TM Scholars' Roundtable: Session 2: Relevance of Ornamentality Elsewhere in Trademark Law

Does the ornamentality doctrine have doctrinal purchase elsewhere in trademark law? For example, embedded within analysis of likely confusion factors? In the fair use calculus? As the basis for the development of “defendant-side functionality”? In what ways is the ornamental nature of a defendant’s use relevant to defences based on artistic or expressive use (or some other defence)? In other defences? Should the assessment of ornamentality relevant to the legality of a defendant’s use mirror the assessment made in the acquisition context? Is the invocation of ornamentality in the infringement context simply a re-assertion of the supposed trademark use doctrine? If so, are there lessons to be drawn from the debate over the existence of that doctrine?

Introduction:   Ilanah Simon: EU perspectives from the infringement side of things. Danger of waiting until the infringement stage, which is that you’ve already given the right to someone who can assert it. People may not understand the limits of the right. Separation of decisionmakers means that rights are granted by a completely different institution than enforcers. UKIPO/national offices will not talk about scope and have no mechanism to do so.

May be harder to show likely confusion where there’s no distinctiveness; focus on distinctive components may be part of that. But there is an assumption that registration = minimal distinctiveness unless validity is questioned. So granted mark is rarely interrogated.

Lack of concrete examples of nontraditional marks being enforced in court also makes it hard to say what’s going on.

Some courts/authorities: Mere embellishment can’t infringe because there’s no association if it’s perceived as an embellishment. But she’s not convinced this is viable. Hasn’t been raised recently in EU. EU has moved on: dilution/unfair advantage. Adidas theory: If you use two stripes, then of course you’re trying to make an association with three stripes. Even if it doesn’t blur, it takes advantage of Adidas. Even though rejected in Fitness World, still works as a general theory. A man riding a horse on the front of a t-shirt: of course you’re trying to make that association w/Polo, equestrian organizations aside. Even if you put Lettuce Turnip the Beet on the front of a shirt—though if nobody’s heard of it, perhaps you’re fine. Alluding = taking unfair advantage unless there’s no reputation. But our reputation standard is low.

Defenses: we don’t have fair use as a catchall; specific list of enumerated defenses. But there is a defense for nondistinctive use. Don’t really know the boundaries of this yet. Extended from descriptive use (sort of like US descriptive fair use).

EUIPO not as diligent as the USPTO. LTTB is registered in class 25.

Gangjee: since they removed disclaimers, there are also possibilities of using “bits” of TMs that aren’t the distinctive parts.

Rebecca Tushnet: Simon outlines the “Nose of wax” problem very well which also exists in the US. PTO very occasionally recognizes this—weave pattern for Bottega Veneta, looked at the definition of the mark and said no one would notice the millimeter width of the weave.

General problem often highlighted by legal realism: lawyers deal with complex problems by solving a related, simple problem and shoving the complexity to some other area. In TM often done with validity v. scope, which will magically solve problems with validity or at least be someone else’s problem. Development of defense side ornamentality or functionality is perhaps a natural result of this phenomenon: all other issues have been relegated to scope, so it’s not surprising that this one is too. TM use was largely rejected under that name but is too useful to give up and so it is resurrected under various names (looking at you, Louboutin).

Most functionality is bilateral by nature. Defendant-side functionality would almost qualify as a thought experiment to test what we really want functionality and ornamentality to do, except for the fact that it’s shown up at least twice at courts of appeals (Louboutin and Lettuce Turnip the Beet) both of which lacked rigorous language to identify the real problem with the litigation.

Suggestion: forced position marks? All 2D marks for goods require positional identification unless applicant shows function regardless of position? Way to deal with specimen laundering, as in LTTB and in Ohio State’s THE. PTO forces change in description of mark/goods & services all the time.

LTTB sort of uses aesthetic functionality instead of ornamentality/failure to function, but that is a concept with huge difficulties of its own and not obviously superior to the other concepts. One thing that has happened is that fashion and luxury brands have marketed themselves in ways that mean there are now two different versions of the concept “the thing the consumer is actually seeking to buy”: sometimes, if the claimed feature is the thing consumers want to buy, that makes it generic/functional, but not if the value of owning an object turns on how identifiably branded it is—This phenomenon of two different consumer motivations sharing the same name then makes it harder to understand what non-TM functionality looks like. Although Job’s Daughters is often disparaged, it does provide a possible path to distinction—social signaling of membership in a group is distinct from the existence of TM rights in the membership group. A membership group might not have brand value (Happy Valley PTA example) v signaling I can afford LV, which does depend on brand value).

Ornamentality looks better than aesthetic functionality in many situations because it serves as a shortcut to avoid aesthetic functionality’s “significant non-source related advantages” inquiry and deals with the key problem of “significance.” [Gold toe: does one need to sell gold socks to compete? But no one would think that the gold toe contrasting color TM would cover all-gold socks; how do we turn that into doctrine? F2F works pretty well.] Which is the same as the problem of market definition, with which TM law has long grappled unsuccessfully and largely silently. If we don’t have a coherent idea of TM market definition the problem will pop back up in other places no matter how hard we try to deny that. Qualitative/quantitative ideas of significance; relevance of free expression to determine significance; appropriateness of skipping market definition for registration in particular where no one registration may be likely occupy any given field but a rule allowing registration will depopulate the space of free expression.

Potential additional justification for these doctrines: Non-source significance might be too stable to be easily moved by putative TM ownership: result: deadweight loss and no consumer protection function. If courts won’t invalidate marks (or can’t in the case of incontestable registrations) then doing on the defense side at least preserves something.

Another way to say it: Carol Rose’s Crystals and Mud in property law. Ornamentality is right now part of the mud and in need of some crystals to help it out, which is worth trying even though we may recognize that mud will inevitably reenter the system.

Discussant:      Barton Beebe

Adidas v. Fitness World: Adidas even lost a case here on stripes! How often do we really talk about ornamentality and distinctiveness w/r/t defendant’s conduct? Descriptive fair use is one example in the US. Typically D argues that I’m using the term in mere advertising copy/not in a TM space. It’s text and not design so we don’t call it ornamentality. Other place we focus on D’s use is dilution, which seems to imply that the D must be using the matter as “a mark or trade name.”

Defendant’s use as aesthetically functional—Betty Boop was the beginning of LTTB, and more interesting b/c the 9^th Circuit initially issued an opinion holding that BB on a t-shirt was aesthetically functional, then withdrew the opinion and held in favor of D on an entirely different made-up grounds. So we’re close to having this doctrine but courts won’t yet take the final step.

Rogers v. Grimaldi: a test for artistic functionality? Does do some work to change from aesthetic to artistic--artistic relevance seems to be a kind of D-side functionality.

Competition policy: if we took that as seriously as the 1A, aesthetic functionality would be as rigorous as Rogers. But it’s not there b/c of property rights.

Non-distinctive use: Distinctive of what? A use might be distinctive of something but not source—if use has to be non-distinctive in the general sense, D has used the sign in a way that’s meaningless? But if it is “non distinctive of source,” then that makes for a broader defense. Ps never want you to hear “distinctive of source,” only “distinctive” [of something].

Ramsey: BB is interesting because they used a public domain image on the shirt.

RT: Rogers point is connected to the idea of difficulty of defining “significant” non source related meaning: 1A interest is inherently significant in the US just as a 1A violation always causes irreparable harm. 1A and © public domain seem to answer the market definition Q.

Suggestion for textualists: Ornamentality and muddiness of FTF may also be connected to ideas about equity, which might get expressed especially easily in defenses. Lanham Act’s “subject to the principles of equity” in 1117.

Beebe: Romag makes that difficult since Alito sneered at it in his opinion.

McKenna: Lack concepts in scope that handle all the things that we say, in validity, need to be handled in scope! B/c aesthetic functionality has previously been conceived of as a validity doctrine, it lacks the texture that we need for it to work as a defense where we need to know the particulars of the use. Gold toe sock example: we’re forced to talk about all of this as a Q of the scope of the rights owned by the P b/c we have no way to limit infringement as a theory b/c of its infinite capaciousness.

Attracted to thinking of all marks as position marks. Similar to an affixation requirement. Use requires a particular type of use. We washed that out of the system but didn’t replace it with anything. Claiming became much more abstract, proved w/single specimen but allowed them to claim almost anything. Do wonder how you would prove that position was irrelevant.

Janis/Dinwoodie: position marks would lead to a lot of filings of different positions. [I might be ok with that.]

Fromer: Conclusive v. presumptive scope/claiming: we could give you what you claimed in your registration more presumptively but any commerce-based claiming should require further evidence. Supports a positional claiming idea, but extends beyond position to classes of goods/services and ornamentality.

Louboutin goes beyond mere ornamentality; there is source signification but we might not want to give it broad scope. So how do we separate merely ornamental uses by a third party from those that: confuse consumers? Don’t intend to signify source? Something else? We have to specify the question first and also think about whether there is a possibility of answering it. Maybe we get formalistic and say all-red shoes are “merely ornamental” but still weird. [That’s what’s so good about “use”—we don’t have to say there’s no confusion or no function; we just say no “use.”]

We could pierce the validity/protection-side formalism of inherent distinctiveness on the defense side and allow people to say

Dinwoodie: you get presumptions of limits on the registration in registration-based systems. But prosecution history estoppel works best if you only get the right if you register, but another way to avoid that in TM would be not to register and sue based on common-law rights and then your

Ornamentality takes hard questions of market definition out of the equation; market definition is very difficult and may not be worth doing in a TM case unless we want them to be antitrust cases [which are awful]. Inherent distinctiveness in the EU about whether this is outside the norm of the industry is likewise a way of avoiding difficult consumer perception questions. Descriptive fair use in 2d Circuit: What they’ve done by saying we won’t have a binary approach to descriptiveness, but looking at purity of the use, makes it less certain but possibly broader: a tradeoff.

Sheff: whether an individual rule is crystalline or muddy is different from how we understand doctrinal relationships.

Dinwoodie: yes, but we can also focus on the avoidance of litigation and error costs, especially when we are dealing with imprecise categories. Drawing a clear line through a grey area doesn’t get you very far.

Dogan: with TMEP’s merely ornamental/distinctive division, that may signal the importance of time: over time, something that began merely ornamental may achieve source significance.

McKenna: But the question is how you overcome that: what if there’s 5% source recognition and 95% of consumers perceive it as ornamental—is it still merely ornamental? It’s almost never either/or.

Ramsey: Ornamentality differs from aesthetic functionality in that “merely,” which allows rejections to be overcome on evidence of secondary meaning. 1A perspective: one word on the front of a t-shirt is not interchangeable with other words—Cohen v. California.

Gangjee: A line of German cases about chocolate bars: Claimant successfully claimed that acquired distinctiveness on their side infects how people would see the defendant’s use of the same shape, making it trademark use on their side as well.

Ohly: Adidas: the fact that a sign is viewed as embellishment by part of the public is not a barrier to protection, but if the relevant sector of the public views it as only embellishment then there’s no indication of origin. Exactly the same problem. At the European level, there’s no clear TM use requirement; the cases are contradictory. But in German law TM use is a requirement for infringement. Example: claimant Fisher/skis, have a sign consisting of triangle consisting of 4 triangles; D used triangle as a pattern of hoodies—Serpienski triangles. By reference to consumers in this market: claimants argued it’s now usual to print TMs all over a luxury product; court of justice said this was a different market, for hoodies. A single triangle used on the “logo spot” would have been decided differently. [I think there’s also something here about continuous perception—it’s not just that logos go all over a product; it’s also that a repeating geometric pattern is just perceptually different from a big logo or a repeating nongeometric logo.]

Linford: positional marks might not give us what we want b/c of the doctrine of equivalents. Big entities would be able to get nonpositional marks.

Beebe: how do you people do anything with ECJ opinions? #darferdas gets an opinion and then goes back to the national court, which does … what? [allowed the registration]. It may be hard for D-side aesthetic functionality to get a grip at the courts of appeals, but note: Betty Boop district court, on remand, explained what it was doing by finding as a fact that D’s use was aesthetically functional and not a source-identifying TM use.

Malleability of consumer perception: problem of circularity and greater need for formalism if we think consumers are malleable in what they perceive as marks. [The flip side being with things like the Mona Lisa and the n-word: if not malleable, then our priors will make it very hard for people to register those even after a bunch of use. And if, as is quite likely, malleability differs across different types of uses and symbols, then our task gets more difficult. Wal-Mart is, in part, an expression of the belief that consumers are not particularly malleable when it comes to product design.]

Davis: Steps before infringement analysis—there are different functions of a TM in the EU—advertising, investment/misappropriation and dilution concepts, which can be far away from the actual mark if it has a reputation. TM use doesn’t have to be about source. [But we don’t know what those functions are or how they differ from the source indication function.]

Mid-Point Discussants: Stacey Dogan

TM looks to intrinsic meaning and value of subject matter and source-related meaning and value of subject matter, and some doctrines outside of eligibility involve one, the other, or both, and that’s when courts really struggle/doctrines become incoherent. Nominative fair use involves source-related meaning and one could easily imagine circumstances in which we could think about ornamentality in the context of commentary about a TM owner or content that has come to have source signifying meaning, where the D’s message is clear we could treat it as protected under NFU. So too with Rogers v. Grimaldi: the value is in the expression, not the source identification. Descriptive fair use is interesting to think about in context of ornamentality: TM owner could have rights in visual mark that as applied to a different type of product is accurate and descriptive.

Aesthetic functionality: Distinctiveness should never be allowed to trump assessment of intrinsic value—one risk of shifting to D-side orientation could be to pollute that doctrine somewhat, allowing courts to find that a product feature that once had independent intrinsic value not related to TM significance now serves as a TM. Some risk of blending source and non-source value thus increasing TM owner rights over time.

Not sure it’s possible to have a coherent definition of markets in TM. In antitrust, scholars increasingly argue that market definition is incoherent and indeterminate. Tremendous interactivity and circularity in defining markets and assessing power in markets. Similar in TM. [So should we have aesthetic functionality at all? Or should we try to figure out what substantial non-source-identifying value means in a way distinguishable from “markets”?] Courts haven’t figured out how to disentangle aesthetic features and she’s not sure whether it’s really even possible. So can’t help but come back to iterative relationship w/protectability—if we don’t answer the necessary questions at that stage, then we need other tools to evaluate a defendant’s use and its context. Some way to link what the decisionmaker thinks they’re doing—a narrow right—with the later uses.

Luis Porangaba:

Infringement/scope approaches move away from the binary mindset of registration. Reality is too complex for that—for some or many TMs, yes or no is an easy answer, but there are others that are hard cases. EU approach on infringement is too insulated from context. This can create many problems especially since goods/services are also taken in the abstract. Policy levers and doctrinal devices created to offset the abstract registration inquiry to infuse infringement assessment with necessary context.

German examples: Adam Opel: Opel, like US Chevrolet; used to be an independent market for toy replicas where one would try to make a perfect replica miniature of a car. Opel tried to assert rights in the logo used. Looks like double identity. Language of TM functions had been used previously to expand rights to control merchandising and parallel imports, but repurposed to say that the use must require harm to the origin function to infringe, and toy cars don’t do that. The history of the toy car market as empirical evidence: TM use language, but based on the history and resulting perception of consumers as a faithful reproduction of a car in miniature.

Berlin court case involving MPA/Oscar statue. They didn’t register it as a TM, and D made miniatures and sold them. Court found infringement, but in dicta, judge said there was TM use, but other uses will not be relevant. Use in toy cars is for faithful rendering of reality; a toy racetrack simulates reality and therefore Opel mark does too. A film studio producing a dollhouse with Oscars in it would be a mere reference to reality and the Oscar in the dollhouse would be part of the scenery. [Sounds like Gordon v. Drape version of Rogers v. Grimaldi!]

Finally, a shape case—recognizable packaging w/brown bottom, but chocolate shape itself was registered. D made similar chocolates with translucent packaging, not gold foil. No TM use b/c consumers would not place much reliance on the shape given the packaging. Claimant’s use therefore bore on the consumers’ perception of the D’s use. Similar to Kit Kat, but at the infringement stage. Dicta: claimant argued that letting D off the hook would allow it to use even closer packaging, but the court said no, it would look at different package and might give different result.

So there’s still formalism in likely confusion once European courts find TM use. Forget everything contextual just discussed; a lot of the contextualization takes place under TM use.

UK developments: very few purely/mostly ornamental cases. Mostly developed in context of nominative or referential use. O2 Holdings/comparative advertising. Comparative ad used recognizable play on O2’s orange bubbles. Claimant argued: compare bubbles to bubbles, mark to mark/same services, and ignore voiceover and other elements of ad. But: no harm to origin function. Methodology of assessment: take into account context of use, not just bubbles to bubbles but bubbles to comparative ad with voiceover disclosing the ad comes from competitor.

Specsavers: mark for sign comparison, not mark for mark. Sign means integrated into surrounding context. This suggests a threshold of materiality being injected—confusion is not abstract but assesses whether the use is misleading in context. Similarly w/ BMW logo used by repair company—court says that what really matters is informative use v. misleading use. Only the latter harms the origin function.

Mike Grynberg:

Defining what we want to be doing: improving TM law as a whole, deter over-assertions of rights/avoid in terrorem effects from uncertainty, something else. Can we live with situations w/popular brands having broad merchandising rights if they’re truly popular/have a lot of goodwill, and will that change the shape of aesthetic functionality in ways we can live with? Meaning accrued over time might beat back aesthetic functionality in that world.

LTTB is very close to doing the half a loaf in that case. It is a word salad so don’t take it too literally but a lot of what’s there is close to what people here might be happy with. Treat it as an aesthetic functionality case and cite Qualitex, saying Qualitex means D wins. Au-tomotive Gold distinguished; goodwill matters not for a source claim, but for an approval claim. Established a famous mark—not just distinctive—may have broader rights, exploiting consumer interest by selling t-shirts—LTTB is not in the same position.

A formalist demand that courts reach the merits and not handwave has risks too. Circuit courts have split on whether they can just look at something and say it’s not confusing. MTM and Tabari are both like that. Recent Dropbox case: it probably isn’t confusing, but it has to go to a jury; dissent says “nobody could be confused, come on.”

If we took approval seriously: courts sometimes handwave context, as in Maker’s Mark case where dripping red wax seal is infringing despite completely different products and labels. Court says this is about association, and context doesn’t matter. But there could be a move with approval cases to focus more on goodwill, as in LTTB, as the thing that matters in the approval context. No goodwill, no approval likelihood of confusion.

McKenna: it can’t be the case that a nice-looking mark is not protectable. But that means that using aesthetic functionality as an outlet covers many things: some about the validity of the sign at all; others are about “I’m not using it in source-designating ways”—and that does threaten the strong character of the doctrine, but it’s not really what functionality is. Qualitex: Where a color serves a significant non-TM function, whether to symbolize heart medication or to satisfy the noble instinct for beauty—that’s not distinguishing types of function or demanding aesthetics. If functionality disqualifies things w/ a nonTM function, whatever that is, then we don’t have to do as much work distinguishing utilitarian and aesthetic functionality. Au-tomotive Gold isn’t aesthetic functionality, it’s use as a mark: how it’s being used in context. But this analysis is distorted b/c there’s no TM use doctrine.

Dogan: Value that is inextricably related to source is a persistent problem, as in Au-tomotive Gold. Or when someone has had exclusivity in something for a while and the court can’t figure out whether demand comes from one aspect or another.

Janis: reminds him of design patent story, which also needs labels for validity and scope.

RT: Relationship b/t ornamentality and definitions: It is possible to demand greater specificity in registration or in definition of claimed unregistered trade dress—In re Vertex/the 2d circuit case about claiming greeting cards cut in the shape of objects—both cases refused to consider secondary meaning b/c the TTAB says the definition is too broad—so broad it became functional—where 2d Circuitsays no TM owner can claim an idea. It’s possible for one to define one’s claim at a level of generality that makes it functional or otherwise unprotectable when a better claim might have something to it at least with secondary meaning. Right now we don’t have a great name for cases like these, or Betty Boop, or LTTB, or Louboutin. But if we put them together we might see how we could identify types of privileged uses.

Dogan’s point: If aesthetic functionality became primarily a D-side concept, then we might have essentially an unfair competition/labeling regime: would that be so bad? [She points out that we might not get even that given developments since Kellogg.] Compare D-side utilitarian functionality, which also does exist occasionally: Coke bottles used to package compost and other recycled products.

Penguins case: Perry Ellis/J Crew dispute where PE has registrations for specific images of penguins, then sues J Crew for having a season where penguins are one of the animals they choose to decorate their clothes: how do we want to handle that? If we don’t have flexible aesthetic functionality or TM use then Perry Ellis gets to own all penguins on clothes.

On the use of history as empirical evidence: when tech changes the analogous uses are no longer protected: compare metaverse.

Porangaba: the principle can be generalized from the history. Do you believe the virtual car comes from Opel? If not, no harm to origin function. But we cannot have a disjointed analysis in thinking only of functions in the abstract.

Dinwoodie: creating buckets of protected uses can happen, as with © fair use. There are different degrees of harm; even Rogers v. Grimaldi has limits. But it’s a difficult balance b/c there are chilling effects.

We can require precision both in registration and in court, but the problem is you’re often dealing with a wide range of uses (by P and D). Questions about whether to isolate or aggregate the different uses. Easy to look at specimen in registration context, but harder to do in infringement.

McKenna: a good argument in favor of robust unfair competition doctrine. Genuine risk of passing off=residual role, matched remedy.

Silbey: Copyright infringement is a very different test from multifactor TM infringement, and therefore may require a different fair use test in response.