Federal Trademark Law
Federal trademark law protects brand names and symbols, such as logos, that consumers rely upon to recognize particular goods and services. Trademarks in the United States are managed by the United States Patent and Trademark Office (USPTO).
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Trademark Statutes
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Most U.S. trademark law is governed by Section 15 of the United States Code, commonly known as the Lanham Act. Until the Lanham Act was passed in 1946, however, most U.S. trademark law was based on common law, or decisions made by judges, including the U.S. Supreme Court. Although common-law trademark actions remain available, most trademark rules and disputes fall under the Lanham Act.
What Trademark Law Protects
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In a broad sense, federal trademark law protects any word, phrase, or symbol that identifies a particular manufacturer's product and distinguishes it from similar products in the marketplace.
The overwhelming majority of registered trademarks are words, phrases, or logos. However, other identifiers such as a particular color, smell, or sound may also be trademarked, as long as they only identify the product and do not provide any useful benefit. For instance, if your company sells a sunscreen that is bright orange, you may be able to trademark the sunscreen's bright-orange color, if the color is used to market the product and consumers rely on the color to identify it. If the sunscreen is bright orange because orange is the most effective sun-blocking color, however, you would not be able to trademark the color. In that case, the color would be serving a useful purpose, not merely distinguishing your sunscreen from others.
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What Counts as a Trademark?
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In order to register a particular mark as a trademark, the mark must be distinctive, meaning that it must identify the particular good from its competitors. When determining whether a mark is distinctive, courts look at the relationship between the mark and the product it identifies. Marks typically get placed in one of four categories:
1. Arbitrary or Fanciful--These are marks that bear no resemblance to the product they identify. Arbitrary or fanciful marks are given a high degree of trademark protection.
2. Suggestive--Those that evoke or imply a characteristic of the item they identify, without naming the product itself. Consumers must exercise a little imagination to see the connection between the name and the product. Suggestive marks also receive a high degree of trademark protection.
3. Descriptive--A descriptive mark is one that explains what the product or service is or does. For instance, a chain of tire stores called "Tire World" could be said to have a descriptive mark, which states that the company works with tires. Descriptive marks do not receive trademark protection until they acquire a "secondary meaning" in the marketplace. In other words, consumers must recognize that "Tire World" means a particular chain of tire stores, not just any place that sells tires.
4. Generic--Generic marks describe the general category to which a product or service belongs. Because they are not distinctive, they do not receive trademark protection.
How to Establish Trademark Rights
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Trademark rights can be established in two ways. First, by being the first person to use the mark in commerce, and second, by registering the mark with the U.S. Patent and Trademark Office (USPTO). Arbitrary and suggestive marks may receive trademark protection no matter when they are filed; descriptive marks, however, require "secondary meaning" and thus have to be used in commerce long enough for consumers to recognize them before they will receive trademark protection.
Trademark protection based on use is limited only to the geographic area where the mark is actually used. Trademark protection based on registering a trademark with the USPTO, however, is available nationwide.
Losing Trademark Rights
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Trademark rights can be lost through abandonment, improper licensing or assignment, and genericity.
A trademark is abandoned when its owner stops using the trademark with no intention to start using it again. Abandonment can be inferred from the circumstances, can be stated directly by the trademark's owner, or can kick in automatically after three consecutive years of non-use.
Improper licensing or assignment can also cause the loss of trademark rights. If a trademark is licensed to a franchisee without proper oversight, it may be lost. Likewise, if a trademark is assigned to another party without any assets changing hands, the mark's protection may be lost.
Genericity occurs when a trademark becomes so overused that it stops being a brand name and starts referring to any example of that product. For instance, the word "aspirin" was once a brand name referring to a specific medication, but has now become a general term for all medications consisting of salicylic acid.
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