THIS IS THE HOME PAGE FOR LAW 5694 – TRADEMARK LAW FOR THE FALL 2025 EDITION OF THE COURSE.
The course will meet on Mondays and Wednesdays from 10:30 am to 11:50 am. The class will meet on ZOOM rather than face to face. Class meetings will not be recorded.
- Syllabus and readings (home page)
- Important course information: materials, mechanics, policies, and grading
- Writing assignments and related instructions
- Open Educational Resources (OER) copyright and permissions information
HOW TO READ THE SYLLABUS AND FIND THE READING ASSIGNMENTS
One assignment per class. Except as noted below, each assignment below corresponds tentatively to one class period, though the amount of material to be covered in class, the order of the assignments, and/or the contents of a particular assignment may be changed by prior announcement. Every effort will be made to incorporate new developments in trademark law into the syllabus, where appropriate.
The key cases. Some classes have more cases and pages than others. The key cases are noted with an asterisk (*). If no asterisks appear in a group of cases, then all of the cases are “key” cases.
The reading materials are online. All of the assigned and optional readings for the course are available online, for free. You can read them online. You can download them to your own device(s). You can print them out. You can even combine them and have them printed and bound, as your own “book” copy. And, of course, you can edit them, annotate them, and cut them and paste them (or parts of them) in other things, such as course outlines. See the Important Course Information page for detailed information about the reading materials. Most of the assigned materials are available on this page as both .DOCX and .PDF files. A handful are available only as .PDF files.
Look up the statute. Within each assignment, the syllabus notes the required reading, including the principal case(s). In addition to the assigned readings, where a case or other material refers to the Lanham Act (Title 15 of the United States Code), you are responsible for locating and reading the section(s) of the Act to which the text refers. At least two, free online resources are available for that purpose: One is this free, online version of the Lanham Act. Two is Intellectual Property: Law & The Information Society / Selected Statutes & Treaties / 2019 Edition (James Boyle & Jennifer Jenkins, eds.).
How to read. You still have lots to learn and lots to practice when it comes to reading primary source materials – cases and statutes – in law. How to Read a Legal Opinion by Professor Orin Kerr (UC Berkeley Law School) is an excellent primer when it comes to making sense of a single case. When it comes to making sense of a body of cases, additional tools are needed. My best initial advice is this: read each case both for its function (“what’s the rule?” “what’s the holding?” “what are the relevant facts?”) and also as literature. That may involve reading the case twice, or even three times. As you would do with a novel or a poem, bear in mind that reading involves making sense of settings, characters, motivations, conflicts, and resolutions. Stories, in other words. Stories require reader involvement, meaning both you and also others. What you take away from a novel is based in part on what you know about what other people (teachers, friends, family, colleagues, reviewers) take away from it. The same thing is true for law. Talk to people about what you read. Interpretation is an ongoing, collective, collaborative process. You can and should read cases for what they say about other, earlier cases, teaching you what those other cases “mean” as they exist in the world over time – “meaning” that includes both “this is what the law is” and also “this is what you can do with the law, as a lawyer.”
Class videos. This course has been offered remotely four times since 2020, and each class meeting in each version of the course has been recorded and posted to YouTube. (Once in a great while, a class meeting was not recorded.) You can find the playlists here. The basics of trademark law have not changed. With a few exceptions, the structure and sequence of the course have not changed. Therefore, for the Fall 2025 edition of this course, class meetings will not be recorded; students who want to review “lectures” are welcome to look at videos from prior years.
Slide decks. Partly because slide decks for this course have not changed much, year to year, and partly because enrollment in the course is expected to be small (fewer than 15 students), students should expect not to see slide decks during class meetings. Decks from prior years’ versions of the course are posted where appropriate in the syllabus.
Teaching format. The absence of slide decks suggests a reversion in teaching format, away from the lecture-plus-student-volunteers format of recent years and back toward a call-on-students-and-expect-that-they-are-prepared format of the “old school.” Students should expect discussion, however, rather than recitation.
CALI Lessons. For several units, under the “Review” heading the syllabus includes references to review material identified as CALI Lessons. These are available via the TWEN page for this course. CALI is the “Center for Computer-Assisted Legal Instruction,” a well-established nonprofit organization that produces high quality, free materials for law students. Each CALI lesson indicated as part of a unit on the syllabus offers a review of rules and principles of trademark that relate to the cases and statutes assigned for that unit.
Have some theory. For several of the units of reading, optional law review articles are included. Some of these are relatively short. Some are quite long. Reading some or all of them will give you a deeper picture of the current state of trademark law, practice, and policy than you will get by focusing on appellate cases and the statute alone.
Extras. Many of the assignments include links to optional supplemental material. Some material provides historical context for the assigned cases. Some consists of clips from motion pictures and television shows that illustrate trademark themes. There are music videos. In some cases, these, too, illustrate the assigned readings. In some cases, they are (one hopes) funny takes on relevant legal points. Some of the optional material contains spicy and/or possibly offensive [NSFW] – but contextually appropriate – language, sounds, and/or images.
Why the extra, optional materials? Learning and knowing the law is difficult, but it is never enough. Great lawyers need to learn and know context. Trademark law, like any body of law, exists to solve social problems. As a solution, it may not work terribly well, and it may create additional problems, but we start by talking about the problems that trademark evolved to solve. We talk about other dimensions of those problems and their solutions. Trademark conflicts and trademark negotiations exist in companies, in markets, and among human beings. History matters. Culture matters. Economics and business matter. Systems matter. Other bodies of law matter, beyond trademark and beyond intellectual property. Great lawyers need to learn how to investigate those things and how they relate to their clients and the problems that their clients are trying to solve.
DAY BY DAY SYLLABUS AND READING ASSIGNMENTS
(The syllabus is decorated with images of widely-known trademarks associated with Pittsburgh-connected products and services. For these and more Pittsburgh marks, check out the Pittsburgh IP Hall of Fame.)
TOPIC 1: THE PROBLEMS THAT TRADEMARK SOLVES (OR DOESN’T, OR CREATES)
“Classical” or “traditional” trademark law is relatively simple and straightforward. There is a product or service. There is a “mark,” which accompanies that product or service, which identifies its source (that is, who made it), and which symbolizes the “goodwill” that the producer has built up over time (that is, a reputation for a certain level or type of quality associated with the good or service). The law assumes that ownership of the mark helps the producing firm recover its investment in building that reputation. It also assumes that “consumers” rely on the mark in choosing what to buy. “Infringement” involves unauthorized use of the mark on goods or services that compete with the mark owner’s goods or services, leading to confusion in the marketplace, which harms consumers, and loss of the producer’s investment, which harms the mark “owner.”
Optional legal scholarship: Glynn S. Lunney, Jr., Trademark Monopolies, 48 Emory L.J. 367 (1999)
CLASS 1
THE FIRST DAY OF CLASS: AN INTRODUCTION TO TRADEMARK’S INSTITUTIONAL SETTINGS: FOUNDATIONS, PURPOSES, AND ILLUSTRATIONS
Required Readings
- Beebe Text: Preface and Introduction [PDF] // [DOCX]
- Trade-Mark Cases [PDF] // [DOCX]
- Interesting recent trademark news [1]: Penn State sued to protect its merchandising – and won. See the relevant t-shirts here.
- Interesting recent trademark news [2]: What’s in a name, airport edition
- Total PDF page count: 29
Review
- Slides
- Video of the class [The 2024 video got corrupted. Here is the 2023 equivalent.]
- CALI lesson(s): Trademark Policy
Optional Materials
- Boyle & Jenkins, Trademark – Introduction.
- Interesting recent trademark news [3]: Nike sued The Shoe Surgeon
- Interesting recent trademark news [4]: LEGO is ever-vigilant in pursuing “counterfeits.” See the Complaint here; see the result here.
- Business history: A brief history of advertising in America. Here is a briefer history of American advertising. And a summary of modern marketing: How brands sell more.
- What marks mean: status: Apple, twenty years ago, Apple, recently, and Apple today. Read about (and see) the evolution of the Apple logo.
- What marks mean: possession and distinction. The Swan Upping. The 2023 Swan Upping was the first conducted under the authority of and on behalf of King Charles III. Comparing the 2023 Swan Upping and the 1930 Swan Upping teaches useful lessons about the changing purposes and meanings of marking … things. Humans have been marked (branded), too, through history.
CLASS 2
THE INTERSECTION OF LAW AND BUSINESS: THE REQUIREMENT THAT TRADEMARKS BE LINKED TO “GOODWILL,” AND THE POLICING AND MONITORING THAT FOLLOW
Required Readings
- Madison, Introduction to Goodwill [PDF] // [DOCX]
- Beebe Text: Goodwill, Abandonment, and Naked Licensing [PDF] // [DOCX]
- Crash Dummy Movie, LLC v. Mattel, Inc. [PDF] // [DOCX]
- FreecycleSunnyvale v. Freecycle Network [PDF] // [DOCX]
- Sugar Busters LLC v. Brennan [PDF] // [DOCX]
- BMW v. TurboSquid: a summary
- Total PDF page count: 32
Review
- Slides
- Video of the class [The 2024 video got corrupted. Here is the 2023 equivalent.]
- CALI lessons: Abandonment; Trademark Assignments and Licenses
Optional Materials
- “Brand love”: Lego [podcast].
- The many different kinds of relationships between people and brands (Alvarez, David, and George, “Types of Consumer-Brand Relationships: A systematic review and future research agenda”).
- What’s in a brand? Coke Zero Gets Sued by Coke [YouTube] and Can Coke Sue Itself? [YouTube].
- Goodwill strategies: Starbucks (coffee) and Sam Adams (beer).
- Branding strategies: A playbook.
- ITC Ltd. v. Punchgini, Inc. [PDF] // [DOCX] and the state court ruling [PDF] [DOCX]
- Bukhara Grill (New York) and Bukhara Restaurant (Delhi).
- Incredible Crash Dummies product.and Incredible Crash Dummies TV commercial [YouTube].
- The New Sugar Busters!.
- Scholarship: Mark P. McKenna & Lucas S. Osborn, Trademarks and Digital Goods.
TOPIC 2: WHAT IS A TRADEMARK? CREATION OF TRADEMARK RIGHTS
As with all systems of intellectual property rights, at the core of trademark law is the “mark” itself, an intangible and immaterial “thing” whose identity, boundaries, meaning, and functions are defined by a blend of legal rules and social and economic activity. Where and when does the “mark” come from, and why?
CLASS 3
THE DISTINCTIVENESS SPECTRUM
Required Readings
- Beebe Text: Distinctiveness [PDF] // [DOCX]
- Abercrombie & Fitch Co. v. Hunting World, Inc. [PDF] // [DOCX]
- Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. [PDF] // [DOCX]
- Innovation Ventures, LLC v. N.V.E., Inc. [PDF] // [DOCX]
- Total PDF page count: 29
Review
- Slides
- Video of the class
- CALI lesson(s): Distinctiveness
Optional Materials
- A history of the original Abercrombie & Fitch, and images of Abercrombie & Fitch clothing.
- Zatarain’s Fish Fri and Oak Grove Smokehouse Fish Fry.
- 5 Hour Energy and 6 Hour Power.
- History: How humans became consumers and a brief history of consumer culture.
- History: The rise of consumerism.
CLASS 4
ACQUIRED DISTINCTIVENESS AND GENERIC MARKS
Required Readings
- Beebe Text: Acquired Distinctiveness and Generic Marks [PDF] // [DOCX]
- * TBL Licensing, LLC v. Vidal [PDF] // [DOCX]
- * Cartier, Inc. v. Four Star Jewelry Creations, Inc. [PDF] // [DOCX]
- * In re GO & Associates, LLC [PDF] // [DOCX]
- United States Patent and Trademark Office v. Booking.com B.V. [PDF] // [DOCX]
- Total PDF page count (key cases): 28
Review
- Slides
- Video of the class
- CALI lesson(s): Acquired Secondary Meaning; Collective Marks and Certification Marks; Foreign Words and Personal Names as Trademarks
Optional Materials
- Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel Co. [PDF] // [DOCX]
- Snyder’s Lance, Inc. v. Frito-Lay North America, Inc. [PDF] // [DOCX]
- Elliott v. Google, Inc. [PDF] // [DOCX]
- In re Lizzo LLC [PDF] // [DOCX]
- FML? The Federal Circuit returns to the “failure to function” doctrine in In re Brunetti [PDF] // [DOCX]
- Boots?: Nancy Sinatra, “These Boots are Made for Walking” [YouTube]. And the opening credits to Saturday Night Fever (1977) with John Travolta and his swingin’ boots-based strut [YouTube]. Also, Wild (2014) [YouTube] features some compelling boot material. As does Wall-E (2008) [YouTube] .
- Cartier’s Tank collection and Cartier Panthere watches.
- Booking.yeah commercial [YouTube].
- The growth of advertising culture: Emergence of advertising in America, 1850-1920.
- Early concerns about the power of advertising (1950s). An essay about Vance Packard and The Hidden Persuaders.
- Mocking the advertisers on Madison Avenue: Bob Newhart’s classic early 1960s comedy routine about The Hidden Persuaders and advertising [YouTube].
- Ad man and salesman as hero (sometimes, a tragic hero) in popular culture: The Mad Men series starring Jon Hamm and Elisabeth Moss [YouTube] and “Rock Island,” from The Music Man (1962) [YouTube] and Willy Loman, in Arthur Miller’s Death of a Salesman [YouTube] and David Mamet’s Glengarry Glen Ross [YouTube] and Air (2023) [the invention of the Air Jordan] [YouTube].
- Celebrating heroic ads: The Top 100 Ad Campaigns of the 20th Century.
- Fake products that became real: The red stapler, from Office Space [YouTube]. And more Office Space [YouTube].
CLASS 5
DISTINCTIVENESS AND NON-VERBAL MARKS
Required Readings
- Beebe Text: Nonverbal Marks [PDF] // [DOCX]
- * Two Pesos, Inc. v. Taco Cabana, Inc. [PDF] // [DOCX]
- * Qualitex Co. v. Jacobson Products Co., Inc. [PDF] // [DOCX]
- * Wal‐Mart Stores, Inc. v. Samara Bros., Inc. [PDF] // [DOCX]
- * In re Slokevage [PDF] // [DOCX]
- * LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A. [PDF] // [DOCX]
- Amazing Spaces, Inc. v. Metro Mini Storage [PDF] // [DOCX]
- Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC [PDF] // [DOCX]
- Star Industries, Inc. v. Bacardi & Co. Ltd. [PDF] // [DOCX]
- Total PDF page count (key cases): 35
Review
Optional Materials
- History of graphic design: History of graphic design (and more history of graphic design)
- History of industrial design: The influence and legacy of Raymond Loewy and more about Raymond Loewy.
- Fun-Damental Too, Ltd. v. Gemmy Industries Corp. [PDF] // [DOCX]
- McKernan v. Burek [PDF] // [DOCX] and McKernan’s Cape Cod Tunnel permit.
- Best Cellars, Inc. v. Wine Made Simple, Inc. [PDF] // [DOCX] and a Best Cellars store design.
- Fedders Corp. v. Elite Classics [PDF] // [DOCX]
- In re SnoWizard, Inc. [PDF] // [DOCX]
- In re Frankish Enterprises Ltd. [PDF] // [DOCX]
- In re PT Medisafe Technologies [PDF] // [DOCX]
- All about Two Pesos and Taco Cabana, trial court edition.
- Qualitex Co. trade dress images.
- Samara Bros. dresses and additional Samara Bros. dresses and Samara Bros. baby clothes.
- Slokevage design.
- Amazing Spaces Storage.
- Water bottle designs and branding considerations (and more of the same: choosing a water bottle design) (and research on packaging trends for bottled water).
- The Oprah Magazine.
- Examples of Wallace china and Wallace silver.
- Godinger and Wallace silver forks.
- Colors and restaurant design: the virtues of red.
- Shoes in the trademark news. Chuck Taylor All-Stars and Converse continues its trademark battle and the battle for Chucks continues. About Chuck Taylor. [Not this Chuck Taylor, who ran the summer camp that I attended in middle school.] About Chucks (the shoes).
- adidas and its litigation history, which continued in 2023. And more in 2023. And still in 2024.
- Names and shoes, again. And again: a complete history of “signature” shoes.
- The namesake of Stan Smith shoes.
- All about actual tennis shoes.
- Inside the Knockoff-Tennis-Shoe Factory.
- Spike Lee’s legendary “Gotta Be the Shoes” commercial [YouTube].
- Get up and dance to songs about shoes: Carl Perkins, “Blue Suede Shoes” [YouTube]. Also: K.C. and the Sunshine Band, “Boogie Shoes”. Ditto: Paul Simon, “Diamonds on the Soles of her Shoes” [YouTube]. Last but not least: Mark Ronson, “Uptown Funk” [YouTube].
- The most famous shoes of the 20th century [YouTube].
CLASS 6
BARS TO PROTECTION: “UTILITARIAN” FUNCTIONALITY
Required Readings
- Beebe Text: Utilitarian Functionality [PDF] // [DOCX]
- * TrafFix Devices, Inc. v. Marketing Displays, Inc. [PDF] // [DOCX]
- * Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. [PDF] // [DOCX]
- * Apple, Inc. v. Samsung Electronics Co. Ltd. [PDF] // [DOCX]
- * Specialized Seating, Inc. v. Greenwich Industries, L.P. [PDF] // [DOCX]
- Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH [PDF] // [DOCX]
- Total PDF page count (key cases): 39
Review
Optional Materials
- CeramTec GmbH v. Coorstek Bioceramics LLC [PDF] // [DOCX]
- Sulzer Mixpac AG v. A&N Trading Company [PDF] // [DOCX]
- Valu Engineering, Inc. v. Rexnord Corp. [PDF] // [DOCX]
- Fantastik and Glass Plus.
- The MDI patent and TrafFix’s sign.
- Pocky. Share happiness!
- Types of dental mixing tips
- One take on the Apple/Samsung patent/trade dress litigation, with lots of pictures.
- A history of the folding chair
- For up to the minute reports on patents, design, and trademarks, follow design law expert Prof. Sarah (Fakrell) Burstein of the Chicago-Kent College of Law. She was on Twitter [X], Now she is on Mastodon and Bluesky.
CLASS 7
BARS TO PROTECTION: “AESTHETIC” FUNCTIONALITY AND DECEPTIVE MARKS
Required Readings
- Beebe Text: Aesthetic Functionality and Deceptiveness [PDF] // [DOCX]
- Pagliero v. Wallace China Co. [PDF] // [DOCX]
- Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co. [PDF] // [DOCX]
- Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. [PDF] // [DOCX]
- In re Nieves & Nieves LLC [PDF] // [DOCX]
- Total PDF page count: 40
Review
- Slides
- Video of the class
- CALI lesson(s): Functionality
Optional Materials
- Singing the praises of the dedicated followers of fashion: David Bowie, “Fashion” [YouTube]. More music: The Kinks, “Dedicated Follower of Fashion” [YouTube]
- Fashion and identity: Madonna, “Vogue” [YouTube] [also the infamous live MTV Awards performance] and Paris is Burning [YouTube] and Pose [YouTube].
- Brands, history, ideology, culture … and violence: The origins of branding, identity, and status in the 1920s and 1930s, via Coco Chanel and the fashion industry. About the Chanel logo. Fashion and fascism, linked. The history of the swastika.
- Fashion in entertainment, today: Clip from The Devil Wears Prada (2006) [YouTube]
- Fashion in hip hop, too many NSFW tracks to choose from edition: Slim Jxmmi ft. Rae Sremmurd, Swae Lee & Pharrell, “Chanel” [YouTube]. More?
- It’s the shoes: “The Red Soles Have Returned With a Vengeance”
- Official Royal Merchandise.
- UK: The Duchess of Cambridge, now the Princess of Wales.
- The costs of deception: Counterfeit airplane parts.
- Current “deceptiveness” controversies: What is “milk”? and “GMO free.”
- History: The origins of royal branding.
- History: From Wedgwood to Apple.
- History: Celebrity endorsements.
CLASS 8
PROBLEM SET #1
CLASS 9
USE IN COMMERCE
Required Readings
- Beebe Text: Use in Commerce [PDF] [DOCX]
- Aycock Engineering, Inc. v. Airflite, Inc. [PDF] // [DOCX]
- Couture v. Playdom, Inc. [PDF] // [DOCX]
- Comic Crusaders LLC v. Andrusiek [PDF] // [DOCX]
- Total PDF page count: 26
Review
- Slides
- Video of the class
- CALI lesson(s): Initial Trademark Ownership; The Role of “Use” in Trademark Law: An Overview
Optional Materials
CLASS 10
THE REGISTRATION PROCESS
Required Readings
- Beebe Text: The Registration Process [PDF] // [DOCX]
- Kelly Services, Inc. v. Creative Harbor, LLC [PDF] // [DOCX]
- Skim: Supplemental materials on “Pittsburghade” and “Pantherade” marks [PDF]
- Total PDF page count: 33
Review
- Slides
- Video of the class
- CALI lessons: Federal Trademark Registration: Bars to Registration; Incontestability; Registration and Section 14
Optional Materials
- Kelly Services was once known as “The Kelly Girl people.”
- Current practice: Explore the Trademark Manual of Examining Procedure (TMEP)
- Current practice: Review the Official Gazette (TMOG), distributed by the US Patent and Trademark Office
- Current practice: Obtaining trademark rights in the taste of food and drink, and other non-traditional marks.
- Lists of the oldest registered trademarks around the world [one] [two] [three]
Assignment Number One will be distributed around this time. The Assignment will be due on Friday, October 3, 2025.
CLASS 11
THE GEOGRAPHIC SCOPE OF TRADEMARK RIGHTS
Required Readings
- Beebe Text: Geographic Scope [PDF] // [DOCX]
- * National Ass’n for Healthcare Communications, Inc. v. Central Arkansas Area Agency on Aging, Inc. [PDF] // [DOCX]
- * Stone Creek, Inc. v. Omnia Italian Design, Inc. [PDF] // [DOCX]
- * Person’s Co., Ltd. v. Christman [PDF] // [DOCX]
- Grupo Gigante v. Dallo & Co., Inc. [PDF] // [DOCX]
- Total PDF page count (key cases): 38
Review
- Slides
- Video of the class
- CALI lesson(s): The Geographic Scope of Trademark Protection
Optional Materials
- A history of Rexall.
- History of Dawn bakery products.
- Modern culture: Mobility, donuts and the American dream.
- History: The impact of the interstate highway system.
- Grupo Gigante.
- A new Gigante market – in Delaware.
- Belmora LLC v. Bayer Consumer Care AG [PDF] // [DOCX]
- Local: A Pittsburgh pizzeria conflict.
- Local: How Hot Dogma became Franktuary.
TOPIC 3: ENFORCEMENT OF TRADEMARK RIGHTS AND DEFENSES TO ENFORCEMENT
Trademarks have few practical uses for businesses and lawyers other than as devices for managing lines of products and services, either keeping rivals out of the marketplace or using trademarks to expand their own business interests. Class 2 (above) addressed risks and opportunities that trademark owners encounter in the transactional marketplace and associated business strategies and legal tactics that trademark owners often use to manage them. This section of the course addresses litigation strategies and their associated legal risks. The “traditional” model of trademark infringement borrows from and combines three historical antecedents: [i] “technical” trademark infringement, meaning copying a direct rival’s registered mark; [ii} appropriation of goodwill, a common law unfair competition tort; and [iii] counterfeiting, or passing off, also a common law unfair competition tort. Today, all three historical variants are subsumed under a shared “likelihood of confusion” rubric.
Optional legal scholarship: Mark A. Lemley & Mark McKenna, Irrelevant Confusion, 62 Stan. L. Rev. 413 (2010)
CLASS 12
TRADEMARK INFRINGEMENT – USE IN COMMERCE AND LIKELIHOOD OF CONFUSION
Required Readings
- Beebe Text: Likelihood of Confusion [PDF] // [DOCX]
- Borden Ice Cream Co. v. Borden’s Condensed Milk Co. [PDF] // [DOCX]
- Polaroid Corp. v. Polarad Electronics Corp. [PDF] // [DOCX]
- Virgin Enterprises Ltd. v. Nawab [PDF] // [DOCX]
- Total PDF page count: 43
Review
- Slides
- Video of the class
- CALI lesson(s): The Role of “Use” in Trademark Law: An Overview; Related Goods
Optional Materials
- Corporate history of Borden’s condensed milk.
- More about Gail Borden, the inventor.
- Polaroid history and more Polaroid history.
- History of Polarad.
- Virgin: more than electronics (all about Richard Branson).
- Kisses, sunlight, and soft drinks: Sunkist Growers, Inc. v. Intrastate Distributors, Inc. [PDF] // DOCX]
- On surveys and trademark litigation: Smith v. Wal-Mart Stores, Inc. [PDF] // [DOCX]
- Modern culture: Post-WWII consumerism and more post-WWII consumerism.
CLASS 13
ACTIONABLE USE AND FUNCTIONIING AS A MARK
CLASS 14
CONFUSION-BASED INFRINGEMENT: SPONSORSHIP OR AFFILIATION
Required Readings
- Beebe Text: Sponsorship or Affiliation [PDF] // [DOCX]
- Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC [PDF] // [DOCX]
- Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel Co. [PDF] // [DOCX]
- Total PDF page count: 30
Review
Optional Materials
- You can no longer buy Walocaust products at Cafe Press, but the Internet remembers that you could, once.
- Scholarship: A significant theoretical moment, promoting a turn from anxiety about manipulative advertising to celebration of its consumer-friendliness, is (was) William Landes & Richard Posner, Trademark Law: An Economic Perspective (1987) (on “information costs”).
- Boston Professional Hockey Association, Inc. v. Dallas Cap & Emblem Mfg., Inc. [PDF] // [DOCX]
- Mel Brooks, Spaceballs (1987), and the key to both Star Wars and the contemporary economy of “trademarked” goods: “merchandising.” [YouTube]
- One look at so-called ambush marketing.
- The price of World Cup football.
CLASS 15
CONFUSION-BASED INFRINGEMENT: REVERSE CONFUSION AND REVERSE PASSING OFF
Required Readings
- Beebe Text: Reverse Confusion and Reverse Passing Off [PDF] // [DOCX]
- Wreal, LLC v. Amazon.com, Inc. [PDF] // [DOCX]
- Dastar Corp. v. Twentieth Century Fox Film Corp. [PDF] // [DOCX]
- Total PDF page count: 41
Review
- Slides
- Video of the class
- CALI lesson(s): Likelihood of Confusion
Optional Materials
- Wreal v. Amazon.com settled
- “Fyre” has some really negative associations.
- Crusade in Europe.
- Modern business and the rise of brands and trademarks in Hollywood: A Look Back At The Rise Of The Hollywood Mega Franchise.
- More on the modern business of Hollywood: Avengers Assemble! How Marvel went from Hollywood also-ran to mastermind of a $1 billion franchise.
- Sense a trend?: Stan Lee On How Marvel Characters Went From People With Problems To Hollywood’s Biggest Properties.
CLASS 16
PERMISSIBLE USES: DESCRIPTIVE FAIR USE
Required Readings
- Beebe Text: Descriptive Fair Use [PDF] // [DOCX]
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. [PDF] // [DOCX]
- * Solid 21, Inc. v. Breitling U.S.A., Inc. [PDF] // [DOCX]
- * SportFuel, Inc. v. Pepsico, Inc. [PDF] // [DOCX]
- International Stamp Art v. U.S. Postal Service [PDF] // [DOCX]
- Bell v. Harley Davidson Motor Co. [PDF] // [DOCX]
- Fortune Dynamic, Inc. v. Victoria’s Secret [PDF] // [DOCX]
- Total PDF page count (key cases): 28
Review
- Slides
- Video of the class [This is from the Fall *2023* Trademark Law class covering the same topic. The *2024* version did not record properly as a result of a hardware failure. Sorry!]
Optional Materials
- Microcolors.
- A history of sports drinks.
- Fortune Dynamic’s delicious shoes.
- Ride Hard appears to be in business.
- A brilliant cameo in a mediocre movie about motorcycles and men: Peter Fonda (Easy Rider) turns up in Wild Hogs (2007) [YouTube].
- Scholarship: Barton Beebe & Jeanne Fromer, Are We Running Out of Trademarks?
CLASS 17
REMEDIES
Required Readings
- Beebe Text: Remedies [PDF] // [DOCX]
- * Nichino America, Inc. v. Valent U.S.A. LLC [PDF] // [DOCX]
- * Romag Fasteners, Inc. v. Fossil, Inc. [PDF] // [DOCX]
- Total PDF page count: 24
Review
- Slides
- Video of the class
- CALI lesson(s): Injunctive Relief for Trademark Infringement; Recovery of Damages for Trademark Infringement
Optional Materials
- Big numbers for beer: Stone Brewing Co., LLC v. Molson Coors Beverage Company USA LLC [PDF] // [DOCX]
- Stone Brewing tells its story.
- Cheers! The burdens of being a law professor. Zahr Said, Craft Beer and the Rising Tide Effect: An Empirical Study of Sharing and Collaboration Among Seattle’s Craft Breweries.
- Scholarship: “Bursting bubbles” and evidence law.
- English Premier League bonus track, for West Ham United supporters: “I’m Forever Blowing Bubbles” [YouTube].
- Cutting edge scholarship: Sarah (Fackrell) Bustein, The Counterfeit Sham
CLASS 18
PROBLEM SET #2
TOPIC 4: NOVEL AND EXPANSIVE THEORIES OF TRADEMARK LIABILITY
Over the later part of the 20th century, changing and expanding interests of businesses and their relationships with consumers led to changes and expansions in trademark law. New interpretations of existing trademark doctrines came to be accepted, including different theories of infringement based on likely confusion. Entirely new doctrines of liability came into being, including trademark dilution and (in an area that this course does not cover) cybersquatting with respect to domain names. New defenses to trademark infringement were recognized, including nominative use.
Optional legal scholarship: Barton Beebe, Intellectual Property Law and the Sumptuary Code, 123 Harv. L. Rev. 809 (2010)
CLASS 19
CONFUSION AWAY FROM THE POINT OF SALE
Required Readings
- Beebe Text: Initial Interest Confusion and Post-Sale Confusion [PDF] // [DOCX]
- * Select Comfort Corporation v. Baxter [PDF] // [DOCX]
- * Jim S. Adler, P.C. v. McNeil Consultants, L.L.C. [PDF] // [DOCX]
- * Ferrari S.P.A. v. Roberts [PDF] // [DOCX]
- Total PDF page count: 32
Review
Optional Materials
- Suppliers of Ferrari replica kits and parts.
- Replica Ferraris and Ferris Bueller’s Day Off and the wrecking-the-Ferrari scene from the film [YouTube].
- What consumers really want: John Belushi and The Olympia Restaurant from Saturday Night Live [YouTube].
- Brands and social status: Conspicuous consumption, Thorsten Veblen, and The Theory of the Leisure Class [and here]
- Consumption goods and social status: Nike v. Warren Lotas
- Lotas and Nike settle their differences
CLASS 20
NON-CONFUSION BASED TRADEMARK LIABILITY THEORIES: DILUTION BY BLURRING
Required Readings
- Beebe Text: Dilution by Blurring [PDF] // [DOCX]
- Coach Servs., Inc. v. Triumph Learning LLC [PDF] // [DOCX]
- Nike, Inc. v. Nikepal Intern., Inc. [PDF] // [DOCX]
- Starbucks Corp. v. Wolfe’s Borough Coffee, Inc. [PDF] // [DOCX]
- Total PDF page count: 33
Review
- Slides
- Video of the class
- CALI lesson(s): Trademark Dilution: What Marks are Eligible for Protection
Optional Materials
- Fame, geography, and certification marks: distilling the spirit of dilution in Bureau National Interprofessionnel du Cognac v. Cologne & Cognac Entertainment [PDF] // [DOCX]. More: All about the opposer/plaintiff, or: did you know that Cognac is a place?
- Blurring, NSFW musical version: Blurred Lines [YouTube].
- What is fame? A musical celebration: Irene Cara and “Fame” from the original movie (1980) [YouTube] and David Bowie, “Fame” [YouTube].
- Too many trademarks, or too few? A celebration of raucous visual culture: Learning from Las Vegas: what the Strip can teach us about urban planning.
Assignment Number Two will be distributed around this time. The Assignment will be due on Friday, November 7, 2025.
CLASS 21
NON-CONFUSION BASED TRADEMARK LIABILITY THEORIES: DILUTION BY TARNISHMENT
Required Readings
- Beebe Text: Dilution by Tarnishment [PDF] // [DOCX]
- * V Secret Catalogue, Inc. v. Moseley [PDF] // [DOCX]
- Total PDF page count: 15
Review
- Slides
- Video of the class
- CALI lesson(s): Trademark Dilution: Defenses and Remedies
Optional Materials
- Behind Victor’s Little Secret.
- The story of Victoria’s Secret.
- Victoria’s Secret was out of step.
- Victoria’s Secret has changed its tune.
- Scholarship: A history of selling sex.
- Woman and sex in media and culture: Mae West
CLASS 22
PERMISSIBLE USE: NOMINATIVE USE
Required Readings
- Beebe Text: Nominative Use [PDF] // [DOCX]
- * Toyota Motor Sales, U.S.A., Inc. v. Tabari [PDF] // [DOCX]
- Liquid Glass Enterprises, Inc. v. Dr. Ing. h.c.F. Porsche AG [PDF] // [DOCX]
- Toho Co., Ltd. v. William Morrow & Co., Inc. [PDF] // [DOCX]
- * Mattel, Inc. v. Walking Mountain Productions [PDF] // [DOCX]
- [Again] Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC [PDF] // [DOCX]
- [Again] Board of Supervisors for Louisiana State University & Mechanical College v. Smack Apparel Co. [PDF] // [DOCX]
- Total PDF page count (key cases): 19
Review
- Slides
- Video of the class
- CALI lesson(s): Trademark Fair Use
Optional Materials
- New Kids on the Block, “Step by Step” [YouTube].
- Porsche advertising: Porsche: There is no substitute [YouTube] and here (that is a long-standing ad campaign, as illustrated by this clip from Tom Cruise’s first hit movie, Risky Business (1983)) [YouTube].
- Do dogs think pun-based chew toys are cute? Dog owners love them.
- But Louis Vuitton is now selling doggie merch, including collars. Those are for dogs, right?
- Godzilla: King of the Monsters (the original): The original US release of Godzilla [YouTube].
- Modern culture: Godzilla in pursuit of Zilla.
- Food Chain Barbie photos are available online if you search a bit using “Tom Forsythe.” Here’s a good example.
- Scholarship: Rebecca Tushnet, Make Me Walk, Make Me Talk, Do Whatever You Please: Barbie and Exceptions (Mattel goes after satirists and parodists, and mostly loses: a history).
TOPIC 5: WHAT ELSE DO TRADEMARKS DO? FREE EXPRESSION, THE FIRST AMENDMENT, AND TRADEMARK LAW
Trademark law originated as a regulatory system for competitors selling goods and services in markets. Over the 19th and 20th centuries, trademark law expanded in various ways alongside the growth of market capitalism, supporting manufacturers and financiers (in the first place) and promoting a consumer-driven economy (in the second place). But putting capitalist consumers in the trademark drivers’ seat, proverbially speaking, turned out to have unexpected consequences, particularly as the 1960s and 1970s American culture celebrated the quirks of the individual in all respects – economic, political, educational, and cultural.
Taking their “freedom to be me” privileges seriously, and without waiting for permission from trademark owners, consumers blended their “shop and buy” identities with the rest of their identities. They learned to “speak” and express themselves not only via buying things but also by identifying – literally, in some instances – with the brands and trademarks that they encountered in everyday life. No sector of American civic experience is unchanged. Even formerly (or partially) “private” life experiences are now touched by trademarks. Trademark law has struggled to blend its historical unfair competition focus with a new “freedom of expression” sensibility, grounded in US Constitutional law. When and how should trademark law be invoked to limit cultural criticism, even plain old humor? What role should trademark law play in ensuring that civic life is purged of disconcerting, even crude, language and imagery? Given the First Amendment, is that even a legitimate public policy goal?
CLASS 23
USING OTHERS’ MARKS – PERMISSIBLE USE AS EXPRESSIVE USE
Required Readings
- Beebe Text: Expressive Use [PDF] // [DOCX]
- Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC [PDF] // [DOCX]
- MPS Entm’t, LLC v. Abercrombie & Fitch Stores, Inc. [PDF] // [DOCX]
- * Gordon v. Drape Creative, Inc. [PDF] // [DOCX]
- * Jack Daniel’s Properties, Inc. v. VIP Products LLC [PDF] // [DOCX]
- * Mattel, Inc. v. MCA Records, Inc. [PDF] // [DOCX]
- * Louis Vuitton Malletier, S.A. v. Hyundai Motor Am. [PDF] // [DOCX]
- Louis Vuitton Malletier v. My Other Bag, Inc. [PDF] // [DOCX]
- Total PDF page count (key cases): 33
Review
Optional Materials
- Fred Astaire and Ginger Rogers, Swing Time (1936) [YouTube].
- Fred Astaire and Ginger Rogers, “Let’s Face the Music and Dance” [YouTube].
- Ginger and Fred (1986) [YouTube].
- [Annoying, to some]: Aqua, “Barbie Girl” [YouTube].
- Hyundai’s 2010 Super Bowl commercial [YouTube].
- Outkast, “Rosa Parks” [YouTube].
- Abercrombie & Fitch asked The Situation to stop wearing A&F clothes.
- All the Honey Badger.
- On remand: VIP Products LLC v. Jack Daniel’s Properties Inc. [PDF] // [DOCX] The case is again on appeal to the Ninth Circuit. Here is VIP’s opening brief.
- White v. Samsung Electronics America, Inc. [PDF] // [DOCX] and the famous Judge Kozinski dissent from the denial of rehearing en banc [PDF] // [DOCX]
- The original print advertisements at issue in White v. Samsung. Samsung’s ad agency considered approaching Donald Trump to appear in an ad, but were put off by the expectation that Trump would ask for more money than Samsung – at the time, a new entrant to the US market – could afford. Instead of Trump, the campaign featured “trash TV” talk show host Morton Downey, Jr.
- Free to be me? Brand vs. brand or mark vs. mark? I’m a Mac [YouTube] and I’m a PC [YouTube].
- What marks mean: identity. In the late 1970s, Dr. Pepper wanted consumers to “Be a Pepper” in TV commercials starring David Naughton: [one] [two] [three] [YouTube].
- Summing it up: Aretha Franklin, Who’s Zoomin’ Who? [YouTube].
CLASS 24
CLAIMING AND ENFORCING TRADEMARK RIGHTS – TRADEMARKS AND THE FIRST AMENDMENT
Required Readings
- Beebe Text: Disparaging Marks, and the First Amendment [PDF] // [DOCX]
- Matal v. Tam [PDF] // [DOCX]
- Iancu v. Brunetti [PDF] // [DOCX]
- Total PDF page count: 35
Review
Optional Materials
- The Slants, “Chinatown Dance Rock”.
- Simon Tam’s view of Matal v. Tam and more from Simon Tam.
- What to do about offensive brand names and images (breakfast edition)?
- In case there was any doubt about Aunt Jemima (offensive images and language) (part 1) (part 2).
- What to do about offensive brand names and images (dessert edition)?
- San Francisco Arts & Athletics, Inc. v. United States Olympic Committee [PDF] [DOCX]
- Vidal v. Elster [PDF] // [DOCX]
- Profanity and puns in commercial marketing.
- Law professors love this topic: Find articles about scandalous and/or offensive trademarks by Megan Carpenter and Mary Garner, Barton Beebe and Jeanne Fromer, and Anne Gilson LaLonde and Jerome Gilson.
- Culture (NSFW language). George Carlin’s Seven Words You Can’t Say on TV (but you can say on cable and satellite, in streamed entertainment, and even in the Federal Register) [YouTube].
TOPIC 6: DATA, ALGORITHMS, AND THE POSSIBLE END OF TRADEMARK LAW
If trademark law really is about regulating business-to-business, or was, does it matter whether trademark conflicts are resolved in courts, which, are, or which are supposed to be, public institutions? Private arbitration systems have been in wide use for decades. Now, dispute resolution processes are being baked into algorithms. Trademark-related conflicts (among other types of conflicts) increasingly never hit the courts’ dockets. Who needs trademark law? Who needs trademark lawyers? Why?
CLASS 25
CONSUMER CHOICE, AND WHO’S WATCHING YOU
Required Readings
- Read selections from this new law journal article: Jeanne C. Fromer and Mark P. McKenna, “Amazon’s Quiet Overhaul of the Trademark System” [PDF] [read pp. 1-16 of the file, up to Part IV “Implications.”]
- Total PDF page count: 16
Review
Optional Materials
- Download and read the whole thing here, for free [PDF]
- Impatient? Read this excellent – and short – review of the full article here [PDF]
- Another excellent new work of legal scholarship on the same theme: Dev Gangjee, “Panoptic Brand Protection? Algorithmic Ascendancy in Online Marketplaces” [PDF]
- Business history: Who got to decide what you could and could not buy, “good old days” Sears, Roebuck & Co. edition.
- Who got to decide: The Music Man edition [YouTube].
- Who defines the market? Do we have free will after all? Celebrate the marketplace, as The Spice Girls explain [YouTube].
- Is freedom from choice even possible in an algorithmic era? Enjoy Devo [YouTube], listen to The Borg [YouTube], and re-watch the original The Matrix (1999) [YouTube].
CLASS 26
PUBLIC LAW VS. PRIVATE POWER
Required Readings
- Continue to read selections from this new law journal article: Jeanne C. Fromer and Mark P. McKenna, “Amazon’s Quiet Overhaul of the Trademark System” [PDF] [read to the end of the file]
- Total PDF page count: 25
Optional Materials
- Download and read the whole thing here, for free [PDF]
- The Amazon Brand Registry
- eBay’s VeRO program.
- Business history in music and film: Music Popular culture has tried to warn us about the dangers of excess consumerism (The Tubes, “What Do You Want From Life?” on YouTube, 1974) and about a monolithic, comfort-producing government/corporate complex (Brazil (1985) [YouTube]) .
- Star Trek, prescient as ever in this early episode about conflict resolution via algorithms: “A Taste of Armageddon” [YouTube]