Thursday, February 24, 2022

Next on the chopping block? Mikos attacks the PTO's lawful use requirement

Robert A. Mikos, Unauthorized and Unwise: The Lawful Use Requirement in Trademark Law, 75 Vanderbilt Law Review 161 (2022)


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 longoverdue 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.

I’d never given the question much thought, and I was initially skeptical but largely convinced by the argument. I doubt that the PTO can’t ever identify “per se” violations of the law—it seems quite possible to distinguish between violations of the law that can’t be corrected by any voluntary action by the claimant other than discontinuing sales of the unlawful product (e.g., marijuana; products that need label approval from another agency but don’t have it) and violations of law that can be corrected by voluntary action while still making use of the putative mark on the goods (e.g., incompletely labeled cosmetic; failure to label country of origin). But that is a different question from whether the PTO has the statutory authority to do this, whether the PTO can apply its rules consistently, or whether it is a good idea to ask the PTO to do so.

1 comment:

Graeme Dinwoodie said...

I have always thought instinctively this was over-reach by the PTO. Good to see someone work it through more thoroughly. In Chapter 4 of our casebook, Mark Janis and I probe possible cut off points to the doctrine (along the Iines you hint at). But I think the issue of PTO authority is a different conundrum. The Metchup case suggests skepticism too. See Perry v. H.J. Heinz Co. Brands, LLC, 994 F.3d 466, 475 (5th Cir. 2021).