United States trademark law

Trademarks 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 propsed 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 (15 U.S.C. §§ 1051–1127), which currently defines federal protection and registration for trademarks, administered by the United States Patent and Trademark Office ("USPTO"). State law continues to add its own protection, complementing the federal system.

Judging the likelihood of confusion

The scope of a trademark is determined by whether there is "likelihood of confusion" (note that this is different from whether there has been any actual confusion), between that trademark and another trademark in the minds of the consuming public. Likelihood of confusion is generally determined by reviewing a set list of factors which, depending on the judicial circuit, range from 7 to 13 in number. In the Federal Circuit, for example, these are called the DuPont factors:

We determine likelihood of confusion by focusing on the question whether the purchasing public would mistakenly assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited registrations. [citation]. We make that determination on a case-by-case basis, [citation], aided by the application of the factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Those factors are:

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
2. The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark . . . .
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used . . . .
10. The market interface between the applicant and the owner of a prior mark . . . .
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion . . . .
13. Any other established fact probative of the effect of use.

Id. at 1361, 177 USPQ at 567. Not all of the DuPont factors may be relevant or of equal weight in a given case, and "any one of the factors may control a particular case," In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).

(from In re Majestic Distilling Co. (Fed. Cir. Jan. 2, 2003))

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 fide 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.

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.

Registered marks versus common law marks

In the United States, a trademark which has been registered with the USPTO uses the ® symbol. A business that does not actually register a trademark may instead use the common law designation "TM" in superscript next to 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.

Differences from related laws

Unlike copyright law which provides for criminal penalties as well as civil damages, trademark law in the United States is entirely enforced through private lawsuits. 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.

See also

• Concurrent use registration
• Trademark dilution
• Service mark
• Genericized trademark
• United States copyright law
• United States patent law
• Canadian trademark law

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)