Review & Reaction for Business Law

The Professor started the trademark introductory lecture with a definition of trademarks. He
mentioned that trademarks should be registered and they could extend to things like trade dress,
slogans and service marks. They can be used to distinguish a product or service from those of
competitors. Symbols, characters, packaging, colors and sounds can also be used as trademarks.
“A trademark is a distinctive symbol, word, letter, number, picture or a combination thereof
adopted used by a manufacturer to identify his or her products.”1
Unlike patents and copyrights that focus on the creator, trademarks focus on the consumer.2
Trademarks are not based on the functionality of a product or service, but rather on what the
consumer thinks about or associates with the product when they see the logo, slogan, symbol or
character. For example, the Nike swoosh is a mark that differentiates Nike shoes from other
shoes. When consumers see that swoosh on a pair of shoes, they assume that the shoes are made
by Nike. The trademark on the shoes does not have anything to do with the functionality of the
shoes but it connects the product with the Nike brand.
It is important that our products and services are trademark registered to protect the company’s
brand and identity. Companies spend a lot of money to develop products that offer safe and
rewarding opportunities for their clients, so they cannot afford to have their brands confused with
other brands. Financial service providers have to distinguish their brand from their competitors,
especially now that consumers have more options and brand loyalty is not as easy to develop.3
In the United States, a company is not required to register its trademark in order to get
‘protectable rights’, but registering their trademark gives the company the exclusive right to use
the trademark and the ‘ability to bring an action concerning the mark in federal court’.4 The
registration gives the company extra protection when an individual or company infringes on the
trademark.
The Professor also mentioned in the lecture that colors that represent a product can be
trademarked even when the product name is not trademarked. I researched the Qualitex case that
he talked about, Qualitex Co. v. Jacobson Products Co. Inc., 514 U.S. 159 (1995).5 Qualitex

1
Emerson, Robert W. (2015), Business Law, p.612, 6th ed., Barron’s Educational Services Inc.
2
Emerson, Robert W. (2017) Law and Business – Course Pack, BUL 6930, p.51, XanEdu
Publishing.
3
Smith, Grace, Intellectual Property Protection for Financial Services. http://www.finance-
magazine.com/display_article.php?i=8295&pi=291. Accessed on Feb.27, 2017.
4
United States Patent and Trademark Office (2014), Protecting Your Trademark: Enhancing
your Rights through Federal Registration.
https://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf. Accessed on Feb. 28,
2017.
5
Saunders Kurt M. (2016), Intellectual Property Law: Legal Aspects of Innovation and
Competition, p.530, West Academic Publishing.
produced press pads in a green gold color since the 1950s and registered a trademark for the
color in 1991. Jacobson started producing press pads in the same green gold color as Qualitex in
1989. Qualitex filed and won a lawsuit for trademark infringement in the District Court. 21 U. S.
P. Q. 2d 1457 (CD Cal. 1991), but the Court of Appeals for the Ninth Circuit set aside the
judgment that was in Qualitex's favor because the Lanham Act does not permit color alone to be
registered as a trademark, 13 F. 3d 1297, 1300, 1302 (1994).6 The Supreme Court granted
certiorari to hear the case in 1995.7 The Supreme Court Judge ruled in favor of Qualitex because
the green gold color had acquired a secondary meaning for Qualitex customers who associated
that color with the Qualitex press pads. Also, the color had nothing to do with the function of the
pads, so it was non-functional. ‘Color marks are never inherently distinctive, and cannot be
registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of
the Trademark Act, 15 U.S.C. §1052(f)’.8 Since the color had acquired distinctiveness and it was
non-functional, it qualified as a trademark.
The Professor ended the lecture with a story about Elgar’s composition named ‘Nimrod’. Elgar
used the music for the coronation of an English Monarch but after the coronation, he was unable
to achieve the spectacular arrangement that he had originally intended. “Nimrod is the most
loved of the Enigma variations written by Edward Elgar based on his friend August Jaeger, who
supported him through his bouts of depression.9 The Professor spoke about the moral of the story
which is that you have to be sure about what you use as a trademark to represent your product or
service because if it does not do a good job of representing your brand, you could be stuck with
it.

I agree with the Professor that trademarks are all about business. As a consumer, I am loyal to
brands that I have become accustomed to and that have served the purpose that I need them to
serve. My purchase decisions are sometimes influenced by trademarks and what those marks
mean to me. Since trademarks promote business brands, careful consideration should be given to
the kind of mark that represents a brand. Companies spend lots of money marketing and
advertising to their consumers and they expect to get good returns on the money spent. Some
products have become market leaders in their product category because consumers positively
identify with the brand. So, it is important for companies to register trademarks in order to get
protection against parties that could infringe on their trademarks.

6
Qualitex Co. v. Jacobson Products Co. (93-1577), 514 U.S. 159 (1995). Available at:
https://www.law.cornell.edu/supct/html/93-1577.ZO.html. Accessed on Mar. 4, 2017.
7
Saunders Kurt M. (2016), Intellectual Property Law: Legal Aspects of Innovation and
Competition, p.530, West Academic Publishing.
8
Bitlaw (2015) TMEP 1202.05: Color as a Mark.
http://www.bitlaw.com/source/tmep/1202_05.html. Accessed on Feb. 28, 2017.
9
Steinberg, Michael, Elgar: Enigma, Variations on an Original Theme, Opus 36, San Francisco
Symphony. https://www.sfsymphony.org/Watch-Listen-Learn/Read-Program-Notes/Program-
Notes/ELGAR-Enigma,-Variations-on-an-Original-Theme,-Opu.aspx. Accessed on Feb. 29,
2017.