ILNews

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

Back to TopCommentsE-mailPrintBookmark and Share

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….

 

 

ADVERTISEMENT

Post a comment to this story

COMMENTS POLICY
We reserve the right to remove any post that we feel is obscene, profane, vulgar, racist, sexually explicit, abusive, or hateful.
 
You are legally responsible for what you post and your anonymity is not guaranteed.
 
Posts that insult, defame, threaten, harass or abuse other readers or people mentioned in Indiana Lawyer editorial content are also subject to removal. Please respect the privacy of individuals and refrain from posting personal information.
 
No solicitations, spamming or advertisements are allowed. Readers may post links to other informational websites that are relevant to the topic at hand, but please do not link to objectionable material.
 
We may remove messages that are unrelated to the topic, encourage illegal activity, use all capital letters or are unreadable.
 

Messages that are flagged by readers as objectionable will be reviewed and may or may not be removed. Please do not flag a post simply because you disagree with it.

Sponsored by
ADVERTISEMENT
Subscribe to Indiana Lawyer
  1. Don't we have bigger issues to concern ourselves with?

  2. Anyone who takes the time to study disciplinary and bar admission cases in Indiana ... much of which is, as a matter of course and by intent, off the record, would have a very difficult time drawing lines that did not take into account things which are not supposed to matter, such as affiliations, associations, associates and the like. Justice Hoosier style is a far departure than what issues in most other parts of North America. (More like Central America, in fact.) See, e.g., http://www.theindianalawyer.com/indiana-attorney-illegally-practicing-in-florida-suspended-for-18-months/PARAMS/article/42200 When while the Indiana court system end the cruel practice of killing prophets of due process and those advocating for blind justice?

  3. Wouldn't this call for an investigation of Government corruption? Chief Justice Loretta Rush, wrote that the case warranted the high court’s review because the method the Indiana Court of Appeals used to reach its decision was “a significant departure from the law.” Specifically, David wrote that the appellate panel ruled after reweighing of the evidence, which is NOT permissible at the appellate level. **But yet, they look the other way while an innocent child was taken by a loving mother who did nothing wrong"

  4. Different rules for different folks....

  5. I would strongly suggest anyone seeking mediation check the experience of the mediator. There are retired judges who decide to become mediators. Their training and experience is in making rulings which is not the point of mediation.

ADVERTISEMENT