On Saturday, October 19, I workshopped my forthcoming paper, Dividing Trademark Use, at the Trademark and Unfair Competition Scholarship Roundtable 2024 at Harvard Law School. The paper, which analyzes the implications for trademark law of the Supreme Court’s two recent decisions in Jack Daniel’s Properties, Inc. v. VIP Products LLC and Abitron Austria GmbH v. Hetronic International, Inc., is forthcoming in the Columbia Journal of Law and the Arts.
Trademarks
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.
New Paper Alert: An Empirical Evaluation of the Trademark Modernization Act
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.
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.
The Canada Trademarks Dataset
I’m happy to announce the publication (on open-access terms) of a new dataset I’ve been constructing over the past few months. The Canada Trademarks Dataset is now available for download on Zenodo, and a pre-publication draft of the paper describing it (forthcoming in the Journal of Empirical Legal Studies) is available on SSRN.
As I’m not the first to point out, doing any productive scholarly work during the pandemic has been hard, especially while caring for two young kids and teaching a combination of hastily-designed remote classes and in-person classes under disruptive public health restrictions. I have neglected other, more theoretical projects during the past year and a half because I simply could not find the sustained time for contemplation and working out of big, complex problems that such projects require. But building a dataset like this one is not a big complex problem so much as a thousand tiny puzzles, each of which can be worked out in a relatively short burst of effort. In other words, it was exactly the kind of project to take on when you could never be assured of having more than a 20 minute stretch of uninterrupted time to work. I’m very grateful to JELS for publishing the fruits of these fleeting windows of productivity.
More generally, the experience of having to prioritize certain research projects over others in the face of external constraints has made me grateful that I can count myself among the foxes rather than the hedgehogs of the legal academy. Methodological and ideological omnivorousness (or, perhaps, promiscuity) may not be the best way to make a big name for yourself as a scholar–to win followers and allies, to become the “go-to” person on a particular area of expertise, or to draw the attention of rivals and generate productive controversy. But it does help smooth out the peaks and troughs of professional life for those of us who just want to keep pushing our stone uphill using what skills we possess, hopeful that in the process we will leave behind knowledge from which others may benefit. That’s always been my preferred view of what I do for a living anyway: Il faut cultiver notre jardin.
New Draft: Post-Sale Confusion in Comparative Perspective (Cambridge Handbook on Comparative and International Trademark Law)
It’s the summer of short papers, and here’s another one: Post-Sale Confusion in Comparative Perspective, now available on SSRN. This is a chapter for an edited volume with a fantastic international roster of contributors, under the editorial guidance of Jane Ginsburg and Irene Calboli. My contribution is a condensed adaptation of my previous work on the ways trademark law facilitates conspicuous luxury consumption, with a new comparative angle, comparing post-sale-confusion doctrine to the EU’s misappropriation-based theory of trademark liability. Comments, as always, are welcome.
New Draft: Finding Dilution (An Application of Trademark as Promise)
I’ve just posted to SSRN a draft of a book chapter for a forthcoming volume on trademark law theory and reform edited by Graeme Dinwoodie and Mark Janis. My contribution, entitled “Finding Dilution,” reviews the history and theory of the quixotic theory of liability that everybody loves to hate. As Rebecca Tushnet has noted, in a post-Tam world dilution may not have much of a future, and my analysis in this draft may therefore be moot by the time this volume gets published. But if not, the exercise has given me an opportunity to extend the theoretical framework I established and defended in the Stanford Law Review a few years ago: Trademark as Promise.
In Marks, Morals, and Markets, I argued that a contractualist understanding of trademarks as a tool to facilitate the making and keeping of promises from producers to consumers offered a better descriptive–and more attractive normative–account of producer-consumer relations than the two theoretical frameworks most often applied to trademark law (welfarism and Lockean labor-desert theory). But I “intentionally avoided examining contractualist theory’s implications for trademark law’s regulation of producer-producer relationships” (p. 813), mostly for lack of space, though I conjectured that these implications might well differ from those of a Lockean account. In my new draft, I take on this previously avoided topic and argue that my conjecture was correct, and that the contractualist account of Trademark as Promise offers a justification for the seeming collapse of trademark dilution law into trademark infringement law (draft at 18):
This justification, in turn, seems to depend on a particular kind of consumer reliance—reliance not on stable meaning, which nobody in a free society is in a position to provide, but on performance of promises to deliver goods and services. It is interference with that promise—a promise that does not require the promisor to constrain the action of any third party against their will—that trademark law protects from outside interference. A contractualist trademark right, then, would be considerably narrower than even the infringement-based rights of today. To recast dilution law to conform to such a right would be to do away with dilution as a concept. A promise-based theory of dilution would enforce only those promises the promisor could reasonably perform without constraining the freedom of others to act, while constraining that freedom only to the extent necessary to allow individuals—and particularly consumers—to be able to determine whether a promise has in fact been performed.
As they say, read the whole thing. Comments welcome.
New Draft: Brand Renegades Redux
I have posted to SSRN a draft of the essay I contributed to Ann Bartow’s IP Scholarship Redux conference at the University of New Hampshire (slides from my presentation at the conference are available here.) These are dark times, and the darkness leaves nothing untouched–certainly not the consumer culture in which we all live our daily lives. As I say in the essay, Nazis buy sneakers too, and often with a purpose. We all–brand owners, consumers, lawyers, and judges–should think about how we can best respond to them.
Trademark Clutter at Northwestern Law REMIP
I’m in Chicago at Northwestern Law today to present an early-stage empirical project at the Roundtable on Empirical Methods in Intellectual Property (#REMIP). My project will use Canada’s pending change to its trademark registration system as a natural experiment to investigate the role national IP offices play in reducing “clutter”–registrations for marks that go unused, raising clearance costs and depriving competitors and the public of potentially valuable source identifiers.
Slides for the presentation are available here.
Thanks to Dave Schwartz of Northwestern, Chris Buccafusco of Cardozo, and Andrew Toole of the US Patent and Trademark Office for organizing this conference.
