Section 1051 of the statute, located in its entirety here, clearly illustrates the requirement that the mark be used in commerce.
§ 1051. Application for registration; verification
(a) Application for use of trademark
(1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
Comments: This section also requires that the verified statement also specify, among other things, that to the best of the applicant's knowledge no other person (or legal entity) has the right to use the mark or one that is "substantially similar" such that confusion in the marketplace would occur. Notice that the requirement here is of "existing use" in commerce, and other procedures are required for "intention to use" under section 1051(b). Under the latter section, for registration to be finalized (with the exception of some international implications) the requirement for "use in commerce" must still be met (i.e. the "intention to use" application must be amended at this time).
When do rights attach?
Rights for marks that are "inherently distinctive" (i.e. allow for the immediate identification of the source) attach under a priority of use concept, otherwise known as the "race to the marketplace" test. If the mark in question is not registered, then generally protection only extends to a bounded geographic area established by such factors as reputation, advertisements or actual sales. Registered marks, on the other hand, receive nationwide protection regardless of where they are used.
What is meant by "use in commerce?"
The "intent to use" section was added in 1989 and prior to this time "actual use" in commerce was required for registration. This encouraged sellers to "ship" small quantities of goods in order to meet the "letter of the law." This practice became known as "token use." Post 1989, while actual use is still required for registration in the principal register, an applicant that has a "bona fide intention" to use may (i.e. if other requirements are met) be given a "notice of allowance" by the USPTO. The applicant is then given a set period of time to submit a verified statement regarding actual use, and if allowed, the initial application is considered "constructive use" and priority is established as of the date of the initial application. A leading case prior to the 1989 modification is Zazu Designs v. L'Oreal (7th Cir. 1992).
What is meant by "inherently distinctive?"
The answer to this question quickly leads us into the arcane nature of trademark doctrine but for the purpose of this tutorial broad strokes will suffice. Here you will need to review the "classification continuum" introduced in the What Constitutes a Mark? section. Marks that are arbitrary, fanciful and suggestive are considered to be "inherently distinctive." The definition of each "node" of the continuum is as follows:
Fanciful: this is a mark that has no other meaning than that which is attached to the trademark itself (e.g. "Lego" used in association with bricks).
Arbitrary: this is a (word) mark that does have meaning, but the meaning has nothing to do with the goods or services with which it is associated (e.g. "Apple" used in association with computers or "Kodak" used in association with photo supplies).
Suggestive: this is a mark that brings to mind a characteristic of the good or service without actually describing it (e.g. "Coppertone" used in association with sunblock or Vision Center" for eye doctors). The consumer is required to use some "imagination" to determine the nature of the goods or services.
Descriptive: this is a mark that explicitly identifies a characteristic of a good or service with which it is attached (e.g. "American Airlines").
Generic: this is a mark that uses "ordinary words" to represent the words "ordinary meaning" (e.g. desktop computer).
A generic mark receives no protection because, as mentioned previously, this would be tantamount to allowing ownership of the language itself (e.g. in a somewhat analogous manner copyright doctrine does not allow for the ownership of ideas). Some words can lose their trademark status because they subsequently "morph" into the language. This concept is called "genericide" (see Defenses). A descriptive mark, for similar reasons, gets no immediate protection unless the mark has acquired "secondary meaning."
It should be noted that there are no "bright lines" between the "nodes" in the continuum but rather, as one court stated, the categories are "like tones in a spectrum" and "tend to blur at the edges and merge together." The labels used as "nodes" are more guidelines than definitions and like much in IP law, there are always varying shades of gray. A leading case here is Soweco v. Shell Oil (5th Cir. 1980); see also Vision Center v. Opticks (5th Cir. 1980).
What is secondary meaning?
Descriptive marks must clear an additional hurdle in order to acquire trademark status because the words used in these marks can often be used to describe the underlying product itself (e.g. does "American Airlines" refer to a single source or all airlines that happen to be American?). Allowing ownership by a particular seller would provide the holder with a significant and unfair competitive advantage.
Secondary meaning is satisfied if consumers associate the descriptive words with a single source, despite the fact that the source, while unique, need not be explicitly known (i.e. the requirement can be met with an "anonymous single source"). The Lanham Act codifies the lack of protection for descriptive marks and the secondary meaning exception in section 1052. A leading case here is Zatarain's v. Oak Grove Smokehouse (5th Cir. 1983). To establish secondary meaning in an infringement action, the plaintiff has the burden of showing "that the primary significance of the term in the minds of the consuming public is not the product but the producer." This is usually a difficult burden to meet.
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