One of the principal stumbling blocks in the way of the development of a consistent and satisfactory theory of trade-mark protection has been the anomalous distinction that has always been made between the so-called technical or common-law trade-mark, and the non-technical mark or tradename. This distinction, as has been pointed out previously in this Review, grew somewhat accidentally out of the supposed limitations on the jurisdiction of equity. Some of the earliest trade-mark cases proceeded on the theory that to justify the intervention of a court of equity, when the defendant was not shown to have been guilty of any fraudulent purpose in his simulation of the mark, it was necessary to show that the trade-mark user's property was being infringed upon. The necessary property interest was found in his ownership of the mark itself, rather than in the good-will which the mark symbolized and on which the mark was but a convenient means of capitalizing. If the mark was not of a kind to be capable of ownership, no redress could be had in the absence of fraud in fact. The result has been that we have developed one law for the case in which a man's legitimate expectation of custom is interfered with through the abuse of an invented mark from which it is assumed the first user may exclude all others because, due to the character of the mark, there is no justification for another's using it; and we have developed another law for the case in which that custom is taken away by the abuse of a mark, such as a descriptive word, a personal name, or a geographic term which has acquired a secondary significance, but from the use of which, in its primary sense, no one could legitimately be excluded, and which is therefore not capable of ownership. Unfortunately this distinction was further perpetuated by being written into the federal trade-mark statutes. The act of 1905 permits the registration, generally speaking, of only those marks which are recognized as technical trade-marks by the general law. On the other hand, the act of 1920 provides for a different form of registration for non-technical marks.
Grover C. Grismore,
TRADE - MARKS AND TRADE NAMES - EFFECT OF WORD - MARK ACQUIRING A DESCRIPTIVE CONNOTATION,
Mich. L. Rev.
Available at: https://repository.law.umich.edu/mlr/vol35/iss6/8