In October 2018, the U.S. Court of Appeals for the Federal Circuit released an opinion in a trademark dispute between Converse and certain shoe competitors over Converse’s Chuck Taylor All Star sneaker, sold since 1932 and registered as a design trademark in 2013. The legal and factual details of this case are complex, but the opinion describes clearly basic concepts of trademark law.
A trademark is a protective intellectual property right to exclusive use of a brand, logo, phrase, shape, color, sound, scent or product appearance or design to distinguish the source or manufacturer of a product in the marketplace. Trademark rights arise from a mark’s use alone, called common-law rights, and they may also become registered with the U.S. Patent and Trademark Office or PTO.
If the PTO approves a trademark registration, the owner may exercise certain rights under federal trademark law that would not otherwise be available like the right to sue for infringement in federal court for damages allowed under federal statute.
A mark must be distinctive, which has a “special meaning” in trademarks,” according to McCarthy on Trademarks and Unfair Competition, that the mark is “used by a substantial number of people as a symbol to identify and distinguish one source” of the associated product. As the Converse case says, to be protectable, a trademark must be “distinctive of a product’s source.”
A mark may be “inherently distinctive,” an automatic, nonrebuttable designation of distinctiveness for certain marks that are intrinsically distinctive. An inherently distinctive mark is “regarded as capable of serving immediately upon use as a legally recognized symbol of origin,” says McCarthy, and may be “arbitrary, suggestive, or fanciful.”
If not inherently distinctive (e.g., a word mark that is merely descriptive), to achieve trademark status the mark must become distinctive by acquiring “secondary meaning.” Converse cites the U.S. Supreme Court as explaining that secondary meaning attaches when consumers believe that the “primary significance of a [mark] is to identify the source of the product rather than the product itself.”
The owner of a valid trademark may claim that a competitor has infringed on the trademark when a competitor has used the mark in association with its own product or service and causes the “likelihood of confusion” among members of the public as to the product’s source. Put another way, the alleged infringer’s use of the mark is likely to confuse the public because of the pre-existing, protected product or service.
We will continue to discuss in this space some of the basic concepts in trademark and other areas of intellectual property law.