Sixteenth Trademark Scholars’ Roundtable Trademark Use 2.0 part 1

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

Graeme Dinwoodie

Why revisit use? (Readinglist for 2008 roundtable; session1, session2, session2 part 2, session3.) Creates methodological questions that are useful/worthy of exploring. 20years may have led some of us to rethink our views. Defenses and validity doctrineshave developed; use for acquisition purposes is now very salient, especially ifyou 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 meansto make use as a mark; courts are referring to JDI in the acquisition contextas well as infringement, see MedicalDepot case which looked at JDI and its emphasis on source identificationfor guidance. Work by Alex Roberts, Jeremy Sheff, Mark Lemley, Mark McKenna andothers has also looked at this question of acquisition—likely to see courtsrevisiting this more often in the wake of JDI.

(2) History/ways in which courts have considered TM use ineligibility context over time. Increased commodification/attempts to extractvalue across multiple contexts in society, including commodification/exploitationin creative industries but also attempts to squeeze value out of things liketerms used widely in the general vernacular. PTO/Courts have had to confrontthese new kinds of TM claims—characters, titles, trade dress, memes, and otherfeatures w/some intrinsic relationship to the value or character of the productitself. Extricating source-indicating function of thing claimed as mark fromthese other functions is tricky. Not sure that PTO/courts have arrived at verysatisfying solutions. Maybe there is no general way to approach these questionsand we have to do it case by case. TMEP has a long list of reasons for findingthat a claimed mark or feature doesn’t function as a mark, and that listincludes things like functionality in addition to ornamentality, titles ofsingle works, etc. But how to consider things like expression/competition/otherinterests in this evaluation?

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

General question: how should we think about the potentialsource-indicating functions played by words or symbols in connection w/varioussorts of goods relative to other roles that they may be playing in theunderlying product or service in providing some of the value associated w/theproduct or service, describing its characteristics, conveying an expressivemessage? How do those functions relate to the push and pull of TM—why does thelaw grant protection in order to avoid confusion/protect consumers? As opposedto 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 failsto function or is being used in a TM way? PTO assumes that certain types ofuses will not be perceived by consumers as source identifiers, and thereforethey fail to function, and therefore they aren’t being used by the applicant toidentify and distinguish the source of their goods, and therefore they areunregistrable. That’s strange to determine whether applicant is using byreference 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 tocapture other concerns. Evidence in failure to function rejections tends not tobe 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 bigquestion. [This seems like a Walmart issue: given the non-TM functions thatthey serve, we should presume that consumers understand that usuallythey’re fulfilling non-TM functions, because of the risks of error in favor ofregistrability, and that’s why applicants lose when they don’t have surveys.]

Alex Roberts: has been teaching TM to music students. Useas a mark in the context of artists’ names is super wonky; TMEP/PTO areinconsistency. When do consumers view a stage name as a mark? What about analbum name? Really tough compared to use on tangible products. Creators ofvisual 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 butmark-like when it occurred. Use as mark/distinctiveness as inextricable: somecases say that use in a TM way is required, and unrelatedly one needsinherent/acquired distinctiveness. Her view: those two are impossible toseparate. Medical Depot: a suggestive mark is easier to show TM use for. Fewerindicia of use as a mark required than if the term were descriptive.

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

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

Stylization and cutesy misspellings could be doing a lotof 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 iton T-shirts. But that gets more complicated as we move to brands as freestandingproperty. Resisted this move, but it is happening—but then we really needlimiting principles where we can’t rely on “does the consumer view this as an indicationof 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 protecttitles unless the person is creating the physical objects, for many of the samereasons we’ve discussed. Is use as a mark about distinctiveness, or does distinctivenessaffect how easy or hard it is to find TM use?

Two categories of marks to bring in: (1) nonsense marks—GraceMcLaughlin’s great note and Fromer/McKennaon problems/growing use of nonsense marks, b/c PTO just grants registrationseasily even though a nonsense mark is not performing TM functions intraditional sense. [Maybe secondary meaning should be required!] Applicant clearlywants to use it as a “trademark” in a formalistic way, but it’s not designed tobe remembered. (2) trend of collaborations. What do we do when somethingindicates two sources? Is it something new? [In my view that should actuallyundercut 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 [thoughthat 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 maponto how consumers behave. Consumers say “I want the product that I’ve hadbefore” (or similar). We look for a series of things, but it may not be any onething, including the shop location, that communicates source.

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

Lisa Ramsey: BLM example—when applicant tried to register,they put “Black Lives Matter” on hangtag and front of shirt—if you focus onwhether applicant has used TM space, they will claim rights more broadly. PTO’sinformational 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 argumentsin Brunetti’s attempted registration of FUCK and the gov’t did a very bad jobdefending F2F/Fed Cir wasn’t sure where it came from in the statute. It’s anormative approach: we don’t want to register certain kinds of subject matterb/c it’s harmful to competition and expression. [This is not going to work verywell in the current statutory interpretation environment; I think thatcurrently, Walmart reasoning about error costs is the strongest defense ofrequiring actual evidence of TM function.]

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

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

RT: [Relatedly to Lemley’s points: Because of change inmarkets, we need to update Teflon surveys to include “neither a brand name nora generic name” and we need to start training people for secondary meaning (andconfusion) surveys just like they’re trained before taking a Teflon survey—havinga control doesn’t quite get the job done.]

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

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

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

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

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

[Other thoughts:

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

McKenna: note that stylization registrations are abusedmassively on Amazon. [RT: And also in the UDRP/URS/Trademark Clearinghousedomain name system, since the TM Clearinghouse extracts any word from aregistration even if the registration is stylized and then provides preemptiverights 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 actuallysaid.

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

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

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

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