Basics of the Lanham Act part 1

Glenn W. Peterson

The Lanham Act, otherwise known as the Trademark Act of 1946, was created to provide a national system under which businesses could register their trademarks and find protection against their improper use. At Millstone Peterson & Watts, LLP, our staff recommends that every business with trademark interests learn the basics of this federal law in order to better understand how it can affect their rights.

The Lanham Act as provided by the U.S. Patent and Trademark Office describes a trademark as a distinctive symbol, phrase or word that is used to help businesses keep their products separate from other companies’ products. This in turn helps consumers identify and use the brands that they enjoy. For example, the golden arches can easily be identified as the trademark for a fast food chain. The Lanham Act is the law that ensures that competing businesses do not try to use the marks that other companies have firmly established as their own, and thus encroach on their ability to sell their products.

Trademarks do not have to be registered to be eligible for protection under this law. Additionally, just because one business registers a mark after another does not mean that they are infringing on the original registering business’ trademark. Instead, rights to a trademark can be gained by either being the first to use the mark in a market, or by being the first to register it with the U.S. PTO.

Rights to a mark are not always guaranteed. If a business abandons the mark, or fails to use it in promotion of their products for a period of three years, that business’ rights to the trademark may be challenged. This prevents businesses from generating and warehousing potentially profitable marks for the future. Genericity of a mark may also cause the loss of these valuable rights. This occurs when a distinctive mark becomes generic over time and can no longer be associated with one product but may represent many products in the minds of the general public. Aspirin and thermos are just two examples of previous trademarks that have lost their protection due to genericity.

The Lanham Act provides additional protections and guidelines regarding trademark protection and litigation, which we will discuss in a future post. To learn more about this subject, please see our web page.