15.17 INFRINGEMENT—LIKELIHOOD OF CONFUSION—FACTOR—STRENGTH [DISTINCTIVENESS] OF TRADEMARK
Strength as a Likelihood of Confusion Factor
How [strongly] [distinctively] a trademark indicates that a good comes from a [particular] [specific] source [even if unknown] is an important factor to consider in Instruction [insert number of instruction regarding likelihood of confusion, e.g., 15.16] for determining whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s mark.
The plaintiff asserts [insert claimed trademark] is a trademark for its [insert good or service or business]. The plaintiff contends the defendant’s use of [those] [similar] words in connection with the defendant’s [insert the defendant’s product or service or business] [[infringes plaintiff’s trademark] [and] [is likely to cause confusion about the origin of [goods] [services] [business] associated with that trademark.]]
Spectrum of Marks
Trademark law provides great protection to distinctive or strong trademarks. Conversely, trademarks not as distinctive or strong are called "weak" trademarks and receive less protection from infringing uses. Trademarks that are not distinctive are not entitled to any trademark protection. For deciding trademark protectability, trademarks are grouped into four categories according to their relative [strength] [distinctiveness]. These four categories are, in order of strength or distinctiveness: arbitrary, suggestive, descriptive and generic names.
Arbitrary Marks. The first category is "inherently distinctive" trademarks. They are considered strong trademarks and are clearly protectable. They involve the arbitrary, fanciful or fictitious use of a word or phrase to designate the source of a [product] [service]. Such a trademark is a word that in no way describes or has any relevance to the particular [product] [service] it is meant to identify. It may be a common word used in an unfamiliar way. It may be a newly created (coined) word or parts of common words that are applied in a fanciful, fictitious or unfamiliar way, solely to functionas a trademark.
For instance, the common word "apple" became a strong and inherently distinctive trademark when used by a company to identify the personal computers that company sold. The company’s use of the word "apple" was arbitrary or fanciful because "apple" did not describe and was not related to what the computer was, its components, ingredients, quality, or characteristics. "Apple" was being used in an arbitrary way to designate for consumers that the computer comes from a particular manufacturer or source.
Suggestive Marks. The next category is suggestive marks. These trademarks are also inherently distinctive but are considered weaker than arbitrary trademarks. Unlike arbitrary trademarks, [which are in no way related to what the [product] [service] is or its components, quality, or characteristics,] suggestive trademarks suggest some characteristic or quality of the [product] [service] to which they are attached. If the consumer must use imagination or any type of multi-stage reasoning to understand the trademark’s significance, then the trademark does not describe the product’s features, but suggests them.
A suggestive use of a word involves consumers associating the qualities the word suggests to the [product] [service] to which the word is attached. For example, when "apple" is used not to indicate a certain company’s computers, but rather "Apple–A–Day" Vitamins, it is being used as a suggestive trademark. "Apple" does not describe what the vitamins are. However, consumers may come to associate the healthfulness of "an apple a day keeping the doctor away" with the supposed benefits of taking "Apple–A–Day" Vitamins.
Descriptive Marks. The third category is descriptive trademarks. These marks directly identify or describe some aspect, characteristic, or quality of the [product] [service] to which they are affixed in a straightforward way that requires no exercise of imagination to be understood.
For instance, the word "apple" is descriptive when used in the trademark "CranApple" to designate a cranberry-apple juice. It directly describes ingredients of the juice. Other common types of descriptive trademarks identify where a [product] [service] comes from, or the name of the person who makes or sells the [product] [service]. Thus, the words "Apple Valley Juice" affixed to cider from the California town of Apple Valley is a descriptive trademark because it geographically describes where the cider comes from.
Generic Names. The fourth category is entitled to no protection at all. They are called generic names and they refer to a general name of the [product] [service], as opposed to the plaintiff’s brand for that [product] [service]. Generic names are part of our common language that we need to identify all such similar [products] [services]. A generic name is a name for the [product] [service] on which it appears.
If the primary significance of the alleged mark is to name the type of [product] [service] rather than the [manufacturer] [provider], the term is a generic name and cannot be a valid trademark. If the majority of [relevant] consumers would understand the term to name the type of [product] [service] rather than the [manufacturer] [provider], the primary significance of the term is generic and not entitled to protection as a trademark.
Clearly, the word apple can be used as a generic name and not be entitled to any trademark protection. This occurs when the word is used to identify the fruit from any apple tree.
The computer maker who uses the word "apple" as a trademark to identify its personal computer, or the vitamin maker who uses that word as a trademark on vitamins, has no claim for trademark infringement against the grocer who used that same word to indicate the fruit sold in a store. As used by the grocer, the word is generic and does not indicate any particular source of the product. As applied to the fruit, "apple" is simply a commonly used name for what is being sold.
[Secondary Meaning and Mark Strength]
[If you determine a trademark is weak—that is, suggestive or descriptive, you must consider the recognition that the mark has among prospective consumers. This market recognition is called the trademark’s "secondary meaning." [Insert second and third unnumbered paragraphs as well as numbered paragraphs one through eight of Instruction 15.10 (Infringement—Elements—Validity—Distinctiveness—Secondary Meaning).]
[If a suggestive trademark has such secondary meaning, it becomes stronger. If it has developed no secondary meaning, it remains a weak trademark.]
[On the other hand, descriptive trademarks are protectable only to the extent you find they acquired distinctiveness [through secondary meaning] [by the public coming to associate the mark with [the owner of the mark] [a particular source]]. Descriptive trademarks are entitled to a protection only as broad as the secondary meaning they have acquired, if any. If they have acquired no secondary meaning, they are entitled to no protection.]
This instruction was designed for assessing the strength of a trademark in the likelihood of confusion context. For strength of trademark analysis in the context of a mark validity determination, see Instruction 15.9 (Infringement—Elements—Validity—Unregistered Mark—Distinctiveness). Modify this instruction as necessary in any case involving service marks, collective trade or service marks, or certification trade or service marks, by inserting such terms in lieu of the word "trademark" in this instruction. An adjustment will also be necessary where the mark consists of a phrase rather than a word.
This instruction sets forth a two prong test of mark strength. The second prong of the test is in the last three paragraphs of the instruction (under the heading: "Secondary Meaning and Mark Strength"). If the judge determines that a traditional one-prong test (placing the mark on a spectrum of strength) is more appropriate, the last three bracketed paragraphs of this instruction should be deleted. Generally, use of the second prong is appropriate in cases of descriptive or suggestive marks. See, e.g., Filipino Yellow Pgs. v. Asian Journal Publications, 198 F.3d 1143, 1147-48 (9th Cir.1999) (if mark is descriptive, it is protectable if it has acquired secondary meaning); E.& J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir.1992) (A personal name used as a trademark generally is not inherently distinctive; however if secondary meaning is acquired, a personal name mark is treated as a strong, distinctive mark.).
This instruction supplements Instruction 15.16 (Infringement–Elements–Likelihood of Confusion–Factors–Sleekcraft Test) by explaining how one Sleekcraft factor–strength of mark–is determined. Traditionally, the question of mark strength arises in determining either (a) likelihood of confusion in a trademark infringement action or (b) issues of trademark validity issues. See, e.g., J.B. Williams Co. v. Le Conte Cosmetics, Inc., 523 F.2d 187, 192 (9th Cir.1975), cert. denied, 424 U.S. 913 (1976).
For strength of trade dress this instruction may not be helpful. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837 (9th Cir.1987). See also Comment to Instruction 15.9.
This instruction sets out the traditional spectrum of marks. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. at 768 ("Marks are often classified in categories of generally increasing distinctiveness; following the classical formulation . . . . [T]hey may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful."); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir.1992) (holding that strength of a mark is determined by its placement on a continuum of marks from "generic," afforded no protection; through "descriptive" or "suggestive," given moderate protection; to "arbitrary" or "fanciful" awarded maximum protection). See also Kendall-Jackson Winery v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir.1998) (setting forth the categories of distinctiveness and describing criteria for each category) and Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011, 1014 (9th Cir.1979).
The examples of the multiple strengths of the word "apple" given in this instruction when used on a variety of different products are based on an example in 1 J. Thomas McCarthy, Trademarks And Unfair Competition § 7:36 (4th ed. 2001). See also Bristol–Myers Squibb Co. v. McNeil—P.P.C., Inc., 973 F.2d 1033, 1041 (2d Cir.1992).
The weight of authority in the Ninth Circuit had been that even though a mark has become incontestable, this status does not necessarily mean that it is a strong mark. See Miss World (UK) Ltd. v. Mrs. America Pageants, 856 F.2d 1445, 1449 (9th Cir.1988). But see Brookfield Communications v. West Coast, 174 F.3d 1036, 1047 n.10 (9th Cir.1999) (That a federally registered trademark is incontestable means "that its validity and legal protectability" and the registrant’s ownership in the mark "are all conclusively presumed," subject to certain defenses) (citation omitted). However, if an incontestable mark is involved, it may be improper to include paragraphs concerning the descriptive range of the spectrum. Incontestability precludes a challenge to the mark based on an assertion that the mark is not inherently distinctive (e.g., is merely descriptive or misdescriptive, primarily geographically descriptive or misdescriptive, or primarily merely a surname) and lacks secondary meaning. See 15 U.S.C. § 1115 (b) (4) (although incontestably registered, a trademark is vulnerable to a defense that the trademark "is descriptive of . . . the goods. . ." of the defendant.).
In 2003, the Ninth Circuit indicated that when a mark has become incontestable, it is presumed to be a strong mark as well. The Circuit noted that "[a] descriptive mark that has become incontestable is conclusively presumed to have acquired secondary meaning. Entrepreneur Media, Inc. v. Smith,] 279 F.3d [1135 (9th Cir.2002)] at 1142 n. 3. This means that a defendant in a trademark infringement action cannot assert that an incontestable mark is invalid because it is descriptive and lacks secondary meaning. Park ’N Fly, 469 U.S. at 205), KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061, 1071 (9th Cir.2003) (trademark’s "incontestable registration is conclusive evidence that the mark is non-descriptive or has acquired secondary meaning, and there is no need to require a showing of secondary meaning" of the mark), judgment vacated on other grounds, 543 U.S. 111 (2004). However, while incontestability of a mark is "conclusive proof that the mark has secondary meaning," the strength or weakness of a suggestive or descriptive mark that is incontestable will affect the Sleekcraft determination of whether a consumer would likely be confused by the allegedly infringing mark. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1142 n.3 (9th Cir.2002).