TM scholars’ roundtable part 2

Session 2: Proxies for Distinctiveness; Proving
Distinctiveness (and Secondary meaning); Strength of a Mark
Do current doctrinal tests properly assess actual consumer
reaction to purported marks? What is and should be the role of consumer surveys
in proving secondary meaning (or genericness)? What is the role of other
disciplines (linguistics, psychology, marketing) in proving consumer perception
in the context of trademark litigation (as opposed to policy formation)? Are
the factors identified by current doctrine ideal/helpful? Are current
procedural devices such as the presumption of secondary meaning based on time
of use, or the concept of incontestability, useful in identifying marks that
have reached particular thresholds? What is the relevance of strength of a mark
for the scope of protection it receives? Is the concept of incontestability
relevant to scope? How does one assess the scope for a composite mark that is
distinctiveness overall but clearly comprised of non- distinctive components?
Introduction:   Shari
Diamond: has an affection for surveys. 
Two kinds implicated: secondary meaning surveys are among the worst in
TM law. Reasons why: low rate that seems to be enough.  Distinct from Microsoft scenario where the
brand is so strong that people think everything software related is Microsoft
related. Control groups can be important where you’re worried about pure
guessing/yea-saying; it’s hard to imagine you won’t do better if you have some
version of a control. To the extent you get “from one company” you can at least
take out the bias of the particular methodology by controlling w, for example, “baking
soda” as a control product. Jacoby would say this isn’t a causal Q so you don’t
need a control; it’s not just a causal Q but a methodological flaw to not
control for yea-saying and guessing. 
Output measures: consumer sales, use in publications.  Interested in output over input measures like
marketing signals.  Spending doesn’t mean
they got it right.  Weak measure at
Genericness surveys: Pretzel Crisp case.  TTAB cancelled mark as generic; gave weight
to dictionary definitions, use by public, including use in media and third
parties in food industry, and use by D itself. 
There were opposing surveys.  Fed.
Cir. complained about whether the TTAB had treated the mark as a composite mark
rather than two pieces put together. 
Surveys on both sides sometimes trigger “plague on both houses” reaction—contributed
to bad reactions to surveys, like Posner’s. 
Surveyor’s “dark arts.”  Here,
Fed. Cir. said that TTAB should have paid attention to surveys. 
Opposing surveys: Teflon survey: Princeton-Vanguard
(registrant): 55% said it was a brand, 39% common name, 9% hadn’t heard/don’t
know.  Judge in Teflon was surprised how
well respondents did distinguishing brand & common names.
Frito-Lay’s survey: 41% said it was a brand, 41% common, 18%
not sure.
Look at the methodology. 
We haven’t resolved the best way to do these surveys.  What would have been the right way?
First one: 18+ screened for purchase of salty snacks; tested
on understanding of difference b/t common and brand name, and only 64%
qualified. Control brands: Cheese Nips, 85% correct, Flavor Twists, 48% correct,
Sun Chips, 96% correct.  Control common
names: Onion rings, 91% correct; Gourmet Popcorn, 72% correct, Macadamia Nut,
92% correct.  Pretzel Crisps, 55% Brand
name.  (Flavor Twists was a related
Frito-Lay, similar group. 
Definition of brand/common given and asked whether they understood—2 said
no and were excluded.  Control: Ritz
Bits, 82%, Lucky Charms 87%, iPod 61%, American Airlines 89%, Triscuit
80%.  Common: Ginger ale, 72% correct,
Automobile, 91%, Potato chips 90%, Newspaper 93%, Popcorn 93%.  41% said Pretzel Crisp was a brand, 41% said
common name.
Is it good enough if you exclude 1/3 of the people being
tested?  Details of survey construction
are really important, and to the extent that we don’t have agreement on best
way to conduct them we won’t get really good evidence from the surveys. 
Bently suggests broad range of common names might focus
attention differently v. salty snacks.
Diamond: it’s possible—it’s an empirical question.
Ramsey: results are in the middle!
Diamond: usually in generic area, above 50% is good, but
that’s a decision for the court.
McKenna: what’s the margin of error?
Diamond: has to be computed. 
[My quick lookup suggests for around 250 people, it’s around 2.7% at the
.05 confidence level.]
Litman: do we know what affect not training people and just
asking them if they knew the difference had?
Diamond: it depends. If you think people will tell you they
know but just flip a coin, it would have one result; if there is a systemic
bias you might get results.  Might be
difficult to exclude such a high number.
McKenna: but those people aren’t relying on marks when they
buy, if they can’t tell the difference b/t car and Chevrolet.
Rebecca Tushnet: Maybe even outside inherent distinctiveness
the concept of TM distinctiveness is not empirical. Tom Lee et al.’s work:
putting a term in the TM place on a box makes consumers identify it as a mark,
unless the term is generic.  But even if
you think for efficiency reasons (even setting aside competitive need reasons) we
should still be distinguishing types of word marks w/o focusing on their
placement, the category of suggestiveness is not empirical, and I now think suggestiveness
should simply be eliminated/collapsed into descriptiveness and secondary
meaning always required.  At the same
time, 5 years of exclusive use for a main word mark is probably a decent proxy
for the non-empirical idea that someone should’ve shown up and made your use of
that main word mark non-exclusive. 
Interestingly, PTO regularly rejects 5 years alone when it’s dealing
w/trade dress, and I think that’s right. 
But what rules should we have other than word/trade dress?
My obsession w/the consumer who does not know enough to ask,
to borrow from the Passover Seder: that is likely to be a big component, and
thus particularly hard to test b/c answers so easily distorted when there’s no
preexisting opinion.  Franklin &
Hyman: different answers depending on what stimulus—what they imagined, what
they expected, what they saw.  Perhaps
this is another consideration favoring a less empirical approach.
Incontestability as proxy: increasingly makes sense to me.  Admits there’s nothing empirical about it.
Strength and scope: always been a current in the First
Amendment/parody cases that strength can decrease likely confusion.  I always like to teach with Lollipops and
Jellybeans for skate rinks: similarity confusing, but one reason is b/c the
mark is conceptually strong for skate rinks but lacked marketplace
strength.  Affiliation confusion fights
back against that insight—it admits that consumers will distinguish from the well-known
brand but claims that consumers will interpret
the difference in a particular way that means they’re confused.  It’s a way to put a fundamentally nonempirical
concept on the TM owner’s side.

What about strength of D’s mark?  House
mark arguments are often made.
Fromer: composite mark issues matter—Pretzel Crisps bag has
a particular appearance; might come to mind for consumers even if they’re only
being asked about the word mark. Goes back to the Lee et al. study.  Not even clear what we’re pinning down in the
questioning!  Trademark claiming: 2D in
terms of having a mark and a class of goods/services.  Surveys ask about symbols only, but take
advantage implicitly of product category—petitioner’s survey may have been
using lots of salty snacks and therefore priming consumers to think about the
many salty snacks out there.
Is there a way to use metastudies to help here?  Courts have a duty to understand why they get
different results, and metastudies have been useful in that regard to explain
why different studies come out differently.
Role of empirical work in what TM law/policy should look
like?  Surveys are presenting case by
case empirical work. Nonempirical line of Qs is empirical too in some sense b/c
we have to decide when we want to make marks incontestable and what that will
mean, and whether we want a category of arbitrary marks. May not be case by
case but we have to figure out where and why to draw lines, some of which will
be normative but not all.
McKenna: surveys directed at words—Gucci v. Guess case, and
horrible survey accepted by court as evidence even w/net 6% confusion. General
challenge w/non word marks is we don’t have good system for forcing the P to
articulate its claim. So then it’s hard to figure out the right control—enormous
amount of gaming.
In principle, 5 years makes sense, depending on 2
assumptions: (1) PTO’s evaluation of whether substantially exclusive use has
occurred, given incentive of applicant, and (2) what happens if PTO is wrong—can
parties fight?
Affiliation confusion/house marks. Affiliation confusion is
a way of putting nonempirical concept on side of mark owners. See courts
sometimes say that house marks help w/straightforward confusion, but
affiliation confusion can make role of house mark irrelevant/complicates the
role of other factors in the assessment.
Andrew Moshirnia: Empirical weaknesses of both surveys: On
exclusion of respondents.  In a robust
study, exclusion should happen at the end, not the beginning, and then justify
why you reduced the power of your survey—people didn’t want to create a record
b/c they were scared about what those excluded people would have said.
Complicates metastudies by sculpting population.
Priming/cuing: pretest effect. Normally if you apply a
filter, you want the application to be disguised so you’re not cuing your
subject to understand what you want them to do. If you’re going to apply a
pretest, create a randomized order. [But if it’s something they don’t
ordinarily think about, training them on other examples seems like the best
thing to do.]  If we’re demonstrating
proper behavior we want them to exhibit, they want to please us.  [But they won’t know what that is, will they,
other than “classify what you think the answer is”?] Better: Pure control
w/pretest, pure experimental w/pretest, pure experimental w/no pretest.  That increases # of subjects by 50%, so it’s
more expensive. 
[he says yes, they need to know how to do the task, but he’d
do the filter last; maybe change up what examples you train them on; maybe add
a query on the amount of confidence, allowing you to work backwards to deal
w/lack of knowledge. Is the training itself the qualification, so people who
fail are screened out? Diamond says the problem w/follow ups is that it’s
consider a toggle: either the mark is generic or brand name.  Not sure what the confidence level would buy
you.  Litman says: would tell us how much
people are just giving us an answer just b/c they want to give us an
answer.  Diamond says: controls help
w/that too.  Large literature: when you
give people forced choices, they express positions but if you give them a don’t
know option they’ll say don’t know even when they do have opinions.  Mosnirnia: confidence can help you identify
people who really did want to say don’t know but want to please you.  You can’t ask them at the original question—you
have to do it afterwards, but it’s a good way to deal w/a pretest effect]
Easier way of dealing with it: Strength of feeling of
subject after they’ve made their decision—how confident are you in that
assessment? The logic often is priming will have a larger effect on people who
are unsure.
Diamond: never seen it done in litigation, lots in academic
studies.  Cost is the gorilla in the
Moshirnia: if both sides are deliberately shaping data, meta-analysis
will be difficult.  Need to be able to
regroup people.  But both parties do odd
things to their data.  No exclusion is
bad—asking “do you understand?” leads people to shut up.  Filtering first is also a big statistics
Ramsey: Fine w/quieting title as to first to use but not
about future competitors—it costs money to challenge, and if you’re not
currently a competitor there’s nothing to do. PTO is the gatekeeper but it’s
not doing any substantive examination of incontestability, and that is a
Linford: have same questions about incontestability—do we
have the same sort of confidence about giving incontestability for 5 years of
uncontested use after registration as we do about presuming distinctiveness
from 5 years of exclusive use? 
Still wondering what to do about consumers who haven’t
thought concretely about source significance—even for them, marks may be
communicating in ways they are recognizing, but not recognizing
consciously.  Less worried about those
who can’t articulate source significance if there is a way to figure out that
they are detecting it/attracted to it [how do you determine that they’re
detecting source significance v. detecting some other feature they desire?].
Parody: strong mark = more effective parody. He worries
about that b/c there’s something different than run of the mill likely
confusion case. At least if you buy Souter’s idea that it says 2 things at
once: I’m not the original/I’m the original. 
Dual communicative aspect won’t be the same for close follower/ordinary
copier.  Maybe a strong mark is
hypersalient so consumers notice small differences, but he’s not convinced the
parody cases teach that.
Beebe: Concept of TM strength v. affiliation confusion.  We’d [Beebe & Hemphill] like to think of
strength as increased consumer sophistication w/r/t the signifier but also
w/r/t the products w/which the brand is traditionally associated. The increased
strength may result in decreased likelihood of affiliation confusion b/c of
increased consumer knowledge. Population of individual consumers aggregated: as
strength increases, a few percentage points of consumers are no longer confused
with each increase in strength, and maybe just enough that there’s no longer
justification for intervention in the form of an injunction. 
Bone: Not sure what it means to go from empirical to
normative—if normative theory is dependent on some empirical results, then we
still need empirical results.  Genericity
is an area where we might want to think more normatively.  Canfield approach—chocolate fudge soda—when we
don’t really want to survey b/c we don’t know what to ask. Ask: Is that mark/symbol
really going to be very useful for designating a particular product class? We
will make mistakes, but we can often tell w/o surveys.
Might think about percentage of population who uses the
mark; might also think of vividness—are there many similar marks out
there?  Ability to call to mind quickly
when I see something similar?  Branding/the
more meanings it has, the stronger it is?
Litman: incontestability: the statute separates the quiet
title from the incontestability. 
Congress adopted it way back when as an incentive to register, which
Congress thought we’d need here b/c of the history of success in litigating
unregistered marks. My guess: it’s not doing that work, ever; when you want to
sell stuff in countries other than this one you have ample reasons to register
and incontestability isn’t on the radar. Do practicing TM lawyers really value
incontestability? Her guess: may give them as much trouble as it does joy.
Mid-Point Discussants:       
Michael Grynberg: human tendency to simplify is present even if that
means offloading decisions to experts, linguistics or otherwise.  Disheartening to read about how badly
incontestability is done now, b/c concept has appeal.  But changes have problems of their own.
Suppose descriptive/suggestive line doesn’t make any sense.  But then we have lots of fights about
suggestive/arbitrary line that we don’t have to worry about today.  Fromer says Apple isn’t arbitrary for
computers, Fromer’s reasons are plausible: so now what?  Another possibility: get rigorous about
secondary meaning.
Reasonable consumer exercising ordinary care: is a consumer
really exercising ordinary care if he perceives possible affiliation b/t Jose
Cuervo and Maker’s Mark based on use of a red wax seal? Might be a way to deal
w/various meanings of distinctiveness by changing standard/considering
Litman: Likes Bone’s idea of a court appointed expert. Would
improve quality/probativeness of surveys.
Omri Ben-Shahar and Lior Strahilevitz have a paper
suggesting that courts adopt the survey mechanism to interpret contract
language.  Grass is always greener in the
other field!
Our proxies for distinctiveness are stuck in the early 20th
c. You gain distinctiveness by selling products to consumers for a certain
amount of time; it doesn’t disappear quickly. 
But today we have instant secondary meaning, as w/Chrysler’s “Imported
from Detroit,” but courts don’t have a way to deal w/that. We also have secondary
meaning that dissipates in part b/c distinctiveness is happening not just
through sales but through social media/products getting 15 minutes of fame.
Plus, different TMs have different flavors not captured by linear strength.
Affiliation confusion: Tiffany guitars wouldn’t confuse anyone; Starbucks coat
hangers. But Orville Redenbacher snow shovels—she’d believe there had to be a
relationship—it’s not that the term is inherently distinctive. It has a kind of
secondary meaning that is different from Tiffany and Starbucks.  That gives her concern not just that our categories
are old and outdated, but that they’re causing us to miss something.
McGeveran: do these need to be empirical questions? Even if
we think that the particular flavor we’re looking at is a Q of fact and not of
law, is it a Q of fact that must and should be determined in a form of
empiricism as broad as the survey? Are there more times when judges should feel
they have the opportunity to make factual determinations w/o very expensive/high
admin cost evidence? Geog. misdescriptiveness refusals aren’t adjudicated
w/surveys.  How do we account acceptance
of that other than history?
McKenna: those are almost always about registration, which
uses surveys less. Why are we so willing to avoid empiricism in registration?
Affiliation confusion becomes a black box for so much of
this.  Beebe says strong marks might
decrease affiliation confusion. Super-strong marks: consumers more aware of
differences in visual presentation. That doesn’t mean keen awareness of range
of goods and services on which they’re used. 
Brand extension literature operates on assumption that the source is in
fact the same, but at least it talks about similarities of goods and services
in possibly useful ways.  Need more
empirical literature on strength and effect on consumers.
Leaffer: Conglomeratization of American life in 20th
c. to today, affiliation confusion exploded. 
Consider the importance of subsidizing the TM office in requiring all
these submissions.
Burrell: 1920s assumptions about how consumers behave—we need
to test more generally how consumers behave before we can think about how
consumers might be confused.  We don’t
even know what nonconfusion would look like.
Dinwoodie: role of excavation both history and normative
factors embedded in distinctiveness analysis to free courts from fossilization
that has occurred.  The nuance in the
doctrine doesn’t match how the courts talk about it.
Ramsey: Defending Abercrombie.  So many judges aren’t grounded in TM.  Lawyers think it’s “soft” and they can step
in and litigate; RT’s paper shows that courts and litigants just screw up
incontestability. Doctrinal tests force parties to talk about important issues
and hopefully the judge will address them.
Dogan: when what the D does has social value, the courts
have the tools to allow the use. We can push hard on this area where there are
so many feedback loops: room for advocacy and scholarship on how courts should
think about the relationship between risk of affiliation confusion as measured
against social value that comes from informational uses of TMs.
McKenna: we’ve seen courts feel increasingly free to pick
factors, but we haven’t had a methodology for picking factors.  They may be clustering in particular ways.
Also true of different types of confusion. I read cases that could have been presented
as IIC but just weren’t; no rhyme or reason. 
Same w/sponsorship or affiliation, e.g. the Cracker Barrel case.  The court says they aren’t confusing and
doesn’t contemplate possibility of co-branding.
Beebe: most effective defense of Abercrombie is competitive
need. Is it fair to say that the factors from Zatarain’s—use by competitors,
dictionary definitions, general competitive need—compare to factors in the
European or British approach? 
Bently: court of justice drew a distinction b/t the reason
why we have an exclusion and the test. The reason is so traders can use
descriptive terms either to describe products/services or as parts of composite
marks. They put a strong emphasis on public interest underpinning purpose of
exception. But what then is the test? Whether the sign is being used or is
being capable of being used in a descriptive way of some characteristic of
product/service. Doublemint: doesn’t have to be core/essential characteristic;
can be peripheral. That means descriptiveness has quite a capacity to exclude
what US calls suggestive marks under Abercrombie.  UK registry held that “sushi” for chocolate
in the shape of sushi was not descriptive; inconsistent w/CJEU holding that it
must merely be descriptive of a quality of the goods.
Fromer: Apple for bananas: what is it on the Abercrombie
spectrum?  Level of generality issue: are
apples and bananas substitutable?
Thinking about corpora as a substitute for dictionaries, as
Linford suggests: they are useful for large-scale data. But computational
linguistics aren’t there yet for really understanding the corpus other than on
a case by case basis for an individual litigation.
Bone: imagination test: I don’t even know what that is. I
don’t know why dictionaries are important. Competitive need makes sense to him
for reasons we might want to demand a showing of secondary meaning.  Ultimate standard might be
anticompetitiveness, then develop categories where that’s less costly than
doing case by case analysis. That’s why suggestive should be thrown out—it’s
not doing anything helpful in this regard. 
Grynberg: if you get rid of suggestive, what is Penguin for
refrigerators?  [RT: I’d say don’t get
rid of it, just make them show secondary meaning.]  Consumers who have high need for cognition
may like it a lot.
Bone: sure it’s suggestive, but what does that have to do
w/TM?  I can tell a story, but the story
is about anticompetitive effects. 
McKenna: automatic assumptions about source by consumers as
a story?
Bone: no, a different starting story: why not require
secondary meaning for everything? 
McKenna: empirical presumption about what they’ll think.
Bone: just-so story.
Dogan: Might not be a problem to grant protection to
suggestive marks if we’re really strict about what suggestive means.  Breadth of protection is also important.
Suggestive = plays linguistic function w/r/t feature of product. Courts that
say that suggestive = inherently strong make for harmful consequences. We should
presume that suggestive marks w/no commercial strength are weak.
Burrell: we never truly ask people to prove distinctiveness.  We only ask some of them to prove use for a
while + expenditure of enough money on the mark.  Versus you get your monopoly straight away.
Dogan: to the extent people are concerned about automatic
protection for suggestive marks, those concerned are softened if we make the
threshold higher & allow protection only for marks unlikely to have
significant adverse effects on other players [see also: scope]
Dinwoodie: why waste time on proof when we’re pretty sure—he
still sees that as valuable. [I do too, but I’d put the line for pretty sure at
arbitrary rather than at suggestive.]
McGeveran: doesn’t agree about Orville Redenbacher v.
Starbucks—Williams Sonoma will sell shovels and popcorn. Once something is
recognized as a brand, not just as a mark, it’s probably empirically true that
many consumers might think that recognizably brand thing is slapped on is use
as a source ID, or at least as affiliation. 
We could decide not to protect those things b/c we don’t care as much
about affiliation/endorsement confusion as the current structure does, but as a
descriptive matter he would expect a perfect survey to find that many people
think the Orville Redenbacher shovel came from “the Orville Redenbacher people.”
Why are we even asking about distinctiveness in this setting? It will always be
distinctive once it passes the threshold of being a brand.
Litman: I wouldn’t assume Perdue cologne was co-branded by
chicken co.  But I spend a lot of time
trying to weed out of my students the notion that TM distinctiveness is the
same as other kinds of distinctiveness, but that’s what’s going on.  The original Starbucks design, if I saw that
on anything I’d assume that was affiliated w/Starbucks, even for toilet
cleaner. That’s got something to do w/how distinctive it is not in the TM sense
but rather in how unusual it is [what Beebe calls differential
McGeveran: yes, but don’t then use distinctiveness as “do
you think this tells you something about where this came from.” Increasingly
the empirical Q of “could this be a Julie Andrews snow shovel” will be
answered, “sure, why not.”  If we hinge
distinctiveness on consumer perception we’ll have increasingly extensive brand
Dinwoodie: this is really an argument about
scope/enforcement, really about dilution. What range of goods you can cover.
Litman: original Starbucks design is probably not famous;
would play badly in the Midwest.  But it
is very unusual. 
Dinwoodie: speaks to whether fame is proper requisite for
Litman: but I’m talking confusion—there’s no reason to put
her on your product unless you’re trying to say “this comes from the same place
as Starbucks coffee.” In the sense of being affiliated with.
Dinwoodie: maybe affiliation is a dilution cause of action.
Ramsey: But what about the Orville Rockenbacker shovel?  Consumer would probably think it’s parody.
Unrelated goods—you really need identity or virtual identity.
Linford: stronger anticompetitive = generic; weaker
anticompetitive effect = descriptive. Competitive need is the first order
question we’ve been assuming w/suggestive marks. We’ve been using imagination
test as proxy for lack of competitive harm. Maybe courts should say expressly
that they’re not trying to categorize but trying to think about what the
competitive harms.
RT: Concerned about courts that call suggestive marks strong
too, but interestingly I think that’s increasingly less common than it was 10 years ago (but would need to do more
empirical work to be sure).  Conceptually
related to the idea of whether incontestability has any effect on strength?
Want to bring in descriptive fair use and courts’ confusion
about the problem of descriptiveness in that context: Car Freshner—court of appeals
dodges the real issue; if D’s use is descriptive, P’s use is sure as hell
descriptive.  Being more aggressive about
melding suggestiveness into descriptiveness might have helpful consequences or
troubling ones for descriptive FU.  See
also the Victoria’s Secret case about “delicious,” where the 9th
Circuit says that use of the term to describe the wearer would not be
descriptive use.  Whaaaaat? Finally:
consider treatment of retrievers/dog images by PTO early in internet era.  Thought the idea of the retriever dog was
highly descriptive in the context of internet search; probably isn’t any more;
probably didn’t do much damage by requiring retriever image users to wait, but
other lessons could be taken from this episode about the ability of the PTO to
predict uses.]
McKenna: Always driven me crazy for courts to say there are
2 components to strength. If it’s empirical, it’s conceptually impossible that
use by a different party for different goods and services can disrupt the
strength of the connection b/t my mark and my goods.  Penguin for refrigerators doesn’t affect
Penguin for hot dogs.  It’s not a
nonsense question if you’re giving TM owners an incentive to pick something at the
higher end of the spectrum. 

All of us have gone to the really high end of the spectrum
for “brands.”  But there are also
run-of-the-mill TMs where they are measuring how likely the mark is to cause
consumers to think that use in another field is from the same party.  

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