Intro to IP Class of November 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