State Court Decisions Interpreting State Trademark Statutes

In addition to relying on federal law when enforcing a claim against an alleged trademark infringer, trademark owners may turn to state trademark law as well, unless the state law governs an area that is pre-empted by federal law. Below are a sampling of cases decided at least in part based on the court’s interpretation of a state’s trademark law.

ARKANSAS: The state’s Trademark Act does not empower the Secretary of State to register trademarks or service marks for a limited geographical area within the state so as to accommodate similar marks used by businesses that are not directly competing with each other over the same consumers (see A.C.A. §§ 4-71-101 to 4-71-114; Worthen Nat. Bank of Batesville v. McCuen, 317 Ark. 195, 876 S.W.2d 567 [Ark. 1994]).

ILLINOIS: A maid service that was named “Maid To Order” was not entitled to injunction prohibiting the showing of a film by the same name, even if its name was deemed to be “distinctive” under state antidilution law, absent proof that the maid service would be irreparably harmed by consumers seeing the film (see Ill.Rev.Stat.1987, ch. 140, par. 22; Kern v. WKQX Radio, 175 Ill.App.3d 624, 529 N.E.2d 1149, 125 Ill.Dec. 73, [Ill.App. 1 Dist. 1988]).

NEW MEXICO: The state’s trademark statute specifically preserves the common-law rights of trademark owners, such that the rights of a trademark owner registered with the state trademark office could be qualified by the bona fide rights of common-law users (see NMSA 1978, § 57-3-12; S & S Investments, Inc. v. Hooper Enterprises, Ltd., 116 N.M. 393, 862 P.2d 1252 [N.M.App. 1993].

UTAH: The Lanham Act does not pre-empt the state’s criminal simulation statute which prohibits anyone from selling or possessing with intent to sell a counterfeited object or from authenticating or certifying such an object as genuine (see U.S.C.A. Const. Art. 1, § 8, cl. 8; Art. 6, cl. 2; U.C.A.1953, 76-6-518; Lanham Trade-Mark Act, §§ 1-45, 15 U.S.C.A. §§ 1051–1127).

WASHINGTON: Under the state’s trademark laws, the remote possibility of future competition between a national bank and a federal savings and loan association in a county where the national bank was located and where the savings and loan conduct incidental business did not justify enjoining the national bank’s use of the same name as the savings and loan association (see Pioneer First Federal Sav. and Loan Ass’n v. Pioneer Nat. Bank, 98 Wash.2d 853, 659 P.2d 481 [Wash. 1983])


Inside State Court Decisions Interpreting State Trademark Statutes