The Ideology of “Standing to Sue” and its Role in Trademark Enforcement
For starters, standing to sue implies having the right to file a lawsuit. In order for the jury to be convinced that the defendant’s conduct was the direct cause of the alleged damages and injuries, sufficient evidence must be provided by the plaintiff(s). In the U.S., a combination of federal law and state law governs trademarks. On the one hand, while concurrent jurisdiction is vested in state courts, the federal trademark law (i.e., the Trademark Act of 1946 or Lanham Act) is vested with the original jurisdiction of infringement claims. In this regard, the federal law provides registered trademark owners with “standing to sue” rights once they believe that their marks have been infringed upon.
Notably, given that a mark is used in interstate commerce, the federal trademark law also provides an unregistered mark owner the right to use a “false designation of origin” cause of action as standing to sue under federal law. Further, the federal trademark law contains provisions for standing to sue for infringement by the exclusive licensee of a registered mark that is, in substance, an assignee. However, although each may adopt a false description theory or false designation of origin to have standing to sue, the federal trademark law does not provide for standing to sue for both a nonexclusive licensee of a registered mark and a true exclusive licensee of a registered mark.
In the next blog post and Part XVIII of the series, we shall conclude this series by hammering on “Legal Remedies Provided for Trademark Infringement.”
Until then, stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.
