Fourteenth Trademark Scholars’ Roundtable: Are Key Trademark and Unfair Competition Doctrines Anachronistic?

UCLA School of Law

Mark Janis: 1^st day of TM: students’ experience of brands as used by owners & 3^rd parties is so disconnected from the historical traditions of TM. Anachronism may give away too much by suggesting the cause of disconnect is the passage of time—that might not be true or might be partly true. Or is it just the messiness of common law adjudication + rapid tech change? Or are these doctrines autonomous—maybe doctrines should be decoupled from the circumstances of their creation. Disconnect yes, anachronism maybe.

Session 1: Identifying and Explaining Anachronisms

Introduction: Mark McKenna: Every year, a TM exam could be written differently: one a very conventional exam question with Company A using one mark and Company B using a similar mark/similar goods, conventional walk through confusion factors in the way the test was designed to deal with. Or you can write an exam about the stuff actually in the news, which is often not a model the LOC factors were meant for—uses on Instagram, collaborations with artists, etc. We may be teaching a doctrine modeled on commercial activity that doesn’t take up much of the space of the way people use TMs. Are our doctrinal tools workable for the conflicts that arise? JDPI amicus brief was describing how LOC factors were not developed for these kinds of cases. Not just for likely confusion, but also use as a mark. Collapse of separate body of unfair competition, but also old-fashioned ways of thinking what it means to use as a mark—a certain kind of way of expecting products to be introduced to the market, that is no longer reflective of lots of stuff that goes on, especially digitally. Is merchandising really the outlier or is it now really the model of TM law. So we looked for doctrinally linked pairs of cases that highlight different commercial practices/evolution of doctrine over time. How tightly are they connected and do they reflect same doctrine/different circumstances or something else? E.g. LTTB v. Redbubble v. the Abercrombie spectrum.

Jessica Silbey: doctrinal tools that become less useful over time b/c of unforeseen developments: LOC factors, Abercrombie spectrum. Is it a tool that’s lost utility or just a tool that shouldn’t be used in specific circumstances? What causes us to use old tools in new situations? It’s a problem of legal reasoning, not just common law—the way we argue cases is to apply old tools to new situations.  Is there something special about TM? Combo of statutory law layered with multifactor tests might make these tools stickier than other areas of law; where the statute is clearer, maybe it’s more adaptable.

New facts: Many doctrinal foundations—comparative advertising, LOC where market structure and expectations of consumer behavior have changed. Think about where cts have stubbornly refused to recognize the existence of new facts—MSCHF/Vans case is one of those, where material alteration/first sale doctrine need to be applied differently b/c the world has changed and the ct refuses to recognizes that. But Multi Time Machine is recognizing that Brookfield needs to be changed. What’s the difference (other than circuit)? Lancaster watch/Hamilton case and Wavy Baby/MSCHF case can’t both be right—that’s either a totally a new watch and materially altered or neither of them are. Consumer tastes change, rise of upcycling and customization, are important changed facts.

In con law we attribute doctrinal shifts to ideological/intellectual shifts—new ways of thinking about industrial organization. Are there things in TM where we see intellectual shifts like that? The “use” cases maybe, aesthetic functionality.

Other doctrines developing in parallel: the First Amendment is the elephant in the room, w/unintended consequences for financial regulation, public accommodations, etc. Aesthetic functionality, affiliation/sponsorship now needs to be seen as affected by First Amendment. Ornamentality exceptions, like LTTB, versus dog toys & shoes, which are not seen as the same—wrestling with speech v. product v. conduct. Maybe that collision explains some of these anachronisms.

Are there other doctrines that may be working in the background? Franchise law, labor law, antitrust law.  [Standing?]

Discussants:    Dev Gangjee: If even what counts as an indication of source has changed so much, must wonder where TM is going b/c of franchises, contractual arrangements and licensing—the whole guarantee of quality story just doesn’t make sense any more. TM has achieved context collapse: losing unfair competition and becoming formalist—similarity = infringement and that’s it. High formalism in EU TM law; AI systems are measuring only sign similarity and product similarity. Methodology and approach affects content—multifactor tests are the ultimate rebuke of realism to formalism.

Jeanne Fromer: Doctrines have ossified in unintended ways. Distinctiveness: Abercrombie gave a shorthand to help categorize marks and protectability/scope thereof.  But it hardened and became unmoored from “which marks are competitively dangerous to protect”—categories got their own internal rules and shorthand, such as “a fanciful mark isn’t in the dictionary” even when it conveys its meaning, often descriptively—Clorox.

Judge Leval did the right thing quite recently in Rise & Shine v. Pepsico—pulled back and said don’t harden the categories too much. Even a suggestive mark can have a primary meaning so closely linked to goods/services that the mark is weak, like RISE for cold coffee. If the suggestion of a suggestive mark calls up a central feature, while a descriptive term describes a trivial feature, the suggestive mark can be weaker than the descriptive one.

Sometimes it’s our doing: as scholars we sometimes understand things more categorically than courts intend. Brookfield v. MTM cases: you can agree w/outcomes or not, but decisions are really nuanced. MTM is saying “it’s about exactly how Amazon presented its search results.” But we tend to say “MTM killed IIC online” and we shouldn’t understand it that way. There are some things on Amazon that feel potentially confusing. Self-reflection: ensure we’re extrapolating correctly and with nuance.

Many of us talk about Rogers in this way as a categorical rule, but the VIP case shows there’s nuance in those cases that can get lost.

There’s so much more reliance on empirical evidence now than in the past, and it raises normative v. empirical questions. Relates to questions like “trademark spaces” and linguistics in TM. Types of empirical evidence also change—linguistics versus marketplace evidence to assess genericity. Booking.com’s focus on survey evidence—courts very open to new evidence, but we ought to think more critically about what each type of evidence offers and does. Linguistics v. what consumers think v. what’s going on in marketplace.

Smith v. Chanel: readily accepted tradeoffs against consumer confusion for purposes of speech and competition; Coca-Cola and other cases not as much. Thinking about anachronisms/path dependencies, it can be helpful to think about whether we structure something as a defense or part of the confusion case, and going back and forth can make it easier or harder for a consideration to matter.

Lemley: don’t assume we’re moving in the right direction. Many anachronistic cases have been decided in last 20 years. Borden was wrong and we were right to broaden the concept of confusion, but many things ignore that changes in the law move people’s perceptions as well. Penn State merchandising case might seem like an anachronism, but he thinks it’s a great case.

Rules v. standard: you might say a rule is anachronistic, it’s easier to identify whether that is so. Before 2020 we had a genericness doctrine, now we don’t—the rule that you can’t come back from genericide was a rule and now it’s just gone. If our doctrines our standards, we tend to think of them in rulified terms, but that’s not how standards work. You look at datapoints and they might migrate in a particular direction but that doesn’t mean they’ll all be the same.

Barton Beebe: Intellectual movements—do they have any effect on TM law? Law and econ of course, but what else has affected TM law as opposed to TM commentary? Might not look like TM is constantly struggling with tech, versus © and patent. But: Amazon has basically replaced TM law, and that’s a tech development. So is the domain name system, which brings principles from guild world in 1400s into cyberspace. Dawn Donut—2d Circuit has expressed skepticism but it’s still there—it does seem like it’s from a different era. Assignment in gross seems anachronistic given the development of licensing. So the larger Q is to what extent does tech change affect the premises of TM?

TM law doesn’t seem to be getting better; we don’t have a whiggish history of progress. Is that lack of progress producing the anachronisms?

Jake Linford: First Amendment Lochnerism—used as a deregulatory move can happen on a number of different fronts. Worried about trusting 1A to do good work here. Contract law: recently, Adidas decided Ye was too toxic to work with and cancelled deal. If I have a shoe brand and want to collaborate w/some artists and not others. To the extent that contract law has let parties decide in whom they want to place business trust, Nike can tell MSCHF thanks but no thanks. But that opens some 1A space to ask whether Nike is exercising rights in ways implicated by 1A. Generally private action doesn’t count for 1A purposes, but there is pressure on that [because courts are enforcing the claimed right of Nike to control whether you can modify a shoe without a contract].

Rules save resources in a resource-constrained world; Abercrombie can be ok if it’s right most of the time—does it save us time in most cases? Does the equitable power of courts provide enough flexibility to know when to vary the rule? [That sounds like describing a standard, though, especially given litigation incentives, as Glynn Lunney has written.]

If we don’t have surveys, what do we have? His prelim research suggests a lot of judicial notice and a parade of individual witnesses on both sides. Maybe a good survey economizes that march of the witnesses in a way we like. Without a particular tool, what should we replace it with?

Jeremy Sheff: Existence, nature and scope of judicial discretion: a broader ideology that has a huge effect on TM cases. If judges are supposedly just calling balls & strikes, the opinion will write a certain way. In Judge Leval’s time, judges were judges in that they exercised judgment and discretion as part of their function. That’s one way intellectual movements about jurisprudence can shape TM. TM law in EU has moved to more formalistic application of criteria rather than equitable judgment of unfair competition—a similar shift.

Other battle lines: First Amendment as deregulatory weapon. That’s the obverse of another aspect of judging: role of judiciary in social regulation generally, and whether private power ought to be subject to countervailing power in federal courts. That will affect TM too but not b/c it’s a philosophy of TM.

Bob Bone: In torts, we have common-law greats like Judge Traynor who are willing to innovate—strict liability, etc—in response to broader changes in general values. We don’t seem to have that in TM—less sensitivity to external changes; moves like molasses. Why is that? One reason may be lawyers. Practitioners wrote on TM in the early 20^th century: Rogers, Callman, Schechter; part of the broader intellectual world but also as practicing lawyers maybe more constrained. As we get more specialized in our practices, maybe that is affecting ability of doctrine to respond to circumstances.

While costs of TM expanded, the benefits are expanded as well—changes in the way we view the benefits of marks. TM protection as creating incentives, or protecting property like ©. Why? Lawyers are using TM law to fill gaps. Doctrines that served a different purpose originally can be repurposed to do that.

Lisa Ramsey: Divide on Rogers: 9^th Circuit uses it as a replacement for standard confusion test; SDNY in Metabirkins: use LOC test first, then have jury apply 1A defense. That might change the outcome if the factfinder first finds infringement and then decides whether there’s any defense.

McKenna: Shift to textualism: JDPI briefing, the attempt to claim you can find answers in the text of the Lanham Act, which is obviously bonkers and yet the audience is open to it (compare Star Athletica). Tort: Different courts often have different normative goals: some are more interested in compensation for injured Ps, some in incentives where P is just a tool, some in punishing bad actors. Teaching torts alongside TM, one striking difference is how much TM pretends it’s just finding stuff in nature in commercial practice and following consumers—hides the inevitable normativity of the various choices. [Indeed, where did we get the rule that 15% confusion is a lot?] We’ve been fighting about the ultimate endpoint of following what consumers do, which seems to be rights in gross. Any kind of arrangement is conceivable now. Brand owners are doing things to themselves we used to think we wouldn’t do. It’s getting harder to present to courts that not everything that allocates value to TM owners is good. TM has its own reasons and internal limits that aren’t just derived from what we see in the world.

Chris Sprigman: Came to TM through competition/antitrust. 40 years ago a lot of federal judges thought antitrust was more important than TM and so many judges saw TMs as anticompetitive; now many of them don’t. Antitrust is the polar opposite of TM in openness to ideological revolutions; complete (but shallow) reassessment of relationship b/t TM and competition. Neo-Brandeisians haven’t focused on TM, but are getting there, and they may find that the 1930s and 40s writing will seem correct: TMs are more a force for oligopoly than for innovation, which might then affect antitrustàfederal judiciary since antitrust lawyers are elite lawyers and TM lawyers aren’t.

Nuance is overrated in law (contra Fromer): Antitrust understands that deeply and used to eschew nuance even more. If two bodegas decide to fix the price at which they sell Diet Coke, their operators go to jail. That’s a correct result! First Amendment tests: they should largely eschew nuance, as 9^th Circuit did with Rogers; 2d Cir. did too in Rogers itself, which was misunderstood b/c in Twin Peaks both sides had First Amendment interests—the first line of Twin Peaks is that it involves the exception to Rogers. Misunderstood by dcts that don’t have a ton of time. Nuance is the enemy, not the ally; breathing space under the 1A is not an anachronism. We shouldn’t have trials over intent or whether an Eveready test shows 19% confusion or 38% (as it did in Rogers). There are arguments on both sides, but that’s the real problem w/anachronism as a framing device—it’s useful, but normative Qs always proceed it.

Robert Burrell: If the claim is that ossification has led to TM’s misshapenness—not true in UK b/c TM keeps responding to calls for modernization—law fears being left behind state of commerce, advertising practices. Robust TM use doctrine in 1920s was swept away in 1938 b/c 1927 courts didn’t appreciate the hugely significant rise of advertising which would harm TM owners unless stamped out. Time and again, the harm to the shape of TM law has been caused by demand to “reflect commercial reality” and protect “brands” rather than TMs. Assignments in gross are a good example. UK TM law is not good b/c it got rid of the prohibition on assignment in gross; we need more anachronisms. The internet is a partial exception—there has been an ECJ commitment not to break the internet, which means that pushing back against TM expansionism has also been done in the name of modernity.

Stacey Dogan: What gets called law & econ is often libertarianism/view of world as adulation of commercially successful individuals and disdain for community/anti-communitarianism. That’s influenced every aspect of our law for the past few decades. Fluid/flexible legal standards allow judges to be influenced by that. Successful people shouldn’t pay taxes! It’s all part of the same view.

Can’t start from scratch b/c law has reciprocally influenced commercial reality. But what would a rebuild from the ground up, starting with today’s commerce, look like? Chris Leslie says a big problem of antitrust is not a problem w/frame, but that courts have simply ignored the facts b/c of their framework. We could try to bring anticompetitive effects forward.

Mike Grynberg: TM is pluralist in a way a lot of us don’t like. Anti-free-riding impulse will always be with us. LTTB is different b/c plaintiff looked more like a free rider (on the aesthetic meaning). Always been with us: there was a 2 Justice dissent in Kellog v. Nabisco. Old cases were also shorter and easier to read—there weren’t multiple steps to run through. It’s not just that we have ossified structures, but we have structures upon structures—in Borden, the court says the label is fine and does the multifactor test. In 2016, the Second Circuit says do multifactor test + NFU factors. As Tushnet says, “TM law never gets less complicated.”

Laura Heymann: district courts fear reversal; they want to be safe and claim calling balls and strikes, unlike Justice Traynor on the Cal. SCt.

Consider also how PTO examiners are trained. TMEP purports to instruct them; they’re often cutting and pasting from TMEP or prior office actions. Maybe that’s inherent to an admin system. Consistency, predictability, not rocking the boat is a value in the system, which may bubble up.

Mid-Point Discussants: Rebecca Tushnet

[I think that’s not true—700,000 applications a year can’t produce consistency, and also most Art. III judges have no idea what registration is and just guess at its general meaning.]

Figure skating, poetry, intermural speech and debate, and law: what do these fields have in common? Development of elaborate internal systems that are often impenetrable to outsiders but that make sense to insiders to distinguish good from bad performances. An aesthetics of law is often, today, cashed out in a multifactor or multistep test—I think that occurred in formalism too, even if what we now call factors were instead presented as a decision tree.

Carol Rose, Crystals and Mud, a tendency for law to grow more rococo until the legislature or someone else w/authority steps in and tries something new, which then accretes its own apparatus that allows explanation; criticisms of formalism can now be applied to legal realism (accretion of multifactor tests—2d Circuit as case in point where for nominative fair use they just say “throw it into the pot” and also say every factor has to be considered in every case, except maybe Rogers cases).

Con law concepts: Reva Siegel & Jack Balkin: preservation through transformation. The doctrine has the same name but considers different types of evidence and thus produces different results. Often works to scientize a doctrine. The Brandeis brief is a good example: by claiming scientific, empirical support it contributed to the idea that that’s what government always needs to justify its decision to regulate, which might be a good change but is definitely different than it was before.

Larger problem w/ TM system as a system of law is its lack of adversarial design: design with assumption that people are going to be pressing the boundaries in asserting claims (Glynn Lunney’s work on degeneration of TM doctrine)—there’s a consensus of the powerful about whose claims are dangerous (class actions—CAFA; prisoners—AEDPA; securities plaintiffs—PLSRA). The only recent recognition of incentives to exploit the law in TM law is the change from some circuits recognizing niche fame to being told not to do that in the TDRA plus a little bit of greater cancellation options; the TMA went in the other direction, rewarding aggressive claims w/the threat of injunction, on irreparable harm. Maybe it is time to try to put TM into the larger progressive antimonopoly discussion.

Abercrombie v. LTTB: Use as a mark’s absence has led to a realignment around informational/decorative to take things out of the category “arbitrary.” Abercrombie notes “the same term may be put to different uses with respect to a single product” w/r/t descriptive uses, but not other types of uses. Should secondary meaning defeat that? Lizzo’s 100% THAT BITCH suggests yes in practice; what about in theory? After Booking.com, yes in theory seems like the courts’ likely answer.

Another thing in Abercrombie we don’t talk about: “It need hardly be added that fanciful or arbitrary terms enjoy all the rights accorded to suggestive terms as marks without the need of debating whether the term is ‘merely descriptive’ and with ease of establishing infringement.” That’s probably the wrongest thing the case said from a current perspective—that’s not a LOC multifactor analysis.

One more background doctrine to add to Silbey’s list: Article III standing. To answer Beebe’s question: Dawn Donut is now obviously a standing doctrine. Likewise, free riding may not provide Article III standing, which purports to require harm.

Bill McGeveran: The source/brand distinction which seems so rigorous to us seems bizarre to TM claimants. The people whose interests TM serves don’t agree that TM is for source identification; they like that too, but that’s not what they think TM is for—it’s much more important to understand that “Apple” means cool and functional. Is this a new fact? It’s evolved more and more in this direction.

Shift in what progressivism around economics is in policy. FTC might ban noncompetes! Very rapid shift in policy as well as intellectual approaches. The world of possibility around legal change in TM-adjacent fields is much higher than it has been in a long time. Income inequality; perception of campaigns controlled by economic interests. Realignment also possible around speech interests. 1A plays a different role in TM than in other regulatory, anti-admin state moves. The villain here is large corporations/TM bullies.

Leah Grinvald: Studying caselaw isn’t the whole picture: lots happens outside of the courtroom. Amazon is a huge case in point; Google as well; Jim Gibson’s piece on rights accretion—affects what cases are brought, fought, settled.

Silbey: What prevents TM lawyers from bringing in arguments about identity politics, or art history, and not just branding literature? Metabirkins judge rejected art historian for having no methodology; sociology and urban planning were disputed methodologies in early 20^th century [and perhaps still, to CJ Roberts]. Became available to lawyers; what is preventing TM law from adopting other forms of empirical evidence to make arguments for Ps and Ds? Are we seeing claims adjoined to TM that suggest related problems, the way we’re now seeing © and privacy claims brought together? Maybe not b/c TM is already so capacious. [TM and ROP, maybe.]

Sheff: Most TM cases aren’t worth enough to litigate complex issues of expertise—they won’t destroy a business (except for Rogers-type cases). Changing the name is often an option, and if that cost is less than the cost of expert litigation that would affect choices. Silbey: surveys are expensive. Sheff: Ds often don’t use them, and at least they’re relatively formalized now.

Crystals and Mud is a good comparator: we might have to adapt to new developments. We can adopt exceptions—separate bright line rules: one fact causes us to switch to a different path. Rogers is one example. But the alternative is to just throw it into a multifactor hopper. The 1A implications suggest that move is inappropriate in certain categories of cases. That’s more a prophylactic rule than a standard. Some injuries are simply more important than others.

The Polaroid factors are actually dicta; resolved on laches grounds. Second Circuit is thinking about how close two products need to be; they need not be identical, but here are a bunch of things to think about w/related but non-identical products; but anyway P loses on laches grounds. We’re treating this list as the definition of how we know when two businesses are going to be confused. Similarly with Abercrombie, which purports to give shape to the category of suggestive marks, the court traces through some common-law development; even if a mark isn’t descriptive, and even if it’s not a technical TM, it might be registrable/protectable—Abercrombie allocates it to the side of arbitrary/fanciful marks. Those are moves that differ in implications for how that doctrine will be picked up in future cases in ways courts don’t anticipate.

Fromer: Don’t forget role of PTO and other agencies, either contributing to ossification or development of TM. A lot of what they do is responsive to courts, but they’re at the front end of granting registration. They’re not creating protection (they say), but deciding to grant or deny registrations does mean they deal w/businesses thinking about TM rights. They see a lot of situations that TM law will ultimately have to contend with [as they first noticed the decorative/ornamental flood].

In many ways PTO is very bad at responding to new situations, though in some very forward-looking. They’ve been very permissive about allowing businesses to rebrand/do brand extensions in ways the courts haven’t noticed but affects what happens in TM. Permissive in allowing token uses to count as use in commerce. They’re pretty bad at catching descriptiveness w/o secondary meaning. But for failure to function, they’ve really been prominent b/c the PTO was willing to act. It’s unfortunate they have a framework of “applicants are our customers” and “we want more registrations every year.” A lot turns on the data that they do keep and use when searching. They have no general database of specimens, for example; that might keep TM in the past/enable businesses to keep registering the same thing over and over again. They don’t search beyond the registration database.

Lemley: (1) list of cases/juxtapositions—with 1-2 exceptions, every anachronism doctrine is a doctrine that expanded TM rights to a category of things that didn’t exist traditionally. (2) we’re at a generational disconnect. Nobody thinks about brands the way TM scholars think about TM. Spent much of his life resisting that effort, but we also need to say “a new theory needs new rules.” RT’s point about standing doctrine: always good to see a dumb doctrine defeated by a dumber doctrine. But there are other ways to think about what that new theory might do that can free us from existing doctrinal constraints. Maybe consumer confusion doesn’t matter at all; at a minimum it’s not determinative. If brands aren’t TMs, then confusion might not matter. Maybe we don’t need a presumption of exclusivity in a particular market. And then the 1A might come in: there’s no special exemption from the 1A that stems from misleading commercial speech b/c that train has left the station. Maybe we should welcome the idea that every TM case is one that needs a 1A analysis.

Consider a rhetoric of rights on the user side as a counterbalance: not a brand totally owned by company, but a thing that the world benefits from; a right to choose whether I want that meaning or another one.

Dev Gangjee: Are we going back to some ur-text that is disconnected from “normal people”—but advertising has been fundamentally rethought as a good thing these days. Look at greenwashing/sustainability agenda: if TM is hitched to advertising, we can talk to others and connect that to the larger agenda. We’re not wrong in being cautious about this trend, and we don’t have to concede that society has moved on. Ralph Brown’s piece on advertising and the public interest: The FTC used to be the site of many of these debates, including about whether TMs could be misleadingly suggestive.

On Lemley’s point about new rules: EU adopted new theories and got terrible rules—just mushed them all together and invented harms.

Linford: Thomas could get a textualist test out of 43(a). Are Amazon & Walmart the villains w/aggressive tactics, or is that just competition that we love b/c it offers low prices? Amazon is worse for consumers than it was 10 years ago; we had an opportunity in MTM to do better—just tell consumers you don’t have an MTM watch, just one line of code. Once we don’t ask even that, the floodgates of enshittification open. [This strikes me as quite wrong—Amazon’s a bunch worse b/c the product results are controlled by how much the sellers pay Amazon, and it’s especially bad when you aren’t looking for a specific brand—the problem is on the seller side, not the consumer side.]

McKenna: Why do people think TM’s role is to protect brands? Prestonettes: the complaint was that D was interfering with what we want known about our brand, and the Court said that wasn’t its job. The word is not taboo! What enabled this shift even among TM lawyers? Courts say all the time, TM law promotes competition—but it’s a shift from TM law as a system to trademarks promote competition, which is a significant move that enables you to stop thinking about what the limits of protection should be. TM needs a theory of competition. It’s not a thing found in nature.

Grynberg: part of the PTO’s problem is that it’s under the Fed Cir’s thumb and trying to survive what the Fed Cir thinks about IP rights.

Burrell: can an admin agency be part of ossification? We have to think about to what extent PTO rules find their way up to superior courts. But b/c the PTO deals w/the vast majority of TM disputes, that’s the wrong Q—they can be their own source of ossification for their own disputes. Can admin agencies resist attempts to deossify from the courts? Sometimes you can see them deliberately ignoring dilettantes on courts, watering down their rules.

Sprigman: if TM is going to reconsider how TMs shape competition, it shouldn’t ID retail-level villains; it should develop a theory about what competition is supposed to do and how rules should shape it. Mishakawa: a TM is designed to induce people to think they want something—to differentiate markets that were competitive and create artificial differentiation to move the market more towards oligopoly. That’s a gigantic idea, and not about whether Walmart or Amazon is bad or good. The Chicago model celebrates limitless product differentiation, w/no margin of diminishing returns. That’s a contestable understanding of what’s good about markets. Sometimes we standardize! E.g., financial markets. Efficiencies come from standardization. Henry Smith also writes about this for property. TM law needs to find that level of what we’re looking for in general, not on a case by case basis, which would just be more ad hoc.

Bone: Normative anachronisms, not just doctrinal ones. And anachronisms about empirical world. Useful to distinguish among ways tools/beliefs can be anachronistic. Abercrombie is a good example of doctrinal anachronism. In Polaroid, Judge Friendly was trying to resolve a tension in 2d Circuit and a typical way to do that is to say everyone’s right; we do that by taking what everyone cares about and sticking it into a multifactor test. It only gets worse as time goes by. Abercrombie is similar: Judge Friendly says let’s look at the categories, but the old categories were supported by a different normative theory (technical TMs—a natural law property right that was dominant during the conceptualist period), so we kept categories that were ill-suited to the new normative baseline. Not surprising it’s a mess. But it’s not as bad a mess as LOC because we can look at some of these categories and say it makes sense to have categories, but they’re not the right lines because we’re all functionalists now and want to know what the categories are for.

Ramsey: the challenge for judges who don’t see many TM cases: what are they supposed to do? If we don’t have a multifactor test for the traditional cases, what should we be doing? We need a framework for argument.

Sprigman: normatively, do we want consumers’ own savvy to take care of this?

Bone: we used to have that—double identity/technical TMs were a much easier confusion test.
Beebe: Neo-Brandeisian approach to IIC might be that it’s fine thing unless it’s bait and switch; not clear how it would think about post-sale confusion. Fashion brands distract us from the giant world of everyday TMs; how do we navigate that gravitational pull distracting us from competition theory.

Lemley: we could try a double non-identity test: not the same field and not the same mark, we’re done. We’d have to decide how close you could get. We’d also have to cut back on sponsorship/affiliation to do that. It’s not a reconceptualization that requires a return to the past, though that might be a component: there might be a universe of ordinary TM disputes from 80 years ago where the old rules are fine, and then a universe of brand disputes that could just be treated differently; the theory of competition there is fundamentally different.