New Paper Alert: “Dividing Trademark Use”

I’m happy to announce that my most recent new paper, “Dividing Trademark Use,” will be published in the Columbia Journal of Law and the Arts. The full paper is now available in draft on SSRN. Here’s the abstract:

The trademark law of the United States places special emphasis on whether and how a trademark is used in commerce. But over the long history of the Lanham Act—including some less-than-careful drafting by Congress and some aggressive acts of interpretation by the federal courts—the concept of “use” has become complicated and in many ways confused. Two recent Supreme Court cases—Jack Daniel’s Properties, Inc. v. VIP Products LLC and Abitron Austria GmbH v. Hetronic International, Inc.—reflect and in some ways exacerbate that confusion. But the opinions in these cases also expose an interesting property of “use” in trademark law that has not been deeply examined in the caselaw or the academic literature. That property is that the use of a trademark can be divided among multiple agents with respect to a single product or service. The potential for divided use raises issues of secondary responsibility that trademark law has never comprehensively addressed. This Article catalogues the various notions of “use” in trademark law, shows how Jack Daniel’s and Abitron destabilize these notions, and applies principles of secondary responsibility to attempt to reconcile those cases with other contentious areas of trademark doctrine under the framework of divided use.

Comments welcome.

“A Heap of IP” at IPSC 2024 (Berkeley)

On August 9, 2024, I presented my work-in-progress, “A Heap of IP: Vagueness in the Delineation of Intellectual Property Rights,” at the 2024 Intellectual Property Scholars Conference at Berkeley Law School. The project applies the philosophical literature on vagueness to the problem of uncertainty in the scope of intellectual property rights. The slide deck from the presentation is posted below.

New Paper Alert: An Empirical Evaluation of the Trademark Modernization Act

Flow Chart of TMA Petitions

I’ve just posted to SSRN a preprint of my forthcoming article reporting the first empirical analysis of the Trademark Modernization Act’s new ex parte reexamination and expungement proceedings. The paper is accompanied by a new open-access, original dataset on all TMA dockets to date. Here’s the abstract:

The Trademark Modernization Act of 2020 (“TMA”) created two new forms of administrative proceeding designed to clear spurious trademarks from the federal register. Congress’s hope for these new proceedings was that they would “respond to concerns that registrations persist on the trademark register despite a registrant not having made proper use of the mark covered by the registration” by “allow[ing] for more efficient, and less costly and time consuming” means of removing them. This article subjects that policy to empirical examination, disclosing and analyzing a newly constructed dataset covering the dockets of all TMA proceedings (and petitions for proceedings) to date.

The results are not encouraging. Petitions to institute TMA proceedings are seldom filed, proceedings on those petitions are only sometimes instituted, the number of proceedings initiated by the United States Patent and Trademark Office (“USPTO”) sua sponte is relatively small, and the time it takes to progress from institution of a proceeding to a cancellation order is substantial. In a system where random audits of the most recently renewed registrations suggest an overall non-use rate of between 10 and 50 percent, the machinery of third-party petitions (subject to a filing fee) and ex parte review (subject to the USPTO’s overall resource constraints) appear to be a particularly inefficient means of preventing clutter on the trademark register. Based on the analysis presented herein, TMA proceedings seem, at best, to be a fairly reliable and moderately expeditious administrative pathway for clearing previously identified spurious applications from the register, but they are not likely to be a useful tool for combatting at scale the type of bad-faith trademark applications and registrations that have become so common in our age of automated, algorithmic e-commerce.

The paper, which was an invited contribution to the 2024 University of Houston Law Center Institute for Intellectual Property & Information Law National Conference in Santa Fe, is forthcoming in the Houston Law Review and available now in preprint form at SSRN. The dataset is available at Zenodo.

An Empirical Evaluation of the Trademark Modernization Act at Houston/IPIL Santa Fe

This weekend I presented an updated empirical analysis of Trademark Modernization Act expungement and reexamination proceedings at the Annual University of Houston Institute for Intellectual Property and Information Law National Conference in Santa Fe. Many thanks to Professor Greg Vetter for the invitation, and to my co-presenters and other participants for their feedback. The final version of my findings will be published this fall in the Houston Law Review. In the meantime, here is the slide deck from my presentation, with some of the highlights from the paper.

Trademark Modernization Act Proceedings Data at 2024 Trademark Scholars Roundtable

I am at the University of Nevada Las Vegas School of Law for the annual Trademark Scholars Roundtable. This conference is a true roundtable, not a paper conference, which I love. But because one of the topics involves the relationship between the US Patent and Trademark Office trademark registry and the brand-protection systems like private platforms like Amazon’s Brand Registry, I prepared a few slides of data on a recent policy intervention designed to try to reduce abusive registration practices. The data suggest that this intervention–the new expungement and reexamination procedures of the Trademark Modernization Act–is not being widely used. Indeed, given the scale of the registration system and the perceived scale of the problem, these new procedures seem to be the equivalent of fighting a forest fire with a water pistol. Slides available below:

A Heap of IP at Santa Clara (WIPIP 2024)

Today I presented my work in progress, “A Heap of IP: Vagueness in the Delineation of Intellectual Property Rights,” at the Works-in-Progress in Intellectual Property (WIPIP) Conference at Santa Clara University School of Law. This project seeks to connect philosophical literature on vagueness with the intellectual property law literature on claiming. Slides below; comments welcome.

Presentation: Knowledge as a Resource at WIPIP 2023

This past weekend at the 20th Annual Works in Progress in Intellectual Property Colloquium (WIPIP 2023) at Suffolk University in Boston, I presented yet another chunk of my long-running book project, Valuing Progress: A Pluralist Account of Knowledge Governance. This piece, Knowledge as a Resource, examines those characteristics of knowledge–particularly nonrivalrousness–that distinguish knowledge from other goods that are subject to evaluation under the criteria of distributive justice. Because knowledge can be shared without depriving the sharer of anything, norms of distributive justice that have developed in the context of rivalrous goods–norms such as reciprocity–generate paradoxes when we try to apply them to knowledge. This requires us to choose among competing and contestable values underlying and justifying those norms. With respect to reciprocity, for example, it requires us to decide whether reciprocity is grounded in the value of compensation for burdens borne or in the value of gratitude for benefits received. While the distinction between these two justifications can often be ignored for rivalrous goods–particularly where institutions like property rights and markets limit exchange to goods over which parties agree as to their value–it cannot be ignored for knowledge: we must choose one at the expense of the other. The inevitability of such choices among competing values is the overarching theme of the book.

Slides for Knowledge as a Resource can be found here:

New and Improved: The Canada Trademarks Dataset 2.0

Today I released a revised and updated version of the Canada Trademarks Dataset (v.2.0): an open-access, individual-application-level dataset including records of all applications for registered trademarks in Canada since approximately 1980, and of many preserved applications and registrations dating back to the beginning of Canada’s trademark registry in 1865, totaling over 1.9 million application records.

The original dataset, released on March 2, 2021 and described in my article in the Journal of Empirical Legal Studies, was constructed from the historical trademark applications backfile of the Canada Intellectual Property Office, current through October 4, 2019, and comprising 1.6 million application records. The revised dataset represents a substantial advancement over this original dataset. In particular, I have rewritten the code used to construct the dataset, which will now build and maintain a mySQL database as a local repository of the dataset’s contents. This local database can be periodically updated and exported to .csv and/or .dta files as users see fit, using the python scripts accompanying the dataset release. Interested users can thus keep their installation of the dataset current with weekly updates from the Canada Intellectual Property Office. The .csv, .dta, and .sql files published in the new release include these weekly updates since the closing date of the historical backfile, and are current through January 24, 2023.

Full details are available at the Version 2.0 release page on Zenodo.

New Paper on Reverse Confusion in George Mason Law Review

I’ve posted a newly published paper to SSRN: Reverse Confusion and the Justification of Trademark Protection, 30 Geo. Mason L. Rev. 123 (2022). This paper continues my series of critiques of the law-and-economics model of trademark law–which doesn’t match the cases very well–and further develops my own alternative model of trademark as promise, grounded in contractualist ethics. Other papers in this series include Marks, Morals and Markets, 65 Stan. L. Rev. 761 (2013); and Finding Dilution, in Research Handbook on Trademark Law Reform (Graeme Dinwoodie & Mark Janis eds., Edward Elgar Press 2021). Comments are welcome.

The Lawprofs Mastodon Instance – A Call for Community Volunteers

Animal Trial

Elephant JudgeOver the past month, as the user experience on Twitter changed under new management, millions of people have migrated to the decentralized social media platform Mastodon. About three weeks ago, in an effort to facilitate that transition for my own professional community, I set up a Mastodon “instance,” or server, specifically for legal academics: the Lawprofs Mastodon Instance. I’m not an experienced sysadmin, so there were a couple of bumps along the way, but the server is now running smoothly with over 300 user accounts and rising. The earliest rapid growth phase, during which I’ve acquired and configured the necessary back-end resources to host the instance and give it room to grow, is coming to a close, and I think it’s time to take a more mindful approach to the governance of this community. So I’m issuing a call for volunteers to help set up policies and governance structures to sustain the community for the long term.

This is not (yet) a request for financial support. The costs (in money) of running the Lawprofs instance are modest, and I am happy to continue bearing them until more permanent governance and funding institutions can be established. There may be a time when Lawprofs members are asked to contribute financially to the running of the instance, but now is not that time. Rather, I am calling on the expertise of our community members to help transition the instance from my own personal project into a self-sustaining, self-governing community. The expertise needed lies in several areas. If you have expertise in any of these areas and are willing to give a little of your time to help the Lawprofs community lay its foundations, please contact me:

  • Entity Formation, Governance, and Funding: At present the Lawprofs instance is, in essence, a group of accounts in my name at various online service providers based on the East Coast of the United States. Apart from the possibility of personal liability that I would like to avoid, this arrangement gives me sole authority and responsibility for managing the instance, which is not a role I have any desire to maintain. So we need some help either standing up appropriate legal entities to take responsibility for managing and funding the instance (and ensuring general legal compliance), or else we need to find a hybrid solution (such as the Open Collective project used by the journa.host Mastodon instance, or an institutional home in the legal academy or one of its governing bodies) to manage those aspects of the community’s existence. We will also need people willing to take responsibility for contributing to the management of the instance going forward.
  • Content Moderation: I set out a list of basic rules concerning content on the site when I founded the instance, and I defederated a number of notoriously abusive instances at the outset based on my own quick review of the #FediBlock list and the mastodon.social moderated server list. But as the community matures and forms connections with other instances we may want to revisit those choices, and we will need a more well-thought-through set of rules governing permissible and impermissible content on the site. We will also need volunteers to apply those rules when posts, users, or instances get flagged for moderation. (To give a sense of the scope of this task, we have had exactly two requests for moderation in the first three weeks of the instance’s existence; one involving a post by a member of our instance, and one involving an impersonation account on another instance). This aspect of community governance particularly requires evaluation from diverse perspectives, and I am hopeful that we will receive input from Lawprofs of various backgrounds on questions of content moderation.
  • Privacy Policy: Our privacy policy is currently the off-the-rack policy that is distributed with the Mastodon server software. It’s a fine standard privacy policy, but there may be issues that it does not cover, or that our community might want to address differently. Because our servers are based in the United States but serve accounts all over the world, this is an issue where input from Lawprofs from different jurisdictions will be especially helpful.
  • Intellectual Property (IP) Policy: One of the first steps I took upon founding the instance was to register as a DMCA agent and set up a Section 512 notice form to insulate myself from liability for copyright infringement by users who post on the instance (or whose posts on other instances are stored on our server). This is obviously primarily a US-oriented solution, and incomplete as a matter of IP policy (it does not, for example, establish in advance a policy governing repeat infringers). We must develop and implement more comprehensive IP policies to reduce the risk of liability for IP infringement in all the jurisdictions that might take an interest in activities by our users.
  • Protection Against Child Exploitation: This is not an issue I expect to require much attention given the user base of our instance, but we should develop policies and procedures to deal with the possibility that material posted on our instance (or stored on our server after being posted on other instances) might violate laws against child exploitation or trigger reporting requirements under those laws.
  • Other Terms of Service/Fair Trade Practices Issues: There may be other terms or disclosures that an online service provider such as Lawprofs would be well-advised to include in its governing policies. Lawprofs with expertise in online terms of service in various jurisdictions could be a big help in raising issues that aren’t already addressed elsewhere.
  • Back-End Management/Technical Expertise: Anyone with experience running a web server or with expertise on data security and best practices for a social media site could be a big help in sharing admin responsibilities with me for the servers themselves.
  • Membership Policies: I have developed a basic set of membership policies for the Lawprofs instance over time as people have asked to register accounts, both to maintain the thematic focus of the community and to manage costs and the strain on back-end resources. The community may wish to change these policies going forward. For present purposes, I have adopted four rules-of-thumb:
    • Members should generally be full-time legal academics; an affiliation (though not necessarily a permanent affiliation) with a law faculty must be provided and verified as a precondition of registration.
    • Adjunct faculty may register but are advised to first consider registering with other law-oriented instances that might be better suited to legal professionals who also happen to teach (such as legal.social, law.builders, and esq.social).
    • Graduate students and recent graduates may not register unless they are already in a full-time post-degree program such as a teaching or research fellowship or Visiting Assistant Professorship.
    • Non-faculty staff at law schools and faculties may not register accounts, but institutions themselves (schools, departments, centers, etc.) may do so, and institutional accounts may be managed by non-faculty staff.

Those are the issues where the Lawprofs community can use your help. Again, if you think you have relevant expertise on any of these issues, and are willing to give a little of your time to help set the community up for the long term, please contact me.

In the meantime, you can find me on Mastodon.