trademark advertising

Federal Circuit Rules That Use of a Trademark in Advertising Can Infringe Another’s Mark

A federal district court ruled that use of another’s trademark in advertising cannot, as a matter of law, constitute trademark infringement. 

The Federal Circuit reversed that ruling in Versatop Support Systems, LLC v. Georgia Expo, Inc. (Fed. Cir. 2019), holding, to the contrary that advertising use can constitute infringement.

Why should advertising use not qualify as infringement? 

The answer has to do with the convoluted history and language of the Trademark Act.  Briefly, it has long been held that use of a trademark in advertising is not sufficient to acquire trademark rights.  But what many courts struggled with is whether use of a trademark in advertising suffices to infringe on another’s, already established, trademark rights.

The Federal Circuit’s ruling means that advertising now may constitute trademark infringement – giving broader protection to trademark owners.