TY - JOUR
AU - Barkan, Kobi
AB - The author Kobi Barkan is a Corporate Associate at Simpson Thacher & Bartlett LLP. Kobi holds a Master of Laws (LL.M.) from the University of Chicago, where he was a Gruss Lipper Fellow and a Donald M. Ephraim Scholar in Law and Economics. Abstract At the centre of an elementary and heated debate in the corporate world an increasingly influential ‘stakeholderism’ view promotes taking into account the interests of all the stakeholders in a firm. Such ongoing debate traditionally focuses on the fundamentals of corporate law but rarely addresses any other potentially relevant fields of law and the growing role stakeholders may play in such contexts. In contrast to other contributions concerning stakeholders, the focus of this work is trade mark law and how its underlying policies may support the notion of acknowledging stakeholder interests. This article wishes to present the case for trade mark stakeholders, illustrating the contemporary tension in the trade mark world between ensuring consumer welfare, on the one hand, and providing property rights to trade mark owners, on the other. This article explores whether trade mark law's ‘one size fits all’ approach suits the modern marketplace. This article does so in light of the established goals and overarching policy of trade mark law,1 and suggests that, although the traditional paradigm is suitable to most industries, it may not achieve its intended purpose in others. This article focuses on the specific case study of trade mark stakeholders in the higher education industry to present this issue—emphasizing the value of trade marks in the eyes of stakeholders. It offers a glimpse on the role that trade marks and the associated brand recognition play in consumers’ preferences in the higher education sector, as well as the opportunity to rethink if current trade mark law achieves its intended economic and legal goals, in light of the notion of trade mark stakeholders. I. Introduction By identifying the source of the goods, trade marks convey valuable information to consumers at lower costs.2 In fact, many argue that the overarching goal of trade mark law, one which subsumes the goals of lowering consumer search costs and incentivizing consistent levels of product quality, is to foster competition, primarily by enabling the efficient communication of information in the marketplace.3 It is well accepted that the economic justification for trade mark protection is that, to some degree, it helps assure that the owner of the trade mark or service mark will reap the financial and reputation-related rewards4 associated with a desirable good or service.5 It has also long been recognized that trade marks serve important goals for consumers as well—such as expressing allegiances to a particular brand or associating with the reputation and prestige of some marks or firms6 The underlying value of the trade mark, which rests upon brand recognition, positioning and differentiation in the marketplace, is usually what consumers are willing to pay a premium for. Certain trade marks serve as an important signalling mechanism for consumers—embodying goodwill, reputation, prestige and exclusivity. People may often ‘brand’ themselves using trade marks and other trade names to position and differentiate themselves as well. Nevertheless, consumers are seemingly neither entitled to reap any of the associated financial rewards or other managerial privileges nor do they possess any positive legal rights with respect to trade marks. The law does provide certain limited rights, mainly negative in nature—for example, the Lanham Act §§ 13 and 14, 15 U.S.C. §§ 1063 and 1064, which provide the opportunity to ‘any person who believes that he would be damaged’ to oppose or cancel the registration of a mark.7 This raises the question, why not provide a person or other legal entity who is likely to be damaged by any change or abandonment of a mark with a similar right. In practice, the existing law does not even require trade mark owners to take into account any effect the exercise of their prerogatives will have on any consumers that hereinafter will be addressed in this article as trade mark stakeholders. In recent years, there have been quite a few examples of situations where consumers’ stake and reliance on a trade mark has allegedly caused them reputational and even financial harm. It is rather apparent in academia, where attending certain higher education institutions serves as a powerful signalling mechanism, specifically, to potential employers and to the community. The article intends to present some instances that may help explore this theory further. Whether conceptually based on notions of reliance upon an implied covenant in the course of a relational contract or deriving from disruption of optimal information in the marketplace, the alleged harm to trade mark stakeholders is rather thought-provoking. Among other things, amending current trade mark law may impose a significant burden on firms, challenge prominent legal principles like freedom of contract,8 the corporate power doctrine, and is most likely to complicate the free rein generally given to trade mark owners to manage their business, including changes of names, divesting marks and product lines.9 Furthermore, under certain circumstances, it may even impede innovation and perpetuate stagnation in the market. This contribution wishes to address this issue and explore whether or not the law should acknowledge such trade mark stakeholders and think about providing them with appropriate legal standing—that is, should particular types of consumers be entitled to any legal rights or causes of action concerning the use or disuse of trade marks. Part II briefly describes the statutory and doctrinal framework, including the common convention regarding the purpose of trade mark law and a very brief summary of the notion of stakeholders. Part III presents the relevant case study that may illustrate the case for acknowledging trade mark stakeholders, and for providing them legal rights. Lastly, Part IV offers preliminary conclusions and discusses potential future scholarship. II. The statutory and doctrinal framework A. Trade mark and unfair competition law There are trade marks and service marks instantly recognizable by a very large proportion of humanity in the modern marketplace: these are among the most valuable and influential signs in the world, ‘rivalling in significance many religious and national symbols’.10 Trade mark law regulates these brand names from the multi-billion dollar global brands to the name of the local shop down the street. Modern trade mark law in the USA stems from the Federal Trademark Act of 1946,11 commonly called the Lanham Act. The term ‘trademark’ is defined in the Lanham Act to include ‘any word, name, symbol, or device, or any combination thereof’ used or intended to be used in commerce,12 to identify and distinguish goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. The term ‘service mark’ is defined similarly to identify and distinguish the services of one person from the services of others and to indicate the source of the services.13 Generally speaking, such a trade mark or service mark provides the owner an exclusive right to use the mark in commerce or in connection with the goods or services specified in the registration.14 The Supreme Court’s 1879 opinion in the Trade-Mark Cases15 is the first great US Supreme Court opinion on trade marks.16 In it, Justice Miller delivered the opinion of the court and compared trade marks to two other most prominent forms of intellectual property, patents and copyrights: The ordinary trade-mark has no necessary relation to invention or discovery. The trade mark recognized by the common law is generally the growth of a considerable period of use, rather than a sudden invention. It is often the result of accident rather than design, and when under the act of Congress it is sought to establish it by registration, neither originality, invention, discovery, science, nor art is in any way essential to the right conferred by that act.17 The current orthodox view is that trade marks help consumers to select goods or services. A trade mark may also induce the owner to make higher quality goods or provide higher quality services and to adhere to a consistent level of quality. A trade mark is a valuable asset, part of the ‘goodwill’ of a business. If the owner of the trade mark provides an inconsistent level of quality, or reduces quality below what consumers expect from earlier experience, that reduces the value of the trade mark. As part of the rise of the traditional Chicago School economic analysis of law, many believe that the value of a trade mark is in a sense a ‘hostage’ of consumers;18 if the seller disappoints the consumers, they respond by devaluing the trade mark. The existence of this hostage gives the seller another incentive to afford consumers the quality of goods they prefer and expect. In addition to ensuring quality, it is well-accepted that trade marks also signal prestige.19 This article will further explore the role of trade marks as a powerful signalling mechanism in Part II. B. Stakeholders The theory and practice concerning stakeholders in the legal literature are mostly attributed to corporate law. It was originated as a theory generally arguing that managers in a corporation should make decisions that take account of the interests of all the stakeholders in a firm.20 At the centre of a fundamental and heated debate about the purpose that corporations should serve, an increasingly influential ‘stakeholderism’ view advocates giving corporate leaders the discretionary power to serve all stakeholders and not just shareholders.21 For example, the Statement on the Purpose of a Corporation (the ‘Statement’), initially released by the Business Roundtable,22 on 19 August 2019, redefined its definition of the purpose of a corporation, putting the interests of employees, customers, suppliers and communities on par with shareholders. The Statement, widely viewed by many as a major milestone in the evolution of the modern corporation,23 specifically states that ‘while each of our individual companies serves its own corporate purpose, we share a fundamental commitment to all of our stakeholders’.24 It shall be noted that many disagree as to the actual effects of such widely celebrated Statement. For example, a notable criticism claims that the Statement is mostly for show, representing rhetorical public relations move, rather than the harbinger of meaningful change.25 Although the effects of the Statement and its historic significance remains to be seen and even assuming it is mostly of symbolic value, as viewed by some critique, its importance and contribution to the official acknowledgment of stakeholders in the corporate law world can’t be underestimated. The issue of stakeholders was put on centre stage in, arguably, the most capitalist stronghold of corporate law. Such ongoing and heated debate concerning ‘stakeholderism’, which this article does not presume or intend to cover, as it goes beyond the scope of the present inquiry, traditionally focuses on the fundamentals of corporate law but rarely addresses any other potentially relevant fields of law and the growing role stakeholders may play in such contexts. One field of law where it is essential to examine stakeholders, in the opinion of the author, is trade mark law. Instead of focusing on the much-debated principles of corporate law, this article wishes to delve into the world of trade mark law and examine how its underlying policies may even bolster the notion of acknowledging stakeholder interests. Although there may be very different definitions and perceptions towards the notion of stakeholders, the author will address trade mark stakeholders as groups or individuals who can, in theory, or in principle, be materially affected by the value of the trade mark.26 Whilst the notion of stakeholders in the corporate law has its own justification and rationales, which this article does not intend to cover,27 the reasoning for providing legal rights and taking into account stakeholders’ interests concerning trade marks may prove itself to be even more fundamental and well-founded, considering the goals behind and the overarching policy of trade mark law. The article will now present what may be a relevant case study to showcase and further develop this notion. III. Higher education as a case study A. The role of trade marks in higher education Trade marks in the higher education system mostly include the institution’s name, logo and insignia, but may also include names of schools, faculties or other facilities as well as mascots and slogans (like a motto and other taglines). Such trade marks may range from generic to fanciful on the trade marks Spectrum of Distinctiveness.28 These trade marks are quite often named in honour of a specific individual,29 such as Harvard University30 or Stanford University,31 among many others. Trade marks in the higher education sector, like in other industries, minimize consumer search costs, and encourages providing consistent levels of quality. Indeed, the general public primarily identifies institutions by their names, logos and insignia.32 As indicators of quality, trade marks in the higher education system signify and allow institutions, like other traditional firms, to develop commercial goodwill, which for many may be by far their most valuable asset.33 The concept of goodwill encompasses the reputation of the institution, including associated prestige and perceived quality, and the probability, based on this reputation, that the marketplace will continue to patronize the institution in the future. Consumers, that is, prospective students, may rely heavily on the trade mark in their decision-making process of choosing which institution to attend and they are willing to pay premium prices in the form of expensive tuition for some rather than others. Moreover, even the non-consuming public, like students’ family members, employers and the community are highly sensitive to the role trade marks play in the modern marketplace. The use of trade marks by higher education institutions is, for the most part, addressed in business and marketing professional literature, namely, as part of brand strategy. Branding became part of the higher education lexicon,34 and today, most colleges and universities around the world have embraced a brand strategy.35 Due to growing competition in attracting students, branding has become more relevant in promoting an institution’s reputation, as well as generating revenue.36 The institutions would usually own the trade mark and be entitled to reap its financial and reputational-related rewards associated with it. First, they use their trade marks to compete fiercely for students and allegiance. In fact, colleges and universities today find themselves competing for students and support in a marketplace made increasingly complex by a convergence of factors.37 Their target audience is bombarded by an assortment of marketing messages and consumer information—beginning with the ranking systems that identify the ‘best’ schools and the ‘top’ programs In addition, the audience is also much more brand-savvy and sophisticated than its predecessors in previous generations. Brand loyalty is becoming much more important and dominant in the modern age than in the ‘relatively homogenous world of old’.38 Second, higher education institutions use their trade marks to generate revenue from athletic wear, apparel and other consumable goods.39 They usually do so by either using the trade mark, licensing it, or enforcing it against others. Sometimes by adopting an approach that incorporates all three possible courses-of-action. While trade marks would not generally be considered scholarly material that is serving the public good, such institutions rely heavily on income from merchandising, promotional goods and other types of commercialization of intellectual property rights in general, and trade marks, in particular.40 In fact, many intuitions have offices or whole departments devoted entirely to trade mark policy, protection and licensing.41 Whilst trade marks’ purportedly traditional focus was on consumer protection,42 we are witnessing a ‘slight tilt’43 by courts towards a more property-right rationale and the protection of the business interests of trade mark owners. This does not seem to be aligned with the Lanham Act’s scope and the overarching policy of trade mark law, which is the protection of consumers and the assurance of consumer welfare.44 According to legal scholars, when trade mark law reaches beyond its traditional focus on consumers and the marketplace—it has left its theoretical foundations and its stretches the rationale of trade mark law beyond all limits.45 Acknowledging trade mark stakeholders may chill the ‘gradual but fundamental shift in trademark law’ we are witnessing, bearing in mind the point of trade mark law has ‘never been to maximize profits for trademark owners at the expense of competitors and consumers’.46 B. The role of trade marks for stakeholders A closer look at the elementary theory behind higher education may help establish the role of trade mark in the eyes of stakeholders in this sector. Education as a signal of intellectual ability and capability has long been established when dealing with information asymmetry in Game Theory47—when the best that uninformed parties can do is to draw inferences from the actions that the informed party takes. Perhaps the most seminal paper in signalling games48 demonstrates the possible Bayesian Nash equilibria, including the separating equilibrium where high-productivity potential employees invest in education to distinguish themselves from low-productivity ones when productivity is not directly observed by an employer.49 The main relevant insight is that if potential employees cannot communicate their private, non-verifiable information directly to employers, they will acquire education even if it does not increase productivity,50 just to demonstrate ability.51 Hence, the informational value of the credential as a signalling mechanism, regardless of any actual contribution to productivity.52 Supposedly, attending certain higher education institutions functions more than merely a way to signal ability: it has become a status symbol—a symbol of the institution’s goodwill, which signals prestige,53 success, selectivity and exclusivity, among other things. In many instances, this is mainly what is sought after by consumers, as may be well exemplified by the ‘College Admissions Bribery Scandal’, addressed further below.54 People often associate their own reputation with that of others, including legal entities that are not natural persons.55 For example, ‘name dropping’ is a common practice of naming or alluding to people and institutions within a conversation or other form of communication.56 The term often connotes an attempt to associate one with another, most notably to try and impress others. People may often ‘brand’ themselves using trade marks and other trade names, including with the prestige, goodwill, experience, success and even failures of others. The technique is also used quite often to elevate or position a particular individual within a social hierarchy. That is, to create a sense of superiority by raising one’s status, which can be achieved by associating (whether explicitly or implicitly) with people of certain high status, degree of pedigree, expertise, recognition and so forth. The same is also true when referring to unnatural entities. By wearing a Rolex or driving around in a Bentley, you signal something to the world. Rolex is not just a watchmaker but a luxury watchmaker. It is hard to ignore that attending a certain academic institution or working for a global and well-known company has a similar, if not the same, effect.57 People take great pride in their Alma mater and associate their own ‘brand’ with that of the institution. Saying you went to Oxford University, for that matter, signals out very different types of information than stating you went to a relatively unknown small university, which may very well provide the same level or better quality of education. Drawing on the results of a survey designed to identify the perceived value attributed by potential stakeholders to trade marks in the higher education sector, 99 per cent of those surveyed thought that the institution’s trade mark and associated prestige or reputation is important, and more than 73 per cent were of the belief it is crucial—either very important or extremely important. Moreover, essentially all participants valued the individual association with the trade mark at more than $0 and two-thirds of the participants valued it at more than 50 per cent of the tuition price paid.58 C. The case for trade mark stakeholders in higher education and the alleged harm of devaluation In the higher education sector, there are quite a few recent examples that proponents of acknowledging trade mark stakeholders’ rights may turn to. The most notable example from recent years is, perhaps, the new ‘incarnation’ of the University of Pennsylvania Law School (also known as ‘Penn Law’). At the end of 2019, the Board of Trustees of the University of Pennsylvania (‘UPenn’) decided to change the name of the University’s law school to Carey Law School, after receiving a donation of $125 million from the W. P. Carey Foundation. Naturally, several alumni and current students resented such a unilateral decision and argued that the brand would be severely impaired and lose its associated prestige and goodwill, and that employers would no longer recognize the new name, causing irreparable injury to their careers as a result. Put differently, that the informational value of the trade mark they worked so hard to ‘earn’ and invested significant amounts of time and money to be associated with,59 would be seriously diminished and would not be able to efficiently facilitate valuable information in the marketplace. Building on such economic rationale, recent graduates would have had access to better job opportunities and received higher compensation absent the University’s decision to change its name, which harms its reputation and prestige. Moreover, certain alumni may argue that the loss of the trade mark informational function is also restricting their mobility on the job market and therefore, they will face a harder time switching positions in their careers and upgrading their wages as well as other compensation levels due to the diminished value. The same argument is also relevant to other classes of alumni who are not on the job market per se, such as independent service providers—they would have a harder task of recruiting new clients or retaining current clientele due to the University’s decision and the alleged devaluation. Following the extensive backlash and after more than 3000 law students and alumni signed a petition demanding the school to change its name back, University officials decided to change back the Law School’s short-form name until the fall of 2022, when the shortened name would then become ‘Penn Carey Law’, 60 which is supposedly a less harmful name and one that is still able to connote its original informational value. Ordinarily, the preponderance of the supposed damage will be suffered by the institution itself,61 but it is difficult to overlook the potential agency costs and, arguably, externalities arising out of this scenario.62 The alleged harm arises in the consumer market while the benefits flow, at least directly, to the institution. The traditional ‘hostage’ theory was laid out in Part I, whereby the trade mark is held hostage by consumers. Bearing that in mind, it will now be argue that a reverse theory is also plausible. In some specific instances, consumers63 may also be viewed as ‘hostages’ of the trade mark, like in the higher education system. These former interrogate consumers, now trade mark stakeholders, are a vested public. Moreover, in essence, they are locked-in64 as their switching opportunities are plainly non-existent following graduation.65 Such stakeholders have already attended the institution, surely to some extent, on the basis of the brand’s perceived value at the time of the decision-making process (that is, typically before enrolling or during attendance). Subsequently, their expectation interest, as well as reliance interest, may be materially harmed. Many potential stakeholders do not fully contemplate the possibility of the institution changing or abandoning the trade mark as reasonable or even likely, as this seems as an irrational behaviour by the institution.66 Drawing again on the results of the survey conducted, 86 per cent of those surveyed would feel injured if the institution they attended decides to change its name, and from them, more than 56 per cent would consider it as an economic harm, illustrating the potential harm. In addition, close to 80 per cent of those surveyed would expect the institution to either consult or obtain stakeholders’ consent before making such a decision. Moreover, 84 per cent of those surveyed answered that if they knew beforehand that the institution they plan to attend decided to change its name it will affect their decision to study there, to some extent. After actually attending the institution these stakeholders may pursue further education in other institutions or try to mitigate such harm in other ways67 but they certainly cannot ‘turn back time’ and decide to choose to attend a different higher education institution.68 Hence, stakeholders are the ones now held hostage by the owner of the trade mark as the mark’s value is closely linked to their own goodwill, reputation and prestige.69 The owner of the trade mark ‘holds all the cards’,70 whilst any change or abandonment may cause or be reasonably correlated with irreparable harm caused to such stakeholders. D. Additional potential harms: consumer confusion and dilution Any trade mark change may lead to the abandonment of the ‘old’ mark,71 as the law requires actual use in commerce.72 Assuming the trade mark owner does not maintain sufficient activities to meet the standard for the quantum and nature of use,73 theoretically, the old trade mark will return to the public domain and will be ‘up for grabs’74 so that any third party may appropriate it.75 Subsequently, the case for consumer confusion arises, especially given the lingering goodwill and continuing association that may evoke in the minds of the public. Adopting a new name often necessitates that an institution abandons a prior name that has acquired extensive goodwill, to the detriment of students and alumni who were likely deprived of competitively important information and access to better job opportunities.76 When an appropriator uses a ‘new’ mark that retained goodwill and that a critical mass of consumers treats as a source signifier, it may enable the appropriator to secure a windfall that otherwise may have gone to the original mark owner, potentially harming consumers.77 Moreover, it raises the possibility of dilution by blurring78 or even tarnishment.79 Dilution is not confusion, quite the contrary.80 Whereas in classic confusion the consumer is confused by erroneously designating the source to a different owner or believing there is only a single source while in fact there are two (or more) unaffiliated sources, in dilution the consumer correctly understands81 the multitude of sources but the perception of the mark dilutes because it no longer exclusively designates the goods or services of the original owner.82 Dilution is likely and can occur even where the underlying products or services are non-competing, and no confusion is possible.83 Most notably, dilution by blurring84 may occur when a mark previously associated with one product or service also becomes associated with a second, which weakens the mark’s ability to evoke the first product or service in the minds of consumers. This weakens the ‘commercial magnetism’ of the mark, diminish its ability to evoke the original association, and, consequently, deteriorates its value.85 Rather than focusing on consumer confusion, the dilution theory seeks to protect the interests in the trade mark, which may be severely damaged by blurring its identification or creating negative associations. In addition, the specific case of UPenn may demonstrate that consumer confusion and dilution may arise even with respect to the ‘new’ mark. Consumer confusion may occur, namely, due to false association, as there is more than one higher education institution that bears a similar name,86 including at least one law school (Maryland Carey Law). Such resemblance may very well be likely to cause confusion, mistake or to deceive as to the affiliation, connection or association between the two marks or as to their origin. Although we can assume that such confusion is less likely to affect direct consumers (that is, prospective students who wish to enrol, as, presumably, they will not make uninformed decisions87 without conducting a decent inquiry beforehand and acting in due care) it may very well have a significant impact on indirect consumers, such as potential employers or recruiting professionals (as well as the surrounding environment, to some extent) which, although may be considered as quite sophisticated parties, may not invest the time and resources to properly differentiate between the two. The likelihood of confusion may be quite substantial,88 especially given the fact that these are virtually identical or similar services, namely, education services.89 Thus, causing the alleged harm to stakeholders.90 Other notable examples that may illustrate the subject include the decision by the University of Chicago in 2008 to change the name of its business school, the Graduate School of Business (or more popularly known as the GSB), to the Booth School of Business, after the alumnus David G. Booth gave the school a gift valued at $300 million, and in honour of that gift. Also, George Mason University’s decision in 2016 to change its law school name to Antonin Scalia Law School,91 which was contingent upon92 receiving an anonymous $20 million ‘naming gift’ donation to the law school that was accompanied by $10 million donation from the Charles Koch Foundation.93 This raises additional issues concerning the change of trade marks and renaming decisions. Not only the potential devaluation of the association with the former trade mark, which may be viewed as an economic as well as reputational harm by many,94 but also the new association with, perhaps, controversial figures or those which are not aligned with some people’s worldviews, beliefs or other values. The renaming decision by George Mason University has reportedly drawn criticism from students, politicians and legal scholars who disagree with the late Justice’s conservative social views and philosophy of constitutional originalism.95 In addition, some criticize such decisions for other reasons and accuse such donations as undue influence over higher education institutions, which harms their academic integrity.96 In a letter addressed to students and alumni by, then, the law school dean, Henry N. Butler, he apologizes that many of them were ‘blindsided by the announcement’.97 Furthermore, he mentions that he has received ‘a great many comments in response to the gift announcement and corresponding name change… most are simple congratulations, some congratulatory messages say they don’t like the name but understand the realities and how the gift is great for the law school, many are very positive, many are very negative (almost all respectful)’.98 The former dean has also addressed the implications on diplomas, assumingly to the many questions and concerns raised by current students, and stated that ‘nothing will change’ with the diplomas of the graduating class of 2016. In terms of future diplomas, the dean clearly mentioned in the letter that ‘some students have asked that they be allowed to choose which law school name to have listed in the signature block’ and assures that they will be ‘exploring our options in this regard so that hopefully we can accommodate student requests’. Another interesting example, arguably illustrating the ‘flip side’—when a name ‘turns sour’, is the decision of the University of California, Berkeley School of Law to change its name and omit Boalt Hall,99 after the discovery of racist writings by John Henry Boalt. Reportedly, this was also decided in response to student and teacher protests, perhaps representing part of a larger movement of renouncing racist or controversial figures.100 Another very recent example is the University of Illinois Chicago to rename its law school and remove the reference to John Marshall Law. The decision was approved by its Board of Trustees, which noted as the main reason for the change that ‘despite Chief Justice Marshall’s legacy as one of the nation’s most significant U.S. Supreme Court justices, the newly discovered research regarding his role as a slave trader, slave owner of hundreds of slaves pro-slavery jurisprudence, and racist views render him a highly inappropriate namesake for the Law School’. This might also suggest that trade mark owners are somewhat responsive to stakeholders101 and public perception in certain limited cases.102 In fact, the University of Illinois Chicago has published that the decision came after months of review by a task force that ‘gathered input from students, faculty, staff, and alumni, conducted research and proposed principles to guide the institution in evaluating a potential name change’.103 Thus, recent cases suggest that owners are inclined to the proposition to take into account stakeholders’ perception when the name has the likelihood of becoming immoral or scandalous, but not when lucrative donations are on the line. Such asymmetry has obviously the potential of harming stakeholders while in other cases there seem to be mostly an ‘upside’ to such a decision—not only regarding the welcomed disassociation but also concerning new potential associations.104 Some may even argue that because competition among higher education institutions is getting stiffer and stiffer, they have learned that they must become more accountable to their constituents.105 E. Epilogue Many argue that over the last few decades, higher education has increasingly become a commodity.106 Hence, at least with respect to the role of trade marks in the market, there is really no good reason to distinguish between the higher education system, where consumers attend a certain university and receive education services in exchange for paying inflated tuition, and other more traditional markets. The ‘College Admissions Bribery Scandal’107 (the ‘Scandal’) may illustrate the perceived value attributed to higher education—not for the purpose of learning for the sake of learning but rather as a goal in and of itself. The Scandal, addressed by some as ‘the worst scandal involving elite universities in the history of the United States’,108 might suggest of the value society attributes to quality higher education.109 Clearly, some people were willing to spend significant amounts of money,110 not to mention the associated risks (including actual incarceration), to secure admission for their children to certain institutions. It is safe to assume that for some, admission to these relatively selective institutions must be extremely valuable—signalling a benchmark of quality, intellectual ability, prestige and so forth. In fact, some may argue that the aftermath of the Scandal actually makes higher education institutions appear even more exclusive and desirable than ever. This may also portray the prominent role that network effects play in the higher education industry.111 Naturally, attending a prestigious higher education institution is a status symbol. The more prestigious the institution is, the more prestigious the ‘aura’ associated with the individual. Moreover, for some parents, this may serve as an opportunity to pursue their dreams through their children and gain so-called ‘bragging rights’ and upgraded status.112 For others, it goes without question that their children will attend the institution they graduated from or only institutions that they, or their surrounding environment, deem ‘worthy’. Treating trade marks as an end of itself by owners is not a new development and the law seems to have gravitated towards this approach in recent years.113 Nevertheless, the respective treatment by stakeholders and the sought-after association is something in need of further exploration. Providing the institution with the full discretion and autonomy in controlling its brand name seems very much aligned with the property-right rationale—that the trade mark is a valuable thing that can be owned in and of itself.114 However, this is a rather striking reversal of the normal role of trade mark law, which may be directly attributed to the changing concept of what a trade mark is and the growing misguided trend of treating it as if it were property in its own right. Many have observed that the legal system is ‘seem to be replacing the traditional rationale for trademark law with a conception of trademarks as property rights, in which trademark owners are given strong rights over the marks without much regard for the social costs of such rights’.115 Furthermore, some claim that higher education’s choices with respect to trade marks should matter not only to stakeholders but to all of us, inter alia, because they affect our marketplaces and the use of it ‘merits concern and reconsideration by the public’.116 In fact, the author believes that higher education institutions are not well-positioned to claim that their alleged free rein concerning trade marks have no effect on its stakeholders and the general public or that only their own financial interests should matter,117 in such instances.118 And to quote Ralph Brown from his seminal article on trade mark law, over 70 years ago: [W]hat appear to be private disputes among hucksters almost invariably touch the public welfare. We shall therefore be concerned to ask, when courts protect trade symbols, whether their decisions further public as well as private goals.119 IV. Conclusions and future scholarship This article has set out to raise and present the case for trade mark stakeholders. That is, groups or individuals that may be materially affected by the value of the trade mark, which are not its owner. Whereas the traditional stated purpose of trade mark law is consumer protection,120 the current legal system may be insufficient to fully address nor to officially acknowledge such consumers’ stake and reliance on the value of the trade mark. Following the formulating of the argument and understanding the possible stakeholders’ perception towards such trade mark the article has also raised several questions that are certainly of need of further exploration, including: (i) whether or not current precedent will, theoretically, provide standing to such stakeholders; as well as (ii) if the amendment of the Lanham Act to introduce and provide stakeholders with a possible legal right to oppose a change or abandonment of a mark, similar to §§ 13 and 14,121 may be justified from a legal and economic standpoint.122 In the higher education sector, for example, if the institution is not obtaining its students and alumni consent or even consulting with them beforehand, they may have a cause of action to oppose such change or abandonment. This may better serve the overarching policy of trade mark law of maintaining the informational value of the mark in at least two ways: (i) encouraging the institution to voluntarily take into account stakeholders’ interests (sort of bargaining ‘in the shadow of the law’); and (ii) providing cause of action to stakeholders in, arguably, the most extreme cases where the harm inflicted upon them would be material enough to file a legal claim. Although space constraints prevent a full exposition of these ideas, including the possible establishment of a property rule or liability rule,123 the author does wish to offer some preliminary thoughts on how to better align the goals and outcomes of trade mark law in the future. The author is of the belief that the case for trade mark stakeholders may also be viewed through the lens of additional relevant industries, including the fashion industry, such as ‘diffusion line’ strategy and the possible implications of mark devaluation in the eyes of consumers; or the sports industry, such as professional sports clubs124 and franchises’ rebranding and redesigning decisions,125 merchandising and the doctrine of ‘tacking’.126 These, as well as other industries or scenarios, may further demonstrate the need for legal reform to provide standing and legal rights to certain stakeholders. Although there remain systemic and complex issues with respect to standing127 and the proper scope of stakeholders’ rights that future scholarship can continue to explore, for now, the mere possibility of acknowledging stakeholders in the field of trade mark law will be a rather significant development. Subsequently, the view of the author is that future scholarship should be focused on the development of a theoretical framework aimed at distinguishing between the different scenarios and set of circumstances under which providing a legal remedy to stakeholders may be justified from a legal and economic standpoint.128 Such a scholarly framework should, ideally, evaluate such a question, differentiating between different types of stakeholders and the relevant classes of goods and services of the potential trade marks, and offer proposed solutions. In doing so, taking into account these preliminary and non-exhaustive guiding principles, may come in hand: (i) the duration of use of the trade mark (the longer it is used the more stakeholders it would generally have, and the more stake and reliance they would usually develop); (ii) the strength or distinctiveness of the original mark (the stronger the mark—more distinctive it is, the more likely the devaluation to occur); (iii) the likelihood of resemblance between the ‘old’ and ‘new’ mark—using the likelihood of confusion factors129 as a guiding principle with the relevant adaptations. The rationale is that the more similar the mark is, the harm to consumers should generally be less severe, and applying the proportionality test, particularly the least harmful mean (alternative names which may mitigate the harm to stakeholders) may prove itself useful; (iv) actual evidence of confusion or dilution caused by the change; (v) the sophistication and level of care or interrogation by the relevant consumers as well as the general public; and (vi) the alleged financial harm to stakeholders and proper balance of the parties’ interests. It may be challenging to adopt a bright-line rule in the case of stakeholders, nor should it be a bright-line approach. Unlike in other fields of law, such as tort, the act of balancing between contraindicating interests may require the adoption of more loosen assumptions by courts when addressing the issue. A possible useful tool to address this question may be found in the more general field of competition law,130 the Williamson Trade-Off.131 Such model may be used to properly balance between the business justifications of the decision to change or abandoned the trade mark (for example, the amount of the specific donation received by the institution) with the alleged perceived harm to stakeholders. Comparing between the two and allowing the institution to approve such decision only if the justifications outweighs the alleged harm may contribute to reaching a decision that maximizes the total welfare of society and takes into account also the interests of the consumer market and not only the property-right rationale of trade mark owners. Further exploration of this fascinating intersection of intellectual property, competition and contract law may fully adopt the acknowledgment of the notion of trade mark stakeholders, and may further demonstrate that there are legal and economic justifications to support drawing the line elsewhere on the spectrum between a property right and consumer welfare. Such inquiry is especially intriguing in light of the ongoing debate about the fundamental nature and scope of the right under existing trade mark law—particularly, as many critics often accuse the law of having lost its purportedly traditional focus on consumer protection and having instead embraced a property-right rationale.132 The scholarly objectives of this article are to stimulate professional discourse and contribute to such continuous debate by offering a glimpse at a possible relevant case study that may illustrate the case for trade mark stakeholders and present the contemporary tension between ensuring consumer welfare on the one hand and providing property and autonomy rights to trade mark owners on the other. Footnotes 1 Please note the article uses the British English word “trade mark”, unlike American English or the World Intellectual Property Organization (WIPO) preference to “trademark”. Please refer to: The Trade Marks Act 1994 (as amended). Available at: https://www.legislation.gov.uk/ukpga/1994/26/contents (accessed 4 June 2022). 2 ‘Easily identified trademarks reduce the costs consumers incur in searching for what they desire, and the lower the costs of search the more competitive the market’. Please see US: Scandia Down Corp. v. Euroquilt, Inc., 772F.2d. 1423 (7th Cir. 1985). 3 Beebe, Barton, ‘Trademark Law: An Open-Source Casebook, Version 7’ Available at www.tmcasebook.org (accessed 19 April 2022). 4 William M Landes and Richard A Posner, ‘The Economics of Trademark Law’ (1988) 78 Trademark Rep 267. 5 Yet it is important to bear in mind that trade mark law is based not on the Intellectual Property Clause of the US Constitution, but the Commerce Clause. Its goal is not to promote the progress of ‘science and useful arts’ but rather to promote fair and efficient competition. Most notably, trade marks, unlike other intellectual property rights such as patents and copyrights, are of potentially unlimited duration—in part, because the rationale for their use and protection does not wane over time. Please see Louis Kaplow and Steven Shavell, ‘Economic Analysis of Law’ (February 1999) Harvard Law School, John M Olin Center for Law, Economics and Business, Discussion Paper No. 251, Available at SSRN: www.ssrn.com/abstract=150860 (accessed 19 April 2022). 6 The US Court of Appeals for the 9th Circuit for, example, specifically addressed trade marks’ intrinsic utility to consumers and articulated it well in International Order of Job’s Daughters v. Lindeburg & Co., 633F.2d 912 (9th Cir. 1980): ‘we commonly identify ourselves by displaying emblems expressing allegiances. Our jewelry, clothing, and cars are emblazoned with inscriptions showing the organizations we belong to, the schools we attend, the landmarks we have visited, the sports teams we support, the beverages we imbibe’. 7 Despite the broad language, the US Supreme Court has concluded that permitting suit by ‘any person’ should not be taken ‘literally’, and has ruled in Lexmark International, Inc. v. Static Control Components, Inc., 572 US 118 (2014) that standing must be framed by two ‘background principles’, which may overlap and should be based on proof that (i) the plaintiff’s interests fall within the zone of interests protected by the law invoked; and (ii) a violation of the statute was the proximate cause of the injury of question. The conventional view is that to fall within the zone of interests, plaintiffs should have a commercial interest in reputation or sales (present or future), arguably, providing a cause of action only to direct competitors, assuming those competitors will serve as ‘avengers’ of the public, as they have the greatest interest in enforcement, and in many situations the greatest resources to devote to a lawsuit, to enforce the statute rigorously. Please see Dillbary, Shahar John, ‘Trademarks as a Media for False Advertising’ (1 March 2009) U of Alabama Public Law Research Paper No. 1351862, Cardozo Law Review, Vol. 31, No. 327, 2009, Available at www.ssrn.com/abstract=1351862. 8 But see, for example, Melvin A Eisenberg, ‘The Bargain Principle and its Limits’ (1982) 95 Harv L Rev 741, arguing for the restriction of the domain of freedom of contract by norms of reciprocity, trust and fairness. 9 But then again, one may ask how is this so different than the separation of ownership and control in Corporate law. Please see, for example, Eugene F Fama and Michael C Jensen, ‘Separation of Ownership and Control’ Foundations of Organizational Strategy (Harvard University Press 1998), and Journal of Law and Economics, Vol. 26, June 1983, Available at www.ssrn.com/abstract=94034 (accessed 19 April 2022). 10 See Supra note 3 (page 10). 11 Codified at 15 U.S.C. §1051 et seq. 12 The Lanham Act was revised in 1988 by the Trademark Law Revision Act of 1988 to include the intent to use system into US law, please see the Lanham Act § 45, 15 U.S.C. § 1127 definition of trade mark, which includes in subsection (2): ‘a person has a bona fide intention to use in commerce and applies to register on the principal register’. 13 This paper will hereinafter also refer to service marks when addressing trade marks, as a broad sense to encompass these as well. 14 The Lanham Act § 33, 15 U.S.C. § 1115. 15 US: Trademark Cases, 100 U.S. 82 (1879). 16 Often written at the time as ‘trade-marks’ or ‘trade marks’, which latter usage British English still prefers to this day, and which was used throughout this article. 17 Justice Miller further adds: ‘The trade-mark may be, and generally is, the adoption of something already in existence as the distinctive symbol of the party using it’. He then stresses that either by use or by registration it does not ‘depend upon novelty, invention, discovery, or any work of the brain. It requires no fancy or imagination, no genius, no laborious thought. It is simply founded on priority of appropriation… If the symbol, however plain, simple, old, or well-known, has been first appropriated by the claimant as his distinctive trade-mark, he may by registration secure the right to its exclusive use’. 18 See supra note 2. 19 Definition in Oxford online dictionary: ‘noun, Widespread respect and admiration felt for someone or something on the basis of a perception of their achievements or quality’. Definition in Cambridge online dictionary: ‘noun, respect and admiration given to someone or something, usually because of a reputation for high quality, success, or social influence’. But see also the word’s origin, as indicated by Oxford online dictionary: ‘Mid 17th century (in the sense “illusion, conjuring trick”): from French, literally “illusion, glamour”, from late Latin praestigium “illusion”, from Latin praestigiae (plural) “conjuring tricks”. The transference of meaning occurred by way of the sense “dazzling influence, glamour”, at first depreciatory’. 20 Please see Michael C Jensen, ‘Value Maximization, Stakeholder Theory, and the Corporate Objective Function’ (October 2001). Tuck Business School Working Paper No. 01–09; Harvard NOM Research Paper No. 01–01; Harvard Business School Working Paper No. 00–058, Available at www.ssrn.com/abstract=220671 (accessed 19 April 2022). 21 Colin Mayer, ‘Shareholderism Versus Stakeholderism – a Misconceived Contradiction. A Comment on “The Illusory Promise of Stakeholder Governance” by Lucian Bebchuk and Roberto Tallarita’ (3 June 2020). European Corporate Governance Institute—Law Working Paper No. 522/2020, Available at www.ssrn.com/abstract=3617847 (accessed 19 April 2022). 22 Also known as BRT, A nonprofit association based in Washington, D.C. whose members are chief executive officers of major US corporations, including Jeff Bezos of Amazon, Tim Cook of Apple, Mary Barra of General Motors and Larry Fink of BlackRock, among many others. Please see Available at www.s3.amazonaws.com/brt.org/BRT-StatementonthePurposeofaCorporationOctober2020.pdf (accessed 19 April 2022). 23 Lucian A Bebchuk and Roberto Tallarita, ‘The Illusory Promise of Stakeholder Governance’ (2020) 106 Cornell Law Review 91–178, Harvard Law School John M Olin Center Discussion Paper No. 1052, Harvard Law School Program on Corporate Governance Working Paper 2020–1, Available at www.ssrn.com/abstract=3544978 (Please see the review on Section III specifically). 24 The Statement also ends with the following declaration, which may further support such notion: ‘Each of our stakeholders is essential. We commit to deliver value to all of them’. 25 See supra note 23. 26 It shall be noted that, in principle, such trade mark stakeholders may also materially affect the value of the trade mark, as further detailed below. 27 Instead, this paper will focus on the proposition of trade mark stakeholders considering the informational value of trade marks and the goals behind trade mark law. 28 The Spectrum/Continuum of Distinctiveness: arrayed in an ascending order which roughly reflects their eligibility to trade mark status and the degree of protection accorded: (1) Generic (2) Descriptive (3) Suggestive and (4) Arbitrary or Fanciful. The classification is based on the ‘distinctiveness’ of the term under analysis. Distinctiveness is the capacity of a word or phrase to distinguish the goods of one seller from those of a competitor. The lines of demarcation, however, are not always bright. Please see US: Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976). 29 Which now may be considered as Primarily Merely a Surname in accordance with the Lanham Act § 2(e)(4)), 15 U.S.C. § 1052(e)(4)) or Primarily Geographically Descriptive, the Lanham Act § 2(e)(2)), 15 U.S.C. § 1052(e)(2)). 30 Named Harvard College in 1639 for its first benefactor, clergyman John Harvard. 31 Named in 1885 by its founders in memory of their only child, Leland Stanford Junior. 32 H Jacob Rooksby, The Branding of the American Mind: How Universities Capture, Manage, and Monetize Intellectual Property and Why It Matters (Johns Hopkins University Press 2016). 33 Please see Beebe, Supra note 3 (pages 24–25). 34 Please see Jay Blanton, ‘Engagement as a Brand Position in the Higher Education Marketplace’ (2007) 7 International Journal of Educational Advancement 143–54: suggesting that successful branding and engagement with relevant stakeholders are inter-related and, to a large degree, interdependent. 35 See, for example, Rex Whisman, ‘Internal Branding: A University’s Most Valuable Intangible Asset’ (2009) 18 Journal of Product and Brand Management 367–370. 36 Brand strategy would usually include much more than merely trade marks, such as identity, messaging, pricing, distribution channels, etc., but for the purpose of this paper, for the most part, we will use the terms brand and trade mark interchangeably. 37 Please see Supra note 35. 38 Please see Mark A Lemley, ‘The Modern Lanham Act and the Death of Common Sense’ (1999) 108 Yale Law Journal 1687, 1999, Available at www.ssrn.com/abstract=147788 (accessed 19 April 2022). 39 See, for example, US: Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008). 40 See, for example, Available at www.universitybusiness.com/trade marks-easy-money-for-higher-education/, claiming that trade mark in higher education generates $4.6 billion for institutions each year and is the second largest category of licensed merchandise in the USA, behind only the Major League Baseball (accessed 19 April 2022). 41 For example, Harvard University has an independent trade mark licensing office, please see: Available at www.trademark.harvard.edu and also: Available at www.stradley.com/insights/publications/2019/04/education-alert-april-2019?site=full (accessed 19 April 2022). 42 Please see US: Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73 (1938) Holding that ‘the primary significance of the term in the minds of the consuming public is not the product but the producer’ that is, identification of the producer and not a designation of the product. 43 Please see US: Boston Professional Hockey Assoc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir.), cert. denied, 423 U.S. 868 (1975) noting that ‘our decision here may slightly tilt the trade mark laws from the purpose of protecting the public to the protection of the business interests of plaintiffs’. But, also see the same court later addressing the issue in different terms in US: K. F. C. v. Diversified Packaging, 549 F.2d 368 (5th Cir. 1977), and the RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 20 (1995), noting that the standard for infringement is the use of a designation that causes a likelihood of confusion. 44 See, for example, Robert C. Denicola, ‘Freedom To Copy’ (1999) 108 Yale l.j. Available at www.doi.org/10.2307/797446 (accessed 19 April 2022). 45 Please see Supra note 38, asserting that trade marks are justified to the extent they ‘communicate useful information to consumers, and thereby reduce consumer search costs’. 46 Id. 47 Douglas G Baird, Randal C Picker and Robert H Gertner, Game Theory and the Law (Harvard University Press 1994). (Chapter 4: Signaling, Screening, and Nonverifiable Information). 48 Michael Spence, ‘Job Market Signaling’ (1973) 87 The Quarterly Journal of Economics 355–74, Available at www.doi.org/10.2307/1882010. 49 Distinguished from a pooling equilibrium where the player that possesses the private, non-verifiable information that is unfavorable (low productivity) mimics the behavior of those who possess favorable information. One assumption Spence makes is that the signal will not effectively distinguish one potential employee from another unless the costs of signalling are negatively correlated with productive capability. See Supra note 48. 50 Please see also screening theory and the observation that employees with a completed academic degree earn a greater income than employees who have a roughly equivalent amount of studying without possessing an academic degree (the diploma), also known as ‘sheepskin effects’. For example, Thomas Hungerford and Gary Solon, ‘Sheepskin Effects in the Returns to Education’ (1987) 69 The Review of Economics and Statistics 175–7. JSTOR, Available at www.jstor.org/stable/1937919: ‘individuals with more schooling tend to earn more not because (or, at least, not solely because) schooling makes them more productive, but rather because it credentiates them as more productive’. 51 As all potential employees will communicate that they are high-ability individuals and employers will have no direct way of telling whether any information conveyed is truthful. 52 The informational value of the credential comes from the fact that the employer believes the credential is positively correlated with having the greater intellectual ability and will be difficult for low-ability employees to obtain. 53 Despite the abstract nature of prestige in higher education, there has been no shortage of ratings and rankings that attempt to measure it. In fact, many argue that many ranking guides, including US News attribute significant (or definitive, per some) weight to reputation and prestige (in the form of ratings from academic peer assessments and guidance counselors). Please see, for example: Kyle Sweitzer and J Fredericks Volkwein, ‘Prestige among Graduate and Professional Schools: Comparing the U.S. News’ Graduate School Reputation Ratings between Disciplines’ (2009) 50 Research in Higher Education 812–836. JSTOR, Available at www.jstor.org/stable/40542345. See also US News own disclosed methodology for ranking colleges for the 2022 rankings: Available at www.usnews.com/education/best-colleges/articles/how-us-news-calculated-the-rankings (where the factor of academic reputation [peer assessment survey] is weighted as 20 per cent of the ranking) and for the 2023 graduate schools: Available at www.usnews.com/education/best-graduate-schools/articles/how-us-news-calculated-the-rankings (which is based on two types of data: expert opinions and statistical indicators). 54 Please see Infra note 107. 55 David Waller and Rupert Younger, The Reputation Game: The Art of Changing How People See You, Oneworld Publications (14 November 2017). 56 Defined in Cambridge online dictionary as: ‘the act of talking about famous people that you have met, often pretending that you know them better than you really do, in order to appear more important and special’. 57 Although, arguably, to more specific social groups and networks. 58 Full results of the survey and its methodology, including the questions asked, a breakdown of the answers and some main insights can be found on SSRN: Available at www.ssrn.com/abstract=3875902 (accessed 19 April 2022). 59 Please see Alexandra J Roberts, ‘Goodwill U: School Name Change & Trademark Law’ (2013) 3 IP Theory , Article 5. Available at www.repository.law.indiana.edu/ipt/vol3/iss2/5: ‘I can’t shed my identity as an alumna like I can a hoodie or a hairdo; it appears on my resume and diploma and forms an integral part of my identity and my professional reputation’ (accessed 19 April 2022). 60 Please see Available at www.thedp.com/article/2019/11/penn-law-carey-renaming-change (accessed 19 April 2022). 61 With that being said, the author of this paper finds it hard to believe that such acceptation of donations and subsequent trade mark appropriation will harm the owners of the trade mark financially, certainly not in the short-term because demand in most elite institutions is strikingly higher than supply and given that there is no real competition between the top academic institutions in terms of tuition (that is, competition is not reflected in the ‘sticker price’ of tuition. Of course, competition concerning the quality of student body, faculty, scholarship, research, publication and other is vigor). It is more than possible, however, that the devaluation and associated loss of prestige, trust and other factors will most likely only harm the trade mark owner in the long-term. This is another reason per the author that agency costs are material in this context. 62 In the sense that when receiving generous donations in consideration of the decision to change the name, the institution, faculty, and other staff are certainly reaping the benefits of such a financial grant, but they do not incur the full costs associated with the decision. Of course, to a lesser degree, some current and future students may also enjoy the fruits of such a decision directly, in the form of more scholarships, higher amounts of scholarships, or other financial awards. In addition, current and future students may also enjoy it indirectly, like improvement of facilities in the university, greater budgets for research, hiring of new faculty, and so forth. With that being said, it is hard to see how recent graduates and alumni enjoy the benefits of such decision, which leaves them to ‘fall between two stools’—they do not benefit from the financial grant and they also suffer diminished prestige and deterioration or devaluation of the mark they invested a great deal to attain or associate with. 63 Or past consumers more accurately, which now may be addressed as trade mark stakeholders. 64 Please see the discussion concerning a similar rationale in US: Eastman Kodak Co. v. Image Technical Servs., Inc., 504 U.S. 451 (1992). See also Ioana Elena Marinescu and Eric A Posner, ‘Why Has Antitrust Law Failed Workers?’ (14 February 2019). Available at www.ssrn.com/abstract=3335174, for the discussion concerning labor markets competitiveness, which also suggests that monopsonist conduct may further restrict competition in labor markets, especially concerning skilled labor (accessed 19 April 2022). 65 See also Supra note 59: ‘When a student enrolls in a school, it creates a relationship between the student and the school’s trademark that is different from and broader than the relationship created when a consumer buys a more easily articulable good or service: the ‘product’ purchased comprises not only educational services, but a degree. The school’s good name, which may fluctuate over time, affects the degree’s value’. 66 In many senses, this is a rather irrational behavior by the institution as the main harm will be inflicted upon it but taken together with the contingent donations as possible agency costs, this may be better reflecting the prevalent scenario. 67 No doubt, unpleased stakeholders may have non-legal sanctions such as reputational ones but bear in mind ‘buyers’ of academic degrees are not repeated players per se and, so, reputational consideration assumingly will play a lighter role, although some other prospective students may choose to attend a certain academic institution than another based on this. Networking effects are also pivotal here, displeased parents who are alumni may not send their children to some academic institutions that ‘betrayed’ them but the reputational as well as financial harm to such stakeholders will linger. 68 A legitimate counterargument is that the consumers ‘knew what they are getting into’, which is probably, at least, partially true in a lot of the cases but it is possible that a lot of these consumers do not consider this as a feasible possibility or likely occurrence. 69 See, for example, the role of the trade mark as an important signaling mechanism. 70 See also Supra note 59: ‘While schools occasionally survey alumni and factor their opinions into name change decisions, those schools are the exception, rather than the rule’, also claiming that ‘alumni deserve more consistent consideration and a louder voice in the name change decisions of their alma maters’. 71 Lanham Act § 45, 15 U.S.C. § 1127 establishes when a mark shall be deemed to be ‘abandoned’, including ‘When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment’. The customary interpretation of intent not to resume is not intent never to resume use but it merely means intent not to resume use within the reasonably foreseeable future. Please see US: Silverman v. CBS Inc., 870 F.2d 40 (2d Cir. 1989). 72 The Lanham Act § 45, 15 U.S.C. § 1127 defines ‘use in commerce’ as ‘bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark’ (following the adoption of the Trademark Law Revision Act of 1988). 73 Provided that the owner does not maintain its registration and continue to use the mark in commerce, including by way of intention to exploit it in the reasonably foreseeable future by resuming its use or permitting its use by others. Please see Supra note 71 as well as US: Major League Baseball v. Sed Non Olet Denarius, 817 F. Supp. 1103 (S.D.N.Y. 1993), where the court concluded that following the move of the Brooklyn Dodgers to Los Angeles, the mark ‘Brooklyn Dodgers’, which acquired secondary meaning as a ‘cultural institution’ was abandoned. In contrast, please see US: Indianapolis Colts v Metropolitan Baltimore Football Club Ltd Partnership, 34 F.3d 410 (7th Cir. Ind. 1994) where Judge Posner concluded that although the Baltimore Colts abandoned their trade mark when they moved to Indianapolis it may well evoke a continuing association with the prior use, requiring those who make subsequent use to take reasonable precautions to prevent confusion. 74 In this context, please see the recent controversy regarding Ferrari Testarossa. The Ferrari Testarossa is a world-famous sports car . The car’s production, however, ended in the late 1990s and third parties move to cancel the mark and appropriate the trade mark. One of the main issues was whether or not Ferrari maintained genuine use. See, for example, the decision by the Court of Justice of the European Union, which ruled in favor of Ferrari, overturning a prior ruling by German court ordering the trade mark’s revocation: Judgment of 22 October 2020, Ferrari SpA v DU, In Joined Cases C-720/18 and C-721/18, EU:C:2020:854, Available at www.curia.europa.eu/juris/document/document.jsf?text=&docid=232724&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=10009995 (accessed 19 April 2022). 75 But see, for example, Jake Linford, ‘Valuing Residual Goodwill After Trade mark Forfeiture’ (2018) 93 Notre Dame L Rev 811, arguing that the residual interest of consumers in a forfeited mark should cabin how that mark is adopted by new users. 76 See supra note 59. The article also addresses quite nicely the case for infringement and tarnishment in the higher education sector and further examples but discusses mostly the institution’s rights. 77 In the case of UPenn, assume for the sake of example only, that Pennsylvania State University decides to appropriate the name ‘Penn Law’ for its law school, instead of the current name of ‘Penn State Law’ (or the name is appropriated by any other current or newly established higher education institution in Pennsylvania, for that matter, albeit registration may require the showing of secondary meaning if it is treated as primarily geographically descriptive, per the Lanham Act § 2(e)(2), 15 U.S.C. § 1052(e)(2). 78 The Lanham Act § 43 (c)(2)(A), 15 U.S.C. § 1125 (c)(2)(A): ‘association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark’. 79 The Lanham Act § 43(c)(2)(C), 15 U.S.C. § 1125 (c)(2)(C): ‘association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark’. 80 Please see US: Visa International Service Assn. v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010). 81 That is, the consumer is allegedly not confused, he correctly understands that while there used to be only one source selling goods or offering services under this mark, there are now two (or more). 82 Most frequently addressed as the senior user (as opposed to the junior user). 83 Please see Stacey L Dogan and Mark A Lemley, ‘The Trademark Use Requirement in Dilution Cases’ (2007) 24 Santa Clara High Tech L.J 541. Available at www.digitalcommons.law.scu.edu/chtlj/vol24/iss3/5/, arguing that it is a broad, open-ended dilution statute that could target any unauthorized use of a famous trade mark, almost without limitation (accessed 19 April 2022). 84 Dilution by blurring under § 43(c)(2)(B) occurs, for example, when the senior user possesses a distinctive mark, the junior use of which might not, in the short run, result in loss of sales or loss of control over reputation, but might cause a gradual diminution in the mark’s distinctiveness, effectiveness and, hence, value. This kind of infringement corrodes the senior user’s interest in the trade mark by blurring its product identification or by damaging positive associations that have attached to it. It shall be noted, however, that the classic dilution theory considers only the owner’s interests in the diluted trade mark and fails to recognize any effect this may have on trade mark stakeholders. 85 Although no actual economic injury to a mark’s value is required, a likelihood of dilution will usually suffice to obtain injunctive relief. Please see the Lanham Act § 43 (c)(1), 15 U.S.C. § 1125 (c)(1). 86 To name a few examples: Maryland Carey Law (full name: ‘University of Maryland Francis King Carey School of Law’), Carey Business School (at Johns Hopkins University), W. P. Carey School of Business (at Arizona State University), and William Carey University. 87 It is safe to assume, although, that no inquiry will be made to the actual legal terms of the (standard-form) contract, even if provided with the opportunity to read, as it is simply too impractical. Please see Omri Ben-Shahar, ‘The Myth of the “Opportunity to Read” in Contract Law’ (18 July 2008). U of Chicago Law & Economics, Olin Working Paper No. 415, Available at www.ssrn.com/abstract=1162922 (accessed 19 April 2022). 88 Using, for example, the ‘factors’ tests, adopted by many courts to consider in determining the likelihood of confusion, including inter alia: (1) the strength or distinctiveness of the mark; (2) the similarity of the two marks [(i) similar sound; (ii) similar visual appearance; (iii) communicate the same or similar meaning to consumers)]; (3) the similarity of the goods or services which the marks identify; and (4) the similarity of the facilities used by the parties in conducting their businesses. 89 Generally classified as ‘education’ services under Class 41 in the Nice Classification (NCL), established by the Nice Agreement (1957), the international classification of goods and services applied for the registration of trade marks. See also in this respect Judge Posner in Supra note 73. 90 See, for example Supra note 32, arguing that ‘When communications and marketing professionals develop brand strategies that are not supported internally, consumers feel betrayed and frustrated. Not surprisingly, the reputation of the institution suffers, and the branding initiative becomes a scapegoat for larger problems’. 91 The initial name was set to be Antonin Scalia School of Law, but due to an unfortunate acronym (‘ASSOL’), which sparked some controversy and jokes on social media, the University changed the name once more to the current substitute. See Available at www.npr.org/sections/thetwo-way/2016/04/06/473228688/plan-for-antonin-scalia-school-of-law-is-tweaked-over-unfortunate-acronym (accessed 19 April 2022). 92 In a letter addressed to students and alumni by the law school dean, Henry N. Butler he mentions that although the donating (Naming Gift per Butler) was ‘contingent upon renaming the law school The Antonin Scalia Law School at George Mason University’, under the terms of the anonymous gift, the University was authorized to use a variety of different names. See Available at georgemason.imodules.com/controls/email_marketing/admin/email_marketing_email_viewer.aspx?sid=1564&eiid=1701&seiid=1244&usearchive=1&puid=e390f401-ea33-46ec-9c79-95689602d864&csid=236600 (accessed 19 April 2022). 93 See Available at www.nbcwashington.com/news/local/conservative-string-attached-to-50-million-gift-to-george-mason-university/131962/ (accessed 19 April 2022). 94 In fact, the author is of the belief that the two are closely linked. For example, if a change causes reputational change, it will affect the quantity and caliber of applicants in the future, which will slowly change the general perception of the institution, potentially affecting later employment opportunities (that is, unless employers recognize the nuance and juxtaposition of the current vs past reputation of the institution). 95 See Available at www.nytimes.com/2016/04/06/us/politics/antonin-scalia-george-mason-law-school-acronym.html (accessed 19 April 2022). 96 See Available at www.law.gmu.edu/news/2018/dean_butler_addresses_recent_media and Available at www.washingtonian.com/2016/05/04/george-mason-law-school-antonin-scalia-koch-heritage-donation-rules/ (accessed 19 April 2022). 97 Although it seems that he is mostly referring to the timing of the announcement and not the actual decision or for not involving students or alumni in deciding so. 98 Please see Supra note 96. 99 Although it was never part of the official name, it was attached to more than 120 organizations, public forums and positions related to the law school and became synonymous with the school itself. 100 See, for example, many institutions’ attempts to confront racist legacies by changing names or removing statues: Available at www.bestcolleges.com/blog/confronting-racism-on-college-campuses/, Available at www.news.yale.edu/2017/02/11/yale-change-calhoun-college-s-name-honor-grace-murray-hopper-0, Available at www.theguardian.com/education/2016/apr/13/racism-harvard-law-school-slaveholder-seal. It shall be noted that the issue is not limited to higher education institutions: there has been discussion and debate about renaming monuments, buildings, counties, streets and other public spaces around the USA, particularly in the wake of ‘black lives matter’ movement and the protests following the death of George Floyd: Available at www.en.wikipedia.org/wiki/List_of_name_changes_due_to_the_George_Floyd_protests. See also the Washington Redskins officials’ decision to ‘retire’ its logo and rename the club (currently as the Washington Football Team) after decades of pressure from Native American groups (and reportedly, after sponsors threatened to pull out of deals with the team): Available at www.nytimes.com/2020/07/23/sports/football/washington-football-team-name-logo.html (accessed 19 April 2022). 101 But see Supra note 24: arguing that a governance model that encourages and relies on corporate leaders to serve the interests of stakeholders and not only those of shareholders (‘stakeholderism’) is an inadequate and substantially counterproductive approach to addressing stakeholder concerns, showing recent commitments to stakeholderism were mostly for show rather than a reflection of plans to improve the treatment of stakeholders. Because corporate leaders have strong incentives not to protect stakeholders beyond what would serve shareholder value, acceptance of stakeholderism should not be expected to produce material benefits for stakeholders. Hence, the critical need for external interventions to protect stakeholders via legislation, regulation and policy design. 102 And a possible argument may very well be that the role public perception and reputation play is so significant that providing legal rights to stakeholders may be superfluous. With that being said, it is important to be mindful of the above-alleged limitation to stakeholderism governance and that protests ‘can only get you so far’. In addition, the author of this paper is of the belief that a distinction is in order to distinguish between a mark that is (now) associated with an immoral or scandalous name, which may affect specific communities and society as a whole (thus, encouraging owners to change it more vigorously) and a mark that only represents a possible deterioration in value, which affects the trade mark stakeholders most significantly (in addition to the actual owner). 103 Although the institution does not state what was the exact input that was gathered and if it included a vote, for example, or other methods of involvement by the stakeholders. It publicly stated that it was a ‘process that included input from all corners of the institution and beyond’. See Available at www.today.uic.edu/board-approves-new-name-for-uic-law (accessed 19 April 2022). 104 See, for example, the proposition that the new possible association (and resulted consumer confusion) between the newly named University of Illinois Chicago School of Law and the University of Chicago Law School may benefit stakeholders of the former (while potentially harming stakeholders of the latter). 105 And that pressure may shape institutional behaviors with respect to intellectual property, please see Supra note 32. 106 See, for example: Available at www.chronicle.com/article/how-college-became-a-commodity, but also see, others who think that college is not a commodity: Available at www.washingtonpost.com/posteverything/wp/2015/06/09/college-is-not-a-commodity-stop-treating-it-like-one. Nevertheless, it seems that a majority of both proponents and the oppositionists share the conviction that college has replaced high school as the required ticket for a (successful) career (accessed 19 April 2022). 107 A scandal that arose in 2019 over a criminal conspiracy to influence undergraduate admissions decisions at several top US universities. The case is the largest of its kind to be prosecuted by the US Justice Department—Dozens of individuals allegedly involved in a nationwide conspiracy that facilitated cheating on college entrance exams and the admission of students to elite universities as purported athletic recruits were arrested by federal agents. Athletic coaches from elite universities are implicated, as well as parents and exam administrators. See Available at www.justice.gov/usao-ma/investigations-college-admissions-and-testing-bribery-scheme (accessed 19 April 2022). 108 Including lawyer and former law professor, Alan Dershowitz: Available at www.insider.foxnews.com/2019/03/12/alan-dershowitz-college-admissions-scam-involving-felicity-huffman-lori-loughlin (accessed 19 April 2022). 109 The paper does not intend to address or examine any presumed correlation between the perceived prestige or reputation of an institution and the actual level of quality of education. 110 As alleged by the US Department of Justice (DOJ), between 2011 and 2018, approximately $25 million were paid by 53 parents to bribe coaches and university administrators to designate their children as purported recruited athletes, or as members of other favored admissions categories, thereby facilitating the children’s admission to colleges and universities. See the DOJ complaint: Available at www.justice.gov/file/1142876/download. This, of course, does not consider the actual tuition payments and other fees associated with attending the institution. 111 Arguably, the more graduates an institution has, the more powerful the alumni network and the more appealing it is for prospective students to attend the institution due to placement success as well as networking and employment opportunities. The number of graduates and goodwill also affects the ranking of the institution in various ranking guides and, allegedly, the overall value and prestige of the trade mark (for the owner as well as alumni). See, for example Available at www.digital.hbs.edu/platform-digit/submission/old-school-network-effects/. 112 That is, not only of the actual student or alumnus but also of his close environment, namely, parents. 113 Id. 114 Id., claiming that ‘there is an increasing tendency to treat trade marks as assets with their own intrinsic value, rather than as a means to an end. In part, this change reflects a broader trend towards “propertizing” intellectual property’. 115 Id., pages 11–2. 116 Arguing that ‘Higher education’s choices with respect to intellectual property matters to all of us, because they affect our health, our marketplaces, and our shared cultural and knowledge commons. Activities in this realm are not minor, isolated, or picayune, having no lasted consequences, as some might lead us to believe.’ 117 See, for example Supra note 34: ‘Once the university engaged alumni and faculties to help develop the university’s brand strategy, built from the inside-out, alumni, faculties and others rallied around the brand. In fact, these constituents agreed that the university should not adopt a tagline, as they felt that it would diminish the brand-development process and dilute the brand’. 118 See also Supra note 52, arguing, inter alia, that stockpiling trade marks that go beyond the simple protection of institutional names, logos and insignias may inhibit free speech and present poor licensing opportunities, and should not be allowed even when the potential for market confusion and harm are minimal. 119 Ralph S Brown Jr, ‘Advertising and the Public Interest Legal Protection of Trade Symbols’ (1948) 57 YALE L.J 1165, 1167, reprinted in 108 YALE L.J. 1619, 1621 (1999). 120 See, for example, the Lanham Act § 45, 15 U.S.C. § 1127: ‘The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce’ but also ‘to protect registered marks used in such commerce from interference by State, or territorial legislation’. 121 The Lanham Act §§ 13 and 14, 15 U.S.C. §§ 1063. 122 And see Supra note 59, inquiring whether the government should play a greater role in approving university name selection and reviewing proposed changes. 123 Considering the bargaining opportunities and transaction costs, and the rather odd case where both parties have a semi-property right, that is, the owner of the trade mark and, to a lesser extent, the stakeholders. Please see Guido Calabresi and Douglas A Melamed, ‘Property Rules, Liability Rules and Inalienability: One View of the Cathedral’ (1972) 85 Harvard Law Review 1089. 124 An interesting example is sports clubs owned by fans in some manner. Although the specific corporation entity varies, the structure usually provides fans with the right to vote on many managerial matters, including any change in trade marks or branding decisions. Notable examples include the Spanish football (soccer) as well as basketball clubs FC Barcelona (FCB) and Real Madrid CF, and the US football club, the Green Bay Packers, which is the only fan-owned team in any of North America’s four traditional major leagues. It shall be noted that the National Football League (NFL) currently bans such a public ownership structure. Please see Lynn R Hartel, ‘Community-Based Ownership of a National Football League Franchise: The Answer to Relocation and Taxpayer Financing of NFL Teams’ (1998) 18 Loy LA Ent L Rev 589. Available at www.digitalcommons.lmu.edu/elr/vol18/iss3/8/ (accessed 19 April 2022). 125 See, for example, the quite recent decision of Football Club Internazionale Milano (also known as Inter Milan) to change its logo: Available at www.inter.it/en/news/2021/03/30/new-logo-inter.html, and the subsequent displeased fans’ reactions: Available at www.sportbible.com/football/news-inter-milan-have-revealed-their-new-badge-and-its-causing-a-stir-20210330. See also the Israeli football club Maccabi Netanya’s very recent decision to change its logo and the extensive backlash that followed, which prompt the club to post a survey and let the fans (season ticket holders) choose the new logo. It shall be noted that most fans eligible to patriciate in the survey chose to keep the logo essentially the same (with minor changes forced by the league) (accessed 19 April 2022). 126 A concept usually used to denote the practice of updating a trade mark’s appearance to adapt to the times and changing market conditions. The doctrine of ‘tacking’ permits a party to ‘tack’ the use of an older mark onto a newer mark for purposes of establishing priority of use. The US Supreme Court ruled in US: Hana Financial, Inc. v. Hana Bank 135 S. Ct. 907 (2015) that the test for ‘tacking’ is whether the two marks create the same, continuing commercial impression so that consumers consider both as the same mark. 127 Including revisiting the Lexmark decision, see supra note 7, considering the trade mark stakeholders hypothesis to inquire whether or not it theoretically provides stakeholders legal standing and delve into the rationales behind and against such precedent. Doing so is particularly interesting considering the alleged inconsistency with the statutory text, other recent Supreme Court decisions from the antitrust and competition field (namely, US: Apple v. Pepper, 139 S. Ct. 1514 (2019), and the overarching policy behind trade mark law. 128 There is a rising trend of filing opposition and cancellation applications to the United States Patent and Trademark Office. For example, in the three fiscal years from 2017 through 2019, the number of oppositions commenced rose more than 18 per cent, and cancellation trial cases rose more than 31 per cent. The prevalence and growing use of these instruments may serve as a proxy to the potential suitability and efficiency of providing a similar legal right to stakeholders as well. 129 Please see Supra note 88. 130 Specifically, from the neighboring field of antitrust law. 131 A theoretical model in the economics of industrial organization which emphasizes the trade-off associated with horizontal mergers between gains resulting from lower costs of production and the losses associated with higher prices due to greater degree of monopoly power. Please see Oliver E Williamson, ‘Economies as an Antitrust Defense: The Welfare Tradeoffs’ (1968) 58 The American Economic Review 18–36. Prof. Williamson won the Sveriges Riksbank Prize in Economic Sciences in Memory of Alfred Nobel 2009 (aka, the Nobel Prize) for his work. 132 See supra note 3 (pages 24–9). Author notes * The author wishes to thank Prof. Eli Bukspan for his ongoing support and mentorship. The author also thanks Omri Ben-Shahar, John Shahar Dillbary, Jake Linford, Michael Risch and the participants of the Legal Scholarship Workshop at the University of Chicago Law School for their helpful comments and thoughtful feedback, as well as the Donald M. Ephraim Scholars program in Law and Economics for its financial support in the project. All errors are my own. Email: kobibarkan@gmail.com © The Author(s) 2022. Published by Oxford University Press. All rights reserved. For permissions, please e-mail: journals.permissions@oup.com This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/open_access/funder_policies/chorus/standard_publication_model) © The Author(s) 2022. Published by Oxford University Press. All rights reserved. For permissions, please e-mail: journals.permissions@oup.com
TI - (Don’t fear) the reaper—the uneasy case for trade mark stakeholders
JF - Journal of Intellectual Property Law & Practice
DO - 10.1093/jiplp/jpac054
DA - 2022-06-25
UR - https://www.deepdyve.com/lp/oxford-university-press/don-t-fear-the-reaper-the-uneasy-case-for-trade-mark-stakeholders-olWY2Dq0ft
SP - 586
EP - 599
VL - 17
IS - 7
DP - DeepDyve
ER -