WIPIP Session 3: Trademark again

Session 3 Trademark 2
Irene Calboli & Dan Hunter, Trademark Proliferation: Lots
of marks—Louboutin soles; motion of Lamborghini doors; etc.  Why so many? 
Very broad definition of what can be protected as a mark +
ill-interpreted concept of distinctiveness. 
TRIPS + Lanham Act both define marks broadly—anything capable of
distinguishing goods/services. TPP is even broader in definition. 
Spectrum of distinctiveness developed by Judge Friendly:
highest protection for fanciful marks/new symbols.  Reality: fictional distinctions between
descriptive/suggestive/arbitrary are ways to define ex ante an ability to
distinguish, not an actual distinctiveness. [Nicely put.]  We are betting that a fanciful mark will be a
better distinctive element.  Then we say
that anything distinctive can be a mark. 
Our project: differentiate between the ability to distinguish and
distinctiveness.  Every possible
aesthetic element of a product could in theory distinguish a product’s source—but
do we need that? Our answer: no.  TM law
isn’t supposed to protect aesthetic elements.

Go back to the drawing table: what is distinctiveness?  Stronger emphasis on TM use, or secondary
meaning?  Criterion of separability b/t
mark and product features? 
Marks have to be distinctive; not every sign that is
distinctive has to be a mark. 
Christine Haight Farley: Why is the spectrum of
distinctiveness the problem?  Isn’t it
just in need of tweaking?  Friendly’s
categorizations of word marks just don’t work for nontraditional marks.
A: we are starting to hear language of “fanciful” outside
the word mark context.
RT: [Of course if the other papers are right that names are
often part of product features, that gets harder.] [I like the concept of
limping marks for this goal of limiting TMs—Mark McKenna pointed out that Kit
Kat shape in Europe is an example of this issue—although it could in theory be
distinctive, in practice it’s always accompanied by other marks that do a
better job of distinguishing the goods.] [Artistic distinctiveness: Rock &
Roll Hall of Fame/ETW v. Jireh concepts, applied more broadly, do what the
paper is seeking to have done.]
A: Artistic creativity goes into a lot of logos.  Should TM be interested in branding at all?  As long as you’re allowed to use your word,
even if not your logo, you’re distinguishing yourself:
Jake Linford: assume fanciful marks are more likely to
signify source.  Doesn’t it save
resources to presume distinctiveness? 
Other rules are expensive and favor players with most money.  Not sure he believes this himself, but needs
A: Problem is from cluttering—we’re running out of
marks.  So it should be more expensive!
Unfair competition/passing off are options instead.
Betsy Rosenblatt: proliferation of TM protection for
arguably functional things, maybe they’re actually source identifying for the
population.  Red sole of Louboutins is
absolutely a source identifier and pretty. 
Adding secondary meaning as a stronger requirement wouldn’t solve that
A: combine it with aesthetic functionality. 
Christine Haight Farley, The Impact of New gTLDs on
Trademark Rights in Domain Names: rise in domain name disputes generally; this
will increase disputes. ICANN increased new gTLDs to increase space for
competition.  Idea was: glut in dot-com
space.  Nearly 2000 applications; Google
applied for a huge #; popular applications were for generic words. How will
second-level domain name disputes? Nothing in all the wrangling which dealt with
second-level domain names & how they might differ in new gTLDs.  This is the biggest moment since .com was
introduced 26 years ago; expands number by 5000%; there was no study beforehand
of how it was working.
UDRP view: we ignore what follows the dot.  Mercedes v. mercedes.com = the same.
Neimancarcass.com = not confusingly similar, though some “sucks” domain names
have been found confusingly similar in UDRP. 
Gulp v. Gulpy: why isn’t it confusingly similar under TM law? B/c we don’t
do a visual comparison in UDRP cases, and we don’t consider context.  It’s impossible to map TM law onto UDRP, and
we’ve done a really sloppy law.  UDRP law
comes from TM law, but not exactly. 
UDRP: universal; no specific relevant user; focused on registrant and
its intent; supposed to be for easy cases.
First case in new gTLD case: Canyon (trademark for bike) v.
canyon.bike.  Panel in this case said
that the post-dot matter enhanced the similarity, rather than ignoring it.  So: what about
Ferrari.red?  “Red” is network in
Spanish; could be a network of Ferrari owners using that space.  Walmart.lgbt?
Changed over 15 years—strong assertion of TM owners’ rights
in the policy. New mechanisms: TM Clearinghouse; Uniform Rapid Suspension—very property
focused—allowed TM owners to have rights already in advance.  Madonna got first shot at registering
madonna.church; Apple got first shot at apple.farm.  Also had legal rights objections to new TLDs:
DirecTV challenged .direct, and DirecTV won on confusing similarity (one-letter
It is true that the other elements of the UDRP test can deal
with many of the problems. But if this is a giveaway to the TM owner, and it’s
already the TM owner’s property, then that will cloud interpretation of the
remaining prongs (legitimate use, bad faith). 
Amazon.books should come out differently from Amazon.river.
All decided TLD cases: three categories of decision.  (1) post-dot info may enhance confusion:
hsbc.mortgage; TM relates to the goods following the dot. (2) Traditional rule:
gTLD disregarded, so lafitness.email, porsche.help, lamborghini.black. (3)
Troubling cases: gTLD doesn’t distinguish; panel has found that if info doesn’t
steer away from confusion, it’s
confusing: volkswagen.guru, marlboro.reviews, porsche.social.  But why should VW own .guru name?  Especially since we don’t know what these
spaces will become.  Example: .horse,
which turns out to be a space with a lot of weird content, such as spoon.horse,
walmart.horse, taylorswift.horse, etc.—playful.
Jake Linford: in a world with good search, does it matter?
Are any of these not famous marks?  Maybe
this is really anti-dilution protection in the gTLD space.
A: useful questions—remains to be seen how search engines
will work in this new space. Even if it’s true that search engines make TLDs
irrelevant, the claim was that there was a need for gTLDs.  Also, lots of TMs you’ve never heard of win
their cases.
Won Bok Lee, Confusion in the Eye of the Beholder:
Likelihood of Confusion in Trade Dress for Prescription Drugs.  Pharmacists/doctors are expected to exercise
a higher degree of care. But the health implications of confusion may be very
severe.  Would that logic work the same
way in product design?  No, b/c doctors
and pharmacists rarely rely on appearance of drugs, but on name/label—under US
law, similar-looking drugs wouldn’t be found confusing.
Korean case: found that patients shouldn’t be considered
consumers for product design.  Viagra v.
PalPal.  Viagra lost: secondary meaning
and nonfunctionality accepted; but consumer can’t get confused because these
are prescription medications and the pharmacist fulfills the order. The
appearance of the drug doesn’t matter.
Japanese case: Selbex, anti-ulcer drug, v. generic.  Unfair competition claim.  IP high court found capsule color/blister
packaging nondistinctive; physicians and pharmacists exercise higher degree of
care and won’t be confused.  The law
should be construed so that the physician/pharmacist becomes the primary
East/West divide: who’s wrong about the right consumer?  He leans to the Eastern perspective as more
reflective of realities.  You hand the
prescription to the pharmacist; purchase is made before you could be confused.
If patient isn’t considered, then do we discount the harm to
the patient for having switches? 
Difference in appearance b/t generic and branded can have negative
effects on patients.  Do we empower
pharmacists to palm off?  No, secondary
liability/liability for the pharmacist is still available.  Result: better adherence to generic; no
decrease in placebo effect; no confusion about what drug to take.  These negative effects may be greater in the
US where DTC advertising is permitted.
RT: [See also the papers in the Xalatan/Travatan case,
Pharmacia v. Alcon; mostly about the name but a bit about trade dress and
interaction with FDA requirements. Legal US DTC ads as key differences in secondary
meaning/who is the consumer?—little purple pill; not legal in most countries.  Consumers drive medication choices in the US—70%
of those who ask for a specific drug get it. 
That makes it possible to argue that consumers should be considered as
target consumers.]
Q: consider the learned intermediary doctrine from
torts.  Does Korea have automatic
substitution laws? [Answer: for some drugs.] That seems like a complicating
McKenna: there are other things that can avoid passing off,
like imprinting a name, that don’t involve size, shape or color.
Jake Linford, Are Trademarks Ever Fanciful?: Idea is that
fanciful marks have no lexical meaning, don’t point to product, therefore must
point to source.  A rose by any other
name … No inherent relationship between word and thing it represents.  If linguistic arbitrariness were really
strong, that would make sense—but that’s not the world we live in. The way
sounds communicate meaning: independent of lexical meaning, sounds convey
meaning.  Furniture called Mil and Mal:
which is bigger?  80-90% of consumers
will say Mal is bigger, and marketers understand this.  Dark beer: Gomel does better than Gimel.  Clever pro namers can hide some
descriptiveness in these marks w/o lexical, dictionary meaning.  Given sound symbolism, we should
recalibrate.  Tang (below) wants
aesthetic functionality; he thinks that’s too strong.  (1) Assumption that sound similarity is
evidence of bad faith should go where the sound similarity goes to product
characteristics.  (2) Think more
wholesale about sight/sound/meaning analysis—courts tend to say that we weigh
similarities more heavily than differences; if those have sound symbolism
packed into them, we shouldn’t do that. (3) could even act at the validity
stage, where sound symbolism might justify requiring acquired distinctiveness.
Maybe we should abandon Abercrombie,
despite the enforcement costs that arise from it.  Not all fanciful marks may have sound
Jeanne Fromer: Why not go further? Arbitrary marks aren’t
arbitrary. Once you put apple on a computer, people will make links (Newton’s
apple) which help the TM owner.  Is there
something particular about fanciful marks?
A: could apply same logic to arbitrary/suggestive; the
effect is worst for fanciful marks b/c they supposedly have no meaning other
than the TM meaning.
McKenna: doing this at the confusion stage makes more sense
from enforcement costs perspective. 
These considerations may contribute to descriptive fair use.  What kind of evidence would you want? And why
aren’t defendants doing it?
A: you have to find an expert, pay them, get possibly
skeptical courts to accept it.  Risk of a
big waste.
McKenna: can you imagine this argument changing particular
A: tends to pop up in drug cases, Xalatan/Travatan.  Easier to see in medical cases.  More a different approach to how we evaluate
Farley: Color symbolism exists too.  Scarcity problem: we are more likely to see
scarcity outside of word marks, but you’re showing that some sounds are better
than others.
A: Breyer might be right—colors are sometimes symbolic and
sometimes not.
Xiyin Tang, A Phonaesthetic Theory of Trademark
Functionality:  Functionality applied to
product design; want to turn the spotlight back to word marks.  Doesn’t mean functional in the sense of “open
here” or “fragile.”  More in the
aesthetic sense of a heart-shaped candy box. Study the meaning of phonemes.  Phrases can also have aesthetic meaning, not
just words.  Similar evidentiary basis as
previous paper; broader claims.  TM claim
by university over chant “I believe we will win.”  Rolls well off the tongue, can be used to
speed up as it’s chanted.  Ornamentality?  But what if it’s on hang tags—not used in
ornamental position.  Still can argue
that it’s an important chant because of its sonic qualities, and shouldn’t be
Q: Familiarity as an independent issue?  [Familiar terms are more popular.]  Peru sued b/c it wasn’t allowed to label its
pilchards sardines in the EU, even though consumers weren’t familiar with
pilchards.  Sardines sounds much nicer
than pilchard.
A: trying to find independent reason that people would like
the terms.  May call for expert

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