Will proof of a well-known mark ultimately be determined by a brain scan?

Is there a better way to determine whether a mark is well-known, if not today, then in the future? Will technology play a role? This Kat got to wondering about these questions as he made his way through Charles Duhigg’s best-seller, The Power of Habit: Why We Do What We Do in Life and Business. Well-known marks are the People magazine of the trade mark world (you know, the magazine that takes readers into the lives of that rarefied class of people known as celebrities). Most of us will never reach the status of a celebrity (except, perhaps, fellow Kat Jeremy); reading People magazine is second or third best, the closest that we will ever come. In a similar fashion, well-known marks constitute a minute fraction of all trademarks in use. Most marks will never reach the status of a well-known mark (how many Kat readers have ever successfully convinced a court or Registry that the mark at issue is well-known?), but that does not keep both scholars and practitioners from extensively debating what we mean by the term and what is the test for determining whether a given mark is well-known.

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.

Much has been written lately about how developments in robotics and artificial intelligence will change our lives. Against this backdrop and circling back to Duhigg, his book discusses the nature of habits, types of behaviour that we perform without engaging in complex reasoning (indeed, our brains would be ever so much larger if we did not rely on habits in our everyday behaviour). Duhigg presents the scheme by which habits are formed in terms of what he calls a “the habit loop,” resting on cues, routines and rewards, that is to say, we have an environmental cue, which leads to a behavioural routine, which in turn results in a reward. Duhigg then throws in the notion of “craving”, which is what ultimately triggers the habit loop. For our purposes, consider the following passage from the book--

“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.