Fourteenth Trademark Scholars’ Roundtable: Are Key Trademark and Unfair Competition Doctrines Anachronistic?

UCLA School of Law

Mark Janis: 1st day of TM: students’ experience
of brands as used by owners & 3rd parties is so disconnected
from the historical traditions of TM. Anachronism may give away too much by
suggesting the cause of disconnect is the passage of time—that might not be true
or might be partly true. Or is it just the messiness of common law adjudication
+ rapid tech change? Or are these doctrines autonomous—maybe doctrines should
be decoupled from the circumstances of their creation. Disconnect yes,
anachronism maybe.

Session 1: Identifying and Explaining Anachronisms

Introduction: Mark McKenna: Every year, a TM exam could be
written differently: one a very conventional exam question with Company A using
one mark and Company B using a similar mark/similar goods, conventional walk through
confusion factors in the way the test was designed to deal with. Or you can
write an exam about the stuff actually in the news, which is often not a model
the LOC factors were meant for—uses on Instagram, collaborations with artists,
etc. We may be teaching a doctrine modeled on commercial activity that doesn’t
take up much of the space of the way people use TMs. Are our doctrinal tools
workable for the conflicts that arise? JDPI amicus
was describing how LOC factors were not developed for these kinds of
cases. Not just for likely confusion, but also use as a mark. Collapse of
separate body of unfair competition, but also old-fashioned ways of thinking
what it means to use as a mark—a certain kind of way of expecting products to
be introduced to the market, that is no longer reflective of lots of stuff that
goes on, especially digitally. Is merchandising really the outlier or is it now
really the model of TM law. So we looked for doctrinally linked pairs of cases
that highlight different commercial practices/evolution of doctrine over time.
How tightly are they connected and do they reflect same doctrine/different circumstances
or something else? E.g. LTTB v. Redbubble v. the Abercrombie spectrum.

Jessica Silbey: doctrinal tools that become less useful over
time b/c of unforeseen developments: LOC factors, Abercrombie spectrum. Is it a
tool that’s lost utility or just a tool that shouldn’t be used in specific
circumstances? What causes us to use old tools in new situations? It’s a
problem of legal reasoning, not just common law—the way we argue cases is to
apply old tools to new situations.  Is
there something special about TM? Combo of statutory law layered with multifactor
tests might make these tools stickier than other areas of law; where the
statute is clearer, maybe it’s more adaptable.

New facts: Many doctrinal foundations—comparative advertising,
LOC where market structure and expectations of consumer behavior have changed. Think
about where cts have stubbornly refused to recognize the existence of new facts—MSCHF/Vans
case is one of those, where material alteration/first sale doctrine need to be
applied differently b/c the world has changed and the ct refuses to recognizes
that. But Multi Time Machine is recognizing that Brookfield needs to be
changed. What’s the difference (other than circuit)? Lancaster watch/Hamilton
case and Wavy Baby/MSCHF case can’t both be right—that’s either a totally a new
watch and materially altered or neither of them are. Consumer tastes change, rise
of upcycling and customization, are important changed facts.

In con law we attribute doctrinal shifts to ideological/intellectual
shifts—new ways of thinking about industrial organization. Are there things in
TM where we see intellectual shifts like that? The “use” cases maybe, aesthetic

Other doctrines developing in parallel: the First Amendment
is the elephant in the room, w/unintended consequences for financial
regulation, public accommodations, etc. Aesthetic functionality,
affiliation/sponsorship now needs to be seen as affected by First Amendment.
Ornamentality exceptions, like LTTB, versus dog toys & shoes, which are not
seen as the same—wrestling with speech v. product v. conduct. Maybe that
collision explains some of these anachronisms.

Are there other doctrines that may be working in the
background? Franchise law, labor law, antitrust law.  [Standing?]

Discussants:    Dev
Gangjee: If even what counts as an indication of source has changed so much,
must wonder where TM is going b/c of franchises, contractual arrangements and licensing—the
whole guarantee of quality story just doesn’t make sense any more. TM has achieved
context collapse: losing unfair competition and becoming formalist—similarity =
infringement and that’s it. High formalism in EU TM law; AI systems are
measuring only sign similarity and product similarity. Methodology and approach
affects content—multifactor tests are the ultimate rebuke of realism to formalism.

Jeanne Fromer: Doctrines have ossified in unintended ways.
Distinctiveness: Abercrombie gave a shorthand to help categorize marks and protectability/scope
thereof.  But it hardened and became
unmoored from “which marks are competitively dangerous to protect”—categories got
their own internal rules and shorthand, such as “a fanciful mark isn’t in the
dictionary” even when it conveys its meaning, often descriptively—Clorox.

Judge Leval did the right thing quite recently in Rise &
Shine v. Pepsico—pulled back and said don’t harden the categories too much.
Even a suggestive mark can have a primary meaning so closely linked to
goods/services that the mark is weak, like RISE for cold coffee. If the
suggestion of a suggestive mark calls up a central feature, while a descriptive
term describes a trivial feature, the suggestive mark can be weaker than the descriptive

Sometimes it’s our doing: as scholars we sometimes understand
things more categorically than courts intend. Brookfield v. MTM cases: you can
agree w/outcomes or not, but decisions are really nuanced. MTM is saying “it’s
about exactly how Amazon presented its search results.” But we tend to say “MTM
killed IIC online” and we shouldn’t understand it that way. There are some
things on Amazon that feel potentially confusing. Self-reflection: ensure we’re
extrapolating correctly and with nuance.

Many of us talk about Rogers in this way as a categorical
rule, but the VIP case shows there’s nuance in those cases that can get lost.

There’s so much more reliance on empirical evidence now than
in the past, and it raises normative v. empirical questions. Relates to
questions like “trademark spaces” and linguistics in TM. Types of
empirical evidence also change—linguistics versus marketplace evidence to
assess genericity.’s focus on survey evidence—courts very open to new
evidence, but we ought to think more critically about what each type of evidence
offers and does. Linguistics v. what consumers think v. what’s going on in marketplace.

Smith v. Chanel: readily accepted tradeoffs against consumer
confusion for purposes of speech and competition; Coca-Cola and other cases not
as much. Thinking about anachronisms/path dependencies, it can be helpful to
think about whether we structure something as a defense or part of the
confusion case, and going back and forth can make it easier or harder for a
consideration to matter.

Lemley: don’t assume we’re moving in the right direction.
Many anachronistic cases have been decided in last 20 years. Borden was wrong
and we were right to broaden the concept of confusion, but many things ignore
that changes in the law move people’s perceptions as well. Penn State
merchandising case might seem like an anachronism, but he thinks it’s a great

Rules v. standard: you might say a rule is anachronistic, it’s
easier to identify whether that is so. Before 2020 we had a genericness
doctrine, now we don’t—the rule that you can’t come back from genericide
was a rule and now it’s just gone. If our doctrines our standards, we tend to
think of them in rulified terms, but that’s not how standards work. You look at
datapoints and they might migrate in a particular direction but that doesn’t
mean they’ll all be the same.

Barton Beebe: Intellectual movements—do they have any effect
on TM law? Law and econ of course, but what else has affected TM law as opposed
to TM commentary? Might not look like TM is constantly struggling with tech,
versus © and patent. But: Amazon has basically replaced TM law, and that’s a
tech development. So is the domain name system, which brings principles from
guild world in 1400s into cyberspace. Dawn Donut—2d Circuit has expressed
skepticism but it’s still there—it does seem like it’s from a different era. Assignment
in gross seems anachronistic given the development of licensing. So the larger
Q is to what extent does tech change affect the premises of TM?

TM law doesn’t seem to be getting better; we don’t have a
whiggish history of progress. Is that lack of progress producing the anachronisms?

Jake Linford: First Amendment Lochnerism—used as a deregulatory
move can happen on a number of different fronts. Worried about trusting 1A to
do good work here. Contract law: recently, Adidas decided Ye was too toxic to
work with and cancelled deal. If I have a shoe brand and want to collaborate
w/some artists and not others. To the extent that contract law has let parties
decide in whom they want to place business trust, Nike can tell MSCHF thanks
but no thanks. But that opens some 1A space to ask whether Nike is exercising rights
in ways implicated by 1A. Generally private action doesn’t count for 1A
purposes, but there is pressure on that [because courts are enforcing the
claimed right of Nike to control whether you can modify a shoe without a

Rules save resources in a resource-constrained world;
Abercrombie can be ok if it’s right most of the time—does it save us time in
most cases? Does the equitable power of courts provide enough flexibility to
know when to vary the rule? [That sounds like describing a standard, though,
especially given litigation incentives, as Glynn Lunney has written.]

If we don’t have surveys, what do we have? His prelim
research suggests a lot of judicial notice and a parade of individual witnesses
on both sides. Maybe a good survey economizes that march of the witnesses in a
way we like. Without a particular tool, what should we replace it with?

Jeremy Sheff: Existence, nature and scope of judicial
discretion: a broader ideology that has a huge effect on TM cases. If judges
are supposedly just calling balls & strikes, the opinion will write a
certain way. In Judge Leval’s time, judges were judges in that they exercised judgment
and discretion as part of their function. That’s one way intellectual movements
about jurisprudence can shape TM. TM law in EU has moved to more formalistic
application of criteria rather than equitable judgment of unfair competition—a similar

Other battle lines: First Amendment as deregulatory weapon.
That’s the obverse of another aspect of judging: role of judiciary in social
regulation generally, and whether private power ought to be subject to
countervailing power in federal courts. That will affect TM too but not b/c it’s
a philosophy of TM.

Bob Bone: In torts, we have common-law greats like Judge Traynor
who are willing to innovate—strict liability, etc—in response to broader
changes in general values. We don’t seem to have that in TM—less sensitivity to
external changes; moves like molasses. Why is that? One reason may be lawyers. Practitioners
wrote on TM in the early 20th century: Rogers, Callman, Schechter; part
of the broader intellectual world but also as practicing lawyers maybe more
constrained. As we get more specialized in our practices, maybe that is
affecting ability of doctrine to respond to circumstances.

While costs of TM expanded, the benefits are expanded as
well—changes in the way we view the benefits of marks. TM protection as
creating incentives, or protecting property like ©. Why? Lawyers are using TM
law to fill gaps. Doctrines that served a different purpose originally can be
repurposed to do that.

Lisa Ramsey: Divide on Rogers: 9th Circuit uses
it as a replacement for standard confusion test; SDNY in Metabirkins: use LOC
test first, then have jury apply 1A defense. That might change the outcome if
the factfinder first finds infringement and then decides whether there’s any

McKenna: Shift to textualism: JDPI briefing, the attempt to claim
you can find answers in the text of the Lanham Act, which is obviously bonkers
and yet the audience is open to it (compare Star Athletica). Tort: Different
courts often have different normative goals: some are more interested in
compensation for injured Ps, some in incentives where P is just a tool, some in
punishing bad actors. Teaching torts alongside TM, one striking difference is how
much TM pretends it’s just finding stuff in nature in commercial practice and
following consumers—hides the inevitable normativity of the various choices.
[Indeed, where did we get the rule that 15% confusion is a lot?] We’ve been
fighting about the ultimate endpoint of following what consumers do, which
seems to be rights in gross. Any kind of arrangement is conceivable now. Brand
owners are doing things to themselves we used to think we wouldn’t do. It’s
getting harder to present to courts that not everything that allocates value to
TM owners is good. TM has its own reasons and internal limits that aren’t just
derived from what we see in the world.

Chris Sprigman: Came to TM through competition/antitrust. 40
years ago a lot of federal judges thought antitrust was more important than TM
and so many judges saw TMs as anticompetitive; now many of them don’t. Antitrust
is the polar opposite of TM in openness to ideological revolutions; complete
(but shallow) reassessment of relationship b/t TM and competition.
Neo-Brandeisians haven’t focused on TM, but are getting there, and they may find
that the 1930s and 40s writing will seem correct: TMs are more a force for
oligopoly than for innovation, which might then affect antitrustàfederal
judiciary since antitrust lawyers are elite lawyers and TM lawyers aren’t.

Nuance is overrated in law (contra Fromer): Antitrust understands
that deeply and used to eschew nuance even more. If two bodegas decide to fix
the price at which they sell Diet Coke, their operators go to jail. That’s a
correct result! First Amendment tests: they should largely eschew nuance, as 9th
Circuit did with Rogers; 2d Cir. did too in Rogers itself, which was misunderstood
b/c in Twin Peaks both sides had First Amendment interests—the first line of
Twin Peaks is that it involves the exception to Rogers. Misunderstood by dcts
that don’t have a ton of time. Nuance is the enemy, not the ally; breathing
space under the 1A is not an anachronism. We shouldn’t have trials over intent
or whether an Eveready test shows 19% confusion or 38% (as it did in Rogers).
There are arguments on both sides, but that’s the real problem w/anachronism as
a framing device—it’s useful, but normative Qs always proceed it.

Robert Burrell: If the claim is that ossification has led to
TM’s misshapenness—not true in UK b/c TM keeps responding to calls for
modernization—law fears being left behind state of commerce, advertising
practices. Robust TM use doctrine in 1920s was swept away in 1938 b/c 1927
courts didn’t appreciate the hugely significant rise of advertising which would
harm TM owners unless stamped out. Time and again, the harm to the shape of TM
law has been caused by demand to “reflect commercial reality” and protect “brands”
rather than TMs. Assignments in gross are a good example. UK TM law is not good
b/c it got rid of the prohibition on assignment in gross; we need more
anachronisms. The internet is a partial exception—there has been an ECJ commitment
not to break the internet, which means that pushing back against TM expansionism
has also been done in the name of modernity.

Stacey Dogan: What gets called law & econ is often
libertarianism/view of world as adulation of commercially successful
individuals and disdain for community/anti-communitarianism. That’s influenced
every aspect of our law for the past few decades. Fluid/flexible legal
standards allow judges to be influenced by that. Successful people shouldn’t
pay taxes! It’s all part of the same view.

Can’t start from scratch b/c law has reciprocally influenced
commercial reality. But what would a rebuild from the ground up, starting with
today’s commerce, look like? Chris Leslie says a big problem of antitrust is
not a problem w/frame, but that courts have simply ignored the facts b/c of
their framework. We could try to bring anticompetitive effects forward.

Mike Grynberg: TM is pluralist in a way a lot of us don’t
like. Anti-free-riding impulse will always be with us. LTTB is different b/c
plaintiff looked more like a free rider (on the aesthetic meaning). Always been
with us: there was a 2 Justice dissent in Kellog v. Nabisco. Old cases were also
shorter and easier to read—there weren’t multiple steps to run through. It’s
not just that we have ossified structures, but we have structures upon structures—in
Borden, the court says the label is fine and does the multifactor test. In
2016, the Second Circuit says do multifactor test + NFU factors. As Tushnet
says, “TM law never gets less complicated.”

Laura Heymann: district courts fear reversal; they want to
be safe and claim calling balls and strikes, unlike Justice Traynor on the Cal.

Consider also how PTO examiners are trained. TMEP purports
to instruct them; they’re often cutting and pasting from TMEP or prior office
actions. Maybe that’s inherent to an admin system. Consistency, predictability,
not rocking the boat is a value in the system, which may bubble up.

Mid-Point Discussants: Rebecca Tushnet

[I think that’s not true—700,000 applications a year can’t
produce consistency, and also most Art. III judges have no idea what
registration is and just guess at its general meaning.]

Figure skating, poetry, intermural speech and debate, and
law: what do these fields have in common? Development of elaborate internal systems
that are often impenetrable to outsiders but that make sense to insiders to
distinguish good from bad performances. An aesthetics of law is often,
today, cashed out in a multifactor or multistep test—I think that occurred in
formalism too, even if what we now call factors were instead presented as a
decision tree.

Carol Rose, Crystals and Mud,
a tendency for law to grow more rococo until the legislature or someone else
w/authority steps in and tries something new, which then accretes its own
apparatus that allows explanation; criticisms of formalism can now be applied to
legal realism (accretion of multifactor tests—2d Circuit as case in point where
for nominative fair use they just say “throw it into the pot” and also say
every factor has to be considered in every case, except maybe Rogers cases).

Con law concepts: Reva
& Jack Balkin: preservation through transformation. The doctrine
has the same name but considers different types of evidence and thus produces
different results. Often works to scientize a doctrine. The Brandeis brief is a
good example: by claiming scientific, empirical support it contributed to the
idea that that’s what government always needs to justify its decision to regulate,
which might be a good change but is definitely different than it was

Larger problem w/ TM system as a system of law is its lack
of adversarial design: design with assumption that people are going to be
pressing the boundaries in asserting claims (Glynn Lunney’s work on degeneration
of TM doctrine
)—there’s a consensus of the powerful about whose claims are
dangerous (class actions—CAFA; prisoners—AEDPA; securities plaintiffs—PLSRA).
The only recent recognition of incentives to exploit the law in TM law is the
change from some circuits recognizing niche fame to being told not to do that
in the TDRA plus a little bit of greater cancellation options; the TMA went in
the other direction, rewarding aggressive claims w/the threat of
injunction, on irreparable harm. Maybe it is time to try to put TM into the
larger progressive antimonopoly discussion.

Abercrombie v. LTTB: Use as a mark’s absence has led to a
realignment around informational/decorative to take things out of the category “arbitrary.”
Abercrombie notes “the same term may be put to different uses with respect to a
single product” w/r/t descriptive uses, but not other types of uses. Should
secondary meaning defeat that? Lizzo’s 100% THAT BITCH suggests yes in
practice; what about in theory? After, yes in theory seems like the
courts’ likely answer.

Another thing in Abercrombie we don’t talk about: “It need
hardly be added that fanciful or arbitrary terms enjoy all the rights accorded
to suggestive terms as marks without the need of debating whether the term is ‘merely
descriptive’ and with ease of establishing infringement.” That’s probably the
wrongest thing the case said from a current perspective—that’s not a LOC
multifactor analysis.

One more background doctrine to add to Silbey’s list:
Article III standing. To answer Beebe’s question: Dawn Donut is now obviously a
standing doctrine. Likewise, free riding may not provide Article III standing, which
purports to require harm.

Bill McGeveran: The source/brand distinction which seems so
rigorous to us seems bizarre to TM claimants. The people whose interests TM serves
don’t agree that TM is for source identification; they like that too, but that’s
not what they think TM is for—it’s much more important to understand that “Apple”
means cool and functional. Is this a new fact? It’s evolved more and more in
this direction.

Shift in what progressivism around economics is in
policy. FTC might ban noncompetes! Very rapid shift in policy as well as
intellectual approaches. The world of possibility around legal change in
TM-adjacent fields is much higher than it has been in a long time. Income
inequality; perception of campaigns controlled by economic interests.
Realignment also possible around speech interests. 1A plays a different role in
TM than in other regulatory, anti-admin state moves. The villain here is large
corporations/TM bullies.

Leah Grinvald: Studying caselaw isn’t the whole picture:
lots happens outside of the courtroom. Amazon is a huge case in point; Google
as well; Jim Gibson’s piece on rights accretion—affects what cases are brought,
fought, settled.

Silbey: What prevents TM lawyers from bringing in arguments
about identity politics, or art history, and not just branding literature?
Metabirkins judge rejected art historian for having no methodology; sociology
and urban planning were disputed methodologies in early 20th century
[and perhaps still, to CJ Roberts]. Became available to lawyers; what is
preventing TM law from adopting other forms of empirical evidence to make
arguments for Ps and Ds? Are we seeing claims adjoined to TM that suggest
related problems, the way we’re now seeing © and privacy claims brought
together? Maybe not b/c TM is already so capacious. [TM and ROP, maybe.]

Sheff: Most TM cases aren’t worth enough to litigate complex
issues of expertise—they won’t destroy a business (except for Rogers-type
cases). Changing the name is often an option, and if that cost is less than the
cost of expert litigation that would affect choices. Silbey: surveys are
expensive. Sheff: Ds often don’t use them, and at least they’re relatively
formalized now.

Crystals and Mud is a good comparator: we might have to adapt
to new developments. We can adopt exceptions—separate bright line rules: one
fact causes us to switch to a different path. Rogers is one example. But the
alternative is to just throw it into a multifactor hopper. The 1A implications
suggest that move is inappropriate in certain categories of cases. That’s more
a prophylactic rule than a standard. Some injuries are simply more important
than others.

The Polaroid factors are actually dicta; resolved on
laches grounds. Second Circuit is thinking about how close two products need to
be; they need not be identical, but here are a bunch of things to think about
w/related but non-identical products; but anyway P loses on laches grounds. We’re
treating this list as the definition of how we know when two businesses
are going to be confused. Similarly with Abercrombie, which purports to
give shape to the category of suggestive marks, the court traces through some
common-law development; even if a mark isn’t descriptive, and even if it’s not
a technical TM, it might be registrable/protectable—Abercrombie allocates it to
the side of arbitrary/fanciful marks. Those are moves that differ in
implications for how that doctrine will be picked up in future cases in ways
courts don’t anticipate.

Fromer: Don’t forget role of PTO and other agencies, either
contributing to ossification or development of TM. A lot of what they do is
responsive to courts, but they’re at the front end of granting registration.
They’re not creating protection (they say), but deciding to grant or deny
registrations does mean they deal w/businesses thinking about TM rights. They
see a lot of situations that TM law will ultimately have to contend with [as
they first noticed the decorative/ornamental flood].

In many ways PTO is very bad at responding to new
situations, though in some very forward-looking. They’ve been very permissive
about allowing businesses to rebrand/do brand extensions in ways the courts
haven’t noticed but affects what happens in TM. Permissive in allowing token
uses to count as use in commerce. They’re pretty bad at catching descriptiveness
w/o secondary meaning. But for failure to function, they’ve really been
prominent b/c the PTO was willing to act. It’s unfortunate they have a
framework of “applicants are our customers” and “we want more registrations
every year.” A lot turns on the data that they do keep and use when searching.
They have no general database of specimens, for example; that might keep TM in
the past/enable businesses to keep registering the same thing over and over
again. They don’t search beyond the registration database.

Lemley: (1) list of cases/juxtapositions—with 1-2 exceptions,
every anachronism doctrine is a doctrine that expanded TM rights to a category
of things that didn’t exist traditionally. (2) we’re at a generational
disconnect. Nobody thinks about brands the way TM scholars think about TM.
Spent much of his life resisting that effort, but we also need to say “a new
theory needs new rules.” RT’s point about standing doctrine: always good to see
a dumb doctrine defeated by a dumber doctrine. But there are other ways to
think about what that new theory might do that can free us from existing
doctrinal constraints. Maybe consumer confusion doesn’t matter at all; at a
minimum it’s not determinative. If brands aren’t TMs, then confusion might not
matter. Maybe we don’t need a presumption of exclusivity in a particular market.
And then the 1A might come in: there’s no special exemption from the 1A that
stems from misleading commercial speech b/c that train has left the station.
Maybe we should welcome the idea that every TM case is one that needs a 1A analysis.

Consider a rhetoric of rights on the user side as a counterbalance:
not a brand totally owned by company, but a thing that the world benefits from;
a right to choose whether I want that meaning or another one.

Dev Gangjee: Are we going back to some ur-text that is
disconnected from “normal people”—but advertising has been fundamentally
rethought as a good thing these days. Look at greenwashing/sustainability
agenda: if TM is hitched to advertising, we can talk to others and connect that
to the larger agenda. We’re not wrong in being cautious about this trend, and we
don’t have to concede that society has moved on. Ralph Brown’s piece on
advertising and the public interest: The FTC used to be the site of many of
these debates, including about whether TMs could be misleadingly suggestive.

On Lemley’s point about new rules: EU adopted new theories
and got terrible rules—just mushed them all together and invented harms.

Linford: Thomas could get a textualist test out of 43(a). Are
Amazon & Walmart the villains w/aggressive tactics, or is that just
competition that we love b/c it offers low prices? Amazon is worse for
consumers than it was 10 years ago; we had an opportunity in MTM to do better—just
tell consumers you don’t have an MTM watch, just one line of code. Once we don’t
ask even that, the floodgates of enshittification open. [This strikes me as quite
wrong—Amazon’s a bunch worse b/c the product results are controlled by how much
the sellers pay Amazon, and it’s especially bad when you aren’t looking
for a specific brand—the problem is on the seller side, not the consumer side.]

McKenna: Why do people think TM’s role is to protect brands?
Prestonettes: the complaint was that D was interfering with what we want known
about our brand, and the Court said that wasn’t its job. The word is not taboo!
What enabled this shift even among TM lawyers? Courts say all the time, TM law
promotes competition—but it’s a shift from TM law as a system to trademarks
promote competition, which is a significant move that enables you to stop thinking
about what the limits of protection should be. TM needs a theory of
competition. It’s not a thing found in nature.

Grynberg: part of the PTO’s problem is that it’s under the
Fed Cir’s thumb and trying to survive what the Fed Cir thinks about IP rights.

Burrell: can an admin agency be part of ossification? We
have to think about to what extent PTO rules find their way up to superior
courts. But b/c the PTO deals w/the vast majority of TM disputes, that’s the
wrong Q—they can be their own source of ossification for their own disputes.
Can admin agencies resist attempts to deossify from the courts? Sometimes you
can see them deliberately ignoring dilettantes on courts, watering down their

Sprigman: if TM is going to reconsider how TMs shape competition,
it shouldn’t ID retail-level villains; it should develop a theory about what
competition is supposed to do and how rules should shape it. Mishakawa: a TM is
designed to induce people to think they want something—to differentiate markets
that were competitive and create artificial differentiation to move the market
more towards oligopoly. That’s a gigantic idea, and not about whether Walmart
or Amazon is bad or good. The Chicago model celebrates limitless product
differentiation, w/no margin of diminishing returns. That’s a contestable
understanding of what’s good about markets. Sometimes we standardize! E.g.,
financial markets. Efficiencies come from standardization. Henry Smith also
writes about this for property. TM law needs to find that level of what we’re
looking for in general, not on a case by case basis, which would just be more
ad hoc.

Bone: Normative anachronisms, not just doctrinal ones. And
anachronisms about empirical world. Useful to distinguish among ways tools/beliefs
can be anachronistic. Abercrombie is a good example of doctrinal anachronism.
In Polaroid, Judge Friendly was trying to resolve a tension in 2d Circuit and a
typical way to do that is to say everyone’s right; we do that by taking what
everyone cares about and sticking it into a multifactor test. It only gets
worse as time goes by. Abercrombie is similar: Judge Friendly says let’s look
at the categories, but the old categories were supported by a different
normative theory (technical TMs—a natural law property right that was dominant
during the conceptualist period), so we kept categories that were ill-suited to
the new normative baseline. Not surprising it’s a mess. But it’s not as bad a
mess as LOC because we can look at some of these categories and say it makes sense
to have categories, but they’re not the right lines because we’re all
functionalists now and want to know what the categories are for.

Ramsey: the challenge for judges who don’t see many TM cases:
what are they supposed to do? If we don’t have a multifactor test for the
traditional cases, what should we be doing? We need a framework for argument.

Sprigman: normatively, do we want consumers’ own savvy to
take care of this?

Bone: we used to have that—double identity/technical TMs
were a much easier confusion test.
Beebe: Neo-Brandeisian approach to IIC might be that it’s fine thing unless it’s
bait and switch; not clear how it would think about post-sale confusion.
Fashion brands distract us from the giant world of everyday TMs; how do we
navigate that gravitational pull distracting us from competition theory.

Lemley: we could try a double non-identity test: not the
same field and not the same mark, we’re done. We’d have to decide how close you
could get. We’d also have to cut back on sponsorship/affiliation to do that. It’s
not a reconceptualization that requires a return to the past, though that might
be a component: there might be a universe of ordinary TM disputes from 80 years
ago where the old rules are fine, and then a universe of brand disputes that
could just be treated differently; the theory of competition there is
fundamentally different.

from Blogger

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