The Braindng of America: The Rise of Geographic Trademarks and the Need for a Strong Fair Use Defense

AuthorJoseph .C Daniels
PositionJ.D. Candidate, The University of Iowa College of Law, 2009
Pages01

J.D. Candidate, The University of Iowa College of Law, 2009; B.A., Grinnell College, 2003. I would like to thank Professor Mark Janis for his comments and suggestions and the writers and editors of the Iowa Law Review for all their hard work and assistance during the publication process. And a special thanks to the people of Montana for providing the inspiration for this Note.

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I Introduction

Anyone who has ever made the arduous journey to the historic Chico Hot Springs in Pray, Montana-with its classic charm and peaceful serenity-would be hard pressed not to feel like they have stumbled across the last best place. 1 It is no surprise that author William Kittredge coined the phrase "The Last Best Place" while drinking with friends at Chico Hot Springs2 and used it for the title of an anthology of Montana prose and poetry.3 The phrase captured the essence of Montana so well that the people of Montana-who are quite proud of their state, culture, and big open skies-took to the phrase and began referring to Montana as the last best place.4 However, a Nevada corporation threatened Montana's status of being the last best place-both legally and culturally-in 2005 when it attempted to register the trademark the LAST BEST PLACE with the U.S. Patent and Trademark Office ("PTO").5 The usurpation of this iconic phrase sparked a heated controversy in Montana, ultimately resulting in a legislative and legal battle over the registration of the phrase.6

For most people in the United States, the controversy over who can trademark the phrase "The Last Best Place" is probably not a hot-button issue. However, the Lanham Act does allow geographic terms and phrases to be registered as trademarks under certain circumstances.7 Once registered, a mark owner not only has certain enforcement rights, allowing him to exclude others from using the mark, but the owner can also license the use of the mark for merchandising, sponsorship, and many other profit-making purposes. 8 Therefore, more and more states, cities, and private entities are using and registering geographic brands. 9 And even though what happens in Montana usually stays in Montana, the debate over who can control geographic trademarks does have national significance since many states, Page 1706 cities, and geographic regions are creating their own unique personalities. Thus, as geographic brands become more prevalent, tensions will arise between protecting legitimate trademark interests and ensuring that competitors have access to general and descriptive words and phrases.

To protect this descriptive phrase, Montana took a rather drastic approach and used an appropriations rider to stop the PTO from spending any funds on processing any applications for the mark LAST BEST PLACE.10 While Montana's approach was successful,11 its approach actually accomplished very little.12 This Note questions the desirability of such an approach: Does a blanket refusal to register specific geographic descriptions serve the best interests of producers, competitors, and the consuming public? And would current trademark doctrines provide better mechanisms to balance the protection of legitimate trademarks and the preservation of access to geographic words, phrases, and images?

To begin answering these questions, it is important for both mark owners and the public to remember that trademarks are not an absolute property right.13 One of the many ways that the trademark laws maintain the balance between the rights of mark owners and the public is by allowing for a fair use defense.14 The fair use defense enables competitors to defend against infringement claims if the competitors were only using the descriptive elements of a protected mark.15 Since a mark can simultaneously identify a particular producer and describe the product being sold, it can become difficult to determine when a competitor is using the mark as a source-identifier and when a competitor is using the mark to describe the goods or services. This distinction becomes even more muddled when using geographic trademarks since a geographic word or symbol can describe more than just physical location. Therefore, this Note argues that trademark law can address concerns over the rising use of geographic marks better through the application of the fair use defense than through stricter registration standards.

This Note explores the use and registration of geographic trademarks and how a strong fair use defense can help maintain the proper balance between protection and access. Part II of this Note discusses the general Page 1707 purposes behind trademark protection and provides a detailed background on the registration of geographic trademarks and the application of the fair use defense. Part III explores the rising trend in creating and using geographic trademarks and brands and the extent of protection courts give these marks when an alleged infringer asserts a fair use defense. Finally, Part IV discusses the importance of a strong fair use defense, in light of the growing trend of geographic brands, to ensure that competitors and the public have access to the descriptive qualities of geographic words, phrases, and symbols.

II Background

On the omst basic level, trademark protection revolves around the idea of allowing purchasers to identify efficiently the goods and services they find satisfactory and to reject those that are not satisfactory. 16 Trademark law provides protection to both businesses and consumers in a variety of ways, including the protection of trademarks, service marks, and collective marks. 17 It also aims to protect society as a whole by attempting to ensure that mark holders do not monopolize certain words or phrases.18 This Note focuses on a particular type of mark-the geographic mark-and how the law balances the rights of the owner with those of the public. Therefore, before delving into a discussion of geographic trademarks and fair use, it is important to provide some background on the general purposes and functions of trademark protection.

A the General Purpose and Function of trademarks

According to the Lanham Act, a trademark is any "word, name, symbol or device" that "identifies and distinguishes" a particular entity's goods.19 However, the user of that mark does not own that word, name, etc., but merely has the right to protect the identity and goodwill that is distinguished by the mark.20 Thus, the main purposes of trademark laws are: (1) to Page 1708 identify the origin of the goods; (2) to protect and promote the goodwill of those goods; and (3) to protect consumers in the marketplace.

1. Identification

Trademark law has long recognized that both consumers and producers would be at a severe disadvantage if consumers had to research the origin and quality of the goods they purchased every time they wanted to purchase a particular product. 21 This need for efficiency and quality assurance is why identification is fundamental to trademark protection. 22 Because of trademark protection a consumer can go into a grocery store, pick up a box of Kellogg's Raisin Bran, and be assured it will have the same qualities as the last box he purchased.

The Lanham Act does very little to restrict what a court can consider a trademark. The Act provides protection to words or phrases, packaging, and even colors and sounds.23 Again, the important thing is the ability of the mark to inform consumers of the origin of the goods. Furthermore, trademarks are used to identify "secondary sources," such as "indicating sponsorship or authorization by a recognized entity."24 For example, when a fan buys a T-shirt with his favorite sports team's logo on it, that logo allows the fan to identify himself with that team.25 Identification serves as the threshold to trademark protection; it is this identification that promotes and Page 1709 protects a person's goodwill and protects consumers from fraud and free-riders.26

2. Goodiwll

Once a consumer identifies a mark with a particular entity's goods or services, that mark will encapsulate any goodwill a consumer has towards the goods or services. 27 A consumer may identify that Kellogg's Raisin Bran is different than other raisin bran and prefer Kellogg's because it has a superior taste. Thus, Kellogg's mark not only identifies the origin of the product, but also, at least in the consumer's mind, identifies the good (or ill) will a consumer has towards the product.

It is the quality of goodwill that gives trademarks their value and need for protection. 28 Thus, it is the associated goodwill, along with a mark's ability to identify origin, which classifies it as property.29 Trademark laws, by protecting marks and the goodwill associated with them, provide incentives for businesses to make and provide better (or at least consistent) goods and services.30 Therefore, a mark becomes stronger when it has a...

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