Lanham Act
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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 others ...
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 o ...
,
trademark dilution Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of anoth ...
, 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 of Texas, the Act was passed on July 5, 1946, and signed into law by President
Harry Truman Harry S. Truman (May 8, 1884December 26, 1972) was the 33rd president of the United States, serving from 1945 to 1953. A leader of the Democratic Party, he previously served as the 34th vice president from January to April 1945 under Franklin ...
, 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 The Trademark Counterfeiting Act of 1984 is a United States federal law that amended the federal criminal code to make it a federal offense to violate the Lanham Act by the intentional use of a counterfeit trademark or the unauthorized use of a coun ...
, 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 others ...
or the unauthorized use of a counterfeit trademark an offense under
Title 18 of the United States Code Title 18 of the United States Code is the main criminal code of the federal government of the United States. The Title deals with federal crimes and criminal procedure. In its coverage, Title 18 is similar to most U.S. state criminal codes, w ...
, and enhanced enforcement remedies through the use of ''
ex parte In law, ''ex parte'' () is a Latin term meaning literally "from/out of the party/faction of" (name of party/faction, often omitted), thus signifying "on behalf of (name)". An ''ex parte'' decision is one decided by a judge without requiring all ...
'' seizures and the award of treble profits or damages (whichever is greater). In 1999, the
Anticybersquatting Consumer Protection Act The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of ) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or di ...
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 court cases, and over state court cases that involve a point o ...
, 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 juri ...
, 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 Standing, also referred to as orthostasis, is a position in which the body is held in an ''erect'' ("orthostatic") position and supported only by the feet. Although seemingly static, the body rocks slightly back and forth from the ankle in the s ...
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 cartr ...
'', where
Justice Scalia Antonin Gregory Scalia (; March 11, 1936 – February 13, 2016) was an American jurist who served as an associate justice of the Supreme Court of the United States from 1986 until his death in 2016. He was described as the intellectua ...
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
ould Ould is an English surname and an Arabic name ( ar, ولد). In some Arabic dialects, particularly Hassaniya Arabic, ولد‎ (the patronymic, meaning "son of") is transliterated as Ould. Most Mauritanians have patronymic surnames. Notable p ...
maintain 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. ''POM Wonderful LLC v. Coca-Cola Co.'', 573 U.S. 102 (2014), was a United States Supreme Court case that held that a statutory private right of action under the Lanham Act is not precluded by regulatory provisions of the Food, Drug, and Cosmetic ...
'' that the Act complemented the
Food, Drug, and Cosmetic Act The United States Federal Food, Drug, and Cosmetic Act (abbreviated as FFDCA, FDCA, or FD&C) is a set of laws passed by the United States Congress in 1938 giving authority to the U.S. Food and Drug Administration (FDA) to oversee the safety of f ...
, 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 actio ...
. In 2017 ''
Matal v. Tam ''Matal v. Tam'', 582 U.S. ___ (2017) (previously known as ''Lee v. Tam'') is a Supreme Court of the United States case that affirmed unanimously the judgment of the United States Court of Appeals for the Federal Circuit that the provisions of the ...
'', 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 In United States trademark law, the Principal Register is the primary register of trademarks maintained by the United States Patent and Trademark Office. It is governed by Subchapter I of the Lanham Act. Having a mark registered under the Principa ...
, 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 There is no commonly agreed single definition of “cybercrime”. It refers to illegal internet-mediated activities that often take place in global electronic networks. Cybercrime is "international" or "transnational" – there are ‘no cyber-bord ...


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