Is the lawful use requirement for logos lawful? In a current Vanderbilt Legislation Overview article, Robert A. Mikos compellingly argues that it’s not. The article is a must-read for anybody within the matter of hashish logos, however highlights an issue that goes far past hashish, and certainly trademark legislation.
For these unfamiliar with the the lawful use requirement, it requires that “use of a mark in commerce have to be lawful beneath federal legislation to be the premise for federal registration beneath the U.S. Trademark Act [Lanham Act].” USPTO has constantly relied on the requirement to disclaim purposes to register logos that describe hashish merchandise which might be illegal beneath the Managed Substances Act or the Federal Meals, Drug, and Beauty Act.
At one stage, the lawful use requirement is sensible. Certainly nobody desires drug cartels and mafia households registering their logos with the USPTO. Nonetheless, the lawful use requirement doesn’t solely restrict the actions of prison organizations. In his article, Prof. Mikos cites one trademark software that was denied as a result of, in keeping with USPTO, the mark’s use in commerce was on cigars from Cuba, prohibited by the Cuban Belongings Management Rules. The “breathtaking array of legal guidelines exterior the filed of trademark legislation” that USPTO has needed to contemplate over time contains the Beginner Sports activities Act and the Federal Indian Arts and Crafts Act.
At a conceptual stage, this consideration to non-trademark legal guidelines appears ill-placed, however the issue is much extra critical. The “suggestion that the sale or transportation of products should comport with different legal guidelines” is, as Prof. Mikos explains, “notably absent from the textual content of the Lanham Act. “By imposing and imposing the lawful use requirement, USPTO is ignoring “limits on its authority to refuse registration for any motive not expressly enumerated within the [Lanham Act].”
Deciphering a statute in a manner that ignores its plain language is deeply problematic. Sadly, what occurs with the lawful use requirement will not be an remoted case, as any practitioner who works with authorities businesses is aware of. As a consular officer tasked with imposing U.S. immigration and nationality legislation (and later as an lawyer training immigration legislation), I noticed loads of advert hoc “rulemaking,” even by junior officers, and in some circumstances in aromatic violation of the Structure.
The enforcement of the lawful use requirement doesn’t, typically, rise to that egregious stage. However it’s nonetheless, as Prof. Mikos describes it, an “unauthorized and unwise” apply, which has unduly inflicted hurt on scores of hashish manufacturers and the general public, as now we have defined in these pages.
The USPTO is at the moment struggling to maintain up with its workload, which has drastically picked up because the post-COVID realities of telework and larger reliance on e-commerce are mirrored in enterprise exercise. This can be a good time for the company to revisit the Lanham Act and shed a mission it was by no means tasked with within the first place.