TM scholars’ roundtable

Ninth Trademark Scholars Roundtable: Distinctiveness,
Secondary Meaning, Reputation And Fame
Chicago-Kent College of Law
Session 1:      
Distinctiveness (including Secondary Meaning) as a Legal Concept
Introduction:   Barton
Beebe: different approaches. Any general claims about distinctiveness must take
into account: eligibility for protection/scope of protection; reality v.
policy; words v. non-words; perception by single consumers v. aggregate; consumer
search costs approach v. product goodwill approach; US v. EU. 
Eligibility v. scope: Many claims about distinctiveness work
in both contexts, but keep it in mind. Psychology of individual consumer v.
amorphous crowd of consumers. Some might see a mark as fanciful, others as
arbitrary.  Is this claim about consumer
protection, or is it a claim about what consumers should think?  Doctrine as both descriptive and
prescriptive. Non-words: Abercrombie
doesn’t work for them (if it even works for words).  Consumer search costs approach to TM v.
producer goodwill—Bob Bone’s work. If our emphasis isn’t minimizing search
costs but facilitating production of goodwill, does our concept of
distinctiveness work the same way?
What does it mean for a mark to ID a source?  My answer: a mark is distinctive of source in
the sense that a consumer believes it refers to one source as opposed to
multiple sources [or as opposed to nothing about source?].  Secondary meaning survey: you ask whether it’s
one source or more than one source. This also goes to inherent distinctiveness
analysis: having never heard of this before, do you think that this term is
referring to one company alone or is being used by other companies?  This approach works ok for eligibility, but
not as well as determining the extent of distinctiveness. Eligibility seems
like a binary determination, but scope is not.
Distinctiveness of source
is one thing; distinctiveness from other
marks is a different thing.  Strength or
scope goes to distinctiveness from
other marks.  Does it stand out to the
marketplace.  A lot of times law pretends
to talk about distinctiveness of but is really concerned with distinctivenss
from.
Jake Linford: What do we think we’re doing w/TM law?  Are consumers confused/are we protecting
consumers/are we giving consumers tools to pick in market? Are we incentivizing
marketers to pick clear signals/making space for new entrants/protecting
property rights?  Which is most important
to you will determine how important you think it is to get Abercrombie spectrum
right—we want our TM validity thresholds to dovetail w/what consumers see; or
you may think we want to prevent incumbents from excluding competitors; or you
may think that investment should be rewarded w/right to recoup benefits. For
example, Linford’s piece on per se bar on generic terms looks at what consumers
might expect to see given how language changes over time; if we care most about
that, we might not want a per se bar. But if we want to maximize something
else, there may be no way to reconcile those goals at the margin.
My answer to Q about current tests: they don’t properly assess
inherent distinctiveness. Even fixing Abercrombie
wouldn’t necessarily generalize to symbols/trade dress etc.
The research we look at has its own assumptions—linguistics has
a descriptive bent. Consumer marketing research is designed to help mark owners
to be more persuasive. If our normative baseline is providing entry space for
new competitors, marketing research may not be the best toolkit v. protecting
incumbents’ ability to persuade consumers.
Assume you’re persuaded by Jacoby’s description of how minds
work: chunking, spreading and activation—mark becomes salient in way that
drives consumer decisionmaking. Lockean Q: is it work that owner has done that
deserves to be rewarded as such? How much of that is due to consumers
themselves (Litman, Breakfast w/Batman)? 
Nestle cases—this Q preoccupying Euro courts is whether consumers are
relying on the mark to find the product they seek, or are we just looking for
association?  Affiliation sounds like
association; these cases seem to be trade dress or color cases, marginal areas
generally—do the things we see in limits in European law deserve
importation?  Is reliance the right
question?  Initial instinct is to resist,
but not sure why.
Does it matter which term we use to describe
distinctiveness?  Acquired
distinctiveness v. secondary meaning—acquired seems Lockean/merit-based.  Secondary meaning seems to presume primacy of
primary meaning. That’s what he sees as error in per se bar of generic terms
acquiring distinctiveness.  Source
significance seems to him to be more neutral. 
Timberlake thinks only source significance matters; McKenna is worried
about other things as well.
Discussant:      Stacey
Dogan: Key motivator for TM is interests D is representing, either individually
(justification for own use) or more generally (interest in protecting freedom
to use descriptively).  Some combination
of economics, informational, and moral rights concerns—protecting investments
of mark owners. The way that distinctiveness comes in is that courts look at a
mark as used w/a product, and they say not just is it serving source ID
function but what are the costs associated w/allocating rights in the term to
this one party.  Arbitrary/fanciful: the
costs are low, even if they haven’t yet penetrated consumer consciousness. They
don’t serve an important info function in the marketplace yet, but someone else
who adopts the mark for a similar product lacks justification.  “Technical TMs.”  The reason the D is using the mark has to be
unsavory.
Protecting innocent motives also reduces obligation of
innocent parties to do too much search, esp if mark is fairly descriptive/not
well known w/in a particular geog. area. 
Similar questions w/different product markets.  W/real fame, there’s no justification for
anyone anywhere to use.
RT: Beebe’s answer to What does it mean for a mark to ID a
source?  Beebe’s initial answer: a mark
is distinctive of source in the sense that a consumer believes it refers to one
source as opposed to multiple sources. But those aren’t the only 2
possibilities: perhaps the consumer believes nothing whatsoever with respect to
source.  [2 sub-options: (1) consumer
believes it isn’t supposed to signify source but is something else, e.g. design
or decoration; (2) consumer thinks nothing of it at all unless prompted, and
thus will give random answers.]
Graeme Dinwoodie: how one operationalizes that—looking at
differences b/t mark and other signs rather than the meaning of the goodwill,
which Beebe may mean by distinctiveness of source.  Kind of a patent analysis—how far are you
away from the prior art?  Unless a
crowded field then has an effect on the first question—one kind of
distinctiveness may inform the other.
Dogan’s account of distinctiveness was more normative than
he teaches.  Sense that her take is more
normative than evident in courts’ explicit analysis of distinctiveness.  [Though see KP Permanent/Sealed w/a Kiss case—that’s
a risk the D took when it adopted a descriptive mark.]
Beebe: Seabrook
test is a “distinctiveness from others” test that ultimately is used to answer “distinctive
to consumers” question.
Jeanne Fromer: We conflate inherent/acquired distinctiveness
in many circumstances, but the concepts are distinct. And they’re deeply
distinct—people emphasize one value over another; Ramsey is interested in
inherent distinctiveness more, while Linford values acquired distinctiveness.
Lionel Bently: should the fact that there is a descriptive
use defense mean that we shouldn’t be so bothered about the negative effects of
registering a descriptive term?  UK
courts traditionally say we are still concerned b/c registration is so powerful—trader
shouldn’t have to look to a defense to use a descriptive term.  The ECJ in Windsurfing decision did that too.
Agree w/RT that often consumers don’t see a TM relevant
thing at all.  One thing we might want to
take into account is people’s views when they’re not consumers.  Why do we arrive preformed as consumers
instead of as social or political beings?
Differences b/t distinguishing as source and distinguishing
from others’ marks.  We see
internationally and in EU law the notion of distinctive character for
maintenance purposes.  You can maintain a
mark that’s different from what’s on the register as long as it’s not enough to
change the distinctive character.
Mark McKenna: difference b/t priority and nonpriority
dispute screams out from cases. Way courts evaluate use and distinctiveness in
priority is hermetically sealed from other contexts precisely b/c they know
someone is going to get the mark; it’s just a question of who.   We start w/a rough empirical cut and then
layer other concerns on top—industrial policy concerns.
Ambiguity of “source”: the fact that people are used to seeing
something w/one producer is often used as evidence of TM meaning, but that’s
not the same thing.  Association isn’t
association as an indicator of source. Hardest w/non-word mark cases; there are
lots of other possible explanations for consumer reactions that we should consider. 
Robert Burrell: The market should often correct itself in
terms of mark choice.  Market failure may
occur when businesses are starting out they need to be encouraged to choose TMs
that will serve as badge of origin rather than just being concerned w/market
penetration. But that reasoning would suggest that experienced firms wouldn’t
select descriptive terms, but they do. 
People don’t spend a lot of time thinking about “what is the badge of
origin”? They’re just buying stuff, in response to all sorts of different
signals. So we are trying to protect competitive signals, knowing that
consumers will be responding to lots of signals that have nothing to do with
source identification. Once you’re honest about that, our perspective on
infringement would have to change.
McKenna: registrations that issue with purported limitations
that won’t matter at all in litigation—that’s a huge problem. B/c the PTO is
thinking only about validity it doesn’t deal w/that problem.
Linford: This Q of what a registration does is implicit in
the struggle w/Tam. 
Bob Bone: characteristics of the mark may be probative for
consumer protection. For eligibility what we’re talking about is percentage of
consumers who use mark as source ID in strong sense.  Rough, normative determination of percentage.
For scope, then we are talking about strength, and how distinctive it is w/r/t
other marks. But he doesn’t think we ought to do that for eligibility.
Inherently distinctive marks aren’t distinctive; they’re just really likely to
be distinctive.  That has to be qualified
by what Fromer said—maybe we’re protecting inherently distinctive marks for
incentives for firms that are beneficial down the road.  But if it’s just likelihood/probability of
distinctiveness, that’s a different issue. Probability has to be assessed in
some way.  Probability is both a
descriptive and normative issue.
Beebe: will stick by his own definition but wants to restate
it & explain why.  Distinctiveness is
ten-dimensional—w/r/t inherently distinctive marks that are word marks, if you
accept consumer search costs approach in the US, then we can say this.
Otherwise it’s hard to say something general. 
Gives the whole system a flexibility. 
That’s why his approach is: one source/multiple sources. If a signifier
doesn’t refer to a source at all: you ask consumer whether a plain box is used
by one company or more than one company. 
I want to hold on to anonymous source company.  Do you associate this box with one company or
more than one company?  Or is it not
associated with a company?
RT: but you didn’t offer that third option, “not associated,”
in your first formulation.
Beebe: one company, more than one company, or is it
meaningless to you?
McGeveran: do you associate this with one company or don’t
you?
Dogan: if one company has been selling this box for 17
years, the fact that people recognize it as coming from that company is source
significance, but this is where competing values like functionality come into
play—even with source significance, it’s functional.
McKenna: there’s also a difference b/t association w/ a
company and thinking it’s an indication of source.
Beebe: the cases in the US aren’t so much on your side.
Michael Grynberg: dichotomy of distinctiveness: do we want
it simple or nuanced?  Lawyers can advise
clients on the multifactor test, which is a virtue of the system v. accuracy at
margins.
Dinwoodie: use as a mark as a test for validity might be a
way to reframe some of this as distinct from distinctiveness.  Also, significance of inherent
distinctiveness has increased as more and more applications are ITUs, which are
supposed to be inherently distinctive. 
Mid-Point Discussants:           Lionel
Bently: EU: Categories of marks devoid of distinctive character, descriptive,
generic: overlapping, informed by different concerns but capable of being
applied cumulatively—treat them as less important than Abercrombie. Devoid of
distinctive character: generic, descriptive, signs that would not be recognized
as TMs.  Applied in that sense primarily
to nontraditional marks.  Test: whether
there’s such a difference from the normal shape or presentation that the
consumer would notice it.  Different
tests for secondary meaning?  We could
apply different tests/showings in relation to potential problems. 
Surname cases: demand to show secondary meaning is a little
odd. Either the reaction is always “it’s a TM” or it sends us into a sea of
uncertainty (e.g., you see “McKenna” on a bottle of beer—people will arguably
automatically see that as a TM if it’s in the right place on the bottle;
otherwise not).  Burrell says this is a
waste of time. We should focus on normative side—what are the reasons not to make this a registered TM, which
makes us think much harder about what’s wrong w/registration. That would be a
good thing.  One key: depletion of marks
otherwise available to competitors. Cultural signifiers—Picasso for cars may
cause a different sort of harm, whether we call that dilutive or not.
Distinctiveness of Red Cross.
All the considerations in determining inherent
distinctiveness suddenly vanish in the face of acquired distinctiveness b/c of
our interest in consumer search costs, which becomes the most important thing—protecting
against even a bit of confusion trumps everything but functionality. (And
genericism in the US; not in the EU.)
Lisa Ramsey: See anti-free riding impulse throughout the
cases, in registration and enforcement. Plus consideration of competition and
free expression.  Dilemma: Poor small
businesses can’t afford to do a TM survey. Perhaps it’d be good to have a
survey required for colors/designs, but small companies can’t afford that. If
we really believe in competition, we need to make it easy for small companies
to get protection [or hard for big companies to get monopoly rights over
persuasive designs], but they can’t do that w/a high bar for protection at the PTO.
So how do we define distinctiveness? It has to be normative.
Intent of TM owner: make everything a TM.
McGeveran: never had as much debate over semantic meaning of
thing that’s our topic. What if we banned the use of the word distinctiveness
from the conversation and forced ourselves to rechristen everything we now call
distinctiveness? Which of these things would we give the same name to, and
which would get different names?  Would
help us think about them differently. One of Beebe’s binaries—distinctive from
other marks v. distinctive as indicator of source in mind of consumer. Suppose
one was source consciousness/identification v. mark differentiation? We wouldn’t
use the same words b/c they’re not the same. 
Market strength—is that a measure of the amount of source consciousness?  Or is it a different thing?
Most important thing Coke wants is branding, not
identifying: Coke is refreshing. They use the doctrinal tools of lawyers to
achieve business objectives. B/c we refuse to acknowledge that’s what they’re
doing as often as we should, we tend to go down blind alleys. If we asked a
marketer “how is your brand distinctive” they would not say “people know Coke
when they look at it” but rather “Coke is relaxing and Americana.” That’s their
distinctiveness, and our doctrine is almost blind to it.
Michael Grynberg: does Coke need our distinctiveness for
theirs?
McGeveran: they certainly want that, but it’s a minority
percentage of time and energy poured into the process—necessary but subjugated
in broader ass’n of branding. We could make a decision that the law protects
source consciousness but not other forms of marketing distinctiveness.  That’s fine. 
The market will handle that. The problem is that it shapes the ways in
which firms want to use these marks as tools. They’re going into battle for
branding reasons; if we are blind to that as we construct doctrine, that
creates problems.
Fromer: It’s really important to think about incentives
here. That’s why I care more about choosing some marks over others than perceptions;
over time, businesses can foster perceptions for just about everything, so we
should think about the costs of allowing companies to choose certain marks over
others.  Goes to Bently’s point that we
want to keep some words/symbols from being branded, like Red Cross. If we have
buckets for types of marks, we still have to shape the buckets and figure out
which costs companies should have to bear. 
Throwing dilution in: dilution gets a lot of things wrong, but one of
the ways in which it’s interesting is the way it thinks about distinctiveness.
Mostly equates dilution w/impairment of distinctiveness, but takes degree of
inherent/acquired distinctiveness into account: might mean it’s much harder to
dilute Amazon/Infiniti w/lots of other meanings out there already, but it is
taking account of network of associations. 
Jacoby is so focused on his model from a marketing
perspective, w/o accounting for the costs. 
Apple isn’t “arbitrary” in the marketing sense—they choose a bitten
apple signifying knowledge, friendliness, etc. 
Maybe we didn’t connect apples-computers before that but there’s only
one link in the nodes required. Maybe we want to encourage businesses to find
those latent connections, but we need to think through both costs and benefits.
Shari Seidman Diamond: People out there w/no views at all.
When we ask those questions, it’s not tapping into things people naturally
think about. It does matter that we have asked the question.  They will obligingly give you an answer,
mostly, despite filters/don’t know options. 
If it’s true they’ve never given any thought at all to whether this came
from one source or multiple sources, that is an important feature that we may
be missing.  If it’s allegedly useful for
search cost reduction, if they weren’t thinking about it before it can’t have
been useful for search cost reduction.
McKenna: Dilution is hot mess. “Impairment of
distinctiveness of mark” is nonsense. Doesn’t decrease identifiability of
source significance in product market, though it does deal w/uniqueness, and
maybe distinctiveness of mark v. distinctiveness of brand.  Distinction b/t TM and brand is really important.
When you say Apple signifies knowledge, it’s still arbitrary in Abercrombie spectrum, in terms of
branding/associations brought along with it. 
We sometimes see push & pull about smushing those together; courts
are susceptible to arguments in brand terms and it’s important to be clear
about what we mean.  Context is usually
the whole point of distinctiveness but dilution takes it away from context.
Marshall Leaffer: In registration context, should be pretty
low bar—not necessary to spend lots of resources for something that’s fairly
clearly inherently distinctive for arbitrary/fanciful. But secondary meaning is
a whole different kind of utility. Not competitive entry so much—we are simply
rewarding//providing incentives for those who invest in the goodwill of the
mark.  There it should be a very high bar
for secondary meaning.  Percentages
required go quite low in some cases, though. 
That is a wrong turn. We have a lot to learn from marketers: what they
engage in, from brand/image aspect, is so important to developing strength.
Dinwoodie: European law: parses out different grounds, all
of which look like variants: descriptiveness, void of distinctiveness,
incapable of distinctiveness in 3(1)(A)—gives value to the notice function.
Series of different categories for denying—failure to provide the notice
necessary to competitors; distinctiveness; normative question of competitive
effect; and genericness is a bit of a mix. Force courts and Office to
pigeonhole them, and in fact we give different consequences.  Can’t overcome 3(1)(A).  Trying to separate predictive questions from
normative—if you don’t do that consciously, the normative operations get so
submerged in the analysis that we think it’s purely empirical w/o assessment of
competitive concerns.
Bone: why not get rid of eligibility inquiries? Could have
exclusions for non-distinctiveness reasons, like the bar on names w/o
consent.  But as to 2(e) categories on
descriptiveness, why bother?  When we get
to likely confusion, that requires source identification.  Do we figure that we need an initial screen
for likelihood of confusion?  Maybe we
do. If we were to redo this w/o eligibility via Abercrombie, what sort of screens would we use?  Normative reasons—litigation costs, threats
to competition/overreaching, etc.  Error
costs.  We might end up with the EU/Paris
Convention.
Dinwoodie: that’s a strategic reason why too much gets
forced into distinctiveness. If you limit countries’ ability to create
exceptions, there’s nothing for functionality/names, so the Fed. Cir. shoves
everything into distinctiveness to create exceptions.
[RT] Responding to McGeveran and Leaffer. Branding: we don’t ever want to protect the branding
kind of meaning of distinctiveness. It’s not unique or distinctive.  Coke: Americana, like Ford?  Refreshing, like Winterfresh gum?  Even if Coke’s branding is truly unique in its
category, those are generic and functional concepts that should be available to
anyone who successfully appropriates them even w/in that category. That’s
precisely why we shouldn’t be embracing branding ideas and how we should
distinguish: personality of mark is not what the law is or should be here to
work on.  Dilution: has to arise from
similarity of marks.  That singles out a
specific mechanism for associations and a specific effect distinct from meaning or “brand personality.”
Factual Q: Do we know how many secondary meaning
registrations rely on 5 years of exclusive use v evidence of consumer reaction
or even along w/evidence of consumer reaction?
When we separate normative and descriptive Qs as many
including Dinwoodie advocate we find they’re orthogonal. Look at KP Permanent:
incoherent result on remand.  Tolerate
more confusion—how much more?
McGeveran: not advocating using the law to protect branding
components, merely to point out that those get identified as distinctiveness
and that’s one reason it causes problems; clear delineation can avoid
conflating them.
Linford: is there a way to figure out whether consumers have
ever thought about this before, empirically?
Diamond: yeah, consumers want to sound smart and would say
they’ve thought about it before.  There
are some responses, not so much in design of the Q but design of the survey as
a whole, also getting to the issue of needing only a low level on secondary
meaning.
McKenna: Abercrombie came out of a history of sorting b/t
technical TMs and unfair competition; over decades we’ve layered other considerations
on top that weren’t the function of what the distinctions were for. We’re still
in so many settings dealing w/cts’ merger of two areas of doctrine w/o
sufficiently thinking of the relation b/t them.
Consider the fact that there was a time when if you asked
anyone a computer-related Q people would associate it w/Microsoft. You can wash
that out as noise but it’s real association. If you merge source significance
w/association you can’t deal with that.

Beebe: 4% registered either in whole or in part on the basis
of 2(f)—incredibly small.  Filings for
marks acquired distinctiveness has risen in absolute numbers over the years,
though decreased as a total percentage of filings.

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