Keyword-Linked Advertising, Trademark Infringement, and Google’s Contributory Liability

A number of trademark holders have recently challenged the policies of Google and other Internet search engines that allow the trademark owner\u27s competitors to purchase advertising space linked specifically to the owner\u27s trademarks when entered as search terms. This iBrief examines the application of trademark law to this practice and concludes that Google would be contributorially liable for trademark infringement only when the advertising links lead to consumer confusion about the identity of the advertiser

Sensible Agnosticism: An Updated Approach to Domain-Name Trademark Infringement

The Internet era has brought a new battlefield to U.S.-trademark-law disputes: domain names. Trademark owners have vigorously challenged the registration of domain names that consist of-or merely include-their trademarked terms, suing these domain-name registrants in U.S. courts for trademark infringement. During the early years of the Internet, courts often found consumer confusion-and thus trademark infringement-in these cases. As Internet use has developed, however, many courts have not recognized the growing sophistication of online consumers. This Note proposes that U.S. courts adapt their analyses to recognize evolving consumer behavior and expectations. This updated analysis, based on a 2010 Ninth Circuit opinion, will promote trademark law\u27s historical focus on accuracy by encouraging courts to recognize the right of domain-name registrants to engage in accurate, nonconfusing speech

What\u27s the Harm of Trademark Infringement?

For decades, the concept of actionable trademark infringement has been expanding. Source confusion, reverse confusion, approval/affiliation confusion, initial interest confusion, post-sale confusion, endorsement confusion, and so on, all have won cases for plaintiffs. Whether or not the confusion cost the plaintiff any sales, or was in any way material to consumers, our concept of trademark infringement now encompasses it. These expansions occurred for reasons that seemed sufficient to courts at the time, when advocates offered theories about how all these kinds of confusion could cause harm to the trademark owner. Primarily, courts feared that non-competing uses would preclude trademark owners from expanding into natural markets or tarnish its reputation among its existing consumers

Counterfeits, Copying and Class

Consumers who want to express themselves by wearing contemporary clothing styles should not have to choose between expensive brands and counterfeit products. There should be a clear distinction in trademark law between illegal, counterfeit goods and perfectly legal (at least with respect to trademark law) knockoffs, in which aesthetically functional design attributes have been copied but trademarks have not. Toward that end, as a normative matter, the aesthetic features of products should not be registrable or protectable as trademarks or trade dress, regardless of whether they have secondary meaning, just as functional attributes of a utilitarian nature are not eligible for Lanham Act protection. With enough advertising, any product feature can acquire distinctiveness. Only the assertive deployment of functionality bars by courts can prevent the illegitimate and costly construction of trademark-based product monopolies. The purported trademark-related harms that stem from the production and distribution of noncounterfeit knockoffs are, in reality, the effects of legitimate competition based on attributes such as price, quality, consumer appeal, and retail availability, with which trademark law should not interfere. Repressing or illegalizing knockoffs illegitimately prevents lower income people from procuring and enjoying goods with aesthetic attributes that are not properly monopolized through trademark law, and probably perversely increases the demand for counterfeit items

Are There as Many Trademark Offices as Trademark Examiners?

Federal trademark-registration rights have grown in import, and trademark owners have taken notice. In the fiscal year of 2018, over 660,000 federal trademark registration applications were filed with the U.S. Patent & Trademark Office (“Trademark Office”), representing a 60 percent increase from a decade prior. Yet despite the fact that there is growing concern that the Trademark Office is routinely issuing inconsistent trademark determinations, systematic empirical studies of the administrative process of obtaining federal registration rights are virtually nonexistent. This Article begins to close this gap by conducting the first large-scale study of trademark officials, known as trademark-examining attorneys, who make the initial determination on whether to accept or decline a federal trademark registration. Utilizing a novel dataset comprising over 7.8 million trademark applications, this Article examines the extent to which trademark-examining attorneys’ determinations differ from one another. We find substantial heterogeneity in Trademark Office outcomes. Trademark-examining attorneys have wildly divergent publication rates and registration rates even while controlling for a range of characteristics of the applications. The duration of time an application is before the Trademark Office also varies considerably among trademark-examining attorneys as does whether a filed opposition is sustained

Are There as Many Trademark Offices as Trademark Examiners?

Federal trademark-registration rights have grown in import, and trademark owners have taken notice. In the fiscal year of 2018, over 660,000 federal trademark registration applications were filed with the U.S. Patent & Trademark Office (“Trademark Office”), representing a 60 percent increase from a decade prior. Yet despite the fact that there is growing concern that the Trademark Office is routinely issuing inconsistent trademark determinations, systematic empirical studies of the administrative process of obtaining federal registration rights are virtually nonexistent. This Article begins to close this gap by conducting the first large-scale study of trademark officials, known as trademark-examining attorneys, who make the initial determination on whether to accept or decline a federal trademark registration. Utilizing a novel dataset comprising over 7.8 million trademark applications, this Article examines the extent to which trademark-examining attorneys’ determinations differ from one another. We find substantial heterogeneity in Trademark Office outcomes. Trademark-examining attorneys have wildly divergent publication rates and registration rates even while controlling for a range of characteristics of the applications. The duration of time an application is before the Trademark Office also varies considerably among trademark-examining attorneys as does whether a filed opposition is sustained

Calling Bulls**t on the Lanham Act: The 2(a) Bar for Immoral, Scandalous, and Disparaging Marks

As the Lanham Act approaches the age of 65, it is a good time to take stock of its application to, and place within, the object and purpose of trademark law. Trademark law seeks to promote fair competition by reducing consumer search costs and preventing confusion in the minds of consumers as to the source of goods and services. However, Section 2(a) of the Lanham Act prevents registration of marks that are “immoral,” “scandalous,” “disparaging,” “deceptive,” or which “create a false association” with persons, institutions, beliefs, or national symbols. The 2(a) bar expands trademark law well beyond its basic goals. While a bar to registration for marks that are deceptive or create a false association is related to the overall object and purpose of trademark law, we argue that the bar to registration for marks that are immoral, scandalous, or disparaging is not, and that the 2(a) bar is — both in definition and application — ineffective, inconsistent, and vague, and that it should be removed from the Lanham Act

Trademark Licensing: The Problem of Adequate Control

The enactment of the Lanham Act in 1946 gave legislative sanction to the practice of licensing trademarks for use by persons other than the trademark owner. In granting this approval, the Act required concomitantly that the trademark owner control the nature and quality of goods produced by his licensees and carrying his trademark. An examination of post-1946 cases, however, reveals that some courts have upheld licensing agreements in which there was very little control and that courts generally have failed to scrutinize diligently the licensors\u27 actual exercise of control. This comment seeks to examine the manner in which courts have dealt with the Lanham Act\u27s control requirement and to explore the implications which this has for the use of trademarks today