Visual Metaphor and Trademark Distinctiveness

60 Pages Posted: 20 Jun 2017 Last revised: 10 Apr 2018

Dustin Marlan

University of Michigan Law School

Date Written: April 10, 2018

Abstract

Perhaps because words are the lawyer’s principal instrument, the law gives too little attention to visual images. Invoking Justice Potter Stewart’s infamous statement regarding the law’s inability to define obscenity, “I know it when I see it” is the standard for interpreting images in the law. A greater understanding of the ways in which images make meaning is needed, however, including in trademark law given our increasingly visual economy.

This Article examines images in the context of trademark law’s inherent distinctiveness doctrine. While trademark law still lacks a coherent, uniform, and predictable framework for deciding the distinctiveness of visual image marks—logos and product packaging—it has long used the “imagination” test to effectively determine a word mark’s distinctiveness. Under this doctrine, immediately protectable word marks must operate in a metaphoric relationship to the words from which they are drawn (i.e., as figures of speech), requiring consumers to use their imagination to reach a conclusion as to the nature of the goods or services offered under the marks (e.g., “Klondike” for ice cream and “Greyhound” for a bus service). This makes sense because the first requirement of a valid trademark is that it be a “symbol”, and, as this Article shows, the basic characteristic of any symbol is its figurative quality. Research in conceptual metaphor theory finds, however, that metaphor is “primarily a matter of thought and action and only derivatively a matter of language.” Indeed, brands rely not just on verbal metaphor, but also on visual metaphor to differentiate themselves from competitors in the marketplace (e.g., McDonald’s “golden arches” and Starbucks’s “siren”).

This Article thus claims that visual metaphor provides a figurative, cognition-based vehicle by which to extend trademark law’s imagination test of inherent distinctiveness from words to images. In doing so, it conceives of metaphorical association as a central consideration in analyzing the inherent distinctiveness of both word and image marks.

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

JEL Classification: K10, K19, K29

Suggested Citation

Marlan, Dustin, Visual Metaphor and Trademark Distinctiveness (April 10, 2018). 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 or http://dx.doi.org/10.2139/ssrn.2989671

Dustin Marlan (Contact Author)

University of Michigan Law School ( email )

625 South State Street
Ann Arbor, MI 48109-1215

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