Democratizing Access to Survey Evidence of Distinctiveness
Trademark Law and Theory: Reform of Trademark Law (Dinwoodie & Janis, eds), Elgar, 2019, Forthcoming
23 Pages Posted: 27 Nov 2018
Date Written: October 31, 2018
Under US law, a trademark is distinctive, and therefore valid and protectable, if it is “capable of identifying products or services as coming from a specific source.” Some marks are treated as inherently distinctive, and protected from their first use, based on presumptions about how consumers will interpret the relationship between the mark selected and the goods or services offered. Other marks are not inherently distinctive and therefore must acquire distinctiveness in the eyes of consumers. US courts consider the distinctiveness of marks by categorizing them along a spectrum famously articulated in Abercrombie & Fitch Co. v. Hunting World, Inc.
Consumer perception is critically important to assessing trademark validity and scope. But many inaccurate presumptions about consumer perception are baked into courts’ categorization of trademarks along the Abercrombie spectrum. Failing to properly account for how consumers understand and use trademarks can distort commercial markets.
Courts and trademark examiners might thus prefer litigants to present better evidence of whether consumers see a given mark as distinctive and source signifying. Consumer surveys provide evidence of distinctiveness on which courts frequently rely. Unfortunately, the costs of conducting a trademark survey have historically been high enough to discourage many mark owners from offering survey evidence of consumer perception. Well-heeled litigants can fund surveys, but those with a smaller war chest cannot.
But as new platforms lower the costs of finding survey respondents, we may see a democratizing effect as more litigants can afford to conduct surveys. For example, Amazon’s Mechanical Turk (MTurk) provides access to a constantly rotating panel of potential survey respondents. Psychology and marketing professors are utilizing MTurk with increasing frequency, in large part due to the platform’s convenience and affordability. But trademark litigants appear not to be taking advantage of the platform. This chapter argues that litigants could use MTurk to generate consumer trademark surveys at significant cost savings, and that US courts and the United States Patent and Trademark Office should admit properly conducted MTurk surveys into evidence.
Unfortunately, cheaper surveys will not fully democratize the use of survey evidence. The costs of finding survey participants pale in comparison to the costs of hiring experts to conduct and interpret survey evidence. If courts are to consider evidence of distinctiveness from a consumer perspective, the market for trademark expertise may be overdue for some disruption. This chapter thus also argues that US trademark litigants should be able to rely on more reasonably priced providers of survey expertise because testimony from less highly credentialed experts should still be admissible under US evidentiary standards.
Keywords: trademark, Amazon, Mechanical Turk, MTurk, evidence, distinctiveness, survey evidence
JEL Classification: O34, K29, M39
Suggested Citation: Suggested Citation