Trademark
A word, name, symbol, or device used to identify and distinguish goods of one source from those of others. Protected under the federal Lanham Act and the Texas Trademark Act, plus common-law rights from actual use. Strength turns on distinctiveness; protection scope on likelihood of confusion.
A trademark is a word, name, symbol, device, or any combination used by a person to identify and distinguish that person's goods from goods sold by others, and to indicate the source of the goods. Trademark protection arises from actual use of the mark in commerce; federal registration with the USPTO provides nationwide constructive notice, presumptive validity, and procedural advantages but is not the source of trademark rights. Texas common-law trademark rights exist independent of registration.
The distinctiveness spectrum
Trademark strength is a function of distinctiveness, ranked along the Abercrombie spectrum (Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976)): (1) fanciful (coined terms, "Kodak," "Exxon") and arbitrary ("Apple" for computers) marks are inherently distinctive and protected immediately; (2) suggestive marks (suggesting a quality without describing it, "Coppertone") are inherently distinctive; (3) descriptive marks (describing the goods, "Cold and Creamy" for ice cream) are protectable only on proof of acquired distinctiveness (secondary meaning); (4) generic terms (the common name for the product itself) are never protectable.
Likelihood of confusion
Trademark infringement turns on likelihood of consumer confusion as to source, sponsorship, or affiliation. The Fifth Circuit weighs a nonexhaustive list of "digits of confusion": (1) strength of the mark; (2) similarity of the marks; (3) similarity of products or services; (4) identity of retail outlets and purchasers; (5) identity of advertising media; (6) defendant's intent; (7) evidence of actual confusion; (8) degree of care exercised by purchasers, none individually dispositive. Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), restates these digits and notes that a finding of likely confusion need not be supported by a majority of them.
Dilution of famous marks
Dilution protects famous marks against unauthorized uses that blur or tarnish the mark's distinctiveness, even absent likelihood of confusion. Federal dilution claims arise under 15 U.S.C. § 1125(c); Texas claims under Tex. Bus. & Com. Code § 16.103. Both statutes require fame. Federal law requires wide recognition by the general consuming public of the United States, a high bar that most marks do not meet. Texas requires wide recognition by the public throughout the state or in a geographic area in the state, so a mark known regionally within Texas may qualify.
Recent Supreme Court developments
In Vidal v. Elster (2024), the Court unanimously upheld the Lanham Act's "names clause" (15 U.S.C. § 1052(c)) prohibiting registration of marks containing the name of a living person without consent, against a First Amendment challenge. In Jack Daniel's v. VIP Products (2023), the Court limited the Rogers v. Grimaldi threshold test that some lower courts applied to expressive works. When a defendant uses a mark as a source-identifier for its own goods, the ordinary likelihood-of-confusion analysis applies, not the Rogers heightened test.
Steps commonly taken with a new mark include a clearance search before adoption, a federal use-based or intent-to-use application, continued use, and monitoring for conflicting marks. Federal registrations must be maintained: the owner files a declaration of continued use between the fifth and sixth years after registration and a declaration with a renewal application in the year before each 10-year anniversary, with a six-month grace period (15 U.S.C. §§ 1058, 1059). A registration is open to cancellation at any time if the mark becomes the generic name for the goods or services (15 U.S.C. § 1064(3)). Lax policing can contribute, but the question is how the relevant public understands the term.
Practice guide: How to Trademark a Business Name