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Friday, 27 May 2011

Does a Trade Mark Have To Be Factually Truthful?

Several of my fellow Kats managed to do a better job than I in juggling the recent INTA meeting in San Francisco with other tasks, as evidenced by my recent silence. Just for the record though--I did set a new speed record for the fastest dash by a post 60-year old as he literally ran from Gate L1 to Gate 17K at O'Hare airport in Chicago to catch a trans-Atlantic flight. With those heroics now behind me, it is time to get back to IPKat and the the task at hand.

In keeping with INTA and its focus on trade marks, permit me to pose the following question: Does a trade mark have to be truthful? In one sense, the answer is most certainly "yes". The source theory of trade marks is predicated on the notion that no one is permitted to use your mark if such usage might deceive the public with respect to the source of the goods or services. In this case, therefore, a trade mark has to be truthful with respect to source.

But what about a mark that lies somewhere in that murky area between being descriptive and suggestive? Here we can find ourself in a situation in which the mark, even if registered, still has an element of descriptiveness with respect to the goods or services which it identifies. What happens, as a matter of trade mark law, if that descriptive element is factually inaccurate with respect to the underlying goods or services? In particular, can the mark, being descriptively innacurate, prevent a third party from using the same term in an accurate manner in connection with the same goods or services?

I thought of this question in connection with that most curious American phenomenon, the big business of intercollegiate sports. Alongside the educational function, most American colleges and universities maintain large athletic programmes, most notably in (American-style) football and basketball (think "March Madness") that pay seven-figure salaries for the head coach and fill stadia of 100,000 or more seats. For efficiency purposes, most colleges and universities belong to one of a number of sports conferences. The members of each such conference are usually in geographic proximity with each other, which cuts down on travel and fosters natural rivalries between the flagship universities of contiguous states (think Ohio State and University of Michigan).

Not surprisingly, each conference has a name -- and in this lies the potential for factual inaccuracy. Two of the most well-known conferences are the Big Ten Conference and the the Big 12 Conference. The problem is that the Big 10 Conference now contains 12 memembers (with the recent addition of the University of Nebraska) and the Big 12 Conference now contains only 10 members (with the departure of the University of Colorado and the University of Nebraska). Both of these conference names are registered as trade marks in one form or another.

And so--the question. Should both the Big Ten and the Big 12 be allowed to maintain their respective trade mark registrations in light of the fact that the reference to the respective number of conference members is in each case inaccurate? On the one hand, since there is no likelihood of confusion with respect to the ultimate organizational source of each of these sports conferences, it is possible to argue that the numerical inaccuracy is irrelevant as a matter of trade mark law. Indeed, if the respective names would simply be a matter of indicating how many members belong to each of these althetic conferences, it is arguable that neither should enjoy trade mark protection. The fact that each of these names is registered as a trade mark indicates that each of these names has achieved goodwill as an indicator of source.

On the other hand, consider a college athletic conference that has either ten or 12 members. Should such a conference be prevented from calling itself the "Big Ten" or the "Big 12", if such a designation is factually accurate, simply because in so doing, it would be liable for infringement? Stated otherwise, in a potential conflict between source identification and factual accuracy, isn't there something wrong in favouring the former over the latter?

For the record, I am a die-hard Ohio State supporter.  Ohio State is a member of the Big Ten Conference, which has 12 members, not ten members. I am not confused about the fact that the name Big Ten identifies a specific athletic conference that once had ten members, but now has 12 members (and may in the future have even more). As a trade mark practitioner, however, I wonder: should the Big Ten Conference (or Big 12 Conference) be forced to change its name?

More on the names of intercollegiate athletic conferences here.


Jeremy said...

Truth in trade marks for sporting events?

How truthful is World Series ...?

Robert Hurst said...

Neil, The less truthful the trade mark, the better. If it's too "truthful", it might be held to be descriptive. The important requirement for a good trade mark is distinctiveness. The most "untruthful" trade mark is McDonalds. Which Scottish clan invented the burger?

Anonymous said...

Arrrgh you beat me to it Jeremy...


1. any team with an animal in their name;
2. World Wrestling Entertainment (you can choose which of the last two words is untruthful);
3. the French food chain QUICK; and
4. most of the faux-French/Italian terms used by the large coffee shops to refer to the size of their drinks.

...Perhaps even the Eurovision song contest, which includes Israel and the majority of the former soviet states.

David Thomas said...

Alas, being a Londoner doing the examinations, I was unable to attend the conference. I have two points to make, in a somewhat normative comment, concluding that ‘truthfulness’ should not be a criterion of trademark validity.

The first may be considered somewhat trivial, but I think that if a debate is to be had about this issue, precise terminology will lead to the correct issues being identified. You refer to marks which are factually truthful, but I would point out that unless a mark in and of itself constitutes a statement, in reality, what is really being referred to is whether the use of the mark is truthful or untruthful. "The Big Ten" contains no inherent statement of fact. Rather, what you may be objecting to is the specific use of the mark.

Now, this first point is the foundation for my second, my second being that insisting on a criterion of truthful use, as distinct from the absence of confusion, is potentially very problematic. There are two problems which arise from making truthfulness a criterion of trademark validity.

It is problematic, firstly, because in order to determine the truth of the usage, one will need to determine the implicit assertion raised, and to contrast this with the truth. But determining the implicit assertion is often very difficult. Consider the trade mark which BP has over the colour green. If someone sought to impugn this as untruthful, BP could, quite persuasively, argue that 'green' refers not to current production processes, but rather, to an aspiration. Similarly, to use your example, "The Big Ten" could equally constitute a statement about the founding members, or history, as opposed to present constitution.

The second problem is is more practical - it's a problem of cost. Brands are evanescent, and in a perpetual state of creation and development. The same can be said about companies and endeavours. What may be true one day may be false the next. Requiring truthfulness will impose onerous costs in terms of rebranding. And it will impose costs by way of a lack of certainty. As a result of the first problem, brand-owners may find their valuable trademarks being impugned willy-nilly. And think of the cost to consumers. Trademarks are all about protecting the accurate delivery of information to consumers – but requiring truthfulness in the absence of confusion actually stands against this. Consider the Big 10 and the Big 12 again. If they changed their names depending on how many members they had, no one would be able to tell which was which!

It’s vital to remember that brands inherent in trademarks represent a concept of ideas which can be abstracted from the literal meaning of the mark. That’s why we can have untruthful marks which don’t confuse consumers.

The culmination of my observations is simple. If we are to regulate use, we shouldn't try to do it by regulating property. To create a trade mark law which targets use is like banning hammers, when the evil complained of is that villains are bashing peoples’ skulls in. Such a law would be excessively blunt. Rather, I think that if people are to see a virtue in truthful use of trademarks, then it should be done simply by use of the misleading advertising regulations which do exist – it’s confusion, and the propensity to mislead – which should be the focus of regulation, not truthfulness.

Anonymous said...

Robert Hurst: well said.

Anonymous @ 5:28pm: you chose bad examples, I disagree with all four.

Eurovision is a song contest between members of European Broadcasting Union (EBU). Not the EU, or any other notion of "Europe".

Anonymous said...

Who cares about (american) football anyway when you have seen Messi playing ? By the way I especially like his masterful performance at the worldcup quarterfinals...

Robert Hurst said...

Is it "truthful" that countries such as Albania and Hungary have North Atlantic coastlines? If so, why do they call themselves members of NATO? Because the term "NATO" has acquired a distinctiveness associated with its purpose.Truthfulness has no relevance to a trade mark.

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