What is 'Likely to be Confusing' About Trademark Law: Reconsidering the Disparity Between Registration and Use

68 Pages Posted: 12 Mar 2021

See all articles by Lorelei Ritchie

Lorelei Ritchie

SIU School of Law; University of California, Los Angeles

Date Written: January 18, 2021


Federal trademark rights in the United States are widely considered to be use-based. That is, the right derives from the use. Therefore, one might expect that federal trademark registrations would necessarily reflect the marketplace realities of the use of a mark. Based on Constitutional and statutory enablement, this is correct. It is not, however, how the trademark registration system has been implemented by the Court of Appeals for the Federal Circuit and by the U.S. Patent and Trademark Office.

In this regard, there is a perception among judges and practitioners alike that marketplace realities are not, and should not, be taken into account in the federal trademark registration process, as compared with an enforcement action in a federal district court (i.e., trademark infringement). The U.S. Supreme Court has, nevertheless, recently clarified that the right to registration is indeed coexistent with the right to use and enforce a trademark. The Court further indicated, as a logical step, that an administrative determination regarding registration rights may therefore have preclusive effect in a later court action involving a claim of trademark infringement. Of course a dilemma arises when coexistent rights are instead determined by non-coextensive factors. This article analyzes and addresses the disparity that currently exists between trademark registration and the use on which it is presumptively based. In conclusion, the article proposes three possible mechanisms to resolve the disparity, including 1) by Congressional legislation, or perhaps most efficiently, 2) by judicial clarification, and 3) by administrative action.

Keywords: trademark; intellectual property; administrative; Constitutional; Federal Circuit; USPTO; TTAB

Suggested Citation

Ritchie, Lorelei D., What is 'Likely to be Confusing' About Trademark Law: Reconsidering the Disparity Between Registration and Use (January 18, 2021). American University Law Review, Vol. 70 (Forthcoming 2021), Available at SSRN: https://ssrn.com/abstract=3768137

Lorelei D. Ritchie (Contact Author)

SIU School of Law ( email )

1150 Douglas Drive
Carbondale, IL 62901-6804
United States

University of California, Los Angeles ( email )

405 Hilgard Avenue
Box 951361
Los Angeles, CA 90095-1361
United States

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