Rebecca Tushnet

Robert Burrell:
use in Commonwealth systems came from strict liability for double identity—once
that was extended to advertising, there are a whole lot of
nonconfusing/beneficial uses of marks in advertising. TM use was brought in as
a safety valve to allow comparative advertising. Since then TM use has
functioned as a safety valve for nominative and descriptive uses in the context
of a regime that is generally strict liability.

What is the US trying to achieve with use given that LOC is
central to your inquiry already? In Commonwealth it mitigates strict liability
w/no confusion requirement.

One potential answer: use as a mark in Commonwealth
countries was never primarily empirical. If Ds seemed good, the court could
find use not as a mark and say that any confusion was from unreasonable
consumers. Functions not merely as a safety valve to allow nonconfusing uses, but
also to allow courts to ignore unreasonable confusion. Why? If you advocate for
use, are you going to get a rule that allows you to ignore certain forms of
irrelevant/unreasonable confusion?

[If your system hates surveys, maybe you don’t need the same
set of rules]

Most tarnishing uses don’t involve TM use (Enjoy Cocaine on
a poster is not about the source of the poster). Once you’ve opened the door to
dilution, use as a mark isn’t a good line; you need something like the EU
multiple TM function idea.

A lot of Australia’s TM problems flow from the problem of divided
use Sheff identifies—the more work you ask “use” to do, the more doctrinal
incoherence will develop, especially when an apex court decides a question
about use and doesn’t understand the full implications. Case about Barefoot
Wines—Gallo didn’t actively exploit its mark in Australia, but a third party
sold Gallo’s Barefoot in Australia. Had Gallo used its mark? The court found
that conscious projection to Australia was not required for use.

What about the defendant who owns a TM in Singapore who
finds its stuff in Australia without consent? That’s use—so the Singaporean
company could be liable for TM infringement in Australia for conduct not under
its control.

Jessica Silbey: cultural analysis of TM use

Early 1900s cases about territoriality and limitations;
Prestonettes & Kellogg, Champion Spark Plug. Midcentury: new statute, when
TMs are still kind of quaint: Lanham Act’s message is that there’s a lot of
common law. Energizes federal judiciary and lawyers, and comes at a time of
postwar industrialization and boom. We get a lot of TM lawsuits from that and
bloat. Not just territories and resellers. We get the modern LOC test.

TM use moved from local naming to more national, even
global, uses both about source ID in traditional way but also the new commercial
culture—mixing of art and advertising, redefinition of art; new idea of what
TMs are for. Warhol’s Brillo boxes etc. P&G, Kraft, Chevron, RCA, GE. In
the background, we still have lots of lower court decisions like Abercrombie,
addressing this expansion in questions about distinctiveness and confusion. But
there are still unclarified assumptions about TM use—still about affixation but
becoming more attenuated.

1988/1995: new matter, including dilution and new statutory
defenses. SCt is a national narrator and tells stories about the nation. Inwood;
Park n’ Fly, SFAA, Two Pesos—more bloat. Qualitex: SCt gets interested in TM
law, which has been evolving in lower courts for decades w/o SCt.

Merchandising: property rights in gross. Heyday of 70s and 80s:
slashing corporate income taxes, perception of huge boom; the Me Generation/Yuppies;
obsession with financial success—Dynasty, Dallas, Wall Street/Gordon Gecko.

That means that TM is property, any use is valuable, and value
belongs to the owner—those ideas were all embraced.

The internet then came in and gave us keywords, rise of
initial interest confusion. More expansive, aesthetic, hybrid digital reality—ACPA.
Congress isn’t inert—DMCA and CTEA. SCt decides Walmart, Traffix, Victoria’s
Secret, and KP Permanent. 13 years later, after a couple of cases like Lexmark,
B&B, and Hana, then in 8 years we get 3 registration cases, JDI. They come
at a time when the 1A is serving corporate and religious interests mostly.
Congress’s ability to act is constrained both doctrinally and politically, and
cultural policy has become deeply regressive. Court: faux textualism/formalism;
major questions doctrine that curtails Congress’s power to create common law
statutes like the Lanham Act; don’t care about difficulties lower courts face
in implementation. JDI is about merchandising which the Court thinks is fine;
Abitron is about insular nationalism and about confining Congress’s powers/ the
only commerce that matter is in the US.

Conclusion: we can’t avoid the culture of propertizing, property
rights, art as advertising; we need to frame within those.

Bill McGeveran: Rogers was great, Rogers is dead, long live
Rogers. Rogers was good for pattern recognition in judges: there was an
understanding that speech interests needed to be protected, and Rogers was
lightweight/didn’t interfere w/core TM. That meant it overlapped w/TM use. Results
since JDI are not good. Lower courts may overrespond to SCt cases in the
beginning. JDI: pattern recognition was in conflict: two visible patterns: “speech”
v. this is a dog toy/real property rights/business interests are at stake. Now
Rogers has been mangled by the suggestion that you can’t screen before the LOC
test in this way. We might need to start from scratch and start from first
principles. Has criticized TM use as a useful tool, but its time has come. What
are the categories of patterns that will lead to pattern recognition as “of
course this is not what TM law is supposed to be for”? NFU; uses housed within communication
that aren’t offerings in marketplace; any confusion about sponsorship would be
mild/outweighed by free expression concerns. We have to think about the “confusion
doesn’t matter” v. “confusion is inherently not happening” models and he reluctantly
endorses the latter. Perfect is the enemy of the good and we still have NFU. If
they say, this is a dog toy, this is not what Rogers is about, they should also
be saying: this is a movie, this is not what TM is about.

Fromer: Business forms affect how we see TM use. Naked
licensing doctrine affects whether businesses try to control references/use by
affiliates. Amazon has also made big changes in how TM works. Do we want that
to become conventional the way merchandising has done? Now that we live on our
phones, limited real estate may improve the case for NFU of logos for actual communication.
[I’m thinking of the finding in the Apple
injunction case that requiring plain text instead of buttons deterred
people from using the “leave Apple” option, and Apple knew it.]

McKenna: recognize that these defense-win cases are littered
with expressions of incredulity about whether there could be confusion—how do
we get court to honor its intuition that confusion is unlikely when the digits
of LOC seem to line up in favor of confusion? Refocusing on specific factors
and theories of confusion. [And reject bad surveys!]

Christine Farley: JDI doesn’t hold that there’s no test
before the test—it holds there’s a test [use] before the test [Rogers] before
the test [LOC]. Would it be better to start from scratch?

How to read JDI? Don’t overread it. Court could be read to
saying that there is a contained space, a heartland, for TM—could also see Tam
and Brunetti that way. But they don’t give us any means for containing TM, only
say there’s a heartland. So: consider Dewberry, the most recent SCt TM case.
Everyone thought that the result would be the result—you can’t disgorge profits
from an unnamed defendant, and the Court didn’t actually say anything else! But
the oral argument (and hints in the decision) suggest that there is trouble on
the ground and we want TM law to work. If Ds are doing infringement schemes
where you can’t figure out where the money is, we want some solution. So we
need to work on the ground to find principles about what’s inherently not confusing—Alito
in JDI oral argument. “In TM law, context is king”—when can we be categorical
v. insist these are deeply factual questions? Maybe in distinguishing b/t the
heartland/bete noir and the periphery?

Grynberg: there are dangers to abandoning “sometimes we don’t
care about confusion”—if this imperial Court is ever convinced to latch onto an
argument, they can make it the law. SCt has never addressed Article III standing
for non-core TM theories. It has never addressed issues in Radiance Foundation v.
NAACP or noncommercial use more broadly; it has never squarely addressed the
LOC test and whether it is consistent w/history and tradition. It’s a separate
question whether they can/should be convinced these are worth doing.

Beebe: add to Silbey the effects of great wealth
concentration, including on famous brands.

Can we tell the story of UK TM law in the same way as Silbey
did? Israeli/Palestinian TM law?

Rogers was too undisciplined b/c any use can be expressive.

RT: No! Rogers was never about “expressive” uses though
courts often misdescribed it that way. It was/is about noncommercial speech.

Lemley: TM moved from sitting outside the 1A b/c TM owners
didn’t sue people for using existing products in movies or video games or using
TM names in books. But a bunch of insane theories of TM law were in fact
brought and sometimes succeeded. Can Rogers be abused? Sure, maybe. We saw some
efforts to use it in challenging circumstances. But the growth of Rogers was
not creep of 1A doctrine reaching out to existing TM doctrines that were
totally settled; it was the opposite—reflected and limited growth of expansive
theories of TM law that were newly articulated. If it is in fact dead, which is
unclear, or wounded, which is, then we need some other doctrine to deal with
these problems.

McKenna: in almost every application of Rogers it was
applied uncontroversially: movies, TV shows, artworks. No reason to throw out a
doctrine appropriate in 95% of its applications. Hard cases shouldn’t lead us
to junk the whole thing. The problem was the formulation “expressive work”
which is incoherent. The question should always have been are you selling the
speech v. are you using the speech to sell something else? That could have made
JDI a hard boundary case but that wouldn’t undermine the existence of the rule.

INTA suggested: keep Rogers but don’t apply it to “ordinary commercial
products.” But that doesn’t work. Isn’t a video game an ordinary commercial
product? But the Court could have said that the Q was whether what you were selling
was speech. That could have solved JDI or it could have been a hard question,
but the fact that every legal rule creates edge cases doesn’t mean that the
rule is bad.

Farley: Silbey’s account reminded her of Schechter’s theory
that societal change was what justified dilution.

Robert Burrell: pragmatically, we end up w/ a less dreadful
TM system with doctrines that provide a safety valve but also don’t have too
many false negatives (as the court sees it).

Heymann: Add in Citizens United to this account. It’s not
just what it says but the folklore around it—corporations are people (true for
a long time); corporations get to be super-people. Consumer drops out of TM
fights as corporate-v-corporate.

from Blogger http://tushnet.blogspot.com/2025/05/sixteenth-trademark-scholars-roundtable_10.html

Midpoint discussant: Laura Heymann

Is the goal consistency? Is the goal limiting principles
that can end a case early? Is use the right tool? Is it a proxy? To what extent
should we accept the rest of the landscape as fixed, like the merchandising
right and students’ intuitive sense that there’s a property right involved?

Context: how much does context matter to the question of
use? Should we consider other similar activity by the defendant (VIP’s other
products, for example) to figure out whether any particular thing is a “use”?
Should we consider other words/symbols on the product to figure out what is “use”
versus “nonuse”? Can we test/survey for this?

Context also comes up in the question of whether booking.com
is a mark or an address—same lexical unit can serve both as a mark and other
things (the use/mention distinction analogy). Descriptive fair use is use, but
fair, but what about non-use? Are our main concerns about expressive uses like
titles, or technological uses?

JDI says we care about confusion or apply a screen depending
on what the defendant is doing—a D making a TM use leads us to care more about
confusion.

Jessica Litman: Lemley proposed a deal with the devil: a
property merchandising right for a subset of marks; in return we’ll get old TM
law back for everything else. Ramsey hoped that failure to function would save
us. Some of the work TM use does overlaps with validity doctrines. PTO likes
the F2F tool but courts may or may not get on board with it.

Is part of the problem that non-TM experts don’t understand
the principle that TMs are supposed to be separate from the product whose
source they identify—they’re supposed to be different things! That’s what
symbol/sign relationships are! TM claimants want property rights in the thing
they sell, but could we disseminate more widely the principle of the
Restatement of the Law of Unfair Competition that TM is for that connection
& when that connection is absent b/c the TM and the product are unified,
there’s no TM claim—that could help courts pick the good guy in the room when
deciding cases. TM law is not a good fit for the merchandising right. It’s not
supposed to protect intrinsic value. Merchandising right shouldn’t exist—© is
sufficient in many cases, and people should be able to signal their fandom for
the U of Penn through both licensed and unlicensed merchandise.

Lemley: use of a mark v. use of the identical lexical
content of the mark—is that a useful distinction? Why does it help us? All
these use arguments are about what purposes the use is serving, and he wants to
know about non-word marks in this system. One could use a logo in a non-TM sense,
but is there a parallel to the analysis of “identical lexical content”? What
about a rotten apple logo to make a comment on Apple?

Heymann: Keyword sales are not about meaning but about
matching.

Roberts: lawsuits against UberEats and similar—when they go
to UberEats users see logos; nonpartner restaurants object to use of names and
logos. Logos seem worse.

Lemley: but see negative matching which does try to target when
users are searching using the TM specifically. FTC’s Business Impersonation
rule says it’s deceptive to use

RT: Responding to Heymann’s argument that JDI distinguishes
b/t situations where we care about confusion & says that Rogers means we
don’t care when the D is making an entirely non-TM use in noncommercial speech.
You can also, and Rogers itself did, make an empirical claim about the
likelihood of deception for creating strong rules justified by error and
litigation costs: Dastar, Walmart. That also helps strengthen the Second
Circuit’s principle that in non-Rogers cases asserted against noncommercial
speech (that is, title v title), First Amendment concerns should lead to a more
careful LOC analysis b/c false positives are bad there too—they’re just even
worse when the P lacks its own expressive work, justifying a categorical
rule like Dastar or Walmart. That’s not confusion-indifferent, it’s
confusion-risk-balancing. This is an argument we should keep making.

To Lemley’s Q: Yes, there are NFU image cases. Mattel v.
Walking Mountain is NFU of Barbie’s trade dress. Phone
reseller case: logos are NFU to identify which phones the reseller accepts.
[Kozinski, naming NFU, characterizes it as non-TM use.]

Fromer: can functionality doctrine help us think through
this? If something is being used for its intrinsic value, it’s not TM use.

Lemley: this is where VIP’s language can be abused. Walking
Mountain: if Mattel says the art advertises itself, then the presence of Barbie
advertises/helps sell the art [though I’m not sure that I’d call that a
source-identifying function—it seems to be one of the other functions the
Europeans talk about].

McKenna: biggest mischaracterization of Rogers by JDI is
that it involved an entirely non-TM use with no TM function; Rogers itself was
very clear that the title served a “hybrid” function and still needed
protection.

LOC test itself: survey procedure for Eveready is built on
concerns for a reading test—you ask people “who makes this” and if they answer “Eveready”
they could just be reading. You have to ask “what other products does this
company make?” Otherwise a survey would find confusion between the multiple Deltas.
Which is to say: Using the same word isn’t the same thing as using the same mark,
which brings along with it indications of source. The LOC test is asking
whether it’s a use of the P’s mark or just the same word. Where the factors break
down is where there’s no dispute that the use is referential. Eveready is the
opposite of referential use. Merchandising cases invert the argument, so
forcing them into LOC multifactor tests doesn’t work well. You need something like
NFU or Rogers because the factors are more likely to be wrong.

Stephen Baird: NFU—can you use logos of companies to
indicate that you can buy their shares? TM attorneys would be suspicious of the
“too much” problem. New Kids footnote: a soft drink competitor can compare to
Coke but can’t use Coke’s distinctive lettering, citing a VW case; cf.
copyright fair use. That footnote is dicta within dicta and has been overread. Most
TM lawyers adopt the view that you can never use someone else’s logo; one of
the things that weighs against that was “strength in numbers.” In a car wax ad
featuring only a Porsche, Porsche won. But when there were multiple ads
w/multiple different luxury vehicles, Porsche didn’t sue—when there’s half a dozen
different brands in the ad, it’s hard to say that any one of those is
sponsoring/endorsing. [That logic also helps explain the Xfinity case above; I
also think about the “collage” reasoning in ETW v. Jireh and Hart v. EA, albeit
that’s ROP analysis.]

Burrell: as a person from a registration system, the idea of
being able to use the thing that is on the register blows his mind.

McGeveran: “too much” is one of the NFU factors that
attempts to be a proxy for real confusion, and it is imperfect.

Dinwoodie: Likes the 3d Circuit version of NFU where you
have to reflect the true relationship—it’s a matter of objective truth and that’s
an easier thing to evaluate [query whether the 7^th Circuit case
about attributing responsibility to architects calls that into doubt].

McKenna pointed out that the 3d Circuit LendingTree case does
have a tiny bit of logo use (a photo of a woman with a Coldwell Banker sign
partially visible) which the 3d Circuit doesn’t say anything special about
& just remands.

Sheff: can we identify where confusion creeps in to the
alternative doctrines—functionality, we tolerate confusion; descriptive fair
use, we tolerate some confusion. Implicitly the amount of confusion will
sometimes be enough to disqualify the defense. With descriptive fair use, the
consideration of confusion creeps back in as “use as a mark”—w/enough
confusion, the court will find use as a mark. Where will confusion concerns
creep in to various defenses? [I don’t think this is how functionality works (aesthetic
functionality maybe); and the KP Permanent courts, especially on remand, also
think that amount of confusion matters on its own as well as creeping back into
use as a mark.]

Lemley: SCt recognizes that defenses aren’t very helpful if
confusion defeats them—two ways to do it. KP Permanent remand: hike the
standard so 15% isn’t enough. But other defenses like NFU/Rogers can say that
confusion just doesn’t matter. Empire’s use of “Empire” for a music
company might be confusing to a number of people.

[I would say again that the other way to see it is that in
NFU/Rogers cases an individualized determination of confusion just doesn’t
matter b/c it’s so likely to be wrong—b/c the only direct evidence, surveys or
other reports from consumers who have misconceptions about the legal
requirements for parody/commentary is not reliable.]

McGeveran: in an environment of second-rate textualism,
calling Rogers a pre-screen as VIP does (and Rogers did not) creates the risk
that courts will reject it more than explaining it as a set of rules for more
reliably, less false positively determining LOC.

Baird: Declaratory judgment under Rule 57 is equitable—maybe
a way to get the judge to focus on invalidity early on?

Lemley: keeping in mind you can’t get a DJ on something that
would have to go to a jury.

McKenna: one way to see the defenses is confining LOC to the
core—source/passing off. The confusion has to be in the heartland of TM b/c of
these other competing interests—descriptive FU, NFU, and Rogers all have these
limits. It’s not that there’s no TM right at all, it’s that it’s not triggered
without D pretending to be the P. [I’ve
characterized this as D speaking as P for noncommercial speech.]

Dinwoodie: EU’s central function doctrine, that D’s use has
to interfere with the central function of a TM, is operating as what we might
think of as a TM use requirement. The problem is that they then say confusion =
interference w/central function. Once you get into the morass of non-central
functions, it gets worse.

from Blogger http://tushnet.blogspot.com/2025/05/sixteenth-trademark-scholars-roundtable_3.html

Introduction: Mark Lemley:

What VIP actually says: Rogers test insulates from liability
when use is only non-source identifying. Cardinal sin is to undermine
source-indicating functioning: LV modification of mark in suitcase market
implicates the core concerns of TM law. That is a conception of the core of TM
law that Lemley thinks is both traditional and right, and also way narrower
than what TM law does now, more of a 1960s vision.

There are two different things we call “TM” that are causing
difficulties. Classical source confusion: double identity/LOC multifactor test
covering similar but not identical marks/goods. That starts to fall apart b/c
of the rise of brands, as opposed to TM—the TM is valuable in and of itself.
People don’t spend so much on Birkins just b/c of quality—it’s the value of the
logo in and of itself. This is real; but we’ve taken it seriously by trying to
stretch/mutilate TM law designed for source. We include merchandising, which
could be done by a property right, but we don’t admit that, and instead stuff
it into LOC by stretching confusion to any sort of connection/affiliation, not
considering harm, and stretching the individual digits of confusion.
Counterfeiting: post-sale confusion to ignore the fact that no one might be
confused at purchase. These built-in elasticities then have lots of other
consequences—once we’ve established affiliation confusion w/broad/amorphous
tests for confusion, it becomes hard to say that anything is not confusing as a
matter of law. Doctrines developed to protect “apex” brands extend everywhere. Pro
basketball team that decided to start all games at 7:11 pm—that was a co-branding
relationship. If someone else starts all games at 7:11 pm, is that confusing? What
if you see a can of Coke in a movie? 30 years ago no student thought it meant
anything, now 75-80% of students think there was product placement. Since we
don’t require harm, that’s it.

So, what does Article III standing look like? Federal law
might actually require more as a constitutional matter. We might want limiting
doctrines to say that even if you have a property right, it’s not a right to
prevent people from writing/talking about your TM/engaging in comparative
advertising/commenting on your TM. IP has traditionally gotten a free pass in
1A law b/c we’ve viewed it as bound up in the classic justification for IP; if
the IP we have now is not linked to traditional forms of IP, then that should
be revisited. Elster is interesting in that regard.

We could rethink the role of confusion—if the model is
property, then consumer confusion isn’t necessarily important. We wouldn’t
necessarily ask about whether people think there’s a relationship between two
entities but only what the boundaries of the right are. A property right could
allow us to recognize that consumers will detect even smallish differences b/t
famous marks and variants. We could articulate right to repair, reuse, resell,
carry—giving purchase for TM use doctrine to explain what’s in the property right.

Barton Beebe

Providing structures: one proposal is formalism; another is pattern
recognition for judges; but those two might be in tension/the second may be
harder to reduce to rules. Is TM law becoming post-theory, w/courts just trying
to make sure the “right” entity in front of them wins? Is use as a mark a way
of doing that?

Questions about relationship b/t analogous use and use as a
mark; abandonment—if more & more conduct qualifies as use as a mark, won’t
that allow Ps to point to D-side use cases and say “I’m doing at least that
much!”

If we should have training for other forms of survey evidence,
what would a survey look like that surveys for use as a mark? How would that
differ from LOC, distinctiveness surveys? Goes to whether we’re dealing with an
autonomous analytical contribution or something else. What about when the D
presents evidence that it’s no longer using something as a mark—does it affect
remedies?

What about disclaimers? Would “click on this to acknowledge
that this is not use as a mark/use as a designation of source” help?

Lisa Ramsey

McCarthy and others say TM use should be taken into account
in LOC; she thinks that TM use should be defined narrowly, as in JDI—source-identifying
uses. Word “primary” is worrisome though b/c could let affiliation creep in. We
should focus on false statements about licensing, affiliation, etc. not
implications. Naked licensing: we need some symmetry w/rules about
abandonment/enforcement. Only find TM use if it’s ID’ing source or
communicating that TM owner is responsible for quality—not just that they’ve
given permission.

A lot of the time secondary meaning can overcome a failure
to function refusal, but sometimes it can’t—“Drive Safely” for Volvo—that just
can’t be a TM. Concerned about rules that require us to have surveys, b/c then only
big companies can get rights/defend their uses as TM uses (regardless of
whether they should) and small companies can’t (ditto). Better: focus on
reasonable consumer. Shouldn’t have a system that requires consumer surveys.
[Let me introduce you to 43(a)(1)(B) implied falsity cases!]

Grynberg: Acquired distinctiveness allows us to distinguish
Nike from Lettuce Turnip the Beet—looking for where the value was created. If
we’re worried about expressive uses, we can ramp up the acquired
distinctiveness standard. LTTB and Nike are on opposite ends of the spectrum;
we can discuss where to put 100% that Bitch, but courts do want to give rights
to Nike and not to LTTB so we should talk about how to create the doctrinal
framework.

Students surveyed before teaching TM: Should owner of McD’s
mark be able to stop unauthorized use of mark on front of shirt (not on tag)—every
year, at least 90% of students say yes. Tries to teach them the reasons why
not, but only moves a couple of students a year. We have to accept that judges
think this way. When asked: should McD’s control whether a person can set a
fictional movie in a McD’s restaurant? Outset of class: students think that McD’s
should be able to do so; their normative beliefs change after learning
TM law.

Dinwoodie: 1A avoidance doctrine is a useful way to connect
the Court with the relevant concerns for Rogers. It will be harder to convince
the Court that the Lanham Act is a common-law delegation statute, but lower
courts are more open to that.

Lemley: JDI Dct got the message and threw out the survey as not
weighty enough.

Dinwoodie: yes, it matters that this was association confusion
(at least it matters if we tell the story that this was an association confusion
case).

McKenna: TM as exception to free competition is the historical
conception, but that’s no longer the view of “brand owners” and judges. Massive
expansion of role of large law firms is also part of the story—lawyers involved
in writing Lanham Act were experts deeply invested in the TM system. Now though
the big players exist to make the big firms richer and more powerful, and deep
expertise in the area of law is less important—what the big firms have nailed
is the idea of ownership of these marks.

Fromer: Proxies are good b/c they preserve ground for
normative values; better than always going directly to consumer perception.
Consumer perceptions can be off—consumers might think that source-indicating
includes references. Or they might be guided by seeing marks blurred out on TV,
believing that permission is necessary to reference marks (goodbye first
sale!). We need ways to measure what consumer perceptions stem from, but
normative proxies might be better and easier to identify.

Litman: the problem is not that there’s no definition of use
in the statute; use in commerce is all over the statute, but rather that it’s
narrow in ways people don’t like—affixation to a product for goods is required
for infringing use.  And people want to
stretch it. [You could use 43(a) “false representation of fact” for many situations
and say it wasn’t a “mark,” and the affixation requirement is only for “marks.”
I’m not sure how many allegedly infringing uses aren’t really affixed, but it
is weird to have that difference b/t goods and services for infringement
and not just for acquisition of rights.]

Lemley: elaborates on concept of “apex” brands, which would
not be the same thing as fame for dilution. Instead, they’d be the brands for
which affixing the TM on something makes it more valuable to people, where the
brand itself is what people are seeking—you need sufficient reputation, but
Coach and Texas A&M would qualify even though not famous.

Farley: not all “fame” means things are really good source
identifiers—they have secondary meaning.

Burrell: Common law lawyers find it really hard to deal with
systems that don’t have precedent—reacting to European high courts as if they
were binding in other cases even though the definition of distinctiveness keeps
changing at that level, whereas Poland and Germany don’t have that problem.

McKenna: is the SCt still a common law court? And how will
we figure that out?

In TM, priority disputes are about the amount of use, not
the nature of use—it’s about how much latitude you give people to have breaks
in use, things that aren’t technically TM use but might create consumer understanding—but
those things are bound up in the fact that analogous use cases are about which
party is going to own the mark and it will be one of them, not neither of them.

from Blogger http://tushnet.blogspot.com/2025/05/sixteenth-trademark-scholars-roundtable_70.html

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