4.3 U.S. Trademark Law

U.S. trademark law protects distinctive marks used in commerce to identify goods and services. It's built on key principles like distinctiveness, use in commerce, and likelihood of confusion, which determine what can be protected and how rights are enforced.

The Lanham Act of 1946 forms the foundation of modern trademark law. It established important features like federal registration, incontestability, and dilution protection, giving trademark owners powerful tools to safeguard their brands in the marketplace.

U.S. Trademark Law

Key principles of trademark law

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• Distinctiveness
  • Marks must be capable of distinguishing the goods/services from those of others (Nike, Apple)
  • Spectrum of distinctiveness: fanciful (Xerox), arbitrary (Apple), suggestive (Greyhound), descriptive (Best Buy), generic (aspirin)
  • Descriptive marks require secondary meaning, acquired distinctiveness through use and promotion, to be protected (American Airlines)
  • Generic terms, common names for goods or services, are not protectable as trademarks (escalator, thermos)
• Use in commerce
  • Marks must be used in commerce, sold or transported, to establish and maintain rights (Coca-Cola)
  • Interstate commerce, across state lines, is required for federal registration (Amazon)
• Likelihood of confusion
  • Infringement occurs when there is a likelihood of confusion, mistake or deception, between marks (McDonald's vs. McDowell's)
  • Factors considered: similarity of marks, relatedness of goods/services, strength of the mark, actual confusion, intent, consumer sophistication
• Priority of use
  • Rights are generally based on the first use of the mark in commerce, earliest user has priority (Burger King vs. Burger King of Florida)
  • Common law rights, based on use without registration, are limited to the geographic area of use (In-N-Out Burger)
• Registration
  • Federal registration provides additional benefits and nationwide priority, constructive use (Nike swoosh)
  • Registration is prima facie evidence, presumption, of validity, ownership, and exclusive right to use (Adidas three stripes)

Evolution of federal trademark legislation

• Trademark Act of 1870
  • First federal trademark law in the U.S., broad in scope
  • Declared unconstitutional in 1879 (Trade-Mark Cases), exceeded Congress' power under the Copyright Clause
• Trademark Act of 1881
  • Narrower in scope, focused on foreign commerce and trade with Native American tribes
  • Upheld as constitutional under the Commerce Clause
• Trademark Act of 1905
  • Expanded protections and allowed registration of marks used in interstate commerce
  • Established the first principal register for trademarks, official record of marks
• Lanham Act of 1946
  • Comprehensive federal trademark law still in effect today, named after Rep. Fritz Lanham
  • Significantly expanded trademark rights and remedies, basis for modern trademark law

Provisions of Lanham Act

• Creation of the principal and supplemental registers
  • Principal register for distinctive marks, provides greatest protection (Coca-Cola)
  • Supplemental register for marks capable of acquiring distinctiveness, limited protection (Park 'N Fly)
• Incontestability
  • Marks can become incontestable, immune from certain challenges, after five years of continuous use post-registration (McDonald's golden arches)
  • Limits challenges to the validity of the mark, such as descriptiveness
• Intent-to-use applications
  • Allows filing based on a bona fide intention to use the mark in commerce, before actual use (Amazon's "Prime" mark)
  • Actual use is required before registration is granted, proves genuine intent
• Dilution protection
  • Protects famous marks from uses that blur or tarnish their distinctiveness, even in unrelated fields (Kodak, Rolls-Royce)
  • Does not require likelihood of confusion, protects the mark's reputation
• Remedies
  • Injunctions, court orders to stop infringing use
  • Damages, monetary compensation for infringement (lost profits, reasonable royalty)
  • Profits, disgorgement of infringer's profits
  • Costs and attorneys' fees, in exceptional cases
  • Statutory damages for counterfeiting, set by law
• Federal unfair competition law
  • Section 43(a) protects against false designation of origin and false advertising (Dastar Corp. v. Twentieth Century Fox)
  • Covers a broader range of unfair competition claims beyond trademark infringement (trade dress, product configuration)

Additional Trademark Concepts

• Trademark infringement and defenses
  • Occurs when unauthorized use of a mark causes likelihood of confusion
  • Fair use defense allows limited use of another's mark for descriptive purposes or commentary
  • Functionality doctrine prevents trademark protection for features essential to a product's use or purpose
• Trademark maintenance and loss
  • Trademark clearance involves searching for existing marks to avoid conflicts before adopting a new mark
  • Abandonment occurs when a mark is no longer used with intent to resume use, leading to loss of rights
  • Concurrent use allows multiple parties to use similar marks in different geographic areas under specific conditions
• Special types of marks
  • Certification marks indicate that goods or services meet certain standards set by the certifying organization