Защита товарных знаков в США: история и современное состояние.

A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to an existing trademark. The goal is to allow consumers to easily identify the producers of goods and services and avoid confusion. United States trademark law is mainly governed by the Lanham Act. Common law trademark rights are acquired automatically when a business uses a name or logo in commerce, and are enforceable in state courts. Marks registered with the U. S. Patent and Trademark Office are given a higher degree of protection in federal courts than unregistered marks—both registered and unregistered trademarks are granted some degree of federal protection under the Lanham Act 43(a).

United States law has protected trademarks under state common law since colonial times, but it was not until 1870 that Congress first attempted to establish a federal trademark regime. This 1870 statute was purported to be an exercise of Congress' Copyright Clause powers, however, the Supreme Court struck down the 1870 statute in the Trade Mark Cases. In 1881, Congress passed a new trademark act, this time pursuant to its Commerce Clause powers. Congress revised the Trademark Act in 1905. In the 1917 decision in Aunt Jemima Mills Co. v. Rigney & Co., the federal courts created the "Aunt Jemima Doctrine" which protects a trademark even when used to sell a different product (in this case, pancake syrup instead of pancake mix). In 1946, Congress passed the Lanham Act The Lanham Act defines federal trademark protection and trademark registration rules. The Lanham Act grants the United States Patent and Trademark Office ("USPTO") administrative authority over trademark registration. State law continues to add its own protection, complementing (and complicating) the federal trademark system. Recent developments in U. S. trademark law have included the adoption of the Federal Trademark Dilution Act of 1995 (see Trademark dilution), the 1999 Anticybersquatting Consumer Protection Act, and the Trademark Dilution Revision Act of 2006 (see Trademark dilution).

Where there is no logical relationship between the mark and the goods or services, trademark protection is at its strongest. Arbitrary and fanciful marks are considered inherently distinctive and are prima facie registrable. For example, coined words – such as Kodak, Polaroid, or Starbucks – are considered fanciful and receive strong trademark protection. Arbitrary marks include preexisting words used in an arbitrary way, such as "Apple" when used for computers.

Suggestive trademarks are still broadly protected. These marks "suggest" something about the product or services they are used on. The suggestion is a subtle connotation, not an outright description of the product. An example is "Whirlpool" for washing machines.

Descriptive terms immediately describe the goods, or some important characteristic of the goods. Trademark law does not protect descriptive terms unless they achieve "secondary meaning" in the minds of consumers. That is, trademark rights accrue when the public comes to associate the descriptive term with a particular company rather than the product in general.

The generic term for a product or service cannot be trademarked. Granting trademark rights on a generic term say "apple" for use on apple juice puts other companies at an unfair competitive disadvantage. Every company has the right to describe its products and services using generic terms.

Once acquired, trademark rights may be registered with the USPTO. "The Lanham Act gives a seller or producer the exclusive right to "register" a trademark, 15 U. S. C. § 1052, and to prevent his or her competitors from using that trademark, § 1114(1)."

Trademarks may be registered online. The USPTO charges a $275 fee for online trademark applications. The process takes about 6 months from initial application to final registration. It is a general practice to hire a trademark lawyer to file the application on behalf of the future owner. Once the application is filed, it sits in a queue for a few months. Eventually, a USPTO Trademark Examiner will examine the application according to the rules of the Trademark Manual of Examining Procedure. If the Trademark Examiner identifies problems with the applications, the applicant will be sent a "preliminary rejection." The applicant will then have 6 months to file a reply with arguments in favor of their trademark application. If the Trademark Examiner is persuaded by the reply arguments, the application will be granted registration. If not, a "final rejection" will be issued. When an application is allowed, it moves on to "publication" in the Trademark Official Gazette. Once published, there is a 30 day opportunity for other companies to appeal the registration. If no appeal is filed, the registration is finally issued. If the registration receives a final rejection from the Trademark Examiner, the applicant may appeal the rejection to the Trademark Trial and Appeal Board. Likewise, if the application is opposed by a third party, the appeal will be reviewed by the Trademark Trial and Appeal Board.

An application for registration may be based upon "actual use" in commerce (a §1(a) registration) or upon a bona fide intent to use ("ITU") the mark in commerce (§1(b) registration). An ITU application is a placeholder. It will not be allowed to register until the applicant actually begins using the mark in interstate commerce. The value of ITU is in establishing priority—that is, determining which business first acquired the trademark rights.

The benefits of federal trademark registration only accrue to marks listed on the "Principal Register". To be eligible for the Principal Register, a mark must be recognized as a trademark, and not just a description of some goods or services. Eligible marks include (a) arbitrary or fanciful marks, (b) "suggestive" marks, and (c) descriptive marks that have achieved "secondary meaning" or "distinctiveness." The Supplemental Register is for "descriptive" marks that have not yet become distinctive. Descriptive marks describe some quality of the goods or services they are used with. Descriptive marks may become distinctive (acquire "secondary meaning") through 5 years of use in commerce, or through evidence of heavy advertising and market recognition. <blockquote>Secondary meaning is acquired when in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself. The likelihood of confusion test turns on several factors, and nominative fair use, in which the trademark is being used to actually refer to the trademarked product or trademark owner. These uses are still subject to the requirement that there be no consumer confusion as to source or sponsorship. Trademarks may also be lawfully used in parodies, since in that case there is usually no likelihood of confusion.

Trademark rights operate under a "use it or lose it" rule. In other words, the trademark owner must continuously use the mark in commerce or risk a finding of abandonment through nonuse (usually after three years of nonuse).

In contrast to copyright or patent law, trademark protection does not have a set duration or definite expiration date. Trademark rights only expire when the owner stops using the mark in commerce. However, federal trademark registrations expire ten years after the registration date, unless renewed within one year prior to the expiration. The U. S. Constitution specifically grants Congress power over copyright and patent law, but not over trademark law. Instead, Congress' power to create federal trademark law is derived from the Commerce Clause. Therefore, there must be some degree of interstate commerce present for a trademark to receive Lanham Act protection. The U. S. Supreme Court invalidated the first federal trademark law by finding that Congress could not stretch the Copyright Clause to cover trademarks. Unlike copyright law which provides for criminal penalties as well as civil damages, trademark law in the United States is almost entirely enforced through private lawsuits. The exception is in the case of criminal counterfeiting of goods. Otherwise, the responsibility is entirely on the mark owner to file suit in either state or federal civil court in order to restrict an infringing use. Failure to "police" a mark by stopping infringing uses can result in the loss of protection.