The lawsuit that we told you about regarding a dispute over the trademark rights to the use of TO KILL A MOCKINGBIRD continues. See https://www.duetsblog.com/2013/10/articles/trademarks/battle-between-harper-lee-and-her-hometown-museum-over-use-of-to-kill-a-mockingbird/. The defendant Monroe County Heritage Museum brought a motion to dismiss. The Court denied the motion and allowed author Harper Lee to pursue her claims.
One of the many arguments raised was that Harper Lee failed to plausibly allege that she owned a federally enforceable trademark so her Lanham Act claim under 15 U.S.C. § 1125 (false designations of origin, false descriptions and dilution). However, the Lanham Act does not require a federally registered trademark to assert a claim. As the Court explained, the statute forbids unfair trade practices even in the absence of a federal trademark registration. (citing Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir. 2012)). The Court noted that Ms. Lee had a state trademark registration and common law trademark rights.
The dispute at issue is centered in Ms. Lee’s hometown so her Alabama trademark protection and common law protection may be sufficient. However, it got me thinking about what someone might tell Ms. Lee about the benefits of a federal trademark registration. First, and foremost, you obtain national protection and notification to the world that you own the trademark. If another person attempts to register your mark or a similar mark for the same or similar goods and services, the examining attorney will likely cite your mark against the application and not allow registration. You can also bring claims against others in federal court that may be outside of your geographical area. Second, you can use the internationally known ® symbol. Third, if someone attempts to register a domain name that infringes on your trademark, you can take steps to shut down the website. This is especially important in the days of the internet where someone who is far away from your business can compete for the same customer shopping from his or her home online. Fourth, a federal trademark registration provides increased value to your company. Intellectual property is an important component of value and good will when buying and selling a company. Finally, the owner of a federal trademark registration can use it to obtain registration of the trademark in foreign countries and to record the registration with the U.S. Customs and Border Protection Service to prevent importation of infringing goods. Ms. Lee might want to consider obtaining a federal registration too.