ONE CHUCK, TWO CHUCK: ANALYZING WHETHER FEDERALLY REGISTERED TRADEMARKS SHOULD BE DISTINGUISHED FROM UNREGISTERED, COMMON-LAW TRADEMARKS IN THE CONTEXT OF CONVERSE, INC. V. INTERNATIONAL TRADE COMMISSION.

• Author: Subart, McKenzie

Introduction I. OVERVIEW OF TRADEMARKS: PYRAMID OF RIGHTS VS. BOXES OF RIGHTS II. THE CONVERSE, INC. V. INTERNATIONAL TRADE COMMISSION DECISION A. Converse and the International Trade Commission B. Converse and the Federal Circuit III. TRADEMARK DECISIONS COMPARISON A. Federal Circuit Case: In re International Flavors & Fragrances Inc B. Supreme Court Decision: Matal v. Tam C. But What About the Box Model? IV. Praise for the Federal Circuit CONCLUSION INTRODUCTION

Trademark law in the United States involves "recognizing an intellectual property [right,] created and acquired by use. Government registration in the [United States] is essentially recognition of a right already acquired by use.... [Registration in the [United States] does not create the trademark." (1) Therefore, "[u]se of a designation as a trademark in the marketplace does two things: (1) it creates common law rights under state law; and (2) under federal law, it creates a basis for federal registration." (2) Converse and the United States Court of Appeals for the Federal Circuit (the "Federal Circuit") put this principle of trademark law to the test in Converse, Inc. v. International Trade Commission. (3) The Federal Circuit devotes two sentences, (4) and includes four citations to other sources of authority, (5) to whether there is a distinction between an unregistered, common-law trademark ("common-law trademark") and a federally registered trademark ("federal trademark"). (6) However, this brief discussion serves as the jumping-off point for the rest of the Federal Circuit's opinion.

This Comment analyzes which trademark model (the pyramid model or the box model) is a better representation and characterization of trademarks and trademark rights. Under the pyramid model, there is one trademark: both common law rights and federal registration rights attach to this single trademark. For the pyramid model, trademark rights resemble a pyramid because federal registration rights build upon the foundation created by common law rights. Common law rights and federal registration rights are interdependent. Under the box model, there is a common-law trademark and a federal trademark: common law rights attach to the common-law trademark, and federal registration rights attach to the federal trademark. For the box model, trademark rights resemble two separate boxes because the first box contains common law rights, and the second box contains federal registration rights. Common law rights are independent of federal registration rights.

In Part I, this Comment provides a brief overview of trademark law and explains the basic principles of trademark law in the context of the pyramid model and the box model. Part II explains the procedural history of Converse, Inc. v. International Trade Commission before the International Trade Commission (the "ITC"). Part II also outlines the Federal Circuit opinion for Converse, Inc. v. International Trade Commission. In Part III, this Comment summarizes an earlier Federal Circuit opinion and an earlier Supreme Court opinion, focusing on which trademark model was applied in each case. Part IV discusses whether the Federal Circuit correctly applied its chosen trademark model. Finally, this Comment concludes that the Federal Circuit, in Converse, Inc v. International Trade Commission, got it right; trademarks should be viewed in the context of the pyramid model.

1. Overview of Trademarks: Pyramid of Rights vs. Boxes of Rights

   The two different trademark models--the pyramid model and the box model--demonstrate a conflict in trademark law: how should trademarks and trademark rights be represented and characterized? The pyramid model recognizes the existence of only one trademark and views the rights conferred by trademark law as a pyramid with two levels. Although there is a single main trademark, the two levels of the pyramid represent sub-trademarks. Level 1 represents the common-law trademark portion of the trademark--which, in other words, is the trademark with common law rights attached. Level 1 consists of common law rights. If applicable, Level 2 represents the federal trademark portion of the trademark--which, in other words, is the trademark with federal registration rights attached. Level 2 contains federal registration rights. Level 1 and Level 2 build upon one another. Under the pyramid model, a trademark owner has two options: (1) a trademark owner can have only Level 1; or (2) a trademark owner can have both Level 1 and Level 2. Level 1 can exist without Level 2, but Level 2 cannot exist without Level 1.

   The box model recognizes the existence of two separate trademarks (a common-law trademark and a federal trademark) and views the rights conferred by trademark law as two separate boxes. Box 1 contains the common-law trademark and common law rights, and Box 2 contains the federal trademark and federal registration rights. Box 1 and Box 2 are independent of one another. Under the box model, a trademark owner has three options: (1) a trademark owner can have both Box 1 and Box 2; (2) a trademark owner can have only Box 1; or (3) a trademark owner can have only Box 2.

   The same principles of trademark law support both the pyramid model and the box model, but the interpretation of those principles highlights the differences between the two trademark models. First, the trademark in the pyramid model and the trademarks in the box model are established in the same way, and both trademark models include the same fundamental right afforded to trademark owners. The criteria for establishing a trademark right is not complex: the trademark must be "use[d] in commerce." (7) Therefore, as the supreme Court has observed, the rule for establishing trademark ownership is use, not federal registration. (8) Moreover, contingent on the ability to demonstrate validity, a trademark owner has "the right to prevent others from trading on the goodwill established by the trademark by using the same or a similar trademark in a way that is likely to cause confusion as to the source, origin, or sponsorship of products." (9) Use in commerce establishes Level 1 of the pyramid model and Box 1 and Box 2 of the box model, and both levels of the pyramid model and boxes of the box model support the right outlined above; however, that is where the similarities between the two trademark models end. The differences between the pyramid model and the box model become apparent through other principles of trademark law.

   The pyramid model and the box model support the relationship between common-law trademarks and federal trademarks in different ways. Trademark rights acquired from federal registration "may be considered supplemental to those recognized at common law, stemming from ownership of a trademark." (10) Federal registration does not eliminate common law rights. (11) "When a trademark is registered, common law rights continue: they are not erased by federal registration." (12) The pyramid model views federal registration as building upon common law rights, adding another level to the pyramid. The box model views federal registration as adding another box that sits next to the common law box. In addition, federal registration "provides significant benefits and can make enforcement of the [trade]mark easier." (13) The scope of protection for common-law trademarks is limited:

   Without registration, trademark rights under the [United States] common law system may be limited only to those geographic areas where the [trade]mark is used. Additionally, when relying only on common law rights, the trademark owner must prove that the [trade]mark is valid and protectable in order to prevail in a claim of trademark infringement. (14) In comparison, the scope of protection for federal trademarks is broader:

   A federal[] ... [trade]mark is presumed to be a valid [trade]mark and the registrant is presumed to have the exclusive right to use the trademark throughout the United States on the goods or services listed in the registration. Additionally, a registration constitutes constructive notice to third parties of the registrant's rights in the [trade]mark, is readily revealed in trademark clearance searches conducted by others, can block confusingly similar [trade]marks from registering, and can also be registered with Customs to help block the importation of counterfeit goods. After five years, the registration may become incontestable, which significantly limits the grounds on which competitors can attack the registration. (15) From the pyramid model perspective, the significant benefits of federal registration add to the minimal benefits conferred by common law. From the box model perspective, the significant...