WIPIP, BU Panel 1: Trademark Theory and Practice

Trademarks, Functionality, and Competition (Glynn Lunney)         

Came in late; 3d Circuit is not a good circuit for trade dress (11.8% success for claimants, almost always on functionality (71% of wins)). 5^th Circuit at the other end—50% success, functionality only successful as a defense 20% of the time.      

Functionality is a trump card, not a balancing test. Problem: Inwood test is dicta; the real problem the Court saw was failure to defer to dct on factual finding, but the dct applied the standard “is the feature an important ingredient in the commercial success of the product?” and that’s the Pagliero standard. And dct should only get deference if it didn’t make an error of law. Functionality is for non-branding purposes. Morton-Norwich isn’t beneficial to consumers; we need more attention to whether there is competition and less to whether it is “fair” by avoiding copying of attractive features/role of incentive to create design should be irrelevant.

Err on the side of functionality; just b/c some trade dress may be nonfunctional doesn’t mean we should analogize from Coca Cola bottle to trade dress generally. 5^th Circuit wrongly reverses the hierarchy of the Lanham Act.

Beebe: why not go further and adopt Easterbrook’s approach: if it does anything other than indicate source then no protection?

Lunney: if there’s only one consumer who wants it for its shape alone, that’s a little troubling—average/reasonable/ordinary consumer is a standard construct.

Tertiary Meaning (Sari Mazzurco)                

Concept: Distinctiveness that is cultural and especially indigenous that should trump TM distinctiveness. Genericness/secondary meaning both ask about what the primary meaning is: the producer or the product. Failure to function doesn’t have a uniform test but PTO does ask whether something serves only as an expression of a concept/sentiment and is widely used by third parties so it wouldn’t be perceived as a source indicator for the goods concerned.

Each test applies awkwardly to symbols that are significant to cultural groups. Imagine that Hermes began using a traditional pattern from kente cloth on its bags. Kente cloth is used in rituals, has spiritual/cosmological significance. Hermes could use the coercive power of the state to try to bar those uses even if the third parties are using the pattern in a manner consistent with its cultural purpose. Relevant public for genericness and secondary meaning is likely consumers; F2F looks for wide use by third parties. West Africans likely wouldn’t represent a big enough percentage of those groups.

Meaning-making is a social practice, always emergent and conceptual, rarely universal, never subject to exclusive control—always negotiated and contested, with power dynamics at play. Source distinctive meaning can vary across time and contexts. But people might not silo meaning across groups. And people might fight over meaning in TM context: Matal v. Tam. Groups have asymmetric power—dominant groups have more ways to establish their preferred meaning. Ability to leverage coercive power of state helps. If Hermes wants to establish secondary meaning for a kente pattern, it has many tools to do that, including TM’s privileging of source-identifying meaning.

Conclusions: include cultural groups in relevant public for genericness/secondary meaning; consider cultural meaning in F2F determinations; cultural groups should receive priority even when a third party is first to “use” the mark in concept; recognize that noncommercial uses by cultural groups are outside the scope of trademark law.

Felicia Caponigri: how does the cultural meaning of Hermes bear on this?

RT: (1) Adapt doctrine of foreign equivalents analog: can use for 240,000 people in the US!

(2) Cost-benefit analysis underlies the DFE and other TM doctrines: you consider the interests of the smaller group more significant if they’d lose something significant like a coherent existing meaning and the rest of the public has no particular need for the symbol. Fire cider genericness case; otokoyama for sake; bond-OST for cheese.

(3) Noncommerciality mess: selling kente cloth for cultural uses would not be noncommercial; Hermes would not target the wearers in the US, but the sellers/importers.

21st Century Trademark Surveys (Rebecca Tushnet)

Surveys are a mess; routinely criticized as missing the point and also dispositive in some key cases especially involving free speech issues. Budweiser Oily, JDI.

Repetition of questions: source, business affiliation, again and again—prompting respondents to answer positively.

One survey asked three times what people thought of aluminum as an antacid ingredient until the third question yielded 45% of people who thought that aluminum was bad for them. The court gave the survey little weight. Johnson & Johnson-Merck Consumer Pharms. Co. v. SmithKline Beecham Corp., 960 F.2d 294 (2d Cir. 1992).

Compare L & F Prods. v. Procter & Gamble Co., 845 F. Supp. 984, 996 (S.D.N.Y.1994) (repeating questions “also serves the purpose of clarifying otherwise-ambiguous first responses by probing the implications of previous answers”), aff’d, 45 F.3d 709 (2d Cir.1995), with Am. Home Prods. Corp. v. Procter & Gamble Co., 871 F. Supp. 739, 748 (D.N.J.1994) (excessive probing undermined credibility of survey evaluating arguably implicit messages).

Lack of definition: asking why do you say that is not the same thing as what do you think affiliation means

Lack of clarity about what the statute means: statute uses affiliation to mean two different things in the same section
(a) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association: here, association is something that can be either true or false, thus confusing or nonconfusing

(c) association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark—here, association refers to mental processes and the association is not false; the consumer really does think about Nike when seeing Nikepal 

Ideas: training module; don’t repeat but have choose as many as apply; include an option “this is about the trademark owner” –other thoughts?

Jake Linford: pilot study on tarnishment: we did for a screener try to define tarnishment—lost 1/3 of respondents. We had tried to define it on our own terms—why not use the statute? Part of the work is defining the term.

Lisa Ramsey: Informational uses of TMs/comparative advertising. Expressive: parody, satire. Decorative: colors, shapes. Does this use provide information? [not sure that’s as helpful b/c courts don’t care, they just care about the confused subset]

Laura Heymann: should the survey question think about the harm at the heart of this: when we ask these questions are we trying to figure out solely what consumers think or what they do? [again, minimum change principle, though I appreciate the larger project of course—but consumers are really bad at telling you what affects their behavior so materiality might not be best assessed in a confusion survey]

Lunney: how much do you think controls help? [not much b/c of tendency to elaborate]

Is Teflon really any good?

Caponigri: context of surveys—Instagram might differ.

Stacey Dogan: depends on what affiliation confusion is.

RT: I think this is much easier than you might think. Affiliation specifically is a term of art across many statutes. I don’t love Chief Justice Webster, but we’re in a period where he’s very influential.

Education, Wealth, and Weird Trademark Surveys (Jake Linford with Justin Sevier)             

In the US, and perhaps systematically among scholarly studies, our studies are WEIRD (Western, Educated, Industrialized, Rich, and Democratic). We are undersampling low-education and low-income consumers and not sufficiently correcting for the undersampling. Most surveys don’t even report education or wealth.

Hypothesis: lower education consumers are more likely to be confused. But it might matter either way. In our study of tarnishment, there is directionally a burnishment effect but the sample size is so small as to create a lot of noise.

A null effect is also potentially interesting.

Is wealth as important as education? May be easier to measure one thing than two. Eventually will look at litigated surveys.

[RT: WEIRD usually describes the population: this is implicit in your not challenging whether we’re oversampling Westerners, industrialized, democratic (though political orientation might be increasingly important). Linford: yes, but we are undersampling education/wealth.

Compare surveys among educated consumers: doctors/pharmacists? Luxury goods]

Caponigri: we need the relevant population

Roberts: correcting for those things might be wrong depending on the product

Q: Does dilution have a corollary with considering sophisticated consumers? Or is a dilution survey different in who it should target?

Trade dress protection study: Higher education: the more likely you are to prioritize competition; lower education: more likely to prioritize protecting status.

Heymann: is that a function of the survey format v. actual behavior in the market—the survey context/this is a test that I have to get right/this is like an educational experience? Less experienced with the environment the survey is creating.

A: a fair question, but don’t want to presume.

Lunney: how much do surveys really matter? Judges like them if they agree w/judges’ preconceived outcomes.

A: sure. We have been making claims as we run surveys that they might tell us something about how TM law is or isn’t working; if none of us are asking the right people, then we have to change our claims.