Profs. Beebe and Hemphill: "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?"
Professors Barton Beebe and C. Scott Hemphill of New York University School of Law challenge trademark orthodoxy in their new article, "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November 2017). [pdf here]. It is a black letter principle of trademark law that the stronger the mark, the greater the scope of protection it is accorded. Not so fast, say the professors.
In this article, we challenge this conventional wisdom. We argue that as a mark achieves very high levels of strength, the relation between strength and confusion turns negative. The very strength of such a superstrong mark operates to ensure that consumers will not mistake other marks for it. Thus, the scope of protection for such marks ought to be narrower compared to merely strong marks. If we are correct, then numerous trademark disputes involving the best-known marks should be resolved differently—in favor of defendants. Our approach draws support from case law of the Federal Circuit—developed but then suppressed by that court—and numerous foreign jurisdictions.
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It makes strong intuitive sense that as a trademark grows increasingly famous, the likelihood that consumers will confuse similar marks with it declines. Consider the example of Coca-Cola. Having been exposed to the Coca-Cola logo countless times, the average consumer is likely sensitized to even the slightest differences between the distinctive appearance of the logo and closely similar logos.
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The Article examines the underpinnings of American courts’ mistaken analysis, explains the errors, and urges essential reforms in this core area of trademark doctrine in order to advance the overarching policy goal of trademark law, which is not to enable the strongest to grow even stronger, but rather to promote effective competition.
Read comments and post your comment here.
TTABlog comment: So as a mark becomes superstrong, it gains anti-dilution protection but gets less likelihood-of-confusion protection. Let's think about that.
Text Copyright John L. Welch 2017.
posted by John L. Welch @ 11/22/2017
4 comments
4 Comments:
You are exactly right, John. They are saying that the more a rband owner invests in brand building, the less protection it gets from the Courts from people trying to draft on the goodwill created by the investment -- unless they succeed so much that they become a household word and dilution is available. However, in the meantime the inability to stop infringers means that the infringers have registered their marks so dilution is unavailable. This kind of thinking was killed in the Plah-doh case in the early 1990's.
In my first trademark case decades ago, when I learned the legal principle that holds that people are more likely to be confused when the senior user has a strong mark, I thought it odd and counterintuitive. I think the answer to the question "which view ought to be the legal principle" depends on what one thinks the goal of trademark law is. If, as the article asserts, it's primarily to protect consumers, then the professors' theory, if empirically correct, should control. If the goal is primarily to protect brandowners' investments in brands, then Mr. Reidl's take (which is the currently controlling legal take) should control.
But if the courts were to adopt the professors' thesis as the controlling legal principle, at least two things would/should happen. First, the accused infringer would have to prove, probably by use of a survey, that the plaintiff's mark is so famous that people can spot small differences right away. Just asserting it without proof isn't enough. Second, it would, as a practical matter, make intent an even more important factor.
I personally believe that TM law is aimed primarily at protecting consumers, allowing them to make more efficient, accurate purchases, and thereby facilitating commerce, so I like the professors' view. As a corollary to this view, I also think that dilution is essentially a give-away to brand-owners AND functionally useless. How many cases find dilution and NOT simultaneously find infringement? I haven't tallied them up, but I'm not aware of many at all.
Finally, I'd point out that, even if the courts were to adopt the professors' view, most strong brands wouldn't suffer that much, if at all. Famous marks are used not only with the core products on which they gained their fame, but also in connection with an increasingly wide variety of other products, either via licenses for products/services related to the core product/service, and/or for merchandising items (mugs, t-shirts, etc.). So any loss in scope of protection in the "similarity of marks" area will be offset by protection for a broader variety of goods and services.
Paul, the article revolves around the Federal Circuit's decision in the PLAY-DOH case (Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 22 U.S.P.Q.2d 1453 (Fed. Cir. 1992)). Indeed, the authors state (page 1341): "We call the conventional wisdom that stronger marks always merit broader protection the Kenner doctrine, after the case that is most responsible for its perpetuation." Of particular note, the authors do not make a blanket anti-Kenner statement to the effect that their "Inverted U" diagram will *always* apply to what they call "superstrong marks." Instead, they are careful to point out (page 1370):
"To emphasize again, we are not arguing that as trademark strength increases, the positive relation *always* turns negative at some point. We do not wish to make the same mistake as current doctrine by making such a sweeping claim. . . . Instead, our more limited claim is that the traditional confusion-based rationales for the positive relation between trademark strength and scope cannot support the oft-rehearsed all-purpose empirical claim that increased strength should *always* result in an increased scope of protection."
I agree with the authors' basic position. The Federal Circuit's decision in Kenner essentially disavowed a decision issued by that court four years earlier in B.V.D. Licensing Corp. v. Body Action Design Inc., 6 U.S.P.Q.2d 1719 (Fed. Cir. 1988), in which Judge Rich stated, "The fame of a mark cuts both ways with respect to likelihood of confusion. The better known it is, the more readily the public becomes aware of even a small difference."
The odd thing to me, and something not mentioned by the authors (unless I missed it), is that the reasoning of B.V.D. was essentially just a specialized application of a broader doctrine long employed by the CCPA, namely that people readily distinguish between familiar and the unfamiliar. In In re General Electric Co., 134 U.S.P.Q. 190 (C.C.P.A. 1962), the court found no likelihood of confusion between the marks VULKENE and VULCAN (writing before Star Trek appeared):
"VULCAN is, we think, a name well-known to the American people. Most of them may not know, or remember if they knew, just who Vulcan was (in Roman mythology he was the God of Fire and of the arts of forging and smelting) but we think the name is commonly recognized as the name of some mythological character or deity. Anyone confronted with it, in other words, would recognize it as something already known--it would not impress itself on his consciousness as anything new or strange, but rather as something familiar. VULKENE, on the other hand, is not such a name or word. As the board itself said, VULKENE is 'an arbitrary and coined word.' We consider this to be a point of great significance, and one which neither the examiner nor the board appears to have treated as significant. We entirely agree with appellant that 'the human mind has little difficulty differentiating between the familiar and the unfamiliar.'"
The Board follows this line of cases (of course), and in fact just last week cited General Electric in finding no likelihood of confusion between the marks Q’SAI and SAI in Serial No. 79157321.
I believe the B.V.D. case was simply applying General Electric's broad reasoning to a situation involving a "superstrong mark" (to use the authors’ term). That is, the CCPA believed VULCAN was a “name well-known to the American people” such that consumers would recognize the differences between it and VULKENE. And that’s exactly what Judge Rich was saying in 1988: that B.V.D. was so well recognized that consumers would recognize the differences between it and the mark B.A.D. I think General Electric and its progeny support the authors' contention that a mark can become so ingrained in the public's mind that, under some circumstances, it may mean the universe of conflicting marks contracts.
A search of the pdf of the article for the word "survey" found only 3 occurrences and they were all in the same footnote. There is no need to hypothesize about whether or not consumers will be confused when confronted with McTeddy at a craft fair - run the survey!
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