Although they have no tangible value, in many instances a trademark can be the most valuable asset a company possesses. This article explores the history of trademark law and examines several important examples of trademark litigation that helped shape legal precedent.

Understanding Trademarks

The primary purpose of a trademark is to distinguish and authenticate a company or its products from other manufacturers and their similar competing products. According to the U.S Patent and Trademark Office, a trademark is “a word, name, symbol or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.” This can include the shape of the goods, their packaging, sounds and even distinctive smells.

Trademarks are not designed to prevent others from making or selling comparable goods or products. Instead, they serve as protection to the owner of the trademark so that competitors can not intentionally misrepresent their own goods to be the same or largely similar.

Origins of Trademark Law

The original U.S trademark law was enacted after the Civil War, and came as a result of the rapid growth of trade that followed the Reconstruction period. Manufacturers quickly recognized the need for protection from theft of trade identity and infringement. As a result, the first federal trademark law was passed in 1870 and amended in 1878.

It was subsequently struck down in the “Trade-Mark Cases,” of 1879, where the Supreme Court ruled that the laws exceeded the powers granted to the patent and copyright clauses of the Constitution. As a result, Congress passed the Trademark Act of 1881 which established a trademark law that applied to the interstate commerce clause in the Constitution. The law underwent further revision in 1905 to accommodate the developing economy. The Lanham Act of 1946 completed the transformation of trademark law to include not only the intention of the trademark, but its actual use as well.

Trademark Case Law and Precedent

There are numerous precedents that have been established through extensive adjudication of court cases involving trademarks. Some of these cases have served to establish the guidelines which govern the parameters and the scope of trademark protection.

In Zatarains, Inc. v. Oak Grove Smokehouse, Inc., the Fifth Circuit Court of Appeals dealt with the issue of whether potential confusion preempted the application of the fair use defense in trademark infringement.

Oak Grove and Zatarain’s both sold similar fish seasoning products. Zatarain’s product was called, “Fish Fri” while Oak Groves product was named, “fish fry.” Zatarain had registered their product name in 1962, and it was a well known common name in the New Orleans community.

Oak Grove claimed the fair use defense, asserting that their application of the term “fish fry” was merely functional. On appeal, the Fifth Circuit ruled that indeed Oak Grove could use the term “fish fry” in the descriptive sense as long as they purposely did not intend to confuse customers as to the source of the goods.

Continue on to the next page for more details on important trademark court decisions.

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