by John Bandler
Here is a brief introduction on trademark law. This is part of my series on intellectual property law, and in the first article I introduce intellectual property (IP) law (The four types of intellectual property law are copyright, trademark, patent, and trade secrets, and I have a short article on each).
Trademark law essentially protects against others imitating logos and marks that a company uses to identify itself and its brand. It seeks to reward companies that build their brands and following, and aims to prevent consumers from being deceived or confused by imposters.
Why do trademarks get legal protection?
Companies expend resources to build their brands, products, and consumer base. Businesses invest in their products and services through development, advertising and building a following. Consumers want to be able to find the brands they trust and brands they learned about through advertising or word-of-mouth. The trademark identifies the brand through logos or words which might be affixed to a store sign, packaging, and the product itself.
It would be unfair to companies and consumers if competitors or fraudsters could dress up their products similarly and trick consumers into thinking they were the genuine item. Trademark law gives protection to a company's brand and how they identify themselves.
Trademark law can protect businesses of any size. Well-known trademarks include those of behemoth companies such as Kellogg's, Coca-Cola, Rolex, Apple, Amazon, and more. Businesses collectively spend billions of dollars building, advertising, and protecting their brands.
Trademark law is principally federal
Trademark protection comes mostly from federal law. The main statute is the Lanham Act of 1946, also known as the Trademark Act, which has been amended over the years. It is found in Title 15, Chapter 22 of the U.S. Code, 15 U.S.C. §1051 et seq. ("Et seq" is the Latin and lawyerly way of saying "and on", thus the trademark statute starts at section 1051, and continues on from there).
Many states also have trademark statutes, and while they vary from state to state, there is a considerable overlap with the Lanham Act.
[Side note: when I was a junior prosecutor, I handled many criminal counterfeit trademark cases where individuals were charged with possessing and selling products that impersonated well-known brands. A word of advice: You should never attempt to buy a genuine Rolex watch from a stranger on a street corner for $50! If that stranger is selling a watch with the Rolex crown logo on it (also known as the Rolex coronet), then that watch (and logo) is surely a counterfeit, and they are violating a number of laws relating to trademarks].
Defining a trademark or "mark"
I have been using the term "trademark", but perhaps "mark" is a more precise term as there are also "service marks" which are source identifiers for services, not goods. Again, a mark is essentially a word, phrase, logo, symbol, character, or combination of these things that is used to identify the source of goods or services. It could even be a design, sound, or scent.
There are four types of marks that can be protected:
- Trademarks are for goods (physical products), and use the symbol TM, or once registered the symbol ®
- Service marks are for services, and use the symbol SM, or once registered the symbol ®
- Collective marks are for associations or organizations (e.g. "CPA" for Certified Public Accountants, or the logo for the Boy Scouts of America)
- Certification marks are for where the mark's owner intends to permit authorized third parties to display the mark (e.g. Energy Star is a certification for products meeting certain energy requirements).
Marks are often a combination of letters, words, and pictures to create a logo of some type. Well-known examples belong to Apple, Uber, Coca Cola, and their associated logos.
"Trade dress" is a product's look and feel, and may be protectable under trademark law. There are two main types of trade dress, product packaging (the container or wrapping of the product) and product design (the design or organization of the product itself).
Legal protection for the mark and registration
A mark can have legal protection even without being registered with the government. Unregistered marks are also known as "common law marks", and the legal protections are more limited than for registered marks.
Securing a registration from the U.S. Patent and Trademark Office (USPTO) provides important additional legal rights. It ensures that the mark is listed in the USPTO’s database of registered and pending trademarks, thus providing public notice of the mark. It gives the owner the right to bring a lawsuit concerning the trademark in federal court. Also, it allows use of the federal trademark registration symbol (®) with the mark to show federal registration. This may help deter others from using the trademark or a similar version. And it also allows the owner to record the registration with U.S. Customs and Border Protection to stop the importation of goods that infringe on the trademark.
Registering the mark
To obtain a federal trademark registration, one applies with the USPTO. If approved, a federal trademark can potentially last forever, but it has to be renewed every ten years. If the mark is still being used between the 5th and the 6th year after it was registered, then the registration can be renewed every ten years thereafter in perpetuity.
There are many nuances to trademark law, so one probably should retain a lawyer who specializes in the field, which means performing the cost-benefit analysis we discussed in the main article on IP.
Marks need to be distinctive to get legal protection
The ability to register a mark, as well as later bring an infringement claim, may be based upon how distinctive it is. There are essentially four categories of distinctiveness:
- Generic (not distinctive)
- Arbitrary or fanciful.
A generic mark (not distinctive at all) is not registrable. As an example, I would not be allowed to trademark the word "lawyer", or "cybersecurity", and a fruit business could not trademark "apple". If the mark is descriptive (describes the product or service), it can only be registered if there is a secondary meaning for the mark (e.g., iBooks and App Store describe the product, but there is also a secondary meaning). If the mark is suggestive, it can be registered, and the applicant does not need to show a secondary meaning (Netflix, PayPal, Facebook suggest the type of service they provide). A mark that is arbitrary or fanciful can be registered without further analysis. For example Apple for a computer (not fruit) which is arbitrary, or Frisbee for the flying disc which is fanciful. Neither word has anything to do with the product or service each represents, thus making it arbitrary or fanciful.
Loss of trademark protection
Trademark protection can be lost by failure to renew by required dates, abandonment, or genericide.
Failure to renew is just like it sounds--the owner let the protection expire by forgetting to renew for another ten-year term (or between the fifth and sixth year after registration).
A mark is abandoned when the owner stops using it and does not intend to resume use. A person's intent can be hard to determine, but a mark that has not been used in commerce for three years is presumed to be abandoned.
Genericide occurs when a mark becomes commonly used to describe a generic good or service rather than a specific brand's product. Aspirin used to be a word with trademark protection, but now is generic, and any company producing acetylsalicylic acid can call it aspirin. "Thermos" is now (essentially) a generic term, so companies can advertise their "thermos" type products. Businesses with famous trademarks (and good legal advice) work to ensure their product is recognized as a specific brand, not a generic term. That's why in my childhood I heard the revised jingle, "I'm stuck on BAND-AID brand, and BAND-AID's stuck on me".
Enforcing trademark legal rights
Where a trademark has legal protection, there must be some legal recourse if someone infringes that mark. The main standard to bring this civil claim for trademark infringement is through showing a likelihood of confusion, meaning that consumers are likely to confuse the infringer's mark with the protected mark. The elements of this cause of action are:
- Plaintiff has a legally protectable mark (whether registered or not -- but a registered mark means a much stronger legal case)
- Plaintiff owns the mark
- Defendant's use of the mark causes a likelihood of confusion.
Whether something causes "a likelihood of confusion" or not requires some evaluation. Some factors to consider are:
- Similarity of marks
- Whether both parties compete in the same market
- Consumers have actually been confused
- The mark is more distinctive (and less generic)
- Defendant intended to take sales away from the trademark owner
- Level of consumer sophistication.
Trademark dilution is a claim only for famous brands
There is another cause of action that is reserved for owners of "famous" marks. A civil claim for trademark infringement can be brought if the plaintiff has a famous mark and shows "trademark dilution". Such dilution could take place by blurring or tarnishment. Dilution by blurring means the defendant is impairing the distinctiveness of that famous mark. Dilution by tarnishment means the defendant is damaging the reputation of that famous mark, by associating that famous mark with something unsavory.
Trademark dilution protection comes from the Federal Trademark Dilution Act of 1995 (FTDA) and Trademark Dilution Revision Act of 2006, which are incorporated into Title 15 Chapter 22 of the U.S. Code. Again, a dilution claim cannot be brought unless the mark is famous.
Domain name protection and cybersquatting
What if someone intends to profit off someone else's trademark (or name) by registering domain names that incorporate their trademark or name? That is known as "cybersquatting", or domain squatting, and there are legal protections against that.
Once upon a time, the sole recourse for this cybersquatting was under the FTDA (see above). Then in 1999 came the Anti-cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d). This provides a civil cause of action when someone registers, uses or sells a domain name with the "bad faith intent" to profit from a trademark that belongs to someone else. The statute provides additional information on how to determine that bad faith.
This is a brief summary with many simplifications, bringing complex subject matter to all readers in an understandable and accessible manner. This article is for myself and students, and anyone else in need of information. It is not legal advice nor consulting advice, and is not tailored to your circumstances. I am not an intellectual property lawyer, which is a specialized area of law.
If your organization needs help in the areas of intellectual property law, I can help find someone experienced in intellectual property law, and see below. If your organization needs help with cybersecurity (including protecting trade secrets and other proprietary information and confidential data), contact me.
While I remain responsible for what I have written here (subject to my disclaimers in the article and my website's general disclaimer), I want to thank the following experts in intellectual property law for reviewing this article and providing quality control as needed:
References and additional reading
- Introducing intellectual property law
- Copyright law
- Patent law
- Trade secrets law
- US Patent and Trademark Office (USPTO) https://www.uspto.gov/
- USPTO Trademarks https://www.uspto.gov/trademarks
- Trademark Act (Lanham Act of 1946), as amended and codified in Title 15, Chapter 22 of the U.S. Code, https://www.law.cornell.edu/uscode/text/15/chapter-22
- Cornell Law LII on the Lanham Act, https://www.law.cornell.edu/wex/lanham_act
- Anti-cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), https://www.law.cornell.edu/uscode/text/15/1125
- Students, Learning, and Teaching
This article is hosted at https://johnbandler.com/intellectual-property-law/trademark. Copyright John Bandler, all rights reserved.
This article is also available on Medium.com at COMING SOON (though not updated as frequently and without the references).
Originally posted 12/23/2021. Last updated 03/01/2022.