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Articles 1 - 30 of 172
Full-Text Articles in Law
Obtaining Trademark Registration For Marks Containing Political Commentary: A Look Into Vidal V. Elster, Annick Runyon
Obtaining Trademark Registration For Marks Containing Political Commentary: A Look Into Vidal V. Elster, Annick Runyon
University of Miami Law Review
For decades, courts have struggled with balancing trademark law with the First Amendment—specifically with cases challenging the denial of trademark registration of certain marks. Congress codified trademark registration through the Lanham Act, also known as the Trademark Act of 1946. This statute outlines the registration process and expands the rights of trademark owners. In recent years, a string of cases have ruled certain provisions of the Lanham Act that bar certain marks from registration unconstitutional.
Currently under review by the Supreme Court, the case Vidal v. Elster involves an applicant who was denied trademark registration for his mark “Trump Too …
Puerto Rico: The Island Of Infringement? An Analysis Of The Intersectionality Of Eleventh Amendment Sovereign Immunity And Federal False Endorsement Claims, Robert Hilton
University of Miami Inter-American Law Review
This Note delves into the complex legal landscape of Puerto Rico’s application of sovereign immunity in the context of federal false endorsement claims, focusing particularly on the recent case involving the unauthorized use of Hall of Fame baseball player Roberto Clemente’s name and likeness. It critically examines the intersectionality of Eleventh Amendment sovereign immunity with the Lanham Act’s Section 43(a), highlighting the challenges faced in enforcing intellectual property rights within unincorporated territories of the United States.
The analysis begins by exploring the historical basis of sovereign immunity and its evolution from common law to the intricacies of the Eleventh Amendment. …
The Future Of Intellectual Property As A Weapon Of War, Alexandra Tasev
The Future Of Intellectual Property As A Weapon Of War, Alexandra Tasev
Pace International Law Review
Before the signing of the Decree of the Russian Federation on May 27, 2022, the use of intellectual property as a weapon of war was largely unprecedented. This article reviews the implications of the Russian-Ukrainian War on trademarks belonging to countries deemed to be “unfriendly nations” and their impact on the future of intellectual property as a weapon of war. Following the issuance of economic sanctions by the United States of America and many other countries against Russia, many global organizations took their products off the Russian market. However, in doing so, these companies did not anticipate the emergence of …
The Angel Wears Prada, The Devil Buys It On The Realreal: Expanding Trademark Rights Beyond The First Sale Doctrine, Junajoy Vinoya Frianeza
The Angel Wears Prada, The Devil Buys It On The Realreal: Expanding Trademark Rights Beyond The First Sale Doctrine, Junajoy Vinoya Frianeza
Pepperdine Law Review
Luxury brands derive their goodwill from the high-class exclusivity and first-rate quality signified in their trademarks. The Trademark Act of 1946, commonly known as the Lanham Act, grants trademark holders the right to control use of their mark. However, under common law, the first sale doctrine restricts trademark protection after holders authorize the initial sale of their trademarked product. Such limitation particularly jeopardizes the luxury industry as trademark holders ultimately bear the loss of goodwill when counterfeit luxury goods enter the market due to the negligence of resellers. This Comment illustrates how blockchain authentication offers all luxury industry participants—the brands, …
Who Owns Your Name? The Trend And Economic Impact Of Personal Trademarks In The Ncaa Nil Aftermath, Daniel Foster
Who Owns Your Name? The Trend And Economic Impact Of Personal Trademarks In The Ncaa Nil Aftermath, Daniel Foster
The Journal of Business, Entrepreneurship & the Law
To aid in understanding the prevalence of personal athlete logos and the trend of ownership and design, Section II will outline the history of this area of trademark law in the United States. It will provide background on the theory of trademark ownership and the development of this intellectual property discipline in the athletic and celebrity sphere. Section II will look at the two common and distinct processes, a company-designed logo versus an athlete-designed logo, and the modern trends in this area. Moving on from this historical discussion, Section III will examine the 2021 decision of NCAA v. Alston, the …
Albrecht Dürer’S Enforcement Actions: A Trademark Origin Story, Peter J. Karol
Albrecht Dürer’S Enforcement Actions: A Trademark Origin Story, Peter J. Karol
Vanderbilt Journal of Entertainment & Technology Law
This Article offers a trademark-framed reappraisal of a pair of extraordinary enforcement actions brought by the Northern Renaissance artist Albrecht Dürer (1471–1528) against copyists of his work. These cases have long been debated by art, cultural, and copyright historians insofar as they appear to reject Dürer’s demand for protocopyright protection. Commentators have also contested the historicity of one of the two narratives. But surprisingly little attention has been paid by trademark scholars to the companion holdings-—in the same texts-—that affirm Dürer’s right to prevent the use of his monogram on unauthorized reproductions.
This Article seeks to fill that gap by …
Raising The Threshold For Trademark Infringement Protect Free Expression, Christine Haight Farley, Lisa P. Ramsey
Raising The Threshold For Trademark Infringement Protect Free Expression, Christine Haight Farley, Lisa P. Ramsey
Articles in Law Reviews & Other Academic Journals
The First Amendment right to free speech limits the scope of rights in trademark law. Congress and the courts have devised various defenses and common law doctrines to ensure that protected speech is exempted from trademark infringement liability. These defensive trademark doctrines, however, are narrow and often vary by jurisdiction. One current example is the speech-protective test first articulated by the Second Circuit in Rogers v. Grimaldi, expanded by the Ninth Circuit, and recently restricted by the Supreme Court in Jack Daniel’s Properties v. VIP Products to uses of another’s mark within an expressive work that do not designate the …
The Influencers And The Influenced: Effects Of Social Media Influencers On Enforcement Of Trademark Law In The U.S. And Europe, Abigail Dagher
The Influencers And The Influenced: Effects Of Social Media Influencers On Enforcement Of Trademark Law In The U.S. And Europe, Abigail Dagher
Emory International Law Review
No abstract provided.
The Future Of Cryptocurrency And Real Estate Transactions, Rachel Silverstein
The Future Of Cryptocurrency And Real Estate Transactions, Rachel Silverstein
Touro Law Review
Bitcoin and other cryptocurrencies are all the rage right now and are beginning to make their ways into everyday transactions— including real estate transactions. This article discusses whether using cryptocurrencies to complete real estate transactions will become the norm in the near future. Cryptocurrency laws in general are few and far between, but laws surrounding cryptocurrency and real property are even more sparse. Recent case law involving cryptocurrency is a major focus of this article, along with background knowledge about cryptocurrency and the meaning of “money” as we know it today. The article concludes with a discussion about the unlikelihood …
Unauthorized And Unwise: The Lawful Use Requirement In Trademark Law, Robert Mikos
Unauthorized And Unwise: The Lawful Use Requirement In Trademark Law, Robert Mikos
Vanderbilt Law School Faculty Publications
For decades, the United States Patent and Trademark Office ("PTO") has required trademark owners to comply with sundry nontrademark laws governing the sale of their trademarked goods and services. Pursuant to this "lawful use requirement," the Agency has refused or even cancelled registration of thousands of marks used on everything from Schedule 1 controlled substances to mislabeled soap. This Article subjects the Agency's lawful use requirement to long-overdue scrutiny. It suggests that in requiring compliance with other laws for registration, the PTO has lost sight of the one statute it is supposed to administer. In the process, the Agency has …
Edward S. Rogers, The Lanham Act, And The Common Law, Jessica Litman
Edward S. Rogers, The Lanham Act, And The Common Law, Jessica Litman
Book Chapters
This book chapter is a deep dive into the story of Edward Sidney Rogers's authorship of the legislation that became the Lanham Act. Because Rogers believed that Congress lacked the power to alter the substantive law of trademark and unfair competition, he crafted draft legislation that focused on registration and other procedural details rather than substantive rights and defenses. He sought to advance two incompatible goals: he hoped to preserve the robust common law of unfair competition while requiring, or at least encouraging, all trademark owners to register their marks. Both the supporters and the opponents of the bills that …
Unauthorized And Unwise: The Lawful Use Requirement In Trademark Law, Robert A. Mikos
Unauthorized And Unwise: The Lawful Use Requirement In Trademark Law, Robert A. Mikos
Vanderbilt Law Review
For decades, the United States Patent and Trademark Office (“PTO”) has required trademark owners to comply with sundry nontrademark laws governing the sale of their trademarked goods and services. Pursuant to this “lawful use requirement,” the Agency has refused or even cancelled registration of thousands of marks used on everything from Schedule I controlled substances to mislabeled soap. This Article subjects the Agency’s lawful use requirement to long-overdue scrutiny. It suggests that in requiring compliance with other laws for registration, the PTO has lost sight of the one statute it is supposed to administer. In the process, the Agency has …
Navigating The Identity Thicket: Trademark's Lost Theory Of Personality, The Right Of Publicity, And Preemption, Jennifer E. Rothman
Navigating The Identity Thicket: Trademark's Lost Theory Of Personality, The Right Of Publicity, And Preemption, Jennifer E. Rothman
All Faculty Scholarship
Both trademark and unfair competition laws and state right of publicity laws protect against unauthorized uses of a person’s identity. Increasingly, however, these rights are working at odds with one another, and can point in different directions with regard to who controls a person’s name, likeness, and broader indicia of identity. This creates what I call an "identity thicket" of overlapping and conflicting rights over a person’s identity. Current jurisprudence provides little to no guidance on the most basic questions surrounding this thicket, such as what right to use a person’s identity, if any, flows from the transfer of marks …
Bully No More: Why Trademark Owners Engage In Trademark Overreach And How To Prevent It, Quynh La
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 …
Ignoring Drug Trademarks, Erika Lietzan
Ignoring Drug Trademarks, Erika Lietzan
Faculty Publications
If you walk into a pharmacy with a prescription for Merck’s ZOCOR, which contains simvastatin, the pharmacist will probably give you a product containing simvastatin made by another company. The pharmacist will dispense a “generic” simvastatin product. State generic substitution laws, passed in the 1970s to help the government save money by switching patients to cheaper generic drugs, either permit or require this substitution. But drug brand names -- such as ZOCOR -- are trademarks. Like other trademarks, they distinguish goods in the market from others, and they signal the source of the goods. These state laws essentially treat the …
An Af(Fur)Mative Defense: Using Intellecutal Property As A Defense To Employment Discrimination In Mascot Hiring, Taylor Farr
An Af(Fur)Mative Defense: Using Intellecutal Property As A Defense To Employment Discrimination In Mascot Hiring, Taylor Farr
Arkansas Law Review
"Until a character becomes a personality, it cannot be believed. Without personality, the character may do funny or interesting things, but unless people are able to identify themselves with the character, its actions seem unreal. And without personality, a story cannot ring true to the audience." Walt Disney1 Mascots 2 are different animals. They bring some of our favorite characters from screens, packages, and comic book pages to life. Moreover, mascots serve a particularly important role on university campuses, offering a point of communal continuity3 amid inevitable organizational changes. Although university buildings, athletes, faculty, and staff will eventually change, a …
The Defend Trade Secrets Act And Foreign Theft: The Application Of The Act To Extraterritorial Misappropriation, John Dustin Hawkins
The Defend Trade Secrets Act And Foreign Theft: The Application Of The Act To Extraterritorial Misappropriation, John Dustin Hawkins
Journal of Intellectual Property Law
This Note explores the evolution of federal trade secret law in the United States, particularly the enactment of the Defend Trade Secrets Act of 2016. Part II discusses the legislative history of the Act, as well as key provisions and definitions of the Act, which are critical when considering the DTSA's extraterritorial application. Additionally, this Note considers the tests used by courts to determine extraterritorial application in other areas of U.S. law. Part III explains why a uniformly-applied balancing test would best serve the courts in determining the extraterritorial application of the DTSA to reach foreign conduct.
The Lost Unfair Competition Law, Christine Farley
The Lost Unfair Competition Law, Christine Farley
Articles in Law Reviews & Other Academic Journals
The accepted metaphor that trademark law is a species of the genus of unfair competition law distorts both the actual history and the relationship between the two. Tracing the development of the law reveals a related sequence of significant events, some of which have been forgotten. This back-story suggests that a particularly innovative treaty incorporated by reference into the Lanham Act was meant to be the vehicle for unfair competition protection. As a result of this lost law, unfair competition law remains an enigma today.
Overlapping Copyright And Trademark Protection In The United States: More Protection And More Fair Use?, Jane C. Ginsburg, Irene Caboli
Overlapping Copyright And Trademark Protection In The United States: More Protection And More Fair Use?, Jane C. Ginsburg, Irene Caboli
Faculty Scholarship
This chapter addresses the phenomenon of overlapping rights under US law and complements Chapter 25 authored by Professors Derclay and Ng-Loy on the overlap of trademark, copyright, and design protection under several other Common Law and Civil Law jurisdictions. Because the United States does not provide sui generis protection for industrial design, but instead protects design through trademark law (notably by protecting trade dress) and design patents, this chapter focuses on the overlap between trademark and copyright protection. The Lalique bottles created for Nina Ricci perfumes, for example, may enjoy both trademark and copyright protection in the United States. Similarly, …
Left With No Name: How Government Action In Intra-Church Trademark Disputes Violates The Free Exercise Clause Of The First Amendment, Mary Kate Nicholson
Left With No Name: How Government Action In Intra-Church Trademark Disputes Violates The Free Exercise Clause Of The First Amendment, Mary Kate Nicholson
Washington and Lee Law Review
The United States was founded in part on the principle of freedom of religion, where citizens were free to practice any religion. The founding fathers felt so strongly about this principle that it was incorporated into the First Amendment. The Free Exercise Clause states that “Congress shall make no law . . . prohibiting the free exercise thereof . . . .” The Supreme Court later adopted the neutral principles approach to avoid Free Exercise violations resulting from courts deciding real property disputes. Without the application of the same neutral principles to intellectual property disputes between churches, however, there is …
Trademarks & The First Amendment After Matal V. Tam, Gary Myers
Trademarks & The First Amendment After Matal V. Tam, Gary Myers
Journal of Intellectual Property Law
The United States Supreme Court's unanimous ruling in Matal v. Tam is a landmark decision regarding the intersection between free speech and trademark law. Addressing whether trademarks can legitimately be barred from federal trademark protection under the Lanham Act based solely on their possible disparaging content, the litigation involving an Asian-American band that sought to register the name, "The Slants," brought this important interplay into stark relief. Writing in bold strokes, Justice Alito's opinion holds that the Lanham Act's prohibition on disparaging marks, 15 U.S.C. 51052(a), violates the Free Speech Clause of the First Amendment. "It offends a bedrock First …
Public Policy Limitations On Trademark Subject Matter: A U.S. Perspective, Christine Farley
Public Policy Limitations On Trademark Subject Matter: A U.S. Perspective, Christine Farley
Contributions to Books
This chapter provides an overview of the public policy limitations on trademark subject matter under U.S. law. This is an area of law that had been fairly stable until recently. The U.S. Supreme Court’s 2017 decision striking down the prohibition on registering disparaging marks and its 2019 decision striking down the prohibition on registering immoral and scandalous marks may prompt a larger reexamination of the policy justifications for denying trademark registration.
Property And Equity In Trademark Law, Mark P. Mckenna
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 …
Thou Shalt Not Steele: Reexamining The Extraterritorial Reach Of The Lanham Act, James C. Gracey
Thou Shalt Not Steele: Reexamining The Extraterritorial Reach Of The Lanham Act, James C. Gracey
Vanderbilt Journal of Entertainment & Technology Law
US courts have applied domestic trademark law to actions taken outside of the United States's borders for years, but the US Supreme Court recently revamped the presumption against extraterritoriality, a canon of statutory interpretation. The presumption against extraterritoriality promotes a judicial means of respecting the sovereignty of foreign states by disallowing the application of domestic law to foreign acts. However, the Supreme Court interpreted the Lanham Act, the United States's domestic trademark law, to have extraterritorial reach in Bulova Watch Co. v. Steele. This Note traces the recent evolution and strengthening of the presumption before analyzing how circuit courts have …
Merging Offensive-Speech Cases With Viewpoint-Discrimination Principles: The Immediate Impact Of Matal V. Tam On Two Strands Of First Amendment Jurisprudence, Clay Calvert
UF Law Faculty Publications
This Article examines flaws with the U.S. Supreme Court’s 2017 decision in Matal v. Tam that equated giving offense with viewpoint discrimination. Already, the Court’s language in Tam that “giving offense is a viewpoint” is being cited by multiple lower courts. This Article argues, however, that giving offense is not synonymous with viewpoint discrimination. This Article contends that the Court in Tam conflated two distinct strands of First Amendment jurisprudence—namely, its offensive-speech cases with principles against viewpoint discrimination. The Article proposes two possible paths forward to help courts better clarify when a case such as Tam should be analyzed as …
Property And Equity In Trademark Law, Mark Mckenna
Property And Equity In Trademark Law, Mark Mckenna
Journal Articles
This essay, delivered as the Nies Lecture at Marquette Law School, focuses on changes in the doctrinal structure of trademark law over the course of the last century — specifically with respect to the relationship between trademark law’s limits and the broader common law of unfair competition. Changes in that relationship, I will argue, meaningfully increased trademark law's emphasis on property — what the plaintiff owns — and deemphasized legal rules that focused on the defendant’s conduct.
Historical Perspectives & Reflections On "Matal V. Tam" And The Future Of Offensive Trademarks, Russ Versteeg
Historical Perspectives & Reflections On "Matal V. Tam" And The Future Of Offensive Trademarks, Russ Versteeg
Journal of Intellectual Property Law
No abstract provided.
The Myth Of Uniformity In Ip Laws, Sharon K. Sandeen
The Myth Of Uniformity In Ip Laws, Sharon K. Sandeen
Journal of Intellectual Property Law
When Congress enacts federal laws, it is often because of the asserted benefits of a “uniform” law and the, often unspoken, assumption that federal laws are somehow more uniform than uniform state laws. Infact, the uniformity argument was a primary justification for theenactment of both the Defend Trade Secrets Act of 2016 and the EU Trade Secret Directive.
The quest for uniformity, particularly with respect to laws that relate to intellectual property rights, is an old story in the United States. During the drafting of the U.S. Constitution, the existence of inconsistent state laws was a central reason for the …
Trademark's Judicial De-Evolution: Why Courts Get Trademark Cases Wrong Repeatedly, Glynn Lunney
Trademark's Judicial De-Evolution: Why Courts Get Trademark Cases Wrong Repeatedly, Glynn Lunney
Glynn Lunney
Trademark law has de-evolved. It has transitioned from an efficient mechanism for ensuring competition into an inefficient regime for capturing economic rents. In this Article, I focus on the role that party self-interest has played in biasing the evolution of trademark law. This self-interest tends to lead parties to (1) challenge efficient legal rules and seek to replace them with inefficient, anticompetitive rules, and (2) accede to inefficient, anticompetitive rules once they are in place. Almost by definition, when a rule of trademark law promotes competition, it reduces the market surplus or rents that current producers capture. As a result, …
Trademark's Judicial De-Evolution: Why Courts Get Trademark Cases Wrong Repeatedly, Glynn Lunney
Trademark's Judicial De-Evolution: Why Courts Get Trademark Cases Wrong Repeatedly, Glynn Lunney
Faculty Scholarship
Trademark law has de-evolved. It has transitioned from an efficient mechanism for ensuring competition into an inefficient regime for capturing economic rents. In this Article, I focus on the role that party self-interest has played in biasing the evolution of trademark law. This self-interest tends to lead parties to (1) challenge efficient legal rules and seek to replace them with inefficient, anticompetitive rules, and (2) accede to inefficient, anticompetitive rules once they are in place. Almost by definition, when a rule of trademark law promotes competition, it reduces the market surplus or rents that current producers capture. As a result, …