Potential trademarks fall into four categories:

Generic
o "The name of a particular genus or class of which an individual article is a
member."
o Things like "aspirin" or "thermos" or "cellophane"
o These are never trademarkable.
o If you could trademark these, it would bar people from marketing competing
products.
Descriptive
o "Identifies a characteristic of quality of an article or service."
o Things like "Vision Center" or "Raisin Bran"
o These are ordinarily not trademarkable, but might become trademarkable if
they acquire a secondary meaning.
Suggestive
o Suggests, rather than describes a particular characteristic, but requires the
consumer to exercise some imagination in order to draw conclusions about
the product.
o Things like "Coppertone" or "Wrangler"
o These are trademarkable without proof of secondary meaning.
Arbitrary or Fanciful
o Bears no relations to the product or service it refers to.
o Fanciful are things like "Kodak" that have no meaning.
o Arbitrary are things like "Ivory Soap" that use real words but those words have
no connection to the product.
o These are trademarkable without proof of secondary meaning.

Zatarians, Inc. v. Oak Grove Smokehouse, Inc. 698 F.2d 786 (1983)
Zatarians manufactured "Fish-Fri" and "Chick-Fri" batter mixes for frying.

Both terms were registered trademarks for Zatarians.

Oak Grove marketed similar batter mixes, called "Fish Fry" and "Chicken Fry".

The Oak Grove mixes had different ingredients than the Zatarians mixes.
A second company, Visko also made a similar product with a similar name.

Zatarians sued Oak Grove and Visko for trademark infringement.

Oak Grove countersued in an attempt to cancel the trademark under 15 U.S.C. 1119
(the Lantham Act).

The Trial Court found for Oak Grove, Zatarians appealed.

The Trial Court found that the trademark "Fish-Fri" was a descriptive term with an
established secondary meaning, and so Oak Grove had a right to use it via fair use.
The Court found that "Chick-Fri" was a descriptive term with no secondary meaning
and therefore the trademark was canceled.

The Appellate Court affirmed.

The Appellate Court found that "Fish Fri" was a descriptive term, and in order to be
trademarkable, there must be an established secondary meaning.
The Court found that in order to show a secondary meaning, Zatarians would have to
show that the primary significance of the term in the minds of the consuming public
is not the product but the producer.
o The term "Chick-Fri" was a recent Zatarian's trademark, and the public didn't
associate the term with Zatarian's specifically, so there is no secondary
meaning. Therefore, the trademark is invalid.
o However, the Court found that the public tended to associate the term "Fish
Fri" with Zatarians so the term was trademarkable.
The Court found that even if a descriptive trademark has a legitimate trademark
based on a secondary meaning, it is still possible for others to use the words, as
longs as they only use them in a descriptive manner.
o Although Zatarian's "Fish-Fri" was established in the public's consciousness,
Oak Grove and Visko could use it as a descriptive term for their fish frying
product. (The term "fish fry" appears in the dictionary.)
o It would be difficult for Oak Grove and Visko to market their product without
alerting consumers that it is used to fry fish.
The Court noted that the fact Zatarian's misspelled "fry" doesn't make the term "FishFri" trademarkable.

SHANGRI-LA vs. DEVELOPERS GROUPOF COMPANIES, INC. G.R. No. 159938 March
31, 2006
FACTS: Respondent Developers Group of Companies, Inc.(DGCI) caused the registration of
the trademark Shangri-La" mark and "S" logo on October 18, 1982. Petitioner Shangri-la
International Hotel Management, Ltd. (SIHM) et.al. contested the said registration in view of
its apparent widespread use of the Shangri-La mark and s logo on its hotels around the
world. SIHM started the use of the mark and the logo since 1969. As far back as 1962, it
adopted the name "Shangri-La" as part of the corporate names of all companies organized
under the aegis of the Kuok Group of Companies (the Kuok Group). The logo was first used
by the Shangri-La Hotel Singapore when it commissioned a Singaporean design artist, a
certain Mr.William Lee, to conceptualize and design the logo of the Shangri-La hotels. SIHM
begins its hotel business operations in the Philippines only on 1987.On the other hand, DGCI
thru its President and Chairman, Ramon Syhunliong reiterated the conception of the mark
and the logo as follows: The S-logo was one of two (2) designs given to him in December
1982, scribbled on a piece of paper by a jeepney signboard artist with an office somewhere
in Balintawak. The unnamed artist supposedly produced the two designs after about two or
three days from the time he (Syhunliong) gave the idea of the design he had in mind. He
also said that he visited one of the SIHM hotels as early as August 1982.In this case, the RTC
of Quezon City and the CA upheld the registration of the DGCI before the Bureau of
Patents,Trademarks and Technology Transfer (BPTTT). It solely based its decision on the
prior use and registration of the mark and logo in the Philippines in contrast with the use
of the SIHM which is widespread but not in the Philippines not until 1987.
ISSUE: Whether or not the prior use and registration should be the sole basis in
determining the proper recipient of a trademark. NO.
HELD: Under the provisions of the former trademark law, R.A.No. 166, as amended, which
was in effect up to December 31,1997, hence, the law in force at the time of respondent's
application for registration of trademark, the root of ownership of a trademark is actual use
in commerce. Section 2 of said law requires that before a trademark can be registered, it
must have been actually used in commerce and service for not less than two months in the
Philippines prior to the filing of an application for its registration. Registration, without more,
does not confer upon the registrant an absolute right to the registered mark. The certificate
of registration is merely a prima facie proof that the registrant is the owner of the registered
mark or tradename. Evidence of prior and continuous use of the mark or trade name by
another can overcome the presumptive ownership of the registrant and may very well
entitle the former to be declared owner in an appropriate case. Among the effects of
registration of a mark, as catalogued by the Court in Lorenzana v. Macagba, are: 1.
Registration in the Principal Register gives rise to a presumption of the validity of the
registration, the registrant's ownership of the mark, and his right to the exclusive use
thereof. x x x 2. Registration in the Principal Register is limited to the actual owner of the
trademark and proceedings therein pass on the issue of ownership, which may be contested
through opposition or interference proceedings, or, after registration, in a petition for
cancellation. Xxx Ownership of a mark or trade name may be acquired not necessarily by
registration but by adoption and use in trade or commerce. As between actual use of a mark

without registration, and registration of the mark without actual use thereof, the former
prevails over the latter. For a rule widely accepted and firmly entrenched, because it has
come down through the years, is that actual use in commerce or business is a pre-requisite
to the acquisition of the right of ownership. By itself, registration is not a mode of acquiring
ownership. When the applicant is not the owner of the trademark being applied for, he has
no right to apply for registration of the same. Registration merely creates a prima facie
presumption of the validity of the registration, of the registrant's ownership of the trademark
and of the exclusive right to the use thereof.20 Such presumption, just like the presumptive
regularity in the performance of official functions, is rebuttable and must give way to
evidence to the contrary. Here, respondent's own witness, Ramon Syhunliong, testified that
a jeepney signboard artist allegedly commissioned to create the mark and logo submitted
his designs only in December 1982. This was two-and-a-half months after the filing of the
respondent's trademark application on October 18, 1982 with the BPTTT. It was also only in
December 1982 when the respondent's restaurant was opened for business. Respondent
cannot now claim before the Court that the certificate of registration itself is proof that the
two-month prior use requirement was complied with, what with the fact that its very own
witness testified otherwise in the trial court. And because at the time (October 18, 1982) the
respondent filed its application for trademark registration of the "Shangri-La" mark and "S"
logo, respondent was not using these in the Philippines commercially, the registration is void

SHANGRI-LA vs. DEVELOPERS GROUPOF COMPANIES, INC.

January 22, 2007

G.R. No. 159938

Before the Court is this Motion for Reconsideration filed by respondent Developers Group of
Companies, Inc. (DGCI) praying for the reversal of this Court's Decision1 of March 31, 2006,
the dispositive portion of which reads:
WHEREFORE, the instant petition is GRANTED. The assailed Decision and Resolution of the
Court of Appeals dated May 15, 2003 and September 15, 2003, respectively, and the
Decision of the Regional Trial Court of Quezon City dated March 8, 1996 are hereby SET
ASIDE. Accordingly, the complaint for infringement in Civil Case No. Q-91-8476 is ordered
DISMISSED.
In its motion, respondent-movant DGCI raises the following grounds:
1. The certification of non-forum shopping submitted by petitioners is insufficient;
2. The word "Shangri-La" and "S" logo were adopted and used by the Kuok Group as
part of their corporate names and the names of their hotels;
3. Petitioners' claim of legal and beneficial ownership of mark and logo is baseless and
unwarranted;
4. Change of theory from owner to one who may be damaged as entitled to relief is not
allowable;
5. Finding of registration in patent offices in different countries around the world is
inaccurate;
6. DGCI's registration of the "Shangri-La" mark and the "S" logo is valid because there
was at least two months use thereof prior to application;
7. Section 2-A of R.A. No. 166 requires the actual commercial use of trademarks in the
Philippines pursuant to the principle of territoriality applicable to trademarks. Hence,
petitioners' use of subject marks outside of Philippine territory did not confer on them
any ownership rights thereto under Philippine laws;
8. The Regional Trial Court and the Court of Appeals' failure to find any bad faith on the
part of DGCI is conclusive on the Supreme Court;
9. DGCI's use of the subject marks in the Philippines is entitled to protection under the
territoriality principle of trademarks.

The bulk of the aforementioned grounds is a mere rehash of movants previous arguments.
While DGCI is correct in stating that a motion for reconsideration, by its very nature, may
tend to dwell on issues already resolved in the decision sought to be reconsidered and that
this should not be an obstacle for a reconsideration, the hard reality is that movant has
failed to raise matters substantially plausible or compellingly persuasive to warrant the
desired course of action.
Considering that the grounds presently raised have been sufficiently considered, if not
squarely addressed, in the subject Decision, it behooves movant to convince the Court that
certain findings or conclusions in the Decision are contrary to law. As it is, however, the
instant motion does not raise any new or substantial legitimate ground or reason to justify
the reconsideration sought.
Movant DGCI would make capital on the alleged danger the subject Decision might wreak
upon Philippine trademark law, claiming that the decision in question would render nugatory
the protection intended by the trademark law to all Philippine trademark registrants. This
assertion is a baseless and sweeping statement. The interpretation of Republic Act No. 166
in the Decision does not in any way diminish the protection afforded to valid trademark
registrations made under said law. It was glaringly obvious, however, from the testimony of
movants own witness that DGCIs registration of the subject mark and logo was void due to
the existence of bad faith and the absence of the requisite 2-month prior use. Despite
movant's melodramatic imputation of an abandonment of the territoriality principle, the
Decision actually upholds the principle but found that respondent DGCI was not entitled to
protection thereunder due to the double infirmity which attended its registration of the
subject mark and logo.
Anent DGCI's assertion of a change of theory on the part of the petitioners, suffice it to say
that the latter have never budged from seeking relief as rightful, legal and/or beneficial
owners of the mark and logo in dispute. The Decision ruled favorably on the veracity of the
petitioners' claim:
xxx It would be a great injustice to adjudge the petitioners guilty of infringing a mark when
they are actually the originator and creator thereof.
Nor can the petitioners' separate personalities from their mother corporation be an obstacle
in the enforcement of their rights as part of the Kuok Group of Companies and as official
repository, manager and operator of the subject mark and logo. Besides, R.A. No. 166 did
not require the party seeking relief to be the owner of the mark but "any person who
believes that he is or will be damaged by the registration of a mark or trade name."
Clearly, from the word "Besides" used in the context of the aforequoted paragraph, all that
the Decision says is that even if petitioners were not the owners, they would still have a
right of action under the law. There was never an attempt on their part at an eleventh-hour
change of theory, as movant DGCI wishes to portray.
WHEREFORE, the instant motion for reconsideration is DENIED for lack of merit.

TwoPesos,Inc.v.TacoCabana,Inc.505U.S.763(1992)
Facts: Since 1975, Taco Cabana, Inc., (Taco Cabana), operated a chain of fast-food Mexican
restaurants in Texas. Its restaurants provide a festive eating atmosphere of interior dining
and patio areas decorated with artifacts, bright colors, paintings, and murals. The exterior of
its buildings has a vivid color scheme using top border paint and neon stripes. Bright
awnings and umbrellas continue the theme.
Beginning in 1985, Two Pesos, Inc., (Two Pesos), opened a chain of competing Mexican fastfood restaurants in Texas. When Two Pesos adopted a motif similar to Taco Cabana's, Taco
Cabana sued Two Pesos, alleging trade dress infringement in violation of the Lanham
Trademark Act. Two Pesos argued that Taco Cabana's trade dress should not be protected
because it had not yet acquired a secondary meaning. The court found that although Taco
Cabana's trade dress had not yet acquired a secondary meaning, it was nonetheless
distinctive and therefore protected. The court of appeals affirmed. Two Pesos appealed to the
U.S. Supreme Court.
Issue. Is distinctive trade dress protectable under the Lanham Trademark Act without a
showing that it has acquired a secondary meaning?

Held: Trade that is inherently distinctive is protectable under 43(a) without a showing that
it has acquired secondary meaning, since such trade dress itself is capable of identifying
products or services as coming from a specific source. This is the rule generally applicable to
trademarks, see, e. g., Restatement (Third) of Unfair Competition 13, pp. 37-38, and the
protection of trademarks and of trade dress under 43(a) serves the same statutory
purpose of preventing deception and unfair competition. There is no textual basis for
applying different analysis to the two. Section 43(a) mentions neither and does not contain
the concept of secondary meaning, and that concept, where it does appear in the Lanham
Act, is a requirement that applies only to merely descriptive marks and not to inherently
distinctive ones. Engrafting a secondary meaning requirement onto 43(a) also would make
more difficult the identification of a producer with its product and thereby undermine the
Lanham Act's purposes of securing to a mark's owner the goodwill of his business and
protecting consumers' ability to distinguish among competing producers. Moreover, it could
have anticompetitive effects by creating burdens on the startup of small businesses.
Petitioner's suggestion that such businesses be protected by briefly dispensing with the
secondary meaning requirement at the outset of the trade dress' use is rejected, since there
is no basis for such requirement in 43(a).
Opinion. White, Justice. Trade dress is the total image of the business. Taco Cabana's trade
dress may include the shape and general appearance of the exterior restaurant, the
identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to
serve food, the servers' uniforms and other features reflecting on the total image of the
restaurant. The trade dress of a product is essentially its total image and overall
appearance.
Taco Cabana's trade dress was protected if it either was inherently distinctive or had
acquired a secondary meaning. Trademark law requires a demonstration of secondary
meaning only when the claimed trademark is not sufficiently distinctive of itself to identify
the producer. The legal recognition of an inherently distinctive trademark or trade dress
acknowledges the owner's legitimate proprietary interest in its unique and valuable
informational device, regardless of whether substantial consumer association yet bestows
the additional empirical protection of secondary meaning. The user of such a trade dress
should be able to maintain what competitive position it has and continue to seek wider
identification among potential customers.
We see no basis for requiring secondary meaning for inherently distinctive trade dress
protection. Adding a secondary meaning requirement could have anticompetitive effects,
creating particular burdens on the start-up of small companies. It would present special
difficulties for a business, such as Taco Cabana, that seeks to start a new product in a limited
area and then expand into new markets. Denying protection for inherently distinctive trade
dress until after secondary meaning has been established would allow a competitor, which
has not adopted a distinctive trade dress of its own, to appropriate the originator's dress in
other markets and to deter the originator from expanding into and competing in these areas.

WAL-MART STORES, INC. v. SAMARA BROTHERS, INC. March 22, 2000

Facts: Respondent Samara Brothers, Inc., designs and manufactures a line of children's
clothing. Petitioner Wal-Mart Stores, Inc., contracted with a supplier to manufacture outfits
based on photographs of Samara garments. Mter discovering that Wal-Mart and other
retailers were selling the so-called knockoffs, Samara brought this action for, inter alia,

infringement of unregistered trade dress under 43(a) of the Trademark Act of 1946 (Lanham
Act). The jury found for Samara. Wal-Mart then renewed a motion for judgment as a matter
of law, claiming that there was insufficient evidence to support a conclusion that Samara's
clothing designs could be legally protected as distinctive trade dress for purposes of 43(a).
The District Court denied the motion and awarded Samara relief. The Second Circuit affirmed
the denial of the motion.
Issue: Is a product's design is distinctive, and therefore protectible, from "knockoffs" in an
action for infringement of unregistered trade dress under section 43(a) of the Trademark Act
of 1946?
Held: In a 43(a) action for infringement of unregistered trade dress, a product's design is
distinctive, and therefore protectible, only upon a showing of secondary meaning.
(a) In addition to protecting registered trademarks, the Lanham Act, in 43(a), gives a
producer a cause of action for the use by any person of "any ... symbo[l] or device ... likely
to cause confusion ... as to the origin ... of his or her goods." The breadth of the confusionproducing elements actionable under 43(a) has been held to embrace not just word marks
and symbol marks, but also "trade dress"-a category that originally included only the
packaging, or "dressing," of a product, but in recent years has been expanded by many
Courts of Appeals to encompass the product's design. These courts have correctly assumed
that trade dress constitutes a "symbol" or "device" for Lanham Act purposes. Although
43(a) does not explicitly require a producer to show that its trade dress is distinctive, courts
have universally imposed that requirement, since without distinctiveness the trade dress
would not "cause confusion ... as to ... origin," as 43(a) requires. In evaluating
distinctiveness, courts have differentiated between marks that are inherently distinctive-i. e.,
marks whose intrinsic nature serves to identify their particular source-and marks that have
acquired distinctiveness through secondary meaning-i. e., marks whose primary
significance, in the minds of the public, is to identify the product's source rather than the
product itself. This Court has held, however, that applications of at least one category of
mark-color-can never be inherently distinctive, although they can be protected upon a
showing of secondary meaning.
(b) Design, like color, is not inherently distinctive. The attribution of inherent distinctiveness
to certain categories of word marks and product packaging derives from the fact that the
very purpose of attaching a particular word to a product, or encasing it in a distinctive
package, is most often to identify the product's source. Where it is not reasonable to assume
consumer predisposition to take an affixed word or packaging as indication of source,
inherent distinctiveness will not be found. With product design, as with color, consumers are
aware of the reality that, almost invariably, that feature is intended not to identify the
source, but to render the product itself more useful or more appealing.
(c) Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S. 763, does not foreclose the Court's
conclusion, since the trade dress there at issue was restaurant decor, which does not
constitute product design, but rather product packaging or else some tertium quid that is
akin to product packaging and has no bearing on the present case. While distinguishing Two
Pesos might force courts to draw difficult lines between product-design and productpackaging trade dress, the frequency and difficulty of having to distinguish between the two
will be much less than the frequency and difficulty of having to decide when a product
design is inherently distinctive. To the extent there are close cases, courts should err on the
side of caution and classify ambiguous trade dress as product design, thereby requiring
secondary meaning. Reversed and remanded.

Zazu Designs v. L'Oreal, S.A., United States Court of Appeals for the Seventh
Circuit, 979 F2d 499 (7th Cir. 1992)
Comair, a United States licensee of L'Oreal in France, wanted to market hair coloring
products. L'Oreal hired Wordmark to come up with a name, and it suggested ZAZU. L'Oreal
searched and found that Riviera Slacks, Inc. held a federal trademark registration for the
name for clothing; L'Oreal paid Riviera Slacks $125,000 for a covenant not to sue if L'Oreal
used the name. L'Oreal also found Zazu Hair Designs (here "ZHD"), a hair salon in Hinsdale,
Illinois which had registered the trade name as a service name in Illinois. L'Oreal repeatedly
called and visited to see if the salon sold hair products; ZHD stated that it did not, but
intended to do so. L'Oreal applied for a federal registration on June 12, 1986 after having
shipped some of its ZAZU product across state lines to be able to make the federal
application. Unbeknownst to L'Oreal, ZHD had started selling some hair products to its
customers in the store and had shipped some samples to friends in Texas and Florida. Do
ZHD's sale of hair products under the ZAZU name before L'Oreal's registration give it
national trademark rights?
Held: Easterbrook: No. "Only active use allows consumers to associate a mark with
particular goods and notifies other firms that the mark is so associated. But use sufficient
to register a mark that soon is widely distributed is not necessarily enough to acquire rights
in the absence of registration. The Lanham Act allows only trademarks 'used in commerce'
to be registered. 15 U.S.C. 1051(a)." Here selling a few products to friends in other states
was not enough to provide national trademark protection absent registration. Does L'Oreal's
knowledge of ZHD's intention to create hair products prevent it from using the ZAZU name?
Held No; to hold otherwise would penalize entities for gathering knowledge and "ignorance
would be rewarded." Intent establishes no right to a mark; only use does. "Because the mark
was not registered for use in conjunction with hair products, any knowledge L'Oreal may
have had of ZHD's plans is irrelevant."
Dissent Cudahay: By ordering lots of bottles and making sales to customers, many of whom
came from out of state, ZHD had more than de minimis use. L'Oreal knew of ZHD's intent, so
it acted out of bad faithit paid Riviera Slacks to preclude its acting on its intention, after
all, and clothing is a lot farther from hair products than is a hair salon. "A service mark can
be infringed by its use on a closely related product."
In re Nantucket, Inc., United States Court of Customs and Patent Appeals, 677 E2d
95 (C. C.PJL 1982)
North Carolina company Nantucket, Inc. tried to register a trademark NANTUCKET for men's
shirts. The Trademark Trial and Appeal Board refused the registration under 2(e)(2) of the
Lanham Act, 15 U.S.C. 1052(e)(2) which allows rejection of marks if they are "primarily
geographically deceptively misdescriptive." The board determined that, as Nantucket is a
place and the shirts don't come from Nantucket, the trademark can be denied. Must the
public's association of the geographical designation with the products in question be
considered when determining the prescription of the Lanham Act?
Held Markey: Yes. The board ignored the Lanham Act's designation of "deceptively
misdescriptive," for if the public does not associate a product with a geographical
designation, the "misdescriptive" phrase is not "deceptive." Here the public does not

associate shirts with Nantucket (i.e. Nantucket is not particularly known for producing shirts),
and hence the mark is not deceptively misdescriptive.

PARK 'N FLY, INC., Petitioner, v. DOLLAR PARK AND FLY, INC.
Facts: Petitioner operates long-term parking lots near airports in St. Louis, Cleveland,
Houston, Boston, Memphis, and San Francisco. In 1969, petitioner applied to the United
States Patent and Trademark Office to register a service mark consisting of the logo of an
airplane and the words "Park 'N Fly." The registration issued in 1971, and nearly six years
later petitioner filed an affidavit with the Patent and Trademark Office to establish the
incontestable status of the mark under 33(b) of the Trademark Act of 1946 (Lanham Act),
which provides that "registration shall be conclusive evidence of the registrant's exclusive
right to use the registered mark," subject to the provisions of 15 and 33(b) itself.
Respondent provides long-term airport parking services called "Dollar Park and Fly," but only
operates in Portland, Ore. Petitioner filed an infringement action in Federal District Court
seeking to enjoin respondent from using the words "Park and Fly" in connection with its
business. The District Court granted the injunction, rejecting, inter alia, respondent's defense
that petitioner's mark is unenforceable because it is merely descriptive. The Court of
Appeals reversed, holding that incontestability provides a defense against the cancellation
of a mark but may not be used offensively to enjoin another's use, that, under this analysis,
petitioner could obtain an injunction only if its mark would be entitled to continued
registration without regard to its incontestable status, and that therefore respondent could
defend by showing that the mark was merely descriptive. The court then determined that
petitioner's mark is merely descriptive and respondent should not be enjoined from using
the words "Park and Fly."
Held: Reversed and remanded. The holder of a registered mark may rely on incontestability
to enjoin infringement, and an infringement action may not be defended on the grounds that
the mark is merely descriptive.
a) The Lanham Act nowhere distinguishes between a registrant's offensive and
defensive use of an incontestable mark, but, on the contrary, 33(b)'s declaration
that the registrant has an "exclusive right" to use the mark indicates that
incontestable status may be used to enjoin infringement. The Act's language also
refutes any conclusion that an incontestable mark may be challenged as merely
descriptive.
b) Nothing in the Lanham Act's legislative history supports a departure from the plain
language of the provisions concerning incontestability. Indeed, a conclusion that
incontestable status may provide the basis for enforcement of the registrant's
exclusive right to use a mark promotes the Act's goals in providing national
protection of trademarks in order to secure to the mark's owner the goodwill of his

business and to protect the ability of consumers to distinguish among competing

producers.
c) There is no merit to respondent's argument that the Court of Appeals' decision should
be upheld because trademark registrations are issued after an ex parte proceeding
and generally without inquiry into the merits of an application. The facts of this case
belie the suggestion that registration is virtually automatic, and respondent is simply
wrong to suggest that third parties do not have an opportunity to challenge
applications for trademark registration. The power of courts under 34 of the
Lanham Act to grant injunctions "according to principles of equity" does not
encompass a substantive challenge to the validity of an incontestable mark on the
grounds that it lacks secondary meaning. Otherwise, the meaning of "equity" would
be expanded to the point of vitiating the Act's more specific provisions. Similarly, the
power of courts to cancel registrations and "otherwise rectify the register" under 37
of the Act must be subject to the specific provisions concerning incontestability.
d) The Court of Appeals was not justified in relying on its decision in Tillamook County
Creamery v. Tillamook Cheese & Dairy Assn., 345 F.2d 158 (9 Cir.1965), cert. denied,
382 U.S. 903, 86 S.Ct. 239, 15 L.Ed.2d 157, for the proposition that a registrant may
not rely on incontestability to enjoin the use of a mark

ETEPHA, A.G. vs. DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC.

(G.R. No. L-20635, March 31, 1966)
FACTS: Respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought
registration of trademark "Atussin" placed on its "medicinal preparation of expectorant
antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of
cough". The trademark is used exclusively in the Philippines since January 21,
1959.Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected claiming
that it will be damaged because Atussin is so confusedly similar to its Pertussin used on a
preparation for the treatment of coughs, that the buying public will be misled into believing
that Westmont's product is that of petitioner's which allegedly enjoys goodwill. The Director
of Patents ruled that the trademark ATUSSIN may be registered even though PERTUSSIN had
been previously registered from the same office, hence, this appeal.
ISSUE: Whether or not ATUSSIN may be registered?
HELD: We are to be guided by the rule that the validity of a cause for infringement is
predicated upon colorable imitation. The phrase "colorable imitation" denotes such a "close
or ingenious imitation as to be calculated to deceive ordinary persons, or such a
resemblance to the original as to deceive an ordinary purchaser, giving such attention as a
purchaser usually gives, and to cause him to purchase the one supposing it to be the other.
A practical approach to the problem of similarity or dissimilarity is to go into the whole of the
two trademarks pictured in their manner of display. Inspection should be undertaken from
the viewpoint of a prospective buyer. Confusion is likely between trademarks, however, only

if their over-all presentations in any of the particulars of sound, appearance, or meaning are
such as would lead the purchasing public into believing that the products to which the marks
are applied emanated from the same source. We concede the possibility that buyers might
be able to obtain Pertussin or Attusin without prescription. When this happens, then the
buyer must be one thoroughly familiar with what he intends to get, else he would not have
the temerity to ask for a medicine specifically needed to cure a given ailment. In which case,
the more improbable it will be to palm off one for the other. For a person who purchases with
open eyes is hardly the man to be deceived. For the reasons given, the appealed decision of
the respondent Director of Patents giving due course to the application for the registration
of trademark ATTUSIN is hereby affirmed. Cost against petitioner. So ordered.

GUILLERMO BAXTER AND G. GAXTER & CO. vs. ZOSIMO ZUAZUA, ET AL.
Guillermo Baxter, the plaintiff in this case, after complying with the necessary formalities,
secured from the Government of the Philippine Islands, on the 30th day of August, 1894, the
right to use the trade-mark described as "Agua de Kananga", as well as the labels annexed
thereto, a facsimile of which was attached to the complaint filed in this case.
On the 23rd day of July, 1901, the said Guillermo Baxter associated himself with certain
merchants of the city of Manila for the purpose of organizing a limited partnership for a
period of five years, under the firm name and style of "Baxter & Company," the object of
which said partnership was the manufacture of toilet water and perfumery. Guillermo Baxter
contributed to the partnership, of which he was elected manager and administrator, the
business which is now the basis of that carried on by the said partnership; also his title to
certain trade-marks, among them the one described as "Agua de Kananga." For this reason
the proprietor of the said trade-mark was joined as a party plaintiff with the partnership of
Baxter & Co., the firm directly interested in the use and exploitation of the said trade-mark.
This trade-mark is actually used by the plaintiffs to designate the ownership and origin of a
certain toilet water manufactured and sold by them under the said name of "Agua de
Kananga."
The plaintiffs brought this action for unfair competition under section 7 of Act No. 666 of the
Philippine Commission. It is alleged that the defendant Zosimo Zuazua, for the purpose of

imitating and fraudulently simulating the "Agua de Kananga" manufactured by plaintiffs,

placed on the market for sale a certain toilet water under the name and denomination of
"Kananga Superior" and "Kanangue", and disposed of the same in bottles with labels similar
to those used by the plaintiffs for their own goods. It was further alleged that the other
defendants were engaged in retailing to the public the product manufactured by the
defendant Zuazua. Certain facsimiles of the labels used by the said Zuazua were also
attached to the complaint.
Zuazua admitted that he had manufactured certain toilet water under the denomination of
"Kananga Superior" and "Kanangue", and that he had also sold the same in bottles labeled
as alleged in the complaint. As to the bottles, it was stipulated, page 19 of the bill of
exceptions, that "those used by the defendant Zuazua, as well as those used by the
plaintiffs, were universally used by all persons engaged in the manufacture of toilet water,
and that the fact that they were used by the defendant did not, of itself, constitute a
violation of the rights of the plaintiffs, nor a fraud or deceit upon the public."
The trial court entered judgment enjoining the defendants from the further manufacture of
toilet water under the trade-mark of "Kananga Superior" and "Kananga", and the selling of
the same in bottles of the size and form of those introduced in evidence at the trial, labeled
as aforesaid, and for costs. The said judgment was based upon the ground that the labels,
words, and bottles in question, taken together, were an imitation of those used by the
plaintiffs, and tended to deceive the public by making it appear that the toilet water
manufactured and sold by the defendants was the same toilet water manufactured by the
plaintiffs, and that the use of the said labels, words, and bottles was therefore illegal, and
constituted a violation of plaintiff's rights.lawphil.net
The trial court found also, as a conclusion of law, that the grant by the Government of the
Philippine Islands did not give the plaintiffs an exclusive right to the use of the word
"Kananga," but to the phrase "Agua de Kananga;" that "Kananga" was the name of a wellknown tree of the Philippine Islands, and held that, although the plaintiffs had a right to the
exclusive use of the phrase "Agua de Kananga," it did not follow that they had an exclusive
right to the use of any of the words contained in the said phrase.
The plaintiffs, as well as the defendant Zosimo Zuazua, excepted to the judgment of the trial
court, upon different grounds. The defendant moved for a new trial in the Court of First
Instance, upon the ground that the judgment was contrary to the weight of evidence.
The main reliance of the defendant is that the labels used on his goods differed from those
used by the plaintiffs as to the drawing, color, and general appearance of the design, and he
denies emphatically that he had any intention to deceive the public thereby, alleging that
the people clearly distinguished the goods of the plaintiffs from those of the defendants, the
former being known from the picture on the bottle as the "Payo Brand" and the latter as the
"Seorita Brand."
The alleged similarity or resemblance between the labels is a question of fact which can be
decided by a mere inspection of the same. After a careful comparison of the labels used by
the defendant with those used by the plaintiffs, we have unanimously arrived at the
conclusion that there is no identity nor even any similarity whatsoever between them, either
in detail or as a whole. The difference between the two is so apparent that it can be readily
noticed. We do not believe that the public could have been deceived by the appearance of
the labels to the extent of taking the goods of the plaintiffs for those manufactured and sold
by the defendant. We make no finding as to the bottles because they were not forwarded to
this court for inspection, and, moreover, because it was stipulated by the parties that the
said bottles were universally used by all manufacturers of toilet water, and that their
particular use by defendant was not, therefore, an act of fraud or deceit practiced by him
upon the plaintiffs or the public generally.

Section 7 of Act No. 666 provides in part as follows:

And in order that the action shall lie under this section, actual intent to deceive the public
and defraud a competitor shall affirmatively appear on the part of the person sought to be
made liable, but such intent may be inferred from similarity in the appearance of the goods
as packed or offered for sale to those of the complaining party.
The plaintiffs have not proved, or attempted to prove, the fraudulent intent attributed to the
defendant Zuazua by any means other that the alleged similarity between the labels used
by him and those used by the defendant to designate his own goods. There being no such
similarity between the labels, we find no reason for even inferring that the defendant had
any such intention, and therefore the action brought by the plaintiffs in this case can not be
maintained under the law. The judgment appealed from should be reversed in so far as it
holds that such an action lies in this case.
We agree, however, with the trial court, that the ownership of the trade-mark "Agua de
Kananga" did not give the plaintiffs a right to the exclusive use of the word "Kananga."
The defendant alleged in his answer that the word "Kananga" could not be used as a trademark because it was the name of a flower. It is stated in the judgment of the court below
that the word "Kananga" represents the name of a well-known tree in the Philippines. This
finding has not been disputed by the plaintiffs, who simply allege that the spelling of the
said word indicates that it is foreign to the Spanish language. This, by the way, would not
prove, even though it were true, that the said word was not in fact the name of a flower of
the Philippine Islands, as set out in the judgment. It is apparent, therefore, that the said
word could not be used exclusively as a trade-mark, any more than could the words "sugar,"
"tobacco," or "coffee." The law is clear and conclusive upon the subject. "A designation or
part of a designation," says section 2 of Act No. 666, "which relates only to the name,
quality, or description of the merchandise ... can not be the subject of a trade-mark." This
provision is in conformity with the provisions of paragraph 3 of article 5 of the royal decree
of the 26th of October, 1888, under which Guillermo Baxter secured the registration of his
trade-mark. The said royal decree provided that the denominations generally used in
commerce for the purpose of designating a class of goods could not be the subject of labels
or trade-marks.
The plaintiffs allege that the defendants did not prove, or even attempt to prove, that the
goods manufactured by them had anything to do with the "Kananga" flower. If the goods in
question had really nothing to do with the said flower, then it was not lawful for the plaintiffs
to sell them to the public under the name of "Agua de Kananga," because the people might
be deceived as to the nature of the goods, taking for "Kananga" an article which, as a matter
of fact, had nothing to do with the said flower. Both plaintiffs and defendant would be
exactly in the same position as one who should sell goods as "coffee" or "tobacco" which
were neither one nor the other. Such being the case the plaintiffs could not have maintained
this action for unfair competition, because under section 9 of said Act No. 666 such action
would not lie "when the trade-mark or designation of its origin, ownership, or manufacture
has been used by the claimant for the purpose of deceiving the public as to the nature of the
goods in which he deals, his business, profession, or occupation." The law can not and does
not permit that trade-marks shall contain indications capable of deceiving the public as to
the nature of the goods. This would be exactly the case if under the trade-mark of "Agua de
Kananga" the plaintiffs should sell goods that had in fact nothing to do, as they say, with the
"Kananga" flower. However the contention of the plaintiffs may be considered, the proof is
nevertheless insufficient to show that the word "Kananga," the name of a flower, can be
appropriated as the subject of a trade-mark, under the law.
The defendant prays that judgment be entered against the plaintiffs for damages incurred
by reason of the preliminary injunction, still in force, issued by the trial court on the 18th day

of June, 1903. In his answer the defendant estimates these damages at 800 pesos per
month. He did not, however, introduce evidence in support of his allegation, and no order
can be made by the court upon this matter. The foregoing disposes of the other questions
raised by the parties in their brief in this court.
The judgment appealed from is hereby reversed, and another judgment entered in favor of
the defendant and appellant Zosimo Zuazua, dissolving the preliminary injunction heretofore
issued by the court below on the 18th of June, 1903. The finding of the court that the
plaintiffs have no right to the exclusive use of the word "Kananga" is sustained. Each party
shall pay its own costs. After the expiration of ten days from the date hereof let judgment be
entered accordingly and the case remanded to the trial court. So ordered.

COMPAIA GENERAL DE TABACOS DE FILIPINAS vs. ALHAMBRA CIGAR AND

CIGARETTE MANUFACTURING CO.
FACTS: It is admitted that plaintiffs trade name as evidenced by the certificate issued
under the Spanish regime, consists solely of the words La Flor de la Isabela. Plaintiff does
not claim that the word Isabela has been registered by it as a trade name or that it has a
title from any source conferring on it the exclusive right to use that word.
Defendant began the manufacture of cigarettes, offering them to the public in packages on
the front side of each of which appeared the words Alhambra Isabelas. Action is brought to
enjoin the defendant from using the word Isabelas.
The exclusive right to use this name, plaintiff claim arises from two causes: First, the
contraction of the phrase La Flor de la Isabela into the word Isabela by popular
expression and use; and second, the use for more than twenty years of the word Isabela.
Judgment was for plaintiff and defendant appealed.
ISSUE: Whether defendants use of the word Alhambra Isabela is an infringement to the
use of trade name.
HELD: The statute prohibits the registration of a trade name when the trade name
represents the geographical place of production or origin of the products or goods to which
the trade name refers, or when it is merely the name, quality or description of the
merchandise with respect to which the trade name is to be used. In such cases, therefore, no
trade name can exist.
The two claims of the plaintiff are identical; for, there could have been no contraction
brought about by popular expression except after long lapse of time. The contraction of the
phrase in to the word would create no rights, there being no registration, unless it resulted
from long use.
The opinion of the plaintiff must fail. It shows that in not a single instance in the history of
the plaintiff corporation, so far as is disclosed by the record, has a package of its cigarettes
gone into the market, either at wholesale or retail with the word Isabela alone on the
package as a separate or distinct word or name.
Even admitting that the word Isabela may have been appropriable by plaintiff as a trade
name at the time it began to use it, the evidence showing that it had been exclusively
appropriated by the plaintiff would have to be very strong to establish the fact of
appropriation and the right to exclusive use. The law as it stands and has stood since the
Royal Decree of 1888 prohibits the use of a geographical name as a trade name. The
judgment appealed from is reversed.

Ana Ang vs. Toribio Teodoro G.R. No. L-48226 December 14, 1942
Facts: Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark
and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs
since 1910. On September 29, 1915, he formally registered it as trade-mark and as tradename on January 3, 1933.
Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April
11, 1932, and established a factory for the manufacture of said articles in the year 1937.
The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the grounds that
the two trademarks are dissimilar and are used on different and non-competing goods; that
there had been no exclusive use of the trade-mark by the plaintiff; and that there had been
no fraud in the use of the said trade-mark by the defendant because the goods on which it is
used are essentially different from those of the plaintiff.
The Court of Appeals reversed said judgment, directing the Director of Commerce to cancel
the registration of the trade-mark "Ang Tibay" in favor of petitioner, and perpetually
enjoining the latter from using said trade-mark on goods manufactured and sold by her.
Thus, this case, a petition for certiorari.
Issue: Are the goods or articles or which the two trademarks are used similar or belong to
the same class of merchandise?
Ruling: Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to
the same class of merchandise as shoes and slippers. They are closely related goods.
The Supreme Court affirmed the judgment of the Court of Appeals and added that although
two non-competing articles may be classified under to different classes by the Patent Office
because they are deemed not to possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class if the simultaneous use on
them of identical or closely similar trademarks would be likely to cause confusion as to the
origin, or personal source, of the second users goods. They would be considered as not
falling under the same class only if they are so dissimilar or so foreign to each other as to
make it unlikely that the purchaser would think that the first user made the second users
goods.

ARCE SONS AND COMPANY, vs. SELECTA BISCUIT COMPANY, INC., ET AL G.R. No. L14761 January 28, 1961
Facts: Ramon Arce, predecessor-in-interest of herein petitioner, started a milk business in
1933 using the name SELECTA as trade-name as well as trade-mark. He sold his milk
products in bottles covered with caps on which the words SELECTA FRESH MILK were
inscribed. For the span of more than 20 years, his business expanded and sold, in addition to
his milk product, ice cream, sandwiches and other food products. His products were
packaged in a special containers with the word SELECTA written in the packaging. Several
new products were eventually added to his line of products such as biscuits, bakery items,
and assorted cakes and pastries. The word SELECTA was even written on the signboards of
his business establishments and upon the vehicles that were used for the delivery of his
products. Then his business was acquired by petitioner Arce Sons and Co. which eventually
put a first class restaurant aside from the manufacture of the aforementioned food products.
Herein respondent on the other hand, was organized and registered as corporation under the
name and style of Selecta Biscuits Co., Inc. The name Selecta was chosen by the Chinese
organizers of the corporation as a translation of a Chinese word Ching Suan. Its business
started as a biscuit factory and its products such as biscuits and crackers were specially
wrapped in cellophane pouches and place inside a tin can. Such products of the respondent
were sold throughout the Philippines. The respondent filed a petition with the Philippine
Patent Office for the registration of the word SELECTA as trade-mark to be use in its bakery
products. The petition was referred to an examiner for evaluation who found out that the
trademark sought to be registered resembles the word SELECTA used by the petitioner so
that I ts use by the respondent will cause confusion as to the origin of the irrespective goods.
So the examiner recommended for the disapproval of the application. However, Patent Office
only ordered the publication of the application.
In due time, petitioner filed an opposition to the registration on the ground that the mark
SELECTA has been continuously used by it from the time of its organization and even prior
thereto by Ramon Arce, thus the said mark has already become identified with its name and
business. Petitioner also contends that the use of SELECTA by the respondents as trademark
constitutes as an unfair competition with its products thus resulting in confusion in trade and
that the product of the respondent might be mistaken by the public as its products.
The Director of Patents rendered a decision dismissing petitioners opposition stating that
the registration of the trade-mark SELECTA in favour of the respondent will not cause
confusion or mistake nor will deceive the purchasers as to cause damage to petitioner.
Hence, this present petition for review.

Issue: Whether or not the use of the trade-mark SELECTA by the respondent will result
confusion to the prejudice of Arce Sons and Co.
Held: Yes. Trademark is a distinctive mark of authenticity through which the merchandise of
a particular producer or manufacturer may be distinguished from that of others, and its sole
function is to designate distinctively the origin of the products to which it is attached.
Verily, the word SELECTA has been chosen by petitioner and has been inscribed on all its
products to serve not only as a sign or symbol that may indicate that they are manufactured
and sold by it but as a mark of authenticity that may distinguish them from the products
sold and manufactured by other merchants or businessmen. The word 'SELECTA', it is true,
may be an ordinary or common word in the sense that may be used or employed by any one
in promoting his business or enterprise, but once adopted or coined in connection with one's
business as an emblem, sign or device to characterize its products, or as a badge of
authenticity, it may acquire a secondary meaning as to be exclusively associated with its
products and business. In this sense, its used by another may lead to confusion in trade and
cause damage to its business. And this is the situation of petitioner when it used the word
'SELECTA' as a trade-mark. In this sense, the law gives its protection and guarantees its used
to the exclusion of all others. Thus, the Director of Patent committed an error in dismissing
the opposition of the petitioner and in holding that the registration of the trademark
SELECTA in favour of respondent will not cause damage to petitioner. Decision of the
Director of Patent office is reversed

Kabushi Kaisha Isetan vs. lAC GR 75420, 15 November 1991

Facts: Kabushi Kaisha Isetan is a Japanese corporation, and owner of the trademark Isetan
and the Young leave design. Isetann Department Store, on the other hand, is a domestic
corporation, and owner of the trademark Isetann and flover design. In 1980, Kabushi
Kaisha Isetan field petitions for the cancellationof the supplemental registration of Isetann
with the Philippine Patent Office. It also filed for the cancellation of the mark Isetan from the
corporate name of Isetann Department Store with the SEC. Both the SEC and the Director of
Patents, eventually, ruled against Kabushi Kaisha Isetan. It appealed to the intermediate
Appellate Court, which denied the petition for being filed out of time.
Issue: Whether Kabushi Kaisha Isetan has the right to seek for the cancellation of the word
Isetan from the corporate name of Isetann Department Store.
Held: No. A Fundamental principle in Trademark Law is that the actual use in commerce in
the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a
tradename. Kabushi Kaisha Isetan has never conducted any business in the Philippines. It
has never promoted its trademark or tradename in the Philippines. It has absolutely no
business goodwill in the Philippines. It is unknown to Filipinos except the very few who may
have noticed it while traveling abroad. It has never paid a single centavo of tax to the
Philippine Government. Under the law, it has no right to the remedy it seeks. Isetann
Department Store is entitled to use its trademark in the Philippines.

Asia Brewery vs. CA GR 103543, 5 July 1993;

Facts: In 1988, san Miguel Corporation filed a complaint against Asia Brewery Inc. for
infringement of trademark and unfair competition on account of the latters Beer Pale Pilsen
or Beer na Beer product which has been competing with the formers San Miguel Pale Pilsen
for a share of the local beer market. The trial court ruled in favor of Asia Brewery. The
appellate court, however, over turned the trial courts ruling. Asia Brewery appealed.
Issue: Whether Asia Brewery is guilty of unfair competition, arising from the allegedly
confusing similarity in the general appearance of ABIs Beer Pale Pilsen against SMCs San
Miguel Pale Pilsen.
Held: No. The dominant feature of SMCs trademark is San Miguel Pale Pilsen while ABIs
is Beer Pale Pilsen. The word Beer does not appear in SMCs product, nor the words San
Miguel appear in ABIs product. Neither the sound, spelling or appearance can Beer Pale
Pilsen be said to be confusingly similar to San Miguel Pale Pilsen. San Miguel does not have
exclusive rights to the generic or descriptive words pale and pilsen. Neither does it have
the exclusive right to use 320 ml. steinie bottle with white rectangular label. The amber
color is a functional feature of the beer bottle as the color prevents the transmission of light
and provides the maximum protection to beer. The bottle capacity is the standard prescribed

by the Metric System Board of the Department of Trade. The white label is the most
economical to use and presents the strongest contrast to the bottle. San Miguel cannot
claim monopoly to such features as the protection provided by law is confined to nonfunctional features. Further, Beer Pale Pilsen is not being passed off as San Miguel Beer Pale
Pilsen. It does not result to confusion inasmuch as beer is ordered by brand, and is not taken
freely from supermarket shelves. The points of dissimilarity of the products outnumber their
points of similarity. The appellate court is correct in its finding that Asia Brewery does not
infringe upon SMCs trademark nor does it commit unfair competition.

Emerald Garment v CA GR 100098, 29 December 1995

Facts: HD Lee Co. owns the trademarks Lee, Lee Riders and Lee sures in both the
supplementary and principal registers, as early as 1969 to 1973. In 1981, it filed for the
cancellation for the registration of the trademark stylistic Mr. Lee, applied/owned by
Emerald Garment Manufacturing Corp. In 1988, the Director of Patents ruled in favor of HD
Lee. In 1990, the Court of Appeals affirmed the decision of the Director of Patents. Hence,
the petition for review on certiorari.
Issue: Whether the trademark stylistic Mr. Lee is confusingly similar to HD Lees
trademarks to warrant its cancellation in the supplemental Registry.
Held: No. Stylistic Mr. Lee is not a variation of the Lee mark. HD Lees variation follows the
format leeriders, leesure, and leeleens and thus does not allow the conclusion that
Stylistic Mr. Lee is another variation under HD Lees mark. Although on stylistic Mr. Lees
label, the word lee is prominent, the trademark should be considered as a whole and not
piecemeal. Further, Lee is a surname. Personal names nor surnames cannot be

monopolized as trademarks or tradenames as against others of the same name or surname.

Furthermore, inasmuch as Emerald Garment has shown the use of stylistic Mr. Lee since
1975through sales invoice from stores and retailers; and that HD Lee was not able for
transactions period to 1981; the Supreme Court allowed the use of stylistic Mr. Lee by
Emerald Garment.

Qualitex Co. v. Jacobson Products Co

Facts. Qualitex Company (Petitioner) uses a special shade of green-gold for press pads that
it sells to dry cleaning firms. Jacobson Products (Respondent) began to use the same color.
Petitioner registered the color as a trademark and then added a trademark infringement
count to an unfair competition claim in a lawsuit it had already filed against Petitioner for
use of the color. The Lanham Act gives a seller or producer the exclusive right to register a
trademark and to prevent competitors from using that trademark.
Issue. Can a color be a trademark?
Held. Yes. The language of the Act and the basic underlying principles of trademark law
seem to include color in the realm of what can qualify as a trademark.

A color is also capable of satisfying the requirement that a person use or intend to use the
mark to identify and distinguish the goods. Over time, customers may come to treat a
particular color as signifying a brand to the extent that it develops a secondary meaning.
There is no objection to the use of color alone as a trademark, when that color has attained
a secondary meaning and therefore identifies and distinguishes a particular brand. It is the
source-distinguishing ability of a mark, and not its status as a color, that permits it to
provide a financial gain to a producer and to provide a distinguishing feature for customers.
There is no objection to the use of color as a mark under the functionality doctrine of
trademark law. This doctrine prevents trademark law from inhibiting legitimate competition
by allowing a producer to control a useful product feature. A patent may be given for a
limited time over new designs or functions, but after it expires, competitors are free to use
the innovation. A product feature is functional if exclusive use of the feature would put
competitors at a significant non-reputation-related disadvantage. Sometimes color does not
play an essential role in the products use or purpose and does not affect cost or quality, so
the doctrine of functionality does not create an absolute bar to the use of color alone as a
mark.
So, color can sometimes meet the basic requirements for use as a trademark. It can be a
symbol that distinguishes a companys goods and identifies their source, without serving
any other significant function.
When a color serves as a trademark, other colors will be available for similar use by
competitors. If colors become scarce, the functionality doctrine is available to prevent
problems.
Discussion. The Lanham Act is broadly construed and so can include within its scope
almost anything. The court focuses on what the color represents and how it is viewed by
consumers, rather than on its status as a color.

Christian Louboutin, S.A vs Yves Saint Laurent America Holding, Inc.

FACTS Christian Louboutin, S.A. (Louboutin), a renowned French designer of high-fashion
footwear and accessories, appealed a decision from the U.S. District Court for the Southern
District of New York denying its motion to preliminarily enjoin Yves Saint Laurent America
Holding, Inc. (YSL), a venerated French fashion institution, from selling red shoes with red
soles as one color in a monochromatic-colored shoe collection launched early last year.

Louboutin originally brought its action against YSL in April 2011, asserting claims under the
Lanham Act for trademark infringement and counterfeiting, false designation of origin, unfair
competition, and trademark dilution based on its federal registration for the color red for
lacquered soles on footwear (the Red Sole Mark or Mark). In response, YSL asserted
counterclaims to cancel Louboutins Red Sole Mark, contending that the Mark lacked
distinctiveness and/or was merely ornamental or functional. After a limited and expedited
discovery process, the district court denied the injunction, holding that Louboutin had not
shown a likelihood of success on the merits of its claims because single-color marks in the
fashion industry are inherently functional, and, therefore, Louboutins registered
trademark would likely be held invalid. On appeal, the Second Circuit reversed the order of
the district court insofar as it held that the fashion industry was excepted from the
Supreme Courts holding on the protectability of a single color and thereby denied
trademark protection to Louboutins use of the Red Sole Mark for contrasting red lacquered
soles. The Second Circuit affirmed the district courts denial to enjoin YSL from selling
monochrome red shoes with red soles.
ANALYSIS The Second Circuit first focused its review on whether YSLs affirmative defense
of functionality rendered the Red Sole Mark incapable of trademark protection because of
the fundamental principle that functional features of goods may only be protected through
the patent system. Citing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the
Second Circuit noted that the Supreme Court specifically forbade the implementation of a
per se rule that would deny protection for the use of a single color as a trademark in a
particular industryincluding the fashion industrybecause an analysis of functionality
necessarily requires an individualized fact-based inquiry into the nature of the trademark.
Next, the Second Circuit turned its review toward whether the Red Sole Mark merited
protection as a distinctive mark that had acquired secondary meaning. The appeals court
was quick to quash the notion of inherent distinctiveness as applying to the Red Sole Mark,
reasoning that under Qualitex, a single color, standing alone, could almost never be
inherently distinctive because such marks do not automatically tell a customer that it refers
to a brand, but rather, over time, customers come to treat a particular product color as
signifying a unique source. In analyzing secondary meaning, the Second Circuit considered
several types of evidence, including consumer surveys from both parties, as well as
Louboutins extensive evidence of its advertising expenditures, media coverage, and
worldwide sales success from over twenty years of commercial use of the lacquered red
color for soles as its signature in womens high-fashion footwear, to determine that the Red
Sole Mark had indeed acquired secondary meaning. Despite finding secondary meaning, the
appeals court pointed to Louboutins failure to show that the secondary meaning of its Red
Sole Mark extended to uses in which the sole did not contrast with the upper part of a shoe
(i.e., on monochromatic red shoes). For example, of the hundreds of pictures of Louboutin
shoes submitted to the district court, only four were monochrome red. YSL, on the other
hand, had produced evidence of its sale of monochromatic red shoes, as well as other
monochromatic colored shoes since the 1970s. Based on this evidence, the Second Circuit
ordered the PTO to limit Louboutins Red Sole Mark to only those situations in which the red
lacquered outsole contrasts in color with the adjoining upper of the shoe, finding that the
Red Sole Mark was valid and enforceable only as modified. This limitation to Louboutins
registration also disposed of the Lanham Act claims brought by both parties in one clean
sweep because the red sole on YSLs monochrome shoes was neither a use of, nor
confusingly similar to, the Red Sole Mark as modified.
CONCLUSION This case is one of the few appellate court decisions addressing whether a
single color is capable of functioning as a trademark, and more specifically how fashionindustry participants may protect the distinctive features of their designs by establishing
secondary meaning, even if the distinguishing feature is just one color.

LYCEUM OF THE PHILIPPINES vs. CA

FACTS: Petitioner is an educational institution duly registered with the SEC since Sept 1950.
Before the case at bar, Petitioner commenced a proceeding against Lyceum of Baguio with
the SEC to require it to change its corporate name and adopt a new one not similar or
identical to the Petitioner. SEC granted noting that there was substantial because of the
dominant word Lyceum. CA and SC affirmed. Petitioner filed similar complaint against
other schools and obtain a favorable decision from the hearing officer. On appeal, SEC En
banc reversed the decision and held that the word Lyceum have not become so identified
with the petitioner and that the use thereof will cause confusion to the general public.
ISSUE:
a) Whether or not the corporate names of the private respondents are identical with or
deceptively similar to that of the petitioner.
b) Whether or not the use by the petitioner of Lyceum in its corporate name has been
for such length of time and with such exclusivity as to have become associated or
identified with the petitioner institution in the mind of the general public (Doctrine of
Secondary meaning).
RULING: NO to both. Under the corporation code, no corporate name may be allowed by the
SEC if the proposed name is identical or deceptively or confusingly similar to that of any
existing corporation or to any other name already protected by law or is patently deceptive,
confusing or contrary to existing laws. The policy behind this provision is to avoid fraud upon
the public, which would have the occasion to deal with the entity concerned, the evasion of
legal obligations and duties, and the reduction of difficulties of administration and
supervision over corporations. True enough, the corporate names of the parties carry the
word Lyceum but confusion and deception are precluded by the appending of geographic
names. Lyceum generally refers to a school or an institution of learning and it is natural to
use this word to designate an entity which is organized and operating as an educational
institution.
Doctrine of Secondary meaning is a word of phrase originally incapable of exclusive
appropriation, might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product.
Lyceum of the Philippines has not gained exclusive use of Lyceum by long passage of time.
The number alone of the private respondents suggests strongly that the use of Lyceum has
not been attended with the exclusivity essential for the applicability of the doctrine. It may
be noted that one of the respondents Western Pangasinan Lyceum used such term 17
years before the petitioner registered with the SEC. Moreover, there may be other schools
using the name but not registered with the SEC because they have not adopted the
corporate form of organization.

Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., GR No. 190065, August 16, 2010
Facts: Dermaline filed with the IPO an application to register the trademark Dermaline.
Myra opposed this alleging that the trademark resembles its trademark Dermalin and will
cause confusion, mistake and deception to the purchasing public. Dermalin was registered
way back 1986 and was commercially used since 1977. Myra claims that despite attempts of
Dermaline to differentiate its mark, the dominant feature is the term Dermaline to which
the first 8 letters were identical to that of Dermalin. The pronunciation for both is also
identical. Further, both have 3 syllables each with identical sound and appearance.
Issue: W/N the IPO should allow the registration of the trademark Dermaline. NO
Held: As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to prevent
third parties from using a trademark, or similar signs or containers for goods or services,
without its consent, identical or similar to its registered trademark, where such use would
result in a likelihood of confusion. In determining confusion, case law has developed two (2)
tests, the Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception. Duplication or imitation is not even
required; neither is it necessary that the label of the applied mark for registration should
suggest an effort to imitate. Relative to the question on confusion of marks and trade
names, jurisprudence noted two (2) types of confusion, viz: (1) confusion of goods (product
confusion), where the ordinarily prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other; and (2) confusion of business (source
or origin confusion), where, although the goods of the parties are different, the product, the
mark of which registration is applied for by one party, is such as might reasonably be
assumed to originate with the registrant of an earlier product, and the public would then be
deceived either into that belief or into the belief that there is some connection between the
two parties, though inexistent.
Using this test, the IPO declared that both confusion of goods and service and confusion of
business or of origin were apparent in both trademarks. While it is true that the two marks
are presented differently, they are almost spelled in the same way, except for Dermalines
mark which ends with the letter "E," and they are pronounced practically in the same
manner in three (3) syllables, with the ending letter "E" in Dermalines mark pronounced
silently. Thus, when an ordinary purchaser, for example, hears an advertisement of
Dermalines applied trademark over the radio, chances are he will associate it with Myras.
When one applies for the registration of a trademark or label which is almost the same or
that very closely resembles one already used and registered by another, the application

should be rejected and dismissed outright, even without any opposition on the part of the
owner and user of a previously registered label or trademark.
Further, Dermalines stance that its product belongs to a separate and different classification
from Myras products with the registered trademark does not eradicate the possibility of
mistake on the part of the purchasing public to associate the former with the latter,
especially considering that both classifications pertain to treatments for the skin.