Federal Law Protects Trademarks and Logos
– Government cannot require alteration of a registered mark –
Federal law provides that no state, city or county may require alteration or modification of a registered trademark, service mark, trade name or corporate name.
“No State or other jurisdiction of the United States or any political subdivision or any agency thereof may require alteration of a registered mark, or require that additional trademarks, service marks, trade names, or corporate names that may be associated with or incorporated into the registered mark be displayed in the mark in a manner differing from the display of such additional trademarks, service marks, trade names, or corporate names contemplated by the registered mark as exhibited in the certificate of registration issued by the United States Patent and Trademark Office.” [Lanham Act, 15 USC §1121(b)].
Trademarks or logomarks, including the colors which comprise them, are property rights. If a business is required to alter its mark, the mark’s value is diluted and the company’s identity in the market is diminished. A trademark that identifies a successful business represents considerable value and constitutes a property right. In California, a Federal District Court ruled that the City of South Lake Tahoe’s insistence that Motel 6 alter its logo to use a different shade of blue constituted trademark infringement under the Lanham Act. The City was required to pay damages and attorney fees.
The Ninth Circuit Court of Appeals also ruled many years ago in Blockbuster Videos v. City of Tempe that the city’s attempt to compel Blockbuster and co-plaintiff Video Update to alter their trademark colors constituted a violation of the Lanham Act.
A limitation on color or background may also constitute a Lanham Act violation (be sure to register the color and background, too). In addition, if a city requires channel letters only, for example, such as when a mark or sign is pre-formed, the city is ostensibly unlawfully insisting that the business display the mark in a manner different than registered.
Businesses should be cautious when signing a lease where the landlord imposes color and shape limitations, as that could preclude use of the registered logo. It can be argued, however, that the parties cannot by contract agree to violate Federal Law.
Bottom Line – A little knowledge can go a long way when it comes to protecting trademarks and pushing back on government regulators.
Sign law expert serving the sign industry and its customers for over 25 years, providing legal and consulting services to sign users, installers and manufacturers. Based in Sacramento, Practice Areas include Zoning; Land Use; Real Estate; Constitutional Law; Employment; & Business. Admitted to the Bar in 1989. Law Offices of Jeffrey L. Aran 1-888-SIGNLAW.