Trademark Law in the United States: A "Too Small" Introduction.

Trademarks, a form of intellectual property, have attracted renewed attention since the U.S. Supreme Court decided two cases regarding the main federal trademark law, the Lanham Act, 15 U.S.C. §§ 1051 et seq., in June 2023, and agreed to hear a third such case during the 2023-2024 Term. This article provides a brief as a breath, slim as a Pop-Tart overview of trademark law in the United States, highlighting Vidal v. Elster, the third in a series of First Amendment challenges to provisions of the Lanham Act that bar registration of various kinds of scurrilous marks. In the case, Steve Elster attempted to trademark the phrase "Trump Too Small" for use on T-shirts to convey a political message mocking defeated former President Donald J. Trump’s failed policies and certain diminutive physical features. The question presented is whether the refusal to register a trademark under Section 1052(c) of Title 15 violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.

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I. What Are Trademarks?

The Lanham Act defines trademarks as words, names, symbols, or devices used to distinguish one person’s goods from those manufactured or sold by others. Trademarks are thus said to identify a good’s "source of origin." Trademarks help consumers distinguish between different sellers’ goods, and they help sellers protect their reputation or "goodwill" with buyers. In addition to things like phrases and graphic designs, trademarks may include the overall appearance, or “trade dress," of a product and its packaging.

The Lanham Act also recognizes several other kinds of protected marks. Service marks (e.g., the McDonald’s arches) identify sources of services, collective marks (e.g., the American Automobile Association’s AAA logo) may identify associations, certification marks indicate characteristics like regional origin or materials, and trade names identify businesses. This article uses the term trademark to refer collectively to all protected marks, which are treated similarly under the law.

The Lanham Act does not generally protect so-called rights of publicity, such as the right to prevent others from using one’s voice or likeness for commercial gain, except in cases of "false endorsement," as noted below. The laws of many states, however, recognize such rights to varying degrees.

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II. Trademark Requirements.

A mark may qualify as a valid trademark only if it meets three separate requirements: it must be distinctive, nonfunctional, and used in commerce.

A. Distinctiveness.

Trademarks must be distinctive enough to serve their basic function of distinguishing one seller’s goods from another’s. A trademark is considered inherently distinctive, and therefore protectable, if it is "fanciful" (coined for use as a trademark, e.g., "Xerox"), "arbitrary" (e.g., calling a computer "Apple"), or no more than "suggestive" of the product or its qualities (e.g., "Coppertone" for sunscreen). By contrast, generic terms — which merely name the type of product at issue — are never distinctive and cannot be trademarked. One cannot use the word "apple," for instance, as a trademark for actual apples.

In between generic and inherently distinctive trademarks are "descriptive" marks, which describe an aspect of the product (e.g., "tasty" chicken). A descriptive mark is protectable if and only if consumers come to associate it with a specific seller over time (e.g., "Holiday Inn"), thus giving the mark a distinctive "secondary meaning" so that it is no longer merely descriptive. Surnames and geographic terms also must acquire secondary meaning to be protected.

B. Nonfunctionality.

Trademarks cannot include "functional" (useful or necessary) characteristics of a product. This requirement separates trademarks from patents, which give their owners a time-limited monopoly on practicing useful inventions.

C. Use in Commerce.

Trademarks are not protectable unless they are actually used in commerce to identify the owner’s products. Typically, the first person to use a mark receives priority over later users. Trademark protection can also be lost if the owner "abandons" (i.e., stops using or enforcing) a mark.

III. Trademark Registration.

Registering one’s trademark with the U.S. Patent and Trademark Office (USPTO) is not legally required for a mark to be protected, but doing so gives the owner certain benefits. To obtain the benefits of registration, a person who uses or intends to use a trademark in commerce applies to record the mark on the USPTO’s "principal register." 15 U.S.C. 1051(a)(1) and (b)(1); see 35 U.S.C. 2(a)(1). The application must include a description of "the goods in connection with which the mark is used" or is intended to be used. 15 U.S.C. 1051(a)(2); see 15 U.S.C. 1051(b)(2). If the USPTO grants the application, it issues the owner a certificate of registration "in the name of the United States of America." 15 U.S.C. 1057(a). The owner then "may give notice that his mark is registered by displaying with the mark the words 'Registered in U.S. Patent and Trademark Office' or 'Reg. U.S. Pat. & Tm. Off.' or the letter R enclosed within a circle, thus ?." 15 U.S.C. 1111. Registration creates a legal presumption of validity and ownership in the mark, gives the owner nationwide priority over others who wish to use the mark, and allows the owner to use the ? symbol.

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A. Registration Requirements and Duration.

To register a trademark with the USPTO, the applicant must either be using the mark in commerce or rely on "constructive use" — that is, a good-faith intent to use the mark followed by actual use within a certain time after registration. Alternatively, trademarks registered in certain foreign countries may be registered in the United States if the applicant intends to use the mark in U.S. commerce.

Trademark registration can last indefinitely, provided the owner renews the registration after the first five years and every ten years thereafter. After the first five years, the owner may file a "declaration of incontestability," which prevents others from contesting validity, ownership, and exclusive use rights for the mark, with some exceptions.

Although the Lanham Act prohibits owners from registering marks that "disparage" or are "scandalous," the U.S. Supreme Court invalidated those prohibitions as violating the First Amendment in 2017 and 2019, respectively.

In June 2023, the Supreme Court agreed to hear a First Amendment challenge to the Lanham Act’s prohibition on trademarks that use another living person’s name. Vidal v. Elster (No. 22-704) is the third in a series of First Amendment challenges to provisions of the Lanham Act that bar registration of various kinds of scurrilous marks. In the first, Matal v. Tam, 137 S. Ct. 1744 (2017), the Supreme Court held that it violated the First Amendment to refuse registration for a mark disparaging Asian Americans; the second, Iancu v. Brunetti, 139 S. Ct. 2294 (2019), held that the First Amendment invalidated a bar on immoral or scandalous marks (in that case, "FUCT"). At issue in the third case is a provision that bars any mark that "identif[ies] a particular living individual" without that person’s written consent. In this case, Steve Elster attempted to trademark the phrase "Trump Too Small" for use on T-shirts to convey a political message mocking former President Donald J. Trump’s failed policies and certain diminutive physical features apparently drawn from a comment made by U.S. Senator Marco Rubio (R.-Fla.) during one of the 2016 presidential debates.

The question presented is whether the refusal to register a trademark under Section 1052(c) of Title 15 violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure. Section 1052(c) provides that a trademark shall be refused registration if it consists of a name identifying a living individual without "[their] written consent." When registration is denied, the mark may still be used in commerce, but the owner does not obtain the benefits of registration, such as the foreclosure of certain defenses in infringement actions and the treatment of the mark as prima facie valid. The seller in Vidal v. Elster argues that, by preventing him from registering the mark "Trump Too Small," the Act violates his right to criticize public officials.

An examiner in the USPTO refused registration under Section 1052(c), and USPTO’s Trademark Trial and Appeal Board affirmed. The Federal Circuit, 26 F.4th 1328 (Fed. Cir. 2022), reversed, holding that the refusal to register a mark under 15 U.S.C. § 1052(c) violates the First Amendment when the mark contains criticism of a government official or public figure. The court viewed Section 1052(c) as a restriction on speech, triggering either intermediate or strict scrutiny. It then concluded that Section 1052(c) fails both forms of scrutiny because criticism of public officials lies at the core of the First Amendment, and the government does not have any legitimate interest in protecting public officials from such criticism.

The government argues that the refusal to register a trademark under Section 1052(c) does not violate the First Amendment when the mark contains criticism of a government official or public figure. It contends that Section 1052(c) is a condition on a government benefit rather than a restriction on speech because it places no constraints on respondent’s freedom to use their mark, but rather simply fails to provide certain ancillary benefits. The government argues that conditions on benefits are consistent with the First Amendment as long as they are reasonable and viewpoint-neutral. That standard is satisfied here, the government argues, because Section 1052(c) is admittedly viewpoint-neutral, and it furthers the government’s interest in protecting the privacy and publicity rights that living persons have in their own names.

B. Challenging Trademark Registration Decisions.

The Lanham Act provides certain opportunities to challenge a trademark’s registration. Within a certain time prior to registration, a person may file an opposition petition with the PTO’s Trademark Trial and Appeal Board (TTAB). After registration, a person may petition TTAB for "cancellation" of a trademark on various grounds, including genericness, functionality, and abandonment. During the first five years of registration, a person may also petition for cancellation on grounds that the mark is merely descriptive or conflicts with prior use of a confusingly similar mark. The Trademark Modernization Act of 2020, P.L. 116-260, established two new kinds of proceedings — expungement and reexamination, 15 U.S.C. §§ 1066a and 1066b — to invalidate trademarks that are not (or were not at relevant times) actually used in commerce.

In addition to such administrative proceedings, a defendant sued in court for violating the Lanham Act may argue that the plaintiff’s trademark is invalid, subject to the above-noted restrictions on challenging incontestable trademarks.

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IV. Lanham Act Violations and Remedies.

The Lanham Act provides civil liability for trademark infringement, trademark dilution, cybersquatting, and false advertising. The Act gives U.S. district courts nonexclusive jurisdiction over these lawsuits, meaning that plaintiffs may choose to file such lawsuits either in federal or state court.

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A. Trademark Infringement.

Trademark infringement consists of unauthorized use of a registered (or similar) mark that creates a likelihood of confusion for consumers as to source of origin of goods. Owners of unregistered trademarks may sue under a similar claim called "false designation of origin."

Courts look at many factors to determine if unauthorized use of a mark is likely to confuse consumers. Some of these factors include the degree of similarity between the marks used by the parties, the degree of similarity between the parties’ products, whether the defendant intended to deceive the public, whether survey data reveals actual confusion, and the sophistication of the relevant consumers. Confusion may be less likely, for example, if the defendant uses a recognizably different mark or if the relevant buyers are sophisticated companies. Courts also consider the "strength" of the plaintiff’s trademark, both in terms of its marketplace recognition and on a strongest-to-weakest scale of fanciful, arbitrary, suggestive, and descriptive marks. Stronger trademarks receive a higher level of protection, with courts regarding unauthorized use of stronger marks as being more likely to confuse consumers.

Another confusion-based claim under the Lanham Act is "false endorsement," where a person’s name or identity is used to imply falsely that the person endorses a product.

B. Trademark Dilution.

Dilution consists of conduct that damages "famous" trademarks — i.e., those that are widely recognized by the general public. Dilution occurs when unauthorized use of a famous trademark either "blurs" the mark (weakening the association between the mark and the goods it represents) or "tarnishes" the mark (harming its reputation). For example, unauthorized sale of Starbucks-branded auto parts might blur the association between Starbucks and coffee.

C. Cybersquatting.

In 1999, Congress amended the Lanham Act by passing the Anti-Cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d). The ACPA allows a trademark owner to sue someone who uses an internet domain that is identical or confusingly similar to a trademark — or that dilutes a famous mark — in bad faith.

D. False Advertising.

The Lanham Act provides protection against some kinds of false advertising even if they do not involve trademark infringement. To prove false advertising under the Act, plaintiffs must show they were injured by a false statement that the defendant made about their own or others’ products or services in interstate commerce and that the statement could deceive a substantial portion of the target audience.

E. Remedies and Enhanced Counterfeit Penalties.

The Lanham Act generally authorizes courts to remedy violations via compensatory damages, which aim to redress economic harm sustained by the plaintiff, and injunctions, which aim to prevent further violations and harm.

The Lanham Act provides heightened penalties for counterfeiting, which occurs when a person uses an exact copy of a trademark on similar goods, such as fake watches or handbags. The Lanham Act gives trademark owners their choice of treble or statutory damages for counterfeiting and provides for seizure of counterfeit goods, while other federal laws provide criminal penalties for counterfeiting.

F. Limitations on Lanham Act Liability.

Certain uses of others’ trademarks are "fair uses" for which the user is not liable. Fair uses include, for instance, some advertisements that compare one’s own products with those of a competitor.

Some courts have held that the Lanham Act does not prohibit the use of others’ trademarks in artistic works that are protected by the First Amendment. The U.S. Supreme Court rejected one application of this doctrine in its June 2023 decision Jack Daniel’s v. VIP Products (No. 22-148). VIP sold a dog toy that resembled a Jack Daniel’s whiskey bottle. At trial, Jack Daniel’s won its claims for trademark infringement and dilution against VIP. A federal appeals court overturned the win, holding that VIP was not liable because the toy was a "parody" protected by the First Amendment. The Supreme Court reversed, holding that defendants who use others’ trademarks to identify their own products (e.g., dog toys) are not shielded from liability for trademark infringement.

In another June 2023 decision, Abitron v. Hetronic (No. 21-1043), the Supreme Court held that the Lanham Act’s prohibition on trademark infringement does not apply "extraterritorially," i.e., outside the borders of the United States. Rather, the act applies only to infringing uses within the United States.

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Hat tip to Christopher T. Zirpoli, Legislative Attorney for the Congressional Research Service, for contributing content and sharing quality research. Founded in 1914, the Congressional Research Service is a public policy research institute of the United States Congress. Operating within the Library of Congress, it works primarily and directly for members of Congress and their committees and staff on a confidential, non-partisan basis.