Vol. 96 ANNUAL INDEX 2006 TABLE OF CONTENTS. Articles and Reports Authors... 1 Titles... 4 Subjects... 6
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1 Vol. 96 ANNUAL INDEX 2006 TABLE OF CONTENTS Articles and Reports Authors... 1 Titles... 4 Subjects... 6
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3 ANNUAL INDEX 2006 AUTHORS Ajami, Alexandre Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: Celebrity Is Not Everything Appel, Seth I. and D. Peter Harvey The Declaratory Judgment Response to a Cease and Desist Letter: First-to-File or Procedural Fencing? Assié, Christopher K. and Sophie Picard The BARBIE Case: Fame Is Not Everything Banner, Brian E. Trademark Infringement Remedies (Book Review) Bently, Lionel and Brad Sherman The Impact of European Geographical Indications on National Rights in Member States Blanchard, Paul D., Lisa R. Vatch and Andrea P. Flewelling The BARBIE Case: The Supreme Court of Canada Restates the Test for Trade-mark Confusion von Bomhard, Verena Dormant Trademarks in the European Union Swords of Damocles? Bourbonnais, Sylvie-Émmanuell and Boya Odutola Odutola on Canadian Trade-mark Practice (Book Review) Brauneis, Robert and Roger E. Schechter Geographic Trademarks and the Protection of Competitor Communication Burkitt, Daniel and Neil Wilkof Trade Mark Licensing (Book Review) Chang, David, Maria Nelson and Michelle Vizurraga Counterfeit Pharmaceuticals: A Worldwide Problem Chestek, Pamela S. Who Owns the Mark? A Single Framework for Resolving Trademark Ownership Disputes Chicoine, Caroline and Jennifer Visintine The Role of State Trademark Dilution Statutes in Light of the Trademark Dilution Revision Act of Christofolo, Rosemarie, Christy Hubbard, Paul Tackaberry and Peter Wild The Thirteenth Annual International Review of Trademark Jurisprudence...267
4 2 ANNUAL INDEX, 2006 Vol. 96 TMR Davis, Theodore H., Jr. and Jordan Weinstein Annual Review: The Fifty-Eighth Year of Administration of the Lanham Trademark Act of Flewelling, Andrea P., Blanchard, Paul D. and Lisa R. Vatch The BARBIE Case: The Supreme Court of Canada Restates the Test for Trade-mark Confusion Gamache, Barry and Jacques A. Léger, Q.C. Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: The Protection of Famous Trade-marks in Canada Harvey, D. Peter and Seth I. Appel The Declaratory Judgment Response to a Cease and Desist Letter: First-to-File or Procedural Fencing? Holloway, James J. Canadian Anti-Counterfeiting Laws & Practice: A Case for Change Hubbard, Christy, Rosemarie Christofolo, Paul Tackaberry and Peter Wild The Thirteenth Annual International Review of Trademark Jurisprudence Jolliffe, R. Scott and Kevin Sartorio The Rebirth of Section 22 of Canada s Trade-marks Act as an Anti-Dilution Remedy Klein, Robert, Joel H. Steckel and Shelley Schussheim Dilution Through the Looking Glass: A Marketing Look at the Trademark Dilution Revision Act of Léger, Jacques A., Q.C. and Barry Gamache Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: The Protection of Famous Trade-marks in Canada Levy, Richard S. The LEGO Case: The Supreme Court of Canada Makes It Harder to Protect Product Shapes as Trademarks Lue, Henry and Bruce W. Stratton Lego v. Mega Bloks in the Supreme Court of Canada: Ephemeral Rights in Toy Bricks MacFarlane, Robert H.C. and Christine M. Pallotta Kirkbi AG and Lego Canada Inc. v. Ritvik Holdings Inc.: A Review of the Canadian Decisions McCormick, Kevin K. Ding You Are Now Free to Register That Sound Mitchell, Glenn Take Me Out [of] the Ball Game? U.S. District Court Rejects Proprietary Rights in Player Names and Statistics Murphy, John M. The Confusing Similarity Standard in Mexican Trademark Law Nelson, Maria, Michelle Vizurraga and David Chang Counterfeit Pharmaceuticals: A Worldwide Problem
5 Vol. 96 TMR AUTHORS 3 Odutola, Boya and Sylvie-Émmanuell Bourbonnais Odutola on Canadian Trade-mark Practice (Book Review) Pallotta, Christine M. and Robert H.C. MacFarlane and Christine M. Pallotta Kirkbi AG and Lego Canada Inc. v. Ritvik Holdings Inc.: A Review of the Canadian Decisions Picard, Sophie and Christopher K. Assié The BARBIE Case: Fame Is Not Everything Rappeport, Mike Response to Survey Methodology Articles Rest, Elizabeth J. Lost in Translation: A Critical Examination of Conflicting Decisions Applying the Doctrine of Foreign Equivalents Roffe, Pedro Resource Book on TRIPS and Development, by UNCTAD-ICSTD (Book Review) Sartorio, Kevin and R. Scott Jolliffe The Rebirth of Section 22 of Canada s Trade-marks Act as an Anti-Dilution Remedy Schechter, Roger E. and Robert Brauneis Geographic Trademarks and the Protection of Competitor Communication Schneider, Marius and Olivier Vrins Enforcement of Intellectual Property Rights Through Border Measures Law and Practice in the EU (Book Review) Schussheim, Shelley, Joel H. Steckel and Robert Klein Dilution Through the Looking Glass: A Marketing Look at the Trademark Dilution Revision Act of Severson, Karen P. Filer Beware: Medinol Standard Set Forth by the United States Patent and Trademark Office Sherman, Brad and Lionel Bently The Impact of European Geographical Indications on National Rights in Member States Steckel, Joel H., Robert Klein and Shelley Schussheim Dilution Through the Looking Glass: A Marketing Look at the Trademark Dilution Revision Act of Stratton, Bruce W. and Henry Lue Lego v. Mega Bloks in the Supreme Court of Canada: Ephemeral Rights in Toy Bricks Swann, Jerre B. An Interdisciplinary Approach to Brand Strength Tackaberry, Paul, Rosemarie Christofolo, Christy Hubbard and Peter Wild The Thirteenth Annual International Review of Trademark Jurisprudence...267
6 4 ANNUAL INDEX, 2006 Vol. 96 TMR Vatch, Lisa R., Paul D. Blanchard and Andrea P. Flewelling The BARBIE Case: The Supreme Court of Canada Restates the Test for Trade-mark Confusion Visintine, Jennifer and Caroline Chicoine The Role of State Trademark Dilution Statutes in Light of the Trademark Dilution Revision Act of Vizurraga, Michelle, Maria Nelson and David Chang Counterfeit Pharmaceuticals: A Worldwide Problem Vrins, Olivier and Marius Schneider Enforcement of Intellectual Property Rights Through Border Measures Law and Practice in the EU (Book Review) Wang, Min-Chiuan The Asian Consciousness and Interests in Geographical Indications Weinstein, Jordan and Theodore H. Davis, Jr. Annual Review: The Fifty-Eighth Year of Administration of the Lanham Trademark Act of Wild, Peter, Rosemarie Christofolo, Christy Hubbard and Paul Tackaberry The Thirteenth Annual International Review of Trademark Jurisprudence Wilkof, Neil and Daniel Burkitt Trade Mark Licensing (Book Review)778 Zaichowsky, J.L. The Psychology Behind Trademark Infringement and Counterfeiting (Book Review) TITLES Annual Review: The Fifty-Eighth Year of Administration of the Lanham Trademark Act of 1946 Theodore H. Davis, Jr. and Jordan Weinstein...1 The Asian Consciousness and Interests in Geographical Indications Min-Chiuan Wang The BARBIE Case: Fame Is Not Everything Sophie Picard and Christopher K. Assié The BARBIE Case: The Supreme Court of Canada Restates the Test for Trade-mark Confusion Paul D. Blanchard, Lisa R. Vatch and Andrea P. Flewelling Canadian Anti-Counterfeiting Laws & Practice: A Case for Change James J. Holloway The Confusing Similarity Standard in Mexican Trademark Law John M. Murphy Counterfeit Pharmaceuticals: A Worldwide Problem Maria Nelson, Michelle Vizurraga and David Chang The Declaratory Judgment Response to a Cease and Desist Letter: First-to-File or Procedural Fencing? D. Peter Harvey and Seth I. Appel...639
7 Vol. 96 TMR TITLES 5 Dilution Through the Looking Glass: A Marketing Look at the Trademark Dilution Revision Act of 2005 Joel H. Steckel, Robert Klein and Shelley Schussheim Ding You Are Now Free to Register That Sound Kevin K. McCormick Dormant Trademarks in the European Union Swords of Damocles? Verena von Bomhard Enforcement of Intellectual Property Rights Through Border Measures Law and Practice in the EU Olivier Vrins and Marius Schneider (Book Review) Filer Beware: Medinol Standard Set Forth by the United States Patent and Trademark Office Karen P. Severson Geographic Trademarks and the Protection of Competitor Communication Robert Brauneis and Roger E. Schechter The Impact of European Geographical Indications on National Rights in Member States Lionel Bently and Brad Sherman An Interdisciplinary Approach to Brand Strength Jerre B. Swann Kirkbi AG and Lego Canada Inc. v. Ritvik Holdings Inc.: A Review of the Canadian Decisions Robert H.C. MacFarlane and Christine M. Pallotta The LEGO Case: The Supreme Court of Canada Makes It Harder to Protect Product Shapes as Trademarks Richard S. Levy Lego v. Mega Bloks in the Supreme Court of Canada: Ephemeral Rights in Toy Bricks Bruce W. Stratton and Henry Lue Lost in Translation: A Critical Examination of Conflicting Decisions Applying the Doctrine of Foreign Equivalents Elizabeth J. Rest Odutola on Canadian Trade-mark Practice Boya Odutola and Sylvie-Émmanuell Bourbonnais (Book Review) The Psychology Behind Trademark Infringement and Counterfeiting J.L. Zaichowsky (Book Review) Resource Book on TRIPS and Development, by UNCTAD- ICSTD Pedro Roffe (Book Review) Response to Survey Methodology Articles Mike Rappeport The Rebirth of Section 22 of Canada s Trade-marks Act as an Anti-Dilution Remedy Kevin Sartorio and R. Scott Jolliffe The Role of State Trademark Dilution Statutes in Light of the Trademark Dilution Revision Act of 2006 Caroline Chicoine and Jennifer Visintine
8 6 ANNUAL INDEX, 2006 Vol. 96 TMR Take Me Out [of] the Ball Game? U.S. District Court Rejects Proprietary Rights in Player Names and Statistics Glenn Mitchell The Thirteenth Annual International Review of Trademark Jurisprudence Rosemarie Christofolo, Christy Hubbard, Paul Tackaberry and Peter Wild Trademark Infringement Remedies Brian E. Banner (Book Review) Trade Mark Licensing Neil Wilkof and Daniel Burkitt (Book Review) Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: Celebrity Is Not Everything Alexandre Ajami Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: The Protection of Famous Trade-marks in Canada Jacques A. Léger, Q.C. and Barry Gamache Who Owns the Mark? A Single Framework for Resolving Trademark Ownership Disputes Pamela S. Chestek SUBJECTS ADVERTISING Making Puffery Determinations in Lanham Act False Advertising Cases: Surveys, Dictionaries, Judicial Edicts and Materiality Tests Richard J. Leighton ASIA The Asian Consciousness and Interests in Geographical Indications Min-Chiuan Wang BOOK REVIEW Enforcement of Intellectual Property Rights Through Border Measures Law and Practice in the EU Olivier Vrins and Marius Schneider (Book Review) Odutola on Canadian Trade-mark Practice Boya Odutola and Sylvie-Émmanuell Bourbonnais (Book Review) The Psychology Behind Trademark Infringement and Counterfeiting J.L. Zaichowsky (Book Review) Resource Book on TRIPS and Development, by UNCTAD- ICSTD Pedro Roffe (Book Review) Trademark Infringement Remedies Brian E. Banner (Book Review) Trade Mark Licensing Neil Wilkof and Daniel Burkitt (Book Review)...778
9 Vol. 96 TMR SUBJECTS 7 BRANDS An Interdisciplinary Approach to Brand Strength Jerre B. Swann CANADA The BARBIE Case: Fame Is Not Everything Sophie Picard and Christopher K. Assié The BARBIE Case: The Supreme Court of Canada Restates the Test for Trade-mark Confusion Paul D. Blanchard, Lisa R. Vatch and Andrea P. Flewelling Canadian Anti-Counterfeiting Laws & Practice: A Case for Change James J. Holloway Kirkbi AG and Lego Canada Inc. v. Ritvik Holdings Inc.: A Review of the Canadian Decisions Robert H.C. MacFarlane and Christine M. Pallotta The LEGO Case: The Supreme Court of Canada Makes It Harder to Protect Product Shapes as Trademarks Richard S. Levy Lego v. Mega Bloks in the Supreme Court of Canada: Ephemeral Rights in Toy Bricks Bruce W. Stratton and Henry Lue The Rebirth of Section 22 of Canada s Trade-marks Act as an Anti-Dilution Remedy Kevin Sartorio and R. Scott Jolliffe Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: Celebrity Is Not Everything Alexandre Ajami Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: The Protection of Famous Trade-marks in Canada Jacques A. Léger, Q.C. and Barry Gamache CONFUSION The BARBIE Case: Fame Is Not Everything Sophie Picard and Christopher K. Assié The BARBIE Case: The Supreme Court of Canada Restates the Test for Trade-mark Confusion Paul D. Blanchard, Lisa R. Vatch and Andrea P. Flewelling The Confusing Similarity Standard in Mexican Trademark Law John M. Murphy Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: Celebrity Is Not Everything Alexandre Ajami Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: The Protection of Famous Trade-marks in Canada Jacques A. Léger, Q.C. and Barry Gamache...981
10 8 ANNUAL INDEX, 2006 Vol. 96 TMR COUNTERFEITING Canadian Anti-Counterfeiting Laws & Practice: A Case for Change James J. Holloway Counterfeit Pharmaceuticals: A Worldwide Problem Maria Nelson, Michelle Vizurraga and David Chang DECLARATORY JUDGMENT The Declaratory Judgment Response to a Cease and Desist Letter: First-to-File or Procedural Fencing? D. Peter Harvey and Seth I. Appel DILUTION Dilution Through the Looking Glass: A Marketing Look at the Trademark Dilution Revision Act of 2005 Joel H. Steckel, Robert Klein and Shelley Schussheim The Rebirth of Section 22 of Canada s Trade-marks Act as an Anti-Dilution Remedy Kevin Sartorio and R. Scott Jolliffe The Role of State Trademark Dilution Statutes in Light of the Trademark Dilution Revision Act of 2006 Caroline Chicoine and Jennifer Visintine Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: Celebrity Is Not Everything Alexandre Ajami Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: The Protection of Famous Trade-marks in Canada Jacques A. Léger, Q.C. and Barry Gamache DOCTRINE OF FOREIGN EQUIVALENTS Lost in Translation: A Critical Examination of Conflicting Decisions Applying the Doctrine of Foreign Equivalents Elizabeth J. Rest DORMANT MARKS Dormant Trademarks in the European Union Swords of Damocles? Verena von Bomhard EUROPEAN UNION Dormant Trademarks in the European Union Swords of Damocles? Verena von Bomhard The Impact of European Geographical Indications on National Rights in Member States Lionel Bently and Brad Sherman GEOGRAPHICAL INDICATIONS The Asian Consciousness and Interests in Geographical Indications Min-Chiuan Wang...906
11 Vol. 96 TMR SUBJECTS 9 GEOGRAPHICAL INDICATIONS (continued) Geographic Trademarks and the Protection of Competitor Communication Robert Brauneis and Roger E. Schechter The Impact of European Geographical Indications on National Rights in Member States Lionel Bently and Brad Sherman INTERNATIONAL ANNUAL REVIEW The Thirteenth Annual International Review of Trademark Jurisprudence Rosemarie Christofolo, Christy Hubbard, Paul Tackaberry and Peter Wild LANHAM ACT Annual Review: The Fifty-Eighth Year of Administration of the Lanham Trademark Act of 1946 Theodore H. Davis, Jr. and Jordan Weinstein...1 MEXICO The Confusing Similarity Standard in Mexican Trademark Law John M. Murphy NONTRADITIONAL MARKS Ding You Are Now Free to Register That Sound Kevin K. McCormick RIGHT OF PUBLICITY Mitchell, Glenn Take Me Out [of] the Ball Game? U.S. District Court Rejects Proprietary Rights in Player Names and Statistics SURVEYS Response to Survey Methodology Articles Mike Rappeport TRADE DRESS Kirkbi AG and Lego Canada Inc. v. Ritvik Holdings Inc.: A Review of the Canadian Decisions Robert H.C. MacFarlane and Christine M. Pallotta The LEGO Case: The Supreme Court of Canada Makes It Harder to Protect Product Shapes as Trademarks Richard S. Levy Lego v. Mega Bloks in the Supreme Court of Canada: Ephemeral Rights in Toy Bricks Bruce W. Stratton and Henry Lue...587
12 10 ANNUAL INDEX, 2006 Vol. 96 TMR TRADEMARK OWNERSHIP Who Owns the Mark? A Single Framework for Resolving Trademark Ownership Disputes Pamela S. Chestek USPTO Filer Beware: Medinol Standard Set Forth by the United States Patent and Trademark Office Karen P. Severson WELL-KNOWN MARKS The BARBIE Case: Fame Is Not Everything Sophie Picard and Christopher K. Assié The BARBIE Case: The Supreme Court of Canada Restates the Test for Trade-mark Confusion Paul D. Blanchard, Lisa R. Vatch and Andrea P. Flewelling Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: Celebrity Is Not Everything Alexandre Ajami Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: The Protection of Famous Trade-marks in Canada Jacques A. Léger, Q.C. and Barry Gamache...981
Vol. 95 ANNUAL INDEX 2005 TABLE OF CONTENTS. Articles and Reports Authors... 1 Titles... 4 Subjects... 7
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