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Use as a Mark: Source Identification Function 151
trade dress protection. We need not resolve this question. If, despite the rule that
functional features may not be the subject of trade dress protection, a case arises in which
trade dress becomes the practical equivalent of an expired utility patent, that will be time
enough to consider the matter. The judgment of the Court of Appeals is reversed, and the
case is remanded for further proceedings consistent with this opinion.
It is so ordered.
• • • • • • • • • •
Notes on Distinctiveness & Functionality
As Abercrombie explains, in order for a mark to be registrable, it must be
distinctive. It lays out four categories of marks, from strongest to weakest. Only the first
two are inherently distinctive.
1.) Fanciful or arbitrary marks are protectable. Fanciful marks are invented words such
as Kodak or Pantene. Arbitrary marks are existing words or names that have no
relationship to the product, such as “Apple” for computers, or “Starbucks” for coffee.
(Starbuck was the mate on the Pequod, the whaler in the novel Moby Dick.)
2.) Suggestive marks are also protectable. They suggest—but do not directly describe—
a quality or characteristic of the underlying product. Connecting the mark with the
product requires some cognitive or imaginative effort. Examples of suggestive marks
provided by the PTO are “Quick N’ Neat” for piecrust (do you agree?) and “Glance-A-
Day” for calendars.
3.) Descriptive marks are not protectable unless they acquire distinctiveness, because
granting exclusive rights over mere descriptions would impede the ability of others to
describe similar items. Building upon the PTO’s examples above, “Flaky Round Piecrust”
for piecrust or “365-Day Calendar” for calendars would be merely descriptive. As you
may gather from these examples, however, the line between suggestive and descriptive
can be difficult to draw. Zatarain’s usefully lays out some guidelines for doing so.
A descriptive mark can be eligible for protection if it acquires distinctiveness
through “secondary meaning.” This occurs when the consuming public connects the
mark with the source of the product, rather than simply with the product itself. An
example of a descriptive mark that has acquired secondary meaning is “Holiday Inn.”
While merely descriptive marks are not eligible for registration on the main
trademark register, which is called the “Principal Register,” they can be registered on the
“Supplemental Register” if they are used in commerce and capable of acquiring
distinctiveness. Unlike the Principal Register, the Supplemental Register does not
convey the presumption of validity, constructive notice of ownership, or right to enjoin
others from using the mark. However, it does offer actual notice and the right to use the
® symbol, and prevent later registration of confusingly similar marks. The PTO’s normal
practice is to assume that marks gain secondary meaning after five years on the
Supplemental Register, at which point they become eligible for the Principal Register.
4.) Generic terms for products are never registrable under the Lanham Act. The public
retains the right to use these basic terms for goods and services. “Apple” for apples or
“Hammer” for hammers would be generic. Over time, some marks become so widely
used to describe particular products that they become generic words (this is referred to
as genericity or genericide)—examples include “Escalator” and “Thermos.”
In addition, as both TrafFix and Qualitex explain, functional aspects of a product
can never be trademarked. How does TrafFix describe the test for functionality? How is