Trademark law in the United States is governed by the Lanham Act. In the United States, trademark rights are either common law (based upon use) or registered rights. Common law rights are limited to the geographic area where the trademark has been used. Registered rights are obtained by filing a trademark application with the United States Patent and Trademark Office (“PTO”). The Lanham Act provides the owner of a trademark with protection against infringement by confusingly similar marks, dilution of famous marks, counterfeiting, and other acts of unfair competition. The Lanham Act allows for injunctive relief and the possibility of treble damages and attorneys’ fees.

A trademark is any word, slogan, or symbol that is used in trade with goods and services to indicate their source of origin. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from offering the same goods and services under a non-confusing mark. There are generally four different types of marks: (1) arbitrary/fanciful; (2) suggestive; (3) merely descriptive; and (4) generic (note, generic words are not entitled to protection). Fanciful marks are devices which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark (i.e., KODAK®, XEROX®, and EXXON®). An arbitrary mark utilizes a device having a common meaning that has no relation to the goods or services being sold (i.e., APPLE® (for computers)).

A suggestive trademark is a word that, when applied to the products or services, requires imagination, thought, or perception to reach a conclusion regarding the nature of those goods or services (i.e., REDLINE® (suggestive for an energy drink giving you potent ingredients), MICROSOFT® (suggestive for microcomputers), and MICRODERMABRASION IN A JAR® (suggestive for a face cream that sloughs off dead skin)). On the other hand, a merely descriptive mark immediately conveys information regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product or service and is not entitled to protection (i.e., LIGHT (descriptive of a light beer), ZERO CARB (descriptive of a dietary supplement that has zero carbohydrates), and SUPERPUMP (descriptive of a dietary supplement that pumps muscles). Most marks fall into the suggestive (protectable) or merely descriptive (not protectable without secondary meaning) categories. While it is tempting to select a descriptive mark because it more readily communicates the nature of the goods or services provided, they not immediately entitled to protection. Merely descriptive trademarks they are only entitled to protection upon proof of secondary meaning, i.e., 5 years of continuous use, consumer surveys, extensive sales, and/or extensive advertising.

Once you establish that you have trademark rights, you need to confirm that you were “first” to use the trademark. The next question is whether there is an infringement of your trademark. This analysis involves a likelihood of

confusion analysis, which differs slightly in each of the eleven federal circuits. In the Eleventh Circuit Court of Appeals, the seven factors that the Court considers are: (1) the strength of the plaintiff’s mark; (2) the similarity between the plaintiff’s mark and the allegedly infringing mark; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the similarity of the sales methods; (5) the similarity of advertising methods; (6) the defendant’s intent, e.g., does the defendant hope to gain competitive advantage by associating his product with the plaintiff’s established mark; and (7) actual confusion.

It is important to hire an experienced trademark litigator such as Erica W. Stump to analyze your case and determine whether you have an enforceable trademark, whether you were first, and whether your trademark has been infringed. There are many factors to consider in deciding a strategy, including budget. Sometimes a trademark infringement can be swiftly dealt with by a cease and desist letter, while other times a complaint will need to be filed and possibly even an injunction. Ms. Stump has extensive experience litigating trademark infringement cases for big brands such as BANG ENERGY® and REDLINE® to smaller, startup brands.