On Fidelity

(Lots of interesting details are omitted from the anecdote below; in time, as circumstances permit, I may flesh them out!)

Ah, the perils of teaching timely topics.  Among the scenarios that I ran by my Trademark Law students at the beginning of this semester is a pending Intent to Use application to register a trademark.  The applicant is a local Pittsburgh business which is owned by someone who is well-known to Americans of a certain age, and to nearly all Pittsburgh residents.  The application is being opposed by the University of Pittsburgh, which is, among other things, my employer.  I shared the opposition with my students, as well as the response by the applicant.

The opposition strikes me as no slam-dunk winner, even though it is based on a large number of existing registrations owned by the university, and I used it in class to introduce the students to some trademark calisthenics.   If your client argues that a mark should not be registered because it would be confusingly similar to existing registered marks, then what evidentiary hurdles do you have to cross in order to make your case?  How do you know that “likelihood of confusion” will result?  We’ll connect the dots with detailed legal doctrine later in the semester; the point here was simply that seat-of-the-pants intuition is not enough.  A lawyer needs to know how to break the case down into all of its elements, then assemble the elements into a winning argument.

In the course of the conversation (which was, I’m glad to say, as lively as I expected given the Pittsburgh-basis of the problem and the robust Pittsburgh-knowledge of the students), I expressed my skepticism that the opposition, as pleaded, could succeed.  There are a lot of dots to connect, as the students saw, and it is not clear that the law or the evidence will bear out making the connections.  To be clear, I have my doubts.  On the other hand, I’m in no position to say, and didn’t say, that the opposition is a loser.

Did I owe more deference to my university, either by refraining from using this proceeding as a teaching device or by refraining from expressing an opinion about the merits, at least as those merits are framed by the pleadings?

I don’t have access to and therefore was and am in no position to share confidential information for either party.  (Counsel for the applicant is a friend of mine and, moreover, is an adjunct professor at Pitt.)  Someone might imagine that my skepticism about the merits might be exploited as some kind of expert opinion or an admission that would benefit the applicant; my assessment of the likelihood of either one is roughly — zero (no, it’s exactly zero).  Maybe I should simply be more generous to the terrific university whose logo appears on my paychecks.

Thoughts and suggestions are welcome, not only from other professors but also from any practitioners who happen to wander by.  And I am aware, of course, that students – including my students – may be lurking, too.

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