Introduction: Robert
Burrell
IP Australia exerts
extraordinary control over legislative agenda; if you can persuade IP Au. that something
needs to change, then it can change quite quickly. But the flipside is that it’s
seen in light of what the Office needs to worry about. There have been problems
with defenses; the Office doesn’t have to worry about infringement, so nothing
changes. But to deal with different holidays in different states, emergency
legislation was passed within weeks so the Office would know how to count
deadlines.
Volume of decisions
by hearing officers: registrability decisions have first mover advantage. They
ought to be able to exert significant control over case law: courts should be slow
to depart from existing practice.
Limited oversight:
fed court worried about undermining confidence in specialized tribunals.
Office can also
react if not happy w/court decisions. What matters is what the TMEP says the
court said, which isn’t always the same as what the court said; sometimes says “the
court can’t have meant that.”
IP Australia also
regulates patent & TM attorneys through professional standards board
domination.
Academic research:
you have to demonstrate you’re bringing in grants; a great way to increase the
chance of that is an industry partner; the best funded, most active one of
those in TM is IP Australia, so that controls the focus of research. Recently
appointed first in-house economist; has now metastasized. IP Austl. doesn’t
know what to do with all of its money (it’s self-funding), so we have the
Wallace & Grommit World IP Exhibition, with Grommit chasing off copycats.
Most important
countervailing factor: competence. Leading case on distinctiveness, where
Australian High Court lowered the distinctiveness bar—until it reached the high
court, it was being litigated by a construction partner. In fairness to the
high court, none of the evidence you’d have expected to have in about the
importance of “Italian” when you are selling coffee was before the court, so it’s
not as surprising they did something done. So in litigation, no one says “the
Office has done this 20 times before.”
Mark Lemley
Agencies in TM law: PTO
is sort of a black box b/c ignored TM so long on the policy side. It would never
occur to anyone to put a TM person at the head of the PTO; it’s a tiny
percentage of their policy work. The good news is that there is an opportunity
to do policy work not tainted by existing capture. If and when that changes,
INTA will show up. A broader/systemic problem is the problem of scope: we see
this in patent side when Office tries to intervene. The business of the PTO is
granting patents/TM. They have a lot of experience w/distinctiveness and
functionality, as well as failure to function. But they have virtually no
experience, except in TTAB, with other side of the equation, remedies, 1A
limitations, etc. When they bump up against those in cases like Tam they do a
lot of running in place w/o useful guidance. Even if you could navigate around
capture, the scope one is harder b/c it’s systemic; you can’t give them deep
knowledge on the infringement side. One of the risks of looking at only one
side is that you can’t actually grant a “narrow” registration.
TTAB is better
suited, b/c at least get microcosm of LOC cases b/c of competing TM claimants.
Though they aren’t in the same position to do agency rulemaking and also suffer
from Fed Circuit gatekeeping, which has its own rule for LOC—twenty other
factors that no other circuit pays attention to; the Fed Cir refuses to follow
SCOTUS on functionality while other circuits comply. It’s a tough process to
get SCOTUS to fix.
And of course,
agency deference is going away this year. Benefit of being able to point to
those rules seems much less.
Two other
decisionmakers in practice making lots more decisions: The UDRP panels in
cybersquatting. There were a lot of benefits: quick, cheap, but also out of
control. Could learn to facilitate simple cases more cheaply; most people who
have legit defenses can’t afford to assert them in court. A system that gave an
opportunity to do that outside the normal court system might have some
benefits, but UDRP offers cautionary tale about structuring that. Who gets to
decide where cases go is important.
Fromer/McKenna paper
on Amazon’s TM system: that’s not a positive story; they identify a number of
problems. But consider potential positives: Fromer/McKenna show that, b/c you
need a registered mark to participate in the system, there are a lot more
people registering marks than they used to be, especially small businesses. This
has risks/problems of clutter and depletion, but it doesn’t have to be a
problem b/c you’ve got to have the same mark—except that we don’t look at
images, which is a huge problem—but Amazon only cares about identical marks. Thus,
registering
nonsense words. They function for the Amazon system but not in the minds of
consumers. That can have problems, but a whole bunch of marks that are
extraordinarily narrow/cast no shadow and are only going to be applied against
identical copying doesn’t necessarily create a terrible system, especially
under conditions of congestion. Replacing human mnemonics with a system that
uniquely identifies a good & where it’s from & can connect it to rankings
might be good! But caveat that it’s not clear that Amazon has that system. We
might see a separation of TM function of TMs and the brand loyalty function of
handbags. We’ve been struggling w/the growth of the brand in TM context,
distorting source identification function; Amazon could help us break that
linkage.
Jeremy Sheff
2 years of expungement:
what’s been happening? Director’s initiated 33 expungements; 8 proceeded to
final disposition of expungement (1 partial, 7 full). 771 petitions for
expungements; only 122 have gotten to institution stage which involves an
Office Action. 74 have had an outcome: 32 partial cancellation, 42 full
cancellation. In 80 cases Office decides not to go forward for insufficient
evidence of expungement, though they then proceed with their own action
including evidence dug up by Examiner. So PTO may be cleaning up after
petitioners.
Filing bases for
director-initiated: 15 44(e), 14 1(a), 4 66(a). Non-director: 381 1(a), 233
66(a), 149 44(e).
16b reexamination of
use: 1134 director-initiated, 954 third-party initiated. 304 director-initiated
proceeded to full cancellation, 4 partial. (Question to explore: is the large
number of these connected to post-registration audit?) Non-director initiated,
92 were not instituted, 140 instituted; 19 partial cancellation and 57 full
cancellation.
With three million
active registrations, we might be trying to empty the ocean with a teaspoon.
Post-registration
audit percentages have very different numbers; they choose about 5000
registrations/year and about half end up deleting goods/services. So a random
pull has a 50% chance of finding lack of use on something. For 44(e) and 66(a),
about 2/3 of those audited delete goods/services, whereas it’s 45% for 1(a). That’s
of registrations w/a response. Total cancellations (3883 of 29022 audited) may
be for nonresponse.
What to make of
this? Shoveling sand against the tide, b/c we have ¾ million-1 million new
applications/year. It’s not just the ocean, but the iceberg melting into the
ocean, which means that bad actors flooding the system w/new applications to
gain advantage in private systems, we’re dealing with that process with a
bespoke, artisanal examination process.
If we’re running out
of TMs, that’s a fixed stock that could go away. The examiner cohort is a flow
resource, not a stock; they can get congested. We could increase the price!
Raise registration and renewal fees; make it more difficult to get a
registration for Amazon, which might lower the burden on the system.
In response to
question: we don’t charge by number of goods listed in a class, only by class,
but listing more goods does increase the chance of auditing.
Nobody who’s been
audited would have selected goods/services on basis of concern over auditing
(in response to Burrell’s question about whether that increases the incentives
to use broader generic terms to describe goods/services).
Fighting a forest
fire with a water pistol won’t work.
Dinwoodie: could be
useful if actually internalized—if it happens to repeat filers. Could also add
penalties. [There are costs for deleting goods, but they’re small fees.] Could make
a penalty fee.
Burrell: the problem
is that it runs against the story “you’ll hurt SMEs!” Self-filer makes
mistakes, poor self-filer.
Dinwoodie: could you
do it more granularly?
Burrell: not sure
that’s possible to avoid the innocent SME.
RT: Carol Rose was
right all along. Property registries are themselves a common that can be
overused. And her insights in that article might suggest something about what
comes next, after the TMA’s tiny tweak that clearly won’t be enough.
Expertise issue—FTC
just issued a rule on impersonation; only heard from INTA and the like, and
apparently doesn’t know anything about TM doctrines or how far INTA thinks “impersonation”
extends. Calling scholars to submit comments as FTC considers supplemental
notice of proposed rulemaking: whether to impose “means and
instrumentalities” liability on third parties like OpenAI and whether to extend
its new rules to pretending to be an individual, whether a real person or a
completely made up one—that is, the FTC might make it an unfair trade
practice to use an alias.
URS as extension of
UDRP: faster, a little cheaper, more out of control.
Fromer: definitely
true that TM is swamped by patent at PTO—hard to get attention on TM issues,
and internally it’s created a very sleepy culture in the TM office. You might
get a dynamo like the people who self-started the audit program, and more of
that would be great, but it doesn’t emerge very often. Circular: the reason
patent swamps TM is patent brings in more money, so there’s a very rational
explanation. But it doesn’t have to be that way. It would be great for the PTO
to charge Coca-Cola more than a few hundred dollars to renew. Money brings
attention.
FTC is a place that
could do more TM and might be interested [they already have opinions on ©] and
need education on non-patent IP. TM examiners used to be specialized b/c it
didn’t seem fair that some units were clearing applications faster b/c of the
different demands of the different areas; that would be hard to undo, but
technical devices really are different from beverages. Think about
reinstituting specialization.
Amazon [like the
Trademark Clearinghouse for new gTLDs] does not distinguish in the kinds of
goods for which a mark is registered, so you can use your registration far more
expansively than the PTO designed it.
Ramsey: one
suggestion is to require a specimen of use for each listed good, not just one
good in each class. Also, PTO should bring audit results to Congress’s
attention for further action.
Treat classes commonly
used for expressive uses differently—clothing, mugs versus technical equipment.
Lemley: suggests
maybe the existence of the opposition process changes things. Someone is
immediately looking at your work with a critical eye—that never happens with a
patent. But doesn’t know what examiners’ involvement with that is.
Dinwoodie: intensive
review for productivity on the TM side.
Farley: past
practice was collaborative, knowledge sharing. Remote work has changed that.
Silbey: the
incentives are bad: they’re supposed to issue TMs.
Lemley: system is
set up to push you in a particular direction.
Silbey: what if the
expectation was that some number of applicants should not get TMs?
Sheff: there’s other
stuff we haven’t talked about that are interventions: Domestic residence
requirement has done a lot of work. 150 cases in which Office identified people
who filed 100 applications/week and issued order to show cause and ultimately
sanctioned by forbidding them from filing more; resulted in 19,000 applications
from those applicants. TMA seems to have led to a decrease of 100,000/year.
Burrell: If we were
serious about this, we would have to think about automation/scale. Austl. doesn’t
even revoke TMs when a company is deregistered—why not do more information
sharing? So that if the mark were to be transferred as an asset, some work would
have to be done.
Sheff: linking
systems costs a lot!
Burrell: That’s what
increased fees are for.
Silbey: expertise
can be about narrowing a claim rather than not issuing a TM at all.
Dinwoodie: that’s already
a distinctive feature of the US system, which does it more than anyone else.
Burrell: US
examiners are better than anyone else in the world at narrowing nonsense, even
if that’s a low bar.
Silbey: you need
expertise to do it really well, though. And it’s harder if you have less time
per application.
Study showed that if
there’s a 6 month decision rule, decisions issued in the last 5 days of that
period are more likely to be overturned on appeal.
McGeveran: narrowing
someone, or rejecting them, isn’t as fatal here as it is in other
jurisdictions.
Mid-Point
Discussants: Jake Linford
If registration doesn’t
matter to TM pathologies, then fixing examination won’t matter. There’s some
evidence of heterogeneity among examiners. Hydraulic pressure: Tam & Brunetti
put pressure on TM office; they don’t want to grant disparaging/scandalous—failure
to function steps in. Not clear whether that was top down or bottom up
response, but examiners can find ways to deal w/at least some pressure, and
TTAB is willing to support this exercise of discretion. Brunetti doesn’t get
FUCK registered on f2f grounds. Student note criticizing f2f as
standardless/needs concretization—make it more like aesthetic functionality and
double down on competition. But do examiners think through what we would call
speech-related concerns? You could say f2f has or includes speech concerns.
Though you do see PTO explicitly invoking speech concerns in defense of its
rule in Elster.
You could increase
the cost of renewal over time, as Posner suggested for ©, but we might not want
that for policy reasons. You could increase fees, but that might exacerbate the
problem of seeing applicants as the customers.
Fraud on the PTO as
an option? The Fed Cir cracked down on that; we could go back to that.
INTA was concerned
that TTAB wasn’t publishing enough of its opinions; would that give better
guidance? Only 6% of TTAB opinions are published; 40% of signed opinions of
courts of appeals. [It would only
increase the scatter plot.]
We complain about
costs of TM litigation but don’t like the Copyright Small Claims board; INTA
represents Ps and Ds but only very sophisticated ones, united in their
sophistication; could we think about a small dispute procedure? [Isn’t that one
view of registration?]
Stacey Dogan
Where to go?
Structural competence versus personnel-based competence. Appellate courts are
supposed to have a broader eye to the interests at stake than just the parties;
we want them to be equipped to define legal rules that achieve balance in the
law. This aspiration for them requires competence, expertise, capacity to
engage in a flexible normative project that can respond to new questions and
situations. When that competence is absent, either b/c of structural
constraints or institutional failure, that’s disorienting, b/c where do you
look for correction?
SCOTUS failures don’t
seem structural; not unrelated to the larger legal ecosystem. The PTO is inherently
limited. The courts will have to play a significant role in defining the shape
of TM rights. The nuggets of constraint the Court gives us seem plucked from the
ether, without context or explanation.
We’re not going to
solve the personnel issues in the near term. Strategies in the short term: we’re
left with what we have, and find ways to work w/in doctrine like RT suggested.
In months since Jack Daniel’s, the caselaw is not giving lots of hope. The precise
uses that the majority takes for granted—titles of expressive works—are being
treated as source-indicating by the lower courts. There’s an opportunity to
work on lower courts, both trial and appeals, on giving more texture and
principle and normative content to the LOC factors. We’ve seen courts do this
in some contexts. Use in the internet, we saw courts willing to limit factors in
particular cases; could do that with expressive works as well in a way that’s
less “doctrinal” or test-based. Allows for some level of instruction and
consistency in cases of certain types, like use in expressive ways.
Movement lawyering?
In communication with affected constituencies, working at defining more clearly
the problems we’re trying to solve. Identify the greatest threats and capture a
theme. We have to accept the lack of traction we get describing TM harms and
make it more saleable. Look to antimonopoly movement in antitrust space. It’s a
long term project. Using rhetoric + empirical evidence about the costs of
concentration. Speak to the public. Partner with law & political economy
folks; make it into a larger project about the economy. Project: what is public
interest TM law?
Leah Grinvald
CBP: engaged in
development of and enforcement of TM law w/o any judicial oversight. Others
have noted a shift of the costs of private enforcement to public/government. TM
holders can record with CBP, and is used when scanning shipments that come in
through ports. Invites TM owners to provide training materials for their
officers; even have a powerpoint format for them. Invites TM holders to come to
offices, bring samples to train the officers (swag).
They ask TM owners
to ID counterfeits. Their main focus is on detaining and seizing counterfeit
goods; they say they’re protecting the public from counterfeits, whether
handbags or otherwise, as a safety issue. They’ll send the TM owner photos
unless they pay a bond for samples. Regardless of how TM owner verifies it’s
counterfeit, they take the TM owner’s word for it.
Importer has 7 days
to respond if they have a valid reason for importing; if not, the products are
seized and mostly destroyed, but there are provisions for donations (despite
safety concerns) if they need the product—by auction, to nonprofits, or if gov’t
needs them. TM has to be removable from product and product must not pose harm,
though how they know that is a good question if the reason for seizure is to
avoid harm. Anecdata: mostly the products are destroyed. [Some may go home
w/the agents.]
They can also seize goods
with copying or simulating marks, not just counterfeits. The regs don’t give
guidance on what that is; the importer has 30 days under this provision to show
either that they have good reason or that they can remove the TM. There’s
nothing in the regulation that restricts officers to detain only products
within the registered class, despite the fact that marks are supposed to be
registered per class. Backdoor dilution claim w/o need to prove fame or any kind
of association.
All of these
decisions are done at the level of the officer working hand in hand w/the TM
owner; officers aren’t trained in law; there isn’t anything like an internal
appeals process—importers rarely go to court b/c they are mostly small
businesses. No consequences for mistakes to the TM owner or the officer; just
release the goods!
Dinwoodie: US
complained to WTO about China not destroying goods; shouldn’t we be doing better?
Grinvald: not the
first time we’ve been hypocrites; the regulation allowing it is still on the
books.
Burrell: this system
is being exported through the world because of the USTO, and it’s now in Australia.
Timeframes are so tight; even if SME wants to challenge, must find a law firm
that is willing to work around the clock, which is massively expensive.
McKenna: they won’t
even tell you what they’ve seized. They have an internal appeal process that’s
a joke. The TM owner gives them an image; they call the TM owner and ask (w/o a
picture) if they should seize the products and the TM owner says yes. You have to
sue the gov’t to get them back and there is no remedy against the gov’t. With
LKQ, a whole bunch of the seized parts were covered by a design patent license,
but they said “too bad, it’s TM.”
Dogan: you can get
substantive law right and still get wrong outcomes if you get the incentives
wrong, and these stories might be helpful in getting the harms out to the
public. Are there stories about seizures of useful spare parts/works that the
public would be outraged about? Is there a way to make that come more alive?
Should we have
conflicts rules that limit what TM owners can give agents?
Lemley: confront the
rhetorical power of the anti free riding impulse.
Why does this system
work at all? How do they know what’s mapped to relevant goods/services? Has
anyone figured out whether it’s a random walk, mostly circumstances where they
were alerted to a problem, what percentage of goods subject to seizure end up
being seized, etc.?
Another form of
seizure popped up ten years ago: internet domain name seizures. CBP is using
the analogy to seizure of goods to seize domain names. They’re quite clearly at
the behest of particular TM/© owners.
Grinvald: definitely
an audit basis: they randomly open packages and check them against a list.
Latest stats are from 2021; Hong Kong and China are top countries inspected.
They also absolutely encourage anyone to submit tips.
Silbey: seems like a
story similar to Mass. Anticounterfeiting law where industry was policing in
front of stadium on behalf of NFL and just arresting T-shirt sellers. It’s an
MO, not only at the CPB—officers and industry leaders work together. What are
the narratives one might mobilize? Abuse of enforcement systems, collusion. Patent
troll narrative was effective.
Lemley: but TM
bullying stories don’t seem to move the needle in the same way.
Silbey: Eldred
turned out to be a mistake; could not convince the Court there was a problem.
Worry about SCOTUS and TM in the same way: the story we have to tell is not one
they are willing to hear. Empirics, costs, and efficiency don’t matter.
Lemley: yes, the Justices
clearly think people wouldn’t be confused, but VIP must nonetheless lose.
Silbey: might as
well have said “traditional contours of TM” in VIP; so what can we learn from
the patent trolling story?
RT: Better story:
Emojis? Schedule A defendants? [Thinking
about Lawrence Block’s Batman’s Helpers. Police corruption]
Just a reminder
of my FOIA
lawsuit
against
CBP.
Happy to share the underlying responses with anyone doing research in the area.
Linford: bonding
mechanisms? Schedule A story that got traction was the country music fan
selling Luke Combs stuff. This person’s side hustle was sympathetic. But is an
anti-merchandising right view popular in the US? That’s an empirical question. How
many errors are enough before people stop saying “errors happen”? The procedural
problem is less persuasive the lower you think the error rate is.
Goldman: we don’t
know the error rate b/c it’s not researchable, and it’s not researchable b/c
they’re not following the procedures.
Burrell: where’s the
evidence that we need reliable data to persuade people? We need anecdata that
is powerful: the government took my stuff!
Dinwoodie: When the
RIAA sued a grandmother and a teenager, they looked really bad.
Linford: but the two
cases that made the court of appeals, the RIAA won.
RT: but what does it
mean to win? They aren’t doing it any more and they didn’t collect the money.
McGeveran: people
see themselves as branders now. They identify with the “brand” idea.
Lemley: here’s what
TM owners think you can’t do on Tik Tok: making fun of a brand; wearing branded
clothes w/o permission—that might be a way to flip the narrative. As the world
separates TM from brand, we should think about what it means to separate those
doctrinally—would help us have narrower scope for TM law but also free us to
rethink what a “branding right” would look like independent of confusion over
sales of products. Not sure it would be based on confusion! A lot of bogus confusion
survey stuff would not be important.
Originally dilution
was an alternative cause of action in the states; you couldn’t bring both
claims.
Burrell: IKEA case
in Europe: “IKEA plan” used to describe anti-immigrant plan; court is
considering whether there is “due cause.” Most likely will cut & paste from
their copyright decision saying that satire & parody are ok and send it back
to the Belgian court. In working out whether a parody implicated free speech
rights, Belgium is entitled to take into account its equality guarantee, so being
political speech wasn’t super protective.
from Blogger http://tushnet.blogspot.com/2024/02/tmsr-session-2-administrative-agencies.html
Rebecca Tushnet 