Intellectual Property Law Commons^™

[Quote] Hail To The Washington Commanders — And The Power Of The Trademark, Christine Farley

Popular Media

No abstract provided.

Cannabis, Consumers, And The Trademark Laundering Trap, Viva R. Moffat, Sam Kamin, Timothy Maffett

Sturm College of Law: Faculty Scholarship

At the moment, cannabis companies cannot get trademark protection for their marijuana and marijuana-related products because the “lawful use” doctrine limits federal trademark protection to goods lawfully sold in commerce. Given that the drug remains illegal under federal law, this may not sound like much of a problem, but it has serious consequences for consumers of marijuana. Without trademark rights, a cannabis company in one state can simply use the brand name of a prominent company in another state and consumers will assume that they are getting the products they have come to rely on, with potentially dangerous results. As …

Certification (And) Marks – Understanding Usage And Practices Among Standards Organizations, Brad Biddle, Vigdis Bronder, Jorge L. Contreras

Utah Law Faculty Scholarship

In addition to creating technical standards that describe how different products or services interoperate, many standards development organizations (SDOs) also perform testing services that are designed to ensure that products that ostensibly comply with a standard actually work together. SDOs frequently call this process “certification,” and authorize implementers that pass the testing process to use a logo or similar mark. Certification marks are a type of trademark that would seem to be tailor-made for this process. Our empirical analysis shows that SDOs use certification marks only relatively rarely, however. This dissonance is striking, providing insight into both the remarkably sophisticated …

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.

Trademark Confusion Revealed: An Empirical Analysis, Daryl Lim

American University Law Review

The likelihood of confusion standard defines the scope of trademark infringement. Likelihood of confusion examines whether there is a substantial risk that consumers will be confused as to the source, identity, sponsorship, or origin of the defendants’ goods or services. This Article presents a contemporary empirical analysis of the various factors and how they interact. Conventional wisdom teaches us that courts should comprehensively traverse each factor and that likelihood of confusion cases generally require jury determination. However, the data reveals that neither is true. Instead, courts provide early off-ramps to litigants by “economizing,” and analyzing only a handful of factors …

Trademark Fame And Corpus Linguistics, Jake Linford, Kyra Nelson

Scholarly Publications

Trademark law recognizes that the same word can mean different things in different commercial contexts. Legal protection might extend to two or more owners who use the same symbol (like Delta) to indicate different sources of disparate goods or services, such as airlines and faucets. Generally, only those uses that threaten to confuse consumers-the use of similar symbols on identical or related goods-are subject to legal sanction.

But the law extends special protection to famous trademarks, not only against confusing use, but also against dilution: non-confusing use that blurs or tarnishes the distinctiveness of the famous mark. The result of …

Investigating Design, Mark Mckenna, Jessica Silbey

Faculty Scholarship

Design is ascendant. Steve Jobs’s legendary obsession with design was widely regarded as Apple’s comparative advantage, and that lesson has not been lost on its competitors. Design thinking is a growth industry, in business and at universities, and design professionals continue to take on increasingly significant roles within firms. The increasing economic significance of design has been reflected in an explosion of design patent applications and increasing amount of design litigation.
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/="/">Despite design’s growing economic and legal importance, relatively little is known by legal scholars and policymakers about designers or the design process. This paper addresses that gap …

Justice Breyer And Intellectual Property Law, Daniel Sievert

Marquette Intellectual Property & Innovation Law Review

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The Supreme Court’S Chief Justice Of Intellectual Property Law, Bob Gomulkiewicz

Articles

Justice Clarence Thomas is one of the most recognizable members of the United States Supreme Court. Many people recall his stormy Senate confirmation hearing and notice his fiery dissenting opinions that call on the Court to reflect the original public meaning of the Constitution. Yet observers have missed one of Justice Thomas’s most significant contributions to the Court—his intellectual property law jurisprudence. Justice Thomas has authored more majority opinions in intellectual property cases than any other Justice in the Roberts Court era and now ranks as the most prolific author of patent law opinions in the history of the Supreme …

Reverse Confusion And The Justification Of Trademark Protection, Jeremy N. Sheff

Faculty Publications

Theories of private law are dominated by welfarist normative frameworks, and trademark law is no exception. One such framework—the “search costs” theory associated with the Chicago School of law and economics—has long been the primary accepted justification for trademark rights. However, this theory fails to account for numerous features of actual trademark doctrine, as earlier scholarship has shown. This Article demonstrates how one underexamined area of trademark law—reverse confusion liability— is a similarly poor fit with the predictions and prescriptions of conventional economic theory. Plausible economic theories of trademark rights would either refuse to impose liability in reverse confusion cases …

Trademark, Labor Law, And Antitrust, Oh My!, Jessica Silbey

Faculty Scholarship

I am allergic to antitrust law, but after reading Hiba Hafiz’s recent article, I understand that my aversion is problematic. This paper combines an analysis of trademark law, labor law, and antitrust law to explain how employers exploit trademark law protections and defenses to control labor markets and underpay and under-protect workers. For most IP lawyers and professors, this article will open our minds to some collateral effects of trademark law’s consumer protection rationale on other areas of law with important consequences for economic and social policies.

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

Georgia Journal of Law & Technology

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 …

Intellectual Property For New Entrepreneurs, Michael Johnston

Honors Projects

Abstract – New entrepreneurs, regardless of age, encounter several barriers regarding intellectual property. My research posits that new entrepreneurs are burdened by both informational barriers and lack of resources. A data driven analysis of this problem produced an easy to comprehend guide targeted to new entrepreneurs. This paper presents a subjective guide for entrepreneurs that details patents, trademarks, copyrights, and licensing.

What Is Cultural Misappropriation And Why Does It Matter? 03-31-2021, Roger Williams University School Of Law

School of Law Conferences, Lectures & Events

No abstract provided.

Brand New World (Parallel Session 1.B. - Trademarks), Christine Farley

Presentations

By American University Washington College of Law, Texas A&M University School of Law, and University of Utah S.J. Quinney College of Law.

The Problem Of Recourse To Arbitration In Intellectual Property Disputes Within National Laws: Comparative Study On Patent, Trademark And Copyright Disputes, Mahmoud Ismail Abu Turabi

UAEU Law Journal

This study tries to answer the following question: could the intellectual property rights being a subject of arbitration in case of dispute? To answer the question, we need to study the legal nature of the intellectual property and the legal basic to get protection. It is a comparative study between Jordanian law and French law.

Towards An Integrated Legal System For The International Registration Of Trademarks In Gcc Countries: A Study In The Light Of The Recent Amendment To The Madrid System On 31 October 2015, Ahmed Makhlouf Jr

UAEU Law Journal

The international registration of trademark is of great importance, as it is protected in all countries of the world.

The Madrid System ensured that international registration of the trademark was facilitated through the World Intellectual Property Organization (WIPO). Offering many benefits to brand owners. Instead of submitting an internal application for the registration of the mark in each individual country in accordance with different local and regional rules and regulations and paying different fees, the system ensures registration of the mark once a single application has been submitted to the International Bureau of the World Intellectual Property Organization For its …

Trademarking Recreational Marijuana And Potential Threats To The United States' Treaty Obligations, Charles Wells

Georgia Journal of Law & Technology

The conflict between state and federal laws regarding the cultivation and sale of recreational marijuana results in inconsistent application of trademark protections between state and federal governments that could cause conflict with the United States’ treaty obligations under the TRIPS agreement. Whereas the federal government categorically denies trademark protections for marijuana-based products state governments protect trademarks belonging to recreational marijuana businesses through state and common law trademark protections. The United States is also obligated to ensure that foreign nationals and United States receive the same treatment regarding trademark protections under The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). …

Is There A New Extraterritoriality In Intellectual Property?., Timothy R. Holbrook

Sturm College of Law: Faculty Scholarship

Intellectual property rights are territorially limited. In the main, these rights do not extend outside of the country who has afforded parties the intellectual property. Instead, they are limited to activities within the country. Or so the theory goes. In the global marketplace, such territorial rights do not map well onto the commercial realities of many companies. Given the global marketplace and the intangible-yet-territorial nature of intellectual property rights, IP has sat squarely in the middle of concerns about extraterritoriality.

The Supreme Court has long articulated the presumption against the extraterritorial application of U.S. law. This is not to say …

Institution Denied: The Evolution Of Discretionary Denials Of Inter Partes Review Under 35 U.S.C. § 314(A) Since Apple Inc. V. Fintiv, Inc., Kelly A. Welsh

American University Law Review

The Leahy-Smith American Invents Act (AIA), passed by Congress in 2011, dramatically altered the landscape of patent litigation through the creation of new administrative post-grant proceedings for adjudicating patent validity disputes. One of these administrative proceedings, inter partes review (IPR), has proved immensely popular and polarizing. IPR proceedings have invalidated huge swaths of patents, making the decision whether to institute an IPR significant. The current uncertainty regarding whether an IPR proceeding will be instituted, or whether the Patent Trial and Appeal Board (PTAB or Board) will exercise its newfound expanded discretionary denial authority, continues to frustrate both petitioners and patent …

Offensive Mark Owners Have An Enforcement Problem, Yvette Joy Liebesman

All Faculty Scholarship

In Iancu v. Brunetti, the Supreme Court held that the Lanham Act 2(a) bars for "immoral" or "scandalous" marks are facially unconstitutional viewpoint discrimination, and thus violate a trademark owner’s First Amendment rights. Brunetti, as well as its predecessor, Matal v. Tam, focused entirely on how the government might generate viewpoint discrimination at the point of trademark registration. The Court did not consider whether enforcement of trademarks—via courts of law, Customs and Border Protection, or the International Trade Commission—is government speech, and thus exempt from First Amendment free speech scrutiny. Yet the Court’s seminal holding of Shelley v. Kraemer illustrates …

Is There A New Extraterritoriality In Intellectual Property?, Timothy R. Holbrook

Faculty Articles

This Article proceeds as follows. Part I discusses the state of the law of extraterritoriality in copyright, trademark, and patent, as it stood before the Supreme Court’s recent intervention. This review demonstrates that all three disciplines were treating extraterritoriality very differently, and none were paying much attention to the presumption against extraterritoriality. Part II reviews a tetralogy of recent Supreme Court cases, describing the Court’s attempt to formalize its approach to extraterritoriality across all fields of law. Part III analyzes the state of IP law in the aftermath of this tetralogy of extraterritoriality cases. It concludes that there has been …

What Is "Likely To Be Confusing": About Trademark Law: Reconsidering The Disparity Between Registration And Use, Lorelei D. Ritchie

American University Law Review

Federal trademark rights in the United States are widely considered to be use based. That is, the right derives from the use. Therefore, one might expect that federal trademark registrations would necessarily reflect the marketplace realities of the use of a mark. Based on Constitutional and statutory enablement, this is correct. It is not, however, how the trademark registration system has been implemented by the Court of Appeals for the Federal Circuit and by the U.S. Patent and Trademark Office.

In this regard, there is a perception among judges and practitioners alike that marketplace realities are not, and should not, …

What's In Your Box? Removing The Tiffany Standard Of Knowledge In Online Marketplaces, Hayley Dunn

Catholic University Journal of Law and Technology

Online shopping is a quintessential component of modern life. Millions of products from trusted brands are conveniently available at single-stop online marketplaces such as Amazon, eBay, and Alibaba with the click of a button from the comfort of home. But is the product delivered to the consumer’s front door actually the same as the one found on a store shelf? Pervasive trademark infringement in online marketplaces makes the answer to this question difficult, that is, until the consumer experiences negative consequences from a counterfeited product.

Under Tiffany (NJ) Inc. v. eBay, Inc., online marketplaces face almost no liability …

We're All Pirates Now: Making Do In A Precarious Ip Ecosystem, Jessica Silbey

Faculty Scholarship

Fifteen years after the Piracy Paradox explained how most anti-copying protection is unnecessary for a thriving fashion industry, we face another piracy paradox: with broader and stronger IP laws and a digital economy in which IP enforcement is more draconian than ever, what explains the ubiquity of everyday copying, sharing, re-making and re-mixing practices that are the life blood of the internet's expressive and innovative ecosystems? Drawing on empirical data from a decade of research, this short essay provides two examples of this "new piracy paradox": a legal regime that ostensibly punishes piracy in a culture in which it is …

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

Fordham Intellectual Property, Media and Entertainment Law Journal

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 …

Commercializing Cannabis: Confronting The Challenges And Uncertainty Of Trademark And Trade Secret Protection For Cannabis-Related Businesses, John Mixon

Washington Journal of Law, Technology & Arts

Over the last couple of decades, society has become more accepting of recreational cannabis and an ever-growing number of states have passed pro-cannabis legislation. With this change, the cannabis industry has, to some extent, exploded into a booming enterprise in states that have legalized marijuana. Nonetheless, cannabis' status as a Schedule I banned substance under the Controlled Substances Act of 1970 remains unchanged. As a result, businesses in the cannabis industry face the unique challenge of having to toe the line between "legally" operating under state law and violating federal law, which trumps state law. One particular situation in which …

First Sale And Exhaustion, Jorge L. Contreras

Utah Law Faculty Scholarship

This chapter in the forthcoming case book "Intellectual Property Licensing and Transactions: Theory and Practice" addresses issues of first sale and exhaustion for licensing transactions involving patents, copyrights and trademarks. Among the issues considered are licensing versus sale of software, patent exhaustion, post-sale restrictions, international exhaustion and gray market imports.

A Historical Note On The Assignment Of Pesticide Common Names, Jorge L. Contreras

Utah Law Faculty Scholarship

Thousands of pesticides, herbicides, and related chemical products are used today to control disease-bearing insect populations and enable large-scale agricultural production that feeds much of the world. This short note traces the history of one small but important aspect of this industry—the assignment of common names to pesticides and related products. The little-known history of pesticide common names is illustrative of a few important points. First, it demonstrates the trend exhibited in many fields for the development of standards to migrate from a governmental agency to a US-based standards organization to an international standards organization. Second, it evidences the concern …