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1 1 (July 24, 2023)

handle is hein.crs/govemhk0001 and id is 1 raw text is: Congressional Research Service inf~rming the legislative debate s~nce 1914 0 July 24, 2023 An Introduction to Trademark Law in the United States Trademarks are a form of intellectual property that serve to identify the sources of goods. Trademarks have attracted renewed attention since the U.S. Supreme Court decided two cases regarding the main federal trademark law, the Lanham Act, 15 U.S.C. §§ 1051 et seq., in June 2023 and agreed to hear a third such case in its 2023-2024 term. This In Focus provides an overview of U.S. trademark law. What Are Trademarks? The Lanham Act defines trademarks as words, names, symbols, or devices used to distinguish one person's goods from those manufactured or sold by others. Trademarks are thus said to identify a good's source of origin. Trademarks help consumers distinguish between different sellers' goods, and they help sellers protect their reputation or goodwill with buyers. In addition to things like phrases and graphic designs, trademarks may include the overall appearance, or trade dress, of a product and its packaging. The Lanham Act also recognizes several other kinds of protected marks. Service marks (e.g., the McDonald's arches) identify sources of services, collective marks (e.g., the American Automobile Association's AAA logo) may identify associations, certification marks indicate characteristics like regional origin or materials, and trade names identify businesses. This In Focus uses the term trademark to refer collectively to all protected marks, which are treated similarly under the law. The Lanham Act does not generally protect so-called rights of publicity, such as the right to prevent others from using one's voice or likeness for commercial gain, except in cases of false endorsement, as noted below. The laws of many states, however, recognize such rights to varying degrees. Trademark Requirements A mark may qualify as a valid trademark only if it meets three separate requirements: it must be distinctive, nonfunctional, and used in commerce. Distinctiveness Trademarks must be distinctive enough to serve their basic function of distinguishing one seller's goods from another's. A trademark is considered inherently distinctive, and therefore protectable, if it is fanciful (coined for use as a trademark, e.g., Xerox), arbitrary (e.g., calling a computer Apple), or no more than suggestive of the product or its qualities (e.g., Coppertone for sunscreen). By contrast, generic terms-which merely name the type of product at issue-are never distinctive and cannot be trademarked. One cannot use the word apple, for instance, as a trademark for actual apples. In between generic and inherently distinctive trademarks are descriptive marks, which describe an aspect of the product (e.g., tasty chicken). A descriptive mark is protectable if and only if consumers come to associate it with a specific seller over time (e.g., Holiday Inn), thus giving the mark a distinctive secondary meaning so that it is no longer merely descriptive. Surnames and geographic terms also must acquire secondary meaning to be protected. Nonfunctionality Trademarks cannot include functional (useful or necessary) characteristics of a product. This requirement separates trademarks from patents, which give their owners a time-limited monopoly on practicing useful inventions. Use in Commerce Trademarks are not protectable unless they are actually used in commerce to identify the owner's products. Typically, the first person to use a mark receives priority over later users. Trademark protection can also be lost if the owner abandons (i.e., stops using or enforcing) a mark. Trademark Registration Registering one's trademark with the U.S. Patent and Trademark Office (PTO) is not legally required for a mark to be protected, but doing so gives the owner certain benefits. For instance, registration creates a legal presumption of validity and ownership in the mark, gives the owner nationwide priority over others who wish to use the mark, and allows the owner to use the ® symbol. Registration Requircments and Duration To register a trademark with the PTO, the applicant must either be using the mark in commerce or rely on constructive use-that is, a good-faith intent to use the mark followed by actual use within a certain time after registration. Alternatively, trademarks registered in certain foreign countries may be registered in the United States if the applicant intends to use the mark in U.S. commerce. Trademark registration can last indefinitely, provided the owner renews the registration after the first 5 years and every 10 years thereafter. After the first 5 years, the owner may file a declaration of incontestability, which prevents others from contesting validity, ownership, and exclusive use rights for the mark, with some exceptions. Although the Lanham Act prohibits owners from registering marks that disparage or are scandalous, the Supreme Court invalidated those prohibitions as violating the First Amendment in 2017 and 2019, respectively. In June 2023, the Supreme Court agreed to hear a First Amendment challenge to the Lanham Act's prohibition on trademarks that use another living person's name. The

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