Overview of Trademark Law In The United States

What Law Governs Trademarks In the United States?

The Lanham Act, officially known as the Trademark Act of 1946, is the primary federal statute that governs trademarks in the U.S. Under the Lanham Act, a trademark is defined as a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same, but it identifies and distinguishes the source of a service rather than goods. Some examples include brand names, logos, and slogans.

The Act provides a system for registering trademarks, and it allows trademark holders to bring lawsuits to prevent others from infringing upon their trademarks. It also addresses dilution, false advertising, and unfair competition.

Trademark Manual of Examining Procedure (TMEP)

The TMEP is a resource published by the United States Patent and Trademark Office (USPTO). It provides guidance to USPTO trademark examiners, attorneys, and others involved in the trademark registration process. The TMEP outlines the procedures and guidelines for prosecuting trademark applications, including a detailed explanation of how to meet the standards set by the Lanham Act for trademark eligibility.

It includes everything from how to conduct a trademark search, to the examination of the application, to the final decision on the registration. It also offers explanations of legal concepts and relevant case law, as well as the rules about the format and submission of evidence.

Remember, the definition of a trademark, according to these sources, encompasses any mark that is used, or intended to be used, to identify goods or services of one seller and to distinguish them from those of other sellers. In essence, a trademark serves as an indicator of the source or origin of goods or services.

Please note that while the Lanham Act and TMEP provide the legal basis for trademarks in the U.S., individual states also have their own trademark laws, and many countries have their own unique trademark laws as well.

Trademark vs Copyright vs Patent

There are several differences between a trademark, copyright, and patent. These are all types of intellectual property , but they apply to different things:


A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Service marks are similar but identify and distinguish the source of a service rather than goods. Trademarks essentially protect brands. For example, brand names, logos, and slogans can be trademarked. The Nike “Swoosh” and the phrase “Just Do It” are examples of a logo and slogan that are both trademarked.


Copyright protects original works of authorship. This includes literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. In essence, copyright protection extends to any expressible form of an idea or information that is substantive and discrete. For example, if you write a novel, you hold the copyright to that work. You have the exclusive right to distribute, reproduce, perform, display the work, or make derivative works from it.


A patent is a form of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of years in exchange for publishing an enabling disclosure of the invention. There are three types of patents in the United States: utility patents (for new and useful processes, machines, manufactures, or compositions of matter), design patents (for new, original, and ornamental designs for an article of manufacture), and plant patents (for asexually reproducing any distinct and new variety of plant). For example, if you invent a new kind of machine, you would apply for a patent to protect your invention.

These different forms of protection—trademark, copyright, patent—cover different types of intellectual property and are governed by different rules under the law. They can also all coexist within a single product. For example, a new smartphone could include patented technology, copyrighted software, and bear a trademarked brand name.

What US Statute Regulates Trademarks?

The Lanham Act, officially known as the Trademark Act of 1946, is the federal statute that governs trademarks, service marks, and unfair competition in the United States. The act serves several critical purposes:

  • Registration: The Lanham Act establishes a national system for registering and protecting trademarks used in interstate and international commerce. The United States Patent and Trademark Office (USPTO) is tasked with administering registrations.
  • Protection: The Act provides legal protection for owners of registered trademarks against infringement, which occurs when a party other than the owner uses a mark that is “confusingly similar” in relation to products or services which are identical or similar to the products or services of the owner.
  • Preventing Unfair Competition: The Lanham Act not only provides protections for trademarks but also guards against unfair competition. This includes false advertising, trademark dilution, and any act that is likely to confuse or deceive the consuming public.
  • National Standardization: By creating federal legal standards for trademark registration and protection, the Lanham Act has helped to standardize the laws around trademarks across the states, aiding businesses operating interstate.
  • Maintaining Consumer Trust: Trademarks serve to identify the source of goods or services. By protecting these marks, the Lanham Act aids in preventing consumer confusion and promotes trust in brands and the marketplace overall.
  • Economic Protection: By protecting businesses’ marks and reputation, the Lanham Act also contributes to the promotion of economic growth. When businesses can protect their brand, they are often more willing to invest in quality products and services, marketing, and customer service.
  • Remedies for Infringement: The Act provides remedies for trademark owners in case of infringement, including the recovery of profits, damages, and costs. In some cases, trademark owners might be able to recover treble damages and attorney’s fees.

It is important to note that while the Lanham Act provides a federal framework for trademark law, individual states also have their own laws concerning trademarks and unfair competition. These state laws can provide additional protection beyond what is available under federal law.

Trademarks and the Federal Courts

The jurisdiction of federal courts in the United States extends to a variety of matters concerning trademarks under the Lanham Act, including, but not limited to, the following:

  • Trademark Infringement: This is the unauthorized use of a trademark or service mark (or a substantially similar mark) on competing or related goods and services. The owner of a trademark may sue for damages and for a court order (an injunction) to prevent further infringements.
  • Trademark Dilution: This is a cause of action recognized for famous marks whereby the owner of the mark can prevent others from using the mark in a way that would lessen its uniqueness, even in the absence of consumer confusion. Dilution can occur either by “blurring” or “tarnishment” of the mark.
  • False Advertising: Under the Lanham Act, the federal courts have the power to hear cases where one company is suing another over deceptive or misleading advertising practices.
  • Unfair Competition: Beyond trademark infringement, federal courts also resolve cases of unfair competition, which refers to a number of types of unfair practices, such as trade defamation, invasion of trade secrets, and deceptive practices.
  • Trademark Registration Disputes: Federal courts can hear cases related to the approval or denial of trademark registration applications by the United States Patent and Trademark Office (USPTO), as well as disputes about the details of a trademark registration, such as the mark’s description or classification.
  • Cybersquatting: The Anti-Cybersquatting Consumer Protection Act (ACPA), which is a part of the Lanham Act, provides for federal lawsuits against those who, in bad faith, register or use domain names that are identical or confusingly similar to distinctive marks or dilute a famous mark.
  • Counterfeiting: Counterfeiting, which is the production of goods with the intent to deceptively represent its origin, authenticity, or quality, can also fall under the purview of federal courts.
  • Jurisdictional and Procedural Issues: These might involve matters such as whether a federal court has jurisdiction over a defendant in a trademark dispute, or whether a particular court is the proper venue for a lawsuit.

It’s important to note that not all trademark disputes end up in federal court. Many are resolved through negotiations between the parties, alternative dispute resolution mechanisms, or administrative proceedings within the USPTO. Additionally, state courts may also hear trademark disputes if they involve state trademark laws or common law trademark rights.

Trademarks and the Trademark Trial & Appeal Board

The Trademark Trial and Appeal Board (TTAB) is an administrative body within the United States Patent and Trademark Office (USPTO) that handles certain types of trademark cases. The TTAB’s jurisdiction is more limited than a federal court, and it primarily decides four types of proceedings:

  • Ex Parte Appeals: If a trademark application is refused by a USPTO examining attorney, the applicant can appeal that decision to the TTAB. This is known as an “ex parte appeal” because it involves only one party, the applicant. The TTAB reviews the record and determines whether the examining attorney correctly refused the application based on trademark law.
  • Opposition Proceedings: After a trademark application is approved by an examining attorney, it is published in the Official Gazette of the USPTO. Any party who believes they would be damaged by the registration of the mark has a period of 30 days to oppose the registration. This proceeding is known as an “opposition proceeding.” If an opposition is filed, the TTAB will decide whether the mark can be registered.
  • Cancellation Proceedings: Any party who believes they are or will be damaged by an existing trademark registration can file a petition to cancel the registration. Cancellation proceedings can be brought at any time if the registration was obtained fraudulently, or if the mark has become generic. Otherwise, a cancellation proceeding can typically only be brought within five years of registration.
  • Concurrent Use Proceedings: These are proceedings to determine the rights of parties claiming to have concurrent lawful use of the same or similar marks, either geographically or in terms of the goods or services provided.

It’s important to note that the TTAB only has the authority to determine whether a mark can be registered. It does not have the authority to determine whether someone has the right to use a trademark, or whether someone is infringing on someone else’s trademark. Those issues typically need to be resolved in federal court.

Additionally, decisions of the TTAB can be appealed to a federal court, either to the United States Court of Appeals for the Federal Circuit or to a United States District Court.