The Ragged Edge of the Lanham Act Jeremy Sheff

The Ragged Edge of the Lanham Act Query: How does the Lanham Act structure the interface between the USPTO and the Federal Courts? Examples: Registrability vs. Enforceability Judicial Review and Standing Preclusion & Deference Theoretical Instability at the Boundary: What is Registration For?

PTO-Article III Interactions Registrability vs. Enforceability Incontestability: §§ 14(2), 15: Park ’N Fly v. Dollar Park and Fly § 2 Bars vs. Common Law: §2(a): Pro-Football, Inc. v. Blackhorse §2(b): Renna v. County of Union, NJ §2(e)(1) & 2(e)(3)? Deceptive Marks and 43(a)(1)(a)-(b) The contrast: in some cases registration standards differ from common-law standards for protection. Sometimes we let the registration standard trump: that’s incontestability trumping the bar to enforcement of merely descriptive marks without secondary meaning. Sometimes we let common-law rights trump: as we think is likely to happen in the disparagement cases such as Blackhorse (but note Renna v. County of Union) And sometimes we may punt to other bodies of substantive law, as I think we would likely punt to false advertising law if a trademark dispute arose over competing uses of a deceptively misdescriptive or geographically misdescriptive mark. Upshot: on one hand courts may be asked to enforce marks that are not only unregistered, but unregistrable; on the other they may be asked to enforce marks that would at common law be unenforceable but are nevertheless registered. And these examples show inconsistent answers as to how courts ought to manage incompatible standards of the judicial and administrative wings of trademark law. [Case quotations:] “The opportunity to obtain incontestable status by satisfying the requirements of § 15 thus encourages producers to cultivate the goodwill associated with a particular mark. This function of the incontestability provisions would be utterly frustrated if the **664 holder of an incontestable mark could not enjoin infringement by others so long as they established that the mark would not be registrable but for its incontestable status.” Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198, 105 S. Ct. 658, 663-64 (1985) “Can a mark that is unregistrable under Section 2 of the Lanham Act nevertheless support a cause of action under Section 43? I am persuaded that Section 2 declares certain marks to be unregistrable because they are inappropriate subjects for trademark protection. It follows that such unregistrable marks, not actionable as registered marks under Section 32, are not actionable under Section 43, either.” Renna v. Cnty. of Union, N.J., No. CIV. 2:11-3328 KM, 2014 WL 2435775, at *8 (D.N.J. May 29, 2014) “The Section 2 restrictions serve a broader purpose to distinguish fit from unfit subjects of trademark protection. To put it another way, a mark is not denied registration under Section 2 because of some quirk of the registration process; it is deemed unregistrable because it is not a suitable, protectable mark”

PTO-Article III Interactions Judicial Review and Standing: § 21 21(a): direct appeal to CAFC; cf. Dickinson v. Zurko 21(b): de novo action in E.D. Va. “The Director shall not be made a party to an inter partes proceeding under this subsection.” Motion to Dismiss in Pro-Football, Inc. v. Blackhorse APA review of findings of fact (for patents): Dickinson v. Zurko, 527 U.S. 150 (1999). Standing in de novo action: Note that this appears to be an artifact of careless drafting; the equivalent Patent Act provision says “necessary party” §2 may create bases for opposition/cancellation that do not give rise to Article III standing or statutory standing under the standard announced in Lexmark. [Case quotations:] First, we presume that a statutory cause of action extends only to plaintiffs whose interests “fall within the zone of interests protected by the law invoked.” … Identifying the interests protected by the Lanham Act, however, requires no guesswork, since the Act includes an “unusual, and extraordinarily helpful,” detailed statement of the statute's purposes. H.B. Halicki Productions v. United Artists Communications, Inc., 812 F.2d 1213, 1214 (C.A.9 1987). Section 45 of the Act, codified at 15 U.S.C. § 1127, provides: “The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.” Lexmark Int'l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377, 1388-89 (2014)

PTO-Article III Interactions Preclusion & Deference: B&B Hardware v. Hargis Are legal and factual issues in registration proceedings distinct from issues in infringement litigation? Is the PTO entitled to deference on the legal and factual issues they decide, and does the answer depend on whether they are distinct from issues that arise in subsequent infringement litigation? If they’re the same issues before the PTO and in litigation, then preclusion is probably appropriate. If not, then not. But perhaps the PTO does get deference (at least on factual issues—which likelihood of confusion probably is—see Zurko). Though if the issues are not the same, there’s nothing to defer to. Question is what you’re more worried about: ex ante problem of raising the stakes of registration, or ex post problem of duplicative litigation.

What is Registration For? Procedural View Notice Evidentiary record for first-in-time system of rights Inducement to register: provide notice, avoid future disputes Substantive View Offense-Side Incontestability (Park N’ Fly) Nationwide Priority Remedial Advantages (e.g., criminal penalties, destruction, enhanced damages) Evidentiary Benefits (presumption of validity, of notice)

What is Registration For? Implications of Substantive View Section 2 has First Amendment Problems Standing less controversial PTO probably entitled to deference Pre-emption of State Law? Implications of Procedural View Divergence of §2 and common-law protectability standards probably unsupportable Standing in the absence of a live infringement suit more problematic Less clear that judicial deference is warranted Want to have it both ways: provide substantive protections as an inducement to register, but don’t want to accept the implications of creating a new statutory substantive right and entrusting that right to an administrative agency—particularly the implications for the judicial role in the trademark system.

The Ragged Edge of the Lanham Act Jeremy Sheff