Trademarks identify the ‘distinctive’ sources of origins for goods. They are nonfunctional, and must be used in commerce. Excludes rights of publicity.

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.