Forum Replies Created
Thanks! and Ugh! I removed the multifactor test chart on the thinking that it was unhelpful and too busy. But I failed to remove that reference to it.
I will white it out in the digital edition and post the chart online for anyone who wants to use it. I’ll try to white it out in the physical edition as well but Amazon may not allow me to change it.
Thanks again for catching this, Barton
Thanks for your question. Version 7 is coming very soon!
I’d been waiting to see if the Supreme Court’s opinion(s) in Booking.com would be worth including. I think the opinions are worth including and will release Version 7 in the next week or two. I’ve completed the rest of the editing except for the Booking.com decision and the formatting (which takes longer than it’s worth).
As in the past, I’ll send out an email announcing the new version and listing out the changes. There will also be redlines on the book website.
Thanks again and hope everyone is well, Barton
Wow, thank you all for such a thorough consideration of Bordengate. In light of all this information, I think the prudent course is to adopt Bob’s proposed amendment, which threads the needle nicely. I’ll do this in the next edition of the casebook to come out this summer.
Thanks, this is a welcome break from the amicus Jeanne Fromer and I are writing in Brunetti, in which we use our data to list out, among other things, all the profanities and incredibly foul language that triggered _simultaneous_ 2a and 2d refusals from PTO.
Hi Lucas, I just read through the opinion and have no good answer for you. I had never noticed this. It does seem to be a basic inconsistency in the facts. –Barton
Thanks very much for all of these comments, which I’ve duly noted for Version 5.0 (to come out in June/July).
As for the history section more generally, I will very likely drop out the excerpt from Mark’s article and replace it with an excerpt from the Restatement (Third), Section 9, which sets out the basic history in much less detail (and regrettably with much less color) and does not explicitly refer to the early English or American case law. I liked a lot the discussion in Mark’s article of the cases because it brought out so many themes that would appear later in the course. But as first day introductory reading, I’ll admit that it is too detailed a history. (We do read the article in our advanced trademark seminar, however).
I agree completely with your questions about Innovation Ventures (if it makes sense to agree with questions).
I’ll include something in Version 5.0 along these lines.
Thanks and hope all’s well, Barton
Ugh, thanks, I’ll correct this in Version 5.0 to come out in June/July. I taught the book last semester and found other mistakes but no doubt not all. Please send along any other things you find.
One other priority for Version 5.0 is finally getting the formatting of the book (including widow/orphan issues) up to standard.
I got an additional question about whether LawCarta’s pdf versions will be limited by DRM. LawCarta tells me that there will be no DRM limitations on the pdf, though the student’s name will appear on the pdf.
Sorry to take a while to reply — just back from Germany.
LC tells me that the printed hard back copy will be between $39 and $49. That represents their cost to print and make some profit. I’m committed to not taking any royalties ever.
I will know more about the time it will take to put the content into the LC system in the coming weeks, when I produce Version 4.0. My impression so far is that the costs are minimal — though I will always produce the .doc and .pdf versions first and then conform the LC version, so that involves a second round of editing. Working in LC is like working in an online text editor.
Thanks, BartonJanuary 13, 2016 at 7:24 pm in reply to: Updates to the Website: In re Tam, Abridged 3-Credit Version, Assigned Exercises #582
I’ve now added two new groups of assignments to the Assigned Exercises section:
Laura Heymann’s assignments from Fall 2015
Links to Mike Madison’s massive collection of memo assignments dating back to Fall 2008
I hope you find them useful.
I’m just about to post a Version 2.0 of the casebook. I’m finishing the last sentences of the intro chapter as we speak and hope to post the new full version of the casebook by tomorrow morning. Sorry it’s coming about a month later than expected.
I’ll write a proper email surveying all the changes, but here’s some hints of what’s to come:
–The Apple v Samsung Fed Circuit functionality opinion is now included.
–The Multi Time Machine v. Amazon initial interest confusion opinion out of the Ninth Circuit is included.
–In the genericism section, Pilates has been deleted (but will still be available in separate form on the website). Instead, the newest iteration of the Pretzel Crisps case at the Federal Circuit has been included.
–In the false suggestion of a connection section, we now have a more up-to-the-date case involving Kate Middleton rather than the older case involving Benny Goodman.
I’ll detail various other changes in the email announcing the new version.
Ugh, thanks (and thanks to Laura for also noting this). There wasn’t supposed to be any footnote there. I’ll correct this in the summer for the next version.
Though I suspect it’s too late to respond helpfully on the question of what the relevant universe of thinkers is for demonstrating dilution by blurring, I’ll say that it seems to me to be a really tough question.
Even for the LOC test, the relevant universe is not totally clear. Is it (1) the union of plaintiff’s and defendant’s current and potential customers (all customers for either P or D) or (2) the intersection of P’s and D’s customers (the overlap between P and D) or (3) P’s customers, some of which may also be D’s customers or (4) D’s customers, some of which may also be P’s customers? The orthodox view is that the relevant universe for LOC is actually (4) just D’s customers (or in reverse confusion cases, (3) P’s customers). At least that’s what courts have said when assessing survey evidence. (Cites lifted from McCarthy 32:159 below).
But maybe for blurring, the relevant universe is actually (A) P’s current and potential customers. They’re the ones who are experiencing the blurring of the link between the plaintiff’s mark and its product/source. Or maybe the relevant universe should be (B) the “general consuming public of the United States” since that’s the fame standard. Finally, there’s a good argument that due to the nature of the fame requirement, categories (A) and (B) will likely almost always be the same group.
RELEVANT UNIVERSE: FORWARD CONFUSION
Hutchinson v. Essence Communications, Inc., 769 F. Supp. 541, 559-60 (S.D.N.Y. 1991) (“It is well-settled in this circuit that the universe of the survey must include potential purchasers of the junior user’s product.” A survey of only potential users of the senior user’s product was held improper.); Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 54 U.S.P.Q.2d 1205 (S.D. N.Y. 2000), aff’d without opinion, 234 F.3d 1262 (2d Cir. 2000) (in a case of “forward confusion,” the proper universe to survey is composed of purchasers of the junior user’s goods); Big Dog Motorcycles, L.L.C. v. Big Dog Holdings, Inc., 402 F. Supp. 2d 1312, 79 U.S.P.Q.2d 1187 (D. Kan. 2005) (survey of prospective buyers of all t-shirts and caps was too broad a universe because it was not limited to prospective buyers from the junior user: those who would be likely to buy t-shirts and caps at motorcycle dealerships. Survey results were disregarded.). Regarding the difference between “forward” and “reverse” confusion see § 23:10.
RELEVANT UNIVERSE: REVERSE CONFUSION
Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 29 U.S.P.Q.2d 1321, 1326 (2d Cir. 1994) (the court, finding a likelihood of confusion, said that since the issue is whether the senior user’s products, such as BAYER aspirin, are perceived to be made by the junior user, it is appropriate to survey customers of the senior user’s BAYER aspirin product); Citizens Financial Group, Inc. v. Citizens Nat. Bank of Evans City, 383 F.3d 110, 121, 72 U.S.P.Q.2d 1389, 65 Fed. R. Evid. Serv. 350 (3d Cir. 2004), cert. denied, 544 U.S. 1018, 125 S. Ct. 1975, 161 L. Ed. 2d 857 (2005) (“The court should limit survey evidence in reverse confusion cases to the customers of the senior user.”). See Barber, The Universe, in Trademark and Deceptive Advertising Surveys, p. 31 (ABA, Eds Diamond & Swann 2012) (In reverse confusion surveys, “the relevant universe is the senior user’s potential customers.”).
On Kevin’s initial question, I agree with Deborah that it’s both a super interesting question and that the various genericism tests probably work okay for both the born-generic and genericide situations. I’ll admit to now being wobbly on this, though. I do think you’re on to something, Kevin, in noting that in situations when we ask if a formerly distinctive mark has gone generic, the mark likely has significant secondary meaning at least for some proportion of consumers. By comparison, when we ask if a mark has been born generic, the best a court might find is that the mark is instead descriptive, and then the court would have to proceed to the question of whether the mark has secondary meaning. In this latter situation, perhaps courts improperly conflate in one inquiry what are two questions: (1) the question of generic versus descriptive, and (2) the question of descriptive with secondary meaning or descriptive without secondary meaning. I’m not sure how this plays out, but it’s worth thinking through.
Kevin, I’m nominating you to the trademark nerds club. Welcome.