Famous Marks Research Articles

Trademark Protection Versus Parodic Use in Commerce: A Comparative Analysis of the US Approach Post Jack Daniel’s Properties v. VIP Products and the German Likelihood of Confusion Analysis

Abstract In June 2023, the US Supreme Court delivered its highly anticipated verdict in Jack Daniel’s Properties v. VIP Products. The case involves a parodic use of the famous Jack Daniel’s Tennessee whiskey trade dress, name, logo and appearance by VIP Products, which sells dog toys called ‘Silly Squeakers.’ The disputed toy, named ‘Bad Spaniels,’ resembles the whiskey bottle in shape and design but with humorous alterations. Jack Daniel’s argued that this use could confuse consumers and harm the company’s reputation. VIP Products, on the other hand, claimed it was exercising its First Amendment right to free speech through parody. Jack Daniel’s requested VIP Products to stop advertising and selling the toy. The central issue is the balance between brand protection under US Trademark Law and the right to a parodic use in a commercial context when a mark is used as a mark with a source-identifying purpose. Additionally, the impact of consumer surveys for determining the likelihood of confusion in case of an infringement action is emphasized. Overall, the case raises critical questions about trademark protection and freedom of speech, with potential implications for future parodic uses of famous marks in commercial contexts. The distinction between actions for infringement and dilution by tarnishment lies in their respective purposes. Dilution actions aim to safeguard the reputation of a famous mark’s owner, while infringement actions seek to prevent confusion among consumers. These fundamental principles hold true in both US and German trademark law. The forthcoming analysis will delve into the implications and consequences of the US Supreme Court’s ruling, comparing it with pertinent German case law concerning freedom of speech and artistic expression. Particular focus will be given to the potential authorization of parodic use of a mark resembling another’s trademark for commercial purposes. Notably, a relevant case involving canines, referred to as the ‘Leaping Poodle,’ will be central to this contemplation.

KETENTUAN HUKUM MEREK WELLKNOWN MARK DALAM PEMBERLIAN MELALUI ONLINE

Information technology related to online business transactions is growing very rapidly. Business actors and consumers, both in urban centers and in areas, use information technology to shop or transact, including transactions for goods labeled with Well Known Marks (Famous Brands) that are protected by Trademark Law, which are traded through online system facilities. In online transactions related to well-known brand products, there are still violations that are detrimental to the brand owner. In connection with this, it is important to conduct socialization to the community, including teenagers who are also very potential consumers of branded goods that are traded through the internet. Nationally, Well Known Marks in Indonesia are regulated based on Article 4 and Article 6 of Law no. 20 of 2016 concerning Brands. Meanwhile at the international level the provisions governing Famous Marks are through the provisions of Article 6bis of the Paris Convention and Article 16 (2) of the TRIPs Agreement. Online business transactions in Indonesia are regulated by Law no. 11 of 2008 concerning Information and Electronic Transactions. In connection with the rapid development of transaction practices for well-known branded goods through the online system, for the sake of legal protection for both well-known brand owners and consumers, especially teenagers who tend to be adaptive to changes in new trends, it is important to understand the legal provisions, both trademark law and trademark law. information technology law as regulated in UU No. 20 of 2016 and the U.U. No. 11 of 2008 and PP No. 71 Year 2019

Trademark Fame and Corpus Linguistics

Trademark law recognizes that the same word can mean different things in different commercial contexts. Legal protection might extend to two or more owners who use the same symbol (like Delta) to indicate different sources of disparate goods or services, such as airlines and faucets. Generally, only those uses that threaten to confuse consumers—the use of similar symbols on identical or related goods—are subject to legal sanction.
 But the law extends special protection to famous trademarks, not only against confusing use, but also against dilution: non-confusing use that blurs or tarnishes the distinctiveness of the famous mark. The result of protection against blurring is that the law treats the famous mark as if the sole proper use of the term in the commercial context is to designate goods and services from the famous mark’s owner.
 Protection against dilution extends only to famous marks, but courts and scholars apply differing standards for assessing fame. Nonetheless, the trend over time has been to treat fame as a threshold requiring both sufficient renown—the famous mark must be a household name—and relatively singular use.
 This article argues that corpus linguistic analysis can provide evidence of whether a mark is sufficiently prominent and singular to qualify for anti-dilution protection. Corpus linguistics detects language patterns and meaning from analyzing actual language use. This article draws data primarily from two large, publicly accessible databases (corpora) to investigate whether litigated trademarks are both prominent and unique. Courts and parties can consider frequency evidence to establish or refute prominence, and contextual evidence like concordance and collocation to establish relative singularity.
 Corpus evidence has some advantages over standard methods of assessing fame. Corpus evidence is cheaper to generate than survey evidence but may be equally probative. Corpus analysis can help right-size dilution litigation: A litigant could estimate the prominence and singularity of an allegedly famous mark using corpus evidence prior to discovery and better predict whether the mark should qualify for anti-dilution protection. Judges should be able to rely on the results of corpus analysis with reasonable confidence. Additionally, corpus evidence can show use of a mark over time, providing courts with tools to assess when a mark first became famous, a question that a survey generated for litigation cannot readily answer.

Perlindungan Hukum Merek Terkenal Terkait dengan Persaingan Usaha Tidak Sehat

With the current development, there are many well-known brands circulating in the market all over Indonesia, especially the ones that are deliberately counterfeited by business actors violating existing regulations for profit. The circulation of a well-known brand that is widely fabricated has spread to all levels of society. With the existence of various well-known brands, there will be a negative impact, such as the emergence of brand violations which is a form of unfair business competition. This study examines the regulation towards the well-known brands in Indonesia and the legal protection for well-known brands in relation to unfair business competition in Indonesia. To achieve these goals, this study was conducted using normative legal research method. Initially, the regulation of the famous brands is regulated in the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). At this time, Indonesia has made its own regulations regarding Famous Marks and most recently the Regulations regarding famous marks are regulated in Law Number 20 of 2016 concerning Trademarks and Geographical Indications. Preventive legal protection aims to provide a legal umbrella for entrepreneurs who have well-known brands to anticipate violations. Repressive legal protection provides the final legal umbrella for imposing sanctions on business actors who deliberately copy the famous brands that have been registered in Indonesia. Civil and criminal remedies are given when a dispute has occurred or a violation has been committed. The government should conduct socialization regarding the forms of violations. Entrepreneurs should be more creative and advertise their own brands more so that people can get clear information about well-known brands, both genuine and the counterfeited.

Empirical Investigation of Sport Trademark Dilution Using Contingent Valuation Method

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.

A Study on the Judgment Criteria for the Trademark Dilution of Famous Marks

A Study on the Judgment Criteria for the Trademark Dilution of Famous Marks

Fame, Parody, and Policing in Trademark Law

Trademark owners regularly overreach. They often threaten or sue people they have no business suing, including satirists, parodists, non-commercial users, and gripe sites. When they do, they often justify their aggressive legal conduct by pointing to the need to protect their trademarks by policing infringement. Courts have in fact indicated at various points that policing is, if not strictly necessary, at least a way to strengthen a mark. But courts have never held that efforts to block speech-related uses are necessary or even helpful in obtaining a strong mark. Several scholars have accordingly argued that overzealous policing is unnecessary, that it has harmful effects, and that we ought to punish it. But trademark owners continue to do it, in part because it is largely (though not completely) costless and because if there is even a chance a failure to police will cost you your trademark you won’t want to take the chance. So trademark law currently not only doesn’t prevent overreaching; it affirmatively encourages it. In this article, I suggest a way that we can align trademark owner enforcement incentives with good public policy. The presence of unauthorized parodies, satires, and complaint sites involving a mark should be evidence of the fame of the mark, and perhaps even a requirement for status as a famous mark. Taking this approach would be consistent with what we know about how society interacts with trademarks. Famous marks become part of a social conversation in a way that ordinary marks don’t. My approach has empirical support: the best-known brands draw more parodies and criticism sites than non-famous marks, and those parodies don’t interfere with the fame of the mark. And it would give trademark owners an affirmative reason to leave critics, satirists, and parodists alone.

Licensing Commercial Value: From Copyright to Trademarks and Back

Copyright and trademarks often overlap, particularly in visual characters. The same figure may qualify as a pictorial, graphic or sculptural work on the one hand, and as a registered (or at least used) trademark on the other. The two rights, though resting on distinct foundations, tend to be licensed together. Trademarks symbolize the goodwill of the producer, and are protected insofar as copying that symbol is likely to confuse consumers as to the source or approval of the goods or services in connection with which the mark is used. For famous marks, the dilution action grants a right against uses of the mark that are likely to “blur” or “tarnish” the distinctiveness of the mark, even in the absence of confusion. In either event, the object of protection is the producer’s goodwill (in theory, as a proxy for consumer source identification), not (again, in theory) the mark per se. Copyright, by contrast, is a right “in gross” allowing its owner to prohibit the copying of the work without regard to source confusion. Copyright protects the work of authorship itself, not the identification of that work with a single, if anonymous, source of origin. Pursuant to the Constitutional grant to Congress of power to secure authors’ exclusive rights “for limited times,” copyright lasts for a term of years; trademarks are protected for so long as they continue to represent a single producer’s goodwill. Subject to that prerequisite, registered trademarks maybe renewed indefinitely. The durational disparity prompts the question whether a trademark owner may effectively perpetuate the life of the copyright in, and thus control the licensing of, a visual character by controlling the use of the trademark in the same image(s). The difference in the rights’ purpose gives rise to another problem: if the trademark owner is not also the copyright owner, for example, because rights granted may have reverted to the artist, can the holder of one kind of right exercise that right, for example, through licensing, without infringing the rights of the holder of the other kind of right? While those questions address trademarks and copyright as potential antagonists where exercise of trademark rights threatens to frustrate copyright policies (and perhaps vice versa), there is another side of the coin. To an increasing extent, we are seeing trademark symbols become characters and acquire value not only as source-indicators, but also as artistic (or audiovisual) works. The strategy seems the logical endpoint of the progression, since at least the 1970s, which recognizes that the thing of value is the trademark, independently of any particular goods or services with which the mark has been associated. How does turning the trademark into a copyright add to the value of the object of the license?This Chapter will first consider the exercise of trademark rights in copyrighted works, which either have fallen into the public domain or for which the trademark owner no longer owns the copyright. It also will consider adoption as a trademark of a public domain character in which the trademark claimant never held a copyright interest or for which it was a licensee for uses ancillary to the principal entertainment-related uses of the character. Finally, the Chapter will turn to the exploitation of trademarks as works of authorship.

Trade marks with a reputation and famous marks: differences in approach between the European Union, Poland and the United States in relation to the principle of speciality

The protection of a trade mark with a reputation in the European Union law and of a famous trade mark in the US federal law is broader than that granted to ordinary trade marks. The scope of protection of marks with a reputation and famous mark indicates that the principle of speciality is enforced in the federal US law to a larger extent than in the EU law and, in turn, in some Member States of the European Union, in particular Poland. Arguably, this difference results from the differences between the definition of a trade mark with a reputation, used in the European Union, and a famous mark, used the United States. The main difference in US law is that the fame of a mark is defined globally with respect to the general consuming public of the United States, whereas the Court of Justice has indicated that in the European Union whether a trade mark has a reputation is assessed by reference to a significant part of the public concerned with the products or services covered by the specification. Thus, in the EU law, the reputation of a trade mark may be perceived with respect to a narrow group of the public, for example specialists in a given field.

Louis Vuitton does not laugh at its bags’ parody

This contribution discusses the case of Louis Vuitton Malletier, SA v My Other Bag, Inc (14-CV-3419 (JMF), 6 January 2016). The dispute involved the reference to and the use of famous marks by a third party. In a summary judgment the US District Court for the Southern District of New York dismissed – based on the parody exception – an action for trade mark dilution and infringement as well as copyright infringement that Louis Vuitton (LV) had brought against My Other Bag (MOB). The comment reflects about the boundaries of a legitimate parody in the context of a brand’s reputation in the fashion domain.

Dilution at the Patent and Trademark Office

This Article undertakes the first systematic investigation of trademark dilution in registration practice before the US Patent and Trademark Office (PTO). The Article consists of three distinct descriptive empirical analyses. In the first, I present a new hand-coded dataset of all 453 Trademark Trial and Appeal Board (TTAB) dispositions of dilution claims through June 30, 2014, and report that dilution has been necessary to the PTO’s refusal of exactly three registrations in over a decade. In the second part, I apply algorithmic coding of the recently released PTO Casefiles Dataset to demonstrate that concurrent registration of identical marks to different registrants in different product classes is a long-standing feature of the registration system that does not appear to have changed with the advent of anti-dilution rights. In the third part, I examine third-party applications to register famous marks, and find some suggestion that anti-dilution rights coincide with a modest decrease in the success of such applications — more likely due to an increased rate of abandonment by applicants than to increased opposition by prior registrants. But this change, even if it is not illusory, would correspond to at most an additional 5 to 30 rejected applications per year, against an annual volume of as many as 200,000 applications for word marks in general. While additional research may help buttress the case that anti-dilution rights have had a modest effect on registration for a very narrow class of marks, I conclude that their primary effect appears to be imposing increased costs on those who have business with the trademark system, with little if any apparent benefit to justify those costs.

Dilution of Trademarks: An Introduction

‘Trademark Dilution Doctrine’ is basically a trademark law concept which permits the owner of a famous or a well known trademark to refrain others from using that mark in a way which would harm its reputation. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection with, those of the trademark owner. The objective of dilution is to protect strong and well-known trademarks from losing their uniqueness in the minds of public with a particular product. Dilution is a basis of trademark infringement which only applies to famous marks. For instance, when we speak of Benz we associate it with the car alone but when somebody else uses a similar mark like Benz for a garments then the mark will remind two products in the minds of the consumer. Dilution regards trademark not only as a commercial signature but also as a ‘silent salesman’ which directly comes in contact with the consumers.

Magical Thinking in Trademark Law

People in all societies have a tendency toward magical thinking. This human inclination is extensively exploited by modern advertising, which routinely suggests that consuming goods will make us successful, happy, and fulfilled. In this article, I suggest that such advertising creates a system of beliefs resembling a totemic religion. In this religion, brands perform the role of sacred objects. Trademark law initially aims at preventing consumer confusion. Yet, today, famous trademarks are extensively protected against nonconfusing associations. I argue in this article that this broad protection is based on magical thinking. Pointing out the parallels between the laws of magic and trademark doctrines, such as the doctrine of dilution, I suggest that famous marks are legally treated as magical, sacred objects. This legal approach amounts to endorsing the commercial religion of brands.

Liability for Trademark Infringment for Internet Service Providers

At the wake of the millennium and the rise of the internet, legislative action was taken to shelter internet service providers (ISPs) from various forms of legal action. In the turmoil of chartering new and unregulated territory, such a safe harbor was deemed necessary to protect up-starting businesses. Today, these internet actors e.g. Google, Amazon and eBay have grown strong and powerful. Thus, intellectual property holders have started to challenge this privilege in court. Increasingly, owners of famous marks seek liability and damages for direct and indirect trademark infringement in courts around the globe. I focus on liability for ISPs, when a third party sells counterfeit merchandise on the service provider’s site. Courts have reacted differently. Three theoretical approaches have emerged. One, e.g. some courts in France, imposes full liability for willful trademark infringement, if the sale of counterfeit goods is shown. Another, e.g. the German Federal Supreme Court, approaches the question as one of interference with property rights. If ISPs knowingly allow continued sale of counterfeit merchandise they can be found liable for damages. Yet another, e.g. in the United States, approaches the question from the perspective of what the ISP can reasonably be required to do in order to prevent the sale of counterfeit goods on their site. This article compares the approaches above and considers what possible other considerations are relevant in determining ISP liability. It argues that trademark law today, is ill-equipped to handle questions of secondary liability or contributory infringement and concludes that the safe harbor for ISPs, as tailored in the European E-Commerce Directive, should be given a broad reading and the prohibition against imposing a general duty to monitor or actively seek facts in Article 15 remain absolute until the defects are remedied. In response to trademark owners’ legitimate concerns, it further argues that trademark owners should pool their resources, akin to that of Copyright Collective Societies, and form an agency, which, by cooperating with – instead of forcing – ISPs, could more efficiently and legitimately weed out infringing uses on the internet.

One Trademark Per Source

Trademark law is unjustifiably permissive because it protects more than one mark for each supplier of goods and services. Suppliers need some exclusive symbol to indicate that they are the only source of goods and services carrying that mark. Trademarks are, however, more than source-indicators. They are marketing devices. Suppliers use trademarks to attract consumers’ attention to their products by suggesting unique characteristics and qualities, by surrounding the products with an aura of superiority or desirability, or simply by being clever or appealing. No one supposes that marketing devices, as distinguished from source indicators, should receive any intellectual property law protection whatsoever. Multiple marks are not necessary to indicate source. They may help suppliers create market niches for their products by giving their products names that make them appear to be (accurately or not) unique types of products. Everyone familiar with trademark law understands that intellectual property protection does not extend to generic or merely descriptive terms - those labeling types of goods or describing goods. It is not as obvious that even fanciful and arbitrary trademarks are simultaneously both source indicators and indicators of types and characteristics of products that have acquired descriptiveness. This article proposes and justifies a radical restructuring of trademark law limiting trademark protection to one mark per source, a signal rule. It argues that the proper scope of trademark law requires emphasizing source-indicating function of trademarks and liberating the product-describing function. It suggests a program for minimizing the dislocation costs to consumers and suppliers that result from removing trademark protection from many famous marks. Protection of marketing devices makes it more difficult for competitors to attract consumers and for consumers to learn about alternative suppliers. Limiting suppliers to a single mark is sufficient for source-indicating purposes, enables consumers to know what products compete to satisfy their needs, and makes it easier for smaller competitors to supply them, facilitating competition. The signal rule creates a superior balance between exclusive trademark rights and public access to means of expression.

Protection and Enforcement of Well-Known Mark Rights in China: History, Theory, and Future

This paper examines recent developments in the enforcement of trademark rights in Chinese courts with a focus on famous marks. The authors discuss recent case developments and analyze them in light of the goals of trademark law.

Foreign fame is not enough to confer US trade mark rights

On appeal from the Southern District of New York, the Second Circuit affirmed the award of summary judgment against ITC's trade mark infringement, unfair competition, and false advertising claims under state and federal law, holding that the famous marks doctrine was not incorporated by Congress into the Lanham Act and thus not a federally protected right.

The Protection of Famous Marks under the Unfair Competition Law of Korea

The Protection of Famous Marks under the Unfair Competition Law of Korea

Dilution in the United States and European Union (and beyond) Part II: testing for blurring

Legal context. Dilution by blurring has often been accused of being a vague concept which is difficult to understand and which has no sensible limits. Mindful of the need for certainty in this area, the US Senate and House of Representatives have passed the Trademark Dilution Revision Act 2006. This Bill (which is discussed more generally in Part I) includes a definition of blurring and a six-point test for blurring. Meanwhile, the European Union has been steadily building up jurisprudence in this area. Key points. This part of the article focuses on dilution by blurring, considering how blurring is defined, how it is tested for and whether US and EU blurring protection is in compliance with the jurisdictions’ international obligations in this area (discussed in Part I). In particular, it considers the new definition of, and test for, blurring under the US Trademark Dilution Revision Act 2006, and compares the position under that Bill to the situation in the EU. Practical significance. Assuming that it enters into law, the Revision Act 2006 has serious implications for the proprietors of famous marks doing business in the US. This article will inform the owners of such marks what protection they will benefit from and how this will differ from the protection they will get in the EU.

Famous Trademarks and the Rational Basis for Protecting Irrational Beliefs

Contrary to the traditional view, this article argues that mega-brands are neither economic evils nor limited to imparting information about the products they adorn. It also rejects the view that famous marks persuade “snobs” to “irrationally” pay more for the same physical product they could have purchased for less. Rather, it adopts the view that in purchasing a branded good, the consumer is actually purchasing a bundle of three products: a physical product, information about the physical product, and an intangible product, such as fame, prestige, peace of mind, or a pleasant feeling. This article explores the demand for the intangible product and its impact on pricing, welfare, and the strategies of consumers and producers. It concludes that under certain conditions one may witness the anomaly of an increase in both price and output. Further, contrary to conspicuous goods theory, this analysis shows that snobbism may occur in the traditional downward-sloping demand curves and is not limited to goods with conspicuous properties. A direct implication of this analysis is that mega-brands neither confer a monopoly nor foster price discrimination. On the contrary, they enhance competition in both the physical and intangible spheres. Further, the analysis provides a rational basis for anti-dilution law. Anti-dilution law - widely considered to protect producers and injure consumers - actually inures to the benefit of both groups. Finally, this analysis shows that even snobs are rational, and that there are sound economic justifications for the law’s unique protection of famous marks.