The Lanham Act, 15 U.S.C. §§ 1051 et seq., was enacted by Congress in 1946. The Act provides for a national system of trademark registration and protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur.
Two basic requirements must be met for a mark to be eligible for trademark protection: it must be in use in commerce and it must be distinctive. However, a third requirement that is related to the distinctive requirement has arisen for mark to be eligible for trademark protection, which is that the mark that is to be trademarked and therefore made irreplicable must not be essential to a product’s function, thereby placing competitors at a functional disadvantage. This is what is known as the functionality doctrine, which simply states that functional product features cannot serve as a trademark. The concern here is that trademarking something with an important functional use would inhibit legitimate competition (See unfair competition). This aspect of Trademark Eligibility is discussed at length in the case of Qualitex Co. v. Jacobson Products Co., Inc.
"Use in Commerce" Requirement
The Lanham Act defines a trademark as a mark used in commerce, or registered with a bona fide intent to use it in commerce (15 U.S.C. § 1127). If a mark is not in use in commerce at the time the application for registration is filed, registration may still be permitted if the applicant establishes, in writing, a good faith intent to use the mark in commerce at a future date (15 U.S.C. § 1051). Under Lanham Act registration procedures, exclusive rights to a trademark are awarded to the first to use it in commerce.
The second requirement, that a mark be distinctive, addresses a trademark's capacity for identifying and distinguishing particular goods as emanating from one producer or source and not another. Trademarks are traditionally divided into four categories of distinctiveness: arbitrary/fanciful, suggestive, descriptive, and generic. See Zatarain's, Inc. v. Oak Grove Smoke House, Inc., 698 F.2d 786 (5th Cir. 1983). If a mark is categorized as either arbitrary/fanciful or suggestive, it is considered to be inherently distinctive and exclusive rights to the mark are determined solely by priority of use. A trademark that is categorized as descriptive is only protectable as a trademark if it has acquired a secondary meaning in the minds of the consuming public.
Secondary meaning is also necessary to establish trademark protection for a personal name or a geographic term. Generic terms are never eligible for trademark protection because they refer to a general class of products rather than indicating a unique source. A mark may be generic ab initio and refused registration, or it may become generic over time through use.
- The plaintiff has a valid and legally protectable mark;
- The plaintiff owns the mark; and
- The defendant's use of the mark to identify goods or services causes a likelihood of confusion.
[Last updated in June of 2023 by the Wex Definitions Team]