Trademark Act

The Trademark Act, also known as the Lanham Act, is the major federal law outlining the parameters of federal trademark law in the U.S., derived from Congress’ commerce power. While the law covers a wide range of issues relating to trademark litigation and prosecution, it also sets forth the bases upon which trademark registration can be granted by the United States Patent and Trademark Office (“USPTO”). The Trademark Act also prohibits trademark infringement, trademark dilution, and false advertising, and has been amended several times in the recent past by the Bayh-Dole Act of 1980 and the Trademark Amendments Act of 1999.

The Trademark Act is divided into four sections dealing with the principal register, the supplemental register, general provisions, and the Madrid Protocols, which were enacted to bring domestic U.S. law into compliance with the Madrid Agreement on trademark law, which created an international system for facilitating the registration of trademarks in multiple jurisdictions around the world. 15 U.S.C. § 1052 within the sub-chapter on trademark registration on the principal register is one of several key sections. Notably, that section is worded permissively; it states that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it,” and goes on to list six situations in which a trademark may not be registered. The most important is section 1052(d), which requires the USPTO to deny registration to a mark that is confusingly similar to another mark that is already registered.

15 U.S.C. § 1052(a) provides that registration will be denied for scandalous, immoral, or disparaging marks, or for misleading associations with persons, institutions, or beliefs. 15 U.S.C. § 1052(b) denies registration of marks that comprise the flag or insignia of a country. 15 U.S.C. § 1052(c) denies registration of a living person’s name without his consent, and of a U.S. president’s name whether alive or dead. 15 U.S.C. § 1052(e) denies registration to descriptive marks, as well as to deceptively misdescriptive marks, primarily geographically descriptive marks, primarily geographically deceptively misdescriptive marks, surnames, and functional marks. 15 U.S.C. § 1052(f) provides an exception to 15 U.S.C. § 1052(e) by permitting registration of descriptive marks that have acquired secondary meaning, i.e. a source-indicating meaning aside from their descriptive meaning in the minds of consumers.

Other provisions of the Trademark Act will come into play with respect to provisional trademark applications, or applications under the Madrid Protocol filed through the USPTO, whereas the general provisions of the Trademark Act pertain to a range of issues including trademark classes, filing fees and litigation. The Trademark Act is a complex piece of legislation that is difficult to parse even for attorneys, so before attempting to decipher these provisions one should always consult a professional with experience in U.S. trademark law.