Leonardo, Lingerie And George Of The Jungle: Practical Considerations In Trademarks And Licensing
Jeffrey C. Katz and David A. Weems of Davis & Gilbert LLP
Trademarks play an increasingly important role in most businesses, yet many companies still deal with them on an ad hoc basis. There are a number of areas companies can focus on to maximize the value of their trademarks. Brand management encompasses everything from providing basic guidelines on proper trademark usage, to drafting complex licensing agreements, to coordinating IP audits, to conducting due diligence in corporate transactions, and administering domain name policies.
I Know It When I See It: A Practitioner's Guide To Identifying Third Party Trademarks That Are Likely To Dilute
Stacy L. Taylor of Foley & Lardner LLP
Dilution. To a chemist, it refers to the process of reducing the concentration of a solute in solution, usually simply by mixing with more solvent. But to a trademark lawyer, it is the raison de'etre for the Federal Trademark Dilution Act (FTDA), which provides in part that the owner of a famous mark is entitled to relief against another person's commercial use in commerce of a mark, "if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark."
It's No Secret - The Supreme Court Rules on the Federal Trademark Dilution Act
Sandra Edelman of Dorsey & Whitney LLP
The United States Supreme Court does not accept many trademark cases for review, and so on those rare occasions when the Court interprets the Lanham Act, trademark lawyers and their clients are usually eager to read what the Court has to say.
New Law Extends Protection to "Famous" Trademarks
Pillsbury Winthrop Shaw Pittman LLP
On January 16, President Clinton signed The Federal Trademark Dilution Act of 1995, which extends protection to ".
Post-Registration Strategic Maintenance and Protection of Your Trademarks
James D. Nguyen of Foley & Lardner LLP
James Nguyen, Senior Counsel at Foley & Lardner, presented two discussions, the first entitled "Post-Registration Strategic Maintenance and Protection of Your Trademarks." He noted that "Trademarks can be a powerful sword, but needed to be actively shielded to protect their strength." Nguyen covered several helpful tips for managing a trademark portfolio.
Free Speech Defeats Barbie Claim
Jennifer A. Van Kirk of Lewis and Roca LLP
The United States Supreme Court recently let stand a Ninth Circuit decision holding that the First Amendment trumps trademark law when an artistic work uses a trademark to poke fun at the product it identifies. Mattel, Inc. v. MCA Records, Inc. 2003 U.S. LEXIS 920 (Jan. 27, 2003).
The Federal Trademark Dilution Act -- Much Hobbled One Year After Victoria's Secret
Ira J. Levy of Goodwin Procter LLP
The purpose of the Federal Trademark Dilution Act is to protect famous trademarks from third party uses. However, with a few particular exceptions, the FTDA has failed to live up to its potential, and has failed to provide owners of famous marks the protection that they rightly or wrongly anticipated.
The Surprising Power of State Law Claims: Recent Cases Serve as Reminder That Federal Acts Need Not Be the Sole Means of Recovery
Ira J. Levy and Jessica L. Rothstein of Goodwin Procter LLP
The Lanham Act (Title 15, USC), the Federal Copyright Act (Title 15, USC) and the Patent Act (Title 35, USC) are all familiar territory for intellectual property practitioners. But a number of recent cases, including most notably Spike Lee v. Viacom, Inc. et al, which many unfamiliar with the available New York State laws dismissed out of hand, serve as an effective reminder of the power of the various state laws.
Catch A Tiger By The Tail: Guarding Trademarks As Your Business Expands
Estella S. Gold of White and Williams LLP
While White and Williams can't guarantee that a predatory tiger won't spring from the commercial underbrush to threaten a client?s treasured trademark, some preventive legal medicine can help avoid an unfortunate surprise attack. One prescription is to plan carefully when you use your existing trademark in a new business sector.
U.S. Supreme Court Dilution Case -- Victoria's Secret
Preston C. Regehr of Parsons Behle & Latimer
On March 4, 2003, the U.S. Supreme Court delivered a blow to famous trademarks. In a unanimous ruling against Victoria Secret in its claim against a mom and pop Kentucky store selling lingerie and adult novelties under the brand "Victor's Little Secret", the court required a showing of actual damage from "blurring and eroding the distinctiveness" of the famous mark.
The Pink Panther Goes to Court
Eric J. Swetsky of Eric J. Swetsky, Barrister & Solicitor
A legal case that shows the range of protection given to a "famous" trademark How typical of Clouseau not to be .
The Trademark Trial and Appeal Board is Not "Bullish" On Dilution
Pamela Deese and Rebecca L. Roby of Dorsey & Whitney LLP
In 1999, the Trademark Amendments Act revised the Lanham Act to add dilution as ground for opposing an application or canceling a registration before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office.
IP Patent Strategy Seminar. Seminar Summaries of Speakers James D. Nguyen & William J. Robinson of Foley & Lardner
James D. Nguyen and William J. Robinson of Foley & Lardner LLP
James Nguyen, Senior Counsel at Foley & Lardner, presented two discussions, the first entitled "Post-Registration Strategic Maintenance and Protection of Your Trademarks." He noted that "Trademarks can be a powerful sword, but needed to be actively shielded to protect their strength." Next, William J. Robinson, a Partner at Foley & Lardner, presented a discussion on IP Litigation strategies. His talk primarily focused on managing IP litigation costs, an area that has seen tremendous expansion, both in terms of amounts that clients have at stake and the price of participating in an IP case.
Supreme Court Opinion Rules that the Federal Trademark Dilution Act ("FTDA") Requires Proof of Actual Dilution
Bassam N. Ibrahim and Bryce J. Maynard of Burns, Doane, Swecker & Mathis, L.L.P.
In a surprising decision with important ramifications for owners of famous trademarks, the Supreme Court ruled unanimously on March 4, 2003 that the Federal Trademark Dilution Act ("FTDA") requires proof of actual dilution. Mosely v. V Secret Catalogue, Inc., No. 01-1015. Justice Stevens, writing for the Court, concluded that the FTDA "unambiguously requires a showing of actual dilution, rather than a likelihood of dilution."