The Theory of Dilution Crosses the Pond

By Gregory J. Krabacher, Epstein Becker Green.

The origin story for the cause of action of “dilution” in the United States begins with Frank Schechter’s 1927 Harvard Law Review article, Rational Basis of Trademark Protection. [i]  Indeed the U.S. Supreme Court credits Mr. Schechter’s work as the “seminal discussion,” noting that “[u]nlike traditional infringement law, the prohibitions against trademark dilution are not the product of common-law development, and are not motivated by an interest in protecting consumers.”[ii] 

Mr. Schechter based his theories, among other cases, on his study of the German Odol case.[iii]  In that case, the court found harm to the selling power of a well-known brand for mouthwash through the use by another party for steel.  Schechter notes in passing that if U.S. courts eventually adopt Odol’s holding, “it will not be the first time that they have gone to continental armories for the weapons with which to combat the commercial buccaneer.”[iv]

A belief that traditional U.S. trademark law principles and “orthodox definition[s]” require updating to better address the practical realities and complexities of modern commerce appears to explain Mr. Schechter’s interest in Odol and similar cases.[v]  According to Mr. Schechter, the “vital” distinction between the simpler commerce of say, 400 years ago, and “now” is that trademarks no longer merely designate “the origin or ownership of the goods to which it is affixed”, but rather, designate that goods “bearing the same mark[] emanate from a single source.”[vi]

Moreover, in this modern age, “the trademark is not merely the symbol of good will but often the most effective agent for the creation of good will, imprinting upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfactions. The mark actually sells the goods. And, self-evidently, the more distinctive the mark, the more effective is its selling power.”[vii]  Such distinctive marks, says Schechter, deserve protection from the “subtle and refined” “trademark pirates” of the modern age who “proceed circumspectly, by suggestion and approximation, rather than by direct and exact duplication of their victims’ wares and marks.”[viii]

And so, the rationale proceeds, the law must protect such distinctive marks even in cases where the goods of the parties do not compete and there is no diversion of sales.  For example, in cases such as Kodak (cameras and bicycles), Aunt Jemima’s (pancake flour and syrup), Vogue (fashion magazines and hats), Rolls-Royce (automobiles and radio parts) and Beech-Nut  (food products and cigarettes), Mr. Schechter postulates:

The real injury in all such cases can only be gauged in the light of what has been said concerning the function of a trademark. It is the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods. The more distinctive or unique the mark, the deeper is its impress upon the public consciousness, and the greater its need for protection against vitiation or dissociation from the particular product in connection with which it has been used.[ix]

It would take time, but Frank Schechter’s ideas would spread, both geographically and substantively.  Some 20 years after the article, Massachusetts enacted the first state statute protecting trademarks from dilution.[x] As noted by the U.S. Supreme Court, this state statute went beyond Odol’s sole concern for the harm to selling power (what Schechter referred to as “whittling away” and what we today refer to as “blurring”), but also included “injury to business reputation”, i.e. “tarnishment.”[xi]  Following in Massachusetts’s footsteps, at least 25 States passed similar laws in the decades before the Federal Trademark Dilution Action (FTDA) was enacted in 1995.[xii]

Before examining the 1995 FTDA and its successor, the 2005 Federal Dilution Revision Act (FDRA), we pause to observe, as does Professor McCarthy, that the U.S. protection of brand distinctiveness diverges in at least one key respect from similar European laws. European Union law explicitly prohibits both dilution and free-riding, while federal U.S. anti-dilution law solely prohibits the likelihood of dilutive injury.[xiii] 

The difference between the two is that free-riding is shown by mere association between two marks.[xiv]  Dilution, on the other hand, requires association that further impairs the distinctiveness (blurring) or harms the reputation (tarnishment) of the famous mark.[xv] Therefore, and as discussed below, when U.S. courts find a likelihood of dilution based on a finding of association, alone, they err by ignoring the statutory requirement of impairment/harm and are essentially adopting the European standard for free-riding.[xvi]

Moseleying Along to a Federal Standard

Moseley Act One: A New Hope for Smut

The first U.S. federal dilution statute enacted in 1995 (which, again, was known as FTDA), defined the term “dilution” (the statute didn’t separate out blurring from tarnishment) as “the lessening of the capacity of a famous mark to identify and distinguish goods or services.”[xvii]

In its review of the FTDA, the U.S. Supreme Court in Moseley v. V Secret Catalogue, Inc., focused on the particular text found in 15 U.S.C. § 1125(c)(1)—“causes dilution of the distinctive quality” of the famous mark—to unambiguously require a showing of actual dilution, rather than a likelihood of dilution.[xviii]  Although actual dilution was required, the Court clarified that the standard for injunctive relief under the FTDA did not require, as the Fourth Circuit had found in the Ringling Bros. case, proof of the consequences of dilution such as actual loss of sales or profits.[xix]  So actual (not a mere likelihood) of dilution must be shown but not necessarily proof of financial harm.  Does association establish the necessary showing?

This is where it gets interesting for our consideration of harm.  The Supreme Court proceeded to point out the distinction between mere association and the further showing necessary for actionable dilution.[xx] And it did so in some depth:

As the facts of [the Ringling Bros] case demonstrate, such mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution under the FTDA. For even though Utah drivers may be reminded of the circus when they see a license plate referring to the “greatest snow on earth,” it by no means follows that they will associate “the greatest show on earth” with skiing or snow sports, or associate it less strongly or exclusively with the circus. “Blurring” is not a necessary consequence of mental association. (Nor, for that matter, is “tarnishing.”)[xxi]

Applying this standard on the record before it, the Supreme Court noted that while there was evidence of association, there was no evidence of tarnishment caused by this association:

The record in this case establishes that an army officer who saw the advertisement of the opening of a store named “Victor’s Secret” did make the mental association with “Victoria’s Secret,” but it also shows that he did not therefore form any different impression of the store that his wife and daughter had patronized. There is a complete absence of evidence of any lessening of the capacity of the VICTORIA’S SECRET mark to identify and distinguish goods or services sold in Victoria’s Secret stores or advertised in its catalogs. The officer was offended by the ad, but it did not change his conception of Victoria’s Secret. His offense was directed entirely at petitioners, not at respondents. Moreover, the expert retained by respondents had nothing to say about the impact of petitioners’ name on the strength of respondents’ mark.[xxii]

Mosely Act 2: Congress Strikes Back

Following the Supreme Court’s decision in Moseley, Congress amended the Laham Act again with the 2006 Trademark Dilution Revision Act (TDRA) to further revise the dilution standard.  Among other changes, the 2006 TDRA now says “likely to cause dilution by blurring or dilution by tarnishment of the famous mark” in place of the 1995 FTDA’s phrase “causes dilution of the distinctive quality.”[xxiii]

The current statute defines these two forms of dilution as follows, both of which include an element beyond mere association by further requiring either that such association impairs or harms the famous mark:

(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. [setting forth six statutory factors]***

(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. [no statutory factors].[xxiv]

So, following the FTDA’s amendments, the text appears to require a proponent of a dilution claim to show there is a likelihood of two elements: (1) association between the famous mark and the junior mark and (2) impairment/harm caused by the association.

Mosely Act 3: Return of the European Free-Riding Standard for Dilution

The Sixth Circuit, in a later appeal in the same Moseley case, interpreted the new law in view of its legislative history, noting Congress’s intention to lessen the burden on proponents, noting:

The House Judiciary Committee Report states the purpose of the new 2006 legislation as follows:

The Moseley standard creates an undue burden for trademark holders who contest diluting uses and should be revised.

….

The new language in the legislation [provides] … specifically that the standard for proving a dilution claim is “likelihood of dilution” and that both dilution by blurring and dilution by tarnishment are actionable.[xxv]

From this legislative history, the Sixth Circuit made an inference. Not only did Congress mean to reduce the burden of proof from “actual” to “likelihood” but, per the Court, it actually intended to remove plaintiff’s burden of going forward in certain cases by presuming harm to reputation upon a showing of likelihood of association alone.  As stated by the Court of Appeals: “In the new law Congress rejected the Court’s view that a simple ‘likelihood’ of an association in the consumer’s mind of the Victoria’s Secret mark with the sexually-oriented videos and toys of “Victor’s Secret” is insufficient for liability.[xxvi]

The Court of Appeals went still further.  Logically, if a “likelihood of tarnishment” can be presumed upon a showing of association in connection with certain products, then, the Court reasoned, this implies more than a lessoning (nay elimination) of Plaintiff’s burden.  It implies a reversal of the burden from the party asserting a dilution claim to the party defending it.  The Court reasoned:

The burden-of-proof problem, the developing case law, and the Restatement (Third) of Trademarks in § 25 (particularly subsection g) should now be interpreted, we think, to create a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two. This res ipsa loquitur—like effect is not conclusive but places on the owner of the new mark the burden of coming forward with evidence that there is no likelihood or probability of tarnishment. The evidence could be in the form of expert testimony or surveys or polls or customer testimony.[xxvii]

Some have observed that the Sixth Circuit’s standard in Moseley appears to be in tension with how other Courts of Appeal have interpreted the TDRA.  As noted by Circuit Judge Karen Nelson Moore, in her dissent of the Sixth Circuit’s Mosely decision:

As the Second Circuit recently noted in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir.2009):

That a consumer may associate a negative-sounding junior mark with a famous mark says little of whether the consumer views the junior mark as harming the reputation of the famous mark. The more relevant question, for purposes of tarnishment, would have been how a hypothetical coffee [with a negative-sounding name] would affect the positive impressions about the coffee sold by Starbucks.

***In fact, when reviewing the exact same evidentiary record, the Supreme Court explicitly noted that Victoria’s Secret’s offer of proof included no evidence that “Victor’s Little Secret” affected Baker’s positive impressions of Victoria’s Secret…[xxviii]

While there are plenty of notable commentators who strongly disagree with Mosely for a variety of reasons[xxix] and while the pace of adoption of the Sixth Circuit’s burden shifting standard has not been especially brisk nation-wide in the twenty years since it was decided, the decision remains the law of the land within the Sixth Circuit.[xxx] Moreover, and perhaps somewhat surprisingly to some, no reported decision appears to outright criticize the holding.

What’s a Brand to Do?

Outside of the Sixth Circuit, and for cases involving products unrelated to sex, owners of famous brands may feel it is a little risky to rely on the Mosely presumption and burden shifting.  Even for a case on all fours within the Circuit, parties may be looking to bolster their claims with support of likelihood of tarnishment beyond mere association by also demonstrating a likelihood of harm to reputation caused by the association. 

Why, you may ask? While it may seem “self-evident” to some that harm to the reputation of a mark would necessarily flow from its association with sex-related products, the U.S. Supreme Court, as noted above, did not find it so obvious. Moreover, those who have studied the question have struggled to find real world evidence of the “obvious” harm caused.  Indeed, to the extent the association causes a change in consumer perception of a brand, it may just as easily point the other way.  For example, in one recent study carried out by Jake Linford et. al., the investigators report the following:

Our studies produced surprising results, many of which may prove useful to scholars, litigants, courts, and policy makers examining the tarnishment doctrine. In both studies, and contrary to the underpinnings of the tarnishment doctrine, associating well-known marketplace brands with sex- and drug-related messaging produced not a tarnishment effect, but a small yet reliable burnishment effect. Our participants meaningfully and statistically preferred our target brands more when they were exposed to tarnishing stimuli than when they were not. Moreover, exposure to the test stimuli images counterintuitively led participants to perceive those brands as stronger, which influenced their preference for the brands in the tarnishment condition.[xxxi]

So, if a brand owner is not content to rest on association alone in a tarnishment case, and expensive surveys carry their own risks of backfiring, what options do they have?  A recent decision in another famous dilution case may suggest a relatively safer and cost-effective option.  There, the proponent seemed to follow a middle way – providing at least some basis to support a showing of harm without resorting to an expensive survey.

The case to which I refer is the latest decision in the saga that is the “Bad Spaniels” litigation between VIP Products and Jack Daniel’s.  As factual set up, Justice Kagan, on this case’s recent trip up to the Supreme Court, succinctly quipped: “This case is about dog toys and whiskey, two items seldom appearing in the same sentence.”[xxxii]

Our interest here in the case is the method by which Jack Daniel’s supported its claim of tarnishmet with evidence of a likelihood of harm to reputation. It did so by using an expert but not for the usual purpose of conducting an expensive survey.  Instead, Jack Daniels’ expert based his opinion on general literature and a methodology with a fancy title: “The Associative Network Model (“ANM”)”, which the District Court found “has been empirically tested and verified numerous times since the 1970’s.”[xxxiii]  No survey questions or participant selection to attack.  Just some “reliable” studies interpreted by a reliable guy to explain why associating dog poop with a food product is likely to trigger disgust in the minds of the consumer and thereby harm the reputation of the food product.

VIP attempted to challenge the expert’s report as “insufficient to show tarnishment because it merely amounts to Dr. Simonson’s subjective impression of the tarnishing effect of “Bad Spaniels.”[xxxiv] Furthermore, VIP argued that the expert’s conclusions are unsupported because he conducted no surveys or focus groups and failed to account for the fact that “Bad Spaniels” is a parody product.[xxxv]

This Court was having none of it, explaining:

VIP misconstrues and misstates the testimony provided by Dr. Simonson. In reaching his conclusions, Dr. Simonson evaluated consumer psychology research showing that the association of food of beverage with defecation generates disgust in the mind of the consumer. Based on well-documented research suggesting that such feces-related associations lead to negative consumer associations with food and drink products, Dr. Simonson concluded that “Bad Spaniels” was likely to create negative associations of Jack Daniel’s whiskey with feces and thereby undermine the positive associations that Jack Daniel’s has created with respect to its whiskey. (Doc. 234 at 172–74, 200). In weighing the testimony and evidence supplied by the parties’ experts, the Court has credited and given prevailing weight to Dr. Simonson’s conclusion that “Bad Spaniels” is likely to tarnish Jack Daniel’s trademarks by creating negative associations of Jack Daniel’s products with dog feces.[xxxvi]

Therefore, on the strength of an admittedly impressive expert employing the impressive sounding “The Associative Network Model” by taking general literature and applying these papers to the particular facts of this case, the Court found “Jack Daniel’s has demonstrated by a preponderance of the evidence all of the elements necessary for a claim of dilution by tarnishment: fame, similarity, and reputational harm, caused by the association of VIP’s use of “Bad Spaniels” with Jack Daniel’s trademarks and trade dress.”[xxxvii]  Easy enough.

The Challenge Not Yet Heard

We’ll wrap up this Note with one to watch.  In the “Bad Spaniels” case, VIP attempted, and was refused the opportunity, to raise a First Amendment challenge to the tarnishment provision of the Lanham Act.[xxxviii]  VIP’s argument was that “the Supreme Court’s recent decisions in Matal v. Tam, 582 U.S. 218 (2017) and Iancu v. Brunetti, 588 U.S. 388 (2019) compel the conclusion that the statute amounts to unconstitutional viewpoint discrimination by enjoining the use of a mark that “harms the reputation” of a famous mark.”[xxxix]  While this argument was raised a bit too late to be heard in this case, its bound to come up again in tranishment cases in the future.  Consider too that consumer sentiment is not stagnant.  Most consumers have different views about topics like sex and drugs than they did when Frank first put pen to paper 99 years ago.  As such, so the argument goes, there is great risk of overbreadth and stifling of free speech if, as did the Sixth Circuit in Mosely, courts merely rely upon a “growing consensus” at a particular point in time to create a per se rule that an entire category of speech (and one of unclear boundaries) necessarily harms a brand’s reputation.

[i] Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927)

[ii] Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 429, 123 S. Ct. 1115, 1122, 155 L. Ed. 2d 1 (2003)

[iii] Schechter, supra note 1, at 831.

[iv] Id. at 832.

[v] See id. at 813–18 (1927)(quoting, among other sources, Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 412 (1916)).

[vi] Id. at 817.

[vii] Id. at 819.

[viii] Id. at 825.

[ix] Id.

[x] Moseley, 537 U.S. at 430 (citing 1947 Mass. Acts p. 300, ch. 307).

[xi] See id.

[xii] Id. (citing Restatement (Third) of Unfair Competition § 25, Statutory Note (1995).

[xiii] See § 24:68. Dilution: Free Riding Or Impairment Of Distinctiveness?, 3 McCarthy on Trademarks and Unfair Competition § 24:68 (5th ed.)

[xiv] Id.

[xv] See id; See also 15 U.S.C.A. § 1125(B)( defining of “dilution by blurring” and § 1125(C)(defining “dilution by tarnishment”).

[xvi] See McCarthy, note 13 supra,  § 24:68 (citing criticism of such decisions).

[xvii] 15 U.S.C. § 1125(C)[1995]

[xviii] Moseley, 537 U.S. at 432–33.

[xix] Id. at 433 (overruling Ringling Bros.-Barnum & Bailey Combined Shows v. Utah Div. of Travel Dev., 170 F.3d 449, 460 (4th Cir. 1999).

[xx] Id. at 433–34.

[xxi] Id. (emphasis added).

[xxii] Id. at 434 (emphasis added).

[xxiii] Compare 15 U.S.C. § 1125(C)(1)[2006] to 15 U.S.C. § 1125(C))[1995]

[xxiv] 15 U.S.C.A. § 1125 (C)(1)(emphasis added).

[xxv] V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 387 (6th Cir. 2010)(citing and quoting U.S. Code Cong. & Adm. News, 109th Cong.2d Sess.2006, Vol. 4, pp. 1091, 1092, 1097. Further noting: The drafters of the Committee Report also called special attention to the “burden” of proof or persuasion placed on “trademark holders” by the Supreme Court’s opinion in Moseley, suggesting a possible modification in the burden of proof.).

[xxvi] V Secret Catalogue, Inc., 605 F.3d at 387.

[xxvii] Id. at 388.

[xxviii] Id. at 392 (J. Nelson Moore, dissenting)(emphasis added)(quoting Starbucks Corp., 588 F.3d at 110); see also id. at 393 (“In short, Victoria’s Secret has presented no probative evidence that anyone is likely to think less of Victoria’s Secret as a result of “Victor’s Little Secret” and cannot therefore prevail on its claim of dilution by tarnishment”, citing Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 507 (2d Cir.1996) (“Absent any showing that Henson’s use [of a puppet named Spa’am] will create negative associations with the SPAM mark, there [is] little likelihood of dilution.”).

[xxix] See, e.g, § 24:89. Dilution by tarnishment, 3 McCarthy on Trademarks and Unfair Competition § 24:89 (5th ed.)(“I agree with the position of Judge Karen Nelson Moore in her dissent. The majority’s creation of a presumption of dilution by tarnishment if there is use on “sex related products” is wildly misguided.”)

[xxx] V Secret Catalogue, Inc. v. Moseley, Rehearing and Rehearing En Banc Denied (Aug. 5, 2010); Moseley v. V Secret Catalogue, Inc., 562 U.S. 1179 (Jan 18, 2011)(denying certiorari).

[xxxi] Jake Linford et. al., Trademark Tarnishmyths, 55 Ariz. St. L.J. 609, 674 (2023)

[xxxii] Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 144, 143 S. Ct. 1578, 1582, 216 L. Ed. 2d 161 (2023)

[xxxiii] VIP Prods. LLC v. Jack Daniel’s Props. Inc., No. CV-14-02057-PHX-SMM, 2025 WL 275909, at *6 (D. Ariz. Jan. 23, 2025)

[xxxiv] Id at *18.

[xxxv] Id.

[xxxvi] Id.

[xxxvii] Id. at *19.

[xxxviii] Id. at *12.

[xxxix] Id.

By Stavros Varveris, Trainee Lawyer at A. & K. METAXOPOULOS AND PARTNERS LAW FIRM, a member of the International Lawyers Network

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Until now, the criminal treatment of art forgery relied exclusively on the general provisions of the Greek Penal Code on fraud and forgery. In this context, the establishment of criminal liability generally required the completion of a financial transaction and proof of pecuniary damage or deception of a third party, a requirement that significantly limited the effectiveness of the existing framework for such offences. (more…)

Malisheia Douglas

Companies outside traditional tech sectors may be sitting on IP goldmines without realizing it. Manufacturing, e-commerce, and consumer products businesses routinely use AI technologies from predictive maintenance to automated pricing. These technologies represent valuable intellectual property assets. While these companies may not self-identify as “tech companies” in the Silicon Valley sense, their AI implementations are every bit as technically sophisticated and legally protectable. (more…)

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Authors: Ronald Urbach of Davis+Gilbert and Robert Chappell Jr. of Davis+Gilbert 

The Bottom Line 

• New enforcement era begins: NYC has a new “sheriff” with expanded powers and strong allies. Any company that advertises and markets products or services to consumers in New York City must learn the rules and comply with the law. If not, there will be consequences.  

• Mayor’s priorities are clear: Mayor Mamdani’s January 5, 2026 executive orders on “junk fees” and “subscription programs” show that consumer protection, corporate accountability, and compliance with City laws and regulations are top priorities. The administration believes that aggressively enforcing consumer protection will help tackle the affordability crisis. 

• FTC-style enforcement: With former FTC Chair Lina Khan as a key mayoral adviser, and the appointment of Commissioner Sam Levine (former Director of FTC’s Bureau of Consumer Protection under Chair Khan) as Head of the NYC Department of Consumer and Worker Protection (DCWP), businesses should anticipate (if not expect) a return to robust and aggressive oversight of advertising and marketing practices in New York City.  

• History repeats: This harkens back to the days of Mark Green who helped make the then NYC Department of Consumer Affairs a feared government regulator for national advertisers and marketers. 

Advertisers and marketers who target NYC consumers should take note: the appointment of former FTC Bureau of Consumer Protection Director Sam Levine as Commissioner of the NYC Department of Consumer and Worker Protection (DCWP), combined with Mayor Mamdani’s recent executive orders on consumer protection, signals a major shift in enforcement priorities. With former FTC Chair Lina Khan serving as a key mayoral adviser, businesses can expect the kind of robust, aggressive oversight of advertising and marketing practices not seen since the Mark Green era. This alert outlines what advertisers need to know and how to prepare. 

History of the NYC Department of Consumer and Worker Protection (DCWP) 

The DCWP, formerly the New York City Department of Consumer Affairs, was established in 1969 as the country’s first municipal consumer protection agency of its kind. Following the passage of the City’s consumer protection law, the department was created with broad authority to protect New Yorkers from deceptive business practices.  

Under its broad authority, the DCWP oversees advertising that reaches NYC consumers — including national advertising. Along with the City’s Consumer Protection Law, the DCWP has undergone periods of heightened, aggressive enforcement against national advertisers believed to be non‑compliant with the City’s Administrative Code and the Rules of the City of New York. Further, in 1989, the Department of Consumer and Worker Protection set advertising guidelines for businesses requiring DCWP licenses. Examples of key areas of concern under the City’s advertising rules include pricing claims, offer terms, bait-and-switch tactics, free offers, and other false or misleading claims and illustrations. 

New Leadership at the DCWP   

Prior to the inauguration of Mayor Mamdani, it was announced that former Director of FTC’s Bureau of Consumer Protection Sam Levine would serve as the Commissioner of DCWP. During his time at the FTC, Levine oversaw enforcement, rulemaking, and policy work in many areas, including marketing, digital advertising, and consumer reporting. 

While Levine served at the FTC, Lina Khan, co‑chair of Mayor Mamdani’s transition team, was the chair of the federal agency. Under the Khan‑era FTC and Levine’s leadership, the agency increased actions and rulemaking regarding issues concerning the advertising and marketing practices. Although Khan’s long-term role under the Mamdani administration remains unclear, Levine’s appointment signals a return to the DCWP’s aggressive oversight of business practices impacting New Yorkers — which includes national advertising and marketing practices. 

The Mayor’s Recent Executive Orders   

Mayor Mamdani’s two executive orders seeking to advance his affordability agenda, emphasizing pricing transparency, corporate accountability, and compliance with the City’s laws, are a recent indication of the administration’s intention to increase oversight and enforcement at the DCWP. 

• Executive Order 09 (Combatting Hidden Junk Fees) established an interagency, city-wide junk fee task force, co‑chaired by Commissioner Levine or a designee. Further, the order broadly directed the DCWP to “consider and take any appropriate actions it deems warranted to combat hidden junk fees,” and to engage in compliance and enforcement actions. 

• Executive Order 10 (Fighting Subscription Tricks and Traps), directed the DCWP to monitor, investigate, and take enforcement action against businesses’ subscription‑related practices that deceive or mislead consumers, including but not limited to “enrolling people into subscriptions, misrepresenting or failing to disclose pricing or renewal terms, and unfairly keeping them subscribed by making it difficult to cancel.” The order also directs DCWP to consider and take action to combat “subscription tricks and traps” through rulemaking or the issuance of recommendations to City Council. 

Strong Allies 

At the signing of the two executive orders. Mayor Mamdani was joined by NY Attorney General Letitia James, City Council Speaker Julie Menin, and Commissioner of the DCWP, Sam Levine.  We can expect that the NY City Council will ensure that the Mayor and Commissioner have sufficient resources to accomplish their consumer protection mission. Standing side by side, NY Attorney General James will support the consumer protection mission both by words and action.  

Implications for National Advertisers and Marketers   

While these executive orders concern junk fees and subscriptions, each largely mirrors initiatives of the Khan‑era FTC. The practical implications of such consumer protection monitoring and enforcement in New York City will likely play out for national advertisers and marketers. In the immediate term, with Mayor Mamdani in office and the appointment of Commissioner Levine, businesses should prepare for a potential return to robust, aggressive oversight by the DCWP of national advertising and marketing that reaches New Yorkers.  

Drawing from the strong record of consumer protection at the FTC during Chair Khan and Bureau Director Levine’s tenure, we can look to that record for topics and issues to now be taken up by the newly revitalized NYC DCWP. Advertisers and agencies that take proactive steps now will be better positioned to avoid costly enforcement actions down the road.  

Authors: Gary Kibel of Davis+Gilbert and Jeremy Merkel of Davis+Gilbert  

The Bottom Line 

• Privacy compliance obligations continue to grow and expand, so businesses should revisit their privacy compliance programs regularly. 

• California has introduced even more unique privacy compliance obligations. 

• Kentucky, Indiana and Rhode Island join the fray of states with effective comprehensive consumer privacy laws on January 1, 2026. 

The new year might mean the same to you, but for businesses, the turn of the calendar once again means a new set of privacy compliance obligations. 2026 brings new requirements in California, which has the most comprehensive regulatory framework and a stand-alone privacy regulatory agency, along with new state privacy laws in Kentucky, Indiana and Rhode Island taking effect. 

CCPA Final Regulations 

The California Privacy Protection Agency (CPPA) adopted a package of finalized regulations earlier this year, which take effect January 1, 2026. As discussed in our previous alert, businesses must be cognizant of critical areas that will require additional steps for compliance, including: 

1. Risk assessments before initiating processing that presents “significant risk” to consumers’ privacy, including selling or sharing personal information, processing sensitive personal information, using automated decision-making technology (ADMT) for significant decisions, and certain automated profiling activities (beginning April 1, 2028); 

2. Cybersecurity audits for businesses whose processing presents “significant risk to consumers’ security” (beginning dates vary based on the business’s revenue, with April 1, 2028, being the first deadline); and 

3. Where a business uses ADMT to make “significant decisions” about consumers, it must provide a preuse privacy notice, the right to optout of ADMT, and the right to access information about the business’s ADMT use with respect to the consumer (beginning January 1, 2027). 

Additional CPPA Requirements 

The CPPA has provided businesses with a list of additional items that businesses should know and prepare for, which includes, among other things, the following: 

Display Opt-Out Request Status 

A business must provide a means by which a consumer can confirm the status of their opt-out request, including those submitted through an opt-out preference signal, like the Global Privacy Control. For example, a business can display on its website “Opt-Out Request Honored” and indicate in the consumer’s privacy settings, via a toggle or radio button, that the consumer has opted out of the sale/sharing of their personal information. 

Furthermore, businesses that sell or share personal information must process recognized opt out preference signals as valid requests to opt out for the device/browser and any associated profiles, and — where the consumer is known — apply the signal to the account and offline sales/sharing. 

Requests to Know and Correct 

For requests to know if businesses retain data beyond 12 months, consumers must be able to obtain all personal information collected on or after January 1, 2022, unless impossible or disproportionate, with individualized responses and secure delivery. 

For corrections, businesses must now provide the consumer with the name of the source from which they received inaccurate information, or alternatively, inform the source themselves that the information is incorrect and must be corrected. Businesses must also ensure that corrected information remains corrected. For example, if the business regularly receives information from data brokers, it must make sure the corrected data is not overridden by inaccurate information later received from data brokers. 

If a business denies a request to correct health information, consumers have the right to submit a 250-word written statement contesting the accuracy of health information, and upon the consumer’s request, the business must make that statement available to any person to whom it disclosed the contested personal information. 

Expanding Right to Limit 

The definition of “sensitive personal information” now explicitly includes personal information of consumers the business knows are under 16, as well as “neural data,” and confirms the sensitivity of several categories (e.g., precise geolocation, union membership, sexual orientation). 

If a business is using consumers’ sensitive personal information for something other than the permitted uses set forth in section 7027(m) of the CCPA regulations, it must offer and honor consumers’ right to limit, and update privacy policies accordingly. Businesses may omit the “not inferring characteristics” condition only if they truly do not infer characteristics from sensitive data. 

Enhanced Notices, Choice Architecture, and Universal Design Principles 

All disclosures and interfaces for CCPA requests and consent must be easy to read, accessible, and free from dark patterns, with symmetry in choice and minimal steps to execute privacyprotective options. Notices must be conspicuous online and in mobile apps (e.g., in the app’s platform or download page), and accessible across modalities (including offline and device environments). 

The regulations also codify specific requirements for the Notice at Collection, Notice of Right to OptOut of Sale/Sharing, Notice of Right to Limit, and the Alternative OptOut Link (“Your Privacy Choices” icon), including placement, content, and interactivity, with tailored offline and connecteddevice pathways. 

Service Provider / Contractor Oversight 

The regulations clarify that a business’s failure to conduct appropriate due diligence of its service providers — including ensuring that its subcontractor agreements comply with the CCPA and the regulations — will be factored into whether the business has reason to believe that a service provider or contractor is using personal information in violation of the CCPA and the regulations. 

Metrics and Reporting for Large Data Handlers 

Businesses handling 10 million or more consumers’ personal information annually must, by July 1st of each year, disclose metrics of volumes and median/mean response times for requests to delete, correct, know, optout of sale/sharing, limit, and, where applicable, access ADMT. Disclosures must state whether figures cover all individuals or only California consumers, with the business having the option of which metrics to disclose in its privacy policy. 

Non-Discrimination Rules and Financial Incentives 

The regulations reinforce that price or service differences tied to the exercise of CCPA rights are prohibited unless reasonably related to the value of the consumer’s data. Businesses must be able to substantiate valuations and provide a compliant Notice of Financial Incentive where applicable. In addition, nondiscrimination rights extend to the exercise of ADMT rights. 

Insurance Clarification 

Insurance companies that are “businesses” under the CCPA must comply with the regulation with respect to personal information that is not subject to the Insurance Code, such as website tracking for advertising or employment information (claimsrelated data governed by the Insurance Code remains outside the scope of the CCPA). 

New State Privacy Laws – Kentucky, Indiana and Rhode Island 

Three new consumer privacy laws take effect on January 1, 2026: 

• Kentucky Consumer Data Protection Act 

• Indiana Consumer Data Protection Act 

• Rhode Island Data Transparency and Privacy Protection Act 

Among the patchwork of existing state privacy laws, Indiana and Kentucky’s laws are most similar to Virginia’s Consumer Data Protection Act (VCDPA) and the Connecticut Data Privacy Act (CTDPA), as opposed to the more unique aspects of the CCPA. Covered businesses include those that: 

1. Control or process personal data of at least 100,000 consumers, or 

2. Control or process personal data of at least 25,000 consumers while deriving over 50% of gross revenue from the sale of personal data 

Businesses who already comply with other state laws may not have to make significant changes to their privacy program. Businesses should, however, review their existing privacy policies to ensure they include the required disclosures under Indiana and Kentucky’s laws. 

Rhode Island’s Unique Requirement 

Rhode Island, notwithstanding its similarities to the existing laws, includes a unique provision that controllers must identify “all third parties to whom the controller has sold or may sell consumers’ personally identifiable information” (subject to an exception for disclosing trade secrets). Notably, the statute does not define “personally identifiable information,” instead referring to “personal data” (which is defined) in most of its provisions, so it is unclear how broadly this provision sweeps. 

Controllers subject to Rhode Island’s law include those that: 

1. Control or process personal data of at least 35,000 Rhode Island residents, or 

2. Control or process personal data of at least 10,000 Rhode Island residents and derived more than 20% of gross revenue from sale of personal data. 

This requirement has the potential to impose an onerous burden on companies that engage in a substantial volume of such sales. 

What’s on the Horizon? 

For the first time this decade, there are no consumer privacy laws signed by a governor waiting to take effect. But don’t get too comfortable. Legislation in Wisconsin, Michigan, Massachusetts, Pennsylvania, and North Carolina is moving through committees. As always, it remains to be seen which of these bills will ultimately become law, but this is nonetheless a reminder that privacy law never sleeps. 

Jessica Bell, Associate, Kalus Kenny Intelex, Melbourne, Australia

2026 begins with a number of changes to the Australian Trade Marks landscape, following the introduction of the Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025 (the IRHO Regulations).

The IRHO Regulations introduce a variety of procedural and technical updates to the Trade Mark Regulations 1995, including longer filing periods, partial replacement of protected international trade marks, and extended examination periods.

Divided into five comprehensive amendment schedules and two largely administrative schedules, the IRHO Regulations reflect recent changes to the Madrid Protocol administered by the World Intellectual Property Organisation (WIPO). Below, we summarise the key details of Schedules 1-5 and outline what they mean for Australian trade mark applicants and holders. Schedules 6 and 7 are primarily technical, covering minor adjustments and the timing of when each amendment takes effect – Schedules 1 and 5 took effect on 19 December 2025, while the changes set out in Schedules 2-4 and 6-7 were effective from 19 November 2025.

Schedule 1 – Increased Filing Period for Notice of Intention to Defend

Schedule 1 increases the period for filing a Notice of Intention to Defend an Opposition (NID) to two months from the previous one month period.

This means that a party now has two months to file a NID in opposition proceedings relating to:

· the registration of a trade mark;

· an application to remove a registered trade mark for non-use;

· extensions of protection to an international registration designating Australia; and

· an application to cease protection of an international registration for non-use.

This additional time is particularly significant given the Registrar’s power to treat an opposition as successful where a defence is not filed on time. Commencing on 19 December 2025, the new filing period applies to any opposition where acceptance of the trade mark, non-use application, or international registration designating Australia was published on or after that date.

Schedule 2 – Partial Replacement of Protected International Trade Mark

Schedule 2 introduces the concept of a partial replacement of a protected international trade mark (PITM). This mechanism under the Madrid Protocol allows a trade mark holder to replace an earlier registration with a later international registration for some, but not all, of the goods or services protected by a trade mark.

Previously, Australia’s regulations only allowed for a full replacement of the goods or services protected by a trade mark. As a result of this change, a later international registration will no longer automatically replace an earlier Australian trade mark in its entirety where both are owned by the same entity and cover the same goods or services.

This change is beneficial to Australian trade mark owners because it provides greater flexibility to manage their portfolios, without risking the loss of any valuable existing rights. Instead of a trade mark owner being forced into an all-or-nothing replacement, they can now update their registrations gradually, retain protection for important legacy goods or services, and better align their Australian trade mark strategy with their international registrations.

Although the change in Schedule 2 commenced on 19 November 2024, partial replacement is now available for any eligible trade mark, including those registered and protected prior to that date.

Schedule 3 – New Ground for Rejecting an International Registration Designating Australia

Schedule 3 introduces a new ground for IP Australia to reject an international registration designating Australia (IRDA).

From 19 November 2024, an IRDA may now be rejected on the basis that its protection would result in an asset being made directly or indirectly available to, or for the benefit of, any person or entity to whom assets must not be made available under the Autonomous Sanctions Act 2011 or the Charter of the United Nations Act 1945.

This means that that Australia’s trade mark system is now expressly aligned with its international sanctions regime, preventing trade mark rights from being granted in circumstances that could breach financial and trade restrictions.

Schedule 4 – Registrar’s Power to Revoke Acceptance of an IRDA

In addition to Schedule 3, Schedule 4 clarifies that where a notice of intention to revoke acceptance is issued by the IP Australia, a previously accepted IRDA will not automatically proceed to protected status. Instead, the grant of protection is paused upon issue of the notice, rather than continuing at the end of the opposition period.

This gives the applicant additional time to address the Registrar’s concerns before a final decision is made to revoke acceptance. However, importantly, an IRDA will still become protected 18 months after notification to Australia unless the Registrar notifies the International Bureau otherwise within that period.

Schedule 5 – Extended Examination Period upon request for a hearing

Effective from 19 December 2025, Schedule 5 introduces a new ground for ‘deferred acceptance’ of a trade mark, particularly where an applicant or holder requests a hearing. In these circumstances, acceptance of the trade mark application will automatically be paused, preventing it from lapsing if the examination process is not resolved in time.

Importantly, applicants will no longer need to make a separate request for deferment. The pause will end upon the earlier of the Registrar deciding to accept or reject the application following a hearing or the applicant withdrawing their request to be heard.

This change is particularly significant for applicants who request a hearing close to the acceptance deadline, as it removes the need to apply for an extension of time.

Key Takeaways

Ultimately, the IRHO Regulations reflect a refinement of existing processes while ensuring continued alignment with international trade marks regulations. These amendments provide procedural flexibility in favour of trade mark holders and applicants, but also introduce requirements to be aware of, such as the expanded grounds upon which an IRDA can be rejected.

Introduction

The new United States Patent and Trademark Office (USPTO) Director John A. Squires was sworn in on September 22, 2025 and wasted no time that week in expanding patent eligibility for AI related inventions. In particular, the new Director presided over the September 26 Appeals Review Panel (ARP) decision in Ex parte Desjardins, Appeal 2024-000567. In its decision, the ARP begins explicitly steering USPTO claim interpretation policy under 35 U.S.C. § 101 in a new direction that aims to reduce patent eligibility scrutiny and potentially minimize the now-classic hurdles associated with interpreting abstract ideas and practical implementations thereof under the established Alice/Mayo framework.

In Desjardins, the ARP interpreted a claimed machine learning training pipeline as a technological improvement. In its analysis, the ARP identified at least the claim term of training a machine learning model including a plurality of parameters on a second machine learning task to “adjust first values of the plurality of parameters to optimize the machine learning model on the second machine learning task while protecting performance of the machine learning model on [a] first machine learning task” as constituting a patent eligible improvement on how the machine learning model operates. In supporting this position, the ARP referred to the specification-declared advantages of the claimed subject matter in terms of lower storage capacity requirements, reduced system complexity, and effectively learning new tasks without losing knowledge on previous tasks.

Until recently, such broadly claimed processing operations exemplified by the steps of adjusting parameter values and protecting past performance recited in Ex parte Desjardins were commonly interpreted as applying generic computer parts to an abstract idea. The ARP acknowledges its plausible departure from the previous norm practiced by most examiners and appeal panels, noting in its analysis that “under the [original] panel’s reasoning, many AI innovations are potentially unpatentable, even if they are adequately described and nonobvious, because the panel essentially equated any machine learning with an unpatentable ‘algorithm’ and the remaining additional elements as ‘generic computer components,’ without adequate explanation.” According to the ARP, “Examiners and panels should not evaluate claims at such a high level of generality.”

As put by Director Squires in a subsequent statement before the Subcommittee on Intellectual Property Committee on the Judiciary United States Senate October 9, 2025, “patent eligibility is not an abstract debate” but “a matter of national security, of resilience, and of ensuring that America’s system of innovation remains robust enough to confront the challenges of the twenty‑first century.” Advocating for less restrictive interpretation under 35 U.S.C. § 101, Director Squires’ statement further explains that “[s]ection 101 should not be misused as a blunt instrument to exclude entire technological fields” as “patent law must remain expansive if it is to remain true to its statutory text, to its history, and to its constitutional purpose.” In the few months since the ARP’s decision in Ex parte Desjardins, the Patent Trial and Appeal Board (PTAB) has been largely following Director Squires’ leadership, finding new acceptance for broadly drafted processing claims within the Alice/Mayo framework.

Patent Trial and Appeal Board Cases

In this regard, the PTAB panel in Ex parte Mittal, Appeal 2025-002097 (November 24, 2025) reversed patent eligibility rejections of a claimed method of retraining a deployed machine learning model to detect and correct data-drift over time. In its analysis, the PTAB identified the claimed method steps of generating “a validation dataset from live model predictions generating a validation dataset comprising a plurality of data points” in view of user preferences, “ranking the plurality of data points of the validation dataset in view of the user preferences”, and “retraining the deployed machine learning model utilizing a new training dataset based upon the validation dataset and the ranked plurality of data points” as reciting an improvement in the functioning of a computer rather than broadly directing use of a computer and machine learning.

Similar to the ARP in rehearing Ex parte Desjardins, the PTAB noted corresponding specification-declared advantages in automatically correcting data-drift and accounting for different parameters affected by user preferences. Furthermore, the PTAB directly cites Ex parte Desjardins as precedential, noting that “claims reciting particular improvements in training a machine-learning model reflected an improvement to technology.” With this precedent, the PTAB determined that the claimed method of retraining a deployed machine learning model in Ex parte Mittal recites a technological improvement in machine learning with sufficient specificity that distinguishes it from claims in other cases that were deemed abstract for merely applying machine learning or data visualization without disclosing any technology-specific method.

In another case, the PTAB panel in Ex parte Brush, Appeal 2025-002376 (November 17, 2025) reversed patent eligibility rejections of a claimed machine‑learning system that converts heterogeneous electronic health record data into model‑ready feature catalogs and iteratively improves model performance. In its analysis, the PTAB determined the claimed steps of “generating a prediction by running a first predictive model, of the one or more predictive models, against the set of features hosted in the first feature catalog, wherein the predictive model is configured to make predictions based on the correlations within the normalized population data; [and] evaluating the accuracy of the prediction by comparing the prediction to historical data; altering the first predictive model based on the accuracy of the prediction” integrate any mental process or abstract idea into a practical application.

Similar to Ex parte Desjardins and Ex parte Mittal, the PTAB in Ex parte Brush noted corresponding specification-declared advantages of the claimed machine‑learning system in addressing data transfer bottlenecks between data warehousing and analysis, enabling correlations within normalized data to drive predictions, facilitating model verification and updates as warehoused data changes, and avoiding bespoke, one‑off pipelines by using feature catalogs compatible across multiple predictive models. Furthermore, the PTAB directly cited to Ex parte Desjardins, noting its precedential weight in establishing that a “claim is patent eligible [when] it ‘reflects… an improvement to how the machine learning model itself operates.’”

In another case, the PTAB panel in Ex parte Wang, Appeal 2025-001388 (October 29, 2025) reversed patent eligibility rejections of a claimed machine learning pipeline that aligns multisensor time‑series data and trains a model to predict mechanical quality‑assurance failures. In its analysis, the PTAB identified the claimed steps of “training the self-learning application by submitting the modified corpus to the self-learning application,” including “using training data to perform the training,” “teaching the self-learning application to make a prediction of a likely failure… in response to the self-learning application identifying adverse conditions,” and “gaining experience, by the self-learning application, that allows the self-learning application to infer a semantic meaning from behavior of the set of attributes,” as not practically being performed in the human mind.

Similar to these other PTAB cases discussed above, the PTAB in Ex parte Wang noted corresponding specification-declared advantages in improvements to operations of a machine learning model. In this regard, the subject specification provided that time-aligned streams representing the time-series data culled from sensors in a manner allows the inference and correlation of various conditions and states of each attribute at different times and makes them appropriate for use as training data in a machine learning operation. Here, the PTAB again directly cites Ex parte Desjardins noting that the claimed steps and corresponding specification-declared advantages are similar to the “improvement to how the machine learning model itself operates” that the Board concluded “integrated the judicial exception into a practical application” in Ex parte Desjardins.

Notably, Ex parte Desjardins has not rendered any and all machine learning claims patent eligible. For example, the PTAB in Ex parte Kuusela, Appeal 2025-001619 (November 24, 2025) affirmed patent eligibility rejections of a claimed method of radiology therapy planning that lacked any limitations directed toward modifying or developing a machine learning model. In this regard, the claim at issue merely recites a computer-implemented method including accessing patient information for a patient, accessing an integrated dose prediction model that integrates a plurality of predictive models, selecting one or more predictive models, processing said patient information, and outputting the radiation dose distribution, with no additional elements that affect the form or function of the integrated dose prediction model. Here, the PTAB again directly cites Ex parte Desjardins in noting that the claimed method merely applies a judicial exception using generic computer components and does not improve the functioning of the computer itself, and lacks any improvement to computer functionality or to how the machine learning model itself operates.

Implications

Taken as a whole Ex parte Mittal, Ex parte Brush, and Ex parte Wang strongly indicate the PTAB is clearly following the precedent established in Ex parte Desjardins, which embody Director Squires’ statement before the Subcommittee on Intellectual Property Committee on the Judiciary United States Senate calling for an expanded interpretation of patent eligible subject matter. More pointedly, claim limitations reciting retraining deployed models as in Ex parte Mittal, converting health record data into model‑ready feature catalogs as in Ex parte Brush, or structuring machine learning pipelines as in Ex parte Wang may well have found difficulty in establishing patent eligibility without new guidance from the Ex parte Desjardins decision. It should be noted that each of these cases includes the PTAB reading advantages from the patent specification, and understood that one strategic approach to better position AI inventions for eligibility is to clearly pair claimed machine learning structures to explicit nuanced advantages within the patent specification.

In this manner, the PTAB has started to set a pattern of decisions showing expanded avenues of patent eligibility for unique machine learning models that may require little more structure than the method of radiology therapy planning provided in Ex parte Kuusela. While this article focused directly on machine learning structures, other recent decisions by the PTAB following Ex parte Desjardins with subject matter outside the immediate scope of this article have applied similar reasoning to system processing claims. Examples of such claims include those employing concurrent processing in Ex parte Williams, Appeal 2025-001079 (October 30, 2025); employing an AI model to change data stream formats based on detected circumstances in Ex parte Goyal, Appeal 2025-001692 (November 24, 2025); and employing application search processing that uses tracked user interaction signals from a first application to estimate intent and to modify result ranking delivered by a second application in Ex parte Paris, Appeal 2025-001701.

Notably, this new policy shift at the PTAB is occurring entirely within the existing statutory and regulatory framework, without requiring Congressional amendment or rulemaking, including any action on the proposed Patent Eligibility Restoration Act of 2025. The Federal Courts have likewise not yet addressed these emerging eligibility approaches, and it remains to be seen whether the Courts will adopt the same interpretive posture. For now, the PTAB decisions following Ex parte Desjardins signal a meaningful recalibration of patent eligibility analysis at the USPTO that should materially influence drafting and prosecution strategy moving forward unless and until the Courts or Congress intervene.

Authors: Marie Lussier, Partner, and Elizabeth Varkovetski, Articling Student, Fogler, Rubinoff LLP

Today, roughly 60% of the average Canadian family’s diet consists of prepackaged and processed foods. These are often high in saturated fat, sugars, and sodium and Health Canada has flagged those ingredients as major contributors to obesity, heart disease, and diabetes.
To combat these health risks and empower Canadians to make informed choices, Health Canada published the Regulations Amending the Food and Drug Regulations (Nutrition Symbols, Other Labelling Provisions, Vitamin D and Hydrogenated Fats or Oils) on July 20th, 2022. The transitionary period allotted for in the amendments ends on December 31, 2025 and, at that time, important changes to Canadian food labelling requirements will occur.
In fact, as of January 1, 2026, most prepackaged foods that are high in saturated fat, sugars or sodium will be required to display a front-of-package nutrition symbol (the “Symbol”).

What is needed now?
Manufacturers must now determine whether their products require the black-and-white Symbol and ensure that the Symbol displayed meets the new format requirements.

What will be required over time?
In most cases, the threshold for packaged foods is 15% of the daily value for each relevant nutrient in a serving size.
Despite this, the legislature has provided for some important exemptions, including:

1. Technical exemptions for foods such as those sold at farmers’ markets and raw, single-ingredient meats, poultry and fish, and certain products with very small packaging, such as single serving coffee creamers.

2. Health related exemptions for foods recognized as having health benefits, including whole or cut fruits and vegetables, 2% and whole milk, and eggs, or any combination of exempt “healthy foods”.

3. Practical exemptions for foods where the Symbol would be redundant, such as packages of sugar, honey, maple syrup, table and flavoured salt, butter and other fats and oils.

Additional exemptions include foods with special dietary uses such as meal replacement and nutritional supplements and infant formula and foods.

What will this look like come January 1?
Soon, many grocery items will feature the Symbol with a magnifying glass to “call out” products that are high in saturated fat, sugars, sodium, or any combination of these. It of course remains to be seen whether manufacturers implement the new Symbol in a timely and effective manner, whether it will affect how Canadians shop and eat and how penalties will be meted out for those traders who do not comply.

Commodore, What Can You Learn From Drifters?  

By James P. Flynn, Epstein Becker Green 

Trademark lawyers eventually learn a hard truth: brands often do not die; instead, they drift. 

Sometimes they drift quietly into nostalgia. Sometimes they drift into the hands of the entrepreneurial and well-advised. Other times, they drift along unattended.  Of course, sometimes, they drift straight into court. 

Few issues in intellectual property law reveal the fault lines between legal formalism and cultural memory as sharply as disputes over legacy brands: 

Brands that stand the test of time innovate to stay relevant and build upon the product imagery that first captured customers’ hearts. So-called legacy brands and their associated images include Timberland boots, the Burberry raincoat, Tiffany diamonds, and Levi’s jeans. Even Disney, whose fantasy characters remain central to the customer experience. Each consumer-facing brand expanded its appeal while staying true to its foundational equities. Conservative Burberry got sexy by putting its tartan pattern on bikinis. Tiffany signed Elsa Peretti to design more accessibly priced silver and gold jewelry that was still distinctively elegant. Traditional Disney acquired Pixar’s more modern storytelling. By definition, legacy brands can also survive a spate of bad management, bad economies, even bad luck — but not in perpetuity.  

[BigThink, “How one key obsession can build and drive a legacy brand,” October 14, 2025] 

When a name outlives its original commercial enterprise, questions inevitably arise: Who owns the identity? Who speaks for the brand? And how much does history matter when measured against trademark registries? It seems like legacy brands have a way of returning, sometimes as beloved revivals, sometimes as legal problems looking for a forum. 

There are two disputes that offer a useful comparative lens on how different legal systems confront these questions.  One is unfolding now in Europe over the Commodore name, the other was litigated for decades in the United States over the name for The Drifters.  In this piece, we revisit Marshak v. Treadwell, in which the author played a role as trial and appellate counsel, in a matter dealing very directly with the notion of a legacy brand. See 23 Entertainment Law Reporter. 47-52 (July 2001). We place that matter alongside today’s COMMODORE name dispute unfolding in Italy. The result is not nostalgia, but instruction: a reminder that brand identity, once untethered from disciplined legal stewardship, will eventually be claimed by someone else—with paperwork.  

The Commodore Dispute: Legacy Meets Registration 

For those hoping that this would in some sense be a straight music piece, the author hates to disappoint you, but the Commodore dispute in Italy has nothing to do with Lionel Ritchie.  That would probably have made it too easy for all of us.  Instead, this COMMODORE brand related to computers and technology: 

A bit of background for those who can’t remember hardcopy games, tapes, and ten-minute load times: Jack Tramiel founded Commodore in 1958 as a typewriter company that would ultimately become a major force during the 80s computing boom. 

It would be 1982 before the Commodore 64 took flight in international markets, and the Guinness Book of World Records would recognize it as the best-selling home computer of all time.  

The brand is synonymous with retro gaming….  

[McNally, Commodore CIC takes legal action against Italian rival] 

In many ways, that COMMODORE brand could thus be seen, at first glance, like a brick house: iconic, solid, structurally sound. “How can she lose with the stuff she use?,” or so the rhetorical question would go.  Indeed, “what a winning hand,” one might say.  Yet appearances, as trademark lawyers know, can be deceiving. Even a brick house will collapse if the registrational and ownership foundation is neglected. 

In December 2025, Commodore International Corporation (“Commodore International” or “CIC”) commenced proceedings in the Italian courts and the European Intellectual Property Office challenging trademarks held by Commodore Industries S.r.l., an Italian entity founded in 2017 that successfully registered the COMMODORE name and related marks in Italy and the EU. Commodore International contends that those registrations conflict with rights traceable to the original Commodore business and should be invalidated to allow the marketing of “authentic licensed products” under the historic brand name. See Tom’s Hardware, “Commodore International challenges rival’s trademarks in escalating brand dispute” (2025). This matter has been described as part of an ongoing, “bitter battle over the ‘true’ representation of the original company.” 

The Italian registrant, for its part, emphasizes that its marks were examined and granted by national and EU authorities, were not successfully opposed, and therefore enjoy the presumptive validity accorded to registered EU trademarks. See Tom’s Hardware, “Commodore International challenges rival’s trademarks in escalating brand dispute” (2025). 

What is striking about the COMMODORE dispute is that it is not framed primarily as a classic likelihood-of-confusion case. Rather, it is a contest over identity stewardship: whether the emotional and historical gravity of the COMMODORE name can displace later-issued registrations obtained decades after the original company’s collapse.  Commodore International appears adamant as to its obligation “to protect its legacy and preserve the community’s trust in the original Commodore name…We recognize and deeply value the passion and dedication of the Commodore community, who have kept the spirit of the brand alive for decades. Our goal is to protect that legacy and to foster a positive, creative environment for all who love Commodore—past, present, and future.”  Commodore International even promises hat “[p]arties interested in creating officially licensed Commodore products and experiences will be able to begin the conversation with CIC in the coming weeks, when an official Licensing Pipeline tool launches at commodore.net.”   

But the registration and bankruptcy background here is complex, detailed, and, ultimately, leaves Commodore International a bit at sea over trademark rights.  After the original Commodore International went bankrupt in the 1990s, rights to its trademarks were sold, abandoned, or otherwise fragmented over decades. Multiple entities have claimed ownership at different times, which leads to: 

• Multiple groups asserting rights — e.g., Commodore International (a newly relaunched entity claiming the original marks) vs. an Italian company (Commodore Industries) that registered some European trademarks and uses the name commercially, as seen here.  

• Confusing or overlapping registrations — different parties may hold different pieces of the IP portfolio in different jurisdictions or product categories, making global brand control difficult, as one source noted.  

This kind of fragmentation is very common with older brands whose original owners disappeared or whose IP lapsed without active enforcement. When more than one party uses the same historic brand: Consumers may get confused about which products are “official” vs. licensed vs. aftermarket; Products with the name might have widely varying quality, harming the perceived value of the brand overall. This is often what legacy brands fear most when unauthorized or low-quality goods carry their names.  The current Commodore situation includes Italian-branded tablets, laptops, and games that many in the community view as unrelated to the classic computer legacy, which complicates efforts to “revive” the brand in a respectable way.  As the song goes, “Sail on down the line / ‘Bout a half a mile or so / … Time after time I tried/ To hold on to what we got but/….I know it’s a shame/But I’m giving you back your name/…”   

Under EU trademark law, that fractured history leaves Commodore International with a difficult argument to win absent provable bad faith, non-use, or invalidity at the time of filing by the Italian registrant. See EUIPO, Invalidity and Cancellation Proceedings Overview. Legacy alone, without current qualifying use or a successful attack on the registration process, rarely suffices. Indeed, from a European trademark perspective, this is uphill terrain. EU trademark law is unapologetically administrative. If one registers first, uses properly, and survives opposition, the law tends to reward diligence rather than nostalgia. Legacy may supply a compelling press narrative, but narrative is not a statutory ground for invalidation. See EUIPO, Invalidity and Cancellation Proceedings Overview.  As the Italian registrant has noted, the company and its partners, “for over seven years now, have been legitimately using the brand in compliance with both current laws and market rules.” 

In other words, Commodore International now finds itself arguing that history should trump the registry, a position that plays better in common memory than in continental regulation. 

The Drifters Litigation: Identity Anchored in Continuity 

The U.S. courts confronted a remarkably similar problem—albeit in a different doctrinal posture—in Marshak v. Treadwell, a long-running dispute over the name The Drifters, an American pop and R&B/soul vocal group with well known hits such as Under The Boardwalk, Up on the Roof, On Broadway, Save the Last Dance for Me, Vaya Con Dios, Saturday Night at The Movies, There Goes My Baby, and Please Stay.  Though the group seemed to have three distinct “golden eras” in the early 1950s, the 1960s, and the early 1970s, now registered The DRIFTERS as a trademark during that whole period.  The Drifters, in terms of membership, “were the least stable of the great vocal groups.”  The consistency through that period was George Treadwell, who had purchased the name, from Clyde McPhatter in 1955, as any review of the shifting lineups in The Atlantic Years, 1953 to 1972, shows. 

Larry Marshak obtained a federal trademark registration for THE DRIFTERS in the late 1970s and promoted performances under that name. He also initiated suit against a rival Drifters group operated by Faye Treadwell, widow of George Treadwell, the group’s long-time manager.  Treadwell counterclaimed that Marshak’s registration had been procured by fraud because it failed to disclose the existence of longstanding rights tied to the original group’s commercial legacy, including ongoing royalty income from recordings.  A jury found fraud, and the district court concluded that Marshak’s registration was void and that his use infringed Treadwell’s common-law trademark rights, rejecting, as Forbes noted, “Marshak[‘s] conten[tion] that the band’s trademark lapsed and was his for the taking when the original group stopped touring in 1976.” Marshak v. Treadwell, 58 F. Supp. 2d 551, 565–70, 582-84 (D.N.J. 1999).  On appeal, the Third Circuit affirmed, emphasizing that trademark rights can persist where there is continuous commercial exploitation—here, through licensing and royalties—even if public performance activity ebbs and flows.  Marshak v. Treadwell, 240 F.3d 184, 198–203 (3d Cir. 2001).  Subsequent enforcement proceedings underscored how deeply courts may entrench control over a legacy brand once identity ownership is judicially resolved. See, e.g., post-judgment orders.  Further, “the Truth in Music Advertising laws were legislated in 35 of the 50 US states from 2005 to 2020 to stop promoters such as Marshak from assembling new groups of musicians and marketing them as well-known groups such as the Drifters,” as one source noted.   

The notion and idea of legacy being more than simply have the same performers is captured perhaps in a sports analogy used at the Marshak v. Treadwell trial: 

[Treadwell’s Counsel] Every time you see an advertisement from Mr. Marshak’s group that implies he has a direct lineage, you should think about that [i.e., the direct line the Treadwell group had that Marshak’s didn’t]. 

Why…?  Well I think it is like a baseball team.  Mr. Marshak could have his own baseball team if he wants.  That’s fine.  But Mr. Marshak can’t today have a baseball team even with a bunch of free agents who used to play on the Yankees and call his team the “Yankees” and talk about the great heritage of Babe Ruth or Lou Gehrig or anyone else.  The only ones who can do that today and market that today, legitimately  are today’s [1998] Yankees, Paul O’Neil, David Cone, and people like that. 

Is David Cone Whitey Ford?  No. 

Is Paul O’Neil Lou Gehrig? No. 

But there is a direct lineage. 

In this case the direct lineage—and we still have Johnny Moore[, lead singer on classic recording of Under the Boardwalk].  The direct lineage is George and Fayrene Treadwell up to the present.  We are going to show that Mr. Marshak has attempted to misuse the mark to create an association or to imply an association that he doesn’t have and never had. 

[Trial Transcript, Openings 79-80, Marshak v. Treadwell] 

In my opening I showed you some statements from Mr. Marshak’s lead singer, who talked about the music making a difference and who talked about that music as pure and simple.  Now, in the opening I drew an analogy to a baseball team and said there has been a direct lineage…I want to remind you of that analogy because I think that analogy still works 

[Trial Transcript, Closings 782-83, Marshak v. Treadwell] 

The jury, trial court, and then Third Circuit bought that argument.  The courts also noted that trademark abandonment is not proven by nostalgia fatigue. Where goodwill continues to be exploited, even quietly, the law will not declare the brand dead simply because someone else arrived with a cleaner registration file.  Marshak, 240 F.3d at 198–203.   

That holding mattered then. It matters now. And it remains one of the reasons revival-brand litigation in the U.S. is never as simple as “who filed first.” 

Comparative Themes: Commodore and Marshak 

Three important lessons emerge from the Drifters’ history in the Marshak litigation as applied to what is unfolding with Commodore. 

1. Legacy Is Not Self-Executing 

Both disputes demonstrate that historical resonance, standing alone, does not create enforceable rights. In Marshak, legacy mattered only because it was tethered to continuous commercial exploitation recognized by U.S. common law. Marshak, 240 F.3d at 198–99. In the Commodore matter, legacy collides with a European system that prioritizes registration and formal use over historical narrative. See EUIPO overview, supra. 

2. Fragmentation Creates Opportunity and Risk 

In both cases, decades of fragmented ownership and inconsistent stewardship created openings for later actors to claim formal rights. Because of that fragmentation: 

• Trademark validity becomes disputed. Commodore International says some trademarks held by the Italian company were “improperly granted” and is seeking their invalidation in Italian court and potentially at EUIPO.  

• Court systems differ by country. Italian procedures and EU trademark law can make disputes lengthy, costly, and unpredictable, especially if there are overlapping registrations. 

• Trademark holders may have to prove continuous use — in places like the EU, rights can weaken if a mark hasn’t been used for several years, creating opportunities for others to file registrations or for rivals to challenge marks. This is a known issue in European trademark law and comes up in disputes like this. 

The Drifters litigation shows how U.S. courts may unwind those claims if fraud or superior common-law rights are proven. Marshak, 58 F. Supp. 2d at 568–70. The Commodore dispute illustrates how, in Europe, fragmentation may instead reward the party that successfully navigates the registration system first.   

The contrast between Commodore and Marshak is not merely factual; it is philosophical. Common-law rights, residual goodwill, royalty streams, and consumer association all matter. Fraud on the PTO remains the original sin under US law. See Marshak, 58 F. Supp. 2d at 568–70; see also Herb Reed Enterprises, LLC v. Florida Entm’t Mgmt.,736 F.3d 1239, 1248 (9th Cir. 2013) (continued record royalties meant  “that the record supports the district court’s determination that HRE did not abandon ‘The Platters’ mark”); accord Robi v. Reed, 173 F.3d 736 (9th Cir. 1999)(“when Paul Robi left the group, he took no rights to the service mark with him. Rather, the mark remained with the original group. Paul Robi therefore had nothing to assign to Martha Robi.”); Bell v. Streetwise Records, 640 F. Supp. 575, 580 (D. Mass. 1986)(priority of trademark rights established “by bona fide usage… consistent with a ‘present plan of commercial exploitation.’”).  EU trademark law remains skeptical of such historical storytelling.  Registration, use, and procedural vigilance dominate. If legacy owners fail to protect the mark contemporaneously, later registrants are not presumed villains; they are presumed compliant. 

Neither system is wrong. But each punishes a different kind of neglect. 

3. Identity Versus Administration 

Perhaps the sharpest contrast lies here. U.S. trademark law remains willing to privilege identity continuity, i.e. that persistence of goodwill in the minds of consumers, over administrative formalities. See also Robi, 173 F.3d at 739–41. EU law, by contrast, places heavier weight on the orderly administration of registered rights, even where the equities feel unsettled. 

U.S. and EU Strategies for Legacy Brands 

Trademark law has little patience for nostalgia untethered from use. As Marshak made clear, goodwill need not continuously perform on Broadway to survive; sometimes it lives quietly up on the roof, sustained by royalties and licensing long after the touring stops. The mistake is assuming that because the lights are dim, the house is empty. As Commodore is now discovering in Italy, a legacy brand may look like a brick house, but without disciplined legal stewardship, someone else will eventually move in—and start charging admission. 

Legacy-brand disputes often arrive wrapped in the language of authenticity. Courts listen politely—and then ask for evidence.  In Marshak, authenticity mattered only because it aligned with provable commercial continuity. In Commodore, authenticity will matter only if it can be translated into recognized grounds for invalidation under Italian or EU law. Romance alone will not void a registration.  

So, what are the practical steps and warnings we can take from these matters: 

1. Do Not Assume Nostalgia Equals Rights–In both jurisdictions, sentiment is not evidence. Legacy brand owners must document continuous qualifying use, licensing activity, or enforceable goodwill.  Otherwise, they risk losing the race to registration.  Put more starkly, legacy brands require governance, not reverence: If a brand matters, someone must tend it. Dormancy without strategy is not patience; it is surrender.  Still, at least in the United States, legacy brands often survive on nothing more than this magic moment of memory (and recording revenue) just short of abandonment. Use that fleeting moment when goodwill still exists but legal control is may be slipping to solidify one’s position and stop the slide. 

2. U.S.: Invest in Common-Law Proof Early–In the United States, evidence of royalties, licensing agreements, historical promotion, and consumer association can defeat abandonment and even void a registration for fraud. Marshak, 240 F.3d at 198–203. Practitioners should build that record long before litigation. Royalty streams, licensing agreements, controlled exploitation  are not afterthoughts. They are survival tools. Marshak, 240 F.3d at 198–203. What mattered was not the spotlight, but what continued under the boardwalk, that somewhat hidden but undeniable and documented continuing commercial exploitation.   

3. EU: Registration Strategy Is Paramount–In Europe, failure to register, or to oppose promptly, can be fatal. Legacy brand owners should prioritize defensive filings, monitoring, and timely invalidity actions grounded in bad faith or non-use rather than historical identity alone. In Europe, ownership is rarely decided solely on Broadway (or Piccadilly or the Piazza della Scala); it is decided backstage, in contracts and registries.” 

4. Fragmentation Demands Governance–Legacy brands without clear ownership structures invite opportunistic claims. Whether in New Jersey or Milan, courts are less sympathetic when decades of inattention create uncertainty that third parties exploit. 

5. Authenticity Is a Business Argument, and the Law Requires Proof:  Courts may acknowledge authenticity rhetorically, but outcomes turn on statutory criteria: fraud, abandonment, use, and validity. The lesson of both Commodore and Marshak is that brand identity must be legally curated, not merely remembered. Nostalgia is a market force, not a legal doctrine.  It sells products. It does not substitute for use, validity, or truthfulness at the trademark office. 

So, looking at Marshak and Commodore, the settings differ. The doctrinal frameworks differ. The lesson, however, remains stubbornly the same. 

Trademarks are territorial.  Rights in Italy or EU might be distinct from rights in the U.S., UK, or Asia. This means a revived brand might be able to operate in one region but blocked in another due to local registrations. This complicates licensing, product rollouts, and global marketing. Older brands like Commodore are tied to nostalgic communities, but “community” sentiment can diverge from legal ownership. Fans often care about “authenticity” and “history” more than current trademark documentation.  Disputes on such issues, where different groups claim legitimacy, can fracture such “communities” and harm brand revival efforts.  Decisions made purely for legal defensibility (e.g., registering marks broadly) may not align with what such enthusiasts see as “true” to the brand. 

Legacy brands rarely disappear all at once. They fade. They drift. They linger in the background, waiting for someone to decide whether the music is over—or merely quieter.  The legal battles over Commodore trademarks in Italy highlight broader problems for legacy brands — fragmented ownership, overlapping registrations, costly litigation, consumer confusion, and divergent geographic rights. These issues make it difficult for any one party to revitalize a historic brand without navigating complex legal, commercial, and community hurdles. 

The law will not decide that question based on sentiment. It will decide it based on who kept the lights on, who collected the royalties, and who bothered to lock the door. So, keep the magic going and don’t ever skip a beat, and, like the Drifters sang, … 

Let the music play 
Just a little longer 
Just a little longer…  
Make the music play  
Keep this magic going  
Keep those trumpets blowing … 

Don’t ever skip a beat for 
She may slip away…