Version 3.0 of the Trademark Law casebook now posted

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    • #640
      Barton Beebe

      Hi everyone,

      Version 3.0 of the casebook is now posted on the casebook website in .pdf and .doc formats:

      Below is a summary of the updates included in Version 3.0. These updates are also listed in an easier-to-read .doc attached to this posting if that’s any help.

      I’ve also posted redlines of the changes from Version 2.0 to Version 3.0.

      Thanks to everyone who submitted suggested edits, additions, and corrections. I wasn’t able to honor all of them in this default version, but I hope you’ll find it to be an improvement.

      Thanks, Barton

      Significant Changes from v2.0 to v3.0
      23 July 2016

      Listed here are the major changes from Version 2.0 to Version 3.0. New excerpted opinions are given in bold.

      Refer to the redlines posted on the casebook website for less significant changes (correction of typos, grammar, etc.). In recent versions of Microsoft Word, load the redline, go to the review tab, and use the “Next” function to proceed through all changes.


      • Edited-down the Trade-Mark Cases by deleting four paragraphs on old commerce clause jurisprudence

      Part I

      • Part I.A.2.a: Edited-down Qualitex by deleting five paragraphs on previous trademark case law

      • Part I.B.1.a: Added comment on the meaning of the “affects the cost or quality” portion of the Inwood test and added comment on functionality and food flavors in light of New York Pizzeria, Inc. v. Syal, 56 F. Supp. 3d 875, 882 (S.D. Tex. 2014).

      • Part I.B.1.c.ii: Deleted the entire discussion of the Ninth Circuit and Aesthetic Functionality Doctrine

      • Part I.B.2.a: Added brief reference to In re Christopher C. Hinton, 116 U.S.P.Q.2d 1051 (TTAB 2015) (on THCTea)

      • Part I.B.3: Deleted In re Marsha Fox and In re Heeb Media. Added brief discussion of scandalousness and disparagement doctrine and added In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015) (as corrected Feb. 11, 2016) (en banc)

      • Part I.D.3.d: Added discussion of B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015)

      • Part I.D.7: Deleted various paragraphs from Park N’ Fly

      Part II

      • Part II.A.2: Deleted Bosley Medical v Kremer and added excerpt from Radiance Foundation, Inc. v. National Association for the Advancement of Colored People, 786 F.3d 316 (4th Cir. 2015)

      • Part II.B.4: Added images for Smack Apparel case. Added comment on the “circularity problem” in trademark law.

      • Part II.B.5: Deleted old Multi Time Machine opinion and added new Multi Time Machine opinion.

      • Part II.B.7: Deleted A & H Sportswear and added Uber Promotions, Inc. v. Uber Technologies, Inc., No. 15 Civ. 206, 2016 WL 617450 (N.D. Fla. Feb. 16, 2016)

      • Part II.C.1: Added comment on fame surveys

      • Part II.C.2: Added comment on Sheff’s study of TTAB dilution decisions

      Part III

      • Part III.B.1: Deleted Tiffany v eBay on nominative fair use in the Second Circuit and replaced with Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC No. 14 Civ. 3456, 2016 WL 2893172 (2d Cir. May 18, 2016), which finally establishes the Second Circuit’s approach to nominative fair use

      • Part III.C.2: Added comment on virtual reality games and trademark rights.

      • Part III.E: Promoted Assignment in Gross to its own subpart

      Part IV

      No changes

      Part V

      No changes

      Part VI

      • Part VI.B.1: Added brief reference to Romag Fasteners, Inc. v. Fossil, Inc., 817 F.3d 782 (Fed. Cir. March 31, 2016)

      • Part VI.D: Discussed influence of Octane Fitness

    • #644
      Avatar photoMichael Madison

      Thanks, Barton.

      I have a formatting question for you (though others are welcome to chime in):

      This Fall will be my third time using the book, and the students and I generally love it. Each year, however, I re-mix more and more of it (the biggest change last year was moving the assignments in gross/no naked licensing material to the front of the syllabus; the biggest change this year is clustering “[relatively] novel theories of liability and [relatively] novel defenses” as a group at the end of syllabus). My Fall 16 syllabus is now up at

      Using the Word files to do this makes re-ordering the text feasible but awkward.

      So, I wonder whether the text of the whole book could be rendered and made available in a more “modular” format, so that dragging and dropping [cases] [sections] [parts] of the text would allow an adopter to create a custom “book.” The analogy I have in mind is OOP in computer programming. Each unit of text could be moved around as the adopter wished; when the sequence of units was “locked in” to the adopter’s satisfaction, the product could be rendered as a single “book” (or series of Parts), in Word, and/or PDF, and/or whatever.

      I may take this on myself, if the idea doesn’t appeal to you or is beyond the scope of the time that you have available. In that event, I’m curious to know how you produce the book in the first place: Do you manage all of the text in MS Word, or do you use writing software (and if so, which product)? I’ll ask our folks locally if they have ideas for how to manage this.



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