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

• Author: Linford, Jake
• Position: II. Productive Use and Trademark Scope C. Exclusivity and Trademark Property through Conclusion, with footnotes, p. 733-767

3. Exclusivity and Trademark Property

   Adverse possession's exclusivity requirement at first also seems ill-fitted to describe trademark acquisition, as the trademark owner acquires no absolute right in any word or symbol. A closer look clarifies that the trademark owner occupies a particular language unit, a "trademark lexeme," and the rights of the trademark owner, like the rights of the adverse possessor, are circumscribed by her efforts to delineate and police the boundaries of her claim.

   In the adverse possession context, exclusive use means, generally, the type of exclusive possession that one expects from a record owner of land of that type. Traditionally, the adverse possessor is treated as a sole claimant, who through the open, productive occupation of the land may wrest it from its current, inattentive owner. The exclusivity requirement means that the adverse possessor cannot take title by taking advantage of her silence to ambush a record owner or joint occupant. And perhaps unsurprisingly, the adverse possessor generally may not secure the title while sharing the property with the record owner. (141)

   Driving the exclusivity requirement is an interest in making sure that the record owner and potential joint owners are clear about the scope of the adverse possessor's claim, (142) as well as allowing the adverse possessor to stand out from other potential claimants and users of the property, (143) Such exclusivity has a notice function, conveying information about the possessor's claim both to the title holder and the public. Therein lies the critical similarity between the exclusivity requirements in adverse possession and trademark acquisition: failing to exclusively occupy property makes it difficult, if not impossible, for the record owner or the public to detect the occupation.

   At first glance, this notion of exclusive possession is inconsistent with the homonymous nature of trademark protection. (144) Trademark law is premised in part on the notion that a given word or symbol can have multiple source-signifying meanings that a given word can serve as the foundation for more than one trademark. DELTA can thus designate one source for airline services and another source for kitchen and bathroom sink faucets. (145) Trademark rights in the word "Delta" are held by different companies who invest the word with homonymous meanings: two different things (goods or services from different sources) are designated by the same word. Just as there may be multiple meanings of the same word in the public lexicon, there may be multiple brands utilizing the same or similar words or symbols for disparate products and services. Thus, the owner of the STARBUCKS mark does not acquire an exclusive right to all uses of "star," "bucks," or even their compression into a single word, but an exclusive right use .STARBUCKS to identify coffee and those other goods and services consumers one can expect to find identified by the STARBUCKS brand. (146) Trademark rights can thus be thought of as a limited property right in a unit of language.

   The difficulty with this homonymous structure, from the mark owner's perspective, is that a mark owner who fails to exclusively occupy her trademark may find that third-party encroachment interferes with the ability of the mark to convey a singular source for goods and services to consumers, or the ability of the mark owner to protect the boundaries of the mark. Exclusivity is required of the trademark owner even for inherently distinctive marks because failure to engage in substantially exclusive use narrows the scope of the mark or entirely forestalls enforcement. (147) This dynamic is manifested in the split-market problem recognized by courts in the SUNKIST case. (148) Likewise, for a crowded word, it is difficult for the mark owner to signal information about the goods on which the mark is used, because use by others narrows the potential scope of the mark. As crowding occurs, either with the mark owner's permission or in the absence of the mark owner's best efforts, the mark cannot mean as broadly as it might have otherwise meant. In essence, by disclaiming conflicts with close neighbors, or failing to police existing conflicts, the mark owner disclaims conflicts with distant opponents or new entrants. The ultimate effect of failing to police the mark, prevent unauthorized third-party use, and maintain exclusivity is that the mark will lose its distinctiveness and no longer perform the notice function consumers relied on. (149) Mark owners who fail to police the boundaries of the mark may find that it stops conveying the same information to consumers, or at least that the mark will be treated as if it no longer conveys that information.

   Exclusivity in the trademark context, like exclusivity of possession of real property, need not be absolute. When tasked with deciding whether a descriptive mark has acquired sufficient distinctiveness to qualify for registration, the USPTO can accept "proof of substantially exclusive and continuous use" of the mark for five years as prima facie evidence of distinctiveness. (150) The "substantially exclusive" standard allows the USPTO to discount "inconsequential or infringing" use by others in determining whether the mark owner has secured rights in the mark. (151) In the registration context, the existence of some infringing activity does not necessarily invalidate a claim of exclusive and continuous use. The fact that other use occurs thus matters less than whether the trademark owner takes timely action against that other use.

   As this Part has argued, inherently distinctive marks are just like descriptive marks and property acquired through adverse possession in the way that notifying use establishes the scope of the property right. The importance of notifying use highlights the relative unimportance of hostility as part of the adverse possession regime. And exclusivity in trademark law, properly understood, is a right in the lexeme established by the mark owner through use. The next Part considers the role of the public in the creation and destruction of trademark rights.

   3. TRADEMARK EXPIRATION AND COLLECTIVE PRODUCTIVE USE

      Part II.C considered how requiring some effort from a claimant to exclusively secure the trademark or the adversely possessed property serves an important function: engaging in substantially exclusive use puts the world on notice of the claim. As detailed below, an examination of trademark case taw also shows how shifts in trademark meaning occur through collective, public use of the mark. This Part considers how the public collectively engages in productive use, both to create trademarks that are nevertheless capable of private occupation by mark owners, and to destroy rights in existing marks through ex post genericness. Here, public use produces results unlike the general irrelevance of public use in determining when a copyrighted work or patented invention falls into the public domain.

      As with other property rights, including other intellectual property rights, (152) trademark protection has limited range. Uses of a trademark such as nominative fair use, parody, and comparative advertising are "socially productive uses" that fall outside the reach of the trademark owner. (153) Some productive use also falls outside the grant of copyright protection. Copyright fair use is an affirmative defense to a claim of copyright infringement. (154) Fair use is a sufficiently transformative or productive use of a copyrighted work and may be made without paying the copyright owner and without asking permission. (155) These productive use defenses in trademark and copyright law are primarily seen as individual exceptions to the intellectual property owner's rights.

      To date, the Supreme Court has resisted the notion that productive use of a copyrighted work can shift the entitlement in the work to the public at large, rather than to an individual plaintiff. Most recently in Golan v. Holder, (156) the Court concluded that Congress did not violate either the Progress Clause, (157) or the First Amendment, (158) in restoring copyright protection to works created by foreigners that fell out of protection because the owners failed to observe previously required formalities. (159)

      Petitioners Lawrence Golan and silnilarly situated plaintiffs engaged in expressive use of some foreign works that had fallen out of protection, for which copyright protection would be restored by the Uruguay Round Agreement Act ("URAA"). (160) The petitioners argued that providing copyright protection to works that had fallen into the public domain was beyond Congress's authority under the Progress Clause. (161) The Supreme Court concluded instead that the public domain was not inviolable, and the restoration of protection to select foreign works was consistent with CongTess's practice of periodically extending copyright protection to previously unprotected categories of works. (162) The petitioners in Golan also argued that they had vested First Amendment rights because they had used the unrestored works, then in the public domain, to create their own expression. (163) The Court saw the First Amendment argument as simply an alternate ground to articulate an inviolable public domain, and rejected it. (164) In the Supreme Court's view, the shift of patented inventions and copyright works from private ownership into the public domain occurs uniformly and irrespective of potential personal or public engagement with or investment in those works. (165) Professor McCarthy has defined intellectual property rights as the "exception" to which the "[p]ublic domain is the rule." (166) Assuming McCarthy is correct, the Court in Golan granted Congress broad power to make exceptions to this rule, discounting any potential rights "vested" to the public in copyright expression or patented inventions in the public domain. (167) In other words, the public domain of...