A Century of Trademark Law: Looking Back and Looking Forward (Notes from my INTA Annual Meeting Talk)

By Eric Goldman

At the INTA Annual Meeting in San Francisco in May, I spoke on a panel with Miles Alexander of Kilpatrick Townsend and The Rt Hon. Professor Sir Robin Jacob, now a professor at University College London. The panel was moderated by the esteemed Tom McCarthy. Nominally, the panel theme was celebrating 100 years of the Trademark Reporter, but in practice this theme allowed us to riff on the past and future of trademark law. We had a huge audience of over 300 folks. Photos of the panelists and the audience. Audio recordings are available presumably for a fee (you have to navigate this baffling website–no deep linking allowed there!).

I made 3.5 points during my remarks. The first two-and-a-half points relate to what has changed in trademark law; the last point relates to the future.

Point #1: Rise of Online Word of Mouth/Fall of Brand Control. In the old days, brand owners has pretty clear rules of engagement for reaching consumers. Following the 4Ps of marketing, brand owners who wanted to shape consumer perceptions could exercise tight control over distribution channels and could woo mass media gatekeepers. Consumer word of mouth was important, but it was slow, low-scale (in that any individual consumer could reach a relatively bounded universe of other consumers) and steerable through mass media exposure. Now, consumer word of mouth is lightening fast, can have the same reach as the traditional mass media, and is extremely difficult to control because of its fractured and democratized nature. I explore this point more in my paper, Online Word of Mouth and its Implications for Trademark Law.

Point #2: Crumbling of Commercial/Non-Commercial Distinction. Many legal doctrines are predicated on distinguishing commercial from non-commercial activity. None of them are prepared for the collapse of that distinction. Certainly trademark law isn’t prepared. Commerciality is a Constitutional imperative for trademark law. Perhaps more importantly, most trademark doctrines are designed to correct a specific type of defect in the marketplace.

Trademark law has proven ill-equipped to handle non-commercial activity. The doctrinal boundaries are simply too plastic to work well when applied to fundamentally non-commercial activity. In the past, trademark law struggled with fundamentally non-commercial parodies like Air Pirates or the Screw Magazine depiction of the Pillsbury Doughboy that had relatively small reach. Now, a similarly non-commercial parody can generate 100M views on YouTube or a million Twitter followers (think BPGlobalPR)–thus having the reach, but not the intent or effect, of activity that used to be limited only to commercial actors.

Point #2.5: Emergence of Private Namespaces. One specific application of the rise of online word of mouth and the incoherence of the commercial/non-commercial distinction arises with the development of new private namespaces. Historically, any private non-trademark namespaces typically were limited in reach. But this changed with the rise of 1-800 vanity numbers, then domain names, then usernames on online services (especially social media). Now, each private namespace creates a new opportunity for third parties to register a trademark owner’s brand and reach the world under that brand. Yet, we don’t have consistent rules for the application of trademark law to private namespaces, and it seems like we have to invent the rules anew each time.

Point #3: Trademarks and Scientific Understanding of Consumers. A tension for the future: how much will trademark doctrine integrate scientific learnings about consumer behavior? Most of basic trademark doctrine was built decades ago, and our understanding of consumer psychology and behavior has improved substantially in the intervening years. Yet trademark doctrine hasn’t really changed to reflect any of those learnings. In fact, we have weak or zero scientific support for the doctrinal contours of things like the multi-factor likelihood of consumer confusion test or trademark dilution.

At some point, we might just acknowledge that trademark law is the product of trademark owner rent-seeking rather than anything that tries to reflect actual consumer behavior. This is why the courts may be more useful than legislatures when it comes to improving trademark law. For example, the courts could unilaterally change the elements of the multi-factor likelihood of consumer confusion test because it’s purely common law, although it will be hard for any single judge to reshape the test nationally. Nevertheless, as trademark doctrine further deviates from consumer behavior, trademark owners will encounter more friction in courts and society will have less respect for trademark law.

IP Kat/AmeriKat’s recap of the panel. Managing IP’s coverage of the talk.

Functionality Talk. Separately at the annual meeting, I also spoke on a panel with Mark Lemley and Dan Burk on the functionality doctrine, especially as applied to Rosetta Stone. A photo of the panelists. Managing IP’s coverage of the talk.