Brief of Trademark and Internet Law Professors as Amici Curiae in Support of Respondent
46 Pages Posted: 18 Mar 2020
Date Written: February 18, 2020
In assessing trademark validity and trademark, courts, examiners, and litigants analyze trademark meaning through the lens of consumer perception. Marks wax and wane as consumer use bestows and withdraws trademark meaning. Like the meaning of other communicative symbols, trademark meaning can change over time. Indeed, change is an essential feature of the trademark system, as it is in any other communicative system. The touchstone of trademark validity analysis is perception. It is critical to consider use in commerce and use in context — consumers’ understanding of and reaction to claimed trademarks—when determining whether a mark qualifies for trademark protection and registration.
In a troubling distortion of this framework, the government proposes a rigid rule that would require courts and examiners to ignore evidence of consumer use and consumer perception. Instead, decision makers would base registration determinations on a static snapshot of the origin of the term or terms comprising a trademark. Rather than engage in the standard context-sensitive inquiry, examiners at the Patent and Trademark Office (“PTO”) would be forced to conclude that any mark combining an ostensibly generic term and a top-level domain like “.com” is generic, irrespective of the trademark meaning consumers have vested in the term. The government’s approach is inconsistent with the best understanding of how language changes and how consumers create trademark meaning.
Government’s proposed rule stems in large part from a failure to appreciate that language — including commercial symbols like trademarks — is subject to constant change. Determining the genericness question solely by an appeal to dictionaries, as urged by the government, invites courts and claimants to over-rely on a term’s history, including obsolete meanings, instead of how it is actually used by sellers and consumers in commerce. As linguists understand, words and symbols — including commercial trademarks — are neither fixed nor unchangeable. Thus, a term’s meaning in one context does not determine the meanings consumers will generate from it in a different context.
The government’s proposal also relies on mistaken error-cost analysis. One might recognize that a generic term can acquire trademark meaning, but incorrectly presume it happens so rarely that error is best avoided by ignoring that creation of trademark meaning when it occurs. The shift from the generic name of a good or service to the name of a source is what linguists call a narrowing shift. Research into language change shows that narrowing is not at all rare and, in fact, may be the most frequent type of language change.
The government’s proposal further relies on a flawed analysis of competitive harm. When a majority of consumers perceives an ostensibly generic mark as a source signifier, those consumers are not indifferent to or unharmed by the use of a confusingly similar third-party mark. In fact, ignoring the development of source significance may well increase error costs in trademark litigation by reducing efficiency and increasing search costs imposed on consumers. But applying the primary significance test in cases where consumers have vested trademark meaning in an ostensibly generic term will properly manage potential competitive harm by setting a sufficiently high threshold for demonstrating that consumers view the claimed trademark as a source signifier.
Keywords: Trademark, Generic, Language, Linguistic, Semantic Change, Semantic Shift, Linguistic Drift, Supreme Court, Patent and Trademark Office, Booking Dot Com
JEL Classification: K11, O34, L81, L86
Suggested Citation: Suggested Citation