A trademark is an identifier-a "word, name, symbol, device," or some combination thereof-that informs consumers of the source of particular goods, distinguishing one merchant's goods from those manufactured or sold by another. 15 U.S.C. Section 1127. It may be associated with a standard of quality, and it symbolizes the goodwill built up in a product. The public relies on trademarks to more efficiently evaluate options in a market that would otherwise be riddled with uncertainty.

A problem arises, however, when an "infringer" creates or uses a trademark that is identical or confusingly similar to another's legally established mark. This is known as "palming off" or "passing off," and historically the courts were concerned because such infringement was considered a morally reprehensible act – the focus was accordingly on the improper intent of the defendant. 4 McCarthy on Trademarks and Unfair Competition Section 25:1 (4th ed.). Today, given the enormous breadth of the marketplace, bad faith is often absent when someone concocts a near-copycat identifier to help market her goods. In keeping with this growth of the marketplace, the law has evolved and now focuses on the effect on the public. Today, the concern with the use of an infringing mark is that the public in the relevant market may be misled or deceived as to the origin of a good, and the value of the goodwill built up in the mark may be diminished. If use of a similar identifier is thus likely to confuse or deceive the public, then a trademark owner may have a claim for "infringement." 15 U.S.C. Sections 1114, 1125(a).

This article introduces the basic elements of a federal cause of action for infringement of registered and unregistered trademarks – though the principles apply equally to a claim for infringement of a service mark. See American Int'l Group, Inc. v. American Int'l Bank, 926 F.2d 829, 830 n. 1 (9th Cir.1991). (A service mark serves the same function as a trademark, but for services rather than goods, and it is entitled to the same protection as is a trademark.) A related federal claim for trademark "dilution" may also be available if use of a nearly identical mark is likely to lessen or "dilute" the goodwill value built up in a famous mark. [Author's Note: Dilution will be discussed in a future article.]

Elements of a Federal Infringement Claim The U.S. Congress has crafted a series of rules to protect trademarks from counterfeiting, infringement and dilution. These are embodied in the Lanham Act, codified at 15 U.S.C. Sections 1051, et seq. The Lanham Act was written to unify pre-existing federal law – both legislative and court-made – on trademarks to eliminate conflicts and to make ferreting out and stopping infringement fast and effective.

The federal civil cause of action for trademark infringement is provided for in Sections 32 and 43(a) of the Lanham Act. 15 U.S.C. Sections 1114 and 1125(a)(2002). Section 32 lays out the requirements and remedies for a claim of infringement of a registered mark. Section 43(a), technically, lays out a claim for "unfair competition." It has been read, however, to permit a like infringement claim by the owner of an unregistered, but substantively valid, mark. Two Pesos v. Taco Cabana, 505 U.S. 763, 768, 112 S. Ct. 275, 120 L. Ed. 2d 615, (1992) (Section 43(a) "'prohibits a broader range of practices than does Section 32', which applies to registered marks…but it is common ground that Section 43(a) protects qualifying unregistered trademarks….") (citation omitted).

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