Much has been said and written in recent weeks about the Supreme Court’s defense of the First Amendment in the Slants case (Did The Supreme Court Slants Case Just Approve A Big FU To Trademark Owners?), by striking down provisions of federal trademark law. The court has also provided us with perhaps the most authoritative explanation of the history of United States trademark registration ever written.
Whether you run a startup, small business or a company on Forbes World’s Biggest Companies list, this should be required reading. Here below, an abridged discussion of trademark registration in this country, courtesy of Justice Samuel Alito of the Supreme Court of the United States (in own his words, and citing prior Court decisions and trademark law experts):
“The principle underlying trademark protection is that distinctive marks—words, names, symbols, and the like—can help distinguish a particular artisan’s goods from those of others.”
A trademark “designate[s] the goods as the product of a particular trader” and “protect[s] his goodwill against the sale of another’s product as his.”
It helps consumers identify goods and services that they wish to purchase, as well as those they want to avoid.
“[F]ederal law does not create trademarks.”
Trademarks and their precursors have ancient origins, and trademarks were protected at common law and in equity at the time of the founding of our country.
For most of the 19th century, trademark protection was the province of the States.
Eventually, Congress stepped in to provide a degree of national uniformity, passing the first federal legislation protecting trademarks in 1870.
The foundation of current federal trademark law is the Lanham Act, enacted in 1946.
Then, as now, trademarks often consisted of catchy phrases that convey a message.
Under the Lanham Act, trademarks that are “used in commerce” … may be federally registered.
There are now more than two million marks that have active federal certificates of registration.
This system of federal registration helps to ensure that trademarks are fully protected and supports the free flow of commerce. “[N]ational protection of trademarks is desirable,” we have explained, “because trademarks foster competition and the maintenance of quality by securing to the producer the benefits of good reputation.”
The Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.
Without federal registration, a valid trademark may still be used in commerce.
And an unregistered trademark can be enforced against would-be infringers in several ways. Most important, even if a trademark is not federally registered, it may still be enforceable under §43(a) of the Lanham Act, which creates a federal cause of action for trademark infringement.
Section 43(a) prohibits a broader range of practices than does §32, which applies to registered marks, but it is common ground that §43(a) protects qualifying unregistered trademarks.
An unregistered trademark can be enforced under state common law, or if it has been registered in a State, under that State’s registration system. …
“[t]he federal system of registration and protection does not preempt parallel state law protection, either by state common law or state registration” and “[i]n the vast majority of situations, federal and state trademark law peacefully coexist”…
Federal registration, however, confers important legal rights and benefits on trademark owners who register their marks.
Registration also enables the trademark holder to stop the importation into the United States of articles bearing an infringing mark.
The PTO has made it clear that registration does not constitute approval of a mark.
It is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means. (“The purchasing public knows no more about trademark registrations than a man walking down the street in a strange city knows about legal title to the land and buildings he passes”)
There you have it. Trademark use and registration, demystified. Trademarks indicate origin. They provide a statement of quality. Registration provides legal benefits, but unregistered marks also have rights. As one of my teachers used to love to say, “simple, clear and logical.”