Trademark law may create as much confusion in the courts as it eliminates in the marketplace. "Its hallmarks are doctrinal confusion, conflicting results, and judicial prolixity." In this subtle area of the law, generalizations are especially dangerous. Nonetheless, as principles emerge from the decided cases, such generalizations are made. The ratio decidendi of numerous courts in uncounted cases are transformed into a verbal formula — "generalized into fiction" — which itself becomes the focal point of judicial attention. We preface our analysis of the instant case with a recitation of our most recent legal fiction.
In Miller Brewing Co. v. G. Heileman Brewing Co., this court "briefly summarized" some basic principles of trademark law as follows:
A term for which trademark protection is claimed will fit somewhere in the spectrum which ranges through (1) generic or common descriptive and (2) merely descriptive to (3) suggestive and (4) arbitrary or fanciful.
* * *A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods. It cannot become a trademark under any circumstances.
* * *A merely descriptive term specifically describes a characteristic or ingredient of an article. It can, by acquiring a secondary meaning, i.e., becoming "distinctive of the applicant's goods" ..., become a valid trademark.
* * *A suggestive term suggests rather than describes an ingredient or characteristic of the goods ... [and] can be protected without proof of a secondary meaning.
* * *An arbitrary or fanciful term enjoys the same full protection as a suggestive term ....
In order to establish that a descriptive term is a trademark, a plaintiff must demonstrate that the term has acquired a secondary meaning. It has long been acknowledged that the phrase secondary meaning is a somewhat misleading one. Thus, to establish a secondary meaning for a term, a plaintiff "must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer."
The parties' reaction to the foregoing principles is representative of a decided tendency in trademark cases to argue about the legal labels rather than the underlying analytical inquiries those labels are designed to trigger. The labels themselves are merely springboards for analysis, not a substitute for it. The point is a basic one, but bears repeating, for it is all too often forgotten when the law is reduced to a few conclusory classifications: such abstract categories are analytical touchstones for a much more sophisticated inquiry. Moreover, the precise wording of the verbal summary is necessarily tied to the factual context which spawned the verbal formula, and thus will not be particularly salient in a myriad of factual settings.
The law recognizes the right of one individual to prevent another from labeling his product with a particular term in order to prevent the misrepresentation of the product's source. Such a misrepresentation harms both the purchaser and the individual who has been impersonated. The legal wrong to the purchaser is a paradigm of the tort of fraud. The wrong to the impersonated party is given legal life by recognizing in that party a right in his identity — a "property" right in his mark of identification, appurtenant to his property rights in the goods he so marks, enabling the "owner" of the trademark to enjoin the imposter from continuing misrepresentations.
It has long been acknowledged, however, that the property right characterization of a trademark is fraught with conceptual pitfalls: the danger always exists that courts may be granting one producer an unwarranted competitive advantage "based upon the notion that by advertising one can obtain some 'property' in a name. We are nearly sure to go astray in any phase of the whole subject, as soon as we lose sight of the underlying principle that the wrong involved is diverting trade from the first user by misleading customers who meant to deal with him."
Properly understood, the so-called trademark spectrum reflects levels of judicial skepticism concerning whether the term actually serves the source denoting function which a mark is supposed to perform. Terms which are arbitrary, fanciful, or suggestive as applied to a given product or service are naturally understood by the consuming public as designations of origin: it is unlikely that such terms would be understood as anything else. Hence, the exclusive right to use such a term in connection with such a product or service vests in that individual who first used the term in a particular market. Descriptive terms, on the other hand, are ill-suited to serve as designations of origin, for such terms are naturally understood by the consuming public in their ordinary descriptive sense. In order to acquire the exclusive right to use such a term, the user must demonstrate, as a matter of empirical fact, that the paramount commercial significance of the term in the minds of the consuming public is not its ordinary descriptive import, but rather, a declaration that the item so labeled originates at a single, albeit perhaps anonymous, source. Stated another way, a party attempting to appropriate the exclusive use of a descriptive term must persuade the court that the consuming public treats the term as a declaration that the item or service bearing the term originates at a single source, and thereby rebut the presumption that the public regards the term as merely describing an attribute of the item or service.
Prepared by Jefferson Scher for Law 657: Trademark Law Practice, Summer 2003. Substantial portions of the original opinion have been omitted.