Intellectual Property Law Commons^™

United States Supreme Court Survey: 2018 Term: Iancu V. Brunetti: Free Speech Meets "Immoral And Scandalous" Trademarks In The Supreme Court, Niki Kuckes

Law Faculty Scholarship

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.

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 …

The Anonymity Heuristic: How Surnames Stop Identifying People When They Become Trademarks, Russell W. Jacobs

Dickinson Law Review (2017-Present)

This Article explores the following question central to trademark law: if a homograph has both a surname and a trademark interpretation will consumers consider those interpretations as intrinsically overlapping or the surname and trademark as completely separate and unrelated words? While trademark jurisprudence typically has approached this question from a legal perspective or with assumptions about consumer behavior, this Article builds on the Law and Behavioral Science approach to legal scholarship by drawing from the fields of psychology, linguistics, economics, anthropology, sociology, and marketing.

The Article concludes that consumers will regard the two interpretations as separate and unrelated, processing surname …

Non-Traditional Trademarks: The Error Costs Of Making An Exception The Rule, Glynn Lunney

Faculty Scholarship

Over the last sixty years, courts and the USPTO have engaged in an ill-advised expansion of trademark subject matter. Where once only words or emblems attached to a product could serve as a trademark, today a product’s design or packaging itself may receive such protection. This expansion was and is a mistake. There may indeed be rare cases where a product’s design or packaging conveys brand-specific information and could receive protection without impairing competitor’s ability to offer substitutes. Such cases are the exception and not the rule, however. Extending the strong legal presumptions and property-like protection trademark law provides to …

The Myth Of Uniformity In Ip Laws, Sharon K. Sandeen

Georgia Journal of Law & Technology

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 …

2017 Trademark Law Decisions Of The Federal Circuit, Anita B. Polott, Rachel E. Fertig

American University Law Review

No abstract provided.

U.S. Supreme Court Surveys: 2016 Term. Matal V. Tam: Free Speech Meets "Disparaging" Trademarks In The Supreme Court, Niki Kuckes

Roger Williams University Law Review

No abstract provided.

Lookalike Logos: Is A High School's Use Of A Logo Or Insignia Similar To That Of A University A Violation Under The Lanham Act, Keegan Girodo

Marquette Sports Law Review

None

Makeup Dupes And Fair Use, Samantha Primeaux

American University Law Review

No abstract provided.

U.S. Supreme Court Surveys: 2016 Term. Matal V. Tam: Free Speech Meets "Disparaging" Trademarks In The Supreme Court, Niki Kuckes

Law Faculty Scholarship

No abstract provided.

Behind The Steele Curtain: An Empirical Study Of Trademark Conflicts Law, 1952-2016, Tim W. Dornis

Vanderbilt Journal of Entertainment & Technology Law

The law on international trademark disputes is founded on precedent from 1952. Steele v. Bulova Watch Co. is the first and only Supreme Court decision addressing the question of how far the Lanham Act should be extended beyond the United States' national borders when international infringement is at issue. The decision laid the foundation for a three-pronged test that focuses on the factors of defendant nationality, effects on US commerce, and conflicts with foreign law. Although international trademark conflicts have multiplied dramatically--particularly throughout the last decade--there has been no systematic and comprehensive account of the actual state of the law. …

Dastar V. Twentieth Century Fox--One Can't Get Back By Trademark What One Gave Up Under Copyright, Sue Mota

Oklahoma Journal of Law and Technology

No abstract provided.

Brief Of Amici Curiae Intellectual Property Law Professors In Favor Of Judgement As A Matter Of Law, John A. Conway, Mark Mckenna

Court Briefs

No. 3:14-cv-01849-K
Zenimax Media Inc. v. Oculus VR, LLC

From the Summary of ArgumentPlaintiff’s false designation of origin and false endorsement claims, such as they are, rest on the assertion that defendants falsely represented themselves as the origin of intellectual property on which the Oculus Rift is based. Those claims are barred by Dastar v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), which holds that only confusion regarding the origin of physical goods is actionable under the Lanham Act.

Trending @ Rwu Law: Professor Niki Kuckes's Post: 'Disparaging' Trademarks Meet The First Amendment 02-07-2017, Niki Kuckes

Law School Blogs

No abstract provided.

A Comparative Study Of Trade Dress In The U.S. And South Korea: Rethinking On The Laws And Precedents In The Apple V. Samsung, Sukchan Sim

Maurer Theses and Dissertations

Trade dress originally included the packaging or dressing of products, however in this time it has been extended to put together the impression of design of products. Product configuration, the design and shape of the product itself, may also be considered a form of trade dress. The Lanham Act protects trade dress if it serves the same source-identifying function as a trademark. In U.S., trade dress was developed continuously for a long time and some significant case suggested guidelines reflecting the modern industry. In Wal-Mart Stores, Inc. v Samara Brothers, Inc., or TrafFix Devices, Inc. v. Marketing Displays, Inc., …

Moral Judgments In Trademark Law, Ned Snow

American University Law Review

Under the federal Lanham Act, eligibility for trademark protection depends on whether a mark is sufficiently moral. The Federal Circuit has recently held this provision of the Act to be unconstitutional based on its interpretation of speech doctrine. The context of trademark law, however, refutes this interpretation. Indeed, speech doctrine appears to support this morality requirement. Nevertheless, there seems to be another reason that the Federal Circuit held the morality requirement unconstitutional: the judicial discomfort with morality serving as a basis for law. This Essay concludes that this judicial discomfort is unjustified in this instance. From both a constitutional and …

2016 Trademark Law Decisions Of The Federal Circuit, Anita B. Polott, Rachel E. Fertig

American University Law Review

No abstract provided.

The Commodification Of Trademarks: Some Final Thoughts On Trademark Dilution, Kenneth L. Port

Faculty Scholarship

This article is an explication of the trend toward commodification of famous or putatively famous trademarks and the resultant urging that the FTDA be repealed. This article starts with a literature review showing that the vast majority of commentators have been severely critical of the FTDA. This has been ignored by Congress. The article next pursues Congress's blind support of the FTDA and suggests that more thought and analysis from Congress is still required. The article next explains the data regarding FTDA claims. All reported cases from 1996 through 2015 are coded and examined. The conclusion, looking at the data, …

Beyond Trademarks And Offense: Tam And The Justices’ Evolution On Free Speech, Clay Calvert

UF Law Faculty Publications

In Matal v. Tam , the Supreme Court threw out the “disparagement clause” of the Lanham Act, the federal trademark law, because trademarks are private speech and thus regulating them based on government determinations of offensiveness violates the First Amendment. The solid outcome here contrasts with the narrow, incremental results in some other recent First Amendment cases that reached the Court.

Counterfeiting, Couture, And The Decline Of Consumer Trust In Online Marketplace Platforms, Joseph M. Forgione

NYLS Law Review

No abstract provided.

No Trademark, No Problem, Christine Farley

Scholarly Articles in Law Reviews & Journals

Does the Lanham Act permit a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for its use of the same mark in the U.S.? A recent case from the Court of Appeals for the Fourth Circuit addressed this consequential question. In Belmora, LLC.v. Bayer Consumer Care A G, the Court of Appeals surprised the legal community and answered this question in the affirmative, reversing the district court's decision to reject the trademark claim because it was unsupported by a federally protected U.S. trademark. The Belmora decision …

No Trademark, No Problem, Christine Haight Farley

Scholarly Articles in Law Reviews & Journals

Does the Lanham Act permit a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for its use of the same mark in the U.S.? A recent case from the Court of Appeals for the Fourth Circuit addressed this consequential question. In Belmora, LLC.v. Bayer Consumer Care A G, the Court of Appeals surprised the legal community and answered this question in the affirmative, reversing the district court's decision to reject the trademark claim because it was unsupported by a federally protected U.S. trademark.

The Belmora decision …

Trademarks: German Manufacturer’S Deliberate Infringement Of Domestic Trademark Sufficient To Support Injunctive Relief, But Not Supportive Of Award For Damages, Kimley R. Johnson

Georgia Journal of International & Comparative Law

No abstract provided.

Trademarks “Lanham Act” Foreign Registrants Need Not Allege Use In The United States And May Waive Filing Requirements Required For Domestic Applications (Scm Corporation V. Langis Foods, Ltd., D.C. Cir. 1976), John A. Cutler

Georgia Journal of International & Comparative Law

No abstract provided.

A Trademark Holder's Hangover: Reconciling The Lanham Act With The Alcohol And Tobacco Tax And Trade Bureau's System Of Designating American Viticultural Areas, Julia Lynn Titolo

Georgia Journal of Law & Technology

No abstract provided.

Is Liability Just A Link Away? Trademark Dilution By Tarnishment Under The Federal Trademark Dilution Act Of 1995 And Hyperlinks On The World Wide Web, Martha Kelley

Georgia Journal of Law & Technology

No abstract provided.

Private Property For Public Use: The Federal Trademark Dilution Act And Anticybersquatting Consumer Protection Act As Violations Of The Fifth Amendment Takings Clause, Brian C. Smith

Georgia Journal of Law & Technology

No abstract provided.

Pricey Purchases And Classy Customers: Why Sophisticated Consumers Do Not Need The Protection Of Trademark Laws, Meaghan E. Goodwin

Georgia Journal of Law & Technology

No abstract provided.