1. Understanding Trademark Strength
- Author
-
Timothy Denny Greene and Jeff Wilkerson
- Subjects
Engineering ,Trademark ,Jurisdiction ,Action (philosophy) ,Scope (project management) ,business.industry ,Law ,business ,Lanham Act ,Heuristics ,Trademark infringement ,Purchasing - Abstract
Trademark strength, properly understood, refers to the scope of protection afforded a trademark by courts based on: (1) the mark’s tendency to signify to consumers a consistent source of the products to which the mark is affixed; and (2) the mark’s ability to influence a consumer’s purchasing decisions. The stronger the mark, the more uses the mark’s owner may exclude from the marketplace through a trademark infringement or dilution action. Courts typically apply a two-pronged analysis in assessing trademark strength. The court first determines a mark’s inherent strength – the extent to which the mark naturally signals source and drives purchasing decisions. Next, the court inquires into a mark’s actual strength in the marketplace – that is, the mark’s actual tendency to signify source and influence consumers’ purchasing decisions. We argue that the acquired strength prong is insufficiently theorized and lacking in analytical rigor, which results in inconsistent results as judges in each jurisdiction (and indeed, each judge within a jurisdiction) rely on their own peculiar heuristics for determining whether a trademark is strong or weak. Our goal in this article is to develop a better understanding of what is at stake when judges and practitioners think about trademark strength and, additionally, to provide analytical guideposts that judges and practitioners can use that can improve outcomes in two related ways. First, by describing mark strength in a more articulate, consistent manner we can work towards eliminating inconsistency across circuits, thereby promoting more uniform national application of the Lanham Act. Second, by predicting accurately how strong a court will hold a mark to be in litigation, practitioners and markholders can better calculate the risk of bringing suit against an alleged infringer (or diluter).
- Published
- 2013