Trademark

From The IT Law Wiki

Trademark protection in the United States is governed jointly by state (statutory and common law) and federal statutory law. The main federal statute is the Trademark Act of 1946.^[1] Under the Act,^[2] a trademark includes:

any word, name, symbol, or device, or any combination thereof —

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the Principal Register . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others to indicate the source of the goods, even if that source is unknown.

Also known as service mark when used in connection with services, a trademark permits the seller to use a distinctive name, mark, or symbol to identify and market a product, service, or company.

The trademark allows quick identification of the seller’s product, and for good or ill, can become an indicator of a product’s quality. If for good, the trademark can be valuable in the introduction of new products by conveying an instant assurance of quality.

Trademarks give customers assurance that the goods or services they are buying are what customers think they are. If a customer has purchased items in the past from a particular company that bears a specific mark or logo, the customer has an impression, favorable or not, of that company and the goods or services it produces. So trademark law empowers consumers by giving them information that is often critical to their purchasing decisions.^[3]

Trademark law is designed to prevent other companies with similar merchandise from free-riding on the association of quality with the trademarked item. Thus, a trademarked good may command a premium in the marketplace because of its reputation. For trademarks, distinctiveness is at a premium because a trademark must capture the consumer’s imagination to be effective. Generic names of commodities cannot be trademarked. Trademark rights are acquired through use or through registration with the U.S. Patent and Trademark Office.

Trademark law also protects the appearance of product packaging and, in some cases, the actual physical configuration of the goods, if these serve as brand identifiers.

A trademark owner may prevent others from using any mark that creates a likelihood of confusion as to the source or sponsorship of the associated goods or services.^[4] Trademark rights persist so long as the mark continues to be used and retains its distinctiveness.^[5]

Trademark law allows for overlapping use in the two following situations:

1. Use of the same mark for the same goods or services, but in different geographic areas; and
2. Use of the same mark for different goods or services in the same geographic areas.

[edit] References

1. ↑ 15 U.S.C. §1051 et seq.
2. ↑ 15 U.S.C. §1127)[1]
3. ↑ 151 Cong. Rec. H2123 (daily ed. April 19, 2005) (statement of Rep. Lamar Smith).
4. ↑ See Restatement (Second) of Unfair Competition §20.
5. ↑ Id. at §30.