Houston IPIL conference: Barton Beebe

Me on images in TM and advertising: the paper is not yet coherent, and my presentation was very tied to the many different things I’m not sure about in the paper, so I’m just going to punt for now. The comments were very helpful but would probably not make much sense without the paper.

Barton Beebe, Is the Trademark Office a Rubber Stamp?
New dataset. Huge spike in applications with the internet boom. International basis applications now are very small still. What proportion of applications are ITU applications? About 40% are use based. ITU got up to 66% but is now 56%.

Main point of the paper: registration success rates. Registration rates over time: overall registration rate for use-based was 75%; ITU was 37% from 1989-2007. Lots get ITU published but don’t file statement of use. Is this too high? Does that suggest the PTO is a rubber stamp? Sounds about right to him. No sense yet of registration rates at OHIM or in Canada, but OHIM has data available and may report soon.

25%: are those rejections or non-followthrough? Both. Use-based: some are failure to respond to office action, but that may be either substantive—they receive an office action they can’t answer--or a problem with the business. Can’t tell what the basis of the office action is from this data.

Q: break out pro se/represented by attorney? Online filing increases pro se filing; pro se filers may have no idea what to do when they get an office action and then give up. Beebe thinks the info may be in the data but hasn’t sorted it out yet.

Individuals did relatively poorly in publication/registration compared to corporations: 67% success in publication v. 76% for all types. Every result he gets is statistically significant because there are 5 million observations; .1 difference will be statistically significant, so we should really focus on what’s meaningful substantively. By classification of goods/services—clothing and telecom have the lowest success rates. High success rates for things like rubber goods.

Publication rates v. registration rates: the real question is whether the publication rates are too high. Publication is more or less the PTO’s last substantive review, though in rare ITU cases the manner of use in connection with goods will be examined. So the rubber stamp issue is the publication stage. We have exactly the same number for ITU and use-based: only 24% are filtered out. Needs to know what happened to that 24%--prepublication opposition? Very few oppositions in the data, compared to millions of application. Opposition is also rarely ever responsible for the difference between publication and ultimate registration.

Questions outstanding: how does trade dress do compared to word marks? Pro se applicants—how big is the difference? Particular goods: two-dimensional map of TM space of classification of goods v. similarity of marks, representing the density of certain classifications.

In litigation, we have a 50% win rate hypothesis—these are the hard cases where the parties can’t agree to settle. Empirically, in many different categories, this is what happens. Would that make any sense in TM application? Why aren’t applicants gambling a little more aggressively? Why are they so successful in the use-based side? Well, there is some risk in applying, and there is common-law protection, so a rejection would be really strong evidence your mark is unprotectable; claiming §43(a) is a costless alternative.

Bartow: What is the substantive review applied? If you’re asking whether it’s a rubber stamp, then we would like to know what the examiners asked for in terms of secondary meaning/etc. Are they not asking questions, are they accepting any answer whatsoever to those questions, etc. How do they use the Abercrombie spectrum? Intuition: ITU applications are quite speculative. When there’s an economic downturn, maybe people speculate less.

Beebe: interesting then that speculative filings have the same publication rate.

Bartow: ITUs can be used to mess with a competitor, too.

McKenna: statute says you’re entitled to a registration unless … and that really does set the baseline. Registration rate: doesn’t tell you what if any changes were forced in the registration—disclaimers, limit goods and services, etc.—that’s not a rubber stamp. No way to capture that in this data.

Beebe: can get entire casefile, in theory. If you could show a high number going straight from initial exam to publication, that would be good evidence.

McKenna: ITUs are speculative in the sense of not knowing whether you’ll actually use it. Doesn’t mean they’re more speculative in the sense of having capacity to identify marks/being descriptive v. suggestive. Consider using successful opposition as evidence that the office let through something it shouldn’t. If opposer win rate is low, may mean examiners are doing ok. Interested in seeing breakdown on types of marks—logos v. stylized marks v. word marks.

How many applications in which the examiner asks for evidence of secondary meaning?

Grynberg: doesn’t understand the assumption that registrants generally want to push the envelope. Not hard to come up with a TM that would sail through for an average business. (Really? Maybe a descriptive mark after 5 years.) Interesting that clothing was relatively high in nonpublication—stupid/squatting filings may concentrate there.

Correlation between applications and GDP: suggests that all the legal developments we’ve been bemoaning haven’t led applications to outpace GDP. Maybe law isn’t mattering.

My Q: how many ITUs does the average filer file? There’s the trolls who file for all sorts of categories, but pharmacos may also file a dozen ITUs for pharmaceuticals, which is not quite the same thing.

Re: GDP point I think misses the distributional issues. The average TM isn’t doing better, but the top TMs are taking up an increasing share of the value just as the top earners in the US are taking up an increasing share of the nation’s wealth.

Vetter: in the EU they talk about absolute grounds for registration (problems with the mark as such) and relative grounds (problems with some other existing mark), and he’s always found that useful for classifying things.

Beebe: excluded everything that ended up on the supplemental register—worth making clear about that.