Disarray Among the Circuits: When Are Consumer Surveys Persuasive?

Author:Dominic A. Azzopardi
Position:J.D. Candidate, The University of Iowa College of Law, 2019; B.S. in Microbiology, The University of Michigan, 2016
Pages:829-854
SUMMARY

Trademarks have been an integral part of our economic system for generations. As our needs and abilities have advanced, so too have trademark regulations advanced to meet these new challenges. This Note examines the requirements for federal trademark protection under the Lanham Act. Protection normally only extends to marks that are determined to be inherently distinct; however, in certain... (see full summary)

 
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Disarray Among the Circuits: When Are
Consumer Surveys Persuasive?
Dominic A. Azzopardi*
ABSTRACT: Trademarks have been an integral part of our economic system
for generations. As our needs and abilities have advanced, so too have
trademark regulations advanced to meet these new challenges. This Note
examines the requirements for federal trademark protection under the
Lanham Act. Protection normally only extends to marks that are determined
to be inherently distinct; however, in certain circumstances, marks that are
not inherently distinct may be eligible for protection, if it can be sufficiently
proven that a descriptive mark acquired distinctiveness. The best tool for
showing that descriptive marks have become distinct are consumer surveys,
which allow parties to look directly into the minds of consumers. However,
there is no established standard for what level of positive response is needed
on a consumer survey for the survey to be persuasive. Without an identifiable
standard, the federal circuits have been thrown into disarray, each developing
its own standard to address this void. This Note proposes that a “soft
threshold” should be set by the Supreme Court for these surveys, creating a
guidepost to help determine whether the mark has made a sufficient showing
of distinctiveness.
I.INTRODUCTION ............................................................................. 830
II.DISTINCTIVENESS: THE BAR TO ENTRY ......................................... 831
A.DETERMINING DISTINCTIVENESS .............................................. 832
1.The Abercrombie Framework .......................................... 833
2.Inherently Distinct vs. Non-Inherently Distinct .......... 836
B.ACQUIRING DISTINCTIVENESS ................................................... 837
1.Methods and Variations ................................................ 838
2.The Importance of Consumer Surveys ........................ 839
III. FAILURE TO CREATE A UNIFORM STANDARD................................. 840
A.FRACTURED CIRCUITS .............................................................. 841
B.THE HARMFUL IMPACT OF THE SPLIT ...................................... 845
*
J.D. Candidate, The University of Iowa College of Law, 2019; B.S. in Microbiology, The
University of Michigan, 2016.
830 IOWA LAW REVIEW [Vol. 104:829
IV.CREATING A COMMON DOCTRINE TO UNITE THE CIRCUITS ......... 848
A.THE IDEAL SOLUTION: A JUDICIALLY CREATED SOFT
THRESHOLD ............................................................................ 848
B.SECONDARY SOLUTIONS ........................................................... 851
V.CONCLUSION ................................................................................ 854
I. INTRODUCTION
As our nation’s economy and culture push forward through the 21st
century, so too do the legal needs and questions that surround those areas
that progress with them. The law of intellectual property encompasses our
attempts to address some of the most vital questions within our economic
system. The law, however, does not always develop as quickly or as efficiently
as needed, and light must be thrown on specific issues, if they are to be
rectified.
Trademark law revolves around granting a party the right to exclude
others from using a specific mark to distinguish the origin of goods or
services.1 To that end, trademark law serves two major purposes: (1) to protect
consumers from counterfeit goods and (2) “to protect the goodwill
. . . merchants have developed in their []marks.”2 Trademark protection
began under the umbrella of state law, allowing each jurisdiction to pass its
own requirements and regulations in order to run its system of protection as
it saw fit.3 However, as the intricacies of state law frameworks became
increasingly complex and differentiated, Congress recognized a need to unite
trademark law under a federal framework, bringing it in line with other forms
of intellectual property, such as patents and copyrights.4 However, because
Congress’s initial attempts at federal trademark statutes underwent
continuous revision,5 Congress eventually opted for a total overhaul of federal
protection. To this end, Congress passed the Lanham Act in 1946,6 and has
since amended it several times.7 As now defined by the Lanham Act, a
“trademark” is “any word, name, symbol, or device, or any combination
thereof” that is used “to identify and distinguish [a person’s] goods, including
a unique product, from those manufactured or sold by others and to indicate
the source of the goods.”8
1. DONALD S. CHISUM ET AL., UNDERSTANDING INTELLECTUAL PROPERTY LAW 495 (3d ed. 2015).
2. Id.
3. See id. at 495–99.
4. Id. at 498.
5. Id. at 499.
6. Lanham Act, 15 U.S.C. §§ 1051–141 (2012); CHISUM ET AL., supra note 1, at 499.
7. CHISUM ET AL., supra note 1, at 500.
8. 15 U.S.C. § 1127.

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