Use is the basis for fed tm law in the us. Where you establish use first is where you estabslih rights in the US. And once you have interstate commerce, you can  obtain reg

1) Provides nationwide constructive use- so even though you may not be using in all 50 states, it’s as though you’re using it once you file that application. (From application date).

2) Provides notice- this prevents subsequent parties from claiming that they adopted your mark in good faith. The world is basically put on constructive notice.

3) Ability to bar importation of goods bearing trademark into the U.S

4) Right to protect your rights in a foreign country.

5) The ability to sue in federal court.

6) Incontestability (after you file section 15 affidavit). - limits the ability for someone else to challenge your marks registration.

7) Once you have the mark, you can apply the R in a circle to the trademark.

It is possible to register trademarks in states.

1) Fanciful

2) Arbitrary

3) Suggestive

4) Descriptive

5) Generic

made up word (a coined) word.- such as Xerox.; Kleenex.

a normal word that is applied to goods and services that are unrelated to the word.- Apple (for computer products). Camel cigarettes and blue diamond nuts

a mark that conveys/implies  some aspect or property of the goods- Orange crush; Coppertone) but doesn’t actually describe the product.

one that describes the goods/services- (eg shake-n-bake).

where the word is the thing (e.g. Beer Beer)- Beer cannot be trademarked as beer can never function as a trademark b/c it’s the name of the thing. A generic trademark can NEVER be protected and NEVER be registered

When talking about Fanciful, Arbitrary, Generic marks, we say that they are inherently distinctive, and therefore they are immediately registerable under the lanham act. This is because they are applied to goods/services they are not normally associated with

A problem with fanciful , arbitrary, and suggestive- I must educate the public as to what services/goods I am selling

With Descriptive marks, you do not have to educate the public about the marks. But in order for them to qualify for registration, they require an addition step a descriptive tm can be registerable if you can establish secondary meaning. This refers to the magical transition when a descriptive mark is actually no longer descriptive and is the association of the trademark in the mind of the consumer with the goods. So basically when you can show that the tm as acquired secondary meaning,  then it is not inherently distinctive  but that it has acquired distinctiveness. Secondary meaning can occur very quickly. So by doing a very large ad campaign you will get the secondary meaning very quickly. But in the lanham act you get secondary meaning after a period of use for five years of continuous use.

So basically when you can show that the tm as acquired secondary meaning,  then it is not inherently distinctive  but that it has acquired distinctiveness. Secondary meaning can occur very quickly. So by doing a very large ad campaign you will get the secondary meaning very quickly. But in the lanham act you get secondary meaning after a period of use for five years of continuous use.

So you get it by either engaging in behavior that lets the public know what your goods and services are or you use it for five years.

Marks that are the thing themselves.

So for example beer beer

when a mark (typically registered_ is used to refer to the thing (e.g. asprin) – you can’t renew it or you can’t re-register it. It requires a court to make a determination 

1) Supplemental

2) Principal

The principal register is for:

1) inherently distinctive marks

2) Marks that have   Acquired distinctiveness

This exists for the purposes to allow a party to register the mark that is descriptive. You have a registration and you can sue in federal court. And you provide notice. Then you can let it sit there on the supplemental register for five years and then you can re-register it on the principal register.

a company name. the trade name is the name we refer to the company. The  trade name is  not a registration. A trade name is not identifying goods or services. A registration identifies where goods and services come from.

So if you name yourself Poppy Pizza, Inc. You can’t register that. But then if you start using it to sell pizza, then you can register it.

So when you incorporate your company, you can’t register the name. but once you start using it, then you can trademark it for those goods

1) Slogans, words, letters (e.g. NBC)

2) Shapes- so the shape of a bottle (i.e. coca-cola bottle).

3)Color(s)- (UT Burnt orange); “pink” for insulation.

4) Sounds- (NBC chime)

5) fragrances-  if you apply a fragrance to say yarns and threads, that can be  a tm. But you couldn’t do this with Chanel No. 5 b/c the smell  is the thing so it becomes generic b/c it’s  Chanel No. 5 Chanel No. 5.

6) designs- so like the Nike swoosh. Any two or three-dimensional can be a trademark).

not registrable but are protectable under the lanham act.

Trade dress = the look and feel associated with the delivery or the presentation of the service/good.  Other companies cannot use your trade dress when presenting the goods and services to the company

1) Disparaging/ false association- when you hear or see the mark you associate the goods or services with an entity  that did not produce them. So if you use westpoint for guns, that creates a false association with the military academy.

Disparaging -  redskins trademark could be considered disparaging and then will lapse

2) insignia/flags/coats of arms- these identify individuals, nations, royal houses.- so important / big you cant’s register it (like Italian flag on your Italian sauce).

3) Immoral/Scandalous- it cannot be registered. This ( e.g. Hooters)

4) portraits of living persons (without permission)

5)  Deceptive-  silkies for clothing products not made of silk.

6) Mere surnames are not protected under the law (except that it’s ok once you show secondary meaning)

7) geographic terms (except that you have secondary meaning)

--- you cannot use something that is geographically misdescriptive if it is not appropriate for that good or service. So you can’t say you are selling Florida oranges if you oranges are from New Jersey.

8) functional devices cannot be registered as trademarks- something that you have to have to do things everyday. So you could not protect the bulbous ends on a Listerine bottle (old school) the glass bottle could slip through your hands at work.

9) Statutorily protected marks- the Olympic rings, the seal of the president, seal of army, etc. You may not register a mark that is a statutory mark for your goods and services.

10) Confusingly similar to marks that are already registered/ an existing registration)- a court will consider all of these factors but there is not necessarily any one that will

a. strength of mark (arbitrary, fanciful, etc…… they will determine if the mark is inherently distinctive or descriptive. The stronger the mark  the more likely the mark will be considered confusing similar. So if it’s Xerox and you try to tm perorx- Xerox is   the stronger mark.

b. similarity of the marks- Lexis vs. Lexus – they are almost identical and sound the same

c. similarity of the goods/services-

d. similarity of the channels of trade- how are these goods or services actually being introduced to the consumer. The channels of trade of lexus at car dealership; for lexis via computer. Very different but the court will see if they are similar.

e. the degree of care exercised by the consumer- how much effort is the consumer expending  by making a choice of products. The greater effort, the lower similarity. So BMW 325 vs. Mazda’s 323. The marks a virtually identical, goods are identical, similarity of the channels of trade are all the same. But the degree of care the consumer uses to buy a car is so high the likelihood of confusion is virtually zero.

But the cleaning product Fantastic vs. the cleaning product Fabuloso- there the likelihood of accidentally buying on cleaning product over another is higher. So this is highly related to the price of goods and governed by the reasonable person standard.