Friday, September 27, 2013

PTO empirical data, TM applications

Deborah R. Gerhardt, UNC School of Law (with Jon McClanahan), Do Trademark Lawyers Matter?

Generally similar publication rate by filing basis, 75-80% range, but ITU registration rate is much lower than all the others, which are generally high.  82% of attorney represented applications publish, with only 60% pro se.  Sample of inexperienced applicants who filed two applications, one pro se and one with counsel: 79% went to publication with a lawyer, 61% without.  61% went to registration with a lawyer, 47% without.  So that can’t show causation but it does show correlation.

Experience also matters a lot. Pro se applicants who file fewer than 10 have 57% success rate, whereas 30 or more the rates are 81% success without lawyers and 83% without.  However, these repeat player pro se applicants are often not really pro se—e.g., American Greetings.  There may be a paralegal filing the application, but there is in house counsel.

85% of population are either the least experienced pro se applicants or the most experienced lawyers. 88% of lawyers fell into the 30 or more category, while over 80% of pro se fell into the fewer than 10 category.

Similar patterns hold on impact on publication after office actions are filed; the difference between the categories becomes bigger. 

Key takeaways: Lawyers aren’t essential, but correlated with success. Success increases at every experience level. Most applicants fell into two categories—least experienced pro se and most experienced lawyers.  Experienced counsel were far more successful. Might be masking other causes, but very strong correlation.

Discussant: Kirsten L. Apple, USPTO

One implication: justification for increased PTO support for pro se applicants—particularly need more guidance on how to address an office action. 

Questions: do lawyers matter in other areas?  Patents, mechanic’s lien, child custody.

In terms of causality, interviews/surveys might suggest what drives people to file or not.

Regressions: year, publication, foreign/domestic, year, opposition, etc.  Families/related marks, class.  Business data—size of business, business description.  Are attorneys used for more valuable marks?  Literature exists on what makes a patent valuable, including renewals—could use data to identify valuable marks.

McClanahan: we did look at emailed office actions, which are supposed to be more informal, and 40% succeeded after that—many of them simply give up.

(RT: Are we sure that’s a bad thing?  Maybe the examiner was right!  Yesterday it was all about deadwood!)

Q: look at pendency—time to publication/issuance. That tells you that the office action was a quick issue, like a bad specimen of use.  That might pick up nuances. 

Q: see this as an access to justice issue.  What kind of counsel can we give—pilot program with law school clinics, with a “rocket docket” for examination, helping people apply for TMs.

Alexander Krasnikov,George Washington University, Impact of Influential Trademark Cases on Trademark Application Activity

Explosion of applications and registrations in recent years.  What are determinants of firms’ decisions to apply for TMs?  Lack of integration of TM research with other domains, especially innovation & tech management/marketing.

Premise: TM applications reflect firm branding activities and may be linked to marketing strategies.  External shocks: law/litigation tend to expand TM boundaries, e.g. Taco Cabana’s elimination of secondary meaning requirement for trade dress.  Propertization/privatization trend might also lead to increased trademark activity. 

Focus on protection and registration of design elements of TMs, such as shape or color.  Looked at impact of Qualitex and TrafFix.  Looked at applications, divided into classes of companies by number of applications on the theory that the response to litigation is likely to vary with firm size and scope.  Average annual number of applications per firm/family, in design code 26 per firm/family, color applications.  Class 1: 70,000 firms, 1.3 million applications, 300,000 configuration applications, 1600 color applications.  Class 4 (bigger firms): 1400 firms, 670,000 applications, 122,000 configuration applications, 1000 color applications.  Note that configuration applications are a significant percentage, in the 20% range.

Findings: Qualitex is significant at a TM family analysis.  Might increase overall registration activity at brand but not firm level. TrafFix had negative effect on firm and family registrations.

Discussant: Graeme Dinwoodie, Oxford University

The cases at issue could be framed differently; this helps us assess whether we’re surprised by the results.  How typical/atypical cases about shapes and colors are likely to be compared to word marks.  The idea that Qualitex might spur color registrations and TrafFix wouldn’t is intuitive.  Qualitex resolved a circuit split on registrability/protectability of color alone—seen as liberalization, so positive effects unsurprising. But other parts of Qualitex were important: requirement of secondary meaning, which was important to Wal-Mart: a more neutral/not pro-registration result.  TrafFix must be taken in combination with Wal-Mart as a signal that the Court wanted a contraction of product design—a strong message, taken very seriously by most courts. Again, this makes the result unsurprising.  Hasn’t seen TrafFix’s caveat that ornamental designs can be registered used in very pro-registrant ways.  TrafFix arguably dampened TM registration on two distinct classes of marks—patent extension cases (e.g., drug shape cases), which TrafFix killed, and toughening up functionality even without a patent.

Suspicion is that what’s going on in shape cases is not classical branding strategy, but rather sub silentio design protection given the lack of sui generis/adequate design patent protection, which affects whether you should think of design TMs as branding or rather as design protection/patent extension.  Qualitex suggests that in a global marketplace, color and shape may become real branding mechanisms, but many litigated cases don’t look like that.  Useful information: how many cases/applications also involved a patent. 

So other forms of legal protection for design might matter; doesn’t seem to have been much change in copyright or design patent in the relevant 1995-2000 period.  But protection of marks is often a decision made after the fact.  Another option: §43(a), unregistered trade dress. So whether application activity would reflect litigation activity is unclear.  IP as a portfolio of rights as a way of achieving objectives.

Other bumps in the road during that period: a reform of functionality law in 1998 that arguably made registration more useful for product designs to shift the burden of proof.

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