Alan Marco, USPTO
TM case files are already publicly available. Data from assignments. One of roles of gov’t is to provide public
goods, and open data is really important there.
Patent application information is coming, as are similar tailored data
sets (time series of applications by technology).
Assignments: involve choices. Main involve assignment of assignor’s
interest (generic, change of ownership, e.g., inventor to employer); merger;
security interest agreement; license; name change; correction; other. Patent form: electronic choices are different
than on the paper form. You can write in
whatever you want. Tried to create categories out of the answers, but full text
is in the data.
Trading a patent/TM might be an indicator of value—those that
have changed their name a lot or made corrections aren’t necessarily more
valuable, but merger/security interest/license is some indication of
commercialization/use. TM: 4 million property-level transactions; patent: 4
million post-grant.
Banks demanded rights to blue oval logo used by Ford as
security for $23 billion loan. Can Ford
put up its goodwill as collateral? Is the mark valuable separated from
goodwill? Security interest recordation
happens quickly; merger etc. may not. No
incentive to tell TM office until it’s time to renew the mark, since only the
owner can take action at the PTO. So different actions have different
recordation lag. Ford recordation
happened on the day it was executed. Real growth in security interest filings:
more common than change of ownership.
Are they recording more or is this actual growth? We think this reflects
actual trend to assign security interests in marks, in large part because banks
as assignees have significant incentive to record.
In patents, similar overall trend though security interests
don’t outpace change of ownership. 8-12%
marks are involved in some type of recorded transaction each year, not counting
release of security interest. That’s a
lot! Patents, it’s 4-8% depending on how
you define it—similar trend, lesser magnitude.
Big banks are big players: Bank of America 15%, JPM Chase 10%, Wells
Fargo 10%. New specialization in valuing
brands for purposes of security interest.
Assignment and renewal are both value correlates. But part
of this correlation may be artificial, based on incentives to assign. If you want to renew a TM, only the owner can
do that, so assignment is required. So someone
who doesn’t bother to renew might not bother to assign.
So what? Deals not
primary drivers of IP value, but this is a signal. More liquid and robust market for IP; valuation
is getting better. Collateral use shows that trading/licensing isn’t the only
way to get value. Secondary markets:
take some lessons from mortgage-backed securities (MBS). Financial firms have a
great idea: If underwriters are writing insurance contracts for the banks,
maybe that can be packaged into a security!
A lot of people he talks to in IP are talking about that with
excitement. Trading with perfect
liquidity. That worked out not so well
in MBS. An IP bubble?
Nicola Searle, UKIPO
TM lookalikes:
a case study of what happens with TM research.
“Fast moving consumer goods” (FMCG) markets: food, cleaning, personal
care products. Sold by a third party,
looks similar to brand owner’s product.
Head & Shoulders example.
80s: lookalike bottles in one shape; H&S changes shape and then so
do lookalikes.
Massive tension between brand owners and supermarkets. Brand owners may not like going after major
or even only customers. UK: supermarkets
have advance notice of packaging changes; Belgium: only 6 months notice allowed,
by statute. Many times the packages aren’t
actually infringing. Other
goods/services can be involved—books with similar covers, singers who look like
other singers.
Idea is that entrance of lookalike affects supplier’s market
share. Claim: affects innovation—lower returns
to marketing/packaging innovation if it’s copied easily. Not much reasearch in this area because it’s
difficult to do. DG Enterprise 2011
report found lookalikes didn’t affect market share or introduction of new
products. Did find that Spain was
different, where lookalikes were relatively new. Lookalikes may increase size of market
instead. Another argument: wasteful
repackaging/innovating done just to avoid lookalikes.
Competition: use of advance notice to one’s own
advantage. Category colors: if a
particular soap has a particular color, should other soaps be allowed to use
that color? Monopoly concerns, esp. when
design is functional. Consumer concerns:
industry purports to represent consumers.
Could increase choice; could increase confusion. What are the actual consequences? Finally, signalling: used in a loose matter
when we talk about TM. Need a better
definition; the idea that lookalikes confuse brand signals.
Research: brand owner interviews; consumer survey; sales
analysis. Industry-based surveys are
open to a lot of manipulation, reflected in existing literature. Looked for evidence of consumer mistakes,
perception of common origin, perception of quality based on similarity to
national brand.
Classic case in UK: Puffin v. Penguin—Penguin biscuits were copied
and Puffin was the knockoff; lost the case because too close. It was challenging to get participation from
supermarkets.
Surveys demonstrating confusion don’t show economic
impact. Brand owners can be happy with
consumer surveys—they tend to use them themselves in product development. Eye tracking tech—track how much longer the
eye lingers—but that doesn’t tell you about economic impact or why consumers
end up choosing what they choose.
Sales analysis: people wouldn’t share confidential sales
data; not enough to draw proper conclusions.
Overall: equivocal. A small, but statistically significant
lookalike effect leading consumers to believe that similar looking products
have similar characteristics and similar origin. Roughly equal numbers of
consumers feel disadvantaged by a mistaken purchase as advantaged. (If you don’t feel oppressed, are you really
oppressed?) You can’t say they cancel
each other out. Substantial majority had
deliberately purchased a lookalike and found the experience advantageous.
Limited evidence that lookalikes spur brand innovation. Not found that lookalikes directly cause
brand owners to make changes to packaging.
Sales showed an association between an association between a reduction
in sales of the brand leader and an increase in sales of the lookalike in a
limited number of product categories.
We end up with big question marks on data, actual impact of
lookalikes.
Q: does copying allow copycats to raise their prices?
A: no evidence.
Supermarket own-brand copies and independent copycats exist.
Q: what impetus?
A: her private impression: stakeholder pressure. Had suggestions for new legal right/extension
of TM.
Q: conclusions might question the validity of trade dress
law, since they’re so inconclusive.
Another commenter’s perspective: private right of action
allows it to be addressed case by case, instead of squeezing it all into the
same category. (RT: This risks big false
positive errors though!)
Another comment: benefit of private right of action is
unclear—if the problem is supermarkets, then there are collective action
problems.
A: Ireland has a private right of action, not used much.
Either it’s just used as a threat, or it’s not used at all.
Asda’s big line is “chosen by you.” The whole idea is that they have lookalikes,
at lower prices, and thus provide consumer value. Surveyed consumers about opinions and also
asked them to look at products. People
with more experience with the product were less likely to be confused.
Comment: mistake that leads to satisfaction could keep
consumers switched/lead to repeat purchase of the copy—take business away.
Q for Marco: does increased securitization distort
incentives to patent/register TM?
A: it is a way to monetize. For the most part, in this sector,
they need debt financing to produce—mostly manufacturers. And it’s a portfolio,
including other intangibles not just marks.
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