Friday, February 19, 2016

WIPIP Session 3: Trademark again

Session 3 Trademark 2
Irene Calboli & Dan Hunter, Trademark Proliferation: Lots of marks—Louboutin soles; motion of Lamborghini doors; etc.  Why so many?  Very broad definition of what can be protected as a mark + ill-interpreted concept of distinctiveness.  TRIPS + Lanham Act both define marks broadly—anything capable of distinguishing goods/services. TPP is even broader in definition. 
Spectrum of distinctiveness developed by Judge Friendly: highest protection for fanciful marks/new symbols.  Reality: fictional distinctions between descriptive/suggestive/arbitrary are ways to define ex ante an ability to distinguish, not an actual distinctiveness. [Nicely put.]  We are betting that a fanciful mark will be a better distinctive element.  Then we say that anything distinctive can be a mark.  Our project: differentiate between the ability to distinguish and distinctiveness.  Every possible aesthetic element of a product could in theory distinguish a product’s source—but do we need that? Our answer: no.  TM law isn’t supposed to protect aesthetic elements.

Go back to the drawing table: what is distinctiveness?  Stronger emphasis on TM use, or secondary meaning?  Criterion of separability b/t mark and product features? 
Marks have to be distinctive; not every sign that is distinctive has to be a mark. 
Christine Haight Farley: Why is the spectrum of distinctiveness the problem?  Isn’t it just in need of tweaking?  Friendly’s categorizations of word marks just don’t work for nontraditional marks.
A: we are starting to hear language of “fanciful” outside the word mark context.
RT: [Of course if the other papers are right that names are often part of product features, that gets harder.] [I like the concept of limping marks for this goal of limiting TMs—Mark McKenna pointed out that Kit Kat shape in Europe is an example of this issue—although it could in theory be distinctive, in practice it’s always accompanied by other marks that do a better job of distinguishing the goods.] [Artistic distinctiveness: Rock & Roll Hall of Fame/ETW v. Jireh concepts, applied more broadly, do what the paper is seeking to have done.]
A: Artistic creativity goes into a lot of logos.  Should TM be interested in branding at all?  As long as you’re allowed to use your word, even if not your logo, you’re distinguishing yourself:
Jake Linford: assume fanciful marks are more likely to signify source.  Doesn’t it save resources to presume distinctiveness?  Other rules are expensive and favor players with most money.  Not sure he believes this himself, but needs answer.
A: Problem is from cluttering—we’re running out of marks.  So it should be more expensive! Unfair competition/passing off are options instead.
Betsy Rosenblatt: proliferation of TM protection for arguably functional things, maybe they’re actually source identifying for the population.  Red sole of Louboutins is absolutely a source identifier and pretty.  Adding secondary meaning as a stronger requirement wouldn’t solve that problem. 
A: combine it with aesthetic functionality. 
Christine Haight Farley, The Impact of New gTLDs on Trademark Rights in Domain Names: rise in domain name disputes generally; this will increase disputes. ICANN increased new gTLDs to increase space for competition.  Idea was: glut in dot-com space.  Nearly 2000 applications; Google applied for a huge #; popular applications were for generic words. How will second-level domain name disputes? Nothing in all the wrangling which dealt with second-level domain names & how they might differ in new gTLDs.  This is the biggest moment since .com was introduced 26 years ago; expands number by 5000%; there was no study beforehand of how it was working.
UDRP view: we ignore what follows the dot.  Mercedes v. = the same. = not confusingly similar, though some “sucks” domain names have been found confusingly similar in UDRP.  Gulp v. Gulpy: why isn’t it confusingly similar under TM law? B/c we don’t do a visual comparison in UDRP cases, and we don’t consider context.  It’s impossible to map TM law onto UDRP, and we’ve done a really sloppy law.  UDRP law comes from TM law, but not exactly.  UDRP: universal; no specific relevant user; focused on registrant and its intent; supposed to be for easy cases.
First case in new gTLD case: Canyon (trademark for bike) v.  Panel in this case said that the post-dot matter enhanced the similarity, rather than ignoring it.  So: what about mercedes.spanishgirlsname?  “Red” is network in Spanish; could be a network of Ferrari owners using that space.
Changed over 15 years—strong assertion of TM owners’ rights in the policy. New mechanisms: TM Clearinghouse; Uniform Rapid Suspension—very property focused—allowed TM owners to have rights already in advance.  Madonna got first shot at registering; Apple got first shot at  Also had legal rights objections to new TLDs: DirecTV challenged .direct, and DirecTV won on confusing similarity (one-letter difference).
It is true that the other elements of the UDRP test can deal with many of the problems. But if this is a giveaway to the TM owner, and it’s already the TM owner’s property, then that will cloud interpretation of the remaining prongs (legitimate use, bad faith).  Amazon.books should come out differently from Amazon.river.
All decided TLD cases: three categories of decision.  (1) post-dot info may enhance confusion:; TM relates to the goods following the dot. (2) Traditional rule: gTLD disregarded, so,, (3) Troubling cases: gTLD doesn’t distinguish; panel has found that if info doesn’t steer away from confusion, it’s confusing:,,  But why should VW own .guru name?  Especially since we don’t know what these spaces will become.  Example: .horse, which turns out to be a space with a lot of weird content, such as,,, etc.—playful.
Jake Linford: in a world with good search, does it matter? Are any of these not famous marks?  Maybe this is really anti-dilution protection in the gTLD space.
A: useful questions—remains to be seen how search engines will work in this new space. Even if it’s true that search engines make TLDs irrelevant, the claim was that there was a need for gTLDs.  Also, lots of TMs you’ve never heard of win their cases.
Won Bok Lee, Confusion in the Eye of the Beholder: Likelihood of Confusion in Trade Dress for Prescription Drugs.  Pharmacists/doctors are expected to exercise a higher degree of care. But the health implications of confusion may be very severe.  Would that logic work the same way in product design?  No, b/c doctors and pharmacists rarely rely on appearance of drugs, but on name/label—under US law, similar-looking drugs wouldn’t be found confusing.
Korean case: found that patients shouldn’t be considered consumers for product design.  Viagra v. PalPal.  Viagra lost: secondary meaning and nonfunctionality accepted; but consumer can’t get confused because these are prescription medications and the pharmacist fulfills the order. The appearance of the drug doesn’t matter.
Japanese case: Selbex, anti-ulcer drug, v. generic.  Unfair competition claim.  IP high court found capsule color/blister packaging nondistinctive; physicians and pharmacists exercise higher degree of care and won’t be confused.  The law should be construed so that the physician/pharmacist becomes the primary consumer.
East/West divide: who’s wrong about the right consumer?  He leans to the Eastern perspective as more reflective of realities.  You hand the prescription to the pharmacist; purchase is made before you could be confused.
If patient isn’t considered, then do we discount the harm to the patient for having switches?  Difference in appearance b/t generic and branded can have negative effects on patients.  Do we empower pharmacists to palm off?  No, secondary liability/liability for the pharmacist is still available.  Result: better adherence to generic; no decrease in placebo effect; no confusion about what drug to take.  These negative effects may be greater in the US where DTC advertising is permitted.
RT: [See also the papers in the Xalatan/Travatan case, Pharmacia v. Alcon; mostly about the name but a bit about trade dress and interaction with FDA requirements. Legal US DTC ads as key differences in secondary meaning/who is the consumer?—little purple pill; not legal in most countries.  Consumers drive medication choices in the US—70% of those who ask for a specific drug get it.  That makes it possible to argue that consumers should be considered as target consumers.]
Q: consider the learned intermediary doctrine from torts.  Does Korea have automatic substitution laws? [Answer: for some drugs.] That seems like a complicating factor.
McKenna: there are other things that can avoid passing off, like imprinting a name, that don’t involve size, shape or color.
Jake Linford, Are Trademarks Ever Fanciful?: Idea is that fanciful marks have no lexical meaning, don’t point to product, therefore must point to source.  A rose by any other name … No inherent relationship between word and thing it represents.  If linguistic arbitrariness were really strong, that would make sense—but that’s not the world we live in. The way sounds communicate meaning: independent of lexical meaning, sounds convey meaning.  Furniture called Mil and Mal: which is bigger?  80-90% of consumers will say Mal is bigger, and marketers understand this.  Dark beer: Gomel does better than Gimel.  Clever pro namers can hide some descriptiveness in these marks w/o lexical, dictionary meaning.  Given sound symbolism, we should recalibrate.  Tang (below) wants aesthetic functionality; he thinks that’s too strong.  (1) Assumption that sound similarity is evidence of bad faith should go where the sound similarity goes to product characteristics.  (2) Think more wholesale about sight/sound/meaning analysis—courts tend to say that we weigh similarities more heavily than differences; if those have sound symbolism packed into them, we shouldn’t do that. (3) could even act at the validity stage, where sound symbolism might justify requiring acquired distinctiveness. Maybe we should abandon Abercrombie, despite the enforcement costs that arise from it.  Not all fanciful marks may have sound symbolism.
Jeanne Fromer: Why not go further? Arbitrary marks aren’t arbitrary. Once you put apple on a computer, people will make links (Newton’s apple) which help the TM owner.  Is there something particular about fanciful marks?
A: could apply same logic to arbitrary/suggestive; the effect is worst for fanciful marks b/c they supposedly have no meaning other than the TM meaning.
McKenna: doing this at the confusion stage makes more sense from enforcement costs perspective.  These considerations may contribute to descriptive fair use.  What kind of evidence would you want? And why aren’t defendants doing it?
A: you have to find an expert, pay them, get possibly skeptical courts to accept it.  Risk of a big waste.
McKenna: can you imagine this argument changing particular cases?
A: tends to pop up in drug cases, Xalatan/Travatan.  Easier to see in medical cases.  More a different approach to how we evaluate strength. 
Farley: Color symbolism exists too.  Scarcity problem: we are more likely to see scarcity outside of word marks, but you’re showing that some sounds are better than others.
A: Breyer might be right—colors are sometimes symbolic and sometimes not.
Xiyin Tang, A Phonaesthetic Theory of Trademark Functionality:  Functionality applied to product design; want to turn the spotlight back to word marks.  Doesn’t mean functional in the sense of “open here” or “fragile.”  More in the aesthetic sense of a heart-shaped candy box. Study the meaning of phonemes.  Phrases can also have aesthetic meaning, not just words.  Similar evidentiary basis as previous paper; broader claims.  TM claim by university over chant “I believe we will win.”  Rolls well off the tongue, can be used to speed up as it’s chanted.  Ornamentality?  But what if it’s on hang tags—not used in ornamental position.  Still can argue that it’s an important chant because of its sonic qualities, and shouldn’t be monopolized.
Q: Familiarity as an independent issue?  [Familiar terms are more popular.]  Peru sued b/c it wasn’t allowed to label its pilchards sardines in the EU, even though consumers weren’t familiar with pilchards.  Sardines sounds much nicer than pilchard.
A: trying to find independent reason that people would like the terms.  May call for expert testimony.

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