Sometimes I think we’re getting trademarks all wrong. We focus a lot of attention on squeaky wheels: who’s suing whom, how large damages awards are, who’s behaving like a bully. What we don’t seem to spend much time talking about is distinctiveness: what it is, how it changes, how cool it is, how to achieve it. Yet, as I read it, distinctiveness is what the Lanham Act is all about. As the convoluted language of § 2 tells us: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless. . . .” Based on the language and structure of the statute, it would appear that the first thing the Lanham Act wants you to think about with regard to trademarks is distinctiveness.
If trademarks were intellectual property, the language of real property (e.g., fences, stealing, etc.) might prove helpful in understanding them. But trademarks aren’t intellectual property, at least not in any meaningful sense. The Lanham Act isn’t designed to promote the progress of science and the useful arts, or to secure exclusive rights to writings and discoveries. The aim of the Lanham Act, as I see it, is to encourage people to create more distinctive trademarks than they might otherwise so as to be eligible for or to avail themselves of the substantial benefits of federal registration. The Lanham Act’s largesse isn’t a recognition of originality (as with copyrights), usefulness (utility patents), ornamentality (design patents), or ownership (real property). The benefits of federal registration flow directly and solely from distinctiveness.
We like to say that trademark rights arise from use, but this seems to miss the point entirely; you can use something as a trademark all you want, but until people see it, notice it, and make the cognitive connection between the symbol (your mark), the stuff (your goods and services), and a particular source (which is to say, until people recognize your mark as a trademark), it’s not clear what (if any) trademark rights you have. Distinctiveness, then, appears to have (at least) two separate aspects. The first, which we might call absolute distinctiveness, is the ability of something to be sufficiently clear, defined, and noticeable in and of itself. The second, which we could call relative distinctiveness, is the ability of something sufficiently clear, defined, and noticeable to differentiate itself, to set itself apart, from other somewhat similar things. The challenge, for merchant and suitor alike, is to craft a strategy for capturing attention that is both noticeable (exhibiting absolute distinctiveness) and different from what others in the field are doing (thus exhibiting relative distinctiveness).
With this in mind, let’s spend a little time looking at a number of food-related trademarks registered by the U.S. Patent and Trademark Office (USPTO) and thinking about how they exemplify various approaches to getting noticed.
One way to get people’s attention is to start with something that by itself wouldn’t be particularly notable and to exaggerate it. Such is the case with the Dairy Queen crossed-over curl top. As typically dispensed, soft-serve ice cream naturally comes to a point on top. Gravity being not just a good idea but the law, the pointed top of soft-serve ice cream is usually pulled downward to some extent. What is not usual, what takes extra effort, what is notable, is for the pointed top of soft-serve ice cream fully to curl down and around in a line that crosses over itself. A long time ago (the registration certificate states a date of first use in commerce of 1948), it became customary at Dairy Queen consciously and consistently to curl over the tops of soft-serve ice cream in this fashion. Once people noticed this creamy configuration, and made the cognitive connection between the crossed-over curl top and a particular source of their soft-serve ice cream, at that point Dairy Queen started accruing trademark rights, memorialized in a 1998 registration on the Principal Register based on a showing of acquired distinctiveness.
Another way to get people to notice you is to take something others are doing and to do it to a noticeably lesser degree. Such is the case with the dramatically smaller second scoop at Izzy’s Ice Cream. If every other ice cream shop serves second scoops that are approximately the same size as single scoops, then changing the size of a second scoop affords an opportunity to differentiate your shop. Once people noticed the smaller second scoop (typically depicted in a different flavor than the larger scoop, though “contrasting flavor” is not part of the registration) and made the connection between the smaller second scoop and the source of their ice cream, that’s when Izzy’s Ice Cream truly started accruing trademark rights, memorialized in a 2012 registration on the Principal Register based on a showing of acquired distinctiveness.
An effective strategy for standing apart from others is to start with something familiar and modify it to evoke something unrelated but attractive, as is the case with the Bomb Pop. The underlying design has the same general shape as a typical frozen pop but has been modified to evoke the shape of a rocket. Introduced during the Apollo program, this pop patriotically sports red, white, and blue colors as part of the registration on the Principal Register, issued in 1976.
It’s also possible to set your stuff apart by doing what, in general terms, others are doing, but changing it in some fundamental, perhaps unexpected, way, as with Twirlix (“One Seriously Twisted Treat”). Here, the salient feature, added to the Principal Register in 2013 based on a showing of acquired distinctiveness, extends along the length of the frozen confection, notably twisting around the pop as it goes.
Occasionally, incongruity itself can be a meaningful means of capturing attention. If, based on the context, you are able to anticipate what’s coming next, there’s a good chance you won’t really even notice it, whereas if the context (e.g., frozen confectionary) leads you to expect one kind of thing (crossed-over curl tops, tiny second scoops, etc.) but you encounter something very different (e.g., an inexplicable amalgam of tasty frozen treats and tacos), there’s a very good chance you’ll take note, as you might with Nacho. It’s not clear from USPTO records how long this mark, registered on the Supplemental Register in 2003 and again in 2009, has been in use, but it does appear that few other frozen confections resemble it. As such, it seems a natural candidate for the Supplemental Register.
Finally, one method for getting people’s attention is to reinvent what it means to be in your category. This appears to be what’s happened in the case of Dippin’ Dots. Here, rather than making mere modifications to the shape of traditional frozen confections, the owner decided to venture off into entirely unknown territory, reinventing the very form of the goods themselves. Because the goods are brightly colored, and (to my knowledge) no other frozen confections looked anything like them at the time of their introduction, it would have been easy for consumers to notice them (absolute distinctiveness) and to distinguish them from frozen confections originating from other sources (relative distinctiveness).
As the natural world shows us, in any given context many strategies exist for capturing attention and for standing out from those around you. Trademarks are an opportunity to get noticed and are, professionally speaking, the coolest things in the world. In my opinion, we could be of greater benefit to our clients and would be truer to the Lanham Act if we spent more time discerning, discussing, and dissecting distinctiveness.
ABA Section of Intellectual Property Law
This article is an abridged and edited version of one that originally appeared on page 13 of Landslide®, September/October 2016 (9:1).
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