Previously, in a section called Why Should I Get A Trademark, we discussed the consequences, privileges,
and protections that come with trademark registration. But where do these come from? What laws govern trademark application and use? Here is an
overview of the overlapping sources of law that relate to trademarks:
COMMON LAW
For a long time, there was no federal trademark protection and very little uniformity across states. However, this did not mean that companies
were out of luck. The common law still permitted actions for the infringement of company brands. Common law originates from custom or judicial
opinion instead of laws. However, even with the modern emergence of federal and state trademark statutes and protections, the common law is still
relevant for companies that fail to register their marks. In that case, the party that first uses the mark in commerce will ordinarily prevail.
STATE LAW
State registration procedures provide protection for trademarks similarly to the federal process. Typically, they are used when companies only
operate within one state and thus do not need federal registration even though the latter comes with additional protections. Like federally
registered-trademarks, state-registered trademarks provide notice of the mark's ownership albeit within a more limited sphere of use than the former.
However, state marks are redundant if a company already has a federal mark because constructive notice has already been established so they are often not even acquired.
FEDERAL LAW
Beginning in the late 1800s, federal law started to encroach upon the territory of trademarks. Ever since then, the number of laws and
protections that it provided far outweighed anything that the states were doing. The most relevant and influential statute that Congress
passed with regard to trademarks was the Lanham Act (15 U.S.C. §1051). It was passed in 1946 and amended in 1996. It clearly outlines trademark
protections and what constitutes infringement. §42 provides remedies for trademark infringement. §43a (now §1125a1A) provides the standard for
confusion that infringement causes. Other relevant sections and statutes are listed at the end of this article. In analyzing whether the
Lanham Act applies, courts will apply a three-part test:
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.
