Vol. 6 No. 2, Spring 2015; A Circuit Split Involving Ten Federal Circuits: Why Copyright Infringement Actions Should Be Allowed to Proceed After an Application for a Copyright is Filed
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In 2010, the Supreme Court’s decision of Reed Elsevier, Inc. v. Muchnick addressed the subject matter jurisdiction of a trademark infringement claim. Not only did this avoid the larger question of when a trademark is “registered” under § 411(a), but it lead to further division among the circuit courts. Section 411(a) sets forth the requirements for a trademark infringement suit to be filed; most importantly that it must be “registered.” The registration approach has determined that a trademark is only registered when a party receives an affirmative or negative response, directly from the Copyright Office. The application approach, however, finds the trademark to be “registered” whenever the application has been submitted, along with the accompanying fees and forms. Since the Reed Elsevier case, four more federal circuits have been forced to decide when a trademark is registered. This has led to a five-to-five circuit split regarding the two approaches. This note determines that the application approach is the appropriate interpretation of the registration requirement. This will be shown through: (II) a brief description of the opposing viewpoints, (III) the reasoning for the registration approach, (IV) the reasoning for the application approach, and finally (V) why the application approach is superior to the registration approach. Finally, this articles calls upon the Supreme Court to finally decide the issue of registration, so as to clarify at least one aspect of trademark rights.