For a long time, there was no federal trademark protection and very little uniformity across states. However, this did not mean that companies were out of luck. The common law still permitted actions for the infringement of company brands. Common law originates from custom or judicial opinion instead of laws. However, even with the modern emergence of federal and state trademark statutes and protections, the common law is still relevant for companies that fail to register their marks. In that case, the party that first uses the mark in commerce will ordinarily prevail.
State registration procedures provide protection for trademarks similarly to the federal process. Typically, they are used when companies only operate within one state and thus do not need federal registration even though the latter comes with additional protections. Like federally registered-trademarks, state-registered trademarks provide notice of the mark’s ownership albeit within a more limited sphere of use than the former. However, state marks are redundant if a company already has a federal mark because constructive notice has already been established so they are often not even acquired.
Beginning in the late 1800s, federal law started to encroach upon the territory of trademarks. Ever since then, the number of laws and protections that it provided far outweighed anything that the states were doing. The most relevant and influential statute that Congress passed with regard to trademarks was the Lanham Act (15 U.S.C. §1051). It was passed in 1946 and amended in 1996. It clearly outlines trademark protections and what constitutes infringement. §42 provides remedies for trademark infringement. §43a (now §1125a1A) provides the standard for confusion that infringement causes. Other relevant sections and statutes are listed at the end of this article. In analyzing whether the Lanham Act applies, courts will apply a three-part test:
Here are some laws regarding specific trademarks issues:
15 U.S.C. §1125: A civil action for false designations of origin, false descriptions, and dilution (the “likelihood of confusion standard”):
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. §1127: Trademark definition:
The term “trademark” includes any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
15 U.S.C. §1127: Service mark definition:
The term “service mark” means any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
15 U.S.C. §1127: Certification mark definition:
The term “certification mark” means any word, name, symbol, or device, or any combination thereof—
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
15 U.S.C. §1127: Collective mark definition:
The term “collective mark” means a trademark or service mark—
(1) used by the members of a cooperative, an association, or other collective group or organization, or
(2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
15 U.S.C. §1127: Definition of “use in commerce”:
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 mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
15 U.S.C. §1127: Definition of “abandoned”:
A mark shall be deemed to be “abandoned” if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
*Mark refers to trademark, service mark, certification mark, and collective mark.
Relevant sources:
Statutes: U.S. Code: 15 U.S.C. §§ 1051 - 1127
Regulations: Title 37 C.F.R., Chapter 1 (Patent and Trademark Office)
© 2016 John V. Robinson, P.C.
