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 applies the Roto-Rooter factors, (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. The Fifth Circuit added that no single factor is dispositive in Smack Apparel Co. v. Bd. of Supervisors of La. State Univ., 550 F.3d 465 (5th Cir. 2008).
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 proof of fame, defined as widespread recognition by the general consuming public (federal) or in Texas (state). Famous-mark fame is a high bar, most marks do not 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 test that had immunized parodies and expressive works from infringement claims, 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.
For Texas businesses, the practical trademark sequence is: (1) clearance search before adoption, verifying no senior conflicting marks; (2) federal application as soon as use begins (or intent-to-use application before launch); (3) actual continuous use to maintain the registration; (4) policing the mark, sending cease-and-desist letters to junior infringers; and (5) renewal at the 5-year, 10-year, and subsequent 10-year intervals. Failure to police can result in loss of distinctiveness through "genericide" (Aspirin, Cellophane, Escalator).
Practice guide: How to Trademark a Business Name