Marc A Lieberstein

May 12, 2008 | National Law Journal

Brand owners must beware the franchise surprise when they license their trademarks. In many states the statutory definition of franchise can be construed broadly to include relationships between brand owners and their trademark licensees even though neither party intended to create a franchise. The accidental creation of a franchise can have significant financial consequences for a brand owner's business in the form of damages, rescission of the agreement, and fees or fines for noncompliance.

By Marc A. Lieberstein and Rebecca L. Griffith / Special to The National Law Journal

11 minute read

May 08, 2006 | New Jersey Law Journal

There may be an expectation or assumption among large corporate owners of trademarks that the anticipated amendments to the Federal Trademark Dilution Act of 1996 (FTDA), likely to be enacted into law this term, will strengthen their arsenal to fight pesky infringers. But trademark owners may need to lower their expectations and be wary of what they wish for.

By Stephen W. Feingold, Marc A. Lieberstein and Cecelia Kehoe Dempsey

14 minute read

May 31, 2006 | Law.com

The "nontrademark use" defense is becoming increasingly popular with companies fighting infringement claims.

By Stephen Feingold, Marc A. Lieberstein and Cecelia Kehoe Dempsey

11 minute read

May 26, 2006 | Law.com

To avoid liability for trademark infringement relating to the sale of keywords corresponding to trademarks, search engines are attacking the concept that trademark owners should be able to protect the "commercial magnetism" of their marks. The emerging "nontrademark use" defense permits a finding of noninfringement regardless of the existence of confusion. This complete unfettering of trademark law from confusion in the context of infringement reflects a growing trend in the courts.

By Stephen Feingold, Marc A. Lieberstein and Cecelia Kehoe Dempsey

11 minute read