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December 2016

Using Trademarks in Expressive Works

in this issue


Lanham Act, Section 32. §1114 REMEDIES; INFRINGEMENT; INNOCENT INFRINGEMENT BY PRINTERS AND PUBLISHERS (1) Any person who shall, without the consent of the registrant— (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services…

Defenses to Trademark Dilution Claims

By Donald R. Gordon and Louis Petrich A further claim that can arise from the unlicensed use of trademarks in a creative work is a claim for trademark dilution. The law of dilution was first proposed in an article in the Harvard Law Review in 1937 and, for most of the ensuing decades, the dilution…

First Amendment Balancing: The Rogers Test

By Lisa J. Kohn and Andrew J. Thomas In evaluating Lanham Act claims that arise from the alleged use of a plaintiff’s trademark in an expressive work, a number of courts have found that the traditional likelihood-of-confusion test “fails to account for the full weight of the public’s interest in free expression.” Mattel, Inc. v….

Trademark Law’s Fair Use Doctrines

By Rollin A. Ransom A. The Nominative Fair Use Defense 1. Origin and Elements of the Defense Trademarks often appear in expressive works for the purpose of communicating some idea about the product associated with the trademark. In such cases, the creator of the expressive work can often accomplish this goal only by express reference…

Dismissal at the Pleading Stage Following Twombly/Iqbal

By Andrew G. Sullivan, Lisa J. Kohn, and Andrew J. Thomas Historically, trademark infringement claims have been hard to defeat at the pleading stage, primarily because resolution of such claims is seen as hinging on a fact-intensive inquiry into whether the defendant’s use of the disputed mark has created a likelihood of consumer confusion. While…