Supreme Court of the United States Trademark Case Law

SCOTUS Trademark Judgements

Supreme Court of the United States has decided following cases under Trademark Law (1870 Statute & 1881 Trademark Act & Revised Trademark Act 1905) and Lanham Act 1946 since its establishment on September 24, 1789 pursuant to Article III of the United States Constitution 1787.
Citation Case Title &
Issue/s InvolvedHeld by SCOTUS
No. 19–46
June 30, 2020 generic name—the name of a class of products or services—is ineligible for federal trademark registration.A term styled “” is a generic name for a class of goods or services only if the term has that meaning to consumers.
(a) Whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services. ….. Because “” is not a generic name to consumers, it is not generic. ….. ……The generic (or nongeneric) character of a particular term depends on its meaning to consumers, i.e., do consumers in fact perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”
No. 19–46
June 30, 2020
Lucky Brand Dungarees, Inc., Et Al. V. Marcel Fashions Group, Inc.A generic name—the name of a class of products or services—is ineligible for federal trademark registration.A term styled “” is a generic name for a class of goods or services only if the term has that meaning to consumers.
No. 18–1086
May 14, 2020
Lucky Brand Dungarees, Inc., Et Al. V. Marcel Fashions Group, Inc.Whether so-called “defense preclusion” is a valid application of res judicataBecause Marcel’s 2011 Action challenged different conduct—and raised different claims—from the 2005 Action, Marcel cannot preclude Lucky Brand from raising new defenses.
No. 18–1233
April 23, 2020
Romag Fasteners, Inc. V. Fossil Group, Inc., Fka Fossil, Inc., Et Al.Romag Fasteners, Inc., and Fossil, Inc., signed an agreement to use Romag’s fasteners in Fossil’s leather goods. Romag eventually discovered that factories in China making Fossil products were using counterfeit Romag fasteners. Romag sued Fossil and certain retailers of Fossil
products (collectively, Fossil) for trademark infringement pursuant to 15 U. S. C. §1125(a). Relying on Second Circuit precedent, the district court rejected Romag’s request for an award of profits, because the jury, while finding that Fossil had acted callously, rejected Romag’s
accusation that Fossil had acted willfully.
A plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award. The Lanham Act provision governing remedies for trademark violations, §1117(a), makes a showing of willfulness a precondition to a profits award in a suit under §1125(c) for
trademark dilution, but §1125(a) has never required such a showing.
Reading words into a statute should be avoided, especially when they are included elsewhere in the very same statute
No. 18–302
June 24, 2019
Iancu, Under Secretary of Commerce for Intellectual Property and Director, Patent And Trademark Office V. BrunettiImmoral or Scandalous TrademarksThe Lanham Act’s prohibition on registration of “immoral or scandalous” trademarks violates the First Amendment.
No. 17–1657
May 20, 2019
Mission Product Holdings, Inc. v. Tempnology,Whether the debtor-licensor’s rejection of that contract deprives the licensee of its rights to use the trademark.It does not.
582 U. S. 2017
No. 15–1293
June 19, 2017
Joseph Matal, Interim Director, United States Patent and Trademark Office, Petitioner V. Simon Shiao TamThe Patent and Trademark Office (PTO) denied the application based on a provision of federal law prohibiting the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons.
whether trademarks are commercial speech subject to the relaxed scrutiny outlined in Central Hudson Gas & Elect. v. Public Serv. Comm’n of N. Y., 447 U. S. 557.
Whether Disparaging Marks are registerable as Trademarks
"We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.
The disparagement clause violates the First Amendment’s Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech. Because the “Free Speech Clause . . . does not regulate government speech,” Pleasant Grove City v. Summum, 555 U. S. 460, 467, the government is not required to maintain viewpoint neutrality on its own speech. This Court exercises great caution in extending its government-speech precedents, for if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.
The dispute between the parties over whether trademarks are commercial speech subject to the relaxed scrutiny outlined in Central Hudson Gas & Elect. v. Public Serv. Comm’n of N. Y., 447 U. S. 557, need not be resolved here because the disparagement clause cannot withstand even Central Hudson review. Under Central Hudson, a restriction of speech must serve “a substantial interest” and be narrowly drawn.”
575 U.S 2015
No. 13–352
March 24, 2015
B&B Hardware, Inc. V. Hargis Industries, Inc., DBA Sealtite Building Fasteners Et Al., Et Al.Preclusion was unwarranted because the TTAB and the court used different factors to evaluate likelihood of confusion, the TTAB placed too much emphasis on the appearance and sound of the two marks.“So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before a district court, issue preclusion should apply”
574 U.S. 2015
No. 13–1211
January 21, 2015
Hana Financial, Inc. V. Hana Bank Et Al.Tacking inquiry was an exceptionally limited and highly fact-sensitive matter reserved for juries, not judges“Whether two trademarks may be tacked for purposes of determining priority is a question for the jury.”
573 U. S. 2014
No. 12–761
June 12, 2014
Pom Wonderful LLC V. Coca-Cola, Inc. The District Court granted partial summary judgment to Coca-Cola, ruling that the FDCA and its regulations preclude Lanham Act challenges to the name and label of Coca-Cola’s juice blend. The Ninth Circuit affirmed in relevant part.“Competitors may bring Lanham Act claims like POM’s challenging food and beverage labels regulated by the FDCA.”
572 U.S. 2014
No. 12-873
March 25, 2014
Lexmark International, Inc. V. Static Control Components, Inc.Whether respondent, Static Control Components, Inc., may sue petitioner, Lex- mark International, Inc., for false advertising under theLanham Act, 15 U. S. C. §1125(a).“To invoke the Lanham Act’s cause of action for false advertising, a plaintiff must plead (and ultimately prove) an injury to a commercial interest in sales or businessreputation proximately caused by the defendant’s mis- representations. Static Control has adequately pleaded both elements. The judgment of the Court of Appeals is affirmed.”
January 9, 2013
568 U.S 2013
Already, LLC, DBA Yums V. Nike, Inc.Whether a covenant not to enforce a trademark against a competitor’s existing products and any future “colorable imitations” moots the competitor’s action to have the trademark declared invalid. “This case is moot. A case becomes moot—and therefore no longer a “Case” or “Controversy” for Article III purposes—“when the issues presented are no longer ‘live’ or the parties lack a legally cognizable interest in the outcome….Under such circumstances, a remand would serve no purpose…. The uncontested findings made by the District Court, and confirmed by the Second Circuit, make it “absolutely clear” this case is moot. The judgment of the Court of Appeals is affirmed.”
June 28, 2012
No. 11-210
567 U.S. 2012
United States. V. Alvarez The Stolen Valor Act makes it a crime to falsely claim receipt of military decorations or medals and provides an enhanced penalty if the Congressional Medal of Honor is involved. 18 U. S. C. §§704 (b), (c).Respondent pleaded guilty to a charge of falsely claiming that he had received the Medal of Honor, but reserved his right to appeal his claim that the Act is unconstitutional. The Ninth Circuit reversed, finding the Act invalid under the First Amendment."The judgment is affirmed. ..the Act infringes upon speech protected by the First Amendment. (a) The Constitution “demands that content-based restrictions on speech be presumed invalid . . . and that the Government bear the burden of showing their constitutionality. … Content-based restrictions on speech have been permitted only for a few historic categories of speech, including incitement, obscenity, defamation, speech integral to criminal conduct, so-called “fighting words,” child pornography, fraud, true threats, and speech presenting some grave and imminent threat the Government has the power to prevent.” The Stolen Valor Act, which makes it a crime to lie about having received military honors or decorations, violates the First Amendment right to freedom of speech."
560 U.S. 2010
No. 08-661
May 24, 2010
American Needle, Inc. V. National Football League Et Al.Whether the NFL respondents are capable of engaging in a “contract, combination . . . , or conspiracy” asdefined by §1 of the Sherman Act, 15 U. S. C. §1,"The alleged conduct related to licensing of intellectual property constitutes concerted action that is not categorically beyond §1’s coverage. (a) The meaning of “contract, combination . . . , or, conspiracy” in §1 of the Sherman Act is informed by the Act’s “ ‘basic distinction between concerted and independent action.’ ”
543 U.S. 111
No. 03—409
December 8, 2004
KP Permanent Makeup, Inc. V. Lasting Impression I, Inc. et al.Whether a party raising the statutory affirmative defense of fair use to a claim of trademark infringement, has a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected.“It does not”
537 U.S. 418
No. 1-1015
March 4, 2003
Victor Moseley And Cathy Moseley, DBA Victor’s Little Secret, Petitioners V. V Secret Catalogue, Inc., Et Al.Whether objective proof of actual injury to the economic value of a famous mark (as opposed to a presumption of harm arising from a subjective “likelihood of dilution” standard) is a requisite for relief under the FTDA."Plaintiff must prove actual dilution under the Federal Trademark Dilution Act. (Later overturned by Trademark Dilution Revision Act of 2006)
Whatever difficulties of proof may be entailed, they are
not an acceptable reason for dispensing with proof of an essential element of a statutory violation."
539 U.S. 23
June 2, 2003
No. 02-428
Dastar Corp. V. Twentieth Century Fox Film Corp.Whether §43(a) of the Lanham Act, 15 U.S.C. § 1125(a), prevents the unaccredited copying of a work, and if so, whether a court may double a profit award under § 1117(a), in order to deter future infringing conduct.Trademark cannot preserve copyright-like rights to a public domain work.
532 U.S. 23
March 20, 2001
TrafFix Devices, Inc. V. Marketing Displays, Inc.Trade dress infringement (based on the copied dual-spring design) and unfair competition.“No reasonable trier of fact could determine that MDI has established secondary meaning” in its alleged trade dress, id., at 269. In other words, consumers did not associate the look of the dual-spring design with MDI.”
532 U.S. 424
No. 99 – 2035
May 14, 2001
Cooper Industries V. Leatherman Tool GroupThe Ninth Circuit affirmed the punitive damages award, concluding that the District Court did not abuse its discretion in declining to reduce that award."Courts of Appeals should apply a de novo standard when reviewing district court determinations of the constitutionality of punitive damages awards."
529 U.S. 205
No. 99-150
March 22, 2000
Wal-Mart Stores, Inc. V. Samara Brothers, Inc.Under what circumstances a product’s design is distinctive, and therefore protectable, in an action for infringement of unregistered trade dress under §43(a) of the Trademark Act of 1946 (Lanham Act), 60 Stat. 441, as amended, 15 U.S.C. § 1125(a) We hold that, in an action for infringement of unregistered trade dress under §43(a) of the Lanham Act, a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning. The judgment of the Second Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion.
527 U.S. 666
No. 98-149
June 23, 1999
College Savings Bank V. Florida Prepaid Postsecondary Education Expense Board Et Al.The Trademark Remedy Clarification Act (TRCA), 106 Stat. 3567, subjects the States to suits brought under § 43(a)"That sovereign immunity precluded a private action brought under the Lanham Act. For sustainability of such an action the state must either consent to the suit, or have had its sovereign immunity waived by Congress. The federal courts have no jurisdiction to entertain this suit because Florida's sovereign immunity was neither validly abrogated by the TRCA nor voluntarily waived."
514 U.S. 159
March 28, 1995
No. 93-1577
Qualitex Co. V. Jacobson Products Co., Inc.Whether the Trademark Act of 1946 (Lanham Act), 15 U.S. §§ 1051-1127 (1988 ed. And Supp. V), pemits the registration of a trademark that consists, purely and simply, of a color."Sometimes, a color will meet ordinary legal trademark requirements. And, when it does so, no special legal rule prevents color alone from serving as a trademark."
505 U.S. 763
June 26, 1992
No. 91-971
Two Pesos, Inc. V. Taco Cabana, Inc.Whether Trade Dress can be protected under § 43(a) of the Trademark Act of 1946 (Lanham Act), 60 Stat. 441, 15 U.S.C. § 1125(a) (1982 ed.), based on a finding of inherent distinctiveness, without proof that the trade dress has secondary meaning.“Proof of secondary meaning is not required to prevail on a claim under § 43(a) of the Lanham Act where the trade dress at issue is inherently distinctive”
485 U.S. 176
May 31, 1988
No. 86-495
K Mart Corp. V. Cartier, Inc.Whether the Secretary of the Treasury's regulation permitting the importation of certain gray-market goods, 19 CFR 133.21 (1987), is a reasonable agency interpretation of 526 of the Tariff Act of 1930 (1930 Tariff Act), 46 Stat. 741, as amended, 19 U.S.C. 1526“The regulation was an unreasonable administrative interpretation of 526.”
483 U.S. 522
June 25, 1987
No. 86-270
San Francisco Arts & Athletics, Inc. and Thomas F. Waddell, Petitioners V. United States Olympic Committee And International Olympic Committee.Scope and constitutionality of a provision of the Amateur Sports Act of 1978, 36 U.S.C. 371-396, that authorizes the United States Olympic Committee to prohibit certain commercial and promotional uses of the word "Olympic." “ When a word acquires value as the result of organization and the expenditure of labor, skill, and money by an entity, that entity constitutionally may obtain a limited property right in the word….The SFAA's claim that the USOC has enforced its § 110 rights in a discriminatory manner in violation of the Fifth Amendment fails, because the USOC is not a governmental actor to whom the Fifth Amendment applies. The fact that Congress granted it a corporate charter does not render the USOC a Government agent.”
469 U.S. 189
January 8, 1985
No. 83-1132
Park 'N Fly, Inc. V. Dollar Park & Fly, Inc.The court below determined that petitioner's mark is merely descriptive and respondent should not be enjoined from using the words "Park and Fly."“The holder of a registered mark may rely on incontestability to enjoin infringement, and an infringement action may not be defended on the grounds that the mark is merely descriptive”
456 U.S. 844
June 1, 1982
No. 80-2182
Inwood Laboratories, Inc. V. Ives Laboratories, Inc.Claims of contributory trademark liability“Manufacturers of generic drug, which was designed to duplicate appearance of a similar drug marketed by a competitor under a registered trademark, could not be held vicariously liable under Lanham Act for infringement of that trademark by pharmacists who mislabeled generic drugs with competitor's registered trademark.”
388 U.S. 350
No 9
June 12, 1967
United States V. Sealy, Inc.Trademark Liscense The territorial arrangements must be regarded as the creature of horizontal action by the licensees. It would violate reality to treat them as equivalent to territorial limitations imposed by a manufacturer upon independent dealers as incident to the sale of a trademarked product.
386 U.S. 714
No. 214
May 8, 1967
Fleischmann Distilling Corp. V. Maier Brewing Co.Whether federal courts have power in that context to award reasonable attorney's fees as a separate element of recovery“ Under the Lanham Act federal courts are without power to make Award of attorney's fees with the relief that may be granted when deliberate infringement of a valid trademark has been established”
376 U.S. 234
No. 106
March 9, 1964
Compco Corp. V. Day-Brite Lighting, Inc.Whether the use of a state unfair competition law to give relief against the copying of an unpatented industrial design conflicts with the federal patent laws."As we have said in Sears, while the federal patent laws prevent a State from prohibiting the copying and selling of unpatented articles, they do not stand in the way of state law, statutory or decisional, which requires those who make and sell copies to take precautions to identify their products as their own. A State of course has power to impose liability upon those who, knowing that the public is relying upon an original manufacturer's reputation for quality and integrity, deceive the public by palming off their copies as the original. That an article copied from an unpatented article could be made in some other way, that the design is "nonfunctional" and not essential to the use of either article, that the configuration of the article copied may have a "secondary meaning" which identifies the maker to the trade, or that there may be "confusion" among purchasers as to which article is which or as to who is the maker, may be relevant evidence in applying a State's law requiring such precautions as labeling; however, and regardless of the copier's motives, neither these facts nor any others can furnish a basis for imposing liability for or prohibiting the actual acts of copying and selling. Cf. Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 120 (1938). And of course a State cannot hold a copier accountable in damages for failure to label or otherwise to identify his goods unless his failure is in violation of valid state statutory or decisional law requiring the copier to label or take other precautions to prevent confusion of customers as to the source of the goods. Since the judgment below forbids the sale of a copy of an unpatented article and orders an accounting for damages for such copying, it cannot stand. Reversed."
376 U.S. 225
March 9, 1964
Sears, Roebuck & Co. V. Stiffel Co.Whether a State's unfair competition law can, consistently with the federal patent laws, impose liability for or prohibit the copying of an article which is protected by neither a federal patent nor a copyright.“An unpatentable article, like an article on which the patent has expired, is in the public domain and may be made and sold by whoever chooses to do so. What Sears did was to copy Stiffel's design and to sell lamps almost identical to those sold by Stiffel. This it had every right to do under the federal patent laws. To allow a State by use of its law of unfair competition to prevent the copying of an article which represents too slight an advance to be patented would be to permit the State to block off from the public something which federal law has said belongs to the public. The result would be that while federal law grants only 14 or 17 years' protection to genuine inventions States could allow perpetual protection to articles too lacking in novelty to merit any patent at all under federal constitutional standards. This would be too great an encroachment on the federal patent system to be tolerated… Sears has been held liable here for unfair competition because of a finding of likelihood of confusion based only on the fact that Sears' lamp was copied from Stiffel's unpatented lamp and that consequently the two looked exactly alike. Of course there could be "confusion" as to who had manufactured these nearly identical articles. But mere inability of the public to tell two identical articles apart is not enough to support an injunction against copying or an award of damages for copying that which the federal patent laws permit to be copied. Doubtless a State may, in appropriate circumstances, require that goods, whether patented or unpatented, be labeled or that other precautionary steps be taken to prevent customers from being misled as to the source, just as it may protect businesses in the use of their trademarks, labels, or distinctive dress in the packaging of goods so as to prevent others, by imitating such markings, from misleading purchasers as to the source of the goods. But because of the federal patent laws a State may not, when the article is unpatented and uncopyrighted, prohibit the copying of the article itself or award damages for such copying. The judgment below did both and in so doing gave Stiffel the equivalent of a patent monopoly on its unpatented lamp. That was error, and Sears is entitled to a judgment in its favor. Reversed."
369 U.S. 469
April 30, 1962
Dairy Queen, Inc. V. WoodCourt below struck petitioner's demand for a trial by jury, on the alternative grounds that either the action was "purely equitable" or that whatever legal issues were raised were "incidental" to equitable issues"The District Judge erred in refusing petitioner's demand for a trial by jury of the factual issues related to the question whether there had been a breach of contract or a trademark infringement, and the Court of Appeals should have corrected that error by granting the petition for mandamus."
344 U.S. 280
No. 38
December 22, 1952
Steele V. Bulova Watch Co.Whether a United States District Court has jurisdiction to award relief to an American corporation against acts of trade-mark infringement and unfair competition consummated in a foreign country by a citizen and resident of the United States."The Lanham Act..confers broad jurisdictional powers upon the courts of the United States. The statute's expressed intent is "to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trade-marks, trade names, and unfair competition entered into between the United States and foreign nations." § 45, 15 U. S. C. § 1127. To that end, § 32 (1) holds liable in a civil action by a trade-mark registrant "any person who shall, in commerce," infringe a registered trade-mark in a manner there detailed. "Commerce" is defined as "all commerce which may lawfully be regulated by Congress." § 45, 15 U. S. C. § 1127. The district courts of the United States are granted jurisdiction over all actions "arising under" the Act, § 39, 15 U. S. C. § 1121, and can award relief which may include injunctions, "according to the principles of equity," to prevent the violation of any registrant's rights. § 34, 15 U. S. C. § 1116."
331 U.S. 125
No. 680
April 28, 1947
Champion Spark Plug Co. V. Sanders Et Al., Doing Business As Perfect Recondition Spark Plug Co.Unfair competition and Trademark Infringement.“There is no proof that the defendants actually deceived the public by "palming off" their goods as the plaintiff's. It is impossible to suppose that the spark plugs were not known to be reconditioned when they were sold at much lower than the price obtained for new ones
Contention of the plaintiff that there should be an accounting of profits was properly denied.”
316 U.S. 203
No. 649
May 4, 1942
Mishawaka Rubber & Woolen Mfg. Co. V. S.S. Kresge Co.To review the provisions of the decree dealing with the measure of profits and damages for the infringement found by the two lower courts. Whether there was such an infringement as to entitle the petitioner to the remedies provided by the federal trade-mark laws was not an issue in this case"The protection of trade-marks is the law's recognition of the psychological function of symbols. …The burden is the infringer's to prove that his infringement had no cash value in sales made by him. If he does not do so, the profits made on sales of goods bearing the infringing mark properly belong to the owner of the mark…And one who makes profits derived from the unlawful appropriation of a mark belonging to another cannot relieve himself of his obligation to restore the profits to their rightful owner merely by showing that the latter did not choose to use the mark in the particular manner employed by the wrongdoer."
305 U.S. 111
Nos. 2 & 56
November 14, 1938
Kellogg Co. V. National Biscuit Co.Trademark infringement and Generic Terms; expired patents and public domain use “The plaintiff has no exclusive right to the use of the term "Shredded Wheat" as a trade name. For that is the generic term of the article, which describes it with a fair degree of accuracy; and is the term by which the biscuit in pillow-shaped form is generally known by the public. Since the term is generic, the original maker of the product acquired no exclusive right to use it”
265 U.S. 526
No. 32
June 9, 1924
William R. Warner & Co. V. Eli Lilly & Co.Descriptive trademarks and infringement. Unfair competition. “We agree with the courts below that the charge of infringement was not sustained. The name 'Coco-Quinine' is descriptive of the ingredients which enter into the preparation. The same is equally true of the name 'Quin-Coco.' A name which is merely descriptive of the ingredients, qualities or characteristics of an article of trade cannot be appropriated as a trade-mark and the exclusive use of it afforded legal protection. The use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake the origin or ownership of the product…..Respondent has no exclusive right to the use of its formula…The petitioner or any one else is at liberty under the law to manufacture and market an exactly similar preparation containing chocolate and to notify the public that it is being done… But the imitator of another's goods must sell them as his own production. He cannot lawfully palm them off on the public as the goods of his competitor. The manufacturer or vendor is entitled to the reputation which his goods have acquired and the public to the means of distinguishing between them and other goods; and protection is accorded against unfair dealing whether there be a technical trade-mark or not. The wrong is in the sale of the goods of one manufacturer or vendor as those of another…The legal wrong does not consist in the mere use of chocolate as an ingredient, but in the unfair and fraudulent advantage which is taken of such use to pass off the product as that of respondent. The use disassociated from the fraud is entirely lawful..The decree of the Circuit Court of Appeals is reversed and the cause remanded to the District Court.”
264 U.S. 359
No. 197
April 7, 1924
Prestonettes, Inc. V. CotyTrademark Infringement“ A trade-mark only gives the right to prohibit the use of it so far as to protect the owner's good will against the sale of another's product as his…There the trade-mark protected indicated that the goods came from the plaintiff in the United States, although not made by it, and therefore could not be put upon other goods of the same make coming from abroad. When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth. It is not taboo.”
262 U.S. 209
No. 291
May 21, 1923
American Steel Foundries V. Robertson, Commissioner Of Patents, And Simplex Electric Heating Company.Whether the closing words of § 9 "and the same rules of practice and procedure shall govern in every stage of such proceedings, as far as the same may be applicable", are broad enough in their scope to include the "remedy by bill in equity" granted to unsuccessful applicants for a patent in § 4915.“We do not regard such differences as important in interpreting section 9 when it is obvious from that section and the whole of the Trade-Mark Act that Congress intended to produce a parallelism in the mode of securing these two kinds of government monopoly from the Patent Office.”
262 U.S. 209
No. 156
May 21, 1926
American Steel Foundries V. Robertson'1. Does the clause of section 5 of the Trade-Mark Act of February 20, 1905, 'Provided, that no mark which consists merely in the name of an individual, firm, corporation, or association not written, printed, impressed, or woven in some particular or distinctive manner, or in association with a portrait of an individual ... shall be registered under the terms of this act,' prohibit registration as a trade-mark under said act of the word 'Simplex' by the plaintiff under the recited facts?
'2. Does the said clause quoted of section 5 prohibit registration under the Act of February 20, 1905, of a trade-mark consisting solely of a single word, otherwise registrable under the said act, if that word is the salient feature of the name of a corporation, not the applicant for registration?
'3. Does the above-quoted clause of section 5 of the Trade-Mark Act of February 20, 1905, prohibit the registration under said act of a common-law trade-mark which is the name, or part of the name, of another than the applicant, whose business relates exclusively to goods in a different and noncompeting class from the goods on which the trade-mark is used by the applicant?'
“ Question No. 1, therefore, should be answered in the negative, and, since this will dispose of the case, categorical answers to the other questions are deemed not necessary.”
260 U.S. 689
No. 190
January 29, 1923
A. Bourjois & Co. V. KatzelTrademark Infringement “ We are of opinion that the plaintiff's rights are infringed. After the sale, the French
manufacturers could not have come to the United States and have used their old marks
in competition with the plaintiff. That plainly follows from the statute authorizing
254 U.S. 143
No. 101
December 6, 1920
Coca-Cola Co. V. Koke Co. of AmericaSecondary meaning“A mark that develops secondary meaning in the marketplace retains trademark status and is protected against claims of unfair competition when, for example, a descriptive trademark no longer accurately describes the product due to a change in formulation.”
252 U.S. 538
No. 178
April 19, 1920
Estate of P.D. Beckwith, Inc., V. Commissioner of PatentsRegistration eligibility;
“Despite the statutory prohibition against registering merely descriptive trademarks, a trademark featuring descriptive words along with other elements, such as non-descriptive words and a fanciful or arbitrary design, can be registered so long as the applicant disclaims any claim to the descriptive words except as they appear in the whole mark.
the Court of Appeals fell into error in ruling that the words "Moistair Heating System" must be "eliminated" from the trade-mark of the applicant as it had been theretofore used, and that the requirement of the act of Congress for the registration of trade-marks would be fully complied with if registration of it were permitted with an appropriate declaration on the part of the applicant that no claim is made to the right to the exclusive use of the descriptive words except in the setting and relation in which they appear in the drawing, description and samples of the trade-mark filed with the application.”
248 U.S. 90
No. 27
Dec. 9, 1918
United Drug Co. V. Theodore Rectanus Co.Scope of trademark rights; Territorial extent of trademark rights.“A trademark right is not a right in gross like statutory copyright or patent—the trademark right, being attached to a business or trade, does not permit a trademark owner to merely enforce negative rights; The adoption of a trademark does not, by itself, reserve right of protection to territories where the owner has not already extended her trade, even if she may desire to later.”
240 U.S. 403
No. 30
March 6, 1916
Hanover Star Milling Co. V. MetcalfTerritorial extent of trademark rights."A trademark owner who confines his trademark usage to a certain territory cannot enjoin use of that trademark by someone else who in good faith established extensive and continuous trade in another territory where the plaintiff trademark owner's product is unknown."
240 U.S. 251
No. 37
February 21, 1916
Hamilton-Brown Shoe Co. V. Wolf Bros. & Co.Damages;
unfair competition without trade-mark infringement.
Because of the impossibility of the task, a trademark owner does not have the responsibility of apportioning defendant's profits between those attributable to infringement and those attributable to the "intrinsic merit" of the defendant's product.
237 U.S. 618
No. 217
June 1, 1915
G. & C. Merriam Co. V. Syndicate Pub. CoRegistration eligibility; Generic terms.Under the Act of 1881, after a copyrighted work expires, the word used to designate that work falls into the public domain and cannot be trademarked (here, "Webster" could not be trademarked for dictionaries whose copyrights had already expired).
233 U.S. 461
No. 184
April 27, 1914
Thaddeus Davids Co. V. DavidsRegistration eligibilityMarks otherwise prohibited by the Act of 1920 (for example, surnames) can be registered if used exclusively for ten years preceding the act, per section 5 of that Act.
“The reproduction, copy or imitation which constitutes infringement must be such as is calculated to mislead the public with respect to the origin or ownership of the goods and thus to invade the right of the registrant to the use of the name or term as a designation of his merchandise. This we conceive to be the meaning of the statute. It follows that where the mark consists of a surname, a person having the same name and using it in his own business, although dealing in similar goods, would not be an infringer, provided that the name was not used in a manner tending to mislead and it was clearly made to appear that the goods were his own and not those of the registrant.”
221 U.S. 580
May 29, 1911
Baglin V. Cusenier Co.Geographic terms; Abandonment“A non-trademarkable geographic indicator is not to be confused with other designations of origin (e.g., town in France vs. monastic order); The liquidator of physical assets has no claims to foreign trademarks; Abandonment requires evidence of practical abandonment and intent to abandon.
"Abandonment in industrial property is an act by which the public domain originally enters or reenters into the possession of the thing, (commercial name, mark or sign,) by the will of the legitimate owner. The essential condition to constitute abandonment is, that the one having a right should consent to the dispossession. Outside of this there can be no dedication of the right, because there cannot be abandonment in the juridical sense of the word."
220 U.S. 446
No. 106
April 10, 1911
Standard Paint Co. V. Trinidad Asphalt Mfg. Co.Descriptive terms; Unfair competition“No one can appropriate as a trade-mark a generic name or one descriptive of an article of trade, its qualities, ingredients or characteristics, or any sign, word or symbol which from the nature of the fact it is used to signify others may employ with equal truth."
A descriptive mark is not trademarkable, even if it is not intended to accurately describe the product; There can be no claim of unfair competition against imitation of a descriptive mark, since acknowledging such a right would amount to granting a trademark to the descriptive mark.”
201 U.S. 166
No. 187
March 19, 1906
A. Leschen & Sons Rope Co. V. Broderick & Bascom Rope Co.Trademark registration; Description of the applied Trademark."It is the plain intention of the act that, where the distinction of a mark depends upon color,
that will not do. You may register a mark, which is otherwise distinctive, in color, and that gives you the right to use it in any color you like; but you cannot register a mark of which the only distinction is the use of a color, because practically under the terms of the act that would give you a monopoly of all the colors of the rainbow.”
212 U.S. 285
No. 86
February 23, 1909
E.C. Atkins & Co. V. MooreReviewability of trademark decision"A court of appeals decision regarding trademark registration affirming the Commissioner of Patent's decision, and directs the clerk to certify its opinion to the Commissioner, is not final and appealable to the Supreme Court."
198 U.S. 118
No. 130
April 24, 1905
Howe Scale Co. of 1886 V. Wyckoff, Seamans & BenedictNames as marks“Parties have the right to use their names in trade as an individual, a firm, and a corporation, except as cover for unfair competition. ...An ordinary surname cannot be appropriated as a trademark by any one person as against others of the same name who are using it for a legitimate purpose; although cases are not wanting of injunctions to restrain the use, even of one's own name, where a fraud upon another is manifestly intended, or where he has assigned or parted with his right to use it.”
191 U.S. 427
No. 53
December 7, 1903
La Republique Francaise V. Saratoga Vichy Spring Co.Laches; Geographic descriptors“The doctrine of laches has no application to the neglect of the government to pursue trespassers upon its rights, and that the French Republic is entitled to the benefit of that rule. It is at least open to doubt whether the maxim nullum tempus, applicable to our own government, can be invoked in behalf of a foreign government suing in our courts.”
187 U.S. 516
No. 36
January 5, 1903
Clinton E. Worden & Co. V. California Fig Syrup Co.Limitation on injunctions“A tendency to deceive the public and induce buyers to purchase defendant's preparation, believing the same to be complainant's preparation… the name 'Syrup of Figs' does not, in fact, properly designate or describe the preparation made and sold by the California Fig Syrup Company, so as to be susceptible of appropriation as a trade-mark, and that the marks and names, used upon the bottles containing complainant's preparation, and upon the cartons and wrappers containing the bottles, are so plainly deceptive as to deprive the complainant company of a right to a remedy by way of an injunction by a court of equity”
179 U.S. 665
No. 121
January 7, 1901
Elgin Nat’l Watch Co. V. Illinois Watch Case Co.Secondary meaning; Jurisdiction"Marks that cannot themselves be registered as trademarks but have achieved secondary meaning can still be protected from unfair competition; under the 1881 Act, circuit courts do not have jurisdiction over a dispute by two parties of the same state not involving a registrable trademark."
179 U.S. 19
No. 29
December 16, 1900
Saxlehener V. Eisner & Mendelson Co.Abandonment; Laches; Trade dress“The abandonment defense requires evidence of both practical abandonment and intent to abandon; laches defeats a trademark owner's rights when he knew or should have known that others were using the mark, and failed to take action such that the name became generic to the whole class of products; trade dress that would mislead the casual customer constitutes infringement, and is not cured by uses of additional labels.”
163 U.S. 169
No. 12
May 18, 1896
Singer Mfg. Co. V. June Mfg. Co.Generic terms; Unfair competition“The name of a patented article that comes to generically describe that article falls into the public domain upon expiration of the patent; but, it amounts to unfair competition when other parties mislead the public by suggesting that its product is manufactured by the patenting company.”
150 U.S. 460
No. 115
December 4, 1893
Columbia Mill Co. V. AlcornGeographic description ; Words in common use as designating locality, section, or region of country.Geographic description ; Words in common use as designating locality, section, or region of country.“if the device, mark, or symbol was adopted or placed upon the article for the purpose of identifying its class, grade, style, or quality, or for any purpose other than a reference to or indication of its ownership, it cannot be sustained as a valid trade-mark… Such trade-mark cannot consist of words in common use as designating locality, section, or region of country.”
149 U.S. 562
No. 261
May 10, 1893
Coats V. Merrick Thread Co.Fraudulent intent; Whether, comparing the two designs upon the main or upper end of the spool, there is such resemblance as to indicate an intent on the part of defendants to put off their thread upon the public as that of the plaintiffs, and thus to trade upon their reputation; Infringement; Trade dress; Unfair competition.“No such monopoly could be claimed of mere numerals, used descriptively, and therefore not capable of exclusive appropriation because they represent the number of the thread, and are, therefore, of value as information to the public”
139 U.S. 540
N0. 226
April 8, 1891
Brown Chemical Co. V. Meyer et al.Infringement; Descriptive terms; Names as marks; Ordinary Surname as Trademark“Words which are merely descriptive of the character, qualities, or composition of an article, or of the place where it is manufactured or produced, cannot he monopolized as a trademark…An ordinary surname cannot be appropriated as a trademark by any one person as against others of the same name who are using it for a legitimate purpose.”
138 U.S. 537
No. 101
March 2, 1891
Lawrence Manufacturing Co. V. Tennessee Manufacturing Co.Descriptive and quality indicating Trademarks; Trademark infringement;
Unfair and fraudulent competition.
“An exclusive right to the use of words, letters or symbols, to indicate merely the quality of the goods to which they are affixed cannot be acquired. If the primary object of a trademark be to indicate origin or ownership, the mere fact that the article has obtained such a wide sale that it has also become indicative of quality is not of itself sufficient to make it the common property of the trade, and thus debar the owner from protection; but if the device or signal was not adopted for the purpose of indicating origin, manufacture or ownership, but was placed upon the article to denote class, grade, style or quality, it cannot be upheld as technically a trademark…..Unfair and fraudulent competition against the business of another, with intent on the part of the offender to avail himself of the reputation of the other in order to palm off his goods as the goods of the other, would in a proper case constitute ground for relief in equity, but the deceitful representation or perfidious dealing must be made out or be clearly inferable from the circumstances.
128 U.S. 514
December 10, 1888
Menendez V. HoltFanciful quality marks; Transference of goodwill; Laches“A mark that indicates a brand's special selection of its goods using arbitrary terms is capable of trademark; trademark and goodwill are retained by the continuing company and not transferred to a partner departing from that company; delay in bringing infringement suit may preclude recovery for past damages, but not injunction against future injury.”
128 U.S. 598
No. 49
December 10, 1888
Goodyear's Rubber Mfg. Co. V. Goodyear Rubber Co.Descriptive terms“Names which are thus descriptive of a class of goods cannot be exclusively appropriated by any one.”
128 U.S. 182
No. 39
November 5, 1888
Liggett & Myers Tobacco Co. V. FinzerSimilarity of marks; Likelihood of misleading“Though both featuring stars, two marks for competing tobacco brands are so different that there is no possibility of misleading consumers.”
100 U.S. 82
In re Trade-Mark CasesThese were 3 cases consolidated into single appeal. Cases titled as: (1)United States v. Steffens, (2) United States V. Wittemean (3) United States V. Johnson. The first two cases dealt with alleged counterfeiting of marks associated with champagne. The third dealt with alleged counterfeiting of a mark associated with whiskey. These led to Constitutional basis for trademark regulation“As the first and only attempt by Congress to regulate the right of trademarks is to be found in the Act of July 8, 1870, to which we have referred, entitled "An Act to revise, consolidate, and amend the statutes relating to patents and copyrights," The Copyright Clause of the Constitution gave Congress no power to protect or regulate trademarks.”
96 U.S. 245
McLean V. FlemingLikelihood of misleading;
Exact similitude ;
Laches or unreasonable delay in claiming the damages and cost; Impact of Laches to order enjoin; Impact of Laches to cost.
“Exact similitude is not required to constitute an infringement or to entitle the complaining party to protection. If the form, marks, contents, words, or the special arrangement of the same, or the general appearance of the alleged infringer's device, is such as would be likely to mislead one in the ordinary course of purchasing the goods, and induce him to suppose that he was purchasing the genuine article, then the similitude is such as entitles the injured party to equitable protection, if he takes seasonable measures to assert his rights, and to prevent their continued invasion.
Cases frequently arise where a court of equity will refuse the prayer of the complainant for an account of gains and profits, on the ground of delay in asserting his rights, even when the facts proved render it proper to grant an injunction to prevent future infringement…Acquiescence of long standing is proved in this case, and inexcusable laches in seeking redress, which show beyond all doubt that the complainant was not entitled to an account nor to a decree for gains or profits; but infringement having been proven, showing that the injunction was properly ordered”
101 U.S. 51
Amoskeag Manufacturing Co. V. D. Trainer & SonsLetters, Figures or symbols used as quality Indicators of a product.“Letters or figures affixed to merchandise by a manufacturer for the purpose of denoting its quality only cannot be appropriated by him to his exclusive use as a trademark.
The label used by the defendants is not calculated to mislead purchasers as to the origin of the goods to which it is attached.”
80 U.S. 311
Delaware & Hudson Canal Co. V. ClarkGeographic descriptors and generic termsGeographical names designating the good's place of production (as opposed to the good's producer) cannot be trademarked.
“It is not necessary that a word which may be adopted as a name and trade-mark should be a new creation never before known or used, to entitle it to be so adopted. Any word in common use may be taken, if its application be original, and so far peculiar as to be capable, when known to the public, of distinguishing the property of the party so adopting it, and to which it may be attached, from that of other parties. In such case the right of the public to use the word is not abridged. It can be used as originally and in any and every other way imaginable, except in its peculiar combination with the word 'coal.' The exceptions to the right to appropriate a word for a trade-mark are, that it cannot be done when the word adopted is merely used as descriptive of quality,
the defendant has invaded no right to which the plaintiffs can maintain a claim. By advertising and selling coal brought from the Lackawanna Valley as Lackawanna coal, he has made no false representation, and we see no evidence that he has attempted to sell his coal as and for the coal of the plaintiffs. If the public are led into mistake, it is by the truth, not by any false pretense. If the complainants' sales are diminished, it is because they are not the only producers of Lackawanna coal, and not because of any fraud of the defendant.”



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