World Trademark Review | Report on “Trademark Confusion Revealed: An Empirical Analysis”

Uncertain trademark infringement rules cause negotiations to break down, harming both brand owners and potential licensees. They also act as a drag on dispute resolution, compliance, and social equity. The rational response must be a call for clarity in the law. Whether the courts’ analysis of confusion will evolve in the future depends on how quickly they can absorb and apply new research. Judges and lawyers are very busy people. They usually focus on the task at hand using the tools at hand, which is completely understandable. This is where publications like World Trademark Review (WTR) are crucially important because they distill new knowledge and make them accessible to judges and lawyers - both digestible and within their radar. Kudos to WTR Senior Reporter Victoria Arnold-Rees for her article "Three tips for US litigants: court rulings on likelihood of confusion unpicked," for doing precisely that. She does an exemplary job navigating through complex legal doctrine and empirical data to offer stakeholders the most relevant and immediately applicable insights. You can read Victoria's piece here: https://www.worldtrademarkreview.com/article/three-tips-us-litigants-court-rulings-likelihood-of-confusion-unpicked (Subscription required) and my article here: https://bit.ly/3PO0zLr

Goodbyes | McAndrews, Held & Malloy

Our partnerships with IP, tech, and privacy attorneys in the Chicago community enrich every aspect of our work. They teach our students, share insights at our conferences throughout the year (and invite us to speak at theirs!), financially support our initiatives, and take the time to help us strategize the next iteration of legal education. A personal thank you to McAndrews Held and Malloy, and especially Christopher Carani, Alex Menchaca, Sharon Hwang Jaster, and Dunstan Barnes for your support and encouragement over the years! You help us exemplify the best aspects of what law schools and firms can achieve together.

Goodbyes | Matt Sag and Tonja Jacobi

Delighted to catch up with Matt and Tonja, and to meet Hari before their move to Atlanta. They commissioned the beautiful and quirky mural on the fence you see behind us. Matt even drafted the copyright agreement for the commissioned work! I am grateful our paths crossed in Chicago and look forward to them crossing again in the future. Folks at Emory will now benefit from Matt and Tonja’s warm hospitality and friendship. They are fortunate to have them both (See https://bit.ly/3aopqFx and https://bit.ly/3lM5FtX for details). Photo credit: Matthew Sag Tonja Jacobi.

Goodbyes | Lunch with Professor James Conley

One of the great pleasures in my work is to connect with inspiring people to find new ways to collaborate. Professor James G. Conley and I have done so several times over the years, most recently through our work with the Illinois IP Alliance (https://www.ilipalliance.org/). He hosted me for a farewell lunch at Northwestern University's beautiful campus in Evanston. Professor Conley is an inventor who serves as a faculty member in the Kellogg Center for Research in Technology & Innovation. He also serves as a Faculty Fellow at the Northwestern University Segal Design Institute and is a Charter Fellow of the National Academy of Inventors. You can read more about him here: https://www.jamesconley.org/

Global Food Value Chains and Competition Law | Agribiotech Patents in the Food Supply Chain: A US Perspective

The food industry is a notoriously complex economic sector. Thank you to Ioannis Lianos, Alexey Ivanov, and Dennis Davis for the opportunity to share my thoughts on it in my chapter "Agribiotech Patents in the Food Supply Chain: A US Perspective." Details here and below: https://bit.ly/3LsmKUa. Chapter 19 explores U.S. agribiotech patent issues as they relate to the food supply chain. Agribiotech patents challenge how we think about fundamental issues of seed ownership, innovation, and when downstream uses are or should be permissible. The chapter first sketches the arc of agribiotech developments in the U.S. from its colonial past to the current day and observes the evolution of protection over seed traits transition from an open socialist-style franchise to a tightly controlled oligarchy subsisting on patent rights. It then assesses patent exhaustion through the lens of Bowman and the Court’s more recent decision in Impression Prod., Inc. v. Lexmark Int'l, Inc. Finally, the author offers observations on three issues: (1) patentees and generic seed companies will remain invested in maintaining compliance for transgenic seed exports; (2) the recent spate of mega-mergers continue the transformation set in motion by the privatization of agriculture more than a century ago, with these mergers benefiting agribiotech companies and farmers abroad, unfortunately, at the expense of U.S. farmers at home; and (3) developments such as retaliatory tariffs on transgenic seed exports will affect agribiotech innovation as surely as developments in patent law, and should be part of any comprehensive analysis of dynamic trends in the food value chain.

Trademark Confusion Revealed: An Empirical Analysis | 71 Am. U. L. Rev. 1285 (2022)

The likelihood of confusion standard defines the scope of trademark infringement. Likelihood of confusion examines whether there is a substantial risk that consumers will be confused as to the source, identity, sponsorship, or origin of the defendants’ goods or services. This Article presents a contemporary empirical analysis of the various factors and how they interact. Conventional wisdom teaches us that courts should comprehensively traverse each factor and that likelihood of confusion cases generally require jury determination. However, the data reveals that neither is true. Instead, courts provide early off-ramps to litigants by “economizing,” and analyzing only a handful of factors or by “folding” factors within each other. The findings also reveal (1) which forums are pro-defendant and which are pro-plaintiff; (2) the impact of rivalry and fair use on outcomes; and (3) an apparent Ninth Circuit dominance. What constitutes “confusion” remains highly subjective and difficult to evaluate. Proxies like intent, survey evidence, mark strength, and consumer sophistication fail to incorporate real-world purchasing conditions or are better considered within omnibus factors. In contrast, actual confusion, mark similarity, and competitive proximity provide judges with a potent trio of factors to guide the infringement inquiry. Together with safe harbors for descriptive and expressive uses, these rules of thumb enable courts to resolve trademark disputes more coherently, consistently, and expeditiously. This Article concludes with a blueprint of how these rules of thumb complement artificial intelligence systems and how those systems can use empirical studies as training data to inform future likelihood of confusion analyses.

June 10 | Learn about IP industry-related mental health and DEI insights!

Join us on June 10 to learn the latest IP industry-related developments in mental health and DEI!   Details below: Noon | Welcome . Adam Ernette, IP Law Fellow, Center for Intellectual Property, Information & Privacy Law, University Illinois Chicago School of Law . Gary Friedlander, Senior Vice President; Deputy General Counsel (International), TransUnion; Advisory Board Member, Center for Intellectual Property, Information & Privacy Law, University Illinois Chicago School of Law 12:15 – 1:45 p.m. | Panel Discussion 1 "Mental Health and Wellness"   Topics include: . Balancing billable and non-billable hours as a junior associate. . Becoming a community or thought leader in your practice area. . Managing success and failure. . Transitions to partnership, in-house, and leaving the legal profession. . Working remotely and abroad.   Moderator/Panelist: Adam Ernette, IP Law Fellow, Center for Intellectual Property, Information & Privacy Law, University of Illinois School of Law   . Rachel Carnaggio, Partner, Holland & Hart LLP . Rachel Hunnicutt, Attorney-Advisor, FDA Regulatory Law Division, JAG, U.S. Army Medical Research & Development Command . Kenneth Matuszewski, Associate, Goldberg Segalla . Dr. Rita Sanzgiri, Patent Attorney (Life Sciences), Eli Lilly Company . Dardoh Skinner, Associate, Pirkey Barber PLLC   2:00 – 3:30 p.m. | Panel Discussion 2 "Diversity, Equity & Inclusion"   Topics include: . In-house and law firm DEI initiatives: One-size-fits-all? . Measuring success in DEI initiatives . The role of bar associations in DEI initiatives . The Mansfield Rule: What attorneys need to know   Moderator/Panelist: Kyle Serilla, Attorney, Chiacchio IP, LLC   . Laith M. Abu-Taleb, Chief Strategy Officer & General Counsel, Mori . Esther Lim, Partner & Chief Diversity and Inclusion Officer, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP . Idris McKelvey, Vice President - Patent Group, The Estée Lauder Companies Inc. . Daniel R. Saeedi, Partner, Taft Stettinius & Hollister LLP . Maureen R. Smith, Partner, Fitch, Even, Tabin & Flannery LLP Registration: https://bit.ly/uic_ip_ethics2022

News | Gary Friedlander (’87), TransUnion Senior VP, to Lead IP Program

Delighted to share the good news that effective July 1, Gary Friedlander (JD 1987), currently TransUnion's Senior Vice President and Deputy General Counsel – International will lead UIC Law’s Center for Intellectual Property, Information & Technology Law. For over two decades, TransUnion has relied on Gary’s counsel on national and international matters, including those involving IP, technology and privacy law. Our IP community and partners will benefit from the goodwill and rich experience he accrued advising a multibillion-dollar global corporation. Equally important, Gary is an alumnus with deep affection for the law school and its traditions, even as he remains attuned to its current priorities. I look forward to supporting Gary and cheering him on as he transitions into a role in which he is well-placed to succeed. Press release: https://bit.ly/3lhkGDU Photo: My first meeting with Gary in 2017, arranged by Erik Fagrelius, to discuss deepening the IP program's ties with Gary and TransUnion (https://bit.ly/3sD3hJA).

August 11 | Thinking Internationally about IP and Dispute Resolution: What Every Lawyer & Corporate Counsel Should Know

Delighted to partner again with the World IP Organization and the IP Office of Singapore to provide a forum for practitioners, policymakers, civil society representatives, academics, students, and the broader stakeholder community to learn and debate the latest trends in IP and dispute resolution globally. In complementing other events that narrate current doctrinal developments, this seminar focuses instead on often overlooked strategies in domestic and cross-border IP dispute resolution, as well as innovative legal solutions and the challenges that remain. Join us on Thursday, August 11, for a two-hour CLE program featuring experienced speakers from government, international organizations, academia, and industry. I will moderate a conversation covering a wide range of topics, including: . The role of expert evidence and IP specialist mediators. . International IP organizations and government IP offices as drivers of dispute resolution innovators. . Cryptocurrencies, NFTs, data security, AI and other emerging issues. . Standard essential patents: Dispute resolution models and unintended consequences. . Views from the trenches and command posts: Dos and don'ts. Details here: https://bit.ly/uic_ip_dr

Antitrust | 22nd Annual Loyola Antitrust Colloquium

Congratulations to Christine Chabot, Max Huffman, Matthew Sag, Spencer Waller, and their team for another splendid #antitrust colloquium, now in its 22nd year. The annual event brings together government enforcers, practitioners, corporate counsel, and academics. It is unique in connecting in-depth antitrust research with practice and policymaking. The legal profession would benefit from more events fostering synergies like this one, which does it so well. After a long hiatus, I enjoyed catching up with friends and colleagues. It was also a treat to hear warm applause from a live audience and the chatter of the crowd during breaks, familiar sounds muted for too long but which are now emerging both here and elsewhere once more. Program details: https://bit.ly/39dK7U2 Allen P. Grunes Greg Day Sarah Oxenham Allen Hetal Doshi Maciej Bernatt James Thuo Gathii Andre Fiebig Stacey Dogan Jennifer Dixton Steve Calkins