Barrett on the History of the Lanham Act

Margreth Barrett has published an article called, Finding Trademark Use: The Historical Foundation for Limiting Infringement Liability to Uses "In the Manner of a Mark," 43 Wake Forest L. Rev. 893 (2008). Here is the abstract:

U.S. courts and scholars are debating the existence and scope of a "trademark use" prerequisite for infringement liability, but the discussion has lacked a proper grounding in the common law and the legislative history of the Lanham Act. This Article undertakes to fill that gap. The Article first evaluates the common law of technical trademark infringement and unfair competiton as it existed and developed from the late 1800s to 1946, when the Lanham Act was enacted, and demonstrates that the law imposed a form of "trademark use" limitation on both the technical trademark infringement and the unfair competition (trade name infringement) causes of action.

Having identified the trademark use limitation in the common law, the Article then considers whether the Lanham Act codified it. Through use of the Lanham Act's legislative history, the Article demonstrates three different ways in which the Lanham Act can be understood to have incorporated the common law trademark use limitation: (1) through the "use in commerce" language in the infringement provisions, coupled witht he Lanham Act Section 45 definition of "use in commerce"; (2) through the phrase "on or in connection with" in the registered and unregistered mark infirngement provisions; and (3) through implicit incorporation of the common law, even without any express statutory language to that effect.

Finally, the Article discusses how the trademark use requirement should be understood and defined in modern contexts. The Article reviews the policy justifications for imposing the trademark use limitation and discusses the flexibility that courts enjoy in construing and applying statutes that undertake to codify common law doctrine. It then describes three basic characteristics of a modern trademark use limitation, based on public policy considerations and the doctrine's historic formulation. To make a potentially infringing "trademark use," the infringement defendant must apply the allegedly infringing word or symbol in a manner: (1) that consumers can perceive with their senses; (2) that closely, directly associates the word or symbol with products or services that the defendant is advertising, selling, or distributing to consumers; and (3) that is likely to make a separate commercial impression on consumers.