Lanham Act

The Lanham Act is a piece of legislation that was codified in 1946 that enacts federal regulations in the field of trademark law.  The Lanham Act is based on Congress’s ability to regulate goods traveling through interstate commerce under the commerce clause.  It provides for a national registration of trademarks and protects owners of trademarks from infringement from and the use of similar trademarks that would dilute the trademark or lead to confusion amongst consumers.  Prior to the Lanham Act there were State trademark laws but with the passage of the Act in 1946 there was finally a federal guideline.

There are 4 major provisions of the Lanham Act.  The first two subchapters deal with the registration of Trademarks.  The first subchapter entails the registration process and the various rights that are granted with the registration.  Subchapter II deals with the registration of certain marks that may not be registered under subchapter I.  This form of registration does not confer the same protections as those under Subchapter I but it does give limited protections including advance notice of trademark to potential infringers.  

Subchapter III of the Lanham Act deals primarily with remedies that accompany a finding of trademark infringement.  They are broken up into sections 42 and 43 of the act.  

A Trademark, as defined by the United States Patent and Trademark Office, is defined as “a word, phrase, symbol, or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of another.” Famous Trademarks include the trademark “Nike” as well as the Nike “swoosh.” The trademarks help do distinguish Nike shoes from those of its competitors. 

Trademarks can also extend to distinguishing features of products including the shape and color of the product.  For example, the shape of a Coca-Cola bottle is highly distinguishable from other bottles on the market.  Trademark issues would arise if  for example, a competitor of Coca-cola were to manufacture a similar bottle and use that bottle to compete in the beverage market.  This would entail to confusion of the competing product with Coca-Cola and would likely lead to a Trademark infringement suit.

It is not required by law to have a trademark registered with the Patent and Trademark Office but the registration does afford a number of protections.  Registration of the Trademark constitutes nationwide constructive notice to all potential infringers that the trademark is currently owned.  Registration also gives the party possessing the registered trademark the authority to sue for trademark infringement in a federal court.  The registration of a trademark also confers other benefits including increased damages in the case of infringement being found by a federal court.  

The Lanham Act provides certain pre-requisites in order for a trademark to receive federal protection.  In order to be a trademark, under federal law, a trademark must be distinctive.  The courts have grouped the categories of distinction into 4 groups based on the relationship of the mark with the underlying product.  These groups are: arbitrary and fanciful; suggestive; descriptive; or generic.

The four categories of trademarks are arbitrary or fanciful; suggestive; descriptive; or generic.

An arbitrary or fanciful mark is one that bears no logical relationship to the underlying product.  These include trademarks such as “Apple,” “Nikon,” and “Panasonic.” These trademarks have no relationship to the underlying product.

A suggestive trademark is one where the trademark suggests a characteristic associated with its use.  The trademark “Poland Spring” suggests that the product is associated with water.

A descriptive mark requires secondary meaning that does more than associate the product with a general product or industry.  Descriptive marks are not inherently distinctive and are protected only if they have acquired secondary meaning.  The secondary meaning is acquired when the public at large begins to associate that trademark with a distinct service or good unlike others in the same industry.  For example, the trademark “iphone” has a secondary meaning  associated with a premium brand of cellular phones.

The final category of trademarks is the Generic category.  These types of products carry with them absolutely no trademark protection.  They are deemed to be too common in identifying specific categories of products that it would be a detriment to the public if those terms were allowed to be trademarked.  

As detailed in the Lanham Act, a trademark may be register in one of two ways.  By either using the mark in the stream of commerce or by registering the mark with the United States Patent and Trademark Office.  

The first method of obtaining a trademark involves the registration with the United States Patent and Trademark Office.  The ultimate protection associated with a registered trademark is that the once the trademark has been used for 5 consecutive years it is prima facie evidence of a trademark.  In this instance, any defendant in a trademark infringement suit cannot directly attack the plaintiff’s mark. A second important distinction is that, while an unregistered trademark is only valid in the region where it is used a registered trademark gives the trademark national recognition.

The second method of attaining a trademark is very straightforward.  It merely involves selling a product with a specific trademark in the stream of commerce.  Once that is accomplished an individual has met his/her obligations to have an enforceable Trademark.  However, there are differences.  Under a “common law” trademark; which is what an unregistered trademark is referred to, the trademark is only valid in the region that it is sold in.  Secondly, the protection associated with a registered trademark that has been in use for 5 continuous years does not apply to a common law trademark.

A trademark is first registered by filing an application with the United States Patent and Trademark Office.  Once the trademark is filed it will be reviewed in the order in which it was received.  The application will then be reviewed by an attorney at the Patent and Trademark Office.  This could take fro 3-6 months to accomplish.  After the attorney has reviewed the application, if there are no issues, the trademark will be published.  At that point any party seeking to contest the application for a trademark must make any claims within 30 days.  If there is a petition filed against trademark then the case will go before a Trademark Trial and Appeal Board.  If there is not contention within 30 days then application will be processed and a valid trademark will be issued.  A trademark must be renewed every 10 years in order to maintain its validity.