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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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  2. Hail to our Constitutional Law Expert in the Executive Office! “What you’re not paying attention to is the fact that I just took an action to change the law,” Obama said.

  3. What is this, the Ind Supreme Court thinking that there is a separation of powers and limited enumerated powers as delegated by a dusty old document? Such eighteen century thinking, so rare and unwanted by the elites in this modern age. Dictate to us, dictate over us, the massess are chanting! George Soros agrees. Time to change with times Ind Supreme Court, says all President Snows. Rule by executive decree is the new black.

  4. I made the same argument before a commission of the Indiana Supreme Court and then to the fedeal district and federal appellate courts. Fell flat. So very glad to read that some judges still beleive that evidentiary foundations matter.

  5. KUDOS to the Indiana Supreme Court for realizing that some bureacracies need to go to the stake. Recall what RWR said: "No government ever voluntarily reduces itself in size. Government programs, once launched, never disappear. Actually, a government bureau is the nearest thing to eternal life we'll ever see on this earth!" NOW ... what next to this rare and inspiring chopping block? Well, the Commission on Gender and Race (but not religion!?!) is way overdue. And some other Board's could be cut with a positive for State and the reputation of the Indiana judiciary.

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