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The History Of Trademark Law

The use of marks to identify and distinguish property dates way back and for good reason. Until the invention of the printing press, and subsequent invention of moveable type, books were rare and very expensive. Few beyond the clergy and nobility learned to read. Even with the advent of more plentiful books and newspapers, literacy was slow to catch on. Servants and slaves who could read and write, as well as do numbers, were prized and highly regarded. The great majority of people could not read or write nor did they have a need. for either. Hence symbols became the logical method of letting people know who did what and what belonged to whom.

The barber's pole is an excellent example of ancient and modern trademark use. It conveys the instant message of what business is at that location.

A "trademark for commercial goods" necessarily requires commercial goods being manufactured and traded. Trademarks not only identify goods, but create a distinction between goods from various sources. The trade of goods came into practice long ago, and the use of trademarks is thought to have evolved from that. Craftsmen applied their names, unique drawings, or simple inscriptions to identify goods they created. Even though these marks surely helped in distinguishing goods, it is difficult to say that these marks were trademarks with distinctiveness in the modern sense of the word.

The history of trademark law begins when trademark laws where first officially passed in the 19th century by Europe and the United States. However, this isn't the first Trademark-like situations that have emerged in History. Throughout history, going back thousands of years, there have been marks, symbols, or graphics that have been associated with specific individuals or organizations. They have been used in advertisements, seals of approval, etc.

Early Marks

The earliest marks were probably those marking animals so a farmer, rancher or lord could distinguish what animals belonged to whom. Since early commerce was limited to the immediate locality few merchants needed marks on their products. However, as commerce developed, marks began to serve a variety of purposes. Egyptian structures erected as early as 4000 B.C. show quarry marks and stonecutters' signs. Artifacts from places such as ancient Egypt have been found with various symbols carved thereon for religious and superstitious reasons. "Potters marks" appeared in relics left from the Greek and Roman periods and were used to identify the maker (potter) of a particular vessel. Roman signboards were found in the ruins at Pompeii. Symbols on goods used in ancient Rome and other countries near the Mediterranean sea had similar characteristics to the trademarks of today

Use of marks to indicate ownership of goods was particularly important for owners whose goods moved in transit, as those marks often allowed owners to claim goods that were lost. Producers often relied on identifying marks, for example, to demonstrate ownership of goods recovered at sea. In medieval England, sword manufacturers were required to use identifying marks so that defective weapons could be traced back to the seller for possible punishment. Owners also carved identifying marks into the beaks of swans they were allowed to own by royal privilege.

Around the 10th century, a mark called a "merchants mark," appeared, and symbols among traders and merchants increased significantly. These marks, which can be considered one kind of "proprietary mark," essentially were used to prove ownership rights of goods whose owners were missing due to shipwrecks, pirates, and other disasters.

The English in the 13th century created trademark laws to avoid any replication of products from a certain company to another.

In the 14th and 15th centuries when dramatic emergence of merchant and craft guilds, trademark-like symbols and logos started to appear as identifiers for these firms. Local guilds often developed reputations for the quality of their products, and when they did, the names of the towns or regions in which those guilds operated became repositories of goodwill. To maintain that goodwill, guilds needed to be able to restrict membership and identify and punish members who produced defective products. Guilds therefore required their members to affix distinguishing marks to their products so the guilds could police their ranks effectively. These symbols were different from modern marks in that they emerged to benefit the guilds, and were not for the benefit of the production mark owner.

The Industrial Revolution sparked the advent of what is now modern-day capitalism. Gradually, the guild systems disintegrated, and free business was established. Marks began to actively identify the source of goods rather than obligatory guild membership. About this time, special criminal laws protecting trademarks were also developed out of early forgery, counterfeiting, and fraud laws. Civil protection was gradually and systematically established against those who would use another's mark with out permission ("infringers").


Under the English common law system, fraud and the improper use of marks known as passing off" an action for which remedies were contemplated that continue today. A trademark equity law was added eventually to supplement common law protection, but England did not establish a comprehensive system for trademark protection until 1905, nearly 50 years after the establishment behind France. Prior to the 1905 Act, "The Merchandise Marks Act," which focused on provisions dealing with deceptive indications, was passed on August 7, 1862. The "Trade Mark Registration Act" was also passed in 1875. The 1905 Act was amended in 1919 and 1937, until a new Act was passed in 1938. This Act fundamentally changed the system in many ways, permitting registration based on intent-to-use, creating an examination-based process, and creating an application publication system. It equipped the English system with advances that surpassed the trademark law of France at that time. Consequently, U.S. and Japanese trademark laws were greatly influenced by the 1938 Act.

England's 1938 Trademark Act contained novel concepts such as "associated trademarks," a consent-to- use system, a defensive mark system, and non-claiming right system. Further, unlike U.S. trademark law at that time, even without actual use, an applicant who had a "bona fide intent to use" a mark could gain registration. On the other hand, registrations under the British law, unlike registrations in Japan or Germany, would only provide a presumption of trademark ownership, without establishing a "fixed right." In England, on October 1, 1986, a service mark registration system was incorporated (The 1986 Act). By 1995, England, he U.S., Germany, France and Japan, the so-called G5 ("Group of 5") were all utilizing a service mark registration system. Almost all industrialized countries have a service mark registration system today. England, following an EC directive, expanded the scope of its trademark subject matter, amending its trademark requirements on October 10, 1994. In addition to this, the associated trademarks system and the defensive mark system leftover from the 1938 Act were abolished.


Although trademarks are the oldest form of intellectual property and have been protected at common law for decades, they were the last to be protected by a federal statute in the US, and infringement cases were very rare until the late 19th century.

The first trademark statute enacted shortly after the Civil War, came as a response to the rapid growth of trade that followed the period of Reconstruction and the need of manufacturers for trade identity and better protection from infringement. The first Federal Trademark law was enacted in 1870. The law was amended in 1878, and shortly thereafter it was struck down by the Supreme Court in The Trade-Mark Cases, 100 U.S. 82 (1879), for exceeding the powers granted by the patent and copyright clause of the Constitution. Congress responded with the Trademark Act of 1881, which was based on its Commerce Clause powers. It was therefore abolished. In its place, a trademark law was enacted on March 3, 1881 that targeted trademarks used in interstate commerce (and in the commerce with Indian tribes) based on the interstate commerce clause in the U.S. Constitution (art. 1, sec. 8, cl. 3). This law, however, was unable to accommodate the development of the American economy and underwent a major amendment in 1905. It underwent further partial revisions occasionally during subsequent years

The post World War II, economic boom fueled an explosion of trademark activity and brought about the need to educate the public about trademark law Upon the enactment of the Lanham Act on July 5, 1946, American trademark law came to rank equally with English or German trademark laws. The Act was named after a congressman who had devoted himself to its creation in accordance with American traditions. The Lanham Act is similar to English trademark law because it adopted use-based principles as its foundation. The Act, however, put much more emphasis on use than the English law did initially, requiring not merely an intention to use the mark, but an actual use of the mark in order for the mark to be registered. This emphasis, however, was later altered in response to changes made internationally.

Modern U.S.

The Lanham Act establishes a procedure for federal registration of trademarks. If a trademark meets certain qualifications, it can be listed on the Principal Register, which affords it many benefits. Other trademarks can be listed on the Supplemental Register, which exists to allow trademarks not otherwise registrable in the United States to be registered from foreign countries that require home-country registration first, and to allow registration for descriptive marks not distinctive enough to qualify for the Principal Register. Registration is not mandatory to receive trademark protection, but federal trademarks on the Principal Register receive significantly stronger protection than unregistered trademarks. Federal registration is not mandatory to receive trademark protection, but a mark owner seeking to enforce trademarks in US federal court needs either a federal registration or a violation of the Lanham Act's specific sections on false advertising or unfair competition.

Federal registration is limited to trademarks and service marks being used by the mark owner in interstate commerce. Among other criteria, federal registered trademarks may not be "immoral, deceptive or scandalous," or "disparage or falsely suggest a connection with persons, institutions, beliefs or national symbols." They may not be "merely descriptive," "deceptively misdescriptive," "primarily geographically misdescriptive," "primarily merely a surname," or "functional." See 15 U.S.C. 1052.

In addition to federal registration, each of the fifty US states has its own system of trademark registration. If a trademark meets the state's qualifications, it can be listed on the state's registry of trademarks. State registration is not mandatory to receive trademark protection or to use a state's court system to enforce trademark rights. The US federal and state trademark registration systems co-exist side-by-side. It is possible for a state-registered trademark, or a common law unregistered trademark, to have rights superior to a trademark with a valid federal registration, due to an earlier date of adoption combined with actual and continuous use.

Only trademarks on the Principal Register and the Supplemental Register can be marked with the symbol to denote their higher level of protection. Any trademark, including unregistered trademarks or trademarks on the Principal or Supplemental Register, can be marked with the or SM (service mark) symbol. These symbols exist to place third parties on notice that they may infringe the trademark by using it without authorization.

The spread of television in the 1950's led to public awareness of countless products on the market, resulting in an enormous increase in the amount of trademark applications at the Patent Office and a backlog of appeals at the Patent Office. This led to the creation of the Trademark Trial and Appeal Board (TTAB) in 1958. Then, in 1962, a few minor changes were made to the Lanham Act, including the broadening of the "likelihood of confusion" test.

The Lanham Act did not expressly authorize an award of attorney's fees to prevailing parties until, in 1975, Congress amended the Act to allow for attorneys' fees in exceptional cases. That same year, the Patent Office became the Patent and Trademark Office.

After an enormous growth in Trademark counterfeiting, Congress passed the Trademark Counterfeiting Act of 1984. Remedies included new civil actions with awards of treble damages and attorneys' fees. The Trademark Clarification Act was also passed in 1984 in response to the Ninth Circuit's decision in Anti-Monopoly, Inc. v. General Mills Fun Group, Inc. which held that purchaser motivation in buying a product was the crucial test in determining if a trademark was generic. The new act made it clear that the question is to be determined by the primary significance of the term to the public, not purchaser motivation.

The Trademark Law Revision Act was passed in 1988 to bring U.S. Trademark Law more in line with the global market.

The only significant amendment to the Lanham Act has been the Dilution Act of 1996. This moved further to protect the interest of business and basically means that marks that are similar to those of a business, and could be seen as a way to deceived consumers, are an infringement of Trademark laws. This completely overrode the 1905 amendment to the 1881 Trademark Act.

Another amendment in 1999 saw the introduction of the Anticybersquatting Consumer Protection Act. This act governs trademark infringement through domain names on the internet. The introduction of this act basically meant that those who have rights to Trademarks also have rights to the associated domain name, so nobody besides Coca Cola can register the domain name on the internet. This protects the Trademark of that company from misrepresentation.


Trademarks are often associated with a company's reputation or goodwill, and many companies have a brand name, which is associated with high quality etc. Only they have the right to produce and distribute that trademark, so not just anyone can go and put a Coke label on a can of cola and call it Coca Cola. Throughout the history of trademark law, the law has worked to protect the consumer from inferior counterfeits or substitutes. It also protects the producer, as they have a reputation to protect, and if someone is producing a low quality product and putting their brand name on it, that bad quality is going to get associated with that company. Such will hurt their businesses reputation.

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