Trademark law protects brand identifiers like names, logos, words, slogans, and other things, ensuring consumers aren’t deceived about the source of a product or service. It also protects businesses from unfair competition. Core concepts include use in commerce, distinctiveness and the likelihood of confusion, which dictate whether a mark can be registered and enforced.
Whether you’re a startup founder, an artist, or just astudent of the law, understanding trademark law is essential. Here is a breakdown of the fundamentals, followed by some of the biggest trending issues in the trademark world today.
The Fundamentals of Trademark Law
A trademark is any word, name, drawing, graphic, or device used to identify the source of goods or services and distinguish them from others. The four essential requirements for a valid trademark are:
Distinctiveness
A trademark must operate not only to identify the source of a product or service but also to distinguish it from others.
It is evaluated along a spectrum:
- Fanciful marks: These are completely made-up, invented words, graphics, etc. that have nothing whatsoever to do with the nature or quality of the products or services with which they are associated. These are inherently distinctive, meaning it is not necessary to prove that consumers have come to associate the mark with the source. XEROX and EXXON are examples.
- Arbitrary marks: These are real words, images of real things, etc., but they bear no relationship to the product or service with which they are associated. APPLE computers is an example. These, too, are inherently distinctive.
- Suggestive marks: Suggestive marks are marks that hint at the nature or a quality of the product or service, but do not directly describe it. They require some imaginative thought on the part of the consumer to “connect the dots.” JAGUAR for cars and COPPERTONE for suntan lotion are examples. A suggestive mark is inherently distinctive.
- Descriptive marks. These describe a quality, ingredient, or characteristic of the product or service. Unlike suggestive marks, they don’t merely hint at it; they come right out and directly describe the product or service, or a characteristic or ingredient of it. HOLIDAY INN and INTERNATIONAL BUSINESS MACHINES are examples. Descriptive marks cannot be claimed as trademarks unless they have acquired “secondary meaning.” The burden of proof is on the claimant to show that consumers have come to identify the brand with the claimant’s product or service, and not with other sources of it.
- Generic marks: These are names for a category of product or service. MILK, as a mark for milk would be an example. No trademark rights can be claimed in generic marks.
Likelihood of Confusion
The primary legal standard for both registering a mark and suing for infringement is “likelihood of confusion”. This means determining if an ordinary consumer would mistakenly believe that your product or service and someone else’s come from the same source, or are affiliated.
Courts apply a multi-factor test (primarily the DuPont factors) to assess likelihood of confusion. The most critical ones are:
- Similarity of the marks: Do they look, sound, or convey a similar commercial impression?
- Relatedness of the goods/services
Courts consider other factors, too.
Two marks may be confusingly similar even if they are not identical. The key is whether consumers would be likely to confuse the source of one with the source of the other.
Use in Commerce
A mark must be used in commerce as a source identifier. Otherwise, a trademark does not come into being. To register a trademark federally with the USPTO, the use must be in interstate or foreign commerce. Purely intrastate commerce will not suffice for federal registration.
Registration
In the United States, trademarks come into existence through use in commerce as a trademark. When all the elements of a valid trademark exist (distinctiveness, etc.) a “common law” trademark exists. The scope of protection a common law trademark affords, however, is limited to the geographic area of trade. To get nationwide protection and the right to use the coveted ® symbol, you must register your mark with the U.S. Patent and Trademark Office (USPTO).
My experience has been that the major stumbling blocks for people who apply to register their trademark with the USPTO are (1) lack of distinctiveness, usually due to selecting a descriptive mark without acquired meaning; (2) likelihood of confusion with another person’s or company’s trademark; and (3) improperly completing the application for registration.
Topical Issues in Trademark Law
Fraudulent filings
The USPTO has implemented rigorous enforcement frameworks to crack down on fraudulent filings. Historically, many trademark owners were in the habit of registering their marks in more than one category of goods or services, either to “keep options open” for possible company expansion into a new product line, or to prevent competitors from doing so. The USPTO is making more vigorous efforts to crack down on registrants who fraudulently claim use in connection with goods or services with which they are not actually using the mark.
Due to a massive influx of suspicious, fraudulent, or automated filing mills, the office has cracked down by requiring stricter identity verification and heavily scrutinizing specimens of use. If a brand is caught digitally altering logos or faking mock-ups of their goods in commerce, their registration is being swiftly canceled. Examiners are inspecting specimens of use more closely now, trying to ferret out digitally created mock-ups of trademarks being used in commerce. A false or fraudulent specimen of use is grounds for cancellation of registration.
AI-Generated Counterfeits
Generative-AI is being used to create knock-offs of digital products. This is creating challenges for owners of trademarks in digital products and services.
Intermediary Platform Liability
Can an online marketplace platform or intermediary website or online service provider be held contributorily liable for facilitating or otherwise contributing to counterfeit and trademark-infringing goods being sold on their platforms?
Phrases Without Trademark Functionality
People are increasingly trying to claim trademark ownership over common words and phrases, such as, “Hello. How are you?” The USPTO and courts are rebuffing a lot of these efforts. It is still possible for a phrase to become a trademark, but proof of acquired secondary meaning as a source identifier is needed. Otherwise, an applicant is likely to experience a “failure to function as a trademark” denial.
Need help with a trademark registration? Contact attorney Thomas James.
