Trademarks and Unfair Competition: Critical Issues in the Law

by Jonathan S. Jennings, J. Michael Monahan

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This complete, concise guide to trademark and unfair competition addresses the emerging issues of greatest importance to businesses today. The authors, expert practitioners who teach and who have helped shape legislation, provide in-depth analysis, real-world work samples, and valuable strategic information on everything from the trademark registration process to social media issues.

Topics covered include: advantages and risks of seeking federal trademark protection; the scope of anti-dilution law under the Trademark Dilution Revision Act of 2006; online trademark protection, domain name enforcement and the impact of the new top-level domain names; working with U.S. Customs and Border Protection and using track and trace technology; treatment of material differences by the ITC in gray market goods disputes; aesthetic functionality in trade dress law; right of publicity and dilution laws, claims, and defenses; and each step of the process of shepherding an application to register through the United States Patent and Trademark Office, including objections, TTAB proceedings, and international protections.

Trademarks and Unfair Competition: Critical Issues in the Law, focuses on the most significant trademark and unfair competition issues in a concise, easy-to-use volume, and will quickly become the go-to source for litigators, IP counsel, academics and entrepreneurs.

Book #717; looseleaf, one volume, approximately 300 pages; published in 2012, updated as needed; no additional charge for updates during your subscription. Looseleaf print subscribers receive supplements. The online edition is updated automatically. ISBN: 978-1-58852-180-4.

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  • Availability: Available
  • Brand: Law Journal Press
  • Product Type: Books
  • Edition: 0
  • Page Count: 300
  • ISBN: 978-1-58852-180-4
  • Pub#/SKU#: 717
  • Volume(s): 1

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  • Jonathan S. Jennings
Jonathan S. Jennings is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP in Chicago, Adjunct Professor at The John Marshall Law School, and a member of the Advisory Board for the DePaul University College of Law's Center for Intellectual Property Law & Information Technology.

Author Image
  • J. Michael Monahan
J. Michael Monahan is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP. He also teaches an advanced seminar on Video Game Law at Chicago-Kent College of Law, covering special copyright and trademark considerations, self-regulation systems in the U.S. and Europe, and user-generated content.

Chapter 1:
Trademark Dilution Laws

§ 1.01Introduction
[1] Dilution Doctrine
[2] The Federal Trademark Dilution Act of 1996
§ 1.02The Trademark Dilution Revision Act of 2006 (TDRA)
[1] Background
[2] Famous Marks
[3] Proof of Likely Dilution
[4] Trade Dress Dilution
[5] Dilution Online
[6] Dilution and Tarnishment Before the U.S. Patent and Trademark Office
[7] Exclusions And Defenses Under the TDRA
[8] Remedies Under the TDRA
§ 1.03State Dilution and Tarnishment Statutes
§ 1.04Where Does the Law Go from Here?
§ 1.05State Trademark Anti-Dilution Laws Chart
§ 1.06Sample Complaint for Trademark Dilution in Violation of § 43(c) of the Lanham Act

Chapter 2:
Domain Names and Trademarks on the Internet

§ 2.01Introduction
§ 2.02Domain Names
§ 2.03Management of Domain Names
[1] Obtaining Domain Names
[2] Registration of Trademarks
[3] Domain Name Registration Strategy
[4] Purchasing Domain Names
[5] Surveillance
[6] Maintenance and Agreements
§ 2.04The Anti-Cybersquatting Consumer Protection Act (ACPA)
[1] Cybersquatting
[2] Remedies
[3] Proving an ACPA Claim
§ 2.05Uniform Domain Name Dispute Resolution Policy (UDRP)
[1] Choosing a Dispute Resolution Service Provider
[2] Procedure
§ 2.06Choosing a Course of Action Against Cybersquatters
[1] Cease and Desist Letters
[2] ACPA vs. UDRP
§ 2.07Protection for Personal Names
[1] The 2003 Truth In Domain Names Act
§ 2.08Infringement or Dilution of Trademarks on the Internet
[1] Personal Jurisdiction
[2] First Amendment Issues
[3] Metatags and Keywords
[4] Selling Keywords
[5] Linking and Spiders
§ 2.09Conclusion
§ 2.10Sample UDRP Complaint
§ 2.11Sample Complaint for Cybersquatting, Trademark Infringement and Unfair Competition
§ 2.12Sample Complaint for Cybersquatting (Alternate)

Chapter 3:
Enforcement Options Against Trademark Counterfeiting and Gray Market Goods

§ 3.01Introduction to Trademark Counterfeiting and Gray Market Goods Law
§ 3.02Laws and Regulations Against Trademark Counterfeiting
[1] International
[2] Federal and State Anti-Counterfeiting Laws and Regulations
[3] Civil Anti-Counterfeiting Laws
[4] Criminal Anti-Counterfeiting Laws
§ 3.03Monetary Relief in Civil Counterfeiting Cases
§ 3.04Equitable Relief Against Trademark Counterfeiters
§ 3.05International Trade Commission
§ 3.06United States Customs and Border Protection
§ 3.07Combating Online Sales of Counterfeit Goods
§ 3.08Conclusion: The Battle Against Counterfeit Goods
§ 3.09Gray Market Goods
§ 3.10Material Differences Standard
§ 3.11Remedies Against Gray Market Goods
§ 3.12Section 526 of the Tariff Act and Section 42 of the Lanham Act as Causes of Action Against Gray Market Goods
§ 3.13United States Customs and Border Protection’s Gray Market Goods Enforcement
§ 3.14Conclusion: Combating Gray Market Goods
§ 3.15Sample Complaint for Trademark Counterfeiting
§ 3.16Sample Complaint for Gray Market Infringement
§ 3.17Sample Complaint for Sections 32 and 43 of Lanham Act

Chapter 4
Trade Dress and Product Configuration

§ 4.01Introduction
§ 4.02Differences Between Trademarks and Trade Dress
§ 4.03Special Distinctiveness Challenges for Trade Dress
§ 4.04Inherent Distinctiveness for Trade Dress
§ 4.05Secondary Meaning for Trade Dress
[1] General Concept of Secondary Meaning
[2] Secondary Meaning as Applied to Trade Dress
[3] ‘Look-For’ Advertising
[4] Defendant’s Intent and Copying of Trade Dress
§ 4.06Functionality
[1] Aesthetic Functionality
§ 4.07Registration of Trade Dress
§ 4.08Sample Complaint for Trade Dress Infringement

Chapter 5
Right of Publicity

§ 5.01The Right of Publicity: A Developing Intellectual Property Right
§ 5.02Right of Publicity: Development and Overview
§ 5.03Elements of a Right Of Publicity Claim
[1] Identity
[2] Commercial Nature
[3] Standing to Sue for Living and Deceased Individuals
[4] Foreign Right of Publicity Laws
[5] Lanham Act
[6] Domain Names
§ 5.04Defenses and Exclusions from the Scope of Right of Publicity Law: Copyright Preemption, First Amendment Protection, and the First Sale Doctrine
[1] Copyright Preemption
[2] Freedom of Expression
[3] The First Sale Doctrine
[4] Statute of Limitations
[5] Single Publication Rule
[6] Abandonment
§ 5.05Remedies
[1] Injunctions
[2] Monetary Relief
[3] Attorneys’ Fees and Costs
§ 5.06Choice of Law Considerations
[1] Overview
[2] Consequences of State Law Disparities
§ 5.07Right Of Publicity, the Internet, and Games
[1] Challenges of New Technology
[2] Social Media, Virtual Words, and Games
[3] Secondary Liability
§ 5.08Practical Tips for Avoiding Right of Publicity Pitfalls
[1] Clearance Investigation and Analysis
[2] Obtaining Consent For Use of Identities
[3] Scope of Consent
[4] Verification Systems
§ 5.09Conclusion

Trademark Registration Strategies

§ 6.01Federal Registrations
[1] Introduction
[2] Selection and Clearance of Marks
[3] Applying to Register in the USPTO
[4] Responding to USPTO Objections
§ 6.02Trademark Trial and Appeal Board Proceedings
[1] Introduction to Opposition and Cancellation Proceedings
[2] Standing Requirement to Bring a TTAB Proceeding
[3] Discovery and Trial Practice Before the TTAB
[4] Other TTAB Proceedings
[5] Relief from TTAB Proceedings or a Director’s Decision
[6] Post-Registration Considerations
[7] Trademark Policing
[8] State-Based Registrations
§ 6.03International Considerations
[1] Introduction
[2] Trademark Treaties and Registration Options
§ 6.04Conclusion
§ 6.05Sample Notice of Opposition
§ 6.06Sample Notice of Opposition (Alternate)

Table of Cases

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