Intellectual Property and the Common Law


Intellectual Property and the Common Law


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Book Chapter

Mark McKenna, Trademark Law's Faux Federalism, in Intellectual Property and the Common Law 288 (Shyamkrishna Balganesh ed., 2013)

Federal and state trademark laws regulate concurrently: The Lanham Act does not preempt state law, and in fact many states have statutorily and/or judicially developed trademark or unfair competition laws of their own. This state of affairs, which is now well-accepted even if it has not always been uncontroversial, distinguishes trademark law from patent and copyright law, since federal patent and copyright statutes preempt state law much more broadly. The Patent Act entirely preempts state law with respect to non-secret inventions and the 1976 Copyright Act preempts state copyright law with respect to all works fixed in a tangible medium of expression.

According to the common wisdom, concurrent trademark regulation derives from the historical primacy of state law, which federal law later supplemented but did not supplant entirely. John Cross, for example, argues characteristically that the Lanham Act - builds upon a foundation of state-law rights, leaving states generally free to regulate the field of trademarks. This essay evaluates that claim and its implied premise that state law has always played an important role in trademark law. As it demonstrates, proper characterization of state law‘s historical role depends in substantial part on one‘s understanding of the status of general law before the Supreme Court‘s decision in Erie Railroad Co. v. Tompkins.

To illustrate, this essay describes the history of trademark and unfair competition in three periods: (1) the pre-Erie era, in which trademark and unfair competition claims were understood as distinct species of the same general legal right, both of which were substantively determined by the common law; (2) the period after Erie and straddling passage of the Lanham Act, before courts had settled on an interpretation of the statute under which claims for infringement of unregistered trademarks could be brought under §43(a); and (3) the modern era, in which the Supreme Court and Congress have accepted and cemented that interpretation, making it possible to bring most trademark and unfair competition claims under the Lanham Act. It argues that, while state law has technically played a role in all three periods, it has never really played a significant substantive role, except in some cases in the modern era to broaden the scope of rights beyond the federal statute. In fact, the persistent sense that federal and state law regulate concurrently has masked a significant federalization of trademark and unfair competition law over the last forty to fifty years. The reasons for that federalization deserve some scrutiny. If those reasons are persuasive, then we should question any continuing role for state trademark law.



Publication Date



Cambridge University Press


New York


trademark, unfair competition, general law, Erie, federalism


Antitrust and Trade Regulation | Intellectual Property Law | Law

Intellectual Property and the Common Law