The Trouble with Tacking: A Reconsideration of Trademark Priority

When trademarks cannot co-exist because they are confusingly similar, priority generally depends upon first use. However, through the practice known as “tacking,” the junior user can sometimes prevail based on its earlier adoption of a similar, but technically distinct trademark. The Supreme Court recently determined that tacking is a question of fact to be resolved by a jury, under the guidance of “careful jury instructions that make [the] standard clear.” Courts say the standard for tacking is “exceedingly strict,” and that tacking is allowed only when the earlier mark and the revised mark are so similar that they convey the “same commercial impression,” and consumers would regard both as “the same mark.” In practice, this standard is not “clear,” nor is it rooted in sound policy justifications. In fact, it could often hamper competition, deny consumers useful information, and lead to the very sorts of confusion that the trademark laws are intended to prevent. This Article proposes, as an alternative, a standard for tacking based on a comparison of the original and the revised trademarks to the intervening mark, the question being whether the changes did or did not contribute to the potential for confusion

Two Models of Unpatentable Subject Matter

Patentable subject matter has become one of the most controversial areas of patent law Efforts to articulate a lucid and productive theory of patentable subject matter must acknowledge that there are two competing models of unpatentable subject matter One posits that natural laws natural phenomena and abstract ideas are themselves ineligible for patenting and that each example of a natural law natural phenomenon or abstract idea further defines a class of inventions that cannot be patented because they lack an additional element of ingenuity ” or inventive concept ” that sufficiently distinguishes those inventions from their natural counterparts This penumbral model of unpatentable subject matter mirrors the statutory structure of anticipation and obviousness The competing binary model of unpatentable subject matter posits that one must only apply a natural law natural phenomenon or abstract idea in a useful manner in order to have a patenteligible invention Potential versus application is an eitheror proposition Recent attempts to achieve synthesis have adopted the penumbral model However the shadows and degrees of the penumbral model are an uncomfortable fit for the subjectmatter inquiry Particularly in the case of natural laws treating newly discovered principles as a given or as a baseline to which one must add a further inventive concept threatens to overlook the true nature of invention as well as valuable contributions to the technological arts Here at least the binary model is in need of revival and reaffirmatio

Copyright and Information Theory: Toward an Alternative Model of Authorship

Both literary scholars and students of copyright law have challenged the romantic model of authorship a model emphasizing individual genius and creation ex nihilo Authorship they argue is actually a collaborative effort Authors assemble their works from the fragments of their cultural environment transforming as much as creating Copyright law however still champions the rights of authors and it requires a coherent theory of what authorship is An alternative to the romantic model of authorship can be found in information theory a branch of mathematics dealing at a very fundamental level with all forms of communication Authorship could be defined simply as the unconstrained selection of one means of expression from an array of alternative means a definition mirroring how information theorists quantify the information content encoded in a message That conception of authorship already suggested by existing parallels between information theory and copyrights doctrine of merger answers some of the criticism directed at the romantic model namely its overemphasis on the inspired meaningdefining solitary authorgenius On the other hand this unromantic model would suggest that a broad array of texts qualify as copyrightable works of authorship including some in which the means of expression are selected by random or mechanical processe

Natural Laws and Inevitable Infringement

According to wellestablished principles one cannot patent natural laws or phenomena per se but one can patent new and useful applications of those laws and phenomena Justice Breyers opinion in Laboratory Corp v Metabolite Labs Inc applies this distinction to inventions exploiting natural relationships such as a method of diagnosing a vitamin deficiency by observing elevated levels of an amino acid in a patients blood Justice Breyer concludes that patenting a method based on observation and reasoning amounts to patenting the natural relationship itself a result contrary to policy because it denies others a basic tool of research In fact the traditional dichotomy of principle and application suggests the opposite conclusion But there is a danger in such patents because of the critical role that knowledge plays in infringement The difficulty of avoiding infringement except by embracing ignorance could force the abandonment of activities having substantial noninfringing uses thereby conferring on the patent owner market power beyond the intended scope of the grant Rather than condemn all patents based on useful observations of natural laws or phenomena one should concentrate on those with undesirable and unavoidable spillover effect

Patent Scope and Enablement in Rapidly Developing Arts

The claims of a patent and its enabling disclosure must be commensurate in scope However because of the openended nature of most patent claims in fields of rapidlydeveloping technology it is almost inevitable that before the patent has expired the claims will read on embodiments that the specification does not teach The current law on scope enablement is the source of much confusion Because enablement must be judged from a filingdate perspective some cases dismiss later advancements eg a newlydiscovered species within a claimed genus as irrelevant Other cases in contrast hold patent claims invalid because they exceed the scope of what could be achieved when the application was filed A clear and balanced rule of scope enablement is essential to a patent system designed to promote the Progress ofUseful Arts Claims that exceed the scope of the patent\u27s teachings can stand in the way of technological progress at the same time claims to important advancements “ the advancements most susceptible to elaboration and improvement “ should not be so severely limited in scope that they are all but worthless In this Article I propose an analytical framework designed to reconcile some of the apparent contradictions and to reward patentees in a manner that promotes technological advancement in rapidlydeveloping fields I propose that courts address patent claims that include nonenabled embodiments from the perspective of a reasonable applicant The claims should not be held invalid 1 if the nonenabled embodiments were unforeseeable 2 if the nonenabled embodiments are tangential ie the nonenabled aspects of those embodiments are unrelated to the patentee\u27s contribution to the art or 3 if for some other reason a reasonable applicant could not have been expected to draft claims that would have excluded the nonenabled embodiments The model for this threepart test is the Supreme Court\u27s rule on prosecution history estoppel as outlined in Festo Although enablement and prosecution history estoppel are very different areas of patent law in both cases respect for the limitations of a reasonable applicant leads to outcomes consistent with sound patent polic

Patent Symmetry

The patent system suggests a natural symmetry if nonobvious changes are enough to distinguish a patentable invention from the prior art then further nonobvious changes should be enough to avoid infringing the patent Logical as this seems the courts have adopted the notoriously difficult standard of insubstantial differences rather than nonobviousness as the ultimate test of infringement In this article I consider the possibility of a genuinely symmetrical patent system and find the difficulties profound However I conclude that a semisymmetrical adaptation of the nonobviousness standard of patentability could provide a superior infringement analysis an analysis more objective in application and more consistent with the economic framework of patent doctrin