Introduction To U.S.
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Trademark Law
This article will introduce the reader to some of the basic concepts of U.S. trademark law.
While it is not intended to substitute as legal advice or a comprehensive treaty on the law of
trademarks, it serves the purpose of providing some of the basic concepts surrounding U.S.
trademark law and practice before the United States Patent and Trademark Office (“USPTO”).
The primary U.S. legislation that governs trademark law is known as the Trademark Act of 1976,
as amended (commonly known as the Trademark Act or Lanham Act), which is located at 15
U.S.C. §1051 et seq., as well as the governing Code of Federal Regulations found in 37 C.F.R. §1,
et seq.
In the United States, the first to use a trademark in interstate commerce is generally granted
protection, 15 U.S.C. §1051(a) (1) of the Lanham Act. The expression "in interstate commerce"
primarily means that you have used the trademark across state lines or in commerce between
the U.S. and a foreign country or a foreign territory owned by the U.S., such as Puerto Rico.
There is also a distinction between federal trademark law and common law trademarks.
Federal trademark registration provides national protection, whereas state or common law use
of a mark provides protection within a particular state and/or geographical location within the
state in which the mark is being used, all the reason why one should pursue, if possible, a
federal trademark registration for national protection. With that said, it was stated by the United
States Supreme Court that the use of a common law trademark has long been recognized in the
United States.
The Court stated that, “the right to adopt and use a symbol or a device to distinguish the goods
or property made or sold by the person whose mark it is, to the exclusion of use by all other
persons, has been long recognized by the common law…The trademark recognized by the
common law is generally the growth of a considerable period of use…At common law the
exclusive rights to it grows out of the use of it, and not its mere adoption…It is simply found on
priority of appropriation.” In re-Trade-Mark Cases, 100 U.S. 82, 94, WL 16583 (1879).
A U.S. trademark includes any word, name, symbol, device or a combination therefore, 15
U.S.C. §1127. This also includes service marks, collective marks and certification marks, 15
U.S.C. §1051. In U.S. trademark law the first to use a trademark is granted protection as stated
above, 15 U.S.C. §1051. The mark must have a bona fide use in commerce and one cannot
simply reserve such a mark for future use. The law has also assigned classifications to
trademarks according to a so-called spectrum.
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The Federal Lanham Act identifies four different categories of terms with respect to trademarks.
Arrayed in an ascending order, which roughly reflects their eligibility to trademark status and the
degree of protection accorded, these classes are: generic, descriptive, suggestive, and
arbitrary or fanciful, and it should be noted that the lines of demarcation are not always bright.
A generic mark can never be protected as a trademark and can be the basis for cancellation, 15
U.S.C. §1064. A descriptive mark, which is generally not registerable 15 U.S.C. §1052, unless it
forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods
("what I am" in contradistinction to "who I am") may qualify for registration.
An inherently distinctive mark (that evolves from "what I am" to "who I am") generally satisfies
the requirements in that it will generally have secondary meaning, whereas others are distinctive
through the acquisition of secondary meaning (“acquired distinctiveness”). In these cases, it is
the consumer who has come to indentify the source of the goods for secondary meaning, i.e.,
needing direct evidence and circumstantial evidence, length and exclusivity of use, direct
consumer testimony, amount and manner of advertising and an established place in the market.
With respect to a suggestive mark, courts have noted it is one that, “requires imagination,
thought and perception to reach a conclusion as to the nature of the goods.” In other words, a
suggestive mark will tend to connote a characteristic of a product, and thereby enable a
consumer to infer something about the product from the mark. Because a suggestive term is
deemed inherently distinctive, it is automatically entitled to protection (i.e., without secondary
meaning). “Tigers of the Ocean” and “Coppertone” are examples of suggestive marks. Finally,
with respect to an arbitrary or fanciful mark, it is one that cannot tell you "what I am" or "who I
am" and is very distinctive, thereby attracting federal trademark protection.
Most, if not all trademark suits are filed in a United States District Court. The owner of a federally
registered mark may bring a suit for alleged infringement in federal court under Section 32 of the
Lanham Act [15 U.S.C. §1114]. The owner of an unregistered mark—who has only state
common law rights—may gain access to federal court for protection of the mark in three
different ways. First, such an owner might bring suit under Section 43(a) of the Lanham Act [15
U.S.C. §1125(a)], which forbids use of a false designation of origin.
Alternatively, the mark owner might assert some other federal question claim and add a state
law trademark claim under the doctrine of supplemental jurisdiction [28 U.S.C. §1367 (2001)].
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Finally, the mark owner could bring a state law trademark claim while invoking jurisdiction on
the basis of diversity of citizenship. In these latter two situations, the Federal Court would be
obliged to apply state substantive trademark law. On the other hand, any trademark owner may
sue in state court.
The trademark owner may, of course, present a claim under state statutory or common law
trademark law in such a state court suit. Claims may also be presented under the provisions of
the Lanham Act that protect federally registered and unregistered marks. In contrast to the rule
for patents and copyrights, there is concurrent state and federal jurisdiction in federal trademark
cases. However, because there are relatively few trademark suits in state courts, there is often a
dearth of state law precedent. That raises problems when the federal courts attempt to
ascertain state trademark law.
However, once an application is made, whether it is a 1A or 1B (intent-to-use) this is examined
at the USPTO by a trademark attorney examiner. This timeframe can be lengthy, ranging from
twelve to eighteen months, depending on whether there are any objections or a refusal to
register the mark or whether an appeal is to be made with the Trademark Trial and Appeals
Board (TTAB) or the United States Court of Appeals for the Federal Circuit in Washington D.C.
Problematic concerns can also arise, for example, where a refusal is made under the Lanham
Act for a trademark that is geographically descriptive, 15 U.S.C. § 1052(e) and whether you are
able to overcome such a rejection under the saving provision of 15 U.S.C. § 1052(f) to show
that a mark has acquired distinctiveness or secondary meaning, see In re Steelbuilding.com, 415
F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005).
Similarly, the USPTO can refuse registration where a trademark is similar to another trademark
and is likely to cause confusion under § 1052(d) in that the consumer or general public will
mistake the source of the goods for another person with a similar or same trademark.
Confusingly similar marks are subject to numerous lawsuits in the United States and the
governing test for trademark infringement is the likelihood of confusion, see General Motors
Corp. v. Lanard Toys, Inc., 468 F.3d 405, 412 (6th Cir. 2006). The question is not whether people
will confuse the marks, but whether the marks will confuse people into believing that the goods
and/or services they indentify come from the same source, see In re West Point-Peppereall, Inc.,
468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).
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The courts have also noted that with respect to the comparison of the goods and services of
the parties that the marks need not be identical or directly competitive to find a likelihood of
confusion, see Safety-Kleen Corp. v. Dresser Indus, Inc., 518 F.2d 1399, 186 USPQ 476 (C.C.P.A.
1975). Additionally, it is quite sufficient that the goods and/or services are related in some
manner and/or the conditions surrounding their marketing are such that they would be
encountered by the same purchaser under circumstances that would give rise to the mistaken
belief that the goods and/or services come from a common source. In re Total Quality Group,
Inc., 51 USPQ2d 1474 (TTAB 1999).
And it should be said that the governing test for trademark infringement is the same whether a
mark is federally registered or is a common law trademark. See Volkswagen AG v. Dorling
Kindersley Pub., Inc., 614 F.Supp2d 793 (E.D. Michigan 2009) and comments made by the
United States District Court Judge for Eastern District of Michigan, the Honorable Denise Page
Hood in the Memorandum Opinion and Orders on Summary Judgment dated March 2009 on
page 8 that, “Trademark infringement under Michigan law (Count IV) employs the same
likelihood of confusion test.” This test is the same test employed by the federal courts and it
must be said the factors for each test can vary depending on the federal court hearing the
matter.
Other concerns may arise in your proposed pursuit of a trademark where, for example, your
goods are related to beer and another trademark is registered which is similar to yours relating
to wine. One Trademark Trial and Appeals Board (TTAB) decision upheld refusal to register
because the examining trademark attorney found that they were confusingly similar even though
it was argued that the only thing in common was that they were both alcoholic beverages, see
also, In re Chatam Int’l., 71 USPQ2d (1944) (beer and ale related to tequila). Thus, care should
be taken in pursuit of a trademark to ensure proper legal protection and to avoid possible
infringement.
It should also be pointed out that in 1999, the United States Congress amended the Lanham Act
to prevent cybersquatting, which it defined as registering, trafficking in, or using a domain name
with the intent to profit, in bad faith, from the good will of a trademark belonging to someone
else. With that said, you should note that an internet address is not, in and of itself, a trademark,
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since it was noted in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174
F.3d 1036; 50 USPQ 1545 (9th Cir. 1999) that acquiring a domain name registration does not
constitute trademark use of that name, see also In re Eilberg, 49 USPQ2d 1955, 1957 (TTAB
1998).
In pursing your proposed trademark you should be mindful of possible obstacles, rejections or
refusal to register a trademark. That is why careful planning and an initial trademark search
should be conducted to ensure that some guidance is provided in your pursuit of a trademark
before expending considerable finances only later to realize that your proposed mark will either
be refused or that you may be a potential infringer or that your trademark is being infringed by
another trademark that is likely to cause confusion. Even if you are granted a certificate of
registration you have a continual obligation to maintain your trademark, otherwise the trademark
could be the subject of abandonment, see §45 [15 U.S.C. §11125].
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Michael S. Melfi, JD/MBA and Kulwant Singh Boora © 2012. Melfi & Associates PC, a law firm that specializes in
Intellectual Property Law. This article is not to be construed as providing legal advice and is for informational
purposes only. Should you seek legal advice on copyright law and protection or have a legal issue relating to
copyright law, you will need to consult with an attorney licensed to practice law in your state.
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