Anthony Holman will discuss the past and present status of liability under the Lanham Act, 15 U.S.C. § 1051, et seq.  The format examines federal cases dealing with both tangible and intangible uses of trademarks from local and other jurisdictions, and further discusses possible ways in which such liability arises.

The topics covered include:

1. What constitutes a trademark and how to test its distinctiveness, likelihood of confusion
2. Standing
1. Zone of Interests covered by Lanham Act, according to J. Scalia (Sec. 1127) - Having commercial/pecuniary injury from trademark registration; prioritizing use of mark
2. Injury proximately resulting from violation of statute
3. Redressability/damages, likelihood of future harm, in addition to damages that cannot be recovered
3. Common causes of action that arise under the Lanham Act
1. Sections 1051, 1064 – cancel registration of certain marks with the USPTO, but neither independently confers civil liability in District Court
2. Section 1120 – civil liability for harm caused by false/fraudulent trademark registration
3. Section 1125 – false designation of origin, description of mark
4. Covering the elements of a valid 1051, 1064 claim:
1. Ownership through registration, continuous use in commerce
1. Factor test for usage – market penetration test
2. Establishing priority in mark
5. Covering the elements of valid 1120 claim (fraudulent registration):
1. Concurrent use of same mark when application was made
2. Non-applicant had superior legal rights to mark – and establishment thereof
3. Applicant knew that non-applicant had superior rights
4. Applicant intended to procure registration of mark by not disclosing non-applicant’s superior interest
5. Importance of “damages sustained in consequence thereof”
6. Covering the elements of a valid Section 1125 claim, ACPA claim
1. Ownership of mark
2. Use of mark in commerce vs. in connection with goods and services
3. Likelihood of confusion
4. Discussion of factors in ACPA claim
5. Types of damages that can be awarded
7. Overview of process for registering copyrights and trademarks with the US Patent & Trademark Office