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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. A traditional parade of attorneys? Really Evansville? Y'all need to get out more. When is the traditional parade of notaries? Nurses? Sanitation workers? Pole dancers? I gotta wonder, do throngs of admiring citizens gather to laud these marching servants of the constitution? "Show us your billing records!!!" Hoping some video gets posted. Ours is not a narcissistic profession by any chance, is it? Nah .....

  2. My previous comment not an aside at court. I agree with smith. Good call. Just thought posting here a bit on the if it bleeds it leads side. Most attorneys need to think of last lines of story above.

  3. Hello everyone I'm Gina and I'm here for the exact same thing you are. I have the wonderful joy of waking up every morning to my heart being pulled out and sheer terror of what DCS is going to Throw at me and my family today.Let me start from the !bebeginning.My daughter lost all rights to her 3beautiful children due to Severe mental issues she no longer lives in our state and has cut all ties.DCS led her to belive that once she done signed over her right the babies would be with their family. We have faught screamed begged and anything else we could possibly due I hired a lawyer five grand down the drain.You know all I want is my babies home.I've done everything they have even asked me to do.Now their saying I can't see my grandchildren cause I'M on a prescription for paipain.I have a very rare blood disease it causes cellulitis a form of blood poisoning to stay dormant in my tissues and nervous system it also causes a ,blood clotting disorder.even with the two blood thinners I'm on I still Continue to develop them them also.DCS knows about my illness and still they refuse to let me see my grandchildren. I Love and miss them so much Please can anyone help Us my grandchildren and I they should be worrying about what toy there going to play with but instead there worrying about if there ever coming home again.THANK YOU DCS FOR ALL YOU'VE DONE. ( And if anyone at all has any ideals or knows who can help. Please contact (765)960~5096.only serious callers

  4. He must be a Rethuglican, for if from the other side of the aisle such acts would be merely personal and thus not something that attaches to his professional life. AND ... gotta love this ... oh, and on top of talking dirty on the phone, he also, as an aside, guess we should mention, might be important, not sure, but .... "In addition to these allegations, Keaton was accused of failing to file an appeal after he collected advance payment from a client seeking to challenge a ruling that the client repay benefits because of unreported income." rimshot

  5. I am not a fan of some of the 8.4 discipline we have seen for private conduct-- but this was so egregious and abusive and had so many points of bad conduct relates to the law and the lawyer's status as a lawyer that it is clearly a proper and just disbarment. A truly despicable account of bad acts showing unfit character to practice law. I applaud the outcome.

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