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FEDERALTRADEMARKLAW 449The relative strength of a particular trademark depends
upon where it falls within a range of five categories: fan-
ciful, arbitrary, suggestive, descriptive, or generic. The
greatest protection comes for fanciful marks consisting of
invented words such as Xerox, Kodak, or TiVo. The next
strongest protection comes for arbitrary marks, which are
commonplace words used in a manner that is unrelated
to their dictionary meaning, such as Apple for computers
or Shell for gasoline. Suggestive marks are familiar words
or phrases that are used in an inventive way to “suggest”
what their product or service really consists of, such as
Home Box Office for a movie channel or Mail Boxes Etc.
for a postal services franchise. The least protection comes
for descriptive marks that do little more than describe the
characteristics or contents of the product, such as the pub-
lication Automotive Industry News, or Cellphone Center
for a cellular telephone retailer. Finally, generic names,
which merely state what the product or service is, can-
not function as trademarks. Some marks, such as aspirin,
linoleum, escalator, or nylon, were once trademarks but
became generic because the trademark holder failed to
police unauthorized use.FEDERAL TRADEMARK LAW
For trademarks used in interstate commerce, U.S. law
provides protection under the Trademark Act of 1946,
known more commonly as theLanham Act.The Lanham
Act also created a registration process for trademarks and
legal and procedural incentives for trademarks to be regis-
tered with the U.S. Patent and Trademark Office (USPTO)
(USPTO, n.d.). Many states within the United States also
afford trademarks protections under their state’s laws.
The Lanham Act provides a functional definition of
what is eligible to be registered as a trademark. Poten-
tially anything can be registered as a trademark if it func-
tions among consumers to distinguish a specific product
from other products in the marketplace. The Lanham Act
does, however, prohibit certain marks, including anything
immoral, deceptive, scandalous, disparaging toward an
institution or national symbol; anything that falsely sug-
gests a connection to a person, that consists of a flag other
governmental insignia, or that uses a name or portrait of a
deceased U.S. president during the life of his widow with-
out her consent; and numerous other limitations. Once
registered, a mark may also be cancelled if it has be-
come generic, has been abandoned, was obtained through
fraud, or is otherwise prohibited by the aforementioned
conditions.
One important limitation on registration comes when
the mark is part of the product’s functionality. An as-
pect of the product may meet the definition of a trade-
mark and may even be recognized as a trademark by con-
sumers, but it cannot be registered if it is essentially a
functional aspect of the product. For example, a com-
pany might sell a computer monitor with a unique shape
that is immediately recognizable to the public and dis-
tinguishes the monitor from the products of competitors.
Under the functional definition of a trademark, the unique
shape may be registered. If the shape is actually a func-
tional aspect of the product, for example, if the shape is
responsible for improved resolution, the shape cannot beregistered as a trademark. (In such a case, however, the
manufacturer may be able to seek patent protection for
the unique design.)
The USPTO registers trademarks and service marks
that are used in interstate commerce. Trademarks need
not be registered for an owner to enforce his or her rights
in court; however, federal registration provides numerous
legal benefits to a trademark owner at a reasonable ex-
pense. For example, once a mark is registered, the regis-
tration establishes the validity the registrant’s claims of
ownership and places the world on constructive notice
that the owner has exclusive rights to use the mark in
commerce. If the holder of a registered trademark estab-
lishes infringement under the Lanham Act, the holder not
only can enjoin any misuse of a mark but also can recover
statutory damages and, in some cases, attorneys’ fees.
Federal registration on the principal register gives na-
tionwide protection from infringement, whereas common
law protects the mark only in the specific geographical
area in which the mark is used in commerce; and state law
protects the mark only within the state where the mark is
registered. Thus, another benefit of federal registration is
the establishment of rights across a larger geographical
area than under common law and state law.
In fact, the scope of protection for a federally regis-
tered mark is usually broader than under common law
or state law. For example, under common law and many
state trademark registration statutes, trademark protec-
tions may be restricted to those specific products or ser-
vices for which the mark has explicitly been used, whereas
federal law allows a mark to be protected even when used
in conjunction with a wider array of related products or
services, such as a family of services offered under an
umbrella trademark. Finally, the Lanham Act provides
legal remedies that go beyond those available at com-
mon law including, for example, treble damages against a
“willful” infringer, as well as reimbursement of attorney
fees in exceptional cases. It is important to note, however,
that unlike many areas in which federal law supercedes
state law, state and federal trademark law often co-exist
well and aggrieved parties can frequently bring legal ac-
tions using both state and federal law to equal effect.
The Lanham Act’s protections flow equally to trade-
marks and service marks. Trade dress is also protected
by the Lanham Act, provided it is not a functional part
of the product and is distinctive, has acquired secondary
meaning as being uniquely associated with the product,
and there is a likelihood of confusion on the part of the
consumer if a competing product were to possess similar
trade dress.Trademark Registration
The USPTO maintains two types of trademark registries,
the Principal Register and the Supplemental Register. The
Principal Register is where a “registered trademark” is
registered. There are three ways a trademark or service
mark may be registered with the USPTO. The first method,
called an “in use” application, is for an applicant who is
already using a mark in commerce. The second method is
an “intent to use” application, for marks that are not yet
in use but that the applicant is preparing to use. The third