This article has been written by Kiranjeet Kaur of XIM University, Bhubaneswar. This article provides a step-by-step guide on ‘how to check a trademark status in the US’ along with the federal Intellectual property law related to trademarks in the states.  

Introduction

The term intellectual property can be elucidated as “a loose cluster of legal doctrines that modulate the usage of an extensive array of ideas and insignia.”’ It is indeed a comprehensive term, as it is inclusive of four vital domains of intellectual property that require extensive legal protection to preserve the incorporeal creations of the human mind. 

The four main areas of intellectual property are patents, copyrights, trademarks, and trade secrets. The United States Copyright Law, 1976 (U.S. Code: Title 17) aims at safeguarding various forms of expression, which mainly comprise musical compositions, novels, movies, computer software programmes, etc. 

Patents in the United States are governed by the Patent Act (U.S. Code: Title 35), which established the United States Patent and Trademark Office (the USPTO). Patent law aims to protect certain innovations and findings by researchers and scholars. Trademark law safeguards terms and marks, or emblems, through which a consumer is able to pick out the goods and/or services produced or distributed by a specific individual or a business entity among various competitors in the market. Trade-secret law aims to safeguard commercially valuable information, for example, soft-drink formulas, confidential marketing strategies, etc., that companies try to conceal from their competitors in the market. The “right of publicity” is slightly different as it attempts to protect the goodwill and interests of the celebrities in their images and identities.

This particular article primarily focuses on ‘how to carry out a trademark search in the United States of America’ and the Federal Intellectual Property Law related to trademarks in the states.

The federal intellectual property law of the US on trademarks   

Though trademarks constitute one of the crucial areas of Federal Intellectual Property in America, their protection does not stem from the US Constitution’s actual Intellectual Property Clause (Article 1, Section 8, Clause 8). The authority for federal trademark law stems from Congress’s power to regulate interstate commerce. This law aims to safeguard consumers from unfair competition by preventing businesses from misrepresenting the origin of their goods or services. It also incentivizes brands to invest in maintaining the quality and consistency of their offerings. Generally, any word, name, symbol, or device can be used as a trademark to identify a specific business’s goods or services. Well-known examples include brand names and logos like ‘Nike’ and its iconic “swoosh” symbol.

Eligibility for trademark protection depends on the uniqueness of the proposed mark. Generic and deceptive terms cannot be registered or protected as trademarks under any circumstances. Descriptive terms (e.g., New York Pizza, Fast Dry Cleaners) and surnames cannot be trademarked unless they acquire an association with a specific source of a product, which is known as “secondary meaning”. Arbitrary or merely suggestive terms can be listed and safeguarded as trademarks without the need to demonstrate secondary meaning.

 Territorial jurisdiction for a trademark registration

Trademark rights, like other components of Intellectual Property rights, are restricted to a particular land or territory, or, to be more specific, they are geographically limited. Further, they are enforceable only in the specific territorial jurisdiction where they have actually been recognized or otherwise availed of by the ventures. Therefore, for a mark to be safeguarded, it first needs to be registered in its respective individual territorial jurisdiction in different countries.

The disparate procedures of trademark registration in themselves can be really time taking, exorbitant, and sometimes managerially intricate. Therefore, a multiple number of international treaties focusing on the various facets of both national and international registration have been deduced under the aegis of the World Intellectual Property Organization. The main motive behind the formulation of these treaties was to systematise, coordinate, and enable the procedure for registrations in various territorial jurisdictions.  

What is a trademark

A Trademark can be defined as an attestation, a mark, or a sign that has the ability to differentiate the merchandise and commodities manufactured or furnished by one venture from those of other ventures and undertakings. All sorts of peculiar terms, expressions, alphabetical characters, numbers, artwork, illustrations, figures, hues, hallmarks, tags, or any such amalgamations used for the purpose of differentiating merchandise and commodities can be contemplated as trademarks. 

There has been a considerable increase in the number of countries that have gone a step further by permitting the listing of more unconventional forms of trademarks, such as exclusive hues, three-dimensional hallmarks (shapes of commodities or packaging), auditory signs (sounds), or olfactory signs (smells), rather than just sticking to the mainstream trademarks.

Definition of trademark under the TRIPS agreement 

Understanding the concept of trademarks can be tricky at times because we tend to believe that both copyright and trademark as a concept are the same thing, which is not true as Copyright solely aims at safeguarding the rights of the individuals who produce works such as literary, dramatic, musical, artistic, and some other specific original works inclusive of history tests and software code. Whereas trademarks aim at safeguarding an undertaking’s or a company’s goodwill and its product’s brand value, identification, and name, including symbols and taglines. 

Article 2(1) of the Berne Convention provides various instances of artistic and literary works, which are inclusive of drawings and paintings as they form a conventional example of artistic production. All types of pictorial apparatus, such as drawings, figures, paintings, logotypes, and photographs, are commonly used as trademarks. 

Since copyright security does not rely on the impetus for which intellectual creation is deliberated, making use of any such pictorial apparatus in trade and commerce to differentiate among various commodities and merchandise available in the market or for the purpose of commercials doesn’t really act as a hindrance to copyright security and preservation. 

Despite the rudimentary difference that exists between the criterion for copyright security and the necessity for discreteness for trademark security and preservation, like, for instance, artwork, painting, or similar pictorial apparatus, both fields of intellectual property may adequately have the benefit of security.

Various components of definition of trademark under the TRIPS agreement 

Article 15 of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement lays down an exhaustive definition of trademarks, which can help us understand the concept of trademarks in depth. The Agreement has elucidated the concept of trademarks as “Any mark or a symbol, or at times an amalgamation of both, having the capacity of differentiating the commodities and merchandise produced by one venture from those of other various ventures, shall be eligible to be called a trademark”. 

There are certain facets to this interpretation. Firstly, the trademark here in the definition provided has been interpreted as a substance, i.e., a symbol, sign, or mark. Such a sign could either be an alphabetical character, a number, an amalgamation of colours, a denomination, or any combination of the above-mentioned components.

Secondly, a trademark is interpreted based on the purpose it aims to serve, and it must be noted that a symbol or a mark chosen to be registered as a trademark has to be unique and indistinguishable. In the first place, the laws related to trademarks were enforced with a motive to achieve consumer security as well as  to effectuate various purposes of public policy related to consumerism, which is the protection or promotion of the interests of consumers. It prevents the general public from being misguided or deceived with regard to the quality standards and origin of the commodities.

Thirdly, a trademark has been explained in legal terms. Trademarks are one of the components of Intellectual Property. Listing a trademark bestows upon the owner an absolute right to make use of such marks or symbols for the purpose of identifying specific commodities produced in the market and even enables other interested parties to use them against any remittance or other benefits. More or less, the person thus owning the possession of a trademark can be any legal or physical person (most of the trademarks are possessed by firms today). Therefore, we can say that trademarks are an amalgamation of these disparate dimensions.

Trademark registration: ‘Need of the hour’ 

Talking about the system of registering trademarks, it was developed gradually with the motive of explaining the existence and extent of trademark rights and making other traders aware of such rights. Earlier, it was mostly goods that were registered and secured for trademarks, whereas registration of trademarks for services (‘service marks’) was totally discretionary under the Paris Convention; however, some of the countries still permitted the registration of such service marks. 

With the shifting focus towards providing services rather than just sticking to the same old traditional methods and approaches of manufacturing and producing goods (service economy),  the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights  (TRIPS Agreement) set forth the need to safeguard service marks in a similar way that trademarks for goods are safeguarded, wherein the laws applicable to trademarks shall be equally applicable to the marks associating goods and services. 

By and large, the trademarks are registered and safeguarded in relation to specific goods and services, which are comprehensively set out in the trademark registration procedure. For example, ‘FedEx’ for document delivery services, ‘Toyota’ for automobiles and related services, and ‘Samsung’ for consumer electronics. 

The owner of a registered trademark usually has the exclusive right to prevent others from using the same or similar mark for the designated products. However, this protection does not extend to unrelated products; for instance, a trademark registered for hairdressing services cannot normally be enforced against its use on a completely different product line, such as irrigation equipment.

In general, trademark rights are obtained only after the procedure for registration of a symbol or mark as a trademark is completed, but this is not the case in every country, as in some of the countries, the owners of ventures avail themselves of trademark rights on the basis of usage without any prior registration. Such unlisted trademark rights are called common law trademarks in certain jurisdictions. 

Although the TRIPS Agreement only constrains the member nations to grant rights to registered trademark owners, at the same time it strictly adheres to the provision laid down under Article 16.1, which clearly states that the member nations have the power to provide trademark rights on the basis of usage without any prior registration. Additionally, the Agreement also necessitates safeguarding certain popular and notable marks that are not registered. 

Advantages of getting a trademark registered 

The owner of a trademark has been bestowed with an absolute right to prevent other business owners from making use of such already registered trademarks in the marketplace for the purpose of identifying explicit commodities and merchandise. The owner of such a registered trademark can use it solely for his own use or can even entitle someone else to make use of the listed trademark customarily by means of a license against remittance or other advantages. 

Frequently, trademarks may be authorized by one owner who subsequently transfers the legal rights and responsibilities associated with the registered trademark to another entity. Therefore, the main purpose behind the entire trademark system is to protect the manufacturers against any such arbitrary and biased rivalry or competition from other manufacturers in the market looking to obtain a benefit out of the goodwill, esteem, and fame garnered by the actual trademark owner. 

Trademarks always act as an indication for customers to differentiate a commodity from other indistinguishable products available in the market manufactured by other ventures and serve as a means to count on the source company. Registering or listing a trademark offers a significant benefit as it enables customers to easily identify and purchase a particular product or service from a plethora of options in the market. This advantage largely stems from consumers’ past experiences with the product, such as its taste, quality, and other notable characteristics, which leave a lasting impression on them. Often, customers become aware of a specific product through advertising or word-of-mouth recommendations from satisfied users who trust and believe in the product.  Thus, we can say that trademarks help in maintaining the value and reputation of an undertaking and create awareness amongst buyers against any kind of skepticism and delusive practices. 

Important key factors to keep in mind while choosing or designing a trademark for registration 

Choosing or designing a pertinent and suitable trademark can be really arduous at times, as it is a pivotal component of an undertaking’s marketing strategy. So the prominent question that arises here is what could be an adequate trademark for a business’s goods and services? Apparently, there are no such stringent rules associated with choosing or designing a trademark for the purpose of registration, but at the same time, keeping in mind certain subsequent key factors can be really helpful before choosing a trademark for registration. Following are some of the key factors for choosing a trademark. 

• The owner of an undertaking should, before choosing a trademark of his choice, make sure that the chosen trademark meets all the necessary legal requisites.
• The trademark thus chosen by the owner needs to be inherently distinctive, meaning that it is not similar or puzzlingly alike to the trademarks already in existence, and for that, a detailed trademark search needs to be carried out beforehand. 
• The trademark should be legible, not be that complicated to write down, spell, and recall, and most importantly, be adequate enough to be displayed on various commercial platforms. 
• Another thing that needs to be taken care of is that the mark should not consist of any unwanted connotations and should neither be in one’s own local language nor in any of the languages when the goods and services are also meant for the purpose of prospective international trade.  
• The businesses also need to check that the relevant set of internet addresses ending with the same group of letters (domain name) is accessible for registration, as there is always a possibility of a clash arising between trademarks and domain names. The Internet address ending with the same group of letters, often used for searching web pages and databases, is called a domain name. 

For instance, the web address ‘wipo.int’ serves as the means to find the official website of the World Intellectual Property Organisation (WIPO), located at www.wipo.int. Gradually, these domain names have become remarkable and significant business identifiers, which often leads to clashes with trademarks. 

Therefore, it becomes necessary to select a domain name that possibly doesn’t turn out to be the existing trademark of some other business, especially an already established and familiar trademark. Such things need to be ensured beforehand because a number of national laws or courts consider the act of listing another undertaking or individual’s trademark as a domain name to be a  trademark contravention and violation, commonly referred to as cybersquatting. 

If such things are not taken care of, then in such a case, a company may not only have to hand over or call off their domain name but can also face several other repercussions, such as paying compensation and hefty fines. 

Checklist for choosing specific types of words for trademark registration  

It’s critical for businesses to be mindful of the implications associated with certain types of words at the time of choosing their trademark, as trademarks serve as a valuable asset to distinguish a company’s goods or services from those of fellow competitors in the market, so being thoughtful and aware before selecting certain words for the trademark is crucial to further enabling legal protection and market effectiveness.

• As mentioned earlier, any word or combination of words chosen for the purpose of registering a trademark needs to be intrinsically distinguishable. To ensure that the words thus chosen are intrinsically distinguishable, one can go for coined or “fanciful” words. 

These words are really innovative, involving the use of skill or imagination to create new words that don’t really have any inherently actual or established meaning to them but are definitely creative and invented terms, so when used, the product could stand out and have the capability of being differentiated from fellow competitors in the market. 

Products possessing trademarks consisting of such creative and invented terms definitely have an edge over other products available in the market, as they can be easily safeguarded and can enjoy the benefits of being a product with an intrinsically distinguishable trademark. 

However, having an inherently distinctive trademark is not always beneficial, as it can cause difficulty for consumers in recalling such tricky and puzzling terms and can also take a lot of work and effort to publicize the goods and services.

For example, the company CLOROX, which is an American company producing consumer and professional products globally, the Clorox disinfectant bleach that the Americans have known and trusted for generations, Google, Pepsi, Reebok, EXXON, etc. are all examples of fanciful trademarks that don’t really have an intrinsic or real meaning, nor do they have any relevance with the commodities to which they are associated, but still form the strongest and most protected trademarks in America and globally.

• Many times we see certain trademarks constituting symbols or marks that are highly inconsistent in relation to the good or service to which they are actually associated; such marks do have an intrinsic and real meaning attached to them but do not have any relevance to the product that the venture must be trying to publicise. 

Selecting arbitrary or whimsical marks can turn out to be really beneficial in safeguarding the trademark, but it can also be challenging for the ventures, as it might take a lot of effort to publicise and to build a strong interrelation between the mark and goods in the minds of the customers at the same time. 

For example, APPLE, where the dictionary meaning of an apple means a fruit, is rather used for selling electronic and technology devices, having no such relevance between the trademark and the product associated with it. Similarly, Sun in connection with Computer Technology and Camel in connection with cigarettes are all examples of arbitrary trademarks.  

• An undertaking can also go on with selecting suggestive marks for a trademark. Such marks are indicative of some of the characteristics or features of the goods or services offered by an undertaking. One of the benefits enjoyed by businesses that have trademarks incorporating suggestive marks is that they act as a medium for advertising their products. 

However, using suggestive marks as trademarks can involve potential risks, as certain countries may consider a suggestive mark to be excessively descriptive of the product. For example, ‘Jaguar,’ the luxury vehicle brand based in Britain with the trademark of an animal jaguar, is indicative of cars that are very fast; the company Microsoft is indicative of the software for small computers; the company Greyhound uses a fast dog (greyhounds, a popular dog breed, a champion sprinter), which hints towards fast travel; these are all examples of suggestive trademarks.

Terms that should not be used in selecting or designing a trademark for registration  

Businesses need to be really mindful and should restrict themselves from using certain terms or signs, as it might happen at times that the owners of businesses don’t have any prior knowledge about the types of marks that are generally not eligible for the purpose of registration as a trademark. 

Therefore, to prevent a  trademark from getting rejected, it is suggested to consult an expert in this regard who can educate companies and businesses about the categories of signs that are commonly not admissible for registration. An application for a trademark is likely to be refused on what is usually termed “absolute grounds” in the below-mentioned cases:

1. Generic terms- ‘Generic’ trademarks can be described as those marks that, with persistent usage, somehow end up becoming a part of the public’s day-to-day language and vocabulary. Such words or terms are used by the general public in common parlance and form a part of their everyday lives, so much so that the mark loses its affiliation with a particular business entity and instead ends up representing the good or service itself. 

When such a thing happens, the mark that was at first allowed registration based on its indistinguishable attribute now ends up being a generic mark, and as a result, it is now deprived of its peculiarity. This phenomenon is known as ‘genericization’. Cellophane, Thermos, Band-Aid, Velcro, and Aspirin are all examples of trademarks that have acquired the status of generic trademarks because of the large-scale use of the term in a way where it has been synonymously used in day-to-day conversation for a good possessing similar characteristics and is not in affiliation with the actual authentic or original brand. 

Generic marks generally do not qualify to be safeguarded at all by the laws laid down for the protection of trademarks until and unless the person applying for the registration is able to vindicate that the said mark has been granted a secondary denotation in association with its venture. Similarly, if someone decides to go by the trademark chair for registration to put on chairs for sale, such a mark would immediately be refused registration since “CHAIR” stands as a generic term for the good. 

Band-Aid, for example, is also a genericized term, as it was initially embraced and registered by the company Johnson & Johnson. Since then, the mark has been in usage time and again, habitually, as a result of which the term Band-Aid has now started being used interchangeably with “adhesive bandages,” making it a genericized trademark. 

Safeguarding generic trademarks involves potential risks as it would end up monopolising the entire trade and, as a consequence, would forcibly eliminate other contenders in the market, which is unfair on the part of other businesses. The biggest demerit of a genericized trademark is that it gives complete freedom to other contenders to enjoy the goodwill and reputation earned by the actual business organisation, and somehow the laws associated with the rights and interests of a business organisation that lost its trademark to genericide continue to remain grey.

2. Descriptive marks- As per the definition provided under Section 2(e)(1), 15 U.S.C.  §1052(e)(1) of the Trademark Act, in America, a trademark is considered to be descriptive if it provides information purely related to an ingredient, quality, characteristic, function, feature, purpose, or use of the goods and /or services associated with that trademark. 

For instance, the term ‘SWEET’ has a great possibility of getting disapproved of for the purpose of marketing chocolates because it is too descriptive of one of the characteristics of the goods being sold by the producer. Most importantly, it would be unjust on the part of other chocolate producers to give any one individual chocolate producer exclusive rights or services over the term “SWEET” for marketing their goods.

In a similar way, certain complementary or qualitative terms like “BEST”, “CLASSIC”, “RAPID”, or “INNOVATIVE” are also likely to face rejection until and unless they acquire any secondary meaning or are a part of  a distinct mark to avoid rejection. In such situations, it becomes necessary on the part of the businesses to put on a disclaimer explaining that they do not possess any exclusive rights or services on that specific part of the mark if they want to save their application for registration from getting rejected.

3. Deceptive trademarks- These are the types of trademarks that are anticipated to cause deception in the minds of consumers with regard to certain attributes associated with goods and/or services, such as the nature, quality standards, and geographical origin of the goods and/or services. 

For instance, making use of a trademark highlighting and emphasising “COW” for promoting margarine, which is a food that is similar to butter and made of animal or vegetable fats, would be considered a deceptive trademark and is likely to be disapproved as it would be misleading the customers, who have a possible tendency to perceive that the mark has some sort of affiliation with certain dairy products like butter, in the light of this above-mentioned example. 

4. Marks that are in conflict with public security, order and morality- Graphics or terms that are found to be in conflict with public peace, security, and morality are usually not approved for registration as trademarks as they are considered to be in contravention with regards to certain established customary standards of morality and religion prevalent in society. 
5. Surnames- In general, surnames cannot be used as trademarks, essentially because surnames tend to be descriptive and generic in nature, which are not suitable to be trademarked, and moreover, such surnames should be available for common use by all. For example, the surname “Smith”, which is a very common surname, is often associated with individuals and families. It would not at all be suitable to use the surname “Smith” for a trademark because it is a generic term and cannot be used alone for most goods or services.

Under the U.S. trademark law, a surname is eligible to be trademarked only when it meets certain parameters and has a “secondary  meaning”. The surname used as a trademark shall enable consumers to establish a link between the product and its trademark, indicative of the fact that the surname is now associated with a specific product or service rather than being thought of as just a family name. For a surname to be trademarked, it needs to be distinct and peculiar in nature so that consumers are able to recognise it as a source identifier for the goods or services related to it. Other things that are notable while registering a surname as a trademark are that it should not be vague and should be unique in nature

“McDonald’s” as such is a great example of a surname that has been successfully trademarked. Though McDonald’s as a surname is pretty common, it was successful in trademarking the surname because it possesses a secondary meaning as a brand associated with their specific restaurant services and food products. So whenever people hear the surname McDonald’s, they don’t really think of any individual having the same surname but of the restaurant services provided by the fast-food chain McDonald’s.   

6. Similar name for a similar product– To secure a federal trademark, a business must register the mark with the U.S. Patent and Trademark Office (USPTO), although limited common law rights are available without registration. Each registration is specific to a particular type of good or service. Trademark rights can also be obtained under state law.

Trademark owners have the authority to stop others from using similar marks to identify their goods or services if it could confuse consumers. They can take legal action to seek injunctions and compensation from infringers. In defense, accused infringers can argue that the trademark is not valid or that the marks or products are distinct enough to avoid confusion among consumers. If the trademark is renewed and maintained correctly, its rights can endure indefinitely. The same can be explained with the help of a popular American case law.

In the case of McCarthy v. Olin Corp.,119 F.3d 148 (2d Cir. 1997), the petitioner, Mr. McCarthy, owned the trademark “KABOOM” for a cleansing product. Olin Corp., the defendants here, launched a similar cleaning product, with the similar name “KA-BOOM”. A prosecution was brought against Olin Corp. by Mr. McCarthy for trademark infringement, alleging that the use of a similar trademark by Olin Corp. would create a sense of confusion amongst the buyers and would dilute the discreteness and peculiarity of his trademark. 

The United States Court of Appeals for the Second Circuit (2nd Circuit), in its analysis, adhered to the fact that the use of a similar name as a trademark by Olin Corp. is likely to cause confusion amongst the buyers. The court considered various other factors, such as the resemblance of the trademarks, the relevance of the goods, the channels of trade, evidence of actual confusion, and the strength of the plaintiff’s mark. The Court was under the observation that the trademarks used by both companies were actually similar to each other and that both products were meant for the purpose of cleaning, targeting the same consumer market. Olin Corp., in its defense, claimed that the trademark used by Mr. McCarthy for his business was invalid and unenforceable as the term used for the trademark was really generic in nature, and their trademark doesn’t stand in violation of any of the trademark rights. Supporting their claims, the Olin Corp. produced certain evidence arguing that the term “KABOOM” is used in common parlance by the people to describe any powerful cleaning product.  

The Court denied all the arguments made by Olin Corp. and ruled that the trademark used by MaCarthy for his cleansing product was indeed a valid and enforceable trademark. The court was of the view that although using the term “KABOOM” as a trademark is quite generic in nature,it does not dilute its peculiarity as a source identifier for MaCarthy’s cleansing product.

The Court passed its verdict in Mr. MacCarthy’s favor, holding Olin Corp. responsible for  trademark infringement. The Court issued an order to refrain the Olin Corp. from using the term “KA-BOOM ” as a trademark for their cleaning product. The Court also ordered Olin Corp. to pay compensation and damages for the loss caused to Mr. McCarthy’s  ventures because of trademark infringement. Therefore, this case demonstrates how trademark owners can effectuate their rights against trademark infringement and also, at the same time, depicts the importance of maintaining and safeguarding a valid trademark in order to stop other business competitors from using similar marks that might cause confusion among buyers.             

There are other prominent reasons for an application to be rejected in cases when an existing trademark is found to be in contradiction with the previous trademark rights or when there are two similar trademarks for a similar kind of product, causing a lack of clarity and confusion amongst the customers while buying a product. 

In such cases, certain trademark offices go on inspecting the conflict that has arisen in relation to the mark that is already in existence, inclusive of certain unlisted and notable marks, as a part of the everyday listing procedure, while at times an action is taken only when a trademark is questioned by a third party after the publication of the respective trademark is completed. 

In both situations, if the trademark is found to be similar or lacks clarity, further creating a sense of confusion amongst the consumers and giving a strong impression of being similar to that of a product already in existence, it will be disapproved of getting registered, depending on the situation. Therefore, big businesses should always count on trademarks that are unique in order to protect their goodwill and reputation in the market rather than choosing trademarks that are confusingly similar to the marks already in existence. 

How to check the status of your trademark application in US 

Talking specifically about the United States of America, one of the leading countries with a constantly growing economy, it has its own federal and individual state legislation with regard to trademarks and a centralized governing authority known as the United States Patent and Trademark Office (USPTO).

The main objective behind introducing the USPTO was to make trademark search easier for the applicants, wherein the USPTO’s Trademark Electronic Search System (TESS) database sets out the trademarks that are already registered and at the same time displays all the incomplete applications on the same platform. But it is always suggested to carry out detailed research regarding any similar marks that might be in existence in order to make your search more beneficial on the USPTO and can help in preventing any kind of confusion in identifying and tracking the mark that has been put forward for registration. 

The TESS stores data that is inclusive of various notable characteristics associated with the mark, and each of such characteristics is a searchable piece of information. Taking the help of TESS for a trademark search can be really helpful, as it helps an applicant learn about other marks that possess similar characteristics to the ones that are already in existence. 

Secondly, it enables an applicant to find a certain mark if he or she has prior knowledge of any of the attributes related to that respective mark because TESS serves as a database for every American Trademark that has been listed or has been applied for registration. Here is a step-wise guide on how to check a trademark application’s status in America.   

STEP 1: The applicants can visit the TESS website, which is a database of every U.S. Trademark that has been registered or applied for

Anyone can search trademarks for free using the USPTO’s Trademark Electronic Search System, or TESS. This is the Trademark Electronic Search System (TESS). So let’s say that you don’t remember what trademark number you are actually looking for, or in case you end up forgetting your application serial number or registration number, there are different search options that are available on TESS, like the Basic Word Mark Search, which can be really beneficial in this regard to applicants searching for a trademark whose registration number is not known.

The procedure to get a trademark registered can generally take up to ten or eight months, but on occasion, it can take a year or even longer than that before getting approved. It is always the responsibility of the applicant to stay updated and aware of his application’s progress, and he should make sure to check the status of his/her trademark application frequently in order to confirm whether the procedure is being carried out without any hitches. If the applicants fail to do so, it can end up causing a substantial delay or even result in the application being rejected entirely.

STEP 2: After selecting a search option, the applicants can search for their desired trademark  

The applicants can always track the status of their trademark application on the USPTO website, at http://tsdr.uspto.gov/. For instance, let’s search for all of Nike’s trademarks. 

There are multiple reasons why an applicant should routinely check his/her trademark application status. An applicant on his first trademark filing has to furnish certain information to the centralized governing authority called the United States Patent and Trademark Office (USPTO), which is designed solely for the purpose of carrying out exhaustive trademark searches by the applicants who have applied for the registration of their trademarks. The information thus furnished would then be assessed by a USPTO Attorney (commonly referred to as an “examining attorney”). 

Even after a proper completion of the assessment of the information, if at all a need to furnish additional information is felt, the same would be communicated by an examining attorney by means of issuing an “Office Action”. 

STEP 3: Click on the submit query button after entering the name of your desired trademark 

After typing the name of the trademark that you are trying to track on TESS, like here, where we have taken the example of Nike and all the trademarks related to it, the applicants have to simply click on the submit query button.

The applicant is required to submit a response within 3 months of the issuing of an Office Action. It is crucial to have knowledge about exactly when an Office Action was issued. Failure to respond within the prescribed duration would result in the application being rejected entirely. 

If more time is required by an applicant, he or she can always apply for a one-time extension from the USPTO. The applicants applying for an extension have to pay a fee of $125 in order to be granted an extension of an additional three months and must make sure that an application for the same needs to be filed before the completion of the inception time limit allotted to the applicants. 

STEP 4: After clicking on the submit query button, results for your desired trademark will be displayed on the website

After clicking on submit the query, around 168 to 300 results would be displayed on the website for Nike and all the trademark applications and registrations related to Nike.

After an application has been validated through a thorough examination conducted by an examining attorney, a time span of 30 days known as an “opposition window” will commence, wherein it gives an opportunity to any of the third parties to question and raise objections against a trademark filing. 

Any objections filed against a particular mark will also be displayed on the USPTO website when checking the status of that trademark application. A routine check on the progress and status of your trademark registration application is of paramount importance, as it enables you to take the right action and decision at the right time and helps in meeting the deadlines issued by the USPTO.

STEP 5: After the results are displayed for the trademark you are  searching for, simply click on the TSDR option available just beside the trademark you searched for.  

Then the applicants have to simply click on TSDR just beside where Nike is written along with its serial and registration number in the above picture under the status check.

The applicants can always track the status of their trademark application on the USPTO website, at http://tsdr.uspto.gov/, which is really user-friendly, not demanding extensive knowledge and understanding of modern technology and most importantly is cost-effective. 

Applicants have to simply enter their trademark serial or reference number on the Trademark Status and Document Retrieval (TDSR) page to track the status of their registered and pending trademarks. For tracking the status of any international trademark filings, it is suggested to check the Madrid Protocol in the same search. 

If needed, the applicants can also download and have a look at additional documents corresponding to the particular trademark application by simply clicking the “Documents” button, and if there arises any difficulty in tracking the status on TDSR, the applicants are free to make a call directly at any time during business hours.

STEP 6: The applicants can now check their registration status on the Trademark Status and Document Retrieval database 

Clicking on the status check is going to open a different database called the Trademark Status and Document Retrieval database 

It is suggested that the applicants check their trademark application status every three to four months when their application is still pending. Just getting your trademark registered is not enough, as the applicants should keep tracking the status every two to three months to make sure that no opposition or any objection has been filed by third parties with an intention to negate the applicant’s registration procedure. 

STEP 7: The applicants can check the description column provided on the website to track their application status 

Here we have all the information about the trademark; scrolling down, you’ll find the status of your application. Scrolling down to status here in the above picture, it says status registered, and then it has this little symbol, which is a registration symbol for a trademark. 

In cases where the clients hire a trademark attorney to represent them, the clients should ensure that they have proper knowledge about how the firm upon whom they have entrusted their trademark application deals with the status updates of their registration procedure. Most of the time, it is the attorneys who keep track of and record a client’s trademark application, explaining the facts and circumstances to the clients and informing them about the status, or, when needed, even educating and advising them about other outstanding issues or problems that have not yet been resolved.

In case the applicant wants to track an application that hasn’t been registered yet, the applicant can simply move to the previous tab and click here, for example, Nike RTNA (TSDR), as shown in the picture above in red.

After clicking on TSDR, it will show the status of the application to the applicants. Like here in the above picture, we get to see a different status, which means that the application is still under examination, as it has this symbol of a file with a little magnifying glass attached to it, which is indicative of the fact that the application is still under examination by an examination attorney. 

Using the TSDR system for trademark search

The system developed for the purpose of inquiring about trademark registration is maintained by the centralized governing authority known as the United States Patent and Trademark Office (USPTO). The system is known as the Trademark Status and Document Retrieval (TSDR) system. Originally developed in 2011, the Trademark Status and Document Retrieval system can be used as a downloadable web application.

The Trademark Status and Document Retrieval System as a portal is like a gateway, helping the official trademark examiners associate and link with the actual examining attorneys. It is also beneficial for law firms and businesses who want to have information about other businesses or entities already applying to use an intended mark to prevent potential future risks. The portal helps the applicants track their updated trademark statuses and additional documents. However, the applicants should not be under the presumption that the USPTO will always notify them about their current application status; it is the responsibility of the applicants themselves, or otherwise an attorney representing them, as the case may be, to frequently check their application status every few months.  

After registering a trademark in the Trademark Status and Document Retrieval System, the applicant will acquire a receipt along with a registration number. The applicants can then enter the received registration number on the Trademark Status and Document Retrieval Systems database to track the registration status of the application filed by the applicant. The other portal on which applicants can check their application status is the Trademark Applications and Registrations Retrieval (TARR) system. 

TSDR offers the ability to access and download documents that you have submitted as well as those uploaded by the USPTO. It also provides various search options based on criteria such as current owner, basic information, attorney correspondence, prosecution history, mark information, and goods and services. 

Failing to utilize the TSDR system can result in financial losses. This can occur if you overlook a filing deadline, leading to the unpremeditated withdrawal of your application, or if you neglect to submit a required document. If you require any further assistance, you have the option to reach out to the Trademark Assistance Center. 

Engaging the services of a trademark attorney can be beneficial when you require assistance with a trademark status check. These legal professionals possess extensive knowledge of trademark law and can assist you in locating the specific trademark filing you are seeking. Engaging the services of a trademark attorney can be beneficial when you require assistance with a trademark status check. These legal professionals possess extensive knowledge of trademark law and can assist you in locating the specific trademark filing you are seeking. Collaborating with a trademark attorney helps the applicants prevent common errors, such as: 

• Missing filing deadlines;
• Neglecting to follow up on document requests issued by the United States Patent and Trademark Office (USPTO);
• Protracting the registration process, thereby enabling others to utilize the mark you are applying for;
• Using an outdated mailing address; and
• Overlooking emails from the USPTO by failing to check your spam folder.

By working with a trademark attorney, you can ensure that these potential pitfalls are avoided and that your trademark application proceeds smoothly.

Types of trademark status 

While the procedure for procuring the trademark status of the filed applications through the webpage of the Trademark Status and Document Retrieval System (TSDR) is not that difficult for the applicants, interpreting the updated status of the registration procedure can be a slightly difficult and confusing task for the applicants at the same time. This is when the clients can take help from the trademark attorneys, who have extensive knowledge about the trademark laws and can really guide and explain the updated trademark statuses of their clients. The types of trademark status have been listed below:

• Under examination- Once your application for trademark registration has been entrusted to an examiner for the purpose of a thorough evaluation, the status of such application will continue to be enumerated as an under examination application. The beginning evaluation stage persists for roughly four months. 
• Office action issued- In situations where an examining attorney finds out any legal issues associated with the trademark, an Office Action is likely to be issued. This could happen because the trademark chosen by you might strongly resemble other marks that are already in existence or because the trademark thus chosen fails to fulfill any other necessary legal requirements. For instance, explanatory or geographic names will not be approved for registration. It is vital on the part of the applicants to respond to the Office Action issued against them within a prescribed time limit of exactly three months, or the application would end up being rejected entirely.    
• Published for opposition- When the examining authority finds no opposition filed by any third party against the registration, the trademark thus chosen becomes eligible to be circulated and published in the Official Gazette. After the completion of publication, any third party who is willing to raise an objection against the registration of a particular trademark needs to file an opposition for the same within a prescribed period of thirty days.
• Notice of allowance- If no third party files an opposition within the prescribed time period of thirty days, then a Notice of Allowance is issued, implying that your chosen trademark has been permitted to be registered but has not been registered yet. Further, the Notice of Allowance starts a six-month window wherein the trademark registrant has to submit certain necessary documents, such as a Statement of Use, and is also enabled with the provision to make a request for an extension of six months to file the Statement of Use. 
• Abandoned/dead- When no answer has been received in response to the issuance of an Office Action within a prescribed duration or the failure of the trademark registrant to file the Statement of Use before the expiry of the prescribed time limit, an application can be enumerated as an abandoned or dead application, and once a trademark application has been listed as an abandoned or dead application, it is not safeguarded from usage by any third party who is now open to making use of such trademarks freely.
• Registered- This status is indicative of the fact that the trademark of your choice has officially been registered, giving absolute freedom to entities to make use of the symbol, wherein there is no need for any additional information or measures to be undertaken as late as the fifth or sixth year of the trademark proprietorship.

It is crucial to regularly monitor the status of your trademark application to ensure a smooth registration process. Collaborating with a trademark attorney can help you stay updated on your application’s progress. It is important to verify that the USPTO has received all the necessary documents, and the applicants should make sure to respond to any Office Actions without any delay. By doing so, you can expedite the trademark registration process, save time, and secure trademark protections as soon as possible.

Conclusion

Carrying out a trademark status search in America is a critical step in tracking the current status of a trademark for the applicants The entire procedure involves keeping a frequent check on the United States Patent and Trademark Office (USPTO) database to confirm that the desired trademark is not already registered by some other entity or awaiting registration by some other party. To carry out the status search, applicants can simply visit the official website of the USPTO database or the Trademark Electronic Search System (TESS).  Secondly, the applicants can take help from the TESS database to find trademarks that are similar to each other or any other potential objections in relation to the proposed mark. The applicants can now view the search results and look into the status of any similar marks found. It is suggested that the applicants check for both registered and pending trademark applications. If the search reveals that the desired trademark is available and does not conflict with existing registrations, it is generally safe to proceed with your application. If there are conflicting trademarks already registered or pending, consult with a trademark attorney to assess the risks and explore potential solutions, such as modifying your trademark or conducting further clearance searches. Remember that performing a comprehensive trademark search is crucial to avoiding potential legal issues and ensuring your brand’s protection. While conducting a basic search through TESS is a good starting point, it’s recommended to seek professional advice from a trademark attorney for a more thorough and reliable assessment of your trademark’s status and potential risks.

References   

• https://www.wto.org/english/tratop_e/trips_e/ta_docs_e/modules3_e.pdf
• https://www.ecsdev.org 
• https://www.wipo.int/export/sites/www/sme/en/documents/guides/customization/making_a_mark_nig.pdf 
• https://www.mandourlaw.com/descriptive-trademark/ 
• https://www.mondaq.com/unitedstates/trademark/567288/what-is-a-descriptive-trademark 
• https://cuetolawgroup.com/how-to-check-a-trademark-status/ 
• https://guides.lib.utexas.edu/c.php?g=532337&p=3642136 
•  https://vakilsearch.com/usa-trademark 
• https://www.gerbenlaw.com/blog/checking-the-status-of-your-trademark-registration/ 
• https://www.galliumlaw.com/making-sure-your-trademark-is-inherently-distinctive-when-filing-with-the-uspto 
• https://www.worldtrademarkreview.com/global-guide/the-wtr-yearbook/2022/article/united-states 
• https://thelawreviews.co.uk/title/the-trademarks-law-review/usa
•  https://vpgc.iu.edu/doc/ip/basic_facts_booklet.pdf 
• https://www.stopfakes.gov/article?id=How-to-Check-if-a-Trademark-is-Already-Registered 
• https://www.uspto.gov/trademarks/apply/check-status-view-documents 
• https://www.bpmlegal.com/content/howtotmsrch 

This article is written by Amandeep Kaur, a law graduate of Panjab University in Chandigarh, India. The article states the law relating to liabilities of vendors, lessors and builders under the Restatement (Second) of Torts Act in the United States with the help of illustrations and case laws. The article tries to include a detailed explanation of every clause under the Act and the remedies available to builders, vendors and lessors.

It has been published by Rachit Garg.

Introduction

A tort is a civil wrong. It can be described as an act or omission that causes injury to another person. Whether such injury was caused by the other person intentionally or that person was under a compulsion to do something or he didn’t do that act, as a result of the omission of this act to perform, the injury is caused to the other person. There are generally three liabilities under the Restatement (Second) of Torts – liability for intentional torts, liability for negligent torts, and strict liability for selling and making defective products. In this article, we will try to study the liabilities of vendors, lessors, and builders under torts.

Definitions of vendor, lessor and builder

Before diving into the topic of the liability of a vendor, lessor, and builder, we need to understand who a vendor, builder, and lessor is.

• Vendor: A vendor is a person who sells a chattel but does not manufacture, compound, pack, or otherwise create the finished product that is sold. 
• Lessor: A lessor is a person who grants a lease to someone else. A lessor is the owner of an asset that is leased or rented to some other party, which is known as a lessee. A lessor can be a company or an individual, depending on who or which entity owns the building. The lessor can also be called a “landlord” in some situations and is the owner of the property.
• Builder: A builder is a person who builds on specific instructions from the client. Generally, he is not the owner of the land. There can be a contract builder, builder vendor and builder lessor. Contract builder is one who is responsible for signing a contract to construct the building, whereas the builder vendor is the one who sells this constructed building, and the lessor is the one to whom the building is sold or leased. The contract builder is held liable for the dangerous defects that he had done in the same way that the manufacturer of products under the law of torts is held liable for defective products. While the builder vendor/ builder lessor is held liable for negligence, they enjoy the immunity of “caveat emptor”. According to the doctrine of caveat emptor, it is the duty of the buyer to be aware before buying his property, as he has the opportunity to inspect the property before buying. However, the courts held that builders can be held liable for negligence for foreseeable damage to an occupier of a building. 

General liabilities in torts

The liability that is available under US law of torts is liability due to negligence under which there is certain duty of care that has to be followed by the party otherwise the party is held liable for the injuries caused due to negligence caused. Since liability under negligence is limited to just the act of the defendant whether he acted carelessly or not, there is another liability that is strict liability and one such example under strict liability is product liability. The law of strict liability was introduced in the nineteenth century. The law has seen a progressive change from the concept of negligence, where a person is held liable due to carelessness and there lies a duty of care, whereas under the doctrine of strict liability, the defendant is held liable irrespective of whether there is negligence on his part or not. There are various causes of action when a person is injured by a defective product. These causes of action can be breach of warranty, which includes breach of any implied or express condition mentioned in the contract, negligence, which is a breach of the legal duty of care by the plaintiff; and strict liability, which makes the defendant liable irrespective of the fact that he behaved in a negligent way or with an intention. The theory of strict liability came into force after certain shortcomings were faced while claiming damages under the rules of negligence and breach of warranty. The doctrine of strict liability was adopted in the case law of Escola v. Coca-Cola Bottling Co. (1944) in the field of defective products.

In addition to this, there exists another type of liability under strict liability which can be called as product liability which is a specific kind of liability and has evolved under the law of torts. As per this liability the manufacturers can be held liable for the injury caused due to the defective product based on doctrine of strict liability and without the want for proof of negligence.

In the above case law, a waitress was injured by an explosion from a Coke bottle. The judgment was given in favor of the waitress based on negligence. It was held that irrespective of the fact that the manufacturer exercised due care, only the principle of strict liability would deter carelessness on the part of manufacturers, as the risk of such accidents is constant. This approach has been adopted by almost every American State under the Restatement (Second) of Torts Section 402.

According to this Section, when a person sells a product in a defective condition, the seller is liable for causing harm when he is involved in selling defective products. The doctrine of strict liability states that the seller shall be held liable even though all possible care has been taken while preparing the product and the consumer has not entered into any contractual relationship with the seller.

Section 402A of the Restatement (Second) of Torts defines who is a seller. This definition is vast enough to include manufacturers, wholesalers, and retailers. Also, those who lease the products on a long-term basis are sellers. There are certainly three main categories of defects that make a product “unreasonably dangerous” to a user or consumer: 

These can be:

• Manufacturing defects: Manufacturing defects are those defects that occur during the construction or production of an item and the plaintiff just needs to show that the product was defective.
• Design defects: Design defect cases are more difficult to prove than manufacturing defects, as the plaintiff needs to prove not only that the decided plan was not followed but also he needs to prove that plan was not that good. It always deals with the concept of “was the product safe enough?”, which is a question of reasonableness.
• Failure to warn defects: The failure to warn of risk involves the following conditions that must be specified such as the risk must be specified along with the reason disclosed for warning.

It has been reiterated by the Supreme Court of North Carolina in the judgment of Swift Co. v. Tempelos (1919) that the words seller, manufacturers and chattels  can be equated with the words builders and vendors.

Liability of vendors 

Strict liability in tort for builder-vendors of homes

Restatement (Second) of Torts Section 402A is a law which provides for strict liability of torts for builder-vendors of homes. Earlier, the doctrine of strict liability was based on the principle of negligence, but this doctrine has seen much expansion since then, when the builder-vendors are no longer exposed only to strict liability.

Liability of vendors 

A chattel can be described as personal property that can be either movable or non-movable in nature. The manufacturers, contractors, and vendors have been given the same meaning by the courts while giving judicial decisions pertaining to their liability. The vendor is held strictly liable when he considers the chattel to be a safe one and does not know the risks associated with it; he cannot escape from this liability on the ground that he was making a conscious misrepresentation of the risks involved. However, his liability can be reduced and can be held liable under negligence when he proves that he delivered the chattel with misrepresentation.

In the case of Pearlman v. Garrod Shoe Co. (1937), the vendor falsely represented the shoes to be fit and of orthopedic design, but the shoes were loosely bunched and creased which further developed blisters in the feet of the wearer. So the Court of Appeals of the State of New York held that the plaintiff should recover on the ground of negligence, irrespective of the contract. Another situation may arise when the vendor firmly believes the chattel to be safe. He may have such a belief without inspecting such chattel. The vendor is to be held liable on the grounds of negligence.

There can be another situation that the vendor may face. This is when the vendor honestly believes the chattel to be safe and harmless for any use. He reasonably believes that there is no need to call any attention to its use as the purchaser is aware of normal dangers he will overcome while using it. Here also, the vendor is not liable for his act. However, the vendor is held liable in such conditions when he has sold the chattel without inspection because he has omitted to do something. 

Thus, the purchaser has all the protection when he has a cause of action against the manufacturer for harm caused by dangerously defective chattel. In some cases, the vendor is liable even if he is innocent for breach of an express or implied warranty. 

While considering the liability of the bare vendors, who are the ones who sell the house but are not involved in the construction of the house, the rights of the purchaser are determined by the terms of the contract between the parties, but the general principle of caveat emptor i.e. buyer beware must be followed. However, there are three exceptions to this general principle:

• When a house is leased or sold during construction, there is an implied term that works and materials of appropriate standard will be used.
• When a landlord lets furnished property, it is always implied that premises are fit for purpose.
• When public authority is discharging duties, it has to be implied that the premises are reasonably fit for human consumption.

Liability of vendor for pre-existing defects

The liability of sellers of real estate which involves pre-existing defects is discussed below. In Anderson v. Cosmopolitan National Bank (1973), the Illinois Supreme Court examined the liability of the real estate sellers due to personal injury from defects that already existed when the contract was entered into and that the buyer could not repair those defects due to a shortage of time. The  Circuit Court of Cook County held that an ordinary vendor is not liable for personal injuries due to defects in the property that occurred after the possession of the buyer. But the Supreme Court reversed the decision and held that a vendor, even though he does not have the property, is responsible for injuries when the vendee or the buyer does not have sufficient time to repair the already existing defects. Thus, there is no difference between the liability of the vendors who sell using installment contracts or by virtue of rights under other contracts.

As a general rule, when a vendor transfers possession and control over property, he is not liable to third persons injured due to defects existing on the premises at the time of transfer. Thus, where a vendor is not responsible for injuries caused due to defects in the property after the sale, he is not liable for the same. This rule is supported by the argument that the negligence of the vendor cannot be the proximate cause of injuries when he does not have property. 

The surrender of property by the vendor to the vendee ceases his liability, and the liability of the vendee begins. It is also to be noted here that in the case of installment contracts, the vendee still has ownership rights and control over the property. In the case of an absolute sale, the vendor divests himself of title and all rights of possession or re-entry into the premises for any kind of repairs. So the installment contractors must not be considered to be vendors. 

On analyzing the situation, when there is an agreement to repair between the vendor and the vendee, a vendor is not liable to the tenant or subtenant for the injuries caused by defects in the premises. And in such circumstances, plaintiffs’ injuries are too remote to make the vendor liable for defects, even if there was an agreement to repair between both of them. However, the courts followed a liberal approach while deciding such cases where an agreement was made between the parties to enter into the premises and repair if any defect existed.

In Alaimo v. Du Pont (1954), the Appellate Court of Illinois held the defendant liable as there was an additional right with the appellant to enter into the premises to repair, which was the cause of the death. Even the courts went to an extent under which a mere covenant to repair would not make the defendant liable. In another situation, such as when the plaintiff got injured by falling from a railing and the defendant agreed to repair earlier but did not repair, the defendant is held to be liable for breach of condition under an agreement to repair, and if due to this non-repair by the defendant, the injury was caused.

The Restatement (Second) of Torts also mentions the liability of the vendor. A lessor of land is subject to liability for physical harm caused to his lessee and others upon the land with the consent of the lessee or his sublessee by a condition of disrepair existing before or arising after the lessee has taken possession if the lessor, as such, has contracted by a covenant in the lease or otherwise to keep the land in repair. 

Exceptions to the general rule of vendor’s liability

As a general rule, the vendor is not liable for any injury that arises after possession has been transferred, but under the exception, the vendor is liable in tort after a transfer of possession and control when he does not disclose a condition that he was already aware of and that could not come into knowledge of the vendee even after reasonable care. The liability of the vendor generally continues till the vendee has discovered the defect or had reasonable time to repair it. This protection further extends to any person to whom a further vendee has leased or sold the house. Now, what amounts to reasonable time is a question of fact. It has to be determined according to the facts and circumstances of the case. 

While holding the vendor liable under this principle, the reasonable time in cases where the defect was knowingly concealed by the vendor continues to run from the time of discovery by the vendee, while, in cases of a patently dangerous defect, the reasonable time starts from the moment ownership is transferred to the vendee. Thus, if the vendor is made liable in such cases after they have given up possession, they will be more reluctant to dispose off their property as they may be subjected to tort liability.

Liability of lessors

The lessor leases his property to the lessee, and this lease is regarded as equivalent to the sale of premises for the time being. The lessee becomes the owner and occupier and is subject to all the responsibilities while being in possession. The lessor surrenders his possession and control of land to the lessee with only reversionary interest, which means that he will return the property to the original owner on fulfillment of certain conditions in the property. Therefore, keeping in mind the above conditions, the lessor is not liable to the lessee or others entering the land for defective conditions existing at the time of the lease. However, there are certain exceptions under which the lessor is liable for defects in the premises stated under Restatement (Second) of Torts, which are explained as follows:

• Restatement (Second) of Torts, Section 357:  According to this Section, when the lessor contracts to repair, the only remedy earlier available to the tenant was damages for breach of contract in the form of cost of repair or rental value of the property. The tenant could not recover any losses due to personal injuries caused to them. So this Section enables the tenant to recover the losses for the personal injuries caused due to the defects caused as a result of  the lessor.
• Restatement (Second) of Torts Section 358: According to this Section, the lessor is held liable when there are undisclosed dangerous conditions that are known to the lessor but are unknown to the lessee. Whenever a lessor of land conceals or fails to disclose any condition, either natural or artificial, that is dangerous to the persons on the land, then the lessor is held liable to the lessee or any other person on the land with the consent of the lessee or sublessee after possession has been taken by the lessee. As a general rule, the lessor is not liable for defects in the premises. However, the lessor will be held liable if –

• The lessee does not know or has reason to know the condition of risk involved.
• The lessor knew about the risk involved but had reason to expect that the lessee would not discover any condition or realize the risk.
• If the lessee conceals the condition, the lessor is liable until the lessee discovers it and has taken sufficient precautions against it.

However, the lessor is liable only in case of latent conditions and not to the patent or can be reasonably determined by the tenant.

• Restatement (Second) of Torts, Section 359: When the lessor leases the land for a purpose that involves admission of the public, then the lessor is under an affirmative duty to exercise reasonable care to inspect and repair the circumstances to avoid any kind of risk to the public who may enter.
• Restatement (Second) of Torts, Section 360 and 361:  These Sections deal with the circumstances when a building is rented for multiple purposes. For example, a part of the building is used for office use and the other part for residential purposes. Under such conditions, the lessor has possession and control over the common passageways. Thus, an obligation arises on the part of the lessor to exercise reasonable care to inspect and repair the premises to protect the lessee, his family members, employees, invitees, etc. 
• Restatement (Second) of Torts, Section 362: This Section deals with negligence on the part of the lessor. When the lessor has agreed to repair the defects either by agreement or orally and he fails to exercise reasonable care in repairing the defects, he is held liable for injuries to the tenant, and it is unknown to the tenant that the repairs were negligently made. However, this exception comes only when the lessee lacks knowledge that repairs are either not made or have been negligently made. In the case of Cesar v. Karutz (1875), the Court of Appeals of the State of New York held that the lessor must disclose all the concealed dangerous conditions existing at the time of transfer of possession. This liability extends to not only tenants but sub-tenants, employees, social guests, or any other using the premises. 
• Restatement (Second) of Torts, Section 379: As per this Section, if the lessor of the property knew or should have known that there existed an unreasonable risk of physical harm to others outside of the land, he shall be liable for the physical harm caused in the same way as he had possession of the property. So the lessor cannot escape liability for causing danger to the public or adjoining property, as he was aware of dangerous conditions existing on the property.

During the early nineteenth century, when an agreement between the lessor and lessee concerning repair clause was breached, the only remedy available to the lessee was contract action for breach. But as of present situation,  lessors are held liable for defects that had caused injury or harm to the tenant, his family members, or their guests. The earlier position under which no remedy was available was adopted by The Restatement (First) of Torts, Section 357, but now The Restatement (Second) of Torts and the Restatement (Third) of Torts, Section 53 (2012), have adopted the latter view and a wider approach.

However, there are certain judgments given by various courts which provide that the lessor is not liable even after the certain exceptions mentioned above. In the case of Pagelsdorf v. Safeco Ins. Co. of America (1979), the Supreme Court of Wisconsin held that none of the exceptions to the general rule applied to the facts of the case. The Court clarified that the landlord is under a duty to exercise ordinary care in the maintenance of the premises. The same rule was applied by the New Hampshire Court in Sargent v. Ross (1973). The Supreme Court of New Hampshire held that the general rule of non-liability would not apply. Instead, the general principles of negligence should apply. The questions such as control, hidden defects, and common use only help to determine negligence. To conclude, it would be wrong to justify the above point where the lessor is not held liable for injury caused due to defective premises. So a landlord owes his tenant a duty to exercise ordinary care.

In Knight v. Hallsthammar (1981), the implied warranty of habitability created a duty on the part of the lessor to deliver the premises in habitable condition. So a number of courts have held lessors legally accountable. In the case of Becker v. IRM Corp. (1985), the Supreme Court of California held that landlords must be strictly held liable for injuries caused by latent structural defects in the premises. However, this decision was criticized a lot and repudiated in Peterson v. Superior Court of Riverside County (1995). It was held that a tenant could not reasonably expect a landlord to have eliminated defects of which he was unaware and which would not have been disclosed by reasonable inspection. 

Certain other relationships have similar duties imposed, such as landlord-tenant, businessman-patron, employer-employee, and carrier-passenger. Thus, there exists a duty on one party who has control over the other to take reasonable precautions against the harm caused due to defects in the property. One such relationship between landlord-tenant is explained below.

Tort liability of Landlord

As a general rule of liability of landlords under the law of torts, when a premises is rented to a tenant and injury occurs on the premises, the tenant, i.e., who is an occupier in the present situation is liable for this. The landlord has no more control over the property now, and he is not even entitled to enter the premises without the tenant’s permission. But recent developments in the law have made the landlord liable for any defects caused on the premises. The rationale behind this liability was kept since the landlord is in a better position than the tenants to pay for the defects caused on the premises and has ultimate control over the general conditions surrounding the apartment. However, there are certain exceptions to this rule, which are discussed below:

Exceptions to general rule

• There are certain hidden dangers that are known only to the landlord or he should have knowledge about them. He failed on his part to disclose these to a tenant and as a result, the injury has been caused to the tenant.
• In some cases, the extent of landlord’s liability is so wide that he is made liable even for the dangers caused to people outside the premises. For example, A, a tenant rents his house to a sub-tenant and agrees with the landlord to keep the building repaired. But later on, A neglects to carry out any repair work, due to which the building collapses, crushing the cars parked alongside. So here, A and the landlord both can be held liable for the activities carried out by them, irrespective of the fact that there was an agreement signed between them.
• The landlord is also held liable if he retains control over the pathways, such as common halls or stairs in an apartment building.
• The landlord must often repair the premises. It may be statutory duty or by the mode of agreement in the lease. So if he fails to repair any such defects, he is made liable for the defects that can cause harm and danger to the property.

Liability of landlord for disrepair of premises

As a general rule, the landlord is liable for any defects caused in the premises which were reasonably detectable, but when the tenant is made aware of existing dangerous conditions by the landlord or comes to know about these defects by using his senses, then the legal duty of the landlord is completely discharged. The landlord has no duty towards third persons coming upon the land. A legal principle is that where a landlord lets the premises in  a ruinous condition or in a condition where a nuisance is caused, the landlord is held liable for the injuries resulting therefrom. This principle found its recognition in various other judgments in different jurisdictions.

In the case of Ripple v. M. N. Bank (1944), the plaintiff, who was injured on the premises of the lessee, leased to him by the landlord, sued the landlord. The Supreme Court of Ohio ruled in favor of the landlord, Cheadle. The reason was that the landlord’s liability only applies to strangers who have a right to be on the property and for whom the landlord has a duty to maintain a safe environment. This duty is based on the legal principle “sic utere tuo ut alienum non laedas,” which means “use your property so as not to harm others.” The things used on the premises were within the lessee’s permission, so the landlord was not held liable for injuries caused. However, this decision was so criticized that the Court erred while giving the judgment.

Various courts in several other judgments supported the view that the landlord should be held liable in such cases where the landlord takes the rent for premises containing a public nuisance. To conclude this, there have been developments over the past years where the landlord’s non-liability rule has been transformed to the point where he is liable under certain conditions. In a few states, where a landlord leases land either for public or semi-public use, the landlord is under a duty to the lessee to take reasonable care to make the premises fit for the intended use.

Liability of builders

Builder-vendor liability for construction defects in the house

The liability concept under construction defects has seen a major change from the mere principle of caveat emptor, under which the purchaser has to be aware of any defects before buying any property. But now the courts are no longer following the above principle but are making the builders and vendors liable under different legal theories of torts such as negligence, fraud, deceit, breach of contract, breach of warranty, either express. implied or even the principle of strict liability. 

Now what needs to be understood is how the builders and vendors are held liable for breach of warranties and under strict liability principles.

Warranty

The warranties are dealt under the Uniform Commercial Code. These can be either expressed or implied in nature.

Express warranty

An express warranty, as the name suggests, is made in express form, either in written or orally, which states the manner of performance of the particular product. Under express warranty, the vendor must have an affirmation or promise relating to goods and must contain the description of goods or a sample or a model.

While further elaborating on this concept, the courts have interpreted this warranty in different ways. For instance, some courts have held the builder-vendor liable even for the oral statements made by them. In various judgments, the courts considered the statement that the house was first class in materials and workmanship to be a sufficient warranty that covered defects in the roof after two years of purchase. However, it may be difficult for the courts to adjudge the construction defect issues merely on the evidence based on oral statements. 

The Statute of Frauds (1677), although has been an English statute, but this statute has been incorporated by various countries including the US. Incorporating some of the features of this law, the law adopted by various states of the US provides that any conveyance of real property has to be in writing. Also, the oral statements cannot be relied upon by the buyer, as these statements can be exaggerated to some point. So the express warranty in such cases is reliable if it is in written form. So the builder-vendor is held liable based on the written warranties that explicitly provide for guarantees or promises. For example, if there is a written warranty that concerns the manner and skills used in the construction of a particular house, the builder-vendor can be held liable if he breaches any such express warranty. The buyer has the right to seek compensation for damages to the property due to breach of a warranty.

Implied warranty

An implied warranty, on the other hand, is not expressly mentioned by the parties but is one that is created by law or emerges from common sense. The implied warranty may arise on account of the fitness of the product for a particular use. There is an implied warranty under Section 2-314(2) of the Uniform Commercial Code that the goods must be fit for ordinary purposes and must conform to any affirmations of fact that are made in their description. Under Section 2-315 of the UCC, there always lies an implied warranty that the goods are fit for the purpose mentioned whenever a contract is made and the buyer is relying on the seller’s skill and judgment to select a product that is suitable for a particular purpose.

A significant amount of development has occurred in builder-vendor liability in the implied warranty area. In the case of Hilder v. St. Peter (1984), it was held by the Court that when the defendant builds a house for the plaintiff, there is an implied warranty that the house should be habitable and fit for human beings to live in, and such a decision was specifically limited to the sale of an unfinished house by the builder. And such a limitation of an unfinished house that imposes an implied warranty on completed houses was laid down by Colorado Supreme Court in the case of Carpenter v. Donohoe (1964). It was held by the Court that an implied warranty of fitness extended to the purchase of houses, whether they are fully completed or under construction, and such implied warranty arises out of contract to buy. However, later, in the case of Allen v. Wilkinson (1968), the Court of Appeals of Maryland refused to extend implied warranties to completed houses. 

In Staff v. Lido Dunes, Inc. (1965),  the Supreme Court of Trial Term, Nassau County, held that the builder-vendor is liable under the purchase contract as the defects were hidden and could not be discovered by the home buyer during the closing process of buying. As per the doctrine of merger, whenever the property is sold, the terms of the sale contract merge into the deed, which further means that any promises or agreements made in the contract are no longer enforceable once the deed is delivered. So it was held by the  Supreme Court of Trial Term, Nassau County, in the above case that it would be unfair for the Court to apply merger doctrine as it would go against public policy to enforce such a contract, and the builder was still held responsible for them despite the deed being delivered.

However, while interpreting such cases, there is a very thin line that lies between the decisions of the courts that decide liability either on the basis of implied warranties or negligence. As per Section 235.02 of the Wisconsin statutes, the seller can be held liable under an oral agreement that relates to the quality of the construction even though the quality condition is not mentioned in the contract of sale. So the plaintiff can sue the builder-vendor for negligent performance.

Liability of builder-vendor under doctrine of strict liability 

According to Section 402A of the Restatement (Second) of Torts, liability shall be imposed on the builder-vendor for the defect caused, irrespective of whether the builder-vendor had taken reasonable care in the construction or sale of the house. Schipper v. Levitt and Sons, Inc. (1965) is a landmark case on the strict liability of builder-vendors. In the above-mentioned case, the builder, who was a defendant, had not installed a mixing valve to reduce the temperature of hot water at the faucets. Due to this, a plaintiff’s child, who was just 16 months old was seriously burnt by the water from the sink. So the Court of New Jersey held the defendant strictly liable for causing the defect in the house construction. 

In another case, State Stove Manufacturing Co. v. Hodges (1966), the Court held that Section 402A applies to the manufacturer of a product and to a contractor who builds and sells a house with the product in it. In this case, the builder failed to install a relief valve which would prevent the explosion in the heater. The manufacturer was not held liable under this case since the manufacturer assumed that the builder, who installed the heater, would add the relief valve as required. Therefore, the builder’s failure to follow the safety guidelines was seen as the only cause of the accident, and he was held liable for the defect caused.

Although Section 402A does not expressly refer to houses, it is addressed to the liability of the seller of products and not the ‘chattels’. But on a broad interpretation of the word ‘product’, it could include anything which is produced or either constructed such as a house under Section 402A. The word ‘construction’ of a house is similar to the manufacture of a product. But in certain cases, such as in Dippel v. Sciano (1967), the doctrine of strict liability has been taken equivalent to negligence, so the defendant can have the defense of contributory negligence available to him. So to conclude it, the property damages and personal injuries must be recoverable under the doctrine of strict liability.

Builder-vendor liability for recovery of economic loss in construction defects

The doctrine of economic loss tends to limit the recovery of damages in tort for the product unless the product has caused personal injury or damage to the property. Economic loss refers to the loss caused to the party due to the use of the product, which was either inferior in quality or does not work for the intended purpose. As a result of these losses, the product may have a loss in its value. It has been held by the courts that economic losses are not recoverable in tort due to privity of contract. So in order to bring economic losses within the ambit of damages, the property damage has to be legally significant.

Economic loss in negligence

The contract can be enforced in law only by way of standards that the parties have agreed upon, and these standards relate to the quality of the products used or manufactured. On the other hand, under tort law, the standards are imposed by law, with the duty on each citizen to exercise reasonable care to prevent physical harm or damage to the property. So tort law is related to the standards of conduct. In the construction industry, the courts have adopted various other approaches apart from privity defense to shield builder-contractors from liability for injuries to remote parties. These approaches were the doctrine of caveat emptor, under which the buyer must be aware and there is no liability of the vendor. The next approach followed by courts was doctrine of “merger by deed” under which all the contractual obligations of the builder are satisfied once they are merged into the final deed at the closing. Another such approach was the rule of “completed and accepted” by which once the work is completed and accepted the builder’s liability gets terminated. However, later on, in various judgments such as MacPherson v. Buick Motor Co, (1914), the courts held the builders liable under the traditional tort standards for physical harm or damages to the chattel.

Principle of foreseeability

The courts, under the foreseeability principle, went on to equate the scope of liability in tort. The contractors and manufacturers were held liable on the ground that such economic losses were “foreseeable” to them. In Navajo Circle Inc. v. Development Concepts Corp. (1979), a builder and architect were sued on grounds of negligence in the construction of a roof by the plaintiff. The lower court dismissed the petition of the plaintiff but the decision was overruled by the Court of Appeals of Florida, Second District, on the ground of foreseeability, that the defendant must have the legal duty of reasonable care to avoid any risks where the damage is foreseeable. In another case of Coburn v. Lenox Homes, Inc. (1982) the Connecticut Supreme Court held that the builder-vendor must be liable for negligence for foreseeable damage due to the construction of a defective house. 

Thus, foreseeability raises a legal duty of reasonable care upon the builders due to physical harm and damage to the property. In the case of Ales-Peratis Foods International, Inc. v. American Can Co. (1985), the California Court of Appeals gave a judgment under which the principle of foreseeability is based on the following factors:

• how much the defendant’s actions directly hurt the plaintiff’s interests; 
• how foreseeable it was that the defendant’s actions would hurt the plaintiff’s interests;
• the amount of  harm done; 
• how much the defendant’s actions and the plaintiff’s injury are closely interlinked.
•  how much the plaintiff is to blame for what happened; and 
• the public policy that supports the finding of a duty.

Therefore, these factors would prevent negligent interference with the economic damages.

Economic loss in strict liability

According to Section 402A of the Restatement (Second) of Torts, the seller is held liable for selling a defective product that is unreasonably dangerous to the consumer. So whenever there is physical injury to the consumer or damage is caused to the property, the consumer has the right to recover his losses irrespective of the faults. The courts have tried to analyze the situation under which the damage to the product qualifies for physical harm. In the New Jersey Supreme Court’s decision of Santor v. A & M Karagheusian (1965), the plaintiff sued a carpet manufacturer for the cost of a defective carpet. The Supreme Court of New Jersey rejected the economic loss rule, holding that there was “no just cause” for permitting recovery for personal injuries in some cases but denying recovery in others simply because the loss of value is the only damage sustained. The Court held that the nature of damages must not determine the amount of compensation that the plaintiff can seek. Thus, the plaintiff has the right to seek compensation, even if it is purely an economic loss. 

In contrast to the above judgment, the California Supreme Court in Seely v. White Motor Co. (1965), the doctrine of strict liability was outrightly rejected by the said Court on the ground of economic injury. The Court held that this doctrine is applicable only when there is a risk of personal injury.

In Morrow v. New Moon Homes, Inc, (1976), the Supreme Court of Alaska denied the recovery to the plaintiff on the grounds of the above judgment and held manufacturer liable for economic loss arising due to the breach of the implied warranties under UCC  but later on in various judgments, the plaintiff was allowed to recover the damages under the doctrine of strict liability for delivery of a  home with a defective electric heater. 

Recovery of economic loss under strict liability theory

The doctrine of strict liability has been considered to be inappropriate in the construction context. In Conolley v. Bull (1968), the  Court of Appeal of California, First District, Division One did not use the doctrine while deciding the liability of a builder who constructed a house on poor soil. This doctrine has been rejected in the construction context due to a variety of reasons. In some courts, this theory is inapplicable in cases of construction, such as in case of Wright v. Creative Corp, (1972), the Colorado Court of Appeals. Division II held that the purchaser has the opportunity to make a reasonable inspection of the structure of real property. In Jones Laughlin Steel Corp. v. Johns-Manville Sales Corp, (1980), the United States Court of Appeals, Third Circuit, allowed the defendants to use the economic loss doctrine to defend their side. The architect and manufacturer were not held liable for the crack in the roof system of the plaintiff’s factory. The loss incurred was purely economic in nature, and generally, in these kinds of losses, it is the owner who suffers the losses. The parties can at their own instant agree not to make the architect or manufacturer liable by negotiating for warranty protection or by trying to get a lower contract price when purchasing the roof system.

Recovery of economic loss under negligence theory

The recovery of economic loss by the owners of the property on the grounds of negligence theory has been far more successful than other theories such as the doctrine of strict liability. There are certain barriers such as caveat emptor or “completed and accepted defense,” that prevent the owners of the property from making builders liable. So in Moxley v. Laramie Builders, Inc, (1979) the Supreme Court of Wyoming held that the doctrine of caveat emptor cannot be used as a defense for negligent construction.

Similarly, in Simmons v. Owens (1978), a subsequent purchaser was allowed to sue a builder for rotting of wood due to low clearance of exterior siding. The District Court of Appeal of Florida, First District, did not accept “completed and accepted” as a defense on the ground that the purchaser cannot determine where the defect exists. While rejecting the defense of privity, the Superior Court of New Jersey, Appellate Division, in Juliano v. Gaston (1982), held that the homeowner has the right to sue the subcontractor for negligence and claim damages for the harm caused to their property. The fact that the defendant is a subcontractor doesn’t prevent the homeowner from seeking compensation for the damages caused by the subcontractor’s negligence.

In another case, Ales-Peratis Foods International, Inc. v. American Can Co. (1985), Court of Appeals of California, Second District, Division Seven, relied upon the six-factor analysis to determine if economic loss was a foreseeable consequence of negligence on the part of construction contractors. In Redarowicz v. Ohlendorf (1982), the Supreme Court of Illinois upheld the principles of product liability. It was held that liability in tort is not determined either by privity or foreseeability but by the duty that the plaintiff has. The courts have also based their decisions on the amount of property damage that is required to establish injury under tort law.

At present, for example, the California Supreme Court in Aas v. Superior Court (2000), limited the scope of recovery by plaintiffs in construction defects. It was held by the Court that there cannot be any tort recovery and the builder cannot be held liable for the harm that has not caused any property damage even though the defects violated the provisions of building codes relating to the prevention of life, health, and property. In Jimenez v. Superior Court of San Diego County (2002), the Supreme Court of California held that manufacturers were strictly liable when they installed defective windows in mass-produced homes. It was also held that recovery of economic loss under negligence theory does not bar tort recovery under the law of tort for damage to a defective product.

Thus, it can be said that tort law does not require any duty to be imposed on construction contractors for the economic losses arising due to the diminution of buildings. The judicial policymakers will decide whether to extend any such duty on them to serve the best interests of the society. 

Liability of builder vendor’s lender for failure to protect the vendee against defective homes

The liability of the builder vendor was based on the negligence principle against vendees and third parties who were injured by latent defects in home design and construction. But later on, the courts changed their viewpoint and made the contractors strictly liable for the sale of defective homes. The landmark judgment that has redefined this law regarding liability is Connor v. Great Western Savings and Loan Association (1968). It was held that the lender was liable on the ground of negligence in design and construction. There was a negligent breach of duty by the lender since he financed the shareholders who constructed defective homes. The lender was negligent, as he should have taken reasonable steps to prevent potential buyers from buying defective homes. The buyer completely relies on the skill, care, and reputation of the manufacturer, and the manufacturer has to make a representation that the house is safe and suitable for use. 

The earlier courts, while rejecting the theory of strict liability, based their decisions on the ground of caveat emptor, under which the buyer must be aware that he accepted the house after he had an opportunity to inspect it, and if found defective, he would have rejected it there and then only. So later on, the courts ensured that strict liability be applied to builder-vendors and their financial backers in order to be more diligent while dealing with the safety of homes. Thus, even the lenders are strictly liable for defects in houses sold by builder vendors that they finance. All these arguments holding the builder-vendor strictly liable are made applicable equally to savings and loan associations, banks, and any other lenders who finance the construction industry. Since the lender is the main driving force of capital in the construction industry, he is in the best position where he can prevent fraud and defectively designed construction houses. Builder vendors and the contractors who sell the homes are often irresponsible, while lenders are far more responsible and can avoid risk at their hands. 

Lenders will take more precautionary measures while approving development plans and can inspect the defects while the construction is in progress with more care and caution if they are held strictly liable. The lenders are made liable under this theory only to ensure that the house is reasonably fit for the purpose for which it is sold. However, the courts, while deciding the liability of the lender, must keep in mind various factors such as the experience of the builder-vendor, solvency status, and how much control the lending authority has.  For example, a lender who lends money in a housing scheme and later on becomes an entrepreneur shall have strict liability due to the extent of his involvement in the scheme. On the other hand, lenders who provide money to experienced and solvent builders but do not have much control over the enterprise do not face strict tort liability. However, they are held liable for negligence.

The builder-vendor is primarily held liable for any defect since he has immediate control over the construction. The lender can escape from this liability by keeping high interest rates on loans and seeking indemnification from the builders who build defective homes. Thus, all in all, the liability of vendors must be vicarious strict liability based on the principle of social policy instead of a fault principle.

Vendor-builder liability in real estate

The doctrine of strict liability has been applied on a large scale by the courts. The earlier views on which decisions of the court were based are no longer applied. Instead, the courts have extended the applicability of strict liability to real estate. However, the courts have differed in their opinions while applying these doctrines.

Application of doctrine of strict liability in real estate

The landmark judgment that led to the applicability of the doctrine of strict liability to the field of real estate is Schipper v. Levitt & Sons, Inc. (1965). An infant who was the son of the plaintiff was seriously burned by the defective hot water pipe from a sink faucet. Although a complete guide of instructions was made available to the lessee, still the Supreme Court of New Jersey, found that the defendant was liable for negligence. The Court held that there is no difference between real and personal property as far as the principle of liability is concerned. The Court also considered whether the doctrine of strict liability could be made applicable to tort law. After about seven years, in the case of Gay v. Cornwall (1972), the Washington Court of Appeals held that the doctrine of strict liability is applicable to builder-vendors. The house sold to the plaintiff was defective with leaky roofs, broken sewer pipes, vents, and a furnace. The Court held that the builder-vendor was strictly liable irrespective of the fact that there existed a previous legal agreement based on the implied warranties between buyers and builders. This judgment led to the enactment of the Tort Reform Act of 1981 by the Washington Legislature. This Act provides for the statutory liability of the builder-vendors for the construction of defective mass homes.

In the case law Blagg v. Fred Hunt Co. (1981), the question that came before the Supreme Court of Arkansas was whether these builder-vendors are liable even if the original owner sells his home to the subsequent purchaser. It was held by the Court that the warranties should be extended beyond the initial purchaser of real estate whenever there is no change or alteration in the condition of the building since the original sale. The Court also considered that the word “product” should include the word “houses” within its definition.

Conditions where doctrine of strict liability in real estate does not apply

There are contrasting judgments given by the courts under which the doctrine does not apply to real estate properties. The courts have followed a more cautious approach while applying this doctrine. In Chandler v. Bunick (1977), the Supreme Court of Oregon did not hold the defendant strictly liable as there were certain other alternative remedies available to the plaintiff.

In another case Chapman v. Lily Cache Builders, Inc. (1977), the Illinois Appellate Court again did not apply this doctrine while pronouncing the judgment and held that there is an apparent difference between manufacturers of goods and builders of homes. In Wright v. Creative Corp, (1972), the Colorado Court of Appeals. Division II, did not base its decision on Schipper and held that builder-vendors can be held liable only due to negligence for construction defects in property. Since the buyer has the opportunity to inspect the house, faults can be detected by the buyer.

Availability of alternative remedies in real estate

There are contrasting views by different courts on whether the doctrine of strict liability should be applied to builder-vendors in real estate. However, it is more justified that this doctrine must not be imposed and instead, there are certain alternative remedies available. Negligence and strict liability in tort have different connotations. Under negligence, there is a duty of reasonable care that must be followed by builders while constructing the houses. The builder-vendor is held liable under negligence due to violation of law or a statute, whereas the strict liability is based on the nature of the product.

In Stephens v. Stearns (1984), the ​​Supreme Court of Idaho held that negligence can arise due to a violation of statute. The alternative remedy that lies with the purchaser of the house is the implied contractual remedy. This remedy is, however, often confused with the doctrine of strict liability. The implied warranty has application both in contracts and torts. While holding the builder liable under the principle of an implied warranty, the court keeps the view that the home is reasonably suitable for what it was intended to be and not merely a habitable one. Thus, the builder must have a standard of workmanship based on skill and intelligence as possessed by other builders. But under implied warranty, the subsequent buyers cannot claim remedy under implied warranty, as most jurisdictions rely on the concept of privity of contract.

Another remedy available to the buyer is establishing fraud or misrepresentation on the part of the builder. The Restatement (Second) of Torts § 353 deals with such liabilities. It states that vendors are liable if they fail to disclose a condition or conceal a fact that can cause an unreasonable risk to the vendee. This liability dissolves when the vendee has discovered the dangerous condition and had the opportunity to take reasonable precautions.

Thus, in the law of torts, there are not just remedies under strict liability or caveat emptor available to the plaintiff; there are multiple alternative remedies available, such as liability under negligence or breach of warranty. So whenever the doctrine of strict liability is applied, it is always in response to some public need where traditional legal theories are inadequate to provide the relief. 

Builders’ liability in negligence 

The cause of action in negligence requires certain conditions for a person to be made liable under tort. Negligence is a tort and is not related to breach of contract. There must be a reasonable duty of care that has been breached by the other party. This breach has caused injury and damage to another party. There must be a duty of care upon the parties to be fulfilled. For example, a contractor builds a house and installs a defective heating system, which causes burn injuries to a family member. Thus, the builder had a duty of care to exercise reasonable care while installing products.

Liability of builder and architect to third parties due to negligence

As a general rule, a builder is not liable for negligence on a real property to the parties who are not parties to the privity of contract for the injuries caused due to the defects. Also, the employer must have completed and accepted the work. The landmark judgment of MacPherson v. Buick Motor Co. (1914) made the manufacturer and repairer of chattels liable for negligence. Various views supporting the above judgment have been made whether the Macpherson doctrine should be made applicable to building contractors. As per Macpherson doctrine, there is an implied warranty of safety between a manufacturer and private purchaser irrespective of the fact that ownership lies with the retail dealer. However, the courts have been very slow in adopting this view on the grounds of acceptance of the work by the owner earlier after due care. So from time to time, various exceptions have been laid down that hold the builder liable. The builder is liable for negligence if the structure made by him was:

•  imminently or inherently dangerous.
• There was knowledge about the defect, and it was concealed on account of fraud and misrepresentation with the buyer.

However, to prove the above facts, the plaintiff needs to show that: 

•  A dangerous structure was created.
• The builder knew that it would be used for human habitation.

The courts have followed a reluctant approach while holding the builder liable for negligence. The courts have given varying decisions while creating a thin line between theories based on negligence or implied warranty. In the case law of ABC Builder, Inc. v. Phillips (1981), the plaintiff based his cause of action on grounds of implied warranty or negligence. The Supreme Court of Wyoming held that builder-vendors must furnish safe sites for the homes they are building. They can be held liable if they choose an unsafe site based on an implied warranty. However, the Court also held that it is the duty of the homeowner to warn the buyer about any existing conditions that could pose an unreasonable risk of harm. The broad test of negligence is what a reasonably prudent man could foresee under such circumstances. Negligence has to be read with the knowledge of a risk or injury that can be easily apprehended. The builder-vendor must also realize from his expertise and skill that the site would be safe enough to carry out the work.

The builder-vendor must be able to anticipate sources of dangers, such as the type of soil on which construction is to be carried out. In the case of Cook v. Salishan Properties, Inc.(1977), the Supreme Court of Oregon tried to analyze the applicability of the negligence theory or implied warranty. The law of warranty provides for the liability of the seller without proving his fault. While applying this theory, it has to be seen who has a better opportunity to ensure that what is to be included in warranty. Where the builder has better control over the construction process, implied warranty can be applied. On the other hand, where the builder does not have much role to play in the case of loss caused to the seller, he will be liable under the negligence theory. He is obliged to conduct a reasonable inquiry about the conditions before constructing the site. The Restatement (Second) of Torts imposes the duty on homeowners to warn buyers about unreasonable risks that either exist or are known to exist.

Conclusion

It is the foremost duty of the policymakers to provide for a law dealing with the liability clauses that would serve the interests of society to make the construction contractors, vendors, builders, and lessors liable. Law of torts never imposes a duty on the construction contractors where the owners can be protected from economic losses due to defects in them. In this context, the interests of the injured party, who is the owner of the building, must be considered. The law of tort allows the builders to define or limit their obligations to the owner through an agreement. However, the law of negligence provides an exception to this and provides that the builder must protect the owner by taking reasonable care. Many issues remain unresolved even after the adoption of principles of strict liability, such as how the real estate owner’s liability has to be dealt with by those who dispose of the mass production of houses. The courts have often applied a consumer-oriented approach to protecting helpless and innocent homeowners. But for the construction industry, the applicability of this approach seems to be diluted. The purchasers are in a position to inspect a house for possible defects. Thus the tort law has tried to shift the burden of loss from the injured plaintiff to one who is at fault under the negligence theory to the one who can bear the loss under the strict liability theory. 

Frequently Asked Questions (FAQs)

What is the builder-vendor liability for construction defects in the house?

The builders and vendors are held liable due to negligence, fraud, deceit, breach of contract, breach of warranty either express or implied or even the principle of strict liability. According to Section 402A of Restatement (Second) of Torts, strict liability shall be imposed on the builder for the defect caused, irrespective of whether the builder-vendor had taken reasonable care in the construction or sale of the house.

Is the vendor liable for the pre-existing defects in the house?

As a general rule, a vendor is not liable for personal injuries due to defects in the property that occurred after the possession of the buyer. But there are various exceptions under which a vendor, even though he does own the property, is responsible for injuries when the vendee or the buyer does not have sufficient time to repair the already existing defects. 

What is the liability of the lessor under the law of torts?

The lessor is not liable to the tenant or others entering the land for defective conditions existing at the time of the lease. However, there are certain exceptions under which the lessor is liable for defects in the premises stated under Restatement (Second) of Torts such as the lessor will be held liable if –

• The lessee does not know or has reason to know the condition of risk involved.
• The lessor knew about the risk involved but had reason to expect that the lessee would not discover any condition or realize the risk.
• If the lessee conceals the condition, the lessor is liable until the lessee discovers it and has taken sufficient precautions against it.

References

• https://scholarship.law.unc.edu/cgi/viewcontent.cgi?article=6320&context=nclr
• https://www.law.cornell.edu/wex/tort
• https://scholarship.law.upenn.edu/cgi/viewcontent.cgi?article=9123&context=penn_law_review
• https://www.investopedia.com/terms/l/lessor.asp 
• https://businessandlegal.ie/liability-of-vendors-builders-and-lessors-for-defective-premises
• https://saylordotorg.github.io/text_legal-aspects-of-marketing-and-sales/s23-02-warranties.html
• https://www.grs-law.com/articles/the-current-status-of-california-law-on-liability-for-construction-defects/
• https://repository.law.umich.edu/cgi/viewcontent.cgi?article=7182&context=mlr
• https://scholarship.law.uwyo.edu/cgi/viewcontent.cgi?article=1550&context=land_water
• https://scholarship.law.unc.edu/cgi/viewcontent.cgi?article=6320&context=nclr
• https://core.ac.uk/download/pdf/232680901.pdf
• https://archive.org/details/prosserwadeschwa0000schw/page/538/mode/1up?view=theater
• https://www.law.cornell.edu/wex/products_liability
• https://scholarship.law.marquette.edu/cgi/viewcontent.cgi?article=2353&context=mulr#:~:text=ity%20for%20harm%20caused%20by,construction%20defects%20is%20Schipper%20v.
• https://scholarcommons.sc.edu/cgi/viewcontent.cgi?article=3065&context=sclr
• https://archive.org/details/understandingtor0000diam/page/n19/mode/2up
• https://lawecommons.luc.edu/cgi/viewcontent.cgi?article=2374&context=luclj
• https://saylordotorg.github.io/text_business-law-and-the-legal-environment-v1.0-a/s38-04-landlord-s-tort-liability.html
• https://engagedscholarship.csuohio.edu/cgi/viewcontent.cgi?referer=&httpsredir=1&article=2959&context=clevstlrev

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.

This article has been written by Nikita Desai. This article explains Critical Race Theory in the US through landmark judgments and stories while showcasing how race and racism’s roots are engraved deep into the historic subconsciousness of white supremacy, whose implications of racial inequality are felt even today. How the murder of George Floyd and the death of Breonna Taylor sparked the fire of the CRT to become prominent again is also discussed, along with the core principles, Power structure, Impact, and Negative Fuss of the CRT in the 21st century.

It has been published by Rachit Garg.

Introduction

Have you ever faced discrimination and inequality (unfair treatment) based on Race? It is either when you are traveling or moving to a new country, among new people and communities who are far different from yours in everything from cultural beliefs to eating and lifestyle habits. Has this ever created fear in your hearts and minds about their perception and behavior towards you based on how different you look to them and made you wonder about the kind of world we are entering in? 

Imagine a scenario when ‘people of color’ walking to their home after work are verbally assaulted with racial slurs by a group of individuals, or a social media influencer belonging to a racial minority receives hate messages and threats just based on their ethnicity.

Imagine a racial community faced with offensive symbols and messages sprayed on their home walls, worship place, etc. to create a sense of fear, or students facing a hostile environment in the school from peers to teachers just based on their racial backgrounds.

This is what racism and hate crimes in respect of racism feel like, and If the answer is yes or even if it’s a no, this article will still make it easier for you to understand what the fuss regarding this “Critical Race Theory (CRT)” is all about. 

According to the World Economic Forum, we can describe CRT as a way that enables us to give a sneak peek at the ‘racial bias’ that exists, not only in the United States but also in whole society in general, even in this 21st century; fire increasing and consuming the innocence of humanity. 

Race and racism 

Critical Race Theory (CRT) meaning

Critical Race Theory (CRT) can  be referred to as a way of studying by scholars, activities, law, and policymakers to understand and analyze:

• The thought processes rooted inside society’s consciousness regarding racism and how that comes from historical events, practices, and teachings.

• How do race and ethnicity impact our society? (creating a negative chain of events in the modern-day era of evolution).
• How the laws, social movements, and media influence our thought processes, behavior, and ideas about race.
• How have events like slavery and separation in the past been a leading factor for racial inequality today?
• How do such ideas shape our laws, society, policies, institutions, and educational facilities?
• It is a medium through which we can conclude how race impacts different aspects of our lives.
• The scholars wanted to change the racial discrimination in American society arising out of the legal system. Instead, CRT  has spread to other aspects and areas of study (Gender and sexuality).
• It also highlights how black people in North America were treated (less deserving of the privileges enjoyed by the Americans, which was unfair and unjust).
• It also helps to understand, recognize, and address the systematic drawbacks faced by minorities (race) in the legal system and how such events still have an impact on our lives.
• According to the “ANTI-CRT”  individuals, they refer to CRT as an attack of racism against the white community.

According to the legal defender, “Legal Defense Fund” (LDF), of the ‘National Association for the Advancement of Colored People (NAACP) Community,’ as explained by them, CRT is a lens through which racism can go beyond individual prejudice. It is not only about hate crimes against people because of their skin color but also how such discrimination is rooted in our laws, rules, and institutions that create and even maintain unfair treatment based on race.

All the events, like the elevated death rates of black people and the deprivation of opportunities like education, housing, and even police support, are connected to systemic racism. Therefore, through CRT, all these events and implications will let us know what happened in the past, what is happening in the present, and what is about to come in the future for racism if it is not controlled.

Relevance of the Critical Race Theory (CRT)

Originally, the CRT was developed to address and analyze the issue of racial injustice (unequal treatment of different races) present in American society through the legal System. 

However, in recent times, the whole aim and goal of the theory have changed, often leading to fights between believers and non-believers. CRT has made its roots in the following ‘Diversified Area’ as a spin-off movement in our institutional society.

• The field of education- Many theorists use CRT as a way to understand how the school grading system and discipline have evolved. How policies and initiatives to curb racial segregation in education have impacted racial inequality and how controversies over the curriculum and the teaching of history in K-12 schools cause racial discrimination are also topics of discussion among scholars of education.
• Women’s and gender studies- these teach about the area of intersectionality and how it impacts women of color.
• The CRT and the ideologies have also been taken advantage of by “sociologists, health care professionals, Asian Americans, Latinx, LGBTQ, Muslim, and Native American scholars.”
• In the context of “Hate Crime and Speech, Immigration Problems, and Voting Rights, the scholars have tried to address the issue of Racial Segregation and discrimination.”
• CRT is now not only limited to the United States but has become widespread in other countries such as Australia, New Zealand, India, and many more. 

Critical Race Theory (CRT) in education

According to an American Bar Association article, Professor ‘Daniet Solorzano speaks about CRT in The field of Education. He signifies the interconnection of racism, the law, and education, and how racially unfair bias is still alive in education even after the Civil Rights Era.

Many instances and parameters of school desegregation and segregation support this parameter of structural racism, which is further discussed in the landmark judgments (Brown, Millikien, and Keyes Cases) of this article.

Derrick Bell’s view on racism in education

According to the Father of the CRT’- Derrick Bell believed in the fight for justice for the Black Community.

• According to Bell, the 4th Amendment of the U.S. Constitution failed to achieve racial equality all alone because of the threat it projected to white supremacy, which can be marked by the long-lasting fight to make the schools free of race Discrimination.
• From this, the idea of ‘interest-convergence’ was born (discussed in detail further).
• However, the fight against school segregation helped both whites and the black community. It further improved America’s international image by ending the racial caste system.

Limitations for achieving racial equality in education

• Ignoring the experience of the history of the diversified community present in the USA still today while only portraying the perception of American stories.
• The perception of students of color as weak somehow neglects their strengths, thus leading to unfair treatment.
• The way the examination is conducted somehow does not show the full potential of the children.
• The policies and practices of schools by way of punishment for students of color affect their learning abilities and then the results.
• If the school does not receive proper funding from the investors because the area is “marked” due to the number of students from the black community, this in turn affects the quality of education one receives.
• Another main reason racial equality cannot be achieved in school is that the practice of racial segregation is continuing in certain parts of the states and the country because of De-Facto segregation- based on circumstances.
• All these issues are ignored from the point of view of CRT, which gives us a sneak peek into how even laws are not sufficient to correct this form of racial inequality.

The surge of popularity of Critical Race Theory (CRT)

The force of police brutality

Did you know what led CRT to gain popularity in the 21st century after sitting quietly behind closed doors of stigma and ignorance? Well, amidst the ongoing pandemic crisis of COVID-19 worldwide, another uproar and outrage, not only in the USA but globally, was brought about by the death of George Floyd, an African-American who was murdered at the hands of police officers in the year 2020.

The aftermath of floyd’s death

After the death of Floyd, many discussions and debates took place from the years 2020-  2022 regarding “Black history’s” importance and its connection with the CRT, which brought issues regarding race to the face of America.”

Due to this upsurge, around 14 states banned the teaching of black history in educational institutions, as many Americans saw this as an attack on them.

Task force creation

Following the death of George Floyd, to transform policing in the U.S., joint efforts from the task force called “NOBLE” (The National Organization of Black Law Enforcement Executive), and Congress established the anti-racism initiative, which went on for a year with the help of an educational institute. This initiative attempted to address racial discrimination within the law enforcement system and provided a ‘Master-Plan’ to implement in the future for fighting against racial discrimination.

Executive Order of 2020 or Trump truth ban

According to the power vested, then, President Donald Trump issued an Executive Order on  “Combating Race and Sex Stereotyping” in 2020. This order wanted to promote unity in the Federal workforce. Well, how was unity to be achieved as per this order, you may ask?

Ban on structural racism

To achieve the goal of unity in the U.S. The order banned teachings or training on “diversified topics” (Anti-American and diverse), which are the very essence of the CRT. Following this, hundreds of such trainings were canceled. 

This was an attempt to erase the trace of “Structural Racism” from the United States, as seen by the Anti-Racial Segregation Squad.

The aftermath of executive order

• The African American Policy Forum started a campaign called “Truth be Told” to showcase the negative effect of the ban on the CRT.
• More than 120 Civil Rights Organizations signed the letter, expressing their dissatisfaction with the Executive order.
• The Legal Defense Fund, National Urban League, and National Fair Housing Alliance Field initiated the “litigation case for the reason that such an order violated the freedom of speech, equal protection clause of the 14th Amendment, and due process.”

Federal Protection Against National Origin Discrimination (FPNOD)

According to the Civil Rights Division in 1957, the U.S. Department of Justice in the year 2000 issued a brochure, enrolling the federal laws restricting discrimination based on an individual’s birthplace, ancestry, culture or language.

According to this law, it would be illegal to deny a person of color equal opportunity just because they were not born in America. For that, they have also created the National Origin Working Group (NOWG) for the immigrants to learn about their legal rights.

Discrimination is prohibited such areas

• Education
• Employment
• Housing
• Lending
• Public Accommodations
• Law Enforcement /Police misconduct
• Voting.

Restriction on discrimination by law enforcement or police misconduct.

Any law enforcement or police officer who does not comply with such restrictions for discrimination will be contrary to the laws of:

• Equal Protection (Clause) of the U.S. Constitution;
• Omnibus Crime Control and Safe Streets Act of 1968; and
• Title VI of the Civil Rights- Act of 1964

The reason for such restrictions on police officers

According to the law, any law enforcement agency or police department that receives funds from the U.S. Department of Justice falls within the ambit of this Code.

Incidents amount to police misconduct

• The percentage of Latinos driving in a car and getting pulled out by the officers for certain traffic rule violations as compared to white-Americans is very high.
• Actions such as racial profiling, excessive use of force against minorities, target killings, etc.
• For example, an officer might get angry with the individual of Vietnamese origin because he was unable to speak English during the questioning. 

Where to file the complaint

The complaint regarding such can be filed by the aggrieved individual at:

• The Federal Coordination and Compliance Section in the U.S. Department of Justice, or
• Office of Justice Programs at the Civil Rights Office.

Jurisdiction for trial

All such complaints are tried, and the litigation is done by the Special Litigation Section in cases where there is a pattern of practice (repeated incident) of such discrimination. 

Historical context and origins

To understand the CRT as it is now, we have to take a deeper dive back to the historical events and the origins of the CRT that led the CRT to become what it is today and how the historical events of the laws, policies, regulations, and rules shaped the theory of racism and gave it a pedestal for practical frontline action, then versus even now.

Many pioneers, supporters, and freedom fighters such as W.E.B. Du Bois, Mary Church Terrell, Joel Spingaran, Eleanor Roosevelt, Franklin D. Roosevelt,Clarence M. Mitchell Jr., Martin Luther King Jr., Roy Wilkins, Jackie Robinson, and many more became the face of justice for the black community in achieving fair and just treatment under American Law and society. 

The landmark litigation cases discussed herein are further elaborated in the separate  head of “Landmark judgments” in this article.

Origin of Critical Race Theory (CRT)

14th Amendment “Equal Protection Clause”

14th Amendment objective

• To provide for and secure the civil rights of enslaved individuals (African Americans) who faced discrimination through generations in the United States.
• To enable the same and equal rights (fair and just treatment) for both foreign citizens and domestic citizens (Acquire citizenship or natural citizenship of the USA).
• To ensure non-discriminatory practices against people of color and minorities by implementing the laws.

Protection clause of equality

• The 14th Amendment clause of ‘Equal Protection’ was inserted in the U.S. Constitution in the year 1868, and state governments are required to follow the same.
• The scope of the same was expanded in the famous Slaughterhouse Case of 1873.
• Legal action against the government can be taken based on  evidence of discriminatory practices and violations of their rights.
• The burden of proving the discrimination by the state lies on the Victim.

The uproar of the black community

In 1908, due to the riots and mishaps, some 7 African Americans out of 60 members of white supremacy established the National Association for Advancement of Colored People (N.A.A.C.P.). It is an institution that works in compliance with the democratic process to remove all and any barriers posed by black people to discrimination.

In 1909, the organization for Civil Rights was established, which is the nation’s most recognized and widely popular aspect. It safeguards the rights of the citizens as enacted under the 13th, 14th, and 15th Amendments of the U.S. Constitution.

In 1910, the first “National Office” of the NAACP in the city of New-york, was inaugurated. This office was headed by the “Moorfield Story” board of directors and the former president of “The American Bar Association’ (ABA). 

Through the Guinn Case, the NAACP came to be recognized as a defender of the black community.

The Oklahoma Voter Registration Act of 1910 was enacted (you have to pass a reading test to vote).

In 1912, the Black People (community) Public School was established and funded by Julis Rosenwald in the south. 

The lasting moments of struggle and growth

The Years 1913- 1949: This was a period of evolution for the NAACP. Various battles were fought against the discrimination and injustices faced because of the Civil Rights Act; various cases were litigated and won; various laws were established from landmark cases; and efforts were made to eradicate lynching. 

The NAACP continued to be a legislative hero and legal advocate for the rights of the black community throughout history, along with ending state-mandated segregation. During the Great Depression, the then-president established a Fair Employment Practices Committee (FEPC) to secure job opportunities for people of color.

The Year 1920-  In the year 1920, in the town called Harmony of Mississippi, enslaved black people purchased the land from the slaveholders and began living there in peace and harmony. The story of CRT first started after the Civil War (1900-1939). This is also called the Segregation Era.

The Year 1938- The Court started realizing that the Separate but Equal Doctrine has been bearing fruit for a very long time now and there is a need to facilitate equality within the own boundaries of a state.

The Year 1950- Through the Brown Case, the moment for eradicating segregation laws and goals for integration laws took place for the very first time.

The Year 1954-1968- The second phase for ending racial segregation and exclusion began from this point in time, whereby civil rights movements and cases regarding the same became the issue of the highlight, however, subject to the limitations of temporary victories rather than the permanent solution.

The Year 1960-  The funded school was closed by the white school board. This decision was an ambush on the black community. 

The Year 1961-  Due to the closing of the school, the route of the NAACP was possible, whereby Windson Hudson, fighting for the rights of the black community in the Civil Rights Movement, joined hands with the lawyer Derrick Bell of LDF. 

The goals of Hudson and Bell differed for the rights of the black community in one aspect. Where Hudson wanted to revive the school (hence reviving segregation), on the other hand, Bell wanted to demolish the segregation (Bringing integration to school), meaning co-existing in the education field (white-black community).

The Year 1962- 1963- NAACP Field Secretary Medgar Evers and his wife became the targets of segregation violence and were later killed by racial separatists. This is just one story from many with respect to the crimes and violence that happened in the black community.

The Year 1964- The battle for integration and the end of segregation was won by the bell from the Hudson Case, due to which students from Harmony got enrolled in the school of whites.

In this same year, The Civil Rights Act of 1964 was enacted by Congress. This resulted from the efforts made by the NAACP to include the laws of integration in the Civil Rights Act of 1964.

However, all was not perfect because of this emergence. As this came to light, many white community members removed their children from the schools and started their own segregation schools. 

This was the moment of doubt for Bell (who died in 2011) regarding the emergence of the integration laws, and he later concluded from various civil rights cases that Racism is deeply engraved in American society and is more of a permanent issue. The taste of defeat from this legal change was harsh.

The creation of a change in the legal system for the abolishment of segregation in schools and another aspect of continuing daily life with dignity and respect were the only fields for segregation in the 1990s.

The Year 1965-  Voting Rights Act of 1965 and The Federal Elementary and Secondary Education Act of 1965 were enacted.

The Year 1968- The Fair Housing Act was enacted, which enables equal and fair treatment in the real estate industry without discrimination.

The Year 1969- Major backlash and drawbacks were faced by the black community as their legal battles won over the years were quickly altered with the advent of changing  the justices of the Supreme Court (Richard Nixon).

Historical events of Critical Race Theory (CRT) as a framework

The Year 1970- A Book Titled Race, Racism and Amercian Law enrolled, describing how the process of racial equality only occurs when the profits of the white community for the same are in alignment with their interests (Interest Convergence Theory).

According to Derik Bell, the success of the Civil Rights Movement was only possible because, for the politicians, it provided a mirror of their practical approach to global politics from colonialism.

The re-birth of the CRT because of Critical Legal Studies (CLS) 

The Decade of 1970s- in the history of America, as the CRT gained momentum, a group called “Critical Legal Studies” (white community scholars within the legal academic community) emerged. This group opposed the very idea of CRT.

CLS trying to prove legal connection with CRT

• According to the scholar Khiara Bridges, as mentioned in one of the articles of the American Bar Association (ABA), CRT theorists who introduced CLS believed that the law supports and maintains an unfair Society.
• The relationship between race and the law is intertwined. 
• It claimed that American law and institutions formed the basis for inequality in society; they were maintaining an unjust social order, meaning they were trying to address the very idea that legal decisions are influenced by political forces and personal motives, including bias.
• According to the CLS scholars, the law is something that can have different interpretations, and the decisions may be influenced by politics and the personal beliefs of the judges.
• Conflicts continued among scholars as some believed it to be a tool for explaining how the legal system contributed to creating inequality and maintaining injustice and could also be used to fight for racial equality.
• This was rather based on class discrimination instead of race discrimination.

 Failure of CLS

• CLS failed to recognize the role of race (the struggle of the black community) and their legal rights in the legal system because of the whiteness of the CLS scholars (Kimberle Crenshaw, in a book titled Critical Race Theory: The Key Writings that Formed the Movement, 1955).
• CLS was unable to fight against the political victories against the black community.

Contribution of political and legal events to the re-emergence of CRT

• The Year 1988- The victory of George W. Bush in the 1988 elections only meant one thing: now more conservative judges and lawyers would be appointed in the court, leaving little to no chance of survival for the black community in enforcing their movement for equality in American society.
• The Year 1988-1989- The orders of the Supreme Court were always against the black community in terms of employment opportunity cases as they raised concerns and doubts regarding the Civil Rights Laws.

NAACP struggle of reality

The Year 1977- The Executive Director of the NAACP introduced and established many programs still standing tall today, such as NAACP- ‘WIN’ and “ACT-SO.” The Bakke case (Challenge to White Supremacy in Higher Education) was won because of such programs.

However, the joy of this also did not last much because the court’s decision promoted the color-blind approach and posed new challenges for the Black Community. The importance of recognizing race and downright ignoring the historical injustices that occurred at the hands of the white community.

The Year 1980- The Hudson Case of the Bell led to the foundation of the idea of what we today know as the CRT.

Intersectionality

The Year 1989- The concept of ‘Intersectionality’ was introduced, whereby the merger of ideas from CLS and CRT together contributed to understanding the injustice of anti-discrimination laws on individuals who belong to multiple marginalized groups.

The Civil Rights Movement was the major factor in putting forth this issue during this time. Even today, this is discussed in various aspects of public policy, sociology, history, and literature.

This theory was coined by Kimberle Williams Crenshaw, founder of the CRT, whereby the hardships of black women who face discrimination arise from the dual stance of gender and race and how feminist and anti-racist frameworks failed them at their very core.

According to this, different forms of oppression, discrimination, and privilege are complex and interconnected because, when we study CLS with CRT, we can find that both need to be related to each other in terms of social and power structure to understand race in a more prominent way.

For example, a black woman may face discrimination differently as compared to a black man (discrimination based on identities- gender and race).

The concept of intersectionality with CRT helps to understand how power operates in society and how it leads to racial inequality based on intersecting oppression (social inequality and identity racism).

The struggle and growth continued

The Year 1990- Marked the beginning of changes for the Board of Directors of the NAACP.

The Year 2006- According to the reports of the study conducted by the Civil Rights Project at UCLA, they found out that 73% of black students were considered minorities in the schools.

The Year 2008- President Barack Obama also became a supporter of the Civil Rights Movement.

The Year 2021- Surrounding the controversy regarding race discussions, the Texas Governor signed a Bill that limits the teaching of CRT in schools (highlighting the nature of race study in the education Field). Many other states, including Oklahoma and Arizona, took a similar stance. This step further proved the claim made by Derick Bell in respect of racism in America (Systematic disadvantage).

Core principles of the Critical Race Theory (CRT)

There are five major ideas or core principles on which the CRT relies. This is also known as the ‘Tenets’ of CRT.

Purpose of core principles of CRT

According to the scholar Khiara Bridges, as mentioned in one of the articles of the American Bar Association (ABA), CRT is as important as breathing air for survival in this modern progressive industrial segregated realm of human society. 

The purpose of the CRT can be described as:

• These principles challenge white supremacy and help us understand how racism is contributed to by the choices one makes while living in society, often disguised as acceptable norms.
• This principle examines how race and racism affect our choices in society, and ignoring the CRT would erase the history of racial segregation.
• Beneficial for civil rights lawyers in addressing the discrimination.
• CRT is not only limited to African-Americans; the efforts of various scholars in achieving unified equality fall beyond different people of color.
• In the legal curriculum, CRT gained popularity in the 1970s.
• Different branches of CRT address different experiences of discrimination against different groups of people.

Racism is a standard

According to this tenet, racism has always renounced its place in and from house to house. It’s ordinary, present everywhere, and embedded in one’s culture. The culture itself promotes the notions of color-blindness and supremacy based on merit.

According to this principle, both these aspects are interconnected and intertwined, which later gives rise to creating boundaries to differentiate humans based on their color or race.

According to one article published in the ABA, racism is caused by racial inequality that exists in our legal system and institutions and is not just a random occurrence. They are simply trying to say that the law itself, which is meant for the protection of humanity, failed to achieve its very purpose.

For example, let us talk about a workplace that has individuals or employees from various racial groups (different countries, cultures, or colors). 

• Now imagine a scenario where the head of this department wants to promote a certain employee.
• Now, even if there is a more deserving employee or candidate for promotion, the head would recommend an individual from his/her cultural or color background.
• This forms the prime evidence of unconscious bias (embedded in human psychology).

Serving two purposes

These cultural notions, which are connected, serve the purpose of churning out racial discrimination in the United States:

• The creation of a mindset of white supremacy, whereby they choose to ignore the difficulty caused by them to people of color. They believe their hardship is superior to that of African-Americans or any other minority group.
• The account of merit further helps in maintaining those differences by holding power and influence of white supremacy legitimate over the minority group. 

The ABA article further states that CRT knows about the systematic denial of racial segregation and promotion of racial discrimination and how these two notions are rejected by the believers of the CRT because these notions ignore the impact of the social and legal racism

Color-blindness

According to the author, the aspect of color-blindness makes racism more prominent. This creates a door for supremacist groups to exploit the inferior group to continue the facet of racism in a never-ending loop. The need for control while remaining legitimate in society is what drives racism.

Even today, if we look at any news reporting of events such as murder, theft, school shooting, or robbery, we can conclude from the fact that racism is color motivated. The hatred created by color-blindness is far more destructive than one can imagine.

Merit-based

Wealth has always remained a controversial parameter in governing human behavior and the workings of society at large. It is a symbol of power and control. When this power and control are combined with supremacy, it creates a time-bomb of racial discrimination.

According to this principle, Meritocracy suppresses the guilty conscience for racial discrimination.

For example, imagine a situation where all the important decisions regarding the workings of the company are made by the CEO and top executives, who also receive the majority of the profits. From those profits, they somewhat give away as a form of charity while keeping the majority of it in their reserves. This is a form of racial discrimination based on merit. 

Interest convergence

This notion of principle was first proposed by Derik Bell in his article in 1980, “Brown vs. Board of Education and the Interest-Convergence Dilemma.  After this case,  Bell was of the view that the end of racial segregation was not because of the ethics of white supremacy but because of the interest it held for them.

Another work of Derik Bell, published in an article titled The Space Traders in 1992, helps us understand the story of interest convergence. This article narrated a fiction tale about aliens visiting the United States and how they offered valuable resources in exchange for black community individuals, and to reap the benefits of those resources, people in power decided to accept the trade.

Importance

Interest-convergence is a significant factor in the Critical Race Theory. According to this, those who are in the majority and hold  power control or influence the thought processes and beliefs of society, which ultimately leads to causing harm to oppressed or minority groups. (Commonly shaped because of the majority.)

From the interest convergence point of view, the end of racial discrimination through racial justice or racial progress is only possible where the profits of the white community lie with the minority community and not otherwise. The fruit of benefits or profit is anything for something of prime necessity.

Racism comes from society

The concept of race is not biological 

According to this principle, race is a “social construct” (created by society and not hereditary) that causes harm to people of color. 

According to one article published in the ABA, scholars believe that the concept of race is more about what people think and how they behave than any biological factor or reality. The following circumstances and events form evidence that the concept of race created by society has impacted the lives of humans in an unimaginable way. 

Supporting events and circumstances

Significance of the Dred Scott case

• The decision in this case almost led to the arrival of the civil war.
• The African-Americans or enslaved individuals, were denied citizenship in the U.S. and were classified as non-citizens.
• They have been exempted from protection from the federal government or the courts of the U.S.

One Drop Rule from the Jim Crow Era

According to this “One Drop Rule” for the Jim Crow Era, this was the prime evidence for racial classification. This rule segregated even mixed-race individuals in the United States.

One Drop Rule- It states that the ancestors of  any black community individual of and in the United States (even one) fall within the ambient of people of color called Negros. This was codified in the US legal system and institutions.

Housing programs – redlining 

During the 1930s and 1940s, the black community was deprived and excluded from availing of better housing options and the plans for the same (systematic denial of services). The element of favoritism in the United States reached its peak with that of racial discrimination.

Redlining was a discriminatory exercise by the government of the United States whereby federal and private lenders or agencies would mark up the area in categories such as fit or unfit for residency. The area or locality with the maximum number of black community individuals was deemed non-desirable for the white community to live in.

They were also denied access to loans, insurance, or any other services that are essential for property ownership. These exercises increased the wealth gap in the United States.

War of Acts on black community

In the year 1935- the government passed two laws for securing the white community in the varied sectors whereby the inferior, people of color, or black communities were excluded (better jobs, medical care, pensions, and many more) from reaping the benefits of such laws.

• The Social Security Act (1935)- This Act was for the benefit of the workers, the victims of industrial accidents, dependent and disabled individuals, insurance for unemployed individuals, and many more. This Act provided financial support to certain classes of individuals and families.

Under this, during the 1930s, people of color in agriculture and domestic help were excluded from receiving insurance.

• The Wagner Act (1935)- This Act was enacted to maintain the labor-employee relationship to a certain standard by laying down guidelines or rules. This Act protected the unions and organizations and provided the workers with collective bargaining rules.

People of color faced racial discrimination and were excluded from securing better-paid financial work opportunities.

Story-telling and counter-story-telling

Story-telling is an art, and how one conveys their art has a significant impact on how the behavior, beliefs, and thought process of an individual can be measured, understood, and even changed. The ways of story-telling or counterstory-telling always keep one on the captivating edge, and CRT understands the very importance of this because, without both, the truth lies dormant behind the glorious history of the white supremacy of what they are trying for the world to believe in and perceive as they are off. 

Many supremacist groups believe that inequality is a product of culture within the minority community and the lack of proper laws; however, many anti-supremacists argue that how one views inequality lies in the position they hold in society. 

Taking  consideration of the valuable life experiences of individuals in the black community in everyday life will let us know about the impact of the race factor.

Without knowing the story of struggle and hardships faced by the black community or people of color at the hands of white supremacy, one would erase their existence in the face of “racial discrimination” and deprive them of achieving the goal of a dignified life.

White community supremacy from legislation

According to the author, it would be correct to say that the policies and initiatives adopted by the government during the civil rights movement to improve and secure the ‘community of the black, also had a lasting positive benefit for the community of the whites,’ and none of them reframed those advantages. 

Many scholars argue that such programs of the government were done to achieve their political agenda, and the prime motive was not equality.

The lawsuits such as the Brown Case, Millikien Case, and Washington Case, as discussed under the head “historical landmark judgment” of this article, help to understand how the legislation was always intended to profit the white community while simultaneously misleading the world into believing that the U.S. Government indeed wants to achieve “racial equality.”

Analysing power structures and racial inequality through Critical Race Theory (CRT)

Racial inequality

According to the U.S. Department of Treasury (DT), racial inequality can be described as a factor through which there occurs an uneven distribution of opportunities for resources, power, and economics across race in a society. The impact of these factors is felt throughout America by different individuals belonging to different categories of race.

Roots of racial inequality

• The roots of racial inequality date back to the historic events and instances in the United States, which are well articulated in this article.
• It is a product of the ‘favoritism policy’ (white community  at the expense of black community).
• Aspects such as mistreatment, slavery, segregation laws, discrimination (jobs, housing, education) of Native Americans, Non-White Americans, African Americans, Latinos, Asians, and many more provides the glimpses of how racial inequality have affected this community as compared to the white community in America. 

Different forms of racial inequality

Various forms of racial inequalities occur through these power structures (core-principles) including in education, wealth, and healthcare, even prisoner’s healthcare.

Let us discuss some of the racial inequality through the lens of CRT 

Economic

• Jan 22, 2022- During the Virtual Davos Agenda (which addresses disparities in various sectors of society by the world leaders of various countries) held by The World Economic Forum, the Secretary of the Department of Treasury raised her concern regarding the racial inequality in certain opportunities of the strategy rolled out by Biden’s administration, Modern Supply Side Economics, to combat the ineffectiveness of the same.
• The strategy- promotion of  economic growth by focusing on the adequate quantity and quality of skilled workers, the necessity of research investment, and safeguarding environmental sustainability. The main purpose of the strategy is to promote growth and solve the problem of racial inequality in the United States.
• However, as per the secretary, these strategies failed to provide equal opportunities in certain sectors, such as jobs, infrastructure, or housing, to “people of color” among White Americans. According to this, the failure of some sectors to achieve equality undermines the boom for equality in other sectors. 
• For a country’s economic productivity to be on a positive graph, the productivity and equality of these individuals (different racial backgrounds)  are also necessary. This same view is also held by the deputy secretary of the Treasury Department.  

Poverty, housing, and wealth 

• Despite various racially discriminatory laws being abandoned today, such as maps created by banks to discriminate against neighborhoods and deny them loans and credits for housing, the aftereffects of such laws, policies, and practices still call for racial inequality in the United States today. 
• Regardless of race, this neighborhood still faces racial segregation, low homeownership rates, low house values, and high rents.

• The denial of housing sector facilities and equal opportunities led to poverty rising in the United States, impacting not only people of color but all Americans.
• According to the article Racial Inequalities in the United States, There are vast differences between the different groups of communities, such as Black, Hispanic Americans, and non-Hispanic Americans, before COVID-19 and after the pandemic in the rates of poverty and wealth gap (relatively higher) (negative impact).

Education

• In the year 2010- white kindergarten students showcased better linguistic skills as compared to black or Hispanic students.
• The year 2019- In the field of higher-education, the rates of acquiring a graduation degree by white students were inclined as compared to black, Hispanic, and American-Indian students. 

Employment 

• Due to a lack of better educational opportunities, unemployment rates skyrocketed for people of color.
• The year 2019

• 6.1% high rate for Black, American Indian, or Alaska Native.
• 3.3% lower rates for whites and Asians.
• 4.3% Higher rates for Hispanic Communities.
• Even the wage rates were recorded as lower for groups and communities of Black and Hispanic people as compared to whites in the year 2020.

Health-care

• ‘People of color’ face higher rates of child abuse, lead exposure, obesity, and chronic illness as compared to white individuals.
• The rates of death of such community individuals were even higher as compared to whites during the pandemic of COVID-19 due to the limited availability of healthcare facilities and resources.

Criticisms and controversies related to Critical Race Theory (CRT)

Critical Race Theory has faced much criticism from legal experts as well as from various other experts across the political spectrum. Understanding why CRT is being attacked even in the 21st century will help us gain better knowledge about the historical struggle the black community has faced at the hands of so-called white supremacy.

Scholars from both sides (external and internal) of racism have often indulged themselves in debates and raised their concerns while analyzing racism and how race, law, and society are for sure interconnected and interrelated to promote and encourage, consciously or subconsciously, the instances and factors related to race discrimination.

Let us understand what the critics have to say about CRT.

Academic and political criticism and controversies 

• Critics believe that the CRT only focuses on the experiences of people of color while neglecting the story point of the white community.
• They question the very idea of the Truth that the CRT portrays (experiences) of the black community, which can be proved in reality.
• According to Delgado and Stefanic, in their book Critical Race Theory: An Introduction, they state that the notion of truth regarding racism is formed by powerful people in society in the fields of politics and social sciences.

• Failing of liberation.
• Many critics also state that the problem lies with the theorists as well because they downgrade the traditional idea of fairness and equality in law, and with only a minute of the problem, they tend to associate it with “structural and institutionalized racism” and hope that this will achieve different positive results.
• In the year 2010, police brutality topics were at their peak because of the several incidents of ‘police shootings’ that took place against the black community in the United States. This not only called for local protests and demonstrations, but it became widespread worldwide.
• In the year 2013, all such incidents led to the formation of the “Black Lives Matter” Movement (safeguards against the discrimination of African-Americans in the United States in all aspects).
• However, this movement was far from achieving the progress it was intended to purport to because of the falsified statements of violent attacks on police and property and other harmful statements the movement received from the very own President of the United States (Trump’s Administration).
• The negative and hateful comments received by the President from such actions further made them ready for the counter-attack on the CRT. 
• The EO, as earlier discussed, was one such example of how the Government then decided to deal with the topic of Racism (Critical Race Theory). This Supports the very notion, as described by Derik Bell, that Racism is deeply rooted in American Society.
• Other controversies related to CRT can be seen in various historic events and cases, as discussed further, and can also be seen in the murders of Geoge Floyd and Beonna Taylor, due to which many schools started teaching about aspects of CRT.
• Apart from these, there are many more instances, stories, and cases against the black community, which unfortunately the pages of this article will be unable to do justice to.
• According to the presidency of the Trump Administration, they saw CRT as a villain for:

• A theory that is spreading false history, ideas, culture, and beliefs against the white community by the Anti-American community.
• They also claimed that CRT is for the very purpose of brainwashing citizens and children by adding the curriculum to the public schools. However, it was not all that it appeared to be, as claimed by many Anti-racist communities.

• To hide the truth about communities, many states in the United States banned the teachings of CRT in schools and institutions.
• So what we can say is that referring to a ban on CRT means a ban on the core principles of CRT, as earlier discussed. 
• It also refers to the very fact that people of color are still subjected to racism in the U.S. The white community subconsciously holds the racists acts and beliefs, and the advantage they hold is ‘white privilege.’

Internal criticism and controversies 

Internal criticism is that whereby the proponents of CRT themselves question the very authenticity of the CRT.

• Earlier, the criticism of the scholars was of over-simplifying the experiences of people of color by excluding the topics of diversified factors that have now taken hold all over the world with the widespread agenda of serving justice for the inferior community (neglect of factors of women of color, LGBTQ, etc.).
• We also talk about the concept of intersectionality that emerged due to the hardship of “women of color” amongst people of color. According to the scholars, to understand the concept of discrimination, understanding the concepts of gender and race equality was also a necessity.
• The multi-dimensional factor within intersectionality was also one reason that scholars were questioning the CRT. It means how the experiences of race, gender, and class are interconnected (race-sexuality) and how they shape the very Idea of racism. Today, this theory is very well accepted by scholars and the community.
• Another was regarding the neglect of other inferior community groups (Latinos, Native Americans, and Asian Americans) in the struggles of racism in the United States apart from the black community.

External criticism and controversies

External criticism is that in which outsiders, apart from the proponents of the CRT, give their views and reviews about how and what the CRT is all about. Let us view some:

• According to the article CRT: Histories In and Out, the author describes one of the incidents that occurred during the conference in the year 1997 at the Yale Law School, whereby Judge Richard criticized the capabilities of the CRT scholars and accused their theories of being inaccurate, extreme, and irrational. According to the judge, their theories called bullying the opposite of racism and sexism.
• The critics who are conservative by nature often distort the very idea and core principle of the CRT. They view CRT as a means through which the possibility of forthcoming legal change and racial equality can never be achieved.
• Also, these critics often target the founding theorists such as Derrick Bell, Richard Delgado, Patricia Williams, and many more to prove their points, as observed by the author. 
• The best way to understand  CRT is to understand change with time and people. Progression by keeping the histories in mind and not repeating the same instances can go a long way in achieving racial equality.

Landmark judgements 

Recent judgements 

George Floyd case (Police racial discrimination) 

Significance of the case

• In the State of Minnesota v. Derek Michael Chauvin (2021), the video footage of the murder of George Floyd at the hands of police called for an end to police racial discrimination.
• The case addressed various issues regarding the act of police brutality against the African American Community.
• According to President Biden, this was one of the rarest cases in how fast justice for the black community was served.

Facts of the case

• In May 2020, Derek Chauvin, a police officer in Minneapolis on duty, received a call regarding the use of a counterfeit currency bill at a public store.
• Due to this reason, three other officers, along with the main accused officer, approached and arrested Geoge Floyd (African American).
• Various videos were circulated that became prime evidence of the use of police brutality against George Floyd.
• The video footage went viral and showcased how the accused officer pinned Floyd to the ground and placed his knee on the victim’s neck.
• George Floyd was unable to breathe during this time and repeatedly conveyed the same to the police officer. However, the police ignored the pleas of the victim and the bystanders as well.
• George Floyd was left unconscious after a while and was later declared dead in hospital.
• Various protests and debates took place in the aftermath of George Floyd’s death, not only in the U.S. but worldwide, on how race and racism are dealt with in such a progressive country.
• The officer was charged with second-degree intentional murder, manslaughter, and third-degree murder of George Floyd.

Issues involved in the case

• The issue was police brutality against minority groups based on racial bias, and the plea was for transforming and reforming the police enforcement laws.
• Excessive use of force: whether the officer used extra and unnecessary force while keeping the knee on the neck.
• Cause-effect: whether the death was caused directly by the police officer or other circumstantial factors were at play for the death.
• Police responsibility: Whether there was an act of police misconduct or not.

Judgment of the Court

• In April 2021, the judgment was delivered by the court, which found the officer guilty of murder.
• The officer was awarded  22 and half years in prison, and other officers received several years according to their association with crime.
• Second-degree intentional murder: The murder was a result of the heat of the moment and was not pre-planned. The element of bad intention is missing.
• Third-degree murder: here, too, the intention of killing a person is missing. However, the act of doing something dangerous without  consideration for human life amounts to murder.
• Second-degree manslaughter: Causing the death of someone accidentally because of dangerous actions.

Breonna Taylor’s case (Black lives matter) 

Significance of the case

• In Kelly Goodlett vs. United States of America (2022), the concept of racial profiling and structural racism spread like wildfire in the criminal justice system, both at national and  international levels, and led to the movement “Black Lives Matter.”

Racial profiling: using race as a factor by law enforcement agencies to decide, who is fit enough to receive any charges against them.

Example of racial profiling: Imagine two civilians, one belonging to white supremacy and the other to a minority group. Both are driving the car at the same speed. However, police officers only pull over cars with minority groups on suspicion of keeping something illegal.

Structural racism: Racism is due to policies, practices, laws, rules, and societies. As discussed earlier, race is not biologically inherent but arises because of the core principles described under the CRT.

• This case became a symbol and a beacon for the need to change police practices and racial discrimination.
• The case led to protests, demonstrations, and peace rallies to obtain justice for Breonna.

Facts of the case

• Breonna Taylor, aged 26 (African-American), worked in a department of medical profession in Louisville, Kentucky.
• Louisville Metro Police Department (LMPD) formed a unit of Place-Based Investigations (PBI) for narcotics investigations in 2019.
• Kelly Goodlett worked as a  detective for LMPD for eight years and was a member of the PBI Unit.
• On the fateful day of March 2020- the police officers were investigating an alleged drug trafficking Tip in respect of Taylor’s ex-boyfriend.
• While doing so, they made a forced entry without knocking knock-on Taylor’s apartment, despite her not being the prime suspect of the alleged drug-related offenses.
• No-knock warrant: Such warrants allow, law enforcement agencies and officers to make an entry without announcing they are forthcoming on someone’s premises.
• According to the information, both partners were on the bed while they thought the police were the intruders, and on account of this, Taylor’s boyfriend charged and fired on the police officers.
• In response to the shot, the police retaliated and fired multiple rounds (22 in total) into the apartment of Breonna Taylor, thereby killing Taylor.
• As per the report, Breonna Taylor succumbed to her injuries to the chest.

Issues involved in the case

• Whether the use of force by the police officers was justified or not.
• Whether the no-knock warrant issued by the police officers was justified or not.
• The concepts of ‘racial profiling’ and ‘structural racism’ became the highlights of the issue and called for police law reforms.

Judgment of the Court

• According to the information, the U.S. District Court, Western District of Kentucky, at Louisville did not charge the four police officers directly for the death of Breonna Taylor. 
• The Court charged the officers based on violations of the federal civil rights of those citizens (Title 18 USC Sec. 242).
• Two officers were charged with-  producing a fake affidavit for the search warrant grant application.
• The third officer was charged with open fire (attempting to kill) at Taylor’s apartment (using willful excessive force).
• The fourth officer was charged with conspiracy for obtaining fake search warrants and later covering them.  

National Urban League case (Trump truth ban)

Significance of the case

• In National Urban League v. Trump (2020), the  Executive Order on Combating Race and Sex Stereotyping passed by President Trump’s administration harmed freedomm of speech, racial relations, gender equality, and federal contract aspects for the black community.
• This Order censored certain topics of CRT and workplace training that address or promote diversity, equity, and inclusion.
• The Order created a vague idea and confusion about what was allowed to be practiced and what was not. 
• Because of this order, many stopped teaching topics related to CRT in the education field and also suspended workplace training of such activities  based on the fear of losing their funding or the consequences of non-compliance with the executive order.

Facts of the case

• In 2020, President Trump issued an executive order that banned speech, activities, and workplace training (discussion on inequality, CRT, etc.) that addresses or promotes diversity, equity, and inclusion.
• Sept 22, 2020- The order effect came and applied to federal agencies, U.S. Military Institutions, Grant Recipients, and Contractors.
• Oct 29, 2020- In Response to that, NAACP-LDF on behalf of NUL and NFHAF (As earlier discussed),  filed a Class Action Federal Lawsuit against the ban through such order on the President, The Secretary of Labor, and the Department of Labor.
• The lawsuit was filed under  28 USC Sec. 1131 (jurisdiction to try cases), Declatory Judgement Act (28 USC Sec. 2201), and Writs Act (28 USC Sec.1651).
• The Reason for Lawsuit- It violated the following fundamental rights guaranteed by the U.S. Constitution.

• On January 7, 2021- the U.S. Department of Labor dropped the practice of the Trump Truth Ban  following the nationwide injunction issued (The Court ordered the government to stop enforcing the EO)  in the case of Santa Cruz Lesbian and Gay Center v. Trump.
• New rules and guidelines were issued by the DOL, and they even stopped taking calls on the hotline, which was formed to inform people about the complaints. 

Issues involved in the case

• Whether the EO violates the First Amendment- Free Speech and Fifth Amendment- Due Process and Equal Protection of Law of the fundamental rights guaranteed by the U.S. Constitution or not.

Judgement of the Court

• However, the case was not litigated in Court due to the change in effect of the change of the presidency of Trump with that of Biden.
• On January 21, 2021- The EO- 13950 laid out by the Trump Administration was canceled by the Biden Administration.
• To safeguard the freedom of speech and expression and enable fair and equal opportunities for all communities, steps were taken by the Biden Government.

Historic landmark judgments

Plessy case (Separate but equal doctrine)

Significance of the Case

• In Plessy v. Ferguson (1896), the separate but equal doctrine (allowing separate institutions with equal quality) was established and developed by the Court to justify that racial segregation and discrimination are valid in the U.S.A. This happened for more than six decades.
• Institutions like public accommodations and spaces fell under the preview of this doctrine, including school Segregation.
• According to this doctrine, as long as there are separate spaces of equal quality, it provides for the white and black races until the law is legally valid in constitutionality.
• This Doctrine became a symbol of racial inequality and created problems during the Civil Rights Movement.
• NAACP Margold report led to the reversal of the separate-but-equal doctrine after the Brown Case.

Facts of the case

• Plessy was a mixed-race individual who often appeared to be white.
• During one of his days in 1892, he violated the Louisiana Separate Cars Act of 1890 (separate but equal train accommodations for black and white communities) established during that era by the Louisiana State Legislature by boarding the train and getting arrested for the same.
• By that time, the 13th and 14th Amendments of the Constitution were enacted, and Plessy filed a lawsuit based on the fact that such treatment violated his (and the black community’s) rights under the Amendments.
• Many debates took place around this time as the case proceeded, as they argued that the amendment provided equal treatment but did not eradicate discrimination or inequality.

Issues involved in the case

• Whether the Separate Car Act of 1890 violated the Newly Amendment of the Constitution or not.

Judgment of the Court

• At this point in time, the U.S. Supreme Court favored the State of Louisiana Acts of racial segregation and stated that they did not violate such laws and clauses of the 14th and 13th Amendments.
• This made racial discrimination and segregation valid in the Country.

Guinn Case (Grandfather clause was made illegal)

Significance of the Case

• In Guinn v. States (1910), NAACP was seen as a legal Advocate because they secured a victory against a discriminatory Oklahoma Voting law that regulated the right to vote using the Grandfather Clause. (Changes of the law, policy, and regulations are only applicable to the new venture and not to a prior venture after the passing of such legislation.)
• This Law banned African-Americans from a fair, just, and legal democratic right and discriminated against them by denying them the right to vote. 

Facts of the case

• The Okalama Voter Registration Act of 1910 was enacted in the State of Oklahoma, USA.
• According to this law, eligibility for voting is dependent upon the passing of the literacy test.
• However, an exception was involved in such a law, whereby some individuals (whose ancestors were eligible to vote before the year 1866) were exempt from giving the test. 
• Such an exception was based on the grandfather clause, and the irony of this law was that African Americans were not allowed to vote because it only applied to the White Community to be eligible for the literacy test.

Issues involved in the case

• The issue was regarding the validity of such a test and the clause as it discriminates against African Americans.

Judgment of the Court

• The Court took a stance on the 15th Amendment made in 1890 and stated that it violated such an amendment of the Constitution.
• According to the 15th Amendment- discrimination for voting Rights based on race, color, or the grandfather clause was prohibited therein.
• The court ruled that such a clause was made to create discrimination and was therefore illegal.

Brown Case (Freedom of choice establishment)

Significance of the Case

• The Brown vs. Board of Education (1954) case brought an important awakening to racial inequality faced by African Americans in society and proved to be a radical point that led to the end of institutionalized racism in the American Education System.
• The Court had a united decision and overturned the Plessy Case decision and banned segregation in public schools.
• This case came to be recognized as a historic moment in the fight against race discrimination in American society for the black community or any community belonging to a group of minorities.
• This case also led to the end of the practice of race discrimination in the cases attached to such practices by the Government for Public parks, beaches, golf courses, transportation, and any other public facilities.
• After almost a decade after this decision in this case, the CRA of 1964 was enacted, and even the Freedom of Choice plans were initiated, under which the children were given the choice to choose the school in which they wished to attend.
• However, according to the father of CRT- this case failed to provide a proper plan and legal remedy for school integration and school segregation even after the Civil Rights Era.

Facts of the case

• This story started with a girl child, 8 years old, living in Topeka, Kansas, who used to travel for hours to attend the black school rather than the white school, which existed nearby her town because of the law of segregation.
• With the efforts of the NAACP community, the parents, even after being encouraged to start sending their children to the all-white schools, were afraid to do so. 
• Due to this reason, the NAACP filed a class-action lawsuit (on behalf of such cases) along with the parents of black children in the community against the schools.
• Before the landmark decision as such, racial segregation existed in a total of 21 states (separate but equal schools), whereby everything was of inferior quality as compared to what white community children used to receive in the schools.

Issues involved in the case

• Whether the “racial segregation” policies of the public schools are unconstitutional or not.

Judgment of the Court

• The Court decided that the segregation of children based on race, attendance, or admission to such schools is invalid and unconstitutional.
• As analyzed from the verdict of the judge, it is concluded that the court was not in favor of racial segregation being conducted in the education system as it creates a sense of unworthiness in the black community children, attending such schools.

Browder Case (Rosa park bus-seat segregation)

Significance of the Case

• In Browder vs. Gayle (1956), in association with other such cases, challenged the legality of the  racial segregation taking place on the buses and struck down segregation on city buses (public transportation) in Montgomery, Alabama.
• This case is relatively associated with the bus boycott event in 1955 (which lasted 1 year) in the Civil Rights Movement, as Rosa Parks, an African American woman, refused to give her seat to a white American passenger.

Facts of the case

• During the ongoing discrimination in the United States, African Americans were ordered to be seated at the back of the bus.
• During this time, Rosa Parks violated the norms and challenged the discrimination faced by the black community.
• This led to the bus boycott events by civil rights activists including whom Martin Luther King Jr. was also associated with. 
• The lawsuit was filed by the Women’s Political Council (WPC) against the seating norms.
• Along with Rosa Parks, various activists joined the battle against discrimination.
• This case was fought by the LDF, which marked an important milestone in their success. 

Issues involved in the case

• Whether the bus seating arrangement (segregation) violated the 14th Amendment of the Constitution that guarantees equal protection or not.

Judgment of the Court

• The U.S. District Court for the Middle District of Alabama ruled in favor of racial segregation being unconstitutional.
• The Court stated that based solely on their race, it violated the rights provided by the Constitution.

New Kent County case (Ban on freedom of choice plan)

Significance of the case

• In Green vs. New Kent County (1968), the Court was able to clarify the moto behind the freedom of choice plans that were active in the southern parts of states to discard the practice of racial segregation after the decade of the historic decision being made in the Brown Case (Supra).
• This plan was disguised as an effort to curb the segregation practice but, in fact, was promoting the practice of segregation in reality and was not in compliance with the decision of the Court as ruled in the Brown Case.
• The practice of integration (one school) and abolishment of the dual school (one for whites and the other for blacks) ended segregation in public schools for education with immediate effect. 
• The case led to the development of School Desegregation Guidelines for Local and State Education Associations for racial desegregation.
• The Court became more active, and the schools were under the radar if there was a presence of racial segregation, and steps for bringing integration along with compliance with the equal protection clause were made mandatory. 

Facts of the case

• This is the story in Virginia, where the New Kent County school adopted the “Freedom of Choice Plan.”
• According to this plan, students were given the choice of attending the school of whites or the school of blacks for African American students.
• This plan was in itself contradictory because, despite racial anti-segregation rules, the practice of segregation was going unnoticed. (Intent of motive) because of the limited resources available for black students to attend the schools of whites.

Issues involved in the case

• Whether the Freedom of Choice plan’s purpose is to promote desegregation or not.

Judgment of the Court

• The U.S. Supreme Court held that this plan was ineffective in curbing the practice of racial segregation in public schools and went against what was settled in the Brown Case (Supra).
• According to the Court, true desegregation occurs when there is an actual stop to the dual school system with the adoption of such plans.
• The Court further stated that to abolish the dual practice of the school, the burden lies on the school authorities, as they have to take an active step to stop this practice.

Griggs Case (Disparate impact theory)

Significance of the Case

• In Griggs vs. Duke Power Co. (1971), employment discrimination was concluded based on Title VII of the 1964 Civil Rights Act.
• This was set as a legal standard, applicable even today, for protection from employment discrimination.
• The burden of proving the activeness of discriminating practice lies on the employer, as they are required to prove that the hiring requirements must be related to the capabilities and necessity for better working of the company.
• The Disparate Impact theory refers to the practice of employment or education policies that have an indirect negative factor or intent on the minority group, instead of direct discriminative intent.

Facts of the case

• Duke Power Company is dealing with an electrical power plant in North Carolina.
• As per the working policy of the Dukes, they discriminated against African American employees in their company based on their education qualifications, income, and effective job opportunity (depriving them) as compared to the white community.
• For a better position in the company, the black community is required to pass a test and also have proper educational qualifications.
• However, due to the denial of education opportunities, the black community remained deprived of the same.

Issues involved in the case

• Whether the requirement of qualifications for better job roles within the company violated Title VII of the CRA of 1964 or not.

Judgment of the Court

• The U.S. Supreme Court ruled against Duke’s company and stated that their recruitment policy for the transfer of a job role is considered void.
• This is because such a policy is not necessary for marking individuals for their capabilities.
• According to the Court, such policy is indeed violative of Section VII of the CRA of 1964 because it discriminates against the minority group by depriving them of a better role.

Davis case (Intentional discrimination for employment opportunity)

Significance of the Case

• In Washington v. Davis (1976), the Standard for Discriminatory Purpose was established.
• The disparate impact theory established in the Griggs case was rejected in this case because of the fear of the negative consequences affecting the laws and policies of even taxes, welfare, public services, minimum wages, licensing,  and many more.
• The black community victim failed to prove intentional discrimination, and further, this policy created additional challenges to establishing a claim regarding intentional discrimination in employment practices.

Facts of the case

• To be considered for the employment opportunity, a written civil service exam was mandatory for the applicants from the Washington, DC, Police Department.
• The challenge was to the employment practices (selection criteria) as such because of the elevated failure rates they posed for African American Applicants.
• One such individual sued on the grounds that it violated the Equal Protection Clause and that its impact was discriminatory.

Issues involved in the case

• The issue was regarding what constitutes unconstitutional race discrimination for employment under the Constitution.
• Whether such practices for selection criteria violate the equal protection clause of the Constitution or not.

Judgment of the Court

• The U.S. Supreme Court stated that proof of discriminatory impact arising out of laws or policies is not sufficient evidence to establish that it has led to a violation of the protection clause.
• Only if the law or policy is enacted with the intent to create a discriminatory factor (impact), then it can be said that the Equal Protection Clause was violated. And not otherwise.
• Therefore, the element of intention for discrimination forms prima facie evidence.
• The Court stated that such a policy was to be in place to derive a qualified individual for a police officer’s job and not to Fail Black Community individuals.

Bakke Case (Race-quotas policy)

Significance of the case

• In Regents of the University of California v. Bakke (1978), the admissions were based on race quota criteria for higher education in the universities that questioned the laws of such admission policies.
• The question of such policies’ validity was decided for the first time, which came to be known as landmark judgments in other cases and created an impact on the legal framework for race-based admissions.
• The rule decided in Davis’s case was followed in this case.

Facts of the case

• Bakke, an applicant belonging to the white community, applied for admission to  Medical School at UC Davis.
• However, because of the race-based admissions policies, despite scoring higher in the test scores, Bakke’s application was rejected twice.
• During such policy governance, 16 out of 100 seats were reserved for minority groups (Blacks, Native Americans, Hispanics, and Asians.)
• Aggrieved by this, a lawsuit was filed.

Issues involved in the case

• Whether the race-based admission policy violated the equal protection clause or not.
• And whether the use of such policy for admission is constitutional or not.

Judgment of the Court

• The judgment of the U.S. Supreme Court is divided into two decisions.
• The court decided that such policy usage was unconstitutional because it indeed violated the protection clause of the 14th Amendment to the Constitution. (Supported by 6-3 vote.)
• On the other hand, the court also gave a verdict that such can, however, be considered a factor for admissions decisions because these can promote diversity, and hence such practice was also deemed to be constitutional by such a method. (supported by 5-4 votes).
• In short, the race quotas were struck down, and the use of the race factor for admission policy was upheld by the Court.

Croson case  (Racial classification in hiring process)

Significance of the case

• The case of City of Richmond vs. Croson (1989) led to the affirmation of the legality of the programs and laws that use race as a factor in the hiring process.
• The standard and guidelines for measuring the programs (ordinance) were formed because of the decision in the case. 
• This caused difficulties in addressing past racial discrimination, and forming new laws where race (racial classification) can be used as a factor for helping out the minority group.
• This case was seen as a setback for the African American Community. 

Facts of the case

• In the City of Richmond, Virginia, the population of African-Americans was 50% during the ‘80s, and discrimination against them was even higher.
• The city had an ordinance law (to rectify their practice of discrimination) related to the minority group of contractors seeking employment opportunities.
• According to the ordinance, 30% of the construction contract’s work should be provided to the minority group by the prime contractors.
• However, certain ordinance requirements were not met by the Croson company.

Issues involved in the case

• The issue was whether such a law violated the equal protection clause of the 14th Amendment or not.

Judgment of the Court

• The Court stated that the ordinance that allowed and reserved seats for minority groups to grab the opportunity for government contracting work was invalid and void.
• According to the Court, this indeed violated the Equal Protection Clause of the Constitution.  
• According to the Court, the reason for using such programs based on race was not strong enough to do so in compliance with the rules as laid out when cases of racial classification occur. 
• According to the Court, the use of such ordinance or law is only permitted for racial classification when it is necessary and just. 
• The order went in favor of the Croson Company.

Shelby case (Voting rights discrimination)

Significance of the case

• This case was Shelby County vs. Holder (2013), specifically for the state and the local government, which have a history of racial discrimination in voting.
• The strikedown of the Section 5 requirement helped in the fair voting process in the states and local government bodies of the United States.
• However, many believed that such removal weakened the Voting Rights Act and furthered the concern that race discrimination (white supremacy over the black community) could see a takeover shortly. 

Facts of the case

• Shelby County is a place in Alabama, and the place challenged the validity of Section 5 of the Voting Rights Act of 1965, which should be per Section 4 of the VRA of 1965.
• Section 5 states that if there are changes to be made in the voting rules and laws by the state and the local government that have been in place since 1964, then such changes with the new voting laws and rules have to meet a requirement.
• Requirement- obtaining judgment/order from the U.S. District Court for the District of Columbia or attorney general (within 60 days).
• As per this requirement, new laws can be enacted. In the absence of such compliance, the laws can be rejected and not enforced by the attorney.
• The Decision regarding this has to be made by three judges, and the appeals will lie with the Supreme Court.
• Shelby County opinionated that such a process was outdated and unfairly targeted towards certain states for meeting the personal political voting agenda. 

Issues involved in the case

• The issue was regarding the requirement process of Section 5, whether such a process is valid and constitutional or not.

Judgment of the Court

• According to the U.S. Supreme Court, the judgment/order-obtaining process applied to certain states and jurisdictions using outdated information to determine who would fall under such categories.
• According to the Court, such information was not reliable enough to reach a decision, and the section was declared invalid and unconstitutional.

Impact of Critical Race Theory (CRT)

Critical Race Theory (CRT) was created with a motto to fight injustice for  people of color, to establish how laws, policies, and institutions shape the very idea of race and racism. 

This constant war between the left-wing and Right-wing of the CRT has led to many ideas about what the CRT is and what it is not.

The opposers of CRT are trying to distort the true nature of CRT and try to associate it with negative perceptions such as black-supremacist racism, false history, or an extreme version of wokeness. This attempt is based on the fear of not letting the minds of the white children be corrupted by how American History has treated the community of blacks and other “people of color.

However, CRT has all-together various Implications in various fields in the modern century. Let us have a look at some of those.

Impact of CRT on education and educational policies

• The impact of CRT in education helps us to acknowledge racial inequalities, diverse teaching methods, and curriculum. However, this has also been attacked by the Left-winged communities.
• CRT helps us understand the difference in education between different races that has existed over time. This also provides us with a way on how the laws and educational policies can be changed for the betterment of the students, society, and teachers likewise.
• Classrooms and teachings now include diverse history knowledge by including various teaching styles and methods. Every cultural history is taught to make society relate more to its lineage.
• The importance of adding different perspectives and voices to the curriculum provides a sense of empowerment in one’s educational system.
• Information about the moments of Black History and Woman’s History enables one to acknowledge the fight for justice their ancestors have been fighting against America’s Power of white supremacy, and inclusive materials to celebrate the diverse range of experiences are also added to help understand this in a better way.
• As we saw earlier, some states and countries are trying to ban the teachings of CRT (Banning of books from libraries as well),  despite a positive response from President Biden’s Administration. Some believe CRT to be a weapon of destruction for American history, while others believe it to be a tool to understand race and racism.

Impact of CRT on law, education, sociology, and social justice system

• CRT brought awareness and a need to fight for a fair society against racism. (Bring positive change.)
• The proponents of CRT or the founding fathers of CRT have provided us with deep knowledge, incidents, and instances of racial inequality, all with their unique and diversified challenges, experiences, and perspectives, while also providing a way to challenge structural Racism.
• According to the believers of the CRT, they want big transformative changes in the legal system and institutions rather than small-scale changes that won’t be able to fix the problem of racism.
• From today’s point of view, many believe that social improvement regarding racism has been seen in America in different fields such as business, education, politics, and labor. However, there are still some gray areas that need to be addressed regarding the hidden form of racism occurring in everyday life.
• CRT also helps us understand how race is connected with some spectrums such as gender, ethnicity, social class, and sexuality. In Simple terms, it acknowledges the presence of “Intersectionality”- a term coined by Derrick Bell.
• According to the author, CRT is facing backlash from the opposing party because they will lose their power over society if the need for CRT hunger continues. Despite this, the communities are still fighting against oppression, which is necessary. 
• CRT values the stories (real-life experiences of individuals who faced racism). According to CRT, only understanding the objective truth does not help one understand the concept of race, racism, or CRT itself.

Conclusion

Critical Race Theory is not only a subject, principle, or history to understand how racism is deeply engraved in our society by us through whatever means it is, but it is also an emotion that is to be understood and experienced in the true sense to truly empathize with the community of black and people of color, who leave behind the very doors of their home to achieve something better than what Mother Earth and nature have provided us with and come to the point where they have to fight for their basic human rights.

Just because of the color of our skin, our texture, and our perceived looks, it  does not make us any less human. Discrimination in any form is inhumane and raises the very question of the probability of what people in power and people without power can do in and for society.

The ban on teaching CRT is also not a permanent solution. To truly project a positive outcome, one must truly look towards the inward experiences and constantly ask one-self- What would I have done If the finger of discrimination was pointing towards me? Would I have not fought back? Would I not have questioned the very system that was made with the intent to protect us? Or would I have left things just the way they are?

Color of skin does not define who we are as individuals, but our character does! And not knowing the Implications of such a decision will have far greater negative consequences than what we are facing today, even after entering the 21st century. 

Frequently Asked Questions (FAQs) 

What is CRT and how is it related to education in the United States?

The Theory of Critical Race, also known as CRT, is a framework to examine and analyze how race and racism are deeply rooted in our social structure and institutions. In Niche fields like Education, histories and cultural instances and events help us understand and gain knowledge regarding racial inequalities of the past and present and how such affects our laws, educational policies, practices, and the very outcomes from those applications.

Why is the CRT in the debate over the controversy?

The controversy related to the CRT is because of the left-wing and right-wing interpretations and political implications of racial discrimination happening right now worldwide and not just in America among people of color. According to the critics, CRT promotes and encourages division and group identity, while supporters believe it to be a tool to understand structural racism.

Who created CRT and why do the lawmakers want to ban it?

The framework of the CRT was created during the Civil Rights Movement for reasons of racial discrimination in society and institutions based on colorblindness. The CRT movement wants to establish that racism is still going on in our laws, policies, and society.

What are the other factors in the CRT instead of race?

While CRT speaks about and analyzes race and racism, other social aspects of intersectionality, such as gender, class, and sexuality, are also discussed and analyzed through CRT. (recognizes the implications of oppression and privilege.)

Are there any laws that have banned the teaching of CRT?

No, but in fact, after the executive order passed by the Trump Administration in the year 2020, many states proposed and even implemented the ban on teaching CRT in schools, which attracted debates and protests about academic freedom and censorship.

How does CRT relate to social activism and social justice movements apart from legal aspects? 

The CRT has provided a framework to understand how race is connected with power structure and a source for Racial Social Inequalities. CRT has been used to support Advocacy efforts that seek racial justice, equity in education, criminal justice reform, and other social issues.

Can the CRT evolve with time?

The answer to this is yes; the framework of CRT is ever-evolving and keeps on changing with time because of its dynamic nature. Adopting new research, debates, and insights on understanding the current situation of racism in people’s consciousness helps critics and even activists refine the concepts and approaches towards CRT, without which the system would fail to achieve its goal of safeguarding the human community.

References

• https://books.google.co.in/books?hl=en&lr=&id=tqCUEAAAQBAJ&oi=fnd&pg=PP1&ots=MCc1wrAjMx&sig=tA_AlF4Jc4y8g1Vm67z3-v0lgek&redir_esc=y#v=onepage&q&f=false 
• http://scholarshipweekend.oglethorpe.edu/wp-content/uploads/sites/21/2023/01/Terry-Cobb-article-Derrick-Bell-profile.pdf
• http://www.elegantbrain.com/edu4/classes/readings/depository/race/critic_race_theory_def_hist.pdf 
• https://www.jstor.org/stable/48633484
• https://www.jstor.org/stable/10.1086/675228 
• https://www.jstor.org/stable/20027957 
• https://heinonline.org/hol-cgi-bin/getpdf.cgi?handle=hein.journals/tndl72&section=22 
• https://books.google.com/books?hl=en&lr=&id=lLXTyrlM59MC&oi=fnd&pg=PR11&ots=2CxR1Kcqjq&sig=qB8_xPBYaqKlOe-MTEhEg6HXsPs 
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/hblj18&section=4 
• https://journals.sagepub.com/doi/abs/10.1177/0896920513504600 
• https://books.google.com/books?hl=en&lr=&id=aj8eCwAAQBAJ&oi=fnd&pg=PA196&ots=vclo2BHZnj&sig=uWRj133DNLQjYyvTtNA6pN0Aq3s 
• https://heinonline.org/hol-cgi-bin/get_pdf.cgi?handle=hein.journals/aulr53&section=45 
• https://eric.ed.gov/?id=ED506735 
• https://journals.sagepub.com/doi/abs/10.1177/17461979221123014 
• https://scholarworks.waldenu.edu/jsc/vol13/iss1/7/ 
• https://newprairiepress.org/aerc/2012/papers/34/

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.

This article is written by Shreya Patra of Xavier University, Bhubaneshwar. This article covers sexual offenses, crimes involving force, crimes involving fear, crimes involving physical restraint in the United States, the history behind their evolution, the current status of such crimes and offenses, and some landmark cases that have shaped how they are seen now, along with the future implications they carry.

It hsa been published by Rachit Garg.

Introduction

The United States has always seen a great number of offenses being reported. Be it offenses related to crimes driven by force, crimes driven by fear, crimes driven by physical restraint, or even sexual offenses, as a matter of fact. The most recent case (R.S. vs. Bd. of Educ. Shenendehowa Cent. Sch. Dist. (2017)) of an autistic and minor student at Shenendehowa High School has scared parents of school going students. The accused was restrained face down. The reason for this action was a dispute between him and the staff of the school he was studying at. Since Alex does not speak, it was difficult to understand the situation. While the school continues to keep quiet, citing confidentiality, the State investigates the gross violation of the regulations by not carrying out due process of law and restraining the student and whether it was an appropriate measure. 

In the state of Minnesota, an elaborate report was released. And they could now be facing federal oversight for this. This elaborates on the discrimination black and indigenous people face by the government authorities, especially the police. From using an unrequired amount of force when there is no immediate threat to using neck bands, tasers to apprehend the accused and making use of guns in public, nothing seems to have changed, but the federal oversight does provide some relief to the residents who are tired and scared of the police.

The case of George Floyd (State of Minnesota vs. Derek Michael Chauvin (2021)) being restrained for nine long minutes by Officer Chauvin when he possessed no such threat or means to escape, which ultimately led to his death, just proved how the Minnesota Police’s functioning needed to be improved to prevent such incidents from happening again. It is important to ensure the safety of the residents. Such a measure had to be taken. No amount of change can reverse the loss caused to society by such unreasonable actions, but such unreasonable actions can be taken as learning in order to prevent such incidents from happening in the future.

The most shocking part of domestic violence can be found in its loopholes. The same was the case in the state of Ohio. While the state of Ohio bans domestic violence as per their law, it exempts the accused from any liability if they successfully prove that it was done under the influence of drugs or other substances that made it difficult for them to comprehend their actions and impaired them. Ohio seeks to remove such an exemption, as it is being used as an exception in most cases of such reports. 

History of sex offenses and crimes involving force, fear, and physical restraint

History of sexual offenses against women

Rape as a sexual offense 

The first wave 

In the early years of evolution, much before the 1700s, women in the United States were suffering from a constant state of helplessness. They were forced to fit into patriarchal society, not having any identity as individuals and having no say in many matters. They were to keep their mouths shut and act as per their male guardians, who were their fathers in the instance of a young unmarried woman and after marriage. By the late 1700s, the women had gathered, and this turned into a movement for them to fight against such helplessness.

This movement highlighted the need for women to be treated as individuals and given the same status as men.

One of the key points raised in this movement was that women were the property of their husbands and fathers. Rape was a crime related to property; the same can be understood as per its Latin root, which means “to seize” or “to steal”. This meant the rape of a woman was done against their husbands/fathers due to women being their husbands/fathers property. The same applied to the common law that existed in the United States. The United States combined the Code of Hammurabi, as per which there awaits the punishment of death on those individuals who force sex on another man’s wife or virgin woman that stays at her father’s house,” and the Law of the English 1600s, which defined rape again as an act of carnal knowledge inflicted on any woman who is at least above the age of ten years that is done against her wishes. The very first common rape law combined law on rape only talked about rape on women when a man knows her not to be his wife, thus allowing for rape against her wishes, which is still not addressed enough now. 

The Seneca Falls Convention, held in 1848, was the first of its kind and addressed women’s rights in addition to several other problems, including the problem of slavery and racial discrimination at that time. This movement helped to bring more attention to people, as there was continued resistance by men. With huge participation from women at the convention, the Declaration of Sentiments was passed in hopes of further solidifying and spreading the movement. The movement was later held again in New York to address a larger number of individuals who shared the same views and hoped to employ more individuals in their plans.

The second wave

The second wave can be marked by the start of the era in 1950. Women got great support from each other and reached greater heights. In 1970, there began the anti-rape movement. As women went on to champion their causes in support of different rights, rape was no  exception. Women began speaking openly about rape in hopes of preventing such atrocities from happening to them. This helped them advocate and push forward for their rights and the protection of their dignity. As several victims and survivors stepped forward and spoke out, more helplines were established, and conferences (like Seneca, Women’s Anti-Rape Coalition, to name a few) were held on anti-rape in order to educate the masses on it.

Sodomy as a sexual offense

Sodomy can be defined as “intercourse or any sexual act of oral or anal nature.” It aimed to punish sexual acts of oral nature and hence brought “oral” under the scope of the definition.

In the 19th century, legal provisions on sodomy had very generic definitions laid down by the Courts of the United States, namely, sodomy is the act of penetration of penis of a man inside the rectum of another man, or a boy, or a woman, or a girl or an animal”. The laws on sodomy in the 19th century focused on protecting the weak against any sexual assault or sexual offense against them but ended up being used for the punishment of homosexual sodomy, which was not their intent. The laws on sodomy also focused on punishing those sexual acts and offenses that occurred without consent.

With the emergence of the 20th century, sodomy laws expanded the scope of their meaning by including sexual acts of men with other men in public places and also such sexual acts against minors.

Domestic violence as a sexual offense

Domestic violence as a crime has undergone several changes over the decades. Before the 19th century, this was not even recognized as a crime and was treated as the norm. Women, being property of their husbands after their marriage, were subject to such physical and mental harm and continued to do so until this was raised as a crime at the end of the 19th century. As Massachusetts and Alabama were the only two states that penalized domestic violence, this became an important point for change, and several debates and opinions were exchanged between women, men and scholars.

Domestic violence as a sexual offense gained legal protection with acts being passed in the years 1994, 2000, and 2005 in order to punish those engaged in such acts. It is important to note that the term domestic violence was first coined and used in 1973 by Jack Ashley in the United Kingdom, and as a topic, it was often kept quiet for discussion and not openly talked about. 

As victims began to openly talk about it, reforms took place. Several discussions were held on how to address it and help such victims get back into society. Safe spaces were created for victims. Victims were urged to openly talk about it with their close ones or psychologists and seek help. Victims also had the option to seek legal remedies. 

History of crimes involving force

Use of force by police 

It has become evident in recent times that there has been an increase in the use of force by police to enforce the law and maintain law and order. It all started in the 1960s and beginning of the 1970s, when there began an increase in the number of different departments amongst the police, including Special Weapons and Tactics (SWAT) forces, which acted as paramilitary units. Over the decades, these numbers grew along with the funding.

The problem with such forces is that they invoke a very dangerous mindset among those living that all zones could become war zones. These forces tend to make it dangerous to deal with civilians. It creates the impression that they step into a place of conflict with the mindset of a person in the military. This might escalate the situation even further, and there are high chances that excessive force may be employed in such matters. 

Regardless of the training for the mind and body of the paramilitary forces, the issue with employing or even increasing such forces is that it is not always a proportionate and appropriate measure to send out such forces to deal with the issue. There might always be a chance that the person they hope to apprehend by employing such paramilitary forces might not be such a threat to society.

Miami in the 1850s -1960s

One such example is the state of Miami. Miami began having police offices in 1850. With a growing population, the concerns and demands for safety and the maintenance of peace and order grew as well. There were also several reported grievances about corruption in the department. After a few decades, in the 1960s, the policy of using force to make arrests was authorized. Even though there were only certain instances as per the policy wherein the use of force would be legal and justified, it showcased the growing inclination of the police force towards aiming to become driven by the use of force. In addition to this, instances where there has been use of force should be supported by a report that contains all the important details of the incident. However, this was not strictly followed. The police continued to use force without justifying their actions, which definitely instilled fear in the minds of the people. 

Miami in the 1960s – 1980s

Subsequently, in 1986, several protests forced the police force of Miami to make changes to their policies. From the 1960s until the 1980s, several changes were made to ensure that the police force would not depend entirely on the policy of using force. In order to appeal to the masses, they also began a huge drive to employ female candidates to truly incline themselves towards making jobs equal for all genders. The police force also addressed the issue of a  lack of people of color in such jobs and provided them with the chance to join them, which helped ensure diversity in such jobs. But all the positive responses fell apart after the killing of Duffie by excessive use of force by police (McDuffie vs. State, 2007). In this case, a white man was beaten to death after he skipped the red light. This showed the residents of color that neither black nor white individuals are safe from the police. And after this, the protests continued, showing no signs of dying down.

Miami in the 1980s – 2000s

In the later part of the 1980s, growing crime, inexperienced number of young officers did not help to provide any relief to the problems before them. The police force finally decided to take important steps (introducing police manuals, standard operating procedures, etc.), which shaped the way the police force functioned in the 1990s and continued to function in the 2000s.

Miami – currently

Police manuals were made that elaborated on the very specific instances wherein apparently “deadly” use of force was made available to them. It also elaborated on other rules, policies, and standard operating procedures (SOP). With the advent of technology came additions to electronic devices and when they could be used by officers. It was time to train police officers properly on how to handle situations to prevent them from escalating further and how they can intervene and deal with the crisis instead of resorting to force. 

Currently, the State of Miami has employed strict measures to ensure that the use of force is the least taken up as a measure to resolve the crisis at hand. In instances where use of force is the only option, the dispatches must be notified, and a conversation with the survivor is later conducted to ascertain the matching of the facts presented before them, as use of force often leads to dire consequences that must be prevented from being taken up. But at the same time, it becomes very difficult to ascertain the police officer’s decision at that moment as it is independently taken up. So training and constant review of policies become the most important steps towards ensuring the police force works safely.

Extortion using force

Extortion existed previously in two forms, that is extortion by using threat, fear, and/or force and extortion of government employed individuals, which is now known as bribery. In bribery, officials of the government often used force to induce others to follow their commands, and they took money for issuing such commands or carrying out such actions. Because of bribery, there was a growth in corruption. Many officials under the influence of money acted away from their specified duties and functions assigned to them or required of them.

History of crimes involving fear

Extortion using fear

Extortion is defined under Section 1951(b)(2) of Title 18 of the United States Code. In the case of extortion, the property of another is obtained with their consent, which is obtained using threat, force, or violence, all of which instill fear in the mind of the one whose property is being obtained. Such consent is not free, and crimes like extortion operate on the element of fear. It becomes very difficult to exactly point out when the crime of extortion actually began. 

Extortion before 1780s

Extortion held a whole other meaning in the past. It is often termed the exchange of property or money for emotional relief. It puts emphasis on emotional relief, i.e., no fear or violence is to be instilled in the mind of another as long as compensation in terms of money or property is provided. However, the term does appear in the 14th century and appears to have been criminalized around that time as well.

Extortion in 1780s to 1820s

Extortion was categorically divided into two different types. Extortion of government serving officials and extortion using fear and/or force. Extortion of government serving officials was prevalent in the past. As for extortion using fear and/or force, the end of the 1700s saw states form their own laws to punish it. New Jersey is one such example, which criminalized it in 1796 (An Act for Regulating the Purchasing of Land from the Indians). Similarly, other states followed suit and criminalized it, like New York in the year 1818 and Rhode Island in the year 1822. 

Extortion in the 1820s 

Extortion in the 1820s became the center of crimes related to terror, and it was all left to law to address this issue. No woman, man or child was free from extortion, as it came as an unfortunate experience to all. With the growing number of threats and fears amongst the members of society, it became evident that only the law could provide the protection that is required at such a crucial moment. Thus, scholars of the legal sphere analyzed the crime and stated that fear was one of the necessary elements to describe extortion.

Extortion in the 1820s to 1840s

During the period of the 1820s to the 1840s, it became evident that it was necessary to codify extortion by including it in the criminal law of the United States, and this can be seen by the statements passed by David Dudley highlighting the fact that the laws do not focus on the point, and that includes the law on extortion. There are references from the French Civil Law by Dudley to codify it, including Bentham’s suggestions (to make the law more specific and address the objective of the crime) on it. It became an important task for the codifiers to identify its objective before they would codify it into laws. Another obstacle in the path of codifying such a law was the common law on it, which explained the relationship between the victim and accused in a complex manner that made it difficult to untangle and understand. Another issue was that the use of the term fear was not accurate, as fear is subjective in nature and all the dimensions of extortion had to be addressed as accurately as possible. 

Extortion post 1840s

Post 1840s extortion observed a paradigm shift in how it was viewed in society. Several debates and discussions took place in addressing all the damage to health, mentally and physically, that took place due to crimes like extortion. The law on extortion has showcased the fact that, with ever changing views and perspectives, it becomes all the more important to formally address such changes. 

This was marked by an article written by Louis Brandesis and Samuel Warren in 1890 titled “Right to Privacy”. This piece highlighted all the debate and discussions on extortion. It also pointed out the lacunae in the law of extortion, stating that it did not work towards providing the right protection for what was required to be protected. The whole piece put forth before the readers the most important point, which is, that the mental pain and mental distress that is caused during extortion are always far greater than any pain that is caused to a person through a bodily injury. Basically, mental distress or mental pain trumps a bodily injury that is inflicted in instances of extortion.

Extortion still has a long way to go. It has to reflect the fears and anxieties of society that are formed whenever it occurs as a crime. It is important to note that the scope and extent of extortion are determined by the scope and extent of a similarly known crime known as robbery, whose history will be discussed in the next paragraph.

Robbery using fear

Robbery is defined under Section 1951(b)(1) of Title 18 of the United States Code. Robbery was one of the earliest recorded crimes in the United States, and its punishment went to the extent of death; such punishment is not available as per current legal provisions. This was marked by the removal of the death penalty for robbery in the year 1786. In the very same year, it was observed that the legal provisions made for the deterrence of crimes, including robbery, were successful in bringing down such reported cases. Subsequently, the death penalty for highway robbery was eliminated in 1839.

Coercion or duress

Coercion and Duress are interchangeably used in the American law system. Coercion or Duress is defined under Section 1591(e)(2) of Title 18 of the United States Code. It refers to any threats, physical restraint, plan or scheme that would force a person to act a certain way under the influence of the one imposing them to do so; if not for doing it, they would be harmed or injured. It can also be simply defined as the use of threats and/or violence, either in express or implied form, that forces a person to act in a certain way in fear of the consequences of not complying with the demands of the accused. What coercion actually does is remove the scope of providing any free consent, or even any consent at all. The accused puts the victim in such a position that the victim has to listen to and comply with the demands of the accused. Under Section 3617 of Title 42 of the United States Code, it is prohibited to coerce any individual. For example, A puts a knife to the throat of B’s child and tells B to hand over all the documents of the building that B owns to A by signing them there. This instance would amount to coercion or duress. 

History of crimes involving physical restraint 

As per the Fifth Amendment to the Constitution of the United States, there can be no unreasonable confinement of any person since it intrudes on their freedom to live and liberty of that whole. Physical restraint is contained under Section 460.114(a)(1) of Title 42 of the Electronic Code of Federal Regulations (e-CFR). 

Sex offenses, assault and battery

Aggravated sexual abuse

Aggravated sexual abuse is defined under Section 2241 of Chapter 109A of Part I of Title 18 of the United States Code. This section elaborately covers how sexual abuse takes place, with whom it takes place, and where it takes place in order to be classified as an aggravated form of sexual abuse in the United States.

Under subsection (a) of this section, if aggravated sexual abuse often goes hand-in-hand with the use of force or the use of threat against the person upon whom it is inflicted in the jurisdiction of the United States, then it would amount to aggravated sexual abuse. 

Under subsection (b) of this section, it would also amount to aggravated sexual abuse if the person used other methods to carry out this sexual abuse by:

• Using any means to make the person with whom they wish to carry out the sexual act unconscious in any manner.
• Using any substance without their permission, consent or knowledge diminishes the victim’s ability to comprehend the situation like they would usually be able to if they were sane, and use this to their advantage to engage in the sexual act with them

Punishment for aggravated sexual abuse

Under subsection (c), any sexual act with those individuals who are under the age of 12 but have not attained the age of 16  or have a difference in age of 4 years with the perpetrator, would be punished as per the provisions in this section. This section punishes those who engage in sexual acts with children of the above mentioned ages who are recognized as children and monitored under law. Subsection (d) specifies that there is no need to prove that the defendant has knowledge that the victim’s age is less than 12 years. The punishment for aggravated sexual abuse is a fine or a prison term, which could extend to any number of years/months or lives. If the Court deems it fit, a fine and imprisonment might both be awarded. In order to make the punishment harsh, states might also prevent the convict from having the option of parole or probation.

Sexual abuse

Sexual abuse is defined under Section 2242 of Chapter 109A of Part I of Title 18 of the United States Code. Under this section, sexual abuse is defined as a sexual act on another person by putting them in a vulnerable position due to a threat to life, injury or fear. It becomes important here to account for the fact that, due to such coercion, threat and fear, they are unable to communicate their willingness or decline such an act. Such an act is punishable all over the territory and jurisdiction of the United States.

Punishment for sexual abuse

If convicted of sexual abuse, they shall face a fine and imprisonment for a period ranging from any number of years to life, whatever the Court deems fit, as per Section 2242. The imprisonment term and fine amount differ from case to case.  

Sexual abuse of a minor or ward

As per Section 2243 of Chapter 109A of Part I of Title 18 of the United States Code, sexual abuse of a minor or ward is criminalized. A minor, in this case, is one who falls under the age category of 12-16 or has a minimum 4 years age difference with the accused. A fine or imprisonment of not more than 15 years, or even both, are awarded on the basis of the facts and circumstances of the case. 

Under subsection (b), any individual who engages in sexual acts with a person whom that individual knows to be in official detention or in any custody, supervision or disciplinary authority of that person would be punished under this section with a fine or not more than 15 years of imprisonment or even both.

Under subsection (c), if the defendant successfully shows that both of them were married, or if the defendant has no reason to believe that the victim is not any less than 16 years of age, then the defendant can successfully escape liability under this section. 

Punishment for sexual abuse of minor or ward

If the person is convicted of sexual abuse of a minor or a ward, they face a fine and a prison term of not more than 15 years, or even both, as per what the Court deems fit in that instance.

Abusive sexual contact 

As per Section 2244 of Chapter 109A of Part I of Title 18 of the United States Code, sexual contact with or by another person is punishable 

Punishment for abusive sexual contact. 

Abusive sexual contact refers to those acts that could lead up to a sexual offense or sexual act and hence are punishable. 

The punishment for sexual conduct in different sections can be summed up as follows:

• Section 2241(a) or (b) – A fine or a prison term of not more than 10 years, or both, as per what the court deems fit.
• Section 2242 – A fine or a prison term of not more than 3 years, or both, as per what the court deems fit.
• Section 2243(a) – A fine or a prison term of not more than 2 years, or both, as per what the court deems fit.
• Section 2243(b) – A fine or a prison term of not more than 2 years, or both, as per what the court deems fit.
• Section 2241 (c) – A fine or a prison term of any years to life imprisonment or both as per what the court deems fit.
• Section 2243 (c) – A fine or a prison term of not more than 2 years, or both, as per what the court deems fit.
• In cases where it involves any special jurisdiction, which may be maritime, territorial or any other institute, facility or prison, then a fine or a prison term of not more than 10 years or both as per what the Court deems fit.
• In cases where such an act is carried out by the individual on a child who has not reached the age of 12 years, a harsh punishment is given, that is, the maximum term that is possible to be given is doubled and given as the final prison term.

Murder after inflicting offense (including sexual offense) leading to death

As per Section 2245 of Chapter 109A of Part I of Title 18 of the United States Code, any person who commits the offenses elaborated under this act, namely Section – 1591, 2251, 2251A, 2260, 2421, 2422, 2423, and 2425 (definitions for Chapter 109A are contained under Section 2246) and murders the victim, they would be charged under this section with capital punishment or imprisonment for any term or for life.

Punishment after inflicting offense (including sexual offense) leading to death

In instances where, after inflicting an offense (including a sexual offense), the victim is either murdered or killed,  the Court has the capacity to award a capital punishment or a prison term ranging from any number of years to life imprisonment.

Assault

Assault is dealt with under Section 111 to Section 119 of  Chapter 7 of Part I of Title 18 of the United States Code. While many legal provisions deal with assault and battery, the United States deals with assault and battery under one term called assault, of which battery forms a part. Assault can be tried under criminal law or tort law. For the purposes of discussing criminal offenses, we will restrict ourselves to criminal law. 

Assault simply refers to any action that presumably inflicts fear or harm on another person and is ordinarily wrong. Assault is often used in place of battery, or it can mean both simultaneously as well. Whereas sometimes it is simultaneously referred to as assault and battery. Assault can also occur in aggravated form, and the aggravated form of assault is simply called aggravated assault.

The essential components of assault can be summed up as follows:

• Intention – The presence of mens rea becomes important to prove assault. Assault cannot occur accidentally. 
• The victim must have some reasonable foresight that the actions of the accused are likely to cause harm or put them in imminent danger. Here, it is not necessary for there to be any fear, but the foresight of the dangers and consequences of actions harming the victim must be visible to some extent. 
• The actions of the accused must have been such as to cause injury, harm or danger. A simple brush of fingers against the shoulders would not amount to this.

There are three important stages of assault that can help determine whether any assault has occurred or not. They are as follows:

• The accused acts in a certain manner.
• The action of the accused in a certain manner leads the victim to comprehend what might happen to him or her.
• Due to the victim’s comprehension and foresight, the victim acts in a manner to prevent contact with such impending harm.

For example, B pulls out the chair that A was intending to sit on. This would be an instance of battery.

Punishment for assault

The punishments for acts defined under Section 111(a) are as follows

As per general provisions- A fine or prison term of not more than 8 years, or both, may be awarded as per what the Court deems fit.

Enhanced penalty – If the case involves dangerous weapons that can cause death or injury or lead to a dangerous situation, a fine or prison term of not more than 20 years, or both, may be awarded as per what the Court deems fit.

Battery

Battery is the actual action that causes harm to another person physically. It is simply defined as a tortious act done with the intention to cause harm or offend a person. If the other person provides their consent for such acts, then it would not amount to battery as they have explicitly provided their consent. For example, any person who has given their consent to play soccer with another person. They cannot sue the other person for battery in case they get hurt in the process of both of them playing. The intention or mens rea must be of an offensive nature, that is, to cause harm or injury due to such actions.

Battery can go to the extent of causing physical disability or permanent injury in certain cases. If the battery is harmful, then it would end up causing any physical harm or injury, but a battery of an offensive nature ends up causing mental harm by making the victim feel threatened. The connection between assault and battery can simply be summed up as assault is the act of causing fear or harm to another, and the attempted battery would amount to assault. 

The essential components of a battery can be summed up as follows:

• Acts of the accused.
• The intention of the accused is to engage in contact with the victim.
• Such contact can be categorized as dangerous and offensive.
• The result of such contact is dangerous or offensive and is either in the form of injury fear or something else more permanent.

For example, A swings his bat at B and threatens that if B does not hand him over the documents, he will have another go at it and won’t miss this time. This instance would amount to assault. 

Punishment for battery

The punishment for cases of battery ranges from 30 days in prison to lifetime imprisonment, depending on the severity of the case and what the court deems fit. 

Domestic violence and stalking

Image source: Unsplash

Domestic violence 

Domestic violence is a recently recognized crime. Domestic violence is also referred to as spousal rape. It is the criminal act of a felony, misdemeanor, sexual offense or any violent crime against your spouse, a partner or a person cohabiting with you as a spouse or partner. It is defined under Section 12291(a)(8) of the Violence Against Women Act (VAWA). Domestic violence includes crimes that are punishable with not more than 12 months, that is, 1 year of prison term, if charges are proven successful. California has its own separate section elaborating on what would be classified as domestic violence. It can be found under Section 13700 of the California Penal Code.

Provisions for domestic violence 

Violence Against Women Acts (1994)

The Violence Against Women Act (1994), also known as VAWA, was formulated in 1994 and reauthorized in 2000 and again in 2005. This Act provides the definitions of many sexual offenses like domestic violence, sexual assault, stalking, etc. The sole purpose of this Act is to prosecute the crimes defined under it. This act punishes those who are successfully proven guilty of violent crimes like spousal rape and sexual abuse, among others.

Family Violence Prevention and Services Act (1984)

In addition to this, to ensure post-abuse protection and help, the Family Violence Prevention and Services Act (1984), also known as FVPSA, has been formulated. This Act provides the necessary help and support. It provides crisis aversion by holding sessions on measures one can take to prevent violence in a household; it also helps victims and collects donations (from the public) and funds (from the federal government) to support those in need. It also handles a round the clock telephone that is open to call for those in need and provides support in multiple languages if required or sought.

The Domestic Violence Prevention Enhancement and Leadership

The Domestic Violence Prevention Enhancement and Leadership through Alliances, also known as DELTA, analyzes the factors that could lead up to an instance of domestic violence and works on such factors. These factors could range from the nature of the relationship to other external factors like the community and society as well. The objective of the DELTA program is to reduce the number of reported cases of domestic violence and better understand it by addressing it effectively. 

Stalking

Stalking is elaborately defined under Section 2261A of Title 18 of the United States Code. Stalking can simply be defined as the aggressive pursuit of a person(s) towards a particular individual that is not required by that very individual. It is generally an act that is accompanied by intention. Every State in the United States has prohibited the act of stalking and penalized anyone who does so. Stalking can lead to other violent acts and aggravated offenses; therefore, it becomes essential for the law to penalize it.

The problem with stalking as a crime is that even though the victim is facing instances of stalking, it becomes very difficult to assess the stalker’s intentions, and if they have plans to further escalate the situation, it puts the victim in a dangerous and vulnerable position at all times.

It also becomes very difficult to prove cases of stalking, as they are often based on the observations, feelings and statements of the victim. At times, the stalker may make use of electronic means like email, phone calls, messages, videos, etc., which is referred to as cyberstalking, to portray an interest in the victim.

Before stalking became a crime punishable under the criminal law, instances of stalking were just awarded a restraining order. A restraining order acts as a measure of protection that prevents the accused from coming into contact with the victim or orders them to maintain a certain distance. But this continued dangerous encounter with the victims, and hence criminalizing it, allows the police to arrest such cases and provide the necessary protection to the victims.

Punishment for stalking

If found guilty of charges of stalking, one could face a prison term of five years and/or a fine, which depends on the severity of the crime committed and the Court’s verdict as it deems fit for the case.

Kidnapping and false imprisonment 

Kidnapping under the protection of international law

Kidnapping is a crime in which a person is taken away without their will to another place or location and placed in false imprisonment, restraint, or confinement to prevent their escape from there. The provisions for kidnapping are elaborated under Section 1201 of Title 18 of the United States Code. 

There can be many reasons for kidnapping, some of which are as follows:

• For monetary benefit by demanding ransom money in exchange for kidnapped individuals.
• To engage such kidnapped individuals in organ trafficking or sex trafficking.
• For hostage exchange.
• For inducing threat, coercion or duress.

Kidnapping becomes a federal crime instead of a state crime in the following instances:

• The victim’s location involves crossing a state or entering a foreign state.
• If the offender’s location changes by crossing state lines or entering a foreign boundary.
• If the offender makes use of any instrument of another state or a foreign state.
• If the victim holds the status of foreign official, is under international protection at international level, arrived in the United States as an official guest, or is an officer/employee of the United States.
• If such kidnapping occurs in special maritime or territorial jurisdiction or special aircraft jurisdiction of the United States.

Punishment for kidnapping

If the charges of kidnapping or attempted kidnapping are proven, then the convict may face a prison term of up to 20 years or life imprisonment. 

False imprisonment

False imprisonment is the act in which one person imprisons another person in a closed space and thus interferes with their liberty and ability to move around. False imprisonment is defined under Section 11.404 of Title 25 of the Electronic Code of Federal Regulations (e-CFR). The essential factors in false imprisonment are as follows:

• Lack of consent
• Wilful imprisonment
• Absence of authority of law

In the case of Serra vs. Lappin, 600 F.3d 1191 (2010), it was elaborately discussed that regardless of the time of confinement, it is an act done without consent, law and done with the intention to infringe the liberty of the person. 

In the case of U.S. vs. McMiller, 376 F. App’x 199 (2010), that law of the state of Georgia included a precondition like a serious potential risk of physical injury, making it an enhanced crime. 

In the case of Ameen vs. Merck & Co., 226 Fed. Appx. 363 (2007), the Court highlighted that to induce such confinement, there might be the use of threat, coercion, duress, harm, injury, etc., but not limited to the same.

In the case of Forgie-Buccioni vs. Hannaford Bros., Inc., 413 F.3d 175 (2005), the Court discussed the process in which the act of false imprisonment occurs and how it is effectuated by the act of the defendant. Such an act by the defendant can be carried out by using physical or mental obstacles like fear, and thus it would amount to false imprisonment. Even though the defendant does not have the authority or power by law to do so, he carries out such an act intentionally. 

Defenses available under false imprisonment

Consent given voluntarily

If a person gives their free consent to such confinement or imprisonment, then the person giving such free consent cannot claim false imprisonment. This becomes a defense for the defendant to claim.

For example, A gives his free consent to B, allowing B to confine A in an isolated room. This would not amount to false imprisonment, as lack of consent is an essential element of false imprisonment.

Privilege of police

The police have the right to detain those individuals who they have probable reason to believe are engaging themselves in any wrongdoings or if they have probable reason to believe that individual has committed a crime. 

Privileges of shopkeeper

The shopkeepers have the right to protect their shops from any theft that might occur. In the exercise of such a right, they may detain any individual who appears to have stolen goods from their shop in order to cross-check if they have truly purchased them and continue to detain such a person till the police or any other authority arrives. However, such detention must be reasonable, and if it is unreasonable, the accused shoplifter has the option to sue for unreasonable false imprisonment. 

Arrest of citizen

A citizen who is not an official of law enforcement can arrest an individual and call for such authority if the apparent crime has been committed before them. But this does not imply that the citizen holds the place of an official of law enforcement; rather, they are providing the necessary help to such authorities and officials. 

Punishment for false imprisonment

If the charges for false imprisonment are proved against the defendant, they may face prison term of 10 years or more as per what the Court deems fit in that instance

Important case laws

Lawrence vs. Texas (2003)

Facts of the case

In Lawrence vs. Texas, 539 U.S. 558 (2003), John, Tyrone and Robert were together on an evening. A fight erupted between them, due to which Robert angrily left the apartment where they were spending the evening. Soon after, the sheriff received a phone call about disturbances at that apartment, so he arrived at the scene. After there was no response, they entered the place, only to find that John and Tyrone were involved in sex. They were both apprehended for not complying with the laws of Texas on sodomy, which penalized any sexual act with a person of the same gender. 

Issues involved in the case 

First stage of the court hearing: 

Issues at the first stage of Court hearing: There were several issues raised before the Court and they can be summed up as follows,

• Is the Texas sodomy law legal?
• Has there been a violation of Texas sodomy law?

In the initial Court hearings, the Court was overburdened. Many were of the view that the United States was targeting gays and their community openly. John and Tyrone admitted all the charges except their guilt in engaging in such an act, which they considered intimate, and the state had no right to intrude upon and dictate upon it. 

Second stage of the court hearing: 

Issues at the second stage of Court hearing: The following issues were raised in the second stage of Court hearings at the Supreme Court,

• As per the Due Process Clause of the Fourteenth Amendment, are the petitioners free to engage in their own private affairs and acts?
• Is the Texas sodomy law targeting couples of same sex?

Judgment of the Court

All such laws related to the Texas law of sodomy, including it, were ultimately struck down by the Court. It mentioned that the judgment given in Bowers vs. Hardwick (1986) was incorrect and overruled by the Supreme Court of the United States. 

This case helped the courts work towards laws that do not intervene in the fundamental rights of individuals, namely privacy and any such regulation would be unconstitutional. 

U.S. vs. Gonzalez (1999) 

Facts of the case

In the case of United States vs. Gonzalez, 183 F.3d 1315 (1999), Gonzalez, along with other people, planned to obtain cocaine. This cocaine obtained would be used to establish their business of sale and distribution of it. In order to carry out this business, they obtained guns and other weapons. Gonzalez did not even care about the victims and conducted his business in their presence. Often restraining the victims mentally in order to prevent them from reporting this crime, he did so by holding them at gunpoint, which made them fear for their safety, and they would not do anything suspicious and listen to him. Due to the work of an informant, the police forces and other departments involved were able to successfully catch them and also recover many items they had discarded during the time they were being chased.

Issues involved in the case

Issues that were raised in the case:

• Would no clear appearance of physical restraint amount to physical restraint at all?
• Due to the absence of an attorney, would the police interrogation amount to violation of Sixth Amendment?
• Whether the charges levied against all three defendants are sufficient and are presented with sufficient evidence in support of the same?

Judgment of the Court

The United States Court of Appeals held the defendants guilty of most of the charges and sentenced them to prison and a fine in addition to their prison term. The Court laid great emphasis on understanding the meaning of physical restraint and whether it would apply to this case as there was no visible physical restraint here. The Court assessed the guidelines laid down under the United States Sentencing Commission Guidelines. Upon their analysis, they decided to adopt a broader definition of physical restraint to ensure its scope was covered. That means that anything that prevents a person from making any physical movement would amount to physical restraint. Physical restraint does not have to be hands cuffed using handcuffs, hands and legs tied up with ropes, or a gag in the mouth. And thus, in this case, there has been physical restraint inflicted on the victims by restraining them at gunpoint.

People vs. Brown (2011) 

Facts of the case

In the case of People vs. Brown, 192 Cal.App.4th 1222, 121 Cal. Rptr. 3d 828 (Cal. Ct. App. 2011), Bridget was in a relationship with the defendant (Brown). She was much smaller in size as compared to the defendant, who was already trained in martial arts. One day, during an altercation, the defendant choked her. Bridget confided this to her workplace friend, Ibarra and showed the remnant marks on her neck to her as well. After a few days, Ibarra saw Bridget at the mall with the defendant, but she looked visibly disturbed and did not wave back at her. Bridget broke up with the defendant and got into another relationship, and during the time she was with her new boyfriend, the defendant arrived and questioned her. They talked, and then he left, only to end up following her current boyfriend at that time. Bridget confided in others that she was worried as the defendant threatened to harm her and whomever she would get into a relationship with. One day she talked to the defendant on the phone after noticing several instances where he had followed her. She left the house, so her disappearance was reported. 

Issues involved in the case

Issues in the case:

• Whether the defendant’s previous acts of domestic violence in previous relationships are to be considered or not.
• Whether the defendant is guilty of the murder of Bridget and if it is connected to domestic violence against Bridget or not.

Judgment of the Court

The Court of Appeal of California held that the instances of domestic violence in previous relationships are admissible as evidence in addition to the evidence of domestic violence against Bridget in order to prove the arguments of the prosecution, as they are all relevant. The Court turned to Section 1109(d)(3) to establish the remoteness and connection of the domestic violence to the murder, and he was convicted of murder.

State vs. Holbach (2009) 

Facts of the case

In the case of State vs. Holbach (2009), Holbach, the defendant, appealed against an order issued to him. The order directed the defendant to stay 500 feet away from Dixon and avoid any contact with her. He was convicted of stalking Dixon and is now on probation under supervision. A month after his probation began, Dixon observed the defendant on multiple occasions at the different locations she was at. There were multiple signs that showed he was closely following her, including stopping the car whenever she stops her car, clicking pictures of her, parking near the routes she often takes, pulling up before her, etc. to grab her attention and scare her even further. A restraining order was issued, which he appealed, after which the probation on supervision was revoked and he went to jail since he did not maintain the required distance from the victim. After his release, Dixon noticed his continued habits, which resulted in his jail time. He was again charged with stalking, along with other charges.  He appealed, stating that this interferes with his right to travel and engage in his daily activities, which he is protected to carry out legitimately and as per the constitution. 

Issues involved in the case

Whether constitutional rights are curbed by the probationary terms issued to the defendant?

Judgment of the Court

In this case, the Supreme Court of North Dakota recognized Holbach’s right to carry out constitutionally valid activities that are part of his daily activities. However, these activities are restricted and curbed due to the terms and conditions of his probationary orders issued by the Court. The Court observed that on multiple occasions, even on being charged, he failed to comply with judicial orders, probation orders, restraining orders, etc. And therefore, the Court sees no reason as to how it could restrict his right to travel. If such activities allow his engagement in stalking, etc., which is prohibited by the Court, then it would not be constitutionally valid in any manner. The Court also observed that the defendant knowingly engaged in such activities to scare and engage with the victim further.

United States vs. Rodriguez-Moreno (1999)

Facts of the case

In the case of United States vs. Rodriguez-Moreno, 526 U.S. 275 (1999), Moreno, the defendant, was hired by a drug distributor to track down another person, also a drug dealer, who had stolen drugs from one of the distributors while holding the middleman in captivity. The defendant traveled across several states, unable to locate the person, and threatened to kill off the middleman using a revolver he had with him. The middleman luckily escaped from such a dangerous situation and reached out to police authorities. The defendant was arrested, but he denied charges as the Government had yet to prove all charges, including the use of firearms.

Issues involved in the case

The connection of firearms to crime or violence is only in the place where they were used and/or carried or not.

Judgment of the Court 

In this case, the United States Supreme Court held that the situation of kidnapping comes to an end when the victim is free and back to safety from the clutches of the kidnapper, as it would be wrong to state that it is determined by geographic locations only. Also, the use of firearms in one location only does not matter; the kidnapping continued across states, and thus he shall be charged accordingly.

Ernesto Guarro, Appellant, vs. United States of America, Appellee (1956)

Facts of the case

In the case of Guarro vs. United States of America, 237 F.2d 578 (1956), the appellant, Guarro, assaulted a police officer. The defendant was out of the theater and standing on the balcony. As he was returning from the balcony to the floorway through the staircase, he leaned on the wall for a few seconds. During the time he was on the staircase he was approached by the appellant. The appellant questioned him for waiting there and not watching the movie. And after giving him a reply, the appellant reached out his hand and put it on the defendant’s private parts. The appellant then went on to ask the shocked defendant whether he wanted to commit an act of a pervasive nature. The defendant agreed, then identified himself before the appellant and put him under arrest.  

Issues involved in the case

• Whether free consent would amount to assault and/or battery?
• Whether the arrest is justified?

Judgment of the Court

The Court of Appeals for the District of Columbia Circuit held that there is no issue as to the fact that assault and/or battery occur without consent. In this case, the presence of free consent constitutes the fact that the case cannot be categorized under assault or battery. Thus, this defeats the entire intent of the prosecution. Additionally, the arrest due to assault is also defeated for this reason.

McMartin vs. Children’s Institute International (1989)

Facts of the case

In the case of McMartin vs. Children’s Institute International, 212 Cal.App.3d 1393, 261 Cal. Rptr. 437 (Cal. Ct. App. 1989), one day the Department of Police received a call. A mother of 2 year old Billy brought some serious allegations against Ray Buckey, a worker at McMartin Preschool. She accused him of sexually abusing her son. An investigation was launched, but it was stopped due to the lack of evidence to support such claims. Parents were asked to examine their children for any marks and were urged to reach out to the police. It was reported on the news that the preschool was apparently used for child pornography and carrying out rituals. Children were scared off and told not to tell anyone about this. While the trial continued, Judy, the mother of Billy, who brought these charges, was diagnosed with a mental illness called paranoid schizophrenia. 

Issues involved in the case

• Whether such abuse truly took place by Ray?
• Whether such abuse truly took place on the premises of the preschool?

Judgment of the Court

The Court of Appeal of California, after conducting several interviews with the children and their investigations on the premises of the school, found the claims to be false. Judy’s diagnosis of mental illness further substantiated such claims. Ray and his mother were later freed on bail and then acquitted of all the charges they were facing in court.

Conclusion

The criminal law system in the United States aims to deter the prevalence of crime by simply using punishment and fines. The criminal law system of the United States focuses on the innocence of the accused until he/she is proven guilty of all charges. The prosecution usually occurs against the entire State or Federation because it is a crime against the entire society. If the charges are proven successful, the punishment awarded may be a simple prison term or may extend up to life imprisonment, and in the most extreme cases, capital punishment may be awarded.

The American criminal justice system has created an intricate network of working. It stands to protect the rights of the individuals using this very system they have created. At the same time, they hold high regard for the saying “innocent until proven guilty”. Even though the criminal justice system is overwhelmed by such intricacies, it continues to hold on to the fact that the accused must be proven guilty beyond any reasonable doubt, which could question such charges. 

Frequently Asked Questions (FAQs)

What are the sexual offenses recognized as per law in the United States?

Sexual offenses like rape, sexual assault of majors and minors; distribution of obscene matter are defined in Sections 120 to 120c of Subtitle A of Part II of Chapter 47 of Subchapter X of Title 10 of the United States Code. Other such offenses like aggravated sexual abuse; sexual abuse of minors, wards, and those in defense; abusive sexual contact, and genital mutilation of females are defined under Chapter 109A of Title 18 of the United States Code.

What are the crimes involving force recognized by law in the United States?

Crimes like murder, rape, robbery, aggravated assault, use of force by police, extortion and robbery are some of the crimes that use force in the United States. 

What are the crimes involving fear recognized by law in the United States?

Most crimes in the United States have an element of fear in it, be it sexual offenses like rape or sodomy or other offeses like murder, homicide, robbery, extortion, etc. 

What are the crimes involving physical restraint recognized by law in the United States?

Crimes that involve physical restraint include false imprisonment, kidnapping, and other offenses that can also be tied to them in order to carry them out. 

References 

• https://biz.libretexts.org/Bookshelves/Criminal_Law/Introduction_to_Criminal_Law/10%3A_Sex_Offenses_and_Crimes_Involving_Force_Fear_and_Physical_Restraint 
• https://saylordotorg.github.io/text_criminal-law/s14-sex-offenses-and-crimes-involv.html 
• https://2012books.lardbucket.org/books/introduction-to-criminal-law/s14-01-sex-offenses.html 
• https://www.justice.gov/crt/statutes-enforced-criminal-section
• https://opencasebook.org/casebooks/2409-criminal-law-simons-volume-iii/resources/6.1.2-a-brief-history-of-rape-law-reform/
• https://scholarship.law.upenn.edu/cgi/viewcontent.cgi?article=3659&context=penn_law_review 
• https://sites.williams.edu/engl113-f18/flagler/a-brief-history-of-rape-law/
• https://resourcesharingproject.org/resources/a-brief-history-of-the-anti-rape-movement/ 
• https://www.history.com/topics/womens-history/seneca-falls-convention
• https://ualr.edu/socialchange/2018/04/15/reflection-history-sexual-assault-laws-united-states/ 
• https://supreme.justia.com/cases/federal/us/539/558/ 
• https://www.law.cornell.edu/wex/sodomy
• https://journalofethics.ama-assn.org/article/decriminalization-sodomy-united-states/2014-11 
• https://www.law.cornell.edu/uscode/text/18
• https://www.law.cornell.edu/uscode/text/18/1951 
• https://www.lawcrimehistory.org/journal/Vol.3%20issue2%202013/bonica%20extortion.pdf
• https://www.law.cornell.edu/constitution/fifth_amendment
• https://casetext.com/case/us-v-gonzalez-206  
• https://www.law.cornell.edu/uscode/text/10
• https://www.law.cornell.edu/uscode/text/18/part-I/chapter-109A
• https://www.law.cornell.edu/uscode/text/18 
• https://casetext.com/case/rs-v-bd-of-educ-shenendehowa-cent-sch-dist-1 
• https://www.fris.org/Laws/FedLaws.html
• https://www.law.cornell.edu/wex/assault_and_battery
• https://www.law.cornell.edu/wex/battery 
• https://www.law.cornell.edu/wex/assault 
• https://www.law.cornell.edu/definitions/uscode.php?width=840&height=800&iframe=true&def_id=18-USC-826895778-1007944208&term_occur=999&term_src=
• https://www.findlaw.com/criminal/criminal-charges/what-is-coercion-law.html
• https://www.rudnicklaw.com/blog/history-domestic-violence/ 
• http://www.pacwrc.pitt.edu/Curriculum/310DomesticViolenceIssuesAnIntroductionforChildWelfareProfessionals/Handouts/HO3DomesticViolenceTimeline.pdf
• https://www.law.cornell.edu/wex/domestic_violence   
• https://www.betterhelp.com/advice/domestic-violence/a-history-of-domestic-violence-how-much-have-things-changed/ 
• https://www.law.cornell.edu/uscode/text/18/2261A 
• https://www.cdc.gov/violenceprevention/intimatepartnerviolence/delta/index.html 
• https://freedomandcitizenship.columbia.edu/ipv-history
• https://www.stimmel-law.com/en/articles/stalking-basic-law-and-remedies
• https://www.law.cornell.edu/wex/kidnapping
• https://www.law.cornell.edu/uscode/text/18/1201
• https://www.egattorneys.com/federal-kidnapping 
• https://www.law.cornell.edu/wex/false_imprisonment#:~:text=Overview,classified%20as%20an%20intentional%20tort. 
• https://www.stimmel-law.com/en/articles/false-imprisonment-legal-action 
• Lawrence v. Texas, 539 U.S. 558 (2003)
• U.S. v. Gonzalez, 183 F.3d 1315 (11th Cir. 1999)
• People v. Brown, 192 Cal.App.4th 1222, 121 Cal. Rptr. 3d 828 (Cal. Ct. App. 2011)
• State v. Holbach, 2009 ND 37 (2009)
• United States v. Rodriguez-Moreno, 526 U.S. 275 (1999)
• Ernesto Guarro, Appellant, v. United States of America, Appellee, 237 F.2d 578 (D.C. Cir. 1956)
• McMartin v. Children’s Institute International, 212 Cal.App.3d 1393, 261 Cal. Rptr. 437 (Cal. Ct. App. 1989)
• https://famous-trials.com/mcmartin/902-home
• https://www.pbs.org/wgbh/pages/frontline/shows/innocence/etc/other.html 

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.

This article is written by Shreya Patra of Xavier Law School, Xavier University, Bhubaneshwar. This article broadly covers all aspects of utility patents, including but not limited to what utility patents are, the uses of such utility patents, what are the different types of utility patents, how they differ from patents, the steps to file utility patents in the United States., and the tenure of a utility patent, before ending it with a few notable judgments in the United States 

It has been published by Rachit Garg.

Introduction

Recently, the trading company Moomoo obtained a unique utility patent. Their utility patent allows its users to draw out charts as per their needs and has multiple tools to choose from. It helps users build a proper routine, understand their investment contributions, and understand the stock market better.

Another growing sector contributing to the rise in utility patents is that of equines. From breeding to saddles and other tools, there have been great developments in this industry. The equine industry has quickly evolved to take advantage of the valuable asset that is a utility patent and put it to good use by protecting their inventions, which can be classified under it. Now it becomes important to understand what utility patents are, which we will be discussing elaborately in this article.

Utility patents are an important part of the US patent system. They provide exclusive rights to inventors over their inventions and protect them from infringement. In this article, we will be taking a comprehensive look at utility patents in the US, including what they are, different types of utility patents, examples, requirements to file a Nonprovisional Utility Patent, steps to file a Nonprovisional Utility Patent, how long do they last, benefits of filing a utility patent, tips for filing a utility patent application, and the cost of filing a utility patent application.

The United States Patent and Trademark Office (USPTO) covers three types of applications for patents namely utility patents, design patents, and plant patents. We will be specifically covering utility patents in this article. Before moving on to understand what utility patents are, it is important to keep in mind three factors that are required for patents to be fulfilled and that apply to utility patents as well. The most important factors that determine whether a patent will be granted or not are simply its utility, novelty, and nonobviousness. 

What is a utility patent

A utility patent is a type of patent granted by the US Patent and Trademark Office (USPTO). It gives the inventor exclusive rights over their invention for up to 20 years. The inventor can then prevent other people from making, using, or selling the invention without their permission. Utility patents are granted for any new and useful process, machine, article of manufacture, or composition of matter.

The scope of a utility patent is much broader than that of a design patent, which is limited to the appearance of a product. Utility patents cover the functionality of an invention, including how it works and how it is used. Utility patents also give the inventor the right to sue someone who infringes on their patent rights.

Factors that determine patentability

The first factor for patentability is utility, which refers to the use and practicality of the patent (if granted) in our lives. Under Section 101 of Title 15 of the United States Code, utility refers to its use and purpose in the real world; if no such purpose is served, it would be discarded from being granted a patent.

The second factor for patentability refers to novelty described under Section 102 of Title 35 of the United States Code. It refers to the fact that the patent being granted should show a known resemblance to any prior art.

The third factor for patentability is non-obviousness. Section 103 of Title 35 of the United States Code deals with nonobviousness. According to this Section, any obvious invention would not be granted a patent; it has to be unique and more than just a step up from the current invention or even just an improvement. 

A utility patent, as the name suggests, is centered around an invention’s or creation’s place and use in society. It can be said that it is highly dependent on putting into good explanation the first factor of patentability, that is, use and practicality, well defined under Section 101 of Title 35 of the United States Code. It can be quite simply understood that all utility patents are patents, but not all patents are utility patents; this sets them apart. A utility patent must contain one of the following aspects in order to be recognized as one:

• A new improvement;
• A useful improvement;
• A new and useful process;
• A new and useful machine;
• A new and useful manufacturer; or
• A new and useful composition of matter.

Features of utility patent

Some features of utility patents are:

• Absolute right

A utility patent provides the owner with the absolute right to the process of invention. Protecting the process of the invention becomes important in order to prevent the invention from being taken advantage of commercially and allow the owner to have full and true access to its use and creation.

• Product and process

A utility patent protects two things, the invention and the process of the invention. This allows for overall protection for the inventor’s invention. 

• Low novelty

A utility patent does not necessarily have to be novel, but it has to be novel to some extent. It could be an improvement on something that is already available to consumers. The public domain could already have the invention, and the utility patent could be a slight change to it.

• Marginal improvement

A small improvement allows inventors to claim a utility patent. A utility patent is not required to undergo a great deal of change.

Difference between a utility patent and a patent 

A utility patent is quite simply a patent, but it can be distinguished from other categories of patents as it focuses on the steps, process, or functioning of a patent, which makes it unique in that regard. This step, process, or functioning does not have to be inventive, which is the case for patents. Patents protect the ideas behind the invention or creation, whereas a utility patent protects the process behind such ideas.

Types of utility patents

Utility patents can be divided into three categories: process, machine, and composition of matter. A process patent covers a process or method of doing something, while a machine patent covers a device or machine. A composition of matter patent covers a composition or mixture of components.

Composition utility patent

A composition utility patent refers specifically to a chemical composition or a chemical mixture of different ingredients and compounds. Such composition utility parents are required to list out all the ingredients that have resulted in such a chemical composition, along with the scope of the function this chemical composition performs.

Machine utility patent

A machine utility patent refers to all the machines we use in our day to day activities, like phones and laptops. These machines basically contain several parts that are programmed for movement or allow them to move and help us by making our daily tasks easier.

Process utility patent

A process utility patent is the way in which any activity is carried out. It includes novel ideas, information, and other steps that help ensure a successful outcome for the activity. Process patents can be further divided into two subcategories: product-by-process and method-of-use patents. Product-by-process patents cover the process of making a product, while method-of-use patents cover the process of using a product.

The types of utility patents can be represented as follows:

Utility patent examples

One of the most famous utility patents is for the telephone, which was granted to Alexander Graham Bell in 1876. The patent covered the process of transmitting sound over wires. Another famous utility patent is for the light bulb, which was granted to Thomas Edison in 1880. This patent covered the process of generating and controlling electric light.

Other examples of utility patents include the process for manufacturing semiconductors, the process for producing synthetic rubber, and the process for producing gasoline.

An example of a composition utility patent is Patent Nos. US8822524B2 and US9896668B2, known as Substrate Mimetic Akt Inhibitor, granted to Yale University in 2014 and the University of South Florida in 2018, respectively. The purpose of granting such a utility patent is that both of these patents create a new composition that allows for the detection of several diseases such as ovarian cancer, breast cancer, colon cancer, and thyroid cancer.

An example of a process utility patent is the computer software that is created. Patent No. US20200019892A1. This patent was granted to Airbnb Incorporation in 2022. This patent helps to automatically determine the bookings available on the basis of the bookings that have already been accepted and confirmed. This helps out by filtering the bookings available for the users to book and providing probabilities for the same.

We can understand the difference between a product by process utility patent and a method of use by process utility patent using a simple example. Suppose a new process for producing a product that can be used as a spoon, fork, and knife is created; this would be a product by process utility patent. However, the steps for using this same product as a spoon, fork, and knife would be termed a method of use process utility patent. The method of use process utility patent guides us on how we can either remove or add parts or do anything else to convert the product as per our needs and requirements to make use of it as a multi-functional product.

An example of a machine utility patent is patent no. US79247S1, granted to Lenovo Beijing Limited. This patent is for a machine found and commonly used in all households; a laptop computer. Another example of machine utility patent no. US20220226532A1, granted to Seoul Viosys Co. Ltd., which provides filtered air wherever placed by removing harmful particles like dust, bacteria, etc., is commonly known as air purifiers.

Provisional utility patent

A provisional utility patent application might be the stepping stone to you obtaining your utility patent, but it does not immediately grant the utility patent to you. Once you file a provisional application, you have a period of 12 months available to you. Within this time period, you have to file a provisional application. It is important to note that such an application is not available for design inventions. The applicant should not be under the misconception that if they are granted the provisional utility patent, they will be granted a utility patent at the end. A provisional utility patent only allows you to claim a non-provisional utility patent at a later date.

Non-provisional utility patent

A non-provisional utility patent is issued by the United States Patent and Trademark Office (USPTO). An application for a non-provisional utility patent ultimately provides the applicant with the patent after successfully clearing all the stages in the patent application process. A non-provisional utility patent goes through examination and screening by the examiners at the United States Patent and Trademark Office (USPTO) office. A non-provisional utility patent is the first choice for applicants who wish to protect their utility patents and prevent any infringement or violation of their utility patents.

Requirements to file a non-provisional utility patent

In order to file a nonprovisional utility patent, you must meet certain criteria.

• First, you must be a US citizen or resident. You must also have an invention that is novel, non-obvious, and useful. 
• Your invention must be eligible for patent protection under US patent law.
• Your invention must also be described in detail in the patent application. This includes a description of the invention and how it works, drawings of the invention, and a description of any prior art related to the invention.
• Finally, you must also provide a legal basis for the patent application, such as a claim of priority or originality.

Steps to file a non-provisional utility patent

A non-provisional utility patent application can be filed online on the official website of the United States Patent and Trademark Office (USPTO), or it can also be filed by hand or mail delivered to the official address available on the website. Applicants must keep in mind that if they opt for the non-electronic method, they are levied an additional $400 fee ($200 for small entities as per Section 1.27(a) of the Electronic Code of Federal Regulations and for micro entities as per Section 1.29(a) or (d) of the Electronic Code of Federal Regulations). Usually, applicants apply online on the official platform to avoid such additional costs. 

How to apply

Checklist for non-provisional utility patent applications

• Utility patent application transmittal form

The non-provisional utility patent application transmittal form is an important document that is to contain all the basic details, such as the summary of the invention, the inventors involved in the creation of the invention, etc. This form is also to contain the details related to the assignment of power of attorney to one inventor in the presence of multiple inventors to ease the process. 

• Fee transmittal form

The non-provisional utility patent application is also accompanied by the fee transmittal form. This form contains all the details related to the fee payment. The fee payment is a necessary step you need to carry out in order to obtain your patent. The fees differ from application to application. In the case of filing an application in person or by mail, you are usually levied an additional charge. Such a measure has been taken up by the United States Patent and Trademark Office (USPTO) in order to promote filing applications online.   

• Application data sheet

The application data sheet is another document that is an important part of the application filing process. This document has to contain details about the inventor, the applicant, and the assignee in case they wish to assign the rights to another. It also provides the option of whether they want to keep their application hidden or publish it. This form should be filled out if the patent applicant wishes to assign the rights to the patent to an assignee. The details of the assignee have also been filled out accordingly in the form. Such details also contain the correspondence address for the United States Patent and Trademark Office (USPTO) to send notices and other status updates about the application.

• Small and micro entity status

If the applicant is filing on behalf of any small or micro entity, the applicant may note that there are reductions in certain fees subject to the fact that you qualify to be referred to as such an entity. On successful qualification, you can simply select the entity status in the utility patent application transmittal form, claim a reduction in fees, and submit it accordingly. In order to claim this status, one has to fill out the form called PTO/SB/15A or PTO/SB/15B. 

If the applicant is filling out Form PTO/SB/15A, they have to ensure that they meet the requirements to claim the reduction. The requirements can be listed as follows:

1. Satisfy requirements to be recognized as a small entity;
2. The inventor must not have been named in more than four other non-provisional applications filed before this one in the United States itself;
3. They are entitled to transfer the rights of this micro entity to another micro entity and not any other non-micro entity; and
4. For the year before the application fee is deposited, gross income must not be thrice the median household income, as that would be violation of micro entity status. The applicant can refer to  Section 1.29 of the Electronic Code of Federal Regulations and Section 509.03 of Manual of Patent Examining Procedure for more details and information. 

In case the applicant is filling out Form PTO/SB/15B, they must ensure that they meet the following requirements to avail themselves of the benefit of reduction:

1. Meet the requirements to be referred to as a small entity;
2. The applicant’s employer, who provides the applicant with their income, must fall under higher education institutions as per Section 101(a) under the Higher Education Act of 1965, which can also be found under Section 1001(a) as Title 20 of the United States Code; and
3. They are entitled to provide the rights in form of an assignment, license or transfer to another micro entity but not to any other non-micro entity.

• Specification (find preferred order of specifications here) 

The non-provisional utility patent application must contain the specification. The specifications are basically a collection of documents that help to describe the invention using accurate terms in a crisp manner, as if an expert in the field would be able to understand them. They must only mention things related to its history and usage, and they must not include any irrelevant details.

The elements of a specification are:

1. Invention title

The invention for which the application has been filed has to contain the title. The title cannot refer to any brand or name but must be able to describe the invention technically. It can be anywhere from 2 to 7 words but must not exceed the 500 character limit. If an application data sheet is used, then it should be on the topmost part of the first page of it. The title of the invention has to comprehensively and accurately contain the gist of what the creation is. The inventor may be required to change the title of the invention if it does not satisfy the examiner and examination requirements. You can refer here to find a more detailed list of guidelines to follow. 

2. Cross-reference to related applications

In case the applicant wishes to claim the benefit of a previously filed provisional/non-provisional application for recognition by the United States Patent and Trademark Office (USPTO), they must mention the same in the application data sheet. Such a cross-reference to related applications helps to better understand the invention.

3. Federally sponsored or development research (to be mentioned)

In cases where the invention is made using federally sourced funds, the individual may be required to retain domestic United States patent rights, and this must be stated as a statement at the start of the application. It must be stated that such an application was made with the support of the Federal Government and that this would allow the Federal Government to acquire some of the rights to it. If it isn’t mentioned, then there has to be a statement headed “Government License Rights” specifying the same.

4. Reference to sequence listing

Information about some patents cannot be put on a sheet of paper and at times requires some help electronically.  Then, it may be submitted on a compact disc(s). These compact disc(s) that are submitted can only contain either gene sequencing listings, computer program listings, or tables of information that are more than 50 pages. The specification being provided for the application must mention the compact disc(s), including the number of them and their duplicates, and list them out accordingly.

5. Invention background

The invention’s background is a great way to convey the context of the invention to the examiner. It can contain an explanation of the definition and be worded accordingly. It can include details about the technology and/or subject matter involved in making the invention. It can also refer to other documents specifically, and it can also take ideas from prior art and highlight the problems and refer to them.

6. Invention summary

The summary of the invention should contain a brief and crisp explanation of the invention. The summary should precisely present to the examiner the general idea of the invention. In addition to all this, the summary also contains, in short, the answers to issues with the previous art that were not addressed. The summary can also state the purpose of the invention.

7. Drawings description

The specifications are usually accompanied by drawings to present a clear idea of the invention through visual representation. Each of the drawings that are put in the application must be described. In the case of multiple drawings, which is usually the case, they must be labeled accordingly and described as per the different depictions. 

8. Invention’s comprehensive description

The invention must be described in a detailed manner, including its step-by-step functioning, in order to clearly distinguish it from other inventions and highlight its distinctness and uniqueness. It can use any method of description as long as it is accurate and clear in doing so. If the invention is an improvement of a prior invention, then it should highlight the issues with the prior invention and how this invention is resolving such issues and acting as an improvement. It can skip out on other details and must focus on the factors of improvement.

9. Claim(s) 

The most important benefit of filing the application is to ensure that it gets legal protection. The granting of the patent entitles the applicant to invoke legal protection for the patent, and this is largely dependent on the scope of the claims. The claims cover the areas that the inventor wishes to claim to be an invention and must describe them. A non-provisional utility must contain a minimum of one claim. The claim(s) must be mentioned on a separate sheet, ordered consecutively, and presented in the form of a single sentence to prevent any confusion. The nature of the claims may differ and could be independent, dependent, or limited. If there are dependent claims for the invention, then they must be put together with all other dependent claims. An application is free to contain three individual claims and may extend up to 20 claims in total, with no additional fees being levied on the application. 

10. Abstract of disclosure

The abstract is the opening, i.e., the introduction to the invention. It contains an explanation of the invention in the form of a narration, is usually just a single paragraph, and is usually limited to just being as short as 150 words. The abstract provides the United States Patent and Trademark Office (USPTO) and the public with a glimpse into the technicalities of the invention.

• Drawings

All patent applications are to be supported with drawings of the invention in order to get a visual understanding of the invention. The drawings must focus on the salient elements of the invention and show all aspects of the invention. The drawing should be provided at the time of filing and cannot be added later after the application has been filed. The drawing must help give the examiner a clear idea of how the invention would look and function. 

• The inventor’s oath or declaration

The inventor’s oath or declaration is contained under Section 115 of Title 35 of the United States Code, and under Section 1.63 of the Electronic Code of Federal Regulations the inventor’s Oath or Declaration is taken by the inventor, who states that they are the original or joint original inventor, whatever the case may be, and that they accept any punishment laid down under Section 1001 of Title 18 of the United States Code. The punishments under the above mentioned Section include imprisonment of up to 5 years, a fine, or, in some cases, both, in the event that any fraudulent statements are made in the declaration. The declaration must contain only the truth. The declaration is used instead of an oath. The oath is usually taken by the inventor before an officer has the authority to administer it or in the presence of a notary’s officer, depending on either’s availability for this process. An oath differs from a declaration as a declaration requires no notarization or witness, and therefore it is usually taken up by most applicants as there are no additional processes to obtain it.

The oath or declaration must contain the name of the inventor, without whom it cannot be taken or even signed, which is required to certify the process. In the absence of an Application Data Sheet (ADS), mailing address, inventor’s residence, and other details are required to be included in the oath or declaration. In form PTO/AIA/01, one can find the utility application declaration for use with the application data sheet.

In cases where the inventor cannot provide an oath or declaration in English because they do not have understanding of it, they may take the oath or declaration in the language of their understanding and knowledge. After doing so, they are required to attach a translated copy of whatever they have said as an oath or declaration in English. This must be done if they are not using a United States Patent and Trademark Office (USPTO) translation form, which has an English translation available for all applicants to use.

The oath or declaration that is taken by the inventor is invalid unless and until it is signed by the inventor. But in certain cases, instead of the inventor, a substitute may sign the application. The cases in which this may be allowed are as follows:

• The inventor refuses to sign the oath or declaration;
• The inventor cannot be found after several efforts to sign the oath or declaration;
• The inventor cannot be reached after several efforts to sign the oath or declaration;
• The inventor is deceased, making it impossible to get the oath or declaration signed; or
• The inventor, who is required to sign the oath or declaration, is incapacitated. 

In such cases, a substitute statement has to be filed along with the oath or declaration of the inventor, and this must be signed by the applicant. 

In the case of multiple owners of patents, i.e., joint inventors, it is not possible to have all of them sign or keep track of all correspondences between all of them. In that case, Form PTO/AIA/81 is filed. This form allows all the joint inventors to appoint a single person using power of attorney to file the application on their behalf. In order to do so, a signature is required by all the joint inventors, including the one being appointed by them. This signature acts as their consent to this process being carried out. After getting all the signatures, the inventor being appointed through power of attorney is empowered to sign all the correspondence addressed to them on behalf of all of the inventors, and all of them are not required to sign anymore. However, if no such representative inventor is appointed amongst the joint inventors, then in that case, all of the joint inventors, whatever the number may be, have to sign the patent application correspondence that is being filed at the United States Patent and Trademark Office (USPTO). 

Filing the application (online/offline)

The process for filing a nonprovisional utility patent is relatively straightforward. The first step is to prepare a patent application. This includes a detailed description of the invention, drawings of the invention, and prior art related to the invention. In addition to this, while  submitting the non-provisional utility patent application, we have to ensure that it is in English only; if it is presented in any other language, it should be supplemented by a translation that has to provide an accurate translation of all the facts stated in the local language to prevent any discrepancies, and it must also fulfill the checklist as elaborated above. Once all the documents are ready and the application is filled out and ready to be filed, it can be done in two ways. It can be filed either electronically (through the Patent Center or the Electronic Filing System Web – EFS Web) or non-electronically (by mail or hand-in delivery). 

Patent Center

Patent Center is the newest advancement in technology that aims to combine all the processes related to filing a patent and become a one-stop destination to address the applicant’s needs and concerns. It aims to take the place of the Electronic Filing System Web – EFS Web currently being used to do so. The Parent Center has lots of interesting features, including real time tracking of the status of the patent, provided you fill in certain additional information. The additional requirements to get full access to all the features of the Patent Center are as follows:

• The login ID and password of USPTO.gov have to be kept at hand to login in and have access to your application;
• Have a profile that is referred to through a customer number; and
• Either be a registered patent attorney, a patent agent, a practitioner supporting individuals, or an individual and independent inventor.

Types of users

There are two types of users, guest users and registered users.

Guest users

Guest users, as the name suggests, have fewer features available to them due to the nature of their registration on the website. Guest users have fewer features available to them and some restrictions on the modes of payment available to them. Guest users do not have the option to activate any two-step verification in order to protect their accounts. They also cannot provide any additional documents, and such hurdles might impact their online application process experience.

Registered users

But registered users have more features available to them. Registered users have the option to review their applications and even enable a two-step verification to authenticate their accounts. They can also set the viewing of their account to either private or public, as per their preference.  They can also provide additional documents that are required for patents and ongoing applications.

Electronic Filing System Web – EFS Web

The Electronic Filing System Web was used by the United States Patent and Trademark Office (USPTO) until it was replaced by the Patent Center. It is an online web-based system that allows applicants to file their application, submit the documents required, and fulfill all the items on the checklist required in the process of filing an application for a patent. 

The major advantage of such a system is that it allows applicants to file anytime and anywhere as long as the applicant has internet and web-based access to their device, and there is no additional software or changes required to be made to your device in order to access such a feature. It is free to register, but you will be prompted to pay the required filing and other costs for the application.

The Electronic Filing System Web allows users to take advantage of the online mode of submission and provides multiple formats of documents to be submitted, ranging from PDF to ZIP files. It also provides an electronic receipt that acts as an acceptance for the date of submission.

The advantages of filing online/electronically (through the Patent Center or the Electronic Filing System Web – EFS Web) are as follows:

• Lower fees are levied;
• It can be filed by anyone having access to the internet;
• It does not require downloading any additional software or making any other changes;
• Applications are quickly filed online and one does not have to wait in queue to do so;
• Easy and simple process of filing online;
• Multiple formats of documents are allowed to be submitted on the portal;
• It can be accessed by anyone;
• It has minimal steps and is a step-by-step process;
• Protection safeguards are incorporated to alert users about flexible submission, multiple payment modes, and other options; and
• Option to submit compressed (.ZIP) files as well.

The application fee for the patent can be found here. The accepted payment modes are check or money order, credit card or debit card, deposit account, Electronic Funds Transfer via ACH Debit, EFT via ACH Credit, wire transfer, etc. If the applicant is filing online, they will be prompted to pay the required fees online. If the applicant is filing offline, then they are required to pay by fax or mail. In the case of payment by credit card, the form for credit card payment has to be attached. 

Offline filing

In case the applicant wishes to file offline, they can do so with the help of the United States Patent and Trademark Office (USPTO). In order to file offline by mail or by hand, they can head over to the United States Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia.

If you opt for an offline filing method by mail or by hand, then the filing or deposit date is the date the United States Patent and Trademark Office (USPTO) receives the correspondence receipt and not the date on which you mailed it.

If you are filing offline, i.e., the non-provisional utility application by hand or by mail, you have to pay an additional amount of $400 and $200 for smaller entities. This has been levied to encourage applicants to file online and use the  Patent Center or the Electronic Filing System Web – EFS Web. 

Once the patent application is prepared, it must be filed with the USPTO. The USPTO will then review the application and determine whether it meets all the requirements for a patent. If the application is approved, it will be granted a patent

Submitting your application 

After ensuring all your documents are in place for submitting your application, make sure to do some final checks so that you have not missed anything, all the documents that require your signature are signed, and all details are filled out, as you will not be able to add any additional information after the filing of the application. 

Pre-prosecution

When the United States Patent and Trademark Office (USPTO) receives the application, it will review it for any errors or incompleteness. In case this happens, the applicant is alerted through a notice that highlights such inconsistencies, and you will be prompted to complete it. There are two types of notices that are sent to an applicant in this regard, they are the notice of missing part and the notice of incomplete application.

1. Notice of missing part

An applicant receives a notice of missing parts when they have failed to fill out all the details in the application or when certain information that is mandatory to be filled out is missing. Such a notice prompts them to fill out such information at the earliest.

2. Notice of incomplete application 

An applicant receives a notice of incomplete application when their non-provisional application is incomplete. As we’ve discussed in the checklist for non-provisional applications, small and micro entity status, and the utility patent application transmittal form, these are important documents without which you cannot proceed with the filing of the application. In the absence of such important documents, you receive a notice of incomplete application, which provides and mentions the time to complete it and may prompt you to pay an additional fee.

It is important for you to promptly respond to this notice by filing the required documents in the time period provided to you and keeping track of other dates and correspondences to prevent abandonment of your application 

If your application is abandoned but you still want to obtain the patent, then you have to file a petition. This abandonment usually takes place when there is a lack of reply to an office action or the failure of the office action to provide a notice to the application, missing information or missing parts, or failing to pay the fees on time. The petitions are of four different kinds. The following petitions can be filed:

• Petition to withdraw holding of abandonment of the patent application 

This is present under Section 1.181(a) of Title 37 of the United States Code. The petition to withdraw the holding of abandonment of the patent application must be filed within two months of the date of receiving the notice of abandonment, and if not, it will be dismissed under Section 1.181(f) of Title 37 of the United States Code. It should be addressed to the headquarters of the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia. The following are required:

• Certificate of mailing under Section 1.8 of Title 37 of the United States Code;
• Priority Mail Express mailing under Section 1.10 of Title 37 of the United States Code;
• Postcard receipt as prima facie evidence under Section 503 of Manual of Patent Examining Procedure;
• Petition to withdraw holding of abandonment based on failure to receive office action

When the applicant files an application, they are required to receive a Notice of Allowance and Issue Fee Due. In the absence of receiving such an original notice or issue, they can file a petition highlighting the lack of office action, which was an obstacle in their way of obtaining a patent.  

In order to file such a petition, a statement from a practitioner saying there was no office communication and nothing was received is required, and the records serve as evidence of the same fact. In addition to that, a copy of such a record where it would ordinarily have been entered but has not been must be attested and cited in the statement of the practitioner. No fee is required to file this petition, and such a petition must be addressed to the headquarters of the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia.

• Petition to revive an abandoned application

When there is no question as to the fact that the application has been abandoned and the applicant’s contentions state clearly the reasons for the abandonment of such an application, a petition is filed as per the provisions contained under Section 1.137(a) of Title 37 of the United States Code. You can also refer to Section 711.03(c) of the Manual of Patent Examining Procedure. In order to revive the application swiftly without any delay, it must also contain the reply, terminal disclaimer if any, statement stating that the whole delay was unintentional, fees for the petition, etc., which are important to make the application status active once again. Additional rules for this can be found here. This petition should be addressed to the headquarters of the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia. 

• Petition for revival of an application for patent abandoned unintentionally under Title 37 of CFR Section  1.137(b) 

The form for this petition can be found here. In case the patent has been abandoned unintentionally, you can opt to file this petition. 

Prosecution of application

At this stage of the application process, you might find that having a patent attorney or a patent agent eases the stage of prosecution. The United States Patent and Trademark Office only corresponds with one person, which is either the applicant or the attorney, but not both of them. At this stage, your patent application is examined by the office. 

Examining patent applications is a huge task and is divided amongst various technology centers working under the office itself. Each of these technology centers is headed by individuals addressed by directors who lead the examiners and support staff. Each technology center has its own area of specialization, broadly covering a certain category/class of patents, and thus this helps to divide the work between different technology centers. On ascertaining the type of patent application, it is assigned to a technology center for further examination.

The examination process includes reviewing all the details provided to determine whether the patent complies with all legal provisions, whether there must be no such patent granted, which is determined through a comprehensive patent search in its existing exhaustive database, and whether it fulfills the basic requirements of being a patent, i.e., uniqueness, non-obviousness, and practicality. The examiner carefully reviews all the above mentioned points and arrives at a decision. 

On arriving at a decision, the examiner’s decision is notified to the applicant through an office action, which is provided in writing. In the case where you have a patent attorney or agent, it is mailed to them directly, and in the absence of a patent attorney or agent representing you, it is mailed to you directly. Such office action explains in detail and in writing whether or not your application meets all the requirements to be granted a patent and the reason why your patent is or is not (whatever the case may be) being granted a patent. The legal requirements that are to be met by all patents that aim to be granted such patent status by the United States Patent and Trademark Office (USPTO) are as follows:

• Novelty under Section 102 of Title 35 of the United States Code;
• Utility under Section 101 of Title 35 of the United States Code;
• Eligibility under Section 101 of Title 35 of the United States Code;
• Non-obviousness under Section 103 of Title 35 of the United States Code; and
• Written description under Section 112 of Title 35 of the United States Code.

As an applicant who wishes to be granted the patent, you would have to write back asking for reconsideration of your application by highlighting all the errors and points that have been elaborated in the form of grounds or reasons for objection or rejection of the patent. The replies to each of these filed by the applicant must be in good faith to ensure that they hope to get over this obstacle and make sure that their application is granted a patent. It must also be supported by evidence, if any, that would further substantiate the applicant’s grounds. 

The applicants are provided the option to amend any statements that they have presented before the examiner as arguments, with no extra costs imposed on them. In case the applicant hopes to amend the application in reply to a rejection, they must elaborate on why they wish to amend such claims, why such claims are patentable with reference to the previous claims made by them, and how such claims are free from any objections and rejections.

It is important for the applicant to keep in mind that they have to follow the deadlines set by the office and not delay them in any regard. In case of any delay, they might be imposed some additional fees if they file after the application expiration period has set in or the application is at the stage of abandonment. The fees paid are generally non-refundable. The office action contains the time at which the reply is provided.

Applicants also have the option to engage in an interview with the examiner in order to shorten the process of examination and showcase their proactiveness towards obtaining the patent. Your one-on-one meeting with your examiner can be scheduled in person or on a call, and such details can be found at the end of the office action document. This is referred to as an “interview”.

After providing an appropriate response to the first office action, your response is examined by the examiner, and if the examiner is still not satisfied by the reasons you have stated, then a second office action is provided that is final but provides applicants with the opportunity to amend and argue but is more restricted in comparison to the first office action.

An office action is often considered the final part of your application in the prosecution stage, but the applicants have several options available to them, which are as follows:

• Filing for a reply after final decision under Section 1.116 of Title 37 of the United States Code;
• Filing After Final Consideration Pilot 2.0, addressing all such objections; 
• Filing request for continued examination – This allows the applicant’s application to be examined continuously; and
• Filing before the Patent Trial and Appeal Board a Notice of Appeal.

In order to prevent this, the applicant has to ensure they address all the objections and satisfy the examiner with their arguments, or the examiner will reopen the prosecution. Otherwise, the application becomes abandoned within 6 months from when the final rejection has been mailed to the applicant.

Grant of patent

After all these stages have been completed and your patent has successfully passed through all the obstacles, the examiner will grant you your patent. This is done by providing you with a Notice of Allowance, which conveys your entitlement to the patent. You may be prompted to pay an issue fee and a publication fee, which might be included in the Notice of Allowance. Both the issue fee and the publication fee must be paid in order for the applicant to receive the patent and prevent the abandonment of the application. This payment must reach the United States Patent and Trademark Office (USPTO) office within three months from the date the Notice of Allowance has been mailed to the applicant, and such a patent is not subject to any extension whatsoever. 

On being granted the patent, the applicant is now free to prevent others and exclude them from using such an invention/creation as this right solely rests with them. Patent applications generally last for a period of 20 years that begins from the date the application was filed. In the case of patents claiming the benefit of earlier filed application(s) in the United States, the date begins with the earliest application that has been filed before the office. 

You can also provide additional documents in case your application is an improvement of an invention and the prior invention has not disclosed such things. These must be filed before or during the payment of the issue fee for the parent application. The United States Patent and Trademark Office (USPTO) also provides eGrants for all the patents having an issue date on or after April 18, 2023, and they are available to the applicants to access through the Patent Center itself. 

Ensuring your patent is legally secure and protected

Once the patent is granted, the inventor must pay the patent maintenance fees in order to keep it in effect. The patent maintenance fees must be paid every 3.5, 7.5, and 11.5 years after the patent is granted. These years are accompanied by additional fees 6 months from the beginning of the above-mentioned years, those dates having the anniversary dates ending on the 4th, 8th, and 12th years, respectively, which are also the deadline to make such a payment to the USPTO office. 

The applicant would not receive any reminders for due payments of maintenance fees, and therefore they are required to keep track of such deadlines and pay the maintenance fees promptly. A grace period is provided to make such a payment, which is accompanied by additional fees. In case the applicant fails to make payment on the basis of the original deadline and grace period, the patent will expire on the date the grace period comes to an end.

How long does a utility patent last

A utility patent typically lasts for 20 years from the date of filing. However, the patent can be extended in certain cases, such as for a patent that covers a medical device or drug. In addition, the patent can be terminated early if the patent holder fails to pay the required patent maintenance fees.

As per the United States Patent and Trademark Office (USPTO), any patents filed on or before June 8, 1995, or that will be in force on or after the said date are allowed to hold the patent for a period of 17 years starting from the date the patent is granted or 20 years starting from the date the earliest application is filed; the longer one is preferred and granted accordingly. A utility patent cannot be renewed, but it can be maintained. Patent terms can also be extended by filing an application under Section 156 of Title 35 of the United States Code, which is available to patents that have been filed before the United States Patent and Trademark Office (USPTO) no more than within the past five years.

Benefits of filing a utility patent

There are several benefits to filing a utility patent. First, it provides exclusive rights to the inventor to prevent others from making, using, or selling their invention without their permission. This allows the inventor to control how their invention is used and reap the financial rewards of their invention. Filing for a utility patent and being granted such a right allows the owner to control and examine its use to their benefit and comfort with no worries about the possible violations that it could face.

Second, a utility patent can also be used as a bargaining chip in negotiations. For example, the patent holder can license their patent to another company in exchange for royalties or other compensation. Patents that have been granted by the United States Patent and Trademark Office (USPTO) are accredited and thus more likely to receive license requests from the patent owner.

Finally, a utility patent can also be used as a deterrent against infringement. If another company is infringing on the patent holder’s rights, the patent holder can take legal action to stop the infringement. Being registered under the United States Patent and Trademark Office (USPTO), a utility patent can avail of the benefits and protection granted to it, including the benefit of suing those who infringe upon it in order to protect your patent. 

Tips for filing a utility patent application

When filing a utility patent application, it is important to make sure that all the requirements are met. This includes preparing a detailed description of the invention, providing drawings of the invention, and providing prior art related to the invention. In order to ensure that you, as an applicant, have not missed out on anything, you can create a checklist of important documents for your patent. You can refer to the above-mentioned checklist to find a list of all the documents required for the same.

It is also important to make sure that the legal basis for the patent application is sound. This includes claiming priority or originality for the invention. It is important to ensure that your patent is novelty under Section 102 of Title 35 of the United States Code, has utility under Section 101 of Title 35 of the United States Code, is eligible under Section 101 of Title 35 of the United States Code, is non-obvious under Section 103 of Title 35 of the United States Code, and has a written description under Section 112 of Title 35 of the United States Code.

Often, inventors get stuck with the fact that there is a requirement to have an already built and working model to get a patent, and that is just a misconception. What is more important is the fact that the applicant is able to accurately describe to the examiner in the form of a written description how and why their prototype has been designed and that such an invention is unique, non-obvious, novel, and eligible for being granted the patent.

Finally, it is important to make sure that the application is filed with the USPTO in a timely manner. The USPTO has strict requirements for filing a patent application, and failing to meet these requirements can delay the process. You can refer to the table here to find the estimated timeline and procedure for the utility patent application. The applicant is required to keep track of the deadlines and timelines, as they are not provided reminders and notifications for all such stages in the process of a utility patent application. 

Cost of filing a utility patent application

The cost of filing a utility patent application varies depending on the complexity of the invention and the number of claims. Generally speaking, filing a utility patent application can cost anywhere from a few hundred dollars to several thousand dollars.

In addition to the filing fee, there are also other costs associated with filing a utility patent application, such as attorney fees, patent search fees, and patent maintenance fees. You can head here to find a detailed breakdown of the costs related to the patent. The cost of filing a utility patent differs as there are additional charges that are levied, like late fees on account of failure to meet deadlines, filing petitions, etc.

Cases on utility patents

United States v. Teletronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988)

In the case of United States v. Teletronics, Inc., a patent was issued to Carl and others. The most important question here, which also paved the way for the test of enablement, was whether someone skilled in art can make use of the disclosures present related to the invention and incorporate information into it that is known without any undue experimentation. It was held that it should satisfy the trait of enablement, which is a requirement in addition to experimentation to some extent. Thus, the district court has made an error in its judgment regarding non-enablement.

Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361 (Fed. Cir. 2005)

In the case of Callicrate v. Wadsworth Mfg.,Inc., it was held that the specification contained in the documents for the patent could support an enabling disclosure, and even TrafFix Devices Inc. v. Marketing Displays Inc. (2001) elaborates on a background section and even depreciates the subject matter of the patent in question. 

Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995)

In the case of Elmer v. ICC Fabricating Inc., the validity of a utility patent that was infringed was in question. It was finally decided that even if the United States Patent and Trademark Office (USPTO) has granted the patent, it is invalidated by the fact that it was in public use for at least one year before the date the application was filed in the United States. 

TrafFix Devices Inc. v. Marketing Displays Inc., 532 US 23 (2001)

In the case of TrafFix Devices Inc. v. Marketing Displays Inc., it was questioned whether the functional feature of the utility patent was ruled out because it could not draw any trade dress protection from the infringement it is facing. It was held that the functionality of the invention gives it the right to protection as a utility patent, and in order for it to claim that it requires trade dress protection, it would require the party to show that such an invention was merely decorative (for trade dress) and not functional. 

Conclusion

Utility patents are an important part of the US patent system. They provide exclusive rights to inventors over their inventions and protect them from infringement. In this article, we have taken a comprehensive look at utility patents in the US, including what they are, different types of utility patents, examples, requirements to file a nonprovisional utility patent, steps to file a nonprovisional utility patent, how long do they last, benefits of filing a utility patent, tips for filing a utility patent application, and the cost of filing a utility patent application.

Filing a utility patent can be a complicated process, but it can be worth it in the long run if it helps protect your invention and your rights as an inventor. Utility patents being granted by the United States Patent and Trademark Office (USPTO) provide security and assurance that the patent is protected from infringement, and if infringement still occurs, you will have the option to take swift action against such infringers and violators in order to protect your patent.

If you have any questions about filing a utility patent application, please contact a patent attorney. They can help guide you through the process and ensure that your rights as an inventor are protected.

Frequently Asked Questions (FAQs)

How is a utility patent different from a patent?

A utility patent is not to be confused with a patent and greatly differs from it in many aspects. A utility patent protects how an article or invention essentially works and functions in society (Section 101 of Title 35 of the United States Code), whereas a patent protects the idea and often the design behind the article or invention (Section 171 of Title 35 of the United States Code).

How many types of utility patents are there?

A utility patent is broadly divided into three types. They are process utility patents, machine utility patents, and composition of matter utility patents. A process utility  patent refers to those patents that focus on the process or even the method of doing something, which majorly covers the functioning process of machines and devices. It includes the ideas and steps of the process to make it function and give us the outcome we desire. It is further divided into products by process and method of use. Product by process focuses on how the product is made for our use. Often, it includes how a new process has been developed to make use of the utility patent. The method of use focuses on how to use that particular patented product. Oftentimes, we have to add or remove parts to use it as per our needs and requirements, as the whole product may not be helpful for us or satisfy our needs.

A composition utility patent focuses on the composition or mixture of different components. It can be made up of two or more different substances. The substances could be compounds, elements or even radicals and can be in any state of matter, solid, liquid, gas, etc. 

A machine utility patent refers to machines that are part of our everyday lives. From washing machines to air purifiers and laptops, they have become a part of us, and we cannot function without them. They simplify our everyday tasks with the help of simple programming and never fail to make our lives easier.

How can one file for a utility patent?

One can head over to the United States Patent and Trademark Office (USPTO) in order to register a patent. The steps are as follows:

• Create a USPTO.gov  account
• Download and fill out the forms for Patent Electronic Verification and Customer Number Verification, and after notarizing them, mail these original notarized documents to its HQ in Alexandria, Virginia.
• After receiving email from USPTO, you can now authenticate your account. After doing so, you can gain access to the Patent Center.

For further details in this regard, you can head to this website.

In case you want to file it offline by visiting the center, you can do so by having it delivered to headquarters in Alexandria, Virginia. For further details, visit here to learn more about it.

References

• http://www.uspto.gov/ 
• https://www.law.cornell.edu/uscode/text/35/101
• https://www.callahan-law.com/what-is-a-utility-patent/ 
• https://smithhopen.com/glossary/composition-of-matter/ 
• https://arapackelaw.com/patents/softwaremobile-apps/recent-software-patent-examples/ 
• https://www.law.cornell.edu/uscode/text/35/102 
• https://patents.google.com/patent/US20220226532A1/en?q=(air+purifier)&oq=air+purifier
• https://www.uspto.gov/patents/basics/apply/utility-patent#:~:text=A%20nonprovisional%20utility%20patent%20application%20must%20include%20a%20specification%2C%20including,%2C%20search%2C%20and%20examination%20fees.
• https://www.uspto.gov/sites/default/files/inventors/Checklist_for_Filing_a_Nonprovisional_Utility.pdf
• https://www.uspto.gov/sites/default/files/documents/aia0015.pdf https://www.uspto.gov/sites/default/files/documents/sb0017.pdf
• https://www.uspto.gov/sites/default/files/documents/aia0014.pdf
• https://www.uspto.gov/web/offices/pac/mpep/mpep-0600.html 
• https://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e47639 
• https://www.uspto.gov/sites/default/files/forms/aia_oathdecl_guide.pdf 
• https://www.law.cornell.edu/cfr/text/37/1.27
• https://www.law.cornell.edu/cfr/text/37/1.29 
• https://www.uspto.gov/sites/default/files/documents/sb0017.pdf
• https://www.prnewswire.com/news-releases/moomoo-extends-charting-feature-to-mobile-users-gains-the-first-us-utility-patent-301884662.html 

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.

This article is written by Palak Poddar, a law graduate of  Banasthali University, Rajasthan. The article discusses the conditions required for the protection of trademarks in the US, along with various concepts related to them in detail. 

It has been published by Rachit Garg.

Introduction

Close your eyes and imagine your favorite brands fighting with each other for their identity in the market – where there is no assurance of qualities, authenticity, trust, or a touch of the love of your favorite brands, where every product blends with each other, and the ownership of each product remains a mystery. Sounds crazy, right? Well, this was the case in the United States before 1870, when there was no legal protection for trademarks available. Thankfully, in 1870, the first federal trademark law was enacted in the US after examining the need for it. After that, various amendments and rulings were made concerning trademark laws in the US. Currently, trademarks in the US are governed by the Lanham Act of 1946. This law is the most comprehensive trademark law in the world. It provides a wide range of trademark protection to trademark owners. 

In today’s era, brands are more than just about their products and services. They have become a part of our identity and represent our values and lifestyle as well. But have you ever wondered what it takes for these brands to build a distinctive identity among their competitors in the market? What strategies do they use to make space in your hearts and minds? What is the magical ingredient that sets a brand apart from the rest in the market? Well, it’s that special spark that makes you identify your lovable brand even from a distance. In real life, branding is more than just a logo or slogan; it is an art by a brand where they combine creativity, strategy, and consumer psychology. It is a unique narrative that connects brands with their targeted audience on an emotional level. 

The secret ingredient of branding is attached to the concept of “distinctiveness”. This is how brands catch our eye and draw our attention towards their products. Think of the iconic luxury brand “Apple” which uses a bitten apple as its logo; Nike for its slogan: “JUST DO IT”, or Coca-Cola for its red and white classic branding. These brands all use the same tactic for their trademarks, which leaves an impression on your mind. 

In this article, we will be elaborating on all the concepts related to it in detail. We will also be highlighting the leading cases involved in trademark infringement matters. Stick till the end of this article to understand the concept of branding and the tricks of your favorite brands to establish a distinctive identity in the market. 

Overview of trademark protection in the United States 

Definition of trademark 

Let’s first understand what the meaning of the term ‘trademark’ is as per the United States trademark laws. A trademark is defined under 15 USC Section 1127 as a word, symbol, phrase, design, or combination of any of these that identifies a brand’s product or services. It is how a customer recognizes that brand in the marketplace, and its identity is different from other similar products and services. The word “trademark” includes both the terms “trademark” and “service mark” simultaneously. A trademark is used to represent goods or a product, whereas a service mark is used to represent a service offered by a brand. 

Registration of trademark 

To register your trademark in the United States, you need to file an application with the United States Patent and Trademark Office (USPTO) with the given requirements. However, you can become a trademark user as soon as you start using your trademark for that particular good or service. If you want nationwide recognition and protection for your brand, you need to get a registered trademark from the federal government only. You can use your unprotected trademark as a local vendor, but to get the protection that spreads widely across the country, registration will be required. You can use the symbols ™ for goods and SM for services even before applying for a trademark. This will let your competitors know that you are claiming the product and service to be yours. However, you can use the symbol ® once your registration process is done. 

Misconceptions about the usage of the word “trademark” 

The common misconception related to trademarks is that the brand owns that particular word or phrase after getting approval for its patent from the government. Whereas, in general, that word or phrase is not protected, but it covers the meaning attached to it. It also covers how that particular word is attached to goods and services and in what manner they are linked. Suppose you own a perfume brand with the name “Calmante”, so you can only protect this brand to the extent to which perfume brands are concerned. Other than that particular field of goods or services, i.e., perfume brands in this case, you cannot restrict someone from using a similar name. A trademark distinguishes your goods and services from those of others in a similar field.  

Class protection mark 

To explain this concept, let’s take the example of the above-mentioned brand “Calmante” only. The brand has chosen the exclusive right to use the mark within a specific class of trademark which is perfume or fragrance. This means that the brand is protected within a specific field or specific class of perfumes or fragrances. No one belonging to the same industry can use a similar mark in that specific industry. However, anyone related to some other industry, for instance, the electronics gadgets industry can use this mark. The perfume brand and the mark will not get protection there. However, if Calmante would have been a well known mark, it would get multi class protection and no one could launch a brand Calmante in the electronics gadgets industry.

Multi-class protection mark 

Now, suppose the company Calmante has chosen a multi-class protection mark; they can extend the protection beyond the class, which is specifically for perfume or fragrances. At the time of registration, the brand can choose multiple classes. For example, in this case, with perfume or fragrances, the brand chooses to opt for clothing or the organic food industry. In multi-class trademarks, protection will be broader as it is not related to that particular industry, it widens the scope of the mark. This class makes sure that the mark gets protected within the related industry specified in the class. 

Common examples of trademarks 

Though there are more than a million registered trademarks in the United States, here are some of the most common and easily recognizable examples for you. These trademarks could include different words, slogans, designs, sounds, scents, colors, or combinations of any of these. There are two types of formats prescribed for brands in which they can register their trademark, one is standard character format and the other is special form format. 

Standard character format 

This is the most common format used to register a trademark in the US. The standard character format is also known as a wordmark. In this, only the words, letters, numbers, or combinations of any of these are protected rather than focusing on their font style, size, design, or color. This format is just protecting the words themselves, regardless of how they appear, just like the iconic brand Apple Inc. has protected the usage of the word “Apple” as a trademark for Apple Inc. We know that the word “apple” denotes a fruit. Here, the meaning associated with the word can be used only for technology and electronic products such as smartphones, computers, and software by this brand. The company exclusively protected the usage of the word “Apple”; now it can be used in any type, font, style, or color. This is how the core brand identity of Apple is protected. The other example of your food companion brand KFC, “it’s finger-lickin’ good” is also a form of standard character format, where only words are used. Another example is the famous sneaker brand “Nike – Just do it”. 

Special form format 

This is another type prescribed for trademark registration. This format is used when there is any need for the protection of trademarks that are styled, have a specific design or logo, or have color in them. Brands can use this trademark when their main focus lies on protecting the design and styling of their brand name or logo. This will protect how the brand name or logo looks. 

Some examples of special form formats are: 

• Like the company, Nike has a special form format trademark that combines both the word Nike and the correction mark logo. 
• Apple’s apple-biting minimalist logo is also a special form format trademark. 
• Amazon’s round curve arrow also follows special form format to show the wide range of products available on the e-commerce platform. 
• The Starbucks green color mermaid logo is also an example of the same category of trademark, to show the premium brand coffee experience.  
• Golden arch of “M” in McDonald’s logo is also an example of special form format mark. The company uses the first letter of brand name in a special format which creates its unique identity. 
• The brand Coca-Cola also has a unique style of mark. They uses the word “C” in a curling way which sets them apart from other identity in the market. 

Conditions for protection of trademarks in the US

To get trademark protection in the US, two basic requirements need to be fulfilled to be eligible for trademark registration. Meet these requirements, and you will be able to get a successful trademark, establish your brand identity, and safeguard your rights in a competitive marketplace. The first is that it must be used in commerce, and the second is that the trademark must be distinctive. Now let’s understand each one of these requirements in detail, one by one. 

Use in commerce

The first and essential requirement involves a trademark to be used in commerce. It says that the trademark owner has to be the first to use that mark for that particular good or service, though the exception applies in cases where the applicant has already applied in some other foreign country. The term “use in commerce” is defined under Section 45 of 15 USC Section 1127 as a mark used in commerce or which should be registered with a bona fide intention of being used in commerce. The mark should be either in use in commerce at the time of filing an application or used in good faith shortly. The mark should be used in the ordinary course of trade with bona-fied intentions. It should not just be for merely reserving the mark. In the context of use in commerce, it works as evidence that the mark is not just an idea or concept but is used as a source identifier for specific products or services. There are two ways in which this requirement can be satisfied: 

Actual use in commerce

To fulfill this requirement, the mark should be used on the products themselves or in connection with services offered. The mark should be placed on a product, its packaging, or labels. In the case of services, the mark should be displayed in advertising materials or promotional activities associated with that service. 

Intent to use

In cases where your product or service for which the mark is to be used is not ready, you can still obtain a trademark. You can file an “intent to use” trademark application with the USPTO to obtain a trademark for a product or service that has not been commercialized yet. In the application, you need to show the intention to use your mark for commercial purposes once the product or service is ready. However, the approval, in this case, is also subject to the patent and trademark offices of the United States. 

Distinctiveness 

Distinctiveness is one of the essential requirements to register a trademark in the United States, as per US trademark laws. Even though the mark can be used in commerce for a very long time, the USPTO can still reject the application and refuse to grant the trademark based on the mark not being distinctive. A trademark is eligible for federal protection only if it is distinctive. This feature distinguishes the goods and services of a specific company from those of others and identifies them as their own. There are different levels of distinctiveness. The more distinctive your mark is, the higher your chances of getting a trademark registration. 

Trademarks are protected only if they are distinctive; we have heard this throughout the reading. But what exactly is distinctiveness? What are the criteria to determine it? What is the importance of having it? What are their types? Let’s understand all this elaborately. 

What is distinctiveness

Distinctiveness is a feature that determines how the products and services are different from those of other companies in the market. It is measured by how well the mark defines the source of products and services. The more distinctive the mark is, the stronger it is for you. Distinctiveness helps you in recognizing your favorite brand’s products and services and helps you make informed choices as to which brand you should trust. 

Section 2 of the Lanham Act, also known as 15 USC Section 1052 specifies the requirements for the registration of a trademark in the United States. This Section specifically mentions what types of marks are eligible for trademark registration and what types are not. It also focuses on which marks are prohibited and which marks are not.
This Section prohibits the registration of marks that contain:

• Any immoral, scandalous, or deceptive matter; 
• Disparage or falsely suggest a connection with a living or dead individual; 
• A negative comment on an institution, belief, or national symbol; 
• Geographical indications in connection with wines or spirits;
• Official flags, coats of arms, or other insignia of the United States or any other state; 
• The name, signature, and portrait  of a deceased person of the US during the life of their widow, except if the widow permits; 
• Resemblance of the existing mark; 
• Previously used marks in the US that caused confusion, mistake, or deception. 

Benefits of a distinct trademark

Every business should choose a distinctive mark. The distinctiveness of a trademark can be useful for a business in many ways, such as building trust with customers, establishing the brand in the market, and many more. Let’s understand what the benefits of choosing a distinctive trademark for your brand are in more detail: 

Gives brand recognition 

A distinctive trademark is easily recognizable and memorable. Thus, it will stay in customers’ minds for a longer period of time. When customers see that product or service for the next time, they will easily recognize the brand because they have seen the mark before. This will help them identify the source of that particular product and service, and strong brand recognition will be established in the market. This will give the brand loyal customers, repeated business, and also words of mouth referrals. It also helps to create brand loyalty and add value to the business.

More chance of being registered with USPTO 

The United States Patent and Trademark Office (USPTO) is more likely to register a brand with higher distinctiveness than a lower one. As these brands are easily recognized among customers, they can increase revenue circulation in the economy. Since these marks will help the customer easily identify the source of goods and services, thus, the registration of trademark will be granted. 

Creating brand differentiation 

There are thousands of brands available in the market, offering customers similar goods and services. The distinctiveness of the mark will help the brand stand out in the marketplace with brands offering similar products and services or with its competitors in the market. It helps in finding differentiation between brands by highlighting their unique offerings and values associated with them that leave a long-lasting impression.  

Helps building consumer trust 

A distinctive trademark is more likely to gain the trust of customers, as customers associate distinctive trademarks with quality, reliability, and authenticity. A brand must create trust with its customers, as this can increase the number of repeat customers and also increase sales and profit for the company.  A strong and well-established brand is highly trustworthy, as it is believed that they don’t compromise on the quality of their products or services. The customers think that these brands have to maintain their reputation in the market so they can meet their expectations without compromising quality. 

Get legal protection and enforceability 

A distinctive trademark gets stronger legal protection from the patent and trademark office concerning its unauthorized usage and infringement. Once a trademark is registered, nobody other than the actual owner can use it without permission. A registered distinctive trademark is enforceable against the infringer. The trademark owner can take legal action against the person using it unauthorizedly. Inherently distinctive marks get protection immediately, while non-inherently distinctive trademarks get protection through the secondary meaning attached to the mark. Only the trademark owner has the right to use the mark in commerce.  

Prevents consumer confusion 

The distinctiveness of trademarks helps prevent confusion among consumers in the marketplace. A distinct trademark helps in identifying the goods and services of a particular brand, and consumers can focus on that brand only rather than having a misconception about similarities between the other brand’s goods and services. By avoiding confusion, consumers can make informed decisions, and brands can protect their reputation while building trust at the same time. 

Global expansion 

When a business uses distinctive trademarks, it is highly effective during times of global expansion. In global expansion, companies expand their business operations, reach beyond the national market, and try to capture the markets of other countries. If the brand already has strong recognition in one country, there is a high chance that it can grab other markets. Distinctive trademarks can get legal protection easily as the business is already established in its home country, so they can serve as a foundation for seeking trademark protection in other jurisdictions. 

Licensing and brand partnership 

A distinctive trademark can open up the opportunity for the brand to sell its licensing or engage in brand partnerships with other brands. This can help in gaining additional revenue for the brand by selling the license of the trademark in exchange for royalty or commission from other brands. Businesses can also license their trademarks to other companies for the use of complementary products and services. This collaboration can help both parties leverage each other’s brand equity and further expand their market reach. 

How to ensure distinctiveness of a trademark

Registering a distinctive trademark provides legal protection and safeguards the reputations of the brands. But to get trademark distinctiveness, US trademark law has given some guidelines and strategies that strictly need to be followed. Here are some tips that ensure distinctiveness for your trademark: 

Choose an inherently distinctive trademark 

Selecting a strong and unique trademark is very important. You should choose an inherently distinctive trademark. This means that your mark should not be descriptive of the products and services your brand is offering and should not contain generic meaning. These marks are considered weak; rather, you should use fanciful or arbitrary marks such as “Apple” uniquely used for selling computers, electronics and their parts. 

Conduct an extensive trademark search

Doing thorough research to find out if any business is using similar or identical marks to yours is important, as this is the most common ground on which applications from the patent and trademark offices get rejected. This can increase confusion among the customers, as they will perceive your goods and services to come from the same source as another’s goods and services. This will also help in the prohibition of existing trademark owner’s rights from infringement. 

Register your mark with USPTO

The USPTO is the authority that grants legal protection for your trademark. Trademarks with distinctive marks will get accepted by the patent and trademark office quickly. This can help you in multiple ways. Since your mark will already be listed with the USPTO, anyone searching for it will find your mark listed. This will prohibit the person from using your mark. It will also be easy to prove in federal court that you own the mark and can claim compensation in case of infringement of your trademark rights. By having your mark registered, you can also get the benefit of using your mark as a licensing option. 

Use your mark extensively 

You need to use your mark extensively to acquire distinctiveness. Using your mark again and again will give your mark a secondary meaning. This secondary meaning occurs when a customer associates the mark of a brand with particular goods and services that the brand is offering.  It is evidence that proves the mark to be linked with its specific source of product and service, from where it is coming. This will also increase the chances of registration with the patent and trademark offices. You can use your mark consistently on product packaging, labels, and promotional and advertising banners. This will leave an imprint of your mark on your consumers minds. The more visual it is to them, the more likely it is to get stored in their subconscious mind.  

Avoiding misleading and confusing marks 

Make sure that you are using a mark that is not misleading or creating any confusion in customers’ minds about goods and services. As per US trademark law, if any mark is giving confusion to the customer, it is likely to be ineligible for registration or legal protection from the government. The courts and USPTO thoroughly examine whether the mark is confusing in design or not. This examination considers several factors, such as similarity in sight, sound, and meaning of the mark. Any mark that sounds similar to the existing mark is likely to cause confusion, mistake, or deception among consumers regarding the source of origin for products and services. The mark for “Apple” as used in the electronics industry is likely to be similar to the mark used in the food industry. 

A spectrum of trademark distinctiveness 

As you know, a trademark is connected either with a product or a service, depending on what your brand is offering. That product or service has to be specifically related to the brand. You cannot use a word, symbol, phrase, or design without identifying what your brand is offering. You need to mention what your brand is offering to its customers—goods, services, or both. Not all trademarks are equal. Yes, you heard it right. Some marks give more protection to your brand, while others give less. To determine which gives more protection and which gives less, trademark distinctiveness is divided into two specific categories. One is an inherently distinctive mark, and the other is a non-inherently distinctive mark. This difference is based on the initial level of distinctiveness that your mark carries at the time of filing your trademark application.

This  spectrum of distinctiveness of trademarks was first introduced by the United States Court of Appeal for the Second Circuit in 1976 in the case of Abercrombie & Fitch Co. v. Hunting World Inc. (1976). The Court has defined the classification of trademarks based on distinctiveness. It ranges from “fanciful mark” which is inherently unique and has a strong identity, to “generic mark” which is not distinctive at all and also not eligible for trademark protection. Now, let’s understand each one of them in detail. 

Inherently distinctive marks 

Inherently distinctive marks are strong trademarks that are quickly accepted by the USPTO. This type of mark has a unique quality that is capable of identifying the source of goods and services. These marks get a higher protection level since they are strong and easily recognizable. It prevents others from copying or using the same mark that is protected without permission. Now there are three different levels of distinctiveness based on the level of protection they are providing and their features. These categories are specifically defined under Section 2 of the Lanham Act, (15 USC Section 1052) which accepts applications based on inherent distinctiveness. These are fanciful, arbitrary, and suggestive marks.

Fanciful marks

Fanciful marks are also known as coined marks or invented marks. These are the words that are invented or created to identify a particular brand’s goods or services. These words don’t have any prior meaning attached to them. You will not find the meaning of these words in the dictionary. This mark has the highest level of inherent distinctiveness, which also provides higher protection. The more the word is unrelatable directly to the nature of goods and services, the higher the chances of getting it noticed by the customer. You can find examples of fanciful marks in almost every industry that you can think of. 

Famous examples of fanciful marks

Pepsi: The world’s leading beverage company’s brand “Pepsi” is a classic example of a fanciful mark. There was no meaning to the word “Pepsi” before the brand came into existence. The brand has given meaning to it, and now every time someone hears this word, it immediately resembles carbonated soft drinks. The name was given by Caleb Bradham, the inventor of the drink, in 1898. 

Kodak: A renowned brand for producing imaging products, was introduced in 1888 by founder George Eastman. The word “Kodak” has no prior meaning before the brand starts making its name in the photography industry, commonly known for its films, cameras, and imaging products. 

Exxon: Another big example from the energy sector is Exxon Mobil Corporation. The word “Exxon” has no meaning; it is an invented word, giving meaning to a word regarding a multinational oil and gas corporation. 

Google: Well, if you don’t know, you will be surprised to know that the most widely used search engine known for its internet-related searches and products is also an example of a fanciful mark. The word was invented by the founders of Google Inc., Larry Page, and Sergey Brin, after getting inspiration from the word googol, which represents the word 1 followed by a hundred zeros. 

Rolex: The word “Rolex” was coined by brand founder Hans Wilsdorf in 1908. It had no prior meaning before the brand established its mark, and now it is well known among people for making its luxury watch pieces. Every time someone hears this name now, the person gets an impression of a high-quality watch manufacturing and selling brand. 

Characteristics of a fanciful mark 

Let’s understand what the characteristics of your mark should be to determine whether it’s a fanciful mark or not: 

Inventiveness

The mark should be invented with the imagination of the creator or inventor. No prior existence of the word should be there. It can be inspired by other sources or words, but it doesn’t have to have existed before the brand existed. These words have no usage in a dictionary or in any language. These are the words creatively invented by using combinations of different words, sounds, or letters uniquely and originally. 

Distinctiveness

The mark should be highly distinctive and have no association with the goods or services the brand is offering or is going to offer. These should be quickly recognizable words so that they can effectively identify the source of goods or services. 

Strong protection

Fanciful marks provide the highest level of protection. They are easily recognized by the public, and they will likely get registered with the USPTO without any hindrances. As these marks are strong, they also received a higher amount of legal protection from the government, making them more secure and preventing others from copying them. 

Non-Descriptive

Fanciful marks are non-descriptive. Simply put, descriptive marks are those that convey directly the goods and services of a brand; fanciful marks do not do it. They are just the brand name; in themselves, they have no meaning. 

Arbitrary mark 

Arbitrary marks are those words that were previously in existence but are now used in a unique way to represent the brand’s goods or services. It is a word that has no relation to the products or services the brand is offering, yet it is attached to the mark in such a unique way that it easily becomes the source for identifying the goods or services with that mark. These marks are considered inherently distinctive and get protection from the government. 

Characteristics of arbitrary mark 

Let’s understand the different characteristics in an arbitrary mark that make the mark inherently distinctive: 

Existing words

The common requirement for an arbitrary mark is that the words should have previously existed with some meaning attached to them. Now it has been used in such a unique way that even if there is no relation between that word and the products and services offered by the brand, it still bears a resemblance to the brand. The fact that it is not relatable to what brands are offering makes it unique and indistinguishable. 

Non-descriptive

Just like a fanciful mark, this mark should also be non-descriptive. The chosen word should not be non-relatable to the features, characteristics, or functions of goods or services. It serves as only the brand’s identity and nothing else. 

Unique use

The other main characteristic of this mark is that it is used to  uniquely associate it with products and services that the brand is offering or is going to offer. This uniqueness of the mark is a memorable source indicator. 

High-level protection

Choosing an arbitrary mark will give you protection from the trademark protection authority in the US, which prohibits copying or resembling your mark. It also provides compensation to you in case of infringement of your mark and additional damages along with it. 

Famous examples of arbitrary marks

Apple: The most famous and iconic brand example of an arbitrary mark is “Apple”. The word has no direct connection with the brand or the products or services the brand is offering, yet the brand chooses to use the word “Apple” to represent the brand for goods associated with computers and electronics, making it unique and remarkable. 

Amazon: Another example of this type of mark is “Amazon”, which is the leading e-commerce platform and technology company. Amazon is the longest river in the world; the founder has taken the word from that source and associated the word with the brand. Even if the brand has no direct relation with the word, people still recognize it by that name. 

Dominos: Your popular pizza brand is also an example of an arbitrary mark. The original meaning of the word “dominos” is very different and is not in any way connected with the pizza or food delivery platform. The brand uses the word “dominos” to attract customers so that they get fascinated with the name and quickly associate it with food, or more specifically, with pizza. The brand built a strong association with fast and effective pizza delivery. Now we are all aware of its dominant position in the marketplace. 

Nike: The original meaning of the word “Nike” is the name of the Greek goddess of victory. According to Greek mythology, the word Nike depicts the goddess of victory, speed, and strength. The footwear company uses the word to represent the brand in a unique way. The vision perfectly aligns with showing the strength and victory that people can achieve or want to achieve. 

Ford: Similarly to the others, the meaning of the word “Ford” was different from how the brand was depicting it. The name Ford now denotes the world’s oldest and most recognizable brand of automobile manufacturer. The brand is a symbol of automotive innovation and mass production. In the company’s success and building the brand, the word “Ford” has played an important role. 

Suggestive mark 

As the name itself has the word “suggest”, the suggestive mark is a mark that suggests the quality of products or services of a brand not directly but in an indirect manner. This mark does not directly describe the character, feature, or quality of the products or services it represents. Suggestive marks make consumers use their consciousness to make a connection between the word used as a mark and the product or service. If the mark is something that stimulates the mental leap of a person to create the link, the mark is said to be suggestive. These marks are also considered inherently distinctive marks and are eligible to get protection from the government. 

Characteristics of suggestive marks

Some of the characteristics of suggestive marks that should be there to get protection from the government are as follows: 

Hint of quality

Suggestive marks provide hints about the quality of products or services associated with the brand. A hint is important to let customers think in many ways about the mark of a brand and get their attention. The word used as a mark and quality of product or service, should be used in such a way that customers should be able to connect the dots between them. 

Invoking creativity 

This type of mark invokes creativity among the customers. The unique feature of the mark that gives only a hint and does not disclose the direct relation between the words makes it mind-stimulating that customers can go beyond their imagination and come up with some thoughts with their creativity. This somewhat triggers their minds and emotions. This makes the customer think more about the mark and deepens the level of engagement, making it interesting. 

No direct relationship 

A suggestive mark specifies no direct relationship between the word used in the mark and the quality of the product or service the brand is offering. However, there are indirect relationships between the mark chosen and the product or service offered by the brand. This characteristic of suggestive marks makes them different from descriptive marks, which directly convey the quality of a product or service. 

The lower level of distinctive 

Suggestive marks possess some level of distinctiveness, but since they are not invented or used arbitrarily, they are less distinctive than fanciful marks and arbitrary marks. They involve a medium level of distinctiveness but are still eligible for trademark protection. To make the mark stronger, choose a fanciful or arbitrary mark. Invent the word you are using or use an existing word in a non-relatable way. 

Common examples of suggestive marks 

Netflix 

The most popular brand, Netflix, is an example of a suggestive mark. The word “Netflix” was founded by the founders of the company in 1997 for streaming videos and video rental companies. The word was derived from a combination of two words, “Net” and “Flix”, where net signifies “internet” and flix means films or videos. It is a slang term used to show  a hint of entertainment content available on the internet platform without explicitly describing it.  

Jaguar

A famous automobile brand offering Luxury cars chose the name “Jaguar” in the year 1985. The word “Jaguar” shows the wild character as the animal who kills with a single blow, showing the fierce character of an animal. Here, the brand, by using this word, represents speed, grace, and elegance, which perfectly represent the brand in a way that it stands out in the market from its competitors.     

Coppertone

If you are a fashionista, you must be aware of the brand “Coppertone”. The brand adopted its name in 1944, which represents sun care products, most particularly lotions that block sun rays and protect them from harmful rays coming from them. The original meaning of the word “Coppertone” represents the reddish brown color. By using this word, the brand perfectly sets the mark that they are protecting people from beautiful tanning. 

Twitter 

One of the leading social media platforms “Twitter” is famous for providing a platform where people can share their thoughts, news, and updates in a single message called a “tweet”. The platform suggests the idea of birds chirping or tweeting, which aligns the link between the platform’s short, concise, brief, and rapid-fire messages. 

Starbucks 

The world’s famous luxury coffee house is also an example of a suggestive mark. The original mark is based on a maritime theme, wherein it refers to the name of the first mate in Herman Melville’s novel “Moby-Dick”. The idea behind choosing this name was to show the richness of the history of coffee with the sense of adventure associated with it by exploring the world to source the finest coffee beans.  

Factors determining inherently distinctive trademarks 

Various factors determine whether the mark is inherently distinctive or not. These factors carefully examined the qualities of the mark to determine whether it gives protection or not, and if yes, then to what extent. The factors include:

Creativity and uniqueness

The mark should be creative and contain a unique character. Marks that are invented, coined, creative, and used in such a way that they are non-relatable to the goods and services but easily helpful in representing a brand.

Pre-existing meaning 

Marks that are different and have no previous existing meaning attached to them, not even with the industry or goods or services, are considered inherently distinctive marks. These words have no meaning; they are used just to grab the attention of the users. 

Descriptiveness

Marks that describe goods and services to the best of their abilities are not considered inherently distinctive. Descriptive terms don’t capture the user’s attention; therefore, they are not considered distinctive. 

Imaginations and suggestions

Just like a writer knows what specific words they should use to connect with the reader, this is somewhat similar. The mark should indirectly show some characteristics of a product or service, or it can also give a hint about them. The use of the mark will be in such a way that the reader can easily understand with his imagination, the connection between a distinctive mark and a product or service. 

Consumer perception 

Consumer perception is an important factor in determining whether a mark is inherently distinctive or not. It is all about how consumers see it and feel about the same. If a consumer sees a mark and easily associates it with goods and services of a particular brand, the mark is good to go on the market as an inherently distinctive mark. Similarly, if it is the opposite, then you need to work on your mark and make it stronger. 

Commercial use

The use of marks previously for commerce is also an important factor to be considered. If the product or service has already been in the market, people will be likely to associate the same with the brand mark. Commercial use will enhance the chances of having your brand registered with the USPTO. 

Non-inherently distinctive marks 

Non-inherently distinctive marks are the weakest category of trademarks that do not convey the source or origin of the products or services of a brand. These marks are not strong enough to get protection from their competitors, so they are less likely to be registered by the USPTO. Even if you submit your application, you need evidence to prove that your mark fulfills the eligibility guidelines and conditions for the protection of a trademark in the United States. Unlike inherently distinctive marks, non-inherently distinctive marks lack distinctiveness; therefore, there is no recognition of this type of mark among the people. If trademark owners want to protect the brand, they need to provide evidence such as sales figures, advertising expenditures, customer surveys, and testimonies associated with the brand name to the USPTO. There are three levels of non-inherently distinctive marks, they are descriptive, marks with secondary meaning,and generic marks. Let’s understand each one of them briefly.

Descriptive mark 

Descriptive marks are the type of non-inherent distinctiveness that specifies the products or services directly without identifying and distinguishing the source of the goods or services. These marks directly describe the character, quality, feature, ingredient, function, or purpose of the product or service a brand has to offer. It uses common words or phrases that easily convey specific information about products or services attributed to the brand itself. They are not qualified to be registered with the USPTO without providing any additional evidence associated with the product or service’s brand value, such as sales receipts, advertisement costs, authentic customer surveys, or testimonials. If you want to avoid rejection from the patent and trademark office, you can choose a much stronger and inherently descriptive mark, such as a fanciful mark, an arbitrary mark, or a suggestive mark. 

Characteristics of descriptive mark

There are some common characteristics of this type of mark. Let’s understand them briefly: 

Direct description 

Descriptive marks directly describe the quality of the products or services the brand is offering. It contains straightforward information that identifies goods or services directly, leaving no room for any other interpretation or ambiguity. They are made up of common words that are associated with key attributes of a product. 

Weak distinctiveness

Descriptive marks have no inherent distinctiveness properties. Due to this, the consumer is not able to associate these marks immediately with the source of the product, service or brand name associated with it. A stronger distinctive mark should be one that, when it appears in front of a person, the person can easily resemble the mark with its source. 

Initial rejection 

Initially, when an application for a non-inherently distinctive mark is filed, it is likely to get rejected by the trademark office. As distinctiveness is the primary requirement to be eligible for trademark registration, in the absence of it, the primary application will be rejected. However, the description marks may get approval and protection from the US trademark office based on an explanation and further evidence to prove the matter. 

Need for secondary meaning 

This mark can be eligible for protection and approval by the trademark office if it acquires secondary meaning through extensive use. A mark acquires secondary meaning when it is used again and again for commerce and the brand’s name gets imprinted in the customer’s mind. 

Common examples of descriptive marks

Here are some common examples of descriptive trademark names whose applications have been rejected due to a lack of distinctiveness in their names. Let’s see such names as: 

Quick and efficient delivery services

The brand went to the trademark office to register its mark and get protection from the delivery company. The mark shows the speed and efficiency of the delivery service company; therefore, it is ineligible for trademark protection. 

Affordable shoe company

The name itself says that the company sells affordable shoes. Since there is no unique invented word used and the name is describing the product that the brand is offering, which is shoes here, along with its features, which are affordable here, the product becomes ineligible for registration and protection of a trademark. 

Cold and refreshing beverages

Here, the brand itself tells the customers that it is making cold and refreshing drinks. This leaves no room for mental stimulation through which customers can connect with the brand. Therefore, this mark also becomes ineligible for the protection of a trademark. 

Bed and breakfast registry 

The name “bed and breakfast registry” describes the service offered by the brand easily, which is booking reservation services for meals. As the brand name directly tells about the offerings of the brand, it becomes non-distinctive and therefore ineligible for registration. 

Streaming news 

The name “streaming news” is likely to be registered as a trademark. It will be rejected as the name itself clarifies the product and service description along with the usage of the word that describes the feature associated with it, which is here “streaming”. 

Acquired distinctiveness (Marks with secondary meaning) 

Acquired distinctiveness, which is also the mark that acquired secondary meaning, refers to the mark that was initially descriptive but, with time and constant usage, acquired distinctiveness. In simple terms, a descriptive mark, with constant use, becomes recognizable to people. It has not been distinctive since the beginning, but over time, it sticks in the mind of the consumer. These marks have a unique identity and significance that goes beyond their literal or descriptive meaning, as they are used extensively. The mark is now imprinted in the minds of consumers or customers. 

Characteristics of acquired distinctiveness mark 

Initially descriptive 

The mark was initially descriptive. This should describe the characteristics of goods or services. These terms directly talk about the goods or services of a brand rather than specifying the source of those goods or services. This character should be from the beginning of when the mark existed or its existence. 

Consumer recognition

Another important characteristic of this mark is that, after consistent use, marketing, and advertisement, the mark becomes a source of recognition among customers, with which they can easily associate. After extensive use, it becomes imprinted on the customers’ minds. The customers recognize the mark as a source of product or service now.

Development of distinctiveness

As this mark was initially descriptive, it developed a level of distinctiveness that made it a strong mark. Over time, the mark acquires a secondary meaning that transforms the identity of the brand. This transformation and development of distinctiveness make the brand remarkable and eligible for protection.

Exclusively association

Marks that acquire secondary meaning over time are strong. It is associated with a single brand. It establishes a unique connection between the acquired mark and the single source of the brand, where the product and service are coming from. Consumers perceive the brand mark as an assurance of their favorite quality, reputation, and origin that sets them apart from their competitors in the marketplace. 

Popular examples of acquired distinctive marks

Burger King 

The popular fast food brand known by the name “Burger King” is a perfect example of acquired distinctiveness. It was a descriptive mark that acquired secondary meaning over time. The name describes the main product that the brand is offering, which is a burger. However, it has changed its meaning through extensive use and gained popularity among customers of specific fast-food chains. 

Pizza Hut 

The popular pizza brand “Pizza Hut” in its name describes the product that they are selling in the name itself, which is pizza here. Over time, it has acquired secondary meaning through extensive marketing and customer attention-grabbing; now, customers relate it with the brand or with specific restaurants. 

Holiday Inn 

The brand “Holiday Inn” as its name suggests, could be a place for people to stay during holidays. However, later on, after extensive usage of the mark, the brand became associated with hotels, and it acquired secondary meaning as specific brands of hotels. Now it is popular among people at a high level.   

Coca-cola         

Coca-cola is also a classic example of a descriptive mark that has acquired secondary meaning over time through extensive use. The name itself describes the key components and nature of carbonated soft drinks. Now the brand Coca-Cola has a powerful impact on customers, and it becomes a symbol of happiness and nostalgia associated with drinking cold beverages in the minds of consumers.                                                                                                                                                                                                                                                                                                

Apple 

When the famous company Apple Inc. was established in 1976, it was primarily producing and selling personal computers. The word ‘apple’ denotes fruit that is unrelated to computers or computer parts. After that, the company launched a series of products, such as the iPod, iPad, iPhone, and MacBook. Now it is an iconic example of selling leading technology innovative products with its sleek design and quality products. 

Generic mark 

Generic marks are not considered trademarks. These are the general common words or phrases used to represent a general category of a class of product or service. These words are general words for how we know that particular good or service. These words or phrases have nothing unique about them; anyone in the industry can use the term to describe the goods or services. Since they do not help in recognizing the source of goods or services, these marks are not eligible to get trademark protection from the trademark office. Generic marks are not eligible for trademark protection as they would lead to market monopolies and prevent fair competition between the competitors in the market. 

Characteristics of generic mark

Common terminology

The main characteristic of the generic mark is that it has no uniqueness; rather, it is just the common terminology used that is universally used by consumers to describe the product or service. These are ordinary and everyday words used in everyday language during conversations among people. 

Unable to distinguish brands

As these are the general terms that are used to define a particular product or service if a brand uses them, there will be no difference between the brands in how they distinguish themselves from each other. They do not identify the source of the product or service, and therefore there will be no distinction between the brands. 

Non-eligible for trademark protection 

Generic marks are not eligible for trademark protection from the trademark office under any circumstances. You will be eligible for protection if the mark has some uniqueness or inherent distinctiveness property in it, due to which the origin of the product or service will be determined, but since this is lacking in a generic mark, it is ineligible for protection. 

Inherently weak 

Generic marks are the weakest marks in terms of distinctiveness. Their marks lack quality that helps in identifying the source of the product or service; therefore, they are considered weak and ineligible for trademark protection. These terms will always be criticized by the trademark office as they do not uplift the brand’s value or provide any benefit in any way. 

Famous examples of a generic mark 

“Bag” for bags

The word bag represents the entire product, which is the “bag” here. This is a generic term. A brand can’t consider themselves to keep a mark as a “bag” to sell bags in their company, as this word shows the lowest level of distinctiveness. The word specifies the entire product without giving it any mind-stimulating thought or uniqueness; therefore, it cannot be considered eligible for trademark protection. 

“Perfume” for perfume

The word “perfume” used as a brand name is also considered a generic mark. The word perfume denotes a general fragrance product or cosmetic product that is neither unique in itself nor unique enough to determine the origin of the product. 

“Pizza” for pizza

The general term “pizza” refers to a type of food. The brand should not represent any particular type of food; rather, it should identify the source of that food in the name. 

“Hotel” for hotels

The word “hotel” represents the generic meaning of the word, which is a type of lodging establishment. This mark will not be eligible for trademark protection. It could be eligible if the name indicates a specific hotel chain or brand. 

“Lipstick” for lipstick

If your product is lipstick and you want to be involved in manufacturing, retailing, wholesaling, production, or any other activity related to this product, then your brand name can’t be that of the word “lipstick”. You can choose any other mark, such as a suggestive, arbitrary, fanciful, or acquired distinctive mark. This is to make your mark distinctive and to stand out in the marketplace. 

Difference between suggestive and descriptive marks  

A lot of times, people get confused between the two marks, i.e., suggestive and descriptive marks. There is a misconception that these marks are the same but slightly different. Let’s bust this myth. These two marks are entirely different from each other. Here are some differences between the two of these marks to clarify this doubt:

Basis	Suggestive mark	Descriptive mark
Meaning	A suggestive mark is a mark that provides a hint of the nature or quality of a product or service without describing it. It requires imagination to establish the link between the product and the mark.	A descriptive mark is a mark that describes a feature, characteristic, or purpose of the product or service they are representing directly. It leaves no room for interpretation.
Level of distinctiveness	Suggestive marks are inherently distinctive. These types of marks are eligible for trademark protection and require no secondary meaning to be eligible for protection from the trademark office.	Descriptive marks are non-inherently distinctive. These types of marks are not eligible to be protected under trademark law unless they provide evidence in support or acquire secondary  meaning over time.
Examples	Some popular examples of  suggestive marks are “Netflix”, “Jaguar”, “Coppertone”, and “Twitter”.	Some popular examples of descriptive marks are “Pizza Hut”, “Coca-Cola”, “American Airlines”, and “Burger King”.
Level of protection	Suggestive marks get a higher level of protection than Descriptive marks.	Descriptive marks are comparatively less protected than suggestive marks.
Difficulty in Registration	Suggestive marks are easy to get registered with the trademark office as they are distinctive.	Descriptive marks are difficult to register without evidence or acquired secondary meaning as they lack distinctiveness.
Creativity and imagination	This mark is creative and imaginative as it stipulates the mind of the customer to leave room for interpretation.	This mark leaves no room for consumers to interpret, be creative, or be imaginative, as it describes the product or service characteristics directly.
Impact on consumers	This mark has a positive impact on consumers. It leaves the consumer with curiosity and increases engagement with the brand.	This mark does not have a long-lasting impression on consumers. It is common and customers are less likely to engage with the brand.

Case laws for infringement of trademark distinctiveness 

Coca-cola Co. v. Koke Co. of America (1920)

In the famous case of Coca-Cola v. Koke (1920), the company Coca-Cola sued another Koke Co. of America for infringement of its trademark. Coca-Cola has been using the name “Coke” for its soft drink, which is made up of two active ingredients cola leaves and Kola nuts, since 1886. However, the Koke Co. had been using “Koke” in its name since 1891. The US Supreme Court held that the company was not using the word wrongly to represent the customer’s Coca-Cola company, and hence they can continue using it. 

Bayer Co. v. United Drug Co. (1921)

The case Bayer Co. v. United Drug Co. (1921) is a famous trademark infringement case revolving around the usage of the word “aspirin” in the pharmaceutical industry. Bayer Co. manufactured a pain relieving medicine called acetylsalicylic acid, which they were selling under the name “Aspirin”.  Another pharmaceutical company with name United Drug starts making the same pain-relieving medicine. Later, they were selling it under the same name “aspirin” which was protected by Bayer co. When the case was moved to the Supreme Court the case was carefully explained. They found the word “aspirin” has become a generic term or it has remained distinctive maintaining the source of the manufacturer, which is Bayer Co. here. After careful consideration, the Court held that the word “aspirin” has lost its distinctiveness and now it is a generic term used by customers for pain relieving medicine regardless of its manufacturer. Since the trademark is no longer associated with Bayer Co., it can be used by anyone. Therefore, maintaining its distinctiveness is equally important to prevent it from becoming generic. 

Walmart Stores, Inc. v. Samara Brothers Inc. (2000) 

The landmark case of Walmart Stores v. Samara Brothers (2000) is a popularly known trademark infringement case in the United States related to the fashion industry. This case includes two cloth manufacturing companies. Samara Brothers figured out that Walmart stores are selling clothes that resemble the unique design of their shirts, including their color, design, and pattern. In 2000, Samara Brothers moved to the US Supreme Court to file a complaint for trademark infringement. The Court held that “trade dress” serves as a source identifier and acquires secondary meaning with it; therefore, the mark will be protected. The court also established the rule that trade dress infringement is evaluated based on confusion among customers regarding the same product. In this case, since there was confusion among the customers regarding the product, the court found Walmart’s store to be infringing the trade dress of the company. 

Bliss Salon Day Spa v. Bliss World LLC (2001)

Bliss Salon Day Spa v. Bliss World LLC (2001) is another well-known case of trademark infringement for two companies that use the word “Bliss” in their names. Bliss Salon Day Spa has a local salon and spa business, whereas Bliss World LLC operates in beauty and skincare products that include a wide range of products and services. Both use the word “bliss” in their names, which creates confusion among consumers. The company Bliss World LLC has claimed that using the word bliss by local vendors in the same industry can create customer diversion and impact the reputation of the already established brand. The Court gave the decision in favor of Bliss World LLC, stopping Bliss Salon Day Spa from using the word “Bliss” in its name. The Court’s observation was that the usage of the same word in the same industry will cause consumers to think that there’s a relationship between the two brands, therefore, this should not happen under any circumstance. 

Conclusion

If you also want to create an identity for your brand and establish it successfully in the market, then you need to create a distinctive mark. The USPTO rejects half of its applications due to reasons for non-distinctiveness. The rejection rate is nearly 48.3%, which has declined over the past 5 years. Therefore, it is essential for each trademark applicant to strictly follow the guidelines given by the patent and trademark offices to avoid rejection of their application. There are thousands of products and services on the market these days, and thousands of brands are trying to establish themselves in the market. With the correct strategies and guidance, you can still become one of those big, iconic companies that you dreamed of. Having distinctive marks not only sets your brand apart from your competitors in the market but also acts as a pathway to building customer loyalty, trust, recognition, and other things. The world could be chaotic if there were no protection for the intellectual property rights of businesses and brands. Since it is now available, you can benefit from it. 

In the US, a trademark is protected by both common law and federal law. Common law protection arises when there is use in commerce. On the other hand, federal trademark law provides additional benefits, such as protection at the time of filing a case in federal court or nationwide protection. Today’s world is interconnected. We see brands crossing borders, expanding their network and reach. Therefore, distinctiveness is a must through which they can get legally protected. It is not merely about legal protection but also about creating goodwill that leaves an impression on people. This is a powerful tool for every business that acts as a bridge to connect businesses and customers across various cultures and languages. Understand the requirements carefully, give your brand a distinctive mark, and create a legacy for other generations to come. 

Frequently asked questions on conditions of protection of trademark in the US (FAQs)

What is trademark distinctiveness? 

Trademark distinctiveness is a feature through which a customer recognizes and is capable of identifying the source of goods and services from which they are coming. A distinctive trademark makes it easier for customers to recognize and remember the brand. It is a unique character that sets a brand apart from its competitors in the market. A mark with higher distinctiveness will get the approval of the USPTO quickly and easily. 

Is a distinctive trademark required for brand building? 

Yes, a distinctive trademark is essential for building a brand in the marketplace. As a distinctive trademark helps a brand establish a unique brand identity in the market, it builds customer trust, and attracts loyal customers to the brand. If the customer is satisfied with the products and services a particular brand is offering, they will recognize the brand, and they will likely use the same brand again and again. 

What are some examples of trademark distinctiveness?

Some of the most common examples of trademark distinctiveness are “Apple,”, an arbitrary mark, for computers and electronics items, the mark has no direct connection with the word, making the mark inherently distinctive. Another is “Google”, which is a fanciful mark as it was invented with a word having no precious meaning attached to it. “Jaguar”, associated with luxury automobiles, is a suggestive mark. 

What are the different types of trademark distinctiveness? 

Trademark distinctiveness is categorized into different levels based on its capacity to identify goods and services. The five levels are:- arbitrary mark (existing words with no relation to goods and services), fanciful mark (self-invented words), suggestive mark (mark that suggests rather than describes a product or service), descriptive mark (attain secondary meaning with extensive use), and generic mark (common name of products and services). Each mark has a unique meaning attached to it and has a different level of distinctiveness. Read the above in detail. 

Can a distinctive trademark help with international brand expansion?

Yes, a distinctive trademark helps with international brand expansion. As it helps one easily recognize the brand, it will be easier for customers to recognize the brand in foreign markets as well. This brand can also help gain the trust of international customers. A distinctive mark will boost the confidence of international consumers. A consumer is more likely to use a brand that is already established and recognized globally than one that is only available in their hometown. 

How do I determine if my trademark is distinctive? 

To ensure that your trademark is distinctive, you need to check its inherent distinctiveness. The more inherent your mark is, the better it is for your brand’s recognition. Inherent distinctiveness is fanciful, arbitrary, or coined marks such as “Apple”, “Google”, “Jaguar” etc. If your mark is descriptive, it might lack distinctiveness at the beginning. Conducting a prior trademark search is equally important to ensure that no rights have been infringed. 

Can general terms be registered as trademarks?

No, general terms are ineligible for registration as trademarks as they lack distinctiveness. General terms are general-meaning words and phrases used to describe goods and services by common people. As this does not help in identifying specific goods and services of a brand, it does not fall under the category of distinctiveness. For example, a perfume word cannot be a mark as it describes the product. 

Can I change my trademark if it lacks distinctiveness? 

Yes, if your trademark lacks distinctiveness, you have the option to change it and make it more distinctive. You need to do extensive research before choosing a mark. Once you are done choosing a distinctive mark, you can apply to the USPTO. Keep track of the status of your application to check if it is up to par. Use rebranding to introduce your distinctive mark to customers. Make necessary changes to labels, products, packaging, advertisements, and promotions.  

References

• https://www.uspto.gov/trademarks/basics/what-trademark 
• https://www.law.cornell.edu/wex/trademark#:~:text=Two%20basic%20requirements%20must%20be,power%20to%20 regulate%20 interstate%20 commerce. 
• https://www.law.cornell.edu/wex/Lanham_Act 
• https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-0bf15ce9-7f42-4d7b-9224-c09f64b8c9bc.html 
• https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e1.html 
• https://www.tramatm.com/blog/category/legal/uspto-trademark-application-approval-rate-era-of-decline 
• https://heinonline.org/HOL/Page?public=true&handle=hein.journals/illlr45&div=42&start_page=535&collection=sccjournals&set_as_cursor=0&men_tab=srchresults 
• https://casetext.com/case/bliss-salon-day-spa-v-bliss-world-llc/ 

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.

This article is written by Shreya Patra of Xavier Law School, Xavier University, Bhubaneshwar. This article broadly covers all aspects of the Eighth Amendment in the U.S, the history behind it, and death penalty as cruel and unusual, non-capital punishments (Robinson v. California), jail and prison conditions as cruel and unusual, bail (excessive bail, protective custody awaiting trial, bail for illegal immigrants), landmark cases on the Eighth Amendment like Overton v. Bazzetta, 539 U.S. 126 (2003), and recent cases on the Eighth Amendment like Miller v. Alabama, 132 S.Ct. 2455 (2012), Hall v. Florida, 134 S.Ct. 1986 (2014)

‍It has been published by Rachit Garg.

Introduction

The Eighth Amendment has been in the news in the United States as it holds ground for awarding proportional and humane punishment but has failed to be implemented to this date. The State of Texas is currently facing a lawsuit that has been filed against it by inmates of Texas prisons (facing death row). The lawsuit accuses the prison policy of solitary confinement for an unspecified period of time for all those on death row, among other charges. This clearly violates the Eighth Amendment. The court ultimately dismissed and denied the lawsuit for not checking off all the boxes of the Eighth Amendment.

Similarly, in another case in Texas, an inmate facing nearly three decades of solitary confinement, which is clearly a violation of the Eighth Amendment, was turned away by the Supreme Court of the United States as it had not reached the extent of being called a violation of the Eighth Amendment. 

This showcases to us the fact that the Eighth Amendment is always at a crossroads and is effectively carried out. This recent news has definitely left us shocked, and we cannot help but wonder what the role of the Eighth Amendment is here and how it is related to such instances.

The Eighth Amendment to the United States Constitution is one of the most important pieces of legislation that protects individual rights from government interference. It prohibits the federal government from imposing excessive fines, cruel and unusual punishments, and excessive bail. 

In this blog, we’ll discuss the history of the Eighth Amendment, its implications for the death penalty, non-capital punishments, jail and prison conditions, bail, and landmark and recent cases. We will also cover the implications it will have on the punishments that are going to be awarded in the coming future.

Introduction to the Eighth Amendment

The Eighth Amendment of the United States Constitution was ratified in 1791 as part of the Bill of Rights. It reads: “Excessive bail shall not be required, nor excessive fines imposed, nor cruel and unusual punishments inflicted.” The purpose of the Eighth Amendment is to protect individuals from government interference and protect the right to a fair trial. The Amendment is also meant to ensure that the punishments handed down by the court are fair and reasonable.

The Eighth Amendment protects individual liberties from arbitrary State action. It ensures that the State is not able to inflict excessive and inhuman punishments.   

The United States Supreme Court has interpreted the Eighth Amendment in a number of ways. Most notably, the Court has ruled that certain punishments are considered cruel and unusual, such as the death penalty and non-capital punishments, as well as jail and prison conditions that are deemed to be excessively harsh. The Court has also ruled that excessive bail and protective custody awaiting trial can be considered cruel and unusual punishments.

There are many countries that do not allow the imposition of harsh punishments in order to prevent any inhuman practices. Countries like Croatia, Namibia, Romania, Mozambique, New Zealand, Ireland, etc. have completely abolished the death penalty for crimes occurring in their nations.

History of the Eighth Amendment

The history of the Eighth Amendment is closely tied to the English Bill of Rights of 1689, which was a response to the cruel and arbitrary punishments handed down by the English monarchy. The English Bill of Rights explicitly Stated, “excessive fines ought not to be imposed, nor cruel and unusual punishments inflicted.” This was the first time the phrase “cruel and unusual punishments” was used in a legal context. When the United States declared its independence in 1776, the new nation adopted the English Bill of Rights as the basis for its own system of laws. It is important to note that the founding father and American politician George Mason even suggested adding a clause that they should strive to prevent any cruel and unusual punishment methods in the United States. This became the central part of the Eighth Amendment, which came in the latter years. During the years in which such an Amendment was not in place, the (proposed) Constitution of the United States had no mention of the prohibition of cruel and unusual punishment as there was no Bill of Rights. Thus, during this time, it can be rightly inferred that there was no protection placed on individuals from them, and they could face such inhumane methods of punishment for the crimes they have committed in the United States. 

During the period of absence of such a clause from the (proposed) Constitution of the United States, the federal government was seen as being in a superior position as it had enormous power to punish those using such inhuman methods as there were no restrictions in place for them, thus oppressing and controlling the people. Many of the great American politicians were concerned about the safety and well-being of the citizens of the United States. They also believed that such abuses would continue to put the citizens and the federal government in such a position that people would not be able to freely live their lives while being chained to such thoughts.

The Founding Fathers of the United States added the Eighth Amendment to the United States Constitution in 1791 as a way to protect the right of individuals to a fair trial and to ensure that punishments handed down by the court were not overly harsh. The Founding Fathers of the United States took into consideration several thoughts to ensure that a measure of punishment is given out to individuals who have committed crimes and to prevent cruel punishment for cruel crimes. Such inhumane modes of punishment are excessive. 

Even though there exists a provision that protects individuals from experiencing such inhumane and cruel levels of punishment, it becomes important to address one of the flaws of the provision. The lacuna of this provision is that it does not define exactly what would be classified as inhumane and cruel. Thus, it becomes very vague to distinguish what is and is not inhumane and cruel as a punishment. There are several factors that have to be taken into consideration while deciding on the punishment, which include reasonability and proportionality.

Factors that determine cruel and unusual punishment

Conditions of the prison

The prisons house a large group of inmates, away from society, in special cells to maintain order and discipline, and this helps to reform such individuals. But in order to do so, the conditions of the prisons they are housed in have to be appropriate. Proper sanitation, compensation undertaken by them, a sufficient number of prisoners housed in the prison, and no overcrowding become essential to ensure prison conditions satisfy the court, and in no manner are cruel or harsh punishments prohibited under the Eighth Amendment. 

Proportionality of the sentence 

It is always important for the courts to keep in mind that whenever they provide any sentence, it should be proportionate to the crime. One cannot be given life imprisonment for shoplifting a blanket. This is where the test of proportionality comes in to determine the sentence that must be awarded. In the case of Solem v. Helm, 463 U.S. 277 (1983), the Court elaborately discussed what elements would determine the proportionality of the sentence. These factors can be summed up as follows:

•  The seriousness of the offense
• The brutality of the penalty
• The comparison of sentences awarded in the same jurisdiction for the same crime
• The comparison of the sentences awarded in the different jurisdictions for the same crime

Age of the prisoner

The age of the inmate becomes essential in determining whether awarding any punishment would be a violation of the Eighth Amendment, which prescribes the prohibition of any cruel or harsh punishment. If the inmate is a minor or has not attained legal age as of yet and is given any punishment, the punishment is required to comply with the Eighth Amendment. Thus, the age of the inmate becomes important, as giving a cruel and harsh punishment would not be appropriate. It especially applies in instances where juveniles have been sentenced to the death penalty. Such juveniles approach the court, stating the violation of the Eighth Amendment in their case.

Death Penalty and the Eighth Amendment

The death penalty has long been a controversial issue in the United States. On one hand, some believe that the death penalty is proportionate and appropriate for crimes that disturb the peace and well-being of society; at the same time, others believe it is inhumane, should not be given, and must be abolished altogether. Capital punishment, also known as the death penalty, remains one of the most widely discussed punishments because it is the last resort. The death penalty can be imposed in many ways.

The death penalty is a long standing punishment that has been controversial for being harsh and inhumane enough to end a person’s life for the crime they have committed. The most important objective of criminal law and the death penalty is to deter crime. Deterrence works very simply in the case of the death penalty. Any person who is going to commit a crime that is reasonably worthy of being awarded the death penalty rethinks their decision as there are chances that the person might be put on death row. Often, they dismiss such thoughts and do not take any action in this regard.

Types of Death Penalty

The United States has used several methods of carrying out the death penalty or capital punishment. It ranges from lethal injection to firing squads and death by hanging. Different States allow for different ways in which capital punishment may be carried out by them. The different methods of capital punishment are as follows:

Lethal injection

Lethal injection remains the prime method by which capital punishment is administered. A death penalty through lethal injection involves the inmate being strapped to the bed and administered a single or multiple (often three) injections on the basis of State laws. The injections help to make the inmate unconscious, then cause paralysis, which ultimately results in their death. This method of execution has always been controversial due to the risks of medical hazards and other medical complications if proper measures are not taken beforehand. More than half of the States in the United States authorize lethal injection as capital punishment; that is, 28 out of the 50 total States. Lethal injection is the most widely used method for enforcing the death penalty. There has not been any substantial scientific evidence to show that it is cruel and painful.  This is probably the reason why the Court has continued to support the view that the death penalty does not violate the Eighth Amendment.  

Electrocution

Electrocution is another method by which capital punishment is carried out. In the method of electrocution, the inmate is electrocuted until there are no visible signs of life. Since electrocution causes lots of pain, especially burns to the body, and inmates may showcase signs to escape this discomfort and pain, they are often strapped to the chair to make the process easier. This process is accompanied by a medical practitioner ascertaining whether or not the process actually resulted in the death of the inmate. As many as 8 States in the United States allow for this mode of execution for inmates facing death row, out of which 7 already have lethal injection as the primary mode of punishment for capital punishment. 

Lethal gas

Lethal gas, also known as gas chambers, is another method by which capital punishment is carried out. In this mode of punishment, the inmate is strapped to the chair, after which the room is sealed and chemical gasses that are poisonous are released, which ultimately causes the death of the inmate. Then a medical examiner pronounces death after careful examination of the inmate with a long stethoscope attached to them.

As many as 7 States out of the total of 50 States in the United States allow for it; all of these States have lethal injection as the primary mode of punishment for capital punishment. 

Hanging 

Hanging can be said to be one of the oldest methods of capital punishment that has been carried out for a long time. In this mode of execution, the prisoner is hanged till death. Several things are taken into consideration, including the weight of the prisoner, to ensure immediate death on hanging. The inmate is often tied at the hands and legs and blindfolded to prevent their escape, which involves opening a trap door through which the prisoner falls.

Out of all the 50 States in the United States, only a single State, New Hampshire, has authorized the method of hanging to death as capital punishment as an alternative, and lethal injection remains the primary method of capital punishment. 

Firing squad 

Firing squad is another method by which capital punishment is carried out. In this mode of punishment, the inmate is often strapped to a chair, and his head is covered. A firing squad that has assembled there itself fires rounds of bullets at the inmate at his heart, which is already located by the medical practitioner. After this is done, the medical practitioner plays an important role in locating the heart for the firing squad to shoot at in order to ensure the inmate suffers an instantaneous death due to a huge loss of blood.

A very few States have authorized this method of capital punishment. Out of a total of 50 States in the United States, only 5 have authorized this mode of capital punishment and have it as the primary method of execution, except for one, namely Idaho, Mississippi, South Carolina (secondary execution method), and Oklahoma.

The execution of inmates on death row takes place in many forms. Out of which, lethal injection, which is administered to inmates, remains the primary mode of execution in the majority of the States. But this mode of awarding the death penalty is also subject to several issues, including medical hazards and discrepancies. In comparison to lethal injection, other modes like electrocution, hanging, lethal gas, and firing squads are authorized by States in very small numbers.

Provisions available in the imposition of the death penalty

The process by which an inmate is sentenced to the death penalty is cumbersome. It involves several steps, each of which weighs on whether capital punishment is the only proportionate punishment and if any other alternatives could be sought. The procedure for imposing the death penalty can be classified as follows:

Seeking of capital punishment

The inmate or accused might at times, on their own accord, seek the death penalty instead of suffering a long period of punishment for the crimes they have committed. In the years that the United States has experienced Furman (1972), Gregg (1976), and Coker (1977), lots of questions about the factors determining the death penalty have arisen, highlighting the vagueness of such factors. These factors are very broad, and anything could possibly fall under them, thus making it difficult to decide on them. In addition to that, each State has its own special measures to determine whether the death penalty should be awarded or not.

Sentencing with capital punishment

Sentencing with capital punishment differs from State to State as State policies differ. Out of the total of 27 States that award capital punishment, only 25 allow it if the jury has decided on it. And the rest of the 24 States (exclusive of the 27 States) have a condition that requires the jury to unanimously rule for capital punishment.

There are some States in which the absence of a jury is a requirement, as they follow a different procedure altogether. It is described below for those two States:

Nebraska: In the State of Nebraska, there is a requirement for a unanimous decision to rule for capital punishment by a three judge bench.

Montana: The trial judge has the power in his hands to rule for capital punishment. No other people are involved in this process 

States that require a jury often have additional conditions placed on them. Some of the States that have some conditions are as follows:

Arizona: In front of the jury (different from that which sentenced the accused to capital punishment), a retrial occurs for the capital punishment.

California: Same as Arizona

Kentucky: Same as Arizona

Nevada: Same as Arizona

Indiana: Judge decides the sentence 

Missouri: Judge decides the sentence 

Remaining States: The basic procedure followed is that if all of the jurors agree unanimously for the death penalty, then the death penalty is awarded, and in case if one falls back on such a decision, the death penalty is converted to a life sentence.

Direct review

In the process of trial, if the accused is sentenced to the death penalty, they have a window of opportunity to showcase their innocence by appealing through a direct review. A direct review takes place in the ordinary course of criminal law procedure in the United States. It is necessary to conduct a direct review in order to ascertain whether or not the accused or inmate is truly guilty of the crime they have committed. This is done by examining all the records, evidence, and facts that were presented to them when the case was first brought before them in court. 

The appellate court especially examines the reasoning given by the court and whether such a decision is legally sound. The appellate court also has the power to identify any legal lapses that might have occurred. In order to fix such blunders, the appellate court can take steps and decide on the judgment to be reversed, the sentence to be nullified, or the order for a new hearing for capital punishment to take place once again.

There are times when, upon examination by the appellate court, the accused or inmate is found to have no reasonable connection or nexus to the case or the crime committed. In such instances, the appellate court decides to charge the accused or inmate with acquittal (free of all charges) or not guilty as per their best and reasonable judgment after careful examination. 

In instances where the accused or inmate, after careful examination by the appellate court, is found not to have been awarded the right punishment, that is, the death penalty is not a reasonable and appropriate punishment, then it might award them with the next harshest punishment or any other punishment they deem appropriate for the case. 

State collateral review

Even after the death penalty is affirmed by the respective State court in a case, all hope is not lost for those accused. The accused have an additional remedy available to them. This is known as a State collateral review. A State collateral review is available for all those judgments that  have been finalized. State collateral review is also referred to as State Habeas Corpus. For trials that are related to the death penalty and take place at the level of the State, State collateral review is the first measure that is available to such prisoners. In the case of a federally awarded death penalty, it first goes through a direct review, followed by a federal collateral review, also referred to as federal habeas corpus. 

Since State collateral review is State specific, it differs from State to State. Each State has its own provisions relating to State collateral review. The option of State collateral review is provided to inmates in order for them to raise those issues that were not or could not be raised in the first trial or in the direct review. Often, to prevent loss of time, inmates file their State collateral review during the pendency of the direct review. Sometimes the direct review and the State collateral review are combined to ease the process; this is known as a unitary review.

Federal habeas corpus

Federal habeas corpus is also known as federal collateral review. In the event that the inmate is not satisfied with the decision in the State collateral review, they can seek a federal collateral review. A federal collateral review can only be sought in the federal courts and is confined to those courts. A federal collateral corpus is bound by the Antiterrorism and Effective Death Penalty Act, 1966 (AEDPA) and the very same Act defines and sets its limits. 

Federal collateral review exists for the purpose of ensuring that the State has carried out its own collateral review as per due process of law. It is also tasked with keeping in check that the constitutional rights that are available to the inmates are not violated in any manner. Federal collateral review allows the inmate to bring forward any evidence that could prove his innocence. It is important to note that very few federal collateral reviews result in the successful acquittal of the inmate. 

Thus, these are the different provisions available to those inmates who wish to seek capital punishment or have already been sentenced to the death penalty and are on death row and hope to voice themselves out once again before the court.

History of death penalty

The evolution of the death penalty can be broken down into three periods, namely:

1. Before 1972
2. After 1972
3. Current status

Before 1972

Laws were loosely framed, and thus many records point to the fact that the death penalty by firing squad in the early 1600s was one of the very first of its kind. The death penalty was carried out as a common method of punishment to ensure and maintain peace in society. 

It was much later, in 1789, after the adoption of the Eighth Amendment, that the need to prevent harsh punishments was highlighted. But it was not long before the Fifth Amendment of 1791 hinted at the fact that such harsh punishments could be given so long as they had the approval of the grand jury. Consequently, the Fourteenth Amendment in the year 1868 made it difficult for the Fourteenth Amendment as it 

In 1972, the United States Supreme Court ruled in Furman v. Georgia that the death penalty was a cruel and unusual punishment and thus unconstitutional under the Eighth Amendment. This decision effectively ended the death penalty in the United States. In the case of Furman v. Georgia, 408 U.S. 238 (1972), it was held that awarding the death penalty would be a clear violation of the Eighth Amendment. Thus, it was invalidated by the court. The Court also highlighted how the death penalty is being used to discriminate against marginal sections of society and fails to be a proportional punishment for any crime against society.

But this decision did not hold ground for long; with growing sentiments towards awarding harsh punishments for deterrence of crime and protection of society, it was evident that it would be reversed in the coming few years.

After 1972 – Restoration of death penalty

It was not long after Furman (1972) that its decision was reversed in 1976. In the case of Gregg v. Georgia, 428 U.S. 153 (1976), it was held that there is no need to declare the death penalty unconstitutional. The death penalty as a punishment serves the purpose of criminal law, which is deterrence. The Supreme Court reversed its decision in 1976, when it ruled in Gregg v. Georgia that the death penalty was not always a cruel and unusual punishment and could be allowed in certain cases. Since then, the death penalty has been legal in the United States.

These two stages showcase the shifting moral compass of the United States. It also clearly showcases that the United States was not all set on punishing criminals by using such harsh methods of punishment as capital punishment, and that will be evident in the coming years through several cases they have heard and several judgments they have put forth.

Current status – deed of the hour: proportionality

Proportionality becomes the most important factor in determining whether capital punishment should be awarded or not. The role of proportionality is to set a level of balance with the crimes that have been committed against society. It ensures that the capital punishment awarded serves its purpose by being a proportional punishment for the crime that has been committed.

In the case of Coker v. Georgia, 433 U.S. 584 (1977), it was highlighted that proportionality is the need of the hour in cases of punishments that are of the nature of capital punishment or the death penalty. The penalty must be in proportion to the crime that has been committed; otherwise, it would be a clear violation of the Eighth Amendment, which aims to prohibit the issuance of harsh and unusual punishment. 

The following factors were developed in order to conduct the test of proportionality:

• To take into account the gravity of the offense and severity of the punishment
• To take into account how  other criminals accused of same offenses are punished by other jurisdictions
• Take into account how other criminals are punished by their respective jurisdictions

In the case of Baze v. Rees, 553 U.S. 35 (2008), two prisoners who were put on death row filed a case in this regard, stating that being put on death row using lethal injection would be a direct violation of the Eighth Amendment, which prohibits harsh and cruel punishment of any sort. The court also looked into the question of what would be the scope of lower courts with regard to the death penalty. It specifically highlighted the fact that there is a need to adjudicate whether lethal injection would be a violation of the Eighth Amendment. In this case, it was held that such a form of death penalty would be the most humane form of death penalty, subject to the condition that it is carried out with necessary precautions and measures. Regardless of the measure and severity of carrying out the punishment, pain is bound to occur and be inflicted on the inmate. Thus, it was ultimately held that this form of death penalty, that is, lethal injection, satisfies the Eighth Amendment, and there is no violation here. And thus, Baze v. Rees in 2008 finally ruled that the use of lethal injection was not a cruel and unusual punishment.

Thus, the evolution of the death penalty has always been intriguing, essentially because it has always bounced between being constitutional and unconstitutional over the span of several years and is still in controversy because the arguments of both sides on this issue are valid and reasonable.

Persons ineligible for capital punishment

There has been a great hue and cry to exclude certain categories of people from being considered for capital punishment or the death penalty. They can be categorized as follows:

Child that survives rape

No death penalty or capital punishment is awarded in cases where the child who has been raped survives. This has also been highlighted in the case of Kennedy v. Louisiana, 554 U.S. 407 (2008), which is an extension of Coker v. Georgia, 433 U.S. 584 (1977), where it was held that no capital punishment or death penalty would be awarded in cases of child rape given that the child survives. It has been categorically held in this case that awarding the death penalty is not a proportionate punishment for the crime. Only six States in the United States allow for the death penalty or capital punishment. They are as follows:

• Georgia
• Louisiana
• Montana
• Oklahoma
• South Carolina
• Texas

Those facing sentences held without jury

Those facing a sentence that is held without a jury must not be subject to capital punishment or the death penalty of any kind. The same was held in the case of Ring v. Arizona, 536 U.S. 584 (2002). In this case, the fact that the jury’s presence must be guided by the facts and circumstances of the case and the criminal, in addition to an individual sentencing by the court, makes the criminal law process complete. In the absence of a jury and the presence of the judge, a sentence of capital punishment would make the sentence unconstitutional.

The aggravated factors discussed in the above case were further highlighted and elaborated in the case of Brown v. Sanders, 546 U.S. 212 (2006), where it was held that the sentence becomes invalidated if the jury finds anything that makes the invalid factor valid.

Those intellectually challenged or developmentally disabled individuals facing sentences 

Those individuals who have disabilities of an intellectual or developmental nature are exempt from facing a sentence of capital punishment or the death penalty. In the case of Atkins v. Virginia, 536 U.S. 304 (2002), it was stated that such individuals have disabilities that may be cognitive or intellectual, and this lessens their understanding and severity of the crime. And therefore, it would be severely disproportionate to award the death penalty or capital punishment, and awarding it would be harsh and inhumane.

An extension of the case discussed above is the case of Bobby v. Bies, 556 U.S. 825 (2009). In this case, it was held that it is necessary to conduct a few hearings to determine the mental State and intellectual development of prisoners in order to ascertain the disability claims made by prisoners facing death row. This helps to determine whether they fall into the category of individuals eligible for capital punishment or not. In the case of Hall v. Florida, 572 U.S. (2014), an inmate named Hall was sentenced to death row for the rape of the deceased victim and the murder of the deceased victim and another police officer. Hall basically challenged Atkins v. Virginia, 536 U.S. 304 (2002), which reasoned that those who are disabled intellectually should not be put on death row, but in Hall, it was deemed that such a threshold that was set is unconstitutional. It was held that measuring one’s IQ would not be an appropriate measure to determine intellectual disability, which helps to decide the eligibility of a person to be brought to death row. 

Those individuals who are juveniles facing sentences 

There has always been a need to protect those individuals who are below the legal age but facing charges against them. Such minors are referred to as juveniles, as they are facing charges similar to what an adult would have faced, if not for their age.

In the case of Roper v. Simmons, 543 U.S. 551 (2005), it was highlighted that a teenager does not have the understanding or maturity that an adult would ordinarily possess. They are at a stage of growth and development and any influences of negative nature could have possibly triggered the situation they are in. And thus, they cannot and should not be held accountable for their crimes to the extent that they would face capital punishment in any manner. The Supreme Court has since ruled on a number of cases involving the death penalty, including Roper v. Simmons in 2005, which ruled that the death penalty was unconstitutional for juveniles. 

Thus, such individuals are exempt from facing any capital punishment or death penalty. If they are sentenced to capital punishment, they can approach the court, as it would be a clear violation of the Eighth Amendment. 

Non-capital punishments and the Eighth Amendment

Non-capital punishments, such as imprisonment, are subject to the same standards as the death penalty under the Eighth Amendment. In Robinson v. California, a landmark case from 1962, the Supreme Court ruled that States could not impose cruel and unusual punishments on people who had not been convicted of a crime. In the case of Robinson v. California, 370 U.S. 660 (1962), Robinson used narcotic drugs occasionally when he was with his friends. He was arrested on the basis of the statute of the State of California, and later a case was filed in this regard. On expert examination, certain scabs and scars were produced as evidence in court, but nothing was reasonable enough to prove his arrest was necessary to protect the interests of society or that he would be a danger to society. Thus, his conviction failed as the State of California did not satisfy the court with their reasons for the arrest. Also, the location of such use of narcotic drugs was not presented accurately by the State of California. It was held that such an arrest on the basis of one’s addiction to drugs would not amount to such harsh punishment. In addition to that, it is important to note that Robinson was not involved in the illegal trade of drugs in the State of California. 

The Court reasoned that non-capital punishments, such as imprisonment, must also be proportionate to the crime committed and not be overly harsh. The Court also noted that long-term jail sentences for minor offenses could be considered cruel and unusual punishments.

Jail and prison conditions as cruel and unusual punishment

The Eighth Amendment prohibiting cruel and unusual punishment does not only extend to the death penalty or capital punishment but also extends to jail and prison conditions for inmates. Jail and prison act as places where inmates can focus on reforming themselves, detaching themselves from the very behaviors and actions that put them there in the first place, and learning to become acceptable humans before getting back into society. Jails and prisons are special places that house such individuals all in one place. 

In order to truly invoke such behavior amongst the inmates housed at the jail or prison, it becomes necessary to provide them with the proper resources that allow them to feel like humans again. These proper resources are the basics like food, water, sanitation, and health facilities. In a number of cases, the court has held that prisoners have a right to adequate food, shelter, and medical care and that prison conditions must be humane and not excessively harsh. The extent of jail and prison conditions that would or would not amount to the violation of the Eighth Amendment can be understood through the following cases:

Unfair environment, management and violation of constitutional rights of prisoners

In the case of Holt v. Sarver, 300 F. Supp. 825 (E.D. Ark. 1969), the inmates of the prison named Cummins Farm Unit filed a suit against the prison for its management and unfair environmental confinement, and additional violations of the very constitutional rights that should be made available to every prisoner. The case was brought before the court on the basis of Section 1983 of Title 42 of United States Code. Three different petitions were filed by them. The first grievance of the inmates was the existence of the isolation cells, which was a clear violation of the Eighth Amendment and did not meet the standards of no cruel or harsh punishment to be undertaken to protect the inmates. Such confinement to isolation cells led to the neglect of mental and physical health, along with other basic amenities. In response to the three petitions filed before the  court, the court decided to order injunctive relief. The commissioner of the prison was directed to produce a report before the court stating all the actions they have taken in order to solve this issue with the inmates. The grievances and reports continued to point towards a negative and unsatisfying outcome, and hence the case was not dismissed.

Prolonged working hours and other violations

The same case continued to be brought to court. In addition to the previous three petitions, an additional five petitions were filed, making it a total of eight petitions, and this came to be known as Holt v. Sarver, 309 F. Supp. 362 (E.D. Ark. 1970), against both Cummins Farm and the Tucker Intermediate Reformatory. The inmates questioned the reformatory methods by highlighting their prolonged working hours in the fields, and no monetary compensation was provided for this work in the fields, thus violating an additional Amendment, that is, the Thirteenth Amendment. For the violation of the Thirteenth Amendment, the Court was of the clear view that there was an imposition on the inmates to work under such harsh conditions in the field, and they did not want to do so. Thus, it is not a clear violation of the Eighth Amendment in any manner. On examination of the prison, it was found that the prison was also in violation of the Fourteenth Amendment. The prison was found to violate the Fourteenth Amendment and the Eighth Amendment. It was found that the harsh and unusual punishment that is prohibited under the Eighth Amendment is not only limited to an individual but can also extend to groups of individuals.

Restrictions on visitation rights and harsh prison and jail policies

In addition to the punishments themselves, the Supreme Court has also ruled that jail and prison conditions can be deemed as cruel and unusual punishments under the Eighth Amendment. But the same was not satisfied in the case of Overton v. Bazzetta, 539 U.S. 126 (2003). In this case, the inmates of the Michigan Department of Corrections (MDOC) were faced with restrictions on their visitation after the growing number of substance abuse cases among them, which concerned the security of the institution, and they were also unable to handle the large number of visitors. As per the changes made  by the corrections department, including the attorney, authorized people like minor children accompanied by a family member or guardian would be allowed to visit the inmate. In addition to that, certain inmates had no visitation rights, and some of them had only attorney visitation rights. The court examined the policies set by the Michigan Department of Corrections (MDOC) for the inmates closely, including the difference in visitation rights amongst inmates on the basis of the severity of their crime, which was an additional bias. In the landmark case of Overton v. Bazzetta, the Supreme Court ruled that prison officials could not restrict the visitation rights of prisoners without due process. The Court noted that such restrictions could be deemed as cruel and unusual punishments and are thus unconstitutional. The court also highlighted the fact that such bans on the visitation rights of the inmates isolate them from exercising the constitutional rights that should be made available to them regardless of the situation. 

Imprisonment to life on parole for juvenile 

In the case of Graham v. Florida, 560 U.S. 48 (2010), a juvenile named Graham was charged with armed burglary and attempted armed robbery. During the trial, he was a minor, but he was tried as an adult. During his probation, he breached the conditions put on him and went on to commit crimes once again; thus, this time he was arrested and sentenced again, but not just to a prison term but to life imprisonment without any parole (release on conditions). In this regard, a case was brought before the court related to the fact that there is no compliance with the Eighth Amendment.

After the court carefully examined the case, it held that without parole, the inmate cannot be imprisoned for life, especially as a juvenile, as this would amount to a violation of the Constitution itself and is prohibited by it. In the instances where an individual is sentenced to life, they have to be given some ray of light by being allowed to avail themselves of the option of parole.

Unneeded beating of inmates housed in prison

In the case of Ingraham v. Wright, 430 U.S. 651 (1977), a minor student was accused of not exiting the stage on time and soon enough when he was required to. He knew this accusation was wrong and defended himself when he was called in to the principal’s office, but on hearing about his punishment, he accepted it regardless, but then the teachers restrained him and spanked him. This gave him bruises, which led to him requiring immediate medical help. The court understood the parents and child’s plight and was of the view that such corporal punishment was definitely a violation of the Eighth Amendment and did not satisfy the prohibition against unusual and harsh punishment being inflicted. 

Beating of inmates housed in prison – allowed if it is for bona fide purpose

In the case of Whitley v. Albers, 475 U.S. 312 (1986), a fight broke out in the prison. A few inmates stepped up to put an end to it. The guards grew anxious about the crowd, and in the process of settling them, they fired shots, one of which hit one of the inmates trying to stop the fight. While it was strongly argued here that the lives of inmates were put at stake with the shots being fired at them by the guards, we cannot forget about the fight that broke out there. 

The guards, in carrying out their duty, fired shots to control the huge crowd that had already gathered and became difficult to control. To prevent any further mishaps and to impose discipline back in the prison, such shots were fired. The guards did not have any malicious intention of hurting or inflicting pain on any of the inmates and just wanted to break off the fight and impose discipline. Thus, it was held that in instances where there is bona fide intention present, it would be constitutional to take up such measures that are ordinarily unconstitutional.  

Violation of Eighth Amendment – cruel punishment 

In the case of Hope v. Pelzer, 536 U.S. 730 (2002), the prisons in Alabama had a form of punishment known as the hitching post. It was a pole, to which, on the basis of receiving such punishment, they are tied using handcuffs, required to remain standing during the entire duration of this punishment, and often denied basic amenities required for one’s survival. This was the nature of the punishment. One such inmate, Hope, had already completed his first such punishment at the hitching post. Much later on, he received another punishment at the hitching post, where he was teased and not treated appropriately, not given water by throwing the bottle on the ground, refused any breaks to the toilet, and forced to get burned under the sun. 

Subject to the actions and behavior of the guards, Hope took legal action against them by filing under Section 1983 of Title 42 of the United States Code. It was held that in the present case, the use of the hitching post to punish inmates is definitely a violation of the Eighth Amendment. And carrying forward this punishment would clearly be a violation of the prohibition of cruel and harsh punishment under this very Amendment. 

Nature of injury does not determine violation of Eighth Amendment 

In the case of Hudson v. McMillian, 503 U.S. 1 (1992), an inmate suffered from different bruises due to the infliction of injuries on his face, teeth, etc., by the guards of the prison. While the inmate suffered injuries due to the beating by the guards and filed the case on the grounds of violation of the Eighth Amendment. The opposing party pleaded that there was no excessive force or injury that would result in the standing of such a case in front of the court, and thus this case would not prevail before the court due to the lack of severity of the same. The court decided that the severity of injuries caused or inflicted is not an important factor in determining whether the Eighth Amendment has been satisfied. Regardless of the injuries caused and the severity of the injury inflicted, this case is a clear violation of the Eighth Amendment. 

Deliberately showing indifference to the prisoners and inmates

In the case of Estelle v. Gamble, 429 U.S. 97 (1976), an inmate was tasked with the manual labor of unloading items off of a truck. When he was engaged in such work, he injured his shoulder. Even though he had injured himself and there was a valid reason for him to refuse any additional work imposed on him, he faced segregation by the administration of the prison. He filed a case for lack of medical attention and other violations that do not satisfy the Eighth Amendment. The court held in this particular case that there is indifference to the prisoners and inmates housed in the prison, and thus this is a clear violation of the Eighth Amendment. Additionally, the court Stated that denying such medical attention is the denial of basic amenities that should be made available to an individual, which appears to be deliberate in this case.

Excessive number of prisoners in prison

In the case of Brown v. Plata, 131 S.Ct. 1910 (2011), a connection was drawn to several other cases and violations that are yet to be decided and finished being deliberated upon. This case faced and addressed several questions regarding the number of inmates and prisoners housed in prisons and questioned the systemic nature of discipline that can be maintained in such prisons if the number exceeds the estimate that they can house with them. This case highlights the fact that the California prison system was already facing overcrowding in its prisons, and the number was twice what it could hold. The court observed the issues that would arise from managing such a large number of prisoners and inmates if they did not have the capacity for the same. So, the prison was directed to reduce the number. The reduction has to be done to the satisfaction of the court without violating any of the provisions in a safe and efficient manner.

Bail and the Eighth Amendment

The Eighth Amendment prohibiting any harsh and cruel punishment does not only extend to the death penalty or capital punishment; it also extends to the provision of bail made available to the inmates. But it is important to understand what bail exactly is first. Bail is basically the amount of money paid to the court as a security, which guarantees their appearance in court on a later date (that is also set by the court itself). It is important to note that the law as contained under Section 3142(d)(2) of Title 18 of the United States Code) excludes certain categories of individuals from claiming the provision of bail.

The Eighth Amendment stands to prevent any excessive bail from being imposed on the inmates. The same fact was highlighted in the case of United States v. Motlow, 10 F.2d 657 (1926). In this case, excessive bail was issued, and thus the court ruled this was in violation of the Eighth Amendment. Charging such a high amount of bail acts as an outright denial of bail, as many do not have the means to deposit such an unreasonable amount.

The Supreme Court has also ruled on bail and its implications for the Eighth Amendment. In a number of cases, the Court has held that excessive bail can be deemed as cruel and unusual punishment. This means that the court must take into account factors such as the defendant’s financial situation when setting bail. Bail is such a provision that should not be out of reach for those individuals who cannot afford it, but rather it should be a safety net to ensure that all those individuals comply with the provisions and present themselves before the court when requested to appear.

The Court has also ruled that protective custody awaiting trial can be deemed as cruel and unusual punishment, as it can deprive a defendant of his or her right to a fair trial. In addition, the Court has ruled that bail cannot be denied to illegal immigrants, as this could be deemed as cruel and unusual punishment. Regardless of the case or situation, it is important to note that excessive bail is not to be imposed on anyone except if they appear to flee the country or fulfill any exceptions laid down under Section 3142(d)(2) of Title 18 of the United States Code.

Landmark Cases of the Eighth Amendment

Over the years, the Supreme Court has decided a number of landmark cases involving the Eighth Amendment. In the case of Furman v. Georgia, the Court ruled that the death penalty was a cruel and unusual punishment and, therefore, unconstitutional. In Robinson v. California, the Court ruled that States could not impose cruel and unusual punishments on people who had not been convicted of a crime. Especially in this case, California had arrested a person facing a drug addiction as per the statute of California. He had not even been involved in illegal drug trading for any question of his arrest to be raised. This case was a clear violation of the Eighth Amendment.

In Baze v. Rees, the Court ruled that the use of lethal injection was not a cruel and unusual punishment. The final decision laid down by the court clearly indicates that lethal injection does not violate the Eighth Amendment, which prescribes that no form of inhumane or cruel punishment must be awarded and that lethal injection satisfies the Eighth Amendment.

The case of Overton v. Bazzetta looked into the visitation rights of the prison, including other prison policies that prevented inmates from availing themselves of visitation rights altogether. The court listened to both sides of the argument and was of the view that this was unconstitutional and a clear violation of the Eighth Amendment. And in Overton v. Bazzetta, the Court held that prison officials could not restrict the visitation rights of prisoners without due process.

Recent cases of the Eighth Amendment

In recent years, the Supreme Court has decided a number of cases involving the Eighth Amendment. In the case of Miller v. Alabama 567 U.S. 460 (2012), the case of Graham v. Florida (2010) was further discussed. In Miller v. Alabama, the Court ruled that the death penalty was unconstitutional for juveniles. The court further highlighted that they are of the same view in this case as they were in Graham v. Florida. The court stated clearly that the juveniles are mandatorily to be provided with the provision of parole if they have been sentenced to life. 

In Hall v. Florida, the Court held that a standard IQ test could not be used to determine whether a defendant was mentally competent to stand trial. Hall v. Florida clearly laid out the fact that one cannot gauge the nature and severity of disabilities or in any manner determine whether they are true or not using IQ as a measure for this. And thus, it would not be appropriate to mention IQ in any case or set it up as a standard test of measure.

The Eighth Amendment’s scope is vast, and the same is visible in the case of illegal immigrants. The Court has recently decided a number of cases involving excessive bail and the right of illegal immigrants to bail. In these cases, the Court has held that excessive bail and the denial of bail to illegal immigrants can be deemed as cruel and unusual punishments. It can be noted that during COVID-19 when many resources were scarce across countries, there was an influx of illegal immigrants hoping to gain better access to resources, especially medical facilities. 

Implications of the Eighth Amendment

The implications of the Eighth Amendment are far-reaching. It has been used to protect the rights of individuals from government interference, to ensure that punishments handed down by the court are fair and reasonable, and to protect prisoners from excessively harsh conditions.

The Supreme Court has used the Eighth Amendment to protect the rights of juveniles and illegal immigrants, to ensure that the death penalty is used only in certain cases, and to ensure that non-capital punishments are not overly harsh.

There are several future implications that the Eighth Amendment would have and that have to be considered in order to set some other measures that would help to determine whether or not the Eighth Amendment is applicable to the punishment. They are as follows:

• Evolution of standards of decency

Over the years, there has been an evolution in the standards of decency. What was previously considered immoral and indecent is no longer seen from the same perspective. Perspectives and thoughts change over time, and the same should be applied in interpreting the Eighth Amendment.

• Proportionality 

Proportionality has been and should remain an important factor in adjudicating matters related to the Eighth Amendment, as it stands to be a true test. It is as simple as the crime and the punishment being proportionate to each other and not going beyond that. 

• Test between objectivity and subjectivity

There has always been a tussle between objectivity and subjectivity in matters related to the Eighth Amendment. Here, it becomes important to include both of them rather than just one because there cannot always be just one right answer or one wrong answer. The judgments have to cumulatively consider each and every factor before arriving at a conclusion.

• Comparison on an international level

There should be a comparison of the same crimes and the punishments awarded for them in order to determine whether it is appropriate to award the death penalty or not. There can be certain nations where the accused is awarded the death penalty for a crime, whereas in the United  States it is not. So this can be used as a measure to determine whether awarding the death penalty would be a stretch or not.

• Originalism v. Living Constitution

It becomes very difficult to keep the constitution and the legal provisions stagnant because they do not meet current standards. Therefore, it is essential that we ensure that the legal provisions present in the Constitution and the current trend are fully implemented to ensure their effective and efficient use.

Conclusion

The Eighth Amendment of the United States Constitution is one of the most important pieces of legislation that protects individual rights from government interference. It prohibits the federal government from imposing excessive fines, cruel and unusual punishments, and excessive bail. The Supreme Court has used the Eighth Amendment to protect the rights of individuals from government interference and to ensure that punishments handed down by the court are fair and reasonable. The Eighth Amendment stands to ensure that there is no violation of the legal provisions and that there is no unusual or harsh punishment that is awarded to such individuals.

It is clear that the Eighth Amendment is a vital part of our legal system and essential for protecting the rights of individuals. It has been used to protect the rights of juveniles, illegal immigrants, and prisoners, as well as to ensure that the death penalty is used only in certain cases. 

However, the interpretation of the Eighth Amendment is certainly a difficult task. What constitutes a ‘cruel and unusual’ punishment cannot be clearly defined. It is a dynamic concept that varies from time to time and place to place. Earlier, death penalties were considered necessary to protect society from the most dangerous criminals. However, with the advancement of human rights laws, the death penalty is often regarded as a cruel and inhuman punishment.

Frequently Asked Questions (FAQs)

What is the Eighth Amendment?

The Eighth Amendment to the Constitution of the United States talks about three things. The first point it raises is that bail in excessive amounts should not be required to be charged to any individual. The second point it raises is that there should not be excessive fines for individuals and thirdly, the nature of the punishment inflicted should neither be cruel nor inhumane

Is the Eighth Amendment still actively applicable in the United States?

Yes, the Eighth Amendment is applicable in the United States. It is mandatory for the States to comply with the Eighth Amendment. 

Can a case be filed in court for violation of the Eighth Amendment?

Yes, a case can be filed in court for violation of the Eighth Amendment. It was adopted by the United States Constitution in 1791 and, since then, has become a pertinent part and works as a check and balance by preventing any punishment awarded from exceeding its limit.

References

1. https://constitutioncenter.org/the-constitution/Amendments/Amendment-viii/clauses/103#:~:text=The%20Eighth%20Amendment%20to%20the,as%20the%20price%20for%20obtaining 
2. https://constitution.congress.gov/browse/Amendment-8/ 
3. https://kellerlawoffices.com/cruel-unusual-punishment/ 
4. https://www.govinfo.gov/content/pkg/CDOC-110hdoc50/pdf/CDOC-110hdoc50.pdf 
5. https://www.usnews.com/news/best-States/texas/articles/2023-01-26/texas-death-row-inmates-sue-over-solitary-confinement
6. https://www.usnews.com/news/us/articles/2023-04-17/u-s-supreme-court-turns-away-suit-by-texas-inmate-held-27-years-in-solitary-confinement
7. https://www.law.cornell.edu/wex/death_penalty 
8. https://supreme.justia.com/cases/federal/us/408/238/
9. https://supreme.justia.com/cases/federal/us/433/584/ 
10. https://supreme.justia.com/cases/federal/us/554/407/ 
11. https://www.law.cornell.edu/supremecourt/text/01-488
12. https://www.law.cornell.edu/supremecourt/text/04-980
13.  https://www.law.cornell.edu/supct/html/00-8452.ZD1.html 
14. https://deathpenaltyinfo.org/executions/lethal-injection 
15. https://deathpenaltyinfo.org/executions/methods-of-execution/description-of-each-method 
16. https://www.justice.gov/archive/dag/pubdoc/deathpenaltystudy.htm#broadeningthescope 
17. https://supreme.justia.com/cases/federal/us/539/126/ 
18. https://supreme.justia.com/cases/federal/us/370/660/
19. https://deathpenaltyinfo.org/policy-issues/deterrence
20. https://supreme.justia.com/cases/federal/us/553/35/ 
21. https://law.justia.com/constitution/us/Amendment-08/15-prisons-and-punishment.html 
22. https://www.law.cornell.edu/uscode/text/42/1983
23. https://law.justia.com/cases/federal/district-courts/FSupp/300/825/1820796/ 
24. https://law.justia.com/cases/federal/district-courts/FSupp/309/362/2096340/ 
25. https://constitution.congress.gov/constitution/Amendment-13/ 

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.

This article is written by Shreya Patra of Xavier Law School, Xavier University, Bhubaneshwar. This article broadly covers all aspects related to remedies one can seek in various cases of trademark infringement in the United States. It also covers the preventive measures one should take in order to prevent any trademark infringement from happening. 

It has been published by Rachit Garg.

Introduction

Trademark infringement is a serious and growing problem in the US. It is a type of intellectual property infringement where a person or company uses a trademark that belongs to someone else without their permission. This can lead to confusion between two brands, create a false impression of the original brand, and cause damage to the original brand’s reputation. In this article, we’ll explore some of the remedies available for trademark infringement in the US and strategies to combat it. Trademarks are those distinct intellectual properties that are represented by either a symbol or word(s) or emblem that help to identify goods and services.

Trademark infringement is a serious issue. It occurs when someone uses a trademark belonging to another person or company without their permission. This can include using a similar or identical name, logo, slogan, or other identifying features of the original trademark.

Laws against trademark infringement in the United States solely focus on providing benefits to the owner of the trademark. This is to ensure the continued creation of their unique products with no compromise on quality. It also provides disincentives for those who take advantage of such trademarks and create cheaper copies of such products, which ultimately affect the image of the trademark products and the trademark owner.

The US trademark law provides a number of remedies for those who have been victims of trademark infringement. This includes the right to seek an injunction, damages for profits, damages for counterfeiting, damages for cybersquatting, and other forms of relief.

Categorization of remedies available

There are different types of remedies available for trademark infringement in the United States. which are broadly categorized as follows: 

Remedies of trademark infringement under civil laws

In instances of trademark infringement, there are several remedies available. These remedies differ from one another and strive to ensure that the injured party is compensated for the loss and damages. The objective of providing monetary compensation firsthand in cases of trademark infringement is to help reverse the damages suffered and bring the victim back to the position they once were in as if they had never suffered any injury. The civil remedies available are as follows: 

• Monetary compensation 
• Permanent injunction 
• Preliminary injunction
• Temporary restraining order 
• Compensation equal to profits earned by infringement 
• General Damages 
• Treble Damages
• Statutory Damages
• Injunction for injury caused due to counterfeiting
• Statutory Damages for cybersquatting
• Order for suspension
• Order for restoration or transfer to original owner

All the civil remedies available are drawn from the legal provisions, which differ from State to State in the United States. The same has been discussed below in a detailed manner.

Remedies of trademark infringement under the criminal law

Trademark infringement does not merely amount to a breach of Civil Law, but it is also a criminal offense. The Lanham Act, which is the Federal Law, does not discreetly have any provision for awarding punitive damages. However, some state laws do have their own provisions for awarding punitive damages. Under Section 2320 of Title 18 of the United States Code, anyone who traffic goods or services that are counterfeit would be fined, imprisoned or both, depending on the order of the Court. 

Understanding Injunctive Reliefs

Injunctive relief is the most common form of relief sought in cases of trademark infringement. It is an order from the court requiring the defendant to stop infringing on the plaintiff’s trademark. This can include an order to cease and desist from using the trademark, an order to stop using the trademark in certain ways, or an order to turn over any profits made from the infringement.

Injunctive relief is particularly important for trademark infringement because it is a form of protection for the plaintiff. If the defendant does not comply with the court’s order, they may be subjected to further legal action, such as criminal prosecution or contempt of court.

Injunctive reliefs are the most sought-after form of relief because they allow some relief to the trademark owners and guarantee the protection of the products that carry such trademarks through a court order or direction. This prevents further distribution or creation of the product, helps the owner avoid facing any further losses, prevents the quality of the trademarked product from diminishing further, and keeps the image of the trademark intact. Injunctive relief can be found in Section 1116 of Title 15 of the United States Code, which deals with all trade and commerce-related aspects of the law in the United States.

It is important to note that the person seeking the injunction should furnish all certified copies of documents like proof of trademark ownership and trademark license for use, to the Court to streamline the process of granting an injunction. The person should also ensure that the court has the jurisdiction to grant an injunction in the matter. 

Steps to seek injunctive relief

The plaintiff is entitled to file for injunctions of three kinds, namely:

Permanent injunction for trademark infringement

A permanent injunction is the most extreme form of injunction. It acts as a cease-and-desist notice. It is issued through a court order that directs the party to stop doing any activities that are linked to the infringement of a trademark and is issued at the last stage of the court proceedings. When the money awarded is not enough to adequately restore the damages caused, only then do the Courts pass an order of permanent injunction. Failure to act in accordance with a Court’s order of injunction attracts contempt of the Court.

In the case of Weinberger v. Romero-Barcelo (1982), after careful consideration, a four-step test was devised that helped determine whether the plaintiff was entitled to get a permanent injunction. The four steps can be summarized as follows: 1) the infringement has caused irreparable injury to the plaintiff; 2) other reliefs available to the plaintiff are not sufficient to make up for their loss; 3) the obstacles both parties face must be taken into account and weighed; 4) granting such an injunction should not cause any injury to society at large or hurt their interests.

Preliminary injunction for trademark infringement

A preliminary injunction is very different from a temporary restraining order or even a permanent injunction. As the name suggests, it is granted before the court arrives at its final judgment, and it can be granted at any stage of the trial after a formal hearing and before its conclusion. To determine whether a preliminary injunction should be granted or not, it is important to draw our attention to an important case, Winter v. Natural Resources Defense Council, Inc. (2008), wherein the Supreme Court of the United States highlighted that it is important to satisfy that there has been irreparable harm that would continue if not for an injunction; the plaintiff’s hardships should outweigh that of the other party’s; and the injunction should be in favor of the public interest. 

The case of Winter v. Natural Resources Defense Council, Inc. laid down a balancing test very similar to Weinberger v. Romero-Barcelo, but for a preliminary injunction. Such an injunction is subject to denial by the judge, which is known as an interlocutory order. Such interlocutory orders are appealable and known as interlocutory appeals. A preliminary injunction is issued as per Rule 65 of the Federal Rules of Civil Procedure. The state rules related to preliminary injunctions vary between states and can be classified as follows:

State Laws	States
Rules of Civil Procedure	AlabamaNorth Carolina
Code of Civil Procedure	Alaska CaliforniaWyoming
Courts and Civil Proceedings	Arizona
Civil Procedure Generally-Title 16, Subtitle 5	Arkansas
Colorado (searchable index)	Colorado
Civil Process, Service and Time for Return	Connecticut
Civil Procedure	Washington, DCIllinoisIndianaKentuckyMassachusettsMichiganMinnesotaMontanaNew MexicoNorth CarolinaNorth DakotaOhioOklahomaPennsylvaniaRhode IslandSouth CarolinaSouth DakotaTennesseeUtahVermontWashington
Procedure Searchable Index- See Generally Maryland Rules	Delaware
Civil Practice and Procedure	FloridaMississippi
Civil Practice- Title 9	Georgia
Civil Remedies and Defenses and Special Proceedings	Hawaii
Proceedings in Civil Actions in Courts of Record	Idaho
Civil Procedure – Subtitle 3	Iowa
Procedure, Civil	Kansas
Title 13	Louisiana
Court Procedure– Civil	Maine
Maryland Rules	Maryland
Civil Procedure and Limitations	Missouri
Courts; Civil Procedure	Nebraska
Justice Courts and Civil Procedure	Nevada
Proceedings in Court	New Hampshire
Administration of Civil and Criminal Justice	New Jersey
CVP, Civil Practice Law & Rules	New York
Procedure in Civil Proceedings-(see Chapters 12-36)	Oregon
Civil Procedure in General Sessions Courts	Tennessee
Civil Practice and Remedies Code	Texas
Civil Remedies and Procedure	Virginia
Actions, Suits and Arbitration, Pleading and Practice, Evidence and Witness	West Virginia and this
Civil Procedure (Chapters 801-847)	Wisconsin

Temporary restraining order for trademark infringement

A temporary restraining order is a kind of injunction that is issued for a short period of time to prevent the party from taking any certain action until the court can issue an order granting a preliminary injunction or even a permanent injunction later on. A temporary injunction is usually the first step towards obtaining a permanent injunction or preliminary injunction and also helps and provides time for the court to properly hear the matter and decide on the case.   

In the matter of Vuitton et Fils S.A. (1979), a temporary restraining order in the form of a preliminary injunction was issued in order to prevent the sale of counterfeit Vuitton handbags. A temporary restraining order is issued only in very specific circumstances. And in this case, it was to prevent the sale – not just any sale, but the sale of handbags of the brand Vuitton, which were currently facing claims of counterfeiting.

A temporary restraining order (TRO) is governed by Rule 65 of the Federal Rules of Civil Procedure. Often, temporary restraining orders are issued to prevent the parties from getting in contact with each other and harming each other. For example, A temporary restraining order might be issued to Party 2 to prevent Party 2 from constantly getting in contact with Party 1 and asking them to drop the suit by harassing Party 1.

Subject to the plaintiff seeking an injunction and it being granted by the court, the defendant is required to file with the court and also serve on the plaintiff, within 30 days of being served with such an injunction, a detailed report under oath explaining the same. If the defendant does not comply with the injunction, they may be punished with contempt of court by the court that granted the injunction or by the court holding jurisdiction over the defendant’s place of residence. The transfer of certified copies is made as per sub-clause (b) of Section 1116 of Title 15 and subsequently one month after the transfer and filing of the case,  a notice is sent to the director informing him/her about the case and other details. 

1. As per sub-clause (b) of Section 1116 of Title 15 of the United States Code, on an application, the office of the court granting the injunction has to be provided, and on directions of the court, a transfer is made of all certified copies from the court it was filed at to the court enforcing it as if the court enforcing it has granted it.
2. As per sub-clause (d) of Section 1116 of Title 15 of the United States Code, one month after the suit is filed, a notice is provided by the office of the court, which contains in writing to the Director all details about the litigants and the registration number of the proceedings they are facing before them. Any further developments in the proceeding, including additional pleadings, answers, etc., should be given to the Director through a notice. The Director is responsible for producing such notices on receipt in the same file with the registration number it contains in order to continue to add them to the respective file later on as the proceedings continue to have additional documents.

Injunctive relief is the most sought-after relief that the plaintiff can seek in order to protect their trademark and ensure that there is no further infringement. A permanent injunction, a preliminary injunction, or a restraining order allows the plaintiff to put a stop to the infringer’s activities and prevent further loss or damage to his or her business.

Injunctive Relief Against Domain Name Registrars

As per sub-clause (2) (D) of Section 1114 of Title 15 of the United States Code, the authority concerned with the registration of the domain that takes action is not to be liable for any monetary compensation except if they have not complied with the court order; if they have taken any steps towards the domain name during the pendency of the suit; or if they have not submitted the required documents. 

As per sub-clause (2) (D) (i) (II)  of Section 1114 of Title 15 of the United States Code, the actions that the domain name authority is required to take include transfer, removal, and cancellation of the domain name and its registration, but are not limited to them. Such actions are required to be in compliance with the court order, and in addition to this, they are required to come up with a policy to prevent this from happening by refusing to register similar domain names as a preventive measure as per sub-clause (2) (D) (ii) of Section 1114 of Title 15 of the United States Code.

As per sub-clause (2) (D) (iv) of Section 1114 of Title 15 of the United States Code, the registration authority of the domain name takes action when an application is filed for the same. Subsequent to them taking action, the person who is the infringer shall be made liable to compensate for the damages, costs, and attorney’s fees that arose as a result of the infringement that was borne by the registrant of the domain name.

In the event that the domain name has been either transferred, suspended, or disabled as per clause (ii) (II) of Section 1114 of Title 15 of the United States Code, then a civil action has to be filed by the registrant stating that such use of the domain name is not unlawful. The court may subsequently grant the registrant of the domain name an injunction and even activate or transfer the domain name on the basis of the action taken against it previously.

In cases of trademark infringement involving domain names, the plaintiff may be able to seek injunctive relief against the domain name registrar. This means that the court can order the registrar to suspend or cancel the infringing domain name. This is an important form of protection for the plaintiff, as it prevents the defendant from continuing to use the infringing domain.

The injunctive relief that the court grants against domain name registrars differ from case to case, as the extent of the injury caused becomes an important factor in determining the damage to be awarded and the monetary compensation that should follow it. It is left up to the court to decide 

There is no concrete concept of granting damages in instances of trademark infringement, and what usually follows is monetary compensation for such violations rather than punishment. But there are certain exceptional cases where, upon providing evidence showing either bad faith or confusion that resulted in infringement, damages may be granted by the court. The damages awarded by the court can vary from case to case.

Damages for Profits

The plaintiff in a trademark infringement case may be able to seek damages for profits made by the defendant. This means that the defendant must pay the plaintiff damages equal to the profits made from the infringing activity. This is a form of compensation for the plaintiff, and it is intended to prevent the defendant from profiting from the infringement.

What the plaintiff would have to establish is the fact that due to the fraudulent sale of the defendant, the plaintiff lost a legitimate sale that could have profited him, and hence such an unjust enrichment would not and should not be indulged in, and hence they should be compensated for the same. Thus, all that is required is compensation for all such fraudulent sales in order to calculate the compensation for the same. 

Section 1111 to Section 1114 of Title 15 of the United States Code contain provisions related to the recovery of illegitimate profits to compensate the injured party with some relief. There are various ways in which these unlawful profits can be recovered. The ways in which profit can be recovered include the following:

1. Disgorgement or the breaking down of profits obtained unjustly by the other party, i.e. the infringer; or
2. Estimating the loss of the plaintiff through measuring the profits obtained by the infringer.

It becomes important to award damages for profits, as these profits are lost by the plaintiff. The only problem with awarding such damages is that it is often very difficult to arrive at an amount since they are based on estimates of an amount that would be equal to what the plaintiff could have possibly lost due to such infringement. It is difficult to predict the amount, and hence disgorgement or measuring the loss of the plaintiff through the profit of the defendant are the ways to arrive at the amount. 

In the case of  Romag Fasteners, Inc. v. Fossil Grp., Inc., (2020), the plaintiff sought to discover the damages that the defendant caused by taking unfair advantage of the plaintiff and earning profit as a result. In this case, the defendant signed a deal with the plaintiff for fasteners for the handbags. The plaintiff also had a trademark and patent for the same. After a while, during the defendant’s investigation, they found fake and imitation fasteners of the plaintiff’s patented design to be installed by their manufacturers. In order to prevent any damages to their name and fame, the plaintiff sought for an injunction, among other actions in the suit. A suit was filed in the court by the plaintiff. The case also went on to be heard by the Supreme Court. It was decided that there is no need to prove any wilfulness on the part of the defendant who made use of a false and misleading trademark. Such willfulness is not a mandatory condition required to be fulfilled for seeking damages for profits.

The court takes into account the fact that a sale occurred in favor of the infringer instead of the owner i.e., which could have been the owner’s profit. Thus, it makes an unfair deal for the owner as the infringer has bagged all the  profit. So in order to compensate for such an unfair deal, the court awards compensation equal to all the fraudulent profits that the infringer has earned.

Damages for Counterfeiting

The plaintiff in a trademark infringement case may also be able to seek damages for counterfeiting. This means that the defendant must pay damages equal to the difference between the price of the genuine product and the price of the counterfeit product. This is intended to prevent the defendant from profiting from the sale of counterfeit goods.

Counterfeiting refers to forging or making copies of a product when you do not have the authority or the license to do so. It is a way of making easy money on someone else’s brand name and good faith by deceiving others into thinking it is an original and genuine product. A counterfeit mark is defined under sub-clause (d) (1) (B) of Section 1116 of Title 15 of the United States Code. 

The damages awarded for counterfeiting are as follows:

General Damages 

As per Section 471 of Title 18 of the United States Code on Counterfeiting and Forgery, a person with an intent to defraud another with counterfeiting may face imprisonment extending up to 20 years, a fine, or even both. Some states, such as California, have different laws under which they are not required to prove intent, and thus this allows them to take up the defense of lack of knowledge.

Treble Damages

Treble Damages are those damages wherein, after the jury has decided on an amount for the plaintiff, the court awards three times the profits or damages (whichever is greater of both) of the jury’s decided amount caused by the use of the counterfeit mark as described under sub-clause (d) of Section 1116 of Title 15 of the United States Code for the instances described under sub-clauses (b)(1) and (b)(2) of Section 1117 of Title 15 of the United States Code. 

Such an amount excludes the attorney’s fees, and hence the amount must be paid in addition to the attorney’s fees. Subject to the above provisions, the court may, before announcing its final judgment, charge interest on such an amount in the form of an annual interest governed by Section 6621(a)(2) of Title 26 of the United States Code. 

In addition to this, Title 15 of the United States Code helps to ascertain the damages by either increasing or decreasing their value to arrive at the closest number possible.

Statutory Damages

Statutory damages are awarded when the claim of the suit is such that it becomes difficult to establish the monetary value of the injury and loss caused. This value is generally established by the statute itself in order to compensate the victim for the loss and injury they suffered.

Statutory Damages for counterfeit marks (as described under  sub-clause (d) of Section 1116 of Title 15 of the United States Code) are governed under sub-clause (c) of Section 1117 of Title 15 of the United States Code. The statutory damages provided are as follows:

A monetary compensation of an amount not less than $1,000 or greater than $200,000 per counterfeit mark as per the type of services and goods that are either sold, offered to be sold, or even distributed; 

Monetary compensation of an amount up to $200,000 per counterfeit mark as per the type of services and goods that are either sold, offered to be sold, or even distributed, as per what court deems to be the appropriate amount

Injunction

In addition to the monetary compensation described above, the court may additionally issue a direction through an order to the infringer to prevent the sale and distribution of the counterfeit products that have happened to him. Such an order has to be complied with. If the infringer fails to follow the court’s directions, they are charged with contempt of court. 

All the civil actions that arise due to clause (1) (a) of Section 1114 of Title 15 of the United States Code or Section 220506 of Title 36 of the United States Code being violated are subject to  clause (d) (1) (A) of Section 1116 of Title 15 of the United States Code, with counterfeit marks being defined under clause (d) (1) (B) of Section 1116 of Title 15 of the United States Code.

Steps for filing an application of injunctive relief against infringement of trademark

The steps to file a case of counterfeiting under clause (d) of Section 1116 of Title 15 of the United States Code are as follows:

Step 1: The applicant, in a timely manner as per requirements, must give a notice of application. Subsequent to this, the applicant, with the help of a United States. attorney, filed before the court before which such an order is sought by them. (Under clause (d) (2) of Section 1116 of Title 15 of the United States Code.) The applicant may note that such an application if found against the public interest, is subject to being dismissed. The attorney can be engaged in the proceedings if it affects the admission of evidence that goes against the United States.

Step 2: The application submitted that is soon to be heard before the Judge is made to be subject to the following:

• The application should be based on concrete facts, and there should be adequate facts to support the same.
• Shall comply with everything described under Step 4.

Step 3: The court will grant the application a hearing in the following cases:

• The monetary compensation for the damages, if proven successful, is the same as that of a person who has filed for wrongful seizure or wrongful attempt seizure 
• Any order directing ex-parte seizure is not sufficient to achieve the purpose contained under  Section 1114 of Title 15 of the United States Code.
• Such a seizure has not been made public.
• If the plaintiff is going to win the claim against the other party who is to face such a seizure order.
• There would be an irreparable loss to the applicant immediately.
• The products facing seizure are at the location that the applicant has stated.
• The injury that the application would face outweighs the interests of the party facing such an order of seizure.
• The products would face destruction and might be transported or hidden elsewhere, or even make it out of reach of the court if the person were issued a notice as the first step in order to make it available to them.

Step 4: The order pronounced by the court is subject to the following:

• The facts and deductions of law required to arrive at the order
• A proper description of the items taken into legal custody, including the place where such an item has been seized and other details related to it.
• Such seizures should be brought into force by an order that is issued. The time period between such issuance of the order and the seizure of items should not be any more than seven days.
• The security that has to be paid is determined by the damage caused.
• The order must also contain the date on which the hearing is to be held.

Step 5: The court should strive to protect the identity and image of the person against whom such an order, or specifically an order of seizure, is made by the plaintiff in order to prevent publicity.

Step 6: Any seizure made through an order must be accompanied by a protective order. The protective order is to contain all the items that have been discovered and a list of any other records or information that might have been obtained in the process of such a seizure. It is essential for there to be a protective order, as it certifies that the information or records that have been obtained contain confidential information that is not to be used improperly. All the items that have been seized are in the custody of the court.

Step 7: The person facing such an order of seizure is allowed to contest it in court; until this happens, the items and records seized are to remain sealed. The person facing such a seizure order shall have access to the court order and other documents related to the order.

Step 8: A Federal law officer (as specified under clause (d) (9) of  Section 1116 of Title 15 of the United States Code) is to serve a copy of the order. Upon the successful service of such a copy of the order, the seizure process begins as per the order. If required, to ensure the safety of the defendant, the court may issue additional orders to prevent any leak of information that may cause damage or injury to his or her business or personal life and ensure that the same extends to the applicant, who shall not be granted access to such confidential information.

Step 9: After steps 1 to 8 have been completed, the court arranges a date for the hearing of all the parties involved in the case unless the parties decide to postpone the date decided on the seizure order. The date that is set should be at least 10 days after such an order has been issued but not more than 15 days after such an order is issued. The date may extend this limit if the applicant provides a reasonable explanation for changing the dates or if the other party facing such an order of seizure provides consent for the changed date. On the date of the hearing, the party is required to provide all evidence and interpretations of the law to support that order would remain in effect, and the failure to do the same, the seizure order be dismissed or altered.

In the extension of the hearing, the court has the power to allow for others that are capable of altering the time for discovering the items to be seized as per the Rules under Civil Procedure to divert any aggravation that might be caused for the benefit of the hearing.

Under clause (d) (11) of  Section 1116 of Title 15 of the United States Code, if one finds themselves in a position where they have been wrongfully seized of their items or records, or anything else for a matter of fact, they have the right and also the legal provision (this sub-section) that empowers them to reclaim all that is lost, which includes the price of the items, profits that have been lost, and damages in the form of punishment, in which it becomes important to prove such a seizure was carried out with a malafide intention, and additionally the court may also award covering of attorney’s fees to ease the burden provided it is reasonable.

In addition to this, the court may, in its reasonable judgment, award pre-judgment interest as a form of relief that can be recovered under clause (d) (11) of  Section 1116 of Title 15 of the United States Code. The interest rate is calculated annually as per clause (a) (2) of Section 6621 of Title 26 of the United States Code. Such an interest award begins from the date the claimant’s pleading is served as per the claim in this paragraph and ends on the date when there is a grant of such recovery. The time period for awarding the interest might be reduced to a shorter period if the court deems it appropriate.

These are the different types of damages awarded for the counterfeiting of trademarks. Such damages are provided by the court after taking into consideration both sides’ pleas. Such damages allow the plaintiff to recover from the loss of counterfeiting and provide some form of compensation in monetary terms. In order to make the Lanham Act applicable, it is important that the copy, that is, the counterfeit product, be made to look identical to the product that has its trademark registered. 

Damages for Cybersquatting

With the recent increase in internet use, there has been an observed rise in the illicit use of trademarks. Cybersquatting refers to the use of domain names that are quite similar to those owned by trademark owners and are used to get money by either selling them or using them to extract money from them. The process by which cybersquatters take advantage of a genuine trademark owner’s domain name is quite easy to understand.

Cybersquatters first register a domain name similar to the domain name of a trademark. Then they use this similar domain name to extract the money and thus use a combination of legal and illegal tactics, leaving the trademark owner with a huge loss at their hands. Cybersquatting can quite easily be classified as a crime against an individual, a trade, a firm, a company, or both. Cybersquatting is one of the most important issues to be addressed in today’s world because it takes advantage of the goodwill of the trademark owner and causes irreparable damage to them and their business. 

In cases of cybersquatting, the plaintiff may be able to seek damages for the defendant’s bad-faith registration and use of a domain name that is identical to or confusingly similar to the plaintiff’s trademark. This is a form of compensation for the plaintiff, and it is intended to prevent the defendant from profiting from the infringement.

In order to combat this, the Anti-Cybersquatting Consumer Protection Act (also known as ACPA) was brought into existence in order to offer some protection to trademark owners in the cyber world. There are different types of cybersquatting that occur on the internet. The various types of cybersquatting and the remedies available are as follows:

Typosquatting

Typo squatting refers to taking advantage of the URL usually typed out by users, which is usually prone to mistakes, and confusing them into believing it is a genuine site and getting them to buy it from there instead of the actual site. Typosquatting is also known as fake URL, sting site, or even URL hijacking. They make use of the original website and keep the font, colors, and design the same on the fake website, making it difficult to distinguish between both at first glance.

The Anti-Cybersquatting Consumer Protection Act (also known as ACPA) was developed to address the issue of unauthorized internet use of domain names to profit from the goodwill of such trademarks. The Anti-Cybersquatting Consumer Protection Act allows victims to seek compensation in the form of statutory damages. The statutory damages range from $1,000 to no more than $100,000. In addition to statutory damages, injunctions are also sought by the victims in order to prevent further damages. 

Identity Theft

Identity theft is one of the major problems in the cyber world. The trademark owner owns the domain name for a specific period of time. Once the time period expires, the trademark owners are required to renew the domain name, but often they are unable to do so either because they are forgetful or if cybersquatters have purchased that domain name. This allows the cybersquatters to portray themselves as the owner and mislead the users of the website into believing it. 

Cybersquatters often track such renewals of domain names using software that allows them to monitor the expiration of such domain names. The Anti-Cybersquatting Consumer Protection Act (also known as ACPA) was created just for this. 

Name Jacking

Name Jacking makes use of the names of popular and famous people and cashes out money using their fame. Since such people are public figures and everyone knows about them, they help generate lots of views and traffic on the website. They benefit by making use of such public figures’ popularity and registering a domain in their name to garner attention. In order to combat this, the United States provides such public personalities with a trademark to protect their names. The Anti-Cybersquatting Consumer Protection Act (also known as ACPA) was designed to address this problem.

Reverse cyber-squatting

Reverse cyber-squatting refers to when cybersquatters try to obtain the domain name owned by the legitimate owner. This is also known as reverse domain name hijacking. They made use of threats, pressure, and even false claims of cybersquatting in order to coerce the owner to provide them with the domain name. 

Such crimes are mostly committed against larger firms, corporations, and even public figures. The Anti-Cybersquatting Consumer Protection Act (also known as ACPA) and the Uniform Domain Name Dispute Resolution (also known as UDRP) were created to prevent cybersquatting. As per sub-clause (ii) (II) of Section 1114 of Title 15 of the United States Code, the policy mentioned refers to the UDRP policy.

Competing use

In instances of competing uses of cybersquatting, competitors, in order to gain an unfair advantage over their adversary, register their adversary’s trademark. The problem lies in the fact that the whole process of registration took place in bad faith and with bad intentions, and thus the same should not be allowed. 

With the trademark in the competitor’s name, the adversary cannot produce products under the trademark as it would amount to infringement even though the trademark belongs to the adversary and not the competitor. The most important step to prevent this is to register the trademark with the USPTO office to prevent any such discrepancies and also avail additional benefits on successful registration.

Non-competing use (i.e., Legitimate Claims)

Non-competing use of trademarks is the most complicated because of its vague definition. If we take, for example, a shared or joint trademark, like United, it is used jointly by a moving company called Van Lines and even Airways. In that case, the registration of the domain name going by United would only be made available to one of these entities and not all of them. In this case, due to the difference in either the territory or the industry of operation, they are able to share and commonly use the trademark. 

There are two types of legitimate claim disputes that are raised before the court, and they are as follows:

• The first type of legitimate dispute is a competing claim, which occurs when the holder of the trademark sues another who holds the domain name but has no trademark rights. This prevents the original trademark holder from being able to register the domain name, as it is already registered by another. 
• The second type of legitimate dispute is a competing claim is one in which both the parties involved in the dispute have claims in their names. In this case, registering the domain name does not necessarily guarantee a court ruling in your favor. It varies from suit to suit. 

Notable Cases of Cyber-squatting

The following are some of the notable cases of cyber-squatting:-

Jennifer Lopez Case (2009)

The most famous case related to name-jacking cybersquatting is the Jennifer Lopez case (2009). It was decided by the WIPO Arbitration and Mediation Center. In this case, by making use of her name and adding the suffixes “.net” and “.org”, they were able to generate traffic and views on their domain names, which they had registered.  The complainant pleaded for the website to be taken down as it makes use of the trademark name of the public personality to generate advertisements and earn profits; furthermore, they have not registered the name for use in the domain name. The respondent pleaded that the domain name is just a fan site and the advertisements generated are incidental; there is no bad faith that can be established. It was discussed by the panel that there is no dispute that the domain name has been used to take advantage of the celebrity’s fame, but it is important to draw further inferences and determine what would constitute bad faith. The court, after careful consideration, decided, by issuing an order directing the same, that the domain names in dispute have to be transferred from the respondent, who has them registered, to the complainant.

Ville de Paris v Salient Properties LLC 

In another case of reverse cybersquatting at the WIPO Arbitration and Mediation Center, between the administrative authority of Paris and the domain name registration acquired by an LLC in the United States. The administrative authority was developing technologies for Paris, and in order to do so, they had registered several marks. One of the marks that the respondent had registered was found to be very similar to that of the complainant. This was one of the several other contentions raised, including that it is a business enterprise involved in commercial activities and that the domain name is also location-specific. It was held that the claims were unreasonable and that the complainants’ pleas were denied. Additionally, the respondent’s plea to find reverse cybersquatting was also denied. The complainant was also ordered to pay for such claims, attorney’s fees, and costs, as these were the damages awarded at the end of the suit.

United States v. Read (2022)

The infamous case of United States v. Read (2022) shows us how dangerous identity theft is and the extent to which one can pretend to be someone else in order to access such information. In this case, the defendant got access to Moore’s personal details, like her social security number and other information. Now, with access to such information, he continued to pose and present himself as her assistant. This helped him get identification badges and other cards to make it seem like he was actually her assistant. Now, he used this to his advantage and purchased big brand products, which amounted to thousands of dollars in a matter of a few weeks. He was eventually caught because he used his personal card along with the stolen card, which made it easy to trace and track him. He was thus ordered to pay at least half the sum he had spent on his shopping in New York as restitution. He also had to face fourteen months in a halfway house. The defendant, Read, had already faced charges for identity theft previously, and this was his second criminal charge proven successfully against him.

Shields v. Zuccarini (2001)

Another case we cannot skip out on related to typosquatting is Shields v. Zuccarini (2001). In this case, the plaintiff had a popular website to his name on which he published several animated versions of famous cartoons, which garnered several views. The defendant took advantage of this and registered five domain names similar to that of the plaintiff, as they were the misspellings of the plaintiff’s website, and once you get on that website, you are bombarded by advertisements, and you can leave only after exiting those pages. Thus, the defendant was able to generate revenue for himself. A suit was filed. The trial court and the appellate court came to the same decision. It was ultimately held that the defendant is liable to pay statutory damages of $10,000 per domain name and an additional amount to cover the fees of the attorney. In addition to that, the court also issued a permanent injunction in order to bring some relief to the plaintiff, who had suffered huge damage.

Gateway 2000 v Gateway Inc. (1997)

The case of Gateway 2000 v Gateway Inc. (1997) explores the scuffle between Gateway 2000 and Gateway Inc., which had the Gateway domain name registered in its name, several years before Gateway 2000 was even released. Even though Gateway 2000 took it to court, it failed to win the domain name in its favor. The court ruled that Gateway Inc. had registered the domain name 6 years prior to Gateway 2000 coming into existence and gaining fame after several years. There is no bad intention or advantage taken by the defendant in any manner. There is no way the defendant could have foreseen the possibility of Gateway 2000 gaining fame before it was released and registered a domain name similar to it.

Data Concepts Inc. v. Digital Consulting Inc. (1998)

In the case of Data Concepts Inc. v. Digital Consulting Inc. (1998), Data Concepts Inc., was the owner of the domain name, which went by “DCI”,  and was engaged in managing the data of computer software. Digital Consulting Inc., provides computer-related educational and training services. Both of them had rights to the domain name going by “DCI”. The court took into account that Digital had registered the mark before Data. In addition to that, the intention of the registration should be taken into consideration. The problem that remains is that having similar abbreviations might cause confusion for the buyers. 

Hasbro v. Clue Computing (1999)

In the case of Hasbro v. Clue Computing (1999), Clue was registered by Clue Computing. Hasbro filed before the court, citing infringement and saying that it should be dissolved. The court held that if you are the owner of the famous trademark, that does not imply that you will be entitled to use the same domain name as that of the trademark. There can be no monopolization of trademarks in domain names. It arrived at such a conclusion on the basis of an 8-factor analysis to determine whether or not it would amount to a trademark infringement or not.

Other Forms of Relief

In addition to the remedies discussed above, the plaintiff may be able to seek other forms of relief in cases of trademark infringement. These may include the destruction of infringing material, the delivery of infringing material to the plaintiff, and the payment of the plaintiff’s attorney’s fees. Attorney’s fees are determined by the Lanham Act, also known as Title 15 of the United States Code. Attorney’s fees are not awarded in all circumstances. If the plaintiff wins the suit in his or her favor, they are generally awarded attorney’s fees if the court deems it to be fit, and in cases where the suit is decided in favor of the defendant, the defendant is awarded attorney’s fees if the court deems it to be fit. The attorney’s fees are exorbitant at times, and the court might not order for all of them to be covered; they might be partially covered.

Strategies to combat Trademark Infringement

There are a few strategies that businesses can use to protect their trademarks from infringement.

The first is to register the trademark with the US Patent and Trademark Office (USPTO). This will give the business exclusive rights to use the trademark, and it will make it easier to enforce the trademark against infringement.

Steps to register your trademark with the USPTO

It is important to register your trademark at the United States Patent and Trademark Office (USPTO) to prevent any illegitimate use and protect it. The steps to register the trademark as per the United States Patent and Trademark Office (USPTO) are as follows:

Step 1: You will have to set up an account with the United States Patent and Trademark Office (USPTO) on their official website with the required details like an email address, contact details, etc., and validate the account using authentication.  

Step 2: You will now have access to the Trademark Electronic Application System (TEAS), which allows you to file an application. On the basis of the type of trademark, a fee will have to be filed for processing. This fee will not be returned and an application does not imply registration of the trademark

Step 3: You will have to constantly observe the status of your application in order to not miss out on anything and furnish further details if required as per the deadlines set.

Step 4: During this long process, it is possible that you need to change personal details. This is possible, and it has to be diligently updated by the applicant in order to receive constant updates and stay in the loop about the application.

Step 5: After the basic requirements for filing the application are met, a serial number is assigned, and the application is then put forth for review. The review of such applications that have received serial numbers is done by the United States Patent and Trademark Office (USPTO) examining attorneys, which might take some additional months. The attorney is required to check the right amount of fees required to be paid, its compliance with legal provisions, whether such a trademark is registrable, etc. A comprehensive search is done related to the trademark.

Step 6: Subsequent to such an extensive review, the United States Patent and Trademark Office (USPTO) provides the applicant with a letter outlining the reasons for the refusal to grant the registration. In addition to this, the applicant may be contacted by phone or by the email they provided while applying. 

Step 7: If an office action is sent, either the applicant or the applicant’s attorney has to provide the office with a reply to all the issues that the office has raised in the letter they had previously sent. Such a reply has to be sent within three months of an office action; if no reply is received, then the application is abandoned, but there is an option to extend it by three months provided a fee is deposited.

Step 8: If no further objections are raised in connection with the trademark, then it gets published. If the  United States Patent and Trademark Office (USPTO) attorney approves it, then the office provides the applicant with a publication notice with the date of publication. Objections are invited during the  United States Patent and Trademark Office (USPTO)’s publication of the same within 30 days of such publication. If there are no objections, then the application for a trademark enters the stage of registration. If there are any objections, they are addressed by the tribunal set up within the  United States Patent and Trademark Office (USPTO), which is known as the Trademark Trial and Appeal Board (TTAB).

Step 9: In the registration stage, on the basis of the application filed for the trademark, additional documents are required to be produced. If there are no objections, the trademark is successfully registered, and the applicant now becomes the trademark owner and is provided with a certificate for the same.

Monitor the use of the trademark

The second is to monitor the use of the trademark. This can be done by monitoring websites, social media accounts, and other sources for any unauthorized use of the trademark.

Trademark monitoring becomes an essential measure that all trademark owners should take up in order to prevent the misuse of their trademarks. The objectives of the trademark monitoring system are as follows:

• To scan extensively all websites and conduct a search on them
• To scan extensively all social media platforms and conduct a search on them
• To detect any discrepancies, i.e possible infringements 
• To keep track of any discrepancies, i.e possible infringements, happening
• To monitor the use of the trademark 
• To track legitimate use of the trademark at its manufacturers, distributors and other businesses
• To detect any infringement early on to prevent counterfeiting
• To ensure effective scanning all across the globe in one place
• To protect brand image by scanning out illegitimate use of trademarks
• To ensure immediate action is taken on those who used the trademark illegitimately 

If you are a trademark owner, you can also hire a law firm that will set up a team to monitor your trademark use and also discreetly work towards the possible other legal measures, whether preventive or remedial, to protect your trademark from infringement. A legal team might also help you to additionally register the trademark as per your needs and requirements. The legal team also provides assistance with other factors related to your trademark.

Immediate action against any infringement

Third, businesses should make sure to take swift action against any infringement. This could include sending cease-and-desist letters, filing an infringement lawsuit, or seeking other remedies.

To ensure that immediate action is taken, hire a legal team. The legal team is tasked with all the legal filings that are to take place in court and removes this burden from the shoulders of the trademark owner. Additionally, they assist in preparing all the documents required for filing a suit and communicating with the infringers about the action that is going to be taken against them.

A cease and desist letter looks like follows:

Sample Cease and Desist Notice for Trademark Infringement

NOTICE TO CEASE AND DESIST

From

……………………………

……………………………

……………………………

Date: ………………………

Re: Trademark Infringement – Cease and Desist

Dear ……………………………,

It has come to our attention that you are making unauthorized use of the trademark [Name of Trademark] by …………………………… [Describe Infringement Use].

Under federal registration laws, we are the owners of the trademark …………………………… [Name of Trademark] is currently registered with the United States Patent and Trademark Office (USPTO) under the following registration number: ……………………………

Therefore, we have the right, including but not limited to, to restrict, prevent, or limit the use of our trademark in order to protect it against any misrepresentation.

We hereby demand that you immediately cease and desist from any additional use of our trademark that will likely cause misrepresentation in relation to the distribution, advertising, identification, and sales of our products or services.

If you fail to comply with the aforementioned demand(s) ……… within days, we will have no choice but to pursue all legal causes of action, including the filing of a lawsuit to protect our interests. We remind you that this letter serves as a pre-suit notice for a lawsuit against you, and failing to correct it will likely make you liable for any damages the court determines we have suffered as a result of your infringement.

It is in our best interests to have this issue amicably settled in an effort to avoid further legal remedies as provided by State and Federal laws.

Sincerely,

……………………………

Periodic Checks, Updating and Renewal of Trademarks

Finally, businesses should make sure to keep their trademarks updated. This could include registering trademarks in other countries, registering with trademark monitoring services, and updating the trademark registration with the USPTO.

Trademarks are subject to renewal, so it is important to follow the deadlines and regularly file your trademark documents, which allow for their maintenance at the United States Patent and Trademark Office (USPTO). In addition to that, if you are filing for your trademark in other countries that follow different protocols, then it is important to keep track of those deadlines, as they might differ from the  United States Patent and Trademark Office (USPTO) deadlines. And most importantly, continue to use your trademark and update any changes on the website, like deletions and additions.

Common Misconceptions about Trademark Infringement

There are some common misconceptions about trademark infringement that businesses should be aware of.

First, businesses should not assume that they can stop someone from using their mark simply by sending a cease-and-desist letter. In most cases, the letter will only be effective if the person receiving it is aware that they are infringing on the trademark.

Second, businesses should not assume that they have to register a trademark with the USPTO in order to protect it from infringement. Although registration with the USPTO is a helpful step, it is not required in order to enforce a trademark.

Finally, businesses should not assume that trademark infringement is a minor issue that can be ignored. In many cases, trademark infringement can have serious consequences and can be costly to remedy.

Defects and Defenses to Trademark Infringement

The defects and the defenses are contained under Section 1115 of the  Title 15 of the United States Code are as follows:

• Under Section 1115 (a) of the Title 15 of the United States Code

Any registered mark can be provided as evidence and admissible as evidence in the court of law and such registration at the first look itself is more than enough to prove that the validity of the mark’s registration but that does not preclude a person from proving legal/equitable defense/defect present under Section 1115 (b) of the Title 15 of the United States Code and elaborated below.

• Under Section 1115 (b) (1) of the Title 15 of the United States Code

This section talks about the case where the mark was obtained fraudulently, in that case, no rights would be assigned for its use. This would be a defect. 

• Under Section 1115 (b) (2) of the Title 15 of the United States Code

This section talks about the case where the mark has been deserted by its owner or the one who has registered it. 

• Under Section 1115 (b) (3) of Title 15 of the United States Code

In case the mark that is registered is being used with the authorization of the registrant or another having a legal relationship with the registrant so as to cause damage by misrepresenting the goods/services associated with the mark in use.

• Statutory Fair Use

The provision of Statutory Fair Use is contained in the Lanham Act under Section 33(b) (4) of the Lanham Act in addition to Section 1115 (b) (4) of the Title 15 of the United States Code. According to Section 1115 (b) (4). In this case, it has to be proved the plaintiff has to prove that there was confusion on his part. But this defense is available to use only in exceptional circumstances. 

• Under Section 1115 (b) (5) of the Title 15 of the United States Code

The mark that is registered has been used by the registrant and that such prior use was continuous in nature but there was no knowledge of any sorts of it and therefore, it becomes important to establish the following the three points (which are subject to proving continuous prior use):

• Date of use as per Section 1057 (c) of the Title 15 of the United States Code
• Registration filed is before the effective date under Trademark Law Revision Act 
• Publication of such registered mark as per Section 1062 (c) of Title 15 of the United States Code
• Under Section 1115 (b) (6) of the Title 15 of the United States Code

The mark registered as per the provisions under elaborated in this section but it was not abandoned. This provision is subject to the mark being used prior to such registration or before the publication of the mark by the registrant, then it can be used as a defense in case of trademark infringement.

• Under Section 1115 (b) (7) of Title 15 of the United States Code

The registered mark in question is being used to breach any of the antitrust laws of the US, then it can be used as a defense in case of trademark infringement.

• Under Section 1115 (b) (8) of the Title 15 of the United States Code

The registered mark is currently in use and is functional, then it can be used as a defense in case of trademark infringement.

• Under Section 1115 (b) (9) of the Title 15 of the United States Code

Commonly known principles like laches, acquiescence and estoppel are applicable, then it can be used as a defense in case of trademark infringement.

• Anti-Disparagement Clause

An additional clause may be added. This is known as the anti-disparagement clause. As per this clause, trademarks that disparage any persons, living or dead, institutions, beliefs, national marks or bring all these categories into contempt or disrepute would not be awarded registration by the federal government. This is enshrined in the provision under Section 1052 (a) of the Title 15 of the United States Code. This clause is not just limited to the above-mentioned categories of items but also includes marks that may pose to be scandalous or deceptive or even immoral. The applicants are expected at the most to keep the following points in mind and ensure that their marks do not fall in the above-mentioned categories in order to ensure that they will successfully obtain a trademark registration.

Conclusion

Trademark infringement is a serious problem in the US, and the law provides a number of remedies for those who have been victims of trademark infringement. These remedies include injunctive relief, damages for profits, damages for counterfeiting, and damages for cybersquatting. Businesses can also take steps to protect their trademarks from infringement, such as registering the trademark with the USPTO, monitoring for unauthorized use of the trademark, taking swift action against infringement, and keeping their trademarks updated. Finally, businesses should be aware of common misconceptions about trademark infringement.

It is easy to become a victim of trademark infringement if you are not alert and aware of how you can protect your trademark and take preventive measures. It is important to keep in mind that the earlier you will register your trademark, the less risk your trademark faces in instances of trademark infringement. Your trademark is a unique intellectual property under your name and thus you should make use of every help available to you to protect your trademark.

If you have been the victim of trademark infringement, it is important to seek legal advice as soon as possible. An experienced attorney can help you understand your rights and remedies and protect your trademark from further infringement.

Frequently Asked Questions (FAQs) on Trademark Infringement

What is a trademark?

A trademark is defined under Section 1127 of Title 15 of the United States Code as any device, symbol, name, word, or combination of them that can help identify a product and set it apart from the rest. A trademark acts as a unique identification mark for the product. They may be used either by individuals or by businesses and help to determine the source of their products even in the absence of any mention of such a source.

What is trademark infringement?

Trademark infringement is the unauthorized use of trademarks (as defined above). The trademark may be registered, the trademark may be similar to the registered mark, and the trademark infringed should fall within the same class or category. Such infringement occurs in various forms and often gives an unfair advantage and profits to the infringer, leaving the original owner with losses.

What amounts to trademark infringement?

Any trademark that is registered or already in use being used by another without permission for it, using a trademark to create cheaper copies (counterfeiting), using a trademark to earn profits you are not entitled to, using a trademark  hamper one’s name or product’s image and fame in society, using a trademark in same class and category of goods to bring down that product, etc.

What are the remedies available to the injured party?

There are several remedies available to the injured party. The injured party can seek damages from the infringer, which are of various kinds and whose valuation varies from suit to suit. In addition to this, the parties can also seek an injunction (of several kinds) from the court having jurisdiction over the matter. Courts also award compensation equal to profits earned illegitimately by the infringer. Courts also issue orders for the transfer of domain names if successfully proven.

Where can a case of trademark infringement be filed?

A case of trademark infringement can be filed in the federal courts, subject to the condition that it is a federal trademark dispute. Even state courts have jurisdiction over such matters. If it is filed in state court, only claims of state law violations will be heard. But if it is filed in federal court, both the state law violation and the federal law violation will be considered.

Does one require a licensed attorney to file a case with the United States Patent and Trademark Office (USPTO)?

Hiring a licensed trademark attorney will ease your burden of filling out the case, as they will assist you with the court proceedings and provide you with additional advice as to how to proceed. It is important to consult with an attorney specializing in this field, as it can be complex to understand the court requirements and proceedings. 

References

1. https://nopr.niscpr.res.in/bitstream/123456789/10213/1/JIPR%2015%285%29%20374-379.pdf 
2. https://www.law.cornell.edu/uscode/text/15/1116 
3. https://www.law.cornell.edu/wex/permanent_injunction#:~:text=A%20permanent%20injunction%20is%20a,money%20damages%20will%20not%20suffice 
4. https://caselaw.findlaw.com/court/us-supreme-court/456/305.html 
5. Weinberger V. Romero-Barcelo, 456 U.S. 305 (1982), 102 S. Ct. 1798, 72 L. Ed. 2d 91, 1982 U.S. LEXIS 34, 50 U.S.L.W. 4434, 12 ELR 20538, 17 ERC (BNA) 1217
6. eBay Inc. v. MercExchange, L. L. C., 547 U.S. 388 (2006), 547 U.S. 388, 126 S. Ct. 1837, 164 L. Ed. 2d 641, 2006 U.S. LEXIS 3872, 78 U.S.P.Q.2D (BNA) 1577, 74 U.S.L.W. 4248, 27 A.L.R. Fed. 2d 685, 19 Fla. L. Weekly Fed. S 197
7. https://www.law.cornell.edu/wex/preliminary_injunction 
8. Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008), 129 S. Ct. 365, 172 L. Ed. 2d 249, 2008 U.S. LEXIS 8343, 77 U.S.L.W. 4001, 39 ELR 20279, 67 ERC (BNA) 1225, 21 Fla. L. Weekly Fed. S 547 
9. https://www.law.cornell.edu/wex/temporary_restraining_order_(tro)#:~:text=Temporary%20restraining%20orders%20(TROs)%20are,a%20type%20of%20equitable%20remedy. 
10. Vuitton et Fils S.A, 606 F.2d 1 (2d Cir. 1979), 1979 U.S. App. LEXIS 12901, 204 U.S.P.Q. (BNA) 1, 27 Fed. R. Serv. 2d (Callaghan) 1432
11. https://www.law.cornell.edu/wex/counterfeit 
12. https://www.klemchuk.com/trademark-counterfeiting-damages 
13. https://www.law.cornell.edu/uscode/text/15/1117 
14. https://www.law.cornell.edu/uscode/text/26/6621#a_2 
15. https://www.law.cornell.edu/uscode/text/15/1125#d_1 
16. https://www.law.cornell.edu/uscode/text/26/6621#a_2 
17. https://www.klemchuk.com/trademark-counterfeiting-damages 
18. https://www.researchgate.net/profile/Sapna-Deo-2/publication/350314362_Cybersquatting_Threat_to_Domain_Name/links/6059c65a458515e83464c18c/Cybersquatting-Threat-to-Domain-Name.pdf
19. https://www.law.cornell.edu/wex/typosquatting 
20. https://www.law.cornell.edu/uscode/text/15/1114 
21. The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, Case No. D2009-0057
22. https://www.icann.org/resources/pages/help/dndr/udrp-en 
23. Ville de Paris v. Salient Properties LLC, Case No. D2009-1279

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.

This article is written by Amandeep Kaur, a law graduate of Punjab University in Chandigarh, India. The article states the various modes of discharge of contracts under the Uniform Commercial Contract in the United States with the help of illustrations and case laws. The article envisages the different modes and remedies that are available to a party after the contract is discharged.

It has been published by Rachit Garg.

Introduction 

The law of contract may be defined as the branch of law that specifies the circumstances under which a promise becomes legally binding on the person making it. It can be defined as a promise or set of promises for the breach of which the law gives a remedy, and the law recognizes it as a duty to perform. The contract has a major role to play in the economic system. The law of contract involves the free will of the parties to enter into a contract or not. In simpler words, parties are free to determine the nature of the primary obligations they will accept in a contract. These obligations can be termed as contractual relationships between the parties. So, the discharge of a contract can be said to be termination of such contractual relationship between the parties and hence contract comes to an end.

Discharge of contract

The discharge of contract can be termed as the termination of contractual relationship between the parties. It ceases the legally binding power of the parties. On further elucidation, discharge creates a valid termination of contractual duties. The contract may be discharged either by the act of the parties or by the operation of the law. The parties can either fulfill these obligations or discharge them, or they may be exempted by law from their obligations.

For example, A contracts with B to plant 300 flowers in his garden for $1000. B plants the flowers, and A pays the promised amount to B. Since both parties to the contract fulfill their obligations arising under the contract, the contract is said to be discharged by performance.

Now what amounts to the discharge of a contract? As the name suggests, the word discharge implies that the contract has come to an end and the contractual obligations of the parties have come to an end. Discharge can occur in various ways:

• By Performance
• By Agreement
• By Non-Performance
• By Operation of Law
• By Breach of Contract

Relevant factors while discharging a contract

There are various factors that contribute to the discharge of a contract. these can be stated as follows

Lack of Consideration

The word “consideration” refers to something that has value. It is agreed upon by both parties to the contract. Consideration is one of the essential elements of entering into a contract. An agreement without consideration is void. If both parties to the contract have bargained for exchange, the contract shall be deemed invalid. So consideration plays a major role in deciding whether a contract has to be discharged or continued.

 Lack of Capacity

The capacity to contract means that both parties to the contract must be competent to enter into a contract. As per the Uniform Commercial Code, minors and people with mental deficiencies are incompetent to enter into a contract. The Restatement Second of Contracts defines that people with mental deficiencies are unable to act in a legal manner, and if they enter into a contract, it is voidable by that person.

Statute of Fraud

The Statute of Fraud is a law principle that states that the contract, in order to be enforceable, must be in writing. Even though some oral contracts are enforceable, contracts of marriage, service, land, and contracts for goods worth $500 or more must be in writing.

Breach 

There may be a breach of any specific obligation in the contract by a party or a breach of the whole contract. While looking into whether the breach was material enough to discharge a contract, the court sees the following factors:

• What is the extent to which a contract has already been performed?
• What was the reason behind such a breach? Was it intentional, negligent, or due to innocence?
• What is the level of certainty regarding the performance of a breaching party in a contract?
• Did the breaching party receive any unjust benefits as a result of this breach?
•  How and to what extent can the innocent party be compensated?
• What is the difficulty faced by a breaching party whether the breach was material or not?

Lapse of time

Generally, when the parties to a contract enter into an agreement, there is a time fixed for the performance of a particular act. Thus, if the act is not performed within the stipulated time, it leads to the discharge of the contract due to a lapse of time or delay in its performance.

Governing laws

The Common Law of Contracts

The American system of law has its origins in English Law. The law of contract has eventually developed from behavior to a judge-made law. Originally, the disputes were brought before a tribunal of judges, who made their decision by analyzing the traditions, behaviors, rules, and customs that prevailed in society. Later on, these customs took the form of precedents and created the legal concept of stare decisis. Under this principle, the judges gave their judgments based on previous decisions in similar situations. But this principle, being dynamic in nature due to the changing needs of society, was not at all successful in delivering justice. So setting and following the present became the foundation of what is known as Common Law.

The Restatements of Contracts

The American Law Institute (ALI) was formed by a group of lawyers, judges, and other professionals due to the huge volume of cases in the country, with the objective of creating a guide for all legal professionals. So one such publication was Restatements, which provides for Restatements in nine areas, including torts, property, and contracts. However, these restatements have never received formal judicial recognition, but they are still acknowledged and used by the courts. At present, ALI has published a Restatement (First) of Contracts and a Restatement (Second) of Contracts. These restatements provide a detailed account of the law of contracts. However, sometimes these restatements are adopted by the state legislature, making them a part of the law, but this is not a rule. In the case of Brewer v. Erwin,(1979), the Hon’ble Supreme Court of Oregon held that although sections from restatements are frequently quoted by the courts, this does not mean that they have a legislative enactment.

The Uniform Commercial Code: The Law of Commercial Transactions

The need for uniformity in such a law was felt due to the vast expansion of businesses across the country. These all resulted in creating impediments to resolving the contractual problems. The Uniform Commercial Code is the result of a number of measures described as follows:

• The National Conference Of Commissioners on Uniform State Laws passed several Acts, such as the Negotiable Instrument Act, 2002 the Sales Act, 2002 and Bill of Lading Act,1993.  Since these acts were not able to achieve the objective of commercial marketplace contracts, Uniform Commercial Code(U.C.C.)2002 was enacted. This Act consists of 11 articles and is adopted by all fifty states of the US. This is a statutory law that helps businesses, merchants, and consumers conduct contractual agreements with more certainty and reliability. Thus, U.C.C. is an important source of contract law that governs commercial contract law.
• The National Conference of Commissioners on Uniform State Laws felt the need to formulate laws addressing electronic transactions, with a special focus on electronic signatures. This law enables merchants to retain only the electronic version of a document instead of the paper document. It is because of Uniform Electronics Transactions Act, 1999 (UETA) that an electronic version of a cheque has the same effect as the original paper one.
• Electronic Signatures in Global and National Commerce Act (E-Sign Act 2000): This law allows companies to validate contracts online and make these contracts legally effective.
• Uniform Computer Information Transactions Act (UCITA) 2000): It is the most controversial one and was designed to sweep the U.C.C. and has not been adopted in the US except in two states, Maryland and Virginia.
• The law of Sales: The law of domestic sales in the US is generally governed by Article 2 of U.C.C. Normally, Article 2 of UCC applies to transactions between a buyer and seller in every state of the USA. 

Now the foremost question that needs to be answered is regarding the applicability of laws, i.e., whether the transaction is governed by Common Law or U.C.C. As a general rule, transactions that do not involve a sale of goods use the common law of contracts, which are generally services or sales between non-merchants for example:- if your spouse hires a company to paint your garage, the common law of contracts applies since there is no sale of goods involved. On the other hand, when you purchase a new car from a local dealer, the U.C.C. applies. In TK Power, Inc. v. Textron (2006)), the Court, while determining the issue of whether the common law applies to U.C.C., discussed the attributes of the transaction and found that the contract was service oriented where TK Power had developed a battery prototype for Textron in three phases, with the last phase being the sale and purchase of the battery. Thus, the U.C.C. does not govern the above contract. 

Below is a table with a summary of all the laws that apply to commercial transactions:

S.No.	Applicable laws to Contract Transactions	Nature of Law
1.	Common Law	It is a judge-made law that is applicable to Non-U.C.C. transactions, usually for services and not sales.
2.	Uniform Commercial Code (U.C.C.)	It is a statutory law that applies to commercial transactions. It often modifies the common law of contracts.
3.	Consumer Protection Laws	It is a statutory law that protects consumer-based Transactions at both the federal and state levels.
4.	Uniform Electronic Transactions Act (UETA) and Electronic Signatures in Global and National Commerce Act (E-Sign)	It is a statutory law that provides legal certainty for many e-transactions such as e-signatures.

Modes to discharge a contract 

Discharge of a contract relieves a party of its obligations. The contract may contain certain provisions for its determination. These provisions may be stated as follows:

1. The contract between the two parties may state that non-fulfillment of a specified term of contract shall give one of the parties the right to discharge the contract. In the case law of Head v. Tattersall (1871), the buyer of the horse stipulates that he may return the horse within a certain time if the horse does not match its description.
2. The contract may also state that upon fulfillment of a condition or occurrence of a certain event, the contract shall be discharged. In Geipel v. Smith (1872), the contract stated that on the occurrence of expected risks for a charter party whereby a voyage becomes impossible, the charter party should discharge the ship owner.
3. The contract can also be brought to an end at the option of the parties upon certain terms. For example, in a contract of employment for a definite time, either party can terminate it within the specified time.

The contract can be discharged in various modes, which can be explained as follows:

Discharge by performance

The most common type of discharge of a contract is the complete performance of the contract by both parties. In such a situation, both parties to the contract have fully performed their duties and obligations, and all the rights and duties of the parties stand extinguished now. In simpler terms, all the expectations from each other have been fulfilled, and legal obligations stand completed.

Under modern common law and explicitly under Section 1-203, it is kept in mind while framing the law that in every contract, there is an implied covenant of good faith. This means that parties will have a good-faith duty to perform for each other. It is also assumed that the parties will perform the contract fairly and honestly, keeping each other’s promises and without frustrating each other.

There may also be situations where the parties offer some modifications to the performance of a contract, which the other party accepts in satisfaction of the performance. In case law, it was held by the court that in a contract for sale and delivery of certain goods, the seller may substitute a different mode of delivery with the assent of the buyer. The discharge of a contract by performance involves the following ways in which the contract stands discharged:

Payment 

The performance of a contract for the delivery of money is called payment. In the judgment of Kimball v. Reclamation Fund Comm’rs (1872), It was held by the Court that when parties to the contract in the case of delivery of payment agree to accept the negotiable instrument in lieu of payment, it is assumed to be a conditional discharge by both parties.

The mere promise to pay shall not be treated as an absolute payment unless both parties have agreed to accept it in such a way. When the promisor makes a proper offer of performance on the promise and the offer has not been accepted in this way, the liability of the promiser stands discharged. The main object of payment in court is to place the tendered money in the court, and the plaintiff is sure to get it. It then becomes the plaintiff’s money, and the right of the defendant to dispute it now becomes irrelevant. The above rule regarding the liability of the promiser was laid in Becker v. Boon (1874)

Tender

In the case of Knight v. Abbott (2007), the defendant claimed to have made a tender for payment. The plaintiff appealed against the judgment. The defendant claimed to have made a tender of payment, but the court held that no valid tender was made since the defendant only expressed his willingness to tender the money without specifying the amount or making a formal offer. Since the amount was not specified, the plaintiff couldn’t determine its sufficiency. Therefore, the Court reversed the judgment  and awarded the plaintiff the sum, including the interest thereon.

Substantial performance

There may be times when the performance is not complete. This gives rise to a new concept of substantial performance. Earlier laws either recognized the contract to be fully complete or there had been a material breach, but modern theories recognize the concept of substantial performance, whereby one side has been substantially performed though not completely. As a result of this performance, the other party has received some benefit, and the non-breaching party owes something for this value. Section 237(d) of the Restatement (Second) of Contracts provides for this part.

The parties to the contract have made a slight deviation from the performance of the contract, rendering the contract incomplete. It is left to the court to decide this issue, whether this slight deviation was minor or material to the performance of the contract. If the deviation is minor, the court provides reimbursement to the party who suffered the loss. However, if the deviation is material, the doctrine of substantial performance shall not apply, and it will result in a breach of the contract.

The doctrine of substantial performance was developed in the famous case of Jacob & Youngs (1919), where the plaintiff filed a lawsuit to recover the balance due on a building contract. The plaintiff argued that they had substantially performed the contract but made a minor deviation by using a different manufacturer for a small amount of iron pipe, which caused no damage to the defendant. The trial court entered judgment in favor of the defendant based on a directed verdict. However, on appeal, the Court reversed the judgment and ordered a new trial. The Court determined that the plaintiff should be allowed to prove that they had substantially performed the contract and that the defendant suffered no harm from the minor deviation. The Court emphasized that the defendant had accepted and continued to use the building without raising any issues with the work done by the plaintiff. Therefore, the plaintiff was entitled to recover the balance due as they had provided what the defendant had the right to expect under the contract.

While deciding whether substantial completion was there or not, the following factors are kept in mind by the court.

• Expectation of the non-breaching party: It has to be seen whether the performing party has met the expectations that were agreed to in the contract.
• Compensation for the injured party: The court must see that the injured party’s loss is easily calculable and deviation is not material to the party.
• Willfulness of Act: Substantial performance cannot be allowed when the party acts wilfully, intentionally, or deliberately.
• Delay in performance: Unless time is the essence of the contract, the court must see if the contract was affected by the delay in performance. 

Discharge by Agreement of the Parties

This is the most common method of discharging a contract. The parties to the contract have the freedom to enter into the contract or end it. The discharge by agreement absolves both parties from any future obligations. The agreement can be either express or implied. If the contract is not performed by either party, it can be discharged by agreement between the parties. In the case of King v. Gillett (1840), it was held that when two parties are married to each other, they may end their marriage by mutual agreement and rescind it.

Discharge by agreement can be done in the following ways:

Rescission

It is the mutual agreement of the parties by which both parties agree to rescind their contract and try to reach a position that they were in prior to entering into the contract. This type of rescission can also be termed as, “Mutual Rescission”. Rescission can be done orally or in writing.

The agreement to rescission can be brought into effect even if the parties have partially performed part of their contract. For example, Andy agrees to sow the plants in John’s garden. It is unbearably hot outside, and seeing him struggling to do work in such hot weather, John asks Andy to stop the sowing work. Here, mutually, both have agreed to rescind each other’s parts of work, i.e., John’s duty to pay is discharged, as is Andy’s duty to sow the plants.

In the case of Kidder v. Kidder (1859), it was held by the court that whenever parties to a contract agree to rescind a contract that was performed on one side, it must be without any consideration. 

Novation

The need for novation arises when both parties to the contract no longer accept the original terms of the contract and agree to substitute a new contractual agreement in place of the existing one. The novation of the contract not only changes the terms but also allows for a change of parties to the contract. All the prior contractual obligations of the parties are discharged by novation. The new terms must only be formulated after both parties agree to eliminate the old contractual obligations and substitute them with the new ones.

For example, A agrees to buy a Mercedes car from B. Later on, A makes a contract to sell his Rolls Royce to B instead of a Mercedes, which is agreed to by both.

In the case of Walker v. Johnson (1877), the Court held that when the parties to a contract make a new contract by changing the terms of the old one, the consideration for the new right extinguishes the liability for the old one.

In the case of Honeywell v. Elliott (1972), it was held that when parties to a contract make a new contract concerning the same matter and the terms of the latter are inconsistent with the new one as they cannot subsist together, the latter will be deemed to discharge the former. It was also held by the court that when a new party is substituted for the previous one by agreement of all three, though the terms may remain the same, it also amounts to a novation.

Accord and Satisfaction 

This method is another way to discharge a contract by agreement. This way is used when a dispute arises between the contracting parties. The parties to the contract then agree to terminate the existing rights under the contract and settle the claims and disputes between them through accord and satisfaction. Whatever new terms are created by the parties is called accord, and when parties comply with these obligations, it is called satisfaction. In the case of Bennett v. Hill (1884), it was held by the court that when there is an agreement where there is a promise of something new and satisfaction of a claim is taken, it amounts to Accord and Satisfaction.

Discharge by Non-Performance 

There are certain risks always involved when parties make a contract. Some of these risks may arise due to the impossibility of performance; for example, the buyer may not be left with any money to pay for goods, there may be a sharp increase in the price of goods, or the manufacturer may not be left with any raw materials to produce the end product. Such events are out of the control of the obligee. So the parties to the contract can include a clause in the contract to deal with such unforeseen circumstances. Thus, the discharge of a contract by non-performance can occur in the following ways:

Impossibility of Performance

This method of discharge of a contract is generally allowed by courts due to its impossibility. This situation arises due to the impossibility of any act or event that makes it impossible for the contract to take place according to the terms and conditions that the parties had agreed upon. The impossibility of performance may arise due to the following factors:

• Destruction of Subject Matter: The impossibility of performance arises when the subject matter of the contract is itself destroyed without any fault of the parties. These unexpected events may include natural disasters such as hurricanes, earthquakes, floods, fires, etc. These clauses relate to acts of God or natural disasters that are out of one’s control and can be termed as “Force Majeure Clauses”. In Dexter v. Norton (1871), it was held by the Court that where a specific thing whose existence is mandatory to the performance of the contract is destroyed without default of promise, it amounts to an impossibility. For example, when a music hall was accidentally destroyed by fire before a day of concert, amount of destruction of the subject matter. Hence here the contract is said to be discharged due to the impossibility of performance.
• Supervening Illegality: This situation arises when some new law is enacted and made applicable. As a result of this new law, the clauses in existing contracts become illegal. Thus, the parties are discharged of their obligations. For example, A contracts with B to be a surrogate mother for his wife, C. But before B is impregnated, the state passes a law making surrogacy illegal. Thus, the contract cannot be performed due to the passing of a law, making the contract illegal. In the case of Baily v. De Crespigny (1869) a piece of land was leased by a party only to erect ornamental buildings, but it was subsequently used by the railroad company by virtue of new powers given by the legislature. Hence, the earlier clauses of the contract have become illegal with the passing of the new law, making the existing contract discharged.
• Death: The parties to the contract can be discharged of obligations when there is death of either party and the contract requires personal services. For example, where a contract was signed by the singer and the management company to perform on a certain day at a concert. But the singer died in a car accident before the concert. The death of a singer discharges the obligations.
• Disability of the party: There may be circumstances where the contract requires personal services to be delivered but the person is unable to perform due to a disability such as illness, injury, or incapacity to perform.

Non Performance due to Impracticability

The new concept of impracticability is directly related to the doctrine of impossibility. The court discharges the performance of one party where, generally, the performance becomes expensive, very time-consuming or impracticable for the other party to perform. This doctrine has been mentioned in UCC Section 2-615(a), which states that the court has to see whether the non-occurrence of such circumstances was reasonably contemplated by the parties when the contract was made. Also, the Restatement (Second) of Contracts, Section 261, states that the duty to discharge the parties from the contract shall not occur later if the parties at the time of making this contract had not assumed that circumstances would not occur.

In the case law Autry v. Republic Productions (1947), Gene Autry, a famous cowboy movie star, contracted to work for Republic Productions. But during World War II, he was inducted into the army. As a result, he was unable to fulfill the obligations of a contract for a movie. In 1945, when he returned after the war, he sued the production company to release him from pre-war commitments. The Court agreed that it would be unfair to force Autry to fulfill his old contract as his career was interrupted by war and the value of the dollar had significantly changed. “War” was understood as an exceptional situation, and it was now Impractical for Autry to fulfill his contract.

While considering this doctrine, the court has to see the difference between “things cannot be done” and “I cannot do them.” The UCC, Section 2-615, talks about commercial impracticability. It states that when performance involves extreme difficulty and high expenses, it might be excused due to commercial impracticability. While considering this factor, the court generally allows for a considerable degree of fluctuation in prices, inflation, weather, and economic conditions. For example, limitations in the supply of materials due to war or a natural disaster.  

Non Performance due to Frustration of Purpose

The doctrine of performance comes into the picture when the purpose for which the contract was created gets defeated due to the occurrence of some event. The courts are generally cautious while applying this principle. The court allows the parties to discharge their contractual obligations only after the contractual parties are able to show before the court the unforeseen circumstances. 

This doctrine finds its origin in the early 1990s “Coronation Case” (1903). The facts of the case include that Mr. Henry had rented an apartment from Mr. Krell for a very high fee to view Edward VII’s coronation. However, the coronation was postponed. So Mr. Henry wanted his rental money, but Mr. Krell refused. The Court declared that Mr. Henry was not liable since the purpose of the contract was frustrated by the illness of the king, who awarded no money to Mr. Krell.

There can be no general rule to determine the obligations of a contract. Each case depends upon the circumstances that exist therein. The value of the performance of one party becomes worthless. Here, the level of frustration is generally understood by both parties.

 Non Performance due to Failure of Condition

This type of situation arises when an express condition has been mentioned in the contract but is still not fulfilled. Either party to the contract has not satisfactorily met the condition, and this results in the discharge of obligations by the parties. The condition may be express, implied, or concurrent in nature. Also, there may be certain conditions, such as precedent and subsequent conditions. When time is the essence of the contract, then time as a condition can be made explicit in the contract. Also, the parties can make a contract to perform to each other’s satisfaction, and a contract can be terminated using this method if the parties do not perform to their satisfaction.

Every contract is followed by certain conditions that must be fulfilled. Each party to the contract has certain duties and obligations. The contract is deemed to be performed upon fulfillment of these duties and obligations. The conditions may either result in the termination of the contract or the parties can continue further with the performance. They can be stated as follows:

• Condition Precedent
• Concurrent condition
• Condition subsequent
• Express condition
• Implied condition

Condition Precedent

All those things that are necessary for the formation of a valid contract are conditions precedent. The condition must be fulfilled before the contract comes into existence. Such contracts involve the usage of words such as when, if, before,whether, etc. For instance, to say that in order to buy a house, the buyer must be qualified for financing, and only after fulfillment of this condition can the seller sell his house.

In the case of Stone v. Bancroft (1903), it was held by the Court that in ordinary contracts of service, the performance of service is a condition precedent and the employee is not entitled to payment without rendering or offering to render the agreed service.

Concurrent Condition

Concurrent conditions are those conditions to which the parties to the contract apply at the same time. In the above example, when the buyer has the financing to buy a house, he tenders a cheque in favor of the seller, and subsequently, the seller transfers the title of the property to the buyer. It is the fulfillment of the obligation on each party’s part. In case law, Morton v. Lamb (1797), in ordinary contracts for sale of goods, the obligation of the seller to deliver and the buyer to pay are concurrent conditions, and neither can enforce the contract with the other without showing readiness and willingness to perform.

Condition Subsequent

As the name suggests, the condition that is implied after the contract comes into existence. It is a condition imposed on the party that is related to future contractual obligations. For example, such conditions exist in the case of insurance policies where the insurer pays the insured on an event such as an accident and the insurer imposes a subsequent condition that the insured will only be paid the insured amount if he notifies the insurer within the stipulated time of the accident, damage, or loss to the property. 

Express condition and implied condition

The express condition is stated in the contract on the face of it. Each party is aware of the obligations and agrees to perform those obligations as per the terms and conditions of the contract. These conditions involve the usage of words such as “Provided that”. For example, the goods will be delivered to the location provided that it does not rain. In Poussard v. Spiers (1875), where a singer was contracted to be a principal part of opera, his failure to perform in the opening and three succeeding nights would frustrate the main object of the contract, and the other party is liable to be discharged of its obligations.

On the other hand, implied conditions are not expressly stated in the contract, but they are presumed to be an inherent part of the contract and are presumed to be understood by the parties. For example, if A hires B to repair his car, it is implied that A’s duty to pay B is conditioned on B’s completion of his job.

Condition of Timeliness

Whenever “time is of the essence” is mentioned in the contract, it becomes an explicit condition. For example, if A has to deliver the wedding dress for B on the 2^nd of July, the day of the wedding, and if A fails to deliver the dress in the stipulated time, there is a breach of condition. Since time was of the essence and the dress was to be delivered on time, the contract has not been fulfilled. So time can be a material default in the case of a contract when all things are required to be done by certain dates and times. However, in some cases, depending on the circumstances, it is left to the court’s discretion. For example, when a builder contracts to build a house on a stipulated date but completes it a week or month later, this would not render the contract void. Thus, it has to be completed in a reasonable time, and what constitutes a reasonable time is a question of fact. The builder can be held liable only for the expenses incurred due to late completion; otherwise, the contract stands still. 

Condition of satisfaction of the parties

The satisfaction of the party is of prime importance. This can be achieved when the party to the contract is satisfied by the performance of the other party to the extent that was agreed upon in the contract.

Discharge by Operation of Law

Discharge by operation of law can be held in the following ways:

Merger

The contract can be discharged when the inferior rights of the party to the contract merge with the superior rights. As a result of this merger, the earlier contract gets terminated. For example, A had taken a property on lease from B. But later on, A acquires this property from B and becomes the owner of it. This ownership discharges the earlier lease contract between A and B.  In a case law case, St. Mary’s Parish Credit Union Ltd. v. T.M. Ball Lumber Co. Ltd. (1961), it was held by the court that an old security is merged with a new one when a new security of a higher nature is taken by the same person against the same debt or demand.

Alteration of a Written Instrument

Whenever material alterations are to be made to the contract, it generally requires the consent of both parties. The material alterations are those that have a significant impact on the rights and liabilities of the parties to the contract. However, immaterial alterations may involve mistakes such as clerical errors in a contract. Whenever there are several promisors, those who consent to the alterations are bound by the contract, leaving the rest who do not consent to be discharged. The alteration, which expresses whatever the law implies, is not a material alteration. In case law, the accidental alteration does cause the loss to promise. In Stiles v. Probst (1873), it was held by the court that whenever an alteration is made with the consent of another party, it would amount to a new contract. In Arnold, Barbour Hartshorn v. Jones (1852), an alteration by a stranger does not affect the contract

Statute of Limitations

The party to the contract has a right to move to court to sue the breaching party to seek remedy whenever a breach of contract occurs. However, whenever the obligee claims a right in court, he is bound by the limitation period. Every state has certain statutes where, in order to seek a remedy, one must move to court within the stipulated time. The law of limitation is based on the doctrine of laches, which states that the court does not favor those who are aware of their rights but do not take action within a reasonable period. Thus, the statute of limitations bars a person from filing a suit beyond the prescribed time.

This reasonable period of limitation under most of the statutes ranges between two and six years. As per UCC Section 2-725, the period of limitation is four years. The period begins from the day on which a suit could have been filed before a court; for instance, in a case of breach of contract, it would be from the moment there was a breach of the contract. Thus, if the obligee brings the suit before the court after the reasonable time has run, he is barred from moving to the court. However, the law has provided certain exceptions where a person can move to court even after the prescribed period, for example, due to incapacity due to infancy. The effect of this is that the obligee has no legal remedy available after the prescribed time has passed.

Bankruptcy

The obligation of the parties to the contract is discharged when a court declares a debtor to be bankrupt. The Bankruptcy Act, 1996 provides for certain circumstances under which the contractual obligations of the parties can be discharged. The creditors are not provided with much recourse whenever they approach the court to seek protection against the debtor. The bankrupt will be discharged from all the debts and liabilities provable against his estate in bankruptcy. 

Discharge by Breach of Contract

Anticipatory Breach

A breach of contract occurs when a party fails to perform its contractual obligations. The non-breaching party treats the obligations as terminated. While considering whether there was a breach of contract, the court considers whether the breach was material or not.  Also, if the promisor makes it clear before the time of performance that he can no longer perform it, it is said to be an anticipatory breach. The non-breaching party then moves to court to claim damages and discharges the obligee of his obligations.

The discharge of contract by breach was recognized in the famous case of Hochster v. De La Tour, 2 Ellis & Blackburn (1852), Mr. De La Tour had agreed to hire Mr. Hochster as a courier and travel companion in Europe starting on June 1, 1852. However, on May 11, 1852, De La Tour informed Hochster that he no longer needed his services. Hochster then filed a lawsuit seeking compensation for the breach of contract before the agreed-upon start date of the contract. The Court held that when a contract involves a promise for future actions and the party refuses to fulfill the agreement, it amounts to a breach of contract. Also in such contracts, there is also an implied promise that both parties will not hinder each other’s performance. If one party renounces their duty to perform a contract for future actions, it releases the other party from their obligation to perform the contract.

Actual Breach

The other type of breach consists of voluntary acts by parties that destroy the party’s ability to perform them. For example, A agrees to sell a piece of land to B but instead sells this land to C. Here, A has committed an anticipatory breach. The non-breaching party can move the court to seek a legal remedy as soon as the breach occurs. These rules are mentioned under contracts for the sale of goods under UCC, Section 2-610. Under Section 2-609(1), it has been stated that a contract imposes an obligation on each party that the other’s expectation of receiving performance will not be impaired. The demand to perform such an obligation must be in writing.

Whenever there is a breach of contract, the injured party gets the right to compensation. It is also not mandatory that every breach will discharge the party of its obligations. In case law, Frost v. Knight (1872), where a contract was that a man who was engaged was to marry a woman upon the death of his father, but he broke the engagement while his father was alive, this was a breach of contract. In the case law Dingley v. Oler (1886), it was held by the court that if the expressions of the clause are not absolute and the refusal is unequivocal, then the contract cannot be held to be renounced In the case of Cort V. Ry. Co. (1851) the renunciation of the contract can be made during the course of the performance of the contract. Here, the contract was made to manufacture and supply goods of a specific kind to be delivered in certain quantities monthly, and the buyer, after accepting a portion of the goods, gave notice to the seller that he had no occasion for more and would not accept or pay for them. It was held that the seller might claim breach of contract without manufacturing or tendering the rest of the goods.

Figure: Summary of Discharge of Contract

The following figure summarizes the various ways in which a contract can be discharged:

Figure: Summary of Discharge of Contract (Source: The Law of Contracts by Pamela R. Tepper).

Difference between Discharge, Rescission and Termination of a contract

Discharge of a contract takes place when the parties to the contract have fulfilled the obligations that were agreed upon in the contract. It means the end of a contractual relationship. A typical example of discharge may involve an artist whose management agrees to sign a contract to perform at a concert. Now, when the artist performs and is paid according to the terms of the contract, the contract is said to be discharged. The terms of the contract are fulfilled, and each party is discharged from contractual obligations.

Rescission of contract means that when the contract is formed under fraudulent circumstances, the party who has defrauded does not fulfill the obligations in the contract. So the other party is not obliged to continue with the contract. Thus, the process of ending the contractual relationship as a result of fraud and misrepresentation is known as rescission. For example, A signs a contract with a consultant named B, who represents himself as a certified public accountant. As B was engaged in providing the services, A finds some inconsistencies in the statements and advice provided by B. Later on, A finds that B has misrepresented himself as a CPA. So A rescinds the contract with B To protect his interests due to fraud committed by B.

However, termination, as the word suggests, means bringing an end to the contract. When both parties to the contract do not perform their agreed duties and obligations, it may result in termination. In the above example, if the artist does not perform or does not wish to perform, the management has the option to terminate the contract. Termination of the contract can also occur when both parties agree to terminate it. This situation may arise when frustrating conditions, such as the passing of some government regulations, affect the agreement, and then both parties agree to terminate it. Sometimes there is an impossible situation under which both parties to the contract are unaware of the circumstances due to which it becomes impossible to fulfill the contractual obligations. For example, the massive fire burns down the entire wedding venue, which was booked by both parties. Thus, both parties make a mutual decision to terminate the contract and rebook it for a later date. 

Exceptions to Discharge of a Contract

There are certain exceptions under which the contract cannot be discharged. 

• There exists an exception to general rules of consideration known as the Mutual Release Exception. As per this exception, whenever a party agrees to discharge obligations under a contract, a separate contract agreement must be made.
• When a contract is to be performed, there may be a situation under which only one party has performed its part but the other party hasn’t. So in such cases, a regular agreement to discharge obligations will not be considered valid. Here, the parties can only be discharged from their obligations after they enter into an agreement by deed.
• In case law, Compagnie Noga D’Importation et D’Exportation v. Abacha (2003), parties, instead of discharging their obligations, can replace those obligations with a totally new separate contract. So here, only a new contract will aid the parties in discharge from previous obligations in the old contract.
• There may be certain situations after the parties enter into a contract, such as commercial hardships, strikes, lockouts, and riots. The contract cannot be terminated in any of the above situations unless there is a clause specifying such conditions.
• Incapacity of the party to contract or a position where performance is done by the third party and the third party does not perform will also not result in the discharge of contract.

Remedies for Discharge of Contract

The terms of the contract define the promises of the parties that are binding on each other. A contract can either be void, voidable, or valid. A contract can be said to be valid when it is performed according to the obligations mentioned in it. However, if the party does not perform the contract as agreed, then the breaching party can be held liable for damages. The non-breaching party can seek a remedy for the losses that occurred. The remedies generally fall into two categories:

Legal Remedy

The legal remedy is monetary damage that the injured party can claim for the losses that occurred. These remedies are generally called damages, and the party is liable to get the compensation in terms of money since it is determinable in nature.

Equitable Remedy

It is a non-monetary remedy or equitable in nature since an adequate amount of loss cannot be compensated by money.

Under the Uniform Commercial Code, the major objective of granting a remedy in cases of discharge of contract is to put the aggrieved party in a better position. According to Article 74 of the UCC, the injured party can seek a remedy from the court by suing the breaching party, and the party who has breached the contract is liable to pay for damages. However, the amount of damages that can be paid to the injured party would only be the amount that was reasonably expected at the time of the formation of the contract. Both the seller and the buyer have the option to seek remedies under this code.

For instance, the seller, as per Article 2-703 of the UCC, has the following options:

• Withhold the delivery of goods
• Resell and recover damages
• Reclaim the goods due to insolvency of buyer
• Recover the price

Similarly, under Articles 45-51 of the UCC, the buyer of goods has the following options to seek remedy:

• He may cancel the contract if the goods are not received or in an acceptable form.
• He is entitled to recover the price of goods.
• He can claim damages for non-delivery of goods.
• The damages can either be compensatory or complementary.

However, equitable remedies can only be claimed when monetary remedies are insufficient and cannot be determined. The equitable remedies that an injured party can seek are:

Suit for Specific Performance

It is an equitable remedy by which the court requires the party who has breached a contractual obligation to perform what was promised under the original contract. Generally, specific performance is ordered by the court when monetary damages are insufficient to compensate the injured party. This type of remedy is mostly used in real estate laws. It is at the discretion of the court to provide for this remedy; however, in order to claim this remedy, the burden of proof lies on the party to show the uniqueness of the subject matter of the contract and that the substituted performance will be appropriate to compensate for the loss that occurred.

Suit for Injunctive Relief 

An injunction is a very common type of equitable remedy available in civil litigation. The court grants the injunction to the injured party after considering the following factors:

• Money is insufficient compensation
• Irreparable harm and injury have occurred to the party
• It is essential to maintain the status quo to serve the interests of the party since a permanent resolution cannot be reached.

The injunction order is a temporary restraining order that orders the other party to refrain from doing something that causes injury to the other party. Often, such orders are ex-parte in nature and effective for a period of 10 to 14 days. After this process, a temporary injunction is granted after a notice is issued to all parties. The order of temporary injunction remains valid until the final hearing of the case. Then the final stage of injunctive relief results in a permanent injunction. The permanent injunction permanently restrains the party from doing certain acts.

Rescission

Rescission is a voluntary agreement between the parties to set aside the contract. Here, the obligations of the parties are discharged, and in most contracts, rescission takes place at the initial stages of the contract when neither party has begun the performance. Sometimes, rescission can be unilateral, where one party can cancel the contract because of a breach caused by the other party. Usually, the injured party moves to court to cancel the contract and restore the consideration. This type of remedy is mostly granted in cases of mistake, fraud, or misrepresentation.

Reformation

As the name suggests, the word reformation means to rewrite and modify the contract. Generally, the court does this for the parties to reflect the true intention and meaning of the contract.

Restitution

The word “restitution” means to restore the benefits received by the party that were unjustly obtained. The main object of granting this remedy is that the wrongdoer should not profit from the wrongful act. While granting the restitution, the court generally considers the following questions:

• Was the breach material enough?
• Was there a partial performance by a non-breaching party?
• Did the breaching party receive any benefit from the partial performance?

Quantum Meruit

The doctrine of Quantum Meruit means “payment in proportion to the work done”. It is a quasi-contractual remedy. Under this remedy, the court awards a specific amount to the party who has been damaged because of unjust benefits to the other party. The claim for this remedy arises in the following situations:

• When the contract has not been fully performed and the breaching party breaks the contract in between, the injured party can ask for compensation for the amount of work done.
•  When the work has been done non-gratuitously
• When the work has been done and was accepted under contract but subsequently declared void, the party that performed its part is entitled to receive payment for the work done.

Consequences for not discharging the contract

Discharging a contract means fulfilling the contractual obligations of the parties to the contract. In these cases, the contract is discharged when both parties perform their parts and agree to the terms of the contract. This results in the termination of their contractual relationship. However, there are various modes by which the contractual relationship is not terminated as a result of breach, impossibility, or frustration of purpose. So the parties to the contract may face the following consequences:

When the contract is frustrated

The frustration of a contract results in the preservation of legal rights and liabilities at the time of frustration. The primary legal obligations of the parties are no longer binding on them.

When the contract is not frustrated

Since one of the parties to the contract has not performed, it results in a breach of contract. This will give rise to a situation where the injured party can sue the breaching party and claim damages, or the injured party can exercise the right to terminate the contract.

The other impact of discharging a contract may be that the contract can be void or voidable at the option of another party.

Discharge just excuses future performance and has no retrospective effect. There are certain options for the obligor, such as continuing with the part performance of the contract and claiming damages for the non-performing part. Also, he has the option to terminate the contract. 

Other Modes of Discharge of a Contract

Apart from the above-mentioned modes by which a contract can be discharged, there are various other modes by which a contract can be discharged:

Cancellation

The party to a contract may discharge the other party by canceling, destructing, or surrendering the written contract. The law specifies no particular method of discharging a contract by cancellation. All the processes of cancellation, destruction, and surrendering can be done in an informal way, even by handing the document to another party or by tearing it into pieces.

Power of Avoidance

The obligor can avoid the contract. The contract is either void or can be made voidable at the option of another party. It is voidable due to lack of capacity, such as infancy and insanity. The contract can also be avoided if it was made under duress, undue influence, misrepresentation, mistake, etc. Whenever one party exercises this option, the other party is discharged from its obligations.

Conclusion 

The performance of contractual obligations leads to the discharge of a contract. Although the contract is discharged when performed, there are various other ways, such as novation, alteration, rescission, and remission, by which the contract can be discharged. The contract also stands discharged by agreement of the parties, lapse of time, or non-performance. When the party to a contract fails to perform it according to the conditions, it may result in a breach of contract. The breach can be an actual or anticipatory breach. Nonetheless, there are certain ways to discharge the contract, but one must follow the one that is more efficient. Hence, the most efficient way to discharge a contract is through performance. Since the other ways of discharging a contract are not as efficient as the mode of discharge by performance, the parties to the contract are at a loss and liable to pay damages for the loss caused to the other party.

Frequently Asked Questions (FAQs) 

What do you mean by discharge of contract? Broadly explain the different ways by which a contract can be discharged.

The discharge of a contract can be termed the termination of the contractual relationship between the parties. The legal binding power of the parties comes to an end and creates a valid termination of contractual duties. The contract may be discharged either by the act of the parties or by operation of the law.  The parties can either fulfill these obligations or discharge them, or they may be exempted by law from their obligations.

Distinguish between a condition precedent and condition subsequent with respect to the discharge of a contract.

All those things that are necessary for the formation of a valid contract are conditions precedent. The condition must be fulfilled before the contract comes into existence, whereas a condition subsequent is a condition that is implied after the contract comes into existence. It is a condition imposed on the party that is related to future contractual obligations.

Specify the ways by which a contract stands discharged by agreement.

This is the most common method of discharging a contract. The parties to the contract have the freedom to enter into it or end it. The discharge by agreement absolves both parties from any future obligations. The agreement can be either express or implied. The contract can be discharged by agreement by rescission, novation, or accord and satisfaction.

How can a contract be discharged by operation of law?

Discharge by operation of law can occur in the following three ways:

1. Merger: The contract can be discharged when the inferior rights of the party to the contract merge with the superior rights.
2. Alteration of a Written Instrument: Whenever material alterations are to be made in the contract, it generally requires the consent of both parties.
3. By Statute of Limitations: The party to the contract has a right to move to court to sue the breaching party to seek remedy whenever a breach of contract occurs. However, whenever the obligee claims a right in court, he is bound by the limitation period.
4. By Bankruptcy: The obligation of the parties to the contract is discharged when a court declares a debtor bankrupt. 

Can a contract be discharged by impossibility of performance? Briefly explain.

Yes, a contract can be discharged by the impossibility of performance. This method of discharge of a contract is generally allowed by courts due to its impossibility. This situation arises due to the impossibility of any act or event that makes it impossible for the contract to take place according to the terms and conditions that the parties had agreed upon. The impossibility may arise due to the death of the party, Supervening illegality or either the destruction of the subject matter.

What are the remedies available with a party when there is a breach of contract?

If the party to a contract does not perform the contract as agreed, then the breaching party can be held liable for damages. The non-breaching party can seek a remedy for the losses that occurred. The remedies generally fall into two categories:

1. Legal remedy
2. Equitable remedy

Further, to get an equitable remedy, the following suits can be filed such as suit for specific performance, a suit for injunctive relief, a suit for rescission and reformation of contract, or a suit for Quantum Meruit.

References

• https://saylordotorg.github.io/text_law-for-entrepreneurs/s18-01-discharge-of-contract-duties.html
• https://lawshelf.com/coursewarecontentview/lack-of-capacity
• https://carbonlg.com/top-reasons-terminate-contract/
• https://books.google.co.in/books?hl=en&lr=&id=InbnDwAAQBAJ&oi=fnd&pg=PP1&dq=LAW+GOVERNING+DISCHARGE+OF+CONTRACT+IN+USA&ots=Gxm_duNIS7&sig=XFh_aMzVZre32ipYp9ctIHbFMlk&redir_esc=y#v=onepage&q=LAW%20GOVERNING%20DISCHARGE%20OF%20CONTRACT%20IN%20USA&f=false
• https://archive.org/details/cu31924018822647/page/n15/mode/2up?ref=ol&view=theater
• https://archive.org/details/americancontract00huffiala/page/536/mode/2up?ref=ol&view=theater
• https://books.google.co.in/books?hl=en&lr=&id=PewfEAAAQBAJ&oi=fnd&pg=PP1&dq=Discharge+of+Contract+Duties+Uniform+commercial+code+USA&ots=BSIzZtY_8r&sig=aVBMBncl4SMZLFCyNLkQeEcfoLk&redir_esc=y#v=onepage&q=Discharge%20of%20Contract%20Duties%20Uniform%20commercial%20code%20USA&f=false
• https://www.ddegjust.ac.in/2019/1/CP-302%20Additional%20Lessons_21012019.pdf
• https://www.jstor.org/stable/784318?seq=4
• https://openyls.law.yale.edu/bitstream/handle/20.500.13051/11065/56_22YaleLJ513_1912_1913_.pdf?sequence=2
• https://openlibrary.org/works/OL21075992W/Law_of_Contracts_and_the_Uniform_Commercial_Code
• https://books.google.co.in/books?hl=en&lr=&id=o0hWAgAAQBAJ&oi=fnd&pg=PP1&dq=Discharge+of+Contract+Duties+Uniform+commercial+code+USA&ots=Bvj-VuKdA8&sig=OHLu-gsHN5RmP5xqXDdabl4Ovo0&redir_esc=y#v=onepage&q=Discharge%20of%20Contract%20Duties%20Uniform%20commercial%20code%20USA&f=false
• https://saylordotorg.github.io/text_advanced-business-law-and-the-legal-environment/s13-performance-and-remedies.htm
• https://www.lawteacher.net/lectures/contract-law/discharge-of-obligations/agreement-performance-and-breach/#:~:text=There%20is%20an%20exception%20to,contract%20amounts%20to%20valid%20consideration
• https://finlawportal.com/discharge-by-operation-of-law-and-by-lapse-of-time/
•  https://www.lawteacher.net/cases/hochster-v-de-la-tour.php
• https://blog.ipleaders.in/all-about-discharge-of-a-contract/#:~:text=contract%20is%20discharged.-,Merger,by%20the%20way%20of%20merger.
• https://smallbusiness.chron.com/difference-between-discharge-termination-contract-17568.html

---

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.

‍This article is written by Palak Poddar, a law graduate of  Banasthali University, Rajasthan. This article explains in detail about the various concepts dealing with design patent in US, famous examples of deisgn patents, common misconceptions between design patents and utility patents, their benefits, relevant case laws, how to obtain a design patent, legal provisions applicable to design patents as per US Code, design patent infringement and tons of FAQs that one may have regarding design patents. 

It has been published by Rachit Garg.

Introduction

Every product created in the market has a unique and different shape, color, size, or pattern, right? You can look around yourself to find any of such products even now. Look around and see there are various companies that have great and unique designs created for their product. But wait, have you ever wondered if competitors of these companies can replicate those designs and earn profits from them? The answer is yes, of course, they can, but only if any company hasn’t patented their design yet. Whether we talk about the most iconic Apple iPhone design, refreshing Coca-Cola bottle, or your favorite Nike sneakers they all have one thing in common: that is their designs are patented. So, next time you admire a beautifully designed product, remember that it is a strategic decision of a company that knows the importance of protecting its design through patents. 

In the dynamic and competitive market, it is a high probability for companies to face the constant threat of duplication and forgery. With no protection of design patents, any brand has to bear a huge amount of loss. But what exactly is a design patent? What are the benefits that come with it? How can one get their design patented in the US? Also, what happens if someone violates your design patent rights? If you are also curious about such questions, read further. In this article, we have exhaustively covered all the necessary points that you should be knowing related to the topic of design patents in the US. 

Design patents are a type of intellectual property that grant rights to the original inventor or designer to the way the product looks. It is a form of protection for the unique and attractive appearance of a product. It can safeguard your innovation and enhance your brand value. But they also come up with challenges and limitations that you should be aware of. If you are also willing to start your business in the US or want to know how these big brands create their brand value, continue till the end of this article. The topic has been broken down into simple and easy-to-understandable terms for you to understand it. 

What is a design patent

Design patents are a form of intellectual property that protect the aesthetic and ornamental features of an invention. It is a special type of patent that covers how something looks rather than how it works. It protects the unique visual appearance of a product or item. The inventors can typically use design patents to protect the look of a product, such as the shape of a jewelry case, the design of a phone case, or the pattern of a fabric. The main focus of this patent is on shape, configuration, patterns, or surface ornamentation rather than its functional aspect. It can be a powerful tool for businesses and investors alike. Since a company invests a lot of money in a design of a product they generally look for a return on their investment by restricting others from making, selling, or using that product design. Once the inventor takes the right to its product design, no other person can replicate those designs without the prior permission of the inventor. Design patents are made to protect industrial designs and thus anyone who is the original inventor of the product can claim it. 

In the United States, original design makers can obtain this right from the United States Patent and Trademark Office (USPTO). USPTO has the power to grant design patents to the inventors with a 15-year term of protection. 

Examples of Design Patent

Design patents are used by various popular brands across different countries belonging to different industries. These brands want to protect their unique and recognizable product design. By securing their rights with design patents these brands build their brand value and uniqueness in the market. Their product is now different and recognized by the customers as well. From technology, beverage, and fashion to footwear industries, you’ll find a lot of examples related to product design patents. Here are some examples of common and well-known brands for you that have built brand recognition by obtaining design patents:

Apple’s Iconic iPhone

No wonder why the iPhone has been popular among people. The brand really did well for its customers. Its rectangular shape, round corners, iconic home button, and arrangement of user interface elements all have been protected by design patents. 

Dolce and Gabbana’s Luxury Handbag

The luxury fashion accessory brand has obtained a design patent for its exclusive handbag design. The patent covers the ornamental features of the bag such as its shape, hardware details, embellishments, and signature patterns that makes the bag looks different, unique, and stylish. 

Coca-Cola Contour Bottle

The contour bottle design of your favorite beverage Coca-Cola is also patented under a design patent. The bottle’s different shapes, curved body, and embossed mark on it are easily recognizable about the brand whenever we see any such bottle. 

Rolex’s Watch 

Renowned watchmaker Rolex also has a design patent for its watches. These patents protect the visual elements, including the shape of the watch case, the arrangement of the dial, and the design of the bezels and bracelets. All these elements will be exclusive to Rolex watches only.

Nike’s Air Jordan Sneakers

Your most popular Nike brand also granted design patents for their Air Jordan Sneakers design. This patent protects the different elements of the sneakers such as silhouettes, color schemes, and branding details such as the inspired Jumping Man logo. This design will only be seen in Nike’s shoes and no other person can use it without the prior approval of the company i.e. the owner of the design patent. 

Differences between a design patent and a utility patent

In the US along with a design patent, there are other two patents that are granted to protect intellectual property rights. These two are utility and plant patents. Though there are specific purposes for each of these patents, this is a general misconception between utility and design patents are similar. A utility patent is typically the common type of patent that people generally apply for in the US. This patent focuses on the functional aspect of the product and promotes technical innovation. Here’s a detailed comparison to highlight the difference between both the patents: 

Basis	Design Patent	Utility Patent
Purpose	Protects how an article looks	Protects how an article is used and works
Duration	Valid upto 15 years from the date of grant	Valid upto 20 years from the date of filing
Focus	Focuses on aesthetic and ornamental features such as shape, patterns	Focuses on functional feature, operative  structure, specific features
Examples	Consumer products, products packaging, Graphic User Interface (GUI),  jewelry features, clothing design	Machines, Pharmaceutical formulation, manufacturing process, software algorithm
Requirement to obtain	New, original, and primarily ornamental	New, useful, non-obvious
Costs	Generally less costly in comparison to utility patent	More costly than a design patent
Maintenance fee	Not required	Less required
Difficulty in obtaining	Easier in obtaining design patent in comparison with a utility patent	More difficult in obtaining than a design patent

Benefits of design patents

Design patents are a powerful tool for businesses, inventors, or designers. Obtaining a design patent can be a valuable investment for those who specifically rely on the visual appearance of their product. There are various advantages to obtaining a design patent. Here are some of them: 

Exclusive ownership right 

A design patent grants the owner exclusive right over its product design i.e., on the visual appearance of the product. This simply means that no other person can buy, sell or use this patented product design apart from the owner itself. In case anyone wants to buy, sell or use that design that person needs to take prior permission from the owner of the product. It protects the owner legally and prevents unauthorized copying of that product. 

Brand protection

Apart from product design protection, design patents also help in maintaining brand reputation and contribute towards it. It helps in building and establishing a strong brand identity as it safeguards the visual features of products through which a customer is associated. This protection discourages people from copying or replicating and can further enhance brand values and integrity associated with the product. 

Distinct market identity

The one thing that can set a product apart from its competitors is its visually appealing design and uniqueness. If any inventor is taking design patents, they can differentiate their offerings from the other competitors in the market and thus create a distinct market identity. This can also help in increasing recognition for your brand, building loyalty to your customer, and succeeding in the market. 

Return on investment 

With the help of a design patent, you can also get a good return on your investments if your protected design gets popular or is high in demand. After securing exclusive rights to your unique design, you can start capitalizing on the commercial success of your product which will increase sales and profitability. 

Legal protection 

Obtaining a design patent can also provide legal protection to enforce intellectual property rights. In the case of infringement or violation of intellectual property rights, the original inventor can take legal action to avoid unauthorized usage of its design. This fear of being liable for the consequence of a breach can intimidate wrongdoers and further discourage them. 

Licensing and royalties

Once the inventor obtains a design patent, it can license or sell it to other parties. This allows the patent holder to generate additional revenue or income from the same invented design. The patent holder can grant permission to any third party whomsoever he wants to use his protected design in exchange for fees or royalties.  This can be further protected by the licensing agreement. Using a legally backed document can secure you and can also increase opportunities for your inventors and designers looking to expand their business or looking for new opportunities.  

Provisions related to design patents in the US 

A principal Statute of the United State Code deals with patent law under Title 35. It governs all the aspects of patent law in the State of America. These provisions are applicable to the design patent application as well. Several provisions that specifically govern the Design patent are mentioned below: 

35 USC 171. Patent for Designs 

This provision of USC 171 says that anyone who invents a new, original, and ornamental design for an article of manufacture can obtain a design patent for that design. This simply means that every individual who creates a unique and visually appealing design for their product has the opportunity to protect their design through design patents. 

The essential criteria for obtaining a design patent under this provision are specifically mentioned which are novelty, originality, and ornamentation. The design which you want to be patented should be new and different from the existing designs. Also, it should display a level of creativity and uniqueness in itself. Along with this, the design should also have an ornamental aspect attached to it, which has to be an aesthetic appeal or design with decorative quality. 

This provision offers legal protection to the patent holder by granting an exclusive right over his design and prevents others from making, using, or selling that design. Once the right has been granted to the patent holder, no other person can use it without the permission of the original patent holder. 

35 USC 172. Right of priority 

Meaning 

“Right to Priority” under provision 172 of the US Code deals with the concept of priority in the patent application. This allows a patent application to get the benefit of a filing date on an earlier filed foreign application when filing a correspondence application in the United States. In simple terms, the patent application will get priority treatment if the same application has been filed earlier in some other country. Applicants can get a patent in the US also, even if the invention has been disclosed earlier in some other country by way of an application. 

Limitation Period 

There is some limitation period given under this provision to claim the benefit of the “right to priority”. It says that to claim right to priority, the design application has to be filled within six months of the filing date of the foreign application. 

Requirements

Under this provision, few requirements have been given in order to claim the benefits of the “Right to Priority” with regards to provisions given under subsection (a) to (d) of 35 USC 119. 

(i) The current application has to include references related to the earlier filed patent application and details about the application number, filing date, intellectual property authority, or country in which the earlier application was filed. The earlier claim also has to be filed in the Patent and Trademark Office. 

(ii) Application has to be filled by the same inventor, assignee, or legal representative who has previously filed a patent application in some other country. 

(iii) Application filed for the invention has to be the same invention for which the earlier application was filed. The subject matter i.e. invention of both the applications has to be the same. 

(iv) Earlier Application has to be filed in the country that is a member country of the Paris Convention for the protection of industrial property. The application should be entitled to get the benefits of the Paris Convention on the date of filing of such application. 

35 USC 173. Term of Design Patent 

Section 173 of the code defines the duration or term of protection granted by a design patent. It says that the term of the design patent will be 15 years from the date of grant of the patent. In simple terms, it means that once the design patent has been granted by the United States Patent and Trademark Office (USPTO), then the patent holder has the exclusive right to sell, use, make, or import the design for a period of 15 years. It is important to keep in mind that the term of the design patent begins on the date of grant of the patent and not from the date of filing. 

After the completion of a period of 15 years, the design has public access and is no longer protected by patent rights. Once completed the tenure, anyone can incorporate expired patented designs in their product and earn revenue out of it. 

35 USC 102. Conditions for Patentability, Novelty

This provision of USC 102 states the requirements that an invention has to meet in order to be considered novel and eligible for patent protection. The criteria are to determine whether a certain invention is new and original and is considered to be novel. 

This section has four subsections defining the different ways in which an invention can be considered novel. It says that any invention is not considered novel if: 

(i) An invention was patented or described in a printed publication in the US or any other country before the effective filing date of such invention. In simple terms, if any invention was publicly disclosed, known, or used by others before the filing date, it would not be considered novel. 

(ii) An invention described in the patent application was filed before your invention, and that patent application was filed in the name of some other inventor. 

(iii) An invention has already been disclosed by an inventor or joint inventor or by someone who got the information directly or indirectly from the inventor or joint inventor, within 1 year or before the effective filing date of the claimed invention. 

(iv) An invention has already been disclosed directly or indirectly by the inventor or joint inventor or by someone who got the information directly or indirectly from the inventor or by the joint inventor before the effective filing date. 

(v) If the subject matter disclosed and the claimed invention is owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention.                    

An exception to JRA Parties

Section 102 (C) of this code talks about exceptions to the 1 year grace period for disclosure made by Joint Research Agreement parties (JRA). It specifically mentioned that disclosure made by the JRA party within one year of the filing date of the claimed invention will not consider prior art if the following undermentioned conditions are not fulfilled:

(i) If disclosed subject matter was developed and the invention claimed was made by one or more parties by JRA before the effective date of the claimed invention 

(ii) If the claimed invention was a result of activities that fall under the scope of Joint Research Agreement (JRA). 

(iii) If the patent application for the claimed invention discloses the name of the parties to the JRA

35 USC 103. Conditions for Patentability, Non-Obvious Subject Matter 

This section of USC 103 talks about the requirements for non-obviousness that needs to be met if any invention wants to be considered patentable. There are certain criteria given to determine whether an invention involves an inventive step or not. The step has to be something that is beyond obvious to a person skilled in that relevant field. 

Meaning of the word “Non-Obviousness” 

The word “Non-Obviousness” under the patent law refers to the term that says an invention has to pass an inventive step or a level of creativity that a person must have if he is skilled in the relevant field during the time of invention. 

The analysis of obviousness involves two steps. Firstly, the prior art has been reviewed to identify the relevant references involved. Secondly, the claimed invention is compared with the prior art in order to determine whether the difference between them would have been obvious for the person having ordinary skills in art or not. 

In simple words, an invention is considered to be “non-obvious” if it goes beyond what a skilled person in that field considers to be an obvious or predictable solution based on the previous technology, invention, and knowledge. 

Factors determining “non-obviousness” of an invention

• Level of skill in the prior art 
• Quantity and quality of the prior art 
• Difference between the prior art and claimed invention 
• Commercial success and result involved in claimed invention 
• Failure of others to determine same results 
• Difficulty in achieving claimed invention 

35 USC 112. Specification 

This section of the US Code 112 provides requirements of a specification or written description for an invention in a patent application. It clearly mentioned that a written description of an invention has to be full, clear, concise, and in exact terms that enable one to understand and reproduce the invention further. It ensures that the investor should disclose his invention in clear language and with particular details so that anyone who belongs to that field can understand it and use it for the benefit of the public. The language of the written description should be crafted so meticulously that it allows one to convey the invention’s structure, function, and method of operation. 

Conclusion & Form 

The conclusion of a written description of an invention should include claims that the inventor believes in with respect to its invention. Claims are nothing more than  written statements that specify the subject matter of an invention. Claims can be independent, self-explanatory to define the invention on its own or they can be in multi-dependent form, meaning referring to some other claims by adding more details to them. 

Claim in Dependent Form

When a claim is written in dependent form, it simply means that it is referring back to a previously mentioned claim and adding more details or limitations to it. The limitations of the dependent claim are referred to as part of the dependent claim. 

Claim in Multi-Dependent Forms 

A claim in multiple dependent forms refers to more than one previously mentioned claim and adds a limitation to its subject matter. Multi-dependent form claim does not serve any other multi-dependent claim. The limitation of this claim is considered part of multi-dependent claims. 

Claim in Combination Form 

A combination form is a claim for a combination of elements that can be described in terms of its functions without stating specific structure, material, or acts supporting it. This type of claim is interpreted to cover the corresponding structure, material, and acts that describe the specification and their equivalents.

How to get a design patent  

If you are planning to obtain a design patent in the US you must have heard about the United States Patent and Trademark Office (USPTO). If not, USPTO is a federal agency in the United States that has the authority to grant patents and register trademarks to the people. It is the primary authority that deals with the matter of intellectual property rights in the State of America. It has set some guidelines on how a person can obtain a design patent. Here’s the step-by-step guide for you on how you can obtain a design patent in the US: 

Check requirements and eligibility for a design patent   

After you prepare your design, the primary step you need to do is adhere to the requirements that are given by USPTO for a design patent. As discussed before in provision 35 USC 171, the article of manufacture must have a new, original, and ornamental design to get the approval for a design patent. If any design lacks that then it will not be considered as a proper subject matter for obtaining a design patent. In addition to this provision, there are also some guidelines mentioned under Chapter 1500 of the Manual of Patent examining procedure (MPEP) that provide the criteria for patentability and substantive examination requirements. Moreover, any subject matter that is offensive to any race, religion, sex, ethnic group, or nationality is not a proper subject matter for obtaining a design patent, as mentioned under 37 CFR 1.3. 

Do a preliminary search 

Before filing an application to the USPTO, you must check if your invention has not been disclosed by someone else. You can’t obtain a patent if the design has already been publicly disclosed by the other party. Your invention has to be new and original in order to obtain a patent. A preliminary search to check if your invention has any other similarity with the prior art can be helpful for you. This search further can be helpful for you while the patent examiner is evaluating your example. It is the duty of every individual who plans to obtain a patent to disclose all the information, including prior art close to the invention in the preliminary search itself. Those who fail to do so get rejected by the patent examiner. You can take help from the online available tools mentioned below to get the search done quickly. These tools are authenticated as they are given by USPTO. 

• https://shorturl.at/dkqM4 
• https://shorturl.at/vzDOV 
• https://shorturl.at/drwCL 
• https://www.wipo.int/reference/en/designdb/ 

Appoint IP attorney or agent 

You can also consider appointing a registered IP attorney or agents for this. A subject matter expert can help you plan a strategy as they have knowledge about patent laws, rules, regulations, and technical knowledge related to the invention. These attorneys or agents can also help you to perfectly draft your patent application. USPTO has granted permission to these agents and attorneys to prepare and prosecute the patent application on their behalf. They hold the authority to manage things by way of power of attorney. Once they are appointed, USPTO can directly communicate with them about the procedure to obtain a patent rather than communicating with the parties. 

Prepare patent application 

After doing preliminary research, you can start preparing your patent application either by yourself or with the help of an appointed agent. Also, it is important to keep in mind that you can’t claim two different designs in a single claim. In easy words, if two distinct designs have no relationship with each other, they can’t be filed in a single application. Two separate applications have to be made for them. However, if the design is the modified version of the single claim, then it can be added to the same application. According to the guideline of USPTO, your design patent application should contain the following elements: 

Preamble 

The preamble is an introductory part of an application that provides essential information about the application. It particularly includes three key elements that are the name of the applicant, the title of the design, description of the article in which the design is imbibed.

Name 

The preamble starts by mentioning the name of the individual or entity that is applying for the patent. This could be the name of an individual inventor or a company name or organization representing inventors.   

Title

The title of the application has a specific purpose as it helps in identifying the article. You need to give the article a specific and accurate name that is commonly known and used by the general people. A title helps the patent examiner in conducting thorough research on prior art to find similar designs. It also helps in categorizing applications to their appropriate class as well as subclass. This helps the public to understand the nature and use of an article that incorporates the design, mainly after the patent goes public.  

Description of the article

The preamble should also describe the nature of the article and the intent to use that article in which the design is imbibed. This helps to understand the overall purpose and function of the article. Also, it tells how the design contributes to the overall appearance and visual aesthetic feel of the product. It provides the overall background of the matter and gives a gist of the inventor’s intention for the patent application.  

Cross-reference of related application (optional) 

This is about providing information about any other related application or patent application that is connected to the current design. It is an optional element that is not necessary to be included if the related application information is already there in the datasheet. Whenever there is a related application such as a parent application or provisional application, it is important to include that information so that the examiners easily understand the connection between the two applications. This can consist of the application number, filing date, and other related information that helps in understanding the connection. 

Statement for federally sponsored research and development (optional) 

This is again an optional element that has to be included only if the design is a result of sponsored research and development by a federal agency. It helps in understanding whether the design is funded or supported by any federal agency that supports the creation of designs. As the USPTO tracks the record of every applicant, this disclosure of information will help them further accurately document the design and its development. 

Description of the figures of drawings 

This element in the patent application gives a detailed description of the visual representation of a product that you include in your application such as drawings and photographs. It provides a textual narrative to enhance the understanding of the design. It also indicates what view a drawing represents such as front view, top view perspective view. The description carefully and precisely explains the various features of the drawings such as their shape, proportion, patterns in it, etc. 

Along with the descriptions of the drawings, the design patent application also contains the following statements:

Description of unillustrated portion 

This description provides an explanation about the portion of the design that is not illustrated in the drawing. Suppose you only include the left portion of the drawing and the design of it from the right view is identical; then this has to be written clearly to give a better understanding of the overall design. 

Description of Non-claimed portion 

This description provides an understanding of a part of the design that is not included in the claim. It is the excluded part of the design that doesn’t contribute to the claimed design and is not a part of patent protection. 

Clarification of Broken-line illustration 

This provides clarification on the broken line used in the drawing or illustration. Broken lines in a design represent the environmental or contextual texture; these lines do not contribute to the design and are not a part of the claimed patent. It differentiates the actual design element and environmental features used as broken lines. 

Description of Nature and Environmental Use 

This description includes the description of the nature and environmental use of a design that helps to understand the context and purpose of the design more comprehensively. It has to be included here if it is not described in the preamble. If the preamble already has the description, then this can be skipped from here. 

Feature description 

This description in a design patent application is where the inventor has to describe the different or distinctive features of the design. This description highlights the unique elements of the designs, their configuration, arrangements, or patterns that set the design apart from existing designs or prior art. This will be the detailed comparison that the inventor has to do, in order to understand the difference between his design and the already existing design. It can include shape, color, texture, lines, or any other ornamental feature that helps in enhancing the visual appearance of the product. This detailed feature description should be in clear and concise words, through which the inventor will be able to communicate his thoughts to the examiner. 

A single claim   

A design patent application allows only one claim, unlike a utility patent where multiple claims are allowed. This claim defines the design that the applicant is looking forward to being patented. The claim should describe the ornamental design for the article in which the design is imbibed in technical terms. This is a concise statement about the subject matter of the application. The claim should be consistent in using the terminology with the title of the invention that accurately describes the design throughout the application. This helps in avoiding any ambiguity for the examiner. If by any chance the specification includes the special description of the design, modified form of design, or other descriptive matter, the word “as described” has to be added to the claim after “as shown”. The line should be read something like this, “the ornamental design (for which the article in which the design is imbibed) as shown and described. While writing the single claim, it is important to keep in mind that the claim should be broad enough to cover all embodiments of the design and at the same time be narrow enough to differentiate it from existing design or prior art. 

Drawings and photographs 

Drawing or photographic representation is the most essential element of a design patent application. This conveys the visual aspect of a design such as its shape, configuration, surface pattern, ornamentation, etc. These drawings and photographs are carefully prepared that showcase different views of the products. It includes photographs of designs from various angles such as its front, back, top or bottom view. These drawings and photographs are well labeled for the examiner to understand each feature of the product easily. 

Black and white photographs or drawings

In every design patent application, it is important to include black and white photographs or drawings of the claimed design. This drawing and photograph is the visual representation of the design in a clear manner that leaves no room for other representations or uncertainty about the design. Drawings can be done with black ink on white paper, whereas black and white photography is an alternative to it that can also be used. The drawings and photographs should comply with the requirements given in Provision 35 USC 112. It says that the drawings and photographs should include enough views of a product design that fully disclose the appearance of the product. Along with this, there are some other requirements given under 37 CFR 1.84 and 1.152 that you also need to comply with. It is also important to keep in mind that you cannot use a combination of both photography and drawing. This could add ambiguity to the designs. To avoid this, it is advisable to pick one among these that could fit you. The patent application will only get accepted if the guidelines given by USPTO are followed; otherwise, it leads to rejection. 

Colored drawings and photographs 

You can use colored drawings and photographs in your design patent application to represent your designs only when you state a reason for the necessity of using the color. If you are including colored drawings only for the representation purpose and they are informal, then you need to mention this specifically stating that “Colours shown in the claimed design form no part thereof”. Color will be considered an integral part of the claimed patent design unless the disclaimer is provided separately in the application. Just like Black and white photography or drawings, USPTO has also laid down some guidelines for colored photographs in 37 CFR 1.84. These also need to be checked before attaching color photographs to your application; otherwise, there is a high chance of your application being rejected. 

The views 

The photographs and drawings you’ll be including in your patent application should include a sufficient number of views that helps to understand the overall appearance of the claimed design. That includes all views of a product such as front, bottom, top and back views. It is also recommended to include the perspective view in a three-dimensional way that clearly shows how the product will appear in general. You also need to mention specifically if both the views of your products are similar, like “the left view is identical to the right view as shown in the image”. If the bottom view of your product is flat or doesn’t include any ornamental design then this also should be mentioned clearly. The word “unornamental” should only be used for a flat surface that has no decorative or design element in it. Similarly, if a certain side of the product is not visible during the use, then it can be omitted from here. However, if that part is supposed in explaining the claimed design, it should be there in the application. 

Surface shading 

Drawings in a design patent application should include appropriate surface shading to clearly depict the character and contour of all surfaces, particularly from the three-dimensional aspect of your design. This is important as it differentiates between the open and solid areas of the designs. Usage of solid black color is not allowed generally unless it represents the color black or is used for the contrast color. It is important to provide accurate and appropriate surface shading as lacking it can create an unclear design. Adding surface shading after submission of the application is not permissible and will be considered rejected. It is also important to comply with the rules and regulations given by USPTO in order to get a grant for a patent application. 

Broken Lines 

Broken lines in a patent application are just for illustrative purposes and it does not form a part of the design claimed. They are used to describe the part of the environment in which the design will be used. These are the portions of articles that are not considered as part of claimed designs. While using broken lines, you should be careful that it should not overlap or interfere with the claimed design. They should also be in less opacity than the lines used to illustrate the claimed design. By using the broken lines, you can conveniently show the difference between the claimed design and the environmental surface. 

Execute oath or declaration 

The final step for a design patent application is the execution of an oath or declaration. It is a legal declaration that an inventor has to sign in order to confirm the truthfulness of certain statements. It is the acknowledgment of legal implications after submitting patent applications. There are certain requirements for oath and declaration given by USPTO in provision 35 USC 1.63 that needs to be followed. Also, this oath and declaration must be properly witnessed and notarized as per the rules and regulations of USPTO. 

File the application 

After completing the preparation of the design patent application the next step is to file the application in the patent office. This includes filing necessary forms, providing necessary documents, and paying associated fees. The elements of the patent application should contain information in the following order mentioned below. This is also prescribed under 37 CFR 1.154. You can also use the form link to download the form. 

1. Design patent application transmittal form: This form is used to provide essential required information about the patent application, such as the title of the design, name of the applicant, address of the applicant, filing fee payment details, or others. It is a cover sheet that accompanies application material. Download the form link from here. 
2. Fee transmittal form: In order to get the patent you need to pay a certain amount of fee prescribed by USPTO. The authority has levied an appropriate fee structure for everyone that needs to be paid in order to obtain the patent. These fees are for appropriate filing, patent search, and examination fees. You can check the authentic fee structure from here. This fee structure can vary depending upon the inventor if it is an individual or medium, small, or large entity. The form requires you to pay the filing fee as well as you need to specify the types of applications, number of claims, or any additional fee if required. You can download the form from here. 
3. Application Data Sheet: This data sheet contains comprehensive information about the application, that includes the inventor’s details, the applicant’s details, and any other application or prior art details. It is a summary of key important information that needs to be kept in mind while the examination process. Check here to know more details.
4. Specification:  A specification is a written document that specifies the details of the design in written form. It includes a detailed description of the design, featured design, and special elements as discussed earlier in the design patent application. You need to attach the same prepared documents here. 
5. Drawings and Photographs: Include the drawings and photographs you prepared earlier with proper labels. 
6. Inventor’s Oath or declaration: Attach the oath or declaration you prepared earlier as discussed above. 

After receiving the application, USPTO assigns a separate application number and filing date to each individual. A unique “filing receipt” is generated by the patent office and delivered to the inventors so that they can keep track of their application status. Further, the application has been sent to the examiner for the examination process as per the date of the application. 

Examination process

During the examination process the United States Patent and Trademark Office (USPTO) reviews the application for compliance with formalities and does thorough research on the design claimed along with its comparison to the prior art or existing designs. The examiner begins by checking all the formalities that need to be fulfilled. It ensures that the applicant has to follow all the rules, regulations and adhere to the guidelines of USPTO while submitting the application. If there is anything missing in that, then the examiner sends the application for correction. During the examination process, if the examiner finds that the claimed design already exists or it matches with the prior art then it rejects the application immediately. This rejection is communicated to the applicant through office action. A detail is issued to the application that provides the reason and ground for rejection of such application along with appropriate modifications and recommendations to avoid this rejection. 

Response to office action

After receiving an office action it is important that you should respond to it within an appropriate time. The receipt you have received in office action generally mentions the time frame to reply as a “reply by” date. Typically it is set for six months, it can be more depending on the receipt you have received and also the availability of the office. You can submit the response after making the necessary prescribed amendments. It is important that you should reply to each objection raised and address the issue. You can further request the office to reconsider your application while presenting your arguments on the point of objection raised. 

In every communication with the office, you particularly need to mention the following undermentioned things: 

1. Application Number 
2. Group Art Unit Number 
3. Filing date 
4. Name of the examiner who prepared recent office action 
5. Title of the invention 

You also need to attach a “certificate of mailing” prescribing that you have made the response within the given timeline. This timeline will appear on the front page of the receipt mailed by the office action. The certificate was sent by the USPTO to identify that the response is sent before the expiration of the fixed time period. 

If for any reason you will not be able to respond within the given time frame, then you can request for extension along with the reason for such delay. You need to pay some required fees also, in order to get the extension of time from the patent office. 

To ensure receipt confirmation of filed documents, applicants can include stamped self-addressed postcards with their replies. This postcard will be stamped with the date of receipt by USPTO and returned to the applicant which serves as evidence of timely receipt. If you plan to change your mailing address during the application process it is important to notify USPTO in writing about the same. It is also important to include the correct mailing address for further communication. Failing that can lead to miscommunication between you and the patent office. Here’s a suggested format for “certificate of mailing”:

[I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Commissioner for Patents, PO Box 1450, Alexandria, Virginia, 22313- 1450, on (Date of mail)” 

Name: 

Signature: 

Date:                                                                                     ] 

Allowance and grant 

After receiving the applicant’s response the examiner carefully examines the application again to check if the criteria are being met or not. If the examiner is satisfied that the application has met the guidelines of USPTO a “Notice of Allowance” shall be issued to the applicant. This final allowance will be granted once the necessary fee is paid by the applicant within the prescribed time frame. If the applicant failed to do so, the application will be discarded by the Patent Office. The prescribed time to pay the fee is generally within 3 months from the date of receiving the notice. Once the fees are paid, the patent will be granted to the applicant. A letter will be issued by USPTO to the applicant indicating that he has been granted the patent for the so-and-so design that he applied for. The letter will include the details about the applicant’s name, title, date of grant, patent number, etc. Once the patent is granted the applicant becomes the exclusive owner of the patent and enjoy the rights granted to him with respect to that patent. 

Reconsideration 

In certain situations, even after receiving notice of allowance, the applicant wants to submit the application for reconsideration on certain aspects of design. This could include addressing any remaining issue that is raised by the examiner. In order to do so, the examiner has to file a Request for Continued Examination (RCE) along with the prescribed fee and specified time frame.  

Also, after a careful examination of the response to the office’s action, the examiner can either grant the application or further reject it. The examiner can make the rejection “final” upon its decision. If the applicant is not satisfied with this they can further appeal to the Patent Trial and Appeal Board (PTAB). Applicants can also file a new application and take the benefit of an earlier filing date to keep the claim continued. 

Design patent infringement

Design patent infringement happens when someone unauthorisedly manufactures, uses, sells or imports a design that is similar to the design already patented by someone else. The person who infringes the right of another patent owner hasn’t obtained prior permission to use, manufacture, sell, or import that design. When such infringements happen, the rights of the original patent holder get violated and therefore legal actions can be taken to enforce those rights. If you are already a patent holder and someone has copied your design, the following statutes are there for you to seek damages. 

Design patent infringement provisions

35 USC 271. Infringement of design patent 

This provision explains the actions that constitute a design patent infringement. Provisions of section 35 USC 271 are carefully examined to determine whether a patent holder’s rights have been infringed or not.   

It says that anyone who make, use, offer to sell, or sell an invention of another patent holder, without authority or permission, within the state of the United States or import into the state of the United States during the term of that patent invention is said to be a patent infringer. 

Anyone who imports a product or invention into the state of the US and such product invention is already protected with a design patent without the authority of using it, will also be considered a design patent infringer. This provision will also include products manufactured abroad and brought to the US for sale. 

If anyone in the US sells, offers to sell, or import a component of the manufactured machine, manufacture, combination, or composition or material or apparatus used in practicing a patented process, knowing that it is specifically made for infringing the patent, they will also be held liable as a contributory infringer. In simple words, if someone knowingly supplies or deals with parts or material designed especially for infringing a patent, that person will have to share equal liability with that infringer. 

35 USC 289. Additional remedies for infringement of design patent 

This provision grants the patent holder the right to claim specific remedies in case of their design patent infringement. This remedy allows the patent holder to take additional damages from the infringer for using its design. 

According to the provision of 35 USC 289, if there is an infringement of a patent then the patent holder is liable to receive the amount of total profit derived by the infringer from the sale of such articles of manufacture. The damages awarded to the patent holder will be calculated based on the total earned profit. To get the benefits of receiving damages, the patent holder has to prove that the infringer has actual knowledge about the patented design. However, knowledge is not a must, the infringer still has to pay the damages, if he is negligent to know about the design. 

Just like a utility patent that calculates damages including reasonable royalty or actual damage, this provision also calculates the special damages in case of design patent infringement. This provision is to help design patent owners to seek respect and protection for their designs. This amount can be recovered in any court in the United States. 

Tests that determine design patent infringement 

Ordinary Observer Test

The ordinary observer test is a test to determine a design patent infringement. In this test visual appearance of a patent, design is carefully examined and compared with the design of the accused infringer. This test questions whether the accused design is similar to the observer design when viewed by an ordinary observer. If the ordinary observer found the designs to be similar then the infringement of the design patent is confirmed. Here, an ordinary observer is a person familiar with the prior art and who is viewing the designs with an objective eye. The knowledge and experience of the observer are irrelevant in this test. 

Three-Way Visual Comparison Test 

A three-way visual comparison test is another way to determine patent infringement. This test uses three different visuals simultaneously to determine if a product infringes a patent design or not. The three different images are put side by side at the time of comparison. They are patented design, accused design, and prior art. The test is based on the idea that an ordinary observer can be able to locate the similarities and differences among all the images clearly. This test is a more specific approach to determining designs patent infringement as it involves structured comparison. 

Steps involved in determining three-way visual comparison test 

1. The first step involved in identifying the patent design, accused design, and prior art design that existed before the invention. 
2. Display all three design images side by side for the ordinary observer to locate the differences and similarities among them. 
3. The ordinary observer will carefully examine and come up with a conclusion if the accused design is more similar to the patented design or prior art. 
4. Based on the observer’s conclusion if the accused design is more similar to the patented design, then it is said that the patent is infringed. 

Four-Factor Test 

The four-factor test is laid down in the famous case of the United States i.e., Apple v. Samsung.  These factors are used to determine the scope of the design patent of a product. This test helps in analyzing the overall difference in the design of a product. The four factors to be considered while examining an “article of manufacture” are:- 

The Scope of the design 

This factor looks into the specific elements and features of a design. This can be done by carefully examining the written description and drawing of the patented designs. The more similarities in the features of a design patent claimed, the more likely it is to be the design infringed. 

Relative Prominence

This factor looks into how prominent the design is within the product as a whole. The visual significance of the patent design is compared to the other elements of the product. The vision is to assess the design’s visual impact and whether it stands out as a distinctive feature or not. If the design is relatively minor, then patent infringement is less likely to be found in the product. 

Conceptual difference

This factor examines whether the design is conceptually different from the product as a whole or not. In this factor, we evaluate the design as a standalone feature that can also be identified separately from the functional aspect of the product. Here, if the concept of the design is different from the product then it is less likely to be said that the patent has been infringed. 

Physical Relationship

This factor examines the physical relationship between the design and the rest of the product. It carefully determines how the design is integrated and how it is interacting with other components of the product. If the design is somehow imbibed in such a way that it cannot be physically separable from the product, it is more likely to be said that the patent has been infringed. 

Design patent cease and deceit letter 

If someone has violated your right by copying your design then you should start by sending them a cease and deceit letter. Cease and deceit letter is the first step involved in notifying the infringer about your design patent infringement. You can draft the letter yourself with the required details or can also take the help of the IP Attorney. This letter will notify the infringer about your knowledge of their activity. This also helps in solving the matter outside court which can be a cost-effective thing. The cease and deceit letter must contain the following information:

1. Sender’s and receiver’s Information: A sender’s information is a must for a cease and deceit letter. It should clearly identify the sender’s name, address, and contact details. This will help the receiver to reach back to you properly.  It should also contain the details about the receiving party and to whom are you writing to. Mention the infringer’s name, address, and contact details as well. 
2. Description of Intellectual Property: Explain briefly about your intellectual property that has been infringed. Provide accurate information about the infringed design and its registration information. You can also include the patent number, title, and the specific design feature that has been protected with your patent. 
3. Allegation of infringement: Mention the reason why you believe that the receiver has infringed the patented design.Description of the infringer’s activities that constitutes infringement. Highlight the key similarities between the patented design and the infringer’s design, also the elements that constitute infringement. 
4. Evidence in support: Add necessary evidence that supports the allegation of infringement. Pieces of evidence can include written descriptions, detailed comparisons, side-by-side visual representations of designs, photographs demonstrating the object being sold online, or any other supporting document that indicates similarities between the patented design and the infringer’s design. 
5. Demand to cease infringing activity: Clearly state the demand to immediately cease activities that promote infringing activity upon the patented design. You can also mention the actions that need to be stopped in order to cease the activity. These actions can be production, sales, manufacturing, distribution, promotion, or any other. 
6. Compliance Timeframe: Mention a compliance time. A reasonable timeframe with a deadline to respond and take action against it is required. This will give the infringer appropriate time to understand the situation and take necessary action to save them from paying damages. 
7. Legal Consequences: Explain the possible legal consequences if the infringer continues to use the design. You can also request monetary compensation from the infringer. This can settle the past legal claims you have with the infringer and allow them to further utilize your design with a royalty payment. In case the infringer does not want to settle the dispute you can further intimidate them with legal suit and potential damage of reputation. State that the sender has rights and available remedies as per the applicable patent laws of the USA. 

Famous design patent infringement cases in the US

Apple Inc. v. Samsung Electronics Co. (2018)  

This is a high-profile legal battle in the US between two renowned companies, Apple and Samsung. This case of Apple v. Samsung, had a high impact on the technology industry as it highlighted the need and importance of design patents in the technology industry. In April 2011, Apple accused Samsung of infringement of its design patent related to its various iPhone models. Along with design patents Apple also accused Samsung of other infringements, such as trade dress and utility patents for smartphones and tablets as well.

In 2012, the District Court of California awarded $1.049 billion in damages in favor of Apple for wilful infringement of its design and utility patent and also trade dress. However, the case continued with subsequent appeals and retrials. The jury upheld the verdict of the lower court on the design patent but reversed the verdict on the utility patent. The case moved to the Supreme Court, where the court rejected the ruling and returned the case to the lower court, stating that Samsung need not pay the entire profits of the device. The damages should be based on a portion of the profit as the infringed patent is only a small part of the device and not the entire device. In 2018, the case was finally settled as Samsung agreed to pay Apple $539 million dollars for copying features of its original iPhone. 

Crocs Inc. v. International Trade Commission (2010)

This was another case of the popular footwear company Crocs. In 2006, the company Crocs filed a case in the International Trade Commission (ITC) against several companies based out of the US for infringement of its plastic clog footwear design. The allegations were that several companies in the US were importing and selling shoes that were similar to clog-design shoes. 

The International Trade Commission (ITC) is a federal agency that has the power to restrict the importation of goods that infringes the rights of another patent holder in the United States of America. Here, crocs company requested a cease and desist letter to restrict other companies from importing and selling its design. Crocs shoes include unique design elements such as a strap at the back and web structure like round holes in the upper portion of the shoes. After examination of the patented designs and accused designs ITC found that there is no infringement of Crocs shoe designs by its competitor’s product shoes. Aggrieved from this, crocs appealed in the US court for the federal circuit. 

The Federal Circuit reversed the judgment of ITC and found the competing shoes to be infringing on the design of Crocs shoes. The court found the competitor’s shoes to be “virtually identical” to the design of Crocs shoes. The court further issued an order prohibiting other competitor companies to use the patented design. 

Gorham Co. v. White (1871)

This is a landmark case of Gorham Co. v. White related to design patents in the United States. After this case, the design patent laws enforcement and interpretation have been changed. This case established the “ordinary observer” test for design patent infringement which was discussed earlier. The case revolves around the Gorham company which is involved in the manufacturing of decorative silverware items. They patented their innovative silverware patterns with the name of “Gorham patterns”. These patterns carry unique features and unique ornamental designs. Gorham filed a legal suit against its competitor company White as the company was using similar patterns in its product. 

When the case stepped into the Supreme Court, the primary question was how the court will determine if the design has been infringed or not. The court laid down the “ordinary observer” test as a standard to determine the design patent infringement cases. This test was based on the visual appearance of the accused design and patented design when observed by an ordinary observer. If the ordinary observer sees those designs to be the same or identical, then it is said that the design patent has been infringed. This test continues to become an integral part when determining any design patent infringement case to date. 

Polaroid Corporation v. Eastman Kodak Co. (1986) 

This was another landmark case for design patent infringement in the USA. This case of Polaroid v. Eastman revolves around Polaroid Corporation, a renowned instant camera and film company, and Kodak, a player in the photography industry. The company patented its design of instant photography cameras and film. Polaroid sues Kodak Co. for selling instant cameras and films similar to it. It is found that Kodak’s camera has similarities to Polaroid designs including overall experience, mechanisms, and features of the products. 

After several analyses and legal proceedings federal district court announced that Kodak’s design was “substantially the same” as the design of Polaroid and hence it has infringed the company’s design. The court issued an instant injunction that prohibits the production and sale of infringed designs. Though the legal battle continued as Kodak appealed this decision in another court. The appeal court reversed the order of the district court stating the design was invalid, due to obviousness. 

The case finally moved to the Supreme Court where the court held that both the designs are “substantially the same” and ordinary observers would examine both the products as same. The court highlights that the “ordinary observer” test is the primary method to determine whether a design patent has been infringed or not. The court awarded Polaroid damages of $909 million for its design patent infringement. The huge amount made this case the largest awarded patent damage case of that time. 

Egyptian Goddess Inc. v. Swisa Inc. (2008) 

In this case, the United States Court stated that the “point of novelty” test should no longer be used in determining patent infringement cases rather the court should use the “ordinary observer” test. The case of Egyptian Goddess v. Swisa revolves around the Egyptian Goddess company which was famous for manufacturing nail shapers. The company has already patented the unique ornamental design of its product nail shaper. The company filed a lawsuit against another competitor company alleging infringement of its design of nail buffers. The nail buffer has a square cross-section and buffer surface on three sides of its four sides which was similar to the accused design also. 

The district court granted the accused motion for summary judgment, on the ground that it passed the “point of novelty” test. It says that the “point of novelty” test distinguishes between the accused design and prior art and if a difference is seen, then there is no design patent infringement. Here, there is a minor difference between the features of product design and prior art. 

The company Egyptian Goddess appealed against the order of the district court to the federal circuit. The federal circuit further stated that the “point of novelty” test is not enough to determine the design patent infringement case. It says that the test is pointless as it only considers the difference between patented design and prior art. The court further observed that this test does not fulfill the purpose of a design patent which is to protect the ornamental features of a product and not only its functional features. The court found Swisa guilty in this case of infringement of the design of the Egyptian Goddess. After this case, the “point of novelty” test is no longer used in determining design patent infringement cases.  

Conclusion

Lastly, it is important to protect the unique ornamental design of your product if you are an inventor, business owner, manufacturer, or someone who wants their design to be protected. As it can protect your competitors from copying your product design and also helps to earn a royalty on it, it can be a helpful tool for businesses. Understanding its advantages and obtaining one for yourself, can surely be a smart move. We have also seen above how famous brands have conflicts over designs and due to which someone has gained a huge profit on the other had someone lose a huge amount in the business. You can surely understand the importance of design patents by understanding iconic brand strategies such as Apple, Nike, Louis Vuitton, Coca-cola, etc. 

As per the USPTO patent statistics, there is a decrease in the number of patented applications in the year 2021 by 4%. In 2021, the total no. of issued design patents by the USPTO was 34,288. The design patent includes many different types of electronic devices, smartphones, tablets, computers, and earphones.  The decrease can be a subsequent response due to covid. Though the number of applications has increased in past decades as more and more are knowing the importance of design patents. 

Make sure you check the criteria and requirements for obtaining a design patent. These criteria and requirements are given by the United States Patent and Trademark Office (USPTO) which every person who is obtaining a design patent has to comply with. The application process to obtain a design patent is simple, but at the same time, it is important to file it correctly so that you get your patent granted by the authority. After obtaining a patent you can enjoy your rights for the next 15 years without any hindrance. If you have also a unique and distinctive design then obtain a design patent today and take your business to new heights. 

Frequently Asked Questions on Design Patents (FAQs)

What is a design patent? 

A design patent is a type of intellectual property right granted to protect the visual or ornamental appearance of a product. This patent protects the overall visual appearance of an article of manufacture which includes shape, pattern, unique appearance, or combination of elements of a product. 

What can we protect with a design patent? 

A design patent can protect the visual characters of a product. It includes protection of various items like the overall appearance of furniture, shape of a product, patterns of clothing, unique product packaging, graphic user interface (GUI), and others. Every design that is appealing to the eyes can be protected. 

How long does a design patent last? 

A design patent lasts up to 15 years from the date of grant of such patent. Till 15 years, the patent holder has the right on its invention that prohibits anyone else from making, selling, using, or manufacturing of products of similar or same design. 

How much does it cost to apply for a design patent?

The cost for the application of a design patent can vary depending on various factors such as the size of the entity and the total number of claims made in the application. You have to take care of the expenses such as USPTO filing fee, Attorney fee, examination fee, patent search fee, Professional Drawing and illustrator fee, and maintenance fee. The filing fee for a basic entity is somewhat around $ 380 and the large entity is $ 760. The filing fee of a design patent is lesser than a utility patent. 

Is a design patent different from a utility patent? 

Yes, a design patent is different from a utility patent of a product. A design patent protects the overall visual appearance of a product on the other hand utility patent protects the functional aspect of a product. Along with this, the filing fee of a design patent is also less than the utility patent. 

How can we obtain a design patent in the US? 

You can obtain a design patent in the US by filing an application to the United States Patent and Trademark Office (USPTO). If your application met the requirements as per USPTO, then the patent will be granted to you. There’s also a filing fee that you need to pay, in order to get the patent. 

Can I license and sell my designs with a design patent? 

Yes, as an owner of the design patent invention, you have the authority to license or sell your design. This will allow you to get a certain amount of royalty in exchange for the use of your design patent. By this, you can generate revenue for your business without giving up the ownership of your designs. 

Can I obtain both a design patent and a utility patent for the same invention? 

Yes, you can obtain both a design patent and a utility patent for the same invention subject to certain situations and conditions. If the product has a unique ornamental design as well as a novel functionality aspect it can obtain both utility and design patents. For example, you can get a utility patent for how a particular feature of the smartphone works and a design patent for how the feature looks. But the scope of protection of both protections will vary depending on the type of protection. 

References 

• https://www.law.cornell.edu/uscode 
• https://cafc.uscourts.gov/opinions-orders/08-1596.pdf
• https://www.lexisnexis.com/community/casebrief/p/casebrief-egyptian-goddess-inc-v-swisa-inc
• https://www.repository.law.indiana.edu/cgi/viewcontent.cgi?article=11066&context=ilj  
• https://www.uspto.gov/web/offices/pac/mpep/mpep-1500.html