Sixteenth Trademark Scholars’ Roundtable Session 4: How We Got to Trademark Use 2.0

Robert Burrell: use in Commonwealth systems came from strict liability for double identity—once that was extended to advertising, there are a whole lot of nonconfusing/beneficial uses of marks in advertising. TM use was brought in as a safety valve to allow comparative advertising. Since then TM use has functioned as a safety valve for nominative and descriptive uses in the context of a regime that is generally strict liability.

What is the US trying to achieve with use given that LOC is central to your inquiry already? In Commonwealth it mitigates strict liability w/no confusion requirement.

One potential answer: use as a mark in Commonwealth countries was never primarily empirical. If Ds seemed good, the court could find use not as a mark and say that any confusion was from unreasonable consumers. Functions not merely as a safety valve to allow nonconfusing uses, but also to allow courts to ignore unreasonable confusion. Why? If you advocate for use, are you going to get a rule that allows you to ignore certain forms of irrelevant/unreasonable confusion?

[If your system hates surveys, maybe you don’t need the same set of rules]

Most tarnishing uses don’t involve TM use (Enjoy Cocaine on a poster is not about the source of the poster). Once you’ve opened the door to dilution, use as a mark isn’t a good line; you need something like the EU multiple TM function idea.

A lot of Australia’s TM problems flow from the problem of divided use Sheff identifies—the more work you ask “use” to do, the more doctrinal incoherence will develop, especially when an apex court decides a question about use and doesn’t understand the full implications. Case about Barefoot Wines—Gallo didn’t actively exploit its mark in Australia, but a third party sold Gallo’s Barefoot in Australia. Had Gallo used its mark? The court found that conscious projection to Australia was not required for use.

What about the defendant who owns a TM in Singapore who finds its stuff in Australia without consent? That’s use—so the Singaporean company could be liable for TM infringement in Australia for conduct not under its control.

Jessica Silbey: cultural analysis of TM use

Early 1900s cases about territoriality and limitations; Prestonettes & Kellogg, Champion Spark Plug. Midcentury: new statute, when TMs are still kind of quaint: Lanham Act’s message is that there’s a lot of common law. Energizes federal judiciary and lawyers, and comes at a time of postwar industrialization and boom. We get a lot of TM lawsuits from that and bloat. Not just territories and resellers. We get the modern LOC test.

TM use moved from local naming to more national, even global, uses both about source ID in traditional way but also the new commercial culture—mixing of art and advertising, redefinition of art; new idea of what TMs are for. Warhol’s Brillo boxes etc. P&G, Kraft, Chevron, RCA, GE. In the background, we still have lots of lower court decisions like Abercrombie, addressing this expansion in questions about distinctiveness and confusion. But there are still unclarified assumptions about TM use—still about affixation but becoming more attenuated.

1988/1995: new matter, including dilution and new statutory defenses. SCt is a national narrator and tells stories about the nation. Inwood; Park n’ Fly, SFAA, Two Pesos—more bloat. Qualitex: SCt gets interested in TM law, which has been evolving in lower courts for decades w/o SCt.

Merchandising: property rights in gross. Heyday of 70s and 80s: slashing corporate income taxes, perception of huge boom; the Me Generation/Yuppies; obsession with financial success—Dynasty, Dallas, Wall Street/Gordon Gecko.

That means that TM is property, any use is valuable, and value belongs to the owner—those ideas were all embraced.

The internet then came in and gave us keywords, rise of initial interest confusion. More expansive, aesthetic, hybrid digital reality—ACPA. Congress isn’t inert—DMCA and CTEA. SCt decides Walmart, Traffix, Victoria’s Secret, and KP Permanent. 13 years later, after a couple of cases like Lexmark, B&B, and Hana, then in 8 years we get 3 registration cases, JDI. They come at a time when the 1A is serving corporate and religious interests mostly. Congress’s ability to act is constrained both doctrinally and politically, and cultural policy has become deeply regressive. Court: faux textualism/formalism; major questions doctrine that curtails Congress’s power to create common law statutes like the Lanham Act; don’t care about difficulties lower courts face in implementation. JDI is about merchandising which the Court thinks is fine; Abitron is about insular nationalism and about confining Congress’s powers/ the only commerce that matter is in the US.

Conclusion: we can’t avoid the culture of propertizing, property rights, art as advertising; we need to frame within those.

Bill McGeveran: Rogers was great, Rogers is dead, long live Rogers. Rogers was good for pattern recognition in judges: there was an understanding that speech interests needed to be protected, and Rogers was lightweight/didn’t interfere w/core TM. That meant it overlapped w/TM use. Results since JDI are not good. Lower courts may overrespond to SCt cases in the beginning. JDI: pattern recognition was in conflict: two visible patterns: “speech” v. this is a dog toy/real property rights/business interests are at stake. Now Rogers has been mangled by the suggestion that you can’t screen before the LOC test in this way. We might need to start from scratch and start from first principles. Has criticized TM use as a useful tool, but its time has come. What are the categories of patterns that will lead to pattern recognition as “of course this is not what TM law is supposed to be for”? NFU; uses housed within communication that aren’t offerings in marketplace; any confusion about sponsorship would be mild/outweighed by free expression concerns. We have to think about the “confusion doesn’t matter” v. “confusion is inherently not happening” models and he reluctantly endorses the latter. Perfect is the enemy of the good and we still have NFU. If they say, this is a dog toy, this is not what Rogers is about, they should also be saying: this is a movie, this is not what TM is about.

Fromer: Business forms affect how we see TM use. Naked licensing doctrine affects whether businesses try to control references/use by affiliates. Amazon has also made big changes in how TM works. Do we want that to become conventional the way merchandising has done? Now that we live on our phones, limited real estate may improve the case for NFU of logos for actual communication. [I’m thinking of the finding in the Apple injunction case that requiring plain text instead of buttons deterred people from using the “leave Apple” option, and Apple knew it.]

McKenna: recognize that these defense-win cases are littered with expressions of incredulity about whether there could be confusion—how do we get court to honor its intuition that confusion is unlikely when the digits of LOC seem to line up in favor of confusion? Refocusing on specific factors and theories of confusion. [And reject bad surveys!]

Christine Farley: JDI doesn’t hold that there’s no test before the test—it holds there’s a test [use] before the test [Rogers] before the test [LOC]. Would it be better to start from scratch?

How to read JDI? Don’t overread it. Court could be read to saying that there is a contained space, a heartland, for TM—could also see Tam and Brunetti that way. But they don’t give us any means for containing TM, only say there’s a heartland. So: consider Dewberry, the most recent SCt TM case. Everyone thought that the result would be the result—you can’t disgorge profits from an unnamed defendant, and the Court didn’t actually say anything else! But the oral argument (and hints in the decision) suggest that there is trouble on the ground and we want TM law to work. If Ds are doing infringement schemes where you can’t figure out where the money is, we want some solution. So we need to work on the ground to find principles about what’s inherently not confusing—Alito in JDI oral argument. “In TM law, context is king”—when can we be categorical v. insist these are deeply factual questions? Maybe in distinguishing b/t the heartland/bete noir and the periphery?

Grynberg: there are dangers to abandoning “sometimes we don’t care about confusion”—if this imperial Court is ever convinced to latch onto an argument, they can make it the law. SCt has never addressed Article III standing for non-core TM theories. It has never addressed issues in Radiance Foundation v. NAACP or noncommercial use more broadly; it has never squarely addressed the LOC test and whether it is consistent w/history and tradition. It’s a separate question whether they can/should be convinced these are worth doing.

Beebe: add to Silbey the effects of great wealth concentration, including on famous brands.

Can we tell the story of UK TM law in the same way as Silbey did? Israeli/Palestinian TM law?

Rogers was too undisciplined b/c any use can be expressive.

RT: No! Rogers was never about “expressive” uses though courts often misdescribed it that way. It was/is about noncommercial speech.

Lemley: TM moved from sitting outside the 1A b/c TM owners didn’t sue people for using existing products in movies or video games or using TM names in books. But a bunch of insane theories of TM law were in fact brought and sometimes succeeded. Can Rogers be abused? Sure, maybe. We saw some efforts to use it in challenging circumstances. But the growth of Rogers was not creep of 1A doctrine reaching out to existing TM doctrines that were totally settled; it was the opposite—reflected and limited growth of expansive theories of TM law that were newly articulated. If it is in fact dead, which is unclear, or wounded, which is, then we need some other doctrine to deal with these problems.

McKenna: in almost every application of Rogers it was applied uncontroversially: movies, TV shows, artworks. No reason to throw out a doctrine appropriate in 95% of its applications. Hard cases shouldn’t lead us to junk the whole thing. The problem was the formulation “expressive work” which is incoherent. The question should always have been are you selling the speech v. are you using the speech to sell something else? That could have made JDI a hard boundary case but that wouldn’t undermine the existence of the rule.

INTA suggested: keep Rogers but don’t apply it to “ordinary commercial products.” But that doesn’t work. Isn’t a video game an ordinary commercial product? But the Court could have said that the Q was whether what you were selling was speech. That could have solved JDI or it could have been a hard question, but the fact that every legal rule creates edge cases doesn’t mean that the rule is bad.

Farley: Silbey’s account reminded her of Schechter’s theory that societal change was what justified dilution.

Robert Burrell: pragmatically, we end up w/ a less dreadful TM system with doctrines that provide a safety valve but also don’t have too many false negatives (as the court sees it).

Heymann: Add in Citizens United to this account. It’s not just what it says but the folklore around it—corporations are people (true for a long time); corporations get to be super-people. Consumer drops out of TM fights as corporate-v-corporate.