Law Commons^™

Patent And Trademark Resource Center Websites: A Content Analysis, Jared Hoppenfeld

Journal of the Patent and Trademark Resource Center Association

Patent and Trademark Resource Centers (PTRCs) serve as an off-site connection to the United States Patent and Trademark Office (USPTO). Approximately 85 PTRCs exist to assist inventors, entrepreneurs, and researchers by providing facilities, resources, and expertise. Most of these libraries also have a website which, in addition to USPTO webpages, serves as a gateway to the world of patent and trademark research. These websites provide access to various resources while also functioning as an outreach tool to the public.

This study included a content analysis of 79 websites belonging to PTRC libraries. After a literature review of other website studies, …

Guest Post Out Of The Blue The Federal Circuit Devises A New Rule For Color Mark, Christine Farley

Editorial Contributions

The Court of Appeals for the Federal Circuit has held that color marks on product packaging can be inherently distinctive. On April 8, 2020, the court issued its opinion in In re: Forney Industries, Inc. It stated that “a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.”URL: https://patentlyo.com/patent/2020/04/federal-circuit-devises.html

A Comparative Study Of Trademarks: Usmca (U.S.-Mexico-Canada Agreement) And Nafta (North American Free Trade Agreement), Roberto Rosas

Faculty Articles

The definition of a trademark has expanded under the U.S. -Mexico-Canada Agreement ("USMCA "'), which provides more protection for rights holders. Currently, these three countries are bound by the North American Free Trade Agreement ("NAFTA"'), which has a narrow definition for trademarks. The North American Free Trade Agreement ("NAFTA"'), which came into effect on January 1, 1994, was a significant agreement between some of the largest, strongest, and well-developed economies in the world: United States and Canada. It also helped to invigorate Mexico's future economic development. NAFTA's broad purpose was to regulate the exchange of capital, goods, and services across …

Engaging First Year Students With Intellectual Property, Marian G. Armour-Gemmen

Faculty & Staff Scholarship

Since intellectual property is so important to engineers, creating enthusiasm from the beginning of their engineering studies is imperative. Since first year students have not learned how to apply technological concepts to real life, demonstrating intellectual property could be a challenge. To engage first year engineering students in the concept and the value of intellectual property, students were introduced to basic concepts and applications. Different concepts were applied to real life examples allowing them to interface with technology from an intellectual property perspective. This paper highlights not only patents, but also trademarks and trade secrets.

Placebo Marks, Jake Linford

Pepperdine Law Review

Scholars often complain that sellers use trademarks to manipulate consumer perception. This manipulation ostensibly harms consumers by limiting their ability to make informed choices. For example, holding other things constant, consumers spend more money on goods with a high-performance reputation. Critics characterize that result as wasteful, if not anticompetitive. But recent marketing research shows that trademarks with a high-performance reputation may sometimes influence perception to the benefit of the consumer. A trademark with a high-performance reputation can deliver a performance-enhancing placebo effect. Research subjects perform better at physical and mental tasks when they prepare or play with a product bearing …

A Serendipitous Experiment In Percolation Of Intellectual Property Doctrine, Daniel R. Cahoy, Lynda J. Oswald

Indiana Law Journal

This Article fills a gap in the literature by providing novel and unique empirical evidence of the impact of percolated intellectual property doctrine versus the impact of isolated doctrine from a specialized court. It relies on the U.S. Supreme Court’s paired decisions in 2014 in Octane Fitness, LLC v. ICON Health & Fitness, Inc.15 and Highmark, Inc. v. Allcare Health Management Systems, Inc.16 to highlight a natural forum for evaluating the effects of percolation on federal legal doctrine. At issue in those cases was the fee-shifting language of Section 285 of the Patent Act: “The court in exceptional cases may …

Trademark Vigilance In The Twenty-First Century: An Update, Peter S. Sloane

Fordham Intellectual Property, Media and Entertainment Law Journal

The trademark laws impose a duty upon brand owners to be vigilant in policing their marks, lest they be subject to the defense of laches, a reduced scope of protection, or even death by genericide. Before the millennium, it was relatively manageable for brand owners to police the retail marketplace for infringements and counterfeits. The Internet changed everything.

In ways unforeseen, the Internet has unleashed a tremendously damaging cataclysm upon brands—online counterfeiting. It has created a virtual pipeline directly from factories in China to the American consumer shopping from home or work. The very online platforms that make Internet shopping …

Right On Time: A Reply To Professors Allen, Claeys, Epstein, Gordon, Holbrook, Mossoff, Rose, And Van Houweling, Dotan Oliar, James Y. Stern

Faculty Publications

A simple observation started us off in writing Right on Time. Studying and teaching intellectual property law, we noticed striking parallels between traditional first possession rules in property law and analagous rules governing the acquisition of patent, copyright, and trademark rights. We thought that established first possession principles could illuminate the workings of IP law. As we dug in, however, it became increasingly clear that our premise wasn’t quite right. While many penetrating commentators had said many penetrating things about first possession, the leading treatments tended to focus on significant individual aspects of the overall issue. What we could …

That's Fuct: Why The Political Question Doctrine Should Have Barred The Supreme Court From Deciding Iancu V. Brunetti, Jennifer Madaras

Cybaris®

No abstract provided.

The Power Of Social Media As An Evolving Force And Its Impact On Intellectual Property, Whitney N. Alston

Cybaris®

No abstract provided.

What We've Got Here Is A Failure To Indicate, Laura A. Heymann

Popular Media

No abstract provided.

Intellectual Property For Breakfast: Market Power And Informative Symbols In The Marketplace, P. Sean Morris

Cleveland State Law Review

This Article continues to examine an important question: are trademarks a source of market power, or, put differently, when are trademarks an antitrust problem? This fundamental question is a cause of division among antitrust and intellectual property law scholars. However, by raising the question and presenting some scenarios that can provide answers, my hope is that contemporary antitrust and intellectual property scholars can explore some of its implications. As part of my own quest to address this question, I explore the proposition that creative deception and the wealth-generating capacity of trademarks are unorthodox elements that actually contribute to allegations of …

Right On Time: First Possession In Property And Intellectual Property, Dotan Oliar, James Y. Stern

James Y. Stern

How should we allocate property rights in unowned tangible and intangible resources? This Article develops a model of original acquisition that draws together common law doctrines of first possession with original acquisition doctrines in patent, copyright, and trademark law. The common denominator is time: in each context, doctrine involves a trade-off between assigning entitlements to resources earlier or later in the process of their development and use. Early awards risk granting exclusivity to parties who may not be capable of putting resources to their best use. Late awards prolong contests for ownership, which may generate waste or discourage acquisition efforts …

The Grammar Of Trademarks, Laura A. Heymann

Laura A. Heymann

How do people talk when they talk about trademarks? If trademarks have
become, as linguist Geoffrey Nunberg suggests, our “new global tongue,”
perhaps we should pay greater attention to the grammar we use when we
talk about them. We use “Coke” to refer to the Coca-Cola beverage in the
North, and “coke” to refer to any kind of soda in the South, yet we still
manage to get the drinks we desire. We use trademarks as verbs—we
“xerox” a document or “tivo” a television program—without losing sight
of the fact that “Xerox” and “TiVo” are brands of particular products.
We …

Naming, Identity, And Trademark Law, Laura A. Heymann

Laura A. Heymann

As the process of creation in the age of digital media becomes more fluid, one pervasive theme has been the desire for attribution: from the creator’s perspective, to receive credit for what one does (and to have credit not falsely attributed) and from the audience’s perspective, to understand the source of material with which one engages. But our norms of attribution reflect some inconsistencies in defining the relationship among name, identity, and authenticity. A blog post by a writer identified only by a pseudonym may prove to be very influential in the court of public opinion, while the use of …

Spill-Over Reputation: Comparative Study Of India & The United States, Srividhya Ragavan

Srividhya Ragavan

This paper compares India’s position with that of the US on the question of protection of well-known marks in the light of applicable international legal prescriptions. The discussion in this paper compares protection for famous foreign marks (as opposed to a famous mark). Famous foreign marks are those that have acquired fame in one country and hence, well-known in another country.

Scotus's Second Take On Trademark Registration As Speech, Christine Farley

Editorial Contributions

Professor Farley offers her take on Iancu v. BrunettiURL: https://patentlyo.com/patent/2019/06/scotuss-trademark-registration.html

Automation & Predictive Analytics In Patent Prosecution: Uspto Implication & Policy, Tabrez Y. Ebrahim

Georgia State University Law Review

Artificial-intelligence technological advancements bring automation and predictive analytics into patent prosecution. The information asymmetry between inventors and patent examiners is expanded by artificial intelligence, which transforms the inventor– examiner interaction to machine–human interactions. In response to automated patent drafting, automated office-action responses, “cloems” (computer-generated word permutations) for defensive patenting, and machine-learning guidance (based on constantly updated patent-prosecution big data), the United States Patent and Trademark Office (USPTO) should reevaluate patent-examination policy from economic, fairness, time, and transparency perspectives. By conceptualizing the inventor–examiner relationship as a “patenting market,” economic principles suggest stronger efficiencies if both inventors and the USPTO have better …

Spill-Over Reputation: Comparative Study Of India & The United States, Srividhya Ragavan

Faculty Scholarship

This paper compares India’s position with that of the US on the question of protection of well-known marks in the light of applicable international legal prescriptions. The discussion in this paper compares protection for famous foreign marks (as opposed to a famous mark). Famous foreign marks are those that have acquired fame in one country and hence, well-known in another country.

Right On Time: First Possession In Property And Intellectual Property, Dotan Oliar, James Y. Stern

Faculty Publications

How should we allocate property rights in unowned tangible and intangible resources? This Article develops a model of original acquisition that draws together common law doctrines of first possession with original acquisition doctrines in patent, copyright, and trademark law. The common denominator is time: in each context, doctrine involves a trade-off between assigning entitlements to resources earlier or later in the process of their development and use. Early awards risk granting exclusivity to parties who may not be capable of putting resources to their best use. Late awards prolong contests for ownership, which may generate waste or discourage acquisition efforts …

Legal Realism: Unfinished Business, Ramsi A. Woodcock

Law Faculty Scholarly Articles

No abstract provided.

Don’T Steal My Recipe! A Comparative Study Of French And U.S. Law On The Protection Of Culinary Recipes And Dishes Against Copying, Claire M. Germain

Working Papers

Food and gastronomy are at the heart of every culture. In 2010, The Gastronomic Meal of the French was listed as Intangible Cultural Heritage of Humanity by UNESCO. Interest in gastronomy became mainstream in the U.S. starting in the late ‘70s/early ‘80s. The emergence of cooking literature, television cooking, celebrity chefs, and competitive cooking programs have now permeated American and French popular culture like never before. It is also a huge business for restaurants. This article examines the legal status of recipes and culinary creations in U.S. and French law, and what can be done to stop others from copying …

Metaphors On Trademark: A Response To Adam Mossoff, “Trademark As A Property Right”, Brian L. Frye

Law Faculty Scholarly Articles

No abstract provided.

The Trademark Dilution Revision Act's Nullifying Effect On Famous Mark Holder's Dilution Claims, Kathleen Bodenbach

Marquette Intellectual Property Law Review

This comment will address how the TDRA has left famous mark holders, particularly high-end fashion house Louis Vuitton, with little in its arsenal to prevent others from mocking and devaluing its marks despite its worthy efforts. Part II addresses the relationship between trademark infringement, dilution, and parody. Part III takes a closer look at fashion giant Louis Vuitton’s strides to protect its famous marks and the courts’ differing approaches to assessing whether a parody exists. Part III also addresses the relationship between parody when it does and does not operate as a designation of source. Part IV offers a discussion …

Property And Equity In Trademark Law, Mark P. Mckenna

Marquette Intellectual Property Law Review

This lecture focuses on the relationship between trademark and unfair competition. Specifically, this lecture discusses the way trademark law has evolved over time with respect to property concepts. There has been a lot of discussion in the literature about the ways trademark law has come to treat trademarks as property. Many scholars who have written about this “propertization” have described it as a shift from consumer to producer protection.

I have written a lot about this narrative over the course of my career—I think it is overly simplistic, and in some ways, wrong. Trademark law has al-ways protected marks as …

One Chuck, Two Chuck: Analyzing Whether Federally Registered Trademarks Should Be Distinguished From Unregistered, Common-Law Trademarks In The Context Of Converse, Inc. V. International Trade Commission, Mckenzie Subart

Marquette Intellectual Property Law Review

This Comment analyzes which trademark model (the pyramid model or the box model) is a better representation and characterization of trademarks and trademark rights. Under the pyramid model, there is one trademark: both common law rights and federal registration rights attach to this single trademark. For the pyramid model, trademark rights resemble a pyramid because federal registration rights build upon the foundation created by common law rights. Common law rights and federal registration rights are interdependent. Under the box model, there is a common-law trademark and a federal trademark: common law rights attach to the common-law trademark, and federal registration …

The Right Of Attribution In Literary Works In Three Acts, By W. Shakespeare, Daniel J. Gervais

Vanderbilt Journal of Entertainment & Technology Law

This Article charts the three phases in the evolution of the norm of attribution in literary works: the norm in England before and during Shakespeare's time, the emergence of authorship-based norms in the Romantic period (allowing moral rights to be enshrined in international copyright treaties) and their demise at the hands of postmodernism and New Criticism, and the current norms that aim to protect the integrity of educational processes and to inform readers and other users of books, plays, or other creative works about their "source." It tracks a debate during Shakespeare's lifetime on the difference between nonattribution and false …

Intellectual Property In Experience, Madhavi Sunder

Georgetown Law Faculty Publications and Other Works

In today’s economy, consumers demand experiences. From Star Wars to Harry Potter, fans do not just want to watch or read about their favorite characters— they want to be them. They don the robes of Gryffindor, flick their wands, and drink the butterbeer. The owners of fantasy properties understand this, expanding their offerings from light sabers to the Galaxy’s Edge®, the new Disney Star Wars immersive theme park opening in 2019.

Since Star Wars, Congress and the courts have abetted what is now a $262 billion-a-year industry in merchandising, fashioning “merchandising rights” appurtenant to copyrights and trademarks that …

Ignoring Administrative Decisions Through Settlement: A Holistic Approach, Vincent Escoto

Journal of the National Association of Administrative Law Judiciary

No abstract provided.

Beyond Trademark: The Washington Redskins Case And The Search For Dignity, Victoria F. Phillips

Chicago-Kent Law Review

In her pioneering book, We Want What’s Ours: Learning from South Africa’s Land Restitution Program, Professor Bernadette Atuahene employs a detailed ethnographic study of South Africa’s land restitution program to develop the concept of a dignity taking. This article extends the application of Atuahene’s theory to the taking of intangible property arguing that the misappropriation of cultural identity and imagery for use as a federal trademark can also constitute a dignity taking in certain cases. Perhaps no effort has received more public attention than the longstanding battle over the Washington NFL football team’s name and its federally registered “Redskins” …