The Lanham Act: Trademark Registration, Infringement, and Remedies

The Lanham Act is the federal statute that governs trademarks in the United States. Enacted in 1946 and codified at 15 U.S.C. § 1051 and following, it creates a national system for registering marks used in interstate commerce, sets the rules for challenging and defending those registrations, and gives businesses a federal cause of action against infringement, dilution, and false advertising. It also protects consumers from being misled about where a product actually comes from.

What the Act Protects

The statute covers several kinds of source identifiers. A trademark is any word, name, symbol, or device that identifies and distinguishes one company’s goods from another’s. A service mark does the same job for services. In everyday use the word “trademark” covers both, but the distinction matters when you file.¹

Two narrower categories fill out the picture. A collective mark is used by members of a group, such as a cooperative or union, to show membership or common origin. A certification mark is owned by one party but used by others to certify that goods meet defined standards for quality, origin, or method of manufacture. The “UL” label on electronics is a familiar example.²

The Act also protects trade dress, meaning the overall visual impression of a product or its packaging when that look tells consumers who made it. The shape of a Coca-Cola bottle and the layout of an Apple Store are classic examples. Trade dress qualifies only when it is non-functional; a design feature that exists for a practical reason cannot be locked up as branding. Most trade dress claims proceed under 15 U.S.C. § 1125(a) without formal registration, and the party claiming protection carries the burden of proving non-functionality.³

Which Marks Qualify for Protection

Not every word or symbol can be registered. The USPTO and the federal courts evaluate marks on a sliding scale of distinctiveness, and where a mark falls decides both eligibility and strength.

Fanciful marks are invented words with no meaning outside the brand, such as “Exxon” or “Pepsi.” These receive the strongest protection.
Arbitrary marks are real words used in an unrelated context. “Apple” for computers has nothing to do with fruit, which is what makes it strong.
Suggestive marks hint at a quality without directly describing it. “Coppertone” suggests sun-tanning without spelling it out.
Descriptive marks simply describe the product or a feature of it. Something like “Creamy” for yogurt cannot be registered on its own unless the owner proves the public has come to associate the term with a specific source, known as acquired distinctiveness or secondary meaning.
Generic terms are the common name for a product category. “Bicycle” for bicycles can never function as a trademark and is permanently ineligible for registration.⁴

A mark can slide down this scale over time. When consumers start using a brand name for an entire product category, as happened with “aspirin” and “escalator,” the mark becomes generic and loses protection. The statutory test asks whether the primary significance of the term to the relevant public is the product category or a particular brand.⁵

What the USPTO Will Refuse

Even a distinctive mark can be refused under 15 U.S.C. § 1052. Common grounds include a likelihood of confusion with an existing registration; the flag, coat of arms, or other insignia of the United States, any state, or a foreign nation; the name, portrait, or signature of a living person without written consent (the rule also covers deceased U.S. presidents during the lifetime of a surviving spouse); deceptive matter or false suggestions of a connection with a person or institution; and marks that are merely descriptive or primarily geographic, unless the applicant shows acquired distinctiveness.¹

Registering a Trademark Federally

Applications are filed with the USPTO. You need your legal name and address, a clear drawing of the mark, and an identification of the goods or services under the International Classification system, which sorts commerce into 45 classes.

You also pick a filing basis. If you are already using the mark in commerce, you file under Section 1(a) and submit a specimen that shows real use: a product label, packaging, or a webpage where the goods can actually be purchased. For services, acceptable specimens include advertising, brochures, or business signage tying the mark to the services offered. Mockups and printer’s proofs do not qualify.⁶ If you have a genuine intention to use the mark but haven’t started yet, you file under Section 1(b) as an intent-to-use application. The USPTO will examine it and, if approved, issue a Notice of Allowance, but registration doesn’t issue until you file a Statement of Use.⁷

Since January 2025, applications are filed through the USPTO’s Trademark Center, which replaced the older Trademark Electronic Application System.⁸ The base electronic filing fee is $350 per class. Using the free-form text box to describe your goods, instead of picking pre-approved descriptions from the Trademark ID Manual, adds $200 per class. Paper filings cost $850 per class.⁹ As of early 2026, average time from filing to either registration or abandonment runs about 10 months.¹⁰

Opposition and Cancellation

When an examining attorney approves an application, the mark gets published in the USPTO’s Official Gazette. Anyone who believes the registration would harm them has 30 days to file an opposition. An initial 30-day extension is available on written request, and further extensions may be granted for good cause, but each request has to be filed before the current deadline expires.¹¹ Oppositions are heard by the Trademark Trial and Appeal Board, an administrative tribunal inside the USPTO. If no one opposes, the application moves on to registration or, for intent-to-use filings, to the Notice of Allowance stage.

Registered marks can still be attacked. A cancellation petition filed with the TTAB within the first five years can raise nearly any ground that would have blocked registration originally. After five years the available grounds narrow, but some challenges remain open at any time: that the mark has become generic, has been abandoned, was obtained by fraud, or is being used to misrepresent the source of the goods.⁵

Keeping a Registration Alive

Federal registration is not permanent by default. Miss a maintenance deadline and the USPTO will cancel the mark.

The first required filing falls between the fifth and sixth years after registration: a Section 8 Declaration of Continued Use, confirming the mark is still in commercial use. A six-month grace period is available with a surcharge.¹² After that, renewal runs on a 10-year cycle through a combined Section 8 declaration and Section 9 renewal application. The window opens one year before each 10-year anniversary, and a six-month grace period (again with a surcharge) follows. Miss either filing and the registration dies.¹³

Incontestable Status

After five consecutive years of continuous commercial use following registration, an owner can file a Section 15 declaration to make the mark incontestable. That status sharply narrows how a competitor can challenge the registration; arguments that the mark is merely descriptive or lacks distinctiveness are no longer available. To qualify, there must be no pending or final adverse decision affecting ownership, and the mark cannot be generic for the goods or services.¹⁴

Infringement and Likelihood of Confusion

Infringement under the Lanham Act happens when someone uses a mark in commerce without the registrant’s consent in a way that is likely to confuse consumers about the source of the goods or services. The question is not whether confusion actually happened; it’s whether confusion is probable.¹⁵

Every federal circuit uses a multi-factor test to evaluate likelihood of confusion. The names and counts differ (the Ninth Circuit’s Sleekcraft test and the Second Circuit’s Polaroid test both use eight factors), but the substance overlaps. Most courts look at:

How similar the marks are in appearance, sound, and meaning.
How related the goods or services are.
The strength of the senior mark; fanciful and well-known marks get a wider zone of protection.
Evidence of actual confusion, such as survey data or documented mix-ups.
The defendant’s intent, particularly whether the mark was chosen to trade on the plaintiff’s reputation.
Consumer sophistication; buyers of expensive or specialized products tend to pay closer attention.
Overlap in marketing channels, including stores, websites, and distribution networks.
Likelihood that the senior user will expand into the defendant’s market.

No single factor decides the case. Courts weigh them against the facts, and heavy similarity between the marks can still lose if the products and buyers are far enough apart.

Dilution of Famous Marks

Dilution is a separate theory, available only to owners of famous marks, meaning marks widely recognized by the general consuming public as identifying a particular source. Unlike infringement, dilution does not require any likelihood of confusion.¹⁶

The statute recognizes two forms. Dilution by blurring occurs when use of a similar mark weakens the famous mark’s ability to identify a single source; a hypothetical “Tiffany Auto Parts” wouldn’t confuse anyone about who makes cars, but the association erodes the distinctiveness of the Tiffany name. Courts consider six factors, including the degree of similarity, the distinctiveness and recognition of the famous mark, whether the defendant intended to create an association, and evidence of actual association. Dilution by tarnishment occurs when a similar mark is used in a way that damages the famous mark’s reputation, typically by linking it to inferior products or unsavory contexts.¹⁶ The primary remedy is injunctive relief. If the dilution was willful, damages and profits are also available.

False Advertising and Unfair Competition

Section 43(a), codified at 15 U.S.C. § 1125(a), reaches beyond registered trademarks. It creates civil liability for false designations of origin and misleading representations of fact made in commerce. That’s how owners of unregistered marks sue over confusingly similar branding, and it’s also the federal foundation for false advertising claims.¹⁷

A false advertising claim requires a false or misleading statement about the defendant’s own products or a competitor’s, made in commercial advertising, that actually deceived or tended to deceive a substantial portion of the intended audience, and that was material enough to influence purchasing decisions. A literally true statement can still qualify if it creates a misleading impression. Standing to bring a Section 43(a) claim requires that the plaintiff’s injury fall within the zone of interests the Act protects (commercial interests in reputation and sales) and flow directly from the challenged deception, under the Supreme Court’s decision in Lexmark International, Inc. v. Static Control Components, Inc.

Remedies

When a plaintiff wins, 15 U.S.C. § 1117 provides several forms of recovery. Injunctions ordering the infringer to stop are routine. On the financial side, a plaintiff can recover the defendant’s profits from the infringement, actual damages, and the costs of the suit.¹⁸ The court may enhance damages up to three times the amount actually found. In exceptional cases, typically involving willful infringement or bad-faith litigation, the court may also award reasonable attorney fees to the prevailing party.

Statutory Damages for Counterfeiting

Counterfeiting has its own damages framework, because counterfeiters often keep records too poor to support proof of actual damages. A plaintiff can elect statutory damages of $1,000 to $200,000 per counterfeit mark per type of goods or services. If the court finds the counterfeiting was willful, the ceiling rises to $2,000,000 per counterfeit mark per type of goods or services. The election has to be made before the trial court enters final judgment.¹⁸

Time Limits for Suing

The Lanham Act sets no statute of limitations of its own. Federal courts borrow the limitations period from the closest state-law claim, usually fraud or unfair competition, which generally runs three to six years depending on the state. Even inside that window, a trademark owner who waits too long can lose the claim to laches, an equitable defense that applies when the delay was unreasonable and the alleged infringer was harmed by it, for example by building a business around the disputed branding during years of silence. If you know about an infringement, sitting on the claim is one of the most expensive choices in trademark law.

1
Office of the Law Revision Counsel. 15 USC 1052 – Trademarks Registrable on Principal Register
2
Office of the Law Revision Counsel. 15 USC 1127 – Construction and Definitions; Intent of Chapter
3
Legal Information Institute. Trade Dress
4
United States Patent and Trademark Office. Strong Trademarks
5
Office of the Law Revision Counsel. 15 USC 1064 – Cancellation of Registration
6
United States Patent and Trademark Office. Specimens
7
United States Patent and Trademark Office. Basis
8
United States Patent and Trademark Office. Trademark Center — A New Way to Apply to Register Your Trademark
9
United States Patent and Trademark Office. USPTO Fee Schedule
10
United States Patent and Trademark Office. Trademark Processing Wait Times
11
Office of the Law Revision Counsel. 15 USC 1063 – Opposition to Registration
12
Office of the Law Revision Counsel. 15 USC 1058 – Duration, Affidavits and Fees
13
Office of the Law Revision Counsel. 15 USC 1059 – Renewal of Registration
14
Office of the Law Revision Counsel. 15 USC 1065 – Incontestability of Right to Use Mark
15
Office of the Law Revision Counsel. 15 USC 1114 – Remedies; Infringement; Innocent Infringement by Printers and Publishers
16
Office of the Law Revision Counsel. 15 USC 1125 – False Designations of Origin, False Descriptions, and Dilution Forbidden
17
Office of the Law Revision Counsel. 15 USC 1125 – False Designations of Origin and False Descriptions Forbidden
18
Office of the Law Revision Counsel. 15 USC 1117 – Recovery for Violation of Rights