Trademark Laws: Lanham Act

The Lanham Act is a U.S. Federal Statute that covers trademark laws concerning trademark registration and trademark infringement actions. The purpose of the act is to provide for registration and protection of trademarks that are used in commerce. This act was passed by the power granted to Congress through way of Article I, §8, Clause 3 of the Constitution; also known as The Commerce Clause. This means that a claim arising under the Lanham Act must have contact with interstate commerce. For example, a trademark must be used in interstate commerce before it may be registered federally, and an infringer must commit the infringing acts affecting such commerce before they become actionable under the Lanham Act.

What constitutes use in commerce?  The Trademark Act defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” Sales made in a good faith effort to develop a business should be sufficient.  However, token use made solely to reserve a right in a mark is not enough to show use in commerce.

There are many key sections to the Lanham Act that are important for trademark owners to be aware of:

  • $1: details the procedures for registering a mark
  • $9: details the procedures for renewing a currently registered trademark
  • $10: details the assignment of a registered trademark
  • $13: details oppositions to registration
  • $14: details petitions to cancel a registration
  • $32: prescribes liability where a trademark owner has a valid registered mark and an individual has infringed by using a confusingly similar mark in interstate commerce
  • $34: details the procedure for seizure of counterfeit goods
  • $43(c): allows the owner of a famous trademark to sue for dilution of the distinctive quality of there mark

These are just a few of the key sections to be aware of if you have a service or good that you are considering registering for trademark protection. Many of these sections are complicated and sometimes the law is subject to different interpretations, so it is best to seek out professional legal counsel to ensure you are properly protected. NexTrend Legal’s trademark attorneys are specialists in trademark law and can assist with all of your trademark questions and needs.

State Trademark Laws

State trademark registration is generally of limited use to the trademark owner. Generally, a state trademark registration does not create substantive trademark rights greater than trademarks that exist at common law (i.e. trademarks that exist based on use without any registration). A certificate of a state trademark registration is evidence of use of the trademark only in that state where the trademark is registered. However, this registration usually does not carry a presumption of trademark validity nor does it give constructive notice of the rights of the registered owner.  Thus, federal trademark registration is recommended to ensure national protection of your service or goods.