Scholars often complain that sellers use trademarks to manipulate consumer perception. This manip... more Scholars often complain that sellers use trademarks to manipulate consumer perception. This manipulation ostensibly harms consumers by limiting their ability to make informed choices. For example, holding other things constant, consumers spend more money on goods with a high-performance reputation. Critics characterize that result as wasteful, if not anticompetitive. But recent marketing research shows that trademarks with a high-performance reputation may sometimes influence perception to the benefit of the consumer. A trademark with a high-performance reputation can deliver a performance-enhancing placebo effect. Research subjects perform better at physical and mental tasks when they prepare or play with a product bearing a high-performance mark. For example, subjects using a putter with a Nike label can sink a putt in 20% fewer strokes than subjects using the same putter with a different label. This performance-amplifying effect stems from shaping consumer perception, but the eff...
Under US law, a trademark is distinctive, and therefore valid and protectable, if it is “capable ... more Under US law, a trademark is distinctive, and therefore valid and protectable, if it is “capable of identifying products or services as coming from a specific source.” Some marks are treated as inherently distinctive, and protected from their first use, based on presumptions about how consumers will interpret the relationship between the mark selected and the goods or services offered. Other marks are not inherently distinctive and therefore must acquire distinctiveness in the eyes of consumers. US courts consider the distinctiveness of marks by categorizing them along a spectrum famously articulated in Abercrombie & Fitch Co. v. Hunting World, Inc. Consumer perception is critically important to assessing trademark validity and scope. But many inaccurate presumptions about consumer perception are baked into courts’ categorization of trademarks along the Abercrombie spectrum. Failing to properly account for how consumers understand and use trademarks can distort commercial markets. Courts and trademark examiners might thus prefer litigants to present better evidence of whether consumers see a given mark as distinctive and source signifying. Consumer surveys provide evidence of distinctiveness on which courts frequently rely. Unfortunately, the costs of conducting a trademark survey have historically been high enough to discourage many mark owners from offering survey evidence of consumer perception. Well-heeled litigants can fund surveys, but those with a smaller war chest cannot. But as new platforms lower the costs of finding survey respondents, we may see a democratizing effect as more litigants can afford to conduct surveys. For example, Amazon’s Mechanical Turk (MTurk) provides access to a constantly rotating panel of potential survey respondents. Psychology and marketing professors are utilizing MTurk with increasing frequency, in large part due to the platform’s convenience and affordability. But trademark litigants appear not to be taking advantage of the platform. This chapter argues that litigants could use MTurk to generate consumer trademark surveys at significant cost savings, and that US courts and the United States Patent and Trademark Office should admit properly conducted MTurk surveys into evidence. Unfortunately, cheaper surveys will not fully democratize the use of survey evidence. The costs of finding survey participants pale in comparison to the costs of hiring experts to conduct and interpret survey evidence. If courts are to consider evidence of distinctiveness from a consumer perspective, the market for trademark expertise may be overdue for some disruption. This chapter thus also argues that US trademark litigants should be able to rely on more reasonably priced providers of survey expertise because testimony from less highly credentialed experts should still be admissible under US evidentiary standards.
For decades, the Supreme Court has applied what is known as the third party doctrine, which allow... more For decades, the Supreme Court has applied what is known as the third party doctrine, which allows police, acting without a warrant, to secure information that an individual has voluntarily revealed to others. The doctrine has long been criticized by scholars and only narrowly escaped its formal demise last Term in Carpenter v. United States, when the Supreme Court deemed it inapplicable to geo-locational data possessed by cell phone providers (third parties). While the merits of the third party doctrine continue to be debated, an important development has escaped notice: state and lower federal courts have been hollowing it out from below. They have done so when deciding Fourth Amendment privacy claims brought by individuals who have shared their information online, basing their decisions in significant part on users’ privacy settings and terms of service agreements. As the cases make clear, mere exposure of information to others, or the theoretical possibility of doing so, does no...
As the costs of creating and sharing information have plummeted, some scholars question the conti... more As the costs of creating and sharing information have plummeted, some scholars question the continued utility of copyright protection, which imposes artificial scarcity so that authors can recoup creation and dissemination costs. Scholars have ignored, however, that when information is abundant, attention becomes a scarce resource. Superabundant information can overtax consumer attention. Reducing copyright protection in this new environment may worsen the costs of attention scarcity on consumers of creative expression. Firms often compete for attention by free riding on the public interest generated by copyrighted works. If copyright protection is narrowed, new entrants have reduced motivation to create works that are clearly distinguishable from existing works. Indeed, a new entrant is more likely to create a close substitute for an existing work already available to consumers than to spend the time necessary to create a distinctly original contribution. Thus, new works are more l...
A trademark is created when a new meaning is added to an existing word or when a new word is inve... more A trademark is created when a new meaning is added to an existing word or when a new word is invented in order to identify the source of a product. This Article contends that trademark law fails in critical ways to reflect our knowledge of how words gain or lose meaning over time and how new meanings become part of the public lexicon, a phenomenon commonly referred to as semantic shift. Although trademark law traditionally turns on protecting consumers from confusing ambiguity, some of its doctrines ignore consumer perception in whole or in part. In particular, the doctrine of trademark incapacity—also known as the de facto secondary meaning doctrine—denies trademark protection to a term that was once a generic product designation, even if consumers now see the term primarily as a source-signifying trademark. Analyzing trademark acquisition through the lens of semantic shift sheds light on how the trademark incapacity doctrine misunderstands both the nature of language and the role ...
Trademarks contribute to an efficient market by helping consumers find products they like from a ... more Trademarks contribute to an efficient market by helping consumers find products they like from a sources they trust. This information transmission function of trademarks can be upset if the law fails to reflect both how trademark owners communicate through marks and how consumers understand and use them. But many of trademark law’s forfeiture mechanisms (the ways a trademark can lose protection) ignore or discount consumer perception. This failure threatens not only to increase consumer search costs and consumer confusion, but also to distort markets. For example, trademark protection may be forfeited when the mark owner interrupts or abandons use, even though consumers still see the mark as identifying products from that owner. Or a mark may be forfeited if the mark owner licenses the mark for use without following certain quality control requirements, even if there is no evidence that licensees produce subpar products or disappoint consumers. As a result, a new seller can adopt a ...
Classifying a trademark as descriptive rather than suggestive fundamentally alters the scope of t... more Classifying a trademark as descriptive rather than suggestive fundamentally alters the scope of trademark protection. A descriptive mark, derived from a feature of the product or service sold, only qualifies for protection after the mark has acquired source significance, i.e., consumers see it as a trademark. A suggestive trademark, which indirectly invokes qualities of the product or service, is protected without evidence of source significance. Courts often struggle to distinguish between suggestive and descriptive marks. The effort would nevertheless be reasonable if the differences between suggestive and descriptive marks justified their disparate legal treatment. But in light of cognitive and historical research into language change, protecting a suggestive mark without evidence of source significance may not be warranted.In fact, trademark law erroneously inflates the difference between suggestive and descriptive marks. This mistake becomes apparent in light of theoretical, hi...
When a music group breaks up, what happens to the trademark? The music industry is full of storie... more When a music group breaks up, what happens to the trademark? The music industry is full of stories about bad breakups of bands at their best, as well as dispirited dissolutions after disappointing downturns. Sometimes, multiple parties claim the right to use the name of the band as a trademark for ongoing musical pursuits. This chapter considers how courts in the United States handle trademark fights over band names. It also analyzes largely forgotten state “Truth in Music” Acts that aim to keep legacy performing groups and their managers honest by requiring them to tour with at least one original recording musician—or identify themselves as tributes, rather than the genuine article. This commitment to “truth” about the origin of these bands seems consistent with the purpose of federal trademark protection to make “actionable the deceptive and misleading use of marks” and “to prevent fraud and deception” in commerce. But three recent US Supreme Court cases, United States v. Alvarez,...
In assessing trademark validity and trademark, courts, examiners, and litigants analyze trademark... more In assessing trademark validity and trademark, courts, examiners, and litigants analyze trademark meaning through the lens of consumer perception. Marks wax and wane as consumer use bestows and withdraws trademark meaning. Like the meaning of other communicative symbols, trademark meaning can change over time. Indeed, change is an essential feature of the trademark system, as it is in any other communicative system. The touchstone of trademark validity analysis is perception. It is critical to consider use in commerce and use in context — consumers’ understanding of and reaction to claimed trademarks—when determining whether a mark qualifies for trademark protection and registration. In a troubling distortion of this framework, the government proposes a rigid rule that would require courts and examiners to ignore evidence of consumer use and consumer perception. Instead, decision makers would base registration determinations on a static snapshot of the origin of the term or terms comprising a trademark. Rather than engage in the standard context-sensitive inquiry, examiners at the Patent and Trademark Office (“PTO”) would be forced to conclude that any mark combining an ostensibly generic term and a top-level domain like “.com” is generic, irrespective of the trademark meaning consumers have vested in the term. The government’s approach is inconsistent with the best understanding of how language changes and how consumers create trademark meaning. Government’s proposed rule stems in large part from a failure to appreciate that language — including commercial symbols like trademarks — is subject to constant change. Determining the genericness question solely by an appeal to dictionaries, as urged by the government, invites courts and claimants to over-rely on a term’s history, including obsolete meanings, instead of how it is actually used by sellers and consumers in commerce. As linguists understand, words and symbols — including commercial trademarks — are neither fixed nor unchangeable. Thus, a term’s meaning in one context does not determine the meanings consumers will generate from it in a different context. The government’s proposal also relies on mistaken error-cost analysis. One might recognize that a generic term can acquire trademark meaning, but incorrectly presume it happens so rarely that error is best avoided by ignoring that creation of trademark meaning when it occurs. The shift from the generic name of a good or service to the name of a source is what linguists call a narrowing shift. Research into language change shows that narrowing is not at all rare and, in fact, may be the most frequent type of language change. The government’s proposal further relies on a flawed analysis of competitive harm. When a majority of consumers perceives an ostensibly generic mark as a source signifier, those consumers are not indifferent to or unharmed by the use of a confusingly similar third-party mark. In fact, ignoring the development of source significance may well increase error costs in trademark litigation by reducing efficiency and increasing search costs imposed on consumers. But applying the primary significance test in cases where consumers have vested trademark meaning in an ostensibly generic term will properly manage potential competitive harm by setting a sufficiently high threshold for demonstrating that consumers view the claimed trademark as a source signifier.
A trademark is created when a new meaning is added to an existing word or when a new word is inve... more A trademark is created when a new meaning is added to an existing word or when a new word is invented in order to identify the source of a product. This Article contends that trademark law fails in critical ways to reflect our knowledge of how words gain or lose meaning over time, and how new meanings become part of the public lexicon, a phenomenon commonly referred to as semantic shift. Although trademark law traditionally turns on protecting consumers from confusing ambiguity, some of its doctrines ignore consumer perception in whole or in part. In particular, the doctrine of trademark incapacity — also known as the de facto secondary meaning doctrine — denies trademark protection to a term that was once a generic product designation, even if consumers now see the term primarily as a source-signifying trademark.Analyzing trademark acquisition through the lens of semantic shift sheds light on how the trademark incapacity doctrine misunderstands both the nature of language and the role of consumer perception in shaping trademark’s competition policy. Courts and scholars suggest a generic term will rarely acquire source significance, and even if it does, there are competitive, conceptual, and administrative grounds for denying trademark protection. The standard account is mistaken: restriction of meaning — of which the change from a generic product designation to a source signifier is one example — happens frequently across time and across languages. In addition, understanding how and why restriction occurs highlights flaws in common justifications for trademark incapacity. This Article proposes replacing the doctrine of trademark incapacity with the primary significance test already applied at other stages of trademark litigation. If there is evidence that a majority of consumers have come to see the term as source-signifying rather than product designating, the law should recognize that source significance and the term should qualify for federal trademark protection.
Scholars often complain that sellers use trademarks to manipulate consumer perception. This manip... more Scholars often complain that sellers use trademarks to manipulate consumer perception. This manipulation ostensibly harms consumers by limiting their ability to make informed choices. For example, holding other things constant, consumers spend more money on goods with a high-performance reputation. Critics characterize that result as wasteful, if not anticompetitive. But recent marketing research shows that trademarks with a high-performance reputation may sometimes influence perception to the benefit of the consumer. A trademark with a high-performance reputation can deliver a performance-enhancing placebo effect. Research subjects perform better at physical and mental tasks when they prepare or play with a product bearing a high-performance mark. For example, subjects using a putter with a Nike label can sink a putt in 20% fewer strokes than subjects using the same putter with a different label. This performance-amplifying effect stems from shaping consumer perception, but the eff...
Under US law, a trademark is distinctive, and therefore valid and protectable, if it is “capable ... more Under US law, a trademark is distinctive, and therefore valid and protectable, if it is “capable of identifying products or services as coming from a specific source.” Some marks are treated as inherently distinctive, and protected from their first use, based on presumptions about how consumers will interpret the relationship between the mark selected and the goods or services offered. Other marks are not inherently distinctive and therefore must acquire distinctiveness in the eyes of consumers. US courts consider the distinctiveness of marks by categorizing them along a spectrum famously articulated in Abercrombie & Fitch Co. v. Hunting World, Inc. Consumer perception is critically important to assessing trademark validity and scope. But many inaccurate presumptions about consumer perception are baked into courts’ categorization of trademarks along the Abercrombie spectrum. Failing to properly account for how consumers understand and use trademarks can distort commercial markets. Courts and trademark examiners might thus prefer litigants to present better evidence of whether consumers see a given mark as distinctive and source signifying. Consumer surveys provide evidence of distinctiveness on which courts frequently rely. Unfortunately, the costs of conducting a trademark survey have historically been high enough to discourage many mark owners from offering survey evidence of consumer perception. Well-heeled litigants can fund surveys, but those with a smaller war chest cannot. But as new platforms lower the costs of finding survey respondents, we may see a democratizing effect as more litigants can afford to conduct surveys. For example, Amazon’s Mechanical Turk (MTurk) provides access to a constantly rotating panel of potential survey respondents. Psychology and marketing professors are utilizing MTurk with increasing frequency, in large part due to the platform’s convenience and affordability. But trademark litigants appear not to be taking advantage of the platform. This chapter argues that litigants could use MTurk to generate consumer trademark surveys at significant cost savings, and that US courts and the United States Patent and Trademark Office should admit properly conducted MTurk surveys into evidence. Unfortunately, cheaper surveys will not fully democratize the use of survey evidence. The costs of finding survey participants pale in comparison to the costs of hiring experts to conduct and interpret survey evidence. If courts are to consider evidence of distinctiveness from a consumer perspective, the market for trademark expertise may be overdue for some disruption. This chapter thus also argues that US trademark litigants should be able to rely on more reasonably priced providers of survey expertise because testimony from less highly credentialed experts should still be admissible under US evidentiary standards.
For decades, the Supreme Court has applied what is known as the third party doctrine, which allow... more For decades, the Supreme Court has applied what is known as the third party doctrine, which allows police, acting without a warrant, to secure information that an individual has voluntarily revealed to others. The doctrine has long been criticized by scholars and only narrowly escaped its formal demise last Term in Carpenter v. United States, when the Supreme Court deemed it inapplicable to geo-locational data possessed by cell phone providers (third parties). While the merits of the third party doctrine continue to be debated, an important development has escaped notice: state and lower federal courts have been hollowing it out from below. They have done so when deciding Fourth Amendment privacy claims brought by individuals who have shared their information online, basing their decisions in significant part on users’ privacy settings and terms of service agreements. As the cases make clear, mere exposure of information to others, or the theoretical possibility of doing so, does no...
As the costs of creating and sharing information have plummeted, some scholars question the conti... more As the costs of creating and sharing information have plummeted, some scholars question the continued utility of copyright protection, which imposes artificial scarcity so that authors can recoup creation and dissemination costs. Scholars have ignored, however, that when information is abundant, attention becomes a scarce resource. Superabundant information can overtax consumer attention. Reducing copyright protection in this new environment may worsen the costs of attention scarcity on consumers of creative expression. Firms often compete for attention by free riding on the public interest generated by copyrighted works. If copyright protection is narrowed, new entrants have reduced motivation to create works that are clearly distinguishable from existing works. Indeed, a new entrant is more likely to create a close substitute for an existing work already available to consumers than to spend the time necessary to create a distinctly original contribution. Thus, new works are more l...
A trademark is created when a new meaning is added to an existing word or when a new word is inve... more A trademark is created when a new meaning is added to an existing word or when a new word is invented in order to identify the source of a product. This Article contends that trademark law fails in critical ways to reflect our knowledge of how words gain or lose meaning over time and how new meanings become part of the public lexicon, a phenomenon commonly referred to as semantic shift. Although trademark law traditionally turns on protecting consumers from confusing ambiguity, some of its doctrines ignore consumer perception in whole or in part. In particular, the doctrine of trademark incapacity—also known as the de facto secondary meaning doctrine—denies trademark protection to a term that was once a generic product designation, even if consumers now see the term primarily as a source-signifying trademark. Analyzing trademark acquisition through the lens of semantic shift sheds light on how the trademark incapacity doctrine misunderstands both the nature of language and the role ...
Trademarks contribute to an efficient market by helping consumers find products they like from a ... more Trademarks contribute to an efficient market by helping consumers find products they like from a sources they trust. This information transmission function of trademarks can be upset if the law fails to reflect both how trademark owners communicate through marks and how consumers understand and use them. But many of trademark law’s forfeiture mechanisms (the ways a trademark can lose protection) ignore or discount consumer perception. This failure threatens not only to increase consumer search costs and consumer confusion, but also to distort markets. For example, trademark protection may be forfeited when the mark owner interrupts or abandons use, even though consumers still see the mark as identifying products from that owner. Or a mark may be forfeited if the mark owner licenses the mark for use without following certain quality control requirements, even if there is no evidence that licensees produce subpar products or disappoint consumers. As a result, a new seller can adopt a ...
Classifying a trademark as descriptive rather than suggestive fundamentally alters the scope of t... more Classifying a trademark as descriptive rather than suggestive fundamentally alters the scope of trademark protection. A descriptive mark, derived from a feature of the product or service sold, only qualifies for protection after the mark has acquired source significance, i.e., consumers see it as a trademark. A suggestive trademark, which indirectly invokes qualities of the product or service, is protected without evidence of source significance. Courts often struggle to distinguish between suggestive and descriptive marks. The effort would nevertheless be reasonable if the differences between suggestive and descriptive marks justified their disparate legal treatment. But in light of cognitive and historical research into language change, protecting a suggestive mark without evidence of source significance may not be warranted.In fact, trademark law erroneously inflates the difference between suggestive and descriptive marks. This mistake becomes apparent in light of theoretical, hi...
When a music group breaks up, what happens to the trademark? The music industry is full of storie... more When a music group breaks up, what happens to the trademark? The music industry is full of stories about bad breakups of bands at their best, as well as dispirited dissolutions after disappointing downturns. Sometimes, multiple parties claim the right to use the name of the band as a trademark for ongoing musical pursuits. This chapter considers how courts in the United States handle trademark fights over band names. It also analyzes largely forgotten state “Truth in Music” Acts that aim to keep legacy performing groups and their managers honest by requiring them to tour with at least one original recording musician—or identify themselves as tributes, rather than the genuine article. This commitment to “truth” about the origin of these bands seems consistent with the purpose of federal trademark protection to make “actionable the deceptive and misleading use of marks” and “to prevent fraud and deception” in commerce. But three recent US Supreme Court cases, United States v. Alvarez,...
In assessing trademark validity and trademark, courts, examiners, and litigants analyze trademark... more In assessing trademark validity and trademark, courts, examiners, and litigants analyze trademark meaning through the lens of consumer perception. Marks wax and wane as consumer use bestows and withdraws trademark meaning. Like the meaning of other communicative symbols, trademark meaning can change over time. Indeed, change is an essential feature of the trademark system, as it is in any other communicative system. The touchstone of trademark validity analysis is perception. It is critical to consider use in commerce and use in context — consumers’ understanding of and reaction to claimed trademarks—when determining whether a mark qualifies for trademark protection and registration. In a troubling distortion of this framework, the government proposes a rigid rule that would require courts and examiners to ignore evidence of consumer use and consumer perception. Instead, decision makers would base registration determinations on a static snapshot of the origin of the term or terms comprising a trademark. Rather than engage in the standard context-sensitive inquiry, examiners at the Patent and Trademark Office (“PTO”) would be forced to conclude that any mark combining an ostensibly generic term and a top-level domain like “.com” is generic, irrespective of the trademark meaning consumers have vested in the term. The government’s approach is inconsistent with the best understanding of how language changes and how consumers create trademark meaning. Government’s proposed rule stems in large part from a failure to appreciate that language — including commercial symbols like trademarks — is subject to constant change. Determining the genericness question solely by an appeal to dictionaries, as urged by the government, invites courts and claimants to over-rely on a term’s history, including obsolete meanings, instead of how it is actually used by sellers and consumers in commerce. As linguists understand, words and symbols — including commercial trademarks — are neither fixed nor unchangeable. Thus, a term’s meaning in one context does not determine the meanings consumers will generate from it in a different context. The government’s proposal also relies on mistaken error-cost analysis. One might recognize that a generic term can acquire trademark meaning, but incorrectly presume it happens so rarely that error is best avoided by ignoring that creation of trademark meaning when it occurs. The shift from the generic name of a good or service to the name of a source is what linguists call a narrowing shift. Research into language change shows that narrowing is not at all rare and, in fact, may be the most frequent type of language change. The government’s proposal further relies on a flawed analysis of competitive harm. When a majority of consumers perceives an ostensibly generic mark as a source signifier, those consumers are not indifferent to or unharmed by the use of a confusingly similar third-party mark. In fact, ignoring the development of source significance may well increase error costs in trademark litigation by reducing efficiency and increasing search costs imposed on consumers. But applying the primary significance test in cases where consumers have vested trademark meaning in an ostensibly generic term will properly manage potential competitive harm by setting a sufficiently high threshold for demonstrating that consumers view the claimed trademark as a source signifier.
A trademark is created when a new meaning is added to an existing word or when a new word is inve... more A trademark is created when a new meaning is added to an existing word or when a new word is invented in order to identify the source of a product. This Article contends that trademark law fails in critical ways to reflect our knowledge of how words gain or lose meaning over time, and how new meanings become part of the public lexicon, a phenomenon commonly referred to as semantic shift. Although trademark law traditionally turns on protecting consumers from confusing ambiguity, some of its doctrines ignore consumer perception in whole or in part. In particular, the doctrine of trademark incapacity — also known as the de facto secondary meaning doctrine — denies trademark protection to a term that was once a generic product designation, even if consumers now see the term primarily as a source-signifying trademark.Analyzing trademark acquisition through the lens of semantic shift sheds light on how the trademark incapacity doctrine misunderstands both the nature of language and the role of consumer perception in shaping trademark’s competition policy. Courts and scholars suggest a generic term will rarely acquire source significance, and even if it does, there are competitive, conceptual, and administrative grounds for denying trademark protection. The standard account is mistaken: restriction of meaning — of which the change from a generic product designation to a source signifier is one example — happens frequently across time and across languages. In addition, understanding how and why restriction occurs highlights flaws in common justifications for trademark incapacity. This Article proposes replacing the doctrine of trademark incapacity with the primary significance test already applied at other stages of trademark litigation. If there is evidence that a majority of consumers have come to see the term as source-signifying rather than product designating, the law should recognize that source significance and the term should qualify for federal trademark protection.
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