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Reclaiming the Primary Significance Test: Dictionaries, Corpus Linguistics, and Trademark Genericide

43 Pages Posted: 29 Aug 2017  

Neal Hoopes

Independent Scholar

Date Written: December 15, 2016

Abstract

Companies spend billions to promote their brand. But with increased trademark recognition comes the possibility of losing exclusive rights to use that trademark, a process called genericide. Courts have often turned to linguistic evidence, such as dictionaries and media usage, to determine whether a trademark has become generic. These courts merely suggest that linguistic tools reflect a trademark’s meaning. Yet these tools are not the objective indicators that courts have assumed. This Paper discusses why using dictionaries and media usage to prove genericide is a mistake and then turns to evaluating another tool, corpus linguistics. Corpus linguistics, unlike other linguistic tools, may prove beneficial for companies seeking to protect their trademarks. Ultimately, however, linguistic tools — including dictionaries, media usage, and corpus linguistics — cannot prove genericism because linguistic data may, at best, prove a term’s majority usage. But the Lanham Act requires a showing of primary significance. The Paper contends that courts should maintain majority usage and primary significance as distinct concepts and, in this way, should reclaim the primary significance test.

Keywords: trademarks, genericide, law and linguistics, corpus linguistics, dictionaries

Suggested Citation

Hoopes, Neal, Reclaiming the Primary Significance Test: Dictionaries, Corpus Linguistics, and Trademark Genericide (December 15, 2016). Available at SSRN: https://ssrn.com/abstract=3025850

Neal Hoopes (Contact Author)

Independent Scholar ( email )

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