Sixteenth Trademark Scholars’ Roundtable Trademark Use 2.0 part 1

University of Minnesota Law School, May 2-3, 2025

Graeme Dinwoodie

Why revisit use? (Reading list for 2008 roundtable; session 1, session 2, session 2 part 2, session 3.) Creates methodological questions that are useful/worthy of exploring. 20 years may have led some of us to rethink our views. Defenses and validity doctrines have developed; use for acquisition purposes is now very salient, especially if you think that use is also important for a valid cause of action. 

Session 1: Trademark Use as a Precondition to Trademark rights?

Stacey Dogan: No overarching theory, 3 related observations. (1) Several different dimensions of use; JDI focused attention on what it means to make use as a mark; courts are referring to JDI in the acquisition context as well as infringement, see Medical Depot case which looked at JDI and its emphasis on source identification for guidance. Work by Alex Roberts, Jeremy Sheff, Mark Lemley, Mark McKenna and others has also looked at this question of acquisition—likely to see courts revisiting this more often in the wake of JDI.

(2) History/ways in which courts have considered TM use in eligibility context over time. Increased commodification/attempts to extract value across multiple contexts in society, including commodification/exploitation in creative industries but also attempts to squeeze value out of things like terms used widely in the general vernacular. PTO/Courts have had to confront these new kinds of TM claims—characters, titles, trade dress, memes, and other features w/some intrinsic relationship to the value or character of the product itself. Extricating source-indicating function of thing claimed as mark from these other functions is tricky. Not sure that PTO/courts have arrived at very satisfying solutions. Maybe there is no general way to approach these questions and we have to do it case by case. TMEP has a long list of reasons for finding that a claimed mark or feature doesn’t function as a mark, and that list includes things like functionality in addition to ornamentality, titles of single works, etc. But how to consider things like expression/competition/other interests in this evaluation?

(3) Dogan/Silbey claimed that titles of creative works should be presumptively viewed as non-TM use, as we read Kagan’s opinion in JDI. There are decades of caselaw finding titles protectable in some contexts, but we should still think about how to think about relationship b/t titles and creative works in relationship to the things claimed as TMs and the products w/which they are associated. Are titles really the same thing as traditional brands? McCarthy seems to think so. But reasons to resist this conclusion: whether they’re serving a source-indicating function (or content-indicating function) but also what the costs of recognizing such protection are (cf. Walmart). Are there places where PTO/courts take different approaches? Titles is one place where that is true—in the courts, even titles to individual works can be protected with secondary meaning, but not without it. But PTO denies registration of individual titles, reasoning both that titles don’t usually serve a source-indicating function and also based on the consequences of TM registration for other people who might want to use similar words in connection with their own expressive works.

General question: how should we think about the potential source-indicating functions played by words or symbols in connection w/various sorts of goods relative to other roles that they may be playing in the underlying product or service in providing some of the value associated w/the product or service, describing its characteristics, conveying an expressive message? How do those functions relate to the push and pull of TM—why does the law grant protection in order to avoid confusion/protect consumers? As opposed to why we might want to resist extending rights in a particular context—competition, speech, other values.

Jeremy Sheff: how do we know whether a putative mark fails to function or is being used in a TM way? PTO assumes that certain types of uses will not be perceived by consumers as source identifiers, and therefore they fail to function, and therefore they aren’t being used by the applicant to identify and distinguish the source of their goods, and therefore they are unregistrable. That’s strange to determine whether applicant is using by reference to what other people think. Does it all just collapse into consumer perception? Are we really just asking about things that go into the likely confusion test?

One principle we know (how consumers react) used to capture other concerns. Evidence in failure to function rejections tends not to be surveys, but other information about how the mark is used on the product, marketing, and so on. If those factors aren’t really about consumer perception, why are they important? Competition, expression, but that’s still a big question. [This seems like a Walmart issue: given the non-TM functions that they serve, we should presume that consumers understand that usually they’re fulfilling non-TM functions, because of the risks of error in favor of registrability, and that’s why applicants lose when they don’t have surveys.]

Alex Roberts: has been teaching TM to music students. Use as a mark in the context of artists’ names is super wonky; TMEP/PTO are inconsistency. When do consumers view a stage name as a mark? What about an album name? Really tough compared to use on tangible products. Creators of visual works are treated differently by PTO—PTO said that use of artist’s name (Neil Sedaka) on album was just descriptive, not TM use.

Medical Depot case: P’s use of mark was sporadic but mark-like when it occurred. Use as mark/distinctiveness as inextricable: some cases say that use in a TM way is required, and unrelatedly one needs inherent/acquired distinctiveness. Her view: those two are impossible to separate. Medical Depot: a suggestive mark is easier to show TM use for. Fewer indicia of use as a mark required than if the term were descriptive.

But the punchline: the decision is completely conclusory about whether the mark (MED AIRE for air mattresses) is suggestive or descriptive, because it errs on the test—it uses the “reverse imagination” test, could you figure out the goods just by looking at the mark, but that’s wrong—you need to know both to apply the imagination test.

Does intent matter? Didn’t see much emphasis on intent in previous cases—wanting something to be a mark doesn’t make it a mark, but that doesn’t square with JDI which focuses on whether VIP intended/tried to use Bad Spaniels as a mark and not on whether consumers perceived use as a mark. Can use as a mark be proved by secondary meaning? Booking.com suggests yes. Connections b/t use as a mark for protectability and the statutory fair use defenses. Use in a TM way adds something more than mere use. Echoes of “Own Your Power” case in Med Aire—not just font style but how many different ways/spaces are they using the term?

Stylization and cutesy misspellings could be doing a lot of work in signaling to consumers. Training consumers, as McKenna & Lemley discuss, is also relevant.

Lemley: We don’t want people to own BLM just by putting it on T-shirts. But that gets more complicated as we move to brands as freestanding property. Resisted this move, but it is happening—but then we really need limiting principles where we can’t rely on “does the consumer view this as an indication of source”? We need to have a high entry barrier.

Jeanne Fromer: kept thinking about Dastar, which says that “origin” means physical source. That should perhaps make it hard to protect titles unless the person is creating the physical objects, for many of the same reasons we’ve discussed. Is use as a mark about distinctiveness, or does distinctiveness affect how easy or hard it is to find TM use?

Two categories of marks to bring in: (1) nonsense marks—Grace McLaughlin’s great note and Fromer/McKenna on problems/growing use of nonsense marks, b/c PTO just grants registrations easily even though a nonsense mark is not performing TM functions in traditional sense. [Maybe secondary meaning should be required!] Applicant clearly wants to use it as a “trademark” in a formalistic way, but it’s not designed to be remembered. (2) trend of collaborations. What do we do when something indicates two sources? Is it something new? [In my view that should actually undercut many affiliation confusion theories b/c that’s how people do collabs; they don’t do it by, say, putting a red wax seal on a bottle of tequila.]

Robert Burrell: HP books are registered titles [though that may have been b/c they were already a series when they were registered]. The reason we find TM use difficult at acquisition stage is b/c it doesn’t map onto how consumers behave. Consumers say “I want the product that I’ve had before” (or similar). We look for a series of things, but it may not be any one thing, including the shop location, that communicates source.

Least bad outcome for titles: distinguish things that are in the public domain: you can register something while it’s under © and thereafter you can’t, which is what Australia does. Similar to patent: while it’s under patent, shredded wheat functions as a reliable indicator of source, but after patent expires anyone can make it so TM protection disappears with the patent.  

Lisa Ramsey: BLM example—when applicant tried to register, they put “Black Lives Matter” on hangtag and front of shirt—if you focus on whether applicant has used TM space, they will claim rights more broadly. PTO’s informational matter exclusion is applied even if something is in the TM spot, and that is a good approach. Same with swear words—but Fed Cir recently heard arguments in Brunetti’s attempted registration of FUCK and the gov’t did a very bad job defending F2F/Fed Cir wasn’t sure where it came from in the statute. It’s a normative approach: we don’t want to register certain kinds of subject matter b/c it’s harmful to competition and expression. [This is not going to work very well in the current statutory interpretation environment; I think that currently, Walmart reasoning about error costs is the strongest defense of requiring actual evidence of TM function.]

Barton Beebe: Hydraulic nature of TM system creates difficulty—concepts are linked so that pushing on one invokes a whole bunch of others. JDI/Abitron: Justices don’t seem to realize that TM law is hydraulically linked. Can TM use be an autonomous concept? Thinks maybe not.

One variable to return to: dichotomy/binary b/t use by D to indicate source versus use by D to indicate sponsorship or affiliation. Tushnet/Lemley on Warhol/JDI: propose workable limit for Rogers to be for affiliation/sponsorship/approval. Is this one place where the symmetry b/t use and infringement breaks down? For plaintiffs, we’re generally not talking about use for purposes of affiliation—but maybe collaborations change things? [Registration may hide any difficulties here b/c in practice you wouldn’t register the collab without a lot of doctrinal cruft.]

RT: [Relatedly to Lemley’s points: Because of change in markets, we need to update Teflon surveys to include “neither a brand name nor a generic name” and we need to start training people for secondary meaning (and confusion) surveys just like they’re trained before taking a Teflon survey—having a control doesn’t quite get the job done.]

registration plus a use requirement has actually forced the PTO at least to think hard about TM function in ways we don’t always notice: I’m going to talk about stylization. (Misspellings: I’m with the PTO that they don’t count b/c Americans can’t spell and might not be fluent in the language.)

 Lee et al say: the law withholds ab initio trademark protection from descriptive marks on the sole basis of a word mark's "inherent [i.e., semantic] meaning"—with almost no consideration of the "way it is used" in a stylized commercial context. Thomas R. Lee, Eric D. DeRosia & Glenn L. Christensen, An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness, 41 Ariz. St. L.J. 1033 (2009).

Lee also says that the law is inconsistent in its commitment to the notion that inherent distinctiveness turns on the semantic meaning of lexical signs because the composite marks doctrine posits that the non-lexical components of a composite mark may create a distinctive, source-indicating impression on a consumer (even if the word itself is subject to a disclaimer). But: There’s no inconsistency if you do a registration focused analysis: that is, because the registration just claims what’s in it (and thereby could be found in any configuration), you could say that a composite mark can have a separate semantic meaning than any of its components.

Likewise, Lee criticizes what is allegedly “the law's refusal to entertain the possibility that those same word marks may be seen as distinctive the moment they take on their full "trademark use" form.” [again, if you start reasoning from registration this isn’t true—if there’s a distinct commercial impression, a semantically descriptive term can be inherently distinctive

And then the registration/disclaimer of the descriptive term highlights the issue that you will then want a sharply limited scope of rights: even if the stylized version is serving as a TM, someone else’s use of a nonstylized version will not indicate TM function on that person’s product. Confusion is thus unlikely (even if individualized factfinding might sometimes indicate otherwise, the game isn’t worth the candle).

[Other thoughts:

Claims over consumer-driven nicknames are not really a problem for a use requirement: if 43(a), then saying that Ps have “rights” in nicknames is pretty much shorthand for saying that, despite lexical/other differences, in practice the use of the nickname for competing products will be likely to cause confusion/in practice the two marks are highly similar despite what a stranger to the area would have thought. If 32, then our use regime kicks in. (But analogous use might still require more explanation, though it too must ultimately be followed by real use, like section 44 and ITUs, so maybe that’s ok?)]

McKenna: note that stylization registrations are abused massively on Amazon. [RT: And also in the UDRP/URS/Trademark Clearinghouse domain name system, since the TM Clearinghouse extracts any word from a registration even if the registration is stylized and then provides preemptive rights in the domain name system to registrants.]

Courts dislike Dastar/don’t know how to apply it. Almost no appellate applications of Dastar take seriously what Dastar actually said.

There once was symmetry b/t validity and infringement: sponsorship/affiliation was meant to track the related companies rule, but on the infringement side it’s taken on way more meaning—courts have read sponsorship/affiliation so broadly that “makes you think of TM owner” counts. Dastar says that you can read “origin” to include “who stands behind this” and that’s more aligned with the related companies rule. TM these days can obscure source more than clarify it—many hotel brands are owned by the same multinational with different names.

Mike Grynberg: how do we resist training consumers? Booking.com makes it harder. Genericity is a doctrinal block even though it may reflect consumer understanding, and courts are often quite reluctant to put screens in place because of false negatives. Barrett does say in Elster that a screen is a good idea. Reasonable consumer concept [non-empirical] is a screen that can be used.

Laura Heymann: Use as related to non-word marks or non-traditional marks. Use gets tricky w/word marks b/c of duality of words—same lexical unit can sometimes function as a mark and sometimes not. For references to persons: consider using limits from defamation cases to look for false assertions of fact?

Stylization doomed Kelly-Brown in Own Your Power case: she only had very limited rights. But that doesn’t completely deal w/consumer perception issues. [Though if a consumer would only recognize something as a mark if it was stylized/in the TM spot, there’s no reason to think that seeing a use that wasn’t stylized/in the TM spot would trigger any confusion or even recollection of the prior use. That is, context effects don’t just matter in establishing rights—they matter in confusion analyses. I discussed this in my dilution piece but it has broader application.]