ILNews

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

Back to TopCommentsE-mailPrint

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

facebook - twitter on Facebook & Twitter

Indiana State Bar Association

Indianapolis Bar Association

Evansville Bar Association

Allen County Bar Association

Indiana Lawyer on Facebook

facebook
ADVERTISEMENT
Subscribe to Indiana Lawyer
  1. Frankly, it is tragic that you are even considering going to an expensive, unaccredited "law school." It is extremely difficult to get a job with a degree from a real school. If you are going to make the investment of time, money, and tears into law school, it should not be to a place that won't actually enable you to practice law when you graduate.

  2. As a lawyer who grew up in Fort Wayne (but went to a real law school), it is not that hard to find a mentor in the legal community without your school's assistance. One does not need to pay tens of thousands of dollars to go to an unaccredited legal diploma mill to get a mentor. Having a mentor means precisely nothing if you cannot get a job upon graduation, and considering that the legal job market is utterly terrible, these students from Indiana Tech are going to be adrift after graduation.

  3. 700,000 to 800,000 Americans are arrested for marijuana possession each year in the US. Do we need a new justice center if we decriminalize marijuana by having the City Council enact a $100 fine for marijuana possession and have the money go towards road repair?

  4. I am sorry to hear this.

  5. I tried a case in Judge Barker's court many years ago and I recall it vividly as a highlight of my career. I don't get in federal court very often but found myself back there again last Summer. We had both aged a bit but I must say she was just as I had remembered her. Authoritative, organized and yes, human ...with a good sense of humor. I also appreciated that even though we were dealing with difficult criminal cases, she treated my clients with dignity and understanding. My clients certainly respected her. Thanks for this nice article. Congratulations to Judge Barker for reaching another milestone in a remarkable career.

ADVERTISEMENT