The IT Law Wiki


U.S. trademark law[]

Under the Lanham Act,[1] 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 fundamental purpose of a trademark is to reduce consumer search costs by providing a concise and unequivocal identifier of the particular source of particular goods. The consumer who knows at a glance whose brand he is being asked to buy knows whom to hold responsible if the brand disappoints and whose product to buy in the future if the brand pleases. This in turn gives producers an incentive to maintain high and uniform quality, since otherwise the investment in their trademark may be lost as customers turn away in disappointment from the brand. A successful brand, however, creates an incentive in unsuccessful competitors to pass off their inferior brand as the successful brand by adopting a confusingly similar trademark, in effect appropriating the goodwill created by the producer of the successful brand. The traditional and still central concern of trademark law is to provide remedies against this practice.[2]

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.[3]

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.[4]

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.[5] Trademark rights persist so long as the mark continues to be used and retains its distinctiveness.[6]

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.

Limitations on trademark rights[]

The Ninth Circuit has observed that the purpose of a trademark has "remained constant and limited: Identification of the manufacturer or sponsor of a good or the provider of a service."[7] Thus, trademarks represent "a limited property right in a particular word, phrase, or symbol,"[8] and trademark owners do not possess exclusive rights in the use of marks which describe a person, a place or an attribute of a product.[9] Thus, in certain cases, the use of another party's trademark can be a non-trademark "fair use."

Under U.S. trademark law, there are two types of "fair use":


  1. 15 U.S.C. §1127 (full-text).
  2. Ty Inc. v. Perryman, 306 F.3d 509, 510 (7th Cir. 2002) (full-text).
  3. 15 U.S.C. §1051 et seq.
  4. 151 Cong. Rec. H2123 (daily ed. April 19, 2005) (statement of Rep. Lamar Smith).
  5. See Restatement (Second) of Unfair Competition §20.
  6. Id. at §30.
  7. New Kids on the Block v. News America Pub., 971 F.2d 302, 305 (9th Cir. 1992) (full-text).
  8. Id. at 306.
  9. Id.

See also[]