A trademark, as defined by the U.S. Patent and Trademark Office, is “any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others.”
In other words, a trademark relates to the identification of a product by means of a name or symbol that is descriptive or not descriptive of the product, and which is used in the streams of commerce to identify the source or manufacturer of the product.
Note that a service mark is similar to a trademark except that it relates to the identification of a service rather than a tangible product or good.
Legal foundation of trademark law in the United States
Constitutional and statutory laws are the basic legal sources or foundations of trademark law in the United States. Take note of the following:
United States Constitution: Under Article I, Section 8, Clause 3 of the U.S. Constitution, otherwise known as the Commerce Clause, the U.S. Congress has the power to regulate commerce. This serves as the constitutional foundation of trademark law in the U.S.
Trademark Act of 1946: Also known as the Lanham Act, the Trademark Act of 1946 is the primary federal statutory law that governs trademark in the U.S. It not only defines the scope and limit of trademark but also prohibits trademark infringement and dilution, as well as false advertising.
United States Code: Title 15, Chapter 22 of the U.S. Code codifies and outlines all laws pertaining to trademark in the U.S. It describes the scope and limitations of trademark, the two different trademark registers, the conditions and remedies for patent infringement, and the functions of the U.S. Patent and Trade Office.
Acquiring trademark rights in the United States
There are two ways in which rights to trademarks can be acquired. These are through common law and federal registration. Both are eligible for protection under the Lanham Act.
Individual or business automatically acquires common law trademark rights by merely using a brand name, logo, or any symbol, among others, in the normal course of commerce. There is no need for registration. Trademarks with common law rights are often accompanied with “TM” symbol
On the other hand, an individual or business can choose to register its trademark with the U.S. PTO. Registered trademarks are often accompanied with “R” symbol.
Federal registration is almost always recommended. Note that common law trademark rights are limited to the geographic area wherein the trademark is used. Federal registration gives trademark rights owner nationwide coverage.
A trademark may also be registered at the state level through the Secretary of State of a relevant state. Like common law trademark rights however, state registration is less potent than federal registration because it only covers intrastate commerce. U.S. trademark law requires a trademark to be registered with U.S. PTO when used in interstate commerce.
Principal register vs. supplemental register
Trademark law in the U.S., specifically under the Lanham Act, provides for two different federal registrations of trademarks with the U.S. PTO. These are principal register and supplemental register. There are differences between the two and registration will depend on the descriptive qualities of the involved trademark,
The primary difference between principal register and supplemental register is that the former is reserved for unique trademarks while the latter is reserved for descriptive trademarks.
To be eligible for a primary register, the trademark should be either one or all of the following: (1) arbitrary or fanciful; (2) suggestive; and/or (3) a descriptive trademark that has acquired secondary meaning or distinctiveness. Examples of trademarks with principal register are made-up words such as Nokia and Kodak, or product-unrelated names such as Apple and Google.
On the other hand, to be eligible for a supplemental register, the trademark should describe the qualities of the good or service it has been associated with. This descriptive trademark can acquire secondary meaning or distinctiveness over time however. Under the U.S. trademark law, the trademark may become distinctive through five years of use in commerce or through evidence of heavy advertising and market recognition.
Advantages of principal register over supplemental register
Below are the advantages of principal register over supplemental register:
1. A trademark registered on a principal register can take advantage of available legal presumptions. The registration certificate actually serves as a prima facie evidence in court and in trademark lawsuits, the burden of proof lies on the accuser. On the other hand, a holder of a trademark registered on a supplemental register needs to introduce evidence on the court to prove trademark validity.
2. Registering an eligible trademark under a principal register is possible even prior to actual use in commerce. Under the U.S. PTO, this is called intent-to-use application. However, under a supplemental register, the trademark must already be used in commerce. There is no intent-to-use application on the supplemental register.
3. A trademark registered on a principal register can achieve incontestability between the fifth and sixth year from registration. Under a supplemental register, this is impossible. The court can even cancel the registration of a trademark on a supplemental registration if property infringement has been proven.
4. A holder of a trademark on a principal register can contact the U.S. Customs and Department of Treasury to stop the importation of counterfeited goods or goods that infringe the trademark.
Supplemental register has also advantages over principal register. From a marketing perspective, a trademark that is only eligible for a supplemental registration can take advantage of its descriptive characteristics. Brand introduction, identification, and recall may be easier for descriptive trademarks compared to non-descriptive ones.
In addition, a supplemental registration allows a trademark to be listed and recorded in a federal database. The fact that a trademark is registered with the U.S. PTO can serve as a deterrent for others to forgo any plans to use similar trademark or assert trademark ownership.
EDITOR’S NOTE: This article is part of a series about intellectual property rights in the United States. (1) An introduction to intellectual property rights in the United States; (2) Understanding copyright law in the United States; (3) Facts about patent law in the United States; (4) The basics of trademark law in the United States; (5) An overview of trade dress law in the United States; (6) Background on trade secret law in the United States
