms for the words "fish" and "fry" suggests that a merchant whose batter mix is specially spiced for frying fish is likely to find "fish fry" a useful term for describing his product.

A final barometer of the descriptiveness of a particular [**21] term examines the extent to which a term actually has been used by others marketing a similar service or product. Vision Center, 596 F.2d at 117; Shoe Corp. of America v. Juvenile Shoe Corp., 46 C.C.P.A. 868, 266 F.2d 793, 796 (C.C.P.A.1959). This final test is closely related to the question whether competitors are likely to find a mark useful in describing their products. As noted above, a number of companies other than Zatarain's have chosen the word combination "fish fry" to identify their batter mixes. Arnaud's product, "Oyster Shrimp and Fish Fry," has been in competition with Zatarain's "Fish-Fri" for some ten to twenty years. When companies from A to Z, from Arnaud to Zatarain's, select the same term to describe their similar products, the term in question is most likely a descriptive one.

Suggestive Trademarks

Suggestive Trademarks indirectly describe a characteristic of the underlying product/service. For example, the word "Coppertone" is suggestive of suntan lotion, but this does not directly describe the product. Like arbitrary or fanciful marks, suggestive marks are distinctive and will be given a high degree of protection.

Suggestive marks are considered inherently distinctive, since there are plenty of alternatives to any given suggestive mark.9 For example, Niles for a stuffed camel may bring to mind the Nile river or the personal name Niles, but it is suggestive—not descriptive. Suggestive marks are protected without proof of secondary meaning.

Arbitary or Fanciful Trademarks

Arbitrary or Fanciful means that it has no relationship to the underlying product. For example, the words "Lexus," "Xerox," and "Exxon" have no direct relationship to their underlying products (respectively, automobiles, copying, or gasoline). Arbitrary marks are English language terms that bear little or no relationship to the product, e.g. Apple for computers. Fanciful marks are coined, made up words, e.g. Kodak for cameras. Arbitrary and fanciful marks are the strongest marks.

Rock and Roll Hall of Fame and Museum v. Gentile Productions, 134 F.3d 749 (Sixth Cir, 1998)
The district court found that the Museum's building design is fanciful, that the Museum has used its building design as a trademark, and that "the public has come to recognize [the Museum's building design] trademark[] as being connected with or sold by the Museum." Rock and Roll Hall of Fame, 934 F. Supp. at 871. There are several problems with these critical findings. First, we find absolutely no evidence in the record which documents or demonstrates public recognition of the Museum's building design as a trademark. Such evidence might be pivotal in this case, but it is lacking. Indeed, we are at a loss to understand the district court's basis for this significant finding of fact.

Second, although no one could doubt that the Museum's building design is fanciful, it is less clear that a picture or a drawing of the Museum is fanciful in a trademark sense. Fanciful marks are usually understood as "totally new and unique combination[s] of letters or symbols" that are "invented or selected for the sole purpose of functioning as a trademark." 1 J. McCarthy § 11:5. Although the plaintiffs "invented" the Museum, the Museum's existence as a landmark in downtown Cleveland undermines its "fancifulness" as a trademark. A picture or a drawing of the Museum is not fanciful in the same way that a word like Exxon is when it is coined as a service mark. Such a word is distinctive as a mark because it readily appears to a consumer to have no other purpose. In contrast, a picture of the Museum on a product might be more readily perceived as ornamentation than as an identifier of source.

A Person's Likeness

ETW v Jirej Publishing, 6th Cir, Court of Appeals
We hold that, as a general rule, a person's image or likeness cannot function as a trademark. Our conclusion is supported by the decisions of other courts which have addressed this issue. In Pirone v. MacMillan, Inc., 894 F.2d 579 (2nd Cir. 1990), the Second Circuit rejected a trademark claim asserted by the daughters of baseball legend Babe Ruth. The plaintiffs objected to the use of Ruth's likeness in three photographs which appeared in a calendar published by the defendant. The court rejected their claim, holding that "a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently 'distinctive' in the trademark sense of tending to indicate origin." Id. at 583. The court noted that Ruth "was one of the most photographed men of his generation, a larger than life hero to millions and an historical figure[.]" Id. The Second Circuit Court concluded that a consumer could not reasonably believe that Ruth sponsored the calendar:

[A]n ordinarily prudent purchaser would have no difficulty discerning that these photos are merely the subject matter of the calendar and do not in any way indicate sponsorship. No reasonable jury could find a likelihood of confusion.

    Id. at 585. The court observed that "[u]nder some circumstances, a photograph of a person may be a valid trademark--if, for example, a particular photograph was consistently used on specific goods." Id. at 583. The court rejected plaintiffs' assertion of trademark rights in every photograph of Ruth.

    In Estate of Presley v. Russen, 513 F. Supp. 1339, 1363-1364 (D.N.J. 1981), the court rejected a claim by the estate of Elvis Presley that his image and likeness was a valid mark. The court did find, however, as suggested by the Second Circuit in Pirone, that one particular image of Presley had been consistently used in the advertising and sale of Elvis Presley entertainment services to identify those services and that the image could likely be found to function as a mark.

    In Rock and Roll Hall of Fame, the plaintiff asserted trademark rights in the design of the building which houses the Rock and Roll Hall of Fame in Cleveland, Ohio, and claimed that defendant's poster featuring a photograph of the museum against a colorful sunset was a violation of its trademark rights. 134 F.3d at 751. This court, with one judge dissenting, reversed the judgment of the district court which granted plaintiff's request for a preliminary injunction. After reviewing the evidence, the majority concluded:

In reviewing the Museum's disparate uses of several different perspectives of its building design, we cannot conclude that they create a consistent and distinct commercial impression as an indicator of a single source of origin or sponsorship. To be more specific, we cannot conclude on this record that it is likely that the Museum has established a valid trademark in every photograph which, like Gentile's, prominently displays the front of the Museum's building.

    Id. at 755. In reaching this conclusion, this court approved and followed Pirone and Estate of Presley.
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