Barton Beebe* and Jeanne C. Fromer** Download a PDF version of this article, including the appendices, here.
Download a PDF version of this article here. James Yang* The recent rise of virtual reality, augmented reality, and other related technologies has created vast amounts of virtual space. Within this space, novel forms of trademark infringement and expressive use may arise. This note categorizes the above-mentioned technologies under the umbrella term of “ virtual realism” and examines trademark infringement… read more
This article provides an analysis of the potential ramifications of the 2017 U.S. Supreme Court case, Matal v. Tam, which has forged a hybrid trademark and free speech right. In permitting trademarks to be allowed over the Disparagement Clause, First Amendment rights are now inextricably intertwined with the scope of trademark protection. This paper examines the holding of the Matal v. Tam case and predicts how the case will influence the behavior of trademark filings and the development of trademark law.
The growing specter of globalization impacts industries from communication to transportation, resulting in an unparalleled proliferation of cultural diffusion unmatched throughout history. Naturally, this cultural diffusion has familiarized American consumers with foreign brands and foreign languages despite the obvious English dominance domestically, resulting in a trademark quagmire. Under the current American doctrine of foreign equivalents, trademark examiners and courts translate non-English words into English to determine whether they meet the general United States Patent & Trademark Office (USPTO) registration requirements. However, by treating English and non-English words alike, the pool of source-identifying marks is unnecessarily restricted. This note argues that a clear rule-like form that relaxes restrictions of registering descriptive foreign language marks through offering ‘descriptive’ foreign-language a presumption of eligibility for protection would mitigate inconsistent application of the doctrine. Such a rule would also limit costs on consumers and producers that are caused by restricting the range of available marks and inhibiting creative and communicative branding.
Since the beginnings of the modern fragrance industry, fragrance manufacturers have relied on secrecy to protect information about distillation techniques, product composition, and other elements of the production process. In the last century, however, increases in employee mobility and improvements to reverse engineering techniques have undermined the fragrance industry's reliance on trade secrecy to protect its proprietary information. Patents and copyrights are similarly of limited efficacy as a means of protecting this information. Fragrance manufacturers may have some recourse in trademark and unfair competition law, however, specifically in the context of multisensory trade dress.
The concept of “use” in trademark law is fundamental. However, many activities undertaken by a mark owner in connection with the trademark are not relevant uses for the purposes of obtaining and maintaining federal trademark registration. Two recent decisions, Clorox and Gameologist, serve as reminders that there is little statutory guidance on the use requirement under the Lanham Act and that uniformity under the Act is yet to be achieved. In exploring the use requirement under the Lanham Act, this note argues that Congressional amendment to a qualitative bona fide minimal use standard would broaden the use requirement and be the most effective way to better protect all trademark owners.
Courts have recognized that speech utilizing the names of organizations, celebrities, and trademarked products, to comment on them is constitutionally protected, even when there is a risk of brief confusion about the source of the speech. This brief asserts that the district court, in Radiance Foundation, Inc. v. Nat'l Ass'n for the Advancement of Colored People 25 F.Supp. 3d 865 (E.D. Va. 2014), erred in accepting the NAACP’s trademark infringement and trademark dilution theories. Amici thus asks the Court to reverse and to hold that Radiance should have been granted a declaratory judgment that its posts were not infringing.
Recent appearances of trademarks in popular culture—in rap lyrics, on reality TV shows, even in youth riots—have raised the question whether the owners of those trademarks might pursue legal remedies to protect their brands from unwanted social associations. This Article argues that they cannot, and that we should understand this limitation on trademark rights as grounded in a principle that consumption of certain brands is an expressive act that First Amendment principles place outside trademark owners’ control.
Scott Gelin and G Roxanne Elings analyze the current standard of contributory liability in the wake of Tiffany (NJ) Inc. v. eBay, in which the Second Circuit affirmed the Southern District’s finding that eBay is not liable to trademark owners for counterfeit sales of their products by third parties on its site. After highlighting certain ambiguities in the current state of the law, the authors propose practical tips to help brand owners protect against counterfeit sales, and to help service providers and selling platforms avoid secondary liability.