Trademark Law

(U.S. Trademark Law (Federal & State & International)

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 protection and common law trademark protection. However, 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 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. With respect to a descriptive, 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 am I in contradistinction to who am I) may qualify.

An inherently distinctive mark (that evolves from what am I to who am I) 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 & 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.

You should also note that in 1999 the United States Congress amended the Lanham Act to prevent cyber-squatting, 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, 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. Note that a domain name registrations does not constitute a trademark in the even that you already have a domain name.

Hackett & Hackett P.C. provides legal advice and assistance on various trademark issues from pre-registration to protection and enforcement, including international considerations and alternative options in the event the United States Patent & Trademark Office refuses to register a federal trademark.

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In association with Merit Legal Solicitors
(UK & Europe)