On Trademark Law: Crack and Cracking Pyrex

Technology blogging site TechDirt recently posted a short article about the difficulties faced by consumers when a product no longer incorporates a feature that the public has come to expect.  In this case, one of the consumer interest groups concerned was a group composed of crack cocaine manufacturers.  If that grabs your attention, go here (or just read on) to watch an entertaining video showing Wolfram’s Theodore Gray taking a blowtorch to a Pyrex container.  The article/video were thought-provoking and they elicited a gut reaction from me that lead to some critical thinking about the dynamics of trademark law vis-à-vis the goals of the law itself.  I will return to that discussion after a little introduction to Pyrex.

Pyrex glass was introduced in 1915 by Corning Glass Works (now Corning Incorporated) and it soon became embraced by scientists and sous chefs alike for its most appealing property: it consisted of borosilicate glass, which is characterized by very low thermal expansion.  That property rendered Pyrex particularly useful for laboratory glassware and for kitchen ware, which must be able to withstand rapid changes in temperature.  Pyrex was a great success and in short order, the mark PYREX came to be associated with quality glass products that could be rapidly heated and cooled without risk of fracture.  Corning marketed this beneficial property and the reputation of its product grew. Although all Pyrex glass at the time was manufactured from borosilicate, Corning’s original trademark registration for PYREX was simply for “glass.”

Despite its broad registration, even the  courts recognized that the PYREX mark had taken on meaning beyond its original goods and services description, as discussed in a 1940 opinion by the Court of Appeals for the Eighth Circuit.  In that case, a glass bottle manufacturer that had been producing prescription medicine bottles under its REX trademark since the late 1800’s was unhappy when one of Corning’s licensees began manufacturing baby bottles bearing the PYREX mark.  At the time of the suit, the prescription bottle manufacturer had expanded its own glassware products to include baby bottles and it felt that PYREX was too close to its REX mark, considering the similarity of the goods.  Notably, the REX bottles were manufactured from ordinary glass, while the Corning licensee’s bottles were made from borosilicate glass.  Subsequently, the REX bottle manufacturer sued the Corning licensee for trademark infringement and Corning itself joined the suit.

After a decision in the district court favoring the REX bottle manufacturer, the Court of Appeals reversed, finding in favor of Corning and noting that “the name ‘Pyrex’ has come to mean, and standard authorities have recognized it as meaning, glassware of a variety ‘resistant to heat, chemicals or electricity.'”   The Eighth Circuit felt that PYREX’s unique thermal properties placed Corning’s product in “an entirely distinct field,” and therefore, in the Court’s view, there was little likelihood of confusion among consumers.  Notably, the Court determined that the plaintiff’s assertion of its rights to a zone of natural market expansion also held no water (milk?).  REX had established itself as a prescription bottle manufacturer and prescription bottles were the sole goods identified in its trademark registration, so it had no right to exclude Corning or its licensees from making baby bottles bearing a similar mark.  The Court noted that it could not accept Plaintiff’s suggestion that the “trademark ‘Rex’ for prescription bottles preserved to it for all time a monopoly not only on prescription bottles made of ordinary glass but on all other bottles of whatever description or quality, and, in fact, upon all glassware.”

Over the next several decades, Corning’s PYREX grew exponentially in fame and it is instantly recognizable by most consumers today.  Or is it?In 1998, Corning spun off its consumer products division, including all of its kitchen ware.  Corning retained ownership of the PYREX trademark registration, but it ceased manufacturing Pyrex products and it licensed the PYREX mark to several other companies.  One of those companies, World Kitchen LLC, continues to manufacture products bearing the PYREX mark in its classic, recognizable form.  However, at some unknown time, Corning and its  licensees stopped making PYREX branded products out of Pyrex (borosilicate) glass, and instead began manufacturing them from less-expensive soda-lime glass, which lacks the low thermal expansion properties of the original product.  This change in product properties was a lesson reportedly learned the hard way by crack cocaine manufacturers, who produce crack by heating up cocaine to high temperatures until it begins to coalesce into little balls or “rocks,” at which point the cocaine must be cooled rapidly.  Rapidly heating and cooling glass which has poor thermal properties results in fracture of the vessel and is apparently very bad for crack business.  I envision astonished crack makers crying out to consumer watchdog agencies everywhere.

So do Corning and its licensees have a responsibility to use the PYREX mark  exclusively on goods made from Pyrex glass, such as it was for more than half a century?  Consumers  (and crack dealers) have come to expect that quality, and Corning for many years promoted that quality through advertisement.

The comment in the aforementioned TechDirt article that triggered my gut reaction appears near the end. It suggests that there has been little outcry about the quiet change in composition of PYREX-branded goods, because

Corning isn’t having a dispute with a competitor . . . Imagine if a counterfeiter were passing off soda lime glass as Pyrex.  The outcry would be huge. Government agencies would be busting down doors and arresting people and using it as a reason to pass ACTA.   But if Corning and their licensees do it under the Pyrex brand, all we can do is shrug.

Colorful characterization aside, the poster is pretty much on the money: if Corning was still producing PYREX-branded products made of borosilicate glass and a competitor was producing a cheaper soda-lime glass product bearing a mark even vaguely reminiscent of PYREX, you can bet that Corning’s first argument for trademark infringement/unfair competition/dilution would be that the cheaper goods would be likely to create consumer confusion and damage the association that consumers have come to make between the PYREX mark and quality glass products.  But since this is an issue that affects only consumers (and the corporations in question are all still profiting), the issue goes largely unnoticed.  Initially, that seems unfair, particularly if you take the consumer welfare view of the justifications for trademark law.  And indeed, consumer welfare is one accepted goal of trademark law: trademarks provide consistency to consumers, especially where quality is concerned.  As the U.S. Supreme Court noted, a trademark “assures a potential customer that this item — the item with this mark — is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.” Qualitex Co. v. Jacobson Prod’s. Co., 514 U.S. 159, 163–64 (1995).

For example, I know that when I walk into Target to buy a plastic storage bin, I will probably get a better quality product if I choose a Rubbermaid-branded container than I will if I choose the cheaper Sterilite brand.  And in defense of Sterilite, I may even choose the cheaper brand if the circumstances of the purchase are such that price matters more to me than quality.  The key for the consumer is being able to tie a mark to predictable product qualities, simplifying the act of purchasing.

However, most contemporary theorists cite a second justification for trademark law as well, namely that trademark law should protect the producers of goods and services from the misappropriation of the goodwill that they have worked diligently to create.  In other words, “the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.”  Id.

This trademark owner-centric view alters our discussion a bit.

The Lanham Act implies a requirement that trademark owners maintain a degree of control over the quality of products that are produced by licensees under their mark, an arrangement which, by the way, is extraordinarily common, especially where brand-extension licensing is concerned (Cheetos Lip Balm, anyone?).  This requirement is tied to the consumer welfare theory: consumers come to associate certain qualities with products manufactured under a particular mark, and in order for those associations to be reliable, quality must not vary from manufacturer to manufacturer.  However, as mark licensing has become increasingly common, the judicial system has gradually lowered the bar on the level of quality control or oversight required of the trademark owner.

Perhaps part of the reason for reducing that bar is the fact that the trademark system is at least partially self-correcting.  If, for example, Mercedes-Benz begins manufacturing inexpensive automobiles made with low quality parts, its reputation will likely soon decline and the association that many consumers make between quality automobiles and the MERCEDES-BENZ mark would be lost.  Consumers who desire high quality products will drift away (welfare theory) and businesses like Mercedes-Benz that have failed to continue to invest in the consistency of products branded with their marks will lose that goodwill (trademark owner-centric theory).  The only burp in the system is the reality that trademark owners who alter their marks and lose goodwill do not necessarily lose their marks.  Is that a bad thing? My initial gut instinct is yes, because I have a champion-of-the-consumer mentality, but after some consideration, it doesn’t bother me quite as much.  A company that changes the nature of its goods will eventually gain the attention of consumers and consumers will change their purchasing preferences accordingly.  A kind of mark evolution occurs: a mark that was once associated with a certain quality or characteristic becomes associated with something different.  In this simple version of product change, the risk to consumers is probably mostly short-term, as consumers soon become aware of the change in product quality through word of mouth:

But sometimes that recognition takes time, particularly when a very strong brand has developed a quality reputation through many years of consistent use on the same kind of products:

In the case of Pyrex glassware, the change may be very subtle and discovery may in fact  be dangerous to consumers (including, but not limited, to crack dealers).  I didn’t search Westlaw to determine if there have been any lawsuits lodged against Corning or its licensees for injuries sustained by consumers who used modern Pyrex kitchen ware, but I would not be surprised to find at least one

However, consumer safety is the province of another area of law: torts.  If consumer safety is put at risk because of reasonable (though incorrect) assumptions that consumers are likely to make about product characteristics, then it might be reasonable to simply require a broad (or broader) product safety warning on the product itself.  Certainly consumers are accustomed to such warnings, to the point of numbness from over-inclusion.

At least one issue remains, however, outside the scope of consumer welfare, which I touched upon earlier: competition.  If I own a trademark registration, that registration endows me with the right to exclude others from using a same or similar mark on products of a similar nature.  In the case of a famous trademark (PYREX likely qualifies), I can sometimes even exclude others from using the mark on dissimilar goods.  However, if I fail to use a word or symbol in the manner envisioned by the statute — that is, in a manner that creates a known, consistent association between my goods and the mark — I risk abandoning the mark and others may use the mark for their own products.  This is part of the quid pro quo of trademark law that is characteristic of all intellectual property law: the owner gets a limited monopoly in exchange by using its intellectual property in the manner envisioned by the statute.  If the owner fails to do so, other member of the public (and private sector) have the right to use the intellectual property as well.

In reality, cases in which a mark is treated as abandoned because the owner has made changes in the underlying product are exceedingly rare.  However, as McCarthy notes, gradual changes in product nature are common and consumers expect such changes.  Only “sudden and substantial change in the nature or quality of the goods sold under a mark may so change the nature of the thing symbolized that the mark becomes fraudulent and/or that the original rights are abandoned.”  3 McCarthy on Trademarks and Unfair Competition § 17:24 (4th ed.) (citing Independent Baking Powder Co. v. Boorman, 175 F. 448 (C.C.D. N.J. 1910) (Manufacturer of SOLAR alum baking powder assigned rights to another who substituted phosphate for alum. Trademark rights held forfeited).

Would Pyrex’s change from borosilicate glass to soda-lime glass qualify as “sudden and substantial?”  Perhaps.  However, until an unlicensed manufacturer begins to use a mark confusingly similar to PYREX on glass goods, we are not likely to see the theory of abandonment tested with respect to the PYREX mark.

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