Kara Sears
Trademark law in the United States is regulated concurrently by federal and state law. The Lanham Act, which governs trademarks, does not preempt state law, and many states have their own trademark and unfair competition laws. This means that federal and state trademark laws can coexist and cooperate without conflict. However, in certain cases, state law may be preempted by the Supremacy Clause if it permits confusing or deceptive trademarks to operate, infringing on the exclusive rights of federal trademark holders. This distinction sets trademark law apart from patent and copyright law, where federal statutes broadly preempt state law.
| Characteristics | Values |
|---|---|
| Federal and state trademark laws | Regulate concurrently |
| The Lanham Act | Does not preempt state law |
| States | Have statutorily and/or judicially developed trademark or unfair competition laws of their own |
| Patent Act | Entirely preempts state law with respect to non-secret inventions |
| 1976 Copyright Act | Preempts state copyright law with respect to all works fixed in a tangible medium of expression |
| Common law ownership rights to a mark | Acquired simply by using the mark in commerce in connection with the relevant goods or services |
| Trademark registration in Texas | Requires the mark to be "in use" in Texas before the date of the application |
| Service mark "in use" | Displayed in Texas in connection with selling or advertising the services, and the services are performed in Texas |
| Kiva Brands argument | There were "prior use" defenses available under the Lanham Act |
| Court's ruling | Presents "great, possibly insurmountable, problems for the marijuana industry" |
| United States Patent and Trademark Office | Refuses to register trademarks for most cannabis-based products on the ground that use of those products is federally unlawful |
| Unregistered marks | Protected by common law and unfair competition laws |
| Unregistered trademarks | Can be protected from dilution |
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What You'll Learn
The Lanham Act and state law
The Lanham Act, also known as the Trademark Act, is a federal statute that governs trademarks and service marks. It provides a framework for registering and protecting trademarks, and it allows for civil litigation in cases of trademark infringement and unfair competition. The Act recognises the role of state law, with Section 1065 expressly stating that a party can petition to cancel a mark if its use "infringes a valid right acquired under the law of any State". This indicates that the Lanham Act does not intend to entirely supersede state law.
However, there are instances where the Lanham Act can preempt state law. In the case of Kiva Health Brands, Inc. v. Kiva Brands, Inc., the Northern District of California held that the Lanham Act preempted state law when a confusing trademark was in operation, infringing on the federal trademark holder's guarantee of exclusive use. This ruling acknowledged the potential challenges for certain industries, such as the marijuana industry, where state laws may permit trademarks that conflict with federal trademark rights.
The coexistence of federal and state trademark laws can offer a comprehensive framework for trademark protection. While the Lanham Act provides a nationwide standard and protection for trademarks, state laws can fill in the gaps and offer additional protections. This allows businesses to protect their trademarks at both the state and federal levels, ensuring comprehensive coverage.
In conclusion, the Lanham Act and state law coexist in the realm of trademark regulation. While the Lanham Act sets the foundation for trademark rights and protection, state laws play a crucial role in supplementing and expanding upon those rights. This concurrent regulation allows for a flexible and adaptable approach to trademark law, ensuring that businesses can effectively protect their trademarks at both the state and federal levels.
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State law's historical role
The historical role of state laws in trademark protection is significant, with many states having their own trademark or unfair competition laws. This concurrent regulation by federal and state laws is well-accepted, distinguishing trademark law from patent and copyright law, where federal statutes broadly preempt state law. The historical primacy of state law in trademarks has been supplemented but not entirely replaced by federal law.
The evolution of trademark law can be divided into three periods. In the pre-Erie era, trademark and unfair competition claims were considered distinct but related legal rights, both determined by common law. The second period, after the Erie decision, witnessed the passage of the Lanham Act, which created a framework for interpreting infringement claims for unregistered trademarks. The modern era has seen the Supreme Court and Congress cement this interpretation, allowing most trademark and unfair competition claims to be brought under the Lanham Act.
State trademark laws have played a crucial role in broadening the scope of rights beyond federal statutes. This concurrent regulation has been a well-accepted feature of trademark law, allowing state and federal trademark laws to coexist and cooperate without conflict. However, it is important to note that in cases where state law permits confusing or deceptive trademarks, the Supremacy Clause may preempt state law to protect federal trademark rights.
State laws have also been essential in protecting unregistered trademarks. Unregistered marks are protected by state common law or statutes associated with unfair competition, providing legal rights within the geographic areas where the trademark operates. This protection is especially relevant for small businesses, as it allows them to establish trademark rights and protect their intellectual property, even without formal registration.
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Trademarks and unfair competition
Trademarks are a form of intellectual property that indicates the source of goods or services. In the United States, trademarks are regulated by both federal and state laws, with the Lanham Act serving as the primary federal legislation governing trademarks. While the Lanham Act does not preempt state trademark laws, certain situations may trigger preemption under the Supremacy Clause.
Trademark law and unfair competition law are closely related, and both areas of law are governed by state and federal statutes. Unfair competition laws aim to prevent businesses from trading on the goodwill of another's trademark to sell competing goods or services. This is particularly relevant for unregistered trademarks, which may be protected by common law and unfair competition laws.
Unregistered trademarks can be protected at the state level, and most states have adopted either the Uniform Deceptive Trade Practices Act or the Model Trademark Bill. However, the protection of unregistered trademarks is generally limited to the geographic areas where the trademark owner operates. Registering a trademark provides several advantages, including the ability to bring lawsuits against infringers in federal court and enhanced protection across different territories.
In the context of trademark law, preemption can occur when state law permits confusing or deceptive trademarks that infringe upon federally protected trademark rights. For example, in the case of Kiva Health Brands, Inc. v. Kiva Brands, Inc., the court held that the Lanham Act preempted state law because allowing Kiva Brands to use the KIVA mark would encroach on Kiva Health's federal trademark rights.
While the Lanham Act does not broadly preempt state trademark laws, it is important to note that federal and state trademark and unfair competition laws can coexist and cooperate without conflict. However, in cases where state law affords greater protection to a trademark owner than the Lanham Act, state law may prevail.
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Common law ownership rights
The Lanham Act does not preempt state law, and many states have their own trademark or unfair competition laws. Trademark rights in the United States arise from the actual use of a mark in commerce. Common law ownership rights to a mark are acquired simply by using the mark in commerce in connection with the relevant goods or services. There is no requirement to register a mark to acquire common law rights to it. However, registering a mark with the Texas Secretary of State provides certain benefits, such as putting the rest of Texas on notice that you claim ownership of the mark.
Common law trademark rights are automatic protections that arise from using a trademark in commerce. These rights are limited to the geographic area in which the mark is used. For example, if a product is sold under a brand name only in California, the trademark rights to that name exist only in California. Common law trademark rights can be strengthened by registering trademarks with the U.S. Patent and Trademark Office (USPTO). The difference between a common law trademark and a federally registered trademark lies in the amount and geographic reach of protection.
A common law trademark can be established solely through use in commerce in a specific geographical area. Business names, logos, and phrases that are regularly used can be considered common law trademarks, even if they have never been federally registered. The rights associated with common law trademarks are regionally limited and not as easily enforced as federal trademarks. A common law trademark will only prevent other businesses in the same locale from using similar marks.
Common law trademark rights can be hard to enforce due to the lack of a public record of the trademark or when its use began. To obtain federal trademark registration, an application must be filed with the USPTO and approved. Registering a trademark with the USPTO gives a legal presumption of the right to use the trademark nationwide and prevents others from using a similar mark for similar goods or services.
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Registered vs unregistered trademarks
Federal and state trademark laws regulate concurrently. The Lanham Act does not preempt state law, and many states have statutorily and/or judicially developed trademark or unfair competition laws of their own. This means that trademark law is distinct from patent and copyright law, where federal statutes broadly preempt state law.
Trademarks indicate that all goods provided in association with a mark come from the same source. A "service mark" is a word, name, symbol, or device, or any combination of these terms, used by a person to identify and distinguish the services of one person from another and indicate the source of the services.
You can acquire common-law ownership rights to a mark simply by using the mark in commerce in connection with the relevant goods or services. You do not have to register your mark to acquire common-law rights to it. Registering your mark with the state provides certain benefits, such as putting the rest of the state on notice that you claim ownership of the mark in state commerce in connection with the relevant goods or services. The requirements for registering a mark vary by state, but generally, the mark must be "in use" before the date of the application, be distinctive, and not be similar to any currently registered marks.
Unregistered trademarks may still be protected by common law and unfair competition laws. If you do not register your trademark, you will have legal rights only within the geographic areas where you operate. This means you may be able to stop a subsequent user of the mark, even if they are a bigger company, from using the mark in your geographic area. You can claim trademark rights in your unregistered trademark as long as it is distinctive and identifies or distinguishes your products or services. Unregistered trademarks are also provided federal protection under 15 U.S.C. § 1125(a), which creates a civil cause of action for claims of false designation of origin and false advertising.
There are several advantages to registering a trademark that you have used in interstate commerce. These include the right to bring a lawsuit against an infringer in federal court, incontestable status after five years of registration, presumption of ownership, enhanced remedies, and constructive notice of ownership to others in the nation. Registration can be particularly helpful when fighting for a domain name or if you are doing business over the internet.
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Frequently asked questions
Yes, state trademark law can be preempted. The Lanham Act, for example, does not preempt state law, and many states have their own trademark laws. However, in the case of Kiva Health Brands, Inc. vs. Kiva Brands, Inc., the Northern District of California held that a party's state and common law trademarks did not confer trademark priority in a trademark infringement suit based on the federal Lanham Act.
State trademark law can be preempted when it conflicts with federal law or allows confusing or deceptive trademarks to operate, infringing on the exclusive rights of a federal trademark holder.
Preemption of state trademark law can affect the priority and scope of trademark protection. It is important to understand the interplay between federal and state trademark laws to ensure comprehensive protection.
Yes, registering a trademark provides several advantages, including the ability to bring a lawsuit against an infringer in federal court, incontestability after a certain period, presumption of ownership, enhanced remedies, and nationwide notice of ownership.
