Thick marks, thin marks.

Author:Grynberg, Michael


Not all trademarks are created equal. Strong marks like APPLE computer receive more protection than lesser known, weaker marks like JOE'S diner. The difference is reflected by the amount of attention judges pay to surrounding context in resolving infringement claims. When a mark receives "thick" protection, facts that might make confusion less likely (e.g., clarifying marketplace realities or perceptible differences between the parties' marks) matter less than when protection is "thin."

This conception of thick or thin protection is part of routine trademark disputes, but it has more interesting implications for trademark law. Trademarks do more than identify a product's source. They embody connotative and abstract meanings over which trademark owners seek control. Traditional trademark doctrine is often ill-suited to resolve the resulting litigation. One way courts respond is by calibrating thickness of protection. Judges receptive to the expansion of trademark rights may grant thick protection; skeptical judges, thin. This shortcut frustrates the development of precedent. Treating a mark as thin, for example, enables courts to resist broad trademark claims without disturbing their doctrinal underpinnings. This softens the impact of trademark's growing scope in individual cases, but without providing comfort to future defendants.

Unfortunately, judicial fluctuation between thick and thin protection is inevitable and intertwined with the long, unresolved debate about the extent to which trademarks should be treated as a form of property. Drawing on the literature describing modularity and property rights, this Article argues that thick trademark protection is simultaneously appealing to judges yet impossible over the long run. Thick protection offers the ability to hide complex interactions between trademark meanings behind a simpler property signal, leaving it to the trademark owner to manage them. This approach may be understood as an information-economizing tool that frees a judge from the task of determining whether an unauthorized use of a mark's extended meaning adversely affects its core, source-identifying function. But many such uses implicate the interests of third parties who cannot rely on the economic decisions of the mark owner for vindication. Because trademark doctrine also recognizes the importance of these concerns, consistent treatment of trademarks as thick is impossible notwithstanding the lure of the property shortcut. Judicial uncertainty and unclear doctrine is the result.

Courts should think more clearly and explicitly about when thick protection is appropriate. Many extended trademark meanings are built out of a mark's source-identification function. This suggests that the case for thick protection is strongest when a mark's source identification capability is threatened, but weaker with respect to other meanings. Some doctrinal developments in trademark law reflect this view; others do not. But regardless of whether one agrees with this approach to trademark thickness, judicial choices on the subject should be acknowledged and made transparent.

CONTENTS INTRODUCTION I. THE PROBLEM OF TRADEMARK THICKNESS A. What is a Thick Mark? 1. Thick and Thin Marks 2. Thick Marks, Thin Marks, Strong Marks, Weak Marks B. The Problem of Trademark Scope 1. Trademark Information 2. Interconnected Meaning a. Goodwill b. Other Extended Meanings C. Thick Marks, Thin Marks 1. Thin Marks 2. Thickness Calibration as Doctrinal Avoidance a. Red Soles b. Red Wax c. Of Chickens and Eggs II. CALIBRATING TRADEMARK SCOPE A. The Appeal of Thick Marks B. The Impossibility of Thick Marks 1. Third Party Interests and Vacillating Precedent 2. Very Thin Marks 3. The Limited Utility of Property Stories III. ONE APPROACH TO CALIBRATION A. Managing Externalities B. Back to the Future 1. Past 2. Present a. Domain Names b. Dilution c. Intermediary Liability CONCLUSION INTRODUCTION

Trademarks embody a range of information. Some of it is simple--what is the physical source of this product? Some is more complex--how do I feel about COCA-COLA? Many open questions in modern trademark law concern which parts of the range belong under the trademark holder's control. One way courts answer the question is to decide how much of a mark must be used to trigger liability.

Courts can do this because trademarks receive protection beyond equivalents (counterfeits). The scope of the equivalence needed for liability varies from context to context. In a traditional infringement case, for example, the proximity of parties' products matters. A cheese grater branded CRAFT is more likely to infringe the KRAFT foods mark than a CRAFT computer. (1)

As Part I explains, we might refer to the difference between these two examples as being one in the "thickness" of protection given the mark. (2) The KRAFT mark has more infringing analogs in food-related markets than elsewhere. This result is unsurprising and easily explained. Trademark law is concerned with the question of whether a consumer will perceive the defendant's product as coming from the plaintiff. Its doctrine makes the empirical assumption that confusion between marks is more likely in proximate markets than remote ones. Likewise, it assumes that "strong" marks--marks that courts treat as inherently distinctive and/or marks that have attained a high level of recognition among the relevant consuming public--are more likely to be infringed than weak ones. Thickness of protection, therefore, may be a function both of a mark's characteristics or reflected by surrounding context. (3)

In addition to being part of traditional confusion analysis, judicial calibration of trademark thickness can be a tool for managing conflicting interests. Suppose the owner of a wine store claims that its layout deserves trademark protection. Litigation against a store that uses a similar design might raise proximity issues similar to the KRAFT example (e.g., is the defendant a wine seller or a grocery store that sells wine?). The parties could also be expected to litigate whether the layout is distinctive and capable of functioning as a trademark. Even if it were, the defendant might argue that the plaintiff is claiming functional matter that should be free for other competitors to use. (4)

Resolving these issues might counsel withholding trademark protection, but the Lanham Act is generous with respect to eligible trademark subject matter. (5) Alternatively, a court might extend protection to the mark, while treating it as thin. Maybe the total package of the store's design features conveys a source-identifying message, but only as a whole. Copying some, but not all of, the components will therefore not cause consumer confusion. A court might likewise resolve the functionality issue by allowing copying up to, but just short of, the whole. (6)

Calibrating trademark thickness has more interesting uses. It is a vehicle by which courts resolve nontraditional and controversial trademark claims pertaining to matters other than source confusion. Trademarks also embody connotative and abstract meanings, and trademark owners naturally seek to control as much of the range as possible. The problem is that the doctrines developed to adjudicate disputes concerning source-identifying meaning are often ill-suited to disposing of litigation concerning expanded meanings. (7) The test developed to determine whether consumers are likely to be confused about a trademark's source, for example, is not calibrated for the issue of whether consumers mistakenly perceive an affiliation between two products. The latter claim creates less possibility of consumer harm than the former, but is often easier to establish. (8) Likewise, the case for protecting expanded meaning may have a tenuous connection with traditional trademark rationales.

Judges receptive to expanding trademark rights may resolve the tension by simply granting thick protection that elides the distinction between the categories of meanings potentially embodied by a mark. And judges skeptical of expansive trademark claims may accord reciprocally thin protection. While disposing of the case at hand, the move frustrates the development of precedent. Treating a mark as thin enables a court to resist a broad trademark claim without disturbing its doctrinal underpinnings. This method softens the impact of trademark's growing scope, but in a way that limits the benefit to future defendants. (9)

Part II suggests that judicial vacillation between thick and thin protection may be inevitable, for thick trademark protection is simultaneously appealing to judges yet impossible over the long run. Thick protection hides complex interactions of various trademark meanings behind a simpler property signal, leaving it to the trademark owner to manage them by licensing the mark where appropriate. (10) This approach may be understood as an information-economizing tool that frees judges from sorting out whether unauthorized uses of a mark actually threaten core trademark functions of source identification and consumer protection. But the shortcut carries costs. The scope that a mark needs in the realm of source identification is not necessarily appropriate for claims concerning, say, a false perception of affiliation. Thick protection buys clarity at the expense of ignoring this nuance. (11) Furthermore, many unauthorized trademark uses implicate the interests of third parties who cannot rely on the economic decisions of the mark owner for vindication. (12) Trademark doctrine recognizes these interests, making consistent treatment of trademarks as thick effectively impossible. But the appeal of the property shortcut is not easily ignored. Judicial uncertainty between thick and thin protection is the result and manifests itself in unclear doctrine.

Part III argues that courts should think more clearly and explicitly about when thick protection is appropriate and about what...

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