Unlike copyrights and patents, trademarks are not guaranteed under the Constitution. Since these rights were not available at the federal level, states began to provide protection. However, as our country became more and more integrated, the need for federal trademark protection increased eventually resulting in the passage of the Trademark Act in 1881. Trademark law as we know it, however, was primarily established in the Lanham Act of 1946.
The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof…used by a person, or 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 and to indicate the source of the goods, even if that source is unknown.” It is helpful to break this down into parts. A trademark, in essence, is (1) a physical, tangible symbol that, (2) by virtue of its use, (3) identifies the source of the goods with that symbol on it. For example, if you see a car with the word FORD on it, you are able to identify FORD as the source of that automobile.

In addition to these upfront requirements, the mark also must be distinctive in order to be placed on the primary register. Typically, this means that the mark must not create a likelihood of confusion with existing marks and the mark must not be merely descriptive. There are also several threshold issues that must be considered but rarely result in unforeseen hurdles.

The likelihood of confusion refusals are issued when a proposed trademark is too similar to a registered trademark. For example, if an individual wanted to sell mobile devices under the mark SEMSANG, they would unquestionably receive a likelihood of confusion refusal because of the similarity to SAMSUNG. When Examining Attorneys at the USPTO are reviewing for the likelihood of confusion, there are two factors that they must consider. These factors are (1) “[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression” and (2) “[t]he relatedness of the goods or services as described in the application and registration(s).” The test for likelihood of confusion is not a mechanical test and must be considerate of the specific facts of the case it is being applied to. The USPTO, itself, admits that even in some situations where the compared marks are similar, and the goods/services associated with the marks are similar, registration is still appropriate.

Mere descriptiveness refusals are issued when a proposed trademark is too descriptive of the goods or services that the mark is being registered in association with. Officially, the TMEP refers to descriptive marks as marks that only describe the products or services to which they are applied. These refusals are common for when the mark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” This restriction extends beyond marks that would be considered “generic,” such as APPLEs for apples or TOWELS for towels. Some examples of marks that have been refused for mere descriptiveness include NOPALEA for “dietary and nutritional supplements”, APPLE PIE for “potpourri” and BED & BREAKFAST REGISTRY for “lodging reservation services.”

It is helpful to think of a trademark merely as a symbol. That is, a trademark is a “thing” that represents a source of goods or services. For many clients, they focus merely on the mark- the logo, the slogan, the brand name, etc., but they do not truly think about what it represents. Trademarks are, registered or not, the identity of a business. Whether or not a business owner chooses to apply for a trademark or not is simply a decision of whether or not that business owner wants to have control over the names, symbols, and designations they are using to market themselves.

[1] Copyrights and Patents are protected under the “Copyright Clause” in the U.S. Constitution. Since trademarks were not mentioned, they are regulatable by Congress under the “Commerce Clause.”

[1] 15 U.S.C. § 1127.

[1] 15 U.S.C. § 1052(d).

[1] 15 U.S.C. § 1052(e).

[1] These thresholds include statutory refusals such as trying to trademark your birth name or trying to trademark another person’s name without their permission.

[1] TMEP 1207.01.

[1] Id.

[1] Id.