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School of Law | PILT Symposium Examines Changes to Trademark Law

PILT Symposium Examines Changes to Trademark Law

By Michelle O'Donnell, 3L

During a talk at UDSL earlier this fall, Louisville Law Professor John Cross argued that the United States needs to make major changes to its predominant trademark law, the Lanham Act. Speaking as part of the Scholarly Symposia Series on Current Issues in Intellectual Property Law, Cross suggested that the nearly seven-decade old Lanham Act either be entirely replaced or extensively overhauled.

A new trademark law, he said, could "clear up ambiguities, fix some of the difficult interpretations [associated with the law], and define what values are served by trademark law."

Cross's talk, "Branding in a World of Global Marketing: Has the Lanham Act Kept Pace?," was sponsored by the School of Law's Intellectual Property Law Society and the Program in Law and Technology and took place September 28.

Cross is the Grosscurth Professor of Intellectual Property Law at the University of Louisville School of Law. He joined Louisville in 1987 after several years in private practice in Minneapolis. He concentrates both his teaching and his research on intellectual property law, especially the intersection between competition law and intellectual property rights. He has written five books and approximately 35 law review articles. In 2006, he received the degree of Doctor of Laws H.C. from the University of Turku in Finland in recognition of his significant contributions to legal scholarship. He has also received two Fulbright awards, in Finland in 1995 and in Ireland in 2000. He received his law degree from the University of Illinois and his undergraduate degree from Bradley University.

During his talk at UDSL, Cross said it's time to revisit the Lanham Act, which, he noted, courts have expanded since it was originally enacted after World War II. When it was first approved, Cross said, the Lanham Act had two perceived roles: protecting consumers and protecting owners from "appropriation by pirates and cheats." However, since then, Cross said, the act has expanded in scope to allow "the trademark owner to protect his reputation even absent appropriation by another" and to extend the act's scope to non-reputational concerns.

If the Lanham Act were to be replaced, Cross proposed changes be made in three general areas: structure, scope and substance. For instance, he proposed structural changes such as eliminating the "use" requirement and switching to a "pure" registration system, and "letting go of state law" and federalizing trademarks.

In terms of scope, Cross proposed rethinking the inclusion of trade dress protection under trademark laws; refining the law to "limit some of the more egregious uses" of dilution protection by perhaps reinstituting the requirement of showing harm; reevaluating other claims that extend the traditional scope of trademark, such as publicity rights, reverse passing off, trademark disparagement and secondary liability; and separating false advertising law from trademark law.

Cross also suggested that the substance of the Lanham Act should be changed to address a number of interpretive issues.


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