Gavin Howe
Trademark law in the United States is a federal issue, with the Lanham Act serving as the federal statute that governs trademarks. Trademark law protects the trademark owner's exclusive right to use a trademark, preventing consumer confusion regarding the source or origin of goods. The Lanham Act prohibits registering immoral or scandalous trademarks and registering a trademark that consists of or comprises a name identifying a living person without their consent. The act also covers trademark infringement, which occurs when a party uses a trademark in commerce to sell or advertise goods or services, causing a likelihood of confusion. Trademark infringement cases in the US Supreme Court include Prestonettes, Inc. v. Coty (1924), KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004), and Iancu v. Brunetti (2019).
| Characteristics | Values |
|---|---|
| Number of cases | Unable to determine a number |
| Types of cases | Trademark infringement, counterfeiting of trademark goods, trademark registration |
| Relevant statutes | 15 U.S. Code § 1117, 15 U.S.C. § 1114, 15 U.S.C. § 1125(a) |
| Relevant laws | Lanham Act, First Amendment, Trademark Act of 1870, Criminal Trademark Act of 1876 |
| Court decisions | The Lanham Act prohibition on registering immoral or scandalous trademarks violates the First Amendment; trademark law protects the owner's exclusive right to use a trademark to prevent consumer confusion; a plaintiff in a trademark infringement lawsuit is not required to show willful infringement as a precondition to a profits award |
| Case names | Vidal v. Elster, Abitron Austria GmbH v. Hetronic International, Inc., Jack Daniel's Properties, Inc. v. VIP Products LLC, Prestonettes, Inc. v. Coty, Iancu v. Brunetti, Matal v. Tam, KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., Octane Fitness, LLC v. ICON Health & Fitness, Inc., A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., United States v. Reese, United States v. Steffens, United States v. Wittemann, United States v. Johnson |
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What You'll Learn
The Lanham Act
To establish trademark infringement under the Lanham Act, the plaintiff must demonstrate that they have a valid and legally protectable mark and that the defendant's use of a similar mark is likely to cause confusion among consumers. The Act sets out clear parameters for what constitutes trademark infringement, and courts have interpreted and applied it in various circumstances, including in cases involving the Internet.
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Trademark infringement lawsuits
Another example is the case of multinational conglomerate 3M suing Changzhou Huawei Advanced Material Co Ltd for using the name "3N" on their products. 3M claimed that, despite differences in products and pricing, "3N" was designed to mislead consumers and infringe on their trademark. The use of "3N" was argued to be intentionally confusing, allowing Changzhou Huawei Advanced Material Co Ltd to acquire clients and market share by leveraging 3M's established reputation.
In addition to claiming likelihood of confusion, a trademark owner may also claim trademark "dilution", asserting that the use of a similar mark diminishes the strength or value of their own mark by "blurring" its distinctiveness or "tarnishing" its image by connecting it to something distasteful or objectionable. Trademark infringement lawsuits can result in significant financial losses and harm to the public image of the companies involved, especially when these disputes make headlines.
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Interstate commerce
To answer the question of "how many US trademark law cases are there in the US" it is important to understand the concept of "use in commerce", which is a prerequisite for trademark registration. Interstate commerce is one of the three types of commerce recognised under federal law, with the other two being territorial and foreign commerce. Interstate commerce refers to trade between two or more US states. This can include selling or transporting goods out of state or providing services to out-of-state customers. For example, selling wheat grown in Kansas to buyers in Massachusetts or providing website design services from Oregon to customers in Georgia.
To register a trademark, applicants must submit evidence of its use in commerce, including the date of first use. The date of first use in commerce is the date when branded goods were first sold, transported, or when services were first rendered and the trademark was used in the sale or advertising of those services. This date is important as it must precede the application filing date. If the trademark applicant has not yet used the trademark in commerce but intends to do so, they can file with an intent-to-use basis. However, the trademark will not be registered until actual use in commerce is demonstrated and the proper forms are filed.
Use in commerce must be lawful and must occur in the ordinary course of trade, meaning it cannot be token use solely to reserve rights in a trademark. Lawful use is essential for establishing trademark priority. For instance, in CreAgri, Inc. v. USANA Health Sciences, Inc., the plaintiff could not establish priority rights as they failed to comply with labelling requirements. Furthermore, use in commerce is interpreted flexibly to account for different industry practices, which may include infrequent sales of large items, test market sales, or ongoing shipments of new drugs to clinical investigators.
In addition to selling and transporting goods, providing services that attract out-of-state customers can also constitute interstate commerce. For instance, restaurant or hotel services where customers may come from across state lines in response to advertising. Services offered through the internet and made available nationally or internationally to individuals using interstate telephone lines to access websites can also be considered interstate commerce.
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First Amendment rights
The Lanham Act, the primary federal trademark law in the US, defines a trademark as "any word, name, symbol, or device, or any combination thereof" that a person uses "to identify and distinguish his or her goods". The Lanham Act's prohibition on the registration of immoral or scandalous trademarks has been found to violate the First Amendment. In Matal v. Tam (2017), the Supreme Court held that the disparagement provision of the Lanham Act, prohibiting the registration of trademarks that may disparage any living or dead person, violates the Free Speech Clause of the First Amendment.
The Supreme Court has also ruled that trademarks are protected by the First Amendment's Free Speech Clause. In Iancu v. Brunetti (2019), the Court clarified that a plaintiff in a trademark infringement lawsuit need not show that a defendant willfully infringed on the plaintiff's trademark to receive a profits award. This ruling highlights the inherent tension between trademark protection and the First Amendment right to free speech.
The use of another's trademark may be protected as free speech in cases of parody or satire. However, this is not always clear-cut, and the Supreme Court has declined to provide detailed guidance on reconciling trademark law with the First Amendment. The Court's decision in Jack Daniel's Properties, Inc v. VIP Products LLC (2023) illustrates this complexity. The case involved Jack Daniel's claim that a company infringed on its trademark by using its bottle design and label for a dog toy. While the Court did not dismiss the claim, it did not apply the Rogers test, which stems from a lower court decision, Rogers v. Grimaldi (1989). The Rogers test, adopted by many lower courts, protects artistic expression over commercial speech in trademark disputes.
The First Amendment rights of trademark owners and alleged infringers must be carefully balanced. While trademark law aims to protect consumers from confusion, it must also consider free speech protections. This balance is particularly relevant when determining when a trademark owner can bring an infringement action without violating the First Amendment.
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Supreme Court rulings
Trademark law in the United States is a complex area, with a long history of Supreme Court rulings shaping the legislation. Here is an overview of some significant Supreme Court decisions that have influenced trademark law in the US:
Trademark Cases, 100 U.S. 82 (1879)
This case established early principles of trademark law in the US. The Supreme Court recognised that trademarks were protected by common law and state statutes, rather than relying solely on federal legislation for their existence. The Court also clarified that trademarks were distinct from inventions, discoveries, or writings, and thus fell outside the scope of Congress's power to grant exclusive rights to authors and inventors under the Constitution.
Prestonettes, Inc. v. Coty (1924)
In this case, the Supreme Court ruled on the rights of trademark owners and repackers. The Court decided that the owner of a registered trademark consisting of a name designating their goods does not typically have the right to stop a purchaser who repacks and sells them from using the trademarked name on their labels. This decision set a precedent for balancing the rights of trademark owners and downstream sellers.
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004)
The Supreme Court addressed the Lanham Act's disparagement provision, which prohibited registering trademarks that might disparage or bring into disrepute any person, living or dead. The Court ruled that this provision violated the First Amendment's Free Speech Clause, prioritising free expression over the potential harm caused by disparaging trademarks.
Matal v. Tam (2017)
In another significant First Amendment ruling, the Supreme Court invalidated the Lanham Act's prohibition on registering immoral or scandalous trademarks as a violation of free speech. This ruling expanded on the previous decision in KP Permanent Make-Up, further shaping the boundaries of acceptable trademark registrations.
Iancu v. Brunetti (2019)
The Supreme Court ruled that a plaintiff in a trademark infringement lawsuit does not need to prove that the defendant willfully infringed on their trademark to receive a profits award. This decision lowered the burden of proof for plaintiffs seeking compensation for trademark violations.
Patent and Trademark Office v. Booking.com. B.V. (2020)
The Supreme Court clarified the scope of trademark protection for generic terms combined with top-level domains, such as ".com". The Court held that a term styled as "generic.com" is only generic if consumers perceive it as a class of goods or services, rather than automatically assuming genericness based on the domain name structure.
Vidal v. Elster (2024)
In this recent case, the Supreme Court ruled on the scope of profits awarded in trademark infringement lawsuits. The Court decided that an award of "defendant's profits" should be limited to the profits of the named corporate defendant and should not include the profits of separately incorporated affiliates who were not directly involved in the case.
These Supreme Court rulings have played a pivotal role in shaping US trademark law, balancing the rights of trademark owners, protecting free speech, and defining the requirements for trademark protection and enforcement.
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Frequently asked questions
I could not find the exact number of trademark law cases in the US, but trademark law is a federal issue, and the Lanham Act is the federal statute that governs trademarks.
Trademark law protects a trademark owner's exclusive right to use a trademark when another party's use of the mark would likely cause consumer confusion about the source or origin of goods.
The Lanham Act is the federal statute that governs trademarks and trademark infringement. It prohibits the registration of immoral or scandalous trademarks and includes a disparagement provision that prohibits the registration of trademarks that may disparage any person.
Trademark infringement occurs when a party uses the same or similar trademark in commerce in connection with the sale or advertising of goods or services, causing a likelihood of consumer confusion. Advertising by the alleged infringer in multiple states and the interstate movement of goods bearing an infringing mark are activities that meet the "in commerce" requirement for trademark infringement claims.
The consequences of trademark infringement can include an award of the defendant's profits to the prevailing plaintiff and the recovery of attorney fees in exceptional cases. Trademark infringement lawsuits may also result in monetary damages and injunctions to stop the infringing activity.
