PPB January 2020

But, when is a mark or acronymprotected fromuse by others? This article explores the trademark and service mark protection statute called the LanhamAct, 15 U.S.C. § 1125. Briefly, the LanhamAct, which was enacted by the U.S. Congress in 1946, prohibits the use of protectedmarks (or similar versions thereof) in a way that is likely to confuse consumers. Someone who believes that a violation of the LanhamAct (15 U.S.C. § 1125(a)) exists must show (1) that the person’s business or service name, acronymor logo is entitled to protection and (2) that an alleged infringer’s name, acronymor logo is identical to those marks or so similar that they are likely to confuse or deceive consumers. You are likely thinking, “OMG! Are our service and product acronyms and names, and those of our clients, protected?” That can be a tricky question to answer, and the devil is in the details. Moreover, the analysis may vary, depending on the judicial circuit in which the issue is presented. As a general rule, legal protection is only available to “distinctive” marks. Distinctive marks are marks that serve the purpose of identifying the source of the goods or services, which can occur by word usage or market reputation. “Distinction” of a mark is not always easy to determine and, inmany cases, the subtleties in this area of law could result in COB (closure of business) or SOL (sorry, out of luck). In the case of Welding Services Inc. v. Forman , 509 F.3d 1351 (11th Cir. 2007), the court described how or when a mark may be “distinct” as follows: “Some marks are inherently distinctive; some marks, though not inherently distinctive, acquire distinctiveness by becoming associated in the minds of the public with the products or services offered by the proprietor of the mark; and some marks can never become distinctive.” To determine “distinctiveness,” courts generally consider four categories of marks: (1) fanciful or arbitrary, (2) suggestive, (3) descriptive and (4) generic. Arbitrary Or Fanciful Marks An arbitrary or fanciful mark bears no logical relationship to the product or service it is used to represent. Examples include Exxon, Kodak and Xerox, each being made-up words crafted to represent a product or service. Suggestive Marks A suggestive mark refers to some characteristic of the goods but requires the consumer to take an “imaginational leap” to get from the mark to the product or service. In the case of Peaceable Planet, Inc. v. Ty, Inc ., 362 F.3d 986 (7th Cir. 2004), a toy camel product named “Niles” was found to be a protected suggestive mark because it required an imaginational leap from the name to the Nile River. As the “Niles court” noted in its opinion, “‘Niles’ may evoke but it certainly does not describe a camel, any more than ‘Pluto’ describes a dog, ‘Bambi’ a fawn, ‘Garfield’ a cat or ‘Charlotte’ a spider.” Descriptive Marks A descriptive mark identifies a characteristic or quality of the service or product. Examples of descriptive marks are “Vision Center” for eye-care services and “All Bran” for a food product. In the 1992 case of Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc. , 973 F.2d 1033 (2d Cir. 1992), the court adjudicated whether the use of “PM” in the name of a nighttime headache medication was a protectable mark, and the court found that the “PM” was descriptive and not suggestive or generic. Marks that are fanciful, arbitrary or suggestive are inherently protected; there is generally no need to show secondary meaning in the marketplace. On the other hand, descriptive marks are protected only if there is a secondary meaning to the mark or usage. As a general rule, legal protection is only available to “distinctive” marks. Distinctive marks are marks that serve the purpose of identifying the source of the goods or services, which can occur by word usage ormarket reputation. | JANUARY 2020 | 99 THINK