The Protection of Trademarks 1946
The Protection of Trademarks 1946
Overview
Congress passed the Lanham Act, 15 U.S.C. 1051 et seq., in 1946. The Act establishes a national trademark registration system and protects the owner of a federally registered mark from the use of similar marks if the use is likely to cause consumer confusion or dilution of a well-known mark.
Eligibility for a Trademark
A trademark must meet two basic characteristics to be eligible for protection: it must be in use in commerce and it must be unique.
Requirement for “Use in Commerce”
A trademark is defined by the Lanham Act as a mark that is used in commerce or that is registered with the intention of using it in commerce. See 15 U.S.C. 1127 for more information. Provided a mark is not in use in commerce at the time the registration application is filed, registration may still be granted if the applicant proves a good faith intent to use the mark in commerce at a later date in writing. See 15 U.S.C. 1051 for further information. Exclusive rights to a trademark are granted to the first person to use it in commerce under Lanham Act registration procedures.
Requirement that is “unique”
The second criteria, that a mark be distinctive, refers to a trademark’s ability to identify and differentiate specific goods as coming from one producer or source rather than another. A trademark’s distinctiveness is generally classified into four categories: arbitrary/fanciful, suggestive, descriptive, and generic. 698 F.2d 786, Zatarain’s, Inc. v. Oak Grove Smoke House, Inc. (5th Cir. 1983). If a mark is classified as arbitrary/fanciful or suggestive, it is deemed inherently distinctive, and exclusive rights to the mark are defined purely by the order in which it is used. A descriptive trademark can only be protected as a trademark if it has developed a secondary meaning in the minds of the general public.
In order to secure trademark protection for a personal name or a geographic phrase, secondary meaning is also required. Because generic phrases refer to a broad category of products rather than identifying a single source, they are never eligible for trademark protection. A mark may be generic from the start and hence be refused registration, or it may become generic over time as a result of its use.
Infringement on a trademark
The plaintiff must show that (1) the plaintiff has a valid and legally protectable mark; (2) the plaintiff owns the mark; and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion under the Lanham Act for either a registered mark under 15 U.S.C. 1114 or an unregistered mark under 15 U.S.C. 1125(a). 237 F.3d 198, A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc. (3rd Cir. 2000).
SEE ALSO:
The Copyright Act of 1976;
Expanded Copyrights (2001).
SOURCES: