WIPIP Panel 5: Trademark Doctrine

 The Arbitrary Myth (Dustin Marlan)

Connecting the Abercrombie critique literature w/some of the critical/cultural appropriation theory. Judge Friendly says: it need hardly be added that fanciful and arbitrary terms enjoy the protection accorded to suggestive terms. Catachresis: strained metaphor—arbitrary marks are not typically empty vessels but palimpsests. Amazon: river/warrior woman—vast, wild, overflowing abundance. Apple: fruit/Eden/knowledge—nature, simplicity, rebellion. Etc.

Empirically: arbitrary marks underperform as source indicators: 76.7% as compared to 100% for fanciful. Lowest overall recognition and recall across Abercrombie categories; worst overall liking ratings compared to descriptive, suggestive, and fanciful. Kohli & Suri, Brand Names that Work (2000).

Culturally, TM facilitates transfer from symbolic commons to corporate identity. Not so much censorship as semantic crowding out of older meanings when branded meanings are seen so commonly.

Why does TM elevate arbitrary marks? By necessity, not b/c of real conceptual strength. Descriptive & suggestive marks are depleted/overused. Competitors’ needs constrain protection. Result: Firms migrate towards protectable marks, not necessarily marks with high communicative value. Catachrestic marks require lots of advertising, burdening small businesses and startups; rewarding cultural extraction b/c they’re borrowed from outside the marketplace, meaningwise.

Conclusions? Downgrade arbitrary marks in strength hierarchy? Treat as presumptively weaker than fanciful? Not entitle them to broadest scope in likely confusion analysis? Cultural screen at registration to check for cultural appropriation? Require secondary meaning for full strength? Arbitrary fair use doctrine accommodating situational uses reflecting cultural, linguistic, or metaphorical associations?

It’s not so much that arbitrary marks are arbitrary, it’s that the Abercrombie spectrum as a whole is arbitrary. Fanciful marks echo familiar sounds; generic terms can shift meaning over time; the generic/descriptive/suggestive boundaries are porous. It’s a legal fiction rather than a natural fact.

Linford: radical interpretation would be: secondary meaning for everything. And more skeptical the closer you get to generic. Worry about PTO (and judges) as cultural interpreters. Does the addition of the cost justify the gain? If you think we’re overprotecting TMs, you could increase costs on litigants by requiring secondary meaning for everything.

Fromer: you’re conflating two things. (1) semantic connection b/t term used to signify source & a class of goods & services: apple/computers; (2) brand associations a business wants to develop to connect apple to computers—wisdom, Isaac Newton, etc. Think you’re right that arbitrary marks require more investment but can become stronger over time b/c of the arbitrariness.

RT: Tradeoff b/t initial difficulty learning and strength of association once learned: larger literature on information processing might be helpful. Attracted to the conceptual strength argument; already cases say that suggestive is weakly distinctive. But consider Jellybeans/Lollipops for roller skating rinks as an interesting example for you where the arbitrariness has the same conceptual relationship to the goods/services for both, and the confusion story is pretty plausible to me. Compare: Amazon/Mississippi. Maybe a situation where commercial strength decreases the likelihood of [some kinds of] confusion. Against conceptual strength? (Compare to Fromer’s Against Secondary Meaning.)

Truthmarks (Aman Gebru)                

Descriptively, TM owners misuse marks in ways inconsistent w/ TM’s policy goals. Analyzed truthfulness cases (72 opinions). There are 3 buckets: prohibited deception; tolerated ambiguity; incentivized dishonesty.

Misuse: masking marks; zombie marks; nonsense marks.

Masking marks: the connection b/t mark and product has changed but the consumer doesn’t know. Philip Morris became Altria to hide cigarette stink. J&J used Splenda for sweeteners but changed from natural to artificial. Intra-brand fraud (as opposed to inter-brand fraud that TM addresses).

Zombie TMs: abandoned marks resurrected by firms w/ no ties to the original producer, w/residual goodwill or notoriety. May create distrust of the system by consumers. Revived Enron using logo.

Nonsense: unpronounceable strings of letters/numbers; consumers are not the audience. But they’re easy to register.

Doctrinal gap b/t false advertising & TM law. Only descriptive or suggestive marks are presumed capable of carrying falsehoods, but you can create meaning over time w/arbitrary & fanciful marks and then change. Focus on literal deception leaves space for a license to cheat your own consumers. Reduces incentive to improve quality.

Propose truthfulness as organizing principle. Reimagining failure to function for nonsense marks; expanding abandonment doctrine where there is residual goodwill. Stronger duty of candor; expand standing to include consumers.

RT: For zombie TMs: Consumers seem pretty resistant to learning mistrust. Given realities of imperfect enforcement, how much should we worry about skepticism.

Why not just allow a false advertising claim when they switch the product characteristics? As for zombies: The plaintiff former owner has the wrong interests; maybe let consumers or current competitors claim.

Should the PTO presumption be reversed? No mark shall be refused unless …. Could be “a mark shall be registered when.”

Lemley: nonsense marks are different in kind—they are identifying source to algorithms and bots, not to humans—but there’s nothing not truthful/deceptive to humans about them.

Sari Mazzurco: deceptive as to what? Ordinarily: Falsely suggesting a quality—but zombie marks are appropriating an earlier mark’s goodwill, which seems different. Consider also white labeling as a practice—almost all cosmetics in the US are made by two companies; cosmetic companies are trademarks + customer lists. Dupes are often made by the same producer. Is the TM system obscuring actual information about source/manufacturer? Influencers who don’t control what they sponsor/endorse—a form of naked licensing.

Alex Roberts: why should we care about erosion of trust in the TM system? Specific deception is an issue, but that’s different.

Trademark Use, Failure to Function Doctrine, and Free Speech (Lisa Ramsey)         

Does JDI reject commercial use requirements/nominative fair use by rejecting any “First Amendment screen” when there’s a use as a mark? Commercial use and TM use requirements can protect speech; but also proposed a statutory defense for noncommercial use other than as a TM. Still need to figure out use as a mark. Statute says: used to identify and distinguish the goods from those of others/identify their source/manufacturer.

Is association enough for secondary meaning? 100% THAT BITCH may be associated with Lizzo, but is it distinguishing the source of goods from others in the marketplace? Association shouldn’t be enough—it should be distinctiveness for source of goods/ability to distinguish them from the goods of others. Information not related to the reputation of the TM owner should be a non-TM use: informational slogans (if you see something, say something); parody, satire, e.g., mashups; decorative uses. Consider goods/services in relation to putative mark as well as placement/likely placement. If someone seeks BLACK LIVES MATTER for T-shirts, we know they want to put that on the front and control others’ uses.

These principles can also be used in enforcement/infringement cases to assess TM use by defendants.

Q: would a ‘badge of allegiance’ for sports teams (Arsenal case in UK) count?

A: should we allow them to make additional $ by selling T-shirts—she would treat them differently—maybe give them narrow rights.

Dogan: what do you do about sponsorship or affiliation confusion?

Question mark (TM) (Lorelei Ritchie)

Core what of TM: source identification. How: consumer perception. Descriptive terms can acquire protection, but not generic terms. Blurry lines b/t categories. Booking.com even says that “ordinarily” a generic term can’t be protected. But also there are mixed uses: some people perceive it as generic while others perceive it as a mark. TMEP: examiner is told to refuse for genericness but there is actually no specific ground for generic refusals. Generic-ish.

Proposals: (1) PTO shouldn’t refuse on genericness grounds, only descriptiveness as a spectrum; (2) burden of proof; Fed Cir mostly doesn’t require clear & convincing for genericness and right now the standard is all over the place. Should be clear about whether it’s preponderance; thinks it should be clear & convincing if it’s an absolute bar b/c that’s a big deal. (3) If it’s an absolute bar, then “key aspect” genericness (generic adjective) should go away, because it’s too blurry. What’s the difference between immediately conveying information and “key aspect”?

Dogan: does competitive need play any role in your thinking? We think of genericism as: does this convey firm-specific info? But also: would TM inhibit others’ ability to tell people what they’re selling.

Ramsey: the benefit of genericism is that it protects free expression and fair competition to have a bright line rule to fight against abuse/C&Ds.

A: not that different from our common-law system.

Ramsey: burden of proof!

Linford: do we want to account for how consumers see things or do we care more about TM owners’ machinations/manipulations of evidence?

RT: if blurriness is fatal we can’t have a registration system. There is no system I know about that can make 700,000 individualized determinations/year with more consistency than the PTO does. So I’m not against clarity but not convinced that there are many clear lines to be drawn. Not sure people should be entitled to a registration unless there’s clear & convincing evidence, given the consequences for the presumption of validity—California Innovations as an example of how that thinking screws up the statute.

A: Preponderance is ok for relative refusals (descriptiveness, presumably confusion) but should think about whether all absolute refusals should be treated the same way. [I agree they should but I’d go with preponderance.]

Rachael Dickson: Examiners haven’t got the same level of knowledge for everything they’re asked to examine, which allows manipulation. “Dog walker” got registered for cigarettes even though that’s actually a well known term for a cigarette that you can smoke during the length of a dog’s walk.

Fair Use and First Amendment: The Art of Trademark Disobedience (Rachael Dickson)     

Artists release consumer products which deliberately infringe as a form of expression, serving both source identification for the new goods and commentary on the companies at issue, the values they profess, or consumer culture generally. A kind of civil disobedience: culture jamming relies on traditional artistic mediums, but her interest is in more standard products. MSCHF: “There’s no better way to start a conversation about consumer culture than by participating in consumer culture.” Stuart Semple and his Yves Klein Blue/Tiffany Blue/others.

Rogers test post-JDI doesn’t apply to use as a mark. Maybe these uses are ornamental, but they look mark-like. Still could be expressive, and the burden should be high on the TM owner to show a false statement is being made/a reasonable consumer is confused.

Ramsey: compare the Yes Men impersonating the Chamber of Commerce.

Q: if it’s civil disobedience should punishment be appropriate?

A: They’re making fun of the way the world is, not just the law, by using consumer products, so breaking the law is not exactly the point.