The Trademark Authority

Trademark claims are governed by the Lanham Act.  A trademark is “any word, name, symbol or device” used to “identify and distinguish” goods. Trademarks identify the source or origin of a product. To be accorded protection, the trademark must be “distinctive” or have become identified with a particular source through its use in “commerce.”

The Lanham Act also covers service marks, which distinguish services of one person from another, and trade names. The protections offered by trademark law are less than those accorded copyright or patents.

For instance, unlike owners of patents or copyrights, trademark owners do not have exclusive use of a mark. Protection extends only to prevent the mark from being used by others in a manner likely to cause confusion, mistake, or deception among consumers as to the source of the goods or services.

Courts have applied a number of factors to assess whether an allegedly infringing use is likely to cause consumer confusion. These factors include the similarity of the marks, the similarity of the parties’ products and services, the strength of the plaintiff’s mark, evidence of actual consumer confusion, the markets involved, likelihood of confusion, and the sophistication of buyers.

Trademarks are valid and enforceable as long as the mark is used in commerce, the owner adequately seeks to protect its rights to the mark, and the mark has not been abandoned or become generic.

A mark need not be registered with the Patent and Trademark Office, although registration can be considered conclusive evidence of validity and ownership. Where the owner has met the incontestability requirements of section 1065 of the Lanham Act, an allegedly infringing defendant is limited to the defenses set forth in section 1115(b) of the Act.  In addition, a federal trademark registration also affords the owner nationwide rights, well beyond the local geographic market where the mark is used. This attribute of federal registration affords wider protection than state registration.