International Trademark Association Publishes John Shaeffer on Trademark Infringement, Dilution
In an article that runs counter to current legal affairs commentary on trademark protection, the current edition of The Trademark Reporter features the argument of Lathrop & Gage attorney John Shaeffer (Intellectual Property - Los Angeles) on how proof of infringement precludes a finding of dilution. The publication is the law journal of the International Trademark Association, and includes analytical articles from top practitioners in the U.S. dedicated to the intellectual property arena.
"Trademark infringement and trademark dilution are separate causes of action embodied in the Lanham Act that are intended to redress distinct wrongs," writes Mr. Shaeffer, who serves as the partner in charge of the firm's Los Angeles office. "Since the enactment of the first federal dilution statute, however, the vast majority of complaints that plead a dilution cause of action have also brought infringement causes of action, and the disposition of the cases have been typically in lock step -- with the plaintiff either winning or losing both claims. There should be no such overlap between infringement and dilution, and both Congress' initial amendment to the Lanham Act adding a dilution cause of action and its rewrite of the dilution statute eleven years later support this construction. Indeed, where infringement analysis ends, dilution begins.
"Our present predicament, where dilution is almost redundant of infringement, stems from the appropriate recognition that dilution can occur even though goods or services are related. Unfortunately, this fact forces courts to address the relevance to a dilution claim of evidence supporting a likelihood of confusion necessary to prove an infringement claim, including evidence of actual confusion. Many courts simply conclude that proof of a likelihood of confusion proves dilution but offer little to support their conclusion. Recognizing this trend, a number of commentators have written hoping to rationalize these results within trademark protection. This article goes in the opposite direction, and explains why this must be the case."
Mr. Shaeffer has played a key role in several high-profile trials in his career as a litigator, including Continental Forge v. Sempra, Trovan v. Pfizer, and Lockheed Martin v. United States. He also teaches New Media Law at Santa Clara School of Law. Mr. Shaeffer has extensive litigation experience and has litigated some of this nation's largest and most challenging antitrust, product liability, intellectual property and environmental cases in both state and federal court.
About Lathrop & Gage:
A leading full-service law firm, Lathrop & Gage LLP has approximately 300 attorneys in 11 offices nationwide – from Los Angeles to New York, New York. In 2010, Chambers USA ranked Lathrop & Gage’s corporate, environmental, intellectual property, labor and employment, litigation, real estate and transportation teams among the best in their regions. For more information, visit www.lathropgage.com.