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.
Trademark
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.
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.
“Dilution at the PTO”–Slides from Presentation to the ABA-IP Section Spring Meeting
Last week I presented the latest findings from my work-in-progress, “Dilution at the Patent and Trademark Office”, at the inaugural Scholarship Symposium at the ABA-IP Section’s Spring Meeting. This includes the first presentation of my findings on famous marks. Slides from the presentation can be found here.
“Dilution at the Patent and Trademark Office” Selected for ABA IP Section Annual Conference Symposium
My current work-in-progress, “Dilution at the Patent and Trademark Office”, has been selected for inclusion in the inaugural Intellectual Property Scholarship Symposium, to be held on the first Day of the ABA IP Section’s 29th Annual Intellectual Property Law Conference. Details about the Conference may be found here.
