PPB January 2020

Whether a name has attained secondary meaning depends on many factors, and a non-exclusive list of factors considered by the courts includes: the length and nature of the mark’s use, the nature and extent of advertising and promotion of the mark, the efforts of the business owner to promote a conscious connection between the mark and the business, and the degree of actual recognition by the public that the name designates the business owner’s product or service. Generic Marks Courts generally find that generic marks can never become a protected trademark. Genericmarks essentially inform the consumer precisely what class of product or services is marketed. “Light beer,” for example, has been described as generic, but the acronym “L.A.” used in low-alcohol beer labels has been described as a descriptive mark. In the 2007 opinion of Welding Services Inc. v. Forman , 509 F.3d 1351 (11th Cir. 2007), the court denied protection for a three-letter encircled acronym logo—“WSI”— because the abbreviation had not acquired a meaning distinct from the generic business name with which the acronymwas associated: Welding Services, Inc. Thus, the WSI logo was also deemed generic. A generic name may also be a term by which the product or service itself is commonly known, such as “Kleenex” or “Escalator,” even if the mark was once registered and protected. Generic-ness, if you will, focuses on the use of the term and not necessarily the term itself. As the court in Soweco, Inc. v. Shell Oil Co ., 617 F.2d 1178 (5th Cir. 1980) described: “A wordmay be generic of some things and not of others: ‘ivory’ is generic of elephant tusks but arbitrary as applied to soap.” Consider reviewing you or your client’s trade names, acronyms, symbols and other valuable business- or service-related identifiers. In your review, factor in your enhanced understanding of the protections for the various categories of marks and consider modifying your marketing efforts to enhance any “secondary meaning” that may be associated with descriptive marks. Consider also whether any secondary meaning remains relevant in today’s marketplace. As the court in Texas Pig Stands, Inc. v. Hard Rock Cafe International, Inc ., 951 F.2d 684 (5th Cir. 1992) aptly described, “Whether ‘pig sandwich’ has acquired a secondary meaning greatly depends on whether the question is asked in 1930, shortly after the incipience of Pig Stands, or in 1990.” Cory Halliburton is an attorney with Weycer, Kaplan, Pulaski & Zuber, P.C. (WKPZ), with offices in Dallas, Houston and Arlington, Texas, and he serves as general counsel for PPAI. This article is for general informational purposes only; it is not legal advice and should not be relied upon as such. There may be other federal or state laws that provide a means to protect trade or service marks. Each recipient is encouraged to consult independent legal counsel before making any decisions concerning the matters in this communication. Additional Resources Read more about some of the cases cited in this article: Suggestive marks: • Peaceable Planet v. Ty, Inc. https://h2o.law.harvard.edu/collages/4682 Descriptive marks: • Vision Center v. Opticks Inc. https://openjurist.org/596/ f2d/111/vision-center-v-opticks-inc-g-d • Bristol-Myers Squibb Co. v. McNeil PPC., Inc. https://openjurist. org/973/f2d/1033/bristol-myers-squibb-company-v-mcneil-ppc-inc Secondary meaning: • Tartell v. South Florida Sinus and Allery Center https:// law.justia.com/cases/federal/appellate-courts/ ca11/14-13178/14-13178-2015-06-23.html • Anita M. Flynn v. A.K. Peters, Ltd. https://caselaw. findlaw.com/us-1st-circuit/1033991.html Generic marks: • G. Heileman Brewing Company, Inc. and Miller Brewing Co. v Anheuser-Busch, Inc. https://www.courtlistener.com/opinion/522232/g- heileman-brewing-company-inc-and-miller-brewing-company/ • Welding Services V. Terry Forman https://law.justia.com/cases/federal/ appellate-courts/ca11/08-13287/200813287-2011-02-28.html • Texas Pig Stands, Inc. v. Hard Rock Café Intl. https://law.resource.org/ pub/us/case/reporter/F2/951/951.F2d.684.90-5567.91-5510.html Marks that are fanciful, arbitrary or suggestive are inherently protected; there is generally no need to show secondary meaning in the marketplace. | JANUARY 2020 | 101 THINK