Memo: Introduction to Trademarks | jdickins | July 23, 2012


Memo: Introduction to Trademarks

Trademark law is generally considered the third main body of law constituting the field of “Intellectual Property” (in conjunction with patent and copyright law ) – or the fourth, for those who include the law of trade secrets within IP. Though we will be spending considerably less time on trademark law than on patents and copyrights, that should not be taken as an indication that it is in any sense less “important” than those other fields (or less significant as a field of legal practice); indeed, these days it seems that trademark law is, if anything, becoming a more and more important part of many IP practices, as many companies come to realize the value inherent in their various trademarks. We spend less time on trademark law for several reasons: First, because it is considerably less “property-like” than patent or copyright law, and fits much less comfortably within the “property” framework with which we’ve been working all semester. The rights secured by the Patent Act and the Copyright Act are exclusive rights, as set forth in the statutes – the exclusive right of the copyright- or patent-holder, enforceable against the world, to (a) reproduce, distribute, publicly perform/display, etc. the work in the case of the copyright-holder (§106 of the Copyright Act) and (b) the exclusive right to make, use, sell, offer to sell, or import the invention in the case of the patent-holder (§§154(a) and 271(a) of the Patent Act). Trademark law, however, developed (like trade secret law) as an outgrowth of the law of torts and unfair competition, and still retains many features derivable from those doctrines. The trademark owner doesn’t really obtain exclusive rights to the trademark in the sense of patent and copyright law, i.e. rights enforceable against the world to do certain things (and to prevent others from doing certain things) with the trademark; rather, he/she obtains the right to stop third parties from making certain uses of the trademark that, in certain circumstances, the law deems to be “wrongful.” Second, trademark law differs fundamentally from patent and copyright law in the manner in which it integrates State law into federal law. Patents and copyrights are exclusively federal domains. State copyright law and State patent law are pre-empted by the federal statute; Pennsylvania, in other words, does not have and cannot have its own patent or copyright law. Federal trademark law – embodied in the Lanham Act, 15 U.S.C. §§1051 et seq. – does not pre-empt State statutory or common law in the area; Pennsylvania (and each of the 50 States) does, indeed, have its own trademark law.1 This makes trademark law uniquely challenging, as federal and state claims are often intermingled with one another in any one case arising out of a single set of operative facts. Third, the Lanham Act is a particularly difficult and confusing statute – both because of its complicated relationship with State law and for other reasons as well. Much of the statute deals with federal registration of trademarks; the Lanham Act’s very first sentence is: “The owner of a trademark used in commerce may request registration of its trademark . . .” §1051(a)(1). Subchapter 1 (registration on the “Principal Register” of trademarks), Subchapter 2 (registration on the “Supplemental Register” of trademarks), and much of Subchapter 3 are all devoted to this subject, i.e., the registration of a trademark. The language of §1051(a)(1) quoted above implies that you must own a trademark before it can be registered. The Lanham Act, however, does not state how one gets to own a trademark – it leaves that (important) question entirely to State and common law. If you must own a trademark before registering it, that implies that you can own an unregistered trademark – indeed, there must of necessity be a period (prior to registration) when you do own an unregistered mark. The Lanham Act thus contemplates the existence of both registered and unregistered marks, and it offers protection to both (in addition to whatever protection may be available under State law). The main causes of action in the Lanham Act are set forth in §1114 and §1125(a). Sec. 1114 deals with infringement of registered marks:
(1) Any person who shall, without the consent of the registrant— (a) uses in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided.
(Emphases added) As the italicized language above makes clear, using a registered trademark in a way that is “likely to cause confusion, to cause mistake, or to deceive” is a violation of the statute, and can be remedied by an action brought by the registrant. Sec. 1125(a) states the infringement cause of action for unregistered trademarks:
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 . . . 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.
Under §1125(a), therefore, using any “word, term, name, symbol or device” in a way that is “likely to cause confusion, or to cause mistake, or to deceive” is a violation of the statute. The coverage is parallel to §1114, but broader – it doesn’t require a plaintiff to show use of a registered mark, but covers use of any “word, term, name, symbol or device.” Because the term “trademark” itself is defined, in §1127, to include “any word, name, symbol, or device,” §1125(a) covers any trademark – registered or unregistered – while §1114 only covers marks that have been registered. Finally, while patent and copyright law contain a single cause of action – for “infringement” of the patent or copyright, the Lanham Act (and many State trademark statutes) provide for a cause of action for “infringement” of the trademark and for “dilution” of the trademark. These are different kinds of claims, and each has its own elements, modes of proof, defenses, etc. We will probably not have much occasion to discuss the dilution cause of action in this class – so all I expect you to know about it is that it exists, and that you know nothing about it.2 1 This is, ultimately, derived from the different Constitutional underpinnings of patent and copyright law, on the one hand, and trademark law on the other. Congress is expressly authorized, in Article I, sec. 8, clause 8, to enact laws regarding “exclusive rights” for “Authors and Inventors” – copyright and patent, respectively. By analogy to the “dormant commerce clause” doctrine – where the grant to Congress to “regulate interstate commerce” has been held to divest the States of the power they would otherwise have to regulate interstate commerce – the grant to Congress in Art. I §8 cl. 8 similarly divests the States of their power to enact patent and copyright law. (In addition, the Copyright Act, in §301, contains an explicit provision pre-empting State law). Congress’ power to enact federal trademark law, however, is derived from the general power to regulate interstate commerce; as a consequence, the States retain the power to regulate intra-state use of trademarks. 2 If you are interested, the cause of action for trademark dilution is set forth in §1125(c), which reads, in pertinent part: (1) The owner of a famous mark shall be entitled . . . to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark. The italicized terms indicate the elements of the dilution claim: that the mark is famous, that the defendant is making commercial use of it, that the defendant’s use began after the mark had become famous, and that the use “causes dilution of the distinctive quality of the mark.” Dilution is defined (in §1127) as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of -- (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” (Emphasis added). Sec. 1125(c) sets forth a number of factors that courts “may consider” in determining whether a mark is distinctive and famous, including the mark’s distinctiveness, the duration and extent of the use of the mark, the amount of advertising and publicity of the mark. Dilution only provides for a remedy by injunction – no damages are awarded for dilution (“unless the person against whom the injunction is sought willfully intended to trade on the owner's reputation or to cause dilution of the famous mark”).

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June 14, 2013

Professor David Post


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