An Introduction to Trademark Law in the United States
July 24, 2023
An Introduction to Trademark Law in the United States
Trademarks are a form of intellectual property that serve to
In between generic and inherently distinctive trademarks
identify the sources of goods. Trademarks have attracted
are “descriptive” marks, which describe an aspect of the
renewed attention since the U.S. Supreme Court decided
product (e.g., “tasty” chicken). A descriptive mark is
two cases regarding the main federal trademark law, the
protectable if and only if consumers come to associate it
Lanham Act, 15 U.S.C. §§ 1051 et seq., in June 2023 and
with a specific seller over time (e.g., “Holiday Inn”), thus
agreed to hear a third such case in its 2023–2024 term. This
giving the mark a distinctive “secondary meaning” so that it
In Focus provides an overview of U.S. trademark law.
is no longer merely descriptive. Surnames and geographic
terms also must acquire secondary meaning to be protected.
What Are Trademarks?
The Lanham Act defines trademarks as words, names,
Nonfunctionality
symbols, or devices used to distinguish one person’s goods
Trademarks cannot include “functional” (useful or
from those manufactured or sold by others. Trademarks are
necessary) characteristics of a product. This requirement
thus said to identify a good’s “source of origin.”
separates trademarks from patents, which give their owners
Trademarks help consumers distinguish between different
a time-limited monopoly on practicing useful inventions.
sellers’ goods, and they help sellers protect their reputation
or “goodwill” with buyers. In addition to things like phrases
Use in Commerce
and graphic designs, trademarks may include the overall
Trademarks are not protectable unless they are actually
appearance, or “trade dress,” of a product and its packaging.
used in commerce to identify the owner’s products.
Typically, the first person to use a mark receives priority
The Lanham Act also recognizes several other kinds of
over later users. Trademark protection can also be lost if the
protected marks. Service marks (e.g., the McDonald’s
owner “abandons” (i.e., stops using or enforcing) a mark.
arches) identify sources of services, collective marks (e.g.,
the American Automobile Association’s AAA logo) may
Trademark Registration
identify associations, certification marks indicate
Registering one’s trademark with the U.S. Patent and
characteristics like regional origin or materials, and trade
Trademark Office (PTO) is not legally required for a mark
names identify businesses. This In Focus uses the term
to be protected, but doing so gives the owner certain
trademark to refer collectively to all protected marks,
benefits. For instance, registration creates a legal
which are treated similarly under the law.
presumption of validity and ownership in the mark, gives
the owner nationwide priority over others who wish to use
The Lanham Act does not generally protect so-called rights
the mark, and allows the owner to use the ® symbol.
of publicity, such as the right to prevent others from using
one’s voice or likeness for commercial gain, except in cases
Registration Requirements and Duration
of “false endorsement,” as noted below. The laws of many
To register a trademark with the PTO, the applicant must
states, however, recognize such rights to varying degrees.
either be using the mark in commerce or rely on
“constructive use”—that is, a good-faith intent to use the
Trademark Requirements
mark followed by actual use within a certain time after
A mark may qualify as a valid trademark only if it meets
registration. Alternatively, trademarks registered in certain
three separate requirements: it must be distinctive,
foreign countries may be registered in the United States if
nonfunctional, and used in commerce.
the applicant intends to use the mark in U.S. commerce.
Distinctiveness
Trademark registration can last indefinitely, provided the
Trademarks must be distinctive enough to serve their basic
owner renews the registration after the first 5 years and
function of distinguishing one seller’s goods from
every 10 years thereafter. After the first 5 years, the owner
another’s. A trademark is considered inherently distinctive,
may file a “declaration of incontestability,” which prevents
and therefore protectable, if it is “fanciful” (coined for use
others from contesting validity, ownership, and exclusive
as a trademark, e.g., “Xerox”), “arbitrary” (e.g., calling a
use rights for the mark, with some exceptions.
computer “Apple”), or no more than “suggestive” of the
product or its qualities (e.g., “Coppertone” for sunscreen).
Although the Lanham Act prohibits owners from
By contrast, generic terms—which merely name the type of
registering marks that “disparage” or are “scandalous,” the
product at issue—are never distinctive and cannot be
Supreme Court invalidated those prohibitions as violating
trademarked. One cannot use the word “apple,” for
the First Amendment in 2017 and 2019, respectively. In
instance, as a trademark for actual apples.
June 2023, the Supreme Court agreed to hear a First
Amendment challenge to the Lanham Act’s prohibition on
trademarks that use another living person’s name. The
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An Introduction to Trademark Law in the United States
seller in that case, Vidal v. Elster, argues that, by preventing
Trademark Dilution
him from registering the mark “Trump Too Small” for T-
Dilution consists of conduct that damages “famous”
shirts, the act violates his right to criticize public officials.
trademarks—i.e., those that are widely recognized by the
general public. Dilution occurs when unauthorized use of a
Challenging Trademark Registration Decisions
famous trademark either “blurs” the mark (weakening the
The Lanham Act provides certain opportunities to challenge
association between the mark and the goods it represents)
a trademark’s registration. Within a certain time prior to
or “tarnishes” the mark (harming its reputation). For
registration, a person may file an opposition petition with
example, unauthorized sale of Starbucks-branded auto parts
the PTO’s Trademark Trial and Appeal Board (TTAB).
might blur the association between Starbucks and coffee.
After registration, a person may petition TTAB for
“cancellation” of a trademark on various grounds, including
Cybersquatting
genericness, functionality, and abandonment. During the
In 1999, Congress amended the Lanham Act by passing the
first five years of registration, a person may also petition for
Anticybersquatting Consumer Protection Act (ACPA). 15
cancellation on grounds that the mark is merely descriptive
U.S.C. § 1125(d). The ACPA allows a trademark owner to
or conflicts with prior use of a confusingly similar mark.
sue someone who uses an internet domain that is identical
The Trademark Modernization Act of 2020, P.L. 116-260,
or confusingly similar to a trademark—or that dilutes a
established two new kinds of proceedings—expungement
famous mark—in bad faith.
and reexamination, 15 U.S.C. §§ 1066a and 1066b—to
invalidate trademarks that are not (or were not at relevant
False Advertising
times) actually used in commerce.
The Lanham Act provides protection against some kinds of
false advertising even if they do not involve trademark
In addition to such administrative proceedings, a defendant
infringement. To prove false advertising under the act,
sued in court for violating the Lanham Act may argue that
plaintiffs must show they were injured by a false statement
the plaintiff’s trademark is invalid, subject to the above-
that the defendant made about their own or others’ products
noted restrictions on challenging incontestable trademarks.
or services in interstate commerce and that the statement
could deceive a substantial portion of the target audience.
Lanham Act Violations and Remedies
The Lanham Act provides civil liability for trademark
Remedies and Enhanced Counterfeit Penalties
infringement, trademark dilution, cybersquatting, and false
The Lanham Act generally authorizes courts to remedy
advertising. The act gives U.S. district courts nonexclusive
violations via compensatory damages, which aim to redress
jurisdiction over these lawsuits, meaning that plaintiffs may
economic harm sustained by the plaintiff, and injunctions,
choose to file such lawsuits either in federal or state court.
which aim to prevent further violations and harm.
Trademark Infringement
The Lanham Act provides heightened penalties for
Trademark infringement consists of unauthorized use of a
counterfeiting, which occurs when a person uses an exact
registered (or similar) mark that creates a likelihood of
copy of a trademark on similar goods, such as fake watches
confusion for consumers as to source of origin of goods.
or handbags. The Lanham Act gives trademark owners their
Owners of unregistered trademarks may sue under a similar
choice of treble or statutory damages for counterfeiting and
claim called “false designation of origin.”
provides for seizure of counterfeit goods, while other
federal laws provide criminal penalties for counterfeiting.
Courts look at many factors to determine if unauthorized
use of a mark is likely to confuse consumers. Some of these
Limitations on Lanham Act Liability
factors include the degree of similarity between the marks
Certain uses of others’ trademarks are “fair uses” for which
used by the parties, the degree of similarity between the
the user is not liable. Fair uses include, for instance, some
parties’ products, whether the defendant intended to deceive
advertisements that compare one’s own products with those
the public, whether survey data reveals actual confusion,
of a competitor.
and the sophistication of the relevant consumers. Confusion
may be less likely, for example, if the defendant uses a
Some courts have held that the Lanham Act does not
recognizably different mark or if the relevant buyers are
prohibit the use of others’ trademarks in artistic works that
sophisticated companies. Courts also consider the
are protected by the First Amendment. The Supreme Court
“strength” of the plaintiff’s trademark, both in terms of its
rejected one application of this doctrine in its June 2023
marketplace recognition and on a strongest-to-weakest scale
decision Jack Daniel’s v. VIP Products. VIP sold a dog toy
of fanciful, arbitrary, suggestive, and descriptive marks.
that resembled a Jack Daniel’s whiskey bottle. At trial, Jack
Stronger trademarks receive a higher level of protection,
Daniel’s won its claims for trademark infringement and
with courts regarding unauthorized use of stronger marks as
dilution against VIP. A federal appeals court overturned the
being more likely to confuse consumers.
win, holding that VIP was not liable because the toy was a
“parody” protected by the First Amendment. The Supreme
Another confusion-based claim under the Lanham Act is
Court reversed, holding that defendants who use others’
“false endorsement,” where a person’s name or identity is
trademarks to identify their own products (e.g., dog toys)
used to imply falsely that the person endorses a product.
are not shielded from liability for trademark infringement.
In another June 2023 decision, Abitron v. Hetronic, the
Supreme Court held that the Lanham Act’s prohibition on
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An Introduction to Trademark Law in the United States
trademark infringement does not apply “extraterritorially,”
Christopher T. Zirpoli, Legislative Attorney
i.e., outside the borders of the United States. Rather, the act
applies only to infringing uses within the United States.
IF12456
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