United States trademark law
Encyclopedia
Trademark
s were traditionally protected in the United States
only under State common law
, growing out of the tort
of unfair competition
. As early as 1791, Thomas Jefferson proposed that the marks of sailcloth
makers could be protected under the Commerce Clause
, but it was not until 1870 that Congress
first attempted to establish a federal regime for the protection of trademarks. This statute, purported to be an exercise of the Copyright Clause
powers, was struck down in the Trade-Mark Cases
, leading Congress to finally create a successful act under its Commerce Clause
power in 1881.
A major revision was enacted in 1905, and in 1946, Congress passed the Lanham Act
, which currently defines federal protection and registration for trademarks, and grants administrative authority to the United States Patent and Trademark Office
("USPTO"). State law continues to add its own protection, complementing the federal system.
intent to use (ITU). An ITU application will not become a registration until documents evidencing actual use of the mark in interstate commerce, which generally must be shown within a limited time period. Infringing use can only be stopped with actual registration, not an ITU. The value of ITU is in establishing priority—who acquired the right to use the mark first—and so infringers are on borrowed time pending that registration. Trademarks which are not used in interstate commerce can usually be registered on the state
level, usually by filing an application with the Secretary of State
in the state in which one is doing business.
An individual may represent himself before the USPTO in attempting to register a trademark. However, there are many pitfalls that can trap someone who is not experienced in trademark prosecution matters. An experienced attorney who specializes in trademark registrations typically will charge $800.00 to $1500.00 for preparing and filing an application for trademark registration. If the application is initially rejected because the mark is deemed descriptive or generic, then there will be additional fees for attempting to overcome such rejections.
Recent developments in U.S. trademark law have included the adoption of the Federal Trademark Dilution Act of 1995 (see Trademark dilution
), the 1999 Anti-Cybersquatting
Consumer Protection Act, and the Trademark Dilution Revision Act of 2006 (see Trademark dilution
).
Consistent with the limited nature of trademark protection and the free speech guarantees of the First Amendment
, U.S. law provides for a fair use defense to trademark infringement comparable to that under copyright law. The two main categories of protected usage are nominative
—using the trademark to actually refer to the trademarked product or trademark owner; and usage of the mark in its common sense, such as a descriptive word or common and unoriginal symbol. For example, Pepsi
advertisements may use Coca Cola's trademark when making comparisons to Pepsi products. These uses are still subject to the requirement that there be no consumer confusion as to source or sponsorship. Trademarks may also be lawfully used in parodies
, since in that case there is usually no likelihood of confusion.
and the ® symbol
. The former requires no formal paperwork. You literally just add ™ to claim it. The latter requires an application with the United States Patent and Trademark Office
that should include proof of sustained and exclusive use of the mark." Using the "TM" mark
does not actually confer any legal rights in federal law, but it may nevertheless help a business acquire secondary meaning concerning a specific mark.
Registered and non-registered trademarks are both eligible for protection under the Lanham Act
. The advantage of having a registered mark is that after five years of unopposed use, the mark becomes "incontestable". An incontestable mark cannot be attacked on the grounds that it is merely descriptive (even if it is). This means that the defendant in a trademark infringement
suit cannot directly attack the plaintiff's mark, but must instead focus on showing a lack of a likelihood of confusion. Even without incontestability, a registered mark has a presumption of being a valid trademark, placing the burden on the defendant
to attack the plaintiff
's mark.
law which provides for criminal penalties as well as civil damages, trademark law in the United States
is almost entirely enforced through private lawsuit
s. The exception is in the case of criminal counterfeiting of goods. Otherwise, the responsibility is entirely on the mark owner to file suit in either state or federal civil court in order to restrict an infringing use. Failure to "police" a mark by stopping infringing uses can result in the loss of protection.
Also in contrast to copyright or patent
law, trademark protection has no expiration. As long as the mark is continually used, it can be protected from infringement indefinitely.
Because federal trademark law is derived from Congress' Commerce Clause power, and not a specific clause in the U.S. Constitution (like copyrights and patents), there must be some degree of interstate commerce present for a trademark to receive Lanham Act
protection. The U.S. Supreme Court invalidated the first federal trademark law by finding that Congress could not stretch the Copyright Clause
to cover trademarks, so Congress had to fall back to only those trademarks used in interstate commerce instead.
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
s were traditionally protected in the United States
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
only under State common law
Common law
Common law is law developed by judges through decisions of courts and similar tribunals rather than through legislative statutes or executive branch action...
, growing out of the tort
Tort
A tort, in common law jurisdictions, is a wrong that involves a breach of a civil duty owed to someone else. It is differentiated from a crime, which involves a breach of a duty owed to society in general...
of unfair competition
Unfair competition
Unfair competition in a sense means that the competitors compete on unequal terms, because favourable or disadvantageous conditions are applied to some competitors but not to others; or that the actions of some competitors actively harm the position of others with respect to their ability to...
. As early as 1791, Thomas Jefferson proposed that the marks of sailcloth
Sailcloth
Sails have been made from cloth for all of recorded history. Typically sails were made from flax , hemp or cotton in various forms including canvas. However, modern sails are rarely made from natural fibers. Most sails are made from synthetic fibers ranging from low-cost nylon or polyester to...
makers could be protected under the Commerce Clause
Commerce Clause
The Commerce Clause is an enumerated power listed in the United States Constitution . The clause states that the United States Congress shall have power "To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes." Courts and commentators have tended to...
, but it was not until 1870 that Congress
United States Congress
The United States Congress is the bicameral legislature of the federal government of the United States, consisting of the Senate and the House of Representatives. The Congress meets in the United States Capitol in Washington, D.C....
first attempted to establish a federal regime for the protection of trademarks. This statute, purported to be an exercise of the Copyright Clause
Copyright Clause
Article I, Section 8, Clause 8 of the United States Constitution, known as the Copyright Clause, empowers the United States Congress:- Other Terms :This clause is also referred to as:* Copyright and Patent Clause* Patent and Copyright Clause...
powers, was struck down in the Trade-Mark Cases
Trade-Mark Cases
The Trade-Mark Cases, 100 U.S. 82 , were a set of three cases consolidated into a single appeal before the United States Supreme Court, which in 1879 ruled that the Copyright Clause of the Constitution gave Congress no power to protect or regulate trademarks. 100 U.S. 82...
, leading Congress to finally create a successful act under its Commerce Clause
Commerce Clause
The Commerce Clause is an enumerated power listed in the United States Constitution . The clause states that the United States Congress shall have power "To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes." Courts and commentators have tended to...
power in 1881.
A major revision was enacted in 1905, and in 1946, Congress passed the Lanham Act
Lanham Act
The Lanham Act is a piece of legislation that contains the federal statutes of trademark law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.-History:Named for Representative Fritz G...
, which currently defines federal protection and registration for trademarks, and grants administrative authority to the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
("USPTO"). State law continues to add its own protection, complementing the federal system.
Obtaining a trademark
A person or business entity acquires rights in a trademark either by using it in the normal course of business (for example on a tag or label for merchandise being sold to the public) or by filing an application for registration of the mark in the USPTO. An application for registration may be based upon actual use in commerce or upon a bona fideBona Fide
Bona Fide is a studio album from rock band Wishbone Ash. It is the first studio album in six years and is the only studio album to feature guitarist Ben Granfelt...
intent to use (ITU). An ITU application will not become a registration until documents evidencing actual use of the mark in interstate commerce, which generally must be shown within a limited time period. Infringing use can only be stopped with actual registration, not an ITU. The value of ITU is in establishing priority—who acquired the right to use the mark first—and so infringers are on borrowed time pending that registration. Trademarks which are not used in interstate commerce can usually be registered on the state
U.S. state
A U.S. state is any one of the 50 federated states of the United States of America that share sovereignty with the federal government. Because of this shared sovereignty, an American is a citizen both of the federal entity and of his or her state of domicile. Four states use the official title of...
level, usually by filing an application with the Secretary of State
Secretary of State (U.S. state government)
Secretary of State is an official in the state governments of 47 of the 50 states of the United States, as well as Puerto Rico and other U.S. possessions. In Massachusetts, Pennsylvania, and Virginia, this official is called the Secretary of the Commonwealth...
in the state in which one is doing business.
An individual may represent himself before the USPTO in attempting to register a trademark. However, there are many pitfalls that can trap someone who is not experienced in trademark prosecution matters. An experienced attorney who specializes in trademark registrations typically will charge $800.00 to $1500.00 for preparing and filing an application for trademark registration. If the application is initially rejected because the mark is deemed descriptive or generic, then there will be additional fees for attempting to overcome such rejections.
Recent developments in U.S. trademark law have included the adoption of the Federal Trademark Dilution Act of 1995 (see Trademark dilution
Trademark dilution
Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
), the 1999 Anti-Cybersquatting
Cybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
Consumer Protection Act, and the Trademark Dilution Revision Act of 2006 (see Trademark dilution
Trademark dilution
Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
).
Consistent with the limited nature of trademark protection and the free speech guarantees of the First Amendment
First Amendment to the United States Constitution
The First Amendment to the United States Constitution is part of the Bill of Rights. The amendment prohibits the making of any law respecting an establishment of religion, impeding the free exercise of religion, abridging the freedom of speech, infringing on the freedom of the press, interfering...
, U.S. law provides for a fair use defense to trademark infringement comparable to that under copyright law. The two main categories of protected usage are nominative
Nominative use
Nominative use, also "nominative fair use", is a legal doctrine that provides an affirmative defense to trademark infringement as enunciated by the United States Ninth Circuit, by which a person may use the trademark of another as a reference to describe the other product, or to compare it to their...
—using the trademark to actually refer to the trademarked product or trademark owner; and usage of the mark in its common sense, such as a descriptive word or common and unoriginal symbol. For example, Pepsi
Pepsi
Pepsi is a carbonated soft drink that is produced and manufactured by PepsiCo...
advertisements may use Coca Cola's trademark when making comparisons to Pepsi products. These uses are still subject to the requirement that there be no consumer confusion as to source or sponsorship. Trademarks may also be lawfully used in parodies
Parody
A parody , in current usage, is an imitative work created to mock, comment on, or trivialise an original work, its subject, author, style, or some other target, by means of humorous, satiric or ironic imitation...
, since in that case there is usually no likelihood of confusion.
Registered marks versus common law marks
A "key fact about trademark law is the difference between the ™ symbolTrademark symbol
The trademark symbol, designated by ™ , is a symbol used to provide notice that the preceding mark is a trademark. Use of this symbol does not mean that the trademark has been registered. Registered trademarks are indicated using the Registered trademark symbol...
and the ® symbol
Registered trademark symbol
The registered trademark symbol, designated by ® , is a symbol used to provide notice that the preceding mark is a trademark or service mark that has been registered with a national trademark office...
. The former requires no formal paperwork. You literally just add ™ to claim it. The latter requires an application with the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
that should include proof of sustained and exclusive use of the mark." Using the "TM" mark
Trademark symbol
The trademark symbol, designated by ™ , is a symbol used to provide notice that the preceding mark is a trademark. Use of this symbol does not mean that the trademark has been registered. Registered trademarks are indicated using the Registered trademark symbol...
does not actually confer any legal rights in federal law, but it may nevertheless help a business acquire secondary meaning concerning a specific mark.
Registered and non-registered trademarks are both eligible for protection under the Lanham Act
Lanham Act
The Lanham Act is a piece of legislation that contains the federal statutes of trademark law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.-History:Named for Representative Fritz G...
. The advantage of having a registered mark is that after five years of unopposed use, the mark becomes "incontestable". An incontestable mark cannot be attacked on the grounds that it is merely descriptive (even if it is). This means that the defendant in a trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
suit cannot directly attack the plaintiff's mark, but must instead focus on showing a lack of a likelihood of confusion. Even without incontestability, a registered mark has a presumption of being a valid trademark, placing the burden on the defendant
Defendant
A defendant or defender is any party who is required to answer the complaint of a plaintiff or pursuer in a civil lawsuit before a court, or any party who has been formally charged or accused of violating a criminal statute...
to attack the plaintiff
Plaintiff
A plaintiff , also known as a claimant or complainant, is the term used in some jurisdictions for the party who initiates a lawsuit before a court...
's mark.
Differences from related laws
Unlike copyrightCopyright
Copyright is a legal concept, enacted by most governments, giving the creator of an original work exclusive rights to it, usually for a limited time...
law which provides for criminal penalties as well as civil damages, trademark law in the United States
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
is almost entirely enforced through private lawsuit
Lawsuit
A lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
s. The exception is in the case of criminal counterfeiting of goods. Otherwise, the responsibility is entirely on the mark owner to file suit in either state or federal civil court in order to restrict an infringing use. Failure to "police" a mark by stopping infringing uses can result in the loss of protection.
Also in contrast to copyright or patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law, trademark protection has no expiration. As long as the mark is continually used, it can be protected from infringement indefinitely.
Because federal trademark law is derived from Congress' Commerce Clause power, and not a specific clause in the U.S. Constitution (like copyrights and patents), there must be some degree of interstate commerce present for a trademark to receive Lanham Act
Lanham Act
The Lanham Act is a piece of legislation that contains the federal statutes of trademark law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.-History:Named for Representative Fritz G...
protection. The U.S. Supreme Court invalidated the first federal trademark law by finding that Congress could not stretch the Copyright Clause
Copyright Clause
Article I, Section 8, Clause 8 of the United States Constitution, known as the Copyright Clause, empowers the United States Congress:- Other Terms :This clause is also referred to as:* Copyright and Patent Clause* Patent and Copyright Clause...
to cover trademarks, so Congress had to fall back to only those trademarks used in interstate commerce instead.
See also
- Canadian trade-mark lawCanadian trade-mark lawCanadian trade-mark law provides protection to marks statutorily under the Canadian Trade-marks Act and also at common law. Trade-mark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark...
- Concurrent use registrationConcurrent use registrationA concurrent use registration, in United States trademark law, is a federal trademark registration of the same trademark to two or more unrelated parties, with each party having a registration limited to a distinct geographic area...
- Tea Rose-Rectanus doctrineTea Rose-Rectanus doctrineThe Tea Rose-Rectanus doctrine or remote, good-faith user doctrine is a common law rule of United States trademark law that determines the geographic scope of rights. The doctrine allows a junior user of a mark that is geographically remote from the senior user of the mark to establish priority...
- Genericized trademarkGenericized trademarkA genericized trademark is a trademark or brand name that has become the colloquial or generic description for, or synonymous with, a general class of product or service, rather than as an indicator of source or affiliation as intended by the trademark's holder...
- Imperial Group v. Philip MorrisImperial Group v. Philip MorrisIn Imperial Group v. Philip Morris, 1982 FSR 72, the plaintiff endeavoured to register the trade mark "MERIT" for cigarette products, but was unable to do so on the grounds that the trade mark was too descriptive...
- Service markService markA service mark or servicemark is a trademark used in some countries, notably the United States, to identify a service rather than a product. When a service mark is federally registered, the standard registration symbol ® or "Reg U.S. Pat & TM Off" may be used...
- Trademark dilutionTrademark dilutionTrademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
- Trademark symbolTrademark symbolThe trademark symbol, designated by ™ , is a symbol used to provide notice that the preceding mark is a trademark. Use of this symbol does not mean that the trademark has been registered. Registered trademarks are indicated using the Registered trademark symbol...
- United States copyright lawUnited States copyright lawThe copyright law of the United States governs the legally enforceable rights of creative and artistic works under the laws of the United States.Copyright law in the United States is part of federal law, and is authorized by the U.S. Constitution...
- United States patent lawUnited States patent lawUnited States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
External links
- Text of the Lanham Act
- Website of the US Patent and Trademark Office (including search facility)
- Fair Use Network by the NYU Brennan Center for Justice (information about copyright & trademark fair use)