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36 William Mitchell Law Review 1657 (2010)


The Eighth Circuit Court of Appeals’ trademark jurisprudence has been truly fair and balanced since the 1946 passage of the Lanham Act. The court has created this fair and balanced jurisprudence by creating firm standards and sticking to them. Although not the most popular circuit in which to find a trademark case, the Eighth Circuit has kept a constant vigil to assure that trademark plaintiffs do not dominate over trademark defendants. This balanced approach to trademark law is consistent with the Minnesota Supreme Court, which recently held that “advertising injury” included trademark infringement, and therefore the defendant’s insurance carrier had to defend a trademark infringement lawsuit against it. The Eighth Circuit appears mindful of the need to maintain an even playing field so that trademark owners’ rights can be respected but trademark defendants’ ability to compete is not unduly burdened. This conclusion is supported by the heightened scrutiny of secondary meaning, the improbability of finding a trademark diluted, the strict standard on infringement, the consistent application of the incontestability doctrine, and by the data regarding reported success rates of trademark infringement cases. In the end, this article concludes that the Eighth Circuit’s trademark jurisprudence will lead to further and faster economic recovery than other circuits because the courts protect legitimate trademark rights but not at the expense of competition.