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Last modified: Tuesday, December 4, 2012

IU Kelley professor's research leads to overturning error in federal trademark statute

Dec. 4, 2012

BLOOMINGTON, Ind. -- Precise copy editors everywhere can explain the importance of a simple, misplaced comma.

As an attorney practicing trademark law several years ago in Washington, D.C., Tim Lemper first noticed such a typo in a new federal law that had been passed to protect companies, their trademarks and their brands.

But few, other than Lemper, thought the errant punctuation, inserted during the drafting of the Trademark Dilution Revision Act of 2006, would affect commercial use of a famous name such as "Oscar."

After arriving at Indiana University's Kelley School of Business as a clinical associate professor of business law, Lemper decided to research the issue. His research, which included a legal solution, was published in two legal journals and became the basis for Congress correcting the problem this fall.

"Part of my dilemma in the first place in choosing to write about this was how practical of an issue was it -- was it a 'real world' kind of issue or was it an academic 'what-if?" Lemper said.

The drafting error and Lemper's proposed solution were brought to light in Lemper's article, "Beware the Scrivener's Error: Curing the Drafting Error in the Federal Registration Defense to Trademark Dilution Claims," co-authored by Lemper and one of his former IU students, Joshua R. Bruce. The article appeared in the Texas Intellectual Property Law Journal in 2011.

Bruce, a Kelley Scholar and an Adam Herbert Presidential Scholar who earned a bachelor's degree in political science in May from the College of Arts and Sciences, presented the paper with Lemper at an academic conference.

A revised version of the article, "The Dilution Defense Congress Never Meant to Create (and Needs to Fix)," was also published in 2011 in The Trademark Reporter, a law journal published by the International Trademark Association.

In drafting the 2006 law, Congress intended to provide greater protection for famous trademarks. As part of that law, Congress sought to protect owners of federal trademark registrations from dilution claims based on state law, but not federal law.

As a result of the drafting error, however, owners of federal registrations received complete immunity from any type of dilution claim, under state or federal law, even if the registrant was using a mark that diluted the distinctiveness or tarnished the reputation of a famous mark.

"It really was a case of a misplaced comma," Lemper explained. "The legislation started in the House. In the Senate, however, the drafters tried to revise the language to make it more clear, but apparently inadvertently changed the legal effect of the law."

The first victim of the drafting error was the Academy of Motion Picture Arts and Sciences, which uses the famous mark "Oscar" for its annual awards show recognizing cinematic achievement.

Earlier this year, the Academy sought to prevent the Alliance of Professionals and Consultants from using the mark "Oscar" for awards recognizing excellence in business consulting and information technology. The Academy claimed that the alliance's use of the mark "Oscar" diluted the distinctiveness of the Academy's famous mark.

But because of the drafting error, the Academy was legally prohibited from asserting a dilution claim because the Alliance of Professionals and Consultants had obtained a federal registration for its mark.

"It was clear from the legislative history that this was a drafting error," Lemper said. "I discussed the issue with several people in the trademark bar, but they didn't think it was a real threat. They assumed courts and the Trademark Trial and Appeal Board, which hears challenges to federal trademark registrations, would not apply the law in a way that was so obviously a drafting error.

"But courts and the Trademark Trial and Appeal Board apply statutes as they are written, not necessarily as they were intended to be written."

After Lemper's articles were published, he was contacted by Bill Barber, president of the American Intellectual Property Law Association. Using Lemper's articles as a catalyst, the association and other intellectual property organizations lobbied Congress to correct the drafting error in the statute.

This fall, Congress passed legislation to fix the drafting error identified by Lemper, even using the specific language Lemper proposed. Rep. Lamar Smith, R-Texas, cited Lemper's articles in the Congressional Record while discussing the need to amend the statute.

President Barack Obama signed the amendment into law Oct. 5. Lemper heard the news through a congratulatory email from Barber.

"Your article has proven to be a real contribution to trademark owners and the trademark bar," Barber wrote Lemper.

"It was a dream situation for me," Lemper said. "The reason I came to Indiana University and the Kelley School of Business was to focus my work on issues that impact the business environment, not just abstract issues of academic interest only to professors."

Editors: Copies of professor Lemper's papers are available by contacting George Vlahakis at 812-855-0846 or