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

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. D ETERMINING D ISTINCTIVENESS .............................................. 832 1. The Abercrombie Framework .......................................... 833 2. Inherently Distinct vs. Non-Inherently Distinct .......... 836 B. A CQUIRING D ISTINCTIVENESS ................................................... 837 1. Methods and Variations ................................................ 838 2. The Importance of Consumer Surveys ........................ 839 III. FAILURE TO CREATE A UNIFORM STANDARD................................. 840 A. F RACTURED C IRCUITS .............................................................. 841 B. T HE H ARMFUL I MPACT OF THE S PLIT ...................................... 845 * J.D. Candidate, The University of Iowa College of Law, 2019; B.S. in Microbiology, The University of Michigan, 2016. 829 830 IOWA LAW REVIEW [Vol. 104:829 IV. CREATING A COMMON DOCTRINE TO UNITE THE CIRCUITS ......... 848 A. T HE I DEAL S OLUTION : A J UDICIALLY C REATED S OFT T HRESHOLD ............................................................................ 848 B. S ECONDARY S OLUTIONS ........................................................... 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). 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. 2019] WHEN ARE CONSUMER SURVEYS PERSUASIVE? 831 Unfortunately, there is some uncertainty regarding the requirements that must be met for a certain subcategory of marks, known as descriptive marks, to be protected under the Lanham Act. This Note argues that the uncertainty regarding the use of consumer surveys to establish the secondary meaning of descriptive marks should be eliminated. Part II examines the legal framework behind trademark protection under the Lanham Act and details the requirements and structure of this protection. 9 Part III examines the controversy and confusion surrounding the use of consumer surveys, particularly focusing on the inability of the federal circuits to adopt a uniform analysis of survey results. 10 Finally, Part IV argues in favor of the Supreme Court implementing a soft threshold, creating a guidepost to help courts determine if the descriptive mark has acquired secondary meaning, without removing the court’s ability to use its discretion in complicated or unique scenarios. Part IV also addresses less favorable secondary solutions, such as a discretion-removing judicially-created hard threshold and intervention by Congress through revision of the Lanham Act, as well as various counterarguments, such as whether this is a problem that is worthy of being addressed at all. 11 II. DISTINCTIVENESS: THE BAR TO ENTRY In order to register a mark for protection under the Lanham Act, the mark must be distinct. 12 Registering for federal protection is critical to the long-term outlook of the owner of the mark, as federal registration is “admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark.” 13 Furthermore, registration provides the registrant with specific remedies to infringement, including monetary damages, 14 injunctive 9 . See infra Part II. 10 . See infra Part III. 11 . See infra Part IV. 12. 15 U.S.C. § 1052. 13 . Id. § 1115(a). 14 . Id. § 1117. Section 1117 allows successful plaintiffs to recover from the defendant the defendant’s own profits, damages sustained by the plaintiff, as well as attorney’s fees. Id. § 1117(a). Furthermore, the statute provides for treble damages in situations where the defendant has willfully infringed as well as statutory damages for counterfeit marks, which can be quite high for smaller businesses: (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just. Id. § 1117(b)–(c). 832 IOWA LAW REVIEW [Vol. 104:829 relief, 15 and destruction of the infringing marks. 16 Though this is a strong grant of protection to the registrant, it is subject to a list of statutory defenses. 17 Because of these protections, alleged infringers often attempt to sue or counterclaim before a competing mark becomes incontestable under the Lanham Act. Once a mark becomes incontestable, it cannot be challenged on the basis of descriptiveness, 18 a classification that will be addressed in this Note. 19 However, before a descriptive mark becomes incontestable, the owner must prove the mark is distinct through a showing of secondary meaning, 20 a term that will be discussed at length in this Note. 21 Additionally, once a mark is federally registered, it can still be challenged for five years before it gains incontestable status. 22 Distinctiveness, therefore, is at the very heart of both trademark protection and infringement actions. This Part traces the requirements of distinctiveness, examining the current analysis employed to determine whether a mark is distinctive. Section II.A examines the initial determination of whether a mark is inherently distinctive, while Section II.B examines marks that are able to acquire distinctiveness after creation. A. D ETERMINING D ISTINCTIVENESS Even before codification of federal trademark statutes, common law jurisdictions were employing a test for distinctiveness to determine whether a mark was eligible for protection. 23 In short, the mark must distinctively identify the origin or ownership of the good to which it is attached. 24 In modern trademark law, distinctiveness is now evaluated using the categorical test laid out in Abercrombie & Fitch Co. v. Hunting World, Inc. 25 Section II.A.1 of this subsection details the four-category Abercrombie framework and 15 . Id. § 1116. 16 . Id. § 1118. 17 . Id. § 1115(b). These defenses include that incontestable marks were obtained fraudulently, the abandonment of the mark, the mark has been used to violate antitrust law, the mark is functional, and others. Id. 18. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 205 (1985) (“We conclude that the holder of a registered mark may rely on...