Trademarks Groundwork

AuthorDavid R. Gerk - John M. Fleming
P A R T 1
Trademarks Groundwork
In real life, unlike in Shakespeare, the sweetness of the rose de-
pends upon the name it bears. Things are not only what they are.
They are, in very important respects, what they seem to be.
—Hubert H. Humphrey
Vice President of the United States (1965–1969)
Trademarks are generally grouped with patents and copyrights to form
the “big three” types of intellectual property. Since patent and copyright
laws in the United States emanate from Article I, Section 8, clause 8 of
the Constitution, it may be surprising that the constitutional basis for
trademarks and related forms of intellectual property is Article I, Section
8, clause 3, or the “Commerce Clause” as it is more commonly known, a
provision distinct from the provision from which patent and copyright
protections are derived. The Commerce Clause gives Congress the power
“to regulate commerce with foreign nations, and among the several states,
and with the Indian tribes.” This distinct constitutional basis for trade-
mark protection as compared to patent and copyright protection contrib-
utes to the variations in the rights associated with these varied forms of
intellectual property, the motivation behind these intellectual property
rights, and the implementation of these protections.
First, the motivation and rationale behind trademarks and related
intellectual property is not “promotion of progress in science and the
Part 1
178 Section 3, Part 1
useful arts” but rather regulation of commerce. To this end, the focus of
trademarks is ensuring that commerce is carried out in a manner desired
by the Congress of the United States. This preferred manner can theo-
retically change over time and from Congress to Congress. The general
purposes and goals of the trademark system are often described as a
quality control function that helps consumers have confidence in their
purchases. A merchant’s seal or mark is her authentic seal by which she
vouches for the goods that bear it. It carries her name for good or ill. If
another borrows that seal, he borrows the owner’s reputation whose quality
no longer lies within her control. Buyers can rely on that seal as an
indicator of the quality of the goods that bear that mark. In practical
terms, if a company makes sporting goods that are known for their inno-
vative technology, durability, and quality, consumers come to look for
goods made by that company. As such, trademarks serve as simple and
reliable way to facilitate consumer purchases such that consumers can
trust in purchases based upon the marks and companies for which they
represent. If others were permitted to “take” or “imitate” the mark, then
purchasers would not be able to make purchases with the same level of
confidence and commerce may be stifled to the detriment of the economy.
Second, trademark and related rights may extend on in seeming per-
petuity. While the constitutional clause that gives rise to patent and copy-
right laws (Art. I §8 cl. 8) explicitly sets forth that these rights be for
only “Limited Times,” the Commerce Clause has no such language. Theo-
retically, it would not violate the Constitution should trademark rights
(or any other right based in the Commerce Clause) continue on into
general perpetuity. The trademark rights of some very valuable trade-
marks, such as Coca-Cola®, have been in existence for long periods of
time and can continue in existence for seemingly as long as they are not
abandoned or otherwise relinquished. However, patents and copyrights
have specific “limited” terms of duration.
A third distinction between patent and copyrights as compared to
trademarks is the existence of state laws that governed trademarks and
related intellectual property in addition to the federal system of protec-
tion. Patents and copyrights are solely protected under a federal system,
but trademarks may be protected under federal law as well as state law/
common law. While the corporate entity Burger King is now well known
throughout the U.S., the corporate entity was not the most senior owner
of the mark nationwide. A family-owned burger stand (Hoots family)
was the senior user of the name Burger King in Mattoon, Illinois, and
registered the name with the state of Illinois prior to corporate Burger

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