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Trademark and Related Claims

Trademarks and "service marks" — those ubiquitous slogans, signs, and symbols that pervade our culture — are governed in the U.S. by the federal Lanham Act, along with various different laws in the individual states. The basic purpose of trademark law is to protect consumers by enabling them to rely on recognizable marks to identify the source of goods and services.

It follows that unless there is a likelihood that the unauthorized use of a trademark or service mark will confuse consumers, there is no violation of trademark law. In many cases, courts don't need to address fair use or other possible defenses because there is no real likelihood of confusion.

But trademark rights are closely related to a number of other rights, and trademark owners will also frequently make claims about "dilution", "passing off", "unfair competition", or the "right of publicity".

"Trademark dilution" lets owner of a "famous" mark stop any use that blurs or tarnishes its distinctiveness — even if there is no chance that consumers will be confused. Because the concept of dilution has such potentially broad reach, there are specific defenses in the federal Lanham Act that are applicable to claims of dilution. "All forms of news reporting and news commentary" are exempted, as are comparative advertising, and "noncommercial use".

People claiming trademark infringement also may claim unfair competition, false advertising, "false designation of origin", or "passing off". These claims might apply if the defendant is using someone else's unregistered trademark to misrepresent her goods or services or suggest an endorsement. The same defenses apply as in other trademark cases — ordinary descriptive uses of language, truthful comparative advertising, "fair use", and the First Amendment.

"Reverse passing off" occurs when someone removes trademark information and distributes goods made by the trademark owner as if they were his own. Reverse passing off is sometimes described as a form of plagiarism, or seen in conjunction with copyright infringement claims or claims for the removal of "copyright management information".

If someone is unhappy with another's use of a domain name, he may make a claim under the "Anticybersquatting Prevention Act", or "ACPA", or refer to "cybersquatting", the "Uniform Domain Dispute Resolution Policy", or the "UDRP". Trademark owners who feel that someone has registered a domain name that infringes their trademark may sue in federal court under the ACPA, or opt for an expedited, relatively inexpensive ($1500) procedure called the UDRP. In both instances, the complainant must show the user had a bad faith intent to profit from the domain name. There are defenses for noncommercial use.

Finally, senders of cease and desist letters sometimes complain of violations of their "right of publicity". This is a concept developed state, not federal, law, and the elements vary greatly from state to state. Typically, violations of the right of publicity involve commercial uses of a famous person's name or image; for example, putting a TV star's face on your packaging label. The First Amendment and state constitutional protections for speech provide broad leeway for news reporting and commentary.