What Marks are Entitled to Trademark Protection and Enforcement Mechanisms Under the Lanham Act?
A trademark is “a word, phrase, logo, or other sensory symbol used by a manufacturer or seller to distinguish its products or services from those of others.”[1] A mark qualifies for trademark protection where it is sufficiently distinctive to distinguish an owner’s goods from others.[2] Showing a mark is entitled to trademark protection is the first step in asserting a claim for infringement.[3] Trademark owners establish their entitlement to trademark rights in two ways by (1) federally registering their mark with the United States Patent and Trademark Office (“USPTO”) and (2) through common law rights.[4] When a court analyzes a mark in a trademark infringement action, a federally registered mark is presumed valid, and a common law mark owner must prove it is entitled to protection.[5] Thus, an owner of a common law trademark must undergo an additional step to succeed in an infringement action.
Unregistered and Distinctive Marks May Qualify for Trademark Protection
A trademark owner without a federal registration may establish its entitlement to protection under the Lanham Act by showing the mark would qualify for federal registration.[6] The first step in establishing common law rights is to show that the distinctive mark sufficiently identifies itself with the subject goods or services.[7] The mark’s use must be public, and the owner must have used the mark in commerce.[8] While common law rights may be used as grounds for an infringement action, owners should note that rights are generally limited to the geographic area in which the mark is used.[9]
Court’s Treat Federally Registered Trademark’s with Greater Deference Than Common Law Marks
Where a plaintiff owns a federally registered mark the Second Circuit holds that “the Lanham Act of 1946 provides that a mark registered by its owner shall be prima facie evidence of the registrant’s exclusive right to use the mark in commerce on the product.”[10] Thus, owners of federally registered marks generally do not need to show their entitlement to protection.[11] Further, federally registered marks become incontestable and entitled to the highest achievable level of protection after five consecutive years of use after registration.[12] Courts find that incontestable marks “shall be conclusive evidence… of the registrant’s exclusive right to use the registered mark in commerce.”[13] The scope of protection an incontestable mark receives is vast. Incontestability prevents a defendant from successfully asserting a mark is merely descriptive.[14]
Conclusion
Trademarks receive a range of protections under U.S. law. The highest level of protection a mark may receive is from an incontestable mark subsequent to five years of use and proper federal registration with the U.S.P.T.O. However, unregistered marks may also be protectable and a lack of federal registration does not leave a valid mark owner without remedy to infringement.
Footnotes
