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.
"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. See 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. See 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.
To establish a trademark infringement under the Lanham Act for either a registered mark under 15 U.S.C. § 1114, or an unregistered mark under 15 U.S.C. § 1125(a), the plaintiff must demonstrate that (1) the plaintiff has a valid and legally protectable mark; (2) the plaintiff owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion. See A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3rd Cir. 2000).