TM Scholars’ roundtable, part 6

Research Directions
Discussants:  Laura Heymann: What is the end of empirical
work? Which of our legal principles are based on assumptions or are not meant
to be connected to the Q of how consumers actually behave?  Lots of research about design remains to be
done: what aspects of design are performing the various functions we care
about, etc. 
Are there additional
costs from having trade dress protection that don’t already arise from design
protection?  V. versa.  Damages questions: if we are to have
apportionment, how shall it be done? What motivates consumers w/r/t specific
features versus entire collection of features/general reputation?
Aesthetic
functionality came up a lot.  Figuring
out how to parcel out the issues that are now grouped under that umbrella. 
Unfair competition:
relates to question of remedies. 
Graeme Dinwoodie:
Private practice/private ordering: uncovering what’s there. We might be in a
pretty good position to exploit that.
Empiricism is
fashionable, but it’s hard to engage w/that legally w/o a normative structure;
we often gloss over normative foundations b/c we think we know them but they’re
often quite contested, especially when it comes to remedies.  European remedies also deserve reexamination.  Often taught last in a rush even though they
may be the most important part of the case.
Lemley: A lot of
theoretical justifications for TM, and for defenses/limitation, are or ought to
be essentially resistant to evidence. We might want to know what people think
when they see a can of Coke appear in a movie. Almost all his students think
there’s a sponsorship relationship, but should that inform TM law?
Bone: Empirical
results are often a mess. We as scholars may take it to extremes: pick studies
that support us, or review a lot of studies but ignore their methodological
limitations.  Sounds a note of caution.  If you’re uncertain, do you default to
current rules? Reform nonetheless?
McKenna: think more
broadly about remedies and relation b/t TM and unfair competition, if remedies
are starting to divide more b/t technical TMs and others. There’s much history
to be mined.  Key structural difference
b/t technical TM and unfair competition was precisely remedies, so we should
reengage that project.
Dinwoodie: Echo Bone’s
skepticism re empirical work—additional knowledge can’t be harmful if we
understand what it does and doesn’t tell us. 
Also, empirical work is really good if you have a particular utilitarian
view of the world. Otherwise, you need other value systems.
Bone: not so much
utilitarian as consequentialist. 
Yen: we might be
horrified by what we found out about empirics.
Lemley: It doesn’t
follow that we don’t need the evidence, but we must think intelligently about
how to use that evidence. Even a nonconsequentialist would want to know the
impact of rules.
McGeveran: Empirics
doesn’t mean big data; Silbey’s qualitative work is empirical and interrogates
TM myths. Some may unravel tidy assumptions about consumer use of
info/autonomy. There’s also lots of myths that are used in normatively
undesirable ways. Take the bitter w/the sweet.
Dogan: we should see
who’s suing whom in product design: qualitative examination of cases; also the
registry.
Dinwoodie: CTM
regime may be clogged; companies are getting more sensitive to costs.
McKenna: more
evidence on clearance costs may be available. 
One woman he talked to advises clients not to change packages b/c
clearance costs are so extraordinary: need to clear TMs, designs across EC and
nationally. Interview studies about how people decide on packaging could be
very useful.
Lemley: A nominative
fair use doctrine for product configuration: communicating similarity but not
confusion.
McGeveran: would you
care if there were empirical evidence of confusion from certain nominative fair
use? I wouldn’t.
Bently: Basic
confusion level is pretty high—no matter what, some people will misattribute a
Visa ad to Mastercard.
Yen: Does that
confusion interfere w/the operation of the market?  It doesn’t seem to make people skeptical
about what they’re buying in stores.
Heymann: there are
always anecdotes of people who accidentally buy the house brand in the CVS.
[Discussion about
search attributes and the complexity of search; plus consumers may well just
have general impressions when they go to the store.]
Dogan: how would you
fix secondary meaning??
McKenna: there’s no
good standard even for word marks. We assume that, if people say, “I think they
make it b/c of that word,” there’s secondary meaning and move on.  W/design, consumers can assume that but also
not be using the design as an indicator of source.   Length
& manner of use, advertising etc. don’t answer the question, just tell you
people are familiar with the thing—not how they interpret it. Same is true for
word marks, but we’re more willing to assume that long exposure to word = treat
it as a TM.  If we actually try to do it
right, it will be so hard that we will rarely succeed/it will be very
expensive.  Litigation surveys
particularly.
Bently: accept that
there are many myths around TM.  People
think the largest word on a product must be the TM. 

McKenna: Tom Lee’s
study shows it doesn’t matter what the word is [unless it’s generic];
majorities think it’s the brand if it’s presented in a certain way on the
package.  This is to say that we really
say a term is descriptive when it would be too costly to prevent other people
from using it.

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