TM roundtable, part 2

Session 1, cont’d
Discussants:  Mark Janis: The
functionality doctrine is not good at doing the work we’re expecting it to do,
both in trade dress and design patents. 
Recurrent difficulties: tendency for decisionmakers to revert to de
facto functionality rather than de jure functionality, jumping from one to
another.  Trouble, including w/word marks
and design patents, trying to analyze overall visual impression by necessarily
considering individual features—may be unsolvable no matter how elaborate a
functionality doctrine we have. 
What would have
happened without functionality in Traffix?  There would’ve been a lot more discussion of
distinctiveness.  Would the P really have
been able to establish likely confusion? Discussion suggested that courts haven’t
been good at keeping marks thin, but when I read the few product configuration cases
that get this far, I’m surprised that the courts are even as good as they are
when dealing w/these cases.  Cases say:
mere existence of labeling kills confusion. Doesn’t work for post sale
confusion, but there’s lawyering to be done around that.  Versa v. Bifold goes through a lot of these
limitations.  In the same case, the court
is willing to do a kind of a scope/functionality analysis; it says that there
will be similarities in trade dress, b/c defendant had to use those elements;
discount those in comparing similarity of marks. Are courts good at that? He
doesn’t know, but it’s striking that it showed up.  Just doesn’t believe that Traffix court would have found
confusion.  [Though I think that it would
have been more like Louboutin, a
result without a useful explanation.]
Has more faith in
other limiting doctrines/moves than in functionality.
Alternative history:
is there a role for MDI to claim unfair competition, citing Blinded Veterans?  How differently would any of these scenarios
have ended up?  [This is the point I was
trying to make about Belmora: why
wouldn’t you have a claim against a functional configuration under that
reasoning?  And is that a good idea?  I think not.]
Paul Gugliuzza: we
first have to figure out what TM’s internal policies are, which is fascinating
to a person whose first interests are in patent, which is about invention.  Bone named many different policies served by
TM generally and functionality specifically: protecting consumers, encouraging
info transmission, deterring unfair competition, channeling IP protection,
preserving the public domain.
Don’t lose sight of
basic doctrinal question: is this the kind of thing consumers would normally
look for to ID source? Color of Tide bottle, yes; arrangement of springs on
road sign, no.  But what about difficult
cases?  McGeveran point: power of
channeling turns on the gravitas of the alternative regime: 1A and patent law
are charismatic/effective.  Vague
conceptions of competitive need don’t have same gravitas [which is interesting
given the pull of the free market in antitrust—cf. the lost antitrust critique
of TM—shades of the libertarian divide over what IP is, property or government
regulation].  Social value of TM
protection given existence of other source indicators; extending TM to even
arguably functional attributes has high social costs—in terrorem effect of
threatened litigation, so marginal benefits aren’t worth the costs.
Focusing on marginal
costs/benefits might be helpful mode of analysis.
Dogan: so what
doctrinal tools are best suited for outing bad motivations, cutting off these
suits, and reshaping norms so that potential claimants don’t feel entitled to
send off a C&D? Waiting for likely confusion is, as many have argued over
the years, waiting too long.  Doesn’t
allow for early resolution.
underreported issue w/relying on distinctiveness: many of these features have a
dual existence; they have some distinctiveness so there is a genuine
conflict.  It is not binary.  There are some cases that seem to be imposing
a higher standard for secondary meaning, but the tests we have for secondary
meaning suck in the context of product design, even if they make sense for word
marks. Used for a long time/advertised: doesn’t tell you much about how
consumers in fact understand that feature, especially in the absence of a
materiality requirement. Secondary meaning won’t give you real insight, not
even taking into account labeling and other ways consumers might get source
Many cases finding
no distinctiveness/likely confusion are also inflected by previous
functionality finding; wonders whether they’d say the same things if they didn’t
have a functionality finding.
Dogan: Long duration
doesn’t mean secondary meaning for features; courts might be sympathetic to that
point; we could do some work there. [TTAB knows this well.]
McKenna: different
courts do functionality to avoid difficult distinctiveness questions v.
distinctiveness to avoid difficult functionality questions.
Lemley: the closer
you get to a doctrine, the worse it looks. Cautionary tale w/r/t: functionality
is bad; other doctrines can take care of the problem.  Design patent has essentially abolished
functionality and the gap has not been filled by other doctrines.
Grynberg: functionality
has virtue of being somewhat isolated from other doctrines, especially
doctrines developed for word marks.  Louboutin was an example of the court
deciding not to do law; a district court can’t do that. The alternative path
doesn’t just have to take into account whether the judicial heart is in the
right place but whether courts can make law/parties can rely on predictions.
Bone: Traffix is an
example where the SCt feared mistakes about likely confusion by other courts,
so decided to use functionality.
Dogan: points out
that her students often say that confusion should have been found in Louboutin. These are empirical
questions. [But do they have to be?]
Leah Chan Grinvald: Whose
perspective it is matters.  Clash of
experts, fight over survey design.  No
real study about trade dress compared to Tom Lee et al.’s study of how words
are perceived (or not perceived) as marks. 
Courts haven’t really been grappling with the body of consumers: which
consumers are we going to care about? Non-English-speaking consumers?  Near-sighted consumers who need to see designs
across the room?  Plaintiffs’ motivations:
INTA experience is that there are definitely a lot of strike suits.
Robert Burrell:
Difficulties we have with nonuse.  We
have no idea how to apply these rules w/r/t shape marks.  What is a “use” of a shape mark in a nonuse
context?  Use as a badge of origin?
Dividing genuine
attempts to prevent confusion v. illegitimate attempts to prevent competition
can’t be done: they’re all attempts to carve out space for oneself in the
market and we have to be honest about that.
Paul Karol: Traffix
has a huge effect on rejections at the PTO; one of the hardest rejections to get
around.  After Traffix, they require you
to disclose all patents you have that relate to the design, then explain to
examiner what a claim covers; that’s much more powerful than distinctiveness
under §2(f).  Trade dress for Christmas
tree ornament: had no problem w/distinctiveness, but real problem
Dinwoodie: How would
you assess confusion w/o functionality? Design law in Europe involving little
holders for fruit, which weren’t entirely functional.  Infringement inquiry gives tremendous weight
to functionality of design—a scope determination.  It may have a role not just as a doctrine
itself but as part of the overall analytical process: makes courts think about
the issues that they should consider. 
Psychological impact is important.
Kur: European court
held that a particular means of manufacture was not covered by the exception
for TM protection for features required to produce a particular result, because
the resulting chocolate product didn’t
have anything required to produce a particular result. This was bad! Boils down
to overarching competitive aspects. 
Unfair competition
law: European POV is that’s extremely important. There’s little happening in
functionality w/TMs, but in Germany courts are going extremely hard in
protecting very functional products under unfair competition.  Lapsed patent for extension cord: court said
it was in the public domain, but you still shouldn’t make them identical—you have
to keep your distance. Even stringency in TM law doesn’t prevent these claims
from coming back to life. 
Heymann: need for
first principles about what motivates parties, and need for TM to help or push
back. Students who thought Louboutin should win: they’re using the contrasting
outsoles to evaluate quality of shoe. That does happen; Louboutin cares about
that reputational effect, even though these students aren’t necessarily
purchasers of the shoes.  Many of these
issues are much more about dilution. 
Wanting to protect uniqueness of design. If that’s the motivation: TM
law should not be about that. Why is that? 
We need to explain. 
Dogan: Real passing
off does happen, maybe not in so many trade dress cases. Middle ground,
Louboutin, where product feature being copied isn’t just being copied as a
neutral product feature but also reflects source identification of some sort;
motivation is to protect reputation, not just product market—borrowing reputation,
whether in confusing or nonconfusing way. [But YSL made three primary-colored
outfits; the choice of color really had no relation to Louboutin’s reputation,
which we can tell b/c they did all three primary colors, so saying “copying” is
already to place Louboutin too far on the spectrum.]
Lemley: We have
different treatments of functionality. Sometimes we have a full exclusion from
protection—© and TM in some circumstances. 
TM is closest w/expired utility patents. Then we have a threshold
measure: you have to reach some amount of nonfunctionality to get over the full
exclusion, and then something else happens, which could be filtering the rest;
he thinks of TM as doing this—secondary meaning hurdle which was raised
artificially for product configuration, and then we filter out.  Design patent: get protection for even
functional features.  Useful to think
about not just what is our legal rule but how are we implementing it: at
retail/issue by issue, or categorical rule, or something by in between.
Dogan: courts have
said that design patent nonfunctionality
àTM nonfunctionality, which is terrifying.
[Except in Apple v. Samsung, sigh.]
Bone: We could
require surveys/get rid of circumstantial evidence to show secondary meaning in
trade dress cases, and would have to be really tight on the survey—not just
recognition, but reliance.
Dinwoodie: that is
what happened with Nestle in the UK, w/surveys showing 90% recognition.
McGeveran: lack of
recognition should be enough to kill it.
Dogan: expense of
survey might also have to be borne by D.
Bone: we keep
focusing on competition, but there are also downstream innovation policies to
be served.  Things like web-based
innovation; pizza restaurant design. 
Labeling makes sense, but prohibiting copying doesn’t.  Louboutin: you’d be a nut to think that a red
sole in a non-Louboutin store was anything but competition; it’s all about
post-sale confusion and prestige. Not source identification, but a different
kind of reputation.
McKenna: Kur’s example
of the utility cord [oops, I may have misheard, maybe it was a bolt]: there was
no suggestion that the shape conferred any particular advantages.  So the reaction
that there should be freedom to copy has to be based on the idea that patent
law frees people to copy when the patent expires. The question is precisely “what
kind of competition are we allowed to have?” “Am I allowed to compete on the
basis of color?” The market is defined by what the law says.
McGeveran: As
w/speech cases, plaintiff and defendant are not similarly situated. Anything
that requires D to respond in kind pressures settlement that keeps D out of the
market. That’s anticonsumer in the end. Patent has figured out things TM hasn’t
about utility.
Dinwoodie: Patent’s
utility standard is pretty low, though.  ©
has had to struggle more w/challenges of functionality through useful articles
etc., partly b/c it’s not meant to be its main area.
McGeveran: if it’s
accurately descriptive to say there’s a low utility threshold, nonpatentability
strengthens the argument that if you can’t even get patent protection, why
would we give protection w/no term to you here? 
[I think the larger point is about what utility is; whatever it is, patent protects things/features that have it
and TM does not.]
Kur: shapes aren’t
patented—not utility patents.  Patents
protect technical teaching, though that might be manifested in the shape.  Sometimes the shape may be accidental.  We need to know the technical teaching and
how the shape relates to/expresses the technical idea that has become free to
use when the patent expires.  Germany: if
there are other ways to do something, others can’t make exact copies. Courts
are thinking that imitation is only allowed if there is a real need. Whereas we
are interested in freedom to copy, entitlement to produce.
McKenna: we still
need to answer the question of whether you want competition in the market for
the function, or competition in the market for this unpatented bolt.
Kur: yes, and
Germany answered this question.
Dinwoodie: does an
expired patent allow you to practice the invention, or practice the invention
using that shape?
RT: I misunderstood
McGeveran’s initial point.  One reason to
have functionality: functionality means that risks of suing are higher for P
b/c it might suffer total loss of rights. 
So if we’re concerned about deterring bad suits, functionality may be
useful as a separate doctrine.  And this
poses issues w/crafting the appropriate unfair competition regime.  If you can always use unfair competition to
threaten suit regardless, then the risks of suit to P go down.  Also one point we haven’t discussed: Lanham
Act amendment requiring a trade dress P to show nonfunctionality under §43(a):
absolute bar (it doesn’t outright say so, but all cases that I have found have
assumed that this is the rule) or just something that then factors into the
§43(a) analysis?  What about for dilution
under §43(c), which has a similar provision? 
One way to think about this is that Congress, having lost the
understanding that TM and unfair competition were different things, grafted
this provision onto the Lanham Act, the earlier elements of which were drafted
with the understanding that §43(a)/unfair competition was different. 
McKenna: After
Traffix, courts are generally just looking for a relationship to the patent;
without that, you go back to the alternative designs test that SCt rejected.
Dinwoodie: you could
look at alternative designs to figure out what the patent’s negative space was,
though. There is a test somewhere between functionality trumps always and
functionality never trumps, as w/aesthetic functionality.

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