TM scholars’ roundtable, part 4

Session 2, Cont’d
Mid-Point Discussants: 
                    
Mike Grynberg
Belmora may do very little. 
But: Belmora may be bad if it discards important checks, one of which
might be territoriality.  Another idea:
arguably undermines systematicity of TM, its existence as an autonomous body of
law that courts apply. Casually discarding territoriality is problematic in
itself and also in understanding what TM is—Jeremy Waldron on the importance of
being able to see how a change ripples through a system.  Belmora undermines the idea that consequences
flow from not having a TM/not having a registration.  We don’t know what happens when 32 and 43(a)
are not equivalent [and I would argue that there’s a hydraulic push—TM owners
then claim that they shouldn’t be worse off b/c they don’t have a TM, so 32 has
to be at least as broad as 43(a)].  By
throwing more up for grabs in inchoate unfair competition, that undermines
pro-D thinking in TM law that hasn’t been systematized, such as the 7th
Circuit style/plausibility analysis. 
Tabari: 9th Circuit talks about what people expect when they
see TMs in domain names.  Handwaving
about consumer sophistication—but will Belmora allow a second bite at the apple
in terms of unfairness claims.  MTM:
court says no one thinks there’s a connection w/Amazon b/c of Amazon search
results, but would Belmora undermine that by allowing a rump unfair competition
claim.
Finally, Belmora exacerbates the problem of TM scope.
Jeanne Fromer: trade secret might provide some insights
about unfair competition and its path. 
TC starts out as common law in the courts; turns into a multifactor test
in Restatement, and then gets codified in a way that offers guidance about what
us be found. Uniform Trade Secret Act is more regimented than 43(a), though “improper
means” creates uncertainty.
Belmora: the more it’s not applied, the more it will not be
applied. Possible to push back on how this is a very limited exception
[thinking here of INS v. AP].  Backdoor
protection of TM-excluded matter: do we want to understand UC as a matter of not
wanting to go beyond TM’s internal limitations, or is it just that TM stops and
some other regime starts?  We have ways
of thinking about doctrinal overlaps in other areas, such as TM/patent, trade
secret/patent.  One of her worries about
Belmora: remedies. When TM wouldn’t give a remedy, shouldn’t give that remedy
through UC. That might be one way to think about the interface.
McKenna: what’s unusual about Belmora v. old style cases:
the latter were things that couldn’t be marks b/c of their nature. That was a
recognition that they weren’t susceptible of ownership.  We basically said hands off those things as
such, even though they might have caused some confusion. Belmora’s not like
that: Flanax can be and is a mark, it’s just not owned by the entity asserting rights
in the mark.  You can’t avoid the
ownership Q in that case; it’s not about using the TM component v. the nonTM
component. You have to confront whether UC will provide a remedy not b/c TM law
is silent but b/c TM law has affirmatively said there’s no right.

Fears Lanham Act language that will be cited is that sentence that says that 43
doesn’t require a mark used in the US.  W/o
discussion of the reason that someone doesn’t have TM rights.
Dinwoodie: is TM law silent about genericity?  He thinks that’s affirmative too.
McKenna: Generic is a tough one.  Takes the point.  How you understand what the decision is—but still
Belmora is about some content unambiguously w/in the scope of TM.  Could be used to argue that, if you have a
fanciful mark and no likely confusion, a remedy is still available.
Dogan: Antitrust as a road not taken: choosing between
balancing pro and anticompetitive aspects of behavior v. using subjective motivation
of the actor.  If a product “improvement”
has anticompetitive effects w/o being a better product, there’s no social
value. Implicitly, Belmora etc. are courts saying “you’re not necessarily violating
rights but going further means you’re not engaging in behavior w/any social
value.”  Tea Rose/Rectanus also looks at
good faith/reason for adoption; protects the innocent.
McGeveran: reminder that court in Blinded Veterans talks
about how the remedy could include requiring a different name as long as “blinded”
and “veterans” are part of it.  Allows D
to appeal fairly to the desire of the public to aid blinded veterans—the policy
reasons why genericness exists.  But still
talks about the goodwill P has built up, when generic terms maybe shouldn’t
have goodwill b/c they’re not marks. 
[McKenna says that’s not necessarily true b/c generic terms could have
minority secondary meaning for a subset. Not a mark is not the same thing as
lacks source-designating meaning.]
Bone: wants to say that it’s still all TM; where a term has
secondary meaning for only a minority of consumers, it’s still a mark and it’s
still owned but the remedies change. The cost of separation is that all the
remedial flexibility goes to UC, and the breadth of remedy may be unwarranted
for every TM instance.  If you said it
was all one big thing, called TM for argument’s sake, then you have a series of
competing policies to look for a remedy in a given case.  Maybe you have rules of thumb, but at least
it’s being done in the same box.
McKenna: haven’t you just mooted the point of validity
analysis?
Bone: no, b/c at some point it will make sense for policy
reasons that the costs of tinkering w/remedy are greater than benefits in
avoiding consumer confusion and you should just have a no-remedy.
McKenna: so you always have a valid mark?
Bone: until the very endpoint where no relief is available—where
there is no entitlement to relief, there’s no mark.  Or we could say you still have a mark, but no
remedy.  The former communicates freedom
to use more clearly. [This really has no room for registration, does it?]
Ramsey: chilling effect of demand letters, but that’s all
about notice.
Dinwoodie: you’re making normative choices about security/predictability.
Bone: I’m just not separating into 2 boxes.
Sheff: non-consumer welfare/efficiency based perspectives:
Blinded Veterans presents a bit of a problem b/c we have a conflict b/t access to
generic concepts and consumer confusion. 
That’s a distribution problem, not an efficiency problem, and consumer
welfare can’t answer the question of what we should do. We could look at it as
a Kaldor-Hicks problem—could try to compensate losers for what they lose from
the result we arrive at.  Or we could
look at who is good and who is bad—relationships among producers, not just
relationships b/t consumers and producers. TM and especially UC should be understood as being (also) about
relationships b/t producers and what they owe each other. One reaction is to
say that confused consumers will just have to learn; they aren’t thinking about
it in the way they should be, and that’s a moral judgment. Or we could consider
them vulnerable and in need of protection, and those of us who can tell the
difference will just have to accommodate them by giving up the non source
identifying meaning to protect those who do see it as source identification. Or
we could try to accommodate both to the extent we can. On the producer side,
there has to be independent normative content to figure out what producers owe each
other. Belmora: easier case that the D is doing something wrong, which doesn’t
have to be filtered through what Belmora is doing to consumers.  If we thought more about duties, we might
have an easier time thinking about Belmora, though maybe it just collapses into
naked misappropriation reasoning.
Burrell: Unconvinced that remedy is problem in Belmora.  Bodybuilding company wants to register
Superman for bodybuilding products in Australia; DC opposition initially
rejected b/c has no blanket rights in Superman, but when the product is released
has a big stylized S on it.  Bad faith is
clear and the mark is cancelled on appeal; barring all uses of Superman by this
bad faith actor is not a problem, though he understands the problem with
slippery slopes/courts losing sight of the nuance.
McKenna: if evidence of bad faith is just that they’re using
a mark that’s owned by someone else, that’s still a problem.
McGeveran: presumably there is a robust UC claim, in false
advertising or otherwise, if Belmora falsely pretended to be a headache drug
that was unavailable in the US.  Having
said that, why do we get in a twist if the nature of the bad faith deception
has to do with misleading around source? 
RT: because bad faith isn’t an element of false advertising
and shouldn’t be.
McKenna: the content of the false statement about the drug
ingredient isn’t ownable by anyone else. 
But if you admit that there is the possibility of ownership and that
ownership has territorial boundaries, we’re artificially dividing up the world.
McGeveran: but what if Unilever, which produces Nuprin, sues
instead? Surely we don’t think their false advertising claim is a problem.
Sheff: who is the victim and what is the evidence?  Either the consumer is the victim and the
harm to the mfgr is the evidence, or vice versa.
Litman: but that’s not what the 4th Circuit said.
It said that if you sue under 43(a) we don’t pay any attention to longstanding
rules b/c this section doesn’t mention them. Erosion of territoriality and the
idea of evading pesky doctrinal limitations by switching sections. 
Sheff: if the victim is people in the US, that’s a false
advertising harm. If the victim is in Mexico but the evidence is in the US,
maybe not. 
Dinwoodie: no reason to think that UC claims should be
territorial—10bis indicates that the standard is an international one.

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