Trademarks Supreme Court Cases

A trademark is a word, phrase, symbol, design, or combination of these elements that identifies the source of products or services. Businesses use these marks to separate what they sell from what competitors offer. The federal government holds the power to regulate trademarks under the Commerce Clause of the Constitution, although states may regulate trademarks as well. A trademark must be sufficiently distinctive to be protected. Trademarks are divided into the following categories:

  • Fanciful marks: these were invented specifically for trademark purposes
  • Arbitrary marks: these do not describe or suggest any part of the product or service attached to them
  • Suggestive marks: these suggest the nature of the product or service provided by a business but do not describe it specifically
  • Descriptive marks: these clearly describe the product or service, and they are not distinctive (and thus protectable) unless they acquire a secondary meaning
  • Generic terms: these are not protectable because they are the main way that people identify all products or services of that type

In addition to marks, trade dress may be protected if it is distinctive and non-functional. This is the look and feel of a product or service, used to identify and distinguish its source. A business with a protectable mark or protectable trade dress can sue for infringement if consumers likely would be confused due to the use of a substantially similar mark or trade dress.

Below is a selection of Supreme Court cases involving trademarks, arranged from newest to oldest.

Vidal v. Elster (2024)

Author: Clarence Thomas

The Lanham Act prohibition on registering a trademark that consists of or comprises a name identifying a particular living person without their consent does not violate the First Amendment.

Abitron Austria GmbH v. Hetronic International, Inc. (2023)

Author: Samuel A. Alito, Jr.

Two provisions of the Lanham Act that prohibit trademark infringement extend only to claims in which the claimed infringing use in commerce is domestic rather than foreign.

Jack Daniel's Properties, Inc v. VIP Products LLC (2023)

Author: Elena Kagan

When the accused infringer has used a trademark to designate the source of its own goods, that kind of use falls within the heartland of trademark law and does not receive special First Amendment protection.

Patent and Trademark Office v. B.V. (2020)

Author: Ruth Bader Ginsburg

A term styled “” is a generic name for a class of goods or services only if the term has that meaning to consumers.

Romag Fasteners, Inc. v. Fossil, Inc. (2020)

Author: Neil Gorsuch

A plaintiff in a trademark infringement lawsuit is not required to show that a defendant willfully infringed the plaintiff's trademark as a precondition to a profits award.

Iancu v. Brunetti (2019)

Author: Elena Kagan

The Lanham Act's prohibition on registration of immoral or scandalous trademarks violates the First Amendment.

Matal v. Tam (2017)

Author: Samuel A. Alito, Jr.

The disparagement provision of the Lanham Act, prohibiting the registration of trademarks that may disparage or bring into contempt or disrepute any persons living or dead, violates the Free Speech Clause of the First Amendment.

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004)

Author: David Souter

A defendant raising the trademark fair use defense does not have a burden to negate any likelihood that the practice at issue will confuse consumers about the origin of the goods or services affected.

Dastar Corp. v. Twentieth Century Fox Film Corp. (2003)

Author: Antonin Scalia

Section 43(a) of the Lanham Act does not prevent the unaccredited copying of an uncopyrighted work.

Moseley v. V Secret Catalogue, Inc. (2003)

Author: John Paul Stevens

When the marks at issue are not identical, the mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. (Dilution is a separate cause of action that allows the owner of a famous mark to prevent the use of similar marks in ways that harm consumer perception of the famous mark.)

TrafFix Devices, Inc. v. Marketing Displays, Inc. (2001)

Author: Anthony Kennedy

A product feature is functional and thus not protectable as trade dress if it is essential to the use or purpose of the article or affects the cost or quality of the article. Also, a functional feature is one the exclusive use of which would put competitors at a significant non-reputation-related disadvantage.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000)

Author: Antonin Scalia

In an action for infringement of unregistered trade dress under Section 43(a) of the Lanham Act, the design of a product is distinctive and therefore protectable only upon a showing of secondary meaning.

Qualitex Co. v. Jacobson Products Co. (1995)

Author: Stephen Breyer

The Lanham Act permits the registration of a trademark that consists, purely and simply, of a color.

Two Pesos, Inc. v. Taco Cabana, Inc. (1992)

Author: Byron White

Trade dress that is inherently distinctive is protectable without a showing that it has acquired secondary meaning.

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc. (1985)

Author: Sandra Day O’Connor

The holder of a registered mark may rely on incontestability to enjoin infringement, and an infringement action may not be defended on the grounds that the mark is merely descriptive.

Inwood Laboratories v. Ives Laboratories (1982)

Author: Sandra Day O’Connor

If a manufacturer or distributor intentionally induces another party to infringe a trademark, or if it continues to supply its product to a party that it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.

Prestonettes, Inc. v. Coty (1924)

Author: Oliver Wendell Holmes, Jr.

The ownership of a registered trademark consisting of a name designating the owner's goods generally does not carry with it a right to prohibit a purchaser who repacks and sells them (with or without added ingredients) from using the name on their own labels to show the true relation of the trademarked product to the article that they offer.

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