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Minor Rescuecom question

By Rebecca Tushnet

Is it just me or does the Rescuecom opinion appendix have a bizarre reading of ?bona fide? to mean ?good faith generally? rather than ?real attempt to use the mark as a mark and not just reserve rights??

See: ?In order to qualify to register one?s mark and receive the enhanced protections that flow from registration (giving the world notice of one?s exclusive rights in the mark), the owner must have made ?bona fide use of the mark in the ordinary course of trade, and not merely to reserve a right in the mark.? Id. § 1127. . . . [I]t would make no sense whatsoever for Congress to have insisted, in relation to § 1114 for example, that one who ?without the consent of the registrant . . . use[d]. . . [a] counterfeit . . . of a registered mark in connection with the sale . . . of . . . goods [thereby] caus[ing] confusion? will be liable to the registrant only if his use of the counterfeit was a ?bona fide use of [the] mark in the ordinary course of trade.? Id. §§ 1114 & 1127. Such a statute would perversely penalize only the fools while protecting the knaves, which was surely not what Congress intended.?

But if ?bona fide? just means real use ? good faith in use ? which is strongly suggested by the words immediately following, then there?s no conceptual problem of knavery at all. The court returns to this rationale numerous times, and I think it?s quite unfounded, though I agree that trademark use can?t do the work being asked of it. My own preference would be for courts to continue the common-law development of secondary liability to make clear that Google is not directly liable for any infringement, but could be secondarily liable is those standards were met.

Full post as published by 43(B)log on April 04, 2009 (boomark / email).