WIPIP Session 2: Trademark

Jeremy Sheff, The Ragged Edge of the Lanham Act

 

Similar to Tushnet project; will focus on question about Lanham Act’s structuring of interface between PTO and federal courts.  Registrability v. enforceability: incontestability; §2(a) bars versus the common law—some of the bars have no analogue at common law.  Is a mark cancelled for scandalousness enforceable under §43(a)?  Renna v. County of Union said that unregistrable under §2(b) was unenforceable.  §2(e)(1) and (3): deceptive marks—if unregistrable, enforceable?  That’s not so much an issue of §43(a)(1)(A) versus (B)—use of deceptive TM might count as false advertising—so not even a right to use?

 

Judicial review and standing: direct appeal to CAFC, governed by APA standards of review; 21(b): de novo action in E.D. Va.; the director shall not be made a party to an inter partes proceeding under this subsection—leading to a motion to dismiss in Pro-Football v. Blackhorse on the theory that there was no standing. DCt ruled against that, but there are at least plausible arguments that Article III doesn’t map onto standing required to participate in inter partes proceeding.

 

B&B v. Hargis: preclusion and deference. Are the legal and factual issues in registration proceedings meaningfully distinct from issues in infringement litigation? Is the PTO entitled to deference on the legal and factual issues even if there’s no preclusion, and does that depend on distinction from issues that arise in subsequent infringement litigation?

 

What is registration for?  Procedural view: notice, evidentiary record for first in time rights system; inducement to register is to provide notice and avoid future disputes. Substantive view: those inducements have independent force and meaning: offense-side incontestability (inconsistent w/common law); nationwide priority; remedial advantages like criminal penalties and enhanced damages; evidentiary benefits like presumption of validity and notice.

 

Depending on whether you think it’s substantive or procedural, implications differ. Substantive: §2 has First Amendment problems. Standing is less controversial. PTO is probably entitled to deference. Possible preemption of state law or Congress should do it if it hasn’t already been done.  [RT: what should be preempted?] Implications of procedural view: divergence of §2 and common law protectability standards is probably unsupportable; standing in the absence of live infringement more problematic; less clear that judicial deference is warranted. [RT: not clear on that last point.  Can’t an admin agency get deference on factfinding even if there is generally judicial review?]

 

Upshot: really need to decide!

 

Lunney: Park N Fly: actual registration included design; could probably have proved secondary meaning.

 

A: but incontestability still is something you couldn’t get at common law and the opinion says it’s a carrot.

 

Welkowitz: what do you mean by deference?

 

A: maybe APA deference, to factual issues decided in registration proceedings.

 

Welkowitz: Judge said that it would be very hard to figure out how to give proper deference to the PTO in a jury trial.

 

A: there is a good argument that the question is substantively different between §2(d) and infringement.

 

Welkowitz: preclusion is an on-off switch, deference is not.

 

Ramsey: how robust is examination? That worries her about deference.

 

A: on a lot of issues, like §2(a) and 2(d), they tend to build more of a factual record. §2(d) seal of county gov’t, less contestable.  Maybe preclusion/deference only comes where detailed factfinding is necessary—which is where APA deference gets you.

 

Rebecca Tushnet, Registering Discontent

 

Sheff conferred a positive externality on me since our projects are so similar.  My starting point: Felix Cohen on transcendental nonsense and the functional approach—TM was one of the key examples of transcendental nonsense. Eleven years later he lost the battle in TM as the Lanham Act added a new set of legal fictions to the existing ones he criticized.  Are these concepts empirical?  If not, what should replace them?

 

Along with Sheff’s examples, I’m interested in the role of registration in the multifactor confusion test, as well as how to reconcile registration w/dilution, which was supposedly designed to prevent interference w/marks even on unrelated goods/services. 

 

What should be done? I agree, pick one. I’m attracted to substance: create a real divide between registered and unregistered marks, perhaps by double identity for registered marks and a robust harm requirement for unregistered marks.  Explicit balancing of non confusion based rationales as justifications of and limits on TM—since we’re so bad at the empirical tests anyway.

 

Rosenblatt: many inconsistencies w/current system and proceduralist view.

 

Sheff: agree—proceduralist turn would require changes.

 

RT: but also inconsistencies w/substantive view of registration—consider infringement test, which doesn’t consider the registered mark but only in context.

 

Bill McGeveran: if you’re attracted to a European model would there be use as a mark as a requirement?

 

RT: Maybe, maybe entailed by the very definition but if not should be done explicitly.  TM as a series of formal moves that, if made, entitle someone to a right.  If not made, don’t get caught in the cycle of “does the public perceive this as use as a mark.”

 

Ramsey: w/double identity you’d need a defense for comparative advertising/use as a mark.  Also, what about examining rigor if you’re going to go substantive route?

 

Sheff: question is ex ante costs of rigor v. ex post costs of resolving conflicts; reasonable people disagree.  Ask: is it a big deal if the PTO refuses your mark and you have to find another?  What gatekeeping function do you want?

 

RT: agree, rigor is an issue. One issue where the TM bar is in agreement is that there’s a ton of deadwood on the register.  Study: 2/3 of marks that applied for renewal couldn’t show use in one or all categories.  ¼ couldn’t show use in any.  This is a big deal; TM bar thought it was a slight problem but it’s not, especially in substantive areas.  Nonuse proceedings should be fast and cheap—Canadian model—and PTO should require more specimens as a matter of course.

 

Megan Carpenter, “Behind the Music”: Lanham Act 2(a): When scandalousness came in, Hays Code was in effect—people who committed immoral acts on screen had to be punished on screen.  Definition: shocking to sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.

 

Consumer protection is different: protecting morals rather than confusion.  Lessening in other IP regimes of regulating morality.  But political and practical realities exist.  Today’s legislative environment, unlikely that Congress will act.

 

Even w/o new legal framework, could get better, more consistent and defensible results w/marketplace context. Test: current context of the attitudes of the day, in the context of the relevant marketplace. In practice?  Empirical study: Most are rejected for containing a word listed as vulgar in the dictionary; but only 5.08% of rejections she examined considered market context.  But what is vulgarity?  Dictionary: lacking sophistication or good taste; explicit and offensive reference to sex or bodily functions; coarse and rude

 

Media like Urban Dictionary used about 25% of the time.  Mostly dictionary; next was other media (15%), a tiny bit of third party use, and 3.91% applicant’s own actions. The fact that it’s used in a context/market that accepts vulgarity, that’s used to support the rejection. TIT MITT for bras rejected because the goods would make the vulgar meaning clear. Google searches are common contextual evidence, but most often we see marketplace abstracted from that analysis.  Most are rejected for profanity and sexual reference, failing to account for narrow marketplace.

 

Adult-oriented goods/services, that also supports the scandalousness refusal. Where the goods themselves are not scandalous, like SHLONGWEAR for apparel, then the standard was the general public who’d be scandalized.  Catch-22.

 

Atypical to respond to Office Actions—usually abandoned; applicants are individuals and small businesses. Most common response when they do respond: context of mark.  Other common arguments: alternate meanings and third-party registrations. When context is argued, it doesn’t often succeed.  For every mark that’s been rejected, there’s one that passes through.  No predictability/consistency for Examining Atty or for the applicant.

 

By and large, these things are in use afterwards, though they can be hard to track down.  Used by applicant or otherwise in almost ½ the case; but that leads to a proliferation of uses.

 

RT: How many of these are really TM use and not ornamental? E.g., YOU CUM LIKE A GIRL.

 

A: A lot should be rejected for ornamentality, and that’s ok.

 

Rosenblatt: I always thought this was intuitive, and the examiner just justifies their personal intuition. If so, the examiner may go find something else even if you change the process.

 

Q: maybe, but I think “vulgar” is a much lower standard than scandalous. 

 

Farley: There is a lot of inconsistency, but there’s consistency on “shit.”  You’re telling a story of consistent difficulties; the dictionary might be more consistent.  Are you truly interested in consistency, or something else?

 

A: we don’t see all the things that pass through without challenge.  Examiners don’t have clear guidance.

 

Roger Schecter: merchants want to sell stuff. They won’t sell stuff consumers won’t buy, including because they’re offended.  If §2(a) is to have any coherence, then, the interests/reactions of nonconsumers must somehow come into account.  Maybe it’s hard for anyone to avoid anything in the internet age, but the likelihood that goods will be in a market channel where noncustomers will encounter them should be a relevant consideration.

 

A: Agree.  Similar to likely confusion factors.

 

Q: Adult stuff is approved (not always)—being for an adult product is necessary but not sufficient.