IPSC: Trademark Doctrine

Jorge Contreras, University of Utah SJ Quinney College of Law

Sui-Genericide

1940s: Proprietary Ass’n & AMA opposed foreign registrations of common drug names (ANTACID, VITAMIN, etc.). Late 40s-80s: DOC generic word program: words submitted by firms to INTA’s predecessor, then to Dep’t of Commerce, which would protest to foreign gov’ts.  Successes: elastic, satin, tractor, bacon, etc.

Today drug naming is fairly systematized: proprietary name, common name, chemical name. Perhaps surprising: There’s no formal deference at PTO to int’l bodies and their naming of generics: WHO int’l nonproprietary names & US adopted names council. There are a couple of other bodies that do this: pesticide common names; synthetic fibers used for garment content labels (FTC; done by committees including chemists coming up w/names).  Technical standards: USB as the common generic term for a computer port used to connect various devices, according to the USB Interoperability Forum.  W3C designated terms as generic: ACSS, CSS, DOM, DSig, HTML, HTTP, JEP, MathML, Metadata, PICS, PICSRules, RDF, SMIL, SVG, WebFonts, XENC, XHTLM, XML, XMLDSIG and XSL.

Why have generic terms? Firm-level benefits: baseline for entire industry; protection against competitor capture; enables brand names to be simpler/more distinctive; enables competition among brands.  Market benefits: consumer info; comparison shopping; less consumer confusion; enables generic competition.

Today, genericism is determined in adversarial proceedings: examination; opposition; cancellation.  Legal effect of unilateral declarations?  Self-serving: deserve little credence. May bind the promisor, but not outsiders.  But should we give more deference to standards bodies?  It’s possible to dedicate research to the public to make results unpatentable. It’s possible to abandon ©. But a TM-able symbol may not have protection against being scooped out of the public domain. Should we create such a framework?

Proposal: alert examiner to consensus lists developed through industry bodies w/due process, right to contest. Should be a rebuttable presumption of genericism.  So too w/litigation/cancellation.

Mark McKenna: is there a big problem here?

A: there are a few, like USB House.  Relying on courts is costly. 

Deborah Gerhardt: Office Actions could help you isolate the problem.  Curious to see what kind of evidence the examiner is citing.  She’s seen citations of use in patent names; unit of food in nutrition label.

Justin Hughes: the PTO doesn’t need to worry about prescription drugs b/c the FDA will do it for them.  Would worry about Linux people using this proposed structure on Windows.

Michael Grynberg, DePaul University College of Law

Living with the Merchandising Right

Hates it too, but it’s not going anywhere: protecting the mark as the most desirable feature of the product; source designation functions are either irrelevant or distinctly less important.  Boston Hockey: protection of the feature qua feature; likely confusion exists because people recognize it. Later cases claim that merchandising is an application of confusion over source/sponsorship, but if you read them there’s still a presumption of ownership/rewarding people who create valuable things. 

Familiar critiques/responses to those critiques: it’s not confusing about source (but courts see approval/sponsorship confusion); it’s functional (but courts don’t like aesthetic functionality); etc.  Judicial intuitions support this right; they don’t like free riding even if there’s no there there philosophically.  Matthew Kugler study: consumers don’t care for themselves but think there’s a moral component/desert.  In TM class, he starts at the beginning of class asking about merchandising rights (McD’s T-shirts w/logo) and asks again at the end; almost 100% believe in the merchandising right at the beginning of class and almost 100% believe at the end of the term.

Fine, but the merchandising right destabilizes infringement more generally. Different factors are emphasized than in typical source confusion cases, like heavy weight given to D’s intent (Smack Apparel) and the idea that free riding is probative of confusion. Downplaying of distinguishing content like disclaimers in Automotive Gold. Danger is feedback to general infringement analysis.  Another potential issue: copyright overlap. Honey Badger case (sigh)—copying Gordon’s expression, not his “mark.”  Merchandise claim pressures Dastar policy, protects Gordon as the “origin” of the theme that Honey Badger don’t care.  Similarly, exacerbates tension on First Amendment interests b/c we have a merchandising claim at work—Court’s intuition that he should win does real damage to Rogers by finding the use artistically relevant, but also finding that b/c we’re in the same (merchandising) market, it might be explicitly misleading even though the defendant isn’t doing anything explicitly misleading.

Porous markets: Excelled Sheepskin v. Oregon Brewing Co. Brewer used ROGUE mark for promotional clothing; Leval finds that this promotional use gives it priority over clothes maker in department and clothing stores. Leverages priority into market you weren’t intending to enter/were entering for merchandising only; exacerbates mark depletion issues. 

TM holder free riding/trolling: pressure on mark exclusions/defenses.  How we deal with the free rider being the TM owner—Packman v. Chicago Tribune, where there’s a TM registration for JOY OF SIX and the person who gets this registration sends letters to newspapers suggesting they use it; Chicago Tribune uses it on a headline and merchandises its own front pages, and the troll emerges and tries to sue.  Intuitively, we know that Packman should and must use. The question is why.  The court goes to classic nominative fair use.  YMMV, but that’s not the easiest fit in this situation.  It’s not describing the CT’s own goods/services, but the fair use analysis focuses on P’s lack of secondary meaning. This is true but not evidently part of the analysis—reflects court’s strong sense that Ps are the free riders here.  But it makes it more difficult for Ds who don’t fit the perfect model.  Oprah Winfrey’s O: Own Your Power events.  Louboutinish move that ends up resolving the case in favor of Winfrey: there’s not a real mark here.

This situation also adds to pressure on §2 exclusions. 

Is there a role for a formal right, akin to ACPA?  Channeling cases into set doctrinal moves?  Tailored test for approval confusion to be evaluated in the merchandising context?

What’s in it for us?  Protect TM doctrine/simplify the analysis.  E.g., use confusing similarity in merchandising cases, limit spillover.  Raise standard for protection: require substantial acquired distinctiveness to limit P free riding.  Address market overlaps: define merchandise market as distinct, reduce congestion pressure.  Also have to handle defenses.

Betsy Rosenblatt: worried that this would just end up creating two overlapping merchandising rights and making it worse.

A: it’s a risk. Brookfield was really horrible and then the 9^th Circuit ended up moving back.  In part ACPA changed that, creating space for Tabari/nominative fair use [hunh, but all the Brookfield spillover was really in keyword ads which is where the change really ended up happening; hard to attribute that judicial learning to ACPA]

Gerhardt: use as a mark is what’s screwing stuff up. If that weren’t an eliminating factor for descriptive fair use, then these cases would be a ton easier; they didn’t intend to use Own Your Power as a mark.

A: worries that goes too far—gets rid of reverse confusion as a doctrine. [but does it? Big O Tires would still exist]

Jennifer Rothman: if we embrace the merchandising right, can we adopt the perspective of those who feel the moral pull to figure out what the internal limits on that would be that would accord with judicial intuitions? 

A: enhanced distinctiveness requirement would be a place for that intuition about desert to play a formal role.

RT: what’s your evidence of spillover? How do you define merchandise? Proposal sounds a bit like double identity, but note that ACPA doesn’t manage to be formalist—it considers bad intent, website content.  Why not require substantial acquired distinctiveness for most if not all stuff put on merchandise?  Cf. Lisa Ramsey’s proposals to increase the distinctiveness bars by a lot.

Laura A. Heymann, William & Mary Law School

Trademark Law and the Strategic Consumer

Courts are often rather blanket in their treatment of consumers.  Knockoff perfume case: court quotes from the papers in saying that could be argued that D’s target demographic, lower-income, sometimes ethnic consumers are less sophisticated and more easily confused, while a skincare case discusses older, educated consumers are less likely to be confused. The underlying message is blaming/shaming. These intuitions aren’t true in many cases: those w/fewer financial resources can make more careful decisions even w/r/t lower cost items, while those w/more may pay less attention. Hard for most judges to imagine what it’s like not to have a car; not to have reliable internet access.  Also should think about how communications policy shapes what kind of phones we can buy, etc.  No group is monolithic, of course.

Paper: asks courts to pay more attention to socioeconomic class, intersection w/education, and strategies of consumers in purchasing in ways that influence the infringement analysis.  If we did that, we might see that LOC analysis assesses the overall buying experience.  The term “sophistication of the buyer” is just not an apt term and has had some bad effects.  It’s really about motivation to pay attention/level of attention in a transaction.  Thinking about purchasers in dollar stores: their exposure to brands and number of brands may be different; thinking about purchasers who are likely to access the internet through their phones. Not aware of any cases that ask how something looks on a phone v. how it looks on a computer.  Cognitive processing, literacy levels interact and matter. If a word is represented more as a visual unit than a lexical one in memory, that might affect how similarity should be analyzed. Encoding for low-literacy consumers can be very specific—even small changes/clutter may change how it’s coded.  Study: Lower-SES parents: food can serve as a symbolic antidote to deprivation: branded food products can communicate love and support as well as dignity where larger purchases are unaffordable. Higher SES parents, by contrast, use denial of child’s request for branded item to teach delayed gratification and to show good parenting techniques.  This interacts w/time/attention given to the purchase.

Post-sale confusion: should think about the ways in which access to goods that resemble high-status goods can be a way of accessing things like jobs, not just group membership—can signal trustworthiness. High-SES consumers often prefer more subtle, hidden marks: conveys association with a smaller group.  Other groups have a higher need to demonstrate outwardly the ability to conform. Tressie McMillam Cotton has written eloquently on this.

Implications: lack of monolithic consumers makes things more complicated; might point in different directions. IIC may even matter more for consumers w/fewer opportunities to correct; post-sale confusion might be less important.  TM can be a way of preserving dignity for a family.  Respect individual autonomy but also protect consumers w/fewer resources.

Q: you’ve convinced me that this factor is bullshit, except for people who specialize in buying a particular thing or for really really high priced items like cars; everything else is too complicated to realistically weigh.  Ann Bartow has said similar things.

McKenna: is your payoff at the retail level or wholesale in terms of thinking of the structure of TM law—hard to imagine lawyers invoking SES successfully.

[Variation in consumers, including attention and preference for cognition, is true but how important is it for this part of the doctrine to acknowledge if the standard for likely confusion is probabalistic? Even if there’s some other set of consumers who are actively benefited by the challenged behavior, that might be better taken into account separately. [FTC disclosure guides have an extensive section on how something looks on a phone!]

Rosenblatt: Maybe the factor should matter more for social justice purposes.

Alexandra Mogyoros, University of Oxford, St. Peter’s College

Pseudo-Certification Marks

Mark politicization: Absolut’s homepage looks like it’s a UN member and asks you to join its movement, which means sending you emails about sustainable cocktails.  UK: certification marks is not about source identification but about certifying that goods/services are certified by the proprietor of the mark in respect of some characteristic.  Her interest is marks that are registered as TM, but appear to be performing “certifying function”—generally a credence attribute about goods/services.

Fairtrade Foundation: It is third-party owned, so they have their own standards.  Cocoa Life: again looks like a certification mark, existing next to other brands, but its function is proprietary: wholly owned by Mondelez and used only on its products, but looks third-party.  B Corp Certified: owned by a nonprofit; certifies the using corporation’s own organization form. 

TM owners fear lack of power/control: you can’t use it yourself if you own a certification mark (limited exception in Australia).  Potential anticompetitive effects (Jeanne Fromer’s article).  Requires more registry oversight, but that may just be a rubber stamp in practice, but lawyers still worry about it.

Is there something about certification marks that is unfavorable to owners? Maggie Chon has been skeptical about incentives to maintain a mark you can’t yourself use and that you can only license (and you may be subject to nondiscrimination measures).

McKenna: what are the consequences/costs of confusing the two? Standard TM theory would tell you the certification of characteristics of a product is part of what we get out of many TMs. So components of certification are embedded in TMs but the opposite is not true (source identification).  They’re also pretty vulnerable to not being valid as TMs because they don’t signify source. 

Heymann: self-certification is part of the confusion. Why do consumers rely on Good Housekeeping? 

[RT: (1) part of what you’re doing seems like a subset of the issue of preferences for processes (great article by Doug Kysar)—from what it sounds like including your initial discussion of Absolut, it’s not so much that you’re worried about certification but about certification of features that are more abstract than other previous certifications like geographic origin.  But if those things matter to consumers, why isn’t that a legitimate way for participants to distinguish themselves?  (2) Cocoa Life: one of these things is not like the others—it seems different because of the misleading appearance of independence.  Why not use false advertising law?  There are some cases on self-certification as false advertising. SC Johnson greenlist case. (3) relevance of competition in the market for e.g. green certification—incentives may be very different if you’re competing w/other certifiers. Which raises the issue of greenwashing which I didn’t see in the paper but might be a place to go: maybe there shouldn’t be very many certification marks.

Zahr Said: Craft beer might be a good example: 2017 certification exists. Arose partly b/c of fear that major brands were calling themselve craft beer and weren’t.

McGeveran: the product being marketed is the endorsement of some entity.  If that is a legit way of thinking about it, then what are the implications?  Maybe they are housed comfortably as TMs, just for a different product.  Greenwashing: is the attention cost of clutter also relevant?