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.
legal scholarship
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.
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.
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.
There Is No Market for Human Flourishing
A blog post by Santa Clara economist and law professor David Friedman came across one of my social media feeds today, and it resonated with a lot of issues I’ve been thinking about lately. Friedman is taking issue with a particular corner of the climate change debate: the uncertainty over the sign and magnitude of future economic effects of climate change. This uncertainty, he argues, counsels caution: we know it would be very costly to intervene right now; but waiting will allow for more precise assessment of the potential costs of climate change, a longer time frame for spreading those costs over the human population, and–importantly–potential to distribute those costs in a more appropriate way. Here are the key passages for my purposes:
Diking against a meter of sea level change could be a serious problem for Bangladesh if it happened tomorrow. If Bangladesh follows the pattern of China, where GDP per capita has increased twenty fold since Mao’s death, by the time it happens they can pay the cost out of small change.
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William Nordhaus, an economist who has specialized in climate issues … reported his estimate of how much greater the cost of climate change would be if we waited fifty years to deal with it instead of taking the optimal action at once. The number was $4.1 trillion. He took that as an argument for action, writing that “Wars have been started over smaller sums.”As I pointed out in a post here responding to Nordhaus, the cost is spread over the entire world and a long period of time. Annualized, it comes to something under .1% of world GNP.(Emphasis and link to Nordhaus article added–JNS)
I have no specialized insight into the climate change debate, I have no particular beef against Prof. Friedman or his work, and I carry no particular brief for Prof. Nordhaus or his work. But I think this particular post is a very good encapsulation of how profoundly unhelpful the welfare economics approach is in analyzing problems of social cooperation over long time scales and across disparate populations, and I thought I’d take the opportunity to try to explain why.
Peer Review and the Legal Academy
The story making the rounds late last week about a peer-review ring recently busted by academic publisher SAGE was fortuitously timed, as it coincided with the completion of my first referee’s report for a legal academic journal. This led me to some (perhaps unoriginal) reflections on the state of legal scholarship.
