Law Commons^™

Keeping It Wreal: How The Eleventh Circuit's Wreal Decision Is Better Suited For A Uniform Reverse Confusion Multifactor Analysis, Sean J. Flaherty

Marquette Intellectual Property & Innovation Law Review

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Justice Breyer And Intellectual Property Law

Marquette Intellectual Property & Innovation Law Review

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Trademark Use Doctrine In The European Union And Japan, Martin Husovec

Marquette Intellectual Property Law Review

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What's Your Story? Every Famous Mark Has One: Persuasion In Trademark Opposition Briefs, Candace Hays

Marquette Intellectual Property Law Review

A key contention of legal writing scholarship is that the legal resolution is rooted in storytelling. The law consists of an endless telling and retelling of stories. Clients tell stories to their lawyers, who must figure out how to frame their client’s narrative into a legal context. Lawyers retell their clients’ stories to judges using pleadings, motions, and legal briefs. Judges and administrators retell these stories in the form of an opinion or verdict.

Storytelling in the legal context is an important element of persuasion. For the purpose of this comment, legal storytelling is defined as the use of fiction-writing …

Internet Outlaws: Knowingly Placing Ads On Parked Domain Names Invokes Contributory Trademark Liability, Ariane C. Strombom

Marquette Intellectual Property Law Review

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Liability For Trademark Infringement For Internet Service Providers, Katja Weckström

Marquette Intellectual Property Law Review

In the wake of the millennium and the rise of the internet, legislative action was taken to shelter internet service providers (ISPs) from various forms of legal action. In the turmoil of chartering new and unregulated territory, such a safe harbor was deemed necessary to protect startup businesses. Today, these internet actors (e.g. Google, Amazon, and eBay) have grown strong and powerful. Thus, intellectual property holders have started to challenge this privilege in court. Increasingly, owners of famous marks seek liability and damages for direct and indirect trademark infringement in courts around the globe. This Article will focus on liability …

The Time And Place For "Technology-Shifting" Rights, Max Stul Oppenheimer

Marquette Intellectual Property Law Review

Intellectual property policy requires balance between the goal of motivating innovation and the need to prevent that motivation from stifling further innovation. The constitutional grant of congressional power to motivate innovation by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries is qualified by the requirement that congressional enactments under the Intellectual Property Clause promote progress. The Supreme Court has already recognized a time-shifting exception to the intellectual property rights of innovators and lower courts have recognized a place-shifting exception. It is now the time and place for a general technology-shifting exception …

Possessing Trademarks: Can Blackstone Or Locke Apply To Fast Food, Grocery Stores, And Virtual Sex Toys?, Jesse R. Dill

Marquette Intellectual Property Law Review

Trademark law has evolved extensively over time and is justified today for different reasons than when American law first recognized it. Scholars today question whether trademarks should now be accepted as a form of real property. Two examples of trademark problems in the global economy demonstrate that the time has come for marks to be recognized as property. Whether business entities are entering new territories or consumers are crossing borders to new jurisdictions with greater ease than ever before, trademark must adapt to the demands of modern commercial competitors. This Comment takes the position that these demands require treating trademarks …

Actual Or Hypothetical: Determining The Proper Test For Trademark Licensee Rights In Bankruptcy, Laura D. Steele

Marquette Intellectual Property Law Review

As trademark rights become an increasingly valuable asset in Chapter 11 reorganizations, it is critical for Congress and the courts to clarify how trademarks will be treated in bankruptcy, particularly where the debtor is a trademark licensee. Without clarity, Chapter 11 reorganization may not be a viable option. This Comment urges that trademark licensees should not be stripped of a license simply because the licensee enters bankruptcy. Rather, where a licensee intends only to continue using an existing license under the terms of the existing agreement with the licensor, the licensee's use of that license should be uninterrupted during reorganization. …

Online Auction House Liability For The Sale Of Trademark Infringing Products, Allison N. Ziegler

Marquette Intellectual Property Law Review

With the rise of the Internet, trademark owners have seen an increase in online trademark infringement. This Comment examines online auction house liability for the sale of trademark infringing products and the methodology used by courts in making this determination. The author outlines contributory trademark jurisprudence in the United States and France and the application of this jurisprudence in Tiffany v. EBay and LVMH v. EBay, respectively. The article then evaluates the implications of the two approaches to determine which approach is more practical and effective. The author concludes that online auction houses should not be liable for trademark infringement …

Emerging Scholars Series: A Re-Examination Of The Original Foundations Of Anglo-American Trademark Law, Cesar Ramirez-Montes

Marquette Intellectual Property Law Review

Contemporary accounts of the normative basis of Anglo-American trademark law frequently describe the purpose of the legal doctrine as having developed to protect primarily the consumers from being misled. Recently, some commentators have offered a different account of the law, as having developed to protect mainly the interests of the traders in not having their trade diverted. Under this account, early trademark law served one master only, the producer, with any additional benefit or protection to consumers being unintended. In this Article, the Author challenges both accounts and suggest that early trademark law was not driven by any judicial desire …

Trademark Fair Use: Braun® Versus The Bunny, Vanessa P. Rollins

Marquette Intellectual Property Law Review

Nominative fair use is a contentious issue in the field of trademark law. Manufacturers of original products who oppose the use of their actual products in advertisements for complementary goods often resort to the Lanham Act to prevent such practices. Courts have found the use of another's product in the advertising of complementary goods falls outside the nominative fair use defense. This article examines the nominative fair use defense and whether nominative fair use should encompass such uses.

International Legal Protection Of Trademarks In China, Robert H. Hu

Marquette Intellectual Property Law Review

In China, the concept of intellectual property is relatively new. Chinese officials began taking steps towards trademark regulations in the 1950s, but it was not until 1982 that the first Chinese Trademark Law was enacted. Today, because of the growing global economy, China has had the highest number of trademark requests in the world for the fifth year in a row. In response to domestic and international pressures, Chinese trademark law and courts have had to adapt to the ever-changing landscape. This article first examines the development of Chinese intellectual property law through the international trademark agreements where China is …

The Extended Protection Of "Strong" Trademarks, Nicola Bottero, Andrea Mangani, Marco Ricolfi

Marquette Intellectual Property Law Review

Economic investment in trademarks is not necessarily indicative of product quality, as trademark protection does not provide incentive for continuous product quality improvement. The authors begin their analysis by exploring the function of trademarks from the perspectives of traditional law and economics. Such an analysis points to a conflict between the legal and economic interpretation of the function of trademarks. Particularly, the authors suggest that the traditional economic perspective of trademarks fails to justify the legal existence of strong brands and their extensions. This argument is tested through the review of advertising, brand extension, and product quality literature. The authors …

Continuing Commercial Impression: Applications And Measurement , Gideon Mark, Jacob Jacoby

Marquette Intellectual Property Law Review

This Article examines applications and measurement of continuing commercial impression, which is the meaning or idea a trademark or trade dress conveys to consumers. The doctrine is relevant in a variety of contexts, including abandonment, tacking, claim preclusion, and the Morehouse defense. A number of courts considering the issue have concluded that continuing commercial impression is a pure question of law. This article argues that such a view is incorrect, and that the doctrine should present a mixed question of law and fact. In determining whether continuing commercial impression exists, the sole factor should not be the visual or aural …

The Effects Of The Corporate Diversification Trend On Trademarks, Katherine E. Halmen

Marquette Intellectual Property Law Review

In today's business world, companies are increasingly adopting diversification strategies through which they expand into diverse and unrelated business areas. Of additional importance with regard to trademarks and the future of trademark law is the fact that the trend toward corporate diversification is growing. To address the impact of the corporate diversification trend upon trademark law, courts have utilized various methodologies. Some courts have focused primarily upon the reasonably prudent consumer and how he or she is affected by corporate diversification. With regard to the use of trademarks on a variety of products, courts have often taken into account whether …

Conditioning Functionality: Untangling The Divergent Strands Of Argument Evidenced By Recent Case Law And Commentary , Justin Pats

Marquette Intellectual Property Law Review

The protection of trade dress has become increasingly clouded in recent years. A forcethe functionality doctrinehas been implemented to police this intersection between patent and trademark law. Unfortunately, courts have struggled to arrive at a common definition of functionality. This comment examines the functionality doctrine and proposes a four-factor decay test as a uniform approach to functionality. The test asks the following questions regarding a product feature: (1) Is it essential to the use or purpose of the article?; (2) Does it have any current market effect on the cost or quality of the article?; (3) Is there a significant …

Semiotics Of The Scandalous And The Immoral And The Disparaging: Section 2(A) Trademark Law After Lawrence V. Texas, Llewellyn Joseph Gibbons

Marquette Intellectual Property Law Review

This article explores whether the holding in Lawrence v. Texas may be extended to trademark law. Under section 2(a), some symbols may not serve as trademarks because they may be scandalous, immoral, or disparaging, which is of particular interest to the Queer community. For some, arguably at least a substantial composite of the American people, the relevant test group for scandal or immorality, under section 2(a), the mere existence of queers constitute scandal and immorality and terms of pride and endearment with which they express their sexuality in concrete form are a further example of immorality. Under these circumstances, Lawrence …

The Naked Licensing Doctrine Exposed: How Courts Interpret The Lanham Act To Require Licensors To Police Their Licensees & Why This Requirement Conflicts With Modern Licensing Realities & The Goals Of Trademark Law , Rudolph J. Kuss

Marquette Intellectual Property Law Review

This Comment discusses the naked licensing doctrine, under which trademark owners may lose their trademark protection through failing to exercise control over their licensees. Even though the Lanham Act holds that abandonment of trademark rights is only appropriate when a trademark has lost its significance, courts have held that a trademark owner may abandon its rights through naked licensing when it breaches its affirmative duty to police its licensees. In other words, these courts find abandonment even when there is no evidence that the quality of the goods and services sold under the trademark has declined. This Comment argues that …

The Spawn Of Learned Hand-A Reexamination Of Copyright Protection And Fictional Characters: How Distinctly Delineated Must The Story Be Told?, Gregory S. Schienke

Marquette Intellectual Property Law Review

Fictional characters are the backbone of the multi-billion dollar entertainment industry. Since the early twentieth century, the owners of fictional characters have recognized that there is money to be made in derivative products featuring those characters and move swiftly to stop infringing use of those characters. Learned Hand, in passing, allowed that fictional characters could be protected through copyright law if the characters were distinctly delineated. Since then, the courts have created a piecemeal protective-strategy involving trademark and copyright law to protect fictional characters. The Seventh Circuit in Gaiman v. McFarlane, continued using the traditional analysis, that copyrightability for a …

The Trademark Jurisprudence Of The Rehnquist Court, Graeme B. Dinwoodie

Marquette Intellectual Property Law Review

Professor Dinwoodie discusses the Rehnquist Supreme Court and its current approach to addressing trademark jurisprudence. Professor Dinwoodie concludes that although the Court has not employed a consistent methodological approach to resolving trademark problems, the opinions do suggest that there are certain values that dictate the outcomes in trademark cases before the Rehnquist Court.

What Are You Looking At? Eliminating Consideration Of The General Public And The Ultimate Question In A Trade Dress Initial Interest Confusion Analysis., Paul J. Krause

Marquette Intellectual Property Law Review

This comment addresses the concept of initial interest confusion in trade dress law and examines several different courts' approaches to the doctrine. Through the discussion, it becomes evident that while being careful to avoid bypassing an analysis of the likelihood of confusion factors, courts should also use the doctrine to determine confusion of potential purchasers. Failing to account for certain factors, such as the sophistication of the relevant consumer group, may allow courts to skew the likelihood of confusion factors in an initial interest confusion analysis. In sum, the author argues that courts should conduct a thorough analysis of likelihood …

Protection For Indigenous Peoples And Their Traditional Knowledge: Would A Registry System Reduce The Misappropriation Of Traditional Knowledge?, Thomas J, Krumenacher

Marquette Intellectual Property Law Review

This Comment examines the controversy over whether a registry system is the best way to prevent Western inventors from obtaining intellectual property protection for traditional knowledge that has been misappropriated from underdeveloped parts of the world. This dilemma exists because traditional knowledge often constitutes patentable subject matter, most indigenous peoples do not subscribe to a Western "property rights" view of the world, and exploitation of traditional knowledge has become easier through improved communication capabilities. This Comment argues in favor of a registry system to catalog traditional knowledge; patent examiners would deny patent protection to any invention that replicates traditional knowledge. …

Market Definition In Intellectual Property Law: Should Intellectual Property Courts Use An Antitrust Approach To Market Definition?, Anna F. Kingsbury

Marquette Intellectual Property Law Review

In her Article, Ms. Kingsbury notes that American courts do not use antitrust law's market definition approach in intellectual property cases. She discusses five potential rationales for this dichotomy: (1) intellectual property cases involve new products without defined markets; (2) market definition limits judicial flexibility; (3) courts do not want to burden intellectual property litigants with the time and expense of economic evidence; (4) judges reason from precedent, and that precedent did not consider market definition; and (5) "market" conveys a different meaning in intellectual property law than it does in antitrust law. Kingsbury presents counterarguments to these rationales and …

The Community Trademark System: A Brief Introduction And Overview, Vincent O'Reilly

Marquette Intellectual Property Law Review

Mr. O'Reilly discusses several different aspects of the trademark system in the European Community. The following subjects are included in his survey: (1) application; (2) opposition; (3) cancellation; (4) appeals; and (5) enforcement. Though formal and procedural requirements dominate this discussion, O'Reilly also discusses how these requirements have been applied and how traditional trademark issues have been resolved with regard to particular trademarks. He also discusses how the Community Trademark System interacts with the preexisting national trademark systems.

Trade Dress: Should Only The Secondary Meaning Trade Dress Standard Apply To Product Packaging? Or Should Courts Continue To Use The Inherently Distinctive Standard?, Jennifer L. Barwinski

Marquette Intellectual Property Law Review

This Comment discusses the controversy over whether secondary meaning should be a prerequisite for trademark protection of product packaging, in light of Wal-Mart Stores, Inc. v. Samara Bros. The United States Supreme Court held in Wal-Mart that secondary meaning is a prerequisite for trademark protection of product design, limiting its earlier decision in Two Pesos, Inc. v. Taco Cabana, Inc. In discussing Wal-Mart's application to trademark protection for product packaging, this Comment focuses on the difficulty of distinguishing between product packaging and product design. This Comment argues that secondary meaning should be a prerequisite for trademark protection of product packaging; …

The Role Of Intellectual Property Rights In Negotiating And Planning A Research Joint Venture, Kurt M. Saunders

Marquette Intellectual Property Law Review

This Article considers the role of intellectual property rights in research joint ventures. Professor Saunders begins by outlining the various advantages of pursuing research in a joint venture business form, including the sharing of expertise and investment costs. The author identifies and elucidates the intellectual property issues, as well as related licensing and antitrust implications, that arise in the joint venture context. Most notably, Saunders articulates the different intellectual property concerns that surface at each separate stage-from negotiation and planning, to termination of the collaboration.

Whither European Trade Mark Law? Arsenal And Davidoff: The Creative Disorder Stage, S. M. Maniatis

Marquette Intellectual Property Law Review

Professor Maniatis focuses on recent case law of the European Court of Justice (ECJ) to illustrate the present disorderly state of European trade mark law. With the advent of the Community Trade Mark within the European Union, the ECJ is in the process of shaping a new body of trade mark precedent that will influence both national registration laws and future legislative developments in trade mark and unfair competition law. The author proposes that this new course should be guided by basic principles of trade mark law rather than by compromise between adverse historical and national systems. The Article gives …

Keywords, Trademarks, And The Gray Market: Why The Use Is Not Fair, Lisa A. Nester

Marquette Intellectual Property Law Review

This Comment analyzes the escalating effects of Internet banner ads and gray marketers on trademark owners' ability to control the use and sale of their marks as keywords and metatags. To unify these concepts, Ms. Nester utilizes the facts behind a suit filed by Estee Lauder, Inc. against an Internet fragrance retailer and an Internet search engine. The suit alleged trademark infringement and unfair competition, among other things, for the Internet entities' unauthorized uses of Estee Lauder's registered trademarks in fragrances. The author explores the facilitating and enabling effect of the Internet on gray market, or parallel importation, activity, such …

High Court Takes Right Turn In Traffix, But Stops Short Of The Finish Line: An Economic Critique Of Trade Dress Protection For Product Configuration, Timothy M. Barber

Marquette Intellectual Property Law Review

Mr. Barber examines the Supreme Court's recent treatment of trade dress protection for product configuration, also referred to as product design. Although the Wal-Mart and TrafFix decisions have begun to limit product configuration protection under trademark law, the high court should have gone further and eliminated product configuration protection, due to its monopolistic and anti-competitive effects. The Comment explores the history and effectiveness of the functionality doctrine, which attempts to resolve the conflict between patent and trademark law over protecting useful product designs. Since what constitutes a functional feature is not easily discerned, the doctrine fails to prevent firms from …