70 Am. U. L. Rev. 1331 (2021).

* Assistant Professor, Southern Illinois University School of Law. Former Administrative Trademark Judge at the USPTO (TTAB). The author particularly wishes to thank the editors and staff of the American University Law Review who, despite the challenges of a global pandemic, persisted in their thoughtful review of this article.


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 followed this logic to conclude that an administrative determination regarding registration rights may therefore have a 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.

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