Heresy Implemented? Overreaching Claims by Trademark Attorneys and the Reaction by Courts and Administrative Bodies.

Numerous commentators (including myself) have pointed to examples of how trademark practitioners may be essentially over-enforcing their marks—sometimes perhaps justifying the label of “trademark bullies” for their clients, see this blog post.  Recently, on Professor Oppedahl’s popular trademark listserv, a number of trademark attorneys noted how trademark attorneys at the United States Patent and Trademark Office are issuing more office action refusals based on “failure to function as a mark” (perhaps based on the fact that the purported mark is failing to operate as a mark in connection with the submitted specimen of use).  Notably, in the discussion, John Welch, the blogger at the excellent TTAB blog, references a recent article he authored that states that the Trademark Trial and Appeal Board and courts have recently increased “discussions of utilitarian functionality, aesthetic functionality, failure to function as a mark, inherent distinctiveness, acquired distinctiveness, and non-reputation based competitive advantage.”  According to Mr. Welch, the cause of such discussions may be aggressive lawyering by trademark lawyers—perhaps meaning that trademark attorneys are broadly claiming trademark protection and thus perhaps over-claiming by “pushing the envelope," and the Trademark Office and courts are responding to that practice.   I think Mr. Welch’s theory has merit.  It would seem that attorneys representing accused infringers against attorneys who may assert over-reaching trademark claims would raise those arguments to protect their clients’ interests.  Further, the more reported cases that address those issues, the more likely it may be that trademark attorneys at the Trademark Office may raise them in response to what they perceive as over-reaching.

I do wonder whether the Trademark Office is influenced by (and if not, should be influenced by) empirical evidence concerning how consumers actually perceive marks instead of completely relying on the judicial interpretation of consumer psychology (read the U.S. Supreme Court’s Qualitex and Wal-Mart decisions) that has pervaded U.S. trademark law, for example with the Spectrum of Distinctiveness inquiry.   (Of course, we do use surveys to test consumer reaction to a mark).  Could that be part of the reason that the Trademark Office is increasing its discussions of “aesthetic functionality, failure to function as a mark, inherent distinctiveness, acquired distinctiveness, and non-reputation based competitive advantage?”  Could it be that the Trademark Office is utilizing the doctrinal tools that it has to correct for problems with our traditional tests for trademark protection, including the Spectrum of Distinctiveness?  (probably not, but maybe it should be)  Ordinarily, a threshold issue for a court is whether the purported trademark owner has a mark that is functioning as a trademark—the question is whether the mark is distinctive.  In a 2009 article in the Arizona State Law Journal, Thomas R. Lee, Eric D. DeRosia, and Glen L. Christensen, address the merits of the Spectrum of Distinctiveness, in An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness.  The authors state that:

The evaluation of consumer perception is hardly a matter of judicial competence. Instead, like many of the key issues in trademark law, questions of distinctiveness are matters that can and should be informed by the theoretical and empirical tools employed by those who undertake a careful, scholarly study of such issues. . . . Questions of distinctiveness, in particular, lend themselves to rigorous theoretical analysis using tools developed in the scholarly study of consumer psychology. Such questions are not merely theoretical; they lend themselves to empirical study using accepted methods of quantitative measurement.

That is the enterprise of this article. After first setting forth some additional background on the law's classification of word marks (in Part II), we consider the justifications offered in the scholarly literature for the law in this area (in Part III). Finding those justifications analytically unsatisfying and largely question-begging, we marshal theoretical tools from the field of consumer psychology (in Part IV) that provide important insights into the viability of the law's word mark taxonomy. Using these tools, we show that the law's longstanding assumptions about consumer perception of word marks are highly questionable. Specifically, we employ consumer psychology models of the way consumers perceive visual information to hypothesize that when identifying a product's source, consumers will rely primarily on non-linguistic visual cues (e.g., the location and size of the mark as displayed on a product package) rather than the mark's semantic meaning.

We then present a series of empirical studies of these assumptions (in Part V). Our empirical investigation seeks to measure word mark distinctiveness in the relevant context of trademark use. Using a series of stimuli representative of consumer packaged goods, we hold constant the various contextual indicators of meaning (such as prominence and placement of the word mark on the package) while varying the word marks that appear in the context of the package. This methodology allows us to measure the impact of the classification of a particular word mark--as generic, descriptive, suggestive, arbitrary, or fanciful--on trademark distinctiveness. Our study thus allows us to offer an empirical answer to the trademark distinctiveness question long determined by judicial intuition and precedent. Our empirical findings thoroughly undercut the word mark taxonomy that has long dictated the coverage of the Lanham Act. We demonstrate that descriptive marks are no less source-indicating than suggestive, arbitrary, and fanciful marks. We also show that it is the non-lexical cues of typical trademark use (e.g., the location and size of the mark) that cause consumers to find descriptive marks to be source-indicating.

Finally (in Part VI), we offer some observations about the implications of our findings for the law's treatment of word marks. Our principal conclusion is that the law's treatment of “merely descriptive” marks cannot be justified on the basis of its faulty premises of distinctiveness. The main implication of that conclusion is a proposal to jettison legal tests that are based on those premises. Thus, we advocate the abandonment of the Abercrombie dichotomy between “inherently distinctive” and “non-inherently distinctive” word marks, eliminating (at the threshold protectability stage) the longstanding categories of descriptive, suggestive, arbitrary, and fanciful trademarks. Under our approach, all non-generic word marks would be eligible for protection so long as they satisfy the “trademark use” requirement.  . . .

The approach we advocate is admittedly heretical, as it calls for a substantial overhaul of a system of classification that has long stood as an unquestioned fixture of trademark law. But if that fixture can be shown to be indefensible on theoretical and empirical grounds, it deserves to be questioned. Once “merely descriptive” words are seen as distinctive source-indicators when used in a typical “trademark use” context, they should not be foreclosed from protection on the basis of erroneous assumptions about consumer psychology.

Heretical indeed!  What do you think?