Trademark Law

Trademark Law in the United States

Introduction to Trademark Law

American companies can have trademark rights under both state and federal law. Under state law, the first firm to use a particular mark is the legal owner of that mark. A trademark owner can gain valuable additional rights by registering its trademark under the federal Lanham Act. To be eligible for federal registration the mark must be used in interstate or foreign commerce. It also must not fall into certain forbidden categories listed in the Lanham Act. For example, it is forbidden to use the flag of a foreign country or the name of a living person without that person’s permission. Additionally, inaccurate geographic terms cannot be used as trademarks, such as Idaho for potatoes grown in Maine. Most importantly, the general name for a type of product cannot be a trademark. Every maker of that product must be free to use that word. For example, Sony is a well-known trademark for televisions and radios, but no one can have trademark rights to the words television or radio.

The Lanham Act is administered by the U.S. Patent and Trademark Office (PTO), a division of the Department of Commerce. The PTO will not grant registration for a trademark until it has actually been used to identify a product. A firm may, however, begin the registration process before use by declaring that it has a good faith intent to use the mark in the future. In contrast, most other countries will register a mark before actual use, although they often require use within several years after registration. The PTO will also deny registration of a trademark if the mark is similar to one that someone else has previously registered or used in the United States. It is usually permissible, however, for similar trademarks to be used on different types of goods or services. For example, a trademark for both a brand of sugar and for a chain of pizza delivery restaurants may be similar without violating trademark law.

If, after conducting its examination, the PTO decides that a proposed trademark is acceptable, the PTO will publish the mark in its Official Gazette, which is available on the Internet. This enables members of the public to learn what registration applications are pending and to object if they think the trademark should not be registered. A party who objects can file a petition, called an opposition, which will be decided by the PTO. Only federally registered trademarks may use the registered trademark symbol, ®. Trademark registration lasts for ten years but may be renewed indefinitely if the mark is still being used.

The owner of a trademark may permit others to use it by granting them a license. Many franchise businesses, such as gas stations and fast food restaurants, involve trademark licensing. The owner of the trademark must supervise the licensees to make sure they provide a consistent type and quality of goods or services. Failure to supervise can result in loss of rights to the trademark.

Sometimes the public stops thinking of a trademark as a brand name and begins to think of it merely as a general category of goods. The trademark owner has a responsibility to make sure this does not happen. If the trademark owner fails in this task, it will lose its legal rights to the word or symbol because the source of the goods can no longer be easily identified. Experts in trademark law declare that such a mark has become “generic.” Examples of words that were once trademarks but are now generic include escalator, aspirin, cellophane, trampoline, and thermos. Companies that own popular trademarks like Xerox, Kleenex, and Band-Aid spend a great deal of money to make sure the public understands that these are brand names and not generic words.

The law prohibits the use of a trademark belonging to someone else in any way that might confuse the public. Anyone who does this is considered an infringer. The owner of the mark may sue the infringer and is entitled to an injunction forbidding the infringer from continuing to use the mark.

In certain cases, the trademark owner may also be entitled to an award of monetary damages. Even if the marks are not identical, or even if they are used on different types of products, a court can still declare this an infringement if it finds that the public might be confused. Courts look at many different kinds of evidence to decide if the public might be confused. Relevant factors include the similarity of the marks, the similarity or relationship of the goods, consumer familiarity with the plaintiff’s trademark, and the intent of the defendant. Parties in trademark disputes often take surveys to determine whether the public is confused and offer those surveys as evidence in court.” (1)

U.S. Trademark Law Online Resources

Several sites offer concentrations of trademark material, both domestic and foreign. All About Trademarks (www.ggmark.com/), from Washington, D.C., lawyer Gregory Guillot, gives us an excellent collection of links to federal (www.ggmark.com/#Federal_Trademark_Law) and state law (www.ggmark.com/#State_Trademark_Law) and the laws of other nations (www.ggmark.com/#International_Trademark_Law). Another worthy site is Trademark Material on the Web (www.law.wayne.edu/litman/classes/tm/trademark.htm) by Jessica Litman, a professor at Wayne State University Law School in Michigan.

Top online resources include:

  • leginfo.ca.gov/cgi-bin/calquery?codesection=bpc&codebody=trademarks (Official California Legislative Information Page)
  • www4.law.cornell.edu/uscode/15/ch22.html (U.S. Code of Commerce and Trade at Cornell Law School)
  • inta.org/ (International Trademark Association)

Trademark in the U.S. Code

The United States Tradmark Code appears in Chapter 22 of Title 15 of the United State Code.

Trademark Law

Leading Case Law

Among the main judicial decisions on this topic:

Wal-Mart Stores v. Samara Bros.

Information about this important court opinion is available in this American legal Encyclopedia.

Moseley v. V Secret Catalogue Brother Records v. Jardine

Information about this important court opinion is available in this American legal Encyclopedia.

References

See Also

  • Intellectual Property
  • Trademark Law

Resources

Notes and References

  1. Information about Trademark Law in the Encarta Online Encyclopedia

See Also

  • Trademark
  • Trademark Act Of 1946
  • Trademark Process
  • Functions of the Patent and Trademark Office (United States)
  • Frequently Asked Questions about Trademarks
  • Patent and Trademark Office
  • Trademarks
  • Trademark Counterfeiting Act Of 1984
  • Business Name
  • Paris Convention for the Protection of Industrial Property
  • Trademark Cases
  • Paris Convention for the Protection of Industrial Property

Guide to Trademark Law

Trademark Law: Open and Free Legal Research of US Law

Federal Primary Materials

The U.S. federal government system consists of executive, legislative, and judicial branches, each of which creates information that can be the subject of legal research about Trademark Law. This part provides references, in relation to Trademark Law, to the legislative process, the federal judiciary, and the primary sources of federal law (cases, statutes, and regulations).

Federal primary materials about Trademark Law by content types:

Laws and Regulations

US Constitution
Federal Statutory Codes and Legislation

Federal Case Law and Court Materials

U.S. Courts of Appeals
United States courts of appeals, inclouding bankruptcy courts and bankcruptcy appellate panels:

Federal Administrative Materials and Resources

Presidential Materials

Materials that emanate from the President’s lawmaking function include executive orders for officers in departments and agencies and proclamations for announcing ceremonial or commemorative policies. Presidential materials available include:

Executive Materials

Federal Legislative History Materials

Legislative history traces the legislative process of a particular bill (about Trademark Law and other subjects) for the main purpose of determining the legislators’ intent behind the enactment of a law to explain or clarify ambiguities in the language or the perceived meaning of that law (about Trademark Law or other topics), or locating the current status of a bill and monitoring its progress.

State Administrative Materials and Resources

State regulations are rules and procedures promulgated by state agencies (which may apply to Trademark Law and other topics); they are a binding source of law. In addition to promulgating regulations, state administrative boards and agencies often have judicial or quasi-judicial authority and may issue administrative decisions affecting Trademark Law. Finding these decisions can be challenging. In many cases, researchers about Trademark Law should check state agency web sites for their regulations, decisions, forms, and other information of interest.

State rules and regulations are found in codes of regulations and administrative codes (official compilation of all rules and regulations, organized by subject matter). Search here:

State opinions of the Attorney General (official written advisory opinions on issues of state law related to Trademark Law when formerly requested by a designated government officer):

Tools and Forms

Law in Other Regions

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