TM scholars' roundtable, part 4

Research directions in Trademark Law 2017-2018

Discussants:    Bill McGeveran: History of scholarly productivity coming 1-2 years after the roundtables as seeds germinated.  Agenda-setting: boundary issues and registration.  Territorial/product dimensions; the consumers; design—picking up on something already in the air, but these others have generated some stuff though it’s early to tell.  Conversations among the papers.

Mark McKenna: conversation about distinctiveness in roles revealed we need a lot more work on the relation between registration and unfair competition, particularly on non-word marks.  Both Tam and Belmora hot mess have teed that question up and are likely to generate lots more confusion.  We can’t just pretend that we can take the same framework and apply it to everything. 

Future work: thinking more about various contexts of confusion cases. Courts feel more freedom from marching through LOC factors, but on ad hoc basis. Project: systematize how courts conceive of categories that allow them to deviate from the factors.  Factual settings: house-branded goods.  Courts tolerate much more similarities than they would in ordinary brand to brand conflict.  Also: when are courts willing to frame cases as affiliation cases, IIC cases, v. not.  These doctrines could swallow everything else, and lack of confusion at point of sale would become irrelevant. Courts intuitively shy away from that, but how do you decide when it’s in play and when not? 

W/Fromer: work on claiming in TM law.  Functionality; more issues on boundaries b/c of Star Athletica and rise of digital goods. When functionality took over, design patent fell out as a boundary condition even though Sears/Compco are design patent cases.

Grynberg: degree of care/reasonable person in tort law is lost in TM context. What would it mean to take duty more seriously if we can have an affirmative positive conception of the careful consumer.

Litman: channels these conversations into casebook, new edition on its way. 

Bone: strength of the mark has come out of this discussion as an important issue.

Beebe: papers w/Fromer, Hemphill; working paper w/Sprigman et al. testing dilution.  Morrin & Jacoby’s study, but with purchasing context. Introduction of any diluting stimuli causes dilution w/r/t all marks; they didn’t notice this super-dilution result from surprise w/Mercedes toothpaste b/c they didn’t test for it. Distinctiveness: always wanted to do history of TM thinking on distinctiveness, genealogically speaking.

Leaffer: Quebec: French requirement for descriptors when the TM is English. TM in cultural context reflects continuing concern that somehow TMs undermine local identities.  Also wants to investigate valuation of TMs as an asset and effect that should have on TM law.

Moshirnia: Not primarily TM, informatics paper to use cognitive load theory to figure out what’s communicated to consumer. Tech has changed how info is conveyed to consumers—might increase it or screen out other sensory perceptions that we usually associate w/brands (smell, sensation).  Idea of empirical practice—meta-analysis or study on what could be standards for surveys so you don’t get dueling surveys w/odd inputs and differing experimental design.

Dinwoodie: book on territorial aspects of IP internationally, EU, and US.  Normative construction of consumer; connected to registration/relation b/t TM and unfair competition—in English law, there’s a gospel that there’s a difference b/t distinctiveness and goodwill—former is for TM and latter for passing off.  Connects perhaps b/t industrial property, more abstract; goodwill could be market strength/reality.

Janis: DuMont & Janis continue work on 19^th c. design patent law. One outgrowth: found evidence of people using US design patent protection to achieve quasi-TM federal rights for logo and other subject matter we’d associate today w/TM.  Need more information about the pre Lanham Act regime for TM—interest in, for example, going back to find the origins of Abercrombie factors—maybe more contingent than courts say today.

Ed Lee: Tam amicus; may focus on those issues. Registration and what it is was the heart of the discussion.  Also compare © and TM registration.

Dogan: Harm, benefit and justification in TM: normative justifications for TM have blended prevention of harm and prevention of people capturing benefit from someone else’s marks. Leads to the role of justifications: limits are placed w/eye towards third party interests like competition, speech, institutional deference, e.g. to patent system. Design patent v. TM is still undertheorized.  Another project: Secondary liability v. antitrust standards: Noninterference principle—don’t interfere w/product design—is honored in the breach.

Burrell: Similarity judgments: consumers may have overall reaction, but you always have significant outliers.  Working on claiming in TM, primarily through the registration process but maybe also outside.

Ramsey: Chapter on free speech issues w/r/t nontraditional TMs.  As w/descriptive terms, certain symbols have inherent value, flip side of inherent distinctiveness. Companies are free riding off of inherent value.

Bently: Mainly TM history.  History of disputes over newspaper/journal titles starting in 18^th c. One interesting thing is blending of © thinking and emergent TM thinking that allows courts to give injunctive relief for the first time in TM cases.  Another project on first wave of globalization/territoriality—India, connections b/t US and UK.  Singer Sewing Machine is one of the first to globalize in 1870s/80s.

McGeveran: when TM questions must be considered Qs of fact rather than legal, and when they need to be developed through surveys or other patternized ways of answering empirical questions.  Given how much TM depends on injunctive relief, judicial role is paramount, so how do judges purport to be dealing w/factual questions in preliminary injunctions at that stage?

Sheff: there’s a lot of data about different registration systems in different countries; did a bit w/Japan.  Will turn to others. Implementation of Canada’s dropping of its use requirement as prerequisite for initial registration—effects on outcomes and behaviors. In Japan, their registration rate looks a lot like our publication rate, which is 20-30% higher than our registration rate b/c of the use requirement.  So 20-30% of these registers are likely pure clutter from day 1.  Seeing how it plays out in empirically rigorous way, using Canada to test the switch.

Diamond: general interest in science and law; role that experts play and ability or lack of ability of judges to substitute for other kinds of evidence. New manual on surveys for judges & lawyers; TM figures very heavily.  May update volume w/Jerre Swann on TM survey design & analysis.  Did survey of experts in TM cases in 2014; my theory has always been that TM surveys play important role that we don’t get to see b/c they help settle cases and encourage a client that maybe it shouldn’t go forward.  I’d like to understand that phenomenon better. Also interested in methodological Qs—some uses by courts of inappropriate statistical analyses; probably will do a piece on that.  Interest in cost of surveys has been reinforced; serious cost for smaller parties. Internet surveys were initial thought, but they aren’t so cheap either if they’re well done.

Linford: Forfeiture mechanisms/abandonment mechanisms piece coming out. Take is consumer-focused.  Marketing/psych folks have detected placebo effect for marks—seems to be some benefit from deceiving consumers into thinking, e.g., a putter is a Nike putter.  Is there something to the idea that dilution is about whether some marks should be treated as monosemous—all Coke comes from Coca-Cola—and why.  Whether word marks applies to non-word marks—what other literatures should he mine? 

RT: New gTLD study w/David Hyman testing what if anything is confusing/new cybersquatting.  I also agreed to write a chapter on reform of the effects or nature of registration!  Incontestability paper.