September 24, 2018


If copyright is the law of authorship and patent is the law of inventions, trademark is the law of consumer marketing and advertising.  A trademark is any symbol, work, name, device or any combination of these used to identify products, services, or their producers in the marketplace.  Trademarks are not limited to words or written symbols but may include sounds, fragrances, the distinctive features of items and the trade dress of both the packaging of a product and the non-functional features.  A non-traditional example of a trademark is the  distinctive deep rumble of a Harley Davidson motorcycle.

Trademarks plan an important role in a modern consumer drive society.  For the merchant or manufacturer, a trademark serves to identify and distinguish the goods or services of that person or company.  This allow manufacturers to create “brand quality” and ensure that customers will continue to purchase their products.  In turn, consumers rely on trademarks to distinguish among competing products and to select those which are of high quality.  “Without trademarks and he identifying functions they serve, competition in product quality could not exist.”

While there are important advantages to be gained by registering a mark with the United States Patent and Trademark Office, unregistered marks may be protected under both federal and state law.  In particular, the protection of unregistered marks is limited to the geographical area in which the mark is actually used, whereas, federal registration provides the owner with the exclusive right to use that mark in the United States.

Unlike copyrights and trademarks, Congress’s power to regulate trademarks is not derived from a specific constitution grant.  The Supreme Court has ruled that the patent and copyright clause of the Constitution does not apply to trademarks.  The authority for trademark protection is based on the “commerce clause.”  The Lanham Act for a system of registering and administering trademarks with the Patent and Trademark Office.  In addition to the nationwide protection of trademarks, federal registration also offers a number of other important advantages.  First, a registrant has access to the federal courts without pleading any required amount in controversy.  Second evidence of registration is prima facie evidence of the validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark.  Third, registration may be used as a jurisdictional prerequisite to federal criminal prosecution and is an essential element in a prosecution for trafficking in counterfeit goods.

In order to obtain a federal trademark registration from the Patent and Trademark Office, the applicant must establish (1) distinctiveness of the mark, and (2) use or intent to use the mark in interstate or foreign commerce.  Marks may be inherently distinctive or non-inherently distintive.  Within these two basic categories trademarks are grouped in descending order roughly reflecting their eligibility to trademark status and the degree of protection afforded, as follows: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; and (5) generic.  Fanciful, arbitrary, and suggestive terms are considered inherently distinctive and are entitled to trademark protection without a showing of secondary meaning.  In contrast, descriptive terms are not inherently distinctive and before being accorded trademark protection the user must establish secondary meaning.  The prime element of secondary meaning is a mental association in buyers’ minds between the alleged mark and a single source of the product.  Finally, generic terms can never be trademarks.