Lanham Act

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The Lanham (Trademark) Act (Pub.L. 79–489, 60 Stat. 427, enacted July 6, 1946, codified at 15 U.S.C. § 1051 et seq. (15 U.S.C. ch. 22)) is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.

History

Named for Representative Fritz G. Lanham of Texas, the Act was passed on July 5, 1946, and signed into law by President Harry Truman, taking effect "one year from its enactment", on July 6, 1947.[1] In rare circumstances, a conflict will arise between trademarks that have been in use since before the Lanham Act went into effect, thus requiring the courts to examine the dispute according to the trademark act that existed before the Lanham Act.

The Act has been amended several times since its enactment. Its impact was significantly enhanced by the Trademark Counterfeiting Act of 1984,[2] which made the intentional use of a counterfeit trademark or the unauthorized use of a counterfeit trademark an offense under Title 18 of the United States Code,[3] and enhanced enforcement remedies through the use of ex parte seizures[4] and the award of treble profits or damages (whichever is greater).[5]

In 1999, the Anticybersquatting Consumer Protection Act inserted 15 U.S.C. § 1125(d), and amended 15 U.S.C. § 1114(2)(D).

Civil enforcement

§§ 42 and 43 of the Act (now known as 15 U.S.C. §§ 1124–1125) set out the remedies that can be sought when a trademark is infringed. These provisions forbid the importation of goods that infringe registered trademarks, and restrict, through the use of injunctions and damages, the use of false descriptions and trademark dilution.

§ 43(a) (15 U.S.C. § 1125(a)) is the "likelihood of confusion" standard for infringement of an unregistered trademark or trade dress, and courts still frequently refer to the provision as "Section 43(a)":

“

15 U.S.C. § 1125 - False designations of origin, false descriptions, and dilution forbidden

(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. § 1125(a)(1)(A) is often used when false or misleading statements are alleged to have hurt a consumer or business. The claimant must prove that a false or misleading statement was made in commerce and that the statement creates a likelihood of harm to the plaintiff.

15 U.S.C. § 1125(a)(1)(B) is often used when false or misleading statements are alleged to have hurt a business.

Jurisprudence

The Act has been held to have extraterritorial impact,[6] and the circuit courts have been giving more favorable interpretations in extending its scope.[7] The original ruling by the Supreme Court of the United States,[8] as interpreted by the United States Court of Appeals for the Second Circuit,[9] contemplates a three-part test in determining whether the Act applies (where at least two factors must be met):

  1. the conduct of the defendant must have a substantial effect on United States commerce,
  2. the defendant must be a United States citizen, and
  3. there must be an absence of conflict with foreign law.

Although the Lanham Act sets out clear parameters as to what constitutes trademark infringement, subsequent court decisions, especially those involving the Internet, have loosened the strictures. [10]

In 2003, the U.S. Supreme Court ruled that the law had no impact on public domain works in Dastar Corp. v. Twentieth Century Fox Film Corp.

The Supreme Court rarely hears trademark cases,[11] so most jurisprudence arises at the circuit court level, where they have developed inconsistent and often contradictory approaches as to what remedies to apply.[12] and to the nature of false advertising.[13] The circuit courts have also developed different tests for determining standing in allowing false advertising claims to proceed, and the Supreme Court is currently considering a case in the matter, for which the hearing was held in December 2013.[14]

Divisions

In the United States Code, the Act has been divided into four subchapters:

Subchapter Name Sections Description
I The Principal Register §§ 1051–1072 Lanham Act, ss. 1–22
II The Supplemental Register §§ 1091–1096 Lanham Act, ss. 23–28
III General Provisions §§ 1111–1127 Lanham Act, ss. 29–45
§ 1128 later creation of the National Intellectual Property Law Enforcement Coordination Council
§ 1129 passage of prohibitions against cyberpiracy originally codified here, but now covered by 15 U.S.C. § 8131
IV The Madrid Protocol §§ 1141–1141n later passage, in consequence of US accession to the Madrid system

The Trademark Registers

Subchapter I sets forth the requirements that a mark must meet to receive a registration on the Principal Register, which bestows various rights on the trademark owner to prevent others from infringing their mark. Among the requirements are prohibitions against the registration of marks that are confusingly similar to existing marks, are generic or merely descriptive, are scandalous or immoral, or fall onto certain other prohibited categories. Subchapter I also sets forth certain procedural requirements, such as the submission of an affidavit of continued use after five years of registration.

Subchapter II sets forth a form of registration on the Supplemental Register, for certain marks that are unregistrable under Subchapter I, but may become registrable in the future, such as those that are merely descriptive. This form of registration, while not granting all the protections of registration on the Principal Register, does provide notice to potential infringers that the mark is in use, and also provides some procedural benefits.

See also

  • International Cybercrime

References

  1. ↑ Lanham Act, § 46.
  2. ↑ Pub.L. 98–473, 98 Stat. 2179, enacted October 12, 1984
  3. ↑ 18 U.S.C. § 2320
  4. ↑ 15 U.S.C. § 1116(d)
  5. ↑ 15 U.S.C. § 1117(b)
  6. ↑ Brown, Erika M. (1999). "The Extraterritorial Reach of Trademark Law: A Review of Recent Decisions Under the Lanham Act". Fordham Intellectual Property, Media & Entertainment Law Journal (Fordham University School of Law) IX (3): 863–884. 
  7. ↑ Lawrence R. Robins; Kelly Donahue (October/November 2013). "Extraterritorial reach of the Lanham Act: a viable option". World Trademark Review. pp. 106–107. 
  8. ↑ Steele v. Bulova Watch Co., Inc., 344 U.S. 280 (1952)
  9. ↑ Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F. 2d 633 (2d Cir. 1956).
  10. ↑ Rothman, Jennifer E. (2005). "Initial Interest Confusion: Standing at the Crossroads of Trademark Law". Cardozo Law Review (Benjamin N. Cardozo School of Law) 27 (1): 105–191. 
  11. ↑ Eric Goldman (December 2, 2013). "Previewing Lexmark vs Static Control, A Rare Supreme Court Case On False Advertising". Forbes. 
  12. ↑ Sarah Cone (2005). "Designer Discounter Infringes Trademark and goes Unpunished: A Look at Gucci America, Inc. v. Daffy's Inc. and the Lanham Act". Richmond Journal of Law & Technology (University of Richmond School of Law) XI (2). 
  13. ↑ Courtland L. Reichman; M. Melissa Cannady (2002). "False Advertising Under the Lanham Act". Franchise Law Journal (American Bar Association) 27 (4): 187–197. 
  14. ↑ Lexmark Int'l v. Static Control Components

Further reading

Journals
  • Lemley, Mark A. (1999). "The Modern Lanham Act and the Death of Common Sense". Yale Law Journal (The Yale Law Journal Company, Inc.) 108 (7): 1687–1715. doi:10.2307/797447. JSTOR 797447. 
  • Phelps, D. M. (1949). "Certification Marks under the Lanham Act". Journal of Marketing (American Marketing Association) 13 (4): 498–505. doi:10.2307/1247789. JSTOR 1247789. 
Books

External links

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