Trademark overprotection panel, Suffolk

Second Annual Intellectual Property & Innovation
Conference Suffolk University Law School
NCSG
The State of Trademark “Overprotection” by Courts and the
PTO. What Happens When Institutions Overprotect Trademark Rights?
Moderator: Leah Chan Grinvald, Associate Dean for Academic
Affairs and Professor of Law, Suffolk University Law School
Panelists:
Alexandra Roberts, Associate Professor of Law, University of
New Hampshire School of Law
Overprotection. One type is granting protection to matter
that hasn’t earned protection—doesn’t actually function as a mark; aren’t used
in a TM way. Second, scope: matter that does qualify for protection but maybe
narrowly so.  Rule of doubt is a way to
wear PTO down.  Many examples: Apple
store layout; many Trump marks that are ornamental/informational.
Validity takes over in the courts: applicants and the PTO
spend a lot of time crafting an exquisite origami crane, and courts then ask “is
this paper folded?” They don’t ask what the mark is for, whether it’s a
design/word mark, etc.   Roberts calls it “rounding up” in terms of
rights, broadening the registered matter unwarrantedly.  Famous cases: Park ‘n Fly case: that was a design
mark, not a word mark. TM lawyers know the secret: if a mark is borderline, it’s
easier to register as a stylized mark—in blue and cursive when the word alone
is unregistrable.  By the time courts
look at it, they say the mark is Park ‘n Fly, which it is not: it is a design
mark including Park ‘n Fly.
Problems: deadwood on the register; chills competition;
chills competitor and consumer speech; bad litigation/TTAB outcomes that don’t
serve TM’s goal of protecting consumers and competition; bullying/things done
in the shadow of the law. Olympics has said that only official sponsors are
allowed to use #olympics. Overprotection + incontestability in particular is a really
good way to bully.
Rebecca Curtin, Associate Professor of Law, Suffolk
University Law School
Stakes for consumers/creators: focusing on a couple of
recent/pending cases in the doll industry. Artisan dollmaker/embroiderer on
Etsy who focuses on folk art dolls, including those depicting Frida Kahlo
(sometimes as she depicted herself in self-portraits). One showing her w/spinal
injury was taken down b/c of takedown from Frida Kahlo rights-claiming company.
If it was ©, we could discuss transformativeness, but that’s not the issue b/c
the corp doesn’t hold any © or right of publicity interests; what it does claim
is a TM for Frida Kahlo for games, playthings, and dolls, assigned by Kahlo’s
niece.  Repeated takedowns can get her
banned from Etsy; she filed a declaratory judgment. This artist isn’t alone in
depicting Kahlo in multiple media, including dolls; enforcement efforts
threaten diversity.  Ironically (?), the corp
licensed the creation of Frida Kahlo Barbie, which outraged the family b/c it
depicted her as lightskinned, and erased her unibrow and mustache and
prosthetic limb. They successfully enjoined sale of the doll in Mexico. Meanwhile,
the artist is forced to bear the expense of litigating to use Kahlo’s name to
accurately describe her works. 
Overreach both of existence of protection and its scope.
Names of historical figures/public domain characters are descriptive at best
for dolls that depict them. Secondary meaning? Unlikely where the figure looms
large in the public imagination, but there are complications about how to
describe descriptiveness and also incontestability limits the ability to use
descriptiveness to cancel a mark. Also, approaching this as distinctiveness is
unsatisfying, b/c it fails to consider cultural value of name in relation to
the goods—it’s not just a semantic Q of name’s relationship to the good.  Failure to function as a mark, genericism are
other alternatives. The dolls embody the character: I bought my daughter a Cinderella
last Christmas.  Also descriptive fair
use: this is a Frida Kahlo doll.
If there are so many doctrines preventing the
granting/enforcement of such rights, why is there a case here?  The toy industry is where art and merchandise
collide forcefully—sometimes the merchandise comes first and often generates
more revenue than the sale of the underlying expressive works, b/c the industry
has learned that toys with a backstory sell better. 
In the middle of opposing “Rapunzel” for dolls/toy
figures.  Fairy tale appropriation
strategy: has tried this with Snow Maiden, which was issued w/o an Office
Action even though it’s a Russian folktale; Snow Queen for dolls likewise (Hans
Christian Anderson); Little Mermaid for dolls, though that was refused as
descriptive and TTAB affirmed.  TMEP now
cites the Little Mermaid case to say that public domain character names are at
best descriptive of dolls depicting the character.
The key here is consumer interest in receiving expression.  Giving one company a monopoly on Rapunzel
makes it harder for others to interpret the fairy tale’s legacy.  A registration is a powerful tool.
Rebecca Tushnet, Frank Stanton Professor of First Amendment
Law, Harvard Law School
Empirical work: are we running out of trademarks?  Jeanne Fromer & Barton Beebe have shown
that yes, we appear to be, across pretty much all classes of goods and services.  You can’t have your cake and eat it too: you
can’t have over 100,000 new registrations a year and have broad rights for them
too, but the system has too long pretended that’s not the case.  PTO has seemingly gotten more attentive to some
of the use questions Professor Roberts has focused on. TM lawyers are unhappy
with the trend and I get why they feel “why are our clients being asked to provide
better specimens of use and proof of use as a mark when it didn’t happen to
clients 10 years ago?” but I don’t think the answer is to stay with the old
standards.
A couple of additional points: Amazon/ICANN and private rights
are having the same sets of struggles, including rounding up for domain names.  Abuse is already happening—rounding up for
design marks in ICANN; manipulation of Amazon. 
Legitimate businesses should not celebrate the existence of these new
mechanisms if they aren’t going to be transparent and provide procedural protections.
Second, legal doctrine tends to get more complicated over
time, developing what I call epicycles. 
This is bad for people who don’t have much money: it means they are less
able to assert valid claims and less able to defend against invalid claims.
My poster child: Gordon v. Drape Creative: Honey Badger Don’t
Care
Problem of granting rights too readily in the first place:
it’s not a trademark, it’s a punchline, it doesn’t serve a trademark function
Use as a mark
But also, because the court rounded up and accepted the validity
of the mark, a problem of adding complexity to doctrines designed to protect
free speech: it decided that because the defendant’s use was also use as a
punchline, it might not be protected by the First Amendment as an expressive
use; maybe it was explicitly misleading.
Grinvald: what do you do?
RT: We have tools for giving the benefit of the doubt to one
side if we care about the social interest at stake. Qualified immunity;
defamation doctrine. We can do the same thing for nonadvertising uses.
Curtin: a number of principles as suggested in the
discussion of dolls.
Roberts: failure to function at the PTO could be handled better;
abolish incontestability; eliminate the rule of doubt/reverse it. Wait for a
showing of secondary meaning, don’t publish it. Close scrutiny of statement of
use: more than ½ of applications are ITUs and the PTO doesn’t seem to pay as
much attention to the specimen of use. 
Give the PTO the chance to indicate explicitly in the file wrapper the
contours of the mark, and courts should pay attention to those limits. Remember
that the presumption of validity is rebuttable; courts think that failure to
function and descriptiveness are moot if marks have been in use for a while but
that’s not true.
Grinvald: is there real change now?
RT: I think the PTO’s official policy on some of this has
clearly changed and examiners are picking up on it but right now the system is
so big that you need big data analysis to be sure, w/500,000 applications
pending at any given time.
Grinvald: how (if at all) can we help small businesses like
the Etsy artist?
Roberts: Student clinics. 
Every school could have a small business clinic, which is a good fit for
TM law b/c the timing works.
Curtin: organizations like Volunteer Lawyers for America.
RT: Nothing in the TM space is going to solve the problem of
vast resource disparities between large and small. That said, rules offer
different paths to exploitation than standards.
Curtin: relevant Q: can we expect large corporations to do
the work of vindicating interests?  Why
didn’t Disney oppose the Rapunzel application? Probably because Disney
reasonably expects not to be sued by the TM claimant, and so it’s not worth the
opposition.
Grinvald: is it really grant of registration or
overenforcement?  [It’s both.]
Q: is there systematic underprotection of TM owners?  11th Cir. case: Savannah College
of Art & Design v. Sportswear Inc. 
If you put Suffolk Univ. on T-shirts, you get their apparel store.  It’s a good business model—they stay away
from big schools like Harvard or MIT, but not from small schools. Before this
case, SCAD sent C&Ds; they sell t-shirts w/ the name of the school,
sometimes with the color of the school, sometimes w/info like established 1989
or whatever.  They generally last out the
schools/settle w/them.
RT: I think it’s not TM confusion: consumers generally think
they’re showing their own commitments when they buy the merchandise; they don’t
generally think they’re buying authorized stuff, but they do think it’s morally
right to give the school some of the money. I don’t hold the view that the
school should morally get paid, but one can; I just don’t think it’s a
confusion issue.  Where I do think TM
owners are underprotected is phishing, though I couldn’t off the cuff write a
rule that would be limited to phishing and not easily abused.
Curtin: what matters is if they think the website is authorized/they’re
pretending to be authorized by SCAD.  [I
don’t think that’s what matters unless it’s material to consumers—and it may be,
though the empirics of this aren’t strong.]

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