Lexicon Law: Rethinking Source Confusion as the Basis of Trademark Law

Eric Goldman

February 2005

1. TM law claims to protect against source confusion

Historically source confusion was fundamental to TM law

But TM law doesn’t define “source” rigorously any more

· TM licensing

· TM assignments

· Initial interest confusion, endorsement confusion

· TMs as property rights in gross

But the problem is more pernicious than just those typical examples because…

2. Source Confusion is not an appropriate basis of TM protection

(a) Consumers Can’t Define Source.

Source can mean a variety of things

· Specific individual employees (ex: Walt Disney)

· specific marketing team

· specific engineering/design team (ex: Apple products)

· specific manufacturing facilities (ex: NUMMI plant)

· Set of corporate policies/practices (ex: Honda’s network of dealerships)

· specific investors/capital sources—typically the “owners” of the TM are treated as the “source” of a product—but often consumers don’t know who owns the TM

None of these factors are immutable—all of them could change without undermining the TM. Ex: auto TMs (changes in ownership, rebranded goods). Badwill

TM might stand for different propositions to consumers (ex: Jordan v. Nissan—Nissan buyer really didn’t want a Ford, but the Nissan Quest was just a rebranded Ford minivan)

(b) Consumers Often Don’t Care About Source.

TM law treats the product’s source as a critical product attribute

But consumers may make purchases based on a variety of attributes

In some cases, TMs do not influence decisions at all

3. A new way to think about TM law: TMs as lexical units

We should rethink TM law as protecting source.

Instead, TMs should be thought of as lexical units in our social lexicon.

TM law is just a scheme to create a robust and accurate “dictionary” so that when TM owner communicates using a TM, consumers understand the meaning

The TM owner has the right to “maintain” their dictionary entry (specifically, the product attributes the consumer associates with the TM)

TM infringement occurs when competitor uses existing definition or when new party tries to create a new definition that consumers can’t distinguish from existing definitions.

[how does this deal with problems of generic, descriptive, genericness. All of this ties to definitions in consumer’s heads. TM owner doesn’t get rights until they create their own unique definition of words.

Words are living organisms. So are TMs.]