Gilson on Trademarks - Clearing a Path for the Unregistrables: Enforcement Use Pamphlet (INTA)

Publisher: Matthew Bender

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ISBN: 9781632827333
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This article does not purport to answer the likelihood of confusion preclusion question posed to the Supreme Court. Instead, it considers the validity issue, a determination about when a trademark may be used and enforced. As a preface to the first question at oral argument in B&B Hardware v. Hargis, Justice Ginsberg recognized the distinction:

"[T]here are exceptions to preclusion even though you would see the identical issue, and one of them is when the stakes are higher in the second proceeding than in the first . . . . And it seems to me this is such a case, because it's one thing to say that we won't register your mark and another to say you can't use the mark."

The relationship between the Lanham Act's standards for trademark registration as interpreted by the USPTO and those for common law trademark protection has yet to be defined. They are symmetrical but not identical. Nonetheless, some courts have incorrectly applied the disqualifications for registration to unrelated questions of trademark validity.

Does a USPTO decision that a trademark is unregistrable require a court to find the trademark invalid? Should a court measure an unregistered trademark against the list of disqualifications in Section 2 before finding it to be valid? The answer to both questions is a definitive no.