Reading list: descriptive and suggestive TMs

Jake Linford, The False Dichotomy Between Suggestive and Descriptive Trademarks. Abstract:

Classifying a trademark as descriptive rather than suggestive fundamentally alters the scope of trademark protection. A descriptive mark, derived from a feature of the product or service sold, only qualifies for protection after the mark has acquired source significance, i.e., consumers see it as a trademark. A suggestive trademark, which indirectly invokes qualities of the product or service, is protected without evidence of source significance. Courts often struggle to distinguish between suggestive and descriptive marks. The effort would nevertheless be reasonable if the differences between suggestive and descriptive marks justified their disparate legal treatment. But in light of cognitive and historical research into language change, protecting a suggestive mark without evidence of source significance may not be warranted. In fact, trademark law erroneously inflates the difference between suggestive and descriptive marks. This mistake becomes apparent in light of theoretical, historical, and cognitive research into “semantic shift”: the process of words gaining and losing meaning over time. Linguistic analysis reveals an inconsistency between how trademark doctrine treats suggestive and descriptive trademarks and how consumers likely process them. Suggestive and descriptive marks are not so dissimilar as to justify different treatment. Instead, they likely influence consumers in similar ways. As a result, trademark law should reposition the line between descriptive and suggestive trademarks. A suggestive mark, like a descriptive mark, should be protected only upon a showing that the mark has developed source significance in the minds of consumers.

Very interesting and largely persuasive, though I think he misreads my Gone in 60 Milliseconds–he argues that quick mistakes are very hard to correct, but my points was that (accurate) recognition delays, allegedly produced by the presence of diluting marks, haven’t been shown to affect real purchases, for pretty much the reasons he offers to explain why descriptive and suggestive marks are more similar than different: context matters a lot.

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