Lanham Act

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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.  

Trademark Eligibility

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.

"Distinctive" Requirement

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.

Trademark Violation

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).

Further Reading

For more on the Lanham Act, see this Columbia University Law Review article,  this St. John's Law Review article, and this National Law Review article.