2018 Winter Distinguished Shidler Lecture
Trademarks and Commercial Reality: Reviving a Real Law of Unfair Competition? with Prof. Graeme Dinwoodie
March 1, 2018
4:00 PM - 6:00 PM
Reception from 4–5 p.m. in the First Floor Galleria
Lecture from 5–6 p.m. in Room 138
University of Washington School of Law
William H. Gates Hall
In the United States, trademark rights are classically acquired by the mark owner's use, and their scope is defined by the reality of use in the marketplace. Trademark registration in the United States has historically been seen as merely confirmation of rights created by use in the marketplace, and a procedural device designed to facilitate enforcement. The conceptual nature of registration in registration-based systems — found in most of the rest of the world, including the European Union — is different from the traditional U.S. understanding. In such systems, registration creates and defines trademark rights. But the stated purposes of the registration provisions of the Lanham Act might make us question the extent to which the historical conception of registration in the United States still pertains. This lecture will explore the relationship between registered and unregistered rights in U.S. trademark law, and the extent to which the commercial reality of the marketplace informs our assessment of the existence and scope of trademark rights. In so doing, it will consider whether there may be a greater role for unregistered protection, such as passing off or unfair competition or well-known mark protection, to offer different forms or scope of protection than that secured by registration.
Graeme B. Dinwoodie is Global Professor of Intellectual Property Law at Chicago-Kent College of Law. He returned to Chicago in 2018 after nine years as the Professor of Intellectual Property and Information Technology Law at the University of Oxford, where he was also Director of the Oxford Intellectual Property Research Centre, and a Professorial Fellow of St. Peter’s College. Immediately prior to taking up the IP Chair at Oxford, Professor Dinwoodie was a Professor of Law at Chicago-Kent College of Law, which he first joined in 2000 from the University of Cincinnati College of Law, where he was a three-time recipient of the Goldman Prize for Excellence in Teaching. From 2005–2009, he also held a Chair in Intellectual Property Law at Queen Mary College, University of London, and he has held a number of visiting or honorary positions, including as the Yong Shook Lin Visiting Professor of Intellectual Property Law at the National University of Singapore, a Global Professor of Law at New York University School of Law, an Honorary Professor of Law at the University of Strasbourg, the George P. Smith II Distinguished Visiting Chair at Indiana University Maurer School of Law, and a visiting professor of law at the University of Pennsylvania School of Law.
Professor Dinwoodie holds an LLB (Hons) degree from the University of Glasgow, an LL.M. degree from Harvard Law School (where he was a John F. Kennedy Scholar), and a J.S.D. degree from Columbia Law School (where he was a Burton Fellow). He was elected as a member of the American Law Institute in 2003, and served as President of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP) from 2011-2013. In 2008, the International Trademark Association awarded Professor Dinwoodie the Pattishall Medal for Teaching Excellence in Trademark Law.
Professor Dinwoodie is the author of many books and casebooks, including A Neofederalist Vision of TRIPS: The Resilience of the International Intellectual Property Regime (Oxford Univ. Press 2012) (with Rochelle Dreyfuss), Trademarks and Unfair Competition: Law and Policy (4th ed 2014) (with Mark Janis), Trade Dress and Design Law (2010) (with Mark Janis), and International Intellectual Property Law and Policy (2d ed. 2008) (with Hennessey, Perlmutter and Austin), as well as numerous articles, book chapters and other substantial works. His scholarship has appeared in several leading law reviews and is widely cited by scholars in Europe, the United States and elsewhere. He received the 2008 Ladas Memorial Award from the International Trademark Association for his article Confusion Over Use: Contextualism in Trademark Law (with Janis).
Prior to teaching, Professor Dinwoodie practiced for five years as a litigator with Sullivan and Cromwell in New York. He is a door tenant at 3 New Square chambers in London. Professor Dinwoodie has served as a consultant to the World Intellectual Property Organization on matters of private international law, as an Adviser to the American Law Institute Project on Principles on Jurisdiction and Recognition of Judgments in Intellectual Property Matters, and as a consultant to the United Nations Conference on Trade and Development on the Protection of Traditional Knowledge. He currently serves as an Adviser on the ALI’s project on the Restatement of Copyright Law.