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The Lanham Act

Trademark law in the United States is governed by the Trademark Act of 1946, also known as the Lanham Act (15 U.S.C.A. section 1051 et seq). The Lanham Act codified much of the then existing common law of trademarks, and it also clarified some areas where jurisdictions differed in their approach to particular issues. Congress has since amended the Lanham Act several times, addressing new concerns as they are presented by both trademark owners and consumers. Many states have enacted trademark statutes of their own, which may be applied to legal issues that are not pre-empted by Lanham.

Lanham defines trademarks to include words, names, symbols, and logos that businesses use or intend to use in commerce for the purpose of distinguishing their goods from those made or sold by competitors. The key to any claim for trademark rights is the distinctiveness of the proposed mark. Roughly analogous to the originality requirement for copyright, the distinctiveness requirement for trademarks may be satisfied by proof that the mark is descriptive, suggestive, arbitrary, or fanciful. Proof that a mark is generic will defeat a claim for trademark protection.

A generic name is the common name for a product and thus does nothing to distinguish itself from other products of the same genre. Shoe, ball, hat, and lightbulb are all generic product names that will never receive trademark protection. Conversely, trademarks that are distinctive and have qualified for trademark protection may lose that protection by becoming generic in the mind of the public. This transition happens when a substantial segment of consumers in the relevant market adopt a trademark as the general name for an entire line of products. Examples of once distinctive trademarks that have since become generic include aspirin, cellophane, escalator, and thermos. The trademark owners of Kleenex, Xerox, Sanka, and Teflon have successfully prevented their marks from becoming generic, despite many consumers’ strong identification of their individual products with the product lines as a whole.

For a trademark to receive and retain its distinctiveness, the mark must fall into one of four categories: descriptive, suggestive, arbitrary, or fanciful. One level more distinctive than a generic mark, descriptive marks will not receive trademark protection unless they have acquired a secondary meaning, which happens when a significant portion of consumers identify the mark as signifying a particular manufacturer’s good. Suppose the Jones Sport and Recreation Company sought trademark protection for their line of bicycles known as the “blue bike.” The word blue does almost nothing to distinguish Jones’ product from other bikes with the same color being sold by competitors. But now suppose that Jones has spent millions of dollars over the last several years marketing its product, and sales of the “blue bike” have grown to such a degree that bicycle-buying Americans now identify blue bikes as originating from the Jones’ company. Then Jones’ mark may have acquired secondary meaning, and thus its “blue bike” is much more likely to receive federal trademark protection.

Suggestive marks imply a quality or characteristic of a product that goes beyond merely describing it. These kinds of marks require consumers to use their imaginations to make the connection between the mark itself and the product it represents. As a result, suggestive marks can receive federal trademark protection immediately upon their first use. Examples of suggestive marks include Orange Crush (orange-flavored soft drink), Playboy (sexually oriented magazine for men), Ivory (white soap), and Sprint (long-distance telephone company).

The strongest marks are arbitrary and fanciful marks. Their strength lies in the fact that they bear little or no obvious relationship to the products with which they are affiliated, and yet they serve as a source of immediate authenticity in the minds of consumers. As a result, arbitrary and fanciful marks most effectively serve the dual role of trademarks, promoting fair competition between rivals in the marketplace and communicating the source and ownership of products to potential buyers. Arbitrary marks can be actual words that have their own meaning, but when associated with a particular product they do not describe the product or suggest anything about it. Examples of arbitrary marks include Pledge for furniture polish, Camels for cigarettes, and Dial for soap. Fanciful marks are not words at all and have no meaning apart from their affiliation with a good or service. They are inherently distinctive. Examples of fanciful marks include Kodak, Exxon, and Rolex.

Inside The Lanham Act