Trademark owner as adverse possessor: productive use and property acquisition.

• Author: Linford, Jake
• Position: Introduction through II. Productive Use and Trademark Scope B. Claims of Right and the Hostility Misnomer, p. 703-733

There is an ongoing debate over whether or not a trademark is "property," and what the appropriate boundaries of such a property right might be. Some scholars assert that rules and justifications developed to handle rights in real property are generally a poor fit for intellectual property regimes and for trademark protection in particular. Others respond that a unified theory of property should be able to account for both real and intellectual property. Neither approach fully recognizes that property regimes are multifaceted. A close look at the critical features of particular regimes can pay unexpected dividends.

This Article reveals how the process of trademkrk acquisition resembles, in startling ways, acquiring title to real property through adverse possession. Both the trademark and adverse possession regimes base acquisition on the productive use of the property in question. This productive use must be sufficient to provide notice of the asserted property right to the public and competing claimants. A properly functioning productive use regime is valuable because such a regime is more likely to encourage an efficient initial allocation of property rights while also providing fairness-based limits on the scope of property rights. Recognizing the productive use structure in both regimes provides several significant insights. First, the productive use structure highlights the importance of the commercial strength inquiry as a use-based limitation on the scope of protection even for inherently distinctive marks. Second, the productive use structure also clarifies how and why rights in the trademark commons are more active and property-like than rights held in common over expired patents and copyrights. Third, comparing the regimes shows how adverse possession is, surprisingly, a more hard-edged or "crystalline" property regime than the relatively "muddy" trademark regime. Finally, this analysis inspires interventions for trademark and adverse possession law to bring them more in line with the productive use requirement, and to open space for public use and competition.

CONTENTS INTRODUCTION I. THE NOTICE FUNCTION OF PRODUCTIVE USE A. The Basics of Adverse Possession and Trademark Acquisition B. The Notice Function of Open and Notorious Possession C. The Notice Functions of Fencing, Color of Title, and Trademark Registration D. Continuous Use and Acquiring Distinctiveness II. PRODUCTIVE USE AND TRADEMARK SCOPE A. Productive Use and Inherently Distinctive Marks B. Claims of Right and the Hostility Misnomer C. Exclusivity and Trademark Property III. TRADEMARK EXPIRATION AND COLLECTIVE PRODUCTIVE USE IV. PRODUCTIVE USE AND TRADEMARK UNCERTAINTY A. Adverse Possession and Public Property B. Physical v. Intangible Property C. Warehousing and the Domain Name System D. Mud and Crystals in Property Acquisition Regimes V. INTERVENTIONS A. Descriptive Marks, Risk, and Reward B. Crystallizing Trademark Timelines C. Adverse Possession: Productive Use over Bad Faith CONCLUSION INTRODUCTION

In longstanding tradition, American courts have analogized trademark protection to property rights developed at common law. (1) The question of whether they should do so has recently preoccupied the legal academy, (2) part of a larger debate about whether it is proper to view intellectual property through a real property lens and whether comparing intellectual property regimes to real property regimes gets us anywhere. Mark Lemley has led the charge in arguing that intellectual property is sui generis, with unique characteristics that make it unnecessary to "turn to some broader area of legal theory to seek legitimacy." (3) Under this sui generis framework, it is useless to apply "inapposite economic analysis borrowed from the very different case of land" to intellectual property. (4) Scholars like John Duff, by contrast, argue that identifying a "unified theory of property one broad enough to account for the similarities and differences among species of property as diverse as Blackacre and patents promises to increase rather than to diminish our understanding of property and intellectual property." (5) Neither approach explicitly recognizes that real property regimes are multifaceted. Valuable results are more likely when we compare the "right" real property regime to the "right" intellectual property regime when the regimes compared share not only similar structures but similar policy justifications.

For example, one of the problems in analogizing trademark acquisition to rights in real property is that trademark acquisition, as it developed in the common law, is not a pure first-in-time regime. Instead, acquiring a trademark requires productive use of a given word, symbol, or other identifier as a trademark a source signifier. Such use is generally not necessary to acquire rights in real property, with at least one important exception: adverse possession is also a regime with a productive use requirement. (6) As this Article argues, the parallels between acquiring real property through adverse possession and acquiring rights to the exclusive use of trademarks are substantial and instructive: both doctrinal regimes manifest a purpose to provide notice to the public and competing claimants through productive use. This productive use is in turn notice providing, (7) meaning generating, (8) boundary setting, (9) abuse limiting, (10) and value creating. (11)

A productive use requirement is desirable in both regimes for three interlocking reasons. First, requiring productive use makes it more likely that the initial allotment of property rights is more efficient than other potential allocations. (12) Second, productive use provides a fairness-based limitation on the scope of property rights, making sure both that the initial possessor has done something to merit the property right and allowing for necessary reallocation when the productive use of a subsequent claimant outstrips the productive use of the initial claimant. (13) Third, productive use regimes are communicative and information forcing, delineating the boundaries of the property right at issue. Property seekers, competing claimants, and the public all receive notice from and provide notice to one another in regimes that require productive use. (14)

Part I of this Article discusses the main similarities between the trademark and adverse possession regimes. Part I.D explains how the acquisition of rights in descriptive marks most clearly resembles adverse possession. Part II.A explains how the rights in inherently distinctive marks are also dependent on productive use. Part II.B clears up the hostility misnomer that has crept into claim of right analysis in adverse possession doctrine, while Part II.C explains how the comparison to adverse possession's exclusivity requirement helps circumscribe the rights acquired by the trademark owner. Part III discusses the role played by productive public use in the creation and expiration of trademark rights. Part IV focuses on several critical differences between the regimes to highlight how adverse possession is, surprisingly, a more hard-edged or "crystalline" property regime in the sense first used by Carol Rose (15)--than the relatively "muddy" trademark regime. Recognizing the central importance of productive use highlights how both regimes have gone strayed from their productive use foundations. Part V recommends interventions to bring them back in line.

1. THE NOTICE FUNCTION OF PRODUCTIVE USE

   Adverse possession and the law protecting trademarks are property regimes that are more similar than one might at first imagine. At their core, trademark law and adverse possession are both communicative regimes, but that communication with the public, competitors, and other potential claimants is carried out via productive use of the property at issue. Bringing the property to productive use is valuable because the use itself provides an indication of the boundaries of the property, and simultaneously requires some evidence that the claimant has acted openly, as an owner should.

   For example, the adverse possessor who operates under color of title or puts a fence around the property provides information about how she values the property and indicates that she has gone to some length in signaling that interest to the record owner and other competitors for the property. Initial steps like fencing lead to a transfer of title, however, only when the adverse possessor also engages in continuous and exclusive use over time. (16) She must act like an owner, and persistently doing so leads the public to treat her like one. Adverse possession is also information forcing. (17) By entering the property and subjecting it to use, the adverse possessor puts the record owner on notice that there are competing claims to the property, and the record owner should step in to clarify the boundaries of the property, or risk losing her claim.

   Like adverse possession, trademark use is also communicative and information forcing. Consumers come to understand the scope of the mark owner's claim as the mark is used in commerce to designate goods and services from a consistent source. Competitors are also notified of the trademark owner's claim through her productive use. (18)

   This Part describes these similarities in more detail. Part I.A briefly describes the trademark and adverse possession regimes. Part I.B compares aspects of the trademark and adverse possession regimes that require actual, open, and notorious possession from the respective claimants and summarizes the traditional justifications for trademark ownership and adverse possession in light of the productive use requirement. Part I.C describes how trademark registration acts like color of title or fencing the property incentivizing activity that enhances notice to the public without stripping the productive use requirement. Part I.D analyzes in detail the similarities between the continuous...