Posted: 9 Sep 2018
Date Written: August 28, 2018
The forms of proof proffered to establish trademark secondary meaning are relics from a simpler time. Evidence of producer actions, aspirations, and investment, such as ad expenditures and length of use, are premised upon a world in which producers disseminate advertisements and sell products, and consumers either buy them or don’t. The Internet has destabilized that producer/consumer binary. Consumers have a lot to say about the trademarks and products that spark their passion, the labels that define them, and the service providers that did them wrong; they share experiences, make expressive uses, complain publicly, or avow fandom through follows and likes. “Mark talk” abounds. We find it all over social media — on individual profiles, company pages, affinity groups, and influencer posts. Online fora are rife with product reviews, recommendations, and reactions; on some sites the number of stars buyers award a particular product determines whether other shoppers will select it. Readers respond to product-related posts with rants and raves of their own. Thanks to this mark talk, producers and fact-finders have unfettered access to consumer speech that both references and incorporates marks — speech that reflects whether, how, and what trademarks mean to the speakers, at a time when consumers play an increasingly important role in making trademarks “mean” in the first place. Mark owners are beginning to cite what goes on in these online spaces to the USPTO and courts, to varying effect. But few mark owners have moved beyond citing their own advertising efforts on social media or the numbers of likes their products garner to put forward examples of consumers using or referencing the relevant trademarks in posts, reviews, comments, and complaints. Mark talk represents a tremendous corpus of online conversations using or discussing trademarks. In many cases, it’s capable of answering the secondary meaning question at least as well as old-fashioned, producer-centric proxies, if not much better. Considering mark talk in combination with producers’ publicity efforts provides better evidence of secondary meaning or its absence than either type of information taken alone, and better serves trademark law’s goals.
Keywords: Trademarks, Distinctiveness, Secondary Meaning, Internet Law, Advertising
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