Rebecca Tushnet

Mid-point discussants: 
Rebecca Tushnet

Continuing the theme of offering a series of observations:

Picking up on the relevance of 33(b)/referential use. First,
for textualists, it may be true that 33(b) indicates that there is no general
use as a mark requirement for infringement otherwise 33(b) would be a null set,
but 33(b) also proves to textualists that use as a mark is a real thing. Substantively:
33(b) requires “Use other than as a mark” and solely to describe defendant’s
goods/services—if “describe” can include description of defendant’s history or
content, then the idea that the First Circuit and the Sixth Circuit have played
with that descriptive FU includes many instances of nominative FU is not wrong.
There’s no reason we can’t make a use/mention distinction and we’ve seen courts
be willing to adopt various linguistic concepts, including synecdoche in
genericism and implicature in false advertising law. Maybe we need to start
building this out as a concept as part of our efforts to help courts
operationalize the intuition that there really are things like TM use.

Keyword ads: WhenU could actually be understood as a “it’s a
descriptive/non-speaker-identifying use” case: “Rather, WhenU reproduces
1–800’s website address, «www.1800contacts.com.», which is similar, but not
identical, to 1–800’s 1–800CONTACTS trademark.” “The differences between the
marks [sic] are quite significant because they transform 1–800’s
trademark—which is entitled to protection under the Lanham Act—into a word
combination that functions more or less like a public key to 1–800’s website.”
[informational functionality!] “Moreover, it is plain that WhenU is using
1–800’s website address precisely because it is a website address, rather than
because it bears any resemblance to 1–800’s trademark, because the only place
WhenU reproduces the address is in the SaveNow directory” (emphasis added).

Among other things, this provides a potential foundation for
the use/mention distinction—there may be typographic overlap but that doesn’t
mean there’s TM function overlap.

Rescuecom: Distinguishes WhenU because Google is selling the
“mark” – of course those transactions don’t cause any confusion; so it’s
one action from column A to find use and then another action from column B to
find potentially confusing conduct

But then in the Second Circuit’s recent 1-800 v. Warby
Parker keyword ad case, the court finds “dissimilarity of the marks”
dispositive—which only makes sense if you think that keyword purchase isn’t
“use as a mark” so you’re comparing P’s mark with D’s separate mark.

How to deal with Abitron v. JDI on use? What I’ve been
telling students: There are several possibilities: (1) Abitron means Rogers
never applies; (2) If there’s source confusion, there’s use as a mark; Rogers
is only for other kinds of confusion; (3) Abitron is not relevant, and there
can be confusion of any kind without use as a mark; but if there’s no use as a
mark, Rogers can be applied (but how do you know what use as a mark?).

My favorite of these: Rogers applies to non-source-confusion
theories (side note: maybe possible to distinguish some of the language in
43(a); but 43(a) doesn’t even say “mark”! How could Ct say that the
definition of use in commerce applies to both?).

Rogers for affiliation/sponsorship/endorsement confusion not
source confusion would generally protect the content of a work (though if there
was use as a mark then all the theories would be available). Dastar would then
deal with attempts to say that the content of the work functions as a mark for
itself.

But more generally: A core problem is that 43(a) is as broad
as 32 except for counterfeiting and presumption of validity, and that’s not
useful in speech cases/it removes all the substantive distinctions Congress
tried to make.

One fix: insist that 43(a) incorporates a common law style
harm requirement (a good idea? give up on the idea that TM infringement should
require harm beyond that required by Article III; 32 would become an American
version of double identity).

edge cases: Belmora: why did the existence of a registration
limit the remedies to which Bayer might have been entitled? A textualist might
say, as in Romag, that the statute provides for all of these remedies
regardless except counterfeiting. Difference b/t 43 and 32 doesn’t seem to
fully explain Belmora—registration preemption? [But the statute also does say
subject to the principles of equity, which could reasonably include the
difference b/t having a registration and not having one; a disclaimer
injunction is an injunction, it’s just not a complete prohibition on use.]

Conclusion: if we can’t pry apart 32 and 43(a) in what must
be proved beyond validity, then defensive/infringment-side doctrines based on
use as a mark will not help

Question re: teaching Abitron: how is it going? Deep
confusion!

Leah Grinvald: How to stop litigation early/before it starts—a
key concern for small businesses. TM use was supposed to be a limiting doctrine
to end confusion early. Lerner & Rowe could have prevented years of
litigation for other keyword buy cases, but fact that it was decided on a LOC
basis [in the context of courts believing that LOC is always intensely
factual instead of intensely factual outside of classes of cases we know quite
well] makes that difficult.

Mark McKenna

How much poorer we are for having lost the distinction b/t
TM and unfair competition! And the related loss of ontological categories, if
TM is not a limited category and anything can be a mark. [Also leaves doctrines
like “ideas can’t be marks” sitting out in the cold, looking like anomalies.]
Affixation is a formalist concept; formalism is used to delineate the category
but there’s a residual role for equity with more limited remedies. Modern
version: defendant has to disprove that it’s not using something as a mark,
where use as a mark means things much beyond source, and the remedy is likely
to be a full injunction. All of this is a reversal of past practice where the
focus would be on the defendant’s conduct and not the plaintiff’s
(unregistered) right. We’ve adopted a model that’s entirely functionalist in
asking whether something is a TM, in a world where consumers are used to seeing
marketing efforts of all sorts—broad recognition of services is another thing
that changed in the 20^th century and provided the foundation for
rights in gross type thinking—celebrities are considered marks for themselves.
In re Lizzo: makes you think of a celebrity and is therefore functioning as a
TM on the front of a shirt.

The impulse about use as a mark in JDI and Abitron hearkens
back to the old central concept of source: who made/stands behind the quality
of the product, but even there the SCt couldn’t commit—TM cares about that the most,
but the Court says nothing about what else TM cares about and to what degree.
To recover TM use, we will need some formalism, and we will need to accept
judgments at a wholesale level rather than a retail level. It can’t be the case
therefore that secondary meaning can override those rules; they should not be
default rules.

Graeme Dinwoodie: 43/32 divide in remedies: there are cases
granting more limited relief, like Belmora, Blinded Veterans, Newman’s Ferrari
dissent—there are datapoints you can use but their mindset is different from
that of Alito’s. The capacity to do that does depend on the methodology the
court is willing to adopt.

Jessica Litman: started teaching TM before Two Pesos, which
merged 43(a) and 32. Before that, what you had to prove to get relief under
43(a) was close to what RT talked about in terms of proving harm, though you
had to prove it in the protectability part of the case. You had to prove
entitlement to relief as to what D was doing. There isn’t much reasoning in Two
Pesos, and many sensible post-Two Pesos SCt rulings were attempts to undercut
it.

Ramsey: “Lifeguard” mark for T-shirts—company has gone after
many other uses for front of shirts. Benefit of treating failure to function
separately from distinctiveness is that you can acknowledge that “lifeguard” on
a T-shirt communicates that the wearer is a lifeguard. It shouldn’t be limited
to “widely used” phrases since things like TRUMP TOO SMALL are not widely used.

Lemley: Gringo case rejecting Rogers application: doesn’t
make any sense to say that D’s use is TM use b/c P’s use as a title is TM use,
so he’s against symmetry in that sense.

Burrell: registration system in Australia can make it more
attractive to apply to register a parody mark even if you don’t intend to
enforce it against other parodists—given the admin context and the fee-shifting
it might make more sense to go through the cheaper registration proceeding if the
target decides to oppose, and then if you have a registration you have stronger
standing against the parody’s target.

McKenna: need to really insist that whether D makes TM use
has nothing to do with whether P makes TM use.

Beebe: 43(c): use in commerce—seems to impose burden on P to
show D makes use in commerce to show dilution—that it was source-identifying. How
to meld w/exceptions such as fair use other than as designation of source?

Lemley: Dilution clearly has TM use—D’s use of a mark or
trade name! But if we’ve concluded that it’s use for confusion purposes, maybe
it’s also use for dilution purposes.

Dinwoodie: Rescuecom: Leval says something has to be used or
displayed for infringement, but not as a mark b/c he says an infringing D can’t
make a “bona fide” use. He wants to keep some part of the statutory definition
even for defendants. But thinks G does use/display the mark. Louboutin, then,
is a case where the court says there was no use—they weren’t saying
there was no TM use, they were saying that there was no use at all. [Dispute
over whether that makes any sense, is covert defense-side functionality done by
limiting scope of mark, or omits the necessary confusion analysis.]

McKenna: Lettuce Turnip the Beet does the best job
harmonizing this by saying that tag use is different than front of shirt use.

Janis: it’s hard for students to figure out what the fuss is
about with use until you get to Jack Daniels. [Relates to Lemley’s point that
maybe Abitron should be taught with the limiting doctrines—situations that are
pulled out of the multifactor LOC test.]

Sheff: we have areas of law where balancing tests are the
rule, but also special per se rules for certain situations as well. Example:
takings jurisprudence: we do regulatory takings balancing except if there’s a
total loss, etc. Attempts in TM have failed—remember the internet troika? They
fail by being folded back into the multifactor test. NFU: 2d Circuit folds the
factors back into the LOC test. Parody cases: we don’t carve it out but we fold
it into our consideration of the multifactor test. Not sure exactly why.

Ramsey: JDI creates an opportunity to use that relatively
narrow definition of “use as a mark”—use to identify your own goods or services
(so referential use would not be TM use).

Stephen Baird: Louboutin example is a good one b/c the
registration was far too broad—the sole didn’t pop without contrast—no highlighting,
no use.

from Blogger http://tushnet.blogspot.com/2025/05/sixteenth-trademark-scholars-roundtable_31.html

Mike Grynberg: SCt opinions since 2008. Courts don’t care about TM law; every now & then a judge does, but keeping the general rule in mind is useful—can’t expect dcts in particular to be able to sit back and explore all the nuances. Sometimes this indifference gives us delightful things but usually not. TM will generally be secondary, simpler, and less thought out than the things the Justices actually care about. See it in initial indifference to what makes a TM a good identifier (Tam, Brunetti) shifting to a debate about history and tradition (requiring them to distort TM law). Don’t pay attention to actual demands of source identification (w/Barrett and Sotomayor slightly exceptions). Most obvious in Abitron, where Alito carelessly throws in a TM use requirement. The Court will wave it away when the time comes around—an opinion is not a statute.

Textualism, employed in increasing frequency. That will preclude a strong use requirement b/c the arguments about the existence of 33(b)(4)—given previous lazy textualism. JDI doesn’t even mention legislative history endorsing Rogers; the dilution reasoning doesn’t deal with noncommercial speech or structure of statute where adding a provision designed to expand defenses is read as nullifying unchallenged defenses. Lawmaking as a game of Jenga: Romag Fasteners is the same way.

Textualism need not be good textualism.

Court may have sympathy for the vibes of TM use; the opinion of JDI suggests a mental model of classic source confusion. That occasionally penetrated in oral argument when Alito talked about toys and Blatt talked about surveys. General dissatisfaction w/overly broad TM claims, and endorsement of certain applications of Rogers, which could create an opening to draw distinctions. One strand of precedent we haven’t developed is Lexmark and its discussion of proximate causation, which leaves a good opening for considerations of confusion, material or not. But maybe not, b/c JDI suggests an undertheorized affection for the merchandising right. (And for dilution, further signaled by Elster.) If you think TM use is a thing but like the merchandising right, you have to figure out a way to say that merchandising use is TM use. Court’s reasoning could be limited to “JDI is TM use b/c of estoppel,” but he thinks the Ct really did see the use on the toy itself, not just the hang tags, as a TM use. Maybe it can be cabined to merchandising.

Pre-2008: factualism of cases/refusal to use shortcuts, as in Booking.com and JDI. Hana Financial/tacking—consumer perception is still the thing that matters most.

Noncommercial use/use in connection with: Radiance Foundation line of cases—an area still open for exploration. Louboutin case: maybe there’s still some way that someone can be said to not to be using the P’s mark even though there are similarities. Kelly-Brown mentions Louboutin in the idea of whether you’re actually “using” the P’s mark.

Jeanne Fromer: Is there symmetry b/t Ps and Ds, and should there be? There’s a statutory perspective—a lot depends on where a TM use requirement comes from both on acquisition and on D’s side. (1) requirement that a mark be used in commerce; (2) use to distinguish goods/services; (3) likely to cause confusion as to source. If it’s (1) or (2), it’s present for both protectability and infringement. But (3) is only true as to Ds. Maybe Abitron requires us to use (1) but 6^th Circuit locates “use in a TM way” in (3). That suggests that P and D understandings of TM use could be different. Being likely to confuse as to source might be a lower standard for TM use than use in commerce or use to distinguish a good/service—those 2 are much more certain, but “likely to confuse” is a likelihood/lower standard.

Granting rights v. stopping a third party from encroaching is also very important. [This would be a resurrection of TM v unfair competition principles.]

From whose perspective do we assess TM use? The party that’s using it’s intent v. the consumer’s? There could be linguistic or other expert perspectives to cabin off certain things. Perspective also affects when TM use is decided/at what stage of litigation. Consumer perspective: early resolution is hard; also hard at the acquisition stage.

Booking.com is very important in this context b/c makes it easier to rely on consumer perspective to “rule in” TM use. Even though that’s about genericity, it has impact on TM use.

Keyword cases: Lerner & Rowe decision: who is doing the TM use? It’s not being shown to the consumer when someone purchases the keyword but the user is using the keyword when they search.   

Christine Farley

Kagan’s narrow path in JDI seems a broader curtailment than they thought. Kagan seemed to think that TM use was clear and stable doctrine, so it can be decided by them even though it was never decided or briefed below. VIP claimed a trade dress—but it didn’t clearly claim that it owned rights in the total configuration/appearance; it never said what its trade dress was and that was never litigated—could only have been claiming trade dress in packaging/hang tag. Those used VIP’s marks [but the Bad Spaniels logo was on the hang tag]. Even if this case had been litigated differently, we might still have this problem. The court quotes Timmy Holedigger approvingly, holding that there’s no Rogers defense if the D is “trading on the goodwill of the TM owner”—not “making TM use.” The first appellate court, MSCHF, to handle VIP quotes that much broader statement and says Rogers doesn’t apply. MSCHF court accepts that total look and feel is TM use. Under this thinking, Getty AI cases, where Getty says “using our images for training so GAI spits out images with blurred Getty logos,” that could be a TM use, which would defeat the dilution exceptions. OMG Girls case: case was really about ROP and copying trade dress, but court pointed to the use of OMG in the name of the dolls and so Rogers failed as a defense. Even the use of Waves in the content of the Netflix show Pepperdine sued over could be characterized as TM use, b/c it’s used in the story-world in a standard manner on T-shirts and the like.  Courts don’t use “use” to mean “provides source identifying information” but are much broader in their meaning.

What about Abitron? Court takes definition of “use” and definition of “use in commerce” and merges them. Does it overrule Rescuecom? Won’t stake out an opinion. Might have been unwitting, but Court was not doing it accidentally. Court was trying to avoid the 4 Justices’ approach in concurrence—free floating “effects of confusion” test wasn’t a good guide to extraterritoriality. Justice Jackson uses old-school concepts of affixation—it got her vote. Too early to tell what will happen, but looking at the language of 32 might provide the most reach for TM owner b/c of the language of use in commerce in connection w/the advertising. Advertising to US consumers might be a way to get us back to the effects test. If TM use is a prerequisite to territorial rights, TM owners will try to stretch that.

Court also doesn’t say that TM use is required for domestic liability—JDI says that there are two kinds of defendants, one that makes TM use and one that doesn’t. Even though they seem to push TM use as a stable/important doctrine, they will not lead to a meaningful outcome.

Beebe: In terms of taking TM seriously: How could Kagan cite both Janis & Dinwoodie and McKenna & Lemley as stating the same proposition about TM use? I was conditioned to assume that judges have cognitive coherence, but they don’t seem to have it about TM law. As an intellectual enterprise, what do you do?

Lemley: in both JDI and Abitron, notwithstanding the move to naïve textualism across other areas of law and affecting TM in Romag, we do see some common law part: this is the purpose of TM law, and so if it’s within the purpose of TM law we will find that TM law applies and if it’s outside the purpose we won’t—that’s a bit of encouragement across the political spectrum that they know TM is a common law endeavor. How well do they do that? Citing both us and Janis/Dinwoodie could be a recognition that it’s a common law concept that gives opportunities for the courts to do the right thing, though so far they’re grabbing on to picayune details as Farley identifies.

What’s the alternative? Said 20 years ago that w/o TM use we’d spend 20 years recreating it w/other doctrines, and Rogers did a lot of that, but now it won’t, but we do have a revitalized doctrine of failure to function. Keyword ad cases: 9^th and 2d both said in the last year that keyword ad buys alone couldn’t ever infringe—a huge waste of time and money that we needed to continue to litigate and force courts to find other ways than use to kill them off, but courts have indeed found those ways. Maybe we can do that more expressly and confront how to define source-IDing use. Not a fan of symmetry b/t acquisition of rights is different from the issues on infringement, which are mostly about the vast expansion of infringement theory—so the doctrine of D’s use is largely directed to handling those expansions beyond the classic common law.

McKenna: What to do? Stop bringing cases to the SCt because it won’t go well.

There’s not a use of P’s TM requirement as such. You must be using something to identify your own goods/services and that thing that you are using causes confusion. This question infects Louboutin, MSCHF, and all of the post-JDI 9^th Circuit cases. They say that use in a title might be a TM use b/c it is allegedly a TM for the P. The fact that it’s possible for titles to get secondary meaning is why courts are saying they can’t do it on a motion to dismiss. This isn’t an isolated case: use in a title has been declared to be possibly a TM use; the only non-TM use the court found was in the content and the court said “it’s not TM use b/c it’s not in the title.” No post-JDI cases involving titles find non-TM uses.  

On textualism: interpretive methods are incoherent all the way around. Not attentive to fact that TM is a common law statute. Ps want to say they’re making a textualist argument for why the infringement standard includes everything in 43(a), but want to read out “use in commerce” b/c it’s elsewhere in the statute. But there’s no way to read “use in commerce” in any other way than use to identify source. The answer is always purposive—that definition in the statute wasn’t meant to apply to infringement. (2d Cir. in 1-800 Contacts.) But 43(a) was never meant to be an infringement standard at all. So you can’t have both!

Dinwoodie: 1988 changes what 43(a) was for, though.

RT: keyword cases: Highlights the judicial tendency to equivocate over what “use” is when assessing TM use. Fromer says, summarizing the description of the courts, that in keyword cases the user is visibly “using” the mark—borrowing a literary criticism, that’s not using, it’s just typing. If referential uses are not TM uses, then the user is not making a TM use. [Heymann: This is the use/mention distinction.]

Beebe’s question: what do we do in response to incoherence? My answer: Try to give lower courts structures they can use.

Burrell: It’s not better at other apex courts. Australian high court is interested in TM law, but doesn’t seem to understand the interrelationships. They don’t have a sense of how complicated this law is [Ramsey: see also “soft IP”]. What can we do? Pointing out that two principles or citations are in direct conflict can embarrass them and lead lower courts to limit their effects.

Silbey: we are overreading these SCt opinions generally—spending a lot of time trying to make sense of them. They cite to articles that conflict because they don’t think it’s complicated. Almost all of these cases except for Abitron are unanimous (even w/concurrences). They feel pretty sure about the outcomes—what TM is for, how damages should be awarded—don’t overread them when we engage in advocacy. Breyer’s Booking.com dissent; Brunetti was arguably 6-3; but the rest are unanimous. So what do the Justices care about? Bad faith. They think a lot about speech & personhood—TM as an extension of a person. They also think about property rights—do people deserve to control this? Unfortunately broad, nonstatutory values that makes the cases overdetermined. They don’t think of Rogers as their own and so they don’t want it. It came up through the practice area. Have to fit Rogers into these themes, and it won’t survive in the same way but it could survive—invoke First Amendment ideas.

Lemley: consider patent law. Court’s primary interest is to get the facts right in front of them right: the good party should win; only secondarily do they say what happens to the law. Opposite of what you’d want a high court to do, but that’s the pattern he saw in patent and seeing in TM now. The collateral consequences will not be great.

McGeveran: if “not invented here” dooms Rogers, then what we can do is provide structures/opportunities to dcts to do something inside the housing of what the SCt has given. What will resonate better with the SCt’s non-TM obsessions? Meanwhile you have more chances of persuading a dct that your arguments rhyme with the Court—don’t read it like a Talmudic text but part of a larger framework the Court has in mind.

Dogan: hopes Rogers isn’t dead, and majority is pretty deliberate about avoiding the question. Kagan’s opinion implicitly shows admiration for some speech-protective doctrine distinct from likely confusion. If lower courts interpret TM use so broadly to cover uses that Kagan clearly saw as non-uses, like use as title of work, we can point courts in the direction of the need for speech-protective doctrines in cases like Barbie Girl. More use of Sotomayor’s concurrence in JDI: on remand, that actually worked in JDI with respect to the infringement claim.

Grynberg: why did the keyword cases start to move in results? Was it arguments about competitive benefits? Or was it that judges became familiar with the practice and thought it was innocuous? He thinks it was the latter.

Similar w/Rogers: overgrowth of TM leads TM owners to start going after things that courts think can’t possibly be infringing, leading to creation of framework for pattern recognition. Then there is use of that framework a conflict w/the merchandising right, founded in free riding, creating reaction/JDI.  [crystals & mud] Need a story to explain why this is a speaker with a message; Kagan just didn’t see that in JDI but Sotomayor saw the risks to political speech.

Sheff: Jessica Litman said 25 years ago that what a mark means is not determinable by the specific actions of the person in front of us right now. He’s argued for “divided use” to resolve these situations.

If there’s anyone who cares less about TM than courts, it’s Congress—that’s why our statute is 80 years old with only occasional bouts of half-baked, targeted interference. Textualism arrogates power to the courts b/c the legislature is broken. But textualism presents itself as a theory of statutory interpretation that is supposed to discipline legislature/invite correction—our role is to do the work of embarrassing the higher court/demonstrating to lower court judges the consequences in a way that invites reconsideration later on.  

Ramsey: reasons for optimism: JDI’s focus on source identification as the point of TM law; JDI gives special consideration to parody; we can focus on the better language and help give courts & attorneys direction for more speech-protective TM law. Elster’s concerning language about goodwill might be limited to persons. To protect speech/freedom to operate, wants to discourage people from claiming TM rights in parodies or other expressive uses.

from Blogger http://tushnet.blogspot.com/2025/05/sixteenth-trademark-scholars-roundtable_2.html

University of Minnesota Law School, May 2-3, 2025

Graeme Dinwoodie

Why revisit use? (Reading
list for 2008 roundtable; session
1, session
2, session
2 part 2, session
3.) Creates methodological questions that are useful/worthy of exploring. 20
years may have led some of us to rethink our views. Defenses and validity doctrines
have developed; use for acquisition purposes is now very salient, especially if
you think that use is also important for a valid cause of action. 

Session 1: Trademark Use as a Precondition to Trademark rights?

Stacey Dogan: No overarching theory, 3 related observations.
(1) Several different dimensions of use; JDI focused attention on what it means
to make use as a mark; courts are referring to JDI in the acquisition context
as well as infringement, see Medical
Depot case which looked at JDI and its emphasis on source identification
for guidance. Work by Alex Roberts, Jeremy Sheff, Mark Lemley, Mark McKenna and
others has also looked at this question of acquisition—likely to see courts
revisiting this more often in the wake of JDI.

(2) History/ways in which courts have considered TM use in
eligibility context over time. Increased commodification/attempts to extract
value across multiple contexts in society, including commodification/exploitation
in creative industries but also attempts to squeeze value out of things like
terms used widely in the general vernacular. PTO/Courts have had to confront
these new kinds of TM claims—characters, titles, trade dress, memes, and other
features w/some intrinsic relationship to the value or character of the product
itself. Extricating source-indicating function of thing claimed as mark from
these other functions is tricky. Not sure that PTO/courts have arrived at very
satisfying solutions. Maybe there is no general way to approach these questions
and we have to do it case by case. TMEP has a long list of reasons for finding
that a claimed mark or feature doesn’t function as a mark, and that list
includes things like functionality in addition to ornamentality, titles of
single works, etc. But how to consider things like expression/competition/other
interests in this evaluation?

(3) Dogan/Silbey
claimed that titles of creative works should be presumptively viewed as non-TM
use, as we read Kagan’s opinion in JDI. There are decades of caselaw finding
titles protectable in some contexts, but we should still think about how to
think about relationship b/t titles and creative works in relationship to the
things claimed as TMs and the products w/which they are associated. Are titles
really the same thing as traditional brands? McCarthy seems to think so. But reasons
to resist this conclusion: whether they’re serving a source-indicating function
(or content-indicating function) but also what the costs of recognizing such
protection are (cf. Walmart). Are there places where PTO/courts take different
approaches? Titles is one place where that is true—in the courts, even titles to
individual works can be protected with secondary meaning, but not without it.
But PTO denies registration of individual titles, reasoning both that titles don’t
usually serve a source-indicating function and also based on the consequences
of TM registration for other people who might want to use similar words in
connection with their own expressive works.

General question: how should we think about the potential
source-indicating functions played by words or symbols in connection w/various
sorts of goods relative to other roles that they may be playing in the
underlying product or service in providing some of the value associated w/the
product or service, describing its characteristics, conveying an expressive
message? How do those functions relate to the push and pull of TM—why does the
law grant protection in order to avoid confusion/protect consumers? As opposed
to why we might want to resist extending rights in a particular context—competition,
speech, other values.

Jeremy Sheff: how do we know whether a putative mark fails
to function or is being used in a TM way? PTO assumes that certain types of
uses will not be perceived by consumers as source identifiers, and therefore
they fail to function, and therefore they aren’t being used by the applicant to
identify and distinguish the source of their goods, and therefore they are
unregistrable. That’s strange to determine whether applicant is using by
reference to what other people think. Does it all just collapse into consumer perception?
Are we really just asking about things that go into the likely confusion test?

One principle we know (how consumers react) used to
capture other concerns. Evidence in failure to function rejections tends not to
be surveys, but other information about how the mark is used on the product,
marketing, and so on. If those factors aren’t really about consumer perception,
why are they important? Competition, expression, but that’s still a big
question. [This seems like a Walmart issue: given the non-TM functions that
they serve, we should presume that consumers understand that usually
they’re fulfilling non-TM functions, because of the risks of error in favor of
registrability, and that’s why applicants lose when they don’t have surveys.]

Alex Roberts: has been teaching TM to music students. Use
as a mark in the context of artists’ names is super wonky; TMEP/PTO are
inconsistency. When do consumers view a stage name as a mark? What about an
album name? Really tough compared to use on tangible products. Creators of
visual works are treated differently by PTO—PTO said that use of artist’s name
(Neil Sedaka) on album was just descriptive, not TM use.

Medical Depot case: P’s use of mark was sporadic but
mark-like when it occurred. Use as mark/distinctiveness as inextricable: some
cases say that use in a TM way is required, and unrelatedly one needs
inherent/acquired distinctiveness. Her view: those two are impossible to
separate. Medical Depot: a suggestive mark is easier to show TM use for. Fewer
indicia of use as a mark required than if the term were descriptive.

But the punchline: the decision is completely conclusory about
whether the mark (MED AIRE for air mattresses) is suggestive or descriptive,
because it errs on the test—it uses the “reverse imagination” test, could you
figure out the goods just by looking at the mark, but that’s wrong—you need
to know both to apply the imagination test.

Does intent matter? Didn’t see much emphasis on intent in
previous cases—wanting something to be a mark doesn’t make it a mark, but that
doesn’t square with JDI which focuses on whether VIP intended/tried to use Bad
Spaniels as a mark and not on whether consumers perceived use as a mark. Can use
as a mark be proved by secondary meaning? Booking.com suggests yes. Connections
b/t use as a mark for protectability and the statutory fair use defenses. Use
in a TM way adds something more than mere use. Echoes of “Own Your Power” case
in Med Aire—not just font style but how many different ways/spaces are they
using the term?

Stylization and cutesy misspellings could be doing a lot
of work in signaling to consumers. Training consumers, as McKenna
& Lemley discuss, is also relevant.

Lemley: We don’t want people to own BLM just by putting it
on T-shirts. But that gets more complicated as we move to brands as freestanding
property. Resisted this move, but it is happening—but then we really need
limiting principles where we can’t rely on “does the consumer view this as an indication
of source”? We need to have a high entry barrier.

Jeanne Fromer: kept thinking about Dastar, which says that
“origin” means physical source. That should perhaps make it hard to protect
titles unless the person is creating the physical objects, for many of the same
reasons we’ve discussed. Is use as a mark about distinctiveness, or does distinctiveness
affect how easy or hard it is to find TM use?

Two categories of marks to bring in: (1) nonsense marks—Grace
McLaughlin’s great note and Fromer/McKenna
on problems/growing use of nonsense marks, b/c PTO just grants registrations
easily even though a nonsense mark is not performing TM functions in
traditional sense. [Maybe secondary meaning should be required!] Applicant clearly
wants to use it as a “trademark” in a formalistic way, but it’s not designed to
be remembered. (2) trend of collaborations. What do we do when something
indicates two sources? Is it something new? [In my view that should actually
undercut many affiliation confusion theories b/c that’s how people do collabs;
they don’t do it by, say, putting a red wax seal on a bottle of tequila.]

Robert Burrell: HP books are registered titles [though
that may have been b/c they were already a series when they were registered].
The reason we find TM use difficult at acquisition stage is b/c it doesn’t map
onto how consumers behave. Consumers say “I want the product that I’ve had
before” (or similar). We look for a series of things, but it may not be any one
thing, including the shop location, that communicates source.

Least bad outcome for titles: distinguish things that are
in the public domain: you can register something while it’s under © and
thereafter you can’t, which is what Australia does. Similar to patent: while it’s
under patent, shredded wheat functions as a reliable indicator of source, but
after patent expires anyone can make it so TM protection disappears with the
patent.  

Lisa Ramsey: BLM example—when applicant tried to register,
they put “Black Lives Matter” on hangtag and front of shirt—if you focus on
whether applicant has used TM space, they will claim rights more broadly. PTO’s
informational matter exclusion is applied even if something is in the TM spot,
and that is a good approach. Same with swear words—but Fed Cir recently heard arguments
in Brunetti’s attempted registration of FUCK and the gov’t did a very bad job
defending F2F/Fed Cir wasn’t sure where it came from in the statute. It’s a
normative approach: we don’t want to register certain kinds of subject matter
b/c it’s harmful to competition and expression. [This is not going to work very
well in the current statutory interpretation environment; I think that
currently, Walmart reasoning about error costs is the strongest defense of
requiring actual evidence of TM function.]

Barton Beebe: Hydraulic nature of TM system creates
difficulty—concepts are linked so that pushing on one invokes a whole bunch of
others. JDI/Abitron: Justices don’t seem to realize that TM law is hydraulically
linked. Can TM use be an autonomous concept? Thinks maybe not.

One variable to return to: dichotomy/binary b/t use by D to
indicate source versus use by D to indicate sponsorship or affiliation. Tushnet/Lemley
on Warhol/JDI: propose workable limit for Rogers to be for
affiliation/sponsorship/approval. Is this one place where the symmetry b/t use
and infringement breaks down? For plaintiffs, we’re generally not talking about
use for purposes of affiliation—but maybe collaborations change things?
[Registration may hide any difficulties here b/c in practice you wouldn’t
register the collab without a lot of doctrinal cruft.]

RT: [Relatedly to Lemley’s points: Because of change in
markets, we need to update Teflon surveys to include “neither a brand name nor
a generic name” and we need to start training people for secondary meaning (and
confusion) surveys just like they’re trained before taking a Teflon survey—having
a control doesn’t quite get the job done.]

registration plus a use requirement has actually forced the
PTO at least to think hard about TM function in ways we don’t always notice: I’m
going to talk about stylization. (Misspellings: I’m with the PTO that they don’t
count b/c Americans can’t spell and might not be fluent in the language.)

 Lee et al say: the
law withholds ab initio trademark protection from descriptive marks on the sole
basis of a word mark’s “inherent [i.e., semantic] meaning”—with
almost no consideration of the “way it is used” in a stylized
commercial context. Thomas R. Lee, Eric D. DeRosia & Glenn L. Christensen, An Empirical
and Consumer Psychology Analysis of Trademark Distinctiveness, 41 Ariz. St.
L.J. 1033 (2009).

Lee also says that the law is inconsistent in its
commitment to the notion that inherent distinctiveness turns on the semantic
meaning of lexical signs because the composite marks doctrine posits that the
non-lexical components of a composite mark may create a distinctive,
source-indicating impression on a consumer (even if the word itself is subject
to a disclaimer). But: There’s no inconsistency if you do a registration
focused analysis: that is, because the registration just claims what’s in it
(and thereby could be found in any configuration), you could say that a
composite mark can have a separate semantic meaning than any of its components.

Likewise, Lee criticizes what is allegedly “the law’s
refusal to entertain the possibility that those same word marks may be seen as
distinctive the moment they take on their full “trademark use” form.”
[again, if you start reasoning from registration this isn’t true—if there’s a
distinct commercial impression, a semantically descriptive term can be
inherently distinctive

And then the registration/disclaimer of the descriptive
term highlights the issue that you will then want a sharply limited scope of
rights: even if the stylized version is serving as a TM, someone else’s use of
a nonstylized version will not indicate TM function on that person’s product.
Confusion is thus unlikely (even if individualized factfinding might sometimes
indicate otherwise, the game isn’t worth the candle).

[Other thoughts:

Claims over consumer-driven nicknames are not really a
problem for a use requirement: if 43(a), then saying that Ps have “rights” in
nicknames is pretty much shorthand for saying that, despite lexical/other
differences, in practice the use of the nickname for competing products will be
likely to cause confusion/in practice the two marks are highly similar despite
what a stranger to the area would have thought. If 32, then our use regime
kicks in. (But analogous use might still require more explanation, though it
too must ultimately be followed by real use, like section 44 and ITUs, so maybe
that’s ok?)]

McKenna: note that stylization registrations are abused
massively on Amazon. [RT: And also in the UDRP/URS/Trademark Clearinghouse
domain name system, since the TM Clearinghouse extracts any word from a
registration even if the registration is stylized and then provides preemptive
rights in the domain name system to registrants.]

Courts dislike Dastar/don’t know how to apply it.
Almost no appellate applications of Dastar take seriously what Dastar actually
said.

There once was symmetry b/t validity and infringement:
sponsorship/affiliation was meant to track the related companies rule, but on
the infringement side it’s taken on way more meaning—courts have read
sponsorship/affiliation so broadly that “makes you think of TM owner” counts.
Dastar says that you can read “origin” to include “who stands behind this” and
that’s more aligned with the related companies rule. TM these days can obscure
source more than clarify it—many hotel brands are owned by the same
multinational with different names.

Mike Grynberg: how do we resist training consumers? Booking.com
makes it harder. Genericity is a doctrinal block even though it may reflect
consumer understanding, and courts are often quite reluctant to put screens in
place because of false negatives. Barrett does say in Elster that a screen is a
good idea. Reasonable consumer concept [non-empirical] is a screen that can be
used.

Laura Heymann: Use as related to non-word marks or
non-traditional marks. Use gets tricky w/word marks b/c of duality of words—same
lexical unit can sometimes function as a mark and sometimes not. For references
to persons: consider using limits from defamation cases to look for false
assertions of fact?

Stylization doomed Kelly-Brown in Own Your Power case: she
only had very limited rights. But that doesn’t completely deal w/consumer
perception issues. [Though if a consumer would only recognize something as a
mark if it was stylized/in the TM spot, there’s no reason to think that seeing
a use that wasn’t stylized/in the TM spot would trigger any confusion or even recollection
of the prior use. That is, context effects don’t just matter in establishing
rights—they matter in confusion analyses. I discussed this in my dilution piece
but it has broader application.]

from Blogger http://tushnet.blogspot.com/2025/05/sixteenth-trademark-scholars-roundtable.html