Eleventh Trademark Scholars Roundtable: Defining Marks and Markets

Session 1:  The Process
for Defining Marks (Registered, Unregistered)
What are the different ways to define marks? What are/should
be our goals in defining marks? What are the costs of permitting fuzzy
definition? Are there costs to 
imposing  strict requirements in
defining marks? What are the next steps in the debate about claiming trade
dress? What would happen if we extended that critique to more conventional
(verbal) marks? What might the law relating to verbal marks learn from the
restrictive claiming principles that some courts have articulated (or at least
gestured towards) in Section 43(a) cases involving unregistered trade dress?
How might we approach the definition of marks consisting of distinctive and
non-distinctive elements? How might these different principles shape what we
allow or encourage in registration practice? Would disclaimers be useful?
Should our  approach to mark definition
in the registration content apply equally if we embrace a distinct law of
unfair competition?
Introduction:   Jeanne
Fromer
2D aspect to TM rights: Central claiming as opposed to
peripheral utility patent claiming. As long as we tie TM to marketplace we are
likely to have some form of central claiming. 
We could do otherwise & say use in market has to match but that’s
unlikely.  This creates problems that McKenna
& Fromer puzzled over: what happened when there are multiple different
claims out there, e.g., a claim in the registration and then another claim in
litigation. A standard character mark registered but will be evaluated in its
actual font in an infringement case.  Central
claiming means claiming again and again. That can affect notice. To decide: How
much do we care about notice? 
Claiming by characteristic tells us what characteristics to
focus on; claiming by exemplar creates another level of inference, which claims
made in the market context tend to be. Registration claiming could be either
way.
Claiming timing: before or after use?  Can look very different depending on timing
relative to infringing conduct alleged. 
Can also alter the mark over time—font, etc.
How much should registration matter in determining
substantive rights?  YSL v. Louboutin is
a great case b/c it’s so odd compared to the rest of US TM law. Shows
registration matters very little; the court just orders it amended (at the
appellate level! Reevaluating the facts!). 
How much do we want a shadow TM system of registration versus
marketplace?  One possibility: we ought
to have broader benefits for aspects of marks that are registered—presumption of
validity, etc.  But the expansion of
rights should be scrutinized.
Distinctive v. nondistinctive elements—as TM scholars we don’t
think enough about what to do with this; in © there’s a strong analog about
dealing w/ original and nonoriginal aspects of the work and how to deal with
those in an infringement inquiry. Not clear we have a right answer in © but at
least we’re thinking about it.  Focusing
on defining marks is important b/c multifactor infringement test often zooms
back & forth b/t what the mark is in analyzing the different factors.  [Also notable in keyword ad cases where there’s
no consensus on what the comparison is between—D’s use of the mark or D’s resulting
ad text.]
Discussant:      Robert
Burrell
How should registration fix the boundaries of the TM monopoly?
 Registration based systems aren’t
thinking about this very clearly. We lack an integrated procedure for deciding
the scope of an IP right (Lemley/McKenna on scope). Two further problems: (1) Confusion
about the audience for the registration system underpins lack of clarity.  (2) Uncomfortable about relationship b/t
registration and reality of marketplace.
Who is a registration for? 
IP Translator: CJEU decision in which the court held, in effect, that
the use of class headings in specification isn’t a claim for all goods in that
class but only the things that appear in the heading. Most scholars like it for
reducing inadvertent, lazy overclaiming: if you want to claim it, write it
down. But if you look at the CJEU decision, there’s no reference to the need to
play overclaiming. Instead, the need is to provide econ. operators with clear
and precise information. But that’s only sensible if we assume the audience is
an unrepresented SME.  If it’s TM
insiders, there’s nothing wrong with saying “the claim covers all
goods/services in the class.”
Another case: When you’re interpreting a specification, you
can take into account the scope of the class in question.  He supports that too as restricting scope of
TM monopoly.  But that’s very much an
insider’s rule; a SME claiming use of gloves in class 10 wouldn’t understand
that it doesn’t cover gloves worn by Xray techs that are in class 9.  In Australia, we have a case that came to the
opposite conclusion: class numbers should be disregarded in interpreting the
specification b/c people who “peruse” the register should be able to understand
it. But TM attorneys would naturally assume that the class in which you’ve
chosen to apply has relevance to the specification!  Sec. 70 of the Australian TM Act: color is
not to be regarded as a feature of the mark unless the applicant has lodged a
statement.  Produces undesirable outcomes
for unrepresented people—you see green on the register, you’re going to think
green is part of the mark, but that’s not the rule.
Need to descend into the details of office practice:
sometimes the system is aimed at unrepresented SMEs—systems designed to help
self-filers. But doesn’t help you draft specification—just helps you find
conflicting marks. We should be unsurprised that an unrepresented SME will find
that they start making claims for things they have no intention of using. 
When overclaiming is inevitable, the consequence shouldn’t
be complete invalidation.
But in other areas the office prejudices SMEs.  A scattergun approach to potentially
conflicting marks: the examiner finds a potential problem in a quick search and
throws it back to the applicant, even if the conflict is an overlap in an
entirely descriptive element (shared use of CARS in car-related mark)—but for
the applicant, that extends the scope of the earlier mark beyond anything
reasonable.
Grenada case/realestate.com: justification is that
disclaimers don’t go into the marketplace and public has no notice of them, so
we disregard disclaimers of, e.g., the descriptive word component of th emark.  So we get the idea that we’re concerned w/TMs
as they exist in the market, and we need to be skeptical about any rule that
sees registration as a thing in itself. 
Max Planck study and USPTO practice shows similar dynamics.  Applicants may be clearly bad actors: awful
lot of evidence that defendant in realestate.au case had chosen the domain name
to cause confusion, w/similar color scheme. 
There was scope for confusion [ah, unfair competition].  We need to think more clearly about what we
ought to do other than say “tough luck, you chose a bad TM.”
Stacey Dogan: Why is TM clarity important?  Notice and notice failure, as Mike Meurer
demonstrated in patent context, imposes all sorts of costs, and also in TM.
Risk analysis is very indeterminate when someone has a registration of a sort
of similar word in sort of a similar market; decision turns partly on the
actual registration, partly on the nature of the use in the market, and partly
on how aggressive you expect the registrant to be. Tremendous impact on
commerce.
Different values underlie negative space of allowed use:
speech and competition are primary ones. 
Need to be aggressive about reminding courts of that negative space as
valuable. Notice problems especially tricky for design in terms of defining
rights, as in Taco Cabana, but also because they’re seldom registered so we don’t
have a preexisting claim to point to. Relation b/t standard for defining the
right and infringement: as in patent law a generous doctrine of equivalents can
defeat clarity in claiming, a generous infringement standard can defeat clarity
in TM.  That may be why courts like it so
much—it allows them to go after the actors they think are bad—but it makes it
hard to give reliable legal advice to people who want to use words and product
features that are themselves unprotectable by TM. Definitions should thus keep
an eye on the back end, making sure infringement standards don’t undermine the
rule, especially since C&D practice plays such an important role. W/o clear
rules, TM owners aggressively claim in ways that can diminish the negative
space.  Crowded field doctrine—narrower rights
in a crowded field—encourages TM owners to claim aggressively to keep people away
from their space.
Fromer’s comments about © made her think about, in connection
w/importance of rigor in likely confusion analysis, parallel b/t vague likely
confusion analysis & early look & feel cases in ©. Courts have an impulse
that there’s something to protect and that the D has done something similar. In
©, courts have disciplined that doctrine at least some.  Remind courts of the importance of discipline
in the TM context as well.  Distinguish
b/t those that might remind you of the TM owner and Ds who are in fact creating
likely confusion.
[I had to teach]
Jake Linford: worries that requiring inherent
distinctiveness/limiting marks favors big players.
Graeme Austin: discomfort w/bait & switch in registration
(or bait & evolve); part of that is what’s held constant. If we had
sensible doctrines about harm, then it would be less of a problem.
Laura Heymann: Louboutin’s been mentioned: the court is
actually thinking about aesthetic functionality as a way to limit the scope of
the TM right but not eliminating it entirely—registration would cover D’s use,
which is aesthetically functional, if given full scope, so we’re limiting its
scope. [But they didn’t admit that! Instead they just said there was no use and
no confusion!] Maybe there are limits that can’t be anticipated and only come
out at a later time.
Sheff: Thinking about estoppel: most estoppels require
evidence of reliance and harm. What would reliance by a user look like?
Reliance on freedom to operate based on past representations to tribunals could
also look like bad faith to a judge—copying things they’ve disclaimed.
McKenna: thought about assertions across different proceedings—different
definitions of the rights across disputes. 
It’s not surprising that mark owners emphasize different things in
different contexts—is the mark claimant asserting rights or just highlighting
aspects? Might not be “claiming” w/o a clear public document.
TM practitioners spend lots of time and money crafting the list
of goods. Two different kinds of notice problems: ® may not help the definition
of the right in assertion of rights contexts—but it sends a signal in
situations where you don’t have to assert your rights because people shy away.  Chilling effect is meaningful there. May also
matter for international export of rights. 
Lemley: shadow DMCA realm—lots of circumstances in which
internet companies accept TM registration as basis for takedown and not other
things—CafePress, Zazzle.
Ramsey: importance of Supplemental Register—registrants can
assert “we have a ®”! Are there rules to restrict overclaiming, even if we
maintain the SR for international purposes.
Linford: is it a category error to think of marks as things
v. use of marks as transactional or communicative events?
RT: ICANN: note that this product/service limit has been completely
removed in Trademark Clearinghouse, Sunrise, Claims Notice for new gTLDs—you need
a TM registration for something somewhere and then it gives you preemptive and
notice rights for any domain name matching it anywhere. E.g., BMW’s MINI for
cars lets it register mini.bike.  Registration
for “cloud” for pens in Switzerland
gives access to every “cloud.newgtld.”
It could be and is getting worse.
Dinwoodie: was a panelist in a sunrise dispute between Merck
& Merck—complicated process.
Litman: Shadow 512 and real 512—American Airlines logo
copyrightability fight. Why do this, she asked the AA lawyer? The answer was
512(c) notice and takedown access.  Maybe
we should have 512 for TM rather than pressure on the © system to expand to cover
all logos.
Beebe: If TTAB has a different approach to specification of
rights, then this distinction b/t PTO practice & courts might break down
because of the preclusive effects stemming from B&B v. Hargis.
Dev Gangjee: if we were interested in TM’s negative space,
the one really clear space is the international generic names of
pharmaceuticals. Could we learn from that?
Burrell: one way of defining negative space was to get your
own registration—there used to be a defense that you weren’t infringing as long
as you were using your own registered mark—a few places in the Commonwealth still
have that.
Some previous discussion of letters of protest as a way to
give public input, increasingly being used and successfully so at the PTO.  He suspects that its success might kill it.  Similar procedure existed in Australia and
people started using it so often that the agency said “oppose or nothing,”
basically.
McKenna: tracked post B&B cases—as of last year, no likely
confusion cases except for B&B itself. In every other case the court said
registration inquiry was different. B&B was having effect on things like
priority, though. Fed. Cir. has also said that B&B estoppel doesn’t apply
as against the PTO.  We’ve heard discussions
about how registration matters in the world—bullying has some writing on it, but
the other things we’ve talked about—DMCA like notices and other uses of
registration should get more scholarly attention.
Leah Chan Grinvald: smaller platforms, where the DMCA request
is combined w/TM, they’re scared & taking down the TM portion based on the
claims w/o counternotice even if they screen for compliance w/©.
Bone: discussion of negative space: if it’s contextual, then
it doesn’t much relate to definition of the mark; more about carveouts for particular
uses such as Rogers v. Grimaldi.
Litman: descriptive w/o secondary meaning is an example of
negative space.
Bone: sure, but if I’ve got a mark, what’s the negative
space?
Lemley: sure, it’s contextual, but we can either say (1)
anything can be a TM, so we’ll do factfinding on anything or (2) there are
definitional exclusions, like a style or basic building block.  Uncertainty and delay and chilling effects
are reasons to have (2). 
Bone: can see the exclusion of product design trade dress.
But if you have a mark, do we force people to define that more specifically and
exclude certain parts?
Dinwoodie: if you have a series of limits on registration,
you have to figure out to do with what 43(a)—can it be used to remove those
limits?
RT: Amazon’s program for verified rights owners requires
ownership of a registration for a word mark; a design mark will not do. This
strikes me as the right call, but clearly influenced by Amazon’s commercial
interest in having lots of competitors on the market—maybe Amazon is actually
an ok proxy for the competitive environment here. Compare the TMCH which accepts
design marks even if the only protectable element is nonverbal; the TMCH will
extract the verbal component and put it into the system; that creates rights in
the domain name space over the verbal elements—another expansion of scope
beyond the abandonment of goods/services limit.
Barton: machine learning aspects: for purposes of Amazon’s
algorithms, it’s easier for them to program verbal aspects than having to
figure out what is visual similarity.
Fromer: there are 100,000 applications in her set w/every
single word in the mark disclaimed, some of them verbal only (composite, e.g.,
COMPUTER SERVICE PROFESSIONALS, some of them up to 8 words) and some of them
w/images.
Wendy Gordon: remedies like fee-shifting can help defend
negative space.  Sears/Compco could have
been read to create a real negative space against state law extension of rights
beyond federal—and maybe you should have gotten a remedy against those who
tried to claim such rights anyway.
McGeveran: negative space as rhetorical tool to emphasize
the public good aspects of freedom to operate the way we have in patent/©–it’s
not just about one person’s freedom to operate. 
Substantial value of having matter outside of TM protection. 
Dogan: any such tool for deterring overclaims has to be
available in C&D practice too, where rights claimants assert in subsequent
letters that X people have given in as if that established their actual rights.
Austin: Dastar as negative space: TMs can’t be for origin of
intellectual content of works.  That kind
of marking out of negative space provokes us to think about normative
justifications for negative space.
Linford: shouldn’t import patent and © notions b/c context
matters so much. We can make simplifying assumptions about what consumers care
about or think about and that can help us move on as in Dastar, though that’s
not consistent with what we’ve done elsewhere in TM. But the kinds of negative
spaces that will likely matter in TM are likely different from those in patent/©.
Grinvald: customs enforcement is another area where ® practice
matters a lot. Almost AI in human format—they reach out to the TM owner and w/o
much analysis the TM owner says it’s counterfeit and the burden is on the
importer.

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