Intro to IP

Class of November 19 2003

Trademark Dilution, Cybersquatting, False Advertising

Dilution: Moseley v. V Secret Catalogue, Inc. (2003) Supp 7

• What is trademark dilution and what’s the rationale for it?

• What was the Circuit split that the U.S. Supreme Court had to resolve in this case?

FTDA (15 U.S.C. § 1125(c))

• Protects famous/distinctive marks only (see factors at (c)(1))

• From dilution of the distinctive quality of the mark (see s. 1127)

• Injunctive relief only unless willful intention to trade on owner’s reputation or to cause dilution of famous mark

• Exceptions : fair use in comparative commercial advertising to ID competing goods/services, noncommercial use of a mark, news reporting/news commentary

Circuit Split

• Was on what P must prove under the FTDA

• Objective proof of actual injury to economic value of a famous mark?

• Actual loss of sales or profits?• Presumption of harm (likelihood of

dilution)?

Problem 5-7 CB p. 643

• Does LEXUS for a luxury car dilute the registered trademark LEXIS for a legal/business electronic database?

Problem 5-7 CB p. 643

• Does LEXUS for a luxury car dilute the registered trademark LEXIS for a legal/business electronic database? Problem is based on Mead Data Central v. Toyota Motor Sales, 875 F.2d 1026 (2d Cir. 1989) (pre-FTDA case decided on New York state dilution law)

Problem 5-8 – CB p. 647 – use of logos outside the corporate

context• What hurdles will

TM owners have to clear to enforce their rights? Are there any risks in letting the practice continue? Do PMC/customers have a defense not based in TM law?

Domain Names and Cybersquattiing

• What’s a domain name?

• What’s cybersquatting

• Compare the ACPA to the UDRP