I have a new article appearing at Law.com:

Trademark Enforcement Goes Global: New Options for IP Attorneys, December 16, 2004

All students of trademark law are aware that the Supreme Court in Mosley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003), interpreted the Federal Trademark Dilution Act to require "actual dilution" as an essential element of a federal dilution claim. 

But how do you prove actual dilution?

The Supreme Court's enigmatic answer:

"direct evidence of dilution such as surveys will not be necessary if actual dilution can reliably be proved through circumstantial evidence--the obvious case is one where the junior and senior marks are identical."

The Second Circuit has now joined a number of district courts in holding that ...   more »

Salton, Inc. v. George Foreman Foods, Inc., Case No. D2004-0777 (WIPO Dec. 3, 2004), demonstrates the difficulty of fighting contract disputes in the wrong forum.

Denying the Complainant's challenge to the registration and use of the domain name www.georgeforeman.com by the licensee of the name for food products, the Panel states:

Complainant acknowledged that Respondent had obtained a license from George Foreman granting Respondent the right to use the <georgeforeman.com> domain name. Indeed, Complainant attached a copy of that license agreement to its own Complaint. The license agreement grants to Respondent the right to use, among other things, “GeorgeForeman.com and all ...   more »

Keystone Publishing Inc., alleging common law trademark rights in UtahWeddings.Com, sought transfer of the domain name www.utahwedding.com owned by a competitor for wedding services in the Salt Lake area.

Although the Complainant's name had been in use since 2001, the Panel found that it lacked common law rights, stating:

In selecting the quintessentially descriptive name UtahWeddings.com for its wedding business in the State of Utah, the Complainant apparently was more interested in attracting Internet traffic than in coming up with a distinctive name. Thus, while the Complainant has a descriptive mark that attracts a large volume of casual search engine ...   more »

The Supreme Court's decison by Justice Souter was issued today in the fair use dispute KP Permanent Mark-Up, Inc. v. Lasting Impression I, Inc.

Justice Souter writes:

Well-known actor Robert Downey Jr. recovered the domain name www.robertdowneyjr.com used to redirect Internet user to clubpink.com, a site with pornographic content.

The decision, Robert Downey Jr. v. Mercedita Kyamko, WIPO D2004-0895 (Dec. 2. 2004), by Panelist John Swinson, based relief on Downey's common law rights in his name, stating:

Famous people using their name in trade and commerce can have a common law trade mark in their public name. See Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Van Morrison and Exile Productions Limited v. Unofficial Club de Van Morrison, WIPO Case No. D2002-0417 and Nicole Kidman ...   more »