IPSC: Trademark Doctrine

Jorge Contreras, University of Utah SJ Quinney College of
Law
Sui-Genericide
1940s: Proprietary Ass’n & AMA opposed foreign
registrations of common drug names (ANTACID, VITAMIN, etc.). Late 40s-80s: DOC
generic word program: words submitted by firms to INTA’s predecessor, then to Dep’t
of Commerce, which would protest to foreign gov’ts.  Successes: elastic, satin, tractor, bacon,
etc.
Today drug naming is fairly systematized: proprietary name,
common name, chemical name. Perhaps surprising: There’s no formal deference at
PTO to int’l bodies and their naming of generics: WHO int’l nonproprietary
names & US adopted names council. There are a couple of other bodies that
do this: pesticide common names; synthetic fibers used for garment content
labels (FTC; done by committees including chemists coming up w/names).  Technical standards: USB as the common
generic term for a computer port used to connect various devices, according to
the USB Interoperability Forum.  W3C
designated terms as generic: ACSS, CSS, DOM, DSig, HTML, HTTP, JEP, MathML,
Metadata, PICS, PICSRules, RDF, SMIL, SVG, WebFonts, XENC, XHTLM, XML, XMLDSIG
and XSL.
Why have generic terms? Firm-level benefits: baseline for
entire industry; protection against competitor capture; enables brand names to
be simpler/more distinctive; enables competition among brands.  Market benefits: consumer info; comparison
shopping; less consumer confusion; enables generic competition.
Today, genericism is determined in adversarial proceedings:
examination; opposition; cancellation. 
Legal effect of unilateral declarations? 
Self-serving: deserve little credence. May bind the promisor, but not
outsiders.  But should we give more
deference to standards bodies?  It’s
possible to dedicate research to the public to make results unpatentable. It’s
possible to abandon ©. But a TM-able symbol may not have protection against
being scooped out of the public domain. Should we create such a framework?
Proposal: alert examiner to consensus lists developed
through industry bodies w/due process, right to contest. Should be a rebuttable
presumption of genericism.  So too
w/litigation/cancellation.
Mark McKenna: is there a big problem here?
A: there are a few, like USB House.  Relying on courts is costly. 
Deborah Gerhardt: Office Actions could help you isolate the
problem.  Curious to see what kind of
evidence the examiner is citing.  She’s
seen citations of use in patent names; unit of food in nutrition label.
Justin Hughes: the PTO doesn’t need to worry about
prescription drugs b/c the FDA will do it for them.  Would worry about Linux people using this proposed
structure on Windows.
Michael Grynberg, DePaul University College of Law
Living with the Merchandising Right
Hates it too, but it’s not going anywhere: protecting the
mark as the most desirable feature of the product; source designation functions
are either irrelevant or distinctly less important.  Boston Hockey: protection of the feature qua
feature; likely confusion exists because people recognize it. Later cases claim
that merchandising is an application of confusion over source/sponsorship, but
if you read them there’s still a presumption of ownership/rewarding people who
create valuable things. 
Familiar critiques/responses to those critiques: it’s not
confusing about source (but courts see approval/sponsorship confusion); it’s
functional (but courts don’t like aesthetic functionality); etc.  Judicial intuitions support this right; they
don’t like free riding even if there’s no there there philosophically.  Matthew Kugler study: consumers don’t care for
themselves but think there’s a moral component/desert.  In TM class, he starts at the beginning of class
asking about merchandising rights (McD’s T-shirts w/logo) and asks again at the
end; almost 100% believe in the merchandising right at the beginning of class
and almost 100% believe at the end of the term.
Fine, but the merchandising right destabilizes infringement
more generally. Different factors are emphasized than in typical source
confusion cases, like heavy weight given to D’s intent (Smack Apparel) and the
idea that free riding is probative of confusion. Downplaying of distinguishing
content like disclaimers in Automotive Gold. Danger is feedback to general
infringement analysis.  Another potential
issue: copyright overlap. Honey Badger case (sigh)—copying Gordon’s expression,
not his “mark.”  Merchandise claim
pressures Dastar policy, protects Gordon as the “origin” of the theme
that Honey Badger don’t care.  Similarly,
exacerbates tension on First Amendment interests b/c we have a merchandising
claim at work—Court’s intuition that he should win does real damage to Rogers
by finding the use artistically relevant, but also finding that b/c we’re in
the same (merchandising) market, it might be explicitly misleading even though
the defendant isn’t doing anything explicitly misleading.
Porous markets: Excelled Sheepskin v. Oregon Brewing Co.
Brewer used ROGUE mark for promotional clothing; Leval finds that this
promotional use gives it priority over clothes maker in department and clothing
stores. Leverages priority into market you weren’t intending to enter/were entering
for merchandising only; exacerbates mark depletion issues. 
TM holder free riding/trolling: pressure on mark
exclusions/defenses.  How we deal with
the free rider being the TM owner—Packman v. Chicago Tribune, where there’s a
TM registration for JOY OF SIX and the person who gets this registration sends
letters to newspapers suggesting they use it; Chicago Tribune uses it on a
headline and merchandises its own front pages, and the troll emerges and tries
to sue.  Intuitively, we know that
Packman should and must use. The question is why.  The court goes to classic nominative fair
use.  YMMV, but that’s not the easiest
fit in this situation.  It’s not describing
the CT’s own goods/services, but the fair use analysis focuses on P’s lack of
secondary meaning. This is true but not evidently part of the analysis—reflects
court’s strong sense that Ps are the free riders here.  But it makes it more difficult for Ds who don’t
fit the perfect model.  Oprah Winfrey’s
O: Own Your Power events.  Louboutinish
move that ends up resolving the case in favor of Winfrey: there’s not a real
mark here.
This situation also adds to pressure on §2 exclusions. 
Is there a role for a formal right, akin to ACPA?  Channeling cases into set doctrinal
moves?  Tailored test for approval
confusion to be evaluated in the merchandising context?
What’s in it for us? 
Protect TM doctrine/simplify the analysis.  E.g., use confusing similarity in merchandising
cases, limit spillover.  Raise standard
for protection: require substantial acquired distinctiveness to limit P free
riding.  Address market overlaps: define
merchandise market as distinct, reduce congestion pressure.  Also have to handle defenses.
Betsy Rosenblatt: worried that this would just end up creating
two overlapping merchandising rights and making it worse.
A: it’s a risk. Brookfield was really horrible and then the
9th Circuit ended up moving back. 
In part ACPA changed that, creating space for Tabari/nominative fair use
[hunh, but all the Brookfield spillover was really in keyword ads which is
where the change really ended up happening; hard to attribute that judicial
learning to ACPA]
Gerhardt: use as a mark is what’s screwing stuff up. If that
weren’t an eliminating factor for descriptive fair use, then these cases would
be a ton easier; they didn’t intend to use Own Your Power as a mark.
A: worries that goes too far—gets rid of reverse confusion
as a doctrine. [but does it? Big O Tires would still exist]
Jennifer Rothman: if we embrace the merchandising right, can
we adopt the perspective of those who feel the moral pull to figure out what
the internal limits on that would be that would accord with judicial
intuitions? 
A: enhanced distinctiveness requirement would be a place for
that intuition about desert to play a formal role.
RT: what’s your evidence of spillover? How do you define
merchandise? Proposal sounds a bit like double identity, but note that ACPA
doesn’t manage to be formalist—it considers bad intent, website content.  Why not require substantial acquired
distinctiveness for most if not all stuff put on merchandise?  Cf. Lisa Ramsey’s proposals to increase the
distinctiveness bars by a lot.
Laura A. Heymann, William & Mary Law School
Trademark Law and the Strategic Consumer
Courts are often rather blanket in their treatment of
consumers.  Knockoff perfume case: court
quotes from the papers in saying that could be argued that D’s target
demographic, lower-income, sometimes ethnic consumers are less sophisticated
and more easily confused, while a skincare case discusses older, educated
consumers are less likely to be confused. The underlying message is
blaming/shaming. These intuitions aren’t true in many cases: those w/fewer
financial resources can make more careful decisions even w/r/t lower cost items,
while those w/more may pay less attention. Hard for most judges to imagine what
it’s like not to have a car; not to have reliable internet access.  Also should think about how communications
policy shapes what kind of phones we can buy, etc.  No group is monolithic, of course.
Paper: asks courts to pay more attention to socioeconomic
class, intersection w/education, and strategies of consumers in purchasing in
ways that influence the infringement analysis. 
If we did that, we might see that LOC analysis assesses the overall
buying experience.  The term “sophistication
of the buyer” is just not an apt term and has had some bad effects.  It’s really about motivation to pay
attention/level of attention in a transaction. 
Thinking about purchasers in dollar stores: their exposure to brands and
number of brands may be different; thinking about purchasers who are likely to
access the internet through their phones. Not aware of any cases that ask how
something looks on a phone v. how it looks on a computer.  Cognitive processing, literacy levels
interact and matter. If a word is represented more as a visual unit than a lexical
one in memory, that might affect how similarity should be analyzed. Encoding
for low-literacy consumers can be very specific—even small changes/clutter may
change how it’s coded.  Study: Lower-SES
parents: food can serve as a symbolic antidote to deprivation: branded food
products can communicate love and support as well as dignity where larger
purchases are unaffordable. Higher SES parents, by contrast, use denial of
child’s request for branded item to teach delayed gratification and to show
good parenting techniques.  This interacts
w/time/attention given to the purchase.
Post-sale confusion: should think about the ways in which
access to goods that resemble high-status goods can be a way of accessing
things like jobs, not just group membership—can signal trustworthiness.
High-SES consumers often prefer more subtle, hidden marks: conveys association
with a smaller group.  Other groups have
a higher need to demonstrate outwardly the ability to conform. Tressie McMillam
Cotton has written eloquently on this.
Implications: lack of monolithic consumers makes things more
complicated; might point in different directions. IIC may even matter more for
consumers w/fewer opportunities to correct; post-sale confusion might be less
important.  TM can be a way of preserving
dignity for a family.  Respect individual
autonomy but also protect consumers w/fewer resources.
Q: you’ve convinced me that this factor is bullshit, except
for people who specialize in buying a particular thing or for really really
high priced items like cars; everything else is too complicated to
realistically weigh.  Ann Bartow has said
similar things.
McKenna: is your payoff at the retail level or wholesale in
terms of thinking of the structure of TM law—hard to imagine lawyers invoking
SES successfully.
[Variation in consumers, including attention and preference for
cognition, is true but how important is it for this part of the doctrine to
acknowledge if the standard for likely confusion is probabalistic? Even if there’s
some other set of consumers who are actively benefited by the challenged
behavior, that might be better taken into account separately. [FTC disclosure guides
have an extensive section on how something looks on a phone!]
Rosenblatt: Maybe the factor should matter more for
social justice purposes.
Alexandra Mogyoros, University of Oxford, St. Peter’s
College
Pseudo-Certification Marks
Mark politicization: Absolut’s homepage looks like it’s a UN
member and asks you to join its movement, which means sending you emails about
sustainable cocktails.  UK: certification
marks is not about source identification but about certifying that goods/services
are certified by the proprietor of the mark in respect of some characteristic.  Her interest is marks that are registered as
TM, but appear to be performing “certifying function”—generally a credence
attribute about goods/services.
Fairtrade Foundation: It is third-party owned, so they have
their own standards.  Cocoa Life: again
looks like a certification mark, existing next to other brands, but its
function is proprietary: wholly owned by Mondelez and used only on its
products, but looks third-party.  B Corp
Certified: owned by a nonprofit; certifies the using corporation’s own organization
form. 
TM owners fear lack of power/control: you can’t use it
yourself if you own a certification mark (limited exception in Australia).  Potential anticompetitive effects (Jeanne Fromer’s
article
).  Requires more registry
oversight, but that may just be a rubber stamp in practice, but lawyers still
worry about it.
Is there something about certification marks that is
unfavorable to owners? Maggie Chon has been skeptical about incentives to
maintain a mark you can’t yourself use and that you can only license (and you
may be subject to nondiscrimination measures).
McKenna: what are the consequences/costs of confusing the
two? Standard TM theory would tell you the certification of characteristics of
a product is part of what we get out of many TMs. So components of
certification are embedded in TMs but the opposite is not true (source
identification).  They’re also pretty
vulnerable to not being valid as TMs because they don’t signify source. 
Heymann: self-certification is part of the confusion. Why do
consumers rely on Good Housekeeping? 
[RT: (1) part of what you’re doing seems like a subset of
the issue of preferences for processes (great article by Doug Kysar)—from
what it sounds like including your initial discussion of Absolut, it’s not so
much that you’re worried about certification but about certification of
features that are more abstract than other previous certifications like geographic
origin.  But if those things matter to
consumers, why isn’t that a legitimate way for participants to distinguish
themselves?  (2) Cocoa Life: one of these
things is not like the others—it seems different because of the misleading
appearance of independence.  Why not use false
advertising law?  There are some cases on
self-certification as false advertising. SC
Johnson greenlist case
. (3) relevance of competition in the market for e.g.
green certification—incentives may be very different if you’re competing
w/other certifiers. Which raises the issue of greenwashing which I didn’t see
in the paper but might be a place to go: maybe there shouldn’t be very many certification
marks.
Zahr Said: Craft beer might be a good example: 2017
certification exists. Arose partly b/c of fear that major brands were calling
themselve craft beer and weren’t.
McGeveran: the product being marketed is the endorsement of
some entity.  If that is a legit way of
thinking about it, then what are the implications?  Maybe they are housed comfortably as TMs,
just for a different product. 
Greenwashing: is the attention cost of clutter also relevant?

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