Comments on: Trademark Dilution Revision Act Becomes Law

By: Scrubs

Scrubs — Tue, 26 May 2009 18:01:04 +0000

I know it can be time-consuming to update your blog but thank you for keeping me informed and entertained!

By: Info/Law » Longhorn Lawsuit Exposes Disarray of Trademark Fair Use

Info/Law » Longhorn Lawsuit Exposes Disarray of Trademark Fair Use — Tue, 30 Jan 2007 04:00:21 +0000

[...] It seems obvious that there ought to be a single doctrine within federal trademark law that covers such cases, and that resort to constitutional defenses should be unnecessary. But there isn’t any such clear guidance about what rules cover the “fair use/parody” type of defense. In infringement cases, the statute provides only limited protection for use of trademarked terms in their English-language descriptive sense — not the situation here. There are exclusions for certain types of fair uses under the newly revised federal law on trademark dilution, but it is not even crystal-clear that this situation falls within those exclusions either. So counsel for the Aggie fans (led by an important partner at a major Texas law firm) are left with an uncertain legal landscape. This is one of the big doctrinal problems in trademark law. [...]

By: William McGeveran

William McGeveran — Mon, 16 Oct 2006 01:47:34 +0000

I wish the anti-Yankees shirts could be stopped, but certainly I also hope that this law is not the avenue for doing it. (I was thinking more about Boston fans getting the chip off their shoulders!) In fact, I am pretty optimistic that the fair use provision in the law would help those who employ a mark solely in the context of critique or comment, rather than as an identifier for their own goods. The new law's exceptions for such uses include:

"advertising or promotion that permits consumers to compare goods or services[.]"
"identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner."
"All forms of news reporting and news commentary"
"Any noncommercial use of a mark."

That ought to cover most such uses. But I have trouble relaxing when it comes to the murky world of trademark fair use. In particular, the undefined nature of "noncommercial use" is troubling -- what about a blogger or critic who sells ads or T-shirts? Still, the "identifying and parodying, criticizing, or commenting upon" language ought to be enough. I hope... Also note that this revision makes doubly sure, as I said in the main post above, that the exceptions do not apply to claims other than dilution.

By: John Hutzler

John Hutzler — Sun, 15 Oct 2006 13:36:08 +0000

Moreover, I guess all those Boston Vendors will have to stop selling “Yankees Suck” t-shirts.

By: caster

caster — Sat, 14 Oct 2006 21:18:46 +0000

Given the existence of the new Trademark Dilution Revision Act, would a website such as XYZ Sucks or XYZ Complaints create a major problem for a person who owns and manages such sites if XYZ is the trademarked name of a famous company?

By: IPTAblog

IPTAblog — Wed, 11 Oct 2006 17:19:39 +0000

Trademark Dilution Act…

The Trademark Dilution Act was signed into lawMoseley v. V. Secret Catalogue, Inc. that in order to prevail on a trademark dilution claim, the plaintiff must establish the existence of actual dilution, not simply the likelihood of dilution. But the……

By: William McGeveran

William McGeveran — Tue, 10 Oct 2006 20:48:58 +0000

There was discussion "behind the scenes" about the section/subsection issue, but very little discussion of any kind on the record. Congressman David Wu opposed passage of the bill and inserted a statement into the Congressional Record, but on much more sweeping "trademarks have got out of control" grounds.

By: Michael Risch

Michael Risch — Tue, 10 Oct 2006 15:10:59 +0000

No stunner that the fair use clarification passed – I recall commenting on your post in May that it was hard to see the intention any other way, despite the poor drafting.

Was there any real debate about that provision in Congress? That would be interesting to know.