© 2025 Eric E. Johnson. Licensed under the Creative Commons Attribution-ShareAlike 4.0 International license (CC BY SA 4.0)

Trademark Analysis Synthesis

Prof. Eric E. Johnson
ericejohnson.com

 

This document comes out of the Fall 2025 course in Trademarks at OU Law. Course webpage: https://www.ericejohnson.com/courses/trademark_25/

This document uses Cabin font, a free, open-licensed font available via https://fonts.google.com/specimen/Cabin

This handout is intended to give you a generalized to-do list for approaching typical trademark problems – mostly concerning whether an infringement has occurred, but also adaptable to answer more particular questions, such as whether something can be protected via trademark law.

Important notes regarding how this document relates to our course:  

First, note that this document does not cover all the legal doctrine in the course. This document attempts to provide a structure for applying major doctrines of trademark law, but there will be substantial material covered in the course that is not embraced by this document.

Second, this document is not meant to be a source for helping you to understand the law. Rather, it is meant to be a road map for approaching problems so that you can apply what you’ve learned.

Third, do not try to make inferences about what will be on the exam from this document. The amount of words devoted to a topic in this document reflects a judgment with regard to the amount of detail necessary to provide a comprehensible scheme for applying much of what you’ve learned. For topic coverage on the exam, as the syllabus says: “I work hard to ensure that the emphasis on the exam will track the emphasis in class and in the materials, and the topics covered on the exam will be at least roughly proportional to the time spent on those topics in the course.” (This is what the syllabus calls the “Correspondence Principle.”)

 

 

Thinking of the Law in Action

Think about the law functionally: What can you do with it? In what proceedings is it employed to some legal effect? What questions can trademark law answer?

A variety of proceedings make use of trademark law, including an application to register a mark with the USPTO, an infringement lawsuit in court against a particular defendant, an opposition proceeding, and a cancellation proceeding.

This document primarily concentrates on an infringement action for trademark infringement based on a passing-off theory. The principal cause of action for trademark is the action for infringement. And the archetypal theory of trademark infringement is that of “passing off.” Moreover, the analysis for a passing-off infringement case ends up including within it much of the analysis needed for other questions, such as whether a mark is registrable. Thus, this document focuses on a “passing off” theory of infringement.

A trademark infringement cause of action for passing off has four elements. They’re spelled out on the next page, but in brief they are: (1) validity, (2) ownership (3) defendant use, and (4) likelihood of confusion.

Subsequently, this document suggests a structure for unpacking and analyzing those four elements. For other questions, you can apply portions of that analysis as appropriate (including, for instance, Who owns a given mark? Can a given mark’s registration be canceled?).

 

Trademark infringement by passing off

Prima facie case:

 

For a regular passing-off action for trademark infringement

·      whether under state common law (applicable to unregistered marks), under Lanham Act §43(a) (applicable to unregistered marks), or under Lanham Act §32 (infringement action applicable only to registered marks),

·      and whether for a word mark, a logo, product packaging, product configuration, or other symbol,

the plaintiff must prove these four things:

(1) there is a valid trademark;

(2) that trademark is owned by the plaintiff; and

(3) that mark or a similar symbol was used by the defendant in commerce in connection with the sale, offering for sale, distribution or advertising of goods or services

(4) resulting in a likelihood of confusion

 

Element (1) is: There is a valid trademark.

To be a valid trademark, a mark must be capable of, be used as, serve as, and be allowed to serve as an identifier of commercial source. But for the time being, let’s pull “and be allowed to serve as” out of that sentence. That’s an analytically squirrely clause. The fact is, the law excludes some things from trademarkability on policy grounds (big examples are government symbols and names and likenesses of living individuals without their consent). Having removed that bit, we are left with something that is conceptually compact and analytically pure:

To be a valid trademark, a mark must be capable of, be used as, and serve as an identifier of commercial source.

All or nearly all of the various court-articulated concepts concerning trademark validity are really just extensions of that single idea. For instance: genericness, distinctiveness, functionality, secondary meaning – all of those concepts are deduced from the axiomatic concept of source identification.

What this means for you is that you should free yourself from thinking of, for instance, genericness, distinctiveness, and functionality as wholly separate questions. There’s a great deal of conceptual overlap among these doctrines. For instance, what is said in one case that is putatively about distinctiveness might be useful in applying to a dispute that is understood to be about functionality.

As a procedural matter, whether validity is the plaintiff’s burden to prove depends on registration. Marks registered on the principal register are entitled to a presumption of validity, and then proving invalidity is a matter for the defense. But substantively, that doesn’t really matter. It’s a live issue either way.

But something that does matter substantively, and which is worth considering before working through the questions below is:

Does the mark have incontestability status?

If the mark has been in continuous use in commerce for five years following its registration on the principal register, then it will become incontestable. That doesn’t really mean its validity can’t be contested, of course, but it does take some invalidity arguments off the table.

We didn’t focus on incontestability as an issue this semester, but we did learn

 if a mark is incontestable, then

·       lack of distinctiveness based on not being inherently distinctive is a non-issue, and

·       lack of distinctiveness based on not having the secondary meaning needed to acquire distinctiveness is a non-issue,

because incontestability status renders these invalidity arguments unavailable.

But essentially everything else we talked about over the semester with regard to validity remains in play as a path to a defendant victory. Particularly notable – since they’re conceptually in the same neighborhood as inherent and acquired distinctiveness – determinations of genericness and functionality remain ways to invalidate claimed trademarks, even those that are registered and have incontestability status.

 

While doctrines of trademark validity have a tendency to overlap and blend together, articulating them separately can be very useful as a checklist for your analysis. Thus:

Analyze:

[N.B.: The word “mark” or “trademark” here includes not only word marks and logos, but whatever is sought to be protected through trademark law – including trade dress (product packaging, product configuration), etc.]

Distinctiveness: Is the mark capable of identifying and distinguishing goods or services from those manufactured or sold by others and to indicate the source of the goods or services (even if that source is unknown)?

This can be a complex question. See the Table of Distinctiveness for a representation of the broader picture.

Consider:

Is the mark inherently distinctive?

To determine this, look over the green questions below. Then, answer . . .

 if NO, then go down to the next blue question (acquired distinctiveness).

 if YES, then go down to the next purple question (genericness):

·       As a general, conceptual matter, an “inherently distinctive” mark is one whose intrinsic nature serves to identify a particular source of a product or service.

Is the mark a word mark that is arguably fanciful, arbitrary, or suggestive?

Word marks that are characterized as fanciful, arbitrary, or suggestive are inherently distinctive.

·       The category of “fanciful” is described, inter alia, in IP Surveyor chapter M-4: as a neologism “invented for the sole purpose of serving as a trademark and has no preexisting meaning.” Two examples given were “Kodak” and “Fanta.”

·       The category of “arbitrary” embraces terms that have nothing to do with the product or service to which they are applied as a mark. An example given was “Apple” for computers. It’s arbitrary because apples have nothing to do with computers.

·       The category of “suggestive” embraces marks that suggest, but do not clearly describe, the nature of the product or service. An example given was “Coppertone” for sunscreen. It’s suggestive because “Coppertone” suggests something about suntanning but doesn’t clearly describe sunscreen.

Is the mark trade dress?

For trade dress (e.g., product design, product packaging) special rules apply.

 if YES, then ask:

Is it color?

 THEN in that case, it CANNOT be inherently distinctive. Qualitex holds that color cannot be inherently distinctive, yet color can acquire distinctiveness through secondary meaning.

(In addition to analyzing whether the color may have secondary meaning, consider also functionality. If a color is functional, it’s unprotectable whether it has secondary meaning or not.)

Is it product design?

 THEN in that case, it CANNOT be inherently distinctive (Wal-Mart v. Samara). That is, even if a factfinder would find it inherently distinctive, it is disqualified as a matter of law from being inherently distinctive. Thus, to be distinctive, it’ll need secondary meaning.

Is it product packaging?

 THEN in that case, it MIGHT be inherently distinctive – that will be a factual question.

Is it a tertium quid?

???  Recall that Wal-Mart v. Samara, in trying to deal with Two Pesos, speculated that a “festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals” wasn’t product design but was either product packaging or a “tertium quid” that didn’t need secondary meaning to be protectable.

Does the mark qualify by way of acquired distinctiveness?

To determine this, among the things to consider are . . .

Is the mark a word mark that is arguably merely descriptive?

Word marks that are merely descriptive are not inherently distinctive, but such marks can acquire distinctiveness if they obtain secondary meaning. For the dividing line between suggestive and merely descriptive, see Zatarains v. Oak Grove Smokehouse, which discussed this and employed four strains of analysis:

o   Dictionary definitions

o   The imagination test

o   Needed by or useful for competitors

o   Actual use by others for similar goods or services

Has the mark acquired distinctiveness through secondary meaning?

As Zatarains says:

“The concept of secondary meaning recognizes that words with an ordinary and primary meaning of their own may by long use with a particular product, come to be known by the public as specifically designating that product. In order to establish a secondary meaning for a term, a plaintiff must show that the primary significance of the term in the minds of the consuming public is not the product but the producer. The burden of proof to establish secondary meaning rests at all times with the plaintiff; this burden is not an easy one to satisfy, for [a] high degree of proof is necessary to establish secondary meaning for a descriptive term.”

(internal quotation and citation omitted)

 

Can it be argued that the mark is generic?

If a mark is generic, it is not protectable as a trademark. What matters is the primary significance of the claimed mark – whether its primary significance is as a kind of product as opposed to a source-identifying mark.

Keep in mind that it’s not necessary that the public uses the term in a generic sense. What matters is that they would understand the term to be generic.

To understand what arguments are likely to be persuasive one way or the other, reason from cases we looked at: Filipino Yellow Pages, Elliott v. Google, and USPTO v. Booking.com.

 

Can it be argued that the mark is functional?

If a mark is functional, it is not protectable as a trademark. This is doctrinally messy terrain. The more you can reason from the cases and find support for potential outcomes in the cases, the better your analysis is likely to be.

Consider:

Does the mark fit within any of the courts’ various articulated concepts of functionality?

As we discussed in class, it is not clear how to articulate a single blackletter rule for this. (See the slides on functionality for some of our explorations in this regard.) Thus, it can’t be said with certainty what things are required for functionality, but it’s clear at least that the following questions are highly relevant.

Is there a competitive need for others to use the mark?

Competitive need implies functionality.

Does the mark affect the cost of the article?

Lowering the cost implies functionality.

Does the mark affect the quality of the article?

An effect on quality implies functionality.

Does the mark put competitors at a significant non-reputation-related disadvantage?

Putting competitors at such a disadvantage implies functionality. This way of looking at functionality seems to be particularly important in cases involving issues of aesthetic functionality. But it’s not limited to that context.

Does the mark seem close on the facts to any functionality cases?

The closer any given case comes to precedent on the facts, the more likely it is a court will decide the issue in line with that precedent.

So you might consider:

Is the mark like . . .

·      the pillow form of shredded wheat in Kellogg v. Nabisco?

·      the sign in TrafFix?

·      the grease pump in Groeneveld v. Lubecore?

·      the beach towel in Jay Franco v. Franek?

 if YES, that could suggest functionality and a defendant win.

Is the mark like . . .

·      the restaurant trade dress in Two Pesos v. Taco Cabana?

·      the wine store trade dress in Best Cellars v. Wine Made Simple?

·      the red-soled shoes in Christian Louboutin v. Yves Saint Laurent?

·      the accessories in Au-To Gold v. Volkswagen?

 if YES, that could suggest non-functionality and a plaintiff win.

 

Does the reasoning of any of the cases support finding functionality? Or finding non-functionality?

The cases we read were filled with a variety of views, rationales, policy prescriptions, admonitions, convictions, and proffered wisdom about the purpose of trademark law, its powers, its limits, its promises, its perils, and so on. Much of this is applicable to forming persuasive arguments.

Consider:

Did a court explicitly tell us something relevant about the law?

If so, this could be persuasive to future courts. And as far as this goes, it is likely to be most persuasive if it is from the U.S. Supreme Court, with lessening value as you move down to circuit courts and then district courts.

When considering cases in this vein, don’t forget to include Qualitex and Wal‑Mart v. Samara. These cases didn’t involve functionality as such, but they loom very large as authoritative expositions on modern trademark law. So what they say can be quite relevant to figuring out what functionality means in any given case.

Did a court reveal how it reasons and what it finds persuasive?

If so, this could be predictive of future decisions. And as far as that goes, the predictive value of lower court decisions is arguably as great or even greater than U.S. Supreme Court cases. Reasoning in this vein, you’re not necessarily limited to the letter of the doctrine. You might draw from the cases some grounded speculation about the effect of industry expectations, longstanding practice, apparent equities, economic realities, and so forth.

 

We also discussed these sorts of things using the label “pins” – meaning points made by, and placemarkers within, past cases that correspond to a plaintiff/non-functionality or defendant/functionality outcome – that form an opportunity for a litigant to make a favorable argument.

Along those lines:

Are there pro-defendant/functionality-favoring arguments to be made with the help of these “pins”?

·       it’s a competitive need,

·       essential to the use or purpose of the article

·       it affects the cost of the article

·       it affects the quality of the article

·       it puts competitors at a significant non-reputation-related disadvantage (particularly for situations arguably concerning aesthetic functionality)

·       it enables the product to operate (Inwood)

·       it’s a means of excluding competitors from a substantial market (Wallace)

Are there pro-plaintiff/functionality-disfavoring arguments to be made with the help of these “pins”?

·       alternative designs are available (even more so if “virtually unlimited” alternatives exist)

·       it’s a distinctive, arbitrary arrangement of ornamental features, because that does not hinder potential competitors (Christian Louboutin)

·       it does not “significantly” undermine competitors’ ability to compete in “the relevant market” (Christian Louboutin)

·       defendants must meet their burden of showing that trade dress elements are “essential to effective competition in a particular market” (Best Cellars)

·       specifically articulated trade dress isn't functional as a result of including elements that are well-designed and thus “functional” (Best Cellars)

Use in commerce: Has the mark been the subject of the plaintiff’s bona fide use in commerce?

This doesn’t often come up as an issue by itself. But it remains a rock-solid requirement that a mark must be used in commerce before it can be successfully upheld by the plaintiff as a valid trademark.

Note that relevant doctrine regarding what constitutes use for trademark validity tends to come up in two contexts that are treated elsewhere in this document:

·       First is a dispute between two rival claimants to the same mark. See the treatment below under the second infringement element – (2) that trademark is owned by the plaintiff.

·       Second is abandonment. This is addressed below.

Thus, if it’s an issue in the prima facie case, consider the teachings of the law and cases under those headings.

Keep in mind that an intent-to-use application can reserve a date for the sake of priority, but the trademark right doesn’t vest until bona fide use in commerce.

Failure-to-function doctrine: Does the claimed mark actually function as a trademark – or does it fail to do so?

Grynberg’s book discussed this over pages 66–67 (in Chapter 4, Non-Word Marks, Colors, and Trade Dress), in the excerpt from the Trademark Manual of Examining Procedure, §1202.03(a) Commercial Impression, which notes, e.g., “The significance of the proposed mark is a factor to consider when determining whether ornamental matter serves a trademark function. Common expressions and symbols (e.g., the peace symbol, “smiley face,” or the phrase “Have a Nice Day”) are normally not perceived as marks”

The failure-to-function doctrine as such hasn’t been fleshed out much by the courts. And we didn’t read a case that focused in on it by that name. But the concept is woven throughout many cases. One example is Qualitex, where the court goes to some effort to explain that color can be a trademark precisely because it functions as a source identifier (in other words, does not fail to function).

Note that “functions as a trademark” (the negation of which is “failure to function”) is a distinct concept from “functionality” (the negation of which is that mark is “nonfunctional”), which is a doctrine saliently represented by TrafFix. A mark must function as a trademark to be valid as a trademark. And a mark must be nonfunctional in a utilitarian/TrafFix sense to be valid as a trademark.

Is the mark unprotectable for being deceptive?

Consider the relevant doctrine and In re Budge (“Lovee Lamb”).

Is there an argument for invalidity via naked licensing or abandonment?

Sources of precedent and judicial understanding in this area include FreecycleSunnyvale v. Freecycle and Westco v. KB (“Mattress Warehouse”).

Licensee estoppel: Consider whether the defendant might be blocked from arguing the mark’s invalidity by way of the doctrine of licensee estoppel.

Consider Westco v. KB (“Mattress Warehouse”). That case illustrated how the doctrine of licensee estoppel can be rather nuanced and complex. But if the defendant’s argument would arguably challenge an assumption underlying the licensing arrangement, then licensee estoppel is a potential issue.

 

Element (2) is: That trademark is owned by the plaintiff.

The plaintiff must be the owner of the trademark to be able to sue a defendant for infringement. In essence, being the owner of a trademark means being the source of the goods to which that trademark is affixed. Consider:

Is there a dispute as to priority – i.e., more than one party claims to own a particular mark for a particular market?

If so, consider the law and notes presented with, and the teachings of, Burger King v. Hoots and FN Herstal v. Clyde Armory (SCAR guns case).

Is there a dispute as to geographical extent of the trademark right?

Again, Burger King v. Hoots is relevant.

Is there a dispute as to who among former collaborators is the owner?

If so, apply the teachings of Bell v. Streetwise Records.

Is there a question of tacking – where a newly modified mark is claimed as having the priority of the older version of the mark?

If so, apply what we learned from Hana v. Hana and associated notes. Tacking is a jury issue as to whether the new mark carries the same commercial impression for an ordinary consumer as the prior mark and hasn’t materially altered the character of the prior mark.

 

Element (3) is: That the mark or a similar symbol was used by the defendant in commerce in connection with the sale, offering for sale, distribution or advertising of goods or services. Consider:

Is the defendant’s use of the mark or a similar mark something other than a straight-up affixing of the mark as a source indicator for its goods?

 if NO, if it’s just the defendant using the mark as a mark for the defendant’s goods or services, then this requirement will be easy for the plaintiff to prove.

 if YES, if it’s something that doesn’t quite fit the use-of-a-mark-as-a-mark mold, then this requirement may be a significant contested issue in an infringement. The main example we had under this heading was the defendant including the plaintiff’s mark in a headline of an article hostile to the plaintiff in the case of Radiance Foundation v. NAACP.

 

Element (4) is: That the use results in a likelihood of confusion.

Is this a standard sort of claim of consumer confusion, where the plaintiff claims consumers might confuse defendant’s goods or services with those of the plaintiff?

 if NO, then go down to the purple question about other confusion theories.

 if YES, then do the factor-based analysis  . . .  

Apply the likelihood-of-confusion factors.

For a list of likelihood-of-confusion factors, I suggest working from the synthesized list I gave you in the slides, which is a slightly re-worded version of the Second Circuit’s Polaroid factors as articulated in the Virgin v. Nawab case we read.

Here’s that list:

·  the strength of plaintiff’s mark

·  similarity between plaintiff’s and defendant’s marks

·  the proximity of the products in the marketplace

·  the likelihood that the senior user will bridge the gap by beginning to sell in the market of the defendant’s product

·  evidence of actual confusion

·  the sophistication of consumers in the relevant market

·  defendant’s good faith, or lack thereof, or bad faith, in adopting its own mark

·  the quality of the defendant’s product

 

In terms of how these factors can be applied, take your cues from the cases we read – that can include not only Virgin v. Nawab and Maker’s Mark, which we read in the particular context of exploring the likelihood-of-confusion inquiry, but also other cases that offer precedent and analysis in this regard.

The more genuine potential you perceive in using the likelihood-of-confusion factors to fashion arguments that could be persuasive to a court – your perception having been developed from the cases we’ve read and your own reflections about them – the better your analysis will be.

Please keep in mind that in an area as indeterminate and “fuzzy” as this often is, it very well may be that the best lawyerly analysis arrives at no definite conclusion on whether the plaintiff will succeed in showing likelihood of confusion.

 

Is there some other theory of confusion that has some precedent and that might apply to the given facts?

Consider:

Is there a case for confusion in terms of “association” with the source, or “post-sale” (aka “post-purchase”) confusion?

Consider Au-To Gold v. Volkswagen and Hermes v. Lederer de Paris Fifth Ave. There was also the note case of Ferrari S.P.A. v. Roberts.

 

Trademark infringement defenses:

In trademark, things get tossed all around the procedural map. For instance, a given circuit might apply a given defense to consideration of the plaintiff’s prima facie case – such as using the so-called defense’s analysis in lieu of certain prima-facie-case analysis. But what are included in this section are doctrines that are traditionally thought of as defenses. And it may be helpful to you, as a practical matter, to keep these defenses distinct from prima-facie elements in your thinking. Doing so may help to ensure that your analysis is thorough and complete and not redundant. Just bear in mind that courts don’t necessarily observe the same punctiliousness.

Along those same lines, let’s note for the sake of completeness that invalidity of the trademark can be a powerful issue for the defendant. Procedurally, validity may be the plaintiff’s burden and subject to a rebuttal defense, or invalidity may be the defendant’s burden to prove by way of an affirmative defense. Either way, the substance of validity issues is addressed above as the first element of a prima facie case. And as noted there, incontestable status removes from consideration validity challenges based on a lack of inherent distinctiveness or lack of secondary meaning. But incontestability shouldn’t stop you from considering anything below.

Does the defendant have an argument for license?

Sources of precedent and judicial understanding in this area include FreecycleSunnyvale v. Freecycle and Westco v. KB (“Mattress Warehouse”).

·      NOTE: If the defendant has or even once had a license, consider whether this may benefit the plaintiff in terms of licensee estoppel. That issue was addressed above.

Is there an argument the defendant is protected by laches?

Consider Hermes v. Lederer de Paris Fifth Ave.

Is there an argument for applying first-sale doctrine?

We had slides on this.

Could the defendant be protected by the First Amendment?

Sources of precedent and judicial understanding in this area include Mattel v. MCA Records. In addition, Radiance Foundation v. NAACP is relevant on this issue.

Is the defendant’s use arguably classic fair use?

A source of precedent and judicial understanding in this area is Zatarains v. Oak Grove Smokehouse ("fish fry").

Is the defendant’s use arguably nominative fair use?

Sources of precedent and judicial understanding in this area include Toyota v. Tabari as well as Tiffany v. eBay (note case) and Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC (note case).

 

 

Other, trademark-adjacent causes of action

 

If a case of trademark infringement for passing off won’t work, that doesn’t necessarily mean the plaintiff has lost all hope. And even if trademark infringement will work, that doesn’t mean the plaintiff shouldn’t consider piling on more claims. Thus, consider other causes of action. Here’s three causes of action for which we read a case:

Is there a claim for dilution?

Consider the statute at Lanham Act 43(c), what the book said about this and Mattel v. MCA Records.

Is there a claim for defamation?

Consider the doctrine (assigned “booklet” reading, flowchart, slides) and Bindrim v. Mitchell.

Is there a claim for right of publicity infringement/liability?

Consider the doctrine (assigned readings, slides) and the cases Hart v. Electronic Arts and Polydoros v. Twentieth Century Fox.