What the Law Will Protect: Substantive Standards for Trademarks

68 questions on what the law will protect, answered and cited by the UpLaw editorial team.

• Can a distinctive bottle cap shape be protected?
• Can a famous generic term ever get protection?
• Can an examiner dissect a composite mark into descriptive fragments?
• Can you place five candidate coffee names on the spectrum?
• Does a rare surname escape the Section 2(e)(4) bar?
• How can an applicant attack a surname refusal's evidence?
• How can a registered mark be lost?
• How can one changed fact flip a place name from weak to fatal?
• How do arbitrary and fanciful marks differ?
• How does a descriptive mark climb to the Principal Register in practice?
• How does Section 2(d) relate to distinctiveness?
• How does the Lanham Act define use in commerce?
• How does the U.S. "first to use" rule differ from the rest of the world?
• How do the Section 2 bars track the affirmative requirements?
• How low is the "primary significance is geographic" threshold?
• How much commerce is enough?
• Is advertising a service you have not begun to perform "use"?
• Is "bona fide intent" a subjective standard?
• Is intending a phrase to be a mark enough to make it one?
• Is the Abercrombie spectrum national law or a regional convention?
• Is the question whether a consumer could guess the product from the mark?
• What are the Benthin factors?
• What are the DuPont factors?
• What are the escape hatches from a geographic refusal?
• What are the seven conditions a registrable mark must satisfy?
• What are the three escape routes from a Section 2(e)(1) refusal?
• What are the two forms of distinctiveness?
• What did Matal v. Tam and Iancu v. Brunetti strike down?
• What did the 1988 Trademark Law Revision Act change?
• What did TrafFix add to functionality analysis?
• What did Vidal v. Elster uphold, and why?
• What does Section 2(d) bar, and how common is it?
• What evidence do courts weigh in assessing functionality?
• What evidence proves secondary meaning?
• What exactly is distinctiveness?
• What is aesthetic functionality?
• What is a failure-to-function refusal?
• What is genericide and which brands fell to it?
• What is secondary meaning?
• What is the doctrine of foreign equivalents?
• What is the five-year presumption under Section 2(f)?
• What is the Inwood functionality standard?
• What is the operational lesson about proving secondary meaning?
• What is the policy behind the surname bar?
• What is the symmetry between creating and losing trademark rights?
• What is the synthesis after Tam, Brunetti, and Elster?
• What is the ten-step registrability screen?
• What is the test for a deceptive mark under Section 2(a)?
• What is the test for mere descriptiveness under Section 2(e)(1)?
• What makes a mark suggestive rather than descriptive?
• What must an examiner show for a Section 2(e)(2) refusal?
• What role does the Supplemental Register play in building distinctiveness?
• What separates a deceptively misdescriptive mark from a deceptive one?
• What two cautions limit the five-year shortcut?
• What two levers decide most surname fights?
• What wrinkle did Booking.com add to genericness?
• When is a design merely ornamental?
• Where do most trademark applications actually die?
• Who wins when descriptiveness is genuinely doubtful?
• Why are descriptive terms not inherently distinctive?
• Why can't one seller own the ordinary name of a product?
• Why does functionality trump even proven secondary meaning?
• Why does Section 2(e)(3) bite harder?
• Why does trademark law screen marks before protecting them?
• Why do geographic marks get their own bars?
• Why do legal strength and marketing convenience run backward from each other?
• Why do ornamentation refusals turn on the specimen?
• Why is product-shape protection the hardest corner in trademark law?