The following article has been written by Ishani Samajpati. The article discusses the subject matter of protection of trademarks in the US, both under the Constitution as well as federal laws. It also discusses various forms of trademarks, protection and maintenance of trademark rights, trademark infringement and dilution as well as the available defenses, steps of the trademark registration process, and enforcement of trademark rights.

Introduction

The term “subject matter” in intellectual property rights consists of the unique and creative works and inventions protected under intellectual property laws. The subject matter of every intellectual property is clearly defined and it provides an idea about the purpose of that particular intellectual property. Accordingly, the subject matter of protection of trademarks is based on the aspects that are used in commercial purposes to identify the source of goods and sometimes, services, too. In other words, the subject matter of trademark protection depends on the particular aspects of any goods or services that the producer uses to differentiate the goods or services from others and the aspects a consumer uses to identify the same. A trademark can be in words, names, symbols, devices, or any combination thereof, used to identify and differentiate the source of the goods and products one from another. Similarly, service marks are also used to distinguish services provided by one party from another. Service marks are also sometimes referred to as trademarks for convenience.

Trademarks play an important role in business by acting as an element in a product to attract potential customers. With the era of globalization and liberalization of trade and commerce, the discussion of the subject matter of legal protection of trademarks is becoming more relevant, particularly for a country like the United States. Moreover, with time, the scope of the subject matter of protection of trademarks has also expanded.

Trademarks are an essential part of any business. They are used to identify and distinguish goods and services in the marketplace. As such, protecting a trademark is an important part of any business’s long-term success. In this blog post, I will discuss the subject matter of protection of trademarks in the US, including the various categories of marks, signs that may serve as trademarks, nonverbal marks, trade dress, the trademark registration process, and the enforcement of trademark rights.

Subject-matter of protection of trademarks under the US Constitution

Article 1 Section 8 Clause 8 of the US Constitution provides that Congress has the power to grant exclusive rights for a limited time to authors and inventors for their creative works. In the Trademark cases (1879), the US Supreme Court held that Congress has no authority to grant trademark protection under this clause. This clause later came to be known as the intellectual property clause.  

While dealing with the subject matter of protection of trademarks in the United States, it must be noted that in modern times, all the federal laws on trademarks and Congressional powers and limitations are shaped by two constitutional provisions, i.e., the Commerce Clause and the First Amendment . For example, the federal trademark statute of the Lanham Act and the federal trade secret protection Acts have been enacted by Congress under the power provided by the Commerce Clause. The Trademark cases (1879) are the best example of the earliest legal interpretations of originality, limitations of Congressional powers as well as the subject matter of protection of trademarks in the US. Let us examine the constitutional frameworks of trademark protection. 

First Amendment and trademark protection

The relationship between the First Amendment and trademark protection is a gray area of law. Freedom of speech is one of the values and basic human rights that the First Amendment of the US Constitution protects. The Amendment prohibits the US Congress from making any law “abridging the freedom of speech.” A trademark consists of signs, symbols, designs, expressions, etc. Since trademarks may consist of languages, the trademarked languages are supposed to fall under the provision of freedom of speech under the First Amendment.

Earlier US trademark laws used to focus on protecting the rights of the trademark owner by preventing others from selling the same product in the market. The government banned trademarks causing the likelihood of confusion with distinctive trademarks. Infringing trademarks and unfair competition were the main issues concerning a trademark. For example, in the case of Coca-Cola Co. v. Cahill (1973), Coca-Cola Company brought a suit against Cahill’s Dairy Maid for unfair competition and infringing trademarks. A soft drink similar to Coca-Cola (in both taste and color) was produced by Triple “AAA” Company and sold by the defendant under the names  “Tacola” and “Tacola-Cola.” The Plaintiff-company owned two valid trademarks under the name “Coca-Cola” and “Coke”. The Appellate Court held that a competitor cannot use similar marks to the marks owned by the plaintiff-company and it constituted infringement of trademark and unfair competition by the defendant-company.

Such restrictions are not related to the provisions of the First Amendment and hence did not raise any concern regarding it. Until the 1970s, the issue of protection of commercial speech under the First Amendment did not arise. It was in the case of Virginia State Board of Pharmacy v. Virginia Citizens Consumer Council, Inc., (1976), the US Supreme Court held that commercial speech also enjoys protection under the First Amendment. Several courts have also noted the restrictions of misleading speeches and that these are unprotected by the First Amendment. In Transgo, Inc. v. Ajac Transmission Parts Corp. (1985), the United States Court of Appeals, Ninth Circuit held that commercial speeches protected by trademarks can be regulated if the content is ‘false’ and ‘misleading’. Similarly, in San Francisco Arts & Athletics, Inc. v. United States Olympic Committee (1987), the US Supreme Court rejected the claim of San Francisco Arts & Athletics, Inc. (SFAA) to use the word ‘Olympic’ under the rights of the First Amendment. It further held that the government has the right to regulate ‘deceptive and misleading’ commercial speech without any constraints under the First Amendment. 

Central Hudson test

The US Supreme Court established a four-part test in Central Hudson Gas and Electric Corp. v. Public Service Commission (1980). It determines the extent up to which the government can regulate commercial speech without violating the Constitution.  The parts are as follows:

• The commercial speech must contain only lawful activity. Any deceptive or misleading commercial speech cannot claim protection under the First Amendment.

If the first part is established, a court will further look into the following steps. Even if the trademarked product has a monopoly, it is protected under the First Amendment and its advertising rights cannot be suppressed.

• The government should have a “clear and substantial interest” in regulating commercial speech.
• There should be a direct relation between the regulation of commercial speech and the interest of the State.
• The regulation should not be more than the required interest.

It must be noted that even if there are concerns regarding the protection of trademarks and the First Amendment, courts mostly apply trademark doctrines to provide relief to defendants and many defendants also do not claim relief under the First Amendment. Sometimes there may be certain restrictions on the use of language and speech, some conflict may arise between both. For example, in Matal v. Tam (2017), the US Supreme Court struck down the disparagement clause 15 USC § 1052(a) of the Lanham Act. Similarly, in Iancu v. Brunetti (2019), the US Supreme Court held that the prohibition on registering “immoral or scandalous” trademarks violates the First Amendment.

Commerce clause, Trademark cases, and trademark protection

Article 1 Section 8 Clause 3 of the US Constitution contains the commerce clause, which provides Congress the power to regulate commerce across several states, foreign nations and Indian tribes. Again, Section 45 of the Lanham Act defines the term ‘commerce’ as “all commerce which may lawfully be regulated by Congress.” The US Constitution lays down the extent to which the Congress can regulate commerce. 

Trademarks play a huge role in commerce by distinguishing a brand from other brands available in the market. To obtain the highest legal protections from infringement and other related issues, a trademark must be registered under 15 U.S. Code § 1051 of the Lanham Act. One of the basic requirements of trademark registration is a verified statement from the applicant that “the mark is in use in commerce.” In the Trademark cases discussed below, the US Supreme Court held that Congress did not have any power to regulate trademarks under the intellectual property clause. Gradually the courts started to decide that Congress has the power to enact federal trademark legislation under the Commerce Clause. The relationship between the Commerce clause of the Constitution and federal trademark protection was elaborated in the case of Dawn Donut Co. v. Hart’s Food Stores, Inc. (1959). It was ruled that Congress has the power to regulate trademarks under the Commerce Clause. At the same time, Congress cannot use its power to violate constitutional rights, as held in cases like Matal v. Tam (2017) and Iancu v. Brunetti (2019).

The word “commerce” was first interpreted by the US Supreme Court in the case of Gibbons v. Ogden (1824). It was held that Congress has the right to regulate commerce and that federal laws regarding commerce precede state commerce laws. In this regard, a question arises on the types of commercial activities and trademarks the Congress can regulate. In Larry Harmon Pictures Corporation v. the Williams Restaurant Corporation, (1991), the US Court of Appeals for the Federal Circuit rejected an opposition against the application of registration of trademark by the Appellant for use-in-commerce requirement under Section 3 of the Lanham Act (15 U.S. Code § 1053). The Respondent restaurant served in a single location and its service was limited to interstate customers. However, the Court held that Congress has powers to regulate interstate commerce under Article 1 Section 8. It also cited the case In re Silenus Wines, Inc. (1977), where it was held that the Lanham Act sought to broaden the jurisdiction and that Congress was “mindful of the broad scope of Congressional regulatory powers which the Supreme Court has sanctioned.” 

The Trademark Cases (1879)

As the earliest US trademark laws, Congress enacted two Acts on trademarks in 1870  and 1876 respectively. The 1870 Act contained civil remedies for trademark infringement but it was not sufficient to control the offenders. Hence, under the 1876 Act, trademark infringement could be prosecuted for criminal offenses. The Trademark cases (1879) were brought under the 1876 Act for trademark counterfeiting and imitation and dealt with the question of the constitutional validity of the Revised Statute of 1876. 

The Trademark cases are referred to three different cases with different facts consolidated in a single appeal before the US Supreme Court. The three cases were United States v. Steffens, United States v. Wittemann, and United States v. Johnson. The first two cases were on allegations of counterfeiting brands of champagne, while the allegation against Johnson was counterfeiting and imitation of packages of whiskey.

The three cases were subject to prosecution for violating the 1876 trademark legislation of Congress. Justice Miller, on behalf of the US Supreme Court, opined that the exclusive right of trademark has been long recognized in the common law as well as the Chancery Courts of England. It is not a right created by the enactment of any Act by the Congress. However, the subject matter of the protection of trademarks and their implementations depend on the power of Congress. The source of the extent of lawful exercise of power is granted by the Constitution.

The Court held that the power of regulation of trademarks under the Commerce Clause is limited to the commercial activities between foreign nations, states, and Indian tribes. The Court further held the statutes as invalid and unconstitutional.

What is trademark protection

Trademark protection is the legal process of protecting a business’s mark in the United States. A trademark is any word, phrase, symbol, design, or combination that is used to identify and distinguish a business’s goods and services from those of another. 

A trademark can be a phrase, logo, design, symbol, or other recognizable element that is associated with a product or service. Trademarks are valuable assets in the marketplace, as they help a business to establish a brand identity, market its products and services, and protect its goodwill.

Trademark extends protection to all distinguishable elements of a product or service. For example, the pink shade of Owens-Corning, the distinct shade in between turquoise and aqua blue trademarked by Tiffany, named Tiffany Blue or the particular shape of a Coca-Cola bottle serve as distinguishing features for a particular product or service. These are termed “trade dresses,” where the consumers associate the feature with that particular manufacturer. A particular shade can also be trademarked by a brand, known as color trademarks or color marks, as held in Qualitex Co. v. Jacobson Prods. Co. (1995).

Trademark protection is available in the US through both federal and state laws. The federal trademark law is known as the Lanham Act, and it provides protection for trademarks that are used in interstate commerce. State laws, on the other hand, provide protection for trademarks that are used exclusively within the state. Generally speaking, federal law provides the broadest protection for trademarks, and it is highly recommended that businesses register their marks with the US Patent and Trademark Office (USPTO) in order to obtain the best protection possible.

Common law trademark rights in the US are automatically acquired by brands and businesses when they use any trademark for commercial purposes. The term implies that the trademark rights have been acquired by use in commerce and are not governed by federal trademark statute. The common law trademark is specifically established within a limited geographical area. Even though these trademarks are not federally registered, the trademark rights are enforceable in state courts. The rights arise from the actual use of the trademark for commercial purposes. However, since no registration is required for common law trademarks, it is difficult to find out during trademark searches whether any particular trademark is in use. 

The United States Patent and Trademark Office grants registration of trademarks. Registered trademarks have a higher degree of protection in the eyes of the law and are easy to litigate for any trademark related dispute in federal courts. Section 43 (15 U.S.C. § 1125) of the Lanham Act of 1946 offers protection to both registered and unregistered trademarks.

Prerequisites for trademark protection

The basic requirements for any trademark to be eligible for protection in the US are that the trademark must be used in commerce and must be distinctive. The prerequisites for a trademark protection eligibility are as follows:

1. Conflicting trademarks: A trademark (for which application is to be filed) should not conflict with the existing registered trademarks or pending applications. It should be completely distinct from other federal trademarks. Since trademarks are used by consumers to identify the source of the goods or services, similarities between different trademarks likely give rise to confusion. Hence, applications for conflicting trademarks are the most rejected ones by the United States Patent and Trademark Office (USPTO). 

After filing an application for a trademark, the USPTO searches through its database for conflicting marks as part of the official examination. It evaluates whether there is any conflict between the already registered trademarks or pending applications already filed. USPTO primarily considers if there is any chance that the consumer would mistake both the trademarks related to a particular good or service to have come from the same source, i.e., whether there is a likelihood of confusion between the trademarks. 

The conflicting trademarks need not be necessarily the same. The USPTO also searches for trademarks that are likely similar. The USPTO decides the acceptance or rejection of an application on the bases of the similarity of trademarks and the similarity of the goods and services provided by the trademarks. 

2. Distinctiveness of trademarks: In order to be eligible for trademark protection, the most important requirement is distinctiveness. It means the trademark must be able to act as the identifier of the source of a particular goods or services. In the case of Abercrombie & Fitch Company v. Hunting World (1976), the Court specified the spectrum of distinctiveness for trademarks on the basis of the relationship between the trademark and the product or goods it marks. The spectrum of distinctiveness goes on from absolutely protectable to not protectable marks. These are: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.

In an arbitrary or fanciful mark, a random word or symbol is created or invented which absolutely has no logical connection with the goods or services. For example, words like “Apple” or “Kodak” have absolutely no relationship with the product, computer, and cameras respectively. Similarly, the swoosh on the Nike logo has no direct relation with the product of the company, shoes. Therefore, the trademarks are fanciful or arbitrary and have the highest degree of trademark protection.

A suggestive trademark refers to the trademark where on application of a certain degree of imagination, the consumer can identify the nature of the product or goods. The word is not totally unrelated to the product. For example, the trademark “Jaguar” for a fast car immediately suggests to the consumer an extremely fast-moving car.

A descriptive mark describes a particular characteristic or quality of any goods or services, rather than suggesting it. For example, “Holiday Inn” describes a particular aspect of the underlying service of hotels.

A descriptive mark also acquires a secondary meaning due to its use in commerce. It refers to the fact that consumers primarily associate the trademark with particular goods or services, rather than its generalized meaning. For example, the consumers associate the term “Holiday Inn” with the particular hotel service providers, rather than the primary meaning of the term. The procedures for determining if any term has acquired secondary meaning were decided in the case Zatarain’s, Inc. v. Oak Grove Smokehouse Inc. (1983), discussed in the latter part of this article in detail.

Finally, a generic mark refers to the genus of a particular product. In any trade, these words are customary. For example, the term “Chocolate” is a generic term for chocolate based products. Therefore, they have no protectability under the trademarks since the terms are useful for identifying a particular general product in any industry. Providing exclusive rights to a particular manufacturer would create severe competitive disruption to others. On the contrary, an absolute arbitrary or fanciful mark may acquire the characteristics of generic marks over time (as using the word “Xerox” instead of “photocopy”), known as genericity. 

3. Use in commerce: The term “use in commerce” refers to the bona fide use of any trademark for commercial purposes. A trademark is rendered to be used in commerce if the trademark is used to sell or advertise the goods or services and also the packaging, labels, and tags for goods sold or transported in commerce.

It is imperative that the rights of the trademark are based on the commercial use of the goods or products. Hence, to get trademark protection, the applicant is required to fulfill the criterion of “use in commerce.” According to the USPTO, “use in commerce”  refers to the “ordinary course of trade”

To get the trademark federally registered, the related goods or services must be in commerce recognized under federal laws. The types of commerce include interstate, territorial, or foreign commerce. A trademark used in intrastate commerce (within the territory of a single US state) is not generally federally registered, as it gets state common law protections.

However, the USPTO also offers the provision of “intent to use” for those trademarks that are not in commercial use yet, but the owner intends to use it in commerce within three to four years. In such a case, an intent-to-use (ITU) basis trademark application should be filed by showing the actual use of the trademark in commerce through documents and by filing additional fees.

4. Identifier of source: Any trademark must act as a means to identify the product or service. Every word, phrase or symbol adopted as a trademark cannot be registered. The source of a trademark defines not only the physical source of the goods but also the sponsors or affiliates with the goods, For example, by seeing the swoosh logo of Nike, a consumer immediately identifies the source of the goods.

The USPTO refuses registration of the trademarks when they are decorative or ornamental in nature. For example, a trademark in the form of a floral design in silverware is refused because the consumers may perceive it to be a mere decoration, rather than recognizing it as a trademark. Similarly, everyday expressions (such as “Have a good day”) and commonly used symbols (smiley emojis).

Merely descriptive and deceptively misdescriptive trademarks are also likely to be refused registration. For example, the trademark CREAMY is merely descriptive for yogurt products. Again, if a mark misdescribes or misrepresents the particular aspect of any goods or services. For example, the mark Jasmine Tea for teas not containing jasmine would be misdescriptive. A trademark geographically descriptive or geographically deceptive is also to be refused registration. In all of these cases, they do not identify the source of the goods or products.

Additionally, words, phrases, and symbols (such as SECRET SERVICE, COAST GUARD etc) adopted by the United States federal government and its agencies are protected by federal statutes and cannot be used as trademarks by others. 

Scope of protection for trademarks

The scope for protection of trademarks in the US is as follows:

• A trademark is always related to any particular goods, products, or services provided, or sold to customers under that trademark. 
• Any word, phrase, symbol, or design is only eligible to be registered and protected as a trademark if it specifically helps in identifying the source of the goods, products, or services provided under the said trademark.
• A particular trademark can be used for both goods and services.
• The scope of the protection granted by the trademark depends on the goods or services the trademark mentioned to represent during registration. Hence, it is important to identify the subject matter of the trademark. 
• Once registered, the scope of protection of trademarks in the US is quite broad as it also applies to both identical as well as similar trademarks.
• Well known trademarks such as Walmart, Kodak, Google, etc. enjoy a broad spectrum of protection against infringement or registration of similar marks.

Acquiring of trademark rights

The rights to trademarks can be acquired in two ways:

• Being the first to use the mark in commerce;
• First to register the mark with the USPTO.

Being the first to use the mark in commerce means to sell the goods or services to the public as the first person with the trademark. However, the scope of protection of this is limited to the geographical area where the goods or products are offered. 

By being the first person to register the trademark with the USPTO with the bona fide intention to use the mark in commerce, provides a greater protection of trademark rights. On registering with the USPTO, it grants nationwide protection for the mark.

Loss of trademark protection rights

In the US, trademark rights last as long as the mark is commercially used. However, the owner has to maintain the registration. The trademark registration is valid for a period of 10 years. 

Trademark rights and its protection can be lost in the following ways:

• Abandonment: A trademark is considered to be abandoned if it is not in use in commerce and the owner of the trademark fails to apply for its renewal within a specific time. Abandonment occurs when the owner does not continue to use the trademark in commerce and has no intention to resume its use in commerce in the future. Trademark rights can be lost through abandonment of a trademark. Non-use for consecutive three years acts as prima facie evidence of this. In the case of Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd. (1993), the plaintiffs filed suit for trademark infringement, appropriation of trademark, violation of common law trademark rights, unfair competition, and counterfeiting of the trademark against the defendant for using the words “The Brooklyn Dodger”. The defendants pleaded the defense of abandonment of the trademark by the plaintiffs since they have not used it for almost 25 years. It was held that the trademark was abandoned.
• Improper licensing: This is another reason for the loss of the trademark rights. The issue of improper licensing may arise if there are any trademark related lawsuits on the trademark. There is also a chance of conflict with the antitrust laws as happened in  Philip Morris, Inc. v. Imperial Tobacco Co. of Great Britain and Ireland, Ltd. (1965).  
• Wrong assignment: During the assignment of the trademark, it is advised to follow proper legal steps; otherwise, trademark rights may be lost. Filing assignment against a third party’s trademark is void. However, this can be corrected by taking corrective assignments in the USPTO. 
• Genericity: It is an unfortunate event when an arbitrary trademark, due to its popularity, becomes the same as generic trademarks. Since generic trademarks are not considered worthy of registration, the same happens with the trademark in question. The event is known as genericide. Some of these trademarks include Xerox, Cola, Clorox, etc.

Maintenance of trademark protection rights

The trademark owner has to submit a declaration under Section 8 (15 U.S. Code § 1058) for the use or excusable non-use of the trademark citing reasons to the USPTO. It should contain:

• That the trademark is in use-in-commerce and should have a list of goods and services as was listed during registration; or,
• The trademark is not use-in-commerce for a particular reason.

The owner can also file a declaration under Section 71 for a registered extension of protection under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). However, in this case, using the mark in commerce only in a foreign country does not constitute use-in-commerce.

In order to maintain the trademark rights, the owner must file a combined declaration under Sections 8 and 9 (15 U.S. Code § 1059). A declaration under Section 9 contains an application for renewal of trademarks and a written request to renew the trademark. The combined declaration should contain the following details:

• Registration number of the trademark;
• Name and address of the trademark owner;
• Filing fees which vary depending on the class of goods and services.

If the trademark is in use, the declaration should contain a statement that the trademark is in use along with the list of goods and services for which the trademark is used. A specimen containing the use of trademarks should be submitted. The accepted specimens by the USPTO are tags/ labels attached to the product or advertisement for the service.

If the product is not in use, the owner has to submit the list of goods or services for which the trademark is not in use in commerce. Besides that, the last date when the trademark was in use, the expected date on which the trademark should again be used in commerce with specific steps and details for non-use should be submitted.

Separately, a written request for renewing the registration of the trademark with sign/s and date should be submitted. 

Trademark infringement

If one party is the owner of a particular trademark and another starts using the same or similar trademark for their goods or services, the first party can file a suit for trademark infringement. 15 U.S. Code § 1114 deals with infringement of trademark. The standard for establishing a suit for trademark infringement is “likelihood of confusion.” In other words, it constitutes trademark infringement if it causes confusion among consumers regarding the source and ownership of a product or service.

While determining whether a trademark has been infringed, the court has to examine a number of factors, as held in Polaroid Corporation v. Polarad Electronics Corporation (1961). These include:

• Strength of the infringed trademark (how easily the consumers can associate the mark with products or services);
• Similarity between both products – the infringed and the infringer;
• Similarity between the trademarks;
• Evidence of actual confusion, if any; 
• Marketing strategies followed by the infringer (whether to use the popularity of the infringed mark)
• Degree of caution exercised by consumers during purchasing; and,
• Intention of the defendant.

Using identical marks for the same product will clearly constitute trademark infringement. On the other hand, a similar mark for a different class of products may not give rise to trademark infringement claims. In between these two situations, many other cases may arise. In such a situation, the courts apply those above mentioned factors to determine infringement. For example, in AMF, Inc. v. Sleekcraft Boats (1979), the plaintiff continued to use the trademark “Slickcraft Boat Company” for recreational boats. A trademark infringement suit was brought against the defendant company selling high-performance boats named “Sleekcraft Boats”. The United States Court of Appeals, Ninth Circuit Court held that the two companies sold different types of boats, and the products were not identical but they were related. However, after examining the above factors, the Court held that the trademark ‘Sleekcraft’ may cause confusion with ‘Slickcraft’ and the defendant has infringed the ‘Slickcraft’ mark.

Trademark dilution

An action for trademark dilution can be brought under both the federal and state laws. 15 U.S. Code § 1125 deals with trademark dilution. Under federal law, a trademark dilution action can be brought only if the mark is famous. A trademark is recognized as famous if it is widely-recognized by the public in the US as the source of the product or service. The trademark may be inherently distinctive or may have acquired distinctiveness or secondary meaning.

The Court examines the following factors to determine if the mark is famous:

1. Whether the trademark is inherently distinctive or acquired distinctiveness; 
2. The time the mark is in use in commerce and the extent;
3. Degree of publicity and amount of advertisement;
4. Geographical extent of the product’s market;
5. Methods of trade;
6. Degree of recognition in the geographical areas where the product is sold; 
7. Use of similar marks by third parties; 
8. Whether it is a registered trademark or not. A registered trademark gets a better degree of protection.

Under state laws, the trademark need not be ‘famous’ in order to bring an action for dilution. An action can be brought if the mark is distinctive and two marks are substantially similar, as held in Mead Data Central, Inc. v. Toyota Motor Sales, USA, Inc. (1989). 

Once the trademark dilution is established, the owner of the trademark can bring action against a mark that dilutes its distinctive quality. Dilution of the distinctiveness of a mark may happen through ‘blurring’ or ‘tarnishment.’ The likelihood of confusion is not a prerequisite in trademark dilution. The blurring of a trademark occurs when the distinctiveness of a trademark is weakened for its association with dissimilar goods; for example, bicycle brands named ‘Apple’ will cause blurring to the famous computer brand ‘Apple.’ There is no scope for consumer confusion, but it dilutes the distinctiveness. Tarnishment occurs when a famous mark is associated with a product of inferior quality. In the case of Toys “R” Us v. Akkaoui (1996),  the plaintiff, a children’s toy company brought an action for trademark dilution against the defendant, adultsrus.com, a pornographic website, for tarnishment of the “R” Us trademark. 

Defenses to trademark infringement or dilution

These defenses available in cases of trademark infringement or dilution are affirmative defenses. It means if the defendant can provide evidence before the court, the action for trademark infringement or dilution will be negated and the defendant will be free of the charge. Following are the available defenses in an action for trademark infringement or dilution.

Fair use 

It is a classic defense that allows an individual to use another owner’s trademark in its primary descriptive meaning. Fair use occurs when a descriptive mark is used by another for its primary meaning in good faith. However, using the mark for secondary meaning does not offer the defense of fair use. For example, Kellogg, the cereal company, owns the trademark of “All-Bran”; if another cereal manufacturer uses the mark “all bran” to describe the ingredients of the cereal, the use is purely descriptive and does not have any secondary meaning.

In the case of Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. (1983), the plaintiff filed suit for infringing their marks, ‘Fish-Fri’ and ‘Chick-Fri’ against the defendant when they started using ‘fish fry’ and ‘chicken fry’ for coating mixes. The United States Court of Appeals, Fifth Circuit held that this is not an infringement upon the plaintiff’s mark since it was used for purely descriptive purposes.

Nominative use

Nominative use is closely related to the defense of fair use. It occurs when the use of a trademark is necessary to identify the goods or products of an owner. The defense originated in the case of New Kids on the Block v. News America Publishing,Inc, (1992) by the United States Court of Appeals, Ninth Circuit. In this case, the newspaper USA Today asked its readers to vote for their favorite member of the music group New Kids on the Block through a telephone poll. The plaintiffs, New Kids on the Block, sued USA Today for infringement. It was held that the use of the trademark was a privileged nominative use.

The use of another’s trademark can only be called nominative use when:

• The owner’s products or services are not readily identifiable without using the mark;
• The mark is only used to the extent as reasonably necessary to identify it; and,
• There is no suggestion of endorsement or sponsorship by the owner’s products or services. 

In simple words, sometimes it becomes necessary to use another’s trademark to identify and refer to another party’s products and services. When the above conditions are met, the defense of nominative use can be used.

Parody

Certain parodies of trademarks are permitted provided that they are not too directly related for commercial use; rather, it is an artistic creation and serves to entertain people. The artistic and editorial parodies of trademarks fall under the freedom of expression and are entitled to First Amendment protection. 

The parody, as a defense to trademark infringement or dilution, is recognized but there is no specific framework regarding the same. Various courts have different approaches while dealing with parodies. Generally, courts sympathize with less commercial parodies or parodies done for solely creative purposes. While parodies done for commercial purposes may be held for dilution or infringement. For example, in L.L. Bean, Inc. v. Drake Publishers, Inc. (1987), the United States Court of Appeals, First Circuit held an indecent parody story of L.L. Beans did not constitute infringement. On the other hand, in Gucci Shops, Inc. v. R.H. Macy & Co. (1977), diapers sold with the trademark “Gucchie Goo” were held not to be protected under the parody defense.

Remedies for trademark infringement or dilution

There is a wide range of remedies available for plaintiffs. Plaintiffs who bring an action for infringement or dilution are routinely awarded injunctions against further infringement or dilution of the trademark. 

In trademark infringement suits, the plaintiffs can also claim monetary relief. These include:

• claims for the defendant’s profits;
• amount of damages sustained by the plaintiff; and, 
• the costs of the action. 

The plaintiffs can also claim damages showing the use of the mark by the defendant in bad faith. 

Reliefs in trademark dilution suits are limited.  Plaintiffs are mostly entitled to injunctive reliefs. The damages are available only if the defendant intentionally trades on the plaintiff’s goodwill while using the mark commercially. Otherwise, plaintiffs in a dilution action are limited to injunctive relief.

Trademark protections under the Lanham Act, 1946

Protection of trademarks in the US is governed both by federal and state laws. The main source of protection of trademarks was common laws initially. With the rise of trademark suits in the US, Congress enacted the first federal trademark statute in 1870, which was revised further in 1876 to add criminal actions against trademark infringement. However, as discussed earlier, the US Supreme Court held the entire statute unconstitutional. An international trademark law was enacted in 1881. Decades later, Congress passed the Trademark Law of 1905.

Currently, the primary federal trademark statute in the US is the Lanham Act of 1946, passed by President Harry Truman. The Act was subsequently amended multiple times, notably in 1996 15 U.S.C. §§ 1051, et seq. Though state common laws are still there, the Lanham Act of 1946 provides the most extensive source of trademark protection in the US.

The primary types of trademark protection granted by the Lanham Act of 1946 are as follows:

Registered Marks

The Lanham Act offers the strongest protection for registered marks. Section 32 of the Act under 15 U.S. Code § 1114 provides the rights granted for registered trademarks. However, only the owner of the trademark is allowed to sue for enforcement of the trademark.

The USPTO provides a federal system for registering trademarks under the Lanham Act. It also determines which trademarks should be given priority over others. There are also several causes of action for trademark infringement and dilution and remedies for these are also available. The main thing is that the owner has to register the trademark.

Federal registration of a trademark is not a prerequisite for acquiring trademark protection rights. If a trademark is not registered, the trademark owner may also gain common law trademark rights. For this, the trademark owner has to be the first one to use the mark in commerce. However, these common law trademark rights are limited to the geographical area where the mark is in use in commerce. 

Unregistered Marks

The Lanham Act also offers protection for unregistered marks. But the protection is comparatively weaker. The protections for unregistered marks are given under § 43 (15 U.S.C. § 1125), which deals with false designations of origin; false description, or representation. This also provides protection to unregistered trade dress. 

However, the protection offered is quite different from offered in an unregistered trademark. In the case of a registered trademark, only the trademark owner can sue. But according to § 1125(a), a civil action for confusingly similar marks, misleading marks or false description or representation can be brought by any person who thinks “he or she is or is likely to be damaged by such act.”

A person under this provision includes:

• Any State;
• Employee of a State;
• Instrumentality of any State using the designated official capacity;
• Any nongovernmental entity.

If the action is brought for infringement of unregistered trade dress or a trade dress not registered in the Principal Register, the person asserting trade dress protection has the burden of proof. 

The damage in this regard must be related to the commercial interests of the competitor. 

Well known marks

The Paris Convention for the Protection of Industrial Property, in its Article 6bis, states about the protection of well-known marks in the member countries, whether they are registered or not.  The United States is also a member of the said Convention. 

Similarly, Article 16.2 and 16.3 of the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) also extended Article 6bis of the Paris Convention and included services also. It states that while determining well-known marks, the members must take note “ of the knowledge of the trademark in the relevant sector of the public.” It also includes knowledge obtained by promotion of the said trademark. Article 16.3 further states that Article 6bis of the Paris Convention will also be applicable to goods or services unrelated to those for which a trademark is registered if there are chances that the “interests of the owner of the registered trademark are likely to be damaged by such use.”

Since the US is a signatory to both, it implements such standards for the protection of both registered and unregistered well-known marks under the Lanham Act. A person can bring a civil action under 15 USC § 1125 (a), i.e., Section 43(a) of the Lanham Act for infringement of a well-known mark. 

The courts use some factors to check for the likelihood of confusion in a case of infringement; however, the list is not exhaustive. The factors are:

• Similarity between the marks;
• Similarity or proximity of the goods or services relating to the trademark;
• Strength of the trademark. It also includes how famous the mark is or how much it is recognized commercially; 
• Marketing channels are used to promote goods or services. This factor also tests whether the targeted consumers are the same for both the goods and services. 
• The degree of care the purchasers are likely to exercise while purchasing or selecting the goods and/or services, 
• Intention of the defendant while selecting its mark (whether it is to use the publicity of the well-known mark to sell his goods or services)
• Evidence of actual confusion, if any; 
• Whether there is any possibility of expansion of product lines in the future, etc.

The USPTO also uses the factors to analyze while granting protection to a well-known mark. While determining whether a mark is well known, the factors of likelihood of confusion or deceptiveness are the only ways to determine.

A mark confusingly similar to a registered or unregistered well-known mark, both foreign or domestic, is not granted registration by the USPTO. A third party can also oppose or cancel the registration of the said mark. In that case, the provisions of 15 U.S. Code § 1052, Section 2(a) to 2(d)  of the Lanham Act are followed. 

Apart from infringement, if the well-known mark is famous enough, the party may bring an action for the likelihood of dilution in any federal court. However, it is only applicable when the mark is “famous”, i.e., widely known among US consumers.

Dilution

15 USC § 1125(c), Section  43(c) of the Lanham Act deals with dilution of trademark. Relief under this Section can only be claimed when the mark is distinctive, sufficiently well-known, and famous.  However, even if the mark is not famous enough, the courts may still analyze whether protection should be granted. A comparison of the cases would be an interesting example. The case of  Mead Data Central, Inc. v. Toyota Motor Sales U.S.A., Inc. (1989) was on the dilution of the LEXIS trademark used by the defendant-appellants for computerized legal research and LEXUS mark by the plaintiff-appellee for its automobiles. The United States Court of Appeals, Second Circuit held that since the mark owned by the defendant-appellants circulates in a limited area, it is unlikely that the mark should be associated with a dissimilar product circulating in other areas. In Dreyfus Fund v. Royal Bank of Canada (1981), the US District Court held that marks used in limited areas should not be deprived from protection of dilution. Again, in Wedgwood Homes, Inc. v. Lund (1983), the Supreme Court of Oregon directly stated, “We see no reason why marks of national renown should enjoy protection while local marks should not.” The Court further held that a small and local firm puts the same effort as a large firm to establish the distinctive quality of the mark.

There is an inherent difficulty in determining differences between fame and distinctiveness. Well-known and inherently distinctive marks may not be diluted even after extensive use of that mark by third parties. For example, in the case of Amstar Corporation v. Domino’s Pizza, Inc., (1980), the plaintiff was the owner of DOMINO mark for sugar while the defendant sold pizzas under the same mark. The United States Court of Appeals, Fifth Circuit held that there is no likelihood of confusion and there is no trademark infringement of dilution.

Cybersquatting

Cybersquatting is the practice of registering an internet domain name using any well-known or famous trademark or a domain name that is similar to that trademark. It can be defined as a type of digital infringement of trademarks. It occurs when a person who is not the owner of the well-known or famous trademark, registers the same as an internet domain name. It diverts and misleads potential consumers of goods or services of that trademark. The person then profits either from diverting consumers or using the domain name as ransom.

The following elements are required to establish a claim on cybersquatting in federal courts:

•  The well-known or famous mark must be owned by the plaintiff. It means that only the owner of the well-known or famous mark can bring an action for cybersquatting.
• The internet domain name registered by the defendant is either completely similar, confusingly similar, or identical to the mark owned by the plaintiff.
• The registration of the domain name was done in bad faith by the defendant. The defendant’s sole intention is to earn profit from the domain; either by diverting potential consumers or by ransoming the domain name.

15 U.S. Code § 1125(d) of the Lanham Act deals with cybersquatting. It is an in rem action and the remedy is limited to a court order directing “the forfeiture or cancellation of the domain name.” Sometimes the courts may order to transfer the domain name to the owner of the trademark. 

To claim a remedy under this provision, the owner of the trademark should give written notification of the filed and stamped copy of the complaint in any US District Courts. Thereafter, the competent authorities, including the domain name registrar, domain name registry, or other domain name authority shall:

• Make an expeditious deposit of court documents which establish the authority and control of the court. Thereafter, the court will examine the registration and use of the domain name.
• Unless the court orders anything, the competent authorities have no right to “ transfer, suspend, or otherwise modify” the said domain name. 

One of the most famous examples of cybersquatting in the US was the domain name whitehouse.com which contained satirized posts about the US government; some of which were adult content. People, particularly minors, wishing to visit the official website of the Whitehouse, whitehouse.gov, often mistakenly used to visit the site. Here, the profit was earned by diverting people. There are plenty of instances like this. This type of incident led the US government to enact the Anticybersquatting Consumer Protection Act (ACPA) of 1999, which has been briefly discussed later.

Use-based and Intent-To-Use Applications

A trademark should be used in commerce. It is applicable to both common law marks and federally registered trademarks. Applications for getting trademarks federally registered are filed based on two categories: use-based applications and intent-to-use applications. For filing use based applications, the date when the mark was first used in commerce, should be mentioned. A specimen containing the use of the said trademark should also be filed along with the application. 

Earlier, before getting the trademark federally registered, there was a requirement to show that the mark was in use in commerce. To fulfill this criteria, the applicants used to show “token” or “pretextual” uses of trademark for claiming and securing trademark rights. Sometimes these were challenged in courts and the decisions were not always uniform. The court used to decide the matters based on factual issues.

This situation improved when Congress amended  § 1051 of the Lanham Act through the  Trademark Law Revision Act of 1988. It allowed the applicants to file “intent to use” applications. Applicants who have not used their trademarks in commerce yet can file this application. However, he/ she has to show that he/ she intends to use the mark for commercial purposes. Foreign applicants can also file for registration based on their active registration of trademarks in another country.

A use-based application allows a successful federal registration of trademarks; while, by filing an  “intent to use” application, the applicants get a Notice of Allowance. Within six months of getting the notice, the applicant should file a Statement of Use to state whether the mark has been used in commerce yet or not. If not, the applicant can also seek another six months of extension by showing “good cause” for not using the mark in commerce. The maximum extension period one can get is a period of three years from the date of the Notice of Allowance. 

The 1988 amendment of § 1051 has also helped domestic US applicants. Before that, foreign applicants from countries with less stringent requirements could file an application for registering trademarks by showing an earlier filing date in their domestic countries. So foreign applicants used to get more priority than domestic ones based on priority. 

Priority basis of trademark registration

Priority is an important criterion to get a trademark federally registered. The USPTO determines priority for a trademark as discussed below:

• A trademark confusingly similar to another registered trademark cannot be registered. Here, the already registered trademark gets priority.
• If a trademark is confusingly similar to an unregistered trademark, it can get federal registration. However, as discussed earlier, it will not have exclusive rights in the geographical area where the unregistered trademark is in use. In that area, the unregistered trademark will get priority.
• If the trademarks are not registered and if two applications are filed for marks that are confusingly similar, the USPTO gives priority based on the filing date. The application filed earlier, either electronic or in-hand application, gets priority. The first application is decided and is either registered or abandoned. Then, the second application is examined.

The second applicant has the right to bring an opposition during the registration process if the second mark is in use in commerce for a longer time. 

International protection of trademarks

Trademark laws are usually territorial, particularly in terms of registration and trademark rights. But there are certain international treaties and agreements that allow international protection of trademarks to which the United States is a signatory. They are as follows:

Paris Convention for the Protection of Industrial Property

The Paris Convention for the Protection of Industrial Property, also known as the Paris Convention (1883), was the first major international treaty on intellectual property rights. The purpose of this was to harmonize intellectual property rights internationally. The convention can be categorized mainly into three parts. These are: national treatment, right of priority, and common rules.

• The “national treatment” principles provide uniform protection available to both domestic and foreign applicants.
• Rights of priority for international trademarks are granted by this Convention. Under this, an applicant after filing an application for trademark registration in a foreign country, can apply for protection in the US (or any other signatory country as well) within six months from filing the first application. Such applications will be judged based on their first filing date.
• Finally and most importantly, the Convention lays down some common rules for their signatories.
  • The domestic law of each signatory nation determines the filing and registration of trademarks. They are independent of each other. 
  • If a mark is duly registered in another country, it may be accepted to get registered in its original form in another country. However, if it infringes any mark, is not distinctive, or is immoral, registration can be refused.
  • If the use of registration of a trademark is compulsory in any nation, the registration can be canceled only after a certain period for non-use and only after asking the owner for a reasonable explanation for non-use.
  • Refusing registration of confusingly similar, counterfeit, or identical marks to well known marks.
  • Prohibition of registration of trademarks containing national emblems, flags etc of a signatory country.
  • Collective marks, trade names, and industrial designs must be protected.
  •  Each signatory state should ensure the indication of the source.
  • Proper protection against unfair competition must be ensured by each state. 

Lastly, provisions of this Convention influenced the US to amend  § 1051 of the Lanham Act through the  Trademark Law Revision Act of 1988 and allowed the applicants to file “intent to use” based applications.

Trade Related Aspects of Intellectual Property Agreement (1994)

The Trade Related Aspects of Intellectual Property Agreement (1994) or “TRIPS Agreement” is another international agreement to which the US is also a member. It is governed by the World Trade Organization. It ensures the commercial sides of trademarks. It covers the registrability of trademarks, protection of service marks, and strong protections against trademark infringement. The main three features of TRIPS are: 

• Minimum standards of protection which must be granted by a member nation;
• General principles and domestic procedures and remedies regarding trademarks (applicable to other intellectual properties as well)
• Settlement of dispute according to the WTO dispute settlement.

Under TRIPS, a trademark can be canceled for non-use if it is not in use in commerce for an uninterrupted period of three years. 

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

This is also known as the Madrid Protocol (1989) and is related to the registration of different types of marks. It is governed by the Madrid Agreement which was concluded in 1891. The Madrid Protocol, concluded in 1989, supplements the Madrid Agreement. It offers an international system of registration which has the same effect in all the contracting nations.

The Madrid Protocol provides international applicants with a mechanism for a single international application. First, the applicant has to obtain a registered trademark in a particular country. After obtaining registration, a single international application under this system can be filed, which has equal effects in all the signatory countries.

Due to this, trademark owners do not have to file applications in every country where they want to protect their trademarks. It must be noted that the Madrid Protocol only governs single international filing. The degree of protection depends on each of the contracting nations. They are also entitled to decide whether to grant protection or not. This is because trademark laws are territorial.

The US was not a party to the Madrid Agreement until 2003. This is to avoid conflict with the domestic and foreign applicants. The US domestic trademark laws always had a higher standard than most of the contracting parties to the Agreement. The US trademark registration process has also been more stringent than many other nations. Hence, the single international filing would disfavor US domestic applicants. The foreign applicants had the chance of bypassing the US registration process.

Categories of Marks

A mark can be of any category and form. They may include a brand, name, word, symbol, or label, etc. Under 15 U.S. Code § 1127, there are four main categories of marks that can be protected under the Lanham Act. These are collective marks, certification marks, service marks, and trade names. Collective marks and certification marks are treated as forms of trademarks under 15 U.S. Code § 1054 of the Lanham Act. 

Collective marks

Collective marks are marks that are used to indicate membership in an organization or association. These marks are typically used to identify goods and services that are produced or provided by members of the organization or association. It is only used by the members of the said organization or to identify the goods or services offered by the organization. 

Collective marks are also made up of letters, words, designs, symbols, names etc, similar to a trademark. Registration of collective marks under the Lanham Act is similar to that of trademarks and requires an application. 

Collective marks are of two types:

• Collective membership marks;
• Collective trademarks or collective service marks.

A collective membership mark is a mark used by the members of a collective organization. Associations, unions, cooperative societies, or other organized groups are examples of collective organizations. It does not identify the source of any goods or services. The purpose of a collective mark is to indicate the membership of a person in a collective group. For example, AAA® identifies one’s membership in the American Automobile Association. The collective membership mark REALTOR® helps one to identify as a member of the National Association of REALTORS®. FTD® is another example of a collective mark, used by member-florists of the Florists’ Transworld Delivery Association.

On the other hand, collective trademarks or collective service marks help in identifying the source of the goods or services.  It distinguishes the goods and services from those owned by non-members. Some examples of collective trademarks are: the “CA” used by Chartered Accountants or the marks of various lobby groups. 

Certification marks

Certification marks are marks that are used to indicate that a product or service has been tested and certified as meeting certain standards. These marks are typically used to indicate that a product or service meets certain quality standards. Under the Lanham Act, certification marks are also protected as a type of trademark. But the functions of certification marks are different from a trademark. It shows that the products or services used by the consumers have met a certain standard set by any certifying authority. 

The functions of certification marks are as follows:

• It shows that the goods or services have come from a particular geographical region. For example, the certification mark by the Idaho Potato Commission certifies that the potatoes the consumer is buying are genuine and have been grown in the state of Idaho. The consumer can also be sure that the potatoes will offer a rich taste and texture of the Idaho potatoes.
• Certification marks also show that the goods or services meet certain standards. Certification marks are given based on the quality, materials, or how they have been manufactured. The certification mark “100% Recycled Paperboard” shows that the material is recycled and environment-friendly.
• The goods or services offered by a member of an organization have met certain standards. The “Certified Paralegal” certification mark offered by the Ohio State Bar Association (or any other similar Bar Association) shows that the person is a certified paralegal.

The main difference between a trademark and a certification mark is that the trademark identifies the source of a goods or product, while the certification mark ensures the standards of the goods or services offered.

Another important difference is that the trademark may be owned by a person or an organization; the certification mark is owned by the certifying organization.

Under 15 U.S. Code § 1064 of the Lanham Act, the certifying organization of the certification mark controls and monitors the use of the mark. Certification marks may be canceled if the goods or products fail to meet the enforced standard set by the organization.

Service marks

Service marks are marks that are used to identify services, as opposed to goods. These marks are typically used to identify a particular service, such as a restaurant or a hotel. 15 U.S. Code § 1053 of the Lanham Act deals with service marks. The registration of service marks is similar to the registration process of trademarks. It is also considered a type of trademark under the Act.

Service marks distinguish the services offered by one person or company from others. They serve the same purpose as a trademark. The only difference is that it only identifies the source of the services, not the goods. The term “service” is applicable only to the services offered to others. It does not include the services which are performed solely for the performer.

A mark can be registered as both a service mark and trademark if they are completely unrelated, as held in In Re Dr Pepper Company (1987).

Trade names

Trade names are marks that are used to identify a business. These marks are typically used to identify the business itself, rather than the goods and services that it offers. Trade names are the official names under which the companies run their businesses. Like the trademark identifies the source of goods and services, trade names identify the source of a business. These are used to identify different companies, businesses, partnerships, etc. 

Trade names are also known as business names. It is a name that is chosen to reflect the brand identity of a business. It should be related to the types of goods and services the business offers. Trade names are also known as “fictitious names” or “assumed names.”

Trade names have common law protections and are registrable in state offices. Since trade names usually identify companies, businesses, and partnerships, etc., they cannot be registered under the Lanham Act. Only marks that identify goods and services can be registered under the Lanham Act.

Common law protections for trade names are available as held in Bell v. Streetwise Records, Ltd. (1985).

TM, SM, and ®

According to popular belief, the symbol TM implies a valid and registered federal trademark; however, it does not imply so. TM and SM, TM’s equivalent for service marks, imply that the owner intends to use the mark as a common law mark. The owner may register the trademark someday but has not registered it yet. In the meantime, the owner is attempting to build a brand identity. 

While using an unregistered trademark, the owner can use the symbols TM for goods and products and SM for service marks with it. This lets the consumers and competitors know that the owner is claiming the trademark. Even if the owner does not want to register the trademark, he can still use the symbols.

A federally registered trademark is implied by an “R” inside a circle: ®. The letter “R” stands for “registered.” It shows that the trademark has been examined by the USPTO and registered on the Register. The mark may be registered in either Principal or Supplemental Register. Supplemental Register is used to list down trademarks that have not yet been granted complete federal protection. For example, a descriptive mark that has not yet acquired sufficient distinctiveness for granting full protection under federal trademark law. The owner can use the symbol  ® once the trademark is registered. The symbol  ® is generally written in superscript or subscript at the right of the trademark and is only applicable for federally registered trademarks.

What may serve as Trademarks

There are various types of signs that may serve as trademarks. Words, letters, personal names, and slogans are among the most common signs that may be used as trademarks. Additionally, alphanumeric symbols, colors, fragrances, designs, and other nontraditional marks may also be used as trademarks. It is important to note that a sign must be distinctive in order to be used as a trademark. A sign must be unique enough so that it can be easily identified and distinguished from the goods and services of others.

Any words, phrases, symbols, designs, or a combination of any of these things that identifies the goods or services, may be used as trademarks. There are some non-traditional trademarks which include the use of particular shades of colors, shapes, sounds, etc. 

• Wordmarks consist of independent words. They are used to establish a brand identity for business. Some examples of wordmarks are FedEx, Coca-Cola, LinkedIn, Canon, Facebook, Nikon, eBay, etc.
• Lettermarks are a type of trademark that use only letters. Lettemarks may contain one letter, initials, or an acronym (an abbreviation made up of initial words, which is pronounced as a single word). Examples of lettermarks are NASA, CNN, BBC, HBO, IBM, etc.
• Logomarks are also known as pictorial marks. It usually contains a symbol that carries the brand message. A famous example of a logmark is the bitten apple symbol of the Apple company or the red-and-white Target logo. However, many logomarks also have both letters and pictures. Some logos have letters that form the shape of a picture.

Non-traditional marks or non-conventional marks

Nonverbal marks are marks that do not contain any letters, words, or symbols. These marks are also used to identify a product or service. Non-traditional marks include colors, fragrances, shapes, motions, sounds, etc. A non-traditional mark should be distinctive and easily identified by the consumers. Non-traditional marks can also be protected under the Lanham Act. To register a non-traditional mark federally, it should be shown that consumers associate the mark with any particular goods or services. The specimens for any non-traditional marks should be sent to the USPTO as stated in § 2.56 of the  US Trademark Rules. Non-traditional marks are also referred to as non-conventional marks.

Non-traditional marks are a recent development. One of the most famous cases in this regard is Qualitex Company v. Jacobson Products Company (1995). In this case, the petitioner has been using a shade of green gold color on press pads sold to dry cleaning firms. The shade was registered with the USPTO. Qualitex filed a suit for trademark infringement and unfair competition against Jacobson’s for using the green gold shade. Justice Breyer in the Appellate Court held that since “any word, name, symbol, or device” that helps in identifying the source of goods or services is a valid trademark under the Lanham Act, color may also act as a valid trademark.

Some examples of non-traditional marks are as follows:

Color marks

Color marks are non-traditional trademarks where a particular shade of any color is used to identify the source of goods or services. Under 15 U.S.C. § 1127 of the Lanham Act, color marks can be registered. Famous examples of color marks in the US are the turquoise blue shade of Tiffany jewelry boxes, trademarked as Tiffany Blue, or the bright red sole of the Louboutin shoes. A consumer can easily associate the particular shade with the product.

To register a color mark under the Lanham Act, it should:

• Identify the source of a particular goods or services;
• Should not be functional.

Color marks may also be registered if they have a secondary meaning or have acquired distinctiveness.

A color mark should be non-functional. It cannot get protection if it is functional, which means the color is used to serve an important function. For example, one cannot trademark the red shade used for STOP signs. Colors can also have aesthetic functionality. For example, the gold color used for bookbinding is used to increase its aesthetic and therefore, it is functional, as held in Publications International, Ltd. v. Landoll (1998). Similarly, in the case of In re Florists’ Transworld Delivery Inc. (2013), it was held that the black color in floral packaging is used for bereavement or funeral, therefore it is functional in floral packaging.

Sound marks

Sound marks use musical notes, tunes, chimes, vocals, or any other sounds. It is also a non-traditional mark and is used to identify the source of any product or service. The famous NBC chimes was the first registered sound mark in the US.

The Lanham Act specifically does not mention sound marks, but these can be registered federally with the USPTO. A sound mark must be distinctive, and unique and help to identify the source of a product or service. Sound marks are comparatively harder to register and should be distinctive enough.

Some famous sound marks are NBC chimes, McDonald’s “ba da ba ba bah i’m lovin it”, Harlem Globetrotters’ “Sweet Georgia Brown” etc. The USPTO has listed some of the famous sound marks on its page. It can be checked out here.

Scent marks

There are differences of opinion on whether scent marks can be protected or not. Every person perceives a scent differently and it depends on the olfactory sense of that person. However, scent marks are still recognized and are registrable as trademarks. 

The earliest case where the scent was recognized as a trademark is In Re Celia Clarke, Dba Clarke’s OSEWEZ (1990).  In this case, Celia Clarke, running her yarn business as Clarke’s OSEWEZ, produced a sewing thread and embroidery yarn that smelled like plumeria blossoms. The registration was refused since the examining attorney held that it does not distinguish the goods from others. After appealing, the Trademark Trial and Appeal Board held that the scent is distinctive of the yarn and possessed secondary meaning. Therefore, the application for registration of the scent mark was allowed.

Scent marks are also hard to register and there are very few registered scent marks. Some of the popular scent marks recognized by the USPTO are the flowery musk scent of the Verizon stores and Minty pain-relief patches. Strawberry toothbrushes etc.

Scent marks can only be registered if they are associated with a particular product or service. Scents found in perfumes, fragrances, eau de cologne cannot be trademarked.

Taste marks

Flavor gives a distinctive taste to any food product and is considered as a “device” under the Lanham Act. However, till date, the USPTO does not have any taste mark registered. In fact, nobody was able to convince the courts and trademark board why the flavor deserves a trademark. Some legal scholars think that taste should be granted trademark protection. Again, since taste also depends on the olfactory response of a human, it differs from person to person. 

The most famous case regarding taste marks in the US was of a healthcare company based in the Netherlands, N.V. Organon. The company filed an application to protect its distinctive orange flavor in an antidepressant medicine. In the case In re N.V. Organon (2006), the Trademark Trial and Appeal Board held that pharmaceutical companies add flavor to medicines frequently and the orange flavor was not distinct. The sense of flavors varies from person to person and the consumers cannot distinguish the particular product from others with the help of the flavor.

Coca-Cola considers the flavor of the drink to be the identifier of the product. However, it has not filed any trademark application for its distinct flavor. In a humorous take in one of its advertisements, the company made fun of this. In that advertisement, Coca-Cola sued Coca-Cola Zero for taste infringement. It can be watched here.

Shape marks

Shape is also granted protection under the Lanham Act. However, to get protection, it must be distinctive and serve as the identifier of the source of goods or products. Shape marks may have a negative impact and have many intricacies to get them registered. 

Some of the famous shape marks in the US are the distinctive shape of the Coca-Cola bottle, the Weber barbecue grill, and the shape of the Toblerone chocolate bar with its 3D triangular shape, the flat shaped pringles, etc.

In a case watched internationally, Nestle lost its case for trademarking its four-finger shaped chocolate wafer bar, Kit Kat, in a decision by the Court of Justice of the European Union

Tactile marks

Tactile marks are also known as touch marks, feel marks or texture marks. It is a mark protection granted by the distinctive feel of the texture of a product. The USPTO accepts applications for registration of tactile marks.

The first registered tactile mark was granted to American Wholesale Wine and Spirits, Inc. in 2006, when they filed an application for registering the velvety texture of the bottle of wine. The luxury skincare brand, Fresh Inc., also has a registered tactile mark for its cotton-textures paper wrapped around a soap.

Similar to all the olfactory marks, there are many obstacles to getting a trademark registered. It is a comparatively odd mark and should be distinctive enough. 

A tactile mark should have the following features to get registered:

• Texture should not be functional. A texture with a utilitarian purpose is not eligible for a trademark. It should have an ornamental purpose that appeals to the consumers. For example, a crumpled glass texture for a whiskey bottle is granted protection.
• Since texture is common, it should be proved before the authorities that the texture is not merely attractive but also inherently distinctive to the consumer. The particular 
• Rather than acquired distinctiveness, safeguarding inherently distinctive tactile marks is better since texture can only be felt and it is difficult to prove that it has acquired secondary meaning. For example, the handbag company Dooney & Bourke had to wait for a longer time to get their pebble-grained textured bags being inherently distinctive.
• A mere ornamental texture for a product is not enough. The owner has to prove that it acts as the identifier of its source.

Hologram marks

Hologram marks are non-traditional or non-conventional marks where a hologram is used to identify the source of goods or products. In the case of In re The Upper Deck Co., 59 U.S.P.Q.2d (BNA)1688 (T.T.A.B. 2001), the applicant sought to register a hologram device on goods and trading cards. The Trademark Trial and Appeal Board denied the application on the grounds that it did not perform functions to identify the products.

Very little applications on hologram marks have been filed to the USPTO. It is also very difficult to convince the USPTO that the hologram mark should be registered.

Motion marks

Registration of one of the earliest non-traditional marks was granted by the USPTO in 1957, when it registered the motion of spinning of coin on a hard surface to denote the Northwestern Bank of Commerce. Since then, the USPTO has granted many registrations in motion marks from pre-programmed searchlights to the motion of a Lamborghini car door opening vertically.

 Motion marks are mainly of three types. 

• The first one is a moving image mark generated by a computer. The Nokia handshake is the most popular example.  
• The next one is the motion of the product itself. For example, the motion of the Lamborghini car door which opens vertically.
• The last type of motion mark is a hand gesture. It is sometimes also considered as a different category of marks named gesture marks. It consists of a distinctive hand gesture done by a person. For example, a particular sign made by someone can also be considered worthy of protection. Football player Gareth Bale has protected his  iconic  celebratory ‘heart’ symbol, which is also popularly known as the “eleven of hearts,”

Trade Dress

Trade dress is an important part of a business’s trademark protection. Trade dress generally refers to the overall appearance of a product or service. This includes the shape and design of the product, the packaging, and the overall look and feel of the product or service. Trade dress is typically used to identify a product or service in the marketplace. It is important to note that trade dress can be both functional and nonfunctional. Functional trade dress is trade dress that has a utilitarian purpose, while nonfunctional trade dress is trade dress that is purely ornamental.

Trade dress is the particular visual appearance of any product. It signifies the source of goods or products to its consumers. Trade dress can be of the following forms:

• Design and shape of the packaging of a product;
• Visual appearance and/ or configuration of the product;
• A specific design or the particular shape of the product itself.

The visual appearance of goods or product packaging is also protected under the Lanham Act, only if it is distinctive and serves the purpose of identifying the source of the goods or services. Trade dress can also be registered as trademarks or non-traditional marks under the Lanham Act; it is also protected without registration in 15 U.S. Code § 1125 of the Lanham Act. Similar to all the marks, trade dress also be both distinctive and non-functional to be eligible for protection.

An application to register a trade dress in the USPTO must contain all the details as in a trademark application. As mentioned, registration of trade dress is not mandatory and most of them are protected without registration. Trade dress which is not inherently distinctive, is registered on the Supplemental Register and if the owner can prove it has acquired distinctiveness, it is registered in the Principal Register.

Under federal law, one can bring actions of infringement and dilution of trade dress. In the case of Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000), it was held that a trade dress would only be considered to have acquired distinctiveness if the owner could show evidence.

Trademark Registration Process

The trademark registration process is an important part of protecting a business’s mark in the US. The USPTO is the government agency responsible for registering trademarks in the US. In order to register a trademark, a business must submit an application to the USPTO. The application must include information about the mark, such as the type of mark, the goods or services associated with the mark, and the intended use of the mark. The USPTO will then review the application and determine if the mark is eligible for registration.

The federal registration process of trademarks has some steps to follow. One can also do this all by himself or herself. It is not necessary for one to be represented by a trademark attorney if he/ she is a domestic applicant (i.e. domicile based in the US). However, if one is foreign domiciled, that person must be represented in the USPTO by an attorney who has the license to practice law in the US.

The process of trademark registration is mentioned below step by step. It must be noted all the mentioned steps are equally important and should not be skipped.

Deciding whether a trademark application is suitable for your requirement

While it may seem not of much importance, this is the most basic step and should be decided carefully. Before making the application, one must decide if the trademark registration is best for his/ her requirements. Apart from trademarks, there are other intellectual property, such as copyright, patent, domain name registration, business name registration, etc. and they are completely different from each other. One should also decide whether it should be registered as a trademark, service mark, any non-traditional mark, or even any trade dress.

Selection of a mark

The very first step before application is selecting a mark. One should be extremely diligent while choosing a mark because as discussed in the article, not every mark has legal protection and is allowed to register in the USPTO. There may also be chances of infringement and dilution. 

For selecting a mark, one should consider:

• Whether the mark is registrable;
• What is the level of strength of the mark selected and how difficult will it be to protect the mark?

Format of the mark

After selecting the mark, one has to decide its format – whether it is a lettermark, wordmark, logomark or any non-conventional mark. This is important because the trademark application must contain a drawing or depiction of the mark. It is used to represent the trademark. One can watch this video by the USPTO for more detailed information.

Identification of goods or services

The next step is to clearly identify the goods or services to which the mark will be applicable – whether the mark will apply to both goods and services or only to a particular product. It is important to identify the goods and/ or services correctly. Otherwise, it may also lead to major delays or the registration process to be canceled. This is a good video by the USPTO clarifying all the issues on the identification of goods and services for registration of a trademark. 

Trademark searching 

The most prominent issues a trademark may face are charges of trademark infringement or dilution brought by owners of confusingly similar trademarks. This will be very harmful for new trademark owners who have just started their business, even if it is done mistakenly. Hence, it is advised to conduct a trademark search. The first search conducted before submitting a trademark application is known as a clearance search. It is done to ensure that the newly selected trademark does not conflict with any other trademark.

The USPTO contains a trademark search database to search for similar trademarks. It is known as the Trademark Electronic Search System (TESS) and the trademark database is regularly updated.

After the application is filed, the trademark examining attorney also conducts a thorough search only for trademarks present in the USPTO database. So it is the responsibility of the applicant to conduct a thorough search on his/ her own. State trademark databases and the internet should also be searched.

Filing basis

After a thorough search from the state trademark databases, the internet, and the USPTO search database TESS, one should decide the filing basis of the application of the trademark. As already discussed, the USPTO accepts both use-in-commerce based applications as well as intent-to-use based applications. 

Apart from these, there are also foreign registration basis and foreign application basis. Foreign registration basis applies when one has a registered trademark in any foreign country for the same trademark and for the same goods and/or services. Foreign application basis is the trademark application filed in the US within six months of filing a foreign application for the same trademark and for the same goods and/or services. The application should be filed in a country that is a party to any international agreement or treaty along with the United States. It is also known as a foreign priority basis because the applicant gets the advantage of a priority filing date, i.e., the date on which the application was filed in a foreign country. 

One can check more about filing basis from here.

Preparation and submitting the trademark application

The trademark application can easily be filed online through the Trademark Electronic Application System (TEAS). There are some steps to prepare and submit the trademark application. They are as follows:

• The applicant needs to create a USPTO.gov account from here. To access the Trademark Electronic Application System (TEAS), log in to the USPTO.gov account. It contains two-step authentication.
• After that, file the trademark application online and pay the required fees. The application fee is used to process the application and is not refundable. Even if the application is not granted registration, no fee will be refunded.
• After filing the application, one needs to monitor it constantly through the Trademark Status and Document Retrieval (TSDR) system. The USPTO recommends checking the status every three to four months after the initial date of filing the application. Otherwise, the applicant may miss any important filing deadline.
• It is important and applicants should regularly maintain and update their residential addresses as well as email addresses.

Review of trademark application by the USPTO

The review process of the application may take several months. After a trademark application is filed with the USPTO, the application is checked to see whether it has met minimum filing requirements. If it is positive, an examining attorney is assigned to the application.  The attorney checks for all the details: whether the application has followed all the applicable rules, the fees paid are sufficient, etc., and conducts a thorough search in the USPTO database to look for confusingly similar marks. Drawings and specimens are also reviewed.

Office action

After reviewing the application, if the examining attorney finds that the application should not be registered, a letter is issued to the applicant which explains the reasons why the trademark has been refused. This is known as office action. If there are minor errors, the examining attorney contacts the applicant to correct them.

After getting the office action, the applicant or his/ her attorney should submit a response within three months; otherwise, the application will be declared abandoned. A three-month extension can be requested for a fee. The deadline is of six months for applicants under the Madrid Protocol.

Publication and registration of the mark

If there is no objection to the application submitted, the mark is approved and published in the USPTO Official Gazette. The applicant will receive a notice of publication. After publication, any party who believes he/ she may be damaged may file an opposition within 30 days. The  Trademark Trial and Appeal Board hears the opposition.

If no opposition is filed or is unsuccessful, the registration process of the mark is started. It may take another three to four months.

• For applications based on use-in-commerce, a certificate of registration is issued.
• If the application is based on intent-to-use, a notice of allowance is issued. Within six months, the applicant should use the mark in commerce or submit a statement of use (SOU) or may request another six-month extension.

It is now the responsibility of the owner to keep the registration “live.” and the trademark should be maintained regularly.

Benefits of trademark protection

There are many benefits to registering a trademark with the USPTO. First, registering a trademark gives a business exclusive rights to the mark in the US. That means that no other business can use the same mark or a confusingly similar mark for the same goods or services. Additionally, a registered trademark gives a business the right to sue for trademark infringement if another business uses the same mark or a confusingly similar mark. Finally, a registered trademark can be used as a basis for obtaining trademark protection in other countries.

Besides granting trademark protection nationwide, federal registration of a trademark also has several other benefits. These include exclusive rights in the trademark, a notice informing the public regarding trademark ownership, preventing federal registration of similar marks, remedies for trademark infringement and dilution, etc. Federal registration also acts as a basis for registering the mark in foreign countries. Other benefits of a federally registered trademark are as follows:

Lowering search costs

Federal registration of a trademark lowers the search cost for existing trademarks and new trademarks. Suppose, if someone is looking for a name to create a brand of perfumes, the person can quickly learn that the brand name “Jasmine” is already taken. It will save the time, energy, and resources on promotion of a brand or searching laboriously state by state for a particular brand name. On the other hand, the registered trademark is saved from getting infringed unintentionally or due to lack of knowledge. So federally registering a trademark saves time and money for both parties. 

In addition to this, someone can search the Supplemental Register of USPTO which contains information on if someone is working to develop a brand or an existing trademark that does not yet have sufficient distinctiveness for listing in the Principal Register of the USPTO.

Expansion of business

Federal registration of trademarks allows a business to grow. The trademark of that business does not have to change once it is out of its territory of running business, as is the case of trademarks with common law registration. A trademark with federal registration is not limited to any geographical area and the owners can expand the business throughout the whole country. Federal registration of trademarks also helps while expanding the business to foreign countries.

Lessening competition and consumer confusion

It is a well-known fact that the federal trademark registration process consists of quite stringent steps of review and approval. Without these, anyone could have claimed any mark they wished for. Using similar trademarks would not only have increased competition but also led to consumer confusion. The USPTO trademark registration process ensures that the business owners do not claim any similar,  generic, functional, or misleading words or symbols as trademarks. However, despite all these, there may be cases of infringement, dilution or cybersquatting. In such cases, a registered trademark always has a higher level of legal protection than the unregistered one.

“Live” and “dead” trademarks

As discussed earlier, the registered trademarks must be maintained regularly. The USPTO register contains lists of both “live” and “dead” trademarks. Live trademarks are those that are already used in commerce. Dead trademarks are those that are not in use anymore, either have been abandoned or held for infringement or dilution. Thus, the USPTO Register provides the list of trademarks that are already taken and those that are free to use and are available in the public domain.  

Enforcement of Trademark Rights

Once a trademark is registered with the USPTO, the business must take steps to enforce its trademark rights. This can include sending cease-and-desist letters to businesses that are using the same mark or a confusingly similar mark. It can also include filing a trademark infringement lawsuit in a federal court. In a trademark infringement lawsuit, a business can seek an injunction to stop the infringing activity, as well as damages for any harm that the infringing activity has caused.

The USPTO only registers the trademark; the owner is responsible for enforcing trademark rights. The trademark rights can be enforced in the following ways:

• A cease and desist letter is similar to a legal notice. It is sent to an infringer asking to stop infringing the mark. Sometimes, the issue is negotiated; otherwise, the owner can file trademark infringement lawsuits. If it is registered with the USPTO, a federal lawsuit can be brought. If it is an unregistered mark and the mark is being infringed in the same state, an action can be brought in the state court.
• Trademark rights can also be enforced by bringing suits on infringement as well as passing off.
• If the mark is famous, an action for trademark dilution can also be brought.

Conclusion

The subject matter of trademark protection is very diverse in the US, with the evolution of trademark laws and all the categories of conventional and comparatively newer nonconventional marks. Trademark rights are protected both by the states or by common law (if unregistered) and federal laws (for registered trademarks). The trademark protection laws are evolving constantly. When it comes to trademark protection in the US, the sky’s the limit. 

Trademark protection is an important part of any business’s long-term success. It is important for businesses to understand the various categories of marks, signs that may serve as trademarks, nonverbal marks, trade dress, the trademark registration process, and the enforcement of trademark rights. Additionally, businesses must be prepared to enforce their trademark rights, including filing trademark infringement lawsuits in federal court. By understanding the subject matter of the protection of trademarks in the US, businesses can protect their valuable assets and ensure their long-term success.

References

• James Boyle & Jennifer Jenkins, INTELLECTUAL PROPERTY: LAW & THE INFORMATION SOCIETY—CASES AND MATERIALS. Fifth Edition, 2021 https://web.law.duke.edu/cspd/pdf/ipcasebook.pdf 
• https://cyber.harvard.edu/metaschool/fisher/domain/tm.htm 
• https://www.uspto.gov/sites/default/files/trademarks/law/Trademark_Statutes.pdf 
• https://www.law.cornell.edu/wex/trademark#:~:text=Two%20basic%20requirements%20must%20be,power%20to%20regulate%20interstate%20commerce. 
• Lisa P. Ramsey, Increasing First Amendment Scrutiny of Trademark Law, 61 SMU L. REV. 381 (2008) https://scholar.smu.edu/smulr/vol61/iss2/5 
• Port, Kenneth L., “On Nontraditional Trademarks” (2011). Faculty Scholarship. 235. https://open.mitchellhamline.edu/facsch/235