Lanham Trade-Mark Act of 1946, 50 Stat. 427 (Jul. 5,1946), codified, as amended, at 15 U.S.C. 1051 et seq. (full-text).
|“||(1) using any counterfeit, copy, or imitation of their trademarks (that have been registered with the U.S. Patent and Trademark Office), in connection with the sale of any goods or services in a way that is likely to cause confusion, mistake, or deception, or
In addition, the Lanham Act grants to owners of famous trademarks the right to seek injunctive relief against another person’s use in commerce of a mark or trade name if such use causes dilution by blurring or tarnishment of the distinctive quality of the famous trademark.
The Lanham Act has been amended more than 30 times since its effective date on July 5, 1947, in response to lobbying efforts by trademark owners seeking greater protection for their marks, new technological developments such as the Internet, and U.S. treaty obligations mandating uniformity of U.S. intellectual property law with that of other countries.
The Second Circuit has held that the Lanham Act "should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweights the public interest in free expression."
Under the Lanham Act, a merchant or manufacturer that wants to use a mark on a product or service must register that mark with the U.S. Patent and Trademark Office (PTO) to obtain federal protection for the mark. Failure to register a mark with the PTO does not mean that the entity using the mark has not established rights in it; once the mark is first used in commerce (a good bearing the mark is sold to the public in a bona fide transaction), state common law confers trademark protection to the mark.
- nationwide, constructive notice to the public of the ownership of the mark;
- prima facie evidence of the validity of the mark, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in interstate commerce;
- the ability to bring a legal action concerning the mark in federal court;
- the use of the U.S. registration as a basis to obtain registration in foreign countries; and
- the ability to file the U.S. registration with the U.S. Customs and Border Protection to prevent importation of infringing foreign goods.
- 15 U.S.C. §1114(1).
- Id. §1125(a)(1).
- Id. §1125(c)(1).
- Roger E. Schechter & John R. Thomas, "Intellectual Property: The Law of Copyrights, Patents and Trademarks" §25.2.5 (2003).
- Rogers v. Grimaldi, 875 F.2d 994, 999, 10 U.S.P.Q.2d (BNA) 1825 (2d Cir. 1989)(full-time).
- Schechter §26.2.
- U.S. Patent & Trademark Office, "Should I Register My Mark?"