United States Trademark Law
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trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...
is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or
brand A brand is a name, term, design, symbol or any other feature that distinguishes one seller's good or service from those of other sellers. Brands are used in business, marketing, and advertising for recognition and, importantly, to create an ...
by discouraging other businesses from adopting a name or logo that is "confusingly similar" to an existing trademark. The goal is to allow consumers to easily identify the producers of goods and services and avoid confusion. United States trademark law is mainly governed by the
Lanham Act The Lanham (Trademark) Act (, codified at et seq. () is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. ...
. Common law trademark rights are acquired automatically when a business uses a name or logo in commerce, and are enforceable in state courts. Marks registered with the U.S. Patent and Trademark Office are given a higher degree of protection in federal courts than unregistered marks—both registered and unregistered trademarks are granted some degree of federal protection under the Lanham Act 43(a).


History

United States The United States of America (U.S.A. or USA), commonly known as the United States (U.S. or US) or America, is a country primarily located in North America. It consists of 50 states, a federal district, five major unincorporated territorie ...
law has protected trademarks under state
common law In law, common law (also known as judicial precedent, judge-made law, or case law) is the body of law created by judges and similar quasi-judicial tribunals by virtue of being stated in written opinions."The common law is not a brooding omnipresen ...
since colonial times, but it was not until 1870 that
Congress A congress is a formal meeting of the representatives of different countries, constituent states, organizations, trade unions, political parties, or other groups. The term originated in Late Middle English to denote an encounter (meeting of a ...
first attempted to establish a federal trademark regime. This 1870 statute was purported to be an exercise of Congress'
Copyright Clause The Copyright Clause (also known as the Intellectual Property Clause, Copyright and Patent Clause, or the Progress Clause) describes an enumerated power listed in the United States Constitution ( Article I, Section 8, Clause 8). The clause, wh ...
powers, however, the Supreme Court struck down the 1870 statute in the ''
Trade-Mark Cases The ''Trade-Mark Cases'', 100 U.S. 82 (1879), were a set of three cases consolidated into a single appeal before the United States Supreme Court, which in 1879 unanimously ruled that the Copyright Clause of the Constitution gave Congress no power ...
.'' In 1881, Congress passed a new trademark act, this time pursuant to its
Commerce Clause The Commerce Clause describes an enumerated power listed in the United States Constitution ( Article I, Section 8, Clause 3). The clause states that the United States Congress shall have power "to regulate Commerce with foreign Nations, and amon ...
powers. Congress revised the Trademark Act in 1905. In the 1917 decision in ''
Aunt Jemima Pearl Milling Company (formerly known as Aunt Jemima from 1889 to 2021) is an American breakfast brand for pancake mix, syrup, and other breakfast food products. The original version of the pancake mix for the brand was developed in 1888–188 ...
Mills Co. v. Rigney & Co.'', the federal courts created the "Aunt Jemima Doctrine" which protects a trademark even when used to sell a different product (in this case, pancake syrup instead of pancake mix). In 1946, Congress passed the
Lanham Act The Lanham (Trademark) Act (, codified at et seq. () is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. ...
(). The Lanham Act defines federal trademark protection and trademark registration rules. The Lanham Act grants the
United States Patent and Trademark Office The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...
("USPTO") administrative authority over trademark registration. State law continues to add its own protection, complementing (and complicating) the federal trademark system. Recent developments in U.S. trademark law have included the adoption of the
Federal Trademark Dilution Act The Federal Trademark Dilution Act of 1995 ({{uspl, 104, 98) is a United States federal law which protects famous trademarks from uses that dilute their distinctiveness, even in the absence of any likelihood of confusion or competition. It went int ...
of 1995 (see
Trademark dilution Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of anoth ...
), the 1999
Anticybersquatting Consumer Protection Act The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of ) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or di ...
, and the
Trademark Dilution Revision Act The Trademark Dilution Revision Act of 2006 (H.R. 683, ) was a law passed in the United States covering trademark law, and specifically dealt with trademark dilution. The act amended the Trademark Act of 1946 and the later Federal Trademark Dilutio ...
of 2006 (see
Trademark dilution Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of anoth ...
).


Purpose

Trademark law protects a company's goodwill, and helps consumers easily identify the source of the things they purchase.
In principle, trademark law, by preventing others from copying a source-identifying mark, reduces the customer's costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product. The law thereby encourages the production of quality products and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale. nternal punctuation omitted/blockquote>


Symbols

U.S. Trademark rights come in two types:
common law In law, common law (also known as judicial precedent, judge-made law, or case law) is the body of law created by judges and similar quasi-judicial tribunals by virtue of being stated in written opinions."The common law is not a brooding omnipresen ...
and federal registration. – Signifies common law trademark rights. Businesses automatically receive common law trademark rights by using a brand name or logo in the normal course of commerce. ® – Signifies a registered trademark. The ® symbol may only be used on a trademark that has been examined, approved and ''registered'' with the
USPTO The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...
.


Acquiring trademark rights

Trademark rights are acquired through use of a mark in the normal course of commerce. For example, by using a brand name or logo on a product or its retail packaging.


Trademarkable things

A word, phrase, or logo can act as a trademark. But so can a slogan, a name, a scent, the shape of a product's container, and a series of musical notes.
The language of the
Lanham Act The Lanham (Trademark) Act (, codified at et seq. () is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. ...
describes that universe f things that can qualify as a trademarkin the broadest of terms. It says that trademarks "includ any word, name, symbol, or device, or any combination thereof." § 1127. Since human beings might use as a "symbol" or "device" almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive. The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a particular sound (of NBC's three chimes), and even a particular scent (of plumeria blossoms on sewing thread).


Distinctiveness

Some trademarks afford more potent rights than others. The closer the relationship between the mark and the goods, the weaker the mark. Trademarks are often separated into four categories of distinctiveness: * Arbitrary and Fanciful (strongest) * Suggestive (medium) * Descriptive (weak) * Generic (no protection)


Arbitrary and Fanciful

Where there is no logical relationship between the mark and the goods or services, trademark protection is at its strongest. Arbitrary and fanciful marks are considered inherently distinctive and are prima facia registrable. For example, ''coined words'' – such as
Kodak The Eastman Kodak Company (referred to simply as Kodak ) is an American public company that produces various products related to its historic basis in analogue photography. The company is headquartered in Rochester, New York, and is incorpor ...
,
Polaroid Polaroid may refer to: * Polaroid Corporation, an American company known for its instant film and cameras * Polaroid camera, a brand of instant camera formerly produced by Polaroid Corporation * Polaroid film, instant film, and photographs * Polar ...
, or
Starbucks Starbucks Corporation is an American multinational chain of coffeehouses and roastery reserves headquartered in Seattle, Washington. It is the world's largest coffeehouse chain. As of November 2021, the company had 33,833 stores in 80 c ...
– are considered fanciful and receive strong trademark protection. Arbitrary marks include preexisting words used in an arbitrary way, such as "Apple" when used for computers.


Suggestive

Suggestive trademarks are still broadly protected. These marks "suggest" something about the product or services they are used on. The suggestion is a subtle connotation, not an outright description of the product. An example is "Whirlpool" for washing machines.


Descriptive

Descriptive terms immediately describe the goods, or some important characteristic of the goods. Trademark law does not protect descriptive terms unless they achieve "secondary meaning" in the minds of consumers. That is, trademark rights accrue when the public comes to associate the descriptive term with a ''particular company'' rather than the ''product in general''.


Generic

The
generic term Trademark distinctiveness is an important concept in the law governing trademarks and service marks. A trademark may be eligible for registration, or registrable, if it performs the essential trademark function, and has distinctive character. Re ...
for a product or service cannot be trademarked. Granting trademark rights on a generic term-say "apple" for use on apple juice-puts other companies at an unfair competitive disadvantage. Every company has the right to describe its products and services using generic terms.


Trademark registration

Once acquired, trademark rights may be registered with the
USPTO The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...
. "The
Lanham Act The Lanham (Trademark) Act (, codified at et seq. () is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. ...
gives a seller or producer the exclusive right to "register" a trademark, 15 U.S.C. § 1052, and to prevent his or her competitors from using that trademark, § 1114(1)."


Benefits

Trademark protection depends on use in commerce, not registration. Both registered and non-registered trademarks are eligible for protection under the
Lanham Act The Lanham (Trademark) Act (, codified at et seq. () is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. ...
. However, registration (on the "Principal Register") affords several advantages: * Nationwide trademark rights * A registered mark is presumed to be a valid trademark * The owner listed on the registration is presumed to be the true owner of the trademark rights * Presumption that the mark has not been "abandoned" through non-use * Access to Federal Courts for litigating trademark infringement * "Incontestability." After five years of unopposed registration, a trademark is eligible to become "incontestable." An incontestable mark cannot be attacked on the grounds that it is "merely descriptive." *
Constructive notice Constructive notice is the legal fictionThe phrase "legal fiction" should not be construed to mean that the concept of constructive notice is legally invalid. that signifies that a person or entity should have known, as a reasonable person would hav ...
– that is, infringers cannot claim that they were unaware of a registered trademark * Enhanced remedies for infringement, including the possibility of triple damages and criminal penalties for counterfeiting (note that counterfeiting is a more culpable type of infringement) * Right to have the U.S. Customs Service prevent others from importing goods bearing infringing marks


Application process

Trademarks may be registered online. The USPTO charges a $275 fee for online trademark applications. The process takes about 6 months from initial application to final registration. It is a general practice to hire a trademark lawyer to file the application on behalf of the future owner. Once the application is filed, it sits in a queue for a few months. Eventually, a
USPTO The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...
Trademark Examiner will examine the application according to the rules of the
Trademark Manual of Examining Procedure The Trademark Manual of Examining Procedure (TMEP) is a manual published by the United States Patent and Trademark Office (USPTO) for use by trademark attorneys and trademark examiners. It describes all of the laws and regulations that must be foll ...
. If the Trademark Examiner identifies problems with the applications, the applicant will be sent a "preliminary rejection." The applicant will then have 6 months to file a reply with arguments in favor of their trademark application. If the Trademark Examiner is persuaded by the reply arguments, the application will be granted registration. If not, a "final rejection" will be issued. When an application is allowed, it moves on to "publication" in the ''
Trademark Official Gazette The ''Trademark Official Gazette'' (TMOG) is a weekly publication of the United States Patent and Trademark Office (USPTO) which publishes newly registered trademarks. Once a trademark application has been examined by a USPTO examining attorney an ...
''. Once published, there is a 30-day opportunity for other companies to appeal the registration. If no appeal is filed, the registration is finally issued. If the registration receives a final rejection from the Trademark Examiner, the applicant may appeal the rejection to the
Trademark Trial and Appeal Board The Trademark Trial and Appeal Board (TTAB) is an administrative tribunal within the United States Patent and Trademark Office (USPTO). The TTAB is empowered to determine the right to register a trademark. It has no authority to determine the righ ...
. Likewise, if the application is opposed by a third party, the appeal will be reviewed by the
Trademark Trial and Appeal Board The Trademark Trial and Appeal Board (TTAB) is an administrative tribunal within the United States Patent and Trademark Office (USPTO). The TTAB is empowered to determine the right to register a trademark. It has no authority to determine the righ ...
.


Actual use vs. intent to use

An application for registration may be based upon "actual use" in commerce (a §1(a) registration) or upon a ''
bona fide In human interactions, good faith ( la, bona fides) is a sincere intention to be fair, open, and honest, regardless of the outcome of the interaction. Some Latin phrases have lost their literal meaning over centuries, but that is not the case ...
'' intent to use ("ITU") the mark in commerce (§1(b) registration). An ITU application is a placeholder. It will not be allowed to register until the applicant actually begins using the mark in
interstate commerce The Commerce Clause describes an enumerated power listed in the United States Constitution ( Article I, Section 8, Clause 3). The clause states that the United States Congress shall have power "to regulate Commerce with foreign Nations, and among ...
. The value of ITU is in establishing ''priority''—that is, determining which business first acquired the trademark rights.


Principal and Supplemental Registers

The benefits of federal trademark registration only accrue to marks listed on the "Principal Register". To be eligible for the Principal Register, a mark must be recognized as a trademark, and not just a description of some goods or services. Eligible marks include (a) arbitrary or fanciful marks, (b) "suggestive" marks, and (c) descriptive marks that have achieved "secondary meaning" or "distinctiveness." The Supplemental Register is for "descriptive" marks that have not yet become distinctive. Descriptive marks describe some quality of the goods or services they are used with. Descriptive marks may become distinctive (acquire "secondary meaning") through 5 years of use in commerce, or through evidence of heavy advertising and market recognition.
Secondary meaning is acquired when in the minds of the public, the primary significance of a product feature... is to identify the source of the product rather than the product itself.
Note that "generic" terms are ineligible for trademark protection altogether, and may not be registered on either the Principal or Supplemental Registers.


State-level

Trademarks may also be registered at the state level. State registrations are less potent than federal trademark registration. But federal registration requires use of the mark in
interstate commerce The Commerce Clause describes an enumerated power listed in the United States Constitution ( Article I, Section 8, Clause 3). The clause states that the United States Congress shall have power "to regulate Commerce with foreign Nations, and among ...
. If a mark is only used in one particular state, registration at the
state State may refer to: Arts, entertainment, and media Literature * ''State Magazine'', a monthly magazine published by the U.S. Department of State * ''The State'' (newspaper), a daily newspaper in Columbia, South Carolina, United States * ''Our S ...
level may be appropriate. State trademark registration is usually by filing an application with the Secretary of State of the relevant state.


Infringement: likelihood of confusion test

Trademark infringement is measured by the so-called "likelihood of confusion" test. A new trademark will infringe on an existing one if the new one is so similar to the original that consumers are likely to confuse the two marks, and mistakenly purchase from the wrong company. The likelihood of confusion test turns on several factors, including: * Strength of the plaintiff's trademark * Degree of similarity between the two marks at issue * Similarity of the goods and services at issue * Evidence of actual confusion * Purchaser sophistication * Quality of the defendant's goods or services * Whether the defendant's attempt to register the trademark was
bona fide In human interactions, good faith ( la, bona fides) is a sincere intention to be fair, open, and honest, regardless of the outcome of the interaction. Some Latin phrases have lost their literal meaning over centuries, but that is not the case ...
(''in good faith''). This multi-factor test was articulated by Judge
Henry Friendly Henry Jacob Friendly (July 3, 1903 – March 11, 1986) was an American lawyer and jurist who served as a circuit judge on the United States Court of Appeals for the Second Circuit from 1959 until his death in 1986. Friendly was one of the most p ...
in ''Polaroid v. Polarad''. and are often referred to as the "Polaroid Factors". Note that other factors may also be considered in determining whether a likelihood of confusion exists. "Even this extensive catalogue does not exhaust the possibilities—the court may have to take still other variables into account."


Limits

Consistent with the limited nature of trademark protection and the
free speech Freedom of speech is a principle that supports the freedom of an individual or a community to articulate their opinions and ideas without fear of retaliation, censorship, or legal sanction. The rights, right to freedom of expression has been ...
guarantees of the
First Amendment First or 1st is the ordinal form of the number one (#1). First or 1st may also refer to: *World record, specifically the first instance of a particular achievement Arts and media Music * 1$T, American rapper, singer-songwriter, DJ, and rec ...
, U.S. law provides for a
fair use Fair use is a doctrine in United States law that permits limited use of copyrighted material without having to first acquire permission from the copyright holder. Fair use is one of the limitations to copyright intended to balance the interests ...
defense to trademark infringement. Fair use in trademark law does not employ the same four-pronged analysis used in
copyright law A copyright is a type of intellectual property that gives its owner the exclusive right to copy, distribute, adapt, display, and perform a creative work, usually for a limited time. The creative work may be in a literary, artistic, education ...
. The law recognizes two fair use defenses: classic fair use, where the alleged infringer is using the mark to describe accurately an aspect of its products; and nominative fair use, in which the trademark is being used to actually refer to the trademarked product or trademark owner. These uses are still subject to the requirement that there be no
consumer confusion Consumer confusion is a state of mind that leads to consumers making imperfect purchasing decisions or lacking confidence in the correctness of their purchasing decisions. Confusion Confusion occurs when a consumer fails to correctly understand o ...
as to source or sponsorship. Trademarks may also be lawfully used in
parodies A parody, also known as a spoof, a satire, a send-up, a take-off, a lampoon, a play on (something), or a caricature, is a creative work designed to imitate, comment on, and/or mock its subject by means of satiric or ironic imitation. Often its sub ...
, since in that case there is usually no likelihood of confusion.


Loss

Trademark rights operate under a "use it or lose it" rule. In other words, the trademark owner must continuously use the mark in commerce or risk a finding of abandonment through nonuse (usually after three years of nonuse).


Difference from similar laws

In contrast to copyright or
patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
law, trademark protection does not have a set duration or definite expiration date. Trademark rights only expire when the owner stops using the mark in commerce. However, federal trademark registrations expire ten years after the registration date, unless renewed within one year prior to the expiration. The U.S. Constitution specifically grants Congress power over copyright and patent law, but not over trademark law. Instead, Congress' power to create federal trademark law is derived from the Commerce Clause. Therefore, there must be some degree of
interstate commerce The Commerce Clause describes an enumerated power listed in the United States Constitution ( Article I, Section 8, Clause 3). The clause states that the United States Congress shall have power "to regulate Commerce with foreign Nations, and among ...
present for a trademark to receive
Lanham Act The Lanham (Trademark) Act (, codified at et seq. () is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. ...
protection. The
U.S. Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...
invalidated the first federal trademark law by finding that Congress could not stretch the
Copyright Clause The Copyright Clause (also known as the Intellectual Property Clause, Copyright and Patent Clause, or the Progress Clause) describes an enumerated power listed in the United States Constitution ( Article I, Section 8, Clause 8). The clause, wh ...
to cover trademarks.''
The Trade-Mark Cases The ''Trade-Mark Cases'', 100 U.S. 82 (1879), were a set of three cases consolidated into a single appeal before the United States Supreme Court, which in 1879 unanimously ruled that the Copyright Clause of the Constitution gave Congress no power ...
'', .
Unlike
copyright A copyright is a type of intellectual property that gives its owner the exclusive right to copy, distribute, adapt, display, and perform a creative work, usually for a limited time. The creative work may be in a literary, artistic, education ...
law which provides for criminal penalties as well as civil damages, trademark law in the
United States The United States of America (U.S.A. or USA), commonly known as the United States (U.S. or US) or America, is a country primarily located in North America. It consists of 50 states, a federal district, five major unincorporated territorie ...
is almost entirely enforced through private
lawsuit - A lawsuit is a proceeding by a party or parties against another in the civil court of law. The archaic term "suit in law" is found in only a small number of laws still in effect today. The term "lawsuit" is used in reference to a civil actio ...
s. The exception is in the case of criminal
counterfeiting To counterfeit means to imitate something authentic, with the intent to steal, destroy, or replace the original, for use in illegal transactions, or otherwise to deceive individuals into believing that the fake is of equal or greater value tha ...
of goods. Otherwise, the responsibility is entirely on the mark owner to file suit in either state or federal civil court in order to restrict an infringing use. Failure to "police" a mark by stopping infringing uses can result in the loss of protection.


See also

* Concurrent use registration *
Generic trademark A generic trademark, also known as a genericized trademark or proprietary eponym, is a trademark or brand name that, because of its popularity or significance, has become the generic term for, or synonymous with, a general class of products or ...
* '' Imperial Group v. Philip Morris'' *
List of United States Supreme Court trademark case law This is an incomplete list of Supreme Court of the United States cases in the area of trademark law. References * David S. Welkowitz"The Supreme Court and Trademark Law in the New Millennium" 30 ''William Mitchell Law Review'' 1659 (2004) * ...
*
Service mark A service mark or servicemark is a trademark used in the United States and several other countries to identify a service rather than a product. When a service mark is federally registered, the standard registration symbol ® or "Reg U.S. ...
*
Tea Rose-Rectanus doctrine Tea is an aromatic beverage prepared by pouring hot or boiling water over cured or fresh leaves of '' Camellia sinensis'', an evergreen shrub native to East Asia which probably originated in the borderlands of southwestern China and north ...
(remote, good-faith user) *
Trademark dilution Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of anoth ...
*
Trademark symbol The trademark symbol is a symbol to indicate that the preceding mark is a trademark, specifically an unregistered trademark. It complements the registered trademark symbol which is reserved for trademarks registered with an appropriate gov ...
*
World Intellectual Property Organization The World Intellectual Property Organization (WIPO; french: link=no, Organisation mondiale de la propriété intellectuelle (OMPI)) is one of the list of specialized agencies of the United Nations, 15 specialized agencies of the United Nation ...


References


External links


Text of the Lanham Act

Fair Use Network
by the NYU Brennan Center for Justice (information about copyright & trademark fair use)
Barton Beebe, ''Trademark Law: An Open-Source Casebook'' (v. 8)
{{DEFAULTSORT:United States Trademark Law Trademark law by jurisdiction