The Common Law and Trade Marks in an Age of Statutes

THE COMMON LAW OF INTELLECTUAL PROPERTY: ESSAYS IN HONOUR OF PROFESSOR DAVID VAVER, Bently, Ng & D'Agostino, eds., Forthcoming

Oxford Legal Studies Research Paper No. 49/2009

21 Pages Posted: 10 Nov 2009  

Graeme B. Dinwoodie

University of Oxford - Faculty of Law

Date Written: October 17, 2009

Abstract

In 1879, the United States Supreme Court recognized that trade marks are a creature of the common law. Likewise, the English courts had long recognized causes of action that effectively protected marks prior to the enactment of statutes delineating the scope of trademark protection. The characterization of trade mark law as a field of common law may, however, now seem an essentially historical statement. In the United States, the early twentieth century saw the adoption of a series of federal trademark registration statutes, and in 1946 Congress enacted even more comprehensive trademark legislation, namely the Lanham Act. Since then, Congress, has episodically - but with increasing frequency - revised the trademark statute. In light of such increased statutorification of trade mark law, what is the continued role of the common law in developing appropriate protection for trade marks? In this chapter, I recount the development of the common law of trade marks, highlighting the background developments outside trademark law that influenced the allocation of trademark lawmaking authority over the course of the twentieth century. The historical importance of these external influences suggests that trademark law will not be immune to changes in contemporary judicial philosophy that have made some scholars fearful about the room for further common law development. However, a brief review of recent Congressional activity and Supreme Court opinions in the field suggests that, despite substantial legislative intervention, both Congress and the Supreme Court appear content that the development of trademark and unfair competition law in the United States remain a partnership between the two institutions, and thus heavily dependent on common law lawmaking by the courts.

Keywords: Lanham Act, common law statutes, formalism, unfair competition

JEL Classification: K11

Suggested Citation

Dinwoodie, Graeme B., The Common Law and Trade Marks in an Age of Statutes (October 17, 2009). THE COMMON LAW OF INTELLECTUAL PROPERTY: ESSAYS IN HONOUR OF PROFESSOR DAVID VAVER, Bently, Ng & D'Agostino, eds., Forthcoming; Oxford Legal Studies Research Paper No. 49/2009. Available at SSRN: https://ssrn.com/abstract=1502282

Graeme B. Dinwoodie (Contact Author)

University of Oxford - Faculty of Law ( email )

St. Cross Building
St. Cross Road
Oxford, OX1 3UJ
United Kingdom

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