What is the Lanham Act?

What is the Lanham Act?

The Lanham (Trademark) Act is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. The exact text of the Lanham Act can be found in Title 15 of the United States Code Chapter 22.

Subchapter I – details the requirements that a trademark must meet to be placed on the Principal Register. The placing of a trademark on the principal register grants a trademark holder various rights, including the right to prevent others from infringing on the trademark. Among the requirements are prohibitions against the registration of marks that are confusingly similar to existing marks, are generic or merely descriptive, are scandalous or immoral, or fall onto certain other prohibited categories. It should be noted however that the United States Supreme Court in Matal v. Tam in 2017, the Supreme Court ruled that a provision in §2(a) of the Lanham Act, which denys registration to any trademarks seen as disparaging an individual or group, was deemed an unconstitutional restriction of an applicant’s freedom of speech.

Subchapter II – details the requirements that a trademark must meet to be placed on the Supplemental Register, for certain marks that cannot be registered under Subchapter I, but may become registrable in the future, such as those that are merely descriptive. Marks placed on the Supplemental Register are not granted all the protections of registration on the Principal Register, but registration does provide notice to potential infringers that the mark is in use, and also provides some procedural benefits.

Subchapter III – lists the general provisions of the Lanham Act. The procedure to classify trademarks, the rights granted to trademark holders, the penalties for infringement of trademarks, the penalties for false designations of origin, and many other issues are detailed in this subchapter.

Subchapter IV – details the United States implementation of the Madrid Protocol. The protocol is a filing treaty and not a substantive harmonization treaty. The Madrid Protocol provides a cost-effective and efficient way for trademark holders to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application. While an International Registration may be issued, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it. The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all members.