USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Use as Source Identifier Consumers must associate the mark as identifying source. Purely descriptive use is unlikely to be suf - ficient. Registration not Required Unregistered marks can be protected at common law. However, these marks may only be protected in the geographic area where they are used as well as a zone of expansion. Registration provides national rights. 2.3 Trade Mark Rights Trade mark rights exist under common law and stat - ute. The Lanham Act provides a federal registration system and federal cause of action for infringement of marks that are likely to cause confusion. Federal registration provides benefits, such as a nationwide priority to use a mark, as well as a pre - sumption that the mark is valid. In contrast, a common law trade mark is only protected in the areas where used and a zone of expansion. Registrations subsist as long as maintenance docu - ments and renewals are timely filed and the mark is not abandoned. Common law rights exist unless abandoned. 2.4 Use in Commerce Trade mark rights in the US stem from use, not reg - istration. See 2.2 Essential Elements of Trade Mark Protection . 2.5 Notices and Symbols A registrant may give notice with the words “Reg. US Pat. & Tm. Off.” or the ® symbol. Such notice may only be used with registered marks. Failure to use the notice can limit the ability to recover damages. For common law trade marks, TM (or SM) may be used to put others on notice of claimed rights. There are no requirements to use TM or SM. 2.6 Related Rights Trademarked logos that are sufficiently original and otherwise comply with copyright can be protected by copyright. Similarly, product design trade dress may also be protected by design patents. A design that is
In the US, “fame” is a high bar. Famous marks used in the US which meet the high bar can be protected from dilution (15 USC § 1125 (c)(2)). 2.2 Essential Elements of Trade Mark Protection To achieve trade mark protection a term must be dis - tinctive and in use. Distinctiveness Distinctiveness exists on a spectrum: • Generic: Generic terms are not protectable. Gener - ics describe the category or genus of a product. • Descriptive: Terms that describe the form, function, features or characteristics of the product cannot be protected without proof of “acquired distinctive - ness”. • Suggestive: Suggestive terms can be protected outright. These terms do not “describe” but rather hint at aspects of the goods. • Arbitrary: Terms unrelated to the product are arbi - trary and can be protected outright. • Fanciful: These terms are neologisms and are protectable. For a term to be found to have acquired distinctive- ness , consumers must associate the term as indicat - ing source. This may be shown in a number of ways such as length of use, sales information, advertising expenditures, surveys, press, etc. The more descrip - tive the term is, the more evidence is required. Use To have a valid trade mark, there must be bona fide use on or in connection with goods or services. For a registration, that use must be “in commerce”. Use in commerce generally means use that can be regulated by the US Congress such as selling or transporting goods between states or a foreign country, or provid - ing services out of state or with a foreign country. Use is shown with specimens which depend on what is being offered. • Goods: Mark is on the goods, packaging, labels, tags or displays. • Services: Mark is on advertising of the services.
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