While registering a mark with the U.S. Patent and Trademark Office is prima facie evidence of a valid and enforceable mark (and certainly recommended), registration is not required to garner trademark protection. Generally, to demonstrate trademark infringement, a plaintiff must show both (1) that it owns a valid and enforceable mark, and (2) that the use by another of a reproduction, counterfeit, copy, or colorable imitation of that mark creates a likelihood of confusion.
Valid and Enforceable Mark
Though federal registration provides the presumption of a valid and enforceable mark, the owner of an unregistered trademark may have obtained a common law trademark right. To establish the existence of a common law trademark right, a party must show that the mark is (1) used in commerce, and (2) is distinctive among United States consumers.
The term “mark” includes any trademark, service mark, collective mark, or certification mark. See definitions of each below.
Used in Commerce
As defined in the Act, the term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. The Fourth Circuit has interpreted this definition to require a party to show that it (1) renders a service in commerce, and (2) that a mark for the service so rendered is used or displayed in the sale or advertising of that service.
For a service to be rendered in commerce the service must either be performed in the United States or the service must involve transactions between United States citizens and the subject of a foreign nation. The Fourth Circuit has emphasized that the mere provision of a service to a U.S. citizen is insufficient to establish rights in an unregistered service mark; the mark itself must be used or displayed in the sale or advertising of the service to the U.S. citizen.
Note: in the Fourth Circuit, a mere business relationship with Google via Google’s AdSense program, for example, is not enough to qualify as use of the mark in commerce.
A mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning. Marks are often categorized as (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Suggestive, arbitrary, and fanciful marks are usually deemed inherently distinctive, registerable and entitled to protection. Conversely, generic marks are not registrable and descriptive marks have to have acquired distinctiveness through secondary meaning.
Likelihood of Confusion
Here are nine factors often used by courts in making this fact-based determination:
(1) the strength or distinctiveness of the plaintiff’s mark as actually used in the marketplace;
(2) the similarity of the two marks to consumers;
(3) the similarity of the goods or services that the marks identify;
(4) the similarity of the facilities used by the markholders;
(5) the similarity of advertising used by the markholders;
(6) the defendant’s intent;
(7) actual confusion;
(8) the quality of the defendant’s product; and
(9) the sophistication of the consuming public.
While evidence of actual confusion strengthens a case (and may even be dispositive), no actual confusion is required to prove a case of trademark infringement. Moreover, not all these factors will be relevant in every trademark dispute, and there is no need for each factor to support the likelihood of confusion issue. This issue is such that reasonable minds may differ. Courts use these factors as a guide in making a determination for this element.
But beware – There is another issue for unregistered marks. While trademark law indefinitely protects designs that identify a product with its manufacturer or source, patent law encourages invention by granting inventors a monopoly over new product designs or functions for a limited time. The functionality doctrine – a patent law – prevents trademark law, which seeks to promote competition by protecting a company’s reputation, from inhibiting legitimate competition by allowing a producer to control a useful product feature. Registration is prima facie evidence of validity and that the mark is nonfunctional.
Trademark: The Lanham defines the term “trademark” as any word, name, symbol, or device, or any combination thereof – (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter – 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.
Service mark: The Lanham Act defines a “service mark” as any word, name, symbol, or device, or any combination thereof – (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter – to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
Certification mark: The Lanham Act defines a “certification mark” as any word, name, symbol, or device, or any combination thereof – (1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter – to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
Collective mark: The Lanham Act defines a “collective mark” as a trademark or service mark – (1) used by the members of a cooperative, an association, or other collective group or organization, or (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter – and includes marks indicating membership in a union, an association, or other organization.