Trademark Infringement

History of Trademarks

Courts in the United States have protected the rights of patent and copyright holders since the colonial period, but trademarks were unprotected until after the Civil War. In 1870, the U.S. Congress passed the first federal trademark law, but the Supreme Court overturned it eight years later on the grounds that the law was too broad and that it was improperly based on existing patent and copyright laws. A group of interested parties formed the International Trademark Association and lobbied Congress for a new law. Congress responded with the Trade-Mark Act of 1881, which allowed trademark holders to sue for infringement but failed to clarify crucial issues of how trademarks should be defined and who had the right to claim trademark infringement.

In 1945, Representative Fritz Lanham introduced a number of bills in the House of Representatives aimed at providing adequate protection for trademark holders and clarifying the issues left hanging in the earlier legislation. The results of Lanham's efforts were synthesized in the Lanham Act, which was signed into law in July 1946. The Lanham Act, which provided the groundwork for all future trademark legislation, defined a trademark as “any word, name, symbol, device, or any combination thereof adopted by a manufacturer or merchants to identify goods and distinguish them from those manufactured or sold by others.” The legislation also created a separate agency under the U.S. Patent Office to deal with the registration of trademarks and established guidelines for proving infringement of federal copyrights.

In 1988, Congress updated the Lanham Act with the Trademark Law Revision Act and changed the period of trademark protection from 20 years to 10 years, with infinite renewals. After five years, the trademark holder is required to file an affidavit[Page 814] showing that the trademark will continue to be used. The name of the regulating agency was officially changed to the Patent and Trademark Office. In 1992, Congress again strengthened trademark protection with the Trademark Dilution Act, which became effective in 2000 and which stipulated that dilution of a trademark occurs when “similar trademarks are used for other products than the one registered to the trademark owner.” On March 3, 2003, in Moseley v. Secret Catalogues (01–1015), the Supreme Court held that it was necessary for the plaintiff to show actual proof that the trademark had been diluted rather than the likelihood that it would do so.

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