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For decades, courts have struggled with balancing trademark law with the First Amendment--specifically with cases challenging the denial of trademark registration of certain marks. Congress codified trademark registration through the Lanham Act, also known as the Trademark Act of 1946. This statute outlines the registration process and expands the rights of trademark owners. In recent years, a string of cases have ruled certain provisions of the Lanham Act that bar certain marks from registration unconstitutional. Currently under review by the Supreme Court, the case Vidal v. Elster involves an applicant who was denied trademark registration for his mark "Trump Too Small" for use on t-shirts. After submitting his registration application, the United States Patent and Trademark Office ("USPTO") denied registration of the mark and explained that it was barred by the "living individual" clause of Section 2(c) of the Lanham Act. This clause prevents registration of marks that contain the name of a living individual without that individual's consent. Elster did not have Trump's consent to use his name. On appeal, the Federal Circuit Court of Appeals ruled that Section 2(c) was unconstitutional as-applied in this circumstance because it violated Elster's First Amendment right to criticize political figures without government interference. The Federal Circuit's narrow holding did not find the entirety of Section 2(c) unconstitutional, but many scholars see the road that lies ahead. Now, the Supreme Court's decision is pending on the matter. Ultimately, this case highlights complex nuances of trying to obtain trademark registration over marks containing political commentary, and the consequences of this pending decision could potentially erode the constitutionality of other trademark doctrines in the United States. [ABSTRACT FROM AUTHOR]

Trademark law exists to promote competition. If consumers know which companies make which products, they can more easily find the products they actually want to purchase. Trademark law has long treated "source significance"--the fact that a particular trademark is identified with a particular producer--as both necessary and sufficient for establishing a valid trademark. That is, trademark law has traditionally viewed source significance as the only necessary precondition for a trademark being pro-competitive. In this Article, we argue that this equation of source significance and pro-competitiveness is misguided. Some marks use words that are so closely connected with the product being branded that giving just one firm a monopoly over those words provides that firm with a meaningful competitive advantage--an artificial advantage granted by the state. This problem becomes worse as the number of firms producing (and branding) a type of product increases. The more words cordoned off by trademark law, the more trouble a new entrant will have in describing or attracting attention to its product. Trademark law is thus being hijacked by strategic firms for anticompetitive purposes. Traditional doctrinal tools are inadequate to address this problem because the goal should be to limit the number of such trademarks rather than eliminate them completely. However, costly screens could be used to impose a form of congestion pricing on trademarks, eliminating them in all but the most worthwhile cases. In this Article, we develop a theory of the anticompetitive nature of certain trademark rules. We then propose a series of overlapping doctrinal rules and costly screens to address the problem of rampant anticompetitive trademarks. [ABSTRACT FROM AUTHOR]

The article analyzes whether the resurrection of the irreparable harm presumption in false advertising cases under the U.S. Trademark Modernization Act of 2020 is a beneficial policy choice. Topics include a background information on the history and principles surrounding injunctions, the Supreme Court's rulings in the case eBay v. MercExchange related to presumption of irreparable harm, and anti-presumption advocates' arguments against the presumption due to longstanding equitable concerns.

The UK lacks a unified legal basis for the prevention of unfair competition. Instead, the UK offers up an unfair competition menu consisting of individual torts or equitable wrongs (primarily passing off, injurious falsehood, defamation and the breach of confidence), the prohibition of misleading practices under consumer protection law, trade mark law and codes of advertising regulation. In terms of their cumulative coverage, these regimes overlap considerably with the protection available under civilian unfair competition regimes. It is therefore more accurate to say that the UK has laws against unfair competition. But are they cumulatively sufficient? This article evaluates one important facet of this question—whether the UK approach complies with relevant international treaty obligations contained in Article10 bis of the Paris Convention—concluding that it does. The basis for this conclusion is the detailed analysis of international unfair competition prevention obligations contained in WTO Dispute Settlement Panel Report, Australia—Tobacco Plain Packaging. [ABSTRACT FROM AUTHOR]

The article focuses on the intersection of trademark law and non-fungible tokens (NFTs), examining the challenges of preventing trademark infringement within the evolving landscape of digital assets. It explores how the legal frameworks in the U.S. and the European Union address trademark protection in the context of NFTs and proposes innovative solutions to mitigate infringement risks in the digital age.

The article delves into the unexpected connection between trademark law, traditionally associated with commercial symbols, and the art market. It explores how trademark law aligns with art's concerns about authenticity, provenance, and the artist's reputation. The historical origins of trademark law and its evolving relationship with the art market are discussed, challenging notions of art's purity in the face of increasing commercialization and collaborations between artists and luxury brands.

LGBTQ+ slurs can now be registered as federal trademarks. The U.S. Supreme Court's decisions in Matal v. Tam and Iancu v. Brunetti permitted federal registration of disparaging, immoral, or scandalous trademarks. Appellee Simon Tam cheered, hoping that these decisions would usher in a new era of minority communities reappropriating offensive terms steeped in hate and prejudice. Others were less optimistic. Advocacy organizations, scholars, and minority groups worried that these decisions opened the floodgates to the United States Patent and Trademark Office registering the vilest and most prejudicial terms in the U.S. lexicon, ossifying hatred. Only time would tell who was right. Now, several years after Tam, this Article seeks to answer this question for LGBTQ+ slurs. A prior study found that, following Tam, affirming uses of racially-oriented marks by in-group members predominated over disparaging ones. This Article builds on that analysis and breaks ground on examining trademark law's relationship with LGBTQ+ persons. To date, there has been practically no trademark law scholarship on the LGBTQ+ community. This Article presents an empirical analysis of 144 LGBTQ+-oriented trademark applications filed before and after Tam. This study finds that the number of LGBTQ+-oriented trademark applications has increased over twofold since Tam. More surprisingly, LGBTQ+-oriented marks have been unanimously affirming in nature; not a single disparaging use of the slurs in trademarks was identified over the entire nine-year period. Based on these findings, I posit that Tam and Brunetti have facilitated increasing applications for and registrations of LGBTQ+-oriented trademarks by and for the LGBTQ+ community rather than symbols of hate against it. [ABSTRACT FROM AUTHOR]

The article focuses on the problem of trademark bullying and proposes adopting a modified misuse doctrine from patent and copyright law to address this issue in trademark law. It discusses the negative consequences of trademark bullying on small businesses, individuals, and the general public, and analyzes existing and proposed solutions to combat this problem.

Under s 26(b) of the Trade Marks Act 2002 (the 2002 Act), where "other special circumstances" exist and it is considered "proper", a trade mark application may be registered despite its conflicting with an existing trade mark. What amounts to "other special circumstances" is not defined in the 2002 Act, and the exception has not been subject to detailed judicial consideration. This lacuna creates challenges for applicants, their advisers, the Intellectual Property Office and the courts. In this article, by considering the text, context and historical purpose of such an exception, I argue that the provision should be understood as a mechanism to grant registration where this would avoid injustice because of the existence of out-of-the-ordinary circumstances faced by the trade mark applicant or which relate to the position between the trade mark applicant and the owner of a conflicting registration. A wide range of circumstances may be deemed "special" under s 26(b). However, I suggest that evidence of prior use per se and without more does not and should not automatically fall within the exception. Further, adjudicators should continue to approach the exception cautiously and narrowly to ensure it does not undermine other core tenets of New Zealand's trade mark system. [ABSTRACT FROM AUTHOR]

The article analyzes the ineffectiveness of Russian and international trademark policies using the Starbucks and Stars Coffee conflict as an example. Topics include the failure of existing international trademark law in protecting the trademark rights of multinational corporations in Russia, an analysis of the recommendations by scholars for international trademark policy and the calls for changes to international trademark policy through the use of existing law to create a stronger policy.

The article explores the expanding reach and impact of social media influencers (SMI) globally on enforcement of trademark law in the U.S. and Europe. Topics include how SMI use social media platforms like TikTok, Instagram and YouTube, approach of the U.S. to regulating influencer marketing, approach of Europe to regulating influencer marketing, and future dealing with Federal Trade Commission enforcement and trademark infringement in the U.S.

Trademark law protects famous marks from dilution by tarnishment, defined by statute as use likely to "harm the reputation of the famous mark." Tarnishing uses are typically those that connect a mark with disreputable goods or topics, like sex or drugs. Mark owners worry that consumers will not purchase products connected with sexually explicit or drug-related materials, and courts often presume the same. If those associations likely cause consumers to withhold custom or dissipate goodwill consumers have invested in the mark, anti-tarnishment protection might be justified. But if that harm is more mythic than real, the law penalizing tarnishing use of trademarks may be ripe for judicial skepticism or congressional reevaluation. Indeed, constitutional invalidation might even be on the table. In a series of recent cases, the Supreme Court invalidated laws targeting false claims to military honors and the registration of disparaging, scandalous, or immoral trademarks on First Amendment grounds. In each case, the Court concluded the regulation was not narrowly targeted to an established harm. If harm via tarnishment happens rarely, or never, then laws penalizing tarnishing speech might violate the First Amendment. We conducted two experiments to determine whether tarnishment likely occurs in prototypical cases--when the mark in question is affiliated with sex, drugs, or sacrilege. In one study, treatment subjects viewed images of target marks used to sell cannabis products or in off-color, sexual contexts. We hypothesized that participants exposed to the potentially tarnishing instruments would respond by downrating the desirability of the tarnished mark. Instead, we found the opposite: for most marks, exposure to the drug-or sex-related stimulus increased or burnished the perceived desirability of the targeted trademark. We also hypothesized the tarnishment effect would be stronger among politically conservative respondents. While we found no net tarnishment effect among conservative respondents, the burnishment effect was more pronounced among liberal respondents. In a second study, treatment subjects viewed banner ads with cannabisinfused Skittles and satanic-themed Sunday sales of Chick-fil-A sandwiches. We hypothesized that conservative respondents and respondents with high religiosity would evaluate the target brands more negatively after multiple exposures. We found that respondents with high religiosity reported Chickfil-A was less tasty in the test condition. But we also found that conservative respondents exposed to the drug-related stimuli reported Skittles were more wholesome compared to the control--another burnishment effect. The results of these experiments suggest that the case for tarnishment might be weak in circumstances where courts have been most willing to presume tarnishment occurs. Indeed, much of what courts have presumed about the tarnishing effect of sex-, drug-, and sacrilege-related uses may be more mythic than material. [ABSTRACT FROM AUTHOR]

The article focuses on critiquing the application of the doctrine of laches, rather than a statute of limitations, in trademark litigation, using the case AIG Agency, Inc. v. American International Group, Inc. as an illustrative example. It contends that relying on the laches doctrine has resulted in ambiguity, prolonged legal battles, and escalated costs, advocating for a reconsideration of its use in Lanham Act cases.

Under the federal trademark law, owners of famous sport trademarks may bring legal claims against unauthorized users of their marks under the infringement and dilution theory. Although the rationale of trademark infringement has been supported by various notions of consumer psychology and law and economics, the theory of dilution has been criticized for the lack of empirical support. This study investigated whether the junior use of major sport trademarks would have dilutive effects on the senior marks in financial terms. The study employed the contingent valuation method, a technique designed to estimate the economic values of nonpecuniary assets such as trademarks. A total of 140 subjects were exposed to dilutive information while they purchased sport brand merchandise. A series of pre- and posttests revealed that moderately famous sport trademarks suffered dilutive harm from junior use, whereas exceptionally famous marks were immune to the dilutive effects. Theoretical and practical implications were discussed. [ABSTRACT FROM AUTHOR]

Counterfeit microelectronics have been a persistent threat for the last twenty years. Counterfeit electronic parts pose serious risks to human health and safety, harm the economy, andjeopardize national security. The Lanham Act provides potent civil remedies for trademark counterfeiting, including injunctive relief, treble or statutory damages, and an ex parte seizure mechanism to preserve evidence. However, an empirical analysis of trademark filings from 2009 through 2022 reveals that manufacturers of electronic parts almost never pursue civil actions against counterfeiters. The lack of enforcement may be due in part to misunderstandings about the scope of coverage; some industry members feel the Lanham Act does not apply to the sale of used or altered items bearing a genuine trademark. The "material alteration theory" does encompass these activities and holds that the sale of used, refurbished, and remarked goods bearing a genuine mark is nevertheless infringing if the altered state of the product is not disclosed to the purchaser. As a result, the lack of civil enforcement must be attributed to other factors such as the high costs of filing suit, concerns about damage to brands and impact on stock value, lack of necessary evidence, and inability to reach anonymous counterfeiters (often in other countries) who sell fake products through online marketplaces. The article concludes that, to incentivize microelectronics manufacturers to bring trademark actions against counterfeiters, Congress must amend the Lanham Act to recognize contributory trademark liability by intermediaries, including e-commerce platforms and others, that facilitate infringement when they have constructive knowledge that infringing activities are taking place on their sites. [ABSTRACT FROM AUTHOR]

The article argues that trademark law's permissiveness towards concurrent use is harmful as a policy matter and internally inconsistent. It mentions trademark doctrine has made a series of missteps by using geography to manage concurrent use of marks, in a way that is contrary to theory, to economic development, to modern information flows. It also mentions Lanham Act authorizes federal courts to issue injunctions to prevent infringement.

The First Amendment right to free speech limits the scope of rights in trademark law. Congress and the courts have devised various defenses and common law doctrines to ensure that protected speech is exempted from trademark infringement liability. These defensive trademark doctrines, however, are narrow and often vary by jurisdiction. One current example is the speech-protective test first articulated by the Second Circuit in Rogers v. Grimaldi, expanded by the Ninth Circuit, and recently restricted by the Supreme Court in Jack Daniel's Properties v. VIP Products to uses of another's mark within an expressive work that do not designate the source of the accused infringer's products. The Rogers test prevents a finding of infringement if this use is artistically relevant to the underlying work and does not explicitly mislead consumers as to the source or content of the work. This categorical rule has definite advantages over the multi-factor likelihood of confusion test in trademark disputes involving expressive works, but--like other speech-protective doctrines--this test has limitations and shortcomings. [ABSTRACT FROM AUTHOR]

Artists, political commentators, and even multinational corporations are increasingly taking existing branded products and modifying them--sometimes to comment on the underlying product, sometimes to make a political or artistic statement unrelated to that product, sometimes to make them look fancier than they are, and sometimes for their own advertising purposes. As ornamenting and customizing existing products has shifted from a personal hobby to a business model, trademark owners have begun to insist that they have the exclusive right to control the appearance of products associated with them or that prominently bear their logos. We call this assertion a claim that there should be an exclusive right to customize. This is a new problem for trademark law. Trademark law doesn't lack for doctrines designed to tackle related problems. Indeed, the problem may be that it has too many doctrines that could potentially be brought to bear. Many of these doctrines point in different directions or apply poorly to common forms of customization. We lay out the approach courts should take to evaluate claims to an exclusive right to customize. We also recommend three modifications to trademark doctrine to broadly protect customization from trademark law without undermining trademark causes of actions against its pernicious forms. [ABSTRACT FROM AUTHOR]

Poetry and trademarks have a lot in common. Both use language to persuade. Both aspire to say much with little. Both deal in ambiguity, though perhaps only poetry is content to reside in it permanently. While poetry is associated with education and erudition, trademarks are considered a lingua franca, readily understood by all. But reading a trademark remains, in the words of Laura Heymann, “at heart, an interpretive exercise.” Poetic devices like rhyme and alliteration play a role in what trademarks mean and how readers of trademarks can locate and articulate that meaning, but their use and interpretation have received little attention in doctrine or scholarship. While applicants and litigants sometimes allege that their marks incorporate poetic devices in support of a claim of distinctiveness, unitariness, or similarity, and factfinders sometimes grant credence to those arguments, both groups tend to use literary terms imprecisely. And that imprecision matters. This Article explores the poetics of trademarks. It calls upon several overlapping senses of the word “poetics”: a study of rhetorical devices; a strategy for interpretation; and a structuring principle undergirding trademark law itself. It defines a number of commonly used poetic devices, offers examples from both poetry and trademarks, and discusses federal court and USPTO decisions that consider their effects on protectability or infringement. Poetic devices have the potential to guide factfinders to deeper insight about word marks. The devices discussed offer ways to articulate what and how a mark means—its denotations, connotations, rhythm, music—specifically and precisely. By treating a trademark as a tiny poem, we make space to honor its complexity. [ABSTRACT FROM AUTHOR]

The article discusses the ruling by the U.S. Ninth Circuit in the case Lodestar Anstalt v. Bacardi & Co. to analyze legal issues like trademark protections under the Lanham Act (Madrid Protocol) and the underlying principle of trademark law over the use of word, slogan, and symbol.

The article delves into the intersection of trademark law and the First Amendment, particularly focusing on the application of the Rogers test in cases involving expressive works and parody. It discusses the evolution of trademark law from its traditional function of preventing consumer confusion to also protecting the reputation of marks, leading to conflicts with freedom of expression.

If a trademark ("mark") becomes a generic term, it may be cancelled under trademark law, a process known as genericide. Typically, in genericide cases, consumer surveys are brought into evidence to establish a mark's semantic status as generic or distinctive. Some drawbacks of surveys are cost, delay, small sample size, lack of reproducibility, and observer bias. Today, however, much discourse involving marks is online. As a potential complement to consumer surveys, therefore, we explore an artificial intelligence approach based chiefly on word embeddings: mathematical models of meaning based on distributional semantics that can be trained on texts selected for jurisdictional and temporal relevance. After identifying two main factors in mark genericness, we first offer a simple screening metric based on the ngram frequency of uncapitalized variants of a mark. We then add two word embedding metrics: one addressing contextual similarity of uncapitalized variants, and one comparing the neighborhood density of marks and known generic terms in a category. For clarity and validation, we illustrate our metrics with examples of genericized, somewhat generic, and distinctive marks such as, respectively, DUMPSTER, DOBRO, and ROLEX. [ABSTRACT FROM AUTHOR]

Both trademark and unfair competition laws and state right of publicity laws protect against unauthorized uses of a person’s identity. Increasingly, however, these rights are working at odds with one another and can point in different directions with regard to who controls a person’s name, likeness, and broader indicia of identity. This creates what I call an “identity thicket” of overlapping and conflicting rights over a person’s identity. Current jurisprudence provides little to no guidance on the most basic questions surrounding this thicket, such as what right to use a person’s identity, if any, flows from the transfer of marks that incorporate indicia of a person’s identity, and whether such transfers can empower a successor company to bar a person from using their own identity, and, if so, when. Part of the challenge for mediating these disputes is that both right of publicity and trademark laws are commonly thought of as concerned solely with market-based interests. But this is not the case. As I have documented elsewhere, the right of publicity has long been directed at protecting both the economic and the noneconomic interests of identity- holders. And, as I demonstrate here, it turns out that the same is true for trademark and unfair competition laws, which have long protected a person’s autonomy and dignity interests as well as their market-based ones. After documenting and developing this overlooked aspect of trademark law, I suggest a number of broader insights of this more robust account of trademark law both for addressing the identity thicket and for trademark law more generally. First, I suggest that recognizing a personality-based facet of trademark law suggests a basis to limit the alienation of personal marks in some contexts. Second, this understanding shores up trademark’s negative spaces, especially when truthful information is at issue. Third, recognizing trademark’s personality-based interests provides a partial explanation (and limiting principle) for some of its expansionist impulses. Finally, I contend that recognizing this broader vision of trademark law provides significant guidance as to how to navigate the identity thicket. I employ trademark preemption analysis to mediate disputes between trademark and right of publicity laws. Trademark preemption provides an avenue out of the thicket, but only if trademark law’s robust theory of personality is recognized. A failure to do so risks leaving us with one of two bad options: a right of publicity that acts as a “mutant” trademark law, swallowing up and obstructing legitimate rights to use trademarks, or, alternatively, with a shallow husk of trademark law (rooted solely in commercial interests) that swallows up publicity claims at the expense of personal autonomy and dignity. Trademark law already provides us with the tools to avoid both of these unsavory paths — if only we reclaim its lost personality. [ABSTRACT FROM AUTHOR]

This article studies the creation and consolidation of a trademark system tantamount to market integration and commercial specialization of Spanish regions from 1850 to 1920. We analyse the first 47,000 registrations, their geographical distribution and the drivers behind this trademark expansion. By using a lineal probability model, we find that knowledge spillovers across regions are associated with their relative trademark specialization and diversification. We incorporate the role played by transport infrastructure by calculating generalized transport costs. The results clarify the origins and evolution of geographical differences in commercial innovation and regional specialization in the first country to institute modern trademark legislation. [ABSTRACT FROM AUTHOR]

The unprecedented and exponential growth of resale is both a rose and a thorn to the luxury market. Some fashion brands construe resale as an opportunity to diversify and expand their client base; while others, who firmly subscribe to a luxury philosophy grounded in exclusivity, believe resale threatens everything from their brand allure to their very existence. Indeed, when Chanel declared that "[o]nly Chanel itself can know what is genuine Chanel," it opened Pandora's box by providing far more than a peek into its litigation strategy. Chanel's declaration all but declared war on the secondary resale market in not only undermining the authenticity of authentic products in the resale stream of commerce, but in claiming the sole right to preserve, protect and police its marks throughout its branded products' life, well after the first sale. Because counterfeiting's proliferation and resale's global expansion, luxury brands' desire to police their trademarks has effectively expanded the scope of trademark enforcement rights beyond what the Lanham Act confers. Largely as a result of the law's inability to keep pace and afford mark holders expanded enforcement rights to target counterfeiters at their source, luxury brands have resorted to policing their marks through instituting litigation against resellers, "partnering" with resellers to serve as authentication gatekeepers to the resale stream of commerce; or in expanding their own businesses by bringing resale in-house. Irrespective of whichever poison they pick, luxury brands are effectively seeking to expand their trademark rights beyond the first sale--which the Lanham Act's legislative history specifically proscribed against--in effectively adding a stick to the trademark bundle of rights to claim a post-first sale trademark enforcement and authentication right. In so doing, luxury brands are pushing the bounds of trademark law into the very territory the Lanham Act drafters feared mark holders world: antitrust territory. This Note examines how luxury brands' recent entree and involvement in resale raises antitrust concerns and how both luxury brands and resellers can more effectively address their concerns within the bounds of trademark law through alternative respective resale engagement strategies; revised strategies to solidify their respective legal and market positioning; and partnership opportunities between resellers and luxury brands to collaborate in fighting their common enemy in counterfeiting. [ABSTRACT FROM AUTHOR]

Federal trademark registration helps protect the hundreds of billions of dollars of brand value that trademarks can represent. Recently, interest in the failure-to-function doctrine, which prevents registration of proposed trademarks that consumers do not perceive as marks, has surged at the appellate body of the United States Patent and Trademark Office (USPTO), the Trademark Trial and Appeal Board (TTAB). This Note is the first in-depth, focused critique of the TTAB's recent failure-to-function jurisprudence. It argues that, as the TTAB currently uses it, the failure-to-function doctrine is incoherent and lacks clarity. On a more granular level, the doctrine rests on inconsistent multifactor tests whose factors the TTAB adds, subtracts, modifies, reconceptualizes, and weighs differently across cases, giving the USPTO little meaningful criteria by which to decide what marks merit registration. This inconsistency risks increasing costs for the USPTO, brands, and consumers by creating uncertainty as to what proposed trademarks the USPTO will approve. In response, this Note proposes combining failure to function with a different trademark doctrine: the doctrine of aesthetic functionality. Replacing failure to function's unwieldy multifactor inquiries with aesthetic functionality's narrow focus on competition promises to increase clarity and, in so doing, mitigate or avoid costs to the USPTO, brands, and consumers. [ABSTRACT FROM AUTHOR]

Brand attributes play an important role in tracking customer-based brand equity. Therefore researchers need an effective approach for eliciting attributes. This paper has two aims: to determine which of four different techniques elicit(s) better results; and to test if online data collection is a viable alternative to face to- face collection. The techniques compared are: Zaltman Metaphor Elicitation Technique (ZMET), Free Elicitation (FE), Repertory Grid (RG) and Projective Elicitation (PE). These approaches are compared on the number and variety of attributes generated, as well as respondent evaluation. FE is the best-performing technique in a face-to-face context, generating the most attributes, evaluated positively by respondents and providing a typical distribution of attribute types. We also provide evidence that online is a viable data collection method for attribute elicitation studies, except ZMET due to respondent drop-out. Online we recommend a combination of FE and PE to obtain a range and variety of responses. [ABSTRACT FROM AUTHOR]

The article provides a background on dupes as a large player in the beauty industry in the U.S., and provides an overview of the industry's current intellectual property (IP) portfolio Topics include the way IP rights fail to prevent dupes due to substantive and practical limitations in patent and trademark law; the importance of studying negative space to understand IP's effectiveness; and the take of the Congress on same.

General Court, T-193/18, Andreas Stihl v EUIPO , EU:T:2021:163, 24 March 2021 In its first judgment since the decision of the Court of Justice of the European Union ('CJEU') in the Red Bull case (C-124/18 P), the General Court has clarified its approach to colour marks and Article 4 of the EU Trade Mark Regulation 2017/1001 ('EUTMR'). [ABSTRACT FROM AUTHOR]

It was a longstanding practice of Latvian courts to acknowledge their competence to introduce a disclaimer into a challenged trade mark registration. This had come to be considered as settled court practice. However, the Latvian Supreme Court recently decided to withdraw this practice and explicitly admitted a change of approach concerning the competence of Latvian national courts to introduce a disclaimer into a trade mark registration. In this way, the Latvian Supreme Court finally abolished a disputable practice in the Latvian courts, having formerly allowed themselves to introduce a disclaimer which could - by way of a misunderstanding of trade mark law - be introduced by a court in addition to a trade mark applicant and the Patent Office. The consequences of this Latvian case have led to the situation that only a trade mark applicant may - either on their own initiative or following a request from the Patent Office - introduce a disclaimer into a trade mark registration. This opinion discusses the situation which existed before the Latvian Supreme Court judgment in question and its consequences. [ABSTRACT FROM AUTHOR]

True to its nature as a (hopefully) once in a lifetime event, the COVID-19 pandemic has led to a tsunami of trademark applications. These include the terms "COVID," "Coronavirus," and other medical and pandemic-management related terms. This unprecedented number of applications has been highlighted by several commentators in general terms in the past months. This Article examines these applications in detail. Notably, the Article presents the first and most complete survey of the applications filed between the onset of the pandemic and the end of 2020, which include the following terms: "COVID," "Coronavirus," "Quarantine," "Social Distancing," "Six Feet Apart," and "Shelter in Place." The author chose to include four additional terms related to the pandemic besides "COVID" and "Coronavirus" to illustrate the broader effects of the pandemic on the trademark application process. The Article proceeds as follows: Section II describes the methodology used to collect and examine the relevant "COVID-19 related" applications; Section III presents the data with specific details regarding the products for which the applications have been filed, the type of filing entities, the legal basis for filing, and the date of filing throughout the relevant period--the year 2020; Section IV elaborates on the distinct legal challenges that the "COVID-19 related" applications may face in order to be registered, notably the possibility that the signs are found to be descriptive, generic, or misleading, or cannot function as marks; Section V concludes and compares the data related to these applications with previous filings for signs including terms related to past sensational events, including pandemics. This comparison shows that the numbers of "COVID-19 related" applications are much higher than the filings submitted in the past. Moreover, 2020 saw a large increase in the numbers of trademark filings including other medical terms. This again illustrates the catalyst effect of the COVID-19 pandemic on the trademark application system. For the interest of the readers, the Article includes the complete dataset presented as Appendix. [ABSTRACT FROM AUTHOR]

At its core, trademark law exists as a tool for consumer protection. Thus, trademark owners use policing and enforcement to maintain a trademark's goodwill, which in turn protects consumers from confusion. But policing and enforcement can lead to trademark overreach and bullying--which undermine the goal of trademark law. This Comment explains that trademark owners are incentivized to engage in aggressive enforcement tactics because courts weigh enforcement efforts in favor of trademark strength. And strong trademarks receive strong protection because such marks are more likely to succeed in trademark infringement litigation. To curb trademark bullying and realign trademark law with its consumer protection purpose, this Comment argues that courts assessing trademark strength should focus on evidence of marketing strategies and consumer perception rather than trademark enforcement. [ABSTRACT FROM AUTHOR]

According to functionality doctrine, trademark protection cannot be granted for any feature that is essential to a product's use or purpose, or that affects the product's cost or quality. But because of the placebo effect, even seemingly inert names and symbols are imbued with precisely this kind of power. In fact, a wide variety of realworld phenomena challenge the prevailing understanding of trademark functionality, from the social uses of high-fashion marks to the cost reductions enabled by certification marks. More fundamentally, a valuable trademark of any kind should act to reduce search costs for consumers and improve quality through reputation. And yet, rather than leading to invalidation, all of these well-documented functionalities are apparently tolerated by trademark law--sometimes merely ignored, but often celebrated explicitly. This Article proposes a more unified theory of functionality: fragility. Some product features affect cost, quality, use, and purpose in ways that are non-fragile-- the effects would persist even if every producer were to copy the same feature. But some features affect the product in ways that are fragile--the effects would be degraded or broken through unchecked copying. In reality, only non-fragile functionalities are actually prohibited, whereas fragile functionalities are permitted and even encouraged. In a manner surprisingly similar to patent or copyright law, trademark law appears to carefully distinguish between improvements that require its protection in order to manifest, and those that do not. This fragility theory not only better explains real-world case outcomes and the functionality doctrine's full history, but also offers a conceptual improvement that can be applied to all types of trademarks. A generic term, for example, exhibits non-fragile linguistic functionality. Moreover, fragility theory provides consistent answers to divisive boundary issues in trademark law, such as overlapping protection under copyright, anti-dilution rights, and post-sale confusion doctrine. At the same time, recognizing this fragility pattern calls attention to potentially adverse consequences in terms of distributive justice and market competition--consequences that trademark law itself may not be able to remedy. [ABSTRACT FROM AUTHOR]

Under Article 10(1)(8) of China's Trademark Law, a trademark that is contrary to public order and accepted principles of morality is not only refused registration, but also forbidden to be used in commerce. Numerous cases involving the registrability of trademarks are brought to China's courts, and Article 10(1)(8) is one of the main grounds for refusing trademark registration. In general, there are two specific legal issues concerning the application of this provision. One is the legislative purpose and rational basis of this provision. In fact, China's Trademark Office and courts used this provision to block trademark hoarding and to protect the civil rights of others before the Supreme People's Court clarified that the purpose of this provision was to protect public interests. The other is the standard for determining what is offensive, which is a common problem among countries with a similar provision. Indeed, it is difficult to create a consistent standard because of the subjectivity involved in drawing moral conclusions, the cultural conflicts between different groups and the unpredictability of the perception of the general public. However, these problems could be solved if the examiners set a low moral threshold for trademark registration, as the perception of the general public with normal sensitivity and tolerance is easier to ascertain when a mark is deeply offensive. In addition, not all trademarks related to public authorities and serious social events should be forbidden under the morality provision, and the court should take account of the possibility of damaging political order and traders' freedom of expression. [ABSTRACT FROM AUTHOR]