Had to pass Trademark Counterfeiting Act
o
It provides escalating criminal penalties for multiple offenders.
o
A second offender, if an individual, can be fined up to $5 million,
imprisoned for up to 20 years, or both. Corporations may be fined up to
$15 million.
Anti-Dilution Statutes
-
These are extensions of the “likelihood of confusion”

o
It prohibits uses of some marks even where the goods or services are not
similar and there is no likelihood of confusion
o
The Federal Trademark Dilution Act (FTDA) protects “famous”
trademarks only
A mark is only famous if it is very widely known by the general
public, no just within a local geographic area or niche market
The defendant has to prove a likelihood of blurring or
tarnishment
Blurring:
diminishing (diluting) a mark’s distinctiveness
Tarnishment:
undermining the positive image of the mark if
it is no longer restricted tot the quality of products a
consumer would normally expect from a brand
-
UNIVERSITY OF TEXAS V. KST ELECTRIC
-
KST electric used a modified version of the discontinued longhorn logo for
their store and UT asked them to cease using the logo, KST refused and UT
sued. KST filed for summary judgment
-
Trademark infringement and unfair competition are cause for action the
element to be looked at is the “likelihood of confusion”: are customers likely
to believe their products are affiliated to UT in some way
o
Look at:
The mark infringed
Similarity between the marks
Similarity of the products and services
Identity of retail outlets and purchasers
Identity of the advertising media used
Defendants intent: did not copy the LSL in bad faith
Evidence of actual confusion
o
UT bears the overall burden of proof on the famousness issue, to avoid
summary judgment they must demonstrate the fact that LSL is
“famous”
UT's mark is famous only in a niche market and therefore
not protectable under the TDRA. Dismissed.
Anti-Cybersquatting Consumer Protection Act
-
Cyber squatter:
someone who registers an Internet domain name (1)
o
That is the same as or confusingly similar to someone else's
protected trademark, (2)
o
Where there is a bad faith intent to commercially exploit the
trademark, and (3) t
o
He likely effect is to either cause confusion, or, if the mark is
famous, to cause dilution
-
ACPA: determines who is one through eight questions to determine if
intent was good or bad

International Trademark Concerns
-
Madrid Agreement: allow for one centralized filing of a trademark
application in a member country and payment of a single filing fee
o
Protocol is the application is forwarded to the other member
countries designated by the applicant
TRADE SECRETS
-
Trade secret:
any type of knowledge that is not generally known and isn’t
readily available through legal means
o
Trade secret and patent law can be used to protect knowledge, the
definition of what kind of knowledge can be protected is much
broader in trade secret law
-
To bring a trade secret misappropriation case, the plaintiff must prove:
1.


You've reached the end of your free preview.
Want to read all 11 pages?
- Spring '08
- BREDESON