What are some of the most important issues and developments in trademark law today?
In terms of jurisprudence, I think two of the most important areas are the development of the concept of initial interest confusion, and the development of contributory and vicarious infringement in the Internet context. With respect to initial interest confusion, a tremendous amount of what trademark owners hate about Internet activity consists of third parties using their marks to divert traffic to unauthorized sites. We saw this concept in cyber squatting litigation, and now see it in the use of keywords. Related to this is the development of the concepts of contributory and vicarious infringement. It’s hard to get one’s hands around fly-by-night operators, so trademark owners go after the Internet service provider or registry or search engine. I think these are the key areas in which we are going to see development in U.S. jurisprudence.
I also think that the development of the UDRP is an astounding success in that it represents a model of dispute resolution. There are times that a trademark owner has to walk away from the misuse of a mark in a domain because litigation will cost $50,000, but a UDRP can cost under $3000. The UDRP is not a perfect solution, but it has absolutely achieved what it set out to do. I still do a lot of them, probably one a week. I think the UDRP may pave the way to other forms of alternate dispute resolution for IP problems.
In addition, technological systems are developing to take some of the drudgery out of trademark practice. For example, xml, which stands for “eXtensible markup language” allows structured information, such as the information required in most trademark applications around the world, to pass from one system to another. So, for example, the information in a client’s database in the United States could be coded using XML to label the relevant information, such as the mark, the description of goods, and
applicant’s address, and transmitted into corresponding ‘buckets’ used by whatever software application is used by the foreign associate or foreign trademark office.