Recommended Reading: Prof. Robert A. Mikos, "Unauthorized and Unwise: The Lawful Use Requirement in Trademark Law"

Professor Robert E. Mikos takes the USPTO to task in his recent Vanderbilt Law Review article, "Unauthorized and Unwise: The Lawful Use Requirement in Trademark Law" (pdf here). He charges that "[i]n demanding compliance with sundry nontrademark laws, the PTO has lost sight of the statute it is supposed to administer." There is no requirement of lawful use in the Lahnam Act and, he argues, there shouldn't be. "Making registration or protection conditional on compliance with nontrademark laws does nothing to further the aims of trademark law. To refocus the PTO’s attention on the core issues of trademark law, the lawful use requirement must go."

For decades, the United States Patent and Trademark Office (“PTO”) has required trademark owners to comply with sundry nontrademark laws governing the sale of their trademarked goods and services. Pursuant to this “lawful use requirement,” the Agency has refused or even cancelled registration of thousands of marks used on everything from Schedule I controlled substances to mislabeled soap. This Article subjects the Agency’s lawful use requirement to long-overdue scrutiny. It suggests that in requiring compliance with other laws for registration, the PTO has lost sight of the one statute it is supposed to administer. In the process, the Agency has overstepped the limits of its statutory authority and undermined federal trademark policy. Whether a mark owner has used its mark to sell improperly labeled soap or an illicit drug, the PTO has no mandate, and no convincing policy reason, to deny the owner the substantial benefits of registration. Simply put, the Agency’s lawful use requirement has no place in trademark law.

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TTABlogger comment: Keep your eye in the Joy Tea case (TTABlogged here), which is currently on appeal to the CAFC.

Text Copyright John L. Welch 2022.