Comments for Trademark Law Briefs http://trademarklawbriefs.com a summary of recent 9th Circuit trademark decisions Wed, 08 Sep 2010 09:55:21 +0000 http://wordpress.org/?v=2.3 Comment on 9th Cir. says generic words used as famous arbitrary marks receive anti-dilution protection from all other trademark uses by admin http://trademarklawbriefs.com/?p=88#comment-651 admin Tue, 07 Sep 2010 19:34:29 +0000 http://trademarklawbriefs.com/?p=88#comment-651 As this blog's author, I tend to avoid inserting my opinion on decisions. However, sometimes I feel a compulsive need to comment. I think the court's reasoning is wrong on this one. I fully agree with dilution protection when the junior trademark is trading off of the goodwill established by the famous mark (as in the examples laid out in Mattel). But in this case, the junior user was pulling a suggestive meaning from the GENERIC use of the word, not "'an appropriation of or free riding on' the substantive investment that [Visa] made in [its] mark" (Mattel, 296 F.3d 894, 903). Therefore, I would argue there is no likelihood of dilution where the junior user is not trying to get the value of the senior user's fame but is instead creating its own goodwill based on the generic meaning of the word. As this blog’s author, I tend to avoid inserting my opinion on decisions. However, sometimes I feel a compulsive need to comment. I think the court’s reasoning is wrong on this one. I fully agree with dilution protection when the junior trademark is trading off of the goodwill established by the famous mark (as in the examples laid out in Mattel). But in this case, the junior user was pulling a suggestive meaning from the GENERIC use of the word, not “‘an appropriation of or free riding on’ the substantive investment that [Visa] made in [its] mark” (Mattel, 296 F.3d 894, 903). Therefore, I would argue there is no likelihood of dilution where the junior user is not trying to get the value of the senior user’s fame but is instead creating its own goodwill based on the generic meaning of the word.

]]> Comment on Local nonprofit’s trade name not covered by Lanham Act by admin http://trademarklawbriefs.com/?p=63#comment-621 admin Wed, 14 Jul 2010 16:33:10 +0000 http://trademarklawbriefs.com/?p=63#comment-621 Update- Plaintiff did amend and Defendant filed again to dismiss. On June 1, 2010, the court said plaintiff's amendments appropriately stated causes of action under the Lanham Act. Non-profit's noncommercial activity in a competitive context of a purported trademark satisfies the commercial use requirement under the Lanham Act. Therefore, the fact that there is no "profit motive" is irrelevant. Also, having a website is sufficient to allege use in interstate commerce. Additionally, using the name at out-of-state conferences sufficiently alleges use in interstate commerce. Update- Plaintiff did amend and Defendant filed again to dismiss. On June 1, 2010, the court said plaintiff’s amendments appropriately stated causes of action under the Lanham Act.

Non-profit’s noncommercial activity in a competitive context of a purported trademark satisfies the commercial use requirement under the Lanham Act. Therefore, the fact that there is no “profit motive” is irrelevant.

Also, having a website is sufficient to allege use in interstate commerce. Additionally, using the name at out-of-state conferences sufficiently alleges use in interstate commerce.

]]> Comment on No liability where internet service provider removes allegedly infringing material (or “why pro se complaints are a bad idea”) by “Life is Rad” Legal Strategy All Wet | 95years http://trademarklawbriefs.com/?p=78#comment-608 “Life is Rad” Legal Strategy All Wet | 95years Tue, 01 Jun 2010 12:10:05 +0000 http://trademarklawbriefs.com/?p=78#comment-608 [...] both sold merchandise on CafePress. Life’s Rad filed a takedown notice with CafePress, asserting a violation of Life’s Rad’s federal trademark, which CafePress honored. Life is Rad then filed a lawsuit against both Life’s Rad and [...] […] both sold merchandise on CafePress. Life’s Rad filed a takedown notice with CafePress, asserting a violation of Life’s Rad’s federal trademark, which CafePress honored. Life is Rad then filed a lawsuit against both Life’s Rad and […]

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]]> Comment on Trade Association Certification is not Protected Speech by Trade Association Certification is not Protected Speech | The Law Bugle | Florida Law News http://trademarklawbriefs.com/?p=76#comment-584 Trade Association Certification is not Protected Speech | The Law Bugle | Florida Law News Wed, 19 May 2010 01:11:37 +0000 http://trademarklawbriefs.com/?p=76#comment-584 [...] Go to source » [...] […] Go to source » […]

]]> Comment on Copyright Act can preempt Trade Dress claims by HTC Countersues Apple, Claims Apple Is Infringing On Five Patents | Startup Websites http://trademarklawbriefs.com/?p=77#comment-570 HTC Countersues Apple, Claims Apple Is Infringing On Five Patents | Startup Websites Wed, 12 May 2010 20:51:16 +0000 http://trademarklawbriefs.com/?p=77#comment-570 [...] Trademark Law Briefs » Blog Archive » Copyright Act can preempt … [...] […] Trademark Law Briefs » Blog Archive » Copyright Act can preempt … […]

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]]> Comment on Criminal Plea Bargain Leads to Civil Liability for Infringement by Trademark Law Briefs » Blog Archive » Criminal Plea Bargain Leads … | Legal News - Your Source for Legal News and Advice http://trademarklawbriefs.com/?p=66#comment-496 Trademark Law Briefs » Blog Archive » Criminal Plea Bargain Leads … | Legal News - Your Source for Legal News and Advice Tue, 23 Mar 2010 17:44:53 +0000 http://trademarklawbriefs.com/?p=66#comment-496 [...] Trademark Law Briefs » Blog Archive » Criminal Plea Bargain Leads … Share and [...] […] Trademark Law Briefs » Blog Archive » Criminal Plea Bargain Leads … Share and […]

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