Page 18 - Intellectual Property Disputes

Service Marks, Certification Marks, and Collective Marks

Trademark law also governs service marks, certification marks, and collective marks, which are used on
services or businesses, rather than products. An example of a service mark is the name McDonald’s®
for restaurant services. A certification mark refers to any word, name, symbol, device, or any
combination thereof, used, or intended to be used, in commerce with the owner’s permission by
someone other than its owner to certify regional or other geographic origin, material, mode of
manufacture, quality, accuracy, or other characteristics of someone’s goods or services, including work
or labor performed on the goods or services by members of a union or other organization. fn 23 Collective
marks, for example, Girl Scouts, are a trademark or service mark used or intended to be used in
commerce by the members of a cooperative, an association, or other collective group or organization,
including a mark that indicates membership in a union, an association, or other organization. fn 24

Trade Dress

Trade dress under the Lanham Act refers to the "design and appearance of the product together with all
the elements making up the overall image that serves to identify the product presented to the consumer."
fn 25 The trade dress elements in question should serve no functional purpose other than identification of
the source, that is, the manufacturer or merchant. In addition, the court will determine whether the
purchasing public is likely to confuse the "dress" adopted and used by the alleged infringer. Examples of
popular trade dress include the Coca-Cola bottle and Rolls-Royce front grill.

In the matter Two Pesos, Inc. v. Taco Cabana, Inc., the operator of a chain of Mexican restaurants sued
an operator of a similar chain for trade dress infringement under the Lanham Act. The U.S. Supreme
Court held that ". . . trade dress which is inherently distinctive is protectable under [the] Lanham Act
without showing that it has acquired secondary meaning." fn 26 Generally, a "likelihood of confusion"
must be proven in order to establish a trade dress infringement claim; it is not sufficient for confusion to
be merely possible. Counsel will typically hire trade dress and confusion experts on whose opinions the
practitioner will be asked to rely as foundation for a valid trademark claim and damages calculations.

Enforcement of Trademark Rights

Whether a trademark owner sues for infringement under a trademark registration, state statute, or
common law, the test for infringement will ordinarily be based on the likelihood of confusion by
consumers. That is, does the use of the mark by the alleged infringer result in a likelihood of confusion
among consumers about origin, sponsorship, or approval of the subject goods or services? A mark is
infringed under U.S. trademark law when another party uses the mark in a manner that causes confusion
among consumers about the source or sponsorship of the goods or services involved. The confusion can
arise from the similarity in the nature of the products or services or other factors that cause the
infringer’s product or service to be associated, affiliated, connected, approved, authorized, or sponsored
by the mark owner. If a trademark is protected only under common law (that is, no trademark

fn 23 USPTO, "Frequently Asked Questions about Trademarks," accessed May 8, 2019,
www.uspto.gov/web/offices/tac/tmfaq.htm#DefineCertMark.

fn 24 Id.

fn 25 Best Cellars, Inc. v. Wine Made Simple, Inc., LJG Wines, Inc., 320 F. Supp. 2d 60 (S.D.N.Y. 2003).

fn 26 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).

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