Roundtable on the Scope of IP Rights, Notre Dame Law School

Barton Beebe & Scott Hemphill, The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than the Weak?

Commentators: Mike Grynberg and Mark Lemley

Grynberg: Doctrine developed for certain situations may not make sense for other situations, including the relevance of strength. (1) Why does strength play such an important role in TM litigation? (2) Can we be sure that super-strong marks resist confusion at low levels of similarity/product relatedness? (3) normative implications.

(1) Maybe courts just misunderstand relation b/t TM strength and confusion, or maybe they’re enacting assumptions about free riding into law. But equating strong marks w/likely confusion could also be a heuristic for judges/juries. Beebe’s earlier work on multifactor test: one thing judges do is stampede the factors. Representative heuristic: cases w/strong or well-known marks correspond to our mental model of what TM infringement is.

(2) Consumers can be loyal to a weak mark & recognize differences. How do we characterize the consumers w/in the curve described by strong/weak marks? We need to be able to describe the consumers—some will simply not know the mark; others will know and be familiar; others will know and be unfamiliar/not alert. For famous marks, maybe the proportion of “alert”/difference-noticing consumers is higher, but maybe it’s higher for weak marks too because they simply don’t know the mark; there’s nothing to be confused about. Maybe famous marks include fewer consumers who don’t know anything, but maybe the shift is to a greater share of careless consumers who know a little but aren’t very alert. Strength and familiarity may not be the same thing.

(3) Sometimes the paper seems to gesture at: Normatively, reasonable consumers should not have been confused. Even if the strength story were true, then, we might want to ignore it: inattentive consumers are not protected; reasonable consumers exercising ordinary care is a standard that doesn’t necessarily have anything to do with the treatment of strength as such. Strength is a proxy for a general removal of context?  If this isn’t strictly about strength, then solutions could be properly directed at cabining the causes of action or creating safe harbors such as for referential uses.

Mark Lemley: Why care about strength at all? We could just ignore it, but the point of the paper is not that it’s irrelevant but that it’s relevant in ways we don’t currently treat it in the law. Can you use this argument in reverse: I have a weak mark so I should get more protection?  Or is it that strong marks don’t get much protection and weak marks don’t either?  One way to deal w/this might be inherent distinctiveness. We lump together two very different concepts. Acquired distinctiveness might diminish likely confusion, but inherent distinctiveness might have no impact at all, or the impact is different.  Apple v. Pineapple Computer, at outset of Apple’s existence—[to me this is the Lollipops v. Jellybeans roller rink case]—inherent distinctiveness can support a finding of confusion in a way acquired can’t b/c a person only vaguely familiar might think “fruit—computer—oh yeah, I recognize that.”

Strength might change the type of confusion we care about.  Affiliation, post-sale, sponsorship confusion.  Should we care about that?  If strength is bolstering the weakest confusion cases, that might further justify the conclusion that strength shouldn’t be used as a supporting factor. 

Dilution: where strength does the most work is dilution, b/c it substitutes for every other factor for a strong enough class of marks. There might actually be dilution proof marks.  Things that generate enough consumer awareness that you can’t dilute them—iconic, like Uncle Sam, American flag, Santa Claus—you can’t dilute them no matter how hard you try, sorry, Bad Santa.  Maybe the presence of parodies, satires, etc. ought to signal fame, with implications for “policing” theories.

Beebe: Students do relate most easily to famous examples—our ideal type of TM litigation involves super-strong marks. What is the implication, then?

Lemley: proxy for bad intent.  Nikepal?  That was chosen b/c Nike was a strong mark.  If that’s right, then we affirmatively might not care about it, b/c free riding is ok, or we might think that there are already plenty of proxies for bad faith.

McKenna: that strain of thought, there’s no good explanation for choosing this similar mark, goes back to technical TM ideas—as old as the distinction b/t different kinds of TMs.

Beebe: would like to emphasize more that our focus is super-strong marks. The paper should be just about utterly super-strong marks.  Phase shift: widely recognized by general consuming public, and known very well. Inverted U phenomenon we’re arguing for is limited to those super-strong marks. If well known, consumers know it well and can identify differences.

Does it work in reverse is a fantastic question. Didn’t address it in the interests of simplicity but now we can.  Quick answer: superstrong marks is our focus, but talking about the inverted U as a whole is useful. Normative commitment is narrower, so resists the weak marks should get broader protection idea, but should think about it. 

Beebe: Practitioners say affiliation confusion still exists, so Beebe/Hemphill argument is irrelevant.  Strength = knowledge not just of signifier but of other contextual elements.

Lemley: one implication might be that if strength does the work in affiliation confusion, that’s less valuable/more dangerous and a reason to discount strength.  Identical marks in radically different contexts might be of interest.  If someone outright copies a random coffee shop logo to sell soap in a different city, it’s not clear whether we should even care; who is harmed?  Copying Apple logo to sell soap will attract attention in a different way (not just b/c it’s aesthetically appealing) and that might be different, at least as a proxy for bad faith.

RT: Drawing on Lemley’s point.  Strength and affiliation confusion: maybe strength increases likelihood of confusion for these types of confusion (including post-sale) if we think these types worth having, but only after a certain level of similarity is reached.  May also make a product category difference; what kinds of marks are likely to engage in sponsorship etc. relationships and with what other products.  NASCAR sponsorships v. other types of relationships: anyone might sponsor NASCAR, but not anyone would affiliate with anyone else, including a competitor (which also has implications for MTM Watch type cases).  Fortres Software case—some insights there that might deserve actual theoretical elaboration and connection to other doctrines; maybe also Land O Lakes!  Those cases don’t tell you what to do in the next case that arises, but they’re also not wrong: there are differences in plausibility of confusion claims.

Are there super-strong marks w/in category?  Old Lexis v. Lexus case: is Lexis super-strong w/in its category?  Interaction b/t product similarity and mark secondary meaning.  So w/in category, may be easier to distinguish small differences or you’d expect “a Lexis Nexis company,” whereas Lexad doesn’t have that implication. 

Jim Gibson: If we got rid of strength, would intent and actual confusion do the same work?

Pam Samuelson: A mark that stays in one category for a long time, even if it’s super-strong, may be unlikely to affiliate with other products.  Honda makes cars; Apple by contrast keeps expanding the kinds of products it makes.

McKenna: is strength even an empirical matter, or a reward for having chosen a good mark/having built goodwill. Samuelson’s strength is not goodwill/familiarity but more like marketing theory—if you’ve seen a bunch of market extensions, the likelihood that you’ll see another as a market extension is higher.  Law assumes strength equals greater familiarity equals greater likelihood of confusion.  Can’t have it both ways—can’t be a theory of confusion but not helpful in dispelling confusion.  In terms of “no good reason for you to pick that mark” that came from a technical TM background that required direct competition—if you’re directly competing and using the same technical TM, there probably is no good reason. But once we blow that up, the work that strength does changes—lets you enforce it against broader range of goods and services—and old assumptions don’t make sense.  Paper can illuminate the difference b/t strength w/in category, which might give you more scope w/in category but not outside it, and strength across categories.

Lemley: what do we do about Nikepal then?  The absence of plausible explanation other than drawing from strength of mark is true even w/o identity.

McKenna: true, but that’s dilution or nothing.  If the law’s assumption is right, you should only be able to win if you show a survey, showing high levels of confusion—not just 15%.  If you can’t that’s pretty telling.

Chris Buccafusco: higher level brands may feel more confident to spin off products—popularized whiskey may be more likely to try out beer.  Budweiser will put its name on all sorts of drinks.  Whiskey has whiskey aged in beer casks, beer aged in whiskey casks—those markets are now interrelated.  Jameison’s will be more likely to try that than a non-well-known brand. 

McKenna: actually exceedingly rare to be in beer and spirits industries.  There’s expansion in cider but it’s interesting if consumers think that.

Buccafusco: Consider also that 90% of the value of a LV bag is the signalling function; maybe confusion over that is more important than confusion over a mark that is source identifying but not socially signalling in the same way.

Grynberg: Consider pieces of a mark—the Maker’s Mark red wax seal—you could have appropriation but not of the whole; the paper seems to assume the whole mark is there.

Lemley: maybe a difference b/t word, image, and product configuration marks—but that may be about skepticism about product configuration trade dress.

McKenna: plausibility of alternative explanations for using configuration may be much higher by default.