Those of us in the trademark trenches, involved in various day-to-day skirmishes for our clients, seldom have time to step back and consider the Big Picture. Professor Rebecca Tushnet not only considers the Big Picture, but she also writes about it. The Harvard Law Review will soon be publishing her article “Registering Disagreement: Registration in Modern Trademark Law.” [pdf here]. In her spare time, she publishes “Rebecca Tushnet’s 43(b)log.”
Trademark scholars widely agree that our current system for evaluating what rights a
trademark owner should have over others’ uses of their (or similar) marks is broken. Courts too readily find that too many acts are infringing even when they’re harmless or actually useful to consumers. Trademark practitioners, meanwhile, while often quite approving of broad interpretations of trademark law, widely recognize that our trademark registration system has significant practical problems. Among other things, a pilot study recently showed that registrants overclaimed the goods and services on which they used marks in nearly two-thirds of registrations: they affirmed to the U.S. Patent and Trademark Office (PTO) that they were using marks on goods when they weren’t. In thirteen percent of the examined cases they weren’t using the marks at all. “Intent to use” applications also generate significant numbers of paper rights with no ultimate legal existence. This “deadwood” on the register prevents legitimate users from knowing what they can and can’t do. Improperly granted registrations are harmful even from the perspective of the greatest trademark expansionists. What we haven’t done is try to unite concerns over the expansion of trademark rights with concerns over the registration system and explain their relationship to each other.
To explain the stakes, Part I of this article first provides an overview of trademark law and trademark registration. Part II examines a number of ways in which the current registration system interacts and conflicts with the current ideology of consumer confusion as the crucial source of trademark’s boundaries. Part III discusses how we could repair the system. There are a number of changes, ranging from small tweaks to sweeping statutory reforms and the rejection of the Supreme Court’s ahistorical conclusion that registration is a matter of factual accident rather than an important distinction between types of marks, that could improve the law to the benefit of trademark owners and non-owners alike.