Law Commons^™

Fashion Upcycling As Protected Free Speech In Trademark Law, Martin Senftleben

University of Miami International and Comparative Law Review

Fashion upcycling offers unprecedented opportunities for the sustainable reuse of clothing. Using second-hand garments as raw material for new creations, upcyclers transform used pieces of clothing into new fashion products that may become even more sought-after than the original source material. The more fashion elements enjoy trademark protection; however, the more legal obstacles arise. Fashion upcycling may trigger allegations of consumer confusion, brand dilution, and unfair freeriding. As the Introduction will explain, the exhaustion of trademark rights after the first sale does not necessarily dispel concerns about trademark infringement. The rearrangement of branded garment components in the upcycling process may …

Fashion Has No Function: Diminishing The Functionality Bar To Trademark Protection In The Fashion Industry, Seth Diasio

Mississippi College Law Review

The primary source of trademark law in the United States, The Lanham Act, outlines the requirements for trademark registration and protection. Marks which are distinctive, or that have acquired secondary meaning, can be registered on the Principal Register of the United States Patents and Trademarks Office (USPTO). Registered marks receive strong federal protection; however, those protections are unavailable to marks that are barred by the Act, but would otherwise meet the qualifications of registration. One of the strongest bars to registration is the functionality bar, which prevents registration of a functional mark regardless of whether it has a secondary meaning. …

Trial By Trademark: Why The Trademark System Needs To Stand On Its Own Two Marks, Ben Siegel

Journal of Intellectual Property Law

While IP-intensive industries continue to produce a significant portion of the American economy, trademarks consistently remain a substantial portion. Given trademarks’ increasingly pivotal role in the global economy, the complexities and nuances of trademark law demand a specialized approach. In examining the current trademark landscape, many scholars have underscored the paradox of its fractured nature, despite its fundamental role in the economy. Currently, trademark law suffers from a lack of uniformity across the various circuits in critical areas of the law itself, as well as vulnerabilities in forum shopping and confusion for businesses.

Rather than endorsing the conventional approach to …

Marking The Metaverse: The Implication Of Nfts On Trademark Law, Hanna Esserman

Journal of Intellectual Property Law

Within the last decade, internet users have witnessed the birth, rise, and mainstream popularity of the Non-Fungible Token, or “NFT.” Nearly ten years after the creation of the first NFT, there is now a wave of first impression litigation surfacing which questions the implications of NFTs on intellectual property law. This Note analyzes the intersection of Non-Fungible Tokens and trademark law in the United States.

Until recently, it has been unclear whether Non-Fungible Tokens are eligible to be protected under long-standing federal trademark laws. This includes allegations of NFTs infringing upon existing trademarks, as well as trademarked NFTs being infringed …

Franchising Law In The United States Between Theory And Practice: Heads Up For Foreign Investors, Radwa Elsaman

Touro Law Review

As a dynamic vehicle for fostering investment opportunities, both domestically and internationally, franchising spans a diverse array of industrial sectors, encompassing both goods and services. The United States plays a highly influential role in global franchise industry promotion, with a vast majority of International Franchise Association members representing American companies. Present data underscores that franchising has extended its reach to virtually every sector of the American economy. Notably, the United States stands among just four common law nations that have established dedicated franchise legislation, operating at both state and federal levels. This framework includes provisions for pre-sale disclosure, registration of …

Failure To Function: A Potential New Shield Against Trademark Infringement?, Alyssa Yoshino

IP Theory

The United States Patent and Trademark Office (“USPTO”) has recently been characterized as having a “penchant” for refusing trademark registrations on the grounds of failure to function. This trend has come with commentary, both praising the doctrine’s ability to efficiently supplement the distinctiveness analysis by assessing use and criticizing the inconsistent application of the doctrine. The sources of this academic commentary, from Alexandra J. Roberts and Lucas D. Cuatrecasas, serve as the heads of two camps regarding the failure to function doctrine. The first encourages an increased application of the doctrine as a combined distinctiveness and use analysis. The second …

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

None

Parallel Play: The Simultaneous Professional Responsibility Campaigns Against Unethical Ip Practitioners By The United States And China, Mark A. Cohen

Akron Law Review

“Parallel Play: The Simultaneous Professional Responsibility Campaigns Against IP Practitioners by the United States and China” describes efforts by the United States Patent and Trademark Office and the China National IP Administration to discipline trademark and patent practitioners through contemporaneous campaign-style approach directed to bad faith filings. At the USPTO, many of these bad faith filings have originated from China. In both countries, these bad faith activities have imposed significant burdens on IP agencies, the courts, and legitimate rights holders. The campaign is likely the largest professional responsibility campaign undertaken by an IP agency, and the largest cross-border IP disciplinary …

Under Nifty Light: Trademark Considerations For The New Digital World, Willajeanne F. Mclean

Akron Law Review

Three cases involving non-fungible tokens are grabbing the attention of fashionistas, intellectual property mavens, and metaverse cognoscenti alike. All three are cases of first impression, despite involving trademark infringement claims. All are considered to be cases that will determine whether old trademark principles apply to new technology, and each has compelling and competing arguments that may militate against findings of infringement. While most commentators have focused on the questions surrounding alleged infringement, very few have discussed the challenges of applying remedies, such as injunctions, traditionally used in trademark infringement cases.

This article considers trademark law and examines it in a …

To "The" Or Not To "The"? The Question Has Been Answered: An Examination Of Trademark Bullying In The Context Of The Ohio State University's Recent Trademark Registration, Jennifer M. Danker

Journal of Intellectual Property Law

This Note examines the growing concern in the legal community around trademark bullying by specifically focusing on the registration of the word mark “THE” by The Ohio State University (“OSU”) and its potential for abuse and overreach in trademark enforcement. By carefully analyzing relevant legal precedent, statutory provisions, and USPTO administrative procedures, this Note critically considers the offered justifications for and likely consequences of the trademark’s registration.

By exploring the historical progression of trademark law, including its purpose and underlying principles, this Note provides a framework for evaluating the merits and potential concerns associated with the recent registration. Additionally, it …

How Confusing! Resolving The Three-Way Circuit Split On The Nominative Fair Use Doctrine, Eric W. Walker

Akron Law Review

Trademark defenses such as descriptive fair use have been codified in the Lanham Act for decades. Despite the practical necessity of nominative fair use, it has yet to be codified into the Lanham Act. While the Supreme Court has offered guidance on descriptive fair use, there is currently no such guidance with respect to nominative fair use. Currently, our best guidance is a confusing three-way Circuit Split on how to approach nominative fair use. Other circuits have largely remained uncertain in how to approach the doctrine or have outright avoided using the doctrine. In analyzing the intricacies of nominative fair …

The Perks Of Being Human, Max Stul Oppenheimer

Washington and Lee Law Review Online

The power of artificial intelligence has recently entered the public consciousness, prompting debates over numerous legal issues raised by use of the tool. Among the questions that need to be resolved is whether to grant intellectual property rights to copyrightable works or patentable inventions created by a machine, where there is no human intervention sufficient to grant those rights to the human. Both the U. S. Copyright Office and the U. S. Patent and Trademark Office have taken the position that in cases where there is no human author or inventor, there is no right to copyright or patent protection. …

Note: Artistic Relevance In Artificial Intelligence? “Roger” That!, Kelly Heilman

Notre Dame Journal on Emerging Technologies

In an era of technological revolution, artificial intelligence is shocking the legal field with its increasing popularity, power, and potential. The limits of property, personhood, and creativity are in question by both the public and the courts, leaving significant ambiguities in the law. Legal standards regarding the regulation of advanced technologies have raised unique and critical substantive questions for intellectual property rights, particularly that of trademarks, where the traditional purpose is source identification between consumers and goods.

Since the 1989 holding in Rogers v. Grimaldi, the use of trademarks for creative purposes, as a matter of First Amendment jurisprudence, …

Discovering The Governing Forces Of Esports, An Intellectual Property Gold Mine, Dave Gravely

St. Mary's Law Journal

No abstract provided.

Consumer Uncertainty In Trademark Law: An Experimental Investigation, Barton Beebe, Roy Germano, Christopher Jon Sprigman, Joel H. Steckel

Emory Law Journal

Nearly every important issue in trademark litigation turns on the question of what consumers in the marketplace believe to be true. To address this question, litigants frequently present consumer survey evidence, which can play a decisive role in driving the outcomes of trademark disputes. But trademark survey evidence has often proven to be highly controversial, not least because it has sometimes been perceived as open to expert manipulation. In this Article, we identify and present empirical evidence of a fundamental problem with trademark survey evidence: while the leading survey formats in trademark law test for whether consumers hold a particular …

Trademark's Grip Over Sustainability, Daniel R. Cahoy

University of Colorado Law Review

Entrepreneurs and larger firms are waking up to the fact that there is a viable market for recycled, repaired, and even upcycled goods. There is also an increasing desire on the consumer end for more sustainable products as well as measures to reduce landfill and other product disposal harms to the environment. Although some legal barriers to this new market are being actively debated, other barriers have taken a back seat and seem primed to surge only when increased business activity exposes the liability. This is the case with trademark law, which has the potential to substantially deter the small-firm …

The Law Applicable To Trademark Gift Deeds: A Study Of The Provision Of Article 49 Of Kuwait Law No. 5 Of 1961 Regulating Relationships With Foreign Elements Law Applicable To Trademark Gift Contract: A Study Of Article 49 Of Kuwaiti Law No. 5 Of 1961 Regulating Relations With Foreign Parties, Bashayer Alghanim Dr.

مجلة جامعة الإمارات للبحوث القانونية UAEU LAW JOURNAL

This paper addresses the question of the law applicable to a trademark gift deed involving a foreign element as trademarks have become movable, intangible assets that can be transferred to third parties. The significance of studying the applicable law lies in the fact that it helps identify the law applicable to a trademark gift deed that involves a foreign element pursuant to Article 49 of Kuwait Law No. 5 of 1961.

This paper attempts to clearly characterise a gift deed in order to avoid confusion with other forms of deeds, such as sale deeds and wills. It also tries to …

Against Secondary Meaning, Jeanne C. Fromer

Notre Dame Law Review

Trademark law premises protection and scope of marks on secondary meaning, which is established when a mark develops sufficient association to consumers with a business as a source of goods or services in addition to the mark’s linguistic primary meaning. In recent years, scholars have proposed that secondary meaning plays an even more central role in trademark law than it already does. Yet enshrining secondary meaning in the law undermines the ultimate goals of trademark law: promoting fair competition and protecting consumers. The dangers of enshrining secondary meaning include the problematic doctrine that has built up to assess it or …

Creativity Without Ip? Vindication And Challenges In The Video Game Industry, Bj Ard

Washington and Lee Law Review

This Article intervenes in the longstanding debate over whether creative production is possible without exhaustive copyright protection. Intellectual property (IP) scholars have identified “negative spaces” like comedy and tattoo art where creativity thrives without IP, but critics dismiss these examples as niche. The video game industry allows for fresh headway. It is now the largest sector in entertainment—with revenues greater than Hollywood, streaming, and music combined—yet IP does not protect key game elements from duplication. Participants navigate this absence using non-IP strategies like those identified in negative-space industries: AAA developers invest in copy-resistant features while indie game developers rely on …

Revisiting The Justification Of Trademark Protection For Single Drug Compositions: A Critical Analysis From A Regulatory Perspective, Kuhu Tiwari, Dr. Niharika Sahoo Bhattacharya

Akron Law Review

Trademarks, which are premised on product differentiation, are alleged to play a divergent role when used on pharmaceutical products: they tend to create an artificial product differentiation for the bioequivalent pharmaceutical products that are marketed as branded, generics, and branded-generic products. It is implied that the companies incorporate trademarks to market their products to different consumers at different prices. However, concerns arise when a company uses multiple trademarks for a single active pharmaceutical ingredient (API); sometimes, the company labels each trademark as treating a different medical condition.

This practice of brand proliferation may pose risks to patient safety by confusing …

Jurisdictional Issues In Cyberspace, Justice S. Muralidhar

Indian Journal of Law and Technology

With the advent of the internet and the transmission of information and transacting of business across borders, a host of issues have cropped up on the legal front. This article proposes to deal with only one such major issue – that of jurisdiction of the courts to deal with intellectual property rights (IPR) disputes arising out of commercial transactions on the internet. Within the fairly broad field of IPR, the focus will be on trademark disputes, as that is one area where the major developments have taken place.

Surveying The Damage: A Study Of Damages Payouts By The Delhi High Court In Trademark Infringement Cases (2005-2014), Eashan Gosh

Indian Journal of Law and Technology

A comprehensive ten year study of damages awarded by the Delhi High Court in trademark infringement cases reveals the remarkable extent to which the quantum of damages can be correlated to the presence of certain factual criteria. It brings into sharp focus exactly how far the reasoning behind awarding and quantifying damages – often the biggest takeaway and most powerful deterrent in trademark infringement cases – has been rendered an afterthought. Commencing with a critical commentary on the headline damages payouts by the Delhi High Court in 1, I break down the significant statistical outcomes of damages awarded based on …

When A “+” Doesn’T Add Anything In The Equation: Analyzing The Effect Of The “+” On Trademark Law, Vasilios Nasoulis

Journal of Intellectual Property Law

In the past decade, there has been a growing trend where companies use the plus sign, “+”, in their branding. From industry titans like Google and Apple to smaller, niche companies like World Champ Tech, there has been an increased use of the + in product and service names. This raises trademark questions about how the mark should be protected and how does the + change the meaning of a name. Trademarks are designed to protect producers as well as consumers from deceit, miscommunication, and misunderstanding. The + potentially denies producers and consumers these protections.

Another trend in the past …

Jack Daniel’S Highlights The Second And Ninth Circuit’S Divide On The Application Of The Rogers Test, Hannah Knab

American University Business Law Review

No abstract provided.

Think Like Adidas: A Quantitative Analysis Of Adidas' Trademark Protection Strategies, Katie M. Brown, Natasha T. Brison

Marquette Sports Law Review

No abstract provided.

The Intersection Of Trademark Law, Athletes, And Money: A "Three-Peat®", Abby R. Glaus

Marquette Sports Law Review

No abstract provided.

Justice Breyer And Intellectual Property Law

Marquette Intellectual Property & Innovation Law Review

None

Design On Someone Else's Dime: The Profiteering Of Interior Designer's Works From A Lack Of Rights In The Modern Era, Kim Carlson

Journal of Intellectual Property Law

Rooms once viewed as utilitarian in nature- places to work in, sleep in, or cook in- have gone through a dramatic transformation. Now, people view these rooms as an outward reflection of their style. In the last few decades, people’s eagerness to renovate these rooms exploded. As a result, home designer shows soared in popularity, garnering millions of views. Consumers flocked to different media forms and stores in search of the latest paint and furniture trends. The heightened demand, coupled with prevailing social media marketing, forced interior designers to become innovative in creating and advertising their services. While the increased …

Bully No More: Why Trademark Owners Engage In Trademark Overreach And How To Prevent It, Quynh La

Washington Law Review

At its core, trademark law exists as a tool for consumer protection. Thus, trademark owners use policing and enforcement to maintain a trademark’s goodwill, which in turn protects consumers from confusion. But policing and enforcement can lead to trademark overreach and bullying—which undermine the goal of trademark law. This Comment explains that trademark owners are incentivized to engage in aggressive enforcement tactics because courts weigh enforcement efforts in favor of trademark strength. And strong trademarks receive strong protection because such marks are more likely to succeed in trademark infringement litigation. To curb trademark bullying and realign trademark law with its …

Logo Dipersimpangan Undang-Undang Hak Cipta Dan Undang-Undang Merek, Danthy Julinentie

"Dharmasisya” Jurnal Program Magister Hukum FHUI

After the enactment of Law No. 28 of 2014 concerning the Copyright of trademark owners who have their own trademark of words and logos are unable to apply for intellectual property protection in the case of a registration / registration application where, if the logo is also a logo used in the protection of the mark, interpretation of the protection of a Work in the form of a logo against the concept of Copyright comparable to the concept of Brand Rights. This goal difference also differentiates the interests of claims of copyright and trademark infringement. In this case there is …