1.3 Sources of Trademark Law: Lanham Act and Common Law

U.S. trademark law stems from multiple sources, including the Lanham Act, common law, state statutes, and international treaties. These sources work together to create a comprehensive system of trademark protection, balancing federal and state interests.

The Lanham Act provides strong federal protection through registration, while common law rights arise from use. Each system has advantages and limitations, with federal registration offering broader protection but common law providing immediate, localized rights without formalities.

Federal and Common Law Sources of Trademark Protection

Sources of US trademark law

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• Lanham Act (Trademark Act of 1946) serves as primary federal statute governing trademarks, service marks, and unfair competition codified in 15 U.S.C. §§ 1051 et seq
• Common law developed through court decisions and precedents varies by state (California, New York)
• State trademark statutes complement federal law and common law (Florida Trademark Act)
• International treaties shape global trademark protection (Paris Convention, TRIPS Agreement)

Provisions of Lanham Act

• Registration of trademarks on Principal Register provides stronger protection and Supplemental Register for descriptive marks
• Protects various types of marks including trademarks (Nike swoosh), service marks (McDonald's golden arches), certification marks (USDA Organic), and collective marks (CPA for accountants)
• Establishes causes of action for trademark infringement, false designation of origin, dilution, and cybersquatting
• Provides remedies such as injunctive relief, monetary damages, and attorney's fees in exceptional cases
• Recognizes defenses including fair use (nominative, descriptive), abandonment, and genericness
• Grants initial protection term of 10 years, renewable indefinitely with proper use and maintenance

Common law in trademark rights

• Establishes rights through use based on first-to-use principle without requiring registration
• Limits geographic scope of protection to areas of actual use or reputation
• Provides state-specific protections through anti-dilution statutes and unfair competition laws
• Expands protectable subject matter to include trade dress (Coca-Cola bottle shape) and product configurations
• Develops new doctrines such as initial interest confusion and post-sale confusion
• Influences interpretation and application of Lanham Act provisions leading to circuit splits on various issues

Federal registration vs common law

• Federal registration advantages:
  • Grants nationwide constructive notice of trademark rights
  • Provides prima facie evidence of validity in legal proceedings
  • Allows for incontestability after five years of continuous use
  • Secures federal court jurisdiction for trademark disputes
  • Permits use of ® symbol
  • Serves as basis for foreign registrations
• Federal registration limitations:
  • Involves costs for obtaining and maintaining registration
  • Subjects mark to potential cancellation or opposition proceedings
• Common law protection advantages:
  • Offers immediate protection upon use without registration
  • Eliminates registration fees and maintenance requirements
  • Protects marks that may not qualify for federal registration (local business names)
• Common law protection limitations:
  • Restricts geographic scope of protection
  • Places burden of proving ownership and validity on trademark owner
  • Excludes access to certain statutory damages or remedies
• Concurrent use considerations address conflicts between federal registrants and common law users, including junior users in remote geographic areas