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

829

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.