The Experts below are selected from a list of 2010 Experts worldwide ranked by ideXlab platform
Danielle M. Conway - One of the best experts on this subject based on the ideXlab platform.
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Remedying Trademark Infringement: The Role of Bad Faith in Awarding an Accounting of Defendant’s Profits
Santa Clara law review, 2002Co-Authors: Danielle M. ConwayAbstract:The Trademark Act of 1946 (“Lanham Act”) has a recent history as a federal law enacted to protect the power of a Trademark from infringement. One of the remedies for infringement under the Lanham Act is disgorging the defendant’s profits. Unfortunately, federal courts have muddied the waters in determining when a Trademark Owner will be entitled to an accounting of defendant’s profits as a remedy for Trademark infringement. The judicially created limitation on the accounting of profits remedy appears in the form of a bad faith requirement. Although the Supreme Court appeared to render the definitive answer regarding whether bad faith is required for this remedy, nearly five decades of circuit and district court decisions have resulted in a schizophrenic view of the remedy of an accounting of profits and the bad faith requirement. This article proposes that Congress did not intend a bad faith requirement be met before an Owner of an infringed mark is able to recover a defendant’s profits collected on the back of the infringed mark. This thesis, although seemingly simplistic, must travel a circuitous route through judicial precedent, statutory construction, and general empirical data to be proved.
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remedying Trademark infringement the role of bad faith in awarding an accounting of defendant s profits
Santa Clara law review, 2002Co-Authors: Danielle M. ConwayAbstract:The Trademark Act of 1946 (“Lanham Act”) has a recent history as a federal law enacted to protect the power of a Trademark from infringement. One of the remedies for infringement under the Lanham Act is disgorging the defendant’s profits. Unfortunately, federal courts have muddied the waters in determining when a Trademark Owner will be entitled to an accounting of defendant’s profits as a remedy for Trademark infringement. The judicially created limitation on the accounting of profits remedy appears in the form of a bad faith requirement. Although the Supreme Court appeared to render the definitive answer regarding whether bad faith is required for this remedy, nearly five decades of circuit and district court decisions have resulted in a schizophrenic view of the remedy of an accounting of profits and the bad faith requirement. This article proposes that Congress did not intend a bad faith requirement be met before an Owner of an infringed mark is able to recover a defendant’s profits collected on the back of the infringed mark. This thesis, although seemingly simplistic, must travel a circuitous route through judicial precedent, statutory construction, and general empirical data to be proved.
Christine Haight Farley - One of the best experts on this subject based on the ideXlab platform.
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Trademark Dilution Law: A Remedy in Search of a Harm
2006Co-Authors: Christine Haight FarleyAbstract:For the last decade, the biggest question in Trademark law has been how to prove dilution. This is a clear sign of something. Can no smart attorney, judge or social scientist figure out what dilution is and how to prove it? Dilution has proven to be a "dauntingly elusive concept," according to the Fourth Circuit. Even the Supreme Court does not "get" dilution. In oral arguments in Moseley v. V. Secret Catalog, nearly all of the questions from the Justices were seeking to simply understand what dilution is. Other courts either do not get dilution, or else they just do not like it. Courts that have ruled in dilution cases have read additional restrictions into the act. What these courts are doing can be characterized as "judicial nullification." These courts seem to be uncomfortable with the apparent breadth of the new right and are seeking to reign it in with additional limitations. The Supreme Court in the V. Secret case also evidenced some distaste for dilution, but admirably tried to wrestle it down nonetheless. The Court ultimately failed to define dilution and acknowledged this by holding that whatever dilution is, at least you have to prove it. Trademark Owners desire a likelihood of dilution standard rather than an actual dilution standard because they cannot prove actual dilution. They cannot prove actual dilution because there is no such harm. The Supreme Court could not provide guidance because they could not articulate the harm that needed to be proved. The Trademark bar takes it on faith that dilution exists and would like it to be presumed. The main problem with dilution law is that it provides a remedy without a supportable theorization of the harm. It is not a strong sense of harm that is motivating the push for dilution protection. Instead, it a strong reaction to a perceived sense of the bad faith on the part of defendants. When defending dilution, proponents frequently state that defendants in dilution cases can only have bad faith intentions to use these famous marks. So dilution protection is desired not so much to protect famous Trademark Owners' property, but instead to protect against others' free rides. If dilution is really about preventing the unfair advantage that results from the non-confusing use of a famous mark, then this really is unfair competition legislation. But an unfair competition right without strict boundaries could easily become a right in gross for the Trademark Owner.
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why we are confused about the Trademark dilution law
Fordham Intellectual Property Media & Entertainment Law Journal, 2006Co-Authors: Christine Haight FarleyAbstract:For the last decade, the biggest question in Trademark law has been how to prove dilution. This is a clear sign of something. Can no smart attorney, judge or social scientist figure out what dilution is and how to prove it? Dilution has proven to be a "dauntingly elusive concept," according to the Fourth Circuit. Even the Supreme Court does not "get" dilution. In oral arguments in Moseley v. V. Secret Catalog, nearly all of the questions from the Justices were seeking to simply understand what dilution is. Other courts either do not get dilution, or else they just do not like it. Courts that have ruled in dilution cases have read additional restrictions into the act. What these courts are doing can be characterized as "judicial nullification." These courts seem to be uncomfortable with the apparent breadth of the new right and are seeking to reign it in with additional limitations. The Supreme Court in the V. Secret case also evidenced some distaste for dilution, but admirably tried to wrestle it down nonetheless. The Court ultimately failed to define dilution and acknowledged this by holding that whatever dilution is, at least you have to prove it. Trademark Owners desire a likelihood of dilution standard rather than an actual dilution standard because they cannot prove actual dilution. They cannot prove actual dilution because there is no such harm. The Supreme Court could not provide guidance because they could not articulate the harm that needed to be proved. The Trademark bar takes it on faith that dilution exists and would like it to be presumed. The main problem with dilution law is that it provides a remedy without a supportable theorization of the harm. It is not a strong sense of harm that is motivating the push for dilution protection. Instead, it a strong reaction to a perceived sense of the bad faith on the part of defendants. When defending dilution, proponents frequently state that defendants in dilution cases can only have bad faith intentions to use these famous marks. So dilution protection is desired not so much to protect famous Trademark Owners' property, but instead to protect against others' free rides. If dilution is really about preventing the unfair advantage that results from the non-confusing use of a famous mark, then this really is unfair competition legislation. But an unfair competition right without strict boundaries could easily become a right in gross for the Trademark Owner.
Jusoh Sufian - One of the best experts on this subject based on the ideXlab platform.
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Civil Procedure of Trademark Enforcement in Pakistan: A Comparative Analysis with Malaysia and USA
'Scholink Co Ltd.', 2019Co-Authors: Mukhtar Sohaib, Zainol, Zinatul Ashiqin, Jusoh SufianAbstract:Civil procedure of Trademark enforcement runs in Pakistan under Trade Marks Ordinance 2001, Code of Civil Procedure 1908 and Specific Relief Act 1877. Trademark is one of the components of Intellectual Property Law, it is a mark, name, sign, smell or a sound which distinguishes goods and services of one undertaking from goods and services of other undertakings. It is required to be distinctiveness and non-descriptive, it losses its distinctiveness when Owner of registered Trademark does not take prompt action against its infringement. The registered Trademark Owner may file civil suit against infringement of his registered Trademark before the concerned District Court of Law for claiming damages and obtaining injunctions. The Trademark Registry works under Intellectual Property Organization of Pakistan (IPO-Pakistan) for registration and protection of Trademarks in Pakistan. Similarly, Intellectual Property Corporation of Malaysia (MyIPO) is empowered agency of Trademark registration and its protection in Malaysia. The United States Patent and Trademark Office (USPTO) is responsible for registration and protection of Trademarks in United States of America (USA). Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) is the only International Treaty which contains exhaustive provisions on Trademark enforcement includes civil procedure, administrative procedure, criminal procedure, provisional and border measures. Important civil procedure of Trademark enforcement issues need to be clarified in Trademark law of Pakistan includes Trademark infringement, Trademark dilution and rectification of Trademark register. This article is comparative analysis of civil procedure of Trademark enforcement in Pakistan, Malaysia and USA
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Administrative Procedure of Trademark Enforcement in Pakistan: A Comparative Analysis with Malaysia and USA
'Scholink Co Ltd.', 2019Co-Authors: Mukhtar Sohaib, Ashiqin Zainol Zinatul, Jusoh SufianAbstract:Trademark is one of the component of Intellectual Property (IP). It is a mark, name, sign, smell or a sound which distinguishes goods and services of one undertaking from goods and services of other undertakings. It is required to be distinctive and non-descriptive. It losses its distinctiveness when registered Owner of Trademark does not take prompt action against its infringement. Trademark enforcement procedures including administrative procedure must be expedient, adequate, fair, equitable, and must not be complicated, costly and time consuming. Administrative procedure starts when application for Trademark registration is opposed by the registered Trademark Owner before the concerned administrative authority. Trademark registration authorities are: (i) Trademark Registry under Intellectual Property Organization of Pakistan (IPO-Pakistan) in Pakistan, (ii) Intellectual Property Corporation of Malaysia (MyIPO) in Malaysia, and (iii) United States Patent and Trademark Office (USPTO) in United States of America (USA). The registered Owner of Trademark may apply before the concerned administrative authority against the registration of identical Trademark by adopting administrative procedure of Trademark enforcement. This study is qualitative method of research a comparative analysis of administrative procedure of Trademark enforcement in Pakistan, Malaysia and USA. After a comparative analysis of administrative procedure of Trademark enforcement in Pakistan, Malaysia and USA, it is found that there are only three IP Tribunals in Pakistan and there is a need of more IP Tribunals which is required to give its decision within 90 days resultantly saves time and money of the people. It is also found that there is Trademark Trial and Appeal Board at USPTO, where appeal against decision of the Registrar may be filed by the aggrieved party thus a similar kind of body is required to be established at Trademark Registry in Pakistan. Furthermore, IP experts should be hired at IP Tribunal and at Trademark Registry for smooth implementation of administrative procedure of Trademark enforcement in Pakistan
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Review of Trademark and Its Enforcement Procedures of Pakistan under TRIPS and Paris Convention
'Scholink Co Ltd.', 2018Co-Authors: Mukhtar Sohaib, Zainol, Zinatul Ashiqin, Jusoh SufianAbstract:Enforcement of Trademark law has been in evolution for decades in Pakistan. Pakistani laws dealing with Trademark and its enforcement procedures are Trade Marks Ordinance 2001, Trade Marks Rules 2004, Intellectual Property Organization of Pakistan Act 2012 and relevant provisions of Pakistan Penal Code 1860 and Specific Relief Act 1877. Civil procedure is dealt in Pakistan as per Code of Civil Procedure 1908 and criminal procedure as per Code of Criminal Procedure 1898. This article is qualitative method of research analyses Trademark and its enforcement procedures of Pakistan as per relevant Trademark laws of Pakistan under the light of relevant provisions of Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) and Paris Convention. Paris Convention is the first International Convention containing Trademark and its enforcement provisions (6-9) as TRIPS is the first International Agreement containing exhaustive provisions on Trademark and its enforcement procedures (15-21, 41-61). Part III of TRIPS deals with enforcement of Trademark including civil procedure, administrative procedure, provisional measures, border measures and criminal procedure of Trademark enforcement. Trademark Registry established under section 9 of Trade Marks Ordinance 2001 and works under Intellectual Property Organization of Pakistan (IPO-Pakistan) which is a statutory body established under section 3 of Intellectual Property Organization of Pakistan Act 2012. The registered Trademark Owner in Pakistan can avail civil procedure, criminal procedure, administrative procedure as well as provisional and border measures for enforcement of his registered Trademark right in Pakistan. TRIPS and Paris Convention have been ratified by Pakistan, but ratification of International Convention and its implementation are two different things. Better enforcement of Trademark law may take years to achieve as per relevant provisions of International Conventions therefore designated authorities of Pakistan are required to establish more Trademark Registry branches, more IP Tribunals, appoint and induct more IP experts, examiners in-charge of registration and spread IP awareness throughout Pakistan for betterment of Trademark law enforcement in Pakistan
Jake Linford - One of the best experts on this subject based on the ideXlab platform.
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Trademark Owner as adverse possessor productive use and property acquisition
Case Western Reserve law review, 2013Co-Authors: Jake LinfordAbstract:There is an ongoing debate over whether or not a Trademark is “property,” and what the appropriate boundaries of such a property right might be. Some scholars assert that rules and justifications developed to handle rights in real property are generally a poor fit for intellectual property regimes and for Trademark protection in particular. Others respond that a unified theory of property should be able to account for both real and intellectual property. Neither approach fully recognizes that property regimes are multifaceted. A close look at the critical features of particular regimes can pay unexpected dividends. This Article reveals how the process of Trademark acquisition resembles, in startling ways, acquiring title to real property through adverse possession. Both the Trademark and adverse possession regimes base acquisition on the productive use of the property in question. This productive use must be sufficient to provide notice of the asserted † Assistant Professor, Florida State University College of Law. My thanks to Rob Atkinson, Phil Barengolts, Shawn Bayern, Christina Bohannon, Sarah Burstein, Megan Carpenter, T.J. Chiang, Eric Claeys, Kevin Emerson Collins, Jorge L. Contreras, David Fagundes, Michael D. Frakes, Brett Frischmann, Deborah Gerhardt, Andrew Gilden, Eric Goldman, Christi J. Guerrini, Paul Heald, Michael Helfand, Laura Heymann, David Horton, Justin Hughes, Faye Jones, Jay Kesan, Jay Kesten, Megan M. LaBelle, David Landau, Sarah Lawsky, David Levine, Justin Levitt, Clarisa Long, Brendan Maher, Irina Manta, Dan Markel, Charles R. McManis, Joseph S. Miller, Deborah E. Moeller, Christina Mulligan, Murat Mungan, Christopher M. Newman, Paul Ohm, David Orozco, Sean Pager, Tetyana Payosova, Jim Rossi, Jennifer Rothman, Karen Sandrik, Mark Spottswood, Franita Tolson, Rebecca Tushnet, Greg Vetter, Melissa F. Wasserman, Katya Weckstrom, Don Weidner, Hannah Wiseman, and Sam Wiseman; participants in workshops at Florida State University College of Law, the University of Florida Levin College of Law, the 5th Annual Junior Scholars in Intellectual Property workshop at Michigan State University, and Prawfsfest! IX at Loyola, Los Angeles; and attendees at the International Trademark Association’s Second Annual Scholarship Symposium, the 2011 Intellectual Property Scholars Conference at the DePaul University College of Law, and the 2012 Intellectual Property Scholars Roundtable at Drake University Law School for feedback on earlier drafts. For comments, which are always welcome, please contact me at jlinford@law.fsu.edu. Case Western Reserve Law Review·Volume 63·Issue 3·2013 Trademark Owner as Adverse Possessor 704 property right to the public and competing claimants. A properly functioning productive use regime is valuable because such a regime is more likely to encourage an efficient initial allocation of property rights while also providing fairness-based limits on the scope of property rights. Recognizing the productive use structure in both regimes provides several significant insights. First, the productive use structure highlights the importance of the commercial strength inquiry as a usebased limitation on the scope of protection even for inherently distinctive marks. Second, the productive use structure also clarifies how and why rights in the Trademark commons are more active and property-like than rights held in common over expired patents and copyrights. Third, comparing the regimes shows how adverse possession is, surprisingly, a more hard-edged or “crystalline” property regime than the relatively “muddy” Trademark regime. Finally, this analysis inspires interventions for Trademark and adverse possession law to bring them more in line with the productive use requirement, and to open space for public use and competition.
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Trademark Owner as Adverse Possessor: Productive Use and Property Acquisition
SSRN Electronic Journal, 2012Co-Authors: Jake LinfordAbstract:There is an ongoing debate over whether or not a Trademark is “property,” and what the appropriate boundaries of such a property right might be. Some scholars assert that rules and justifications developed to handle rights in real property are generally a poor fit for intellectual property regimes and for Trademark protection in particular. Others respond that a unified theory of property should be able to account for both real and intellectual property. Neither approach fully recognizes that property regimes are multifaceted. A close look at the critical features of particular regimes can pay unexpected dividends.This Article reveals how the process of Trademark acquisition resembles, in startling ways, acquiring title to real property through adverse possession. Both the Trademark and adverse possession regimes base acquisition on the productive use of the property in question. This productive use must be sufficient to provide notice of the asserted property right to the public and competing claimants. A properly functioning productive use regime is valuable because such a regime is more likely to encourage an efficient initial allocation of property rights while also providing fairness-based limits on the scope of property rights. Recognizing the productive use structure in both regimes provides several significant insights. First, the productive use structure highlights the importance of the commercial strength inquiry as a use-based limitation on the scope of protection even for inherently distinctive marks. Second, the productive use structure also clarifies how and why rights in the Trademark commons are more active and property-like than rights held in common over expired patents and copyrights. Third, comparing the regimes shows how adverse possession is, surprisingly, a more hard-edged or “crystalline” property regime than the relatively “muddy” Trademark regime. Finally, this analysis inspires interventions for Trademark and adverse possession law to bring them more in line with the productive use requirement, and to open space for public use and competition.
David E. Armendariz - One of the best experts on this subject based on the ideXlab platform.
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Picking on the Little Guy? Asserting Trademark Rights against Fans, Emulators, and Enthusiasts*
Texas Law Review, 2012Co-Authors: David E. ArmendarizAbstract:We live in a time of robust Trademark1 protection, but the fact that a Trademark Owner has a right does not mean the Owner should always exercise that right. There are times when asserting a Trademark right might do more harm than good to a Trademark Owner, without addressing any real threat to that Owner. This Note aims to explore the actions of Trademark Owners against subsets of infringers referred to here as fans, emulators, and enthusiasts-groups that use the mark not to create a separate brand identity of their own but rather to show their support for or imitate the original brand Owner. These groups include sports fans, youth and amateur sports teams that use official team names and logos, and enthusiasts that use Trademarks in their domain names or to identify their group. This presents a different situation than most Trademark analyses, which usually focus on two separate businesses at odds with one another, each attempting to secure a share of its own product market. In the particular cases at issue here, the use is not competitive, and it usually has little risk of confusing consumers or diluting the original mark. In fact, in some cases such use may actually strengthen or reinforce the original mark, given the nature of the use. While the law allows a Trademark Owner to enforce its rights in these situations, there are costs involved in such enforcement-costs to the Trademark Owner asserting its rights, costs to the allegedly infringing party, and costs to the community and society as a whole. While costs are inherent in any Trademark-enforcement scenario, there is a problem if the costs are not offset by a corresponding benefit. For example, costs to an infringing party or to society are justifiable if the Trademark Owner derives a benefit to which it is entitled under the law-such is the nature of our Trademark regime. However, if the Trademark Owner does not derive a benefit, or actually ends up worse off as a result, then such a situation is unacceptably inefficient. Trademark law itself obligates an Owner, to a certain extent, to police its mark and ensure the integrity of its brand, but this obligation should be understood in such a way as to avoid unnecessary enforcement actions that result in inefficient outcomes. This Note proceeds in four parts. Part I presents several examples of enforcement actions against fans, emulators, and enthusiasts for analysis. Part II explores the Trademark Owners' possible motivations for taking such actions, looking both at reasons expressed by spokespeople and reasons that may be lying beneath the surface. Part III analyzes the costs of enforcement actions in these cases to the parties involved, including the public. Part IV concludes. I. Fans, Emulators, and Enthusiasts There are several examples of enforcement actions taken against fans, emulators, and enthusiasts. Trademark Owners take different approaches to these groups that use their marks. Some Owners refuse to allow the use altogether, while others force groups to enter into licensing agreements if they wish to continue the use. Still other Owners take no action at all and actually encourage the use. What follow are a few representative examples of the types of use that are the focus of this Note. In 2010, a team of Philadelphia Phillies fans calling themselves the "Phlyin' Phanatics" entered their contraption in the Red Bull Flugtag Competition, a contest in which people build homemade flying machines and launch them into a body of water.2 The team of fans had spent $3,000 and 400 hours building a machine modeled after the Phillie Phanatic, the mascot of the Phillies and a Trademark of Major League Baseball (MLB).3 MLB objected to the use, requiring them to remove a replica of the mascot's head from the craft and leaving a sour taste in the mouths of the dejected Phillies fans.4 MLB has a history of vigorously enforcing its Trademarks. In the 1990s, it began cracking down on little league teams whose uniforms featured official logos but were not purchased through an authorized, licensed dealer. …