Friday, April 12, 2019

Eleventh Trademark Scholars Roundtable: Defining Marks and Markets

Session 1:  The Process for Defining Marks (Registered, Unregistered)

What are the different ways to define marks? What are/should be our goals in defining marks? What are the costs of permitting fuzzy definition? Are there costs to  imposing  strict requirements in defining marks? What are the next steps in the debate about claiming trade dress? What would happen if we extended that critique to more conventional (verbal) marks? What might the law relating to verbal marks learn from the restrictive claiming principles that some courts have articulated (or at least gestured towards) in Section 43(a) cases involving unregistered trade dress? How might we approach the definition of marks consisting of distinctive and non-distinctive elements? How might these different principles shape what we allow or encourage in registration practice? Would disclaimers be useful? Should our  approach to mark definition in the registration content apply equally if we embrace a distinct law of unfair competition?

Introduction:   Jeanne Fromer

2D aspect to TM rights: Central claiming as opposed to peripheral utility patent claiming. As long as we tie TM to marketplace we are likely to have some form of central claiming.  We could do otherwise & say use in market has to match but that’s unlikely.  This creates problems that McKenna & Fromer puzzled over: what happened when there are multiple different claims out there, e.g., a claim in the registration and then another claim in litigation. A standard character mark registered but will be evaluated in its actual font in an infringement case.  Central claiming means claiming again and again. That can affect notice. To decide: How much do we care about notice? 

Claiming by characteristic tells us what characteristics to focus on; claiming by exemplar creates another level of inference, which claims made in the market context tend to be. Registration claiming could be either way.

Claiming timing: before or after use?  Can look very different depending on timing relative to infringing conduct alleged.  Can also alter the mark over time—font, etc.

How much should registration matter in determining substantive rights?  YSL v. Louboutin is a great case b/c it’s so odd compared to the rest of US TM law. Shows registration matters very little; the court just orders it amended (at the appellate level! Reevaluating the facts!).  How much do we want a shadow TM system of registration versus marketplace?  One possibility: we ought to have broader benefits for aspects of marks that are registered—presumption of validity, etc.  But the expansion of rights should be scrutinized.

Distinctive v. nondistinctive elements—as TM scholars we don’t think enough about what to do with this; in © there’s a strong analog about dealing w/ original and nonoriginal aspects of the work and how to deal with those in an infringement inquiry. Not clear we have a right answer in © but at least we’re thinking about it.  Focusing on defining marks is important b/c multifactor infringement test often zooms back & forth b/t what the mark is in analyzing the different factors.  [Also notable in keyword ad cases where there’s no consensus on what the comparison is between—D’s use of the mark or D’s resulting ad text.]

Discussant:      Robert Burrell

How should registration fix the boundaries of the TM monopoly?  Registration based systems aren’t thinking about this very clearly. We lack an integrated procedure for deciding the scope of an IP right (Lemley/McKenna on scope). Two further problems: (1) Confusion about the audience for the registration system underpins lack of clarity.  (2) Uncomfortable about relationship b/t registration and reality of marketplace.

Who is a registration for?  IP Translator: CJEU decision in which the court held, in effect, that the use of class headings in specification isn’t a claim for all goods in that class but only the things that appear in the heading. Most scholars like it for reducing inadvertent, lazy overclaiming: if you want to claim it, write it down. But if you look at the CJEU decision, there’s no reference to the need to play overclaiming. Instead, the need is to provide econ. operators with clear and precise information. But that’s only sensible if we assume the audience is an unrepresented SME.  If it’s TM insiders, there’s nothing wrong with saying “the claim covers all goods/services in the class.”

Another case: When you’re interpreting a specification, you can take into account the scope of the class in question.  He supports that too as restricting scope of TM monopoly.  But that’s very much an insider’s rule; a SME claiming use of gloves in class 10 wouldn’t understand that it doesn’t cover gloves worn by Xray techs that are in class 9.  In Australia, we have a case that came to the opposite conclusion: class numbers should be disregarded in interpreting the specification b/c people who “peruse” the register should be able to understand it. But TM attorneys would naturally assume that the class in which you’ve chosen to apply has relevance to the specification!  Sec. 70 of the Australian TM Act: color is not to be regarded as a feature of the mark unless the applicant has lodged a statement.  Produces undesirable outcomes for unrepresented people—you see green on the register, you’re going to think green is part of the mark, but that’s not the rule.

Need to descend into the details of office practice: sometimes the system is aimed at unrepresented SMEs—systems designed to help self-filers. But doesn’t help you draft specification—just helps you find conflicting marks. We should be unsurprised that an unrepresented SME will find that they start making claims for things they have no intention of using. 

When overclaiming is inevitable, the consequence shouldn’t be complete invalidation.

But in other areas the office prejudices SMEs.  A scattergun approach to potentially conflicting marks: the examiner finds a potential problem in a quick search and throws it back to the applicant, even if the conflict is an overlap in an entirely descriptive element (shared use of CARS in car-related mark)—but for the applicant, that extends the scope of the earlier mark beyond anything reasonable.

Grenada case/ justification is that disclaimers don’t go into the marketplace and public has no notice of them, so we disregard disclaimers of, e.g., the descriptive word component of th emark.  So we get the idea that we’re concerned w/TMs as they exist in the market, and we need to be skeptical about any rule that sees registration as a thing in itself.  Max Planck study and USPTO practice shows similar dynamics.  Applicants may be clearly bad actors: awful lot of evidence that defendant in case had chosen the domain name to cause confusion, w/similar color scheme.  There was scope for confusion [ah, unfair competition].  We need to think more clearly about what we ought to do other than say “tough luck, you chose a bad TM.”

Stacey Dogan: Why is TM clarity important?  Notice and notice failure, as Mike Meurer demonstrated in patent context, imposes all sorts of costs, and also in TM. Risk analysis is very indeterminate when someone has a registration of a sort of similar word in sort of a similar market; decision turns partly on the actual registration, partly on the nature of the use in the market, and partly on how aggressive you expect the registrant to be. Tremendous impact on commerce.

Different values underlie negative space of allowed use: speech and competition are primary ones.  Need to be aggressive about reminding courts of that negative space as valuable. Notice problems especially tricky for design in terms of defining rights, as in Taco Cabana, but also because they’re seldom registered so we don’t have a preexisting claim to point to. Relation b/t standard for defining the right and infringement: as in patent law a generous doctrine of equivalents can defeat clarity in claiming, a generous infringement standard can defeat clarity in TM.  That may be why courts like it so much—it allows them to go after the actors they think are bad—but it makes it hard to give reliable legal advice to people who want to use words and product features that are themselves unprotectable by TM. Definitions should thus keep an eye on the back end, making sure infringement standards don’t undermine the rule, especially since C&D practice plays such an important role. W/o clear rules, TM owners aggressively claim in ways that can diminish the negative space.  Crowded field doctrine—narrower rights in a crowded field—encourages TM owners to claim aggressively to keep people away from their space.

Fromer’s comments about © made her think about, in connection w/importance of rigor in likely confusion analysis, parallel b/t vague likely confusion analysis & early look & feel cases in ©. Courts have an impulse that there’s something to protect and that the D has done something similar. In ©, courts have disciplined that doctrine at least some.  Remind courts of the importance of discipline in the TM context as well.  Distinguish b/t those that might remind you of the TM owner and Ds who are in fact creating likely confusion.

[I had to teach]

Jake Linford: worries that requiring inherent distinctiveness/limiting marks favors big players.

Graeme Austin: discomfort w/bait & switch in registration (or bait & evolve); part of that is what’s held constant. If we had sensible doctrines about harm, then it would be less of a problem.

Laura Heymann: Louboutin’s been mentioned: the court is actually thinking about aesthetic functionality as a way to limit the scope of the TM right but not eliminating it entirely—registration would cover D’s use, which is aesthetically functional, if given full scope, so we’re limiting its scope. [But they didn’t admit that! Instead they just said there was no use and no confusion!] Maybe there are limits that can’t be anticipated and only come out at a later time.

Sheff: Thinking about estoppel: most estoppels require evidence of reliance and harm. What would reliance by a user look like? Reliance on freedom to operate based on past representations to tribunals could also look like bad faith to a judge—copying things they’ve disclaimed.

McKenna: thought about assertions across different proceedings—different definitions of the rights across disputes.  It’s not surprising that mark owners emphasize different things in different contexts—is the mark claimant asserting rights or just highlighting aspects? Might not be “claiming” w/o a clear public document.

TM practitioners spend lots of time and money crafting the list of goods. Two different kinds of notice problems: ® may not help the definition of the right in assertion of rights contexts—but it sends a signal in situations where you don’t have to assert your rights because people shy away.  Chilling effect is meaningful there. May also matter for international export of rights. 

Lemley: shadow DMCA realm—lots of circumstances in which internet companies accept TM registration as basis for takedown and not other things—CafePress, Zazzle.

Ramsey: importance of Supplemental Register—registrants can assert “we have a ®”! Are there rules to restrict overclaiming, even if we maintain the SR for international purposes.

Linford: is it a category error to think of marks as things v. use of marks as transactional or communicative events?

RT: ICANN: note that this product/service limit has been completely removed in Trademark Clearinghouse, Sunrise, Claims Notice for new gTLDs—you need a TM registration for something somewhere and then it gives you preemptive and notice rights for any domain name matching it anywhere. E.g., BMW’s MINI for cars lets it register  Registration for “cloud” for pens in Switzerland gives access to every “cloud.newgtld.” It could be and is getting worse.

Dinwoodie: was a panelist in a sunrise dispute between Merck & Merck—complicated process.

Litman: Shadow 512 and real 512—American Airlines logo copyrightability fight. Why do this, she asked the AA lawyer? The answer was 512(c) notice and takedown access.  Maybe we should have 512 for TM rather than pressure on the © system to expand to cover all logos.

Beebe: If TTAB has a different approach to specification of rights, then this distinction b/t PTO practice & courts might break down because of the preclusive effects stemming from B&B v. Hargis.

Dev Gangjee: if we were interested in TM’s negative space, the one really clear space is the international generic names of pharmaceuticals. Could we learn from that?

Burrell: one way of defining negative space was to get your own registration—there used to be a defense that you weren’t infringing as long as you were using your own registered mark—a few places in the Commonwealth still have that.

Some previous discussion of letters of protest as a way to give public input, increasingly being used and successfully so at the PTO.  He suspects that its success might kill it.  Similar procedure existed in Australia and people started using it so often that the agency said “oppose or nothing,” basically.

McKenna: tracked post B&B cases—as of last year, no likely confusion cases except for B&B itself. In every other case the court said registration inquiry was different. B&B was having effect on things like priority, though. Fed. Cir. has also said that B&B estoppel doesn’t apply as against the PTO.  We’ve heard discussions about how registration matters in the world—bullying has some writing on it, but the other things we’ve talked about—DMCA like notices and other uses of registration should get more scholarly attention.

Leah Chan Grinvald: smaller platforms, where the DMCA request is combined w/TM, they’re scared & taking down the TM portion based on the claims w/o counternotice even if they screen for compliance w/©.

Bone: discussion of negative space: if it’s contextual, then it doesn’t much relate to definition of the mark; more about carveouts for particular uses such as Rogers v. Grimaldi.

Litman: descriptive w/o secondary meaning is an example of negative space.

Bone: sure, but if I’ve got a mark, what’s the negative space?

Lemley: sure, it’s contextual, but we can either say (1) anything can be a TM, so we’ll do factfinding on anything or (2) there are definitional exclusions, like a style or basic building block.  Uncertainty and delay and chilling effects are reasons to have (2). 

Bone: can see the exclusion of product design trade dress. But if you have a mark, do we force people to define that more specifically and exclude certain parts?

Dinwoodie: if you have a series of limits on registration, you have to figure out to do with what 43(a)—can it be used to remove those limits?

RT: Amazon’s program for verified rights owners requires ownership of a registration for a word mark; a design mark will not do. This strikes me as the right call, but clearly influenced by Amazon’s commercial interest in having lots of competitors on the market—maybe Amazon is actually an ok proxy for the competitive environment here. Compare the TMCH which accepts design marks even if the only protectable element is nonverbal; the TMCH will extract the verbal component and put it into the system; that creates rights in the domain name space over the verbal elements—another expansion of scope beyond the abandonment of goods/services limit.

Barton: machine learning aspects: for purposes of Amazon’s algorithms, it’s easier for them to program verbal aspects than having to figure out what is visual similarity.

Fromer: there are 100,000 applications in her set w/every single word in the mark disclaimed, some of them verbal only (composite, e.g., COMPUTER SERVICE PROFESSIONALS, some of them up to 8 words) and some of them w/images.

Wendy Gordon: remedies like fee-shifting can help defend negative space.  Sears/Compco could have been read to create a real negative space against state law extension of rights beyond federal—and maybe you should have gotten a remedy against those who tried to claim such rights anyway.

McGeveran: negative space as rhetorical tool to emphasize the public good aspects of freedom to operate the way we have in patent/©--it’s not just about one person’s freedom to operate.  Substantial value of having matter outside of TM protection. 

Dogan: any such tool for deterring overclaims has to be available in C&D practice too, where rights claimants assert in subsequent letters that X people have given in as if that established their actual rights.

Austin: Dastar as negative space: TMs can’t be for origin of intellectual content of works.  That kind of marking out of negative space provokes us to think about normative justifications for negative space.

Linford: shouldn’t import patent and © notions b/c context matters so much. We can make simplifying assumptions about what consumers care about or think about and that can help us move on as in Dastar, though that’s not consistent with what we’ve done elsewhere in TM. But the kinds of negative spaces that will likely matter in TM are likely different from those in patent/©.

Grinvald: customs enforcement is another area where ® practice matters a lot. Almost AI in human format—they reach out to the TM owner and w/o much analysis the TM owner says it’s counterfeit and the burden is on the importer.

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