b. Trademark requirements

According to the Harvard Law Overview of Trademark Law:

"In order to serve as a trademark, a mark must be distinctive -- that is, it must be capable of identifying the source of a particular good. In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within."[1]

Trademarks may become generic over time, which is referred to as genericity. In Kellogg Co. v. National Biscuit Co. (1938) 305 U.S. 111, 117-118, Kellogg's predecessor, Natural Food Company, had used the generic term "shredded wheat" to describe a "biscuit in pillow-shaped form" for several years before attempting to register the trademark "Shredded Whole Wheat." The company's patents on the machine that manufactured the biscuit, and which included the term "shredded wheat" in the patent description, had expired years earlier. The Court ruled that the term had therefore "passed to the public" and could no longer be trademarked.

Trademarks may also lose their intended effect, a process that is called dilution: "[A] dilution claim can be brought only if the mark is 'famous.' In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered. 15 U.S.C. § 1125(c).[2] Kodak, Exxon, and Xerox are all examples of famous marks. Under state law, a mark need not be famous in order to give rise to a dilution claim. Instead, dilution is available if: (1) the mark has 'selling power' or, in other words, a distinctive quality; and (2) the two marks are substantially similar. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc. (1989) 875 F.2d 1026.

"Once the prerequisites for a dilution claim are satisfied, the owner of a mark can bring an action against any use of that mark that dilutes the distinctive quality of that mark, either through 'blurring' or 'tarnishment' of that mark; unlike an infringement claim, likelihood of confusion is not necessary. Blurring occurs when the power of the mark is weakened through its identification with dissimilar goods. For example, Kodak brand bicycles or Xerox brand cigarettes. Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark. Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. So, for example, in a recent case, Toys R Us successfully brought a tarnishment claim against adultsrus.com, a pornographic web-site. Toys "R" Us v. Akkaoui (1996) 40 U.S.P.Q.2d (BNA) 1836."[3]


c. Lanham Act: 15 U.S.C. §§ 1051-1053 and 15 U.S.C. § 1125(a) (a.k.a. § 43(a))

[1] http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm
[2] http://www.law.cornell.edu/uscode/text/15/1125
[3] Ibid.