A Twenty-Year Retrospective on United States Trademark Law in Ten Cases

Copyright and Trademark and Intellectual Property

Article Snapshot


Marshall Leaffer


Fordham Intellectual Property, Media & Entertainment Law Journal, Vol. 23, No. 2, pp. 655-686, 2013


Over the last twenty years, trademark law has adjusted well to the challenges of the Internet and global commerce. Trademark law is seen as a property right that protects consumers and firm’s reputations.

Policy Relevance

Legislators should clarify protections from liability for online service providers. Lawmakers should give foreign trademark owners more protection in the United States.

Main Points

  • Three factors have driven changes to trademark law over the past twenty years:
    • The theory that trademarks help consumers find what they seek and improves competition;
    • The sale of goods in the global marketplace;
    • The Trade Related Aspects of Intellectual Property (TRIPS) agreement, which supported the harmonization of trademark law worldwide.
  • The old theory that trademarks give firms monopoly power is disfavored today.
  • In 2009, a key case ruled that showing an intent to deceive was necessary to claim that a trademark was obtained by fraud, reducing the odds of losing trademark protection by mistake.
  • United States courts have hesitated to protected well-known foreign-owned trademarks; legislators should consider requiring recognition of the trademarks of trading partners.
  • In 2005, the courts ruled that U.S. trademark law could apply abroad if activity abroad had a substantial effect in the United States.
  • In 2010, in Tiffany v. eBay Inc., the court decided that online service providers like eBay would not be liable for the sale of counterfeit items as long as it was not willfully turning a blind eye to their sale; reforming trademark law to clarify when online service providers are immune from suit for user’s conduct would be helpful.
  • Trademark defenses such as parody and other types of fair use can be used to defend against a claim that a trademark has been diluted, confusing consumers.
  • In 2011, Network Automation v. Advanced Systems Concepts, adopted the realistic view that consumers understand the need to be careful navigating between sites online, making it harder to claim that similar Web sites confused consumers.


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