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The Lanham (Trademark) Act (, codified at et seq. () is the primary federal
trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from ot ...
statute of law in the United States. The Act prohibits a number of activities, including
trademark infringement Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may ...
, trademark dilution, and
false advertising False advertising is defined as the act of publishing, transmitting, or otherwise publicly circulating an advertisement containing a false claim, or statement, made intentionally (or recklessly) to promote the sale of property, goods, or servic ...
.


History

Named for Representative
Fritz G. Lanham Frederick Garland "Fritz" Lanham (January 3, 1880 – July 31, 1965) was a Democratic member of the United States House of Representatives from the state of Texas. Early life Born in Weatherford, Texas, Lanham was the son of Sarah Beona (née ...
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. 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, which made the intentional use of a counterfeit
trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from ot ...
or the unauthorized use of a counterfeit trademark an offense under Title 18 of the United States Code, and enhanced enforcement remedies through the use of '' ex parte'' seizures and the award of treble profits or damages (whichever is greater). In 1999, the Anticybersquatting Consumer Protection Act inserted , and amended .


Civil enforcement

§§ 42 and 43 of the Act (now known as ) 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) () 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)": 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. 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, and the circuit courts have been giving more favorable interpretations in extending its scope. The original ruling by the
Supreme Court of the United States The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. Federal tribunals in the United States, federal court cases, and over Stat ...
, as interpreted by the
United States Court of Appeals for the Second Circuit The United States Court of Appeals for the Second Circuit (in case citations, 2d Cir.) is one of the thirteen United States Courts of Appeals. Its territory comprises the states of Connecticut, New York and Vermont. The court has appellate ju ...
, contemplates a three-part test in determining whether the Act applies (where at least two factors must be met): #the conduct of the defendant must have a substantial effect on United States commerce, #the defendant must be a United States citizen, and #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. 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.'' In 2014, the various interpretations that had been adopted by the circuit courts as to who had standing to sue under were ousted by the Court in ''
Lexmark Int'l v. Static Control Components ''Lexmark International, Inc. v. Static Control Components, Inc.'', is an American legal case involving the computer printer company Lexmark, which had designed an authentication system using a microcontroller so that only authorized toner cartrid ...
'', where Justice Scalia adopted a multi-step approach: #Under Article III, the plaintiff must have suffered or be imminently threatened with a concrete and particularized "injury in fact" that is fairly traceable to the challenged action of the defendant and likely to be redressed by a favorable judicial decision. #''AGC'' requires the ascertainment, as a matter of statutory interpretation, of the "scope of the private remedy created by" Congress, and the "class of persons who ouldmaintain a private damages action under" a legislatively conferred cause of action. #A statutory cause of action extends only to plaintiffs whose interests "fall within the zone of interests protected by the law invoked," and the "zone of interests" formulation applies to all statutorily created causes of action, as it is a "requirement of general application" and Congress is presumed to "legislat against the background of" it, "which applies unless it is expressly negated." #A statutory cause of action is also presumed to be limited to plaintiffs whose injuries are proximately caused by violations of the statute. A plaintiff suing under §1125(a) ordinarily must show that its economic or reputational injury flows directly from the deception wrought by the defendant's advertising; and that occurs when deception of consumers causes them to withhold trade from the plaintiff. #Direct application of the zone-of-interests test and the proximate-cause requirement supplies the relevant limits on who may sue under §1125(a). In 2014, the U.S. Supreme Court ruled in '' POM Wonderful LLC v. Coca-Cola Co.'' that the Act complemented the Food, Drug, and Cosmetic Act, allowing a company to sue for infringement by way of
civil action - A lawsuit is a proceeding by a party or parties against another in the civil court of law. The archaic term "suit in law" is found in only a small number of laws still in effect today. The term "lawsuit" is used in reference to a civil act ...
. In 2017 '' Matal v. Tam'', the Supreme Court ruled that a provision in of the Act, denying registration to any trademarks seen as disparaging an individual or group, was an unconstitutional restriction of applicants'
freedom of speech Freedom of speech is a principle that supports the freedom of an individual or a community to articulate their opinions and ideas without fear of retaliation, censorship, or legal sanction. The right to freedom of expression has been recogni ...
. In 2019 '' Iancu v. Brunetti'', the Supreme Court ruled that a provision in of the Act, denying registration to any trademarks seen as consisting of immoral or scandalous matter, was an unconstitutional restriction of applicants'
freedom of speech Freedom of speech is a principle that supports the freedom of an individual or a community to articulate their opinions and ideas without fear of retaliation, censorship, or legal sanction. The right to freedom of expression has been recogni ...
.


Divisions

In the
United States Code In the law of the United States, the Code of Laws of the United States of America (variously abbreviated to Code of Laws of the United States, United States Code, U.S. Code, U.S.C., or USC) is the official compilation and codification of the ...
, the Act has been divided into four subchapters:


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


Further reading

Journals * * Books *


External links


The Lanham Act at bitlaw.com
{{USArticleI United States federal trademark legislation False advertising law United States competition law 1946 in law 79th United States Congress Intellectual property law