There are three primary and distinct types of intellectual property implicated in eCommerce—trademark, patent, and copyright—each with its own set of laws to protect different types of subject matter and indicia of source for goods and services. This three-part series gives a general overview of each, beginning in this post with trademark law. Importantly, this series is designed to be only a basic introduction to three complex areas of law and how the laws are applied in matters of eCommerce.
Supreme Court Justice Frankfurter characterized a trademark in a timeless way in a 1942 case:
If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants.
Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942). Put another way, according to experts:
A trademark is a species of property that denotes a particular standard of quality embodied in the product or service, symbolizes the good will of its owner, and represents an advertising investment. Trademark law protects the public from confusion and deception and makes it easier for consumers to choose the products and services they want.
1 Gilson on Trademarks § 1.03 (2019).
Four years after Justice Frankfurter’s declaration, the Lanham Act gave general statutory definition and protection to the then-unsettled area of trademark law. As amended over the years, the Lanham Act defines a 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 Act, 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.” 15 U.S.C. § 1127.
Trademark rights can inhere in a wide range of subject matter, including words, slogans, designs, numbers, acronyms, colors, shapes, and countless others, even distinctive fragrances. The law also protects collective marks, service marks, certification marks, and trade dress, the characteristics and requirements for each of which are governed by additional precedent and rules.
In the United States, trademark rights arise from use, and not registration. While common-law trademark rights can form the basis for infringement claims, federal registration confers a set of valuable statutory presumptions to a trademark. To be eligible for federal registration, and the statutory presumptions that come with that status, a trademark must: (1) be of a subject matter that the U.S. Patent and Trademark Office (USPTO) has found to qualify as a trademark, (2) be used in lawful interstate commerce, and (3) be distinctive—it must be capable of identifying the mark owner’s goods and distinguish them from others. 15 U.S.C. § 1127; 1 Gilson on Trademarks § 1.02 (2019).
As interpreted by federal courts since its enactment, under the Lanham Act, a person will be liable for trademark infringement if, in connection with any goods or services, he or she uses a trademark in commerce that is “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” 15 U.S.C. § 1125(a).
Even where an infringement claim might otherwise lie, an owner’s use or non-use of a mark can render it unprotectable. For example, if a brand fails to enforce its trademark rights against unauthorized users, the trademark may become “diluted” and lose its ability to serve as a source identifier for the marked goods and services. If an owner ceases use of the mark for a length of time, or threatens enforcement and never follows through, abandonment or laches may bar enforcement, and both can lead to loss of rights and form the basis of a cancellation claim against the registration in the USPTO or federal courts.
Because the Lanham Act deals with the intersection between consumer purchasing decisions and brand recognition, it is the most common and effective avenue for brands with registered trademarks to assert rights against unauthorized sellers who interfere with brand recognition and cause consumer confusion. Indeed, in line with what Justice Frankfurter opined in 1942, trademark law protects a purchaser’s ability “to select what he wants,” as well as a brand’s ability to maintain customer goodwill by consistently providing goods bearing the brand’s trademark that are of the high quality customers expect from the brand.