The Role of the States in United States Trademark Law

The Role of the States in United States Trademark Law

By John T. Cross

Grosscurth Professor of Law, University of Louisville, Louis D. Brandeis School of Law.

Excerpt from On Intellectual Property Law: The Role of the States in United States Trademark Law, 49 U. Louisville L. Rev. 485

I. Introduction

Patent, copyright, and trademark constitute the "big three" areas of United States intellectual property law. But from a federalism perspective, there is a marked difference between trademark law and the other two. Patent and copyright are predominantly federal. The Patent and Copyright Acts have a very broad preemptive reach, overriding not only state laws that conflict with the federal regimes, but also those state laws that provide parallel protection. 1 Moreover, federal courts have exclusive jurisdiction over claims arising under the patent and copyright laws. 2 Therefore, neither state law nor state courts play any significant role in patent or copyright.

The situation in trademark is very different. Both the federal government and the states may exercise control over trademarks. While there is a federal statute-the Lanham Act 3 -regulating many aspects of trademark law, that statute has very little preemptive scope. The only laws explicitly preempted by the Lanham Act are those that would require the owner of a registered mark to alter the mark in order to display it, 4 as well as any state-law dilution claims against the owner of a federally registered mark. 5 State laws can, and do, afford a number of causes of action that inure to the benefit of trademark owners or otherwise affect trademarks. 6 Many of these state-law actions parallel a federal trademark claim. 7

State courts also play a much greater role in trademark than they do in patent and copyright. Unlike patent and copyright ...

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