Requirements to Qualify for Protection
Protectable subject matter:
Trademarks are governed by the Lanham Act, 15 U.S.C. § 1051 et seq. There are three basic requirements for a protectable mark: (1) the mark must be distinctive, (2) the mark must be non-functional, and (3) the mark must be used in commerce. If these three requirements are met, then a wide range of marks are eligible for protection. These can include words, phrases, and images, as well as more niche applications like colors, scents, and textures. It is important to note that registration is not a requirement for protection, although registration provides significant benefits, which will be discussed later.
Distinctiveness speaks to the mark’s ability to identify a specific source of the goods or services it is identifying. If the mark lacks distinctiveness, it fails to differentiate between sources. The level of distinctiveness is measured along the Abercrombie Spectrum. Marks that are deemed generic or merely descriptive are not distinctive and are therefore not protectable. Protectable marks can either be inherently distinctive (the strongest level) or can have acquired distinctiveness. Marks with acquired distinctiveness are descriptive marks that have acquired a secondary meaning within the relevant market. Distinctive marks are further divided into suggestive, arbitrary, and fanciful marks. See below for a visual representation of the Abercrombie spectrum.
A mark is not eligible if it is functional, as trademark law does not seek to create monopolies over useful items. If a design is found to be superior in a utilitarian basis, it is functional and not protectable. A foundational case in this area involved a special design for the shape of a spray bottle. Ultimately the court found that the bottle did not function in a superior way compared to other similar bottle designs, so it would not be barred from trademark protection on functionality grounds.
The use in commerce requirement is a result of trademark law’s origins in the Commerce Clause. It also offers the benefit of preventing “trademark trolls” or those who would create a wide variety of marks in the hopes of being able to reap the benefits of those who eventually wish to use those marks. It is possible to register marks prior to actually using the marks in commerce, if the registrant has a “bona fide intent” to use the mark in commerce.
It is important to provide notice that you are claiming ownership of a trademark when using it. Before registering the mark, notice can be provided by including TM with the mark whenever it is used (or SM in the case of service marks). After the mark is registered, notice can be given through the registered trademark symbol, ®. Notice is vital for a successful trademark infringement suit, as damages are not recoverable for infringement that occurs before notice is given.
One element that separates trademarks from other forms of intellectual property is the length for which they are prot