The business world is highly competitive. Your reputation, or “goodwill,” can make the difference between the success and failure of a commercial enterprise. But goodwill rarely comes quick or easily. It’s often the result of hard work consistently done over a long period of time. You don’t want to spend the time, money, and effort to maximize your reputation and goodwill only to have a competitor use your name or other recognizable information to confuse the public and take away sales. That’s one of the key objectives of trademark protection.
A trademark is any word, phrase, or symbol a company or individual has either registered or established through use as being related to certain goods or services. (Marks related to services are generally referred to as “service marks.”) While trademarks are typically visual representations—logos, images, or words—sounds can also be trademarked. Trademarks are generally categorized as:
In the United States, two types of laws govern trademark applications and trademark rights. The federal Lanham Act provides statutory guidance for trademark application and protection of trademarks from infringement. Many states also have trademark statutes that can provide protection against infringement within the borders of the state.
Common law trademark rights arise out of judge-made law and give business owners certain rights once they use a mark in commerce. Common law trademarks are generally protected by state law.
Unlike patents and copyrights, trademarks were not specifically addressed at the American Constitutional Convention. The concept of trademark, though, has been around for millennia, as archaeologists have found marks on pottery, and guildsmen in the Middle Ages were known to put distinguishing marks on their work.
The common laws governing trademarks were carried over from the common law of England into the American colonies and provided some protection at the state level. The first federal trademark statute was passed in 1870 but ruled unconstitutional just nine years later. In response, Congress enacted a new trademark law in 1881. That law was substantially revised in 1905, and in 1946, Congress passed the Lanham Act, which established the U.S. Patent and Trademark Office (USPTO), set up the trademark registration process, and identified the federal protections afforded to trademark owners.
At its core, the federal trademark law is intended to protect the goodwill of a business by helping consumers correctly identify the source of goods or services obtained. Trademarks offer protection for symbols, words, phrases, pictures, sounds, and other representations used on goods and services. An applicant cannot obtain a trademark unless goods or services are available in the marketplace.
To acquire trademark protection, you must meet the criteria set forth above—your mark must either be inherently distinct or have acquired secondary meaning. In addition, you must show actual use or an intention to use the mark in commerce. There is no requirement that you register your trademark with the USPTO, but if you don’t, you will have protection only under the common law, which tends to be enforceable only in the geographic area where you do business.
The Lanham Act conveys to a seller of goods or services the exclusive right to register a trademark with the USPTO. If you file a registration application, but it is not yet approved, you can put a “TM” (trademark, for goods) or “SM” (service mark, for services) symbol on the mark. Once the USPTO approves your registration, you can note that (and provide notice to potential infringers) by putting an “®” symbol next to your trademark.
Registration of a trademark gives the owner a bundle of rights, including:
In theory, a trademark can be never-ending, but you must renew the mark every ten years. In addition, you must prove that you continue to use the mark in commerce.
The focus of any allegation of trademark infringement will always center on what is known as the “likelihood of confusion.” In most instances, a mark offers protection only within a narrow range of goods or services and allows the owner to prevent the use of the mark only in situations that would interfere with the owner’s market. Accordingly, Apple Computers can’t use trademark law to prevent an apple juice company from using the word Apple to sell apple juice.
Federal courts look at a number of factors when evaluating the likelihood of confusion:
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