Tulane IP conference, part 4

Mary LaFrance, Lost in Translation: Comparing the Trademark Status of Abbreviations and Foreign Words

TM protection for abbreviations of generic or descriptive terms. What determines whether such abbreviations are protectable? Can they be inherently distinctive? 1997 case: WSI for Welding Services Inc., held generic when spelled out. So what about WSI? There are acronyms, which can be pronounced like words (e.g., LASIX), and mere initialisms, which aren’t. The vast majority of litigated cases involve initialisms.

In some circuits, the chances of getting TM protection are much better if your abbreviation has a meaning that is not necessarily connected to the products. POLY: held by 2d Circuit to be distinctive for polyethelene pitchers. Double entendre with a woman’s name: Poly Pitcher, which sounds like Molly Pitcher. Still, most of us would probably recognize Poly as short for polyester or something like that and consider it descriptive. BEARS: held arbitrary even though it’s an acronym for British European American Racing Series, a descriptive term for motorcycle racing; since it sounds like an animal, it’s arbitrary.

Most cases come from the CCPA, and they mostly make sense. Modern Optics: CV, standing for “continuous vision,” a type of trifocal lens. The term was highly descriptive, but CV isn’t itself descriptive, for lack of evidence that CV was a generally recognized term for the phrase. As a general rule, initials aren’t descriptive unless they’ve become generally understood as representing descriptive words such that they’re synonymous with the phrase. The burden is thus on the opposer. Example of term barred on this rationale: IM for instant messaging. (Query whether rise of netspeak makes lots more initialisms recognizable and thus descriptive.)

TTAB has pretty consistently followed this approach. Sometimes, though, they conflate the issue of genericism with that of secondary meaning, looking to whether an initialism has secondary meaning and then skipping genericism. Outside the TTAB and the Federal Circuit, analysis has been less clear-cut. SDNY: several courts have held initials inherently descriptive, because letters of the alphabet are available to everyone. But TMs don’t have to be original, and words from a dictionary can be arbitrary applied to particular goods/services. And yet that’s influenced courts in a number of other circuits. (I wouldn’t say it’s the dictionary that makes availability important—it’s the competitive need of others to use the initials, which they might do for convenience or shorthand.) The Ninth Circuit has said initials are inherently descriptive, especially when derived from a corporate name. Anheuser-Busch has had difficulty protecting the AB mark. (I think there’s something to this, considering the inherently limited number of short initials available—look at the competition to get an attractive three-letter code for the stock tickers, or the value of three-letter domain names. The concern isn’t so much that another business will want to use WSI, but perhaps Brown’s Welding Services Inc. will want to use BWSI, for perfectly good reasons.)

LA for low alcohol: the 7th Circuit rebuttably presumed the initials descriptive, because they stood for a descriptive phrase. That’s the opposite of the Modern Optics presumption. Almost the same facts in the 8th Circuit, which went the other way on LA for low alcohol, treating it as suggestive. (I think context is important here: this isn’t a TM on a business name or a full product name; TM protection is being used to sue other products bearing other house marks, e.g., Labatt’s LA. And that to me raises special competitive concerns.)

Foreign words raise similar issues of translation: how likely are ordinary consumers to translate the foreign word into its equivalent? Initialisms are also about translation: will a consumer think that WSI means “some company that provides welding services” rather than “a particular company that provides welding services.” Unfortunately, the foreign equivalents cases are also kind of confused, because people’s translation capacities and tendencies differ. Most courts ask whether an “appreciable number” of consumers would translate. Issues of international comity are also highly influential, but those policy considerations don’t affect initialisms.

Blue Ribbon & Cordon Bleu are not equivalent, because they convey a different commercial impression. Commercial impression is a potential way to navigate the abbreviation cases.

Bob Brauneis: Isn’t the issue one of assessing competitor need, esp. with new products or services in which the abbreviation may well become the new reference, but we’re not sure yet.

LaFrance: One court raised this possibility.

Brauneis: The concern is not whether a term is statically descriptive, but dynamic: descriptiveness provides a testing period of several years, precluding registration/protection very early on when we’re just uncertain about what will happen. So he’s partial to the 7th Circuit at least when a product is new. If you want TM protection, just prove secondary meaning—the rule is not a bar to TM protection.

Zahr Stauffer: In the TM relation, the abbreviation refers to the signifier. It’s a horizontal reference, not a reference to the signified. Is that the same as the foreign equivalents situation?

LaFrance: Increasingly, she thinks that foreign equivalents have little to offer, except for the idea of commercial impression.

Lisa Ramsey: This raises questions about the Abercrombie spectrum itself. Maybe Abercrombie just doesn’t cover the questions that we need to be asking. (Like product design, perhaps?) Courts may be concerned about control of language/letters. Given that rights extend beyond verbatim copying, treating these marks as inherently distinctive gives some pretty broad rights.

LaFrance: In that light, it’s really interesting that the TTAB standard is so applicant-favorable, since their treatment is what determines whether a mark can become incontestable, and incontestability gets rid of any future descriptiveness challenges.

Laura Heymann: This may be a way to explore ways in which consumers make meaning. The TM holder creates many initials, but IM is a term adopted, perhaps even created, by consumers. Compare: Coke, VW Bug, ACE, FedEx, Mickey D’s.

Brauneis: Also related are abbreviated prefixes/suffixes: iPod, eTrade.

Stauffer: Also ask whether the abbreviation replaces the original mark: Kentucky Fried Chicken is gone, replaced by KFC.

LaFrance: Very few cases seem to involve such an evolution.

Brauneis: Companies often move to initials in new countries: Kentucky Fried Chicken means nothing in China; Hennes & Mauritz sounds germanic, but H&M moved easily into new markets.

Lisa Ramsey, Free Speech and International Obligations to Protect Trademarks

The US and other nations can protect free expression without violating trade obligations, such as the Paris Convention and TRIPs. Those agreements have some built-in flexibilities and free speech protections. Moreover, nations deserve deference in balancing trademark and free expression.

In the US, courts protect speech by interpreting TM narrowly or interpreting exceptions broadly, and many people argue that courts should be even more active in doing so. Here’s the risk: someone would argue, as they have occasionally suggested with respect to copyright’s fair use, that these broad interpretations violate our obligations under the three-step test.

TRIPs: our obligations are much more flexible than you might think, especially in trademark. Members have discretion in implementation in all areas, as Dinwoodie has argued, and the TM-specific provisions provide extra flexibility. Dinwoodie has suggested a “new federalist” approach—the ability to experiment with different ways of protecting IP. There’s a general consensus that expression matters, even if there are different ways of thinking about free speech.

In close cases, therefore, WTO should defer to speech-protective standards. She doesn’t advocate WTO adoption of rules for when speech should trump trademark. Unlike national courts, the WTO is unlikely to come up with speech-protective standards on its own; panels are not necessarily representative of speech-protective backgrounds. So authority to make law should rest with the individual countries.

What about a law of user’s rights? Exemptions for news reporting, comparative advertising. The concern: if we have that, then panels will treat that as exclusive. So any move in that direction should specify that it’s a nonexclusive list.

Examples of specific changes: She’s argued that TM shouldn’t protect descriptive terms. The Paris Convention allows countries to protect descriptive terms, but doesn’t actually require it. What about dilution? It’s arguable that dilution protection isn’t required, because protection for well-known marks is different than dilution. There is a Joint Recommendation suggesting that dilution is required, but the WTO could treat that as non-binding. Moreover, the well-known marks requirement covers uses “in the course of trade,” which would allow a trademark or commercial use requirement. “In the course of trade” is a known phrase in Europe and other nations, and she’s investigating that now. A robust commercial/trademark use requirement could legitimately be used to protect speech.

TRIPs says members can provide limited exceptions, such as descriptive use of a mark, provided that such exceptions take into account the interests of the mark owner and third parties. This is much more flexible than the copyright exceptions provision. So even if you don’t believe that the provision for rights allows a TM use requirement, you could find it in the exceptions provision, because a TM use requirement respects the mark owner’s interest and benefits third parties.

Q: It’s important to distinguish between international lawmaking and lawmaking by WTO panels; shares your concerns about WTO panels, which are focused on trade and not speech. That makes incorporation of the Paris Convention into TRIPs problematic, because Paris was directed at different concerns. But it’s also important to remember that the US fetishizes speech.

Australia, for example, has no explicit dilution protection; it protects speech differently, by more narrowly defining the scope of the rights. Australia does have a TM use requirement.

Ramsey: That divergence is particularly true with respect to commercial speech. But there are a variety of ways even in the US to take speech interests into account, narrow definition being one of them. (My take on this: the US fetishizes free speech in part because we’re litigious; the First Amendment defense is often useful in fighting a case that should never have been brought and likely wouldn’t have been in other countries.)

Comment: Thinks it unlikely that WTO panels want to make rules; they will avoid making rules as much as they can and try to limit the number of issues they resolve. The members wouldn’t tolerate much activism of that sort by the panels. There’s also been some discussion of free speech issues in the context of GI protection. The US and Australia are not happy with European demands over GIs, and free speech has been one of the arguments. Even if marks aren’t generic, the ways in which Europe is proposing to regulate would harm free speech. (I’m guessing she’s talking about bans on using terms such as ‘like’ and ‘style’ and comparative advertising restrictions.)

McGeveran: You’re not theoretically opposed to international rules; your argument is practical: good rules are unlikely to emerge from the WTO from this configuration of national interests.

Ramsey: Yes, she believes rules are better than standards at the national level, but not at the international level if they’re likely to be restrictive. She’s concerned about the likelihood that any rule-like exceptions will be interpreted to exclude other limitations.

Comment: It’s also much easier to change a national list of enumerated exceptions than an international list. But a list of enumerated exceptions, plus a catch-all that’s drafted to make clear that the provision is actually a standard with a list of representative examples, could be a good idea.