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The CREATe Trade Mark Seminar Series, Summer 2024: Forthcoming talks by Prof. Michael Birnhack on Trade Mark History, and Dr Xiaoren Wang on Innovative Methods with commentator Prof. Barton Beebe

Posted on    by Elena Cooper
BlogTrade Mark Seminar Series

The CREATe Trade Mark Seminar Series, Summer 2024: Forthcoming talks by Prof. Michael Birnhack on Trade Mark History, and Dr Xiaoren Wang on Innovative Methods with commentator Prof. Barton Beebe

By 23 May 2024July 2nd, 2024No Comments

decorative bannerWe are delighted to announce the forthcoming online events for The CREATe Trade Mark Seminar Series, Summer 2024. Both talks are on a Thursday from 2pm to 3pm UK time. Full details, including dates, abstracts and biographies, can be found below.

As previously announced, the CREATe Trade Mark Seminar Series comprises two on-line talks about trade mark law each term: one on trade mark history, and one on innovative methodologies in researching current trade mark law.

The Series was launched in Spring 2022, with talks from Dr Jennifer Davis (University of Cambridge) on nineteenth century trade mark history, an interdisciplinary team from NYU –  Prof. Barton Beebe, Dr Roy Germano, Prof. Christopher Jon Sprigman and Prof. Joel H. Steckel – on experimental methods. It has since also included presentations about trade marks and empirical methods by Prof. Florent Thouvenin (University of Zurich) and Daniel Gerber (University of Basel), Dr Zhihao Zhang (University of Virginia), Prof. Ian Ayres (Yale Law School), Dr Xiyin Tang (UCLA School of Law) with commentator Prof. Paul Heald (University of Illinois School of Law), and talks about trade mark history by Prof. Oren Bracha (University of Texas), Prof. Dev Gangjee (University of Oxford), Jose Bellido (University of Kent) and Prof. Kathy Bowrey (University of New South Wales), Dr Barbara Lauriat (Texas Tech University School of Law), Elena Cooper (CREATe) and Prof. David Higgins (Newcastle University Business School) with commentator Prof. Alison Firth (University of Surrey).

Zoom links for the seminars will be emailed a few days before the events to all on The CREATe Trade Mark Seminar Series mailing list. There is no need to RSVP. To join the mailing list, please contact Elena Cooper: elena.cooper@glasgow.ac.uk

SEMINAR 1: TRADE MARK HISTORY

Time and place: Thursday 23rd May 2024, 2pm to 3pm, UK time, online.

Speaker: Prof. Michael Birnhack, Tel Aviv University.

Chair: Dr Elena Cooper, CREATe, University of Glasgow.

Title: Historical Trade Mark Data and the Reconstruction of Mandate Palestine’s Trade Mark Register (1917-48).

Abstract: Historical trade mark data offers a rich yet underexplored resource for historians of many fields, such as law, economics, business, culture, and design. Trade mark data offer a fresh lens to observe the law in operation, track economic changes, search for indicators of innovation and competition, and identify subtle cultural trends. The main obstacle is the absence of readily available historical data. Alongside the benefits of studying historical trade mark data, this talk will discusses its downsides: Firstly, trade marks are a voluntary legal tool rather than an obligation, and secondly, in traditional economies and certain markets, commercial activity transpires under the trade mark radar. Hence, the registries do not reflect the entire commercial scene.

To illustrate the potential and the caveats of researching historical trade mark data, I discuss the reconstruction of the trade mark registry of Mandate Palestine, from its debut in 1922 until the end of the Mandate in 1948. The reconstructed registry is open to all for academic research, and is available here.

Biography: Michael Birnhack is a Professor of Law at the Faculty of Law, Tel Aviv University. He teaches, studies, and writes about intellectual property and its history. His 2012 book on Colonial Copyright was published with OUP. He now works on trade mark history. Michael was Associate Dean for Research, he founded and directed the S. Horowitz Institute for IP. In 2020 he won the Zeltner prize for excellence in research.

SEMINAR 2: INNOVATIVE METHODOLOGIES IN RESEARCHING CURRENT TRADE MARK LAW

Time and place: Thursday, 6th June 2024, 2pm to 3pm UK time, online.

Speaker: Dr Xiaoren Wang, CREATe Fellow/University of Dundee.

Commentator: Prof. Barton Beebe, NYU School of Law.

Chair: Dr Elena Cooper, Senior Research Fellow, CREATe.

Title: Should we Worry about Colour Depletion? An Empirical Study of USPTO Single-Colour Trade Mark Registrations.

Abstract: Trade mark law across the US, EU and UK permits the registration of single colours as trade marks. However, some judges and experts have raised concerns about this law, known as the colour depletion theory, which argues that it could deplete the pool of available colours for use as trade marks. This theory suggests that trademarking single colours raises several issues. It creates market entry barriers. As more single colours are claimed as trade marks, there are fewer colour options left for new entrants. Moreover, colour depletion leads to increased consumer search costs. When more single colours are claimed as trade marks, the distances between colours shrink and the boundaries between colour trade marks are blurred. Thereby consumers are more likely confused by similar colour trade marks. Despite extensive theoretical debates on colour depletion, this article is the first empirical study that investigates whether in reality colour depletion is severe or ignorable. This article examines 858 single-colour trade marks recorded in the United States Patent and Trademark Office (USPTO). It is the first quantitative research which uses Python program to examine the scale and distribution of depletion across different colours and product/service classes. It analyses (1) the existing colour depletion percentage in each product/service class, and (2) how soon each product/service class will reach full depletion, and (3) the distribution of depletion in different colour areas (hue segments). Based on this data analysis, the article concludes that colour depletion is an emergent concern in certain product/service classes including electric and technological products (Class 9), medical instruments (Class 10), etc which are likely to be fully depleted by 2050. Moreover, many colour trade marks are concentrated in the red (hue 246-15), orange (hue 16-25, 46-55), yellow (hue 56-65) and green (hue 96-155) segments in Classes 7, 9, 10, 11 and 35. The finding partially proves the colour depletion theory. Based on this finding, the article further provides recommendations to the USPTO/courts to address colour depletion and calls for re-checking the ‘first-possession’ trade mark system.

Biographies:

Xiaoren Wang is a lecturer in IP law at the University of Dundee and a research fellow at CREATe. She focuses on empirical research on IP issues including trade marks, copyright and digital platforms. She is also interested in the law and economic analysis in the fields of IP law and frontier technologies. Xiaoren graduated from the University of Illinois. After that, she worked as a post-doctoral Global Fellow at NYU and the European University Institute (EUI) as well as an academic visitor at the University of Oxford. She currently serves as the Cyberlaw convenor of the Society of Legal Scholar (SLS), hosts the CREATe Trade Mark Seminar Series and co-leads the Scottish Law and Innovation Network (SCOTLIN).

Barton Beebe is the John M. Desmarais Professor of Intellectual Property Law at NYU School of Law and a Co-Director of the Engelberg Center on Innovation Law & Policy at NYU. He specializes in the doctrinal, empirical, and cultural analysis of intellectual property law. He has been the James S. Carpentier Visiting Professor of Law at Columbia Law School, the Anne Urowsky Visiting Professor of Law at Yale Law School, the Cheng Yu Tung Visiting Professor at The University of Hong Kong Faculty of Law, a Visiting Professor of Law at Stanford Law School, and a Visiting Research Fellow at Merton College, Oxford. He is the author of Trademark Law: An Open-Source Casebook, a free digital trademark law textbook used in numerous law schools around the world.

 

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