Roundtable on the Scope of IP Rights, Notre Dame Law School

Barton Beebe & Scott Hemphill, The Scope of Strong
Marks: Should Trademark Law Protect the Strong More Than the Weak?
Commentators: Mike Grynberg and Mark Lemley
Grynberg: Doctrine developed for certain situations may not
make sense for other situations, including the relevance of strength. (1) Why
does strength play such an important role in TM litigation? (2) Can we be sure
that super-strong marks resist confusion at low levels of similarity/product
relatedness? (3) normative implications.
(1) Maybe courts just misunderstand relation b/t TM strength
and confusion, or maybe they’re enacting assumptions about free riding into
law. But equating strong marks w/likely confusion could also be a heuristic for
judges/juries. Beebe’s earlier work on multifactor test: one thing judges do is
stampede the factors. Representative heuristic: cases w/strong or well-known
marks correspond to our mental model of what TM infringement is.
(2) Consumers can be loyal to a weak mark & recognize
differences. How do we characterize the consumers w/in the curve described by
strong/weak marks? We need to be able to describe the consumers—some will
simply not know the mark; others will know and be familiar; others will know
and be unfamiliar/not alert. For famous marks, maybe the proportion of “alert”/difference-noticing
consumers is higher, but maybe it’s higher for weak marks too because they
simply don’t know the mark; there’s nothing to be confused about. Maybe famous
marks include fewer consumers who don’t know anything, but maybe the shift is
to a greater share of careless consumers who know a little but aren’t very
alert. Strength and familiarity may not be the same thing.
(3) Sometimes the paper seems to gesture at: Normatively,
reasonable consumers should not have been confused. Even if the strength story
were true, then, we might want to ignore it: inattentive consumers are not
protected; reasonable consumers exercising ordinary care is a standard that
doesn’t necessarily have anything to do with the treatment of strength as such.
Strength is a proxy for a general removal of context?  If this isn’t strictly about strength, then
solutions could be properly directed at cabining the causes of action or
creating safe harbors such as for referential uses.
Mark Lemley: Why care about strength at all? We could just
ignore it, but the point of the paper is not that it’s irrelevant but that it’s
relevant in ways we don’t currently treat it in the law. Can you use this
argument in reverse: I have a weak mark so I should get more protection?  Or is it that strong marks don’t get much
protection and weak marks don’t either? 
One way to deal w/this might be inherent distinctiveness. We lump
together two very different concepts. Acquired distinctiveness might diminish
likely confusion, but inherent distinctiveness might have no impact at all, or
the impact is different.  Apple v.
Pineapple Computer, at outset of Apple’s existence—[to me this is the Lollipops
v. Jellybeans roller rink case]—inherent distinctiveness can support a finding
of confusion in a way acquired can’t b/c a person only vaguely familiar might think
“fruit—computer—oh yeah, I recognize that.”
Strength might change the type of confusion we care about.  Affiliation, post-sale, sponsorship
confusion.  Should we care about that?  If strength is bolstering the weakest
confusion cases, that might further justify the conclusion that strength
shouldn’t be used as a supporting factor. 
Dilution: where strength does the most work is dilution, b/c
it substitutes for every other factor for a strong enough class of marks. There
might actually be dilution proof marks. 
Things that generate enough consumer awareness that you can’t dilute
them—iconic, like Uncle Sam, American flag, Santa Claus—you can’t dilute them
no matter how hard you try, sorry, Bad
Santa
.  Maybe the presence of
parodies, satires, etc. ought to signal
fame, with implications for “policing” theories.
Beebe: Students do relate most easily to famous examples—our
ideal type of TM litigation involves super-strong marks. What is the
implication, then?

Lemley: proxy for bad intent. 
Nikepal?  That was chosen b/c Nike
was a strong mark.  If that’s right, then
we affirmatively might not care about it, b/c free riding is ok, or we might
think that there are already plenty of proxies for bad faith.
McKenna: that strain of thought, there’s no good explanation
for choosing this similar mark, goes back to technical TM ideas—as old as the
distinction b/t different kinds of TMs.
Beebe: would like to emphasize more that our focus is
super-strong marks. The paper should be just about utterly super-strong marks.  Phase shift: widely recognized by general
consuming public, and known very well. Inverted U phenomenon we’re arguing for
is limited to those super-strong marks. If well known, consumers know it well
and can identify differences.
Does it work in reverse is a fantastic question. Didn’t address
it in the interests of simplicity but now we can.  Quick answer: superstrong marks is our focus,
but talking about the inverted U as a whole is useful. Normative commitment is
narrower, so resists the weak marks should get broader protection idea, but
should think about it. 

Beebe: Practitioners say affiliation confusion still exists, so Beebe/Hemphill
argument is irrelevant.  Strength =
knowledge not just of signifier but of other contextual elements.
Lemley: one implication might be that if strength does the
work in affiliation confusion, that’s less valuable/more dangerous and a reason
to discount strength.  Identical marks in
radically different contexts might be of interest.  If someone outright copies a random coffee
shop logo to sell soap in a different city, it’s not clear whether we should
even care; who is harmed?  Copying Apple
logo to sell soap will attract attention in a different way (not just b/c it’s
aesthetically appealing) and that might be different, at least as a proxy for
bad faith.
RT: Drawing on Lemley’s point.  Strength and affiliation confusion: maybe
strength increases likelihood of confusion for these types of confusion
(including post-sale) if we think these types worth having, but only after a
certain level of similarity is reached. 
May also make a product category difference; what kinds of marks are
likely to engage in sponsorship etc. relationships and with what other
products.  NASCAR sponsorships v. other
types of relationships: anyone might sponsor NASCAR, but not anyone would
affiliate with anyone else, including a competitor (which also has implications
for MTM Watch type cases).  Fortres
Software case—some insights there that might deserve actual theoretical
elaboration and connection to other doctrines; maybe also Land O Lakes!  Those cases don’t tell you what to do in the
next case that arises, but they’re also not wrong: there are differences in
plausibility of confusion claims.
Are there super-strong marks w/in category?  Old Lexis v. Lexus case: is Lexis
super-strong w/in its category? 
Interaction b/t product similarity and mark secondary meaning.  So w/in category, may be easier to
distinguish small differences or you’d expect “a Lexis Nexis company,” whereas
Lexad doesn’t have that implication. 
Jim Gibson: If we got rid of strength, would intent and
actual confusion do the same work?
Pam Samuelson: A mark that stays in one category for a long
time, even if it’s super-strong, may be unlikely to affiliate with other
products.  Honda makes cars; Apple by
contrast keeps expanding the kinds of products it makes.
McKenna: is strength even an empirical matter, or a reward
for having chosen a good mark/having built goodwill. Samuelson’s strength is
not goodwill/familiarity but more like marketing theory—if you’ve seen a bunch
of market extensions, the likelihood that you’ll see another as a market
extension is higher.  Law assumes
strength equals greater familiarity equals greater likelihood of
confusion.  Can’t have it both ways—can’t
be a theory of confusion but not helpful in dispelling confusion.  In terms of “no good reason for you to pick
that mark” that came from a technical TM background that required direct
competition—if you’re directly competing and using the same technical TM, there
probably is no good reason. But once we blow that up, the work that strength
does changes—lets you enforce it against broader range of goods and services—and
old assumptions don’t make sense.  Paper
can illuminate the difference b/t strength w/in category, which might give you more
scope w/in category but not outside it, and strength across categories.
Lemley: what do we do about Nikepal then?  The absence of plausible explanation other
than drawing from strength of mark is true even w/o identity.
McKenna: true, but that’s dilution or nothing.  If the law’s assumption is right, you should
only be able to win if you show a survey, showing high levels of confusion—not just
15%.  If you can’t that’s pretty telling.
Chris Buccafusco: higher level brands may feel more
confident to spin off products—popularized whiskey may be more likely to try
out beer.  Budweiser will put its name on
all sorts of drinks.  Whiskey has whiskey
aged in beer casks, beer aged in whiskey casks—those markets are now
interrelated.  Jameison’s will be more
likely to try that than a non-well-known brand. 
McKenna: actually exceedingly rare to be in beer and spirits
industries.  There’s expansion in cider
but it’s interesting if consumers think that.
Buccafusco: Consider also that 90% of the value of a LV bag
is the signalling function; maybe confusion over that is more important than
confusion over a mark that is source identifying but not socially signalling in
the same way.
Grynberg: Consider pieces of a mark—the Maker’s Mark red wax
seal—you could have appropriation but not of the whole; the paper seems to
assume the whole mark is there.
Lemley: maybe a difference b/t word, image, and product
configuration marks—but that may be about skepticism about product
configuration trade dress.

McKenna: plausibility of alternative explanations for using
configuration may be much higher by default.

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