The Trademark Blog

Barrett, 'Internet Trademark Suits and the Demise of 'Trademark Use,' 39 U.C. Davis L. Rev. 371 (2006). Abstract:

"The Internet has provided countless new ways for ingenious businesses and individuals to refer to a plaintiff's mark in a manner that impacts the plaintiff's business. These new methods may not directly associate the mark with goods or services that the defendant is offering for sale and may be completely hidden from consumers' view. In evaluating the numerous trademark infringement and dilution suits that these unauthorized references have generated, courts have often failed to focus on the appropriate role of the "trademark use" requirement, which has traditionally limited the scope of the trademark infringement (and more recently, trademark dilution) cause of action. Some courts appear to have completely ignored the trademark use limitation, while others have acknowledged the limitation but construed it in a manner that undercuts or distorts it. This has given rise to a number of splits in the Circuit Courts of Appeals. This Article undertakes to bring some focus and coherence to the trademark use issue in the Internet context. It provides an in-depth examination of the history and purpose of the limitation and proposes a modern, general definition of "trademark use" in light of that history and purpose. It then demonstrates how this definition should apply in several important contexts on the Internet."

HT Prof Goldman, who provides other links to law review articles on the same topic.

Posted by Marty at 01:37 PM | Permalink

Technology & Marketing Law Blog: Metatags as Per Se Trademark Infringement.

Tdata Inc. v. Aircraft Technical Publishers, 2006 WL 181991 (S.D. Ohio Jan. 23, 2006).

Posted by Marty at 09:07 AM | Permalink

Initial Interest Confusion: Standing at the Crossroads of Trademark Law by Jennifer Rothman, Cardozo Law Review, Vol. 27, p. 105, 2005,

Abstract:

While the benchmark of trademark infringement traditionally has been a demonstration that consumers are likely to be confused by the use of a similar or identical trademark to identify the goods or services of another, a court-created doctrine called initial interest confusion allows liability for trademark infringement solely on the basis that a consumer might initially be interested, attracted, or distracted by a competitor's, or even a non-competitor's, product or service. Initial interest confusion is being used with increasing frequency, especially on the Internet, to shut down speech critical of trademark holders and their products and services, to prevent comparative advertisements and to otherwise limit information and choices available to consumers.

Contemporary trademark law is at a crossroads and the initial interest confusion doctrine stands at the center of this intersection. This article uses the troublesome doctrine as a prism to analyze three crucial issues that will decide the future of trademark law: The first is whether it is ever acceptable to trade off of the goodwill established by another. The second is whether trademark protection primarily serves to protect consumers from being duped by unethical competitors, or instead primarily serves to bolster the business of individual trademark holders. Finally, the article considers the fundamental question: are trademarks and trademark infringement actions about protecting property rights or about providing more limited rights akin to tort and unfair competition actions? The answers to these questions lead to the conclusion that the initial interest confusion doctrine must be eliminated and trademark infringement returned to its origins as a narrow cause of action primarily directed at protecting consumers from deceptive business practices.

Posted by Marty at 07:31 AM | Permalink