N.Y.U. Proceedings

Exploring New Approaches to Unsettled Legal Questions

Tag: Trademark Law

From Aspirin to Rolls Royce: Upholding Expressive Freedoms in the Wake of Rising Trademark Rights

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On April 14, 2026

In Contributions

by Keon Park*

With the rise of the modern trademark that veers into the realm of constitutional speech rights, circuit courts have adopted varying approaches to balance competing trademark interests and free speech protections. The majority approach to striking this judicial balance among circuit courts is governed by the Rogers test, a threshold inquiry that, if met, almost invariably calls for dismissal of trademark infringement claims for expressive works. However, the Supreme Court in Jack Daniel’s Properties Inc. v. VIP Products LLC partially ruled against the use of the Rogers test for marks used to identify the source of a product. While circuit courts have continued to apply Rogers in other contexts, several have called for an alternate approach, questioning Rogers’ validity as a whole. But given the rise of non-traditional purposes of trademarks in the modern era of advertising where brands such as Rolls-Royce are associated with quality rather than solely signifying the maker of the car, courts should continue to use the Rogers balancing test to protect the expressive speech rights of the general public.

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Lanham-Strung: How the Supreme Court Misunderstood the Proper Scope of Extraterritorial Liability under the Lanham Act

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On March 26, 2026

In Contributions

by Lyndsey Garbee*

 The presumption against extraterritoriality is a canon of construction meant to limit U.S. laws to matters of domestic concern. However, the Supreme Court has held that this presumption can be overcome when domestic conduct occurs that is relevant to the statute’s focus. In Abitron v. Hetronics, the Supreme Court found that the relevant conduct for purposes of the Lanham Act, which regulates trademark rights and liabilities, is domestic use of the infringing mark in commerce. However, the Lanham Act only prohibits uses in commerce that are likely to cause consumer confusion. Based on the text of the Lanham Act, the Court’s extraterritoriality precedent, and the purpose of the Lanham Act, this Contribution argues that the proper analysis of the extraterritorial application of the Lanham Act turns not on domestic use in commerce, but on whether such use is likely to cause domestic consumer confusion.

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Nothing to Latch Onto: Trademark Law’s Unpredictability in Laches Defenses Calls for a Statute of Limitations

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On October 29, 2024

In Contributions

by Max Schneider*

Trademark ownership is on the rise, and with it comes an increase in trademark infringement claims under the Lanham Act. This uptick may be in part because the Lanham Act does not have a statute of limitations. Alleged infringers therefore, often raise the laches defense. Under a laches defense, if the trademark owner unreasonably delays in asserting their claim, and the delay unduly prejudices the alleged infringer, then courts may find that the infringement suit is time-barred, or they may say the equities weigh in favor of letting the case proceed. While an equitable doctrine like laches balances the harms in each case, it opens the door for far more infringement suits that may otherwise have been clearly time-barred by a statute of limitations. Given the sharp increase in infringement suits, more and more defendants are asserting laches defenses. This Contribution suggests that Congress should amend the Lanham Act to include a statute of limitations. Doing so would create uniformity across areas of intellectual property law, provide concrete notice to trademark owners, reduce infringement suits that crowd courts, and alleviate inconsistent rulings that muddle the meanings of “unreasonable” and “prejudice.”

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