Trademarks in General
Trademark law is regulated by the Lanham Trademark Act (the “Act”). Generally, trademarks are logos, phrases, words, and symbols used by producers to identify their goods. However, colors, fragrances, shapes, and sounds, may also be registered as trademarks. In recent years, trademark law has expanded to include trade dress as well, which is the look or feel of a product. Almost any logo, phrase, word, symbol, or device capable of distinguishing the source of goods may be used as a trademark subject to few limitations. Yet, a mark can be denied registration if it falls within any of the listed categories under the federal statute 15 U.S.C. § 1052.
In the United States, a business can obtain certain protections for its mark under common law. Common law only provides basic protection for a mark. A mark that is (1) distinctive, (2) continuously used in the normal course of business (or “used in commerce”), and (3) was first in the marketplace and is considered a senior user of a mark can receive common law protection. However, the right to the use of a geographical, locational, or place, or famous name as a mark is not subject to exclusive appropriation, the senior user may not ordinarily complain of its use by junior competitors, in the absence of fraud or unfairness. Furthermore, sporadic, casual or transitory use will also not suffice for protection, the use in commerce must be continuous. When relying only on common law rights, a business with a senior mark can only exclude other businesses with junior marks within the same sales territory from using a confusingly similar mark on related products or services. Common law rights are basically limited to those areas where targeted marketing efforts, or meaningful sales, are made. A mark with only common law protection tends to not have protected rights even if they exist on the Internet. Therefore, common law rights tend to be limited in scope.
Federally Protected Trademarks/ USPTO guidelines
Federal trademark registrations confer valuable additional benefits beyond the common law rights described above. As aforementioned, federal trademarks and the application for federal trademarks are governed by the Lanham Trademark Act, which can be found at Title 37, Part 2 of the Code of Federal Regulations (the “CFR”). Under the Act, a registered trademark has exclusive rights, the presumption of being valid, and its zone of protection is expanded from its common law restricted territory to that of the entire country. In other words, the holder of a trademark registration who was first to use the mark in commerce is deemed to have trademark rights in the registered mark without having to justify itself for the use of the mark.
Under the Act, a person or business who, without the consent of the registrant, “(1) uses in commerce a reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (2) reproduces, counterfeits, copies, or colorably imitates a registered mark and applies such a reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, is liable in a civil action by the registrant”.
