List of United States Supreme Court trademark case law

This is an incomplete list of Supreme Court of the United States cases in the area of trademark law.

Case Citation Year Vote Classification Subject Matter Opinions Statute Interpreted Summary
Pre-Lanham Act Jurisprudence (effective July 6, 1947)
Delaware & Hudson Canal Co. v. Clark 80 U.S. 311 1871 Substantive Geographic descriptors and generic terms Majority: Strong N/A Geographical names designating the good's place of production (as opposed to the good's producer) cannot be trademarked.
Amoskeag Manufacturing Co. v. D. Trainer & Sons 101 U.S. 51 1879 Substantive Quality Indicators Majority: Field

Dissent: Clifford

 N/A Words, letters, figures, or symbols indicating only the quality of a good cannot be trademarked.
McLean v. Fleming 96 U.S. 245 1877 Substantive Likelihood of misleading; Laches Majority: Clifford Federal Trademark Act of 1870 Infringement requires a likelihood of misleading purchasers, not exact similitude; with laches, a court may deny past damages but still enjoin future infringement where infringement is clear.
In re Trade-Mark Cases100 U.S. 8218799–0SubstantiveConstitutional basis for trademark regulationMajority:
Miller (unanimous)		Federal Trademark Act of 1870 The Copyright Clause does not give Congress the power to regulate trademarks.
Liggett & Myers Tobacco Co. v. Finzer128 U.S. 1821888SubstantiveSimilarity of marks; Likelihood of misleading Majority: Field N/AThough both featuring stars, two marks for competing tobacco brands are so different that there is no possibility of misleading consumers.
Goodyear's Rubber Mfg. Co. v. Goodyear Rubber Co. 128 U.S. 598 1888 Substantive Descriptive terms Majority: Field N/A Names that describe a class of goods cannot be trademarked.
Menendez v. Holt 128 U.S. 514 1888 Substantive Fanciful quality marks; Transference of goodwill; Laches Majority: Fuller N/A A mark that indicates a brand's special selection of its goods using arbitrary terms is capable of trademark; trademark and goodwill are retained by the continuing company and not transferred to a partner departing from that company; delay in bringing infringement suit may preclude recovery for past damages, but not injunction against future injury.
Lawrence Manufacturing Co. v. Tennessee Manufacturing Co. 138 U.S. 537 1891 Substantive Infringement Majority: Fuller N/A Evidence that a defendant used a trademark with the intent to falsely represent his product and pass it off as the plaintiff's product is evidence of infringement.
Brown Chemical Co. v. Meyer et al. 139 U.S. 540 1891 Substantive Infringement; Descriptive terms; Names as marks Majority: Brown N/A Surnames cannot be trademarked, but neither can they be used to deceive the public; Infringement requires evidence of fraudulent intent.
Coats v. Merrick Thread Co. 149 U.S. 562 1893 Substantive Infringement; Trade dress Majority: Brown N/A When similarities between marks are due to design constraints and/ or have been tolerated within the industry, there is no infringement if defendant's other packaging and advertising sufficiently distinguishes the products.
Columbia Mill Co. v. Alcorn 150 U.S. 460 1893 Substantive Geographic descriptors Majority: Jackson N/A Geographical names and previously-appropraited words cannot be appropriated as an exclusive trademark
Singer Mfg. Co. v. June Mfg. Co.163 U.S. 1691896Substantive Generic terms; Unfair competition Majority: WhiteN/AThe name of a patented article that comes to generically describe that article falls into the public domain upon expiration of the patent; but, it amounts to unfair competition when other parties mislead the public by suggesting that its product is manufactured by the patenting company.
Saxlehener v. Eisner & Mendelson Co. 179 U.S. 19 1900 Substantive Abandonment; Laches; Trade dress Majority: Brown N/A The abandonment defense requires evidence of both practical abandonment and intent to abandon; laches defeats a trademark owner's rights when he knew or should have known that others were using the mark, and failed to take action such that the name became generic to the whole class of products; trade dress that would mislead the casual customer constitutes infringement, and is not cured by uses of additional labels
Elgin Nat'l Watch Co. v. Illinois Watch Case Co.179 U.S. 6651901Substantive; Procedural Secondary meaning; Jurisdiction Majority: FullerTrademark Act of 1881 Marks that cannot themselves be registered as trademarks but have achieved secondary meaning can still be protected from unfair competition; under the 1881 Act, circuit courts do not have jurisdiction over a dispute by two parties of the same state not involving a registrable trademark
Clinton E. Worden & Co. v. California Fig Syrup Co. 187 U.S. 516 1903 Substantive Limitation on injunctions Majority: Shiras; Dissent: McKenna N/A A mark that itself is intended to deceive the public deprives its owner of equitable relief (here, the product called "Syrup of Figs" was more accurately "Syrup of Senna," so plaintiff had no right to enjoin defendant from calling its product "Fig Syrup")
La Republique Francaise v. Saratoga Vichy Spring Co. 191 U.S. 427 1903 Substantive Laches; Geographic descriptors Majority: Brown Industrial Property Treaty (1887) A foreign government cannot invoke the rule of nullum tempus to answer a defense of laches, where the government's interest is merely nominal; A geographic mark that has become generic and is not used in a misleading manner by subsequent parties will not support injunction.
Howe Scale Co. of 1886 v. Wyckoff, Seamans & Benedict 198 U.S. 118 1905 Substantive Names as marks Majority: Fuller N/A Parties have the right to use their names in trade as an individual, a firm, and a corporation, except as cover for unfair competition.
E.C. Atkins & Co. v. Moore 212 U.S. 285 1909 Procedural Reviewability of trademark decision Majority: Fuller Trademark Act of 1905 A court of appeals decision regarding trademark registration affirming the Commissioner of Patent's decision, and directing the clerk to certify its opinion to the Commissioner, is not final and appealable to the Supreme Court.
A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co. 201 U.S. 166 1906 Substantive Trademark registration Majority: Brown Federal Trademark Act of 1870; Trademark Act of 1881 Description of a trademark must be sufficiently definite to qualify for registration.
Standard Paint Co. v. Trinidad Asphalt Mfg. Co. 220 U.S. 446 1911 Substantive Descriptive terms; Unfair competition Majority: McKenna Trademark Act of 1905 A descriptive mark is not trademarkable, even if it is not intended to accurately describe the product; There can be no claim of unfair competition against imitation of a descriptive mark, since acknowledging such a right would amount to granting a trademark to the descriptive mark.
Baglin v. Cusenier Co. 221 U.S. 580 1911 Substantive Geographic terms; Abandonment Majority: Hughes Trademark Act of 1881 A non-trademarkable geographic indicator is not to be confused with other designations of origin (e.g., town in France vs. monastic order); The liquidator of physical assets has no claims to foreign trademarks; Abandonment requires evidence of practical abandonment and intent to abandon.
Thaddeus Davids Co. v. Davids 233 U.S. 461 1914 Substantive Registration eligibility Majority: Hughes Trademark Act of 1905 Marks otherwise prohibited by the Act of 1905 (for example, surnames) can be registered if used exclusively for ten years preceding the act, per section 5 of that Act.
G. & C. Merriam Co. v. Syndicate Pub. Co.237 U.S. 6181915Substantive Registration eligibility; Generic terms Majority: DayTrademark Act of 1881 Under the Act of 1881, after a copyrighted work expires, the word used to designate that work falls into the public domain and cannot be trademarked (here, "Webster" could not be trademarked for dictionaries whose copyrights had already expired).
Hamilton-Brown Shoe Co. v. Wolf Bros. & Co. 240 U.S. 251 1916 Substantive Damages Majority: Pitney § 240, Judicial Code [36 Stat. at L. 1157, chap. 231] Because of the impossibility of the task, a trademark owner does not have the responsibility of apportioning defendant's profits between those attributable to infringement and those attributable to the "intrinsic merit" of the defendant's product.
Hanover Star Milling Co. v. Metcalf240 U.S. 4031916SubstantiveTerritorial extent of trademark rights Majority: Pitney A trademark owner who confines his trademark usage to a certain territory cannot enjoin use of that trademark by someone else who in good faith established extensive and continuous trade in another territory where the plaintiff trademark owner's product is unknown.
United Drug Co. v. Theodore Rectanus Co.248 U.S. 90Dec. 9, 1918SubstantiveScope of trademark rights; Territorial extent of trademark rights Majority: PitneyTrademark Act of 1881A trademark right is not a right in gross like statutory copyright or patent—the trademark right, being attached to a business or trade, does not permit a trademark owner to merely enforce negative rights; The adoption of a trademark does not, by itself, reserve right of protection to territories where the owner has not already extended her trade, even if she may desire to later.
Estate of P.D. Beckwith, Inc., v. Commissioner of Patents 252 U.S. 538 1920 Substantive Registration eligibility Majority: Clarke Trademark Act of 1905 Despite the statutory prohibition against registering merely descriptive trademarks, a trademark featuring descriptive words along with other elements, such as non-descriptive words and a fanciful or arbitrary design, can be registered so long as the applicant disclaims any claim to the descriptive words except as they appear in the whole mark.
Coca-Cola Co. v. Koke Co. of America 254 U.S. 143 1920 Substantive Secondary meaning Majority: Holmes Trademark Act of 1881; Trademark Act of 1905 A mark that develops secondary meaning in the marketplace retains trademark status and is protected against claims of unfair competition when, for example, a descriptive trademark no longer accurately describes the product due to a change in formulation.
Baldwin Co. v. R.S. Howard Co. 256 U.S. 35 1921 Procedural Reviewability of trademark decisions Majority: Day Trademark Act of 1905 A Court of Appeals for the District of Columbia decision reversing the decision of the Commissioner of Patents is not a final judgment reviewable by the Supreme Court.
A. Bourjois & Co. v. Katzel260 U.S. 689Jan. 29, 1923Substantive Sale of trademark rights; Infringement Majority: HolmesTrademark Act of 1905A foreign company who sells its business to and American buyer (including its registered trademarks and goodwill) cannot subsequently enter the US market and use its old trademarks.
American Steel Foundries v. Robertson262 U.S. 209May 21, 1923ProceduralRemedies Majority: Taft Trademark Act of 1905; 35 U.S.C.A. §§ 145, 146The Trademark Act of 1905 imports the rules of practice and procedure that govern appeals of patent applications, and so authorizes unsuccessful trademark applicants to obtain a remedy by bill in equity, as the Revised Statutes provide to unsuccessful patent applicants.
Prestonettes, Inc. v. Coty264 U.S. 359April 7, 1924SubstantiveRight to use Majority: Holmes Trademark Act of 1920Trademark law does not protect against a distributor using a plaintiff's trademark on its own repackaged labels in order to communicate to buyers that the distributed goods contain plaintiff's products—trademark law only protects against misleading consumers and does not confer a sweeping right to prohibit all uses of a mark.
U.S. ex rel. Baldwin Co. v. Robertson 265 U.S. 168 1924 Procedural Remedies; Right to appeal Majority: Taft Trademark Act of 1905; 35 U.S.C.A. §§ 145, 146 The Trademark Act of 1905 imports the rules of practice and procedure that govern appeals of patent applications, and so authorizes a trademark owner to bring a suit in equity following an unsuccessful trademark cancellation appeal; and under the Trademark Act, both parties to a trademark cancellation interference have the right to appeal a decision from the Commissioner of Patents to the District Court of Appeals.
William R. Warner & Co. v. Eli Lilly & Co.265 U.S. 5261924SubstantiveDescriptive terms; Unfair competition Majority: Sutherland A name which is descriptive of product ingredients, qualities, or other characteristics cannot be appropriated as a trademark; While a producer does not have exclusive rights to a product formula, a competitor using the same formula may not pass off its product as that of the first producer's.
American Steel Foundries v. Robertson 269 U.S. 372 1926 Substantive Likelihood of confusion; Trade names Majority: Sutherland Trademark Act of 1905 Since trademark rights must flow from a connection with underlying business or trade, trademark adoption by one party does not necessarily preclude adoption of the same trademark by another party on other kinds of articles (until likelihood of confusion exists); A trademark applies to the commodity sold, while a trade name applies to the business and its good will.
Postum Cereal Co. v. California Fig Nut Co. 272 U.S. 693 1927 Procedural Reviewability of trademark decision Majority: Taft Trademark Act of 1905; Trademark Act of 1920 Supreme Court does not have jurisduction to review the purely administrative decision of the Court of Appeals for the District of Columbia to itself refuse jurisdiction over an appeal from the Commissioner of Patents under the Act of 1920.
U.S. Printing & Lithograph Co. v. Griggs, Cooper & Co. 279 U.S. 156 1929 Substantive Territorial extent of trademark rights Majority: Holmes Trademark Act of 1905 The Trade-Mark Act cannot enjoin infringement occurring only intrastate; Common-law trademark rights to not extend to states where the mark has not been used.
Kellogg Co. v. National Biscuit Co.305 U.S. 1111938SubstantiveSecondary meaning Majority: Brandeis Trademark Act of 1905; Trademark Act of 1920Once a patent has expired, the benefits of the invention are to be enjoyed by the public.
Armstrong Paint & Varnish Works v. Nu-Enamel Corp. 305 U.S. 315 1938 Substantive Unfair competition Majority: Reed Trademark Act of 1905; Trademark Act of 1920 The invalidity of a registered trademark does not necessarily divest a federal court's jurisdiction over unfair competition claims; An established secondary meaning gives the term's owner a right against unfair competition at common law, apart from any trademark statutes.
Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co.316 U.S. 203May 4, 1942ProceduralDamages Majority: Frankfurter Trademark Act of 1905In calculating damages, the rightful trademark owner only bears the burden of proving the amount of infringer's sales bearing the trademark—the infringer bears the burden of decreasing the damage calculation by showing what portion of profits are attributable to factors other than use of the infringing mark.
Champion Spark Plug Co. v. Sanders331 U.S. 125April 28, 1947SubstantiveSecond-hand use Majority: Douglas Trademark Act of 1905A party who reconditions a trademarked product is entitled to keep the original trademark on the product, so long as the reconditioned product is marked as reconditioned and the party is not otherwise defrauding the market.
Post-Lanham Act Jurisprudence (effective July 6, 1947)
Steele v. Bulova Watch Co.344 U.S. 2801952ProceduralJurisdiction in foreign commerce Majority: Clark Lanham ActUS federal courts have jurisdiction over an action initiated by an American company, against an American citizen infringing on that company's trademark rights, if the citizen's operations and their effects are not confined within the territorial limits of a foreign country.
Dairy Queen, Inc. v. Wood369 U.S. 469April 30, 19627–0 ProceduralRight to jury Majority: Black N/AA jury is competent to decide the legal issue of damages stemming from breach of contract or trademark infringement, so long as the accounts between the parties are not so complicated that only acourt of equity could untangle such accounts.
Sears, Roebuck & Co. v. Stiffel Co.376 U.S. 225March 9, 19649–0 SubstantiveUnfair competition Majority: Black N/AStates may regulate that goods, whether patented or not, be labeled to prevent misleading customers as to the source of the goods, just as states may regulate the use of trademarks.
Compco Corp. v. Day-Brite Lighting, Inc.376 U.S. 234March 9, 19649–0 Substantive Unfair competition Majority: Black N/AFederal patent laws do not preclude states from making statutory or common law that requires product makers to take precautions to identify the source of their products.
Fleischmann Distilling Corp. v. Maier Brewing Co.386 U.S. 71419678–1 ProceduralRecovery Majority: Warren Lanham ActThe Lanham Act specifies available compensatory remedies, and they do not include attorney's fees; furthermore, attorney's fees are generally not recoverable without statutory or contractual provisions.
United States v. Sealy, Inc.388 U.S. 35019676–1 Non-trademarkAnti-trust Majority: Fortas Sherman Antitrust ActExclusive territorial trademark licenses can still run afoul of antitrust laws if they are a part of unlawful price-fixing and policing.
Inwood Laboratories, Inc. v. Ives Laboratories, Inc.456 U.S. 84419829–0 SubstantiveContributory Liability Majority: O'Connor Lanham ActA manufacturer or distributor who intentionally induces a party to infringe a trademark, or contributes to an infringing good or service while knowing or having reason to know of the infringement, is contributorily liable for that infringement.
Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.469 U.S. 18919858–1SubstantiveGeneric terms; Descriptive terms; Incontestability Majority: O'Connor Lanham ActA generic term (which refers to a genus, of which a particular product is a species) is not registrable as a trademark, and a registered mark that becomes generic may be cancelled at any time; A descriptive mark describes qualities or characteristics of a good or service, and can only be registered if it has acquired secondary meaning; The Lanham Act does not permit an incontestable mark to be challenged as descriptive.
San Francisco Arts & Athletics, Inc. v. United States Olympic Committee483 U.S. 52219875–4 Substantive "Olympic" trademark Majority: PowellLanham Act; Amateur Sports Act of 1978The Amateur Sports Act grants the US Olympic Committee unique trademark protections and does not preclude uses of the mark only when there is potential for confusion; "Olympic" is not a generic word; The First Amendment is not a bar to Congress granting exclusive rights to use the word "Olympic."
K Mart Corp. v. Cartier, Inc.485 U.S. 17619885–4 Non-TrademarkTrademarks; Conflicting import laws Majority: Kennedy 1930 Tariff Act; Customs Service Regulation A Customs Service regulation, which permits the importation of foreign-made goods bearing an authorized US trademark, conflicts with the Tariff Act, which prohibits the importation of any such goods without the consent of the trademark owner.
Two Pesos, Inc. v. Taco Cabana, Inc.505 U.S. 76319929–0SubstantiveTrade dress; Secondary meaningMajority: White Lanham ActTrade dress is capable of identifying the source of a good or service, so inherently distinctive trade dress is protectable under the Lanham Act without showing the trade dress has acquired secondary meaning.
Qualitex Co. v. Jacobson Products Co., Inc.514 U.S. 15919959–0SubstantiveTrade dress; Functionality Majority: Breyer Lanham ActA product feature that is functional ("essential to use or purpose of article" or "essential to use or purpose of article") cannot be trademarked if doing so would significantly disadvantage competitors (on non-reputation grounds); Color can be trademarked if it develops secondary meaning and serves no other function; Where color serves a significant non-trademark function, courts will examine if granting exclusive rights over that color will interfere with legitimate competition.
College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board527 U.S. 66619995–4Non-TrademarkSovereign immunity Majority: Scalia Lanham Act; Trademark Remedy Clarification ActState school did not waive its 11th Amendment immunity from suits under the Lanham Act when it sold and advertised for-profit educational materials in interestate commerce, even after being put on notice that it would be subject to Lanham Act Liability by doing so per the Trademark Remedy Clarification Act.
Wal-Mart Stores, Inc. v. Samara Brothers, Inc.529 U.S. 20520009–0SubstantiveTrade dress; Secondary meaningMajority: Scalia Lanham ActWhile trade dress (product design) is not inherently distinctive, it is entitled to protection under the Lanham Act upon proof of acquiring secondary meaning (when it becomes a source identifier).
Cooper Industries v. Leatherman Tool Group532 U.S. 42420018–1Non-TrademarkPunitive damagesMajority: Stevens Because a jury's punitive damage award is "an expression of moral condemnation" rather than a finding of fact, circuit courts should review de novo district courts' determinations regarding the constitutionality of those awards.
TrafFix Devices, Inc. v. Marketing Displays, Inc.532 U.S. 2320019–0SubstantiveTrade dress; Secondary meaning; FunctionalityMajority: Kennedy Lanham ActWhen product design and packaging acquires a secondary meaning, it is protected as trade dress and competitors are prevented from using it in a manner likely to confuse the public—however, functional features are not granted trade dress protection; Competitive necessity is not necessarily a test for functionality—rather, a feature is functional when it is "essential to the use or purpose of the article or [] it affects the cost or quality of the article."
Dastar Corp. v. Twentieth Century Fox Film Corp.539 U.S. 2320038–0SubstantiveIntersection of trademark law with public domain works; Passing offMajority: ScaliaLanham ActTrademark cannot preserve copyright-like rights to a public domain work. The Lanham Act prohibits both "passing off" (misrepresenting one's own goods or services as someone else's) and "reverse passing off" (misrepresenting someone else's goods as one's own); "false designation of origin" in the Lanham Act only refers to the producer of the tangible good, and not the person or entity who conceived the ideas comprising that good (e.g., the "origin" of a video tape is the producer of the tape, not the creators or artists who created the underlying material—whose rights are separately protected by copyright, not trademark law).
Moseley v. V Secret Catalogue, Inc.537 U.S. 41820039–0SubstantiveTrademark dilutionMajority: StevensLanham Act, Federal Trademark Dilution ActStatutory dilution occurs when a junior user's mark creates in consumers a mental association with a famous mark that reduces the capacity of the famous mark to identify the goods of its owner; Plaintiff must prove actual dilution under the Federal Trademark Dilution Act (later overturned by Trademark Dilution Revision Act of 2006), and not merely likelihood of dilution, for injunctive relief.
KP Permanent Makeup, Inc. v. Lasting Impression I, Inc.543 U.S. 11120049–0SubstantiveFair use; Likelihood of confusion Majority: Souter Lanham ActA defendant claiming fair use of a trademark does not have the burden of showing its use is not likely to cause confusion; Some consumer confusion regarding the origin of the goods or services is compatible with the fair use of a trademark.
American Needle, Inc. v. NFL560 U.S. 18320109–0Non-TrademarkAntitrust Majority: Stevens Sherman Antitrust ActNFL teams forming an association for licensing their intellectual property (trademarked names, logos) are capable of conspiring under the Sherman Act.
United States v. Alvarez567 U.S. 70920126–3Non-TrademarkFirst Amendment Majority: Breyer Stolen Valor ActThe Stolen Valor Act, which criminalizes falsely claiming the receipt of military decorations or medals, infringes on free speech protected by the First Amendment. There are other laws that restrict speech, like the Lanham Act—but prohibiting trademark infringement focuses on commercial speech, and requires showing likelihood of confusion before such speech is restricted.
Already, LLC v. Nike, Inc.568 U.S. 85Jan. 9, 20139–0ProceduralMootness; Infringement; Invalidation Majority: Roberts Lanham Act; Federal Trademark Dilution Act A plaintiff's covenant not to sue over trademark infringement moots the defendant's counterclaim that the trademark is invalid.
Lexmark Int'l v. Static Control Components572 U.S. 118March 25, 20149–0ProceduralFalse advertising; Standing Majority: Scalia Lanham ActStanding to maintain a false advertising action under the Lanham Act is determined by a test which considers both zones of interest and proximate causation.
Pom Wonderful v. Coca-Cola, Inc.572 U.S. 102June 12, 20148–0ProceduralFalse advertising; Private right of action Majority: Kennedy Lanham Act; Food Drug Cosmetic ActPlaintiffs may bring false advertising claims under the Lanham Act to challenge food and beverage labels that are also regulated by the FDCA.
Hana Financial, Inc. v. Hana Bank574 U.S. ___, 135 S.Ct. 907Jan. 21, 20159–0ProceduralTacking Majority: SotomayorLanham Act Whether two trademarks may be "tacked" (that is, when a new mark takes on the priority position of an older mark) is a jury question, since tacking is permissible when the original and the revised marks "create the same, continuing commercial impression so that consumers consider both as the same mark," which is a question of fact.
B&B Hardware, Inc. v. Hargis Industries, Inc.___ U.S. ____, 135 S.Ct. 1293March 24, 20157–2Procedural & Substantive Issue preclusion; Likelihood of confusion Majority: AlitoLanham ActThe Trademark Trial and Appeal Board's decision on an issue triggers issue preclusion for a district court's judgment when the district court decides an issue overlapping with the TTAB's analysis of a registration application, and the Lanham Act does not bar such preclusive effect.
Matal v. Tam 582 U. S. ____ June 19, 2017 8–0 Substantive Lanham Act's Disparagement Clause Majority: Alito Lanham Act The Lanham Act's disparagement clause (§1052(a)) is facially unconstitutional under the First Amendment's Free Speech Clause; Trademark registration does not constitute government speech.


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