Law Commons^™

Shape Mark (Trade Dress) Distinctiveness: A Comparative Inquiry Into U.S. And E.U. Trademark Law, Qadir Qeidary

William & Mary Business Law Review

Nowadays, the increasing application of visual elements, as non-traditional trademarks, to convey commercial information has brought about some new challenges to pioneer legal systems. In this regard, the question of shape marks’ (trade dress) distinctiveness has also caused some hot debates in U.S. and EU trademark law. Indeed, the most challenging legal question before those legal jurisdictions is about the method of transplanting the concept of trademark distinctiveness into the mechanism through which shape marks, as visual mediums, perform a trademark communicative function. Technically, the indefinite nature of shape marks or trade dress marks and lack of a definitive or …

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 …

European Union Food Law Update, Nicole Coutrelis

Journal of Food Law & Policy

The purpose of this update is to present the main events that have taken place each six months in the food law sector in the European Union (E.U.). This presentation will cover June through December 2004, but is not exhaustive. This update will not include detailed discussions of regulations, such as authorizations of new additives for animal feed or registrations of new geographic names. Instead it will concentrate on fundamental topics and focus on food, which excludes from our scope questions regarding the management of agricultural products (Common Agricultural Policy, or CAP). However, some questions which legally pertain to the …

Conflicts Over Domain Names, Rami Olwan

UAEU Law Journal

The study explores legal implications posed by the growth of establishing websites and registration of domain names. The researcher introduces his paper by providing readers with a primary introduction to domain names, their definitions, the Domain Name System (DNS), types of domain names either generic; Top level domains (gTLDS) or country code Top Level Domains (ccTLDS), domain names registration procedures and registration authorities (registrars, registry operators). The researcher also compares trademarks and domain names, mention different types of disputes that occur over domain names including cyber squatting, typo squatting, cyber-smearing and reverse domain name hijacking. The paper includes technical and …

Legal Aspects Of Brand Mortgage: A Comparative Study, Hussein Tawfik Faid Allah, Nasser Khalil Jalal

UAEU Law Journal

This article studies the legal aspects of the brand mortgage from the premise its primary purpose is to serve as a legal tool for the brand owner to obtain finance products necessary for the management and development of the owner’s project. Therefore, it is necessary to amend the laws to permit the brand owner to mortgage his brand with his business as collateral [or independently] in order to achieve the purpose of the mortgage.

If we take into account the special nature of trademarks as immaterial rights and the consequential difficulty of transferring possession to the mortgagee, it does not …

Legal Protection For The Sports Events’ Sponsors And Organizers From Ambush Marketing, Fayez Mohammed Al Nusair

UAEU Law Journal

Sports events are very important these days due to the fans' passion in following and watching them, therefore it is unacceptable to stop or interrupt the broadcasting of these events.

There is no doubt that the cost of organizing such events is very high, hence it became a necessity to find ways to cover the cost. One of these ways is sponsorship contracts. And in order to get sponsorship, it is necessary to give sponsors the appropriate legal protection especially against ambush marketing.

The western jurisprudence has adopted several solutions to stop ambush marketing practices, such as registering sports events …

Trademarks In Conversation: Assessing Genericism After Booking.Com, Laura A. Heymann

Faculty Publications

It is a fundamental principle of U.S. trademark law that to serve as a trademark, a word or phrase must “indicate the source” of the goods or services with which it is associated and, conversely, that a term that is understood to be the common name of a good or service is “generic” and cannot be protected as a trademark. Yet it still seems difficult to determine exactly what each concept means, particularly when the actual “source” of any goods or services might be opaque to consumers.

In part, this difficulty comes from the fact that status as a trademark …

Mark Of The Devil: The University As Brand Bully, James Boyle, Jennifer Jenkins

Faculty Scholarship

In recent years, universities have been accused in news stories of becoming “trademark bullies,” entities that use their trademarks to harass and intimidate beyond what the law can reasonably be interpreted to allow. Universities have also intensified efforts to gain expansive new marks. The Ohio State University’s attempt to trademark the word “the” is probably the most notorious. There has also been criticism of universities’ attempts to use their trademarks to police clearly legal speech about their activities. But beyond provocative anecdotes, how can one assess whether a particular university is truly bullying, since there are entirely legitimate reasons for …

Kernochan Center News - Fall 2021, Kernochan Center For Law, Media And The Arts

Kernochan Center for Law, Media, and the Arts

No abstract provided.

Kernochan Center News - Early Summer 2021, Kernochan Center For Law, Media And The Arts

Kernochan Center for Law, Media, and the Arts

No abstract provided.

Kernochan Center News - Winter 2021, Kernochan Center For Law, Media And The Arts

Kernochan Center for Law, Media, and the Arts

No abstract provided.

Kernochan Center News - Spring 2021, Kernochan Center For Law, Media And The Arts

Kernochan Center for Law, Media, and the Arts

No abstract provided.

Trademarks As Surveillance Transparency, Amanda Levendowski

Georgetown Law Faculty Publications and Other Works

We know very little about the technologies that watch us. From cell site simulators to predictive policing algorithms, the lack of transparency around surveillance technologies makes it difficult for the public to engage in meaningful oversight. Legal scholars have critiqued various corporate and law enforcement justifications for surveillance opacity, including contract and intellectual property law. But the public needs a free, public, and easily accessible source of information about corporate technologies that might be used to watch us. To date, the literature has overlooked a free, extensive, and easily accessible source of information about surveillance technologies hidden in plain sight: …

The Meaning Of Mcdonald's [(R)], Laura A. Heymann

Popular Media

No abstract provided.

Fixing Informational Asymmetry Through Trademark Search, Jessica Silbey

Faculty Scholarship

I call this paper a “Levendowski special.” It follows the signature format of much of Professor Levendowski’s prior work which, as in the latest article, recruits a legal tool typically aimed at one set of problems for the purpose of cleverly addressing a different set of problems. Her past articles harnessed copyright law to “fix artificial intelligence’s implicit bias” (2018) and to “combat revenge porn.” (2014). This paper draws on Professor Levendowski’s expertise working in private practice as a trademark attorney to address the problem of surveillance technology opacity. It is a primer on how to investigate trademark …

United States Patent And Trademark Office V. Booking.Com B.V.: How Do We Know When Something Is A Name?, Laura A. Heymann

Popular Media

No abstract provided.

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 …

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 …

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 …

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.

Kernochan Center News - Winter 2020, Kernochan Center For Law, Media And The Arts

Kernochan Center for Law, Media, and the Arts

No abstract provided.

Kernochan Center News - Spring 2020, Kernochan Center For Law, Media And The Arts

Kernochan Center for Law, Media, and the Arts

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 …