A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. See 15 U.S.C. § 1127.
Trademarks are generally words, phrases, logos and symbols used by producers to identify their goods. However, shapes, sounds, fragrances and colors may also be registered as trademarks. See Qualitex v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995). In recent years, trademark law has expanded to include trade dress and antidilution protection. Almost any word, name, symbol, or device capable of distinguishing the source of goods may be used as a trademark subject to few limitations. However, a mark's eligibility for trademark protection may be limited by application of the functionality doctrine, and a mark may be denied registration if it falls within any of the categories listed under 15 U.S.C. § 1052.
Use in Commerce and Distinctiveness
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.
The first requirement, that a mark be used in commerce, arises because trademark law is constitutionally grounded in the congressional power to regulate interstate commerce. See Commerce Clause. 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. Both at common law and under traditional 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 Lanham Act provides federal protection for distinctive marks that are used in commerce. See 15 U.S.C. §§ 1051 et seq. Federal protection for unregistered marks is generally available under 15 U.S.C. § 1125(a), which creates a civil cause of action for claims of false designation of origin and false advertising. Although registration is not a prerequisite to federal trademark protection, registered marks enjoy significant advantages over unregistered marks including: registration serves as nationwide constructive notice of ownership and use of the mark under 15 U.S.C. § 1072; and a registered mark may achieve incontestable status after five years of continuous use under 15 U.S.C. § 1065, which enhances the owner's rights by eliminating a number of defenses to claims of infringement.
Unregistered trademarks may also be protected at the state level by statute and/or common law. Under state common law, trademarks are protected as part of the law of unfair competition. State statutes vary, but most states have either adopted a version of the Model Trademark Bill (MTB), which provides for trademark registration, or the Uniform Deceptive Trade Practices Act (UDTPA), which does not.
The rules of practice governing applications for federal trademark registration are codified by the Lanham Act and under Title 37, Part 2 of the Code of Federal Regulations (CFR). The United States Patent and Trademark Office (PTO) actively examines applications for trademark registration and, with the help of the courts, polices the trademark registers. If an application for registration is denied by an examiner, the applicant has six months in which to reply or amend the application, which will then be reexamined. This procedure may be repeated until either: (1) the examiner issues a final refusal of registration, or (2) the applicant fails to reply, amend or appeal for a period of six months. See, e.g., 15 U.S.C. § 1062; 37 C.F.R. §§ 2.61 - 2.69.
Once an application for registration is approved by an examiner it is published in the Official Gazette of the PTO for opposition. See, e.g., 15 U.S.C. § 1062; 37 C.F.R. § 2.80. An opposition may be filed by any person who believes that he or she would be damaged by the registration of a mark, including damage caused by dilution. See, e.g., 15 U.S.C. § 1063; 37 C.F.R. §§ 2.101 - 2.106. An opposer must plead and prove that: (1) he or she is likely to be damaged by registration of the applicant's mark; and (2) that there are valid legal grounds why the applicant is not entitled to register the claimed mark. Unless registration is successfully opposed, a mark entitled to registration shall be registered in the PTO, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the PTO. See 15 U.S.C. § 1063.
Within five years after a trademark has been registered in the PTO, any person who believes that he or she is or will be harmed by the registration may file a petition for cancellation of registration. See, e.g., 15 U.S.C. § 1064; 37 C.F.R. §§ 111 - 114.
The Tariff Act of 1930 makes it unlawful to import into the United States any merchandise of foreign manufacture if such merchandise or its packaging bears a trademark owned by a U.S. citizen, corporation or other association and the trademark is registered in the PTO. See 19 U.S.C. § 1526.
menu of sources
U.S. Constitution and Federal Statutes
- Title 37 C.F.R., Chapt. I - Patent and Trademark Office
- CRS Annotated Constitution: State Power Affecting Patents and Copyrights
- Supreme Court:
- U.S. Circuit Courts of Appeals: Recent Decisions on Trademark Law
Uniform or Model Acts
State Judicial Decisions
- N.Y. Court of Appeals:
- Appellate Decisions from Other States
Conventions and Treaties
- Paris Convention for the Protection of Industrial Property
- GATT 1994 (including the Agreement on Trade-Related Aspects of Intellectual Property)
Key Internet Sources
- Federal Agency:
- Trademark Forms and Related Information (Master-McNeil, Inc.)
- Trademark Law (Nolo)
- Kuesterlaw - Technology Law Resource
- Searchable Yellow Pages - Useful for Trademark Searches
- World Intellectual Property Organization (WIPO)
Useful Offnet (or Subscription - $) Sources
- Good Starting Point in Print: J. Thomas McCarthy, Trademarks and Unfair Competition, West Group (1992)
- LII Downloads