The difficulty in fixing a valid and reliable test for determining what is a well-known mark derives from its special psychological underpinnings. We move beyond likelihood of confusion to a situation where the observer is deemed to make associations or connections between ostensibly disparate goods and services. How do we know whether such an association has been made in the observer’s minds? We do so by means of various versions of a multi-factor test, through which proxy indicia are brought to bear (Kat readers wishing to delve further into these tests as invited to consult Frederick Mostert's Famous and Well-Known Marks: an international analysis (here), or Dan Bereskin's International Trademark Dilution (here) [by curious coincidence, these two authors on famous marks are themselves members of the IP Fall of Fame].
This is not to deny that trade mark law has always been challenged by the psychological underpinnings of the legal right. As Lord MacNaughton famously observed about goodwill more than a century ago:
“[Goodwill is] the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start”. Goodwill can be “attached” to various features of a business, such as the corporate name, trading name, get-up, shape of goods, distinctive advertising images etc.”The use of proxy indicia for determining the presence of psychological phenomena is a dirty little secret of trade mark law. in that sense, all trade mark professionals are amateur psychologists of a most idiosyncratic kind, When, as with a well-known mark, determining association or connection, rather than confusion, between marks and goods/services, becomes the linchpin of the right, it can be argued this use of proxy indicia approaches the breaking point of credibility. Like it or not, that is the current state, but not necessarily the fate, of our profession, especially as it refers to well-known marks.
“Every McDonald’s, for instance, looks the same—the company deliberately tries to standardize stores’ architecture and what employees say to customers, so everything is a consistent cue to trigger eating routines. The foods at some chains are specifically engineered to deliver immediate rewards—the fries, for instance, are designed to begin disintegrating the moment they hit your tongue, in order to deliver a hit of salt and grease as fast as possible, causing your pleasure centers to light up and your brain in the pattern. All the better for tightening the habit loop.”This Kat passes no judgment on fast food restaurants and their gastronomic fare. What is intriguing about this passage is that it describes the kind of strong psychological/neurological association that is the ideal going back to Lord McNaughton and that is the focus of the modern branding industry, where emotively connecting between brand and consumer is the goal. All of this suggests that, as research continues in this area, we may well come to a time when we will be able to measure, in the appropriate part of the human brain, the strength of the habit loop, where the trade mark is the cue with Duhigg’s habit loop. If (when?) this occurs, we may (will?) then be able to measure the strength of the trade mark as a cue, as it impacts on consumer behaviour rising to the level of a habit, and assign a value for this. Would not such data point offer a more objective way to determine whether the trade mark as a cue is well-known, rendering unnecessary the current proxy indicia for a well-known mark? Trade mark practitioners, take note.