Volume 17, Issue 1 Articles

The End of Arbitrary Findings of Secondary Meaning: A Call for the Expansion of Trademark Status of Literary Character

By J.C. Sander

Courts do not yet have a firm grasp of what a trademark for a literary character would mean. The current rules are intellectually dishonest and do not make sense. Literary characters should be eligible to serve as a trademark as soon as a book is published, without the need to “acquire” secondary meaning. The number of literary characters protected by trademark law would be initially increased following the adoption of this principle, with the field soon tapering off. The real effect of an immediate trademark status for literary characters would be to extend protections to valuable characters from their inception and allow courts to focus on the correct application of trademark law.

View PDF – Sander_The End of Arbitrary Findings of Secondary Meaning

Major Change, New Chapter: How Inter Partes Review and Post Grant Review Proceedings Created by the America Invents Act Will Shape Litigation Strategies

By William Hannah

What is so important about the changes to the reexamination proceedings in the American Invents Act? It’s about cost, time, and winning the high stakes game of patent litigation. Clients’ goals will remain the same but the law is changing. A new path to the clients’  desires will emerge. For a patent litigator, mastering the new America Invents Act is the key to staying on that path, while providing the best results for the client.

Substantial changes to the patent system’s reexamination proceedings include replacing the Inter Partes Reexamination with Inter Partes Review, and creating an entirely new proceeding called Post Grant Review. Being unaware of these changes could cost a patent litigator’s client a substantial amount of money, time, and the upper hand in winning the high stakes litigation. In some cases, it could even cost a client the validity of their patent claims.

View PDF – Hannah_Major Change, New Chapter

Abandoning Consumer Confusion in Keyword Advertising Trademark Infringement Cases: Proposal for a Modified Dilution Analysis

By Fallon R. Scholl

Keyword advertising on the Internet poses new challenges for courts. To date, there is no uniform method of analyzing whether trademark infringement exists in these cases. Although both U.S. and foreign courts have applied versions of likelihood of confusion tests in this context, all of the decisions fall short of actually protecting what is at stake when trademarks are sold as keywords on the Internet. The damage to trademarks in this context is not necessarily that consumers will confuse one product with another – rather the damage is to the goodwill and value associated with a trademark that another advertiser purchases in order to garner recognition for the advertiser’s own mark. In order to protect the goodwill of trademarks on the Internet, courts must abandon any analysis that calls consumer confusion into question because confusion is nearly impossible to show in these cases and it is not the type of trademark damage at issue. This eliminates both the initial interest confusion doctrine and likelihood of confusion tests. What we are left with is dilution – which was designed precisely to protect the goodwill of trademarks. However in order for dilution to apply in this context, it must be slightly modified and extended.

View PDF – Scholl_Abandoning Consumer Confusion in Keyword Advertising Trademark Infringement Cases

Fourth Amendment Protection for Users’ Information Stored in the Cloud: The Case of Mint.com

By Yenny Teng-Lee

This paper explores whether users’ financial information stored in the cloud by Mint.com (“Mint”) has Fourth Amendment protection against unreasonable search and seizure.

View PDF – TengLee_Fourth Amendment Protection for Users’ Information Stored in the Cloud