Finding Trademark Use: The Historical Foundation for Limiting Infringement Liability to Uses 'In the Manner of a Mark'

U.S. Courts and scholars are debating the existence and scope of a prerequisite for infringement liability, but the discussion has lacked a proper grounding in the common law and the legislative history of the Lanham Act. This article undertakes to fill that gap. The article first evaluates the common law of technical trademark infringement and unfair competition as it existed and developed from the late 1800's to 1946, when the Lanham Act was enacted, and demonstrates that the law imposed a form of limitation both the technical trademark infringement and the unfair competition (trade name infringement) cause of action. Having identified the trademark limitation in the common law, the article then considers whether the Lanham Act codified it. Through of the Lanham Act's legislative history, the article demonstrates three different ways in which the Lanham Act can be understood to have incorporated the common-law trademark limitation: 1) through the use in commerce language in the infringement provisions, coupled the Lanham Act § 45 definition of use in commerce; 2) through the phrase on or in connection with in the registered and unregistered mark infringement provisions; and 3) through implicit incorporation of the common law, even without any express statutory language to that effect. Finally, the article discusses how the trademark requirement should be understood and defined in modern contexts. The article reviews the policy justifications for imposing the trademark limitation, and discusses the flexibility that courts enjoy in construing and applying statutes that undertake to codify common-law doctrine. It then describes three basic characteristics of a modern trademark limitation, based public policy considerations and the doctrine's historic formulation: To make a potentially infringing use, the infringement defendant must apply the allegedly infringing word or symbol in a manner: 1) that consumers can perceive their senses; 2) that closely, directly associates the word or symbol products or services that the defendant is advertising, selling or distributing to consumers; and 3) that is likely to make a separate commercial impression consumers.