TM scholars’ roundtable, part 4

Research directions in Trademark Law 2017-2018
Discussants:    Bill
McGeveran: History of scholarly productivity coming 1-2 years after the
roundtables as seeds germinated. 
Agenda-setting: boundary issues and registration.  Territorial/product dimensions; the
consumers; design—picking up on something already in the air, but these others
have generated some stuff though it’s early to tell.  Conversations among the papers.
Mark McKenna: conversation about distinctiveness in roles
revealed we need a lot more work on the relation between registration and
unfair competition, particularly on non-word marks.  Both Tam
and Belmora hot mess have teed that
question up and are likely to generate lots more confusion.  We can’t just pretend that we can take the
same framework and apply it to everything. 
Future work: thinking more about various contexts of
confusion cases. Courts feel more freedom from marching through LOC factors,
but on ad hoc basis. Project: systematize how courts conceive of categories
that allow them to deviate from the factors. 
Factual settings: house-branded goods. 
Courts tolerate much more similarities than they would in ordinary brand
to brand conflict.  Also: when are courts
willing to frame cases as affiliation cases, IIC cases, v. not.  These doctrines could swallow everything
else, and lack of confusion at point of sale would become irrelevant. Courts
intuitively shy away from that, but how do you decide when it’s in play and
when not? 
W/Fromer: work on claiming in TM law.  Functionality; more issues on boundaries b/c
of Star Athletica and rise of digital goods. When functionality took over,
design patent fell out as a boundary condition even though Sears/Compco are
design patent cases.
Grynberg: degree of care/reasonable person in tort law is
lost in TM context. What would it mean to take duty more seriously if we can
have an affirmative positive conception of the careful consumer.
Litman: channels these conversations into casebook, new
edition on its way. 
Bone: strength of the mark has come out of this discussion
as an important issue.
Beebe: papers w/Fromer, Hemphill; working paper w/Sprigman
et al. testing dilution.  Morrin & Jacoby’s
study, but with purchasing context. Introduction of any diluting stimuli causes
dilution w/r/t all marks; they didn’t notice this super-dilution result from
surprise w/Mercedes toothpaste b/c they didn’t test for it. Distinctiveness:
always wanted to do history of TM thinking on distinctiveness, genealogically
speaking.
Leaffer: Quebec: French requirement for descriptors when the
TM is English. TM in cultural context reflects continuing concern that somehow
TMs undermine local identities.  Also
wants to investigate valuation of TMs as an asset and effect that should have
on TM law.
Moshirnia: Not primarily TM, informatics paper to use
cognitive load theory to figure out what’s communicated to consumer. Tech has
changed how info is conveyed to consumers—might increase it or screen out other
sensory perceptions that we usually associate w/brands (smell, sensation).  Idea of empirical practice—meta-analysis or
study on what could be standards for surveys so you don’t get dueling surveys
w/odd inputs and differing experimental design.
Dinwoodie: book on territorial aspects of IP
internationally, EU, and US.  Normative
construction of consumer; connected to registration/relation b/t TM and unfair
competition—in English law, there’s a gospel that there’s a difference b/t
distinctiveness and goodwill—former is for TM and latter for passing off.  Connects perhaps b/t industrial property,
more abstract; goodwill could be market strength/reality.
Janis: DuMont & Janis continue work on 19th
c. design patent law. One outgrowth: found evidence of people using US design
patent protection to achieve quasi-TM federal rights for logo and other subject
matter we’d associate today w/TM.  Need
more information about the pre Lanham Act regime for TM—interest in, for
example, going back to find the origins of Abercrombie
factors—maybe more contingent than courts say today.
Ed Lee: Tam
amicus; may focus on those issues. Registration and what it is was the heart of
the discussion.  Also compare © and TM
registration.
Dogan: Harm, benefit and justification in TM: normative
justifications for TM have blended prevention of harm and prevention of people
capturing benefit from someone else’s marks. Leads to the role of
justifications: limits are placed w/eye towards third party interests like competition,
speech, institutional deference, e.g. to patent system. Design patent v. TM is
still undertheorized.  Another project: Secondary
liability v. antitrust standards: Noninterference principle—don’t interfere w/product
design—is honored in the breach.

Burrell: Similarity judgments: consumers may have overall reaction, but you
always have significant outliers.  Working
on claiming in TM, primarily through the registration process but maybe also
outside.
Ramsey: Chapter on free speech issues w/r/t nontraditional
TMs.  As w/descriptive terms, certain
symbols have inherent value, flip side of inherent distinctiveness. Companies
are free riding off of inherent value.
Bently: Mainly TM history. 
History of disputes over newspaper/journal titles starting in 18th
c. One interesting thing is blending of © thinking and emergent TM thinking
that allows courts to give injunctive relief for the first time in TM cases.  Another project on first wave of
globalization/territoriality—India, connections b/t US and UK.  Singer Sewing Machine is one of the first to
globalize in 1870s/80s.
McGeveran: when TM questions must be considered Qs of fact
rather than legal, and when they need to be developed through surveys or other
patternized ways of answering empirical questions.  Given how much TM depends on injunctive
relief, judicial role is paramount, so how do judges purport to be dealing w/factual
questions in preliminary injunctions at that stage?
Sheff: there’s a lot of data about different registration
systems in different countries; did a bit w/Japan.  Will turn to others. Implementation of Canada’s
dropping of its use requirement as prerequisite for initial registration—effects
on outcomes and behaviors. In Japan, their registration rate looks a lot like
our publication rate, which is 20-30% higher than our registration rate b/c of
the use requirement.  So 20-30% of these
registers are likely pure clutter from day 1. 
Seeing how it plays out in empirically rigorous way, using Canada to
test the switch.
Diamond: general interest in science and law; role that
experts play and ability or lack of ability of judges to substitute for other
kinds of evidence. New manual on surveys for judges & lawyers; TM figures
very heavily.  May update volume w/Jerre
Swann on TM survey design & analysis. 
Did survey of experts in TM cases in 2014; my theory has always been
that TM surveys play important role that we don’t get to see b/c they help
settle cases and encourage a client that maybe it shouldn’t go forward.  I’d like to understand that phenomenon
better. Also interested in methodological Qs—some uses by courts of inappropriate
statistical analyses; probably will do a piece on that.  Interest in cost of surveys has been
reinforced; serious cost for smaller parties. Internet surveys were initial
thought, but they aren’t so cheap either if they’re well done.
Linford: Forfeiture mechanisms/abandonment mechanisms piece
coming out. Take is consumer-focused. 
Marketing/psych folks have detected placebo effect for marks—seems to be
some benefit from deceiving consumers into thinking, e.g., a putter is a Nike
putter.  Is there something to the idea
that dilution is about whether some marks should be treated as monosemous—all Coke
comes from Coca-Cola—and why.  Whether
word marks applies to non-word marks—what other literatures should he
mine? 

RT: New gTLD study w/David Hyman testing what if anything is
confusing/new cybersquatting.  I also agreed
to write a chapter on reform of the effects or nature of registration!  Incontestability paper.

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