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CHAPTER FIVE
Subject Matter: Requirements for
Trademark Protection
Use as a Mark in Commerce
For each intellectual property right that we look at in this course, the first, crucial,
question is: what subject matter does it cover? Look back at the “subject matter” row in
the chart in the last chapter. Notice how differently the subject matter of each right is
defined, how each subject matter design tells you something about the goals that property
regime was supposed to serve. Trademark subject matter is defined, in part, by the way
the producer uses it and the consumer perceives it as a symbol. Copyrightable subject
matter is defined, in part, in terms of qualities of the content produced – original
expression, fixed in a tangible medium. Patentable subject matter is defined, in part, in
terms of the relationship of the innovation to the field of technology as understood by its
practitioners at the time.
How does trademark law define its subject matter? The easiest way to state the
foundational requirements for both registered and unregistered trademarks is to say that
we require “use as a mark in commerce.” But this simple phrase conceals some
complexities. What do we mean by use in commerce? What do we mean by use as a
mark? It turns out that the latter phrase contains two requirements. The first focuses on
the actions of the producer. The source company must actually be using the putative mark
as a mark, something connected (physically where possible, but also cognitively) to a
particular good or service. The key here is that the source company must be using the
mark as a mark, as a source identifier, rather than just as a slogan, mission statement or
favorite turn of phrase. The second focuses on the interaction between the consumer and
the mark. It is the requirement of distinctiveness. Even if the producer is clearly trying
to use the mark as a mark, is it capable of functioning as a mark? Can it distinguish this
source for goods or services from others in the minds of consumers? Is it a source
identifier or really a functional characteristic of the product? We will deal with these
requirements in turn.
Use in Commerce
As always, it is good to start with some of the statutory definitions. Develop the
habit of going to the definitions section of an intellectual property statute first when you
seek to understand the field, not just after you think you see an ambiguity. You will not
regret it.
§ 1127—Construction and definitions
In the construction of this chapter, unless the contrary is plainly apparent
from the context: . . .
. . . The word “commerce” means all commerce which may lawfully be
regulated by Congress. . . .
. . . The term “use in commerce” means the bona fide use of a mark in
the ordinary course of trade, and not made merely to reserve a right in a