Putting the Brakes on Shifting Definitions of Trademarks
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FROM THE JOURNALS
Mark P. McKenna Mark P. McKenna
Putting the Brakes on
Shifting Definitions of interests to one focused on producers,
or from no-property to property; it
Trademarks
was a shift in terms of the nature of
the property interest protected.
But even that revised narrative
Mark P. McKenna is the John P. Murphy Professor of Law at the misses some important things about
University of Notre Dame. This piece offers a condensed and edited trademark law’s evolution because it
selection of passages from Marquette Law School’s 2019 Nies Lecture is insufficiently attentive to significant
on Intellectual Property, which McKenna delivered. The full text of the changes in the doctrinal structure of
lecture, which was titled “The Rise of Property and Decline of Equity trademark law over the course of the last
century—specifically, with respect to the
in Trademark Law,” appears in volume 23, issue 2, of the Marquette
relationship between trademark law and
Intellectual Property Law Review.
the broader law of unfair competition.
Changes in that relationship, I will
There has been a lot of discussion more attenuated forms of confusion argue, did work a meaningful change in
in the literature about the ways or do not require evidence of the “propertization” of trademark law.
trademark law has come to treat confusion at all) reflect a problematic Relatedly, and necessarily, these same
trademarks as property. Many shift away from those consumer changes deemphasized legal rules that
scholars who have written about this interests and toward protection focused on the defendant’s conduct
“propertization” have described it as of producer property interests. (rather than the plaintiff’s ownership
a shift from consumer to producer I have written a lot about this interest).
protection. Once upon a time, the narrative over the course of my
story goes, trademark law aimed to career: I think it is overly simplistic The Abercrombie Decision:
protect consumers against confusion. and, in some ways, wrong. Trademark A Mashup of Concepts
It gave producers a cause of action law has always protected marks as As anyone who has taken a
against others who used similar property and always significantly for trademark class knows, the Second
marks in ways that would confuse the purpose of protecting producers. Circuit’s 1976 decision in Abercrombie
consumers—but it did so only What has changed is that modern law & Fitch Co. v. Hunting World, Inc.
because the producers happened to conceives of the property interests is the most black-letter of all the
be well situated and highly motivated much more broadly than it once did. black-letter trademark law. In fact,
to vindicate consumer interests. A So the important shift in trademark if you were going to teach only one
number of modern doctrines (many law was not one from a system case in the entire course, it would
of which allow claims based on much focused exclusively on consumer almost certainly be Abercrombie.
Illustrations by Robert Neubecker
50 MARQUETTE LAWYER SUMMER 2020
What Abercrombie teaches is that the that the terms actually do indicate The Way Consequences Show Up
way we determine whether a claimed source and, if the proponents can
The consequences of assimilating
indicator is a trademark is by placing make that showing, we pretend they
unfair competition into trademark law
it in a category along a spectrum are the same as old-time technical
were largely unconsidered, and they
(generic, descriptive, suggestive, trademarks. Conditions for relief in the
continue to surface in some of the most
arbitrary, or fanciful). The placement face of not owning a trademark have
challenging modern cases. Here I want
of a term determines whether it been transformed into requirements
to highlight the way these changes
qualifies as a trademark automatically, for proving trademark status.
have increased emphasis on property
whether the term qualifies only This transformation has been so
concepts and decreased emphasis on
with additional evidence (secondary complete that the Supreme Court
equity—or, if you like, on tort concepts.
meaning), or whether it is disqualified. accepted in Two Pesos v. Taco Cabana,
In the former system I have
What’s notable for our purposes Inc. (1992), a case about the design
described, the major cut between
here is that the Abercrombie spectrum of a Mexican restaurant, and Qualitex
trademark and unfair competition
serves as a way to determine whether Co. v. Jacobson Products Co. (1995),
was whether the plaintiff had a valid
a term is treated as a trademark or a case about the color of a dry-
(technical) trademark. Trademark
gets no protection. And the spectrum cleaning press pad, that trademark
law proper was therefore primarily
is a mashup of trademark and unfair subject matter is now defined
concerned with questions of
competition concepts. Indicators now entirely functionally: it consists of
validity (whether the plaintiff had a
placed in categories at the top end of “anything at all that is capable of
property interest in a trademark).
the spectrum are those that we once carrying [source-related] meaning.”
Because only indicators that
simply would have called trademarks. And when anything can be a
unambiguously indicated source
We now call those terms “inherently trademark, there is no real need for
qualified as trademarks, trademark
distinctive,” and they are automatically a residual doctrine that provides
cases necessarily involved indicators
protectable simply by virtue of the relief for use of things that are not
that competitors had no legitimate
classification. Other categories, trademarks. If something does not
explanation for using. And trademark
however, consist of indicators that qualify as a trademark, there is a
owners could assert claims against
were, by definition, not trademarks. reason—and the reason has to do
direct competitors. As a result, once
such as descriptive words. Those with its lack of capacity to identify
the plaintiff established ownership
terms—like MILWAUKEE’S BEST—now source, not its ontological status as
of a valid mark (which registration
potentially qualify as trademarks. We color, shape, fragrance, word, or sign.
established as a prima facie matter),
just ask their proponents for proof
[W]hen anything can be a trademark, there
is no real need for a residual doctrine
that provides relief for use of things that
are not trademarks. If something does
not qualify as a trademark, there is a
reason—and the reason has to do with
its lack of capacity to identify source,
not its ontological status as color, shape,
fragrance, word, or sign.
SUMMER 2020 MARQUETTE LAWYER 51
FROM THE JOURNALS
the only thing left to determine was capable of identifying source can be Separating “validity” and
whether the defendant was using a trademark, it has transformed cases “infringement” doctrines has made
the same or a sufficiently similar that once would have been entirely litigation considerably more complex
mark. Complicated infringement about the defendant’s conduct into and costlier. For one thing, it has
doctrines were unnecessary. cases that are largely—perhaps even exacerbated courts’ difficulty in
Unfair competition was at the overwhelmingly—about ownership. managing the scope of rights because
opposite end of the spectrum. Those It has, to put it differently, shifted it encourages claimants to treat their
cases by definition did not involve a the balance of property and equity rights “like a nose of wax, which
property interest, so in determining substantially in the direction of may be turned and twisted in any
whether any remedy should be given, property. That has had a number direction,” depending on the issue.
courts were not concerned with of negative consequences. Plaintiffs describe their marks narrowly
identifying the thing the plaintiff for purposes of validity so as to
owned. They were instead focused on An Example of the Impact: differentiate them from features used
the defendant’s conduct. Specifically, Aftermarket Auto Parts by others and to avoid functionality
courts in unfair competition asked Conflation of trademark and unfair objections. But then they ignore those
whether, despite the plaintiff’s lack competition law has also led courts to limitations for purposes of infringement.
of a property interest in a trademark, separate trademark cases into fairly Defendants, quite naturally, do the
it should nevertheless get relief formal validity and infringement phases. opposite. Courts often have difficulty
because the defendant was behaving That is, of course, a doctrinal divide that managing these variations because
badly in trying to steal the plaintiff’s did not meaningfully exist in the former they lack a doctrinal structure by
customers. The doctrine was thick in regime. Trademark infringement cases which to identify the claimed mark
equitable considerations; the plaintiff were heavily (indeed, nearly exclusively) for all purposes in the litigation.
had to prove intent to pass off, or focused on whether the claimed At the same time, courts’ overly
at least the defendant’s conduct was indicator was a trademark (infringement rigid distinction between validity and
calculated to have that effect. being fairly straightforward once that infringement doctrines has caused
Because modern law has eviscerated was determined). Unfair competition them to struggle with certain kinds
trademark law’s subject-matter cases, by contrast, had no “validity” of arguments—even though they
limitations and accepted that anything phase and were entirely about liability. are persuasive and connected to
52 MARQUETTE LAWYER SUMMER 2020
Plaintiffs describe their marks narrowly for purposes of
validity so as to differentiate them from features used by
others and to avoid functionality objections. But then they
ignore those limitations for purposes of infringement.
Defendants, quite naturally, do the opposite.
trademark policies—because those a number of states, those insurance exclusively a question of validity. And
arguments do not seem to arise companies are legally obligated to when those parts are incorporated
in the “right” place in the case. use parts of like kind and quality to into a new vehicle, courts think the
Take, for example, certain the OEM parts—which they obviously designs seem to indicate source, and
invocations of functionality doctrine. cannot do if the aftermarket parts look they do not seem to be essential to the
Manufacturers have in recent years different from those sold by the OEMs. use or purpose of the car or to affect
taken to registering the designs of Given these market dynamics, one competition among car manufacturers.
various auto parts as trademarks (things might think the aftermarket-parts Other companies can and do make
like front grilles). Sometimes they companies would have powerful grilles with different designs, and
register the shapes of these parts with functionality arguments in these there does not seem to be a lack of
emblem or logo designs incorporated contexts. According to the Supreme competition among sellers of cars.
into them, but often they simply claim Court, features are functional— The argument about the functionality
the designs themselves or with the and therefore cannot serve as of the designs of auto parts is context-
space for the logo shown in dotted trademarks—when they are “essential specific—it is an argument that those
lines. And customs has begun seizing to the use or purpose of the device” designs have a function when they are
shipments of replacement auto parts with which they are used, or the used for replacement parts, not that
that resemble the registered designs features “affec[t] the cost or quality the designs cannot serve as trademarks
but are made by companies other than of the device.” The designs of these under any circumstances. And courts
the mark owners or their licensees. replacement parts could hardly be do not recognize context-specific
This is a new development. more “essential to the use or purpose” arguments as being validity arguments.
There has been a robust market of the parts, and they clearly affect Because the argument does not fit the
for aftermarket auto parts for many the “cost or quality” of the parts. validity pattern courts expect, they
years—a market that has, until recently, The features seem functional even if do not know how to deal with it.
been regarded as entirely legitimate. we consider competitive need—which
Owners want to repair their damaged we are supposed to do only in a subset What to Do
vehicles, and they want to repair them of functionality cases. Exclusive use of So this is the part where I am
in a way that restores their original the designs of auto parts would give the supposed to provide some grand
design to the greatest extent possible. OEMs a significant—indeed, decisive— solution to the problems I have
They do not want to put a grille on their competitive advantage (because identified. And given the tenor of what
Jeep that does not match the original. no one would be able to compete I have said so far, it probably seems
And aftermarket-parts companies with them for replacement parts). as if I would argue that we would be
have, for a considerable time, supplied As a result, no matter how one better off if we just went back to the
parts that allow the owners to restore approaches the question, all signs way things were—redefining trademark
their vehicles in just that way—and at point to functionality in this context, subject matter in the limited terms we
lower cost than if the owners had to and therefore to the legitimacy of once used and reinvigorating unfair
purchase the parts from the original the aftermarket parts. But when competition as a distinct doctrine.
equipment manufacturers (OEMs). these seizures have been challenged, And though I might think that result
In fact, many insurance companies customs has rejected the functionality would, in fact, be better (spoiler alert:
will only pay (or at least will only pay arguments. Why? Because courts I do), I am more realistic than that.
in full) for aftermarket parts. And in understand functionality to be We are so far down this road that we
SUMMER 2020 MARQUETTE LAWYER 53FROM THE JOURNALS
[F]or example, when Skechers sues Easy Spirit claiming
that Easy Spirit’s black-and-white slip-on shoes look
too much like Skechers’s GO WALK tennis shoes, rather
than litigating over which features of the GO WALK shoes
Skechers owns, we would instead focus on whether
consumers would think that the defendant was selling its
black shoes as Skechers . . . .
are not going to go back to the way Second, even short of completely Finally, and more generally, we need
things once were. Still, there are a reinstating unfair competition rules, to give some serious thought to the role
few things we can and should do. courts could be more aware of what of unfair competition going forward.
First, we should consider limited has happened and be less rigid Right now, unfair competition is largely
rollbacks in places where it makes about the validity/infringement a zombie doctrine. Plaintiffs invoke
sense. One obvious candidate is divide. They could understand better unfair competition in the shadow of their
trade dress, and particularly product the origins of defensive doctrines trademark infringement claims—ostensibly
configuration, which I think is and be more willing to treat them as some kind of backup claim. And they
particularly ill-suited to trademark like true affirmative defenses. They are emboldened in doing so by comments
treatment. A number of the most serious could rediscover equitable discretion from the Supreme Court that Section 43(a)
and difficult problems in trademark law (indeed, the statute still tells them is not a complete codification of common-
are a result of trying to accommodate to do so!). law unfair competition.
this subject matter, and we would better
respect the boundaries with other areas
of intellectual property by returning
to a system that denied protection for
product features as such, subject to a
more limited set of unfair competition
remedies where real passing off was at
risk. So, for example, when Skechers
sues Easy Spirit claiming that Easy
Spirit’s black-and-white slip-on shoes
look too much like Skechers’s GO WALK
tennis shoes, rather than litigating
over which features of the GO WALK
shoes Skechers owns, we would instead
focus on whether consumers would
think that the defendant was selling its
black shoes as Skechers and consider
ordering changes—perhaps in name or
packaging or other materials—to make
the actual source of the shoes clear.
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