Trademarks are used to identify and distinguish the source of goods as being from a particular manufacturer. The primary law associated with trademarks is the federal Lanham Act, which defines a trademark as a mark used in commerce or registered with the bona fide intent that the registrant will use it in commerce. However, state laws also protect trademarks.

You can use a word, name, symbol, design, or a combination of these as a trademark. The two requirements that must be met to make a mark eligible for trademark protection under the Lanham Act are that the mark is used in commerce, and that it is distinctive. When a mark is not used in commerce at the time of registration, registration is allowed if you establish in writing that you possess a good-faith intent to use the mark in commerce moving forward.

The mark must also be distinctive. A trademark can fall into one of the following categories that indicate the strength of the mark: arbitrary, fanciful, suggestive, descriptive, and generic. The category that your trademark falls into will determine the degree of protection and who gets exclusive rights to the mark.

In some cases, shapes, colors, fragrances, or sounds can be used and registered as trademarks. However, under the functionality doctrine, you cannot trademark an aspect of a product that is a useful or functional feature of the product. A feature is considered functional if it is essential to the use of the product. For example, a personal computer manufacturer could not trademark a screen because it is essential to using a personal computer.

Can a Trademark Be Denied Registration?

Certain trademarks can be denied registration under 15 U.S.C. § 1052. The first of the categories of trademarks that can be denied registration is immoral, scandalous, or deceptive material, or material that disparages people, institutions, beliefs, or national symbols. Another category of trademarks that can be denied registration are geographical indications used on alcoholic beverages to indicate a place other than the origin of the goods, if it is used on or in connection with alcoholic beverages by the applicant on or more than one year after the WTO Agreement went into effect for the United States.

Some of the other categories of trademarks that can be denied registration include:

• Trademarks showing the flag, coat of arms, or other insignia of any country, state, or municipality;
• Trademarks involving names, portraits, or signatures identifying a particular living individual, or deceased President during the life of his widow, except when the individual or the widow gives written consent;
• Trademarks that so closely resemble a previously registered mark or a mark previously used in the U.S. and not abandoned, when it is likely that the mark will confuse, cause a mistake, or deceive someone; and
• Trademarks that are merely descriptive or deceptively mis-descriptive of the goods connected to them.

Trademark Dilution

A trademark owner that owns a famous mark can bring a federal lawsuit for trademark dilution. This is a lawsuit that stops others from using a mark in a way that reduces its uniqueness. Usually, trademark dilution involves the use of another’s trademark on a non-competing product. For example, a famous trademark used to refer to a company’s luxury high heels could be diluted if another company used a similar mark to refer to food..

A federal court will decide whether a mark is famous enough for a dilution claim by examining its degree of distinctiveness, how long the trademark was in use and how much it was in use, the amount of advertising and publicity connected with it, the geographic range of the market, channels of trade, the degree to which it is recognized in trade, the use of similar trademarks by third parties, and whether the trademark is registered.

In some states, however, a mark does not need to be famous to file a state dilution suit. Instead, the issues are whether the mark has a distinctive quality and the two marks are substantially similar.

Last updated April 2018