The Lanham ACT

THIS CASEBOOK contains a selection of U. S. Court of Appeals decisions that analyze, interpret and apply provisions of the Lanham Act. * * * In order to receive protection under the Lanham Act, a mark must be distinctive - that is, it must uniquely identify a particular brand. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). The PTO organizes marks using categories of ascending distinctiveness: "(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Id. Suggestive, arbitrary, and fanciful marks are inherently distinctive, and thus eligible for registry. See id. By definition, generic and descriptive marks lack the requisite distinctiveness. Id. at 768-69, 112 S.Ct. 2753. A generic mark "refe rs] to the genus of which the particular product is a species." Id. at 768, 112 S.Ct. 2753. In other words, a generic mark "denotes the product rather than any of the brands of the product." Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169, 171 (7th Cir. 1996). A descriptive mark "conveys an 'immediate idea of the ingredients, qualities or characteristics of the goods.'" Frosty Treats, 426 F.3d at 1005 (quoting Stuart Hall Co. v. Ampad Corp., 51 F.3d 780, 785-86 (8th Cir. 1995)). Descriptive marks may only be placed on the Principal Register "if shown to have acquired a secondary meaning." Id. * * *The Lanham Act protects both registered and unregistered trademarks. See Matal v. Tam, ___ U.S. ___, 137 S.Ct. 1744, 1752, 198 L.Ed.2d 366 (2017) (" E]ven if a trademark is not federally registered, it may still be enforceable under 43(a) of the Lanham Act, which creates a federal cause of action for trademark infringement."). In a trademark suit, whether a mark is registered is important because it determines which party bears the burden of persuasion. If the mark is not registered, the mark user bears the burden of showing that the mark is protected by the Lanham Act. Zobmondo Entm't, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010); Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 474 (5th Cir. 2008) ("To prevail on their trademark infringement claim, the plaintiffs ... must establish ownership in a legally protectable] mark, and ... they must show infringement by demonstrating a likelihood of confusion."). But if a mark is listed on the PTO's Principal Register, the party challenging the mark's validity bears the burden of showing the mark is not protected by the Lanham Act. Lovely Skin, 745 F.3d at 883.ZW USA, Inc. v. PWD Systems, LLC, 889 F. 3d 441 (8th Cir. 2018)