The Protection of Trademarks 1946

The Protection of Trademarks 1946
The Protection of Trademarks 1946

The Protection of Trademarks 1946

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).



The Berne Convention (1878);

The Copyright Act of 1976;

Expanded Copyrights (2001).



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The Protection of Trademarks 1946