Recommended Reading: The Trademark Reporter Issue of November-December 2020

A holiday present for all of us: the November–December 2020 (Vol. 110 No. 6) issue of The Trademark Reporter (TMR). Kudos to Editor-in-Chief Willard Knox for this impressive collection. Willard provided the summary of each article that is presented below.

In this issue we offer readers an informative and entertaining article investigating the quirks of the Lanham Act’s Section 2(a) and its right-of-publicity-style ground for refusal of registration based on false suggestion of a connection; an article providing an in-depth exploration of the U.S. Supreme Court’s 2020 decision in Romag Fasteners, Inc. v. Fossil, Inc.; a book review of an overview of the likelihood of confusion analysis under European Union law; and a book review of a resource targeted to C-suite executives on the importance of integrating intellectual property into the company’s strategy. 

Giving the Wrong Impression: Section 2(a)’s False Suggestion of a Connection, by Anne Gilson LaLonde. This article investigates the quirks of the Lanham Act’s Section 2(a), which provides a right-of-publicity-style ground of refusal of registration to celebrities, universities with nicknames, and international companies seeking protection of their well-known marks in the United States (where those companies are not using such marks)—and without a showing of trademark rights, use in commerce, or likelihood of confusion. 

Awarding Some Profits Against Unintentional Infringers, by Tony Bortolin. This article explores the U.S. Supreme Court’s decision in Romag Fasteners, Inc. v. Fossil, Inc., 140 S. Ct. 1492 (2020), in which the Court unanimously ruled that willfulness is not a precondition to a court’s ability to award an infringer’s profits. The article agrees that the courts have this authority (except as may be modified by statute), but also provides a reminder of the sometimes-forgotten option of exercising that authority by awarding a percentage of those profits (rather than simply awarding all or none) taking that lack of intention into consideration as one of the factors. 

Book Review: The Confusion Test in European Trade Mark Law, by Ilanah Fhima and Dev S. Gangjee. Reviewed by Désirée Fields The review of this book by rising scholars Ilanah Fhima and Dev S. Gangjee finds it provides a clear and comprehensive overview of the likelihood of confusion analysis under European Union law, touching on all aspects and nuances of the law without delving into too much detail. 

Book Review: The Great Catapult: How Integrated IP Management Will Shoot Your Brand to Success, by Zeeger Vink with James Nurton. Reviewed by Stuart Green. The review of this book by well-known practitioner Zeeger Vink (with case studies by James Nurton) finds it destined for a place on the bookshelf of all forward-looking executives and all those practitioners who take seriously their responsibility to provide clients with easily understandable, holistic advice.

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TTABlog comment: Once again, I thank The Trademark Reporter for allowing me to make this issue available to my dear (and not-so-dear) readers. This issue of the TMR is Copyright © 2020, the International Trademark Association and is made available with the permission of The Trademark Reporter®.

Text Copyright John L. Welch 2020.