4 - “See me, feel me, touch me, hea[r] me” (and maybe smell and taste me too): I am a trademark a – US perspective

Summary

The preceding chapter, “Between a sign and a brand,” addresses the current law in the UK and the EU regarding which signs can be a registered trademark, and the scope of protection a trademark receives. Jennifer Davis also considers the extent to which that scope does or should cover the more ineffable subject matter of “brand values.” This comment from the perspective of United States trademark law will follow a similar plan. It first will address what is (and is not) a trademark, focusing on the extensions of trademarks beyond traditional word marks and design marks (logos; trade dress [get-up]) to the more controversial categories of product shape, colors, sounds, smells, tastes and touch. It then will explore the scope of protection, particularly with reference to recent legislation concerning “dilution,” representing Congress’ latest attempt to provide greater legal security to the “commercial magnetism” of famous marks, while recognizing the free speech interests in the parodies, critiques and comparisons those marks also attract.

In US trademark law, state common law and federal statutory regimes cohabitate: statutory protection under the Lanham Federal Trademarks Act adds to but does not fully supersede the underlying common law rules and rationale for trademark protection. Thus, for example, carrying forward the common law rule that “There is no such thing as a property in a trade-mark except as a right appurtenant to an established business” a mark will not be registered unless it has been “used in commerce.