Trademark Failure to Function

• Author: Alexandra J. Roberts
• Position: Associate Professor, University of New Hampshire School of Law; Fellow, Yale Law School Information Society Project
• Pages: 1977-2054

1977

Trademark Failure to Function

Alexandra J. Roberts*

ABSTRACT: Almost anything can function as a trademark. But in order to

acquire federal protection, matter must not only be used in commerce; it must

be used as a mark—featured in a way that will draw consumers’ attention to

it and lead them to view it as a source indicator. In assessing trademark

protectability, the USPTO and federal courts consistently emphasize

distinctiveness over use as a mark: they focus on what the mark is, rather

than what the mark does. Distinctiveness has received the lion’s share of

attention, generating rules and tests applied in thousands of cases and

discussed in hundreds of articles, books, and practice guides. At the same

time, courts have struggled to articulate and apply a clear standard for use

as a mark separate from distinctiveness. Both are necessary for trademark

protection because each plays a role in determining whether consumers will

perceive matter as a mark. Yet, somehow use as a mark became the red-headed

stepchild of trademark law, and distinctiveness got all the glory.

While the Lanham Act requires use as a mark for protection, and empirical

studies reflect its importance, courts and the USPTO have been reluctant to

assign it greater weight in assessing trademark protectability, validity, and

priority. This Article explores how factfinders have considered (or failed to

consider) use as a mark in both ex parte and adversarial contexts and argues

that merging distinctiveness and use as a mark analyses would lead to more

accurate outcomes. Ultimately, the relationship between use as a mark and

distinctiveness is interdependent and inverse: the less distinctive a mark is,

the more indicators of trademark use are needed to ensure consumers will

perceive it as a mark, and vice-versa. Matter that functions primarily as

something else—decoration, domain name, serial number, hashtag—also

*

Associate Professor, University of New Hampshire School of Law; Fellow, Yale Law

School Information Society Project. For helpful discussions and suggestions on earlier drafts, the

author thanks Suneal Bedi, Barton Beebe, Graeme Dinwood ie, Roger Ford , Susy Frankel , Jeanne

Fromer, Peter Karol, Ashlyn Lembree, Yvette Liebesman, Jake Linford, Mark McKenna,

Nicholson Price, Lisa Ramsey, Jessica Silbey, Ashlie Stewart Smith, Paul Tremblay, and Rebecca

Tushnet, as well as participants in the 2018 Chicago IP Colloquium and Junior Scholars in IP at

Michigan State and the 2017 IP Scholars’ Roundtable at UNH Law, Junior IP Scholars Association

meeting, Works in Progress in IP conference (“WIPIP”), BU Journal of Science, Law, &

Technology Symposium, Vanderbilt IP Scholars Roundtable, and IP Scholars Conference

(“IPSC”). Thanks to Amanda Abelmann, Ryan Masters, and Ashlie Stewart Smith for able

research assistance and the team at Iowa Law Review for stellar editing.

1978 IOWA LAW REVIEW [Vol. 104:1977

requires more traditional trademark use to ensure it is perceived as a

trademark. Integrating use as a mark with distinctiveness assessments would

reinvigorate both doctrines and help ensure that statutory and common law

requirements are met and chilling effects avoided by protecting only matter

that consumers actually perceive as a source indicator. When it neglects

consumer perception, ostensibly its core concern, trademark law itself fails to

function.

I. INTRODUCTION ........................................................................... 1978

II. USE AS A MARK ............................................................................ 1989

A. WHAT USE AS A MARK LOOKS LIKE ........................................ 1989

B. WHEN USE AS A MARK MATTERS ........................................... 1997

C. FAILURE TO FUNCTION .......................................................... 2002

D. BAD OUTCOMES .................................................................... 2010

III. STICKY STORIES & EMPIRICAL DATA ........................................... 2016

A. ABERCROMBIE: TRADEMARK LAW’S STICKY STORY ................ 2017

B. EMPIRICAL DATA .................................................................. 2020

IV. AT THE INTERSECTION OF USE & DISTINCTIVENESS ................... 2024

A. USE AS A MARK WITHOUT DISTINCTIVENESS ........................... 2025

B. DISTINCTIVENESS WITHOUT USE AS A MARK ........................... 2028

C. INTEGRATING USE & DISTINCTIVENESS .................................. 2033

V. A USE-BASED APPROACH TO SOURCE DISTINCTIVENESS ............. 2039

VI. CONCLUSION .............................................................................. 2044

APPENDIX A ................................................................................ 2045

APPENDIX B ................................................................................. 2054

I. INTRODUCTION

In 2006, a company called ChaCha Search launched a new smartphone

app that provided search engine access via text message. Users were invited to

text queries to the number “242242,” the numeric equivalent of typing

“ChaCha” on their phones’ keyboards, and await results. After the service went

live, ChaCha applied to register “242242” as a service mark. The U.S. Patent

& Trademark Office (“USPTO”) reviewed the company’s specimen of use—a

2019] TRADEMARK FAILURE TO FUNCTION 1979

screenshot from the Beta version of the app (shown below)—and granted

registration.

1

Less than two years later, ChaCha found itself embroiled in a dispute with

competitor Grape Technology (Grape). Grape sought to cancel ChaCha’s

registration on the basis that “242242” lacked distinctiveness.

2

Distinctiveness is the primary protectability hurdle for most trademarks,

so it was a logical basis for Grape to select in challenging ChaCha’s

registration. The USPTO and courts assess the inherent distinctiveness of a

text mark by considering the mark in relation to the goods or services with

1. 242242, Registration No. 3,504,586 (image above is a partial screenshot of the

specimen). Red arrows have been added to specimens throughout this Article to direct readers’

attention to the matter being discussed.

2. ChaCha Search Inc. v. Grape Tech. Grp. Inc., 105 U.S.P.Q.2d (BNA) 1298, 2012 WL

6929402, at *2 (T.T.A.B. 2012). Grape argued that 242242 was merely descriptive and possessed

neither inherent nor acquired distinctiveness. Id. “Distinctiveness” refers to a trademark’s ability

to indicate source based on its innate characteristics (inherent distinctiveness) or consumers’

familiarity with it as a result of exposure over time (acquired distinctiveness). See U.S.

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§ 1209.01(b) (Oct. 2018) [hereinafter TMEP], https://tmep.uspto.gov/RDMS/TMEP/current

#/current/d1e2.html (describing the difference between distincti ve and merely descriptive

marks); see also id. § 1212 (defining acquired distinctiveness or secondary meaning).