TM scholars' roundtable, part 4

Session 2, Cont’d

Mid-Point Discussants:                      

Mike Grynberg

Belmora may do very little.  But: Belmora may be bad if it discards important checks, one of which might be territoriality.  Another idea: arguably undermines systematicity of TM, its existence as an autonomous body of law that courts apply. Casually discarding territoriality is problematic in itself and also in understanding what TM is—Jeremy Waldron on the importance of being able to see how a change ripples through a system.  Belmora undermines the idea that consequences flow from not having a TM/not having a registration.  We don’t know what happens when 32 and 43(a) are not equivalent [and I would argue that there’s a hydraulic push—TM owners then claim that they shouldn’t be worse off b/c they don’t have a TM, so 32 has to be at least as broad as 43(a)].  By throwing more up for grabs in inchoate unfair competition, that undermines pro-D thinking in TM law that hasn’t been systematized, such as the 7^th Circuit style/plausibility analysis.  Tabari: 9^th Circuit talks about what people expect when they see TMs in domain names.  Handwaving about consumer sophistication—but will Belmora allow a second bite at the apple in terms of unfairness claims.  MTM: court says no one thinks there’s a connection w/Amazon b/c of Amazon search results, but would Belmora undermine that by allowing a rump unfair competition claim.

Finally, Belmora exacerbates the problem of TM scope.

Jeanne Fromer: trade secret might provide some insights about unfair competition and its path.  TC starts out as common law in the courts; turns into a multifactor test in Restatement, and then gets codified in a way that offers guidance about what us be found. Uniform Trade Secret Act is more regimented than 43(a), though “improper means” creates uncertainty.

Belmora: the more it’s not applied, the more it will not be applied. Possible to push back on how this is a very limited exception [thinking here of INS v. AP].  Backdoor protection of TM-excluded matter: do we want to understand UC as a matter of not wanting to go beyond TM’s internal limitations, or is it just that TM stops and some other regime starts?  We have ways of thinking about doctrinal overlaps in other areas, such as TM/patent, trade secret/patent.  One of her worries about Belmora: remedies. When TM wouldn’t give a remedy, shouldn’t give that remedy through UC. That might be one way to think about the interface.

McKenna: what’s unusual about Belmora v. old style cases: the latter were things that couldn’t be marks b/c of their nature. That was a recognition that they weren’t susceptible of ownership.  We basically said hands off those things as such, even though they might have caused some confusion. Belmora’s not like that: Flanax can be and is a mark, it’s just not owned by the entity asserting rights in the mark.  You can’t avoid the ownership Q in that case; it’s not about using the TM component v. the nonTM component. You have to confront whether UC will provide a remedy not b/c TM law is silent but b/c TM law has affirmatively said there’s no right.

Fears Lanham Act language that will be cited is that sentence that says that 43 doesn’t require a mark used in the US.  W/o discussion of the reason that someone doesn’t have TM rights.

Dinwoodie: is TM law silent about genericity?  He thinks that’s affirmative too.

McKenna: Generic is a tough one.  Takes the point.  How you understand what the decision is—but still Belmora is about some content unambiguously w/in the scope of TM.  Could be used to argue that, if you have a fanciful mark and no likely confusion, a remedy is still available.

Dogan: Antitrust as a road not taken: choosing between balancing pro and anticompetitive aspects of behavior v. using subjective motivation of the actor.  If a product “improvement” has anticompetitive effects w/o being a better product, there’s no social value. Implicitly, Belmora etc. are courts saying “you’re not necessarily violating rights but going further means you’re not engaging in behavior w/any social value.”  Tea Rose/Rectanus also looks at good faith/reason for adoption; protects the innocent.

McGeveran: reminder that court in Blinded Veterans talks about how the remedy could include requiring a different name as long as “blinded” and “veterans” are part of it.  Allows D to appeal fairly to the desire of the public to aid blinded veterans—the policy reasons why genericness exists.  But still talks about the goodwill P has built up, when generic terms maybe shouldn’t have goodwill b/c they’re not marks.  [McKenna says that’s not necessarily true b/c generic terms could have minority secondary meaning for a subset. Not a mark is not the same thing as lacks source-designating meaning.]

Bone: wants to say that it’s still all TM; where a term has secondary meaning for only a minority of consumers, it’s still a mark and it’s still owned but the remedies change. The cost of separation is that all the remedial flexibility goes to UC, and the breadth of remedy may be unwarranted for every TM instance.  If you said it was all one big thing, called TM for argument’s sake, then you have a series of competing policies to look for a remedy in a given case.  Maybe you have rules of thumb, but at least it’s being done in the same box.

McKenna: haven’t you just mooted the point of validity analysis?

Bone: no, b/c at some point it will make sense for policy reasons that the costs of tinkering w/remedy are greater than benefits in avoiding consumer confusion and you should just have a no-remedy.

McKenna: so you always have a valid mark?

Bone: until the very endpoint where no relief is available—where there is no entitlement to relief, there’s no mark.  Or we could say you still have a mark, but no remedy.  The former communicates freedom to use more clearly. [This really has no room for registration, does it?]

Ramsey: chilling effect of demand letters, but that’s all about notice.

Dinwoodie: you’re making normative choices about security/predictability.

Bone: I’m just not separating into 2 boxes.

Sheff: non-consumer welfare/efficiency based perspectives: Blinded Veterans presents a bit of a problem b/c we have a conflict b/t access to generic concepts and consumer confusion.  That’s a distribution problem, not an efficiency problem, and consumer welfare can’t answer the question of what we should do. We could look at it as a Kaldor-Hicks problem—could try to compensate losers for what they lose from the result we arrive at.  Or we could look at who is good and who is bad—relationships among producers, not just relationships b/t consumers and producers. TM and especially UC should be understood as being (also) about relationships b/t producers and what they owe each other. One reaction is to say that confused consumers will just have to learn; they aren’t thinking about it in the way they should be, and that’s a moral judgment. Or we could consider them vulnerable and in need of protection, and those of us who can tell the difference will just have to accommodate them by giving up the non source identifying meaning to protect those who do see it as source identification. Or we could try to accommodate both to the extent we can. On the producer side, there has to be independent normative content to figure out what producers owe each other. Belmora: easier case that the D is doing something wrong, which doesn’t have to be filtered through what Belmora is doing to consumers.  If we thought more about duties, we might have an easier time thinking about Belmora, though maybe it just collapses into naked misappropriation reasoning.

Burrell: Unconvinced that remedy is problem in Belmora.  Bodybuilding company wants to register Superman for bodybuilding products in Australia; DC opposition initially rejected b/c has no blanket rights in Superman, but when the product is released has a big stylized S on it.  Bad faith is clear and the mark is cancelled on appeal; barring all uses of Superman by this bad faith actor is not a problem, though he understands the problem with slippery slopes/courts losing sight of the nuance.

McKenna: if evidence of bad faith is just that they’re using a mark that’s owned by someone else, that’s still a problem.

McGeveran: presumably there is a robust UC claim, in false advertising or otherwise, if Belmora falsely pretended to be a headache drug that was unavailable in the US.  Having said that, why do we get in a twist if the nature of the bad faith deception has to do with misleading around source? 

RT: because bad faith isn’t an element of false advertising and shouldn’t be.

McKenna: the content of the false statement about the drug ingredient isn’t ownable by anyone else.  But if you admit that there is the possibility of ownership and that ownership has territorial boundaries, we’re artificially dividing up the world.

McGeveran: but what if Unilever, which produces Nuprin, sues instead? Surely we don’t think their false advertising claim is a problem.

Sheff: who is the victim and what is the evidence?  Either the consumer is the victim and the harm to the mfgr is the evidence, or vice versa.

Litman: but that’s not what the 4^th Circuit said. It said that if you sue under 43(a) we don’t pay any attention to longstanding rules b/c this section doesn’t mention them. Erosion of territoriality and the idea of evading pesky doctrinal limitations by switching sections. 

Sheff: if the victim is people in the US, that’s a false advertising harm. If the victim is in Mexico but the evidence is in the US, maybe not. 

Dinwoodie: no reason to think that UC claims should be territorial—10bis indicates that the standard is an international one.