Professor Hrdy moderated a panel on trademark law at Penn Law on Friday. The panel, entitled, “How Far Should Trademark Protection Extend?” was hosted by the Penn Intellectual Property Group (PIPG) for their Annual Symposium, which took place on Friday, March 21, 2025, at University of Pennsylvania Carey Law School.
The Panelists, pictured above, were: Amy Landers, Professor Law at Drexel School of Law, Willajeanne McLean, Distinguished Professor of Law at University of Connecticut School of Law, Monica Talley, director and head of Sterne Kessler’s Trademark & Brand Protection Practice, and Saurabh Vishnubhakat, Professor of Law at Cardozo Law. Camilla Hrdy, Associate Professor at Rutgers Law, was the moderator.
Here are Professor Hrdy’s opening remarks:
The topic of this panel is: “How Far Should Trademark Protection Extend, And Should Stronger Marks Get Greater Protection?” The topic is inspired by a law review article by Barton Beebe & Scott Hemphill, called “The Scope of Strong Marks: Should Trademark Law Protect the Strong More than the Weak?” The article came out in the NYU Law Review in 2017. Kudos to the editors for choosing a topic that is a law professor’s dream and, to quote Monica Talley, a “practitioner’s nightmare”!
So for those who have not read the article, I will give bit of background.
The classic trademark infringement analysis asks whether defendant’s use of plaintiff’s trademark is likely to cause confusion among consumers of the defendant’s products. To assess confusion, courts apply a factor-based test. In the 2d Circuit, it’s the Polaroid Factors. Here in the 3d Circuit it’s the Lapp Factors.
Normally: if plaintiff has a strong trademark, this makes it more likely plaintiff will win. That’s because, in all circuits, the confusion test assumes (usually under “Factor 1: Mark Strength”) that a stronger mark weighs in favor of confusion. So if a trademark is conceptually or commercially strong – like, say, VIRGIN for an airline or GOOGLE for an internet service – then we assume that consumers are more likely to be confused when they encounter that same mark, VIRGIN or GOOGLE, on defendant’s products. The conventional rationale for affording greater scope to strong marks like VIRGIN and GOOGLE is that strong marks are more likely to be “Top of Mind” for consumers, and so consumers are more likely to drawn an association whenever they see these marks.
In their article, Beebe & Hemphill challenged this conventional wisdom. They asked: Shouldn’t strong marks actually require less protection, given that when consumers know a plaintiff’s trademark very well, they will understand that the defendant’s business is actually different? Consider the example of COKE. Having been exposed to the COKE mark countless times throughout their lives, aren’t consumers more likely to detect differences between the real COKE mark and a defendant’s similar marks?
The authors note that some foreign courts—so courts outside the US— have held that exceptionally strong marks are less likely to be confused with other marks. But here in the US, we seem wedded, for better or worse, to the dogma that strong marks get greater protection.
So in this panel we will consider the general topic of trademark scope, and the relationship between a mark’s strength and a mark’s scope.
1. We will consider, among other things, whether strong marks, like COKE, TIFFANY, NIKE, and PLAY DOH should get greater protection, or less protection. Why do we generally give strong marks greater protection? Is it to help prove confusion, and if so, how does strength help? Or is this a policy decision? Do we agree with the thesis that “super strong” marks are in some situations immune from confusion?
2. We will discuss doctrines that seem to give more protection to strong marks, such as “Factor 1-style reasoning” in confusion cases, and “dilution theory,” which of course is designed to protect famous trademarks, regardless of the presence or absence of confusion.
3. We will also discuss certain doctrines that limit trademark scope, even for very strong marks, such as the First Amendment and “functionality” doctrine.
4. Then we will consider the fascinating question of “Who Decides?” – the courts, or the administrative agency in charge of trademark registration: the US Patent & Trademark Office. If the trademark office gets it wrong (or right!), what authority does a court have to overturn that decision?
5. Finally, we will visit the creative idea, raised in more recent trademark scholarship, that a marks “bad will” – its negative reputation among consumers – should have a bearing on its scope of protection.
Let’s begin…