ISHTIP at Penn, part 9

Session 6 | Josh Sarnoff (DePaul University), Moderator
 
In Search of a Trade Mark: Search practices and Bureaucratic
Poetry
Jose Bellido and Hyo Yoon Kang (University of Kent, UK)
Commentator | Amanda Scardamaglia (Swinburne Law School)
 
Enhanced searching: bureaucratic poetry—early manual
searches. TM office was tasked with organizing words and devices for the first
time: a new commodity of commercial information in signs and words and the
ability to find them on the register. 
Needed a system of classification to register marks; classifications
changed over time to reflect commercial change. 
Patent system classified according to subject matter; a different
endeavor.
 
TM clerk was very different from patent counterparts—technical
expertise v. experts in delicate art of distinguishing and classifying signs
and words.  TM agent emerged, esp. after
1883 amendments opening registration for invented words, leading to significant
increase in number of applications. Agents were skilled in navigating and
searching the register.  Profession
attempted to limit access to registration data, as patent agents had before
them; closing of profession was linked to increasing openness of TM
registers.  Index clerks and TM
abstractors: index w/range of general marks; divisional index of devices
arranged according to things like birds, buildings, and beasts; index arranged
alphabetically by prefixes and terminal endings/suffixes—third index was the
most important. 
 
Significant impact on development of TM law—led to
deconstruction of words and assisted w/creating new marks by creating
comparisons.  Deconstruction of words was
evident in TM infringement cases as well, which focused on comparing sequences
of letters in the same way.  Indexes were
strategic—could find out about what competitors were doing b/c they’d register
preemptively. Initially available only to agents but eventually opened to
public, though agents were still powerful actors who specialized in searching
the register.
 
Index cards and punched cards; final phase of computerized
searching and privatization of search services—entrusted to private services,
with a direct and immediate impact on search. 
Computerization affected registrations: TMs were redesigned for
mechanical purposes; transformed the way search happened—algorithms made it
possible to search across subjects & geography quickly. Removed obstacles
to manual search.  Transformed registry
from visual markers of ownership to a metalevel database.
 
Discussion points: evidence of how the processes impacted
the legislation itself?  Registries
internationally were introduced around the same time.  What indexes if any were used at that time?
Did that impact others’ indexes?  Did
others’ indexes affect Britain’s? What were the tradeoffs in moving from
mechanical to digital?  Paper says
openness increased, but was the info the same?
 
Bellido: we wanted to explore bureaucratic property. Were
surprised that first TM clerks in UK were A.E. Housman, Griffin, and other
poets and antiquaries.  Bureaucratic poetry: indexing techniques have
something to say about how TMs were conceived and developed.
 
Kang: TM is more complicated than patent b/c of two
different forms of numbering—application number, then publication/registration.
Can be complicated to retrieve full info. 
Shows how unstable the nature of property is in legal practice.
 
Bellido: the more open the register was, the more experts
could claim to be able to navigate this massive endeavor.  Legal expertise is founded in the management
of retrieval tools that may look more technical/less interesting to legal
scholars, but it’s everyday routine that constitutes the subjectivity of the TM
expert.
 
Kang: relates to issue of legal agency: what does TM law
actually do?
 
Bellido: registration practice can make the TM a
thing/object of law/property even before there is a product in the market.
 
Kang: complicate picture of TM as consumer-driven. 
 
Bellido: registering invented words: impact on the legal
profession—agents could then sell the possibility of providing new words to
companies. We haven’t touched colonial indexing.   
 
You sometimes see trolling behavior around descriptive
words/changing descriptive words around to try to make them registrable.  Or an agent could identify marks that were
not quite as good but were usable until the register relaxed its standards.
 
The Modern Expansion of Trademark Rights, and How One
Forgotten Treaty Made It Possible
Christine Haight Farley (American University Washington)
Commentator | Dan Hunter (Swinburne Law School)
 
Big claim: a forgotten treaty did a lot more than we thought
it did in creating TM rights.  Hunter is
not sure that this treaty made expansion of rights possible.
 
Paper is a detective story. 
Interamerican Convention on Trademark and Commercial Protection (IACTCP)
(1929).  TM comes from one of two or
maybe three/4 foundations: passing off, concerns over confusion, search costs.  Does this convention give us new insights
into the foundations of TM law?  Offers unfair
competition as a distinct foundation. 
Can we tell that the convention is a contributor to the modern day
understanding?  Even if we could, so
what?  The lawyer’s question: what does
that tell us? 
 
Why was the convention ignored?  The architect of both IACTCP and the modern
Lanham Act (1946) was one man, Edward S. Rogers, founder of first specialized
TM firm and lover of unfair competition. 
 
Significance of Inter-American TM Convention (1929)—self-executing,
and yet completely forgotten.  Modest
number of cases in TTAB and courts, startlingly small # of cases.  Yet this is law.  Why forgotten?  Or has it been?  Are Ps all just dumb?  That seems unlikely.  Erie
says there’s no general federal common law. Then there’s the Lanham Act §43(a),
but also and especially 44(h) and (i). 
The Lanham Act is, for all intents and purposes, federal common law, and
the paper suggests that 44(h) and (i) need to be more talked about, b/c §44 is
generally about recognizing TMs from outside the US; in fact Rogers included
them largely to include unfair competition w/in the American system.
 
Questions: is the paper trying to get us to apply the
Convention?  Are you arguing that unfair
competition is foundational to the Lanham Act? Just b/c it’s in the Lanham Act
doesn’t make it foundational.
 
Farley: A treaty still in force about TM—we don’t have many
of those in the US.  Modern parallels
were interesting about how the US makes the law of other countries and then has
a strategy of making US law also through that undemocratic process.  Beyond that, this text is so interesting b/c
of its novelties and timing, as well as the characters involved.  Inordinate influence of a couple of people
has no modern analogue.  We can
inadvertently make a mistake by privileging moments of development of IP; IP
has not always had pride of place in law, society, or commerce.  Especially in TM law: early 20th
c., it was a teeny field. TMs weren’t as valuable as they are; there was no TM
bar, certainly not in Latin America, just a handful of people in US.  These particular people could have outsized
influence.
 
The ground was shifting under their feet b/c the nature of
marketing was changing, markets were changing, global markets were
changing.  Amorphousness of IP and
particularly TM.  Doing this history,
evident how unsettled and indeterminate the foundations of TM are.  The story that we have an ancient idea of
unfair competition, within it a new thing called TM law, isn’t right. These
were simultaneously being developed and playing off one another.  Early development was a mess.  These guys are making up new law in this
treaty.  Provisions don’t appear anywhere
else.  Rights that suited US businesses
at that moment for expansion into Latin America.
 
Then the Lanham Act comes along, and federal common law is
pulled out.  Given the fact of the
treaty, and their overlapping author, and that Rogers argues the first TM
Supreme Court case after Erie, there
was a unique opportunity to write a new chapter in TM as clean, settled,
organized.  And we don’t get that. We get
slivers of clarity, and then this space/haze around the rights. We focus on
§43(a) as a site of expansion and a site for unfair competition, but these
sections in 44 are what the drafters intended.
 
US corporations exercise their rights under the treaty in
Latin America all the time; drafters expected that b/c of US dominance.  Lanham Act makes vague reference to the
treaty (was explicit reference in first draft); Rogers argued that the treaty
was self-executing and the SCt agreed. 
Conclusion: give those rights to go after unfair competition to US
citizens as well.  We didn’t get that.
§43(a) was reaction of patent bar trying to put the brakes on what Rogers was
trying to do in §44.  Rogers deals with
this by taking §43(a), designed as substitute for 44, in the law too. 
 
RT: Another suspect: What is unfair competition that isn’t infringement?  Trade secret misappropriation was a
possibility bruited about in the 1940s; maybe also antitrust violations.  But that kind of understanding seems impossible
to recover now, especially given other laws—no court is going to find that
there’s been a federal trade secret law for 70 years.  Trademark infringement-like activities that
aren’t infringement but are still unfair competition?  US courts have no current understanding of
what that gap might be: collapse b/t protection and registrability, absence of
a passing off category in US law.
 
A: Many law review articles written at the time clearly
stated that many things were under the umbrella of unfair competition but were
nowhere collected; some understanding that it would be collected in Lanham Act:
trade secret, tortious interference w/ business relations, antitrust.  Not so much interested in those things, but
is interested in what the haze might be surrounding the concept.  (What might a clever P’s lawyer argue?)
 
Possible to bring something like a TM case w/o a possibility
of confusion.  Rogers brought a case
where there were nonproximate goods, a different name but phonetically similar,
and no bad faith.  That was meant to be
one of the §44 cases—not really a theory of confusing the public, but
unfettered right to expand business.  Haze
of rights as buffer around TM rights. 
Rogers won, but we only talk about Frank Schecter, who lost; Rogers won
by making subtle moves.
 
Q: compare to avoision in tax law: indeterminancy of whether
someone is engaging in avoidance (ok) and evasion (not ok).  Infinite ingenuity of malefactors to get
around intent of law w/o letter of law.
 
Madison: concepts in the law having agency v. the agency of
individual humans like Rogers. Rhetorical constructs enabled by disciplinary
angles. 
 
Q: role of timing?
 
A: may have been related to the Depression; also to Erie and resulting uncertainty for TM
lawyers.  Treaty was a bit premature for
the Latin American market.  Responding to
a Europe in which the US lacked a big place, anticipating Americas as a market
to dominate. WWII meant that vision didn’t come about as anticipated.  Not that many businesses were demanding these
kinds of protections; just on the cusp.
 
Sarnoff: if the idea is to remember, do you expand rights in
unpleasant ways?  Is this a comedy and
not a mystery—a tale of laughter and forgetting?

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