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 Intellectual property (IP) is a category of property that includes intangible creations of the human intellect. There are many types of intellectual pr ...

trademark
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 occ ...
,
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 anot ...
, and
false advertising False advertising is described as the crime or misconduct of publishing, transmitting, or otherwise publicly circulating an advertisement containing a false, misleading, or deceptive statement, made intentionally or recklessly to promote the sale ...
.


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 The president of the United States (POTUS) is the head of state and head of government of the United States of America. The president directs the ...
, 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 Intellectual property (IP) is a category of property that includes intangible creations of the human intellect. There are many types of intellectual pr ...

trademark
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, as interpreted by the United States Court of Appeals for the Second Circuit, 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 (law), standing to sue under were ousted by the Court in ''Lexmark Int'l v. Static Control Components'', where Justice Scalia adopted a multi-step approach: #Under Article Three of the United States Constitution, 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 [could] 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[e] 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. 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 (United States), freedom of speech. 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 (United States), freedom of speech.


Divisions

In the United States Code, 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