TMs 2.0

Stay tuned:

– This is interesting, and will be good from an audience perspective, especially if we can isolate some of the areas in which the “extended rights” and “forget the exceptions” take place and talk about why those are hard cases.

The only example from your list with which I feel less comfortable is the “but not to cause confusion” — which seems too broad to me, because the nature of the affirmative defenses are that likelihood of confusion WILL exist, but the defenses excuse it. That is how I understand KP Permanent. You later write “confusingly similar mark on similar products” which I think is right on – except when we get to figuring out what “similar products” are. I think the “related goods” factor is highly problematic when it comes to large brands that have a core business and then also subsidiary products.  From my data, a lot of over-claiming happens in the space between “related products” and dilution – if there is a space at all.

– I would agree completely.  However the public resource is either using a term in its generic or, if not confusing to a word already afforded protection, descriptive sense.  In addition there is a right to criticism and use as a reference (comparative advtg or first sale).  But not to cause confusion.  To me, use of a mark in a domain name so you can drive traffic to a site- unless it falls in an exception –  or sell it to the rights owner is not a public resource issue.  Nor are counterfeits.  Nor is use of a confusingly Similar mark on similar products.  That is just piggybacking off a known product and destroying the purpose of TM.  Very different from copyright and patents.

It is when brand owners claim extended rights or forget the exceptions that we get in trouble.

Should make for an interesting discussion!

– I think there is a fair debate about this. Trademark rights do entail a public resource in words and expression. Because trademark rights are not rights in gross to words or symbols etc., I think the non-owner user rightfully believes there is a public resource at stake. And although there is no constitutional prerogative to protect trademarks for limited times for progress purposes (the public domain argument), trademark rights are not unlimited monopolies for the same reason copyrights and patents are not unlimited monopolies during the lifetime of their protection.

These seems even more significant given that trademarks are perpetual rights. The strength of copyrights and patents are justified because they eventually expire. The way affirmative defenses of nominative fair use and descriptive fair use work is to tolerate some confusion for the very purpose of protecting both competition and speech — both of which are non-owner use rights.

So I think this would be a very helpful thing to discuss in our panel.

Maybe that’s the debate we should have after the slides – public resource.  I think this is where the public confuses TM with copyright and patent.  

To me… I am in the camp that we give limited monopolies in the form of copyright and patent in order to eventually feed a thriving public domain. Versus purely compensation of the creators (instead we recognize people have a right to be compensated or we wouldn’t have new works to build off of).  Whereas TM are about giving an unlimited monopoly when used in connection with particular goods and services for the purpose of consumer protection.  It isn’t about the IP right as a public resource, per se.  It is about giving the public some assurances that what they buy is what it says it is.

And I think this is what the public often doesn’t understand because they don’t really get the difference in what we are talking about in terms of the property in question.

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