Re: New Work Types Problem (Was: Dead Sea Scrolls, Sweat of Brow Once Again)

Leah Theriault <wheedle[_at_]uclink4.berkeley.edu> wrote:
>
> BTW, does anyone have any thoughts on whether the descriptive use of a
> descriptive, but famous, trademark (I assume secondary meaning here)
> survives the dilution provision of the Lanham Act? Apologies if this is
> inappropriate for this list, but the line between copyright and
> trademark seems to be blurring more and more these days.
>

Do you mean "fair use" of the word itself as a descriptor, or "non-trademark use" of a term to accurately refer to the trademark owner. I think the latter survives, basically because I don't think it can constitute blurring (tarnishment is a tougher case).

Re fair use, it may not survive.

Here's my own particular dilution pecadillo: say Delta Airlines and Delta Dental both claim their mark "Delta" is famous [not an unreasonable claim]. If one is famous, can't they prevent the other from using the mark at all? Is there some sort of "status quo freezing" that occurs at the time the Act was passed? Alternatively, does the fact that two companies could plausibly claim the same word to be famous mean that in fact neither of them is famous?

Mark Lemley
Assistant Professor, University of Texas School of Law Of Counsel, Fish & Richardson, P.C.
mlemley[_at_]mail.law.utexas.edu

Come to the Berkeley conference on UCC Article 2B, April 23-25 1998. Find out how at http://sims.berkeley.edu/BCLT/events/ucc2b/

For information on the Intellectual Property program at UT, see http://www.utexas.edu/law/acadaff/intelprop/

For an updated list of my publications, and how to find them, see http://www.law.utexas.edu/lemley/pubs.htm Received on Mon Mar 02 1998 - 18:56:14 GMT