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IU professor helps get pesky scrivener’s error removed from Trademark Act

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One pesky scrivener’s error that altered the protection provided by the Trademark Dilution Revision Act of 2006 has been corrected thanks to the efforts of an Indiana University professor.

Tim Lemper, clinical associate professor of business law in the I.U. Kelley School of Business, wrote two articles about the mistake, advocating that Congress make a correction. These articles not only became the catalyst for the lobbying effort but also provided the new wording that was passed and signed into law on Oct. 5, 2012.

In drafting the 2006 law, Congress intended to provide greater protection for famous trademarks. As part of that law, Congress sought to protect owners of federal trademark registrations from dilution claims based on state law but not federal law.

However because of the drafting error, owners of federal registrations received complete immunity from any type of dilution claim, under state or federal law, even if the registrant was using a mark that diluted the distinctiveness or tarnished the reputation of a famous mark.

Although many others dismissed the error, the I.U. professor believed the errant punctuation could affect commercial use of a famous name. It was clearly a drafting error, Lemper said, and several people in the trademark bar assumed the courts and the Trademark Trial and Appeal Board would not apply the law in a way that was obviously a drafting error.

“But,” Lemper stated, “courts and the Trademark Trial and Appeal Board apply statutes as they are written, not necessarily as they were intended to be written.”

Here is the actual Section 4 (c)(6):
The ownership by a person of a valid registration…shall be a complete bar to an action against that person, with respect to that mark, that –
(A)(i) is brought by another person under the common law or a statute of State; and
(ii) seeks to prevent dilution by blurring or dilution by tarnishment; or
(B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark….

Here is the Lemper redraft that was adopted by Congress:
The ownership by a person of a valid registration…shall be a complete bar to an action against that person, with respect to that mark, that –
(A) is brought by another person under the common law or a statute of a State; and
(B)(i) seeks to prevent dilution by blurring or dilution by tarnishment; or
(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark….

 

 

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  1. You can put your photos anywhere you like... When someone steals it they know it doesn't belong to them. And, a man getting a divorce is automatically not a nice guy...? That's ridiculous. Since when is need of money a conflict of interest? That would mean that no one should have a job unless they are already financially solvent without a job... A photographer is also under no obligation to use a watermark (again, people know when a photo doesn't belong to them) or provide contact information. Hey, he didn't make it easy for me to pay him so I'll just take it! Well heck, might as well walk out of the grocery store with a cart full of food because the lines are too long and you don't find that convenient. "Only in Indiana." Oh, now you're passing judgement on an entire state... What state do you live in? I need to characterize everyone in your state as ignorant and opinionated. And the final bit of ignorance; assuming a photo anyone would want is lucky and then how much does your camera have to cost to make it a good photo, in your obviously relevant opinion?

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