The Name Game: Merging the Business and Law of Trademarks

• Published date: 01 December 2021
• DOI: http://doi.org/10.1111/jlse.12111
• Author: Daniel R. Cahoy,Tonia Hap Murphy
• Date: 01 December 2021

Journal of Legal Studies Education

Volume 38, Issue 1, 37–73, Winter 2021

The Name Game: Merging the

Business and Law of Trademarks

Daniel R. Cahoy∗and Tonia Hap Murphy∗∗

I. INTRODUCTION

A company creates an innovative product or service. It has unique attributes

that consumers will surely appreciate, if only they will give it a chance. Mak-

ing such sales involves a connection that can prove elusive without the right

hook to attract attention and communicate something meaningful. A great

name is often the attribute that at least begins this conversation. In the grand

scheme of product and service deployment, choosing a good name for a

product, service, or entire f‌irm is one of the most important decisions man-

agers make.

However, the process of choosing a name is not as simple or as in-

tuitive as one might initially believe, particularly for those just learning

about business. Typically, students have a sense of what will sell an item

and the general notion of “branding.” Students may further develop their

knowledge of branding in basic marketing classes. But such coursework can

be limited in terms of explaining the legal structure of product naming.

Specif‌ic instruction on obtaining proprietary rights in marks, enforcing

those rights, and avoiding infringement of others’ rights is necessary to

provide the full strategic picture. To name a product or service effectively,

students absolutely need to understand trademark law.

Unfortunately, when we teach complex topics like trademarks in a

business law or legal environment class, the delivery is often too abstract.

Textbooks tend to focus on black-letter basics of trademark law, ignoring

∗Professor of Business Law and Dean’s Faculty Fellow, Smeal College of Business, Pennsylvania

State University.

∗∗Teaching Professor,Mendoza College of Business, University of Notre Dame.

We thank Eileen Murphy for help in designing the brand name mapping graphic. Dan Cahoy

presented some of this article’s teaching exercises at the 2019 Master Teacher Competition at

the ALSB Annual Meeting in Montreal, Canada.

© 2021 The Authors Journal of Legal Studies Education © 2021 Academy of Legal Studies in

Business

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38 Vol. 38 / The Journal of Legal Studies Education

strategic considerations. Experienced managers know that the strongest

trademarks (legally speaking) do not necessarily sell products. These issues

are often not addressed in the classroom.

This article addresses the gap between the legal, business, and social

world of trademarks by describing classroom exercises intended to bridge

the essential concepts. Depending on the time available and the course’s

level of emphasis on trademark issues, professors may choose to implement

some or all of these exercises in a legal environment, business law, intel-

lectual property, marketing law, or entrepreneurship course. The exercises

are designed to quickly communicate complex intellectual property and

branding concepts, allowing students to translate them into real-world

decision-making. Signif‌icantly, these exercises help students engage their

emotional, creative, and strategic problem-solving skills. At the conclusion

of these exercises, students will be able to

1. Def‌ine the trademark right, and identify how it provides a competitive

advantage by ensuring fair play and protecting return on investment;

2. Explain the process for obtaining a trademark, and identify the limits and

advantages of a government registry system;

3. Distinguish legally strong trademarks from weak trademarks; and

4. Apply both marketing and legal considerations to identify the optimal

trademark for a new product or service.

Part II of the article explains the pedagogical design underlying the

proposed exercises. Part III provides introductory material for classroom

coverage.1Particularly, it contrasts the concepts of trademarks and brands,

and then discusses legal requirements for obtaining trademark protection.

Part III concludes with instructions for conducting a classroom debate on

the appropriate legal treatment and ethics of vulgar or scandalous marks.

Part IV focuses on strategic decisions for businesses choosing brand names.

It examines legal standards for strong trademarks and marketing theories

on effective brand names. It then provides detailed instructions for two

1These materials are suff‌icient to equip faculty who are not trademark experts to cover these

important issues. The current president of the Association to Advance Collegiate Schools of

Business (AACSB) has urged development of materials that help faculty stay current and learn

aboutnewtopicareas.See Caryn Beck-Dudley, Keeping Faculty Current in Emerging Business Topics,

AACSB Blog (Sept. 13, 2018), https://www.aacsb.edu/blog/2018/september/keeping-faculty-

current-in-emerging- business-topics.

2021 / The Name Game: Merging the Business and Law of Trademarks 39

active learning exercises: (1) a brand name mapping exercise, in which

students evaluate legal and marketing strength of popular brand names; and

(2) the “name game,” which requires student teams to balance legal and

marketing considerations to choose desirable brand names for an actual

product. Part V suggests f‌inal integrating questions for reinforcing students’

understanding of the material.

II. PEDAGOGICAL APPROACH

A brief lecture2on trademark and marketing concepts equips students

to undertake active learning exercises simulating tasks they may face in

the business world. Active learning “involves students in doing things and

thinking about the things they are doing.”3Active learning fosters higher-

level thinking, including “analysis, synthesis, and evaluation.”4Debates and

simulations are effective active learning methods.5

2The pedagogical literature cautions against overuse of lecture. See, e.g., Anthony Weston,

Teaching as the Art of Staging: A Scenario-Based College Pedagogy in Action 26–33

(2019) (examining studies on students’ retention of information after lectures). But a skillfully

handled lecture can be effective, and varying delivery methods is the optimal approach. See

Marianne M. Jennings, In Defense of the Sage on the Stage: Escaping the “Sorcery” of Learning Styles

and Helping Students Learn How to Learn,29J. Legal Stud. Educ. 191, 225–26 (2012); Michael

F. Mascolo, Beyond Student-Centered and Teacher-Centered Pedagogy: Teaching and Learning as Guided

Participation,1Pedagogy & Hum. Sci. 3, 14 (2009) (suggesting a particular course might in-

clude “lecture, Socratic dialogue and a suite of active learning activities”); LeVon E. Wilson &

Stephanie R. Sipe, A Comparison of Active Learning and Traditional Pedagogical Styles in a Business

Law Classroom,31J. Legal Stud. Educ. 89, 105 (2014) (suggesting “employing different cur-

riculum delivery techniques depending on content and class rather than a single pedagogical

style”).

3L. Dee Fink, Creating Signif‌icant Learning Experiences: An Integrated Approach to

Designing College Courses 115 (2d ed. 2013) (quoting Charles C. Bonwell & James A.

Eison,Ass’n for the Study of Higher Educ., Active Learning: Creating Excitement in

the Classroom 2 (1991)). Active learning includes, for example, such activities as designing a

product, doing an experiment, or critiquing an argument. Id. at 116.

4Mystica M. Alexander, The Flipped Classroom: Engaging the Student in Active Learning,35J. Legal

Stud. Educ. 277, 279 (2018).

5Fink,supra note 3, at 123; West on,supra note 2, at 77 (“As students prepare their arguments

for debate and engage each other, … they naturally also learn the details, strengths, and weak-

nesses of each position.”); Justin R. Blount, An Experiential Contract Negotiation Exercise for Business

Law Students,36J. Legal Stud. Educ. 103, 104–05 (2019) (advocating active learning exercises

where students engage “in learning experiences that require them to apply theory and knowl-

edge learned through lectures to either real-world or simulated activities or exercises”).