Introduction to the IPIL National Conference 2024

Marketing communications are almost totally digital while fame at any level is an asset cultivated by many. The implications are seismic for branding and commerce in relation to trademark law, and other law that relates to fame. Digital platforms power broadcast and social media, both of which operate in conjunction with networked communications to provide the modern brand manager with a refined capacity to reach prospects while leveraging fame. These developments raise many topics as trademark law experiences this deluge of change. A sampling from these topics frame the accomplishments of our five invited scholars and their participation at the IPIL/Houston National Conference.

The work of these remarkable scholars is set forth in this 2024 Symposium Issue, Marks and Fame, of the Houston Law Review. This Issue continues a highly productive collaboration between the Law Review and the University of Houston Law Center’s Institute for Intellectual Property and Information Law (IPIL).

Each year IPIL brings together, for the IPIL/Houston National Conference, internationally recognized scholars to explore a particular subject within intellectual property or information law. The 2024 Conference was held on June 7–8, 2024, in Santa Fe, New Mexico.^[1] The event’s goal is to provide a small-group, seminar-course-style discussion of the papers in a locale that is both enjoyable and inspirational. The in-depth review and conversation about the scholarship is unparalleled. It is intimate in a professional and beneficial way. Given the group assembled for the 2024 National Conference, I am honored to briefly introduce the resulting scholarship as reported in this Symposium Issue.

Aptly and impressively using the reality that consumers are targeted and profiled by new technology, in Navigating Trademark Law’s Empirical Turn,^[2] Mark Bartholomew demonstrates the attractive force empirical customer assessments have on trademark law: it incites a possibility to shape doctrine based on new and presumably more accurate and complete data on customer preferences. Professor Bartholomew’s critique of such a turn in the doctrine emphasizes a cautionary approach that keeps prescriptive goals for trademark law in view.

Another aspect of the consumer in trademark law is their inclination to believe a mark’s user is legitimate. In An Information Theory of Intentional Trademark Infringement,^[3] Jake Linford works with that inclination using constructs from information cost theory to explore how trademark law should function when the mark’s user is an intentional infringer. This goes to the intentionality factor in likelihood of confusion analysis, among other places in trademark law. Professor Linford’s analysis provides a defense of the intentionality factor even though that factor is not measuring the consumer reaction to a mark in way equivalent to many of the other factors.

Turning from the consumer to the genesis of certain kinds of marks, there is a group of marks with an aura of exploitation of the young with a goal of bankable fame. In Of Marks and Minors,^[4] Alexandra Roberts unearths a practice of parents or guardians authorizing their children’s names to be in use as marks. Many of these instances are to leverage existing fame, or to capitalize on fame generated by minors, particularly in social media. The minor becomes an adult to find their name is a mark, but finds no ready way to unwind that reality, or pull mark rights as a minor-now-adult. Beyond the unfairness to the minor-now-adult, Professor Roberts explains how this creates a type of deception because the consumers may falsely believe the minor-now-adult endorses the products applying the mark, and she offers several proposals to alter this injustice.

A systemic problem with the trademark system is “clutter” on the register. This problem is the focus of An Empirical Evaluation of the Trademark Modernization Act,^[5] where Jeremy Sheff studies changes from the Trademark Modernization Act (TMA) of 2020 in relation to incentives and procedural pathways to remove clutter. His novel dataset examines all TMA proceedings under the two new types of proceedings put in place by the TMA. His study suggests that the new proceedings are effective for marks with known non-use, but are unlikely to help the problem at scale. Professor Sheff also explores other USPTO administrative interventions to limit spurious marks cluttering the register, including fee alterations.

Expanding beyond the trademark system to include other doctrinal areas related to fame, Elizabeth Townsend Gard and her co-author Sidne K. Gard discuss in Fame: A Conversation About Copyright, Borrowing, and Soup,^[6] a variety of motifs and propositions as a thought experiment of the highest dimension. Their work touches on fanfiction, “borrowing” fame, and many examples from across all levels of art and entertainment. Along the way, they give a suggestion of transposing the Rogers test from trademark law into copyright to enable more flexible and greater borrowing. More importantly, their work highlights with great alacrity the relationships between fame and creativity as both intersect with copyright and trademark law.

The IPIL/Houston National Conference events have been a source of great professional enjoyment and satisfaction over the years. It is with appreciation and pride that I recommend to the academy the works of these tremendous scholars in this 2024 Symposium Issue of the Houston Law Review.