I. Introduction

Should a seller be permitted to obtain trademark rights to a mark if it is used in commerce illegally? The simple answer would be, “Of course not!” Clearly, someone who fails to follow a law should not be rewarded for breaking the law. Right? But, as in most fields, the simple answer fails to capture the complexities and nuances of the American legal system. Primarily, this answer fails to address the express separation of powers entrenched in the U.S. Constitution.[1] Moreover, this answer completely ignores the practical matters associated with being able to consistently determine whether the use of a mark in commerce has violated any existing law.

The unlawful use doctrine is the rule that encapsulates this “lawful use” morality by preventing a mark user from obtaining rights to the mark if the user used the mark in violation of a law.[2] The “simple answer,” above, becomes complicated when examining who is making this decision. The United States Patent and Trademark Office (USPTO) is the agency charged with maintaining the trademark registration system.[3] In doing so, the USPTO uses its power granted by the Lanham Act to provide the scope for how marks can be governed.[4] Like all other agencies, the USPTO must stay within the bounds of its governing statute.[5] This Note explains that not only does the unlawful use doctrine fall outside the bounds of the authority granted to the USPTO by Congress, but the USPTO cannot and should not be burdened with ensuring a mark’s use in commerce follows all relevant rules and regulations.

The unlawful use doctrine is also found in trademark litigation proceedings in federal courts.[6] Because of its existence at the USPTO, litigants have asserted the doctrine as a defense in trademark infringement suits.[7] Circuit courts are split on whether the unlawful use doctrine should be adopted as a defense.[8] A 2024 Court of Appeals for the Federal Circuit (CAFC) opinion, VPR Brands, LP v. Shenzhen Weiboli Tech. Co., gave the CAFC its first opportunity to settle this split and analyze whether the unlawful use doctrine should be upheld as a defense in trademark litigation proceedings.[9] However, because the CAFC analyzed the adoption of the doctrine under the hat of the Eleventh Circuit, the CAFC had to hold how the Eleventh Circuit would rule and failed to settle the split.[10] In doing so, the court mentioned the purported lack of statutory basis for the doctrine, while failing to make any ruling thereon.[11] This Note uses the law summarized by the VPR Brands court to urge courts to reject adoption of the doctrine, primarily because the unlawful use doctrine is not a valid exercise of the USPTO’s authority.[12] This Note further supports rejection of the doctrine by outlining the inability of the doctrine to be applied accurately and consistently.[13]

Finally, this Note aims to empower litigants to confidently appeal USPTO decisions based on the unlawful use doctrine in federal courts by leveraging the new legal landscape established by the Loper Bright court.[14] In the Chevron doctrine era, litigants had a limited chance of success at appealing rules like the unlawful use doctrine.[15] However, the Chevron doctrine has been overturned, and the Loper Bright opinion suggests courts revisit pre-Chevron approaches, like Skidmore, when reviewing agency actions.[16] While Loper Bright does not promise to upheave administrative law, there are a sliver of policies that have a higher chance of success at retirement because of the return to pre-Chevron analyses—the unlawful use doctrine being one.[17]

Part II outlines the legal background of the unlawful use doctrine in both the administrative and the judicial capacity—ultimately laying the groundwork for why it would be unwise for courts to adopt the unlawful use doctrine as a defense in trademark infringement. Part III attempts to present the strongest arguments a pro-adoption litigant could assert by exploring the only thread of statutory interpretation that could support the doctrine, calling for consistency between the USPTO and the courts, and examining the idealist policy underlying the doctrine. Part IV chronicles the ultimate reasoning for why the pro-adoption arguments fail by explaining why the unlawful use doctrine is not a valid exercise of the USPTO’s authority and urging courts to rethink blind adoption by evaluating the practicality of the doctrine.

II. Evolution and Objectives

This Part provides the legal background and the foundation that supports why courts should not adopt the unlawful use requirement as a defense in trademark infringement. Courts should reject adoption of the doctrine primarily because it should never have been promulgated by the USPTO in the first place, and, tangentially, it provides undue burden on the court system and distracts courts from the trademark principles they are charged with protecting.

Section A discusses the scope of the grant of authority given to the USPTO in the form of the Lanham Act. Section A describes the portions of the Act relevant to the unlawful use doctrine and emphasizes that these portions fail to include any language pertaining to lawful use in commerce being a requirement for registration. Section B describes the evolution of the unlawful use doctrine at the USPTO—emphasizing the failure of the USPTO to assert a statutory basis at promulgation. Section B further outlines the split in the federal courts’ adoption of the unlawful use doctrine as a defense in infringement suits. Section C provides the legal background behind the recent change in agency deference—introducing reasons why litigants have historically been wary to challenge the unlawful use doctrine but suggesting litigants should have a newfound confidence to assert challenges under the Loper Bright framework.

A. The Lanham Act

Congress enacts statutes to simplify and codify common law, clarify or correct confusing federal statutes, or initiate a federal regulatory scheme.[18] All are true for the creation of the Lanham Act.[19] Prior to the Lanham Act, a patchwork of common law and state statutes worked to protect marks used to identify the source of goods or services.[20] Congress began the intensive process of federally regulating these marks in 1870 by enacting the first federal trademark statute.[21] Other statutes followed, many of which caused confusion, limited relief, failed to adequately protect all types of marks, or created perpetual trademark protection.[22] These deficiencies “fueled a movement to completely rewrite the trademark laws,” resulting in the Lanham Act.[23] Interestingly, while other forms of intellectual property law (i.e., patent law and copyright law) claim constitutional support from the Intellectual Property Clause of the Constitution,[24] the Lanham Act does not.[25] Rather, the Lanham Act claims constitutional support from the Commerce Clause.[26]

Perhaps due to this constitutional basis, one of the primary requirements for a mark to be eligible for trademark protection is that the mark—whether registered or not—must be used in commerce.[27] The Lanham Act’s “use in commerce” requirement for registered trademarks is codified in 15 U.S.C. § 1051(a).[28] Specifically, applicants seeking registration of a mark must provide, amongst others, a declaration that “the mark is in use in commerce.”[29] The Lanham Act’s “use in commerce” requirement for unregistered trademarks is implicitly codified in 15 U.S.C. § 1125(a). Section 1125(a) does not explicitly outline the requirements for an unregistered mark to have trademark protection.[30] Rather, this statute creates a cause of action for trademark infringement based on ownership of an unregistered mark.[31] Common law and the general principles of trademark law establish the qualities required to make an unregistered mark eligible for trademark protection—including the “use in commerce” requirement.[32]

The Lanham Act explicitly defines the scope of the “use in commerce” requirement.[33] In particular, “[t]he term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade.”[34] A mark is “used in commerce” when it is placed “on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto” and the goods are “sold or transported in commerce.”[35] Commerce is “all commerce which may lawfully be regulated by Congress.”[36] The Constitution outlines the commerce that Congress may lawfully regulate.[37] From the plain text of the Lanham Act, incorporating the definition of “commerce” from the Constitution, there is no suggestion that to meet the “use in commerce” requirement, the mark must be “lawfully” used by comporting with other laws.[38] Nevertheless, the USPTO requires that for a mark to earn trademark protection, it must be lawfully used in commerce.[39]

B. The Unlawful Use Doctrine

The unlawful use doctrine requires that “the use of a mark in commerce must be lawful” in order to obtain federal trademark registration.[40] The unlawful use doctrine exists in two forms: a rule promulgated by the USPTO and a defense used in trademark litigation suits.[41] In particular, the USPTO may use the unlawful use doctrine as a reason to deny trademark registration.[42] Moreover, a litigant may use the doctrine as a defense in an infringement suit by arguing that the asserted mark is unworthy of trademark protection and therefore invalid because the mark owner used the mark unlawfully in commerce.[43]

Section II.B.1 reviews the purpose of agencies and outlines the history and use of the unlawful use doctrine within the USPTO. Section II.B.2 reviews the purpose of courts and evaluates the federal appellate courts’ adoption, or lack thereof, of the unlawful use doctrine as a defense in trademark disputes.

1. As a Requirement for Registration

Regulatory bodies, like the USPTO, exist to interpret, implement, and enforce the statutes enacted by Congress.[44] The USPTO is the regulatory body responsible for “granting U.S. patents and registering trademarks.”[45] The USPTO enacts the mandate of the Intellectual Property Clause of the Constitution by “promot[ing] the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”[46] The USPTO also regulates under the Commerce Clause by providing the governing body for registering trademarks—following the stipulations of the Lanham Act.[47]

The USPTO’s examiners review trademark applications to determine whether an applicant’s mark is eligible for trademark protection.[48] If deemed eligible, the mark is registered, and the mark owner receives all the benefits that come with registration.[49] If deemed ineligible, the mark is rejected by the USPTO.[50] At this point, the applicant may appeal the decision to the Trademark Trial and Appeal Board (TTAB).[51] The TTAB is “a neutral body that functions like a court for trademark matters” at the USPTO.[52] The TTAB may hear appeals from applicants who have had marks rejected by the examiner.[53] The TTAB may also hear opposition proceedings where one party opposes the registration of another party’s trademark or cancellation proceedings where a party seeks to cancel an existing trademark registration.[54] All final decisions by the TTAB may be appealed to the CAFC or may be the basis of a challenge, with the USPTO as a party, in a district court.[55]

It was in this administrative board that the unlawful use doctrine, in its most current form, originated.[56] The unlawful use doctrine originated in 1957 when the USPTO canceled two trademarks used to mark insecticides because the shipments of the insecticides violated a federal statute.[57] In canceling these marks, the USPTO ruled that “the user of a trademark on goods which could not be lawfully shipped in interstate commerce” does not “acquire registrable rights superior to those of a later user whose goods were lawfully shipped in interstate commerce.”[58] Notably absent from this ruling is any statutory basis for a requirement that the goods must be lawfully shipped in commerce.[59] Rather, the Agency merely resorted to a policy argument that analogized to other fields of property law and stated that, like these analogous fields of property law, trademark property rights may not be acquired as a result of unlawful acts.[60]

Shortly after this decision, the USPTO promulgated an official requirement for registration—that the use of a mark in commerce must be lawful—embodied in Rule 2.69.[61] As such, Rule 2.69 encapsulates the unlawful use doctrine by stating:

When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.[62]

Since promulgation, the USPTO has used Rule 2.69 to strike down trademark registrations for failing to comply with various statutes.[63] In an older example from 1968, the TTAB affirmed the refusal to register a mark associated with the sale of aerosol mouth freshener because the sale did not comply with the Federal Food, Drug, and Cosmetic Act (FFDCA).[64] Specifically, the labels affixed to the aerosol mouth fresheners—whose shipment the applicant relied on to establish the “use in commerce” requirement for trademark registration—failed to contain a statement of the quantity of the contents.[65] An FFDCA statute stated that a cosmetic is considered misbranded, and therefore not in compliance, if, in its package form, the package does not have a label with “an accurate statement of the quantity of the contents.”[66] While the applicant subsequently worked with the Food and Drug Administration to be in compliance, the TTAB nevertheless ruled that the applicant was not entitled to register its mark at the time of filing because the goods could not enter the stream of commerce until it met the labeling requirements statutorily governing how the goods may be sold in commerce.[67]

In a newer example from 2017, the TTAB affirmed the refusal to register a mark associated with the sale of medical marijuana because the sale did not comply with the Controlled Substances Act (CSA).[68] The CSA prohibits the distribution of Schedule I controlled substances, which include marijuana.[69] Even though Congress and the Department of Justice have respectively passed subsequent legislation and made announcements that show they would not prosecute medical marijuana use under the CSA if the use follows state laws, the TTAB urged that it still remains illegal under the CSA to distribute marijuana.[70] As such, the TTAB affirmed the refusal to register the mark by concluding that the intended use of the mark for retail stores featuring and dispensing medical marijuana is a per se violation of the CSA—making it a legal impossibility for the goods/services to be lawfully used in commerce.[71]

Because of the USPTO’s use of the unlawful use doctrine to deny registration of a trademark, defendants in trademark infringement suits have tried—and succeeded—to use the doctrine as an affirmative defense against trademark infringement.[72] The following section discusses how the various federal appellate circuits have treated adoption of the unlawful use doctrine as a defense.

2. As a Defense in Infringement Suits

A court’s purpose is to serve as a neutral arbiter in resolving disputes, interpreting laws, and upholding justice within some type of legal framework.[73] Common law is law that is derived from judicial decisions rather than statutes.[74] While Congress enacted the Lanham Act in part to codify common law, there exist a few doctrines outside of the Lanham Act that still govern niche aspects of trademark law within various jurisdictions.[75] The unlawful use doctrine is a common law defense recognized in some jurisdictions.[76]

As outlined above, VPR Brands gave the CAFC its first opportunity to analyze whether the doctrine should be upheld as a defense.[77] In VPR Brands, the plaintiff, VPR, owned a registered trademark, “ELF,” used for e-cigarettes.[78] The defendant, Weiboli, was selling e-cigarettes under the mark, “ELFBAR.”[79] VPR sued ELFBAR in the United States District Court for the Southern District of Florida for trademark infringement and moved for a preliminary injunction.[80] Weiboli raised the unlawful use doctrine as a defense, arguing that the “ELF” mark was invalid for failing to obtain a pre-marketing authorization from the Food and Drug Administration as required by the FFDCA.[81] According to Weiboli, because VPR violated a statute, the goods to which the mark was affixed were illegally being used in commerce.[82] Thus, there is no “lawful use,” and the mark was invalid.[83] The district court asserted that the Eleventh Circuit, under which the Southern District of Florida sits, had rejected the unlawful use doctrine as a defense and summarily granted the preliminary injunction.[84] Weiboli appealed to the CAFC.[85] The primary issue on appeal was whether the district court abused its discretion in rejecting the unlawful use doctrine as a defense.[86]

The CAFC does not have exclusive subject-matter jurisdiction over the unlawful use doctrine as a defense and thus applied the law as stated, or would be stated, by the Eleventh Circuit.[87] In its decision, the court explained that it had never had a chance to “directly address the basis for and viability of this doctrine” regarding its use at the USPTO to deny trademark registration.[88] As such, the court acknowledged that there are legitimate questions as to the validity of the doctrine but nonetheless left these questions unanswered, perhaps leaving that analysis for a future, more appropriate case—such as an appeal from a TTAB decision denying registration of a mark under the unlawful use doctrine.[89] Here, the CAFC simply addressed whether the Eleventh Circuit would allow the unlawful use doctrine as a defense in infringement disputes.[90] The CAFC acknowledged that few appellate circuit courts have answered this question, and the ones that have are split on the answer.[91]

The unlawful use doctrine has only been appealed to four appellate circuit courts, including the Eleventh Circuit, which are split on whether the unlawful use doctrine should be used as a defense in trademark infringement suits.[92] The Ninth Circuit and the Tenth Circuit have recognized the doctrine as a defense, and the Fifth Circuit has rejected adoption of the doctrine.[93]

The Ninth Circuit adopted the unlawful use doctrine as a defense in CreAgri, Inc. v. USANA Health Scis.[94] Here, the Ninth Circuit adopted the doctrine as a way of extending the USPTO’s rules to trademark infringement suits.[95] Courts often defer to USPTO rules in trademark infringement suits to “avoid creating different registration standards for infringement lawsuits” and to “harmonize the rules applicable to registration and infringement proceedings.”[96] The Ninth Circuit acted no differently but elaborated and explained that it adopted the doctrine because it agreed with the policy behind the doctrine.[97] The Ninth Circuit explained that “to hold otherwise would be to put the government in the ‘anomalous position’ of extending the benefits of trademark protection to a seller based upon actions the seller took in violation of that government’s own laws.”[98] The Ninth Circuit further asserted it did not want to “reward the hasty at the expense of the diligent” by giving trademark priority to a seller who fails to comply with relevant regulations and rushes to the market.[99]

The Tenth Circuit adopted the doctrine by simply stating that to obtain rights to a registration, the trademark owner needs to show the mark was lawfully used in commerce.[100] As support, the Tenth Circuit cited generally to 15 U.S.C. § 1127, a federal circuit decision regarding an appeal from a TTAB decision, and a TTAB decision itself.[101]

The Fifth Circuit voiced its opinion regarding the unlawful use doctrine in a heated case centered around the mark METCHUP.[102] In this case, Heinz argued that the mark owner’s use of METCHUP (a mixture of mayonnaise and ketchup) was unlawful because the owner failed to comply with food labeling regulations.[103] In response, the Fifth Circuit said it “see[s] no reason to adopt the [unlawful use] doctrine here,” and subsequently rejected Heinz’s unlawful use contentions.[104] The Fifth Circuit provided little dicta regarding its refusal to adopt the doctrine and simply cited an Eleventh Circuit case and an unfair competition treatise as reasons against adoption.[105]

Turning back to VPR Brands, the CAFC reviewed the Eleventh Circuit’s precedent on the unlawful use doctrine, which is based entirely on FN Herstal.[106] The FN Herstal court explained the origin of the unlawful use doctrine—outlining that it “appears almost exclusively in the administrative setting.”[107] The court, in an almost hypothetical-type situation, explained how it would apply the unlawful use doctrine as an infringement defense.[108] The court discussed that the party asserting the defense must establish its applicability through clear and convincing evidence and must show a nexus between the use of the mark and the alleged material violation.[109] The court elaborated that the violation is material when the violation is of “such gravity and significance that the usage must be considered unlawful.”[110] The court followed this description of the doctrine with a statement that the Eleventh Circuit had not adopted the unlawful use doctrine and “need not do so today” because the defendant had not submitted sufficient evidence to raise an issue of fact.[111]

In VPR Brands, the lower court interpreted this statement as the Eleventh Circuit sending caution signals against adoption of the unlawful use doctrine as a defense.[112] However, the CAFC vacated and remanded, stating that this “refusal to adopt the doctrine based on evidentiary deficiencies does not support the conclusion that the Eleventh Circuit would reject the doctrine regardless of the circumstances.”[113] Rather, the CAFC believed the “Eleventh Circuit left open the question of whether to adopt the doctrine under circumstances that warrant further analysis than what the facts in FN Herstal called for.”[114] The CAFC vacated the lower court’s grant of the preliminary injunction and remanded this case to the lower court to reconsider the unlawful use defense.[115]

The VPR Brands decision neither adopts nor rejects the unlawful use doctrine as a defense in infringement suits.[116] Rather, the decision allows the district court to revisit the facts and determine if adoption of the defense is appropriate in this particular case.[117] At this point, only the Ninth and Tenth Circuits have explicitly adopted the doctrine as a defense, and only the Fifth Circuit has rejected the doctrine as a defense.[118] Moreover, none of the courts have performed a comprehensive judicial review of the doctrine, either as a defense or as an informal rule promulgated by the USPTO.[119]

C. Agency Deference

As outlined above, courts exist to provide a forum for resolving disputes, which includes ensuring that regulatory bodies stay within the bounds of their governing statute(s).[120] Until June 2024, either Chevron or Skidmore (and occasionally Auer) governed the level of deference given to an agency during judicial review of an agency’s action.[121] When reviewing an agency action, a court first determined whether deference was warranted and, if so, what level of deference should be applied to the agency’s interpretation of the statute underlying the action.[122] If the agency engaged in notice-and-comment rulemaking or formal adjudication, then Chevron deference would apply.[123] If the agency engaged in interpretations without the force of law (such as interpretations from policy statements, guidance documents, or informal adjudications), then Skidmore deference would apply.[124]

Chevron deference primarily applied when a statute was ambiguous.[125] Chevron deference comprised a two-step framework.[126] In step one, courts would ask if Congress has unambiguously expressed its intent on the precise question at issue.[127] If so, then the intent of Congress is clear, and its interpretation is the only reasonable one—of which the agency must follow.[128] On the other hand, if it is not clear whether Congress has spoken on the precise question (i.e., if the statute was ambiguous) or if Congress has explicitly delegated authority to the agency for interpretation, then courts would move to step two.[129]

Under step two, courts were tasked with asking whether the agency’s interpretation was a reasonable construction of the statute.[130] If the interpretation was reasonable, courts would give considerable deference to the agency’s interpretation.[131] But if the interpretation was not reasonable, then the court would deem that the agency did not have statutory authority, and the action would be overturned.[132]

During the Chevron doctrine era, appellants brought only a limited number of appeals from the USPTO’s decisions regarding the unlawful use doctrine before the CAFC or district courts, leaving few opportunities for this doctrine to undergo comprehensive judicial review.[133] Only seven TTAB decisions based on the unlawful use doctrine have been appealed. None of these seven courts addressed whether the USPTO has the authorization to deny a registration based on unlawful use. This was either due to the appellant failing to raise an argument questioning the validity of the doctrine, the court deciding the case along different lines, or because the appellant voluntarily dismissed the case before the appeals court issued a decision.[134]

As outlined in Section II.B.1, the unlawful use doctrine exists as a promulgated rule by the USPTO.[135] As such, any actions challenging the doctrine would have been subject to the Chevron two-step test. One possible reason for the lack of actions challenging this doctrine could be this subjugation and the general understanding that courts tend to defer to agency interpretations in most cases where the Chevron framework advances to step two.

A 2017 study determined that the agency win rate at the federal appellate level was 77.4% when the action underwent the Chevron two-part framework.[136] Thirty percent of these cases were resolved at step one—of which agencies prevailed only 39% of the time.[137] Of the 70% of cases that made it to step two, agencies prevailed 93.8% of the time.[138]

These numbers may have been a strong deterrent for a trademark applicant or owner challenging a TTAB decision based on the unlawful use doctrine in the Chevron doctrine era. It is likely that a challenge to the unlawful use doctrine would not have been settled at step one of the Chevron framework—primarily because there is no explicit language in the Lanham Act relating to the unlawful use doctrine—meaning a challenger would only have a 6.2% chance of prevailing at the federal appellate level.[139]

However, as of June 2024, Chevron deference is no longer the law.[140] In Loper Bright, the Supreme Court held that Chevron deference is unlawful because it was inconsistent with “the settled pre-APA understanding that deciding such questions was ‘exclusively a judicial function.’”[141] The Loper Bright Court held that “[c]ourts must exercise their independent judgment in deciding whether an agency has acted within its statutory authority, as the APA requires.”[142] Importantly, the Court explained that a court need not “defer to an agency interpretation of the law simply because a statute is ambiguous.”[143]

The overall result of the Loper Bright decision is that courts should perform conventional statutory interpretation of a statute while “respecting” the Executive Branch.[144] Essentially, applying pre-Chevron approaches, like Skidmore, to agency cases.[145]

Skidmore presented a factor test that outlined the weight that should be given to the agency’s interpretation of a statute.[146] These factors include thoroughness of the agency’s consideration, validity of its reasoning, its consistency with earlier rulings, and persuasiveness of the agency’s position.[147] In light of Loper Bright, challengers to informal agency rules, such as the unlawful use doctrine, may now have a stronger opportunity to persuade courts that a rule exceeds the scope of the relevant statute by using pre-Chevron statutory interpretation, such as the Skidmore factors.

III. The Merits for Adoption

On its surface, the unlawful use doctrine appears to present several appealing benefits, including consistency with the USPTO and disincentives for mark owners to rush products to the market.[148] However, these advantages are largely outweighed by practical and interpretational issues that ultimately render the doctrine unsuitable for adoption.[149] To fully address the debate, this section will first explore the arguments in favor of the doctrine before demonstrating why the pro-adoption arguments are insufficient in Part IV.

A. Validity of the Unlawful Use Doctrine

The strongest, though ultimately unsuccessful, argument a pro-adoption litigant could make to convince a court to adopt the unlawful use doctrine as a defense must begin with convincing the court that the unlawful use doctrine, as adopted by the USPTO in Rule 2.69, is a valid exercise of the USPTO’s grant of authority by the Lanham Act.[150] A failure to make this showing would greatly undermine the litigant’s position because: why should a court adopt a rule that was not a valid exercise of an agency’s grant of authority?

As outlined in Section II.A, there is no explicit requirement that a mark must be lawfully used in commerce to be eligible for registration.[151] Thus, the only interpretational argument available for a pro-adoption litigant would be using statutory interpretation to implicitly read the unlawful use doctrine into § 1051—the section of the Lanham Act outlining the requirements for registration on the principal register.[152]

As described in Section II.C, Chevron deference is no longer the standard for ambiguous statutes, and courts should instead perform conventional statutory interpretation of a statute while respecting the Executive Branch.[153] The Supreme Court also pointed to pre-Chevron cases, like Skidmore, to show examples of valid modalities of statutory interpretation.[154] However, looking to Skidmore was a suggestion, not a requirement.[155] Accordingly, under Loper Bright, any convincing interpretation supported by the modalities of statutory interpretation may be sufficient to support a valid exercise of the agency’s power.[156]

Here, the “Whole Act Rule” canon of statutory construction is really the only somewhat persuasive modality that could be used to argue for validity of the unlawful use doctrine.[157] The Whole Act Rule requires an interpreter to view statutory terms as part of the entire legislation in which they were enacted.[158] This canon presumes that Congress views each statute as a whole, intending words and phrases to have the same meaning throughout and intending individual provisions work together to create coherence and prevent contradictions.[159]

While § 1051 only explicitly requires “use[] in commerce,” § 1091—the section of the Lanham Act that outlines requirements for registration on the supplemental register—requires lawful use.[160] Section 1091 states, “[a]ll marks capable of distinguishing applicant’s goods or services and not registrable on the principal register . . . which are in lawful use in commerce . . . may be registered on the supplemental register.”[161] As such, a pro-adoption litigant could argue it would be contradictory to require lawful use for a mark to be registered on the supplemental register but not the principal register, and, to avoid contradictions and read the entirety of the Lanham Act as one, “lawful use” necessarily must be implied in § 1051.

If “lawful use” is implied in § 1051, then the litigant could argue that statutory interpretation textual canons support the interpretation that “lawful use” demands that “use in commerce” must comply with all federal laws, as outlined in Rule 2.69. Specifically, the litigant could argue that the “plain meaning rule” supports this interpretation. According to this canon, if the words are clear, they must be applied as written.[162] Here, the plain and ordinary definition of the word “lawful” is “being in harmony with the law.”[163] As such, merging this definition into “lawful use in commerce” means use in commerce that is in harmony with the law. In other words, the use in commerce must follow the law. Using this logic, the litigant could conclude that the agency’s interpretation of the Lanham Act is valid, and Rule 2.69 is supported by the governing statute.

The above interpretational argument tentatively supports that the unlawful use doctrine is a valid exercise of the USPTO’s grant of authority. However, as outlined in greater detail in Section IV.A, this argument ultimately fails, in part, because this argument is completely dependent upon reading “lawful use” from § 1091 into § 1051—where “lawful use” has been interpreted to mean “exclusive use” rather than use that complies with other laws.[164]

The following Sections introduce auxiliary arguments a litigant may make to convince a court to adopt the USPTO’s validly exercised unlawful use doctrine. Namely, that courts should adopt this doctrine as a defense in trademark infringement suits to create consistency with the USPTO and to ensure mark users comply with relevant regulations.

B. Consistency with the USPTO

A pro-adoption litigant could try to convince a court to adopt the unlawful use doctrine as a defense in trademark infringement suits by arguing that the court should do so to maintain consistency between courts and the USPTO. This argument may be made by first proving that courts have shown a pattern of maintaining consistency with the USPTO and subsequently reasoning that maintaining consistency is beneficial for all parties involved.

Historically, courts have adopted USPTO rules in trademark infringement suits.[165] Trademark infringement suits and trademark proceedings at the USPTO necessarily follow similar paths when deciding whether a mark is worthy of trademark law protection or registration.[166] Moreover, courts are also used as alternative avenues to petitioning the USPTO for cancellation of a registration.[167] In trademark infringement suits, defendants have numerous avenues for defense—many of which are related to invalidating the trademark.[168] Courts can invalidate trademarks, cancel registrations, or both for many reasons, including that the mark is merely descriptive and lacks secondary meaning, the mark is functional, the mark is or has become generic, etc.[169] Similarly, trademarks are denied registration at the USPTO for being descriptive without secondary meaning, functional, generic, etc.[170] Moreover, courts have explicitly said that the general principles allowing a mark to be registered are, for the most part, applicable in determining whether a mark is actually entitled to protection.[171] Accordingly, courts uphold various defenses asserting invalidity, which align with reasons for denying registration, to maintain consistency with the USPTO and avoid creating different registration standards.[172]

Accordingly, a pro-adoption litigant would argue that courts should adopt the unlawful use doctrine to ensure consistency with the USPTO’s standards and decisions. Specifically, the litigant would argue that maintaining alignment between judicial rulings and USPTO determinations is essential for preserving a coherent and predictable trademark system. If courts deviate from the USPTO’s approach—allowing factors to deny registration at the TTAB that would not suffice to invalidate trademarks in court—the result would be legal uncertainty and disarray. Trademark owners and litigators alike would face confusion about the applicable standards and requirements for obtaining and maintaining trademark protection. Such inconsistency could undermine confidence in the trademark system, making it unclear what truly constitutes a valid and enforceable trademark.

This argument is overall the strongest argument a pro-adoption litigant could make. However, as outlined in Section IV.B, this argument ultimately fails because it is outweighed by the total impracticality of the doctrine—which suggests that the USPTO and courts alike should throw it out.

C. Policy

The final grasp at an argument a pro-adoption litigant may make to convince a court to adopt the unlawful use doctrine is rooted in the policies behind the doctrine. The TTAB created the unlawful use doctrine to encapsulate the entrenched idea that property rights, which include trademark rights, cannot be acquired as the result of unlawful acts.[173] Just as a thief does not have property rights to stolen chattel and a fraudster does not have property rights to a victim’s assets, a mark user should not have rights to a mark if the mark was used in commerce unlawfully.[174]

Moreover, adopting the unlawful use doctrine ensures mark owners do not rush into the market before ensuring their product or service complies with the relevant laws.[175] Imagine a food manufacturer rushes its product to market to beat a competitor to a mark by neglecting to adequately perform an allergen test—an allergen test that would have shown the product contained traces of nuts. Now imagine a child with a life-threatening nut allergy consumes this product, believing it to be safe under the assumption that any traces of nuts would have been properly labeled, as mandated by the Food Allergen Labeling and Consumer Protection Act (FALCPA).[176] This child would be at risk of death from anaphylactic shock.[177] Trademark law, without the unlawful use doctrine, could be viewed as rewarding this manufacturer with its “use in commerce” date, regardless of this clear violation of FALCPA.

As such, a pro-adoption litigant would argue that, if courts were to adopt the unlawful use doctrine, an additional layer of protection would exist for a seller who complies with relevant laws and regulations. The unlawful use doctrine reinforces the principle that the diligence required to adhere to these laws will not disadvantage the seller if another party fails to meet the same standards. Thus, a seller is more likely to follow proper steps and procedures with this protection in place.

The litigant may conclude that the unlawful use doctrine prevents the government from being put in an anomalous position of granting a trademark to a mark user based on actions that violate the same government’s laws.[178] Just as courts should be consistent with the USPTO’s rules and regulations, courts should be consistent in penalizing sellers who violate government-mandated laws. The litigant would urge that courts should not, in one case, penalize a seller for failing to comply with a statute while simultaneously, in a separate case, reward the same seller (by granting them the “use in commerce” date) for a use in commerce involving the same violation.

While the arguments in favor of adopting the unlawful use doctrine may initially seem compelling, a deeper analysis reveals significant shortcomings. As the following part will demonstrate, pro-adoption arguments not only fail to hold up under statutory interpretation but also fail to acknowledge the impracticalities of adoption that ultimately outweigh any potential consistency or disincentive benefits.

IV. The Rationale Against Adoption

The pro-adoption arguments certainly have merit and would be somewhat persuasive if not for the need to capture the complexities of enforcement and the law as it stands. To put it short, the anti-adoption arguments ultimately carry greater weight. This is primarily because the unlawful use doctrine is not a valid exercise of the USPTO’s grant of authority by the Lanham Act—especially when viewed under Loper Bright’s guidance.

Furthermore, the policy behind adoption is impractical. Should the United States Patent and Trademark Office really be the governmental office that is expected to not only be aware of and comprehend the scope of all laws that exist but also be the office that determines whether a mark user has complied with every single one of these laws? Moreover, where does the scope of the doctrine end? Does it end with federal laws? Does it extend to state laws? What about state and federal rules and regulations? While consistency in trademark law is beneficial, courts should not be blindly led by the USPTO and adopt doctrines that have no business existing in the first place.

Section IV.A explains that, under the Loper Bright framework, the unlawful use doctrine, lacking explicit statutory support and reliant on weak implied bases, is unlikely to withstand judicial scrutiny—giving litigants the confidence to appeal a TTAB decision grounded in the unlawful use doctrine. Section IV.B outlines the impossibility of the burden the unlawful use doctrine imposes on the party evaluating a trademark-related case—supporting the argument that courts should not blindly adopt the doctrine merely because it exists at the USPTO.

A. Invalidity of the Unlawful Use Doctrine

In a challenge to the unlawful use doctrine, a court following Loper Bright would use its independent judgment to decide whether the USPTO has acted within its authority granted by the Lanham Act.[179] Loper Bright does not outline an explicit formula for performing this analysis but emphasizes Skidmore so much so that scholars predict that courts will look to Skidmore as a template for how to make this judgment.[180] Skidmore introduced a factor test to determine the weight of the agency’s interpretation.[181] Before the factors can be analyzed, the USPTO’s interpretation of the Lanham Act must be revisited.

Section III.A outlines the USPTO’s strongest and only argument supporting an interpretation of the Lanham Act that would lead to the unlawful use doctrine.[182] Namely, that the statutory basis for the unlawful use doctrine lies in implicit statutory basis.[183] In the Chevron doctrine era, an implicit statutory basis may have been enough to allow courts to defer to the agency’s expertise to allow this doctrine.[184] However, in the Loper Bright landscape, there will likely need to be something more explicit.[185]

Because TTAB decisions themselves have only been able to support the existence of this doctrine through policy reasoning and implicit statutory bases, the general consensus is that there is no explicit statutory basis for the unlawful use doctrine.[186] The TTAB’s decision in Satinine v. P.A.B. represents the USPTO’s most exhaustive discussion of the unlawful use doctrine to date.[187] In this decision, the TTAB panel comprised three members: Rice, Lefkowitz, and Kera.[188] Rice authored the principal opinion, and Lefkowitz and Kera both authored concurring opinions.[189] The implicit statutory basis for the unlawful use doctrine is presented in Kera’s concurring opinion.[190]

Kera presented the same arguments summarized above in Section III.A, namely, that the requirement for lawful use is necessarily implied in 15 U.S.C. § 1051, the section of the Lanham Act governing the principal register, because it is explicitly required in 15 U.S.C. § 1091, which governs the supplemental register.[191]

Rice responded to this assertion in an extensive footnote, saying there is a “very persuasive argument” that there is no statutory basis for the unlawful use doctrine.[192] Rice outlined the few places in the Lanham Act that use the word “lawful,” but explained that each is wholly unrelated to either the requirements of registration, the grounds that are used to refuse registration, or the grounds for cancellation of a mark.[193]

Moreover, Kera fails to acknowledge that “lawful use” in § 1091 has been interpreted to mean “exclusive use” rather than use that complies with other laws.[194] A 1976 TTAB decision reinforced the departure of the “lawful use” requirement of the supplemental register from the definition of the unlawful use doctrine as defined herein.[195] In this decision, the respondent tried—and failed—to argue that the drafters of the Lanham Act intended “lawful use” in § 1091 to be interpreted literally, meaning the use must not be “a violation of Federal, State, or local statutes.”[196] The TTAB rejected this interpretation and affirmed that lawful use in § 1091 simply means “exclusive use.”[197] Thus, even if statutory interpretation would require an implicit reading of “lawful use” into § 1091, the meaning of “lawful use” would not look like the definition of the “unlawful use doctrine,” as outlined in Rule 2.69 and as applied by the USPTO.

As outlined in Section II.C, there has been a lack of appeals challenging the validity of the unlawful use doctrine, which was likely due to the improbability of success during the Chevron doctrine era.[198] However, litigants may now have more confidence that a challenge to the doctrine would succeed due to the application of a Skidmore, rather than a Chevron, analysis. Applying the Skidmore factors to the agency’s interpretation of the Lanham Act, taking into consideration the applicable statutory basis arguments the USPTO may assert, shows that the agency’s interpretation fails to have the “power to persuade,” making the unlawful use doctrine invalid.[199]

The first Skidmore factor, the thoroughness evident in the agency’s consideration, weighs against agency deference.[200] “Thoroughness” requires a dive into how the USPTO analyzed all the relevant factors when enacting the unlawful use doctrine. Initially, the USPTO failed to recite a statutory basis for the doctrine in its origination in TTAB proceedings.[201] During promulgation of Rule 2.69, the USPTO only pointed to the section of the Lanham Act that generally gives the USPTO the power to make procedural rules and regulations but not substantive ones—failing to point to any section of the Lanham Act that would give the USPTO the power to require a good be lawfully shipped in commerce to meet the “in use” requirement.[202] Since promulgation, the USPTO has only been able to show implied statutory basis for this doctrine—implied basis that, even if permitted, fails to provide the definition of “lawful use” required for the scope of the unlawful use doctrine.[203] An agency’s analysis cannot be considered “thorough” if the agency makes such feeble attempts to establish a statutory basis for the doctrine.

The second Skidmore factor, the validity of its reasoning, also weighs against agency deference.[204] The validity of an agency’s reasoning requires a determination of whether the pronouncement of the unlawful use doctrine was “well-reasoned, substantiated, and logical.”[205] This is not an analysis of how well-reasoned and logical the policy is behind the doctrine. This is an analysis of how well-reasoned, substantiated, and logical the interpretation of the statute was in giving rise to the doctrine.[206] The reasoning behind the doctrine in its origination at the TTAB was saturated in policy assertions with no analysis regarding statutory basis.[207] At promulgation, there was a blanket reference to the statute that gave the USPTO the power to make rules and regulations according to the provisions set out in the Lanham Act.[208] As such, the USPTO provided little to no reason, substantiation, or logic for why the Lanham Act’s silence on whether the use must comport with other laws gave rise to requiring as much for registration.

The third Skidmore factor, the consistency with earlier rulings, also weighs against agency deference.[209] It is almost impossible for the USPTO to have consistency in applying the unlawful use doctrine due to the sheer volume of laws that exist and trademark applications that are filed. For example, in 2023, the USPTO received over 730,000 trademark applications.[210] Does society really expect that the USPTO has ensured the use of the asserted mark in each application has not violated any law? Moreover, while the USPTO has placed limitations on the unlawful use doctrine, these limitations have also not been applied uniformly.[211] For example, the TTAB has failed to uniformly apply the materiality requirement—the requirement that states the violation must be “of such gravity and significance that . . . , as a matter of law, it could create no trademark rights.”[212] In General Mills, the TTAB found that while the manufacturer’s failure to include nutritional information was a violation of the FFDCA, this violation was not material and did not justify canceling the mark.[213] However, in Stellar, registration was denied for a breath freshener mark due to the applicant’s failure to list the product’s weight on the packaging (also a violation of the FFDCA).[214] Because the USPTO has been unable to consistently apply the unlawful use doctrine, the agency’s interpretation giving rise to this doctrine should not be given deference based on this factor.

The fourth Skidmore factor is the general persuasiveness of the agency’s position, i.e., any other factor that may be used to convince a court of the agency’s position.[215] For example, the expertise of the agency may be a compelling factor under this category.[216] Essentially, a policy that is best enacted based on expert opinion should be left to the agency having that expertise. However, here, the USPTO is not making a policy decision based on its expertise. The USPTO is a body of experts of patent and trademark law.[217] It is not an agency with expertise in all U.S. laws that exists. As such, a policy requiring every mark be used in commerce lawfully does not fall within the USPTO’s bounds of expertise—making the “expertise” factor irrelevant.

A challenge to the unlawful use doctrine under the Loper Bright framework reveals significant weaknesses in the USPTO’s interpretation of the Lanham Act. The doctrine lacks explicit statutory support and relies on, at best, implied bases—bases that fail to meet the standards of thoroughness, validity, and consistency outlined in Skidmore. The agency’s inability to establish a clear statutory basis, its inconsistent application of the doctrine, and the absence of relevant expertise further undermine the doctrine’s “power to persuade.”[218] As the courts shift from Chevron deference to a Skidmore analysis, the unlawful use doctrine is unlikely to withstand judicial scrutiny. Thus, litigants challenging the doctrine may find greater success in this new legal era, and courts should resist adopting the unlawful use doctrine as a defense in trademark infringement suits.

B. Policy

While it may be wise for courts to mirror the USPTO when it comes to allowing the general principals governing registration of a mark to be applicable in determining whether a mark is actually entitled to protection, courts should not blindly adopt all doctrines the agency enacts. Rather, courts should analyze whether these doctrines should exist in the first place, not only by looking at the scope of the governing statute, but also by looking at whether the doctrine is wise to begin with.

In a final tug at the thread tying the unlawful use doctrine together, it is the impossible nature of the doctrine that calls for its retirement. As outlined above, it is impractical for the USPTO to ensure that the use of the asserted mark in each application has not violated any law. The USPTO has added limitations that narrow down this task, namely, that the violation must have previously been determined by an entity having “competent jurisdiction under the statute in question,” or that there has been a per se statute violation.[219] However, this limitation still requires the USPTO to be aware of all statutory requirements and perform a per se statutory analysis when it reviews each trademark application. Is the USPTO truly the agency that society wants to focus on enforcing these statutes? If the doctrine has to continue to exist, it should exist only if a previous entity, like a court or an agency, has determined there is a violation. If a violation has not been found, the USPTO should not exert its resources on an investigation that should be left to the agency whose job it is to do so. For these same reasons, when a court is tasked with a trademark infringement suit, the focus should not be on extra-agency statutes opening up a line of questioning that has nothing to do with trademark law. Trademark suits are already complex enough, leading to inefficiencies for all parties involved.[220] Adopting the unlawful use doctrine adds another unnecessary layer to the dispute.

The USPTO and courts alike should follow the lead of trademark’s sister discipline, patent law. Patent law has a “utility” requirement that once prevented illegal inventions from being patented.[221] However, over the years, the utility requirement has become narrower and easier to meet—eventually culminating to a point that allows illegal inventions to become patented.[222] For these issues, the USPTO leaves it to other agencies to decide how to enforce their governing statutes.[223] Specifically, the USPTO “defer[s] to the agency with specific expertise and authority in the area to determine whether it should take enforcement action in light of the possible illegality associated with . . . the invention.”[224] For trademark law, the USPTO and courts should adopt the same philosophy by disbanding the unlawful use doctrine.

While courts and the USPTO should aim to maintain consistency in their approach to trademark registration and enforcement, courts must not adopt doctrines without an examination into the doctrine’s practicality, statutory grounding, and wisdom. The unlawful use doctrine has a well-intentioned but ultimately unworkable framework that imposes an undue burden on the USPTO—an agency not designed to enforce the full spectrum of statutory requirements across all areas of law. Moreover, the unlawful use doctrine in trademark law, if it must exist at all, should be limited to instances where a competent authority has already deemed a violation. Courts reviewing a trademark dispute and the USPTO should focus on their primary mission—ensuring that trademarks function as reliable indicators of source—rather than becoming embroiled in tangential regulatory questions.[225] By doing so, they can simplify trademark disputes, improve efficiency, and refocus resources on the core objectives of trademark law.

V. Conclusion

Though well-intentioned, the unlawful use doctrine creates challenges for the USPTO and courts that are tasked with addressing trademark disputes. The doctrine’s application forces the USPTO into a role it is ill-equipped to handle, requiring comprehensive oversight of laws far outside its purview. Moreover, the doctrine complicates trademark litigation with issues unrelated to the core principles of trademark law. To benefit the trademark process, the USPTO should reconsider the existence of the unlawful use doctrine, and courts should reject adoption of the doctrine in trademark infringement suits. If the doctrine is to persist at all, its scope should be narrowed to cases where a violation has already been adjudicated by the relevant authority. This would preserve judicial and administrative resources while ensuring that the trademark system remains focused on its primary objectives: protecting the integrity of marks and their role as source indicators.[226]

In light of the Loper Bright landscape, litigants should have the confidence to begin challenging the unlawful use doctrine in appeals to the federal court system. As outlined above, the doctrine’s lack of explicit statutory grounding, reliance on tenuous implied bases, and practical inefficiencies make it an unfit standard that has no business existing. While these reasons may not have been enough for a court in the Chevron doctrine era to reject agency deference, under the new Loper Bright regime, litigants may have a stronger opportunity to be heard and dismantle the unlawful use doctrine using these arguments.

Nadia Engel

  1. U.S. Const. art. I, § 1; id. art. II, § 1; id. art. III, § 1.

  2. VPR Brands, LP v. Shenzhen Weiboli Tech. Co., No. 2023-1544, 2024 WL 3811774, at *3 (Fed. Cir. Aug. 14, 2024).

  3. About Us, U.S. Pat. & Trademark Off., https://www.uspto.gov/about-us [https://perma.cc/XZT5-DJ7F] (last visited Feb. 2, 2026).

  4. See Lanham Act, Pub. L. No. 79-489, 60 Stat. 427 (1946) (codified at 15 U.S.C. §§ 1051–1141n). Herein, sections of the Lanham Act will be referred to by their codified sections.

  5. See Loper Bright Enters. v. Raimondo, 144 S. Ct. 2244, 2273 (2024).

  6. VPR Brands, 2024 WL 3811774, at *3.

  7. See id.

  8. Id. at *4.

  9. See id.

  10. Id. at *3.

  11. Id. at *4.

  12. Infra Section IV.A.

  13. Infra Section IV.B.

  14. Infra Section IV.A; see Loper Bright Enters. v. Raimondo, 144 S. Ct. 2244, 2273 (2024).

  15. Infra Section II.C.

  16. See Loper Bright, 144 S. Ct. at 2258–60, 2273.

  17. Infra Section IV.A.

  18. See Ethan Horwitz & Benjamin Levi, Fifty Years of the Lanham Act: A Retrospective of Section 43(a), 7 Fordham Intell. Prop., Media & Ent. L.J. 59, 60–63 (1996); David O. Taylor, Patent Reform, Then and Now, 2019 Mich. St. L. Rev. 431, 440 (2019); L. Ray Patterson & Stanley F. Birch, Jr., A Unified Theory of Copyright (Craig Joyce ed., 2009), printed in 46 Hou. L. Rev. 215, 266 (2009).

  19. See Horwitz & Levi, supra note 18, at 60–63.

  20. Id. at 60–61.

  21. Id.

  22. Id. at 62.

  23. Id. at 63.

  24. James Boyle & Jennifer Jenkins, Intellectual Property: Law & the Information Society 276, 626 (6th ed. 2024).

  25. The U.S. Supreme Court declared the first congress-enacted statute regulating trademarks unconstitutional for claiming constitutional support from the Intellectual Property Clause but noted that the statute could have been based on the Commerce Clause. Horwitz & Levi, supra note 18, at 61. As such, Congress based all subsequent trademark statutes, including the Lanham Act, on the Commerce Clause. Id.

  26. Boyle & Jenkins, supra note 24, at 100.

  27. See Robert A. Mikos, Unauthorized and Unwise: The Lawful Use Requirement in Trademark Law, 75 Vand. L. Rev. 161, 195 (2022) (“The ‘in commerce’ language . . . provides the jurisdictional ‘hook’ Congress needs to regulate trademarks under the Commerce Clause.”). For a mark to qualify for trademark protection, it must meet several key criteria, including being distinctive, nonfunctional, used in commerce, and not falling under any prohibited categories. 15 U.S.C. § 1052. A registered trademark is a mark that has gone through an application and examination process at the USPTO, and an unregistered trademark is a mark that otherwise meets the requirements of being a trademark but has not been registered. Katie Peterson, Registered Versus Unregistered Trademarks: Why Registration Matters, Whitcomb Selinsky PC (Jan. 7, 2021), https://www.whitcomblawpc.com/business-law-blog/registered-versus-unregistered-trademarks-why-registration-matters [https://perma.cc/D3XT-AW6J]. The Lanham Act conveys several incentives to encourage trademark registration, but registration is not required to assert trademark rights. Barton Beebe & Jeanne C. Fromer, Are We Running out of Trademarks? An Empirical Study of Trademark Depletion and Congestion, 131 Harv. L. Rev. 945, 962 (2018).

  28. 15 U.S.C. § 1051(a).

  29. Id.

  30. Id. § 1125(a).

  31. Id.

  32. Restatement (Third) of Unfair Competition § 18 (A.L.I. 1995); Horwitz & Levi, supra note 18, at 66–67.

  33. 15 U.S.C. § 1127.

  34. Id.

  35. Id.

  36. Id.

  37. U.S. Const. art. I, § 8, cl. 1, 3 (“Congress shall have Power . . . [t]o regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes . . . .”).

  38. Mikos, supra note 27, at 173–74.

  39. VPR Brands, LP v. Shenzhen Weiboli Tech. Co., No. 2023-1544, 2024 WL 3811774, at *3 (Fed. Cir. Aug. 14, 2024).

  40. Id.

  41. Mikos, supra note 27, at 174, 188–89.

  42. Id. at 174.

  43. See id. at 188–89.

  44. See Kevin M. Stack, Purposivism in the Executive Branch: How Agencies Interpret Statutes, 109 Nw. U. L. Rev. 871, 887–88 (2015).

  45. About Us, supra note 3.

  46. U.S. Const. art. I, § 8, cl. 8.

  47. About Us, supra note 3.

  48. Melissa F. Wasserman, What Administrative Law Can Teach the Trademark System, 93 WASH. U. L. REV. 1511, 1523–25 (2016).

  49. Registration provides the trademark registrant with, inter alia, a constructive use date and a presumption of validity, ownership, and exclusive right of use. 15 U.S.C. § 1057.

  50. Id. § 1062(b).

  51. Id. § 1070.

  52. About TTAB, U.S. Pat. & Trademark Off., https://www.uspto.gov/trademarks/trademark-trial-and-appeal-board/about-ttab [https://perma.cc/7DS4-6DY6] (last visited Feb. 3, 2026).

  53. 15 U.S.C. § 1070.

  54. Id. § 1063; id. § 1064; About TTAB, supra note 52.

  55. 15 U.S.C. §§ 1070–1071.

  56. The VPR Brands court explains that the unlawful use doctrine originated in these PTO proceedings. VPR Brands, LP v. Shenzhen Weiboli Tech. Co., No. 2023-1544, 2024 WL 3811774, at *3 (Fed. Cir. Aug. 14, 2024). However, there is literature that suggests the unlawful use doctrine actually originated in a formal rule promulgated by the USPTO shortly after the Lanham Act passage, albeit in a much narrower form. Mikos, supra note 27, at 178–79.

  57. Coahoma Chem. Co. v. Smith, 113 U.S.P.Q. (BL) 413, 414, 417–18, 420 n.1 (Dec. Comm’r Pat. 1957).

  58. Id. at 417–18, 420 & n.1.

  59. See generally id. (introducing the requirement that goods must lawfully be shipped in commerce while failing to recite any statutory basis for this requirement).

  60. Id. at 418.

  61. In re Stellar Int’l, Inc., 159 U.S.P.Q. (BL) 48, 50–51 (T.T.A.B. 1968).

  62. 37 C.F.R. § 2.69 (2024).

  63. VPR Brands, LP v. Shenzhen Weiboli Tech. Co., No. 2023-1544, 2024 WL 3811774, at *3 (Fed. Cir. Aug. 14, 2024); Mikos, supra note 27, at 177.

  64. Stellar, 159 U.S.P.Q. (BL) at 49, 52.

  65. Id. at 49.

  66. Id.

  67. Id. at 50, 52.

  68. In re PharmaCann LLC, 123 U.S.P.Q.2d (BL) 1122, 1122, 1128 (T.T.A.B. 2017).

  69. Id. at 1124.

  70. Id. at 1124–25, 1128.

  71. Id. at 1128.

  72. See, e.g., CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 632–34 (9th Cir. 2007) (holding the sale of the plaintiff’s product was unlawful and therefore incapable of establishing trademark rights on that sale date).

  73. See Rule of Law and the Court, A.B.A. (Aug. 22, 2019), https://www.americanbar.org/groups/public_education/resources/rule-of-law/rule-of-law-and-the-courts/ [https://perma.cc/M6QC-SMNQ]: see, e.g., 5 U.S.C. §§ 702, 706.

  74. Common Law, Black’s Law Dictionary (11th ed. 2019).

  75. Horowitz & Levi, supra note 18, at 60–63; see, e.g., New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 307–08 (9th Cir. 1992) (establishing the normative fair use doctrine—the defendants use of a mark is not infringement if the mark is used to identify the trademark owner’s product or service, not the defendants); Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (establishing the Rogers doctrine—the use of a mark in an artistic work is protected by the First Amendment and is not considered infringement if the mark has artistic relevance and is not explicitly misleading).

  76. See, e.g., CreAgri, 474 F.3d at 630; United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1225 (10th Cir. 2000).

  77. VPR Brands, LP v. Shenzhen Weiboli Tech. Co., No. 2023-1544, 2024 WL 3811774, at *3–4 (Fed. Cir. Aug. 14, 2024).

  78. . Id. at *1.

  79. . Id.

  80. . Id.

  81. . Id.

  82. Id.

  83. Id. at *7.

  84. Id. at *1–2, *6.

  85. Id. at *2.

  86. Id. at *3.

  87. Id.

  88. Id. at *4.

  89. Id. at *2, *4–7.

  90. Id. at *5–6.

  91. Id. at *4.

  92. Id.

  93. Id.

  94. See CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630 (9th Cir. 2007).

  95. Id.

  96. Mikos, supra note 27, at 190.

  97. CreAgri, 474 F.3d at 630.

  98. Id.

  99. Id.

  100. United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1225 (10th Cir. 2000).

  101. Id.; 15 U.S.C. § 1127; Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526 (Fed. Cir. 1987); Clorox Co. v. Armour-Dial, Inc., 214 U.S.P.Q. (BL) 850, 851–52 (T.T.A.B. 1982).

  102. Perry v. H. J. Heinz Co. Brands, 994 F.3d 466, 468, 475 (5th Cir. 2021).

  103. Id. at 470, 475.

  104. Id. at 475.

  105. Id.

  106. VPR Brands, LP v. Shenzhen Weiboli Tech. Co., No. 2023-1544, 2024 WL 3811774, at *5 (Fed. Cir. Aug. 14, 2024).

  107. FN Herstal SA v. Clyde Armory Inc., 838 F.3d 1071, 1086 (11th Cir. 2016).

  108. Id. at 1087–88.

  109. Id. at 1087.

  110. Id.

  111. Id.

  112. VPR Brands, LP v. Shenzhen Weiboli Tech. Co., No. 2023-1544, 2024 WL 3811774, at *5–6 (Fed. Cir. Aug. 14, 2024).

  113. Id. at *5, *7.

  114. Id. at *6.

  115. Id. at *7.

  116. Id.

  117. Id.

  118. Id. at *4.

  119. See Mikos, supra note 27, at 185–89.

  120. 5 U.S.C. §§ 702, 706.

  121. Jonathan M. Gaffney, Cong. Rsch. Serv., LSB10558, Judicial Review Under the Administrative Procedure Act (APA) 3 (2024), https://crsreports.congress.gov/product/pdf/LSB/LSB10558 [https://perma.cc/N6BZ-E2YX].

  122. Id.

  123. Scott A. Keller, How Courts Can Protect State Autonomy from Federal Administrative Encroachment, 82 S. Cal. L. Rev. 45, 67–68 (2008).

  124. Gaffney, supra note 121, at 3; Scott A. Keller, Texas Versus Chevron: Texas Administrative Law on Agency Deference After Railroad Commission v. Texas Citizens, 74 Tex. Bar J. 984, 985 (2011).

  125. Gaffney, supra note 121, at 3.

  126. Chevron U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837, 842–43 (1984).

  127. Id. at 842.

  128. Id. at 842–43.

  129. Id. at 843–44.

  130. Id. at 843.

  131. Id. at 866.

  132. Id.

  133. VPR Brands, LP v. Shenzhen Weiboli Tech. Co., No. 2023-1544, 2024 WL 3811774, at *4 (Fed. Cir. Aug. 14, 2024).

  134. See Smith v. Coahoma Chem. Co., 264 F.2d 916, 920 (C.C.P.A. 1959) (affirming cancellation on alternate grounds); In re Application of Silenus Wines, Inc., 557 F.2d 806, 812 (C.C.P.A. 1977) (reversing refusal to register on alternate grounds); Weight Watchers Int’l, Inc. v. I. Rokeach & Sons, Inc., 546 F. Supp. 841, 843–44 (S.D.N.Y. 1982) (dismissing challenge to requirement because not timely pleaded); Johnson & Johnson v. Jack Frost Lab’ys Inc., No. 89-1291, 1990 WL 488871, at *1 (Fed. Cir. Mar. 6, 1990) (not raised on appeal); O–M Bread, Inc. v. U.S. Olympic Comm., 65 F.3d 933, 936 n.2 (Fed. Cir. 1995) (noting that TTAB’s “authority” to demand lawful use was not challenged on appeal) Vosk Int’l Co. v. Zao Gruppa Predpriyatij Ost, No. C11-1488, 2013 WL 5588296, at *6–7 (W.D. Wash. Oct. 9, 2013) (dismissing challenge to requirement because of insufficient evidence); In re Joy Tea Inc., No. 2022-1041, 2022 WL 4363462 (Fed. Cir. Sep. 21, 2022) (appeal voluntarily dismissed).

  135. See supra Section II.B.1.

  136. Kent Barnett & Christopher J. Walker, Chevron in the Circuit Courts, 116 Mich. L. Rev. 1, 30 (2017).

  137. Id. at 34.

  138. Id. at 33.

  139. See supra Section II.A; Barnett & Walker, supra note 136, at 33.

  140. Loper Bright Enters. v. Raimondo, 144 S. Ct. 2244, 2273 (2024).

  141. Id. at 2261 (citing United States v. Am. Trucking Assns., 310 U.S. 534, 544 (1940)).

  142. Id. at 2273.

  143. Id.

  144. Id. at 2267, 2273.

  145. See, e.g., Brittany Pemberton & Daniel Pope, After ‘Chevron’ Deference, “Respect”: ‘Loper Bright’ and Agency Policymaking, Reuters (July 8, 2024, at 06:22 CT), https://www.reuters.com/legal/legalindustry/after-chevron-deference-respect-loper-bright-agency-policymaking-2024-07-08/ [https://perma.cc/N6ZK-GEFL]: Kelly Walker, Revisiting Skidmore Deference After Loper Bright, J. Acct. (Dec. 1, 2024), https://www.journalofaccountancy.com/issues/2024/dec/revisiting-skidmore-deference-after-loper-bright.html [https://perma.cc/D8LU-TSXP].

  146. Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944).

  147. Id.

  148. See infra Sections III.B–C.

  149. See infra Part IV.

  150. See Loper Bright Enters. v. Raimondo, 144 S. Ct. 2244, 2273 (2024).

  151. See supra Section II.A.

  152. 15 U.S.C. § 1051.

  153. See supra Section II.C.

  154. Loper Bright, 144 S. Ct. at 2267.

  155. Id. at 2273 (notably absent from the holding is a requirement that courts follow Skidmore for all ambiguous statutes).

  156. Id.

  157. See Chris Micheli, Canon of Statutory Construction – Whole Act Rule, Cal. Globe (Oct. 26, 2022, at 08:41 CT), https://californiaglobe.com/fr/canon-of-statutory-construction-whole-act-rule/ [https://perma.cc/7NLL-7ZLK].

  158. Id.

  159. Id.

  160. 15 U.S.C. §§ 1051(d)(1), 1091(a).

  161. Id. § 1091(a) (emphasis added).

  162. Satinine Societa in Nome Collettivo di S.A. e M. Usellini v. P.A.B. Produits et Appareils de Beaute, 209 U.S.P.Q. (BL) 958, 967 (T.T.A.B. 1981) (Kera, concurring); William Baude & Ryan D. Doerfler, The (Not So) Plain Meaning Rule, 84 U. Chi. L. Rev. 539, 541 (2017).

  163. Lawful, Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/lawful [https://perma.cc/6Y48-E2FR] (last visited Jan. 27, 2026).

  164. Bruce Foods Corp. v. B. F. Trappey’s Sons, Inc., 192 U.S.P.Q. (BL) 725, 728 (T.T.A.B. 1976).

  165. Wasserman, supra note 48, at 1561–63.

  166. Id. at 1561.

  167. See B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 155 (2015).

  168. Gideon Parchomovsky & Alex Stein, Intellectual Property Defenses, 113 Colum. L. Rev. 1483, 1486–87 (2013).

  169. Id. at 1505–07.

  170. 15 U.S.C. § 1052.

  171. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).

  172. Wasserman, supra note 48, at 1515.

  173. Coahoma Chem. Co. v. Smith, 113 U.S.P.Q. (BL) 413, 418 (Dec. Comm’r Pat. 1957).

  174. See, e.g., 18 U.S.C. § 641 (showing a thief does not have property rights to stolen chattel); id. § 1028 (showing a fraudster does not have property rights to a victim’s identity document).

  175. CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630 (9th Cir. 2007).

  176. The FALCPA requires the labeling of food allergens in clear, plain language. 21 U.S.C. § 343(w).

  177. Diseases & Conditions: Peanut Allergy, Mayo Clinic, https://www.mayoclinic.org/diseases-conditions/peanut-allergy/symptoms-causes/syc-20376175 [https://perma.cc/R4LH-J3R3] (last visited Jan. 27, 2026).

  178. CreAgri, 474 F.3d at 630.

  179. Loper Bright Enters. v. Raimondo, 144 S. Ct. 2244, 2273 (2024).

  180. See, e.g., Pemberton & Pope, supra note 145; Walker, supra note 145.

  181. Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944).

  182. Supra Section III.A.

  183. Supra Section III.A.

  184. Chevron U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837, 843–44 (1984).

  185. See Loper Bright Enters. v. Raimondo, 144 S. Ct. 2244, 2273 (2024).

  186. Satinine Societa in Nome Collettivo di S.A. e M. Usellini v. P.A.B. Produits et Appareils de Beaute, 209 U.S.P.Q. (BL) 958, 967 (T.T.A.B. 1981) (Kera, concurring); Mikos, supra note 27, at 192.

  187. Mikos, supra note 27, at 181.

  188. Satinine, 209 U.S.P.Q. (BL) at 959 (majority opinion).

  189. Id.; id. at 966 (Lefkowitz, concurring); id. at 967 (Kera, concurring).

  190. Id. at 967 (Kera, concurring).

  191. Id. The supplemental register is designated for trademarks that are descriptive but have not yet acquired secondary meaning. Anne Gilson LaLonde & Jerome Gilson, The United States Supplemental Register: Solace, Substance, or Just Extinct?, 103 Trademark Rep. 828, 832–33 (2013). Once a mark gains secondary meaning and is exclusively used in commerce for five years, it can re-file to the principal register, where it receives full legal protections. Id. at 881–83.

  192. Satinine, 209 U.S.P.Q. (BL) at 964 n.2.

  193. Id.

  194. Bruce Foods Corp. v. B. F. Trappey’s Sons, Inc., 192 U.S.P.Q. (BL) 725, 728 (T.T.A.B. 1976).

  195. Id.

  196. Id. at 727–28.

  197. Id.

  198. Supra Section II.C.

  199. Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944).

  200. Id.

  201. See generally Coahoma Chem. Co. v. Smith, 113 U.S.P.Q. (BL) 413 (Dec. Comm’r Pat. 1957) (introducing the requirement that goods must lawfully be shipped in commerce while failing to recite any statutory basis for this requirement).

  202. 15 U.S.C. § 1123; Mikos, supra note 27, at 213–14.

  203. Supra text accompanying notes 182–97.

  204. Skidmore, 323 U.S. at 140.

  205. De La Mota v. U.S. Dep’t of Educ., 412 F.3d 71, 80 (2d Cir. 2005).

  206. This is implicit from the understanding that Skidmore is used to analyze the agency’s interpretation of the statute, not the agencies’ policies regarding the statute. Skidmore, 323 U.S. at 139–40.

  207. Coahoma Chem. Co. v. Smith, 113 U.S.P.Q. (BL) 413, 417–18 (Dec. Comm’r Pat. 1957).

  208. 15 U.S.C. § 1123; Mikos, supra note 27, at 213–14.

  209. Skidmore, 323 U.S. at 140.

  210. Bao Tran, Analyzing USPTO Trademark Statistics: What You Need To Know, Patent PC (Mar. 13, 2026), https://patentpc.com/blog/analyzing-uspto-trademark-statistics-what-you-need-to-know [https://perma.cc/4JEH-44AX].

  211. Compare Satinine Societa in Nome Collettivo di S.A. e M. Usellini v. P.A.B. Produits et Appareils de Beaute, 209 U.S.P.Q. (BL) 958, 967 (T.T.A.B. 1981) (establishing that there must be a nexus between the use of the mark and the violation and that the evidence must leave no room for doubt that the use was unlawful), with Gen. Mills, Inc. v. Health Valley Foods, 24 U.S.P.Q.2d (BL) 1270, 1274 (T.T.A.B. 1992) (establishing the violation must be material).

  212. Gen. Mills, 24 U.S.P.Q.2d (BL) at 1274.

  213. Id. at 1273–74.

  214. In re Stellar Int’l, Inc., 159 U.S.P.Q. (BL) 48, 49 (T.T.A.B. 1968).

  215. Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944).

  216. United States v. Mead Corp., 533 U.S. 218, 228 (2001).

  217. About Us, supra note 3.

  218. Skidmore, 323 U.S. at 140.

  219. Satinine Societa in Nome Collettivo di S.A. e M. Usellini v. P.A.B. Produits et Appareils de Beaute, 209 U.S.P.Q. (BL) 958, 964 (T.T.A.B. 1981).

  220. Glynn S. Lunney, Jr., Trademark’s Judicial De-Evolution: Why Courts Get Trademark Cases Wrong Repeatedly, 106 Calif. L. Rev. 1195, 1274 (2018).

  221. Lowell v. Lewis, 15 F. Cas. 1018, 1019 (C.C.D. Mass. 1817) (No. 8,568).

  222. William J. McNichol, Jr., The New Highwayman: Enforcement of U.S. Patents on Cannabis Products, 101 J. Pat. & Trademark Off. Soc’y 24, 33–36 (2019).

  223. Id. at 37.

  224. Id. at 37–38.

  225. Matthew T. Kincaid, Trademark Law Fundamentals: Purpose, Value, and Core Concepts of Trademarks, Kincaid L. KC, LLC (July 31, 2024), https://kincaidlawkc.com/trademark-law-fundamentals-purpose-value-and-core-concepts-of-trademarks/ [https://perma.cc/4N9G-RNE4].

  226. Id.