Recommended Reading: The Trademark Reporter, May-June 2024 Issue

The May-June 2024 (Vol. 114 No. 3) issue of the Trademark Reporter has arrived. [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers readers an article on how the constitutional-avoidance doctrine allows courts to accommodate free speech concerns when applying the Rogers v. Grimaldi test in the wake of the U.S. Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, an article on how surveys can help brand owners facing “failure to function” refusals to register their trademarks, and a book review on the intersection of intellectual property and sustainability."

Constitutional Avoidance and Standards of Proof in Trademark Infringement Litigation: A Comment on Post–Jack Daniel’s Applications of the Rogers Test for Liability, by Theodore H. Davis Jr. - With the U.S. Supreme Court’s 2023 decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC leaving open the question of whether the Rogers v. Grimaldi test should apply in cases involving an artistic or expressive work where a defendant’s allegedly infringing use of a plaintiff’s trademark is not as a designation of source for defendant’s own goods and services, the author of this article argues that the constitutional-avoidance doctrine allows courts to accommodate free speech considerations when determining whether defendant’s use explicitly misleads consumers as to the source or content of such artistic or expressive work.

Survey Methodologies to Overcome “Failure to Function” Refusals in the U.S. Patent and Trademark Office, by R. Charles Henn Jr. - Brand owners sometimes face United States Patent and Trademark Office “failure to function” refusals to register their trademarks. The author of this article offers brand owners practical advice on how to design surveys that can provide empirical evidence showing whether an applied-for term functions as a mark.

Book Review: Intellectual Property and Sustainable Markets by Ole-Andreas Rognstad and Inger B. Orstavik, eds. Reviewed by Gabriele R. Fougner.

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TTABlog comment: This issue of the TMR is Copyright © 2024, the International Trademark Association, and is made available with the permission of the Trademark Reporter®.

Introductory Text Copyright John L. Welch 2024.