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XUAN-THAO NGUYEN, Dallas Professor of Law SMU Dedman School of Law

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XUAN-THAO NGUYEN, Dallas Professor of Law SMU Dedman School of Law NATIONALIZING TRADEMARKS: A NEW INTERNATIONAL TRADEMARK JURISPRUDENCE? XUAN-THAO NGUYEN, Dallas Professor of Law SMU Dedman School of Law State Bar of Texas 18TH ANNUAL INTELLECTUAL PROPERTY LAW COURSE March 10–11, 2005 Austin CHAPTER 4 Professor Xuan-Thao (“Swan-tao”) Nguyen (“Winn”) SMU Dedman School of Law; [email protected] Book Publications · Treatise, Intellectual Property Taxation (co-author with Professor Jeff Maine) (BNA December 2003) (with 2004 supplement) · Casebook, Intellectual Property Taxation: Problems and Materials (co-author with Professor Jeff Maine) (Carolina Academic Press, 2004) (forthcoming 2005 supplement) Law Review Publications · HOLDING INTELLECTUAL PROPERTY _____ Georgia Law Review ____ (Lead Article) (forthcoming 2005). · TAXING THE NEW INTELLECTUAL PROPERTY RIGHT __ Hastings Law Journal ___ (Lead Article) (with Professor Jeff Maine) (forthcoming 2005). · NATIONALIZING TRADEMARKS: A New International Trademark Jurisprudence? 39 Wake Forest Law Review ___ Lead Article) (forthcoming Vol. 4, 2005). · BANKRUPTING TRADEMARKS, 37 U.C. Davis Law Review 1267 (2004). · COLLATERALIZING INTERNET PRIVACY, 78 Tulane Law Review 553 (2004) (Lead article). · DIGITAL TRADEMARK RIGHT: The Troubling New Extraterritorial Reach of National Law, 81 North Carolina Law Review 483 (2003). · COMMERCIAL LAW COLLIDES WITH CYBERSPACE: The Trouble With Perfection – Insecurity Interests in the New Corporate Asset, 59 Washington and Lee Law Review 37 (2002). · CYBERPROPERTY AND JUDICIAL DISSONANCE: The Trouble with Domain Name Classification, 10 George Mason Law Review 183 (Spring 2002) (Lead article). · SHIFTING THE PARADIGM IN E-COMMERCE: Move Over Inherently Distinctive Trademarks, The E-brand, I-brand and Generic Domain Names Ascending to Power? 50 American University Law Review 937 (Symposium Issue, 2001). This law review article was cited by the Ninth Circuit Court of Appeals in Interstellar Starship Services, Ltd v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002). · SHOULD IT BE A FREE FOR ALL? The Challenge of Extending Trade Dress Protection to the Look and Feel of Web Sites, 49 American University Law Review 1233 (2001). · BLAME IT ON THE CYBERSQUATTERS: How Congress Partially Ends the Circus Among the Circuits With the Anticybersquatting Consumer Protection Act? 32 Loyola Chicago University Law Review 777 (May, 2001) (Lead article). · A CIRCUS AMONG THE CIRCUITS: Would the Truly Famous and Diluted Performer Please Stand Up? The Federal Trademark Dilution Act and Its Challenges, 1 Chicago-Kent J. Intell. Prop. 158 (2000). · THE NEW WILD WEST: Measuring and Proving Fame and Dilution Under the Federal Trademark Dilution Act, 63 Albany Law Review 201 (1999). This Article was cited by the United States Court of Appeals for the Third Circuit in a case of first impression, Times Mirror Magazines, Inc. v. Las Vegas Sports News, 212 F.3d 157, 175 (3d Cir. 2000); and Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F.Supp.2d 335 (N.J.D.C. 2002). · USING CREATIVITY TO FIGHT A $60 BILLION CONSUMER PROBLEM – Counterfeit Goods, 10 Loyola Chicago Consumer Law Review 88 (1998) (co-author with Maxim H. Waldbaum). Other Legal Publications · Security Interest in Intellectual Property and Licenses and the Revised Article 9, 23 The Licensing Journal 9 (Aspen Publisher, May 2003). · Current International Issues Relating to E-commerce: Standard Contractual Clauses for Data Transfer to Third Countries, Digital Copyright Directive & Proposed Directive on Online Privacy in the European Union, in Practising Law Institute’s Second Annual Seminar on UNDERSTANDING ELECTRONIC CONTRACTING: The Impact of Regulations, New Law & New Agreements (May, 2002). This article was re-printed in Internet Law & Business (July 2002 Issue). · European Directives Relatin g to E-commerce, in Practising Law Institute’s Understanding Electronic Contracting, UCITA, E-Signature, Federal, State and Foreign Regulation Course Book (May, 2001). This article was re-printed in Internet Law & Business (June 2001 Issue). · Intellectual Property Issues for On-line Financial Services: Trademark Issues in the World Wide West, Practising Law Institute’s New Strategies for Financial Institutions in the E-Commerce Economy Course Book (September 2000). Nationalizing Trademarks: A New International Trademark Jurisprudence? Chapter 4 TABLE OF CONTENTS I. INTRODUCTION....................................................................................................................................... 1 II. IN THE NAMES OF SARDINES AND CATFISH........................................................................................ 2 A. The EU: Claiming the Ownership in the Sardine Name ........................................................................... 2 B. The US: The Great Catfish War............................................................................................................. 3 III. GENERIC WORDS IN TRADEMARK JURISPRUDENCE.......................................................................... 4 IV. ANTI-COMPETITION THEORY – GENERIC WORDS............................................................................... 8 V. ELEVATING GENERIC WORDS TO NATIONAL TRADEMARKS? ......................................................... 10 A. Nationalizing the Catfish Trademark.................................................................................................... 10 B. Nationalizing the Sardine Trademark................................................................................................... 15 VI. GENERIC NAMES AS UNIVERSAL TRADEMARKS – GEOGRAPHIC INDICATIONS.......................... 16 A. Geographic Indications ....................................................................................................................... 16 B. The European Union’s Generic Names as Geographic Indications ......................................................... 19 VII. THE NEW INTERNATIONAL TRADEMARK JURISPRUDENCE AND GLOBAL TRADE...................... 21 VIII. ENDING THE EXP ANSIVE PROTECTION............................................................................................. 25 IX. CONCLUSION......................................................................................................................................... 29 i “When generic words become global trademarks” presentation is based on my forthcoming law review article , nationalizing trademarks: a new international trademark jurisprudence? The article will be published in the wake forest law review. Any quotations, excerpts, and distributions in whole or in parts must be attributed to the correct citation of the article in the wake forest law review. Nationalizing Trademarks: A New International Trademark Jurisprudence? Chapter 4 NATIONALIZING TRADEMARKS: A that grant it exclusive rights in the generic name sardines.2 The European Union is also demanding that NEW INTERNATIONAL all members of the World Trade Organization TRADEMARK JURISPRUDENCE? (“WTO”) stop their usage of forty-one generic names, including chablis, prosciutto, romano, mozzarella, Xuan-Thao N. Nguyen* parmesan, asiago, feta, and fontina, among others.3 The EU is lobbying for a new international law that Abstract: A new international trademark would prohibit countries from using generic names jurisprudence is currently in formation that within their own borders to identify the names of has negative impact on international trade. products.4 Under such law, no country would be able Indeed, this new trademark jurisprudence to use generic names to sell or market products in the includes the recent phenomenon of export markets.5 monopolizing the use of generic names Welcome to the new international intellectual through the elevation of such names to property right. The new international trademark trademarks of national stature and the rise of jurisprudence is in formation wherein generic names global recognition and registration of are elevated to the highest level of protection, a level geographic indication status for generic that has never before been provided to trademarks, names. Professor Nguyen identifies and including famous trademarks, wherein generic names analyzes the new trademark jurisprudence, become nationally-protected names with international and critiques its impact on international trade impact, and wherein generic names gain trade relations and language propertization. geographical indication status that commands the Professor Nguyen proposes a certification global community to recognize and protect that mark regime to end the expansion of generic geographic identity. names protection and promote fair competition. I. INTRODUCTION What can you call a catfish if you are not allowed 2. See Council Regulation 2136/89 of 21 June 1989 to call it a catfish? Not only are you prohibited from Laying Down Common Marketing Standards for Preserved using the name catfish, you may face fines and Sardines, 1989 O.J. (L 212) [hereinafter Council Regulation 2136/89]. See also infra Part V.B. imprisonment. What can you call a sardine if you are forbidden from referring to it as a sardine? What can 3. See The Status of the World Trade Organization you call parmesan if you are prohibited from using the Negotiations on Agriculture: Hearings before the House name parmesan? A sharp-flavored-hard-cheese-that- Comm. on Agriculture, 108th Cong. 360 (2003) [hereinafter Hearings] (statement of James B. Clawson, on behalf of the is-often-grated-for-use-on-pizza-spaghetti-and- Wine Inst.) (noting that many of the terms requested by
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