Unlikely to confuse

Barton Beebe of NYU Law

Check out, and think about, this post by John Welch and, of course, the article he’s writing about, one of whose authors is Barton Beebe, whom I had the pleasure of meeting last week when I accepted his invitation to chat with LLM’ers at the Engelberg Center on Innovation Law & Policy:

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. . . .

Scott Hemphill of NYU Law

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.

These are the kinds of questions that make trademark lawyers’ teeth itch, and which we should be asking and discussing. There are some excellent comments at the post at TTABlog, which respond to the question posed by John:

So as a mark becomes superstrong, it gains anti-dilution protection but gets less likelihood-of-confusion protection. Let’s think about that.

I don’t think it does.  I think the argument is one against anti-dilution protection.

The article does not put it that way. It does say, “Antidilution protection remains controversial in American law because it essentially grants rights in gross in the mark as to all uses, be they competing or noncompeting.”   (Which is kind of funny because I am pretty sure that I said some of the exact same words in the same order in my talk at NYU without being aware of Barton’s article. Of course, this criticism is not exactly a secret, and I for one have certainly joined in on it before.)

At the same time the piece includes the surprising comment that meeting the “likelihood of dilution” standard in practice “has proven to be extremely demanding, if not insurmountable.” The main point, though, is that the authors actually use the availability of antidilution claims as a foil.  The suggestion is that “superstrong” marks are given too much juice in regular infringement decisions, when instead the relief sought is more appropriately characterized as falling into the anti-dilution basket.

John’s question, however, is unavoidable.  The article draws broadly on thinking in the academy about these issues; I liked the discussion of the “licensing fee” hypothetical in analyzing the “real” harm from blurring.  Ultimately, though, its premise is indeed at odds with protection of famous marks by invocation of “blurring” dilution as a substitute for a LIKELIHOOD OF CONFUSION.

And how about dilution by tarnishment now that the Supreme Court has ruled that trademark law can’t discriminate against points of view?  I’m not so sure… I’ll have to think some more about that.

One thing I’m not confused about:  Questions such as these make trademarks the funnest kind of law there is, and fortunate indeed are those who get paid to do it.

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