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Visual Metaphor and Trademark Distinctiveness

62 Pages Posted: 20 Jun 2017 Last revised: 13 Sep 2017

Dustin Marlan

University of Michigan Law School

Date Written: September 11, 2017

Abstract

Trademark law has long used the “imagination” test to distinguish descriptive word marks, which are unprotectable absent secondary meaning, from distinctive ones eligible for protection upon first use in commerce. Under this doctrine, a word mark is considered inherently distinctive if the mark is a verbal metaphor (i.e., a figure of speech) that suggests qualities, values, or aesthetics relating to its associated product or service. Examples include “Klondike” for ice cream and “Greyhound” for bus services. Because marks are symbols, and the sine qua non of a symbol is its figurative quality, trademark law properly uses a figure of speech as its doctrinal trigger in evaluating the distinctiveness of word marks. Yet, despite our increasingly audiovisual economy, the trademark regime lacks a coherent, uniform, and predictable mechanism for deciding the distinctiveness of image marks—logos and trade dress.

Insights in cognitive linguistics and psychology reveal that “metaphor” does not refer merely to figurative language, however, but is instead a fundamental mode of thought characterized as understanding one concept in terms of another. Modern brands rely heavily too on visual metaphor—the visual representation of metaphorical concepts and thoughts—to differentiate themselves from others in the marketplace. Examples include the Apple logo, Starbucks’ siren, and Nike’s swoosh. As with verbal metaphor in the word mark context, use of visual metaphor enables an image mark to serve as an inherent source identifier by (1) denoting (referring literally to) a brand, as well as (2) connoting (suggesting or implying) characteristics associated with a marked product or service.

This Article thus argues that visual metaphor provides a figurative, cognition-based vehicle by which to extend trademark law’s imagination test from word to image marks. To this end, it proposes a test of visual metaphor to decide the validity of an image mark based, at least in part, on whether it is: (1) the representation of a person, place, thing or idea, (2) by means of a visual image, (3) that suggests a particular association or point of similarity as to its underlying product or service. In this way, the Article conceives of metaphor, in its conceptual aspect, as a unifying theory and consistent requirement of trademark distinctiveness regardless of the type of trade symbol at issue.

Keywords: Trademark Law, Conceptual Metaphor, Verbal Metaphor, Advertising and Branding

JEL Classification: K10, K19, K29

Suggested Citation

Marlan, Dustin, Visual Metaphor and Trademark Distinctiveness (September 11, 2017). Washington Law Review, Forthcoming; U of Michigan Public Law Research Paper No. 558; U of Michigan Law & Econ Research Paper No. 17-008. Available at SSRN: https://ssrn.com/abstract=2989671

Dustin Marlan (Contact Author)

University of Michigan Law School ( email )

625 South State Street
Ann Arbor, MI 48109-1215

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